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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1117692 Filing date: 03/02/2021 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91252983 Party Plaintiff The Scotch Whiskey Association, Ltd. Correspondence JILLIAN BURSTEIN Address REED SMITH LLP 10 SOUTH WACKER DRIVE, 40TH FLOOR CHICAGO, IL 60606 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected], [email protected] 312-207-1000 Submission Opposition/Response to Motion Filer's Name Jillian L. Burstein Filer's email [email protected] Signature /Jillian L. Burstein/ Date 03/02/2021 Attachments 2021-03-02 GLENCHOD Response in Oppotion to Motion to Com- pel.pdf(150330 bytes ) 2021-03-01 GLENCHOD Response in Oppositon to Motion to Compel_EXHIBIT A.pdf(164464 bytes ) 2021-03-01 GLENCHOD Response in Oppositon to Motion to Compel_EXHIBIT B.pdf(184630 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK TRIAL AND APPEAL BOARD THE SCOTCH WHISKEY ASSOCIATION, LTD., Opposition No. 91252983 Opposer, Mark: THE GLENCHOD v. Serial No. 88/347,551 SHYAM KARIA, Filing Date: March 19, 2019 Applicant. Publication Date: August 20, 2019 OPPOSER’S RESPONSE IN OPPOSITION TO APPLICANT’S MOTION TO COMPEL BETTER RESPONSES TO APPLICANT’S INITIAL DISCOVERY REQUESTS This Opposition concerns Applicant’s admitted lack of a bona fide intention to use the applied-for trademark at issue here – THE GLENCHOD in International Class 33 for “whiskey; whiskey spirits” (the “Mark”) – and that registration nevertheless should be refused on the basis that the Mark is geographically deceptive and geographically deceptively misdescriptive if used on any type of whiskey other than Scotch Whisky. (Dkt. 11). Notably, Applicant’s motion to compel Opposer to produce “better responses” to discovery does not challenge the substance of Opposer’s discovery responses; rather, Applicant challenges the nature of the objections made in connection with each response and ignores that Opposer served substantive responses to Applicant’s overly broad and sprawling discovery. The result is a motion that puts form over substance and serves only to waste Board and party resources. Notwithstanding Opposer’s compliance with its discovery obligations, in the interests of efficiency and to permit the parties and the Board the opportunity to move forward on the merits of this dispute, Opposer has further revised its discovery responses and served same on counsel for Applicant. See Exhibit A (Amended Responses and Objections to Requests for Documents) and Exhibit B (Amended Responses and Objections to Interrogatories). Opposer undertook this exercise to provide even more clarity as to what Opposer has produced, what (if anything) is being withheld, and to further explain the well-founded bases of Opposer’s objections. Indeed, Opposer wishes to resolve this dispute on its merits, rather than waste Board and party resources on meritless discovery disputes. To that end, and for ease of Board review, Opposer addresses herein only those objections that have not been withdrawn or otherwise revised. As Applicant’s motion to compel serves no other purpose than to delay these proceedings and clutter the Board’s docket, the motion to compel should be denied. I. FACTUAL AND PROCEDURAL BACKGROUND Opposer, the Scotch Whisky Association, is the trade association of the Scotch Whisky industry, and has worked to safeguard the Scotch Whisky trade on a worldwide basis for over sixty years. (Dkt. 11). There are currently over 70 members of the Association, including distillers, blenders and brand owners of Scotch Whisky. Id. These members produce approximately 90% of the Scotch Whisky sold worldwide, including in the United States, and include such internationally well-known brands as Johnnie Walker, White Horse, Dewar’s, Ballantine’s, Chivas Regal, Famous Grouse, The Glenlivet, Glenfiddich, Glendronach, and The Macallan. Id. Throughout its over sixty-year history, Opposer has actively monitored trademark applications and third-party users throughout the world that seek to use or register trademarks that are confusingly similar to Scotch Whisky or are evocative of Scotland when used on whiskey products not produced in Scotland. Opposer uses reasonable efforts to amicably resolve these issues worldwide, but has initiated enforcement actions when necessary in jurisdictions around the world to protect Scotch Whisky as a geographic indication of origin. - 2 - Opposer initiated this proceeding on December 17, 2019. (Dkt.1.) On December 18, 2020, Applicant served Opposer with Applicant’s First Request for Production (the “Requests”) and First Set of Interrogatories (the “Interrogatories”) which sought, among other things, broad categories of documents and information relating generally to Opposer’s organization and global trademark enforcement program. On January 18, 2021, Opposer timely responded to the propounded discovery by serving responses and setting out objections based on, among other things, the extreme over breadth of each request. Opposer also produced over eight hundred pages of non-privileged responsive documents, and agreed to produce a corporate representative for deposition pursuant to Federal Rule of Civil Procedure 30(b)(6), which the Parties set for February 11, 2021. On January 28, 2021, Opposer filed an Unopposed Second Amended Notice of Opposition (the “Second Amended NOO”), opposing registration of the Mark on the following grounds: (1) the Mark is deceptive in violation of 15 U.S.C. §1052(a); (2) the Mark is geographically deceptively misdescriptive in violation of 15 U.S.C. §1052(e)(3); and (3) that Applicant lacks a bona fide intention to use the Mark based on Opposer’s own admissions obtained during discovery. (Dkt. 11). On February 9, 2021, the Board accepted the Second Amended NOO and reset the conferencing, discovery, and trial dates. (Dkt. 12). Under that schedule, Applicant is to answer the Second Amended Notice Opposition by March 10, 2021 and discovery is set to close on October 6, 2021. Id. On February 1, 2021, Applicant served Opposer with a deficiency letter that challenged certain objections set forth in Opposer’s discovery responses. During the parties’ meet and confer on February 9, 2021, counsel for Opposer explained to counsel for Applicant that the overly broad and sprawling nature of each of Applicant’s discovery requests could reasonably have been - 3 - construed to encompass a significant portion of Opposer’s organization and global trademark enforcement program, as well as include filings throughout the world that are publically available. Such discovery was unduly burdensome, particularly considering the proportional needs of this case. In an effort to work together in good faith and resolve these issues, counsel for Opposer asked counsel for Applicant to narrow or tailor the requests and identify what specifically was being requested of Opposer. In a further effort of cooperation, Opposer supplemented its written discovery responses the following day to identify the documents that had been produced in response to each request. However, as Applicant refused to revise the propounded requests as written, Opposer did not otherwise change the substance of its objections or responses thereto. At 10:00 PM Eastern Time that evening, Applicant filed the instant motion, along with notice that the deposition of Opposer’s corporate representative set for the following morning had been cancelled. Upon receiving the motion, counsel for Opposer reached out to counsel for Applicant seeking to attempt to resolve this opposition by way of mediation, rather than incur the time and expense of litigating discovery disputes and responding to the present motion. Based on conversations with Counsel for Applicant, Counsel for Opposer was led to believe that Applicant would be open to mediation. However, to counsel’s surprise, Counsel for Applicant notified Counsel for Opposer on February 25, 2021 that Applicant had no interest in mediating this dispute. II. ARGUMENT Motions to compel discovery are disfavored where, as here, the motion serves no purpose other than to delay proceedings and increase costs to Opposer. Hugo Boss AG v. Jackson Int'l Trading Co. Kurt D. Bruhl Gesellschaft MBH & Co., 2000 TTAB LEXIS 207, *4 (TTAB April 11, 2000) (“non-essential evidence and motions create a problem for the Board, and increase the - 4 - costs for both parties.”); see also In re Porsche Cars N. Am., Inc., No. 2:11-md-2233, 2012 U.S. Dist. LEXIS 136954, at *48-49 (S.D. Ohio Sep. 25, 2012) (denying motion to compel defendants to withdraw “boilerplate objections” as doing so “would serve no point”). In any event, the vast majority of Applicant’s motion is now moot, as Opposer has amended each of its discovery responses. Fid. Prescriptions, Inc. v. Med. Chest Disc. Ctrs., Inc., 191 U.S.P.Q. (BNA) 127, 127 (TTAB March 25, 1976) (motion to compel moot and given no consideration where party served amended responses to discovery). Moreover, and despite the sufficiency of Opposer’s prior objections, Opposer has withdrawn its objections to Requests for Production Nos. 1, 3-5, 7, 10, 21-23, and 30 and to Interrogatory No. 1. As set forth below, Opposer maintains the following objections: (1) Requests for Production Nos. 24-29 and 31-32, and Interrogatory Nos. 3-7 are overly broad, unduly burdensome and disproportionate to the needs of this case; (2) the preparation and production of a privilege log is an unduly burdensome task that is disproportionate to the needs of this case; and (3) Interrogatory Nos. 2 and 8 contain multiple sub-parts. The motion to compel the withdrawal of these objections and/or the production of a privilege log should be denied. A. Objections as to over breadth, burden, and proportionality are well founded Requests for Production Nos. 24-29 and 31-32 and Interrogatory Nos. 3-7 are overly broad, unduly burdensome, disproportionate to the needs of this case, and in many instances, seek information that is publically available.

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