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UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`THIS DISPOSITION
`IS NOT A PRECEDENT
`OF THE TTAB
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` Mailed: June 19, 2009
`
` Cancellation No. 92047436
`
`
`
`
`
`
`
`PRL USA Holdings, Inc.
`
`
`
`v.
`
`Thread Pit, Inc.
`
`WINTER
`
`
`
`
`
`
`
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`
`
`Before Bucher, Kuhlke, and Bergsman,
`Administrative Trademark Judges.
`
`By the Board:
`
`
`This case now comes up for consideration of respondent’s
`
`motion (filed November 13, 2008) for summary judgment on the
`
`basis that petitioner cannot present sufficient evidence to
`
`prove actual or likelihood of confusion; petitioner’s cross-
`
`motion (filed December 18, 2008) for summary judgment on the
`
`grounds of likelihood of confusion and dilution; petitioner’s
`
`motion (filed January 26, 2009) to strike arguments in and an
`
`exhibit to respondent’s reply brief to its motion for summary
`
`judgment; and respondent’s motion (filed February 23, 2009)
`
`to strike petitioner’s second reply brief to respondent’s
`
`opposition to petitioner’s cross-motion for summary judgment.
`
`The motions are fully briefed.
`
`

`
`Cancellation No. 92047436
`
`Inasmuch as the parties’ respective motions to strike
`
`may affect the arguments and exhibits considered by the Board
`
`in connection with the motion and cross-motion for summary
`
`judgment, we first consider the motions to strike.
`
`Motions to Strike
`
`• Petitioner’s Motion to Strike
`
` Petitioner requests that the Board strike allegedly
`
`improperly submitted evidence attached to respondent’s reply
`
`brief to respondent’s motion for summary judgment,
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`specifically, Exhibit C thereto, which comprises a set of
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`Internet-based customer comments concerning respondent’s mark
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`that were allegedly printed from respondent’s website, but
`
`were not accompanied by a supporting affidavit. Petitioner
`
`also requests that the Board strike all of respondent’s
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`arguments relating to the issue of parody in the reply brief
`
`because that issue was not raised by petitioner in either its
`
`opposition to respondent’s motion for summary judgment or in
`
`petitioner’s cross-motion for summary judgment.
`
` In opposition, respondent concedes that it was improper
`
`for it to raise the issue of parody in reply to petitioner’s
`
`opposition brief. Respondent has also submitted a
`
`“supplementary declaration” which essentially states only
`
`that the exhibit attached to its reply brief is “true and
`
`correct.”
`
`2
`
`

`
`Cancellation No. 92047436
`
` Petitioner’s motion to strike respondent’s reply brief
`
`arguments regarding parody is granted as conceded.
`
`Nonetheless, because the issue of whether respondent’s mark
`
`is viewed as a parody of petitioner’s mark is a factor that
`
`is relevant to our analysis of likelihood of confusion, the
`
`Board has considered respondent’s arguments on parody that
`
`were set forth in its opposition to petitioner’s cross-motion
`
`for summary judgment. See Elvis Presley Enterprises Inc. v.
`
`Capece, 141 F.3d 188, 194, 46 USPQ 1737 (5th Cir. 1998); Dr.
`
`Seuss Enterprises L.P. v. Penguin Books USA, Inc., 109 F.3d
`
`1394, 1405, 42 USPQ2d 1184 (9th Cir. 1977) (“the claim of
`
`parody is not really a separate “defense” as such, but merely
`
`a way of phrasing the traditional response that customers are
`
`not likely to be confused as to the source, sponsorship or
`
`approval”), cert. dismissed, 521 U.S. 1146 (1997); and Nike,
`
`Inc. v. “Just Did It” Enterprises., 6 F.3d 1225, 1231 (7th
`
`Cir. 1993) (“holding that parody is not an affirmative
`
`defense to trademark infringement but that it can be an
`
`additional factor in a likelihood-of-confusion analysis”).
`
` As to respondent’s reply brief exhibit, it is well-
`
`established that Internet printouts do not qualify as printed
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`publications under Trademark 2.122(e) and that they must be
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`authenticated by a declaration demonstrating that the
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`information therein was published on the Internet and was
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`accessed by the declarant at a particular Internet address on
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`3
`
`

`
`Cancellation No. 92047436
`
`a date certain which data are shown on the printouts. See
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`Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1371 (TTAB 1968).
`
`In the declaration of respondent’s counsel, he has not
`
`indicated that he has personal knowledge of the search that
`
`resulted in the printout or that he is aware of the
`
`parameters of the search associated with the submitted web
`
`pages, and he has not named the person who conducted the
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`search. In view thereof, the late-filed declaration in
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`support of respondent’s Exhibit C does not function to
`
`properly authenticate that exhibit. See Id. Accordingly,
`
`petitioner’s motion to strike Exhibit C to respondent’s reply
`
`brief is granted and we have given it no consideration.
`
`• Respondent’s Motion to Strike
`
`
`
`Respondent requests that the Board strike petitioner’s
`
`second reply brief submitted on February 10, 2009 in
`
`connection with respondent’s opposition to petitioner’s
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`cross-motion for summary judgment. Respondent argues that
`
`the Trademark Rules do not provide for the filing of an
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`additional reply brief and that petitioner’s filing is, in
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`any event, untimely as it was filed more than fifteen days
`
`after the filing of respondent’s opposition brief to
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`petitioner’s cross-motion for summary judgment.
`
`
`
`Respondent is incorrect about the timeliness of
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`petitioner’s second reply brief inasmuch as it was filed
`
`within the twenty-day period allowed to respond to an
`
`4
`
`

`
`Cancellation No. 92047436
`
`opposition brief served by first class mail. See Trademark
`
`Rule 2.119(c), 37 C.F.R. § 2.119(c). Nonetheless, the
`
`Trademark Rules do not provide for the filing of a sur-reply.
`
`See Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a) (“The Board
`
`will consider no further papers in support of or in
`
`opposition to a motion”). In view thereof, respondent’s
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`motion to strike petitioner’s sur-reply filed on February 10,
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`2009 is granted and said reply brief has not been considered.
`
`Motions for Summary Judgment
`
`We turn now to the parties’ respective motions for
`
`summary judgment.
`
`Summary judgment is an appropriate method of disposing
`
`of cases in which there are no genuine issues of material
`
`fact in dispute, thus leaving the case to be resolved as a
`
`matter of law. See Fed. R. Civ. P. 56(c). A party moving
`
`for summary judgment has the burden of demonstrating the
`
`absence of any genuine issue of material fact, and that it is
`
`entitled to judgment as a matter of law. See Celotex Corp.
`
`v. Catrett, 477 U.S. 317, 106 S. Ct. 2548 (1986).
`
`Additionally, the evidence must be viewed in a light
`
`favorable to the non-movant, and all justifiable inferences
`
`are to be drawn in the non-movant’s favor. See Opryland USA,
`
`Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23
`
`USPQ2d 1471 (Fed. Cir. 1993). Further, the Board may only
`
`ascertain whether issues of material fact are present, and
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`5
`
`

`
`Cancellation No. 92047436
`
`may not resolve factual issues against the non-moving party.
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`Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
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`USPQ2d 2027 (Fed. Cir. 1993); and Opryland USA, 23 USPQ2d
`
`1472-73.
`
`The fact that the parties filed cross-motions for
`
`summary judgment does not mean that there are no genuine
`
`issues of material fact and that trial is unnecessary. Each
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`party has the initial burden of demonstrating the absence of
`
`any genuine issue of material fact with respect to its own
`
`motion. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986);
`
`Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d
`
`1560, 4 USPQ2d 1793 (Fed. Cir. 1987); and University Book
`
`Store v. University of Wisconsin Board of Regents, 33 USPQ2d
`
`1385 (TTAB 1994).
`
`• Respondent’s Motion for Summary Judgment
`
`
`
`The gravamen of respondent’s motion for summary judgment
`
`is that respondent is entitled to judgment as a matter of law
`
`because petitioner “cannot proffer any evidence to establish
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`a genuine factual dispute” in regard to its claims that
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`respondent’s mark causes actual confusion, likelihood of
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`confusion or would otherwise “damage or injure” petitioner’s
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`marks (motion, pp. 1, 4). Specifically, respondent argues
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`that petitioner has “failed to provide [during discovery] any
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`evidence other than its bare assertions that Thread Pit’s
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`falling rider mark harms PRL’s polo pony marks” (motion, p.
`
`6
`
`

`
`Cancellation No. 92047436
`
`9). As a result thereof, respondent asserts that petitioner,
`
`as the non-moving party on summary judgment, is unable to
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`show that there is a genuine factual dispute for trial.
`
`
`
`In support of its assertions, respondent has provided,
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`inter alia, photocopies of petitioner’s responses and
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`objections to respondent’s first set of requests for
`
`production of documents and its first set of interrogatories;
`
`a copy of petitioner’s second amended responses and
`
`objections to respondent’s first set of interrogatories; and
`
`copies of correspondence to respondent’s counsel from
`
`petitioner’s counsel regarding discovery, none of which are
`
`supported by affidavit (see motion, Exhibits E, G, I, J and
`
`K). Respondent alleges that petitioner has been unresponsive
`
`to respondent’s discovery requests;1 that the documents that
`
`have been produced do not mention or refer to Thread Pit or
`
`its goods “in any manner whatsoever” (motion, p. 6); that,
`
`with respect to its letters from counsel, petitioner states
`
`
`1 Petitioner has set forth “general objections” and various
`specific objections to respondent’s discovery, including that
`respondent’s discovery requests are “overbroad and not reasonably
`calculated to lead to the discovery of admissible evidence”
`(amended responses to Interrogatory Nos. 2 and 3); “vague and
`ambiguous” (response to Doc. Request No. 3 and Interrogatory No.
`2); “protected by attorney-client privilege and/or attorney work
`product doctrine” (Doc. Request Nos. 1 and 2; Interrogatory Nos.
`3, 4, 5 and 6); “overbroad and unduly burdensome” (Doc. Request
`Nos. 1, 2 and 3; Interrogatory Nos. 5, 7, 8 and 9). As discussed
`infra, to the extent that respondent believes that petitioner’s
`responses are insufficient, the appropriate procedure is to file
`a motion to compel prior to the commencement of the first
`testimony period. See Trademark Rule 2.120(e), 37 C.F.R. §
`2.120(e); and TBMP § 523 (2d ed. rev. 2004).
`
`
`7
`
`

`
`Cancellation No. 92047436
`
`that it is “not withholding any information responsive to
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`Thread Pit’s” interrogatory nos. 2, 4, 5 and 6 (regarding the
`
`bases for petitioner’s claims); that petitioner is not
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`withholding information on the basis of its privilege
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`objections; and petitioner has stated that certain documents,
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`such as a survey, do not exist. Respondent emphasizes, in
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`particular, petitioner’s responses to respondent’s queries as
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`to whether petitioner is aware of specific instances of
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`actual confusion and to respondent’s requests for documents
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`and facts that form the bases for petitioner’s likelihood of
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`confusion and dilution claims. Based on petitioner’s
`
`discovery responses, respondent contends that petitioner’s
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`claims are “wholly unsubstantiated by any evidence in the
`
`record nor [sic] in claimed attorney-client privilege logs
`
`that do not exist” (motion, pp. 8-9); and that petitioner’s
`
`claims should be dismissed.
`
`
`
`As discussed supra, to prevail on a motion for summary
`
`judgment, the movant must establish that there are no genuine
`
`issues of material fact in dispute, thus leaving the case to
`
`be resolved as a matter of law. The movant may discharge its
`
`burden “by ‘showing’ - that is, pointing out to the [Board] -
`
`that there is an absence of evidence to support the nonmoving
`
`party’s case.” Celotex Corp., 477 U.S. at 325.
`
`Specifically, the summary judgment movant must identify the
`
`legal basis of its motion and point to those portions of the
`
`8
`
`

`
`Cancellation No. 92047436
`
`record that it believes demonstrate the absence of a genuine
`
`issue of material fact as to the elements of the non-movant’s
`
`claim(s), such as the pleadings, depositions, answers to
`
`interrogatories, admissions on file, and the like. See Id.
`
`at 323. See also Kellogg Co. v. Pack’Em Enterprises Inc., 14
`
`USPQ2d 1545 (TTAB 1990), aff’d 951 F.2d 330, 21 USPQ2d 1142,
`
`1144 (Fed. Cir. 1991).
`
`
`
`Respondent’s motion for summary judgment seeks to show
`
`that there is a lack of evidence to support petitioner’s
`
`case. Instead of adducing or indicating evidence of record
`
`that would show that there are no genuine issues of material
`
`fact in connection with petitioner’s claims, respondent
`
`essentially contends that petitioner lacks evidence and,
`
`thus, “cannot proffer” evidence to prove its claims. As
`
`such, respondent’s motion is more in the nature of a request
`
`that the Board apply an estoppel sanction to evidence that
`
`may be produced on summary judgment or at trial rather than a
`
`motion for summary judgment.
`
`
`
`
`
`To the extent respondent is arguing that petitioner is
`
`estopped from introducing evidence on summary judgment or at
`
`trial and that, based on petitioner’s alleged lack of
`
`appropriate discovery responses, summary judgment should be
`
`entered against petitioner, such request is premature and
`
`will not be considered. Respondent has filed neither a
`
`motion to compel nor a motion for discovery sanctions for
`
`9
`
`

`
`Cancellation No. 92047436
`
`failure to comply with an order compelling discovery
`
`responses. See Trademark Rule 2.120(g)(1), 37 C.F.R. §
`
`2.120(g)(1). See also Linville v. Rivard, 41 USPQ2d 1731,
`
`1733 (TTAB 1996) (no estoppel; where objections that
`
`discovery requests are, for example, ambiguous or burdensome,
`
`or are otherwise not of a nature which would lead the
`
`propounding party to believe that the requested information
`
`does not exist, party should have filed motion to compel),
`
`aff'd, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998);
`
`British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201
`
`(TTAB 1993) (no estoppel; where applicant gave partial
`
`answers and otherwise objected to requests as cumulative or
`
`burdensome but opposer did not file motion to compel, modify
`
`discovery requests, or otherwise pursue material, evidence
`
`introduced by applicant at trial was considered), aff'd, 35
`
`F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994); and Seligman &
`
`Latz, Inc. v. Merit Mercantile Corp., 222 USPQ 720, 723 (TTAB
`
`1984) (Board will not impose sanction of drawing adverse
`
`inferences against party based on inconsistent responses to
`
`questions asked during discovery deposition without motion to
`
`compel complete responses and violation of an order
`
`compelling answers).
`
`To the extent respondent argues that there are no
`
`genuine issues of fact for trial, respondent has provided no
`
`evidence demonstrating that there is an absence of genuine
`
`10
`
`

`
`Cancellation No. 92047436
`
`issues of material fact as to petitioner’s claims of
`
`likelihood of confusion and dilution and that respondent is
`
`entitled to judgment on those claims as a matter of law. See
`
`Celotex, 477 U.S. at 325 and Kellogg, 21 USPQ2d at 1144.
`
`Accordingly, respondent’s motion for summary judgment is
`
`denied.
`
`Nonetheless, petitioner is reminded that, if a party
`
`provides an incomplete response to a discovery request, that
`
`party, upon a timely raised objection by an adverse party,
`
`may not thereafter rely at trial on information from its
`
`records which was properly sought in the discovery request,
`
`but which was not included in the response thereto, unless
`
`the response is supplemented in a timely fashion pursuant to
`
`Fed. R. Civ. P. 26(e). See Bison Corp. v. Perfecta Chemie
`
`B.V., 4 USPQ2d 1718 (TTAB 1987); and TBMP § 408.02 (2d ed.
`
`rev. 2004). Petitioner is further reminded that, should it
`
`be later found to have willfully withheld discovery
`
`responses, introduction of such evidence withheld may be
`
`precluded upon a motion to strike.
`
`Additionally, both parties are reminded of their
`
`continuing duty to thoroughly search their respective records
`
`for all information properly sought in discovery and to
`
`provide such information to the requesting party. TBMP §
`
`408.02 (2d ed. rev. 2004). A party that has responded to a
`
`request for discovery with a response is under a continuing
`
`11
`
`

`
`Cancellation No. 92047436
`
`duty to supplement or correct the response to include
`
`information thereafter acquired or uncovered. TBMP Id. at §
`
`408.03.
`
`• Petitioner’s Cross-Motion for Summary Judgment
`
`We turn now to petitioners cross-motion for summary
`
`judgment on the issues of likelihood of confusion and
`
`dilution.
`
`On consideration of petitioner’s cross-motion and
`
`respondent’s opposition thereto, we find that petitioner has
`
`not met its burden to show that there are no genuine issues
`
`of material fact in dispute and that it is entitled to
`
`judgment as a matter of law. Sweats Fashions Inc. v. Pannill
`
`Knitting Co. Inc., 4 USPQ2d 1793, 1795 (Fed. Cir. 1987); and
`
`Sears Mortgage Corp. v. Northeast Savings F.A., 24 USPQ2d
`
`1227, 1228 (TTAB 1992). Drawing all inferences in favor of
`
`the respondent as the non-movant on such motion, we find that
`
`in view of the alleged disparaging or irreverent nature of
`
`respondent’s mark, there is, at a minimum, a genuine issue of
`
`fact as to whether the parties’ marks are sufficiently
`
`similar to cause likelihood of confusion as to the source of
`
`the parties’ respective goods.2 See, e.g., Boston Red Sox
`
`Baseball Club Limited Partnership v. Brad Francis Sherman, 88
`
`USPQ2d 1581 (TTAB 2008) (“the differences in the two marks,
`
`
`2 Although we have mentioned only one genuine issue of material fact
`in this decision, that is not to say that this is the only issue of
`material fact in dispute.
`
`12
`
`

`
`Cancellation No. 92047436
`
`caused by the attention-grabbing words in applicant's mark,
`
`result in differences in sound and meaning that far outweigh
`
`any visual similarity due to the display of the words”); and
`
`Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507
`
`F.3d 252, 262 (4th Cir. 2007) (“the differences are
`
`sufficiently obvious and the parody sufficiently blatant that
`
`a consumer encountering a “Chewy Vuiton” dog toy would not
`
`mistake its source or sponsorship on the basis of mark
`
`similarity”). In view thereof, there also exists a genuine
`
`issue of fact as to whether the parties’ marks are
`
`“sufficiently similar” to support petitioner’s dilution
`
`claim. See The Toro Company v. Torohead, Inc., 61 USPQ2d
`
`1164, 1183 (TTAB 2001) (“For dilution purposes, a party must
`
`prove more than confusing similarity; it must show that the
`
`marks are identical or “very or substantially similar.”
`
`[internal citations omitted]).
`
`Accordingly, petitioner’s cross-motion for summary
`
`judgment is denied.3
`
`
`3 The parties should note that evidence submitted in support of
`or in opposition to a motion for summary judgment is of record
`only for consideration of that motion. Any such evidence to be
`considered at final hearing must be properly introduced in
`evidence during the appropriate trial period. See, e.g., Levi
`Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB
`1993). See TBMP § 528.05(a) (2d ed. rev. 2004).
`
`
`13
`
`

`
`Cancellation No. 92047436
`
`Proceedings Resumed; Dates Reset
`
`Proceedings are resumed. Discovery is closed. Trial
`
`dates are reset as shown in the following schedule:
`
`
`
`DISCOVERY PERIOD TO CLOSE
`Thirty-day testimony period for party in
`position of plaintiff to close
`Thirty-day testimony period for party in
`position of defendant to close:
`Thirty-day testimony period for party in
`position of defendant to close:
`
`
`CLOSED
`August 11, 2009
`
`October 10, 2009
`
`November 24, 2009
`
`IN EACH INSTANCE, a copy of the transcript of
`
`testimony, together with copies of documentary exhibits,
`
`must be served on the adverse party WITHIN THIRTY DAYS after
`
`completion of the taking of testimony. See Trademark Rule
`
`2.l25, 37 C.F.R. § 2.125.
`
`Briefs shall be filed in accordance with Trademark
`
`Rules 2.l28(a) and (b), 37 C.F.R. §§ 2.128(a) and (b). An
`
`oral hearing will be set only upon request filed as provided
`
`by Trademark Rule 2.l29, 37 C.F.R. § 2.129.
`☼☼☼
`
`
`NEWS FROM THE TTAB:
`
`The USPTO published a notice of final rulemaking in the
`Federal Register on August 1, 2007, at 72 F.R. 42242. By
`this notice, various rules governing Trademark Trial and
`Appeal Board inter partes proceedings are amended. Certain
`amendments have an effective date of August 31, 2007, while
`most have an effective date of November 1, 2007. For
`further information, the parties are referred to a reprint
`of the final rule and a chart summarizing the affected
`rules, their changes, and effective dates, both viewable on
`the USPTO website via these web addresses:
`
`14
`
`

`
`Cancellation No. 92047436
`
`http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
`http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalR
`uleChart.pdf
`
`By one rule change effective August 31, 2007, the Board's
`standard protective order is made applicable to all TTAB
`inter partes cases, whether already pending or commenced on
`or after that date. However, as explained in the final rule
`and chart, this change will not affect any case in which any
`protective order has already been approved or imposed by the
`Board. Further, as explained in the final rule, parties are
`free to agree to a substitute protective order or to
`supplement or amend the standard order even after August 31,
`2007, subject to Board approval. The standard protective
`order can be viewed using the following web address:
`http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm
`
`
`
`15

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