Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1071965
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`Filing date:
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`07/31/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91254256
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`Party
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`Correspondence
`Address
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`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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`Plaintiff
`Nextten Stauer, LLC
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`ZACHARY D COHEN
`THOMPSONMCMULLAN PC
`100 SHOCKOE SLIP
`RICHMOND, VA 23219
`UNITED STATES
`Primary Email: zcohen@t-mlaw.com
`Secondary Email(s): swhite@t-mlaw.com
`804-649-7545
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`Reply in Support of Motion
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`Zachary D. Cohen
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`zcohen@t-mlaw.com, swhite@t-mlaw.com
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`/Zachary D. Cohen/
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`07/31/2020
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`20 07 31 Memorandam in Support of Motion to Compel and against Red Ea rth
`Motion to Compel.pdf(198719 bytes )
`20 07 31 Cohen Declaration in Support of Memo w exhibits.pdf(3356836 bytes )
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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. 91254256
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`NEXTTEN STAUER, LLC,
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`Opposer,
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`v.
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`RED EARTH GROUP LIMITED,
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`Applicant.
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`OPPOSER NEXTTEN STAUER LLC’S MEMORANDUM IN SUPPORT OF OPPOSER’S
`MOTION TO COMPEL AND IN RESPONSE TO APPLICANT’S MOTION TO COMPEL
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`Opposer Nextten Stauer, LLC (“Opposer”), by and through counsel, hereby submits the
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`following in support of its Motion to Compel and in response to the Motion to Compel filed by
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`Applicant Red Earth Group Limited (“Applicant”).
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`I. Argument in Support of Opposer’s Motion to Compel
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`a. Applicant has failed to respond to Opposer’s Document Requests timely
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`despite repeated extensions
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`“Responses to requests for production must be served within 30 days after the date of
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`service of the requests.” TBMP § § 406.04(a). See also Fed. R. Civ. P. 34(b)(2)(A); 37 C.F.R. §
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`2.120(a)(3). To date, Applicant has neither objected nor responded to Opposer’s document
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`requests which were served on Applicant’s counsel on May 1, 2020. (#7 TTABVUE, Cohen
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`Decl. in Support of Motion to Compel ¶ 2 & Ex. A.) When first contacted about its failure to
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`respond, Applicant claimed that it did not receive Opposer’s document requests despite the fact
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`that Opposer’s document requests were sent in the same email to Applicant as Opposer’s
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`interrogatories and requests for admission which Applicant responded to timely. (#7 TTABVUE,
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`1
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`Cohen Decl. in Support of Motion to Compel ¶ ¶ 2, 5-6 & Exs. A, D-E.) Since then, Opposer has
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`consented to three extensions and each time Applicant failed to produce any documents by the
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`deadline. (#7 TTABVUE, Cohen Decl. in Support of Motion to Compel ¶ ¶ 6, 9-10, 12-13 &
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`Exs. A, E, G-H, J.) Applicant’s failure to provide any documents despite multiple extensions as
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`well as its lack of candor regarding its receipt of Opposer’s document requests reflects its lack of
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`good faith participation in the discovery process as well as its propensity to misrepresent as set
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`forth infra. Opposer requests that Applicant be ordered to produce responsive documents in short
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`order.
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`b. Applicant’s responses to Interrogatories Nos. 10, 19, 20, 21, and 23 directing
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`Opposer to records that have yet to be produced fail to meet the requirements
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`of FRCP 33(d)
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`Applicant cannot avoid its duty to respond fully and completely to Opposer’s
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`Interrogatories Nos. 10, 19, 20, 21, and 23—which were served on Applicant on May 1, 2020—
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`by invoking Fed. R. Civ. P. 33(d) to refer Opposer to business records which have neither been
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`produced nor made available to Opposer. (#7 TTABVUE, Cohen Decl. in Support of Motion to
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`Compel ¶ ¶ 2, 7 & Exs. A, F.) Indeed, the plain language of Fed. R. Civ. P. 33(d)(2) provides
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`that in addition to specifying the record, the answering party must give the interrogating party “a
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`reasonable opportunity to examine and audit the records and to make copies, compilations,
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`abstracts, or summaries.” Applicant, having invoked Rule 33(d), must make the records available
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`to Opposer. It is not appropriate to invoke Rule 33(d) and then say the records will be specified
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`and produced later. See, e.g., Memory Integrity, LLC v. Intel Corp., 308 F.R.D. 656, 663 (D. Or.
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`2015); Walt Disney Co. v. DeFabiis, 168 F.R.D. 281, 284 (C.D. Cal. 1996); Blake Associates,
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`Inc. v. Omni Spectra, Inc., 118 F.R.D. 283, 289 (D. Mass. 1988). If Applicant were able to
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`2
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`withhold information from Opposer in this manner, Applicant could entirely avoid its obligation
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`to provide answers to interrogatories, and thereby participate in the discovery process, by
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`referring to documents that it has failed to make available to Opposer. Notwithstanding
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`Applicant’s failure to produce or make the records available to Opposer, Applicant’s conduct
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`fails to meet the standard for invoking Fed. R. Civ. P. 33(d) to respond to interrogatories by
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`referring a requesting party to business records.
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`As set forth in Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s
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`ogranitchennoy; otvetstvennostiu “WDS”, 95 USPQ2d 1567 (TTAB 2010), No Fear, Inc. v. Rule,
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`54 USPQ2d 1551 (TTAB 2000), and Jain v. Ramparts, Inc., 49 USPQ2d 1429 (TTAB 1998), a
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`party responding to an interrogatory by directing the requesting party to business records under
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`Fed. R. Civ. P. 33(d) must comply with three specific conditions. First, a responding party “must
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`identify documents which the responding party knows to contain the responsive information, and
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`may not merely agree to provide access to a voluminous collection of records which may contain
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`the responsive information.” Johnson & Johnson, 95 USPQ2d at 1568; No Fear, 54 USPQ2d at
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`1555. Next, “a party may not rely on the option to produce business records unless it can
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`establish that providing written responses would impose a significant burden on the party.” Id.
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`Third, “‘even if the responding party can meet the above two requirements and can identify
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`particular documents in which the inquiring party will find answers, the inquiring party must not
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`be left with any greater burden than the responding party when searching through and inspecting
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`the records.’” Johnson & Johnson, 95 USPQ2d at 1568, citing, No Fear, 54 USPQ2d at 1555.
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`Applicant has failed to meet any of the three conditions mandated to invoke Fed. R. Civ.
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`P. 33(d). First, Applicant has not identified a single document which contains responsive
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`information as required by the first condition. Even if Applicant had identified such documents,
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`3
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`any identification by Applicant would be futile because Opposer is incapable using such
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`information to locate the answers to the interrogatories since Opposer has not received or been
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`granted access to any documents from Applicant. Second, Applicant has not articulated why it
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`would impose a “significant burden” on Applicant to provide written responses to Interrogatories
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`Nos. 10, 19, 20, 21, and 23. Third, even if Applicant identified documents—which it has not—
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`Opposer would be left with a greater burden than Applicant when reviewing Applicant’s records
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`to ascertain the answers to Interrogatories Nos. 10, 19, 20, 21, and 23. If, as seems likely, the
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`documents that contain the answers to the interrogatories are in Chinese, it would be significantly
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`less burdensome for Applicant—a company based in Hong Kong—to provide answers in
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`accordance with Fed. R. Civ. P. 33(b) than for Opposer to attempt to translate from documents in
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`a foreign language. See Johnson & Johnson 95 USPQ2d at 1569 (“…a duty is imposed on the
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`party to provide documents from which the response to the interrogatory is clearly ascertainable.
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`Referencing document written in a foreign language does not completely fulfill this duty.”)
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`Thus, given that Applicant has produced no documents to date and that it cannot meet the
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`three conditions required to invoke Fed. R. Civ. P. 33(d), Applicant should be compelled to
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`provide full and complete answers to Interrogatories Nos. 10, 19, 20, 21, and 23.
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`c. Applicant has waived objections to Opposer’s Interrogatories and Document
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`Requests
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`Pursuant to Section 403.03 of the TBMP, “[a] party which fails to respond to
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`interrogatories or document requests during the time allowed therefor, and which is unable to
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`show that its failure was the result of excusable neglect, may be found, upon motion to compel
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`filed by the propounding party, to have forfeited its right to object to the discovery request on its
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`merits.” See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000) (stating that the Board
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`has great discretion in determining whether such forfeiture should be found); Envirotech Corp. v.
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`Compagnie Des Lampes, 219 USPQ 448, 449 (TTAB 1979) (excusable neglect not shown where
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`opposer was out of the country and, upon return, failed to ascertain that responses were due);
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`Crane Co. v. Shimano Industrial Co., 184 USPQ 691, 691 (TTAB 1975) (waived right to object
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`by refusing to respond to interrogatories, claiming that they served "no useful purpose"); see also
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`Fed. R. Civ. P. 33(b)(4) (“Any ground not stated in a timely objection is waived unless the court,
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`for good cause, excuses the failure.”). While Fed. R. Civ. P. 34 does not expressly provide that
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`objections to document requests will be waived if not set forth in a timely response, most courts
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`have adopted the waiver rule from Rule 33 and thus hold that waiver is automatic. See, e.g., Kan.
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`City Power & Light Co. v. United States, 132 Fed. Cl. 28, 33 (Fed. Cl. 2017) (“The failure to
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`make a proper objection to a document production request may result in the waiver of that
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`objection.”); Richmark Corp. v. Timber Falling Consultants, 959 F.2d 1468, 1473 (9th Cir. 1992)
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`(“It is well established that a failure to object to discovery requests within the time required
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`constitutes a waiver of any objection.”); Marx v. Kelly, Hart & Hallman, P.C., 929 F.2d 8, 12 (1st
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`Cir. 1991) (“If the responding party fails to make a timely objection, he may be held to have
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`waived any or all of his objections”).
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`Applicant has failed to raise objections timely and failed to meet by its affirmative duty to
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`cooperate in the discovery process. See Emilio Pucci Int’l BV v. Sachdev, 118 USPQ2d 1383,
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`1385 (TTAB 2016) (citing Panda Travel Inc. v. Resort Option Enters. Inc., 94 USPQ2d 1789,
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`1791 (TTAB 2009) (parties have a duty to cooperate in discovery and the failure to attempt to
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`resolve a dispute with an opponent reflects a disregard for its duty to participate in the discovery
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`process)). Permitting Applicant to raise objections at this point would reward Applicant’s failure
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`to object and otherwise adhere to the rules governing the discovery process. Accordingly,
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`5
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`Opposer requests that an Order be entered prohibiting Applicant from raising objections to the
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`interrogatories or document requests that have been propounded by Opposer.
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`II. Argument in Response to Applicant’s Motion to Compel
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`a. Applicant’s Declarations and Motion to Compel are Frivolous and Contain
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`Many Misrepresentations
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`i. Opposer’s Responses to Applicant’s Interrogatories and Document
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`Responses were not due when Applicant filed its Motion to Compel
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`Applicant’s counsel emailed Opposer’s counsel its interrogatories on May 25, 2020 and
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`its document requests on June 17, 2020. (Cohen Decl. in Support of Memorandum ¶ ¶ 2, 3 &
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`Exs. A, B.) Pursuant to TBMP § § 405.04(a), 406.04(a), and 37 C.F.R. § 2.120(a)(3), Opposer
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`had 30 days from the respective dates of service to respond. This means that Opposer’s response
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`to Applicant’s interrogatories would not have been due until June 25, 2020 and its response to
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`Applicant’s document requests would not have been due until July 17, 2020. Applicant filed its
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`Motion to Compel on July 13, 2020—four days prior to the date on which Opposer’s response to
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`Applicant’s document requests were due—seeking an order “. . . compelling Opposer to produce
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`all responsive documents and provide complete responses to Applicant’s Interrogatories Nos. 1 to
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`25 within ten (10) days of the Board’s order on this motion. . .” (#9 TTABVUE.)
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`In addition to the fact that at the time Applicant filed its Motion to Compel, Opposer’s
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`responses to Applicant’s document requests were not yet even due, three weeks prior to
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`Applicant filing its Motion to Compel, Applicant had agreed that Opposer could have an
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`extension to respond to Applicant’s interrogatories and document requests. Specifically, on June
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`23, 2020, Applicant agreed to provide Opposer with a thirty (30) day extension to respond to
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`Applicant’s interrogatories and document requests. (#7 TTABVUE, Cohen Decl. in Support of
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`6
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`Motion to Compel ¶ 10, Ex. H.) With this extension, Opposer’s response to Applicant’s
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`interrogatories would not be due until July 27, 2020 and its response to Applicant’s document
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`requests would not be due until August 17, 2020. Therefore, Applicant filed its Motion to
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`Compel despite the fact that: (i) Opposer’s responses to Applicant’s document requests were not
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`due under the rules governing discovery; (ii) Applicant had earlier consented to an extension for
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`Opposer to respond to both Applicant’s interrogatories and document requests; and, (iii) Opposer
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`had already sent Applicant its responses to Applicant’s interrogatories as set forth infra.
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`ii. Opposer’s Responses to Interrogatories had already been provided to
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`Applicant timely on June 24, 2020
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`In Paragraphs 8-9 of the Declaration of Lai May Wu in Opposition of Opposer’s Motion
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`to Compel Applicant to Respond to Discovery Requests, Ms. Wu avers that Opposer failed to
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`serve its responses to Applicant’s interrogatories that were served on Opposer on May 25, 2020.
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`(#8 TTABVUE, Wu Decl. in Opposition to Opposer’s Motion to Compel ¶ ¶ 8, 9.) Specifically,
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`Ms. Wu declares “under penalty of perjury” that “[t]he deadline for Opposer to serve its Answer
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`in response to Applicant’s document requests and interrogatories was June 25, 2020. See Fed. R.
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`Civ. P. 33, 34; Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § § 405.04(a),
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`406.04(a). Opposer was inactive and did not file its Answer by June 25, 2020 nor sought any
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`extension of time.” (Id.)
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`Ms. Wu’s statement is false on two counts. First, Opposer’s responses to Applicant’s
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`interrogatories were served on Applicant’s counsel on June 24, 2020 by email at Applicant’s
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`counsel’s email address of record (tonyhom@live.com). (Cohen Decl.
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`in Support of
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`Memorandum ¶ 7 & Ex. D.) After sending Opposer’s responses, Opposer’s counsel received a
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`delivery and read confirmation from Applicant’s counsel on, respectively, June 24, 2020 and June
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`7
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`25, 2020, a copy of which is enclosed herewith. (Cohen Decl. in Support of Memorandum ¶ 7 &
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`Ex. E.)
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`Second, as noted above, pursuant to the extension that Applicant had already consented
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`to, Opposer’s responses to Applicant’s interrogatories were not due in any event until July 27,
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`2020. (Cohen Decl. in Support of Memorandum ¶ 6 & Ex. C.) On June 22, 2020, Opposer’s
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`counsel emailed Applicant’s counsel indicating that he would agree to an extension for Applicant
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`to respond to Opposer’s document requests if Applicant consented to Opposer receiving “a
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`similar 30 day extension request to respond to Red Earth’s current discovery requests—both the
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`Interrogatories and Document Requests.” (#7 TTABVUE, Cohen Decl. in Support of Motion to
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`Compel ¶ 9, Ex. G). On June 23, 2020, Applicant’s counsel responded “Yes we agree.” (#7
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`TTABAVUE, Cohen Decl. in Support of Motion to Compel ¶ 10, Ex. H.) Accordingly, with the
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`extension that Applicant had agreed to, Opposer’s responses to Applicant’s Interrogatories would
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`not have been due until July 27, 2020. See 37 C.F.R. § 2.196; TBMP § 112. Ms. Wu’s
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`Declaration in Opposition to Opposer’s Motion to Compel is dated July 13, 2020 and was
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`subsequent to both Applicant consenting to an extension and Applicant’s receipt of Opposer’s
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`responses to Applicant’s interrogatories. (#8 TTABVUE, Wu Decl. in Oppositions to Opposer’s
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`Motion to Compel, p. 6.)
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`iii. Despite its representation to the contrary, Applicant never conferred
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`or attempted to confer with Opposer as required by Fed. R. Civ. P.
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`37(a)(1)
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`Pursuant to Fed. R. Civ. P. 37(a)(1), a party’s motion to compel disclosure or discovery,
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`“must include a certification that the movant has in good faith conferred or attempted to confer
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`with the person or party failing to make disclosure or discovery in an effort to obtain it without
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`court action.” See 37 C.F.R. § 2.120(f)(1) (“A motion to compel initial disclosures, expert
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`testimony disclosure, or discovery must be supported by a showing from the moving party that
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`such party or the attorney therefor has made a good faith effort, by conference or correspondence,
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`to resolve with the other party or the attorney therefor the issues presented in the motion but the
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`parties were unable to resolve their differences.”)  While Applicant’s Motion to Compel contains
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`a “Certification of Counsel,” the certification is false on its face and otherwise full of
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`misrepresentations. (#9 TTABVUE, p. 1-2.)
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`Applicant’s “Certification of Counsel” specifically provides that Applicant has made
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`several “good faith attempts . . . to resolve the issues presented in this motion by providing
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`extensions to file [its] Answer to the Applicant’s First Set of Interrogatories with Opposer’s
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`counsel. Specifically, Applicant’s counsel notified Opposer’s counsel that Opposer had failed to
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`file any answers in response to Applicant’s Interrogatories propounded by Applicant and that if
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`Opposer refused to provide these materials, to please advise as to counsel’s availability for a meet
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`and confer.” (#9 TTABVUE, p. 1-2.) These statements contain multiple falsehoods.
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`As a threshold matter, Applicant’s counsel never notified Opposer’s counsel that Opposer
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`had failed to file its answers to Applicant’s Interrogatories. (Cohen Decl. in Support of
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`Memorandum ¶ 8.) If Applicant’s counsel had, Opposer’s counsel would have advised that
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`Opposer’s answers to Applicant’s Interrogatories had been served timely by email on Applicant’s
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`counsel on June 24, 2020. (Cohen Decl. in Support of Memorandum ¶ 7 & Exs. D, E.) Second,
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`Applicant had not provided “multiple extensions” to Opposer to file its answer to Applicant’s
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`Interrogatories—Applicant had agreed to one extension which was moot because, as noted above,
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`Opposer served its answer to Applicant’s Interrogatories on June 24, 2020, prior to the expiration
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`of the original deadline. (Cohen Decl. in Support of Memorandum ¶ ¶ 6-7.) Finally, Applicant
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`9
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`never requested Opposer’s availability for a “meet and confer.” (Cohen Decl. in Support of
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`Memorandum ¶ 9.)
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`The Board has denied Motions to Compel when there was a lack of good faith effort to
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`resolve the dispute prior to filing a Motion to Compel. See International Finance Corp. v. Bravo
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`Co., 64 USPQ2d 1597, 1605 (TTAB 2002) (permission to file motion to compel denied where
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`motion was devoid of good faith effort to resolve dispute prior to seeking Board intervention). In
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`this case, not only did Applicant fail to make a good faith effort to resolve the dispute prior to
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`filing its Motion to Compel, it also falsely certified that it had made a good faith effort to resolve
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`the issues presented in its Motion to Compel. Accordingly, Applicant’s Motion to Compel should
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`be denied and sanctions imposed.
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`b. Applicant has made other false representations in connection with this
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`Opposition and the application at issue
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`i. Applicant’s has admitted that it is not using the applied-for mark for
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`many of the goods included in its use-based application
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`Applicant submitted its use-based application for SATÉUR (“Applicant’s Mark”) in
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`connection with “Bangles; Bracelets; Charms for key rings or key chains; Diamond jewelry;
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`Earrings; Imitation jewellery; Jewellery; Jewellery charms; Jewelry boxes; Jewelry cases; Key
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`chains; Key rings; Necklaces; Pendants; Precious and semi-precious stones; Rings; Wedding
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`rings; Women's jewelry” asserting a date of first use and date of first use in commerce of August
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`19, 2019 (Ser. No. 88/631435). (Cohen Decl. in Support of Memorandum ¶ 10 & Ex. F.) Many
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`of the goods listed in the application are not, however, offered for sale on Applicant’s website.
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`Accordingly, in its Requests for Admissions dated May 1, 2020, Opposer asked Applicant to
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`admit whether the items listed in the its application had been offered for sale in the United States
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`under the Applicant’s Mark by Applicant or a licensee of Applicant. (Cohen Decl. in Support of
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`Memorandum ¶ 10 & Ex. G Nos. 1-19.) In its response to Opposer’s Requests for Admissions,
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`Applicant admitted that many of the goods listed in its application—namely, bangles, bracelets,
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`charms for key rings or key chains, diamond jewelry, key chains, key rings, necklaces, pendants,
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`precious and semi-precious stones—have not been offered for sale under Applicant’s Mark in the
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`United States by Applicant or Applicant’s licensee. (Cohen Decl. in Support of Memorandum ¶
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`11 & Ex. H.) This lack of use did not deter Applicant from attesting to the United States Patent
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`and Trademark Office (the “Office”) that Applicant’s Mark was being used for such goods as of
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`the date claimed in its use-based application.
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`ii. Multiple Certificates of Service served by Applicant list the wrong date
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`of service
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`On May 30, 2020, Applicant’s counsel served Opposer’s counsel by email with
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`Applicant’s Answer to Opposer’s First Requests for Admission, Applicant’s Answer to
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`Opposer’s First Interrogatories, and Applicant’s Initial Disclosures. (Cohen Decl. in Support of
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`Memorandum ¶ 12, 14 & Ex. I.) The date on the Certificates of Service for each of these
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`respective documents, however, list a different date. Specifically, the Certificates of Service
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`attached to Applicant’s Answer to Opposer’s First Requests for Admission and Applicant’s
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`Answer to Opposer’s First Interrogatories provide that those responses were served on Opposer’s
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`counsel by email on May 27, 2020. (Id.) Similarly, the Certificate of Service attached to
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`Applicant’s Initial Disclosures provides that it was served on Opposer’s counsel on May 28,
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`2020. (Id.)
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`c. Applicant’s discovery requests were not signed in accordance with Fed. R.
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`Civ. P. 26(g)
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`11
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`TBMP § § 401.05, 402.01, and Fed. R. Civ. P. 26(g) provide that “[e]very disclosure
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`under Rule 26(a)(1) or (a)(3) and every discovery request, response, or objection must be signed
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`by least one attorney of record in the attorney’s own name—or by the party personally, if
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`unrepresented. . .” “The provisions of Rule 26 of the Federal Rules of Civil Procedure relating to
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`[the]. . . signing of disclosures and discovery responses . . . are applicable to Board proceedings in
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`modified form.” 37 C.F.R. § 2.120(a)(1). The signature is significant because by signing, an
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`attorney or party certifies that to the best of the person’s knowledge, information, and belief
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`formed after a reasonable inquiry, a discovery request or response is “not interposed for any
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`improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of
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`litigation.” Fed. R. Civ. P. 26(g)(B)(1)(ii). A court, either on motion or sua sponte, “must
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`impose an appropriate sanction on the signer, the party on whose behalf the signer was acting, or
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`both.” Fed. R. Civ. P. 26(g)(3) (emphasis added). Sanctions are mandatory absent substantial
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`justification. See Rojas v. Town of Cicero, Ill., 775 F.3d 906, 909 (7th Cir. 2015); E*Trade
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`Securities LLC v. Deutsche Bank AG, 230 F.R.D. 582, 594 (D. Minn. 2005) (rejecting argument
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`that false certifications were substantially justified).
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`Applicant is represented by counsel, however, Applicant—not Applicant’s counsel—has
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`signed Applicant’s Initial Disclosures, Applicant’s First Set of Interrogatories to Opposer,
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`Applicant’s Answers to Opposer’s Requests for Admissions, Applicant’s Answer to Opposer’s
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`Interrogatories, and Applicant’s Requests for Production of Documents and Things. (Cohen
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`Decl. in Support of Memorandum ¶ 4, 12-13 & Exs. A-B, I.) It is unclear whether Applicant’s
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`counsel’s failure to sign these documents is an attempt to avoid the certification since Applicant’s
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`discovery requests are largely copied from Opposer’s discovery requests or to merely an
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`oversight. What is clear is that failure to comport with the signature requirements of Rule 26(g)
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`is another example of Applicant failing to adhere to the Board’s Rules.
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`d. Entering judgment in favor of Opposer is appropriate pursuant to the
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`authority vested in the Board
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`The Board “has authority to enter other appropriate sanctions, up to and including
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`judgment, against a party under Fed. R. Civ. P. 11; Trademark Rule 2.120(h), 37 C.F.R. §
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`2.120(h); and Fed. R. Civ. P. 37(b)(2) governing discovery; or the Board's inherent authority.”
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`SFM, LLC v. Corcamore, LLC, 129 USPQ2d 1072, 1074 (TTAB 2018); see also MHW Ltd. v.
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`Simex, Aussenhandelsgesellschaft Savelsberg KG, 59 USPQ2d 1477, 1478 (TTAB 2000); Carrini
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`Inc. v. Carla Carini S.R.L., 57 USPQ2d 1067, 1071 (TTAB 2000). “When misconduct does not
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`squarely fall within the reach of Fed. R. Civ. P. 11, Fed. R. Civ. P. 37(b)(2) or Trademark Rule
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`2.120(h), the Board may invoke its inherent authority to enter sanctions.” SFM, LLC at 1075. See
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`also, Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1387 n.8 (TTAB 2016)
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`(standards prescribed in Fed. R. Civ. P. 11 apply to all filings in Board inter partes proceedings);
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`NSM Resources Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1037-38 (TTAB 2014) (applying
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`Rule 11 sanctions to dismiss a Board proceeding "initiated in bad faith" finding petitioner’s
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`pleading "frivolous," and its conduct "vexatious"); PPG Industries Inc. v. Guardian Industries
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`Corp., 73 USPQ2d 1926, 1928 (TTAB 2005) (signer of the ESTTA form is responsible for the
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`content of the attachments for purposes of Fed. R. Civ. P. 11).
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`As set forth above, Applicant has repeatedly submitted misrepresentations to the Office
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`and the Board in this matter and failed to comply with Board rules. In its Motion to Compel and
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`Declarations, Applicant has made false certifications that it had attempted to resolve the issues set
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`forth therein, that it had notified Opposer’s counsel that Opposer had failed to file any answers in
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`response to the interrogatories propounded by Applicant, and that it had requested a meet and
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`confer. Notwithstanding these misrepresentations, Applicant’s Motion to Compel is frivolous
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`since Opposer had already served its responses to Applicant’s interrogatories prior to Applicant’s
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`Motion to Compel and Opposer’s response to Applicant’s document requests are not yet due.
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`Applicant has also declared under penalty of perjury in its application that it was using its applied-
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`for mark in connection with goods in commerce when it was not and repeatedly used incorrect
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`dates on its Certificates of Service. Finally, Applicant’s discovery requests were not signed in
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`accordance with Rule 26(g).
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`Given this repeated improper conduct, it is appropriate that the Board exercise its authority
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`to enter sanctions in the form of judgment against the Applicant. See, e.g., Optimal Chemical Inc.
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`v. Srills LLC, 2019 USPQ2d 338409 at *58 (TTAB 2019) (dismissing a petition to cancel based on
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`petitioner’s pattern of litigation misconduct which constituted fraud on the Board); NSM
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`Resources Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1037-38 (TTAB 2014) (entering
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`judgment against petitioner for its repeated frivolous and vexatious conduct); Carrini Inc. v.
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`Carini S.R.L., 57 USPQ2d 1067, 1073 (TTAB 2000) (dismissing an opposition and abandoning
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`the application at issue because of misconduct by both parties’ attorneys).
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`CONCLUSION
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`For the reasons stated above, Opposer respectfully requests that the Board exercise its
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`inherent authority and enter judgment in the Opposer’s favor. If the Board is not inclined to enter
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`judgment and sustain the Opposition at this time, Opposer requests that an order be entered:
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`(i)
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`finding that Applicant has waived its objections to Opposer’s document requests
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`and interrogatories;
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`(ii)
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`compelling Applicant to serve full and complete responses to Opposer’s document
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`requests and Interrogatories Nos. 10, 19, 20, 21, and 23 and to produce all
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`responsive documents within ten (10) days of the Board’s order on this motion,
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`failing which the opposition will be sustained;
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`denying Applicant’s Motion to Compel; and,
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`entering such other sanctions against Applicant as the Board deems appropriate.
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`(iii)
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`(iv)
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`Dated: July 31, 2020
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`NEXTTEN STAUER, LLC
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`By Counsel
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`By: /Zachary D. Cohen/
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` 
`Zachary D. Cohen (VSB No. 74770)
`ThompsonMcMullan, P.C.
`100 Shockoe Slip
`Richmond, Virginia 23219
`Tel: 804-649-7545
`Fascimile: 804-780-1813
`Email: zcohen@t-mlaw.com
`Counsel for Opposer Nextten Stauer, LLC
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 31st day of July, 2020, a true and accurate copy of the
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`foregoing Opposer Nextten Stauer, LLC’s Memorandum in Support of Opposer’s Motion to
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`Compel and in Response to Applicant’s Motion to Compel was served via electronic mail (e-
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`mail) to Applicant’s Correspondent of Record at the email address: tonyhom@live.com
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`/Zachary D. Cohen/
`By:
`Zachary D. Cohen (VSB No. 74770)
`ThompsonMcMullan, P.C.
`100 Shockoe Slip, Third Floor
`Richmond, Virginia 23219
`Telephone: (804) 649-7475
`Facsimile: (804) 780-1813
`Email: zcohen@t-mlaw.com
`Counsel for Opposer Nextten Stauer, LLC 
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`16
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`NEXTTEN STAUER, LLC,
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`Opposer,
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`v.
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`RED EARTH GROUP LIMITED,
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`Applicant.
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`Opposition No. 91254256
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`DECLARATION OF ZACHARY D. COHEN IN SUPPORT OF OPPOSER’S
`MEMORANDUM IN SUPPORT OF OPPOSER’S MOTION TO COMPEL AND IN
`RESPONSE TO APPLICANT’S MOTION TO COMPEL
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`I, Zachary D. Cohen, hereby declare under penalty of perjury:
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`1.
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`I am a Director at ThompsonMcMullan, P.C. (“ThompsonMcMullan”),
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`attorneys for Nextten Stauer, LLC (“Opposer”) and am representing Opposer in the
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`above-captioned matter. I submit this declaration in support of Opposer’s Memorandum
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`in Support of Opposer’s Motion to Compel and in response to Applicant Red Earth Group
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`Limited’s (“Applicant”) Motion to Compel. I make this declaration based on my personal
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`knowledge of the facts and circumstances set forth herein, my review of my firm’s
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`records, and on the records of the Trademark Trial and Appeal Board (the “Board”), and
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`the U.S. Patent and Trademark Office.
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`2.
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`On May 25, 2020, Applicant served Opposer with Applicant’s first set of
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`interrogatories. Attached as Exhibit A are Applicant’s interrogatories and the cover email
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`transmitting them.
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`3.
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`On June 17, 2020, Applicant served Opposer Applicant’s first requests for
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`production of documents and things. Attached as Exhibit B are Applicant’s requests for
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`1
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`production of documents and things and the cover email transmitting them.
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`4.
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`Applicant’s first interrogatories and requests for production of documents were
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`signed by Applicant, not by Applicant’s counsel. See Exhibit A & B.
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`5.
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`Before Opposer received an extension from Applicant, the deadline for
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`Opposer to serve its responses was June 25, 2020 for Applicant’s interrogatories and July
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`17, 2020 for Applicant’s document requests. See Fed. R. Civ. P. 33, 34; Trademark Trial
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`and Appeal Board Manual of Procedure (“TBMP”) § § 405.04(a), 406.04(a).
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`6.
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`On June 23, 2020, Applicant’s counsel agreed to a 30-day extension for
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`Opposer to respond to the discovery requests, making the new deadlines July 27, 2020 for
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`Opposer’s responses