BULKY DOCUMENTS
`(Exéeeds 300 pages)
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`Proceeding/Serial No:
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`9[]:flffl§_
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`Filed:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of trademark application Serial No. 76/506,818
`Filed: April 14, 2003
`- For the mark: CANDY LAND in International Class 32
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`Published in the Official Gazette: December 16, 2003
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`SPERO T. HARITATOS,
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`Opposer,
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`V.
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`HASBRO, INC.,
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`Applicant.
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`Opposition No. 91/159,145
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`APPLICANT'S MEMORANDUM OF LAW IN SUPPORT OF ITS
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`MOTION UNDER RULES 37 AND 56(F) TO COMPEL AND PERMIT DISCOVERY
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`Applicant Hasbro, Inc. ("Hasbro") submits this memorandum of law in support of
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`its Motion Under Rules 37 and 56(f) to Compel and Permit Discovery ("Motion").1
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`PRELIMINARY STATEMENT
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`Since the Board entered a protective order in this case making it possible for
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`discovery to proceed, Opposer Spero T. Haritatos has obstructed discovery at every opportunity.
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`He has failed to produce documents and responses to interrogatories when promised, generally
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`delayed producing documents and information until late in the discovery period, refused to
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`produce documents in response to clear and reasonable document requests, and filed frivolous
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`motions to distract from the business of discovery. Now, after consistently stonewalling
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`Hasbro's discovery efforts, Opposer has filed a Motion for Summary Judgment in an attempt to
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`avoid a full and fair consideration of his Opposition on its merits.
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`There is much discovery that still needs to be accomplished in this Opposition,
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`both to prepare for the testimonial period and to respond to Opposer's Motion for Summary
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`Judgment. Indeed, Hasbro has only been able toiscratch the surface of the dubious claim
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`asserted in Opposer's Motion for Summary Judgment that his Candyland mark has been used in
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`commerce since the 1920s. Further discovery is necessary in order to determine the truth of this
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`and related claims, which are beyond the scope of Opposer's original pleadings.
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`Therefore, Hasbro respectfully requests that the Board order Opposer to comply
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`with his discovery obligations by producing documents in response to Hasbro's discovery
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`requests as described more fully below. Hasbro further requests that the Board extend discovery
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`1 Applicant is filing this motion separate and apart from its Memorandum of Law in Opposition to
`Opposer's Motion For Summary Judgment because TBMP 528.06 requires a Rule 56(1) motion in
`response to a Motion For Summary Judgment to be "clearly made, and certainly not buried somewhere in
`a responsive brief or other papers[.]" Accordingly, Hasbro brings this motion to compel and permit
`discovery pursuant to Fed. R. Civ. P. 37 and 56(f), notwithstanding the TTAB"s February 17, 2005 Order
`suspending the proceedings pending disposition of Opposer's Motion for Summary Judgment, because the
`motion is relevant to Opposer's Motion for Summary Judgment and required by TBMP 528.06.
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`2
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`for Applicant for sixty days following entry of the Board's order. This is necessitated by
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`Opposer's dilatory tactics and the issues raised in Opposer's Motion for Summary Judgment.
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`Opposer, however, has requested no additional discovery and therefore should not be granted
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`any.
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`STATEMENT OF FACTS
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`A.
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`Background
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`Hasbro has applied to register its famous CANDY LAND trademark for a variety
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`of beverages. Hasbro owns prior registrations for that mark for a variety of goods. These
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`registrations include: No. 544,328 in International Class 28 (board games), registered on June 26,
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`1951; No. 1,325,796 in International Class 16 (books), registered on March 19, 1985; No.
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`2,580,172 in International Class 24 (beach towels), registered on June 11, 2002; No. 1,295,810 in
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`International Class 9 (phonograph records), registered on September 18, 1984; No. 2,666,291 in
`International Class 9 (computer game programs), registered on December 24, 2002; and No.
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`2,784,765 in International Class 16 (playing cards), registered on November 18, 2003.
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`Over the past 53 years, CANDY LAND has become well-known to generations of
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`children (and their parents) who have grown up playing Hasbro's CANDY LAND board games. —
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`As a result of the widespread popularity of the CANDY LAND game, the CANDY LAND
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`trademark has become a valuable corporate asset of Hasbro. Consequently, Hasbro uses the
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`mark to market other games and products. In the present matter, Hasbro has applied to use the
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`mark "CANDY LAND" on goods that are a natural extension of Applicant's previously
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`registered famous "CANDY LAND" goods.
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`Opposer Spero T. Haritatos opposes Hasbro's registration on the grounds that it is
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`allegedly using the trademark CANDYLAND in connection with the sale of candy at a store in
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`Rome, New York. This opposition will determine whether Hasbro may register its famous
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`P
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`CANDY LAND trademark for beverages and will accordingly deal with Opposer's contention
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`that Hasbro's use of its famous mark on beverages would be likely to cause confusion with his
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`small store in a small city in upstate New York.
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`B.
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`Discovery
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`Discovery in this Opposition opened on February 11, 2004 and Hasbro served its
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`First Set of Requests to Opposer For Production of Documents and Things and its First Set of
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`Interrogatories on April 7, 2004. (Sant'Ambrogio Decl. Ex. T and H.) On May 11, 2004,
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`Opposer responded to Hasbro's discovery requests by asserting a nearly identical paragraph
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`comprising a litany of boiler-plate objections to every one of Hasbro's Document Requests and
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`Interrogatories. (Sant'Ambrogio Decl. Ex. U and V.) Soon thereafter, discovery stalled over the
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`failure of the parties to reach an agreement regarding several aspects of a protective order.
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`Opposer wanted Hasbro to produce its non-confidential documents while the dispute over the
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`protective order was resolved, but Hasbro objected to conducting discovery in two stages (non-
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`confidential and confidential) as unnecessarily burdensome and inefficient. As a result, Opposer
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`moved for default judgment pursuant to 37 C.F.R. § 2.120(g)(2) (although a motion to compel
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`was the appropriate means of relief) and Hasbro moved for entry of a protective order. On
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`December 15, 2004, the Board denied Opposer's motion for default judgment and entered a
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`protective order. In addition, the Board ordered Applicant to produce certain documents and
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`amend certain interrogatory responses.
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`Since the Board entered a protective order, this Opposition has once again begun
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`to move forward due to Applicant's efforts. Hasbro produced its responsive documents and
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`things for inspection, including documents containing trade secrets and proprietary information
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`under the protective order, on January 14, 2004. (Sant'Ambrogio Decl. Ex. A.) On the same
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`day, Applicant provided Opposer with amended responses to his interrogatories and Applicant's
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`privilege log pursuant to the Board's December 15, 2004 Order.
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`(Li. Ex. A and B.)
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`Hasbro completed its document production and responded fully to all of
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`Opposer's discovery requests within 30 days of the Board's December 15, 2004 Order. (It; 112.)
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`Furthermore, after discovery resumed, Hasbro immediately wrote Opposer's counsel concerning
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`deficiencies in Opposer's discovery responses in an attempt to move discovery forward.
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`(Id_. Ex.
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`C.) But Hasbro's diligence was without effect.
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`Opposer has obstructed discovery at every opportunity. Opposer has not
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`produced, and in some cases has outright refused to produce, any documents in response to a
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`host of clear and relevant document requests propounded by Hasbro, including documents that
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`would establishes the channels of trade in which his goods are sold and the geographic and
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`demographic characteristics of his consumers.
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`(I_cL 111] 3, 4, 13, 15.)
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`Moreover, Opposer has failed to produce documents when promised and
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`generally produced his documents late in discovery, preventing Hasbro from taking the follow-
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`up discovery to which it is entitled. (Sant'Ambrogio Decl. fil 4 and Ex. F, G, I, and J.) Indeed,
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`Opposer did not provide Hasbro with a full response to Hasbro's First Set of Interrogatories
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`(which Hasbro served on April 7, 2004) until 5:17 P.M. on Friday, February 11, 2005, the
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`business day before discovery in this Opposition closed? (@114 and Ex. I.)
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`Counsel for Hasbro has tried in good faith to resolve the problems with Opposer's
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`discovery responses and conduct. (Id. 11 14 and Ex. C and K.) But Opposer has simply refused
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`to cooperate in discovery. Indeed, during the parties‘ final "meet and confer," conducted on
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`February 7, 2005, counsel for Opposer admitted that he had not even asked his client to search
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`for documents in response to several of Hasbro's document requests. Opposer had agreed to
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`2 Opposer faxed Hasbro his privilege log to Hasbro a few minutes later on the same day.
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`(I_d_. Ex. J.)
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`5
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`produce relevant, non-privileged documents in response to these requests on May 11, 2004. (id.
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`1] 15 and Ex. T, Responses Nos. 10, 11, 12, and 23.) When Hasbro's counsel expressed disbelief
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`at counsel's conduct, Opposer's counsel stated that he was "not cooperating" with Hasbro's
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`discovery. (E. 1] 15.)
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`In addition, although counsel for Opposer promised during the same telephone
`conversation to produce his confidential documents in response to Hasbro's First Set of
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`Document Requests by February 11, 2005 (the second to last day of discovery), no such
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`documents have been produced. (Id. 1] 16 and Ex. L.)
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`Opposer testified during his recent deposition that he maintains a computer
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`database with information regarding all of the customers to whom he ships his products and has
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`sales receipts for his wholesale orders. (Tr. Haritatos Dep., 2/16/05 ("Haritatos Dep."), at 52:16-
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`54:5; 64:14-65: 12, attached to Sant'Ambrogio Decl. as Ex. N.) Thus, Opposer has documents
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`responsive to Hasbro's discovery requests but has simply failed to search for or produce these
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`documents.
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`Opposer's Motion For Summary Judgment raises several new factual issues that
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`necessitate further discovery. For example, although Haritatos swore under oath in his
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`trademark application for the "Candyland" mark, which he filed in 1992 (Sant'Ambrogio Decl,
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`Ex. M), that the mark had been used in commerce since 1975, in his Motion for Summary
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`Judgment, Haritatos claims that his mark has been used in commerce since the 1920s. (Mot.
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`Summ. J. at 7.) Accordingly, although it was not apparent from the face of Opposer's pleadings
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`when he filed this Opposition, Hasbro must now explore whether Candyland was used as a
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`trademark in commerce in the 1920s by a restaurant in Rome, New York, whether it has been
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`used in commerce continuously since that time, and, if so, whether Opposer ever obtained the
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`rights to the name of the restaurant. The answers to these questions will determine whose mark
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`has priority. It is uncontested that Hasbro's famous CANDY LAND mark has been in use since
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`1949.
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`Conversely, because certain documents and Opposer's recent deposition testimony
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`are at odds with both the factual allegations regarding priority in his Motion For Summary
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`Judgment and his sworn declarations in his trademark applications, see Brief in Opp. To Mot.
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`Summ. J ., at 7-10, 21-22, and 23, Hasbro must also explore whether Opposer fraudulently
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`obtained his trademark registration for "Candyland." For example, Hasbro needs all documents
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`in Opposer's or his lawyer's possession concerning Nora Haritatos's "Original Thin Shell Candy
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`Turkey Joints" trademark registration, including any specimens submitted therewith, which was
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`obtained in 1976. (Sant'Ambrogio Decl. 1] 12.) This document alone casts doubt on Opposer's
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`claim that his business was using the "Candyland" mark in 1975. Opposer's fraudulent
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`trademark application for "Candyland" would support Hasbro's petition for cancellation of
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`Opposer's mark. See 15 U.S.C.A. § 1064(3).
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`Hasbro has already served document requests regarding these issues
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`(Sant'Ambrogio Decl. Ex. Q and R), to the extent that they are not covered by Hasbro's initial
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`discovery requests. Once Opposer completes his production of responsive documents, Hasbro
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`will need to complete the deposition of Opposer and take an additional deposition of one of
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`Opposer's relatives, because Opposer himself admits that he has only indirect knowledge of the
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`Candyland restaurant.
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`(S. Haritatos Aff. 1] 2.)
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`C.
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`Hasbro's Motion Under Rules 37 and 56(f)
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`Accordingly, Hasbro is filing this Motion Under Rules 37 and 56(:t) To Compel
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`and Permit Discovery related to whether there is any likelihood of confusion between the two
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`marks, the issue of priority, and whether Opposer fraudulently obtained his trademark
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`registration for Candyland. Specifically, Hasbro requests the opportunity to benefit from its
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`outstanding discovery requests related to these issues and depose Olga Haritatos regarding the
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`purported use of the Candyland mark prior to the 1970s. (Sant'Ambrogio Decl. 111] 18-20.)
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`Hasbro cannot challenge Opposer's assertions in his Motion For Summary Judgment without
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`discovery on these issues.
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`(1<_l_.) In addition, this discovery is necessary to proceed with the
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`testimonial period in this Opposition and warranted due to Opposer's obstruction of discovery.
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`Based on Hasbro's recent deposition of Opposer, in which he recanted many of the factual claims
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`in his Motion for Summary Judgment, Hasbro is confident that this discovery will create
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`additional issues of material fact to overcome Opposer's motion.
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`In addition, Hasbro seeks discovery regarding Nora Haritatos's 1976 application
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`to register the "Original Thin Shell Candy Turkey Joints" trademark and the specimens
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`submitted therewith (I_cl_. and Ex. O) to determine which mark Opposer's business was using in
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`1975 when Opposer claims that it was using the "Candyland" mark. Opposer or his lawyer
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`should have a copy of all the documents filed with the application. Hasbro should be provided
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`these opportunities for discovery under TBMP section 528.06 and Fed. R. Civ. P. 56(f).
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`ARGUMENT
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`The purpose of discovery is to advance the case so that it may proceed in an
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`orderly manner within reasonable time constraints. En Fleur Corp. v. Microsoft Corp. ,
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`Cancellation No. 26,548, 1998 WL 197595, *3 (T.T.A.B. Apr. 21, 1998). Parties are entitled to
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`discovery regarding any matter, not privileged, that is relevant to their claim. Fed. R. Civ. P.
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`26(b)(1). The requirement of relevancy is generally construed liberally and discovery
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`generously allowed unless it is clear that the information which is sought can have no possible
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`bearing on the issues involved in the particular proceedings. See Fed. R. Civ. P. 26(b)(l). See
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`also Johnston Pump/Valve Inc. v. Chromalloy Am. Corp, 10 U.S.P.Q.2d (BNA) 1671 (T.T.A.B.
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`1988); and TBMP § 402.01. "During discovery, a party may seek not only testimony and
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`exhibits which would be admissible evidence but also information that would be inadmissible at
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`trial if the information appears reasonably calculated to lead to the discovery of admissible
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`evidence.
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`Id. at 1675. If a party has received evasive or incomplete answers to discovery
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`requests, the party can move to compel disclosure of materials sought pursuant to TBMP § 523,
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`37 C.F.R. §2.120(e), and Fed. R. Civ. P. 37.
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`Moreover, when a party's ability to respond to a motion for summary judgment is
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`constrained because of an inability to take needed discovery, Fed, R. Civ. P. 56(f) allows a court
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`to delay disposition of the motion and allow the party to take such discovery. Fed. R. Civ. P.
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`56(f); TBMP § 528.06. TBMP 528.06 instructs that "[a] request for 56(f) discovery should be
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`clearly made, and certainly not buried somewhere in a responsive brief or other papers[.]"
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`Accordingly, Hasbro brings this motion to compel and permit discovery pursuant to Fed. R. Civ.
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`P. 37 and 56(f) and 37 C.F.R. § 2.120(e).
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`I.
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`THE BOARD SHOULD COMPEL OPPOSER TO PRODUCE
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`DOCUMENTS IN RESPONSE TO HASBRO'S DOCUMENT REQUESTS
`TO ALLOW HASBRO TO RESPOND TO OPPOSER'S MOTION FOR
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`SUMMARY JUDGMENT AND PREPARE FOR ITS TESTIMONIAL
`PERIOD.
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`A.
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`Hasbro Needs Discovery Regarding the Likelihood of Confusion
`Between the Two Marks.
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`Opposer has failed to produce, and in some cases even refused to search for,
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`relevant documents requested in Hasbro's First Request for Production of Documents and
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`Things. (Sant'Ambrogio Decl. W 13, 15 and 17 and Ex. L and T.) Hasbro has made a good faith
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`effort to resolve the problem with Opposer. (Q 11 14.) These documents are necessary to
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`respond to the issues of priority and likelihood of confusion raised in Opposer's Motion for
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`Summary Judgment and to prepare for Hasbro's Testimonial Period. Accordingly, Opposer
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`respectfully requests that the Board order Opposer to produce the following documents in
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`response to Hasbro's First Set of Document Requests (Sant'Ambrogio Decl. Ex. T)
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`(1)
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`All documents concerning any business, marketing or media plans or the
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`like prepared by or for Opposer referring or relating to any products and services bearing, using,
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`adopting or affiliated with Opposer's CANDYLAND mark (Request No. 5);
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`(2)
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`Documents sufficient to identify the channels of trade through which
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`products and services in the United States bearing, using, adopting or affiliated with Opposer's
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`CANDYLAND mark have been or will be sold or provided (Request No. 10);
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`(3)
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`Documents sufficient to identify the geographic area in which products
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`and services in the United States bearing, using, adopting or affiliated with Opposer's Candyland
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`mark have been or will be sold or provided (Request No. 11);
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`(4)
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`Documents sufficient to identify the demographics of actual or intended
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`clients and consumers for products and services bearing, using, adopting or affiliated with
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`Opposer's Candyland mark (Request No. 12);
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`(5)
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`Documents sufficient to show by quarter the sales or anticipated sales and
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`gross revenues, net revenues and revenues for each year of every actual or intended product(s)
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`and service(s) bearing, using, adopting or affiliated with Opposer's Candyland mark (Request
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`No. 13);
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`(6)
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`All documents relating to the prosecution of Opposer's applications for
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`Opposer's Candyland mark, including any applications in the United States or elsewhere for the -
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`Candyland mark (Request No. 23).
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`These are clear requests for information relevant to this Opposition and Opposer's
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`Motion for Summary Judgment. In order to determine the merits of Opposer's claims, the Board
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`must know, the extent of Opposer's sales, where Opposer's products are sold, to whom, and by
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`what means. Otherwise, the Board will not be able to adequately assess whether there is any
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`likelihood of confusion on the part of consumers concerning the two marks.
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`To date, there is no evidence in the record, other than Opposer's own unsupported
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`and self-serving assertions, that his products are sold outside of the Rome-Utica, New York
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`region. Moreover, the extent of those sales, if any, are unknown. But Opposer testified that he
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`maintains a computer database with information regarding the customers to whom he ships his
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`products and sales receipts for his wholesale orders. Therefore, Opposer is able to produce
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`documents responsive to Hasbro's requests and the Board should compel him to do so to permit
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`Hasbro to respond to his Motion for Summary Judgment and prepare for its Testimonial Period.
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`B.
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`Hasbro Needs Discovery Regarding Opposer's Contention of First Use
`of the Mark Overall.
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`The Board should permit Hasbro to take discovery aimed at exploring the factual
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`allegations regarding first use asserted in Opposer's Motion For Summary Judgement.
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`Specifically, Hasbro should be permitted to depose Olga Haritatos, who was a party to the sale of
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`the equipment used to make Turkey Joints and the only person who appears to have personal
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`knowledge regarding the Candyland restaurant. See 0. Haritatos Aff. 111] 11-13. Olga Haritatos's
`knowledge and recollection of the Candyland restaurant and its demise are essential to the truth
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`of Opposer's claims and Hasbro should have the opportunity to probe her knowledge. Hasbro
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`cannot challenge Opposer's assertions regarding priority of use without discovery on these
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`issues. Based on Hasbro's recent deposition of Opposer, in which he recanted many of the
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`factual claims in his Motion for Summary Judgment, Hasbro is confident that this discovery will
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`create additional issues of material fact to overcome Opposer's motion.
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`C.
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`Hasbro Needs Discovery Regarding Whether Opposer Fraudulently
`Obtained His Trademark Applications.
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`Finally, Hasbro is entitled to further discovery regarding Opposer's use of the
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`Candyland mark in support of Hasbro's petition for cancellation. Based on Opposer's recent
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`11
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`deposition and business documents, including prior trademark applications, it appears likely that
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`Opposer's registrations for "Original Candyland Candy Turkey Joints" and "Candyland" were
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`obtained fraudulently, because he did not begin to use either mark until the 1980s, contrary to his
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`sworn declaration. This provides an additional basis for cancellation of his registration. See 15
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`U.S.C.A § 1064(3). Hasbro has only begun to scratch the surface of what use Opposer made of
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`his Candyland mark and when.
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`Therefore, Hasbro should be permitted discovery regarding these issues, including
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`discovery regarding Nora Haritatos's application to register the "Original Thin Shell Candy
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`Turkey Joints" trademark in 1976. This discovery may reveal exactly which mark Opposer"s
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`business was using in 1975 when Opposer claims that it was using the "Candyland" mark.
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`Opposer or his lawyer should have a copy of all the documents filed with the application and
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`Hasbro should be provided this opportunity for discovery under TBMP section 528.06 and Fed.
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`R. Civ. P. sea).
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`II.
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`THE BOARD SHOULD COMPEL OPPOSER TO IDENTIFY THE
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`GROUNDS OF HIS OBJECTIONS TO HASBRO'S DISCOVERY
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`RESPONSES AND THE DOCUMENTS THAT HE HIS WITHHOLDING
`BASED UPON HIS OBJECTIONS.
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`In light of counsel for Opposer's recent statement that he has not even asked his
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`client to search for documents responsive to certain document requests, notwithstanding his
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`representation on May 11, 2004 that he would produce documents responsive to these requests if
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`any existed, the Board should order Opposer to review his discovery responses, identify the
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`grounds of his objections, and state whether he is withholding documents based on his
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`objections.
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`The Federal Rules require that the attorney signing a response to discovery
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`requests make a "reasonable inquiry" into the factual basis of his response. E Fed. R. Civ. P.
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`26(g) (advisory committee notes). The attorney's signature on the responses certifies that the
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`lawyer has made a reasonable effort to assure that the client has provided all information and
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`documents that are available to him that are responsive to the discovery requests. Li. Such an
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`effort does not appear to have been made here.
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`Opposer asserts identical paragraphs comprising a litany of boiler-plate objections
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`to each and every one of Hasbro's Requests for Production and Interrogatories. In most cases,
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`the reasons for the objections are not at all apparent. In many cases, the objections are simply
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`ludicrous. Solely by way of example, Hasbro's first document request seeks: "Two samples of
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`any actual or intended products and services by Opposer in the United States that bear Opposer's
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`CANDYLAND mark." The request is simple and straightforward. Yet, Opposer responds that
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`the request is "vague, ambiguous, and unintelligible. Opposer also objects to Request No. 1 as
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`overbroad, oppressive, and unduly burdensome and seeks information outside the scope of
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`discovery permitted by the Federal Rules of Civil Procedure, the Rules of Practice in Trademark
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`Cases set forth in Title 37 of the Code of Federal Regulations, and the Trademark Trial and
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`Appeal Board Manual of Procedure[,]" and so forth. This is but one example, based on
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`Opposer's very first objection. Moreover, Opposer asserts the very same objections to every
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`request for production (a complete response on the part of Hasbro to every boiler-plate objection
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`on the part of Opposer would require more paper than the discovery requests themselves),
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`suggesting that Opposer has not taken the time to read the requests.
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`Accordingly, the Board should order Opposer to either withdraw his objections on
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`these bases or provide an explanation of why each such request is vague, ambiguous,
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`unintelligible, overbroad, oppressive, unduly burdensome, beyond the scope of discovery, not
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`relevant to the subject matter of this opposition proceeding or the claims or defense of any party,
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`or is not reasonably calculated to lead to the discovery of admissible evidence. In addition, he
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`should state whether he has searched for documents responsive to each request and whether he is
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`withholding any documents on the basis of his objections.
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`For those requests where Opposer has not asserted an appropriate objection, it is
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`not sufficient for Opposer to respond that he will produce "relevant non-privileged documents, if
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`any such documents exist." Rather, the Fed. R. Civ. P. require Opposer to produce all
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`"responsive, non-privileged documents requested," or identify the documents that Opposer will
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`not produce and state the reasons for the objection. As discussed above, the requirement of
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`relevancy is generally construed liberally and discovery generously allowed unless it is clear that
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`the information which is sought can have no possible bearing on the issues involved in the
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`particular proceedings and cannot lead to the discovery or relevant evidence. See Fed. R. Civ. P.
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`26(b)(l).
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`Accordingly, the Board should order Opposer to produce "all responsive non-
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`privileged documents that exist" in response to each request, or identify the responsive, non-
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`privileged documents that Haritatos will not produce and explain the basis for withholdinglsuch
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`documents. This is necessary for Hasbro to respond to Opposer's Motion for Summary
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`Judgment and to prepare for Hasbro's Testimonial Period.
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`III.
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`OPPOSER MAY NOT WITHHOLD DOCUMENTS BECAUSE HE
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`BELIEVES THEY ARE PUBLICLY AVAILABLE.
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`Finally, Opposer improperly asserts objections to several requests as seeking
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`documents that are "publicly available to Applicant." While Opposer has no obligation to obtain
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`responsive documents from the public record that are not already in his custody, possession, or
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`control, a party does have an obligation to produce all responsive, non-privileged documents and
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`things within its custody, possession or control, regardless of whether they are in the public
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`record or otherwise available to Applicant. Accordingly, the Board should order Opposer to
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`withdraw this objection to Request Nos. 2, 6, 8, 10, 23, 24, and 26, and confirm that Opposer
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`will produce all responsive, non-privileged documents in response thereto.
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`IV.
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`THE BOARD SHOULD EXTEND THE DISCOVERY PERIOD FOR
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`APPLICANT DUE TO OPPOSER'S OBSTRUCTIVE CONDUCT AND
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`PERMIT DISCOVERY IN RESPONSE TO OPPOSER'S MOTION FOR
`SUMMARY JUDGMENT AND TO PREPARE FOR HASBRO'S
`TESTIMONIAL PERIOD.
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`A party who receives discovery requests early in the discovery period may not, by
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`delaying its response thereto, or by responding improperly so that its adversary is forced to file a
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`motion to compel discovery, rob its adversary of the opportunity to take "follow-up" discovery.
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`Such a delay or improper response constitutes "good cause" for an extension of the discovery
`period for the propounding party. TBMP § 403.04; 37 C.F.R. § 2.l2l(a)(l).
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`Hasbro served its first set of discovery requests on Opposer on April 7, 2004.
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`(Sant'Ambrogio Decl. Ex. H and T.) But Opposer did not produce documents in this Opposition
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`until January and February of 2005.
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`(LCL Ex. F and G.) And Opposer did not provide his full
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`response to Habro's First Set of Interrogatories until 5:17 p.m. on February 11, 2005 -— the
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`business day before discovery closed in this Opposition.
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`(LC; 1] 4 and Ex. I.) Opposer may not
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`delay responding to Applicant's discovery requests and thereby rob Hasbro of the opportunity to
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`take "follow—up" discovery. TBMP § 403.04; 37 C.F.R. § 2.l2l(a)(l).
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`Moreover, Opposer has not fully responded to Hasbro's requests. In fact,
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`Opposer's counsel represented to Hasbro's counsel during the parties’ final "meet and confer" that
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`counsel had not even asked his client to search for documents responsive to Hasbro's First Set of
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`Document Requests, Requests Nos. 10, ll, 12, and 23. And Opposer has still not produced
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`documents responsive to Hasbro's First Set of Document Requests, Requests Nos. 5 and 13. Yet,
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`Opposer promised to produce documents responsive to these requests on May 1 1, 2004.
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`15
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`Finally, during Opposer's recent deposition, Opposer's counsel refused out—of-
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`hand to respond to any of the requests made by Hasbro's counsel for information and documents
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`related to Opposer's testimony, even though Hasbro had requested many of these documents long
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`ago. (Haritatos Dep. at 71 :3-73:4; 78:20-79:8.)
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`Indeed, counsel for Opposer has been so uncooperative during discovery, that in
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`many cases it is difficult to determine whether Opposer has fully responded to Hasbro's
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`discovery requests. For example, counsel for Opposer refuses to confirm whether he is, in fact,
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`withholding any documents based on the litany of identical boiler-plate objections that he asserts
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`in response to each and every one of Hasbro's discovery requests. It is therefore impossible even
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`to determine the practical effect of Opposer's objections. (Sant'Ambrogio Decl. Ex. L.)
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`Opposer's behavior would be bad enough if the scope of discovery had not
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`expanded beyond the contours of his original Opposition. B_ut Opposer now claims in his
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`Motion For Summary Judgment, notwithstanding his sworn statement to the contrary in his
`trademark application for "Candyland" (filed in 1982), that he has rights to the "Candyland"
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`mark stretching back as far as the 1920s. This raises new factual issues regarding priority.
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`Accordingly, additional discovery is necessary for Hasbro to respond to Opposer's Motion For
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`Summary Judgment and to prepare for Hasbro's Testimonial Period. Specifically, Hasbro should
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`be permitted to take the deposition of Olga Haritatos, an affiant in support of Opposer's Motion
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`for Summary Judgment and the only individual who claims to have direct knowledge of the use
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`of Opposer's mark prior to 1975. In addition, Hasbro should be permitted further discovery
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`regarding when Opposer first used his Candyland mark, including discovery concerning the
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`application of Nora Haritatos to register the "Original Thin Shell Candy Turkey Joints" mark in
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`1976. This discovery is necessary to determine whether Opposer's trademark applications were
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`fraudulently obtained
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`16
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`In sum, Opposer has prevented Hasbro from obtaining the discovery to which it is
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`entitled. Consequently, there is good cause to extend the discovery period for Hasbro and permit
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`Hasbro to take discovery to respond to Opposer's Motion for Summary Judgment and to prepare
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`for its Testimonial Period. See Fed. R. Civ. P. 56(f) and TBMP § 528.06 (when a party's ability
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`to respond to a motion for summary judgment is constrained because of an inability to take
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`needed discovery, Fed, R. Civ. P. 56(f) allows a court to delay disposition of the motion and
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`allow the party to take such discovery).
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`Specifically, Hasbro respectfully requests the Board to order Opposer to:
`
`(1)
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`produce documents in response to Hasbro's First Set of Document
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`Requests, Requests Nos: 5, 10, ll, 12, 13, and 23 (Sant'Ambrogio Decl. Ex. T and U);
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`(2)
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`produce documents in response to Hasbro's Second and Third Set of
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`Document Requests (I_d_, Ex. Q and R); and
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`(3)
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`appear for completion of his deposition begun on February 16, 2005, with
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`the costs of Hasbro's counsel to return to Rome, New York for the completion of Opposer's
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`Deposition to be assessed against Opposer.
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`In addition, Hasbro respectfully requests that the Board extend discovery for 60
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`days solely for Hasbro and permit Hasbro to:
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`(1)
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`take the deposition of Olga Haritatos; and
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`(2)
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`take further discovery regarding the issues of priority and whether
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`Opposer fraudulently obtained his trademark for "Candyland."
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`Opposer, however, should not be permitted to conduct any further discovery. He
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`had an opportunity to take discovery but chose to focus instead on obstructing Hasbro's
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`discovery and filing frivolous motions in an attempt to avo