TTAB
`
`Docket No. 29WG—165342
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposition No. 91 -198552
`
`In re Matter ofSerial No. 77/549,263
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`
`
`
`
`for the mark: ONE LOVE
` MOTION TO COMPEL RESPONSES TO
`RAISING CANE’S USA, LLC,
`INTERROGATORIES AND REQUESTS
`FOR PRODUCTION OF DOCUMENTS
` Opposer,
`
`AND TO PRODUCE DOCUMENTS;
`MOTION TO TEST THE SUFFICIENCY
` VS.
`OF RESPONSES TO REQUESTS FOR
`ADMISSION; MOTION TO STAY
`PENDING THE OUTCOME OF THIS
`MOTION; MOTION TO RESET ALL
` Applicant.
`PENDING DEADLINES
`
`
`
`
`
`
`
`In re Matter ofRegistration No. 3, 033,511
`for the mark: ONE LOVE
`FIFTY-SIX HOPE ROAD MUSIC LIMITED,
`Cancellation No. 92-053461
`
`
`
`
`
`
`RAISING CANE’S USA, LLC,
`
`Registrant.
`
`Petitioner,
`
`vs.
`
`Pursuant to 37 C.F.R. §§ 2.l20(e), FRCP 37, and TBMP §§ 523 and 524, Petitioner and
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`Applicant Fifty-Six Hope Road Music Limited (“Petitioner”) hereby moves the Board for an
`order compelling Registrant and Opposer Raising Cane’s USA, LLC (“Registrant”) to
`supplement its deficient responses to Petitioner’s First Set of Interrogatories Nos. 1, 3-5, 9, and
`11 and to supplement its deficient responses and produce documents responsive to Petitioner’s
`First Set of Request for Production of Documents and Things (“RFPS”) Nos. 1, 3, 6, 11-16, 19-
`20, 27-29, 40-42, 45, 58-60, and 63. Petitioner also moves the Board for an order compelling
`Registrant to supplement its deficient responses to Petitioner's First Set of Requests for
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`-1-
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`FIFTY-SIX HOPE ROAD MUSIC, LTD.,
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`

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`Admission (“RFAS”) Nos. 1, 5, 6, 11-20, 40-42, and 67-83, and to Petitioner’s Second Set of
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`RFA Nos. 141 and 142. Lastly, Petitioner moves the Board for an order staying this proceeding
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`pending the outcome of this motion and resetting all pending deadlines in this matter after the
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`discovery motion is decided.
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`The motion to compel and the motion to test the sufficiency of the RFA responses are
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`made on the grounds that:
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`(1) Registrant's responses to the foregoing discovery requests are
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`deficient for many reasons; (2) Registrant’s objections to the discovery requests are
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`unsupportable; (3) despite Petitioner's efforts to resolve this dispute short of motion practice,
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`Registrant has refused to supplement or amend its responses or produce documents to Petitioner;
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`and (4) all of the discovery requests seek relevant and discoverable information.
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`These motions are supported by the accompanying brief and declaration of Paul A. Bost,
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`and such other papers and argument as may be presented to the Board.
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`Pursuant to its obligations under TBMP §§ 523.02 and 524.02, Petitioner has attempted
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`in good faith to resolve this discovery dispute with Registrant prior to filing these motions.
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`(Declaration of Paul A. Bost ("Bost Decl.") 1111 4-5, 8-9, Exhibits G—H, K-M.) However,
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`Registrant has refused to supplement its responses and produce documents and, therefore, has
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`provided no viable alternative for resolving the instant dispute. Because no resolution has been
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`reached regarding the discovery requests and disclosure of the information sought therein, the
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`instant motions to compel and motion to test the sufficiency of the RFA responses are necessary
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`and should be granted.
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`Respectfully submitted,
`
`SHEPPARD MULLIN RICHTER & HAMPTON, LLP
`
`By: V
`
`
`
`Paul A. Bost
`
`Attorneys/for Petitioner
`Fifty-Six Hope Road Music Limited
`
`Dated: November 29, 2012
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`

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`BRIEF IN SUPPORT OF MOTIONS
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`1.
`
`STATEMENT OF FACTS
`
`A.
`
`Petitioner and its Bob Marley-Related Rights
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`Petitioner is owned and operated by the children of the world-renowned reggae artist,
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`Bob Marley, and is the owner of all intellectual property and publicity rights in the name and
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`likeness of Bob Marley, as well as many trademarks associated with and made famous by Bob
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`Marley. Robert “Bob” Nesta Marley was a Jamaican singer, songwriter, guitarist, and activist.
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`He was the frontman, lead singer, songwriter, and guitarist for the bands The Wailers
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`(1964-1974) and Bob Marley & the Wailers (1974-1981). He is the most widely known
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`performer of ska/reggae music, and is often credited for helping spread Jamaican music to a
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`worldwide audience. Some of Marley’s best known hits include “I Shot the Sheriff,” “No
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`Woman, No Cry,” “Exodus,” “Could You Be Loved,” “Stir It Up,” “Jammin’,” “Redemption
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`Song,” and, most importantly for this case, “One Love.”
`
`During his lifetime and posthumously, Bob Marley released 15 albums and dozens of
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`compilations, reissues, and live albums, many of which are still in print and are well-recognized.
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`To date, Bob Marley recordings have sold more than 100 million units. Bob Marley’s
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`posthumously released record album Legend — which includes the song “One Love” — is the best
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`selling reggae album of all time, having sold more than 20 million records worldwide and being
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`certified more than ten times platinum in the U.S. “One Love” was originally recorded by Bob
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`Marley’s first band, the Wailers, in 1965 and has been included on numerous compilations of
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`Bob Marley’s greatest hits, including the 2001 compilation entitled One Love: The Very Best of
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`Bob Marley. The definitive version of the song was released on the Bob Marley and the Wailers
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`album Exodus, which was named by Time Magazine as the best popular music album of the 20th
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`century.
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`Bob Marley and the term “One Love” have become uniquely and unmistakably
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`associated and linked.» “One Love” is not just one of Bob Marley’s most famous songs, it is
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`perhaps the defining song of his career and the one that best sums up his live-and-let-live
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`-3-
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`

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`philosophy, for which he was and is still recognized. For this reason, Bob Marley’s fans and the
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`general public associate the name “One Love” with Bob Marley.
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`This association has been strengthened by Petitioner’s use of the mark ONE LOVE for a
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`variety of goods and services in addition to sound recordings. Petitioner’s predecessors first
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`used the mark ONE LOVE in conjunction with clothing at least as early as 1990, and Petitioner
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`continues to use the mark ONE LOVE on apparel and other goods and merchandise in reference
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`to Bob Marley and as an indicator of the source of its licensed products. Petitioner has also
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`licensed use of Bob Marley’s song titles, including “One Love,” for use in conjunction with
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`restaurant services since at least as early as 1996. Petitioner offers charitable services under the
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`mark ONE LOVE, ILOVE, and the design mark below:
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`
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`Petitioner has also used the ONE LOVE mark for entertainment services, licensing services, and
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`to promote Petitioner’s business. Petitioner owns pending applications to register ONE LOVE in
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`Classes 25, 41, and 43 (Serial Nos. 77/233,644, 77/549,263, and 77/782,232, respectively).
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`Petitioner and its affiliates are the owners of a number of marks derived from Bob
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`Marley’s identity, persona, and musical legacy, including, but not limited to, BOB MARLEY
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`(Reg. Nos. 2,349,361, 3,692,924, and 3,934,085), BOB MARLEY AND THE WAILERS (Reg.
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`Nos. 2,820,741 and 3,849,342), MARLEY RESORT & SPA (Reg. No. 3,612,800), MARLEY
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`COFFEE (Reg. Nos. 3,778,736, 3,871,574, 4,150,381, 4,158,045, 4,187,013, and 4,242,186),
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`ROOTS ROCK REGGAE (Reg. No. 3,456,082), BURNIN’ (Reg. No. 3,757,894), NICE TIME
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`(Reg. No. 3,757,895), and CATCH A FIRE (2,850,611, 3,692,515, 3,751,455, and 3,746,162).
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`

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`B.
`
`The Board Proceedings
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`Petitioner filed this petition to cancel Registrant’s registration of ONE LOVE for
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`restaurant services in Class 43, Reg. No. 3,033,511 (the “Registration”). The Registration has
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`been cited by the U.S. Patent & Trademark Office (“PTO”) as a bar to Petitioner’s application to
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`register ONE LOVE in Class 43 for “bar and restaurant services; catering; coffee bars; health
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`resort services, namely, providing food and lodging that specialize in promoting patrons‘ general
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`health and well-being; hotel services; providing advice to tourists and business travelers on hotel
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`and restaurant destinations; rental of beach chairs, towels and umbrellas for recreational use;
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`resort lodging services; and wine bars.” Petitioner instituted the cancellation proceeding on the
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`grounds that the Registration violates Lanham Act § 2(a)’s prohibition on the registration of a
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`mark that may falsely suggest a connection with a person, living or dead — in this case, Bob
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`Marley. Petitioner also claims priority in the ONE LOVE mark as between itself and Registrant.
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`Petitioner used the ONE LOVE mark in conjunction with restaurant services prior to Registrant’s
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`first use of the ONE LOVE mark. Petitioner and its predecessors also used the ONE LOVE
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`mark for clothing prior to Registrant’s first use of the ONE LOVE mark, which is relevant given
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`Petitioner’s expansion of its use of ONE LOVE into the apparel and merchandise markets.
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`In its Answer, Registrant denied Petitioner’s pertinent claims and asserted eight
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`affirrnative defenses, claiming, among other things, that Registrant has prior rights in the ONE
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`LOVE mark. Registrant also asserted a counterclaim opposing Petitioner’s pending application
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`to register ONE LOVE in Class 41 for “entertainment services in the nature of live musical
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`performances; organizing cultural festivals featuring music, dance, art exhibitions and heritage
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`markets; providing information on a website relating to music, entertainment, and cultural
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`festivals of others; and music publishing services.” The matters were later consolidated by the
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`Board.
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`In an attempt to discover facts regarding the many issues presented in this case, on
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`August 1, 2011, Petitioner propounded discovery requests on Registrant, consisting of its First
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`Set of Interrogatories, First Set of RFPS, and First Set of RFAs. (Bost Decl. 1] 2, Exs. A-C.)
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`-5-
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`

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`On August 16, 2012 and after a longlsuspension of the matter caused by Registrant’s
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`denied motion for summary judgment, Registrant served its responses to Petitioner’s discovery
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`requests, many of which were deficient for the reasons set forth in Section 11 below. (Bost Decl.
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`11 3, Exs. D-F.) Accordingly, on September 7, 2012, Petitioner sent Registrant a letter detailing
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`said deficiencies in detail and demanding that Registrant supplement its responses as requested
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`and produce documents. (Bost Decl. 1] 4, Ex. G.) On September 13, 2012, Registrant sent
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`Petitioner a letter agreeing to supplement certain responses and refusing to supplement others.
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`(Bost Decl. 11 5, Ex. H.) The parties had a further telephonic meet and confer that same day
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`during which they further discussed Petitioner’s discovery requests. (Bost Decl. 11 5.) On
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`September 24, 2012, Registrant served Petitioner with supplemental responses to certain of
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`Petitioner’s RFAs and Interrogatories. (Bost Decl. 11 6, Exs. I.) On October 4, 2012, Registrant
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`served Petitioner with responses to its Second Set of RFAS. (Bost Decl. 11 7, Ex. J.) On October
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`10, 2012, Petitioner sent Registrant another letter (followed by an email on October 12, 2012)]
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`attempting to resolve the parties’ discovery conflict short of motion practice as to certain
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`discovery requests Registrant continued to refuse to supplement. (Bost Decl. 11 8, Ex. K.) On
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`October 18, 2012, Registrant responded to Petitioner’s October 10 letter and confirmed that it
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`had no intention of further supplementing its responses. (Bost Decl. 1[ 9, Ex. M.)
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`In sum, despite Petitioner's diligent attempts to resolve this discovery dispute short of
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`motion practice and Board intervention, Registrant has maintained its refusal to supplement
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`certain discovery responses forcing Petitioner to seek appropriate relief from the Board.
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`II.
`
`THE MOTION TO COMPEL AND MOTION TO TEST THE SUFFICIENCY
`SHOULD BE GRANTED
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`Petitioner hereby moves the Board for an order compelling Registrant to supplement its
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`responses to Interrogatory Nos. 1, 3-5, 9, and 11, to supplement its responses and produce
`
` '
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`Petitioner’s related email of October 12, 2012 requested that Registrant consider its
`recently served responses to Petitioner’s RFA Nos. 140 and 142 (Ex. K) in its response to
`Petitioner’s letter of October 10, 2012. This is because Registrant’s responses to these RFAs
`were deficient in a manner addressed in Petitioner’s letter of October 10, 2012. (Bost Decl. 1[ 8,
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`Ex. L.)
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`-6-
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`documents responsive to RFP Nos. 1, 3, 6, 11-16, 19-20, 27-29, 40-42, 45, 58-60, and 63, and to
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`admit or deny RFA Nos. 1, 5, 6, 11-20, 40-42, 67-83, and 141-142.
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`A.
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`Petitioner is Entitled to Supplemental Responses to its Discovery Reguests
`and Registrant's Document Production
`
`According to 37 CFR § 2.120(e), "[i]f a party fails to answer any question propounded in
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`a discovery deposition, or any interrogatory, or fails to produce and permit the inspection and
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`copying of any document or thing, the party entitled to disclosure or seeking discovery may file a
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`motion to compel disclosure, a designation, or attendance at a deposition, or an answer, or
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`production and an opportunity to inspect and copy." Likewise, “[i]f a propounding party is
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`dissatisfied with a responding party's answer or objection to a request for admission, and wishes
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`to obtain a ruling on the sufficiency thereof, the propounding party may file a motion with the
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`Board to determine the sufficiency of the response.” TBMP § 524.01. As set forth in detail
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`below, Registrant has not provided suitable or complete responses to much of Petitioner’s written
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`discovery, which is clearly contrary to the liberal policy for discovery established by the FRCP
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`and the policy of this Board. See TBMP § 402.01 (parties may seek discovery “not only as to
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`matters specifically raised in the pleadings, but also as to any matter which might serve as the
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`basis for an additional claim, defense, or counterclaim;”) see also Fischer Gesellschaft m.b.H. v.
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`Molnar & C0,, 203 USPQ 861 (TTAB 1979) (relevancy construed liberally). Registrant must
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`honor his duty by allowing discovery on relevant issues by serving supplemental responses to the
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`Interrogatories, RFPS, and RFAs and producing documents as identified herein.
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`B.
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`Registrant’s Deficient Discovery Responses
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`1.
`
`Registrant Must Respond to Interrogatories and Produce Documents
`With Respect to Goods and Services it Offers Under ONE LOVE
`Other than Restaurant Services
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`Petitioner’s Interrogatory Nos. 1, 3-5, 11 and RFP Nos. 1, 3, 6, 11-16, 19-20, 27-29, 40-
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`42, 59, and 63 seek basic information and documents regarding:
`
`0
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`Products or services sold or intended to be sold by Registrant under its ONE
`LOVE mark, the date of first use of the mark on each product and service, and
`how the mark is used or displayed on such products and services;
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`

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`0 The channels of trade and demographic markets in which such products and
`services move, as well as the retailers of such products and services;
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`0 Registrant’s marketing and advertising methods and strategies for such products
`and services;
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`0
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`Photographs of each product sold by Registrant under the ONE LOVE mark;
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`0 Examples of advertisements for such products and services;
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`0 Registrant’s business plans as relates to products and services offered under the
`ONE LOVE mark;
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`0 Contracts between Registrant and its franchisees regarding products and services
`offered under the ONE LOVE mark; and
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`0 Promotions, giveaways, contests, and the like regarding products and services
`offered under the ONE LOVE mark.
`
`(BostDec1. 112, Exs. A-B.)
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`Registrant has objected to each of these discovery requests as irrelevant to the extent they
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`seek “discovery beyond the goods or services listed in Registrant’s Registration,” or, in other
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`words, restaurant services. (Bost Decl. 1] 3, Exs. D-E.) In sum, Registrant has refused to provide
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`information or documents responsive to these requests to the extent they relate to Registrant’s
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`use of the ONE LOVE mark for anything other than restaurant services.
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`The Board should overrule Registrant’s relevancy objection and order it to produce
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`information and documents responsive to the foregoing discovery requests with respect to all
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`goods and services offered by Registrant under the ONE LOVE mark. TBMP § 414(11)
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`expressly holds that the “information that a party sells the same goods or services as the
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`propounding party, even if under a different mark, is relevant to the issue of likelihood of
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`confusion for purposes of establishing the relationship between the goods or services of the
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`parties,” and TBMP § 414(8) holds that “[a] party's plans for expansion may be discoverable
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`under protective order.” In TBC Corp. v. Grand Prix Ltd., 16 U.S.P.Q.2d 1399, 1400 (TTAB
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`1990), opposer, who was opposing an application of GRAND PRIX for car wash services,
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`propounded interrogatories requesting that applicant identify all goods and services for which
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`applicant had used the GRAND PRIX mark and the details of said use. Id. Although the Board
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`initially sustained the applicant’s refusal to provide details of its use of GRAND PRIX for other
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`-3-
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`

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`goods and services, it granted opposer’s motion for reconsideration, holding that opposer had
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`made a “showing that such information would be relevant to the specific issues involved in the
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`proceeding before the Board or could lead to the discovery of admissible evidence.” Id. In this
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`case “where the goods of the parties differ, information from which it may be learned whether
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`the parties market some goods of the same type is relevant to establishing the relationship
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`between the goods of the parties. This information may lead to the discovery and introduction of
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`admissible evidence concerning likelihood of confusion.” Id.
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`Similar to the situation described in Grand Prix, the goods and services Registrant offers
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`or intends to offer under its ONE LOVE mark are relevant to establishing the relationship
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`between the goods and services offered by the parties. Petitioner’s priority in the ONE LOVE
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`mark is not based solely on its prior use of the mark for restaurant services but its prior use of the
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`mark for clothing and other merchandise, among other goods and services which it contends are
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`related to restaurant services. Petitioner is entitled to Registrant’s disclosure of the goods and
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`services on which it uses its ONE LOVE mark, the details of said use, and documents reflecting
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`the same. Otherwise, Petitioner will be prejudiced in its efforts to establish a likelihood of
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`confusion and its prior rights in the ONE LOVE mark. The infonnation sought by Petitioner is
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`patently relevant to this matter and must be allowed, especially given the foregoing and in light
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`of the fact that scope of discovery allowed parties is broad. See supra. Whether the goods and
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`services offered by the parties under the ONE LOVE mark are related is not within Registrant’s
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`province to decide; instead, Registrant must disclose information related thereto in order for the
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`Board to make this determination.
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`Finally, Registrant’s position that discovery into the other goods and services for which it
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`uses the ONE LOVE mark is irrelevant is undercut by the fact that it has propounded discovery
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`requests inquiring into all of the goods and services on which Petitioner uses the ONE LOVE
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`mark and the manner of said use and, further, has propounded requests for admission on
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`Petitioner inquiring into Petitioner’s use of the ONE LOVE mark for clothing and other goods
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`and services and the relatedness of restaurant services and clothing. (Bost Decl. 1] 10, Exs. N-O.)
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`-9-
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`Registrant cannot simultaneously take the position that its discovery into the goods and services
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`on which Petitioner uses the ONE LOVE mark is relevant, but Petitioner’s discovery of
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`Registrant’s use is irrelevant. Also, Registrant has replied without objection to certain of
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`Petitioner’s RFAs requesting Registrant’s admission that it has used ONE LOVE for certain
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`types of merchandise. (Bost Decl. 11 7, Ex. J; see Registrant’s responses to RFA Nos. 90-119,
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`122.) Registrant cannot contend that Petitioner’s Interrogatories and RFPs regarding its use of
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`ONE LOVE on other goods and services are irrelevant and, at the same time, respond without
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`objection to RFAs seeking similar information.
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`2.
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`Petitioner May Only Deny an RFA on the Basis of Lack of Knowledge
`After Making a Reasonable Inquiry into the Truth of the RFA
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`Petitioner’s RFA Nos. 1, 5, 6, 11-20, 40-42, and 141-142 are as follows:
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`RFA No. 1: "One Love" is the name of a song written by Bob Marley.
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`RFA No. 5: The song "One Love/People Get Ready" appeared on Bob Marley &
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`the Wailer's album entitled Exodus.
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`RFA No. 6: The song "One Love/People Get Ready" appeared on Bob Marley &
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`the Wailer's collection entitled Legend.
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`RFA No. 11: Exodus was released prior to Registrant’s selection of Registrant’s
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`Mark.
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`RFA No. 12: Legend was released prior to Registrant’s selection of Registrant’s
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`Mark.
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`RFA No. 13: Exodus was released prior to Registrant’s first use of Registrant’s
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`Mark.
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`RFA No. 14: Legend was released prior to Registrant’s first use of Registrant’s
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`Mark.
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`RFA No. 15: Exodus was released prior to Registrant’s filing of its application to
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`register Registrant’s Mark.
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`-10-
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`RFA No. 16: Legend was released prior to Registrant’s filing of its application to
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`register Registrant’s Mark.
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`RFA No. 17: Bob Marley is famous.
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`RFA No. 18: Bob Marley became famous prior to Registrant’s selection of
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`Registrant’s Mark.
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`RFA No. 19: Bob Marley became famous prior to Registrant’s first use of
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`Registrant’s Mark.
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`RFA No. 20: Bob Marley became famous prior to Registrant’s filing of its
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`application to register Registrant’s Mark.
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`RFA No. 40: Bob Marley is popularly known as a musician.
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`RFA No. 41: Bob Marley is popularly known as a songwriter.
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`RFA No. 42: Bob Marley is popularly known as an activist.
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`RFA No. 141: Attached hereto as Exhibit D is a true and correct copy of a
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`printout from the House of Blues’ website displaying information related to a
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`Willie Nelson concert presented by Raising Cane’s.
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`RFA No. 142: Attached hereto as Exhibit D is a true and correct copy of a
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`printout from the House of Blues’ website displaying information related to a
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`Willie Nelson concert sponsored by Raising Cane’s.
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`(Bost Decl. W 2, 7, Exs. C and J.)
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`Registrant has denied each of these RFAs on the grounds that it “lacks sufficient
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`knowledge to form a belief as to” the RFA. (BostDec1. ‘H11 3, 6-7, Exs. F, I, and J.) Such a
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`response, on its face, does not comply with FRCP 36(a)(4), which states that the “answering
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`party may assert lack of knowledge or information as a reason for failing to admit or deny only if
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`the party states that it has made reasonable inguiry and that the information it knows or can
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`readily obtain is insufficient to enable it to admit or deny.” (emphasis added) Registrant has not
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`stated or otherwise represented that it has made a reasonable inquiry into the facts to which
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`Petitioner requests Registrant’s admission or denial, and indeed had it, Registrant would have
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`been required to admit these RFAs. Consequently, Registrant’s denials on the basis that it lacks
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`knowledge are facially deficient, and Registrant must supplement its responses after having
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`made a reasonable investigation compliant with the Federal Rules.
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`Registrant has also objected to RFA Nos. 5-6 and 11-20 on the basis that they are
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`irrelevant. These objections are without merit and should be overruled. RFA Nos. 5-6 and 11-
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`16 request Registrant’s admissions or denials of facts related to Bob Marley & the Wailers’
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`albums Exodus and Legend, on both of which, as stated above, the song “One Love” was
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`famously included. When these albums were released in relation to Registrant’s selection and
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`first use of the ONE LOVE mark is relevant to, among other things, the public’s association of
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`the term “One Love” with Bob Marley prior to Registrant’s selection and use of the ONE LOVE
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`mark and Registrant’s intent in selecting the ONE LOVE mark. RFA Nos. l7-20 relate to Bob
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`Marley’s fame, particularly in relation to Registrant’s selection and first use of the ONE LOVE
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`mark. Again this is relevant to the public’s knowledge of Bob Marley prior to Registrant’s
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`selection and use of the ONE LOVE mark and Registrant’s intent. All of these facts are directly
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`relevant to Petitioner’s Section 2(a) false suggestion of a connection claim.
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`3.
`
`Petitioner Must Produce Documents Reflecting Traffic to its Website
`Which Use the ONE LOVE Mark or Discuss this Dispute or
`Proceeding
`
`Petitioner’s RFP Nos. 58 and 60 state the following:
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`RFP No. 58: All documents relating to traffic, including the number of visitors
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`and number of "hits" to any website operated or owned by Registrant, that
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`displayed or featured or currently displays or features Registrant's Mark or
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`Registrant's Goods and Services.
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`RFP No. 60: All documents relating to traffic, including the number of visitors
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`and number of "hits" to any website operated or owned by Registrant that discuss
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`this dispute or this proceeding.
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`(BostDecl. 112, Ex. B.)
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`Registrant objected to both of these RFPs as seeking irrelevant documents and refused to
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`produce responsive documents on that basis. (Bost Decl. 1l 3, Ex. E.) Registrant’s objections are
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`meritless. Registrant has produced printouts of its website purportedly reflecting its use of the
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`ONE LOVE mark and promotion of its goods and services. However, without documents
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`evidencing the number of hits and unique visitors Registrant’s website has received, the market
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`reach and impact of Registrant’s website cannot be evaluated or assessed. Registrant must
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`produce these documents so Petitioner can assess, among other things, the fame of Registrant’s
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`ONE LOVE mark.
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`4.
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`Petitioner Must Respond to Discovery Requests Regarding its Use of
`Album and Song Titles as Trademarks
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`Registrant has refused to respond to Petitioner’s discovery requests regarding Petitioner’s
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`and its affiliates’ use of Bob Marley’s album and song titles other than “One Love” as
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`trademarks. Petitioner’s RFA Nos. 67-83 are as follows:
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`RFA No. 67: Bob Marley and the Wailers released an album named Burnin ’.
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`RFA No. 68: Bob Marley and the Wailers released an album named Catch a
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`Fire.
`
`RFA No. 69: Bob Marley wrote a song entitled “Three Little Birds.”
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`RFA No. 70: Bob Marley’s song “Three Little Birds” was included on Bob
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`Marley & the Wailers’ album named Exodus.
`
`RFA No. 71: A song entitled “Roots, Rock, Reggae” was included on Bob
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`Marley & the Wailers’ album named Rastaman Vibration.
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`RFA No. 72: Bob Marley wrote a song entitled “Nice Time.”
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`RFA No. 73: Fifty-Six Hope Road is the registered owner of Registration No.
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`3,757,894 for BURNIN’.
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`RFA No. 74: Fifty-Six Hope Road is the registered owner of Registration No.
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`3,757,895 for NICE TIME.
`
`-13-
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`

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`RFA No. 75: Fifty-Six Hope Road is the registered owner of Registration No.
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`3,456,082 for ROOTS ROCK REGGAE.
`
`RFA No. 76: Fifty-Six Hope Road is the registered owner of Application No.
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`76/664,939 for ROOTS ROCK REGGAE.
`
`RFA No. 77: Fifty-Six Hope Road is the registered owner of Application No.
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`77/754,919 for THREE LITTLE BIRDS.
`
`RFA No. 78: Fifty-Six Hope Road is the owner of Application No. 77/754,918
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`for THREE LITTLE BIRDS.
`
`RFA No. 79: Catch A Fire Clothing, LLC is the registered owner of Registration
`
`No. 2,850,611 for CATCH A FIRE.
`
`RFA No. 80: Catch A Fire Clothing, LLC is the registered owner of Registration
`
`No. 3,746,162 for CATCH A FIRE.
`
`RFA No. 81: Catch A Fire Clothing, LLC is the registered owner of Registration
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`No. 3,751,455 for CATCH A FIRE.
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`RFA No. 82: Catch A Fire Clothing, LLC is the registered owner of Application
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`No. 77/701,737 for CATCH A FIRE.
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`RFA No. 83: Catch A Fire Clothing, LLC is the registered owner of Registration
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`No. 3,692,515 for CATCH A FIRE.
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`(Bost Decl. 112, Ex. C.)
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`Also, Petitioner’s Interrogatory No. 9 asks Registrant if it was aware of any of
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`Petitioner’s registrations of Bob Marley’s song titles prior to its selection and adoption of the
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`ONE LOVE mark and, if so, the details of its knowledge. (Bost Decl. fl 2, Ex. A.) Finally,
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`Petitioner’s RFP No. 45 requests the production of communications to or from Registrant
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`relating to the ONE LOVE mark, Fifty-Six Hope Road’s use and registration of Bob Marley’s
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`name and song titles as trademarks, Bob Marley himself, Bob Marley's family, or Bob Marley's
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`song "One Love." (Bost Decl. 11 2, Ex. B.)
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`

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`Registrant refused to respond to the above discovery requests on the grounds that they
`
`sought irrelevant information and, in response to RFP No. 45, limited it response to
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`communications “directly related to Registrant’s [ONE LOVE mark].” (Bost Decl. 11 3, Exs. D-
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`F.) Registrant also generally objected to all of Petitioner’s first sets of “discovery requests that
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`concern marks other than [Petitioner’s] alleged ONE LOVE mark as overly broad and not
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`reasonably calculated to lead to the discovery of admissible evidence.” (BostDec1. 11 3, Ex. D.)
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`Registrant’s objections are unfounded. Petitioner’s use and registration of other Bob Marley
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`album and song titles as trademarks is clearly relevant to its practice of using certain of Bob
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`Marley’s famous album and song titles, such as “One Love,” as trademarks and indicators of
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`source. Petitioner will establish that by such practice, the public has come to associate trademark
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`uses of Bob Marley’s song titles with Fifty—Six Hope Road, its predecessors, and Bob Marley.
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`The foregoing also supports Petitioner’s claim that it owns trademark rights in Bob Marley’s
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`identity and persona. Also, Respondent’s knowledge of and communications regarding Bob
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`Marley, trademark rights derived from his musical output, and the song “One Love” are clearly
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`relevant to, among other things, Respondent’s intent in using the ONE LOVE mark and its
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`knowledge of the breadth of Fifty-Six Hope Road’s intellectual property rights.
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`Further, Registrant has propounded discovery requests on Petitioner inquiring into its use
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`of Bob Marley’s song titles as trademarks. (Bost Decl. 11 10, Ex. 0; see Registrant’s RFA Nos.
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`28-32.) Registrant carmot simultaneously claim that its discovery requests elicit relevant
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`information but Petitioner’s do not.
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`C.
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`Petitioner’s Motion is Timely
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`According to TBMP § 523.03, a motion to compel “should be filed within a reasonable
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`time after the failure to respond to a request for discovery .
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`.
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`. and must, in any event, be filed
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`before the first testimony period opens.” Registrant’s relevant responses were served on August
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`16, 2012 and October 4, 2012. Petitioner sent Registrant a meet and confer letter on September
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`7, 2012, the parties met and conferred over the phone on September 13, 2012, and Petitioner
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`followed up with a second meet and confer letter on October 10, 2012. All told, Petitioner files
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`-15-
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`

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`this motion roughly three months after it was served with Petitioner’s discovery responses.
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`Furthermore, the discovery deadline is still months away, and, of course, Petitioner’s testimony
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`period has not yet opened. As such, Petitioner’s motion is filed within a reasonable time after
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`Registrant’s failure to respond to the discovery requests.
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`III. MOTION TO STAY THE PROCEEDINGS PENDING THE BOARD’S
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`DETERMINATION OF THIS MOTION AND TO RESET THE REMAINING
`DEADLINES
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`Petitioner requests the Board to stay these proceedings pending the Board’s adjudication
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`of this motion. After the Board rules on the motion to compel, Petitioner requests that the Board
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`reset the remaining deadlines in this matter.
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`IV.
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`CONCLUSION
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`For the reasons stated above, Petitioner respectfully requests that the Board grant its
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`motions to compel and to test the sufficiency of Registrant’s responses in their entirety and grant
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`its motion to stay this proceeding and reset the testimony periods.
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`Respectfully submitted,
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`SHEPPARD MULLIN RICHTER HAMPTON, LLP
`
`Pym/»-
`
`Paul A- B05‘
`Attorneys for Petitioner
`Fifty-Six Hope Road Music Limited
`
`Dated: November 29, 2012
`
`

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`DECLARATION OF PAUL A. BOST
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`1, Paul A. Bost, declare as follows:
`
`1.
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`I am an attorney duly licensed to practice before the Board and I am an associate
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`in the law firm of Sheppard Mullin Richter Hampton, LLP, counsel of record for Petitioner in
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`this matter. I am the lawyer primarily responsible for this case, along with my partner, Jill
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`Pietrini.
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`I have personal knowledge of the facts set forth in this declaration and if called to
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`testify, I could and would testify competently thereto.
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`2.
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`On August 1, 2011, Petitioner propounded discovery requests on Registrant,
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`consisting of its First Set of Interrogatories, First Set ofRFPS, and First Set of RFAs. True and
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`correct copies of each of these sets of discovery requests are attached hereto, respectively, as
`