Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA324359
`ESTTA Tracking number:
`12/28/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91169312
`Plaintiff
`Swatch AG
`JESS M. COLLEN
`COLLEN IP
`The Holyoke-Manhattan Bldg., 80 South Highland Avenue
`Ossining, NY 10562
`UNITED STATES
`Plaintiff's Notice of Reliance
`Thomas P. Gulick
`tgulick@collenip.com, docket@collenip.com, egarvey@collenip.com
`/Thomas P. Gulick/
`12/28/2009
`98885 Redacted second notice of reliance.pdf ( 119 pages )(7932673 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`______________________________________________________X
`
`Opposition No.: 91 169312
`Mark: SWAP
`
`XX
`
`X
`X
`
`X X
`
`X
`X
`
`Swatch S.A. (Swatch AG) (Swatch Ltd.)
`
`Opposer,
`
`’V.
`
`Amy T. Bernard and
`Beehive Wholesale LLC
`
`X
`Applicant.
`______________________________________________________X
`
`OPPOSER'S SECOND NOTICE OF RELIANCE
`
`Notice is hereby given that pursuant to 37 C.F.R. §2.l2l, Opposer, Swatch S.A.,
`
`offers into evidence, and will rely upon the following documents and materials
`
`identified below.
`
`(a).
`
`United States Federal Trademark Application
`
`Opposer relies on the following Federal Trademark Application Serial No.
`
`78/850,063 pursuant to 37 C.F.R. § 2.l22(e) as an example of the descriptive nature of
`
`the term “swap” in association with watches. Said copy of the application is issued by
`
`the U.S. Patent and Trademark Office is attached hereto as Exhibit A.
`
`(b).
`
`Printed Publications and Official Records
`
`The following official records reference the issues raised by Applicant and its
`
`reliance on the discovery deposition of a third party. Opposer will rely on the following
`
`official records pursuant to 37 C.F.R. § 2.l22(e), copies of the order and hearing
`
`transcript are attached hereto as Exhibits B-C:
`
`
`
`

`
`Exhibit B
`
`January 23, 2007 — Case No. 06-4242 (D. N.J.) — hearing transcript — The
`
`Swatch Group (U.S.), Inc., V. Bernard.
`
`Exhibit C
`
`March 20, 2007 — Case No. 06-4242 (D. NJ.) — Order — In re: Application
`
`Pursuant to Rule 45 of The Swatch Group (U.S.), Inc. to Quash a
`
`Subpoena, Etc.
`
`The following official records reference Applicant’s involvement in another
`
`trademark infringement action. Opposer will rely on the following official records
`
`pursuant to 37 C.F.R. § 2.122(e).
`
`Exhibit D
`
`November 24, 2009 — Case No. 422009 cv 204 (E.D. N.C.) — Complaint —
`
`The Mainstreet Collection, Inc. V. Beehive Wholesale, LLC and
`
`corresponding PACER docket;
`
`(c).
`
`Discovery depositions of Amy Bernard and Brent Bernard 7
`
`Opposer will rely on the discovery depositions of Amy Bernard and Brent
`
`Bernard and exhibits thereto pursuant to 37 C.F.R. § 2.120(j)(3)(i). These materials
`
`may be relied on for impeaclnnent purposes. These depositions and exhibits contain
`
`material highly confidential under the protective order.
`
`Exhibit E
`
`September 7, 2006 discovery deposition of Amy Bernard
`
`Exhibit F
`
`September 7, 2006 discovery deposition of Brent Bernard
`
`
`
`

`
`Exhibit G
`
`Exhibits for discovery depositions of Amy and Brent Bernard
`
`(d)
`
`Declaration Of Edith Garg and Exhibit of Orange County Creations
`
`Website on December 28 2009 s
`
`Opposer will rely on the Declaration of Edith Garvey and Exhibitto show that on
`December 28, 2009, the exhibit shown was how the website
`www.occreations.net/build_a watch swap_faces appeared on that date.
`
`Exhibit H
`
`Declaration of Edith Garvey and Exhibit of Orange County Creations
`Website on December 28, 2009.
`
`(e)
`
`Corresmmdence of Op1m_ser to Applicant on November 16, 2006 including
`Supplemental Interrpggto_r1 Response to Interrogatory 21.
`
`Opposer will rely on the November 16, 2006 correspondence to Applicant’s
`counsel including portions of Opposer’s Supplemental Interrogatory Response to
`Interrogatory 21 to show Applicant was on notice of those individuals listed in the
`response as of that date.
`
`Exhibit I
`
`November 16, 2006 correspondence to Applicant’s counsel and portions
`of the Opposer’s Supplemental Interrogatory Response to Applicant’s
`Interrogatory No. 21.
`
`(1) Documents showing use of the word “swap” for interchangeable watches in the
`watch industry
`
`Opposer will rely on the documents in Exhibit J to show how other retailers of
`watch products use the word “swap” for interchangeable watches.
`
`Exhibit J
`
`Use of the term “swap” for the sale of interchangeable watches by Puma
`on Ebay
`
`Exhibit K
`
`Use of the term “swap” for the sale of interchangeable watches by Puma
`on Amazon.com
`
`
`
`

`
`4 Exhibit L
`
`Use of the term “sWap” for the sale of interchangeable watches by Orange
`County Creations
`
`Respectfully submitted
`for Opposer,
`
`By:
`
`/2
`
`Jess M. Collen
`
`Thomas P. Gulick
`
`COLLEN [P
`
`The Holyoke-Manhattan Building
`80 South Highland Avenue
`Ossining, New York 10562
`Tel: (914) 941-5668
`Fax: (914) 941-6091
`
`Attorneysfor Opposer
`
`JMC/TPG/eg
`Dated December 28, 2009
`
`COLLEN IP
`
`THE HOLYOKE-MANHATTAN BUILDING
`80 SOUTH HIGHLAND AVENUE
`
`OSSINING, NEW YORK, 10562
`
`SHOULD ANY OTHER FEE BE REQUIRED, THE PATENT AND TRADEMARK
`OFFICE IS HEREBY REQUESTED TO CHARGE SUCH FEE TO OUR” DEPOSIT
`ACCOUNT 03-2465.
`
`I HEREBY CERTIFY THAT THIS CORRESPONDENCE IS BEING FILED
`ELECTRONICALLY WITH THE UNITED STATE PATENT AND TRADEMARK
`OFFICE.
`
`COLLENJP
`
`BY:
`
`DATE December 28, 2009
`
`

`
`CERTIFICATE OF SERVICE
`
`I, Edith Garvey, hereby certify that a copy of the foregoing Opposer’s Second
`
`Notice of Reliance and Exhibits thereto, has been served on counsel for Applicant, at the
`
`following address:
`
`Mr. William J. Utermohlen
`
`Oliff & Berridge, PLC
`277 South Washington Street
`Suite 500
`
`Alexandria, VA 22314
`
`Said service having taken place Via First Class Mail, this 28th of December, 2009.
`
`

`
`EXHIBIT
`
`A
`
`
`
`

`
`Latest Status Info
`
`Page 1 of 3
`
`Thank you for your request. Here are the latest results from the IA_R_I:L_yy_eb,,s.eryer_.
`
`This page was generated by the TARR system on 2009- 12-24 13:04:00 ET
`
`Serial Number: 78850063 A§§,ig_11_m‘egt lnfogrnatign
`
`Trademark _[_)m9Mefl1}_rnent_Retri<_:y“\,(_al
`
`Registration Number: (NOT AVAILABLE)
`
`Mark
`
`
`
`(words only): SW SWAPPWATCH
`
`Standard Character claim: No
`
`Current Status: Further action on the application has been suspended.
`
`Date of Status: 2009-l 1-18
`
`Filing Date: 2006-03-30
`
`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE I06
`
`Attorney Assigned:
`NELSON EDWARD H
`
`Current Location: L60 -TMEG Law Office 106
`
`Date In Location: 2009-05-07
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. Pera Group LLC
`
`Address:
`
`Pera Group LLC
`220i Anderson Circle
`
`
`
`

`
`Latest Status Info
`
`Page 2 Of:
`
`Stevensville, MI 49127
`United States
`Legal Entity Type: Limited Liability Company
`State or Country Where Organized: Michigan
`Phone Number: 773-331-3813
`
`WM, .c~........«.n_.~.u.wMmMMw.,.,..iWm.M,.M.s._i.«~.~...¢.,.~.M..~2.w.c..,,,,.,,.,.......i...,,..,...,..~..w..\»W.«,.......n..wd.m.W.~....4....4..m~sw.M...iw..,.m..:»....m..~c.......M,(,........,,..A.-41-,.‘..w,.MW,,M,.,..ws.Mu.v..,w..,».....W,.W.,..W.._.i..,(,.....«”y.,... IA...W,...W,.,..,..
`
`GOODS AND/OR SERVICES
`
`International Class: 014
`Class Status: Active
`Watches
`
`Basis: 1(b)
`First Use Date: (DATE NOT AVAILABLE)
`First Use in Commerce Date: (DATE NOT AVAILABLE)
`
`‘I/*1 ,..s....,-,.s..,,~.i..»_..-.,,...i,,.W.....M(,.«,..,.,.,.ww,M...MM.,.MWN,.-_.....n,,i\
`
`/........___...¢.dd.u,..,.i.. .......__.e,..N.w~.~,......,.,i.., MA
`
`Muwvu . .A..,,.....~. » _. C W..,..,,...,.....w...,,..M.W....n...,....M...i...i.i.,,.,,fl..mC.,#._.,.....n....._-........u........,.4M..,....,a...
`
`ADDITIONAL INFORNIATION
`,_,,..(..,W..»..i....,r;.i.,..».s,.i.M.e»,.,.4~....\i .\....i.,..wM.w.,..i.....Ms....:.,.,..i.....w,Mw...,....~...,W......,,.: “......~...~...~....m..s,:,..,.....,........i.......M“..... :..,.,Wm.».,..~»«.m,.i.««,w.vM.W..,w«_~.:.m.m«_.w,w..\,.....«,..,.,,........~.M.m»«w.«».,w..W_.,.._.,w.A...~,.w.. >~»«w<-<Aw\~A\v,v‘«9*>WA
`Description of Mark: The mark consists in part of male and female biological symbols that are interconnected
`and superimposed over the letters SW
`
`Design Search Code(s):
`24.17.02 — Biological symbols (male and female)
`
`(NOT AVAILABLE)
`
`MADRID PROTOCOL INFORMATION
`
`.Ln,..M.......s.,..w».....»...s.«.....a,»...:..,v.~.«.e~...,d,m.w....s.W..,....m-V...s...¢.....t.........../A.......,...WV........o.m........,..».........r......,....me.......W.....m...,..wW.....«r..,,....<:W.......,...~».a-.......»,...i.....,.......W.m.».......«,c..~M.:..M_««....ww~m..,.»...e.w..wv_~‘.._,m.»
`
`PROSECUTION HISTORY
`.”_.W,i...N........s.<.~A,....-......s.....,. W..r..:..~....a..w.....»M.«.~~..~.(,,:s..m.......a....m..... w,.e,....w~m..m....~........e...i.......~«<.»»,.»,«V,,. S...i.....~.,..«.4.mm.,,.e....»«:«».~,...........~.......,.x..._,e.Kw.m.«.«w.-w..~.m.<..H....~.w..,m..,‘:.Q..y,....~,,,..W,,¢,,....(.x.i..W,M...e . ..V.w.....,..Mw..N..~........W......‘wm M» »-..«w.»-
`NOTE: To view any document referenced below, click on the link to "Trademark Document Retrieval"
`shown near the top of this page.
`
`2009-I l-I8 — Report Completed Suspension Check Case Still Suspended
`
`2009-05-07 - Report Completed Suspension Check Case Still Suspended
`
`2008-! I-04 - Report Completed Suspension Check Case Still Suspended
`
`2008-05-02 - Report Completed Suspension Check Case Still Suspended
`2007-! I-01 - Report Completed Suspension Check Case Still Suspended
`
`2007-05-01 - LETTER OF SUSPENSION E-MAILED
`
`2007-05-01 — Suspension Letter Written
`
`2007-04-17 - Amendment From Applicant Entered
`
`
`
`

`
`Latest Status Info
`
`P386 3 Of?
`
`2007-04—l 7 - Communication received from applicant
`
`2007-04-I7 — Assigned To LIE
`
`2007-03-I3 — FAX RECEIVED
`
`2006-09-I3 - Non-final action e-mailed
`
`2006-09-13 - "Non-Final Action Written
`
`2006-09-I 3 - Assigned To Examiner
`
`2006-04-05 - Notice OI‘ Design Search Code Mailed
`
`2006-04-04 - New Application Entered In Tram
`
`ATTORNEY/CORRESPONDENT INFORMATION
`
`Correspondent
`PERA GROUP LLC
`2201 ANDERSON CIR
`
`STEVEN SVILLE, MI 49127-9777
`Phone N umber: 773-331-3813
`
`.,.,..\\\..,M....,e,,,.w.,4.Mc,..W,M..,.e,...w.A.»..,......IN.”W . ,,...,..e..M......,.w.w......w.\t,W.
`
`Iv\\\ll\\¢VV|V~IvV\‘¢VVV~/rvv»\»A\/) ...w.....we..c.,.,.t.,w..c,x....w.wM.,,.i.i.......e..,.....V,,~mm e..c.m.«...,.«.-..W..W.V.,.‘....,...W.....M.a...., ,, rA\(II§&—¢A'«{\‘y%*Ah’)#~V/*MN‘\4'V\‘I~hhhNfiIv\‘hNnv\HAVHA
`
`,, fl .,.,,.....~.~..\W.N......,,..,..,,..........m.W,..,...e
`
`
`
`

`
`EXHIBIT
`
`B
`
`

`
`.
`
`0
`
`1
`
`Ix)
`
`3
`
`;
`4‘
`f
`:5
`
`THE SWATCH GROUP (U.S.},
`INc.,
`
`Movant,
`
`vs.
`
`6 ,
`’ AMY BERNARD,
`
`7
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`_
`. Case No. 06-4242
`.
`
`. Newark, New Jersey
`.
`January 23, 2007
`
`:
`
`8
`
`9,
`i
`
`10
`
`Movant.
`
`TRANSCRIPT OF HEARING
`BEFORE THE HONORABLE CLAIRE C. CECCHI
`UNITED STATES MAGISTRATE JUDGE
`
`ll ;APPEARANCES:
`
`For the Movant The
`Swatch Group
`(U.S.),
`Inc.:
`
`MATTHEW WAGNER, ESQ.
`Collen IP, P.C.
`The Ho1yoke—Manhattan Building
`80 South Highland Avenue
`Town of Ossining, Westchester County,
`NY 10562 USA
`
`PETER E. MORAN, ESQ.
`Dillon, Bicar & Luther, LLC
`55 Maple Avenue
`Morristown, NJ 07963
`
`12
`
`13,
`
`14
`
`15;
`‘
`
`16
`
`‘
`17%
`
`189
`
`i For the Movant Amy
`19' Bernard:
`205
`
`JOHN RALPH HOLSINGER, ESQ.
`Two University Plaza, Suite 300
`Hackensack, NJ 07601
`
`§
`21‘
`
`22
`
`i
`23;
`
`24,
`,
`25,.
`
`WILLIAM J. UTERMOHLEN, ESQ.
`Oliff & Berridge, PLC
`277 South Washington Street,
`Suite 500
`Alexandria, Virginia 22314
`
`.
`Q
`
`I
`I
`
`'
`
`‘
`
`E
`;
`1
`
`_
`
`9
`
`
`
`

`
`KING TRANSCRIPTION SERVICES
`65 Willowbrook Boulevard
`
`Wayne, New Jersey 07470
`(973) 237-6080
`
`1 ‘
`
`§Audio Operator:
`Transcription Service;
`
`1 I
`
`3)
`
`Proceedings recorded by electronic sound recording;
`transcript produced by transcription service.
`
`i
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`17
`
`18
`
`19
`
`20
`
`

`
`N
`
`I
`
`E
`
`2
`
`E
`3%?
`wroceed
`Ling
`
`Proceedings
`
`12
`
`13
`
`1.4
`
`15
`
`16
`
`17
`
`18
`
`
`

`
`“
`
`1 I
`2
`
`3 i
`4 j
`5 E
`
`(Commencement of proceedings)
`
`THE COURT: All right. Good afternoon, everyone.
`UNIDENTIFIED SPEAKERS: Good afternoon, Your Honor.
`THE COURT: All right. we're here today on the
`
`6 ienforcement of a subpoena.
`7 2
`Can I have your appearances, please?
`
`8
`
`MR. WAGNER: Certainly. Good afternoon,
`
`9; Your Honor, Matthew Wagner,
`
`from the firm Collen IP, on
`
`10 behalf of the Swatch Group,
`
`(U.s.),
`
`Inc.
`
`11
`
`12
`
`THE COURT: Okay.
`
`MR. MORAN: Peter Moran, Dillon, Bitar & Luther,
`
`Q
`
`13 ‘Morristown, New Jersey, also on behalf of the movant Swatch
`
`
`14 Group (U.S.)
`Inc. Mr. Wagner has been admitted pro hac vice.
`15 :
`THE COURT: Very good.
`
`16
`
`MR. HOLSINGER: Your Honor, my name is John
`
`17 Holsinger.
`
`I'm from Hackensack, New Jersey.
`
`And we are here
`
`18 'for Amy Bernard.
`
`And I will
`
`introduce to you Bill
`
`19 Utermohlen,
`
`from Alexandria, Virginia, who has been also
`
`20‘ admitted pro hac vice.
`
`21 3
`
`22 i
`
`THE COURT: Okay.
`
`Thank you very much.
`
`All right.
`
`Now -— and let me just put for the
`
`235 record,
`
`this is No. 06-4242.
`
`It's Swatch —~ Swatch Group
`
`24 _matter.
`
`25 E
`
`All right. Before we get
`
`to argument on it, I'd
`
`E
`
`;
`
`i
`;
`
`.
`
`iI
`
`b
`
`,
`
`
`
`

`
`1* r'‘v:::r: ed r‘.=':3
`
`.
`
`‘
`
`l | like to know ~— I mean,
`
`this is regarding a deposition.
`
`v
`
`1
`
`.
`
`2 :Wasn't
`
`H
`there some way to work th s out
`
`instead of all this
`
`3 imotion practice?
`
`I mean,
`
`n
`C
`the lozal r les require that you
`
`4 gconfer and attempt
`
`to work out most of your discovery
`
`5
`
`0‘;
`
`7
`
`8
`
`9
`
`problems.
`
`If it's something that can’: be worked out,
`
`then
`
`iof course you come to the Court.
`
`But it looks like this was
`
`something pretty simple and straightforward, and I
`
`just want
`
`to understand why it got
`
`to this level.
`
`MR. UTERMOHLEN: Your Honor,
`
`I mean,
`
`I don't know
`
`10 ;if Mr. Wagner wants --
`
`11
`
`THE COURT: Whoever would like to start is fine.
`
`12 5
`MR. UTERMOHLEN: Well,
`think the issue as I
`13 gunderstand it primarily, Your Honor,
`is that swatch has taken
`
`to provide anyone for an
`they don't want
`the position that
`14
`15 ioral deposition, period. Mr. Wagner can speak to that,
`if
`16 'he'd like. But that,
`I think,
`is why it couldn't be
`17 %resolved.
`I'd be happy to speak to that.
`MR. WAGNER:
`18 f
`19; Nothing could be further from the truth.
`The facts are in this case that Ms. Bernard had
`20 g
`21 Xample opportunity during the TTAB proceedings to take the
`
`32 deposition by written questions of the cpposer, Swatch AG.
`
`23f They also had ample :~portunity to subpoena third pcrties [Of
`
`24 idepositicn,
`
`such as the swatch Group <U.S.),
`
`lnc., or even
`
`25 VH5. Caroline Feivet, who's the president oi
`
`the Swatch Group
`
`Ul
`
`I
`
`:
`
`.
`
`,
`
`E
`i
`
`:
`f
`i
`T
`
`
`
`

`
`Proceedings
`
`Id
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`(U.S.),
`
`Inc., at
`
`some point during the discovery period.
`
`But
`
`instead they chose to wait until the very last
`
`’week of the discovery period before they served a subpoena on
`
`the Swatch Group (U.S.) and identified her, Ms. Faivet, as
`
`the person by whom, quote, unquote,
`
`they sought
`
`to take a
`
`deposition.
`
`It was —-
`
`I mean, we'll get
`
`to the merits of the
`
`iargument when we do, but the notion that we're resisting this
`
`subpoena simply because we don't want
`
`to provide anyone for
`
`an oral deposition is just simply not true.
`
`Ms. Faivet is the president of the Swatch Group
`
`(U.S.),
`
`Inc.
`
`Now, that's not just some distributor for
`
`Swatch watches. This is a multi—million dollar company that
`
`is the brand manager and distributor in the United States for
`
`some dozen watch brands.
`
`THE COURT: Did you discuss maybe —-
`
`I mean,
`
`if it
`
`was
`
`-— if you had an issue with respect to producing her in
`
`particular, did you have any conversations regarding maybe
`
`someone else that you might be able to depose? was that part
`
`of
`
`this?
`
`MR. WAGNER: well, part of our argument
`
`in these
`
`"proceedings here,
`
`is that Ms. Bernard failed to identify the
`
`subject matters upon which they sought a deposition of
`
`the
`
`Swatch Group (U.S.),
`
`Inc.
`
`And as a result that,
`
`there was no
`
`way for the Swatch Group (U.S,> even to comply with the
`
`‘deposition subpoena for a corporate representative.
`
`
`
`

`
`Proceedings
`
`,
`
`THE COURT: Okay. But if you look at 3C(b)l,
`
`that
`
`N
`
`, requires either a designation of someone specific, or it
`
`allows you to say, you know,
`
`to just get a corporate
`
`representative and describe the subject matter.
`
`MR. WAGNER:
`
`sure.
`
`so to me it looks like an either/or.
`THE COURT:
`MR. WAGNER: well, 30(b)1, Your Honor -- and this
`
`‘
`
`3
`.
`
`really ~— now we're getting into one of the strains of the
`
`merits of the case ~~ 30(b)1, Your Honor,
`
`applies to parties.
`
`yDoesn't apply to third parties.
`
`ll‘
`
`THE COURT: Okay. Have you taken a look at
`
`the
`
`following case?
`
`MR. WAGNER: Which One?
`
`1 ’
`
`10
`
`12
`
`13
`
`14
`
`15
`
`3
`
`THE COURT: Okay. This is §,9;s_e1_r_?2_ill,,Re<:9:3s.r_,.3:;....,
`
`is;
`
`17
`
`18‘
`
`19;
`
`gotown Qeggrd Corporation, 105 F.R.D; 166.
`
`MR. WAGNER: Yes, Your Honor, we have.
`
`THE COURT: Okay.
`
`MR. WAGNER:
`
`In fact,
`
`the party -- you know what?
`
`I'm not going to use the word "party." Let's use the word
`
`"deponent."
`
`The deponent that was sought
`
`there,
`
`I
`
`think her
`
`iname was —~ her initials were 88.
`
`She was,
`
`in fact, an
`
`employee of
`
`the party in the case, Motown Records. Motown
`
`had been involved in the case. This woman submitted a
`
`(declaration in support of a motion for a preliminary
`
`injunction that had been filed in the
`
`case.
`
`She was clearly
`
`[U LA-I
`
`f\} A-3
`
`[V U'\
`
`
`
`

`
`E
`2
`
`i
`
`i
`§
`‘
`2
`
`%
`
`5E
`
`R
`
`Proceedings
`
`3
`
`a relevant witness that that party in the proceeding had put
`
`N
`
`up in the case.
`
`And the service of that subpoena for her
`
`testimon* was s ecific to that art‘, relevant
`I
`P
`
`to that
`
`4 ;proceeding in that case.
`
`in this proceeding, Ms. Bernard is trying to
`Now,
`5 E
`the rules of TTAB practice, and has refused to
`circumvent
`6
`
`7 ‘take the written deposition of the opposer, Swatch AG. Why?
`they have
`to date and during discovery,
`83 We don't know. But
`9 ‘failed to elect to take the deposition of the opposer.
`10
`Instead,
`they have tried to take the position that
`11
`the Swatch Group (U.S.), Inc.,
`is the managing agent for
`12 iswatch AG in the U.S., and through that mechanism,
`they have
`13
`tried to take the oral deposition of
`the Swatch Group (U.S.),
`
`I i
`
`14 iinc.
`
`15
`
`16 1
`
`Now,
`
`that is simply a flawed procedural vehicle.
`
`Now,
`
`the Swatch Group (U.s.), Inc., first of all,
`
`17 Zis not
`
`the managing agent of Swatch AG. But second of all,
`
`18
`
`by identifying Ms. Caroline Faivet specifically as the person
`
`19 ;for whom they are seeking deposition,
`there is absolutely no
`20 :authority that Ms. Faivet can bind Swatch AG at an oral
`
`21 deposition in the TTAB proceedings.
`
`22
`
`Ex) K»
`
`And quite honestly,
`
`that is the crux of the
`
`"resistance for this deposition.
`
`It has nothing to do with
`
`24 §whether they're entitled to or could have been entitled to a
`
`25 ‘deposition,
`
`if they had done it properly.
`
`.
`
`
`
`

`
`or;'roceeditgs
`
`THE COURT: Okay.
`
`MR WAGNER:
`
`But
`
`they never have.
`
`RAJ
`
`U!
`
`(Tl
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`l7
`
`l8
`
`THE COURT: what
`
`is -— I'm sorry. What is your
`
`:support for the proposition that 30(b)1 only applies to
`
`parties?
`
`MR. WAGNER:
`
`Every case that's been cited by
`
`Ms. Bernard, every case that's been discussed.
`
`We actually
`
`:make that statement specifically in our papers.
`
`And I just
`
`want
`
`to find it.
`
`THE COURT:
`
`Take your time.
`
`MR. WAGNER:
`
`we actually cite specifically to that
`
`proposition.
`
`It's ~~ well,
`
`the pages aren't numbered, but it
`
`is -- opposer's opposition to applicant's motion to compel
`
`discovery ~~ actually —— I'm sorry. This is in a brief
`
`before the TTAB.
`
`That's the other complication in this case,
`
`Your Honor,
`
`is they're also seeking to compel
`
`the deposition
`
`of Swatch Group (U.S.) at the TTAB as the managing agent of
`
`Swatch AG. which leads into,
`
`I
`
`think, an overriding point
`
`that I was actually going begin my argument with, which is
`
`the mootness of this entire proceeding, because discovery is
`
`now closed at
`
`the TTAB, and Ms. Bernard has done absolutely
`
`Inothing to preserve any r
`
`iqbt
`
`fdeposition,
`
`ii Court were to order
`
`whatsoever to even take a
`1..A.k(
`
`
`
`

`
`Proceedings
`
`10
`
`that,
`
`in fact, it only needs to be noticed during the
`
`deposition —— during the discovery period. And I just wanted
`
`to point out
`
`-- while I'm here,
`
`I might as well ~~
`
`THE COURT: Yes, no absolutely v-
`
`MR. WAGNER:
`
`—-
`
`I might as well get it done.
`
`THE COURT:
`
`—— please do.
`
`MR. WAGNER: Okay.
`
`—- is that 37 g:§;3¢ 2.120 states specifically:
`
`Discovery depositions must be taken and interrogatories,
`
`requests for productions of documents —— request for
`
`production of documents and things, and requests for
`
`admission must be served within, on or before the closing
`
`date of discovery.
`
`And in addition the I3B.M.P; 404.01, quote:
`
`Discovery depositions must be both noticed and taken prior to
`
`the expiration of the discovery period, unless the parties
`
`stipulate otherwise, or a party, you know, moves for a valid
`
`extension.
`
`So I
`
`think it is crystal clear —-
`
`I mean,
`
`that's
`
`jpretty explicit in the rules —~
`
`THE COURT: Although wouldn't that be something to
`
`be addressed before the TTAB, whether this is moot or not?
`
`MR. WAGNER: Well, no.
`
`I mean,
`
`it's an issue to be
`
`
`
`addressed before the TTAB as to whether an extension of the
`
`discovery period could be had by the applicant on the grounds
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`‘X; L)!
`
`
`
`

`
`Proceedings
`
`11
`
`I
`
`.31
`
`|
`
`1
`
`(‘J
`
`$-
`
`that this proceeding was open, and that
`
`the potential existed
`
`for this Court
`
`to order a further deposition of the party
`
`sought in the subpoena.
`
`But,
`
`in fact, Ms. Bernard has done absolutely
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`17
`
`18
`
`19
`
`;nothing to preserve any right to do that.
`
`So even if this
`
`Court were to decide that -~ which we obviously don't
`
`concede ——
`
`that
`
`the subpoena was validly issued and that
`
`someone, whether it's Ms. Faivet or someone else, needed to
`
`appear, it would not even be valid in the TTAB proceedings
`
`because discovery's closed and it wouldn't be taken within
`
`that discovery period.
`
`So I note that as a procedural
`
`issue that moots
`
`even the notion of their, you know, further requesting of
`
`this deposition to be taken.
`
`The same is true for the motion to compel.
`
`I guess
`
`there is technically pending a cross«motion to compel here.
`
`The same is true there, because they have pending at the TTAB
`
`a motion to compel.
`
`Now,
`
`that motion to compel actually
`
`crystallizes what we believe to be an improper procedural use
`
`of
`
`this managing agent
`
`theory that
`
`they've conjured up.
`
`And
`
`that,
`
`in fact, properly before the TTAB is a motion that
`
`they
`
`;have to compel a deposition of Swatch Group (U.S ), because
`
`they contend Swatch Group (U.S.)
`
`is the managing agent of the
`
`Swiss opposer, Swatch AG.
`
`Now, we're going to brief those issues.
`
`The TTAB
`
`
`
`

`
`l
`
`‘I
`
`I
`
`II
`
`.
`
`1
`
`is going to decide whether or not they're entitled to rely on
`
`x
`2 :that as a position; and if so,
`
`if Swatch Group U.S.
`
`is found
`
`Froceedings
`
`12
`
`3 gby the TTAB to be a managing agent here in the states,
`
`then
`
`4 ;they'll be entitled to take an oral deposition of that
`
`5
`
`6
`
`domestic party.
`
`But
`
`to come into this Court and to say, no, no,
`
`I'm
`
`7; going to sort of pull
`
`the wool over your eyes a little bit
`
`8? here, and I'm going to say I'm entitled to this, because I
`
`9. did a little quirky thing under 30(b>1 where I think it might
`
`10
`
`apply to a third party, but I'm actually naming a specific
`
`“
`
`12
`
`chain.
`
`13 Y big company, you know?
`
`11 }corporate officer, who happens to be the top of the food
`
`I mean, you know,
`
`forgive me, but Swatch is a pretty
`
`The brands that Swatch Group (U.S.)
`
`14 ,controls and distributes in the States are: Omega, Breguet,
`
`15
`
`RADO, Tissot, Longines, Calvin Klein.
`
`I mean, Ms. Faivet is
`
`16
`
`not just --
`
`17
`
`THE COURT:
`
`Isn't that really an issue —~
`
`isn't
`
`18
`
`that a different issue and maybe the one that
`
`I brought up
`
`19
`
`first, which is,
`
`if you really don't want
`
`to produce her
`
`20 Ebecause you thought maybe that was not —~ maybe she didn't
`
`21, have the knowledge or maybe she was too high up in the chain
`
`32
`
`that she wouldn't really have anything relevant, couldn't you
`
`23} have had a conversation to discuss someone who would be an
`
`ft) :3- ,alternate choice?
`
`I‘J U'\
`
`MR. WAGNER:
`
`so my question then in that vein is:
`
`

`
`0
`
`On what
`
`No notice topics were included.
`topics?
`1
`THE COURT: But precisely.
`I mean,
`that's
`2 :
`3 isomething that you could have communicated and had some
`
`§
`i
`i
`
`.
`
`4 dialog on.
`
`57
`
`MR. WAGNER: There was no dialog.
`
`In fact,
`
`this is
`
`6 ‘another interesting point that I wanted to bring out for your
`
`7; Your Honor. And now I'm referring to —~
`
`these are exhibits
`
`8 ;to the declaration of William Utermohlen —— and I'm referring
`
`9
`
`to the argument in their papers that's at page 7 here. This
`
`10 ‘is page 7 of the brief in opposition to the motion to quash
`
`11 £and in support of the cross—motion to enforce -- at page 7,
`
`12 Mr. Utermohlen goes through some of the chronology, of
`
`13 Ecourse,
`
`in a light, we have to assume is most favorable to
`
`14 Ehis position, and in which, at the end of the page, he
`
`17 gswatch SA noted that if the date was not convenient,
`
`15 ‘states —— this is five lines up from the bottom: However,
`16 iAugust 29th facsimile letter directed to counsel for
`18 ialternative dates would be considered.
`l9 E
`There was no phone call. There was no dialog.
`20 §Mr. Utermohlen simply issued a subpoena in the name of the
`
`21 fthis Court and had it delivered to the corporation service
`
`.
`i
`thel
`Qs
`l
`E
`i
`
`’
`
`22 =company listing Swatch Group (U.S.) by and through Caroline
`
`‘Faivet. Ms. Faivet was out ofi
`!
`
`the country at
`
`the time.
`
`.21
`
`E
`25 I
`
`Now‘,
`
`they ——
`
`the COJR”
`
`.
`Eu: isn't he suggesting that he would
`
`E
`
`E
`
`
`
`

`
`Proceedings
`
`the schedule?
`
`Isn't that
`
`be amenable to trying to work out
`TL
`
`what's intended here?
`
`mean,
`
`I also looked through the
`
`l\)
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`which are the letters,
`
`and that's what
`
`I get out of
`
`3 exhibits,
`
`- t
`
`hem.
`
`MR. WAGNER: Well,
`
`the
`
`letter to Ms.
`
`Faivet ,
`
`which
`
`iwas noted as served by hand with a copy of the subpoena, was
`
`;mailed to my partner,
`
`Jess Collen.
`
`He didn't
`
`fax it to us on
`
`August 29th, before the Labor Day holiday weekend, when on
`
`the same day, by fax -— now I'm looking at Exhibit N —- by
`
`ax he writes a letter to Mr.
`
`Collen.
`
`He doesn't attach a
`
`opy of the subpoena.
`
`He doesn't give us notice of the
`
`f C
`
`subpoena.
`
`In the letter.
`
`now at Exhibit 0,
`
`to Ms.
`
`Faivet.
`
`who, again,
`
`is out of the country as she often is in her
`
`position, he says to Ms. Faivet: we enclose a subpoena for
`
`your deposition.
`
`We are willing to discuss alternative dates
`
`or locations for the deposition subject
`
`to the constraint
`
`is,
`
`that discovery in this matter is scheduled to close on
`
`19‘
`
`S
`
`eptember 10th.
`
`20
`
`21
`
`22
`
`23
`
`Now, even in the best construction of their —— of
`
`their procedural tactics in this case,
`
`the best construction,
`
`if that subpoena was delivered by hand on August 29th, given
`
`the Labor Day holiday when most people are traveling, which
`
`She
`
`was
`
`in this instance,
`
`the deposition still would have
`
`een noticed on less than ten days‘
`
`notice. This was
`
`the
`
`vD
`
`i»
`2.1n
`X
`
`
`
`

`
`fvery last week of the discovery period, where they had more
`
`Ix)
`
`fthan six months to do this kind of thing.
`
`But
`
`they failed to
`
`.do that.
`
`NOW,
`
`if,
`
`in fact,
`
`they wanted Ms.
`
`Faivet for some
`
`reason,
`
`then they failed to
`
`serve her personally.
`
`And,
`
`in
`
`fact,
`
`it's my understanding
`
`that
`
`she didn't come even back
`
`into the country until well
`
`into this small period before the
`
`10th.
`
`THE COURT:
`
`Although,
`
`didn't they fax her a letter
`
`on August 25th, basically stating that they would be, you
`
`know,
`
`taking this type of deposition? You knew that that
`
`was —— that was really something that was intended to happen.
`MR . WAGNER: Well, on August 25th,
`
`that's right,
`
`they -— my date that I have is August 29th, where they
`
`alerted us to that.
`
`I
`
`think that the August 25th date maybe,
`
`you can ~-
`
`I hate to ask, but if you have an exhibit tab
`
`there ——
`
`THE coum": Okay. August 25 -~
`
`MR. WAGNER:
`
`Oh,
`
`I'm looking at Exhibit L.
`
`THE COURT:
`
`—— L, and then the other one is N.
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`9
`
`is
`
`MR. WAGNER: That's right. Yeah, L precisely is ~-
`
`notificaticn that
`
`-— is ~~
`
`this is actually a response to
`
`23 gour objection to their trying
`
`to
`
`take the deposition of
`
`24
`
`Mr. Furlan,
`
`who is an officer of
`
`Swatch SA, by oral
`
`25 deposition.
`
`Okay?
`
`
`
`

`
`Proceedings
`
`P7.
`
`I mean,
`
`the TTAB rules are very clear: If you have
`
`a nondomestic, outside-the-United~States party or person that
`
`you seek a deposition for, you do it on written questions.
`
`This is not an -— with due respect to the agency involved in
`
`the federal courts,
`
`this is not a federal
`
`trademark
`
`infringement litigation proceeding.
`
`This is a TTAB
`
`opposition proceeding.
`
`And in that vein,
`
`the rules set out
`
`that you're not
`
`going to require an official from Switzerland, Germany, or
`
`France to come to the United States to sit for a deposition
`
`in this proceeding.
`
`If you want
`
`to take that deposition, you
`
`do so on written questions.
`
`Their problem was they didn't do it.
`
`They didn't
`
`do it in time, and they were scrambling at the end of
`
`discovery to try to figure out how to get around that.
`
`THE COURT:
`
`But weren't a lot of things going on at
`
`the end of discovery?
`
`It looks like from the correspondence
`
`that Ms. Bernard's deposition was getting scheduled right at
`
`the end of discovery.
`
`So it looks like there was a certain
`
`amount of activity right at the end.
`
`MR. WAGNER:
`
`They moved that, all right?
`
`That was
`
`not at our request.
`
`That deposition was rescheduled.
`
`It
`
`had
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`[O O
`
`F.)
`
`you
`
`fx)
`
`ix)
`
`‘been noticed well
`
`in advance.
`
`And we were entirely at
`
`fliberty
`
`to take that deposition,
`
`and we did so within the
`
`time that we were allowed.
`
`

`
`Proceedings
`
`17
`
`This letter that you're identifying on August 25 is
`
`them acknowledging that under the rules to take Mr. Furlan's
`
`deposition that they would have to do so by written
`
`questions.
`
`And they raise for the first time now that it is
`
`their position that Swatch SA operates in the United States
`
`at least through a wholly—owned subsidiary known as Swatch
`
`Group (U.S.). And now,
`
`I'm quoting: Accordingly, it has
`
`representatives in the United States capable of appearing on
`
`its behalf, meaning Swatch AG.
`
`This is an improper application of the managing
`
`agent procedure at the TTAB. And that is why his request for
`
`the deposition of the Swatch Group (U.S.)
`
`is unacceptable.
`
`§That is why his specific subpoena to the Swatch Group (U.S.)
`
`by and through Ms. Caroline Faivet is unreasonable, because
`
`she is not and cannot bind Swatch AG.
`
`Their purpose for taking this deposition, under the
`
`guise as a managing agent for Swatch AG,
`
`is it's —~ it's not
`
`acceptable.
`
`To the extent that they wanted to depose the Swatch
`
`Group (U.S.) as a fact witness in the TTAB proceeding,
`
`then
`
`they were required to serve a subpoena with a 30(b)6 list of
`
`topics, at which time we could designate who we thought would
`
`he most appropriate for those topics to sit for a deposition.
`.4 (D
`they're requi'
`
`But
`
`d to do so not or
`
`two business days’
`
`g_.a
`
`(x)
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`17
`
`18
`
`‘.4 KC
`
`20
`
`h.) D-‘
`
`[\) 1»)
`
`b1 Q.
`
`I.4 U1
`
`notice at
`
`the end of the discovery period.
`
`
`
`

`
`I
`
`I
`
`I
`
`E
`
`I
`
`.
`
`13
`
`THE coum: Well,
`
`if you look at this -- if you
`
`Proroeedings
`
`13
`
`2
`
`look at the date of this letter, August 25th,
`
`the close of
`
`Y
`discover‘ was Se tember 11th,
`
`so ‘on had 17 nonbusiness days
`
`4 {from that date to discuss this matter, and you had
`
`i :
`
`approximately 8 business days to discuss this matter.
`
`I
`
`that would be enough time for you to tell
`6 lwould think that
`7 §him, Look,
`if you actually give me
`the topics, maybe I can
`
`8{giveyousomeonedifferent.
`
`10 Edone. Okay?
`
`-~ we didn't —— that was not
`MR. WAGNER: Well, we
`9 I
`Instead,
`they elected to issue the subpoena.
`It
`11 ‘
`13 finotice. And it was procedurally and substantively defective.
`,
`14 1
`
`12 {was an improper subpoena.
`
`It was on a mere several days‘
`
`Q
`
`Now,
`
`to the extent
`
`that they wanted to depose
`
`15 Ms. Faivet for some reason, as they sought
`
`to do,
`
`then they
`
`16 Ewere required to serve her personally, not just deliver it to IK
`
`17
`
`the corporation service company. And so,
`
`if that's the case
`
`18 %on a personal subpoena,
`
`then it was defective in that regard
`
`19
`
`as well.
`
`20
`
`21 3
`
`F.)
`
`Ix)
`
`23§
`
`21
`
`25
`
`There's ~~
`
`THE COURT:
`
`If it was a 30(b)l subpoena, how would
`
`you deem service to be made?
`
`WAGNER:
`
`On Me. Feivet personally.
`
`THE coumu
`
`Even under 30(b)l?
`
`MR. WAGNER:
`
`30(b)l
`
`is that a party may take the
`
`2z
`
`l
`
`'
`
`
`
`

`
`Procee