throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`,
`
`_
`
`_
`
`E
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`_ __
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`_
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`l |||l1lll
`
`09-20-2000
`14.5. Parent &TM01cI‘l'M Mail HCDIDL #22
`
`Application No. 76-1 1 1,310
`for WORLDPOST
`
`§ §
`
`§
`§
`
`§
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`WORLDPOST TECHNOGIES, 1NC.,
`
`Opposer.
`
`"'
`
`UNIVERSAL EXPRESS, INC.,
`dlbla WORLDPOST
`
`Applicant.
`
`§
`§
`§ Opposition No_ 154,547
`§
`
`3-‘
`
`The motion to compel of Applicant is untenable. A suit is pending in the United States
`
`District Court for the Western District of Texas, WORLDPOST TECHNOLOGIES,
`
`INC,
`
`Plaintiff, UNIVERSAL EXPRESS, INC. dfb/a WORLDPOST, WORLDPOSTCOM, PRIVATE
`
`POSTAL NETWORK, PBCNETWORKCOM, PRIVATEPOSTALNETWORKCOM, PBC
`
`ACCESS, PBCACCESS.COM, and WORLDPOSTNETWORK.COM, Defendant, Civil Action
`
`No. SA03CA0764FB, that will finally depose of all of the issues in the opposition. Opposer has
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`filed a motion to suspend this opposition based on the pending trademark infringement suit.
`
`In April, 2003, Opposer served its first set of interrogatories and requests to produce on
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`Applicant. Exhibits A & B. Applicant objected to the number of Opposer’s interrogatories and
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`Opposer reserved them in July 2003. Exhibit C. Despite repeated requests and phone calls,
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`Applicant refused to give any dates for depositions or make any documents available for
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`inspection and copying. See Exhibits D & E.
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`In the likely event the Board decides to continue a parallel proceeding with the conflicting
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`

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`
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`F
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`Federal court case, Opposer asks that the Board compel Applicant to comply with discovery.
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`It
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`is incongruous that Applicant would file a motion to compel against Opposer at the same time
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`that Applicant has stonewalled Opposer on discovery.
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`Prior to the filing of the Federal infringement action, it became apparent that Applicant
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`was refusing to comply with 0pposer’s discovery in this opposition and was merely stalling.
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`Opposer also realized that Applicant was going forward with a change of name of its companies
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`to Opposer’s registered mark, WORLDPOST, so Opposer had no choice but to file its complaint
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`and also seek preliminary injunctive relief and an expedited trial by combining the trial on the
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`merits with a preliminary injunction hearing. See attached Exhibits F, G and H. After being
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`served, Applicant’s attorney contacted Opposer’s attorney and pleaded for an extension of time
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`until September 26, 2003 to file a response to the pending motions for a preliminary injunction
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`and motion to consolidate. See attached Exhibit I.
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`Opposer has not only filed a trademark infringement suit based on Opposer’s registration
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`but has also asked the United States District Court for a preliminary injunction and an expedited
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`scheduling order. Faced with these deadlines, Applicant obtained a long extension of time to
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`respond to the Federal Court action by false pretenses and then filed this dilatory motion. The
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`discovery in the pending trademark infringement action will be different than the pending
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`opposition because the issues are much more extensive in the fonner.
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`It makes no sense to
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`continue discovery in the USPTO in view of the Federal Court proceeding that will be dispositive
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`of all issues.
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`It
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`is appalling that Applicant would demand discovery in this case and sanctions.
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`Applicant has refused to provide any discovery to Opposer despite repeated requests by Opposer
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`for discovery responses and stalled responding in the pending Federal Court suit. Applicant has
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`

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`
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`continued to stonewall Opposer on all discovery and has the audacity to assert that Opposer is an
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`obstructionist. The request for sanctions is frivolous. Opposer has done nothing wrong. There
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`is no point in going forward with discovery in the opposition when it should be stayed.
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`There is no merit in the motion to compel and request for sanctions and it should be
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`denied. The motion to suspend should be granted.
`
`RESPECTFULLY SUBMITTED,
`
`Charles W. Hanor, P.C.
`750 Rittiman Road
`
`San Antonio, TX 78209
`
`(210) 558-9500
`(210) 558—9509 Fax
`c
`
`CHARLES W. H
`
`OR
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`chanor@hanor.com
`
`ATTORNEYS FOR OPPOSER,
`
`WORLDPOST TECHNOLOGIES, INC.
`
`

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`
`
` ERflCE
`
`The undersigned certifies that a true copy of the foregoing OPPOSER’S RESPONSE TO
`APPLICANT’S MOTION TO COMPEL DISCOVERY AND APPLICANTS MOTION FOR
`
`DISCOVERY SANCTIONS AGAINST OPPOSER OR IN THE ALTERNATIVE MOTION TO
`
`COMPEL APPLICANT TO COMPLY WITH DISCOVERY was sent via first class mail, to:
`
`Mr. Paul J. Esatto, Ir.
`
`Scully, Scott, Murphy & Presser
`400 Garden City Plaza
`New York, N.Y. 11530
`
`on this 25th day of September, 2003.
`
`@_
`
`Charles W. Hanor
`
`Certificate of Mailing By "Express Mail"
`
`Signature:__ Date ofDeposit:
`
`‘Express Mai|"Maiiing Label Number: EL 970002555 US
`
`I hereby certify that this correspondence is being deposited with the United States Postal
`Service "Express Mail Post Office To Addresses" service with sufficient postage and is
`addressed to: Box TTAB, NO FEE. Commissioner for Trademarks. 2900 Crystal Drive,
`Arlington, Virginia 22202-3513.
`
`Name of Person Signing Certificate: C
`
`. Hanor
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`

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`IEVIJIDIT A
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`

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`
`,
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`Ill
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`09'26.2o03
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`U.S. P
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`stem at TMOfclTM Mail Hg“ 9,‘ #22
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Application No. 76-111,310
`for WORLDPOST
`.
`
`Opposition No. 154,547
`
`§ §
`
`§
`§
`§
`§
`§
`
`§ §
`
`§
`
`WORLDPOST TECHNOGIES, INC.,
`
`Opposer,
`,,_
`
`UNIVERSAL EXPRESS, INC.,
`d/b/a WORLDPOST
`
`Applicant.
`
`OPPOSER’S FIRST SET OF INTERROGATORIES
`
`Pursuant to Rule 33 of the Federal Rules of Civil Procedure and 37 C.F.R. 2.120,
`
`WORLDPOST TECHNOGIES, INC., (“Opposer”),
`
`through undersigned counsel, hereby
`
`propounds its First Set of interrogatories upon UNIVERSAL EXPRESS,
`
`INC. d/bfa
`
`WORLDPOST, (“Applicant”). Applicant shall provide its written reply to these interrogatories
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`within 30 days of the date of service hereof.
`
`1. INSTRUCTIONS AND DEFINITIONS
`
`A. These interrogatories require responses which are complete and accurate as of the date
`
`when such responses are made.
`
`B. These interrogatories are continuing in character so as to require Applicant
`
`to
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`supplement its response as to:
`
`1.
`
`the identity of persons having knowledge of discoverable matters;
`
`2.
`
`the identity of each person expected to be called as an expert witness at trial,
`
`the subject matter on which the expert is expected to testify, and the substance of the expert’s
`
`testimony. Fed. R. Civ. P. 26(e)(l).
`
`C. Applicant has a duty to amend a response if Applicant learns that the response is in
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`First Intcxrogatories to Defendant
`
`1
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`

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`
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`some material respect incomplete or incorrect and if the additional or corrective information has
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`not otherwise been made known to Opposer during the discovery process or in writing.
`
`Fed.R.Civ.P. 26(e)(2).
`
`D. As used herein, the following definitions apply:
`
`1.
`
`“Communication”.
`
`The term “communication(s)” means the information that
`
`has been transmitted (in the form of facts, ideas, inquiries, or otherwise), regardless of means
`
`utilized.
`
`2.
`
`“Document”. The tenn “document(s)” has the meaning ascribed to it
`
`in
`
`Fed.R.Civ.P. 34(a), and includes, but is not limited to, every writing or record of every type and
`
`description that is or has been in the possession, control, or custody of Applicant or which
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`Applicant has knowledge, including without limitation: originals, masters and every copy of
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`writings, including handwritings, and printed,
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`typed or other graphic or photographic matter
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`including film or microfilm, video tape,
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`recordings (tape, disc or other), correspondence,
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`communications, contracts, agreements, assignments,
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`licenses, purchase orders,
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`invoices,
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`statements, memoranda, notes (in pencil,
`
`ink, or
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`typewritten),
`
`letters, notebooks,
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`reports,
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`photographs, drawings, tracings, sketches, charts, catalogs, brochures, advertisements, records of
`
`communications oral and otherwise,
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`instructions,
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`telegrams, computer databases, computer
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`printouts or other computer—generated matter, computer records of all types (including text files,
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`graphics files, audio and multimedia files and electronic mail messages) studies, surveys,
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`technical
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`reports,
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`laboratory reports, engineering reports, patents,
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`registrations or marks,
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`copyrights, applications for a patent, applications for a mark, applications for a copyright, patent
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`appraisals, infringement searches or studies, patentability searches or studies, validity searches or
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`studies, minutes, reports, calendars, inter-office communications, price lists, bulletins, circulars,
`
`First interrogatories to Defendant
`
`2
`
`

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`
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`statements, manuals, summaries, maps, charts, graphs, invoices, canceled or voided checks, bills
`
`or statistical material, and insurance policies. A document bearing any notation not a part of the
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`original text is to be considered a separate document. A draft or non-identical copy is a separate
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`document within the meaning of this term.
`
`3.
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`“Data”.
`
`The
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`term “data”
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`shall mean
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`any
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`facts,
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`documents
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`or
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`communications, oral or otherwise, of which Applicant has knowledge, information or belief.
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`4.
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`The words/phrases “identify”, “circumstances”, “detail(s)”, and “all information”,
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`whether used alone or in connection with any other words, shall include, but are not limited to,
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`identifying all facts, persons, places, dates, events, documents, physical items of any kind, time
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`periods, geographical locations, data, communications of any kind, or any other information in
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`any way related to, pertaining to, connected with or otherwise responsive to the interrogatory or
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`document request such that all information shall be brought within the scope of the interrogatory
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`or document request which may otherwise be deemed not covered by the interrogatory or
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`document request.
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`5.
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`3!
`The words/phrases “respecting ,
`
`CC
`
`I!
`relating ,
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`(G
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`referring to”, or “regarding”, whether
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`used alone or in connection with any other words, shall mean making a statement about, referring
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`to, mentioning, discussing, describing,
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`reflecting, dealing with, consisting of, comprising,
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`recording or in any other way pertaining to the subject either in whole or in part directly or
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`indirectly.
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`6.
`
`Egg.
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`The terms “Opposer” and “Applicant” as well as a party’s full or
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`abbreviated name or a pronoun referring to a party, shall mean the party and, where applicable,
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`its officers, directors, employees, stockholders,
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`trustees, partners, predecessors, divisions,
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`corporate parent, subsidiaries, affiliates and agents. The term “Applicant” also includes any and
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`First Intcrrcgatories to Defendant
`
`3
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`

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`
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`all predecessors of Applicant
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`including, but not
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`limited to, all businesses, partnerships,
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`corporations, associations, firms, proprietorships, organizations or entities in which Applicant is
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`in any way involved presently or in the past, through ownership, equity interest, or otherwise,
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`who at any time has used Applicant’s Mark (as defined herein) or has had a right, title or interest
`
`in Applicant's Mark, or any predecessor's mark or mark similar to Applicant's Mark.
`
`7.
`
`“_l’c:ri1:.
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`The term “person” shall include without limitation, any natural
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`person or any business, business association, business entity, partnership, corporation, legal, or
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`governmental entity.
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`8.
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`“And” and “Or”.
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`The connectives “an ” and “or” shall be construed broadly,
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`both conjunctively and disjunctively,
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`to bring within the scope of the discovery request all
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`responses that might otherwise be construed to be outside of its scope.
`
`9.
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`“Date”.
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`The term “date” shall mean the exact day, month and year, if
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`ascertainable, or if not, the best approximation, including the temporal relationship to other
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`events.
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`10.
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`“Number”.
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`The use of the singular form of any word includes the plural and
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`vice versa.
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`11.
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`“Applicant's Mark”. Unless otherwise specified, the words “Applicant’s Mark”
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`refer to the marks as depicted in or alleged in the Opposition and any actual uses of
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`WORLDPOST or any similar version thereof.
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`12.
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`“ pplicant’s services or goods”.
`
`Unless otherwise
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`specified,
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`the words
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`“Applicant’s services or goods” refer to those goods or services set forth in Applicant’s
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`registration and the actual goods or services of Applicant in connection with Applicar1t’s Mark.
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`13.
`
`“
`
`osers’ Mar ". Unless otherwise specified, the words “Opposers’ Mark”
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`First lntcrrogatories to Defendant
`
`4
`
`

`
`
`
`First interrogatories to Defendant
`
`5
`
`

`
`
`
`II. INTERRO GATORIES
`
`INTERROGATORY NO. 1
`
`Identify all persons who you believe have knowledge of facts relevant to this Opposition,
`and describe the issues upon which you believe they have knowledge.
`
`INTERROGATORY NO. 2
`
`Identify each and every person whom Applicant intends to call as a witness in the trial or
`discovery phase of this Opposition, including, but not limited to, expert witnesses, and describe
`the nature of each witness's expected testimony, including the identification of all documents
`about which each witness is expected to testify.
`
`INTERROGATORY NO. 3
`
`Describe the nature of Applicant’s actual and anticipated business, including business
`conducted through licensees.
`
`First lnterrogatoris to Defendant
`
`6
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`

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`
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`INTERROGATORY NO. 4
`
`Identify and describe in detail each product or service on or in connection with which
`Applicant has at any time used Applicant’s Mark or intends to use Applicant’s Mark, and for
`each such product or service and separately:
`
`state the date when and geographic location where Applicant’s Mark was first
`(a)
`used or, if such use is anticipated, the date when and geographic location where Applicant
`anticipates commencement of such use;
`
`describe the circumstances of such first use or anticipated first use, including the
`(b)
`manner of use, the details of any sales involved, the type and/or class of customers, the trade, sale
`and/or distribution channels, number of units sold, and price charged; and
`
`state whether the use, including manner of use, type and class of customer, trade,
`(c)
`sale and/or distribution channels, and price charged has continued to the present date, and if not
`the date such use was discontinued, or has changed in any respect, and describe all such changes,
`and/or was discontinued for any period of time, and if so, the dates such use was discontinued.
`
`INTEROGATORY N0. 5
`
`For each product or service identified in response to Interrogatory No. 3, identify the
`individuals who are most familiar with Applicant’s production, packaging, marketing, selling and
`merchandising of products and services under Applicant’s Mark, advertising and promotion of
`the products and services identified by the Applicant’s Mark, enforcement and maintenance of
`trademark rights in Applicant’s Mark, sale of the products and services identified by Applicant’s
`Mark, and the trade channels through which the products and services bearing Applicant’s Mark
`are and have been sold.
`
`First lnlcrrogatories to Defendant
`
`7
`
`

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`
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`INTERRROGATORY NO. 6
`
`Identify and describe in detail all types of media, including publications, billboards, signs,
`advertisements, internet, radio and television, where Applicant has advertised or offered for sale,
`or intends to advertise or offer for sale, in the United States each of Applicant’s services or goods
`under Applicant’s Mark, and state the amounts, by type of media and by date, which have been or
`will be expended by Applicant in promoting, advertising or offering each of Applicant's services
`or goods under Applicant’s Mark for each calendar year to date.
`
`INTERROGATORY NO. 7
`
`For each of Applicant’s services or goods, state, by number of tuiits and dollar volume,
`the amount of sales in the United States for each calendar year to date.
`
`INTERROGATORY NO. 8
`
`Describe the type of retail outlets, wholesale outlets and/or other outlets (i.e., licensees,
`representatives, distributors, jobbers, catalog or mail order sales outlets, etc.) through which
`Applicant’s services or goods have been or will be sold, offered for sale, rendered and/or
`distributed.
`
`INTERROGATORY NO. 9
`
`Identify any third parties who have used, are using or intend to use any mark or name
`comprising the name “WORLDPOST” either alone or with other wording, letters, or designs, on
`or in connection with products or services relating to App1icant’s services.
`
`First Intcrrogatories to Defendant
`
`3
`
`

`
`
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`INTERROGATORY NO. 10
`
`Identify any instances of confusion or false association between Applicant’s use of
`Appl1cant’s mark or Opposer’s Mark. For illustrative purposes only and without limiting the
`foregoing, such instances would include misdirected mail, telephone calls, inquiries, orders,
`complaints, Oppositions or returns of goods.
`
`INTERROGATORY NO. 11
`
`registration, or
`instances in which Applicant has objected to the use,
`Identify all
`application for registration by any third party of any mark or name containing “WORLDPOST”
`or any similar mark.
`
`INTERROGATORY NO. 12
`
`Identify any instances in which Applicant’s use, registration, or application to register a
`mark containing Applicant’s mark have been the subject of an objection of any kind by a third
`Party-
`
`INTERROGATORY NO. 13
`
`identify each civil action or administrative
`With the exception of this proceeding,
`proceeding in the United States or elsewhere in which Applicant is now or has ever been a party
`and which has involved Applicant's Mark, including, but not limited to, proceedings where the
`issues of the ownership of and/or the right to the use of any such mark were raised.
`
`First interrogatories to Defendant
`
`9
`
`

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`
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`INTERROGATORY NO. 14
`
`Describe in detail Applicant’s selection and adoption of Applicant’s Mark including,
`without limitation, the date of adoption, the reasons for selecting and adopting App1icant’s Mark,
`all details as to the origin of Applicant's Mark, and the meaning or impression intended to be
`conveyed by Applicant’s Mark.
`
`INTERROGATORY NO. 15
`
`Provide the date and describe the circumstances when Applicant first became aware of
`
`Opposer’s Mark.
`
`First lnternogatorics to Defendant
`
`10
`
`

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`
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`INTERROGATORY NO. 16
`
`Describe in detail the procedures employed and the results obtained from each trademark
`search or searches prior to or subsequent to its adoption of App1icant’s Mark, including the
`persons conducting the search.
`
`INTERROGATORY NO. 17
`
`Describe each alteration which has been made, or proposed, in the design, wording,
`presentation or use of App1icant’s Mark for any reason, including as a result of the findings of
`any search or investigation, give the circumstances surrounding each such alteration, or proposed
`alteration.
`
`First lnterrogatorics to Defendant
`
`1 1
`
`

`
`
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`INTERROGATORY NO. 18
`
`regarding any and all documents
`to the extent possible,
`information,
`Identify all
`responsive to the foregoing Interrogatories which are lost, destroyed or are otherwise no longer in
`the custody or control of Applicant.
`
`INTERROGATORY NO. 19
`
`For each and every Interrogatory, identify the individual or individuals answering the
`Interrogatory, and each person who provided any information including opinions, advice, reports,
`studies, or facts on which your answer to any of the foregoing Interrogatories was based,
`specifying each Interrogatory to which he or she contributed information.
`
`First Intenugatories to Defendant
`
`12
`
`

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`
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`INTERROGATORY N0. 20
`
`With respect to any document or thing called for in Opposer’s requests to produce which
`
`is withheld because it is asserted to contain information relating to matters claimed by Applicant
`
`to be privileged or exempt from discovery, state the nature of the privilege (including work
`
`product) or other exemption from discovery which is being claimed and the facts which support
`
`such claim of privilege or exemption and provide the following additional information:
`
`i.
`
`ii.
`
`the date, identity, and general subject matter of each document;
`
`the identity of each person (other than stenographic or clerical assistants)
`
`participating in the preparation of the document;
`
`iii.
`
`the identity of each person to whom the contents of the document were
`
`communicated by copy, distribution, reading or substantial sumrnarization;
`
`iv.
`
`a description of any document or other material transmitted with or attached to the
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`document; and
`
`v.
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`whether any business or nonlegal matter is contained or discussed in the
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`document.
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`First lntcrrogatcria to Defendant
`
`1 3
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`

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`
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`II}.
`-:3.
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`:12:
`t3’:
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`‘
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`1
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`The undersigned certifies that a true copy of the foregoing OPPOSER’S FIRST SET OF
`INTERROGATORIES was sent via first class mail, to:
`
`Mr. Paul J. Esatto, Jr.
`Patricia A. Wilczynski
`Scully, Scott, Murphy & Presser
`400 Garden City Plaza
`New York, N.Y. 11530
`
`on this? day of April, 2003.
`
`@:_
`
`Charles W. Hanor
`
`First lntermgatorics to Defendant
`
`1 5
`
`

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`EXHIBIT B
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`§ §
`
`WORLDPOST TECHNOGIES, INC.,
`
`§ §
`
`Opposer,
`
`V.
`
`UNIVERSAL EXPRESS, INC.,
`d/b/a WORLDPOST
`
`Applicant.
`
`Application No. 76-1 1 1,310
`for WORLDPOST
`
`§
`§
`§
`§
`§
`§
`§ Opposition No. 154,547
`
`,_
`
`mu
`
`:1 m
`
`09.25.2003
`u.s. Prams TMOfcITM Mail Flcpt on 122
`
`OPPOSER’S FIRST SET OF REQUESTS FOR PRODUCTION
`OF DOCUMENTS AND THINGS
`
`Pursuant to Rule 34 of the Federal Rules of Civil Procedure and 37 C.F.R. 2.120,
`
`WORLDPOST TECHNOGIES, INC., (“0pposer”),
`
`through undersigned counsel, hereby
`
`serves its First Set of Requests for Production of Documents and Things upon UNIVERSAL
`
`EXPRESS, INC. d/b/a WORLDPOST, (“Applicant”). Applicant shall provide its written reply
`
`to these requests for production of documents within 30 days of the date of service hereof, and
`
`produce the documents and things requested for inspection and copying either where they are
`
`normally kept, or at the offices of Opposer’s counsel, Charles W. Hanor of Gunn, Lee & Hanor,
`
`PC., 700 N. St. Mary's Street, Suite 1500, San Antonio, TX 78205, or at a location mutually
`
`agreed between the parties.
`
`1. INSTRUCTIONS AND DEFINITIONS
`
`A.
`
`These document requests require responses that are complete and accurate as of
`
`the date when such responses are made.
`
`B.
`
`The following requests for production of documents are continuing in nature and
`
`require timely supplemental production of documents should additional documents come within
`
`First Docurmnt Prod Req to Applicant
`
`1
`
`

`
`
`
`Applicant’s possession, custody or control.
`
`C.
`
`As used herein, the following definitions apply:
`
`1. . The term “comrnunication(s)” means the information that
`
`has been transmitted (in the form of facts, ideas, inquiries, or otherwise), regardless of means
`
`utilized.
`
`2.
`
`“Document”. The term “document(s)” has the meaning ascribed to it
`
`in
`
`Fed.R.Civ.P. 34(a), and includes, but is not limited to, every writing or record of every type and
`
`description that is or has been in the possession, control, or custody of Applicant or which
`
`Applicant has knowledge, including without limitation: originals, masters and every copy of
`
`writings, including handwritings, and printed, typed or other graphic or photographic matter
`
`including film or microfihn, video tape, recordings (tape, disc or other), correspondence,
`
`communications, contracts, agreements, assignments,
`
`licenses, purchase orders,
`
`invoices,
`
`statements, memoranda, notes (in pencil,
`
`ink, or
`
`typewritten),
`
`letters, notebooks,
`
`reports,
`
`photographs, drawings, tracings, sketches, charts, catalogs, brochures, advertisements, records of
`
`communications oral and otherwise,
`
`instructions,
`
`telegrams, computer databases, computer
`
`printouts or other computer-generated matter, computer records of all types (including text files,
`
`graphics files, audio and multimedia files and electronic mail messages) studies, surveys,
`
`technical
`
`reports,
`
`laboratory reports, engineering reports, patents,
`
`registrations or marks,
`
`copyrights, applications for a patent, applications for a mark, applications for a copyright, patent
`
`appraisals, infringement searches or studies, patentability searches or studies, validity searches or
`
`studies, minutes, reports, calendars, inter-office communications, price lists, bulletins, circulars,
`
`statements, manuals, summaries, maps, charts, graphs, invoices, canceled or voided checks, bills
`
`or statistical material, and insurance policies. A document bearing any notation not a part of the
`
`First Document Prod Req to Applicant
`
`2
`
`

`
`
`
`original text is to be considered a separate document. A draft or non-identical copy is a separate
`
`document within the meaning of this term.
`
`3.
`
`“ii.
`
`The
`
`term “data”
`
`shall mean
`
`any
`
`facts,
`
`documents
`
`or
`
`communications, oral or otherwise, of which Applicant has knowledge, information or belief.
`
`4.
`
`The words/phrases “identify”, “circumstances”, “detail(s)”, and “all information”,
`
`whether used alone or in connection with any other words, shall include, but are not limited to,
`
`identifying all facts, persons, places, dates, events, documents, physical items of any kind, time
`
`periods, geographical locations, data, communications of any kind, or any other information in
`
`any way related to, pertaining to, connected with or otherwise responsive to the interrogatory or
`
`document request such that all information shall be brought within the scope of the interrogatory
`
`or document request which may otherwise be deemed not covered by the interrogatory or
`
`document request.
`
`5.
`
`The words/phrases “respecting”, “relating”, “referring to”, or “regarding”, whether
`
`used alone or in connection with any other words, shall mean making a statement about, refening
`
`to, mentioning, discussing, describing,
`
`reflecting, dealing with, consisting of, comprising,
`
`recording or in any other way pertaining to the subject either in whole or in part directly or
`
`indirectly.
`
`6.
`
`fl_rt_ice_s.
`
`The tenns “Opposer" and “Applicant” as well as a party's full or
`
`abbreviated name or a pronoun referring to a party, shall mean the party and, where applicable,
`
`its officers, directors, employees, stockholders,
`
`trustees, partners, predecessors, divisions,
`
`corporate parent, subsidiaries, affiliates and agents. The term “Applicant” also includes any and
`
`all predecessors of Applicant
`
`including, but not
`
`limited to, all businesses, partnerships,
`
`corporations, associations, firms, proprietorships, organizations or entities in which Applicant is
`
`First Document Prod Roq to Applicant
`
`3
`
`

`
`
`
`in any way involved presently or in the past, through ownership, equity interest, or otherwise,
`
`who at any time has used App1icant’s Mark (as defined herein) or has had a right, title or interest
`
`in Applicant's Mark, or any predecessor's mark or mark similar to Applicant’s Mark.
`
`7.
`
`“Bit”.
`
`The term “person” shall include without limitation, any natural
`
`person or any business, business association, business entity, partnership, corporation, legal, or
`
`governmental entity.
`
`8.
`
`“And” and “Or”.
`
`The connectives “and” and “or” shall be construed broadly,
`
`both conjunctively and disjunctively,
`
`to bring within the scope of the discovery request all
`
`responses that might otherwise be construed to be outside of its scope.
`
`9.
`
`“Egg”.
`
`The tenn “date” shall mean the exact day, month and year, if
`
`ascertainable, or if not, the best approximation, including the temporal relationship to other
`
`events.
`
`10.
`
`“I&m_b_g”.
`
`The use of the singular form of any word includes the plural and
`
`vice versa.
`
`11.
`
`“ pp1icant’s Mark”. Unless otherwise specified, the words “Applicant's Mark”
`
`refer to the marks as depicted in or alleged in the Opposition and any actual uses of
`
`WORLDPOST or any similar version thereof.
`
`12.
`
`“Ap1J_licant’s services or goods”.
`
`Unless otherwise
`
`specified,
`
`the words
`
`“Applicant’s services or goods” refer to those goods or services set forth in Applicant’s
`
`registration and the actual goods or services of Applicant in connection with Applicant's Mark.
`
`13.
`
`“Qpposer’s’ Mar ". Unless otherwise specified, the words “0pposer’s’ Mark"
`
`refer to the mark WORLDPOST or any similar version thereof.
`
`14.
`
`“Applicant”. Unless otherwise specified,
`
`the word “Applicant” refers to the
`
`First Document Prod Req to Applicant
`
`4
`
`

`
`
`
`Applicant, Universal Express, Inc. and any person using Applicant’s mark and which use
`
`Applicant claims inures to the benefit of Applicant.
`
`REQUEST FOR PRODUCTION OF DOCUMENTS AND THINGS
`
`Applicant is hereby requested to produce for inspection and/or copying by Opposer, or to
`cause copies to be provided to Opposer, the documents and things specified hereunder, to the
`extent that such documents and things are in the possession, custody or control of Applicant or
`Applicant’s attorneys:
`
`REQUEST NO. 1
`
`All documents referring or relating to any person having or having had any right to use
`Applicant’s Mark through or under which Applicant claims any rights in such mark.
`
`REQUEST NO. 2
`
`All documents and things referring or relating to Applicant’s adoption and use of
`Applicant’s Mark in connection with any products or services of Applicant:
`i)
`in commerce which Congress may regulate;
`ii)
`anywhere in the United States; or
`iii)
`anywhere in the world.
`
`REQUEST NO. 3
`
`All documents and things concerning, evidencing, or reflecting the date or manner of first
`use of Applicant’s Mark in connection with any goods or services of Applicant:
`i)
`in commerce which Congress may regulate;
`ii)
`anywhere in the United States; or
`iii)
`anywhere in the world.
`
`REQUEST NO. 4
`
`Each different use of Applicant’s Mark (e.g., tags, labels, packaging, advertisements, or
`other printed materials) made or intended to be made by or on behalf of Applicant.
`
`First Doctment Prod Req to Applicant
`
`5
`
`

`
`
`
`REQUEST NO. 5
`
`All documents relating to any survey, poll or similar investigation conducted by or on
`behalf of Applicant relating to actual or intended recognition of Applicant’s Mark by the public
`or the trade.
`
`REQUEST N0. 6
`
`All documents relating to any unsolicited publicity or recognition obtained or received by
`Applicant for any product or service identified by Applicant’s Mark.
`
`REQUEST N0. '7
`
`Any documents setting forth each specific product or service offered or intended to be
`offered by Applicant that utilizes or will utilize Applicant’s Mark, and the actual or intended
`price for each such product or service, including, but not limited to, price lists or catalogs.
`
`REQUEST N0. 8
`
`All documents which evidence, refer to, or otherwise relate to Applicant’s actual or
`projected annual gross sales, in terms of units and dollars, for each product or service sold or
`intended to be sold under Applicant's Mark.
`
`REQUEST NO. 9
`
`Each different print media advertisement, including each catalog, direct mail literature,
`brochure, advertisement or piece of promotional material, used or intended to be used by
`Applicant in advertising Applicant’s services or goods under Applicant’s Mark.
`
`REQUEST NO. 10
`
`Each different advertisement used or intended to be used by Applicant not included in
`response to the preceding request, including, but not limited to, television, radio and/or other
`broadcast advertisements for Applicant's Mark,
`including television and/or
`radio scripts,
`storyboards, video tape containing television advertisements or audio tape containing radio
`advertisements.
`
`First Document Pmd Req to Applicant
`
`6
`
`

`
`
`
`REQUEST N0. 11
`
`All documents which evidence, refer to or otherwise relate to Applicant’s actual or
`intended armual monetary expenditures for advertising, promoting, and/or offering for sale each
`or any of Applicant’s services or goods under Applicant’s Mark.
`
`REQUEST NO. 12
`
`All correspondence between any advertising agencies and Applicant relating or referring
`to the actual or intended promotion of Applicant’s services or goods under or by reference to
`Applicant’s Mark.
`
`REQUEST NO. 13
`
`All marketing plans Applicant has utilized or intends to utilize in relation to each product
`or service offered under or by reference to Applicant’s Mark.
`
`REQUEST N0. 14
`
`referring or relating to actual or planned
`All documents and things comprising,
`advertising or promotion of Applicant’s products or services under Applicant’s Mark.
`
`REQUEST NO. 15
`
`All documents and things referring or relating to the channels of trade employed or
`anticipated to be employed by Applicant to sell or distribute goods or services under Applicant's
`Mark.
`
`REQUEST N0. 16
`
`licensees,
`locations,
`(i.c.,
`relate to the all outlets
`refer or
`that
`All documents
`representatives, agents, etc.) through which each product or service identified by Applicant’s
`Mark either have been or will be sold or distributed or marketed.
`
`First Document Find Rcq no Applicant
`
`7
`
`

`
`
`
`REQUEST NO. 17
`
`Documents sufficient to permit the identification of:
`
`(a)
`
`(b)
`
`(c)
`
`all actual or likely retail outlets purchasing products sold or offered for sale under
`Appli

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