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
`ESTTA563216
`ESTTA Tracking number:
`10/04/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91207271
`Defendant
`NY Luxury Publishing LLC
`MARTIN G RASKIN
`COZEN O'CONNOR
`277 PARK AVE
`NEW YORK, NY 10172-0003
`UNITED STATES
`adivino@cozen.com, tmdocketing@cozen.com, dsunshine@cozen.com,
`pto@cozen.com
`Motion to Compel Discovery
`David B. Sunshine
`ipdocketing@cozen.com, dsunshine@cozen.com
`/David B. Sunshine/
`10/04/2013
`Motion to Compel Moramarco.pdf(171032 bytes )
`Sunshine Decl Motion to Compel.pdf(89819 bytes )
`Exhibits 1-5.pdf(1720062 bytes )
`Exhibit 6a_pdf.pdf(1031214 bytes )
`Exhibit 6b.pdf(5164692 bytes )
`Exhibits 7-13.pdf(345357 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
` Opposition No.: 91207271
`
` Mark: SCENE IN NEW YORK
`
`
`
` Application Serial No.: 85/514,764
`
`
`
`
`
`Gregg Moramarco,
`
` Opposer,
`
`
`v.
`
`
`NY Luxury Publishing LLC,
`
`
`
`
`
` Applicant.
`
`
`MOTION TO PRECLUDE QRRQUGTÓU"DISCOVERY RESPONSES AND
`RESPONSIVE DOCUMENTS OR, ALTERNATIVELY, COMPEL QRRQUGTÓU
` INTERROGATORY RESPONSES, DOCUMENT PRODUCTION AND
`DEPOSITION ATTENDANCE
`
`NY Luxury Publishing LLC (ÐCrrnkecpvÑ+"tgurgevhwnn{"oqxgu"vjg"Vtcfgoctm"Vtkcn"cpf"
`
`
`
`Crrgcn"Dqctf"*vjg"ÐDqctfÑ+"hqt"cp"Order precluding Opposer Gregg Moramarco (ÐQrrqugtÑ+"
`
`from relying on all late produced responses and responsive documents in this proceeding (as well
`
`as any documents on which Applicant was unable to oppose Opposer). Alternatively, in the
`
`event that the Board fgpkgu"CrrnkecpvÓu"tgswguv"vq"rtgenwfg Opposer from relying on late-filed
`
`responses and responsive documents, Applicant moves to compel Opposer to comply with his
`
`discovery obligations. Specifically, Applicant respectfully requests an Order that Opposer: (1)
`
`immediately provide complete responses to ApplicantÓu"First Set of Interrogatories without
`
`objection, (2) immediately provide complete responses to ApplicantÓu"Hktuv"Ugv"qh"Tequests for
`
`the Production of Documents and Things without objection; (3) immediately provide all
`
`responsive documents without objection; and (4) produce a witness for a deposition previously
`
`noticed by Applicant pursuant to a timely Notice of Deposition.1 Applicant eqpvcevgf"QrrqugtÓu"
`
`counsel to try to resolve this dispute, and as of the date of this motion QrrqugtÓu"eqwpugn"jcu"
`
`1
`Applicant did not show up for the properly noticed deposition.
`
`LEGAL\17360300\1
`
`

`
`dggp"wptgurqpukxg"vq"CrrnkecpvÓu"tgswguv"hqt"c"oggv"cpf"eqphgt"*cu"ygnn"cu"CrrnkecpvÓu"
`
`communications regardkpi"QrrqugtÓu"fkueqxgt{"fghkekgpekgu+0
`
`I.
`
`INTRODUCTION
`
`Throughout this proceeding, Opposer has completely disregarded Board mandated
`
`deadlines and procedures with impunity. Specifically, but without limitation, Opposer cannot
`
`dispute that it has: (1) failed to serve Rule 26(a) Initial Disclosures, (2) failed to show up for a
`
`properly noticed deposition, (3) served tgurqpugu"vq"CrrnkecpvÓu"document requests and
`
`interrogatories and responsive documents almost seven weeks after they were due and almost six
`
`weeks after the discovery period closed, and (4) produced only a fraction of documents requested
`
`kp"CrrnkecpvÓu"fqewogpv"tgswguvu. QrrqugtÓu"hcknwtg"vq"eqorn{"ykvj"his discovery (and other
`
`obligations) has operated to the severe prejudice of Applicant. Specifically, as a result of
`
`QrrqugtÓs failure to abide by deadlines and other scheduled dates, Applicant has not been able to
`
`depose Opposer on the documents he has produced and has not been able to take any follow-up
`
`discovery. In addition, Applicant has not been able to authenticate via deposition the few
`
`documents produced by Opposer. Accordingly, Applicant respectfully requests that the Board
`
`preclude Opposer from relying on any documents or other discovery which he produced outside
`
`of the discovery period as well as any documents on which Applicant was unable to depose
`
`Opposer.
`
`Alternatively, in the event that the Board does not preclude Opposer from relying on late-
`
`produced information and documentation, Applicant moves for an Order compelling Opposer to
`
`fully and completely comply with his discovery obligations. Specifically, Applicant respectfully
`
`requests an Order, pursuant to TBMP § 523.01, compelling Opposer to promptly: (1) provide full
`
`cpf"eqorngvg"tgurqpugu"vq"CrrnkecpvÓu"Hktuv"Ugv"qh"Kpvgrrogatories without objection, (2) provide
`
`
`LEGAL\17360300\1
`
`2
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`

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`full and complete responses in response to CrrnkecpvÓu"First Set of Requests for the Production
`
`of Documents and Things without objection, (3) provide all responsive documents without
`
`objection, and (4) attend the deposition previously noticed by Applicant.
`
`II.
`
`FACTS
`
`
`
`On July 3, 2013, Applicant served Opposer by hand delivery with its First Set of
`
`Interrogatories and First Set of Requests for the Production of Documents and Things
`
`*Fgenctcvkqp"qh"Fcxkf"D0"Uwpujkpg"*ÐUwpujkpg"Fgen0Ñ+"̨ 2; Exhs. 1 and 2). On July 12, 2013,
`
`Applicant served a Notice of Deposition of Gregg Moramarco pursuant to FRCP Rule 30(b)(1)
`
`which it noticed for August 7, 2013 (Sunshine Decl. ¶ 5; Exh. 3). OppougtÓu"tgurqpugu"vq"
`
`CrrnkecpvÓu"fkueqxgt{"tgswguvu"were due August 2, 2013 (Sunshine Decl. ¶ 7). Discovery closed
`
`in this matter on August 8, 2013 (Sunshine Decl. ¶ 8). No responses to the document requests or
`
`interrogatories were served by Opposer on August 2, 2013, or within any reasonable time thereof
`
`(Sunshine Decl. ¶ 9). In addition, Opposer did not show up to his properly noticed deposition on
`
`August 7, 2013, cpf"CrrnkecpvÓu"eqwpugn"ocfg"c"uvcvgogpv"qp"vjg"tgeqtf"vq"vjcv"ghhgev"*Uwpujkpg"
`
`Decl. ¶ 10; Exh. 4).2
`
`On or about September 19, 2013, almost six weeks past the close of discovery and almost
`
`seven weeks past the fgcfnkpg"hqt"Qrrqugt"vq"tgurqpf"vq"CrrnkecpvÓu"fkueqxgt{"tgswguvu."Qrrqugt"
`
`ugtxgf"rwtrqtvgf"tgurqpugu"vq"CrrnkecpvÓu"Hktuv"Ugv"qh"Interrogatories and First Set of Requests
`
`for the Production of Documents and Things (Sunshine Decl. ¶ 12; Exhs. 5 and 6)3. In addition
`
`to being served well beyond the deadline and outside of the discovery period, QrrqugtÓu"
`
`responses are insufficient, woefully incomplete, and, in certain cases, unintelligible. Moreover,
`
`
`2
`In fact, Opposer did not even respond to the deposition notice and, instead, chose to completely ignore it.
`
` 3
`
`The responses were not accompanied by Certificates of Service. However, the date located on the postage
`
`stamp on the mailing envelope indicated that they were mailed on or about September 19, 2013 (Sunshine Decl.
`¶ 15, Exh. 7).
`
`
`LEGAL\17360300\1
`
`3
`
`

`
`Opposer completely disregarded ApplicantÓs Notice of Deposition by failing to appear for his
`
`deposition scheduled for August 7, 2013.
`
`
`
`Applicant has complied with its meet and confer obligations. On September 25, 2013,
`
`immediately after receiving OpposerÓs discovery responses, ApplicantÓu"eqwpugn contacted
`
`OpposerÓu"eqwpugn via e-mail qwvnkpkpi"kp"fgvckn"vjg"fghkekgpekgu"kp"QrrqugtÓu"fkueqxgt{"
`
`responses and requesting a meet and confer on those deficiencies (Sunshine Decl. ¶ 17; Exh. 8) .
`
`ApplicantÓu"eqwpugn sent additional e-mails to OpposerÓu"eqwpugn tgswguvkpi"QrrqugtÓu"
`
`availability for a meet and confer on September 26, 2013 and again on September 30, 2013
`
`(Sunshine Decl. ¶ 19; Exhs. 9 and 10). On October 1, 2013, counsel for Opposer indicated that
`
`jg"yqwnf"ecnn"CrrnkecpvÓu"eqwpugn"ncvgt"vjcv"chvgtpqqp."yjkej"jg"fkf"pqv (Sunshine Decl. ¶ 21;
`
`Exh. 11). Chvgt"pqv"jgctkpi"htqo"QrrqugtÓu"eqwpugn."on October 3, 2013, counsel for Applicant
`
`called OpposgtÓu"eqwpugn"cpf"left a voicemail (Sunshine Decl. ¶ 23). On the same day,
`
`QrrqugtÓu"eqwpugn"ugpv"c"tgurqpukxg"gockn"eqorngvgn{"kipqtkpi"vjg"kuuwgu"tckugf"kp"CrrnkecpvÓu"
`
`eqwpugnÓu"kpkvkcn"gockn (Sunshine Decl. ¶ 24; Exh. 12). CrrnkecpvÓu"eqwpugn"koogfkcvgn{"
`
`responded by sending another email reiterating the issues raised in its email of September 25,
`
`2013 and requesting c"tgurqpug"htqo"QrrqugtÓu"eqwpugn"d{"6<52ro"vjcv"fc{ (Sunshine Decl. ¶
`
`26; Exh.13). As of the filing of this motion no response has been tgegkxgf"htqo"QrrqugtÓu"
`
`counsel. (Sunshine Decl. ¶ 26). Kp"xkgy"qh"vjg"vkijv"fgcfnkpg"vq"dtkpi"vjku"oqvkqp"cpf"QrrqugtÓu"
`
`eqwpugnÓu"rcvvgtp"qh"fkncvqt{"behavior, Applicant could not afford to wait any longer before
`
`bringing the instant motion.
`
`
`
`III. ARGUMENT
`
`A.
`
`Opposer Should Be Precluded From Relying on Any Materials Produced After
`the Close of Discovery
`
`
`LEGAL\17360300\1
`
`4
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`

`
`
`
`It would be patently unfair to allow Opposer to rely on responses and responsive
`
`documents in this proceeding which were served approximately seven weeks late and
`
`approximately six weeks after the close of discovery. Likewise, it would be prejudicial to allow
`
`Opposer to simply ignore a properly noticed deposition without any repercussions. In shirking
`
`his discovery obligations, Opposer has prevented Applicant from deposing Opposer on
`
`QrrqugtÓu"fkueqxgt{"tgurqpugu"cpf"tgurqpukxg"fqewogpvu0""Kp"cffkvkqp."Qrrqugt"jcu"ghhgevkxgn{"
`
`precluded Applicant from conducting any follow-wr"fkueqxgt{"qh"Qrrqugt0""QrrqugtÓu"kortqrgt"
`
`actions have severely prejudiced Applicant, and, as a result, Opposer should be barred from
`
`relying on any documents or discovery responses provided after the close of discovery and/or in
`
`connection with which Applicant has not been able to depose Opposer.
`
`
`
`
`
`B.
`
`Alternatively, if the Board Allows Opposer to Rely on Late-Provided Discovery,
`Opposer Should be Compelled to Provide Full and Complete Discovery
`Responses and Responsive Documents and Appear for a Deposition
`
`As discussed above, Opposer has failed to substantially respond to ApplicantÓu"Document
`
`Requests and Interrogatories and the responses Opposer did provide were not only untimely but
`
`also insufficient, woefully incomplete, and unintelligible. Given that Opposer failed to respond
`
`vq"CrrnkecpvÓu"discovery requests during the time allowed therefor pursuant to TBMP § 403.03,
`
`and given the Opposer has provided no justification for his failure to timely respond, Opposer
`
`has waived his right to object to CrrnkecpvÓu"fkueqxgt{"tgswguvu. See TBMP § 403.03.
`
`In short, Opposer is shirking his discovery obligations and refusing to provide responses
`
`to discovery to which Applicant is entitled and without which Applicant would be prejudiced and
`
`unable to provide a full defense against QrrqugtÓu"enckou. All the while, Applicant has had to
`
`incur unnecessary legal fees chasing after Opposer for the discovery to which it is rightly
`
`
`LEGAL\17360300\1
`
`5
`
`

`
`entitled. This is unacceptable and Applicant is entitled to full and complete responses to its
`
`discovery requests without objection.
`
`In addition, Opposer has only produced 60 pages of documents consisting mostly of
`
`QrrqugtÓu"purported magazine covers and title pages.4 Opposer has objected to each and every
`
`qpg"qh"CrrnkecpvÓu"fqewogpv"tgswguvu"*ykvj"vjg"gzegrvkqp"qh"Tgswguv"Pq0"64"vq"yjkej"Qrrqugt"
`
`failed to provide any response). The following is a small sample of document categories to which
`
`either no documents were produced or non-responsive documents were produced:5
`
`̋ Kphqtocvkqp"eqpegtpkpi"cnn"rtqfwevu1ugtxkegu"uqnf"wpfgt"QrrqugtÓu"octm"*Tgswguv"6+
`
`̋ Sales informatkqp"hqt"rwdnkecvkqpu"uqnf"wpfgt"QrrqugtÓu"octm"*Tgswguvu"9.":+
`
`̋ Hkpcpekcn"kphqtocvkqp"tgncvkpi"vq"QrrqugtÓu"rwdnkecvkqpu"uqnf"wpfgt"QrrqugtÓu"octm"
`(Requests 9, 12)
`
`̋ Total number of publications printed and circulated for publications sold under
`QrrqugtÓu mark (Request 11)
`
`̋ Rtkegu"ejctigf"hqt"QrrqugtÓu"rwdnkecvkqpu"uqnf"wpfgt"QrrqugtÓu"octm"*Tgswguvu"3;."42+
`
`̋ Citggogpvu"ykvj"vjktf"rctvkgu"eqpegtpkpi"QrrqugtÓu"rwdnkecvkqpu"uqnf"wpfgt"QrrqugtÓu"
`mark (Request 21)
`
`̋ Information concerning classes of purchasers, demographics of purchasers and channels
`qh"vtcfg"tgncvkpi"vq"QrrqugtÓu"rwdnkecvkqpu"uqnf"wpfgt"QrrqugtÓu"octm"*Tgswguvu"49."4:."
`29)
`
`̋ Cfxgtvkukpi"kphqtocvkqp"eqpegtpkpi"QrrqugtÓu"rwdnkecvkqpu"uqnf"wpfgt"QrrqugtÓu"octm"
`(Requests 10, 13, 32, 41, 43)
`
`̋ Eqorngvg"rwdnkecvkqpu"uqnf"wpfgt"QrrqugtÓu"octm"*Tgswguv"55+"
`
`̋ Documents and communications relating to Applicant (Requests 26, 35, 44)
`
`4
`Opposer failed to even produce the entire content of the purported magazines.
`
` 5
`
`Since Opposer did not produce documents that were fully responsive to most (if not all) of the requests, this
`
`nkuv"ku"pqv"kpvgpfgf"vq"dg"cp"gzjcwuvkxg"nkuv"qh"QrrqugtÓu"fghkekgpekgu"dwv"ogtgn{"cp"gzcorng0""Oqtgqxgt."ykvj"tgurgev"
`to the requests to which Opposer indicates that he has produced responsive documents, most of those documents are
`non-responsive.
`
`
`LEGAL\17360300\1
`
`6
`
`

`
`̋ Kphqtocvkqp"eqpegtpkpi"fkuvtkdwvqtu"qh"QrrqugtÓu"rtqfwevu"*Tgswguvu"59."5:."5;+.
`
`Opposer has objected to most of these document categories on the ground that they are
`
`not relevant and/or request confidential information. Regarding the relevancy objections, there
`
`ecp"dg"pq"fkurwvg"vjcv"vjg"fqewogpvu"ctg"jkijn{"tgngxcpv"vq"CrrnkecpvÓu"fghgpugu"kp"vjku"ecug0""
`
`Regardless, pursuant to TMBP § 403.03, Opposer has waived his right to object to the discovery
`
`sought. Regarding the confidentiality objections, during the initial discovery conference, the
`
`rctvkgu"jcf"citggf"vq"vjg"DqctfÓu"uvcpfctf"rtqvgevkxg"qtfgt0""Vjgtghqtg, that objection is moot. In
`
`view of the foregoing, Applicant respectfully requests that Opposer be ordered to immediately
`
`rtqxkfg"hwnn"cpf"eqorngvg"tgurqpugu"vq"CrrnkecpvÓu"discovery requests without objection as well
`
`as produce all documents and things tgurqpukxg"vq"CrrnkecpvÓu"tgswguvu0
`
`Finally, after all responses and responsive documents are received without objection,
`
`Opposer should be compelled to appear for his deposition. As discussed above, by failing to
`
`appear at his deposition, Qrrqugt"eqorngvgn{"kipqtgf"CrrnkecpvÓu"Notice of Deposition served
`
`on Opposer on July 3, 2013. Opposer failed to even provide Applicant with the courtesy of
`
`notifying Applicant that Opposer would not attend (nor did he make any request to reschedule).
`
`As a result, Applicant had to incur costs and legal fees appearing at the deposition for no reason.
`
`Oqtgqxgt."d{"xktvwg"qh"QrrqugtÓu"hcknwtg"vq"crrgct."Crrnkecpv"jcu"pqv"jcf"cp"qrrqtvwpkv{"vq"
`
`question Opposer on his discovery responses or the few documents he did produce.
`
`In short, Opposer is once again shirking its discovery obligations and improperly refusing
`
`to attend CrrnkecpvÓu"rtqrgtv{"pqvkegf"deposition without providing any acceptable justification.
`
`Furthermore, Applicant has had to incur unnecessary legal fees chasing after Opposer to compel
`
`Opposer to attend a deposition. This is unacceptable and Applicant is entitled to depose
`
`Opposer.
`
`
`LEGAL\17360300\1
`
`7
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`

`
`Ceeqtfkpin{."vjg"gxgpv"vjg"Dqctf"fgpkgu"CrrnkecpvÓu"tgswguv"vq"rtgenwfg"QrrqugtÓu"wug"qh"
`
`late produced documents, it is respectfully requested that the Board order Opposer to appear to a
`
`deposition once Opposer serves full and complete discovery responses and responsive
`
`documents.6
`
`IV. CONCLUSION
`
`For the foregoing reasons, Applicant respectfully requests that Opposer be precluded
`
`from relying on any document or discovery response in this proceeding which was produced late
`
`and/or in connection with which Applicant was unable to depose Opposer. Alternatively, in the
`
`event that the Board allows Opposer to rely on such documents, Applicant respectfully requests
`
`that Opposer be compelled to: *3+"koogfkcvgn{"rtqxkfg"eqorngvg"tgurqpugu"vq"CrrnkecpvÓu"Hktuv"
`
`Set of Interrogatories without objection, (2) immediately provide complete responses to
`
`CrrnkecpvÓu"Hktuv"Ugv"qh Requests for the Production of Documents and Things without objection;
`
`(3) immediately provide all responsive documents without objection; and (4) produce a witness
`
`for a deposition after 1-3 have been completed
`
`
`
`Dated: October 4, 2013
`
`_/s/ David B. Sunshine________________
`Amy F. Divino
`David B. Sunshine
`Eq¦gp"QÓEqppqt
`277 Park Avenue
`New York, New York 10172
`Tel. (212) 883-4900
`dsunshine@cozen.com
`Attorneys for Applicant
`
`
`6
`In the event that the Board deems it necessary to re-open discovery for this purpose, it is respectfully
`requested that discovery be re-opened solely for Applicant to complete its discovery. See, e.g., Amazon
`Technologies, Inc. v. Wax, 95 USPQ2d 1865, 1869 (TTAB 2010) (discovery reopened for Applicant only).
`
`
`LEGAL\17360300\1
`
`8
`
`

`
`CERTIFICATE OF SERVICE
`
`K"egtvkh{"vjcv"c"vtwg"cpf"ceewtcvg"eqr{"qh"vjg"hqtgiqkpi"Crrnkecpv"P["Nwzwt{"RwdnkujkpiÓu"
`
`Oqvkqp"vq"Rtgenwfg"QrrqugtÓu"Fkueqxgt{"Tgurqpugu"cpf"Tguponsible Documents, or
`
`Cnvgtpcvkxgn{."Eqorgn"QrrqugtÓu"Kpvgttqicvqt{"Responses, Document Production and Deposition
`
`Attendance and accompanying Declaration and Exhibits were served via First Class Mail,
`
`postage prepaid, this 4th day of October 2013, upon counsel for Opposer as follows:
`
`David J. DeToffol
`DeToffol & Associates
`30 Broad Street, 35th floor
`New York, New York 10004
`
`
`
`_/s/ David B. Sunshine___________
`
`
`
`
`
`LEGAL\17360300\1
`
`

`
`STATEMENT PURSUANT TO
`37 C.F.R. §2.120(e) and TBMP §§ 523.02 & 524.02
`
`The undersigned hereby certifies that Applicant and/or its attorneys have made a good
`
`faith effort, by conference or correspondence, to resolve with the other party or the attorney
`
`therefor the issues presented in the motion, and has been unable to reach agreement.
`
`Dated: October 4, 2013
`
`_/s/ David B. Sunshine__________
`Amy F. Divino
`David B. Sunshine
`Eq¦gp"QÓEqppqt
`277 Park Avenue
`New York, New York 10172
`Tel. (212) 883-4900
`dsunshine@cozen.com
`Attorneys for Applicant
`
`
`
`
`
`
`
`
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`LEGAL\17360300\1
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
` Opposition No.: 91207271
`
` Mark: SCENE IN NEW YORK
`
`
`
` Application Serial No.: 85/514,764
`
`
`
`Gregg Moramarco,
`
` Opposer,
`
`
`v.
`
`
`NY Luxury Publishing LLC,
`
`
`
`
`
` Applicant.
`
`
`DECLARATION OF DAVID B. SUNSHINE
`
`
`1.
`
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`I, David B. Sunshine, pursuant to 28 U.S.C. § 1746, hereby declares as follows:
`
`K"co"c"Ogodgt"qh"vjg"ncy"hkto"Eq¦gp"QÓEqppqt."R0E0."cvvqtpg{u"hqt"New York Luxury
`Rwdnkujkpi"NNE"*ÐP[NRÑ"qt"ÐCrrnkecpvÑ+"in the above-captioned proceeding. I make this
`declaration on personal knowledge as to matters personally known to me and to place
`certain facts and documents before the U.S. Patent and Trademark Office.
`
`On July 3, 2013, NYLP served Opposer by hand delivery with its First Set of
`Interrogatories and First Set of Requests for the Production of Documents and Things in
`connection with the instant proceeding.
`
`Attached hereto as Exhibit 1 is a true and correct copy of P[NRÓu"First Set of
`Interrogatories.
`
`Attached hereto as Exhibit 2 is a true and correct copy of P[NRÓu"Hktuv"Ugv"qh"Tgswguvu"
`for the Production of Documents and Things.
`
`On July 12, 2013, NYLP served a Notice of Deposition of Gregg Moramarco purusant to
`FRCP Rule 30(b)(1) which it noticed for August 7, 2013.
`
`Cvvcejgf"jgtgvq"cu"Gzjkdkv"5"ku"c"vtwg"cpf"eqttgev"eqr{"qh"P[NRÓu"Pqvkeg"qh"Fgrqukvkqp0
`
`OppqugtÓu"tgurqpugu"vq"P[NRÓu"fkueqxgt{"tgswguvu"ygtg"fwg"Cwiwuv"4."4235"0
`
`Discovery closed in this matter on August 8, 2013.
`
`Pq"tgurqpugu"vq"P[NRÓu"fqewogpv"tgswguvu"qt"kpvgttqicvqtkgu"ygtg"ugtxgf"d{"Qrrqugt"
`on August 2, 2013 or within any reasonable time thereof.
`
`LEGAL\17362628\1 11803.0001.000/316643.000
`
`

`
`
`
`10.
`
`11.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`21.
`
`22.
`
`23.
`
`Opposer did not show up to his properly noticed deposition on August 7, 2013, and
`P[NRÓu"eqwpugn"ocfg"c"uvcvgogpv"qp"vjg"tgeqtf"vq"vjcv"ghhgev.
`
`Attached hereto as Exhibit 4 is a true and correct copy of the transcript from the
`deposition scheduled for August 7, 2013.
`
`On or about September 19, 2013, almost six weeks past the close of discovery and almost
`seven seeks past the deadline for Opposer to respond to P[NRÓu"discovery requests,
`Opposer served purported responses to P[NRÓu"First Set of Interrogatories and First Set
`of Requests for the Production of Documents and Things.
`
`Cvvcejgf"jgtgvq"cu"Gzjkdkv"7"ku"c"vtwg"cpf"eqttgev"eqr{"qh"QrrqugtÓu"Tgurqpug"vq"P[NRÓu"
`First Set of Interrogatories to Opposer.
`
`Attached hereto as Exhibit 6 is a true and corrgev"eqr{"qh"QrrqugtÓu"Tgurqpug"vq"P[NRÓu"
`First Set of Requests for Production of Documents and Things.
`
`QrrqugtÓu"tgurqpugu"ygtg"pqv"ceeqorcpkgf"d{"Egtvkhkecvgu"qh"Ugtxkeg0"Jqygxgt."vjg"fcvg"
`located on the postage stamp on the mailing envelope indicated that they were mailed on
`or about September 19, 2013.
`
`Attached hereto as Exhibit 7 is a true and correct copy of the front of the envelope in
`yjkej"QrrqugtÓu"tgurqpugu"ygtg"eqpvckpgf0
`
`On September 25, 2013, immediately after receiving QrrqugtÓu"fkueqxgt{"tguponses,
`P[NRÓu"eqwpugn"eqpvcevgf"QrrqugtÓu"eqwpugn"xkc"g-mail outlining in detail the
`fghkekgpekgu"kp"QrrqugtÓu"fkueqxgt{"tgurqpugu"cpf"tgswguvkpi"c"oggv"cpf"eqphgt"qp"vjqug"
`deficiencies.
`
`Attached hereto as Exhibit 8 is a true and correct copy of an email dated September 25,
`4235"htqo"P[NRÓu"eqwpugn"vq"QrrqugtÓu"eqwpugn0
`
`P[NRÓu"eqwpugn"ugpv"cffkvkqpcn"g-ocknu"vq"Qrrqugt"tgswguvkpi"QrrqugtÓu"cxckncdknkv{"hqt"
`a meet and confer on September 26, 2013 and again on September 30, 2013.
`
`Attached as Exhibits 9 amd 10 are true and correct copies of emails dated September 26,
`2013 and September 30, 2013 from P[NRÓu"eqwpugn"vq"QrrqugtÓu"eqwpugn0
`
`Qp"Qevqdgt"3."4235."eqwpugn"hqt"Qrrqugt"kpfkecvgf"vjcv"jg"yqwnf"ecnn"P[NRÓu"eqwpugn"
`later that afternoon, which he did not
`
`Attached as Exhibit 11 is a true and correct copy of an email dated October 1, 2013 from
`QrrqugtÓu"eqwpugn"vq"P[NRÓu"eqwpugn0
`
`Chvgt"pqv"jgctkpi"htqo"QrrqugtÓu"eqwpugn."on Ocober 3, 2013, counsel for NYLP called
`QrrqugtÓu"eqwpugn"cpf"nghv"c"xqkeg"ockn0
`
`
`LEGAL\17362628\1 11803.0001.000/316643.000
`
`- 2 -
`
`

`
`
`
`24.
`
`25.
`
`26.
`
`27.
`
`On the same day, QrrqugtÓu"eqwpugn"ugpv"c"tgurqpukxg"gockn"eqorngvgn{"kipqtkpi"vjg"
`kuuwgu"tckugf"kp"CrrnkecpvÓu"eqwpugnÓu"kpkvkcn"gockn"
`
`Attached hereto as Exhibit 12 is a true and correct copy of an email dated October 3,
`4235"htqo"QrrqugtÓu"eqwpugn"vq"P[NRÓu"eounsel.
`
`P[NRÓu"eqwpugn"koogfkcvgn{"tgurqpfgf"vq"QrrqugtÓu"eqwpugn"d{"sending another email
`reiterating the issues raised in its email of September 25, 2013 and requesting a response
`htqo"QrrqugtÓu"eqwpugn"d{"6<52ro"vjcv"fc{0""Pq"tgurqpug"ycu"tgegkxgf"htqo"QrrqugtÓu"
`counsel.
`
`Attached hereto as Exhibit 13 is a true and correct copy of an email dated October 3,
`4235"htqo"P[NRÓu"eqwpugn"vq"QrrqugtÓu"eqwpugn0"
`
`I declare under penalty of perjury that to the best of my knowledge, the foregoing is true
`
`and correct.
`
`
`
`Dated: October 4, 2013
`
`
`
`
`
`
`
`
`
`
`
`_/s/ David B. Sunshine_______
`David B. Sunshine
`
`
`
`
`LEGAL\17362628\1 11803.0001.000/316643.000
`
`- 3 -
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.:
`
`91207271
`
`Mark: SCENE IN NEW YORK
`
`Application Serial No.: 85/514,764
`
`
`
`
`NY Luxury Publishing LLC,
`
`Applicant.
`
`Gregg Moramarco,
`
`Opposer,
`
`V.
`
`APPLICANT NY LUXURY PUBLISHING LLC’S FIRST SET OF
`INTERROGATORIES TO OPPOSER
`
`Pursuant to Fed. R. Civ. P. 33 and Rule 2.120 of the Trademark Rules of Practice,
`
`Applicant NY Luxury Publishing LLC (“NYLP” or “Applicant”) requests that Opposer Gregg
`
`Moramarco (“Moramarco” or “Opposer”) respond to the following interrogatories by serving
`
`written responses thereto within thirty (30) days after service of this request, pursuant to the
`
`following definitions and instructions:
`
`Definitions and Instructions
`
`1.
`
`“Person(s)” includes not only natural persons, officers, managing agents,
`
`supervisory personnel, and employees, but also includes, without limitation, firms, partnerships,
`
`associations, corporations and other legal entities, divisions, departments or other units thereof.
`
`2.
`
`“Opposer,” “you” and “your” shall mean or refer to Gregg Moramarco, and any
`
`partnership and/or corporation in which Gregg Moramarco has an ownership interest and/or
`
`controls and which uses or intends to use Opposer’s Mark (as hereinafter defined), as well as all
`
`divisions, licensees and parent, subsidiary, affiliated or related companies thereof, and the
`
`partners, principals, directors, officers, agents and employees thereof.
`
`LEGAL\l6856545\l
`
`l1803.000l.O00/316643.000
`
`
`
`
`
`.EXHIBIT I
`
`

`
`3.
`
`“Opposer’s Mark” shall collectively mean the trademark that is the subject of U.S.
`
`Trademark Application No. 85/598,024 and any mark which Opposer has asserted against
`
`Applicant in the Notice of Opposition dated October 2, 2012 as well as any other similar mark,
`
`name or designation in any and all forms and formats, used alone or in combination with any
`
`other word(s), design(s) or symbol(s).
`
`4.
`
`“Applicant” shall mean or refer to NY Luxury Publishing LLC and any
`
`partnership and/or corporation in which it has an ownership interest and/or controls and which
`
`uses or intends to use Applicant’s Mark (as hereinafter defined), as well as all divisions,
`
`licensees and parent, subsidiary, affiliated or related companies thereof, and the partners,
`
`principals, directors, officers, agents and employees thereof.
`
`5.
`
`“Applicant’s Mark” shall mean the trademark that is the subject of U.S.
`
`Trademark Application Serial No. 85/514,764 and/or any other similar mark, name or
`
`designation in any and all forms and formats, used alone or in combination with any other
`
`word(s), design(s) or symbol(s).
`
`6.
`
`The ‘024 Application shall mean U.S. Trademark Application Serial No.
`
`85/598,024 filed on April 13, 2012 by Opposer for “magazines in the field of restaurants, real
`
`estate, travel, hotels, spas, cars, fashion, music, nightlife, shopping, fitness, nutrition, beauty,
`
`golf, events, and area attractions.
`
`7.
`
`The term “interstate commerce” shall mean the “bona fide use of a mark in the
`
`ordinary course of trade in the United States, and not merely to reserve a right in a mark.”
`
`8.
`
`9.
`
`The United States Patent and Trademark Office shall be referred to as the “PTO.”
`
`In these interrogatories, the terms “document” and “documents” are used in their
`
`customary broad sense and include, without being limited to, the original and any copy,
`
`

`
`regardless of origin or location, of the following items,‘whether printed, written, produced by
`
`and/or reproduced by any process, namely: notes, correspondence, internal company
`
`communications, telegrams, cables, telexes, ledger books, statements, memoranda, summaries or
`
`records of conversations, diaries, reports, charts, labels, art work, mockup labels, films, video
`
`tapes, photoboards, drawings, graphs, photographs, microfilms, minutes or records of meetings,
`
`reports and/or summaries of interviews or investigations, opinions or reports of consultants or
`
`counsel, agreements, notebooks, letters, advertisements, promotional literature, trade letters,
`
`press releases, drafts of documents and revisions of drafis of documents, and any other written or
`
`recorded material now or formerly in the possession, custody or control of Opposer.
`
`10.
`
`In these interrogatories, where identification of a document is required, such
`
`identification should include the following information:
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`(e)
`
`(f)
`
`the author’s name, address and job title;
`
`the date;
`
`the general nature and subject matter of the document;
`
`the name and address of each recipient of a copy of the document;
`
`the present location and custodian of the original and all copies; and
`
`whether Opposer is willing to produce such document.
`
`1 1.
`
`Wherever the identification of a person is requested, such identification shall
`
`include the following:
`
`(a)
`
`In the case ofa natural person, the person’s:
`
`(i)
`
`(ii)
`
`(iii)
`
`(iv)
`
`(v)
`
`full name;
`
`present or last known residence address;
`
`present or last known employer or business affiliation;
`
`present or last known business address; and
`
`occupation and position or title.
`
`

`
`(b)
`
`In the case of a person other than a natural person, the person’s:
`
`(i)
`
`(ii)
`
`name or designation; and
`
`present or last known business address.
`
`12.
`
`As used herein, the terms “referring" or “relating to,” or any part thereof, in
`
`addition to their usual and customary meanings shall mean evidencing, discussing, constituting,
`
`mentioning, pertaining to, assessing, embodying, recording, stating, concerning, describing,
`
`touching upon, or summarizing.
`
`13.
`
`The singular includes the plural and vice Versa; the terms “and” and “or” shall be
`
`both conjunctive and disjunctive; and the past tense includes the present tense and vice versa.
`
`14.
`
`If Opposer withholds under a claim of privilege or work-product immunity any
`
`document or thing which is otherwise responsive to any requests or interrogatories served by
`
`Applicant in this proceeding, state:
`
`(a)
`
`(b)
`
`(D
`
`(g)
`
`(h)
`
`the date, identity and general subject matter of such document or thing;
`
`the grounds asserted in support of the withholding of such document or
`
`thing;
`
`the identity of each person (other than stenographic or clerical assistants)
`
`participating in the preparation of such document or thing;
`
`the identity of each person to whom the contents of such document or
`
`thing were communicated by copy, distribution, reading or substantial
`
`summarization;
`
`a description of any document or thing or other material transmitted with
`
`or attached to such document or thing;
`
`the number of pages in such document;
`
`the particular request or interrogatory to which such document or thing is
`
`responsive; and
`
`whether any business or non—legal matter is contained or discussed in such
`
`document or thing.
`
`

`
`15.
`
`With respect to each document or thing otherwise responsive to any request or
`
`interrogatory which has been lost or destroyed since its preparation or receipt, identify the
`
`document or thing, state the request or interrogatory to which it would be responsive, and give
`
`full particulars or circumstances under which the document or thing was lost or destroyed.
`
`Interrogatories
`
`1.
`
`2.
`
`Identify the dates of first use in interstate commerce of Opposer’s Mark.
`
`Identify each and every type of product and/or service on or in connection with
`
`which Opposer has used, is using and/or intends to use Opposer’s Mark.
`
`3.
`
`State in detail the basis for Opposer’s claim in the Notice of Opposition that
`
`Applicant’s Mark is “confusingly similar” to Opposer’s Mark.
`
`4.
`
`State in detail the basis for Opposer’s claim in the Notice of Opposition that
`
`Applicant did not have a borzafide intention to use Applicant’s Mark in commerce.
`
`5.
`
`6.
`
`Identify the manner in which Opposer’s Mark were used and are used.
`
`Identify the dates on which each issue of Opposer’s magazine bearing Opposer’s
`
`Mark was distributed to the public.
`
`7.
`
`For each magazine issue identified in response to Interrogatory No. 6 above,
`
`identify the total number of magazines printed and circulated.
`
`8.
`
`State in detail each geographic area, by city and state, in which Opposer has sold
`
`or distributed or has sold or distributed goods under Opposer’s Mark, including when such sales
`
`or distribution began.
`
`9.
`
`Identify the channels of trade and distribution through which Opposer has sold or
`
`distributed, is selling or distributing, and/or intends to sell or distribute its products and/or
`
`services in connection with Opposer’s Mark.
`
`

`
`10.
`
`Identify the class(es) of purchasers (e.g., retailers, wholesalers, restaurants,
`
`general public, etc.) to whom Opposer has sold or distributed, is selling or distributing, and/or
`
`intends to sell or distribute its products and/or services in connection with Opposer’s Mark.
`
`11.
`
`Describe the ultimate