`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`THIS DISPOSITION
`IS NOT A PRECEDENT
`OF THE TTAB
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` Mailed: June 19, 2009
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` Cancellation No. 92047436
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`PRL USA Holdings, Inc.
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`v.
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`Thread Pit, Inc.
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`WINTER
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`Before Bucher, Kuhlke, and Bergsman,
`Administrative Trademark Judges.
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`By the Board:
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`This case now comes up for consideration of respondent’s
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`motion (filed November 13, 2008) for summary judgment on the
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`basis that petitioner cannot present sufficient evidence to
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`prove actual or likelihood of confusion; petitioner’s cross-
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`motion (filed December 18, 2008) for summary judgment on the
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`grounds of likelihood of confusion and dilution; petitioner’s
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`motion (filed January 26, 2009) to strike arguments in and an
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`exhibit to respondent’s reply brief to its motion for summary
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`judgment; and respondent’s motion (filed February 23, 2009)
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`to strike petitioner’s second reply brief to respondent’s
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`opposition to petitioner’s cross-motion for summary judgment.
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`The motions are fully briefed.
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`Cancellation No. 92047436
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`Inasmuch as the parties’ respective motions to strike
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`may affect the arguments and exhibits considered by the Board
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`in connection with the motion and cross-motion for summary
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`judgment, we first consider the motions to strike.
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`Motions to Strike
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`• Petitioner’s Motion to Strike
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` Petitioner requests that the Board strike allegedly
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`improperly submitted evidence attached to respondent’s reply
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`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
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`were not accompanied by a supporting affidavit. Petitioner
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`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
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`because that issue was not raised by petitioner in either its
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`opposition to respondent’s motion for summary judgment or in
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`petitioner’s cross-motion for summary judgment.
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` In opposition, respondent concedes that it was improper
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`for it to raise the issue of parody in reply to petitioner’s
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`opposition brief. Respondent has also submitted a
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`“supplementary declaration” which essentially states only
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`that the exhibit attached to its reply brief is “true and
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`correct.”
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`2
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`Cancellation No. 92047436
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` Petitioner’s motion to strike respondent’s reply brief
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`arguments regarding parody is granted as conceded.
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`Nonetheless, because the issue of whether respondent’s mark
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`is viewed as a parody of petitioner’s mark is a factor that
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`is relevant to our analysis of likelihood of confusion, the
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`Board has considered respondent’s arguments on parody that
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`were set forth in its opposition to petitioner’s cross-motion
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`for summary judgment. See Elvis Presley Enterprises Inc. v.
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`Capece, 141 F.3d 188, 194, 46 USPQ 1737 (5th Cir. 1998); Dr.
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`Seuss Enterprises L.P. v. Penguin Books USA, Inc., 109 F.3d
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`1394, 1405, 42 USPQ2d 1184 (9th Cir. 1977) (“the claim of
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`parody is not really a separate “defense” as such, but merely
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`a way of phrasing the traditional response that customers are
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`not likely to be confused as to the source, sponsorship or
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`approval”), cert. dismissed, 521 U.S. 1146 (1997); and Nike,
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`Inc. v. “Just Did It” Enterprises., 6 F.3d 1225, 1231 (7th
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`Cir. 1993) (“holding that parody is not an affirmative
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`defense to trademark infringement but that it can be an
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`additional factor in a likelihood-of-confusion analysis”).
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` As to respondent’s reply brief exhibit, it is well-
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`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
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`Cancellation No. 92047436
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`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).
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`In the declaration of respondent’s counsel, he has not
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`indicated that he has personal knowledge of the search that
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`resulted in the printout or that he is aware of the
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`parameters of the search associated with the submitted web
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`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
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`properly authenticate that exhibit. See Id. Accordingly,
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`petitioner’s motion to strike Exhibit C to respondent’s reply
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`brief is granted and we have given it no consideration.
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`• Respondent’s Motion to Strike
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`Respondent requests that the Board strike petitioner’s
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`second reply brief submitted on February 10, 2009 in
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`connection with respondent’s opposition to petitioner’s
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`cross-motion for summary judgment. Respondent argues that
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`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
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`after the filing of respondent’s opposition brief to
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`petitioner’s cross-motion for summary judgment.
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`Respondent is incorrect about the timeliness of
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`petitioner’s second reply brief inasmuch as it was filed
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`within the twenty-day period allowed to respond to an
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`4
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`Cancellation No. 92047436
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`opposition brief served by first class mail. See Trademark
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`Rule 2.119(c), 37 C.F.R. § 2.119(c). Nonetheless, the
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`Trademark Rules do not provide for the filing of a sur-reply.
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`See Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a) (“The Board
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`will consider no further papers in support of or in
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`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.
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`Motions for Summary Judgment
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`We turn now to the parties’ respective motions for
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`summary judgment.
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`Summary judgment is an appropriate method of disposing
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`of cases in which there are no genuine issues of material
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`fact in dispute, thus leaving the case to be resolved as a
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`matter of law. See Fed. R. Civ. P. 56(c). A party moving
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`for summary judgment has the burden of demonstrating the
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`absence of any genuine issue of material fact, and that it is
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`entitled to judgment as a matter of law. See Celotex Corp.
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`v. Catrett, 477 U.S. 317, 106 S. Ct. 2548 (1986).
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`Additionally, the evidence must be viewed in a light
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`favorable to the non-movant, and all justifiable inferences
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`are to be drawn in the non-movant’s favor. See Opryland USA,
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`Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23
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`USPQ2d 1471 (Fed. Cir. 1993). Further, the Board may only
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`ascertain whether issues of material fact are present, and
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`5
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`Cancellation No. 92047436
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`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
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`1472-73.
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`The fact that the parties filed cross-motions for
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`summary judgment does not mean that there are no genuine
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`issues of material fact and that trial is unnecessary. Each
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`party has the initial burden of demonstrating the absence of
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`any genuine issue of material fact with respect to its own
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`motion. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986);
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`Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d
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`1560, 4 USPQ2d 1793 (Fed. Cir. 1987); and University Book
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`Store v. University of Wisconsin Board of Regents, 33 USPQ2d
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`1385 (TTAB 1994).
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`• Respondent’s Motion for Summary Judgment
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`
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`The gravamen of respondent’s motion for summary judgment
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`is that respondent is entitled to judgment as a matter of law
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`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.
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`6
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`Cancellation No. 92047436
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`9). As a result thereof, respondent asserts that petitioner,
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`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.
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`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
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`production of documents and its first set of interrogatories;
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`a copy of petitioner’s second amended responses and
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`objections to respondent’s first set of interrogatories; and
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`copies of correspondence to respondent’s counsel from
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`petitioner’s counsel regarding discovery, none of which are
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`supported by affidavit (see motion, Exhibits E, G, I, J and
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`K). Respondent alleges that petitioner has been unresponsive
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`to respondent’s discovery requests;1 that the documents that
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`have been produced do not mention or refer to Thread Pit or
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`its goods “in any manner whatsoever” (motion, p. 6); that,
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`with respect to its letters from counsel, petitioner states
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`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).
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`7
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`Cancellation No. 92047436
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`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
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`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
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`discovery responses, respondent contends that petitioner’s
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`claims are “wholly unsubstantiated by any evidence in the
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`record nor [sic] in claimed attorney-client privilege logs
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`that do not exist” (motion, pp. 8-9); and that petitioner’s
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`claims should be dismissed.
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`As discussed supra, to prevail on a motion for summary
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`judgment, the movant must establish that there are no genuine
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`issues of material fact in dispute, thus leaving the case to
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`be resolved as a matter of law. The movant may discharge its
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`burden “by ‘showing’ - that is, pointing out to the [Board] -
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`that there is an absence of evidence to support the nonmoving
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`party’s case.” Celotex Corp., 477 U.S. at 325.
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`Specifically, the summary judgment movant must identify the
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`legal basis of its motion and point to those portions of the
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`8
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`Cancellation No. 92047436
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`record that it believes demonstrate the absence of a genuine
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`issue of material fact as to the elements of the non-movant’s
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`claim(s), such as the pleadings, depositions, answers to
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`interrogatories, admissions on file, and the like. See Id.
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`at 323. See also Kellogg Co. v. Pack’Em Enterprises Inc., 14
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`USPQ2d 1545 (TTAB 1990), aff’d 951 F.2d 330, 21 USPQ2d 1142,
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`1144 (Fed. Cir. 1991).
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`Respondent’s motion for summary judgment seeks to show
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`that there is a lack of evidence to support petitioner’s
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`case. Instead of adducing or indicating evidence of record
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`that would show that there are no genuine issues of material
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`fact in connection with petitioner’s claims, respondent
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`essentially contends that petitioner lacks evidence and,
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`thus, “cannot proffer” evidence to prove its claims. As
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`such, respondent’s motion is more in the nature of a request
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`that the Board apply an estoppel sanction to evidence that
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`may be produced on summary judgment or at trial rather than a
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`motion for summary judgment.
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`To the extent respondent is arguing that petitioner is
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`estopped from introducing evidence on summary judgment or at
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`trial and that, based on petitioner’s alleged lack of
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`appropriate discovery responses, summary judgment should be
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`entered against petitioner, such request is premature and
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`will not be considered. Respondent has filed neither a
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`motion to compel nor a motion for discovery sanctions for
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`9
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`Cancellation No. 92047436
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`failure to comply with an order compelling discovery
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`responses. See Trademark Rule 2.120(g)(1), 37 C.F.R. §
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`2.120(g)(1). See also Linville v. Rivard, 41 USPQ2d 1731,
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`1733 (TTAB 1996) (no estoppel; where objections that
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`discovery requests are, for example, ambiguous or burdensome,
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`or are otherwise not of a nature which would lead the
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`propounding party to believe that the requested information
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`does not exist, party should have filed motion to compel),
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`aff'd, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998);
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`British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201
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`(TTAB 1993) (no estoppel; where applicant gave partial
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`answers and otherwise objected to requests as cumulative or
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`burdensome but opposer did not file motion to compel, modify
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`discovery requests, or otherwise pursue material, evidence
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`introduced by applicant at trial was considered), aff'd, 35
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`F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994); and Seligman &
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`Latz, Inc. v. Merit Mercantile Corp., 222 USPQ 720, 723 (TTAB
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`1984) (Board will not impose sanction of drawing adverse
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`inferences against party based on inconsistent responses to
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`questions asked during discovery deposition without motion to
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`compel complete responses and violation of an order
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`compelling answers).
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`To the extent respondent argues that there are no
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`genuine issues of fact for trial, respondent has provided no
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`evidence demonstrating that there is an absence of genuine
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`10
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`Cancellation No. 92047436
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`issues of material fact as to petitioner’s claims of
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`likelihood of confusion and dilution and that respondent is
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`entitled to judgment on those claims as a matter of law. See
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`Celotex, 477 U.S. at 325 and Kellogg, 21 USPQ2d at 1144.
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`Accordingly, respondent’s motion for summary judgment is
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`denied.
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`Nonetheless, petitioner is reminded that, if a party
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`provides an incomplete response to a discovery request, that
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`party, upon a timely raised objection by an adverse party,
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`may not thereafter rely at trial on information from its
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`records which was properly sought in the discovery request,
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`but which was not included in the response thereto, unless
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`the response is supplemented in a timely fashion pursuant to
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`Fed. R. Civ. P. 26(e). See Bison Corp. v. Perfecta Chemie
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`B.V., 4 USPQ2d 1718 (TTAB 1987); and TBMP § 408.02 (2d ed.
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`rev. 2004). Petitioner is further reminded that, should it
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`be later found to have willfully withheld discovery
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`responses, introduction of such evidence withheld may be
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`precluded upon a motion to strike.
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`Additionally, both parties are reminded of their
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`continuing duty to thoroughly search their respective records
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`for all information properly sought in discovery and to
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`provide such information to the requesting party. TBMP §
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`408.02 (2d ed. rev. 2004). A party that has responded to a
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`request for discovery with a response is under a continuing
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`11
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`Cancellation No. 92047436
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`duty to supplement or correct the response to include
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`information thereafter acquired or uncovered. TBMP Id. at §
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`408.03.
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`• Petitioner’s Cross-Motion for Summary Judgment
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`We turn now to petitioners cross-motion for summary
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`judgment on the issues of likelihood of confusion and
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`dilution.
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`On consideration of petitioner’s cross-motion and
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`respondent’s opposition thereto, we find that petitioner has
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`not met its burden to show that there are no genuine issues
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`of material fact in dispute and that it is entitled to
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`judgment as a matter of law. Sweats Fashions Inc. v. Pannill
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`Knitting Co. Inc., 4 USPQ2d 1793, 1795 (Fed. Cir. 1987); and
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`Sears Mortgage Corp. v. Northeast Savings F.A., 24 USPQ2d
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`1227, 1228 (TTAB 1992). Drawing all inferences in favor of
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`the respondent as the non-movant on such motion, we find that
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`in view of the alleged disparaging or irreverent nature of
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`respondent’s mark, there is, at a minimum, a genuine issue of
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`fact as to whether the parties’ marks are sufficiently
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`similar to cause likelihood of confusion as to the source of
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`the parties’ respective goods.2 See, e.g., Boston Red Sox
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`Baseball Club Limited Partnership v. Brad Francis Sherman, 88
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`USPQ2d 1581 (TTAB 2008) (“the differences in the two marks,
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`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.
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`12
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`Cancellation No. 92047436
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`caused by the attention-grabbing words in applicant's mark,
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`result in differences in sound and meaning that far outweigh
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`any visual similarity due to the display of the words”); and
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`Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507
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`F.3d 252, 262 (4th Cir. 2007) (“the differences are
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`sufficiently obvious and the parody sufficiently blatant that
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`a consumer encountering a “Chewy Vuiton” dog toy would not
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`mistake its source or sponsorship on the basis of mark
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`similarity”). In view thereof, there also exists a genuine
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`issue of fact as to whether the parties’ marks are
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`“sufficiently similar” to support petitioner’s dilution
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`claim. See The Toro Company v. Torohead, Inc., 61 USPQ2d
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`1164, 1183 (TTAB 2001) (“For dilution purposes, a party must
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`prove more than confusing similarity; it must show that the
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`marks are identical or “very or substantially similar.”
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`[internal citations omitted]).
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`Accordingly, petitioner’s cross-motion for summary
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`judgment is denied.3
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`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).
`
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`13
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`Cancellation No. 92047436
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`Proceedings Resumed; Dates Reset
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`Proceedings are resumed. Discovery is closed. Trial
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`dates are reset as shown in the following schedule:
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`
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`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:
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`CLOSED
`August 11, 2009
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`October 10, 2009
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`November 24, 2009
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`IN EACH INSTANCE, a copy of the transcript of
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`testimony, together with copies of documentary exhibits,
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`must be served on the adverse party WITHIN THIRTY DAYS after
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`completion of the taking of testimony. See Trademark Rule
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`2.l25, 37 C.F.R. § 2.125.
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`Briefs shall be filed in accordance with Trademark
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`Rules 2.l28(a) and (b), 37 C.F.R. §§ 2.128(a) and (b). An
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`oral hearing will be set only upon request filed as provided
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`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
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`Cancellation No. 92047436
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`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