TRADEMARK OPPOSITION
`File No. 13914984
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of Trademark Application Serial No. 76/504,383
`Published in the Official Gazette of June 01, 2004
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`International Classes: 28
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`Filed: April 8, 2003
`Mark: BODY IMAGE
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`ICON IP, INC.,
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`V.
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`Opposer’
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`SPORTS RITE CO.,LTD.,
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`Applicant.
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`\/\/\/\/\;\./\/\./g/\/\/
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`Opposition No.
`91162191
`ICON IP, INC.’S MOTION TO
`COMPEL ANSWERS TO
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`INTERROGATORIES AND
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`PRODUCTION OF DOCUMENTS
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`AND MEMORANDUM OF LAW
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`IN SUPPORT THEREOF
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`MOTION
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`Opposer ICON IP, Inc. (“ICON” or “Opposer”), by and through its counsel of record,
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`hereby moves the Trademark Trial and Appeal Board (“TTAB”) for an order compelling
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`Applicant Sports Rite Co., Ltd. (“Applicant”) to:
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`l.
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`Withdraw its objections and/or
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`refusal
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`to provide responses to Opposer’s
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`Interrogatory Request Nos. 1-2, 7-9, 11, 14, 18-20, 23-25 and 28 and provide
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`2.
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`3.
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`responsive answers thereto;
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`Respond to Opposer’s Document Requests;
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`Provide a privilege log with identifying information for withheld documents, in
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`detail sufficient to permit ICON to test App1icant’s invocation of privilege with
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`respect thereto, including but not limited to the identities of the author/preparer,
`ICON IP, INC.’S MOTION
`1
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`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
`SUPPORT TH EREOF
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`o5_o2_2o05
`us. Patent & TMOfcITM Mail Rcpt D1. #72
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`recipient, and others privy to the document or any communication reflected
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`therein; and the date, form (written, recorded, etc.), and subject matter of the
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`document;
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`4.
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`Produce all documents responsive to Opposer’s Document Requests, by making
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`and shipping copies thereof to ICON, who will reimburse Applicant for the cost
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`thereof; and
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`ICON’s undersigned attorneys have made good faith efforts to resolve the issues
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`presented herein by correspondence with Applicant, but Applicant has failed to remedy the
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`deficiencies and continues to delay its responses.
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`Other grounds for this Motion are set forth in the accompanying Memorandum.
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`DATED this agfi day of April, 2005.
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` Jonath W. Richards, Registrati No. 29,843
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`Robyn L. Phillips, Registration No. 39,330
`James B. Belshe
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`WORKMAN NYDEGGER
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`1000 Eagle Gate Tower
`60 East South Temple
`Salt Lake City, Utah 84111
`Telephone: (801) 533-9800
`Facsimile: (801) 328-1707
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`Attorneys for Opposer
`ICON IP, INC.
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`ICON IP. lNC."S MOTION
`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
`SUPPORT THEREOF
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`2
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`1.
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`INTRODUCTION
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`MEMORANDUM OF LAW
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`Opposer
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`ICON IP,
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`Inc.
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`(“ICON” or “Opposer”)
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`is the owner of United States
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`Registration No. 1,930,107 (“the ‘107 Registration”) for the mark “IMAGE” in International
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`Class 28 for goods described as “exercise machines.” The ‘l07 Registration owned by Opposer
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`is a valid, subsisting and incontestable mark.
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`Applicant Sports Rite Co., Ltd. (“Applicant”) applied to register United States Trademark
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`Application Serial No. 76/504,383 for the mark “BODY IMAGE” on April 8, 2003, for goods
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`identified as “exercise equipment, namely, machines which exercise arms and legs and simulate
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`skiing, stationary exercise bikes, rowing machines, aerobic steps, aerobic step machines, chest
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`expanders, powered treadmills for running, exercise treadmills, weightlifting machines, and
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`abdominal weight-lifting belts” in International Class 28 (referred to herein as “Applicant’s
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`mark” or the “mark at issue”). Applicant’s mark was published for opposition on June 1, 2004.
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`Recognizing the manifest likelihood of confusion, ICON timely filed Requests for Extension of
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`Time to Oppose and ultimately filed a timely Notice of Opposition on September 20, 2004.
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`Applicant answered the Opposition on October 29, 2004.
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`The parties engaged in preliminary settlement discussions. Upon learning that those
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`settlement discussions were fruitless, ICON served interrogatories and requests for document
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`production on March 22, 2005.
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`[See Declaration of James B. Belshe in Support of ICON’s
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`Motion to Compel (“Belshe Decl.”), Exhs. A and B.]‘ While Applicant responded to ICON’s
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`First Set of Interrogatories to Applicant on April 26, 2005, Applicant did not respond at all to
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`ICON’s First Set of Requests of Production of Documents and Things to Applicant.
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`[Belshe
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`Decl., 1] 11.]
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`Instead, in spite of having a telephone conference with ICON’s counsel the day
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`before Applicant’s responses were due, Applicant waited until
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`the due date to request an
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`extension of time.
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`[Belshe Decl., 1] 1112 and 14.] When ICON did not respond quickly enough
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`' All subsequent references to “Exhibits” or “Exh.” are to the attachments accompanying the Belshe
`Declaration filed herewith.
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`ICON lP. lNC.‘S MOTION
`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
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`(just over three hours later), Applicant filed a Motion For Enlargementz [Belshe Decl., 1] 16.]
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`Ultimately, because of the rapidly approaching testimony period, ICON could not agree to the
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`requested extension.
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`As will be discussed below, many of Applicant’s responses to interrogatories contained
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`meritless and improper objections made by Applicant who then refiised to provide responsive
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`answers.
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`In particular, in spite of having refused to agree to or even discuss the Stipulated
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`Protective Order prepared and proposed by ICON, Applicant now objected to several
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`interrogatories on the basis that if Applicant fiJ.lly responded to the interrogatory, the response
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`would contain confidential or proprietary information.
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`II.
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`FACTUAL BACKGROUND
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`A.
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`Applicant’s Resistance to Entry of a Protective Order
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`On March 22, 2005, ICON forwarded a copy of the draft [Proposed] Stipulated Protective
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`Order to Applicant and requested that Applicant review the document and advise ICON whether
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`it was acceptable or if Applicant required changes.
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`[Exh. E.] The only response received from
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`counsel for Applicant was that he was requesting instructions from his client regarding the
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`Protective Order.
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`[Belshe Decl., 1] 5.] By letter dated April 4, 2005, ICON sent yet another
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`request that Applicant review and comment with respect to the [Proposed] Stipulated Protective
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`Order.
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`[Belshe Decl., 1] 6, Exh. F.] Again, Applicant failed, or otherwise refused to respond to
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`ICON’s April 4, 2005 correspondence.
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`[Belshe Decl., 1] 7.] Due to Applicant’s unwillingness to
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`even discuss the matter, ICON was forced to incur the costs of preparing and filing a motion for
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`the Board to enter a protective order. [Belshe Decl., 1] 8.]
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`In yet another attempt to resolve the matter without board intervention, on April 25,
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`2005, counsel for ICON contacted counsel for Applicant via telephone to discuss entry of the
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`protective order proposed by ICON.
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`[Belshe Decl., 1] 9.] Counsel for Applicant informed Mr.
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`2 Opposer will file a separate Opposition to Applicant’s Motion for Enlargement at the appropriate time
`consistent with the applicable rules.
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`ICON II’. INC.’S MOTION
`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
`SUPPORT THEREOF
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`Belshe that he had been instructed by Applicant to not agree to any protective order.
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`[Belshe
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`Decl., 1] 10.]
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`Despite Applicant’s voluntary refusal to even discuss or consider a Protective Order,
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`Applicant now seeks to use the fact that a Protective Order has yet to be entered in this matter to
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`delay and to avoid having to fully respond to interrogatories properly propounded by ICON. [See
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`Exh. G, Applicant’s Responses to Interrogatory Request Nos. 1-2, 7-9, 11, 14, 18-20, 23-25 and
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`28, at 3, 6-9, 10-17, and 18-19, respectively.] Shortly after receipt of Applicant’s improper
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`objections and deficient interrogatory responses, on April 26, 2005, counsel for ICON notified
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`Applicant of its deficient responses and warned that unless Applicant agreed to fully respond to
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`ICON’s discovery requests, ICON would be forced to seek the Board’s assistance in compelling
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`response to ICON’s interrogatories.
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`[Belshe Decl., 1] 17, Exh. G.] To date, Applicant has failed
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`or refused to do so. [Belshe Decl., 1] 18, Exh. H.]
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`B.
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`Applicant Failed to Produce a Single Document or Even Submit a Response
`to ICON’s Document Requests.
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`On April 25, 2005, counsel for ICON contacted counsel for Applicant via telephone to
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`discuss the status of Applicant’s responses to ICON’s discovery requests.
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`[Belshe Decl., 1] 9.]
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`Counsel for Applicant did not at that time request an extension of time in which to produce
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`documents nor did counsel for Applicant mention any difficulties in obtaining documents from
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`Applicant.
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`[Belshe Decl., 1] 11.]
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`In fact, counsel assured Mr. Belshe that Applicant would be
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`responding to written discovery propounded by ICON in a timely fashion. [Belshe Decl., 1] 12.]
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`Despite Applicant’s assurances, Applicant failed to respond to ICON’s Requests for
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`Documents or produce any documents.
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`[Belshe Decl., 1] 13.] Instead of producing documents as
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`promised, at 10:00 A.M. on the day the responses were due, Applicant requested via facsimile
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`that ICON agree to an extension of time for Applicant to respond to the document requests and
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`to produce the requested documents. [Belshe Decl., 1] 14.]
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`Upon receipt of this request, counsel for ICON attempted to contact ICON regarding
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`Applicant’s request for the extension.
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`[Belshe Decl., 1] 15.] However, in just over three (3)
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`ICON lP, lNC.’S MOTION
`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
`SUPPORT THEREOF
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`hours after Applicant sent its initial request for an extension by facsimile and before counsel for
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`ICON had even discussed the matter with ICON, Applicant filed a request for an extension of
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`time with the Board. [Belshe Decl., 1] 16.]
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`Prior to Applicant’s request for an extension of time, ICON had requested extensions of
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`time from Applicant on two separate occasions.
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`[Belshe Decl., 1] 19.] Both requests were denied
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`by Applicant.
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`[Belshe Decl., 1] 20.] Due to Applicant’s refusal to grant any of ICON’s previous
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`requests for extension of time for discovery matters unnecessary time constraints have been
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`imposed on ICON. If ICON were to grant Applicant’s request for enlargement, ICON would be
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`prejudiced in its preparations for testimony period. Unfortunately, as a consequence of
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`Applicant’s prior refusals to extend, ICON would be unnecessarily prejudiced if it were to grant
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`App1icant’s request for enlargement. Therefore, ICON was forced to refuse to grant Applicant’s
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`request for extension of time.
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`[Belshe Decl., ][ 21.]
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`ICON prepared and delivered letters to
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`Applicant on April 26, 2005 confirming its denial of Applicant’s extension request and
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`demanded that Applicant timely produce documents.
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`[Belshe Decl., ][ 22, Exhs. G and 1.]
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`With discovery now closed and the testimony period rapidly approaching, Applicant’s
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`failure to respond to written discovery places ICON at a serious disadvantage. Applicant’s
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`failure to respond in a timely matter to discovery has resulted in prejudice to ICON in that ICON
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`now has less time to properly prepare for the testimony period.
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`ICON is entitled to complete
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`responses to its written discovery by Applicant. By its present motion, ICON seeks an order
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`compelling Applicant to answer interrogatories, produce documents and identify information for
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`items allegedly privileged, as indicated below.
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`III.
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`ARGUMENT
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`A.
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`Applicable Law
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`“A party may take discovery not only as to matters specifically raised in the pleadings,
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`but also as to any matter which might serve as the basis for an additional claim, defense, or
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`counterclaim.” TBMP § 402.01 “Each party has a duty not only to make a good faith effort to
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`satisfy the discovery needs of its adversary, but also to make a good faith effort to seek only such
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`ICON IP, lNC.’S MOTION
`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
`SUPPORT THEREOF
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`discovery as is proper and relevant to the specific issues involved in the proceeding.” Id.; see
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`Fed. R. Civ. P. 26(g).
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`Further, “[t]he Board expects parties (and their attorneys or other
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`authorized representatives) to cooperate with one another in the discovery process, and looks
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`with extreme disfavor on those who do not.” TBMP § 408.01.
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`“Generally, the purpose of discovery is to remove surprise from trial preparation so the
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`parties can obtain evidence necessary to evaluate and resolve their dispute.” United States v.
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`City of Torrance, 164 F.R.D. 493, 495 (C.D. Cal. 1995), reproduced as Exh. J. Accordingly,
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`A request for discovery should be considered relevant if there is any possibility
`that the information sought may be relevant to the subject matter of this action.
`Discovery should ordinarily be allowed under the concept of relevancy unless it is
`clear that the information sought can have no possible bearing upon the subject
`matter of this action.
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`Jones v. Commander, Kansas Army Ammunitions Plant, 147 F.R.D. 248, 250 (D. Kan. 1993),
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`reproduced as Exh. K. “The party who resists discovery has the burden to show that discovery
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`should not be allowed, and has the burden of clarifying, explaining, and supporting its
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`objections.” Cable & Computer Tech., Inc. v. Lockheed Saunders, 175 F.R.D. 646, 650 (C.D.
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`Cal. 1997), reproduced as Exh. L. Objections stated in “boilerplate terms
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`are improper.”
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`Miller v. Pancucci, 141 F.R.D. 292, 302 (C.D. Cal. 1992), reproduced as Exh. M.
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`Further, a party resisting discovery by interposing privilege, in particular, bears “[t]he
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`burden of establishing the existence of privilege,” and “must make a clear showing that it
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`applies.” Ali v. Douglas Cable Communications, Ltd, 890 F. Supp. 993, 994 (D. Kan. 1995),
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`reproduced as Exh. N.
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`“Formally claiming a privilege should involve specifying which
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`information and documents are privileged and for what reasons, especially when the nature of
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`the information or documents does not reveal an obviously privileged matter.” Paulsen v. Case
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`Corp., 168 F.R.D. 285 (C.D. Cal. 1996), reproduced as Exh. 0.; see also Fed. R. Civ. P.
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`26(b)(5), made applicable by 37 C.F.R. § 2.120(a), TBMP § 101.02 (“When a party withholds
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`information
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`by claiming that it is privileged
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`the party
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`shall describe the nature of the
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`documents, communications, or things not produced or disclosed in a manner that, without
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`ICON lP, INC.’S MOTION
`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
`SUPPORT THEREOF
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`revealing information itself privileged
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`will enable other parties to assess the applicability of
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`the privilege”).
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`Moreover, when privilege is invoked to justify a party’s refusal to produce a document or
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`other communication, only the contents of the communication may be withheld; the existence of
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`that communication, together with basic identifying information, remains discoverable and must
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`be produced. Thus, no invocation of privilege can justify a party’s refusal to provide at least the
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`following information about each withheld document:
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`the identities of the author/preparer,
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`recipient, and others privy to the document or any communication reflected therein; and the date,
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`form (written, recorded, etc.), and subject matter of the document. Miller, 141 F.R.D. at 302;
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`Fox v. California Sierra Fin. Servs., 120 F.R.D. 520, 524 & n. 1 (N.D. Cal. 1988), reproduced as
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`Exh. P.
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`III.
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`THE TRADEMARK TRIAL AND APPEAL BOARD SHOULD COMPEL
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`APPLICANT TO FULLY RESPOND TO ICON’S INTERROGATORIES.
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`A.
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`Applicant’s Objections Based Upon the Absence of 21 Protective Order are
`Improper.
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`Applicant’s responses to Interrogatory Nos. 1-2, 7-9, 11, 14, 18-20, 23-25 and 28 are
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`deficient. Applicant objected to each of these interrogatories on the basis that confidential or
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`proprietary information would be disclosed if Applicant
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`fully responded.
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`[See Exh. E,
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`Applicant’s Responses to ICON’S Interrogatories No. 1-2, 7-9, 11, 14, 18-20, 23-25 and 28, at 3,
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`6-9, 10-17, and 18-19, respectively.]
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`“Parties are encouraged [] to stipulate to a protective agreement governing the handling
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`of confidential or trade secret information rather than filing a motion for protective order.”
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`TBMP § 526. Rather than following the Board’s directive, Applicant repeatedly refused to even
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`discuss a protective order with ICON.
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`[Belshe Dec]. 111] 4-10.]
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`In fact, Applicants refusal to
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`even discuss the matter forced ICON to incur the costs associated with moving the Board to enter
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`a protective order in this matter.
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`[Belshe Decl. 1] 8.] Despite Applicant’s refusal to even discuss
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`entry of a protective order, Applicant now seeks to refuse to respond, or at least delay having to
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`fully respond to interrogatories due to the absence of a protective order in this matter. Due to
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`ICON IP, INC.’S MOTION
`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
`SUPPORT THEREOF
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`Applicant’s refusal to even discuss entry of a protective order, ICON must question Applicant’s
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`motives in now invoking the lack of a protective order as a basis for objection. Applicant’s
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`refusal to cooperate and then utilize its refusal to cooperate has unnecessarily delayed ICON’s
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`receipt of evidence to which it is entitled. Applicant should not be permitted to refuse to answer
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`interrogatories on this basis.
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`Instead, the Board should consider Applicant’s confidentiality and
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`privilege objections waived and fully compel Applicant to respond to ICON’s interrogatories and
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`document requests without objection.
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`See TBMP § 527.01. Further, Applicant should be
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`estopped from asserting any information withheld on objection. See TBMP § 527.0l(e).
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`B.
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`Applicant’s Objections that the Burden of Expense Outweighs the Likely
`Benefit are Improper.
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`In response to Interrogatory Nos. 18-20, 23-25, and 28, Applicant objects on the basis
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`that “the burden or expense of the proposed discovery outweighs its likely benefit, taking into
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`account the importance of the proposed discovery in resolving the issues.”
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`[See Exh. E,
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`Applicant’s Responses to ICON’s Interrogatories Nos. 18-20, 23-25, and 28, at 11-17, 18-19,
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`respectively.] Applicant’s objections are not proper as the information sought by ICON’s
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`propounded interrogatories is not only relevant, it is critical.
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`Specifically, and by way of example,
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`the relevance of the information sought
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`in
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`Interrogatory Request Nos. 18-20, 23-25, and 28 is apparent, as “[d]etermining whether a
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`likelihood of confusion exists requires weighing
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`the defendant’s intent to copy or imitate the
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`plaintiffs mark.” Al-Site Corp. v. VSI Intern., Inc., 50 U.S.P.Q.2d 1161, 1173 (Fed. Cir. 1999),
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`reproduced as Exh. Q.
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`ICON is entitled to the documents and information sought to determine
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`how and whether any perceived similarity between the parties’ marks influenced Applicant’s
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`selection of its mark. See Goodyear Tire & Rubber Co. v. Tyrco Indus., 186 U.S.P.Q. 207, 208
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`(TTAB 1975) (compelling applicant to answer ICON’s interrogatories seeking the identities of
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`people who selected applicant’s mark, and of documents relating “to the evolution, selection,
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`trademark searching, clearance and/or evaluation” of a portion of applicant’s mark), reproduced
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`as Exh. R. Moreover “in testing for likelihood of confusion
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`the following
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`must be
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`ICON IP, INC.’S MOTION
`TO COMPEL ANSWERS AND
`PRODUCTION AND M EM. IN
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`considered:
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`The length of time during and conditions under which there has been concurrent
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`use without evidence of actual confusion.
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`The extent to which applicant has a right to
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`exclude others from use of its mark on its goods.” In re E.I. du Pont de Nemours & C0,, 177
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`U.S.P.Q. 563, 567 (C.C.P.A. 1973) (enumerating factors relevant to likelihood of COI'lfilSl0I1
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`analysis in trademark registration context), reproduced as Exh. S.
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`A review of ICON’s Interrogatory Nos. 18-20, 23-25, and 28 demonstrates that these
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`interrogatories are directed toward topics already determined by this Board and the courts to be
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`critical. These interrogatory requests seek information that is clearly relevant and necessary to
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`the task of evaluating Applicant’s intent to copy or imitate ICON’s mark. Applicant should be
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`compelled to produce its responses immediately.
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`C.
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`Applicant’s Objections Based Upon the Attorney/Client Privilege are
`Improper.
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`Applicant objects to Interrogatory Nos. 18-20, 23-25, and 28 on the basis of
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`Attomey/Client privilege.
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`[See Exh. E, Applicant’s Responses to ICON’s Interrogatories Nos.
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`18-20, 23-25, and 28, at 11-17, 18-19, respectively] Applicant’s attempt to evaluate a likelihood
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`of infiingement by the name or mark at issue has direct bearing upon the present Opposition
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`action, and such information may not be withheld on the basis of relevancy or privilege. See
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`Miles Labs., Inc. v. Instrumentation Lab., Inc., 185 U.S.P.Q. 432, 434 (TTAB 1975) (“search
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`reports, per se, do not fall within the attomey-client privilege and must be fumished”; only
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`“comments or opinions provided by [counsel] in relation thereto are privileged”), reproduced as
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`Exh. T.
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`Despite the fact
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`that Applicant objected to certain interrogatories based upon
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`attomey/client privilege, Applicant failed to properly assert this privilege. “Formally claiming a
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`privilege should involve specifying which information and documents are privileged and for
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`what reasons, especially when the nature of the information or documents does not reveal an
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`obviously privileged matter.” Paulsen v. Case Corp., 168 F.R.D. 285 (C.D. Cal. 1996),
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`reproduced as Exh. U.; see also Fed. R. Civ. P. 26(b)(5), made applicable by 37 C.F.R. §
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`ICON IP, INC.’S MOTl()N
`TO COMPEL ANSWERS AND
`PRODUCTION AND M EM. IN
`SUPPORT THEREOF
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`2.l20(a), TBMP § 101.02 (“When a party withholds information
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`by claiming that it
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`is
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`privileged
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`the party
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`shall describe the nature of the documents, communications, or things
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`not produced or disclosed in a manner that, without revealing information itself privileged
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`will enable other parties to assess the applicability of the privilege”). Because Applicant failed
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`to adhere to the requirements associated with asserting attorney/client privilege, Applicant
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`should be compelled to produce a proper privilege log immediately so that ICON can properly
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`assess the applicability of the privilege.
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`IV.
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`THE TRADEMARK TRIAL AND APPEAL BOARD SHOULD COMPEL
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`APPLICANT TO FULLY RESPOND TO ICON’S DOCUMENT REQUESTS AND
`PRODUCE DOCUMENTS.
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`On April 25, 2005, counsel for Applicant assured ICON that
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`it would respond to
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`discovery requests in a timely manner.
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`[Belshe Decl. 1] 12.]
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`Instead of producing responses to
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`the document requests in a timely manner as promised, Applicant requested that ICON grant
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`Applicant an extension of time in which to respond to ICON’S document requests and to produce
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`documents.
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`[Belshe Decl., 1] 14.] Because ICON’S testimony period was only slightly more than
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`a month away,
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`ICON could not agree to the requested extension.
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`[Belshe Decl.,
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`1] 21.]
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`Applicant’s conduct has created the current circumstances by which ICON cannot, without
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`prejudicing its ability to prove its case, agree to the extension of time proposed by Applicant.
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`[Id.]
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`It was Applicant who rejected ICON’S requests to extend discovery which was made
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`specifically to ensure the “orderly completion of discovery.”
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`[Exh. V.]
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`Instead of ensuring
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`orderly completion of discovery by agreeing to extend, Applicant refused. Applicant should not
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`now be allowed to complain.
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`Accordingly, as a direct consequence of App1icant’s refusal
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`to cooperate with the
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`discovery schedule, ICON had no choice but to refuse to grant Applicant an extension.
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`[Id.]
`
`ICON confirmed its refusal to grant an extension to Applicant in a letter dated April 26, 2005
`
`and demanded timely production of documents responsive to ICON’S requests.
`
`[Belshe Decl., 1]
`
`22.]
`
`ICON IP, INC.’S M() l'l()N
`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
`SUPPORT THEREOF
`
`11
`
`

`
`
`
`Despite ICON’s denial of Applicant’s request for an extension, Applicant has failed or
`
`otherwise refused to produce any response, objection or even a single responsive document.
`
`Therefore, ICON respectfully requests the Board issue an order compelling production.
`
`CONCLUSION
`
`For all of the foregoing reasons, ICON’s Motion to Compel Answers to Interrogatories
`
`and Production of Documents should be granted in its entirety.
`
`DATED this fiaday of April, 2005.
`
`
`. Richards, Registrati II No. 29,843
`Jonathan
`Robyn L. Phillips, Registration No. 39,330
`James B. Belshe
`
`WORKMAN NYDEGGER
`
`1000 Eagle Gate Tower
`60 East South Temple
`Salt Lake City, Utah 84111
`Telephone: (801) 533-9800
`Facsimile: (801) 328-1707
`
`Attorneys for Opposer
`ICON IP, INC.
`
`ICON IP, INC.’S MOTION
`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
`SUPPORT THEREOF
`
`12
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing ICON IP, INC.’S
`
`MOTION TO COMPEL ANSWERS TO INTERROGATORIES AND PRODUCTION OF
`
`DOCUMENTS AND MEMORANDUM OF LAW IN SUPPORT THEREOF was served on
`
`Opposer by mailing a true copy thereof to its attorney of record, by First Class Mail, postage
`
`prepaid, this _&j‘_7}_ day of April, 2005, in an envelope addressed as follows:
`
`Thomas J. Moore
`
`BACON & THOMAS, PLLC
`
`625 Slaters Lane, Fourth Floor
`Alexandria, Virginia 22314-1176
`
`
`
`J:\13914984\0lO Motion to Compel-revised.doc
`
`ICON IP, INC.’S MOTION
`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
`SUPPORT THEREOF
`
`13
`
`

`
`CERTIFICATE OF MAILING BY FIRST CLASS MAIL (37 CFR 1.8)
`
`Applicant(s): SPORTS RITE CO., LTD.
`
`Serial No.
`
`76/504,383
`
`Filing Date
`
`June 1, 2004
`
`Examining Attorney
`
`N/A
`
`Docket N0-
`
`13914.984
`
`Law Office
`
`TTAB
`
`Trademark: BODY IMAGE - Opposition No. 91162191
`
`I hereby certify that this L MRE E§B
`(Identify type of correspondence)
`
`is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope
`addressed to "Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451" [37 CFR 1.8(a)] on
`April25], 2005
`(Date)
`
`.
`Cheryl Mattson
`(Typed or Printed Name ofPerson Mailing Correspondence)
`
`Note: Each paper must have its own certificate of mailing.
`
`Transmitted:
`
`ICON IP, Inc.’s Motion to Compel Answers to Interrogatories and Production of
`Documents and Memorandum of Law in Support Thereof (13 pgs.);
`
`Declaration of James B. Belshe in Support of ICON IP, Inc.’s Motion to Compel Answers
`to Interrogatories and Production of Documents and Memorandum of Law in Support
`Thereof with Attached Exhibits A-V (190 pgs.); and
`
`0
`
`Postcard
`
`TM15/REVO1
`
`

`
`
`
`TRADEMARK OPPOSITION
`File No. 132914.984
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 76/504,383
`Published in the Official Gazette of June 01, 2004
`International Classes: 28
`
`Filed: April 8, 2003
`Mark: BODY IMAGE
`
`
`
`ICON IP, INC.,
`
`Opposer,
`
`Opposition No.
`91162191
`
`Applicant.
`
`v.
`
`DECLARATION OF JAMES B.
`
`SPORTS RITE CO.,LTD.,
`
`BELSHE IN SUPPORT OF ICON IP,
`INC.’s MOTION TO COMPEL
`
`ANSWERS TO INTERROGATORIES
`
`AND PRODUCTION OF
`
`DOCUMENTS AND MEMORANDUM
`
`OF LAW IN SUPPORT THEREOF
`
`1, James B. Belshe, hereby state:
`
`1.
`
`I am an associate in the firm Workman Nydegger, counsel for the Opposer, ICON H’,
`
`Inc. (“ICON”).
`
`2.
`
`Attached hereto as Exhibit A is a true and correct copy of Opposers (ICON) First Set
`
`ofInterrogatories to Applicant.
`
`3.
`
`Attached hereto as Exhibit B is a true and correct copy of Opposers (ICON) First Set
`
`ofRequests for Production ofDocuments and Things to Applicant.
`
`4.
`
`On March 22, 2005, Workman Nydegger, on behalf of ICON IP, Inc. (“ICON”)
`
`forwarded a copy of the draft [Proposed] Stipulated Protective Order to Applicant and requested
`
`that Applicant review the document and advise ICON whether it was acceptable or if Applicant
`ICON IP, INC.’S MOTION
`1
`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
`SUPPORT THEREOF
`
`

`
`
`
`required changes. Attached hereto as Exhibit C is a true and correct copy of correspondence
`
`dated March 22, 2005, forwarding a draft of the Stipulated Protective Order to opposing counsel
`
`for review.
`
`5.
`
`The only response received from counsel for Applicant was that he was requesting
`
`instructions from his client regarding the Protective Order.
`
`6.
`
`By letter dated April 4, 2005, Workman Nydegger, on behalf of ICON, sent yet
`
`another request that Applicant review and comment with respect to the [Proposed] Stipulated
`
`Protective Order. Attached hereto as Exhibit D is a true and correct copy of correspondence
`
`dated April 4, 2005.
`
`7.
`
`Again, Applicant failed, or otherwise refused to respond to ICON’s April 4, 2005
`
`correspondence.
`
`8.
`
`Due to Applicant’s unwillingness to even discuss the matter, I was instructed by
`
`ICON to prepare a motion for the Board to enter a protective order, which preparation and filing
`
`cost my client, ICON, further monies.
`
`9.
`
`In yet another attempt to resolve the matter without board intervention, on April 25,
`
`2005, I contacted counsel for Applicant via telephone to discuss entry of the protective order
`
`proposed by ICON and the status of Applicant’s responses to ICON’s discovery requests.
`
`10.
`
`Counsel for Applicant informed me that he had been instructed by Applicant to not
`
`agree to any protective order.
`
`11.
`
`Counsel for Applicant did not at that time request an extension of time in which to
`
`produce documents nor did counsel for Applicant mention any difficulties in obtaining
`
`documents from Applicant.
`
`ICON IP, INC.’S MOTION
`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
`SUPPORT THEREOF
`
`2
`
`

`
`
`
`12.
`
`Counsel for Applicant inquired as to my receipt of his settlement offer and then
`
`assured me that Applicant would be responding to written discovery propounded by ICON in a
`
`timely fashion.
`
`13.
`
`Applicant failed to produce any documents properly requested by ICON on the day
`
`due, but did respond deficiently to ICON’s interrogatories. Attached hereto as Exhibit E is a true
`
`and correct copy of Applicant’s Responses to Interrogatory Request Nos. 1-2, 7-9, 11, 14, 18-20,
`
`23-25 and 28.
`
`14.
`
`Instead of producing documents as promised, at 10:00 A.M. on the day the responses
`
`were due, Applicant requested via facsimile that ICON agree to an extension of time for
`
`Applicant to produce the requested documents. Attached hereto as Exhibit F is a true and correct
`
`copy of correspondence from Applicant dated April 26, 2005.
`
`15.
`
`Upon receipt of this request, Workman Nydegger immediately attempted to
`
`contact ICON regarding Applicant’s request for the enlargement of time.
`
`16.
`
`However, a mere three (3) hours after Applicant sent its initial request by facsimile
`
`and before Workman Nydegger had even discussed the matter with ICON, Applicant filed a
`
`request for an extension of time with the Board.
`
`17.
`
`Additionally, shortly after receipt of Applicant’s improper objections and deficient
`
`interrogatory responses, on April 26, 2005, Workman Nydegger notified Applicant of its
`
`deficient responses and warned that unless Applicant agreed to fully respond to ICON’s
`
`discovery requests, ICON would be forced to seek the Board’s assistance in compelling response
`
`to ICON’s interrogatories. Attached hereto as Exhibit G is a true and correct copy of ICON’s
`
`letter to Applicant dated April 26, 2005.
`
`18.
`
`Applicant responded by letter dated April 28, 2005 and stated that he had yet to have
`
`a substantive discussion with his client regarding ICON’s objections to the answers to
`
`ICON IP, INC.’S MOTION
`TO COMPEL ANSWERS AND
`PRODUCTION AND MEM. IN
`SUPPORT THEREOF
`
`3
`
`

`
`
`
`interrogatories. Applicant has provided no further response. Attached hereto as Exhibit H is a
`
`true and correct copy of Applicant’s letter dated April 28, 2005.
`
`19.
`
`Prior to Applicant’s request for an enlargement of time, ICON had requested
`
`extensions of time from Applicant on two separate occasions. Both requests were denied by
`
`Applicant. Applicants refusal to grant extensions has unnecessarily shortened the discovery
`
`period in this matter.
`
`20.
`
`Due to time constraints imposed as a consequence of Applicant’s prior refusals to
`
`extend the discovery period, were ICON to agree to an enlargement of time for Applicant to
`
`respond, ICON would be significantly prejudiced in its ability to prepare for the testimony
`
`period. Consequently, ICON was forced to refuse to grant Applicant’s request for extension of
`
`time.
`
`21. Workman Nydegger prepared and delivered a letter to Applicant on April 26, 2005
`
`confirming its denial of Applicant’s extension request and demanded that Applicant timely
`
`produce documents. Attached hereto as Exhibit I is a true and correct copy of ICON’s letter to
`
`Applicant dated April 26, 2005.
`
`22.
`
`Attached hereto as Exhibit J is a true and correct copy of United States v. City of
`
`Torrance, 164 F.R.D. 493, 495 (C.D. Cal. 1995).
`
`23.
`
`Attached hereto as Exhibit K is a true and correct copy of Jones v. Commander,
`
`Kansas