Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA287085
`ESTTA Tracking number:
`06/01/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91177921
`Defendant
`Fashion World Limited
`JAY BEGLER
`NIXON PEABODY LLP
`ONE EMBARCADERO CTR, FL 18
`SAN FRANCISCO, CA 94111-3823
`UNITED STATES
`jbegler@nixonpeabody.com
`Reply in Support of Motion
`Benjamin T. Hickman
`bhickman@nixonpeabody.com, mrobins@nixonpeabody.com,
`jbegler@nixonpeabody.com, was.managing.clerk@nixonpeabody.com
`/Benjamin T. Hickman/
`06/01/2009
`91177921_Public_Reply_Brief.pdf ( 47 pages )(1598447 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Valentino S.p.A.
`
`'
`Opposer,
`
`Opposition Number: 9} i 77921 (consolidated case)
`9i 182713
`
`v.
`
`Serial Number: 78/497,040
`
`77/006,996
`
`Fashion World Limited
`
`Applicant.
`
`
`Trademark: F BY FORTUNAVALENTINO (Styiizzed)
`in Ciasses 18 and 25
`
`APPLICANTS REPLY BRIEF IN SUPPORT OF ITS
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`MOTION TO COMPEL DISCOVERY FROM OPPOSER
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`Applicant, Fashion World Limited, offers this Brief in Reply to Opposefs Opposition to
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`Appiicanfs Motion to Compel Discovery from Opposer. Applicant recognizes that the Board
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`may exercise discretion as to whether it considers a reply brief. Applicant, therefore, desires to
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`highlight key deficiencies in Opposer°s Opposition to Applicanfs Motion to Cornpel Discovery
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`(“Opposer’s Opp”).
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`I.
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`Opposer does not dispute that documents from Oppnsefs former counsel’s files are
`missing.
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`Oppposefs factual allegations in its Opposition Brief do not refute Appiicanfs charges
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`and, in any event, are wholly unsupported by competent evidence.
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`Opposer has prosecuted an enforcernent campaign for several decades. The TTABVUE
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`database indicates that since 1985, Opposer and its related entities have instituted proceedings
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`against at ieast fifty~five applications or registrations for marks containing the name Valentino
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`and similar names, such as Valentina and Valentine. Ex. 1 to Declaration of Benj arnin T.
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`Hickman, accompanying Appiicanfs Motion to Coinpel (“Appiicant’s lVl0E."). Opposer’s
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`current counsel did not begin representing Opposer until June 2002. Opposer’s Opp. at E.
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`Search results from TTABVUE and the Federal Courts’ PACER database indicate that at ieast
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`125763831
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`1
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`

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`five law firms other than Opposer’s current counsel have represented Opposer or its related
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`entities before the Board and United States District Courts since 1985. Exs. 1-3 to Second
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`Declaration of Benjamin T. Hickman (“Second Hickman Declf’), accompanying this Reply
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`Brief.
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`When Oppose: responded to Appticanfs discovery requests about third-party
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`enforcernent, Opposer had a duty to search for materials in the possession of its former counsel.
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`“Under Fed. R. Civ. P. 34, which governs the production of documents during discovery, the
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`clear rule is that documents in the possession of a party’s current orformer counsel are deemed
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`to be within that party’s ‘possession, custody and control.” MTB Bank v. Federal Armored
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`Express, 1998 US. Dist. LEXIS 922, at *l2 (S.D.N.Y. 1998) (emphasis in original). See also
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`Variable—ParameIer Fixture Dev. Corp. v. Morpheus Lights, Inc, 1994 US. Dist. LEXIS 11 185,
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`at * E7 11.15 (S.D.N.Y. E994) (rejecting a party’s claim that documents were not in its possession,
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`custody, or control because the documents were in the possession of former counsel).
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`Notwithstanding Opposer’s duty to conduct a full search for documents, Opposer
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`produced little evidence of third~party enforcement. Out of more than 3,000 pages of
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`documents, Opposer produced one settlement agreement with a third party; one consent
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`judgment; and zero coexistence agreements, letters of consent, cease and desist letters, and
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`trademark watches. Second Hickman Decl. it 8.
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`KeDA»c.
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`_ Id. 11 9. Opposer cannot plausibly claim that it can produce no more
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`evidence of t.hird~party enforcementwincluding evidence from its former counsels’ fileswwhen
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`Opposer commenced an enforcement campaign more than a decade before current counsel began
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`representing Opposer.
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`l25";'6383,§
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`2
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`

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`Oppo-ser had an opportunity to explain this implausibiiity in its Opposition Brief. Not
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`only did Opposer deciine to explain why it produced so iittle evidence of third—party
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`enforcement, Opposer wholiy failed to refute Applicant’s claim that documents are missing.
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`Opposer, instead, claimed that its current counsel is ignorant as to what kinds of documents
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`might have been found in Opposer’s former counsei’s files:
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`The undersigned explained [in her telephone call with Applicant’s
`counsel] that Valentino has produced everything in the files, but
`admitted that we cannot know about every document in every
`attorney’s files over the years. The undersigned never admitted
`that she knew that documents relating to third—pa1ties were in fact
`missing.
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`Opposer’s Opp. at 2 (emphasis in original). Opposer did not refute Applicanfs claim that
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`documents are missing. Opposer attempted to wash its hands of the problem by claiming that it
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`does not know the identity of documents that it atlowed to go missing.
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`In’. In the face of
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`Applicanfs allegations, Opposer conceded the core fact that gave rise to the Motion to Compel.
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`In any event, the Board should afford no weight to the facts Opposer aileged in its
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`Opposition Brief. Opposer failed to append a declaration or affidavit in support its factual
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`allegations to its Opposition Brief. Factual allegations in a discovery motion or a response to a
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`discovery motion must be supported by competent evidence. See, e. g., Kiobel v. Royal Dutch
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`Petroleum Corp, 2005 1.1.8. Dist. LEXIS l6514, at *l6 (S-D.N.Y. 2005) (court refused to
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`recognize a party’s claim of attorney—ciient privilege where affidavits provided no factual
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`information to support the claim of privilege). Here, the Opposition Brief references a
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`declaration made by Opposer’s counsel. Opposer’s Opp. at 1~3. TTABVUE, however, indicates
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`that no declaration was appended to the Brief. The service copy that Applicanfs counsel
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`received from Opposer’s counsei contains no declaration. Second Hickman Decl. 1i 10. The
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`Opposition Brief is wholly unsupported by competent evidence.
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`12576383.]
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`3
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`

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`II.
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`Op[_i_oser’s dutv to [greserve evidence began no later than the date when Opposer
`sent the April 6, 1998 cease and desist letter.
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`Opposer claims that the April 6, 1998 cease and desist letter did not trigger a duty to
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`preserve evidence. See Opposer’s Opp. at 3-4. Opposer is urging the Board to apply a rule that
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`does not trigger the duty to preserve evidence until a dispute arises that involves the same parties
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`and marks that become the subjects of litigation. Id. Even then, according to Opposer, a party
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`would not be required to preserve evidence relevant to “use” of a mark if the dispute oniy
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`concerns “registerability.” Id. Opposer’s rule directly conflicts with those set forth by the
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`Courts, as demonstrated by the cases Applicant cited in its Motion to Cornpel. Applican.t’s Mot.
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`at 7-8. Opposer made no attempt to refute or distinguish those cases. Opposer’s Opp. at 34}.
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`General knowledge that some type of litigation will ensue is sufficient to trigger the duty
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`to preserve. Rambus, Inc. v. Infineon Techn0ZogiesAG, 220 F.R.D. 264, 287 n.30 (ED. Va.
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`Mar. l7, 2004). In Rambus, the plaintiff brought patent infringement actions against an
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`assortment of defendants, seeking to extract royalties based on patents it held for random access
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`memory (RAM) technology. Defendant charged that plaintiff destroyed relevant documents in
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`its possession at a time when plaintiff was planning a general litigation strategy against a number
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`of potential defendants, but before plaintiff filed suit against defendant in the subject case.
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`Plaintiff attempted to argue that the court could not find spoliation occurred unless the court
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`found that plaintiff reasonably anticipated litigation with the particular defendant claiming
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`spoliation in the subject case- Id. at 287. The court rejected plaintiffs argument. “{Plaintiff]
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`clearly anticipated some type of litigation at the point it destroyed documents. .
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`.
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`.
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`.
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`[l]t just
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`stands as a matter of logic that if a company is on notice that litigation is likely to ensue, that the
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`company will realize, at least on a broad level, who the anticipated litigation will involve.” Id.
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`l25’?6383.l
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`4
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`

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`Opposer stands in the same position in this case as the plaintiff in Rambus. Like the
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`plaintiff in Rambus, Opposer is prosecuting an enforcement campaign against disparate parties.
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`Opposer must have been aware, “at least on a broad levei,” that it would need to produce
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`evidence in trademark opposition or canceliation proceedings, or in civil infringement actions.
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`See id. Since third-party use and enforcement are issues that frequently arise in such cases, it is
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`reasonable to conclude that Opposer knew or should have known that it would need to produce
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`evidence related to third—party use or enforcement. Opposer’s duty to preserve evidence did not
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`hinge on a taking action against a specific party. Opposer has borne that duty as long as Opposer
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`has known it might enforce its trademark rights against other parties.
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`Moreover, Opposer had specific knowiedge of the possibility that it would have to
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`produce evidence in a proceeding involving this Applicant. Oppose: knew, no iater than April 6,
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`1998, that it might take legal action against use of marks substantially similar to the opposed
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`marks in this proceeding and that Bruno Condi, Applicant’s principal, could be involved in the
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`litigation. Opposer explicitly warned in the cease and desist letter addressed to Mr. Condi that
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`litigation couid ensue. Applicant’s Mot. at 8. Aprii 6, 1998 is the latest date that Opposer can
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`claim its duty to preserve arose.
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`Opposer attempts to argue that the duty to preserve does not arise untii the time when
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`action could have been taken. Opposer’s Opp. at 3. Opposer cites one case in support of this
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`proposition: National Cable Assoc. 12. American Cinema Editors, Im;-., 937 F.2d 1572, 1581 (Fed.
`
`Cir. 1991). National Cable Asssociation, however, only stands for the proposition that the period
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`for laches runs from the time action could have been taken; it does not address when a duty to
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`preserve evidence arises. The case is inapposite.
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`l?_576383.l
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`5
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`

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`III.
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`Conclusion
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`For the reasons stated herein and in its Motion to Cornpel, Applicant respectfully requests
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`that the Board grant its Motion to Compei.
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`Dated: June 1, 2009
`
`Respectfuliy submitted,
`
`NIXON PEABODY LLP
`
`By:
`
`/Benjamin T- Hickman/'
`
`Mark D. Robins
`
`Nixon Peabody LL}?
`300 Summer Street
`
`Boston, MA 02110
`(617) 34545176 (phone)
`(617) 345~1300(fax)
`mrobins@niXonpeabody.com
`
`Benjamin T. Hickman
`Nixon Peabody LLP
`40: 9”‘ Street, N.W., Suite 990
`Washington, DC. 20004
`(202) 585—8349 (phone)
`(202) 585-8080 (fax)
`bhick131an@nixonpeabody.com
`
`Attorneys for Applicant
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`12576383}
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`6
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 1, 2009 a true and accurate copy of the foregoing
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`Appiicanfs Repiy Brief In Support oflts Motion to Compei Discovery From Opposer was
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`served Via first class mail, postage prepaid, on the following:
`
`Anne M. Sterba, Esq.
`G. Franklin Rothwell, Esq.
`Rothweil, Figg, Ernst & Manbeck, RC.
`1425 K Street, N.W., Suite 800
`
`Washington, D.C. 20005
`
`/Benjamin T. Hickman!
`Benjamin T. Hickman
`
`1§2{J7S9S. "I
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Valentino S.p.A.
`
`Opposer,
`
`Opposition Number: 91177921 (consolidated case)
`91182713
`
`V.
`
`Fashion World Limited
`
`Serial Number: 78/497,040
`
`77/006,996
`
`Applicant.
`
`Trademark: F BY FORTUNAVALENTINO (Stylized)
`in Classes 18 and 25
`
`SECOND DECLARATION OF BENJAMIN T. HICKMAN
`
`Benjamin T. Hickman, being duly sworn, deposes and states as foilows:
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`1.
`
`My name is Benjamin T. Hickman.
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`I am over the age of eighteen and otherwise
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`competent to make this Declaration. This Declaration is based on my personal knowledge.
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`2.
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`E am an Associate with the law firm Nixon Peabody LLP, which is counsel for
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`Applicant in the above~captioned actions.
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`3.
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`Attached hereto as Exhibit 1 is a true and correct copy of a Petition for
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`Canceiiation I retrieved from the TTABVUE database in Opposition No. 92040688. The
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`Petition for Cancellation appears to indicate that Patterson, Belknap, Webb & Tyler LLP is
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`counsel for Vaientino Couture, Inc.
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`4.
`
`Attached hereto as Exhibit 2 is a true and correct copy of a docket surnrnaiy i
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`retrieved from the TTABVUEZ database for Opposition No. 91099468. The docket summary
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`indicates that Pennie & Edmonds is counsei for Valentino Couture, Inc.
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`5.
`
`Atached hereto as Exhibit 3 is a true and correct copy of a docket summary I
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`retrieved from the TTABVUE database for Opposition No. 91071187- The docket summary
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`indicates that Pennie & Edmonds is counsel For Valentino Couture, inc.
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`

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`6.
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`Attached hereto as Exhibit 4 is a true and correct copy of a civil docket I retrieved
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`from the PACER database for Case No. I292-cv-02.895—LAP in the United States District Court
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`for the Southern District ofNew York. The docket indicates that Phillips Nizer Benjamin Krim
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`& Bailon is counsel for Valint N.V., Globeleganee B.V., and Vaientino Couture, Inc.
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`7'.
`
`Attached hereto as Exhibit 5 is a true and correct copy of a civil docket I retrieved
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`from the PACER database for Case No. l:03—cv—l0095—Kl\/[W in the United States District Court
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`for the Southern District of New York. The docket indicates that Leader & Berkori, L.L.P. is
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`counsei for Valentino USA Inc., Valentino S.p.A., and Valentino Globe B.V.
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`8.
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`On November 17, 2008, I received a document production from Opposer in this
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`action.
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`I have reviewed the documents and identified one settlement agreement; one consent
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`judgment; and zero coexistence agreements, letters of consent, cease and desist letters, and
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`trademark watches.
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`ZZDA-crab
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`10.
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`On May 8, 2009, Opposcr served a copy of its Opposition to App1icant°s Motion
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`to Coinpel Discovery From Opposer on Appiicaiit’s counsel. The copy Applicants counsel
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`received does not appear to contain a dectaration or affidavit executed by Opposer°s counsel.
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`I declare under penalties of perjury of the laws of the United States America that the
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`foregoing is true and correct. Executed on June 1, 2009. /3
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`‘-
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`

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`EXHIBIT 1
`
`

`
`-.
`
`1
`
`TRADEMARK OFFICE
`IN THE UNITED STATES PATENT
`BEFORE TKE TRADEMARK TRIAL AND APf’EAL BOARD
`
`‘Woe;
`
`C!
`no
`I.
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`".23
`N .
`
`‘*3
`
`K0
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`is
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`,
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`
`
`marmzna1s‘:as:?3i1‘-gal,
`
`In the Matter of Registration No. 1,103,922
`
`Registered October 10, 1978
`
`VALENTINO COUTURE, Il‘~EO.,
`
`Petitioner,
`
`V.
`
`CAMICERIA PANCALDI & B S.R. L,
`
`Registrant.
`
`Cancellation No.
`
`/'
`
`lfilllflllllfilllllillllillllltlllllllllllll
`
`94.15.2002
`u.a.srnwsu.rMorcI':M Mun H0910?» ‘'06
`
`we/aeoa
`
`61 R3376
`
`336.90 3?
`
`PETITION FOR CANCELLA'I'iON
`
`Petitioner Valentino Couture, Inc, a Delaware corporation, located at 11 West
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`42nd Street, 26th Floor, New York, New York, 10036, believes that it is being and that it will be
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`damaged by the continued presence on the Principal Register of the registration for OSCAR
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`VALENTINO, for "articies of clothing for men, women and children — namely, vests, blouses,
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`skirts, pants, shirts, Chemises, trousers, pajamas and dressing gowns“ in Class 25" and hereby
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`petitions to cancel this registration.
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`As grounds for the I’etition for Cancellation, it is alleged that:
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`1.
`
`Mr. Valentino Garavani of Rome, Italy is a world-renowned ccuturier and
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`designer of clothing collections and accessory articles, anti for many years has designed and sold
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`clothing and accessory items, under the trademarks VALENTINO and VALENTINO
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`GARAVAN1 (the “VALENTINO Marks”). Petitioner Valentino Couture Inc. is and for many
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`years has been solely and exclusively authorized and licensed to market in this country clothing
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`B264S3\-l
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`

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`.~.
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`and an extensive line of accessory items bearing the VALENTINO Marks. In addition,
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`Petitioner Valentino Couture Inc. is entitled to authorize and has authorized others in this country
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`to use the VALENTEIO Marks.
`
`2.
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`Through extensive advertising and promotional efforts extending over
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`thirty (30) years, Petitioner and its predecessors have built up a large and profitable business and
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`extensive and valuable goodwill in connection with the VALENTINO Marks. The
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`VALENTINO Marks are well and favorably known to the trade worldwide and are relied upon
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`by the trade and public as representing high fashion, design excellence and quality. Since 1960,
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`well before the June 1982 date of first use claimed by Registrant, Petitioner has used and
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`continues to use the VALENTBJO Marks for rnen’s and women’s clothing and accessories, such
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`as dresses, skirts, blouses, suits, jackets, coats, sweaters, shirts, trousers, vests, shorts, swimwear,
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`footwear, hats, lingerie, ties, belts, scarves, hosiery, gloves, handbags, brief cases, umbrellas and
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`costume jewelry.
`
`3-
`
`Since long prior to the 1978 registration date of OSCAR VALENTINO,
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`Registrant, Petitioner and its predecessors were and are today generally lmown and referred to by
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`the VALENTWO Marks.
`
`4.
`
`Petitioner’s VALENTINO Marks are now, and since their first use, have
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`been used extensively in connection with Petitioner’s business and applied conspicuously to
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`Petitioner’s clothing and accessory articles, and Petitioners goods are now, and for many years
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`have been extensively advertised and promoted and widely distributed, offered for sale and sold
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`in interstate commerce throughout the United States and have been the sub} eet of widespread and
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`extensive publicity.
`
`826433vl
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`

`
`9;»
`
`S.
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`Petitioneafs VALENTINO Marks have come to be weli—1o:1own and of
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`great value to Petitioner and are recognized and relied upon by the trade and the public as
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`identifying and designating Petitioner’s clothing and accessory articles and distinguishing them
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`from the products and businesses of others.
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`6.
`
`The VALENTINO Marks have been duly registered in the United States
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`Patent and Trademark Office for a broad array of clothing and accessories, including the
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`following:
`
`a. VALENTINO, Reg. No. 910,955, for articles of ciothing and
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`accessories, namely dresses, belts, gloves, scarves, swimwear and ties.
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`b. VALENTINO, Reg. No. 956,665, for retail department store services
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`and maii order services in connection therewith.
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`C. VALENTENO, Reg. No. 1,140,394, for umbrellas.
`
`d. VALENTINO, Reg. No. 1,153,226, for men’s clothing, namely suits,
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`sports jackets, overcoats, shirts, trousers, Bermuda shorts and bathing suits.
`
`e. VALENTINO, Reg. No. 1,268,029, for articles of clothing and
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`accessories, namely jumpers, sweaters, dresses, skirts, blouses, suits, jackets,
`
`coats, shirts, trousers, vests, jeans, slacks, shorts, swimwear, hats, lingerie, ties,
`
`belts, scarves, hosiery and gloves.
`
`f. V VALENTINO & Design, Reg. No. 1,268,030, for articles of clothing
`
`and accessories, namely jumpers, sweaters, dresses, skirts, blouses, suits, jackets,
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`8264-183v§
`
`

`
`coats, shirts, trousers, vests, jeans, slacks, shorts, swimwear, hats, lingerie, ties,
`
`belts, scarves, hosiery and gloves.
`
`g. VALENTEJO GARAVANI & V LOGO, Reg. No. 1,418,315, for
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`costume jewelry.
`
`h. VALENTH\lO GARAVANI & V LOGO, Reg. No. 1,419,190, for
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`valises, garment bags for travel, handbags, shoulder bags, clutch bags, brief cases,
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`attache cases, umbrellas, and small leather goods — namely, passport cases,
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`wallets, key cases, ‘oillfolds vanity cases sold empty and credit card holders.
`
`i. VALENTINO GARAVANI & V LOGO, Reg. No. 1,422,015, for
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`articles of clothing, namely, belts, scarves, gloves, boots, shoes and slippers.
`
`The foregoing registrations are valid and subsisting, incontestable, unrevoked and uncancelled,
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`and Petitioner is exclusively authorized and licensed to use said registered trademarks in the
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`United States.
`
`7.
`
`Upon information and belief, Regise'ant’s mark, OSCAR VALENTINO,
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`has not been in use for a period of several years, and has likely not been in use for at least the last
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`5 years.
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`8.
`
`Upon information and belief, Registrant's mark, OSCAR VALENTINO,
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`has been abandoned without an intent to resume use.
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`WHEREFORE, Petitioner believes it is being or will be damaged by the
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`continued presence on the register of Reg. No. 1,103,922 and requests that it be canceled and this
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`cancellation be sustained.
`
`S264S3vl
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`

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`PBW&T Check No. 116364 @ $300.00 is enclosed to cover the official filing fee
`
`in connection with this matter. In case any additional fees are required, piease charge om" deposit
`
`account No, 16-0633 and notify the undersigned of any additional fees.
`
`Piease recognize as attorneys for Registrant in this proceeding Philip R. Forienza,
`
`Esq. and Allison Rutledge-Farisi, Esq., ?atterson, Belknap, Webb & Tyler, 1133 Avenue of the
`
`Americas, New York, NY 10036.
`
`Respeetfufiy submitted,
`
`Dated: New York, New York
`
`April L3, 2002
`
`By:
`
`PATTERSON, BELKNAP, WEBB & TYLER LLP
`1133 Avenue of the Americas
`
`New York, New York E0036
`(212) 336-2000
`Attorneys for Petitioner
`
`826483v1
`
`

`
`CERTIFICATE OF MAILING
`
`The undersigned hereby certifies that this PETITION FOR CANCELLATION is
`
`being deposited with the United States Postai Service as Express Mail No. [EL 779696902 US]
`
`in an envelope addressed to:
`
`Commissioner for Trademarks
`Box TTAB ~ FEB
`
`2900 Crystal Drive
`South Tower Building, 9”‘ Floor
`Arlington, Virginia 22202-3513
`
`on April D, 2002.
`
`826-483vl
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing PETITION FOR
`
`CANCELLATION has been served on counsel for Applicant by depositing same with the United
`
`States ?osta1 Service with sufficient postage as first-class mail in an envelope addressed to:
`
`Mark S. Sommers
`
`Finnegan Henderson Farabow et a1.
`13001 I Street, NXW.
`Washington, DC 2005
`United States
`
`on Apdig, 2002
`
` 6»
`
`Allison Ru 1
`
`ge«Parisi
`
`826483v]
`
`

`
`EXHIBIT 2
`
`

`
`Ubi’ 1 U 1 IA33 V U11.
`
`lI‘8.Cl6'I}.’]3I‘K 11131 3115! Appeal 15021111 Eflqlllfy DyS'E€1’l'l
`
`rage 1 or ,5
`
` ifirsétaé States Fatant ma Tsafiemark Office
`
`Heme E Site Index § Search Efiuidsea §COritacts E eausiness E eBEz aEerts§ News! fiefip
`
`
`
`TTABVUE. Trademark Triai and Appeat Board inquiry System
`
`V1.5
`
`Opposition
`
`Number: 91099468
`
`Status: Terminated
`
`Defendant
`
`Fiiing Date: 10/23/1995
`
`Status Date: 11/17/1999
`
`Name: VA.N3....1..E}§C-.
`
`Correspondence:
`
`RQXAN NE EEAUSOLEIE.
`LEWIN & LAYTIN, P.C.
`1776 BROADWAY - 15TH FLOOR
`
`NEW YORK, NY 10019
`Serial #: 74582270
`
`2.‘..%l3..E2..l.i.<...‘..&1iE.Q,I“i ..F.i1e
`
`Registration it: 293942041
`
`Application Status:
`Section 8 and 15 —~ Accepted and Acknowledged
`Mark:V
`
`Plaintiff
`
`Name:
`
`EIALENTIDEQOCOUT/URE,
`
`IINECO.
`
`C°3‘|'€’3|30|1€¥e|‘|C€=
`
`PENNIE 8: EDMONDS
`1155 AVENUE OF THE AMERICAS
`
`NEW YORK, NY 10036
`
`Seriai #1 Z.32.3.?fl..Q.0
`
`A..9pi...i;.atio::_____._Fii<:;
`
`Registration #: 1___;9__1741Q
`
`Application Status: Renewed
`Mark:V
`
`Prosecution History
`
`# Date
`
`History Text
`
`25 11/17/1999
`
`TERMINATED
`
`24 11/17/1999
`
`23 11/17/1999
`
`22 12/15/1998
`
`21 06/01/1998
`
`20 05/29/1998
`
`19 05/29/1998
`
`18 05/08/1998
`
`17 05/06/1998
`
`16 02/19/1998
`
`15 11/06/1997
`
`14 06/26/1997
`
`13 05/30/1997
`
`12 03/20/1997
`
`11 12/09/1996
`
`10 10/04/1996
`
`9
`
`07/30/1996
`
`BD'S DECISEON: DISMISSED W/O PREJUDICE
`AMENDMENT APPROVED AND ENTERED
`
`DEF'S. MOTION TO AMEND
`
`DEF‘S. MOTION TO AMEND
`
`DECLARATION OF LISA ROSENBURGN, ESQ.
`DEF'S. BRIEF IN OPP. TO PL‘S. MOTION TO REOPEN & EXTEND
`
`PL'S. MOTION TO AMEND
`PL'S. MOTION TO REOPEN AND EXTEND TIME
`
`TRIAL DATES RESET
`DEF'S. MOTION TO RESUME PROCEEDINGS
`
`DEFS. IVEOTION TO SUSPEND PROCEEDINGS
`
`D‘S MOT FOR EXTEN. OF TIME WI CONSENT
`D'S MOTION FOR AN EXTENSION OF TIME
`
`{TS MOTEON FOR AN EXTENSION OF TIME
`
`D‘S MOTEON FOR AN EXTENSION OF TEME
`
`D'S MOTION FOR AN EXTENSEON OF TIME
`
`http://ttabvue.usptO.gov/ttabvue/’V?pn0=9 1099468&pty=OPP
`
`6/1/2009
`
`

`
`U01’ 1 U 1 1 AD V U11.
`
`i1‘aCl€E'I1a1'K ififli &H(1 Appeai DOEiI‘CE inquiry bySE€I1’l
`
`rage 4 OT A
`
`8
`
`7
`
`6
`
`5
`
`4
`
`3
`
`2
`
`1
`
`04/25/1996
`
`TRIAL DATES SET
`
`04/01/1996
`
`ANSWER
`
`02/26/1996
`
`0'3 MOTION FOR AN EXTENSION OF TIME
`
`01/29/1996
`
`CV5 MOTION FOR AN EXTENSION OF TIME
`
`01/16/1996
`
`D'S MOTION FOR AN EXTENSION OF TIME
`
`11/28/1995
`
`PENDING, INSTITUTED
`
`11/28/1995
`
`NOTKZE SENT; ANSWER DUE 1/7/96
`
`10/23/1995
`
`FILED AND FEE
`
`Resutts as of O6/0112009 11:47 AM $3-9-k--to Search re5“"-'5
`
`Search:
`
`i
`
`.HOl‘J'lE i MDEXE SEARCH i e-BUSINESS E CONTACT US E PRIVACY STATEMENT
`
`http://ttabvuauspto.g0v/ttabvue/V?pn0=91 099468&piy=OPP
`
`6/ 1 /2009
`
`

`
`EXHIBIT 3
`
`

`
`menu 1 IADVUI1. araaemaxx max ana Appeai JjoaI‘GI11qu11'y System
`
`rage I or 1
`
`
`
`iéeiieé States Patent end Yreéemark Office
`
`Name E Site Index ! Search 5 Guisiee E Centects E efieeiness Eefiiz emits} News f §-ieip
`
`
`
`TTABVUE. Trademark Trial and Appeal Board Inquiry System
`
`V1.5
`
`Opposition
`
`Number: 910713.87
`
`Status: Terminated
`
`Filing Date: 03/21/1985
`
`Status Date: 06/16/1987
`
`Intertocutory Attorney: I_H_,O_I§g1A_S J QUINN
`
`Defendant
`
`Name: LAVAN FASHION INCORPORATED
`
`Correspondence: DARBY &,,DA_R,5Y,,P,C_,
`405 LEXINGTON AVENUE
`
`NEW YORK, NY 10174
`
`Serial #: 73457278
`
`Appiication Fife
`
`Apptication Status: Abandoned — After Inter—Partes Decision
`Mark: LAVANTINO
`
`Plaintiff
`
`Name: VA;_,E_NTINO COUTURE, ENC.
`
`Correspondence: DAVID wE1;.:>,___,11:
`c/o PENNIE & EDMONDS
`1:55 AVENUE 0:: THE AMERICAS
`
`NEW YORK, NY 10036
`
`Serial 4?: 732373.99
`
`Ape__l.._i_.g_at:_oa3.__ E_i.i.§
`
`Registration 1%: I12,6ISQZ9
`
`Application Status: Renewed
`Mark: VALENTINO
`
`Prosecution History
`
`# Date
`
`History Text
`
`29 06/16/1987 TERMINATED
`
`28 06/08/1987’ BD‘S DECISION: DISMISSED W/O PREJUDICE
`
`27 05/02/1985 PENDING, INSTITUTED
`
`26 06/08/1987 APPLICATION ABANDONED
`
`25 05/14/1987 RESPONSE TO ORDER
`
`24 04/20/1987 DEF COMM RE ABANDONMENT
`
`23 03/31/1987 PL'S WRITTEN CONSENT TO ABANDONMENT DUE 4-17-87; PROCS O/W
`SUSP
`
`22 02/25/1987 WITHDRAWAL OF OPPOSITION
`
`21 02/25/1987 WITHDRAWAL OF APPLICATION
`
`20 02/25/1987 ANSWER DUE (DUE DATE)
`
`19 01/30/1987 D'S MOT FOR EXTEN. OF TIME W/ CONSENT
`
`18 12/12/1986 ANSWER DUE (DUE DATE}
`
`17 11/28/1986 STPULATEON FOR AN EXTENSION OF TIME
`
`16 11/05/1986 PROCS RESUMED; ANSWER DUE 11-27-86
`
`15 03/24/1986 SUSPENDED
`
`14 02/18/1986 STIPULATION FOR AN EXTENSION OF TIME
`
`Due Date
`
`02/26/1987
`
`01/27/1987
`
`http://ttabvueuspto.gov/ttabvue/v?pn0m9 1. 071 I 87&pt}/“OPP
`
`6/I /2009
`
`

`
`US!’ I U 1 EAEV U11. iraclemark Jraai and Appeai l:'>0&I‘C1 Lnquxry DYSIGFD
`
`i’&g€ Z O} A
`
`13 01/02/1986 ANSWER DUE (DUE DATE)
`
`12 12/16/1985 STIPULATION FOR AN EXTENSION OF TIME
`
`11 10/08/1985 ANSWER DUE (DUE DATE)
`
`10 09/16/1985 STIPULATION FOR AN EXTENSION OF TIME
`
`O8/12/1985 ANSWER DUE (DUE DATE)
`
`07/19/1985 D‘S MOTION FOR AN EXTENSION OF TIME
`
`07/15/1985 D'S MOT FOR EXTEN. OF TIME WI CONSENT
`
`O6/26/1985 ANSWER DUE (DUE DATE)
`
`06/13/1985 D'S MOT FOR EXTEN. OF TIME WI CONSENT
`
`OS/20/1985 2(D) CONFUSION/MISTAKE/DECEPTION W MARK
`
`05/O2/1985 PENDING, ENSTITUTED
`
`I—*F\JL«J-a’—‘-U'lO\‘-.JO3i.O
`
`02/13/1986
`
`12/12/1985
`
`09/12/1985
`
`07/12/1985
`
`05/O2/1985 NOTICE SENT; ANSWER DUE (DUE DATE)
`
`06/11/1985
`
`03/21/1985 FILED AND FEE
`
`Resuzzs as of 0610142009 11:50 AM Bad‘ f-5° ---5e-fir--Eh -resmts
`
`Search:
`
`; HOME 5 mmaxi SEARCH : eBUSiNESS 5 CONTACT us 1 PREVACY STATEMENT
`
`http://ttabvue.uspto.goV/ttabvue/V?pn0=91071 187&pty=OPP
`
`6/ 1 /2009
`
`

`
`EXHIBIT 4
`
`

`
`BUN Y \,'iVi/ELI“ V6I'S101’1 .)'..;i.Z
`
`rage I OI £U
`
`United States District Court for the Southern District of New York (Foley Square)
`CIVIL DOCKET FOR CASE #: 1:92-cv-02895-LAP
`
`US. District Court
`
`CLOSED
`
`Va1intN.V., et al V. Global Trading, et al
`Assigned to: Judge Loretta A. Preska
`Demand: $2,500,000
`Cause: 15:1 E25 Trademark Infringement (Lanharn Act)
`
`Date Filed: 04:92/£992
`Date Terminated: 01/24/1994
`Jury Demand: None
`Nature of Suit: 840 Trademark
`Jurisdiction: Federal Question
`
`Plaintisff
`
`Valint N.V.
`
`Rlaintiif
`
`Globelegance B.V.
`
`represented by David L. Bressman
`Phillips Nizer Benjamin Krim & Ballon
`
`666 Fifth Ave
`
`New York , NY 10103
`2] 2~977~9700
`
`LEAD A TTORNE Y
`
`represented by David L. Bressman
`(See above for address)
`LEAD A TTORNEY
`
`Valentino Couture, Inc.
`
`represented by David L. Bressman
`(See above for address)
`LEAD ATTORNEY
`
`V.
`
`Defendant
`
`Global Trading industries, Inc.
`TERMINA TED: 0]/24/1994
`
`represented by 8. Peter Hochberg
`D. Peter Hochberg Co., L.P.A.
`THE BAKER BUILDING
`
`1940 East 6th Street 6th Floor
`
`Cleveland , OH 44114
`
`(216) 7716800
`TERMINA TED: 0]/24/1994
`
`LEAD ATTORNEY
`
`Martin R. Gold
`
`Gold,Farrell & Marks
`41 Madison Ave.
`
`https://eef.nysd.uscourts.gov/cgi~bin/DktRp£.pl?88 I 3921 72672226«LW801W0—l
`
`6/I /2009
`
`

`
`DLJN 1' Li\"l/ELI‘ \«'€I'S101’l 3.1.4’.
`
`rage J. OI 1U
`
`_De_feadan_t
`
`Benjamin E. Woomer
`
`represented by
`
`New York , NY 10010
`(212)481~170O
`TERMINA TED: 01/24/I 994
`LEAD A TTORNEY
`
`Martin Roth Gold
`
`Sonnenschein Nath & Rosenthal LLP
`
`(NY)
`1221 Avenue of the Americas
`
`New York , NY 10020
`(212)398-8701
`Fax: (212)768-6800
`Email: mgo1d@sonnenschein.c0n1
`TERMINA TED: 0]/24/J 994
`LEAD A TTORNEY
`
`I). Peter Hochberg
`(See above for address)
`LEAD A TTORNEY
`
`Martin R. Gold
`
`(See above for address)
`LEAD ATTORNEY
`
`Martin Roth Gold
`
`(See above for address)
`LEAD A TTORNEY
`
`D_efe:_1_s1___a:1t
`
`Gruen Marketing Corp
`
`represented by
`
`Steven H. Bazerman
`
`Graham, Campaign & McCarthy
`36 West 44th Street
`
`NY , NY 10036
`2E2-354-5650
`
`LEAD ATTORNEY
`
`Thomas Francis Ford
`
`Smithford Business Lawyers
`334 S Franklin St., PO Box H3
`
`Wilkes Barre , PA 18703
`(570)—820«7845
`Fax: (570)-820-8444
`Email: tford@smithford1aw.com
`LEAD A TTORNEY
`
`D. l’eter Hochberg
`(See above for address)
`LEAD ATTORNEY
`
`Cousnter,sCllaimant »
`
`Global Trading Industries, Inc.
`
`represented by
`
`https://ecf.nysd.uscourts.g0v:’cgi—bi.n/DktRpt.p1?8813921'72672226~LM801M0~1
`
`6/1/2009
`
`

`
`SUN 3.’ LIVIfbLJi* Version :§..Z.z’.
`
`I’&g€ J OI H}
`
`Q_o__§1_nte_r_._C!aimant
`
`Benjamin E. Woomer
`
`Martin Roth Gold
`
`(See above for address)
`LEAD A TTORNE Y
`
`represented by 1). Peter Hoehberg
`(See above for address)
`LEAD A TTORNE Y
`
`Martin Roth Gold
`
`(See above for address)
`LEAD A TTORNEY
`
`V.
`
`Counterrrbefendam
`
`Global Trading Industries, Inc.
`
`represented by
`
`D. Peter Hochberg
`(See above for address)
`LEAD A TTORNEY
`
`Martin Roth Geid
`
`(See above for address)
`LEAD ATIORNEY
`
`Counim: l}__§:i_¢;_:1_v;_l___21_r1_.t
`
`Benjamin E. Woomer
`
`Cross Crlairnant
`
`Green Marketing Corp
`
`V.
`
`Cross__4_Ilefer;s1_a11_t
`
`represented by
`
`I). Peter Hochberg
`(See above for address)
`LEAD A TTORNE Y
`
`Martin Roth Gold
`
`(See above for address)
`LEAD A T?!’ORNEY
`
`represented by
`
`Steven H. Bazerman
`
`(See above for address)
`LEAD A TTORNEY
`
`Globai Trading industries, Inc.
`
`represented by
`
`D. Peter Hochberg
`(See above for address)
`LEAD A TTORNEY
`
`Martin Roth Gold
`
`(See above for address)
`LEAD ATTORNEY
`
`https://ecf.nysd.uscour£s.gov/cgi—bi.n/DktRpt.p£?881392172672226—L_801mG~1
`
`6/ 1 /2009
`
`

`
`SDNY CM/i:'L{,‘l*' Version 3.2.2
`
`rage 4 or 1U
`
`__.Cr9s§__Defendaut
`
`Benjamin E. Woomer
`
`Plaintiff
`
`Gruen Marketing Corp
`TERMINA TED: 12/14/1 992
`
`V.
`
`Ih_ir__dPaI:_ty Deefendaat
`
`Jerry Scixotenstein
`TERMINA TED: 12/14/1992
`
`§_2_I:.e.§_§....Claimaent
`
`Gruen Marketing Corp
`
`V.
`
`Cross eD_eiendant
`
`Globai Trading Industries, Inc.
`
`Cross eD5:fenda__n1
`
`Benjamin E. Woomer
`TERMINA TED: 01/24/1994
`
`represented by D. Peter Hoehherg
`(See above for address)
`LEAD A TTORNE Y
`
`Martin Roth Gold
`
`(See above for address)
`LEAD A TTORNEY
`
`represented by Steven H. Bazerman
`(See above for address)
`TERMINA TED: 12/1 4/] 992
`LEAD A TTORNE Y
`
`represented by Steven H. Bazerman
`(See above for address)
`LEAD A TTORNEY
`
`represented by D. Peter Hochberg
`(See above for address)
`LEAD A TTORNE Y
`
`Martin Roth Gold
`
`(See above for address)
`LEAD A TTORNEY
`
`represented by D. Peter Hoehberg
`(See above for address)
`TERMINA TED: 0]/24/I 994
`LEAD A TT()RNE Y
`
`Martin Roth Gold
`
`(See above for address)
`TERMINA TED: 01/24/1994
`LEAD ATTORNEY
`
`https2//ecfinysd.uscourtsgov/cgi~bin/DktRpt.pi?8813921 72672226~LM801_0-1
`
`6/3 /2009
`
`

`
`SUN Y CMJECF Version j.'.£..J.
`
`rage J or ru
`
`”I‘hird_P_a.rty...l_’Iaintiff
`
`Gruen Marketing Corp
`TERMINA TED: 12/14/1992
`
`V.
`
`"l‘hi:rdParty _D__e_ten_dant
`
`Jerry Schottenstein
`TERMINA TED: 12/I 4/1992
`
`gross :.C:laiman.t
`
`Global Trading Industries, Inc.
`
`Cross ,C.Kfe.£iI.!;._5:.I_!‘.l..1
`
`Benjamin E. Woomer
`
`V.
`
`Cross Defendant
`
`Gruen Marketing Corp
`
`named
`
`represented by Steven H. Bazerman
`(See above for address)
`TERMINA TED: I2/14/1992
`LEAD A TTORNE Y
`
`represented by 1). Peter Hochberg
`(See above for address)
`LEAD A TTORNE Y
`
`Martin Roth Gold
`
`(See above for address)
`LEAD A