TTAB-C-10-Motion-to-Compel.pdf - DBT Defense Fund

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

ESTTA Tracking number: ESTTA820086

Filing date: 05/10/2017

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91228489

Party DefendantDr. Marsha Linehan

CorrespondenceAddress

JEFFREY A NELSONCAIRNCROSS & HEMPELMANN524 2ND AVENUE SUITE 500SEATTLE, WA 98104-2323UNITED [email protected], [email protected], [email protected]

Submission Motion to Compel Discovery

Filer's Name Jeffrey A Nelson

Filer's e-mail [email protected], [email protected]

Signature /Jeffrey A Nelson/

Date 05/10/2017

Attachments Linehan - Applicant-Respondent Motion to Compel.pdf(1498084 bytes )

{03320200.RTF;1 } 1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Mental Health Systems, P.C., Lane

Pederson & Associates, LLC, Lane

Pederson, individually, and Cognitive and

Behavioral Specialties, d/b/a Dialectical

Behavior Therapy National Certification

and Accreditation Association,

Opposers,

v.

Dr. Marsha Linehan,

Applicant.

Opposition No.: 91228489

Application Serial No.: 86/539349

Mark: Dialectical Behavior Therapy

Mental Health Systems, P.C., Lane

Pederson & Associates, LLC, Lane

Pederson, individually, and Cognitive and

Behavioral Specialties, d/b/a Dialectical

Behavior Therapy National Certification

and Accreditation Association,

Petitioners,

v.

Marsha M. Linehan,

Respondent.

Cancellation No.: 92064167

Registration No.: 4,204,315

Registration Date: September 11, 2012

Mark: DBT

APPLICANT/RESPONDENT’S MOTION TO COMPEL

{03320200.RTF;1 } 2

Pursuant to 37 C.F.R. § 2.120, Rule 26(c) of the Federal Rules of Civil Procedure, and

Section 523 of the Trademark Trial and Appeal Board Manual of Procedure,

Applicant/Respondent (“Respondent”), through its counsel Cairncross & Hempelmann, hereby

moves the Board to compel Opposers/Petitioners (“Petitioners”) to respond to those interrogatory

requests noted below.

Legal Background

The Board may compel a party to comply with discovery requests propounded by the

other party. 37 C.F.R. § 2.120(e); TBMP § 523.01. The motion to compel must be filed prior to

the deadline for pretrial disclosures. 37 C.F.R. § 2.120(f); TBMP § 523.03. The moving party's

motion must contain a copy of the discovery requests and answers or objections made to those

requests. 37 C.F.R. § 2.120(f); TBMP § 523.02. The moving party also must assert that it has

made a good-faith effort to resolve the discovery dispute with the other party by conference or

correspondence. Id.

Each of these requirements is met here. The discovery period has not yet closed and

Petitioners recently sought an extension of the discovery and trial deadlines, which Respondent

did not oppose, so this motion is timely filed. Attached hereto are copies of the relevant

discovery requests and responses: Respondent’s interrogatories, Petitioners’ responses and

objections, and Petitioners’ supplemental responses. Finally, Respondent has made a good-faith

effort to resolve these discovery disputes with Petitioners, but Petitioners are unwilling to

provide the relevant information Respondent has sought. Respondent includes copies of the

relevant correspondence with Petitioners’ counsel, as summarized below.

History of Relevant Correspondence

Respondent served its First Set of Interrogatories ("Interrogatories"), among other

{03320200.RTF;1 } 3

discovery requests, on February 17, 2017.1 See Exhibit A. Petitioners’ responses to the

Interrogatories were received by Respondent’s counsel on Monday, March 20, 2017. Exhibit B.

On April 7, 2017, during a telephone conference, Respondent’s counsel discussed with

Petitioners’ counsel his concerns with Petitioners’ discovery responses. Respondent’s counsel

also advised that a message outlining the deficiencies would be sent later that day. And, in fact, a

few hours later on April 7, Respondent’s counsel did send such an email to Petitioners’ counsel

setting forth each response that Respondent found lacking and reasons for the objections. See

Exhibit C. On April 12, Petitioners’ counsel responded to the identified deficiencies explaining

their position. The April 12 email (1) relies heavily on Rule 33(d) for their failure to provide

written responses and instead simply pointing to registrations and websites and (2) claims

ignorance as to which rules specified the relevancy of such information as Petitioners’ use of its

marks at issue and Petitioners’ revenue and marketing expense information. See Exhibit D. The

next day, Respondent’s counsel responded via email and maintained the objections to the

sufficiency of Petitioners’ responses. See Exhibit E. In addition, in response to Petitioners’

counsel’s asserted ignorance of the Rules, Respondent’s counsel directed Petitioners’ counsel to

certain provisions of TBMP 414 that are explicitly applicable to the Interrogatories.

Curiously, in a reply brief in support of Petitioners’ Motion to Reset Deadlines filed on

April 28, rather than in correspondence directly to Respondent’s counsel, Petitioners’ counsel

advised that supplemental responses would be served at some unspecified future date. On May 3,

Petitioners’ counsel sent an email to Respondent’s counsel suggesting that supplemental

responses would be delivered on May 5 or “early next week.” See Exhibit F. Finally, counsel for

Respondent received Petitioners’ supplemental responses on Monday, May 8 (See Exhibit G),

1 The parties also disagree regarding the sufficiency of Petitoiner’s responses to other discovery requests, but

Respondent does not address those issues in the instant motion.

{03320200.RTF;1 } 4

more than a month after the deficiencies were set forth in a message to Petitioners’ counsel and

more than 11 weeks after the Interrogatories were properly served.

However, Petitioners’ supplemental responses, at least as to the Interrogatories

enumerated below, are effectively identical to the informal responses Petitioners’ counsel

provided via email on April 12. Respondent’s counsel already indicated that these responses did

not cure the deficiencies, which were clearly and concisely set forth in Respondent’s counsel’s

email of April 7. In Petitioners’ reply brief and again in their counsel’s email of May 3,

Petitioners stated that supplemental responses would be provided, which led Respondent’s

counsel to believe that those responses would be substantially different than the information

received informally in Petitioners’ counsel’s email of April 12 (and objected to the next day).

Rather than address the concerns raised by Respondent’s counsel on April 7 or revise the

responses in light of Respondent’s continued objection from April 13, Petitioners simply

reiterated the responses in a formal set of “supplemental responses.” Notably, Petitioners’

supplemental responses did not address the revenue and advertising information Respondent

requested, which are specifically deemed relevant by provisions of TBMP 414 that were cited to

Petitioners’ counsel. Since Respondent had already objected to the sufficiency of the

information in the April 12 email, Petitioners had to have known that sending that exact same

information in a more formal document would not address Respondent’s concerns. The net result

of Petitioners’ April 12 email followed by the May 8 supplemental responses was merely to

delay meaningful discovery by a month without effectively addressing Respondent’s concerns.

As described above, Respondent’s counsel attempted to address the outstanding issues

directly with Petitioners’ counsel via telephone call and email correspondence. But Petitioners’

response to Respondent’s concerns was to provide the same insufficient information twice, a

{03320200.RTF;1 } 5

month apart. Even after Respondent’s counsel cited specific provisions of the TBMP supporting

the objections, Petitioners failed to provide the relevant information.

Petitioners have made clear their position with respect to the Interrogatories listed herein.

Their unwillingness to provide relevant, responsive information leaves Respondent unable to

properly defend its application and registration or pursue its claims against Petitioners’ Marks.

After multiple objections from Respondent and two failed attempts by Petitioners to address the

deficiencies with its responses to Respondent’s Interrogatories, Respondent seeks the Board’s

assistance in obtaining the information set forth in the Interrogatories identified below.

Argument

A motion to compel discovery responses should be granted by the Board where the

moving party demonstrates that the non-moving party has failed to fully respond to properly

served discovery requests. 37 C.F.R. § 2.120(e); TBMP § 523.01. See, No Fear, Inc. v. Rule, 54

USPQ2d 1551 (TTAB 2000).

Moreover, several times Petitioners relies on Rule 33(d) to direct Respondent to

registrations available at the USPTO database, websites (its own and those of third party’s), and

other alleged “business records.” However, at no time did Petitioners satisfy the requirements for

invoking Rule 33(d) as set forth in No Fear, Inc. v Rule, 54 USPQ2d 1551 (TTAB 2000). To

invoke Rule 33(d), a responding party must: (1) identify documents which it knows contain

responsive information, (2) establish that providing written responses would impose a significant

burden on itself, and (3) not place a greater burden on the receiving party than the burden on

itself when searching through and inspecting the records. Id.

Respondent contends that none of those requirements have been met here. Concluding

otherwise would require a finding that Petitioners’ adequately identified “business records” by

{03320200.RTF;1 } 6

identifying trademark registration numbers and URL addresses for websites. It would also

require a finding that the burden of locating the relevant information from such sources would

not be greater on Respondent than Petitioners. Even if those two elements were met, and

Respondent believes they are not, Petitioners clearly have not established that providing written

responses imposes any burden at all, let alone a significant one. Thus, any reliance by Petitioners

on Rule 33(d) in the responses or supplemental responses is without merit.

As detailed below, Petitioners failed to sufficiently respond to several of Respondent’s

Interrogatories. Since the requirements for a motion to compel have been met, Respondent

respectfully requests that the Board order responses to each Interrogatory as follows:

Objections to Specific Interrogatories

Interrogatory No. 3: Identify the date on which each Petitioner first became aware of Dialectical

Behavior Therapy services, describe the facts and circumstances surrounding each Petitioner’s

first awareness of Dialectical Behavior Therapy services and identify all documents related

thereto.

ANSWER: Dr. Pederson first became aware of dialectical behavior therapy in a graduate school

course on cognitive behavioral therapy by reading the textbook Cognitive-Behavioral Treatment

of Borderline Personality Disorder.

Supplemental Answer: Dr. Pederson responded to this interrogatory on behalf of Opposers. Dr.

Pederson received his doctorate in 2001. It is possible that Dr. Pederson first became aware of

dialectical behavior therapy as an undergraduate, although he did not document when he first

became aware of such general ideas and concepts.

Respondent’s objection. Petitioners consist of Lane Pederson and three entities. This

Interrogatory seeks discoverable information as to each of Petitioner’s knowledge of

Respondent’s use of her mark. Only one Petitioner provided any response.

{03320200.RTF;1 } 7

• Respondent moves the Board to compel each Petitioner, other than Lane Pederson,

to respond to this Interrogatory with the information requested.

Interrogatory No. 4: Identify all products and services which each Petitioner has offered or

distributed in association with Petitioner’s Marks.

ANSWER: See Registration Nos. 4,099,711 and 4,214,437.

Supplemental Answer: Cognitive and Behavioral Specialties, doing business as Dialectical

Behavior Therapy National Certification and Accreditation Association (“CBS”), is the sole

owner of the marks reflected in Registration Nos. 4,099,711 and 4,214,437, and the sole provider

of products and services under those marks. Pursuant to Rule 33(d) of the Federal Rules of Civil

Procedure (“Rule 33(d)”), CBS identified the registrations as business records from which Dr.

Linehan may obtain the information requested as readily as Petitioner could obtain it. The

registrations for the marks describe the goods and services provided by CBS with respect to each

mark, as follows:

DBTNCAA: Dialectical behavior therapy (DBT) services and dialectical behavior therapy

(DBT) programs

Dialectical Behavior Therapy National Certification and Accreditation Association:

Certification of dialectical behavior therapy (DBT) providers and accreditation of

dialectical behavior therapy (DBT) programs

Respondent’s objection: In reliance on Rule 33(d), Petitioners refer to two trademark registrations

and recited the description of services from those registrations without providing the full scope of

use information requested. Petitioners’ reliance on Rule 33(d) is inappropriate. This Interrogatory

seeks information regarding use of the marks by each Petitioner, not just a recitation of the

services for which those marks are registered.

{03320200.RTF;1 } 8

• Respondent moves the Board to compel each Petitioner to state affirmatively the full

scope of products or services offered or distributed in association with Petitioners’

Marks. If, as to any Petitioner, no such use have taken place, then it should so state.

Interrogatory No. 5: Identify the date on which each Petitioner first sold each of the products and

services identified in response to interrogatory number 4 above.

ANSWER: On or before March 1, 2011.

Supplemental Answer: CBS is the sole owner of the marks reflected in Registration Nos.

4,099,711 and 4,214,437, and the sole provider of products and services under those marks. CBS

has responded to Interrogatory No. 5 to the best of its knowledge at this time. Investigation and

discovery are continuing.

Respondent’s objection: Information regarding each Petitioner’s first use of marks at issue is

discoverable. TBMP 414(5).

• Respondent moves the Board to compel each Petitioner to state affirmatively the

date on which it first sold the products and services identified in response to

Interrogatory No. 4. If, as to any Petitioner, no such sales have taken place, then it

should so state.

Interrogatory No. 6: Identify the date on which each Petitioner first provided certification or

accreditation associated with each of Petitioners’ Marks.

ANSWER: On or before March 1, 2011.

Supplemental Answer: CBS is the sole owner of the marks reflected in Registration Nos.

4,099,711 and 4,214,437, and the sole provider of products and services under those marks. CBS

has responded to Interrogatory No. 6 to the best of its knowledge at this time. Investigation and

discovery are continuing.

{03320200.RTF;1 } 9

Respondent’s objection: Information regarding each Petitioner’s first use of marks at issue is

discoverable. TBMP 414(5).

• Respondent moves the Board to compel each Petitioner to state affirmatively the

date on which it first provided certification or accreditation services under

Petitioners’ Marks. If, as to any Petitioner, no such services have been provided,

then it should so state.

Interrogatory No. 7: Describe the actual and intended trade channels for each of Petitioners’

Goods and Services associated with each of Petitioners’ Marks.

ANSWER: See CBS’s website, https://www.dbtncaa.com.

Supplemental Answer: CBS is the sole owner of the marks reflected in Registration Nos.

4,099,711 and 4,214,437, and the sole provider of products and services under those marks.

CBS’s channels of trade include individuals who seek DBT certification and proponents of DBT

programs seeking accreditation.

Respondent’s objection: Reference to a website is not responsive to a request for a description of

each Petitioners’ actual and intended trade channels for the relevant goods and services.

Reference to Rule 33(d) is not appropriate in response to this Interrogatory.

• Respondent moves the Board to compel each Petitioner to respond to this

Interrogatory with a description of the information requested. If, as to any

Petitioner, no such trade channels exist, then it should so state.

Interrogatory No. 10: Identify the names of all individuals who have been certified under

Petitioners’ Marks.

ANSWER: Objection. This request is overly broad, unduly burdensome, and seeks information

{03320200.RTF;1 } 10

that is neither relevant nor proportional to the needs of these proceedings. Subject to objections,

for a current list, see https://www.dbtncaa.com/provider-registry/.

Supplemental Answer: See documents Bates Nos. MHS000075-202, served on Respondent’s

counsel, Jeff Nelson, on April 20, 2017.

Respondent’s objection: Reference to a website or documents under Rule 33(d) is not appropriate

in response to this Interrogatory. This Interrogatory is also not limited only to currently certified

individuals.

• Respondent moves the Board to compel each Petitioner to respond to this

Interrogatory with the information requested.

Interrogatory No. 13: State the total annual revenue received by each Petitioner as a result of the

sale of each of Petitioners’ Goods and Services associated with each of the Petitioners’ Marks for

each year since the date on which each Petitioner began using each of Petitioners’ Marks.

ANSWER: Objection. This request is overly broad, unduly burdensome, and seeks information

that is neither relevant nor proportional to the needs of these proceedings. In addition, the request

seeks the disclosure of confidential information.

Supplemental Answer: [None given].

Respondent’s objection. Annual revenue information is discoverable. TBMP 414(18).

Interrogatory No. 14: Identify the total monthly and annual amount spent by each Petitioner for

or in connection with the advertising or promotion of each of Petitioners’ Goods and Services

since the date on which each Petitioner began using each of the Petitioners’ Marks.

ANSWER: Objection. This request is overly broad, unduly burdensome, and seeks information

that is neither relevant nor proportional to the needs of these proceedings. In addition, the request

{03320200.RTF;1 } 11

seeks the disclosure of confidential information.

Supplemental Answer: [None given].

Respondent’s objection. Advertising information is discoverable. TBMP 414(18).

• Respondent moves the Board to compel each Petitioner to respond to this

Interrogatory with the information regarding advertising expenditures requested.

Interrogatory No. 21: Describe the standards which the Minnesota Department of Human Services

used to “certify” Petitioner Mental Health Systems, P.C., as such claim is made in paragraph 3 of

Petitioner’s Notice of Opposition.

ANSWER: See https://mn.gov/dhs/partners-and-providers/policies-procedures/adult-

mentalhealth/dialectical-behavior-therapy/dbt-certified-providers/.

Supplemental Answer: This request seeks information in the possession, custody, or control of

a third party, namely the Minnesota Department of Revenue (“DOR”). Petitioners specifically

identified the web page from the DOR’s web site from which Dr. Linehan may obtain the

information as readily as Petitioners could obtain it. The DOR’s web site provides the following

information with respect to certification standards: the program overview, policies and

procedures, libraries of forms and documents, and licensing, among other things.

Respondent’s objection: In the Notice of Opposition,2 Petitioners assert that Petitioner MHS is

certified by the Minnesota Department of Human Services. This Interrogatory seeks information

relevant to that allegation. Here again, reference to a website in reliance upon Rule 33(d) is not

appropriate and not responsive to a request for a description of the standards used to certify

Petitioner Mental Health Systems. This Petitioner allegedly completed the certification process

and must have information related to its alleged certification. Moreover, Respondent’s attempts to

2 Interrogatory No. 21 includes an incidental error by referring to paragraph No. 3 instead of paragraph No 2.

{03320200.RTF;1 } 12

visit the website referenced in Petitioners’ response resulted in a 404 Error page.

• Respondent moves the Board to compel Petitioners to respond to this Interrogatory

with a description of the information requested.

Request to Reset Deadlines

Respondent requests that the Board reset the remaining deadlines, beginning with a 90-

day discovery period as of the date of the Board’s order.

DATED May 10, 2017 CAIRNCROSS & HEMPELMANN

By: ____________

Jeffrey A. Nelson

524 2nd

Avenue, Suite 500

Seattle, WA 98104

Attorneys for Applicant/Respondent

CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing document was served upon counsel for

Opposers/Petitioners, Terese A. West, Moss & Barnett, on May 10, 2017, via email.

_______________

Jeffrey A. Nelson