Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA217593
`ESTTA Tracking number:
`06/13/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91117598
`Defendant
`R. SAMUEL BIRGER
`WILLIAM A. BONK, III
`Emerging Strategies, PLLC
`5440 31st Street, NW
`WASHINGTON, DC 20015-1346
`UNITED STATES
`docketing@emergingstrategies.com
`Motion to Compel Discovery
`William A. Bonk, III
`Docketing@EmergingStrategies.com
`/WA Bonk/
`06/13/2008
`motion to compel 061308.pdf ( 210 pages )(9147994 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Nomen International, S.A.,
`
`Opposer,
`
`v.
`
`R. Samuel Birger,
`
`Applicant
`
`In re: United States Trademark Application
`
`Serial No. 75/731,861
`
`Opposition No. 117,598
`
`APPLICANT’S MOTION TO COMPEL DISCOVERY
`
`Applicant, through counsel, moves this Honorable Board to compel discovery from
`
`Opposer and stay the testimony periods in this matter until resolution of this motion and states:
`
`1.
`
`On November 21, 2006, Applicant served a second set of discovery requests on
`
`Opposer, the first set pertaining to the Counterclaim. See Exhibit 15. On December 15, 2006,
`
`Opposer’s counsel contacted Applicant’s counsel and explained that Opposer’s counsel was
`
`“leaving in 45 minutes” and, because Opposer’s counsel was not able to get hold of Opposer,
`
`requested more time to: (1) file an Answer to Applicant’s Counterclaim; and (2) respond to
`
`Applicant’s second set of discovery requests. Applicant’s counsel was able to locate
`
`Applicant and secure the desired consent. On January 12, 2007, Opposer again contacted
`
`Applicant’s counsel to secure a one-week extension for responding to discovery. See Exhibit
`
`17. On January 23, 2007, more than a week later and 64 days after Applicant served the
`
`second discovery requests, Opposer provided its responses. See Exhibit 18.
`
`2.
`
`On February 6, 2007, because Opposer’s responses to Applicant’s second set of
`
`discovery requests were evasive and not in the spirit of the requests propounded, Applicant
`
`served a third set of discovery requests directed at the same information, but tracking the
`
`language of 15 U.S.C. §1127. See Exhibits 19 and 22.
`
`Docket No. 0007.0003
`
`1/9
`
`

`
`3.
`
`When pressed to “[i]dentify every place where Opposer performs in association with
`
`NOMEN each of the class 35 services recited in U.S. Registration No. 2,380,302 in any
`
`commerce . . .” Opposer evaded the interrogatory and responded that “Opposer does not
`
`perform with its mark, it provides various services thereunder.” See Exhibit 33, response to
`
`Interrogatory 52.
`
`4.
`
`On March 7, 2007, Thursday, Opposer’s counsel again contacted Applicant’s counsel
`
`and explained that Opposer’s counsel again was “leaving in 45 minutes” and would be gone
`
`until the following Monday, and needed to know whether Applicant would be willing to consent
`
`to re-opening discovery with respect to individuals identified in the supplemented discovery
`
`responses or else Opposer would file a unilateral motion to exclude evidence derived from
`
`same. See Exhibit 21. Applicant’s counsel was unable to locate Applicant.
`
`5.
`
`On March 13, 2007, Tuesday, one day after Opposer’s counsel returned, Opposer filed
`
`Opposer’s Motion to Exclude Applicant’s New Evidence Identified in its Amended Discovery
`
`Responses Or, in the Alternative, to Reopen Discovery, the latter of which the Board granted
`
`“with regard to individuals that were newly identified.” Order, Nomen International, S.A. v. R.
`
`Samuel Birger, April 7, 2007. Opposer also served responses to Applicant’s third set of
`
`interrogatories, to every one of which, although tracking the language of 15 U.S.C. §1127,
`
`Opposer was “unable to craft a responsive answer.” See Exhibit 22.
`
`6.
`
`On April 13, 2007, while Applicant’s counsel was away, Opposer’s counsel left a voice
`
`mail for, emailed and transmitted a facsimile to Applicant’s counsel asserting that Opposer
`
`wanted to “try to move quick enough to accomplish all that is necessary . . . with regard to the
`
`depositions I intend to set . . . I suggest we schedule a telephone conference early next week
`
`when we are both available to discuss these matters . . .” See Exhibit 24.
`
`Docket No. 0007.0003
`
`2/9
`
`Applicant’s Motion To
`Compel Discovery
`Opposition No. 117,598
`
`

`
`7.
`
`On April 17, 2000, Applicant’s counsel reminded Opposer of Applicant’s multiple
`
`attempts to schedule a time and place for obtaining the discovery responses promised in
`
`Opposer’s responses to document requests 43 and 44 had been ignored and that, if not
`
`received by the end of the month, would be understood as non-existent. Applicant’s counsel
`
`further explained that Opposer’s responses to Applicant’s interrogatories 42-52 were
`
`nonresponsive and that, in view of the difficulties Opposer seemed to be having in
`
`understanding, hence formulating a response to Applicant’s discovery requests, plainly stated
`
`that Applicant demanded “all documents that demonstrate use of NOMEN in US commerce.”
`
`Applicant’s counsel warned that:
`
`[b]arring any possible documents that may be turned over . . . Applicant [would
`understand] that none of: (1) the documents in Exhibits A-E and H of Opposer's
`Response to Applicant’s First Requests for Production of Documents to
`Opposer; (2) documents submitted with Opposer's 15 U.S.C. § 1058 Declaration
`to the United States Patent and Trademark Office regarding U.S. Reg. No.
`2380,302 (‘302 Registration); (3) www.nomen.com or (4) any other documents
`have been displayed in, used in connection with, performed under or in any
`other way associated with any sales, advertising or rendering of class 35
`services of the `302 Registration in commerce that the US Congress may
`regulate.
`
`See Exhibit 25.
`
`8.
`
`Later that day, Opposer’s counsel left a voice mail for, emailed and transmitted a
`
`th
`facsimile to Applicant’s counsel, referred to Opposer’s counsel’s April 13 voice mail, e-mail
`
`and facsimile, again stressed the importance of scheduling the depositions Opposer wanted,
`
`yet completely ignored Applicant’s repeated discovery requests. See Exhibit 26.
`
`9.
`
`On April 18, 2007, Applicant’s counsel acknowledged Opposer’s multiple demands via
`
`telephone, facsimile, e-mail and conventional mail regarding Opposer’s discovery interests,
`
`and asserted that Applicant would “address these demands only upon satisfaction of
`
`Docket No. 0007.0003
`
`3/9
`
`Applicant’s Motion To
`Compel Discovery
`Opposition No. 117,598
`
`

`
`Applicant’s discovery requests, some of which have been outstanding for nearly six years. . .
`
`and (2) that failing to provide all discovery responses on the delivery date will constitute an
`
`admission that no further documents or information exist on which Opposer could rely at trial.”
`
`See Exhibit 27.
`
`10.
`
`Later that day, rather than acknowledging Applicant’s discovery concerns and aware
`
`that Applicant’s counsel is a sole practitioner, Opposer’s counsel noticed four simultaneous
`
`depositions for Applicant and three other witnesses. See Exhibit 28.
`
`11.
`
`On April 30, 2007, Applicant again reminded Opposer of Opposer’s obligation to supply
`
`information and documents responsive to Applicant’s discovery requests. See Exhibit 36.
`
`12.
`
`On April 29, 2008, this Honorable Board denied Applicant’s April 25, 2008 Motion to
`
`Compel Discovery because Applicant “failed to allow Nomen a reasonable opportunity to
`
`address and/or correct alleged deficiencies in its discovery responses and therefore failed to
`
`make a good faith effort to resolve the parties' discovery dispute prior to seeking Board
`
`intervention . . .” Order, Nomen International, S.A. v. R. Samuel Birger, April 29, 2007.
`
`13.
`
`On that and the following day, Applicant transmitted facsimiles to Opposer expressing
`
`Applicant’s “good faith attempt to resolve deficiencies of Opposer’s discovery responses.” See
`
`Exhibits 37 and 38. Applicant advised Opposer specifically as to why Opposer’s responses
`
`were deficient, for example, because the response to Interrogatory No. 31 “does not address
`
`where the ‘provision of such services under the mark NOMEN’ occurred.” Id.
`
`14.
`
`On May 9, 2008, having been completely ignored for ten days, Applicant transmitted
`
`another facsimile to Opposer again expressing Applicant’s “good faith attempt to resolve
`
`deficiencies of Opposer’s discovery responses.” See Exhibit 39.
`
`Docket No. 0007.0003
`
`4/9
`
`Applicant’s Motion To
`Compel Discovery
`Opposition No. 117,598
`
`

`
`15.
`
`On May 13, 2008, Applicant received a letter from Opposer via U.S. post that
`
`th
`th
`expressed intention “to substantively respond to [Applicant’s] letters of April 29 and 30 . . .”
`
`See Exhibit 40.
`
`16.
`
`On May 22 Applicant received unsigned, uncertified responses to Applicant’s
`
`Interrogatories 31, 50 and 52. See Exhibit 41.
`
`17.
`
`On May 23, 2008, Applicant transmitted a facsimile that again reminded Opposer that:
`
`Applicant continues to await Opposer’s responses to Applicant’s Requests for
`Production of Documents Nos. 43 and 44. . . [and that] Opposer’s response to
`interrogatory 52 remains deficient because, inter alia, it does not identify the
`places where Opposer actually performs or renders services in association
`with NOMEN. The many invoices supplied may identify a customer’s business
`address, but not, for example, the physical location of participants during
`telephone conferences and meetings, consultants consulting clients,
`researchers conducting research, writers drafting, editing, printing and
`distributing documents.
`
`See Exhibit 42. “In a good faith attempt to resolve the deficiencies of Opposer’s discovery
`
`rd
`responses, Applicant [would] wait until June 3 before again moving to compel discovery if
`
`Opposer continues to evade [discovery].” Id.
`
`18.
`
`On June 6, 2008, two weeks later, three days after Applicant’s promised June 3rd
`
`motion filing date, Opposer called and said that they would be “sending a letter sometime next
`
`week.”
`
`19.
`
`To date, Applicant still has received no letter, no documents responsive to at least
`
`Applicant’s Requests for Production of Documents 43 and 44 and no sufficient answers to at
`
`least Applicant’s Interrogatories 31, 50 and 52.
`
`Docket No. 0007.0003
`
`5/9
`
`Applicant’s Motion To
`Compel Discovery
`Opposition No. 117,598
`
`

`
`BRIEF IN SUPPORT OF MOTION
`
`Pursuant to 37 C.F.R. § 2.120(e), as detailed above, Opposer failed to answer
`
`questions propounded in discovery interrogatories, failed to produce and permit the inspection
`
`and copying of documents or things to which Applicant is entitled to an answer and production
`
`and/or an opportunity to inspect and copy documents and things.
`
`This motion to compel discovery is filed prior to the commencement of the first
`
`testimony period as reset.
`
`This motion to compel discovery includes a copy of Applicant’s interrogatories with
`
`answers and objections made. This motion to compel discovery includes a copy of Applicant’s
`
`requests for production, which describes the documents or things that were not produced for
`
`inspection and copying, and the proffer of production and objections thereto in response to the
`
`requests.
`
`This motion to compel discovery is supported by the attached written statement that
`
`Applicant has made a good faith effort, by conference or correspondence, to resolve with
`
`Opposer the issues presented in the motion but the parties were unable to resolve their
`
`differences.
`
`Accordingly, Applicant respectfully requests that this Honorable Board issue an order
`
`compelling Opposer to respond completely to the above-identified requests for production of
`
`documents and interrogatories. This discovery is necessary to enable Applicant to obtain
`
`testimony deposition of foreign-based Opposer through the letter rogatory procedure or The
`
`Hague Convention letter of request procedure to more completely support Applicant’s
`
`cancellation counterclaim.
`
`Docket No. 0007.0003
`
`6/9
`
`Applicant’s Motion To
`Compel Discovery
`Opposition No. 117,598
`
`

`
`Further, Applicant respectfully requests that this Honorable Board issue an order
`
`prohibiting Opposer from asserting that any discovery materials that Opposer provided
`
`Applicant thus far can raise a genuine issue of material fact respecting Opposer’s or any of
`
`Opposer’s affiliate’s performance or rendering of any class 35 services in association with
`
`NOMEN in the United States or commerce thereof, consistent with TBMP § 412.02.
`
`Respectfully, Submitted,
`
`____________________
`William A. Bonk, III
`Applicant’s Attorney
`
`Emerging Strategies, PLLC
`st
`5440 31 Street, NW
`Washington, DC 20015-1346
`202.250.7002 (voice)
`202.250.7009 (fax)
`
`June 13, 2008
`
`Docket No. 0007.0003
`
`7/9
`
`Applicant’s Motion To
`Compel Discovery
`Opposition No. 117,598
`
`

`
`STATEMENT
`
`Applicant has made a good faith effort, by conference or correspondence, to resolve
`
`with the other party or the attorney therefor the issues presented in the motion but the parties
`
`were unable to resolve their differences.
`
`Respectfully, Submitted,
`
`____________________
`William A. Bonk, III
`Applicant’s Attorney
`
`Emerging Strategies, PLLC
`st
`5440 31 Street, NW
`Washington, DC 20015-1346
`202.250.7002 (voice)
`202.250.7009 (fax)
`
`June 13, 2008
`
`Docket No. 0007.0003
`
`8/9
`
`Applicant’s Motion To
`Compel Discovery
`Opposition No. 117,598
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the undersigned deposited a true copy of the foregoing
`
`APPLICANT’S MOTION TO COMPEL DISCOVERY
`
`with the United States Postal Service as first class mail, postage pre-paid, to:
`
`Young & Thompson
`Attn: Mark Lebow
`rd
`745 South 23 Street
`Arlington, Virginia 22202
`
`Date: June 13, 2008
`
`____________________
`William A. Bonk, III
`
`Docket No. 0007.0003
`
`9/9
`
`Applicant’s Motion To
`Compel Discovery
`Opposition No. 117,598
`
`

`
`Exhibit 15
`Exhibit 15
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the undersigned deposited a true copy of the
`
`foregoing APPLICANT’S SECOND SET OF INTERROGATORIES TO OPPOSER with
`
`the United States Postal Service as first class mail, postage pre-paid, to:
`
`Young & Thompson
`Attn: Mark Lebow
`rd
`745 South 23 Street
`Arlington, Virginia 22202
`
`Date: November 20, 2006
`
`____________________
`William A. Bonk, III
`
`Docket No. 0007.0003
`
`5/5
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the undersigned deposited a true copy of the
`
`foregoing APPLICANT’S SECOND REQUESTS FOR PRODUCTION OF DOCUMENTS
`
`TO OPPOSER with the United States Postal Service as first class mail, postage pre-
`
`paid, to:
`
`Young & Thompson
`Attn: Mark Lebow
`rd
`745 South 23 Street
`Arlington, Virginia 22202
`
`Date: November 20, 2006
`
`____________________
`William A. Bonk, III
`
`Docket No. 0007.0003
`
`3/3
`
`

`
`Exhibit 17
`Exhibit 17
`
`

`
`TELEPHONE MEMORANDUM
`
`Mark Lebow (703.521.2297)
`Caller:
`Respondant: WAB
`Date:
`January 12, 2007
`Pages:
`1
`RE:
`Docket No. OOO7.0003 (Opposition No. 117,598)
`
`1.
`
`ML
`
`2
`
`a.
`
`b.
`
`c.
`d.
`WAB
`
`a.
`
`b.
`
`c.
`
`d.
`
`3.
`
`ML
`
`a.
`
`b.
`
`c.
`
`Need 1-week extension
`
`Client has had difficulty comprehending US practice, which clearly did
`some damage to case
`Client is getting tired
`Now is a good time to try to settle again
`
`We’re fine with the extension
`
`As for settling, Applicant had wined and dined opposer and was open and
`eager to work together
`Opposer’s initial salvo was not favorable, so countered with very
`reasonable terms
`
`Applicant was miffed to learn that, rather than answering, opposerjust
`instructed you to go ahead with opposition
`
`there has been a change of management, which may be more practical
`about dealing
`[hesitation] “not worried about counterclaim”
`
`send Opposer's and Applicant's letter, of which ML had no knowledge, and ML will
`
`compel Opposer to consider seriously
`
`
`
`lliam A. Bonk, Ill
`
`

`
`Exhibit 18
`Exhibit 18
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NOMEN INTERNATIONAL, S.A.,
`
`Opposer,
`
`V.
`
`R. SAMUEL BIRGER,
`
`Applicant.
`
`
`
`Opposition No. 117,598
`
`OPPOSER’S RESPONSE TO APPLICANT'S
`SECOND SET OF INTERROGATORIES
`
`In accordance with 37 C.F.R. §§ 2.116, 2.120 and Rules 26 and
`
`33
`
`of
`
`the Federal Rules
`
`of Civil Procedure, Opposer,
`
`Nomen
`
`International S.A., hereby responds
`
`to Applicant's Second Set of
`
`Interrogatories to Opposer.
`
`Opposer’s responses are made without waiving or
`
`intending to
`
`waive any objections as to relevancy, privilege, or admissibility
`
`of any information provided in response to Applicant's requests,
`
`in
`
`any subsequent proceeding or at
`
`the trial of
`
`this or any other
`
`action, on any ground.
`
`A partial answer
`
`to any request
`
`that has
`
`been objected to,
`
`in whole or
`
`in part,
`
`is not
`
`intended to be a
`
`waiver of the objection.
`
`Interrogatory No. 30
`
`RESPONSES
`
`Describe how the documents submitted in Exhibit A of Opposer’s
`
`Response to Applicant's First Requests for Production of Documents
`
`

`
`
`
`TTAB Opposition No. 117,598
`Opposer’s Response to Applicant's
`
`Second Set of Interrogatories
`
`to Opposer have been, are and will be used or displayed in the
`
`sale, advertising or rendering of the class 35 services of U.S.
`
`services of U.S. Trademark Registration No. 2,380,302 (‘302
`
`Registration) in any commerce that lawfully may be regulated by
`
`Congress in more than one State or in the United States and a
`
`foreign country wherein the person rendering the services is
`
`engaged in commerce in connection with the services.
`
`Response to Interrogatory No. 30:
`
`Opposer objects to this interrogatory as requesting
`
`information that is beyond the scope of the Board's Order of
`
`November 17, 2006 which reopened the discovery period for the
`
`limited purpose of taking discovery with regard to the
`
`counterclaim. Additionally, Opposer objects to this interrogatory
`
`on grounds that it appears to call for a legal conclusion, which is
`
`the sole province of the Board and therefore not an appropriate
`
`area of inquiry. Further, Opposer objects to this interrogatory on
`
`grounds that it is vague, ambiguous, and confusing. Moreover,
`
`Opposer objects to this request on grounds that the interrogatory
`
`requests information that is irrelevant and not reasonably
`
`calculated to lead to the discovery of admissible evidence.
`
`Subject
`
`to and without waiving
`
`the
`
`foregoing objections,
`
`Opposer Exhibit
`
`A
`
`contains
`
`inter alia
`
`excerpts printed from
`
`Opposer’s website
`
`on September
`
`10,
`
`2000
`
`and provides various
`
`

`
`
`
`TTAB Opposition No. 117,598
`Opposer’s Response to Applicant's
`
`Second Set of Interrogatories
`
`information concerning Opposer’s services provided under
`
`the mark
`
`NOMEN, as well as other information about the company.
`
`Interrogatory No. 31
`
`Describe how the documents submitted in Exhibit B of Opposer’s
`
`Response to Applicant's First Requests for Production of Documents
`
`to Opposer have been, are and will be used or displayed in the
`
`sale, advertising or rendering of the class 35 services of the ‘302
`
`Registration in any commerce
`
`that
`
`lawfully may be
`
`regulated by
`
`Congress
`
`in. more
`
`than one State or
`
`in the United States and a
`
`foreign country wherein the person rendering the
`
`services
`
`is
`
`engaged in commerce in connection with the services.
`
`Response to Interrogatory No. 31:
`
`Opposer
`
`objects
`
`to
`
`this
`
`interrogatory
`
`as
`
`requesting
`
`information that
`
`is beyond the
`
`scope of
`
`the Board's Order of
`
`November
`
`17,
`
`2006 which reopened the discovery period for
`
`the
`
`limited
`
`purpose
`
`of
`
`taking
`
`discovery with
`
`regard
`
`to
`
`the
`
`counterclaim. Additionally, Opposer objects to this interrogatory
`
`on grounds that it appears to call for a legal conclusion, which is
`
`the sole province of
`
`the Board and therefore not
`
`an appropriate
`
`area of inquiry.
`
`Further, Opposer objects to this interrogatory on
`
`grounds
`
`that
`
`it
`
`is vague,
`
`ambiguous,
`
`and confusing.
`
`Moreover,
`
`Opposer objects to this request on grounds
`
`that
`
`the interrogatory
`
`

`
`
`
`TTAB Opposition No. 117,598
`Opposer’s Response to Applicant's
`
`Second Set of Interrogatories
`
`requests
`
`information
`
`that
`
`is
`
`irrelevant
`
`and
`
`not
`
`reasonably
`
`calculated to lead to the discovery of admissible evidence.
`
`Subject
`
`to and without waiving the foregoing objections,
`
`the
`
`invoices supplied by Opposer Exhibit B of Opposer’s Response to
`
`Applicant's First Requests for Production of Documents
`
`to Opposer
`
`speak for
`
`themselves.
`
`They are invoices that evidence Opposer’s
`
`provision of
`
`name
`
`creation services
`
`in commerce, which were
`
`generated further to Opposer’s provision of such services under the
`
`mark NOMEN.
`
`Interrogatory No. 32
`
`Describe how the documents submitted in Exhibit C of Opposer’s
`
`Response to Applicant's First Requests for Production of Documents
`
`to Opposer have been,
`
`are and will be used or displayed in the
`
`sale, advertising or rendering of the class 35 services of the ‘302
`
`Registration in any commerce
`
`that
`
`lawfully may be
`
`regulated by
`
`Congress
`
`in. more
`
`than one State or
`
`in the United States and a
`
`foreign country wherein the person rendering the
`
`services
`
`is
`
`engaged in commerce in connection with the services.
`
`Response to Interrogatory 32:
`
`Opposer
`
`objects
`
`to
`
`this
`
`interrogatory
`
`as
`
`requesting
`
`information that
`
`is beyond the scope of
`
`the Board's Order of
`
`November
`
`17,
`
`2006 which reopened the discovery period for
`
`the
`
`limited
`
`purpose
`
`of
`
`taking
`
`discovery with
`
`regard
`
`to
`
`the
`
`

`
`
`
`ll7,598
`TTAB Opposition No.
`Opposer’s Response to Applicant's
`Second Set of Interrogatories
`
`counterclaim. Additionally, Opposer objects to this interrogatory
`
`on grounds that it appears to call for a legal conclusion, which is
`
`the sole province of
`
`the Board and therefore not an appropriate
`
`area of inquiry.
`
`Further, Opposer objects to this interrogatory on
`
`grounds
`
`that
`
`it
`
`is vague,
`
`ambiguous,
`
`and confusing.
`
`Moreover,
`
`Opposer objects to this request on grounds
`
`that
`
`the interrogatory
`
`requests
`
`information
`
`that
`
`is
`
`irrelevant
`
`and
`
`not
`
`reasonably
`
`calculated to lead to the discovery of admissible evidence.
`
`Subject
`
`to and without waiving the foregoing objections,
`
`the
`
`documents supplied by Opposer Exhibit C of Opposer’s Response to
`
`Applicant's First Requests for Production of Documents
`
`to Opposer
`
`speak for
`
`themselves.
`
`They include a representative sampling of
`
`labels, print,
`
`packaging,
`
`stationary and
`
`the
`
`like bearing the
`
`designation NOMEN
`
`that
`
`had been, was being,
`
`and/or which was
`
`intended to be used by Opposer at the time it answered Applicant's
`
`first discovery requests in 2000.
`
`Interrogatory No. 33
`
`Describe how the documents submitted in Exhibit D of Opposer’s
`
`Response to Applicant's First Requests for Production of Documents
`
`to Opposer have been, are and will be used in the sale, advertising
`
`or rendering of the class 35 services of the ‘302 Registration in
`
`any commerce
`
`that
`
`lawfully may be regulated by Congress
`
`in more
`
`than one State or
`
`in the United States
`
`and a
`
`foreign country
`
`

`
`
`
`TTAB Opposition No. 117,598
`Opposer’s Response to Applicant's
`Second Set of Interrogatories
`
`wherein the person rendering the services is engaged in commerce in
`
`connection with the services.
`
`Response to Interrogatory No. 33:
`
`Opposer
`
`objects
`
`to
`
`this
`
`interrogatory
`
`as
`
`requesting
`
`information that
`
`is beyond the
`
`scope of
`
`the Board's Order of
`
`November
`
`17,
`
`2006 which reopened the discovery period for
`
`the
`
`limited
`
`purpose
`
`of
`
`taking
`
`discovery with
`
`regard
`
`to
`
`the
`
`counterclaim. Additionally, Opposer objects to this interrogatory
`
`on grounds that it appears to call for a legal conclusion, which is
`
`the sole province of
`
`the Board and therefore not an appropriate
`
`area of inquiry.
`
`Further, Opposer objects to this interrogatory on
`
`grounds
`
`that
`
`it
`
`is vague,
`
`ambiguous,
`
`and confusing.
`
`Moreover,
`
`Opposer objects to this request on grounds
`
`that
`
`the interrogatory
`
`requests
`
`information
`
`that
`
`is
`
`irrelevant
`
`and
`
`not
`
`reasonably
`
`calculated to lead to the discovery of admissible evidence.
`
`Subject
`
`to and without waiving the foregoing objections,
`
`the
`
`documents
`
`supplied
`
`by Exhibit
`
`D
`
`of Opposer’s Response
`
`to
`
`Applicant's First Requests for Production of Documents
`
`to Opposer
`
`speak for
`
`themselves.
`
`They
`
`include promotional materials
`
`for
`
`Applicant's mark and services as provided in response to discovery
`
`requests made in 2000.
`
`

`
`
`
`ll7,598
`TTAB Opposition No.
`Opposer’s Response to Applicant's
`Second Set of Interrogatories
`
`Interrogatory No. 34
`
`Describe how the documents submitted in Exhibit E of Opposer’s
`
`Response to Applicant's First Requests for Production of Documents
`
`to Opposer have been, are and will be used in the sale, advertising
`
`or rendering of the class 35 services of
`
`the ‘302 Registration in
`
`any commerce that lawfully may be regulated by Congress in more than
`
`one State or in the United States and a foreign country wherein the
`
`person rendering the services is engaged in commerce in connection
`
`with the services.
`
`Response to Interrogatory No. 34:
`
`Opposer
`
`objects
`
`to
`
`this
`
`interrogatory
`
`as
`
`requesting
`
`information that
`
`is beyond the scope of
`
`the Board's Order of
`
`November
`
`17,
`
`2006 which reopened the discovery period for
`
`the
`
`limited
`
`purpose
`
`of
`
`taking
`
`discovery with
`
`regard
`
`to
`
`the
`
`counterclaim. Additionally, Opposer objects to this interrogatory
`
`on grounds that it appears to call for a legal conclusion, which is
`
`the sole province of
`
`the Board and therefore not an appropriate
`
`area of inquiry.
`
`Further, Opposer objects to this interrogatory on
`
`grounds
`
`that
`
`it
`
`is vague,
`
`ambiguous,
`
`and confusing.
`
`Moreover,
`
`Opposer objects to this request on grounds
`
`that
`
`the interrogatory
`
`requests
`
`information
`
`that
`
`is
`
`irrelevant
`
`and
`
`not
`
`reasonably
`
`calculated to lead to the discovery of admissible evidence.
`
`

`
`
`
`TTAB Opposition No. 117,598
`Opposer’s Response to Applicant's
`Second Set of Interrogatories
`
`Subject
`
`to and without waiving the foregoing objections,
`
`the
`
`document supplied by Exhibit E of Opposer’s Response to Applicant's
`
`First Requests
`
`for Production. of Documents
`
`to Opposer
`
`speaks
`
`for
`
`themselves.
`
`It
`
`includes a Wall Street Journal article referencing
`
`Opposer and its commercial activities.
`
`
`Interrogatory No. 35
`
`Describe how the documents submitted in Exhibit H of Opposer’s
`
`Response to Applicant's First Requests for Production of Documents
`
`to Opposer have been, are and will be used in the sale, advertising
`
`or rendering of the class 35 services of
`
`the ‘302 Registration in
`
`any commerce that lawfully may be regulated by Congress in more than
`
`one State or in the United States and a foreign country wherein the
`
`person rendering the services is engaged in commerce in connection
`
`with the services.
`
`Response to Interrogatory No. 35:
`
`Opposer
`
`objects
`
`to
`
`this
`
`interrogatory
`
`as
`
`requesting
`
`information that
`
`is beyond the
`
`scope of
`
`the Board's Order of
`
`November
`
`17,
`
`2006 which reopened the discovery period for
`
`the
`
`limited
`
`purpose
`
`of
`
`taking
`
`discovery with
`
`regard
`
`to
`
`the
`
`counterclaim. Additionally, Opposer objects to this interrogatory
`
`on grounds that it appears to call for a legal conclusion, which is
`
`the sole province of
`
`the Board and therefore not an appropriate
`
`area of inquiry.
`
`Further, Opposer objects to this interrogatory on
`
`

`
`
`
`TTAB Opposition No. 117,598
`Opposer’s Response to Applicant's
`
`Second Set of Interrogatories
`
`grounds
`
`that
`
`it
`
`is vague,
`
`ambiguous,
`
`and confusing.
`
`Moreover,
`
`Opposer objects to this request on grounds that
`
`the interrogatory
`
`requests
`
`information
`
`that
`
`is
`
`irrelevant
`
`and
`
`not
`
`reasonably
`
`calculated to lead to the discovery of admissible evidence.
`
`Subject
`
`to and without waiving the foregoing objections,
`
`the
`
`documents supplied by Exhibit H of Opposer’s Response to Applicant's
`
`First Requests
`
`for Production of Documents
`
`to Opposer
`
`speak for
`
`themselves.
`
`They include inter alia Internet printouts pertaining
`
`to a European Management conference attended by companies around the
`
`world during which Opposer’s President and Director, as well as the
`
`director of related company NOMEN UK gave a lecture on brand naming
`
`in the year 2000.
`
`Interrogatory No. 36
`
`Describe how the specimen submitted with Opposer’s 15 U.S.C. §
`
`1058 Declaration to the United States Patent and Trademark Office
`
`regarding the ‘302 Registration on August 17, 2006 has been,
`
`is and
`
`will be used or displayed in the sale, advertising or rendering of
`
`the class 35 services of the ‘302 Registration in any commerce that
`
`lawfully may be regulated by Congress in more than one State or in
`
`the United States
`
`and
`
`a
`
`foreign country wherein
`
`the person
`
`rendering the services is engaged in commerce
`
`in connection with
`
`the services.
`
`

`
`
`
`TTAB Opposition No. 117,598
`Opposer’s Response to Applicant's
`Second Set of Interrogatories
`
`Response to Interrogatory No. 36:
`
`Opposer objects
`
`to this
`
`interrogatory on grounds
`
`that
`
`it
`
`appears to call for a legal conclusion, which is the sole province
`
`of
`
`the Board. and therefore not
`
`an appropriate area of
`
`inquiry.
`
`Additionally, Opposer objects to this interrogatory on grounds that
`
`it
`
`is vague,
`
`ambiguous,
`
`and confusing.
`
`The
`
`interrogatory asks
`
`Opposer
`
`to comment on a particular specimen of use submitted with
`
`Opposer’s filing of a declaration of use in 2006, whereas the record
`
`includes multiple specimens submitted by Opposer.
`
`Further, Opposer
`
`objects to this request on grounds that
`
`the interrogatory requests
`
`information that is irrelevant and not reasonably calculated to lead
`
`to the discovery of admissible evidence.
`
`Subject to and without waiving the foregoing objections,
`
`specimens submitted with Opposer’s declaration of Use on August 17,
`
`2006 include specimens pertaining to its Class 16 goods and Class 35
`
`services,
`
`including labels and promotional materials reciting its
`
`services provided under the mark NOMEN, all of which were found
`
`acceptable by the U.S. Patent and Trademark Office as demonstrating
`
`proper use of its mark in connection with the goods and services
`
`identified in its registration.
`
`Interrogatory No. 37
`
`Describe how www.nomen.com has been,
`
`is and will be used or
`
`displayed in the sale, advertising or
`
`rendering of
`
`the class 35
`
`10
`
`

`
`
`
`ll7,598
`TTAB Opposition No.
`Opposer’s Response to Applicant's
`Second Set of Interrogatories
`
`services of the ‘302 Registration in any commerce that lawfully may
`
`be regulated by Congress in more than one State or
`
`in the United
`
`States
`
`and a
`
`foreign country wherein the person rendering the
`
`services is engaged in commerce in connection with the services.
`
`Response to Interrogatory No. 37:
`
`Opposer’s website located at www.nomen.com has been,
`
`is and
`
`will continue to be used by Opposer
`
`to provide information about
`
`its company and the services it provides under its mark in various
`
`countries around the world,
`
`including the United States.
`
`Interrogatory No. 38
`
`Other than as possibly identified above, describe how the mark
`
`of the ‘302 Registration has been,
`
`is and will be used or displayed
`
`in the sale, advertising or rendering of the class 35 services of
`
`the
`
`‘302 Registration in any
`
`commerce
`
`that
`
`lawfully may
`
`be
`
`regulated by Congress
`
`in more
`
`than one State or
`
`in the United
`
`States
`
`and a
`
`foreign country wherein the person rendering the
`
`services is engaged in commerce in connection with the services.
`
`Response to Interrogatory No. 38:
`
`Opposer
`
`objects
`
`to
`
`this
`
`interrogatory
`
`as
`
`requesting
`
`information that
`
`is beyond the
`
`scope of
`
`the Board's Order of
`
`November
`
`17,
`
`2006 which reopened the discovery period for
`
`the
`
`limited
`
`purpose
`
`of
`
`taking
`
`discovery with
`
`regard
`
`to
`
`the
`
`11
`
`

`
`
`
`TTAB Opposition No. 117,598
`Opposer’s Response to Applicant's
`Second Set of Interrogatories
`
`counterclaim. Additionally, Opposer objects to this interrogatory
`
`on grounds
`
`that it is vague,
`
`ambiguous,
`
`and confusing.
`
`Further,
`
`Opposer objects to this request on grounds
`
`that
`
`the interrogatory
`
`requests
`
`information
`
`that
`
`is
`
`irrelevant
`
`and
`
`not
`
`reasonably
`
`calculated to
`
`lead
`
`to
`
`the
`
`discovery
`
`of
`
`admissible
`
`evidence.
`
`Moreover, Opposer objects to this request on grounds
`
`that it
`
`is
`
`unduly broad and burdensome.
`
`Subject
`
`to and without waiving
`
`the
`
`foregoing objections,
`
`Opposer states that
`
`its mark NOMEN will continue to be used to
`
`identify the goods and services identified in its registration.
`
`Interrogatory No. 39
`
`As recited on the specimen submitted with Opposer’s 15 U.S.C.
`
`§ 1058 Declaration to the United States Patent and Trademark Office
`
`regarding the ‘302 Registration on August 17, 2006, describe what
`
`Catchword has done, does and will do in support of furtherance of,
`
`or consistent with “Catchword
`
`is
`
`our North American alliance
`
`partner.”
`
`Response to Interrogatory No