Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91180212
`
`Plaintiff
`
`Schering Corporation
`David J. Kera
`
`Oblon, Spivak, McC|e||and, Maier, & Neustadt, P.C.
`1940 Duke Street
`Alexandria, VA 22314
`UNITED STATES
`tmdocket@ob|on.com, dkera@ob|on.com, obarrett@ob|on.com
`Motion for Sanctions
`
`Jonathan Hudis
`
`tmdocket@ob|on.com, jhudis@ob|on.com, bchapman@ob|on.com,
`dkera@ob|on.com, kbunn@ob|on.com
`/Jonathan Hudisl
`
`09/29/2009
`
`Motion for Sanctions -- F|NAL.PDF ( 15 pages )(693041 bytes)
`MFS - Exhibit A.PDF (9 pages )(271885 bytes )
`MFS - Exhibit B.PDF (9 pages )(272678 bytes )
`MFS - Exhibit C.PDF ( 13 pages )(595576 bytes)
`MFS - Exhibit D.PDF ( 20 pages )(794085 bytes)
`MFS - Exhibit E.PDF (29 pages )(1259549 bytes)
`MFS — Exhibit F.PDF ( 15 pages )(538594 bytes )
`MFS - Exhibit G.PDF (9 pages )(262963 bytes)
`MFS - Exhibit H.PDF ( 19 pages )(8056940 bytes)
`MFS - Exhibit |.PDF ( 11 pages )(330446 bytes )
`MFS — Exhibit J.PDF ( 26 pages )(143243 bytes)
`MFS - Exhibit K.PDF (26 pages )(2343925 bytes)
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA308709
`ESTTA Tracking number:
`09/29/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91180212
`Plaintiff
`Schering Corporation
`David J. Kera
`Oblon, Spivak, McClelland, Maier, & Neustadt, P.C.
`1940 Duke Street
`Alexandria, VA 22314
`UNITED STATES
`tmdocket@oblon.com, dkera@oblon.com, obarrett@oblon.com
`Motion for Sanctions
`Jonathan Hudis
`tmdocket@oblon.com, jhudis@oblon.com, bchapman@oblon.com,
`dkera@oblon.com, kbunn@oblon.com
`/Jonathan Hudis/
`09/29/2009
`Motion for Sanctions -- FINAL.PDF ( 15 pages )(693041 bytes )
`MFS - Exhibit A.PDF ( 9 pages )(271885 bytes )
`MFS - Exhibit B.PDF ( 9 pages )(272678 bytes )
`MFS - Exhibit C.PDF ( 13 pages )(595576 bytes )
`MFS - Exhibit D.PDF ( 20 pages )(794085 bytes )
`MFS - Exhibit E.PDF ( 29 pages )(1259549 bytes )
`MFS - Exhibit F.PDF ( 15 pages )(538594 bytes )
`MFS - Exhibit G.PDF ( 9 pages )(262963 bytes )
`MFS - Exhibit H.PDF ( 19 pages )(8056940 bytes )
`MFS - Exhibit I.PDF ( 11 pages )(330446 bytes )
`MFS - Exhibit J.PDF ( 26 pages )(143243 bytes )
`MFS - Exhibit K.PDF ( 26 pages )(2343925 bytes )
`
`

`
`Attorney Docket No.: 314399US69
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91/180,212
`Appln. Serial No. 77/070,074
`Mark:
`DIRACTIN
`
`)
`
`) )
`
`) )
`
`)
`)
`)
`
`)
`
`) )
`
`SCHERING CORPORATION,
`
`v.
`
`IDEA AG,
`
`Opposer,
`
`Applicant.
`
`OPPOSER’S MOTION FOR SANCTIONS, TO
`
`STRIKE APPLICANT’S ANSWER, FOR THE ENTRY
`OF JUDGMENT AND TO SUSPEND PROCEEDINGS
`
`Opposer, Schering Corporation (“Schering”), pursuant to Rules 37(b) and 40, Fed. R.,
`
`Civ. P., and Trademark Rules 2.l16(a), 2.117(c) and 2.l20(g)(1), submits this motion for
`
`sanctions against Applicant, Idea AG, for its failure to comply with a discovery order of the
`
`Board, to Strike Idea AG’s Answer, for the entry of judgment sustaining the Opposition and
`
`denying registration of the DIRACTIN mark to Idea AG, and to suspend proceedings pending
`
`the Board’s rulings on this motion.
`
`Basis of Opposition
`
`This Opposition, filed on October 22, 2007,
`
`is based upon Schering’s priority, and
`
`likelihood of confusion between Schering’s registered TINACTIN marks and Idea AG’s applied-
`
`for DIRACTIN mark.
`
`Idea AG’s Answer, filed on or about November 21, 2007, denies the
`
`salient allegations of Schering’s Notice of Opposition and asserts several Affirmative Defenses.
`
`

`
`Relevant Procedural History
`
`Schering’s written discovery (interrogatories, production requests and admissions’
`
`
`requests — Exhibits A B and C attached hereto) was served on Idea AG on May 12, 2008. After
`
`having been given several extensions, Idea AG’s initial discovery answers and responses
`
`
`(Exhibits D E and F attached hereto) were served on August 18, 2008.
`
`First Discovery Motion and Order
`
`Dissatisfied with Idea AG’s initial discovery answers and responses, on September 29,
`
`2008, Schering moved to compel further and full answers and responses, and to test
`
`the
`
`sufficiency of Idea AG’s admissions’ responses (“First Discovery Motion”).
`
`Idea AG opposed
`
`Schering’s discovery motion on October 14, 2008, and combined its opposition papers with a
`
`motion to modify the Board’s Standard Protective Order. On February 4, 2009, the Board issued
`
`its Order (“First Discovery Order”) denying Schering’s discovery motion; because the parties did
`
`not have sufficient good faith discussions to resolve their discovery disputes before Schering
`
`filed its motion. The Board also denied Idea AG’s motion to modify the Board’s Standard
`
`Protective Order.
`
`Second Discoveg Motion and Order
`
`As directed by the Board’s First Discovery Order, the parties engaged in several follow-
`
`up exchanges in an effort to resolve their discovery disputes — to no avail. Therefore, on April 3,
`
`2009, Schering filed its second motion to compel further and full answers and responses from
`
`Idea AG, and to test the sufficiency of Idea AG’s admissions’ responses (“Second Discovery
`
`Motion”). Once again, Idea AG opposed Schering’s discovery motion on April 17, 2009, and
`
`combined its opposition papers with a motion to modify the Board’s Standard Protective Order.
`
`

`
`On August 7, 2009, the Board issued a detailed 21-page Order (“Second Discovery
`
`Order”) granting Schering’s Second Discovery Motion in its entirety — directing Idea AG by
`
`September 6, 2009 to:
`
`0
`
`0
`
`0
`
`0
`
`0
`
`Provide further answers to Schering’s Interrogatories Nos. 4, 8-10, 12-14, 19, 20
`and 22 (unless any exceptions were noted in the Board’s Order);
`
`regarding Schering’s Production
`responses and documents
`Provide further
`Requests Nos. 1-37 inclusive (unless any exceptions were noted in the Board’s
`Order);
`
`Provide further responses to Schering’s Admissions’ Requests Nos. 1-1 1, 16-18
`and 20-23;
`
`Utilize the procedures of the Board’s Standard Protective Order to the extent that
`Idea AG’s
`supplemental
`answers,
`responses
`and/or produced documents
`contained confidential information; and
`
`Provide a log of materials withheld on grounds of attomey—client privilege.
`
`The Board overruled Idea AG’s numerous objections asserted in its initial discovery
`
`answers and responses, except those with respect to attomey—client privilege. The Board once
`
`again denied Idea AG’s motion to modify the Board’s Standard Protective Order.
`
`Idea AG’s Deficient Supplemental Discovery Answers and Responses
`
`On September 6, 2009, Idea AG served its supplemental discovery answers and responses
`
`
`(Exhibits G H and I attached hereto). Notwithstanding the Board having overruled Idea AG’s
`
`objections asserted in its initial discovery answers and responses, except those with respect to
`
`attomey—client privilege, Idea AG’s supplemental answers and responses are rife with multiple
`
`continued assertions of general and specific objections. Moreover, Idea AG’s supplemental
`
`interrogatory answers are unverified as required by Rule 33(b)(5), Fed. R. Civ. P. Additionally,
`
`in a great many of its discovery answers and responses, Idea AG continued to assert the attomey-
`
`client privilege as grounds for withholding information and/or materials; yet it did not provide a
`
`privilege log as the Board directed in its Second Discovery Order.
`
`-3-
`
`

`
`For the Board’s convenience, because Idea AG did not combine its supplemental answers
`
`and responses with the questions to which they relate, Schering attaches hereto as Exhibit J a list
`
`of each interrogatory, production request and admission request for which the Board directed
`
`further answers and responses, the portion of the Board’s Second Discovery Order discussing
`
`Idea AG’s obligations relating thereto, and Idea AG’s supplemental answer or response.
`
`Schering’s independent research — attached hereto as Exhibit K — also ascertained that Idea AG
`
`was not completely forthcoming in several of its supplemental answers and responses:
`
`Document(s)
`
`Reference Nos.
`
`BusinessWeek article noting that Idea AG closed upon a transaction with
`Alpharma Ireland Limited to license the rights to market the DIRACTIN
`product in the U.S. (October 12, 2007)
`
`Lifescience Online article noting that Idea AG received two milestone
`payments from Alpharma Ireland Limited under the parties’ license
`agreement (May 7, 2008)
`
`Idea AG press release announcing that it had submitted an application to
`market the DIRACTIN product in Europe to the European Agency for
`Evaluation of Medicinal Products (“EMEA”) (May 16, 2006)
`
`EMEA Q & A (press release) noting that Idea AG had withdrawn its
`application to market
`the DIRACTIN product
`in Europe in view of
`efficacy concerns (July 23, 2008)
`
`Idea AG press release announcing that it had been granted U.S. Patent
`No. 7,473,432 covering the bodily delivery of the DIRACTIN product
`(February 5, 2009)
`
`Intellectual Property Today article noting that Idea AG had been granted
`U.S. Patent No. 7,473,432 covering the bodily delivery of the
`DIRACTIN product (February 6, 2009)
`
`the
`Abstract of “Study of Safety and Efficacy of DIRACTIN for
`Treatment of Osteoarthritis of the Knee” (updated as of June 30, 2009) —
`from <clinicaltrials.gov> (a service of NIH)
`
`1-4
`
`5-8
`
`9-12
`
`13-14
`
`15-17
`
`18-21
`
`22-25
`
`

`
`Deficient Supplemental Interrogatory Answers —
`
`Because Idea AG continues to assert objections where its prior objections were overruled,
`
`Schering has no way of knowing whether Idea AG has provided complete answers to the
`
`following interrogatories:
`
`Interrogatory No. 4 — requesting identification of conception and adoption
`documents; answer: subject to objections, no non-privileged documents.
`
`Interrogatory No. 10 — requesting the identity of person(s) most knowledgeable
`about Idea AG’s sales, marketing, advertising and promotion of products bearing
`the DIRACTIN mark in the United States; answer: subject to objections, no
`knowledgeable persons.
`
`12 — requesting the identity of printed and electronic
`Interrogatory No.
`publications in which DIRACTIN products are described or referred to; answer:
`subject to objections, several publications are identified.
`
`Interrogatory No. 13 — requesting the identification of licenses, permissions or
`consents Idea AG entered into with others to use the DIRACTIN mark in the
`
`United States; answer; subject to objections, no agreements.
`
`Additionally, Idea AG’s answer to Interrogatory No. 13 is belied by publicly available
`
`information disclosing that in October 2007, Idea AG closed upon a transaction with Alpharma
`
`Ireland Limited (“Alpharma”) to license the rights to market the DIRACTIN product in the U.S.
`
`Alpharma made a payment pursuant to that agreement in May 2008. See Exhibit K attached
`
`hereto at pp. 1-8.
`
`Idea AG itself makes reference to this transaction in a press release that it
`
`produced among the limited number of documents it provided to Schering (see discussion below).
`
`Interrogatory No. 14 — requesting information relating to trade venues where
`DIRACTIN products have been promoted or are planned to be promoted in the
`United States; answer: subject to objections, no attendance at trade venues is
`planned.
`
`Moreover, regarding Interrogatory No. 14, Idea AG does not provide any information
`
`regarding its possible prior attendance trade venues to promote DIRACTIN products.
`
`

`
`0
`
`0
`
`requesting information
`Interrogatories Nos. 19-20 — regarding DIRACTIN,
`relating to Idea AG’s possible business relationship(s) with McNeil Specialty
`Pharmaceuticals / McNeil Consumer Specialty Pharmaceuticals, subsidiary of
`Johnson & Johnson, or TDT, subsidiary of Celtic Pharmaceutical Holdings L.P.;
`answers: subject to objections, no business relationships.
`
`Interrogatory No. 22 — requesting the identity of person(s) who supplied
`information for or participated in responding to, Schering’s interrogatories,
`production requests or admissions’ requests; answer: subject to objections, only
`Idea AG’s founder and CEO, Prof. Gregor Cevc, is identified.
`
`In addition to Idea AG continuing to assert objections where its objections previously
`
`were overruled, Idea AG clearly provided incomplete answers to the following interrogatories:
`
`0
`
`Interrogatories Nos. 8 and 9 — requesting the dates of first use, continued and
`periods of non-use of the DIRACTIN mark in commerce in or with the United
`States; answer: no first use or continued use in commerce except for confidential
`clinical trials before the FDA.
`
`Clinical trials before the FDA clearly are use in commerce of a mark in the United
`
`States.‘ Further, in order for clinical trials for DIRACTIN to be performed, Idea AG would have
`
`had to distribute to medical professionals vials of the drug with FDA-approved labeling bearing
`
`the mark as part of its Investigational New Drug Application. 21 C.F.R. § 312.23(a)(7)(iv)(d).
`
`Idea AG does not provide any information as to when the clinical trials before the FDA began or
`
`ended, when the FDA-approved vials of the drug bearing the DIRACTIN mark were distributed,
`
`or the quantities of the distribution. Apparently, these clinical trials before the FDA have been
`
`ongoing at least since July 2008 (See Exhibit K attached at pp. 22-25).
`
`' See, e.g., Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1303 (TTAB 2004) (referring to its earlier ruling in
`the cancellation action, the Board stated: “Congress intended the term ‘use in commerce’ to encompass shipments of
`pharmaceuticals for pre-clinical trials in this country and for clinical trials abroad prior to receiving FDA approval as
`a reflection of industry practice ....”) and Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1774 n. 8 (TTAB
`1994) (citing with approval to the legislative history of the Trademark Law Revision Act of 1998: “the language
`[‘use in commerce’] is flexible enough to encompass various genuine but less traditional uses such as those made in
`ongoing shipments of a new drug to clinical investigators by a company awaiting FDA approval.”).
`
`-6-
`
`

`
`Deficient Supplemental Responses to Production Requests ~
`
`The only documents that Idea AG produced accompanying its supplemental responses to
`
`Schering’s production requests, without any correlation to each of Schering’s individual
`
`Production Requests (as required by Rule 34(b)(2)(E)(i), Fed. Riv. Civ. P.), were the following:
`
`Document(s)
`
`Production Nos.
`
`Physician Package Rating Survey (2006-2007) — Marked Confidential
`
`“. .. ACTIN” USPTO/TESS Search (Aug. 14, 2008)
`
`1-19
`
`20-26
`
`Third Party Uses of “. .. ACTIN” Marks or References (Aug. 18, 2008)
`
`27-55
`
`Press Release Regarding DIRACTIN Licensing Agreement for the U.S.
`with Alpharma Ireland Limited (Sept. 6, 2007) — Marked Confidential (z)
`
`Press Release Regarding Idea AG Reacquiring North American Rights to
`the DIRACTIN mark from McNeil Consumer & Specialty Products
`(Aug. 2, 2006) — Marked Confidential (x)
`
`56-60
`
`61-64
`
`Moreover, because Idea AG continues to assert objections where its prior objections were
`
`overruled, Schering has no way of knowing whether Idea AG has provided complete responses
`
`to the following production requests:
`
`Production Reguests Nos. 1-5 — requesting the production of printed, electronic
`and broadcast media advertising, labels, packaging, printed promotional items,
`and electronic publications bearing the DIRACTIN mark with respect to the
`United States; responses: subject to objections, no non-privileged documents,
`except Idea AG promised to produce packaging specimens.
`
`Schering additionally notes that, regarding Production Request No. 3,
`
`the promised
`
`packaging specimens were never produced.
`
`Production Requests Nos. 6-14 — requesting production of creation, selection and
`adoption documents, consents, authorizations or permissions given to use the
`DIRACTIN mark in the United States,
`first use and continued use of the
`DIRACTIN mark in commerce in or with the United States, documents showing
`the products with which the mark has been used, and documents showing sales
`and advertising of DIRACTIN products in the United States; responses: subj ect to
`objections, Idea offered to provide non-privileged creation, selection and adoption
`
`

`
`documents,2 and stated that it would make its first use, continuous use, (a/k/a
`FDA-related documents) available in Munich, Germany; otherwise, no non-
`privileged documents.
`
`Schering filrther notes that, regarding Production Request No. 6, the promised creation,
`
`selection and adoption documents were never produced. With respect to Schering’s Production
`
`Requests Nos. 8 and 9, Idea AG inappropriately seeks to shift the burden of its discovery
`
`obligations from itself to Schering by making documents available in Munich, Germany rather
`
`than copying and producing them. At this late juncture, Idea AG’s proffer only to make its
`
`FDA-related documents available overseas amounts to non-compliance with the Board’s Second
`
`Discovery Order.
`
`0
`
`15 — requesting production of trademark search
`Production Request No.
`documents in connection with Idea AG’s adoption, use or application for
`registration of the DIRACTIN mark; response: subject to objections, Idea AG
`promised to produce non-privileged documents.
`
`The only “search—related” documents that Idea AG produced pertain to an “. .. ACTIN”
`
`search or searches conducted in or about August 2008 (Idea AG’s Production Documents Nos.
`20-55), which is well after Idea AG’s adoption, use or application for registration of the
`
`DIRACTIN mark;
`
`therefore rendering these documents irrelevant
`
`to Schering’s production
`
`request. Consequently, Idea AG did not produce relevant documents in supplemental response
`
`to Schering’s Production Request No. 15.
`
`0
`
`Production Reguests Nos. 16-18 — requesting production of statements, inquiries,
`comments or other communications by or from Idea AG’s customers, competitors,
`or other third parties regarding Schering or its TINACTIN marks, the quality of
`DIRACTIN products, or the DIRACTIN mark itself;
`responses: subject
`to
`objections, no non-privileged documents.
`
`Moreover, Idea AG’s responses to Production Requests Nos. 17-18 are belied by publicly
`
`available documents disclosing that Idea AG’s application to market the DIRACTIN product in
`
`2Bu1 see Idea AG’s supplemental answer to Interrogatory No. 4, in which Idea AG states that it is unaware of any such non-privileged documents.
`
`-3-
`
`

`
`the EU was withdrawn in view of concerns raised by the European Agency for Evaluation of
`
`Medicinal Products (“EMEA”) as to the efficacy of the product; as well as the file history of Idea
`
`AG’s recently-issued U.S. Patent No. 7,473,432 covering the bodily delivery of the DIRACTIN
`
`product. See Exhibit K attached hereto at pp. 9-21.
`
`0
`
`0
`
`Production Reguests Nos. 19-21 — requesting production of documents pertaining
`to actual confusion between the parties’ marks, channels of distribution through
`which DIRACTIN products are sold in the United States, and the categories of
`consumers with whom Idea AG does business or to whom Idea offers its products
`under the DIRACTIN mark; responses: subject to objections, no non—privileged
`documents.
`
`Production Request No. 22 — requesting production of documents regarding U.S.
`importers or distributors of DIRACTIN products; response: subject to objections,
`no non-privileged documents.
`
`Idea AG’s response to Production Request No. 22 also is belied by Idea AG’s agreement
`
`with Alpharma to license the rights to market the DIRACTIN product in the U.S. See Exhibit K
`
`attached hereto at pp. 1-8.
`
`Idea AG refers to this license in a press release that it produced to
`
`Schering. However, Idea AG never produced the license agreement or related documents,
`
`although ordered to do so.
`
`0
`
`Production Request No. 23 — requesting production of documents regarding
`surveys, market research tests, etc. regarding purchasers or potential purchasers of
`Idea AG’s DIRACTIN products sold in the United States; response: subject to
`objections, Idea AG promised to produce all non-privileged documents in its
`possession.
`
`The only document(s) Idea AG appears have produced in response to Production Request
`
`No. 23 is the report of a Physician Package Rating Survey (circa 2006-2007). Because Idea
`
`AG’s continues to assert objections, Schering as no way of knowing whether Idea AG fully
`
`complied with this production request.
`
`0
`
`Production Reguest No. 24 — requesting production of documents regarding
`licenses Idea AG granted to others to use the DIRACTIN mark; response: subject
`to objections, no non—privileged documents.
`
`

`
`Idea AG’s response to Production Request No. 24 is belied by Idea AG’s license granted
`
`to Alpharma (See Exhibit K at pp. 1-8) and Idea AG’s own press release that it produced.
`
`0
`
`Production Reguests Nos. 25-26 — requesting production of documents regarding
`Idea AG’s purchase of North American rights in compounds which directly or
`indirectly involve Idea AG’s DIRACTIN products from McNeil Specialty
`Pharmaceuticals / McNeil Consumer and Specialty Pharmaceuticals, subsidiary of
`Johnson & Johnson:
`responses: subject
`to objections,
`Idea offered to make
`responsive documents available in Munich, Germany.
`
`Once again, Idea AG inappropriately seeks to shift the burden of its discovery obligations
`
`from itself to Schering by making documents available in Munich, Germany rather than copying
`
`and producing them. This is tantamount to non-compliance with the Board’s Second Discovery
`
`Order.
`
`0
`
`Production Reguest No. 27 — requesting production of documents regardingldea
`AG’s bonafide intent to use the DIRACTIN mark in commerce; response: subject
`to objections, Idea offered to make responsive documents (a/k/a its FDA-related
`documents) available in Munich, Germany.
`
`Once more, Idea AG inappropriately seeks to shift the burden of its discovery obligations
`
`from itself to Schering by making documents available in Munich, Germany rather than copying
`
`and producing them. This again is tantamount to non-compliance with the Board’s Second
`
`Discovery Order.
`
`0
`
`Production Reguest No. 28 — requesting production of documents regarding
`market plans, marketing projections, or other marketing or market
`share
`documents;
`response: subject
`to objections,
`Idea AG promised to produce
`packaging specimens.
`
`Idea AG’s response to this production request is totally non-responsive. Moreover, the
`
`promised packaging specimens were never produced.
`
`0
`
`Production Reguests Nos. 29 — 34 — requesting production of documents regarding
`Idea AG’s relationship with TDT, subsidiary of Celtic Pharmaceutical Holdings
`LP, and any of Idea AG’s direct or indirect rights in the DIRACTIN mark
`previously owned by McNeil Specialty Pharmaceuticals, McNeil Consumer and
`Specialty Pharmaceuticals, Johnson & Johnson, TDT, or Celtic Phannaceutical
`
`-10-
`
`

`
`Holdings LP; responses: subject to objections, Idea offered to make responsive
`documents available in Munich, Germany.
`
`These are filrther instances in which Idea AG inappropriately seeks to shift the burden of
`
`its discovery obligations from itself to Schering by making documents available in Munich,
`
`Germany rather than copying and producing them. This is yet again equivalent
`
`to non-
`
`compliance with the Board’s Second Discovery Order.
`
`0
`
`Production Reguests Nos. 35-37 — requesting production of documents identified
`in Idea AG’s interrogatory answers, supporting or relating to the denial or
`qualification of Idea AG’s admissions’ responses, or referred to by Idea AG in
`responding to Schering’s interrogatories and admissions’ requests; responses:
`Idea AG essentially repeats and incorporates all of its prior objections, including
`(where previously mentioned),
`the proffer to make documents available in
`Munich Germany.
`
`Idea AG’s responses to Production Requests Nos. 35-37 essentially evidence its pattern
`
`of discovery non—compliance as detailed above.
`
`Deficient Supplemental Responses to Admissions ’ Requests —
`
`Because Idea AG continues to assert objections where its prior objections were overruled,
`
`Schering has no way of knowing whether Idea AG has provided sufficient responses to the
`
`following admissions’ requests:
`
`0
`
`0
`
`Admissions’ Requests Nos. 1-2 — regarding whether Idea AG has used the
`DIRACTIN mark in commerce; responses: subject to objections, Idea AG’s only
`use of the DIRACTIN mark in commerce is in clinical trials before the FDA.
`
`Admission Reguest No. 3 — regarding whether Idea AG can claim rights in the
`DIRACTIN mark prior to its application filing date (December 22, 2006);
`response: subject to objections, Idea AG’s only use of the DIRACTIN mark in
`commerce is in clinical trials before the FDA.
`
`In addition to asserting inappropriate objections, Idea AG’s response to Admission
`
`Request No. 3 continues to be non-responsive.
`
`0
`
`Admissions’ Reguests Nos. 4-5 — regarding whether Idea AG has a bona fide
`intent to use the DIRACTIN mark in commerce connection with certain identified
`
`-11-
`
`

`
`goods; responses: subject to objections, Idea AG asserts it does have a bona fide
`intent to use the DIRACTIN mark in commerce.
`
`Admissions’ Reguests Nos. 6-9 — regarding whether Idea AG failed to search for
`possibly conflicting marks prior to its selection of or the filing of its application to
`register the DIRACTIN mark; responses: subject to objections, Idea denies these
`admissions’ requests.
`
`Admissions’ Reguests Nos. 10-ll — regarding whether Idea AG knew about
`Schering’s TINACTIN marks prior to Idea AG’s selection of or the filing of its
`application to register the DIRACTIN mark; responses: subject to objections, Idea
`AG admits to indirect knowledge of Schering’s marks.
`
`Admissions’ Reguests Nos. 16-18 — regarding whether Idea AG’s counsel signed
`the Declaration supporting the DIRACTIN Application and attested to the facts
`contained therein, and submitted a statement to the USPTO that DIRACTIN has
`no known significance in Idea AG’s trade or
`industry, any geographical
`significance, or any meaning in a foreign language;
`responses:
`subject
`to
`objections, Idea AG admits to these facts.
`
`Admissions’ Reguests Nos. 20-23 — regarding the authenticity of and the truth of
`certain statements made in pages from Idea AG’s web site; responses: subject to
`objections, Idea AG admits to these facts.
`
`0
`
`0
`
`0
`
`0
`
`Sanctions and the Issuance of a Default Judgment are Appropriate at This Time
`
`The first sentence of Trademark Rule 2. 1 20(g)(l) provides:
`
`If a party fails to participate in the required discovery conference, or if a party
`fails to comply with an order of the Trademark Trial and Appeal Board relating
`to disclosure or discovery, including a protective order, the Board may make any
`appropriate order, including those provided in Rule 3 7(b)(2) of the Federal Rules
`of Civil Procedure, except that the Board will not hold any person in contempt or
`award expenses to any party. (emphasis added).
`
`Rule 37(b)(2)(A), Fed. R. Civ. P., in relevant part, states:
`
`the court
`fails to obey an order to provide or permit discovery,
`If a party
`where the action is pending may issue further just orders. They may include the
`following:
`
`(iii) striking pleadings in whole or in part; [or]
`
`(vi) rendering a defaultjudgment against the disobedient party
`(emphasis added).
`
`-12-
`
`

`
`If a party fails to comply with a Board Order relating to discovery,
`
`imposing the
`
`sanctions provided in Trademark Rule 2.120(g)(l) and Rule 370)), Fed. R. Civ. P., noted above,
`
`can be appropriate if warranted by the circumstances. See, M.C.I. Foods Inc. v. Bunte, 86
`
`USPQ2d 1044, 1047-48 (TTAB 2008). Where the Applicant has flouted discovery rulings, the
`
`Board has imposed the ultimate sanction of striking an Applicant’s Answer, entering a default
`
`judgment, sustaining an opposition and refusing registration. Baron Philippe de Rothschild S.A.
`
`v. Styl-Rite Optical Mfg. Co., 55 USPQ2d 1848, 1854 (TTAB 2000); Caterpillar Tractor Co. v.
`
`Catfish Anglers Together, Inc., 194 USPQ 99, 100 (TTAB 1977).
`
`Idea AG has flouted the Board’s rulings in its Second Discovery Order on numerous
`
`occasions, as outlined above. Despite two rounds of motion practice and ultimately having been
`
`ordered to do so by the Board’s Second Discovery Order, Idea AG has not provided complete
`
`discovery answers or responses, has not provided a multitude of discovery documents, has
`
`provided arguably false answers and responses, did not supply verified interrogatory answers,
`
`did not produce a privilege log, did not correlate its produced documents to Schering’s
`
`production requests, and continued to assert objections when its earlier objections were overruled.
`
`The ultimate sanction of default judgment against Idea AG therefore is appropriate at this time.
`
`Proceedings Should be Suspended
`
`“Proceedings may
`
`be suspended, for good cause, upon motion
`
`approved by the
`
`Board.” Trademark Rule 2.117(0).
`
`Idea AG’s failure to provide its full and complete discovery
`
`answers, responses and documents has prevented this Opposition from proceeding further
`
`without severe prejudice to Opposer. Schering therefore has shown good cause, and requests
`
`that the Opposition be deemed suspended as of the filing and service of this motion.
`
`-13-
`
`

`
`Conclusion
`
`For the foregoing reasons, Opposer, Schering Corporation, requests that the Board grant
`
`its motion and issue an Order, (i) issuing sanctions against Applicant, Idea AG, for its failure to
`
`comply with a discovery order of the Board, (ii) striking Applicant’s Answer, and (iii) entering
`
`judgment in Schering Corporation’s favor —- sustaining the Opposition and denying registration
`
`of the DIRACTIN mark to Idea AG. Opposer further requests that
`
`the Board suspend
`
`proceedings pending the Board’s rulings on this motion.
`
`Respectfully submitted,
`
`SCHERING CORPORATION
`
`
` Jgfnathan Hudis
`
`eth A. Chapman
`David J. Kera
`
`Oblon, Spivak, McClel1and,
`Maier & Neustadt, L.L.P.
`1940 Duke Street
`
`Alexandria, Virginia 22314
`(703) 413-3000
`fax (703) 413-2220
`e—mail: tmdocket@0bl0n. com
`
`Date:
`JH/klb
`
`September 29, 2009
`{1842966_1.DOC}
`
`-14-
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing OPPOSER’S MOTION FOR
`
`SANCTIONS, TO STRIKE APPLICANT’S ANSWER, FOR THE ENTRY OF
`
`JUDGMENT AND TO SUSPEND PROCEEDINGS was served on counsel for Applicant, this
`
`29m day of September, 2009, by sending same via First Class mail, prepaid, to:
`
`Eric J. Sidebotham
`
`Daniel M. Shafer
`
`ERIC J. SIDEBOTHAM, APC
`2033 Gateway Place, 5”‘ Floor
`San Jose, CA 95110
`
`

`
`EXHIBIT A
`
`EXHIBIT A
`
`

`
`Attorney Docket No.: 314399US2l
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91/180,212
`Appln. Serial No. 77/070,074
`Mark:
`DHKACTIN
`
`)
`
`) )
`
`) )
`
`)
`)
`)
`)
`
`) )
`
`SCHERJNG CORPORATION,
`
`V
`
`IDEA AG,
`
`Opposer,
`
`Applicant.
`
`The Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`OPPOSER’S FIRST SET OF INTERROGATORIES TO APPLICANT
`
`Opposer, SCHERING CORPORATION (“Opposer”), by and through its attorneys,
`
`hereby serves the following interrogatories under Rule 33, Fed.R.Civ.P., and Rules 2.116 and
`
`2.120 of the Trademark Rules of Practice of the United States Patent and Trademark Office, to
`
`be answered separately and fully in writing under oath by Applicant, IDEA AG, (“Applicant”).
`
`DEFINITIONS AND INSTRUCTIONS
`
`Each separately numbered or lettered sub-part of each interrogatory requires a separate
`
`answer thereto. Furthermore, these interrogatories shall be deemed to be continuing to the fullest
`
`extent permitted by the Rules and Applicant shall provide Opposer with any supplemental
`
`answers and additional information responsive to the interrogatories which becomes available to
`
`Applicant at a later date.
`
`

`
`The following interrogatories and requests are subject to the definitions set forth below:
`
`A.
`
`The term “document” shall be construed in its broadest permissible sense, and
`
`shall include any and all means of conveying, storing or memorializing information, whether in
`
`paper, electronic or other form, in the possession, custody or control of Applicant.
`
`B.
`
`The term “person” shall include, but is not limited to, any natural or juristic
`
`person.
`
`C.
`
`“Identify” when used with reference to a natural person means to state the
`
`person’s fiill name and present or last-known address, his or her current and prior employment
`
`positions and affiliations, and the dates of each.
`
`“Identify” when used with reference to any
`
`juristic person means to state that person’s full name and form of legal existence, present or last-
`
`known address, and relationship, if any, to Applicant.
`
`D.
`
`“Identify” when used with reference to a document means to state the date and
`
`au