Guthy-Renker Corporationv.Michael Boyd

Trademark Trial and Appeal Board

Nov 13, 2008

No. 91182999 (T.T.A.B. Nov. 13, 2008)

MBA Mailed: November 13, 2008

Opposition No. 91182999
Guthy-Renker Corporation

v.

Michael Boyd

Before Walters, Drost and Wellington, Administrative
Trademark Judges

By the Board:
Pursuant to the Board’s institution order of March 14,
2008, the parties were required to conduct a discovery
conference in this proceeding on or before May 23, 2008.
Trademark Rule 2.120(a)(1) and (a)(2). This case now comes
up for consideration of opposer’s motion for sanctions,
filed May 30, 2008, for applicant’s failure to communicate
with opposer to arrange a discovery conference or to
participate in the required discovery conference; and
applicant’s motion to dismiss as a sanction for opposer’s
alleged “bad faith” prosecution, or, in the alternative, for
lack of prosecution, filed September 27, 2008.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91182999
2
Applicant’s Motion to Dismiss
Over two months after opposer’s motion for sanctions
was fully briefed, and over three months after the Board
issued an order suspending this proceeding pending a
decision on opposer’s motion, applicant filed his motion to
dismiss as a sanction for opposer’s alleged bad faith
prosecution or lack of prosecution. In it, applicant argues
that he contacted opposer by e-mail on June 27, 2008, in an
attempt to schedule the discovery conference, but that
opposer did not substantively respond, despite promising to
do so.
Opposer “objected to,” or in the alternative, “moved to
strike,” applicant’s motion to dismiss, arguing that it was
either a prohibited surreply, and/or that it was
impermissibly filed after the Board’s suspension order of
June 16, 2008. Opposer does not, however, dispute that it
was unresponsive to applicant’s communication of June 27,
2008. In response, applicant does not dispute that his
motion is essentially a surreply, but contends that it is
“highly pertinent to the sanctions motion,” and thus that it
does not violate the suspension order.
Applicant’s cross-motion to dismiss is essentially a
surreply, which is not permitted, and, therefore, it has not
been considered. TBMP § 502.02(b) (2d ed. rev. 2004).
Parties may not couch a surreply as a new motion in order to
Opposition No. 91182999
3
avoid the prohibition on surreplies. Moreover, the motion
violates the Board’s suspension order of June 16, 2008, as
it relates to events which occurred well after those
addressed in opposer’s motion for sanctions, and thus could
not be “germane to” opposer’s motion. Trademark Rule
2.127(d). Even if we were to consider applicant’s motion on
its merits, there is no basis in this record for applicant’s
claim that opposer’s motion for sanctions constitutes “bad
faith prosecution.”
Opposer’s Motion for Sanctions
In its motion, opposer asserts that it “made a good-
faith effort to arrange a discovery conference with
Applicant’s Counsel of Record,” specifically attorney
Michael Kroll of Syosset, New York, who is identified as
counsel of record for applicant’s involved applications,
Serial Nos. 77199725 and 77200216. Opposer asserts that Mr.
Kroll failed to respond to two letters, sent on April 10 and
May 15, 2008, and a telephone message left on May 20, 2008,
through which opposer attempted to schedule the discovery
conference, and requests as a sanction “extending Opposer’s
discovery period by the number of days past the deadline of
May 23, 2008 until Applicant participates in a discovery
conference with Opposer …” (emphasis in original).
In his response to opposer’s motion, applicant claims
that he was not contacted by opposer “due to an apparent
Opposition No. 91182999
4
misunderstanding or miscommunication.” Applicant’s Response
to Opposer’s Motion for Sanctions p. 1. While applicant
does not explain or describe the “misunderstanding or
miscommunication,” he appears to argue that his attorney was
Edwin Schindler, not Mr. Kroll, and that opposer should have
contacted Mr. Schindler. Applicant further claims that “Mr.
Schindler is contacting counsel for Opposer and would expect
that counsel for the parties will confer during the week of
June 30, 2008, or such other mutually convenient time soon
thereafter.” Id. at 1-2. Applicant does not otherwise
address the failure to arrange for the discovery conference
prior to the deadline or substantively address opposer’s
motion for sanctions.
In its reply brief, opposer points out that Mr. Kroll
remains applicant’s attorney of record, despite applicant’s
filings referring to Mr. Schindler as his attorney; and
claims that it “received no notice that Mr. Schindler
claimed to be the attorney of record for this proceeding
until June 9, 2008, well after the Motion was filed and well
after the due date for the discovery conference.”1
According to opposer, “it is reasonable to infer” that even
if applicant had changed counsel, “Mr. Schindler and Mr.

1 While applicant’s answer includes a certificate of service
indicating that it was sent to opposer by e-mail and first-class
mail on April 23, 2008, opposer claims that it did not receive
the answer until June 9, 2008, and then only received it by an e-
mail sent on that date.
Opposition No. 91182999
5
Kroll would have communicated with each other regarding
Opposer’s correspondence pertaining to this matter.”
Applicant’s response to opposer’s motion, like
applicant’s answer to the notice of opposition, was signed
by Mr. Schindler.2 Apparently, applicant now asserts that
Mr. Schindler is not associated with Mr. Kroll, as Mr.
Schindler’s address is in Coram, New York. Mr. Schindler
signed applicant’s response even though: (1) Mr. Schindler
has not entered an appearance in this proceeding; and (2)
Mr. Kroll has not withdrawn as applicant’s counsel of
record.
As opposer points out, Mr. Kroll is applicant’s
attorney of record. TBMP § 117.03 (2d ed. rev. 2004).
Applicant has never revoked his authority. See TBMP §
116.01. Applicant has never appointed Mr. Schindler as his
counsel of record by either adding him to, or substituting
him for, Mr. Kroll. See TBMP § 114.03. Both the
applications and the answer herein list Mr. Kroll, with
contact information in Syosset, New York, as attorney of
record; however, the answer to the notice of opposition was
signed by Mr. Schindler. The only reasonable conclusion to

2 While applicant’s answer is signed by Mr. Schindler, it
provides contact information for Mr. Kroll at his Syosset, New
York address. Applicant’s response to opposer’s motion, on the
other hand, is signed by Mr. Schindler but does not identify Mr.
Kroll, and it lists an address and phone number in Coram, New
York.
Opposition No. 91182999
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draw from these facts is that Mr. Schindler is associated
with Mr. Kroll, the attorney of record.
Regardless of whether Mr. Schindler may have actually
contacted opposer’s counsel, it is proper for opposer’s
counsel to correspond with and contact applicant’s attorney
of record. It is the responsibility of applicant and his
attorney of record to enter in the application and
opposition proceeding any changes in representation and
correspondence address. Applicant’s failures in this regard
are not merely technical. Indeed, if applicant had complied
with the applicable rules, he would have facilitated
opposer’s efforts to schedule the conference, and perhaps
avoided unnecessary motions. Moreover, it is the equal
responsibility of both parties to ensure that a discovery
conference takes place by the assigned deadline. Trademark
Rules 2.120(a)(1) and (a)(2) and 2.120(g)(1). Applicant has
not demonstrated more than lackluster attempts at scheduling
and conducting the required conference.
The record also indicates that opposer had contact
information for both Mr. Kroll and Mr. Schindler either
prior to filing its motion for sanctions or shortly
thereafter and opposer admits that it had contact
information for Mr. Schindler by at least as early as June
9, 2008. In fact, even after Mr. Schindler finally, and
belatedly, contacted opposer, for some reason opposer did
Opposition No. 91182999
7
not respond, despite promising to do so. If opposer was
truly concerned with the merits of this proceeding and
having enough time for discovery, it should have at least
attempted to mitigate the prejudice it allegedly suffered as
a result of applicant’s delay. In other words, opposer is
not entirely blameless and could have conceivably
facilitated a resolution of the parties’ problems in
scheduling a discovery conference, including by requesting
the Board’s participation in the discovery conference,
Trademark Rule 2.120(a)(2), which may have eliminated the
need to file a motion. Therefore, we DENY opposer’s motion
for sanctions in the form of extending discovery for opposer
alone.
The Board has adopted the practice of discovery
conferences to avoid needless disputes and motions and to
facilitate a smooth and timely conclusion to Board
proceedings. Therefore, because of the parties’ inability
to effectively communicate in this proceeding to date, the
parties are hereby ordered as follows:
(1) No later than December 3, 2008, applicant shall
file with the Board, and serve by first-class mail on
opposer, an appointment of attorney in this proceeding,
indicating the name of counsel and a single address and
telephone number at which applicant’s appointed attorney may
be reached.
Opposition No. 91182999
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(2) If either party is amenable to service in this
proceeding by electronic transmission, it must so notify the
other party in writing by first class mail.3 In the absence
of such a notification, all service herein must be by first
class mail. The parties have not mutually agreed to anything
in this case, much less service by electronic transmission.
(3) The parties must hold the required discovery
conference on or before December 14, 2008, by which time
applicant’s counsel will have been identified. The Board
will not extend the time for the discovery conference,
absent extraordinary and meticulously detailed
circumstances.
Proceedings herein are resumed. Dates are reset as
follows:
Deadline for Identification of
Applicant’s Counsel December 3, 2008

Deadline for Discovery Conference December 14, 2008

Discovery Opens December 14, 2008

Initial Disclosures Due January 13, 2009

Expert Disclosures Due May 13, 2009

Discovery Closes June 12, 2009

Plaintiff's Pretrial Disclosures July 27, 2009

3 Applicant purportedly served his answer, opposition to
opposer’s motion for sanctions and reply brief in support of
applicant’s motion to dismiss by e-mail. This was improper,
because service by electronic transmission is only permitted
“when mutually agreed upon by the parties.” Trademark Rule
2.119(b)(6).
Opposition No. 91182999
9

Plaintiff's 30-day Trial Period Ends September 10, 2009

Defendant's Pretrial Disclosures September 25, 2009

Defendant's 30-day Trial Period Ends November 9, 2009

Plaintiff's Rebuttal Disclosures November 24, 2009

Plaintiff's 15-day Rebuttal Period Ends December 24, 2009

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:
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.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
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