I hereby certify that this correspondence is being deposited
`with the United States Postal Service “Express Mail Post
`Office to Addressee” service under 37 CFR 1.10 addressed to:
`
`United States Patent and Trademark Office, Commissioner for
`
`Trademarks, Trademark Trial and Appeal Board, P.O. Box 1451,
`Alexandria, VA 22313-1451, on July 28, 2005.
`
`2
`
`Roberta Winfeler
`
`Q’; 1; ——-A -
`(signature)
`
`1/0
`
`/&-J'
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition NO. 91159673
`
`MOTION OF LAXON
`
`CORPORATION TO COMPEL
`
`)
`
`)
`
`)
`
`)
`
`)
`
`) )
`
`IN THE MATTER OF:
`
`Application Serial No:
`
`76/058,233
`
`Date of Publication:
`
`November 4, 2003
`
`For the Trademark:
`
`Attorney Docket:
`
`Design
`
`1- 1 5349
`
`Laxon Corporation
`
`v.
`
`Promoclip International B.V.
`
`Opposer
`
`Applicant
`
`Pursuant to Rule 411.01-03 of the Trademark Trial and Appeal Board Manual of
`
`Procedure and Rule 37 of the Federal Rules of Civil Procedure, Opposer, Laxon Corporation
`
`(“Laxon”), through counsel seeks an order from the Trademark Trial and Appeal Board (the
`
`“Board”) compelling Applicant Promoclip International B. V. (“Promoclip”) to respond to
`
`discovery and attend depositions. A memorandum in support follows.
`
`uiiumiimlmmmmmIinmmii l
`
`U.S. P
`
`oa-o1-2oo5
`.
`atant & TMOfclTM Mail Hep! Dt. #39
`
`

`
`Memorandum in Support of Motion to Compel
`
`On February 2, 2005, Laxon served Promoclip with Laxon’s First Set of
`
`Interrogatories, Requests for Production and Requests for Admission, (“Discovery Requests”). A
`
`copy of the Discovery Requests is attached as Exhibit 1. Promoclip responded with its
`
`Objections and Responses on May 9, 2005 (“Responses”). A copy of the Responses is attached
`
`as Exhibit 2.
`
`In its Responses, Promoclip provided virtually no information and instead
`
`objected to all of Laxon’s Discovery Requests. For example, Promoclip objected to
`
`Interrogatory 1 which simply requests the identity of the person providing the information upon
`
`which the Responses are based. (Response at p. 2-3.) Similarly, Promoclip objected to
`
`Interrogatories 2 and 3, the answers to which would allow Laxon to identify which Promoclip
`
`representatives to depose. Interrogatories 4-12, 16-25, 27, 29-41 and Requests for Production 1-
`
`17, 21-28, and others, all request information related to the fimctionality of the Promoclip design,
`
`the descriptiveness of the Promoclip design and/or they request information about those at
`
`Promoclip, or associated business entities, who may have knowledge regarding either of these
`
`issues. These issues are central to this Opposition and are therefore relevant and within the
`
`scope of reasonable discovery.
`
`Laxon served a total of 41 Interrogatories. Promoclip objected to each
`
`Interrogatory, and failed to meaningfully answer any. Laxon served a total of 28 Requests for
`
`Production and Promoclip objected to, and failed to answer each Request, other than to indicate
`
`

`
`
`
`that no documents exist or to request a protective order. Counsel for Laxon requested that
`
`counsel for Promoclip draft a protective order, but this request was ignored as well. (Exhibit 3.)
`
`In a good faith attempt to resolve these issues, counsel for Laxon sent a letter to
`
`counsel for Promoclip, a copy of which is attached as Exhibit 3. Counsel for Laxon outlined the
`
`discovery dispute and requested a response within ten days. In addition, Laxon requested dates
`
`for the depositions of the Promoclip representatives with knowledge of the issues relevant to this
`
`opposition proceeding. Laxon enclosed a Rule 30(b)(6) Notice of Deposition, but explained that
`
`if the date and time listed on the notice was inconvenient, an alternative date could be set. Laxon
`
`requested that the initial depositions be scheduled for some time in July because all depositions
`
`must be completed before September 7, 2005 in accordance with the schedule set by the Board.
`
`A copy of the Notice of Deposition is attached as Exhibit 4.
`
`To date, almost one month after Laxon’s June 28 letter, the only response Laxon
`
`has received is a brief letter from counsel for Promoclip which promised a more thorough
`
`response. A copy of the letter is attached as Exhibit 5. No additional information was
`
`forwarded, and no alternative dates for depositions were suggested.
`
`The general scope of discovery that may be obtained in inter parties proceedings
`
`before the Board is governed by Fed.R.Civ.P.26 (b) (1), which provides, in part, as followszl
`
`Parties may obtain discovery regarding any matter, not privileged, that is relevant
`to the claim or defense of any party, including the existence, description, nature,
`custody, condition, and location of any books, documents, or other tangible things
`and the identity and location of persons having knowledge of any discoverable
`matter.
`.
`.
`. Relevant information need not be admissible at the trial if the
`
`discovery appears reasonably calculated to lead to the discovery of admissible
`evidence.
`.
`.
`.
`
`1 See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671 (TTAB 1988)
`(admissibility not necessary). See also Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861 (TTAB 1979);
`and Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581 (TTAB 1975)(relevancy construed liberally).
`3
`
`

`
`h)
`
`The issues relevant to this opposition proceeding include, but are not limited to,
`
`whether the design sought to be registered is functional and/or merely descriptive. A mark is not
`
`registerable if the design described is functional. 15 U.S.C. l052(e)(5) (2003); Valu Engineering
`
`Inc. v. Rexnord Corp., 61 USPQ2d 1422 (CAFC 2002). Four factors used to determine if a
`
`design is functional are: (1) the existence of a utility patent disclosing the utilitarian advantages
`
`of the design; (2) advertising materials in which the originator of the design touts the design’s
`
`utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and
`
`(4) facts indicating that the design results in a comparatively simple or cheap method of
`
`manufacturing the product. Id (citing In re Morton-Norwich Products, Inc., 671 F.2d 1332,
`
`1340-1341 (CCPA 1982)). A significant number of Laxon’s Interrogatories and Requests for
`
`Production requested information from Promoclip dealing with these factors, making those
`
`Discovery Requests relevant to this matter for at least this reason.
`
`For example, both U.S. Patent No. 5,357,653 and U.S. Patent No. 5,432,982 and
`
`their file histories are relevant in these proceedings because they are both utility patents that
`
`disclose utilitarian advantages of the design sought to be registered. In TrafFix Devices, Inc. v.
`
`Marketing Displays, Inc., 58 USPQ2d 1001 (2001), the U. S. Supreme Court stated a utility
`
`patent on the design is strong evidence that the features therein claimed are functional. A utility
`
`patent by itself may be conclusive evidence of functionality. J. Thomas McCarthy, 1 McCarthy
`
`on Trademarks and Unfair Competition, §7:89. 1, 7-252 (4th ed. 2003). The specification of the
`
`patent and the arguments made in the prosecution history can also be persuasive evidence of
`
`functionality. Disc GolfAss ’n Inc. v. Champion Discs, Inc., 48 USPQ2d 1132 (9th Cir. 1998).
`
`Furthermore, utility patent evidence of the functionality of the design is entitled to particularly
`4
`
`

`
`
`
`great weight if the patent was applied for by the same person who now asserts trademark
`
`significance in the same configuration. Disc Golf, 48 USPQ2d at 1138; McCarthy, §7:89.1, 7-
`
`252. Despite this well settled law, Promoclip objected repeatedly in its Responses to providing
`
`any information about those patents claiming they “are not at issue in this proceeding.”
`
`(Response at pp. 3-6.)
`
`Further, a mark is not registerable if the design is descriptive. 15 U.S.C.(e)(1)
`
`(2003). Descriptive marks may acquire the distinctiveness which will allow them to be protected
`
`
`under the Lanham Act via secondary meaning. Two Pesos Inc. v. Taco Cabana Inc., 23
`
`USPQ2d 1081, 1083 (1992). A number of Laxon’s discovery requests were relevant to the issue
`
`of descriptiveness of the design Promoclip is seeking to register and/or any secondary meaning
`
`that may have attached to the design.
`
`Interrogatories 4-12, 16-25, 27, 29-41 and Requests for Production 1-17, 21-28,
`
`and others, all request information related to the functionality of the Promoclip design, the
`
`descriptiveness of the Promoclip design and/or they request information about those at
`
`Promoclip, or associated business entities, who may have knowledge regarding either of these
`
`issues. Out of 41 lnterrogatories Promoclip objected to every Interrogatory and failed to
`
`meaningfully answer any. Out of 28 Requests for Production, Promoclip objected to every
`
`Request and failed to answer any, other than to indicate no documents exist or to request a
`
`protective order.
`
`Rule 37 (d) of the Federal Rules of Civil Procedure provides that “ If a party...
`
`fails
`
`to serve answers or objections to interrogatories
`
`or to serve a written response to a
`
`request for inspection
`
`the court in which the action is pending on motion may make such
`
`orders in regard to the failure as are just, and among others it may take any action authorized
`5
`
`

`
`under subparagraphs (A),(B), and (C) of subdivision (b)(2) of this rule. ...” The appropriate
`
`sanction under Rule 37 (b) is to be determined in the context of the particular facts of the case.
`
`10A Fed Proc, L Ed § 26:640. “Orders under Rule 37 (b) (2) are made in connection with the
`
`court’s internal control over its own procedures and are necessary to the proper administration of
`
`discovery proceedings, which in turn are essential to the conduct in an orderly fashion of
`
`lawsuits under the Federal Rules of Civil Procedure.” Id.
`
`Here, Promoclip has declined to respond in any meaningful or reasonable way to
`
`Laxon’s written Discovery Requests, and has declined to attend or suggest alternative dates for
`
`the deposition of Promoclip’s representatives. Despite good faith attempts to resolve this matter,
`
`the dispute remains unresolved. Therefore, Laxon requests that the Board grant Laxon’s motion
`
`to compel and order that Promoclip respond to the Discovery Requests within ten days and
`
`attend depositions within two weeks thereafter. Further, Laxon requests that Promoclip be
`
`sanctioned as this Board deems appropriate pursuant to Rule 411.04 of the Trademark Trial and
`
`Appeal Board Manual of Procedure and Rule 37 of the Federal Rules of Civil Procedure.
`
`Respectfully submitted,
`
`Jennifer J. Dawson
`
`Stephen P. Evans
`
`
`
`MARSHALL & MELHORN, LLC
`Four SeaGate, Eighth Floor
`Toledo, OH 43604
`(419) 249-7100 (main)
`(419) 249-7151 (fax)
`
`

`
`CERTIFICATE OF SERVICE
`
`“T
`.
`.
`.
`This is to certify that on the 1% day of July, 2005, a true and complete copy of
`
`the foregoing, Motion to Compel, was mailed to attorneys for defendant, Jess M. Collen,
`
`Esq., Collen IP Intellectual Property Law, P.C., The Holyoke-Manhattan Building, 80
`
`South Highland Avenue, Town of Ossining, Westchester County, New York, 10562 by
`
`first class U.S. mail postage prepaid.
`
`
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF:
`
`Application Serial No:
`Date of Publication:
`For the Trademark:
`Attorney Docket:
`
`76/05 8,233
`November 4, 2003
`. Design
`l-15.349
`
`Laxon Corporation
`‘
`
`v.
`
`Promoclip International BLV.
`
`Opposer
`
`Applicant
`
`)
`)
`
`)
`)
`)
`) -
`
`Opposition No. 91 159673
`
`OPPOSER’S FIRST SET OF
`INTERROGATORIES,
`REQUESTS FOR
`PRODUCTION AND
`
`REQUESTS FOR ADMISSION
`)
`-
`
`
`Opposer, Laxon Corporation (“Laxon”) hereby serves upon counsel for Applicant, __
`
`Promoclip International B.V. (‘_‘_Promo_clip”), the following First Set of Interrogatories, "Requests
`4
`.
`_
`.
`/
`_
`.
`for Production and Requests for Admission pursuant to 37‘ CFR §=2i.l20. Applicant should.
`respond by serving a copyiofthe responses to OppoS_er’s counsel- at the address below within
`thirty (30) days, 37 c1_=‘R § 2.1_2'o'(a).
`light ofthe following definitions:
`These interrogatories are to be construed
`(4)
`The phrase “documents and things’; is"used
`its customary broad sense to define
`any communication and shall include, but Shall not be limited to, the following items, Whether.
`printed, written,‘‘produced by hand, or reproduced by any process, whether interoffice or yvith A
`
`1
`
`

`
`parties outside Applicant, and whether or not claimed to be privileged or otherwise excludable
`
`from discovery, namely, memoranda, correspondence, records, letters, notes, reports, diaries,
`
`faxes, photographs, summaries of records or telephone conversations, summaries or records of
`
`personal conversations, summaries or reports of investigations, opinions or reports of
`
`consultants, reports of counsel, minutes or records of meetings or conferences, product
`
`specifications, sales literature of any nature, invoices, purchase orders, brochures, catalogs,
`
`pamphlets, advertisements, circulars, or trade letters, press releases, trade releases, publicity
`
`releases, marginal notes appearing on any document(s), drafts of all documents and revisions
`
`thereof, tables, schedules, books of account, as well as all records on non-paper information
`storage means, such as discs, tapes, film and computer memory devices, regardless ofthe origin
`
`of such document(s) and specifically, including all originals, copies, drafts of originals, or copies
`
`of drafts on which appear any notes or writings placed thereon after the document was first made
`
`or produced.
`
`(b)
`
`The word “Applicant” refers to Promoclip International B.V. and shall include,
`
`but shall not be limited to, all of its predecessors, affiliated companies, divisions, successors in
`
`interest or subsidiaries.
`
`(c)
`
`When asked to “identify” a document, you shall provide a brief description ofthe
`
`substance ofthe information contained in the document, the name, address and title of the author
`and recipient, if any, the date on which it was created and the date appearing on’ the document, if
`different, the general nature ofthe document (i.e., letter, memorandum,etc.), the present location
`
`and the name and address of its present custodian, and any other designation necessary to
`sufficiently identify the document so that a copy thereof can be ordered or obtained from the
`
`custodian thereof.
`
`

`
`(d)
`
`When asked to “identify” a person, you shall state the full name, title, employer,
`
`and most recent address and telephone number of the person being identified. If an entity other
`
`than a natural person is applicable, you shall state the full name of the entity, the form of
`
`organization (e.g., LLC, etc.), and the address and principal place of business, if different.
`
`(e)
`
`The term “person” or “persons” refers to natural persons, corporations and any
`
`other form of business entity including, without limitation, partnerships, firms, ventures, and
`
`associations and shall include divisions, departments, subsidiaries, directors, officers, owners,
`
`members, employees, agents, attorneys, or anyone else acting on the behalf of the person or
`
`entity.
`
`(f)
`
`If you cannot answer any request, please identify any documents or things which
`
`you believe to contain materials relevant to the answers sought; and identify any person who you
`
`believe might have knowledge of material relevant to the answer sought.
`
`(g)
`
`With respect to any request for which a claim of privilege or work product is
`
`made, please indicate the nature of the document; identify the name, address, occupation, title
`
`and business affiliation, the author, the address and all recipients thereof, the general nature of
`
`the subject matter to which the document relates and its date.
`
`(h)
`
`These discovery requests cover the period of time extending up to the date of your
`
`response to them and are continuing. In the event that any information or documents come to
`your attention, possession, custody or control subsequent to the filing of your responses which is
`responsive to any discovery request, but which were not included in your initial response, please
`
`furnish the additional inforrnational materials to the undersigned as soon as possible. Your duty
`
`tosupplement your responses is at least required by Federal Rule of Civil Procedure 26(e).
`
`

`
`Interrogatory N0. 1: Identify each person providing information upon which the
`
`answers to these discovery requests are based.
`
`Answer:
`
`Interrogatory No. 2: Identify each of Applicant’s present officers and directors and
`
`managerial employees.
`
`Answer:
`
`Interrogatory N0. 3: For any person listed in the answer to Interrogatories 1 and 2,
`
`describe their responsibilities and dates of employment.
`
`Answer:
`
`Interrogatory No. 4: Identify all owners, past /and present, ofthe invention described
`
`and claimed in U.S.: Patent No. 5,357,653.
`
`Answer:
`
`

`
`Interrogatory No. 5: Identify all owners, past and present, of the invention described
`
`and claimed in U.S. Patent No. 5,432,982.
`
`Answer:
`
`Interrogatory No. 6: Identify each person involved with the commercialization, or
`
`marketing, of the invention described and claimed in U.S. Patent No. 5,357,653.
`
`Answer:
`
`Interrogatory No. 7: Identify each person involved with the commercialization, or
`
`marketing, ofthe invention described and claimed in U.S. Patent No. 5,432,982.
`
`Answer:
`
`Interrogatory No. 8: For each entity listed in the response to Interrogatory No‘. 4,
`
`identify all non-U.S. patents and non-U.S. patent applications owned by the listed entity or
`
`entities relating to combination paperclip and document holders.
`
`5
`
`

`
`Answer:
`
`Interrogatory No. 9: For each entity listed in the response to Interrogatory No. 5,
`
`identify all U.S. patents and U.S. patent applications owned by the listed entity or entities
`
`relating to combination paperclip and document holders.
`
`Answer:
`
`Interrogatory No. 10:
`
`Identify any patent dispute, or threatened dispute, past or
`
`present, related to any patents listed in Interrogatories Nos. 4, 5, 8 and 9..
`
`Answer:
`
`Interrogatory No. '11:
`
`'
`
`Identify any searches or investigations and reports thereon,
`
`conducted by, or on behalf of, any owner of U.S. Patent No. 5,357,653 relative to said patent or
`
`the inventions described therein.
`
`

`
`‘Cy
`
`Answer:
`
`Interrogatory N0. 12:
`
`Identify any searches or investigations and reports thereon,
`
`conducted by, or on behalf of, any owner of U.S. Patent No. 5,432,982 relative to said patent or
`
`the inventions described therein.
`
`Answer:
`
`Interrogatory No. 13:
`
`Explain in detail the relationship between Promoclip
`
`International B.V. and Multibridge B.V.
`
`Answer:
`
`Interrogatory N0. 14:
`
`Explain in detail the relationship -between Pronaoclip
`
`International B.V. and Promopont‘B.V.
`
`Answer:
`
`I
`
`

`
`Interrogatory No. 15:
`
`Explain in detail the relationship between Promopont B.V.
`
`and Multibridge B.V.
`
`Answer:
`
`Interrogatory No. 16:
`
`Identify all documents involved in the development and
`
`evolution ofthe design shown in U.S. Trademark Application Serial No. 76/058,233.
`
`Answer:
`
`Interrogatory No. 17:
`
`Identify all persons involved with the creation or
`
`conception ofthe design depicted in U.S. Trademark Application Serial No. 76/058,233.
`
`Answer:
`
`Interrogatory No. 18:
`
`‘
`
`Identify all entities, past and present, claiming any rights
`
`incliiding copyright, patent, and/ortrademark rights in the design depicted in U.S._Trademark
`Application Serial No; 76/058,233".
`
`

`
`Answer:
`
`Interrogatory No. 19:
`
`- For each entity listed in response to Interrogatory 18,
`
`identify all non-U.S. trademark applications or non-U.S. trademark registrations owned by the
`
`listed entities relating to document holding devices.
`
`Answer:
`
`Interrogatory No. 20:
`
`.
`
`For each entity listed in response to Interrogatory 18,
`
`identify all U.S. trademark applications and U.S. trademark registrations owned by the listed .
`
`entities relating to document holding devices.
`
`Answer: '
`
`Interrogatory No. 21:
`
`Identify any information related to third party designs
`
`which are similar to the designdepicted U.S. Trademark Application Serial No. 76/058,233.
`
`

`
`
`
`Answer:
`
`Interrogatory No. 22:
`
`Identify any challenges made by Applicant against any
`
`third party regarding use of the design depicted in U.S. Trademark Application Serial No.
`
`76/058,233.
`
`Answer:
`
`. Interrogatory No. 23:
`
`Identify any challenges made by any third party against the
`
`design depicted in U.S. Trademark Application Serial No. 76/058,233 (excluding the present
`
`matter).
`
`Answer:
`
`Interrogatory N0. 24:
`
`Identify any third party use of a mark conflicting with the
`
`design depicted in
`
`Trademark Application Serial No. 76/058,233 (other.than by licensees or
`
`distributors) that has gone unchallenged.
`
`10
`
`

`
`Answer:
`
`Interrogatory No. 25:
`
`Describe in detail the U.S. wholesale and U.S. retail
`
`distribution systems used in connection with any goods sold under the design described in U.S.
`
`Trademark Application Serial No. 76/058,233.
`
`Answer:
`
`Interrogatory No. 26:
`
`Identify year by year the number of clips depicted in U.S.
`
`Trademark Application Serial No. 76/058,233 sold in the U.S. beginning with the first sale and
`
`continuing to the present date.
`
`Answer:
`
`Interrogatory No. 27:
`
`Identifyieach person who participates or participated in any
`
`Way-in the sale, advertisement or marketing of the design depicted in U.S. Trademark
`
`Application Serial No“. 76/058,233.
`
`11
`
`

`
`Answer:
`
`Identify any advertising, or promotional, expenditures year
`Interrogatory No. 28:
`by year for the design depicted U.S. Trademark Application fierial No. 76/058,233 in the U.S for
`
`printed, electronic, and/or broadcast publishedtmedia beginning with the first year such activity
`
`began and continuing to the present date.
`
`Answer:
`
`Interrogatory No. 29:
`
`Identify each advertisement in which the design depicted in :
`
`U.S. Trademark Application Seri’alNo. 76/058,233 was ever published, broadcast or displayed,
`
`inclnding Witholit limitation advertisements in newspapers and magazines, promotional flyers,
`
`catalogs, circulars, sales literature, and advertisements on radio and TV, or other media.
`
`Answer:
`
`12
`
`

`
`Interrogatory No. 30:
`
`For each advertisement identified in Interrogatory No. 29,
`
`identify each date on which it Was published, broadcast, displayed or distributed.
`
`Answer:
`
`Interrogatory No. 31:
`
`Identify all documents, internal or external, comprising,
`
`relating to or referring to each item identified in response to Interrogatory No. 29.
`
`Answer:
`
`Interrogatory No. 32:
`
`Identify any information related to market research, or
`
`surveys, conducted by or on behalf of Applicant, or otherwise known to Applicant, which relates
`
`to the design shown in U.S. Trademark Application Serial No. 76/058,233. g
`
`‘ Answer:
`
`Interrogatory No. 33:
`
`Identify all licensees or other parties Applicant has licensed
`
`or otherwise permitted to use the design depicted in U.S. Trademark Application Serial No.“
`
`76/058,233.
`
`l3
`
`

`
`Answer: '
`
`Interrogatory No. 34:
`
`Identify any information related to consumers using the
`
`design depicted in U.S. Trademark Application Serial No. 76/058,233 as a source indicator in the
`
`U.S.
`
`Answer:
`
`V
`
`Interrogatory N0. 35:
`
`Identify any information demonstrative of exclusivity of
`
`use ofthe design depicted in U.S. Trademark Application Serial No. 76/058,233 in the U.S.
`
`Answer:
`
`Interrogatory No, 36: '
`
`_
`
`Identify any information related to the cost to manufacture
`
`,
`
`the design depicted in
`
`Trademark Application Serial No. 76/058,233.
`\
`
`A
`
`Answer:
`
`1.4
`
`

`
`Interrogatory No. 37:
`
`Has Applicant ever received an opinion from legal counsel
`
`concerning use of the design depicted in U.S. Trademark Application Serial No. 76/058,233 as a
`
`trademark?
`
`Answer:
`
`Interrogatory N0. 38:
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`For each expert Applicant intends to use in connection with
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`the instant Opposition, identify the expert.
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`Answer:
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`Interrogatory No. 39:
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`Identify any evidence that the push on edges described and
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`depicted in U.S. Patent No. 5,357,653 or 5,432,982 and depicted
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`the design of U.S. Trademark
`
`Application Serial No. 76/058,233 are not functional.
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`Answer:
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`Interrogatory No. 40:
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`Identify any evidence that the V-shaped push on space
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`described and depicted in U.S. Patent Nos. 5,357,653 or 5,432,982 and depicted in the design" of
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`U.S. Trademark Application Serial No. 76/058,233 is not fimctional.
`15
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`

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`Answer:
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`Interrogatory No. 41:
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`Identify any evidence that the main flat surface described
`
`and depicted in U.S. Patent Nos. 5,357,653 and 5,432,982 and depicted in the design of U.S.
`
`Trademark Application Serial No. 76/058,233 is not functional.
`
`Answer:
`
`_l6
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`

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`
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`REQUESTS FOR PRODUCTION OF DOCUMENTS
`
`Request for Production No. 1:
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`Please produce or provide for inspection all
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`documents and things vvhich are identified in Applicant’s responses to Opposer’s First Set of
`
`Interrogatories.
`
`Response:
`
`Request for Production No. 2:
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`Please produce or provide for inspection all
`
`documents and things relating to or referring to any charges of unauthorized use of the invention
`
`described and claimed in U.S. Patent No. 5,357,653.
`
`Response:
`
`Request for Production No. 3:
`
`Please produce or provide for inspection all
`
`documents and things relating to or referring to any charges of unauthorized use of the invention
`
`described and claimed in U.S. Patent No. 5,432,982. I
`
`Response:
`
`17
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`

`
`‘II
`
`Request for Production No. 4:
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`Please produce or provide for inspection all
`
`documents and things relating to or referring to any searches or investigations conducted by or
`
`on behalf of the owner, owners, or licensees of U.S. Patent No. 5,357,653.
`
`Response:
`
`Request for Production No. 5:
`
`Please produce or provide for inspection all
`
`documents and things relating to or referring to any searches or investigations conducted by or
`
`on behalf oftheiowner, owners, or licensees of U.S. Patent No. 5,432,982.
`
`Response:
`
`Request for Production No. 6:
`
`Please produce or provide for inspection all
`
`docutnents and things relating to or referring to U.S. Patent No. 5,357,653 and the application
`
`therefore.
`
`, Response:
`
`18
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`

`
`Request for Production No. 7:
`
`2
`
`Please produce or provide for inspection all
`
`documents and things relating to or referring to U.S. Patent No. 5,432,982 and the application
`
`therefore.
`
`Response:
`
`Request for Production No.-8:
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`Please produce or provide for inspection all-
`
`documents and things which refer or relate to any trademark application for the design depicted
`
`in U.S. Trademark Application Serial No. 76/058,233, "in the U.S. Patent and Trademark Office
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`or any state or other jurisdiction.
`
`Response:
`
`’ Request for Production No. 9:
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`Please produce or provide for inspection all
`
`documents and things relating to the selection or adoption of the design depicted in
`
`Trademark Application Serial No. 76/058,233.
`
`Response:
`
`19
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`

`
`Request for Production'No. 10:
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`Please produce or provide for inspection all
`
`documents and things relating to or referring to any charges of unauthorized use of the design
`depicted in US. Trademark Application Serial No. 76/058,233 brought by Applicant against
`
`others or brought by others against Applicant.
`
`Response:
`
`Request for Production No. 11:
`
`Please produce or provide for inspection all
`
`documents and things which represent, relate or refer to anysearches, surveys, or other
`
`evaluations which relate in any way to the use of the design depicted in U.S. Trademark
`
`Application Serial No. 76/058,233.
`
`Response:
`
`Request for Production No. 12:
`
`Please produce or provide for inspection all
`
`" documents and things relating to any assignments, licenses, or other transfers of any rights in the
`
`design depicted in U.S. Trademark Application Serial No. 76/058,233.
`
`Response:
`
`20 -e
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`

`
`Request for Production No. 13:
`
`Please produce or provide for inspection all
`
`documents
`
`things relating in any way to any advertising ofthe design depicted in U.S.
`
`Trademark Application Serial No. 76/058,233, including specimens of each advertisement,
`
`including but not limited to catalogues, circulars, leaflets," direct mail pieces, newspaper and
`
`magazine ads, telephone book ads.
`
`Response:
`
`Request for Production No. 14:
`
`— Please produce or provide for inspection all
`
`representative samples of all uses of the design depicted in U.S. Trademark Application Serial
`
`No. 76/058,233.
`
`Response:
`
`.\V
`
`Request for Production No. 15:
`
`Please produce or provide for inspection all .
`
`documents and things relating to Applicant’s knowledge of any third party’s use of the design
`
`depicted in U.S. Trademark Application Serial No. 76/058,233, or similar designs.
`
`Response:
`
`21
`
`

`
`Request for Production No. 16:
`
`Please produce or provide for inspection all the
`
`names and addresses of each wholesaler, retailer, distributor or other seller of Applicant’s design
`
`depicted in U.S. Trademark Application Serial No. 76/058,233.
`
`Response:
`
`Request for Production No. 17:
`
`Please produce or provide for inspection all
`
`documents and thingsrelating to Applicant’s U.S. Wholesale and U.S. retail distribution system
`
`used in conjunction with any goods sold therein under the design depicted in U.S. Trademark
`
`Application Serial No. 76/058,233.
`
`Response:
`
`Request for Production No, 18:
`
`Please produce or provide for inspection all
`
`documents and things relating to Applicant’sVyearly sales of the clip depicted in U.S. Trademark
`
`Application Serial No. 76/058,233 in the United States.
`
`Response:
`
`22
`
`

`
`Request for Production No. 19:
`
`A Please produce or provide for inspection all
`
`documents and things relating to the yearly number of clips depicted in U.S. Trademark
`
`Application Serial No. 76/058,233 sold in the United States.
`
`Response:
`
`Request for Production No. 20: ‘
`
`Please produce or provide for inspection all
`
`documents and things relating to Applicant’s yearly advertising expenditures in the U.S. for the
`
`design depicted in U.S. Trademark Application Serial No. 76/058,233.
`
`Response:
`
`Request for Production No. 21:
`
`Please produce or provide for inspection all
`
`documents and things demonstrating consumers‘ are using the design depicted" in U.S. Trademark
`
`Application Serial No. 76/058,233 as a source indicator in the U.S.
`
`Response:
`
`23
`
`

`
`Request for Production No. 22:
`
`Please produce or provide for inspection all
`
`documents and things demonstrating Applicant’s exclusivity of use of the design in the U.S.
`
`depicted in U.S. Trademark Application Serial No. 76/058,233.
`
`Response:
`
`Request for Production No. 23:
`
`Please produce or provide for inspection all
`
`documents and things identifying the relationship between Applicant and Promopont B.V.
`
`Response:
`
`Request for Production No. 24:
`
`Please produce or provide for inspection all
`
`documents and things identifying the relationship between Applicant and Multibridge B.V.
`
`Response:
`
`24'
`
`

`
`Request for Production No. 25:
`
`Please produce or provide for inspection all
`
`documents and things identifying the relationship between Multibridge B.V. and Promopont
`
`B.V.
`
`Response:
`
`Request for Production No.26:
`
`Please produce or provide for inspection all
`
`documents and things demonstrating that the push on edges described and depicted in U.S.
`
`Patent Nos. 5,357,653 and 5,432,982 and depicted in the design of U.S. Trademark Application
`
`Serial No. 76/058,233 are not functional.
`
`Response:
`
`Request for Production No. 27:
`
`Please produce or provide for inspection all
`
`documents and things demonstrating that the V.-shaped push on space described and depicted in
`
`U.S. Patent No. 5,357,653Aand 5,432,982 and depicted in the design of US.» Trademark
`
`Application Serial No. 76/058,233 is not fimctional.
`
`Response:
`
`25
`
`

`
`Request for Production No. 28:
`
`Please produce or provide for inspection all
`
`documents and things demonstrating that the main flat surface described and depicted in U.S.
`
`Patent No. 5,3 57,653 and 5,432,982 and depicted in the design of U.S.4 Trademark Application
`
`Serial No. 76/058,233 is not functional.
`
`Response:
`
`26
`
`

`
`'4)
`
`REQUESTS FOR ADMISSION
`
`Request for Admission No. 1:
`
`I Admit that applicant is the owner of U.S.
`
`Trademark Application Serial N5. 76/058,233.
`
`Response:
`
`Request for Admission No. 2:
`
`Admit that U.S. Trademark Application Serial No.
`
`76/058,233 was filed in the U.S. Patent and Trademark Office on May 25, 2000.
`
`Response:
`
`Request for Admission No. 3:
`
`Admit that the first use in commerce in the U-.S. for
`
`the design depicted in U.S. Trademark Application Serial No. 76/05 8,233 is no earlier than May
`
`1995.
`
`Response:
`
`I
`
`27
`
`

`
`
`
`Request for Admission No. 4:
`
`Admit that the first use in the U.S. for the design
`
`depicted in U.S. Trademark Application Serial No. 76/058,233 is no earlier than May 1995.
`
`Response:
`
`Request for Admission No. 5:
`
`Admit that the applicant for the design depicted in
`
`U.S. Trademark Application Serial No. 76/058,233