Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA385839
`ESTTA Tracking number:
`12/28/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91184978
`Defendant
`Walgreen Co.
`MARK J. LISS
`LEYDIG, VOIT & MAYER, LTD.
`TWO PRUDENTIAL PLAZA, SUITE 4900
`CHICAGO, IL 60601
`UNITED STATES
`cstevens@leydig.com
`Other Motions/Papers
`Michelle L. Calkins
`mcalkins@leydig.com, cstevens@leydig.com, mliss@leydig.com
`/Michelle L. Calkins/
`12/28/2010
`2010.12.28 Motion to Preclude with Exhibits (Redacted).pdf ( 68 pages
`)(4430908 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Trademark Application
`Serial No. 76/682,070
`
`Opposition No. 91184978
`
`Trademark: WAL-ZYR
`
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`MCNEIL-PPC, Inc.
`
`Opposer,
`
`V.
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`WALGREEN COMPANY,
`
`Applicant.
`
`APPLICANT’S MOTION TO PRECLUDE
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`DOCUMENTS FROM INTRODUCTION AT TRIAL
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`Pursuant to TBMP § 408.02, Applicant, Walgreen Company (“Walgreens”), moves that
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`the Board exercise its authority to preclude Opposer, MCNEIL-PPC, Inc. (“McNeil”) from
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`introducing certain documents, specifically Bates Nos. McNeil 5040-5128, 5133-5161, and
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`5175-9498, during the testimony phase of this matter. The preclusion is proper in this case as
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`McNeil produced the documents after discovery had closed and well after any opportunity for
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`Walgreens to take further discovery from McNeil to determine the nature and meaning of said
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`documents. In support of this Motion, Walgreens states as follows:
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`1.
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`On October 8, 2008, Walgreens served its first requests for production of
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`documents and things, which included the following requests:
`
`No. 8. All documents and things sufficient to identify all
`geographic areas in which Opposer uses the “ZYRTEC” mark.
`
`No. 10. All documents and things relating or referring to the
`alleged fame of Opposer’s “ZYRTEC” mark.
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`No. 15. All reports, research, searches, investigations,
`recommendations and opinions Applicant [sic] consulted,
`referenced, used or relied upon in deriving Opposer’s strategy for
`the marketing, promotion and advertising for the goods offered
`under “ZYRTEC.”
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`

`
`No. 19. All advertising and promotional materials for goods sold
`or intended to be sold in the United States under “ZYRTEC”
`
`No. 20. All documents and things relating to annual budgets and
`expenditures or intended annual budgets and expenditures to
`advertise and/or promote goods under the “ZYRTEC” mark.
`
`No. 21. All documents and things relating to the annual revenues
`or projected annual revenues for the goods offered under
`“ZYRTEC” as well as all documents reflecting sales and market
`share of “ZYRTEC.”
`
`No. 22. All documents referring to any contracts, licenses and/or
`agreements or intended contracts, licenses and/or agreements
`between Opposer and any third party regarding the use of
`“ZYRTEC.”
`
`No. 25. All documents relating in any way to any confusion or
`inquiries regarding Applicant or Applicant’s mark.
`
`No. 26. All documents and things in Opposer’s possession or
`control referring or relating to Applicant.
`
`No. 30. Each and every document not already produced in
`response to these Requests upon which Opposer will rely in this
`Opposition proceeding.
`
`See Exhibit A,
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`excerpts from Walgreens’ discovery requests.
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`2.
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`On April 30, 2009, Walgreens served its second request for production of
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`documents and things, which included the following requests:
`
`No. 33. Any and all communications, contracts, licenses,
`agreements and other Documents concerning the chain of title of
`Opposer’s Mark or licensing of rights in and to Opposer’s Mark.
`
`No. 36. Documents reflecting the number of “hits” or “visits” to
`www.zyrtec.com, wvvw.zyrtopia.com,
`www.zyrtecprofessional.com, and any other website or web page
`that features products offered under Opposer’s Mark.
`
`No. 42. Documents sufficient to identify market share for the
`products sold under the Opposer’s Mark and for products that
`compete with such products.
`
`See Exhibit A.
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`

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`3.
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`On February 19, 2009, June 23, 2009, June 25, 2009, and July 7, 2009, McNeil
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`produced some number of documents, altogether comprising Bates Nos. McNeil 00001-004887.
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`Each time it produced documents, McNeil reserved the right to supplement its discovery at a
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`later date.1
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`4.
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`On June 25, 2009, in advance of the personal deposition of Rohonish Hooda,
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`witness for McNeil, scheduled for June 29, 2009, Walgreens asked McNeil if its document
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`production was complete. Walgreens explained in an email to McNeil, “if McNeil intends to
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`produce more documents, it does not make sense to take Mr. Hooda’s deposition until we receive
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`the additional documents.” See Exhibit B, copy of the email to McNeil’s counsel.
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`5.
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`During a phone conversation between counsel regarding this email, McNeil took
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`the position that it did not have to produce its documents before the deposition, and that it could
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`produce documents at any time during the discovery period. In other words, McNeil’s position
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`was that it could produce responsive documents up to and until the last day of the discovery
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`period, regardless of when Walgreens issued its document requests, and regardless of whether
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`the documents were an original production or supplements. The personal deposition of Mr.
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`Hooda was ultimately postponed until August 10, 2009.
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`6.
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`On July 21, 2009, Walgreens contacted McNeil in an effort to amicably resolve
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`discovery disputes, including the timely production of documents. Walgreens notified McNeil
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`that it found the position that documents could be produced at any time during discovery to be
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`1 Throughout discovery, Walgreens too has continued to supplement its production. However, Walgreens’ later
`production was either (a) in response to later discovery requests, (b) supplementation with later discovered
`documents, or (c) production of documents in response to continued communication between the parties and in an
`attempt to resolve outstanding disputes over discovery responses. Walgreens also produced supplemental
`documents at the time they were identified, resulting in production of documents on approximately 12 different
`dates during the course of the discovery period.
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`

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`unprofessional gamesmanship, and contrary to McNeil’s obligation to produce documents in a
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`timely manner. See Exhibit C, a copy of the email to McNeil’s counsel.
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`7.
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`On July 22, 2009, McNeil’s counsel responded, asserting McNeil “has the right to
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`continue to produce documents throughout the discovery period.” See Exhibit D, a copy of the
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`email to Walgreens’ counsel.
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`8.
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`Walgreens’ counsel and McNeil’s counsel continued to disagree throughout the
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`discovery period regarding what constitutes “timely” production of documents. Walgreens never
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`agreed with McNeil’s position, and Walgreens repeated its requests for production of any
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`additional documents in a timely manner. Despite these continuing requests, McNeil produced
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`only thirty-five pages, which had been obtained from a third party, Pfizer, Inc., on or about
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`August 24, 2010. McNeil did not produce any more of its own documents during the discovery
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`period after July 7, 2009.
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`9.
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`The discovery period closed on October 26, 2010, over 15 months later.
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`10.
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`On October 27, 2010, McNeil nearly doubled its production volume when it
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`mailed Walgreens more than 4,500 pages of documents.
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`11.
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`Specifically, McNeil mailed Walgreens document Bates Nos. 0O4970—O09498,i
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`virtually all of which were responsive to Walgreens document requests served on October 8,
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`2008 and/or April 30, 2009, and many of which were dated 2008, 2009, and early 2010, and
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`included information dating back to 2008, 2009, and early 2010.2 For example, Exhibit F
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`contains excerpts from a study dated March 6, 2009 but not produced by McNeil until October
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`27, 2010, 19 months after the report was created and after the close of discovery.
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`2 On November 18, 2010, Walgreens produced 77 pages of supplemental documents, in an attempt to resolve other
`outstanding disputes over discovery, over Walgreens’ own objections to their production and without waiving those
`objections, and in response to supplemental correspondence between the parties after discovery had closed.
`4
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`

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`12.
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`The table below lists the Bates numbers of McNeil’s late-produced documents to
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`which Walgreens objects in the present motion, the document request to which said documents
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`were responsive, and the representative samples of said documents which are attached as exhibits
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`to this motion.
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`McNeil late-produced document
`Bates Nos. (organized by
`cateo
`
`
`
`
`
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`Was responsive to
`Walgreens Document
`Re uest No s .
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`, 30* 33
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`Representative sample(s)
`attached as Exhibit '
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`Ix)»-I--*t\)r—dU1UIl\)
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`U014)O0
`,30,42
`l\.) U‘: , 26, 30
`G U) ON
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`005157 61 McNeil 005175-76
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`McNeil 005146-56
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`McNeil 005177-9498
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`:-A \O U.) 3
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`10,21,30»42
`8, 20, 30
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`10, 30
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`zirVs‘-
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`*Document Request No. 30 applies only if McNeil intends to rely on said documents at trial,
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`which it appears they do as they have refused to withdraw these late—produced documents.
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`13.
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`On November 17, 2010, Walgreens contacted McNeil, objected to the severely
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`delayed production, and sought McNeil’s agreement that it would not offer the late produced
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`documents as evidence during its testimony period in an attempt to amicably resolve the dispute
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`without the Board’s intervention. See Exhibit 0, a copy of the email correspondence between
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`the parties.
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`14.
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`On November 26, 2010, McNeil responded to Walgreens and asserted it had
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`produced its documents in a “timely” manner, that it could “produce documents at any time prior
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`to the trial testimony period” (including the period after the close of the discovery period), and
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`that it could introduce such documents during its testimony period. See Exhibit 0.
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`

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`15.
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`Accordingly, Walgreens has in good faith conferred with McNeil through its
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`counsel in an effort to resolve the dispute without court action, as is its obligation under the
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`Federal Rules of Civil Procedure, Rule 37(a)(1), and now brings the present motion.
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`16.
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`The very purpose of discovery “is to provide information which may aid a party
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`in the preparation of its own case or in the cross-examination of its adversary's witnesses.” Bison
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`Corp. v. Perfecta Chemie B. V., 4 U.S.P.Q.2d 1718, 1720 (T.T.A.B. 1987). The Board expects
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`parties to work together in discovery matters, so both sides have an equal and fair opportunityto
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`put on their case.
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`17.
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`Simply put, it “is unfair for a party to withhold documents requested or
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`fail to
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`make a complete investigation to locate the information.” Id at 1720. Indeed, “[d]isc0very is
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`not an opportunity for opposer to harass applicant with subterfuge and delay.” Panda Travel Inc.
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`v. Resort Option Enters. Inc., 94 U.S.P.Q.2d 1789, 1792 (T.T.A.B. 2009).
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`18.
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`“A responding party which, due to an incomplete search of its records, provides
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`an incomplete response to a discovery request, may not thereafter rely at trial on information
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`from its records which was properly sought in the discovery request but was not included in the
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`response thereto .
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`.
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`. .” TBMP § 408.02.
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`19.
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`A party “may seek to preclude [the disobedient party] from relying on information
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`or documents which should have been produced in response to any of [that party’s] discovery
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`requests, but were not.” Byer Cal. v. Clothingfor Modern Times Ltd, 95 U.S.P.Q.2d 1175, 1177
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`(T.T.A.B. 2010).
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`20.
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`Documents not produced during the discovery period have previously been found
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`inadmissible at trial by the Board. See, e.g., Mana Prods. Inc. v. Black Onyx, Inc., Opposition
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`No. 112,190, 2001 WL 930583 (T.T.A.B. 2001) (the Board excluded documents not produced
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`

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`during the discovery period, and stated “A party which fails to produce documents or
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`information in response to its opponent’s proper discovery requests will be precluded from
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`introducing or relying on such documents or information at trial” and “In View of applicant’s
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`failure to produce the documents at issue during discovery, applicant is not entitled to rely on
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`those documents at trial.”) (decision attached as Exhibit P).
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`21.
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`In Federal district courts also following the Federal Rules of Civil Procedure, the
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`preclusion requested here is automatic even when documents are produced in advance of trial -
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`and the production not harmless. See, e. g., Aon Risk Svcs., Inc. ofIII. v. Shetzer, No. 01 C 7813,
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`2002 WL 1989466, at *6 (N.D. 111. 2002) (decision attached as Exhibit Q).
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`22.
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`As explained above, McNeil, on October 27, 2010, produced more than 4,500
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`pages of documents, virtually all of which were responsive to discovery requests issued by
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`Walgreens in 2008 and 2009. See supra paragraphs 10-12. Moreover, many of these documents
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`either contained information dating to 2008, 2009, and early 2010, or were themselves created in
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`that time period, yet McNeil delayed until October 2010 to produce these long pre~existing
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`documents, in fact delaying their production until after the discovery period had closed. This
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`late production violates the federal rules, trademark rules, and case law.
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`23.
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`In addition, McNeil’s late production unfairly prejudices Walgreens. By delaying
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`the production of documents, McNeil has prevented Walgreens from taking any discovery on the
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`documents. McNeil has prevented Walgreens from being able to take any deposition testimony,
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`issue follow up interrogatories, or pursue other discovery avenues by holding on to documents
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`and waiting to produce them until after discovery closed. Allowing McNeil to rely on the late
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`production would also leave Walgreens in the unfair and atypical situation under U.S. discovery
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`

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`practice of potentially needing to cross-examine McNeil’s witness during the testimony period
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`on documents that Walgreens has not been able to fiilly investigate during the discovery period.
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`24.
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`McNeil has no justifiable excuse for delaying until after the close of discovery to
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`produce more than 4,500 responsive documents. Walgreens issued its discovery requests as long
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`ago as October 2008, Walgreens repeatedly requested responsive documents from McNeil, many
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`of the late produced documents or information contained therein have long been in existence, in
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`some cases since 2008, and McNeil took the position that it had until the close of the discovery
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`period — not after the close — to produce responsive documents (although Walgreens disagreed
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`with this position). That discovery closed just the day before McNeil’s counsel placed the
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`documents in the mail implies that McNeil and/or its counsel had the documents identified well
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`in advance of the close of discovery, yet waited to produce until after Walgreens could no longer
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`take any discovery on the documents.
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`25.
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`McNeil’s production of the documents immediately after the close of discovery
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`but before the testimony period does not remedy the harm to Walgreens, and it does not excuse
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`McNeil’s failure to meet its discovery obligations. None of the cases cited above specifically 0
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`grants McNeil the right to produce documents after the close of discovery, or the right to hold
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`onto documents, in some cases for years, thus giving McNeil a sort of immunity from possibly
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`needing to be deposed on the documents or otherwise needing to provide Walgreens with further
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`information related to the documents.
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`26.
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`Notably, McNeil changed its position regarding its discovery obligations to suit
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`its own interests. McNeil originally took the position that it could produce documents at any
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`time prior to the close ofdiscovery.
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`(See Exhibit D.) It is only now, when McNeil has produced
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`documents after the close of discovery, that McNeil has changed its tune. McNeil now asserts
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`

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`that it can produce documents at any time prior to the trial testimony period. McNeil should not
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`be allowed to use deliberately withheld documents to the prejudice of Walgreens.
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`27.
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`Finally, addressing this issue now rather than waiting to consider a motion until
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`after trial, prevents the undue burden on Walgreens of having to spend the time and resources to
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`prepare on these documents when the documents may well be stricken as a result of late
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`production if they are in fact introduced at trial.
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`28.
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`In light of the above, and to prevent the undue prejudice that would be caused to
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`Walgreens in light of McNeil’s failing to provide timely production of its documents, Walgreens
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`respectfully requests the Board preclude McNeil from relying on Bates Nos. McNeil 5040-5128,
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`5133-5161, and 5175-9498 during its testimony period.
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`29. Walgreens alerts the Board that several of the items found in the Exhibits are
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`subject to confidentiality designations, and as such are being submitted to the Board separately
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`under seal.
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`Date: December 28, 2010
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`Respectfully submitted,
`
`l
`
`Mark J. Liss
`
`Caroline L. Stevens
`
`Michelle L. Calkins
`
`LEYDIG, VOIT & MAYER, LTD.
`Two Prudential Plaza - Suite 4900
`
`Chicago, Illinois 60601
`Telephone: (312) 616-5600
`Facsimile: (312) 616-5700
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`Attorneys for Applicant, Walgreen Company
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`

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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the above foregoing “Applicant’s Motion
`To Preclude Documents From Introduction At Trial” was served by first class mail and e-mail on
`December 28, 2010 to:
`
`Laura Popp-Rosenberg
`Fross Zelnick Lehrman & Zissu, P.C.
`866 United Nations Plaza
`
`New York, NY 10017
`lpopp—rosenberg@frosszelnick.com
`
`.ZZ ZZZ.
`
`Michelle L. Calkins
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
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`McNEIL-PPC, Inc.
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`
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`Opposer,
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`v.
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`
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`WALGREEN COMPANY,
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`
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`Applicant.
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`
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`
`
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`
`In re Trademark Application
`Serial No. 76/682,070
`
`
`
`
`Opposition No. 91184978
`
`Trademark: WAL-ZYR
`
`
`
`
`
`
`
`
`EXHIBITS TO APPLICANT’S MOTION TO PRECLUDE
`DOCUMENTS FROM INTRODUCTION AT TRIAL
`
`(REDACTED)
`
`

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`Exhibit A
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`

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`6.
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`All documents and things sufficient to identify all goods and/or services provided, or
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`intended to be provided by Opposer, on or in connection with the “ZYRTEC” mark.
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`7.
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`All documents and things referring or relating to, or comprising, any plans Opposer
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`has to expand or change the goods _or services offered for sale or intended to be offered for sale
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`under “ZYRTEC.”
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`8.
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`All documents and things sufficient to identify all geographic areas in which
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`Opposer uses the “ZYRTEC” mark.
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`9.
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`All documents and things relating or referring to the geographic scope of sale of
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`Opposer’s goods bearing the “ZYRTBC” mark.
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`10.
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`All documents and things relating or referring to the alleged fame of Opposer’s
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`“ZYRTEC” mark.
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`11.
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`All documents and things regarding the types of consumers and prospective
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`consumers to which, and the markets and channels of trade in which, Opposer markets, advertises,
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`promotes, or sells or intends to market, advertise, promote or sell products or services under
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`“ZYRTEC.”
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`12.
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`All documents and things relating or referring to the care exercised by consumers
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`and potential consumers of “ZYRTEC” when making purchases.
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`13.
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`All documents which Opposer consulted, referenced, used, or relied upon in
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`defining its target market for the goods offered under “ZYRTEC.”
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`14.
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`A list of competitors for the goods offered under, or intended to be offered under the
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`“ZYRTEC” mark.
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`

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`15.
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`All reports, research, searches, investigations, recommendations and opinions
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`Applicant consulted, referenced, used, or relied upon in deriving Opposer’s strategy for the
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`marketing, promotion and advertising for the goods offered under “ZYRTEC.”
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`16.
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`All documents and things related to all magazines, journals, newspapers or
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`publications in which Opposer’s mark “ZYRTEC” has appeared or in which Opposer intends for
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`the mark to appear.
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`All documents and things related to Opposer’s adoption of the “ZYRTEC” mark.
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`All documents and things related in any way to consumers’ perception of
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`17.
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`18.
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`“ZYRTEC.”
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`19.
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`All advertising and promotional materials for goods sold or intended to be sold in
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`the United States under “ZYRTEC” as well as all documents reflecting the success of such
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`advertising and promotion such as documents reflecting, referring, or related to brand awareness.
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`20. All documents and things relating to annual budgets and expenditures or intended
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`annual budgets and expenditures to advertise and/or promote goods under the “ZYRTEC” mark.
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`21.
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`All documents and things relating to the annual revenues or projected annual
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`revenues for the goods offered under “ZYRTEC” as well as all documents reflecting sales and
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`market share of “ZYRTEC.”
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`22.
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`All documents referring to any contracts, licenses and/or agreements or intended
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`contracts, licenses and/or agreements between Opposer and any third party regarding the use of
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`“ZYRTEC.”
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`23.
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`All documents referring to any surveys, studies, polls or other undertakings
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`regarding “WAL-ZYR” or “ZYRTEC.”
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`

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`24.
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`All documents concerning the circumstances under which Opposer first learned of
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`Applicant’s Mark.
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`25.
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`All documents relating in any way to any confusion or inquiries regarding
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`Applicant or Applicant’s mark.
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`26.
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`All documents and things in Opposer’s possession on control referring to or
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`relating to Applicant.
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`27.
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`All documents and things in Opposer’s possession on control referring to or
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`relating to objections in any form to any third—party mark based in whole or in part on Opposer’s
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`alleged “ZYRTEC” mark.
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`28.
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`All documents and things in Opposer’s possession or control referring to or
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`relating to third party uses of any marks containing the “ZYR” term within the pharmaceutical
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`market.
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`29.
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`All documents and things relating in any way to the alleged dilution of Opposer’s
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`Mark by Applicant.
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`30.
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`Each and every document not already produced in response to these Requests
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`upon which Opposer will rely in this Opposition proceeding.
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`31.
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`All documents in Opposer’s possession or control concerning persons who will
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`provide written statements or who Opposer intends to call as a witness in connection with this
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`opposition.
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`

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`DOCUMENT REQUESTS
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`REQUEST NO. 32:
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`All Communications between persons employed by UCB Pharma, S.A., UCB S.A. and
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`McNeil-PPC, Inc., McNeil Consumer Healthcare, Johnson & Johnson, or any of their divisions
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`or related companies in Opposer’s possession, custody and control concerning Applicant’s use or
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`registration of Applicant’s Mark or this Opposition.
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`REQUEST NO. 33:
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`Any and all communications, contracts, licenses, agreements and other Documents
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`concerning the chain of title of Opposer’s Mark or licensing of rights in and to Opposer’s Mark.
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`REQUEST N0. 34:
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`All reports, studies, surveys or polls concerning consumer consideration of active
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`ingredients in allergy medicine when selecting and purchasing allergy medicine.
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`REQUEST NO. 35:
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`Documents sufficient to establish any and all guidelines or requirements for use of
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`Opposer’s Mark.
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`REQUEST NO. 36:
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`Documents reflecting the number of “hits” or “visits” to wvvw.zyrtec.com,
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`wvvw.zyrtopia.com, www.zyrtecprofessiona1.com, and any other website or web page that
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`features products offered under Opposer’s Mark.
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`REQUEST NO. 37:
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`Documents showing the number of Communications that refer to the products offered
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`under Opposer’s Mark and received through www.zyrtec.com, www.zyrtopia.com, and
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`

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`www.zyrtecprofessional.com, and any other website or web page that features products offered
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`under Opposer’s Mark.
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`REQUEST N0. 38:
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`All Documents and reports concerning consumer comments or opinions relating to
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`Opposer’s Mark or products offered under the Opposer’s Mark.
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`REQUEST NO. 39:
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`All educational and promotional Documents and materials intended to educate consumers
`
`on the spelling and/or pronunciation of Opposer’s Mark.
`
`REQUEST NO. 40:
`
`All Documents, including, but not limited to, focus group studies or qualitative feedback .
`
`reports, concerning whether consumers believe that store brand products may be manufactured
`
`by the same companies that manufacture the brand name equivalent products.
`
`REQUEST NO. 41:
`
`All Documents reflecting data on how consumers become aware of or decide to purchase
`
`products offered under Opposer’s Mark, including, but not limited to, data concerning physician
`
`recommendations, historic prescriptions, word-of-mouth recommendations, and advertisements.
`
`REQUEST N0. 42:
`
`Documents sufficient to identify market share for the products sold under the Opposer’s
`
`Mark and for products that compete with such products.
`
`REQ QUEST NO. 43:
`
`All Documents concerning any Communications between Opposer or its counsel and any
`
`third—party expert or consultant engaged to render_ services on behalf of Opposer in connection
`
`with this proceeding.
`
`

`
`Exhibit B
`
`

`
`Gillott, Brittney
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Laura,
`
`Stevens, Caroline
`Thursday, June 25, 2009 2:20 PM
`Laura Popp—Rosenberg
`Liss, Mark
`WAL-ZYR Opposition; LVM Ref. 262981
`
`We have had a chance to review the documents we received from McNeil yesterday. While we believe there are still
`
`some documents missing from McNei|’s production, if you can tell us that McNei|’s production is complete, we will
`
`accept that, and we will move forward with the deposition on Monday. However, if McNeil intends to produce more
`
`documents, it does not make sense to take Mr. Hooda’s deposition until we receive the additional documents, and in
`which case, we would have to postpone Monday's deposition.
`
`I would appreciate it if you would call me today to discuss.
`
`Thank you,
`
`Caroline
`
`Caroline L. Stevens
`
`LEYDlG, VOIT & MAYER, LTD.
`Two Prudential Plaza, Suite 4900
`
`Chicago, Illinois 60601
`Tel: (312) 616-5671
`
`Fax: (312) 616-5700
`
`E—mai|: cstevens@leydig.com
`
`

`
`Exhibit C
`
`

`
`Gillott, Brittney
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Dear Laura,
`
`.
`
`Stevens, Caroline
`Tuesday, July 21, 2009 10:35 AM
`Laura Popp-Rosenberg
`Liss, Mark; Richard Lehv
`WAL-ZYR Opposition - Discovery lssues; LVM Ref. 262981
`
`We are writing in an effort to try to amicably resolve our concerns over McNeil responses to certain of Walgreens’
`document requests. We reiterate our request that McNeil produce documents requested in Document Request No. 32,
`which we still have not received. We understand from conversations with you that McNei|’s position is that it can
`produce documents at any time during the discovery period, including up and until the last day of discovery. This
`position overlooks McNei|’s obligation to produce documents in a timely manner. This position amounts to
`unprofessional gamesmanship, and not what litigation should be about. We believe the Board would agree.
`
`We also reiterate our request that McNeil substantively respond to lnterrogatory No. 23. McNeil responded by only
`listing objections on the grounds of undue burden or expense; that the lnterrogatory was not reasonably calculated to
`lead to the discovery of admissible evidence; that the lnterrogatory was not reasonably particular or that it sought
`information tangential to the matters at issue; and that the wording of the lnterrogatory is vague and/or ambiguous.
`We disagree with all of these objections.
`
`As we have explained in the past, information responsive to this lnterrogatory is relevant and admissible, because it
`could pertain to or lead to information about the owner of the ZYRTEC trademark’s opinion on issues related to this
`matter, and the interrogatory may also have some relevance to the issue of standing. Given the relevance of this
`evidence, we do not agree that requiring production is an undue burden or expense. We also do not agree that any
`portion of the lnterrogatory is vague or ambiguous.
`If McNeil intends to maintain this objection, McNeil should identify
`the words that are too ambiguous and/or vague for McNeil to properly respond.
`
`We also have not received documents that demonstrate McNeil has standing in this case or is licensed to use the ZYRTEC
`mark, as requested in Document Request No.22 and 33. The agreement dated June 25, 2006 is not signed, it is heavily
`redacted, and it includes no schedules. Frankly, it is worthless to us. As a result, so is the agreement dated December
`20, 2006. Given the protective order, we are entitled to unredacted copies of all of the agreement, and we request that
`McNeil produce them. Please also let us know whether the June 25, 2006 agreement was ever signed, and if so, please
`produce a copy. Finally, please confirm that there are no other documents responsive to these requests.
`
`If we do not receive these documents by July 28, 2009, we will be forced to request the intervention of the TTAB
`interlocutory Attorney or to file a Motion to Compel. Filing a Motion would cause the suspension of the opposition, and
`both the Motion and contacting the interlocutory Attorney would cause undue hassle to all parties involved. We would
`like to avoid all of this. Please contact us to discuss this matter further.
`
`Regards,
`
`Caroline
`
`Caroline L. Stevens
`
`LEYDIG, VOIT & MAYER, LTD.
`
`Two Prudential Plaza, Suite 4900
`
`Chicago, lllinois 60601
`
`Tel: (312) 616-5671
`
`Fax: (312) 616-5700
`
`

`
`Exhibit D
`
`

`
`Gillott, Brittney
`
`.
`
`-
`
`From: Laura Popp—Rosenberg [mailtozlpopp-rosenberg@frosszelnick.com]
`Sent: Wednesday, July 22, 2009 6:12 PM
`To: Stevens, Caroline
`Cc: Richard Lehv
`
`Subject: RE: WAL-ZYR Opposition - Discovery Issues; LVM Ref. 262981
`
`Dear Caroline:
`
`We maintain our position that McNElL has the right to continue to produce documents throughout the discovery period.
`This is not gamesmanship.
`I have asked MCNEIL to collect all documents they are required to produce in this proceeding,
`and l am not withholding any documents that have been given to me by my client.
`I note that Walgreens seems also to be
`availing itself of its right to produce documents on a continuing basis, having just produced a large number of documents
`this week.
`
`We disagree with your assertion that we have not produced the documents that show McNElL's standing in this
`proceeding or its license to use the ZYRTEC mark. Should you continue to believe that the materials we have produced
`do not show McNElL's standing in the opposition, that would seem to me to be a legal question for the trial phase of this
`proceeding.
`‘
`
`The June 25, 2006 agreement was signed. We had not realized until your email that the version produced was unsigned.
`Please see attached signature pages, which should be added to McNElL's production in this matter.
`
`The redactions of the June 25, 2006 agreement are of information that has no relevance to this proceeding. Therefore,
`we are not required to produce an unredacted version of the agreement, regardless of the confidentiality agreement, and
`will not do so.
`
`We are still conferring with our client with regard to lnterrogatory No. 23 and Document Request No. 32, and will try to
`have a definitive answer to you next week as to whether we will be revising our responses to these requests.
`
`Regards,
`Laura
`
`

`
`Exhibit E
`
`

`
`
`
`Redacted
`Redacted
`
`

`
`Exhibit F
`
`

`
`
`
`Redacted
`Redacted
`
`

`
`Exhibit G
`
`

`
`
`
`Redacted
`Redacted
`
`

`
`Exhibit H
`
`

`
`
`
`Redacted
`Redacted
`
`

`
`Exhibit 1
`
`

`
`
`
`Redacted
`Redacted
`
`

`
`Exhibit J
`
`

`
`
`
`Redacted
`Redacted
`
`

`
`Exhibit K
`
`

`
`MCNEIL 005114
`
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`
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