UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
` Mailed: June 3, 2015
`
`Opposition No. 91220956
`
`
`
`Sanjay Agarwal
`
`
`v.
`
`Unique Photo, Inc.
`
`
`
`
`
`
`
`
`
`Robert H. Coggins,
`Interlocutory Attorney:
`
`
`
`Pursuant to Fed. R. Civ. P. 26(f) and Trademark Rules 2.120(a)(1) and
`
`(2), the Board conducted a discovery conference in this proceeding at 9:00
`
`a.m. EDT on June 2, 1015. Board participation was requested by Opposer.
`
`During the conference, Opposer was represented by Bruce Sales and Daniel
`
`Laine, and participating for the Board was the above-signed Interlocutory
`
`Attorney.
`
`Although Applicant, an individual, did not personally participate in
`
`the conference, three representatives of Applicant’s corporation (Zlatin
`
`Zlatev, Legal Advisor; Raj Bahl, Managing Director; and Sumit Agarwal,
`
`General Manager of Aegis Vision Limited) were, under the circumstances of
`
`this case, allowed to listen to the conference. The Board explained that while
`
`a party may represent himself, individuals who are not attorneys generally
`
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
` Mailed: June 3, 2015
`
`Opposition No. 91220956
`
`
`
`Sanjay Agarwal
`
`
`v.
`
`Unique Photo, Inc.
`
`
`
`
`
`
`
`
`
`Robert H. Coggins,
`Interlocutory Attorney:
`
`
`
`Pursuant to Fed. R. Civ. P. 26(f) and Trademark Rules 2.120(a)(1) and
`
`(2), the Board conducted a discovery conference in this proceeding at 9:00
`
`a.m. EDT on June 2, 1015. Board participation was requested by Opposer.
`
`During the conference, Opposer was represented by Bruce Sales and Daniel
`
`Laine, and participating for the Board was the above-signed Interlocutory
`
`Attorney.
`
`Although Applicant, an individual, did not personally participate in
`
`the conference, three representatives of Applicant’s corporation (Zlatin
`
`Zlatev, Legal Advisor; Raj Bahl, Managing Director; and Sumit Agarwal,
`
`General Manager of Aegis Vision Limited) were, under the circumstances of
`
`this case, allowed to listen to the conference. The Board explained that while
`
`a party may represent himself, individuals who are not attorneys generally
`
`
`
`Opposition No. 91220956
`
`are not recognized to practice before the Board. Patent and Trademark Rule
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`11.14(b). While U.S. attorneys are permitted to represent others before the
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`Board (see Patent and Trademark Rules 11.1 and 11.14(a)), foreign attorneys
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`who reside and practice in a foreign country other than Canada and who are
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`not members in good standing of the bar of the highest court of a state in the
`
`United States may not practice before the Board unless they establish that
`
`they meet the requirements of Patent and Trademark Rule 11.14. 5 U.S.C.
`
`§§ 500(b) and (d). Any such attorney who attempts to represent a party in a
`
`trademark matter should be advised that he or she must file a written
`
`application for reciprocal recognition with the Office of Enrollment and
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`Discipline and pay the fee required by 37 C.F.R. § 1.21(a)(1)(i); that the
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`application must be filed and granted prior to representing a party before the
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`USPTO; and that the application must include proof that the attorney or
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`agent is in good standing with the foreign patent or trademark office in the
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`country in which the attorney or agent resides, that the attorney or agent is
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`possessed of good moral character and reputation, and that the USPTO
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`Director has recognized that the foreign patent or trademark office provides
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`substantially reciprocal rights to United States attorneys. 37 C.F.R.
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`§§11.14(c) and (f). See TMEP §§ 602.03 et seq.
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`Inasmuch as Messrs. Zlatev, Bahl, and (Sumit) Agarwal did not meet
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`any of the qualifications or exceptions for representing Applicant before the
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`Board, they were not allowed to conduct business during the conference;
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` 2
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`Opposition No. 91220956
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`however, they were permitted to listen to the general and specific
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`information discussed by the other conference participants.
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`Familiarity with the Board
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`Opposer stated that it is familiar with inter partes proceedings before
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`the Board.
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`Similar Proceedings
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`Opposer stated that it is not involved in any other Board proceeding or
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`civil litigation involving the subject or pleaded marks.
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`Nature of Board Proceedings
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`An inter partes proceeding before the Board is similar to a civil action
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`in a Federal district court. There are pleadings, a wide range of possible
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`motions, disclosures, discovery (a party’s use of discovery depositions,
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`interrogatories, requests for production of documents and things, and
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`requests for admission to ascertain the facts underlying its adversary’s case),
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`a trial, and briefs, followed by a decision on the case. The Board does not
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`preside at the taking of testimony. Rather, all testimony is taken out of the
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`presence of the Board during the assigned testimony, or trial, periods, and
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`the written transcripts thereof, together with any exhibits thereto, are then
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`filed with the Board. No paper, document, or exhibit will be considered as
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`evidence in the case unless it has been introduced in evidence in accordance
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`with the applicable rules.
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` 3
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`Opposition No. 91220956
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`Representation
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`Applicant is permitted to represent himself. However, it should be
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`noted that while Patent and Trademark Rule 11.14 permits a person to
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`represent himself, it is generally advisable for a person who is not acquainted
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`with the technicalities of the procedural and substantive law involved in an
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`opposition proceeding to secure the services of an attorney (as defined by
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`Patent and Trademark Rule 11.1) who is familiar with such matters. The
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`Patent and Trademark Office cannot aid in the selection of an attorney. In
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`addition, as the impartial decision maker, the Board may not provide legal
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`advice, though it may provide information as to procedure. Strict compliance
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`with the Trademark Rules of Practice, and where applicable the Federal
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`Rules of Civil Procedure, is expected of all parties.
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`Resources
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`The Board pointed to the electronic resources,
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`including the
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`Trademark Trial and Appeal Board Manual of Procedure (TBMP) and the
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`Trademark Rules of Practice, available on the Board’s home page
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`athttp://www.uspto.gov/trademarks-application-process/trademark-trial-and-
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`appeal-board-ttab.html. Sections 400-800 of the TBMP will be of the most
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`interest to the parties: Chapter 400 describes disclosures, written discovery,
`
`and discovery depositions; Chapter 500 describes motions practice; Chapter
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`600 describes settlement; and Chapter 700 describes trial procedure and
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`introduction of evidence. Other information is available on the Board’s home
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`page, including links to the trademark statute, the Board’s standard
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` 4
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`Opposition No. 91220956
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`protective order, Accelerated Case Resolution options, and the Office’s FOIA
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`page for access to Board case summaries.
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`Both
`
`parties
`
`have
`
`used
`
`the
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`ESTTA
`
`filing
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`system
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`(http://estta.uspto.gov) and appear to be familiar with it. Addresses can be
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`changed easily and consented motions can be filed in ESTTA, usually
`
`generating an immediate, automatic order granting the motion.
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`
`
`TTABVUE (http://ttabvue.uspto.gov/ttabvue) contains the record for
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`the proceeding. It is recommended that the parties periodically check the
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`database to make sure they have received all orders and copies of all filings.
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`Board records are public and any person may look at the filings in any
`
`proceeding.
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`Settlement
`
`
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`Opposer stated that the parties had not yet had settlement discussions
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`due to the difficultly of communicating directly with Applicant. Opposer is
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`open to and has ideas for achieving settlement; and, to that end, Opposer
`
`suggested that one of Applicant’s unofficial representatives contact Opposer
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`after the conference. Mr. Zlatev agreed to contact Mr. Sales once the Board
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`conference ended.
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`Opposer was reminded that the Board is generous with periods of
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`extension or suspension to facilitate settlement discussions. After the
`
`deadline for initial disclosures has passed, the parties may use the “consent
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`motions” option in ESTTA to automatically obtain a consented extension or
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`suspension of time, if further time is needed. Prior to the deadline for initial
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` 5
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`Opposition No. 91220956
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`disclosures, the parties should use the ESTTA “general filings” option and
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`attach a proposed schedule with the desired new deadlines.
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`Service of papers
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`Opposer was reminded of its obligation to serve each paper filed with
`
`the Board. The Board stated that, as a practical matter, parties located
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`outside the United States must meet the service requirement through
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`Trademark Rule 2.119(b)(5) or (b)(6). See TBMP § 113.04. At present,
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`Applicant must effect service upon Opposer via transmission by overnight
`
`courier.
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`Pleadings
`
`
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`Upon review of the notice of opposition, the Board noted that Opposer
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`had sufficiently pleaded its standing and a single ground for opposition,
`
`namely, priority and likelihood of confusion. The Board noted that Opposer’s
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`pleaded registrations were not currently of record; as a result, priority is still
`
`at issue. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
`
`182 USPQ 108 (CCPA 1974).
`
`
`
`Upon review of the answer, the Board noted that Applicant had fairly
`
`and clearly met the allegations in the notice of opposition. The Board
`
`construed
`
`the paragraphs of Applicant’s affirmative defenses as
`
`amplifications of Applicant’s denial of the allegations in the notice of
`
`opposition. Applicant is reminded that he must include his telephone
`
`number on each filing. See TBMP § 106.02.
`
` 6
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`
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`Opposition No. 91220956
`
`
`Discovery
`
`
`
`Opposer was reminded that TBMP § 414 contains an extensive, but not
`
`exhaustive, guideline of typical discovery topics in Board proceedings.1
`
`
`
`
`
`The Board’s Standardized Protective Order
`
`The Board reminded Opposer that the Board’s standard protective
`
`order is in place in this case governing the exchange of confidential and
`
`proprietary information and materials. Trademark Rule 2.116(g). The Board
`
`stated that Applicant, as a party representing himself, may not have access
`
`to certain material given a level of higher designation of confidentiality
`
`should it be used by Opposer. The Board reminded Opposer that parties may
`
`substitute a stipulated protective agreement (signed by both parties), but
`
`that the Board generally does not become involved in a dispute over any
`
`substitution in view of the existence of the Board’s standardized protective
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`order. See TBMP § 412.02. Opposer stated that it does not intend to use a
`
`substitute protective order.
`
`
`
`
`
`Scope of discovery
`
`The Board briefly mentioned the use of interrogatories, requests for
`
`admission, requests for production of documents and things, and depositions
`
`as discovery devices. Under the current pleadings, discovery should focus on
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`priority and likelihood of confusion. See In re E.I. du Pont de Nemours & Co.,
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`476 F.2d 1357, 1361, 177 USPQ 563 (CCPA 1973). The parties should easily
`
`
`1 Of course, not all subject matters discussed in § 414 will be applicable to the single
`ground alleged in the present case. See “scope of discovery” discussion, infra.
`
` 7
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`
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`Opposition No. 91220956
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`ascertain which du Pont factors are relevant and further concentrate
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`discovery on those factors. See Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d
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`1238, 73 USPQ2d 1350, 1353 (need only consider those factors which are
`
`relevant). Information about the various du Pont factors may also assist the
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`parties in crafting a mutually agreeable settlement.
`
`
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`The Board noted that inasmuch as Applicant is a foreign resident,
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`Opposer should review TBMP §§ 404.03(b) and (d) if it wishes to take the
`
`deposition of Applicant. The Board asked Opposer to consider efficiencies
`
`with any prospective deposition of Applicant, such as deposition by video-
`
`conference or telephone.
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`
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`Although priority is still at issue, the Board mentioned that priority
`
`could easily be removed as an issue - as to those marks and respective goods
`
`and services covered in the pleaded registrations - by Opposer’s making its
`
`registrations of record during the appropriate time (i.e., upon summary
`
`judgment or during its testimony period); however, introduction of the
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`registrations would not remove priority as an issue for Opposer’s alleged
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`common law rights, should Opposer wish to also rely thereon.
`
`
`
`
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`Electronically stored information
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`In general, production of electronically stored information (“ESI”) is
`
`not an issue in Board cases, likely due to the Board’s limited jurisdiction to
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`determine only the right to a registration and due to the public nature of
`
` 8
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`Opposition No. 91220956
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`trademarks. However, if the parties anticipate or encounter a problem, they
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`should work together to resolve the matter.
`
`
`
`
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`Initial disclosures
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`Initial disclosures are: 1) the identity of witnesses likely to have
`
`discoverable information and 2) the description and location of documents
`
`and things having or containing relevant information. More particularly, and
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`as provided for by Fed. R. Civ. P. 26(a)(1)(A)(i) & (ii), those disclosures are:
`
`(i) the name and, if known, the address and telephone number of
`each individual likely to have discoverable information — along
`with the subjects of that information — that the disclosing party
`may use to support its claims or defenses, unless the use would
`be solely for impeachment;
`
`(ii) a copy — or a description by category and location — of all
`documents, electronically stored information, and tangible things
`that the disclosing party has in its possession, custody, or control
`and may use to support its claims or defenses, unless the use
`would be solely for impeachment.
`
`
`
`The current deadline for initial disclosures is July 4, 2015. Disclosures
`
`should not be filed with the Board except under specific,
`
`limited
`
`circumstances. See Trademark Rule 2.120(j)(8). The Board reminds the
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`parties that discovery may not be served, or a motion for summary judgment
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`filed, until the serving or moving party has made initial disclosures (except
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`that a summary judgment motion may be filed prior to initial disclosures only
`
`in connection with limited circumstances which do not appear to be at issue
`
`in this case). See TBMP § 528.02.
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` 9
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`Opposition No. 91220956
`
`
`Accelerated Case Resolution (ACR)
`
`
`
`The Board mentioned the possibility of accelerated case resolution
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`(ACR), and stated that this case appears to be a good candidate for ACR;
`
`however, Opposer was not inclined to pursue ACR at this time. If the parties
`
`agree to pursue ACR or other efficiencies, the parties are to contact the Board
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`for further discussion and administration. The parties were referred to
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`TBMP § 702.04 and to the “ACR & ADR” section of the Board’s home page for
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`more information on ACR.
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`Schedule
`
`Dates remain as previously reset. For the parties’ convenience, the
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`current schedule is reproduced below.
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`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures
`Plaintiff's 15-day Rebuttal Period Ends
`
`
`6/4/2015
`7/4/2015
`11/1/2015
`12/1/2015
`1/15/2016
`2/29/2016
`3/15/2016
`4/29/2016
`5/14/2016
`6/13/2016
`
`In each instance, a copy of the transcript of testimony, together with
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`copies of documentary exhibits, must be served on the adverse party within
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`thirty days after completion of the taking of testimony. Trademark Rule
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`2.l25. Briefs shall be filed in accordance with Trademark Rules 2.128(a) and
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` 10
`
`
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`Opposition No. 91220956
`
`(b). An oral hearing will be set only upon request filed as provided by
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`Trademark Rule 2.l29.
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` 11
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