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
`ESTTA597107
`ESTTA Tracking number:
`04/08/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214205
`Plaintiff
`Crambo, S.A.
`Stewart J. Bellus
`COLLARD AND ROE
`1077 NORTHERN BLVD
`ROSLYN, NY 11576
`UNITED STATES
`sbellus@collardroe.com
`Motion to Extend
`Stewart J Bellus
`sbellus@collardroe.com
`/sjb/
`04/08/2014
`Opposer's Motion to Extend Time To Respond to Discovery (with
`attachments).pdf(969648 bytes )
`interrogatories.pdf(380204 bytes )
`document request.pdf(232622 bytes )
`request for admissions.pdf(224909 bytes )
`discovery cover letter- March 24, 2014.pdf(27914 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`.....................................................................--X
`
`Opposition No.
`91214205
`
`) J
`
`) ) )
`
`)
`
`) )
`
`) )
`
`) )
`
`CRAMBO, S.A.
`
`Opposer,
`
`V.
`
`PANASONIC CORPORATION
`
`Applicant.
`
`..................................................................... --X
`
`0PPOSER”S MOTION FOR 30-DAY EXTENSION OF TIME TO RESPOND TO
`
`APPLICANT’S DISCOVERY REQUESTS
`
`Opposer hereby requests tl1at this Board issue an order extending the time by which it
`must respond to Applicant’s Discovery by 30 Days. Opposer states the following in support of its
`Motion:
`
`1.
`
`On March 24, 2014, counsel for Applicant served the following Discovery
`Requests on Opposer by mail:
`
`A.
`
`B.
`
`C.
`
`APPLICANT AND COUNTERCLAIM DEFENDANT’S FIRST SET OF
`INTERROGATORIES TO OPPOSER
`
`APPLICANT AND COUNTERCLAIM’S FIRST REQUESTS FOR
`PRODUCTION OF DOCUMENTS AND THINGS
`
`APPLICANT AND COUNTERCLAIM PLAlNTIFF’S FIRST REQUEST
`FOR ADMISSIONS.
`
`See all three sets of Discovery attached to this Motion for Extension of Time.
`
`Although the certificate of service was dated March 24, 2014, Opposer did not
`receive these requests until March 28, 2014. See attached cover letter from
`Applicant’s counsel, Harness Dickey addressed to undersigned counsel.
`
`Applicant’s Interrogatories are fourteen (14) pages long, and include thirty (30)
`numbered Interro gatories with many of the interrogatories containing multiple
`sub-parts.
`
`Applicant’s Requests For Production Of Documents is eight (8) pages long and
`contains fifty (50) paragraphs of requests.
`
`2.
`
`3.
`
`4.
`
`

`
`5.
`
`6.
`
`7.
`
`8..
`
`9.
`
`Applicant’s Request For Admissions is eight (8) pages long and contains one
`hundred thirteen (113) paragraphs of Requests.
`
`Under any circumstances, responding to all this discovery within the 30-day limit
`provided by the Rules would it be daunting. However, Opposer’s situation is even
`more difficult because undersigned counsel works in the typical way through a
`foreign (Spanish) associate. Moreover, Opposer itself is located in Spain. Neither
`associate nor client is familiar with US. opposition practice, so this extra step in
`consultation between U.S. counsel and client is more difficult than usual.
`Moreover, there is a language barrier, as Opposer is not completely fluent in
`English. This combination of lengthy discovery requests, the need to work with a
`foreign associate and foreign client unfamiliar with US practice, and the language
`barrier, would make it nearly impossible for any party to respond to the volume of
`discovery served by Applicant within thirty days.
`
`Equally important is that Applicant would suffer absolutely no prejudice if this
`response period is extended. Discovery opened on March 6, 2014, and does not
`close until September 2, 2014, almost five months from now. No previous
`extensions have been sought or obtained. This slight delay will not have any
`negative impact on Applicant.
`
`Pursuant to Rules of Practice, undersigned counsel made a good-faith effort to
`resolve this issue by communicating with Applicant’s counsel several times to
`seek consent for a 30-day extension of time. Applicant’s counsel clearly indicated
`that Applicant would not consent to any extension. As the parties were otherwise
`unable to resolve their different positions, this Motion is necessary.
`
`The Certificate of Service on Applicant’s Discovery was March 24, 2014. Adding
`three days for mailing, the deadline for Opposer’s Responses would be April 27,
`2014. Opposer now is requesting a 30-day extension until May 27, 2014.
`
`Based on the above, Opposer respectfully requests that this Board grant a 30-Day
`Extension of Time, with the new deadline being May 27, 2014
`
`Crambo, S.A.
`
`
`
`Sara M. Dorchak
`
`COLLARD & ROE, P.C.
`1077 Northern Boulevard
`
`Roslyn, New York 11576
`Telephone: (516) 365-9802
`E—mail: sbellus@collardroe.com
`sdorchakgagcollardroecom
`
`Attorneys for Opposer
`CRAMBO, S.A.
`
`Dated: April 7, 2014
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the forgoing
`“OPPOSER”S MOTION FOR 30-DAY EXTENSION OF TIME TO RESPOND TO
`APPLICANT’S DISCOVERY REQUESTS” has this 7th day of April 2014 been sent by prepaid
`First Class Mail to:
`
`Gregory A. Stobbs
`Geoffrey D. Aurini
`Harness, Dickey & Pierce, P.L.C.
`5445 Corporate Dr Ste 200
`Troy, Michigan 48098-2683
`
`
`
`T:\users\sbel]us\ECONAV\ECONAV - Motion for Extension of '['ime.wpd
`
`

`
`Attorney Docket No. 9432400001
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91214205
`Serial No. 85/699,3 85
`
`)
`
`) )
`
`)
`
`Crambo, SA.
`Opposer and Counterclaim Defendant,
`
`v.
`
`,
`
`,.
`
`. _.
`
`_,
`
`W_w__gk_k#”____W_# HMW___,_‘_
`Panasonic Corporation,
`Applicant and Counterclaim Plaintiff.
`
`,,_ _M_,_.,,, U__ W),_________,_,_,__Ma1flg;,,,EC,,ONAYI, _ _,
`)
`
`) )
`
`APPLICANT AND COUNTERCLAIM DEFENDANT’S
`
`FIRST SET OF INTERROGATORIES TO OPPOSER
`
`Pursuant to Rule 2.120 of the Trademark Rules of Practice and Rules 33 and 34 of the
`
`Federal Rules of.C_ivil Procedure, Applicant.,and._.Counte1'claim.,Iilain.ti.fi1.,.Ra.nasoni.c .C,orp.oration
`
`,
`
`(hereinafter “Applicant”), serves its First Set of Interrogatories upon Opposer and Counterclaim
`
`Defendant, Crainbo, S.A., (hereinafter “Opposer”), to be answered by Opposer under oath, said
`
`answers to be served upon Applicant at the law offices of Harness, Dickey & Pierce, P.L.C.,
`
`5445 Corporate Drive, Troy, Michigan within thirty days of service in accordance with the
`
`Federal Rules of Civil Procedure and the Trademark Rules of Practice. The interrogatories shall
`
`be deemed to be continuing and Opposer shall be obligated to change, supplement, and amend its
`
`answers thereto as prescribed by Rule 26(e) of the Federal Rules of Civil Procedure.
`
`DEFINITIONS AND INSTRUCTIONS
`
`A.
`
`As used herein, “Opposer”, “you”, and “your(s)” refer to Opposer, Crambo, S.A.,
`
`its partners, employees, agents, representatives (including attorneys), predecessors and all other
`
`persons or entities acting or purporting to act, directly or indirectly, on its behalf as the context
`
`hereof may require.
`
`iéiéiéiéitifiiifi. l
`1834822335. ‘E
`
`

`
`B.
`
`As used herein, “Applicant” means Applicant, Panasonic Corporation, and its
`
`agents, representatives, and all other persons acting or purporting to act on the behalf of
`
`Applicant, as the context hereof may require.
`
`C.
`
`“Persons” includes any firm, corporation, joint venture, association, organization
`
`or entity unless the context clearly indicates that only an individual person is referred to.
`
`D.
`
`i re ‘3i'Eiéfirif§E’* él1§'é'isE5h'i§viic$i ié aiiindiiriéitiiii fi{e?c{i1§ic3 Stéié di’¢:;‘15¢;‘];s;;s;;s%t;+:>m1i 'lriEi1ilel,‘
`
`present or last known business address and telephone number, present or last known home
`
`address and telephone number, occupation or job title, employer both presently or last known
`
`and at the time to which the request relates, and such other information as should be sufficient to
`
`notice the deposition of such person to serve such person with a subpoena.
`
`E.
`
`T
`
`'==i5¢c$ufiq2§rii*="';§r"?Eioéiimei1ts*=° means anyllmmedniiini the 'possessioii,'cL1sto'dy, or
`
`control of Opposer upon which intelligence or
`
`information is
`
`recorded or
`
`from which
`
`intelligence or information can be recorded, including by way of illustration and not by way of
`
`limitation the following items, whether printed or recorded or reproduced by any process or
`
`written or produced by hand and which are in the possession, custody or control of Opposer,
`
`namely:
`
`letters,
`
`reports,
`
`agreements,
`
`communications,
`
`including
`
`internal
`
`bompany
`
`communications; original or preliminary notes; correspondence;
`
`telegrams; memoranda;
`
`summaries of records of telephone conversations; routing (or buck) slips or memoranda; audibly
`
`reproducible recordings on tape, disc, or the like; summaries of records of personal interviews
`
`and conversations; diaries;
`
`forecast, statistical statements, graphs,
`
`laboratory and research
`
`reports; notebooks oi” any character, engineering calculations; force diagrams or calculations;
`
`charts; plans; artists’ drawings; engineering drawings, including preliminary, revised or amended
`
`specifications; positive and negative prints of pictures, motion or still, including excised frames
`
`l El-‘$822.35. i
`
`-2-
`
`

`
`of motion pictures; minutes of records of conferences and meetings,
`
`including meetings of
`
`directors, executive committees and financial committees; list of person attending meetings or
`
`conferences; expressions or statements of policy; reports or summaries of interviews; re_ports or
`
`summaries of investigations opinions, or reports of consultants; opinions of counsel; records of
`
`summaries of negotiations; contracts and agreements; brochures; pamphlets; advertisements;
`
`circulars, trade letters; press releases, drafts of any documents; and revision of drafts of any
`
`documents.
`
`For purposes of these interrogatories, “document” shall also mean any of the
`
`foregoing not in Opposer’s custody or control the existence of which is known to Opposer. For
`
`purposes of these interrogatories, any such document bearing on any sheet or side thereof any
`
`marks, such as initials, stamped indicia, comment or notation, or any character and not part of the
`
`T original textorflpliotographic reproduction thereof,isito beiconsidlerediand identified as a [separated
`
`document.
`
`F.
`
`To “identify” a document requires identification sufficient for the characterization
`
`thereof in a request for the production of the document under Rule 34 of the Federal Rules of
`
`Civil Procedure, and should include by way of illustration but without limitations the following
`
`information:
`
`a)
`
`the general nature of the document or object, i.e., whether it
`
`is a letter, memorandum, a report, a drawing or a chart, a
`
`pamphlet, or a model, etc.;
`
`b)
`
`o)
`
`the general subject matter of the document or object;
`
`the name and business address of the original author or
`
`craftsman of a document, or who built or created a tangible
`
`object, of any person who has edited, corrected, revised, or
`
`£8-132235.?
`
`-3-
`
`

`
`amended, or who has entered in any initials or comment or
`
`notation
`
`on
`
`such
`
`document,
`
`or
`
`has modified
`
`or
`
`reconstructed such an object;
`
`d)
`
`the date thereof, including any date of any such editing,
`
`correcting,
`
`revising,
`
`amending,
`
`modifying,
`
`or
`
`i reconstrunctinglg "if. can date. is} ino£}ivaii1;ii5'ié',i pram“ provide.
`
`information as to how the date will be determined or
`
`authenticated;
`
`e)
`
`any numerical designation appearing thereon, such as a
`
`drawing number, sample number or file reference and, if a
`
`sample, the approximate amount thereotg; and 1
`
`Z
`
`Z 1
`
`f)
`
`if the document or object is not in Opposer°s possession or
`
`control, the identity, as defined herein below, of the person
`
`or persons who received the document or object, or copies
`
`thereof, or having custody or control of said document or
`
`object.
`
`G.
`
`Whenever the identification for documents or objects is called for,
`
`in lieu of
`
`identification, and as provided in paragraph (F) above, Opposer, at the time it serves its answers
`
`to these interrogatories, may produce for inspection by Applicant the original of such document
`
`or object, or a clearly legible copy of such document, suitably labeled, an.d identified (by
`
`paragraph and subparagraph) as to which of these interrogatories each such document or object is
`
`responsive.
`
`l§}iA'l»§§22..35.l
`
`

`
`H.
`
`As used. herein, “relating to” means concerning,
`
`referring to, describing,
`
`evidencing, constituting, or otherwise relating in any Way to the subject matter with respect to
`
`which the term is used.
`
`I.
`
`As u.sed. herein, “Applicant’s Mark” or “the Application” refers to pending United
`
`States Trademark Application Serial No. 85/699385 for the mark ECONAVI together with
`App91i¢;gi¥gico;g;r;§;;i 1a.;.sa; £1; i;i;;};;g.;1;ii§:ii&$9:\i,;\%}:.
`if
`if if A
`
`A 9
`
`J.
`
`As used herein, “Opposer’s Mark” refers to Opposer’s United States Trademark
`
`Registration No. 3639928 for the mark ECONAV.
`
`INTERROGATORY NO. 1.
`
`Please state the nature of Opposer’s business.
`
`1NTERRoaiToRy No. 2.
`
`A. Describe in detail
`
`the specific reason(s) a.nd methodology for
`
`the selection of
`
`Opposer’s Mark by Opposer.
`
`B. On what date(s) was Opposer’s Mark selected?
`
`C; For every year beginning with the year Opposer allegedly first began using Opposer’s
`
`Mark, identify all uses of Opposer’s Mark, including, but not limited to, all products,
`
`product packaging,
`
`invoices,
`
`services, brochures and advertisements used in
`
`conjunction with Opposer’s Mark.
`
`D.
`
`Identify all persons who participated in, selected, approved of, or gave instructions
`
`for the design, selection, or adoption of such products, product packaging, invoices,
`
`services, brochures and advertisements used in conjunction with Opposer’s Mark.
`
`£8~<l8Z23.§.i
`
`

`
`INTERROGATORY NO. 3.
`
`With regard to Opposer’s Mark, identify the persons employed by Opposer, including
`
`present 0r past employees, agents and consultants, who are most knowledgeable about and/or
`
`responsible for Opposer’s:
`
`A
`
`. Sales;
`
`.. Advertis_i—r1g_.a1id_sa1e_spromotion;
`
`B
`
`C.
`
`Adoption and use of trademarks;
`
`Licensing of trademarks;
`
`Assignment of trademarks;
`
`Past and current trademark controversies;
`
`G.
`
`Preparation, filing, and registration of trademark applications;
`
`H
`
`I.
`
`. Development of new goods and services; and
`
`Development of its web site(s).
`
`INTERROGATORY NO. 4.
`
`Identify all persons who submitted reports or recoinrnendations concerning the design or
`
`selection of Opposer’s Mark.
`
`INTERROGATORY NO. 5.
`
`A.
`
`Did Opposer or its agents or attorneys consider the likelihood of confusion of
`
`Opposer’s Mark with any existing registration(s) or pending application(s)‘?
`
`If so, identify each person who participated in such consideration.
`
`Did Opposer or its agents or attorneys consider the lack of inherent distinctiveness of
`
`Opposer’s Mark‘?
`
`If so, identify each person who participated in such consideration.
`
`l%§5i83I1.3.’$.i
`
`-5-
`
`

`
`G. Was Opposer’s Mark refused registration in any jurisdiction based on prior rights or a
`
`lack of inherent distinctiveness? If so, identify the jurisdiction and the grounds for
`
`refusal.
`
`H. Can Opposer think of any other abbreviations for the word “eco~fi'iend1y” other than
`
`“ECO”? If so, identify all such abbreviations.
`
`I. Can Opposer
`
`think of any other abbreviations for navigation feature of GPS
`
`navigation devices other than “NAV”? If so, identify all such abbreviations.
`
`J.
`
`Is Opposer aware of the case of “ECOROUTE" (standard character mark) trademark
`
`application of serial No.7"/823859 for the goods “computer software for processing
`
`and transmitting travel directions” against which two oppositions were filed based on
`
`the lack of inherent distinctiveness‘?
`
`K.
`
`Is Opposer aware that as a result of such oppositions, the applicant had abandoned its
`
`“ECOROUTE” application of serial No.77823859‘?
`
`L.
`
`Is Opposer aware that
`
`in the registration of “ECOROUTE (+ leaf design)” of
`
`registration. No. 4326239 for the goods “computer software for processing and
`
`transmitting travel directions”, the word “ECOROUTE” is disclaiined?
`
`INTERROGATORY NO. 6.
`
`A. Identify if Opposer’s Mark has ever been used in commerce or in interstate commerce
`
`in relation to the designated goods of the Opposer’s registration, namely, GPS
`
`navigation devices; software programs for use with browsers,
`
`interactive driving
`
`guides, maps, mobile phones and with telecommunication devices.
`
`i}§~<l§i?,2,'%.'3.§
`
`

`
`B. If so, identify each goods and examples of use in connection with which Opposer’s
`
`Mark was used in relation to the designated goods of the Opposer’s registration,
`
`namely, GPS navigation devices;
`
`software programs
`
`for use with browsers,
`
`interactive driving guides, maps, mobile phones and with telecommunication devices.
`
`Identify each date Opposer’s goods were first and latest shipped un_der Opposer’s
`
`Mark for each goods in relation to the designated goods of the Opposer’s registration,
`
`namely, GPS navigation devices;
`
`software programs
`
`for use with browsers,
`
`interactive driving guides, maps, mobile phones and with telecommunication devices.
`
`State where the goods offered under Opposer’s Mark are used. for each goods in
`
`relation to the designated goods of the Opposer’s registration, namely, GPS
`
`navigation devices; software programs for use with browsers,
`
`interactive driving
`
`guides, maps, mobile phones and with telecommunication devices.
`
`State the each number of units sold, each turnover and each gross profit for each year
`
`since the first shipment until the latest shipment for each goods in relation to the
`
`designated goods of the Opposer’s registration, namely, GPS navigation devices;
`
`software programs for use with browsers, interactive driving guides, maps, mobile
`
`phones and with telecommunication devices.
`
`Identify the customers for Opposer’s goods for each goods in relation to the
`
`designated goods of the Opposer’s registration, namely, GPS navigation devices;
`
`software programs for use with browsers, interactive driving guides, maps, mobile
`
`phones and with telecommunication devices.
`
`it§~<i822,'3§.l
`
`

`
`INTERROGATORY NO. 7.
`
`A. State whether packagi.ng bearing Opposer’s Mark is in use by Opposer.
`
`B. If yes, state where such packaging containing Opposer’s Mark is used.
`
`C. State when it was first used.
`
`D. State the number of units sold using the current packaging bearing Opposer’s Mark.
`
`E. State the gross profit on each item bearing Opposer’s Mark sold in the United States.
`
`INTERROGATORY NO. 8.
`
`Identify all documents, including packaging, which describe and/or illustrate the goods
`
`sold or to be sold using Opposer’s Mark.
`
`INTERROGATORY NO. 9.
`
`To the extent not answered in the other interrogatories herein, if Opposer has any plans to
`
`begin use or expand the present use of Opposer’s Mark to other products or services, or to other
`
`geographical areas outside the United States describe such plans in detail and identify the
`
`products, geographical areas, and channels of trade.
`
`INTERROGATORY NO. 10.
`
`If Opposer’s Mark has ever been licensed or negotiations to license or otherwise grant
`
`rights to third parties to use Opposer’s Mark have ever been conducted, describe such
`
`negotiations in detail and identify the proposed licensed product(s), names of such third parties,
`
`names of sections and persons in charge of such third parties,
`
`the relevant geographical
`
`territories, manner of trademark use with the licensed product(s) the date negotiation were lTl1‘Sl
`
`and latest held, channels of trade in which Opposer’s Mark would travel the proposed license
`
`fees, and license draft agreements.
`
`lit-iE%i22..’>;‘.i.l
`
`

`
`INTERROGATORY NO. 11.
`
`Has Opposer ever notified a third party that the third parties’ mark infringed Opposer’s
`
`Mark?
`
`INTERROGATORY NO. 12.
`
`Has Opposer ever received a request from any person or entity to abandon or change
`
`Opp0ser’s Mark?
`
`INTERROGATORY NO. 13.
`
`A.
`
`Does Opposer know of any instance when a person or entity has been confused,
`
`mistaken or deceived as to whether goods offered or advertised under Opp0ser’s Mark were
`
`those of Applicant or any other party in relation to the designated goods of the Opposer’s
`
`registration, namely, GPS navigation devices; software programs for use with browsers,
`
`interactive driving guides, maps, mobile phones and with telecommunication devices‘?
`
`B.
`
`If so, identify the details of each such cases including the subject items, a person
`
`or entity, and the way confusion occurred in relation to the designated goods of the Opposer’s
`
`registration, namely, GPS navigation devices; software programs for use with browsers,
`
`interactive driving guides, maps, mobile phones and with telecommunication devices.
`
`INTERROGATORY N0. 14.
`
`Identify the class or type of customers or purchasers of the goods sold by Opposer
`
`bearing Opposer’s Mark.
`
`INTERROGATORY NO. 15.
`
`Identify the channels of commerce in which Opposer sells its goods bearing Opp0ser’s
`
`Mark.
`
`§$§ii$§2‘.2[~‘."§.3
`
`

`
`INTERROGATORY NO. 16.
`
`Identify those persons whom Opposer presently intends to call as a witness for oral
`
`testimony with respect to this action.
`
`INTERROGATORY NO. 17.
`
`If Opposer has employed an expert to act on its behalf in any matter pertaining to this
`
`action, state the name, address, and produce a copy of his/her curriculum vitae.
`
`INTERROGATORY N0. 18.
`
`Has Opposer, or anyone on Opposer’s behalf, conducted any survey or public opinion
`
`poll concerning any matter relating to Opposer’s Mark or this Opposition proceeding?
`
`INTERROGATORY NO. 19.
`
`Identify the geographical areas and channels of trade in which Opposer’s goods and/or
`
`services using Opposer’s Mark have been sold or distributed or are proposed to be sold or
`
`distributed.
`
`INTERROGATORY NO. 20.
`
`State in detail the basis upon which Opposer believes that Applicant’s Mark being used
`
`for its designated goods, namely, “feature of a television set, namely, a setting or mode of a
`
`television wherein power
`
`is conserved thereby allowing the television to operate more
`
`efficiently”, will cause confusion or mistake or deception among consumers with the goods sold
`
`in connection with Opposer’s Mark with assumed concrete examples in relation to the designated
`
`goods of the Opposer’s registration, namely, GPS navigation devices; software programs for use
`
`with browsers, interactive driving guides, maps, mobile phones and with telecommunication
`
`devices.
`
`'13‘-E82.2.I§§5.i
`
`-11-
`
`

`
`INTERROGATORY NO. 21.
`
`State in detail the basis upon which Opposer believes that Applicant’s Mark being used
`
`for its designated goods, namely, “feature of a television set, namely, a setting or mode of a
`
`television wherein power is conserved thereby allowing the television to operate more
`
`efficiently”, creates a likelihood of association with Opposer’s Mark with assumed concrete
`
`exariiplesin 1-éiaiiéinne the designated goods of the Opposer’s registration, namely, GPS
`
`navigation devices; software programs for use with "browsers, interactive driving guides, maps,
`
`mobile phones and with telecommunication devices.
`
`INTERROGATORY NO. 22.
`
`State in detail the basis upon which Opposer believes that Applicant’s Mark being used
`
`for its designated good.s, namely, “feature of a television set, namely, a setting or mode of a
`
`television wherein power
`
`is conserved thereby allowing the television to operate more
`
`efficieiitly”, will impair the distinctiveness of Opposer’s mark with assumed concrete examples
`
`in relation to the designated goods of the Opposer’s registration, namely, GPS navigation
`
`devices; software programs for use with browsers,
`
`interactive driving guides, maps, mobile
`
`phones and with telecommunication devices.
`
`INTERROGATORY NO. 23.
`
`State in detail the basis upon which Opposer believes that Applicant’s Mark being used
`
`for its designated goods, namely, “feature of a television set, namely, a setting or mode of a
`
`television wherein power
`
`is conserved thereby allowing the television to operate more
`
`efficiently”, will dilute Opposer’s Mark with assumed concrete examples in relation to the
`
`designated goods of the Opposer’s registration, namely, GPS navigation devices; software
`
`£ §.<~.l?%?.2.'3.$. l
`
`-12-
`
`

`
`programs for use with browsers,
`
`interactive driving guides, maps, mobile phones and with
`
`telecommunication devices.
`
`INTERROGATORY NO. 24.
`
`State in detail the basis upon which Opposer believes that Opposer’s Mark is famous and
`
`distinctive throughout the United States.
`
`INTERROGATORY NO. 25.
`
`State in detail the basis upon which Opposer believes that Opposer’s Mark is widely
`
`recognized by consumers as a designation of source for goods advertised and sold under
`
`Opposer’s Mark.
`
`INTERROGATORY NO. 26.
`
`State in detail the basis upon which Opposer believes that Opposer’s Mark is widely
`
`recognized by those in the trade as a designation of source for goods advertised and sold under
`
`Opposer’s Mark.
`
`INTERROGATORY NO. 27.
`
`State the address of each location, including physical addresses and Internet addresses, at
`
`which Opposer maintains a place of business for
`
`the manufacture,
`
`sale, distribution, or
`
`promotion of Opposer’s products, and identify those officers and managerial employees, of
`
`Opposer, responsible for such manufacture, sale, distribution, or promotion.
`
`INTERROGATORY NO. 28.
`
`Identify (by name, date, and location) every trade show or fair where Opposer has
`
`promoted or plans to promote its products and/or services using Opposer’s Mark.
`
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`
`-13-
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`

`
`INTERROGATORY NO. 29.
`
`Identify all websites or retail locations advertising, selling or promoting goods using
`
`Opposer’s Mark.
`
`INTERROGATORY NO. 30.
`
`Identify all websites or retail locations in which Opposer intends to advertise, sell or
`
`promote goods using Opposer’s Mark.
`
`Respectfully submitted,
`
` Date: March 24, 2014
` Stobbs, Esq.
`
`. Aurini, Esq.
`'
`Harness, Dickey & Pierce, P.L.C.
`5445 Corporate Drive, Suite 200
`Troy, Michigan 48098
`(248) 641-1256
`
`and Counterclaiin
`for Applicant
`Attorneys
`Plaiiltiff, Panasonic Corporation
`
`I
`
`€€—‘é=1.-=-i-3153*).
`
`i
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Attorney Docket No. 9432-400001
`
`Crambo, S.A.
`Opposer and Counterclaim Defendant,
`
`V.
`
`Panasonic Corporation,
`Applicant and Counterclairn Plaintiff.
`
`\-..-/\._/\_/\_/\_/\_/\.J\.J
`
`Opposition No. 91214205
`Serial No. 85/699,385
`Mark: ECONAVI
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Applicant’s First Set of
`
`Interrogatories to Opposer has been served on counsel for Opposer, Crambo, S.A., by mailing
`
`said copy on March 24, 2014, Via First Class Mail, postage prepaid to the following
`
`correspondent address of record with the United States Patent and Trademark Office, Trademark
`
`Trial and Appeal Board:
`
`Stewart J". Bellus
`
`Collard and Roe
`
`1077 Northern Blvd.
`
`Roslyn, NY 11576
`
`41,»
`
`Timothy J. C01 paron
`
`58433233}
`
`lfiddddfififi
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Attorney Docket No. 9432-400001
`
`Crambo, S.A.
`Opposer and Counterclaim Defendant,
`
`V.
`
`Panasonic Corporation,
`Applicant and Counterclaim Plaintiff.
`
`\_/\_/\_/\_/\._-’\../\_/\_/
`
`Opposition No. 91214205
`Serial No. 85/699,385
`. Mark: ECONAVI
`
`—
`
`..
`
`APPLICANT AND COUNTERCLAIM PLAINTIFF’S FIRST
`
`REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS
`
`Applicant and Counterclaim Plaintiff, Panasonic Corporation (“Applicant”), hereby
`
`requests pursuant to Rule 34 of the Federal Rules of Civil Procedure and Rules 2.l16(a) and 120
`
`of the Trademark Rules of Practice, that Opposer and Counterclaim Defendant, Crambo, S.A.
`
`(“Opposer”), produce the documents and things listed below for inspection and copying, and that
`
`said production be made accompanying Opposer’s service of its responses to this Request upon
`
`Applicant at the offices of Harness, Dickey & Pierce, P.L.C., 5445 Corporate Drive, Troy,
`
`Michigan 48098.
`
`DEFINITIONS AND INSTRUCTIONS
`
`The definitions and instructions contained in Applicant and Counterclaim
`A.
`Plaintiffs First Set of interrogatories are incorporated by reference.
`
`Opposer shall separately identify the Request by number pursuant to which the
`B.
`document or thing is produced.
`
`C.
`
`A written response to this Request is required pursuant to Rule 34, Fed.R.CiV.P.
`
`1.
`
`Produce all documents identified in response to Appiicant and Counterclaim
`
`REQUESTS
`
`Plaintiff’s First Set of interrogatories to Opposer.
`
`‘i 8¢i¢i«1{“M8.‘i
`
`

`
`2.
`
`Produce representative specimens of the current and proposed use of 0pposer’s
`
`Mark,
`
`including but not
`
`limited to, goods and/or services, advertising, and promotional
`
`documents and electronic media bearing 0pposer’s Mark used by or on behalf of Opposer,
`
`including use on the Internet.
`
`3.
`
`Produce Opposer’s documents, including advertisements, which describe and/or
`
`illustrate Opposer’s goods and/or services currently offered “or intending to be offered u.nder
`
`Opposer’s Mark.
`
`4.
`
`Produce any written or oral reports, recommendations, or other communications
`
`made at any time that relate iii any way to the likelihood of confusion of the alleged marks with
`
`any existing marks.
`
`5.
`
`Produce any Written or oral reports, recommendations, or other communications
`
`made at any time that relate in any way to the lack of inherent distinctiveness of Opposer’s Mark.
`
`6.
`
`Produce any report of the Search or investigation with respect to Opposer’s Mark,
`
`including any records such as, but not limited to, the United States Patent and Trademark Office
`
`records, state trademark records, trademark or trade publications, business directories or the
`
`records of any trademark service organization.
`
`7.
`
`8.
`
`Produce packaging employing Opposer’s Mark used by Opposer.
`
`Produce those documents Opposer may introduce or intends to introduce as an
`
`exhibit in these proceedings.
`
`9.
`
`Produce by title, issue date, page number, and any other relevant designation, all
`
`hardcopy and electronic media publications, including websites, in which Opposer has advertised
`
`or promoted, or plans to advertise or to promote, its products and/or services using Opposer’s
`
`Mark.
`
`S 2&1-'l~:'»H(é:'l:§.
`
`l
`
`

`
`10.
`
`Produce those documents that describe the actual size, appearance, and location of
`
`Opposer’s Mark on Opposer’s advertisements, brochures or packaging and produce a copy of the
`
`product(s).
`
`ll.
`
`‘Produce those documents and things
`
`regarding the consideration, design,
`
`selection, approval, and adoption of Opposer’s Mark.
`
`12.
`
`Produce those d.ocun'ie.nts. regarding any investigation such as a service mark,
`
`trademark, trade name, Internet name, or corporate name search concerning the adoption, use, or
`
`application for Federal registration of Opposer’s Mark.
`
`13.
`
`Produce those documents and things regarding the earliest use or anticipated first
`
`use anywhere, and the earliest use or anticipated first use in commerce, of Opposer’s Mark, by or
`
`on behalf of Opposer.
`
`14.
`
`Produce those documents and things demonstrating the type(s) of products and
`
`services in connection with which Opposer’s Mark has been used or are proposed to be used by
`
`Opposer or its licensees.
`
`15.
`
`Produce those documents regarding the geographical areas and channels of trade
`
`in which Opposer’s Mark has been used or is proposed to be used.
`
`16.
`
`Produce those documents regarding any assignment, consent, authorization,
`
`license or permission between Opposer and any individual(s) or entity(ies) to use Opposer’s
`
`Mark, including any alternative versions thereof.
`
`17.
`
`Produce representative specimens of each different item of packaging, labeling,
`
`I signage, and other identifying materials for 0pposer’s products bearing Opposer’s Mark,
`
`including the proto-types, draft and sketches for said packaging,
`
`labeling, signage or other
`
`l §:§~'%4<—l~{éa'l-?§.. l
`
`

`
`identifying materials and those documents regarding the design and/or creation of said
`
`packaging, labeling, signage or other identifying materials.
`
`18.
`
`Produce those documents regarding each printed and electronic media publication
`
`in which Opposer l1as advertised or promoted, is advertising or promoting, or plans to advertise
`
`or promote Opposer’s products or services in connection with Opposer’s Mark.
`
`lé. I
`
`Produce those documents regarding the types of customers with whom Opposer
`
`does or intends to do business, and the ultimate consumers to whom Opposer offers or intends to
`
`offer Opposer’s products and services bearing Opposer’s Mark.
`
`20.
`
`Produce those documents regarding the amount of money expended and/or
`
`budgeted by Opposer to promote Opposer’s products and services bearing Opposer’s Mark since
`
`the date of first use of such mark.
`
`21.
`
`Produce those documents regarding the dollar value of 0pp0ser’s actual and/or
`
`projected sa_les of pro