Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA487816
`ESTTA Tracking number:
`08/07/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91201931
`Plaintiff
`Starbuzz Tobacco, Inc.
`NATU J PATEL
`THE PATEL LAW FIRM PC
`2532 DUPONT DRIVE
`IRVINE, CA 92612
`UNITED STATES
`NPatel@thePatelLawFirm.com
`Opposition/Response to Motion
`Natu J. Patel
`NPatel@thePatelLawFirm.com
`/natupatel/
`08/07/2012
`1. Starbuzz - Opp to Fantasia's MTC RFA.pdf ( 12 pages )(518428 bytes )
`2. Starbuzz - Opp to Fantasia's MTC Interrogatories.pdf ( 12 pages )(475240
`bytes )
`3. Starbuzz - Opp to Fantasia's MTC RFP.pdf ( 13 pages )(571724 bytes )
`4. Decl. of C.Federis - Starbuzz's Oppositions.pdf ( 101 pages )(2676257 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter ofApplication Serial No. 85/052,253
`Mark:
`QUEEN
`Filed:
`June 1, 2010
`Published:
`July 26, 2011
`
`STARBUZZ TOBACCO, INC.,
`
`Opposer,
`
`FANTASIA DISTRIBUTION, INC.,
`
`Applicant.
`
`\/\./\/\J\y\J$/\/€\J\J\J%/\§%/
`
`OPPOSITION NO: 91201931
`
`STARBUZZ TOBACCO, INC.’S
`OPPOSITION TO APPLICANT’S
`MOTION TO COMPEL RESPONSES TO
`
`REQUESTS FOR ADMISSION
`
`Starbuzz Tobacco, Inc.’s Opposition to App1icant’s Motion to Compel Responses to Requests for Admission
`
`

`
`Opposition No. 91201931
`In the matter of Application Serial No. 85/052. 253
`Published On July 26, 2011
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................................................ .. 1
`
`FACTUAL BACKGROUND ....................................................................................................... .. 2
`
`ARGUMENT ................................................................................................................................ .. 4
`
`I.
`
`FANTASIA’S MOTION TO COMPEL RFA RESPONSES FAILS BECAUSE
`
`SUCH MOTION IS COMPLETELY INAPPROPRIATE FOR REQUESTS FOR
`ADMISSION ........................................................................................................ .. 4
`
`II.
`
`THE MOTION IS ALSO IMPROPER BECAUSE FANTASIA MISLEAD THE
`
`BOARD BY OMITTING STARBUZZ’S AMENDED RESPONSES ................ .. 5
`
`III.
`
`EVEN ASSUMING THAT THE MOTION IS PROPER, IT SHOULD ALSO BE
`DENIED SINCE FANTASIA FAILS TO PROVIDE ANY EXPLANATION
`
`FOR SEEKING RESPONSES TO THE REQUESTS AT ISSUE ....................... .. 5
`
`IV.
`
`ALL OF STARBUZZ’S OBIECTIONS TO FANTASIA’S RFA ARE SOUND. 6
`
`A.
`
`The Requests at Issue are Irrelevant to the Present Opposition Proceeding.
`................................................................................................................... .. 6
`
`B.
`
`The Remaining Objections to Fantasia’s Requests are Also Justified...... .. 7
`
`CONCLUSION ............................................................................................................................. .. 8
`
`Starbuzz Tobacco, Inc.’s Opposition to App1icant’s Motion to Compel Responses to Requests for Admission
`
`ii
`
`

`
`Opposition No. 91201931
`In the matter ofApplication Serial No. 85/052.253
`Published On July 26, 2011
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Halo Mgmt, LLC v. Interland, Inc., 308 F. Supp. 2d 1019, 1031-1032 (N.D. Cal.) ..................... .. 7
`
`Herrera v. Scully, 143 F.R.D. 545, 549 (S.D.N.Y. 1992)............................................................. .. 7
`
`Playboy Enterprises, Inc. v. Welles, 60 F. Supp. 2d 1050, 1057 (S.D.CA 1999) ......................... .. 8
`
`Watercare Corp. v. Midwesco-Enterprise, Inc., 171 U.S.P.Q. 696 (TTAB 1971) ....................... .. 4
`
`Other Authorities
`
`TBMP § 523.01 ............................................................................................................................. .. 4
`
`TBMP § 524.04 ............................................................................................................................. .. 4
`
`Rules
`
`37 C.F.R. § 2.120(6) ...................................................................................................................... .. 4
`
`37 C.F.R. § 2.120(h) ..................................................................................................................... .. 4
`
`Fed. R. Civ. P. 36(a) ..................................................................................................................... .. 4
`
`Starbuzz Tobacco, Inc.’s Opposition to Applicant’s Motion to Compel Responses to Requests for Admission
`
`iii
`
`

`
`Opposition No. 91201931
`In the matter ofApplication Serial No. 85/052. 253
`Published On July 26, 2011
`
`INTRODUCTION
`
`Applicant, Fantasia Distribution, Inc.’s (“Fantasia”) motion to compel responses to
`
`requests for admission (the “Motion”) is clearly improper. Fantasia’s mere seven page motion to
`
`compel three different sets of discovery requests is procedurally and substantively deficient. The
`
`Motion is designed to do nothing more than waste Opposer, Starbuzz Tobacco, Inc.’s
`
`(“Starbuzz”) resources in an effort to force the abandonment of this Opposition.
`
`Under the Federal Rules, a motion to compel procedure is inapplicable to requests for
`
`admission. Just for this reason, the motion is procedurally deficient and should be denied.
`
`Additionally, combining three separate discovery motions into one memorandum is highly
`
`inappropriate.‘ Furthermore, Fantasia has improperly attempted to compel responses to
`
`discovery requests that Starbuzz has already answered, thus misleading the Board into believing
`
`that Starbuzz failed to respond.
`
`Even assuming that the Motion was procedurally filed properly, it is still substantively
`
`deficient. The Motion fails to provide detailed explanations as to why Starbuzz’s responses or
`
`objections were insufficient. The disputed requests seek information that are simply irrelevant to
`
`the issues in the Opposition. Additionally, several of the requests are highly objectionable
`
`because they are compound, call for legal conclusions, and are unduly burdensome. Therefore,
`
`Starbuzz’s objections are completely warranted.
`
`Accordingly, Starbuzz respectfillly requests the Honorable Trademark Trial and Appeal
`
`Board (the “Board”) to deny Fantasia’s Motion in its entirety.
`
`1 Starbuzz notes that Fantasia’s combination of three motions in one memorandum is completely improper. See
`TBMP § 502.02(b). To avoid any further confusion and in accordance with the Board’s rules, Starbuzz is
`concurrently filing separate oppositions to the three motions. Each opposition addresses each set of discovery
`request.
`
`1
`
`Starbuzz Tobacco, Inc.’s Opposition to Applicant’s Motion to Compel Responses to Requests for Admission
`
`

`
`Opposition No. 91201931
`In the matter of Application Serial No. 85/052. 253
`Published On July 26, 2011
`
`FACTUAL BACKGROUND
`
`Background Facts. On June 4, 2010, Fantasia filed Application No. 85/052,253 for
`
`protection of the mark “QUEE ” in International Class 034 for use in various tobacco products
`
`(the “Application”). The Application was filed, pursuant to Section 1(a) of the Lanham Act,
`
`based on alleged use in commerce since February 2, 2010. Fantasia filed the Application even
`
`though Starbuzz has been using the “QUEEN OF SEX” mark for tobacco goods since at least as
`
`early as January 12, 2006, and the “PEACH QUEEN” mark for tobacco goods since at least as
`
`early as September 19, 2008. Therefore, on June 5, 2010 Starbuzz filed trademark applications
`
`for the marks “QUEEN OF SEX” and “PEACH QUEEN”. Starbuzz subsequently filed the
`
`present proceeding to oppose Fantasia’s Application (the “Opposition”) and to adjudicate its
`
`rights to the marks “QUEEN OF SEX” and “PEACH QUEEN”.
`
`Discovegy Dispute. On or about March 20, 2012, Fantasia served discovery requests
`
`including requests for admission (“RFA”), requests for production of documents and
`
`interrogatories to Starbuzz, which were objectionable for several reasons, including relevance to
`
`the claims alleged. (See Declaration of David Oskin Re Applicant’s Motion to Compel (“Oskin
`
`Decl.) 1111 3-5, Exhibits A-C ). On or about April 24, 2012, Starbuzz timely served its responses
`
`to all the discovery requests. (Oskin Decl. 111] 6-8, Exhibits D-F). On May 17, 2012, following
`
`meet and confer efforts, Fantasia served a set of amended requests for admission and requests for
`
`production to Starbuzz. See Declaration of Carla A. Federis (“Federis Decl.”) 1111 2, 3, 5,
`
`
`Exhibits B C and E. On June 15, 2012, Starbuzz served responses to thee amended requests
`
`for admission and requests for production of documents. (Federis Decl. 1111 4, 6, Exhibits D and
`
`E).
`
`Starbuzz Tobacco, Inc.’s Opposition to App1icant’s Motion to Compel Responses to Requests for Admission
`
`2
`
`

`
`Opposition No. 91201931
`In the matter of Application Serial No. 85/052253
`Published On July 26, 2011
`
`Despite Starbuzz’s responses, Fantasia still brought this fiivolous Motion without
`
`providing a detailed explanation as to why each request is relevant, and why Starbuzz’s
`
`objections are inapplicable. Review of the Motion further reveals that Fantasia has not complied
`
`with the Board’s rules in bringing its motion. In fact, Fantasia even failed to inform the Board
`
`that Starbuzz had served a set of amended responses to the requests for admission and requests
`
`for production, rendering several of Fantasia’s positions completely moot.
`
`Particularly troubling is Fantasia’s improper assertion of completely irrelevant arguments
`
`and document regarding an unrelated mark. Fantasia baselessly asserts that Starbuzz “fabricated
`
`evidence,” regarding a completely unrelated “BLUE SURFER” mark, even after a Federal
`
`District Court already rejected Fantasia’s arguments. 2 Fantasia should be reprimanded for
`
`attempting to bring irrelevant issues into this Motion, especially when a Court has already
`
`determined its arguments to be both baseless and unprofessional. In View of Fantasia’s harassing
`
`litigation tactics and blatant violation of the Board’s rules, Starbuzz respectfully request the
`
`Board to strike Fantasia’s Motion in its entirety as a sanction.
`
`///
`
`///
`
`2 Fantasia recently made the same arguments before the Federal District Court of Florida when the parties were
`litigating the date of first use of Starbuzz’s BLUE SURFER mark. In opposing summary judgment, Fantasia
`presented the “Investigative Report” attached to the Oskin Decl. as Exhibit G. The Court expressly rejected
`Fantasia’s arguments, finding that: “Fantasia accuses Starbuzz of tampering with evidence, bad faith and other ills,
`and contends that a private investigator sent at Fantasia’s behest was unable to order Blue Surfer hookah tobacco at
`Starbuzz locations. (See id. 4—5). The Court has fully reviewed the evidence submitted by Fantasia and finds it
`does not support Fantasia’s assertions of bad faith and tampering. The evidence of how Starbuzz generates
`invoices does not create even an inference of fraud as_to which products were covered by the Blue Surfer Mark, or
`as to any other issue for that matter. If anything, the deposition excerpts Fantasia provides are consistent with
`Starbuzz’s assertions, heretofore uncontested, that it has in fact sold Blue Surfer tobacco products. If indeed
`Fantasia has thrown around such weighty accusations without any basis, as the documents would appear to
`show, such conduct is unprofessional and unbecoming of a member of the Bar.” (emphasis added)
`See Federis Decl. 1[ 1, ; see also Drew Estate v. Fantasia Distribution, Inc., Case No. l:l1-cv-21900-
`CMA at * 10-11 (S.D. Fla., July 2, 2012) [ECF No. 171].
`
`3
`
`Starbuzz Tobacco, Inc.’s Opposition to Applicant’s Motion to Compel Responses to Requests for Admission
`
`

`
`Opposition No. 91201931
`In the matter of Application Serial No. 85/052. 253
`Published On July 26, 2011
`
`ARGUMENT
`
`I.
`
`FANTASIA’S MOTION TO COMPEL RFA RESPONSES FAILS BECAUSE
`
`SUCH MOTION IS COMPLETELY INAPPROPRIATE FOR REQUESTS FOR
`ADMISSION
`
`As a preliminary matter, Fantasia’s Motion to Compel responses to RFA should fail since
`
`such motion is inappropriate for requests for admission. Pursuant to the rules, a motion to
`
`compel responses is only applicable for other discovery requests such as interrogatories and
`
`requests for production. See 37 C.F.R. § 2.120(e). In fact, the motion to compel Qrocedure is
`
`not applicable to requests for admission. See TBMP § 523.01. The procedure to be followed in
`
`the case of requests for admission is set forth in 37 C.F.R. § 2.120(h) and Fed. R. Civ. P. 36(a).
`
`Under those rules, if a propounding party is dissatisfied with a responding party’s answer or
`
`objection, and wishes to obtain a ruling on the sufficiency thereof, the propounding party may
`
`file a motion with the Board to determine the sufficiency of the answer or objection. See 37
`
`C.F.R. § 2.120(h); Fed. R. Civ. P. 36(a). Ifthe propoundingparty [ails to tile a motion to test
`
`the sufficiency ofthe response, it may not thereafter be heard to complain about the
`
`sufficiency thereof.
`
`(emphasis added). See TBMP § 524.04; Watercare Corp. v. Midwesco-
`
`Enterprise, Inc., 171 U.S.P.Q. 696 (TTAB 1971).
`
`Here, Fantasia has failed to follow the rules and filed a motion to compel instead of a
`
`motion to test the sufficiency of the responses as required under the rules. The Motion should
`
`therefore be stricken based solely on its failure to follow the rules. Additionally, the Motion is
`
`combined with two other motions requesting the Board to compel responses to interrogatories
`
`and requests for production. In general, all motions should be filed separately, or at least be
`
`captioned separately. See TBMP § 502.02(b). Fantasia’s failure to file the correct motion and
`
`Starbuzz Tobacco, Inc.’s Opposition to App1icant’s Motion to Compel Responses to Requests for Admission
`
`4
`
`

`
`Opposition No. 91201931
`In the matter ofApplication Serial No. 85/052. 253
`Published On July 26, 2011
`
`improper combination of three motions into one brief should be grounds for striking the Motion
`
`in its entirety.
`
`II.
`
`THE MOTION IS ALSO IMPROPER BECAUSE FANTASLA. MISLEAD THE
`BOARD BY OMITTING STARBUZZ’S AMENDED RESPONSES
`
`Fantasia’s motion is also improper because it withheld the fact that Starbuzz has already
`
`answered several of the RFA that Fantasia seeks to compel. In particular, Fantasia requests that
`
`the Board compel Starbuzz to answer RFA Nos. 4-6, ll and 12. (See Motion pp. 1-3). Starbuzz,
`
`however, already provided amended responses to RFA Nos. 4, 11 and 12. See Federis Decl. 1[ 2,
`
`Exhibit B, pp. 8-10, 14-16. As such, the Motion is moot as to those RFA, and Fantasia should
`
`not have moved to compel their response. Fantasia’s attempt to mislead the Board by omitting
`
`Starbuzz’s amended responses has wasted both Starbuzz and the Board’s resources, and should
`
`not be tolerated. Accordingly, Starbuzz respectfully requests that the Board strike this Motion in
`
`its entirety, without leave to re—file, as a sanction under the Board’s inherent authority. See
`
`TBMP § 527.03.
`
`III.
`
`EVEN ASSUNIING THAT THE MOTION IS PROPER, IT SHOULD ALSO BE
`DENIED SINCE FANTASIA FAILS TO PROVIDE ANY EXPLANATION FOR
`
`SEEKING RESPONSES TO THE REQUESTS AT ISSUE.
`
`Even assuming that the Motion was proper, it should be denied because Fantasia failed to
`
`provide any explanation whatsoever for seeking responses to the requests at issue. For example,
`
`Fantasia failed to explain how responses RFA nos. 4-6 are “critical to the merits of the
`
`Opposition.” (Motion, p. 2). Furthennore, Fantasia failed to articulate how RFA No. 11 relates
`
`to “Starbuzz’s intent to defraud the Trademark Office when filing its numerous applications,
`
`including the subject Application.” (Motion, pp. 2-3). Additionally, Fantasia has not provided
`
`any justification for requesting a response to RFA No. 12. Fantasia simply makes the conclusory
`
`Starbuzz Tobacco, Inc.’s Opposition to Applicant’s Motion to Compel Responses to Requests for Admission
`
`5
`
`

`
`Opposition No. 91201931
`In the matter of Application Serial No. 85/052253
`Published On July 26, 2011
`
`assertion that the request is “narrowly tailored to inquire as to Starbuzz’s knowledge and intent
`
`when it filed its Application” without any supporting authority.
`
`In view of Fantasia’s failure to provide any explanation whatsoever with respect to the
`
`requests at issue, the Board should deny the Motion in its entirety.
`
`IV.
`
`ALL OF STARBUZZ’S OBJECTIONS TO FANTASIA’S RFA ARE SOUND
`
`Contrary to Fantasia’s assertion, Starbuzz did not respond to the requests with “repetitive
`
`and boilerplate objections.” In fact, Starbuzz’s objections are specifically tailored to each of
`
`Fantasia’s inappropriate requests. Therefore, Fantasia’s Motion is meritless.
`
`A.
`
`The Reguests at Issue are Irrelevant to the Present Opposition Proceeding.
`
`Starbuzz properly objected to the requests at issue since they seek information that is
`
`irrelevant to the present Opposition. For example, RFA Nos. 4-6 inquire into the date Starbuzz
`
`first “publicly advertised” tobacco products bearing the Mark. However, this inquiry is
`
`irrelevant to Starbuzz’s claims in the Opposition or to Fantasia’s allegations in its answer. The
`
`date that Starbuzz first publicly advertised products has no bearing on whether or not it actually
`
`sold those products. In fact, Starbuzz has already provided answers to the issue of priority by
`
`responding to inquiries regarding dates of first sale in RFA Nos. 1-3, 7-9. Therefore, the date of
`
`first “public advertisement” is completely irrelevant to the issues in this proceeding.
`
`RFA nos. 11-12 are also irrelevant. Starbuzz’s non-sale of herbal molasses products
`
`under the Mark is irrelevant to the issue of Starbuzz’s purported fraud on the USPTO. Even if
`
`Starbuzz’s list of goods is imprecise, that does not evidence intent to defraud the USPTO in a
`
`material way during the registration process. See Halo Mgmt, LLC v. Interland, Inc. , 308 F.
`
`Supp. 2d 1019, 1031-1032 (N.D. Cal.).
`
`Starbuzz Tobacco, Inc.’s Opposition to Applicant’s Motion to Compel Responses to Requests for Admission
`
`6
`
`

`
`Opposition No. 91201931
`In the matter of Application Serial No. 85/052.253
`Published On July 26, 2011
`
`As to RFA No. 12, Starbuzz’s knowledge of the Application is completely immaterial to
`
`intent to defraud. Fantasia has fiirther failed to provide any authority for its position that
`
`Starbuzz’s knowledge is relevant to showing Starbuzz’s intent to defraud. Accordingly, Fantasia
`
`is not entitled to discovery on these irrelevant issues.
`
`B.
`
`The Remaining Objections to Fantasia’s Reguests are Also Justified.
`
`Starbuzz’s remaining objections are also well-supported under Federal law. Starbuzz
`
`properly objected to the requests as compound based on Fantasia’s request for information
`
`regarding Starbuzz’s products 1 services.3 These are conceptually different topics, which
`
`require separate requests for admission. Therefore, when RFA Nos. 4-6 were asking Starbuzz to
`
`admit that it never publicly advertised tobacco products, it was also asking Starbuzz to admit that
`
`it never publicly advertised any tobacco services. Such requests are improper. In fact, requests
`
`for admissions may not contain compound, conjunctive, or disjunctive (e. g. “and/or”) statements.
`
`See Herrera v. Scully, 143 F.R.D. 545, 549 (S.D.N.Y. 1992).
`
`Additionally, Fantasia’s definition of the term “Opposer” in the requests is completely
`
`vague, ambiguous and unintelligible. 4 Fantasia cannot reasonably expect Starbuzz to provide
`
`responses based on information from other entities, which Starbuzz has no control over.
`
`Moreover, as a result of the ill-defined term “Opposer,” the requests are also 1) compound since
`
`they seek information both in Starbuzz’s control and Fantasia’s control; 2) vague and ambiguous
`
`as to what information Fantasia has the right to obtain; 3) overly broad to the extent they
`
`attempted to impose an obligation on Starbuzz to obtain information from Fantasia’s sources to
`
`3 Fantasia stated that the term “products” shall also refer to “services”.
`
`4 Fantasia defined “Opposer,” “Starbuzz,” “you,” or “your” to refer to: “any company, corporation, entity, or
`individual from which or from whom Agglicant has a right to obtain information, documents, and/or things by
`contract or otherwise.”
`
`7
`
`Starbuzz Tobacco, Inc. ’s Opposition to Applicant’s Motion to Compel Responses to Requests for Admission
`
`

`
`Opposition No. 91201931
`In the matter of Application Serial No. 85/052253
`Published On July 26, 2011
`
`answer Fantasia’s requests; and 4) made solely for the purpose of harassment and annoyance in
`
`imposing such unreasonable burden.
`
`Furthermore, the requests are objectionable since they require Starbuzz to provide a legal
`
`conclusion as to which “company, corporation, entity or individual” Fantasia “has a Lig11_t to
`
`obtain information...” from. (emphasis added). Requests for admissions carmot be used to
`
`compel an admission of a pure conclusion of law. See Playboy Enterprises, Inc. v. Welles, 60 F.
`
`Supp. 2d 1050, 1057 (S.D. Cal. 1999).
`
`Starbuzz also properly objected that the requests as burdensome since some of the
`
`requests are unnecessarily repetitive. Therefore, all of Starbuzz’s objections are proper.
`
`CONCLUSION
`
`Based on the foregoing, Starbuzz respectfully requests the Board to strike Fantasia’s
`
`Motion for its failure to follow the rules, or in the alternative deny the Motion in its entirety
`
`because all of Starbuzz’s objections are proper.
`
`Respectfully Submitted,
`THE PATEL LAW FIRM, P.C.
`
` Carla A. Federis
`Attorneys for Opposer
`Starbuzz Tobacco, Inc.
`
`The Patel Law Firm, P.C.
`2532 Dupont Drive
`Irvine, CA 92612
`Telephone:
`(949) 955-1077
`Facsimile:
`(949) 955-1877
`CFederis@thePatelLawFirm.com
`JChuan@thePatelLawFirm.com
`
`Starbuzz Tobacco, Inc.’s Opposition to Applicant’s Motion to Compel Responses to Requests for Admission
`
`8
`
`

`
`Opposition No. 91201931
`In the matter ofApplication Serial No. 85/052. 253
`Published On July 26, 2011
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of STARBUZZ TOBACCO, INC.’S OPPOSITION TO
`
`APPLICANT’S MOTION TO COMPEL RESPONSES TO REQUESTS FOR
`
`ADMISSION is being served via United States mail, postage prepaid, on the following, on this
`
`the 7th day of August, 2012 to:
`
`David Oskin
`
`Caliber IP, LLC
`150 N. Michigan Ave., Suite 2800
`Chicago, Illinois 60601
`
`Dana
`
`assiri
`
`Starbuzz Tobacco, Inc.’s Opposition to App1icant’s Motion to Compel Responses to Requests for Admission
`
`9
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter ofApplication Serial No. 85/052,253
`Mark:
`QUEEN
`Filed:
`June 1, 2010
`Published:
`July 26, 2011
`
`STARBUZZ TOBACCO, INC.,
`
`Opposer,
`
`OPPOSITION NO: 91201931
`
`STARBUZZ TOBACCO, INC.’S
`OPPOSITION TO APPLICANT’S
`
`MOTION TO COMPEL RESPONSES TO
`
`INTERROGATORIES
`
` \a\/\u\J\/\J\./\¢\/\4\x\./
`
`FANTASIA DISTRIBUTION, INC.,
`
`Applicant.
`
`Starbuzz Tobacco, Inc.’s Opposition to Applicant’s Motion to Compel Responses to Interrogatories
`
`

`
`Opposition No. 91201931
`In the matter ofApplication Serial No. 85/052,253
`Published On July 26, 201 1
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................................................ .. I
`
`FACTUAL BACKGROUND ....................................................................................................... .. 1
`
`ARGUMENT ................................................................................................................................ .. 3
`
`I.
`
`FANTASIA’S MOTION SHOULD BE DENIED SINCE IT IS IMPROPERLY
`
`COMBINED WITH TWO OTHER MOTIONS AND FAILS TO PROVIDE
`
`ANY EXPLANATION FOR SEEKING RESPONSES TO THE
`
`INTERROGATORIES AT ISSUE. ...................................................................... .. 3
`
`II.
`
`ALL OF STARBUZZ’S OBJECTIONS TO FANTASIA’S
`
`INTERROGATORIES ARE SOUND .................................................................. .. 4
`
`A.
`
`B.
`
`C.
`
`The Interrogatories at Issue are Irrelevant to the Present Opposition
`Proceeding................................................................................................. .. 4
`
`The Interrogatories at Issue are Also Completely Overbroad. ................. .. 5
`
`The Remaining Objections to Fantasia’s Interrogatories are Also Justified.
`................................................................................................................... .. 6
`
`CONCLUSION ............................................................................................................................. .. 8
`
`Starbuzz Tobacco, Inc.’s Opposition to App1icant’s Motion to Compel Responses to Interrogatories
`
`ii
`
`

`
`Opposition No. 91201931
`In the matter ofApplication Serial No. 85/052,253
`Published On July 26, 2011
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Cone Mills Corp. v. Joseph Bancrofi‘ & Sons Co., 33 F.R.D. 318 (D. Del. 1963) ....................... .. 5
`
`Flour Mills ofAmerica, Inc. v. Pace, 75 F.R.D. 676, 680 (E.D. Okl. 1977) ................................ .. 5
`
`0’Brien v. International Brotherhood ofElec. Workers, 443 F. Supp. 1182, l187(N.D. Ga. 19973
`
`Other Authorities
`
`TBMP § 402.02 ............................................................................................................................. .. 7
`
`TBMP § 414(11) ........................................................................................................................... .. 5
`
`TBMP § 414(18) ........................................................................................................................... .. 5
`
`Rules
`
`Fed. R. Civ. P. 26(b)(1)................................................................................................................. .. 5
`
`Starbuzz Tobacco, Inc.’s Opposition to Applicant’s Motion to Compel Responses to Interrogatories
`
`iii
`
`

`
`Opposition No. 91201931
`In the matter ofAppIication Serial No. 85/052, 253
`Published On July 26, 2011
`
`INTRODUCTION
`
`Applicant, Fantasia Distribution, Inc.’s (“Fantasia”) motion to compel responses to
`
`interrogatories (the “Motion”) is clearly improper. Fantasia’s mere seven page motion to compel
`
`three different sets of discovery requests is procedurally and substantively deficient. The Motion
`
`is designed to do nothing more than waste Opposer, Starbuzz Tobacco, Inc.’s (“Starbuzz”)
`
`resources in an effort to force the abandonment of this Opposition.
`
`Under the Trademark Trial and Appeal Board’s (the “Board”) rules, Fantasia’s
`
`combination of three separate discovery motions into one memorandum is highly inappropriate.‘
`
`Furthermore, even assuming that the Motion was procedurally filed properly, it is still
`
`substantively deficient. The Motion fails to provide detailed explanations as to why Starbuzz’s
`
`responses or objections were insufficient. The disputed interrogatories seek information that are
`
`simply irrelevant and completely overbroad to the issues in the Opposition. Additionally, several
`
`of the interrogatories are highly objectionable because they are compound, call for legal
`
`conclusions, and seek confidential and proprietary business information. Therefore, Starbuzz’s
`
`objections are completely warranted.
`
`Accordingly, Starbuzz respectfillly requests the Honorable Board to deny Fantasia’s
`
`Motion in its entirety.
`
`FACTUAL BACKGROUND
`
`Background Facts. On June 4, 2010, Fantasia filed Application No. 85/052,253 for
`
`protection of the mark “QUEE ” in International Class 034 for use in various tobacco products
`
`(the “Application”). The Application was filed, pursuant to Section 1(a) of the Lanham Act,
`
`I Starbuzz notes that Fantasia’s combination of three motions in one memorandum is completely improper. See
`TBMP § 502.02(b). To avoid any further confusion and in accordance With the Board’s rules, Starbuzz is
`concurrently filing separate oppositions to the three motions. Each opposition addresses each set of discovery
`request.
`
`Starbuzz Tobacco, Inc.’s Opposition to Applicant’s Motion to Compel Responses to Interrogatories
`
`1
`
`

`
`Opposition No. 91201931
`In the matter ofApplication Serial No. 85/052, 253
`Published On July 26, 2011
`
`based on alleged use in commerce since February 2, 2010. Fantasia filed the Application even
`
`though Starbuzz has been using the “QUEEN OF SEX” mark for tobacco goods since at least as
`
`early as January 12, 2006, and the “PEACH QUEEN” mark for tobacco goods since at least as
`
`early as September 19, 2008. Therefore, on June 5, 2010 Starbuzz filed trademark applications
`
`for the marks “QUEEN OF SEX” and “PEACH QUEEN”. Starbuzz subsequently filed the
`
`present proceeding to oppose Fantasia’s Application (the “Opposition”) and to adjudicate its
`
`rights to the marks “QUEEN OF SEX” and “PEACH QUEEN”.
`
`Discovegg Dispute. On or about March 20, 2012, Fantasia served discovery requests
`
`including requests for admission, requests for production of documents and interrogatories
`
`(“Interrogatories”) to Starbuzz, which were objectionable for several reasons, including
`
`relevance to the claims alleged. (See Declaration of David Oskin Re Applicant’s Motion to
`
`Compel (“Oskin Decl.) 111] 3-5, Exhibits A-C). On or about April 24, 2012, Starbuzz timely
`
`served its responses to all the discovery requests. (Oskin Decl. 111} 6-8, Exhibits D-F).
`
`Despite Starbuzz’s response, Fantasia still brought this frivolous Motion without
`
`providing a detailed explanation as to why each interrogatory is relevant, and why Starbuzz’s
`
`objections are inapplicable. Review of the Motion further reveals that Fantasia has not complied
`
`with the Board’s rules in bringing its motion.
`
`//
`
`//
`
`//
`
`Starbuzz Tobacco, Inc.’s Opposition to Applicant’s Motion to Compel Responses to Interrogatories
`
`2
`
`

`
`Opposition No. 91201931
`In the matter of Application Serial No. 85/052,253
`Published On July 26, 2011
`
`Particularly troubling is Fantasia’s improper assertion of completely irrelevant arguments
`
`and document regarding an unrelated mark. Fantasia baselessly asserts that Starbuzz “fabricated
`
`evidence,” regarding a completely unrelated “BLUE SURFER” mark, even after a Federal
`
`District Court already rejected Fantasia’s arguments. 2 Fantasia should be reprimanded for
`
`attempting to bring irrelevant issues into this Motion, especially when a Court has already
`
`determined its arguments to be both baseless and unprofessional. In view of Fantasia’s harassing
`
`litigation tactics and blatant violation of the Board’s rules, Starbuzz respectfully requests the
`
`Board to strike Fantasia’s Motion in its entirety as a sanction.
`
`ARGUMENT
`
`I.
`
`FANTASIA’S MOTION SHOULD BE DENIED SINCE IT IS IMPROPERLY
`
`COMBINED WITH TWO OTHER MOTIONS AND FAILS TO PROVIDE ANY
`EXPLANATION FOR SEEKING RESPONSES TO THE INTERROGATORIES
`AT ISSUE.
`
`As a preliminary matter, Fantasia’s Motion should be denied since the memorandum is
`
`combined with two other motions requesting the Board to compel responses to requests for
`
`admission and requests for production. See TBMP § 502.02(b). Fantasia’s improper
`
`combination of three motions into one document should be grounds for striking the Motion in its
`
`entirety.
`
`2 Fantasia recently made the same arguments before the Federal District Court of Florida when the parties were
`litigating the date of first use of Starbuzz’s BLUE SURFER mark. In opposing summary judgment, Fantasia
`presented the “Investigative Report” attached to the Oskin Decl. as Exhibit G. The Court expressly rejected
`Fantasia’s arguments, finding that: “Fantasia accuses Starbuzz of tampering with evidence, bad faith and other ills,
`and contends that a private investigator sent at Fantasia’s behest was unable to order Blue Surfer hookah tobacco at
`Starbuzz locations. (See id. 4-5). The Court has fully reviewed the evidence submitted by Fantasia and finds it
`does not support Fantasia’s assertions of bad faith and tampering. The evidence of how Starbuzz generates
`invoices does not create even an inference of fraud as to which products were covered by the Blue Surfer Mark, or
`as to any other issue for that matter. If anything, the deposition excerpts Fantasia provides are consistent with
`Starbuzz’s assertions, heretofore uncontested, that it has in fact sold Blue Surfer tobacco products. If indeed
`Fantasia has thrown around such weighty accusations without any basis, as the documents would appear to
`show, such conduct is unprofessional and unbecoming of a member of the Bar.” (emphasis added)
`See Declaration of Carla A. Federis 11 1, Exhibit A; see also Drew Estate v. Fantasia Distribution, Inc., Case No.
`1:11-cv-21900-CMA at * 10-11 (S.D. Fla., July 2, 2012) [ECF No. 171].
`
`Starbuzz Tobacco, Inc. ’s Opposition to Applicant’s Motion to Compel Responses to Interrogatories
`
`3
`
`

`
`Opposition No. 91201931
`In the matter