Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA546592
`ESTTA Tracking number:
`07/03/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91207982
`Plaintiff
`Crtek Entertainment GmbH
`NED W BRANTHOVER
`ABELMAN FRAYNE & SCHWAB
`666 THIRD AVENUE 10TH FLOOR
`NEW YORK, NY 10017
`UNITED STATES
`nwbranthover@lawabel.com, pjlynfield@lawabel.com
`Motion to Compel Discovery
`Ned W. Branthover
`nwbranthover@lawabel.com
`/Ned W. Branthover/
`07/03/2013
`Opposer's Motion to Compel and Suspend with Exhibits - July 3,
`2013.pdf(1516985 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA546592
`ESTTA Tracking number:
`07/03/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91207982
`Plaintiff
`Crtek Entertainment GmbH
`NED W BRANTHOVER
`ABELMAN FRAYNE & SCHWAB
`666 THIRD AVENUE 10TH FLOOR
`NEW YORK, NY 10017
`UNITED STATES
`nwbranthover@lawabel.com, pjlynfield@lawabel.com
`Motion to Compel Discovery
`Ned W. Branthover
`nwbranthover@lawabel.com
`/Ned W. Branthover/
`07/03/2013
`Opposer's Motion to Compel and Suspend with Exhibits - July 3,
`2013.pdf(1516985 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`222,605
`
`In the Matter of Serial No. 85/626,388
`Filed: May 15, 2012
`
`EL;1;"12‘i§;};}1;.'i}J§{1;}1I"E§£i;L'£{"""""""""""X
`Opposer,
`
`v.
`
`H
`
`:
`
`iCo1mectUS LLC.
`
`Applicant.
`
`_____________________________________________________-X
`
`Opposition No. 91207982
`
`OPPOSER’S MOTION" TO COMPEL, SUSPEND PROCEEDINGS AND CORRECT
`OPPOSER'S NAME IN THE PTO DATABASE
`
`Opposer Crytek Entertainment GmbH (“Crytek” or “Opposer”) by and through its attorneys,
`
`moves pursuant to Rule 37 of the Federal Rules of Civil Procedure and 37 C.F.R. §2. l20(g)(i) for
`
`an order compelling Applicant iConnectUS LLC ("iConnectUS" or "Applicant") to provide its
`answers and documents in response to Opposer's written discovery requests consisting of Opposer's
`
`First Set of lnterrogatories and Opposer's First Request for Production of Documents as well as for
`
`Applicant to produce its Initial Disclosures and that Applicant's failure to do so will result in a
`
`judgment by default.
`
`It is simultaneously requested that proceedings be suspended until this Motion is decided
`
`and that all pretrial dates be appropriately extended by sixty (60) days. Under the current schedule,
`
`discovery will closed on September 21, 2013. Opposer requires Applicants responses to discovery
`
`to prepare its case. It is respectfully requested that this motion be granted for the reasons set forth
`
`
`
`below since Applicant has completely failed to respond to Opposer's Discovery Requests or to any
`
`of Opposer's communications requesting its participation to discuss this issue.
`
`At the outset, Opposer requests that Opposer's name be corrected in the TTAB database
`
`because it is erroneously listed as "CRTEK" instead of "CRYTEK". See the Opposer's name as set
`
`forth in the Notice of Opposition.
`
`Opposer conducted its Rule 26(f) conference with Applicant's attorney on or about March
`
`24, 2013.
`
`On March 25 , 2013 Opposer served its Initial Disclosures.
`
`On March 25 , 2013 Opposer served its First Set of lnterrogatories and First Request for
`
`Production of Documents ("Opposer's Discovery Requests") on Applicant. Applicant's responses
`
`were due on April 24, 2013. Copies of these Discovery Requests are attached as Exs. A-B.
`
`On April 26, 2013 Opposer granted the Applicant a 30-day extension to respond to
`
`Opposer's Discovery Requests until May 24, 2013. (Ex. C)
`
`On May 27, 2013 Applicant's attorney Mr. Mark Morrison withdrew as counsel and
`
`substituted the Applicant as correspondent.
`
`(EX. D)
`
`On May 31, 2013 Opposer's attorney Mr. Ned Branthover sent an email to Applicant
`
`inquiring as to the status of Applicant's responses to Opposer's discovery requests and requesting a
`
`call to discuss same by June 5, 2013.
`
`(Ex.E)
`
`On June 5, 2013 Opposer's attorney called Applicant and left a voice mail. In response,
`
`Applicant emailed Mr. Ned Branthover informing him that Applicant is traveling and will like to
`
`schedule a telephone conference on June 7, 2013. On June 5, 2013 Mr. Ned Branthover's responded
`
`by email that any time on June 7, 2013 is acceptable. (Ex. F)
`
`On or about June 7, 2013 Opposer‘s attorney called Applicant and left a voice mail
`
`requesting Applicant to return the call. Applicant has not returned the call.
`
`
`
`On June 7, 2013 Opposer received an email from Mr. Barak Vaughn, an attorney with Gersh
`
`& Derby LLP, advising Mr. Branthover that Mr. Vaughn's firm is in the process of being retained
`
`by the Applicant. (Ex. G)
`
`On June 10, 2013 Opposer's attorney Mr. Ned Branthover emailed Mr. Vaughn with a copy
`
`to Applicant, stating that Mr. Vaughn has not as yet filed a substitution of counsel and that
`
`Applicant is past due in submitting it's responses to Opposer’s discovery requests. (Ex. H)
`
`On June 17, 2013 Opposer's attorney Mr. Ned Branthover emailed Applicant inquiring what
`
`is Applicant's intention regarding this case and to schedule a call by June 19, 2013 to discuss
`
`Applicants responses to Opposer's discovery requests. (Ex. I)
`
`On June 26, 2013 Opposer's attorney Mr. Branthover sent an email to Mr. Vaughn and
`
`Applicant requesting responses to Opposer's Discovery by July 3, 2013. (Ex. J)
`
`On June 26, 2013 Opposer's attorney Mr. Ned Branthover received an email from Mr.
`
`Barak Vaughn stating that Mr. Vaughn has declined to represent the Applicant. (Ex. K)
`
`To date, Applicant has not responded to Opposer's June 25, 2013 email which requests
`
`Applicant to discuss the discovery disputes or advise Opposer whether Applicant will be defending
`
`this proceeding or substituting a new attorney.
`
`On July 1, 2013 Opposer's attorney Mr. Ned Branthover called Applicant's listed phone
`
`number during business hours and the call was answered by a recording and a message was left
`
`detailing the reasons for the call and requesting a return call. Applicant did not return this call.
`
`Pursuant to Rule 2.120(e), the undersigned has made a good faith effort to resolve this
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`matter in a manner that would avoid the need to file this Motion. As of the filing date of this
`
`Motion, Applicant has not responded to Opposer's Discovery Requests, not provided a time to
`
`discuss the outstanding discovery disputes despite Opposer's repeated efforts to do so.
`
`
`
`For the foregoing reasons, it is respectfully requested that this Motion to Compel be granted,
`
`that the opposition be suspended in the interim and that Applicant's failure to respond to this motion
`
`will result in a default judgment.
`
`Date: July 3, 2013
`
`anthover
`/av‘)
`Ned I Br
`ABELMAN, FRAYNE & SCHWAB
`666 Third Avenue
`
`New York, New York 10017
`Tel: 212-949-9022
`
`Fax: 212 949-9190
`
`Email: nwbranthoVer@laWabel.oorn
`
`Attorneys for Opposer
`CRYTEK ENTERTAINMENT GMBH
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that this 3rd day of July, 2013, a copy of the foregoing was sent Via email
`
`and regular mail to the following:
`
`Mr. Michael Fetyko
`IConnect US
`
`2299 Pacific Avenue
`
`Costa Mesa, CA 92627
`
`Email: mfetyko@iconnectus.co1n
`
`
`
`
`
`Ned W. Bahover I
`
`
`
`
`
`EXHIBIT AEXHIBIT A
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`222,605
`
`In the Matter of Serial No. 85/626,388
`Filed: May 15, 2012
`
`E§§;}ErlE§i;It;}:}l}§;'1}£'E§;§L§ii:""""""""""""ii
`
`Opposer,
`
`Opposition No. 91207982
`
`V.
`
`E
`
`iConnectUS LLC.
`
`Applicant
`____________________________________________________
`
`OPPOSER’S FIRST SET OF INTERROGATORIES
`
`Opposer Crytek Entertainment G-rnbH, (“Crytek” or “Opposer”), by and through its
`attorneys, hereby submits to the Applicant, iConnectUS LLC (“iConnectUS” or “App1icant”), the
`
`following interrogatories and requests that separate and full answers thereto, under oath, be made
`
`within thirty (30) days from service hereof, at the offices of Abelrnan, Frayne & Schwab, 666 Third
`
`Avenue, New York, NY 10017 in accordance with_37 C.F.R. § 2.120 and Rule 33 of the Federal
`
`Rules of Civil Procedure.
`
`INSTRUCTIONS AND DEFINITIONS
`
`A. These interrogatories seek answers as of the date herein, but shall be deemed to be
`
`continuing so that any additional information relating in any way to these interrogatories
`
`which Applicant acquire or which becomes known to Applicant up to and including the close of the
`
`testimony periods shall be furnished to Applicant promptly after such information is acquired or
`
`becomes known.
`
`
`
`B. As used herein, the term "document" is used in its customary broad sense and
`
`includes, without being limited thereto, the following items, whether printed, or recorded, or filmed,
`
`or reproduced by any other mechanical or electronic process, or written or produced by hand, and
`
`whether or not claimed to be privileged against discovery on any ground, and including all
`
`originals, masters and copies, namely: agreements, contracts and memoranda of
`
`understanding,
`
`assignments, licenses; correspondence and communications, including intra company
`
`correspondence and communications; cablegrams, e—mail messages, telex messages, radiograms
`
`and telegrams; reports, notes and memoranda; surnmaries, minutes and records of telephone
`
`conversations, meetings and conferences; including lists of persons attending meetings or
`
`conferences; summaries and recordings of personal conversations and interviews; books,
`
`manuals, publications and diaries; photographs, motion pictures; audio and video tapes and
`
`disks; reports and/or summaries of investigations; opinions and reports of experts and
`
`consultants; registrations of marks, copyrights and applications for any of them; opinions of
`
`counsel; sales records, including purchase orders, order acknowledgments and invoices; books
`
`of account; statements, bills, checks and vouchers; reports and summaries of negotiations;
`
`brochures; pamphlets, catalogs and catalog sheets; sales literature and sales promotion materials;
`
`advertisements; displays, circulars; trade letters, notices and announcements; press, publicity,
`
`trade and product releases; drafts of originals of or preliminary notes on, and marginal comments
`
`appearing on, any document; other reports and records; and any other information containing
`
`paper, writing or physical thing.
`
`C. "Person" meansan natural erson, co oration, association, firm, artnershi
`
`5
`
`or other
`
`business or legal entity.
`
`D. As used herein, "identify", or to give "identity" of, means:
`
`(i) In the case of a person, to state:
`
`
`
`(a) full name;
`
`(b) present residence address and telephone number;
`
`(0) present business address and telephone number;
`
`(cl) present position, business affiliation, and job description;
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`(e) if any of the information set forth in (a)—(d) is unknown, so state and
`
`set forth the corresponding last known such information.
`
`(ii) In the case of a corporation; to state:
`
`(a) full name;
`
`(b) place and date of incorporation or founding;
`
`(c) address and principal place of business;
`
`(d) identity of officers or other persons having knowledge of the
`
`matters with respect to which such corporation is named.
`
`(iii) In the case of any person other than a naturai person or corporation, to state:
`
`(a) full name;
`
`(b) address and principal place of business;
`
`(c) identity of officers or other persons having knowledge of the matter
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`with respect to which such person is named.
`
`(iv) In the case of a document, to state:
`
`(a) the identity of the person(s) originating and preparing it; and the
`
`sender;
`
`(b) its general type (e. g. letter, memo; e—mail, report, invoice, etc.), title,
`
`identifying number and the general nature of its subject matter;
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`(c) the identity of the addressees and distributees, if any;
`
`((1) its date of preparation;
`
`
`
`(e) its dates and manner of transmission, distribution, and publication, if any;
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`(f) the location of each copy (including title, index number and
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`location of the file in which it is kept or from which it was removed) and the identity of the
`
`present custodian or person responsible for its filing or other disposition;
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`(g) the identity of persons who can authenticate or identify it.
`
`(V) In the case of a product or ingredient, to state the catalog, stock model, or
`
`like number of designation, the trademark, name, type, grade, and other designation customarily
`
`used by the party concerned and the trade to designate such product or ingredient and to
`
`distinguish it from others made by the same or a different producer.
`
`B. As used herein, Applicant means not only each named Applicant, but also their agents,
`
`officers, employees, representatives, and attorneys, and any predecessors, subsidiaries,
`
`controlled and affiliated companies, and their agents, officers, employees, representatives and
`
`attorneys, to the fullest extent the context permits, including, but not limited to each entity identified
`
`in the Notice of Opposition, and as set forth in lnterrogatory No. 1 herein.
`
`F. To "produce" means to provide a copy or make available for inspection and copying at
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`the time and place specified above.
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`G. With respect to each document which is withheld, whether under claim of privilege or
`
`otherwise, please provide the following information:
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`(i) the date, identity and general subject matter of each such document;
`
`(ii) the grounds asserted in support of the failure to produce the document;
`
`(iii) the identity of each person (other than stenographic or clerical assistants)
`
`participating in the preparation of the document;
`
`(iv) the identity of each person to whom the contents of the document were
`
`communicated by copy, distribution, reading or substantial suinmarization;
`
`
`
`(V) a description of any document or other material transmitted with or
`
`attached to the document;
`
`(vi) the number of pages in the document;
`
`(vii) whether any business or non—legal matter is contained or discussed in the
`
`document.
`
`H. The term “concerning" means relating to, referring to, describing, evidencing or
`
`constituting.
`
`I. As used in these interrogatories, “GAMEFACE” means the mark shown in Trademark
`
`Application Serial No. 85/626,3 88 (“Applicants Mark”) owned by Applicant.
`
`I. As used in these interrogatories, Opposer's Mark is Trademark Registration No.
`
`3,976,279 for GAME FACE owned by Opposer as weli as 3,849,364 for GFACE G and 3,756,885
`
`for GFACE.
`
`REQ QUESTS FOR INTERROGATORIES
`
`INTERROGATORY N0. 1
`
`List each product and service on which Applicant uses, intends to use or has ever used
`
`Applicant’s MARK, or any variation thereof.
`
`INTERROGATORY N0. 2
`
`(a)
`
`Identify Applicant’s first use of Applicanfs MARK in interstate commerce in
`
`connection with the goods and services identified in answer to Interrogatory No. 1.
`
`(b)
`
`For each matter identified in (a) above, identify the persons having the most knowledge
`
`of such use.
`
`
`
`INTERROGATORY N0. 3
`
`(a)
`
`(1))
`
`Identify all persons who approved the selection of Applicant’s MARK.
`
`Describe the specific reasons for the selection of Appficanfis MARK.
`
`INTERROGATORY NO. 4
`
`(a)
`
`Identify all persons who have final authority for the marketing of products and services
`
`using Appiicant’s MARK.
`
`(b)
`
`Identify all persons who have final authority for the advertising of products and services
`
`using Applicant’s MARK.
`
`INTERROGATORY NO. 5
`
`Identify each purchaser and/or user of the products and services sold under Applicant’s
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`MARK.
`
`INTERROGATORY NO. 6
`
`Describe the geographic area within the United States of the past and present distribution of the
`
`goods and services sold under Applicant’s MARK.
`
`INTERROGATORY NO. 7
`
`State the sales in dollars by Applicant for goods and services rendered under App1icant’s
`
`MARK since the date of first use to date, by month.
`
`INTERROGATORY N0. 8
`
`(a)
`
`Identify the types of advertising ( such as catalogs, brochures, newspapers, magazines,
`
`the Internet) Applicant uses to advertise Applicant’s MARK.
`
`(b)
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`Identify the amount of money in dollars expended for advertising Applicant’s MARK
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`since the date of first use, by month or other relevant period.
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`
`
`INTERROGATORY NO. 9
`
`Identify all trademark searches conducted by or for Applicant with respect to Applicanfs
`MARK:
`
`(a)
`
`(b)
`
`(c)
`
`all marks searched;
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`by whom such searches were authorized;
`
`whether a written report was rendered pursuant to these searches.
`
`INTERROGATORY NO. 10
`
`Identify all proceedings (including but not limited to the Federal Courts, State Courts and the
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`Patent and Trademark Office) in which Applicant has been or is involved which refer or relate to
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`products or services to be sold in connection with AppIicant’s MARK.
`
`INTERROGATORY N0. 11
`
`(a)
`
`(b)
`
`(0)
`
`State when and how Applicant first learned of Opposer’s use of Opposer’s Mark.
`
`State when Applicant first learned ofthe Opposer.
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`Identify all documents which refer or relate to such knowledge in (a) and (b).
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`INTERROGATORY NO. 12
`
`Identify the documents in Applicant’s possession or control concerning the Opposer.
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`INTERROGATORY NO. 13
`
`(a)
`
`Has Applicant or any person acting for or on behalf of Applicant received any
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`communication, oral or in writing, from any person which suggests, implies or infers that Opposer may
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`be connected or associated with Applicant or which inquires as to whether there is or may be such a
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`connection or association?
`
`(b)
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`If so, identify each such communication, including Applicant’s response thereto.
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`
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`INTERROGATORY NO. 14
`
`(a)
`
`Is Applicant aware of any instance or occurrence in which any person was actually
`
`confused between Applicant’s MARK and Opposer or OPPOSER’S MARK, or vice versa?
`
`(b)
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`If the answer to (a), above is in the affirmative, describe each such instance or
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`occurrence and Applicant’s response thereto.
`
`(c)
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`Identify all documents which refer or relate to each such instance or occurrence of
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`actual confiision.
`
`INTERROGATORY NO. 15
`
`State whether Applicant has knowledge that third parties unrelated to Applicant or Opposer
`
`have used a trademark GAMEFACE in whole or in part.
`
`INTERROGATORY N0. 16
`
`(a) ' Has Applicant ever discontinued its use of App!icant’s MARK for any goods or
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`services for any period(s) of time?
`
`(b)
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`If so, provide the dates of such non—use, when use was resumed and provide the reasons
`
`for such non—use.
`
`INTERROGATORY N0. 17
`
`Has Applicant ever received notice that App1ica_nt’s use of Applicant’s MARK as part of a
`
`snark or in combination with any other word or words, allegedly infringed a mark used by another
`
`party? If so, for each such notice state:
`
`(a)
`
`(b)
`
`identify the person from Whom it was received;
`
`a description of the mark used by such other person and the goods or services to which
`
`that person's mark was applied.
`
`
`
`INTERROGATORY NO. 18
`
`Has Applicant ever notified any party that a mark used by such party infringed any of
`
`Applicant’s MARK. If so, for each such person state:
`
`(a)
`
`(b)
`
`identify the party who used the mark;
`
`a description of such party’s mark indicating in what respects it allegedly infringed
`
`AppIicaut’s MARK and the goods or services to which the mark was applied;
`
`(0)
`
`the result, outcome or disposition of the notice to such other party.
`
`INTERROGATORY N0. 19
`
`(a)
`
`Has Applicant or any person acting for or on its behalf obtained any opinions regarding
`
`any of the issues in this opposition proceeding?
`
`(b)
`
`If so, identify the person(s) who rendered each opinion.
`
`INTERROGATORY NO. 20
`
`Identify all trade shows that employees of the Applicant have attended.
`
`INTERROGATORY NO. 21
`
`Identify all trade publications subscribed to by the Applicant.
`
`INTERROGATORY NO. 22
`
`Identify the witnesses Applicant intends to call to testify on its behalf and identify the
`
`documents upon which Applicant intends to rely in connection with this opposition proceeding.
`
`
`
`INTERROGATORY NO. 23
`
`(a)
`
`Identify each person who participated in the preparation of Applicant’ s responses to the
`
`foregoing interrogatories and who furnished any information in response thereto.
`
`Date: March 25, 2013
`
` Subniitte ,
`C/fig/¢7—2 fi
`
`W. Branthover
`
`ABELMAN, FRAYNE & SCHWAB
`666 Third Avenue
`
`New York, New York 10017
`Tel: 212—949—9022
`
`Fax: 212 949-9190
`
`Email: nwbranthoVer@1awabe1.oom
`
`Attorneys for Opposer
`CRYTEK ENTERTAINMENT GMBH
`
`10
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that this 25th day of March, 2013, a copy of the foregoing was sent via
`
`email to the following:
`
`Mark Morrison, Esq.
`Morris and Associates
`
`93 S. Jackson Street No. 34835
`
`Seattle, WA 98104
`
`Email:
`
`rnark@mpaclassactio11.com
`
`7 J08
`
`Ned W. Branthover
`
`V\
`
`11
`
`
`
`
`
`EXHIBIT BEXHIBIT B
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`222,605
`
`In the Matter of Serial No. 85/626,388
`Filed: May 15, 2012
`
`E};2?§i'f§i};It?;§n§11;i£'£§11§L§i£f"""""""""""
`
`Opposer,
`
`Opposition No. 91207982
`
`V.
`
`i
`
`iConnectUS LLC.
`
`Applicant
`____________________________________________________
`
`OPPOSER’S FIRST REQUEST FOR PRODUCTION OF DOCUMENTS
`
`Opposer Crytek Entertainment GmbH (“Crytel<” or “Opposer”) by and through its attorneys,
`
`hereby requests that Applicant produce the following documents at the offices of Abelrnan, Frayne
`
`& Schwab, 666 Third Avenue, New York, NY 10017, for purposes of inspection and copying
`
`within thirty (30) days from service hereof, in accordance with 37 C.F.R. § 2.120 and Rule 34 of the
`
`Federal Rules of Civil Procedure.
`
`Opposer adopts, as though explicitly set forth herein, the Instructions and Definitions set
`
`forth in Opposer’s First Set of Interrogatories which are being served concurrently. If any
`
`document is withheld because of any asserted privilege, the document should be fully identified as
`
`set forth in Instruction D. (iv) of the interrogatories and the basis for the asserted privilege shall be
`
`stated.
`
`
`
`DOCUMENT RE§ QUEST NO. 1
`
`DOCUMENT REQUESTS
`
`All documents and things requested to be identified by "Opposer’s Inteirogatories to
`
`Applicant" served concurrently herewith.
`
`DOCUNLENT RES QUEST NO. 2
`
`All documents showing, concerning, evidencing, relating or referring to Applicant's selection,
`
`design and adoption, of GAMEFACE (hereinafter as “App1icant’s MARK”) including, without
`
`limitation, any documentation ofmeetings or discussions held concerning the selection, design and
`
`adoption of Applicant’s MARK, any documentation relating to the reasons for selecting Applicant’s
`
`MARK, and any docurnentation concerning the consideration and rejection of using another mark.
`
`DOCUMENT RE§ QUEST NO. 3
`
`A sample, copy, photograph, illustration, sketch or other depiction of each different logotype,
`
`design, font of type or style in which Applicant’s MARK or any variation thereof has been or now is
`
`being used by Applicant.
`
`DOCUNIENT REQUEST N0. 4
`
`Provide documents sufficient to show the names, titles and addresses of each and every person
`
`who participated in the Applicant's selection, design and adoption ofApplicant’s MARK, inciuding,
`
`specifically, the name(s) of the person and persons who first suggested that Applicant adopt and use
`
`Applicant’s MARK for Applicants goods.
`
`DOCUMENT REf QUEST NO. 5
`
`All documents showing, concerning, evidencing, relating or referring to any searches,
`
`investigations or any other inquiries, whether formal or informal, conducted by Applicant relating to
`
`
`
`Applicant’s MARK was available for use with respect to any mark, trade names, corporate names, or
`
`other users by others.
`
`DOCUMENT REQ QUEST N0. 6
`
`All documents showing, concerning, evidencing, relating or referring to the offering of
`
`Applicants goods, including, without limitation, documentation identifying every place of business
`
`where Applicants goods are (or will be) provided or rendered and the dates for same, documentation of
`
`the total volume of sales in units and the equivalent dollar value, and any documents describing the
`
`process of providing or rendering such goods.
`
`DOCUMENT REQUEST NO. 7
`
`All documents and things ever used by Applicant or used on behalf of Applicant to advertise or
`
`promote the goods which bear Applicant’s MARK including, Without limitation, flyers, periodicals,
`
`newspapers, telephone directory listings, Video tapes, television scripts, audio discs, displays,
`
`promotional brochures, catalogs and outdoor window signs. If advertising activities include periodical
`
`magazines, produce a copy of each publication.
`
`DOCUMENT REQUEST NO. 8
`
`For the period Applicant seeks to rely upon in support of its Opposition, to date, all documents
`
`showing, concerning, evidencing, relating or referring to the organization and implementation of the
`
`Applicant's advertising program, including without limitation, documents identifying: (a) the date, (13)
`
`the place, (0) the monetary amount expended, (d) the class of customers to Whom the advertising or
`
`promotional materials were (or are) directed, (e) the number of copies of such materials and (f) the
`
`names and addresses of each person, advertising agency, public relations firm or any other business
`
`entity hired or retained in connection with such advertisements.
`
`
`
`DOCUMENT REQ QUEST NO. 9
`
`All documents including invoices, showing, concerning, evidencing, relating or referring to
`Applicant's first use ofAppIicant’s MARK on goods in the United States including without limitation
`
`information on the geographical localities of such first use and any third persons involved.
`
`DOCUMENT RES QUEST NO. 10
`
`All documents including invoices, showing, concerning, evidencing, relating or referring to
`Applicant's first use of Applicant’s MARK on goods in interstate commerce, the circumstances under
`
`which each such first use occurred, the geographical localities of such first use and any third persons
`involved.
`
`DOCUMENT REQ QUEST NO. 11
`
`Documents concerning any principal agents, distributors and/or retailers ofApplicants goods
`from the date of first use to the present.
`
`DOCUMENT RE§ QUEST NO. 12
`
`All documents showing, concerning, evidencing, relating, or referring to Applicant's
`
`permission to any other company, agent or other person to use each or any of Applicant’s MARK,
`including, without limitation all documentation identifying: (a) the name of such company, agent or
`
`person; (b) the date of such use; and (c) the goods used by such company, agent or person and any such
`documents which refer to any other company, agent or other person giving Applicant permission to use
`
`Applicant’s MARK.
`
`DOCUMENT REQ QUEST NO. 13
`
`All documents showing, concerning, evidencing, relating, or referring to any assignment or
`
`license of Applicant's MARK, including, Without limitation, all documentation identifying: (a) the
`
`date of such assignment or license; (13) the name and address of the assignee and the assignor (or
`
`
`
`licensee and licensor); (c) any recordal of such assignment or license in the United States Patent and
`
`Trademark Office or other public place; and the terms and conditions of the agreement.
`
`DOCUIVLENT RE! ]UEST N0. 14
`
`A sample, copy, photograph, illustration, sketch or other depiction of each label, tag, container,
`stencil, package, price list and display which are or have ever been used bearing the Applicant's
`MARK in connection with any goods or goods.
`
`DOCUMENT REQUEST NO. 15
`
`All documents showing, concerning, evidencing, relating, or referring to Applicant's
`
`knowledge of any third party's past or current use or registration ofAPPLICANTS MARK or a mark
`
`or use which Applicant considers an alleged imitation of any ofAPPLICANTS MARK on any goods
`or goods.
`
`DOCUMENT REQUEST NO. 16
`
`All documents showing, concerning, evidencing, relating, or referring to any infringement
`
`action or other proceeding in the United States Patent and Trademark Office (or any court) which has
`
`ever been brought by or against the Applicant for the use of APPLICANTS MARK or what it has
`
`asserted to be a colorable imitation thereof.
`
`DOCUMENT RE! QUEST NO. 17
`
`All documents showing, concerning, evidencing, relating, or referring to any discussions,
`
`negotiations or settlements entered into by Applicant with any other party in regard to the adoption,
`
`use, or registration of APPLICANTS MARK or any other mark which Applicant has asserted to be a
`
`colorable imitation thereof.
`
`
`
`DOCUMENT RE! QUEST N0. 18
`
`All documents showing, concerning, evidencing, relating, or referring to any instances of
`
`confusion in which each or any of APPLICANT’S MARK was mistaken for OPPOSER’S MARK,
`
`or instances in which Applicant was mistaken for Applicant including, without limitation, all
`
`documentation identifying: (a) the place of such instance of confusion; (b) the date of such instance of
`
`confusion; (C) the identity of all persons involved; (d) how the instance of confusion came to the
`
`attention of Applicant; and (e) the nature of such confusion.
`
`DOCUMENT REQ QUEST NO. 19
`
`' Provide copies ofall registrations and pending or lapsed applications, federal, state, and foreign
`owned for the benefit or in the name of or filed on behalf of Applicant and all documents related
`
`thereto.
`
`DOCUNIENT RE! QUEST N0. 20
`
`Documents sufficient to show all the goods which have been sold, advertised, and/or
`
`distributed under APPLICANTS MARK and/or predecessors in interest ofthe Applicant and/or
`
`licensees of the Applicant including, where avaitable specimens of such uses.
`
`DOCUMENTRE UEST N0. 21
`
`
`
`
`
`All documents showing, concerning, evidencing, relating, or referring to any market research
`
`conducted by Applicant on its goods, including, without limitation, all documentation identifying: (a)
`
`the location and date of such research; (b) the persons who conducted the research; (c) the persons to
`
`Whom the results where reported and (d) the results of the research.
`
`
`
`DOCUMENT REQ QUEST NO. 22
`
`(a)
`
`All documents showing, concerning, evidencing, relating, or referring to any and all
`
`statements and/or opinions of any person, other than any attorney rendering legal advice to applicant,
`regarding any of the issues involved in this opposition proceeding.
`
`(b)
`
`All documents showing, concerning, evidencing, relating, or referring to the statements
`
`and/or opinions referred to in (a) above.
`
`DOCUMENT RES QUEST NO. 23
`
`A specimen of each trade publication subscribed to or received by the Applicant.
`
`DOCUMENT REQ QUEST NO. 24
`
`All documents that uses the Opposer’s GAME FACE trademark including any advertisements or
`
`collateral materials.
`
`DOCUMENT RES QUEST NO. 25
`
`All documents showing, concerning, evidencing, relating, or referring to any and all statements
`
`and/or opinions of any expert obtained by applicant or any person acting for or on behalf ofAppiicant
`regarding any of the issues involved in this opposition proceeding.
`
`DOCUMENT REE QUEST NO. 26
`
`Copies of all agreements, contracts or other arrangements between Applicant and any third
`
`party which refer or relate to or comment on Applicant's right to use APPLICANTS MARK.
`
`DOCUMENT REE QUEST NO. 27
`
`With respect to each document or thing which is withheld from production, whether under a
`
`claim ofprivilege or otherwise, and which is otherwise responsive to any ofthese production requests,
`provide: (a) the date, identity, and general subject matter of such document or thing; (b) the grounds
`
`
`
`asserted in support ofthe failure to produce such document or thing; (c) the identity ofeach person
`
`(other than stenographic or clerical assistants) participating in the preparation of such document or
`
`thing; (cl) the identity of each person to whom the contents of such document or thing were
`
`communicated by copy, distribution, reading or substantial surnrnarization; (e) a description of any
`document or thing or other material transmitted with or attached to such document or thing; (i) the
`
`number ofpages m such document; (g) the particular request to produce to which such document or
`
`thing is responsive; and (h) Whether any business or non~1egal matter is contained or discussed in such
`
`document or thing.
`
`DOCUMENT REQ QUEST NO. 28
`
`All documents, other than those produced in response to any of the foregoing requests, upon which
`
`Applicant intends to rely in connection with this Opposition proceeding.
`
`DOCUMENT REQ QUEST N0. 29
`
`All documents, other than those produced in response to any ofthe foregoing requests, which
`
`were examined, reviewed or inspected by Applicant or any person acting for or on behalf of
`
`Applicant’s in connection with the preparation of Applicant's responses to OPPOSERS
`
`INTERROGATORIES TO APPLICANT.
`
`
`
`DOCUNIENT REQUEST NO. 30
`
`With respect to each document or thing otherwise responsive to any request to produce which
`
`has been lost or destroyed since its preparation or receipt, identify the document or thing,
`
`state the request to produce to which it would be responsive, and give the full particulars or
`
`circumstances whereby the document or thing was lost or destroyed.
`
`Date: March 25, 2013
`
`Submitted,
`
`
`‘ 27/%/\
` a%i-''
`
`ABELMAN, FRAYNE & SCHWAB
`666 Third Avenue
`
`New York, New York 10017
`Tel: 212-949-9022
`
`Fax: 212 949-9190
`
`Email: nwhranthoVer@1awabe1.com
`
`Attorneys for Opposer
`CRYTEK ENTERTAINMENT GMBH
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that this 25th day of March, 2013, a copy of the foregoing was sent via
`
`email to the foliowing:
`
`Mark Morrison,
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