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`AMAZONT.008M
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`‘7 Q 00 /, /$1 é
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`Opposition No.: 91187118
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`CERTIFICATE OF MAILING BY "EXPRESS MAIL"
`"Express Mail" mailing label no.
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`I hereby certify that this correspondence and all listed attachments are
`addressed to Commissioner for Trademarks, P.O. Box 1451. Alexandria,
`VA 22313-1451, and are being deposited with the United States Postal
`Service "Express Mail Post Office to Addressee" service on
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`July 20, 2009
`ate)
`'/l
`Susan M. Natland
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`‘~
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`AMAZON TECHNOLOGIES, INC_,
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`Opposer,
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`V.
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`JEFFREY S. WAX & STEVEN M. FREELAND,
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`Applicants.
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`AMAZON TECHNOLOGIES, INC.’S
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`RESPONSE TO APPLICANTS’ MOTION TO COMPEL
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`Commissioner for Trademarks
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`P.O. Box 1451
`Aiexandria, VA 223 13-1451
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`07-22-2009
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`1
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`Dear Sir or Madam:
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`Amazon Technologies, Inc. (“Amazon”) hereby responds to Applicants’ Motion to Compel.
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`In
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`Jeffrey S. Wax and Steven M. Free1and’s (“Applicants”) Motion to Compel, Applicants move,
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`pursuant to Rule 523.01 of the U.S. Trademark Trial and Appeal Board and 37 CFR § 2.120(e), for an
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`order compelling Amazon’s substantive responses to Interrogatories Nos. 1-29, Requests for
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`Admissions Nos. 1-91, and Requests for Production of Documents and Things Nos. 1-51.‘
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`1 Moreover, on July 17, 2009 (two days before the deadline for Amazon to respond to Applicants” Motion to Compel),
`Applicant filed a document entitled “Exhibits 1 And J To Be Considered With Applicant’s Motion To Compel Opposer’s
`Substantive Responses To Discovery” (the “Supplemental Motion”). The Supplemental Motion attached Amazon’s First
`Set of Interrogatories, Nos. 1-37 and Amazon’s First set of Requests for Production of Documents and Things, Nos. 1-76
`and set forth some additional arguments. As a preliminary matter, Amazon notes that the Supplemental Motion is irrelevant
`and untimely. As such, it should be stricken. If the Board considers Applicants’ Supplemental Motion, Amazon notes that,
`as mentioned below, Applicants have refused to properly respond to many of Amazon’s Discovery Requests. Further, while
`Applicants allege that they requested electronic copies of these discovery requests from Amazon, the email making such a
`request was sent at 6:05 Q.m. on July 16, 2009 Thus, Amazon did not even have time to respond to this email before
`Applicants filed their Supplemental Motion.
`In any event, the request to Amazon for electronic copies of these discovery
`requests was made seventeen (17) days after Applicants filed Applicants’ Motion to Compel. Further, whether Amazon
`provided Applicants with electronic copies of the discovery requests or Applicants made their own electronic copies, the
`size of the pdfs documents would not have changed.
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`-1-
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`Specifically, in Applicants’ Motion to Compel, Applicants allege that “[o]n May 12, 2009,
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`Applicant served upon Opposer lnterrogatories Nos. 1-29, Requests for Admissions Nos. 1-91, and
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`Requests for Production of Documents and Things Nos. l-5l” (collectively, “Applicants’ Discovery
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`Requests”) and that Amazon failed to substantively respond to Applicants’ Discovery Requests. While
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`Applicants are correct that on May 12, 2009, Applicants mailed Applicants’ Discovery Requests to
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`counsel for Amazon, pursuant to 37 CFR § 2.l20(a)(3), “[a] party must make its initial disclosures
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`prior to seeking discovery, absent modification of this requirement by a stipulation of the parties
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`approved by the Board, or a motion granted by the Board, or by order of the Board.”
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`(Emphasis
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`added)?
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`However, to date, Applicants have not served their Initial Disclosures. Due to Applicants’
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`failure to serve their Initial Disclosures, Applicants have not complied with 37 CFR § 2.l20(a)(3).
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`Accordingly, Applicants were not (and are not) entitled to serve any discovery requests.3 Amazon
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`notes that in its objections to Applicants’ Discovery Requests, Amazon stated that it was exempt from
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`responding (at this time), due to Applicants’ failure to comply with the applicable rules.4
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`As Applicants were not entitled to serve any discovery requests, Amazon respectfully requests
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`that the Trademark Trial and Appeal Board (the “Board”) issue an order denying Applicants’ Motion to
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`Compel in its entirety, including, an order denying Applicants’ (1) request that they be given additional
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`time to conduct follow-up discovery, (2) request that Amazon be ordered to provide substantive
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`responses and production to Applicants’ Discovery Requests; (3) request for an order extending
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`discovery solely for the benefit of Applicants; and (4) motion for sanctions.
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`Amazon notes that, in making this request, Applicants have failed to show that good cause exists
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`for providing Applicants with any additional time to send additional or follow-up discovery requests or
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`take any discovery depositions. fig T.M.B.P. 509.01.
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`In fact, Amazon notes that Applicants’ Motion to
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`Compel was filed only one (1) day before the discovery period closed.5 Thus, Applicants’ failure to have
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`2 As is the standard practice of the Board, the January 31, 2009 deadline for the parties to serve Initial Disclosures was set
`forth in the October 23, 2008 Trial Order.
`3 Amazon notes that the parties did not agree to waive Initial Disclosures and that Amazon’s Initial Disclosures were
`properly served on January 30, 2009. Moreover, Applicants did not motion the Board for an order waiving Initial
`Disclosures. Amazon further notes that Applicant, Jeffrey Wax, a licensed member of the California Bar, indicates on his
`website that his legal practice areas include representation in trademark oppositions (See Exhibit A). As such, Mr. Wax was
`obviously well aware of 37 CFR § 2.l20(a)(3), which applies to all opposition proceedings commenced on or after
`November 1, 2007.
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`in Amazon’s June 25, 2009 letter, Amazon once again advised
`4 As is discussed in Applicants’ Motion to Compel,
`Applicants that Amazon was not obligated to provide substantive responses to Applicants’ Discovery Requests.
`5
`In Applicants’ Motion to Compel, Applicants argue that they are entitled to additional time to propound “follow-up”
`discovery because Applicants’ Discovery Requests are “virtually identical” to Amazon’s Discovery Requests. Applicants
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`sufficient. time to take “fo1low—up discovery” (or even any discovery, since, to date, Applicants have
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`not properly served any discovery), is due to Applicants’ own lack of diligence. E Luehrmann v.
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`Kwik Kopy Com, 2 USPQ2d 1303 (T.T.A.B. 1987) (desire to conduct follow-up discovery is not good
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`cause for extension of discovery period where party seeking extension did not serve initial discovery
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`requests until late in discovery period).
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`In light of the foregoing, Amazon respectfully requests that the Board deny Applicants’ Motion
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`and reset the Scheduling Order to provide Applicants with the same period of time it had under the
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`prior order, namely, one (1) day remaining in the discovery period.
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`Respectfully submitted,
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`Dated: July 20, 2009
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`040 Main Street, Fourteenth Floor
`Irvine, CA 92614
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`(949) 760-0404
`Attorneys for Opposer,
`Amazon Technologies, Inc.
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`7494500
`072009
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`
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`have, however, failed to mention that they failed to properly respond to many of Amazon’s Discovery Requests. Amazon is
`currently attempting to resolve Applicants’ failures without the Board’s intervention.
`-3-
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`CERTIFICATE OF SERVICE
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`I hereby certify that I served a copy of the foregoing AMAZON TECHNOLOGIES, INC.’S
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`RESPONSE TO APPLICANTS’ MOTION TO COMPEL upon Applicants’ correspondent of
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`record by depositing one copy thereof in the United States Mail, first class postage prepaid and by
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`depositing one copy thereof in the United States Mail, Certified Mail on July 20, 2009, upon counsel
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`for Steven M. Freeland, upon Jeffrey S. Wax, as well as Applicants’ correspondence of record as
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`follows:
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`Jeffrey S. Wax
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`Wax Law Group
`1017 L Street #425
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`Sacramento, California 95 814
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`Philip J. Graves
`Graves Law Office, P.C.
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`12121 Wilshire Blvd., Suite 775
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`Los Angeles, CA 90025
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`

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`EXHIBIT A
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`Education:
`
`Purdue University
`Bachelor of Science in Electrical Engineering
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`Indiana University
`Bachelor of Science in Biology
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`Ucalifornia Western School of Law, 1990
`Jurls Doctor
`Dean's Honor List
`
`Areas of Practice:
`
`He focuses on the procurement, protection and management of intellectual
`property rights for high technology companies. He has handled the
`preparation and prosecution of numerous patent appiications for NASDAQ
`companies.
`
`In particular, he has experience across a broad spectrum of technical fields
`including analog and digital electronics, communications systems, processors,
`hard drives, semiconductor technologies, networks, hardware, software,
`signal processing, aerospace technologies, powerplants, mechanical
`engineering and medical arts.
`
`Other practice areas include intellectual property iicense agreements, patent
`infringement and validity opinions and related analysis, providing lntellectuai
`property litigation support, trademark clearance and registration,
`representation in trademark oppositions, and copyright issues.
`
`Industry experience:
`Previously employed with Teiedyne Isotopes as a Laboratory Scientist
`
`Litigation experience:
`He has handled lawsuits as first chair through bench trials and jury triais.
`Currently, he appiies his litigation experience to strategically handle patent
`applications and other intellectuai property.
`
`Admissions:
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`Registered patent attorney with the US. Patent and Trademark Office;
`Federal and State Courts of Caiifornia; US. District Court for the Northern
`District of California; Federal and State Courts of Illinois; and U.S. District
`Court for the Northern District of Illinois.
`
`Associations:
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`American Intellectual Property Law Association; Silicon Valley Intellectual
`
`http://www.waxIawgroup.com/23801/19901.html[7/16/2009 2:02:51 PM]
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`;..J
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`Property Law Association; Association of Trial Lawyers of America; Institute
`of Eiectricai and Electronics Engineers, Inc. (IEEE); American Bar Association.
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`http://www.wax|awgroup.com/23801/19901.htm|[7/16/2009 2:02:51 PM]