Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA659160
`ESTTA Tracking number:
`03/04/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91208759
`Plaintiff
`Wakefern Food Corp.
`TORE T DEBELLA
`DRINKER BIDDLE & REATH LLP
`1500 K STREET NW SUITE 1100
`WASHINGTON, DC 20005
`UNITED STATES
`dctrademarks@dbr.com, tmlitdocket@dbr.com, jennifer.dean@dbr.com,
`tore.debella@dbr.com
`Reply in Support of Motion
`Tore T. DeBella
`tmlitdocket@dbr.com, brian.coleman@dbr.com, jennifer.dean@dbr.com,
`tore.debella@dbr.com
`/tore t. debella/
`03/04/2015
`Opposer's Reply_001.pdf(361063 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`WAKEFERN FOOD CORP.
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`v.
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`LIVE RIGHT LLC
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`Opposer,
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`Applicant.
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`.
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`:
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`Opposition No. 91208759
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`OPPOSER’S REPLY IN SUPPORT OF MOTION TO COMPEL AND FOR SANCTIONS
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`Opposer Wakefern Food Corp. (“Opposer”), by and through its counsel, hereby submits
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`this reply to Applicant’s Brief in Opposition to Opposer’s Motion to Compel and for Sanctions.
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`A.
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`The Deposition Notice was Timely
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`In its opposition brief, Applicant does not dispute that it is subject to deposition in New
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`Jersey — nor does Applicant dispute that New Jersey was the Liv permissible location for
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`Opposer to notice App1icant’s deposition, absent stipulation otherwise. Applicant also does not
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`dispute that it received notice in October of Opposer’s deposition request, which Opposer twice
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`agreed to reschedule, or that Applicant refused to and did not attend the deposition noticed by
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`Opposer on November 21, 2014 to appear on December 1, 2014. Applicant also does not dispute
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`that it never once responded to Opposer repeated requests for available deposition dates in New
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`Jersey, and does not dispute that Opposer offered to move the December 1 date as well.
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`Instead, Applicant argues — for the first time — that it should be excused from its failure to
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`attend because it did not receive timely notice of the deposition. This contention is without
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`merit, and in fact is wholly frivolous.
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`As the email correspondence attached to Opposer’s motion reflects, Applicant was
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`repeatedly asked to provide an available date, and Applicant never did so. See Declaration of
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`Brian A. Coleman (“Coleman Decl.”) at 1] 4, Exhibit 2 thereto. The deposition was twice
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`rescheduled specifically to give Applicant more time, and the discovery schedule was extended
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`by consent to give Applicant more time. See id. When no available date was provided even after
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`discovery was extended an additional 30 days for that purpose, despite multiple written requests,
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`Opposer served its Second Amended Notice of Deposition ten days before the date of the
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`deposition that Applicant ultimately did not attend, with an ofler to reschedule yet again. See
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`Coleman Decl. at M 3-4, Exhibit 1-2. Applicant’s only response during that 10-day period was
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`its vague claim through its principal, Ms. Risley, then vacationing in Florida, that Applicant was
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`not required to go to New Jersey, even though that is where Applicant and Ms. Risley reside. Id.
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`Opposer replied that attendance in New Jersey was required, and that Opposer was amenable to
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`another extension to reschedule the deposition, to accommodate her schedule. See Coleman
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`Decl. at 111] 4, 9-11 & Exhibit 2. No response was received. See id. All of this is documented in
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`writing. See generally Coleman Decl. & Exhibit 2.
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`Not once did Applicant or Ms. Risley voice any timeliness objection — not by phone or
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`email, not in any filed objections, and not in any motion for protective order or to quash the
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`deposition notice — nor did Applicant respond to repeated written offers to reschedule. See id.
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`Applicant does not and cannot offer any evidence to the contrary. This is an independent bar to
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`Applicant’s contention. See TBMP § 521. Even if an objection had been made, there can be no
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`serious question under Board precedent that ten days is reasonable notice for a deposition. See
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`TBMP § 703.0l(e). In fact, most cases challenging reasonableness of notice involve l to 3 days’
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`notice, see id. at n.1, where results vary based on the circumstances. See id. Ten days is well in
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`excess of that, and cannot be considered unreasonable under virtually any circumstance.
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`2158767.]
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`Here, however,
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`the underlying circumstances merit close review, as they expose
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`Applicant’s argument as entirely disingenuous. When one considers (a) Opposer’s repeated
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`written efforts to cajole Applicant into provide even a single available date over period of several
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`weeks, to no avail, (b) Opposer’s repeated (but ignored) offers to reschedule the December 1
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`date of the deposition notice at issue, (c) Opposer’s prior willingness to reschedule the deposition
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`at Applicant’s request (twice) and to extend the discovery schedule to accommodate Applicant,
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`and (d) the absence of even a hint of concern from Applicant regarding timeliness of notice, or
`any other articulated concern besides the New Jersey location of the deposition — it becomes
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`evident that Applicant’s timeliness argument to the Board is not supported by a good faith basis.
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`The argument should be rejected, and considered as further evidence warranting sanctions.‘
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`B.
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`Opposer Was Not Reguired to Travel to Florida.
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`Applicant’s only other contention is that Wakefern should have simply agreed to take the
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`deposition in Florida. Opp. Br. at 4.
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`In so arguing, Applicant does not dispute that the
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`deposition was proper in New Jersey, nor that a deposition in Florida (or anywhere other than
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`New Jersey) would @ be proper, absent separate agreement. Thus Applicant’s contention is
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`1 Applicant’s related complaint that the deposition was noticed “so close to the absolute very last
`day of discovery,” Opp. Br. at 4, is similarly frivolous. This deposition only came about when
`the Board declined to enforce Applicant’s admissions in denying Opposer’s motion for summary
`judgment by order dated October 14, 2014, see Document No. 32, wherein the Board reopened
`discovery for Opposer “for the issues related to the now denied RFAS” only until November 1,
`2014. With a discovery period barely over two weeks, there was only so much notice that could
`be provided. The first deposition notice was served on October 24, 2014 for a deposition on
`October 30, 2014, which Opposer then agreed to move to November 1, 2014, with an offer to
`reschedule again. See Coleman Decl., Exhibit 1-2. Applicant agreed, and the parties filed a
`motion to extend by 30 days to complete discovery. Opposer asked for a deposition date — any
`date — in emails dated October 31, November 7 and November 21, the last of which included the
`deposition notice (as a precautionary matter) for the last day of discovery on December 1,
`offering yet another extension. See id. Not once did Applicant provide any available date. See
`id. Against this unrebutted record of intransigence and nonresponsiveness, Applicant’s argument
`to the Board that Opposer somehow is responsible for any delay is cynical at best.
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`2158767.]
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`that Opposer was not entitled to rely on the rules, which provide for New Jersey as the deposition
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`location, but rather that Opposer was aflirmatively required to expend client funds for the extra
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`time and expense to fly to Florida, secure a location, rent a hotel, and hope that Applicant honors
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`its agreement to attend, despite numerous prior rules violations, and also hope that the Board
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`would deem the deposition notice enforceable if Applicant did not attend and claimed that the
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`deposition notice was not rule-compliant. See Coleman Decl. at 111] 5-8.
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`Applicant is incorrect. Opposer’s counsel was and remains prepared to change the
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`location within New Jersey to accommodate Applicant, as counsel for Opposer has more than
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`one office in New Jersey (all of which permit a same—day trip from Washington DC, where
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`Opposer’s counsel is based), but Opposer is well within its rights to require that the deposition
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`take place in the state specified as proper by the applicable rules. See Motion at 4-5; Coleman
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`Decl. at 1111 5-8. Opposer is most certainly not required to increase its own travel costs, travel
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`time, lodging costs and risk of noncompliance to accommodate Applicant’s vacation schedule.
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`In fact, Opposer went above and beyond in extending courtesies to Applicant: rather than
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`insist on a specific date, which might require Ms. Risley to cut her vacation short, Opposer’s
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`counsel repeatedly stated,
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`in writing, a willingness to extend the discovery schedule and
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`otherwise defer the New Jersey deposition to a date that was convenient for her. Applicant
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`initially agreed to that approach,
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`in assenting to an extension of the discovery schedule to
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`complete this deposition, see Document Nos. 33-34, but then apparently reconsidered, electing to
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`ignore Opposer’s repeated requests for a deposition date — and, once the December 1 deposition
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`was noticed, ignoring Opposer’s repeated invitations to reschedule again, or to at least state
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`whether Applicant would attend. See Coleman Decl., Ex. 2.
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`2158767.]
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`At bottom, Applicant’s protestations are unsupported by any legal or factual
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`evidence, and are squarely belied by the actual factual record set forth in Opposer’s motion, and
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`the applicable legal authorities. The simple truth is that Applicant willfully refused to show up
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`for a properly noticed deposition, and there is no arguable basis to justify its conduct.
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`C.
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`Default is Warranted as a Sanction
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`Applicant does not dispute its history of noncompliance, and offers no apology or even
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`arguably viable justification for its failure to appear.
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`If anything, Applicant’s opposition is best
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`described as indignant — as though it remains incomprehensible to Applicant that it should be
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`expected to abide by the Board’s rules if they do not suit Applicant’s preferences.
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`It is costly
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`and time consuming for Opposer to have to seek redress over yet another contumacious refusal
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`by Applicant to abide by the rules, and it is highly foreseeable, to say the least, that more motion
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`practice over rule noncompliance will be required if default is not granted.
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`At minimum, should default not be granted, Opposer requests that the Board revisit the
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`ruling that necessitated this deposition — namely, the Board’s decision to permit withdrawal of
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`Applicant’s admitted requests for admission — since Applicant has willfully thwarted the very
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`discovery that the Board expressly permitted as a condition of permitting such withdrawal.
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`Respectfully silbniiltecl,
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` \ f Lx
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`' rian A. Col.emu:.
`Jennifer L. Dean
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`'
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`Tore T. DeBella
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`DRINKER BIDDLE & REATH LLP
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`1500 K Street, N.W., Suite 1100
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`Washington, D.C. 20005-1209
`Tel: (202) 842-8800
`Fax: (202) 842-8465
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`Attorneys for Opposer
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`2158767.!
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`CERTIFICATE OF SERVICE
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`This is to certify that this Li “Bay of March, 2015, a true copy of the foregoing was
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`served, via first-class mail, postage prepaid, on:
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`Ms. Donna Risley
`Live Right LLC
`253 Aschwind Court
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`Galloway, NJ 08205
`1
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`I. M