RLP Ventures, LLC v. Panini America, Inc.

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

THIS ORDER 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

September 29, 2023

ADH

Opposition No. 91268816

RLP Ventures, LLC

v.

Panini America, Inc.

Ashley D. Hayes, Interlocutory Attorney:

This case now comes up for consideration of Applicant’s motion (filed March 28,

2023) to strike exhibits attached to Opposer’s notice of reliance and referenced in the

testimony declaration of Ramona Prioleau, Opposer’s founder (“Prioleau

Declaration”). 46 TTABVUE.1

I. Background

Applicant seeks to register on the Principal Register the standard character mark

MOSAIC for “Collectible trading cards; Sports trading cards” in International Class

16.2 Opposer opposes registration of Applicant’s mark on the ground of likelihood of

1 Citations to the record or briefs in this order are to the publicly available documents on

TTABVUE, the Board’s electronic docketing system. See Turdin v. Trilobite, Ltd., 109

USPQ2d 1473, 1476 n.6 (TTAB 2014). The number preceding “TTABVUE” corresponds to the

docket entry number; the number(s) following “TTABVUE” refer to the page number(s) of

that particular docket entry.

2 Application Serial No. 88953368, filed June 8, 2020, pursuant to Trademark Act Section

1(a), 15 U.S.C. § 1051(a), and alleging March 1, 2017, as the date of first use anywhere and

first use in commerce.

Opposition No. 91268816

confusion with its previously used and registered mark MOSAEC for “[p]rinted

instructional, educational, and teaching materials in the field of foreign languages

and cross-cultural communication; [f]iction books on a variety of topics; [n]on-fiction

books on a variety of topics,” in International Class 16,3 and “[e]ntertainment

services, namely, providing information by means of a global computer network in

the fields of celebrities, entertainment, and popular culture,” among other services in

International Class 41.4 1 TTABVUE. Discovery in this proceeding closed May 6,

2022. 14 TTABVUE 9. Opposer’s trial period closed March 6, 2023. 37 TTABVUE 8.5

Opposer timely filed four trial declarations, 40 TTABVUE (confidential) and 44

TTABVUE (public), and a notice of reliance with 1814 pages of attachments spread

over the following four entries: 38 TTABVUE (confidential) with 774 pages; 39

TTABVUE (confidential) with 195 pages; 43 TTABVUE (public) with 289 pages; and

55 TTABVUE (public) with 556 pages.6

3 Registration No. 5664353, issued January 29, 2019.

4 Registration No. 5409856, issued February 27, 2018.

5 Because Opposer’s trial period was set to end on March 4, 2023, 37 TTABVUE 8, which was

a Saturday, Opposer’s submissions filed the following Monday, March 6, 2023, were timely.

See Trademark Rule 2.196, 37 C.F.R. § 2.196; TRADEMARK TRIAL AND APPEAL BOARD

MANUAL OF PROCEDURE (TBMP) § 112 (2023).

6 Opposer’s notice of reliance with attached exhibits at 41 TTABVUE (comprised of 556

pages), was re-filed in its entirety on June 24, 2023, 55 TTABVUE (also comprised of 556

pages), in response to the Board’s June 14, 2023 order requiring that Opposer correct the

format of attachments submitted upside down or sideways in the original filing. 54

TTABVUE.

Opposer also filed under seal 21 pages comprised of four unmarked and undated documents

identified on the cover sheet as “Confidential Plaintiff's Supporting Evidence/Exhibits.” 42

TTABVUE. Notwithstanding that title, the documents therein are not identified as exhibits

to either the notice of reliance or the testimony declarations. Inasmuch as 42 TTABVUE

appears to duplicate documents submitted with the notice of reliance at Exhibit X (documents

produced by Opposer in response to Applicant’s request for production of documents), which

2

Opposition No. 91268816

II. Opposer’s Evidence Improperly Filed Under Seal Without

Public Version

Before turning to Applicant’s motion to strike, the Board addresses the 990 pages

of trial exhibits (774 pages at 38 TTABVUE, 195 pages at 39 TTABVUE), and the

four testimony declarations (40 TTABVUE) filed under seal.

Board proceeding files are to be publicly available with the exception of

information properly filed under seal. See Trademark Rule 2.27(d)-(e), 37 C.F.R.

§ 2.27(d)-(e). Trademark Rule 2.125(f), 37 C.F.R. § 2.125(f), allows the Board to order

that “any part of an affidavit or declaration [ ] or any exhibits that directly disclose

any trade secret or other confidential research, development, or commercial

information may be filed under seal and kept confidential under the provisions of

§ 2.27(e).”

Trademark Rule 2.126(c), 37 C.F.R. § 2.126(c), provides:

To be handled as confidential, submissions to the

Trademark Trial and Appeal Board that are confidential in

whole or part pursuant to [Trademark Rule 2.125(f), 37

C.F.R.] § 2.125(f) must be submitted using the

‘Confidential’ selection available in ESTTA or, where

appropriate, under a separate paper cover. [ ] A copy of the

submission for public viewing with the confidential

portions redacted must be submitted concurrently.

When filing documents containing confidential information, only where “almost

every page” of a multi-page document contains some confidential material, might it

be reasonable to “submit the entire document under seal.” TBMP § 412.04.

are available for public view at 43 TTABVUE 2-21, we will assume the filing was inadvertent

and give it no further consideration.

3

Opposition No. 91268816

“Occasions when a whole document or motion/brief must be submitted

under seal should be very rare.” Id. (Emphasis in original.). Accordingly, the

encouraged practice for submitting a confidential filing is to submit under seal a

document including only the confidential information that is redacted in the public

submission. See TBMP § 703.01(p) (“[O]nly the particular exhibits or deposition

transcript pages of the testimony affidavit, declaration or deposition that disclose

confidential information should be filed under seal pursuant to a protective order.”);

TBMP § 502.02(c) (“[O]nly the particular portion of a motion that discloses

confidential information should be electronically designated as ‘CONFIDENTIAL’ in

ESTTA . . . .”).7

Opposer appears to have filed all of its evidence under seal, notwithstanding that

only a limited number of documents are actually identified as confidential. Moreover,

in only one instance is it clear that Opposer filed the required public version of the

documents filed under seal. TTABVUE entries 40 (confidential) and 44 (public) are

both 33 pages and appear to be identical except the entry at 44 TTABVUE contains

redactions expected in the public version.8

7 In addition, in the confidential submissions, parties are strongly encouraged to enclose

confidential information in brackets to better mark the specific information to be kept

confidential. This facilitates a better comparison between the public and confidential versions

of the submissions when the Board is preparing a final decision, and will reduce the likelihood

that the Board inadvertently may include confidential matter in a final decision or an order

on a motion. See TBMP § 703.01(p).

8 The Board has changed the names of the entries for 40 and 44 TTABVUE to clearly reflect

that they are the public and confidential versions of the same document.

4

Opposition No. 91268816

The ESTTA cover sheet for 38 TTABVUE, filed under seal, indicates that only two

documents (X6 Exhibit X-D and X9 Exhibit X-N) are confidential:

There is no matching public entry with 774 pages and redacted information.9

The ESTTA cover sheet for 39 TTABVUE, also filed under seal, indicates that only

two documents (X12 Exhibit X-Q and X22 Exhibit X-W) are confidential:

9 To the extent 55 TTABVUE is intended as the corrected public version of 38 TTABVUE

(confidential), Exhibits X-D and X-N are not included therein in redacted form, nor is there

any reference to their being filed in their entirety under seal. Similarly, while not identified

as confidential on the cover sheet for 38 TTABVUE, Exhibits J, R, S, and V, which bear

confidential designations, are not included in 55 TTABVUE in redacted form, nor is there

any indication therein they were filed in their entirety under seal.

5

Opposition No. 91268816

There is no matching public entry with 195 pages and redacted information.10

In view of the foregoing, Opposer is allowed to file, within TWENTY (20) DAYS

from the date of this order, the redacted versions of its confidential submissions at 38

and 39 TTABVUE, and clearly indicate on the respective transmittal pages

“REDACTED COPY OF CONFIDENTIAL ENTRY 38” and “REDACTED COPY OF

CONFIDENTIAL ENTRY 39,” failing which the confidential entries may be treated

as part of the public record, consistent with the Board’s general policy that all

submissions in a proceeding be public.11 See Ayoub, Inc. v. ACS Ayoub Carpet Serv.,

118 USPQ2d 1392, 1398 n.39 (TTAB 2016).

III. Timeliness

Procedural objections to testimony and evidence must be raised promptly to allow

an opportunity to cure. See Empresa Cubana Del Tabaco d.b.a. Cubatabaco v. General

Cigar Co., 2022 USPQ2d 1242, *8 n.21 (TTAB 2022) (citing Moke Am. LLC v. Moke

USA LLC, 2020 USPQ2d 10400, at *4 (TTAB 2020)), rev’d on other grounds sub nom.,

Moke Am. LLC v. Am. Custom Golf Cars, Inc., 2023 WL 3232601 (E.D. Va., May 3,

2023)); see also TBMP § 707.02(b) and cases cited therein. Procedural objections to

evidence submitted by notice of reliance ordinarily must be lodged “before the opening

of the next testimony period following that in which the material was offered into the

10 To the extent 43 TTABVUE is intended as the public version of the remaining exhibits to

the notice of reliance, Exhibits X-Q and X-W are not included therein in redacted form, nor

is there any reference to their being filed in their entirety under seal.

11 In this regard it also appears that much of the evidence filed under seal comprises publicly

available information improperly designated as confidential. Opposer should review TBMP

§ 412.01 regarding proper designation and over-designation of matter as confidential.

6

Opposition No. 91268816

record.” Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1040 (TTAB 2010); see also

FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1235 (TTAB

2014) (Considering applicant’s motion to strike portions of opposer’s notice of reliance

filed the day prior to the opening of applicant’s testimony period.). Procedural

objections to declaration testimony ordinarily are to be made or filed no later than

the twenty days permitted for a defending party to elect cross-examination. See Moke

Am. LLC, 2020 USPQ2d 10400, at *6. The purpose behind requiring a party to timely

assert objections which are curable is to allow the proffering party a fair opportunity

to meet the objections by evidentiary submissions during the periods set for trial. See

Moke Am. LLC, 2020 USPQ2d 10400, at *5.

Applicant’s motion to strike, 46 TTABVUE, was filed twenty-two days after

Opposer submitted its trial evidence but prior to the opening of Applicant’s testimony

period as last reset, 37 TTABVUE 8-9, making it one day late with respect to

objections to the declaration testimony.12 See Moke Am. LLC, 2020 USPQ2d 10400,

at *6. However, in view of the amount and irregular organization of Opposer’s

evidence, the Prioleau Declaration’s reliance on the exhibits attached to the notice of

reliance, and the mere one-day delay, the Board finds it appropriate to exercise its

discretion to consider Applicant’s motion in its entirety. Cf. DrDisabilityQuotes.com,

LLC v. Krugh, 2021 USPQ2d 262, *2 (TTAB 2021) (Declining to enter judgment and

12Twenty days after Opposer filed its trial evidence fell on Sunday, March 26, 2023.

Accordingly, Applicant was allowed until the following Monday, March 27, 2023, to file a

motion to strike related to Opposer’s declaration testimony. See Trademark Rule 2.196;

TBMP § 112.

7

Opposition No. 91268816

considering motion to dismiss filed one-day after the date by which respondent’s

response to the petition to cancel was due.); Carano v. Vina Concha Y Toro S.A., 67

USPQ2d 1149, 1149 n.1 (TTAB 2003) (Board considers late paper “[i]n view of the de

minimis amount of time the brief was late, and the potentially dispositive nature of

[the] motion.”).

A brief in response to a motion to strike testimony or evidence must be filed within

twenty days from the date of service of the motion to strike, unless another time is

specified by the Board. See Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a). In view

thereof, Opposer’s response to Applicant’s March 28, 2023 motion to strike was due

on or before April 17, 2023. Opposer did not file its response until April 24, 2023,

making it untimely by one week. Moreover, delay appears to be a pattern with

Opposer. In prior orders, the Board found Opposer was not timely in responding to

discovery requests, 14 TTABVUE, and not timely in submitting a complete motion

for summary judgment. 37 TTABVUE 1–4. In contrast to considering Applicant’s

motion, filed only one day late by a party with no pattern of missing deadlines, the

Board will not consider Opposer’s response, filed seven days late and from a party

with a history of missing deadlines.13

13 Opposer embedded in its April 24, 2023 response to Applicant’s motion to strike Opposer’s

trial evidence, 53 TTABVUE 1–2, a “motion to strike” Applicant’s July 19, 2022 motion to

strike exhibits submitted with Opposer’s prior motion for summary judgment, on the basis

that Opposer failed to re-file the submission to correct pages submitted sideways or upside

down, as required by the Board’s April 12, 2023 order. Opposer’s April 24, 2023 motion to

strike was submitted after this proceeding was suspended for Applicant’s motion to strike

Opposer’s trial evidence, is not related thereto, and accordingly, will not be considered.

Moreover, Opposer’s April 24, 2023 motion seeks to strike matter that the Board previously

determined would not be considered. 37 TTABVUE 3–4.

8

Opposition No. 91268816

Nonetheless, inasmuch as Opposer’s late response to Applicant’s motion to strike

demonstrates Opposer did not intend to concede the motion, the Board exercises its

discretion to determine the merits of the motion rather than grant it as conceded. See

Trademark Rule 2.127(a); see, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1760

n.1 (TTAB 2009).

IV. Motion to Strike Opposer’s Trial Exhibits14

Applicant seeks to strike exhibits attached to Opposer’s notice of reliance and

referenced in the Prioleau Declaration on the basis that the evidence fails to comply

with the Board’s procedural rules, lacks foundation and/or proper authentication, as

an estoppel sanction, and based on substantive objections to the evidence.15

A. Applicant’s Motion for Estoppel Sanction Denied

To the extent Applicant argues that Opposer’s trial exhibits should be stricken as

an estoppel sanction under Fed. R. Civ. P. 37(c)(1), made applicable to Board

proceedings by Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a), a motion to strike

evidence on that basis contends that a party failed to provide information in

discovery, or provided an untimely supplement, and is barred by those actions from

using that information or witness at trial, unless the failure to disclose was

14 The Board has carefully considered Applicant’s brief and arguments but addresses the

record only to the extent necessary to set forth its analysis and findings. See Guess? IP Holder

LP v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).

15 Although Applicant requests that “the Board strike Opposer’s Exhibits and Declaration

from the record [ ] on the grounds that Opposer’s Notice of Reliance and exhibits consist of

hundreds of pages of irrelevant and improperly filed documents,” 46 TTABVUE 2, Applicant

failed to provide any basis for striking Exhibits A-C, Y and Z in its brief. Moreover, Exhibit

C, identified as the file for the subject Application, is automatically of record, and accordingly,

need not have been submitted by notice of reliance, nor may it be stricken from the record by

any action of the parties. See Trademark Rule § 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).

9

Opposition No. 91268816

substantially justified or is harmless. See Great Seats, Inc. v. Great Seats Ltd., 100

USPQ2d 1323, 1326 (TTAB 2011). Here, Applicant’s motion fails to identify any

specific discovery requests served on Opposer that required the production of the

specified exhibits. In addition, Applicant failed to support its motion with copies of

the relevant disclosures or discovery requests. Accordingly, there is no factual

predicate for finding a failure to provide requested information. In view of the

foregoing, Applicant’s motion to strike exhibits as an estoppel sanction is denied.

B. Opposer’s Notice of Reliance Stricken with Leave to Re-file

The Trademark Rules of Practice, which govern inter partes trademark

proceedings before the Board, provide that specific types of evidence do not require

testimony by a witness, but are considered self-authenticating and may be introduced

in evidence by filing a notice of reliance on the material being offered. 16 See Coach

Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1718-19

(Fed. Cir. 2012). Under the Trademark Rules, so long as a notice of reliance indicates

generally the relevance of the evidence and associates the evidence with one or more

issues in the proceeding, the notice of reliance may be used to submit trademark

registrations (Trademark Rule 2.122(d)(2), 37 C.F.R. § 2.122(d)(2)), printed

publications, official records, and Internet evidence (Trademark Rule 2.122(e), 37

C.F.R. § 2.122(e)),17 and an adverse party’s written initial disclosures, answers to

16 A notice of reliance is essentially a cover sheet to identify the materials sought to be

introduced pursuant to Trademark Rule 2.122(g), 37 C.F.R. § 2122(g), and provide the

statement of relevance required for admission thereunder. See TBMP § 704.02.

17 Internet evidence that may be introduced by notice of reliance includes websites,

advertising, business publications, annual reports, and studies or reports prepared for or by

a party or non-party, as long as they can be obtained through the Internet as publicly

10

Opposition No. 91268816

interrogatories, and admissions made in response to a request for admission, together

with a copy of the underlying interrogatory and request for admission (Trademark

Rule 2.120(k), 37 C.F.R. § 2.120(k)).18 Because evidence which is not self-

authenticating requires identification and foundation necessarily provided by a

witness, an offering party cannot use a notice of reliance “for any or all ‘exhibits.’”

Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 (TTAB 2015). “A Notice of Reliance

may only be used for the specific categories of documents set out in the relevant

rules.” Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1592

(TTAB 2011) (citations omitted), judgment set aside on other grounds, 110 USPQ2d

1679 (TTAB 2014).

In this case, Opposer dumped into the record a large number of documents not

admissible by notice of reliance, namely Applicant’s discovery requests made to

available documents. See TBMP § 704.08(b) and cases cited therein. Internet evidence filed

by way of a notice of reliance, without further witness testimony, will be considered only for

what it shows on its face, rather than for the truth of what is printed therein, which

constitutes hearsay. See Spiritline Cruises LLC v. Tour Mgmt, Servs., Inc., 2020 USPQ2d

48324, at *2 (TTAB 2020) (Internet printouts and other materials properly introduced under

a notice of reliance without supporting testimony are considered only for what they show on

their face rather than for the truth of the matters asserted.).

18 Document requests do not have a rule analogous to Trademark Rule 2.120(k)(5), 37 C.F.R.

§ 2.120(k)(5). The Trademark Rules provide that “[a] party who has obtained documents from

another party through disclosure or under Rule 34 of the Federal Rules of Civil Procedure

may not make the documents of record by notice of reliance alone” unless they are admissible

by notice of reliance under the provisions of Trademark Rule 2.122(e), or “the party has

obtained an admission or stipulation from the producing party that authenticates the

documents.” Trademark Rule 2.120(k)(3)(ii), 37 C.F.R. § 2.120(k)(3)(ii). The Board, however,

may consider written responses to requests for production of documents to the extent the

responses state that no documents exist. See City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion

OPGI Inc., 106 USPQ2d 1668, 1674 n.10 (TTAB 2013) (Responses to document requests are

admissible solely for purposes of showing that a party has stated that there are no responsive

documents.).

11

Opposition No. 91268816

Opposer (Exhibits F, G, T); Opposer’s own disclosures and discovery responses

(Exhibits D, L-M, O-P, R-S, U-W); and Opposer’s documents responsive to Applicant’s

document requests (Exhibit X). See 55 TTABVUE 3-7 (notice of reliance, public) and

38 TTABVUE (exhibits, confidential), 39 TTABVUE (exhibits, confidential), 43 and

55 TTABVUE (exhibits, public). Opposer’s submission exceeds 1,800 pages.

Opposer’s choices to misuse the circumscribed procedures for shielding

confidential documents from public view and for admitting into evidence a select

group of self-authenticating documents has created an untenable situation for the

Board. With no clearly identified corresponding public version of the more than 900

pages of documents submitted under seal, the Board cannot easily point to specific

corresponding nonconfidential and confidential evidence in its final decision.

Moreover, with so much evidence inadmissible by notice of reliance, Opposer has

made it difficult for the Board to locate the evidence which will be considered, leaving

the Board to separate the wheat from the chaff and ferret out possibilities in

Opposer’s effective document dump;19 an unnecessary burden and waste of the

Board’s limited resources. Cf. Clintec Nutrition Co. v. Baxa Corp., 988 F. Supp. 1109,

44 USPQ2d 1719, 1723 n.16 (N.D. Ill. 1997) (A “court will not pour over the documents

to extract the relevant information.”).

19 Moreover, Opposer needlessly complicated the Board’s (and opposing counsel’s) ability to

easily identify exhibits in the record by assigning its previously used letter designations A-

AA for the sub-exhibits to Exhibit X, and then filing the sub-exhibits with cover pages

identifying each exhibit as only Exhibit A, B, C, etc., rather than X-A, X-B, etc., as designated

in the notice of reliance.

12

Opposition No. 91268816

In view of the foregoing, the Board sua sponte strikes Opposer’s notice of reliance

for failure to confine its exhibits to those permitted under the rules. Cf. Coach Servs.

Inc., 101 USPQ2d at 1718–19 (Board did not abuse its discretion by excluding opposer

corporation’s annual reports from the record in opposition proceeding on ground that

reports were not admissible through notice of reliance.). To be clear, striking this

evidence but allowing Opposer to file a proper amended notice of reliance that

complies with the Board’s rules should reduce the pages of exhibits submitted

therewith by nearly half, preventing the Board’s unnecessary review of hundreds of

pages of documents.

In general, the failure to comply with Trademark Rule 2.122(g) is a curable defect

that does not require reopening the testimony period to allow for such cure. See

Barclays Cap. Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1165 (2017). As

specified at the end of this order, Opposer is allowed a short period in which to file an

amended notice of reliance confined to only those exhibits timely submitted during

its trial period and permissible under the notice of reliance rules, namely Exhibits A-

C (registrations), E (Applicant’s initial disclosures), H-K, N, Q (Opposer’s discovery

requests to Applicant and Applicant’s responses), X (Internet materials only),20 Y-Z

(official records) and AA-AB (Internet materials).

20 While the Board will not address each of the 25 sub-exhibits submitted as Exhibit X, which

consists of more than 500 pages, see 38 TTABVUE (confidential), 39 TTABVUE (confidential),

43 and 55 TTABVUE (public), the Board notes several of the documents therein consist of

Internet evidence. Such documents are admissible by notice of reliance only so long as: (i) the

date of publication (or date each document was accessed and printed) and its source (URL)

are provided, and (ii) the relevance of each document is explained. See Trademark Rules

2.122(e), 2.122(g); Safer, Inc., 94 USPQ2d at 1039.

13

Opposition No. 91268816

To the extent Opposer submits an amended notice of reliance, Opposer must

submit therewith a copy of each exhibit identified therein. Opposer’s trial period

having closed, no new documents may be submitted by notice of reliance,21 nor may

new testimony declarations be filed, except for purposes of rebuttal. See Illyrian

Import, Inc. v. ADOL Sh.p.k., 2022 USPQ2d 292, at *9 (TTAB 2022) (discussing what

is proper vs. improper rebuttal evidence). Accordingly, for each exhibit submitted

with any amended notice of reliance, Opposer must state in the amended notice of

reliance where in the record the exhibit was previously submitted during its

testimony period by identifying the TTABVUE docket number and page number

within the docket entry (e.g., ___ TTABVUE ___ ). For any exhibit that was previously

filed under seal only, Opposer must provide the TTABVUE docket number (e.g., ___

TTABVUE). The Board will not consider any evidence that is not identified by a

If Opposer chooses to file an amended notice of reliance, the description of Exhibit X should

be amended from the impermissible “Exhibits served by Opposer upon Applicant with respect

to Applicant’s Request for Production,” to “Internet materials,” or the type of Internet

material, with the exhibits appropriately curtailed, the URL and access dates clarified for

each Internet page, and an explanation of the relevance of the materials provided as required

by Trademark Rule 2.122(g), discussed in Section IV(C) infra.

Several other sub-exhibits to Exhibit X are inappropriate for submission by notice of

reliance, such as, for example, the calendar excerpts in sub-exhibits X-R and X-S, 43

TTABVUE 110-119, and “sales tracker” documents in sub-exhibits X-T and X-U, id. at 130-

274, and accordingly, required witness testimony for admission.

21 The Board notes that Opposer’s notice of reliance does not identify under Exhibit X a sub-

exhibit X-E or X-F. 55 TTABVUE 6. To the extent these exhibits were inadvertently omitted,

Opposer may not submit them with any amended notice of reliance inasmuch as Opposer’s

trial period is closed. See Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a) (“No testimony shall

be taken or evidence presented except during the times assigned, unless by stipulation of the

parties approved by the Board, or upon motion granted by the Board, or by order of the

Board.”).

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TTABVUE docket number, and for the public submissions, a page number within the

docket entry.

Opposer is reminded that with the exception of an adverse party’s discovery

responses designated as confidential by that adverse party, the documents eligible

for submission by notice of reliance (i.e., registrations, official records, generally

available printed publications and Internet materials) are publicly available, not

confidential, and should not be filed under seal. If exhibits to any amended notice of

reliance are confidential, Opposer must file both a public version (with confidential

matter redacted) and a confidential version of the amended notice of reliance. Only

confidential exhibits are to be attached to the confidential version of the amended

notice of reliance.

Because Opposer’s original notice of reliance is stricken in its entirety, if Opposer

fails to file an amended notice of reliance, no exhibits to the original notice of reliance,

even those which could be eligible for admission by notice of reliance, will be

considered unless they are properly authenticated by declaration testimony or are

automatically of record in this proceeding pursuant to Trademark Rule 2.122(b)(1) or

2.122(d)(1), 37 C.F.R. § 2.122(d)(1).

C. Amended Notice of Reliance Must Comply with the Board’s

Applicable Rules

Inasmuch as the Board has stricken Opposer’s original notice of reliance in its

entirety, Applicant’s remaining objections thereto are moot.22 Nevertheless, in view

22 Nevertheless, to the extent Applicant argues Opposer’s exhibits to the notice of reliance

should be stricken because they are irrelevant or constitute hearsay, such substantive

objections that are not subject to cure normally should be raised in or with the objecting

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Opposition No. 91268816

of providing Opposer leave to file an amended notice of reliance, the Board notes the

following with respect Applicant’s objections to Exhibits E, H-K, N, Q, X (Internet

materials only), and AA-AB to Opposer’s original notice of reliance.

Trademark Rule 2.122(g) provides that “for all evidence offered by notice of

reliance, the notice must indicate generally the relevance of the evidence and

associate it with one or more issues in the proceeding.” 37 C.F.R. § 2.122(g). To meet

this requirement, the offering party should associate the materials with a specific

factor relevant to a specific and pleaded claim or defense, or a specific fact relevant

to determining a particular claim or defense. See FUJIFILM SonoSite, Inc., 111

USPQ2d at 1236 (citing Safer Inc., 94 USPQ2d at 1039-40); see also TBMP § 704.02.

If the propounding party introduces a group of documents to support more than one

element of a claim or defense, or more than one relevant fact, it should indicate the

specific elements or facts supported by each document in the group. See FUJIFILM

SonoSite, Inc., 111 USPQ2d at 1236; Safer, 94 USPQ2d at 1039-40. Failure to identify

the relevance of the evidence with sufficient specificity in the notice of reliance cover

sheet is a procedural defect that can be cured by the offering party within the time

set by Board order. See Trademark Rule 2.122(g).

Applicant objects to Exhibits E, H-K, N, Q, X (Internet materials only), and AA-

AB to the original notice of reliance on the basis that they are improperly “introduced

party’s brief on the case or in an appendix or separate statement of objections attached to the

brief, rather than by motion to strike. See TBMP § 707.02(c). To the extent substantive

objections are raised by motion to strike, consideration thereof is ordinarily deferred because

a determination thereon typically requires review of the trial evidence, which the Board will

not undertake prior to final decision. See Icon Health & Fitness, Inc. v. Eifit LLC, 2022

USPQ2d 315, at *4 (TTAB 2022).

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by a generic description that states the document is relevant to the issue of likelihood

of confusion, the issue of priority, and/or the issue of natural zone of expansion.”23 46

TTABVUE 3. Applicant’s objection is well founded. First, the omnibus statement of

relevance fails to indicate the specific element supported by each document. See

FUJIFILM SonoSite, Inc., 111 USPQ2d at 1236-37; Safer, Inc., 94 USPQ2d at 1040.

Second, although associating a particular document with the issues of priority and/or

the natural zone of expansion would be sufficient to comply with Trademark Rule

2.122(g), Opposer’s statement of relevance also associates the exhibits with the issue

of “likelihood of confusion” generally, rather than with any particular, additional

likelihood of confusion factor. See FUJIFILM SonoSite, Inc., 111 USPQ2d at 1236

(notice of reliance should associate materials with specific likelihood of confusion

factor).

In view of the foregoing, to the extent Opposer files an amended notice of reliance,

Opposer is allowed to cure its statement of the relevance for the exhibits or sub-

exhibits therein and associate each document with a specific element or fact in the

case.

Applicant may file written objections to Opposer’s amended notice of reliance (if

warranted). Opposer should not expect a second opportunity to cure procedural

defects.

23 Although Applicant also objected to Exhibits F, G, and T on the basis that they lack a

sufficient statement of relevance, as set forth in Section IV(B) supra, Exhibits F, G, T, (as

well as Exhibit X [excluding Internet materials]) are not admissible by notice of reliance and

are already stricken.

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If Opposer does not file an amended notice of reliance, there is no need for

Applicant to renew its objections to Opposer’s original notice of reliance in its brief on

the case because Opposer’s original notice of reliance has been stricken.

D. Applicant’s Objections to Exhibits to the Prioleau Declaration

The Prioleau declaration includes averments as to Opposer’s adoption and use of

its mark and also references each exhibit submitted by notice of reliance. 44

TTABVUE 1-9, 40 TTABVUE (confidential). No exhibits are attached to the

declaration. Id.

1. Applicant’s Substantive Objections Deferred

To the extent Applicant argues Opposer’s exhibits referenced in the Prioleau

Declaration should be stricken because they are irrelevant or constitute hearsay,24

consideration of these substantive objections cannot be determined without a review

of the evidence. See Icon Health & Fitness, Inc., 2022 USPQ2d 315, at *4 (“[I]t has

long been the policy of the Board not to read trial testimony or review other trial

evidence prior to final decision”). Accord FUJIFILM SonoSite, Inc., 111 USPQ2d at

1237 n.4; Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1233 (TTAB 1992); TBMP

§§ 502.01, 707.03(c)(2). Accordingly, determination of these objections is deferred by

the Board until final hearing.

24 To be clear, an objection to evidence on the basis that it constitutes hearsay is a substantive

objection distinct from an objection that the proffering party failed to lay a proper foundation

for admission of the evidence pursuant to an exception to the rule against hearsay set forth

in Federal Rule of Evidence 803, which is procedural, and must be seasonably raised to allow

an opportunity to cure. See Moke Am. LLC, 2020 USPQ2d 10400, at *14-15.

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2. Leave to Cure Applicant’s Procedural Objections Allowed

Turning to Applicant’s procedural objections to the exhibits to the Prioleau

Declaration, Applicant’s motion to strike states “Opposer incorporated into the

Declaration [of Ramona Prioleau] the same set of exhibits introduced in Opposer’s

Notice [of Reliance],” 46 TTABVUE 2, and “Opposer’s Declaration improperly

references and relies upon the same exhibits from Opposer’s Notice of Reliance

without laying a foundation for any of the cited exhibits. For this reason, all those

exhibits in Opposer’s Notice and Declaration should be stricken . . . .” Id. at 6.

The Board adopted the rule accepting testimony by declaration with the intent of

providing the same procedural and due process protections afforded by testimony by

deposition. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD

RULES, 81 Fed. Reg., 69950, 69964 (Oct. 7, 2016) (Notice of Final Rulemaking) (“The

new procedure [allowing testimony by affidavit or declaration] retains what the

Supreme Court focused on in B&B Hardware, Inc. v. Hargis Indus., Inc., [575 U.S.

138], 113 USPQ2d 2045 (2015): That testimony be under oath and subject to cross-

examination. The ability to elect cross-examination of the witness in the new

unilateral procedure maintains the fairness and weightiness of Board

proceedings.”).25 One of these protections, if a timely objection to the testimony

25 Accord Ricardo Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *3 (TTAB 2019)

(“The declaration is not hearsay, as it contains Ms. Coutu’s trial testimony (the equivalent of

live testimony ‘in court.’)”); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at

*2-3 (TTAB 2019) (“Trademark Rule 2.123(a)(1) permits an affiant or declarant witness

located in the United States to be cross-examined only by oral examination.”); Barclays Cap.

Inc., 124 USPQ2d at 1167 (“Moreover, the fact that a party may now submit unilaterally the

testimony of its witnesses in the form of an affidavit or a declaration, the result of which the

adverse party must bear the costs of cross-examination if elected, does not affect how evidence

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affidavit or declaration is filed,26 is the ability to promptly cure procedural defects in

the testimony. See Moke Am. LLC, 2020 USPQ2d 10400, at *5 (“An objection to

foundation raised for the first time in a trial brief is untimely because the party

offering the testimony (whether by deposition, affidavit or declaration) does not have

the opportunity to cure the alleged defect.”).

Because the Board will not read the testimony until trial, the proffering party may

seek the opportunity to cure procedural objections. See Moke Am. LLC, 2020 USPQ2d

10400, at *6 (“The defending party should file the objection with the Board when

made, to put the Board on notice that it made a timely objection and the party offering

the witness may seek to extend or reopen testimony to cure the defect.”). In the

alternative, if the proffering party determines the procedural objection is without

merit, it may stand on its original submission. See Icon Health & Fitness, Inc., 2022

USPQ2d 315, at *14 (“[A] party may seek to reopen its testimony period in the face

of a curable objection as to authentication in order to supplement its testimony.

Opposer did not seek to do so here. Instead, Opposer stands on its declarations and

is presented to the Board, that is, outside of its presence followed by submission to a panel of

judges for final decision.”); U.S. Postal Serv. v. RPost Commc’n Ltd., 124 USPQ2d 1045, 1046

(TTAB 2017) (“Oral cross-examination of declarants submitted in the form of an affidavit or

declaration under the amended rules is conducted like cross-examination of witnesses

providing testimony by deposition, except the cross-examination does not immediately follow

an oral examination as it would in a deposition, but follows a notice of election of cross-

examination and is to be completed within thirty days of the notice of election.”).

26 “The defending party may seasonably raise the objection in different ways where the

testimony is by declaration or affidavit depending on the circumstances of the case,” namely

(i) seek oral cross-examination and raise an objection to the testimony or exhibit on the

deposition record, (ii) serve an objection on the party proffering the declaration or affidavit,

filing a copy with the Board and asserting the objection in its trial brief, or (iii) file a motion

to strike “no later than the twenty days permitted for the defending party to elect cross-

examination.” Moke Am. LLC, 2020 USPQ2d 10400, at *6.

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contends that authenticity is established . . . .”). Whether the proffering party seeks

to cure, or stands on its original submission, the Board will defer its decision on the

objection until final decision. Id.

Because a party’s declaration testimony is intended to function as the equivalent

of oral testimony, the Board must be flexible in applying the standard for reopening

testimony for the purpose of supplementing testimony to address a curable defect

such as lack of authentication or foundation. Under the Board’s usual analysis for

reopening a period for taking action under Fed. R. Civ. P. 6(b)(1)(B), as established

by Pioneer Inv. Sers. Co. v. Brunswick Assocs. Ltd. P’ship, 507 U.S. 380, 395 (1993),

the relevant circumstances to show excusable neglect include: (1) the danger of

prejudice to the nonmovant, (2) the length of the delay and its potential impact on

judicial proceedings, (3) the reason for the delay, including whether it was within the

reasonable control of the movant, and (4) whether the movant acted in good faith.

The submission of procedurally deficient evidence such as documents without

adequate foundation generally will be a matter within the reasonable control of the

proffering party. However, during oral testimony, a contemporaneous objection to the

introduction of a document by a witness would not require a showing of excusable

neglect before allowing a cure. The proffering party would be able to amend its

testimony to meet the objection immediately.27 Accordingly, when reopening

27 That is, the cure would be immediate if the procedural defect was capable of cure by the

same witness. To be clear, introducing evidence through a witness with no personal

knowledge of the evidence, or otherwise incompetent to establish the proper foundation for

the evidence, is not a procedural defect. A Board order crafting a method to cure procedural

defects in testimony by declaration that is analogous to the ability to cure procedural defects

in testimony by deposition is not intended to allow any substantive addition to the evidence.

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testimony for the purpose of supplementing testimony to address a curable defect,

the Board bears in mind its interest in providing an equitable opportunity to cure

procedural defects equivalent to that accorded a witness providing oral testimony.

See Pioneer Inv. Sers. Co., 507 U.S. at 395 (“[T]he determination [of excusable neglect]

is at bottom an equitable one, taking account of all relevant circumstances

surrounding the party’s omission.”).

In the unique circumstances of this case, in which nearly all of Opposer’s case has

been improperly submitted, the Board will not further delay this proceeding by

requiring Opposer to file a motion to reopen to cure the testimony laying the

foundation for exhibits in the Prioleau Declaration. Proceedings already are delayed

to allow Opposer to file an amended notice of reliance following the Board’s decision

to strike Opposer’s original notice of reliance in its entirety. Under the unusual

evidentiary circumstances of this case, and for the reasons set forth below, the Board

sua sponte reopens Opposer’s testimony period for the sole purpose of allowing

Opposer, if it finds it necessary, to file a supplemental declaration by Ramona

Prioleau curing alleged procedural defects raised by Applicant in her foundation

testimony for the exhibits referenced in her original declaration, by laying a proper

foundation for any such document previously submitted during Opposer’s main trial

period.28 Opposer’s trial period having closed, no substantive information may be

In other words, a motion to reopen testimony to allow testimony by a new witness, new

substantive statements by the same witness, or to introduce new documents would be subject

to the traditional Pioneer analysis.

28 While the Board has the discretion to set a time for a party to cure an alleged procedural

defect in a testimony declaration without an accompanying motion to reopen, the opportunity

for the proffering party to cure such an alleged procedural defect is not automatic. If the

22

Opposition No. 91268816

added to the supplemental declaration of Ramona Prioleau and no new exhibits may

be attached, except for proper rebuttal during Opposer’s rebuttal testimony period.29

See Illyrian Import, Inc., 2022 USPQ2d 292, at *9.

If Opposer does not file a supplemental declaration from Romana Prioleau as

permitted herein, Applicant must renew its foundation objections to the original

Prioleau Declaration in its brief on the case. The Board will address properly raised

substantive grounds for exclusion in its final decision, provided the objections are

raised at trial, failing which they will be considered waived. See Icon Health &

Fitness, 2022 USPQ2d 315, at *19; Wet Seal Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629,

1632 (TTAB 2007).

If Opposer does file a supplemental declaration from Ramona Prioleau, Applicant

has twenty days from that submission to file and serve a notice of election to cross-

examine, written objections, or a motion to strike any supplemental declaration, if

proffering party wishes to cure an alleged procedural defect in a testimony declaration, the

proffering party remains responsible for requesting that the testimony period be reopened.

29 If Opposer submits an amended notice of reliance restricted to Exhibits A-C, E, H-K, N, Q,

Y-Z, and AA-AB, and any Internet materials previously submitted during Opposer’s trial

period, there is no need to lay a foundation for admission of those documents in the

supplemental declaration. Furthermore, the Board notes Applicant’s additional objection to

paragraphs 18-45, 48, and 54-55 of the Prioleau Declaration as improperly referencing

exhibits for which Ms. Prioleau failed to lay a foundation. 46 TTABVUE 6. Because Opposer

may cure the foundation objections to the exhibits, the Board will not further address

Applicant’s objections to paragraphs 18-45, 48, and 54-55 of the Prioleau Declaration. To the

extent Opposer does not file a supplemental declaration to cure the foundation objections as

allowed herein, the objection to paragraphs 18-45, 48, and 54-55 of the Prioleau Declaration

will be addressed at final hearing if Applicant renews the objection in its trial brief.

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Opposition No. 91268816

warranted. If this is the case, Opposer should not expect a second opportunity to cure

procedural defects.30

V. Summary; Proceeding Resumed

Applicant’s motion to strike Opposer’s trial exhibits as an estoppel sanction is

denied.

The Board sua sponte strikes Opposer’s notice of reliance for failure to confine its

exhibits to those permitted under the rules.

Applicant’s motion to strike Opposer’s trial exhibits submitted with the notice of

reliance on grounds that the exhibits: (i) are inappropriate for submission by notice

of reliance; (ii) are not supported by a sufficient statement of relevance; and (iii) are

irrelevant or hearsay, are moot.

Applicant’s motion to strike Opposer’s trial exhibits submitted with the Prioleau

Declaration and paragraphs 18-45, 48, and 54-55 of the Prioleau Declaration related

thereto is deferred with respect to substantive and procedural objections.

Opposer is allowed until TWENTY (20) DAYS from the date of this order to take

the following action:

• file redacted versions of its confidential submissions at 38 and 39 TTABVUE;

• file an amended notice of reliance restricted to Exhibits A-C, E, H-K, N, Q, Y-

Z, AA-AB, and any Internet materials already submitted during Opposer’s

30 However, if Applicant chooses to cross-examine Ramona Prioleau as to testimony in the

supplemental declaration and raises objections to foundation during that deposition, Ms.

Prioleau would have the usual opportunity to cure procedural defects during the deposition.

See Moke Am LLC, 2020 USPQ2d 10400, at *6.

24

Opposition No. 91268816

main trial period as part of Exhibit X, with an amended statement of each

document’s relevance;31 and

• file a supplemental declaration by Ramona Prioleau to cure any failure to lay

a proper foundation for admission of the exhibits submitted during Opposer’s

main trial period and referenced in the original Prioleau Declaration (except

those that are self-authenticating and admissible by notice of reliance).

This cure is restricted to documents already of record. Opposer’s testimony period

is closed. No new documents may be submitted, no new testimony declarations may

be submitted, and no substantive information may be added in any supplemental

declaration of Romana Prioleau, except for proper rebuttal evidence filed during

Opposer’s rebuttal testimony period.

If Opposer files an amended notice of reliance, Applicant is allowed TWENTY (20)

DAYS from that submission to file and serve a motion to strike; if Opposer files a

supplemental declaration from Ramona Prioleau, Applicant is allowed TWENTY

(20) DAYS from that submission to file and serve a notice of election to cross-

examine, motion to strike, or written objections.

If Opposer does not respond to this order, Opposer’s materials submitted under

seal with no redacted version for public view may be treated as public information;

its notice of reliance remains stricken, and, if Applicant renews its objections in its

trial brief, all documents submitted during Opposer’s trial period will be considered

only if Applicant’s objections to the original Prioleau Declaration are overruled, with

the exception of documents submitted with the testimony declarations of Kescia I.

31 Opposer is reminded that for Internet materials submitted pursuant to Trademark Rule

2.122(g), the entire URL at which the document was accessed must be provided, as well as

the date of access. See Trademark Rule 2.122(e)(2).

25

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Prioleau, Dr. Pamela Perry, and Samantha Miller, 44 TTABVUE 11–33 (public), 40

TTABVUE (confidential), which were not the subject of Applicant’s motion to strike,

and any documents automatically of record in this proceeding pursuant to Trademark

Rule 2.122(b)(1) and 2.122(d)(1).32

This proceeding is resumed. Remaining trial dates are reset as set forth below.

Defendant's 30-day Trial Period Ends 12/23/2023

Plaintiff's Rebuttal Disclosures Due 1/7/2024

Plaintiff's 15-day Rebuttal Period Ends 2/6/2024

Plaintiff's Opening Brief Due 4/6/2024

Defendant's Brief Due 5/6/2024

Plaintiff's Reply Brief Due 5/21/2024

Request for Oral Hearing (optional) Due 5/31/2024

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

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, 37 C.F.R. §§ 2.121-2.125. These include

pretrial disclosures, the manner and timing of taking testimony, matters in evidence,

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),

32 The parties are reminded that in their trial briefs, they should refer to the evidentiary

record using TTABVUE. That is, the parties are to provide the docket entry number and the

pages at which the evidence being relied upon may be found. See TBMP § 801.03.

26

Opposition No. 91268816

37 C.F.R. §§ 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), 37 C.F.R. § 2.129(a).

27