IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

CW Multimedia Corporation, Chris A. Webb,

James J. Yelich
Opposer,

Opposition No. 91186527

v.

Mark:

Application Serial No. 77441634

Xtreme Productions LLC,

Applicant.

OPPOSERS MOTION FOR SANCTIONS

COMES NOW Opposers CW Multimedia Corporation, Chris A. Webb, and James J.
Yelich (collectively Opposers) and pursuant to T.B.M.P. 527, Trademark Rule 2.120(g)(1),
and Rule 37(b)(2) of the Federal Rules of Civil Procedure moves for sanctions against Applicant
Xtreme Productions LLC (Applicant) for failure to comply with its discovery obligations and
with the Boards order of September 1, 2009. In support of this Motion, Opposers state as
follows:

BACKGROUND & FACTS

Opposers served their first interrogatories and requests for production on Applicant on
December 23, 2008, with a response deadline of January 27, 2009. See Exhibits A and B to
Motion to Compel (Docket Doc. 5). Counsel for Opposers makes it a practice to highlight the
applicability of the Boards standard protective order on the front page of all discovery requests,
and did so in this case. See Exhibit B at p.1 to Motion to Compel (Docket Doc. 5).
Counsel for Applicant requested a two month extension of time to respond to Opposers

first discovery due to an extended absence by counsel for Applicant. Opposers counsel
consented via email to a five week extension, until March 3, 2009, noting that Applicant was
represented by counsel at a firm with numerous attorneys capable of working on this matter in
his absence.
On March 3, 2009, Applicant served Applicants Responses to Opposers First
Interrogatories and Applicants Response to Opposers First Set of Requests for Production of
Documents and Things. See Exhibits C and D to Motion to Compel (Docket Doc. 5).
Applicants responses contained no documents, and contained numerous objections on the
grounds of confidentiality. Applicants responses also contained numerous claims of privilege
and no privilege log.
On March 17, 2009, Counsel for Opposers sent a letter to Applicant noting the
application of the Boards standard protective order to this case; noting the inappropriateness of
Applicants objections based on confidentiality; and noting that Applicant had produced no
documents. See Exhibit E to Motion to Compel (Docket Doc. 5). Applicants March 17, 2009
letter requested a response by March 31, 2009. Id. The March 17 letter also noted that while
counsel for Applicant provided proposed changes to the standard protective order more than
three months following the initial discovery conference, Opposers would agree to a revised
protective order which was emailed to counsel for Applicant on March 12, 2009.
On April 1, 2009, Opposers counsel sent a second letter via facsimile to Applicant
indicating that Applicant had not responded to Opposers March 17, 2009 letter and had not
signed the proposed protective order. See Exhibit F to Motion to Compel (Docket Doc. 5).
On April 30, 2009, Opposers filed a Motion to Compel discovery responses. Docket
Doc. 5. Applicant did not file a response. On September 1, 2009, the Board granted the Motion

Opposition No. 91186527: OPPOSERS MOTION FOR SANCTIONS

p.2

to Compel and ordered Applicant to serve amended responses to opposers first set of
interrogatories and first set of document production requests, without objection, TWENTY (20)
days from the mailing date. failing which opposer may move for discovery sanctions in the
form of judgment pursuant to Trademark Rule 2.120(g)(1).
More than nine months have passed since Opposers served their discovery requests.
To date, Applicant has not produced any documents, has not served any amended
responses, has not responded substantively to the March 17 letter, and has not responded to
Opposers attempts to resolve the discovery issues. See attached Declaration of Erik M. Pelton,
Esq. regarding this background and Opposers good faith effort to resolve this discovery dispute
without interference from the Board pursuant to 37 C.F.R. 2.120(e) and TBMP 523.02.

ARGUMENT & RELIEF REQUESTED

Pursuant to TBMP 527.01(a), If a party fails to comply with an order of the Board
relating to discovery, including a protective order or an order compelling discovery, the Board
may enter appropriate sanctions, as defined in 37 CFR 2.120(g)(1). In a situation where there
has been continuing avoidance of discovery, the Board will enter a default judgment against the
disobedient party. Unicut Corporation v. Unicut, Inc., 220 USPQ 1013 (TTAB 1983).
The law is clear that if a party fails to comply with an order of the Board relating to
discovery, including an order compelling discovery, the Board may order appropriate sanctions
as defined in Trademark Rule 2.120(g)(1) and Fed. R. Civ. P. 37(b)(2), including entry of
judgment. Baron Philippe de Rothschild S.A. v. Styl Rite Optical Mfg. Co., 55 USPQ2d 1848
(TTAB 2000); Unicut Corp. v. Unicut, Inc., 222 USPQ 341 (TTAB 1984); and TBMP 527.01.

Opposition No. 91186527: OPPOSERS MOTION FOR SANCTIONS

p.3

Applicant has clearly failed to comply with its discovery obligations and with the
Boards September 1, 2009 order. Sanctions including judgment against Applicant are
appropriate.
Opposers move this Board to enter judgment for Opposers pursuant to Trademark Rule
2.120.
Opposers further move this Board for any other relief it deems appropriate.

WHEREFORE, Opposers respectfully request that the Trademark Trial and Appeal
Board grant the Motion for Sanctions, enter judgment for Opposers, and grant all other
appropriate relief.

Dated this 29th day of September, 2009.

Erik M. Pelton
ERIK M. PELTON & ASSOCIATES, PLLC
PO Box 100637
Arlington, Virginia 22210
TEL: (703) 525-8009
FAX: (703) 525-8089
Attorney for Opposers

Opposition No. 91186527: OPPOSERS MOTION FOR SANCTIONS

p.4

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
CW Multimedia Corporation, Chris A. Webb,
James J. Yelich
Opposer,

Opposition No. 91186527

v.

Mark:

Application Serial No. 77441634

Xtreme Productions LLC,

Applicant.

DECLARATION OF ERIK M. PELTON, ESQ.

I, Erik M. Pelton, Esq., declare as follows:
1.

I represent Opposers CW Multimedia Corporation, Chris A. Webb, and James J.

Yelich in this matter.

2.

I have knowledge of the facts set forth herein and in Opposers Motion for

Sanctions.
3.

Opposers First Set of Interrogatories and First Requests for Production were

served on Applicant on December 23, 2008.

4.

On March 17, 2009, I mailed and faxed counsel for Applicant a letter seeking

regarding Applicants inappropriate objections and failure to provide complete responses to

numerous interrogatories and requests for production.
5.

On April 1, 2009, I faxed counsel for Applicant a follow up letter noting that no

response has been received to my March 17, 2009 letter.

6.

As of April 30, 2009, Applicant has not completely responded to Opposers First

Set of Interrogatories and Opposers First Requests for Production or to the specific issues raised

Opposition No. 91186527: OPPOSERS MOTION FOR SANCTIONS

p.5

in counsels March 17, 2009 and April 1, 2009, letters.

7.

As of September 28, 2009, Applicant has not produced any documents nor

proposed any date and time for the inspection and copying of responsive documents.
8.

Pursuant to 37 C.F.R. 2.120(e) and TBMP 523.02, I have made a good faith

effort to resolve the issues presented by Applicants objections and lack of responses to
Opposers First Set of Interrogatories and Opposers First Requests for Production.
9.

Additional details regarding the nature and dates of these good faith efforts are

contained in Opposers Motion to Compel filed April 30, 2009; in the March 17, 2009 and April
1, 2009, letters attached as Exhibits E and F to the Motion to Compel; and in the Motion for
Sanctions attached herewith.

I declare under penalty of Perjury that all of the foregoing is true and correct.

Dated: September 29, 2009

Erik M. Pelton, Esq.

Opposition No. 91186527: OPPOSERS MOTION FOR SANCTIONS

p.6

CERTIFICATE OF SERVICE
I hereby certify that a true and accurate copy of OPPOSERS MOTION FOR
SANCTIONS has been served on the following by delivering said copy on September 29, 2009,
via First Class Mail, postage prepaid, to counsel for Applicant at the following address:

MARC M. GORELNIK
TOWNSEND AND TOWNSEND AND CREW LLP
2 EMBARCADERO CTR FL 8
SAN FRANCISCO, CA 94111-3833

By:
Erik M. Pelton, Esq.

Opposition No. 91186527: OPPOSERS MOTION FOR SANCTIONS

p.7

USPTO. ESTTA. Receipt

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ESTTA Tracking number:

Filing date:

ESTTA308605
09/29/2009

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding

91186527

Party

Plaintiff
CW Multimedia Corporation, Chris A. Webb, James J. Yelich

Erik M. Pelton
Erik M. Pelton & Associates, PLLC
Correspondence PO Box 100637
Address
Arlington, VA 22210
UNITED STATES
uspto@tm4smallbiz.com
Submission

Motion for Sanctions

Filer's Name

Erik M. Pelton

Filer's e-mail

uspto@tm4smallbiz.com

Signature

/ErikMPelton/

Date

09/29/2009

Attachments

CELEBSCALLU - Opposers Motion for Sanctions - FINAL.pdf ( 7 pages

)(39959 bytes )

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