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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 OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARDProceeding 91178758PartyPlaintiffMcDonald's CorporationCorrespondenceAddressRobert E. BrowneNeal Gerber & Eisenberg2 North LaSalle Street Suite 2200Chicago, IL 60605UNITED STATESrbrowne@ngelaw.com, mkelber@ngelaw.com, jcullis@ngelaw.com,ljames@ngelaw.com, ipdocket@ngelaw.comSubmission Reply in Support of MotionFiler'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.comSignature /Lawrence E. James, Jr./ Date 11/04/2009Attachments Reply_in_Support_of_Rule_56_f__Motion.pdf ( 17 pages )(232649 bytes )
 
 
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
McDONALD’S CORPORATION, )) Opposition No. 91178758Opposer, ))v. ) Mark: McSWEET) Application S/N: 78/947,247McSWEET, LLC, ) Filed: August 8, 2006) Published: April 10, 2007Applicant. )
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 todeny Opposer the discovery necessary for Opposer to fully and fairly respond to Applicant’s CrossMotion for Summary Judgment on fraud (“Cross Motion”). Applicant’s argument that the discoverysought by Opposer “can be found in materials already provided” is demonstrably false, and its argumentthat Opposer and the Board should simply be forced to rely on the limited, conclusory statements madeby 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. Pursuantto Federal Rule 56(f)(2), “[i]f a party opposing the motion shows by affidavit that, for specified reasons, itcannot present facts essential to justify its opposition, the court may . . . (2) order a continuance to enableaffidavits 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 needfor 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 JohnCullis, Opposer needs additional discovery specifically directed to the actions and intent of Applicant’scounsel’s in the filing of and delay in correcting the faulty designation of goods, facts which arepredominantly within the control of Applicant and its counsel, to respond to the Cross Motion.
 
 
2
Applicant’s vague assertion that Opposer “has had many months to conduct discovery” related tothe fraud claim is disingenuous in light of the fact that this proceeding has been suspended for variousreasons 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 the30(b)(6) deposition of Applicant, to April 10, 2009, when Opposer filed its Motion for SummaryJudgment (“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 hadfiled 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 (TTAB2002) fails to support its claim that Opposer’s filing of its motion for summary judgment should precludeit from 56(f) discovery. In that case, discovery was denied where the party responding to a motion forsummary judgment filed both a substantive response on the merits and a request for 56(f) discovery—atactic that is prohibited.
 Id.
Unlike the party in
Cauldwell
, Opposer has not filed a response to the CrossMotion 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 discoveryto respond to Applicant’s Cross Motion. Opposer is entitled to respond to and rebut the evidencepresented 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 neverproduced to Opposer, as a basis for its Cross Motion, has created a need for Opposer to take discovery onthe issues raised by those documents. While circumstances where a party that initially moved forsummary judgment would need additional discovery to respond to a cross motion for summary judgmentare 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 forsummary judgment. Therefore, given the change in the evidentiary standard for proving fraud and that
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Ragin Jennings-Howard

McDonalds v McSweet-- helpful case law re deposing an attorney

reply08 / 24 / 2010
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