Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA499762
`ESTTA Tracking number:
`10/12/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91202493
`Defendant
`Adam Swan
`JAMES P DUGGAN
`50 CONGRESS STREET, SUITE 525
`BOSTON, MA 02109
`UNITED STATES
`adam.swan@state.ma.us
`Opposition/Response to Motion
`James P. Duggan, Esq.
`jpduggan01@yahoo.com
`/James P. Duggan/
`10/12/2012
`doc00449920121012104729.pdf ( 22 pages )(2707994 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
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Trademark Application
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`Serial No. 77/949,907 for the mark BABY GAGA
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`Opposition No. 91202493
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`ATE MY HEART INC.,
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`Opposer,
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`—against-
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`ADAM SWAN,
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`Applicant.
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`ADAM SWAN’S OPPOSITION TO ATE MY HEART INC.’S
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`MOTION FOR SUMMARY JUDGMENT
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`Now comes the Applicant, Adam Swan, who hereby opposes Ate My Heart Inc.’s Motion
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`for Summary Judgment. As grounds therefore, the Applicant states as follows:
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`PRIOR PROCEEDINGS
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`On March 3, 2010, Adam Swan (hereinafter “Swan”) filed Application Serial No.
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`77/949,907 to register the Mark “Baby GaGa” in International Class 25 for a new line of baby
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`clothing he plans to develop. On November 9, 2011, Ate My Heart Inc. (hereinafter “AMH”)
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`filed a Notice of Opposition to Swan’s Application. On August 30, 2012, AMH filed a Motion
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`for Summary Judgment with accompanying Memorandum of Law (hereinafter “Opposer’s
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`Memorandum”). Swan now opposes that Motion.
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`Stefani Germanotta (hereinafter “Ms. Germanotta”) p/k/a Lady Gaga is the founder and
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`owner of AMH. Opposer’s Memorandum, p. 2. AMH’s Opposition is based on several
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`federally registered trademarks owned by AMH, all bearing the name “Lady Gaga.” I_d. at 2, 5.
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`A 1
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`AMH markets and sells adult clothing under the trademark “Lady Gaga.” 1d_._, Exhibit C.
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`Essentially, AMH argues that, as a matter of law, there is a likelihood of consumer confusion
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`between the marks “Baby GaGa” and “Lady Gaga.” I_d, at 5~6. Swan came up with his “Baby
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`GaGa” concept in 2004-2005, when his daughter, Sofia, was born and he was able to see first-
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`hand how the baby clothing business was thriving. Swan’s Answers to Interrogatories, Answer
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`No. 14, see attached Exhibit “A”. Because babies say “gaga,” “Baby GaGa” struck Swan as an
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`easy-to—remember concept. Id, In October 2009, he had an idea to develop and market a baby
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`“onesie,” which would utilize a high~tech material to keep a baby dry and comfortable.
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`lgl_.
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`Swan plans to target new parents as his primary consumer group. Li, Answer No. 10(b).
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`SUMMARY JUDGMENT STANDARD
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`Summary judgment may only be granted where “there is no genuine dispute as to any
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`material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(0);
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`see also T.B.M.P. § 528.01. Summary judgment is an extreme remedy which should be
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`sparingly employed. Giordano V. Lee, 434 F .2d 1227, 1230 (8th Cir. 1970). The moving party
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`bears the burden of demonstrating both the absence of any genuine issue of material fact and its
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`entitlement to judgment as a matter of law. Doff V. Brunswick Corp, 372 F.2d 801, 805 (9th
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`Cir. 1966). All evidence must be viewed in the light most favorable to the non-moving party.
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`Adickes v. Kress & Company, 398 U.S. 144, 157 (1970). Because the focus in trademark
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`disputes is on the purchasing public’s state of mind, “[d]isputes between parties as to trade—mark
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`validity and infringement can rarely be determined satisfactorily on a motion for summary
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`judgment.” Albert Dickinson Co. v. Mellos Peanut Co. of Illinois, 179 F.2d 265, 269 (7th Cir.
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`1950).
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`ARGUMENT
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`Before AMH may be awarded summary judgment, it must meet its burden of showing no
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`genuine issue of material fact exists as to whether the marks “Baby GaGa” and “Lady Gaga” are
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`likely to confuse consumers. AMH fails in its task on at least three (3) separate scores, each of
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`which is wholly sufficient on its own to deny summary judgment. Three genuine issues of
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`material fact still exist:
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`(1) whether the doctrine of unclean hands bars AMH from the relief it
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`seeks; (2) whether there is indeed a likelihood of consumer confusion; and (3) whether “Gaga”
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`has become a generic term. Each is discussed below in turn.
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`I.
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`UNCLEAN HANDS
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`Ms. Germanotta, and, by and through her, AMH, have come to this Court with unclean
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`hands. The ancient doctrine, “He who comes into equity must come with clean hands,”
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`Keystone Driller Co. V. Gen. Excavator Co., 290 U.S. 240, 241 (1933), has long been applied in
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`trademark disputes. S_ee Belaval Inc. V. Perez-Perdomo, 488 F.3d 11, 15 (1st Cir. 2007); Texaco
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`P.R., Inc. v. Dep’t of Consumer Affairs, 60 F.3d 867, 880 (1st Cir. 1995); Dollar Systems, Inc. V.
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`Avcar Leasing Systems, Inc., 890 F.2d 165, 173 (9th Cir. 1989). The doctrine applies when the
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`plaintiff’ s, or opposer’s, “tawdry acts ‘in some measure affect the equitable relations between the
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`parties in respect of something brought before the court for adjudication?” Belaval, 488 F .3d at
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`15, quoting Texaco, 60 F.3d at 880. Critically, as far as summary judgment is concerned, the
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`application of the unclean hands doctrine raises primarily a question of fact. Dollar Systems,
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`890 F.2d at 173. “The doctrine bars relief to a plaintiff who has violated conscience, good faith
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`or other equitable principles, as well as to a plailzrzflwho has dirried his hands in acquiring the
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`rightpresently asserted.” I_cL, emphasis supplied.
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`In 1984, two years before Ms. Germanotta was born, Raincloud Productions, Inc. secured
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`and registered with the United States Copyright Office a certain Copyright numbered
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`SR0000054401. The Copyright was granted for an original sound recording written by Roger
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`Taylor and performed by Queen, entitled “Radio ga-ga.” The Copyright remains in full force
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`and effect, and Raincloud Productions, Inc. is still the present holder. The song was a worldwide
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`success for Queen, reaching number one (1) in nineteen (19) countries and number sixteen (16)
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`on the Billboard Hot 1 00 in the United States.‘
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`On several occasions, openly and in public, Ms. Germanotta has described how she took
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`her stage name, “Lady Gaga,” directly from the Queen song, “Radio ga-ga.”2 Indeed, one well-
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`publicized story goes as follows.3 Ms. Germanotta was in the process of trying to create a stage
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`name when her music producer, Rob Fusari (“Fusari”), text messaged her “Lady Gaga.” Fusari
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`explained, “Every day, when Stef came to the studio, instead of saying hello, I would start
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`singing ‘Radio Ga Ga.’ That was her entrance song.” Ms. Gerrnanotta wrote back, “That’s it,”
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`and declared, “Don’t ever call me Stefani again.” As we are reminded throughout Opposer’s
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`Memorandum, Ms. Germanotta has gone on to great success perfomiing under the stage name
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`“Lady Gaga.” She has capitalized on the success of Queen and Queen’s song to increase her
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`own, without first acquiring the “Radio ga—ga” Copyright or rights to its use. Yet now she
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`complains Swan has “commandeered the most recognizable portion of AMH’s marks ~ the term
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`‘GAGA?’” Opposer’s Memorandum, p. 19. Did not Ms. Germanotta “commandeer” the exact
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`I Barry Lazell (1989) Rock Movers & Shakers p. 404, Billboard Publications, Inc, Retrieved January 14, 201 l.
`2 http://www.youtube.com/watch?v=vQD_C24yjEM, last visited September 28, 2012;
`http://www.youtube.com/watch?v=c_JQVMnlXS8, last visited September 28, 2012;
`http://www.youtube.com/watch?v=RzuBTC2kZ8o, last visited September 28, 2012;
`http2//www.youtube.com/watch?v=FXCWmN491-IxQ&feature=related, last visited September 28, 2012;
`http://www.sheknows.com/entertainment/articles/85131 l/where—did—lady-gaga-get—her-stage-name, last visited
`September 28, 20l2;
`3 Taken from the Star-Ledger at
`http://www.nj.com/entertainment/music/index.ssf/2010/01/lady_gaga__her_outrageous_perso.htm1, last visited
`September 28, 2012.
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`4
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`same term? She exploited the copyrighted creation of another and put it to her own use. She
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`acquired the stage name “Lady Gaga,” along with the corresponding trademarks at issue in this
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`case, by committing copyright infringement. Ms. Germanotta and AMH have dirtied their hands
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`in acquiring the rights they currently assert, and, as such, are barred from opposing Swan’s
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`Application.
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`II.
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`NO LIKELIHOOD OF CONSUMER CONFUSION
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`Thirteen (13) factors may be considered when determining likelihood of consumer
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`confusion. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). The analysis,
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`however, can usually be concluded on examination of the two most dispositive factors: (1)
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`similarity of the marks, and (2) relatedness of the goods.
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`_S_e_e Han Beauty, Inc. v. Alberto—Culver
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`Q93 236 F.3d 1333, 1336 (Fed. Cir. 2001). This is all that is necessary in the present case to
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`demonstrate the inappropriateness of summary judgment.4
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`A.
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`The Marks Are Not Sufficientlv Similar.
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`AMH’s discussion of this all—important Du Pont factor can be summarized, essentially, as
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`a lengthy side—by-side comparison of the marks in question followed by a conclusory statement.
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`Opposer’s Memorandum, p. 17-20 (proclaiming “there is no disputing the fact that the parties’
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`marks are similar”). Two major objections must be made to AMH’s discussion.
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`First is that a side—by-side comparison is simply not the correct test to apply.
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`_S_e_e_ G.D.
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`Searle & Co. v. Chas. Pfizer & Co., 265 F.2d 385, 388 (7th Cir. 1959); Colburn v. Puritan Mills
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`kg, 108 F.2d 377, 378 (7th Cir. 1939); Albert Dickinson Co. V. Mellos Peanut Co. of Illinois,
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`179 F.2d 265, 269 (7th Cir. 1950). After comparing the letters and syllables and sounds of
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`“Baby GaGa” and “Lady Gaga,” AMH provides a long list of cases in which “confusion has
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`4 By focusing his discussion on these two factors, Swan does not waive his right to argue the remaining Du Pont
`factors at a later time nor does he concede Opposer has met its burden of establishing any of the remaining factors
`on the record to date.
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`5
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`been found between marks with the same and/or greater differentiations than are present here.”
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`Opposer’s Memorandum, p. 18. The problem with this sort of argument is that for every case
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`finding sufficient likelihood of confusion, there is another case finding insufficient likelihood of
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`confusion. §§_e_,_§_.g, Pennzoil Co. v. Crown Central Petroleum Corp, 140 F.2d 387 (4th Cir.
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`1944) (no likelihood of confusion between “Pennzoil” and “Greenzoil” for motor oil);
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`Syncromatic Corp. v. Eureka Williams Corp., 174 F.2d 649, 651 (7th Cir. 1949) (no likelihood
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`of confusion between “Syncromatic” and “Oil-O—Matic” for oil burning heaters); Kensington
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`Steel Co. V. Nichols Engineering and Research Corp, 188 F.2d 397 (CCPA 1951) (no likelihood
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`of confusion between “Nercalloy” and “Oroloy” for metal castings); Upjohn Co. V. Schwartz,
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`246 F.2d 254, 262 (2nd Cir. 1957) (no likelihood of confusion between “Syrocol” and
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`“Cheracol” for chemicals). In G.D. Searle, the Seventh Circuit went out of its way to point out
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`this precise problem before holding Side-by-side comparisons an improper test to apply. 265
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`F.2d at 388-389 (stating “In this type of litigation reference to decisions of courts as to other
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`trademarks is not of great help”). Instead, comparing the trademarks “Bonarnine” and
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`“Dramamine,” the court found sufficient likelihood of confusion because “Defendant adopted the
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`name 'Bona1nine' apparently with the idea of getting as close to 'Dramamine' as was legally
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`possible.” I_d_. at 389. AMH has made no showing of any kind that Swan deliberately chose
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`“Baby GaGa” in an attempt to get as close to “Lady Gaga” as legally possible. Any similarity in
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`letters and syllables and sounds between the two marks is not only inconsequential, but
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`coincidental.
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`The second objection, related to the first, speaks to the danger of applying a simple side-
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`by—side comparison. Side-by-side comparisons distract us from the real issue at stake in a
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`trademark dispute, and delude us into thinking we can predict consumer behavior by simply
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`holding one mark up to another. The determination to be made in a trademark dispute is not
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`whether the marks look or sound alike, but “the purchasing public’s state of mind when
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`confronted by somewhat similar trade names singly presented.” l_c_l_. at 388; Colburn, 108 F .2d at
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`378; Albert Dickinson, 179 F .2d at 269. It is for precisely this reason that “Disputes between
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`parties as to trade-mark validity and infringement can rarely be determined satisfactorily on a
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`motion for summary judgment.” Albert Dickinson, 179 F.2d at 269, quoting Marcus Breier
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`Sons Inc. V. Marvlo Fabrics Inc., 173 F.2d 29 (2nd Cir. 1949). Determining the purchasing
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`public’s state of mind raises, necessarily, a question of fact which can only be resolved by a fact-
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`finder properly equipped with testimony from the purchasing public. Albert Dickinson, 179 F.2d
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`at 269 (stating, in the context of a trademark dispute between popcorn producers, “The district
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`court will be in much better position to determine the question of likelihood of consumer
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`confusion as to source when it has before it on trial the testimony of the ordinary and usual
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`purchasers of popcorn and the evidence presented as to the manner and conditions under which
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`popcorn is sold by both plaintiff and defendant”); figlsg Coca—Cola Co. V. Snow Crest
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`Beverages, Inc., 162 F.2d 280, 283 (1st Cir. 1947) (holding likelihood of consumer confusion is
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`a question of fact); Skinner Mfg. Co. V. Kellogg Sales Co., 143 F.2d 895, 899 (8th Cir. 1944)
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`(same holding); William R. Warner & Co. V. Eli Lilly & Co., 265 U.S. 526, 529 (1924).
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`Consumers do not simply compare names when they shop; the type of store and goods,
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`the conditions of the store and goods, consumer impressions of the store and goods, and
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`memories of past purchases all play a role in whether consumers will be confused.
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`_S_e_e Albert
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`Dickinson, 179 F.2d at 269 (stating “The similarity between a designation and a trade-mark or
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`trade name which it is alleged to infringe is not determined by comparing the two in
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`juxtaposition only. Since it is the effect upon prospective purchasers that is important, the
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`conditions under which they act must be considered. Purchasers do not always see the goods in
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`juxtaposition. They rely upon memory and Vague impressions”). The Seventh Circuit has
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`summarized the difficulties of determining, at summary judgment, whether consumers will
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`confuse one mark for another:
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`The ascertainment of probability of confusion because of similarity
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`of trade names presents a problem not solvable by a precise rule or
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`measure. Rather is it a matter of varying human reactions to
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`situations incapable of exact appraisement. We are to determine, as
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`was the District Judge, the purchasing public's state of mind when
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`confronted by somewhat similar trade names singly presented. Is
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`the similarity of name or dress such as to delude the public or will
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`the prospective buyer readily differentiate between the two names?
`We can only contemplate, speculate, and weith the probabilities of
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`deception arising from the similarities...
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`Colburn, 108 F.2d at 378. Speculation is not the stuff of summary judgment. Swan has
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`yet to sell a single item of “Baby GaGa” clothing. Who is to say whether consumers will
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`confuse his clothing with AMH’s? AMH would have us believe that when consumers
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`pick up “Baby GaGa” one-piece baby outfits, they will shout out in unison: “Lady Gaga
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`makes baby clothes!” But babies, after all, have been saying “gaga” for thousands of
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`years. Is it not just as likely that consumers will simply think to themselves, “Aw, what a
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`clever name for baby clothing?” Moreoever, even if “Baby GaGa” brings “Lady Gaga”
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`to consumers’ minds, “[t]he fact that one mark may bring another mark to mind does not
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`in itself establish likelihood of confusion as to source. . . [t]he very fact of calling to mind
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`may indicate that the mind is distinguishing, rather than being confused by, two marks.”
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`In re P. Ferrero & C.S.P.A., 479 F.2d 1395, 1397 (CCPA 1973) (finding no likelihood of
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`confusion between “TIC TAC” for candy and “TIC TAC TOE” for ice cream and
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`sherbet). It is still too early to tell how consumers will react to Swan’s product and, thus,
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`it is too early to bar Swan from using the mark “Baby GaGa” as he sells his product. A
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`genuine issue as to the material fact of likelihood of consumer confusion still exists. The
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`case is not ripe for summary judgment.
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`B.
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`The Goods Are Not Sufficiently Related.
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`Contrary to AMH’s assertions (see Opposer’s Memorandum, pgs. 15-16), this
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`Board may consider the differences in the designs of Swan’s and AMH’s goods. Design
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`features are only irrelevant when they are not inherent in the marketing of the goods in
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`question. Tuxedo Monopoly, Inc. V. General Mills Fun Group, 648 F.2d 1335, 1337
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`(CCPA 1981); The Wella Corp. V. California Concept Corp., 558 F.2d 1019 (CCPA
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`1979); Sheraton Com. of America V. Sheffield Watch. Inc., 480 F.2d 1400 (CCPA 1973).
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`The trademark “Baby Gaga” and Swan’s designs for his goods are all inherent in
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`the marketing of his product: baby clothing. In his Answers to Interrogatories, Swan
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`explains how he came up with the concept for “Baby GaGa:” “I thought of the ‘Baby
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`GaGa’ concept in 2004-2005, when my daughter, Sofia, was born and I saw first hand
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`just how the baby clothing business was thriving. As a baby says “gaga” it struck me as a
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`easy—to—remember concept. . .In October, 2009, I also had an idea regarding a baby onesie.
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`I came up with a design and thought to use a high—tech material which would keep a baby
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`dry and comfortable.” (Answer No. 14). He identifies his primary consumer group as
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`new parents (Answer No. 10(b)). Notably absent from AMH’s filings is any material
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`demonstrating AMH produces or markets baby—specif1c clothing under the trademark
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`“Lady Gaga” (see Opposer’s Memorandum, Exhibit C, cataloguing the adult clothing
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`sold by AMH but showing no baby clothing). Despite AMH’s protestations that “the
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`parties’ goods compete directly with one another in the exact same category,” this simply
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`is not the case. Opposer’s Memorandum, p. 16. The goods Swan intends to sell are
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`designed for and marketed to an entirely different group of consumers than AMH’s.
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`AMH is attempting to drive the word “gaga” from the baby clothing field despite the fact
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`it does not sell baby clothing. But “courts cannot, and will not, permit the holder of. . .a
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`valid trade name. . .to extend the rights which arise therefrom to drive a competitor from a
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`field legitimately open to him or to anyone else.” Colburn, 108 F.2d at 378. AMH holds
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`a very specific trademark which it uses to sell its goods to very specific consumers; it
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`may not monopolize the word “gaga” to keep people like Swan from marketing very
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`different goods to very different consumers. As the parties’ goods do not compete
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`directly with one another, there is little risk their goods will be confused. _S_e§ Banff Ltd.
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`V. Federated Dep’t Stores’, 841 F.2d 486, 492 (2nd Cir. 1988).
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`III.
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`“GAGA” IS NOW A GENERIC TERM
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`There is a third reason, separate from those already discussed, AMH may not be awarded
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`summary judgment. According to the facts presented by AMH itself, the trademark upon which
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`AMH bases its Opposition no longer holds sway as an effective trademark. Lady Gaga has been
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`undone by her own success.
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`In Dixi-Cola Laboratories Inc. v. Coca—Cola Co., 117 F.2d 352, 360 (4th Cir. 1944), the
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`Fourth Circuit, citing the Restatement of Torts, explained what happens when a trademarked
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`term becomes part of the common parlance:
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`A designation which is initially a trade-mark or trade name ceases
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`to be such when it comes to be generally understood as a generic
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`or descriptive designation for the type of goods, services or
`business in connection with which it is used. . .When one has a
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`monopoly of the initial distribution of a specific article over a
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`period of time, and especially if the descriptive name for the article
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`is one difficult to pronounce or remember, there is a likelihood that
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`10
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`the designation which he adopts as his trade-mark for the article
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`will be incorporated into the language as the usual generic
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`designation for an article of that type. When that happens, the
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`designation becomes merely descriptive of the goods and no longer
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`identifies a particular brand or performs any of the functions of a
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`trade—mark or trade name. Moreover, the designation must then be
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`used by others if there is to be any effective competition in the sale
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`of the goods. It is immaterial that the person first adopting the
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`designation made every reasonable effort to avoid this result or that
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`the designation was coined by him and derived meaning only from
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`his use. The designation may be used by others, subject only to
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`[laws against] fraudulent marketing.
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`Similarly, in Dupont Cellophane Co. v. Waxed Products Co., 85 F.2d 75, 82 (2nd Cir. 1936), the
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`court stated the rule this way: “If the mark has come to be so public and in such universal use
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`that nobody can be deceived by the use of it, and can be induced from the use of the it to believe
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`that he is buying the goods of the original trader. . .the right to use the trade mark must be gone.”
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`Throughout its Memorandum, AMH emphasizes Ms. Germanotta’s fame. She has sold
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`over 23 million albums and over 64 million singles, we are told. Opposer’s Memorandum, p. 3.
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`She is one of the “l0O most Powerful and Influential” celebrities in the world.
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`l_d. She has won
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`5 Grammy awards. IQ She graces the covers of Vogue and Rolling Stone.
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`l_c_l_. Sales of AMH’s
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`“Lady Gaga” apparel have been an “overwhelming sensation.” Carter Decl. 1] 13. “Even the
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`most rudimentary search of the internet” leads to Lady Gaga. 1d_. at 24. So famous is she, when
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`people say “Gaga” in “press and in casual reference,” they mean her.
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`ld_. at 20. Therein lies her
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`problem. “Lady Gaga” has “come to be so public and in such universal use that nobody can be
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`deceived by the use of it.” Dupont Cellophane, 85 F.2d at 82. Her trademark has become
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`“incorporated into the language as the usual generic designation” for all things “Gaga,” from pop
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`music to clothing. Dixi—Cola Laboratories, 117 F.2d at 360. It is immaterial that AMH has made
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`“every reasonable effort to avoid this result or that the designation was coined by [Ms.
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`ll
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`Germanotta] and derived meaning only from [her] use.” I_d. The trademark “Lady Gaga” has
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`lost its effect and no longer offers Ms. Germanotta or AMH protection. Swan is free to use the
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`term “Gaga” as he sees fit, including in his “Baby GaGa” clothing brand. At the Very least, a
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`question of fact exists concerning whether “Gaga” has become a generic term.
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`CONCLUSION
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`WHEREFORE, for the foregoing reasons, the Applicant, Adam Swan, respectfully
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`requests that this Board deny Ate My Heart Inc.’s Motion for Summary Judgment.
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`Respectfully submitted,
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`Adam Swan,
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`By his attorney,
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`Mun '7)’
`es P. Duggan
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`50 Congress Street
`Suite 525
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`Boston, MA 02109
`617-523-7222
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`BBO# 137500
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`4%
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`CERTIFICATE OF SERVICE
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`1, James P. Duggan, hereby certify that on this 13”‘ day of October, 2012, I served a copy
`of the foregoing Adam Swan’s Opposition to Ate My Hea1tInc.’s Motion for Summary
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`Judgment, by electronic e-mail and first class mail, upon Muzamil A. Huq, Esq., Pryor Cashman
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`LLP, 7 Times Square, New York, NY 10036-6569.
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`
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`CERTIFICATE G FILING BY ESTTA
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`I hereby certify that on October 13, 2012, Adam Swan’s Opposition to Ate My Heart
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`Inc.’s Motion for Summary Judgment was filed electronically by ESTTA.
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`
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`/James P. Du an
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`12
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Trademark Application
`Serial No. 77/949, 907
`I
`For the mark BABY GAGA‘
`
`ATE MY HEART,
`
`INC.,
`
`Opposer
`
`against
`
`ADAM SWAN,
`
`Applicant
`
`~.—\/\zs_/\/gaxax/~/~J
`
`Opposition No. 91202493
`
`APPLICANT’S ANSWERS TO OPPOSER’S
`FIRST SET OF INTERROGATORIES
`
`Now comes Adam Swan, Applicant, who hereby answers Ate
`my Heart, Inc., Opposer, First Set of Interrogatories as
`follows:
`
`INTERROGATORY NO. 1:
`
`Identify all persons with knowledge or information
`relating to the information contained in and the filing of
`Application.
`
`ANSWER NO. 1:
`
`Adam J. Swan has information regarding this
`Application, as does his wife, Lina Swan, and his father,
`Peter. Also, Mr. Ronald Zagarri and Mr. James Rappaport
`have information regarding this matter.
`
`INTERROGATORX NO. 2:
`
`Identify all persons with knowledge or information
`relating to the allegations Applicant asserted in its Answer
`to the Opposition. As to each person identified in this
`
`

`
`interrogatory, state the allegations and the substance of
`the facts of which the person has knowledge or information.
`
`ANSWER NO. 2:
`
`Please see my Answer to Interrogatory No. 1, supra.
`
`INTERROGATORY NO. 3:
`
`Identify each witness who may be used to present
`evidence during the testimony period.
`
`ANSWER NO. 3:
`
`01906.
`5 Sycamore Lane, Saugus, MA
`Adam J. Swan,
`Lina Swan,
`5 Sycamore Lane, Saugus, MA
`01906.
`02360.
`Peter Swan, 96 Cliffside Drive, Plymouth, MA
`James Rappaport, 50 Battery Street, PHO5, Boston, MA
`02109.
`
`Ronald Zagarri, 65 Bay Street, Dorchester, MA
`
`02125.
`
`I reserve my right to supplement this Answer.
`
`INTERROGATORY NO. 4:
`
`Identify all of Applicant's affiliates, companies,
`employees, partners, agents, representatives and any other
`person or entity acting on his behalf, and their respective
`officers, directors and employees.
`
`ANSWER NO. 4:
`
`James P. Duggan, Attorney at Law, 50 Congress Street,
`Boston, MA
`02109.
`
`INTERROGATORY NO. 5:
`
`Describe in detail the actual and proposed use of the
`Mark by identifying each type of good or service that bears
`or is intended to bear the Mark and identifying the manner
`in which the Mark is (or will be) affixed to or used in
`connection with each such type of good or service.
`
`ANSWER NO. 5:
`
`Each and every item allowed under Class 25.
`
`In July,
`
`

`
`I was approved and intended to sell clothing such as
`2011,
`hats, headbands,
`infant and toddler clothing, one~piece
`clothing,
`jackets, pants, shirts, shoes, sweaters,
`tee~
`shirts, etc.
`I have also considered various licensing
`arrangements.
`
`INTERROGATORY NO. 6:
`
`Identify the website addresses (URL’s) and the domain
`names registered by Applicant
`(or on its behalf)
`that bear
`or are expected to bear Applicant's Mark and/or promote or
`sell Applicant's goods or services that bear or will bear
`Applicant's Mark.
`
`ANSWER NO. 6:
`
`None at the present time.
`
`INTERROGATORY NO. 7:
`
`For each type of good or service identified in response
`to Interrogatory 5 above, describe or state in detail:
`
`a.
`b.
`C.
`
`d.
`
`e.
`
`the date of first use in commerce;
`the actual and proposed channels of trade;
`the geographic area of distribution of such types
`of goods,
`from Applicant to the end—user;
`each class of purchasers or customers (i.e.,
`wholesaler, retailer, end—user, etc.) including
`but limited to the geographic area of each class
`of purchaser or customer; and
`the method or means of purchasing for each class
`of purchaser or customer (i.e., mail order, sales
`person, stores, Internet sales, etc.).
`
`ANSWER NO. 7:
`
`a.
`
`b.
`
`o.
`
`d.
`e.
`
`No commercial use as of this date.
`
`Retail and wholesale outlets,
`
`internet sales,
`
`licensing arrangements, etc.
`United States of America.
`
`I would propose to sell anywhere,
`Any legal tender.
`
`to anyone.
`
`

`
`INTERROGATORY NO. 8:
`
`For each type of goods or service identified in
`response to Interrogatory 5 above, describe in detail the
`actual and proposed price points for such types of goods or
`services.
`
`ANSWER NO. 8:
`
`I have not yet determined actual and/or proposed price
`points.
`
`INTERROGATORY NO. 9:
`
`For each type of good or service identified in response
`to Interrogatory 5 above, if use of the Mark has commenced,
`state Applicant's annual volume of business in the United
`States by identifying the annual volume of sales in terms of
`units and value of the goods from the date of first sale(s)
`to the date of your response.
`
`ANSWER NO. 9:
`
`None, as of this date.
`
`INTERROGATORY NO. 10:
`
`For each type of good or service identified in response
`to Interrogatory 5 above, if use of some or all of such
`goods or services has not yet begun, please state the
`following:
`
`a.
`
`The date that use of the Mark is expected to
`
`begin;
`b. Applicant's intended targeted consumer group or
`target demographics; and
`The amount of money Applicant has earmarked or
`the
`dedicated to the manufacture and, separately,
`promotion of the products or services bearing the
`Mark.
`
`c.
`
`ANSWER NO. 10:
`
`a.
`
`b.
`c.
`
`At the conclusion of this lawsuit.
`
`The primary consumer group would be new parents.
`I have not decided the amount of money which would
`
`be spent.
`
`

`
`INTERROGATORY NO. 11:
`
`Identify representative samples of advertisements,
`promotions or proposed advertisements or promotions
`concerning or relating to the sale or proposed sale of
`Applicant's Goods by specifically describing the medium
`(i.e., newspapers, consumer magazines,
`trade publications,
`electronic advertising via the Internet and catalogues,
`etc.) in which such advertisement or promotion appeared or
`is intended to appear,
`the date of the advertisement or
`promotion, and the identity of the person(s) employed by or
`associated with Applicant who was responsible for each such
`instance of advertisement or promotion or intended
`advertisement or promotion.
`
`ANSWER NO. 11:
`
`None, as of this date.
`
`INTERROGATORY NO. 12:
`
`State Applicant's total advertising and promotional
`expenditures made in connection with promoting sales of
`Applicant's Goods, both on an annual basis and as of the
`date of first such expenditure to the present.
`
`ANSWER NO. 12:
`
`None, as of this date.
`
`INTERROGATORY NO. 13:
`
`Identify each mark, name or symbol previously or
`currently considered by Applicant as an alternative to the
`Mark and for each such alternative,
`identify the date,
`the
`persons present when such alternative was considered,
`person who suggested such alternative,
`the reasons why the
`alternative was not adopted, and all documents referring to
`the alternative by name, mark or symbol.
`
`ANSWER NO. 13:
`
`I once considered a Kid Hollywood concept, but the
`word “Kid” seemed to me to connote and older child and I
`
`wanted to use the word “Baby” as a part of my concept.
`never pursued the “Kid Hollywood” Mark. but the name
`
`I
`
`

`
`“Hollywood” babies was reserved and the name “Baby GaGa” was
`available and I decided it would be useful to me.
`
`INTERROGATORY NO . 14 :
`
`Describe the circumstances surrounding the adoption of
`the Mark,
`including but not limited to (i) stating the date
`when the adoption of the Mark was first proposed;
`(ii)
`identifying the person(s) who originally proposed to the
`Mark for any type of goods; and (iii) identifying each
`document relating to the adoption and/or the decision to
`adopt the Mark in connection with any type of goods with
`which the Mark has been or is proposed to be used or
`associated.
`
`ANSWER NO . 14:
`
`I thought of the “Baby GaGa” concept in 2004-2005, when
`my daughter, Sofia, was born and I saw first hand just how
`the baby clothing business was thriving. As a baby says
`“gaga” it struck me as a easy~to—remember concept.
`As it
`happens,
`I was busy with being a new father, etc., so I
`didn't start the Application process for the Mark until
`early 2010.
`I went through all of the necessary steps to
`obtain the Mark through the USPTO. My Mark was entered into
`the official registry in July, 2011.
`
`I also had an idea regarding a baby
`In October, 2009,
`onesie.
`I came up with design and thought to use a high~
`tech material which would keep a baby dry and comfortable.
`
`INTERROGATORY NO . 15:
`
`For each instance in which a person recommended or
`advised against the acquisition, adoption or use of the
`Mark, or recommend or advised that Applicant contact anyone
`else for approval either before selecting, adopting,
`acquiring or using the Mark or thereafter, describe the
`circumstances surrounding each such instance by at least
`identifying each such person and stating the substance of
`such advice or recommendation,
`the date of the advice or the
`recommendation and identifying each person receiving such
`advice or recommendation.
`
`

`
`ANSWER NO. 15:
`
`None.
`
`INTERROGATORY NO. 16:
`
`Identify any and all persons Applicant has authorized,
`licensed or otherwise granted the right to use the Mark in
`commerce.
`For each person identified,
`identify the date of
`commencement and termination of each such authorization,
`license or grant, and iden