throbber
ul
`
`
`
`LAW OFFICES
`
`Stetina Brunda Garred & Brucker
`A PROFESSIONAL CORPORATION
`PATENT, TRADEMARK, COPYRIGHT AND UNFAIR COMPETITION CAUSES
`75 ENTERPRISE, SUITE 250
`ALISO VIEJO, CALIFORNIA 92656
`
`l
`
`I
`
`KIT M. STETINA
`BRUCE B. BRUNDA
`WILLIAM J. BRUCKER
`MARK B. GARRED
`MATTHEW A. NEWBOLES
`ERIC L. TANEZAKI
`|_owE|_|_ ANDERSON
`SEAN ONEILL
`JAMES C. YANG
`NATHAN 5. SMITH
`SHUNSUKE S. SUMITANI
`STEPHEN Z. VEGH
`
`JESSIE WANG *
`BENJAMIN N. DIEDERICH ‘
`
`TELEPHONE
`FACSIMILE I
`FACSIMILE II
`
`(949)855-1246
`(949) 855-6371
`(949) 716-8197
`www.sIeIinolow.com
`Writer's Direct E-FTTOIII
`wbrucker@sIeIinoIow.com
`
`April 7, 2006
`
`Box TTAB — No Fee
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`RE:
`
`Spy Optic, Inc. v. Sun Palace Fashions, Inc.
`Serial No.: 75/609,801
`Our Reference: SPYNO-080M
`
`Dear Sir/Madam:
`
`Enclosed for filing are the following:
`
`1. Certificate of Mailing;
`2. Transmittal (in triplicate);
`3. Opposer’s Notice of Reliance With Exhibits A-E; and
`4. A Postcard to Acknowledge Receipt.
`
`Please charge any additional cost to our Deposit Account Number 19-4330. This letter is
`enclosed herewith in triplicate.
`
`Respectfully submitted,
`
`STETINA BRUNDA GARRED & BRUCKER
`
` Date: April 7, 2006
`
`By:
`
`W1 1am J. Brucker
`
`Customer No.: 007663
`Encls.
`
`Counsel for Opposer
`
`" PATENT AGENT
`
`IIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIII
`
`04-1 1-2006
`U.S. Patent 8. TMOfc/TM Mall Rep! Dt. #35
`
`

`
`
`
`
`
`
`
`I hereby certify that this correspondence is being deposited with the
`2/
`United States Postal Service with sufficient postage as first class mail in an
`envelope addressed to:
`
`ATTORNEY DOCKET NO: SPYNO-080M
`OPP. NO.: 91118606
`
`Certificate of Mailing
`
`
`
`Box TTAB — No Fee
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`on April 7, 2006
`
` _
`
`(Signature)
`
`Kimberly Carlsen
`(Typed name of person signing certificate)
`
` Note: Each paper must have its own certificate of mailing, or this
`
`certificate must identify each submitted paper.
`
`
`
`
`
`°‘P.°°"’.—‘
`
`
`Certificate of Mailing;
`. Transmittal (in triplicate);
`Opposer’s Notice of Reliance With Exhibits A—E (in triplicate);
`Proof of Service; and
`. A Postcard to Acknowledge Receipt.
`
`
`
`

`
`Case: SPYNO-080M
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 75/609,801
`
`) Opposition No.: 118,606
`)
`
`Spy Optic, Inc.
`
`Opposer,
`
`v.
`
`) )
`
`) )
`
`) )
`
`)
`
`Sun Palace Fashions, Inc.
`
`
`A plicant.
`
`0PPOSER’S NOTICE OF RELIANCE
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Dear Sir/Madam:
`
`Pursuant
`
`to 37 C.F.R. §2.120 and §2.122, Opposer, Spy Optic, Inc. hereby
`
`introduces the following evidence by Notice of Reliance. This Notice of Reliance is
`
`being filed in accordance with the existing testimony closing date of April 7, 2006.
`
`Opposer intends to reply upon the following:
`
`A.
`
`Opposer’s Trademark Registration
`
`Pursuant to 37 C.F.R. §2.l22(d)(2), Opposer makes of record U.S. Trademark
`
`Registration No. 1,981,513 for the mark SPY, registered June 18, 1996. An original
`
`certified copy of U.S. Trademark Registration No. 1,981,513 is attached hereto as
`
`Exhibit A. (Fed. R. Evid. Rule 902(4))
`
`///
`
`///
`
`

`
`B.
`
`Admissions Made By Applicant
`
`Pursuant to 37 C.F.R. §2.120(j)(3)(i), Opposer makes record all admissions made
`
`by Applicant in response to Opposer’s Request for Admissions to Applicant based upon
`
`Applicant’s failure to respond thereto. Since Applicant failed to respond to Opposer’s
`
`Request for Admissions, all admissions are to be deemed admitted. A true and correct
`
`copy of Opposer’s First Request for Admission to Applicant is attached hereto as Exhibit
`
`B. (Fed. R. Civ. P. 36(a))
`
`C.
`
`Declaration of William J. Brucker
`
`Pursuant to 37 C.F.R. §2.l22(e), Opposer makes of record the Declaration of
`
`William J. Brucker and its attached Exhibits 1-8 filed October 22, 2004, copy of which is
`
`attached hereto as Exhibit C. Note 118, Exhibit 6 (regarding failure to respond to
`
`discovery).
`
`D.
`
`Supplemental Declaration of William J. Brucker
`
`Pursuant to 37 C.F.R. §2.l22(e), Opposer makes of record the Declaration of
`
`William J. Brucker and its attached Exhibits 9-13 filed June 3, 2005, a copy which is
`
`attached hereto as Exhibit D. Note {[113 and 4, Exhibits 10 and 11 (regarding failure to
`
`respond to discovery).
`
`E.
`
`Printed Publications
`
`ews a ers
`
`Pursuant
`
`to 37 C.F.R. §2.122(e), Opposer makes of record the below-listed
`
`printed publications, wherein the primary relevance relates to the strength of Opposer’s
`
`mark, goods, channels of trade and target market.
`
`(Fed. R. Evid. Rule 902(6)). Those
`
`publications and are as follows (attached here to as Exhibit E):
`
`

`
`Stephanie Rosenbloom, Way More Stylish Than a Squint, N.Y. Times,
`
`April 14, 2005, at 6;
`
`Tiffany Montgomery, Oakley Claims Patent Violation; Rival Says Suit is
`
`Smokescreen, O.C. Register, March 11, 2005, at Business;
`
`Jennifer Davies, Orange.21 Shares Surge on 1” Day; Maker ofSunglasses
`
`Sees Stock Climb 14%, S.D. Union-Tribune, December 15, 2004, at C-3;
`
`Craig D. Rose, Carlsbad Sunglass Firm Plans IPO; Spy Optic Markets
`
`Youth-Oriented Gear, S.D. Union-Tribune, September 16, 2004, at C-3;
`
`Conor Dougherty, Made With the Shades; Action Sunglass Maker Spy
`
`Optic Has Prescription for Success, S.D. Union-Tribune, November 9,
`
`2003, at N-4;
`
`Bloomberg News, Target Accused ofInfringing Patents, L.A. Times, at 2;
`
`and
`
`Target Accused ofPatent Infringement, Saint Paul Pioneer Press, at C2.
`
`\\\\\\\K§§\§§§§
`
`

`
`Opposer respectfully requests the foregoing documents and information to be
`
`submitted into evidence in accordance with the rules of the United States Trademark
`
`Office and Trademark Trial and Appeal Board.
`
`Date:
`
`Customer
`
`0. 07663
`
`By:
`
`Respectfully submitted,
`
`
`tetina, Reg. No. 29,445
`Kit
`.
`William J. Brucker, Reg. No. 35,462
`STETINA BRUNDA GARRED & BRUCKER
`
`
`
`75 Enterprise, Suite 250
`Aliso Viejo, CA 92656
`(949) 855-1246
`Counsel for Opposer, Spy Optic, Inc.
`
`T:\Clicnt Documents\SPYNO\080M\notice of reliance.1.doc
`
`

`
`EXHIBIT A
`
`
`

`
`
`
`782572
`
`UNITED STATES DEPARTMENT OF COMMERCE
`
`United States Patent and Trademark Office
`
`September 28, 2005
`
`
`
`I
`
`
`
`_;
`
`V
`T
`
`"
`‘
`
`I
`
`A
`
`
`
`
`
`1.L'Dil4I<'I'l4I‘!l§'_t!rIII€(I(I{I4!'lflD33¢!<)4ItI'ID1IO-i‘-'9-!«IvI’!DID-!D1'§9fIfIG£IfID<l-lQ<!NG-I-lltll-lxllxfillwlI-llllixl-';ll!;lI-F-l.I!;fiG¢ID)T)l§QD«
`
`
`
`I it
`
`‘
`
`‘
`
`_
`.1’:
`Iii!
`.j
`
`THE ATTACHED U.S. TRADEMARK REGISTRATION 1,981,513 IS
`CERTIFIED TO BE A TRUE COPY WHICH IS IN FULL FORCE AND
`EFFECT WITH NOTATIONS OF ALL STATUTORY ACTIONS TAKEN
`THEREON AS DISCLOSED BY THE RECORDS OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE.
`
`3L
`'1 «.
`A:
`-9”"
`
`REGISTERED FOR A TERM OF 10 YEARS FROM June 18, I996
`SECTION8 & I5
`
`SAID RECORDS SHOW TITLE TO BE IN:
`
`SPY OPTIC, INC.
`
`A CALIFORNIA CORPORA TION
`
`By Authority of the
`
`Under Secretary of Commerce for Intellectual Property
`and Director of the United States Patent and Trademark Office
`
`M
`
`N. WOODSON
`
`
`
`Certifying Officer
`
`
`
`I__;_;_V45,.,v._;_'_.....«..,
`
`
`
`K
`umlrmrnmnmnuumn
`
`— --; _. ....
`mu u
`
`.
`
`»<l
`
`

`
`Int. ‘CL: 9
`
`Prior U.S. ~Cls.: 21, 23, 26, 36, and 38
`
`Reg. No. 1,981,513
`United States Patent and Trademark Office Registered June 13,1995
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`SPY
`
`NO FEAR,
`TION)
`2251 FARADAY AVE.
`
`INC.
`
`(CALIFORNIA CORPORA-
`_
`
`_
`
`,
`
`v
`
`FIRST UsE 9-0-1994;
`1-o-1995.
`
`IN COMMERCE
`
`'
`
`. CARLSBAD, CA 92008
`
`SN 74-515,876, FILED 4-7-1994.
`
`FOR: GLASSES AND SUNGLASSES,
`CLASS 9 (U.S. CLS. 21, 23, 26, 36 AND 38).
`
`IN
`'
`
`IRENE D. WILLIAMS, EXAMINING ATTOR-
`NEY
`
`
`
`

`
`EXHIBIT B
`
`

`
`Case SPYNO—O8OM
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN RE SERIAL NO. 75/609,801
`
`SPY Optic, Inc.,
`
`Opposition No. 118,606
`
`Opposer,
`
`vs.
`
`Sun Palace Fashions,
`
`Inc.,
`
`Applicant.
`
`\—\,\’.g\_/V/\,\,\/\,
`
`OPPOSER'S FIRST REQUEST FOR ADMISSIONS TO APPLICANT‘
`PURSUANT TO P.T.O. RULE 2.120 AND FED.R.CIV.P. 36
`
`Opposer,
`
`Spy Optic,
`
`Inc.,
`
`(hereinafter
`
`"Opposer")
`
`hereby
`
`requests pursuant
`
`to Rule
`
`36 of
`
`the Federal Rules of Civil
`
`Procedure that Applicant, Sun Palace Fashions, Inc.,
`
`(hereinafter
`
`"Applicant"), admit the truth of the following matters for purposes
`
`of the pending action only, within thirty (30) days of the date of
`
`service hereof.
`
`DEFINITIONS
`
`A.
`
`The following requests shall be construed as addressed to
`
`the Applicant,
`
`any
`
`of Applicant's
`
`subsidiaries,
`
`affiliated
`
`corporations, and any other corporations or business enterprises
`
`controlled by Applicant that are presently or were at the time to
`
`which
`
`the
`
`request
`
`relates,
`
`associated in any way with the
`
`Exhibi:§___Page.i__of_.lL
`
`
`
`

`
`Applicant.
`
`B.
`
`As used herein,
`
`the conjunctions "and" and "or" shall be
`
`interpreted
`
`conjunctively,
`
`and
`
`shall
`
`not
`
`be
`
`interpreted
`
`disjunctively to exclude any information otherwise within the scope
`
`of any request.
`
`C.
`
`As used herein,
`
`the term "Applicant" means the Applicant,
`
`Applicant's predecessors,
`
`divisions,
`
`subsidiaries,
`
`licensees,
`
`franchisees or affiliates,
`
`and includes Applicant's present and
`
`former officers, directors, partners, agents, employees and all
`
`other persons acting or purporting to act
`
`on behalf of
`
`the
`
`Applicant, or entities related to Applicant. Where any of
`
`the
`
`following requests pertain to more than a single entity including
`
`Applicant and/or
`
`any of Applicant's related companies,
`
`answer
`
`separately for each such entity,
`
`identifying the entity to which
`
`such answer pertains.
`
`D.
`
`As used herein,
`
`the term "subsidiary" means any business
`
`enterprise,
`
`the operations of which are subject
`
`to Applicant's
`
`control through whole or partial ownership of the capital stock.
`
`B.
`
`As used herein,
`
`the term "person" or "persons" includes
`
`not only natural persons, but also, without
`
`limitation,
`
`firms,
`
`partnerships, associations, corporations, and other legal entities,
`
`and divisions, departments and units thereof.
`
`F.
`
`As used herein, "affiliate" means a company effectively
`
`controlled by another, but associated with Applicant under common
`
`ownership or control.
`
`Exhibit_§__1>age.}-....of..l9..
`
`
`
`

`
`G.
`
`As used herein,
`
`the term "Opposer's mark" shall mean the
`
`mark SPY (U.S. Registration No. 1,981,513).
`
`H.
`
`As used herein,
`
`the term "Applicant's mark" shall mean
`
`the mark "SPNY" as filed in the United States Patent and Trademark
`
`Office and assigned as Serial No. 75/609,801.
`
`I.
`
`As used herein,
`
`the term "eyeglasses" shall
`
`include,
`
`without
`
`limitation, sunglasses, glasses, and any other device to
`
`improve vision and/or filter light reaching a person's eyes.
`
`REQUESTS FOR ADMISSIONS
`
`REQUEST FOR ADMISSION NO. 1:
`
`Both Opposer and Applicant offer eyeglasses for sale.
`
`REQUEST FOR ADMISSION NO. 2:
`
`Applicant offers eyeglasses for sale.
`
`REQUEST FOR ADMISSION NO. 3:
`
`Applicant
`
`intends to offer eyeglasses for sale.
`
`REQUEST FOR ADMISSION NO. 4:
`
`Applicant's eyeglasses are marketed through retail department
`
`stores .
`
`REQUEST FOR ADMISSION NO. 5:
`
`Applicant's eyeglasses are marketed through sporting goods
`
`stores.
`
`RE UEST FOR ADMISSION NO. 6:
`
`Applicant's eyeglasses are marketed on the Internet.
`
`RE UEST FOR ADMISSION NO. 7:
`
`Applicant's eyeglasses are sold to the general purchasing
`
`Exhibit E Page 3 0f_£L.
`
`
`
`

`
`public.
`
`RE UEST FOR ADMISSION NO. 8:
`
`Generally,
`
`the average purchaser of Applicant's eyeglasses is
`
`unlikely to engage
`
`in extensive,
`
`careful evaluation of
`
`such
`
`products before purchase of such products.
`
`RE UEST FOR ADMISSION NO. 9:
`
`Applicant's eyeglasses directly compete against Opposer's
`
`eyeglasses.
`
`REQUEST FOR ADMISSION NO. 10:
`
`Applicant sells eyeglasses using the mark SPNY.
`
`REQUEST FOR ADMISSION NO. 11:
`
`Applicant knew of Opposer's SPY mark at the time of adopting
`
`Applicant's mark in connection with eyeglasses.
`
`REQUEST FOR ADMISSION NO. 12:
`
`Applicant's mark is. confusingly similar
`
`to Opposer's
`
`SPY
`
`trademark for
`
`the goods
`
`identified in Application Serial No.
`
`75/609,801.
`
`REQUEST FOR ADMISSION NO. 13:
`
`Use by Applicant of the mark SPNY on the goods claimed in the
`
`subject application is likely to cause confusion, deception and
`
`mistake.
`
`REQUEST FOR ADMISSION NO. 14:
`
`Applicant's use of the mark SPNY interferes with Opposer's use
`
`of its SPY trademark and use of, or registration of,
`
`the mark SPNY
`
`by Applicant will seriously damage Opposer.
`
`Exhibit_.ib___Page
`
`of M
`
`
`
`

`
`REQUEST FOR ADMISSION NO. 15:
`
`Applicant's mark SPNY is visually similar to Opposer’s mark
`
`SPY.
`
`RE UEST FOR ADMISSION NO. 16:
`
`Applicant's mark SPNY is phonetically similar to Opposer’s
`
`mark SPY.
`
`REQUEST FOR ADMISSION NO. 17:
`
`The goods stated in Applicant's trademark application for the
`
`mark SPNY are identical to the goods covered by Opposer’s trademark
`
`registration for the mark SPY, U.S. Registration No. 1,981,513.
`
`REQUEST FOR ADMISSION NO.
`
`l8:
`
`The trade channels used by Applicant
`
`to market and sell its
`
`eyeglasses are identical
`
`to those used by Opposer
`
`to market and
`
`sell its eyeglasses.
`
`REQUEST FOR ADMISSION NO. 19:
`
`The commercial
`
`impression created by Applicant's mark SPNY is
`
`almost identical to the commercial impression created by Opposer’s
`
`mark SPY.
`
`Da t ed 2
`
`I j~./
`
`,
`
`,
`‘i C} 0
`
`By 3
`
`C:\wp\OPPOSE\Spyno\O8OM-first request for admissions
`
`/fix‘
`
`.
`//’
`Respectfully submitted,
`1
`y-
`A
`
`,-/
`
`—
`"1?I4’?L‘V’~f'\""""/
`..—'?§:‘-'
`..v’C‘.?_,/3;‘-.5«-«
`*7/K.
`KitmMT Stetina, Reg. No. 29,445
`Darren S. Rimer
`
`STETINA BRUNDA GARRED & BRUCKER
`
`75 Enterprise, Suite 250
`Aliso Viejo, CA 92656
`(949) 855—1246
`
`Atorneys for Opposer
`Spy Optic,
`Inc.
`
`ExhibitLPage
`
`0f.L0_.
`
`

`
`PROOF OF SERVICE
`
`State of California
`
`ss.
`
`County of Orange
`
`I am over the age of 18 and not a party to the within
`
`action; my business address is STETINA BRUNDA GARRED & BRUCKER,
`
`75 Enterprise, Suite 250, Aliso Viejo, California 92656.
`
`On
`
`December 21, 2000,
`
`a copy of the attached OPPOSER’S FIRST REQUEST
`
`FOR ADMISSIONS TO APPLICANT PURSUANT TO P.T.O. RULE 2.120 AND
`
`FED. R. CIV. P. 36 was served on all interested parties in this
`
`action by U.S. Mail, postage prepaid, at the address as follows:
`
`Bernard Malina
`MALINA & WOLSON
`
`60 East 42“ Street
`
`New York, NY 10165
`
`Executed on December 21, 2000 at Laguna Hills, California.
`
`I declare under penalty of perjury that the above is true and
`
`correct.
`
`I declare that I am employed in the office of STETINA
`
`BRUNDA GARRED & BRUCKER at whose direction service was made.
`
`

`
`EXHIBIT C
`
`

`
`Case: SPYNO-080M
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 75/609,801
`
`) Opposition No.: 118,606
`)
`
`) )
`
`) )
`
`) )
`
`)
`
`SPY Optic, Inc.
`
`
`
`Opposer,
`
`
`
`v.
`
`Sun Palace Fashions, Inc.
`
`
`A licant.
`
`DECLARATION OF WILLIAM J. BRUCKER IN SUPPORT OF OPPOSER’S
`MOTION TO SUSPEND PROCEEDINGS
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3514
`
`I, William J. Brucker, declare as follows:
`
`1.
`
`I am one of the attorneys of record for Opposer, Spy Optic,
`
`Inc.
`
`(“Opposer”) in the above-referenced action. As such, I have personal knowledge of the
`
`facts stated herein and if called upon as a witness, I could and would competently testify
`
`to the below facts which are personally known to me.
`
`2.
`
`On November 15, 2001, counsel for Applicant sent counsel for Opposer a
`
`letter proposing a modified form of Applicant's mark as a possible basis for settling the
`
`opposition. A true and correct copy of this letter is attached hereto as Exhibit 1.
`
`3.
`
`On July 1, 2002, counsel for Opposer sent counsel for Applicant a letter
`
`enclosing a proposed settlement agreement
`
`incorporating the modified mark which
`
`Exhibit_CZ...Page \
`
`of1:7.
`
`
`
`

`
`counsel for Applicant had proposed. A true and correct copy of this letter (without '
`
`enclosures) is attached hereto as Exhibit 2.
`
`4.
`
`On July 19, 2002, counsel for Applicant sent counsel for Opposer a letter
`
`enclosing another variation of Applicant’s mark. A true and correct copy of this letter is
`
`attached hereto as Exhibit 3.
`
`5.
`
`On November 12, 2002, counsel for Opposer sent counsel for Applicant a
`
`letter stating that the proposed modification was acceptable. A true and correct copy of
`
`this letter is attached hereto as Exhibit 4.
`
`6.
`
`Once the proceeding was removed from suspension, we attempted to
`
`contact Applicant’s counsel to determine the status of settlement. On September 23,
`
`2003, counsel for Opposer sent counsel for Applicant a letter requesting if the settlement
`
`agreement was agreeable. A true and correct copy of this letter is attached hereto as
`
`Exhibit 5.
`
`7.
`
`On or about October 6, 2003, I attempted to contact counsel for Applicant
`
`by telephone and received no response.
`
`8.
`
`On October 7, 2003, I sent counsel for Applicant a letter as a follow up to
`
`the previous letters requesting a stipulation to suspend the proceedings in light of the
`
`settlement discussions.
`
`A true and correct copy of this letter (without enclosures) is
`
`attached hereto as Exhibit 6.
`
`I have not received any response from counsel for
`
`///
`
`///
`
`///
`
`///
`
`2
`
`Exhibit 5/ Page]./__of_\.S__
`
`

`
`Applicant since our September 23, 2003 letter, but I am hopeful of having the parties
`
`execute the Settlement Agreement.
`
`I declare under penalty of perjury that the foregoing is true and correct, and that
`
`this Declaration is being executed on OctoberE2003 at Aliso Viejo, California.
`
` cker, Declarant
`
`T:\Client Documents\SPYNO\080M\declaration of wjb re motion to suspend.doc
`
`

`
`s»,-at By:
`-«
`
`'
`
`,
`.-.«ALruA a WOLSCN;
`
`.
`2129838421.
`
`rn .
`.
`“~’ *5 °‘
`
`1
`
`; 7'
`‘ ‘ -
`
`58 3 1'3
`9
`
`I
`
`Law Oéfices
`MALINA 8c WOI.$ON
`60 East 42nd Street
`New York, New York 10165
`
` E
`
`mom;
`
`BERNARD MALINA
`
`TOTAL NUMBER OF PAGES
`INCLUDING THIS PAGE! 3
`
`Telephone:
`Facsimile:
`
`(212) 986-7410
`(212) 983-8421
`
`DATE: November 15, 2001
`
`Darren s. Rixrer, Esq.
`
`(949) 355-6371
`
`1_
`
`2.
`
`3.
`
`4.‘
`
`5.
`
`M_,E§S§§E—:
`
`IF ANY PROBLEM IN
`TRANSMISSION, PLEASE CALL:
`
`Isabel Truyol at
`(212) 986-7410
`
` : This transmission is confidential and/or legally
`privileged and intended only for use by the persons named above.
`If you are not
`an intended recipient, you are notified that any review,_dissemination or copying
`of this telecopy is prohibited.
`If you receive this telecopy in error, please call us
`immediately and return the original via the U.S. Postal Service. Thank you.
`
`Exhibit,Q2_.Pagei’i_0f—l5——
`
`EXHIBIT 1 PAGE 1 OF 3
`
`

`
`seqt By’ UALINA 5 W')LSCN'
`.
`-
`'
`I
`
`2129838421;
`
`Nov-15-01 14:-:8;
`..
`
`Page ?.'3
`
`warm’. TRADEMARK. :opvmon~.-
`I. UNIAII couvrrmon LAW
`
`LAW Ounces
`
`MALINA 5. WoL.soN
`60 EAST 4ZND STRZI1’
`NEW Yea“ N Y ‘Olga
`-__..
`
`(ZIZ) 906-74lO
`
` flE - (949) 855-6371
`
`Darren S. Rimcr, Esq.
`Stetina, Brunda. Garred 6c Brucker
`75 Enccrprisc, Suite 250
`Aliso Viejo, California 92656
`
`Re:
`
`Spy Optic, Inc. V. Sun Palace Fashions, Inc.
`Opposition No. 118,606
`Mark: SPNY
`Your Ref: SPYNO-080M
`
`4
`
`Dear Darren:
`
`n:.':comcm mm on cu‘:
`CABLE: PRANKSSON
`
`'
`
`November 15, 2001
`
`Further to our telephonic conversation yesterday, I attach proposed moc‘.i1'icd form
`of our clients mark for use (and registration) on eyewcar as a possible b3SlS for settling
`the above opposition.
`
`Kindly give me a call with your thoughts.
`
`BM/it
`attachment
`c:\cli¢nu‘.docker\misc\rimu-.0 1 5
`
`. rely,
`
`BERNARD MALINA
`
`Exhibit 0 _Page§—°fJ5—
`
`EXHIBIT 1 PAGE 2 OF 3
`
`
`

`
`s_ent By: MALINA 8 WOLSCN;
`
`'
`
`2129838421;
`
`u¢.,.15.g1 -.4343;
`
`page 3,3
`
`SIWNW
`
`Exhibit C» Page
`
`‘.0 ofli
`
`EXHIBIT 1 PAGE 3 OF 3
`
`

`
`LAW OFFICES
`
`Stetina Brunda Garred & Brucker;
`
`A PROFESSIONAL COIUORAIION
`mueur. IRADEMARK. covvmcnr mo unmn cowsrmou CAUSES
`
`75 ENTERPRISE. SUIIE 250
`ALISO VIEJO. CALIFORNIA 92656
`
`-
`
`.
`
`July 1, 2002
`
`(949) 8554246
`IELEPHONE
`.
`C
`:Z2Z,’3?Z.§?Z$
`§,‘.‘c§.'I.‘it§.'.
`emoil@stetlnoIaw com
`www.stet|naIow'com
`'
`wmers Direct E-moiI-
`drImer@sIetInolcw corri
`'
`
`Kll M. SIEIINA
`BRUCE B. BRUNDA
`WILLIAM J. BRUCKER
`MARK B. GARRED
`MAIIHEW A. NEWBOLES
`
`s.
`ENC L‘ LANEZAKL
`LOWELL ANDERSON
`MARLENE KLEIN
`‘N “- W
`"“’“‘“ ’- “"9
`
`.
`IHOMAS E. VESBII'
`JESSIE WANG‘
`
`
`VIA FACSIMILE AND MAIL
`(212) 983-8421
`
`Bernard Malina
`MALINA & WOLSON
`60 East 42'“ Street
`
`New York, NY 10165
`
`Re:
`
`Spy Optic, Inc. v. Sun Palace Fashions, Inc.
`Opposition No.: 118,606
`Mark: SPNY
`
`Our Reference: SPYNO-080M
`
`Dear Mr. Malina:
`
`As we have been discussing, enclosed please find our proposed Settlement Agreement in
`connection with the above-identified matter.
`If this Agreement is acceptable, please have your
`client execute duplicate originals and return the same to our attention at your earliest convenience.
`In the alternative, if you have any suggested changes or comments, please let me know.
`
`Thank you for your attention to this matter.
`
`I look forward to hearing from you soon.
`
`Very truly yours,
`
`
`
`Darren S. Rirner
`
`DSR/tg
`Encls .
`I:\CIlent Documents\SPYNO\08OM\5pyno<080m-0701 02I.l -cllent.tg.wpd
`
`Exhibit C» Page:Lof_\.§_
`
`‘PATENT AGENT
`
`EXHIBIT 2 PAGE 1 OF 1
`
`
`
`

`
`
`.
`'
`Sent By: MALINA S WOLSCIP
`
`749338421;
`2 ..
`
`.4.‘-.,
`J.‘-]_.19_o2 -,x. .3.
`
`age
`
`F
`
`Law Offioes
`MALINA 8c WOLSON
`60 East 42nd Street
`New York, New York 10165
`
`co A
`
`on
`
`FROM:
`
`BERNARD MALINA
`
`Telephone:
`Facsimile:
`
`(212) 986-7410
`(212)983-8421
`
`TOTAL NUMBER OF PAGES
`INCLUDING THIS PAGE:
`
`3
`
`I9;
`
`1, Darren S. Rimer, Esq.
`
`DATE:
`
`JULY 19, 2002
`
` =
`
`(949) 355-5371
`
`2.
`
`3.
`
`If ANY PROBLEM IN
`TRANSMISSION, PLEASE CALL:
`0
`: This transmission is confidential and/or legally
`or use by the persons named above.
`If you are not
`privileged and intended only f
`an intended recipient, you are notified that any review,_dissemination or copying
`of this telecopy is prohibited.
`If you receive this telecopy in error, please call us
`immediately and return the original via the U.S. Postal Service. Thank you-
`
`Isabel Truyol at
`(212) 986-7410
`
`Exhibit I; Page
`
`of li
`
`EXHIBIT 3 PAGE 1 OF 3
`
`

`
`Sent By: VALINA a WOLSCN;
`
`2229333421;
`
`Jul-19-O2 *::ae;
`
`Fage 2/3
`
`PA'L(‘f:’:."AfRADI2HARK. co-~rnI6M*r
`"' °°""""°" ""‘"
`
`LAW Orraccs
`
`MALINA 8. WOLSON
`
`6° Egsr 4,-3ND $7-R5‘-r
`New Yoms. N.Y. note:
`.4.
`
`(ZIZ) O66-74lO
`
` 1E - (949) 855-6371
`
`Darren S. Rimer, Esq.
`Stetina. Brunda, Garred & Brucker
`24221 cane de la Louisa, 4"‘ Floor
`Laguna Hills, California 92653
`
`Re:
`
`_Spy Optic, lnc. v.
`Sun Palace Fashions. Inc.
`
`Opposition No. 118,606 against
`Application No. 75/609,801 for SPNY
`Your Ref: SPYNO-080M
`
`Qgr File: MS-641
`
`Yutcomtfll um ..a..“|
`°"'“" "“"""‘?"
`
`July 19' 2002
`
`Dear Darren:
`
`Further to our recent telephone conversation. I enclose another variation ofour
`client's mark which he proposes to use. Ibelieve that the attached version should be
`acceptable inasmuch as it separates the SP and NY portions of the mark, albeit vertically
`rather than horizontally. We would, therefore, suggest amending the language in the
`proposed Settlement Agreement to include the attached configuration as acceptable.
`
`Kindly give me a call to confirm the above.
`
`_Sincerely_,
`
`I
`
`_
`
`.
`
`BERNARD MAl'.T\‘
`
`
`
`BM/it
`Attachment
`c:\cllcnt:\rimcr. 7l')02
`
`Exhibit ,_C.2_Page :L°f 6
`
`EXHIBIT 3 PAGE 2 OF 3
`
`

`
`ant By: VALINA 8 WOLSCN;
`
`2 ..‘<98-‘E8421;
`
`c‘.
`.~ I
`_]L1.gg.on qC.n7.
`2
`
`D
`
`age
`
`
`
`Exhibit C» Page (0
`
`of l‘5
`
`EXHIBIT 3 PAGE 3 OF 3
`
`

`
`.._._'____
`
`LAW omcss
`
`Stetina Brunda Garred & Brucker
`A rreoressnomu conrotunou
`PATENT. TRADEMARK. COPYRIGHT AND UNFAIR COMPEIIHON CAUSES
`
`75 ENIERPRISE. SUIIE 250
`ALISO VIEJO. CALIFORNIA 92656
`
`KIT M. SIETINA
`BRUCE B. BRUNDA
`WILLIAM J. BRUCKER
`MARK 8. GARRED
`
`MATTHEW A. NEWBOLES
`ERIC L- LANEZAKL
`LOWELL ANDERSON
`
`.
`
`DARREN 5~ RLMER
`MARLENE KLEIN
`
`‘N H» KIM
`5’5””E“‘ I" BANG
`SEAN O'NEILL
`
`THOMAS E. VES8lT'
`JESSIE WANG‘
`
`Bernard Malina
`MALINA & WOLSON
`60 East 42"“ Street
`
`New York, NY 10165
`
`(949) 8554246
`IELEPHONE
`(949; 555-83 71
`FACSIMILE I
`(949) 7l6-8197
`FACSIMILE n
`emoiI@stetinoIow.com
`www.stetinaIaw.com
`
`Writers Direct E-mail:
`drimer@stefinciIow.com
`
`November 12, 2002
`
`VIA FACSIMILE AND MAIL
`(212) 983-8421
`
`Re:
`
`Spy Optic, Inc. v. Sun Palace Fashions, Inc.
`Opposition No.: 118,606
`Mark: SPNY
`
`Our Reference: SPYNO—O8OM
`
`Dear Bernard:
`
`As we discussed earlier today, this letter will confirm that we have agreed to further
`suspend this action in light of our existing settlement discussions. For your reference, I am
`enclosing a service copy of our Stipulated Request for Suspension of Proceedings.
`
`the prior design which you proposed is agreeable to Spy. For your
`As I mentioned,
`reference, I am enclosing a copy of this additional format for your client's trademark.
`
`With this change, I believe that we should be in a position to have the agreement executed
`in the near future.
`If you have any comments regarding the settlement agreement, please let me
`know.
`
`I look forward to hearing from you soon.
`
`Very trulyqlours,
`
`S ETINA BR NDA G
`
`RUCKER
`
` \
`
`
`
`'
`Exhibit C; Page
`
`DSR/tg
`Encls.
`
`
`
`I/Darren S. Rimer
`
`
`
`‘PATENT AGENT
`
`EXHIBIT 4 PAGE 1 OF 1
`
`ofE..
`
`

`
`.IA
`
`LAW OFFICES
`Stetina Brunda Garred & Brucker
`A PROFESSIONAL COIIPODAIION
`PAIENI.
`IRADEMARK. copvmsm mo uumn COMPETIIION causes
`
`’
`
`75 ENIERPRISE. SUITE 250
`ALISO VIEJO. CALIFORNIA 92656
`
`I M. SIEIINA
`IUCE 8. BRUNDA
`'ILL|AM J. BRUCKER
`:ARK B. GARRED
`'AIl'HEW A. NEWBOLES
`VIC L. TANEZAKI
`DWELL ANDERSON
`
`‘ARLENE KLEIN
`i H. KIM
`BAN O'NEILL
`-’1ENI A. FOLSOM
`HCHAEL D. NORNBERG '
`
`ESSIE WANG 1‘
`-XMES C. YANG f
`
`Bernard Malina
`Malina & Wolson
`60 East 42"“ Street
`
`New York, NY 10165
`
`.
`
`IELEPHONE
`FACSIMILE I
`FACSIMILE II’
`
`(949) 8554246
`(949) 855-637]
`(949) 7l6-B197
`
`' www.stetlnaIow.com
`Writer's Direct E-mail:
`kstefino@stetinoIcw.com
`.
`
`September 23, 2003
`
`VIA FACSIMILE AND MAIL
`(212) 983-8421
`
`RE:
`
`Spy Optic, Inc. v. Sun Palace Fashions, Inc.
`Opposition No.: 118,606
`Mark: SPNY
`
`Our Ref.: SPYNO-080M
`
`Dear Bernard:
`
`Pursuant to my last letter to you of November 12, 2002, please let me know if the
`Settlement Agreement is acceptable to your client. With the suspension period nearing its end,
`we would like to finalize this matter in the near future.
`
`Thank you for your attention to this matter.
`foregoing, please do not hesitate to contact me.
`
`If you have any questions regarding the
`
`Very truly yours,
`
`STETINA BRUNDA GARRED & BRUCKER
`
`¢é'%
`
`Kit M. Stetina
`
`KMS/tg
`cc:
`Spy Optic, Inc.
`T:\Client Documcnts\SPYNO\080M\030923Ll -malina.doc
`
`Exhibit C2 Page ll/.of5,
`
`p
`
`_.
`
`'ADMllTEDlOFLORlDAANOD.C. wow
`f PAIE Nl AGENI
`
`"‘
`
`EXHIBIT 5 PAGE 1 OF 1
`
`

`
`LAW OFFICES
`
`Stetina Brunda Garred & Brucker
`A PROFESSIONAL CORPORAIION
`PAIENI.
`IRADEMARK. COPVRIGHI AND UNFAIR COMPEHHON CAUSES
`.
`J:
`.4-'
`
`75 ENfERPRl5E..SUITE 250
`ALISO VIEJO. CALIFORNIA 92o5¢--'
`
`II M. STEIINA
`RUCE B. BRUNDA
`WILLIAM J. BRUCKER
`MARK B. GARRED
`MATTHEW A. NEWBOLES
`
`emc L. TANEZAKI
`LOWELL ANDERSON
`———————
`MARLENE KLEIN
`IN H. KIM
`SEAN 0'NE|lL
`SRENT A. FOLSOM
`MICHAEL D. NORNBERG '
`
`JESSIE WANG f
`JAMES C. YANG 1’
`
`'
`
`-
`
`'
`
`October 7, 2003
`
`TELEPHONE
`FACSIMILE I
`FACSIMILE IL
`
`(949) 355.1245.
`(949) 855-637)
`(949) 716-8197
`www.stet|naIaw.corn
`Writer's Direct E-mail:
`wbrucker@stet1noIow.com
`
`Bernard Malina
`
`Malina & Wolson
`60 East 42”‘ Street
`
`New York, NY 10165
`
`VIA FACSIMILE AND MAIL
`
`(212) 983-8421
`
`-
`
`RE:
`
`Spy Optic, Inc. v. Sun Palace Fashions, Inc.
`Opposition No.: 118,606
`Mark: SPNY
`Our Ref.: SPYNO-080M
`
`Dear Bernard:
`
`This is a follow up to our letter to you dated September 23, 2003, and my recent voice
`mail message to you. Despite our repeated attempts to contact you, we have been unable to
`reach you.
`
`I will now be
`In case you are not aware, Mr. Darren Rimer is no longer with our firm.
`handling this matter. Accordingly, I am attaching a revised copy of the Settlement Agreement in
`connection with the above-identified matter reflecting the changes that you and Mr. Rimer had
`discussed in November 2002.
`‘
`
`Please review the agreement and if acceptable, please let me know and we can arrange
`formal execution.
`
`I also request, that in light of the suspension period being lifted and the testimony and
`trial dates being rescheduled by the Board on September 11, 2002, that we extend the time for
`Applicant and Opposer to answer each others outstanding discovery. Most favorably, we would
`also like to request for a suspension of the proceedings in light of the settlement discussions,
`which would then also suspend the discovery responses.
`
`1
`
`' ACMITIED IO FLORIDA AND D.C. BAR ONLY
`1 PATENT AGENT
`
`Exhibit ___Cg_ Page __B_ of 1/5
`
`
`EXHIBIT 6 PAGE 1 OF 2
`
`

`
`Stetina Brunda Garred & Brucker
`Bernard Malina
`
`Malina & Wolson
`October 7, 2003
`
`Page 2
`
`_
`
`'-
`
`.
`
`,,
`
`Please contact me at your earliest convenience to discuss these rnatters in further detail.
`
`Thank you for your attention to this matter.- I look forward to hearing from you soon.
`
`Very truly yours,
`
`STETINA BRUNDA GARRED & BRUCKER
`
`William J. Brucker
`
`WJB/tg
`Encl.
`
`Spy Optic, Inc.
`cc:
`T:\clicnl Documcnts\spyno\080m\03 I 007L1 -malina.doc
`
`Exhibit___CZ_Page _l,4_o£ 5
`
`EXHIBIT 6 PAGE 2 OF 2
`
`

`
`PROOF OF SERVICE
`
`ss.
`
`) )
`
`)
`
`State of California
`
`County of Orange
`
`I am over the age of 18 and not a party to the within action; my business address is STETINA
`
`BRUNDA GARRED & BRUCKER, 75 Enterprise, Suite 250, Aliso Viejo, California 92656. On
`
`October 22, 2003, a copy of the attached DECLARATION OF WILLIAM J. BRUCKER IN
`
`SUPPORT OF OPPOSER’S MOTION TO SUSPEND PROCEEDINGS was served on all
`
`interested parties in this action by U.S. Mail, postage prepaid, at the address as follows:
`
`Bernard Malina’
`
`Malina & Wolson
`
`60 East 42nd Street
`
`New York, NY 10165
`
`Executed on October 22, 2003, at Aliso Viejo, California. I declare under penalty of perjury
`
`that the above is true and correct. I declare that I am employed in the office of STETINA BRUNDA
`
`GARRED & BRUCKER at whose direction service was made.
`
`Tara Gass'
`
`Exhibit __§»__I>age _\§_ofi5_
`
`

`
`EXHIBIT D
`
`

`
`Case: SPYNO-080M
`
`IN THE UNITED STATES PATENT AND TIMDEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 75/609,801
`
`) Opposition No.2 118,606
`)
`
`) )
`
`) )
`
`) )
`
`)
`
`SPY Optic, 1r1C-
`
`
`
`Opposer,
`
`
`
`v.
`
`Sun Palace Fashions, Inc.
`
`Ap licant.
`
`
`
`SUPPLEMENTAL DECLARATION OF WILLIAM J. BRUCKER
`
`IN SUPPORT OF OPPOSER’S MOTION TO REOPEN
`
`DISCOVERY AND EXTEND TRIAL DATES
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`1, William J. Brucker, declare as follows:
`
`1.
`
`I am one of the attorneys of record for Opposer, Spy Optic,
`
`Inc.
`
`(“Opposer”) in the above-referenced action. As such, I have personal knowledge of the
`
`facts stated herein and if called upon as a witness, I could and would competently testify
`
`to the below facts which are personally known to me.
`
`2.
`
`Attached hereto as Exhibit 9 is a copy of my Declaration in Support of
`
`Opposer’s Motion to Suspend which was filed with the Board on November 2, 2004.
`
`Such Declaration outlined all the attempts I had made to make contact with Applicant’s
`
`counsel, which was to no avail.
`
`3.
`
`On April 8, 2005, I sent another letter to counsel for Applicant enclosing
`
`the Board’s April 5, 2005 Order and indicating that outstanding discovery would be due
`
`1
`
`Exhibit 9 Page
`
`i
`
`of 31
`
`

`
`on May 5, 2005. No response was received from Applicant’s counsel. A true and correct
`
`copy of this letter is attached hereto as Exhibit 10.
`
`4.
`
`On May 5, 2005,
`
`I
`
`served responses
`
`to Applicant’s
`
`first
`
`set of
`
`interrogatories and first set of document requests as well as a letter requesting dates
`
`Applicant would be available for a testimonial deposition. Applicant never served its
`
`responses to Opposer’s outstanding discovery and never responded to my May 5, 2005
`
`letter. A true and correct copy of this letter is attached hereto as Exhibit 11.
`
`5.
`
`On May 10, 2005, I sent another letter to counsel for Applicant again
`
`requesting dates that Applicant would be available for a testimonial deposition.
`
`I never
`
`received a response to my letter. A true and correct copy of this letter is attached hereto
`
`as Exhibit 12.
`
`6.
`
`On June 3, 2005, I served a Notice of Deposition on counsel for Applicant.
`
`A true and correct copy of the Notice of Deposition is attached hereto as Exhibit 13.
`
`I declare under penalty of perjury that the foregoing is true and correct, and that
`
`this Declaration is being executed on June? 2005 at Aliso Viejo, Califomia.
`
`
`
`' Wi
`
`
`am .Brucker,Declarant
`
`T:\clientDocumcnts\spyno\080m\declaration ofwjb re motion to extenddoc
`
`Exhibit D Page
`
`7/ offii
`
`
`
`

`
`EXHIBIT 9
`
`

`
`Case: SPYNO-080M -
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 75/609,801
`
` Spy Optic, Inc.
`
`) Opposition No.: 118,606
`
`Opposer,
`
`V.
`
`Sun Palace Fashions, Inc.
`
`l
`
`Applicant.
`
`\../\./\_/\/\./\J\J\J
`
`DECLARATION OF WILLIAM ,[. BRUCKER IN SUPPORT OF OPPOSER’S
`MOTION TO SUSPEND PROCEEDINGS
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202—35l4
`
`I, William J. Brucker, declare as foll

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