Embed Size (px)
Citation preview
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA1088125
Filing date: 10/12/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 92064181
Party PlaintiffAndrew R. Flanders
CorrespondenceAddress
JEFFREY A. NELSONDAVIS WRIGHT TREMAINE LLP920 FIFTH AVENUE, SUITE 3300SEATTLE, WA 98104-1610UNITED STATESPrimary Email: [email protected] Email(s): [email protected], [email protected]
Submission Opposition/Response to Motion
Filer's Name Jeffrey A Nelson
Filer's email [email protected], [email protected]
Signature /Jeffrey A Nelson/
Date 10/12/2020
Attachments Flanders - DiMarzio - Response Brief to Motion to Extend.pdf(5282009 bytes )
1
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Andrew R. Flanders,
Petitioner,
v.
DiMarzio, Inc.,
Respondent.
Cancellation No.: 92064181
Registration No.: 1169205
Mark:
BRIEF IN RESPONSE TO MOTION TO EXTEND DISCOVERY
DiMarzio, Inc., (“DiMarzio” or “Respondent”) filed a motion seeking to extend the
discovery period in this proceeding for sixty (60) days (the “Motion”). Since prior to the filing of
the Motion, pending before the Board was Petitioner’s Motion for Sanctions, filed September 13,
2020, seeking cancellation of the Registration due to Respondent’s failure to comply with the
Board’s order of June 12, 2020 (the “Motion for Sanctions”). Petitioner, Andrew Flanders
(“Flanders” or “Petitioner”) hereby files this brief in response to the Motion.
It’s clear from the record that the Motion is nothing but more gamesmanship from
Respondent. The Motion does not set forth any good faith basis for an extension, nor an
acknowledgement of (let alone an explanation for) Respondent’s delay in taking action earlier in
the discovery period. Rather, the Motion paints only a sparse picture of alleged need for
additional time and Respondent’s failure to actively participate in discovery that have resulted in
the Motion. Thus, as set forth below, the Motion should be denied.
Respondent’s “Need” for Additional Time Is Due Entirely to Respondent’s Own Delay
In the Motion, Respondent states that an extension of time is necessary to complete
2
discovery due to “recently obtained” information that was allegedly received during the
deposition of Petitioner. In fact, however, Petitioner timely responded to Respondent’s latest set
of discovery requests on August 7, 2020. Included among Petitioner’s responses was the
transcript of an exchange with Wolfe Macleod via Facebook messenger.1 Respondent had this
document for 6 weeks before filing the Motion. The other information listed in the Motion was
requested by Respondent during the deposition or via email thereafter, not via discovery request.
To the extent that it is covered by an earlier discovery request, Petitioner has responded to all
outstanding discovery (including objections to the scope of several requests).
Discovery in this matter opened on August 10, 2017 (as reset following the Board’s
denial of Respondent’s motion to dismiss). The discovery period was open continuously for two
years from August 2017 until August 2019, when the proceedings were suspended pending
Respondent’s Motion to Quash. Respondent could have sought this information in that time.
Mr. Macleod was identified as an individual with information in Petitioner’s Amended
Initial Disclosures on September 22, 2017, as he provided a declaration in support of this
cancellation action. Respondent even asked about Petitioner’s relationship with Mr. Macleod in
its first set of interrogatories. Petitioner described that relationship, including the existence of
communications between Petitioner and Mr. Macleod, in his responses to interrogatories, which
were served on January 17, 2018. Thus, beginning more than two and a half years ago and for at
least 18 continuous months between receiving Petitioner’s response to interrogatories and the
filing of Respondent’s Motion to Quash, Respondent knew about Mr. Macleod and could have
taken action to obtain the information that it now claims was “recently obtained.”
Even if Respondent waited until after its Motion to Quash was denied, the subpoena and
1 While over 90 pages (92, technically), the document is a transcript of a social media messenger app, so there are
fewer than 100 words on the average page, excluding the names of the two individuals exchanging messages.
3
requests for discovery from Mr. Macleod could have been initiated by Respondent at the same
time that it specifically requested that Petitioner provide all communications and documents with
Mr. Macleod. Those discovery requests were served on Petitioner on July 8, 2020. Taking action
then would have given Respondent ample time to complete discovery prior to September 21.
Nonetheless, Respondent waited until September 11, 2020, or 10 days before the close of
discovery, to apply for a third party subpoena to obtain additional documents from Mr. Macleod.
The subpoena was issued (and served on Mr. Macleod) on Friday, September 18, demanding that
he respond to several discovery requests (the “Macleod Discovery”) on Monday, September 21,
just one business day later. See Exhibit A. Obviously, such a ridiculously short demand does
not allow for a reasonable time to respond as required by Federal Rule 45. Rather, Respondent
demanded an unreasonable period because it knew that these non-party requests were not served
with sufficient time for responses to be due by the close of the discovery period, as required. 37
CFR § 2.120(a)(3). Thus, Petitioner objects to the Macleod Discovery and will object to
Respondent’s reliance on any documents or things obtained via these non-compliant requests.
Finally, Respondent alleges that additional time is necessary so this information can be
provided to experts for an expert report. However, Respondent has identified no experts in this
proceeding and the deadline for doing so has since passed. This is, taken most generously, a
misstatement of fact masquerading as “good cause.”
As the Board is well aware, Respondent has not acted promptly or conducted discovery
in good faith. The Motion is just the latest in a series of games Respondent has played to delay
and frustrate the discovery process. The Motion fails to establish any basis for extending
discovery to save Respondent from its own failure to act promptly.
4
Respondent Has Not Demonstrated Good Cause
In addition, the Motion does not establish the requisite good cause for extending
discovery to allow Respondent to properly serve the Macleod Discovery. Respondent is correct
that the Board is generally liberal in granting extensions of the discovery period. National
Football League v. DNH Management LLC, 85 USPQ2d 1852, 1854 (TTAB 2008). However, as
the Board reasoned in the NFL v. DNH case, the very case cited in the Motion, “the moving party
retains the burden of persuading the Board that it was diligent in meeting its responsibilities and
should therefore be awarded additional time.” Id. Here, Respondent has been anything but
diligent and has not carried the burden of persuasion in the Motion.
Respondent’s lack of diligence has been clearly demonstrated to the Board in the briefing
supporting and opposing the Motion to Quash and in Petitioner’s Motion for Sanctions.
Throughout the 3-year discovery period, Respondent has failed to conduct itself in good faith,
failed to cooperate with Petitioner in scheduling the deposition of its corporate witness (even
when instructed by the Board to do so), and failed to make any attempt to prepare the witness
when finally ordered by the Board to appear. The transcript of Respondent’s 30(b)(6) witness
and the Motion itself further demonstrate that Respondent continues to play games.
On the one hand, when discovery is being sought of Respondent, it argues repeatedly that
it owns a “contestable mark” and that discovery on any other topic would be irrelevant and
outside the scope of this proceeding such that Respondent should not be required to provide such
information. See, Respondent’s Opposition to Motion for Discovery Sanctions, 51 TTABVUE at
4-5; Transcript of Deposition of DiMarzio, Inc., 49 TTABVUE at 92, 163, 176, 177, 193, 195,
203, 208, 211, 216, 217, 218. As the Board is clearly aware, there’s no such thing as an
“incontestable mark.” What Respondent owns is a registration that has obtained incontestable
5
status. However, even an incontestable registration is not immune to challenge from several
enumerated bases, including functionality, genericness, and fraud. 15 USC § 1064(3).
The claim that is the basis of this proceeding is that Resondent’s Mark is aesthetically
functional, which is explicitly allowed. However, there is also evidence in the record that
Respondent’s cream colored pickup was “inspired by” a well-known 1959 Gibson “Sunburst”
guitar, which had been played by famous guitarists, such as Jimmy Page, Jeff Beck, and Eric
Clapton, with the cream colored pickup exposed, and that Respondent’s founder was aware that
these guitarists played guitars with exposed double cream pickups prior to making the product
that is the subject of the Registration. Transcript of Deposition of DiMarzio, Inc., 49
TTABVUE. There is also evidence that other pickup manufacturers were making double cream
colored pickups at the time Respondent filed the trademark application for Respondent’s Mark.
Id.
The 1959 Gibson Sunburst and its popularity with famous guitarists such as Jimmy Page
and his “Number Two” is well known among the guitar community (see Exhibit B), so the
possibility that discovery related to a claim of aesthetic functionality might lead to evidence of
another claim, such as fraud, is not surprising. Discovery related to one claim that might also
reveal facts that support other bases is explicitly allowed. J. B. Williams Co., Inc. v. Pepsodent
G.m.b.H., 188 USPQ 577, 579 (TTAB 1975). Despite Respondent’s consistent protests and
objections, Petitioner is entitled to discovery on these issues.
Moreover, the extent of Respondent’s knowledge that its alleged trademark was nothing
more than an attempt to capitalize on a coveted Gibson product shape, design, and color (i.e.,
aesthetically functional) that was already available in the market and in high demand by
guitarists wanting to mimic Jimmy Page (potential fraud) is well within the scope of reason. Yet,
6
Respondent has consistently contended that any such questions were irrelevant, refused to
answer discovery or provide documents, and failed to prepare its corporate witness on these (or
any) issues, even after the Board issued its order rejecting Respondent’s Motion to Quash.
In contrast to the narrow scope Respondent employs when providing discovery
responses, in the Motion, Respondent seeks additional time to serve very broad requests on a
non-party that are unlikely to reveal information related to the aesthetic functionality of
Respondent’s Mark. The subpoena includes 11 numbered document requests (not including any
unnumbered subparts) that demand responses to incredibly broad ranges of information,
communication, and documents, such as all communications between Mr. Macleod, a non-party,
and any PERSON (defined as any “natural person, business, or legal entity”) relating to this
TTAB proceeding. Exhibit A. It also seeks any documents or communications between the non-
party and counsel for Petitioner. Id.
It is clear that the Macleod Discovery is merely an attempt by Respondent to use this
proceeding to gather information about its competitors. For example, Respondent seeks any
communications between Mr. Macleod and a competitor of Respondent (Cathy Duncan, of
Seymour Duncan) and evidence that Mr. Macleod’s business offers infringing products. Id.
Nothing in the Motion sets forth why Respondent is entitled to additional time in this proceeding,
which has been delayed for years by Respondent’s gamesmanship, to obtain information about
potentially infringing products from non-parties nor how that relates to its defense.
As the Board has concluded many times, including the case cited in the Motion itself,
extensions of time are not granted without a showing of good cause by the movant. Here, the
information upon which this Motion is based has been available to Respondent for years and
could have been sought long before now. In reality, Respondent waited until 10 days prior to the
7
close of discovery to seek information from a non-party that’s almost entirely unrelated to this
proceeding. Because the Motion lacks good cause and because the discovery requests issued to
Mr. Macleod were not timely served, the Board should deny the Motion.
Conclusion
Prior to this Motion, pending before the Board was Petitioner’s Motion for Sanctions. As
a preliminary matter, Petitioner requests that the Board rule on the Motion for Sanctions prior to
ruling on the current Motion. But, if the Board does not grant the sanction of judgment, as
requested by Petitioner in the Motion for Sanctions, then additional time will indeed be
necessary to allow Petitioner to obtain the relevant information and documents that Respondent
has thus far withheld. Accordingly, in that case, Petitioner would not object to an extension of
the discovery period solely to allow Petitioner time to use other means to obtain information and
evidence that Respondent has failed to make available.
However, Respondent’s Motion is not supported by any evidence of good cause, but
rather is an attempt by Respondent to save itself from its failure to act promptly during the
discovery period. In addition, the Macleod Discovery was served by Respondent without
adequate time for response prior to the close of discovery despite ample time to do so. Thus,
Petitioner objects to the Motion and to the Macleod Discovery. Petitioner further reserves the
right to object to any information, documents, or other evidence that Respondent may submit in
this proceeding that was obtained as a result of the Macleod Discovery.
8
Dated: October 12, 2020
Jeffrey A. Nelson
Davis Wright Tremaine LLP
920 5th Avenue, Suite 3300
Attorneys for Petitioner
CERTIFICATE OF SERVICE
I hereby certify that a copy of the foregoing document is being served upon counsel for
Registrant, Ron Bienstock, Scarinci & Hollenbeck, LLC, by email on October 12, 2020.
_________________________________
Jeffrey A. Nelson
EXHIBIT A
EXHIBIT B
10/12/2020 Guitarsenal: Jimmy Page Number Two 1959 Gibson Les Paul | Finding Zoso: Discovering the Music of Jimmy Page
findingzoso.blogspot.com/2012/07/guitarsenal-jimmy-page-number-two-1959.html 1/4
[http://4.bp.blogspot.com/-LE56KE_kJwc/UAyYilQRHJI/AAAAAAAAAk0/MPtaZ82H5ao/s1600/JP.jpg]
Jimmy and his Number Two 1959 Gibson Les Paul Standard in 1975
Jimmy's second 1959 Gibson Les Paul Standard (Serial# 91703) is believed to have bought inEngland shortly after the 1973 U.S. tour concluded. The guitar didn't make an appearance untilJanuary 1975, when it was brought out on tour as a back up for his trusted Number One. Over theyears, his Number One had taken quite a beating, especially for numbers like "Dazed andConfused" when he used a violin bow which banged into the strings and the bridge. The body ofNumber Two is distinguishable from Number One due to it's higher grade of flame.
Number two was used to play "Kashmir" in 1975, subbing in for his Danelectro (It was obviouslytuned into DADGAD for this number. It was also sometimes used for "Dazed and Confused","Moby Dick", and "Over the Hills and Far Away" For the O2 reunion in 2007 Jimmy brought outNumber Two for "Trampled Underfoot", "Since I've Been Loving You", and "Misty Moutain Hop".Additionally, Page brought Number Two out on tour for The Firm for "The Chase/BowSolo", in the studio in 1992 for "Take Me For A Little While", for the 1995 and 1998Page/Plant tours and for the O2 Reunion concert. It is unknown if Jimmy removed it or if it had already been removed when he purchased it, but the bridge pickup cover had been removed at some point revealing a white Patent Applied For Pickupsimilar to Number One during it's appearances during Zeppelin. It's not uncommon for peoplethink this is Number One when it's seen without the cover because of the white PAF Pickup, notrealizing the white PAF Pickup in Number One was just replaced.
Guitarsenal: Jimmy Page Number Two 1959 GibsonLes Paul
10/12/2020 Guitarsenal: Jimmy Page Number Two 1959 Gibson Les Paul | Finding Zoso: Discovering the Music of Jimmy Page
findingzoso.blogspot.com/2012/07/guitarsenal-jimmy-page-number-two-1959.html 2/4
[http://2.bp.blogspot.com/-zrquXhe4-h8/UAycFjJKgNI/AAAAAAAAAlI/lWF2boIyVNE/s1600/lz1975xxxx_110.jpg]
Page wanted his Number Two to feel and look and play as similarly to his Number One as possibleto achieve this the neck was also shaved to replicate the same profile that was on Number One, andthe Kluson tuners were replaced with Nickel Grovers. According to Tim Marten, a tech of Page's inthe 80's, they also tried to reshape the bridge to make it easier for bowing.
Number Two is the guitar that Jimmy had the under-pickguard switches for series/parallel andphase switching which were installed into at some point the early 80's, not during Led Zeppelin.Four push pulls were also installed to add the ability of coil splitting each pickup and the option ofputting all four coils in parallel. The wiring mods were done by engineer Steve Hoyland.
[http://3.bp.blogspot.com/-iCF7gNsw18Q/UAydODnDxYI/AAAAAAAAAlQ/saAahys5osQ/s1600/wdu_hh3t22_03_jpmod.jpg]Interestingly, the bridge pickup in the 1980's was either covered or replaced, it is unknown whatkind of pickup might have replaced the PAF in the bridge, but it is conceivable that it would be a T-Top as it is the same one that was put into Jimmy's Number One. At some point later on this pickupwas then removed and replaced with an uncovered white bobbin humbucker. Again it is not knownif this is the original PAF, or if it was some sort of other pickup. Of course then again, the pickup
10/12/2020 Guitarsenal: Jimmy Page Number Two 1959 Gibson Les Paul | Finding Zoso: Discovering the Music of Jimmy Page
findingzoso.blogspot.com/2012/07/guitarsenal-jimmy-page-number-two-1959.html 3/4
might never have been removed at all, and if the cover was simply removed.
[http://3.bp.blogspot.com/-JUk6h7yTbbY/UAyibotxtQI/AAAAAAAAAlc/yO6buP6s91I/s1600/jimmy-page-colour155.jpg]
In 2010 Gibson unveiled a custom shop re-creation of Jimmy's Number Two. 25 guitarswere aged by Tom Murphy and signed by Jimmy Page, 100 guitars were simply aged, anda final 200 were released in a Vintage Original Spec model, running anywhere from$11,000 to $25,000. Interestingly, unlike the actual Number Two, Gibson elected to installa black uncovered humbucker in the bridge. All of the technical specs for this guitar canbe found here:
http://www2.gibson.com/Products/Electric-Guitars/Les-Paul/Gibson-Custom/Jimmy-Page-Number-Two-Les-Paul/Specs.aspx
[http://1.bp.blogspot.com/-1o8ov_yZ53Y/UAyi3I0uZ1I/AAAAAAAAAlk/QRzyUiQgmzQ/s1600/3114aacb-b23d-4f4d-b048-0465d2945834.jpg]
Gibson's Jimmy Page Number Two Re-production
10/12/2020 Guitarsenal: Jimmy Page Number Two 1959 Gibson Les Paul | Finding Zoso: Discovering the Music of Jimmy Page
findingzoso.blogspot.com/2012/07/guitarsenal-jimmy-page-number-two-1959.html 4/4
Update: I've just learned that the pickup manufacturer Dimarzio has a trademark ondouble-white bobbin exposed humbucking pickups. Thus the reason Gibson electedto used all black exposed pickups for the bridge position in the Jimmy Page NumberTwo Custom Shop Les Paul.Thanks to Karmadave from The Gear Page for clearing this up.
Posted 23rd July 2012 by Corbin
Labels: Guitarsenal
Comment as:
Google Ac
PublishPublish
PreviewPreview
Enter your comment...
0 Add a comment
