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`TTAB
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`COLOPLAST A/S,
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`Opposer,
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`VS.
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`JIRO TAKASHIMA,
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`APP1i°“m-
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`Opposition No. 165,588
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`01-06-2006
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`OPPOSER’S MOTION TO COMPEL AND TO TEST THE
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`SUFFICIENCY OF APPLICANT’S ANSWERS TO REQUESTS FOR ADMISSION,
`TO SUSPEND THE PROCEEDINGS AND TO RESET THE TRIAL DATES BY
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`EXTENDING THE DISCOVERY PERIOD FOR OPPOSER ALONE
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`COMES NOW the Opposer, Colop1astA/S, through its counsel, and hereby moves for an
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`Order from the Trademark Trial and Appeal Board (the “Board”) compelling Applicant to serve a
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`privilege log, as well as amended and/or supplemental responses to Opposer’s interrogatories,
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`document requests, and requests for admissions. Additionally, Opposer respectfully requests that
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`the Board impose its standard Protective Order. Finally, Opposer asks that the Board suspend these
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`proceedings and reset the trial dates upon lifting the suspension — extending the discovery period for
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`Opposer alone. In further support of this Motion, Opposer states as follows:
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`I.
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`General Background
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`Applicant’s discovery responses are woefully lacking, with the number and breadth of the
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`obvious de ficiencies evincing Applicant’s bad faith. However, these responses are but one example
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`of Applicant’s continued bad faith conduct in this proceeding. Other instances have preceded‘ and
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`followed the service of the deficient discovery responses at issue in this Motion. Most recently,
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`Applicant served written discovery on Opposer on January 3 , 2006, which (on initial review) appears
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`to be virtually identical to Opposer’s written discovery. Opposer does not contest Applicant’s right
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`to serve written discovery; however, it is manifestly unjust for Applicant, on the one hand, to find
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`Opposer’s written discovery to be so problematic that virtually no information is disclosed; and yet,
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`on the other hand, embrace the very same discovery and serve it as its own — signed pursuant to Rule
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`11. These starkly different positions are fundamentally irreconcilable.
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`Moreover, Applicant has remained steadfastly inert in the face of Opposer’s several attempts
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`to remedy the outstanding discovery issues in an effort to avoid filing any discovery motions with
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`the Board. Thus, the fact that Applicant found the time to address this case by serving written
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`discovery, makes his persistent failure to address the discovery issues — or to even pick up the phone
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`to consent to an extension of time — that much more egregious.
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`It is apparent that the service of
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`Applicant’s discovery is nothing but a thinly veiled retaliatory tactic.
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`1 See generally, Opposer’s counsel’s October 20, 2005 letter and October 27, 2005
`reminder letter, attached hereto as Exhibit A, concerning objectionable conduct, including
`Applicant’s counsel’s wasteful refusal to contact Applicant concerning his interest in defending
`the proceeding. Applicant’s counsel did not respond to these letters.
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`2
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`DiscoveII. -Related Back round
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`On November 14, 2005, Opposer served on Applicant Opposer’ s First Set ofInterrogatories,
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`Opposer’s First Request for Production of Documents, and Opposer’s First Set of Request for
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`Admissions. See Exhibit B.
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`Applicant served discovery responses on December 12, 2005. See Applicant’s Responses
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`to First Set of Interrogatories, Applicant’s Responses to Request for Production of Documents, and
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`Applicant’s Res.ponses to Request for Admissions, attached hereto as Exhibit C. Applicant did not
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`produce any documents.
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`On December 23, 2005, counsel for Opposer sent a letter, by mail and facsimile, to
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`Applicant’s counsel, setting forth Opposer’s concerns with Applicant’s discovery responses. See
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`Opposer’ s counsel’ s December 23 , 2005 letter, attached hereto as Exhibit D. Additionally, the letter
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`suggested that the Board’s standard Protective Order be adopted by the parties. Moreover, the letter
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`requested that Applicant produce documents in response to Opposer’s document requests, as well
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`as a privilege log. Finally, the letter suggested an extension of all deadlines to allow the parties time
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`to address the discovery issues.
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`Not receiving any response, Opposer’s counsel sent a second letter to Applicant’s counsel
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`requesting; a response. See Opposer’ s counsel’s December 30, 2005 letter, attached hereto as Exhibit
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`E.
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`Still, there was no response from Applicant. Accordingly, Opposer’s counsel called
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`Applicant’s counsel on January 4, 2006 and, not reaching Applicant’s counsel, left a voice-mail
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`message requesting a return call.
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`To date, Applicant has not amended and/or supplemented his discovery responses; has not
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`agreed to adopt the Board’s standard Protective Order (or suggest modifications to same); has not
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`produced a privilege log; has not substantively responded to Coloplast’s good faith letter; has not
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`produced documents; and has not even returned Opposer’ s counsel’s telephone call. However, while
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`remaining inert and unresponsive on these discovery issues, Applicant found the time on January 3,
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`2006 to serve written discovery which appears to closely parallel Opposer’s discovery (to which
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`Applicant objected). See Applicant’s written discovery, attached hereto as Exhibit F. Accordingly,
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`with the impending close of the discovery period and in light of Applicant’s determined
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`intransigence in addressing the discovery issues, Opposer respectfully requests that the Board grant
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`Opposer’s Motion, as set forth more fully below.
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`III. Argument
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`&_jrivilege Log
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`Applicant (conditionally) has interposed privilege objections, but failed to provide a
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`privilege l.og. This failure is contrary to the governing rules, and the instructions in Coloplast’s
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`discovery. Opposer requested Applicant to serve a privilege log with sufficient detail to allow
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`Opposer (and, if necessary, the Board) to test Applicant’s assertions of privilege. Applicant has not
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`provided the requested privilege log; nor has Applicant even addressed the request
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`itself.
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`Accordingly, Opposer requests that the Board compel Applicant to provide a detailed privilege log.
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`B.__ Ent of the Board’s Standard Protective Order
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`Applicant objected to providing answers to numerous interrogatories and the production of
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`documents on the basis that the responsive information and documents are confidential. In response,
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`Opposer proposed that the parties adopt the Board’s standard Protective Order, and seek its entry
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`by the Board. Applicant’s counsel has ignored this suggestion. Rather, to date, Applicant has
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`neither agreed to adopt the Board’s standard Protective Order, to propose acceptable edits thereto,
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`or to propose a wholly different Protective Order. Indeed, Applicant has simply remained silent,
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`wholly ignoring Opposer’s suggestions. Accordingly, Opposer respectfully requests the Board to
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`enter its standard Protective Order.
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`Additionally, Applicant has refused to produce documents in response to certain requests on
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`the grounds that the requested documents are confidential. However, Opposer believes that non-
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`confidential, responsive documents may exist which should have been produced (without awaiting
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`the entry ofa Protective Order). Moreover, it is disingenuous for Applicant to refuse to produce non-
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`confidential documents on the erroneous basis that no Protective Order has been entered, especially
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`when Applicant has ignored Opposer’s efforts to negotiate such an Order. Of course, after the
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`Protective Order is entered, Applicant should then provide confidential information and documents.
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`_C_.__Applicant Should Be Ordered to Produce Documents
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`Opposer has sought Applicant’ s document production, but Applicant has simply ignored this
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`request. In light of this coupled with Applicant’s failure to cooperate generally on discovery issues,
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`as recited in this Motion, Opposer respectfully requests that the Board order Applicant to mail its
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`document production to Opposer’s counsel’s office.
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`D.
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`Applicant’s Answers to Opposer’s Discovery Are Inadequate
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`and Should Be Amended or Su lemented
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`Applicant’s deficient responses2 to Opposer’s discovery requests are so inadequate that
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`Coloplast’s ability to properly evaluate the responses is quite limited. This is further complicated
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`by Applicant’s refusal to engage in any dialogue with Opposer on the sufficiency of the responses.
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`Moreover, in challenging the sufficiency ofApplicant’s objections and responses, Coloplast will not
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`speculate as to every possible basis for Applicant’s position and then argue against such phantasms.
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`Thus, this Motion is, of necessity, preliminary in nature, and Coloplast reserves the right to further
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`address Applicant’ s deficient and/or objectionable discovery responses and/or document production,
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`after Applicant’s supplementation and production is made.
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`INTERROGATORIES
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`An swers to interrogatories are to be verified by the answering party. See TBMP §405.04(c).
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`However, Applicant’s answers to Coloplast’s interrogatories appear to be u__nverified, or have been
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`verified by counsel. Opposer requested that Applicant serve properly verified answers. See Exhibit
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`D. However, to date, Applicant has failed to do so, or to even respond to the request. Accordingly,
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`Opposer respectfully requests that the Board compel Applicant to serve properly verified answers.
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`The entirety of Applicant’s answers to nearly half of Coloplast’s interrogatories is the
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`boilerplate response: the “trademark is not presently in use in the United States.” See e. g. , Answer
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`Nos. 1- 9, 12. This answer is problematic for several reasons. First, it is not clear what “presently”
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`means. For example, if Applicant was using the mark until the opposition was filed, the answer is
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`2 For simplicity, Opposer has summarized the disputed discovery requests and responses.
`However, such treatment is not intended to, nor should it, restrict the scope of the discovery requests —
`the requests should be answered as served.
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`misleading and disingenuous (and, in any event, such information should have been disclosed in
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`response to Coloplast’s discovery). Moreover, since Applicant’s PERISTAL products are sold on
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`the lntemet (that global network of computers accessible in the United States), see Applicant’s
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`responses to request for admission nos. 37 and 41, the veracity of Applicant’s above-quoted claim
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`is questionable.
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`In any event, even if Applicant had never used the opposed mark, his answers are
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`unresponsi.ve since the interrogatories seek, inter alia, information concerning Applicant’s intent to
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`use the mark. For example, disclosure of the following information is not dependent on Applicant’s
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`actual use of the mark:
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`the selection, creation and/or decision to adopt the mark (No. 8); the
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`identification of each product with which Applicant’s mark is intended to be used (No. 2); the
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`identification of surveys, searches or other investigations (No. 3); the earliest date on which
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`Applicant will rely in this proceeding to establish any rights in Applicant’s mark vis-a-vis
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`Coloplast’s mark and the basis for such claim of right (No. 1); intended channels of trade (No. 5&
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`6); each medium (including the Internet websites in which Applicant’ s product is marketed and sold,
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`see Applicant’s responses to request for admission nos. 37 and 41) in which Applicant’s Mark has
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`been or is intended to be advertised or promoted (N0. 4(b)) assignments, licenses, consents or other
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`agreements (N0. 7); relevant registrations and/or marks (Nos. 12 and 15); and proposed marketing
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`(N0. 9). Opposer contends that Applicant can answer these interrogatories even ifthe mark is not
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`“presently” in use in the United States.
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`Next, Opposer turns to the following specific answers to Opposer’s interrogatories:
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`InterrogatogLl}I_ci:
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`Applicant only answered as to “Opposer’s use of Opposer’s marks;”
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`ignoring the queries as to Opposer and the products bearing Opposer’s marks. Moreover, the limited
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`information provided is insufficient since Applicant has failed to adequately identify the
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`“circumstances”, in light of Definition K found in Opposer’s interrogatories. See Exhibit B.
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`Applicant should be compelled to supplement this interrogatory.
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`Interrogatory Nos. 12/15:
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`As noted above, Applicant’s claimed (non)use of the opposed mark
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`is wholly irrelevant to these interrogatories. Coloplast respectfially requests that the Board compel
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`Applicant to disclose the requested information or be precluded from relying at trial on any
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`testimony or evidence that would have been responsive thereto.
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`Intenogatimgjjos. 17/18:
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`These interrogatories seek information (facts and documents)
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`concerning Applicant’s Answer. Applicant objected to providing E information because 1 of
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`it may be confidential. This is improper. Applicant should disclose the non-confidential information
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`immediately, and the confidential information (if there is any) after a Protective Order has been
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`entered.
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`Interrogatog No. 19:
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`Applicant should be compelled to indicate who provided what information
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`and whether the information was based on personal knowledge.
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`3 (Emphasis supplied). Additionally, it is not clear whether the disjunctive is a
`typographical error, and should have been the preposition “of.” This should be clarified by
`Applicant.
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`Interrogatog Nci: The identification of an expert does not constitute confidential information,
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`and Applicant’s confidentiality objection is inappropriate. Coloplast respectfully requests that the
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`Board compel Applicant to disclose the requested information or be precluded from relying at trial
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`on any expert testimony.
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`InterrogatcgI_I\I<1: Applicant refused to provide any information pending entry of a Protective
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`Order. Since Applicant failed to respond to Coloplast’s inquiries, the bases for the objections are
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`not known. For example, assuming arguendo, that there might be some instances where the
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`requested information might be considered “confidentia1,” surely there is other information which
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`is not (e.g., the identification of the persons, most summaries of information).
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`Interrogatory No. 22: Applicant has conditionally objected on privilege grounds and has promised
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`to supplement the interrogatory after entry of a Protective Order. However,
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`the requested
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`information (identification of discovery requests for which Applicant has not produced documents)
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`does not implicate any privilege and is not confidential. Applicant should be compelled to respond.
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`For the reasons stated above, Coloplast respectfully requests that Applicant serve amended
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`and/or supplemental responses to the interrogatories.
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`REQUESTS FOR ADMISSION
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`Applicant refused to answer numerous requests on the basis that “the allegation calls for a
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`legal conclusion on the part of the Applicant.” See e. g. response to nos. 1,2, 5-7, 9-1 1, 24, 28, 29,
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`and 76. However, a request for discovery is not necessarily objectionable merely because it requires
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`a party to give an opinion or contention that relates to fact or the application of law to fact.
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`In any event, the complained of requests are not objectionable on the stated ground. For
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`example, some of the disputed requests seek, inter alia, Applicant’s knowledge of Opposer,
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`Opposer’s mark and OppoSer’s application. These are discoverable topic areas. Moreover,
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`Applicant found nearly identical requests in Opposer’s discovery requests to E be objectionable.
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`Finally, sir1ce Applicant served requests for admissions which included these requests, see Exhibit
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`F, the Board should not credit App1icant’s claim that they are so objectionable that no answer can
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`be made. Accordingly,
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`the responses should be struck and the requests deemed admitted
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`(alternatively, Applicant should be compelled to respond to these requests).
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`Applicant denied numerous requests by stating that it “is without knowledge of the truth of’
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`the admission sought in the request. See e.g. response to nos. 30, 31, 32, 33, 64, 69, 74, and 77.
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`However, Applicant failed to state that he has made reasonable inquiry and that the information
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`known or readily obtainable is insufficient to enable him to admit or deny the request — as required
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`by the governing rules. See Fed. R. Civ. P. 36(a); TBMP 407.03(b). Moreover, some ofthe requests
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`would seem readily answerable by Applicant, including whether the type of goods listed in the
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`opposed application is marketed or sold at retail. Accordingly, the responses should be struck and
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`the requests deemed admitted (alternatively, Applicant should be compelled to respond to these
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`requests).
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`10
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`Since Applicant has failed to engage in any dialogue with Opposer concerning the discovery
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`issues, Opposer is at a loss to understand the basis for the denial of Request Nos. 66 and 73. They
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`should be deemed admitted, in light of App1icant’s answers to other requests (e. g. , no. 65) and the
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`opposed application itself.
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`DOCUMENT REQUESTS
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`In essence, Applicant only offered one of two “canned” responses to Coloplast’s varied
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`document requests: 1) he possesses no discoverable documents, or 2) he interposes a series of
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`identical boiler plate objections with no promise to produce any documents. Each will be discussed
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`in turn.
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`A.
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`No lDiscc-verable Documents
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`In response to nearly half of Colop1ast’s document requests, Applicant answered that there
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`are no discoverable documents. See responses to Request Nos. 2, 6-16, 21-23, 25, 29-31, 35, 37-39,
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`45-46, 52--53, and 57.
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`It is not clear how Applicant came to this conclusion, but Coloplast is
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`concerned that in responding to these requests, Applicant has mirrored its improper approach to
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`answering the interrogatories — not providing any answer because the mark is not “presently” in use.
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`Of course, a review of the discovery demonstrates that responses are required whether the mark has
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`been in use or not. Moreover, based on the scant information Applicant has provided in response
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`to Opposer’s discovery requests, Applicant’s claim to not have any documents responsive to any of
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`these requests would seem improbable. This suspicion is heightened by Applicant’s conduct to date.
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`11
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`For example, while Applicant claims that it possesses no documents responsive to Request
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`No. 9 (seeking sample advertisements, including Internet websites printouts) or Nos. 12/13 (websites
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`where Applicant’ s products are or are intended to be sold), Applicant admits to selling and marketing
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`its products on the Internet. See admission response nos. 37 (Applicant sells its PERISTAL products
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`on the Internet); and 41 (Applicant markets its PERISTAL products on the Internet).
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`Thus,
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`Applicant"s position appears contradicted by his own admissions. Similarly, it would seem that
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`Applicant would have documents responsive to document request no. 31 (channels of trade actually
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`used or intended to be used, e. g. , the Internet).
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`Moreover, while Applicant admits to knowing of Opposer and visiting Opposer’s website
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`before selecting the opposed mark (see responses to admission request nos. 3-4), Applicant claims
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`that there are no documents responsive to document request nos. 15-16 (documents referring to
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`Applicant’s knowledge of Opposer and Opposer’s mark); 21-23 (documents referring to Opposer,
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`Opposer’s Mark; and Opposer’s products), and 25 (documents referring to Applicant’s knowledge
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`of Opposer’s use of Opposer’s Mark).
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`Additionally, there are other requests which do not condition production on actual use of the
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`mark: Request No. 6 seeks samples ofproducts sold or intended to be sold under Applicant’s Mark;
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`Request Nos. 7 & 8 seek promotional and related materials — “whether or not such have ever been
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`used, displayed -or disseminated”; Request nos. 45 and 46 address marketing plans for the sale or
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`proposed sale of Applicant’s products. Nonetheless, Applicant claimed to possess no responsive
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`documents, notwithstanding that he admits to Internet sales.
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`Accordingly, Coloplast requests that the Board compel Applicant’s counsel to review these
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`responses with Applicant and confirm or amend the responses.
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`12
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`B.
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`BoilLl’late Objections
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`In response to the remainder of Opposer’s document requests, Applicant interposed a series
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`of identical boilerplate objections. This is improper as it does not put Coloplast on notice as to what,
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`if any, responses have been narrowed as a result of Applicant’s reliance on said objections.“
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`Indeed, the requests cannot be so objectionable that no response may be given since Applicant served
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`the same discovery on Opposer, which Applicant’s counsel signed pursuant to Rule 1 1. Compare
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`Exhibits B with Exhibit F. Additionally, Applicant failed to indicate whether any responsive
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`documents. exist or will be produced, contrary to Opposer’s interrogatories, discovery instructions
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`and the governing rules.
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`Applicant interposed (or contingently interposed) privilege objections for each such request,
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`including,for example, requests seeking documents: sufficient to show armual sales (nos. 28 and 29);
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`sufficient to show continuous use ofthe mark (no. 54); sufficient to identify retail locations (no. 59)
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`and the states (no. 61) in which Applicant’s products are sold; and product packaging (no. 60).
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`Clearly, Applicant’s indiscriminate use of the asserted privilege is inappropriate, and the responses
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`should be amended.
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`IV.
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`Rule 2.1201e) Statement
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`Pursuant to Rule 2. 120(e) ofthe Trademark Rules of Practice, Opposer states that it has made
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`good faith efforts by correspondence and by telephone to resolve with the other party or the attorney
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`therefor the issues presented in this Motion, and has been unable to reach agreement due to
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`Applicant’s persistent failure to respond to same.
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`4 Similarly improper is Applicant’s interposition of numerous objections to Colop1ast’s
`discovery requests under the heading “General Objection.”
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`13
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`Coloplast has sought to avoid filing this discovery motion. Indeed, it proposed an extension
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`of time to allow Applicant time to adequately respond to Opposer’s discovery requests, produce
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`documents and negotiate and submit a Protective Order.
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`See e. g., Exhibits D and E.
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`Notwithstanding Opposer’s attempts to frame, discuss and achieve a resolution to the various
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`discovery disputes, Applicant has remained inexplicably inert. While the issues in this Motion have
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`not been narrowed through good faith negotiations, Opposer notes that such requires Applicant’s
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`participation — which has been wholly lacking. That is, Rule 2.120(e) requires the good faith efforts
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`of both parties.
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`Request for Suspension and, Upon Resumption,
`V.
`Extension of the Discoveg Period for Coloplast Alone.
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`Opposer understands that this proceeding will be suspended based on the filing of this
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`discovery Motion, pursuant to Trademark Rule 2.120(e) (When a partyfiles a motion for an
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`order to compel discovery, the case will be suspended by the Trademark Trial and Appeal Board
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`.
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`.
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`. .”) (Emphasis supplied). However, to the extent that Opposer is incorrect, it respectfully
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`requests that the proceeding be suspended to allow the Board to consider the present Motion (and
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`any responsive filings). Opposer further requests that following a ruling on this Motion, the
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`schedule be reset, as requested below.
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`The discovery period closes today, January 6, 2006. Coloplast served its discovery early
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`enough in the discovery period to allow it time to pursue follow up discovery, as suggested by
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`the TBMP. See TBMP §403.05. However, Applicant’s woefully inadequate discovery responses
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`coupled with Applicant’s persistent failure to respond to (or even acknowledge) Colop1ast’s
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`14
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`efforts to resolve the discovery issues have effectively deprived Coloplast of its opportunity to
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`engage in follow up discovery. Indeed, Applicant has not even responded to Co1oplast’s
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`invitation to extend all deadlines so that the parties would have additional time to address the
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`discovery issues. Accordingly, Coloplast respectfully requests that upon resetting of the
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`schedule, the Board extend the discovery periodfor Opposer alone5 by five weeks after the
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`deadline for Applicant to supplement its discovery.‘
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`VI.
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`Conclusion
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`For all the foregoing reasons, Opposer respectfully requests that the Board GRANT
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`Opposer’s Motion to Compel and Test Sufficiency; and issue an Order: 1) suspending these
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`proceedings; 2) compelling Applicant to immediately serve amended and/or supplemental
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`answers to Opposer’s interrogatories, requests for admission and document requests; 3)
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`compelling Applicant to produce responsive documents by mail; 4) compelling Applicant to
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`serve a privilege log; 5) entering the Board’s Standard Protective Order; and 6) resetting the
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`5 Such an extension should not be granted to Applicant in light of Applicant’s bad faith
`conduct which necessitated this very request, since it is axiomatic that one should not benefit
`from his own improper conduct. Moreover, Applicant chose to wait until the “waning days of
`the discovery period” to serve any discovery, and therefore can have no reasonable expectation
`for an extension. See TBMP §403.04 (“Mere delay in initiating discovery does not constitute
`good cause for an extension of the discovery period. Thus, a party which waits until the waning
`days of the discovery period to serve interrogatories, requests for production of documents and
`things, and/or requests for admission will not be heard to complain, when it receives responses
`thereto after the close of the discovery period, that it needs an extension of the discovery period
`in order to take ‘follow-up’ discovery.”).
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`6 Altematively, if the Board declines to compel Applicant to supplement any of the
`disputed discovery responses, then Opposer requests an extension of five weeks from the
`issuance of such an Order.
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`15
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`schedule upon lifting the suspension, including an extension of the discovery period for Opposer
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`alone.
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`Respectfully Submitted,
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`COLOPLAST A/S,
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`Simor L. Moskowitz
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`Matthew J. Cuccias
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`JACOBSON HOLMAN, PLLC
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`400 Seventh Street, N.W.
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`Washington, D.C. 20004
`(202) 638-6666
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`Dated: January 6, 2006
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 6'“ day of January, 2006, a true copy of the foregoing
`Opposer’s Motion to Compel and to Test the Sufficiency of Applicant’s Answers to Requests for
`Admission, to Suspend the Proceedings and to Reset the Trial Dates By Extending the Discovery
`Period for Opposer Alone, was served by first-class mail, postage prepaid, upon counsel for
`Applicant:
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`John S. Egbert
`Egbert Law Offices
`412 Main Street
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`7th Floor
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`Houston, Texas 77002
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`EXHIBIT A
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`COLOPLAST A/S,
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`OPPOSER,
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`vs.
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`JIRO TAKASHIMA,
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`I
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`APPLICANT.
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`OPPOSITION NO. 165,588
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`OPPOSER’S MOTION TO COMPEL AND TO TEST THE
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`SUFFICIENCY OF APPLICANT’S ANSWERS TO REQUESTS FOR ADMISSION,
`TO SUSPEND THE PROCEEDINGS AND TO RESET THE TRIAL DATES BY
`
`EXTENDING THE DISCOVERY PERIOD FOR OPPOSER ALONE
`
`

`
`
`
`“W °"‘=E5
`Jacobson Holman
`Professional Limited Llabxliry Company
`400 Seventh Street, N.w.
`Washingzon, D.C. 20004-Z218
`
`(202) 535-5555
`(202)393-szso/si/s2<rax>
`Www']h'D'C°m
`Firm e-rnauI:1p@;‘h1p.ccm
`
`.
`
`9e‘°°”‘ ‘e= “B” REMINDER VIA FA CSIMILE
`(713)223-4873
`October 26, 2005
`
`.
`John S. Egbert, Esquire
`Harrison & Egbert
`412 Main St., 7"‘ Floor
`
`Houston, TX 77002
`
`Re:
`
`Coloplast A/S v. Iiro Talcashirna
`Mark: PERISTAL
`
`' Opposition No. 91/165,588
`Our Ref: 11072/I-5240
`
`Dear Mr. Egbert:
`
`This will refer to our April 1, 1005 letter and our telephone conversations ofMay 12,
`2005 and September 22, 2005, regarding the above-referenced matter.
`
`Our April 1, 2005 letter to you sought information about the Applicant, Mr.
`Takashima, regarding his PERlSTAL.product, as well as its promotion, channels of trade, and
`ultimate consumer. Despite our several reminders, we received no response from you.
`
`When we finally spoke on May 12, 2005 you said that you had no instructions from
`Mr. Talcashima. We asked whether additional time might be helpful for collecting the documents
`and information requested in our April 1, 2005 letter. You responded in the negative, saying that
`the opposed ma.rk was not “a big deal" for l\/Ir. Talcashima, and that he would likely not even respond
`to any Notice 0 f Opposition that might be filed. You further advised that Applicant would certainly
`not use the opposed mark, which was the subject of an intent to use application.
`
`I called you on
`Accordingly, we were surprised to receive Applicant’s Answer.
`September 22, 2005, and you advised that the Answer was filed as a precautionary step since you
`had not received any instructions fiom your client. In light of this, I requested that you confer with
`your client and determine whether he wished to defend the opposition proceeding, abandon the
`application, or respond to our request for information. You declined. You said that we would have
`to serve written discovery, at which point you thought that Mr. Takashima might lose interest in the
`application.
`I noted that your refusal to communicate with your client constitutes a colossal waste
`of time, effort, money and energy; and suggested that it would be more productive if you would
`simply communicate with your client regarding his intentions (indeed, it is not clear whether Mr.
`Takashima has even been apprised of this proceeding). However, you again declined, repeating that
`we would have to go through the exercise and expense of serving written discovery.
`
`-—+
`
`H+'vey 8. Jacobson, Jr.
`
`John Clarke Holman
`
`Simor L. Moskowitz
`...m:-_ :- m-......
`
`Allen S. Melser Michael R. Slobasky Marsha G. Gentner
`nL.:|:..»
`Fxlru.-.:|I
`may-.
`1 c\....z.-
`luafls m \IUa$rr
`
`Jonathan L. Scherer George W. Lewis
`
`

`
`I I
`
`‘
`
` jaCObs0n Holman PLLC
`
`John S. Egbert, Esquire
`October 20, 2005
`
`Page 2
`
`We again call upon you to reconsider this improper and wasteful position.
`
`Very truly yours,
`
`Matthew J. Cuccias
`
`JACOBSON HOLMAN PLLC
`
`SLM./MI C/ as
`
`

`
`x
`
`x
`
`x COQICATION RESULT REPORT (OCT.26.g 4:44PM)
`
`*
`
`*
`
`*
`
`FAX HEADER:
`
`JACOBGON HOLMAN PLLC
`
`7l‘l\NS‘MlTTED/STORED I OCT, 26. 2005
`=‘;g M035
`OPTION
`
`4:43PM
`
`ADDRt5S
`
`Qll
`
`MEMORY TX
`
`77132234873
`
`_
`R:SULT
`
`OK
`
`PAGE
`
`2/?
`
`"-
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`Jacobsox-1 I-Iolnjagj
`Prcfessacnal Limited Lint:-llcv COIv\Div\y
`coo Scvunlh ¢:rue:, ~.w.
`Washington, O.:. 2000-\-2219
`
`.
`
`(202) 6.38-6665
`(2:32) :9:-sass/si/sz (Fax)
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`Flrm "ma":
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`
`_
`John 8- Egbert. Esquire
`I-Ia:-n'son AZ; Egbert
`412 Main St., 7"‘ Floor
`Houston, TFX 7'70 02
`
`.
`
`geisha’ ‘e’ 2585 .g§E;;;_’I;;7DER VL4 FA CSIJlcfILE
`7] )223—4 ’73
`October 26, 2005
`_
`
`Re:
`
`Coloplast A./S v. Iiro Talcashima
`Mark: PERISTAL
`Opposition No. 9 1/1 65,5 88
`Our Ref: 1 l O72/I-524-O
`
`. Dear Mr. Egbert:
`
`This will refer to our April 1 , 1 005 letter and our telephone conversations of1\/lay 1 2,
`2005 and Septernbcr 22, 2005, regarding the above—referenced matter.
`
`IvLr.
`C)u.r April 1, 2005 letter to you sought inforrnation about the Applicant,
`'I'al<as.'nin1a,, regarding his PERISTAL.product, as well as its promotion, channels of trade, and
`ultimate consum er. Despite our several reminclers, we received no response from. you.
`
`V/hen we finally spoke on May 12, 2005 you said that you had no instructions frorn
`Ivlir. Takashima. We asked whether addifional tirne nqight be helpful for collecting the documents
`and infonnation requested in our April 1, 2005 letter. You responded in the negative, saying that
`the opposed marl: was not "a big deal" for Mr. Takashirna, and that he would likely not even respond
`to any Notice ofOppcsition that might be filed. You further advised that Applicant would certainly
`not use the opposed mark, which was the subject of an intent to use application.
`
`I called you on
`Anccordingly, we vvere surprised to receive Applicant's Answer.
`Septeznber 22, 2005, and you advised that the Answer was filed as a precautionary step since you
`had not received any instructions from your client. In light of this, I requested that you confer \ViIh
`your client and determine vvhether he wished to defend the opposition proceeding, abandon the
`application, or respond to our request for information. You declined. You said that we would have
`to serve ‘written discovery, at which point you thought that l\/Ix. Talcashirna might lbse interest in the
`application. I noted that your refusal to communicate ‘with your client constitutes a colossal waste
`of tirne, effort, money and energy; and suggested that it would be more productive if you would
`simply cornrnunic-.a