IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EDGAR RICE BURROUGHS, INC.,
`
`v.
`
`LETOURNEAU, INC.,
`
`Opposer,
`
`Applicant.
`
`.
`:
`
`Opposition
`No. 91154731
`
`DECLARATION OF EVAN GOURVITZ
`
`IN SUPPORT OF OPPOSER’S MOTION TO COMPEL
`
`Evan Gourvitz declares and says:
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`1.
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`I am a member of the Bar of the State of New York and an associate at the law firm
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`of Fross Zelnick Lehrman & Zissu, P.C., counsel for Opposer Edgar Rice Burroughs, Inc.
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`(“Opposer”) in the above-captioned opposition proceeding. I submit this declaration in support
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`of Opposer’s Motion to Compel based on my personal knowledge and on the files in this action.
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`2. This declaration sets forth the relevant history of this opposition and Opposer’s good-
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`faith efforts to seek the cooperation of Applicant LeTourneau, Inc. (“Applicant”) in discovery.
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`Despite repeated attempts over the course of more than five months to resolve the disputes
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`delineated in this Declaration and in the accompanying brief in support of Opposer’s motion,
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`Applicant has failed to cure the bulk of the deficiencies in its responses to Opposer’s First Set of
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`Interrogatories, First Set of Requests for Production of Documents and Things, and First Set of
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`Requests for Admission. Despite repeated requests, Applicant also has failed to provide
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`sufficient explanation for this failure to cure, despite assurances - including after the discovery
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`period ended — that information would be forthcoming.
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`

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`
`
`A.
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`Background
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`3. On October 30, 2001, Applicant filed an intent-to-use application with the U.S. Patent
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`& Trademark Office, Serial. No. 76/332,326, to register the TARZAN mark for “mechanically
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`elevated off-shore platforms for use in the exploration and production of petroleum and
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`minerals” in International Class 7 (“the Application”).
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`4. On May 8, 2002, Opposer, which owns all trademarks and existing copyrights for the
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`TARZAN character, and federal registrations of the TARZAN mark for a variety of goods and
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`services, filed a Notice of Opposition to the Application. In this Notice, Opposer alleged, based
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`on its extensive rights in its famous TARZAN mark and character, its extensive licensing of the
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`TARZAN character and under the TARZAN mark, and its numerous federal registrations for the
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`TARZAN mark, that Applicant’s registration of the applied-for mark is likely to cause confusion
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`with, and is likely to dilute, its famous TARZAN mark.
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`5. On March 10, 2003, Applicant filed its Answer, which, inter alia, admitted that
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`Applicant was aware of Opposer’s mark when it filed its application, and denied that Opposer’s
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`TARZAN mark was famous or well-known.
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`6. On January 27, 2003, the Board issued its initial scheduling order. That scheduling
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`order has been altered by consent of both parties several times. Under the current scheduling
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`order, discovery, which originally opened on February 16, 2003, closed on October 15, 2003.
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`B.
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`Applicant’s Failure to Respond Fully to Opposer’s Reguests
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`7. On March 28, 2003 our firm served a copy of Opposer’s first set of document
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`requests on counsel for Applicant. A true and correct copy of this first set of requests is attached
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`hereto as Exhibit 1.
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`

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`counsel for Applicant. A true and correct copy ofthis first set ofinterrogatories is attached
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`hereto as Exhibit 4.
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`Applicant’s deficiencies on a request-by-request basis, but instead merely expressed general
`reservations regarding the breadth ofcertain ofOpposer’s requests. (Ex. 5 at 2.) Applicant’s
`counsel suggested that its upcoming document production would “provide .
`.
`. more
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`

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`
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`information,” and stated that “if afier receiving these materials you still feel that you are entitled
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`to more information and documents after receiving our production, then I think we should
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`discuss those issues and your requests in more detail.” (Id. at 2.)
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`12. Applicant also served its written answers and objections to Opposer’s First Set of
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`Interrogatories on counsel for Opposer on July 2, 2003. A true and correct copy of Applicant’s
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`responses to these requests is attached hereto as Exhibit 6. These answers were deficient in
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`many respects, including, inter alia, by their failure to sufficiently describe App1icant’s use to
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`date of the TARZAN mark, to explain how the TARZAN mark was selected, to explain what
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`sort of trademark search was conducted prior to Applicant’s choice of the TARZAN mark, and to
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`provide information regarding the quality and safety of the product on which Applicant intends
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`to use the TARZAN mark, or similar or related products. (See Ex. 6.)
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`13. On July 16, 2003, I sent another letter to Applicant’s counsel. A true and correct
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`copy of this letter is attached hereto as Exhibit 7. This letter, inter alia, repeated Opposer‘s
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`concerns about deficiencies in App1icant’s document production, explained why Opposer
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`believed the documents it had requested were relevant and appropriate, and insisted that
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`Applicant address these deficiencies or be subject to a motion to compel. It also noted
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`deficiencies in Applicant’s interrogatory answers, explaining in detail, request by request, why
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`Opposer’s interrogatories were relevant and appropriate, and insisting that Applicant produce
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`proper answers to these requests.
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`14. On August 1, 2003, I sent a follow-up letter to Applicant’s counsel that, inter alia,
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`ded the first 770 pages of Opposer’s non-confidential document production, and noted that
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`provi
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`we had not yet received a response to my letter of July 16, 2003. A true and correct copy of this
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`letter is attached hereto as Exhibit 8.
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`

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`
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`15. On August 7, 2003, Applicant’s counsel sent a letter stating that he had been out of
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`the office but would “try to respond to your letters early next week.” A true and correct copy of
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`this letter is attached hereto as Exhibit 9.
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`16. On August 7, 2003, I sent a follow-up letter to Applicant’s counsel asking for
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`responses to my July 16, 2003 and August 1, 2003 letters, and requesting that Applicant begin its
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`document production. A true and correct copy of this letter is attached hereto as Exhibit 10.
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`17. On August 11, 2003 I served a copy of Opposer’s requests for admission on counsel
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`for Applicant. A true and correct copy of these requests is attached hereto as Exhibit 11.
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`18. On August 12, 2003 Applicant’s counsel sent a letter responding to 0pposer’s July
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`16, 2003 letter. A true and correct copy of this letter (without its attached draft protective order)
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`is attached hereto as Exhibit 12. This letter alleged that certain of Opposer's document requests
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`were overbroad and irrelevant, but did not expand upon App1icant’s objections as stated in their
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`July 2, 2003 letter. Applicant’s August 12, 2003 letter also responded to some, but not all, of
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`Opposer’s concerns regarding deficiencies in Applicant’s interrogatory answers, and erroneously
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`stated, e.g., that trademark searches are “privileged, whether or not performed by an attorney.”
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`(Ex. 12 at 2.) Applicant’s counsel repeatedly assured Opposer that ‘‘I believe that the documents
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`LeTourneau plans to produce under the protective order should resolve your questions and
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`concerns .
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`.
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`or that “many, if not all, of the concerns you have expressed will be resolved when
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`the parties are able to exchange and review the other’s documents. .
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`. .” (Id. at 3, 4.)
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`19. On August 26, 2003, Applicant finally produced the beginning of its document
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`production. This production also included documents produced by its parent company Rowan
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`Companies, Inc. (which were not designated separately) in response to a subpoena by Opposer.
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`Applicant’s production, which consisted of less than 250 pages of non-confidential documents,
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`

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`
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`failed to address the vast majority of Opposer’s document requests. More than 90 pages of this
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`production were simply the publicly-available March 27, 2003 10-K for Rowan Companies, Inc.
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`20. On August 27, 2003, before receiving Applicant’s initial document production, I
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`wrote another letter to Applicant’s counsel noting, inter alia, that, as per the assurances of
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`App1icant’s counsel in his August 12, 2003 letter, Opposer was willing to wait to receive
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`Applicant’s document production before once again addressing Applicant’s outstanding
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`discovery deficiencies. A true and correct copy of this letter is attached hereto as Exhibit 13.
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`21. The protective order governing the production of confidential documents in this
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`action was filed with the Board September 12, 2003.
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`22. Applicant served its written answers and objections to Opposer’s requests for
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`admission on counsel for Opposer on September 15, 2003. A true and correct copy of
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`App1icant’s responses is attached hereto as Exhibit 14. Once again, these responses were
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`deficient in many respects, including, inter alia, a flat refusal to answer whether Applicant had
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`conducted one or more trademark searches or investigations of the TARZAN mark before
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`applying to register that mark, and many other requests that were only answered partially at best.
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`23. On September 24, 2003, I wrote a letter to Applicant noting the deficiencies in
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`Applicant's answers to Opposer’s requests for admission, explaining in detail, request by
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`request, why Opposer’s requests for admission were relevant and appropriate, and insisting that
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`Applicant produce answers to these requests. A true and correct copy of this letter is attached
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`hereto as Exhibit 15. Applicant has not responded to this letter to date.
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`24. On September 24, 2003, as agreed by the parties, both parties finally produced their
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`supplemental discovery productions. Opposer produced more than two hundred additional pages
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`of documents, which included both confidential and non-confidential documents. Applicant’s
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`

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`
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`production, which we received the afiemoon of September 29, consisted of less than seventy
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`pages of confidential documents, the vast majority of which were contracts for the construction
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`of Applicant’s oil drilling platforms to be sold under the TARZAN mark. Despite Applicant’s
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`prior assurances (see, e.g., Ex. 12 at 4), upon review these documents did not resolve, or even
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`address, Opposer's concerns regarding App1icant’s outstanding discovery deficiencies.
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`25. I was out of the office from October 2 to October 6. Given Applicant’s outstanding
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`discovery deficiencies and its repeated failure to remedy these deficiencies, on October 10, 2003
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`I once again sent a letter to Applicant’s counsel. A true and correct copy of this letter is attached
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`hereto as Exhibit 16. This letter noted Opposer’s repeated good-faith attempts to resolve its
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`concerns about Applicant’s deficiencies, and stated that if Applicant did not remedy these
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`deficiencies by October 20 we would move to compel “your outstanding responses to our client’s
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`interrogatories and document requests, and to determine the sufficiency of certain of your
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`responses to our client’s requests for admission.”
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`26. On October 20, 2003, Applicant’s counsel wrote me a letter in response to my letter
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`of October 10. A true and correct copy of this letter is attached hereto as Exhibit 17. This letter
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`stated that Applicant’s counsel had not received my letter of October 10 until Friday, October 17,
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`when he was out of the office, and that because he had a mediation scheduled for October 20 he
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`would not have the chance to prepare a detailed response to me on October 20. Applicant’s
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`counsel stated that he would “try to respond [to my October 10 letter] within the next few days.”
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`27. Accordingly, on October 20, 2003 I wrote a letter in response to App1icant’s letter. A
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`true and correct copy of this letter is attached hereto as Exhibit 18. This letter stated that,
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`because of his logistical issues, and as a courtesy, we would accommodate his schedule one last
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`time. This letter asked Applicant’s counsel to provide us with a substantive response by October
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`

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`
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`23, 2003 that either remedied the outstanding deficiencies detailed in Opposer’s earlier letters, or
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`explained how Applicant’s counsel intended to remedy these deficiencies by Tuesday, October
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`28. The letter noted that if Applicant’s counsel failed to do so, we would move to compel its
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`outstanding responses to Opposer’s interrogatories and document requests, and to determine the
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`sufficiency of certain of Applicant’s responses to Opposer’s requests for admission.
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`28. On the evening of October 22, 2003, after I had left for the evening, Applicant’s
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`counsel lefi me a phone message stating that he was preparing a response to our outstanding
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`discovery requests, but needed to consult with his client regarding any potential admissions and
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`the factual accuracy of his answers. Accordingly, on October 23, 2003, I called Applicant’s
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`counsel back to see if he would be able to provide us with the substantive response we had
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`requested by October 23. Applicant’s counsel stated that he hadn’t heard back from his client,
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`but requested that we extend our deadline one more day.
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`29. On October 24, 2003, after hearing nothing from App1icant’s counsel all day, I called
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`him in the late afternoon to see if he expected to send us the promised response. He said that he
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`had not heard back from his client, and did not expect to get us a response by the end of the day.
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`30. After the weekend, on October 27', 2003 I again called Applicant’s counsel to see if
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`he expected to get us the requested response that day. Applicant’s counsel returned my phone
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`call that evening, stating that he still had not heard back from his client. Applicant’s counsel has
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`not responded or provided any further information since that date.
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`31. Given the above, I certify that I have repeatedly conferred with Applicant’s counsel in
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`a good faith attempt to resolve the issues presented in this motion without court action, but have
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`been unable to reach agreement with Applicant on these issues. Despite Opposer’s efforts, and
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`Opposer’s repeated requests, Applicant has refused to cure most of its discovery deficiencies.
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`

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`Accordingly, Opposer files the present motion because it believes that further attempts to resolve
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`these discovery disputes will be entirely unproductive.
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`I declare under penalty of perjury under the laws of the State of New York that the
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`foregoing is true and correct.
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`Executed this 30th day of October, 2003 at New York, New York.
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`:
`
`Evan Gourvitz
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`l:\egourvi12\erb\Letoumeau\03I017-0109881-motion-decI.doc
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`

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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that true and correct copy of the DECLARATION OF EVAN
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`GOURVITZ IN SUPPORT OF OPPOSER’S MOTION TO COMPEL and EXHIBITS 1 — 18, was
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`served via express mail, on Applicant's attorney, Steven R. Borgman, Esq., Vinson & Elkins
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`L.L.P., 2300 First City Tower, 1001 Fannin Street, Houston, Texas 77002-6760, this 30th day of
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`October, 2003.
`
` Mario F. Ortiz
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`

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`
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`RECYCLEDRECYCLED
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`

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`
`
`IN. THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EDGAR RICE BURROUGHS, INC.,
`
`Opposer,
`
`V.
`
`Opposition No. 91 154731
`
`LETOURNEAU, 1NC.,
`
`Applicant.
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`OPPOSER’S FIRST REQUEST FOR PRODUCTION
`OF DOCUMENTS AND THINGS TO APPLICANT
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`Pursuant to Rule 2.l20(d) of the Trademark Rules of Practice and Rules 26 and 34 of the
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`Federal Rules of Civil Procedure, Opposer requests that Applicant respond to the document
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`requests within the time specified by the Federal Rules of Civil Procedure, subject to stipulation
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`between the parties, and produce the documents and things specified herein for inspection and
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`copying at the Offices of Opposer’s attorneys, Fross Zelnick Lehrman & Zissu PC at 866 United
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`Nations Plaza, New York, New York 10017, Attention: David Ehrlich, simultaneously
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`therewith or at another mutually agreed upon time and place.
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`DOCUMENT REQUESTS
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`1.
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`A copy of each piece of advertising and promotional material directed to the
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`public or to the trade in the United States concerning Applicants TARZAN drilling platform
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`(the “Product”) such as press releases, brochures, media ads, and annual or quarterly company
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`reports.
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`2.
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`All letters, e-mails or other communications with members of the trade in the
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`United States concerning the Product.
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`

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`
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`3.
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`For all industry trade shows attended by Applicant in the United States where the
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`Product was displayed in any way, a directory or other materials, that identify the show.
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`4.
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`Samples of each type of manufacturer’s plate, label or other indicia (such as a
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`photo of TARZAN painted on a drilling platform) that has been used or is proposed to be used
`by or on behalf of Applicant bearing the mark TARZAN in the United States in connection with
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`the Product.
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`5.
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`Documents sufficient to identify the United States customers or prospective
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`customers of Applicant to whom the Product has been or will be offered or sold, as-well as any
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`wholesalers and retailers that have sold the Product.
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`6.
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`7.
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`All invoices and purchase orders for sales of the Product.
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`All instruction manuals, data sheets, and other materials provided to purchasers of
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`the Product concerning its assembly or operation.
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`8.
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`All documents evidencing the date of first use of the mark TARZAN by
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`Applicant in the United States for the Product.
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`9.
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`All agreements relating or referring to the Product, including without limitation
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`distributorship and manufacturing agreements.
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`10.
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`Documents showing total sales of the Product since the Applicant's adoption and
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`first use of that mark TARZAN.
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`11.
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`Documents sufficient to show the geographical areas in the United States in which
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`the Product has been sold since Applicai1t’s adoption and first use of TARZAN.
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`12.
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`Documents sufficient to show the total advertising and promotional expenses
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`2
`
`

`
`
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`incurred by Applicant in connection with the Product in the United States since Applicant’s
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`adoption and first use of TARZAN.
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`13.
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`All trademark searches concerning the mark TARZAN.
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`14.
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`All documents concerning the adoption of the mark TARZAN by Applicant,
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`including documents relating to the selection and adoption of the mark, the reasons for its
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`selection and the date of the selection, documents identifying the individuals responsible for such
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`selection, and documents (including mock-ups) concerning the form of the mark (e.g., the logo).
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`15.
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`All documents concerning the meaning or desired image to be conveyed by
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`TARZAN as used in connection with the Product.
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`16.
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`Documents sufficient to show the channels of distribution through which the
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`Product has been, is currently being, and will be sold in the United States.
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`17.
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`All documents concerning market research (including all surveys, market studies,
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`consumer perception studies and consumer focus groups) concerning the mark TARZAN, and all
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`other documents concerning consumer recognition of (a) 0pposer’s products beating such mark,
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`and (b) Applicant’s products bearing such mark.
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`18.
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`All documents concerning third party use of TARZAN, marks similar to
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`TARZAN, or marks incorporating the term TARZAN.
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`19.
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`All documents concerning any application by Applicant to register TARZAN in
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`the United States Patent and Trademark Office, including, but not limited to correspondence with
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`the Patent and Trademark Office and other documents regarding Application Serial Number
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`76/332,326.
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`

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`
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`20.
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`All news media or trade journal stories referring to the Product.
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`21.
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`Documents referring to or otherwise concerning whether Applicant or any other
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`person or entity affiliated with Applicant has ever received mail deliveries, telephone calls, bills,
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`payments, invoices or other communications referring to or inquiring about Opposer, the jungle
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`' character TARZAN, Edgar Rice Burroughs, or showing actual confusion as to the source of
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`sponsorship, affiliation, or approval of the Product.
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`22.
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`All memos, reports, filings, with regulatory agencies, media articles and other
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`documents concerning quality problems or safety problems with the Product, accidents occurring
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`on or involving the Product or actual or alleged releases into the environment of oil or other
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`pollutants from or involving the Product.
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`23.
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`All memos, reports, filings, with regulatory agencies, media articles and other
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`documents concerning quality problems or safety problems with drilling platforms made by
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`Applicant under marks other than TARZAN, accidents occurring on or involving drilling
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`platforms made by Applicant under marks other than TARZAN or actual or alleged releases into
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`the environment of oil or other pollutants from or involving drilling platforms made by Applicant
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`under marks other than TARZAN.
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`24.
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`All news media or trade journal stories in App1icant’s files on accidents or oil
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`spills at offshore drilling rigs of all manufacturers.
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`25.
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`Applicant‘s insurance policies and correspondence with insurance companies
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`referring to the degree of risk or inherent level of danger in the operation of offshore drilling rigs
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`or Applicant’s possible liability for claims resulting from accidents involving such rigs.
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`

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`
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`26.
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`Representative samples of books, reports, media articles and trade journal stories
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`(from pro-exploration sources, neutral sources and environmental groups) commenting on the
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`risk of accidents or environmental damage from the operation of offshore drilling platforms.
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`27.
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`Representative documents, such as reports and visitor logs, showing the types of
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`persons who visit or work at offshore drilling rigs, such as drilling crew, support staff,
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`geologists, safety inspectors, government officials, Coast Guard, health care professionals, boat
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`crews, helicopter crews, and the like.
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`28.
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`Lawsuit complaints, reports, letters or other documents from regulatory agencies,
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`competitors, customers or other private parties, including watchdog groups, such as Texas PIRG,
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`accusing,Applicant of negligence, product liability torts or violation of environmental protection
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`laws or regulations.
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`29.
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`Documents indicating how each such complaint or accusation was resolved or
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`showing the current status of unresolved matters.
`
`Dated: New York, New York
`March 13 , 2003
`
`Respectfully submitted,
`
`FROSS ZELNICK LEHRMAN
`
`
`
`David Ehrlich
`
`Attorneys for Opposer
`866 United Nations Plaza
`New York, New York 10017
`
`(212) 813-5900
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing was served by prepaid, first-class mail upon
`Applicant's attorney, Steven R. Borgman, Esq., Vinson & Elkins LLP, 2300 First City Tower,
`1001 Fannin Street, Houston, Texas 77002-6760, this __ da 03.\
`
`
`
`
`avid Ehrlich
`
`\\UNP1\VOL2\F[RMDOCS\dchIl.ich\erb\030323-0109881-first set doc reqs-jj.doc
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`

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`

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`. '05/09/2noP15:'1s FAX .
`
`‘I
`
`IN ‘THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`OPPOSITION NO. 91 154731
`
`SERIAL NO. 76/332,326
`
`MARK: TARZAN
`
`EDGAR RICE BURROUGHS, INC, §
`§
`
`§ §
`
`§ §
`
`§ §
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`§
`§
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`OPPOSBT:
`
`V.
`
`LETOURNEAU, INC.
`
`Applicant.
`
`LET0 URNEA U, INC ‘S’ RESPONSE TO 0PPOSER’S
`FIRSTREQUEST FOR PRODUCTION
`
`Pursuant to Rule 2.120(d) of the Trademark Rules of Practice and Rules 26
`
`and 34 of the Federal Rules of Civil Procedure, LeTourneau, Inc. (“LeTourneau”),
`
`through undersigned counsel, responds to Opposer's First Requestfor Production,
`
`subject to the following general and specific objections.
`
`GENERAL OBJECTIONS
`
`LeTourneau’s commitment in this Response to search for and/or produce
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`any of the documents requested by the Opposer shall not be deemed an admission
`
`that such documents do in fact exist.
`
`LeTor.maeau, Inc. '5' Resyonse To Oppaserfis
`First Request For Production
`Page 1 of24
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`

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`. cs/as/2oo3.15:14 mu: 9
`9
`VE L1-P .
`'
`9
`*9”.
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`LeTourneau’s commitment to produce any documents requested by Opposer
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`shall not be deemed in any way an admission that any facts or allegations by
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`Opposer in this lawsuit are true or that LeTou:rneau concedes the imp0I1'.ance of any
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`Requests or that such Requests are fiee from misleading statements, inaccurate
`
`assumptions, or mischaracterizations.
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`'
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`LeTourneau objects to each and every Request for Production to the extent
`that such Request would require information protected and exempted from
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`discovery by any applicable privilege.
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`In all instances, LeTourneau intends to
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`preserve and claim the attorney/client privilege, the work product immunity, the
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`witness statement privilege, and the consulting expert privilege, where applicable.
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`LeTourneau objects to each and every Request for Production to the extent
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`that it is vague, unduly burdensome and/or overly broad and impose obligations
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`and burdens on LeToun1eau beyond the duties imposed by the Federal Rules of
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`Civil Procedure. Among other things, LeTourneau objects to each Request to the
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`extent it seeks to require LeTourneau to produce documents not in its custody,
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`possession or control, such as documents in the possession, custody, or control of
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`others.
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`LeTourneau objects to each and every Request for Production to the extent
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`that such inquiry is not relevant to the subject matter of this Proceeding and is not
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`LeTaul'neau', Inc. "5 Raponse Ta 0ppaSe:l"S
`First Request For Production
`Page 2 of24
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`‘Q35
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`05/U9/200915 2 14 FAX
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`.
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`VE LLP .
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`.
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`reasonably calculated to lead to the discovery of admissible evidence. LeTourneau
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`also objects to the Requests to the extent they are unlimited in scope or time.
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`LeTourneau objects to each and every Request for Production to the extent it
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`seeks to impose on LeTourneau an obligation not required under the Federal Rules
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`of Civil Procedure.
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`LeTourneau objects to each and every Request for Production to the extent it
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`seeks LeTourneau’s
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`confidential
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`and/or proprietary technical or business
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`documents and information before an appropriate protective order is entered in this
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`Proceeding.
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`LeTourneau has made reasonable inquiries and investigations concerning
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`information currently in LeTourne'au’s possession, and LeTotn'neau’s responses are
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`based on information available to LeTourneau at the present time. Because
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`discovery is continuing, LeTourneau provides its responses without prejudice to its
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`right to amend or supplement responses based upon facts discovered during the
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`course of this Proceeding.
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`These Objections are incorporated by reference into each individual
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`response below.
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`LeTam-neau, Inc. is Response To 0pposer’s
`First Reques! For Production
`Page 3 of24
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`05/09/2oo?15:14 FAX .
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`VE LLP .
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`‘-41.5
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`REQUESTS FOR PRODUCTION
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`REQUEST FOR PRODUCTION NO. 1:
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`A copy of each piece of advertising and promotional material directed to the
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`public or to the trade in the United States concerning Applicant’s TARZAN
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`drilling platform (the “Product”) such as press releases, brochures, media ads, and
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`annual or quarterly company reports.
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`RESPONSE:
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`LeTou1-neau incorporates herein the general objections stated above. Subject
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`to such objections, LeTourneau responds to this Request as follows:
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`If any non-
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`privileged, relevant documents covered by this Request (to the extent not objected
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`to) exist and are in the possession, custody, or control of LeTourneau, and they can
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`- be found, then they will be produced.
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`REQUEST FOR PRODUCTION NO. 2:
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`All letters, e-mails or other communications with members of the trade in
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`the United States concerning the Product.
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`RESPONSE:
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`LeTourneau incorporates herein the general objections
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`stated above.
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`LeTou1'neau further objects to this Request as vague and unclear, as well as overly
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`broad and unduly burdensome, as it purports to require LeTourneau to search for
`LeTam-mean. Inc. ’s Response To 0pposer’s
`First Request For Production
`Page 4 af24
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`O
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`VELLPO
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`documents that are not relevant
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`to the issues in dispute in this Proceeding.
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`LeTourneau further objects to this Request as seeking confidential and proprietary
`information. Subject to such objections, LeTournea.u responds to this Request as
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`follows: If any non-privileged, relevant documents covered by this Request (to the
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`extent not objected to) exist and are in the possession, custody, or control of
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`LeTourneau, and they can be found, then they will be produced, subject to an
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`appropriate protective order.
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`REQUEST FOR PRODUCTION NO. 3:
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`For all
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`industry trade shows attended by Applicant in the United States
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`Where the Product was displayed in any way, a directory or other materials, that
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`identify the show.
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`RESPONSE:
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`LeTourneau incorporates herein the general objections stated above. Subject
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`to such objections, LeTourneau responds to this Request as follows: If any non-
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`privileged, relevant documents covered by this Request (to the extent not objected
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`to) exist and are in the possession, custody, or control of LeTournean, and they can
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`be found, then they will be produced.
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`LeToummu, Inc. '5 Response To 0ppa.ser’s
`First Request For Production
`Page 5 of24
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`o5/09/2oo:s.15:15 FAX .
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`VE LLP .
`.
`.
`0Q
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`REQUEST FOR PRODUCTION NO. 4:
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`Samples of each type of n1anufacturer’s plate, label or other indicia (such as
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`a photo of TARZAN painted on a drilling platform) that has been used or is
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`proposed to be used by or on behalf of Applicant bearing the mark TARZAN in the
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`United States in connection with the Product.
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`RESPONSE:
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`LeTourneau incorporates herein the general objections
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`stated above.
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`LeTourneau understands this Request to seek samples of use of the mark on the
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`“Product.” To the extent intended otherwise, LcTourneau objects to this Request
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`as vague and unclear. Subject to such objections, LeTourneau responds to this
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`Request as follows:
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`If any non-privileged, relevant documents covered by this
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`Request (to the extent not objected to) exist and are in the possession, custody, or
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`control of LeTourneau, and they can be found, then they will be produced.
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`REQUEST FOR PRODUCTION NO. 5:
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`Documents sufficient to identify the United States customers or prospective
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`customers of Applicant to whom the Product has been or will be offered or sold, as
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`well as any Wholesalers and retailers that have sold the Product.
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`Lefbumeau, Inc. '5' Response To 0ppaser’s
`First Request For Production
`Page 6 of24
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`9
`VELLP 9
`9
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`12-109
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`RESPONSE:
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`LeTourneau incorporates herein the general objections stated above.
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`LeTourneau further objects to this Request in that it is vague, overly broad and
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`unduly burdensome and not reasonably calculated to lead to the discovery of
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`admissible evidence. Moreover, such Request purports to require LeTourneau to
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`produce documents
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`containing confidential and proprietary information of
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`LeTourneau. Subject to such objections, LeTourneau responds to the Request as
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`follows: If any non-privileged, relevant documents covered by this Request (to the
`
`extent not objected to) exist and are in the possession, custody, or control of
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`LeTourneau, and they can be found, then they will be produced, subject to an
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`appropriate protective order.
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`REQUEST FOR PRODUCTION NO. 6:
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`All invoices and purchase orders for sales of the Product.
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`RESPONSE:
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`LeToumeau incorporates herein the general objections
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`stated above.
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`LeToumeau further objects to this Request to the extent it purports to require
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`LeTou1-neau to produce documents containing confidential and proprietary
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`information of LeTourneau. Subject to such objections, LeTourneau responds to
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`LeTom-naau, Inc.'.s Response To 0p_paser’s
`First Request For Production
`Page 7 of24
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`. as/09/2cc3.15:1s FAX 0
`C
`vs LLP 0
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`1530”
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`the Request as follows: If any non-privileged, relevant documents covered by this
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`_ Request (to the extent not objected to) exist and are in the possession, custody, or
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`control ofLeTou1neau, and they can be found, then they will be produced, subject
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`to an appropriate protective order.
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`REQUEST FOR PRODUCTION N0. 7:
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`All
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`instruction manuals, data sheets, and other materials provided to
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`purchasers of the Product concerning its assembly or operation.
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`RESPONSE:
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`LeT-our-neau incorporates herein the general objections
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`stated above.
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`LeTourneau further objects to this Request in that it is vague, overly broad and
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`unduly burdensome and not reasonably calculated to lead to the discovery of
`
`admissible evidence. Moreover, such Request purports to require LeToutneau to
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`produce documents
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`containing confidential and proprietary information of
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`LeTourneau. Subject to such objections, LeTourneau responds to" the Request as
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`follows: LeTourneau will produce a Rig Location Guide subject to an appropriate
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`protective order.
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`LeTn:.u'neau, Inc. '5 Response To 0_pposer’.s'
`First Request For Production
`Page 8 of25
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`05:09/2ou,15:15 FAX .
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`vs LL? .
`9
`9
`Q1
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`REQUEST FOR PRODUCTION NO. 8:
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`All documents evidencing the date of first use in the mark TARZ