United States Polo Association v. David McLane Enterprises, Inc.

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

THIS OPINION IS A

P.O. Box 1451

PRECEDENT OF THE Alexandria, VA 22313-1451

TTAB General Contact Number: 571-272-8500

General Email: TTABInfo@uspto.gov

Faint/Stanley

March 25, 2019

Cancellation No. 92066233

United States Polo Association

v.

David McLane Enterprises, Inc.

M. Catherine Faint,

Interlocutory Attorney

This case now comes up on Petitioner’s motion, filed August 22, 2018, to challenge

Respondent’s designations of certain of its produced documents and interrogatory

responses as “Confidential” or “Confidential – For Attorneys’ Eyes Only (Trade

Secret/Commercially Sensitive)” under the Board’s Standard Protective Order. The

motion is fully briefed.1

1. Background

On June 15, 2018, Respondent served responses and objections to Petitioner’s first

set of document requests (Nos. 1-12) and first set of interrogatories (Nos. 1-18).2 On

the same day, Respondent produced responsive documents, Bates labeled DME0001-

1 In reaching this decision, all of the parties’ arguments and evidence were carefully

considered but there is no need to restate them all in this order. See Guess? IP Holder L.P. v.

Knowluxe LLC, 116 USPQ2d 2018, 2018 (TTAB 2015).

2 22 TTABVUE 2-3, ¶ 3.

Cancellation No. 92066233

DME00154.3 Pursuant to the Board’s Standard Protective Order,4 Respondent

designated all produced documents “Confidential – For Attorneys’ Eyes Only (Trade

Secret/Commercially Sensitive).”5

On June 19, 2018, Petitioner complained to Respondent about its confidentiality

designations, stating that “we need to be able to go over the discovery responses with

our client’s in-house counsel.”6 On July 2, 2018, Respondent agreed to change the

designation “of at least some of the documents from ‘trade secret/commercially

sensitive’ to ‘Confidential,’” but conditioned the redesignation on Petitioner’s

agreement that only one of Petitioner’s in-house attorneys, approved by Respondent,

3 Id.; 19 TTABVUE 2, ¶ 2. Petitioner filed a “confidential” chart (Exhibit G) with its motion,

identifying the designations for all documents at issue. 20 TTABVUE at 184-192. The chart

identifies twenty documents. In its opposition to Petitioner’s motion, Respondent states that

it produced “twenty-one documents” (21 TTABVUE at 3), but in that same opposition,

Respondent refers to “sixteen” documents being designated “Confidential” and “six”

documents being designated “Confidential – For Attorneys’ Eyes Only (Trade

Secret/Commercially Sensitive)” (i.e., twenty-two documents) (id. at 4). The discrepancy

appears to be attributable to how the parties grouped the documents. References to the

number of documents produced in this order are based on the parties’ representations in their

briefs. Although there are more than twenty-two discrete documents, the Board has also

grouped documents together, as appropriate, by Bates ranges for purposes of analysis.

4 The Board’s Standard Protective Order is automatically imposed in all inter partes

proceedings. Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g); Trademark Trial and Appeal

Board Manual of Procedure (“TBMP”) § 412.01 (2018). The parties were advised of the

imposition of the Standard Protective Order in the institution order. See 2 TTABVUE 4. The

Board’s Standard Protective Order is available on the Board’s homepage,

www.uspto.gov/ttab. Although it is not necessary for the parties to sign copies of the Board’s

Standard Protective Order for it to take effect for the duration of this proceeding, it may be

advisable for both the parties and their attorneys to sign the Standard Protective Order “so

that it is clear that they are all bound thereby; that they have created a contract which will

survive the proceeding; and that there may be a remedy at court for any breach of that

contract which occurs after the conclusion of the Board proceeding.” TBMP §412.03; see also

TBMP § 412.01.

5 22 TTABVUE 2-3, ¶ 3

6 19 TTABVUE 9.

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would be permitted to see the “Confidential” documents.7 On July 10, 2018,

Petitioner’s counsel identified one in-house lawyer but reserved its right to further

object to Respondent’s designations.8 The parties did not seek Board approval to

modify the Standard Protective Order to formally reflect their amended agreement.

On July 11, 2018, Respondent produced its documents with amended

confidentiality designations, changing the designation of sixteen documents from

“Confidential – For Attorneys’ Eyes Only” to “Confidential” (subject to only the

approved in-house counsel seeing the “Confidential” documents).9 Respondent

maintained the “Confidential – For Attorneys’ Eyes Only” designation for the

remaining six documents and three of the interrogatory responses.10

On July 12, 2018, Petitioner emailed Respondent a list of objections and proposed

that Respondent downgrade its classification of its responses to interrogatory Nos. 8-

10 and the remaining six documents from “Confidential – For Attorneys’ Eyes Only”

to “Confidential.”11 On July 16, 2018, Respondent agreed to change its designations

of the responses to interrogatory Nos. 8 and 10 to “Confidential” (subject to only the

approved in-house counsel).12 As to its response to interrogatory No. 9 and the six

remaining “Confidential – For Attorneys’ Eyes Only” documents, Respondent

7 Id. at 12.

8 Id. at 16.

9 22 TTABVUE 3, ¶ 6.

10 19 TTABVUE 3-4, ¶ 6; 22 TTABVUE 3, ¶ 6.

11 22 TTABVUE 7-10.

12 Id. at 7; 21 TTABVUE 6, n.3 (noting that Respondent’s use of the “Confidential” designation

on interrogatory Nos. 8 and 10 was contingent on access being limited to Petitioner’s outside

counsel and sole in-house counsel).

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“maintains that these documents and responses contain competitive business

information including highly sensitive financial and/or marketing information that

would cause harm if disclosed to [Petitioner].”13

2. Good Faith Effort

Pursuant to § 14 of the Board’s Standard Protective Order, “[i]f the parties or their

attorneys disagree as to whether certain information should be protected, they are

obligated to negotiate in good faith regarding the designation by the disclosing party.

If the parties are unable to resolve their differences, the party challenging the

designation may make a motion before the Board seeking a determination of the

status of the information.”14

Petitioner’s counsel submitted a declaration, which details the parties’

negotiations,15 during which Respondent made certain qualified concessions.

However, the parties reached an impasse as to the response to interrogatory No. 9

and the six documents that remained designated as “Confidential – For Attorneys’

Eyes Only.” Furthermore, the parties continued to disagree about Respondent’s

insistence that only one of Petitioner’s in-house lawyers could review documents

redesignated as “Confidential.” We find that Petitioner has satisfied the good faith

effort requirement prior to filing its motion.

13 22 TTABVUE 7.

14 Standard Protective Order ¶ 14.

15 19 TTABVUE; 20 TTABVUE. The Board refers to the exhibits at 20 TTABVUE in general

terms as they were designated confidential when filed.

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Cancellation No. 92066233

3. The Board’s Standard Protective Order

a. In General

The Board’s Standard Protective Order provides for two tiers of protected

information: (1) Confidential and (2) Confidential – For Attorneys’ Eyes Only (trade

secret/commercially sensitive) (hereafter “AEO”). See TBMP § 412.01. The designations

“Confidential” or “AEO” “should be limited to information that the producing party or

their counsel has determined, in good faith, contains, reflects, or reveals non-public,

confidential, proprietary or commercial information that is not readily ascertainable

through proper means by the public or the receiving party, to the extent that information

either is the type of information that the party normally attempts to protect from

disclosure or is subject to privacy protection under federal, state or local law.” TBMP

§ 412.01(a). The “AEO” designation should be limited to information that “can be used

in the operation of a business or other enterprise and that is sufficiently valuable and

secret to afford an actual or potential economic advantage over others.” Id. (quoting

RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 39 (Am. Law Inst. 1995)). The Standard

Protective Order identifies “types of information” that “may” qualify as “AEO”

information, such as sensitive business information, including highly sensitive financial

or marketing information, and competitive business information, including non-public

financial and marketing analyses and strategic product/service expansion plans.

Standard Protective Order at ¶ 1 (emphasis added); see also TBMP § 412.10(a).

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Cancellation No. 92066233

Parties may access information designated as “Confidential,” subject to any agreed

exceptions. See TBMP § 412.01. Parties, including in-house counsel, do not have access

to information designated “AEO.” Id.

b. Respondent’s Responsibilities as Designating Party

As the designating party, Respondent bears the burden of demonstrating that its

confidentiality designations are appropriate. See Standard Protective Order ¶ 14; TBMP

§ 412.01(b). To successfully carry this burden, Respondent “must demonstrate a

particular need for protection and that a clearly defined and serious injury will result

otherwise.” TBMP § 412.01(b); see, e.g., Deford v. Schmid Prods. Co., 120 F.R.D. 648, 653

(D. Md. 1987) (collecting cases). Where the information sought to be protected is allegedly

sensitive or competitive business information that is “AEO” information, Respondent

“must show that disclosure would cause a clearly defined serious injury to its business

such as harm to its competitive and financial position. Such a showing of harm to a

party’s business requires support, where possible, by affidavits or declarations and

concrete, specific examples.” TBMP § 412.01(b) (notes omitted); see also Deford, 120

F.R.D. at 653. “Stereotyped and conclusory statements” are insufficient. TBMP

§ 412.01(b); see FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999); In

re Bank One Sec. Litig., 222 F.R.D. 582, 588 (N.D. Ill. 2004) (“good cause does not permit

‘stereotyped and conclusory statements’”) (quoting Gulf Oil Co. v. Bernard, 452 U.S. 89,

102 n.16 (1981)).

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4. The Designations Dictate Level of Protection

The designations “Confidential” and “AEO” in the Board’s Standard Protective Order

dictate who has access to information, materials and documents responsive to discovery

requests. The terms of the Board’s Standard Protective Order may be modified, upon

motion or upon stipulation approved by the Board. TBMP § 412.01. However, the parties

may not agree to redefine the Board’s definition of what information constitutes

“Confidential” and “AEO” information. The parties may agree to change who has access

to information and materials, but the designations retain the meaning the Board

dictated in the Standard Protective Order. By way of example, under the Standard

Protective Order, if a response is designated “Confidential,” it is reviewable by all in-

house counsel, but parties may agree to modify the Standard Protective Order to limit

access to “Confidential” material to specific individuals, regardless of their titles or roles.

That type of modification of the parties’ behavior with respect to the documents does not

purport to change the legal effect of the designations in the Standard Protective Order.

Here, the parties never mutually agreed to modify the Standard Protective Order;

nor did they submit a modified protective order for Board approval. Although

Respondent redesignated its responses to interrogatory Nos. 8 and 10 and certain of its

documents designated as “AEO” to “Confidential” on the condition that only a single in-

house counsel for Petitioner would be permitted access to those documents, Petitioner

reserved its right to challenge that unilaterally-imposed limitation, and does so in its

motion. Because of this residual dispute, we must address which of the two default

designations in the Board’s Standard Protective Order ― which govern unless the parties

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Cancellation No. 92066233

stipulate otherwise ― applies. Below, we reviewed the original designations for the

responses to interrogatory Nos. 8-10 and each of the documents, Bates labeled

DME0001-DME00154 (except for DME000083, for which Respondent withdrew its

confidentiality designation) to determine whether the original designations were

appropriate under the Standard Protective Order.

5. Respondent’s Confidentiality Designations

a. Respondent’s Responses to Interrogatory Nos. 8-10

i. Interrogatory No. 8

Interrogatory No. 8 requests the identity of all agreements, including, but not limited

to, license agreements, sponsorship agreements, and broadcast agreements relating to

the use of Respondent’s mark.16 In its response, Respondent identifies the names and

addresses of companies and individuals with whom it has entered into agreements

relating to, among other things, financing, business development, television

broadcasting, television production, and licensing.17

Respondent argues that Petitioner and Respondent are direct competitors in the

business of organizing and promoting polo events and tournaments and that, if disclosed

to Petitioner’s officers and employees, the information responsive to interrogatory No. 8

“would allow Petitioner to unfairly leverage Respondent’s efforts to commercialize

[Respondent’s mark] by, among other things, targeting Respondent’s past business

16 20 TTABVUE 19.

17 Id. at 19-20.

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Cancellation No. 92066233

partners and undercutting Respondent’s negotiating position in future business deals

with those partners.”18

The disclosure of information protected under the terms of the Standard Protective

Order may be used only to facilitate the prosecution or defense of this Board proceeding.

In addition, the recipient of any protected information disclosed in accordance with the

terms of the Standard Protective Order (e.g., outside counsel, in-house counsel,

employees of the parties, etc.) is obligated to maintain the confidentiality of the

information and shall exercise reasonable care in handling, storing, using,

disseminating, retaining, returning, and destroying the information. See Standard

Protective Order at ¶ 11. Respondent has not produced any evidence supporting its fear

that Petitioner will violate its obligations under the Standard Protective Order by

misusing designated information produced in this proceeding. Respondent’s fear is

speculative.

Furthermore, although licensing agreements, sponsorship agreements, broadcast

agreements, and the like may contain information that merits the “AEO” designation,

Respondent does not provide any details concerning any such agreements in response to

interrogatory No. 8. Rather, Respondent merely identifies the names and addresses of

companies and individuals with whom it has entered into unidentified agreements.

Respondent does not provide information concerning what relationship or agreement it

had or has with any specific company or individual or identify any confidentiality

agreements between Respondent and the third parties that would prevent the disclosure

18 21 TTABVUE 6.

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Cancellation No. 92066233

of the names of the companies and individuals. Moreover, in its answer to the petition to

cancel, Respondent identifies the names of companies with whom it has had

relationships, including ESPN, Lexus, and Tiffany & Co.19 Indeed, Respondent organized

polo events that were broadcast on ESPN, and therefore many of its relationships were

publicly known via those broadcasts. Unlike, for example, a list that identifies a party’s

customer names, which may be entirely undiscoverable or only discoverable in limited

form (such as in abandonment cases), see TBMP § 414, here, there is insufficient context

for the list of names provided in response to interrogatory No. 8 to maintain an “AEO”

designation.

Respondent has not shown that disclosure of the information provided in response to

interrogatory No. 8 will cause any injury to Respondent’s business, let alone a clearly

defined serious injury. As such, Respondent has failed to demonstrate good cause to

designate its response to interrogatory No. 8 as “AEO.” However, the response to

interrogatory No. 8 does include personal identifying information of certain individuals,

namely, names and addresses,20 and Respondent represents that there are concerns

about respecting the privacy of these individuals. Accordingly, although Respondent may

19 15 TTABVUE 3-5, ¶¶ 8, 12, 14.

20 “Personal identifying information” typically includes, among other things, a person’s name,

address, email address, telephone number, driver’s license number, and social security

number. See, e.g., N.Y. Lab. Law § 203–d(1)(d) (McKinney 2009) (defining “personal

identifying information”); Cal. Penal Code § 530.55 (2007) (same); Nev. Rev. Stat. Ann.

205.4617 (same); S.C. Code Ann. § 30-2-30 (1976) (same); see also Smith v. Dep’t of Labor,

798 F. Supp. 2d 274, 284 (D.D.C. 2011) (referring to “personal identifying information” as

including “a person’s name, address, phone number, date of birth, criminal history, medical

history, and social security number”). The party identifying the personal identifying

information bears the burden to support its designation under the Standard Protective Order

or its refusal to produce such information based on privacy concerns.

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not use the “AEO” designation, Respondent may redesignate the response to

interrogatory No. 8 as “Confidential” pursuant to the terms of the Standard Protective

Order.

ii. Interrogatory No. 9

Interrogatory No. 9 requests Respondent’s annual gross revenues, by year, from the

use of Respondent’s mark in the United States from the date of first use of Respondent’s

mark until the present.21 In its response, Respondent identifies its approximate total

revenue received in connection with Respondent’s use of Respondent’s mark.22

In addition to generally arguing that Respondent and Petitioner are direct

competitors and expressing the same concerns identified above for interrogatory No. 8,

Respondent urges that this information qualifies for the “AEO” designation because it

generally labels its revenues as “competitive business information including highly

sensitive financial and/or marketing information that would cause harm if disclosed to

[Petitioner].”23

Respondent, however, does not identify what harm will occur if this information is

disclosed to Petitioner or how Petitioner could misuse a figure that identifies

Respondent’s total gross revenue to date. Respondent thus has not shown that wrongful

use or disclosure of the information provided in response to interrogatory No. 9 will cause

serious injury to Respondent’s business. As such, Respondent has failed to carry its

burden of demonstrating good cause to use the heightened “AEO” designation for its

21 20 TTABVUE 20.

22 Id.

23 21 TTABVUE 5.

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response to interrogatory No. 9. However, because revenues are routinely treated as

confidential information in Board proceedings, see Bass Pro Trademarks LLC v.

Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1849 (TTAB 2008) (“Respondent is

advised that we will consider only information that is truly confidential as confidential

(e.g., sale expenditures, revenues, trade secrets, etc.).”), the response to interrogatory

No. 9 may be redesignated as “Confidential” pursuant to the terms of the Standard

Protective Order.

iii. Interrogatory No. 10

Interrogatory No. 10 requests the identity of all persons with whom Respondent or

anyone acting on Respondent’s behalf communicated regarding the use of Respondent’s

mark in the United States over the last 10 years.24 In its response, Respondent identifies

a list of individuals, with no identifying information beyond the individual’s name.25

Respondent’s arguments for designating as confidential the names listed in response

to interrogatory No. 10 are the same for designating the names listed in response to

interrogatory No. 8, some of which overlap.26 The result is also the same, because

Respondent has failed to demonstrate good cause to designate its response to

interrogatory No. 10 as “AEO.” Although there may be aspects of Respondent’s

relationships or communications with the individuals listed in response to interrogatory

No. 10 that could merit the designation of “AEO,” Respondent does not provide any

24 20 TTABVUE 21.

25 Id. at 21-22.

26 21 TTABVUE 6.

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Cancellation No. 92066233

information concerning the individuals listed to support an “AEO” designation. Instead

Respondent merely identifies the names of individuals with whom it has communicated.

Respondent has not shown that disclosure of the information will cause serious injury

to Respondent’s business, let alone a clearly defined serious injury. Accordingly, the

response to interrogatory No. 10 may not be designated as “AEO.” However, in view of

Respondent’s reasonable representation that there was an expectation of privacy for

these third parties, Respondent may redesignate the response to interrogatory No. 10 as

“Confidential” pursuant to the terms of the Standard Protective Order.

b. Respondent’s “AEO”-designated Documents

The six categories of documents whose designation as “AEO” is disputed can be

broken down into the following categories:

(i) agreements with ESPN and related documents (Bates Nos. DME000001-03,

DME000004-06, DME000007, DME000008-09, DME000010-11, DME000012,

DEM000029-31, and DME000032-43);

(ii) financing and operating agreements (Bates Nos. DME000013-019 and

DME000020-28);

(iii) documents related to sponsorship opportunities (Bates Nos. DME000044-72,

DME000073-75, DME000076, and DME000154);

(iv) daily planner entries and handwritten notes (Bates Nos. DME000077,

DME000078, DME000091-92, DME000098-153);

(v) documents related to Respondent’s plans in 2017 (DME000079-81,

DME000082, DME000083,27 DME000084-90); and

(vi) invoices (Bates Nos. DME000093-97).

27 Respondent withdrew its confidentiality designation from the document bearing Bates No.

DME000083. As such, DME000083 is not addressed in this order.

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i. Agreements with ESPN and Related Documents

Respondent produced its television agreement with ESPN (as amended) and several

documents concerning its negotiations with ESPN. The documents are dated between

September 2002 and February 2007. Respondent argues that these documents should be

designated “AEO” because Respondent and Petitioner are direct competitors,

Respondent specifically alleges that Petitioner wants to have its own series of polo

events, and the documents and information produced by Respondent “constitute

Respondent’s exclusive blueprint for the successful packaging of national sponsors for a

series of nationally televised, high-level polo tournaments.”28 Respondent fears that, by

gaining access to the documents, Petitioner could use that information to copy

Respondent’s business model and undercut Respondent’s own business.29

Petitioner argues, among other things, that the documents should be designated at

most “Confidential” and do not merit an “AEO” designation because the documents

related to ESPN are more than ten years old and the ESPN agreement is expired.30

First, Respondent’s fear that Petitioner will misuse designated information in

violation of the Standard Protective Order is again speculative. Respondent has not

produced any evidence supporting that fear. See, e.g., Deford, 120 F.R.D. at 654

(“Speculative allegations of injury from the disclosure of years-old information are not

sufficient to warrant issuance of a protective order.”).

28 23 TTABVUE 3-4, ¶ 6.

29 Id.

30 25 TTABVUE 9-10.

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Second, although both parties maintain that they are in the business of organizing

polo events,31 and therefore are considered competitors for purposes of this motion, the

age of the documents is relevant. Where commercially sensitive information is stale, this

can undermine a party’s claim that disclosure will create a competitive disadvantage.

See, e.g., Deford, 120 F.R.D. at 654 (“While staleness of the information sought to be

protected is not an absolute bar to issuance of an order, it is a factor which must be

overcome by a specific showing of present harm.”); In re Parmalat Sec. Litig., 258 F.R.D.

236, 250 (S.D.N.Y. 2009) (rejecting, in the absence of supporting evidence, party’s

argument that, from stale financial information over seven years old, a “competitor could

… target certain member firms and attempt to lure them away ... by offering them more

competitive fees”).

The ESPN agreement itself does not per se merit an “AEO” designation. Although

the ESPN agreement discloses certain financial terms of the broadcast relationship

between Respondent and ESPN, that information is stale. The ESPN agreement is more

than thirteen years old and appears to have expired more than ten years ago. The ESPN

agreement does not include a confidentiality clause, and Respondent has produced no

evidence that Respondent and ESPN had a confidentiality agreement in connection with

their contractual relationship. The ESPN agreement also does not disclose forward-

looking strategies for marketing or staging the event. As such, Respondent has failed to

carry its burden of demonstrating good cause to designate the ESPN agreement (as

amended), namely Bates Nos. DEM000029-31 and DME000032-43, as “AEO.” However,

31 1 TTABVUE 2-3, ¶ 1; 15 TTABVUE 3-4, ¶¶ 8-11.

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in view of Respondent’s representation that the ESPN agreement is non-public and that

there was an expectation of privacy with ESPN, the Board will permit Bates Nos.

DEM000029-31 and DME000032-43 to be designated as “Confidential” pursuant to the

terms of the Standard Protective Order.

The documents reflecting and summarizing the negotiations between Respondent

and ESPN stand on different footing than the ESPN agreement, as they disclose

sensitive business information and competitive business information of the type that

qualifies as “AEO,” including, for example, discussions concerning marketing,

production, and staging strategies, where such strategies could be extrapolated out to

present day use. See, e.g., Zenith Radio Corp. v. Matsushita Elec. Indus. Co., 529 F. Supp.

866, 892 (E.D. Pa. 1981) (“[O]ld business data may be extrapolated and interpreted to

reveal a business’ current strategy, strengths, and weaknesses”). As such, the following

documents related to Respondent’s negotiations with ESPN may be designated “AEO”:

Bates Nos. DME000001-03, DME000004-06, DME000007, DME000008-09,

DME000010-11, and DME000012.

ii. Financing and Operating Agreements

Respondent produced financing and operating agreements under the “AEO”

designation. These documents identify individual members of Respondent as well as the

ownership shares of each of Respondent’s members. Petitioner argues that these

documents should be designated at the lower “Confidential” level, and to the extent there

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is financial information that should not be seen by Petitioner, Petitioner argues that

those portions can be redacted.32

Under the Standard Protective Order, if a document contains “AEO” information,

then the document may be designated as such. The entirety of the document does not

have to contain “AEO” information for the designation to be appropriate. Therefore, we

reject Petitioner’s argument that we should order Respondent to redact any “AEO”

information and then de-classify the redacted document to “Confidential.” Although the

financing and operating agreements are over ten years old, they disclose the ownership

shares of each of Respondent’s members, and nothing in the record suggests that that

information is stale. As such, the financing and operating agreements, namely Bates

Nos. DME000013-019 and DME000020-28, have appropriately been designated as

“AEO.”33

iii. Documents Related to Sponsorship Opportunities

Respondent produced documents related to sponsorship opportunities and

sponsorship pitch materials under the “AEO” designation. The sponsorship documents

appear to all be from 2008. Respondent argues that Petitioner “could misappropriate

Respondent’s past pitch materials in an effort to persuade past or potential sponsors to

32 25 TTABVUE 9-10.

33 Although not required to produce redacted portions of “AEO” information or to produce

redacted copies of “AEO” information, the parties are expected to cooperate with one another

in the discovery process. See TBMP § 408.01. Such cooperation should include consideration,

as appropriate, of requests to redact information from documents designated “AEO” so that

the redacted version may be treated as “Confidential,” and thereby reviewed by parties and

counsel, not just outside counsel.

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partner with [Petitioner] instead of Respondent.”34 Respondent also argues that

Petitioner “would better understand what Respondent has offered its partners in

exchange for past sponsorship commitments, and could develop more beneficial terms”

and Petitioner “would learn the dollar amounts associated with Respondent’s past

contracts, which it could use to bid on or negotiate future relationships with

Respondent’s partners.”35

Petitioner argues that the sponsorship documents are ten years old and, in addition,

urges that these documents should not be considered confidential because they were

shared with third parties.36

Bates Nos. DME000044-72 and DME000073-75 comprise pitch materials to a specific

company, pitching that company to be a sponsor for Respondent’s 2008 polo events. The

pitch materials disclose Respondent’s marketing strategies and ways those strategies

will be executed, which is information that could be extrapolated to present use. See, e.g.,

Zenith Radio Corp., 529 F. Supp. at 892 (E.D. Pa. 1981). Such sensitive business

information is of the type that qualifies as “AEO” information. As such, Respondent

appropriately used the “AEO” designation for the pitch materials, namely Bates Nos.

DME000044-72 and DME000073-75.

Bates No. DME000076 was also appropriately designated as “AEO” because it

identifies not only the rate for the 2008 sponsorship opportunity, but also Respondent’s

34 21 TTABVUE 7.

35 Id.

36 25 TTABVUE 8-9.

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costs associated with the sponsorship. Costs specifically related to the sponsorship pitch

may be designated as “AEO.”

The final sponsorship document is Bates No. DME000154, titled “Title Sponsorship.”

It is a one-page summary of the benefits from sponsoring Respondent’s polo events. The

document includes contact information if the recipient of the document is interested in

learning more information about being a sponsor. This document does not appear to have

been targeted to any specific company. On its face, it was presumably provided to third

parties, namely potential sponsors; Respondent does not contend that it was not.

“Information which may not be designated as subject to any form of protection includes

information that is or becomes publicly available or information that has been disclosed

to the public or a third party ….” TBMP § 412.01(a); see also Noble House Home

Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1418 n.28, 1419 n.31

(TTAB 2016) (advertising and marketing proposals sent to third party were not

confidential); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458,

1460 (TTAB 2014) (“It is inconceivable that marketing materials distributed to

respondent’s purchasers and potential purchasers could be confidential documents. To

that end, we note that the marketing materials do not contain a warning or legend

advising the purchasers or potential purchasers that the marketing materials contain

trade secrets and should be kept confidential.”).

Given that the title sponsorship document was apparently shared with third parties,

Respondent did not produce any evidence of a confidentiality agreement with any

sponsors, and the document’s old age, Respondent has failed to demonstrate good cause

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to have designated it as “AEO.” However, in view of Respondent’s representation that

the document is non-public and given that it discloses the amount Respondent proposed

to charge its sponsors in 2008, Respondent may redesignate Bates No. DME000154 as

“Confidential” pursuant to the terms of the Standard Protective Order.

iv. Daily Planner Entries and Handwritten Notes

Respondent does not mention these documents in its opposition to Petitioner’s motion

or supporting declarations; nor does Respondent identify to which document requests

the daily planner entries and handwritten notes are responsive. Many of the daily

planner entries and handwritten notes comprise personal identifying information of

third parties, including phone numbers, email addresses, and physical addresses. There

is nothing on the face of the documents that would suggest that disclosure of the

documents would cause any serious injury to Respondent’s business, let alone a clearly

defined serious injury. Respondent has therefore failed to demonstrate good cause to

have designated the daily planner entries and handwritten notes as “AEO.” Accordingly,

the daily planner entries and handwritten notes, namely, Bates Nos. DME000077,

DME000078, DME00091-92, DME000098-110, DME000111-153, may not be designated

as “AEO.” However, in view of Respondent’s representation that the daily planner

entries and handwritten notes are non-public and recognizing the privacy interest of the

third parties whose personal identifying information is disclosed, the daily planner

entries and handwritten notes may be redesignated as “Confidential” pursuant to the

terms of the Standard Protective Order.

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v. Documents Related to Respondent’s Plans in 2017

Respondent produced documents related to its plans in 2017, including for a polo

event in 2017. Respondent does not mention these documents in its opposition to

Petitioner’s motion or supporting declarations. Two of the documents (DME00079-81 and

DME000084-90) appear to be announcements from publicly available third-party

sources (themorningline.com and gopolo.com) advertising upcoming polo events. There

is absolutely nothing confidential about these documents. The Board finds that these

documents should receive no designation.

The document Bates No. DME000082 comprises proposed business terms for the sale

of a trophy and license to a website in 2017. The document also includes a redacted

paragraph. Respondent does not explain why this paragraph is redacted. For the

unredacted portions of the document, Respondent has failed to demonstrate good cause

to designate the document “AEO.” However, in view of the non-public nature of the email

correspondence and proposed business terms, DME000082 may be redesignated as

“Confidential.” Unless the redacted portion is protected from disclosure, such as by the

attorney-client privilege or work product doctrine, an unredacted version should be

produced.37 If the redacted information merits the designation of “AEO” consistent with

the guidance provided in this order, then the document may be produced in unredacted

form and designated as such. Otherwise, an unredacted version should be produced and

redesignated “Confidential.”

37 If the redacted material is protected from disclosure based on the attorney-client privilege

or work product doctrine, that information should be identified on a privilege log. See Fed. R.

Civ. P. 26(b)(5)(A)(ii); see also Amazon Techs. Inc. v. Wax, 93 USPQ2d 1702, 1706 n.6 (TTAB

2009).

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vi. Invoices

Respondent does not mention these documents in its opposition to Petitioner’s motion

or supporting declarations; nor does Respondent identify to which document requests

the invoices are responsive. On their face, the invoices appear to relate to internet

hosting and domain registration services. Nothing on the face of the documents suggests

that their disclosure would cause any serious injury to Respondent’s business, let alone

a clearly defined serious injury, and Respondent does not argue that disclosure would

cause such injury. As such, Respondent has failed to demonstrate good cause to have

designated the invoices as “AEO.” However, because the invoices contain information

concerning the costs associated with Respondent’s website maintenance, Respondent

may redesignate the invoices, namely, Bates Nos. DME000093-97, as “Confidential”

pursuant to the terms of the Standard Protective Order.

6. Decision

Petitioner’s motion to challenge the confidentiality designations of Respondent’s

produced documents and certain of its interrogatory responses is GRANTED IN

PART.

Responses to interrogatory Nos. 8, 9 and 10 may be designated as “Confidential”

under the Board’s Standard Protective Order. Respondent is allowed until TEN

DAYS from the date of this order to serve the responses to interrogatory Nos. 8, 9,

and 10 with the revised designations. Consistent with the express terms of the

Standard Protective Order, the parties and their counsel are entitled to see

information designated as “Confidential.”

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Only the following documents may be designated as “Confidential – For Attorneys’

Eyes Only”: Bates Nos. DME000001-03, DME000004-06, DME000007, DME000008-

09, DME000010-11, DME000012, DME000013-019, DME000020-28, DME000044-

72, DME000073-75, DME000076. Respondent is allowed until TEN DAYS from the

date of this order to reproduce these documents with the designation of “Confidential

– For Attorneys’ Eyes Only.” Consistent with the express terms of the Standard

Protective Order, unless agreed otherwise, the parties, including in-house counsel,

are not entitled to review these documents.

The following documents were inappropriately designated as “AEO”: Bates Nos.

DEM000029-31, DME000032-43, DME000077, DME000078, DME000082,38

DME00091-92, DME000093-97, DME000098-110, DME000111-153, and

DME000154. Respondent is allowed until TEN DAYS from the date of this order to

reproduce these documents to Petitioner with the designation of “Confidential.”

Consistent with the express terms of the Standard Protective Order, the parties and

their counsel are entitled to review information designated as “Confidential.”

The following of Respondent’s document production shall receive neither of the

protected designations under the Standard Protective Order: DME00079-81 and

DME000084-90. Respondent is allowed until TEN DAYS from the date of this order

to reproduce these documents without any such designation.

The parties are again reminded that disclosure of information protected under the

terms of the Standard Protective Order is intended only to facilitate the prosecution

38 DME000082 may be redacted, as appropriate, consistent with the guidance provided supra.

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or defense of this Board proceeding. The recipient of any protected information

disclosed in accordance with the terms of the Standard Protective Order (e.g., outside

counsel, in-house counsel, employees of the parties, etc.) is obligated to maintain the

confidentiality of the information and shall exercise reasonable care in handling,

storing, using, disseminating, retaining, returning, and destroying the information.

See Standard Protective Order at ¶ 11.

7. Proceedings Resumed

Proceedings are resumed. Respondent’s motions to extend, filed October 5 and

December 5, 2018, were unnecessary and should not have been filed as the Board

issued its order suspending these proceedings on September 17, 2018. In its

suspension order, the Board noted that the deadline for serving expert disclosures

was not tolled. Accordingly, the Board’s order of December 8, 2018 (28 TTABVUE) is

VACATED. Dates are reset as set out below:

Discovery Closes 5/24/2019

Plaintiff's Pretrial Disclosures Due 7/8/2019

Plaintiff's 30-day Trial Period Ends 8/22/2019

Defendant's Pretrial Disclosures Due 9/6/2019

Defendant's 30-day Trial Period Ends 10/21/2019

Plaintiff's Rebuttal Disclosures Due 11/5/2019

Plaintiff's 15-day Rebuttal Period Ends 12/5/2019

Plaintiff's Opening Brief Due 2/3/2020

Defendant's Brief Due 3/4/2020

Plaintiff's Reply Brief Due 3/19/2020

Request for Oral Hearing (optional) Due 3/29/2020

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is

taken and introduced out of the presence of the Board during the assigned testimony

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periods. The parties may stipulate to a wide variety of matters, and many

requirements relevant to the trial phase of Board proceedings are set forth in

Trademark Rules 2.121 through 2.125. These include pretrial disclosures, matters in

evidence, the manner and timing of taking testimony, and the procedures for

submitting and serving testimony and other evidence, including affidavits,

declarations, deposition transcripts and stipulated evidence. Trial briefs shall be

submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at

final hearing will be scheduled only upon the timely submission of a separate notice

as allowed by Trademark Rule 2.129(a).

***

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