IN THE UNITED STATES PATENT AND TRADEMARK
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.,
`
`Applicant.
`
`\/\y\y\/\J\_/%/\/\/
`
`Opposition No. 91161648
`
`TRANSMITTAL LETTER (GENERAL)
`(With Certificate of Mailing by Express Mail)
`
`Transmitted herewith is the following document in triplicate:
`
`APPL|CANT’S MOTION TO COMPEL DISCOVERY
`
`Applicant believes there is no fee due with this communication, however, if there
`
`is a fee due, said insufficiency should be debited to Deposit Account No. 13-4892.
`
` Dated: November 10 2004
`
` H, ESQ.
`JOSEPH E. MUETH LAW CORPORATION
`225 South Lake Ave., 8"‘ Floor
`Pasadena, CA 91101
`Telephone: (626) 584-0396
`Facsimile: (626) 584-6862
`
`I certify that this document is being deposited on November 10. 2004
`with the U.S. Postal Service “Express Mail Post Office to Addressee"
`service under 37 C.F.R. 1.10, Express Mail Label Number ER 832380205US
`and is addressed to the Box TTAB NO FEE, Commissioner for Trademarks,
`P.O.
`x 1451,
`ndria, A 22313- 451.
`\
`
`ELARDE
`U
`Dated: November 10, 2004
`
`|II|||||||II|||||||||||||||I||||||III|||||III|||||
`
`1 1 -12-2004
`U.S. Pawn! & TMOfcITM Mail Ftcpt D1. #32
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EC&C TECHNOLOGIES, INC.,
`
`Applicant,
`
`v.
`
`HERA, LLC,
`
`‘\/\/xaxyx/\/\I\/%
`
`Opposition No. 91161648
`
`Opposer.
`
`
`BOX TTAB NO FEE
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`APPL|CANT’S MOTION TO COMPEL DISCOVERY
`
`The Applicant moves for an order requiring Opposer to produce specified
`
`documents and simultaneously moves to stay all testimony periods pending a resolution
`
`of the discovery motion.
`
`On November 9, 2004, Applicant filed and sewed its “App|icant’s Motion To
`
`Compel Discovery” in Opposition No. 91161633. At the same time, Applicant filed its
`
`“Motion To Consolidate” the proceedings in the instant Opposition and Opposition No.
`
`91161633.
`
`

`
`
`
`APPL|CANT’S MEMORANDUM
`
`BACKGROUND
`
`Applicant, EC&C Technologies, Inc. (EC&C)‘ is the owner of U.S. Patent No.
`
`6,077,491 and associated patents relating to the scrubbing of power plant combusion
`
`gases using ammonia to remove oxides of nitrogen. On November 30, 2001, Applicant
`
`sued Environmental Elements Corp. for patent infringement, Civil Action No. CV 01-
`
`10331JFW (Ex) filed in the United States District Court for the Central District of
`
`California and entitled EC&C Technologies, Inc. v. Environmental Elements Corp. After
`
`extensive discovery and pre-trial proceedings, this suit was settled by Settlement
`
`Agreement executed on September 2, 2003 with Environmental Elements Corp. being
`
`permanently enjoined from further acts of infringement.
`
`Included in the Settlement
`
`Agreement was the agreement on the part of Environmental Elements Corp. that it
`
`would cease all use of the marks Ammonia On Demand and AOD. Also on September
`
`2, 2003 Applicant filed intent-to—use U.S. Trademark Application No. 78/295514 for the
`
`mark Ammonia On Demand. This was done pursuant to the plan that one or more of
`
`Applicant's patent licenses would be licensed to use the Ammonia On Demand and
`
`AOD marks.
`
`Prior to settlement, Environmental Elements Corp. was the patent Licensee of
`
`Opposer, Hera, LLC and it was the practice of the licensed technology which infringed
`
`‘In the Notice of Opposition, Opposer erroneously refers to EC&C as "the U2A
`Company”. No such entity exists.
`
`

`
`
`
`Applicant’s U.S. Patent No. 6,077,491 and associated patents. Environmental
`
`Elements Corp. owned the trademark “AOD” outright and allowed Opposer to use that
`
`mark in conjunction with the confusingly similar “Ammonia On Demand”..
`
`Opposer has filed a Notice of Opposition (“Notice”) in which it alleges that it has
`
`rights in the Ammonia On Demand mark by virtue of provisions in a “License
`
`Agreement”, also referred to as “Opposer License”, with Environmental Elements
`
`Corporation (EEC), pursuant to which and upon the occurrence of certain events, all
`
`rights in the Ammonia On Demand trademark would be returned to Opposer, see Notice
`
`at paragraph 2.
`
`Apparently, Opposer claims that when the “License Agreement" with
`
`Environmental Elements Corp. was terminated the rights to the Ammonia On Demand
`
`Trademark somehow were acquired by Opposer. This event allegedly occurred on
`
`September 3, 2003, see the Notice of Opposition in Opposition No. 91161633, top of
`
`page 8 under “Exhibit 6".
`
`On August 26, 2004, Applicant served “App|icant’s First Request For Production
`
`Of Documents” on Opposer, copy attached. These document requests call for the
`
`production pursuant to Rule 34 FRCP of all documents relating to Opposer's claim of
`
`ownership of the Ammonia On Demand mark derived from Environmental Elements.
`
`To date, only a manifestly inadequate response to the document request has
`
`3
`
`

`
`been provided. On October 1, 2004, Opposer served a paper purporting to be
`
`responsive to the document request in instant Opposition No. 91161648, see
`
`attachment entitled “Opposer’s First Response To App|icant’s First Request For
`
`Production Of Documents”. The “redacted” copy of the requested License Document,
`
`identified by Opposer at “Doc 1.0" is clearly non-responsive and was generated by
`
`counsel for Opposer solely for purposes of this litigation. Apparently, the license with
`
`Environmental Elements contains eleven paragraphs. The “redacted” copy contains
`
`only parts of paragraphs 1, 9 and 11.
`
`Opposer’s counsel has alleged that the requested documents may contain
`
`proprietary or confidential information. The undersigned attorney has tendered a form
`
`of Protective Order, see attached. Nevertheless, Opposer’s counsel has not responded
`
`to the document request and the due date for such response has long since elapsed.
`
`It
`
`appears that Opposer is engaged in an attempt to frustrate discovery.
`
`Applicant submits that as a penalty for its failure to respond to the Rule 34
`
`document request, Opposer should be precluded from offering any evidence that it has
`
`acquired any trademark rights from Environmental Elements Corp.
`
`CONCLUSION
`
`Applicant is entitled to make discovery as to the contents of the License
`
`Agreement with Environmental Elements Corp. and all subsequent agreements with
`
`4
`
`

`
`
`
`Environmental Elements Corp. since these agreements are pleaded as the basis for the
`
`Opposition.
`
`In view of the above comments, the documents are directed to subject
`
`matter which is reasonably calculated to lead to admissible evidence.
`
`Dated: November 10, 2004
`
`Respectfully submitted,
`
`
`
`Attorney for Registrant
`
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing APPLICANT’S
`
`MOTION TO COMPEL DISCOVERY was sent via Express Mail, this 10”‘ day of
`
`November, 2004, postage prepaid, addressed to counsel for Opposer as follows:
`
`Howard E. Sandler
`
`Hera, LLC
`23792 Rockfield Blvd., Suite 100
`Lake Forest, CA 92630
`
`Dated: November 10, 2004
`
`V 4/ Z ,4 . I
`
`C
`
`
`
`I
`
`Esquire
`Joseph E. Mueth Law Corporation
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101
`
`

`
`STATEMENT BY COUNSEL IN AN ATTEMPT TO RESOLVE
`
`Following receipt of the paper entitled “Opposer’s First Response To Applicant’s
`
`First Request For Production Of Documents”, on October 8, 2004, the undersigned
`
`discussed the Rule 34 Document Request with counsel for Opposer. Mr. Sandler
`
`expressed concern that the requested documents might contain confidential or
`
`proprietary information. Accordingly, on October 8, 2004, we faxed a draft “Protective
`
`Order” to Mr. Sandler in a good faith effort to address these concerns, see attachment.
`
`Follow up letters were sent on October 13"‘ and October 25"‘, 2004. On November 2,
`
`2004, we called Mr. Sandler to advise him of our intention to file this Motion. Mr.
`
`Sandler responded by a FAX letter dated November 3, 2004, copy attached.
`
`I hereby certify that the above statements with respect to conversation with
`
`opposing counsel are true.
`
` Jose ,1
`
`.M th, Esq.
`Attorney for Applicant
`
`

`
`
`
`I)
`
`3
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91 161648
`
`)
`
`) ) )
`
`) )
`
`)
`
`) )
`
`HERA, LLC
`
`Opposer,
`
`V
`
`EC&C TECHNOLOGIES, INC.
`
`Applicant
`
`OPPOSER’S FIRST RESPONSE TO APPLICANT’S FIRST REQUEST FOR
`
`PRODUCTION OF DOCUMENTS
`
`Opposer hereby responds to Applicant’s First Request, as follows:
`
`1.
`
`Document Requested:
`
`The “OPPOSER License” referred to in paragraph 2 of the
`
`Notice of Opposition.
`
`Document Provided:
`
`A redacted copy ofthe requested License Document (See
`
`Doc 1.0).
`
`Discussion:
`
`OPPOSER objects to the scope of this request as being
`
`unduly broad, irrelevant, and outside the permissive scope of
`
`discovery, with respect to the trademark in this instant
`
`Opposition. In this regard, OPPOSER makes note of the
`
`fact that the requested license agreement, and attachment,
`
`Page I of 5
`
`

`
`
`
`are in excess of 40 pages, which deal primarily with the
`
`transfer of technology, consulting services, financial
`
`arrangements, reporting and patents and the like. The matter
`
`oftrademarks was not a significant matter in the license
`
`agreement, and any mention or inference thereof is only
`
`contained in a very few provisions, all of which are setforth
`
`in the attached Redacted Copy of the License (See Doc 1.0).
`
`Furthermore, the License involves other parties; includes
`
`significant confidential matters, and contains significant
`
`proprietary operational and contracting information, which is
`
`not appropriate or necessary to disclose to the Applicant,
`
`who is a competitor ofthe OPPOSER As such, the
`
`OPPOSER submits that Doc 1.0 fulfills the needs of the
`
`Applicant and the redacted portions of the License
`
`Agreement do not come within the broad scope of relevance
`
`defined pursuant to Fed.RCiv.P. 26 (b)(1) and, also, are of
`
`such marginal relevance that the potential harm occasioned
`
`by discovery would outweigh any presumption in favor of
`
`broad disclosure.
`
`Document Requested:
`
`All documents that relate to the “OPPOSER License”
`
`referred to in paragraph 2 of the Notice of Opposition.
`
`Document Provided:
`
`NONE
`
`Discussion:
`
`In addition to matters of relevance and breadth, such as
`
`mentioned in Par. 1 above, OPPOSER objects to this request
`
`as being oppressive, burdensome and harassing. In this
`
`regard, Applicant makes note ofthe fact that the Opposer
`
`Page 2 of 5
`
`

`
`
`
`License was in negotiation for many months and was in
`
`operation for several years prior to termination. As such
`
`there are literally hundreds, perhaps thousandsof documents
`
`which may relate to the license agreement (i.e. negotiation
`
`strategies, reporting, product sales reports and analysis,
`
`invoices, and the like), most of which have absolutely no
`
`significance with respect to issues in the subject Opposition.
`
`OPPOSER submits that the documents submitted and/or
`
`identified in this Response, are more than adequate for
`
`purposes of the instant request and, as such, no further
`
`documents are being produced or identified.
`
`Document Requested:
`
`All documents which refer to the “AMMONIA ON
`
`DEMAND” trademark.
`
`Document Provided:
`
`NONE
`
`Discussion:
`
`The above “Discussion” section of Par. 2 , is equally
`
`applicable with respect to this document request, only more
`
`so. In this regard, Applicant makes note of the fact that,
`
`because the Ammonia on Demand urea to ammonia
`
`conversion system is a commercial product, there are literally
`
`hundreds of documents which include the Ammonia on
`
`Demand Trademark within the text, on drawings, on private
`
`and public power point presentations, on internal and
`
`external memos, on advertising literature and promotional
`
`materials, and so on. As such, any attempt to provide all of
`
`these uses would be extremely burdensome, ifnot
`
`Page 3 of 5
`
`

`
`
`
`impossible, considering OPPOSER’s resources. Typical
`
`representative documents may be seen on OPPOSER’s
`
`Website, www.heralic.com. If this response is not adequate
`
`for Applicant, OPPOSER invites Applicant’s attorney to
`
`OPPOSER’s California ofiices, where such attorney will be
`
`given reasonable access to appropriate files, and a right to
`
`copy files which are relevant to the issues at hand, are not
`
`confidential, and are not ofthe sort which would give rise to
`
`a competitive advantage to Applicant.
`
`4.
`
`Document Requested:
`
`All documents that relate to the alleged termination of the
`
`license with EEC, as set forth in paragraph 4 ofthe Notice
`
`of Opposition.
`
`Document Provided:
`
`A redacted copy of the document “TERMINATION OF
`
`HERA/SINI EEC JUNE 8, 1999 LICENSE AGREEMENT”
`
`(See Doc 4.0)
`
`Comments:
`
`The reason for redaction of this document is similar to the
`
`“commen ” section in Item 1 above.
`
`Dated: October 1, 2004
`
`
`
`Howard . Sandler, President
`Hera, LLC
`23792 Rockfield Blvd., Suite 140
`Lake Forest, CA 92630
`
`Page 4 of 5
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and complete copy of the foregoing OPPOSER’S
`FIRST RESPONSE TO APPLICANT’S FIRST REQUEST FOR PRODUCTION OF
`DOCUMENTS is being served on Applicant this 15‘ day of October, 2004 by forwarding same via
`Express Mail, postage prepaid addressed to:
`
`Joseph E. Mueth, Esquire
`Joseph E. Mueth Law Corporation
`225 South Lake Avenue, 8“‘ Floor
`Pasadena, CA 91 101
`
`Dated:October1,2004
`
`E
`
`Howard . Sandler
`
`Hera, LLC
`23792 ROckfie1d Blvd., Suite 140
`Lake Forest, CA 92630
`
`Page 5 of 5
`
`

`
`
`
`.7
`
`i
`
`7) ‘Doc. LC)
`
`LICENSE AGREEMENT
`
`THIS AGREEMENT is made the dates and year indicated below, and effective the 8th day of
`June, 1999, by and between, HERA, LLC, a Delaware limited liability company having a
`principal place of business at Lake Forest, California, U.S.A., and SIIRTEC NIGI S.p.A., an
`Italian Company, having a principal place of business in Milano, Italy (HERA, LLC and
`SIIRTEC NIGI being individually referred to as “HERA” and “SINI” respectively, and being
`collectively referred to as LICENSOR);
`‘
`
`AND
`
`a Delaware Corporation, having a
`ENVIRONIVIENTALA ELEIVIENTS CORPORATION,
`principal place_’of business at Baltimore, Maryland, U.S.A. (EEC).
`
`WHEREAS
`
`the development of design, operation, system and control
`A. LICENSOR is engaged in:
`parameters for certain products (defined in Art. 1.3 as LICENSED PRODUCTS);
`the
`development of marketing and ‘sales presentations and the preparation of proposals and
`information to
`users
`and
`suppliers of
`the LICENSED PRODUCTS;
`substantial
`commercialization efforts concerning the LICENSED PRODUCTS; and the submission and
`prosecution of patent applications concerning the LICENSED PRODUCTS; and other related
`activities.
`
`B. EEC wishes to obtain a license and support from LICENSOR in order to commercialize the
`LICENSED PRODUCTS.
`.
`
`C. LICENSOR is ready, willing and able to grant such a License and to provide such support.
`
`THE PARTIES HAVE AGREED AS FOLLOWS:
`
`1.0 DEFINITIONS
`
`0'
`
`0
`
`C
`
`1.1
`
`1.2
`
`1.3
`
`1ofI9"
`
`

`
`
`
`.7,
`
`T3
`
`1.4
`
`LICENSED PRODUCTS shall be the following:
`
`A 1.4.1
`
`(including urea storage, mixing, -handling,
`and processes
`Systems
`ammonia generation, and ammonia delivery subassemblies) for generating
`ammonia from urea on-site and on demand, primarily for supplying
`ammonia for particulate and gaseous emissions control, and also in other
`areas of substantial demand for ammonia.
`
`1.4.2
`
`Subassemblies, components and services for the systems and processes
`specified in Art. 1.4.1.
`
`1.4.3
`
`Such other products as the parties may agree upon in writing.
`
`1.4.4 Repair, spare and replacement parts for the equipment and systems as
`‘
`'
`specified above.
`
`include, but shall not be limited to, those sales,
`TRANSMITTED DATA shall
`marketing,
`financial projections, studies, customer
`information, pricing and
`competition information and analysis,
`raw material
`sourcing and pricing
`information, designs, drawings, specifications, patent rights, process parameters,
`G&A layouts, control logic, material specs, site access rights, safety information
`and studies,
`intellectual property information, and the like, concerning the
`LICENSED PRODUCTS, which are of a nature specified in Exhibit “B” attached
`hereto, and are transmitted to BBC during the term of this Agreement, as well as
`items of a similar nature which were transmitted to EEC prior to the EFFECTIVE
`DATE, and are identified with the Bates designations in Exhibit “C” attached
`hereto. This definition of TRANSMITTED DATA shall also include SPECIFIC
`TRANSMITTED DATA.
`'
`
`SPECIFIC TRANSMITTED DATA shall mean data furnished to EEC in under
`Article 4, which are of a nature requiring generation of data by LICENSOR _
`which is in addition to the TRANSMITTED DATA.
`
`1.5
`
`1.6
`
`1.7
`
`2ofl9
`
`

`
`
`
`O
`
`O
`
`O
`
`event of such a voluntarily termination:
`
`9.4.1
`
`I.J
`
`‘
`
`I
`
`'
`
`J
`
`In the
`
`9.4.2 All TRANSMITTED DATA, shall be returned to LICENSOR and EEC
`shall make no further use thereof;
`_
`-
`
`9.4.3 LICENSOR shall have a right to request EEC to enter into negotiations
`with respect to rights to all improvements to the'LICENSED PRODUCTS
`that are made by EEC during the TERM, including inventions and patents.
`
`11.4 No right, title or license is granted by, or shall be implied from this Agreement,
`under any trademark, tradename or copyright rights now or hereafter owned or
`controlled by LICENSOR; provided, however, at the request of EEC, HERA shall
`assign to EEC all of its right, title and interest to the trademark AODTM.
`
`11.5 .Neitl1er party shall be liable to the other for special,
`damages. «
`'
`
`indirect, or consequential
`
`

`
` D
`
`:7
`
`11.10. This Agreement sets forth the entire agreement and understanding between the
`parties relating to the subject matter hereof, and supersedes and cancels all prior
`discussions and agreements between them. Neither party shall be bound by any
`definition, condition, warranty, or representation other than as expressly stated in
`this Agreement. Any amendments to or modification of this Agreement shall be
`effective only if reduced to writing and executed by the parties hereto.
`
`IN WITNESS WHEREOF, the parties have caused this Agreement to be duly executed as of the
`day and year indicated below and effective as of the 8th day of June 1999.
`
`WI
`
`S
`
`4
`
`ENVIRONIVIENTAL ELEMENTS CORP.
`
`Name:
`
`S. Michael Dunseith
`
`Title:_Executive VP and COO
`
`Date:
`
`'3 JWKQ lqclfl
`
`. Howard E. Sandler
`
`Name: -
`
`Title: _
`
`President
`
`Date:
`
`Q 3‘-.)v%N~
`
`\,j
`
`
`
`SIIRTEC NIGI
`
`
` Name: Ada berto Besetti
`
`Title:
`
`President
`
`Date:
`
`Tu/Sufi.
`
`18 ofI9
`
`

`
`
`
`'43 c/I-.0
`
`Page 1 of5
`
`TERMINATION
`
`or
`
`HERAISINI — EEC
`
`JUNE 8, 1999
`
`LICENSE AGREEMENT
`
`THIS AGREEMENT, which has an Effective Date as of the date of the last signature’
`to this Agreement, terminates the License Agreement of June 8, 1999, including all »
`amendments thereto (collectively the LICENSE AGREEMENT), by and between, .
`HERA, LLC, a Delaware limited liability company having a principal place of business
`at Lake Forest, California, U.S.A., in cooperation with SIIRTEC NIGI S.p.A., an Italian_
`Company, having a principal place of business in Milano,
`Italy" (HERA, LLC and
`SIIRTEC NIGI being hereinafter individually referred to as "HERA" and “SINI",
`respectively, and being collectively referred to as LICENSOR);
`
`AND
`
`ENVIRONMENTAL ELEMENTS CORPORATION, a Delaware Corporation having a
`principal place of business" at Baltimore, Maryland, U.S.A. (EEC).
`
`is_ in their respective best interests to
`WHEREAS, the parties have agreed that it
`terminate the LICENSE AGREEMENT,
`including all rights and obligations relating
`thereto.
`
`NOW THEREFORE,
`follows:
`
`for good and valuable consideration,
`
`the parties agree as
`
`'
`
`1.0
`
`DEFINITIONS
`
`, 1.1‘
`
`The definitions setforth in the LICENSE ‘AGREEMENT are hereby
`adopted and incorporated by reference in this Termination Agreement.
`
`TERMINATION DATE shall be the date of the last signature to this
`agreement.
`'
`
`1.2
`
`1.3
`
`F11‘./:4-L
`
`I
`
`I.-i.‘ERA7Lic>enseTerrnir1ation992O30"
`
`

`
`
`
`.2
`
`
`
`f)
`
`Page 5 of 5
`
`to be duly
`the parties have caused this Agreement
`IN WITNESS WHEREOF,
`executed as of the day and year indicated below, and Effective as of the date of the
`signature of the last signing party hereto.
`~
`
`WITNESS
`
`ENVIRONMENTAL ELEMENTS CORP.
`
` _' '
`
`
`
`I Lu/. L-‘.41.; E
`
`~YCHL/1-/f
`
`Title: .Z'Nf‘E€/M /=’/.'€rxoe/cr.< 0%
`
`Date; SE/’r‘»sM}JE/-3 5, ‘Zco 3
`
`WITNESS:
`
`-"HERA, LLC
`
`
`
`
`
`(,
`
`E
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.,
`
`Applicant.
`
`\y\y\;\/;\g;\y\/
`
`EU"Ib5LI5755‘IUS
`
`Opposition No. 91161648
`
`APPLICANT’S FIRST REQUEST
`FOR PRODUCTION OF DOCUMENTS
`
`Pursuant to Rule 34 of the Federal Rules of Civil Procedure and Rule 2.120 of
`
`the Trademark Rules of Practice, Applicant hereby serves Applicant's First Request for
`
`Production of Documentsand requests that Opposer, within thirty days, produce copies
`
`of the documents set forth below at the offices of Applicant's attorneys, subject to the
`
`following definitions and instructions:
`
`DEFINITIONS AND INSTRUCTIONS
`
`1. “Opposer" means Hera, LLC, its successors in interest, parents, subsidiaries,
`
`divisions, licensees and related organizations and their officers, directors, employees,
`
`agents, representatives, and all other Persons acting or purporting to act on its behalf,
`
`as the context hereof may require.
`
`2. “Document” means, without limitation, contracts, agreements, memoranda of
`
`agreements, assignments, licenses, minutes, minute books, books of account, orders,
`
`1
`
`

`
`
`
`invoices, packing slips, statements, bills, checks, check stubs, vouchers, writings,
`
`printed mater, notes, papers, books, notebooks, computation sheets, reports,
`
`memoranda, data sheets, photographs, drawings, charts, catalogs, brochures, records,
`graphs, sketches, publications, reprints, tables, letters, price‘ lists, bulletins,
`
`announcements, analyses or statistical data, written communications of any kind,
`
`records, oral communications, recordings (tape, disc or other) or oral communications,
`
`instructions, cables, telegrams, radiograms, telefaxes and other messages, writings and
`
`printed materials of any kind whether or not they are privileged or within Opposer’s
`
`possession, custody or control.
`
`3. Unless the request asks for all documents, or each document, the documents
`
`that need to be produced are those documents that are sufficient to provide the
`
`described information as well as those documents that Opposer intends to rely on as
`
`evidence.
`
`4.
`
`If Opposer objects to the production of any document which falls within a
`
`request based on claim of privilege or a claim that such documents constitute attorney
`
`work product, the following information is requested:
`
`(a)
`
`The date of the document;
`
`(b)
`
`The name of the document's originator, the name of the person to '
`
`whom it is addressed and the names of all persons who were
`
`shown copies;
`
`(c)
`
`A general description of the type of document and the subject
`
`matter to which it pertains; and
`
`(d)
`
`The basis for withholding the document.
`
`2
`
`

`
`
`
`DOCUMENTS TO BE PRODUCED
`
`1. The “OPPOSER License” referred to in paragraph 2 of the Notice of
`
`Opposition.
`
`2. All documents that relate to the “OPPOSER License" referred to in paragraph
`
`2 of the Notice of Opposition.
`
`3. All documents which refer to the “Ammonia On Demand" trademark.
`
`4. All documents that relate to the alleged termination of the license with EEC,
`
`as set forth in paragraph 4 of the Notice of Opposition.
`
`Dated: August 30, 2004
`
`Respectfully submitted.
`
` i
`
`. Mue h, Esquire
`h
`/
`0 eph E. Mueth Law Corporation
`225 South Lake Avenue, 8?“ Floor
`Pasadena, California 91101
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and compiete copy of the foregoing
`
`APPLlCANT’S FIRST REQUEST FOR PRODUCTION OF DOCUMENTS is being
`
`served on Opposer this 30"‘ day of August, 2004, by forwarding the same via Express
`Mail, postage prepaid, addressed to:
`.
`
`Howard E. Sandler
`
`Hera, LLC _
`23792 Rockfield Blvd, Suite 100
`
`Lake Forest, CA 92630
`
`Dated: August 30, 2004
`
`
`
`/I
`
`eph E. Mueth, Esquire
`//J
`Joseph E. Mueth Law Corporation
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101
`
`

`
`
`
`11/83/2884
`
`17:82
`
`949~787-5%f5
`
`HERA LLC
`
`,
`
`y«)
`
`PAGE
`
`51/81
`
`.'
`
`H.ERA,LLC
`23792 Rockfield Blvd, Suite 100
`Lake ‘Forest, California 92830
`.
`Tel. 949.207.5432
`Fax 949.707.5435
`www.hera||c.com
`
`e—mail:info@heraIIc.com
`,
`Direct e-mail: hsandler@hera|Ic,com
`
`
`
`- ’
`
`
` JOSEPH E. muem
`
`
`
`LAWCORPORATION
`
`November 3, 2994
`
`ygg FAX — 626.584.6862
`
`Joseph E. Meuth, Esq.
`225 South Lake Avenue, 8"’ Floor
`Pasadena, California 91101
`'
`
`l ( '
`(V
`
`Re: Your Client EC&C - Trademark Matters
`
`Dear Joe:
`
`In response to your recent fi1x,_aswell as our conversation this date, please note the following:
`
`1.
`
`I have had a difficult time in attempting to determine exactly what Hera/EEC contract
`documentation hadbeen disclosed to EC&C during the EEC/EC&C infiingement litigation.
`As mentioned, I have-finally traced the -“keeper of the documents” back to Sherry Flax of the
`Saul Ewing firm (410 332 8784). Sherry advised that the docs are currently in storage;
`however, she will call them up within the next few days, and thereafter determine what
`documents were disclosed, for whose eyes, and under what sort of protective order. As I
`mentioned to you,
`the fact that EEC had disclosed these docs to EC&C at al, without
`advising Hera, was a surprise to me, and I can better address your current document request,
`after I have an idea as to what has already has been disclosed, and to whom,
`
`I will start on modifying the Protective Agreement which you had previously forwarded to
`me; however, as mentioned, I would appreciate your having an electronic copy of your drafi
`sent to me via E-Mail (either in Word or WordPcrfect format) so that I can providedyou with
`a redline copy indicating the changes required by Hera.
`
`Sony for the delay. however. I cannot push EEC or their counsel any faster than I have. Should you
`feel dissatisfied with my best cfiorts in being cooperative, there is not much further that I can do.
`In '
`any event, I expect to have a Redline ofyour drafi to you by Monday evening, November 8, latest.
`
`Sincerely,
`
`How d
`
`/
`
`.Sandler
`
`

`
`
`
`JOSEPH E. MUETH
`LAW CORPORATION
`PATENTS, TRADEMARKS. COPYRIGHT
`CORPORATE CENTER
`225 sown-I LAKE AVENUE, em rI.oon
`PASADENA, CALIFORNIA 9llOl
`rAx I526) 554-6362
`
`FAX TRANSMISSION
`
`DATE:
`
`10-52 §’Q 4%
`
`TO TELEPHONE NO.:
`
`flfQ/ 207/ 2’§/5»5/
`
`ORIGINAL SENT BY MAIL: YES
`
`NO X
`
`'
`NUMBER OF PAGES TRANSMITTED (lncluding'Cover Sheet):
`. ATTN:
`(22%@
`MESSAGE:
`£644 fig; ’ I
`
`
`
`This message isintended only for the use of the individual or entity to which it is addressed, and may _
`contain information that is privileged, confidential and exempt from disclosure under applicable law.
`If the
`_ reader of this message is not the intended recipient, or the employee or agent responsible for delivering the
`message to the intended recipient, you are hereby notified that any dissemination. distribution or copying of this
`communication is strictly prohibited.
`If you have received this communication in error. please notify us
`immediately by telephone, and return the original to us by postal service at the address noted above. Thank
`you.
`
`'
`
`FROM: JOSEPH E. MUETH, ESQ.
`
`’
`
`FAX: (626) 584-6862
`TEL: (626) 584-0396
`
`OURDOCKET: Q24/[U f/277'//2—/
`
`

`
`
`
`3;
`
`JOSEPH E. MUETH
`LAW CORPORATION
`PATENTS. TRADEMARKS. COPYRIGHT
`CORPORATE CENTER
`225 SOUTH LAKE AVENUE. 3*» FLOOR
`
`PASADENA, CALIFORNIA 9il0i
`FAX (626) 564-6862
`TELEPHONE (626) 584-0396
`
`October 25, 2004
`
`VIA FACSIMILE
`
`Fax No.: (949) 707-5435
`
`Howard E. Sandler, President
`Hera, LLC
`23792 Rockfield Blvd., Suite 100
`Lake Forest, California 92630
`
`Re: Hera v. EC&C - Opposition No. 91161648
`Our Docket: 279-112 (Ammonia On Demand Trademark)
`and
`
`Hera v. EC&C - Opposition No. 91161633
`Our Docket: 279-111 (AOD Trademark)
`
`Dear Howard:
`
`On October 22”‘, you advised that we could expect to receive a response to our
`document request.
`
`To date, we have not received. a response.
`
`Please advise whether you intend to respond.
`
`Very truly yours,
`
`
`
`JEM/iv
`
`

`
`
`
`TRANSMISSION VERIFICATION REPOEH)
`
`«
`
`TIME : 18/25X2884 14:31
`
`
`
`
`
`
`
`
`DATEaTIME
`FAX NO./NAME
`DURATION
`PAGECS}
`RESULT
`MODE
`
`18/25 14:38
`19497375435
`88:88:31
`82
`OK
`STANDARD
`ECM
`
`

`
`
`
`JOSEPH E. MUETH
`LAW CORPORATION
`PATENTS. TRADEMARKS. COPYRIGHT
`CORPORATE CENTER
`225 SOUTH LAKE AVENUE. 8"‘ FLOOR
`
`PASADENA, CALIFORNIA 9llOl
`FAX (626) 584'5B62
`TELEPHONE (626) 584-0396
`
`FAX TRANSMISSION
`
`DATE:
`
`/M3-a Iv’
`
`TO TELEPHONE NO.:
`
`«
`
`fl 279707’ 5915 5/
`
`ORIGINAL SENT BY MAIL: YES
`
`NO X
`
`- NUMBER OF PAGES TRANSMITTED (including Cover Sheet):
`ATTN: I E
`'
`
`9’
`
`8 MESSAGE:
`
`E T
`
`his message is intended only for the use of the individual or entity to which it" is addressed, and may
`contain information that is privileged, confidential and exempt from disclosure under applicable law.
`If the
`reader of this message is not the intended recipient, or the employee or agent responsible for delivering the
`message to the intended recipient, you are hereby notified that any dissemination, distribution or copying of this
`communication is strictly prohibited.
`If you have received this communication in error, please notify us
`immediately by telephone. and return the original to us by postal service at the address noted above. Thank
`you.
`.
`
`FROM: JOSEPH E. MUETH, ESQ.
`
`1
`
`FAX; (626) 584-6862
`TEL: (626) 584-0396
`
`'
`
`.
`
`OUR DOCKET:
`
`_
`
`,27Z—/1/Eag ” x/ 374-//:2
`
`‘
`
`ry
`
`

`
`
`
`JOSEPH E. MUETH
`LAW CORPORATION ,
`PATENTS. TRADEMARKS. COP\’RlGHT
`CORPORATE CENTER
`225 SOUTH LAKE AVENUE. 6"‘ FLOOR
`
`PASADENA. CALIFORNIA 9Il0l
`PA): (626) 584-6862
`TELEPHONE (626) 564-0396
`
`October 13, 2004
`
`1 VIA FACSIMILE
`Fax No.: (949) 707-5435
`
`Howard E. Sandler, President
`Hera, LLC
`23792 Rockfield Blvd., Suite 100
`Lake Forest, California 92630
`
`Re:
`
`' Hera v. EC&C - Opposition No. 91161648
`Our Docket: 279-112 (Ammonia On Demand Trademark)
`and
`Hera v. EC&C — Opposition No. 91161633_ 1/
`Our Docket: 279-111 (AOD Trademark)
`
`Dear Howard:
`
`Further to our FAX of October 8, 2004, in which we transmitted a draft form of
`Protective Order.
`_
`.
`j‘
`'
`
`if we are
`Please advise your client's position relative to the Protective Order.
`unable to arrive at a mutually satisfactory resolution which allows for full text document
`production,'we intend to file a Motion To Compel with the Trademark Trial and Appeal *
`Board.
`'.
`‘
`
`1
`
`We await your early response.
`
`
`
` seph E. Mueth
`
`JEM/lv
`
`

`
`
`
`TIME :
`
`16/13)2aa4 14:41
`
`
`
`V TRANSMISSION VERIFICATION REPORT
`
`
`
`
` DATE.TIME
`16/13 14:41
`19497875435
`FAX ND./NAME
`88:68:32‘
`DURATION
`62
`PAGECS)
`RESULT
`UK
`STANDARD
`_ MODE
`ECM
`
`
`
`

`
`
`
`JOSEPH E. MUETH
`' LAW CORPOHATION
`PATENTS. TRADEMARKS. COPYRIGHT
`' CORPORATE CENTER
`_ 225 SOUTH LAKE AVENUE. 3'“ FLOOR
`
`PASADENA, CALlFORNlA 9IIOl
`FAX (623) 554-5352
`TELEPHONE (626) 534-0396
`
`FAX TRANSMISSION
`
`DATE:
`
`-
`
`C
`
`/0~ 37%?‘
`
`To TELEPHONE NO.:
`
`94/7* 707~5$‘3§
`
`ORIGINALSENT BY MAIL: YES
`
`NO X
`
`NUMBER or-' PAGES TRANSMITTED (Including Cover Sheet): ‘ii
`ATTN:'
`-
`‘Z3’
`-
`E
`&(<”—
`MESSAGAE:
`it
`i / E
`
`i
`
`A T
`
`his message is intended only for the use ofthe individual or entity to which it is ‘addressed. and may
`contain information that_is privileged, confidential and exempt from disclosure under applicable law.
`If the
`reader of this message IS not the intended recipient, or the employee or agent responsible for delivering the
`message to the intended recipient, you are hereby notified thatany dissemination. distribution or copying of this I
`communication is strictly prohibited.
`If you have received this communication in error, please notify us
`immediately by telephone, and return the original to us by postal service at theaddress noted above. Thank
`you.
`'
`4
`r
`.
`
`FROM: JOSEPH E. MUETH, ESQ.
`-.
`
`FAX: (626) 584-6862
`TEL: (626) 584-0396 .
`
`<
`
`OUR DOCKET: ¢27z—/// V ' 0779?//BAA’
`
`

`
`
`
`JOSEPH E. MUETH
`LAW CORPORATION
`PATENTS. TRADEMARKS. COPYRIGHT
`CORPORATE CENTER
`. 225 SOUTH LAKE AVENUE. 8"‘ FLOOR
`PASADENA, CALIFORNIA 9ll0l
`FAX (626) 534-6362
`TELEPHONE (626) 564-0396'
`
`October 8, 2004
`
`VIA FACS|MlLE
`Fax No.: (949) 707-5435
`
`Howard E.'Sandler, President
`Hera, LLC
`23792 Rockfield Blvd., Suite 100
`Lake Forest, California 92630
`
`Re:
`
`Hera v. EC&C - Opposition No. 91161648
`' Our Docket: 279-112 (Ammonia On Demand Trademark)
`and
`.
`-
`Hera v. EC&C - Opposition No. 91161633 / .
`Our Docket: 279-111 (AOD Trademark) '_
`
`Dear Howard:
`
`Further to our telecon regarding our request for the full texts of the “Opposer D
`License” and the document entitled “Termination Of Hera/SlNl EEC June 8, 1999
`License Agreement", we enclose herewith the proposed Protective Order in each
`Opposition Proceeding to govern the production of these documents. The text of the
`- proposed Protective Or