Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA162012
`ESTTA Tracking number:
`09/11/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91166044
`Defendant
`j2 Global Communications, Inc.
`A. MICHAEL PALIZZI
`MILLER, CANFIELD, PADDOCK & STONE, PLC
`150 W. JEFFERSON, SUITE 2500
`DETROIT, MI 48226
`UNITED STATES
`Motion to Compel Discovery
`Kristen I. Spano
`spano@millercanfield.com
`/Kristen I. Spano/
`09/11/2007
`Motion to Compel Oral Depositions.pdf ( 20 pages )(621607 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PROTUS IP SOLUTIONS, INC.
`
`Opposer
`
`Opposition No. 91166044
`Application Serial No. 76/524,244
`
`v.
`
`j2 GLOBAL COMMUNICATIONS, INC.,
`
`Applicant.
`
`APPLICANT’S MOTION TO COMPEL ORAL DEPOSITIONS
`
`Introduction
`
`Pursuant
`
`to 37 C.F.R. §2.120(c), Applicant, j2 Global Communications, Inc.
`
`(“j2”)
`
`moves the Board for an Order compelling Opposer, Protus IP Solutions, Inc. (“Protus”) to: (1)
`
`produce witnesses designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure for
`
`oral deposition by Applicant at Opposer’s principal place of business in Ottawa, Ontario,
`
`Canada, because good cause exists to take such oral depositions, and (2) produce its Rule
`
`30(b)(6) witnesses for oral deposition by Applicant when such witnesses are present in the
`
`United States.
`
`Pursuant
`
`to TBMP 523.02, Applicant’s counsel has made a good faith effort, by
`
`telephone conference and correspondence with Opposer’s counsel,
`
`to resolve the issues
`
`presented in this Motion, but the parties have been unable to reach an agreement.
`
`Background
`
`Applicant and its predecessor in interest have used the mark EFAX in inter-state
`
`commerce on or in connection with internet faxing and related services for seventeen (17) years.
`
`Considering that the World Wide Web did not even come into existence until the late l980’s to
`
`

`
`early l990’s, Applicant and its predecessor in interest have used the mark EFAX in inter-state
`
`commerce for as long as the intemet market itself has existed. Applicant is the owner of U.S.
`
`Registration No. 1,786,350 for the mark E-FAX, which was filed on July 13, 1992 and has been
`
`registered on the Supplemental Register since April 23, 1993.
`
`On May 6, 2003, Applicant filed an application with the United States Patent and
`
`Trademark Office (“USPTO”) to register the mark EFAX on the Principal Register. Serial No.
`
`76/524,244. Applicant seeks registration of EFAX for “[e]lectronic transmission of facsimile
`
`communications and data; wireless facsimile mail services; facsimile transmission and retrieval
`
`services; providing on-line electronic bulletin boards for transmission of messages among users
`
`concerning facsimile responses.” Id.
`
`On April 28, 2004, Applicant filed a response to an office action in which it argued that
`
`its mark EFAX is not generic or merely descriptive. Applicant also submitted substantial
`
`evidence that
`
`its mark EFAX has acquired distinctiveness or secondary meaning. After
`
`considering Applicant’s
`
`arguments
`
`and
`
`reviewing Applicant’s
`
`evidence of
`
`acquired
`
`distinctiveness, the examining attorney approved Applicant’s mark for publication. Applicant’s
`
`mark EFAX was noticed for publication on May 11, 2005. On May 31, 2005, the mark was
`
`published in the Official Gazette.
`
`Opposer is a Canadian corporation with its principal place of business in Ottawa, Ontario.
`9
`Opposer also provides internet faxing services. Opposer’s “Virtual Fax,’ currently know as
`
`“MyFax,” “allows users to send and receive faxes from email, and the web.” Notice of
`
`Opposition to Serial No. 76/524,244, filed July 27, 2005. On July 27, 2005, Opposer filed an
`
`opposition in which it claims that Applicant’s mark EFAX “is generic and/or descriptive of
`
`Opposer’s services.” Id.
`
`

`
`Under the current schedule, discovery is set to close on October 31, 2007. Applicant has
`
`noticed the oral deposition of a witness or witnesses designated by Opposer under Federal Rules
`
`of Civil Procedure 30(b)(6). Exhibit A. Opposer has taken the position that “TMEP §404.03(b)
`
`and 37 C.F.R. §2.120(b) specifically provide that if a discovery deposition is taken in a foreign
`
`country, it must be taken on written questions. Accordingly, if j2 wishes to depose a Protus
`
`witness who resides in Canada, j2 must do so on written question.” See Exhibit B, 8/8/07 Letter.
`
`Applicant and Opposer are also parties to a patent infringement lawsuit pending in the
`
`United States District Court Central District of California, Case No. 06-02574 DPP. The
`
`depositions of Opposer’s representatives have been noticed for the United States and Canada in
`
`that case, and additional depositions are scheduled in the near future. Thus, Opposer’s witnesses
`
`might be present in the United States for depositions and other purposes in connection with the
`
`pending patent infringement lawsuit. Opposer is also a potential witness in antitrust lawsuits
`
`filed by Integrated Global Concepts, Inc. (“IGC”) and Venali, Inc. (“Venali”) against Applicant,
`
`which are pending in the United States District Court Northern District of Illinois and the United
`
`States District Court Southern District of Florida. Opposer’s witnesses might also be present in
`
`the United States in connection with these cases.
`
`Argument
`
`ll.
`
`Good Cause Exists For Applicant
`Opposer’s Witnesses In Canada
`
`to Take Oral Discovery Depositions of
`
`Pursuant to TMEP §404.03(b) and 37 C.F.R. §2.120 (c)(l), “upon a motion for good
`
`cause,” the Trademark Trial and Appeal Board may order that the deposition of a foreign party
`
`be taken by oral examination. Good cause exists for the Board to order that Applicant may take
`
`the oral deposition of Opposer’s 30(b)(6) witnesses at Opposer’s principal place of business in
`
`Ottawa, Ontario, Canada.
`
`“What constitutes good cause for a motion to take a discovery
`
`

`
`deposition orally must be determined on a case-by—case basis, upon consideration of the
`
`particular facts and circumstances in each situation.” Orion Group, Inc. v. The Orion Ins. Co.
`
`P.L.C.,
`
`1989 WL 274396 *3, 12 U.S.P.Q.2d 1923 (TTAB 1989)
`
`(citing Feed Flavors
`
`Incorporated v. Kemin Industries, Inc., 209 U.S.P.Q. 589 (TTAB 1980)). “In determining such a
`
`motion, the Board weighs the equities, including the advantages of an oral deposition and any
`
`financial hardship that the party to be deposed might suffer if the deposition were taken orally in
`
`the foreign country, and orders that the deposition be taken orally in appropriate cases.” Orion
`
`Group, Inc., 1989 WL 274396 *3 (citing Rice, Recent Changes in the TTAB Discovery Rules, 74
`
`TMR 449, at 450 (1984)).
`
`In Orion, applicant, a foreign entity, sought registration of a mark in the United States,
`
`which opposer challenged. Applicant sought summary judgment based on the affidavit of
`
`applicant's corporate secretary located in England. Opposer argued that it needed to obtain facts
`
`in applicant’s control regarding applicant’s use of the mark in order to respond to the motion.
`
`The requested oral deposition was to take place in England. Applicant's counsel was located in
`
`New York City, and opposer's counsel was located in San Francisco. Orion Group, Inc., 1989
`
`W L 274396 *3. The Board noted that the cost of a round-trip flight from New York to England
`
`was not that much greater than many round trip flights within the United States.
`
`Id. The Board
`
`also considered that the oral deposition would not involve problems of translating to and from a
`
`foreign language.
`
`Id.
`
`In granting opposer’s motion, the Board held that that good cause was
`
`established and that “it would be unjust
`
`in these circumstances to deprive opposer of the
`
`opportunity of obtaining discovery and specifically of confronting and examining the witness by
`
`oral examination.” Id. (citing Societe Nationale Industrielle Aerospatiale, et al. v. US. District
`
`Courtfor the Southern District oflowa, 107 U.S. 2542 (1987)).
`
`

`
`Similar to the applicant in Orion, in the present case, Opposer is a foreign entity that has
`
`requested that the USPTO take action with respect to a U.S. Trademark Application. Opposer
`
`tiled this Opposition requesting that the USPTO recognize its alleged right to use EFAX and
`
`deny Applicant the exclusive right to use the mark in the United States. Opposer bases this
`
`request on its claim that EFAX is a generic term for its own intemet faxing services. Thus, key
`
`facts in this Opposition are whether Opposer uses EFAX generically to describe its services or as
`
`a trademark to identify Applicant’s services, and the extent of such use by Opposer. As in
`
`Orion, Applicant should be afforded the opportunity and the benefits of confronting and
`
`examining Opposer’s witnesses by oral examination on these and other related issues. Oral
`
`examinations will allow Applicant’s counsel to efficiently discover information, to evaluate the
`
`deponent’s demeanor as a witness and to obtain spontaneous answers to discovery questions.
`
`Conversely, depositions upon written questions will likely be a less productive procedure for
`
`obtaining such information and may allow Opposer to formulate its answers in advance with the
`
`assistance of counsel.
`
`Moreover, in the present proceeding, if taken in a foreign country, the requested oral
`
`depositions will take place in Ottawa, Ontario, Canada. Similar to a flight from New York to
`
`England in Orion,
`
`the cost of a round trip flight for Opposer’s attorneys from California to
`
`Canada is not that much greater than many round trip flights within the United States. Opposer’s
`
`attorneys might also already be required to travel to Canada to defend depositions in the pending
`
`patent and antitrust lawsuits referenced above, and the scheduling of the depositions in this
`
`Opposition could be coordinated with the depositions in those cases. Moreover, just as in Orion,
`
`the requested oral depositions will not involve problems of translating to and from a foreign
`
`

`
`language. Thus, the financial burden of oral depositions on Opposer is not significantly greater
`
`than if the depositions were taken by written questions.
`
`II.
`
`Applicant May Also Take Oral Discovery Depositions of Opposer’s Witnesses When
`They Are In the United States
`
`Contrary to Opposer’s assertions, TMEP §404.03(b) and 37 C.F.R. §2.l20(c)(l) do not
`
`require that all depositions of foreign parties be taken upon written questions. Rather, these rules
`
`provide that depositions of foreign parties if taken in a foreign country must be taken upon
`
`written questions unless the parties stipulate or the Board orders that the depositions will be
`
`taken orally. TMEP §404.03(b) and 37 C.F.R. §2.l20 (c)(1) state:
`
`The discovery deposition of a natural person residing in a foreign country who is a
`party or who, at the time set for taking the deposition is an officer, director, or
`managing agent of a party, or a person designated under Rule 30(b)(6) or Rule 3l(a)
`of the Federal Rules of Civil Procedure, shall, if taken in a foreign country, be taken
`in the manner prescribed by §2.2l4 unless the Trademark Trial and Appeal
`Board, upon a motion for good cause, orders or the parties stipulate, that the
`deposition be taken by oral examination.
`
`TMEP §404.03(b) (emphasis added); 37 C.F.R. §2.]20(c)(]) (emphasis added). The rules do not
`
`preclude a party from taking oral discovery depositions of representatives of a foreign domiciled
`
`adverse party at times when such representatives are present in the United States. The TTAB has
`
`expressly held:
`
`would
`As to applicant’s concern that the Board’s interpretation of Rule 2.120
`preclude taking oral discovery depositions of the officers of a foreign domiciled
`opposer even though such officers were physically located in the United States, Rule
`2.l24(d) refers only to the taking of testimony (and by reference under Rule
`2.l20(a)(2), of discovery) in a foreign country. There is nothing in the rules to
`preclude the taking of an oral deposition of a person designated therefore if said
`person is physically located in the United States.
`
`Jonergin Co. Inc. v. Jonergin Vermont Inc.,
`
`1983 WL 51825, 222 U.S.P.Q. 337, 340 (Com’r
`
`Pat. & Trademarks 1983); see also Rhone-Poulenc Industries v. GulfOz'l Corp, 198 WL 21200,
`
`198 U.S.P.Q. 372, 374 (TTAB 1978).
`
`

`
`Furthermore, 37 C.F.R. §2.120(c)(2) provides:
`
`Whenever a foreign party is or will be, during a time set for discovery, present within
`the United States or any territory which is under the control and jurisdiction of the
`United States, such party may be deposed by oral examination upon notice by the
`party seeking discovery. Whenever a foreign party has or will have, during a time set
`for discovery, an officer, director, managing agent, or other person who consents to
`testify on its behalf, present within the United States or any territory which is under
`the control and jurisdiction of the United States, such officer, director, managing
`agent, or other person which consents to testify in its behalf may be deposed by oral
`examination upon notice by the party seeking discovery. The party seeking discovery
`may have one or more officers, directors, managing agents or other persons which
`consent to testify on behalf of the adverse party, designated under Rule 30(b)(6) of
`the Federal Rules of Civil Procedure.
`The deposition of a person under this
`paragraph shall be taken in the Federal judicial district where the witness resides or is
`regularly employed, or, if the witness neither resides nor is regularly employed in a
`Federal judicial district, where the witness is at the time of the deposition.
`
`37 C.F.R. §2.]20(c)(2).
`
`Thus, while the Board will not compel a foreign party to travel to the United States for an
`
`oral deposition, trademark rules permit oral depositions of adverse foreign party deponents in the
`
`United States when the deponents are located in the United States. During the discovery period
`
`of this Opposition, Opposer’s representatives may be physically located in the United States for
`
`depositions or other reasons in connection with the patent lawsuit pending between Opposer and
`
`Applicant. Opposer might also be present in the United States in connection with the pending
`
`antitrust lawsuits between Applicant and IGC and Venali. If Opposer’s witnesses will be in the
`
`United States, Applicant is entitled to notice and take their oral depositions in the United States
`
`at those times.
`
`Conclusion
`
`For the reasons set forth above, Applicant, j2 Global Communications, Inc. respectfully
`
`requests that the Panel enter an Order: (1) compelling Opposer, Protus IP Solutions, Inc.
`
`to
`
`produce its Rule 30(b)(6) witnesses for oral deposition by Applicant at Opposer’s principal place
`
`

`
`of business in Ottawa, Ontario, Canada; (2) compelling Opposer to produce witnesses designated
`
`under Rule 30(b)(6) of the Federal Rules of Civil Procedure for oral deposition by Applicant
`
`when such witnesses are present in the United States; and (3) awarding Applicant any further
`
`relief the Board deems appropriate.
`
`RESPECTFULLY SUBMITTED
`
`3
`
`A. Gaffin (P31406)
`A. Michael Palizzi (P47262)
`Kristen I. Spano (P60370)
`Attomeys for Applicant
`MILLER, CANFIELD, PADDOCK AND STONE, PLC
`
`Dated: September 11, 2007
`l)l£{_ll3:2XX4437.l\l14433-OOOI8
`
`150 W. Jefferson, Ste. 2500
`
`Detroit, MI 48226
`
`(313) 963-6420
`
`2/
`
`w
`
`By:‘
`
`
`
`

`
`EXHIBIT A
`
`

`
`United States Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`PO. Box 1451
`
`Alexandria, VA 22313—145l
`
`PROTUS IP SOLUTIONS, INC.
`
`Ol3l30ser
`
`V .
`
`j2 GLOBAL COMMUNICATIONS, INC.,
`
`Applicant.
`
`Opposition No. 91166044
`Application Serial No. 76/524,244
`
`RE-NOTICE OF TAQING RULE 30§bl§6l DEPOSITION
`
`j2 Global Communications, Inc., by and through its attorneys, Miller, Canfield, Paddock and
`
`Stone, P.L.C., will take the deposition of PROTUS IP SOLUTIONS, INC., under oath, before a notary
`
`public and duly authorized reporter on Tuesday, October 2, 2007, at 9:00 a.m., at the offices of Protus [P
`
`Solutions, lnc., 2379 Holly Lane, Suite 210, Ottawa, Ontario, Canada KlV7P2, for the purpose of use as
`
`evidence in the within proceeding and for all other purposes permitted.
`
`Pursuant
`
`to Fed.R.Civ.P.30(b)(6), PROTUS IP SOLUTIONS, INC.
`
`is requested to produce
`
`persons with knowledge of the following subjects:
`
`1 .
`
`2.
`
`Each use of EFAX or similar designation by Opposer;
`
`Each use of EFAX or similar designation by third parties;
`
`Opposer’s use of EFAX in connection with the sale or offer for sale of Opposer’s
`products or services;
`
`Opposer’s first knowledge of the use of EFAX by Applicant;
`
`Opposer’s knowledge of each entity which uses EFAX in connection with the promotion
`or sale of its goods or services,
`
`(5.
`
`The basis for Opposer’s claim that EFAX as used in connection with Applicant’s services
`is generic or descriptive;
`
`
`
`AMIILEFIC;.¢NFlEl_"9f«DD<)Cl‘-’4N']SlONEPt1,
`
`
`
`
`
`

`
`7.
`
`8.
`
`The basis for Opposer’s claim that EFAX is generic and/or descriptive of Opposer’s
`services;
`
`The basis for Opposer’s contention that Applicant did not meet its evidentiary burden in
`claiming that its mark EFAX acquired distinctiveness.
`
`You may appear at the time and place designated for purposes of examination of the witness.
`
`The deposition will continue from day to day until completed.
`
`Respectfully submitted,
`
`MILLER, CANFIELD, PADDOCK AND STONE, P.L.C.
`Richard A. Gaffin (P34106)
`A. Michael Palizzi (P47262)
`Kristen I. Spano (P60370)
`
` . Spano
`
`Attorneys for Applicant
`150 West Jefferson, Suite 2500
`Detroit, MI 48226
`(313) 963-7645
`
`Dated: September 10, 2007
`
`l'>li\
`
`lll 2X8‘)7lX.l‘.l l4433—00Ol8
`
`
`
`MllLl:RCFNFEL?‘PADDCC*<ANTSTONEPL1‘V
`
`
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PROTUS IP SOLUTIONS, INC.
`
`Opposer
`
`Opposition No. 91166044
`Application Serial No. 76/524,244
`
`\ .
`
`_j2 GLOBAL COMMUNICATIONS, INC,
`
`, ,---_ _
`
`PROOF OF SERVICE
`
`S'l‘.»\'1‘E OF MICHIGAN)
`
`I SS
`
`COUNTY OF WAYNE)
`
`SANDRA L. BALDWIN, being first duly sworn, deposes and says that on the 10”‘ day of
`
`September, 2007, she served a copy of Re-Notice of Taking Rule 30(b)(6) Deposition and this
`
`Proof of Service upon:
`
`Thomas H. Zellerbach, Esq.
`Orrick, Herrington & Sutcliffe LLP
`1000 Marsh Road
`Menlo Park, CA 94025
`
`by placing the same in an envelope plainly addressed to the above named person and depositing
`
`said envelope in a United States mail receptacle located at 150 W. Jefferson Avenue, Detroit,
`
`Michigan, and also service via email.
`
`.‘§a,€'¢//(L-’u~/’
`
`SANDRA L. BALDWIN
`
`

`
`Subscribed and sworn to before me
`
`<)?I§e [ember 10, 2,007‘
`"
`
`
`Acting in Wayne County, Michigan
`My commission expires: 5/27/11
`
`)|iI 1|3:2(y‘)48(>l.|\l 14433-00018
`
`

`
`EXHIBIT B
`
`

`
`08/08/2007 16:54 FAX
`
`ORRICK SIIICON VALLEY
`
`001/004
`
`
`
`0 R R i C K
`
`FAX TRANSMISSION
`
`BATE
`
`2/6/06
`
`:Ro.M
`name
`
`[91
`
`Thomas H. Zellerbach
`
`(650) 614-7446
`
`ORRICK, HERRINGTON E SUTCLIFFE LLF‘
`1000 MARSH ROAD
`MENLO PARK, CALIFORNIA 94025
`TEL 650-614-7400
`FAX 650-614-7401
`
`WWW.ORRlCK.COM
`
`No. or PAGES
`(INCLUDING COVER SHEET)
`
`,
`4
`
`I
`name
`company//I'rm
`tel
`fax
`Richard A. Gaffin
`Miller, Canficld, Paddock
`616-776-6305
`616-776-6322
`and Stone, PLC
`
`A. Mi<;h21c:l Palizzi, Esq.
`
`Kristen Isaacson Spam)
`
`Miller, Canfield, Paddock
`and Stone, PLC
`Miller, Canfield, Paddock
`and Stone, P.L.C.
`
`313- 496-7645
`
`313-496-8454
`
`313-496-7562
`
`313-496-8454
`
`RE
`
`Pro///I’ IP S0/zzfimzy, Inc‘. 1/. ]2G/oba/ C027m2zmz'mti0r1I‘, Im".
`
`AAESSAGE
`PI,E.«\SE SEE ATTACHED.
`
`12-M-A
`
`16738-2002
`
`IF YOU DO NOT RECEIVE ALL PAGES, PLEASE CALL ELIZABETH KIM AT 650-614-7409 AS SOON AS
`POSSIBLE.
`
`notice to recipient
`IT MAY BE PROTECTED
`THE INFORMATION CONTAINED IN THIS FACSIMILE TRANSMISSION 25 INTENDED TO BE SENT ONLY To THE STATED ADDREssEE OF THE TRANSM|SSl0N.
`FROM UNAUTHORlZED USE OR DISSEMINATION BY THE ATTORNEY-CUENT PRIVILEGE, THE ATTORNEY WORK~PRODUCT DOCTRINE, ORANY OTHER APPLICABLE PRIVILEGE.
`IF You
`ARE NOT THE STATED ADDRESSEE, YDUR RECEIPT OF THIS TRANSMISSION wAs UNINTENDED AND INADVERTENT, AND YOU ARE HEREBY NOTIFIED THAT ANY REVIEW, use,
`DISSEMINATION, DISTRIBUTION, OR COPYING or THIS COMMUNICATION IS STRICTLY PROHIBITED. YOU ARE ALSO ASKED TO NOTIFY us WMEDMTELY BY TELEPHONE AND TO
`RETURN THE ORIGINAL DOCUMENT TO us IMMEDIATELY BY MAIL AT THE ADDRESS ABOVE. THANK You IN ADVANCE FOR YOUR COOPERATION.
`1)I‘)(“.SS\’1:~'1-46462.1
`
`

`
`08/08/2007 16:55 FAX
`
`ORRICK SI] ICON VALLEY
`
`002/004
`
`
`
`;\u1:|_15[ 8,
`‘
`
`VIA FACSIM/LE AND U.S. MAIL
`
`Richard A. Gaffin
`.\liller, Canfield, Paddock and Stone, P.L.C.
`‘)9 Monroe Avenue, N.\X7., Suite 1200
`Grand Rapids, Michigan 49503
`
`Thomas H. Zellerbach
`(650) 614-7446
`tzellerbach@orrick.com
`
`Re
`
`Protus ll’ Solutions, Inc. v. j?. Global Communications, Inc.
`Opposition No; 91166044
`
`Dear Rick:
`
`I write in response to your letter datedjuly 17, 2007. A few issues discussed during our phone
`conference on july 11, 2007 were miscliaracterized in your letter, and we clarify Protus’ position
`l;>el()\\'.
`
`The primary purpose of ourjuly 11 call was to meet and confer over j2's continuing failure to
`produce documents responsive to numerous document requests or to provide information
`responsive to various interrogatories. (During the call, you also raised issues about Protus' discovery
`responses, noting that you had not given us advance notice you would be raising those issues in the
`call and recognizing that we would need to get back to you.) In our call and yourjuly 17 letter, you
`stated that you would discuss outstanding issues with your client, but we still have not received
`suppleincntal responses and documents with respect to several of the requests discussed below.
`
`j_2_'s Discovery Responses
`
`1. Redacnons: We agreed that )2 could redact the pricing information from contracts except
`where such information indicates free Y". paid services but requested, and i2 agreed to
`provide, a redaction log specifying what information was redacted. Protus acltnowledges
`receipt of ';2’s redaction log, sent with a cover letter datedjuly 20, 2007.
`
`The redaction log indicates that )2 redacted more than pricing information. For example,
`the “Offer Code” and “Offer Code Description” have been redacted from many documents
`described as a “Corporate Profile” and “Credit Application.” This information does not
`does not reveal pricing, and the reductions are inconsistent with i2’s statement that it
`redacted pricing information. The “Offer Code” and “Offer Code Description” are
`reasonably calculated to lead to the discovery of admissible information. For example,
`documents from which the Offer Code Description is not redacted reveal the description to
`
`‘x HS \V'c.<t:2(;I)27'.‘8>%7..'3
`
`

`
`08/08/2007 16:55 FAX
`
`ORRICK SILICON VALLEY
`
`003/004
`
`i“”""i
`
`1
`i \
`
`ii
`
`._...V
`“«1lClr<
`
`Richard A. Gaffin
`
`August 8, 2006
`Page 2
`
`be “EF:\X PLUS corporate.” This description is highly relevant and necessary for Protus to
`determine what term, e.g. EFAX PLUS, is used by i2 and whether the document refers to
`the mark at issue in these proceedings. Protus requests that '12 provide unredacted copies of
`these documents without further delay.
`
`Protus obviouslv reserves its ri ht to challen c other as ects of the ade uacv of ‘2’s
`I
`.
`.
`Q
`.
`E
`p
`P
`.
`Cl
`.
`3
`production and redaction log once it has completed its review of the documents logged.
`
`[Q
`
`3.
`
`lnterrogatot_:y Nil: j2’s failure to provide the addresses of the entities identified in this
`response prejudices Protus’ ability to investigate whether or not i2 is entitled to the priority
`date claimed in its applications in connection with all of the goods and services listed.
`Accordingly, if i2 fails to provide the information, as ordered by the Board, Prorus reserves
`its right to seek any and all appropriate remedies.
`
`lnterrogatorv No. 27: \‘("e look forward to i2’s prompt response to this interrogatory, so that
`Protus can assess whether producing a list of all licensees is “unduly burdensome” as i2
`contends.
`
`ort lo_s AND Document
`Document Re uest Nos. 67-70 tech ical and c stomcr su
`
` : Document Request Nos. 4, 5, and 6 were served on November 22,
`2005, and the others were served on February 17, 2006. Twice I have communicated to you
`Protus’ concern that )2 is not conducting a diligent search for responsive documents and
`have requested your firm's intervention, and still we have yet to receive responsive
`documents.
`")2 has had more than ample time to search for and to produce responsive
`documents, and Protus will have no choice but to seek relief from the Board if we do not
`receive immediate assurance that the documents will be produced forthwith.
`
`i2’s
`Moreover, j2’s apparent attempt to excuse its own belated production is improper.
`obligation to respond to discovery requests is not contingent upon Protus’ production.
`Nevertheless, Proms identified documents in response to j2’s lnterrogatory Nos. 3 [sic 24]
`and S [sic 26] in a timely matter, and will supplement its responses to the extent that there
`exists additional responsive information.
`
`U1
`
`lnrerrogatory Nos. 39-41: Please let us know when we can expect to receive a complete
`response to these interrogatories.
`
`6. Trademark Usage Policies:
`all responsive documents.
`
`‘We look forward to your confirmation whether i2 has produced
`
`(‘I lb \‘£tst 2m)37TH87.2
`
`

`
`08/08/2007 16:56 FAX
`
`ORRICK SILICON VALLEY
`
`004/004
`
`O R R l C K
`
`Richattl .~\. Gaffin
`
`_\ugust 8, 2006
`l’:rge 3
`
`l_’_m tus’ DisCo\~'e1_”y Responses
`
`Interrogator-y No. 2 lsic 23]: Protus will supplement its response to the extent that it has
`additional responsive information.
`r-
`
`
`
`
`
`' _
`..
`.
`_'..
`sic 26 6
`lntetro ato _' Nos. 3 sic 74
`
`Protus agrees to remove the language “at least” from its responses and to supplement its
`responses accordingly.
`
`1.
`
`E0
`
`3. Dggiirnent Reguest Nos. 5 sic 22| and 6 lsic 23l: Consistent with the Board’s order on
`Protus’ Motion to Compel, Protus will supplement its response and produce responsive
`documents in which the word EFAX or any derivative thereof appears in connection with
`the products and services identified in the application at issue. At no time did we agree that
`Proms‘ original limitation was "improper."
`
`Protus intends to produce supplemental discovery responses addressing these issues within the next
`two weeks.
`
`\‘l-'itl1 respect to a deposition of Protus, TMEP 404.03(b) and 37 CFR § 2.l20(b) specifically
`provide that if a discovery deposition is taken in a foreign country, it must be taken on written
`questions. Accordingly, ifi2 wishes to depose a Protus witness who resides in Canada, 12 must do
`st) on written question, consistent with the rules.
`
`l:’l<.~asc do not hesitate to contact me with any questions.
`
`Sincerely,
`
`'5
`,4‘-’
`('4)
`
`
`Thomas H. Zellefh-ac
`
`ilfl lZ:ek
`
`cc
`
`A. Michael Palizzi (Via fax)
`Kristen lsaacson Spano (via fax)
`
`17!»? ‘D; c:;{:2(;U277R8'7,2
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PROTUS IP SOLUTIONS, INC.
`
`Opposer
`
`Opposition No. 91166044
`Application Serial No. 76/524,244
`
`V.
`
`j.2 GLOBAL COMMUNICATIONS, INC.,
`
`Applicant.
`
`PROOF OF SERVICE
`
`STATE OF MICHIGAN)
`
`' ss
`COUNTY OF WAYNE) '
`
`SANDRA L. BALDWIN, being first duly sworn, deposes and says that on the 11”" day of
`
`September, 2007, she served a copy of Applicant’s Motion to Compel Oral Depositions and this
`
`Proofof Service upon:
`
`Thomas H. Zellerbach, Esq.
`Orrick, Herrington & Sutcliffe LLP
`1000 Marsh Road
`
`Menlo Park. CA 94025
`
`by placing the same in an envelope plainly addressed to the above named person and depositing
`
`said envelope in a United States mail receptacle located at 150 W. Jefferson Avenue, Detroit,
`
`\/Iichigan, and also service via email.
`
`<~%;~:I—>(:)/_,L/Kw!/~’£‘(_.£l
`SANDRA L. BALDWIN
`
`.
`
`\
`
`4..
`~
`/$CL/441(1)?/\,.
`
`

`
`Subscribed and sworn to before me
`
`on September 11, 2007.
`
`
`
`
` JEFF E L. WIDEN
`
`Notary Public, St. Clair County, Michigan
`Acting in Wayne County, Michigan
`My commission expires: 6/18/14
`
`DH IB‘2()9486l
`
`l‘\H4433-00018