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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
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`August 1, 2019
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`Opposition No. 91245851
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`Sony Corporation
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`v.
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`
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`Mary Beth Myles, Interlocutory Attorney:
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`Neil Campbell
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`Pursuant to Fed. R. Civ. P. 26(f) and Trademark Rules 2.120(a)(1) and (2), the
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`parties held a timely discovery conference on July 29, 2018. See TRADEMARK TRIAL
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`AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 401.01 (2019). At Mr.
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`Campbell’s request, a member of the Board participated in the conference.
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`Participating in the conference were Mr. Campbell, appearing pro se, Mr. Sommers,
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`counsel for Opposer,1 and Mary Beth Myles, Interlocutory Attorney for the Board.
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`This order memorializes what transpired during the conference. Conferences with
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`the Board may not be recorded.
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`I.
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`Pro Se Party
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`Mr. Campbell advised the Board that he intends to appear pro se. Mr. Campbell
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`was advised that he has the option to retain counsel at any time. Mr. Campbell was
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`1 Ms. Valusek, paralegal for Opposer’s counsel, was also present on the call.
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`Opposition No. 91245851
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`also advised that, due to the nature of the proceedings, legal counsel was strongly
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`advised. The parties were notified that the Board is unable to provide legal advice to
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`either party and can only provide guidance regarding procedural issues. Mr.
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`Campbell will be required to familiarize himself with all Board procedures, rules, and
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`regulations governing the case, including but not limited to, the Trademark Rules of
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`Practice and the Federal Rules of Civil Procedure, where appropriate.
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`II.
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`Settlement
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`During the discovery conference, the parties stated that there had been no
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`settlement discussions since the institution of the proceeding and no agreements had
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`been reached. The Board encouraged the parties to engage in settlement discussions
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`and advised that the Board does entertain, and is liberal in granting, motions to
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`suspend proceedings for settlement discussions. The parties were cautioned,
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`however, that the parties must be actively engaged in settlement discussions to
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`obtain a suspension and that requests to suspend may be denied where there has
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`been protracted suspension without substantial progress towards settlement. See
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`TBMP § 605.02. The parties were further advised that proceedings may only be
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`suspended for settlement with the consent of both parties and that either party may
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`request resumption of the proceedings at any time. Id.
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`III. Board’s Jurisdiction
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`The Board is an administrative tribunal that is empowered solely to determine
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`the right to register, and has no authority to determine the right to use a mark or any
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`infringement or unfair competition issues. See TBMP § 102.01. The Board also does
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`2
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`Opposition No. 91245851
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`not possess injunctive powers to prohibit a party from using its mark, and cannot
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`award monetary damages or attorneys’ fees. See General Mills Inc. v. Fage Dairy
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`Processing Industry SA, 100 USPQ2d 1584, 1591 (TTAB 2011).
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`IV. Related Proceedings
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`The parties informed the Board that they are not involved in any other Board
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`proceedings, civil actions, arbitrations, or other proceedings concerning issues related
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`to the marks involved in the current proceeding. As set forth in the Board’s institution
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`order, the parties must notify the Board promptly in writing if they become parties
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`to another Board proceeding or a civil action involving the same or related marks or
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`issues of law or fact that overlap with this proceeding.
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`V.
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`Electronic Filing and Service of Papers
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`The Board advised the parties that each paper filed with the Board must be served
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`on the opposing party electronically and that all filings with the Board must be made
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`via ESTTA, the Board’s online electronic filing system. If email service is not possible
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`because of technical problems or extraordinary circumstances and there is no
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`stipulation, the serving party must show by written explanation accompanying the
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`submission or paper that email service was attempted but could not be made. In
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`addition, the failure to file motions and papers via ESTTA requires a showing of
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`technical difficulty or an explanation of extraordinary circumstances.
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`3
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`Opposition No. 91245851
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`VI. Pleadings
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`The Board then reviewed the pleadings in this matter for purposes of the discovery
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`conference. The Board finds that Opposer has sufficiently pleaded its standing as well
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`as its claims of likelihood of confusion and dilution by blurring.
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`VII. ACR
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`The Board informed the parties of the Board’s Accelerated Case Resolution
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`(“ACR”) process. While the parties did not stipulate to pursue ACR at this time, the
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`parties may reserve the right to pursue ACR at a future date, if appropriate.2
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`VIII. The Board’s Standard Protective Order
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`The Board then advised the parties of the automatic imposition of the Board’s two-
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`tiered standard protective order pursuant to Trademark Rule 2.116(g), and further
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`indicated that the parties would control which tier of confidentiality applies.
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`Additionally, the Board stated that if the parties wished to modify the Board’s
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`standard protective order, they could do so by filing a motion for Board approval.
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`Because the Board’s standard protective order is automatically imposed on this
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`proceeding, the parties are precluded from objecting to any discovery on the ground
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`of confidentiality.
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`Under the Board’s standard protective order, parties may elect to designate
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`material as Confidential—Attorneys’ Eyes Only. In this case, where Applicant is not
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`represented by counsel, any material designated as Confidential—Attorneys’ Eyes
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`2 Additional information regarding ACR may be found on the Board’s website at:
`https://www.uspto.gov/trademarks-application-process/appealing-trademark-decisions/ttab-
`acr-options.
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`4
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`Opposition No. 91245851
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`Only should not be produced. Rather, if appropriate, Opposer should respond by
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`stating that it has responsive documents or information in its possession, custody or
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`control, but that it is withholding the information as Confidential—Attorneys’ Eyes
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`Only.
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`Under the Board’s standard protective order, once a proceeding before the Board
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`has been finally determined, the Board has no further jurisdiction over the parties
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`thereto. According to the terms of the Board’s protective order, within thirty days
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`following termination of a proceeding, the parties must return to each disclosing
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`party the protected information disclosed during the proceeding, including any briefs,
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`memoranda, summaries, and the like, that discuss or in any way refer to such
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`information. Alternatively, the disclosing party or its attorney may make a written
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`request that such materials be destroyed rather than returned.
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`It is unclear, however, whether the Board can order parties to enter into a contract
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`that will govern the protection of information after the Board proceeding is concluded.
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`See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg.
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`42242, 42251 (August 1, 2007). Thus, it may be advisable for the parties to sign a
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`stipulated protective order, so that it is clear that they are all bound thereby; that
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`they have created a contract that will survive the proceeding; and that there may be
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`a remedy at court for any breach of that contract that occurs after the conclusion of
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`the Board proceeding.3 Nonetheless, any determination of whether the agreement
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`3 While it may be advisable for the parties to sign a stipulated protective order, it is not
`necessary for the Board’s protective order to take effect.
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`5
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`Opposition No. 91245851
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`establishes contractual rights or is enforceable outside of the Board proceeding is for
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`a court to decide should such matter come before it.
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`IX. Discovery and Motion Practice
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`The Board apprised the parties of the general procedural rules and guidelines that
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`govern inter partes proceedings, including the Board’s liberal granting of motions to
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`suspend for settlement efforts, and the requirement that a party serve its initial
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`disclosures pursuant to Fed. R. Civ. P. 26(a)(1)(A)(i) and (ii) prior to serving discovery
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`requests. See Trademark Rule 2.120(a)(3). The Board further noted the parties may
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`not take discovery or file a motion for summary judgment until they had made their
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`initial disclosures pursuant to Fed. R. Civ. P. 26(a)(1).
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`The Board also advised the parties how the amended Federal Rules of Civil
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`Procedure, which became effective December 1, 2015, have affected Board
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`proceedings, particularly discovery. Discovery should be proportional to the needs of
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`the case as mandated by the Federal Rules of Civil Procedure. The parties were also
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`advised that there is a limit of seventy-five interrogatories, document requests, and
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`requests for admission. Trademark Rules 2.120(e) and (i).
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`The Board explained that discoverable material includes electronically stored
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`information and advised the parties to identify any potential problems with the
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`production of electronically stored information in advance. The parties were also
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`instructed to consult TBMP § 414 when preparing and responding to discovery
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`requests and to consult Chapter 400 for other questions concerning discovery.
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`6
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`Opposition No. 91245851
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`The Board then advised the parties that if any party plans to file a motion to
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`compel discovery, the moving party must demonstrate a good faith effort has been
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`made to resolve the discovery dispute before filing its motion.4 The Board also advised
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`the parties that a motion to compel must be filed prior to the day of the deadline for
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`pretrial disclosures for the first testimony period. The parties are advised to consult
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`Chapter 500 of the TBMP for more information on motion practice before the Board.
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`The parties were further advised of the following matters concerning discovery:
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`(1) all discovery requests must be served early enough in the discovery period so that
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`responses will be due no later than the close of discovery;5 (2) interrogatories,
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`requests for production of documents and things and requests for admission are
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`limited to seventy-five, including subparts.6
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`X.
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`Initial Disclosures
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`Initial disclosures are governed under Fed. R. Civ. P. 26(a) and should include the
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`following information:
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`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 [and] 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.
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`
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`4 The Board expects the parties to cooperate with one another in the discovery process and
`looks with disfavor on those who do not so cooperate. See TBMP § 408.01.
`5 Trademark Rule 2.120(f).
`6 Trademark Rules 2.120(e) and (i).
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`7
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`Opposition No. 91245851
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`Fed. R. Civ. P. 26(a)(1)(A)(i) and (ii). The parties should not file their respective
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`initial disclosures with the Board.
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`XI. Expert Witness Disclosures
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`The Board also noted that, to the extent either party retains an expert witness,
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`such party must make their expert witness disclosure by the set deadline, as well as
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`provide the Board with notification that the party will be employing an expert.
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`Depending upon when such notification is made with the Board, the Board, in its
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`discretion, may suspend proceedings for the sole purpose of allowing the parties to
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`take discovery of a designated expert witness.
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`XII. Pretrial Disclosures
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`Pretrial disclosures are governed by Fed. R. Civ. P. 26(a)(3) with one exception:
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`the Board does not require pretrial disclosure of each document or other exhibit that
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`a party plans to introduce at trial as provided by Fed. R. Civ. P. 26(a)(3)(A)(iii).
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`Disclosures allow parties to know prior to trial the identity of trial witnesses, thus
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`avoiding surprise witnesses.
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`In making its pretrial disclosures, the party must disclose the name and, if not
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`previously provided, the telephone number and address of each witness from whom
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`it intends to take testimony, or may take testimony if the need arises. The party must
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`disclose general identifying information about the witness, such as relationship to
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`any party, including job title if employed by a party, or, if neither a party nor related
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`to a party, occupation and job title, a general summary or list of subjects on which
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`the witness is expected to testify, and a general summary or list of the types of
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`Opposition No. 91245851
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`documents and things that may be introduced as exhibits during the testimony of the
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`witness.
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`Pretrial disclosure of a witness under Trademark Rule 2.121(e), however, does not
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`substitute for issuance of a proper notice of examination under Trademark Rules
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`2.123(c) and 2.124(b). Further, if a party does not plan to take testimony from any
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`witnesses, it must so state in its pretrial disclosure.
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`For further information regarding pretrial disclosures, the parties should consult
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`TBMP § 702.01.
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`XIII. Testimony
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`The parties were advised that the Board does not preside at the taking of
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`testimony. Rather, all testimony is taken out of the presence of the Board during the
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`assigned testimony or trial periods and written transcripts thereof, together with any
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`exhibits thereto, are then filed with the Board. The parties may elect to submit
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`testimony via affidavit or declaration, subject to a right by the other side to cross-
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`examine the witness. Trademark Rule 2.123.
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`XIV. Trial
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`The Board advised the parties to consult Chapter 700 of the TBMP for information
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`on trial procedure and the proper introduction of evidence. No paper, document, or
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`exhibit will be considered as evidence in the case unless it has been introduced in
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`evidence in accordance with the applicable rules. See Trademark Rules 2.122 and
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`2.123. The parties were advised that they may utilize stipulations of fact and evidence
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`9
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`Opposition No. 91245851
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`to realize cost and procedural efficiencies. Finally, the parties were reminded that an
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`oral hearing is set only upon request as provided by Trademark Rule. 2.129.
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`XV. Schedule
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`Dates remain as set in the Board’s July 9, 2019 order.
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`10
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