me
`
`G A R D E R E
`
`l attorneys and counselors I wu/w.gardere.com
`
`April 6, 2007
`
`Writer’s Direct Dial 214-999-4582
`Direct Fax 214-999-3582
`klarson@gardere.com
`
`U.S. Patent and Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`.
`Alexandria, VA 22313-1451
`Re:
`In the Matter of Application/Serial No. 76/383872
`Opposition No. 91159604
`Published in the Official Gazette on January 13, 2004
`Holman & Moody, Inc. v. Safir GT40 Spares Limited .
`
`Certified Article Number
`.
`- 7150 3'10]. ‘lblfi D355 55].?
`SENDERS RECORD V
`_\
`7_
`p_
`_ K
`_
`_p
`'
`/ Z
`‘ E L l: 3 l= 3 :1 l= 3 E D U S
`
`Dear Sir or Madam:
`
`Please find enclosed the following documents to be filed in the above-identified matter:
`
`0 Opposer Holman & Moody,
`Sanctions; and
`0 Return postcard
`
`Inc.’s Motion to Stay Proceedings and Request
`
`for
`
`the
`If this is incorrect,
`is believed that no additional fee is due with this filing.
`It
`Commissioner is hereby authorized to charge any fee which may be required to Deposit Account
`07-0153.
`
`Respectfully submitted,
`
`GARDERE WYNNE SEWELL LLP
`
`0%» /KL
`
`Karl L. Larson
`
`KLL/kb
`
`Enclosure
`
`cc:
`
`Bruce Tittel
`
`Via Certified Mail No. 7610 3901 9849 0968 551 7
`
`GARDERE WYNNE SEWELL LLP
`
`3000 Thanksgiving Tower, 1601 Elm Street, Dallas, Texas 75201-4761 I 214.999.3000 Phone I 214.999.4667 Fax
`Austin I Dallas
`I Houston I Mexico City
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In The Matter of Application Serial No. 76/383872
`Published in the Oflicial Gazette on January 13, 2004
`. C1
`12
`In
`
`ass
`
`&
`
`,
`
`Opposer,
`
`V_
`
`SAFIR GT40 SPARES, LIMITED,
`
`Applicant.
`
`)
`)
`)
`)
`
`)
`
`)
`
`Express Mail Certificate Under 37 C.F.R. § 1.10
`“EXPRESS MAIL" MAILING LABEL NUMBER:
`EL636896360US
`DATE or DEPOSIT: April 6, 2007
`1, Kelly Breeze, hereby certify that this paper (along with any papers and fees
`referred to as being attached or enclosed or actually enclosed) is being deposited
`with the United States Postal Service “EXPRESS MAIL POST OFFICE TO
`ADDRESSEE” service under 37 C.F.R. § 1.10 on the date indicated above, with
`sufficient postage, and is addressed as follows: Trademark Trial and Appeal Board,
`U.S. Patent and Trademark Oflice, PO. Box 1451, Alexandria, VA 22313-1450
`
`
`
`Signature ofperson mailing aper
`
`
`Kell Breeze
`
`
`
`Opposition No. 9 159604
`
`OPPOSER HOLMAN & MOODY, INC.’s MOTION TO STAY
`PROCEEDINGS AND REQUEST FOR SANCTIONS
`
`I. INTRODUCTION
`
`Opposer Holman & Moody,
`
`Inc.
`
`(“Opposer” or “Holman & Moody”) respectfully
`
`requests this Board to (i) stay all proceedings and discovery during the pendency of Opposer
`
`Holman & Moody, Inc.’s Motion to Compel Applicant Safir GT40 Spares, Limited to Answer
`
`Certain of Opposer’s Interrogatories and Requests for Admissions and to Produce Certain
`
`Documents and Things (“Motion to Compel”); (ii) order, in accordance with TBMP § 407 .03(a),
`
`that the requests for admissions in Holman & Moody, Inc.’s Second Set of Requests for
`
`Admissions will stand admitted; and to (iii) order, in accordance with TBMP § 406.04(a), that
`
`Safir has forfeited its right to object to the requests on their merits in Holman & Moody, Inc.’s
`
`Third Request for Production of Documents and Things.
`
`Although Holman & Moody has repeatedly made good faith efforts pursuant to TBMP §
`
`523.02 and 37 C.F.R. § 2.l20(e)(l) to secure the cooperation of Safir GT40 Spares, Limited
`
`(“Saf1r” or “Applicant”) in resolving this dispute, the parties reached an impasse and Holman &
`
`

`
`Moody was forced to file its Motion to Compel in accordance with FED. R. CIV. P. 36(a) and 37
`
`C.F.R. § 2.120(e). Holman & Moody currently awaits the Board’s ruling on its Motion to
`
`Compel. On April 2, 2007, Safir filed Applicant Safir GT40 Spares Limited’s Motion for
`
`Summary Judgment, To Stay all Proceedings and Request for Extension of Discovery Period, if
`
`Needed (“Second Motion for Summary Judgment”). Holman & Moody requests that Safir’s
`
`Second Motion for Summary Judgment be included in the stay requested by this Opposer
`
`Holman & Moody, Inc.’s Motion to Stay Proceedings and Request for Sanctions (“Motion to
`
`Stay”).
`
`II. FACTS
`
`This action commenced on February 12, 2004, when Holman & Moody filed its Notice of
`
`Opposition to the registration of the mark shown in App. Ser. No. 76/383,872 (“Opposed Mark”
`
`or “Applicant’s Mark”).
`
`On August 5, 2004, Safir was served with Opposer’s First Set of Interrogatories and
`
`Opposer’s First Request for Production of Documents and Things. Motion to Compel, Exhs. B
`
`and C. On August 25, 2004, Safir was served with Opposer’s Notice of Deposition for a
`
`30(B)(6) officer, director, or other designee of Safir. Holman & Moody’s 30(B)(6) deposition
`
`was originally scheduled for September 14, 2004, but was later canceled due to the unavailability
`
`of all of the relevant parties for Safir.
`
`On September 7, 2004, without substantively responding to any of Holman & Moody’s
`
`written discovery requests, Safir moved for summary judgment, and requested that discovery be
`
`stayed and that the discovery period be extended in Applicant’s Motion for Summary Judgment,
`
`to Stay all Proceedings and Request for Extension of Discovery Period, if Needed to Holman &
`
`Moody (“First Motion for Summary Judgment”).
`
`In the First Motion for Summary Judgment,
`
`

`
`Safir argued that Holman & Moody had abandoned any “owned rights to the GT40® design
`
`trademark.” See First Motion for Summary Judgment at pp. 2, '4 and 8-9. The Trademark Trial
`
`and Appeal Board (“Board”) denied Safir’s First Motion for Summary Judgment on January 28,
`
`2005.
`
`On September 19, 2005, Safir was served with Holman & Moody, Inc.’s Second Set of
`
`Interrogatories and Holman & Moody, Inc.’s Second Request for Production of Documents and
`
`Things. Motion to Compel, Exhs. D and E.
`
`On November 14, 2005, Holman & Moody was served with (i) Applicant Safir GT40
`
`Spares Limited’s Responses to Opposer Holman & Moody, Inc.’s First Set of Interrogatories, (ii)
`
`Applicant Safir GT40 Spares Limited’s Responses to Opposer Holman & Moody, Inc.’s Second
`
`Set of Interrogatories to Holman & Moody,
`
`(iii) Applicant Safir GT40 Spares Limited’s
`
`Responses to Opposer Holman & Moody, Inc.’s First Set of Requests for Production of
`
`Documents, and (iv) Applicant Safir GT40 Spares Limited’s Responses to Opposer Holman &
`
`Moody, Inc.’s Second Set of Requests for Production of Documents. Motion to Compel, Exhs.
`
`F, G, H and I.
`
`On November 16, 2006, Holman & Moody filed Opposer Holman & Moody, Inc.’s
`
`Motion to Compel Applicant Safir GT40 Spares, Limited to Answer and to Redesignate Certain
`
`of Opposer’s Interrogatories. This motion was denied by the Board for procedural reasons on
`
`February 7, 2007.
`
`On March 1, 2007, Safir was served with Holman & Moody, Inc.’s Second Set of
`
`Requests for Admissions and Holman & Moody, Inc.’s Third Request for Production of
`
`Documents and Things. Motion to Compel, Exhs. J and K.
`
`

`
`On March 1, 2007, Holman & Moody sent a letter to Safir describing in detail Safir’s
`
`discovery deficiencies and requesting that Safir produce documents. See Declaration Karl L.
`
`Larson, attached as Exhibit 1 (herein “Larson Decl.”), at No. 3; Motion to Compel, Exhs. L and
`
`K. The March 1, 2007 letter also requested a confirmation by Safir that it had provided Holman
`
`& Moody with a_11 documents and things that had been previously requested in Holman &
`
`Moody’s requests for production on or by April 1, 2007. Id.
`
`On March 9, 2007, Holman & Moody was served with Applicant Safir GT40 Spares
`
`Limited’s Supplemental Responses with Protective Order Designations to Opposer Holman &
`
`Moody, Inc.’s First Set of Interrogatories. Motion to Compel, Exh. N.
`
`On March 20, 2007, in response to Holman & Moody’s letter of March 1, 2007, Safir
`
`supplemented its document production with the documents identified as Bates Nos. RRW0545-
`
`RRW0767. See Motion to Compel, Exh. O. On March 27, 2007, Safir further supplemented its
`
`document production with the Bob Wood deposition in the Ford Motor Company v. Safir GT40
`
`Spares, Ltd. opposition of Serial No. 76/383,872 (Opposition No. 91159033). See Motion to
`
`Compel, Exh. P.
`
`On March 26, 2006, during a telephone conference between Safir’s counsel, Bruce Tittel,
`
`and Holman & Moody’s counsel, Karl Larson, Mr. Larson informed Mr. Tittel that Holman &
`
`Moody planned to file a second motion to compel if Safir failed to correct its discovery
`
`deficiencies, produce the previously requested documents and things, and respond to Holman &
`
`Moody’s outstanding discovery requests on or by Monday, April 2, 2007. Larson Decl. at No. 4.
`
`In response, Mr. Tittel stated that Safir was considering filing a motion for summary judgment
`
`with respect to priority prior to the end of the discovery period on April 5, 2007. Id. Mr. Tittel
`
`also stated that Safir would limit its discovery responses to priority issues because it was his
`
`

`
`understanding that filing a motion for summary judgment suspended Safir’s duty to respond to
`
`Holman & Moody’s discovery requests except for issues germane to his motion for summary
`
`judgment.
`
`Id.
`
`In response, Mr. Larson informed Mr. Tittel that his understanding of 37 C.F.R.
`
`2.127(d) was incorrect and that the filing of a motion for summary judgment would not suspend
`
`Safir’s obligation to respond to Holman & Moody’s currently pending discovery requests. Id.
`
`On March 27, 2007, Holman & Moody sent a second letter to Safir describing in detail
`
`Safir’s remaining discovery deficiencies and requesting that Safir produce documents. Motion to
`
`Compel, Exh. P.
`
`Safir did not confirm that it had provided Holman & Moody with all documents and
`
`things that had been previously requested in Holman & Moody’s requests for production and did
`
`not respond to Holman & Moody, Inc.’s Second Set of Requests for Admissions and Holman &
`
`Moody, Inc.’s Third Request for Production of Documents and Things on or by April 2, 2007.
`
`Instead, on April 2, 2007, Safir filed its Second Motion for Summary Judgment. Larson
`
`Decl. at No. 7. The Second Motion for Summary Judgment was sent to Holman & Moody’s
`
`counsel via U.S. postal mail.
`
`Id. Safir did not provide Holman Moody’s counsel with
`
`advance notice that it would file the Motion for Summary Judgment on April 2, 2007.
`
`Id.
`
`Holman & Moody’s counsel did not receive Safir’s Motion for Summary Judgment until late in
`
`the afternoon of April 3, 2007. Id.
`
`On April 3, 2007, Holman & Moody filed its Motion to Compel. Larson Decl. at 8.
`
`Holman & Moody’s Motion to Compel was completed prior to receiving Safir’s Motion for
`
`Summary Judgment. Id.
`
`

`
`On April 4, 2007, Mr. Tittel acknowledged during a telephone conference with Mr.
`
`Larson that there exist documents which relate to priority that were not produced by Safir prior
`
`to filing its Motion for Summary Judgment. Larson Decl. at 9.
`
`III. ANALYSIS
`
`A.
`
`Standard
`
`“Responses to requests for admission must be served within 30 days after the date of
`
`service of the requests.” TBMP § 407.03(a); see also TBMP § 403.03. “If a party on which
`
`requests for admissions have been served fails to timely respond thereto, the requests will stand
`
`admitted unless the party is able to show that its failure to timely respond was the result of
`
`excusable neglect.” Id; see also Hobie Designs Inc. v. Fred Hayman Beverly Hills Inc., 14
`
`USPQ2d 2064, 2064 n.1 (TTAB 1990).
`
`“Responses to requests for production must be served within 30 days after the date of
`
`service of the requests.” TBMP § 406.04(a); see also TBMP § 403.03. “A party which fails to
`
`respond to requests for production during the time allowed therefore, and which is unable to
`
`show that its failure was the result of excusable neglect, may be found, on motion to compel filed
`
`by the propounding party, to have forfeited its right to object to the requests on their merits.” Id.
`
`If a party “fails to provide any response to a set of interrogatories or to a set of requests
`
`for production of documents and things, and such party or the party’s attorney or other
`
`authorized representative informs the party seeking discovery that no response will be made
`
`thereon, the Board may make any appropriate order.” 37 C.F.R. § 2.l20(g)(2); see also TBMP §
`
`~ 527.01(b).
`
`“[T]he mere filing of a motion for summary judgment (or any other motion which is
`
`potentially dispositive of a case) does not automatically suspend a proceeding.
`
`Instead, only an
`
`order by the Board formally suspending proceedings has such effect.” Giant Food, Inc. v.
`
`

`
`Standard Terry Mills,
`
`Inc., 229 USPQ 955, 965 (TTAB 1986); see also Consultants &
`
`Designers, Inc. v. Control Data Corp., 221 USPQ 635, 637 n.8 (TTAB 1984). A party is
`
`required to respond to discovery requests that are due prior to an order by the Board suspending
`
`proceedings. Giant Food, 229 USPQ at 965.
`
`B.
`
`Safir Has Failed to Respond to Holman & Moody’s Discovery and Document
`Production Requests
`
`On March 1, 2007, Safir was served with Holman & Moody, Inc.’s Second Set of
`
`Requests for Admissions and Holman & Moody, Inc.’s Third Requests for Production of
`
`Documents and Things. Each of the above discovery requests were hand delivered to Safir on
`
`March 1, 2007 and, thus, were due on April 2, 2007.1 See 37 C.F.R. § 2.l20(a); TBMP § 403.03.
`
`Safir failed to respond to these discovery requests on or by April 2, 2007.
`
`Safir has further failed to provide any documents and things that it has already agreed to
`
`produce and which have been due for more than one year. In its letter of March 1, 2007, Holman
`
`& Moody requested that Safir produce all documents and things that had been previously
`
`requested in Holman & Moody’s requests for production along with confirmation that it had
`
`provided Holman & Moody with a_l1 such documents and things on or by April 1, 2007. Safir
`
`failed to produce any documents or things or confirm that all such documents and things had
`
`been produced on or by April 2, 2007.
`
`C.
`
`Safir’s Second Motion for Summary Judgment Was Filed in Bad Faith
`
`Safir has acknowledged that it possesses documents related to this opposition proceeding
`
`that it hasn’t produced. Notably, Safir’s counsel acknowledged on April 4, 2007 that Safir
`
`possesses documents which relate to priority that have not been produced by Safir. Larson Decl.
`
`1 The discovery requests were due on April 1, 2007 which falls on a Sunday and the next business day is April 2,
`2007.
`
`

`
`at No. 9. Despite this fact, Safir filed its Second Motion for Summary Judgment, which relates
`
`to priority, without first producing these documents.
`
`Safir filed its Second Motion for Summary Judgment on April 2, 2007, the day that its
`
`responses to Holman & Moody, Inc.’s Second Set of Requests for Admissions and Holman &
`
`Moody,
`
`Inc.’s Third Requests for Production of Documents and Things were due. A
`
`confirmation that afl documents and things that had been previously requested in Holman &
`
`Moody’s requests for production was also due on or by April 2, 2007.
`
`In its Second Motion for Summary Judgment, Safir states that “[p]ursant to 37 C.F.R. §
`
`2.127(d), Applicant Safir understands that
`
`the Board will stay all proceedings,
`
`including
`
`Applicant Safir’s responses to Opposer’s outstanding discovery requests, pending a decision on
`
`Applicant’s motion.” Second Motion for Summary Judgment at p. 2. To the contrary, the law is
`
`quite clear that “the mere filing of a motion for summary judgment .
`
`.
`
`. does not automatically
`
`suspend a proceeding” and that “only an order by the Board formally suspending proceedings
`
`has such effect.” Giant Food, 229 USPQ at 965; see also Consultants & Designers, 221 USPQ
`
`at 637 n.8. As such, Safir was required to respond to Holman & Moody’s discovery requests that
`
`were due on April 2, 2007. Giant Food, 229 USPQ at 965.
`
`Safir cannot in good faith now claim to be confused with respect to 37 C.F.R. § 2.l27(d)
`
`because on March 26, 2006, Safir’s counsel and Holman & Moody’s counsel discussed whether
`
`the filing of a motion for summary judgment would suspend Safir’s obligation to respond to
`
`Holman & Moody’s currently pending discovery requests. Larson Decl. at 4. During that
`
`discussion, Mr. Larson informed Mr. Tittel that his understanding of 37 C.F.R. 2.l27(d) was
`
`incorrect and that the filing of a motion for summary judgment would not suspend Safir’s
`
`obligation to respond to Holman & Moody’s currently pending discovery requests.
`
`Id. Safir
`
`

`
`was thus on notice as to its flawed legal position. Assuming that Safir didn’t already know the
`
`rule with respect to 37 C.F.R. 2.l27(d), a due diligence search of the USPQ database using the
`
`search phrase “2.l27(d) and production” would have returned only two cases (Giant Food and
`
`Consultants & Designers, attached respectively as Exhibits A and B) and each of these cases
`
`directly contradict Safir’s legal position. Despite having notice of its flawed legal position, Safir
`
`filed its Second Motion for Summary Judgment which includes the flawed legal position.
`
`The Second Motion for Summary Judgment also includes arguments previously argued
`
`and denied in its First Motion for Summary Judgment with respect to abandonment. This is
`
`similar to the facts presented in an October 18, 2005 opinion in Borland Software Corp. v.
`
`EMSoftware Solutions, Inc., Cancellation No. 92042159, attached as Exhibit D, in which the
`
`Board refused to entertain a second summary judgment motion relating to abandonment because
`
`the second motion included similar arguments and was based on evidence available when the
`
`first motion was filed. Here, similar to the facts presented in Borland Software, Safir is
`
`attempting to present abandonment arguments that were previously argued and denied in its First
`
`Motion for Summary Judgment. Certainly, Safir’s attempt to rehash its abandonment argument
`
`in the Second Motion for Summary Judgment is improper.
`
`Safir filed its Second Motion for Summary Judgment despite the fact that Holman &
`
`Moody was actively seeking discovery and the production of documents. Safir filed its Second
`
`Motion for Summary Judgment on the day that the outstanding discovery requests and requests
`
`for production were due. Further, Safir filed its Second Motion for Summary Judgment, which
`
`relates to priority, despite the fact that Safir had not produced all of the documents which relate
`
`to priority prior to filing the motion.
`
`

`
`Based on the above,
`
`it is obvious that Safir filed its Second Motion for Summary
`
`Judgment in a bad faith attempt to delay producing documents and to increase the expense to
`
`Holman & Moody in opposing Applicant’s Mark.
`
`D.
`
`Safir Has Demonstrated a Pattern of Misconduct
`
`in the Present Opposition
`
`Proceeding
`
`During this opposition proceeding, Safir has demonstrated a pattern of misconduct by
`
`repeatedly attempted to delay its duty to respond to Holman & Moody’s discovery requests and
`
`to produce documents. This pattern of misconduct includes:
`
`canceling Holman & Moody’s 30(B)(6) deposition that was originally scheduled for
`September 14, 2004 due to the unavailability of all of the relevant parties for Safir;
`
`filing its First Motion for Summary Judgment on September 7, 2004, without
`substantively responding to Opposer’s First Set of Interrogatories and Opposer’s First
`Request for Production of Documents and Things served on August 5, 2004;
`
`failing to provide a legitimate reason for not originally responding to Interrogatory
`Nos. 14 and 15 in Applicant Safir GT40 Spares Limited’s Responses to Opposer
`Holman & Moody, Inc.’s First Set of Interrogatories (see Motion to Compel, Exh. Q
`at pp 2-3; Exh. F at Nos. 12-15; and Exh. N at Nos. 12-15);
`
`filing its Second Motion for Summary Judgment on March 2, 2007, without
`substantively responding to Holman & Moody, Inc.’s Second Set of Requests for
`Admissions and Holman & Moody,
`Inc.’s Third Request
`for Production of
`Documents and Things;
`
`arguing that “[p]ursant to 37 C.F.R. § 2.127(d), Applicant Safir understands that the
`Board will stay all proceedings, including Applicant Safir’s responses to Opposer’s
`outstanding discovery requests, pending a decision on Applicant’s motion” in its
`Second Motion for Summary Judgment despite the fact that Safir’s counsel had
`received notice that this was a flawed legal argument; and
`
`including abandonment arguments in its Second Motion for Summary Judgment that
`were previously argued and denied in its First Motion for Summary Judgment.
`
`Accordingly, Safir has demonstrated a pattern of misconduct and bad faith in the present
`
`opposition proceeding.
`
`10
`
`

`
`IV. CONCLUSION
`
`For the reasons stated above, Holman & Moody respectfully requests this Board to (i)
`
`stay all proceedings and discovery during the pendency of Opposer Holman & Moody, Inc.’s
`
`Motion to Compel Applicant Safir GT40 Spares, Limited to Answer Certain of Opposer’s
`
`Interrogatories and Requests for Admissions and to Produce Certain Documents and Things
`
`(“Motion to Compel”); (ii) order, in accordance with TBMP § 407.03(a), that the requests for
`
`admissions in Holman & Moody, Inc.’s Second Set of Requests for Admissions will stand
`
`admitted; and to (iii) order, in accordance with TBMP § 406.04(a), that Safir has forfeited its
`
`right to object to the requests on their merits in Holman & Moody, Inc.’s Third Request for
`
`Production of Documents and Things.
`
`Dated: April 6, 2007
`
`By:
`
`5
`
`Kay Lyn Schwartz
`Karl L. Larson
`
`Gardere Wyrm Sewell LLP
`3000 Thanksgiving Tower
`1601 Elm Street
`
`Dallas, Texas 75201-4761
`Tel: 214-999-4702 -
`
`Fax: 214-999-3702
`
`ATTORNEYS FOR OPPOSER
`
`HOLMAN & MOODY, INC.
`
`11
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing Opposer Holman & Moody, Inc. ’s Motion
`
`to Stay Proceedings and Request for Sanctions was served upon counsel of record as indicated
`
`below on this the 6th day of April, 2007:
`
`Bruce Tittel
`Wooo HERRON & EVANS, L.L.P.
`2700 Carew Tower
`
`441 Vine Street
`
`Cincinnati, Ohio 45202-2917
`
`DALLAS 1774819V2
`
`Via U.S. Mail, Postage Prepaid
`
`ea/756/\
`
`Karl L. Larson
`
`

`
`
`

`
`OPPOSER’S
`
`Exhibit 1
`
`HOLMAN & MOODY, INC. v.
`
`SAFIR GT40 SPARES, LTD.
`Opposition No. 91159604
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In The Matter of Application Serial No. 76/383872
`Published in the Oflicial Gazette on January 13, 2004 in Class 12
`
`HOLMAN & MOODY, INC. ,
`
`Opposer,
`
`v.
`
`SAFIR GT40 SPARES, LIMITED,
`
`Applicant.
`
`€\i§/Q/Q/Q/Q/\J
`
`Opposition No. 91159604
`
`DECLARATION OF KARL L. LARSON
`
`I, KARL L. LARSON, hereby declare that the following is true and correct based on my
`
`personal knowledge:
`
`1.
`
`My name is Karl L. Larson.
`
`I am more than twenty-one (21) years old and I am
`
`fully competent
`
`to sign this Declaration.
`
`I have never been convicted of a felony or
`
`misdemeanor involving moral turpitude.
`
`2.
`
`I am an attorney with the with law firm of Gardere Wyrme Sewell LLP, counsel to
`
`Holman & Moody, Inc.’s (“Opposer” or “Holman & Moody”) in the above-captioned case.
`
`3.
`
`On March 1, 2007, Holman & Moody sent a letter to Safir describing in detail the
`
`deficiencies in Safir’s responses to certain interrogatories and requests for production, and
`
`requesting Safir to produce certain documents and things. The March 1, 2007 letter also
`
`requested a confirmation by Safir that it had provided Holman & Moody with a_ll documents and
`
`things that had previously been requested in Holman & Moody’s requests for production on or
`
`by April 1, 2007. A second letter was sent on March 27, 2007 describing in detail the remaining
`
`deficiencies in Safir’s responses to certain interrogatories and requests for production, and
`
`requesting Safir to produce certain documents and things.
`
`

`
`4.
`
`On March 26, 2006, during a telephone conference with Safir GT40 Spares, Ltd.’s
`
`(“Safir”) counsel, Bruce Tittel, I informed Mr. Tittel that Holman & Moody planned to file a
`
`second motion to compel if Safir failed to correct
`
`its discovery deficiencies, produce the
`
`previously requested documents and things, and respond to Holman & Moody’s outstanding
`
`discovery requests on or by Monday, April 2, 2007.
`
`In response, Mr. Tittel stated that Safir was
`
`considering filing a motion for summary judgment with respect to priority prior to the end of the
`
`discovery period on April 5, 2007. Mr. Tittel also stated that Safir would limit its discovery
`
`responses to priority issues because it was his understanding that filing a motion for summary
`
`judgment suspended Safir’s duty to respond to Holman & Moody’s discovery requests except for
`
`issues germane to his motion for summary judgment.
`
`In response, I informed Mr. Tittel that his
`
`understanding of 37 C.F.R. 2.l27(d) was incorrect and that the filing of a motion for summary
`
`judgment would not suspend Safir’s obligation to respond to Holman & Moody’s currently
`
`pending discovery requests.
`
`5.
`
`On March 30, 2007, by telephone, I requested a telephone conference with Mr.
`
`Tittel regarding Safir’s remaining discovery deficiencies. Mr. Tittel’s assistant, Yvonne Belisle,
`
`stated that Mr. Tittel was in a telephone conference with Safir and that Mr. Tittel would return
`
`my telephone call later that day. Mr. Tittel did not return my telephone call on March 30, 2007.
`
`6.
`
`On April 2, 2007, by telephone, I again requested a telephone conference with
`
`Mr. Tittel regarding Safir’s remaining discovery deficiencies. Ms. Belisle stated that Mr. Tittel
`
`was out of town and that
`
`the information regarding the discovery deficiencies would be
`
`forwarded on to Mr. Tittel later that day. Mr. Tittel did not return my telephone call on April 2,
`
`2007.
`
`

`
`7.
`
`On April 2, 2007, Safir served Applicant Safir GT40 Spares Limited's Motion for
`
`Summary Judgment, to Stay all Proceedings and Request for Extension of Discovery Period, if
`
`Needed (“Second Motion for Summary Judgment”) to Holman & Moody via U.S. postal mail.
`
`Safir did not provide Holman & Moody’s counsel with advance notice that it would file Saf1r’s
`
`Second Motion for Summary Judgment on April 2, 2007. Holman & Moody’s counsel did not
`
`receive Saf1r’s Second Motion for Summary Judgment until late in the afternoon of April 3,
`
`2007 .
`
`8.
`
`On April 3, 2007, Holman & Moody served its Motion to Compel to Safir via
`
`U.S. postal mail. Holman & Moody’s Motion to Compel was completed prior to receiving
`
`Safir’s Second Motion for Summary Judgment.
`
`9.
`
`On April 4, 2007, Mr. Tittel acknowledged during a telephone conference that
`
`there exist documents which relate to priority that were not produced by Safir prior to filing its
`
`Second Motion for Summary Judgment.
`
`10.
`
`Attached hereto as Exhibit A is a true and correct copy of Giant Food, Inc. v.
`
`Standard Terry Mills, Inc., 229 USPQ 955 (TTAB 1986).
`
`11.
`
`Attached hereto as Exhibit B is a true and correct copy of Consultants &
`
`Designers, Inc. v. Control Data Corp., 221 USPQ 635 (TTAB 1984).
`
`12.
`
`Attached hereto as Exhibit C is a true and correct copy of Hobie Designs Inc. v.
`
`Fred Hayman Beverly Hills Inc., 14 USPQ2d 2064 (TTAB 1990).
`
`13.
`
`Attached hereto as Exhibit D is a true and correct copy of an opinion from
`
`Borland Software Corp. v. EMSoftware Solutions, Inc., Cancellation No. 92042159 (October 18,
`
`2005)
`
`

`
`14.
`
`Attached hereto as Exhibit E is a true and correct copy of several email
`
`exchanges between Karl Larson, Vvonne Belise and Bruce Tittel on April 2, 2007 and April 3,
`
`2007.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`SIGNED on this 6th day of April, 2007 in Dallas, Texas.
`
`film/fé
`
`Karl L. Larson
`
`DALLAS 1775453v1
`
`

`
`

`
`OPPOSER’S
`
`Exhibit A
`
`HOLMAN & MOODY, INC. v.
`
`SAFIR GT40 SPARES, LTD.
`Opposition No. 91159604
`
`

`
`Intellectual Property Library
`ISSN 1526-8535
`
`Source: USPQ, 1st Series (1929 - 1986) > U.S. Patent and Trademark Office, Trademark Trial and
`Appeal Board > Giant Food, Inc. v. Standard Terry Mills, lnc., 229 USPQ 955 (TTAB 1986)
`
`Giant Food, Inc. v. Standard Terry Mills, lnc., 229 USPQ 955 (TTAB 1986)
`229 USPQ 955
`
`Giant Food, Inc. v. Standard Terry Mills, Inc.
`U.S. Patent and Trademark Office, Trademark Trial and Appeal Board
`Opposition No. 70,362
`Opinion dated May 7, 1986
`
`Headnotes
`
`TRADEMARKS
`
`[1] Pleading and practice in Patent Office -- In general (D 67.671)
`
`Applicant's motions for summaryjudgment in trademark opposition action must be denied, since they are
`based upon claims of mere descriptiveness and fraud that have not been pleaded, since such claims
`directed at opposer's pleaded registration for its mark are compulsory counterclaims which cannot be
`entertained in absence of counterclaim, and since applicant, even if it had properly pleaded its claim, has
`failed to establish absence of any genuine issue of material fact.
`
`[2] Descriptive -- Misdescriptive or not descriptive -- Particular marks (P 67.5078)
`
`Class of goods -- Particular cases -- Not similar (> 67.2071)
`
`Granting of applicant's motion for summaryjudgment in trademark opposition is precluded by existence of
`genuine material issue as to descriptiveness of “Super Sorb” when used with paper towels, and as to
`similarity of goods, channels of trade, and purchasers, between paper towels for domestic and household
`use and utility towels.
`
`[3] Attorneys -- Propriety of conduct (F 17.7)
`
`Opposer's motion for sanctions, under Fed.R.Civ.P. 11, against trademark applicant who filed
`unwarranted motions for summaryjudgment, who filed motion to compel discovery after filing two motions
`for summaryjudgment, and who filed frivolous request for reconsideration, is granted.
`
`Case History and Disposition
`
`Trademark opposition No. 70,362, by Giant Food, lnc., against Standard Terry Mills, lnc., application,
`Serial No. 438,954, filed August 12, 1983. On applicant's motions for summaryjudgment and on
`opposer's motions to compel and for sanctions. Opposer's motions granted.
`
`Attorneys
`
`Alan S. Cooper, Kathy J. McKnight, and Banner, Birch, McKie & Beckett, all of Washington, D.C., for
`opposen
`
`Robert B. Frailey, and Harding, Earley, Follmer & Frailey, both of Philadelphia , Pa., for applicant.
`
`Before Rice, Simms, and Sams.
`
`Copyright 2007, The Bureau of National Affairs, Inc.
`Reproduction or redistribution, in whole or in part, and in any form, without express written permission, is prohibited except as
`permitted by the BNA Copyright Policy. http://www.bna.com/corp/index.html#V
`1
`
`

`
`Intellectual Property Library
`ISSN 1526-8535
`
`Opinion Text
`
`An application has been filed by Standard Terry Mills, Inc. to register the mark “SUPRASORB” for use on
`“utility towels”. ‘Registration has been opposed by Giant Food Inc. on the ground that applicant's mark,
`when applied to its goods, so resembles the mark “SUPER SORB,” previously used and registered by
`opposer for “paper towels for domestic and household use", 2as to be likely
`
`Page 956
`to cause confusion. The Board, in an order issued January 28, 1985, instituted this proceeding and
`allowed applicant until March 11, 1985 to file an answer to the notice of opposition. No such answer has
`ever been filed by applicant. Instead, applicant has filed numerous motions. By a certificate of mailing
`dated February 11, 1985, applicant filed a motion pursuant to Trademark Rule 2.133 to amend the
`identification of goods stated in the opposed application from “utility towels” to “textile utility towels”.
`Opposer, citing International Harvester Co. v. International Telephone & Telegraph Corp., 208 USPQ
`940, 941 (TTAB 1980) among other authority, correctly notes in a timely filed brief in opposition to the
`motion to amend the identification that when, as here, there is no consent to a proposed amendment
`which seeks to narrow the scope of the identification of goods, the moving party in order to prevail must
`make the amendment prior to trial and must agree to acceptjudgment with respect to the goods as
`originally identified. Opposer also points out that the specimens filed with the application must support the
`proposed amendment and that the moving party must, during its testimony period, prove use of the mark
`on the goods as stated in the amended identification as of a date prior to the filing date of the application.
`In addition, opposer correctly notes that the movant must establish prima facie that the proposed
`amendment serves to change the nature and character of the goods so that a substantially different issue
`is introduced between the parties from that originally presented by the opposition based on the original
`identification of the goods. Submitting that applicant has only complied with the requirement that
`amendment be sought prior to trial, opposer asserts that applicant's motion should be denied. In an order
`issued April 17, 1985, the Board denied the motion to amend the application “for the reasons set forth by
`opposer’. In the same order, the Board also suspended proceedings herein