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
`ESTTA680801
`ESTTA Tracking number:
`06/29/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214673
`Defendant
`Future Publishing Limited
`ROBERT N PHILLIPS
`REED SMITH LLP
`101 SECOND STREET, SUITE 1800
`SAN FRANCISCO, CA 94105
`UNITED STATES
`IPDocket-CHI@reedsmith.com, robphillips@reedsmith.com, nbor-
`ders@reedsmith.com, dkalahele@reedsmith.com
`Motion to Compel Discovery
`Robert N. Phillips
`robphillips@reedsmith.com, dkalahele@reedsmith.com, sher-
`ring@reedsmith.com
`/s/ Robert N. Phillips
`06/29/2015
`Applicant's Motion to Compel Responses to Discovery Requests.pdf(20239
`bytes )
`Declaration of Robert N. Phillips In Support Of Applicant's Motion to Compel Re-
`sponses to Discovery Requests .pdf(13946 bytes )
`Exhibit A to Phillips Decl.pdf(28048 bytes )
`Exhibit B to Phillips Decl.pdf(25432 bytes )
`Exhibit C to Phillips Decl.pdf(169351 bytes )
`Exhibit D to Phillips Decl.pdf(132985 bytes )
`Exhibit E to Phillips Decl.pdf(185470 bytes )
`Declaration of Deborah Kalahele In Support of Applicant's Motion to Compel Re-
`sponses to Discovery Requests.pdf(13312 bytes )
`Exhibit 1 to Kalahele Decl.pdf(3597585 bytes )
`
`
`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
`ESTTA680801
`ESTTA Tracking number:
`06/29/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214673
`Defendant
`Future Publishing Limited
`ROBERT N PHILLIPS
`REED SMITH LLP
`101 SECOND STREET, SUITE 1800
`SAN FRANCISCO, CA 94105
`UNITED STATES
`IPDocket-CHI@reedsmith.com, robphillips@reedsmith.com, nbor-
`ders@reedsmith.com, dkalahele@reedsmith.com
`Motion to Compel Discovery
`Robert N. Phillips
`robphillips@reedsmith.com, dkalahele@reedsmith.com, sher-
`ring@reedsmith.com
`/s/ Robert N. Phillips
`06/29/2015
`Applicant's Motion to Compel Responses to Discovery Requests.pdf(20239
`bytes )
`Declaration of Robert N. Phillips In Support Of Applicant's Motion to Compel Re-
`sponses to Discovery Requests .pdf(13946 bytes )
`Exhibit A to Phillips Decl.pdf(28048 bytes )
`Exhibit B to Phillips Decl.pdf(25432 bytes )
`Exhibit C to Phillips Decl.pdf(169351 bytes )
`Exhibit D to Phillips Decl.pdf(132985 bytes )
`Exhibit E to Phillips Decl.pdf(185470 bytes )
`Declaration of Deborah Kalahele In Support of Applicant's Motion to Compel Re-
`sponses to Discovery Requests.pdf(13312 bytes )
`Exhibit 1 to Kalahele Decl.pdf(3597585 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`EDGE GAMES, INC.,
`
`
`
`
`
`
`
`Opposer,
`
`
`
`v.
`
`Opposition No. 91214673
`
`FUTURE PUBLISHING LIMITED,
`
`
`
`
`
`Applicant.
`
`
`
`APPLICANT’S MOTION TO COMPEL RESPONSES TO DISCOVERY REQUESTS
`
`Future Publishing Ltd, (“Applicant”) hereby moves to compel Edge Game, Inc.
`
`(“Opposer”) to provide responses to Applicant’s interrogatories and requests for production of
`
`documents, served via First Class Mail on January 6, 2015. Opposer’s sole rationale for refusing
`
`to respond to Applicant’s requests is its assertion that it never received them in the mail. But the
`
`TBMP is clear that service occurs upon sending the served documents – not receiving them – and
`
`in any event Opposer has been in possession of the requests since at least March 2, 2015, when
`
`Applicant sent courtesy copies via email. As such, the requests were properly served before the
`
`discovery cutoff date, and Opposer must respond to them.
`
`I.
`
`Relevant Facts
`
`On January 6, 2015, Applicant served its First Set of Requests for Production of
`
`Documents and First Set of Interrogatories (“Requests”) on Opposer by mailing those documents
`
`via First Class Mail. Declaration of Robert N. Phillips (“Phillips Decl.”), ¶ 2, Exs. A and B;
`
`Declaration of Deborah Kalahele, ¶ 2, Ex. 1 (mail log showing January 6, 2015 mailing of
`
`Requests). Both Requests attached Certificates of Service signed by Applicant’s authorized
`
`representative stating the date and manner of service, as well as the name and address of
`
`Opposer. Phillips Decl., Exs. A and B.
`
`
`
`
`
`
`
`
`
`On February 25, 2015, Applicant noted to Opposer that it had not yet received responses
`
`to the Requests. Phillips Decl., Ex. C. On March 2, Opposer responded that there was “no
`
`discovery request from [Applicant] in the file here,” and asked for proof of delivery. Id. The
`
`same day, in response to Opposer’s email, Applicant emailed Opposer copies of the Requests
`
`and noted they were served on January 6. Id. Opposer again responded that it did not receive
`
`the Requests in the mail, and asked for “proof of service.” Id. Applicant pointed to the proofs of
`
`service attached to the Requests. Id. Despite those proofs, Opposer did not serve responses to
`
`the Requests at that time.
`
`On April 9, 2015, Applicant notified Opposer that the Board’s suspension of the
`
`proceedings did not relieve Opposer of its obligation to respond to pending discovery requests,
`
`and that its responses to the Requests were past due. Phillips Decl., Ex. D. Applicant responded
`
`that, it had “yet to be served with any discovery requests,” despite Applicant’s January 6 mail
`
`service and March 2 follow-up email attaching courtesy copies of the Requests. Id. (emphasis in
`
`original).
`
`In response, on April 10, Applicant again emailed courtesy copies of the Requests to
`
`Opposer, and explained that Opposer’s “continued refusal to respond” would result in a motion
`
`to compel. Phillips Decl., Ex. D. The same day, Opposer again stated that it did not receive the
`
`Requests in the mail in January, and refused to acknowledge the multiple emails attaching the
`
`Requests because “the parties have not agreed to electronic service.” Id. Opposer also asked for
`
`“proof that [Applicant] sent the requests in January,” but stated without explanation that it would
`
`not accept the certificates of service as such proof. Id. Finally, Opposer stated that Applicant
`
`“would thus need to serve the discovery on us if you wish responses,” and invited Applicant to
`
`
`
`- 2 -
`
`
`
`
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`therefore “reverse your position on discovery and support our motion to reopen and extend it.”
`
`Id.
`
`On June 19, 2015, over six months after Applicant served the Requests via First Class
`
`Mail and almost four months after Applicant emailed Opposer courtesy copies of the Requests,
`
`the parties held a meet and confer telephone call on various issues related to discovery, including
`
`the issue of Opposer’s unwillingness to respond to the Requests. During this call, Opposer yet
`
`again reiterated its refusal to respond to the Requests. Phillips Decl., ¶ 6, Ex. E.
`
`II.
`
`Argument
`
`The TBMP is clear: a party can prove service with evidence of sending a document.
`
`TBMP § 113 (“A statement signed by the attorney or other authorized representative, attached to
`
`or appearing on the original paper when filed, clearly stating the date and manner in which
`
`service was made will be accepted as prima facie proof of service.”) (emphasis added); see also
`
`TBMP § 113.04 (discussing proof of “date of mailing”). A proper certificate of service attached
`
`to the served document constitutes “prima facie proof” of service on the date specified in the
`
`certificate. TBMP §§ 113.03 and 113.04. Under the TBMP, a certificate of service must
`
`contain: 1) a statement signed by a representative of the serving party; 2) stating the date and
`
`manner in which service was made; and 3) specifying the name and address of each person upon
`
`whom service was made to constitute prima facie proof of service. TBMP § 113.03.
`
`The TBMP also provides that, should that prima facie proof of service somehow be
`
`rebutted, and should the timeliness of the mailing be at issue, the Board may require an affidavit
`
`from the person who signed the certificate of service specifying the mailing date. Id. Critically,
`
`there is no TBMP rule requiring evidence of receipt of a document as proof of service. See
`
`Central Mfg. Co. v. Paramount Parks, Inc., 2004 TTAB LEXIS 122, *9-*10 (T.T.A.B. March 9,
`
`
`
`- 3 -
`
`
`
`
`
`2004) (service effective upon depositing discovery response in the mail, not upon receipt of
`
`discovery response two weeks later).
`
`Here, a certificate of service containing 1) a statement signed by Applicant’s
`
`representative; 2) stating that the Requests were served on January 6, 2015 via First Class Mail;
`
`and 3) specifying Opposer’s name and address as the party upon whom service was made is
`
`attached to both of the Requests. Thus, pursuant to TBMP § 113, Applicant has made a prima
`
`facie showing that the Requests were served on January 6, 2015. Additionally, even assuming
`
`that Opposer’s self-serving claim that it did not receive the Requests is true, and assuming this
`
`claim is enough to rebut Applicant’s prima facie evidence of service (which it is not), Applicant
`
`has submitted additional evidence in the form of a signed affidavit from the signor of the
`
`certificate of service specifying that the Requests were deposited in the mail on January 6, 2015,
`
`as well as a mail log showing the January 6, 2015 mailing of the Requests. Applicant’s evidence
`
`is more than sufficient to prove service on January 6, 2015.
`
`Moreover, even if Opposer truly did not receive the Requests in the mail, he received
`
`them via email on two occasions: first on March 2, 2015 and again on April 10 2015. Thus, not
`
`only is there unrebuttable evidence that Applicant served the Requests, there is also unrebuttable
`
`evidence that Opposer received the Requests. And there is no TBMP rule that requires
`
`documents to have been received via First Class Mail, only that documents can be served in that
`
`manner. TBMP § 113. At the very least, Applicant’s emails to Opposer attaching the Requests
`
`demonstrate that Opposer has been on notice of the Requests for almost four months.
`
`III. Conclusion
`
`Applicant has submitted ample evidence that it served the Requests on January 6, 2015,
`
`and the record is clear that Opposer has been in possession of the requests since at least March 2,
`
`
`
`- 4 -
`
`
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`
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`2015. As such, Opposer must respond to the Requests. Applicant requests that Opposer’s
`
`response date be set at 20 days from the date of the Order granting Applicant’s motion. Also, to
`
`prevent similar issues in the future, Applicant requests an order that email service is proper
`
`moving forward in this opposition.
`
`Dated: June 29, 2015
`
`Respectfully submitted by:
`
`
`
`/s/ Robert N. Phillips
`Robert N. Phillips
`Reed Smith LLP
`101 Second Street
`San Francisco, CA 94105
`Telephone; (415) 543-8700
`Facsimile: (415) 391-8269
`Email: rphillips@reedsmith.com
`
`John A. Cullis
`Reed Smith LLP
`10 South Wacker Drive, Suite 4000
`Chicago, IL 60606-7507
`Telephone: (312) 207-1000
`Facsimile: (312) 207-6400
`Email: jcullis@reedsmith.com
`
`Attorneys for Applicant,
`Future Publishing Limited
`
`
`
`
`
`
`
`
`
`
`
` By:
`
`- 5 -
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing APPLICANT’S MOTION TO
`
`COMPEL DISCOVERY RESPONSES was served on Opposer via First Class U.S. Mail,
`
`postage prepaid, with a courtesy copy via email on June 29, 2015.
`
`Dr. Tim Landell
`Edge Games, Inc.
`530 South Lake Avenue, Suite 171
`Pasadena, CA 91101
`Phone: (626)449-4334
`Fax: (626) 844-4334
`Email: tim@edgegames.com
`
`
`
`
`
`
`
`/s/ Deborah Kalahele
`Deborah Kalahele
`
`
`
`
`
`
`
`
`
`
`
`- 6 -
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`EDGE GAMES, INC.,
`
`
`
`
`
`
`
`Opposer,
`
`
`
`v.
`
`Opposition No. 91214673
`
`FUTURE PUBLISHING LIMITED,
`
`
`
`
`
`Applicant.
`
`
`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`
`DECLARATION OF ROBERT N. PHILLIPS IN SUPPORT OF APPLICANT’S
`MOTION TO COMPEL RESPONSES TO DISCOVERY REQUESTS
`
`I, Robert N. Phillips, declare:
`
`1.
`
`I am an attorney at law licensed to practice in the State of California and a partner
`
`of Reed Smith LLP, attorneys of record for Applicant Future Publishing Limited (“Applicant”).
`
`The matters set forth in this declaration are based upon my personal knowledge, except where
`
`otherwise indicated, and if called as a witness I could and would testify competently thereto.
`
`2.
`
`Attached hereto as Exhibit A is a true and correct copy of Applicant’s First Set of
`
`Requests for Production of Documents, including a Certificate of Service on the last page, dated
`
`January 6, 2015.
`
`3.
`
`Attached hereto as Exhibit B is a true and correct copy of Applicant’s First Set of
`
`Interrogatories, including a Certificate of Service on the last page, dated January 6, 2015.
`
`4.
`
`Attached hereto as Exhibit C is a true and correct copy of an email string between
`
`Mr. Tim Langdell and me, dated between January 16, 2015 and March 4, 2015.
`
`5.
`
`Attached hereto as Exhibit D is a true and correct copy of an email string between
`
`Mr. Langdell and me, as well as others at Reed Smith copying me, dated between April 6, 2015
`
`and April 10, 2015.
`
`
`
`
`
`US_ACTIVE-105877808.1-SBHERRIN
`
`
`
`6.
`
`I am informed by my partner John Cullis that on June 19, 2015 he held a meet and
`
`confer telephone call with Mr. Langdell on various issues related to discovery, including the
`
`issue of Opposer’s unwillingness to respond to the Requests. I am further informed that during
`
`this call, Opposer yet again reiterated its refusal to respond to the Requests. Attached hereto as
`
`Exhibit E is a true and correct email from my John Cullis to Mr. Langdell, copying me,
`
`memorializing this meet and confer telephone conference.
`
`7.
`
`I and my colleagues have made made a good faith effort, by conference and
`
`correspondence, to resolve with Opposer the issues presented in the Motion to Compel, but the
`
`parties were unable to resolve their differences, necessitating the Motion.
`
`I declare under penalty of perjury under the laws of the United States of America that the
`
`foregoing is true and correct. Executed this 29th day of June, 2015, at San Francisco, California.
`
`By:
`
`
`/s/ Robert N. Phillips
`Robert N. Phillips
`
`
`
`
`
`
`
`
`
`
`
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`- 2 -
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`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing DECLARATION OF ROBERT N.
`
`PHILLIPS IN SUPPORT OF APPLICANT’S MOTION TO COMPEL RESPONSES TO
`
`DISCOVERY REQUESTS was served on Opposer via First Class U.S. Mail, postage prepaid,
`
`with a courtesy copy via email on June 29, 2015.
`
`Dr. Tim Landell
`Edge Games, Inc.
`530 South Lake Avenue, Suite 171
`Pasadena, CA 91101
`Phone: (626)449-4334
`Fax: (626) 844-4334
`Email: tim@edgegames.com
`
`
`
`/s/ Deborah Kalahele
`Deborah Kalahele
`
`
`
`
`
`
`
`
`
`- 3 -
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`EDGE GAMES, INC.,
`
`
`
`
`
`
`
`Opposer,
`
`
`
`v.
`
`Opposition No. 91214673
`
`FUTURE PUBLISHING LIMITED,
`
`
`
`
`
`Applicant.
`
`APPLICANT’S FIRST SET OF REQUESTS FOR
`PRODUCTION OF DOCUMENTS AND THINGS
`
`Applicant, Future Publishing Limited, by and through its attorneys, and pursuant to 37
`
`CFR §2.120 and Federal Rule of Civil Procedure 34, hereby requests that Opposer, Edge Games,
`
`Inc., produce the documents and things described below at the offices of Reed Smith, LLP, 10
`
`South Wacker Drive, Suite 4000, Chicago, Illinois 60606, or at such other place mutually-agreed
`
`upon by the parties, within the applicable time permitted by TBMP § 406 and Federal Rule of
`
`Civil Procedure 34.
`
`DEFINITIONS
`
`A.
`
`The term “Applicant” shall mean Future Publishing Limited and its predecessors,
`
`agents, employees and other persons acting on its behalf or on behalf of its predecessors.
`
`B.
`
`The term “Opposer” shall mean Edge Games, Inc. and its predecessors, agents,
`
`employees and other persons acting on its behalf or on behalf of its predecessors.
`
`C.
`
`The term “Applicant’s Marks” shall mean the “Edge” marks as shown in U.S.
`
`Application Serial Nos. 85/153,958 and 85/153,981.
`
`D.
`
`The term “Opposer’s Marks” shall mean Opposer’s alleged “Edge” marks,
`
`including canceled U.S. trademark registrations for “Gamer’s Edge,” “Edge,” “EdgeGamers,”
`
`“The Edge,” and “Edge” as shown in U.S. Registration Nos. 3,381,826, 3,105,816, 3,585,463,
`
`
`
`
`
`US_ACTIVE-120525565.3-MATHELWE 01/06/2015 5:22 PM
`
`
`
`3,559,342, and 2,219,837, respectively, and Opposer’s pending U.S. trademark applications for
`
`“Edge Games,” “Edge Gaming PC,”1 and “Edge PC” as shown in U.S. Serial Nos. 85/147,499,
`
`85/891,810 and 85/891,791, respectively.
`
`E.
`
`The term “trademark” or “mark” includes trademarks, service marks, collective
`
`marks, certification marks and trade names as defined in 15 U.S.C. § 1127.
`
`F.
`
`The term “Person” is defined as any natural person or any business, legal or
`
`governmental entity or association.
`
`G.
`
`To “Identify” with respect to a Person (as defined in Paragraph F of these
`
`instructions, above) means to show, to the extent known, the person’s full name, present or last
`
`known address, organizational structure (i.e., corporation, partnership, etc.) and when referring to
`
`a natural person, additionally, the present or last known place of employment, and the
`
`association with Applicant;
`
`H.
`
`The words “Document” and “Documents” are defined to be synonymous in
`
`meaning and equal in scope to the usage of this term in Federal Rule of Civil Procedure 34(a),
`
`including, without limitation, electronic or computerized data compilations. A draft of non-
`
`identical copy is a separate document within the meaning of this term.
`
`I.
`
`The term “you” shall mean the party or Person to whom the request is
`
`propounded, all agents, employees, servants, attorneys, and all other representatives, and Persons
`
`over whom the person or party to whom the request is propounded has the right to or does
`
`control or direct and activities.
`
`
`1 Incorrectly identified by Opposer as “Edge Games PC” in Paragraph 17 of Opposer’s Notice of Opposition. Notice
`of Opp. 91214673 Dkt. 1.
`
`
`
`- 2 -
`
`
`
`
`
`J.
`
`The word “thing” or “things” refers to any tangible object, other than a document,
`
`and includes objects of every kind and nature, including, but not limited to, prototypes, models,
`
`and specimens.
`
`K.
`
`The term “concerning” means relating to, referring to, describing, evidencing or
`
`constituting.
`
`
`
`INSTRUCTIONS
`
`A.
`
`In the event that you withhold from production any documents based on the work-
`
`product doctrine or attorney/client privilege, you must provide a list of the documents withheld,
`
`together with the following information:
`
`(i)
`
`the date of the document;
`
`(ii)
`
`the names of the authors and addresses of the document;
`
`(iii)
`
`the names of each person who received a copy of the document;
`
`(iv)
`
`a brief description of the document; and
`
`(v)
`
`a statement of the basis for the claim of privilege.
`
`B.
`
`In answering these requests, you are required to furnish all documents that are
`
`available to you, including documents and things in the possession, custody or control of any of
`
`your representatives, including, without limitation, your attorneys, accountants, advisers, agents,
`
`and other persons, directly or indirectly, employed by, or connected with you or anyone else
`
`otherwise subject to your control.
`
`C.
`
`In responding to these requests, you must make a diligent search of your records
`
`and of other papers and materials in your possession or available to you or your representatives,
`
`in accordance with the requirements of Rule 34 of the Federal Rules of Civil Procedure.
`
`
`
`- 3 -
`
`
`
`
`
`D.
`
`In interpreting these discovery requests, definitions, and instructions, any
`
`masculine or feminine or neutral term includes all other genders; the singular includes the plural
`
`and vice versa “or,” “and,” “and/or,” and “including” shall be read to bring within the scope of
`
`the request the broadest amount of information.
`
`E.
`
`Each request calls for production of each document and thing in its entirety,
`
`without abbreviation, redaction, expurgation or modification.
`
`F.
`
`Each request seeks production of all documents and things described, along with
`
`any addenda, attachments, drafts, and non-identical copies as found or located either in
`
`Applicant’s business or personal files, together with a copy of the descriptive file folders or
`
`database category in its entirety.
`
`G.
`
`If there are no documents or things responsive to a particular request, you must
`
`state so in writing.
`
`H.
`
`These requests for production of documents and things shall be deemed to be
`
`continuing, and supplemental responses should be provided as additional information becomes
`
`available, in accordance with the provisions with Rule 26(e) of the Federal Rules of Civil
`
`Procedure.
`
`REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS
`
`1.
`
`All Documents constituting, describing or concerning any investigation, search,
`
`clearance, selection, or adoption by Opposer of the term “Edge,” including any and all trademark
`
`searches, investigations, polls, studies, evaluations, analysis, tests, ratings or surveys.
`
`2.
`
`Documents sufficient to identify all products and services offered by Opposer
`
`under any of Opposer’s Marks.
`
`
`
`- 4 -
`
`
`
`
`
`3.
`
`Documents sufficient to show the retail price of each product or service offered
`
`by Opposer under any of Opposer’s Marks.
`
`4.
`
`Documents showing Opposer’s first use in commerce of each of Opposer’s Marks
`
`and the date on which such use occurred.
`
`5.
`
`Documents sufficient to show Opposer’s total expenses to-date incurred in the
`
`creation, promotion, and attempt to register each of Opposer’s Marks.
`
`6.
`
`Documents sufficient to show the total annual expenditures incurred by Opposer
`
`for all advertising and marketing relating to each of Opposer’s Marks.
`
`7.
`
`Documents sufficient to show any sales or marketing plans for products or
`
`services sold by Opposer under Opposer’s Marks.
`
`8.
`
`Examples of each different advertisement, website page, social media page,
`
`promotional material, brochure, proposal, packaging, labeling, data sheets, stickers, instructional
`
`materials, media documents, or any other printed or electronic materials concerning Opposer’s
`
`use of any of Opposer’s Marks.
`
`9.
`
`Documents sufficient to show the channels of trade through which Opposer has
`
`offered its products and services under each of Oppoer’s Marks, including, without limitation,
`
`Documents sufficient to show the customers, sales agents, distributors or other outlets through
`
`which Opposer’s products or services are sold or have been sold.
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`- 5 -
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`10.
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`All Documents describing, identifying or concerning the types of purchasers or
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`users of any products or services sold by Opposer under any of Opposer’s Marks including,
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`without limitation, any research or studies related to such purchasers or users.
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`11.
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`Documents sufficient to show the geographic areas in which Opposer’s products
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`or services bearing the Opposer’s Marks have been or are being distributed or offered for sale.
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`12.
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`All Documents concerning or constituting any proposed or existing agreements,
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`partnerships, or licenses between Opposer and third parties, which relate, concern or refer to any
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`of Opposer’s Marks.
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`13.
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`All Documents constituting, describing or concerning any challenges or other
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`objections involving the Opposer’s claimed rights in Opposer’s Marks, or any similar
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`designation, including, but not limited to, any challenge by cease and desist letter made relating
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`to any of Opposer’s Marks.
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`14.
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`All Documents describing, identifying or concerning any third party use of the
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`term “Edge” known to Opposer.
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`15.
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`All Documents constituting, describing, or concerning any challenges or
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`objections by Opposer against any third party using the term “Edge” in connection with that third
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`party’s business.
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`16.
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`All Notices of Opposition, Petitions to Cancel, or lawsuits that Opposer has filed
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`with the United States Patent and Trademark Office or U.S. Federal or State courts, concerning
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`trademark applications or registrations incorporating the term “Edge” by any party other than
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`Opposer.
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`- 6 -
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`17.
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`All Documents referring or relating to any complaints, reviews or commentary
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`Opposer has received regarding the quality of any of its products or services offered in
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`connection with any of Opposer’s Marks.
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`18.
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`Each and every Document that supports Opposer’s contention that “Opposer’s
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`Marks have acquired distinctiveness and secondary meaning signifying Opposer and their
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`products.”
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`19.
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`Each and every Document that supports Opposer’s contention that “Applicant has
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`no bona fide intention to use or use through the applicant’s related company or licensee the mark
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`in commerce or in connection with the identified goods and/or services as at the date of
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`Application.”
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`20.
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`All Documents concerning any alleged confusion between Opposer and/or any of
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`its products and services, and Applicant and/or any of its products and services.
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`21.
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`Each and every Document that supports Opposer’s contention that “use and
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`registration of Applicant’s Mark are likely to: (1) cause confusion in the minds of the purchasing
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`public, and (2) cause the purchasing public to assume that the goods identified by such mark are
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`offered by Opposer or that such goods originate with or are in some way connected to or
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`sponsored by Opposer . . .”
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`22.
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`Each and every Document that supports Opposer’s contention that “[a]llowing
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`Applicant’s mark to mature to the Register would lead to dilution.”
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`23.
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`All Documents concerning Opposer’s decision to file Opposer’s Marks.
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`- 7 -
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`
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`24.
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`All Documents concerning communications between Opposer and the United
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`States Patent and Trademark Office concerning Opposer’s Marks.
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`25.
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`All Documents relating to Applicant or any of Applicant’s Marks.
`
`26.
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`All Documents Opposer intends to rely upon for any purpose in this case.
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`27.
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`All Documents concerning studies and/or surveys in connection with the use of
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`“Edge.”
`
`28.
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`All Documents sufficient to identify each product or service on or in connection
`
`with which Opposer has used the term “Edge.”
`
`29.
`
`All Documents concerning Opposer’s policies regarding retention, storage, filing,
`
`and destruction of Electronically Stored Information, documents, and things.
`
`30.
`
`All Documents sufficient to identify the persons or entities involved in the design,
`
`sales, marketing, communications, business strategy, or business planning concerning goods or
`
`services that are marketed and sold under Opposer’s Marks.
`
`31.
`
`All Documents consulted in the preparation of, or which are requested to be
`
`identified in, Opposer’s answers to Applicant’s First Set of Interrogatories.
`
`
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`- 8 -
`
`
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`
`
`By: /s/ Robert N. Phillips_____________
`Reed Smith LLP
`101 Second Street
`San Francisco, CA 94105
`
`John A. Cullis
`Reed Smith LLP
`10 South Wacker Drive, Suite 4000
`Chicago, IL 60606-7507
`(312) 207-1000 Telephone
`(312) 207-6400 Facsimile
`
`Attorneys for Applicant,
`Future Publishing Limited
`
`
`
`
`
`
`
`Dated: January 6, 2015
`
`
`
`
`
`- 9 -
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing APPLICANT’S FIRST
`
`SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS has been served
`
`by mailing said copy on January 6, 2015, via First Class Mail, postage prepaid, upon the
`
`following party of record.
`
`Dr. Tim Landell
`Edge Games, Inc.
`530 South Lake Avenue, Suite 171
`Pasadena, CA 91101
`
`Signature: /s/ Deborah Kalahele
`
` Deborah Kalahele
`
`
`Date: January 6, 2015
`
`
`
`
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`- 10 -
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`
`
`EXHIBIT B
`EXHIBIT B
`
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`EDGE GAMES, INC.,
`
`
`
`
`
`
`
`Opposer,
`
`
`
`v.
`
`Opposition No. 91214673
`
`FUTURE PUBLISHING LIMITED,
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`APPLICANT’S FIRST SET OF INTERROGATORIES
`
`
`
`Pursuant to 37 C.F.R § 2.120 and Rule 33 of the Federal Rules of Civil Procedure,
`
`Applicant, Future Publishing Limited, hereby requests that Opposer, Edge Games, Inc., answer
`
`the following interrogatories fully and separately in writing under oath. Answers to these
`
`interrogatories must be served within thirty (30) days. These requests are intended to be
`
`continuing in nature, and supplemental responses should be provided if Opposer learns that a
`
`response is incomplete or incorrect in any respect, in accordance with the provisions of Rule
`
`26(e) of the Federal Rules of Civil Procedure.
`
`DEFINITIONS
`
`A.
`
`The term “Applicant” shall mean Future Publishing Limited, and its predecessors,
`
`agents, employees and other persons acting on its behalf or on behalf of its predecessors.
`
`B.
`
`The term “Opposer” shall mean Edge Games, Inc., including but not limited to all
`
`officers, directors, owners, employees, agents, representatives, predecessors, subsidiaries, parent
`
`companies, affiliated companies or joint ventures. When an answer is given with respect to any
`
`persons or entities controlled by or acting on behalf of Edge Games, Inc., including but not
`
`limited to all officers, directors, owners, employees, agents, representatives, predecessors,
`
`
`
`
`
`US_ACTIVE-120525550.3-MATHELWE 01/06/2015 5:27 PM
`
`
`
`subsidiaries, parent companies, affiliated companies or joint ventures, this fact should be stated
`
`and such person or entity should be identified by name and principal place of business.
`
`C.
`
`The term “Applicant’s Marks” shall mean the “Edge” marks as shown in U.S.
`
`Application Serial Nos. 85/153,958 and 85/153,981.
`
`D.
`
`The term “Opposer’s Marks” shall mean Opposer’s alleged “Edge” marks,
`
`including canceled U.S. trademark registrations for “Gamer’s Edge,” “Edge,” “EdgeGamers,”
`
`“The Edge,” and “Edge” as shown in U.S. Registration Nos. 3,381,826, 3,105,816, 3,585,463,
`
`3,559,342, and 2,219,837, respectively, and Opposer’s pending U.S. trademark applications for
`
`“Edge Games,” “Edge Gaming PC,”1 and “Edge PC” as shown in U.S. Serial Nos. 85/147,499,
`
`85/891,810 and 85/891,791, respectively.
`
`E.
`
`The term “trademark” or “mark” includes trademarks, service marks, collective
`
`marks, certification marks and trade names as defined in 15 U.S.C. § 1127.
`
`F.
`
`The term “person” shall mean any natural person or any business, legal or
`
`governmental entity or association.
`
`G.
`
`The term “identify” with respect to:
`
`(i)
`
`a person (as defined above) shall mean to give, to the extent known, the
`
`person’s full name, present or last known address, organizational structure
`
`(i.e., corporation, limited liability company, partnership, etc.) and when
`
`referring to a natural person, additionally, the present or last known place
`
`of employment, and the association with Applicant;
`
`(ii)
`
`a document, shall mean to give, to the extent known, the (i) type of
`
`document; (ii) general subject matter; (iii) date of the document; (iv)
`
`
`1 Incorrectly identified by Opposer as “Edge Games PC” in Paragraph 17 of Opposer’s Notice of Opposition. Notice
`of Opp. 91214673 Dkt. 1.
`
`
`
`- 2 -
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`
`
`
`
`present or last known location of the document or the identity of the
`
`individual who has custody of the document; and (v) author(s),
`
`addressee(s) and recipient(s); and
`
`(iii)
`
`an oral or other communication shall mean to identify the circumstances
`
`of
`
`the communication sufficiently
`
`to permit future
`
`identification,
`
`specification and discovery of the communication.
`
`H.
`
`The words “document” and “documents” are defined to be synonymous in
`
`meaning and equal in scope to the usage of this term in Federal Rule of Civil Procedure 34(a),
`
`including, without limitation, electronic or computerized data compilations. A draft of non-
`
`identical copy is a separate document within the meaning of this term.
`
`I.
`
`The term “you” shall mean the party or person to whom these interrogatories are
`
`propounded, all agents, employees, servants, attorneys, and all other representatives, and persons
`
`over whom the person or party to whom these interrogatories are propounded has the right to or
`
`does control or direct any activities.
`
`J.
`
`The word “thing” or “things” refers to any tangible object, other than a document,
`
`and includes objects of every kind and nature, including, but not limited to, prototypes, models,
`
`and specimens.
`
`INSTRUCTIONS
`
`If you cannot answer any interrogatory fully, completely, and in detail, after exercising
`
`due diligence to make inquiry and secure the information necessary, so state, and (1) answer
`
`such interrogatory to the extent possible; (2) specify the portion of such interrogatory that you
`
`are unable to answer fully, completely, and in detail; and (3) state the reason why such portion
`
`
`
`- 3 -
`
`
`
`
`
`cannot be so answered. If your response is qualified in any particular respect, set forth the
`
`details of such qualification.
`
`If any information is withheld under a claim of privilege, state the nature of the privilege
`
`claimed and provide sufficient information to permit a full determination of whether the claim is
`
`valid.
`
`If any requested information is unavailable because it has been lost, discarded, or
`
`destroyed, please identify such document and state the circumstances in which it was lost,
`
`discarded or destroyed, and identify each person having knowledge of the circumstances in
`
`which it was lost
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