Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA563507
`ESTTA Tracking number:
`10/07/2013
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91200327
`Plaintiff
`James Murta
`KURT LEYENDECKER
`LEYENDECKER & LEMIRE LLC
`5460 S Quebec Street, SUITE 330
`Greenwood Village, CO 80111
`UNITED STATES
`kurt@coloradoiplaw.com
`Motion to Compel Discovery
`Kurt Leyendecker
`kurt@coloradoiplaw.com, trademark@coloradoiplaw.com
`/Kurt P Leyendecker/
`10/07/2013
`Motion_to_Compel_Discovery_10072013.pdf(69171 bytes )
`ExhibitsA-D.pdf(3050580 bytes )
`ExhibitsE-J.pdf(1751062 bytes )
`ExhibitsK-L.pdf(2065347 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
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
`THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Trademark Application No. 77886135
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`For the Mark: DERBY OF SAN FRANCISCO
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`___________________________________
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`James Murta
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`Plaintiff,
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`v.
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`Victor Suarez
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`Defendant.
`____________________________________ )
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`OPPOSITION
`PROCEEDING No. 91200327
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`PETITIONER’S MOTION TO COMPEL DISCOVERY RESPONSES
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`Pursuant to Fed.R.Civ.P. 37(a) and 37 CFR § 2.120(e) Plaintiff, Jim Murta,
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`hereby moves for an Order compelling Applicant, Victor Suarez, to produce documents
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`and information alluded to but not produced in his Initial Disclosures and requested in
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`Opposer’s Request for Production of Documents to Applicant of June 18, 2013,
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`Plaintiff’s Request For Production of Documents to Defendant of August 1, 2013 and
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`Plaintiff’s Interrogatories to Defendant of August 1, 2013.
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`The Plaintiff has made a good faith effort to consult with the Defendant and
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`resolve their discovery differences as is outlined in detail below. Plaintiff has, however,
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`been unsuccessful necessitating this Motion.
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`AS GROUNDS FOR THIS MOTION, Petitioner states and shows the following:
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`1. Plaintiff filed this cancellation action on June 16, 2011. Notice and trial dates
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`were sent to all parties and Applicant subsequently answered on August 01, 2011.
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`Discovery opened on August 30, 2011.
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`2. Plaintiff provided his initial disclosures to Defendant on December 09, 2011,
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`and Defendant tendered his initial disclosures on December 30, 2011. Copies attached as
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`Exhibits A & B respectively.
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`3. In its initial disclosures and in essentially refusing to turn over the names of
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`individuals having discoverable information upon which it might rely in support of its
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`defenses, Defendant wrote:
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` [A]pplicant is aware of individuals who may possess
`additional information upon which Applicant may need to rely in
`support of his claims and defenses. These include individual customers
`to whom Applicant has made product sales in the past. However, the
`Board expressly discourages parties from submitting materials that
`reflect personal identifying information such as home addresses or
`telephone numbers (TMBP Section 120.02). …
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`Some of the other persons with knowledge may include
`representatives of the manufacturers or suppliers of Applicant’s
`products sold under the DOSF Mark. The identity of these individuals
`and the entities they represent constitute highly confidential Trade
`Secret/Commericially Sensitive material and Applicant is not confident
`that the sensitive nature of this information will be kept confidential,
`notwithstanding the provisions of the Board’s standard protective order.
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`4. On December 08, 2011, Plaintiff sent to Petitioner its (i) First Request for
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`Production of Documents, (ii) First Set of Interrogatories and (iii) First Request for
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`Admissions. Copies are attached as Exhibit C.
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`5. On January 9, 2012, Applicant provided responses to the Plaintiff’s
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`discovery requests listed in paragraph 4 above. Copies are attached as Exhibit D.
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`6. In response to Interrogatory No. 1, which asked Defendant to list
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`suppliers and manufacturers associated with the production of goods prior to the
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`filing of the subject application, Defendant in failing to provide the requested
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`information wrote:
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`Applicant further objects to this Interrogatory on the
`ground that it seeks information concerning the identity of
`Applicant’s retail commercial customers, and that the identity of
`these individuals and entities they represent constitutes highly
`confidential Trade Secret/Commercially Sensitive material.
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`7. In response to Interrogatory No. 2, which asked Defendant to list all
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`purchasers of each good listed in the subject application prior to the application’s
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`filing date, Applicant wrote the following:
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`Among other commercial customers, Applicant sold shirts,
`hats, pants and t-shirts to Sunset Surf Shop, a now-defunct retail
`store located in San Francisco, California since long before the
`December 4, 2009 filing date. (emphasis added)
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`Of note, Applicant admits to the existence of other commercial customers but
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`refuses to provide them on the basis that their identities constitute “highly
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`confidential Trade Secret/Commercially Sensitive material”.
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`8. Responses to the remaining Interrogatories were also non-responsive or
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`evasive. For instance in Interrogatory No. 4, Applicant was asked to identify all
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`marketing and advertising material displaying the Mark in use prior to December
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`4, 2009. The Applicant indicated that “digital graphic ads were featured in online
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`forums including Craigslist and Sell.com” but fails to identify the specific
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`materials comprising the ads. Further, in an associated Request For Production of
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`Documents No. 8, which requested all documents identified Applicant’s response
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`to Plaintiff’s First Set of Interrogatories, no “digital graphics ads” where
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`provided. Further, Applicant did not list the “digital graphics ads” as being lost or
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`unavailable in response to Interrogatory No. 5, which specifically requested the
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`Applicant identify any and all documents responsive to the foregoing
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`interrogatories which are lost or unavailable.
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`9. In Response To Opposer’s First Request For Production of Documents
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`and specifically Request For Production of Documents NO. 1, Applicant provided
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`54 pages of documents. The request specifically requested documents relating to
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`the Mark’s use in commerce prior to the filing date of the application for each
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`specific recited good. Of the 54 pages, 36 pages are photographs of product
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`associated with the Mark; however, without any indication when the associated
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`products were manufactured. Several Receipts and Purchase orders were provided
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`but with the names of the recipients/requesters improperly redacted leaving
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`Plaintiff with no means to check or verify the veracity of the documents. Of
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`specific note, the documents indicate shipment to persons or companies in
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`Hawaii, Illinois, New York and San Mateo, CA yet these persons and/or entities
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`were not disclosed in Interrogatory No. 2 as discussed above in paragraph 7.
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`10. On December 23, 2011, Defendant filed a Motion to Dismiss and
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`subsequently on January 18, 2012 the proceedings were stayed pending the
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`outcome of the Motion.
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`11. On April 19, 2013, the Board rendered its decision on the pending
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`Motion and issued an Order. The Motion was granted in part; however, several
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`claims remained including the claim of non-use with respect to the goods
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`identified in the application (Of note, the Order indicated that the non-use claim
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`survived as to five of the six goods identified in the application; however, the
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`application only identified five goods). The claim as to fraud also survived.
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`12. The dates of the Opposition were reset in light of the amended Notice,
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`but the Applicant’s prior submitted Answer of December 23, 2011 was permitted
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`to stand. New dates were issued for initial disclosures (05/19/2013) through to
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`trial and rebuttal.
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`13. The parties issued new and updated initial disclosures: Plaintiff on
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`May 20, 2013; and Defendant on May 21, 2013. The Initial Disclosures are
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`attached as Exhibit E.
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`14. The Defendant’s updated disclosures contained no new documents.
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`Defendant’s updated disclosures listed no new persons known or believed to have
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`discoverable information. Concerning people potentially having discoverable
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`information, Defendant wrote:
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`Applicant reserves the right to amend the list above to include
`individuals or entities whose identities are known, but are not being
`disclosed at this time for reasons of privacy and confidentiality.
`Specifically, Applicant is aware of individuals who may possess additional
`information upon which Applicant may need to rely in support of his
`claims and defenses. These include individual customers to whom
`Applicant has made product sales in the past. However, the Board
`expressly discourages parties from submitting materials that reflect
`personal identifying information such as home addresses or telephone
`numbers (TMBP Section 120.02).
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`Concerning persons associated with manufacturers and suppliers, Defendant wrote:
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`Some of the other persons with knowledge may include
`representatives of manufacturers or suppliers of Applicant’s products sold
`under the DOSF Mark. The identity of these individuals and the entities
`they represent constitutes highly confidential Trade Secret/Commercially
`Sensitive material and Applicant is not confident that the sensitive nature
`of this information will be kept confidential, notwithstanding the
`provisions of the Board’s standard protective order.
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`15. Defendant’s reliance on TMBP Section 120.02 is misplaced. Section 120.02
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`pertains only to confidential materials “filed with the Board under seal” pursuant to a
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`protective order. This section is not intended as a means for a party to prevent an adverse
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`party from discovering relevant information that may be confidential. Rather, under the
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`standard protective order, which is automatically in place to govern the exchange of
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`information (TMBP 412.01), a party has the option to mark sensitive material as trade
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`secret/commercially sensitive in which case the material would be accessible only to
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`outside counsel.
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`16. Concerning Documents, Electronically Stored Information And Tangible
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`Things, Defendant identified two categories of documents: “Documents relating to the
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`adoption of, use and registration of the DOSF Mark by Applicant”; and “Documents
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`relating to Opposer’s knowledge of the adoption and use of the DOSF Mark by
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`Applicant”. No documents were produced by Defendant who indicated the first category
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`of documents “are currently located in the Applicant’s office and/or the offices of his
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`counsel, and are being or will be gathered for review and potential production in this
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`action.”
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`17. On June 18, 2013, Plaintiff sent Defendant a Notice of Deficiencies in Initial
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`Disclosures of Applicant (Attached as Exhibit F). In the letter, Plaintiff took exception to
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`the Defendant’s admittedly purposeful withholding of the names of individuals with
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`information concerning the Opposition. The Plaintiff challenged Defendants reliance on
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`TMBP section 120.02 as improper for reasons given above in paragraph 15. Plaintiff
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`further indicated that the standard protective order provides for the disclosure of trade
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`secret/commercially sensitive material on an attorney eyes only basis. Plaintiff asked the
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`Defendant to either identify the people it withheld or state that he does not intend to rely
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`information pertaining to the undisclosed suppliers, manufacturers and customers in his
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`defense.
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`18. Concurrent with the Notice of Deficiencies on June 18, 2013, Plaintiff sent
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`Defendant a second Request for Production of Documents (attached as Exhibit G). The
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`Request simply requested production of the two categories of documents identified in the
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`Defendant’s Initial Disclosures of May 21, 2013.
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`20. On July 23, 2013, an email response to Plaintiff’s letter was received (attached
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`as Exhibit H). In the email, Defendant’s counsel states concerning Plaintiff’s contention
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`that Defendant is improperly withholding the names of relevant individuals:
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`Applicant merely reserved the right to amend his list of individuals
`with discoverable information in his Initial Disclosures if and when
`appropriate. However, we have not attempted to rely on any evidence
`through witnesses or documents so I do not see how we are attempting to
`“have our cake and eat it too.” Contrary to your demand in the last line on
`page 2 of your “Notice of Deficiencies in Initial Disclosures of
`Applicant”, Applicant has never stated that there are any parties and
`entities upon whom he “intends to rely” for whom he has not already
`disclosed their identities.
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`The foregoing is artfully worded and misleading. The Defendant as quoted above in
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`paragraph 14 did, in fact, state that there were undisclosed individuals that he “may need
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`to rely in support of his claims and defenses.” Defendant apparently takes the view that it
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`may withhold the names of individuals until such time as he deems they are necessary for
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`his defense and spring them on the Plaintiff late in the process when Plaintiff does not
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`have sufficient time remaining in the discovery period to investigate and ascertain the
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`nature of the information the individual(s) possesses.
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`21. A Response to Plaintiff’s June 18, 2013 Request for Production of Documents
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`(attached as Exhibit I) was received as an attachment to the aforementioned email of July,
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`23, 2013. Defendant failed to turn over any materials stating that the materials turned
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`over on January 9, 2012 represented all documents in its possession concerning the
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`adoption, use, and registration of the Mark. Defendant further defended its redaction of
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`identifying information concerning the parties to which good were delivered. Further, no
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`evidence concerning the manufacture of the alleged goods was produced. Plaintiff
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`submits that it has the right in this proceeding to verify the veracity of the evidence being
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`presented by the Defendant for accuracy and to ensure its proper interpretation. By
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`withholding the names of manufacturers and purchasers, Defendant is preventing
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`Plaintiff from uncovering additional relevant evidence that may prove essential it proving
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`its claims.
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`22. In another attempt to obtain complete and full discovery disclosure from
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`Defendant, Plaintiff sent an email to Defendant’s counsel on July 26, 2013 (attached as
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`Exhibit J) in an attempt to resolve the discovery impasse and move discovery forward.
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`Plaintiff specifically asked Defendant’s counsel to indicate times when she was available
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`to confer and see if a solution to the impasse could be found.
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`23. On August 1, 2013, Plaintiff sent Defendant new discovery requests (attached
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`as Exhibit K).
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`24. On August 1, 2013, Defendant acknowledged receipt of the July 26, 2013
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`email and the new discovery requests. Counsel indicated she would get back to Plaintiff
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`regarding the substance of the email “this week”. Defendant never responded to the
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`email.
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`25. On September 5, 2013, responses to the Plaintiff’s July 26, 2013 discovery
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`requests were received and are attached as Exhibit L.
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`26. In Applicant’s Responses To Plaintiff’s Interrogatories to Defendant Dated
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`August 1, 2013 concerning Interrogatory No. 1, Defendant objected to the Plaintiff’s
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`request for a list of suppliers for both before and after the filing of the application as not
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`being relevant to any claims asserted by Opposer and not reasonably calculated to lead to
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`the discovery of admissible evidence. However, the manufacture of the listed goods or
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`lack thereof is relevant to demonstrating the Mark was not in use continuously and
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`regularly in the years prior to the filing of the application. Simply, if the goods were not
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`produced, the mark could not have been used with the goods in interstate commerce. The
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`request for manufacturers and suppliers prior to the filing of the application goes directly
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`to both the non-use claim and the claim that the applicant fraudulently filed an In Use
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`application. Concerning the manufacturers and suppliers after the application was filed,
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`Defendant claimed in prosecution to the Examiner to overcome a rejection that the goods
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`were manufactured in San Francisco. Evidence of the manufacture and supply of the
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`goods from outside of San Francisco would be evidence that the representation made to
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`the Examiner was fraudulent.
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`27. In Applicant’s Responses To Plaintiff’s Interrogatories to Defendant Dated
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`August 1, 2013 concerning Interrogatory No. 2, Defendant objected to the Plaintiff’s
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`request for a list of purchasers of the goods before and after the filing of the application
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`as not being relevant to any claims asserted by Opposer and not reasonably calculated to
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`lead to the discovery of admissible evidence. However, the sale of each of the goods prior
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`to the filing of the application is relevant to both the non-use and fraud claims.
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`28. In Applicant’s Responses To Plaintiff’s Interrogatories to Defendant Dated
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`August 1, 2013 concerning Interrogatory No. 3, Defendant objected to the Plaintiff’s
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`request for a list of all uses of the Mark in interstate commerce both before and after the
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`date of the application as not being relevant to any claims asserted by Opposer and not
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`reasonably calculated to lead to the discovery of admissible evidence. However, the
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`Plaintiff has claimed both non-use and fraud in relation to the filing of a 1A in-use
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`application. The use or non-use of the Mark in interstate commerce is directly relevant to
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`those claims.
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`29. In Applicant’s Responses To Plaintiff’s Interrogatories to Defendant Dated
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`August 1, 2013 concerning Interrogatory No. 5, Defendant objected to the Plaintiff’s
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`request for the defendant to explain the circumstances of his decision to use a
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`photographed specimen in the application which included the name Capt. Spalding. The
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`Plaintiff is claiming fraud in the filing of the application. The specimen is one of a
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`vintage jacket that was being sold by another on ebay. The jacket is not one
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`manufactured or sold by the Plaintiff. Understanding why the Plaintiff used as his
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`specimen a jacket manufactured by another under the Mark is relevant to both the fraud
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`and non-use claims.
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`30. In Applicant’s Responses To Plaintiff’s Interrogatories to Defendant Dated
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`August 1, 2013 concerning Interrogatory No. 7, Defendant objected to the Plaintiff’s
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`request for the defendant to identify all manufacturers used to produce the goods in San
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`Francisco from the filing of the application through to present. Plaintiff has asserted a
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`claim of fraud against the Defendant in part for representing to the Examiner that his
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`goods were/are manufactured in San Francisco. Information concerning the locale in
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`which the goods are manufactured is relevant to providing whether Defendant’s
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`representation under oath to the Trademark Office was truthful.
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`31. In Applicant’s Responses To Plaintiff’s Request For Production of Documents
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`Dated August 1, 2013 concerning Request For Production of Documents No. 2 & 4,
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`Defendant objected to the Plaintiff’s request for documents pertaining to the use of the
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`Mark for the four years prior to the filing of the application (in commerce for Request
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`No. 4) as not being relevant to any claims asserted by Opposer and not reasonably
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`calculated to lead to the discovery of admissible evidence. To the contrary, the use or
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`non-use of the Mark in relation to each of the listed goods is central to Plaintiff’s claims
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`of both non-use and fraud in the filing of the 1A in-use application. In response to
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`another request, Defendant indicated it had produced all documents it had in its
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`possession on January 9, 2012. However, for reasons discussed herein above, this
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`production was deficient. For instance, documents concerning manufacturers were
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`provided and many of the documents were partially redacted. Further, documents were
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`not produced concerning the use in commerce for each good type.
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`32. In Applicant’s Responses To Plaintiff’s Request For Production of Documents
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`Dated August 1, 2013 concerning Request For Production of Documents No. 6 & 7,
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`Defendant objected to the Plaintiff’s request for documents pertaining manufacturers and
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`suppliers that were located in San Francisco both before and after the filing of the
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`application as not being relevant to any claims asserted by Opposer and not reasonably
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`calculated to lead to the discovery of admissible evidence. Plaintiff has alleged
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`Defendant committed fraud in representing to the Examiner under oath that the specified
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`goods were manufactured in San Francisco to overcome a rejection. These documents
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`are pertinent to this claim.
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`33. Given the deficient nature of the discovery responses, Plaintiff called
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`Defendant’s counsel on September 9, 2013 to discuss resolving the discovery issues.
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`Plaintiff did not talk to Defendant but left a voicemail urging a return call. In response
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`Defendant emailed Plaintiff indicating an unwillingness to discuss the matter over the
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`phone and indicating a desire to communicate by email.
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`34. On September 16, Plaintiff emailed Defendant indicating the email was a final
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`attempt to resolve the discovery impasse and end the logjam. In the email Plaintiff
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`disagreed with the Defendant’s characterization of its requests as overly broad,
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`ambiguous, vague, irrelevant or objectionable. On Sept 23, 2013, Defendant’s counsel
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`indicated she would respond to the mail “by mid-week”. On September 25, 2013,
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`Defendant’s counsel indicated a response would be forthcoming “tomorrow”. Plaintiff
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`has not heard from Defendant or Defendant’s counsel since.
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`35.
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`Despite Plaintiff’s reasonable efforts to work out discovery issues,
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`Defendant has failed to provide the requested information and documents.
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`36.
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`Pursuant to Fed. Rule 34, 37 and 37 CFR 2.120(e) a party must produce
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`responsive documents. In the case where a party has not so produced requested
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`documents, the aggrieved party may seek and order compelling that those documents
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`requested be produced. Accordingly, Plaintiff requests that Defendant be ordered to
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`comply completely with discovery requests provided herein in Exhibits G and K.
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`By /s/ Kurt P Leyendecker
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`Kurt P. Leyendecker
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`Date 10/7/13
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`Leyendecker & Lemire, LLC
`5460 S Quebec Street
`Greenwood Village, Colorado 80111
`(303) 768-0123
`Kurt@coloradoiplaw.com
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`Counsel for Plaintiff
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 7, 2013, a true and correct copy of the foregoing
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`Motion To Compel and associated Exhibits was served on Marina A. Lewis by electronic
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`mail and by mailing said copy via U.S. Mail to:
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`MARINA A LEWIS
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`Stanford Research Park
`3300 Hillview Avenue,
`Palo Alto, CA 94304-1203
`marina.lewis@finnegan.com
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` /s/ Kurt P Leyendecker
`Kurt P Leyendecker
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`Exhibit A
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
`THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Trademark Application No. 77886135
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`For the Mark: DERBY OF SAN FRANCISCO
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`:::__:.*
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`OPPOSITION
`PROCEEDDIG No. 91200327
`.
`—————
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`)
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`James Murta
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`Plaintiff,
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`'
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`v.
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`Victor Suarez
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`Defendant.
` .:_:__
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`)
`)
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`INITIAL DISCOVERY DISCLOSURE OF TIFF, JAMES MURTA.
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`"Pursuant to Fed.R.Civ.P. 26(a)(1) and 37 CFR § 2.120(a)(3) Plaintiff, James
`Murta provides the following initial discovery disclosure. Petitioner reserves the right to
`supplement these disclosures as more information becomes available.
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`A. The name, address, and telephone number of each individual with knowledge
`of discoverable information:
`I
`1.
`James Murta. James can be contacted through undersigned counsel. James
`has information pertaining to the opposition proceeding.
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`B. Description of category and location of all documents, data compilations, and
`tangible things that are in the possession, custody, or control of the party and
`that the disclosing party may use to support its claims and defenses, unless
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`solely for impeachment:
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`

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`1.
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`Copies and printouts of web pages containing information about the
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`Defendant and his use of the Mark.
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`C. Computation of Damages:
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`Plaintiff is not claiming damages in this action.
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`D. /Insurance Agreements:
`Plaintiffs insurance agreements are not relevant to this action.
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`Date
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`12/08/2011
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`By
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`5 4
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`’
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`urtP eyendecker
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`Leyendecker & Lemire, LLC
`9137 East Mineral Circle, Suite 280
`Centennial, Colorado 80112
`(303) 768-0123
`kurt@coloradoiplaw.com
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`Counsel for Plaintiff
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`

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`ERTIFICATE OF SERVICE
`§____________.__._
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`I hereby certify that on December 09, 2011, a true and correct copy ofthe
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`foregoing INITIAL DISCOVERY DISCLOSURE was served on Marina A. Lewis by
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`electronic mail and by mailing said copy via U.S. Mail to:
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`MARINA A LEWIS
`DERGOSITS & NOAH LLP
`THREE EMBARCADERO CTR, STE 410
`SAN FRANCISCO, CA 94111
`UNITED STATES
`tmdocketing@dergnoah.com
`
`21.333 C
`Kurt:P Leyendecker
`
`

`
`Exhibit B
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 77/886,135
`
`For the mark: DERBY OF SAN FRANCISCO (and Design)
`
`Published in the Oflicial Gazette on: March 15, 2011
`
`James Murta,
`
`Opposition No. 91/200,327
`
`Applicant.
`
`Opposer,
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`Interlocutory Attorney: Elizabeth J. Winter
`
`V.
`
`Victor Suarez.
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`APPLICANT’S INITIAL DISCLOSURES
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`APPLICANT’S INITIAL DISCLOSURES
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`Pursuant to 37 C.F.R. Rule 2.120(a), Applicant Victor Suarez (“Applicant”), based upon
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`the information reasonably available to Applicant, hereby provides the following Initial
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`Disclosures. Applicant has not completed his investigation into the claims and defenses raised
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`by the pleadings. Applicant bases these Initial Disclosures on the information currently known
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`and available to him after an initial good faith investigation. Pursuant to 37 C.F.R. Rule 2.120
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`and Fed.R.Civ.P. 26(e), Applicant reserves the right to supplement his disclosures and/or to
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`produce additional information during the course of discovery, and to rely on such information
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`as evidence in this proceeding.
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`1) PERSONS KNOWN OR BELIEVED TO HAVE DISCOVERABLE INFORMATION
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`Applicant identifies the following individuals/entities as likely to have discoverable
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`information that Applicant may use to support his claims and defenses, unless used solely for
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`impeachment. Where no address is provided for an individual or entity, it is because either no
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`address was available to Applicant, or because any contact with the individual or entity is to be
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`made through counsel of record for Opposer James Murta (“Opposer”).
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`
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`Last Known Address
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`Individual
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`
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`Information
`
`
`
`
`Through Applicant’s counsel
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`Adoption and use of the DERBY OF
`SAN FRANCISCO (and Design) Mark
`(“DOSF Mark”)
`
`
`
`Through Applicant’s counsel
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`Through Opposer’s counsel
`
`
`Applicant’s sales of products with the
`DOSF Mark
`
`
`Adoption and use of the DOSF Mark by
`Applicant
`
`J
`
`Victor Suarez
`
`Brian Kramer
`
`James Murta
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`Applicant reserves the right to amend the list above to include individuals or entities
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`whose identities are known, but are not being disclosed at this time for reasons of privacy and
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`confidentiality. Specifically, Applicant is aware of individuals who may possess additional
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`information upon which Applicant may need to rely in support of his claims and defenses. These
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`include individual customers to whom Applicant has made product sales in the past. However,
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`the Board expressly discourages parties from submitting materials that reflect personal
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`identifying information such as home addresses or telephone numbers (TMBP Section 120.02).
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`Moreover, Applicant has not been authorized to disclose the names of individual customers who
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`made good faith purchases of his products. As such, he is not in a position to release their names
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`without their consent and appropriate regard for their privacy rights in the midst of a contentious
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`opposition proceeding.
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`Some of the other persons with knowledge may include representatives of manufacturers
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`or suppliers of Applicant’s products sold under the DOSF Mark. The identity of these
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`individuals and the entities they represent constitutes highly confidential Trade
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`Secret/Commercially Sensitive material and Applicant is not confident that the sensitive nature
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`of this information will be kept confidential, notwithstanding the provisions of the Board’s
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`standard protective order.
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`It has been Applicant’s experience that Opposer has a history of
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`inappropriately contacting Applicant’s retail customers and threatening them with legal action
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`based on specious claims of infringement in order to discourage these entities from doing
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`business with Applicant. Therefore, although Applicant is attempting to provide full disclosure
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`as mandated by Rule 2.l20(a), Applicant is also cognizant of the need to protect the highly
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`sensitive nature of confidential business information at this stage in these proceedings.
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`Finally, Applicant reserves the right to amend the list above to include additional
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`individuals or entities whose identities are unknown at the present time, but who may be found
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`during the course of discovery to possess information related to the adoption, use, and
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`registration of the DOSF Mark, as well as information related to the sale and marketing of
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`products used with the DOSF Mark.
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`2) DOCUMENTS, ELECTRONICALLY STORED INFORMATION AND TANGIBLE
`THINGS
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`Applicant identifies the following documents, electronically stored information, and
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`tangible things that Applicant has in his possession, custody, or control and that Applicant may
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`use to support his claims and defenses, unless used solely for impeachment.
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`Category of Document
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`Documents relating to the adoption,
`use, and registration of the DOSF Mark
`by Applicant
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`Documents relating to Opposer’s
`knowledge of the adoption and use of
`the DOSF Mark by Applicant
`
`Through Applicant’s counsel
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`Location of Documents
`
`Through Applicant’s counsel
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`Documents in each of these categories that are currently in Applicant’s possession,
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`custody or control are currently located in App1icant’s offices and/or the offices of his counsel,
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`and are being or will be gathered for review and potential production in this action.
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`Applicant believes that Opposer and/or third parties may have documents, electronically
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`stored information, and tangible things in their possession, custody or control that relate to his
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`claims and defenses, and reserves the right to use such documents, electronically stored
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`information, and tangible things as they may be obtained in discovery. Applicant also reserves
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`the right to use documents, electronically stored information, and tangible things identified in
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`Opp0ser’s Initial Disclosures.
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`Respectfully submitted
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`Dated: December 30, 2011
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`By:
`
`
`
`'-
`—
`Michael E. Dergosits
`Marina A. Lewis
`
`Attorneys for Applicant
`
`Dergosits & Noah LLP
`Three Embarcadero Center, Suite 410
`San Francisco, CA 9411 1
`
`Telephone: (415) 705-6377
`Facsimile: (415) 705-6383
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`CERTIFICATE OF SERVICE
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`I certify that on December 30, 2011, a true copy of the foregoing
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`APPLICANT’S INITIAL DISCLOSURES
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`was sent via first class mail, postage prepaid, to:
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`Mr. Kurt Leyendecker
`
`Leyendecker & Lemire LLC
`
`9137 E. Mineral Cir., Ste. 280
`
`Centennial, 0 80112
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`
`
`Marina A. Lewis
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`Page 5 of5
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`Exhibit C
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`

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`In the Matter of Trademark Application No. 77886135
`
`For the Mark: DERBY OF SAN FRANCISCO
`
`
`
`OPPOSITION
`PROCEEDING No. 91200327
`.
`—~————
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`)
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`James Murta
`
`Plaintiff,
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`v.
`
`Victor Suarez
`
`)
`Defendant.
`)
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`INITIAL IDISCOVERY DISCLOSURE OF PLAINTIFF, JAMES MURTA.
`
`Pursuant to Fed.R.Civ.P. 26(a)(1) and 37 CFR § 2.120(a)(3) Pl