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How do I protect sub-contractor's privacy during a trademark cancellation proceeding?

Sacramento, CA |

My boss's trademark is being questioned . He did an intent to use application and another party filed a cancellation based on him lacking a bona fide intent . Evidence I could provide are the conversations with developers prior to filing the application which discuss the plans for the products . However , there is a very casual relationship with me and my subcontractors . I don't want to submit copies to anyone of our chat logs because I don't want to tarnish their names with them participating in such vulgar conversations . Quotes may leaked onto the web somehow during the proceedings with the opposing party citing dialogue . Can we edit out the obscenities and submit documents with a bunch of black marks through them ? Or , can I just have them sign a document swearing to the pertinent facts ?

Attorney Answers 4

Posted

Your question makes it seem like you are an attorney asking. Ill assume that unless you tell me otherwise.

The alternative to the actual statements would be an affidavit, or sworn statemt, as you suggest.

The testimony or an affidavit from your boss would also be good, and from anyone else who knew of your bosses intent to use the mark.

If you are not a trademark attorney and you are trying to defend the itu in a cancellation proceeding, I would highly recommend working with a trademark attorney to ensure that the best options are examined, and so that nothing is missed.

Good luck

I am not your lawyer and this comment does not create an attorney-client relationship. Plus, it is not a good idea to base legal decisions solely on comments posted to an open forum board. However, I hope that you will seek the advice of an attorney if you feel that your situation requires such expertise.

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Posted

Agreed, an affidavit is one way around this, but be cautious in your wording of the affidavits because depending on the wording, if swearing the discussed the intent in a recorded chat log could open up the possibility of the logs themselves being requested by opposing counsel.

My disclaimer is simply that Avvo already has an adequate disclaimer.

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Posted

An affidavit is ok, but it's not quite the same as an affidavit backed up by documentary evidence. Is there other documentary evidence that you could use? Are there internal company emails discussing plans to use the trademark? Is there a business plan? If all you've got are the vendor emails, I would be inclined to redact out the obscenities -- they're completely irrelevant -- and submit redacted copies. Good luck.

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Posted

I agree with Attorney Lewis -- the supporting documents that purport to establish your company's bona fide intent to use the mark must be produced. Those documents will be responsive to the other side's Request for Production of Documents. Which means that you MUST produce them or else face a sanction -- which could be a negative inference that you have no such supporting documents. At which point the declarations from your subcontractors become suspect, lose evidentiary weight and could be deemed inadmissible.

The default TTAB Protective Order [availble via the link below] automatically applies in all cases unless the parties craft their own version and get it approved by the TTAB. The default Protective Order has a "Highly Confidential" designation that shields documents so designated from public disclosure. You and your own trademark attorney need to decide how best, if at all, to shield the subcontractor's emails from disclosure [not at all, redaction, or protection order]. I would strongly suggest not at all. By virtue of being your subcontractors they need something from you: work and money. In exchange they can withstand some very remote possibility of embarassment over their spicy language.

You need a trademark attorney. Good luck.

The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

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4 comments

Brett Evan Lewis

Brett Evan Lewis

Posted

I totally agree. It's inconceivable that these won't be responsive to a request for production of documents. The question then becomes whether to seek to redact, produce as is or seek a protective order. You definitely need a trademark attorney, and it looks like there's a good one in Sacramento! Good luck. Brett

Asker

Posted

How do you seek to redact? Can I just give them the documents with black lines in them?

Asker

Posted

Thank you.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

No, you may not simply black out the offensive language. Your own attorney will explain how it's done -- IF that is what the two of you decide to do. If your company's potential trademark registration is valuable then it will invest in hiring an attorney. It's apparent choice not to means that the registration is either not valuable [so you're wasting everyone's time] or it does not have the $30K or so to hire an attorney to handle the matter [so you're working for a company teetering on failure]. Good luck.

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