Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA444729
`ESTTA Tracking number:
`12/05/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91197947
`Defendant
`Advance Watch Company Ltd
`MATTHEW R MOWERS
`BROOKS KUSHMAN PC
`1000 TOWN CENTER FL 22
`SOUTHFIELD, MI 48075-1183
`UNITED STATES
`mmowers@brookskushman.com, hshovein@brookskushman.com,
`ejbrooks@brookskusman.com, ogelber@collenip.com
`Reply in Support of Motion
`Hope V. Shovein
`hshovein@brookskushman.com, mmowers@brookskushman.com,
`ejbrooks@brookskushman.com
`/hope v shovein/
`12/05/2011
`ADW Reply in Support of Cross-Motion to Compel and for Sanctions 120511.pdf
`( 8 pages )(215888 bytes )
`EX1 to Reply 120511.pdf ( 43 pages )(1592231 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91197947 (parent)
`Serial No. 85024910
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`Opposition No. 91197949
`Serial No. 77967275
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`Opposition No. 91198605
`Serial No. 85001891
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`TISSOT SA
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`Opposer
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`v.
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`ADVANCE WATCH COMPANY LTD.
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`Applicant.
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`REPLY IN SUPPORT OF CRRNKECPVÓS
`1) CROSS-MOTION TO COMPEL, AND
`2) MOTION FOR SANCTIONS
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`1
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`Applicant Advance Watch Company Ltd. (ÐCFYÑ" qt" ÐCrrnkecpvÑ+" hereby
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`responds to Opposer Tissot SAÓu (ÐVkuuqvÑ" qt" ÐQrrqugtÑ+ November 14, 2011 Opposition to
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`CrrnkecpvÓu"1) Cross-Motion to Compel and 2) Motion for Sanctions.
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`
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`I.
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`REPLY
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`A.
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` CrrnkecpvÓu"Etquu-Motion to Compel
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`Tissot has self-determined CFYÓu"Pqvkeg"qh"52*d+*8+"Fgrqukvkqp"qh"Vkuuqv"vq"dg"
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`both improper and untimely, and concludes that it was not required to respond. However, Tissot
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`did not move to quash (or, for a protective order) cpf"vjg"Dqctf"jcu"pqv"twngf"vjcv"CFYÓu"Pqvkeg"
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`of 30(b)(6) Deposition of Tissot was improper.1 As such, ADW is required to designate a
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`30(b)(6) witness.
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`1.
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`
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`CrrnkecpvÓu"Oqvkqps are Igtocpg"vq"QrrqugtÓu"Oqvkqp
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`Tissot argues that ADWÓu" Etquu-Motion to Compel is procedurally defective
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`because it raises issues that are Ðugrctcvg"cpf"fkuvkpev"htqo"vjqug"tckugf"d{"QrrqugtÓs Motion to
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`
`1 Had Tissot made such a motion, it would have been required to support its motion with more
`than the mere assertion of counsel that Tissot does not have anyone that is (or would be) in the
`United States to designate as a 30(b)(6) witness. The opening motion papers show that Tissot
`likely has somebody to designate for examination in the United States under Rule 30(b)(6). See
`rcig" :" qh" CFYÓu" Etquu-Oqvkqp" vq" Eqorgn" cpf" Gzjkdkv" :" vjgtgvq" *gxkfgpeg" qh" VkuuqvÓu" W0U0"
`rtgugpeg+." cu" ygnn" cu" CFYÓu" uwduequent discussion of Swatch AG v. Amy T. Bernard and
`Beehive Wholesale, LLC, at pages 9-32"qh"CFYÓu"Etquu-Motion to Compel. Indeed, it is likely
`vjcv"vjg"rgtuqp"oquv"swcnkhkgf"vq"vguvkh{"qp"VkuuqvÓu"dgjcnh"tgictfkpi"vjg"vqrkeu"nkuvgf"kp"CFYÓu"
`Notice of 30(b)(6) Deposition of Tissot ku"nqecvgf"kp"vjg"Wpkvgf"Uvcvgu"*k0g0."VkuuqvÓu"W0U0"Dtcpf"
`Manager). As support, see QrrqugtÓu"November 28, 2011 Tgurqpugu"vq"CrrnkecpvÓu"Ugeqpf"Ugv"
`of Request for Admission, attached hereto as Exhibit 1 *ÐQrrqugt" cfokvu" vjcv" Vhe Swatch
`Group (U.S.) Inc. is the exclusive distributor of TISSOT-branded products in the United States
`and bears all responsibilities as to the TISSOT brand which are associated therewithÑ+0"
`(Emphasis added.) Other relevant admissions are highlighted in Exhibit 1.
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`
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`2
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`

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`Eqorgn.Ñ"cpf"Vkuuqv"eqpenwfgu"vjcv"CFYÓu"Etquu-Motion should be denied. ADW disagrees for
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`the following reasons.
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`Dqvj" rctvkguÓ" oqvkqpu" vq" eqorgn" ygtg" pgeguukvcvgf" d{" vjg" rctvkguÓ" hcknwtg" vq"
`
`tguqnxg"uejgfwnkpi"kuuwgu"vjgougnxgu."yjkej"ghhqtvu"ygtg"hwtvjgt"htwuvtcvgf"d{"VkuuqvÓu"eqwpugnÓu"
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`stonewalling regarding a 30(b)(6) representative. To vjg" gzvgpv" vjcv" VkuuqvÓu" ctiwogpvu" kp"
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`uwrrqtv"qh"kvu"qyp"oqvkqp"ctg"kpvgtvykpgf"ykvj"kvu"ctiwogpvu"kp"qrrqukvkqp"vq"CFYÓu"oqvkqps, it
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`is quite clear that the issues raised in dqvj" CFYÓu" Etquu-Motion to Compel and Motion for
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`Sanctions are closely related to vjqug"tckugf"kp"VkuuqvÓs Motion to Compel, and the Board may
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`eqpukfgt"vjg"rctvkguÓ"oqvkqpu"vqigvjgt0
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`2.
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`CrrnkecpvÓu"Pqvkeg"qh"52*d+*8+"Fgrqukvkqp"ku"Rtqrgt
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`Tissot deems CFYÓu"Pqvkeg"qh"52*d+*8+"Fgrqukvkqp"qh"Vkuuqv"vq"dg"Ðkpxcnkf"qp"kvu"
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`face because it notkegf" cp" qtcn" fgrqukvkqp" qh" c" hqtgkip" gpvkv{" kp" vjg" Wpkvgf" Uvcvgu.Ñ" ekvkpi" 59"
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`C.F.R. § 2.120(c)(1) regarding the discovery deposition of a natural person residing in a foreign
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`country, and relies on this language as an excuse for its failure to designate a 30(b)(6) witness.
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`Tissot maintains that a 30(b)(6) notice of a foreign party in the United States is automatically
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`defective. However, a foreign party may be deposed in the United States Î 37 C.F.R.
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`§ 2.120(c)(2) clearly states that the deposition of a foreign party may be taken on notice:
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`Whenever a foreign party is or will be, during a time set for discovery, present
`within the United States or any territory which is under the control and
`jurisdiction of the United States, such party may be deposed by oral examination
`upon notice by the party seeking discovery. Whenever a foreign party has or will
`have, during a time set for discovery, an officer, director, managing agent, or
`other person who consents to testify on its behalf, present within the United States
`or any territory which is under the control and jurisdiction of the United States,
`such officer, director, managing agent, or other person who consents to testify in
`its behalf may be deposed by oral examination upon notice by the party seeking
`discovery. The party seeking discovery may have one or more officers, directors,
`managing agents, or other persons who consent to testify on behalf of the adverse
`party, designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure.
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`
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`3
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`

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`The deposition of a person under this paragraph shall be taken in the Federal
`judicial district where the witness resides or is regularly employed, or, if the
`witness neither resides nor is regularly employed in a Federal judicial district,
`where the witness is at the time of the deposition. This paragraph does not
`preclude the taking of a discovery deposition of a foreign party by any other
`procedure provided by paragraph (c)(1) of this section.
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`
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`
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`Kp"cffkvkqp."vjg"Hqwtvj"Ektewkv"Eqwtv"qh"Crrgcnu"jcu"jgnf"vjcv"Ðc"rctv{"oc{"name a
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`eqtrqtcvkqp"cu"c"fgrqpgpv."kp"gkvjgt"c"pqvkeg"qh"fgrqukvkqp"qt"c"uwdrqgpc.Ñ"cpf"Ðvjg"gzcokpkpi"
`
`rctv{" ]oc{_" uggm" vjg" eqtrqtcvkqpÓu" vguvkoqp{" ykvjqwv" tgictf" vq" yjq" cevwcnn{" rtqxkfgu" vjg"
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`vguvkoqp{" qp" dgjcnh" qh" vjg" qticpk¦cvkqp0Ñ" " Rosenruist-Gestao E Servicos LDA v. Virgin
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`Enterprises Ltd., 511 F.3d 437, 85 U.S.P.Q.2d 1385, 1390 (4th Cir. 2007), cert. denied, 128 S. Ct.
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`2508 (2008) (holding that a district court has the power to issue a subpoena for a trial deposition
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`noticed under Fed. R. Civ. P. 30(b)(6) in a Board proceeding, requiring a foreign corporate party
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`to produce an appropriate representative in the United States for testimony, regardless of the
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`domicile of the representative). Clearly, the residence of the individual corporate representative
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`is irrelevant to whether the deponent corporation resides in the United States.
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`VkuuqvÓu"hcknwtg"vq"fgukipcvg"cp{"52*d+*8+"ykvpguu"ecppqv"dg"gzewugf0"" As further
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`cfftguugf" kp" ugevkqp" D" dgnqy" *ÐCrrnkecpvÓu" Oqvkqp" hqt" UcpevkqpuÑ+." CFY" uggmu" ucpevkqpu" kh
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`Tissot maintains that there is not an officer, director, managing agent, or other person residing in
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`the United States who would consent to testify on VkuuqvÓu"dgjcnh regarding the topics identified
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`kp"CFYÓu"Pqvkeg"qh"52*d+*8+"Fgrqukvkqp"qh"Vkuuqv.
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`3.
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`OpposerÓu"Fgocpf"hqt"a Subpoena
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`In an effort to repeat history, Tissot suggests that ADW subpoena The Swatch
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`Group (U.S.) Inc., as in the prior Board proceeding, Swatch AG v. Amy T. Bernard and Beehive
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`Wholesale, LLC, Opposition No. 91169312 *jgtgkpchvgt"ÐSwatcj"x0"DgtpctfÑ).
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`4
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`

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`Cu" pqvgf" kp" CFYÓu" qrgpkpi" dtkgh." Swatch AG refused to designate a 30(b)(6)
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`witness in the United States in Swatch v. Bernard, requiring the applicant to subpoena The
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`Swatch Group (U.S.) Inc0""VkuuqvÓu"ewttgpv"eqwpugn"tgrtgugpvgf"Uycvej"CI in that matter, and
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`vjg" tgeqtf" ujqyu" vjcv" VkuuqvÓu" eqwpugn" eqornckpgf" kp" Swatch v. Bernard that a third party
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`deposition requires a subpoena, later (unsuccessfully) moved to quash that subpoena, and also
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`(unsuccessfully) moved to strike excerpts of the court-qtfgtgf"fgrqukvkqp"htqo"vjg"crrnkecpvÓu"
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`Notice of Reliance. The Board ultimately accepted the excerpts from the court-ordered
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`deposition of a representative of The Swatch Group (U.S.) Inc. as 30(b)(6) testimony.
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`Hwtvjgtoqtg."cu"cnuq"pqvgf"kp"CFYÓu"qpening brief, Swatch AG ultimately took
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`no testimony from Swatch AG in Swatch v. Bernard. Rather, they took testimony depositions of
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`two employees of The Swatch Group (U.S.) Inc. in support of the opposition brought by Swatch
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`AG.
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`It is quite evident that Tissot is stonewalling discovery. D{" VkuuqvÓu own
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`admissions, The Swatch Group (U.S.) Inc. bears all responsibilities as to the TISSOT brand in
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`the United States, and The Swatch Group (U.S.) Inc. has a TISSOT Brand Manager, Ms. Sharon
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`Buntain, with knoyngfig" qh" VkuuqvÓu" octmu0" " See Exhibit 1 (QrrqugtÓu" Pqxgodgt" 4:." 4233"
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`Tgurqpugu"vq"CrrnkecpvÓu"Ugeqpf"Ugv"qh"Tgswguv"hqt"Cfokuukqp). Despite the obvious presence
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`of Tissot in the United States (including individuals knowledgeable of the topics identified in
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`CFYÓu"52*d+*8+"Pqvkeg"qh"Fgrqukvkqp"qh"Vkuuqv+, Tissot vehemently argues that Tissot does not
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`have anyone to designate under 30(b)(6) in the United States, with nothing more than the
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`cuugtvkqp"qh"kvu"eqwpugn"vq"uwrrqtv"uwej"rqukvkqp0""Kpfggf."VkuuqvÓu"eqwpugn"wpuweeguuhwnn{"ocfg"
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`the same unsupported arguments before the Board in Swatch v. Bernard. Tissot should not be
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`allowed to continue to increase expenses in this proceeding by requiring the parties to also
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`5
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`dispute a subpoena to reach the same result Î Tissot can and should designate its 30(b)(6)
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`witness without further expense and delay.
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`B.
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`CrrnkecpvÓu"Oqvkqp"for Sanctions
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`Tissot ctiwgu"vjcv"CFYÓu"Oqvkqp"hqt"Ucpevkqpu"ku"fghgevkxg"qp"kvu"hceg"dgecwug"kv"
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`was not filed separately, pursuant to Fed. R. Civ. P. 11(c)(2), regarding sanctions under Rule 11.
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`However, tjg" DqctfÓu authority to enter sanctions for conduct or misconduct related to
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`disclosures or discovery is rooted in Fed. R. Civ. P. 37. See TBMP 411.05. Indeed, Rule 11
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`uvcvgu<""ÐThis rule does not apply to disclosures and discovery requests, responses, objections,
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`and motions under Rules 26 through 37.Ñ""Hgf0"T0"Ekx0"R0"33*f+ *ÐKpcrrnkecdknkv{"vq"Fkueqxgt{Ñ+.
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`Pursuant to 37 CFR § 2.120(g), a party may be subject to sanctions if they inform
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`the party seeking the deposition that no response will be made, and the Board may make any
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`appropriate order, including any of the orders provided in Fed. R. Civ. P. 37(b)(2). In this case,
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`Tissot refuses to respond to CFYÓu"Pqvkeg"qh"52*d+*8+"Fgrqukvkqp"qh"Vkuuqv."crrctgpvn{"enckokpi"
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`that Tissot does not have a corporate presence in the United States, nor officer, director,
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`managing agent, or other person residing in the United States who would consent to testify on its
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`behalf.2
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`To the extent that Tissot maintains its position that there is not an officer, director,
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`managing agent, or other person residing in the United States who would consent to testify on
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`VkuuqvÓu"dgjcnh tgictfkpi"vjg"vqrkeu"kfgpvkhkgf"kp"CFYÓu"Pqvkeg"qh"52*d+*8+"Fgrqukvkqp"qh"Vkuuqv."
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`ADW asks that the Board issue an order that Tissot not be allowed to later rely on a witness, or
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`information from a witness, located in the United States in this proceeding. See TBMP 527.01(e)
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`*ÐA party that responds to a request for discovery by indicating that it does not have the
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`2 Vkuuqv"ctiwgu"vjcv"dgecwug"Vkuuqv"fggogf"CFYÓu"Pqvkeg"qh"52*d+*8+"Fgrqukvkqp"qh"Vkuuqv"vq"dg"
`both improper and untimely, it was not required to respond. However, as noted earlier in this
`brief, Tissot did not move to quash (or, for a protective order) and the Board has not ruled that
`CFYÓu"Pqvkeg"qh"52*d+*8+"Fgrqukvkqp"qh"Vkuuqv"ycu"kortqrgt0""
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`6
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`information sought, or by stating objections thereto, may be barred by its own action from later
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`introducing the information sought in the request as pctv"qh"kvu"gxkfgpeg"qp"vjg"ecugÈÑ+0
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`II.
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`CONCLUSION
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`For all of the foregoing reasons, ADW respectfully requests that the Board grant
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`dqvj"CFYÓu"Oqvkqp"vq"Eqorgn"Vkuuqv"vq"ocmg"c"fgukipcvkqp"wpfgt"Twng"52*d+*8+"cpf"CFYÓu"
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`BROOKS KUSHMAN P.C.
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`By:
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`_______________________________
`ROBERT C.J. TUTTLE
`MATTHEW R. MOWERS
`HOPE V. SHOVEIN
`1000 Town Center,
`Twenty-Second Floor
`Southfield, Michigan 48075
`(248) 358-4400
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`Attorneys for Applicant
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`related Motion for Sanctions.
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`Dated: December 5, 2011
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`7
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`CERTIFICATE OF SERVICE
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`
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`I certify that I served:
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`TGRN["KP"UWRRQTV"QH"CRRNKECPVÓU
`1) CROSS-MOTION TO COMPEL, AND
`2) MOTION FOR SANCTIONS
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`on December 5, 2011 by:
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`delivering
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`mailing (via First-Class mail)
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` a
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` copy to:
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`Jess M. Collen
`Oren Gelber
`COLLEN IP
`The Holyoke-Manhattan Building
`80 South Highland Ave.
`Ossining, NY 10562
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`Attorney for Opposer
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`_______________________________
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`8
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91197947 (parent)
`Serial No. 85024910
`
`Opposition No. 91197949
`Serial No. 77967275
`
`Opposition No. 91198605
`Serial No. 85001891
`
` /
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`TISSOT SA
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`Opposer
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`v.
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`ADVANCE WATCH COMPANY LTD.
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`Applicant.
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`REPLY IN SUPPORT OF APPLICANT’S
`1) CROSS-MOTION TO COMPEL, AND
`2) MOTION FOR SANCTIONS
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`EXHIBIT 1 – Opposer’s Responses to Applicant’s Second Set of Request for Admission
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`ATTORNEY DOCKET NO. K827
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`
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`Opposer,
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`V.
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`Advance Watch Company Ltd.,
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`
`Opp.No. 91197947
`Serial No. 85024910
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`Mark: DIGI-TOUCH
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`Opp. No. 91 197949
`Serial No. 77967275
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`Mark: QUICKTOUCH
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`Opp. No. 91198605
`Serial No. 85001891
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`Mark: TOUCH&GO
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`Applicant.
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`Opposer,
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`Tissot S.A.,
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`v.
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`Advance Watch Company Ltd.,
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`Applicant.
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`Opposer,
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`v.
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`Advance Watch Company Ltd.,
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`Applicant.
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`OPPOSER’S RESPONSES TO APPLICANT’S SECOND SET OF REQUESTS FOR
`ADMISSIONS
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`Opposer, Tissot S.A. (“Tissot” or “Opposer”), by and through its attorneys, pursuant to
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`

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`F.R.C.P. 26 and 36, hereby objects and responds to Applicant’s Second Set of Requests for
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`Admissions as follows:
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`GENERAL OBJECTIONS
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`A.
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`Opposer objects to each and every request in their entirety on the ground that
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`Opposer is responding on the basis of its current knowledge and information. Opposer reserves
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`the right to supplement each response to these requests.
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`B.
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`Opposer objects to each and every Document Request insofar as and to the extent
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`it seeks information protected by the attorney-client privilege, the work product doctrine, or any
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`other applicable privilege or immunity, and will not produce such information. Any inadvertent
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`disclosure of such information shall not be a waiver of the attorney-client privilege, the work
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`product doctrine, or any other applicable privilege or immunity.
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`C.
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`Opposer objects to each and every Document Request insofar as and to the extent
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`it seeks divulgence of trade secrets, confidential or proprietary information of any third-party,
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`such information will not be disclosed. To the extent each and every request seeks divulgence of
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`such information of Opposer, such information will be disclosed subject to an appropriate
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`protective order signed by the Parties to this Opposition.
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`D.
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`Opposer objects to each and every Document Request to the extent it seeks
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`production of information relating to or revealing proprietary development activities for
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`Opposer's products not yet manufactured or not yet on sale or otherwise available to the public.
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`The slight relevance, if any, of such highly confidential
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`trade secret
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`information is vastly
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`outweighed by the severe prejudice that would result to Opposer were it to be disclosed or
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`available to competitors of Opposer. Opposer will not provide such information.
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`

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`E.
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`Opposer objects to each and every Document Request to the extent it calls for
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`information neither relevant to the subject matter of this Opposition nor reasonably calculated to
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`lead to the discovery of admissible evidence.
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`F.
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`Opposer objects to each and every request to the extent it is overly broad, vague
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`and ambiguous, unduly burdensome or not reasonably calculated to lead to the discovery of
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`admissible evidence
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`G.
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`Opposer objects to each and every request to the extent it calls for information
`
`that exceeds a reasonable durational scope.
`
`H.
`
`Opposer objects to each and every request to the extent that it is not limited in
`
`geographic scope.
`
`l.
`
`J.
`
`Opposer objects to each and every request to the extent it is duplicative.
`
`Opposer objects to Advance Watch Company Ltd.’s (“Applicant”) definitions in
`
`their entirety to the extent same seeks to impose obligations on Opposer beyond those permitted
`
`by the Federal Rules of Civil Procedure and the Trademark Rules of Practice.
`
`K.
`
`Opposer objects to each and every Document Request to the extent it calls for
`
`information not yet available. Opposer reserves the right to supplement responses when the
`
`information becomes available.
`
`RESPONSES
`
`REQUEST TO ADMl[T NO. 27: Admit that The Swatch Group (US) Inc. is identified as
`
`“the exclusive distributor in the United States for the Swatch Group Brands” and “responsible for
`
`maintaining the quality and good will of the respective trademarks and copyrights” in the
`
`attached August 21, 2009 Complaint by “SWATCH S.A. a/k/a SWATCH A.G., a Switzerland
`
`Corporation, and THE SWATCH GROUP (U.S.) Inc., a Delaware Corporation.” See Exhibit 1.
`
`

`
`RESPONSE:
`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer
`
`objects to this Request on the grounds of relevance. Notwithstanding and without waiving the
`
`foregoing objections, Opposer admits that Applicant has attached an Exhibit 1 to its Second
`
`Requests for Admissions and that contained in Exhibit 1 is an August 21, 2009 Complaint, in
`
`which “SWATCH S.A. a/k/a SWATCH A.G., a Switzerland Corporation, and THE SWATCH
`
`GROUP (U.S.) Inc., a Delaware Corporation” are named as Plaintiffs. Opposer further admits
`
`that paragraph 4 of the Complaint states “TSG is the exclusive distributor in the United States for
`
`the Swatch Group Brands and is responsible for maintaining the quality and good will of the
`
`respective trademarks and copyrights.”
`
`REQ QUEST TO ADMIT NO. 28: Admit that The Swatch Group (US) Inc. is responsible for
`
`maintaining the quality and good will of the Tissot Brand in the United States.
`
`RESPONSE:
`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer
`
`objects to this Request on the grounds of relevance. Notwithstanding and without waiving the
`
`foregoing objections, Opposer admits that The Swatch Group (U.S.) Inc. is the exclusive
`
`distributor of TISSOT—branded products in the United States and bears all responsibilities as to
`
`the TISSOT brand which are associated therewith.
`
`REQUEST TO ADMIT NO. 29: Admit that Tissot SA is related to a U.S. entity known as
`
`Tissot (US), Inc.
`
`RESPONSE:
`
`

`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer
`
`objects to this Request on the grounds of relevance. Opposer objects to this Request as vague and
`
`ambiguous. Notwithstanding and without waiving the foregoing objections, denied.
`
`REQUEST TO ADMIT NO. 30: Admit that Ms. Sharon Buntain is Tissot U.S. Brand
`
`Manager.
`
`RESPONSE:
`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer
`
`objects to this Request on the grounds of relevance. Opposer objects to this Request as vague and
`
`ambiguous. Notwithstanding and without waiving the foregoing objections, Ms. Sharon Buntain
`
`is the TISSOT Brand Manager with The Swatch Group (U.S.) Inc..
`
`RE! QUEST TO ADMIT NO. 31: Admit that Ms. Sharon Buntain is President of Tissot U.S.
`
`RESPONSE:
`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer
`
`objects to this Request on the grounds of relevance. Opposer objects to this Request as vague and
`
`ambiguous. Notwithstanding and without waiving the foregoing objections, denied.
`
`REQUEST TO ADMl[T NO. 32: Admit that Ms. Sharon Buntain has knowledge of
`
`Opposer’s T TOUCH & Design, T TOUCH EXPERT and SEA-TOUCH marks.
`
`RESPONSE:
`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer
`
`objects to this Request on the grounds of relevance. Notwtishtanding and without waiving the
`
`

`
`foregoing objections, admitted.
`
`REQUEST TO ADMIT NO. 33: Admit that Ms. Sharon Buntain has knowledge of the
`
`alleged fame and recognition of Opposer’s T TOUCH & Design, T TOUCH EXPERT and SEA-
`
`TOUCH marks (the TOUCH Marks); the alleged priority of Opposer’s TOUCH Marks; and the
`
`advertising, marketing, promotion and sales of goods sold under Opposer’s Marks.
`
`RESPONSE:
`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer
`
`objects to this Request on the grounds of relevance. Opposer objects to this Request as
`
`compound.
`
`REQUEST TO ADMIT NO. 34: Admit that Ms. Caroline Faivet is President of Swatch
`
`Group (US) Inc.
`
`RESPONSE:
`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer objects to
`
`this Request on the grounds of relevance. Notwithstanding and without waiving the foregoing
`
`objections, admitted.
`
`REQUEST TO ADMIT NO. 35: Admit that Ms. Carlone Faivet has knowledge of Opposer’s
`
`T TOUCH & Design, T TOUCH EXPERT and SEA-TOUCH marks.
`
`RESPONSE:
`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer objects to
`
`this Request on the grounds of relevance. Opposer objects to this Request as compound. Opposer
`
`

`
`objects to this Request as vague and ambiguous. Notwithstanding and without waiving the
`
`foregoing objections, Opposer responds that to the extent that Ms. Caroline Faivet is the
`
`President of The Swatch Group (U.S.) Inc., Opposer’s exclusive U.S. distributor, she has a
`
`general knowledge of Opposer’s Marks.
`
`REQUEST TO ADMIT NO. 36: Admit that Ms. Carlone Faivet has knowledge of the
`
`alleged fame and recognition of Opposer’s T TOUCH & Design, T TOUCH EXPERT and SEA-
`
`TOUCH marks (the TOUCH Marks); the alleged priority of Opposer’s TOUCH Marks; and the
`
`advertising, marketing, promotion and sales of goods sold under Opposer’s Marks.
`
`RESPONSE:
`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer objects to
`
`this Request on the grounds of relevance. Opposer objects to this Request as compound.
`
`Notwithstanding and without waiving the foregoing objections, Opposer can neither admit nor
`
`deny this Request, after due diligence, because the request is vague and ambiguous.
`
`REQUEST TO ADMIT NO. 37: Admit that Mr. Neal Gordon is General Counsel for The
`
`Swatch Group (U.S.) Inc.
`
`RESPONSE:
`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer objects to
`
`this Request on the grounds of relevance. Notwithstanding and without waiving the foregoing
`
`objections, admitted.
`
`

`
`REQUEST TO ADMIT NO. 38: Admit that Mr. Neal Gordon oversees trademark matters in
`
`the U.S. for Swatch Group brands, including Tissot.
`
`RESPONSE:
`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer objects to
`
`this Request on the grounds of relevance. Opposer can neither admit nor deny this Request, after
`
`due diligence, because the request is vague and ambiguous.
`
`REQ QUEST TO ADMIT NO. 39: Admit that Mr. Neal Gordon has knowledge of the alleged
`
`fame and recognition of Opposer’s T TOUCH & Design, T TOUCH EXPERT and SEA-
`
`TOUCH marks (the TOUCH Marks); the alleged priority of Opposer’s TOUCH Marks; and the
`
`advertising, marketing, promotion and sales of goods sold under Opposer’s Marks.
`
`RESPONSE:
`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer objects to
`
`this Request on the grounds of relevance. Opposer objects to this Request as compound.
`
`Notwithstanding and without waiving the foregoing objections, Opposer can neither admit nor
`
`deny this Request, after due diligence, because the request is Vague and ambiguous.
`
`REQ QUEST TO ADMIT NO. 40: Admit that there are individuals located in the United States
`
`with knowledge as to the alleged fame and recognition of Opposer’s T TOUCH & Design, T
`
`TOUCH EXPERT and SEA-TOUCH marks (the TOUCH Marks); the alleged priority of
`
`Opposer’s TOUCH Marks; and the advertising, marketing, promotion and sales of goods sold
`
`under Opposer’s Marks.
`
`RESPONSE:
`
`

`
`Opposer incorporates all of its General Objections as if fully stated herein. Opposer objects to
`
`this Request on the grounds of relevance. Opposer objects to this Request as compound.
`
`Opposer, after due diligence, states that there are individuals in the United States knowledgeable
`
`of the fame of the marks, whether or not in the employ or under the control of the Opposer.
`
`REQUEST TO ADMIT NO. 41: Admit that there are individuals employed by either Tissot
`
`SA or its related entities who are located in the United States with knowledge as to the alleged
`
`fame and recognition of Opposer’s T TOUCH & Design, T TOUCH EXPERT and SEA-
`
`TOUCH marks (the TOUCH Marks); the alleged priority of Opposer’s TOUCH Marks; and the
`
`advertising, marketing, promotion and sales of goods sold under Opposer’s Marks.
`
`RESPONSE:
`
`Opposer incorporates all of its General Objections as if fiilly stated herein. Opposer objects to
`
`this Request on the grounds of relevance. Opposer objects to this Request as compound. Opposer
`
`is unable to respond to this Request as it is vague and ambiguous with respect to the term
`
`“related entities.”
`
`Respectfully Submitted,
`
`By: C
`
`Jess M. Collen
`
`Oren Gelber
`
`COLLEN IP
`
`THE HOLYOKE-MANHATTAN BUILDING
`
`80 South Highland Avenue
`Ossining, NY 10562
`(914) 941-5668 Tel.
`(914) 941-6091 Fax
`Attorneys for Opposer Tissot S’./1.
`
`Dated: November 28, 2011
`
`

`
`

`
`
`
`EXHIBIT 1 to
`APPLICANT’S SECOND SET OF REQUESTS FOR ADMISSION TO OPPOSER
`
`

`
`Case 1:09-cv-22125-FAM Document 4 Entered on FLSD Docket 08/21/2009 Page 1 of 31
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`Case No.: 09-CV-22125-MORENO/TORRES
`
`
`
`
`
`
`SWATCH S.A. a/k/a SWATCH A.G.,
`
`a Switzerland Corporation, and
`THE SWATCH GROUP (U.S.) Inc.,
`
`a Delaware Corporation,
`
`
`
` Plaintiffs,
` v.
`
`MARLUS, INC.,
`
`a Florida Corporation,
` INVERSIONES JEVM, INC., a/k/a JEVM, INC.,
`
`a Florida Corporation,
`ALEX GENTA,
`
`an individual,
`MARTHA H. GENTA,
`
`an individual,
`JORGE EDWIN VILLEGAS MUNOZ,
`
`an individual,
`JOHN and JANE DOE 1-10, and
`JOHN DOE CORPORATIONS 1-10,
`all whose true names are unknown,
`
`
`
`
`
` Defendants.
`
`
`FIRST AMENDED COMPLAINT
`
`
`
`
`
`
`
`The Plaintiffs, Swatch, S.A. a/k/a/ Swatch A.G. and The Swatch Group (U.S.) Inc.,
`
`(collectively referred to as “Plaintiffs”) submit this First Amended Complaint pursuant to Fed. R.
`
`Civ. P. 15(a)(1) and Local Rule 15.1.
`
`Plaintiffs bring this action to obtain redress and compensation for past and ongoing loss
`
`and damage sustained as a result of infringement and unfair competition by Defendants, Marlus,
`
`Inc., Inversiones JEVM, Inc., also known as JEVM, Inc., Alex Genta, Martha H. Genta, Jorge
`
`Edwin Villegas Munoz, John and Jane Doe 1-10 and John Doe Corporations 1-10
`
`

`
`Case 1:09-cv-22125-FAM Document 4 Entered on FLSD Docket 08/21/2009 Page 2 of 31
`
`(“Defendants”). As and for its First Amended Complaint against the Defendants, Plaintiffs
`
`hereby state and allege the following:
`
`
`
`PARTIES
`
`1.
`
`Plaintiff, Swatch S.A. a/k/a Swatch A.G. (“Swatch”) is a corporation duly
`
`organized and existing under the laws of Switzerland, located at 94 Rue Jakob Stampfli, CH-
`
`25009 Bienne, Switzerland. Swatch is a manufacturer and seller of watches, watch parts, jewelry
`
`and electronics under a multitude of valid, subsisting, incontestable, famous registered and
`
`common law trademark including SWATCH, IRONY, SKIN, and DIAPHANE. Swatch also has
`
`valid copyright and patent protection for the creative expression of its unique and original
`
`designs embodied in tangible form in the watches sold under the SWATCH brand.
`
`2.
`
`Plaintiff The Swatch Group (U.S.) Inc. (“TSG”) is a corporation duly organized
`
`and existing by virtue of the laws of Delaware with its principal place of business at 1200 Harbor
`
`Boulevard, 7th Floor, Weehawken, New Jersey.
`
`3.
`
`TSG and Swatch are subsidiaries of The Swatch Group Ltd. of Bienne,
`
`Switzerland. The Swatch Group Ltd is the parent company of at least 18 major watch brands
`
`which it sells worldwide including OMEGA, LONGINES, TISSOT, BREGUET, and SWATCH
`
`(the “Swatch Group Brands”).
`
`4.
`
`TSG is the exclusive distributor in the United States for the Swatch Group Brands
`
`and is responsible for maintaining the quality and good will of the respective trademarks and
`
`copyrights.
`
`5.
`
`TSG is the exclusive distributor of Swatch’s goods, including those bearing the
`
`trademarks SWATCH, IRONY, SKIN and DIAPHANE sold in the United States. TSG only sells
`
`Swatch Group Brands in the United States itself or through appointed authorized retailers.
`
`
`
`2
`
`

`
`Case 1:09-cv-22125-FAM Document 4 Entered on FLSD Docket 08/21/2009 Page 3 of 31
`
`6.
`
`On information and belief, Defendant Marlus, Inc. is a corporation duly registered
`
`under the laws of the state of Florida, with an address of 5880 Collins Avenue, Suite 1402,
`
`Miami Beach, Florida, 33140.
`
`7.
`
`On information and belief, Defendant Martha H. Genta is the principal,
`
`proprietor, director and/or officer of Defendant Marlus, Inc.
`
`8.
`
`9.
`
`On information and belief, Defendant Alex Genta is an employee of Marlus, Inc.
`
`On information and belief, Defendant Inversiones JEVM, Inc., also known as
`
`JEVM, Inc., is a corporation duly registered under the laws of the state of Florida, with an
`
`address of 9350 Fontainblue Boulevard, #C614, Miami, Florida 33172, and is the successor in
`
`interest to Marlus, Inc., in and to the Watch Land business operated at the Dolphin Mall.
`
`10.
`
`On information and belief, Defendant Jorge Edwin Villegas Munoz is the sole
`
`shareholder, principal, proprietor, director and/or officer of Defendant Inversiones JEVM, Inc.,
`
`also known as JEVM, Inc.
`
`11.
`
`Upon information and belief, from its inception and until June 17, 2009,
`
`Defendant Marlus, Inc. was the owner and operator of the business known as Watch Land, also
`
`referred to as Watchland, operating in the state of Florida with its principal place of business at
`
`11401 NW 12th Street, Miami, Florida 33172 located in the Dolphin Mall.
`
`12.
`
`Upon information and belief, on June 17, 2009, Marlus, Inc. sold and transferred
`
`the Watch Land business, all of its good will, inventory, and all assets and liabilities, to
`
`Defendant Inversiones JEVM, Inc., its successor in interest, which is now the current owner of
`
`the business known as Watch Land, also referred to as Watchland, operating in the state of
`
`Florida with its principal place of business at 1