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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`American Honda Motor Co., Inc.,
`
`V
`
`Opposer’
`
`Opposition No. 121,151
`
`TBC Corporation,
`
`Applicant.
`
`OPPOSER’S MOTION TO TEST THE SUFFICIENCY OF
`APPLICANT’S RESPONSES TO OPPOSER’S REQUESTS TO ADMIT
`Opposer, American Honda Motor Co., Inc., (“Honda” or “Opposer”), through its
`
`counsel, pursuant to Rule 36(a) of the Federal Rules of Civil Procedure, made applicable
`
`by Section 2.120(h) of the Trademark Rules of Practice, moves the Trademark Trial and
`
`Appeal Board (the “Board”) to rule on the sufficiency of Applicant’s responses to
`
`Opposer’s Second Set of Requests to Admit. Opposer hereby moves for an Order
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`seeking either that (i) the various matters be admitted; (ii) amended answers be served;
`
`and/or (iii) answers be served, as deemed appropriate with respect to the various Requests
`
`to Admit. This motion is supported by the argument herein, annexed exhibits, and
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`CERTIFICATE or MAILING BY FIRST CLASS MAIL
`hereby
`certify
`under
`37 CFR §l.8(a)
`that
`this
`I
`correspondence is being deposited with the United States
`Postal Service as first class mail with sufficient postage on
`the
`date
`indicated
`below and
`is
`addressed
`to
`the
`Commissioner
`for
`Trademarks,
`2900 Crystal Drive,
`Arlington, VA 22202-3513.
`
`September 26, 2003
`Date of Deposit
`
`Signature
`
`%.
`
`Neil Ramsaroog
`Typed or Printed Name of Person Signing Certificate
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`rb
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`American Honda Motor Co., Inc.,
`
`V
`
`Opposer’
`
`Opposition No. 121,151
`
`TBC Corporation,
`
`Applicant.
`
`OPPOSER’S MOTION TO TEST THE SUFFICIENCY OF
`APPLICANT’S RESPONSES TO OPPOSER’S REQUESTS TO ADMIT
`Opposer, American Honda Motor Co., Inc., (“Honda” or “Opposer”), through its
`
`counsel, pursuant to Rule 36(a) of the Federal Rules of Civil Procedure, made applicable
`
`by Section 2.120(h) of the Trademark Rules of Practice, moves the Trademark Trial and
`
`Appeal Board (the “Board”) to rule on the sufficiency of Applicant’s responses to
`
`Opposer’s Second Set of Requests to Admit. Opposer hereby moves for an Order
`
`seeking either that (i) the various matters be admitted; (ii) amended answers be served;
`
`and/or (iii) answers be served, as deemed appropriate with respect to the various Requests
`
`to Admit. This motion is supported by the argument herein, annexed exhibits, and
`
`CERTIFICATE or MAILING BY FIRST CLASS MAIL
`hereby
`certify
`under
`37 CFR §l.8(a)
`that
`this
`I
`correspondence is being deposited with the United States
`Postal Service as first class mail with sufficient postage on
`the
`date
`indicated
`below and
`is
`addressed
`to
`the
`Commissioner
`for
`Trademarks,
`2900 Crystal Drive,
`Arlington, VA 22202-3513.
`
`September 26, 2003
`Date of Deposit
`
`Signature
`
`%.
`
`Neil Ramsaroog
`Typed or Printed Name of Person Signing Certificate
`
`0
`
`6
`
`.
`
`6
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`I
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`O
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`K
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`K
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`‘ .
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`.
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`
`
`Declarations of Anthony L. Fletcher (“Fletcher Decl. 1] _”) and Irene Hudson (“Hudson
`
`.1
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`Decl. ‘H _”), submitted contemporaneously herewith.
`
`BACKGROUND
`
`The Board issued an order, mailed May 2, 2003, granting Opposer’s.Motion to
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`Compel, which required Applicant to “select, designate and identify the items and
`
`documents, or categories of items and documents, to be produced in response to
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`[O]pposer’s first request for production and to notify [O]pposer that the selection,
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`designation and identification of such items and documents has been completed” within
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`thirty days of the mailing date of the Order, i. e., by June 1, 2003, and that within thirty
`
`.)
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`days after such notice, the parties should arrange a mutually convenient time and place to
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`inspect and copy the produced material. The Board filI'thCI' held that discovery for
`
`Honda was extended until July 18, 2003.
`
`On June 18, 2003, an attorney of the undersigned inspected the documents and
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`things (including a number of labeled tires, which the attorney photographed) designated
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`by TBC’s attorneys at TBC’s offices in Memphis, Tennessee, and indicated that all
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`documents so designated should be copied. Almost two weeks later, Honda received
`
`those documents on July 3, 2003. Honda, upon receipt, started, for the first time to
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`examine the documents produced by TBC in this proceeding, and to work on its Second
`
`Set of Requests for Admission. On July 18, 2003, Honda served its Second Set of
`
`Requests for Admission (individual requests are hereafler referred to as “Request No.
`
`_”)) and the Exhibits (“Request Ex. _”) thereto, copies of which are annexed hereto as
`
`Exhibit A. On August 22, 2003, Applicant TBC served its response to these requests, a
`
`
`
`
`
`copy of which is annexed hereto as Exhibit B, which was not received until August 27,
`
`C»
`
`2003.
`
`Applicant objected to practically every Request for Admission and substantively
`
`responded to only but a few. Honda is dissatisfied with Applicant’s objections and/or
`
`“responses” to several of its Requests for Admission, and pursuant to TBMP § 524.01,
`
`hereby moves the Board to obtain a ruling on the sufficiency thereof.
`
`ARGUMENT
`
`If the Board determines that an answer does not comply with the requirements of
`
`Rule 36(a) of the Federal Rules of Civil Procedure, it may order that the matter is deemed
`
`admitted or that an amended answer be served. See TBMP § 524.01. Similarly, if the
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`Board determines that an objection is not justified, it may order that an answer be served.
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`Id. In accordance with TBMP § 524.02, Honda’s attorney has made a good faith effort,
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`by telephone conference with TBC’s attorney, to resolve the issues presented, and the
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`parties have been unable to reach agreement. See Fletcher Decl. W 1 - 3.
`
`Although reluctant to file yet another discovery motion in this highly contentious
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`proceeding, it is apparent that TBC continues its unwillingness to cooperate in discovery
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`and will not do so unless ordered to do so by the Board. Even though discovery closed
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`on July 18, 2003, “[a] motion to test sufficiency need not be filed during the discovery
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`period, but should be filed within a reasonable time after service of the response believed
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`to be inadequate.” TBMP § 524.03. This motion, being made within 30 days of date of
`
`receipt, z'.e., August 27, 2003, is therefore timely.
`
`Below is a list of the Responses to which Honda challenges the sufficiency
`
`followed by a brief description of the basis for the challenge.
`
`
`
`
`
`Preliminarily, we note three authorities.
`
`First, as is observed in TBMP § 410.02, Requests for Admission “are particularly
`
`useful for determining, prior to trial, which facts are not in dispute” and “are also useful
`
`as a means of facilitating the introduction of documents produced by an adversary in
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`response to a request for production of documents.” Neither side has taken discovery
`
`depositions in this proceeding; both have requested production of documents that
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`eventually were produced (in each case after Board order). Only Opposer has served
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`Requests to Admit.
`
`Second, TBMP § 412.01 provides:
`
`. .) to cooperate with one another
`The Board expects parties (and their attorneys .
`in the discovery process, and looks with extreme disfavor upon those that do not.
`Each party and its attorney or other authorized representative has a duty .
`.
`. to
`make a good faith effort to satisfy the discovery needs of its adversary. .
`.
`.
`
`Third, Rule 36(a) of the Federal Rules of Civil Procedure [as cited in TBMP §
`
`411.02] provides with respect to Requests to Admit that:
`
`A denial shall fairly meet the substance of the requested admission, and when
`good faith requires that a party qualify an answer or deny only a part of the matter
`of which an admission is requested, the party shall specify so much of it as is true
`and qualify or deny the remainder. .
`.
`.
`
`Presumably, this is because the inquiring party can never know as much as the
`
`responding party knows about the responding party and its business, and the purpose of
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`the request would be frustrated if the responding party could seize on any technicality to
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`deny what is essentially, or at least significantly, correct.‘ As will be seen, explanation
`
`for denials of requests that are, on their face, astonishing, are conspicuously lacking.
`
`' The quoted provisions of Federal Rule 36(a) are reproduced m the preamble to Opposer’s Second Set of
`Requests to Admit.
`
`
`
`
`
`Request No. 14: SHADOWis not a registered trademark of TBC Corporation.
`
`Applicant objected to this Request as vague, indefinite and irrelevant, and then
`
`denied the same. This objection is without merit; the request is by no means vague or
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`indefinite in the context of an opposition to registration in the United States Patent and
`
`Trademark Office. As far as Opposer can discover, TBC owns no registrations of
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`SHADOW for anything in the PTO. If it did, almost no matter what the registration is
`
`for, that fact would be relevant, although it might or might not be material.
`
`It is
`
`particularly relevant because the labels on TBC’s tires indicate that SHADOW is a
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`registered trademark. See Response No. 12; Request Exs. l — 18. If TBC had any doubt
`
`that the request referred to U.S. federal registration(s), it could easily have qualified its
`
`answer as required by Rule 36(a).
`
`Request No. 15: Applicant TB C Corporation sells and/or distributes motorcycle tires.
`
`Again, Applicant objected to this request as irrelevant, and then denied the same.
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`This objection is without merit, since pursuant to TBMP § 4l4(1 1), “information that a
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`party sells the same goods or services as the propounding party, even if under a different
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`mark, is relevant to the issue of likelihood of confusion.” Opposer sells motorcycle tires,
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`albeit as a part of the motorcycle, and its dealers sell motorcycle tires. TBC’s application
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`is for “tires” — all kinds and all makes. Therefore, whether TBC makes motorcycle tires
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`is wholly discoverable. Since the request was based on documents produced by TBC — in
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`response to a request for a “sample of each different usage of APPLICANT’S trademark”
`
`— which identify TBC’s products as “motorcycle tires,” (see Hudson Decl. ‘ll 5), TBC’s
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`denial, at the least, merits some explanation.
`
`
`
`Request No. 16: Annexed as Exhibit 22 (documents labeled as TBC 000124 — 125) is a
`true and correct copy ofprintouts ofpages from Applicant TBC Corporation ’s website,
`http://isysit.com/tbc, as ofJune 19, 2003, and July I 0, 2003, respectively.
`
`Applicant objected to this Request as vague, indefinite, compound, irrelevant and
`
`assuming facts not in evidence. This objection is without merit in that a comparison of
`
`the contents of Exhibit 22 are clearly from the http://isysit.com/tbc/ website. See Hudson
`
`Decl. 1] 4, Ex. 1. Applicant further denies that http://isysit.com/tbc/ is its domain name
`
`and that the contents of Request Ex. 22 are true and correct copies of the pages they
`
`purport to reflect. A brief examination of certain of the current pages of the website (see
`
`Hudson Decl. 1] 4, Ex. 1) clearly reveals that it is the TBC website. Again, if, somehow,
`
`it is a bootleg or counterfeit website, at the very least some explanation to that effect is
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`due.
`
`Request No. I 7: SIGMA is a registered trademark owned by Applicant TBC
`Corporation.
`
`Again, Applicant objected to this request as vague, indefinite and irrelevant, and
`
`then denied the same. How this request is vague or indefinite escapes the obvious. First,
`
`according to TBC’s own advertising, “SIGMA® is the registered trademark of TBC
`
`Corporation.” See, e.g., Request No. 31, Request Ex. 31. According to the PTO database
`
`of infonnation, SIGMA is a registered trademark of TBC. See Request Ex. 23.
`
`Furthermore, whether the mark is registered or not is wholly relevant especially since
`
`TBC SHADOW tires are sold under or in connection with the SIGMA mark. See
`
`Request Exs. 1 — 21, 27 - 32. Applicant gives similar objections and responses to
`
`requests for the same subject matter with respect to the marks SIGMA 23 (Response No.
`
`19); SIGMA SUPREME HP (Response No. 21); SIGMA SUPREME TR (Response No.
`
`
`
`
`
`23); MULTI-MILE (Response No. 42); CORDOVAN (Response No. 51); and
`
`VANDERBILT TOURING (Response No. 62), even though the PTO database of
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`information (and sometimes even information disseminated by TBC itself) shows
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`otherwise — SIGMA 2 (Request Ex. 24, 28); SIGMA SUPREME HP (Request Exs. 25);
`
`SIGMA SUPREME TR (Request Ex. 26); MULTI-MILE (Request Exs. 38, 39);
`
`CORDOVAN (Request Exs. 44, 45); and VANDERBILT TOURING (Request Ex. 50,
`
`51).
`
`Request No. 18: Annexed as Exhibit 23 (document labeled TB C 000119) is a copy ofa
`TESS printoutfrom the United States Patent and Trademark Office database of
`information relating to Registration No. 2,262,889 owned by Applicant TBC
`Corporation.
`
`Similarly, Applicant objected to this request as assuming facts not in evidence,
`
`lacking foundation, vague, indefinite, compound and irrelevant, and then denied the
`
`same. It is difficult to conceive of any purpose whatever of requests to admit if they are
`
`limited only to facts already in evidence. Nor does the lack of foundation objection have
`
`much substance at this point. Setting aside the objections as to vagueness, indefinite and
`
`compoundness, which are clearly meritless, that simply leaves relevance. That might,
`
`depending on the use to which the admission is put at trial, have some merit, but at this
`
`stage it does not appear to. See Rule 26(b)(l) of the Federal Rules of Civil Procedure.
`
`The denial is quite incomprehensible, because Request Ex. 23 is obviously a copy of a
`
`TESS printout from the United States Patent and Trademark Office (“PTO”) for SIGMA.
`
`Even if it were not so obvious, the Rule 36(a) duty of “reasonable inquiry” — go into the
`
`PTO database and see if the same record can be found using any of the search criteria
`
`disclosed by the Exhibit. Applicant makes similar meritless objections with respect to
`
`
`
`
`
`SIGMA 2 (Response No. 20, Request Ex. 24); SIGMA SUPREME HP (Response No.
`
`22, Request Ex. 25); SIGMA SUPREME TR (Response No. 24, Request Ex. 26);
`
`MULTI-MILE (Response No. 43, Request Ex. 39); CORDOVAN (Response No. 52,
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`Request Ex. 45); and VANDERBILT TOURING (Response No. 63, Request Ex. 51).
`
`Request No. 18-A: The information appearing in Exhibit 23 is accurate.
`
`Applicant repeats its almost routine objection — “vague, indefinite, compound,
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`irrelevant, and hearsay.” Notwithstanding its objections to Request No. 18, Applicant
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`even refuses to verify whether the information in Request Ex. 23 is accurate. As stated
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`above, information relating to other marks for the same goods is discoverable and
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`particularly relevant since TBC SHADOW tires are sold under or in connection with the
`
`SIGMA mark. Applicant makes similar unsatisfactory responses to SIGMA 2 (Response
`
`No. 20-A); SIGMA SUPREME HP (Response No. 22-A); SIGMA SUPREME TR
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`(Response No. 24-A); MULTI-MILE (Response No. 43-A); and CORDOVAN
`
`(Response No. 52-A).
`
`Request No. 33: Applicant TB C Corporation sells and/or distributes motorcycle tires
`under the SIGMA trademark.
`
`Applicant objected to this request as irrelevant, and then denied the same. First,
`
`this objection is without basis; pursuant to TBMP § 414(lO), “information that a party
`
`sells the same goods or services as the propounding party, even if under a different mark,
`
`is relevant to the issue of likelihood of confiision.” Since TBC SHADOW tires are sold
`
`under or in connection with the SIGMA mark, this information is entirely relevant. TBC
`
`makes similar (and sometimes adds on other basis of) meritless objections to SIGMA Z
`
`
`
`(Response No. 34); MULTI-MILE (Response No. 44); CORDOVAN (Response No. 53);
`
`and VANDERBILT (Response No. 64).
`
`As for the substantive response, TBC produced the publication identified as Tread
`
`Design Guide published by Bennett Garfield for the years 2000 through 2003, which
`
`identifies TBC’s SIGMA tires as motorcycle tires. The production was in response to a
`
`request for “[a] sample of each different usage of APPLICANT’s trademark.” See
`
`Hudson Decl. 11 5, Ex. 2. Portions of these publications are armexed to the Requests as
`
`Exs. 33 — 36, 40 — 43, 46 — 49, and 52 — 53. These publications classify TBC’s SIGMA
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`tires as motorcycle tires. See Hudson Decl. 1] 6. Similarly, these publications classify
`
`TBC’s SIGMA Z, MULTI-MILE and CORDOVAN and VANDERBILT tires as
`
`motorcycle tires. See Hudson Decl. 11 6. In light of TBC production, TBC denies these
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`requests without qualification. TBC makes similar unsatisfactory answers to SIGMA 21
`
`(Response No. 34); MULTI-MILE (Response No. 44); CORDOVAN (Response No. 53);
`
`VANDERBILT (Response No. 64); VANDERBILT TOURING (Response No. 65); and
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`VANDERBILT TOURING-TECH (Response No. 66). If the request for admission is
`
`denied, good faith and Rule 36 require at a minimum some explanation of how the
`
`information is erroneous, and why TBC produced documents that contained the same
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`erroneous listing of its tires for four successive years’ editions.
`
`Request No. 35: Annexed as Exhibit 33 (documents labeled as TBC 000245 and TBC
`000443) is a copy ofpages from the 2000 Tread Design Guide published by Bennett
`Garfield.
`
`TBC objected to this request as vague, indefinite, compound, lacking in
`
`foundation, irrelevant, and to the extent relied upon for the truth or accuracy of the
`
`information set forth in Exhibit 33, as hearsay. These objections are meritless. The
`
`
`
`request is quite clear and definite even if somewhat compound. Even though Applicant
`
`produced these publications as samples of its usages of SHADOW, it objects to their
`
`relevance and classifies them as hearsay.
`
`TBC makes similar meritless objections to Request Nos. 36 — 38, 45 — 48, 54 —
`
`57, and 67 ~ 68.
`
`Request No. 39: Annexed as Exhibit 3 7 (document labeled as TB C 000126) is a true
`and correct copy ofa printout of a page from Applicant TBC Corporation ’s website,
`http://sigmatires.com, as ofJuly 13, 2003.
`
`Applicant objected to this request as vague, indefinite, compound, irrelevant, and
`
`assuming facts not in evidence. Applicant admits that http://sigmatires.com connects to a
`
`TBC web site, but denies the rest of the request. Looking at Exhibit 37, it is clear that it
`
`is a TBC website. Furthennore, TBC is, without much effort, capable of verifying
`
`whether Exhibit 37 contains printouts of the website.
`
`TBC makes similar meritless objections and unsatisfactory responses to Request
`
`Nos. 41 and 50.
`
`Request No. 70: BIG 0 TIRES has over 500 dealer and company-owned stores.
`
`TBC objects to this request as vague, indefinite, compound, irrelevant and an
`
`improper attempt to impose upon Applicant an obligation to obtain for Opposer discovery
`
`of a non-party. This objection is meritless since “Big O Tires, Inc. is a subsidiary of
`
`Applicant” and therefore not a “non-party” but instead a related entity. See Response No.
`
`69. Applicant makes several similar meritless objections as to Big O Tires. See
`
`Response Nos. 71 — 78.
`
`10
`
`
`
`
`
`Furthermore, pursuant to TBMP § 414(3) classes of customers for a party’s
`
`involved goods or services are discoverable, and under TBMP § 4l4(16), information
`
`relating to areas of distribution for a party’s goods is discoverable. Applicant admitted
`
`that “its tires are sold to and at Big 0 Tire stores,” therefore this information is
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`discoverable. Furthermore, we note that Applicant has not produced any information
`
`relating to its classes of customers or areas of distribution. See Hudson Decl. 1] 6.
`
`Request No. 79: Applicant TBC Corporation purchased TIRE KINGDOM.
`
`Applicant objects to this request as irrelevant and so vague and indefinite that
`
`Applicant cannot admit or deny same. However, as Request Ex. 5 5 shows, that is the
`
`exact language used on a TBC website (http://www.tirekingdom.com/corp.htm).
`
`Therefore, this objection is meritless and TBC should be ordered to answer the same.
`
`Request No. 80: TIRE KINGDOM has over 150 stores.
`
`TBC objects to this request as vague, indefinite, compound, irrelevant and an
`
`improper attempt to impose upon Applicant an obligation to obtain for Opposer discovery
`
`of a non-party. This objection is meritless since Tire Kingdom was purchased by TBC.
`
`TBC makes similar such meritless objections relating to Tire Kingdom. See
`
`Response Nos. 81, 82, 84, 85, 88, 89, 92, 93 and 96; see also Comment on Request No.
`
`70 above.
`
`Request No. 98: Carroll Tire Company has 24 locations.
`
`TBC objects to this request as vague, indefinite, compound, irrelevant and as an
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`improper attempt to impose on TBC an obligation to obtain for Opposer discovery of a
`
`ll
`
`
`
`
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`non-party. Since “Carroll Tire Company is a subsidiary of Applicant” (see Response No.
`
`97), this objection is meritless. TBC makes similar meritless objections. See Response
`
`Nos. 99, 100.
`
`Dated: September 26, 2003
`
`FISH & RICHARDSON P.C.
`
`By
`
`Anthony L. Fletcher
`Stacy J. Grossman
`Irene E. Hudson
`
`Fish & Richardson P.C.
`
`45 Rockefeller Plaza, Suite 2800
`
`New York, New York 10111
`(212) 765-5070
`
`Attorneys for Opposer
`American Honda Motor Co., Inc.
`
`12
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I have this 26”‘ day of September 2003 served one copy of the
`foregoing
`
`OPPOSER’S MOTION TO TEST THE SUFFICIENCY OF
`
`APPLICANT’S RESPONSES TO OPPOSER’S REQUESTS TO ADMIT
`
`DECLARATION OF ANTHONY L. FLETCHER, and
`
`DECLARATION OF IRENE HUDSON
`
`upon App1icant’s counsel, by causing the same to be mailed, first class postage prepaid
`to:
`
`Matthew J. Cuccias, Esq.
`Marsha Gentner, Esq.
`Jacobson Holman PLLC
`
`400 Seventh Street, NW
`Washington, DC 20004
`
`By:
`
`.
`
`(3
`'
`Neil Ramsaroop
`
`3016321 1.doc
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`American Honda Motor Co., Inc.,
`
`
`
`
`v.
`
`TBC Corporation,
`
`Opposer,
`
`Opposition No. 121,151
`
`Applicant.
`
`OPPOSER’S SECOND SET OF
`REQUESTS FOR ADMISSION TO APPLICANT
`
`Pursuant to Rule 36 of the Federal Rules of Civil Procedure, made applicable herein by
`
`Sections 2. l20(a) and (h) of the Trademark Rules of Practice, Opposer American Honda Motor
`
`Co., Inc. (“Honda”), hereby requests that Applicant TBC Corporation admit the matters set forth
`
`below within thirty (3 0) days after service thereof.
`
`Please take note of the following provision of Rule 36(b) of the Federal Rules of Civil
`
`Procedure:
`
`Any admission made by a party under this rule is for the purpose of the pending
`action only and is not an admission for any other purpose nor may it be used
`against the party in any other proceeding.
`
`Opposer specifically directs Applicant’s attention to the following provisions_.of
`
`Rule 36(a) of the Federal Rules of Civil Procedure:
`
`Each matter of which an admission is requested shall be separately set forth. The
`matter is admitted unless, within 30 days after service of the request, .
`.
`. the party
`to whom the request is directed serves upon the party requesting the admission a
`written answer or objection addressed to the matter .
`.
`.
`.
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`O
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`The answer shall specifically deny the matter or set forth in detail the reasons why
`the answering party cannot truthfully admit or deny the matter.
`
`A denial shall fairly meet the substance of the requested admission, and when
`good faith requires that a party qualify an answer or deny only a part of the matter
`of which an admission is requested, the party shall specify so much of it as is true
`and qualify or deny the remainder.
`
`An answering party may not give lack of knowledge or information as a reason
`for failure to admit or deny unless the party states that the party has made
`reasonable inquiry and that the information known or readily obtainable by the
`party is insufficient to enable the party to admit or deny.
`
`DEFINITIONS AND INSTRUCTIONS
`
`The Definitions and Instructions in Opposer’s Fist Set of Requests for Admissions are
`
`incorporated herein by reference.
`
`For convenience of the Board and of counsel, it is requested that each Request for
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`Admission be set forth immediately preceding the response thereto.
`
`REQUESTS FOR ADMISSION
`
`Request No. 12
`
`Each of Exhibits 1 — 18 (documents labeled as TBC 000001 — 18, respectively) depicts
`
`one or two labels used by Applicant TBC Corporation on, or in connection with, certain of
`
`Applicant TBC Corporation’s tires.
`
`Request No. 13
`
`Each of Exhibits 19 — 21 (documents labeled as TBC 000106, TBC 000109, TBC
`
`000115, respectively) depicts one or more tires of Applicant TBC Corporation onto the side bf
`
`which the word SHADOW is molded.
`
`Request No. 14
`
`SHADOW is not a registered trademark of TBC Corporation.
`
`
`
`Request No. 15
`
`Applicant TBC Corporation sells and/or distributes motorcycle tires.
`
`Request No. 16
`
`Annexed as Exhibit 22 (documents labeled as TBC 000124 — 125) is a true and correct
`
`copy of printouts of pages from Applicant TBC Corporation’s website, http://isysit.corn/tbc, as
`
`of June 19, 2003, and July 10, 2003, respectively.
`
`Request No. 17
`
`SIGMA is a registered trademark owned by Applicant TBC Corporation.
`
`Request No. 18
`
`Annexed as Exhibit 23 (document labeled TBC 000119) is a copy of a TESS printout
`
`from the United States Patent and Trademark Office database of information relating to
`
`Registration No. 2,262,889 owned by Applicant TBC Corporation.
`
`Request No. 18-A
`
`The information appearing in Exhibit 23 is accurate.
`
`Request No. 19
`
`SIGMA 2 is a registered trademark owned by Applicant TBC Corporation.
`
`Request No. 20
`
`Annexed as Exhibit 24 (documents labeled as TBC 000120 — 121) is a copy of TESS
`
`printouts from the United States Patent and Trademark Office database of information relating to
`
`Registration No. 998,427 owned by Applicant TBC Corporation.
`
`Request No. 20-A
`
`The information appearing in Exhibit 24 is accurate.
`
`
`
`Request No. 21
`
`SIGMA SUPREME HP is a registered trademark owned by Applicant TBC Corporation.
`
`Request No. 22
`
`Annexed as Exhibit 25 (document labeled as TBC 000122) is a copy of a TESS printout
`
`from the United States Patent and Trademark Office database of information relating to
`
`Registration No. 2,575,403 owned by Applicant TBC Corporation.
`
`Request No. 22-A
`
`The information appearing in Exhibit 25 is accurate.
`
`Request No. 23
`
`SIGMA SUPREME TR is a registered trademark owned by Applicant TBC Corporation.
`
`Request No. 24
`
`Annexed as Exhibit 26 (document labeled as TBC 000123) is a copy of a TESS printout
`
`from the United States Patent and Trademark Office database of information relating to
`
`Registration No. 2,553,584 owned by Applicant TBC Corporation.
`
`Request No. 24-A
`
`The information appearing in Exhibit 26 is accurate.
`
`Request No. 25
`
`SIGMA tires are sold and/or distributed by Applicant TBC Corporation.
`
`Request No. 26
`
`SIGMA 2 tires are sold and/or distributed by Applicant TBC Corporation.
`
`Request No. 27
`
`Annexed as Exhibit 27 (documents labeled as TBC 000035 — 58) is a copy of Applicant
`
`TBC Corporation’s 2003 catalog.
`
`
`
`Request No. 28
`
`Annexed as Exhibit 28 (documents labeled as TBC 000059 — 75) is a copy of advertising
`
`and/or informational material of Applicant TBC Corporation displaying the SIGMA and/or
`
`SIGMA 2‘. tires sold and/or distributed by Applicant TBC Corporation.
`
`Request No. 29
`
`Annexed as Exhibit 29 (document labeled as TBC 000076) is a copy of Applicant TBC
`
`Corporation’s tread warranty for SIGMA 2 tires sold and/or distributed by Applicant TBC
`
`Corporation.
`
`Request No. 30
`
`Annexed as Exhibit 30 (document labeled as TBC 000077) is a copy of Applicant TBC
`
`Corporation’s advertising and/or informational material displaying the SIGMA and/or SIGMA 2‘.
`
`tires sold and/or distributed by Applicant TBC Corporation.
`
`Request No. 31
`
`Annexed as Exhibit 31 (document labeled as TBC 000103) is a copy of Applicant TBC
`
`Corporation’s advertising and/or informational material displaying the SIGMA and/or SIGMA 2
`
`tires sold and/or distributed by Applicant TBC Corporation.
`
`Request N0. 32
`
`Annexed as Exhibit 32 (document labeled as TBC 000104) is a copy of Applicant TBC
`
`Corporation’s advertising and/or informational material displaying the SIGMA and/or SIGMA 2
`
`tires sold and/or distributed by Applicant TBC Corporation.
`
`Request No. 33
`
`Applicant TBC Corporation sells and/or distributes motorcycle tires under the SIGMA
`
`trademark.
`
`
`
`
`
`Request No. 34
`
`Applicant TBC Corporation sells and/or distributes motorcycle tires under the SIGMA Z
`
`trademark.
`
`Request No. 35
`
`Annexed as Exhibit 33 (documents labeled as TBC 000245 and TBC 000443) is a copy
`
`of pages from the 2000 Tread Design Guide published by Bennett Garfield.
`
`Request No. 36
`
`Armexed as Exhibit 34 (documents labeled as TBC 000473 and TBC 000688) is a copy
`
`of pages from the 2001 Tread Design Guide published by Bennett Garfield.
`
`Request No. 37
`
`Annexed as Exhibit 35 (documents labeled as TBC 000721 and TBC 000930) is a copy
`
`of pages from the 2002 Tread Design Guide published by Bennett Garfield.
`
`Request No. 38
`
`Annexed as Exhibit 36 (documents labeled as TBC 000955 and TBC 001160-61) is a
`
`copy of pages from the 2003 Tread Design Guide published by Bennett Garfield.
`
`Request No. 39
`
`Annexed as Exhibit 37 (document labeled as TBC 000126) is a true and correct copy of a
`
`printout of a page from Applicant TBC Corporation’s website, http://sigmatirescom, as of July
`
`13, 2003.
`
`Request No. 40
`
`MULTI-MILE tires are sold and/or distributed by Applicant TBC Corporation.
`
`
`
`Request No. 41
`
`Annexed as Exhibit 38 (document labeled as TBC 000127) is a true and correct copy of a
`
`printout of a page from Applicant TBC Corporation’s website, http://www.multimiletires.com, as
`
`ofJuly 13, 2003.
`
`Request No. 42
`
`MULTI-MILE is a registered trademark owned by Applicant TBC Corporation.
`
`Request No. 43
`
`Armexed as Exhibit 39 (documents labeled as TBC 000128 — 135) is a copy of TESS
`
`printouts from the United States Patent and Trademark Office database of information relating to
`
`Applicant TBC Corporation’s MULTI-MILE registered trademarks as of July 13, 2003.
`
`Request No. 43-A
`
`The information appearing in Exhibit 39 is accurate.
`
`Request No. 44
`
`Applicant TBC Corporation sells and/or distributes motorcycle tires under the MULTI-
`
`MILE trademark(s).
`
`Request N0. 45
`
`Annexed as Exhibit 40 (documents labeled as TBC 000245 and TBC 000441 — 442) is a
`
`copy of pages from the 2000 Tread Design Guide published by Bennett Garfield.
`
`
`
`Request No. 46
`
`Annexed as Exhibit 41 (documents labeled as TBC 000473 and TBC 000686) is a copy
`
`of pages from the 2001 Tread Design Guide published by Bennett Garfield.
`
`Request No. 47
`
`Annexed as Exhibit 42 (documents labeled as TBC 000721 and TBC 000928) is a copy
`
`of pages from the 2002 Tread Design Guide published by Bennett Garfield.
`
`Request No. 48
`
`Annexed as Exhibit 43 (documents labeled as TBC 000955 and TBC 001158-59) is a
`
`copy of pages from the 2003 Tread Design Guide published by Bennett Garfield.
`
`Request No. 49
`
`CORDOVAN tires are sold and/or distributed by Applicant TBC Corporation.
`
`Request No. 50
`
`Annexed as Exhibit 44 (documents labeled as TBC 000136 — 137) is a true and correct
`
`copy of printouts from Applicant TBC Corporation’s website, http://wWw.cordovantires.com, as
`
`ofJuly 13, 2003.
`
`Request No. 51
`
`CORDOVAN is a registered trademark owned by Applicant TBC Corporation.
`
`Request No. 52
`
`Annexed as Exhibit 45 (documents labeled as TBC 000138 — 145) is a copy of TESS
`
`printouts from the United States Patent and Trademark Office database of information relating to
`Applicant TBC Corporation’s CORDOVAN registered trademarks.
`‘
`
`Request No. 52-A
`
`The information appearing in Exhibit 45 is accurate.
`
`
`
`Request No. 53
`
`Applicant TBC Corporation sells and/or distributes motorcycle tires under the
`
`CORDOVAN trademark(s).
`
`Request N0. 54
`
`Annexed as Exhibit 46 (documents labeled as TBC 000245 and TBC 000431) is a copy
`
`of pages from the 2000 Tread Design Guide published by Bennett Garfield.
`
`Request No. 55
`
`Annexed as Exhibit 47 (documents labeled as TBC 000473 and TBC 0006750) is a copy
`
`of pages from the 2001 Tread Design Guide published by Bennett Garfield.
`
`Request N0. 56
`
`Annexed as Exhibit 48 (documents labeled as TBC 000721 and TBC 000916 — 917) is a
`
`copy of pages from the 2002 Tread Design Guide published by Bennett Garfield.
`
`Request No. 57
`
`Annexed as Exhibit 49 (documents labeled as TBC 000955 and TBC 001143-440) is a
`
`copy of pages from the 2003 Tread Design Guide published by Bennett Garfield.
`
`Request No. 58
`
`VANDERBILT tires are sold and/or distributed by Applicant TBC Corporation.
`
`Request No. 59
`
`VANDERBILT TOURING tires are sold and/or distributed by Applicant TBC
`
`Corporation.
`
`Request No. 60
`
`VANDERBILT TURBO TECH tires are sold and/or distributed by Applicant TBC
`
`Corporation.
`
`
`
`
`
`Request No. 61
`
`Annexed as Exhibit 50 (documents labeled as TBC 000146 — 147) is a true and correct
`
`copy of printouts from Applicant TBC Corporation’s website, http://www.vanderbi1ttires.com, as
`
`ofJuly13, 2003.
`
`Request N0. 62
`
`VANDERBILT TOURING is a registered trademark owned by Applicant TBC
`
`Corporation.
`
`Request No. 63
`
`Annexed as Exhibit 51 (documents labeled as TBC 000148) is a copy of a TESS printout
`
`from the United States Patent and Trademark Office database of information relating to
`
`Applicant TBC Corporation’s VANDERBILT TOURING registered trademark as of July 13,
`
`2003.
`
`Request No. 63-A
`
`The information appearing in Exhibit 51 is accurate.
`
`Request No. 64
`
`Applicant TBC Corporation sells and/or distributes motorcycle tires under the
`
`VANDERBILT trademark.
`
`Request No. 65
`
`Applicant TBC Corporation sells and/or distributes motorcycle tires under the
`
`VANDERBILT TOURING trademark.
`
`Request No. 66
`
`Applicant TBC Corporation sells and/or distributes motorcycle tires under the
`
`VANDERBILT TURBO—TECH trademark.
`
`l0
`
`
`
`Request No. 67
`
`Annexed as Exhibit 52 (documents labeled as TBC 000721 and TBC 0009310) is a copy
`
`of pages from the 2002 Tread Design Guide published by Bennett Garfield.
`
`Request No. 68
`
`Annexed as Exhibit 53 (documents labeled as TBC 000955 and TBC 001161-62) is a
`
`copy of pages from the 2003 Tread Design Guide published by Bennett Garfield.
`
`Request No. 69
`
`Applicant TBC Corporation owns BIG 0 TIRES, INC.
`
`Request No. 70
`
`BIG 0 TIRES has over 500 deal
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