Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

gov
ESTTA Tracking number: ESTTA315206
Filing date: 11/04/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91178758
Party Plaintiff
McDonald's Corporation
Correspondence Robert E. Browne
Address Neal Gerber & Eisenberg
2 North LaSalle Street Suite 2200
Chicago, IL 60605
UNITED STATES
rbrowne@ngelaw.com, mkelber@ngelaw.com, jcullis@ngelaw.com,
ljames@ngelaw.com, ipdocket@ngelaw.com
Submission Reply in Support of Motion
Filer's Name Lawrence E. James, Jr.
Filer's e-mail rbrowne@ngelaw.com, mkelber@ngelaw.com, jcullis@ngelaw.com,
ljames@ngelaw.com, mturner@ngelaw.com, lbailey@ngelaw.com
Signature /Lawrence E. James, Jr./
Date 11/04/2009
Attachments Reply_in_Support_of_Rule_56_f__Motion.pdf ( 17 pages )(232649 bytes )
 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

McDONALD’S CORPORATION, )
) Opposition No. 91178758
Opposer, )
)
v. ) Mark: McSWEET
) Application S/N: 78/947,247
McSWEET, LLC, ) Filed: August 8, 2006
) Published: April 10, 2007
Applicant. )

OPPOSER'S REPLY IN SUPPORT OF ITS RULE 56(F) MOTION FOR DISCOVERY

Applicant’s Response to Opposer’s Motion for Discovery (“Response”) unjustifiably attempts to

deny Opposer the discovery necessary for Opposer to fully and fairly respond to Applicant’s Cross

Motion for Summary Judgment on fraud (“Cross Motion”). Applicant’s argument that the discovery

sought by Opposer “can be found in materials already provided” is demonstrably false, and its argument

that Opposer and the Board should simply be forced to rely on the limited, conclusory statements made

by Applicant’s counsel is contrary to the Federal Rules of Civil Procedure and the Rules of the Board.

I. Opposer’s Motion Meets the Requirements for 56(f) Discovery

Opposer is entitled to the discovery necessary to respond to Applicant’s Cross Motion. Pursuant

to Federal Rule 56(f)(2), “[i]f a party opposing the motion shows by affidavit that, for specified reasons, it

cannot present facts essential to justify its opposition, the court may . . . (2) order a continuance to enable

affidavits to be obtained, depositions to be taken, or other discovery to be undertaken.” Opryland USA v.

The Great Am. Music Show, 970 F.2d 847, 852-53 (Fed. Cir. 1992)(“if a party has demonstrated a need

for discovery which is reasonably directed to facts essential to its opposition to the motion for summary

judgment, discovery will be permitted, especially if the information sought is largely within the control of

the party moving for summary judgment”). As set forth in Opposer’s Motion and the Declaration of John

Cullis, Opposer needs additional discovery specifically directed to the actions and intent of Applicant’s

counsel’s in the filing of and delay in correcting the faulty designation of goods, facts which are

predominantly within the control of Applicant and its counsel, to respond to the Cross Motion.
 Applicant’s vague assertion that Opposer “has had many months to conduct discovery” related to

the fraud claim is disingenuous in light of the fact that this proceeding has been suspended for various

reasons for much of the time period since Opposer discovered the events that gave rise to the fraud claim.

From March 26, 2009, when Opposer confirmed the falsity of the identification of goods during the

30(b)(6) deposition of Applicant, to April 10, 2009, when Opposer filed its Motion for Summary

Judgment (“MSJ”), effectively suspending the proceeding, discovery was only open for fifteen days.

Similarly, the proceeding was suspended for much of 2008 due to a Motion to Compel filed by Applicant.

Opposer has not had any opportunity to take discovery on Ms. Hendricks’s Affidavit attesting to her lack

of deceptive intent and the Firm’s billing invoices attached thereto, which were filed after Opposer had

filed its MSJ and the proceeding had been suspended and were never produced to Opposer.

Applicant’s cite to Ron Cauldwell Jewelry v. Clothestime Clothes, 63 USPQ2d 2009 n.8 (TTAB

2002) fails to support its claim that Opposer’s filing of its motion for summary judgment should preclude

it from 56(f) discovery. In that case, discovery was denied where the party responding to a motion for

summary judgment filed both a substantive response on the merits and a request for 56(f) discovery—a

tactic that is prohibited. Id. Unlike the party in Cauldwell, Opposer has not filed a response to the Cross

Motion on the merits, but has only filed its Motion for 56(f) discovery. Thus, Cauldwell is inapposite.

Furthermore, Opposer’s filing of its MSJ does not preclude it from seeking additional discovery

to respond to Applicant’s Cross Motion. Opposer is entitled to respond to and rebut the evidence

presented by Applicant’s Cross Motion and is not limited to the evidence in its own prior MSJ.

Applicant’s reliance on Ms. Hendricks’ Affidavit and the records attached thereto, which were never

produced to Opposer, as a basis for its Cross Motion, has created a need for Opposer to take discovery on

the issues raised by those documents. While circumstances where a party that initially moved for

summary judgment would need additional discovery to respond to a cross motion for summary judgment

are likely to be rare, such a circumstance is presented here, where intent is at issue and where the In re

Bose decision changed the evidentiary standard for proving fraud after Opposer filed its motion for

summary judgment. Therefore, given the change in the evidentiary standard for proving fraud and that

2
Applicant is asking the Board to find no fraud occurred, Opposer should be granted additional discovery.

Applicant also misconstrues the effect of the In re Bose decision on the evidentiary standard for

proving fraud, claiming that “the requirement to establish intent is not new” and that “the Board has

consistently and correctly acknowledged that there is a material legal distinction between a false

representation and a fraudulent one.” (Response, p. 5) While those statements are correct, it is incorrect

deny that prior to In re Bose, a party’s deceptive intent was presumed if a party knew or should have

known that its statement was false or that In re Bose removed that presumption. The change in the law,

upon which Opposer had reasonably relied, entitles Opposer to take discovery on Applicant’s counsel’s

intent in amending its identification of goods and its failure to correct the misidentification of goods, as

does Applicant’s offering of its counsel’s testimony in its Cross Motion.

II. Opposer Has Specifically Identified Topics for which it Needs Additional Discovery

In addition to having demonstrated a need for additional discovery regarding Applicant’s

counsel’s intent, Opposer’s Motion for 56(f) Discovery and Declaration identified fourteen specific topics

(a)-(m) for additional discovery. A copy of the Declaration listing topics (a)-(m) is attached hereto as

Exhibit A. Applicant does not dispute that Opposer has sufficiently identified these topics. Instead,

Applicant argues in a conclusory manner that its amendment to include two items that were not actually

used as of the filing date occurred “mistakenly” as an “unintentional oversight.” Apparently, Applicant

expects Opposer and the Board to simply accept this conclusory statement of Applicant’s counsel.

However, the facts tend to show that the First Amendment was not merely an “unintentional oversight,”

specifically: (1) Applicant’s counsel filed the Amendment without having its client sign a new

declaration; (2) Applicant and its counsel knew that two of the items in the identification were not

actually in use as of the filing date of the Application; (3) Applicant’s counsel failed to amend the

identification of goods for over a year; and (4) Applicant’s counsel only moved to correct the improper

identification of goods the same day that Opposer confronted Applicant about the issue during the

30(b)(6) deposition. Such facts tend to show that the First Amendment was hardly an “oversight.”

Whether the First Amendment was “unintentional” or intentional is exactly the factual issue in dispute.

3
Neither the Board nor Opposer is required to simply rely on Applicant’s counsel’s conclusory statement.

Opposer should be entitled to take discovery on this matter.1

III. Opposer Does Not Already Have Access to the Information that it Seeks

Applicant next argues that the discovery sought by Opposer “can be found in materials already

provided.” That assertion is simply false. An examination of Applicant’s failed attempt to map the

“materials already provided” to the specific information sought by Opposer shows its falsity.

A. Applicant does not Claim that Opposer Has Information for Topics (c) and (d)

Despite Applicant’s blanket claim that the information sought by Opposer can be found in

materials already provided, Applicant does not explain where the prior materials provide the information

sought by topic (c) or topic (d). Similarly, Applicant does not dispute the relevance of topics (c) and (d),

which relate to whether the improper inclusion of certain goods in the First Amendment was intentional.

Thus, Applicant concedes that these are proper areas for additional discovery.

B. Applicant’s First Amendment does not Provide the Information for Topic (a)

Contrary to Applicant’s claim that the information responsive to topic (a) (the circumstances

surrounding the creation of the First Amendment), can be found in Applicant’s First Amendment, which

alleges that “McSweet . . . timely moves to amend its application for registration . . . to raise the

affirmative defense . . . that defendant is at least entitled to a registration with a particular restriction,” that

statement does not satisfy the scope of Opposer’s inquiry. The “circumstances surrounding” include at

least who suggested drafting it; who actually drafted it; when Applicant’s counsel drafted it; what

Applicant’s counsel did, if anything, to verify the use of the goods identified in the amendment; whether

Applicant’s counsel conferred with Applicant prior to drafting and filing the First Amendment; and

whether there were any other reasons for drafting it aside from the reason stated in Applicant’s First

Amendment. None of this information is in Applicant’s First Amendment.

1
Applicant also argues that its Second Motion to Amend somehow cured its fraud or gives rise to a presumption of a
lack of fraudulent intent—an argument rehashed from its Response to Opposer’s MSJ. That argument is only
tangentially related to the present motion, and appears designed to distract rather than inform the Board on the
pending issue. This issue is fully briefed in Opposer’s MSJ and reply brief in support thereof.

4
 C. Ms. Hendricks’ Affidavit does not Provide the Information for Topics (b), (e), and (f)

Contrary to Applicant’s assertion, Ms. Hendricks’ Affidavit does not provide the information

sought by topics (b), (e) and (f). Ms. Hendricks’ Affidavit only vaguely refers to when Ms. Hendricks

became aware that “the MCSWEET application, as amended, had not addressed dates of first use . . .

[and] [a]s [she] assembled information, it became apparent that an additional amendment of the

application was needed.” (Hendricks Decl. ¶5) It does not disclose who first identified that the description

was improper (topic (e)), but only when Ms. Hendricks became aware that it was improper. Indeed, at

least three current or former attorneys at Hendricks & Lewis PLLC, Ms. Hendricks, Lori Benavides and

Stacia Lay, have been identified as having worked on this matter for Applicant and Yale Lewis of that

firm has represented that he was aware of the facts of this case. Similarly, Ms. Hendricks’ Affidavit only

vaguely identifies when Ms. Hendricks became aware that the description was improper, not when any of

Applicant’s counsel became aware of it. Likewise, Ms. Hendricks’ Affidavit only identifies that “[a]s

[she] assembled information, it became apparent that an additional amendment of the application was

needed” but does not specify when any of Applicant’s other attorneys first considered correcting the

description of goods in the First Amendment (topic (f)). Moreover, Ms. Hendricks’ Affidavit does not

specify whether that was the first time that she considered correcting the description of goods.

D. Ms. Hendricks’ Affidavit does not provide the Information for Topics (g) and (h)

Contrary to Applicant’s assertion, Ms. Hendricks’ Affidavit does not provide the information

sought by topics (g) and (h). First, Ms. Hendricks’ Affidavit does not indicate whether she or any of

Applicant’s other counsel conferred with Applicant regarding the Second Amendment prior to filing it,

but only states that Ms. Hendricks did not speak with Applicant on the day of Applicant’s 30(b)(6)

deposition. Second, Ms. Hendricks’ Affidavit only states that she did not confer with “Mr. McCaslin or

Ms. Benavides regarding the questions in the deposition during the deposition taking place on March 26,

2009, prior to filing Applicant’s Second Motion to Amend,” but it fails to specify whether any of

Applicant’s other attorneys spoke with Mr. McCaslin or Ms. Benavides. It also fails to state whether Ms.

Hendricks spoke with Ms. Benavides or Mr. McCaslin regarding matters other than “the questions in the

5
deposition,” for example, it fails to foreclose the possibility that Ms. Hendricks spoke with Ms. Benavides

regarding the need to file the Second Motion to Amend.

E. Ms. Hendricks’ Affidavit does not provide the Information for Topics (j) or (n)

Ms. Hendricks’ Affidavit also does not provide information for topic (j)(the length of time

between when Applicant's counsel first became aware of the falsity of the description of goods in the First

Amendment and when Applicant filed the Second Amendment) because it only discloses when Ms.

Hendricks purportedly first became aware of the falsity of the description of goods, not when any of

Applicant’s attorneys became so aware. Ms. Hendricks’ Affidavit is entirely silent on topic (n)(why

Applicant's counsel did not correct the false identification of goods until after the 30(b)(6) deposition of

Applicant). Applicant asserts that the requested information can be found in the portions of Ms.

Hendricks’ Affidavit that state when Ms. Hendricks met with Stacia Lay, when she requested that Ms.

Lay prepare the Second Motion to Amend, when it was prepared and when it was filed. However, those

statements only identify the time frame when Applicant’s counsel prepared the Second Motion to Amend,

not why it was prepared or why it was filed at the times that it was, which is the focus of topic (n).

F. The Second Motion to Amend does not Address Topics (k), (l) or (m)

Applicant claims that the portions of its Second Motion to Amend, which state that the First

Amendment was an “inadvertent oversight” and that Applicant included giardiniera and green beans in

the First Amendment “mistakenly,” provides the information sought by topic (k)(why Applicant’s counsel

included giardiniera and green beans in the description of goods in the First Amendment.) However, the

two conclusory statements by Applicant’s counsel fail to provide sufficient information on this topic,

including who made the purported “mistake” or “oversight,” whether Applicant’s counsel and/or

Applicant understood the applicable law when it filed the First Amendment, whether Applicant’s counsel

and/or Applicant were aware of whether the mark had not been used with giardiniera and green beans

prior to the Application filing date, who was responsible for verifying that information, and whether there

were any other reasons why the goods not in use were included in the First Amendment.

Applicant also claims that information responsive to topics (l) and (m) has been provided but fails

6
to identify any such information. Instead, Applicant states in its Response Brief to Opposer’s 56(f)

Motion that “[a]n application subject to an opposition may be amended in substance with the consent of

the other party to the proceeding and approval by the Board or upon motion granted by the Board” and

that it “did not need to submit an amendment signed by applicant or seek Opposer’s consent to amend.”

While that may be true, it fails to provide the information sought, namely why did Applicant file the

motion without seeking consent (topic (m)) and why did Applicant rely on documents signed solely by

Ms. Hendricks—a decision which placed the responsibility for verifying the amendment on Applicant’s

counsel—rather than have Applicant sign a declaration verifying the amended identification of goods.

G. The “Materials Already Provided” are Conclusory, Limited and One-Sided

Applicant’s argument that Opposer already has access to the information in the “materials already

provided” also fails because such materials consist of the limited, conclusory statements of Applicant’s

counsel and documents hand-picked by Applicant’s counsel in support of its filings. Under the Federal

Rules and the Rules of Board, Opposer is entitled to more than just a limited offering of facts hand-picked

by Applicant. Neither Opposer nor the Board is required to rely solely on the statements of Applicant’s

counsel without further inquiry into the facts.

IV. The Dates Sought by Opposer Are Relevant to Show Applicant’s Counsel’s Intent

Applicant also opposes providing the dates sought by Opposer, erroneously claiming that “there

are no relevant issues” about the dates pertaining to the timing of Applicant’s filing of the First

Amendment and Second Motion to Amend “[b]ecause Applicant timely amended the application during

the inter partes proceeding.” The dates sought by Opposer will show when Applicant knew that its First

Amendment identified goods that had not been used as of the filing date, when Applicant became aware

of the need to correct the First Amendment, when Applicant first took actions to correct the First

Amendment, and when Applicant filed the Second Amendment—all of which are relevant to Applicant’s

counsel’s intent. For example, if Applicant was aware that the First Amendment contained goods that

were not in use as of the application filing date and/or if Applicant knew that the identification of goods

needed to be corrected, but failed to act for over a year, it would show deceptive intent.

7
V. Opposer is Entitled to Take the Depositions of Applicant’s Counsel

Federal Rule of Civil Procedure 26(b)(3) clearly contemplates discovery from attorneys. United

Phosphorus v. Midland Fumigants, 164 F.R.D. 245, 248 (D. Kan. 1995). Generally, when determining

whether an attorney may be deposed, courts consider the need to depose the lawyer, the lawyer’s role in

connection with the matter on which discovery is sought and in relation to the pending litigation, the risk

of encountering privilege and work-product issues, and the extent of discovery already connected. In re

Friedman, 350 F.3d 65, 72 (2d Cir. 2003). The Eighth Circuit’s test in Shelton v. Am. Motors Corp., 805

F.2d 1323 (8th Cir. 1986), which requires a party to make a multi-part showing before deposing opposing

counsel, has been rejected in other circuits in favor of a “flexible approach” more consistent with Rule 26.

See Friedman, at 71-72; Younger Mfg. Co. v. Kaenon, Inc., 247 F.R.D. 586, 588 (D.C.Cal. 2007).

Regardless of the circuit split, in cases such as this one, where the attorney’s conduct itself is the

basis of a claim or defense—and in this case the Cross Motion—the opposing party has a right to the

attorney’s testimony. Johnston Dev. Group, Inc. v. Carpenters Local Union No. 1578, 130 F.R.D. 348,

352 (D.N.J. 1990); Cascone v. The Niles Home for Children, 897 F.Supp. 1263, 1267 (W.D. Mo. 1995).

Here, the conduct of Applicant’s counsel is at issue. Counsel signed and filed the First Amendment

containing the incorrect identification of goods; waited over a year to correct the false identification of

goods; and drafted, signed and filed the Second Motion to Amend, purportedly without discussing it with

her client. Coincidentally, counsel must have decided to file the Second Motion to Amend on the same

day as the 30(b)(6) deposition of Applicant during which Opposer confronted Applicant on the falsity of

the identification of goods in the First Amendment. Thus, the fraudulent acts were all committed by

Applicant’s counsel, which entitles Opposer to take the depositions of Applicant’s counsel.2

However, even under the Shelton test, Opposer should be permitted to take the depositions of

Applicant’s counsel. First, as described above and stated in the Declaration of John Cullis at para. 8,

Opposer does not have access to the information that it seeks because that information is predominantly in

2
Anticipating that the reliance on counsel’s testimony would violate 37 C.F.R. 10.63, Opposer filed a Petition to
Disqualify. The Board denied that Petition as premature because it might opt to ignore the Hendricks Affidavit.

8
the possession of Applicant’s counsel, and therefore, there is no other witness who could provide that

information. Indeed, Applicant has not identified any other witness who could provide the information.

Applicant’s suggestion that written interrogatories would be more “cost effective” is unlikely to provide

the information sought due to the nature of the interrogatory process. Unlike a deposition, which enables

the party taking the deposition to respond to a witnesses answers and ask follow-up questions, written

interrogatories do not permit such further probing examination. See In re Friedman, 350 F.3d at 69, citing

Mill-Run Tours, Inc. v. Khashoggi, 124 F.R.D. 547, 549-50 (S.D.N.Y. 1989)(listing “several reasons why

oral deposition should not be routinely replaced by written questions,” including the need for follow-up,

observation of a prospective witness’s demeanor, and avoidance of receiving pre-prepared answers so

carefully tailored that they are likely to generate additional discovery disputes.) Indeed, since Applicant

has already argued that the minimal information that it has provided in the Hendricks Affidavit provides

sufficient information, Opposer has reason to believe that it would receive only limited, incomplete

answers to written interrogatories, resulting in prolonged motion practice further delaying this proceeding.

Thus, written interrogatories are unlikely to provide the requested discovery in a cost effective manner.

Second, all of the information sought by Opposer is relevant, certain information is nonprivileged

and Opposer is entitled to the privileged information because privilege has been waived or the crime-

fraud exception applies. As discussed above, all of the information sought by Opposer is relevant to

Applicant’s counsel’s intent in filing the First Amendment and/or its intent in waiting over a year and

until it was confronted by Opposer to file the Second Motion to Amend. Some of that information relates

to the dates when Applicant’s counsel took certain actions or was aware of certain facts and what

knowledge Applicant had regarding the law and facts relating to Applicant’s use of the mark on certain

goods. Such information does not disclose the mental impressions of the attorney, nor would it disclose

the subject matter of attorney-client communications, and therefore it is not privileged as attorney-client

communications or under the work product doctrine. Thus, Opposer is entitled to that information.

Opposer also seeks information concerning why Applicant’s counsel took certain actions. While

certain information may have been privileged, Applicant has waived privilege by relying on its counsel’s

9
testimony that the filing of the First Amendment was an “unintentional oversight.” Privilege may not be

used as both a sword and a shield. Privilege is waived “where a party injects into litigation an issue that

requires testimony from its attorneys or testimony concerning the reasonableness of its attorneys’

conduct.” GAB Bus. Servs., Inc. v. Syndicate, 809 F.2d 755, 762 (11th Cir. 1987); see also, In re Bairnco

Corp. Sec. Litig., 148 F.R.D. 91, 101 (S.D.N.Y. 1993)(“To permit [defendant] to offer the fact of

counsel’s conclusions where such conclusions serve [defendant’s] purposes without permitting plaintiffs

access to all the communications between counsel and [defendant] would prejudice plaintiffs.”) Thus,

here, where Applicant has sought to rely on the testimony of its attorneys regarding their intent in filing

the First Amendment, Applicant has waived its right to assert privilege on such matters.

In addition, Opposer is entitled to such information under the crime-fraud exception which

permits access to information that would otherwise be privileged where there is reasonable basis to

suspect the perpetration of a fraud and the materials sought were used to commit the fraud. In re Sealed

Case, 676 F.2d 793, 812 (D.C. Cir. 1982)(“an attorney’s opinion work product cannot be privileged if the

work was performed in furtherance of a crime, fraud, or other type of misconduct fundamentally

inconsistent with the basic premises of the adversary system.”); Bairnco, at 100. Here, the information

about Applicant’s counsel’s intent directly relates to its fraud and therefore is not protected by privilege.

Third, for the reasons set forth in Opposer’s Motion and the Declaration of John Cullis, the

information related to Applicant’s counsel’s intent is crucial to the development of its fraud claim. Thus,

even under the Shelton test, Opposer is entitled to take the depositions of Applicant’s counsel.

WHEREFORE, the Board should grant Opposer’s Motion or deny Applicant’s Cross Motion.

Respectfully submitted,

Date: November 4, 2009 McDONALD’S CORPORATION

By: /Lawrence E. James, Jr./

NEAL, GERBER & EISENBERG, LLP One of the Attorneys for Opposer
2 N. LaSalle Street, Suite 1700 Robert E. Browne
Chicago, IL 60602 Michael G. Kelber
(312)269-8000 John A. Cullis
Lawrence E. James, Jr.
Michael R. Turner

10
 CERTIFICATE OF SERVICE

I, Lawrence E. James, Jr., an attorney state that I served a copy of the foregoing Opposer’s Reply

In Support of Its Rule 56(f) Motion for Discovery To Respond To Applicant’s Cross Motion For

Summary Judgment, via email and First Class U.S. mail, postage pre-paid, upon:

Katherine Hendricks, Esq.

HENDRICKS & LEWIS PLLC
901 Fifth Ave., Ste 4100
Seattle, WA 98164

on this 4th day of November, 2009.

/Lawrence E. James, Jr./

Lawrence E. James, Jr.

NGEDOCS: 1666775.2

11