BULKY DOCUMENTS
`
`(Exceeds 300 pages)
`
`Proceeding/ Serial No: 9 1 1 8073 1
`
`Filed: 10-05-08
`
`Title: DECLARATION OF MARIE C. SEIBEL IN
`
`SUPPORT OF OPPOSERS MOTION FOR SUMMARY
`
`JUDGEMENT
`
`Part 1 of 2
`
`
`
`Processed by Curtis Puryear
`
`

`
`TRADEMARK
`Attorney Docket No. 020750-092700US
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application No. 77/155,179
`Filed: April 12, 2007
`Published: October 9, 2007 in the Official Gazette
`For: V-POD
`
`In re Application No. 77/155,124
`Filed: April 12, 2007
`Published: October 9, 2007 in the Official Gazette
`For: VIBE-POD
`
`In re Application No. 77/155,084
`‘
`Filed: April 12, 2007
`Published: October 9, 2007 in the Official Gazette
`For: VIBRO-POD
`
`APPLE INC.,
`
`OPPOSGT,
`
`V‘
`
`Opposition No. 91/180,731
`
`DECLARATION OF MARIE C. SEIBEL
`IN SUPPORT OF OPPOSER'S MOTION
`
`FOR SUMMARY JUDGMENT
`
`Applicant.
`
`CALIFORNIA EXOTIC NOVELTIES LLC
`
`1.
`
`1, Marie C. Seibel, am an attorney at Townsend and Townsend and Crew LLP,
`
`attorneys for Apple Inc. (hereinafter "Apple"). I submit this declaration in support of Apple's
`
`Motion for Summary Judgment.
`
`2.
`
`Attached hereto as Exhibit A are true and correct copies of the Certificates of
`
`Registration Nos. 2,835,698, 3,089,360 and 3,341,191 for the IPOD mark and a current TARR
`
`record for Application Serial No. 78/459,101 for the POD mark.
`
`3.
`
`Attached hereto as Exhibit B is a true and correct copy of Opposer's Requests for
`
`Admission, which I caused to be properly served on May 23, 2008, to which Applicant has not
`
`responded.
`
`DECLARATION OF MARIE C. SEIBEL IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT
`
`

`
`.
`
`.
`
`TRADEMARK
`
`Attorney Docket No. 020750-092700US
`
`4.
`
`Attached hereto as Exhibit C are true and correct copies of excerpts from
`
`California Exotic Novelties‘ 2007-2008 catalog and pages from its website as it existed on
`
`September 9, 2008.
`
`5.
`
`Attached hereto as Exhibit D is a true and correct copy of an August 30, 2007
`
`‘ article on Xfanz, entitled CalExotz'cs Releases Musical Vibe.
`
`6.
`
`Attached hereto as Exhibit E is a true and correct copy of results generated from
`
`searches of Applicant's website performed on September 9, 2008.
`
`7.
`
`Attached hereto as Exhibit F is a true and correct copy of pages from websites at
`
`http://wwwromanticgifis.com/vipoddimust.html and
`
`http://www.wetlandsonline.com/vibropoddigitalmusicvibeipodvibratormp3vibrator.aspx as they
`
`existed on September 9, 2008.
`
`Having been warned that willful false statements and the like so made are punishable by
`
`R fine or imprisonment, or both, under Section 10001 of Title 18 of the United States Code, and
`
`hat such willful false statements may jeopardize the validity of the application or any
`
`registration resulting therefrom, I further declare that all statements made herein of my own
`
`
`
`e/L\
`
`Marie C. Seibel
`
`DECLARATION OF MARIE C. SEIBEL IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT
`
`2
`
`

`
`

`
`Int. Cl.: 9
`
`Prior U.S. C1s.: 21, 23, 26, 36 and 38
`United States Patent and Trademark Office
`
`Corrected
`
`Reg. No. 2,835,698
`
`Registered Apr. 27, 2004
`
`OG Date Sea. 20, 2005
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`IPOD
`
`APPLE COMPUTER, INC. (CALIFORNIA
`CORPORATION)
`1 mrrmrre LOOP
`CUPERTINO, CA 95014
`1>ruo1u'nr CLAIMED UNDER sac.
`44(1)) on SWITZERLAND APPLICATION
`NO. osa12/2oo1, men 8-31-2001.
`
`FOR: PORTABLE AND HANDHELD
`DIGITAL ELECTRONIC DEVICES FOR
`RECORDING, ORGANIZING, TRANS-
`
`MITTING, MANIPULATING, AND RE-
`VIEWING AUDIO FILES; COMPUTER
`SOFTWARE FOR USE IN ORGANIZING,
`TRANSMITTING, MANIPULATING, AND
`REVIEWING AUDIO FILES ON PORTA-
`BLE AND HANDHELD DIGITAL ELEC-
`TRONIC DEVICES,
`IN CLASS 9 (U.S.
`CLS. 21, 23, 26, 36 AND 38).
`FIRST USE 10-23-2001; IN COMMERCE
`10-23-2001.
`SER. NO. 75-982,871, FILED I0-18-2001.
`
`In testimony whereof I have hereunto set my hand
`and caused the seal of The Patent and Trademark
`Oflice to be affixed on Sep. 20, 2005.
`
`DIRECTOR OF THE U.S. PATENT AND TRADEMARK OFFICE
`
`

`
`Int. Cl.: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36 and 38
`
`Reg. No. 3,089,360
`United States Patent and Trademark Office
`Registered May 9, 2006
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`IPOD
`
`APPLE COMPUTER,
`PORATION)
`1 INFINITE LOOP
`CUPERTINO, CA 95014
`
`INC.
`
`(CALIFORNIA COR-
`
`NIC DEVICES, IN CLASS 9 (us. CLS. 21, 23, 26, 36
`AND 38).
`
`FIRST USE 10-23-2001; IN COMMERCE 10-23-2001.
`
`PRIORITY CLAIMED UNDER SEC. 44(D) ON
`SWITZERLAND APPLICATION NO. 086122001,
`FILED 8-31-2001.
`
`SER. NO. 78-089,144, FILED 10-18-2001.
`
`DEZMONA MIZELLE, EXAMINING ATTORNEY
`
`FOR: PORTABLE AND HANDHELD DIGITAL
`ELECTRONIC DEVICES FOR RECORDING, ORGA-
`NIZING, TRANSMITTING, MANIPULATING, AND
`REVIEWING TEXT, DATA, AND AUDIO FILES;
`COMPUTER SOFTWARE FOR USE IN ORGANIZ-
`ING, TRANSMITTING, MANIPULATING, AND RE-
`VIEWING TEXT, DATA, AND AUDIO FILES ON
`PORTABLE AND HANDHELD DIGITAL ELECTRO-
`
`
`
`

`
`Int. Cl.: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`
`Reg. No. 3,341,191
`United States Patent and Trademark Office
`Registered Nov. 20, 2007
`
`TRADEMARK
`
`PRHVCIPAL REGISTER
`
`APPLE INC. (CALIFORNIA CORPORATION)
`1 INFINITE LOOP
`CUPERTINO, CA 95014
`
`FOR: FULL LINE OF ELECTRONIC AND ME-
`CHANICAL PARTS AND FITTINGS FOR PORTA-
`BLE AND HANDHELD DIGITAL ELECTRONIC
`DEVICES FOR RECORDING, ORGANIZING,
`TRANSMITTING, MANIPULATING, AND RE-
`VIEWING TEXT, DATA, AUDIO AND VIDEO FILES;
`ELECTRONIC DOCKING STATIONS; STANDS SPE-
`CIALLY DESIGNED FOR HOLDING PORTABLE
`AND HANDHELD DIGITAL ELECTRONIC DEVI-
`CES; BATTERY CHARGERS; BATTERY PACKS;
`ELECTRICAL CONNECTORS, WIRES, CABLES,
`AND ADAPTORS; WIRED AND WIRELESS RE-
`MOTE CONTROLS FOR PORTABLE AND HAND-
`HELD DIGITAL ELECTRONIC DEVICES;
`HEADPHONES AND EARPHONES; STEREO AM-
`PLIFIER AND SPEAKER BASE STATIONS; AUTO-
`MOBILE STEREO ADAPTERS; AUDIO
`RECORDERS; RADIO RECEIVERS; RADIO TRANS-
`MITTERS; VIDEO VIEWERS, NAMELY VIDEO
`MONITORS FOR PORTABLE AND HANDHELD
`DIGITAL ELECTRONIC DEVICES; AND COMPU-
`TER SOFTWARE FOR PORTABLE AND HAND-
`HELD DIGITAL ELECTRONIC DEVICES FOR
`RECORDING, ORGANIZING, TRANSMITTING,
`
`MANIPULATING, AND REVIEWING TEXT, DATA,
`AUDIO, IMAGE, AND VIDEO FILES; COMPUTER
`APPLICATION SOFTWARE FOR RECORDING
`AND ORGANIZING CALENDARS AND SCHE-
`DULES, TO-DO LISTS, AND CONTACT INFORMA-
`TION; COMPUTER GAME SOFTWARE; AND,
`COMPUTER SOFTWARE FOR CLOCK AND
`ALARM CLOCK FUNCTIONALITY; CARRYING
`CASES, ALL FOR USE WITH PORTABLE AND
`HANDHELD DIGITAL ELECTRONIC DEVICES
`FOR RECORDING, ORGANIZING, TRANSMIT-
`TING, MANIPULATING, AND REVIEWING TEXT,
`DATA, AUDIO, IMAGE, AND VIDEO FILES, IN
`CLASS 9 (US. CLS. 21, 23, 26, 36 AND 38).
`
`FIRST USE 10-23-2001; IN COMMERCE 10-23-2001.
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`OWNER OF U.S. REG. NOS. 2,781,793 AND
`2,835,698.
`
`SN 78-653,661, FILED 6-18-2005.
`
`CAROLINE WOOD, EXAMINING ATTORNEY
`
`

`
`I Thank you for your request. Here are the latest results from the
`
`This page was generated by the TARR system on 2008- 10-03 18:39:41 ET
`
`
`
`Serial Number: 78459101 Assi ment In.fom1ation Trademark Document Retrieval
`
`Registration Number: (NOT AVAILABLE)
`
`Mark
`
`POD
`
`(words only): POD
`
`Standard Character claim: Yes
`
`Current Status: An opposition is now pending at the Trademark Trial and Appeal Board.
`
`Date of Status: 2007-02-12
`
`Filing Date: 2004-07-29
`
`Transformed into a National Application: No
`
`A Registration Date: (DATE NOT AVAILABLE)
`V Register: Principal
`: Law Office Assigned: LAW OFFICE 103
`
`Attorney Assigned:
`MADDEN ANNE THERESE
`
`Current Location: 845 -TTAB
`
`Date In Location: 2008-01-12
`
`
`
`Apple Computer, Inc.
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`,_:rAddress:
`.'«( "Apple Computer, Inc.
`‘
`1 Infinite Loop
`5- Cupertino, CA 95014
`‘ United States
`
`- Legal Entity Type: Corporation
`; State or Country of Incorporation: Ca1i.fornia
`1 {bone Number: 408-974-2385
`: Fax Number: 408-253-0186
`
`

`
`‘
`
`GOODS AND/OR SERVICES .
`
`International Class: 009
`
`Class Status: Active
`portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing
`audio files, and peripherals for use therewith; computer software for use in organizing, transmitting, manipulating, and
`reviewing audio files on portable and handheld digital electronic devices
`Basis: 1(b), 44(0)
`First Use Date: (DATE NOT AVAILABLE)
`First Use in Commerce Date: (DATE NOT AVAILABLE)
`
`ADDITIONAL INFORMATION
`
`Prior Registration Number(s):
`2835698
`
`Foreign Application Number: 3634623
`Foreign Registration Number: 3634623
`Foreign Registration Date: 2005-12-21
`Country: Elpn Crnnty TM Ofc
`Foreign Filing Date: 2004-01-30
`Foreign Expiration Date: 2014-01-30
`
`(NOT AVAILABLE)
`
`MADRID PROTOCOL INFORMATION
`
`PROSECUTION HISTORY
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document Retrieval" shown
`near the top of this page.
`
`
`
`2008-01.-03 - Opposition terminated for Proceeding
`2008-01-03 - Opposition dismissed for Proceeding
`
`2007-02-12 - Opposition instituted for Proceeding
`
`2007-02-07 - Assigmnent Of Ownership Not Updated Automatically
`
`2006-12-22 - Opposition instituted for Proceeding
`
`2006-08-30 - Extension. Of Time To Oppose Received
`‘E52006-O8-1.5 - Published for opposition
`2006-07-26 - "Notice ofpublication
`
`“_
`
`' 2006-06-26 — Law Office Publication Review Completed
`
`2006-06-23 - Assigned To LIE
`
`2006-06-20 - Approved for Pub - Principal Register (Initial exam)
`
`

`
`r 2006-05-11 - Teas/Email Correspondence Entered
`2006-05-01 - Communication receivedyoni applicant
`
`2006-05-01. - TEAS Response to Office Action Received
`
`2006-02-27 - LIE Checked Susp - To Atty For Action
`
`2005-08-25 - Letter of suspension mailed
`
`2005-08-24 - Suspension Letter Written
`
`2005-08-24 - Teas/Email Correspondence Entered
`
`2005-08-18 - Communication received from applicant
`
`2005-08-18 - TEAS Response to Office Action "Received
`
`2005-03-16 - N'on.-final. action mailed
`
`2005-03-03 - Non-Final Action Written
`
`2005-03-03 - Assigned To Examiner
`
`2004-08-10 - New Application Entered In Tram
`
`ATTORNEY/CORRESPONDENT INFORMATION
`
`
`
`Attorney of Record
`Thomas R. La Perle
`
`Correspondent
`7 Margaret C. McHugh, Esq.
`TOWNSEND AND TOWNSEND AND CREW LLP
`A. TWO EMBARCADERO CENTER 8TH FLOOR
`SAN FRANCISCO, CA 94111-3834
`5 Phone Number: 408-974-2385
`Fax Number: 408-253-0186
`
`

`
`

`
`Attorney Docket No. 020750-092700US
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application No. 77/155,179
`Filed: April 12, 2007
`Published: October 9, 2007 in the Official Gazette
`For: V-POD
`
`In re Application No. 77/155,124
`Filed: April 12, 2007
`Published: October 9, 2007 in the Official Gazette
`For: VIBE-POD
`
`In re Application No. 77/155,084
`Filed: April 12, 2007
`Published: October 9, 2007 in the Official Gazette
`For: VIBRO-POD
`
`APPLE INC.,
`
`Opposition No. 91180731
`
`Opposer,
`
`‘'5'
`
`Applicant.
`
`OPPOSER'S FIRST SET RE UESTS
`FOR ADMISSION TO APPLICANT
`
`CALIFORNIA EXOTIC NOVELTIES LLC
`
`Pursuant to Rule 36 of the Federal Rules of Civil Procedure and Rule 2.120 of the
`
`Trademark Rules of Practice, Opposer Apple Inc. ("Opposer"), by its attorneys, requests that
`
`Applicant California Exotic Novelties LLC ("Applicant") admit or deny the following requests
`
`for admission under oath within thirty (30) days from the date hereof.
`
`DEFINITIONS
`
`1.
`
`"Opposer" refers to Apple Inc., its officers, directors, employees, agents,
`
`-Opposer's First Set of Request for Admissions -
`
`1
`
`

`
`0
`
`Opposition No. 91180731
`
`Attorney Docket No. 020750-092700US
`
`predecessors-in-interest, or any other Person acting on its behalf or with its authority.
`
`2.
`
`"Applicant," "You," or "Your" refers to California Exotic Novelties LLC or any
`
`other Person acting on its behalf or with its authority.
`
`3.
`
`"Opposer's Marks" means the mark IPOD, which is the subject of, inter alia, U.S.
`
`Trademark Registration Nos. 2,835,698, 3,089,360, and 3,341,191, and the mark POD, which is
`
`the subject of U.S. Trademark Application Serial No. 78/459,101.
`
`4.
`
`"Your Marks" means Applicant's V-POD, VlBE—POD, VIBRO—POD and VIBRO
`
`POD marks, which are the subject of this proceeding, whether used as trademarks, service marks,
`
`trade names, or corporate names, either alone or in association with other words or designs. To
`
`the extent that this definition includes more than one word, phrase, name, term, trademark or
`
`service mark, responses should be made separately for each.
`
`5.
`
`"Your Applications" means Application Serial Nos. 77/155,179, 77/155,124 and
`
`77/155,084 that are the subject of this proceeding.
`
`REQUESTS FOR ADMISSION
`
`REQUEST NO. 1:
`
`Admit that You are aware that Opposer promotes and sells portable and handheld digital
`
`electronic devices for playing audio and video files under Opposer's IPOD mark in the U.S.
`
`REQUEST NO. 2:
`
`Admit that You were aware that Opposer promoted and sold portable and handheld
`
`digital devices for playing audio and video files under Opposer's IPOD mark in the U.S. prior to
`
`Your filing of Your application to register V-POD.
`
`REQUEST NO. 3:
`
`-Opposer's First Set of Request for Production of Documents -
`
`2
`
`

`
`0
`
`Opposition No. 91180731
`
`Attorney Docket No. 020750-092700US
`
`Admit that You were aware that Opposer promoted and sold portable and handheld
`
`digital devices for playing audio and video files under Opposer's [POD mark in the U.S. prior to
`
`Your filing of Your application to register VIBE-POD.
`
`REQUEST NO. 4:
`
`Admit that You were aware that Opposer promoted and sold portable and handheld
`
`digital devices for playing audio and video files under Opposer's IPOD mark in the U.S. prior to
`
`Your filing of Your application to register VIBRO-POD.
`
`REQUEST N0. 5:
`
`Admit that Your awareness of Opposer's Marks or H’OD product influenced Your
`
`decision to adopt Your V-POD mark.
`
`REQUEST NO. 6:
`
`Admit that Your awareness of Opposer's Marks or IPOD product influenced Your
`
`decision to adopt Your VIBE-POD mark.
`
`REQUEST NO. 7:
`
`Admit that Your awareness of Opposer's Marks or IPOD product influenced Your
`
`decision to adopt Your VIBRO-POD mark.
`
`REQUEST NO. 8:
`
`Admit that Your awareness of Opposer's Marks or IPOD product influenced Your
`
`decision to adopt Your VIBRO POD mark.
`
`REQUEST NO. 9:
`
`Admit that Opposer's Marks or Opposer's IPOD product were discussed, mentioned,
`
`considered, or referenced in connection with Your decision to adopt Your V-POD mark.
`
`REQUEST NO. 10:
`
`-Opposer's First Set of Request for Production of Documents -
`
`

`
`D
`
`0
`
`Opposition No. 91180731
`
`Attorney Docket No. 020750-092700US
`
`Admit that Opposer's Marks or Opposer's IPOD product were discussed, mentioned,
`
`considered, or referenced in connection with Your decision to adopt Your VIBE-POD mark.
`
`REQUEST N0. 11:
`
`Admit that Opposer's Marks or Opposer's IPOD product were discussed, mentioned,
`
`considered, or referenced in connection with Your decision to adopt Your VIBRO-POD mark.
`
`REQUEST NO. 12:
`
`Admit that Opposer's Marks or Opposer's IPOD product were discussed, mentioned,
`
`considered, or referenced in connection with Your decision to adopt Your VIBRO POD mark.
`
`REQUEST NO. 13:
`
`Admit You intended to refer to or call to mind Opposer's Marks or Opposer's IPOD
`
`product when you created or adopted Your V-POD mark.
`
`REQUEST NO. 14:
`
`Admit You intended to refer to or call to mind Opposer's Marks or Opposer's IPOD
`
`product when you created or adopted Your VIBE-POD mark.
`
`REQUEST NO. 15:
`
`Admit You intended to refer to or call to mind Opposer's Marks or Opposer's IPOD
`
`product when you created or adopted Your VIBRO-POD mark.
`
`REQUEST N0. 16:
`
`Admit You intended to refer to or call to mind Opposer's Marks or Opposer's IPOD
`
`product when you created or adopted Your VEBRO POD mark.
`
`REQUEST N0. 17:
`
`Admit that the dominant portion of Your V-POD mark is the word POD.
`
`REQUEST NO. 18:
`
`-Opposer's First Set of Request for Production of Documents -
`
`4
`
`

`
`0
`
`0
`
`Opposition No. 91180731
`
`Attorney Docket No. 020750-092700US
`
`Admit that the dominant portion of Your VIBE-POD mark is the word POD.
`
`REQUEST NO. 19:
`
`Admit that the dominant portion of Your VIBRO-POD mark is the word POD.
`
`REQUEST N0. 20:
`
`.
`
`Admit that the dominant portion of Your VIBRO POD mark is the word POD.
`
`REQUEST NO. 21:
`
`Admit that Your V-POD mark incorporates Opposer's IPOD mark in substantial part.
`
`REQUEST NO. 22:
`
`Admit that Your VIBE-POD mark incorporates Opposer's IPOD mark in substantial part.
`
`REQUEST NO. 23:
`
`Admit that Your VIBRO-POD mark incorporates Opposer's IPOD mark in substantial
`
`part.
`
`REQUEST N0. 24:
`
`Admit that Your VIBRO POD mark incorporates Opposer's IPOD mark in substantial
`
`part.
`
`REQUEST NO. 25:
`
`Admit that Your V-POD mark incorporates Opposer's POD mark in its entirety.
`
`REQUEST NO. 26:
`
`Admit that Your VIBE-POD mark incorporates Opposer's POD mark in its entirety.
`
`REQUEST NO. 27:
`
`Admit that Your V1BRO—POD mark incorporates Opposer's POD mark in its entirety.
`
`REQUEST N0. 23:
`
`Admit that Your VIBRO POD mark incorporates Opposer's POD mark in its entirety.
`
`-Opposer's First Set of Request for Production of Documents —
`
`5
`
`

`
`Opposition No. 91180731
`Attorney Docket No. 020750-092700US
`
`REQUEST NO. 29:
`
`Admit that there is a potential for confusion between Your V-POD mark and Opposer's
`
`Marks.
`
`REQUEST N0. 30:
`
`Admit that there is a potential for C0l'lf1lSl01‘l between Your VIBE-POD mark and
`
`Opposer's Marks.
`
`REQUEST NO. 31:
`
`Admit that there is a potential for confusion between Your VIBRO-POD mark and
`
`Opposer's Marks.
`
`REQUEST NO. 32:
`
`Admit that there is a potential for confusion between Your VIBRO POD mark and
`
`Opposer's Marks.
`
`REQUEST N0. 33:
`
`Admit that You did not use any of Your Marks in commerce prior to April 12, 2007.
`1
`
`REQUEST NO. 34:
`
`Admit that the "adult sexual aids, namely, vibrators" identified in Your Applications can
`
`be used in connection with MP3 players.
`
`REQUEST NO. 35:
`
`Admit that the "adult sexual aids, namely, vibrators" identified in Your Applications are
`
`intended for use with MP3 players.
`
`REQUEST NO. 36:
`
`Admit that the "adult sexual aids, namely, vibrators" identified in Your Applications can
`
`be used in connection with portable and handheld digital electronic devices for playing audio
`
`-Opposer's First Set of Request for Production of Documents -
`
`6
`
`

`
`O
`
`0
`
`Opposition No. 91180731
`
`Attorney Docket No. 020750-092700US
`
`files.
`
`REQUEST NO. 37:
`
`Admit that the "adult sexual aids, namely, vibrators" identified in Your Applications are
`
`intended for use with portable and handheld digital electronic devices for playing audio files.
`
`REQUEST NO. 38:
`
`Admit that the "adult sexual aids, namely, vibrators" identified in Your Applications can
`
`be used in connection with Opposer's [POD products.
`
`REQUEST NO. 39:
`
`Admit that the "adult sexual aids, namely, vibrators" identified in Your Applications are
`
`intended for use with Opposer's IPOD products.
`
`REQUEST NO. 40:
`
`Admit that You are aware that some of Your customers use the adult sexual aids, namely,
`
`vibrators, as identified in Your Applications, in connection with Opposer's IPOD product.
`
`REQUEST N0. 41:
`
`Admit that You are aware that some of Your customers use the adult sexual aids sold
`
`under the VIBRO POD mark in connection with Opposer's IPOD product.
`
`REQUEST NO. 42:
`
`A Admit that You are aware that some of Your customers use the adult sexual aids sold
`
`under the VIBRO-POD mark in connection with Opposer's IPOD product.
`REQUEST N0. 43.:
`4
`Admit that Your goods identified in Your Applications are offered to U.S. consumers
`
`who purchase or use Opposer's IPOD player.
`
`REQUEST NO. 44:
`
`-Opposer's First Set of Request for Production of Documents -
`
`7
`
`

`
`D
`
`0
`
`Opposition No. 91180731
`
`Attorney Docket No. 020750-092700US
`
`Admit that Your goods identified in Your Applications are intended to be used by, among
`
`others consumers, U.S. customers who purchase or use Opposer's IPOD product.
`
`REQUEST NO. 45:
`
`Admit that Your goods identified in Your Applications are related to goods covered by
`
`Opposer's Registration No. 2,835,698 for IPOD (i.e., "portable and handheld digital electronic
`
`devices for recording, organizing, transmitting, manipulating, and reviewing audio files").
`
`REQUEST NO. 46:
`
`Admit that Your goods identified in Your Applications are highly related to goods
`
`covered by Opposer's Registration No. 2,835,698 for IPOD (i.e., "portable and handheld digital
`
`electronic devices for recording, organizing, transmitting, manipulating, and reviewing audio
`
`files").
`
`REQUEST NO. 47:
`
`Admit that Your goods identified in Your Applications are related to goods covered by
`
`Opposer's Registration No. 3,089,360 for IPOD (i.e., "portable and handheld digital electronic
`
`devices for recording, organizing, transmitting, manipulating, and reviewing text, data, and audio
`
`files").
`
`REQUEST NO. 48:
`
`Admit that Your goods identified in Your Applications are highly related to goods
`
`covered by Opposer's Registration No. 3,089,360 for IPOD (i.e., "portable and handheld digital
`
`electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data,
`
`and audio files").
`
`REQUEST N0. 49:
`
`Admit that Your goods identified in Your Applications can be used in conjunction with
`
`-Opposer's First Set of Request for Production of Documents -
`
`8
`
`

`
`O
`
`.
`
`Opposition No. 91180731
`
`Attorney Docket No. 020750-092700US
`
`goods covered by Opposer's Registration No. 2,835,698 for IPOD (i.e., "portable and handheld
`
`digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing
`
`audio files").
`
`REQUEST NO. 50:
`
`Admit that Your goods identified in Your Applications can be used in conjunction with
`
`goods covered by Opposer's Registration No. 3,089,360 for IPOD (i.e., "portable and handheld
`
`digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing
`
`text, data, and audio files").
`
`REQUEST NO. 51:
`
`Admit that there are instances of actual confusion between Your Marks and Opposer's
`
`Marks.
`
`REQUEST NO. 52:
`
`Admit that You are aware of an instance, occasion and/or Documents in which You or a
`
`third party referenced any of Your Marks and/or the services offered or provided by You under
`
`any of Your Marks, on the one hand, and Opposer's Marks and/or IPOD goods or services sold
`
`or provided by Opposer, on the other hand.
`
`REQUEST NO. 53:
`
`Admit that You did not conduct a trademark search or seek the advice of counsel prior to
`
`filing Your application for V-POD.
`
`REQUEST NO. 54:
`
`Admit that You did not conduct a trademark search or seek the advice of counsel prior to
`
`filing Your application for VIBE-POD.
`
`—Opposer's First Set of Request for Production of Documents -
`
`9
`
`

`
`.
`
`.
`
`Opposition No. 91180731
`
`Attorney Docket No. 020750-092700US
`
`REQUEST N0. 55:
`
`Admit that You did not conduct a trademark search or seek the advice of counsel prior to
`
`filing Your application for VIBRO-POD.
`
`REQUEST NO. 56:
`
`Admit that You presently have no intent to use Your V-POD mark in connection with the
`
`goods listed in Your Applications.
`
`REQUEST NO. 57:
`
`Admit that at the time You filed Your trademark application for Your V-POD mark, You
`
`had no intent to use Your V-POD mark in connection with the goods listed in Your Applications.
`
`REQUEST N0. 58:
`
`Admit that You presently have no intent to use Your VIBE-POD mark in connection with
`
`the goods listed in Your Applications.
`
`REQUEST NO. 59:
`
`Admit that at the time You filed Your trademark application for Your VIBE-POD mark,
`
`You had no intent to use Your VIBE-POD mark in connection with the goods listed in Your
`
`Applications.
`
`REQUEST NO. 60:
`
`Admit that California Exotics Marketing Director A1 Bloom stated in an August 30, 2007
`
`article on Xfanz, entitled CalExotics Releases Musical Vibe, that "you can wad it up and put it in
`
`your ditty bag with your IPOD and go on an airplane and nobody will be the wiser."
`
`REQUEST NO. 61:
`
`Admit that You advertise, market, provide, offer to sell, and/or sell the goods provided by
`
`You under Your VIBRO-POD mark via the Internet.
`
`-Opposer's First Set of Request for Production of Documents -
`
`10
`
`

`
`O
`
`0
`
`Opposition No. 91180731
`
`Attorney Docket No. 020750-092700US
`
`REQUEST NO. 62:
`
`Admit that You advertise, market, provide, offer to sell, and/or sell the goods provided by
`
`You under Your VIBRO POD mark via the Internet.
`
`REQUEST NO. 63:
`
`Admit that Opposer sells IPOD players through its website.
`
`REQUEST NO. 64:
`
`Admit that You are aware that Opposer sells IPOD players through its website.
`
`REQUEST NO. 65:
`
`Admit that You advertise, market, provide, offer to sell, and/or sell the goods provided by
`
`You under Your VIBRO POD mark through retail stores.
`
`REQUEST N0. 66:
`
`Admit that Opposer sells IPOD players through retail stores.
`
`REQUEST NO. 67:
`
`Admit that You are aware that Opposer sells IPOD players through its website.
`
`REQUEST NO. 68:
`
`Admit that You advertise, market, provide, offer to sell, and/or sell the goods identified in
`
`Your Application in the same channels of trade that Opposer offers its IPOD product.
`
`REQUEST NO. 69:
`
`Admit that Your use of "POD" within Your Mark refers, at least in part, to Opposer's
`
`IPOD device.
`
`REQUEST NO. 70:
`
`Admit that Your use of "V," "VIBE," and "VIBRO" within Your Marks refers to
`
`"vibrator. "
`
`-Opposer's First Set of Request for Production of Documents -
`
`1 1
`
`

`
`E
`l
`
`l
`
`C
`
`REQUEST N0. 71:
`
`Opposition No. 91180731
`Attorney Docket No. 020750-092700US
`
`Admit that You advertise, market, provide, offer to sell, and/or sell no products under a
`
`trademark containing the term "POD" other than products offered Your Marks.
`
`REQUEST NO. 72:
`
`Admit that Opposer's IPOD Mark is famous in the U.S.
`
`REQUEST NO. 73:
`
`Admit that Opposer's IPOD Mark was famous in the U.S. before you began using Your
`
`V-POD mark in commerce.
`
`REQUEST NO. 74:
`
`Admit that Opposer's IPOD Mark was famous in the U.S. before you began using Your
`
`VIBE-POD mark in commerce.
`
`REQUEST NO. 75:
`
`Admit that Opposer's IPOD Mark was famous in the U.S. before you began using Your
`
`VIBRO-POD mark in commerce.
`
`REQUEST NO. 76:
`
`Admit that Opposer's IPOD Mark was famous in the U.S. before you began using Your
`
`VIBRO POD mark in commerce.
`
`REQUEST N0. 77:
`
`Admit that Opposer's IPOD Mark was famous in the U.S. on or before April 12, 2007.
`
`REQUEST NO. 78:
`
`Admit that use of Your V-POD mark in connection with the goods listed in Your
`
`Applications will dilute the goodwill associated with Opposer's IPOD Mark in the U.S.
`
`REQUEST NO. 79:
`
`-Opposer's First Set of Request for Production of Documents -
`
`12
`
`

`
`O
`
`0
`
`Opposition No. 91180731
`
`Attorney Docket No. 020750-092700US
`
`Admit that use of Your VIBE-POD mark in connection with the goods listed in Your
`
`Applications will dilute the goodwill associated with Opposer's IPOD Mark in the U.S.
`
`REQUEST NO. 80:
`
`Admit that use of Your VIBRO-POD mark in connection with the goods listed in Your
`
`Applications will dilute the goodwill associated with Opposer's IPOD Mark in the U.S.
`
`REQUEST NO. 81:
`
`Admit that the document attached hereto as Exhibit A is a true and correct copy of Your
`
`2007-2008 catalog.
`
`REQUEST NO. 82:
`
`Admit that the document attached hereto as Exhibit B is a true and correct copy of a page
`
`from Your website as it existed on May 16, 2007.
`
`Date:May 23, 2008
`
`Respectfully submitted,
`
`TOWNSEND and TOWNSEND and CREW LLP
`
`Margaret C. McHugh
`Marie C. Seibel
`Attorneysfor Opposer
`
`Two Embarcadero Center, 8th Floor
`San Francisco, CA 94111-3834
`Tel: 415-576-0200
`
`Fax: 415-576-0300
`61368369 vl
`
`—Opposer's First Set of Request for Production of Documents -
`
`13
`
`

`
`0
`
`“
`
`Opposition No. 91180731
`
`Attorney Docket No. 020750-092700US
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 23, 2008, I caused the foregoing OPPOSER'S
`
`FIRST SET OF REQUESTS FOR ADMISSION TO APPLICANT to be served by United
`
`States mail, postage prepaid, in an envelope addressed to:
`
`ohn P. Hains, Esq.
`ipsitz Green Scime Carnbria LLP
`2 Delaware Avenue, Suite 120
`uffalo, New York 14202
`
`Dated: May 23, 2008
`
`By;
`
`Anto ' M. Wong
`
`-Opposer's First Set of Request for Production of Documents -
`
`14
`
`

`
`

`
`

`
`v[:b’_'opodm-oooo_oooooooooooo§:
`Digital Music Stimulator
`-
`0004-14-3
`
`Rock your world! Use llibro-Pol" with
`your favorite MP3 player to experience
`powerful rhythmic sensations that
`groove to the beat of the music.
`Don't have an MP3 player? Simply
`switch to the 8-function mode for
`8 patterns of vibration, pulsation,
`and escalation. Includes a non-slip
`Rubber-cote" battery pack,
`EZ touch onloff and speed controls,
`2 interchangeable Rubber-cote"
`bullets, extra-long cords,
`convenient clothing clip,
`and a handy travel pouch.
`lnstmctions included.
`2 AAA batteries.
`
`
`
`'0oooooooooooooooooooooooooooooM'n'Blastefm
`
`3"/7.62 cm
`
`Purple 6
`Yellow Bulb
`Pink Missile
`
`0007-10-2
`0007-20-2
`0001-30-2
`
`
`
`Batteries included.
`
`Discreet, 3-speed, wateiproolfi
`high powered mini-massagers with
`EZ push button control.
`Batteries included.
`
`oooooooooooooooooooooooo
`
`
`
`
`
`3"/7.62 cm
`0008-10-2
`
`0008-20-2
`0008-30-2
`
`Power Bullet
`
`Power Ridge
`Power Twist
`
`Discreet, powerful, wateiproof
`mini massagers with handy
`retrieval cord.
`
`'3
`
`010111139Lp3i)IIBApV
`
`
`
`

`
`
`
`
`This publication. and the products depicted herein, is protected by United States and International patents, trademarks, and copyrights. “Fantasies Outside
`the Box" catalog ©2007 by California Exotic Novelties, LLC. All rights reserved. Printed in the United States of America. Nothing in this publication may be
`reprinted in whole or in part without the express written consent of California Exotic Novelties, LLC. The publisher expressly disclaims responsibility for any
`adverse consequences from the use or application of any information contained herein. All photos in this publication were posed by professional models.
`All Models were 18 years of age or older on the date of photography. Pursuant to 18 U.S.C. 2257, California
`Exotic Noveltiesi‘, LLC catalog "Fantasies Outside the Box" was produced on July 16, 2007, and required records
`are maintained at California Exotic Novelties, LLC, 14235 Ramona Avenue, Chino, CA 91710. Contact: S. Colvin
`WICKED‘ is a registered trademark. and WICKED ESSENSUAL ELEMENTS‘ and WICKED TOYS“ are trademarks, of 580 Pictures, Inc. dba Wicked Pictures.
`VIRTUAL SEX‘ and VIRTUAL SEX TOYS‘ are trademarks of Digital Playground, Inc. CATALINA COLLECTION’ is a registered trademark of
`California Exotic Novelties, LLC. PLEASURE TOYS ‘ is a registered trademark of Pleasure Toys, Inc. COLT’. COLT‘ GEAR‘, and COLT BASICS‘ are trademarks
`of Prowest Media Corporation, dba COLT Studios. DR. JOEL KAPLAN' is a registered trademark of Barry Joel Kaplan Corporation. SHANE'S WORLD‘ is a
`registered trademark of Shane Enterprises, LLC. TALK SEX WITH SUE JOHANSON” is a trademark of Talk Sex Productions, Inc. DR. LAURA BERMAN‘ and
`DR. LAURA BERMAN INTIMATE BASICS“ are trademarks of Dr. Laura Berman and Berman Center, LLC. BERMAN CENTER INTIMATE ACCESSORIES” is a
`registered trademark of California Exotic Novelties, LLC. DR. 2"‘ is a trademark of Dr. Victoria Zdrok. TERA PATRICK‘ is a registered trademark.
`and TERA PATRICK COLLECTION “ is a trademark, of Teravision, Inc. EMMA'S PASSION GARDEN‘ is a trademark of Gregg Stuart.
`SWEDISH EROTICA’ and CALIFORNIA EXOTIC NOVELTIES’ are registered trademarks of California Exotic Novelties, LLC.
`
`I n Mantooth PM! I
`
`
`
`
`
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`
`~
`
`
`
`Model photography‘
`
`

`
`
`
`CAIJFODNEA.
`
`OV E LT] C45.4
`
`7
`
` SE-0000-07- 1
`|1677 4880l '6
`
`
`
`

`
`California Exotic Novelties® | Product Information
`
`
`
`i
`
`‘Him WIWWBTN
`
`i
`
`E
`
`-
`
`Vibro Pod""
`Digital Music Butterfly
`
`0004-20-3
`
`Caselot: 12
`
`Pump up the volume! Vibrating butterfly clitoral
`pump with soft ticklers and powerful sucking action
`plugs into any MP3 player for rhythmic sensations to
`the beat of your favorite tunes. Don't have an MP3
`player? Just switch to the 8—function mode for 8
`patterns of vibration, pulsation, and escalation. Easy-
`to—use trigger pump, flexible air hose, purge valve,
`and a non-slip Rubber~Cote"“ battery pack with EZ
`touch push button controls. Extra long cords, a
`handy travel pouch, and full instructions included. 2
`AAA batteries.
`
`
`
`hltp://www.calexolicsicom/main.php?MODE=VlEW&TYPE=PRODUCT&PRODUCTlD=27799/9/2008 2:32;] I PM
`
`

`
`California Exotic Nove|Iies® [ Product Information
`
`
`
`Vibro Pod“
`
`Digital Music Stimulator
`
`0004-14-3
`
`Caselot: 12
`
`Rock your world! Use Vibro—Pod”" with your favorite
`MP3 player to experience powerful rhythmic
`sensations that groove to the beat of the music.
`Don't have an MP3 player? Simply switch to the 8-
`function mode for 8 patterns of vibration, pulsation,
`and escalation. Includes a non—slip Rubber-Cote*"‘
`battery pack, EZ touch on/off and speed controls, 2
`interchangeable Rubber—Cote“" bullets, extra-long
`cords, convenient clothing clip, and a handy travel
`pouch. Instructions included. 2 AAA batteries.
`
`CLOSE WINDOW
`
`hitp://www.calexoiics.com/ma