WILMER CUTLER PICKERING
`HALE AND DORRM
`
`July 2, 2004
`
`.
`By Express Mail
`
`TTAB
`
`jennifer Ann Gaeta
`
`300 PARK AVENUE
`NEW YORK NY [0022
`+| 2|2937728|
`
`Commissioner for Trademarks
`Crystal Drive
`Arlington, VA 22202-3514
`Re: Warner-Lambert Company, LLC V. Rocky Fork Formulas, Inc.; “—
`Opposition No. 91157791
`
`fl m 937 7300 fax
`Jennifengaeta@wilmerhale.com
`
`Dear Commissioner:
`
`“'8' PW" ‘ TM°'¢’TM MI" Rent 02. m
`
`I have enclosed Warner—Lambert Company, LLC’s Notice of Reliance for filing in connection
`with the above-referenced opposition proceeding. Please stamp and return the enclosed postcard
`to acknowledge receipt for our files.
`
`Very truly yours,
`
` Jennifer Ann Gaeta
`
`JAG2adu
`
`Enclosure
`
`cc:
`
`Jane Ungaro, Esq.
`Scott C. Tips, Esq.
`
`NEW YORK
`
`BERLIN
`BALTIMORE
`NORTHERN VIRGINIA
`
`BOSTON
`OXFORD
`
`BRUSSELS
`PRINCETON
`
`MUNICH
`LONDON
`WALTHAM
`WASHINGTON
`
`NEWYORK lOO713vl
`
`

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`
`
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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No.: 76/463,227
`Filed on: October 31, 2002
`For the Mark: UNIVASE
`
`Published in the Ofiicial Gazette of April 29, 2003
`
`______________________________________________________x
`
`Opposition No. 91157791
`
`Opposer,
`
`Rocky Fork Formulas, Inc.,
`
`Applicant.
`
`______________________________________________________x
`
`My/j/ ///
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`2
`/
`
`/ “V
`
`Arlington, Virginia 22202-3514
`
`, a.
`
`m
`
`3:339,
`
`-
`
`
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`
`Opposer’s Notice of Reliance
`
`Opposer, Warner-Lambert Company LLC (“Opposer”), pursuant to Trademark Rules
`
`2.1200) and 2.122(d) through (f) of the Trademark Rules of Practice, 37 C.F.R. §§ 2.120 and
`
`2.122, hereby introduces into evidence the following: federal trademark registration, discovery
`
`deposition testimony, Applicant’s response to Opposer’s Interrogatories, Applicant’s responses
`
`to Opposer’s Requests for Admissions, and testimony;
`
`A.
`
`Federal Registration
`
`Pursuant to Trademark Rules 2.122(d), 37 CPR. § 2.122(d), Opposer hereby introduces
`
`into evidence a copy of the following official record of the Patent and Trademark Office,
`
`
`
`

`

`
`

`

`
`
`attached hereto as Exhibit A: Certified status copy of Registration No. 1,941,709 registered on
`
`December 12, 1995, for the trademark UNIVASC.
`
`B.
`
`Applicant’s Responses to Opposer’s Interrogatories.
`
`Pursuant to Trademark Rule 2.120(j)(5), 37 C.F.R. § 2.1200)(5), Opposer designates the
`
`following Answers to Opposer’s Interrogatories made by Applicant attached hereto as Exhibit B:
`
`Answers to Opposer’s Second Set of Interrogatories numbered 1, 7, 10, 11, 12, 14, 18 and 20.
`
`C.
`
`Applicant’s Responses to Opposer’s Requests for Admission
`
`Pursuant to Trademark Rule 2.1200)(5), 37 C.F.R. § 2.12OG)(5). Opposer designates the
`
`following Applicant’s Response to Opposer’s Requests for Admissions attached hereto as
`
`Exhibit C: Responses to Requests numbered 1 and 2.
`
`D.
`
`Discovery Deposition
`
`Pursuant to Trademark Rule 2.1200)(1), 37 CPR. § 2.12OG)(1), Opposer hereby
`
`designates and makes part of the record of this case the following portions of the discovery
`
`deposition of Charles S. Michaelis, President of Rocky Fork Formulas, taken on April 20, 2004,
`
`together with the exhibits introduced and referred to in the designated testimony:
`
`Testimony
`
`Page: Line
`
`Testimony
`
`Page: Line
`
`7:1
`
`11:7
`
`21:21
`
`22:4
`
`33:15
`
`49:13
`
`56:4
`
`69:11
`
`78:17
`
`83:15
`
`8:5
`
`12:8
`
`21:25
`
`22:6
`
`42:12
`
`53:9
`
`56:19
`
`72:19
`
`79:25
`
`85:1
`
`

`

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`
`
`
`
`
`

`

`
`
`91:12
`
`94:7
`
`97:11
`
`105:13
`
`107:4
`
`109:3
`
`120:2
`
`93:22
`
`95:22
`
`101:20
`
`105:24
`
`108:17
`
`111:6
`
`122:2
`
`Opposer designates hereby the following Exhibits entered during this testimony: Exhibits
`
`number 1, 2, 3, 6, 7, 8, 9, 10-22, and 25-53. Copies of the Exhibits are attached as Exhibit D
`
`except that Exhibits 25 through 53 and the deposition transcript are not attached and are instead
`
`being filed pursuant to the terms of the executed Provisions Protecting Confidentiality of
`
`Information Revealed During Board Proceedings.
`
`E.
`
`Other Evidence
`
`In addition to the above evidence, which is introduced into evidence by way of this
`
`Notice of Reliance, Opposer gives notice that it intends to rely upon the following, further
`
`evidence.
`
`1.
`
`Testimonial Deposition
`
`Opposer hereby gives notice that, pursuant to Trademark Rule 2.123, the following
`
`testimonial deposition was taken during Opposer’s Testimony Period and will be filed with the
`
`Board, along with Opposer’s Exhibits 54 through 63 introduced during this deposition. The
`
`transcript of this deposition, being taken only recently, is not ready for filing. Upon review and
`
`execution by the deponent, it will be promptly filed with the Board.
`
`

`

`
`
`
`
`

`

`Deponent: Gloria Mattson, Product Manager of Schwarz Pharma Inc.
`
`Date of Deposition: June 29, 2004
`
`Opposer’s Exhibit(s): 54-63
`
`Dated: New York, New York
`
`July 2, 2004
`
`Respectfully Submitted,
`
`Wilmer Cutler Pickering
`Hale and Dorr LLP
`
`
`
`
`
` s tI an Finguerra-DuCharme
`
`Jennifer Ann Gaeta
`
`300 Park Avenue
`
`New York, New York 10022
`
`(212) 937-7200
`Attorneys for Warner-Lambert
`Company LLC
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing “Opposer’s Notice of
`Reliance” has been served on Scott C. Tips, Counsel for Rocky Fork Formulas, Inc., by mailing
`said copy on July 2, 2004, via Federal Express, postage prepaid to:
`
`Scott C. Tips
`Tips & Associates
`807 Montgomery Street
`San Francisco, CA 94133
`
` Jennifer Gaeta
`
`

`

`

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`UNITED STATES DEPARTMENT OF COMMERCE
`
`United States Patent and Trademark Office
`
`63'
`
`March 30, 2004
`
`THE ATTACHED U.S. TRADEMARK REGISTRATION 1,941,709 IS
`
`CERTIFIED TO BE A TRUE COPY WHICH IS IN FULL FORCE AND
`
`EFFECT WITH NOTATIONS OF ALL STATUTORY ACTIONS TAKEN
`THEREON AS DISCLOSED BY THE RECORDS OF THE UNITED STATES
`
`PATENT AND TRADEMARK OFFICE.
`
`REGISTERED FOR A TERM OF 10 YEARS FROM December 12, 1995
`SECTION 8 & 15
`
`SAID RECORDS SHOW TITLE TO BE IN:
`
`WARNER-LAMBER T COMPANY LLC
`
`A DE LLC
`
`
`
`
`
`By Authority of the
`COMMISSIONER OF PATENTS AND TRADEMARKS
`
`Certifying Officer
`
`WL 00111
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`

`

`,1
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`
`Int. Cl.: 5
`
`Prior U.s. Cls.: 6, 18,44, 46, 51, and 52
`
`Reg. No. 1,941,709
`United States Patent and Trademark Office Registered Dec.12,1995
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`UNIVASC
`
`WARNER-LAMBERT COMPANY (DELAWARE
`CORPORATION)
`201 TABOR ROAD
`MORRIS PLAINS, NJ 07950
`
`FOR: PHARMACEUTICAL PREPARATIONS
`FOR THE TREATMENT OF CORONARY CON-
`DITIONS, IN CLASS 5 (US. CLS. 6, 18, 44,46, 51
`AND 52).
`
`FIRST USE 6—20—1995;
`6-20-1995.
`
`IN COMMERCE
`
`SN 74-507,242, FILED 3—31—1994.
`
`LEIGH CAROLINE CASE, EXAMINING AT-
`TORNEY
`
`
`
`

`

`
`
`

`

`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 76/463,227
`Published in the Oflicial Gazette of April 29, 2003 at TM 143
`
`WARNER-LAMBERT COMPANY LLC,
`
`Opposer,
`
`v.
`
`ROCKY FORK FORMULAS, INC,
`
`Applicant.
`
`OPPOSITION NO. 91157791
`
`Vvvvvvvvvv
`
`APPLICANT’S RESPONSES AND OBJECTIONS TO OPPOSER’S SECOND SET OF
`INTERROGATORIES TO APPLICANT
`
`Pursuant to Rule 2.120 of the Trademark Rules of Practice and Rule 33 of the Federal
`
`Rules of Civil Procedure, Applicant-Defendant Rocky Fork Formulas, Inc. (“Applicant”) hereby
`
`responds and objects to the following Second Set of Interrogatories by Opposer Wamer-Lambert
`
`Company LLC (“Opposer”).
`
`Since the discovery in this proceeding has only recently commenced, Applicant may
`
`not yet be privy to certain information, facts, and documents pertinent to Opposer’s Interrogatories.
`
`Accordingly, Applicant reserves its rights to amend, alter, or supplement these responses and
`
`objections hereto at some later date.
`
`The responses herein are based upon information obtained from or assembled by
`
`Applicant’s representatives and others, and upon the advice of Applicant’s counsel. Applicant
`
`reserves the right to make any changes in these responses if it appears that omissions or errors have
`
`been made therein or that further or more accurate information is available. Applicant has not fully
`
`completed its own discovery and other investigations of fact. Accordingly, the following responses
`
`state Applicant’s knowledge, information, and belief as of the date of these responses.
`
`

`

`Applicant its right to object to further discovery concerning the subject matter of
`
`Opposer’s Interrogatories or these responses.
`
`These responses are for purposes of discovery, and no response below constitutes a
`
`waiver of any and all evidentiary objections that Plaintiff might make at trial to the use of such
`
`response(s) and/or information and/or documents mentioned herein.
`
`GENERAL OBJECTIONS
`
`A. Applicant objects to Opposer’s Interrogatories to the extent that they call for
`
`attorney work product or the impressions, conclusions, opinions,
`
`legal research, or theories of
`
`Applicant’s attorneys, including but not limited to those of Applicant’s counsel’s experts pursuant
`
`to the Federal Rules of Civil Procedure. Applicant also objects to Opposer’s Interrogatories to the
`
`extent that they call for information or communications protected by the attorney-client privilege,
`
`the right to privacy provided by the United States Constitution, or any other applicable privilege or
`
`protection.
`
`In particular, Applicant objects to these Interrogatories to the extent that they seek
`
`confidential tax and other information, including but not limited to federal, State, and Local tax
`
`returns, W—4s, and other such confidential and protected documents, deemed protected and
`
`confidential under the United States Constitution and the Ohio State Constitution as well as other
`
`applicable law.
`
`B. Applicant objects to Opposer’s Interrogatories to the extent that they purport to
`
`require Applicant to provide information that exceeds the requirements of the Federal Rules of Civil
`
`Procedure.
`
`C. Applicant objects to Opposer’s Interrogatories to the extent that they call for any
`
`trade-secret and/or other confidential business information and data of Applicant unless and until
`
`the parties agree upon an appropriate Protective Order for confidentiality.
`
`

`

`The following responses and objections are provided subject to and without prejudice
`
`to all of the above-stated objections.
`
`RESPONSES AND OBJECTIONS TO INTERROGATORIES
`
`INTERROGATORY N0. 1: Describe the nature of the business conducted by Applicant.
`
`RESPONSE TO INTERROGATORY NO. 1: Subject to and without waiving the objections
`
`provided above, Applicant responds as follows: The nature of the business of Applicant is both
`
`wholesale and retail sales of dietary supplements. Applicant’s dietary supplements are sold
`
`wholesale to both health-food stores and to health-care professionals who practice nutritional
`
`therapy through the diet and the use of dietary supplements.
`
`INTERROGATORY NO. 2:
`
`State each name under which Applicant has done or is doing
`
`business, and state the dates during which Applicant was or is doing business under such name.
`
`RESPONSE TO INTERROGATORY NO. 2: The names under which Applicant has done and is
`
`doing business and dates for the same: Rocky Fork Formulas, Inc 6/23/1998 through the present;
`
`Rainrock Nutritionals 8/23/99 through the present; BMP 12/26/2001 through the present.
`
`INTERROGATORY N0. 3:
`
`Identify each and every product sold or intended to be sold at any
`
`time bearing Applicant’s mark.
`
`RESPONSE TO INTERROGATORY NO. 3: The products sold under the Applicant’s mark are
`
`multiple source digestive enzymes from pancreatic and plant sources. The products sold bearing the
`
`Applicants mark are: Univase- 905ize; Univase- 200 size; Univase- 400 size; Univase Forte- 90
`
`size; Univase Forte- 200 size; Univase Forte- 400 size.
`
`

`

`INTERROGATORY NO. 4: State the first date on which Applicant offered for sale any product
`
`bearing Applicant’s mark.
`
`RESPONSE TO INTERROGATORY NO. 4: October 17, 2002.
`
`INTERROGATORY NO. 5: State the specific manner in which Applicant’s mark has been or
`
`will be used by Applicant.
`
`RESPONSE TO INTERROGATORY NO. 5: The specific manner in which Applicant’s mark
`
`has been and will be used is as a name on a specific dietary-supplement product containing
`
`digestive enzymes. The mark is/will be displayed on the label of said dietary supplement.
`
`INTERROGATORY N0. 6: State the date on which commercial lots of any product bearing
`
`Applicant’s mark were first offered for sale in interstate commerce in the United States.
`
`RESPONSE TO INTERROGATORY NO. 6: October 17, 2002.
`
`INTERROGATORY NO. 7:
`
`Identify every person who was responsible for or who participated
`
`in the selection and adoption of Applicant’s mark..
`
`RESPONSE TO INTERROGATORY NO. 7:
`
`Subject to and without waiving any of the
`
`foregoing objections, Applicant responds as follows: Charles Michaelis, President, Rocky Fork
`
`Formulas, Inc., 25 W. Main Street, Suite 202, Newark, Ohio 43055; and Scott C. Tips, Esq., Tips &
`
`Associates, 807 Montgomery Street, San Francisco, California 94133.
`
`INTERROGATORY NO. 8: Describe in detail the reasons Applicant selected Applicant’s mark
`
`and identify all trademark search reports pertaining to that selection.
`
`RESPONSE TO INTERROGATORY NO. 8:
`
`Applicant objects to this Interrogatory as
`
`irrelevant and unlikely to lead to the discovery of admissible evidence. Subject to and without
`
`waiving the foregoing objections, Applicant responds as follows: Applicant needed a one-of-a-kind
`
`

`

`name that described their digestive enzyme dietary-supplement product. The name Univase was
`
`arrived at by using the very common suffix ASE, which is recognized internationally as pertaining
`
`to an enzyme or enzyme preparation. The prefix Univ pertains to the word universal. Combining
`
`the two made the name Univase. The trademark search report used was the CCH Corsearch Report
`
`dated October 11, 2002, previously produced to Opposer.
`
`INTERROGATORY NO. 9: Describe in detail any discussions Applicant had with others
`
`concerning the adoption and selection of Applicant’s mark and identify any other marks‘considered
`
`for adoption and/or selection.
`
`RESPONSE TO INTERROGATORY NO. 9:
`
`Applicant objects to this Interrogatory as
`
`irrelevant, unlikely to lead to the discovery of admissible evidence, and invasive of the attomey-
`
`client privilege. Subject to and without waiving the foregoing objections, Applicant responds that
`
`Applicant and its legal counsel conducted all such discussions together.
`
`INTERROGATORY N0. 10: Describe with particularity the intended channels of distribution
`
`through which any product bearing each of or any of Applicant’s mark is or will be sold.
`
`RESPONSE TO INTERROGATORY NO. 10:
`
`Applicant objects to this Interrogatory as
`
`grammatically incomprehensible, irrelevant, and unlikely to lead to the discovery of admissible
`
`evidence because it asks for ”intended,” not actual, channels of distribution. Subject to and without
`
`waiving the foregoing objections, Applicant responds as follows: The intended channels of
`
`distribution of the product bearing the Applicant’s mark UNIVASE include health-food stores and
`
`health-care professionals who practice alternative or nutritional therapy through the use of dietary
`
`supplementation.
`
`

`

`INTERROGATORY NO. 11: Describe with particularity the class of purchasers to whom
`
`Applicant promotes, advertises and/or sells products bearing Applicant’s mark.
`
`RESPONSE TO INTERROGATORY NO. 11:
`
`The class of purchasers to whom Applicant
`
`promotes, advertises and/or sells products bearing Applicant’s mark UNIVASE are retail outlets,
`
`businesses and individuals who either consume or sell dietary supplements.
`
`INTERROGATORY NO. 12:
`
`Identify all advertising media used to market or promote all
`
`products bearing Applicant’s mark, including but not limited to, the identity of all newspapers,
`
`periodicals, magazines, newsletters, radio stations, and television stations, and state the dates on
`
`which such advertising was published.
`
`RESPONSE TO INTERROGATORY N0. 12:
`
`The only advertising media used to market
`
`. Applicant’s mark UNIVASE is ALTERNATIVE THERAPIES IN HEALTH AND MEDICINE
`
`(ATIHAM) magazine and INTEGRATIVE MEDICINE (IM) magazine. The specific dates that
`
`each publication actually arrived in homes or were offered for sale is unknown. However, the
`
`specific publications that the advertisements appeared in are the December 2002/ January 2003
`
`edition of
`
`IM magazine,
`
`the Feb/March, April/May,
`
`June/July, August/September,
`
`October/November (all in 2003) of IM magazine, and the December 2003/January 2004 edition of
`
`IM magazine. Advertising also appeared in January/February, March/ April, May/June,
`
`July/August, September/October,
`
`and November/December (all in 2003) editions of ATIHAM
`
`magazine.
`
`INTERROGATORY NO. 13:
`
`Identify all wholesale outlets, retail outlets, distributors, and
`
`websites that have promoted, advertised, sold, and/or offered for sale products bearing Applicant’s
`
`mark.
`
`

`

`RESPONSE TO INTERROGATORY NO. 13: Applicant objects to this Interrogatory as calling
`
`for the disclosure of trade-secret and confidential business information. Subject to an appropriate
`
`Protective Order, nonprivileged, information responsive to this Interrogatory could be provided.
`
`INTERROGATORY NO. 14:
`
`Identify each kind of promotional matter bearing Applicant’s
`
`mark.
`
`RESPONSE TO INTERROGATORY NO. 14: Rocky Fork Formulas, Inc catalog, advertising
`
`as described in' Applicant’s Response to Interrogatory No. 12, an enzyme information sheet
`
`supplied with the Rocky Fork Formulas, Inc catalog, and a promotional flier also supplied with the
`
`Rocky Fork Formulas, Inc catalog.
`
`INTERROGATORY NO. 15: State in dollars and number of units each of Applicant’s yearly
`
`sales and projected sales of products bearing Applicant’s mark, indicating the total dollar sales and
`
`number of units per year.
`
`RESPONSE TO INTERROGATORY NO. 15: Applicant objects to this Interrogatory as calling
`
`for the disclosure of trade-secret and confidential business information. Subject to an appropriate
`
`Protective Order, nonprivileged, information responsive to this Interrogatory could be provided.
`
`INTERROGATORY NO. 16: State in dollars Applicant’s yearly advertising and promotional
`
`expenditures for any product bearing Applicant’s Mark.
`
`RESPONSE TO INTERROGATORY NO. 16: Applicant’s direct advertising and promotional
`
`expenditures in 2003 for product bearing Applicant’s mark were $10,920.00. No advertising has
`
`been purchased for 2004. Applicant does not track its indirect promotional expenditures.
`
`

`

`INTERROGATORY NO. 17: Describe any instance, whether by written correspondence,
`
`telephone call, or other communications, in which any person or business entity:
`
`(a) has by word
`
`or deed suggested a belief that any product bearing Applicant’s mark was licensed or sponsored by
`
`or otherwise associated or connected with Opposer or with Opposer’s mark; (b) has by word or
`
`deed suggested a belief that any product bearing Applicant’s mark was advertised, distributed or
`
`offered for sale by Applicant under the control of or in any manner in association with or related to
`
`Opposer; or (c) has been in any way confused, mistaken or deceived as to the origin or sponsorship
`
`of any product bearing Applicant’s mark. Examples of such confusion, mistake or deception
`
`include, but are not limited to,
`
`instances of misdirected mail or e-mail, misdirected inquiries,
`
`misdirected invoices, or misdirected deliveries.
`
`RESPONSE TO INTERROGATORY NO. 17:
`
`(a) None; (b) None; and (c) None.
`
`INTERROGATORY NO. 18: State the date and describe the circumstances in which Applicant
`
`first became aware of Opposer’s mark and identify all individuals having relevant knowledge.
`
`RESPONSE TO INTERROGATORY N0. 18:
`
`Applicant objects to this Interrogatory as
`
`irrelevant and unlikely to lead to the discovery of admissible evidence in this proceeeding. Subject
`
`to and without waiving the foregoing objections, Applicant responds as follows: The exact date is
`
`unknown. However, Charles S. Michaelis, President of Rocky Fork Formulas, Inc and Applicant’s
`
`legal counsel, Scott C. Tips, Esq., would have first become aware of Opposer’s mark when they
`
`received the CCH Corsearch Report, which is dated October 11, 2002.
`
`INTERROGATORY NO. 19:
`
`Identify each person from whom Applicant has obtained a
`
`statement and/or whom Applicant plans to use as a witness in this proceeding.
`
`RESPONSE TO INTERROGATORY NO. 19:
`
`Applicant objects to this Interrogatory as
`
`invasive of the work-product and attomey-client privileges. Subject to and without waiving the
`
`

`

`foregoing objections, Applicant responds that no statements have been obtained by Applicant for
`
`this proceeding.
`
`INTERROGATORY NO. 20:
`
`Identify each person who supplied information utilized in
`
`preparation of the answers to these interrogatories and, if more than one such person was involved,
`
`indicate the specific interrogatories to which each person contributed all or part of the information
`
`comprising the answer.
`
`RESPONSE TO INTERROGATORY NO. 20: Subject to and without waiving any of the
`
`foregoing general objections, Applicant responds as follows: Charles Michaelis, President, Rocky
`
`Fork Formulas, Inc., 25 W. Main Street, Suite 202, Newark, Ohio 43055; and Scott C. Tips, Esq.,
`
`Tips & Associates, 807 Montgomery Street, San Francisco, California 94133.
`
`INTERROGATORY N0. 21: Set forth in detail and with particularity the basis for the contention
`
`in Paragraph 2 of the Affirmative Defenses in Applicant’s Answer that ”the mark UNIVASC is not
`
`entitled to a broad scope of protection because it is a weak mar ” and identify (a) each fact that
`
`Applicant will rely upon to support that contention, (b) all documents relevant to that contention,
`
`and (c) all persons with knowledge of any facts supporting that contention.
`
`RESPONSE TO INTERROGATORY NO. 21:
`
`(a) Opposer’s UNIVASC mark is a weak mark based upon, among other things, the fact that the
`
`names UNIVEST (owner Dentsply
`
`International,
`
`Inc), UNIVESTIN (owner Unigen
`
`Pharmaceuticals), UNIMAX (registered ownerAstra Aktiebolag), INNOVASE (owner innovase
`
`LLC) UNIVAX (registered owner Schering-Plow), UNIVAX-BD (registered owner Schering-
`
`Plow), UNILACT (registered owner Upjohn Company), UNIPLAST (registered owner Collagen
`
`Corporation), UNIVAR (registered owner Pakhoed Distribution Corporation) and UNIPLAS
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`

`

`(registered Octapharma AG), were all granted a mark and the names UNIVISC (owner Novartis
`
`AG) and UNIVANCE (owner Otsuka Pharmaceutical Co., Ltd) were also allowed and are all in the
`
`same class as UNIVASC (international class 5). All of these names are indeed similar to
`
`UNIVASC. However,
`
`in particular the name UNIVAX, UNIVAX-BD, UNIVISC, UNILACT,
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`UNIPLAST, and UNIVANCE all end using a short vowel in their pronunciation of their second
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`syllable which makes them all far more similar sounding in their pronunciation to the name
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`UNIVASC than is UNIVASE with particular attention being paid to Univax and Univax—BD.
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`Further, the vast majority of the previous mentioned names are sold only under the order of a
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`licensed physician only and share the same target market as Opposer’s product UNIVASC.
`
`In
`
`contrast, UNIVASE is pronounced with a long A and is sold through health food stores and health
`
`care professionals, many who are not qualified to prescribe and who recommend dietary
`
`supplements for their clients instead of prescription drugs. Further Schwartz-Pharma Company
`
`markets and sells a product with the UNIVASC name that is marketed as a pharmaceutical in direct
`
`contravention and opposition to Opposer’s claimed trademark rights.
`
`In addition,0pposer’s mark UNIVASC is inherently weak because of the history of
`
`and the volume of usage of the prefix “UNI” and the suffix “ASE.” In the 2002 version of the CCH
`
`Corsearch report their are at least 24 trademarked names in International Class 5 alone that begin
`
`with the prefix “UNI.” This figure does NOT include the trademarked names using “UNI” that are
`
`included in Class 5 that are also included in multiple categories. There are 4 trademarked names in
`
`Class 5 alone including one that has a multiple class listing that end in “ASE.” Once a trademark
`
`was awarded for a name that either began in “UNI” or ended in “ASE” none of the other names
`
`listed were rejected because they had a similar beginning or end. Univase utilizes an extremely
`
`common prefix and a fairly common suffix with only one letter separating the prefix and the suffix.
`
`The examples of both the prefix “UNI” and the suffix “ASE” are expanded even further when
`
`10
`
`

`

`
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`including other categories.
`
`(b) The document that supports the contention that there are similar marks is the CCH Corsearch
`
`report dated October 11, 2002, which was prepared for Rocky Fork Formulas, Inc., and sent to Scott
`
`C. Tips, Esq., 807 Montgomery Street, San Francisco, California 94133, and was previously
`
`produced to Opposer. Other documents that would similarly support Applicant’s contention in this
`
`regard but that are not in the custody, control or possession of Applicant are the underlying United
`
`States Patent and Trademark office files for each and every such similar trademark application and
`
`registration as well as all written materials bering those other marks in the possession of their
`
`owners.
`
`(c) Charles Michaelis, President, Rocky Fork Formulas, Inc., 25 W. Main Street, Suite 202,
`
`Newark, Ohio 43055; Kenneth Michaelis, Rocky Fork Formulas, Inc., 25 W. Main Street, Suite
`
`202, Newark, Ohio 43055; Scott C. Tips, Esq., Tips & Associates, 807 Montgomery Street, San
`
`Francisco, California 94133; and Rocky Fork Formulas, Inc., 25 W. Main Street, Suite 202,
`
`Newark, Ohio 43055. In addition, Applicant believes that Opposer and its officers and directors, as
`
`well as those of the other companies’ marks indicated above, have knowledge of these facts. Such
`
`individuals’ names, however, are at present unknown to Applicant.
`
`DATED: April 14, 2004.
`
`By
`
`. T S
`SC
`TIPS & ASSOCIATES
`
`807 Montgomery Street
`San Francisco, California 94133
`Telephone: (415) 296-7003
`Attorneys for Applicant
`ROCKY FORK FORMULAS, INC.
`
`11
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`

`

`
`
`and know Its contents.
`
`C]
`PB
`
`'C]
`
`I am a party to this action. The matters stated in the foregoing document are true of my own knowledge except as to
`those matters which are stated on information and belief, and as to those matters I believe them to be true.
`
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`a party to this acti n, and am authorized to make this verification for and on its behalf, and I make this verification for that
`reason. m I an Informed and believe and on that ground allege that the matters stated In the foregoing document are
`true. E) The matters stated in the foregoing document are true of my own knowledge except as to those matters which are
`Stated on Information and belief, and as to those matters I believe them to be true.
`
`--———-—-—-—-——-—
`lam one of the attorneys in!
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`a party to this action. Such party is absent from the county of aforesaid where such attorneys have their offices. and I make
`this verification for and on behalf of that party for that reason.
`i an informed and believe and on that ground allege that
`the matters stated in t e foregdlng document are true.
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`0 California that the fore
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`log is true and correct.
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`Type or Print Name
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`PROOF OF SERVICE
`10i3fl (3) COP meadsnm
`
`STATE OF CALIFORNIA. COUNTY OF
`
`_
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`I am employed In the county of
`I am over the age of is and not a party to the within action; my business address is:
`
`. __
`
`, State of California.
`
`.m—wmmm N ‘ H
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`In this action
`on
`D E-plmimtlietrue copies thereof enclosed in sealed envelopes addressed as stated on the attached mailing list:
`C] by placing D the original 1:] a true copy thereof choloseo in sealed envelopes addressed as rollows
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`, I served the foregoing document described as _w_
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`C) BY “All.
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`, California.
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`D Pl deposited such envelope in the mail at
`The envelope vas mailed with postage thereon fully prepaid.
`Des follows.
`I am 'readily famuiar‘ with the limit; practice of collection and processmg correspondence for mailing.
`Under that practice it would he deposned with us. postal service on that same day With postage thereon fully prepaid at
`
`California In the ordinary course or business. I am aware that on motion of the
`party served, Service Is presumed invalid if postal cancellation date or postage meter date is more than one day after date of
`deposit for mailing In affidavit.
`‘
`" California.
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`Executed on
`'
`"(av ransom. Samoa) l delivered such envelope by hand to the offices of the addressee.
`
`. California.
`Executed on
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`Distate)
`I declare under penalty of perjury under the laws of the State or California that the abova l8 true and correct.
`Cl (Federal)
`ldeclare that i an employed In the office or a member of the bar of this court at whose direction the service was
`mam.
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`TprBr Print Name
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`W PERSON DEDOSWWG ENVELM IN
`“(FOR museum. SERVICE autumn: MUS! IE m1 0F MESSENGER)
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`
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of Applicant’s Responses and
`Objections to Opposer’s Second Set of Interrogatories to Applicant has been served on counsel for
`Applicant by mailing, via Federal Express, said copy on April 14, 2004, to:
`
`Nels T. Lippert
`Hale and Dorr LLP
`300 Park Avenue
`
`New York, New York 10022
`
`
`
`12
`
`

`

`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 76/463,227
`Published in the Official Gazette of April 29, 2003 at TM 143
`
`WARNER-LAMBERT COMPANY LLC,
`
`Opposer,
`
`v.
`
`OPPOSITION NO. 91157791
`
`ROCKY FORK FORMULAS, INC.,
`
`Applicant.
`
`APPLICANT’S RESPONSES AND OBJECTIONS TO OPPOSER’S FIRST SET OF
`REQUESTS FOR ADMISSIONS TO APPLICANT
`
`Pursuant to Rule 2.120 of the Trademark Rules of Practice and Rule 36(a) of the
`
`Federal Rules of Civil Procedure, Applicant-Defendant Rocky Fork Formulas, Inc. (“Applicant”)
`
`hereby responds and objects to the First Set of Requests for Admissions by Opposer Warner-
`
`Lambert Company LLC (“Opposer”).
`
`Since the discovery in this proceeding has only recently commenced, Applicant may
`
`not yet be privy to certain information, facts, and documents pertinent to Opposer’s Requests.
`
`Accordingly, Applicant reserves its rights to amend, alter, or supplement these responses and
`
`objections hereto at some later date.
`
`The responses herein are based upon information obtained from or assembled by
`
`Applicant’s representatives and others, and upon the advice of Applicant’s counsel. Applicant
`
`reserves the right to make any changes in these responses if it appears that omissions or errors have
`
`been made therein or that further or more accurate information is available. Applicant has not fully
`
`completed its own discovery and other investigations of fact. Accordingly, the following responses
`
`state Applicant’s knowledge, information, and belief as of the date of these responses.
`
`1
`
`.mMAY 102w
`
`

`

`Applicant its right to object to further discovery concerning the subject matter of
`
`Opposer’s Requests or these responses.
`
`These responses are for purposes of discovery, and no response below constitutes a
`
`waiver of any and all evidentiary objections that Plaintiff might make at trial to the use of such
`
`response(s) and/or information and/or documents mentioned herein.
`
`GENERAL OBJECTIONS
`
`A. Applicant objects to Opposer’s Requests to the extent that they call for attorney
`
`work product or the impressions, conclusions, opinions, legal research, or theories of Applicant’s
`
`attorneys, including but not limited to those of Applicant’s counsel’s experts pursuant to the Federal
`
`Rules of Civil Procedure. Applicant also objects to Opposer’s Requests to the extent that they call
`
`for information or communications protected by the attorney-client privilege, the right to privacy
`
`provided by the United States Constitution, or any other applicable privilege or protection.
`
`In
`
`particular, Applicant objects to these Requests to the extent that they seek confidential tax and other
`
`information, including but not limited to Federal, State, and Local tax returns, W-4s, and other such
`
`confidential and protected documents, deemed protected and confidential under the United States
`
`Constitution and the Ohio State Constitution as well as other applicable law.
`
`B. Applicant objects to Opposer’s Requests to the extent that they purport to require
`
`Applicant to