`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`Mailed: November 30, 2006
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`Opposition No. 91161747
`Opposition No. 91163495
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`P. C. Richard & Son Long
`Island Corp
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`v.
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`Cheryl Goodman, Interlocutory Attorney:
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`SnoWizard Holdings, Inc.
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`This case now comes up on opposer’s motion to compel,
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`filed July 25, 2006 and resubmitted on August 10, 2006 and
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`applicant’s request, filed August 9, 2006 and August 26,
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`2006 that the motion not be considered due to it failing to
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`comply with the Trademark Rules.1 These matters have been
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`briefed by the parties.
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`With regard to the question of whether opposer has
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`complied with the Trademark Rules regarding length of the
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`brief and font size, while the Board agrees with applicant
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`that the originally filed motion to compel was over long,
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`the Board finds that the resubmitted brief is in compliance
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`with the Rules. Therefore, the Board will consider the
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`motion to compel. Additionally, the Board will consider
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`applicant’s alternative preliminary response to the motion,
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`1 Opposer’s motion to suspend proceedings is moot.
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`Opposition No. 91161747 and 91163495
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`filed in the alternative, and no further submissions from
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`the parties will be required.
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`First, to the extent that opposer is seeking documents
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`through the interrogatories, opposer’s motion to compel is
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`denied as it is inappropriate to propound a request for
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`production of documents through interrogatories.
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`Second to the extent that opposer seeks written
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`responses with regard to its document requests, opposer’s
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`motion to compel is denied as it is inappropriate to
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`propound an interrogatory request through a request for
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`production.
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`Third, to obviate any confidentiality concerns with
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`regard to any of the responsive documents or any
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`interrogatory responses, the Board is imposing its
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`standardized protective agreement on the parties. The
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`provisions of the attached agreement now bind the parties.2
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`Accordingly, in view of the imposition of the
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`standardized protective agreement, applicant’s
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`confidentiality objections are overruled.3
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`Fourth, the Board finds opposer’s interrogatory and
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`document requests relevant, and therefore, to the extent
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`2 As the parties can see from the terms of the protective
`agreement, they are free to agree to modifications or seek
`modifications by motion to the Board. If the parties wish the
`terms of the protective agreement to extend beyond the conclusion
`of this proceeding, the parties should sign the agreement and
`file a copy thereof with the Board.
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`2
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`Opposition No. 91161747 and 91163495
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`that applicant has objected on the basis of relevance, these
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`objections are overruled.
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`Turning first to the interrogatories, the Board finds
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`the following:
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`Interrogatory No. 8
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`The identification of documents with regard to an
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`interrogatory request is neither privileged nor
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`confidential. Opposer’s motion to compel is granted to the
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`extent that applicant should provide more detailed
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`information about the search conducted in 2000 or 2001 and
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`its form (e.g., search report, company/individual that
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`conducted the search). The parties are advised that with
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`regard to a trademark search, comments or opinions of
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`attorneys would not be discoverable regarding the search,
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`unless waived. TBMP Section 414.
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`Interrogatory No. 11
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`In its motion to compel, opposer has modified this
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`interrogatory, in view of applicant’s initial response. In
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`view thereof, opposer’s motion to compel is granted to the
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`extent that applicant should provide the dollar amount spent
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`since January 2001 in paying in-house employees for work
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`involving advertising and promotional expenses.
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`Interrogatory No. 12
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`3 Customer names and customer lists remain confidential and are
`not discoverable even under the protective agreement. See TBMP
`Section 414.
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`3
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`Opposition No. 91161747 and 91163495
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`Answering interrogatories often requires the party to
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`identify written documents. The Board does not find this
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`interrogatory request unduly burdensome. In view thereof,
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`opposer’s motion to compel a better response to this
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`interrogatory is granted to the extent that applicant should
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`identify specific documents containing applicant’s mark.
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`Interrogatory No. 16
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`In view of the imposition of the standardized
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`protective agreement, applicant’s objection to this
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`interrogatory is overruled. Accordingly, opposer’s motion
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`to compel a better response to this interrogatory is
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`granted.
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`Interrogatory No. 20
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`The date and identity of an individual who conducted a
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`search or investigation on behalf of applicant of its
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`adoption, use, or registrations of its trademarks, service
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`mark or trade name is discoverable and is not privileged. On
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`the other hand, comments or opinions of attorneys would not
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`be discoverable regarding the search or investigation,
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`unless waived.
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`In view thereof, opposer’s motion to compel is granted
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`to the extent that applicant must provide a better response
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`by identifying the date a search or investigation was
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`conducted as well as the individual who conducted the search
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`or investigation. Additionally, if the finding of the
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`4
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`Opposition No. 91161747 and 91163495
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`search is not in the nature of a comment or opinion of an
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`attorney, this information must be included in the
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`supplemental response.
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`Interrogatory No. 26
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`This interrogatory essentially seeks a privilege log
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`for any withheld documents from the request for production.
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`The Board does not find this interrogatory request unduly
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`burdensome nor does the Board find that this information is
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`protected by privilege. In view thereof, opposer’s motion
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`to compel is granted as to this interrogatory request.
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`Interrogatory No. 27
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`The identity of the individuals who participated in the
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`preparation of responses to these interrogatories is
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`relevant and not privileged, and applicant has not supported
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`its objection of undue burden. In view thereof, opposer’s
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`motion to compel is granted with regard to this request.
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`Interrogatory No. 29
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`Opposer’s motion to compel is granted to the extent
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`that applicant should specify the dates in which it has used
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`the trade channels: “place of business, telephone and the
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`Internet” for “distributing” its services.
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`Interrogatory No. 30
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`Applicant’s objection of undue burden is unsupported
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`and the Board finds this request relevant. In view thereof,
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`5
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`Opposition No. 91161747 and 91163495
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`opposer’s motion to compel a better response to this
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`interrogatory is granted.
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`Interrogatory No. 31
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`The Board does not find this interrogatory request
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`unduly burdensome nor does the Board find that this
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`information is protected by privilege. In view thereof,
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`opposer’s motion to compel is granted as to this
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`interrogatory request.
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`Request for Production of Documents
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`The Board finds the following with regard to the disputed
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`requests for production:
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`Request No. 4
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`Search reports are discoverable, while the comments or
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`opinions of an attorney with regard to a search are
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`privileged and not discoverable, unless waived. In view
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`thereof, opposer’s motion to compel is granted with regard
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`to this document request.
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`Request No. 11 and 43
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`In addition to these requests being duplicative, the
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`Board finds that opposer’s document requests seeking “all
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`documents which applicant intends to rely on in connection
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`with this proceeding” or “all documents you plan to rely on
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`in this proceeding” as the equivalent of a request for
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`identification of trial evidence prior to trial and
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`improper. In view thereof, opposer’s motion to compel is
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`6
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`Opposition No. 91161747 and 91163495
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`denied as to these requests. See Time Warner Entertainment
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`Co. v. Jones, 65 USPQ2d 1650, 1656 (TTAB 2002) (“It is
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`settled that a party in a Board proceeding generally has no
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`obligation to identify its fact witnesses or other trial
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`evidence prior to trial.”)
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` Request Nos. 16 and 33
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`The Board finds these requests improper to the extent
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`that these requests seek customer names and customer lists.
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`See TBMP Section 414. Moreover, with regard to document
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`request no. 16, the Board finds the wording “all material
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`forwarded to customers” vague and with regard to document
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`request no. 33, the Board finds the wording “all documents
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`and tangible things concerning customers” vague and
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`overbroad. In view thereof, opposer’s motion to compel is
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`denied as to these document requests.
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`Request Nos. 19 and 22, 23 and 24
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`Inasmuch as opposer has modified these document
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`requests to seek a representative sample of advertisements,
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`promotional and marketing material, the Board does not find
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`these requests unduly burdensome. TBMP Section 414. To the
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`extent that applicant has not produced all documents
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`responsive to these requests, opposer’s motion to compel is
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`granted. If applicant has produced all responsive documents
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`with regard to these requests (from each year of use),
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`applicant should so state in writing.
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`7
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`Opposition No. 91161747 and 91163495
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`Document Request No. 25
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`The Board is unclear what is meant by the term
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`“ultimate consumer.” To the extent this request seeks
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`documents which identify applicant’s customers, opposer’s
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`motion to compel is denied. To the extent that this request
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`is not duplicative of Document Request nos. 19, 22, 23 and
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`24 in that it seeks advertising and promotional material,
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`opposer’s motion to compel is granted such that applicant
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`shall provide a representative sample of such documents. If
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`applicant has provided all responsive documents with regard
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`to this request, applicant should so state in writing.
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`Document Request No. 31
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`Applicant has not supported its objection of undue
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`burden with regard to this request. In view thereof,
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`opposer’s motion to compel is granted with regard to this
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`request.
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`Document Request No. 34
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`Documents regarding the classes of purchasers of
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`applicant’s services is discoverable and applicant has not
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`supported its objection that this document request is unduly
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`burdensome. See TBMP Section 414. In view thereof,
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`opposer’s motion to compel is granted as to this request.
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`Document Request no. 35
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`To the extent that applicant has not produced all
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`documents responsive to this request, opposer’s motion to
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`8
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`Opposition No. 91161747 and 91163495
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`compel is granted. The Board notes that applicant states
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`that the mark is used in conjunction with shaved ice
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`products related supplies and services but it is unclear
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`whether applicant produced any responsive documents with
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`respect to these services. If applicant has produced all
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`responsive documents with regard to this request (from each
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`year of use) including those responsive documents used in
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`conjunction with shaved ice products related supplies and
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`services, applicant should so state in writing.
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`Document Request No. 37
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`Applicant has not supported its objection that this
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`proposed request is unduly burdensome. The geographic
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`location where applicant has promoted or sold its services
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`is discoverable. See TBMP Section 414. In view thereof,
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`opposer’s motion to compel is granted with respect to this
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`request.
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`Document Request No. 38
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`Annual sales information is discoverable. TBMP Section
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`414. In view thereof, opposer’s motion to compel is granted
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`with respect to this request.
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`Document Request No. 46 and 47
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`These requests appear to be duplicative requests asking
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`for the same documents. Inasmuch as the burden of obtaining
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`these documents is the same for both parties and the
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`documents are equally accessible to both parties on the
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`9
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`Opposition No. 91161747 and 91163495
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`Office’s website, opposer’s motion to compel is denied as
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`to this request.
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`In summary, opposer’s motion to compel is granted to
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`the extent indicated above with respect to Interrogatory
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`Nos. 8, 11, 12, 16, 20, 26, 27, 29, 30, 31 and Document
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`Request nos. 4, 19, 22, 23, 24, 25, 31, 34, 35 37 and 38 and
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`denied with respect to Document Request nos. 11, 16, 33, 43,
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`46 and 47.
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`Applicant is allowed until THIRTY DAYS from the mailing
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`date of this order to supplement its interrogatory responses
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`and to produce responsive documents as set forth above.
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`Opposer’s motion to extend is granted.
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`Proceedings are resumed. Dates are reset as follows:
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`D ISC O V ER Y PER IO D TO C LO SE:
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`30-day testim ony period for party in position of plaintiff
`to close:
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`30-day testim ony period for party in position of defendant
`to close:
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`15-day rebuttal testim ony period for party in position of
`plaintiff to close:
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`C LO SED
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`M arch 1, 2007
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`A pril 30, 2007
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`June 14, 2007
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`In each instance, a copy of the transcript of testimony
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`together with copies of documentary exhibits, must be served
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`on the adverse party within thirty days after completion of
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`the taking of testimony. Trademark Rule 2.l25.
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`10
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`Opposition No. 91161747 and 91163495
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`Briefs shall be filed in accordance with Trademark
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`Rules 2.128(a) and (b). An oral hearing will be set only
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`upon request filed as provided by Trademark Rule 2.l29.
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`11
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`Opposition No. 91161747 and 91163495
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`PROVISIONS FOR PROTECTING CONFIDENTIALITY OF INFORMATION
`REVEALED DURING BOARD PROCEEDING
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`Information disclosed by any party or non-party witness
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`during this proceeding may be considered confidential, a
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`trade secret, or commercially sensitive by a party or
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`witness. To preserve the confidentiality of the information
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`so disclosed, the Board hereby orders that the parties be
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`bound by the provisions within. As used in this order, the
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`term "information" covers both oral testimony and
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`documentary material.
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`TERMS OF ORDER
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`1) Classes of Protected Information.
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`The Rules of Practice in Trademark Cases provide that
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`all inter partes proceeding files, as well as the involved
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`registration and application files, are open to public
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`inspection. The terms of this order are not to be used to
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`undermine public access to files. When appropriate,
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`however, a party or witness, on its own or through its
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`attorney, may seek to protect the confidentiality of
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`information by employing one of the following designations.
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`Confidential — Material to be shielded by the Board
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`from public access.
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`Highly Confidential — Material to be shielded by the
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`Board from public access and subject to agreed restrictions
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`12
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`Opposition No. 91161747 and 91163495
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`on access even as to the parties and/or their attorneys.
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`Trade Secret/Commercially Sensitive — Material to be
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`shielded by the Board from public access, restricted from
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`any access by the parties, and available for review by
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`outside counsel for the parties and, subject to the
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`provisions of paragraph 4 and 5, by independent experts or
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`consultants for the parties.
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`2) Information Not to Be Designated as Protected.
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`Information may not be designated as subject to any
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`form of protection if it (a) is, or becomes, public
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`knowledge, as shown by publicly available writings, other
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`than through violation of the terms of this document; (b) is
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`acquired by a non-designating party or non-party witness
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`from a third party lawfully possessing such information and
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`having no obligation to the owner of the information; (c)
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`was lawfully possessed by a non-designating party or
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`nonparty witness prior to the opening of discovery in this
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`proceeding, and for which there is written evidence of the
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`lawful possession; (d) is disclosed by a non-designating
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`party or non-party witness legally compelled to disclose the
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`information; or (e) is disclosed by a non-designating party
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`with the approval of the designating party.
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`3) Access to Protected Information.
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`The provisions of this order regarding access to
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`protected information are subject to modification by written
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`Opposition No. 91161747 and 91163495
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`agreement of the parties or their attorneys, or by motion
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`filed with and approved by the Board.
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`Judges, attorneys, and other employees of the Board are
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`bound to honor the parties’ designations of information as
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`protected but are not required to sign forms acknowledging
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`the terms and existence of this order. Court reporters,
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`stenographers, video technicians or others who may be
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`employed by the parties or their attorneys to perform
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`services incidental to this proceeding will be bound only to
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`the extent that the parties or their attorneys make it a
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`condition of employment or obtain agreements from such
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`individuals, in accordance with the provisions of paragraph
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`4.
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`Parties are defined as including individuals, officers of
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`corporations, partners of partnerships, and management
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`employees of any type of business organization.
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`(cid:129) Attorneys for parties are defined as including in-house
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`counsel and outside counsel, including support staff
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`operating under counsel’s direction, such as paralegals
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`or legal assistants, secretaries, and any other employees
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`or independent contractors operating under counsel’s
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`instruction.
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`(cid:129) Independent experts or consultants include individuals
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`retained by a party for purposes related to prosecution
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`or defense of the proceeding but who are not otherwise
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`Opposition No. 91161747 and 91163495
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`employees of either the party or its attorneys.
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`(cid:129) Non-party witnesses include any individuals to be deposed
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`during discovery or trial, whether willingly or under
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`subpoena issued by a court of competent jurisdiction over
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`the witness.
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`Parties and their attorneys shall have access to
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`information designated as confidential or highly
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`confidential, subject to any agreed exceptions.
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`Outside counsel, but not in-house counsel, shall have
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`access to information designated as trade
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`secret/commercially sensitive.
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`Independent experts or consultants, non-party
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`witnesses, and any other individual not otherwise
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`specifically covered by the terms of this order may be
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`afforded access to confidential or highly confidential
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`information in accordance with the terms that follow in
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`paragraph 4. Further, independent experts or consultants
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`may have access to trade secret/commercially sensitive
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`information if such access is agreed to by the parties or
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`ordered by the Board, in accordance with the terms that
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`follow in paragraph 4 and 5.
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`4) Disclosure to Any Individual.
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`Prior to disclosure of protected information by any
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`party or its attorney to any individual not already provided
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`access to such information by the terms of this order, the
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`Opposition No. 91161747 and 91163495
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`individual shall be informed of the existence of this order
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`and provided with a copy to read. The individual will then
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`be required to certify in writing that the order has been
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`read and understood and that the terms shall be binding on
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`the individual. No individual shall receive any protected
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`information until the party or attorney proposing to
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`disclose the information has received the signed
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`certification from the individual. A form for such
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`certification is attached to this order. The party or
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`attorney receiving the completed form shall retain the
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`original.
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`5) Disclosure to Independent Experts or Consultants.
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`In addition to meeting the requirements of paragraph 4,
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`any party or attorney proposing to share disclosed
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`information with an independent expert or consultant must
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`also notify the party which designated the information as
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`protected. Notification must be personally served or
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`forwarded by certified mail, return receipt requested, and
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`shall provide notice of the name, address, occupation and
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`professional background of the expert or independent
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`consultant.
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`The party or its attorney receiving the notice shall
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`have ten (10) business days to object to disclosure to the
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`expert or independent consultant. If objection is made,
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`then the parties must negotiate the issue before raising the
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`Opposition No. 91161747 and 91163495
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`issue before the Board. If the parties are unable to settle
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`their dispute, then it shall be the obligation of the party
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`or attorney proposing disclosure to bring the matter before
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`the Board with an explanation of the need for disclosure and
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`a report on the efforts the parties have made to settle
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`their dispute. The party objecting to disclosure will be
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`expected to respond with its arguments against disclosure or
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`its objections will be deemed waived.
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`6) Responses to Written Discovery.
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`Responses to interrogatories under Federal Rule 33 and
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`requests for admissions under Federal Rule 36, and which the
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`responding party reasonably believes to contain protected
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`information shall be prominently stamped or marked with the
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`appropriate designation from paragraph 1. Any inadvertent
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`disclosure without appropriate designation shall be remedied
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`as soon as the disclosing party learns of its error, by
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`informing all adverse parties, in writing, of the error.
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`The parties should inform the Board only if necessary
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`because of the filing of protected information not in
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`accordance with the provisions of paragraph 12.
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`7) Production of Documents.
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`If a party responds to requests for production under
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`Federal Rule 34 by making copies and forwarding the copies
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`to the inquiring party, then the copies shall be prominently
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`stamped or marked, as necessary, with the appropriate
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`17
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`Opposition No. 91161747 and 91163495
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`designation from paragraph 1. If the responding party makes
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`documents available for inspection and copying by the
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`inquiring party, all documents shall be considered protected
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`during the course of inspection. After the inquiring party
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`informs the responding party what documents are to be
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`copied, the responding party will be responsible for
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`prominently stamping or marking the copies with the
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`appropriate designation from paragraph 1. Any inadvertent
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`disclosure without appropriate designation shall be remedied
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`as soon as the disclosing party learns of its error, by
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`informing all adverse parties, in writing, of the error.
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`The parties should inform the Board only if necessary
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`because of the filing of protected information not in
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`accordance with the provisions of paragraph 12.
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`8) Depositions.
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`Protected documents produced during a discovery
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`deposition, or offered into evidence during a testimony
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`deposition shall be orally noted as such by the producing or
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`offering party at the outset of any discussion of the
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`document or information contained in the document. In
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`addition, the documents must be prominently stamped or
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`marked with the appropriate designation.
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`During discussion of any non-documentary protected
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`information, the interested party shall make oral note of
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`the protected nature of the information.
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`18
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`Opposition No. 91161747 and 91163495
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`The transcript of any deposition and all exhibits or
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`attachments shall be considered protected for 30 days
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`following the date of service of the transcript by the party
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`that took the deposition. During that 30-day period, either
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`party may designate the portions of the transcript, and any
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`specific exhibits or attachments that are to be treated as
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`protected, by electing the appropriate designation from
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`paragraph 1. Appropriate stampings or markings should be
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`made during this time. If no such designations are made,
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`then the entire transcript and exhibits will be considered
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`unprotected.
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`9) Filing Notices of Reliance.
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`When a party or its attorney files a notice of reliance
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`during the party’s testimony period, the party or attorney
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`is bound to honor designations made by the adverse party or
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`attorney, or non-party witness, who disclosed the
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`information, so as to maintain the protected status of the
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`information.
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`10) Briefs.
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`When filing briefs, memoranda, or declarations in
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`support of a motion, or briefs at final hearing, the
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`portions of these filings that discuss protected
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`information, whether information of the filing party, or any
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`adverse party, or any non-party witness, should be redacted.
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`19
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`Opposition No. 91161747 and 91163495
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`The rule of reasonableness for redaction is discussed in
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`paragraph 12 of this order.
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`11) Handling of Protected Information.
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`Disclosure of information protected under the terms of
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`this order is intended only to facilitate the prosecution or
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`defense of this case. The recipient of any protected
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`information disclosed in accordance with the terms of this
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`order is obligated to maintain the confidentiality of the
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`information and shall exercise reasonable care in handling,
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`storing, using or disseminating the information.
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`12) Redaction; Filing Material With the Board.
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`When a party or attorney must file protected
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`information with the Board, or a brief that discusses such
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`information, the protected information or portion of the
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`brief discussing the same should be redacted from the
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`remainder. A rule of reasonableness should dictate how
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`redaction is effected.
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`Redaction can entail merely covering a portion of a
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`page of material when it is copied in anticipation of filing
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`but can also entail the more extreme measure of simply
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`filing the entire page under seal as one that contains
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`primarily confidential material. If only a sentence or
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`short paragraph of a page of material is confidential,
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`covering that material when the page is copied would be
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`appropriate. In contrast, if most of the material on the
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`Opposition No. 91161747 and 91163495
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`page is confidential, then filing the entire page under seal
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`would be more reasonable, even if some small quantity of
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`non-confidential material is then withheld from the public
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`record. Likewise, when a multi-page document is in issue,
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`reasonableness would dictate that redaction of the portions
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`or pages containing confidential material be effected when
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`only some small number of pages contain such material. In
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`contrast, if almost every page of the document contains some
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`confidential material, it may be more reasonable to simply
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`submit the entire document under seal. Occasions when a
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`whole document or brief must be submitted under seal should
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`be very rare.
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`Protected information, and pleadings, briefs or
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`memoranda that reproduce, discuss or paraphrase such
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`information, shall be filed with the Board under seal. The
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`envelopes or containers shall be prominently stamped or
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`marked with a legend in substantially the following form:
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`CONFIDENTIAL
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`This envelope contains documents or information that are
`subject to a protective order or agreement. The
`confidentiality of the material is to be maintained and the
`envelope is not to be opened, or the contents revealed to
`any individual, except by order of the Board.
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`13) Acceptance of Information; Inadvertent Disclosure.
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`Acceptance by a party or its attorney of information
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`disclosed under designation as protected shall not
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`constitute an admission that the information is, in fact,
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`Opposition No. 91161747 and 91163495
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`entitled to protection. Inadvertent disclosure of
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`information which the disclosing party intended to designate
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`as protected shall not constitute waiver of any right to
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`claim the information as protected upon discovery of the
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`error.
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`14) Challenges to Designations of Information as
`Protected.
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`If the parties or their attorneys disagree as to
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`whether certain information should be protected, they are
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`obligated to negotiate in good faith regarding the
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`designation by the disclosing party. If the parties are
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`unable to resolve their differences, the party challenging
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`the designation may make a motion before the Board seeking a
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`determination of the status of the information.
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`A challenge to the designation of information as
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`protected must be made substantially contemporaneous with
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`the designation, or as soon as practicable after the basis
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`for challenge is known. When a challenge is made long after
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`a designation of information as protected, the challenging
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`party will be expected to show why it could not have made
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`the challenge at an earlier time.
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`The party designating information as protected will,
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`when its designation is timely challenged, bear the ultimate
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`burden of proving that the information should be protected.
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`15) Board’s Jurisdiction; Handling of Materials After
`Termination.
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`Opposition No. 91161747 and 91163495
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`The Board’s jurisdiction over the parties and their
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`attorneys ends when this proceeding is terminated. A
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`proceeding is terminated only after a final order is entered
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`and either all appellate proceedings have been resolved or
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`the time for filing an appeal has passed without filing of
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`any appeal.
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`The parties may agree that archival copies of evidence
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`and briefs may be retained, subject to compliance with
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`agreed safeguards. Otherwise, within 30 days after the
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`final termination of this proceeding, the parties and their
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`attorneys shall return to each disclosing party the
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`protected information disclosed during the proceeding, and
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`shall include any briefs, memoranda, summaries, and the
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`like, which discuss or in any way refer to such information.
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`In the alternative, the disclosing party or its attorney may
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`make a written request that such materials be destroyed
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`rather than returned.
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`16) Other Rights of the Parties and Attorneys.
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`This order shall not preclude the parties or their
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`attorneys from making any applicable claims of privilege
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`during discovery or at trial. Nor shall the order preclude
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`the filing of any motion with the Board for relief from a
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`particular provision of this order or for additional
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`protections not provided by this order.
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`The foregoing provisions are hereby entered as an order
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`Opposition No. 91161747 and 91163495
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`of the Board, and shall be effective upon the mailing date
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`indicated above.
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`
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`.oOo.
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