Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA377521
`ESTTA Tracking number:
`11/09/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91188230
`Defendant
`International Whisky Company Limited
`ROBERT B. BURLINGAME
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`CALENDAR/DOCKETING DEPARTMENT, P.O. BOX 7880
`SAN FRANCISCO, CA 94120-7880
`UNITED STATES
`sftrademarks@pillsburylaw.com, rburlingame@pillsburylaw.com
`Defendant's Notice of Reliance
`Robert B. Burlingame
`sftrademarks@pillsburylaw.com, rburlingame@pillsburylaw.com
`/Robert B. Burlingame/
`11/09/2010
`1st part of ROYAL SILK 1st Notice of Reliance.pdf ( 118 pages )(1802753 bytes
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`)2
`
`)
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`nd part of ROYAL SILK 1st Notice of Reliance.pdf ( 100 pages )(8243247 bytes
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA377521
`ESTTA Tracking number:
`11/09/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91188230
`Defendant
`International Whisky Company Limited
`ROBERT B. BURLINGAME
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`CALENDAR/DOCKETING DEPARTMENT, P.O. BOX 7880
`SAN FRANCISCO, CA 94120-7880
`UNITED STATES
`sftrademarks@pillsburylaw.com, rburlingame@pillsburylaw.com
`Defendant's Notice of Reliance
`Robert B. Burlingame
`sftrademarks@pillsburylaw.com, rburlingame@pillsburylaw.com
`/Robert B. Burlingame/
`11/09/2010
`1st part of ROYAL SILK 1st Notice of Reliance.pdf ( 118 pages )(1802753 bytes
`
`)2
`
`)
`
`nd part of ROYAL SILK 1st Notice of Reliance.pdf ( 100 pages )(8243247 bytes
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition/Cancellation Nos.
`
`
`91188230 (Parent)
`
`
`91188492
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`
`92050392
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`
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`INTERNATIONAL WHISKY
`COMPANY LIMITED’S
`FIRST NOTICE OF RELIANCE
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`TRADEMARK: ROYAL SILK
`
`____________________________________
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`PRAKASH T. MELWANI
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`v.
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`INTERNATIONAL WHISKY
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`COMPANY LIMITED
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`____________________________________)
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`Pursuant to 37 C.F.R. § 2.122(b) and (e), International Whisky Company Limited
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`(“IWC”), by its attorneys, hereby provides notice that it intends to rely on the attached materials
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`in support of IWC’s case in these proceedings:
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`1. Attached hereto as Exhibit 1 is a true and correct copy of “Opposer’s Responses and
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`Objections to International Whisky Co. Limited’s First Set of Requests for Admission”.
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`2. Attached hereto as Exhibit 2 is a true and correct copy of “Melwani’s Responses and
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`Objections to International Whisky Co. Limited’s First Set of Interrogatories”.
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`3. Attached hereto as Exhibit 3 is a true and correct copy of “Melwani’s Additional
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`Responses and Objections to International Whisky Company Limited’s First Set of
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`Interrogatories”.
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`4. Attached hereto as Exhibit 4 is a true and correct copy of the “Affidavit and Motion to
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`Dismiss” that Prakash T. Melwani (“Melwani”) on file with the TTAB in connection with TTAB
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`Proceeding No. 92045366. This document contains information relevant to the history of
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`Melwani’s ROYAL SILK trademarks.
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`ROYAL SILK Notice of Reliance.doc
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`5. Attached hereto as Exhibit 5 are true and correct copies from the U.S. Department of
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`the Treasury’s Alcohol and Tobacco Tax and Trade Bureau (“TTB”) of seven federal
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`Certificates of Label Approval issued by the TTB in connection with the proposed U.S. labels for
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`IWC’s ROYAL SILK whisky, as well as a current screenshot from the TTB’s website listing
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`those seven Certificates of Label Approval. These documents are relevant to IWC’s intent to
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`use, and efforts to commence use, of the mark ROYAL SILK in the U.S. for whisky, and to the
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`issue of likelihood of confusion between IWC’s and Melwani’s respective ROYAL SILK marks.
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`6. Attached hereto as Exhibit 6 is a true and correct copy of Judge Debra Freeman’s
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`“Memorandum and Order” dated April 29, 2004, in Case No. 2002cv1224 in the U.S. District
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`Court for the Southern District of New York. This document contains information relevant to
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`the history of Melwani’s ROYAL SILK trademarks.
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`7. Attached hereto as Exhibit 7 is a true and correct copy of Judge Debra Freeman’s
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`“Judgment” dated October 4, 2005, in Case No. 2002cv1224 in the U.S. District Court for the
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`Southern District of New York. This document contains information relevant to the history of
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`Melwani’s ROYAL SILK trademarks.
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`8. Attached hereto as Exhibit 8 are true and correct copies of TARR printouts from the
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`U.S. Patent and Trademark Office’s website showing current details of third-party applications
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`and registrations, namely, the details of U.S. Trademark Registration Nos. 3610315, 1618884,
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`1881792, 2027643, 2011321, 1797220 and U.S. Trademark Application Nos. 78655540,
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`76057389, 78774298, 74312120, 77400376. These documents are relevant to the alleged
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`strength and fame of Melwani’s ROYAL SILK trademarks and also to the issue of likelihood of
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`confusion between IWC’s and Melwani’s respective ROYAL SILK marks.
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`ROYAL SILK Notice of Reliance.doc
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`9. Attached hereto as Exhibit 9 are true and correct copies of articles pertaining to IWC’s
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`ROYAL SILK whisky. These documents are relevant to IWC’s intent to use, and efforts to
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`commence use, of the mark ROYAL SILK in the U.S. for whisky, and to the issue of likelihood
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`of confusion between IWC’s and Melwani’s respective ROYAL SILK marks.
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`10. Attached hereto as Exhibit 10 are true and correct copies of articles from Lexis-Nexis
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`evidencing third-party use of the mark ROYAL SILK in U.S. commerce. These documents are
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`relevant to the alleged strength and fame of Melwani’s ROYAL SILK trademarks and also to the
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`issue of likelihood of confusion between IWC’s and Melwani’s respective ROYAL SILK marks.
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`11. Attached hereto as Exhibit 11 are true and correct copies of articles from Lexis-Nexis
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`indicating that Royal Silk Ltd. filed for bankruptcy in1988. These documents are relevant to the
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`alleged strength and fame of Melwani’s ROYAL SILK trademarks, the history of Melwani’s
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`ROYAL SILK trademarks, and the veracity of Melwani’s discovery responses.
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`
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`Dated: November 8, 2010
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`
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`Respectfully submitted,
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`International Whisky Company Limited
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`
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`By:______________________________
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`Robert B. Burlingame
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`Pillsbury Winthrop Shaw Pittman LLP
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`P.O. Box 7880
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`San Francisco, CA 94120-7880
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`rburlingame@pillsburylaw.com
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`Phone: (415) 983-1274
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`ROYAL SILK Notice of Reliance.doc
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`EXHIBIT 1
`to
`International Whisky Company Limited’s
`First Notice of Reliance
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`
`
`
`ROYAL SILK Notice of Reliance.doc
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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91188230 (parent)
`Cancellation No. 92050392
`Opposition No. 91188492
`
`OPPOSER’S RESPONSES AND
`OBJECTIONS TO INTERNATIONAL
`WHISKY CO. LIMITED’S FIRST SET
`OF REQUESTS FOR ADMISSION
`
`In The Matter Of the mark: ROYAL SILK
`
`)
`)
`)
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`) )
`
`)
`)
`)
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`PRAKASH MELWANI,
` Opposer and Petitioner,
`
` v.
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`INTERNATIONAL WHISKY CO.
`LIMITED,
` Applicant and Registrant.
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`To:
`
`INTERNATIONAL WHISKY COMPANY LIMITED
`C/O PILLSBURY WINTHROP SHAW PITTMAN LLP
`ATTN: ROBERT B. BURLINGAME
`(Attorneys for Applicant)
`P.O. BOX 7880 CALENDAR/DOCKETING DEPARTMENT
`SAN FRANCISCO, CA 94120-7880
`
`Opposer and Petitioner Prakash Melwani (“Opposer”), prior to completion of
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`discovery, as and for his responses to the First Set of Requests For Admission (“Requests”)
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`received April 13, 2009 from International Whisky Company Limited (“IWC”), herein admits,
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`denies, states, responds, and objects as follows:
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`All responses submitted herein are based upon the present knowledge,
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`information and belief of Opposer, are believed to be accurate as of the date made, and are
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`provided subject to such additional information as may be recalled or discovered in the future.
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`Opposer reserves the right to supplement his responses to the Requests as discovery proceeds
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`and if new information becomes known. Opposer is engaged in the continuing investigation of
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`the matters inquired about in the Requests. Because Opposer’s investigation into the matters
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`1
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`
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`inquired about is continuing, he cannot exclude the possibility that he may be able to obtain more
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`complete information or even information which indicates that the answers being supplied are
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`inaccurate in some respects.
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`By responding to the Requests, Opposer does not waive any privilege, and
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`expressly reserves the right to recall at any time any information produced inadvertently to which
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`any privilege is attached.
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`The fact that Opposer objects to any particular Request should not be construed to
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`mean that information responsive to such Request exists. Similarly, the statement that Opposer
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`will produce information in response to any particular Request should not be construed to mean
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`that information of a type or in the category described in the Request in fact exists. Furthermore,
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`the giving of any information that is otherwise subject to any objection is not a waiver of any
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`such objection as to any other information not given.
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`Opposer expressly reserves the right to object to the use of any information given
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`in response to the Requests on the grounds of relevance or for any other reason. This response
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`does not waive any objection that Opposer may have to any other discovery request involving or
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`relating to the subject matter of the Requests.
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`By responding to any Request, Opposer does not concede that the Request or the
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`response thereto is relevant to the subject matter involved in the pending action or the claims or
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`defenses, nor does he concede that any particular Request is reasonably calculated to lead to the
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`discovery of admissible evidence. Opposer expressly does not concede the relevance or
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`materiality of any Request herein, the subject matter to which it refers, and any response thereto.
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`2
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`
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`GENERAL OBJECTIONS
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`The General Objections, set forth below, apply to statements made and definitions
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`and instructions outlined in IWC’s Requests. They are incorporated into the following responses
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`and specific objections and shall be deemed continuing as to each Request, and are not waived,
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`or in any way limited, by the specific responses or objections.
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`A.
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`Opposer objects to IWC’s definitions and instructions to the extent they
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`attempt to alter the plain meaning of the words used in the Requests, and to the extent they
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`attempt to impose obligations on Opposer other than those imposed or authorized by the Federal
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`Rules of Civil Procedure (“FRCP”) and/or the Trademark Trial and Appeals Board (“TTAB”).
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`B.
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`Opposer objects to the Requests to the extent that they incorporate the
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`words “all,” “each,” “any,” or “every,” on the grounds they are overly broad and unduly
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`burdensome. It is impossible to represent that, even after a reasonable and diligent search, all,
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`each, or every bit of information falling within a description can be or has been assembled.
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`Information or documents may be known by many people and may be kept in a myriad of
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`locations and files. Opposer cannot warrant or represent that each or all or every bit of
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`information requested has been provided; only that Opposer has disclosed that information which
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`he could gather in response to the Requests after a reasonable and diligent investigation.
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`C.
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`Opposer objects to the Requests in their entirety on the grounds that they
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`are overbroad, unduly burdensome and oppressive and to the extent that they seek information
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`that is duplicative.
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`D.
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`Opposer objects to the Requests insofar as they request information
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`beyond the scope permitted by the FRCP and/or the TTAB.
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`3
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`
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`E.
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`Opposer objects to the Requests to the extent that they seek information
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`which is protected against compelled disclosure under the attorney-client privilege and/or the
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`attorney work-product doctrine, or seek information concerning experts or their opinions beyond
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`the confines of the FRCP and/or the rules of the TTAB, or evidencing or constituting material
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`prepared in anticipation of litigation, and/or any other applicable privilege or immunity.
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`F.
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`Opposer objects to the Requests insofar as they seek information
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`concerning the work product, mental impressions, conclusions, opinions, or legal theories of
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`Opposer’s counsel.
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`G.
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`Opposer objects to the Requests insofar as they are unintelligible, vague,
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`or otherwise unclear as to the precise information sought.
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`H.
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`Opposer objects to the Requests to the extent that they seek information
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`beyond his possession, custody, control or knowledge.
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`I.
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`Opposer objects to the Requests to the extent they seek information that is
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`in IWC’s possession, custody, or control or equally available to IWC as to Opposer.
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`J.
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`Opposer objects to the Requests to the extent that they require Opposer to
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`produce information that is neither relevant to the subject matter of these proceedings nor
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`reasonably calculated to lead to the discovery of admissible evidence.
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`K.
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`Opposer objects to the Requests that seek information that is confidential
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`and contains business sensitive information and trade secrets.
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`L.
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`Opposer objects to the Requests to the extent that they exceed the number
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`allowed by the TTAB and/or the FRCP.
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`M.
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`Opposer objects to IWC’s Requests that are presented as separate
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`Requests but contain the same Request number. These apparent mistakes made by IWC confuse
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`4
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`
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`the record.
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`SPECIFIC RESPONSES AND OBJECTIONS
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`REQUEST NO. 1: Melwani has not yet commenced any use of Melwani’s Mark
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`in commerce for watches.
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`RESPONSE: Admits.
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`REQUEST NO. 2: Melwani has not yet commenced any use of Melwani’s Mark
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`in commerce for handbags.
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`RESPONSE: Opposer has not sold any handbags bearing the mark ROYAL
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`SILK during the past five (5) years. Except as expressly admitted, Opposer denies this request.
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`REQUEST NO. 3: Melwani did not first use the mark ROYAL SILK on
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`“handkerchiefs, piece goods, all made in whole or in substantial part of silk” in commerce on or
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`before August 2, 2004.
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`RESPONSE: Denies.
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`REQUEST NO. 4: Melwani did not first use the mark ROYAL SILK for
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`“providing information in the fields of silk, the folklore of silk, the history of silk, and the proper
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`care of silk via websites on a global computer network” in commerce on or before November 1,
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`2003.
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`RESPONSE: Denies.
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`5
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`
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`REQUEST NO. 5: Melwani does not currently use the mark ROYAL SILK in
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`commerce for all of the following: watches; handbags; “handkerchiefs, piece goods, all made in
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`whole or in substantial part of silk”; providing information in the field of silk via websites on a
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`global computer network; providing information in the field of folklore of silk via websites on a
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`global computer network; providing information in the field of the history of silk via websites on
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`a global computer network; providing information in the field of the proper care of silk via
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`websites on a global computer network; tops made wholly or substantially of silk; shorts made
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`wholly or substantially of silk; skirts made wholly or substantially of silk; boxers made wholly or
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`substantially of silk; scarves made wholly or substantially of silk; sashes made wholly or
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`substantially of silk; mufflers made wholly or substantially of silk.
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`RESPONSE: Opposer does not currently use the mark ROYAL SILK in
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`commerce in connection with watches and handbags. Except as expressly admitted, Opposer
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`denies this Request.
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`REQUEST NO. 6: Prakash T. Melwani did not himself first use the mark
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`ROYAL SILK for “wearing apparel made wholly or substantially of silk, namely tops, shorts,
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`skirts, boxers, scarves, sashes and mufflers” in commerce on or before April 22, 1978.
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`RESPONSE: Opposer did not, in his personal capacity as an individual on or
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`before April 22, 1978, first use the mark ROYAL SILK for “wearing apparel made wholly or
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`substantially of silk, namely tops, shorts, skirts, boxers, scarves, sashes and mufflers” in
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`commerce. Except as expressly admitted, Opposer denies this Request.
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`6
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`
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`FIRST REQUEST NO. 7: The dates of first use that Prakash T. Melwani
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`specified in U.S. Trademark Application No. 75632288 are dates that another party, Royal Silk
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`Ltd., allegedly first used the mark ROYAL SILK.
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`RESPONSE: Opposer objects to this Request on the on the grounds that IWC
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`has submitted two separate requests both entitled “Request No. 7” making each such Request
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`and both such Requests unclear, improper, and confusing to the record. Royal Silk, Ltd. (RSNY)
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`is a New York corporation that first used the goods identified in U.S. Trademark Registration
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`No. 2338016 on the dates of first use listed in that Registration. Except as expressly objected to
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`or admitted, Opposer denies this Request.
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`SECOND REQUEST NO. 7: In U.S. Trademark Registration Nos. 2338016 and
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`2944124, and in Application No. 78969040, Melwani has expressly disclaimed the term SILK.
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`RESPONSE: Opposer objects to this Request on the on the grounds that IWC
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`has submitted two separate requests both entitled “Request No. 7” making each such Request
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`and both such Requests unclear, improper, and confusing to the record. The following
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`disclaimer appears on U.S. Trademark Registration Nos. 2338016 and 2944124, and in
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`Application No. 78969040: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE
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`"SILK" APART FROM THE MARK AS SHOWN.” Except as expressly objected to or
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`admitted, Opposer denies this Request.
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`REQUEST NO. 8: Melwani has not used, himself or through a licensee, the
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`mark ROYAL SILK continuously in the United States on or in connection with the goods in
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`Reg. No. 2338016 since April 22, 1978.
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`7
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`RESPONSE: Denies.
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`REQUEST NO. 9: Royal Silk Ltd. filed for bankruptcy in 1988.
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`RESPONSE: RSNY never filed for bankruptcy. Except as expressly admitted,
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`Opposer denies this Request.
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`REQUEST NO. 10: Prakash T. Melwani helped other parties (parties other than
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`IWC) purchase from Royal Silk Ltd. the mark ROYAL SILK and the goodwill relating thereto.
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`RESPONSE: Opposer never helped other parties purchase from RSNY the mark
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`ROYAL SILK and the goodwill relating thereto. Except as expressly admitted, Opposer denies
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`this Request.
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`REQUEST NO. 11: Melwani has abandoned the trademark ROYAL SILK in
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`the United States for the goods in U.S. Trademark Registration No. 2338016.
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`RESPONSE: Denies.
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`REQUEST NO. 12: Melwani has not used, himself or through a licensee, the
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`mark ROYAL SILK continuously in the United States on or in connection with goods in Reg.
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`No. 2944124 since August 2, 2004.
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`RESPONSE: Denies.
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`8
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`
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`REQUEST NO. 13: Melwani has not used, himself or through a licensee, the
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`mark ROYAL SILK continuously in the United States on or in connection with goods in Reg.
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`No. 2944124 since November 1, 2003.
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`RESPONSE: The goods listed in Reg. No. 2944124 showing a first use date of
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`August 2, 2004 have not been used by Opposer continuously in the United States since
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`November 1, 2003. Except as expressly admitted, Opposer denies this Request.
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`REQUEST NO. 14: Melwani did not, on June 4, 1999, have a bona fide
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`intention to use, either himself or through his related company or licensee, the mark ROYAL
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`SILK in U.S. commerce on or in connection with all of the goods and services in Reg. No.
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`2944124.
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`RESPONSE: Denies.
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`REQUEST NO. 15: Melwani knew, on or before March 30, 2006, of the
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`existence of IWC’s U.S. Trademark Registration No. 2929918 for the mark ROYAL SILK for
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`whisky.
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`RESPONSE: At some point Opposer became aware of the existence of IWC’s
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`U.S. Trademark Registration No. 2929918 for the mark ROYAL SILK for whisky. Opposer is
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`unaware of the exact date and cannot recall if it was before, on, or after March 30, 2006. Except
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`as expressly admitted, Opposer denies this Request.
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`9
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`
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`REQUEST NO. 16: Melwani knew, on or before July 24, 2006, of the existence
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`of IWC’s U.S. Trademark Registration No. 2929918 for the mark ROYAL SILK for whisky.
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`RESPONSE: At some point Opposer became aware of the existence of IWC’s
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`U.S. Trademark Registration No. 2929918 for the mark ROYAL SILK for whisky. Opposer is
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`unaware of the exact date and cannot recall if it was before, on, or after July 24, 2006. Except as
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`expressly admitted, Opposer denies this Request.
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`REQUEST NO. 17: Melwani did not make continuous and substantially
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`exclusive use of the mark ROYAL SILK for “wearing apparel made wholly or substantially of
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`silk, namely, tops, shorts, skirts, boxers, scarves, sashes, mufflers: for the five years preceding
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`July 24, 2006.
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`RESPONSE: Denies.
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`REQUEST NO. 18: Melwani, on March 30, 2006, was not using the mark
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`ROYAL SILK for all of the following: tops made wholly or substantially of silk; shorts made
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`wholly or substantially of silk; skirts made wholly or substantially of silk; boxers made wholly or
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`substantially of silk; scarves made wholly or substantially of silk; sashes made wholly or
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`substantially of silk; mufflers made wholly or substantially of silk.
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`RESPONSE: Denies
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`REQUEST NO. 19: Melwani, in August 2004, contacted IWC via email.
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`RESPONSE: Opposer does not recall ever contacting IWC and therefore denies.
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`10
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`
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`REQUEST NO. 20: Royal Silk, Ltd. currently has an ownership interest in the
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`mark ROYAL SILK.
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`RESPONSE: RSNY does not have a current ownership interest in the mark
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`ROYAL SILK. Except as expressly admitted, Opposer denies this Request.
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`REQUEST NO. 21: Royal Silk, Ltd. currently has a license from Melwani to
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`use the mark ROYAL SILK.
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`RESPONSE: RSNY currently has a license from Opposer to use the mark
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`ROYAL SILK. Except as expressly admitted, Opposer denies this Request.
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`REQUEST NO. 22: Royal Silk Direct, Inc. currently has an ownership interest
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`in the mark ROYAL SILK.
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`RESPONSE: Denies.
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`REQUEST NO. 23: Royal Silk Direct, Inc. currently has a license from
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`Melwani to use the mark ROYAL SILK.
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`RESPONSE: Admits.
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`REQUEST NO. 24: Melwani currently has an agreement with Royal Silk
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`Products, Inc. which relates in part to ownership and use of the mark ROYAL SILK.
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`RESPONSE: Denies.
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`11
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`
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`REQUEST NO. 25: Under Melwani’s Agreement with Royal Silk Products, Inc.
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`Royal Silk Products, Inc. is permitted to use the mark ROYAL SILK.
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`RESPONSE: Denies.
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`REQUEST NO. 26: On January 29, 1999, March 30, 2006, July 24, 2006,
`
`and/or October 2, 2006, Melwani did not believe that no other person, firm, corporation or
`
`association had the right to use the mark ROYAL SILK in commerce, either in the identical form
`
`thereof or in such resemblance thereto as to be likely, when used on or in connection with the
`
`goods of such other person, to cause confusion or to cause mistake, or to deceive.
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`RESPONSE: On January 29, 1999, March 30, 2006, July 24, 2006, and/or
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`October 2, 2006, Opposer believed that no other person, firm, corporation or association had the
`
`right to use the mark ROYAL SILK in commerce, either in the identical form thereof or in such
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`resemblance thereto as to be likely, when used on or in connection with the goods of such other
`
`person, to cause confusion or to cause mistake, or to deceive, without his permission. Except as
`
`expressly admitted, Opposer denies this Request.
`
`REQUEST NO. 27: Melwani is unaware of any actual confusion between
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`Melwani’s Mark and IWC’s Mark.
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`RESPONSE: Denies.
`
`REQUEST NO. 28: Melwani is unaware of any actual confusion between
`
`Melwani’s Goods and IWC’s Goods.
`
`RESPONSE: Denies.
`
`12
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`
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`REQUEST NO. 29: Melwani is unaware of any actual confusion between
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`Melwani and IWC.
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`RESPONSE: Denies.
`
`REQUEST NO. 30: Melwani has received a communication, document or thing
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`which the originator of that communication, document or thing intended to be received by IWC.
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`RESPONSE: Denies.
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`REQUEST NO. 31: Melwani has never advertised Melwani’s Mark in beverage
`
`industry trade publications distributed in the United States.
`
`RESPONSE: Admits.
`
`REQUEST NO. 32: Melwani has never advertised Melwani’s Mark in liquor
`
`stores in the United States.
`
`RESPONSE: Admits.
`
`REQUEST NO. 33: Melwani has never advertised Melwani’s Mark in bars or
`
`restaurants in the United States.
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`RESPONSE: Admits.
`
`REQUEST NO. 34: Melwani has never advertised Melwani’s Mark in grocery
`
`stores in the United States.
`
`13
`
`
`
`RESPONSE: Admits.
`
`REQUEST NO. 35: Melwani has never advertised Melwani’s Mark at beverage
`
`industry trade shows in the United States.
`
`RESPONSE: Admits.
`
`REQUEST NO. 36: Melwani’s Goods do not compete with IWC’s Goods.
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`RESPONSE: Denies. Any alleged bona fide use that IWC has made of the mark
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`ROYAL SILK on its goods in the United States competes with Opposer’s goods bearing the
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`ROYAL SILK mark. Any future bona fide use that IWC plans to make of the mark ROYAL
`
`SILK on its goods in the United States will compete with Opposer’s goods bearing the ROYAL
`
`SILK mark.
`
`REQUEST NO. 37: The U.S. Patent and Trademark Office has never cited
`
`IWC’s Mark as an obstacle to registration of Melwani’s Mark.
`
`RESPONSE: Admits.
`
`REQUEST NO. 38: In Melwani’s responses to the U.S. Patent and Trademark
`
`Office concerning the applications and registrations for Melwani’s Mark, Melwani never
`
`mentioned IWC’s Mark or IWC’s applications or registrations therefor.
`
`RESPONSE: Admits.
`
`14
`
`
`
`REQUEST NO. 39: Melwani did not file any opposition, letter of protest,
`
`objection, cancellation, lawsuit or other submission against IWC’s U.S. Trademark Application
`
`No. 75927082 and the resulting U.S. Trademark Registration No. 2929918 until December 31,
`
`2008.
`
`RESPONSE: Admits.
`
`REQUEST NO. 40: The average age of purchasers of Melwani’s ROYAL SILK
`
`products is under 21.
`
`RESPONSE: Denies.
`
`REQUEST NO. 41: Royal Silk Ltd. was liquidated, and its trademark rights
`
`were transferred to a secure creditor who later transferred certain of those trademark rights to
`
`parties other than Melwani and IWC.
`
`RESPONSE: RSNY was never liquidated and RSNY’s rights were never
`
`transferred to a secure creditor. Except as expressly admitted, Opposer denies this Request.
`
`REQUEST NO. 42: Melwani provided consultation services to Royal Silk
`
`Products Inc. and Ultra Silk Inc.
`
`RESPONSE: Opposer objects to this Interrogatory as it is irrelevant to a claim or
`
`defense of a party, and requires Opposer to produce information that is neither relevant to the
`
`subject matter of these proceedings nor reasonably calculated to lead to the discovery of
`
`admissible evidence.
`
`15
`
`
`
`REQUEST NO. 43: There is no likelihood of confusion between the word mark
`
`ROYAL SILK for whisky and the word mark ROYAL SILK for any of Melwani’s Goods.
`
`RESPONSE: Denies.
`
`REQUEST NO. 44: Melwani’s Mark is not sufficiently famous to merit
`
`protection against trademark dilution under United States law.
`
`RESPONSE: Denies.
`
`REQUEST NO. 45: When United States consumers view the mark ROYAL
`
`SILK on whisky, they will likely perceive the mark ROYAL SILK to have a connotation that is
`
`different and distinguishable from the connotation they are likely to perceive when they view the
`
`mark ROYAL SILK on any of Melwani’s Goods.
`
`RESPONSE: Denies.
`
`REQUEST NO. 46: An applicant for U.S. trademark registration should not be
`
`held accountable or penalized for an error made by the U.S. Patent and Trademark Office.
`
`RESPONSE: Denies.
`
`REQUEST NO. 47: There is currently no evidence that IWC’s Mark is diluting,
`
`or likely to dilute, the alleged distinctiveness of Melwani’s Mark in the United States.
`
`RESPONSE: Denies.
`
`16
`
`
`
`The answers to these Requests were sworn to and provided by Opposer Prakash Melwani in his
`
`individual capacity.
`
`Dated: May 11, 2009
`New York, New York
`
`___/s/ Prakash Melwani_______________
`
`Respectfully submitted,
`
`
`
`
` /s/ Anil M. Melwani_______________
` Anil M. Melwani, Esq.
`55 West End Avenue, Suite 9H
`New York, New York 10023
`TEL:
`(917) 226-3055
`EM: melwaninyc@gmail.com
`Attorney for Opposer
`
`17
`
`
`
`CERTIFICATE OF SERVICE
`
`I, Anil M. Melwani, hereby certify that a copy of OPPOSER’S RESPONSES
`
`AND OBJECTIONS TO INTERNATIONAL WHISKY CO. LIMITED’S FIRST SET OF
`
`REQUESTS FOR ADMISSION has been served upon Robert B. Burlingame, Pillsbury
`
`Winthrop Shaw Pittman LLP, P.O. Box 7880 Calendar/Docketing Department, San Francisco,
`
`CA 94120-7880, via Electronic Mail to rburlingame@pillsburylaw.com, per agreement, this 12th
`
`day of May, 2009.
`
` /s/ Anil M. Melwani_______________
`
`18
`
`
`
`
`
`EXHIBIT 2
`to
`International Whisky Company Limited’s
`First Notice of Reliance
`
`
`
`
`
`ROYAL SILK Notice of Reliance.doc
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91188230 (parent)
`Cancellation No. 92050392
`Opposition No. 91188492
`
`MELWANI’S RESPONSES AND
`OBJECTIONS TO INTERNATIONAL
`WHISKY CO. LIMITED’S FIRST SET
`OF INTERROGATORIES
`
`In The Matter Of the mark: ROYAL SILK
`
`)
`)
`)
`
`) )
`
`)
`)
`)
`
`PRAKASH MELWANI,
` Opposer and Petitioner,
`
` v.
`
`INTERNATIONAL WHISKY CO.
`LIMITED,
` Applicant and Registrant.
`
`To:
`
`INTERNATIONAL WHISKY COMPANY LIMITED
`C/O PILLSBURY WINTHROP SHAW PITTMAN LLP
`ATTN: ROBERT B. BURLINGAME
`(Attorneys for Applicant)
`P.O. BOX 7880 CALENDAR/DOCKETING DEPARTMENT
`SAN FRANCISCO, CA 94120-7880
`
`Opposer and Petitioner Prakash Melwani (“Opposer”), prior to completion of
`
`discovery, as and for his responses to the First Set of Interrogatories (“Interrogatories”) received
`
`April 13, 2009 from International Whisky Company Limited (“IWC”), herein states, responds,
`
`and objects as follows:
`
`All responses submitted herein are based upon the present knowledge,
`
`information and belief of Opposer, are believed to be accurate as of the date made, and are
`
`provided subject to such additional information as may be recalled or discovered in the future.
`
`Opposer reserves the right to supplement his responses to the Interrogatories as discovery
`
`proceeds and if new information becomes known. Opposer is engaged in the continuing
`
`investigation of the matters inquired about in the Interrogatories. Because Opposer’s
`
`investigation into the matters inquired about is continuing, he cannot exclude the possibility that
`
`1
`
`
`
`he may be able to obtain more complete information or even information which indicates that the
`
`answers being supplied are inaccurate in some respects.
`
`By responding to the Interrogatories, Opposer does not waive any privilege, and
`
`expressly reserves the right to recall at any time any information produced inadvertently to which
`
`any privilege is attached.
`
`The fact that Opposer objects to any particular Interrogatory should not be
`
`construed to mean that information responsive to such Interrogatory exists. Similarly, the
`
`statement that Opposer will produce information in response to any particular Interrogatory
`
`should not be construed to mean that information of a type or in the category described in the
`
`Interrogatory in fact exists. Furthermore, the giving of any information that is otherwise subject
`
`to any objection is not a waiver of any such objection as to any other information not given.
`
`Opposer expressly reserves the right to object to the use of any information given
`
`in response to the Interrogatories on the grounds of relevance or for any other reason. This
`
`response does not waive any objection that Opposer may have to any other discovery request
`
`involving or relating to the subject matter of the Interrogatories.
`
`By responding to any Interrogatory, Opposer does not concede that the
`
`Interrogatory or the response thereto is relevant to the subject matter involved in the pending
`
`action or the claims or defenses, nor does he concede that any particular Interrogatory is
`
`reasonably calculated to lead to the discovery of admissible evidence. Opposer expressly does
`
`not concede the relevance or materiality of any Interrogatory herein, the subject matter to which
`
`it refers, and any response thereto.
`
`2
`
`
`
`GENERAL OBJECTIONS
`
`The General Objections, set forth below, apply to statements made and definitions
`
`and instructions outlined in IWC’s Interrogatories. They are incorporated into the following
`
`responses and shall be deemed continuing as to each Interrogatory, and are not waived, or in any
`
`way limited, by the specific responses or objections.
`
`A.
`
`Opposer objects to IWC’s definitions and instructions to the extent they
`
`attempt to alter the plain meaning of the words used in the Interrogatories, and to the extent they
`
`attempt to impose obligations on Opposer other than those imposed or authorized by the Federal
`
`Rules of Civil Procedure and/or the Trademark Trial and Appeals Board.
`
`B.
`
`Opposer objects to the Interrogatories to the extent that they incorporate
`
`the words “all,” “each,” “any,” or “every,” on the grounds they are overly broad and unduly
`
`burdensome. It is impossible to represent that, even after a reasonable and diligent search, all,
`
`each, or every bit of information falling within a description can be or has been assembled.
`
`Information or documents may be known by many people and may be kept in a myriad of
`
`locations and files. Opposer canno
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