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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No: 91151549
`
`APPLICANT M2 AUTOMOTIVE’S
`NOTICE OF RELIANCE;
`DECLARATION OF
`DUNCAN JOSEPH MOORE IN
`SUPPORT THEREOF
`
`)
`
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`
`M2 SOFTWARE, INC., a Delaware
`corporation,
`
`'
`
`Opposer,
`
`' vs.
`
`M2 AUTOMOTIVE, INC., a California
`corporation,
`
`Applicant.
`
`NOTICE is hereby given that Applicant M2 Automotive, Inc. (“M2 Automotive”)
`
`submits this Notice of Reliance pursuant to 37 CFR §§ 2.122(e) and Trademark Trial and Appeal
`
`Board Manual of Procedure (“TBMP”) § 704. M2 Automotive hereby gives notice that in this
`
`
`
`proceeding it relies on the following:
`
`I.
`
`EVIDENCE
`
`A.
`
`M2 Automotive’s First Set of Interrogatories and Responses
`
`1. M2'Automotive’s First Set of Interrogatories, dated August 5, 2002 (Exhibit (“Exh.”)
`
`1), may be offered into evidence pursuant to 37 CFR §2.120(j) and TBMP § 704.10.
`
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`02-23-2005
`
`U.S. Patent & TMOfcITM Mail Rcpt D1. #55
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`2. M2 Sofiware’s Response to App1icant’s First Set of Interrogatories and Requests for
`
`Production of Documents and Things to Applicant M2 Automotive, Inc., dated September 9,
`
`2002 (Exh. 2), may be offered into evidence pursuant to 37 CFR §2.120(j) and TBMP § 704.10.
`
`3. M2 Sofiware’s Supplemental Responses to App1icant’s First Set of Interrogatories
`
`and Requests for Production of Documents and Things, dated April 3, 2003 (ESCAIVIDEPO Exh.
`
`6), may be offered into evidence pursuant to 37 CFR §2.120(j) and TBMP § 704.10.
`
`B.
`
`M2 Automotive’s Second Set of Interrogatories and First Set of Reguests for
`
`Admission and Responses
`
`1. M2 Automotive’s Second Set of Interrogatories, dated June 23, 2003 (Exh. 3), may
`
`be offered into evidence pursuant to 37 CFR §2.120(j) and TBMP § 704.10.
`
`2. M2 Automotive’s First Set of Requests for Admission, dated June 23, 2003 (Exh. 4),
`
`may be offered into evidence pursuant to 37 CFR § 2.120(j)~and TBMP § 704.10.
`
`A
`
`3. M2 Sofiware’s Responses to Applicant’s First Set of Requests of Admission and
`
`Second Set of Interrogatories, dated July 26, 2003 (Exh. 5) may be offered into evidence
`
`‘
`
`‘
`
`pursuant to 37 CFR § 2.1200) and TBMP § 704.10.
`
`4. M2 Software’s Responses to App1icant’s Second Set of Requests for Production and
`
`Second (Served as “Third”) Set of Interrogatories, dated August 4, 2003 (Exh. 6), may be offered
`
`into evidence pursuant to 37 CFR § 2.1200’) and TBMP § 704.10.
`
`C.
`
`Third Parg Trademark Registrations Containing “M2”
`
`Pursuant to 37 CFR § 2.122(e) and TBMP § 704.03(b)(l)(B), copies of third-
`
`1 party registrations may be made of record by submitting a printout of the registration from the
`
`A electronic records of the Patent and Trademark Office through the Trademark Electronic Search
`
`‘ System (“Tess”). The following third-party U.S. trademark registrations are relied upon by M2
`
`‘ Automotive to illustrate that M2 Software’s word mark is not distinctive, and that marks
`
`containing the characters “M2” are used to identify a wide variety of goods and services:
`
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`1. Registration No. 2142411, registered March 10, 1998, Word Mark: M2 and Design
`
`(Exh. 7), available at: http://tess2.uspto.gov/bin/showfield?%doc&state=7ocfun.3.1
`
`2. Registration No. 2583119, registered June 18, 2002, Word Mark: M2 (Exh. 8),
`
`available at: http://tess2.uspto.gov/bin/showfie1d?f=doc&state=uvjnio.5.1
`
`3. Registration No. 2775972, registered July 15, 1999, Word Mark: M2 (Exh. 9),
`
`available at: ‘http://tess2.uspto.gov/bin/showfield?f=doc&state=e1c8di.2.1
`
`4. Registration No. 2897464, registered October 26, 2004, Word Mark: M2C (Exh. 10),
`
`available at: http://tess2.uspto.gov/bin/showfield?f=doc&stateuvjnio.7.1
`
`5. Registration No. 2151899, registered April 21, 1998, Word Mark: M2 (Exh. 11),
`
`available at: http://tess2.uspto.gov/bin/showfie1d?f=doc&state=jc1q4.2.1
`
`6. Registration No. 2410415, registered December 5, 2000, Word Mark: M2
`
`Communications, Mark Drawing Code: (1) Typed Drawing, (Exh. 12), available at:
`
`http://tess2.uspto. gov/bin/showfield?f=doc&state=elc8di.3. 1
`
`7. Registration No. 1361490, registered September 24, 1985, Word Mark: M2, Mark
`
`Drawing Code: ( 1) Typed Drawing, (Exh. 13), available at:
`
`http ://tess2 .uspto.gov/bin/showfield?f=doc&state=elc8di.5 .1
`
`8. Registration No. 2181158, registered August 11, 1998, Word Mark: M2 Merrell
`Millennium, Mark Drawing Code: (3) Design Plus Words, Letters and/or Numbers, (Exh. 14),
`
`available at: http://tess2.uspto.gov/bin/showfield?f=doc&state=elc8di.6.1
`
`9. Registration No. 1288754, registered April 13, 1983, Word Mark: M2, Mark Drawing
`
`Code: (5) Words, Letters, And/or Numbers in Stylized Form, (Exh. 15), available at:
`
`http://tess2.uspto.gov/bin/showfield?l%doc&state=ocs97b.4. 1
`
`10. Registration No. 2759551, registered September 2, 2003, Word Mark: M2, Mark
`
`Drawing Code: ( 1) Typed Drawing, (Exh. 16), available at:
`
`http://tess2.uspto.gov/bin/showfield?f=doc&state=mvjpog.8. 1
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`LA\l393l56.l
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`11. Registration No. 2234337, registered March 23, 1999, Word Mark: M2, Mark
`
`Drawing Code: (3) Design Plus Words, Letters and /or Numbers, (Exh. 17), available at:
`
`http ://tess2.uspto. gov/bin/showfield?i%doc&state=mvjpog.6. 1
`
`12. Registration No. 2462520, registered June 19, 2001, Word Mark: M2, Mark Drawing
`
`Code: (3) Design Plus Words, Letters, and/or numbers (Exh. 18), available at:
`
`http ://tess2.uspto.gov/bin/showfield?%doc&state=mvjpog.3. 1
`
`D.
`
`Prior Litigation Involving M2 Software
`
`Printed publications and official records may be offered into evidence where the
`
`record or publication is competent evidence and relevant to an issue in a proceeding pursuant to
`
`37 CFR § 2.122(e) and TBMP § 704.08. The Central District of California decision in @
`
`Software Inc. v. M2 Communications LLC, 281 F. Supp. 2d 1166 (C.D. Cal. 2003) (Exh. 19) is
`
`relevant evidence for determining the strength of M2 Sofiware’s mark, the types of services in
`
`which M2 Soflware is engaged, the marketing channels in which M2 Software is involved, the
`
`likelihood of M2 Sofiware’s expansion into other commercial areas, and other relevant factors in
`
`a likelihood of confusion analysis. This document is available at www.1exis.com or can be
`
`accessed in the Federal Supplement.
`
`E.
`
`Discoveg Deposition of Dave Escamilla
`
`The Discovery Deposition of Dave Escamilla (“ESCAMDEPO”) (Separate copy
`
`enclosed as Exh. 20 pursuant to 37 CFR § 2.126), President and Chief Executive Officer of
`
`Opposer M2 Software (“M2 Sofiware”), was taken by M2 Automotive on July 3, 2003 while Mr.
`
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`Escamilla was an officer of M2 Sofiware, and may therefore be offered into evidence pursuant to
`
`37 CFR § 2.1200) and TBMP § 704.09
`
`II.
`
`CONCLUSION
`
`Copies of the above referenced are submitted herein under this Notice of Reliance
`
`on the basis of 37 CFR §§ 2.120(j), 2.122(e) and TBMP §704 and are relevant for defending the
`
`claims of trademark dilution and likelihood of COI1fl.lSi01'l made by M2 Software against M2
`
`LATHAM & WATKINS
`Manuel A. Abascal
`Lauren S. Kim
`
`Duncan Joseph Moor
`
`B A
`
`
`
`oore
`Duncan Joseph
`LATHAM & WATKINS
`
`633 W. Fifth Street, Suite 4000
`Los Angeles, California 90071
`Phone: (213) 485-1234
`Fax:
`(213) 897-8763
`
`Attorneys for Applicant M2 Automotive,
`Inc.
`
`Automotive.
`
`Dated: February 22, 2005
`
`LA\l393156.1
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No: 91151549
`
`DECLARATION OF
`DUNCAN JOSEPH MOORE IN
`SUPPORT OF APPLICANT M2
`AUTOMOTIVE’S NOTICE OF
`RELIANCE
`
`)
`
`) )
`
`)
`)
`)
`)
`)
`
`) )
`
`) ) ) )
`
`M2 SOFTWARE, INC., a Delaware V
`corporation,
`
`Opposer,
`V
`
`vs.
`
`M2 AUTOMOTIVE, INC., a California
`corporation,
`
`Applicant.
`
`DECLARATION OF DUNCAN JOSEPH MOORE
`
`1, Duncan Joseph Moore, declare as follows:
`
`1.
`
`I am an attorney admitted to practice before this Court and am counsel for
`
`Applicant M2 Automotive (“M2 Automotive”) in this proceeding.
`
`I have firsthand personal
`
`knowledge of the facts set forth below, and if called upon to do so, I could and would testify
`
`competently thereto under oath.
`
`2.
`
`Attached as Exhibit 1 is a true and correct copy of M2 Automotive’s First Set of
`
`Interrogatories, dated August 5, 2002.
`
`3.
`
`Attached as Exhibit 2 is a true and correct copy of M2 Sofiware’s Response to
`
`App1icant’s First Set of Interrogatories and Requests for Production of Documents and Things to
`
`Applicant M2 Automotive, Inc., dated September 9, 2002.
`
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`4.
`
`Attached as Exhibit 3 is a true and correct copy of M2 Automotive’s Second Set
`
`of Interrogatories, dated June 23, 2003.
`
`5.
`
`Attached as Exhibit 4 is a true and correct copy of M2 Automotive’s First Set of
`
`Requests for Admission, dated June 23, 2003.
`
`6.
`
`Attached as Exhibit 5 is a true and correct copy of M2 Software’s Responses to
`
`App1icant’s First Set of Requests of Admission and Second Set of Interrogatories, dated July 26,
`
`2003.
`
`7.
`
`Attached as Exhibit 6 is a true and correct copy of M2 Software’s Responses to
`
`App1icant’s Second Set of Requests for Production and Second (Served as “Third”) Set of
`
`Interrogatories, dated August 4, 2003.
`
`8.
`
`Attached as Exhibit 7 is a true and correct copy of U.S. Trademark Registration
`
`No. 2142411, registered March 10, 1998.
`
`9.
`
`Attached as Exhibit 8 is a true and correct copy of U.S. Trademark Registration
`
`No. 2583119, registered June 18, 2002.
`
`10.
`
`Attached as Exhibit 9 is a true and correct copy of U.S. Trademark Registration
`
`No. 2775972, registered July 15, 1999.
`
`11.
`
`Attached as Exhibit 10 is a true and correct copy of U.S. Trademark Registration
`
`_No. 2897464, registered October 26, 2004.
`
`12.
`
`Attached as Exhibit 11 is a true and correct copy of U.S. Trademark Registration
`
`No. 2151899, registered April 21, 1998.
`
`13.
`
`Attached as Exhibit 12 is a true and correct copy of U.S. Trademark Registration
`
`No. 2410415, registered December 5, 2000.
`
`14.
`
`Attached as Exhibit 13 is a true and correct copy of U.S. Trademark Registration
`
`No. 1361490, registered September 24, 1985.
`
`15.
`
`Attached as Exhibit 14 is a true and correct copy of U.S. Trademark Registration
`
`No. 2181158, registered August 11, 1998.
`
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`No. 1288754, registered April 13, 1983.
`
`17.
`
`Attached as Exhibit 16 is a true and correct copy of U.S. Trademark Registration
`
`No. 2759551, registered September 2, 2003.
`
`
`
`18.
`
`Attached as Exhibit 17 is a true and correct copy of U.S. Trademark Registration
`
`No. 2234337, registered March 23, 1999.
`
`19.
`
`Attached as Exhibit 18 is a true and correct copy of U.S. Trademark Registration
`
`No. 2462520, registered June 19, 2001.
`
`20.
`
`Attached as Exhibit 19 is a true and correct copy of M2 Software Inc. v. M2
`
`
`Communications LLC, 281 F. Supp. 2d 1166 (C.D. Cal. 2003).
`
`21.
`
`Attached as Exhibit 20 is a true and correct copy of the Discovery Deposition of
`
`Dave Escamilla, President and Chief Executive Officer of Opposer M2 Software, dated July'3,
`
`
`
`I declare under penalty of perjury under the laws of the United States of America
`
`that the foregoing is true and correct. Executed this 22nd day of February, 2005 in Los Ang
`
`s,
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`2003.
`
`California.
`
`LA\1394l3l.1
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`EXHIBIT 1
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91 151549
`Serial No. 76318293
`
`M2 SOFTWARE, INC.
`'
`
`Opposer,
`
`v.
`
`M2 AUTOMOTIVE, INC.
`
`Applicant.
`
`
`
`APPLICANT M2 AUTOMOTIVE, INC.’S
`FIRST SET OF INTERROGATORIES
`
`PROPOUNDING PARTIES:
`
`M2 AUTOMOTIVE, INC
`
`RESPONDING PARTY:
`
`M2 SOFTWARE, INC.
`
`Applicant M2 Automotive, Inc. (“M2 Automotive”) hereby propound their First
`
`Set of Interrogatories to M2 Software, Inc. (“M2 Software”), consisting of Interrogatories Nos.
`
`1-19.
`
`LA__DOCS\868064. I
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`

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`I.
`
`DEFINITIONS
`
`1.
`
`The term “M2 Automotive” refers to Applicant M2 Automotive, Inc. and
`
`any parent, subsidiary, predecessor, successor, member and/or affiliated entities, past or present
`
`of M2 Automotive, Inc.
`
`2.
`
`The term “M2 Software” refers to M2 Software, Inc. and any parent,
`
`subsidiary, predecessor, successor, member and/or affiliated entities, past or present, of M2
`
`Software, Inc. and any person or entity, past or present, acting on behalf of M2 Software, Inc.
`
`including, but not limited to, each of its respective present and former officers, executives,
`
`partners, directors, employees, attorneys, agents and/or representatives.
`
`3.
`
`The term “M2” refers to any combination of the letter “M” and “2”,
`
`including any “M2” designation and mark used by M2 Software and the mark that is the subject
`
`of this opposition proceeding.
`
`4.
`
`The terms‘ “You” and “Your” refer to the responding party, M2 Software,
`
`as defined above in paragraph 2.
`
`this action.
`
`S.
`
`6.
`
`The term “Opposition” refers to the opposition filed by M2 Software in
`
`I The term “Answer” refers to the Answer filed by M2 Automotive in this
`
`action.
`
`_
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`0
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`7.
`
`The term “Identity” in the case of a person is defined as:
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`(e)
`
`The name of the person;
`
`His or her current business address and telephone number and
`
`residence address and telephone number;
`
`His or her employer, occupation, and position at all relevant times;
`
`His orher Social Security number; and
`
`His or her driver’s license number and the state of the license.
`
`8.
`
`The term “Identity” in the case of an entity is defined as:
`
`2
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`LA_DOCS\868064. I
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`(a)
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`(b)
`
`(c)
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`The name of the entity;
`
`The nature of the entity;
`
`The current business address and telephone number for the entity
`
`and any addresses and phone numbers used by the entity during the
`
`period January 1, 1991 to the present;
`
`(d)
`
`The Identity of any parent, subsidiary, partners and/or affiliate of
`
`the entity; and
`
`(e)
`
`The Identity of any principals, owners, directors, shareholder,
`
`officers, employees and/or general or limited partners of the entity,
`
`and the percentage of the entity which each of the foregoing own
`
`or control.
`
`’
`
`.
`
`9.
`
`The term “Document(s)” shall have the meaning set forth in Federal Rule
`
`of Evidence 1001, and includes, without limitation, writings, including handwritten, typewritten,
`
`photostatic, photographic, electronic and every other means of recording upon any tangible
`
`thing, or any form of communication or representation, including, without limitation, letters,
`
`words, pictures, sounds or symbols, or combinations thereof, computer records (including
`
`electronic mail records), ledgers, journals and statements of account.
`
`10.
`
`The term “Correspondence” means letters, memoranda, emails, or any
`
`other. Documents.
`
`II.
`
`INSTRUCTIONS REGARDING PRODUCTION OF DOCUMENTS
`
`1.
`
`In producing Documents and things, You are requested to furnish all
`
`Documents or things in Your actual or constructive possession, custody and/or control including,
`
`without limitation, Documents which may be in the physical possession of another person or
`
`entity such as Your advisors, attorneys, investigators, employees, agents, associates, affiliates,
`
`and/or representatives.
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`LA_DOCS\868064.l
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`2.
`
`In producing Documents, You are requested to produce the original of
`
`each Document requested, together with all non-identical copies and drafts of that Document.
`
`(A non-identical copy is a document which was initially identical in all respects to any other
`
`document, but which now is no longer identical by reason of any notation or other modification
`
`of any kind whatsoever including, without limiting the generality of the foregoing, notes or
`
`modifications on the backs of pages or in the margin thereof, and/or on any copies thereof).
`
`3.
`It is requested that all Documents be produced in the form in which they
`are found in their normal filing place, and that the file folders or other bindings in which such
`
`documents are found be produced with the Documents. If for any reason the container cannot
`be produced, please produce copies of all labels or other identifying markings.
`
`4.
`
`5.
`
`Documents attached to each other should not be separated.
`
`If any requested Document cannot be produced in full, please produce it
`
`to the extent possible, indicating what portion or portions are being withheld and the reason it is
`
`being withheld.
`
`6.
`
`If a Document otherwise responsive to this request was, but no longer is,
`
`in Your actual or constructive possession, custody or control, please state whether the document
`
`(a) is lost or destroyed; (b) has been transferred to another person or entity either voluntarily or
`involuntarily; or (c) hasibeen otherwise disposed of, and, in each instance; (d) explain the
`
`circumstance surrounding the disposition, including the date or approximate date of the
`
`disposition.
`
`7.
`
`If You object to the production of any Document requested, please state
`
`the reasons for Your objection. If objection is ‘made to part of an item or category, please specify
`
`the part to which You object.
`
`8.
`
`If You claim that the attomey-client privilege or any other privilege is
`
`applicable to any requested Document, that Document need not be produced but You shall, with
`
`respect to that Document: (a) State the date of the Document; (b) Identify each and every author
`
`of the Document; (c) Identify each and every other person who prepared or participated in the
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`LA_DOCS\868064.l
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`preparation of the Document; (d) Identify each and every person who received the Document;
`
`(e) Identify each and every person from whom the Document was received; (f) Identify the
`
`present location of the Document and all copies thereof; (g) Identify each and every person
`
`having custody or control of the Document and all copies thereof; and (h) Provide sufficient
`
`further information concerning the Document to explain the claim of privilege and to permit the
`
`adjudication of the propriety of that claim.
`
`9.
`
`Each request set forth below should be construed independently, and not
`
`in reference to any other request for purposes of limitation.
`
`10.
`
`The use of the terms “and,” “or,” and “and/or” should be construed
`
`conjunctively and disjunctively for the broadest possible meaning.
`
`11.
`
`The singular use of any term or phrase includes its plural, and the plural of
`
`any term or phrase includes its singular.
`
`III.
`
`INTERROGATORIES
`
`INTERROGATORY NO. 1:
`
`Describe each and every product, good, or service you sell, and for those
`
`products, goods, and services that use the term M2, include in Your answer: (a) the date on
`
`which You began using the term M2 in connection with such product and/or service; (b) the
`
`manner and Documents in which you use the term M2 (including without limitation the
`
`advertisements, promotional material, and Correspondence), (c) a description of the type of
`product, service or trade; (d) the geographical area in which such products and/or services are
`
`marketed; (e) the amount of money spent on, and the duration, timing, and a description of, the
`
`advertising and marketing for the product, (f) the method by which the product is distributed and
`
`marketed, (g) the customers that purchase the product, and (h) if applicable, the date on which
`
`You ceased marketing each such product and/or service using the term M2, in each geographic
`
`area described.
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`LA_DOCS\868064.l
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`INTERROGATORY NO. 6:
`
`Please Identify every advertisements and marketing materials (including those on
`
`any website, Correspondence, journal, magazine, newspaper, brochure, trade publication and/or
`
`periodical of any nature) in which You have used the term “M2” that was directed at the
`
`automotive collision repair market or automotive collision repair customers, and as to each
`
`Identify the date the advertisement or materials were used, the website or publication i-n which
`
`they were shown, and any sales that were generated from the advertisements or materials.
`
`INTERROGATORY NO. 7:
`
`Do you believe any of Your customers are “impulse buyers,” that is, do any of
`
`Your customers purchase Your product or service on an impulse or without doing much or any
`
`research or investigation into Your product or service. If so, please identify the customeror class
`
`of customer that is an impulse buyer and the product or service they purchased.
`
`INTERROGATORY NO. 8:
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`I
`
`Please describe the similarities and differences between the trademark “M2” that
`
`You claim to own_ and the mark applied for by M2 Automotive.
`
`INTERROGATORY NO. 9:
`
`Please Identify any customer or other person that has confused Your products,
`
`goods, services or business with the products, goods, services or business of M2 Automotive,
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`and as to each: (a) state the date in which the person or customer became confused, (b) the date
`
`and manner in which You became aware of the confusion, and (c) describe the nature of the
`
`confusion. If You are not aware of or have not Identified any such customers or persons, please
`
`state .“none.”
`
`INTERROGATORY NO. 10:
`
`Please Identify any customer or other person that has confused Your products,
`
`goods, services or business with the products, goods, services or business_of any other entity that
`
`uses the term M2, including without limitation those entities listed in Interrogatory No. 4, and as
`
`to each: (a) state the date in which the person or customer became confused, (b) the date and
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`LA_DOCS\868064. I
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`7
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`manner in which You became aware of the confusion, and (c) describe the nature of the
`
`confusion. If You are not aware of or have not Identified any such customers or persons, please
`
`state “none.”
`
`INTERROGATORY NO. 11:
`
`Please Identify and describe all facts that support your belief that customers or
`
`any member of the consuming public recognize the M2 mark to be associated with Your
`
`company, products, goods, or services.
`
`INTERROGATORY NO. 12:
`
`Please Identify and describe how and every way in which any of Your customers
`
`could potentially become confused between M2 Automotive and M2 Software.
`
`INTERROGATORY NO. 13:
`
`State each and every fact on which You base Your claim, or that supports Your
`claim, that “Opposer has invested a great deal of time, money, and effort in the development,
`
`promotion, enforcement, and federal registration of its fanciful M2® mark,” in paragraph 8 of
`
`your Opposition, including the amount and nature of the time, money and effort spent promoting
`
`Your mark.
`
`INTERROGATORY NO. 14:
`
`State each and every fact on which You base Your allegation that M2 Automotive
`
`has acted “in bad faith in an effort to unlawfully transfer the goodwill built up by Applicant in its
`
`M2® mark, or to damage, blur, or tarnish the value that Opposer has built in its own mark over 4
`
`many years” as alleged in paragraph 9 of your Opposition.
`
`INTERROGATORY NO. 15:
`
`State each and every fact on which You base Your allegation that the use of the
`
`term M2 by M2 Automotive is “likely to cause confusion, cause mistake or to deceive the public
`
`into the belief that the goods and services offered under Applicant’s applied-for mark come from
`
`or are otherwise authorized or sponsored by Opposer, or vice versa, in violation of Section 2(d)
`
`of the Lanham Act, 15 U.S.C. § 1052(d),” as alleged in paragraph 15 of your Opposition.
`
`LA_DOCS\868064. l
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`8 .
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`
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`INTERROGATORY NO. 16:
`State each and every fact on which You base Your claim that your M2 mark is
`
`strong and famous and any use by M2 Automotive of the M2 mark would be dilutive of your
`
`strong and famous mark as alleged in paragraphs 17 and 18 of your Opposition.
`
`INTERROGATORY NO. 17:
`
`Please identify all witnesses, expert or otherwise, You expect to submit testimony
`
`in this matter.
`
`INTERROGATORY NO. 18:
`
`used, or employed since 1991.
`
`INTERROGATORY NO. 19:
`
`Please identify any advertising, marketing, or promotion agency You have hired,
`
`Identify all individuals employed by M2 Software who are responsible for the
`
`development, promotion and enforcement of its M2 mark.
`
`Dated: August 5, 2002
`
`LATHAM & WATKINS
`
`a
`
`'
`
`'
`
`Mark A. Flagel
`
`Manuel A. Abascal
`Lauren S. Kim
`
`LATHAM & WATKINS
`
`633 W. Fifth Street, Suite 4000
`Los Angeles, California 90071
`Phone: (213) 485-1234
`Fax:
`.(2l3) 897-8763
`
`Attorneys for Applicant M2 Automotive,
`Inc.
`
`LA_DOCS\868064.l
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`C
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`PROOF OF SERVICE
`
`C
`
`«»
`
`I am over the age of 18 years
`I am employed in the County of Los Angeles, State of California.
`and not a party to this action. My business address is Latham & Watkins, 633 West Fifth Street, Suite 4000, Los
`Angeles, CA 90071-2007.
`
`On August 5, 2002, I served the following document described as:
`
`APPLICANT M2 AUTOMOTIVE, INC.’S FIRST SET OF INTERROGATORIES
`
`by serving a true copy of the above—described document in the following manner:
`
`
`I am familiar with the office practice of Latham & Watkins for collecting and processing
`documents for overnight mail delivery by Express Mail or other express service carrier. Under that practice,
`documents are deposited with the Latham & Watkins personnel responsible for depositing documents in a post
`office, mailbox, subpost office, substation, mail chute, or other like facility regularly maintained for receipt of
`overnight mail by Express Mail or other express service carrier; such documents are delivered for overnight mail
`delivery by Express Mail or other express service canier on that same day in the ordinary course of business, with
`delivery fees thereon fully prepaid and/or provided for.
`I deposited in Latham & Watkins’ interoffice mail a ~
`sealed envelope or package containing the above-described document and addressed as set forth below in
`accordance with the office practice of Latham & Watkins for collecting and processing documents for overnight
`mail delivery by Express Mail or other express service carrier:
`
`Dave Escamilla
`
`1247 Lincoln Boulevard, Suite 456
`Santa Monica, California 90401
`
`K
`
`I declare that I am employed in the office of a member of the Bar of, or permitted to practice
`before, this Court at whose direction the service was made and declare under penalty of perjury that the foregoing
`is true and correct.
`
`Executed on August 5, 2002, at Los Angeles, California.
`
`
`
`LA_DOCS\832901.2 H%_502!.DOC
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`.2
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`

`
`
`
`‘aosrou
`BRUSSELS
`¢"'°*‘°°
`FRANKFURT
`HAMBURG
`“°”° KONG
`LOS ANGELES
`LONDON
`MILAN
`MOSCOW
`NEW JERSEY
`
`C
`
`.
`
`k‘
`ATTORNEYS AT LAW
`www'Lw'coM
`
`C
`
`August 5, 2002
`
`NEW YORK
`NORTHERN VIRGINIA
`ORANGE COUNTY
`PARIS
`SAN onsco
`SAN FRANCISCO
`SILICON VALLEY
`SINGAPORE
`TOKYO
`WASHINGTON, D.C.
`
`VIA FIRST CLASS MAIL
`
`BOX TTAB NO FEE
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Re:
`
`Opposition No. 151,549
`
`Application of 1
`Mark:
`
`M2 Automotive, Inc.
`M2 & DESIGN
`
`Serial No.:
`Published:
`Attorney:
`
`76/318,293
`April 30, 2002
`David M. Mermelstein
`
`Dear Mr. Mermelsteinz
`
`We have enclosed a copy ofApplicant M2 Automotive, Inc. ’s First Set of
`Interrogatories in connection with the above-referenced trademark opposition/application.
`
`Should you have any questions, please do not hesitate to contact Lauren Kim
`directly at (213) 891-7871.
`
`Respectfully submitted,
`
` Rachel Pinto
`
`Enclosures
`
`Intellectual Property Paralegal
`
`cc:
`
`Mark Flagel, Esq. (w/ enclosures)
`Marmy Abascal, Esq. (w/ enclosures)
`Lauren Kim, Esq. (w/ enclosures)
`
`
`633 West F1!-‘TH STREET, sun’: 4000 ° Los Anozu-:s. CAUFORNM 9oO7I-2007
`TELEPHONE: (213) 485-1234 ‘ FAX: (213) 691-6763
`
`LA_DOCS\868457.l
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`I
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`IITIIIM I. WITIIIIS
`
`C
`
`Assistant Commissioner for Trademarks
`
`August 5, 2002
`Page 2
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`bcc:
`
`D. Hunt Ramsbottom (w/ enclosures)
`
`LA_DOCS\868457.l
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`CER'I‘IFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited on this
`
`date with the United States Postal Service as first class mail in an
`
`envelope addressed to:
`
`BOX TTAB NO FEE
`
`Assistant Commissionerfor Trademarks
`2900 Crystal Drive
`Arlington, Virginia 22202-3513.
`
`‘(Printed Name)
`
`

`
`EXHIBIT 2
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`M2 SOFTWARE, INC,
`
`Opposition No. 91151549
`
`Opposer,
`
`M2 AUTOMOTIVE, INC.
`
`Applicant.
`OPPOSER’S RESPONSE TO APPLICANT'S FIRST SET OF
`
`INTERROGATORIES AND REQUESTS FOR PRODUCTION OF
`
`DOCUMENTS AND THINGS
`
`Opposer, M2 Software, Inc., responds to Applicant’s First Set of Interrogatories
`and Requests for'Production of Documents and Things subject to the following general
`objections for each and every interrogatory and request (“General Objections”
`
`hereafter):
`
`_
`
`A
`
`A.) Opposer objects to the production of items or information requested to the
`
`extent that the request is vague, ambiguous, and/or overly broad and remote and
`
`without reasonable limitation in scope or do not relate to the matter in controversy;
`
`B.) Opposer objects to the production of items or information requested to the
`
`extent that the request is not reasonably calculated to lead to the discovery of
`
`

`
`
`
`(it
`
`C
`
`admissible evidence or of information relevant to the subject of this action, or is
`
`otherwise unduly oppressive, cumulative, or burdensome;
`
`C.) Opposer objects to the production of items or information requested to the
`
`extent that the documents or information items sought therein are not within Opposer’s
`
`possession, custody, or control;
`
`D.) Opposer objects to the production of the items or information requested to
`
`the extent that the documents or information items sought therein are trade secret,
`
`proprietary, confidential, attomey-client privileged, privileged under work product
`
`doctrine, subject of Opposer’s privacy rights, or otherwise privileged. The inadvertent
`
`disclosure of any matter covered by any such privilege shall not be deemed a waiver
`
`thereof;
`
`E.) Opposer objects to the production of items or information requested to the
`
`extent that the requests, counting subpaits, exceed the maximum allowed under TBMP
`
`§ 406.03(a), 406.03(d), 37 CFR 2.120(d)(1) and Rule 33 of the Federal Rules of Civil
`
`Procedure;
`
`F .) Opposer anticipates the possibility that in the course of this action it may
`
`learn of facts not presently known to it. The specific responses below are provided
`
`without waiver of Opposer’s right to discover and use in any appropriate fashion such
`
`additional information, and Opposer specifically reserves the right to introduce at the
`
`time of hearing, or otherwise, any evidence from any source and from documents
`
`hereafter discovered, at the discretion of the Trademark Trial and Appeal Board.
`
`OPPOSER’S RESPONSES TO INTERROGATORIES AND REQUESTS FOR PRODUCTION
`
`2
`
`,
`
`

`
`C
`
`C
`
`1.) See General Objections, esp. (A), (B). Subject to and without waiver of the
`
`General Objections, Opposer answers as follows:
`
`A representative sampling of Opposer’s goods and/or services offered under the
`
`M2® mark include the field of goods identified in Opposer’s Reg. No. 1,931,182 and
`
`services related to those goods, including computer software featuring business
`
`management applications for the fihn and music industries; and interactive multimedia
`
`applications for entertainment, education, and information, in the nature of artists’
`
`performances and biographical information from the film and music industries; and
`
`instructions and information for playing musical instruments, in Class 9 (U.S. Cls. 21,
`
`23, 26, 36 and 38). Opposer’s use and registration of the M2® mark includes no
`
`limitation or restriction on type of goods, channels of trade, or classes of purchasers.
`
`Opposer has offered goods and/or services in this field since at least as early as 1991,
`
`and such use has been continuous to the present. Opposer first began use of the M2®
`
`mark at least as early as 1991 , has continuously used the M2® mark, and has invested
`
`an amount in the millions of dollars in securing, protecting, promoting, and marketing
`
`the M2® mark throughout the Untied States and the world. A representative sampling
`
`of the manner in which the M2® mark is used and marketed includes: use of M2®
`
`prominently displayed on business cards, letterhead and other stationery; prominent
`
`display and use of M2® in print advertisements in national and international magazines
`
`and_ trade publications, including SPIN Magazine, Guitar Player Magazine, Music
`
`Connection, BAM Magazine, Billboard buyer’s guide; prominent display and use of
`
`M2® in all manners and use as a trade name; prominent display and use of M2® mark
`
`in corporate telephone, email, fax, and directory listings; prominent display and use of
`
`M2® mark at U.S. and international trade shows and conferences, including the
`
`MIDEM international music industry conference; prominent display and use of M2®
`
`mark in direct mail advertisements; prominent display and use of M2® on the Intemet.
`
`3
`
`,
`
`//
`
`

`
`C"
`
`C
`
`2.) See General Objections, esp. (A), (B). Subj