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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`
`Mailed: November 2, 2017
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`Opposition No. 91237575
`Serial No. 87214667
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`SARAH G. VOELLER
`HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
`45 SOUTH SEVENTH STREET, SUITE 2700
`MINNEAPOLIS, MN 55402
`
`Kimball Piano USA, Inc.
`
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`v.
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`PANASONIC CORPORATION
`
`
`JOHN F. EICHLER
`JOHN F. EICHLER & ASSOCIATES
`1559 S. HULL AVENUE
`WESTCHESTER, IL 60154
`
`
`ESTTA855850
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`NOTICE OF INSTITUTION
`The opposer (plaintiff) identified above has filed a notice of opposition to the regis-
`tration sought by applicant (defendant) in the above-identified application. This no-
`tice of institution is forwarded pursuant to Trademark Rules 2.105(b) and (c), and
`constitutes service of the notice of opposition on applicant. An electronic version of
`the
`notice
`of
`opposition
`is
`viewable
`on
`TTABVUE
`at
`http://ttabvue.uspto.gov/ttabvue/. See Trademark Rule 2.105(a). The parties should
`diligently monitor this proceeding via TTABVUE.
`
`APPLICANT MUST FILE ANSWER THROUGH ESTTA
`As required in the schedule below, applicant must file an answer within forty
`(40) days from the mailing date of this order. Failure to file a timely answer
`may result in the entry of default judgment and abandonment of the application.
`Regarding when a deadline falls on a Saturday, Sunday or federal holiday, see
`Trademark Rule 2.196. Applicant must file the answer through ESTTA - Electronic
`System for Trademark Trials and Appeals, unless ESTTA is unavailable due to
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`technical problems or extraordinary circumstances are present. An answer filed on
`paper under these limited circumstances must be accompanied by a Petition to the
`Director (and the required fee under Trademark Rule 2.6). See Trademark Rule
`2.106(b)(1). In substance, applicant’s answer must comply with Fed. R. Civ. P. 8(b);
`it must admit or deny the allegations in the notice of opposition, and may include
`available defenses and counterclaims. Regarding the form and content of an answer,
`see Trademark Rule 2.106(b)(2) and TBMP § 311.
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`DUTY TO MAINTAIN ACCURATE CORRESPONDENCE INFORMATION
`Throughout this proceeding, the parties, and their attorneys or representatives,
`must notify the Board of any correction or update of physical address and email ad-
`dress, and should use the ESTTA change of address form. See Trademark Rule
`2.18(b); TBMP § 117.
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`SERVICE OF ANSWER AND OF ALL SUBMISSIONS
`The service of the answer, and all other submissions in this proceeding, and of all
`matters that are required to be served but not required to be filed in the proceeding
`record, must be by email unless the parties stipulate otherwise. Trademark Rule
`2.119(b). In the absence of a stipulation, service may be by other means only under
`the limited circumstances and in a manner specified in Trademark Rule 2.119(b).
`Regarding the signing and service of all submissions, see TBMP §§ 113-113.04.
`
`The answer, and all other submissions, must include proof of service. As noted in
`TBMP § 113.03, proof of service may be in the following certificate of service form:
`
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`I hereby certify that a true and complete copy of the foregoing
`(insert title of submission) has been served on (insert name of
`opposing counsel or party) by forwarding said copy on (insert
`date of mailing), via email (or insert other appropriate method
`of delivery) to: (set out name, and address or email address of
`opposing counsel or party).
`
`Signature__________________________
`Date_______________________________
`
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`SUBMIT ALL FILINGS ONLINE VIA ESTTA
`Submissions must be filed via ESTTA, the Board’s online filing system, unless
`ESTTA is unavailable due to technical problems or extraordinary circumstances are
`present. Trademark Rule 2.126(a). Submissions may be filed in paper form only
`under the limited circumstances specified in Trademark Rule 2.126(b), with a re-
`quired written explanation. ESTTA is accessible at the Board’s web page:
`http://estta.uspto.gov/. The page has instructions and tips. ESTTA offers various
`forms, some of which may require attachments and/or a fee. For technical questions,
`a party may call 571-272-8500 (Mon. - Fri. 8:30 - 5:00 ET) or email
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`ESTTA@uspto.gov. This proceeding involves several deadlines, and due to potential
`technical issues, parties should not wait until the deadline to submit filings. The
`Board may decline to consider an untimely submission. Moreover, Trademark
`Rule 2.126 sets forth the required form and format for all submissions (e.g., page
`limitations), and the Board may decline to consider any submission that does not
`comply with this rule, including, but not limited to motions, briefs, exhibits, and
`deposition transcripts.
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`CONFERENCE, DISCOVERY, DISCLOSURE AND TRIAL SCHEDULE
`
`Time to Answer
`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures Due
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures Due
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures Due
`Plaintiff's 15-day Rebuttal Period Ends
`Plaintiff's Opening Brief Due
`Defendant's Brief Due
`Plaintiff's Reply Brief Due
`Request for Oral Hearing (option) Due
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`PARTIES ARE REQUIRED TO HOLD DISCOVERY CONFERENCE
`The parties are required to schedule and hold a discovery conference by the dead-
`line in the schedule in this order, or as reset by the Board. In the conference, the
`parties are required to discuss, at a minimum, 1) the nature and basis of their
`claims and defenses, 2) the possibility of promptly settling, or at least narrowing the
`scope of claims or defenses, and 3) arrangements for disclosures, discovery, preserv-
`ing discoverable information and introduction of evidence at trial. For guidance, see
`Fed. R. Civ. P. 26(f), Trademark Rule 2.120(a)(2)(i) and TBMP §§ 401.01 and
`408.01(a).
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`The parties must hold the conference in person, by telephone or by a means on
`which they agree. A Board interlocutory attorney or administrative trademark
`judge will participate in the conference either upon request of any party made no
`later than ten (10) days prior to the conference deadline, or when the Board deems
`it useful to have Board involvement. See Trademark Rule 2.120(a)(2)(i). A request
`
`12/12/2017
`1/11/2018
`1/11/2018
`2/10/2018
`6/10/2018
`7/10/2018
`8/24/2018
`10/8/2018
`10/23/2018
`12/7/2018
`12/22/2018
`1/21/2019
`3/22/2019
`4/21/2019
`5/6/2019
`5/16/2019
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`for Board participation must be made either through ESTTA, or by telephone call to
`the assigned interlocutory attorney named on the TTABVUE record for this pro-
`ceeding. A party requesting Board participation should first determine possible
`dates and times when all parties are available. A conference with a Board attorney’s
`participation will be by telephone in accordance with the Board’s instructions.
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`For efficiency, the parties may stipulate to various procedural and substantive dis-
`closure, discovery and trial matters (e.g., modification of deadlines and obligations)
`upon written stipulation and approval by the Board. Trademark Rule 2.120(a)(2)(iv)
`provides a non-exhaustive list of matters to which parties may stipulate. The best
`practice is to reduce all stipulations to writing. If email service is not practical, such
`as for voluminous document production in discovery, the parties should discuss in
`the conference how production will be made. The parties, and their attorneys or
`representatives, have a duty to cooperate in the discovery process. TBMP §
`408.01.
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`PROTECTIVE ORDER FOR CONFIDENTIAL INFORMATION
`The Board's Standard Protective Order is automatically imposed in all inter partes
`proceedings, and is available at: https://www.uspto.gov/trademarks-application-
`process/appealing-trademark-decisions/standard-documents-and-guidelines-0. Dur-
`ing their conference, the parties should discuss whether they will use an alternative
`or modified protective order, subject to approval by the Board. See Trademark Rule
`2.116(g) and TBMP § 412. The standard order does not automatically protect confi-
`dential information; its provisions for designating confidential information must be
`utilized as needed by the parties. Trademark Rule 2.126(c) sets forth the procedure
`for filing confidential submissions.
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`ACCELERATED CASE RESOLUTION (ACR)
`During their conference, the parties are to discuss whether they wish to seek media-
`tion or arbitration, and whether they can stipulate to the Board's Accelerated Case
`Resolution (ACR) process for a more efficient and cost-effective means of obtaining
`the Board’s determination of the proceeding. For details, and examples of ACR pro-
`ceedings,
`see
`TBMP
`§
`528,
`and
`the
`Board's
`webpage:
`http://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-
`board-ttab.
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`INITIAL DISCLOSURES AND DISCOVERY
`Regarding the deadline for and contents of initial disclosures, see Trademark Rules
`2.120(a)(1) and (2)(i), and TBMP § 401.02. Regarding deadlines for serving and re-
`sponding to discovery, see Trademark Rule 2.120(a)(3) and TBMP § 403.03. Certain
`provisions of Fed. R. Civ. P. 26 are applicable in modified form. Note that written
`discovery (interrogatories, requests for production, requests for admission) must be
`served early enough so that responses will be due no later than the close of dis-
`covery. Regarding the scope and limits of discovery, see TBMP 414; discoverable
`items may include documents, tangible things, and electronically stored information
`(ESI).
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`MOTIONS
`Certain provisions of Fed. R. Civ. P. 11 apply to all submissions in Board proceed-
`ings. See TBMP § 527.02. Regarding available motions, see TBMP Chapter 500. Re-
`garding applicable deadlines to respond to motions, depending on the motion filed,
`see Trademark Rules 2.127(a) and (e)(1). When a party timely files a potentially
`dispositive motion the proceeding is suspended with respect to all matters not ger-
`mane to the motion. See Trademark Rule 2.127(d). In addressing motions or other
`filings, if it appears to the Board that a telephone conference would be beneficial, or
`upon request of one or both parties, the Board may schedule a conference. See
`Trademark Rule 2.120(j)(1) and TBMP § 502.06(a).
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`PRETRIAL DISCLOSURES, TRIAL AND BRIEFING
`Regarding the procedures and deadlines for pretrial disclosures and trial, and spe-
`cifically the noticing, taking, serving and submitting of evidence and testimony, see
`Trademark Rules 2.120(k), 2.121, 2.122, 2.123 and 2.125, as well as TBMP Chapter
`700. The parties should review these authorities. For example: witness testimony
`may be submitted in the form of affidavit or declaration subject to the right to oral
`cross examination; transcripts of testimony depositions, with exhibits, must be
`served on each adverse party within thirty (30) days after completion of taking the
`testimony; certified transcripts and exhibits must be filed, with notice of such filing
`served on each adverse party; and all notices of reliance must be submitted during
`the submitting party's assigned testimony period and must indicate generally the
`relevance the evidence and associate it with one or more issues.
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`Main briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An
`oral hearing is not required, but will be scheduled upon separate notice timely filed
`pursuant to Trademark Rule 2.129(a). Regarding briefs and oral hearings, see
`TBMP §§ 801-802.
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`LEGAL RESOURCES AVAILABLE AT WEB PAGE
`For a general description of Board proceedings, see TBMP §102.03. Proceedings are
`governed by the Trademark Rules of Practice in Parts 2 and 7 of Title 37 of the
`Code of Federal Regulations. These rules, the Manual of Procedure (TBMP), infor-
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`mation on Accelerated Case Resolution (ACR) and Alternative Dispute Resolution
`(ADR), and many Frequently Asked Questions, are available on the Board’s web
`page, at:
`http://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-
`board-ttab. The parties should check the web page for important changes, an-
`nouncements, etc., many of which apply to proceedings already in progress.
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`PARTIES NOT REPRESENTED BY COUNSEL
`This proceeding is similar to a civil action in a federal district court and can be
`complex. The Board strongly advises all parties to secure the services of an attor-
`ney who is familiar with trademark law and Board procedure. The Board cannot aid
`in the selection of an attorney. See TBMP § 114.02. The Board requires strict com-
`pliance with all applicable authorities whether or not the party is represented by
`counsel.
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`NOTIFY BOARD OF ALL PENDING ACTIONS
`If the parties are, or during the pendency of this proceeding become, parties in an-
`other Board proceeding or a civil action involving the same or related marks, or in-
`volving any issues of law or fact which are also in this proceeding, they shall notify
`the Board immediately. See Trademark Rule 2.106(b)(3)(i). The Board will consoli-
`date and/or suspend related Board proceedings, as appropriate. See Trademark
`Rule 2.117(c); TBMP §§ 510 and 511.
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