Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA713315
`ESTTA Tracking number:
`12/08/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056475
`Defendant
`Unitek Solvent Services Inc.
`BRETT L FOSTER
`HOLLAND & HART LLP
`222 SOUTH MAIN STREET, SUITE 2200
`SALT LAKE CITY, UT 84101
`UNITED STATES
`docket@hollandhart.com, gfoster@hollandhart.com, bfoster@hollandhart.com,
`gutley@hollandhart.com, bwthurgood@hollandandhart.comm hhdock-
`et@hollandandha
`Motion to Compel Discovery
`Ginger Utley
`gutley@hollandhart.com, bwthurgood@hollandhart.com, hhdock-
`et@hollandhart.com, bfoster@hollandhart.com, gfoster@hollandhart.com
`/s/ Ginger Utley
`12/08/2015
`2015-11-24 REDACTED Motion to Compel and Extend Discovery.pdf(1510991
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
` FCA USA LLC,
`
`Cancellation No. 92056475
`
`Petitioner,
`
`Registration No. 3,166,981
`
`
`
`v.
`
`UNITEK SOLVENT SERVICES, INC.,
`
`REDACTED
`
`Registrant.
`
`REGISTRANT’S MOTION TO COMPEL AND EXTEND DISCOVERY
`
`Pursuant to Rule 37 of the Federal Rules of Civil Procedure and 37 C.F.R. § 2.120,
`
`Registrant Unitek Solvent Services, Inc. (“Unitek” or “Registrant”), by and through counsel,
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`respectfully submits this Motion to Compel Interrogatory Responses and Responses to Requests
`
`for Production of Documents (“Motion”). By this Motion, Unitek seeks an order requiring
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`Petitioner, FCA USA, LLC f/k/a Chrysler Group LLC (“Petitioner” or “Chrysler”) to produce
`
`limited, but highly critical
`
`information responsive to Interrogatory Nos. 6-10, and 12 and
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`Document Request Nos. 1, 4-6, 8-9, and 11-12.
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`Pursuant
`
`to 37 C.F.R. § 2.120(e) and TBMP § 523, Unitek further requests this
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`proceeding be suspended pending the Board’s consideration of the present Motion. Moreover,
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`the discovery deadline is presently set to close on November 24, 2015, and because both parties
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`have outstanding discovery requests pending, Unitek requests an extension of the deadlines in
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`this proceeding by 60 days so that it may take follow-up written discovery and discovery
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`depositions. Without seeking the consent of Unitek, Chrysler filed a Motion to Extend Deadlines
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`on November 20, 2015 in this proceeding. See Dkt. 29. Unitek consents to the requested
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`extension as shown below:
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`8242327 7.docx
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`

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`Discovery Closes:
`Plaintiffs Pretrial Disclosures Due:
`Plaintiffs 30-day Trial Period Ends:
`Defendant's Pretrial Disclosures Due:
`
`Defendant's 30-day Trial Period Ends:
`Plaintiffs Rebuttal Disclosures Due:
`
`1/23/2016
`3/8/2016
`4/22/20161
`5/7/2016
`
`6/21/2016
`7/6/2016
`
`Plaintiffs 15-day Rebuttal Period Ends:
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`8/5/2016
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`CERTIFICATION UNDER RULE 37131111
`
`Unitek hereby certifies that it has conferred with Chrysler to resolve the discovery issues
`
`raised herein. Counsel for Unitek and Chrysler communicated via email on November 12, 2015
`
`but were unable to resolve this discovery dispute. See Exhibit 4 to Declaration of Ginger Utley,
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`filed as Exhibit A hereto (“Utley Decl.”)2.
`
`The following participated in the conferral communications:
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`I Ginger Utley of HOLLAND & HART, counsel for Unitek; and
`
`I Charles Hooker of KILPATRICK TOWNSEND, counsel for Chrysler.
`
`INTRODUCTION
`
`This proceeding is proper only if Chrysler has standing to maintain it. Chrysler has
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`standing only if it can establish a “reasonable belief of damage” as a result of Unitek’s continued
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`registration of its ECODIESEL trademark (the “Mark”), including a “direct and personal stake”
`
`1 This motion is timely, as the opening of Plaintiffs testimony period is currently set for January
`22, 2016. See I-I.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1719 n.l0 (TTAB 2008)
`(motion to compel need not be filed during discovery period, but must be filed prior to opening
`of first testimony period); Luemme Inc. v. D.B. Plus, Inc., 53 USPQ2d 1758, 1761-62 (TTAB
`1999) (same).
`
`2 For clarity, “Exhibit” refers to exhibits attached hereto. The abbreviation “Ex.” refers to
`exhibits attached to other pleadings.
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`8242327_7.d0cx
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`

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`in the outcome of the proceeding (Unitek refers to the “reasonable belief in damage” and “direct
`
`and personal stake” requirements as “Harm”). Ritchie v. Simpson, 170 F.3d 1092, 1098 (Fed.
`
`Cir. 1999) (quoting Universal Oil Prod Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122
`
`(C.C.P.A. 1972)).
`
`In attempting to satisfy its burden, Chrysler has claimed that it faces various forms of
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`Harm, including that it may (1) be hindered and constricted in adapting its Mark; (2) operate
`
`under the constant threat of litigation; and (3) suffer financial harm. See Dkt. 22 (Opposition to
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`Unitek’s Motion for Summary Judgment, “Opposition”). Through its first set of interrogatories,
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`requests for production of documents, and requests for admission (“Discovery Requests”),
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`Unitek seeks elaboration of and support for Chrysler’s claims of Harm. But Chrysler refuses to
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`provide it.
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`In responding to Unitek’s Discovery Requests (“Responses”), Chrysler has failed and
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`refused to produce a single document or provide a substantive response to any of Unitek’s
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`Requests.
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`Instead, it simply repeats its generalized, hypothetical claims of future Harm while
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`objecting to nearly every Request as irrelevant,
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`implicating highly confidential
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`information,
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`and/or seeking information not within Chrysler’s possession. Each objection fails.
`
`The
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`information is highly relevant—even critical—in establishing Chrysler’s standing and thus the
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`propriety of this proceeding. There is a protective order in place to protect both parties’
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`confidential information. And the information, if it exists, is solely within Chrysler’s possession.
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`If any evidence of alleged Harm exists, Chrysler has every reason to produce the
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`requested discovery and no reason to withhold it. The information sought is highly relevant to
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`the question of Chrysler’s lack of standing and is based on Chrysler’s own claims of Harm. If
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`the information exists, Chrysler is the only party who has it, and it should want to produce it. By
`
`3
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`8242327 _7.docx
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`failing and refiising to do so, Chrysler’s ploy is apparent.
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`It has no evidence to satisfy its burden
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`of establishing standing, so it has simply objected to Unitek’s Requests. Chrysler cannot have it
`
`both ways:
`
`it cannot claim Harm sufficient
`
`to maintain this proceeding, but refuse to
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`substantively respond to Unitek’s discovery—even though Chrysler ‘s responses will expose the
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`naked allegations of Harm. Therefore, Unitek respectfully requests the Board grant the instant
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`Motion and enter an order compelling Chrysler to produce the discovery responses cited herein
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`and reset the schedule as requested herein.
`
`RELEVANT FACTUAL BACKGROUND
`
`Unitek assumes the Board’s familiarity with the factual background of this proceeding
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`and the parties’ former trademark infringement litigation in the Federal District Court for the
`
`District of Hawai’i. Therefore, Unitek provides a highly abbreviated set of background facts
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`below and incorporates by reference the specific set of facts and exhibits set forth in its
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`Combined Motion for Summary Judgment and to Amend Description of Goods (“Combined
`
`Motion”). See Dkt. 21 at 111] 1-59.
`
`1.
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`Chrysler’s application for ECODIESEL (“Chrysler’s Mark”) has been denied
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`registration based solely on potential confiision with Unitek’s existing registration for the Mark.
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`|I_1|:>_II’Z.!.AtLg_|fl.._t1_i_}X_2\’_.
`
`2.
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`In its Petition to Cancel Unitek’s Mark, Chrysler claimed that because Unitek’s
`
`registration barred Chrysler’s registration, it was being harmed and had standing to petition to
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`cancel Unitek’s registration. Dkt. 1.
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`3.
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`This proceeding was stayed with the parties engaged in a lengthy civil action
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`before the federal district court for the District of Hawaii (“Federal Action”) to resolve Unitek’s
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`trademark infringement claim. The sole question in the Federal Action (including in the
`
`4
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`8242327 7.docx
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`

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`Preliminary Injunction Proceeding that was part of the Federal Action) was whether Chrysler’s
`
`use of ECODIESEL would create a likelihood of confusion with Unitek’s Mark? See, e.g., Ex. 1
`
`to Dkt. No. 5, and Ex. 5 to Dkt. 21.
`
`4.
`
`Chrysler argued strenuously and repeatedly that there was no possible likelihood
`
`of confusion. See, e.g., Exs. 7 and 8 to Dkt. 21.4
`
`5.
`
`Throughout the extensive period of preliminary injunction discovery, depositions,
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`motion practice, and a two-day evidentiary hearing, neither party addressed Chrysler’s claimed
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`harm or injury that would result from Unitek’s continued registration of the mark, should
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`Chrysler prevail in the Federal Action. Thus, the record is devoid of any evidence on that issue.
`
`6.
`
`On September 30, 2013,
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`the district court
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`issued its Order Denying Unitek’s
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`Motion for Preliminary Injunction and concluding “there is also no likelihood of confusion.” See
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`Ex. 9 to Dkt. 21.
`
`7.
`
`In July 2014, following Unitek’s unsuccessful appeal to the Ninth Circuit, the
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`Federal Action was resumed, and given Unitek’s precarious financial situation, it filed a Motion
`
`for Voluntary Dismissal, seeking dismissal with prejudice of its trademark infringement-related
`
`claims and explicitly conceding the merits of the infringement claim to Chrysler: “Unitek legally
`
`the question was whether
`3 The case posture was unique in that it was a reverse confusion case:
`consumers would assume Unitek (the senior user) was affiliated or associated with Chrysler (the
`junior user), given the massive size and marketing power differential between Unitek and Chrysler.
`4 In its Answer, Chrysler reiterated its argument that the parties are not competitors and therefore no
`likelihood of confusion exists: “Unitek is not engaged in the business of manufacturing or selling
`motor vehicles. Unitek’s recycled products are not used for passenger motor vehicles. Unitek and
`Chrysler are not competitors.” See Ex. 7 at p. 15, 1H] 12-14 to Dkt. 21.
`
`8242327 _7.docx
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`

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`concedes there is no likelihood of confusion between its Mark and Chrysler’s stylized
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`ECODIESEL mark.” (“Motion to Dismiss”). See Ex.
`
`1 to Dkt. 12, Registrant’s Response to
`
`Petitioner’s Motion to Resume. Unitek also sought dismissal without prejudice of the
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`cancellation-related claims to be resolved by this Board, in this forum. Id.
`
`8.
`
`On October 31, 2014, the Court entered an Order granting Unitek’s Motion for
`
`Voluntary Dismissal (“Order”), dismissing (1) all of Unitek’s trademark-infringement-related
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`claims with prejudice; and (2) Chrysler’s cancellation-related claims without prejudice, to be
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`resolved by the Board. See Ex. A to Dkt. ll, Petitioner’s Motion to Resume.
`
`9.
`
`As a result of the Order, the sole bar to Chrysler’s application for registration of
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`Chrysler’s Mark—likelihood of confusion with Unitek’s Mark—was resolved in Chrysler’s
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`favor and therefore removed as a basis for refusing registration of Chrysler’s Mark.
`
`10.
`
`The parties notified the Board of the Court’s Order, and the Board resumed the
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`Cancellation Proceeding, setting a trial schedule that included a discovery deadline of November
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`24, 2015. See Dkt. 14.
`
`11.
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`The Board ordered that the record from the Federal Action be made part of the
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`record in the Cancellation Proceeding, including documents produced, deposition testimony, and
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`live witness testimony taken during the preliminary injunction hearing.
`
`12.
`
`On April 8, 2015, Unitek filed its Combined Motion in this proceeding, seeking
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`both to amend the goods (exactly as suggested by Chrysler) and asserting that Chrysler lacks
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`standing to maintain its petition to cancel Unitek’s registration on the basis that Chrysler no
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`longer can show any injury or harm resulting from Unitek’s ongoing registration of the Mark.
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`Dkt. 21.
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`8242327 7.docx
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`13.
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`On May 12, 2015, Chrysler filed an Opposition to Unitek’s Motion for Summary
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`Judgment (“Opposition”), asserting that, despite the fact that it prevailed in the Federal Action,
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`its injury and harm are ongoing and include
`
`that [Chrysler’s] [1] use and adaptations of its EcoDiesel
`Design Mark will be hindered and constricted by Unitek’s prior
`registration of ECODIESEL for a wide variety of related goods;
`and [2] that it will constantly operate under a threat of litigation
`from Unitek or a successor in interest to Unitek, who may oppose,
`petition to cancel, or bring litigation against Chrysler’s present or
`future uses of “EcoDiesel” in connection with its products.
`
`Dkt. 22 at 15.
`
`14.
`
`On August 21, 2015, the Board denied Unitek’s Combined Motion, finding issues
`
`of fact regarding Chrysler’s standing. Dkt. 26.
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`15.
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`Thereafter, discovery in the Cancellation Proceeding commenced and pursuant to
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`the Board’s order, discovery concludes on November 24, 2015. See id.
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`16.
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`On September 21, 2015, Unitek served its Discovery Requests,
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`including
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`Requests for Admission, Interrogatories, and Requests for Production of Documents all focused
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`on eliciting information regarding Chrysler’s claimed Harm stemming from Unitek’s continued
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`registration of the Mark,
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`including financial harm and the harm specifically identified by
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`Chrysler in its Opposition:
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`that it will be hindered and constricted in adapting Chrysler’s Mark
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`and will operate under future threat of litigation. See Exhibit 1 to Declaration of Ginger Utley
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`(“Utley Decl.”) filed herewith as Exhibit A.
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`17.
`
`On October 25, 2015, Chrysler served its responses to Unitek’s Discovery
`
`Requests (“Discovery Responses”). Chrysler’s Discovery Responses chiefly include citations to
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`the record from the Federal Action and/or objections to Unitek’s requests and provided very little
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`substantive information.
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`In fact, Chrysler failed to produce a single document in conjunction
`
`7
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`8242327_7.docx
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`

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`with its Discovery Responses but represented that it would produce documents in response to
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`Document Request No. 5, which requested “all documents sufficient
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`to identify Cl1rysler’s
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`ECODIESEL Products.” Id.
`
`18.
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`On November 3, 2015, Unitek emailed Chrysler, requesting that it “please let
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`[Unitek] know if and when we can expect to receive the documents referenced in Chrysler’s
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`responses to Unitek’s Request for Production?” See Exhibit 2 to Utley Decl.
`
`19.
`
`On November 3, 2015, Chrysler responded:
`
`Chrysler will not be producing any documents in response to
`Unitek’s Requests for Production. Request No. 5 is the only
`request to which we indicated we might produce documents. Upon
`further inspection,
`it
`is our belief that all of the information
`requested in that Request
`is publicly available on Chrysler’s
`website. Please feel free to call me if you would like to discuss
`further.
`
`Id.
`
`20.
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`On November 3, 2015, Unitek noticed a corporate deposition of Chrysler,
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`identifying topics related to Chrysler’s claimed injury and harm. See Exhibit 3 to Utley Decl.
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`21.
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`In preparation for that deposition, and given the complete non-production of
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`documents by Chrysler, Unitek spent hours looking for and reviewing Chrysler’s website and
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`other public websites that might provide information regarding Chrysler’s ECODIESEL-branded
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`products and any claimed Harm that Chrysler may cite as a result of Unitek’s continued
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`registration of its Mark in the form of profits, performance, and/or lost market share. None of
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`the publicly—available information was sufficient or specific enough to address Unitek’s
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`Discovery Requests and allow Unitek to properly prepare for a corporate deposition.
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`22.
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`On November 12, 2015, Unitek informed Chrysler that the publicly—available
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`information to which Chrysler had directed Unitek was insufficient for Unitek to prepare for the
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`8242327 _7.docx
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`scheduled deposition of Chrysler’s corporate witness(es) and requested that Chrysler supplement
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`its production prior to the deposition:
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`I’ve been looking through the documents on Chrysler’s website
`and in other public forums, where I’ve been directed by Chrysler to
`look, and I feel as though I’m looking for a need in a hay stack.
`I ’m having a really difficult time finding what I need/ am looking
`for regarding Chrysler ‘s harm and/or injury related to Unitek ’s
`use of the ECODIESEL mark.
`
`See Exhibit 4 to Utley Decl. (emphasis added).
`
`23.
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`Chrysler responded but
`
`ignored Unitek’s request
`
`for
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`information regarding
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`Chrysler’s “harm and/or injury.” Instead, it maintained its refusal to produce any documents and
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`again pointed Unitek to two websites that have nothing whatever to do with Chrysler’s claimed
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`Harm, as requested by Unitek. Chrysler simply stated that “... JEEP brand and RAM brand
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`products
`
`featuring EcoDiesel
`
`engines
`
`can
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`be
`
`found
`
`at
`
`the
`
`following websites:
`
`Imp:r’twww.raIn1rL1cks.eun1fc|1lceodicscll
`
`I111 ):iI‘www.'uc).<:n111;’cru"cc 1-ca mhililicslccn-die5c|-
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`calculator/.” See id.
`
`24.
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`The parties mutually agreed to postpone the deposition of Chrysler’s corporate
`
`representative(s), and Unitek has been forced to file this Motion to Compel. See id.
`
`ARGUMENT
`
`The Federal Rules of Civil Procedure permit parties to “obtain discovery regarding any
`
`matter, not privileged, that is relevant to the claim or defense of any party.” Fed.R.Civ.P.
`
`26(b)(1). “‘Relevant evidence’ means evidence having any tendency to make the existence of
`
`any fact that is of consequence to the determination of the action more probable or less probable
`
`than it would be without the evidence.” Fed. R. Evid. 401 (emphasis added). The Board may
`
`grant a motion to compel to compel responses to interrogatories and requests for production of
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`documents. See, e. g., Johnson and Johnson and Roc International S.A.R.L. v. Obschestvo s
`
`9
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`8242327__7.docx
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`Oranitchennoy; Otvetstvenn Ostiu "Wds,” 95 USPQ2d 1567, 1570 (TTAB 2010) (motion to
`
`compel applicant to supplement interrogatory responses granted); Jain v. Ramparts Inc., 49
`
`USPQ2d 1429, 1436 (TTAB 1998) (motion to compel applicant to supplement interrogatory
`
`responses and document requests).
`
`I.
`
`CHRYSLER’S EVIDENCE OF HARM (OR LACK THEREOF) IS HIGHLY
`RELEVANT TO ESTABLISHING ITS STANDING TO MAINTAIN THIS
`PROCEEDING
`
`Section 14 of the Lanham Act provides that a petition to cancel may be filed by “any
`
`person who believes he is or will be damaged by the registration of a mark...” 15 U.S.C. § 1064.
`
`A petitioner’s allegation that it would be damaged by a registration “must have a ‘reasonable
`
`basis in fact.”’ Ritchie v. Simpson, 170 F.3d 1092, 1098 (Fed. Cir. 1999) (quoting Universal Oil
`
`Prod. Co. v. Rexall Drug & Chem. C0,, 463 F.2d 1122 (C.C.P.A. 1972)). The “facts regarding
`
`standing .
`
`.
`
`. are part of a petitioner’s case and must be aflirmatively proved.” Lipton, 670 F .2d at
`
`1028. See also Trademark Rule 2.112(a) (requiring statement by petitioner identifying how “he,
`
`she or it
`
`is or will be damaged by the registration”).
`
`Thus, a party meets the statutory
`
`requirement of establishing a “reasonable belief of damage” by showing that it has a “real
`
`interest
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`in the proceeding,” including a “direct and personal stake” in the outcome of the
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`proceeding. Ritchie, 170 F.3d at 1098 (Unitek refers to “belief in damage” and “real interest”
`
`and “direct and personal stake” together as “Harm”).
`
`As a basis for its standing to petition to cancel Unitek’s registration, Chrysler pleaded, as
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`its sole basis for standing, the following Harm: “Because it is being denied registration of its
`
`mark, Chrysler is suffering ongoing damage as a result of Registration No. 3,166,981.” Dkt. 1
`
`(emphasis added). Chrysler made no other allegation, and despite the fact that the cited Harm no
`
`longer exists, Chrysler maintains that it is and will suffer ongoing Harm as a result of Unitek’s
`
`10
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`8242327__7,docx
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`continued registration, specifically (as set forth in its Opposition) in the form of financial harm;
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`being “hindered and constricted” in adapting its mark; and operating under an ongoing threat of
`
`litigation. Dkt. 22 at 15. Therefore, the issue of Chrysler’s alleged Harm is not only highly
`
`relevant, it is absolutely crucial to the very existence of this proceeding. Thus, Unitek is entitled
`
`to the information supporting Chrys1er’s claimed Harm, as set forth in Unitek’s specific
`
`Discovery Requests discussed below.
`
`A.
`
`INTERROGATORY NOS. 6-10 AND 12 SEEK HIGHLY RELEVANT INFORMATION
`THAT ONLY CHRYSLER CAN PROVIDE
`
`Interrogatory No. 6: Describe in detail all of Chrys1er’s existing ECODIESEL
`Products.5
`
`Chrysler objected to this Interrogatory as “overly broad” and pointed Unitek to Chrysler’s
`
`RAM and Jeep websites, claiming that Unitek can obtain the requested information from those
`
`public sources. Chrysler’s objection fails, and its citation to its websites is far too vague and
`
`duplicitous to be responsive.
`
`First, the scope of Products with which Chrysler uses the Mark is not overly broad. It is a
`
`defined list to which Unitek is entitled and to which only Chrysler has access.
`
`Second, and closely-related, the Products cannot be determined by viewing Chrys1er’s
`
`websites, and it is not Unitek’s responsibility to scour those website in hopes of finding the
`
`requested information, without
`
`any ability to confirm its accuracy or completeness.
`
`Additionally, in pointing Unitek to Chrysler’s websites for the requested discovery, Chrysler is
`
`5 Unitek defines “Products,” “Mark” and various other terms in its Discovery Requests. Unitek
`incorporates by references those definitions and instructions. See Exhibit 1 to Utley Decl.
`
`11
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`8242327 _7.docx
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`taking an entirely duplicitous position: on one hand, Chrysler claims that the information is
`
`provided “on the condition that [it]
`
`.
`
`.
`
`.
`
`is treated as ‘Confidential Information — Attomey’s
`
`Eyes Only.’” In the next breath, Chrysler states that
`
`
`
`Either the information is highly confidential and should be designated as Attorneys Eyes Only,
`
`or it is publicly available.
`
`It cannot be both. Chrysler should be compelled to identify, with
`
`specificity, the Products with which it uses the Mark.
`
`Interrogatory No. 7: Describe in detail all of Chrysler’s ECODIESEL Products with
`which Chrysler plans to use the Mark.
`
`Chrysler objected to this Interrogatory as “overly broad” and—as with its response to
`
`Interrogatory No. 6—pointed Unitek to its public websites regarding RAM and Jeep brand
`
`vehicles. Again, Chrysler’s objection fails, and its response is vague and evasive.
`
`First, the information sought is not overly broad.
`
`In Chrysler’s response to Interrogatory
`
`No. 2 (asking Chrysler to “describe in detail how Chrysler will be ‘hindered and constricted’ in
`
`adapting its Mark, as alleged in Chrysler’s Opposition”), Chrysler claimed that
`
`
`
`While Chrysler admits that it “may” use the Mark on additional—, it does
`
`not narrow the list in any meaningful respect in that response either. Rather, Chrysler simply
`
`12
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`8242327 _7 docx
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`
`displays a litany of images without any specific information regarding its use or planned use of
`
`the Mark. Chrysler knows, and only Chrysler knows, the vehicles with which it “may” use the
`
`Mark, and it knows that information well in advance.6 The Interrogatory is not overly broad, and
`
`Unitek is entitled to a complete response.
`
`Second, Chrysler’s citation to its public websites as a response to this Interrogatory is
`
`improper and duplicitous, as it was with response to Interrogatory No. 6. Chrysler again states
`
`that its response must be “treated as ‘Confidential Information — Attomey’s Eyes Only,’” and
`
`then points Unitek to the information that is available on its public websites. This response is
`
`evasive and duplicitous. Finally, Chrysler concludes its response by stating that it_
`
` The
`
`identification of those products and services is the information being requested in this
`
`Interrogatory, and Unitek is entitled to an identification of those products and services, not
`
`merely another restatem ent that they exist.
`
`Interrogatory No. 8: Describe in detail Chrysler’s ECODIESEL Products with which
`Chrysler plans to use an adaption of the Mark, as set forth in response to Interrogatory No. 1.
`
`Chrysler objected to this Interrogatory on the grounds that it is (1) “overly broad”; and
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`(2) that the infonnation is highly confidential. Chrysler’s objections fail.
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`First, this Request is not overly broad.
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`It is simply a request for Chrysler to identify the
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`Products that it claims exist.
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`In response to Interrogatory Nos. 2 and 3, for example, Chrysler
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`In the Federal Action, Chrysler explained that
`6
` Thus, the decision to use an ECODIESEL engine (and thus the
`Mark) in a particular Product is made well in advance. As a result, Chrysler knows the Products
`with which it plans to use the Mark.
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`claims that it is being hindered in adapting its Mark, and that “Unitek’s registration [may be
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`cited] against future applications Chrysler files for variations on its EcoDiesel Design Mark for
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`the same or related goods and services.” Chrysler’s clear insinuation is that it is considering
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`making adaptations to the Mark for use on other Products.
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`In response to this Interrogatory,
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`ceeyenee repeats lee elem the ieT
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` ” cheyelee has me eueeen er
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`establishing demonstrable Harm as a result of Unitek’s continued registration of the Mark.
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`Chrysler has claimed that it will be harmed vis-a-vis its planned adaptations of Chrysler’s Mark
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`for use on existing and future Products; therefore, Unitek is entitled to any and all information
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`that supports Chrysler’s claim.
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`Second, Chrysler’s confidentiality objection fails. While the information may be highly
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`sensitive, it is amply guarded by a Protective Order that has been in place for the past three years.
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`During that time, the parties have complied with the terms of the Protective Order and have
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`exchanged highly sensitive information without incident or detriment to either party. Chrysler
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`should be compelled to provide a complete response to this Interrogatory.
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`Interrogatory No. 9: Provide the total amount of sales (in dollars) for all of Chrysler’s
`ECODIESEL Products, from the first date of Chrysler’s use of the Mark through October 31,
`2014.
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`7 Chrysler’s claims of Harm on this ground are entirely baseless. Any applications for
`adaptations of the Mark would be, as a matter of law, new applications. They would relate to
`different marks used in connection with different products and services and therefore would be
`entirely irrelevant to the existing ECODIESEL registrations of each party.
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`lnterrogatory No. 10: Provide the total amount of sales (in dollars) for all of Chrysler’s
`ECODIESEL Products from November 1, 2014 through the present.
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`Chrysler objected to these two Interrogatories on identical grounds, that they “seek[]
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`information that is irrelevant and is not reasonably calculated to lead the discovery of admissible
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`evidence. Chrysler’s petition to cancel Unitek’s registration is not premised on likelihood of
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`confusion. Chrysler further objects to this lnterrogatory because it unnecessarily seeks highly
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`commercially sensitive infonnation.”
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`Chrysler’s objections fail. First, the information is not irrelevant; it is highly relevant and
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`even critical
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`to the existence of this proceeding. Chrysler has the affirmative burden of
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`establishing its Harm and has asserted that such harm exists as a result of Unitek’s continued
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`registration of its Mark, including in the form of financial Harm. Specifically, in its Response to
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`lnterrogatory No. 4, (requesting a description of “the precise nature of any harm Chrysler has
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`suffered as a result of Unitek’s registration” from the date of Chrysler’s application until the
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`present), Chrysler claims that “it has had to expend considerable resources to litigate the”
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`Federal Action and this proceeding “all to Chrysler’s detriment.” See Exhibit 1 to Utley Dec|.,
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`Response to lnterrogatory No. 4. Similarly,
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`in response to lnterrogatory No. 3 (seeking the
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`“precise nature of any other harm” Chrysler claims it will suffer, including “lost revenue and
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`decreased market share”), Chrysler responded that the continued registration of Unitek’s mark
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`may affect Chrysler’s decisions regarding its future use of the mark and thus have_
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` See id While the cost of
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`litigation and hypothetical harm resulting from potentially-nonexistent hypothetical decisions are
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`not the type of Harm that supports standing to cancel a trademark registration, Chrysler makes
`
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`these claims and therefore has the burden of supporting them. Unitek’s Interrogatories 9-10 seek
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`precisely that information.
`
`In Interrogatory No. 9, Unitek requests Chrysler’s sales of the relevant ECODIESEL
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`products from the period when Chrysler first began using the Mark until the conclusion of the
`
`Federal Action.
`
`In Interrogatory No. 10, Unitek requests Chrysler’s sales of the relevant
`
`ECODIESEL products from the period following the Federal Action until present. This will
`
`allow Unitek to compare the figures and determine whether Chrysler has, in fact, suffered any
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`financial losses———whether as a result of litigation costs or loss of profit or market share—that can
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`be tied to Unitek’s continued registration of the Mark. This information is highly relevant.
`
`Second, Chrysler’s objection that
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`its “petition to cancel Unitek’s registration is not
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`premised on likelihood of confusion” is irrelevant to these two Interrogatories.
`
`Chrysler’s third objection fails as well. While the information may be highly sensitive,
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`there is a Protective Order in place. For the past three years, the parties have complied with the
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`terms of that order and have exchanged highly sensitive information without
`
`incident or
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`detriment to either party. Chrysler’s sales information is not so highly sensitive that it cannot be
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`produced and protected under the terms of the Protective Order, and the information is highly
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`relevant and necessary to support Chrysler’s own assertions of financial harm. Chrysler should
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`be compelled to provide complete responses to Interrogatory Nos. 9 and 10.
`
`Interrogatory No. 12: Identify and describe in detail any instance in which a consumer
`or potential consumer of Chrysler’s ECODIESEL Products has expressed confusion as a result of
`Unitek’s use of its ECODIESEL Mark, including by questioning whether Chrysler’s products are
`associated with, sponsored by, or otherwise connected with Unitek or any of Unitek’s products.
`
`Chrysler objected to this Interrogatory as (1) “overly broad”; (2) seeking information not
`
`within Chrysler’s possession; and (3) “seeking irrelevant information.” These objections fail.
`
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`First, the Interrogatory is not overly broad. Chrysler understands precisely the meaning
`
`and scope of this Interrogatory. It has repeatedly claimed and vehemently argued that there is no
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`likelihood of confusion possible between Chrysler’s Mark and Unitek’s Mark and that none has
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`ever occurred. This Interrogatory simply seeks the limited response as to whether any such
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`confusion or expression of confusion has, in fact, ever occurred.
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`Second, any confusion expressed to Chrysler by Chrysler’s consumers is very likely only
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`within Chrysler’s possession. This objection fails.
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`Finally, this Interrogatory is anything but irrelevant.
`
`Indeed,
`
`it goes straight to the
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`question of Chrysler’s Harm, and thus its standing to maintain this proceeding. The district court
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`in the Federal Action conclusively resolved the issue of likelihood of confusion in Chrysler’s
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`favor, finding it is “not possible” for Unitek to pursue Chrysler for trademark infringement
`
`regarding its use of the ECODIESEL mark. Therefore, the sole basis for refusing Chrysler’s
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`application to register its Mark was removed, and with it, Chrysler’s sole claim of Harm.
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`Nevertheless, Chrysler has continued to claim (in its Opposition and Discovery Responses) that
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`future confusion may result See, e.g.,
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`Response to Interrogatory No. 2. Because Chrysler has identified such potential confusion as a
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`source of Harm,
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`it has the burden of providing any supporting evidence and the duty to
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`acknowledge if there is none. Chrysler should be compelled to respond to this Interrogatory.
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`B.
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`DOCUMENT REQUESTS No. 1, 4-6, 8-9, AND 11-12 SEEK INFORMATION
`REGARDING CHRYSLER’S CLAIMED HARM AND THEREFORE ARE HIGHLY
`RELEVANT
`
`0 Request No. 1: Produce all documents identified in response to Unitek’s First Set of
`Interrogatories above, all documents upon which you relied in answering those
`Interrogatories, and all documents that relate to your responses to those
`Interrogatories.
`
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`Chrysler objected on the grounds that
`
`the Request
`
`is
`
`(I) “o