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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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`April 27, 2020
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`Opposition No. 91254256
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`Nextten Stauer, LLC
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`v.
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`Red Earth Group Limited
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`
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`M. Catherine Faint,
`Interlocutory Attorney:
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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 to this proceeding conducted a discovery conference on April 24, 2020 with
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`Board participation. Participating in the conference were Opposer’s counsel, Zachary
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`Cohen, Atty., and Applicant’s counsel, Tony Hom, Atty. This order memorializes what
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`transpired during the conference as well as providing additional guidance for both
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`parties.
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`The Board asked if the parties were involved in any other Board proceeding (to
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`determine whether consolidation was appropriate) or in litigation in court (to
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`determine whether suspension was appropriate). The Board was informed that the
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`parties were not so involved. The parties were to discuss settlement between
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`themselves immediately following the discovery teleconference.
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`Opposition No. 91254256
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`A.
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`Email Service
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`Pursuant to Trademark Rule 2.119(b), service of papers must be made via email
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`unless otherwise stipulated by the parties. Deadlines for submissions to the Board
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`that are initiated by a date of service are 20 days. Trademark Rule 2.119. Responses
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`to motions for summary judgment are 30 days while reply briefs are 20 days.
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`Deadlines for responses to discovery requests are 30 days.
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`B.
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`The Board’s Standard Protective Order
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`The Board advised the parties that the Board’s standard protective order is in
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`place in this case governing the exchange of confidential and proprietary information
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`and
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`materials.
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`The
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`parties
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`may
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`view
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`the
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`order
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`here:
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`https://www.uspto.gov/trademarks-application-process/appealing-trademark-
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`decisions/standard-documents-and-guidelines-0. The parties are advised that if they
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`agree to changes to the standard protective order, they must submit a signed revised
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`order to the Board for approval. The parties stated that they intended to proceed with
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`the standard protective order in place, and wished to submit a signed copy with the
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`Board. Opposer’s counsel is to provide a signed copy to Applicant’s counsel
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`who will sign it and file it with the Board.
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`C.
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`Electronic Resources
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`The Board has an electronic filing system that is different than the one used
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`to file Trademark applications and updates to registrations. This system, named
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`ESTTA, may be accessed via the Board’s website: http://estta.uspto.gov/. Addresses
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`can be changed easily through an electronic form. Also, consented motions to extend
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`2
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`Opposition No. 91254256
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`or suspend can be filed and normally an automatic grant of the motion will be
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`generated.
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`Also available to the parties is the Board’s TTABVUE system which contains
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`all of the Board’s electronic files, including the one for this case. The parties should
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`monitor the electronic system regularly to be sure that no filings are missed.
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`Dates were set by the Board’s institution order, and remain as set. This means
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`that discovery opens May 1, 2020 even though the discovery conference has been held
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`prior to that date.
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`D.
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`Initial Disclosures
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`Pursuant to the Board’s rules, neither the exchange of discovery requests nor
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`the filing of a motion for summary judgment, except on the basis of res judicata or
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`lack of Board jurisdiction, can occur until the parties have made their initial
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`disclosures, as required by Fed. R. Civ. P. 26(f). The due date for initial disclosures
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`is May 31, 2020.
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`The Board clarifies that under Trademark Rule 2.120(a)(3), “A party must
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`make its initial disclosures prior to seeking discovery, absent modification of this
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`requirement by a stipulation of the parties approved by the Board, or a motion
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`granted by the Board, or by order of the Board.” Thus once an individual party has
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`made its initial disclosures it may serve discovery, even if the other party has not yet
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`served its initial disclosures. The Board views this as a means to aid settlement
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`discussions between the parties.
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`Review of Pleadings
`a.
`Notice of Opposition
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`E.
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`3
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`
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`Opposition No. 91254256
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`Likelihood of Confusion
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`i.
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`Reviewing the notice of opposition, Opposer claims likelihood of confusion with
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`a “family of marks” consisting of 18 registrations, 15 of which are incontestable, for
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`goods and services in Classes 9, 14, 15, 16, 18 and 35. Opposer also claims ownership
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`of one pending application. The burden will be on Opposer to prove likelihood of
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`confusion and the relatedness of the goods and services, as well as any other relevant
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`duPont factors. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
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`563 (CCPA 1973). Opposer attached TSDR printouts of its pleaded marks which
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`serve as status and title copies of its registrations. As such priority is not really an
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`issue in this proceeding based on Opposer’s attached registrations. Opposer has also
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`asserted a claim of nonuse of Applicant’s mark in its use-based application. The
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`pleading is sufficient.
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`b.
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`Answer
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`Applicant has answered the notice of opposition stating it is without sufficient
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`information to admit or deny, or otherwise denying, the salient allegations of the
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`complaint.
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`F.
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`Accelerated Case Resolution (“ACR”)
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`The Board encourages settlement of matters between the parties and the
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`parties are to discuss settlement immediately after the discovery conference. While
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`the Board does not conduct settlement conferences, there is an ACR procedure
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`available. The Board explained that the ACR procedure is an expedited procedure for
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`obtaining a final decision from the Board. In order to pursue ACR, the parties must
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`4
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`Opposition No. 91254256
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`stipulate that the Board can make findings of fact. The parties may review the more
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`detailed information about ACR at the Board’s website.
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`The parties expressed interest in ACR, but were not able to agree to ACR at
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`this time. Should the parties agree in the future to use the ACR procedure, the parties
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`are reminded that they may stipulate to facts after the close of the initial disclosure
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`period and to a shortening of the discovery period. See Trademark Rule 2.120(a)(2).
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`The Board advises the parties that if they agree to pursue ACR, they should notify
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`the Board in writing as soon as possible. The parties may also enter other
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`stipulations, as discussed, to streamline the trial procedure or final decision.
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`G. Discovery
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`There was some discussion of ways to possibly streamline discovery, but the
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`parties did not stipulate to any measures further limiting discovery at this time.
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`The Board explained to the parties that all discovery requests should be served
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`early enough to allow for responses prior to the close of discovery. Trademark Rule
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`2.120, 37 C.F.R. § 2.120. The Board has clarified that this means 31 days prior to the
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`close of discovery. Estudi Moline Dissey, S.L. v. BioUrn, Inc., 123 USPQ2d 1268, 1270
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`(TTAB 2017) (discovery requests must be served with at least thirty-one days
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`remaining in the discovery period, including date of service, regardless of whether
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`day of service falls on weekend or holiday). The duty to supplement discovery
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`responses continues even after the close of discovery. Motions to compel initial
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`disclosures must be filed within 30 days after the deadline for serving initial
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`disclosures. Trademark Rule 2.120. Motions to compel discovery, motions to test the
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`5
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`Opposition No. 91254256
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`sufficiency of responses or objections, and motions for summary judgment must be
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`filed before the day of the deadline for pretrial disclosures. Trademark Rules 2.120
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`and 2.127. See Asustek Comput., Inc. v. Chengdu Westhouse Interactive Entm’t Co.,
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`128 USPQ2d 1470, 1471 (TTAB 2018) (reconsideration of Board order denying
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`untimely motion to compel filed on deadline for pretrial disclosures denied). Requests
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`for production of documents and requests for admission, as well as interrogatories,
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`are each limited to 75. Trademark Rule 2.120. Testimony may be submitted in the
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`form of an affidavit or declaration. Trademark Rules 2.121, 2.123 and 2.125.
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`The parties were directed to TBMP § 414 regarding the discoverability of
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`various categories of information in Board proceedings. The parties are reminded that
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`the Board is an administrative tribunal that determines the registrability of
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`trademarks. If the case should progress so far, the parties should be mindful when
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`submitting trial evidence to the Board that the better practice is to focus on
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`supporting, only to the extent required by the pertinent burden of proof, the facts to
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`be established.
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`H.
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`Electronically Stored Information (ESI)
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`There was some discussion of electronically stored information (ESI). The
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`parties indicated that they did not expect to have much in the way of ESI. The parties
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`may revisit this issue during discovery if the amount or form of ESI changes.
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`I.
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`Schedule
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`Dates remain as set in the Board’s institution order of February 21, 2020.
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`6
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