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`Davis, Mannix & McGrath
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`312-332-8378
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`IN TIIE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
`
`KARSTEN MANUFACTURING CORP.
`Opposer,
`
`v.
`JOKER, INc.,
`
`)
`)
`)
`)
`'
`)
`Applicant
` )
`
`'
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`Opposition NO.: 91,101,408
`
`BOX TTAB
`NO FEE
`
`Assistant Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`REPLY IN SUPPORT OF APPLICANT’S
`MOTION FOR AN ORDER
`
`DISMISSING THE OPPOSITION WITH PREJUDICE
`OR IN THE ALTERNATIVE
`COMPELLING DISCOVERY PURSUANT To TRADEMARK TRIAL AND APPEAL BOARD
`RULE 2.120(e)
`AND RESETTING DATES '
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`Karsten argues that Applicant’s motion should be denied On the grounds that
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`Applicant failed to comply with Rule 2.120(3) and because the motion is moot. Both
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`arguments are baseless.
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`1. Applicant's motion fulfilled the reguirement regarding a good faith effort to
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`;e_.~_;Olve issues.
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`First, the requirement that the movant support its motion with a written statement
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`that counsel made a good faith effort
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`to resolve the issues by conference or
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`correspondence was amply fulfilled in Applicant’s motion. The efforts were described in
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`detail and copies of the correspondence were attached’ to the motion. The rule explicitly
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`does not require a conference; correspondence is an acceptable alternative. Applicant’s
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`counsel has learned by experience that it is necessary to communicate in writing with
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`K-arsten’s counsel because prior telephone conversations have been either misunderstood
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`or intentionally misrepresented by Karsten’s counsel. By l{arsten’s logic, a dilatory party
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`could avoid a motion to compel simply by failing to respond to the other panty’s letters,
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`as Karsten did in this case.
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`2. Dismissal would be an appropriate sanction for Karsten’s conduct in this case.
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`Applieant’s motion has not been rendered moot. Although Karsten has now
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`served responses and objections to the discovery Applicant served upon it in July, the
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`sanctions requested in the motion are still appropriate. Contrary to Ka_rstcn’s assertion, it
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`did in fact fail
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`to comply with a Trademark Trial and Appeal Board Order regarding
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`discovery when it completely ignored the scheduling order of June 22, 2002, and flatly
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`refused to cooperate in any way with meeting the deadlines in that order until served with
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`Applicant’s motion. Dismissal is a most appropriate sanction against a party that has
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`ignored the authority of the Board. Karsten‘s tardy responses do not ameliorate the
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`substantial prejudice to the Applicant that, absent the Board’s granting relief, will be
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`constrained to defend against this opposition on an impossible and unrealistic schedule.
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`Karsten’s preoccupation with other litigation cannot justify its complete failure to
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`respond to Applieant’s discovery or
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`to counsel’s letters prodding its
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`lawyer
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`to
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`communicate about when the responses would be forthcoming. Karsten filed this
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`proceeding over six years ago.
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`It strains eredulity that pulling together the evidence
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`needed to support it would be so difficult, particularly when the attorney responsible for
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`this case was not even involved in the three—week patent infringement described in
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`312-332-6378
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`Karsten’s memorandum.
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`If Karsten was unable to respond to the requests, it should have
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`sought additional time from the Board instead of simply ignoring Applicant’s efforts to
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`move the discovery along.
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`3.
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`Karsten's misconduct continues.
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`Karsten’s counsel signed a certificate of service stating that its Memorandum in
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`Opposition was mailed on October 25, 2002. Counsel for Applicant received it on
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`November 4, 2002, and the postmark on the envelope in which it arrived is October 30
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`2002, five days after the date in the certificate of service. (See attached Exhibit A).
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`Additionally, Mr. Watkins has mischaracterized other facts.
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`ljle describes
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`Applicant’s discovery as “expansive and burdensome” (p. 3). Applicant believes the
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`discovery is entirely appropriate. Copies are attached for the Board‘s reference. (See
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`Exhibit B).
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`Mr. Watkins states “the parties have presented a comprehensive report to the
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`TTAB indicating the extensive'discovcry—related efforts by both Opposer Karsten as well
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`as Applicant Joker,” (p.6). No, each party has made its own assertions, and Applicant in
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`no way joins in Opposer's narrative of its alleged efforts to cooperate in discovery.
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`Karsten’s counsel also misconstrued Applicant’s statements concerning reviewing
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`documents. Counsel for Applicant told Karsten’s counsel that the week of November 11
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`would be the earliest time that the documents could possibly be reviewed at Karsten’s
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`Arizona headquarters, but no definite agreement to review documents at that time has
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`been made. Applicant’s counsel has still has not received the documents that Karsten
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`promised to send “three business days” after its October 24 response to the document
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`requests.
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`Davis, Mannix & McGrath
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`312-332-8378
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`Karsten’s
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`counsel’s
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`tendency to misrepresent
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`the facts of
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`the parties’
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`communication is demonstrated once again in its assertion that it objected to “Iol<er’s
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`improper attempt
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`to depose representatives of Phoenix, Arizona resident Karsten
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`Manufacturing Corporation in Chicago, Illinois.” In fact, the 30(b)(6) notice stated that
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`the deposition would be at Applicant's counsel’s Chicago office “or such other time and
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`place as may be agreed by the parties," customary language for such notices.
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`Finally, and most
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`importantly, Karsten’s counsel completely fabricated the
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`following:
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`“The parties believe that meaningful settlement discussions could not
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`commence until Karsten had completed its effort to substantiate the scope and duration of
`its trademark rights." This is absolutely false. Applicant has never believed or indicated
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`provided Karsten with a draft agreement in May. Karsten promised written comments,
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`and even represented to this Board that it was working on them. Karsten’s Response to
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`Joker's Order to Show Cause Pleading, June 7, 2002, p.6. Karsten has never provided
`them.
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`Under all of the circumstances,
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`the sanction of dismissal with prejudice is
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`warranted. Karsten has demonstrated nothing but contempt for the effort of the Board to
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`manage this case, has repeatedly misrepresented the statements made and positions taken
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`by Applicant, and has even failed to properly serve Applicant with its pleadings.
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`If the
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`Board declines to dismiss the case with prejudice, Applicant requests that the Board issue
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`an order resetting the dates with the deadlines no earlier than those set forth in Karsten's
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`proposed schedule (p. 6). While Applicant is reluctant to see the proceeding further
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`Received from < 312 332 6376 > at 11I4I02 4:04:42 PM [Eastern standard Time]
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`Davis, Mannix & HcGrath
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`312-332-6378
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`protracted, it will be severely prejudiced if the case goes forward without additional time
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`for the orderly completion of discovery.
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`Respectfully submitted,
`JOKER, INC.
`
`/}zM,aE:*(§I44»—~—
`
`By: Marsha K. Hoover
`Attorney for Applicant
`
`Date: 45 £003‘
`
`Davis, Mannix & McGrath
`125 S. Wacker Drive
`Suite 1700
`
`Chicago, IL 60606
`(3 l2) 332-3033
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing REPLY IN SUPPORT OF APPLlCANT’S MOTION
`FOR AN ORDER DISMISSING THE OPPOSITION WITH PREJUDICE OR IN THE
`ALTERNATIVE COMPELLING DISCOVERY PURSUANT To TRADEMARK TRIAD AND
`APPEAL BOARD RULE 2.120(E) AND RESETTING DATES was mailed t'11st—clas|s mail,
`postage prepaid, to Thomas G. Watkins, Patent Consultants, 5330 E. Palomino Road,
`Phoenix, AZ 85018, attomey of record for Applicant, and via facsimile to (602) 508-7089
`On _, 2002-
`
`gegina Westry
`
`6%
`
`CERTIFICATE or EXPRESS MAILING
`
`Express Mailing label number
`
`. E V 1: 1: is 5 7 E E El 5 U S
`
`Date of deposit:
`
`I hereby certify that the foregoing Reply in REPLY IN SUPPORT OF APPLICANT
`FOR AN ORDER DISMISSING THE OPPOSITION WITII PREJUDICE OR IN THE
`ALTERNATIVE COMPELLING DISCOVERY PURSUANT To TRADEMARK TRIAL AND
`
`’s MOTION
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`Received from < 312 332 6376 > at 11/4/02 4:04:42 PM [Eastern Standard T|me]
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`.Hov 04 02 02;55p
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`Dav1s, Mann1x
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`& McGrath
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`312-332-8378
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`.7
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`F
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`APPEAL BOARD RULE 2.120(2) AND RESETTING DATES is being deposited with the
`United States Postal Service “Express Mail Post Office to Addressee” service on the date
`indicated above and is addressed to the Assistant Commissioner for Trademarks, BOX
`TTAB NO FEE, 2900 Crystal Drive, Arlington, VA 22202-3513. A courtesy copy is also
`being sent via facsimile to TTAB Interlocutory Attorney David M. Mermelstein, Esq., (703)
`746-7038.
`
`I
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`
`
`Re ma Westry
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`Received from < 312 332 6376 > at 11/4/02 4:04:42 PM [Eastern Standard Time]
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`'Nou '04 02 02:5Sp
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`Davis, Mannix 8. McGrat.h
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`312-332-8378
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`p.8
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`EXHIBIT A
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`Recelved from < 312 332 6376 > at 11/4/02 4:04:42 PM [Eastern Standard Tlme]
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`‘Nov 04 02 02:5Bp
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`Davis, Mannix & McGrath
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`312-332-B378
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`p.10
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`EX}HBYFB
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`Received from < 312 332 6376 > at 11/4/02 4:04:42 PM [Eastern Standard Time]
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`'Hov Q4 02 02:5Bp
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`Davis, Mannix & McGrath
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`312-332-SQVS
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`‘.1
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`IN THE UNITED Sums TPATENT AND TRADEMARK or-‘rrcrr.
`BEFORE THE TRADEMARK TRLAL AND APPEAL BOARD
`
`KARSTEN MANUFACTURING CORP.
`Opposer,
`
`)
`)
`)
`)
`)
`Applicant
`_.__-____._._A.._?.___._____J
`
`V.
`JOKER, INC.,
`
`Opposition No.: 101,408
`
`Ar-r>LrcANT’s FIRST SET OF INTERROGATORIES To Orrossn
`
`Pursuant to Fed.R.Civ.P. 33, Applicant Joker, Inc., hereby requests that Opposer,
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`Karsten Manufacturing Corporation, serve its answers to the following interrogatories on counsel
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`for Applicant, Marsha K. Hoover, Davis, Mannix & McGralh, 125 S. Wacker Drive, Suite 1700,
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`Chicago, IL 60606 within thirty (30) days..
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`Dsrrwmons AND INSTRUCTIONS
`
`A.
`
`In construing these discovery requests, the following definitions shall apply:
`
`I.
`
`“ And" as well as "or" shall be construed either disjunctively or conjunctively as
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`necessary to bring within the scope of these discovery requests any information which
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`might otherwise be construed as outside their scope.
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`2.
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`"Date" means the exact year, month and date, if known, or, ifnot, your best
`
`approximation thereof.
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`3. “Applicant” means Joker, Inc. and its predecessors, Editoy B,V., and Pirrgu B.V.
`
`4.
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`"Opposer" means Karsten Manufacuting Corporation, as well as any person who is,
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`was, purports or has purported to be an officer, director, general partner, limited
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`partner, affiliate, employee, agent, attorney, accountant, assignee, subsidiary or
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`Received from < 312 332 6376 > at 11/4/02 4:04:42 PM [Eastern standard Time]
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`312-332-8378
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`representative of the above named opposer, specifically including —— but not limited
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`to — each of its agents, attorneys, employees, directors and otficers.
`
`. “Opposér’s Marks” means the following marks registered by Opposer: PWG,
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`Registration Nos. 704,552, 1,632,445, 1,633,477, 1,637,647, 1,638,323, and
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`1,647,448; ZING, Registration No. 1,289,154; PING EYE 2 (stylized),,Registration
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`No. 1,647,510; PING ZING, Registration No. 1,768,156; and any other mark for
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`which Opposer currently has a registration or an application pending in the United
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`States, as well as any other mark owned by Opposer whether or not registered, upon
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`which Opposer bases its opposition.
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`.
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`"Document" means the original and each non identical copy or version of any writing,
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`tape, disc, digital file, recording or other item on which or from which information,
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`communications or data may be perceived or obtained, and shall be construed -to
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`include any document which would supplement or supersede any document
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`previously identified in response to these Intencgatories.
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`.
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`"Including" means "including, but not limited to;" "includes" means "includes, but not
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`limited to."
`
`.
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`"Investigated Period" means the period between April 1, 1993 through the present,
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`including the date of any supplemental responses required by Federal Rule of Civil
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`Procedure 26(e).
`
`. "Person" means, without limiting the generality of its meaning, natural persons,
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`groups of natural persons (such as a committee or board of directors), corporations, S
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`corporations, limited liability companies, partnerships, limited liability partnerships,
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`associations, joint ventures, and any other incorporated or unincorporated business,
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`governmental, public, or social entity.
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`Received from < 312 332 6376 > at 11!4I02 4:04:42 PM [Eastern standard Time]
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`312-332-S3
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`78
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`10. "Relate" and "relating to" mean to be legally, logically, factually, or in any way
`
`connected to, in whole or in part, the matter discussed.
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`When asked to identify a document, state: (21) its location; (b) the location ofall copies of
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`the document which are not identical duplicates of the original; (c) the name and title of
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`each person presently in charge of the custody and maintenance ofthe original and all
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`I1on—ider1ticaI copies or versions; ((1) the date of the original and all non—identical copies
`
`or versions; (e) the author and signatories of the original and all non—identical copies or
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`versions; (0 its length; (g) the original document's content and how each non—ideuticaI
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`copy or version differs from the original: and (h) each person who received the original
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`or a copy or version of the document. If the document is available only in
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`machine—readable form, state the form in which the document is available and describe
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`the type of machine required to read the document. If the document was, but no longer
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`is, in the Opposer's possession, custody or control, state or identify: (a) what disposition
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`was made of the document; (b) the date of any such disposition, and (c) each
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`person that
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`either authorized or has knowledge of such disposition.
`
`When asked to identify a natural person, state his or her: (a) name; (b) title or
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`position
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`and employer; (c) present or last lmown business address; (d) present or last known home
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`address; (e) present or last known business telephone number; and (0 present’
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`or last
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`known home telephone number. If such person is no longer employed by the
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`person for
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`which he/she engaged in the activity which is the subject of the interrogatory,
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`state the
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`date on which he/she left the employ of the person and his/her title or position
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`. when
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`he/she engaged in the activity which is the subject of the interrogatory.
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`D.
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`When asked to identify a non—natural person, state: (a) the full name of the entity; (b) the
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`address of its principal place ofbusiness; (c) the telephone number of its principal place
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`312-332-8378
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`of business; (cl) the name and title of each person who (1) is or was an ofiicer, director,
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`general partner, limited partner, member or beneficiary of the organization, or
`(2) represented the organization with respect to the subject matter stated in the
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`interrogatory, and (e) the relationship ofthe entity to the parties to this proceeding.
`
`When asked to identify a communication, state: (a) the date, time and place of the
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`communication; (b) the form of the communication (such as memorandum, letter, or
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`conversation); (c) each person who has or is believed to have first-hand knowledge of the
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`communication; ((1) the substance of the communication; and (e) each document relating
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`to the communication.
`
`Whenever appropriate, the singular and plural forms ofwords shall be interpreted
`interchangeably so as to bring within the scope ofthese requests any matter which might
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`otherwise be construed to be outside their scope.
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`When asked to "state each and every basis" for a given proposition or allegation, state or
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`identify: (a) each person who has or purports to have knowledge of the facts underlying
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`the proposition or allegation; (h) each document used or relied upon to formulate, or
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`which supports or substantiates, the allegation or proposition; and (c) the rationale and
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`each fact supporting the allegation or proposition.
`Unless otherwise indicated, this discovery request applies to the Investigated Period.
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`Defendant shall make any obj ecticns it might have to this discovery request in writing
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`and deliver those written objections to Marsha K. Hoover, Davis, Mannix & McGratl1,
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`125 South Wacker Drive, Chicago, Illinois 60606. Any objection of attorney—client
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`privilege or work~product shall be accompanied by an itemized list of the documents for
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`which such privilege is claimed sufiicient to identify such documents, as well as the
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`specific privilege claimed, and the reason for claiming such privilege.
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`Received from < 312 832 6376 > at 11/4/02 4:04:42 PM [Eastern Standard Time]
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`XNTERROGATORIES
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`Identify all persons who were interviewed, consulted about, or helped prepare a) the
`1.
`Opposefs answer to these interrogatories; and b) the production ofdocuments in response to
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`Applicanfs request. If more than one person answered these discovery requests, list for each
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`such person the specific discovery request for which he or she was partially or fully responsible.
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`2.
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`Identify and describe with particularity the corporate structure and organization of
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`Opposer and its various "doing business as" identifies, including the products and/or services
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`the identity of all officers, directors, and managing agents; the state(s) of incorporation for all
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`entities comprising Opposer's corporate structure and organization; and the cities and locations in
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`which each such entity is presently doing business, selling or distributing its products, and/or
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`rendering it services.
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`3.
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`Identify and describe each product sold and/or distributed or each service rendered by
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`Oppose: under each ofOpposer's Marks, including the stock number or other identifier used by
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`4. Without limitation to the Investigated Period, state the exact date(s) on which Opposer
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`including identification of each document, purchase order, invoice, label, or other writing upon
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`which Opposer will rely to establish said date(s).
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`5. Without limitation to the Investigated Period, with respect to the first usc(s) of each of
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`Opposers Marks specified in the previous two interrogatories, state:
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`Davis, Mannix 8. McGr‘at.h
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`312-332-83I'78
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`P-15
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`(a)
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`The manner in which each of Opposer's Marks was used, e.g. by affixation to
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`garments, packaging or labels, advertisement, etc.;
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`(b) Whether the sale, distribution, or rendering ofeach type ofproduct or service under
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`each of Opposer's Marks has been continuous fiom the date specified in the prior
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`interrogatory to the present; and
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`(c)
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`If for any of Opposer's Marks, the answer to part (b) immediately above is in the
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`negative, state the periods of time during which each such mark was not used
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`continuously by Opposer in connection with the sale, distribution, or rendering of
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`any type of product or service.
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`Identify each trade or professional show or convention at which Opposer has displayed,
`6.
`offered for sale, or sold or rendered any product or service using or beating any ofthe Opposer's
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`Marks including the name, date(s), space and location for each such event; the circumstances and
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`manner of promoting, displaying, and/or demonstrating each such product or service in each
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`such event; an any and all sales promotional documents or other material distributing connection
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`with each such event.
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`7.
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`For each of Opposer’s Marks, identify and describe with particularity facts and
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`information known to Opposer and documents or other writings referring or relating to Opposer's
`
`conception, creation, selection, adoption, and first use of such mark as a trademark, service mark,
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`and/or trade name.
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`8.
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`For each of Opposer‘s Marks, and without limitation to the Investigated Period, identify
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`and describe with particularity any trademark, service mark or trade name search conducted by
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`or on behalf of Opposer concerning the use of such word, term or phrase as a trademark, service
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`mark, and/or trade name including the person(s) responsible for initiating and/or conducting each
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`such search; the date(s) of each such search; the class(es) of goods or services reviewed in each
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`Received from < 312 332 6376 > at 1 H4102 4:04:42 PM [Eastern standard Tlme]
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`P-17
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`Nov 04 02 02:58p
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`such search; and all registered and common-law trademarks, service marks, trade names and
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`corporate names uncovered in each such search.
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`.9.
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`For each of Opposer's Marks, and without limitation to the Investigated Period, identify
`
`each person to whom Opposer has granted a license for the use of such mark and state 1) the
`
`effective dates ofsuch license; 2) the goods or services covered by the license; 3) identify any
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`documents relating to the license, including without limitation, the license agreement, any
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`amendments to the agreement and all royalty statements generated in connection with such
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`license; and 4) if the license is no longer in effect, state the reasons for the termination and the
`date of the termination ofsuch license.
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`10. For each of0pposer’s Marks, and without limitation to the Investigated Period, identify
`and describe with particularity any and all opinions ofany type, legal or otherwise, requested or
`
`received by Opposer regarding the adoption and use or the right to use each such word, term or
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`phrase, or any variation thereof‘, as a trademark, service mark, and/or trade name, including the
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`person(s) rendering each such opinion, the date(s) ofeach such opinion, and the action(s) taken
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`or not taken by Opposer as result of or in reliance on, in whole or in part, each such opinion.
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`1 1. For each of Opposer's Marks, identify each person through or under which Opposer
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`claims any rights in each such word, term or phrase, and identify the goods and/or services with
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`which each such person uses or used that mark or name, the first date of adoption and use of that
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`mark or name by each such person, the geographic location of those uses, and any registrations
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`(state, federal, or international) sought and/or obtained for each such mark or name.
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`12. Other than the instant proceeding, for each of Opposer's Marks and without limitation
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`to the Investigated Period, identify and describe with particularity each lawsuit, Patent and
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`Trademark Office opposition proceeding, or Patent and Trademark Office cancellation I
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`proceeding Opposer has contemplated, attempted to initiate, or been party to, involving or
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`Received from < 312 332 6376 > at 11/4/02 4:04:42 PM [Eastern Standard Time]
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`relating to the adoption, use, or registration of each such mark, including each actual or potential
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`adverse party and the tradema.rk(s), service n1ari((s), trade name(s), or corporate name(s)
`involved; the triburial, case docket number, filing date, and ultimate outcome for each such
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`matter; and the reason(s) why any such matter was contemplated and/or attempted or why such
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`matter was or was not actually initiated.
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`13. Other than the instant proceeding, for each of Opposer's Marks, identify and describe
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`representative of Opposer to any third party concerning that third party's use of any designation
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`identical or substantially similar to any of Opposer's Marks as a trademark, service mark, trade
`name, or otherwise, including the identity of each such third party and the trademark(s), service
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`marlc(s) trade x1ame(s), or other use(s), involved; the person(s) contacted by Opposer or its
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`representative as to each third party use; the response of each such third party to the
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`communication by or for Opposer; the ultimate outcome of each such matter and reason why any
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`such matter was so concluded.
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`14. For each of Opposer's Marks, identify and describe with particularity the channels of .
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`trade and distribution for each item of goods sold and/or distributed, or for each service rendered,
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`by Opposer under each such mark.
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`15. For each of l)pposez’s Marks, identify and describe with particularity all purchasers by
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`class (e.g., retailers, general public) of each item of goods sold and/or distributed, or for each
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`service rendered, by Opposer under each such mark.
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`16. For each of Opposer‘s Marks, identify all geographic areas by city and-state in which
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`Opposer or some agent of Opposer sells and/or distributes products or renders services under
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`each such mark.
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`Received from < 312 332 6376 > at 1 1l4I02 4:04:42 PM [Eastern standard Time]
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`17. For each of Opposer's Marks, describe with particularity any prior or existing plans or
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`intentions by Opposer to expand its business under each such mark to products or services.
`including any printed matter or publications, not expressly set forth in the goods/services
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`description contained within the Registration on file with the United States Patent and
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`Trademark Office and identify the person(s) responsible for such plans or intentions; any actions
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`undertaken by Opposer in furtherance of such plans or intentions; and, if applicable,’ any
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`reason(s) for an abandonment or postponement of such plans or intentions.
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`18. For each of Opposer's Marks, identify all publications or broadcasts, including but not
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`limited to newspapers, magazines, trade journals, television (free, pay or cable television), radio,
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`Internet or other global computer communication networks, billboards, signs, distribution of
`leaflets or pamphlets, in any other print or broadcast media, in, on, or through which Opposer has
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`advertised its products or services under each such mark, and the dates for each such
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`advertisement.
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`19. For each of Opposer's Marks, identify and describe with particularity each instance of
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`actual confusion involving each such mark, or third party inquiry as to any relationship (e.g.,
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`affiliation, association, sponsorship, approval or other connection) between the source of
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`Applicant's products and any products or services sold, distributed, or rendered under any such
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`marks, known or reported to Opposer, including the da.te(s), and person(s) involved in each such
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`instance or inquiry, and any response of Opposer thereto, and identify all documents relating to
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`such instances or inquiries.
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`20. For each of Opposer's Marks, identify and describe with particularity each
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`representation by Opposer to any third party that it and/or any of its products or services under
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`each such mark is/are or is/are not related in any manner with Applicant, including the date and
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`person(s} involved in each such representation and the substance of each representation, and
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`identify all documents relating thereto.
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`21.
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`Identify any and all state, federal, or international registrations and/orpending
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`applications Opposer owns, licenses, or has filed which incorporate the term PING including, for
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`each such registration or application, the country or state offiling, the application or registration
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`number, the class(es) ofgoods and/or services reflected in each application or registration, the
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`date of first use (including the date first used within the U.S.) for such good or service, the actual
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`goods are services associated with that use, and identity of the owner of each application or
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`registration.
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`Identify and describe with particularityall facts, information, documents, and expert
`22.
`opinions upon which Opposer bases its contentions that the mark PD\lGU which Applicant is
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`attempting to register is likely to cause confusion with Opposer's Marks.
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`23.
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`Identify and describe with particularity all facts, information, documents, and expert
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`opinions upon which Opposer bases its contentions that the mark PYNGU which Applicant is
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`attempting to register falsely suggests a connection or endorsement with Opposer and Opposer’s
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`Marks.
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`24.
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`Identify and describe with particularity all facts, information, documents, and expert
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`opinions upon which Opposer bases its contentions that the use and registration by Applicant of
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`the mark PINGU will adversely affect Opposer’s common law trademark rights and limit its
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`rights under its existing trademark registrations, damage it’s the Opposer’s goodwill or irnpede
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`its subsequent attempt to register Opposer’s marks.
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`25. State whether Oppose: has ever sold or considered selling any product bearing any of
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`AppIicant’s trademarks, i.e. products manufactured by Joker, Inc., its predecessors, or its
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`licensees.
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`Respectfully Submitted,
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`JOKER, Inc.
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`Dated:
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`July 18, 2002
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`Marsha K. Hoover
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`Davis, Mannix & McGrath
`125 South Wacker Drive
`Suite 1700
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`Chicago, Illinois 60606
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`Received from < 312 332 6376 > at 11/4/02 4:04:42 PM [Eastern Standard Tlme]
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`‘Nov 34 02 03:00p
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`Davis, Mannix & McGPath
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`.22
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`IN THE L‘=m'r1':> S"_r..-mzs .P.—\TENT Ann Tmwmmxx OFFICE
`BEFORE T1’-IE TRADEMARK TRIAL AND APPEAL BOARD
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`KARSTEN MANUFACTURING CORP.
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`Opposer,
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`V
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`JCKHLHWL
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`Applicant
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`\/\/\J\J\/'
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`Opposition No.: 101,408
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`Cnxrrmcxrm on Sxuwxcx
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`In Rcgma W"-'5‘3'}’s h°l‘¢bY Certify fhat on
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`,|i¢ lg gum, I served a copy ofApplicant":
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`Fifit Set of Interrogatories To Opposerby girepaiiffirst class mail upon: Thomas G. Watkins,
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`canal, Sutton & Thomas, 155 Park one, 2141_ East Highland Avenue, Phoenbc, AZ 85016, attorney
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`of record for Applicant.
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`Received from < 312 332 6376 > at 11I4I02 4:04:42 PM [Eastern Standard Time]
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`Davis Mannix 8.
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`23
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`IN Tm: UNITED sures PATENT AND TRADEMARK OFFICE
`Barons Tm: TRADEMARK TRIAL AND Ar-ems. BOARD
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`KARSTEN MANUFACTURING CORP.
`Opposer,
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`)
`)
`)
`)
`)
`Applicant
`_._w._______“u______________)
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`v.
`JOKER, INC.,
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`Opposition No.: 101,408
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`APPL!CANT’S Fmsr Rsoussr To OPPOSER
`FOR THE Pnooucnow or DOCUMENTS
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`Pursuant to Fed.R.Civ.P. 34, Applicant requests that copies of documents or other
`physical‘ objects requested herein be produced within thirty (30) days ofthe service ofthis
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`request at the offices ofApplicant’s counsel, Davis, Mannix & McGrath, 125 S. Waclcer Drive,
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`Suite 1700, Chicago, IL 60606, or at such other place as may be mutually agreed between
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`counsel for both parties.
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`DEHNITIONS AND INsrRq_cT1oNs
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`A.
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`The following definitions apply to these requests:
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`I.
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`"And“ as well as "or" shall be construed either disjunctively or conjunctively as
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`necessary to bring within the scope of these discovery requests any information which
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`might otherwise be construed as outside their scope.
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`2.
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`"Date" means the exact year, month and date, if known, or, if not, your best
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`approximation thereof.
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`3. “Applicant” means Joker, Inc., and its predecessors, Editoy B.V. and Pingu B.V.
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`Recelved from < 312 332 6376 > at 11/4/02 4:04:42 PM [Eastern Standard TIme]
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`‘Nov 94 02 03:01p
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`Davis. Hannix & ”°G"at“
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`.24.
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`4. “Opposer” means Kai-sten Manufacturing Corporation as well as any person who is,
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`was, purports or has purported to be an officer, director, general partner, limited
`partner, ’-affiliate, employee, agent, attorney, accountant, assignee, subsidiary or
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`representative of the above named opposer, specifically including —— but not limited
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`to —— each of its agents, attorneys, employees, directors and officers.
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`5. “Opposer’s Marks" means the following marks registered by Opposer: PING,
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`Registration Nos. 704,552, 1,632,445, 1,633,477, 1,637,647, 1,638,323, and
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`1,647,448; ZING, Registration No. 1,289,154; PING EYE 2 (stylized), Registration
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`No. 1,647,510; PING ZING, Registration No. 1,768,156; and any other mark for
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`