Frito-Lay North America, Inc.v.Princeton Vanguard, LLC

Trademark Trial and Appeal Board

Nov 16, 2011

No. 91195552 (T.T.A.B. Nov. 16, 2011)

MBA Mailed: November 16, 2011

Opposition No. 91195552
Cancellation No. 92053001

Frito-Lay North America,
Inc.

v.

Princeton Vanguard, LLC

Michael B. Adlin, Interlocutory Attorney:
This case now comes up for consideration of applicant’s
motion, filed June 7, 2011, to compel opposer to supplement
its responses to applicant’s document requests, primarily by
producing electronically-stored information and documents
(“ESI”). The motion is fully briefed.1 On September 21 and
27, 2011, the Board held teleconferences with the parties to
hear additional argument on the motion, at which Susan J.
Hightower appeared on opposer/petitioner Frito-Lay North
America, Inc.’s (“opposer”) behalf and David H. Bernstein
appeared on applicant/respondent Princeton Vanguard, LLC’s
(“applicant”) behalf.

1 In addition, on July 11, 2011, the parties filed a
stipulation to extend the deadline for expert disclosures, which
is approved. Trademark Rule 2.127(a). Both parties filed and
served expert disclosures on September 16, 2011.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a
Precedent of the TTAB
Opposition No. 91195552 and Cancellation No. 92053001
2
Background and Undisputed Facts
Applicant owns a Supplemental Register registration for
the mark PRETZEL CRISPS, in standard characters and with
PRETZEL disclaimed, for “Pretzel crackers,”2 and seeks a
Principal Register registration of the same mark for the
same goods, under Section 2(f).3 In both its petition to
cancel and its notice of opposition, opposer alleges that:
(1) “Opposer and others in the snack food industry have a
present and prospective right to use the term ‘pretzel
crisps’ generically and/or descriptively in their business;”
and (2) applicant’s involved mark is generic. In its notice
of opposition, opposer pleads as an additional ground that
applicant’s mark is “merely descriptive” and has not
acquired distinctiveness. Applicant denies the salient
allegations in opposer’s pleadings.
During their discovery conference in July 2009, the
parties discussed ESI discovery, and agreed on the format in
which ESI would be produced (.pdf format). However, the
parties did not otherwise reach agreement with respect to
the discovery or production of ESI.4 For example, the

2 Supplemental Registration No. 2980303, involved in
Cancellation No. 92053001, issued July 26, 2005 from an
application filed April 21, 2004.
3 Application Serial No. 76700802, involved in Opposition No.
91195552, filed December 11, 2009, alleging first use anywhere
and in commerce on October 6, 2004.
4 The parties conducted the discovery conference in connection
with Opposition No. 91190246, an earlier-filed, related case
between the parties which was consolidated with these proceedings
prior to its dismissal. Applicant’s former counsel represented
Opposition No. 91195552 and Cancellation No. 92053001
3
parties did not agree on a protocol for identifying and
segregating potentially responsive ESI, did not agree on who
should review the ESI to determine whether the production of
particular documents or information would be appropriate and
did not agree on methods of searching the ESI, such as the
use of “keywords,” to identify documents and information
responsive to each other’s discovery requests. Suffice it
to say, the parties had entirely different views concerning
ESI discovery.
In any event, on April 1, 2010, the parties exchanged
initial sets of written discovery requests, and both parties
requested the production of ESI. Specifically, in the
“Definitions and Instructions” accompanying its discovery
requests, applicant stated that “[c]omputer files should be
provided in electronic form on CD-ROMs in the first instance
rather than printouts on paper,” and opposer’s “Definitions
and Instructions” indicate that “[t]hese requests require
[applicant] to produce all documents and electronically
stored information in [applicant’s] ‘possession, custody, or
control.’” Declaration of Ryan Scott Mellon, one of
applicant’s attorneys (“Mellon Dec.”) Exs. A and C.
Despite the parties’ failure to reach agreement on ESI
discovery and production (other than the format for any ESI

applicant at the discovery conference, following which
applicant’s current counsel entered an appearance.

Opposition No. 91195552 and Cancellation No. 92053001
4
actually produced), during the Spring and Summer of 2010,
applicant commenced producing documents responsive to
opposer’s discovery requests, including ESI, on a “rolling”
basis. Mellon Dec. ¶¶ 6, 8. Applicant claims that it
initially identified “more than 1,650,000 electronic files”
of potential relevance, that its counsel “manually reviewed”
over 85,000 of these electronic files and that in 2010
alone, applicant incurred “approximately $200,000” in fees
associated with electronic discovery. Declaration of
Rebecca Cross, one of applicant’s attorneys (“Cross Dec.”),
¶¶ 2-7. Ultimately, applicant produced over 40,000
electronic documents in 2010. Applicant’s e-discovery
efforts continue, and applicant anticipates producing “tens
of thousands of additional documents in upcoming months.”
The “combined fees” for applicant’s “document collection and
production efforts in 2011 are anticipated to be over
$100,000,” in addition to the “approximately $200,000”
already incurred. Id. ¶¶ 8-12; Applicant’s Motion p. 11.
Opposer also began producing documents during the
Spring and Summer of 2010, but opposer’s document production
was and remains much less robust than applicant’s. In fact,
according to applicant, opposer’s “production contained no
emails, and no internal non-public documents,” other than “a
summary spreadsheet of sales data and an internally-
generated list of trademarks.”
Opposition No. 91195552 and Cancellation No. 92053001
5
Before applicant filed its motion to compel, the
parties adequately “met and conferred” through multiple
discussions and correspondence, as required by Trademark
Rule 2.120(e)(1), in an attempt to resolve their discovery
dispute. During the parties’ negotiations, applicant
“emphasized the need for additional discovery material,”
including especially “electronic files,” claiming that
opposer’s ESI discovery efforts were insufficient, in that
opposer did not conduct “attorney-managed electronic data
retrieval and search.” Mellon Dec. ¶ 9 and Ex. H.
Opposer argued, however, that while it conducted a
“reasonable investigation to locate, gather and produce
documents reasonably responsive” to applicant’s discovery
requests, including by identifying document custodians and
asking them to search their own files and computers,
attorney-supervised searches for ESI “on the computers of
employees who received [opposer’s] document retention
notice” would cost opposer an additional $70,000-$100,000,
“an expense that would far outweigh the benefit of any
information in determining the matters at issue in this
proceeding.” Id. Ex. E. Opposer specifically declined to
“take forensic images” of its employees’ computers. Opposer
conceded, however, that “industry usage and meaning” of the
term “pretzel crisps” is “relevant” to whether applicant’s
mark is generic or merely descriptive. Id. Ex. G.
Opposition No. 91195552 and Cancellation No. 92053001
6
On February 9, 2011, the Board denied opposer’s motion
for summary judgment that applicant’s involved mark is
generic.
The Parties’ Contentions
Applicant argues that opposer’s “failure to conduct an
attorney-supervised ESI retrieval, search (using appropriate
keywords) and review has substantially prejudiced
[applicant’s] ability to defend” this proceeding. Applicant
claims that “[n]o cost, burden or other reason allows
[opposer] to rely on custodians to search their own files
where the results of that policy are clearly insufficient,”
especially because opposer is a “snack food behemoth,” while
applicant is a “much smaller competitor.” More
specifically, applicant argues that opposer “cannot now
decline to carry out the kind of attorney-supervised ESI
collection and review that [applicant] has undertaken,” and
in connection with which applicant incurred significant
costs, much greater than the $70,000-$100,000 which opposer
would deem excessive. Finally, applicant specifically
claims that it is entitled to discovery regarding how
opposer’s “businesspeople assess the pretzel cracker market
(in which [opposer] was a player),5 their consideration of

5 There appears to be no dispute that opposer previously
offered a “pretzel cracker” product under the mark PRETZEL WAVES
which competed with applicant’s PRETZEL CRISPS product. Opposer
no longer offers PRETZEL WAVES pretzel crackers.
Opposition No. 91195552 and Cancellation No. 92053001
7
the PRETZEL CRISPS mark and products, and the names and
terms they use in discussing these subjects.”
Opposer argues, however, that applicant is engaged in
an “ongoing ‘document dump,’ already totaling 137,220
pages.” Opposer faults applicant for not working with
opposer to avoid an “excessive production” and questions why
applicant did not investigate how to “control costs by
identifying Applicant’s most relevant documents for
production.” Opposer also points out that “in recent years”
applicant or its affiliate Snack Factory, Inc. have been
involved in federal court litigation, apparently related to
the PRETZEL CRISPS mark or product, and suggests that
applicant may have engaged in ESI discovery, and incurred
the associated costs, in connection with the federal
litigation, prior to commencing closely-related ESI
discovery in this case.
As for its own discovery efforts, opposer claims to
have “identified nineteen of its employees deemed most
likely to have information relevant to this proceeding … and
instructed them to search their records, including
electronically stored information, using categories keyed to
Applicant’s requests.” Opposer asserts, however, that the
information which could be obtained through “forensic
imaging” of the custodians’ (i.e. employees’) computers is
“not reasonably accessible,” and that the cost of obtaining
Opposition No. 91195552 and Cancellation No. 92053001
8
it “far outweighs any need for the information,” given that
opposer’s claims pertain solely to applicant’s mark, and
that opposer “has not used or considered using” the term
pretzel crisps.6 Opposer also argues that much of the
information applicant seeks relates not to whether
applicant’s mark is descriptive or generic, but instead to
“competitive business issues between the parties,” who are
direct competitors, and that applicant’s discovery requests
“constitute a fishing expedition” for this irrelevant
information. More specifically, opposer claims that its
production is sufficient under the circumstances of this
case, and that it has only declined to produce “trade secret
business information which has no bearing on the genericness
of ‘pretzel crisps’ as used by Applicant” (emphasis in
original).7
Decision
Before addressing the adequacy of opposer’s ESI
discovery efforts, and the specific document requests at
issue, it should be pointed out that while the federal
courts routinely wrestle with e-discovery disputes, and have

6 Opposer alleges in its notice of opposition that it has a
“present and prospective right to use” the term “pretzel crisps,”
but alleges in opposition to applicant’s motion to compel that it
“has not considered” using the term. Applicant’s motion to
compel does not require an assessment of whether opposer has, or
has adequately pleaded, standing.
7 The Board’s standard protective order governs this
proceeding by operation of Trademark Rule 2.116(g).

Opposition No. 91195552 and Cancellation No. 92053001
9
done so for many years, e-discovery disputes have been
relatively rare in Board proceedings. This is most likely
due, in large part, to the Board’s limited jurisdiction,
under which the Board “is empowered to determine only the
right to register.” TBMP § 102.01 (3d ed. 2011)(emphasis
supplied). In fact, as opposer points out, the scope of
discovery in Board proceedings is generally narrower than in
court proceedings, especially court proceedings involving
allegations of infringement, and/or in which both parties
are, unlike here, making extensive use of their marks. In
short, it is not surprising (nor is it improper) that
opposer generally treats discovery in Board proceedings
differently than discovery in other types of trademark
litigation,8 and it is well-settled that opposer “need not
provide discovery of [ESI] from sources that [it] identifies
as not reasonably accessible because of undue burden or
cost.” TBMP § 402.02 (3d ed. 2011)(quoting Fed. R. Civ. P.
26(b)(2)(B)).
On the other hand, ESI must be produced in Board
proceedings where appropriate, notwithstanding the Board’s
limited jurisdiction and the traditional, i.e. narrow, view

8 For example, opposer claimed during the teleconferences that
it does not generally impose a “litigation hold” after a Board
proceeding is commenced, but generally does so upon the
commencement of a federal court trademark action. Declaration of
Lisa H. Barouh, Senior Manager in Opposer’s Compliance
Department, ¶ 4. Opposer eventually imposed a litigation hold in
this case.
Opposition No. 91195552 and Cancellation No. 92053001
10
of discovery in Board proceedings. Fed. R. Civ. P.
26(f)(3)(C), 26(b)(2)(B), 34(b)(1)(C) and 34(b)(2)(D);
TBMP §§ 402.02, 406.03 and 406.04(b) (3d ed. 2011).
Furthermore, as applicant points out, discovery inevitably
imposes burdens and costs, and opposer, which chose to bring
this case, “has a duty” to satisfy the legitimate “discovery
needs of its adversary.” TBMP § 408.01 (3d ed. 2011).
Moreover, this appears to be a significant case for both
parties. Indeed, the parties are direct competitors, and
applicant claims, and opposer does not dispute, that PRETZEL
CRISPS is by far applicant’s most important and successful
product. In addition, both parties have retained expert
witnesses, at what is likely great expense, a relative
rarity in Board proceedings.
Were Opposer’s ESI Production Efforts Adequate as a
General Matter?

Neither the Federal Rules nor the Trademark Rules
prescribe how extensive ESI discovery should be. Rather,
“electronic discovery should be a party-driven process.”
Aguilar v. Immigration and Customs Enforcement, 255 F.R.D.
350, 358 (S.D.N.Y. 2008) (citing Fed. R. Civ. P.
26(f)(3)(C)); Trademark Rule 2.120(a)(1). See also, The
Sedona Principles for Electronic Document Production (Second
Edition) Principle No. 3 (available at
http://www.thesedonaconference.org/content/miscFiles/TSC_PRINCP_2
nd_ed_607.pdf) (“Parties should confer early in discovery
Opposition No. 91195552 and Cancellation No. 92053001
11
regarding the preservation and production of electronically
stored information when these matters are at issue in the
litigation and seek to agree on the scope of each party’s
rights and responsibilities.”).9 As stated in the 2006
Advisory Committee Note to Fed. R. Civ. P. 26(f),
“discussion [of ESI discovery] at the outset may avoid later
difficulties or ease their resolution.”
Here, however, while the parties discussed ESI
discovery during their discovery conference and thereafter,
they reached agreement only on the form of production prior
to responding to each other’s discovery requests. Having
failed to reach agreement with opposer on many of the most
crucial ESI-related issues in advance of the parties’
productions, applicant cannot fairly insist now, after the
fact, that opposer must start its ESI search and production
over, this time engaging in a process similar to
applicant’s, especially where opposer characterizes
applicant’s efforts as excessive rather than merely
extensive. And the mere fact that applicant chose on its
own to engage in broad, expensive ESI collection, review and
production similar to or repetitive of discovery it conducts
in federal court actions is simply not a basis upon which to

9 Federal courts have referred to the Sedona Conference as
“the leading authorit[y] on electronic document retrieval and
production.” See e.g., Ford Motor Co. v. Edgewood Properties,
Inc., 257 F.R.D. 418, 424 (D.N.J. 2009).

Opposition No. 91195552 and Cancellation No. 92053001
12
compel opposer to do the same in this Board proceeding. Nor
does opposer’s failure “to conduct an attorney-supervised
ESI retrieval, search (using appropriate keywords) and
review” in the manner applicant proposes mean that opposer’s
ESI discovery efforts were necessarily inadequate under the
circumstances of this case.
Indeed, in the federal courts (where discovery is
generally expected to be more extensive than in Board
proceedings), there is an increasing focus on the question
of proportionality, and on whether the type of extensive ESI
discovery applicant advocates here is always justified.
See, Sedona Principles Comment 2.b (“Electronic discovery
burdens should be proportional to the amount in controversy
and the nature of the case. Otherwise, transaction costs
due to electronic discovery will overwhelm the ability to
resolve disputes fairly in litigation.”).
For example, our primary reviewing court recently
issued “An E-Discovery Model Order,” to address, among other
things, “the disproportionate cost of e-discovery” in patent
cases, in which discovery is often broader than in Board
proceedings. See An E-Discovery Model Order, p. 2, at
http://pdfserver.amlaw.com/nlj/The%20State%20of%20Patent%20Litiga
tion%20w%20Ediscovery%20Model%20Order.pdf. The preface to the
Model Order explains its purpose:
Excessive e-discovery, including
disproportionate, overbroad email
Opposition No. 91195552 and Cancellation No. 92053001
13
production requests, carry staggering
time and production costs that have a
debilitating effect on litigation.
Routine requests seeking all categories
of Electronically Stored Information
often result in mass productions of
marginally relevant and cumulative
documents. Generally, the production
burden of these expansive requests
outweighs the minimal benefits of such
broad disclosure.

Id. at p. 2.
In issuing the Model Order, the Federal Circuit
specifically questioned what applicant advocates here: “the
practice of gathering huge amounts of information at the
front of a case and running broad key searches as the issues
emerge.” Id. at p. 3. Based on the Federal Circuit’s
concerns, the Model Order itself “presumptively limits the
number of custodians and search terms for all email
production requests,” id., and provides that “General ESI
production requests … shall not include email or other forms
of electronic correspondence …. Email production requests
shall only be propounded for specific issues, rather than
general discovery of a product or business.” Model Order ¶¶
6-7.
Furthermore, it is well-settled that the producing
party is in “the best position to determine the method by
which [it] will collect documents,” at least “absent an
agreement or timely objection.” Ford Motor Co., 257 F.R.D.
at 427; Sedona Principle No. 6 (“Responding parties are best
Opposition No. 91195552 and Cancellation No. 92053001
14
situated to evaluate the procedures, methodologies, and
technologies appropriate for preserving and producing their
own [ESI].”). And a mere “belief that documents must exist
simply is not enough to grant a motion to compel that would
require [the party] to go back to square one and begin its
document collection efforts anew.” Ford Motor Co., 257
F.R.D. at 428; see also Covad Communications Co. v. Revonet,
Inc., 258 F.R.D. 5, 13-14 (D.D.C. 2009). Here, other than
with respect to certain specific document requests addressed
below, applicant has not supported its allegation that
responsive “documents must exist” which opposer failed to
produce.
In view of our limited jurisdiction, the narrowness of
the issues to be decided by the Board, and the concerns
expressed by the Federal Circuit, the burden and expense of
e-discovery will weigh heavily against requiring production
in most cases. Parties are advised to be precise in their
requests and to have as their first consideration how to
significantly limit the expense of such production. Absent
such a showing, the likelihood of success of any motion to
compel will be in question.
For all of these reasons, applicant’s motion is DENIED
to the extent that applicant requests that opposer be
required to start its document production over, using the
same or similar protocols to those applicant employed.
Opposition No. 91195552 and Cancellation No. 92053001
15
Applicant has simply failed to establish that opposer’s
method of searching and producing documents was insufficient
as a general matter, given the parties’ failure to agree on
an ESI discovery protocol in advance, the nature of
applicant’s discovery requests and the issues in this
proceeding.
Did Opposer Adequately Respond to the Specific Document
Requests at Issue?

As opposer stresses, this case concerns only whether
applicant’s mark is generic or merely descriptive and
without secondary meaning. While opposer may very well
possess certain e-mails and “internal non-public documents”
which are at least somewhat relevant to these issues, the
question is whether “the burden or expense of the proposed
discovery outweighs its likely benefit, considering the
needs of the case, the amount in controversy, the parties’
resources, the importance of the issues at stake in the
action, and the importance of the discovery in resolving the
issues.” See e.g. Fed. R. Civ. P. 26(b)(2)(C)(iii).
In its motion, and during the teleconferences,
applicant focused its arguments on its second set of
document requests, and has not specifically argued that
opposer’s responses to any of applicant’s first set of
document requests are inadequate in any particular way
(other than opposer’s alleged failure to engage in
appropriately extensive ESI discovery as a general matter).
Opposition No. 91195552 and Cancellation No. 92053001
16
Therefore, it is only necessary to focus on applicant’s
second set of document requests.
Second Set of Document Requests Nos. 1, 2, 6, 7
and 8

In these requests, applicant seeks “all” documents: (a)
“assessing, evaluating or considering the market for pretzel
crackers …;” (b) relating to opposer’s “decisions to create,
market and sell a pretzel cracker product;” (c) “assessing,
evaluating or considering how to categorize, describe or
define Rold Gold PRETZEL WAVES or Rold Gold Pretzel Chips
for consumers, distributors or retailers;” (d) “reflecting
any consumer views or comments about pretzel crackers;” and
(e) “referring to Applicant or its PRETZEL CRISPS products”
or other third party products in the same category. In
response, opposer objected to these requests as, inter alia,
not reasonably calculated to lead to the discovery of
admissible evidence and unduly burdensome, in that the
“burden and expense” of producing “all” responsive documents
“clearly outweighs any relevance and likely benefit, taking
into account the needs of the case, the parties’ resources,
and the importance of the proposed discovery ….”
Nevertheless, in its supplemental responses, opposer
indicated that it will produce “responsive, non-privileged
documents” relating to “any consumer views or comments about
‘pretzel crisps,’” and “the product descriptions for
Opposition No. 91195552 and Cancellation No. 92053001
17
Opposer’s ROLD GOLD PRETZEL WAVES,” which competed with
applicant’s PRETZEL CRISPS.
This is inadequate. In fact, while opposer established
that all of the specific material applicant seeks through
these requests is “not reasonably accessible because of
undue burden or cost,” Fed. R. Civ. P. 26(b)(2)(B),
applicant has established that some of the requested
documents should nevertheless be produced before applicant
begins taking depositions or serving other discovery, for
the sake of efficiency. Indeed, having the documents in
advance of depositions will likely assist applicant’s
efforts to identify, and logically schedule depositions of,
appropriate witnesses, and will likely maximize the
effectiveness of the depositions when taken. See Fed. R.
Civ. P. 26(b)(2)(C)(i) and (ii); TBMP § 402.02 (3d ed.
2011). Furthermore, given opposer’s concession that
“industry usage and meaning” of PRETZEL CRISPS is “relevant”
to the issues in this proceeding, the importance of at least
some of the information applicant seeks through these
requests outweighs the burden and expense of producing the
information. See Fed. R. Civ. P. 26(b)(2)(B)(iii); TBMP
§ 402.02 (3d ed. 2011).
Accordingly, applicant’s motion is hereby GRANTED IN
PART with respect to these requests, to the extent that
opposer is hereby ordered to also produce, within THIRTY
Opposition No. 91195552 and Cancellation No. 92053001
18
DAYS of the mailing date of this order, representative
samples of documents in opposer’s possession, custody or
control: (1) assessing, evaluating or considering any
methods of describing the “product category” for “pretzel
crackers,” whether the pretzel crackers are or could be
offered by opposer, applicant or a third party;10 (2)
relating to opposer’s decision to offer a pretzel cracker
product, but only to the extent that such documents refer
to: (a) the “product category” for PRETZEL WAVES or Rold
Gold Pretzel Chips; or (b) any marks which opposer used,
uses or has considered using which contain the word CRISPS;
(3) assessing, evaluating or considering how to categorize,
describe or define PRETZEL WAVES or Pretzel Chips;11 and (4)
“reflecting any consumer views or comments about pretzel
crackers.” TBMP § 414(2) (3d ed. 2011)(“where complete
compliance with a particular request for discovery would be
unduly burdensome … responding party [may] comply by
providing a representative sampling of the information

10 In other words, opposer must produce representative samples
of documents concerning what it calls “product descriptors” or
“generic descriptors” and/or which support opposer’s response to
applicant’s Second Set of Interrogatories No. 3 (“In the case of
PRETZEL WAVES, PRETZEL SNACKS was determined to be the statement
of identity. In the case of PRETZEL CHIPS, since PRETZEL CHIPS
is descriptive, no other statement of identity was necessary.”).
11 As applicant pointed out during the teleconferences, because
opposer participated in the relevant market with its PRETZEL
WAVES product, it would be very surprising if opposer did not
discuss this market with, for example, distributors, retailers or
marketers.
Opposition No. 91195552 and Cancellation No. 92053001
19
sought”).12 In the event opposer fails to comply with the
requirements of this order, opposer may be subject to
sanctions, potentially including entry of judgment against
it. Trademark Rule 2.120(g); Fed. R. Civ. P. 37(b)(2).
Furthermore, applicant may seek to preclude opposer from
relying at trial on information or documents which should
have been produced in response to any of applicant’s
discovery requests, but were not. See, Panda Travel, Inc.
v. Resort Option Enterprises, Inc., 94 USPQ2d 1789, 1792,
(TTAB 2009); Quality Candy Shoppes/Buddy Squirrel of
Wisconsin Inc. v. Grande Foods, 90 USPQ2d 1389, 1392 (TTAB
2007); Presto Products v. Nice-Pak Products, 9 USPQ2d 1895,
1896 n. 5 (TTAB 1988); TBMP § 527.01(e)(3d ed. 2011).
Applicant’s motion is otherwise denied with respect to these
requests. In preparing its supplemental responses required
herein, opposer must produce responsive ESI, as necessary
and appropriate, notwithstanding the finding that opposer’s
ESI discovery efforts were adequate under the circumstances
of this case as a general matter.

12 Opposer produced a document summarizing consumer comments
about “pretzel crackers,” but did not produce the original
comments themselves. In its response to applicant’s motion,
opposer “offered to endeavor to ascertain whether it is
technologically feasible to make the responsive comments
available to Applicant in their original database format ….”
This is appropriate, and opposer should produce the comments in
their original format unless doing so would be unduly burdensome
or expensive.

Opposition No. 91195552 and Cancellation No. 92053001
20
In addition, opposer must take care to ensure that it
works with, and searches for documents maintained by, the
appropriate employees and/or custodians. As discussed
during the teleconferences, in response to applicant’s
Second Set of Interrogatories, opposer provided a list of
its employees “responsible for the creation, branding,
advertising, marketing or selling” of PRETZEL WAVES and Rold
Gold Pretzel Chips,” and an entirely different list of
employees “who searched their documents” in response to
applicant’s discovery requests. Compare Response to Second
Set of Interrogatories No. 1 with Response to Second Set of
Interrogatories No. 5 (Mellon Dec. Ex. P). Opposer did not
have a satisfactory explanation for why there is no overlap
between these lists.
Second Set of Document Requests No. 4
Applicant requested “all documents” relating to
opposer’s “decision to name its Rold Gold pretzel cracker
products PRETZEL WAVES and Pretzel Chips, including but not
limited to any consideration of alternative names.” Opposer
objected on essentially the same grounds as it did with
respect to applicant’s other document requests, but agreed
to produce documents “relating to the product names for
Opposer’s ROLD GOLD PRETZEL WAVES.” This is sufficient and
applicant’s motion is otherwise DENIED with respect to this
request. While information and documents concerning the
Opposition No. 91195552 and Cancellation No. 92053001
21
category for the parties’ products is sufficiently relevant
to overcome opposer’s objections, and to require opposer to
again search its documents including ESI, the choice of a
particular product name or mark is not, unless that name or
mark includes the word CRISPS.
Conclusion
Applicant’s motion to compel is granted in part, to the
extent that opposer is ordered, within THIRTY DAYS of the
mailing date of this order, to produce representative
samples of documents:
(1) assessing, evaluating or
considering any methods of
describing the “product category”
for “pretzel crackers,” whether the
pretzel crackers are offered by
opposer, applicant or a third
party;

(2) relating to opposer’s decision to
offer a pretzel cracker product,
but only to the extent that such
documents refer to: (a) the
“product category” for PRETZEL
WAVES or Rold Gold Pretzel Chips;
or (b) any marks which opposer
used, uses or has considered using
which contain the word CRISPS;

(3) assessing, evaluating or
considering how to categorize,
describe or define PRETZEL WAVES or
Pretzel Chips; and

(4) “reflecting any consumer views or
comments about pretzel crackers.”

Opposition No. 91195552 and Cancellation No. 92053001
22
Applicant’s motion is otherwise denied. Proceedings herein
are resumed. Discovery, disclosure, trial and other dates
are hereby reset as follows:
Discovery Closes February 28, 2012

Plaintiff's Pretrial Disclosures April 13, 2012

Plaintiff's 30-day Trial Period Ends May 28, 2012

Defendant's Pretrial Disclosures June 12, 2012

Defendant's 30-day Trial Period Ends July 27, 2012

Plaintiff's Rebuttal Disclosures August 11, 2012

Plaintiff's 15-day Rebuttal Period Ends September 10, 2012

In each instance, a copy of the transcript of testimony
together with copies of documentary exhibits, must be served
on the adverse party within thirty days after completion of
the taking of testimony. Trademark Rule 2.l25.
Briefs shall be filed in accordance with Trademark Rule
2.128(a) and (b). An oral hearing will be set only upon
request filed as provided by Trademark Rule 2.l29.
***