DEBEVOISE 5. PLIMPTON
`
`November 26, 2003
`
`BY EXPRESS MAIL
`
`Hon. Commissioner for Trademarks
`BOX TTAB NO FEE
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`919m.dAm...e
`New York, NY 10022
`Tel 212 909 6000
`Fax 212 909 6836
`www.dcbcvoisc.com
`
`|l||lI||
`
`V Z
`
`I
`
`1 1-26-2003
`
`us. PaunuTMo1'ci1'M mu Raptor. 022
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`OAKLAND RAIDERS and NFL PROPERTIES LLC V. ALAN SLEADD
`
`Opposition No. 91,156,313
`Opposers’ Motion To Compel Discovery
`And For a 90 Day Extension Of The Discovery Period
`
`Dear Madam:
`
`Enclosed for filing are the original and two copies of the following documents
`submitted by Opposers’, Oakland Raiders and NFL Properties LLC, in connection with
`the above—referenced opposition:
`
`l.
`
`2.
`
`3.
`
`4.
`
`Opposers’ Motion To Compel Discovery And For a 90 Day Extension Of The
`Discovery Period.
`
`Memorandum of Law In Support of Opposer's Motion to Compel.
`
`Declaration of Wendy Lang Kaplowitz.
`
`Certificate of Service.
`
`Thank you for your attention to this matter. If you have any questions, please do
`not hesitate to call me at (212) 909-1033.
`
`Very truly yours,
`
`illllua c: S
`
` Enclosures
`
`Halina E. Siemaszko
`Paralegal
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`f__ #__ .__
`
`--
`
`nmuinm
`
`|l
`11262003
`'
`'
`U '54 PIflnt& TMOfI:J'|'M Mlil Hop! 0!. F22
`
`Opposition No. 91,156,313
`
`X
`:
`:
`_
`
`: :
`
`:
`
`x
`
`OAKLAND RAIDERS and
`NFL PROPERTIES LLC,
`
`v.
`
`ALAN SLEADD,
`
`Opposers,
`
`Applicant.
`
`OPPOSERS’ MOTION FOR SANCTIONS OR,
`
`ALTERNATIVELY, TO COMPEL DISCOVERY AND
`FOR A 90 DAY EXTENSION OF THE DISCOVERY PERIOD
`
`Pursuant to Rule 37 of the Federal Rules of Civil Procedure (“FRCP”), 37 C.F.R.
`
`§527.01(b) and Section 527.0l(b) of the Trademark Trial & Appeal Board Manual of Procedure
`
`(“TBMP”), Opposers Oakland Raiders and NFL Properties respectfully move the Board for the
`
`entry of sanctions against Applicant, Alan Sleadd. Alternatively, pursuant to FRCP Rules 26 and
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`37, 37 C.F.R. § 2.120(e), and TBMP Section 523, Opposers respectfully move the Board for an
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`order compelling Mr. Sleadd to produce all documents and information in response to Opposer’s
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`First Request for the Production of Documents and Things and First Set of Interrogatories, and a
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`90 day extension of the period in which Opposers may complete discovery.
`
`Pursuant to 37 C.F.R. § 2.120(e), Opposers have attempted in good faith to resolve the
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`outstanding discovery dispute between the parties, as attested to in the accompanying declaration
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`2162014Bv1
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`
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`of Wendy Lang Kaplowitz, dated November 26, 2003. The precise issues to be resolved are set
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`forth fully in the accompanying memorandum of law in support of Opposer’s motion.
`
`Respectfully submitted,
`
`Bruce P. Kel er
`
`Wendy Lang Kaplowitz
`Maria Lin
`
`DEBEVOISE & PLIMPTON
`
`919 Third Avenue
`
`New York, NY 10022
`
`(212) 909-6000
`
`Attorneys for Opposers
`Oakland Raiders and
`
`NFL Properties LLC
`
`(D 80 I C’ 5
`K.
`. ;'::5 mil‘ mailing label No.51’-5
`D;.'.: r:fD:'.:::Et NOVEMBER» 26
`-—-—~——a_20£.§_
`i hm-‘-‘ll Certify H1’!
`this paper or fee is b ’
`-...-._
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`A
`. “
`_
`elng
`C_~.»7..-:l mm m. Umtcd States Postal SGNICE “Express
`.'... __.’_:
`G.'.'l:_:- to Addressee“ service under 37 CPR no
`
`-230 above and is addressed to the
`
`fl’
`»
` ~~ " :0
`Ar: ism‘ Vanni: zilcérqbgsjgademarks. 2900 Crystal Drive.
`%Ll i
`
`
`Dated: November 26, 2003
`
`21620148v1
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`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`OAKLAND RAIDERS and
`
`NFL PROPERTIES LLC,
`
`Opposers,
`
`ALAN SLEADD,
`
`Applicant.
`
`x
`
`Opposition No. 91,156,313
`
`MEMORANDUM OF LAW IN SUPPORT OF OPPOSERS’
`
`MOTION FOR SANCTIONS OR, ALTERNATIVELY, TO COMPEL
`DISCOVERY AND FOR A 90 DAY EXTENSION OF THE DISCOVERY PERIOD
`
`Opposers Oakland Raiders (the “Raiders”) and NFL Properties LLC (“NFL Properties”)
`
`respectfully submit this memorandum of law in support of their motion for sanctions pursuant to
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`37 C.F.R. § 2.120(g)(2), Fed. R. Civ. P. 37 and Section 527.0l(b) of the Trademark Trial &
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`Appeal Board Manual of Procedure (“TBMP”) or, alternatively, to compel discovery and for a 90
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`day extension of the period in which Opposers may complete discovery pursuant to 37 C.F.R. §
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`2.120(e), Fed. R. Civ. P. 26 and 37, and Section 523 ofthe TBMP.
`
`PRELINIINARY STATEMENT
`
`Sports fans instantly recognize the various trademarks used to identify the teams that play
`
`in the National Football League (“NFL”), including the Oakland Raiders. These marks include
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`not only the official team names and logos, but also other words, slogans or phrases that have
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`21619241v2
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`become associated with the teams. One such mark is REAL MEN WEAR BLACK -- a reference
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`to the Raiders’ black uniforms. The Raiders have used the REAL MEN WEAR BLACK mark
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`for over twenty years and own two pending trademark applications for the mark (Serial Nos.
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`76/357,884 and 75/928,898), for use in connection with professional football games and related
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`merchandise and memorabilia.
`
`On October 22, 2001, Applicant Alan Sleadd applied to register the mark REAL MEN
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`GO DEEP! in connection with “paper goods and printed matter, namely, bumper stickers, decals,
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`rub-on tattoos, paper banners, posters, photographs, football game catalogs, and flyers relating to
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`the sport of football in lntemational Class 16” and “clothing and headgear, namely, t-shirts, sport
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`shirts, polo shirts, tank tops, shorts, sweatpants, jackets, caps, hats and bandannas in International
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`Class 25.”
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`Applicant’s mark is an obvious and direct reference to the REAL MEN WEAR BLACK
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`mark; it combines the phrase REAL MEN with an allusion to the Raiders well-known and long-
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`standing tradition of throwing deep, long football passes. That Mr. Sleadd is attempting to
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`capitalize on Opposers’ goodwill in the REAL MEN WEAR BLACK mark is demonstrated by
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`the specimens of use he attached to his trademark application. See Exhibit A.' Mr. Sleadd’s
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`REAL MEN GO DEEP! goods (1) feature an altered version of the Raiders’ famous shield logo;
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`(2) were sold at Mr. Sleadd’s websites, www.raider1nerchandise.com and
`
`' All exhibits are attached to the accompanying Declaration of Wendy Lang Kaplowitz, dated
`November 26, 2003. The Kaplowitz Declaration also attests to Opposers’ good faith effort to
`resolve the pending discovery dispute pursuant to 37 C.F.R. § 2.l20(e)(1).
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`21619241v2
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`www.raidersmerchandise.com; and (3) were targeted to “Raiders Fans on the Emotional Edge.”
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`See id. Even before Mr. Sleadd filed his trademark application, the Raiders and NFL Properties
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`had objected to his unauthorized use of the Raiders marks. See Exhibit B. Mr. Sleadd agreed, by
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`Settlement Agreement dated July 19, 2002, not to sell any merchandise bearing NFL or Raiders
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`trademarks, or any colorable imitation thereof, including the merchandise depicted in his
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`trademark application. See Exhibit C. Nonetheless, Mr. Sleadd continues to pursue registration
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`of the REAL MEN GO DEEP! trademark.
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`Mr. Sleadd is representing himself in this opposition, without the benefit of counsel.
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`That, however, does not excuse his refusal to respond in any way to Opposers’ discovery
`
`requests. Nor do his claims of financial difficulty relieve Mr. Sleadd of his obligations to
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`participate in the discovery process.
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`STATEMENT OF RELEVANT FACTS
`
`In its May 14, 2003 notice, the Trademark Trial & Appeal Board (“TTAB” or “the
`
`Board”) set the discovery period to close on November 30, 2003, Opposers’ testimony period to
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`close on February 28, 2004, Mr. Sleadd’s testimony period to close on April 28, 2004, and
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`Opposers’ rebuttal testimony period to close on June 12, 2004. See Exhibit D.2
`
`2 Having never received a copy of Mr. Sleadd’s Answer because it was apparently served on the
`wrong counsel, Opposers filed a Motion for Default on September 9, 2003. The Board denied
`Opposers’ Motion for Default on September 23, 2003 on the grounds that Mr. Sleadd’s Answer
`had been timely filed but the Board expressly acknowledged that Opposers had never received
`Mr. Sleadd’s Answer. See Exhibit E (Order issued by Linda Skoro, TTAB, dated September 23,
`2003)
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`21619241v2
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`Immediately upon receipt of the Board’s Order enclosing a copy of Mr. Sleadd’s Answer,
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`Opposers aggressively pursued discovery during the remaining two months of the discovery
`
`period. Opposers served their First Request for the Production of Documents and Things and
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`First Set of Interrogatories on October 3, 2003. See Exhibits F-G. Opposers also served Mr.
`
`Sleadd with a Notice of Deposition on October 20, 2003, setting a deposition date of November
`
`21, 2003. See Exhibit H. Mr. Sleadd’s responses to Opposers’ document requests and
`
`interrogatories were due on November 7, 2003. To date, no responses have been served.
`
`Opposers’ wrote to Mr. Sleadd on November 13, 2003 requesting that he respond to the
`
`outstanding discovery requests by November 17, 2003. See Exhibit 1. The letter was sent by
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`Express Mail and facsimile. Kaplowitz Dec. 1] 11. When the facsimile transmission was
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`unsuccessful, Opposers’ emailed a copy of the letter to Mr. Sleadd at
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`info@raiderrnerchandise.com.
`
`Id. Mr. Sleadd confirmed receipt of the email by return message
`
`that same day. See Exhibit J. Having received no substantive response either to Opposers’
`
`November 13 letter or to the outstanding discovery requests, Opposers wrote again to Mr. Sleadd
`
`on November 17, 2003, postponing his previously noticed deposition pending disposition of this
`
`motion to compel. See Exhibit K. Mr. Sleadd responded by email on November 20, 2003,
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`claiming the “financial” inability to produce any documents or information in connection with
`
`this action. See Exhibit L.
`
`In light of Mr. S1eadd’s explicit refilsal to participate in the discovery
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`process, Opposers now move for sanctions pursuant to 37 C.F.R. 2.120(g)(2), or alternatively, to
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`21619241v2
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`compel Mr. Sleadd’s production of documents and information in compliance with the rules of
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`discovery.
`
`ARGUMENT
`
`I.
`
`Mr. Sleadd’s Express Refusal To Participate In The
`Discovery Process Is Grounds For Default Judgment.
`
`Mr. Sleadd has (1) failed to respond in any way to Opposer’s discovery requests, and (2)
`
`expressly stated that no discovery response will be made. Such an express refusal to participate
`
`in the discovery process is condemned by 37 C.F.R. § 2.120(g)(2) and justifies the imposition of
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`sanctions, including entry of judgment sustaining the opposition. 37 C.F.R. § 2.l20(g)(2);
`
`Section 52'/'.01(b) of the TBMP. Cf MHWLtd. v. Simex, Aussenhandelsgesellschaft Savelsberg
`
`KG, 59 U.S.P.Q.2d 1477, 1478-79 (T.T.A.B. 2000) (granting sanctions in the form of entry of
`
`judgment against disobedient party). Based on Mr. Sleadd’s explanation for his refusal -- that he
`
`does not have the “financial ability” even to collect relevant documents -- default judgment is
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`particularly appropriate. If Mr. Sleadd truly cannot afford to participate in this early stage of the
`
`opposition proceeding, he plainly will be unable to afford the later stages, including the
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`introduction of testimony and written submissions.
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`More importantly, Mr. Sleadd’s refusal to produce any documents and information is
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`extraordinarily prejudicial to Opposers’ ability to develop the evidence necessary to prove their
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`trademark infringement and dilution claims. The Board should therefore issue sanctions in the
`
`form ofjudgment in favor of Opposers pursuant to 37 C.F.R. § 2.l20(g)(2).
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`21619241v2
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`
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`II.
`
`Opposers’ Motion to Compel Should Be Granted
`Because The Information Sought Is Likely To
`Lead To The Discovegy Of Relevant Evidence.
`
`Discovery before the Trademark Trial & Appeal Board incorporates the “liberal .
`
`.
`
`.
`
`procedures provided under the Federal Rules of Civil Procedure” and parties are expected to
`
`“seriously endeavor to cooperate with one another in the discovery process.” Sentrol, Inc. v.
`
`Sentex Sys., Inc, 231 U.S.P.Q. 666, 667 (T.T.A.B. 1986). The Federal Rules of Civil Procedure
`
`allow any party to “obtain discovery regarding any matter, not privileged, that is relevant to the
`
`claim or defense of any party” and “[r]elevant information need not be admissible at the trial if
`
`the discovery appears reasonably calculated to lead to the discovery of admissible evidence.”
`
`Fed. R. Civ. P. 26(b)(l). If a party fails to comply with the discovery requests of the opposing
`
`party, the party seeking discovery may, after making a good faith effort to resolve the dispute,
`
`apply to the Board for an order to compel discovery. 37 C.F.R. § 2.l20(e), Fed. R. Civ. P. 3'/'(a),
`
`TBMP § 523. Opposers’ November 13 and 17 letters to Mr. Sleadd satisfy the good faith
`
`requirement. Envirotech Corp. v. Compagnie Des Lampes, 219 U.S.P.Q. 448, 450 (T.T.A.B.
`
`1979) (single telephone call to opponent satisfies good faith effort requirement).
`
`The documents and information requested by Opposers are directly relevant to the claims
`
`at issue in this proceeding. Opposers oppose Mr. Sleadd’s trademark registration of REAL MEN
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`GO DEEP! out of concern that REAL MEN GO DEEP! is likely to cause confusion with or
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`dilute Opposers’ REAL MEN WEAR BLACK mark. In evaluating whether REAL MEN GO
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`DEEP! is likely to cause confusion with REAL MEN WEAR BLACK, the Board will consider
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`21619241v2
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`the factors set forth in In re E1. DuPont de Nemours & C0., 476 F.2d 1357, 1361 (C.C.P.A.
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`1973). The Board will consider many of the same factors in its determination of whether REAL
`
`MEN GO DEEP! is likely to dilute REAL MEN WEAR BLACK. The NASDAQ Stock Market,
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`Inc. v. Antartica, S.R.L., 2003 WL 22021943, *23 (T.T.A.B. 2003) (similarity of the marks and
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`reaction of consumers ofjunior and senior users’ products are relevant to a finding of dilution);
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`Toro Co. v. ToroHead Inc., 61 U.S.P_Q.2d 1164, 1183 (T.T.A.B. 2001) (same).
`
`The documents and information requested that relate to those factors include:
`
`- Documents and information relating to the selection, design, creation of and
`application to register the REAL MEN GO DEEP! mark or any variation thereof,
`including any trademark Search reports and investigation reports (Document Request
`Nos. 2, 14-15; Interrogatory Nos. 1-3);
`
`0 Documents and information relating to all uses of the REAL MEN GO DEEP! mark
`in connection with any goods or services (including representative specimens of all
`goods bearing the mark), and any sales or revenues derived from such uses
`(Document Request Nos. 3-4, 6-9, 11-12; Interrogatory Nos. 4-5);
`
`0 Documents and information relating to all past, current and prospective advertising,
`marketing and/or promotions of the REAL MEN GO DEEP! mark (Document
`Request Nos. 1, 5, 7-8, 10-11; Interrogatory No. 4);
`
`0 Documents and information relating to consumers actual or potential reactions to the
`REAL MEN GO DEEP! mark or Mr. Sleadd’s goods and services (Document
`Request Nos. 13, 15-17); and
`
`0 Documents and information relating to the affirmative defenses asserted in Mr.
`Sleadd’s Answer, dated June 25, 2003 (Document Request Nos. 18-20; Interrogatory
`Nos. 6, 14)?
`
`3 This list of documents and things not produced is presented in compliance with 37 C.F.R. §
`2.l20(e)(l).
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`21619241V2
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`The categories of information covered by the foregoing requests are well-recognized as
`
`relevant to the evaluation of the similarity of the marks as they will be used and perceived in the
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`marketplace. See, e.g., Goodyear Tire & Rubber Co. v. Tyrco Indus, 186 U.S.P.Q. 207, 208
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`(T.T.A.B. 1975) (“documents which relate to the evolution, selection .
`
`.
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`. clearance and/or
`
`evaluation of” a mark and opinions concerning trademark validity and identities of persons
`
`supplying such opinions are relevant and must be provided in response to 0pposer’s discovery
`
`request); Johnson & Johnson v. Diamond Medical, Inc., 183 U.S.P.Q. 615, 617 (T.T.A.B. 1974)
`
`(labels, advertising and other promotional materials are “clearly not violative of any privilege or
`
`confidential relationship and are .
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`.
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`. proper matter for discovery”).
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`The requested documents and information are also within the scope of appropfiate
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`discovery so far as they relate to Mr. Sleadd’s REAL MEN GO DEEP! goods, his potential
`
`customers, his marketing practices and his channels of trade. See, e.g., Johnston Pump/General
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`Valve Inc. v. Chromalloy American Corp, 10 U.S.P.Q.2d 1671, 1674-76 (T.T.A.B. 1988)
`
`(discovery requests related to specific goods on which mark is used, intent to expand use of mark
`
`to new products, salesmen and dealer information are proper and relevant); The .}’.B. Williams
`
`Co., Inc. v. Pepsodent G.m.b.H., 188 U.S.P.Q. 577, 580 n.9 (T.T.A.B. 1975) (“a party must
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`respond to [a discovery request] concerning the classes of customers who purchase its products
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`sold under the mark”).
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`The Board also considers “[a]ny other established fact probative of the effect of use.”
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`DuPont, 476 F.2d at 1361. Documents and information relating to consumers’ reactions to the
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`21619241v2
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`REAL MEN GO DEEP! mark are therefore clearly relevant to the Board’s determination. Mobil
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`Oil Corp. v. Pegasus Petroleum Corp, 818 F.2d 254, 259 (2d Cir. 1987) (survey evidence of
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`actual C0l’1fiJ.SlOI‘| properly admitted and relevant to finding of likelihood of confusion).
`
`Moreover, Mr. Sleadd’s bad faith or intent in adopting his mark is probative of whether his use
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`will infringe upon Opposers’ trademark rights. Mobil Oil Corp, 818 F.2d at 258 (that party did
`
`not innocently select its mark “gives rise to a presumption of a likelihood of confusion”).
`
`II.
`
`An Extension Of The Period For Opposers To Take Discovery Is Necessary.
`
`Good cause exists for granting this first motion for an extension of time for Opposers to
`
`complete their discovery (Mr. Sleadd has sought none). American Vitamin Prods. Inc. v.
`
`DowBrands, Inc., 22 U.S.P.Q.2d 1313, 1315 (T.T.A.B. 1992) (“The standard for allowing an
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`extension of the prescribed period prior to the expiration of that period is good cause. Ordinarily,
`
`the Board is liberal in granting extensions of time before the period to act has elapsed, so long as
`
`the moving party has not been guilty of negligence or bad faith and the privilege of extensions is
`
`not abused”) (internal citation omitted). Opposers request an extension of the discovery period
`
`for them to review the documents and information that the Board compels Mr. Sleadd to
`
`produce, to serve any follow up discovery requests, and to take to Mr. Sleadd’s deposition.
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`Opposers seek this enlargement of time in good faith, as a result of Mr. Sleadd’s express refusal,
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`with less than two weeks remaining in the discovery period, to produce any documents or
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`information in this case.
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`21619241v2
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`

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`
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`Mr. Sleadd will not be prejudiced by the 90 day extension and any prejudice that does
`
`exist is due to Mr. Sleadd’s own actions in obstructing Opposers’ right to timely and complete
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`discovery responses. Accordingly, Opposers request that the Board, in conjunction with granting
`
`Opposers’ motion to compel discovery, extend the period for Opposers to complete discovery for
`
`90 days from the date of the Board’s decision on this motion, and reset the testimony periods.
`
`See. e.g., Johnston Pump, 10 U.S.P.Q.2d at 1676 (granting motion to extend discovery period for
`
`limited purpose of allowing one party to complete discovery deposition); Sunkist Growers, Inc. v.
`
`Benjamin Ansehl Co., 229 U.S.P.Q. 147, 149 (T.T.A.B. 1985) (granting extension oftime in
`
`conjunction with order compelling applicant to produce discovery materials because “clearly .
`
`.
`
`.
`
`it is reasonable to extend time in order to allow opposer to complete its discovery before
`
`progressing into its testimony”) (emphasis added); Sentrol, Inc., 231 U.S.P.Q. at 668 (granting
`
`motion to extend the discovery period “in view of .
`
`.
`
`. Board’s [granting] motion[] to compel”
`
`discovery).
`
`21619241v2
`
`10
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`

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`
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`CONCLUSION
`
`For the foregoing reasons, the Board should enter sanctions against Mr. Sleadd in the
`
`form ofjudgment sustaining this opposition pursuant to 37 C.F.R. § 2. ]20(g)(2). Alternatively,
`
`the Board should order that Mr. Sleadd produce all documents and information responsive to
`
`Opposer’s Document Requests and Interrogatories, and that the period in which Opposers may
`
`complete discovery be extended for 90 days from the date of the Board’s decision on this motion.
`
`Respectfully submitted,
`
`Bruce P. K ller
`
`Wendy Lang Kaplowitz
`Maria Lin
`
`DEBEVOISE & PLHVIPTON
`
`919 Third Avenue
`
`New York, NY 10022
`
`(212) 909-6000
`
`Attorneys for Opposers
`Oakland Raiders and
`
`NFL Properties LLC
`
`Dated: November 26, 2003
`
`21619241V2
`
`11
`
`‘Express Mail‘ matting label lta.ET5"i 7 '50 1 US
`Data of Deposit _N_° -
`..__._ZQ32(°
`l hereby certify that
`this paper or
`fee is being
`deposited with the United States Postal Service “Express
`I.‘|:.I| Pest Cities to Addtessee“ service under 37 CFR 1.10
`on the date ‘lndicated above and is addressed to the
`Assistant C{3l‘rt|1i.35iOI10r at Trademarks. 2900 Crystal Driva.
`Ariirlgicn. Virginia 22202-3513
`
`l"i matting paper or fee)
`
`(Signature of per
`
`

`
`
`
`DEBEVOISE 5. PLIMPTON
`;
`
`November 26, 2003
`
`BY EXPRESS MAIL
`
`Hon. Commissioner for Trademarks
`BOX TTAB NO FEE
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`77%
`
`axmardmcnuc
`New York, NY 10022
`Tel 212 909 6000
`Fax 212 909 5836
`www.debcvoisc.com
`
`"D :y1 fiIiii1 '
`
`11-26-2003
`us. Pltsnta TMO1'c/TM mu ficpzm, .3;
`
`OAKLAND RAIDERS and NFL PROPERTIES LLC V. ALAN SLEADD
`
`Opposition No. 91,156,313
`Opposers’ Motion To Compel Discovery
`And For a 90 Day Extension Of The Discovery Period
`
`Dear Madam:
`
`Enclosed for filing are the original and two copies of the following documents
`submitted by Opposers’, Oakland Raiders and NFL Properties LLC, in connection with
`the above-referenced opposition:
`
`1.
`
`2.
`
`3.
`
`4.
`
`Opposers’ Motion To Compel Discovery And For a 90 Day Extension Of The
`Discovery Period.
`
`Memorandum of Law In Support of Opposer's Motion to Compel.
`
`Declaration of Wendy Lang Kaplowitz.
`
`Certificate of Service.
`
`Thank you for your attention to this matter. If you have any questions, please do
`not hesitate to call me at (212) 909-1033.
`
`Very truly yours,
`
`ttbwéfiwgtv
`
`Halina E. Siemaszko
`Paralegal
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`Enclosures
`
`C03 A1311 Sleadd
`
`21621717v2
`
`NewYork °
`
`\Washington.D.C.
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`OAKLAND RAIDERS and
`
`NFL PROPERTIES LLC,
`
`V.
`
`ALAN SLEADD,
`
`Opposers,
`
`Applicant.
`
`x
`
`X
`
`Opposition No. 91,156,313
`
`DECLARATION OF WENDY LANG KAPLOWITZ
`
`1, Wendy Lang Kaplowitz, declare as follows:
`
`1.
`
`I am an associate at the law firm of Debevoise & Plimpton, counsel to
`
`Opposers Oakland Raiders (the “Raiders”) and NFL Properties LLC (“NFL Properties”).
`
`I submit this declaration in support of Opposers’ motion to compel discovery and for a 90
`
`day extension of the period in which Opposers may complete discovery.
`
`2.
`
`A copy of Applicant Alan Sleadd’s trademark application, filed on
`
`October 22, 2001, is attached as Exhibit A.
`
`3.
`
`A copy of the September 20, 2001 demand letter from Anastasia Danias of
`
`NFL Properties to Mr. Sleadd is attached as Exhibit B.
`
`4.
`
`A copy of the July 19, 2002 Settlement Agreement between Opposers and
`
`Mr. Sleadd is attached as Exhibit C.
`
`21620163V1
`
`

`
`
`
`5.
`
`A copy of the Trademark Trial & Appeal Board’s May 14, 2003 Order
`
`setting the schedule for discovery and testimony periods in this proceeding is attached as
`
`Exhibit D.
`
`6.
`
`A copy of the Trademark Trial & Appeal Board’s September 23, 2003
`
`Order denying Opposers’ Motion for Default is attached as Exhibit E.
`
`7.
`
`A copy of Opposers’ First Request for Production of Documents and
`
`Things is attached as Exhibit F.
`
`8.
`
`9.
`
`Exhibit H.
`
`A copy of Opposers’ First Set of Interrogatories is attached as Exhibit G.
`
`A copy of Opposers’ Notice of Deposition to Alan Sleadd is attached as
`
`10.
`
`Pursuant to 37 CFR. § 2.l20(e)(l), I hereby set forth the list and
`
`description of responsive documents and information that Opposers seek from Mr.
`
`Sleaddz
`
`0 Documents and information relating to the selection, design, creation of and
`application to register the REAL MEN GO DEEP! mark or any variation
`thereof, including any trademark search reports and investigation reports
`(Document Request Nos. 2, 14-15; Interrogatory Nos. 1-3);
`
`0 Documents and information relating to all uses of the REAL MEN GO DEEP!
`mark in connection with any goods or services (including representative
`specimens of all goods bearing the mark), and any sales or revenues derived
`from such uses (Document Request Nos. 3-4, 6-9, 11-12; Interrogatory Nos.
`4-5);
`
`218201B3v1
`
`

`
`
`
`0 Documents and information relating to all past, current and prospective
`advertising, marketing and/or promotions of the REAL MEN GO DEEP!
`mark (Document Request Nos. 1, S, 7-8, 10-11; Interrogatory No. 4);
`
`0 Documents and information relating to consumers actual or potential reactions
`to the REAL MEN GO DEEP! mark or Mr. Sleadd’s goods and services
`(Document Request No. 13, 15-17); and
`
`0 Documents and information relating to the affirmative defenses asserted in
`Mr. Sleadd’s Answer, dated June 25, 2003 (Document Request Nos. 18-20;
`Interrogatory Nos. 6 14).
`
`11.
`
`Opposers have made a good faith effort to negotiate a resolution to this
`
`discovery dispute. Opposers’ wrote to Mr. Sleadd on November 13, 2003 requesting that
`
`he respond to the outstanding discovery requests by November 17, 2003. See Exhibit I.
`
`The letter was sent by Express Mail and facsimile. When the facsimile transmission was
`
`unsuccessful, I emailed a copy of the letter to Mr. Sleadd at
`
`info@raidermerchandise.com. Mr. Sleadd confirmed receipt of the email by return
`
`message that same day. See Exhibit J. Having received no substantive response either to
`
`Opposers’ November 13 letter or to the outstanding discovery requests, Opposers wrote
`
`again to Mr. Sleadd on November 17, 2003, postponing his previously noticed deposition
`
`pending disposition of this motion to compel. See Exhibit K. Mr. Sleadd responded by
`
`email on November 20, 2003, claiming the “financial” inability to produce any
`
`documents or infonnation in connection with this action. See Exhibit L.
`
`I declare under penalty of perjury that the foregoing is true and correct. Executed
`
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`in New York, New York.
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`
`
`
`
`
`ANDERSON 8: SHIPPEY
`
`
`800] Irvine Center Drive. Suite 400 - Irvine. CA 92613
`(949) 754-3043 - (949) 754-4423 FAX
`Bi-andXperts@aol.eom
`
`October 22, 2001
`
`Assistant Commissioner for Trademarks
`United States Patent & Trademark Office
`
`Box - New App — Fee
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`RE: REAL MEN G0 DEEP
`
`Dear Sir or Madam:
`
`Please find enclosed. the following documents:
`
`1) Trademark! Servicemark Application
`2) Drawing Page
`3) Official Fees (5325 x 2)
`4) Specimens of Use
`5) SASE
`
`Should you have any questions regarding this application, please do not hesitate
`to Contact us directly. Thank you for your attention and assistance.
`
`Very truly yours,
`
`
`
`".‘73(n or on
`Anderson & Shippey
`Attorneys for Applicant
`
`enclosures:
`
`as stated
`
`

`
`
`
`Trademark/Service Mark Applicatior
`PTO Form 1478 (Rev QIQB)
`OMB Control 39651-0009 (Exp D8l'3I.'2DlJ1)
`
`Page i of.‘-
`
`*Trademark/Service Mark Application-r
`
`* To the Commissioner for Trademarks *
`
`<DOCUMENT INFORMATlON>
`<l'R.ADEMARK./SERVICEMARK A.PPLICATION>
`<VERSION 1.22>
`
`<APPLICANT INFORMATION>
`<NAME> Alan Sleadd
`<STREET> Post Office Box 148
`<CITY> Roseville
`<STATE> CA
`<COUNTRY> USA
`95678
`<ZIP/POSTAL CODE)
`<I'ELEPHONE NUMBER> 916-786-6915
`
`<APPLICANT ENTITY INFORMATION>
`<INDI\/IDUAL: COUNTRY OF CITIZENS]-IlP> United States
`
`<1‘RADEMARKJSERVICEMARK INFORMATION>
`
`<MARK>
`
`REAL MEN G0 DEEP!
`
`<1"YPED FORM> Yes
`
`~Applicant requests registration of the above-identified trademarklservice mark in the United States
`Patent and Trademark Office on the Principal Register estabiished by the Act of July 5. 1946 (15
`U.S.C. §‘l051 et seq., as amended). ~
`
`<BASIS FOR FILING AND GOODSISERVICES lNFORMATION>
`<USE IN COMMERCE: SECTION 1(a)> Yes
`-Applicant is using or is using through a related company the mark in commerce on or in connection
`with the below-identified goodslservices. (15 U.S.C. §1051(a), as amended.). Applicant attaches one
`SPECIMEN for each class showing the mark as used in commerce on or in connection with any item
`in the class of listed goods andlor services. -
`<SPECIMEN DESCRlPTION> actual bumper sticker decal
`<INTERNAT[0NAL CLASS NUMBER> 016
`
`<LISTlNG OF GOODS AND/OR SERVICES> Paper goods and printed matter, bumper stickers. decals. rub-
`on tatoos, banners, posters, photographs. catalogs and flyers.
`<FIRST USE ANYWHERE DATE> 08/0|/I995
`<FlRST USE IN COMMERCE DATE> 06/02/I996
`
`<BASIS FOR FILING AND GOODSISERVICES INFORMATl0N>
`<USE IN COMMERCE: SECTION 1(a)> Yes
`~ Applicant is using or is using through a related company the mark in commerce on or in connection
`with the below-identified goodsiservices. (15 U.S.C. §‘l051(a). as amended.). Applicant attaches one
`SPECIMEN for each class showing the mark as used in commerce on or in connection with any item
`in the class of listed goods andlor services. ~
`<SPECIMEN DESCR.lPTION> Selected pages from Website Catalog, including product photographs.
`http://www3.uspto.gov/cgi-bin/teas/V].22lget?USPTO-1235202168-20011018155319527-PrinTE!
`I0/1 812001
`
`

`
`
`
`Trademark/Service Mark Applicatio'
`025
`<INTERNATIONAL CLASS NUMBER)
`<LISTING OF GOODS AND/OR SERVICES> Clothing and headgear, namely: T-shirts. sport shirts, polo
`shins, tank tops, shorts, sweatpants, jackets, caps, hats and bandannas.
`<FIRST USE ANYWHERE DAT1’->
`08/01/1995
`<FIRST USE IN COMMERCE DATE> 08/0]/1995
`
`Page 2 of 3
`
`<A'I'I'0RNEY INFORMATION>
`<NAME> Stephen L. Anderson
`<STREET> 8001 Irvine Center Drive Suite 400
`<ClTY> Irvine
`<STA'I'E> CA
`<COUNTRY> USA
`<ZIP/POSTAL CODE> 92618
`
`<E-MAIL ADDRESS> attorneys@brandXperts.com
`<AUTHOR]ZE E-MAIL COMMUNICATION> Yes
`<1“-‘IRM NAME> ANDERSON & SHIPPEY
`<I'EI.EPHONE NUMBER> 949-754-3048
`<FAX NUMBER> 949-754-4428
`<ATTORNEY DOCKET NUMBER> R0141 .O0l.00l .T
`<0THER APPOINTED ATTORNEY(S)> Karla C. Shippey
`
`<FEE INFORMATl0N>
`<TOTAL FEES PAID> 650
`<NUMBER OF CLASSES PAID> 2
`<NUMBER OF CLASSES> 2
`
`<LAW OFFICE INFORMATIOl\‘>
`~ The USPTO is authorized to communicate with the applicant's attorney at the below e-mail address
`
`<E-MAIL ADDRESS FOR CORRESPONDENCE?
`
`attomeys@brandXperts.com
`
`<SlGNATURE AND OTHER INFORMATl0N>
`~— PTO-Application Declaration: The undersigned, being hereby warned that willful false statements
`and the like so made are punishable by fine or imprisonment, or both, under 13 U.S.C. §-1001. and
`that such willful false statements may jeopardize the validity of the application or any resulting
`registration, declares that helshe is properly authorized to execute this application on behalf of the
`applicant; helshe believes the applicant to be the ovvner of the trademarklservice mark sought to be
`registered, or. if the application is being filed under 15 U.S.C. §1051(b). helshe believes applicant to
`be entitled to use such mark in commerce; to the best of hislher knowledge and belief no other
`person, firm, corporation, or association has the right to use the mark in commerce, either in the
`identical form thereof or in such near resemblance thereto as to be likely, when used on or in
`connection with the goods/services of such other person, to cause confusion, or to cause mistake. or
`to deceive; and