Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA78248
`ESTTA Tracking number:
`04/27/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91165753
`Plaintiff
`QMT Associates, Inc.QMT Associates, Inc.
`
`QMT Associates, Inc.
`8431 Euclid Avenue
`Manassas Park, VA 20111
`UNITED STATES
`Susan M. Kornfield
`Bodman LLP
`110 Miller, Suite 300
`Ann Arbor, MI 48104
`UNITED STATES
`skornfield@bodmanllp.com
`Other Motions/Papers
`Angela Alvarez Sujek
`asujek@bodmanllp.com, lcharlebois@bodmanllp.com
`/angela alvarez sujek/
`04/27/2006
`QMTMotion.pdf ( 5 pages )(185554 bytes )
`QMTBrief.pdf ( 17 pages )(962479 bytes )
`QMTBriefExA.pdf ( 9 pages )(456637 bytes )
`QMTBriefExB.pdf ( 10 pages )(1268021 bytes )
`QMTBriefExC.pdf ( 19 pages )(842641 bytes )
`QMTBriefExD.pdf ( 78 pages )(6040603 bytes )
`QMTBriefExE.pdf ( 14 pages )(578379 bytes )
`QMTBriefExF.pdf ( 4 pages )(230235 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter ofApp1ication Serial No. 78/213,865
`Filed on February 12, 2003
`For the Mark MISCELLANEOUS DESIGN
`
`Published in the Official Gazette on Iune 14, 2005
`
`QMT ASSOCIATES, INC,
`
`Opposer,
`
`v.
`
`SARA NEAL ESKEW,
`
`Applicant.
`
`\uJ"u./\u_/\_/\_r’\—/\J\_/\;\.../
`
`Opposition No. 91 165753
`
`OPP()SER’S MOTION TO COMPEL PROPER DISCOVERY
`
`RESPONSES AND FOR AN ORDER AS TO APPLICANTS
`
`INSUFFICIENT RESPONSE TO REQUESTS FOR ADMISSION
`
`Opposer QMT Associates, Inc. (“QMT”) moves pursuant to IBMP § 523.01 and 524.01
`
`to compel Applicant Sara Neal Eskew to provide complete and proper responses to 0pposer’s
`
`Interrogatories and Requests for Production of Documents and to determine the sufficiency of
`
`Applicant’s response to 0pp0ser’s Requests for Admission. Opposer’s Interrogatories, Requests
`
`for Admission and Requests for Production of Documents are attached to QMI’s Brief in
`
`Support of its Motion to Compel Proper Discovery Responses and for an Order as to Applicant’s
`
`Insufficient Responses to Requests for Admission as Exhibit D Pursuant to IBMP §§ 523.02
`
`and 524.02, QMT’s counsel certifies
`
`that
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`it has made a good faith effort,
`
`through
`
`correspondence,
`
`to resolve the issues presented in this motion. Those efforts have been
`
`unsuccessful
`
`In support of its motion, QMT relies on the accompanying brief and states as
`
`follows:
`
`Anr1Arb0rgl 04069_3
`
`

`
`1.
`
`QMT and Applicant both rnanuf'actur‘e and sell wind chimes
`
`similar
`
`in
`
`appearance.
`
`2.
`
`3..
`
`Applicant seeks registration of alleged trade dress in its wind chimes.
`
`QMT and Applicant previously were engaged in trade dress litigation brought by
`
`Applicant in the Southern District of Iexas, captioned Eskew d/b/as Music ofthe Spheres v. QMT
`
`Associates, Inc, Cir. No. 0l—CV—l00l (the “Litigation”) That matter was amicably resolved and
`
`the parties entered into a Settlement Agreement and Stipulated Mutual Final Injunction prior to
`
`trial.
`
`4.
`
`5
`
`QMT filed its timely opposition in this matter on luly 5, 2005.
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`Applicant moved to dismiss this opposition for alleged lack of standing.
`
`In her"
`
`motion to dismiss, Applicant made false assertions regarding the resolution of the Litigation,
`
`including that QMT consented to the sought after registration and that the federal court in the
`
`Litigation made certain findings of fact and/or law.
`
`6.
`
`The Board denied Applicant’s Motion to Dismiss on November 7, 2005 and
`
`entered trial dates, which included the closing of discovery on March 1, 2006 and a close of" the
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`testimony period for the party in the position ofplaintiff on May 30, 2006.
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`'7.
`
`QMT timely served interrogatories, requests for admission, and requests for
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`production of documents on March 1, 2006 (the “Requests”)
`
`8.
`
`Applicant filed purported responses to QMT’s Requests on April 3, 2006.
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`AnnArbor__l 04069_3
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`

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`9.
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`Applicant’s responses are improper and defective in numerous respects and fail to
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`substantively provide any information in response to the Requests
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`10
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`TBMP §§ 523,01 and 524.01 authorize the filing of a motion to compel with
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`respect to interrogatories and document requests and a motion to test the sufficiency ofresponses
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`to requests to admit. This motion is timely filed prior to the commencement ofthe first testimony
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`period in accordance with the TBMP §§ 523.03 and 524.03..
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`11,.
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`As set forth more fully in the accompanying brief, Applicant’s responses are
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`defective, include baseless objections, and fail to provide any substantive response to QMT’s
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`Requests,
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`CONCLUSION
`
`For the foregoing reasons, QMT requests the Board:
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`1,
`
`With respect to Applicant’s baseless denials in response to QMT’s Requests for
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`Admission, each and every matter set foith in QMT’s requests to admit should be deemed
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`admitted and an appropriate order entered
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`2
`
`With respect to QMT’s interrogatories, Applicant should be ordered to respond in
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`full to the interrogatories without further objection,
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`,3,
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`With respect to QMT’s requests for the production of documents, the Board
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`should enter an order: (a) requiring Applicant to produce copies of any and all documents
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`identified in response to QMI’s interrogatories; (b) requiring Applicant make available for
`
`inspection and copying, at a mutually convenient date and time, all documents responsive to
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`Request for Production No. 2; (C) precluding Applicant from relying on any information related
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`3
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`AnnArbor-_104069_3
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`

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`to Document Request Nos. 3, 5, 6, 7, and 8 or from introducing information sought in the
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`requests as part of evidence in the matter (TBMP 527.01(b)); (d) requiring Appiicant to produce
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`a privilege log with respect to any documents being withheld under claim of’“privi1ege;” and (e)
`
`requiring Applicant to answer in full and state whether any such documents exist in response to
`
`Request No. 9
`
`4
`
`Under IBMP § 523.01 and 37 CFR § 2 120(c)(h), this Opposition should be
`
`suspended with respect to all matters not germane to this motion
`
`BODMAN LLP
`
`By:
`
`C
`
`Alan N.
`
`i
`CW/vr
`CL
`
`
`arris
`
`Angela Alvarez Suj ek
`Attorneys for Opposer
`110 Miller, Suite 300
`Ann Arbor, Michigan 48104
`"734-761-3780
`
`AnnArbcr_104069A3
`
`

`
`Certificate of Mailing
`
`I hereby certify that
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`the enclosed Opposer’s Motion to Compel Proper Discovery
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`Responses and for An Order" to Applicant’s Insufficient Responses to Requests for' Admission
`
`(Opposition No. 91165753), regarding the mark “MISCELLANEOUS DESIGN,” Serial No.
`
`78/213,865, which will be filed electronically with the Trademark Trial and Appeal Board as of
`
`today’s date, is being sent via US Mail to:
`
`Daniel Lundeen
`1916 Baldwin
`
`Houston, Texas 77002
`
`Name ofperson ce ifying mailing: Lori
`
`D
`
`f\
`
`
`/ll/ll/\/K
`
`Srgnature:
`
`V Lg
`
`/_’
`
`_/
`
`V \
`
`Date ofSigning: April 27, 2006
`
`AnnArboI‘M 104069;
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of‘Application Serial No. 78/213,865
`Filed on February 12, 2003
`For the Mark MISCELLANEOUS DESIGN
`
`Published in the Official Gazette on June 14, 2005
`
`Opposition NO 91 l65'/'53
`
`)
`
`) )
`
`)
`)
`
`) )
`
`) )
`
`)
`
`QMI ASSOCIATES, INC,
`
`Opposer,
`
`V
`
`SARA NEAL ESKEW,
`
`Applicant
`
`QMT ASSOCIATES, INC.’S BRIEF IN SUPPORT OF ITS MOTION TO COMPEL
`PROPER DISCOVERY RESPONSES AND FOR AN ORDER AS TO APPLICANT’S
`
`INSUFFICIENT RESPONSES TO REQUESTS FOR ADMISSION
`
`Ihis is a case in which Applicant seeks to register alleged trade dress in the configuration
`
`of her Wind chimes Ihe records of the USPTO database confirm that no person or entity has a
`
`registration for purported trade dress in wind chimes, and for good reason As concluded by the
`
`Examiner when it originally rejected the Application at issue, such configurations are functional
`
`Opposer QMT Associates, Inc (“QMT”) files this Brief" in support of its Motion to
`
`Compel Proper Discovery Responses and for an Order as to Applicant’s Insufficient Responses
`
`to Requests for Admission QMI timely served discovery requests in this matter which
`
`Applicant, through a response replete with improper objections and baseless denials, effectively
`
`ignored. Counsel for QMI has attempted to resolve these issues through an exchange of’
`
`correspondence with counsel for Applicant, Sara Neal Eskew (“Applicant”), but to no avail“ The
`
`AnnArbor_ l 0407 8]
`
`

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`exchange of" correspondence, consisting of counsel for QMT’s letter ofApri1 7', 2006, counsel for
`
`Applicant’s response dated April 10, 2006, and counsel for QM'I’s follow up letter of’ April 21,
`
`2006 are all attached as Exhibit A to this Brief" QMT asks the Board to: (a) enter" an order
`
`deeming QMI’s Requests for Admission admitted under TBMP § 52401; (b) enter an order
`
`under TBMP § 527..0l(e) precluding Applicant’s reliance on certain information at trial; and (c)
`
`enter an order requiring Applicant to answer the remaining discovery requests immediately, fully
`
`and without objection.
`
`FACTS AND PROCEDURAL HISTORY
`
`A,
`
`QMT and MOTS Wind Chimes.
`
`QMT has been designing, manuf'acturing and selling wind chimes since 1991.
`
`It offers
`
`several lines of wind chimes with varying visual and sound characteristics.
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`In 1998, QMT began
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`manufacturing and selling a line of “hand—tuned” wind chimes and,
`
`in 2001,
`
`introduced its
`
`GENTLE SPIRlTS® line. As set forth in the table, below,
`
`the elements of the GENTLE
`
`SPIRITS wind chimes (including an open ring suspension, a metallic circular top ring, deburred
`
`tubes, a clapper, and a diamond—shaped, curved “sail”) reflect considerations of sound quality,
`
`manufacturing processes, safety, modern design, and response to market demand:
`
`ELEMENTS OF WIND CHIME
`
`FUNCTION
`
`_|
`
`“Open-ring” suspension system lmproves the quality and duration of the sound created when
`the clapper hits the tube, and reduces cord abrasion Instead of
`drilling holes into the side of the tubes and suspending the
`tubes by cord strung through the holes, an open ring
`suspension ties the cord to a pin that runs the diameter‘ of" the
`tube.
`
`Two
`
`“dots”
`
`visible
`
`on
`
`the The dots are not aesthetic “dots” added to the wind chime but
`
`outside ofthe tube
`
`result from the pin that runs the diameter of the tube (onto
`which the cord is tied to suspend the tube) meeting the tube
`
`Silver “ring” at
`the tube
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`the bottom of There is no silver ring applied to the tube After the metal
`tube is cut to the desired length, the metal edge is smoothed
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`AnnArbor_i O4078_2
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`

`
`
` (debuired) to avoid cuts from handling rough metal
`The
`“ring” at the bottom of the tube is the emergence ofthe metal
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`beneath the paint color that has been applied to the tube.
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`The clapper hits the suspended tubes and cr'eates the sound
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`“Sail”
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`The sail, attached to the clapper, catches the wind, enabling
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`the clapper to hit the tubes.
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`Applicant, dfb/a Music ofthe Spheres (“MOT S”), sells a line of hand—tuned wind chimes
`
`also generally consisting of" an open-ring suspension system, a metallic circular top ring,
`
`deburr ed black tubes, a clapper, and a diamond-shaped curved “sail.” Images ofthe wind chimes
`
`of QMI
`
`(under
`
`its
`
`trade name “Majesty Bells”) and Applicant are set
`
`forth below:
`
`As the above pictures demonstrate,
`
`the parties’ wind chimes are visually similar in
`
`several aspects.
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`Anr:Arb0r_l04G78_2
`
`

`
`B
`
`The Prior Federal Trade Dress Litigation.
`
`In April 2001, Applicant sued QMT in the Southern District of Texas, alleging that
`
`QMT’s Gentle Spirits® wind chimes infringed her alleged trade dress rights (the “Litigation”)
`
`Discovery revealed fatal flaws in App1icant’s case, including that the alleged trade dress changed
`
`over time, the elements of the claimed trade dress were functional, the wind chimes lacked
`
`secondary meaning, and that other companies manufactured wind chimes identical
`
`to or
`
`substantially similar to those of Applicant]
`
`The Litigation revealed the functionality of Applicant’s wind chimes,
`
`including
`
`admissions by Applicant on her web site:
`
`the “[c]entral tube suspension with smoothly polished tube ends prevent cord
`0
`abrasion typical ofother, less labor-extensive suspension techniques.”
`
`the “[h]eavy gauge polished stainless steel rings provide stur'dy support and
`0
`enduring beauty,”
`
`[t]he corrosion protective finish preserves chimes and increases durability in
`-
`hostile environments ”
`
`the “wind catcher, of the same finish and materials as the tubes, is the ideal size,
`o
`weight, and shape for optimal chime performance
`”
`
`“[t]he corrosion protective finish provides durability in all kinds of outdoor
`o
`environments ”
`
`
`
`1 For example, Appiicant’s complaint described the alleged trade dress as the “original and unique look and tone”
`consisting of “black—coated chime tubes, the black clapper, the black, generally actuate diarnond—shaped wind
`catcher, the manner of tube suspension and the use of black Cordage, [and] the open ring support platform”
`Applicant’s Amended Complaint, QMI’s Brief‘ in Opposition to Motion to Dismiss, Exhibit B,
`{[1] 7-8
`(emphasis added)
`In her application for trademark registr ation of the same product and her rejected motion to
`dismiss, Applicant offered a different description, claiming “a combination of features consisting of a metallic
`silver top ring with a circular cross section, a central tube suspension system, black tubes with metallic silver
`exposed ends interior and side dots, a disk-shaped clapper, and a black, diamond—shaped wind catcher with a
`curvature about a vertical axis." Appiicant’s Memorandum in Support of Motion to Dismiss at 2 (emphasis
`added). Her “expert report” submitted to the Examiner describes the claimed trade dress a third way
`
`AnnArbor_l 04078_2
`
`

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`See printout from App1icant’s web site, attached as Exhibit B These admissions alone are more
`
`than enough to demonstrate the functionality of Applicant’s claimed trade dress See, e g., Vain
`
`Engineering, Inc. vs Rexn0m' Corp, 278 F.3d 1268, 1272 (Fed Cir. 2002) (citing an applicant’s
`
`touting of the utilitarian advantages of the design as one of the principal factors in a functionality
`
`analysis). Although Applicant submitted an expert report during the Litigation in an attempt to
`
`support her claim that her wind chimes had acquired secondary meaning, the federal court did
`
`not ultimately rule as to whether that report was deficient in its methodology or met the standard
`
`for reliability and admissibility under Dcmbert v. ll/[errell Dow Pharmaceuficals, Inc‘, 509 US‘
`
`579 (1993), and its progeny.
`
`Applicant decided not to have her claim of trade dress tested by the applicable legal
`
`principals and settled the Litigation without any judicial determination as to functionality (an
`
`issue on which A“plic"nt maintained the burden ofproviug by a preponder ""106 of the evidence,
`
`see 15 U.S.C 1l25(a)(3)) and without any _judicial determination as to whether her Wind chimes
`
`had acquired secondary meaning Indeed, the Litigation concluded with Applicant agreeing that
`
`QMT could continue selling its wind chimes without any significant changes at all
`
`C
`
`The PTO Refused Registration ofApplicant’s Wind Chimes
`Because They Were “Functional” and Because They Were “Highly Descriptive.”
`
`The PTO refused registration of Applicant’s wind chimes on the grounds that
`
`the
`
`“proposed mark appears to be functional” (“Configuration Refusal”) and on the grounds that the
`
`wind chimes were “highly descriptive ” The PTO stated that the allegation offive years use was
`
`insufficient to establish distinctiveness and sought “actual evidence to prove the distinctiveness
`
`ofthe mark in commerce ”
`
`AnnA1bor_l 04G7'8_2
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`

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`D,
`
`Applicant Abandons, then Revives, Her Application.
`
`Applicant received the Action Letter and refusal from the PTO while the parties were
`
`litigating the very issue as to whether Applicant owned any trademark rights in her wind chimes.
`
`After settling the Litigation, Applicant failed to timely respond to that Action Letter and the
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`application was abandoned Applicant later filed a petition to revive, citing an “unintentional”
`
`delay in filing a response to the Office Action and, in support of that petition, falsely asserted
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`that a court had established legal rights in her wind chimes
`
`She also falsely asserted that
`
`competitors had agreed her chimes were protected by trade dress rights Based upon her
`
`statements, the PIO published the application for opposition, See Applicant’s Response to
`
`Office Action, attached as Exhibit C, at 7.
`
`E,
`
`QMT’s Opposition and Discovery Reguests.
`
`QMT timely filed this Opposition on July 5, 2005
`
`Following denial of Applic:-mt’s
`
`motion to dismiss, QMT served a narrow set of interrogatories and document requests on March
`
`1, 2006,. QMI also served a narrow set of requests for admission, the majority of which sought
`
`confirmation as to certain documents in the Litigation and confirmation as to certain statements
`
`appearing on Applicant’s website (collectively, the “Requests”) See Opposer’s Interrogatories,
`
`Requests for Admission and Requests for Production of'Documents, attached as Exhibit D.
`
`Applicant
`
`served responses
`
`in a document
`
`entitled
`
`“Response
`
`to Opposer’s
`
`Interrogatories, Requests for Admission, Requests for Production of Documents” on April 3,
`
`2006. See Exhibit E Applicant began its response by complaining that QMT’s request was
`
`“served by overnight delivery on the last day at the very close of discovery March 1, 2006.” Id,
`
`at 1, Applicant made the following general objection to QMT’s eight interrogatories:
`
`Arinmborgl O4078_2
`
`

`
`interrogatories are oppressive, harassing,
`“Ihe eleventh hour‘
`overly board and unduly burdensome Eskew believes that the
`number of interrogatories served, including subparts, exceeds the
`75-interrogatory limit specified in 37 CFR § 2.l20(g)(1) Eskew is
`not willing to waive this basis for objection, and within and time
`for (and instead of) serving answers and specific objections to the
`interrogatories, hereby serves a general objection on the ground of
`their excessive number IBMP § 405 03 (e) ” See Exhibit E at 1-2
`
`Based on its general objection, Applicant provided no response to any of QMI’s
`
`interrogatories IL’
`
`QMT served twenty straightforward requests to admit.. Fourteen of the requests simply
`
`asked Applicant to admit that certain language quoted in the requests for admission appeared on
`
`her website, www.musicofspheres.ccm, as of" the date Applicant filed the subject Application.
`
`While counsel for QMT has been able to determine that the language unquestionably appear ed
`
`both immediately before and after the date (through an Internet archive Search engine), Applicant
`
`denied each and every request. See, Exhibit F (archived website pages). QMI also sought
`
`straightforward admissions as to certain documents (which it attached) and events related to the
`
`resolution of the Litigation, namely, that there was no final ruling, but rather the parties entered
`
`into a Settlement Agreement.
`
`It asked for admissions as to the accuracy of the attached
`
`Settlement Agreement, the Amended Complaint, and certain of Applicar1t’s discovery responses
`
`in the Litigation Lastly, QMT asked for an admission that the federal court in the Litigation @
`
`n_0t “acknowledge” any exclusive right to the alleged wind chime trade dress (as Applicant
`
`claimed in her Motion to Dismiss (denied by the Board)). Applicant denied each and every
`
`request,
`
`including the requests that merely sought acknowledgment
`
`that pleadings in the
`
`Litigation were true and correct copies See Exhibit E at 5-10.
`
`As to QMT’s Requests for Production of Documents, Applicant again objected to each
`
`and every request and made a variety of" objections, including that the requests were defective
`
`7
`
`AnnArborW l O407Sg_2
`
`

`
`because it didri’t specify a date and time for production (thereby supposedly making it
`
`“impossible” for Applicant to agree to production), burdensome objections, alleged privileged
`
`objections (without production or a privilege log) and objections that the document requests are
`
`“vague,” “ambiguous,” “argumentative,” and “harassing”, See Exhibit E at 10-13
`
`ARGUMENT
`
`Applicant’s objections to each and every interrogatory, request for admission and request
`
`for production of documents are improper Taken as a whole, it is evident that Applicant does
`
`not wish to properly prosecute this matter and, instead, wishes to further protract the matter
`
`through baseless filings 3 QMT’s motion should be granted
`
`A
`
`Applicant’s Objection Regarding the Time of Service is Baseless.
`
`Applicant’s response states that it is responding to requests “served by overnight delivery
`
`on the last day at the very close of discovery, March 1, 2006” and calls the “eleventh-hour
`
`interrogatories l
`
`.
`
`‘ oppressive, harassing, overly broad and unduly burdensome ” See Exhibit E
`
`atl
`
`The interrogatories were properly served As the Board is well aware, “Interrogatories,
`
`requests for production of documents and things, and requests for admission may be served on an
`
`adversary on the day the discovery period opens through the last day of" the discovery period,
`
`even though the answers thereto will not be due until after the discovery period has closed ”
`
`2 As the Board will recall, Eskew previously filed a Motion to Dismiss, which was denied. As set forth in QMI’s
`response to the Motion to Dismiss,
`the purported basis for dismissal flowed from false statements and
`characterizations of" what transpired in the Litigation Indeed, the examiner in this matter initially rejected the
`application for some of the very reasons QMT puts forth in this opposition,
`It was only after Applicant
`submitted false filings in response to the Office Action Letter in which it misrepresented the nature of the
`Settlement Agreement and nrisrepresented what transpired in the federal court litigation that this matter even
`proceeded to publication and opposition Applicant’s counsel’s letter preceding this motion confirms that
`Applicant and her counsel simply view themselves as the fact finder and do not want this Opposition to
`proceed,
`
`AnnArbor_l04U78g2
`
`

`
`IBMP 403.02 (emphasis added) Applicant’s objections in this regard are baseless.
`
`See
`
`Luemme Inc v. DB Plus, Inc, 53 U.S.P Q..2d 1758, 1761 (TTAB 1999)..
`
`B
`
`Applicant’s Objection as to the 7S—Interrogatory Limit is Made in Bad Faith.
`
`Applicant states that “the number of interrogatories served, including subparts, exceeds
`
`the 75-interrogatory limit specified in 37 CFR § 2.120(d)(1).” See Exhibit E at 1. Based on this
`
`objection, Applicant refused to answer any of QMT’s interrogatories.
`
`Applicant’s objection is baseless
`
`and made in bad faith QMT served eight
`
`interrogatories. See Exhibit D. The TBMP is clear:
`
`“If” an lnterrogatory requests information concerning more than one
`issue, such as information concerning both ‘sales and advertising
`figures,’ or both ‘adoption and use,’ the Board will count each
`issue on which information is sought as a separate interrogatory
`In contrast, if an interrogatory requests ‘all relevant facts and
`circurnstances’ concerning a single issue, event, or matter; or asks
`that a particular piece of information, such as, for example, annual
`sales figures under a mark, be given for multiple years, and or each
`of the responding party's involved marks, it will be counted as a
`single interrogatory.” TBMP 405 .O3(d).
`
`QMT’s interrogatories are straightforward. For example, QMT sought identification of
`
`facts known to Applicant in support of the claim non—f'unctionality and distinctiveness of the
`
`alleged trade dress
`
`See Exhibit D,
`
`lnterrogatory No. 3. QMT sought the identity of the
`
`“arbitrary design features” ofthe wind chimes claimed by Applicant in her response to the Office
`
`Action Letter. See Exhibit D, lnterrogatory No. 6..
`
`In an attempt to understand what QMI
`
`believes to be a misrepresentation to the Board, QMI asked for
`
`the identification, with
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`specificit
`
`, of the language in the Stipulated Mutual and Final Injunction in which the court
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`“acknowledged” Applicant’s exclusive right, as she has represented to this Board See Exhibit D,
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`lnterrogatory No 7.
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`Interrogatory No. 8 simply asked for the basis for any denial made in
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`AnnArbor_l O4078_2
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`response to QMT’s requests for admission. Even counting each and every issue and subpart of
`
`each interrogatory and counting each of the requests to admit (all of which were improperly
`
`denied), this would at most be seVenty—two discrete interrogatories
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`Thus, taking the most extreme and charitable version of Applicant’s interpretation of the
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`requests, it is impossible to calculate any version ofthe interrogatories which exceeds 75
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`C
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`Applicanfs Denials oft }MT’s Requests to Admit are Improper‘.
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`Fourteen of QMT’s requests to admit simply sought admissions that certain statements
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`appeared on Applicant’s website For example, QMT sought an admission that Applicant makes
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`the following claim on her website: “heavy gauge polished stainless steel rings provide sturdy
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`support and enduring beauty.” Exhibit D, Request to Admit No. 4 3 This statement appeared at
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`the relevant date (and still appears) on the website See Exhibit B (current) and see Exhibit F
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`(1/27/03 archive). This is true for many of the statements set forth in the request to admit.
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`(Compare Exhibit B and Exhibit F .) QMT attached certain pages ofApplicant’s current website
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`and simply requested admission that they were accurate and correct copies. Applicant denied
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`this as Well. See Exhibit E.
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`QMT also sought Applicant’s admission that the Litigation “was not tried and there was
`
`no final ruling by the court, rather the parties negotiated and entered into a Stipulated and Mutual
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`Final Injunction and Settlement Agreement.” Applicant admitted only that there was negotiation
`
`of a Settlement Agreement and denied the remainder.
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`QMT attached the Settlement Agreement from the Litigation, the Amended Complaint,
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`and one set of discovery responses from the Litigation Applicant wrongfully denied the
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`3 The date chosen in the “Requests” is contemporaneous with the date of Application
`
`10
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`AnnArbor‘_ I G4073_2
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`accuracy of these documents See Exhibit B. As to her earlier discovery response, Applicant
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`stated that “an answer to a request for admission is inadmissible and may not be used against the
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`party in any other proceeding for any purpose under Fed. R. Civ. P 36(b) and the requested
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`admission is therefore denied.” See Exhibit E at 10 Supposed inadmissibility is no basis for
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`denial ofa request to admit which simply seeks to establish the authenticity ofthe document
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`Finally, QMT sought admission that
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`the Southern District of Texas court did not
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`“acknowledge” any exclusive right to the trade dress as Applicant has represented to the Board.
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`Again, without basis, Applicant denied this request. See Exhibit E.
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`D.
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`Applicant Impr'operly Refused to Respond to QMT’s Requests for Production of
`Documents.
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`As she did for QMT’s other written discovery, Applicant improperly responded to the
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`Requests for Production of Documents. Applicant first objected to the “purported” request as
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`“defective,
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`improper and unfair” because it supposedly failed to specify a date or time for
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`production. Applicant states “it is impossible” to say whether inspection can be permitted given
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`this omission Applicant is correct that there is no specific date and time set for the requested
`
`production of documents. Of" course, rather than wait to raise this as a basis for not substantively
`
`responding (a position never before seen by counsel of record in any matter), counsel could have
`
`picked up the phone and asked whether production was intended to be at its office, at its client’s
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`place of business, or elsewhere. This objection is not a valid basis to refuse to provide a
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`substantive response as to the existence of" responsive documents. Moreover, the TBMP states
`
`that the place for production is governed by 37 CFR § 2.l20(d)(2), which in turn provides that
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`the production of documents and things under Rule 34 of the Federal Rules of" Civil Procedure
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`“will be made at the place where the documents and things are usually kept, or where the parties
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`agree, or where and in the manner in which the Trademark Trial and Appeal Board, upon
`
`1 l
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`AnnArbor_l O4078_2
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`

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`motion, orders ” Ihe Manual goes on to state that “parties often extend each other the courtesy
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`of producing the requested documents by copying the documents and forwarding them to the
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`responding party,” TBMP at 400-49.,
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`Here, these parties have a history ofprior discovery QMT is well aware that Applicant’s
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`documents are maintained at its business facility in Austin, Texas and that it was required to
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`travel to Austin, Texas during the Litigation to review documents
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`It was reasonable for QMT to
`
`expect similar arrangements would be made in this case if Applicant’s counsel chose not to
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`“extend .
`
`.
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`the courtesy” contemplated under the IBM?
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`In addition to its general objection regarding the alleged “impossibility” to respond,
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`Applicant made further improper objections With respect to Request No. 2, Applicant refused
`
`to produce documents submitted to or received from the USPTO, claiming that it was “unduly
`
`burdensome” because the documents are already of record. See Exhibit E. at ll, Applicant
`
`improperly cites TBMP 704 03(a) as a basis for its objection, This rule merely provides that an
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`application against which a notice of opposition is filed is of record and ref'erence may be made
`
`to it Of course, this rule does not speak to discoverability of such information. The fact that
`
`either party may cite to matters of record is distinct from QMT’s ability to obtain a complete
`
`copy of" such documents from Applicant Moreover, the rule cited by Applicant specifically
`
`provides that allegations, specimens, documents, exhibits and other materials filed in the USPTO
`
`are not necessarily capable of being cited as evidence, but rather must be identified and
`
`introduced in accordance with the rules during the testimony period
`
`QMT also asked for documents referring or relating to Applicant’s creation and/or
`
`development of the alleged trade dress in the wind chimes. Applicant’s response simply is
`
`l2
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`AnnArbor_104G78_2
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`

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`“N/A.” See Exhibit E. QMT takes this as a response that no such documents exist and an
`
`appropriate order should enter disallowing any such documents or evidence by Applicant
`
`QMT also sought documents “referring or relating to every objection that Applicant has
`
`made to another’s use or registration of trade dress which [she] contends is confusingly similar to
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`the alleged trade dress (other than QMT)” See Exhibit D, Request No. 4. Applicant objected
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`that the request was overly broad, unduly burdensome, subject to confidentiality objections,
`
`attorney and client work product privilege/immunity and not relevant or
`
`likely to lead to
`
`admissible evidence. Id
`
`If Applicant’s contention is that
`
`there are far too many such
`
`communications (presumably therefore making it burdensome), this merely begs the question as
`
`to how Applicant’s supposed trade dress could be registered. As to confidentiality, Applicant
`
`took the initiative to have a protective order entered in this case Applicant has not provided any
`
`privilege log to support its contention of’ attorney work product or the supposedly privileged
`
`materials in response to this request. Lastly, Applicant’s relevance objection is absurd. Third
`
`parties’ use or registration of trade dress which Applicant contends is confusingly similar to her
`
`alleged trade dress may go directly to the heart ofthe registrability issues.
`
`QMT also sought documents supporting Applicant’s contention that the alleged trade
`
`dress is distinctive. Again, Applicant’s response is to state that the request is overly broad and
`
`unduly burdensome. Applicant similarly objected that it is overly broad and unduly burdensome
`
`to provide documents supporting her contention that the alleged trade dress has obtained
`
`secondary meaning Applicant makes the same objection with respect to documents supporting
`
`the contention that the alleged trade dress is non—fi1nctional These issues are at the core ofthis
`
`Opposition.
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`1 3
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`AnnAIbor_l 0407 8_2
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`

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`Finally, QMI simply sought “a copy of‘ the ruling in which a court of competent
`
`jurisdiction ‘acknowledged’ that ESKEW’S Trade Dress Is Legally Protectible ” Applicant has
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`specifically represented to this Board that a court made such a finding. See Exhibit C at '7
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`Applicant’s response: “vague and ambiguous; argumentative; harassing; unduly burdensome ”
`
`See Exhibit E
`
`It is clear from the above (and upon one reading of Applicarrt’s discovery responses) that
`
`Applicant intends to further mislead this Board, fail to comply with its obliga