4
`
`TTAB
`
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`3"
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Wal-Mart Stores, Inc.,
`
`~ v.
`
`Franklin Loufrani
`
`Franklin Loufrani,
`
`V.
`
`Wal-Mart Stores, Inc.
`
`Opposition No. 91/150,278
`Opposition No. 91/154,632
`
`Opposition No. 91/152,145
`
`) ) ) ) ) ) ) ) ) ) )
`
`NOTICE OF RELIANCE
`
`Wal-Mart Stores, Inc., by and through its counsel, hereby submits this Notice of
`
`Reliance.
`
`PRINTED PUBLICATIONS
`
`Pursuant to 37 C.F.R. § 2.l22(e), the following is a list of printed publications that are in
`
`general circulation among members of the public. Copies of the publications, in the format listed
`
`below, are attached hereto.
`
`LEXIS -NEXIS OR DIALOG PRINTOUTS
`
`“Face it! Smiley Face is back — and now it’s saying more than just ‘have a nice
`day.”’ Chicago Tribune, February 15, 1989, Style Section, Page 18. Bates No.
`WM/LOUFNIOOO0067-70.
`
`“Smiley Face Comes Back in Different Mood,” Detroit Free Press, September
`30, 1993, Section WWL, Page 1D. Bates No. WM/LOUFNIOOOOO72-73.
`
`“Smiley Face Becoming Totally Awesome,” Charlotte Observer, February 27,
`1989, Living Section, Page 4D. Bates No. WM/LOUFNIOOOOO79-80.
`
`“Smiley Face: The Rebirth (And Re-Death?) of a Pop Trend,” Sun Sentinel,
`Features Lifestyle section, Page 7E. Bates No. WM/LOUFNI0000081-84.
`
`I 4-27-2005
`
`U.S. Patd ‘ & TMOfclTM Mail Rcpt Dt. #66
`
`

`
`“Where That Grin Is Still In,” The Washington Post, October 10, 1992, Style
`Section, Page D01. Bates No. WM/LOUFNIO0O0O91—92.
`
`“The Man of 1000 Faces: Srniley-Face Collector Admits He’s As Tacky As They
`Are,” San Francisco Chronicle, People Section, Page B3. Bates No.
`WM/LOUFNI0000095-97.
`
`“Kmart Flips on Blue Light,” The Detroit News, January 27, 2005, Business
`Section, page 1E. Bates No. WM/LOUFNI 0000507-508.
`
`“Won’t You Be My Roommate,” Chicago Tribune, January 6, 2005, page 2.
`Bates No. WM/LOUFNISO9-510.
`
`“Tough Times Ahead for Home Textiles; Low-Wage Rivals, Retailer Demands
`Will Push More Work Abroad,” The Charlotte Observer, December 12, 2004,
`
`Business Section, page 1D. Bates No. WM/LOUFNI 0000511-514.
`
`“Editorial/Kmart/Sears Odd Marriage One of Necessity?,” Philadelphia Inquirer,
`November 21, 2004, Currents Section, page C06. Bates No. WM/LOUFNI515.
`
`“Real Estate; Zone C; The Suburbs,” The Detroit News, November 14, 2004, Real
`
`Estate Section, page 7D. Bates No. WM/LOUFNI 0000516~517.
`
`“Dozens of Pupils Dress Pumpkins,” The Montgomery Advertiser, November 3,
`2004, Section B, page 2. Bates No. WM/LOUFNI0000518.
`
`“Trotwood Wal—Mart to Hold Safety Event; Retailer Partners with Police
`Department,” Dayton Daily News, October 28, 2004, Northwest Section, page Z6-
`3. Bates No. WM/LOUFNI 0000519-520.
`
`“By Brody Mullins ROLL CALL STAFF,” Roll Call, October 4, 2004, Business
`Section K Street. Bates No. WM/LOUFNI 0000521-522.
`
`“Class Consciousness—Raising,” Fulton County Daily Report, September 20,
`2004, News Section, Vol. 9; No. 20. Bates No. WM/LOUFNI 0000523-528.
`
`“Big Welcome for Wal-Mart in East San Jose,” San Jose Mercury News,
`August 26, 2004. Bates No. WM/LOUFNI 0000529-530.
`
`“Intel Overhaul; Global Giant; War Record; Who Dunnit?,” The NewsHour with
`Jim Lehrer, August 23, 2004. Bates No. WM/LOUFNI 0000531-542.
`
`“Lakeland Electric Finds It Painful To Pass 100,” The Ledger, August 8, 2004,
`News Section, page A23. Bates No. WM/LOUFNI 0000545-546.
`
`“Rezoning Approved for Paris Wal-Mart; Community Plan Being Challenged in
`Court,” Lexington Herald Leader, July 30, 2004, City & Region Section, page B1.
`Bates No. WM/LOUFNI0000547-548.
`
`

`
`“Gary Pettus,” The Clarion-Ledger, July 29, 2004, Southern Style Section,
`page 1E. Bates No. WM/LOUFNI0000549-550.
`
`“Kmart Scraps Slogan, Tweaks Logo; Retailer Drops “Right Here. Right Now
`Ad Campaign In Effort To Pump Up Sliding Sales,” The Detroit News, July 22,
`2004, Business Section, page 1C. Bates No. WM/LOUFNI0000551-552.
`
`“What Washington Needs is Reality — Wal-Mart Style,” Deseret Morning News,
`July 19, 2004. Bates No. WM/LOUFNI0000553-554.
`
`“Upfront 2004 — The Advertisers: Apparel,” Adweek, April 26, 2004, Feature
`Section. Bates No. WM/LOUFNI0000555-556.
`
`Ad Watch, The Kansas City Star, December 28, 2003, Section H; Brief, page 3.
`Bates No. WM/LOUFNI0000562.
`
`“Wa1-Mart’s Mascot Stars as ‘Rollback Man’,” adweek. com, December 26, 2003,
`News Section; Midwest. Bates No. WM/LOUFNI0000563.
`
`“The Sleepless Executive: What Keeps CEOS Awake and Why You Should
`Care,” Executive Speeches, December 1, 2003, Section No. 3, Vol. 18; page 14;
`ISSN: 0888-4110. Bates No. WM/LOUFNI0000564-569.
`
`“Illegals Aren’t Bad People But They Disrespect Rule of Law,” Pasadena Star-
`News, October 28, 2003, Opinion Section. Bates No. WM/LOUFNI0000570—571.
`
`“Creative Director Returns to NKH&W After Stint in Denver,” The Kansas City
`Star, October 6, 2003. Bates No. WM/LOUFNI000O572—573.
`
`“Greeter Made Happiness The Daily Special At Wal-Mart,” The Virginia-Pilot,
`May 11, 2003, Local Section, page B7 POST SCRIP. Bates No.
`WM/LOUFNI0000574-575.
`
`“Wal-Mart Uses Stars In Stores, Not On TV,” Arkansas Democrat~Gazette,
`April 20, 2003, Business Section, page 63. Bates No. WM/LOUFNI0000577-
`578.
`
`“West Ashley Super Wal-Mart Will Be More Than A Big Box,” The Post and
`Courier, April 11, 2003, Local/State Section, page lB. Bates
`No. WM/LOUFNI0000579-580.
`
`“Sawmill Saws Away In Search Of An Idea,” National Post’s Financial Post &
`FP Investing, November 25, 2002, Marketing Section; Ad Review; page FP7.
`Bates No. WM/LOUFNI0000581-582.
`
`“First Things First,” Business And Management Practices, May 2002, Section
`Vol. 8, No. 5; page 4(1); ISSN: 1085-5009. Bates No. WM/LOUFNI0000587-
`588.
`
`

`
`“And The Winner Is Kmartl,” Capital Times, March 14, 2002, Section: Savvy;
`The Savvy Shopper, page 1F. Bates No. WM/LOUFNI0000591-592.
`
`“Wal-Mart vs. Reedley,” Fresno Bee, December 28, 2001, Section: South Valley
`Bee, page 13; Opinion. Bates No. WM/LOUFNI0000593-594.
`
`“Small Shops Resent Wal—Mart,” Albuquerque Journal, November 22, 2001,
`Section: page 2. Bates No. WM/LOUFNI0000595-596.
`
`“Insight Communications Pushing Cable-System Upgrades,” The State Joumal-
`Register, June 17, 2001, Marketplace Section, page 37. Bates
`No. WM/LOUFNI0000597-598.
`
`“Chain Confronts Its Opposition Wal~Mart Supercenters Entrench For Battle,”
`The Arizona Republic, August 16, 2000, Section: Chandler Community, page 1.
`Bates No. WM/LOUFNI0000599-600.
`
`“Resource Marketing Study Reveals Discount Giants Wal-Mart and K-Mart Score
`Zero Online,” PR NEWSWIRE, August 3, 2000. Bates
`No. WM/LOUFNI0000601-602.
`
`“Megastore Opens Doors Massillon Wal-Mart Greets Hundreds,” Akron Beacon
`Journal, July 20, 2000, Metro Section, page A1. Bates
`No. WM/LOUFNI0000603-604.
`
`“What’s In A Dame,” Arkansas Democrats-Gazette, January 28, 2000, Features
`Section, page E1. Bates No. WM/LOUFNI0000607~608.
`
`“Residents To Wal-Mart: No Way; Store Officials Get A Negative Earful,”
`Hartford Courant, December 21, 1999, Town News Section, page B1. Bates
`No. WM/LOUFNI000061 1-612.
`
`“BUSINESS WORLD; Selling to Argentina,” The New York Times, December 5,
`1999, Section 3, page 7. Bates No. WM/LOUFNI0000613-615.
`
`Target Aiming For Brand ID Discounter Plays Up ‘Hip’ Image,” The Denver
`Post, November 14, 1999, Business Section, page K-07. Bates
`No. WM/LOUFNI00O0620-621.
`
`“Simple Marketing Hits The Mark,” Business and Industry: Discount Store News
`Wal Mart Commemorative Issue, October 1999, Section page 111; ISSN: 0012-
`3587. Bates No. WM/LOUFNI0000622-623.
`
`“Converging In Bentonville,” Promo, August 1999, Section: CHANNEL
`SURFING; ISSN: 1047-1707. Bates No. WM/LOUFNI0000624-625.
`
`

`
`“The First Great East Greenwich Scavenger Hunt: Elvis, Fuzzy Dice,”
`Providence Journal-Bulletin, May 17, 1999, News Section, page 1C. Bates
`No. WM/LOUFNIO00O626—627.
`
`“Cherokee In The New Milennium; Folksy Store’s Era Over,” The Atlanta
`Journal and Constitution, May 13, 199, Section: Cherokee Extra, page 6JQ.
`Bates No. WM/LOUFNI00O0628-629.
`
`“Arkansas Democrat-Gazette/JEREMY SCOTT,” Arkansas Democrat-Gazette,
`
`May 9, 1999, Business Matters Section, page BM6. Bates
`No. WM/LOUFNI00OO630.
`
`“Author Details Wal-Mart Practices Book Takes Look At Marred Image Of Giant
`Retailer,” The Arizona Republic, February 3, 1999, Section: MESA/APACHE
`JUNCTION COMMUNITY, page 1E. Bates No. WM/LOUFNI0000631-632.
`
`“Wal-Mart Comes To Espanola,” Albuquerque Journal, January 28, 1999,
`Section, page 1. Bates No. WM/LOUFNIOOOO633-635.
`
`“A Little Bit Country, A Little Bit Shania Twain,” The Pantagraph, September 7,
`1998, News Section, page A3. Bates No. WM/LOUFNI0000636-637.
`
`“20ish Century: Target Hits A Bull’s Eye In Bargain Shoppers Showdown,”
`Arkansas Democrat-Gazette, August 23, 1998, Features Section, page E6. Bates
`No. WM/LOUFNIO000638-639.
`
`“Wal-Mart Gets A Green Light,” Charlotte Observer, July 22, 1998, Metro
`Section, page 1C. Bates No. WM/LOUFNI00OO640—641.
`
`“Wal-Mart Has Something To Smile About,” Arkansas Democrat-Gazette,
`May 31, 1998, News Section, page A1. Bates No. WM/LOUFNIOO0O642-643.
`
`“Cami11us Wal-Mart Nearly Ready The Retailer’s Store In An Old Caldor
`Location Is A Little Different From Other Wal-Marts,” The Post-Standard,
`July 10, 1997, Business Section. Bates No. WM/LOUFNIOOOO647-649.
`
`“Wal-Mart Ups The Pace — Retailer Boosts IT Spending, Expands Development
`Staff In Effort To Get Profits Growing Again,” Information Week, December 9,
`1996, Section: Cover Story, page 37, Inside Look. Bates
`No. WM/LOUFNI0000650-655.
`
`“Monday Memo: Smiley Face Update,” St. Louis Post-Dispatch, July 13, 1998,
`Business Plus Section, Page 18. Bates No. WM/LOUFNIO0O2424-2426
`
`“Monday Memo: Smiley Face Update,” St. Louis Post-Dispatch, January 25,
`1999, Business Plus Section, Page 5. Bates No. WM/LOUFNI0002427-2428
`
`

`
`PHYSICAL COPY
`
`Smiley. Running Press, 2004. Philadelphia. Bates No. WM/LOUFNI0002423
`
`RELEVANT EXCERPT
`
`Also attached hereto are samples of print advertising by Wal-Mart Stores, Inc., which has
`
`appeared, inter alia, as inserts in newspapers throughout the United States. Bates Numbers
`
`WM/LOUFNI0000001-4, 6-53.
`
`Discovery Responses
`
`Pursuant to 37 C.F.R. § 21200), the following is a list Franklin Loufrani’s Discovery
`
`Responses upon which Wal-Mart may rely at final hearing. Copies of the responses are attached
`
`1 hereto.
`
`Applicant’s Responses to Opposer’s Interrogatory No. 4 to Applicant. June 19,
`2002.
`
`Applicant’s Responses to Requests for Admissions From Opposer to Applicant.
`June 26, 2002.
`
`Franklin Loufrani’s Responses to Wal-Mart Stores, Inc.’s Second Set of Requests
`for Admission to Franklin Loufrani. October 30, 2003.
`
`Official Records
`
`Also attached, pursuant to 37 C.F.R. § 2.l22(e), is a copy of Wal-Mart’s Trademark
`
`Application No. 76/320,901, which is an official record of the United States Patent and
`
`Trademark Office. Bates No. WM/LOUFNIO001517-1524
`
`Respectfully submitted,
`
`

`
`\
`
`John H. Weber
`
`Gary J. Rinkerman
`Ari S. Indik
`BAKER & HOSTETLER LLP
`
`Washington Square, Suite 1100
`1050 Connecticut Avenue, N .W.
`
`Washington, D.C. 20036-5304
`(202) 861-1500
`
`(202) 861-1783 FAX
`Counsel for Wal—Mart Stores, Inc.
`
`Aplil 27, 2005
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Notice of Reliance has
`
`been served on Steven L. Baron, counsel for Franklin Loufrani, by mailing said copy on April
`
`27, 2005, via the methods listed below, to:
`
`Steven L. Baron
`Mandell, Menkes & Surdyk, LLC
`333 W. Wacker Drive, Suite 300
`Chicago, Illinois 60606
`sbaron @mms-law.net
`
`UPS Express
`First Class Mail
`Facsimile
`E-Mail
`
`[X ]
`[
`]
`[
`]
`[
`]
`
`
`
`‘
`
`100903041vl
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICATION FOR SERVICE MARK REGISTRATION
`
`Mark: Miscellaneous Design
`Class:
`International 35
`
`TO THE COMMISSIONER OF PATENTS AND TRADEMARKS:
`
`Wal—Mart Stores, Inc., a corporation organized under the laws of the State of
`Delaware, with its principal place of business at 702 SW 8th Street, Bentonville,
`Arkansas 72716-8095.
`
`The above-identified Applicant has adopted and is using the SERVICE MARK shown in
`
`the accompanying drawing for:
`
`Retail department store services, in International Class 35
`
`and requests that said mark be registered in the United States Patent and Trademark Office on the
`
`Principal Register established by the Act of July 5, 1946.
`
`The mark was first used in connection with the service at least as early as January 31, 1996,
`
`was first used in interstate commerce at least as early as January 31, 1996, and is now in use in such
`commerce.
`
`The service mark consists of a yellow circle with two eyes and a smiling shaped mouth.
`
`Color is integral to the mark.
`
`The service mark is used the advertisements, promotional materials, and in others manners
`
`customary in the trade. One (1) specimen, per class, showing the mark as actually used is
`
`presented herewith.
`
`Applicant hereby appoints Barbara L. Waite, Janet F. Satterthwaite, Mark B. Harrison and
`
`William D. Coston of the law firm of Venable, Baetjer, Howard & Civiletti, L.L.P., 1201 New
`
`York Avenue, NW, Suite 1000, Washington, D.C. 20005, members of the Bar of the District of
`
`Columbia, to prosecute the application to register the service mark described herein, to transact all
`
`business in the Patent and Trademark Office in connection therewith, and to receive the Certificate
`
`ofRegistration.
`
`* WM/LOUFNlOO001517
`
`

`
`Declaration of the Applicant
`
`1, Sallie L. Stroud, Vice President of the Applicant, declare that I believe that Wal-Mart
`
`Stores, Inc. is the owner of the service mark sought to be registered; that to the best of my
`
`knowledge and belief no other person, firm, corporation or association has the right to use said
`
`mark in commerce, either in identical form or in such near resemblance thereto as may be likely,
`
`when applied to the services of such other person, to cause confusion, or to cause mistake, or to
`
`deceive; that all statements made herein of my own knowledge are true; that all statements made
`
`herein on information and belief are believed to be true; and further that these statements were
`
`made with the knowledge that willfiil false statements and the like are punishable by fine or
`
`imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such
`
`willfiil false statements may jeopardize the validity of this application and any registration resulting
`therefrom.
`
`Signed at Ben;Qnvil11]g“‘ 93
`
`,this g§
`
`day of sag‘tgmbeg inthe year 290;
`
`.
`
`.3.e;~;
`
`WAL-MART STORES, INC.
`
` @
`
`Vice President
`
`#316906
`
`WM/LOUFN|O00O1518
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`' APPLICATION FOR SERVICE
`
`REGISTRATION
`
`Mark: Miscellaneous Design
`Class:
`International 35
`
`TO THE COMMISSIONER OF PATENTS AND TRADEMARKS:
`
`Wal-Mart Stores, Inc., a corporation organized under the laws of the State of
`Delaware, with its principal place of business at 702 SW 8th Street, Bentonville,
`Arkansas 72716-8095.
`
`The above-identified Applicant has adopted anduis using the SERVICE MARK shown in
`
`the accompanying drawing for:
`
`Retailrdepartment store services, in International Class 35
`
`and requests that said mark be registered in the United States Patent and Trademark Office on the
`
`Principal Register established by the Act of July 5, 1946.
`
`p The mark was first used in connection with the service at least as early as January 31, 1996,
`was first used in interstate commerce at least as early as January 31, 1996, and is now in use in such
`'
`commerce.
`Q(
`The service mark consists of a yellow circle with two eyes and a smiling shaped mouth. R
`color is integral to the mark.
`
`‘<
`
`The service mark is used the advertisements, promotional materials, and in others manners
`customary in the trade. One (1) specimen, per class, showing the mark- as actually used is
`presented herewith.
`I
`
`.
`Applicant hereby appoints Barbara L. Waite, Janet F. Satterthwaite, Mark B. Harrison and
`William D. Coston of the ‘law firm of Venable, Baetjer, Howard & Civiletti, L.L.P., 1201 New
`York Avenue, NW, Suite 1000, Washington, D.C. 20005, members of the Bar of the District of
`Columbia, to prosecute the application to register the service mark described herein, to transact all
`business in the Patent and Trademark Office in connection therewith, and to receive the Certificate
`of Registration.
`
`WM/LOUFNlO0001519
`
`

`
`I
`
`0
`
`Declaration of the Applicant
`
`1, Sallie L. Stroud, Vice President of the Applicant, declare that I believe that Wal—Mart
`Stores, Inc. is the ovmé ofthe service mark “sought to be registered; that to the best of my
`knowledge and belief no other person, firm, corporation or association has-the right to use said
`
`mark in commerce, either in identical form or in such near resemblance thereto as may be likely,
`
`cause mistake, or to
`when applied to the services of such other person, to cause confusion, or
`deceive; that all statements made herein of my own knovfiedge are true; that all statements made
`
`herein on information and belief are
`
`lieved to be true; and further that these statements were
`
`false statements”and the like are punishable by fine or
`wi
`made with the knowledge
`imprisonment, or both,'under Section’ 1001 of Title 18 of the United States Code and that such
`willful false statements may jeopardize the validity of this application and any registration resulting
`
`therefrom.
`
`Signedat
`'
`‘
`'
`
`.E_5.e3’
`
`.
`
`A
`
`/
`
`,this_ 25. dayof,se_Q_tem5e;£“intheyear ggo;
`WAL-MART STORES, INC. /.
`
`.
`
`Stroud
`
`Vice President
`
`»
`
`#316906
`
`WM/LOUFN|O000152O
`
`

`
`
`
`v
`
`10—03-2001
`u .Pnunt&TMO1'oIT'M Mull R0920! oa-
`
`DRAWING PAGE
`
`
`
`Wal-Mart Stores, Inc.
`702 SW 8th Street
`
`First Date:
`{ First ushin commerce:
`God_C1:S/S'ervices:
`
`Bentonville, Arkansas 72716’-8095
`
`At least as early as January 31, 1996
`At least as early as January 31, 1996
`Retail department store services, in International Class 35
`
`
`
`
`
`;
`§uBusHED
`3
`93/05/02
`_.___.._.__._.._J'
`
`WM/LOUFNl000O1521
`
`#316906
`
`
`
`

`
`
`
`Apgaiimnt:
`Musk:
`Int Class:
`
`Inc.
`Wal-Mart
`Misceilaneazts-i3§m3@
`35
`
`First Use Date: at least as eariy as January 31, I996
`Fim: Use: in Commcme:
`
`at least as early as hmuary 31, 1996
`
`WM/LOUFN|O0001522
`
`

`
`

`
`

`
`TRADEMARKS
`
`Attorney Docket 21179
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of U.S. Application Serial No. 75/977,376
`For:
`SMILEY and Happy Face Design
`Filed: June 3, 1997
`
`Date of Publication: May 22, 2001
`
`WAL—MART STORES,
`
`INC.
`
`Opposer,
`
`V.
`
`FRANKLIN LOUFRANI
`
`Applicant.
`
`\z\y\§\/\./\J\./\./\./
`
`Opposition No. 150,278
`
`AEELIQANILS_RES2QNSE$_TQ_QBBQSERLS_EIR$T
`SEI_QE_INEERRQGATQBlE$_IQ_ABBLIQAI
`
`3
`
`J Cl.
`
`1.
`
`Applicant objects to opposer's misleading use of the terms
`
`"Smiley" and "Mr. Smiley" in the Definitions. Designs resembling
`
`the design element in applicant's Application Serial_No.
`
`75/977,376 are commonly known in the U.S. as "Happy Face"
`
`designs, whereas the "SMILEY? word element in Serial No.
`
`75/977,376 is a distinctive, registered trademark owned by
`
`applicant. Furthermore, on information and belief,
`
`the Happy
`
`Face design in opposer's Application Serial No. 76/320,901 is
`
`known to opposer's customers as "the Rollback symbol," not as
`
`21179int.rs2
`
`1
`
`

`
`"Mr. Smiley" design in or around 1998, when one of his licensees
`
`informed him that Wal-Mart was using a Happy Face design in its
`
`advertising.
`
`Respectfully submitted,
`
`FRANKLIN LOUFRANI
`
`
`
`herine Merz, Es
`araguchi, Esq.
`MERZ & ASSOCIATES, P.C.
`
`1140 Lake Street, Suite 304
`Oak Park, Illinois 60301
`
`(708) 383-8801 (phone)
`(708) 383-8897 (fax)
`mcmmerz_law@msn.com (e-mail)
`
`Attorneys For Applicant
`
`21179int . rs2
`
`19
`
`

`
`"Mr. Smiley." Opposer's use of "Smiley" and "Mr. Smiley" in the
`
`Definitions and throughout its interrogatories and document
`
`requests creates confusion as to the true nature of the parties‘
`
`respective marks. Without waiving this objection, applicant
`
`answers opposer's First Set of Interrogatories to Applicant as
`
`follows.
`
` 4
`
`Identify Applicant and any other persons in which he has an
`
`ownership interest and which have an interest in Smiley,
`
`including each division, department, subsidiary, affiliate,
`
`predecessor, present or former officers, directors, managing
`
`agents, registered agents, and major stockholders and state the
`
`relationship of each such person to the Applicant and state the
`
`nature of the relationship between the Applicant and that person.
`
`RESBQNSEL
`
`Applicant objects to this Interrogatory on the ground that
`
`it seeks information not relevant to this proceeding.
`
`Applicant's mark is "SMILEY and Happy Face Design,* and applicant
`
`disclaims the exclusive right to use the "Happy Face Design"
`
`apart from the mark as a whole in Serial No. 75/977,376. Opposer
`
`refers to use of "Smiley," which opposer defines as "the design
`
`reflected in Applicant's application for trademark registration,
`
`2l179int.rs2
`
`2
`
`

`
`For the first use made by Applicant of Smiley on each
`
`different type and/or style of goods:
`
`a. describe the type and/or style of goods on which Smiley
`
`was used;
`
`b. state the date of such first use on or in connection
`
`with each good;
`
`c. state the number of units of goods sold on the dates of
`
`first use;
`
`d. state the number of goods, if any, shipped or performed
`
`on the date of first use;
`
`e.
`
`identify each person to whom the goods were sold and
`
`state any affiliation or connection of each such person with
`
`Applicant;
`
`f.
`
`identify each location in which the goods were sold or to
`
`which they were shipped or provided;
`
`g. state the manner in which Smiley was affixed to the
`
`goods;
`
`h.
`
`identify each person having knowledge of the first use;
`
`I.
`
`identify all documents referring or relating to the first
`
`use,
`
`including with limitation all labels or other packaging
`
`items associated with the goods.
`
`21179int.rs2
`
`5
`
`

`
`RESEQNSE;
`
`Applicant objects to this Interrogatory on the ground that
`
`it seeks information not relevant to this proceeding.
`
`Applicant's mark is "SMILEY and Happy Face Design," and applicant
`
`disclaims the exclusive right to use the "Happy Face Design"
`
`apart from the mark as a whole in Serial No. 75/977,376. Opposer
`
`refers to use of "Smiley," which opposer defines as "the design
`
`reflected in Applicant's application for trademark registration,
`
`number 75/977,376." As defined by opposer, applicant's use of
`
`"Smiley" in not at issue in this proceeding.
`
`Furthermore,
`
`to the
`
`extent that this Interrogatory seeks information that does not
`
`pertain to applicant's U.S.
`
`trademark rights, applicant objects
`
`to this Interrogatory on the ground that it is not likely to lead
`
`to the discovery of information relevant to this opposition
`
`proceeding or to information that will be admissible at the trial
`
`of this matter, as required by Rule 26 of the Federal Rules of
`
`Civil Procedure.
`
`INIERRQGAIQBX_NQ4_5
`
`State the information requested in the preceding
`
`interrogatory for the first use by Applicant of Smiley for each
`
`different type and/or style of goods.
`
`21179int.rs2
`
`5
`
`

`
`TRADEMARKS
`
`Attorney Docket 21179
`
`IN THE UNITED STATES PATENT AND TRADEMRRK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of U.S. Application Serial No. 75/977,376
`For: SMILEY and Happy Face Design
`Filed: June 3, 1997
`Date of Publication: May 22, 2001
`
`WAL—MART STORES,
`
`INC.
`
`Opposer,
`
`v.
`
`FRANKLIN LOUFRANI
`
`Applicant.
`
`\—\’\y\»"\/\/\a\/
`
`Opposition No. 150,278
`
`_ APPLICANT'S RESPONSES TO
`REQUESTS FOR ADMISSIONS FROM
`OPPOSER TO APPLICANT
`
`Applicant objects to opposer's Requests for Admission to the
`
`extent that they request answers "under oath, within twenty days
`
`from the date hereof."
`
`The Federal Rules of Civil Procedure and
`
`the rules of practice governing actions before the Trademark
`
`Trial and Appeal Board do not require that requests for admission
`
`be answered under oath.
`
`Furthermore, Rule 36 of the Federal
`
`Rules of Civil Procedure and Section 403.03 of the TBMP specify
`
`that responses to requests for admission are due within 30 days
`
`after the requests have been served, not 20 days. Without
`
`21079adm.res
`
`1
`
`

`
`waiving these objections, applicant responds to opposer's
`
`Requests for Admission as follows.
`
`1. That the Notice of Opposition (with its Exhibits) was timely
`
`filed in opposition to Opposer's trademark application under
`
`Serial No. 76/320,901.
`
`RESPONSE: Admitted.
`
`2. That Applicant herein,
`
`in paragraph six of the Notice of
`
`Opposition, admits that the happy face design element
`
`in his
`
`trademark application under Serial No. 75/977,376, does not serve
`
`any trademark function under Trademark Act Sections 1,
`
`2 and 45,
`
`15 U.S.C. Sections 1051, 1052, and 1127.
`
`RESPONSE: Denied; however, applicant admits that the U.S. Patent
`
`and Trademark Office has determined that the Happy Face Design
`
`element
`in applicant's Serial No. 75/977,376 does not by itself
`serve any trademark function under Trademark Act Sections 1,
`2
`
`and 45, 15 U.S.C. Sections 1051, 1052, and 1127. Applicant
`
`further admits that he does not claim an exclusive right to the
`
`21079adm.res
`
`2
`
`

`
`Happy Face Design element
`
`in Serial No. 75/977,376 apart from the
`
`mark as shown in that application.
`
`Respectfully submitted,
`
`FRANKLIN LOUFRANI
`
`Date:
`
`7 G 7dD1~
`
`
`
` atherine Merz,
`Bruce-Haraguchi, Esq.
`
`MERZ
`ASSOCIATES,
`PC
`Attorneys at Law
`1140 Lake Street, Suite 304
`Oak Park, Illinois 60301
`
`
`
`(708) 383-8801 (phone)
`(708) 383-8897 (fax)
`bhmerz_1aw@msn.com (e—mail)
`
`Attorneys for Applicant
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing APPLICANT'S RESPONSES TO
`REQUESTS FOR ADMISSIONS FROM OPPOSER TO APPLICANT was served on the
`attorney for opposer with sufficient postage as First Class Mail this
`z(g%A day of June, 2002, addressed to:
`
`(Pixie) Waite, Esq.
`Barbara L.
`Venable, Baetjer, Howard & Civiletti, L.L.P.
`1201 New York Avenue, N.W., Suite 1000
`Washington, DC 20005
`
`Tel.
`
`(202) 962-4800
`
`Attorney for opposer
`
`
`
`21079adm.res
`
`3
`
`

`
`1 36/2883
`
`15:45
`
`7683838897
`
`MERZ AND ASSOCIATES
`
`PAGE
`
`as
`
`fll.
`7
`
`,7
`.
`,
`1 .‘-1
`
`,1
`
`.~
`
`I
`
`1
`
`Attorney Docket 21308
`
`Irademarks
`
`.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Matter of U.S. Application Serial No. 75/977,376
`Filed: June 3, 1997
`Date of Publication: May 22, 2001
`Mark:
`"SMILEY and Happy Face Design"
`
`Wal—Mart Stores, Inc.,
`
`Opposer
`
`v.
`
`Franklin Loufrani,
`
`Applicant
`
`srszyrsagaxzsaxzsz
`
`Opposition No. 150,278
`(Consolidated)
`(Parent)
`
`In re Matter of U.S. Application Serial No. 75/320,901
`Filed: October 3, 2001
`Date of Publication: March 5, 2002
`Mark: "Happy Face Design"
`
`Franklin Loufrani,
`
`Opposer
`
`v.
`
`Wal—Mart Stores, Inc.,
`
`Applicant
`
`\/xaxax./s.a\a\¢\/sa
`
`Opposition No. 152,145
`(Consolidated)
`
`21’508n.mSj
`
`1
`
`

`
`1/36/2663 15:45
`
`7BB3B3BB°'—7
`
`MERZ AND ASSOCIATES
`
`PAGE
`
`64
`
`E
`
`L
`
`g
`
`In re Matter of U.S. Application Serial NO. 75/302,439
`Filed: June 3, 1997
`Date of Publication: December 10, 2002
`
`Mark:
`
`"SMILEY and Happy Face Design"
`
`Wal-Mart Stores, Inc.,
`
`Opposer
`
`V.
`
`Franklin Loufrani,
`
`Applicant
`
`\a\/»»\_as.-~¢\/\/\/
`
`Opposition No. 154,632
`(Consolidated)
`
`FRANKLIN LOUFRANI’8 RESPONSES TO
`
`INC.'S SECOND SET OF REQUESTS
`WRL-KART STORES,
`FOR ADMISSION TO FEAEELIN LOUFRANI
`
`Franklin Loufrani,
`
`through his undersigned attorneys, hereby
`
`responds to WAL-MART STORES,
`
`INC.'S SECOND SET OF REQUESTS FOR
`
`ADMISSION TO FRANKLIN LOUFRANI as follows.
`
`1. That the design Loufrani refers to as the "Happy Face
`
`Design" in his Motion for Summary Judgment is sometimes known as
`
`"Smiley" or as a "Smiley Face."
`
`‘ Answer: Admitted
`
`2. That the internet printouts attached hereto as Exhibit 1
`
`use the word “Smiley” or the phrase “smiley Face” to refer to
`
`designs identical or similar to the “Happy Face Design” element
`
`of Loufrani'5 Mark.
`
`\¢
`i
`
`213oaxe-2.adm
`
`2
`
`

`
`
`1 /38/2803 15:46
`788383B8°7
`85
`
`I
`
`MERZ AND ASSOCIATE?
`II
`
`PAGE
`
`Answer: Denied; however, Mr. Loufrani admits that some of the
`
`Internet printouts attached at Exhibit 1 use "Smiley" or "Smiley
`
`Face" to refer to designs identical or similar to the "Happy Face
`
`Design" element of Mr. Loufrani's mark.
`
`3. That the domain names “Smiley1icensing.com and “Smiley-
`
`World.com" are owned or maintained by businesses with which
`
`Loufrani is either associated or employed.
`
`Answer: Admitted
`
`Respectfully submitted,
`
`
`
`59%.. /“
`
`Catherine Merz,
`Am Muran Felton, Es
`.
`Merz & Associates, P.
`1140 Lake Street, Suite 304
`oak Park, Illinois 60301-1501
`Attorneys for
`Applicant/Opposer
`(708) 383-8801 (phone)
`(708) 383-3897 (fax)
`mcmmerz_law@msn.com (e-mail)
`
`
`
`Date, (_
`
`30, 202:3
`
`CERTIF§CATE QF §ERVIgE
`
`I hereby certify that a copy at the foregoing FRANKLIN LOUFRANI'S RESPONSES TO
`WAL—MmRT STORES. INc.'s SECOND SET OF REQUESTS
`FOR ADMISSIONS TO FRANKLIN LOUFRANI
`was served on the OPPOSER by facsimile and First class Mail this §})+&~ day of October
`2003. addressed to:
`
`Renee A. sekel
`venable LLP
`575 7“ street, NW
`Washington, DC 20004-1601
`
`Date:
`
`By:
`
`21308ren2.adm
`
`3
`
`

`
`15/38/2663
`
`16:46
`
`7B838388°7
`
`MERZ AND ASSDCIAT§S
`
`PAGE
`
`81
`
`\
`
`x
`
`k
`
`FACSIMILE COVER SHEET
`
`Mill! & ASSOCIATES “’
`
`Date:
`
`October 30, 2003
`
`Number of pages (including this
`cover sheet): 5
`
`Reference: 21308
`,
`4350 Pvm-
`Time‘
`_____.._.._._.....,_..______.........-.u-—-————--—-c----»-—-——————-—-——--1---------
`
`To:
`
`Renee A. Sekel, Esq.
`VENABLE LLP
`575 7th Street, NW
`Washington, D.C. 20004-1601
`
`Office Telephone:
`Facsimile Number:
`
`(202)344-4000
`(202)344-8300
`
`Pram:
`
`.
`
`Mary Catherine Merz, Esq.
`MERZ & ASSOCIATES, PC
`Attorneys At Law
`1140 Lake Street, Suite 304
`Oak Park, Illinois
`60301-1051
`U.S.A.
`
`Office Telephone:
`Facsimile:
`
`(708) 383-8801 ext. 22
`(708) 383-8897
`
`mcmmerz_law@msn.com
`Efmai13
`_,______,_____________________.,..._,.._____......._____.._..._..._____..._..______.._......__
`
`Message:
`
`
`
`THE INFORMATION CONTAINED IN THIS FACSIMILE TRANSMISSION IS INTENDED ONLY FOR THE USE OF THE
`INDIVIDLML OR ENTITY NAMED ABOVE AND THOSE PROPERLY ENTITLED TO ACCESS TO THE INFORMATION AND MAY
`CONTAIN INFORMATION THAT IS PRIVILEGED, ‘CONFIDENTIAL, AND/OR EXEMPT FROM DISCLOSURE UNDER APPLICABLE
`LAW.
`IF THE READER OF THIS TRANSMISSION IS NOT THE INTENDED OR AN AUTHORIZED RECIPIENT, YOU ARE
`HEREBY NOTIFIED THAT ANY UNAUI1-IORIZED DISTRIBUTION, DISSEMINATION.
`OR DUPLICATION OE‘ THIS
`TRANSMISSION IS PROHIBITED.
`IF YOU HAVE RECEIVED THIS TRANSMISSION IN ERROR, PLEASE IMMEDIATELY
`NOTIFY U3 BY TELEPHONE OR FACSIMILE.
`THANK YOU.
`
` ?
`
`
`
`

`
`‘/30/2863 15:45
`
`vaeaaaaac-7
`
`
`Mill! 8. IISSBGIIITES
`
`MERZ AND ASSOCIATES
`
`PAGE
`
`32
`
`Merz dz Associates, P.C.
`Attorneys at Law
`
`1I40LakeSrreét. Suite #304
`
`Oak Park, Illinois 60301-1051
`'
`U.S./1.
`
`
`
`DOMESTIC/INTERN/1 TIONAL
`Trademm-k.s. C0p}’I'ig/1.'.§
`Unfair Competition and
`A dverlising Law
`
`Mary Cathertne Merz. Esq.
`Direct Dial: (708) 383-8801 ext. 22
`Fm‘: (708) 383~6897
`Emaii: mcrmnerz_law@m:n.com
`
`VIA FACSIMILE
`
`QQN'FIB§§A'I‘ION SZIA MAIL
`
`October 30, 2003
`
`Renee A. Sekel, Esq.
`Venable LLP
`
`575 7th Street, NW
`Washington, D.C.
`
`20004
`
`Re: Wal—Mart Stores, Inc. v. Franklin Loufrani
`Franklin Loufrani v. Wal-Mart Stores, Inc.
`Consolidated oppositions (150,278, 154,632,
`152
`r Re
`2130
`'
`
`Dear Renee:
`
`.
`
`Enclosed is a service copy of FRANKLIN LOUFRANI'S RESPONSES
`TO WAL~MART STORES,
`INC.‘S SECOND SET OF REQUESTS FOR ADMISSION
`TO FRANKLIN LOUFRANI.
`
`Very truly yours,
`
`1%
`
`//Ex
`
`Mar
`
`atherine Merz
`
`MCM/as
`cc: Franklin Loufrani
`w/Enclosure
`
`,‘
`
`A
`
`.
`
`.‘
`.
`
`1
`
`‘,
`
`.1
`\
`\
`
`

`
`can«mu:1acnmoooocottocumoneuonmotca-oootootooooaatoooonoaoacooooatcatotaao
`
`DlALOG(R)File 632:Chicago Tribune
`(c) 1996 Chicago Tribune. All its. reserv.
`
`. 01511760
`
`3 Face itl; Smiley Face is back - and now it's saying more than just ‘have a nice
`; day.‘
`- February 15, 1989
`By: Libby Morse
`A Edition: NORTH SPORTS FINAL Section: STYLE Page: 18
`g Word Count: 1,149
`
`MEMO:
`‘ This story is a composite of the versions published in the various zones.
`
`,
`
`1 TEXT:
`-merica, 1971: It was, as George Bush would say just 17 years later, Tension
`ity. Wetnam was dragging on, the Manson Family was convicted, Juan Corona was
`rrested, Jim Morrison OD'd and somebody knocked off 500 bald eagles. There was
`=. ttica. and the Pentagon Papers, and Bangladesh and China in the UN. And if
`3 hat weren't bad enough, Led Zeppelin came out with "Stainrvay to Heaven."
`
`t wasn't surprising, then, that Americans started looking around for something
`0 prove they were still a friendly bunch of folks. They found it in a yellow
`ace with two dots for eyes and a curved line for a smile. It wasn‘t a new
`ymbol-Smiley Face buttons had been around for about two years-but in 1971, it
`as a symbol whose time had come.
`
`Now, that Have-A-Nice—Day hobgoblin of the '70s is back. And he's having the
`st laugh.
`
`said Leslie
`.
`l saw so many Smiley Faces in the past four days, I'm ARGH .
`ersten, co-owner of the two Sugar Magnolia stores, after returning from a
`ecent New York buying trip. Still, Smiley Face overload isn't keeping Gersten
`om stocking up