Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1087354
`
`Filing date:
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`10/08/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91242453
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Chicago Cubs Baseball Club, LLC
`
`MARY L. KEVLIN
`COWAN LIEBOWITZ & LATMAN PC
`114 WEST 47TH STREET
`NEW YORK, NY 10036
`UNITED STATES
`Primary Email: mlk@cll.com
`Secondary Email(s): tay@cll.com, trademark@cll.com, dxc@cll.com,
`njh@cll.com, las@cll.com
`212-790-9200
`
`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Reply in Support of Motion
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`Mary L. Kevlin / Dasha Chestukhin
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`mlk@cll.com, trademark@cll.com, dxc@cll.com, lrm@cll.com
`
`/Dasha Chestukhin/
`
`10/08/2020
`
`Reply ifso Motion to Compel.pdf(53449 bytes )
`Reply ifso Motion to Compel - Chestukhin Reply Decl.pdf(956999 bytes )
`
`

`

`Ref. No. 21307.011
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Application Serial No. 87/628,141
`Filed: September 29, 2017
`Published: March 20, 2018
`For Mark: C (Stylized)
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`
`CHICAGO CUBS BASEBALL CLUB, LLC,
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`v.
`
`THE CRATE, INC.,
`
`Opposer,
`
`Applicant.
`
`- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- --
`Commissioner for Trademarks
`Attn: Jennifer Krisp, Interlocutory Attorney
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`X
`:
`:
`:
`:
`:
`:
`:
`:
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`X
`
`
`
`Opposition No. 91242453
`
`
`OPPOSER’S REPLY IN FURTHER SUPPORT OF OPPOSER’S MOTION TO COMPEL
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`PRELIMINARY STATEMENT
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`Applicant The Crate, Inc. (“Applicant”) spends the vast majority of its opposition to Opposer
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`Chicago Cubs Baseball Club, LLC’s (“Opposer”) motion to compel prematurely arguing the underlying
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`merits of this case, including by gratuitously relying on protected settlement communications between the
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`parties’ respective counsel, but ultimately completely fails to justify why Applicant should not be
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`compelled to respond to Opposer’s discovery requests (or, alternatively, why the Board should not permit
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`Opposer to serve revised discovery requests). The inflammatory rhetoric of Applicant’s opposition brief
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`as well as Applicant’s counsel’s unethical submission of protected settlement communications suggest
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`that Applicant is trying to litigate the case while disparaging Opposer, rather than addressing the
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`relatively narrow discovery dispute addressed in Opposer’s motion to compel. For the reasons set forth
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`below and in Opposer’s moving brief, Opposer respectfully requests that the Board compel Applicant to
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`provide substantive responses to Opposer’s discovery requests or else reopen discovery for the sole,
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`limited purpose of permitting Opposer to serve a revised set of requests to be responded to by Applicant.
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` 21307/011/3563161
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`

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`SUMMARY OF RELEVANT FACTS
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`Opposer filed its motion to compel (the “Motion”), 27 TTABVUE, because Applicant failed to
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`provide any substantive responses to either of Opposer’s timely-served interrogatories (the
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`“Interrogatories”) or requests for production of documents and things (the “Document Requests” and,
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`together with the Interrogatories, the “Discovery Requests”). Instead, Applicant served a general
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`objection contending that Opposer’s Discovery Requests exceeded the permitted numerical limits
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`specified in 37 C.F.R. §§ 2.120(d) and (e). Applicant also generally objected that all of the Discovery
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`Requests were disproportionate to the needs of the case because, in Applicant’s estimation, Opposer did
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`not need any documents or interrogatory responses from Applicant to prove Opposer’s case. Applicant
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`contended that its responses to Opposer’s Requests for Admission were sufficient. See Applicant’s
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`Opposition Brief (“Opp. Br.”) at 6-9, 29 TTABVUE 7-10. Opposer disagreed with Applicant’s counting
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`methodology and indicated that Applicant’s general proportionality objection was wholly improper. As a
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`result, Opposer’s counsel met and conferred with Applicant’s counsel to attempt to resolve the dispute.
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`After some initial discussion of the dispute, in lieu of trying to resolve it in its entirety, the parties
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`explored the possibility of stipulating to certain facts to narrow the scope of the subjects into which
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`Opposer would need discovery—though Opposer always made clear it would need some documents and
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`information. See Opposer’s Moving Brief (“Mov. Br.”) at 5-8, 27 TTABVUE 6-9. Opposer’s counsel
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`drafted a document setting out facts to which both Opposer and Applicant had indicated a willingness to
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`stipulate (the “Stipulations of Fact” or “Stipulations”). Id. Applicant’s counsel reverted with a heavily
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`revised version, which did not reflect Opposer’s understanding of the parties’ prior discussions. Reply
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`Declaration of Dasha Chestukhin (“Chestukhin Reply Decl.”) ¶ 2 and Exhibit 1 thereto (showing
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`Applicant’s extensive substantive changes).
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`By way of example, Applicant’s revised Stipulations prohibited Opposer not only from seeking
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`any discovery from Applicant—contrary to the parties’ prior communications, see 27 TTABVUE 56
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`(asking Applicant to produce certain documents simultaneously with transmitting draft Stipulations)—but
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`also from submitting any further evidence at trial, although the prior discussions indicated Opposer’s
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` 21307/011/3563161
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`2
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`intent to do so. Chestukhin Reply Decl. ¶ 3; Exh. 1 ¶ D. By contrast, the Stipulations as revised by
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`Applicant would permit it to submit some additional evidence. Id. Applicant’s revisions also injected
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`ambiguity: for example, rather than stipulating to facts relating to specific, listed marks of Opposer,
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`Applicant proposed stipulating only as to “certain of” Opposer’s marks—without identifying which ones
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`were covered by any given stipulation. Chestukhin Reply Decl. ¶ 3; Exh. 1 ¶¶ 4-5, 7, 10-13.
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`For these, and many other, reasons, Applicant’s proposed revisions were unacceptable to
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`Opposer, as Opposer’s counsel clearly communicated in an email to Applicant’s counsel, delineating its
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`objections and offering to discuss them on a call. Chestukhin Reply Decl. ¶ 4; see also 27 TTABVUE 78-
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`79. As Opposer noted in its moving brief, it did take Opposer’s counsel some months to provide this
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`specific feedback—but this delay was explained by circumstances outside of Opposer’s control, and
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`Opposer’s counsel provided feedback as quickly as possible. See Mov. Br. at 5-7, 27 TTABVUE 6-8.
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`In the same email to Applicant’s counsel, Opposer’s counsel also suggested that, because the
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`parties seemed unlikely to agree on the Stipulations, the parties once again have a call to try to resolve
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`their underlying discovery dispute. 27 TTBAVUE 8-9, 79-80. Because Opposer’s motion to compel
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`deadline was imminent, Opposer’s counsel indicated that Applicant either agree to one of Opposer’s
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`proposals or, if Applicant wanted to discuss modifications or alternatives to those proposals, the parties
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`would need to extend the deadline. 27 TTABVUE 79-80. Opposer’s counsel was not, as Applicant
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`hypothesizes, “merely fishing for more time,” Opp. Br. at 10, 29 TTABVUE 11, but actively trying to
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`resolve the parties’ dispute, subsequently calling and repeatedly emailing Applicant’s counsel to try to
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`confer with him. However, due to Applicant’s counsel’s unavailability and unwillingness to consent to
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`any further suspensions, Opposer’s counsel was unable to do so before the deadline. Mov. Br. at 7-9, 27
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`TTABVUE 8-10.
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`Opposer filed the Motion because it needs, and is entitled to receive, documents and information
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`relevant to Opposer’s claims of likelihood of confusion, likelihood of dilution and false suggestion of a
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`connection. Without such materials, Opposer will be hampered in its ability to prove its claims at trial.
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`Applicant’s statements that “Opposer is not genuinely interested in pursuing discovery in this case,” Opp.
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`3
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`Br. 2, 29 TTABVUE 3, or that Opposer’s Motion “is not intended to actually seek discovery,” Opp. Br.
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`10, 29 TTABVUE 11, constitute entirely baseless speculation undercut by Opposer’s repeated efforts to
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`try to resolve the parties’ discovery dispute so it can obtain necessary discovery from Applicant.
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`I.
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`ARGUMENT
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`OPPOSER’S DISCOVERY REQUESTS ARE NOT EXCESSIVE AND APPLICANT
`SHOULD BE COMPELLED TO ANSWER THEM
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`A.
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`Opposer’s Counting Methodology Shows That Neither Opposer’s Interrogatories
`Nor Document Requests Exceed 75 in Number
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`In accordance with TBMP §§ 405.03(e) and 406.05(e), Opposer sets out, in its moving brief, its
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`counting methodology, which confirms that Opposer has not exceeded the permitted 75 Interrogatories
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`and 75 Document Requests. Mov. Br. at 11-15, 27 TTABVUE 12-16. Applicant claims that, despite
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`Opposer’s detailed description of its counting method, Opposer has nevertheless not satisfied its
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`obligations because the TBMP requires Opposer to “set out its counting method for every request.” Opp.
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`Br. at 6, 29 TTABVUE 7. However, the TBMP only states that it is “recommended that the moving party
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`set out its counting method,” TBMP § 406.05(e) (emphasis added), or “should” set it out. TBMP §
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`405.03(e) (emphasis added). Opposer has done that. Nowhere does the TBMP state that a moving party
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`must show its counting method for every request. Tellingly, despite complaining that Opposer shows its
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`counting methodology only by way of six specific Discovery Requests, Applicant itself lays out its
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`counting methodology by referencing just three Interrogatories and no Document Requests. Opp. Br. at 5-
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`6, 29 TTABVUE 6-7. Despite Applicant’s protests, its own brief confirms that a party’s counting
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`methodology is best demonstrated by way of example rather than exhaustive enumeration.
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`Applicant’s counting method is furthermore flawed: Applicant suggests that any use of the
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`conjunctions “or” and “and/or” results in a new request. Opp. Br. at 5, 29 TTABVUE 6, but points to no
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`authority to support this. For the reasons set forth in its moving brief and above, Opposer maintains that it
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`has not served an excessive number of either Interrogatories or Document Requests.
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` 21307/011/3563161
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`4
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`B.
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`Even If Opposer’s Document Requests Were Excessive, the Board Should Allow
`Opposer to Serve Revised Discovery Requests
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`Even if the Board ultimately finds that Opposer’s Document Requests and/or Interrogatories are
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`excessive, the normal course of action would be to “allow the propounding party an opportunity to serve a
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`revised set of interrogatories [and/or requests for production] not exceeding” the numerical limit of 75.
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`TBMP §§ 405.03(e) and 406.05(e). The TBMP specifies that, if such an order is issued after the close of
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`discovery, “the discovery period will be extended or reopened, as appropriate, to permit service of and
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`responses to the revised set.” TBMP §§ 405.03(e) and 406.05(e). Applicant does not contest that the
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`normal remedy for excessive discovery requests should be followed in this case.
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`Moreover, even though the TBMP makes explicit that every party has a duty “to make a good
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`faith effort to satisfy the discovery needs of its adversary,” TBMP § 408.01, Applicant never made a good
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`faith attempt to resolve the parties’ dispute, even stating in its opposition brief that it is “not for Applicant
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`to pare down what questions are being asked to get to the 75 number.” Opp. Br. at 6, 29 TTABVUE 7.
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`However, the TBMP states that, specifically with respect to disputes as to excessiveness of discovery
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`requests, “it is strongly recommended that the parties voluntarily agree to the service of a revised set of
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`interrogatories [or requests for production] . . . instead of bringing their dispute to the Board by motion to
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`compel.” TBMP §§ 405.03(e) and 406.05(e) (emphases added); see also Emilio Pucci Int’l BV v.
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`Sachdev, 118 U.S.P.Q.2d 1383, 1385 (T.T.A.B. 2016) (parties in an excessiveness dispute are encouraged
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`“to discuss their respective counting methods and earnestly attempt to resolve any dispute”). Here,
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`Opposer repeatedly tried to come to an agreement with Applicant on just such a set of Discovery
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`Requests before being forced to resort to motion practice. Having refused to try to come to an agreement
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`with Opposer as to a pared-down list of Discovery Requests, despite Opposer’s providing such a
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`suggested list in writing, Applicant should not be heard to complain that Opposer should now have an
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`opportunity to serve revised Discovery Requests.
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` 21307/011/3563161
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`5
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` Accordingly, if the Board disagrees with Opposer’s counting method and finds its Discovery
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`Requests to be excessive, Opposer requests that the Board reopen discovery for the sole, limited purpose
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`of allowing Opposer to serve, and Applicant to answer, a revised set of Discovery Requests.
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`II.
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`OPPOSER IS ENTITLED TO DISCOVERY RELEVANT TO ITS CLAIMS
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`A.
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`Opposer’s Discovery Requests Are Proportional Because They Seek Matter Directly
`Relevant to Opposer’s Claims
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`Rule 26(b)(1) of the Federal Rules of Civil Procedure provides that each party “may obtain
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`discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and
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`proportional to the needs of the case.” See also TBMP § 402.01 (a party may take discovery as to matters
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`specifically raised in the pleadings). The proportionality requirement in Rule 26(b)(1) is not “intended to
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`permit the opposing party to refuse discovery simply by making a boilerplate objection that it is not
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`proportional.” Advisory Comm. Notes on 2015 Amendment, Fed. R. Civ. P. 26(b)(1), available at
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`https://www.law.cornell.edu/rules/frcp/rule_26.
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`However, this is exactly the argument made by Applicant, which claims that Opposer’s
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`Discovery Requests—in their entirety—are not proportional to the needs of the case. Opp. Br. at 7, 29
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`TTABVUE 8. Opposer’s Notice of Opposition in this proceeding specifically raises claims of likelihood
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`of confusion, likelihood of dilution by blurring and false suggestion of a connection. 1 TTABVUE 27-28.
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`Opposer’s Discovery Requests seek from Applicant documents and information relevant to these claims,
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`and further go to matters properly discoverable in an inter partes proceeding. Broadly speaking,
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`Opposer’s Discovery Requests seek documents and information regarding the following categories:
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`1. Applicant’s selection of Applicant’s Mark.
`2. Applicant’s first use date of Applicant’s Mark on or in connection with Applicant’s Goods.
`3. Whether Applicant was aware of Opposer and/or of Opposer’s C Marks when it adopted,
`and when it first started use of, Applicant’s Mark.
`4. The channels of trade through which Applicant sells or offers for sale Applicant’s Goods,
`including all websites.
`5. Types of customers to which Applicant markets, sells or offers for sale Applicant’s Goods.
`6. The geographic areas where Applicant sells or offers for sale Applicant’s Goods.
`7. Annual revenues and annual gross profits from the sale of Applicant’s Goods bearing
`Applicant’s Mark.
`8. Annual advertising/marketing/promotional expenses for Applicant’s Goods bearing
`Applicant’s Mark.
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`9. Representative examples of Applicant’s Mark.
`10. Representative examples of advertising/marketing/promotional materials with Applicant’s
`mark.
`11. Any licensing or sponsorship agreements relating to Applicant’s Mark (or a statement that
`the foregoing do not exist).
`12. Any trademark searches or other investigations conducted by Applicant in connection with
`Applicant’s Mark (or a statement that the foregoing were not conducted).
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`These categories closely track TBMP § 414’s illustrative (but not exhaustive) list of matters
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`discoverable in inter partes proceedings, like this one, which include:
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`
`
`
`
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`
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`
`
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`
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`“Information concerning a party’s selection and adoption of its involved mark”
`“Information concerning a party’s first use of its involved mark”
`“[C]lasses of customers for a party’s involved goods”
`“Information relating to the areas of distribution for a party’s involved goods or services sold
`under its involved mark”
`“The locations of those places of business where a party manufactures its involved goods, or
`conducts its involved services”
`“Annual sales and advertising figures, stated in round numbers”
`“The identity of any advertising agency engaged by a party to advertise and promote the
`party’s involved goods”
`“Information concerning litigation and controversies including settlement and other
`contractual agreements between a responding party and third parties based on the responding
`party’s involved mark”
`“Search reports”
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`Opposer’s Discovery Requests seek precisely the types of matter that the TBMP expressly lists as
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`
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`discoverable in proceedings like this one. It is worth noting that Applicant’s statement that “Opposer
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`should not have commenced this case unless it already had evidence to support its claims,” Opp. Br. at 10,
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`29 TTABVUE 11, suggests that Applicant may misapprehend the purpose of discovery—which is
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`precisely to allow parties to gather additional evidence supporting their claims or defenses for use at trial.
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`B.
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`Applicant’s Theory of the Case Does Not Limit the Scope of Opposer’s Discovery
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`As the TBMP makes clear, “[a] party may not, by limiting its own discovery and/or presentation
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`of evidence on the case, thereby restrict another party’s discovery in any way.” TBMP § 402.01. Even if
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`Applicant believes that this case can be “decided by a simple visual comparison of the subject marks,”
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`Opp. Br. at 3, 29 TTABVUE 4, the Board may consider a much broader set of factors, as set out above.
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`Accordingly, regardless of whether Applicant “intends to rely primarily upon a comparison of the marks
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`7
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`at issue without using other documents,”1 Opp. Br. at 7, 29 TTABVUE 8, Opposer is nevertheless entitled
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`to seek discovery into matters relating to all of the elements of all of its claims.
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`C.
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`Opposer Did Not Admit Having Documents About Applicant or Applicant’s Mark
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`Applicant posits that Opposer should not be allowed to receive any discovery from Applicant
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`because “Opposer stated that it already has within its possession categories of documents concerning
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`Applicant’s use of the subject mark, knowledge of Opposer’s marks, and any alleged confusion.” Opp.
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`Br. at 8, 29 TTABVUE 9. It cites to Opposer’s Initial Disclosures II(4), attached as Exhibit 2 to the
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`Greenberger Declaration. 29 TTABVUE 29-34. Instead, the cited section shows that Opposer claimed
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`that Applicant, not Opposer, possessed such documents. See 29 TTABVUE 34.The entirety of the cited
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`section is reproduced below (with emphasis added):
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`Documents concerning Applicant’s use, intended use and/or attempted
`registration of Applicant’s Mark, Applicant’s knowledge of the use of and
`registration of Opposer’s C Marks, and actual consumer confusion or
`belief in association, affiliation or sponsorship by or between Applicant
`and Opposer – located at the offices of Applicant and/or Applicant’s
`counsel.
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`III.
`
`
`APPLICANT’S GRATUITOUS, UNETHICAL RELIANCE ON PROTECTED
`SETTLEMENT COMMUNICATIONS AND ARGUMENTS AS TO THE MERITS OF
`THIS CASE ARE IMPROPER AND SHOULD BE DISREGARDED
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`Rule 408 of the Federal Rules of Evidence (“Rule 408”) prohibits the use of statements made
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`during compromise (i.e., settlement) negotiations, as well as settlement offers or responses to the same, to
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`prove or disprove a claim. Fed. R. Evid. 408(a). The presiding court may admit such evidence for another
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`purpose, but only in limited circumstances, such as where it is necessary to negate a contention of undue
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`delay or prove a witness’s bias. Fed. R. Evid. 408(b). Applicant attached, as Exhibit 5 to the declaration
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`of Applicant’s counsel, correspondence between Applicant’s and Opposer’s respective counsel—
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`including unredacted, substantive settlement communications. These communications include specific
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`1 Even Applicant does not believe its assertion that the “only real issue in this case is whether Applicant’s
`stylized ‘C’ is ‘nearly identical’ to the Chicago Cubs’ own ‘C’ mark(s).” Opp. Br. 7, 29 TTABVUE 8
`(emphasis added). Its revised Stipulations allow it to introduce other evidence. See Exh. 1 ¶ D.
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`8
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`settlement offers as well as correspondence about settlement negotiations, that is, precisely the type of
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`evidence expressly prohibited by Rule 408.
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`Moreover, these communications were not submitted for any permissible, or even immediately
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`obvious, purpose. Applicant states that the emails “speak for themself [sic],” presumably to support
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`Applicant’s claim in the next sentence that Opposer has had delays in this proceeding. Opp. Br. at 9, 29
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`TTABVUE 10. However, Opposer has never denied, and indeed expressly stated in its moving brief, that
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`it has experienced delays in the course of this proceeding. See Mov. Br. at 5-7, 27 TTABVUE 6-8.
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`Accordingly, Applicant was not using these settlement communications to negate its contention of delay,
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`but apparently to simply support its own uncontroverted contention of delay.
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`Indeed, given the brevity of Applicant’s reference to the settlement communications in its
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`opposition brief, it is not clear why Applicant submitted all of the parties’ correspondence. It is likewise
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`unclear why Applicant did not, as Opposer did in its own exhibits, 27 TTABVUE 55-69 (Exhs. C & D),
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`redact those portions of the parties’ emails that contained settlement communications.
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`Applicant’s reliance on unredacted settlement communications appears gratuitous, while
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`Applicant’s counsel’s submission of such communications with his declaration, despite knowing that the
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`communications contained inadmissible matter, was unethical. Accordingly, Opposer respectfully
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`requests that the Board disregard, and, if possible, seal from public view, Exhibit 5 to the Declaration of
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`Jordan Greenberger (or at least those portions thereof containing protected settlement communications).
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`Moreover, despite the fact that Opposer’s Motion deals with the issue of whether Applicant
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`should be compelled to respond to Opposer’s Discovery Requests, Applicant repeatedly makes
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`substantive arguments as to the merits of the ultimate questions in this case. See Opp. Br. at 1-2, 3, 7, 8-9,
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`29 TTABVUE 2-3, 4, 8, 9-10. On the very first page, Applicant argues that a “visual comparison of the
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`two marks” shows that this is a straightforward case—even though that is a question to be decided at trial,
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`not on this Motion. See Opp. Br. at 1-2, 29 TTABVUE 2-3. All of Applicant’s arguments as to the
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`ultimate merits of this case should be disregarded as premature.
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`9
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`The Board should likewise disregard Applicant’s inflammatory rhetoric, such as Applicant’s
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`repeated accusations that Opposer is trying to “scare away” Applicant. Opp. Br. 1, 2, 6-7, 8, 10, 29
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`TTABVUE 2, 3, 7-8, 9, 11. Applicant has sought national protection for its mark on the federal register.
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`Opposer is merely protecting its valuable trademark rights. Further, Opposer is not abusing the discovery
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`process, as Applicant alleges, Opp. Br. at 2, 8, 29 TTBAVUE 3, 9, but merely trying to obtain basic
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`discovery from Applicant, as explained above.
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`For the reasons set forth above and in Opposer’s moving brief, Opposer’s motion to compel
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`CONCLUSION
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`discovery from Applicant should be granted in its entirety.
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`Dated: October 8, 2020
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`
`Respectfully submitted,
`
`COWAN, LIEBOWITZ & LATMAN, P.C.
`Attorneys for Opposer
`
`
`
`
`By:
`Mary L. Kevlin
`Richard S. Mandel
`Dasha Chestukhin
`114 West 47th Street
`New York, New York 10036-1525
`(212) 790-9200
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that, on October 8, 2020, I caused a true and correct copy of the foregoing
`Opposer’s Reply in Support of Opposer’s Motion to Compel and the annexed Declaration of Dasha
`Chestukhin and Exhibit 1 thereto to be served on Applicant by sending a copy thereof via email to
`Applicant’s Attorney and Correspondent of Record, Jordan Greenberger of J Greenberger PLLC at
`jordan@jgreenbergerlaw.com.
`
`
`
`
`
`
`
`Dasha Chestukhin
`
`
`
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`
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` 21307/011/3563161
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`10
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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Application Serial No. 87/628,141
`Filed: Sept. 29, 2017
`Published: March 20, 2018
`For Mark: C (Stylized)
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`
`CHICAGO CUBS BASEBALL CLUB, LLC,
`
`v.
`
`THE CRATE, INC.,
`
`Opposer,
`
`Applicant.
`
`- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- --
`
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`X
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`X
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`Opposition No. 91242453
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`DECLARATION OF DASHA CHESTUKHIN IN SUPPORT OF OPPOSER’S
`REPLY IN FURTHER SUPPORT OF OPPOSER’S MOTION TO COMPEL
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`DASHA CHESTUKHIN , pursuant to 28 U.S.C. § 2.20, declares:
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`1.
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`I am an attorney with Cowan, Liebowitz & Latman, P.C., attorneys for Opposer Chicago
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`Cubs Baseball Club, LLC (“Opposer”). I submit this declaration in support of Opposer’s Reply in
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`Further Support of Opposer’s Motion to Compel.
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`2.
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`After I provided Applicant’s counsel with a draft document setting out undisputed facts
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`to which both Opposer and Applicant had expressly indicated a willingness to stipulate (the “Stipulations
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`of Fact” or “Stipulations”), Applicant’s counsel reverted with a heavily revised version of the Stipulations
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`of Fact, which did not reflect Opposer’s understanding of the parties’ prior discussions. A true and
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`correct copy of a document showing, in tracked changes, Applicant’s changes to the Stipulations of Fact
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`is attached hereto as Exhibit 1.
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`3.
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`By way of barest example, Applicant’s revised Stipulations would have prohibited
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`Opposer not only from seeking any discovery from Applicant—contrary to the parties’ prior
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`communications—but also from submitting any further evidence at trial, including evidence gathered by
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`Opposer independently. At the same time, though, the Stipulations would have permitted Applicant to
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`submit evidence of third-party use, a subject that the parties had not broached at all during their
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`discussions. Applicant’s revisions also injected ambiguity into the Stipulations: for example, rather than
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`stipulating to facts relating to specific marks of Opposer, clearly listed in the Stipulations themselves,
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`Applicant instead proposed to stipulate only as to “certain of” Opposer’s marks—without identifying
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`which marks were, or were not, covered by any given stipulation. See Exhibit 1 ¶¶ D, 4-5, 7, 10-13.
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`4.
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`For the foregoing, and many other, reasons, Applicant’s proposed revisions were
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`unacceptable to Opposer, as I clearly communicated in an email to Applicant’s counsel, delineating in
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`writing numerous specific changes that were nonstarters for Opposer, explaining Opposer’s objections,
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`and offering to discuss them further on a call.
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`Declaration
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`The undersigned, being duly warned that willful false statements and the like so made are punishable by
`fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements may
`jeopardize the validity of the declaration to which it pertains, declares that all statements made of her own
`knowledge are true and all statements made on information and belief are believed to be true.
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`EXECUTED ON OCTOBER 8, 2020 AT KENT, CONNECTICUT.
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`Dasha Chestukhin
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`EXHIBIT 1
`EXHIBIT 1
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`Ref. No. 21307.011
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91242453
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`In re Application Serial No. 87/628,141
`Filed: Sept. 29, 2017
`Published: Mar. 20, 2018
`For Mark: C (Stylized)
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - X
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`CHICAGO CUBS BASEBALL CLUB, LLC,
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`- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- X
`Commissioner for Trademarks
`Attn: Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`v.
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`THE CRATE, INC.,
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`Opposer,
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`Applicant.
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`STIPULATIONS OF FACT
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`Pursuant to 37 C.F.R. § 2.123(b) and RuleRules 702.04 and 705 of the Trademark Trial
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`and Appeal Board Manual of Procedure (“TBMP”), Opposer Chicago Cubs Baseball Club, LLC
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`(“Opposer”) and Applicant The Crate, Inc. (“Applicant”) hereby jointly stipulate to the following
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`facts through the filing of the instant Stipulations of Facts (the “Stipulations” and each a
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`“Stipulation”), subject to the approval of the Trademark Trial and Appeal Board (the “Board”).
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`ACR & Procedural Stipulations
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`A.
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`The parties enter into these Stipulations to limitavoid the scope ofneed for any
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`further discovery and, to streamline the admission of evidence in the order to facilitate the
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`efficient administration of justice., to stipulate to the entire trial record, and to participate in
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`Accelerated Case Resolution (ACR) by having an abbreviated trial on the merits.
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` 21307/011/3372081.3 21307/011/3372081.3
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`B.
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`Each party reserves the right to object to stipulated evidence on the grounds of
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`competency, relevance, and materiality.
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`C.
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`Each party reserves the right to argue any stipulated evidence is favorable to it, or
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`dis-favorable to the other party.
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`D.
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`The parties will not submit any other evidence or testimony outside of what is
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`stipulated to herein. Notwithstanding the foregoing, in addition to the Stipulations of fact,
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`below, the parties also may submit for consideration by the Board: (1) the pleadings in this
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`action, including marked pleadings; (2) Opposer’s First Set of Requests for Admission and
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`Applicant’s responses thereto; (3) Applicant’s application and prosecution history for the subject
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`mark, including all documents and specimens submitted therewith; (4) Opposer’s trademark
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`registrations for the marks it identifies in the pleadings; (5) evidence of third-party usage of the
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`same or similar marks; and (6) images, certified to be true and correct by the parties’ respective
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`counsel, from the parties’ respective websites for their goods and services, including without
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`limitation http://www.thecrateny.com and www.mlbshop.com/Chicago_Cubs (collectively,
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`“Additional Material”). To the extent that there is any conflict between the Stipulations of fact,
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`below, and the Additional Material, then the Additional Material shall control.
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`E.
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`The Stipulations of fact, below, are solely for purposes of this opposition
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`proceeding before the Board. The Stipulations of fact may not be used or relied upon by the
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`parties, or by anyone else (including a court or other judicial body) in any other matter,
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`proceeding, arbitration or action, including without limitation in any future litigation that may
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`concern the parties’ respective marks.
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`F.
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`Opposer shall serve and file a trial brief on or before _______, which shall be
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`limited to 25 pages inclusive of table of contents, index of cases, description of the record,
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` 21307/011/3372081.3 21307/011/3372081.3
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`statement of issues, recitation of the facts, argument and summary. Applicant shall serve and file
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`its trial brief on or before ______, which shall be limited to 25 pages inclusive of table of
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`contents, index of cases, description of the record, statement of issues, recitation of the facts,
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`argument and summary. Opposer shall file and serve its reply trial brief on or before ______,
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`which shall be limited to 15 pages inclusive of table of contents, index of cases, description of
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`the record, statement of issues, recitation of the facts, argument and summary.
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`G.
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`The Board’s final decision in this opposition proceeding shall be based upon the
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`Stipulations, Additional Materials (to be submitted via counsel’s declaration), and the parties’
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`respective briefs.
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`Factual Stipulations
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`1.
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`2.
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`There is no connection or affiliation between Opposer and Applicant.
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`Opposer is the owner of the registrations set forth in the following table
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`(collectively, “Opposer’s C Mark Registrations”):
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`Mark
`Reg. No./Ser. No.
`C
`RN: 1183876
`SN: 73240066
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`Goods/Services
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`(Int’l Class: 25)
`hats, caps
`(Int’l Class: 28)
`toy b