(459)
_____________________
Plaintiff :
: Opposition/Cancellation
v. : No.
:
Defendant :
---------------------
PROVISIONS FOR PROTECTING
CONFIDENTIALITY OF INFORMATION
REVEALED DURING BOARD PROCEEDING
Information disclosed by any party or non-party witness during this
proceeding may be considered confidential, a trade secret, or
commercially sensitive by a party or witness. To preserve the
confidentiality of the information so disclosed, either the parties have
agreed to be bound by the terms of this order, in its standard form or
as modified by agreement, and by any additional provisions to which they
may have agreed and attached to this order, or the Board has ordered
that the parties be bound by the provisions within. As used in this
order, the term "information" covers both oral testimony and documentary
material.
Parties may use this standard form order as the entirety of their
agreement or may use it as a template from which they may fashion a
modified agreement. If the Board orders that the parties abide by the
terms of this order, they may subsequently agree to modifications or
additions, subject to Board approval.
Agreement of the parties is indicated by the signatures of the parties'
attorneys and/or the parties themselves at the conclusion of the order.
Imposition of the terms by the Board is indicated by signature of a
Board attorney or Administrative Trademark Judge at the conclusion of
the order. If the parties have signed the order, they may have created a
contract.1 The terms are binding from the date the parties or their
attorneys sign the order, in standard form or as modified or
supplemented, or from the date of imposition by a Board attorney or
judge.
TERMS OF ORDER
1) Classes of Protected Information.
The Rules of Practice in Trademark Cases provide that all inter partes
proceeding files, as well as the involved registration and application
files, are open to public inspection. The terms of this order are not to
be used to undermine public access to files. When appropriate, however,
a party or witness, on its own or through its attorney, may seek to
protect the confidentiality of information by employing one of the
following designations.
Confidential-Material to be shielded by the Board from public access.
Highly Confidential-Material to be shielded by the Board from public
access and subject to agreed restrictions on access even as to the
parties and/or their attorneys.
Trade Secret/Commercially Sensitive-Material to be shielded by the Board
from public access, restricted from any access by the parties, and
available for review by outside counsel for the parties and, subject to
the provisions of paragraph 4 and 5, by independent experts or
consultants for the parties.
2) Information Not to Be Designated as Protected.
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Information may not be designated as subject to any form of protection
if it (a) is, or becomes, public knowledge, as shown by publicly
available writings, other than through violation of the terms of this
document; (b) is acquired by a non-designating party or non-party
witness from a third party lawfully possessing such information and
having no obligation to the owner of the information; (c) was lawfully
possessed by a non-designating party or non-party witness prior to the
opening of discovery in this proceeding, and for which there is written
evidence of the lawful possession; (d) is disclosed by a non-designating
party or non-party witness legally compelled to disclose the
information; or (e) is disclosed by a non-designating party with the
approval of the designating party.
3) Access to Protected Information.
The provisions of this order regarding access to protected information
are subject to modification by written agreement of the parties or their
attorneys, or by motion filed with and approved by the Board.
Judges, attorneys, and other employees of the Board are bound to honor
the parties' designations of information as protected but are not
required to sign forms acknowledging the terms and existence of this
order. Court reporters, stenographers, video technicians or others who
may be employed by the parties or their attorneys to perform services
incidental to this proceeding will be bound only to the extent that the
parties or their attorneys make it a condition of employment or obtain
agreements from such individuals, in accordance with the provisions of
paragraph 4.
. Parties are defined as including individuals, officers of
corporations, partners of partnerships, and management employees of any
type of business organization.
. Attorneys for parties are defined as including in-house counsel and
outside counsel, including support staff operating under counsel's
direction, such as paralegals or legal assistants, secretaries, and any
other employees or independent contractors operating under counsel's
instruction.
. Independent experts or consultants include individuals retained by a
party for purposes related to prosecution or defense of the proceeding
but who are not otherwise employees of either the party or its attorneys.
. Non-party witnesses include any individuals to be deposed during
discovery or trial, whether willingly or under subpoena issued by a
court of competent jurisdiction over the witness.
Parties and their attorneys shall have access to information designated
as confidential or highly confidential, subject to any agreed
exceptions.
Outside counsel, but not in-house counsel, shall have access to
information designated as trade secret/commercially sensitive.
Independent experts or consultants, non-party witnesses, and any other
individual not otherwise specifically covered by the terms of this order
may be afforded access to confidential or highly confidential
information in accordance with the terms that follow in paragraph 4.
Further, independent experts or consultants may have access to trade
secret/commercially sensitive information if such access is agreed to by
the parties or ordered by the Board, in accordance with the terms that
follow in paragraph 4 and 5.
4) Disclosure to Any Individual.
Prior to disclosure of protected confidential or highly confidential
information by any party or its attorney to any individual not already
provided access to such information by the terms of this order, the
individual shall be informed of the existence of this order and provided
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with a copy to read. The individual will then be required to certify in
writing that the order has been read and understood and that the terms
shall be binding on the individual. No individual shall receive any
protected information until the party or attorney proposing to disclose
the information has received the signed certification from the
individual. A form for such certification is attached to this order.The
party or attorney receiving the completed form shall retain the original.
5) Disclosure to Independent Experts or Consultants.
In addition to meeting the requirements of paragraph 4, any party or
attorney proposing to share disclosed trade secret/commercially
sensitive information with an independent expert or consultant must also
notify the party which designated the information as protected.
Notification must be personally served or forwarded by certified mail,
return receipt requested, and shall provide notice of the name, address,
occupation and professional background of the expert or independent
consultant.
The party or its attorney receiving the notice shall have ten (10)
business days to object to disclosure to the expert or independent
consultant. If objection is made, then the parties must negotiate the
issue before raising the issue before the Board. If the parties are
unable to settle their dispute, then it shall be the obligation of the
party or attorney proposing disclosure to bring the matter before the
Board with an explanation of the need for disclosure and a report on the
efforts the parties have made to settle their dispute. The party
objecting to disclosure will be expected to respond with its arguments
against disclosure or its objections will be deemed waived.
6) Responses to Written Discovery.
Responses to interrogatories under Federal Rule 33 and requests for
admissions under Federal Rule 36, and which the responding party
reasonably believes to contain protected information shall be
prominently stamped or marked with the appropriate designation from
paragraph 1. Any inadvertent disclosure without appropriate designation
shall be remedied as soon as the disclosing party learns of its error,
by informing all adverse parties, in writing, of the error. The parties
should inform the Board only if necessary because of the filing of
protected information not in accordance with the provisions of paragraph
12.
7) Production of Documents.
If a party responds to requests for production under Federal Rule 34 by
making copies and forwarding the copies to the inquiring party, then the
copies shall be prominently stamped or marked, as necessary, with the
appropriate designation from paragraph 1. If the responding party makes
documents available for inspection and copying by the inquiring party,
all documents shall be considered protected during the course of
inspection.After the inquiring party informs the responding party what
documents are to be copied, the responding party will be responsible for
prominently stamping or marking the copies with the appropriate
designation from paragraph 1.Any inadvertent disclosure without
appropriate designation shall be remedied as soon as the disclosing
party learns of its error, by informing all adverse parties, in writing,
of the error. The parties should inform the Board only if necessary
because of the filing of protected information not in accordance with
the provisions of paragraph 12.
8) Depositions.
Protected documents produced during a discovery deposition, or offered
into evidence during a testimony deposition shall be orally noted as
such by the producing or offering party at the outset of any discussion
of the document or information contained in the document. In addition,
the documents must be prominently stamped or marked with the appropriate
designation.
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During discussion of any non-documentary protected information, the
interested party shall make oral note of the protected nature of the
information.
The transcript of any deposition and all exhibits or attachments shall
be considered protected for 30 days following the date of service of the
transcript by the party that took the deposition. During that 30-day
period, either party may designate the portions of the transcript, and
any specific exhibits or attachments, that are to be treated as
protected, by electing the appropriate designation from paragraph 1.
Appropriate stampings or markings should be made during this time. If no
such designations are made, then the entire transcript and exhibits will
be considered unprotected.
9) Filing Notices of Reliance.
When a party or its attorney files a notice of reliance during the
party's testimony period, the party or attorney is bound to honor
designations made by the adverse party or attorney, or non-party
witness, who disclosed the information, so as to maintain the protected
status of the information.
10) Briefs.
When filing briefs, memoranda, or declarations in support of a motion,
or briefs at final hearing, the portions of these filings that discuss
protected information, whether information of the filing party, or any
adverse party, or any non-party witness, should be redacted. The rule
of reasonableness for redaction is discussed in paragraph 12 of this
order.
11) Handling of Protected Information.
Disclosure of information protected under the terms of this order is
intended only to facilitate the prosecution or defense of this case. The
recipient of any protected information disclosed in accordance with the
terms of this order is obligated to maintain the confidentiality of the
information and shall exercise reasonable care in handling, storing,
using or disseminating the information.
12) Redaction; Filing Material With the Board.
When a party or attorney must file protected information with the Board,
or a brief that discusses such information, the protected information or
portion of the brief discussing the same should be redacted from the
remainder. A rule of reasonableness should dictate how redaction is
effected.
Redaction can entail merely covering a portion of a page of material
when it is copied in anticipation of filing but can also entail the more
extreme measure of simply filing the entire page under seal as one that
contains primarily confidential material. If only a sentence or short
paragraph of a page of material is confidential, covering that material
when the page is copied would be appropriate. In contrast, if most of
the material on the page is confidential, then filing the entire page
under seal would be more reasonable, even if some small quantity of
non-confidential material is then withheld from the public record.
Likewise, when a multi-page document is in issue, reasonableness would
dictate that redaction of the portions or pages containing confidential
material be effected when only some small number of pages contain such
material. In contrast, if almost every page of the document contains
some confidential material, it may be more reasonable to simply submit
the entire document under seal. Occasions when a whole document or brief
must be submitted under seal should be very rare.
Protected information, and relevant portions of pleadings, briefs or
memoranda that reproduce, discuss or paraphrase such information, shall
be filed with the Board under seal. The envelopes or containers shall be
prominently stamped or marked with a legend in substantially the
following form:
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CONFIDENTIAL
This envelope contains documents or information that are subject to a
protective order or agreement. The confidentiality of the material is to
be maintained and the envelope is not to be opened, or the contents
revealed to any individual, except by order of the Board.
13) Acceptance of Information; Inadvertent Disclosure.
Acceptance by a party or its attorney of information disclosed under
designation as protected shall not constitute an admission that the
information is, in fact, entitled to protection. Inadvertent disclosure
of information which the disclosing party intended to designate as
protected shall not constitute waiver of any right to claim the
information as protected upon discovery of the error.
14) Challenges to Designations of Information as Protected.
If the parties or their attorneys disagree as to whether certain
information should be protected, they are obligated to negotiate in good
faith regarding the designation by the disclosing party. If the parties
are unable to resolve their differences, the party challenging the
designation may make a motion before the Board seeking a determination
of the status of the information.
A challenge to the designation of information as protected must be made
substantially contemporaneous with the designation, or as soon as
practicable after the basis for challenge is known. When a challenge is
made long after a designation of information as protected, the
challenging party will be expected to show why it could not have made
the challenge at an earlier time.
The party designating information as protected will, when its
designation is timely challenged, bear the ultimate burden of proving
that the information should be protected.
15) Board's Jurisdiction; Handling of Materials After Judgment.
The Board's jurisdiction over the parties and their attorneys ends with
the entry of a final judgment, unless jurisdiction is restored by grant
of a post- judgment motion or as the result of an appellate proceeding.
After entry of judgment, the parties' handling of protected information
and materials is governed only by any agreements to which the parties
may agree.
16) Other Rights of the Parties and Attorneys.
This order shall not preclude the parties or their attorneys from
making any applicable claims of privilege during discovery or at trial.
Nor shall the order preclude the filing of any motion with the Board for
relief from a particular provision of this order or for additional
protections not provided by this order.
By Agreement of the Following, effective _______________________.
[insert signature date]
_____________________________ ____________________________
[print or type name and title [print or type name and title
of individual signing for of individual signing for
plaintiff] defendant]
_____________________________ _____________________________
[print or type name and law [print or type name and law
firm of attorney for firm of attorney for
plaintiff] defendant]
By Order of the Board, effective _____________________________
_____________________________ .
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[print or type name and title of Board attorney
or judge imposing order]
1 There may be a remedy at court for any breach of contract that occurs
after the conclusion of this Board proceeding. See Fort Howard Paper Co.
v. C.V. Gambina Inc., 4 USPQ2d 1552, 1555 (TTAB 1987). See also,
Alltrade Inc. v. Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d 1698
(9th Cir. 1991).
[1235 TMOG 71]