throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA833792
`
`Filing date:
`
`07/17/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91231211
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Hat World, Inc.
`
`TYWANDA H LORD
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 PEACHTREE STREET , SUITE 2800
`ATLANTA, GA 30309
`UNITED STATES
`Email: tlord@ktslaw.com, nchollet@ktslaw.com, hhenderson@ktslaw.com, rdt-
`homas@ktslaw.com, jburns@ktslaw.com, tmadmin@ktslaw.com
`
`Other Motions/Papers
`
`Rhojonda D.C. Thomas
`
`rdthomas@ktslaw.com, tlord@ktslaw.com, jburns@ktslaw.com, tmad-
`min@ktslaw.com
`
`/R. Thomas/
`
`07/17/2017
`
`Thomas Declaration IOT Second Motion to Compel - LACE LIDZ.pdf(1486305
`bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`HAT WORLD, INC.,
`
`
`
`v.
`
`Opposer,
`
`JJM MANUFACTURING LTD.,
`
`
`Applicant.
`
`
`
`
`
`
`Opposition No. 91231211
`
`
` Mark: LACE LIDZ
`(App. Serial No. 76/717,018)
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`DECLARATION OF RHOJONDA D.C. THOMAS IN
`OPPOSITION TO APPLICANT’S SECOND MOTION TO COMPEL
`
`
`I, Rhojonda D.C. Thomas, declare:
`
`1.
`
`I am an associate with the law firm Kilpatrick Townsend & Stockton LLP, which
`
`represents Opposer Hat World, Inc. (“Hat World”) in the above-captioned action. I am over the
`
`age of twenty-one and competent to make this Declaration. The facts set forth herein are based
`
`on my personal knowledge and documents maintained by my firm in the ordinary course of
`
`business.
`
`2.
`
`On January 31, 2017, Applicant served its first requests for discovery, including
`
`its First Interrogatories, First Document Production Requests, and First Admission Requests. Hat
`
`World’s deadline to respond to the discovery requests was March 2, 2017. True and correct
`
`copies of these discovery requests are attached as Exhibit A.
`
`3.
`
`On March 2, 2017, Hat World timely served its responses to Applicant’s first
`
`requests for discovery. The only request for which Hat World provided objections only was
`
`Applicant’s Document Request No. 10, which sought “all documents having an In re E. I.
`
`DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) analysis relevant to
`
`this opposition.” Hat World provided both objections and a response for all other requests. True
`
`

`

`and correct copies of Hat World’s responses to Applicant’s first discovery requests are attached
`
`as Exhibit B.
`
`4.
`
`On March 4, 2017, counsel for Applicant, Robert Vanderhye, sent a letter to me
`
`outlining alleged deficiencies in Hat World’s responses to Applicant’s first requests for
`
`discovery. In this letter, Mr. Vanderhye also insisted that Hat World analyze the claims of
`
`Applicant’s patent applications and delineated the manner in which many of Hat World’s
`
`responses “must be revised.” A true and correct copy of this letter is attached as Exhibit C.
`
`5.
`
`On March 22, 2017, I responded to Mr. Vanderhye’s deficiency letter, explaining
`
`that Hat World’s objections based on undefined terms in Applicant’s requests stemmed from the
`
`fact that the words have multiple meanings or that the meaning of the words in the context of the
`
`requests was unclear. I further asserted that Applicant’s expectation that Hat World analyze the
`
`claims in its patent applications to respond to discovery that has no bearing on this proceeding is
`
`unreasonable. I also maintained Hat World’s objection to producing all documents that reflect
`
`legal advice or work product related to its analysis of this proceeding under the DuPont factors.
`
`A true and correct copy of this letter is attached as Exhibit D.
`
`6.
`
`In a letter dated March 28, 2017, Mr. Vanderhye advised that my March 22
`
`correspondence resolved some of Applicant’s concerns, but that others remained. A true and
`
`correct copy of this correspondence is attached as Exhibit E.
`
`7.
`
`Tywanda H. Lord (another attorney representing Hat World in this proceeding),
`
`Mr. Vanderhye, and I held a telephone conference on June 2, 2017. During that conference, Ms.
`
`Lord and I agreed to provide supplemental responses to Applicant’s Request for Admission Nos.
`
`5, 6, 8, and 9.
`
`8.
`
`Mr. Vanderhye also clarified Request for Admission Nos. 2 and 3 during the call.
`
`
`
`2
`
`

`

`Ms. Lord advised Mr. Vanderhye that Applicant’s Request for Admission Nos. 2 and 3 as served
`
`did not reflect the explanation of the requests that he provided during the conference and invited
`
`him to serve revised requests. Mr. Vanderhye declined.
`
`9.
`
`Mr. Vanderhye further insisted during the call that Hat World must analyze the
`
`claims in Applicant’s patent applications to determine whether Hat World has ever marketed or
`
`plans to market any hats that would be covered by the claims in the applications in response to
`
`Applicant’s Request for Admission Nos. 10-13. Ms. Lord and I maintained the objection that to
`
`require such an analysis in a trademark opposition proceeding is unreasonable.
`
`10. Mr. Vanderhye also proclaimed that Hat World’s objection to the undefined terms
`
`“publications” and “substantial synonym” in Applicant’s Interrogatory No. 6 are inappropriate
`
`and that Hat World’s response is incomplete because Hat World disagreed that trademark
`
`registrations were publications. Ms. Lord noted that this argument highlights the objection to the
`
`undefined term “publication” and that Hat World otherwise responded to the Interrogatory based
`
`on its understanding of the meaning of the term.
`
`11. Mr. Vanderhye continued to argue that Hat World must provide a privilege log of
`
`all work product or privileged documents that include an analysis of this opposition under the
`
`DuPont factors in response to Applicant’s Document Request No. 10. Ms. Lord maintained the
`
`objection that the request itself was inappropriate and invited Mr. Vanderhye to provide case law
`
`to the contrary. Mr. Vanderhye declined.
`
`
`
`I declare under penalty of perjury under the laws of the United States and the State of
`
`Georgia that the foregoing is true and correct to the best of my knowledge.
`
`DATED: July 17, 2017
`
`
`
`/R. Thomas/
`Rhojonda D.C. Thomas
`
`
`
`
`
`3
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposition No. 91231211
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
` Mark: LACE LIDZ
`(App. Serial No. 76/717,018)
`
`
`
`
`
`
`
`HAT WORLD, INC.,
`
`
`
`v.
`
`Opposer,
`
`JJM MANUFACTURING LTD.,
`
`
`Applicant.
`
`CERTIFICATE OF SERVICE
`
`This is to certify that a true and correct copy of the foregoing document was served on
`
`Applicant’s counsel of record in the above-referenced opposition proceeding on July 17, 2017,
`
`via email addressed to:
`
`
`
`Robert A. Vanderhye <ravar46@yahoo.com>
`
`
`
`
`
`
`/R. Thomas/
`
`Kilpatrick Townsend & Stockton LLP
`Counsel for Opposer Hat World, Inc.
`
`
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`HAT WORLD, INC.
`
`
`Opposer
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`JJM MANUFACTURING LTD.
`
`Applicant
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`
`Serial No. 76/717,018
`Opposition No. 91231211
`
`JJM’s FIRST INTERROGATORIES AND DOCUMENT PRODUCTION REQUESTS TO
`HAT WORLD PURSUANT TO TBMP 405 & 406 AND 37 CFR §2.120(d)
`
`Applicant JJM Manufacturing Ltd. (“JJM”) propounds its first set of interrogatories and
`
`
`
`document production requests to opposer Hat World, Inc. (“Hat World”).
`
`The term “document” is used in its broadest sense, including notes, electronic media,
`
`correspondence, memos, or the like.
`
`If any objection is made on the basis of attorney-client privilege or attorney work product
`
`information in conformance with F R Civ. P 26(b)(5)(A) must be provided.
`
`INTERROGATORIES
`
`1. Describe all instances of actual confusion between Hat World, or any registration or
`
`mark of Hat World applied to any product of Hat World, and JJM’s LACE LIDZ trademark or
`
`products sold under the trademark. For each instance of actual confusion set forth the date(s),
`
`entity confused (including name, address, contact person if any, and phone number); and provide
`
`(in response to Document Request #1) copies of all documents associated therewith including,
`
`but not limited to, memos or notes generated by Hat World or communications from the entity
`
`confused.
`
`

`

`Opposition No. 91231211
`JJM’s Initial Disclosures
`
`
`
`
`
`RESPONSE:
`
`
`
`
`
`2. Describe by entity name, address, phone number, and contact person if any, all other
`
`entities besides JJM whom Hat World has information has ever used or registered a trademark or
`
`service mark that includes LIDS or LIDZ as all or part of the mark and relates in any way to the
`
`sale of caps, hats, or headwear, or items for use with caps, hats, or headwear; and provide (in
`
`response to Document Request #2) copies of all documents associated therewith including, but
`
`not limited to, memos or notes generated by Hat World or communications between the entity
`
`and Hat World.
`
`RESPONSE:
`
`
`
`
`
`3. Identify by name, title (if any), address, and phone number all natural persons having
`
`knowledge of the allegations made in paragraph 2 of the Notice of Opposition; and provide (in
`
`response to Document Request #3) copies of all documents related to that knowledge.
`
`RESPONSE:
`
`
`
`
`
`
`
`
`
`2
`
`

`

`Opposition No. 91231211
`JJM’s Initial Disclosures
`
`
`
`
`
`4. Identify by name, title (if any), address, and phone number all natural persons having
`
`knowledge of the allegations made in paragraph 6 of the Notice of Opposition; and provide (in
`
`response to Document Request #4) copies of all documents related to that knowledge.
`
`RESPONSE:
`
`
`
`
`
`5. In Reg. No. 2,174,170 why was the statement “NO CLAIM IS MADE TO THE
`
`EXCLUSIVE RIGHT TO USE ‘LIDS’ APART FROM THE MARK AS SHOWN” made?
`
`RESPONSE:
`
`
`
`
`
`6. List all publications (by title, author, date, web address, and/or other identifying
`
`information) that Hat World is aware of where the word “lids” is indicated as a synonym or
`
`substantial synonym of a cap, hat, or headwear; and provide (in response to Document Request
`
`#6) a copy of the relevant portion of each such publication.
`
`RESPONSE:
`
`
`
`
`
`
`
`
`
`3
`
`

`

`Opposition No. 91231211
`JJM’s Initial Disclosures
`
`
`
`
`
`7. Provide the product number and (in response to Document Request #7) a
`
`representative photograph and advertisement of all caps, hats, or headwear sold or offered for
`
`sale by Hat World that have the word “lace” associated therewith in any way, or which have any
`
`type of representation of a hockey skate lace.
`
`RESPONSE:
`
`
`
`
`
`8. For each of the following marks state a) when a natural person at Hat World first
`
`became aware of the mark or a registration document associated with the mark, b) who the
`
`natural person is (by name, title, address and phone number), c) what the person did when she/he
`
`became aware, and d) provide (in response to Document Request #8) copies of all documents
`
`related thereto: 1) LIVE LIDS; 2) SASSY LIDS ETC.; 3) UNSCRIPTED LIDS; 4) BILLY’S
`
`LIDS FOR KIDS; 5) LID CRIB; 6) LACE LIDZ.
`
`RESPONSE:
`
`
`
`
`
`
`
`
`
`DOCUMENT PRODUCTION REQUESTS
`
`1. Produce copies of all documents relevant to the response to Interrogatory #1.
`
`2. Produce copies of all documents relevant to the response to Interrogatory #2.
`
`3. Produce copies of all documents relevant to the response to Interrogatory #3.
`
`
`
`4
`
`

`

`Opposition No. 91231211
`JJM’s Initial Disclosures
`
`
`
`
`
`4. Produce copies of all documents relevant to the response to Interrogatory #4.
`
`5. Produce copies of all trademark or service mark applications or registrations in which
`
`LIDS or LIDZ is disclaimed apart from the mark as shown.
`
`6. Produce copies of all documents relevant to the response to Interrogatory #6.
`
`7. Produce copies of all documents relevant to the response to Interrogatory #7.
`
`8. Produce copies of all documents relevant to the response to Interrogatory #8.
`
`9. Produce copies of all documents which have the word “LACE” in the same paragraph
`
`as one or more of the words (or their plurals) “cap,” “hat,” “headwear,” or “headgear.”
`
`10. Produce copies of all documents having an In re E. I. DuPont de Nemours & Co., 476
`
`F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) analysis relevant to this opposition.
`
`
`
`Respectfully Submitted,
`
`
`
`
`ss/Robert A. Vanderhye /
`Counsel for JJM Manufacturing Ltd.
`Robert A. Vanderhye
`801 Ridge Dr.
`McLean, VA 22101-1625
`703-442-0422
`ravar46@yahoo.com
`
`
`
`
`
`
`
`
`Date: January 31, 2017
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on the 31st day of January, 2017, I sent a true and correct copy of the
`
`foregoing by email addressed to hhenderson@kilpatricktownsend.com Harris W. Henderson,
`KILPATRICK TOWNSEND & STOCKTON LLP, 1100 Peachtree St., #2800, Atlanta, Georgia
`30309-4530].
`
`ss/Robert A. Vanderhye/
`
`
`
`5
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`HAT WORLD, INC.
`
`
`Opposer
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`JJM MANUFACTURING LTD.
`
`Applicant
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`
`Serial No. 76/717,018
`Opposition No. 91231211
`
`JJM’s FIRST ADMISSION REQUESTS TO HAT WORLD
`
`
`
`Applicant JJM Manufacturing Ltd. (“JJM”) propounds its first admission requests to
`
`opposer Hat World, Inc. (“Hat World”) pursuant to TBMP 407 and 37 CFR §2.120.
`
`The term “document” is used in its broadest sense, including notes, electronic media,
`
`correspondence, memos, or the like.
`
`If any objection is made on the basis of attorney-client privilege or attorney work product
`
`information in conformance with F R Civ. P 26(b)(5)(A) must be provided.
`
`1.
`
`There have been no instances of actual confusion between any trademark or
`
`service mark of Hat World and LACE LIDZ.
`
`RESPONSE:
`
`
`
`2.
`
`Hat World does not sell any headwear (including caps or hats) that uses the words
`
`“hockey skate lace” in association therewith.
`
`RESPONSE:
`
`
`
`

`

`Opposition No. 91231211
`JJM’s First Admission Requests
`
`
`
`
`
`3.
`
`Hat World does not sell any headwear (including caps or hats) that in any way
`
`simulates hockey skate laces.
`
`RESPONSE:
`
`
`
`4.
`
`Hat World never objected, either formally or informally, to the registration of the
`
`mark LIVE LIDS for hats and caps by Live Lids Corporation.
`
`RESPONSE:
`
`
`
`5.
`
`Hat World never objected, either formally or informally, to the registration of the
`
`mark SASSY LIDS ETC. for hats by Sassy Buckeye, LLC.
`
`RESPONSE:
`
`
`
`6.
`
`Hat World never objected, either formally or informally, to the registration of the
`
`mark UNSCRIPTED LIDS for baseball caps and hats by Jay W. Alger.
`
`RESPONSE:
`
`
`
`7.
`
`Hat World never objected, either formally or informally, to the registration of the
`
`mark LIVE LIDS for hats and caps by Live Lids Corporation.
`
`RESPONSE:
`
`
`
`2
`
`

`

`Opposition No. 91231211
`JJM’s First Admission Requests
`
`
`
`
`
`8.
`
`Hat World never objected, either formally or informally, to the registration of the
`
`mark BILLY’S LIDS 4 KIDS for hats by David and/or William Cordes.
`
`RESPONSE:
`
`9.
`
`Hat World never objected, either formally or informally, to the registration of the
`
`mark LID CRIB for hat racks by Hobbie Horse, Inc.
`
`RESPONSE:
`
`10.
`
`Hat World has never marketed a product covered by U S Design Patent 750,354.
`
`RESPONSE:
`
`11.
`
`Hat World has never marketed a product covered by U S Design Patent 769,639.
`
`RESPONSE:
`
`12.
`
`Hat World has no plans to market a product that would be covered by U S Design
`
`Patent 750,354.
`
`RESPONSE:
`
`13.
`
`Hat World has no plans to market a product that would be covered by U S Design
`
`Patent 769,639.
`
`RESPONSE:
`
`14.
`
`There are more than a dozen publications which indicate that “lid” is a synonym
`
`for “cap,” “hat,” and/or “headwear.”
`
`RESPONSE:
`
`
`
`
`
`3
`
`

`

`Opposition No. 91231211
`JJM’s First Admission Requests
`
`
`
`
`
`15.
`
`hat pattern.
`
`LACE LIDZ hat advertisements reference the hockey skate lace simulation of the
`
`RESPONSE:
`
`16.
`
`Hat World did not market or sell its “Lacer” product prior to October 7, 2014.
`
`RESPONSE:
`
`17.
`
`Hat World was aware of JJM’s LACE LIDZ mark before Hat World named its
`
`“Lacer” product.
`
`RESPONSE:
`
`
`Respectfully Submitted,
`
`
`
`
`ss/Robert A. Vanderhye /
`Counsel for JJM Manufacturing Ltd.
`Robert A. Vanderhye
`801 Ridge Dr.
`McLean, VA 22101-1625
`703-442-0422
`ravar46@yahoo.com
`
`
`
`
`
`
`
`
`
`Date: January 31, 2017
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on the 31st day of January, 2017, I sent a true and correct copy of the
`
`foregoing by email addressed to hhenderson@kilpatricktownsend.com Harris W. Henderson,
`KILPATRICK TOWNSEND & STOCKTON LLP, 1100 Peachtree St., #2800, Atlanta, Georgia
`30309-4530].
`
`ss/Robert A. Vanderhye/
`
`
`
`
`
`4
`
`

`

`
`
`
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`
`
`
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`
`EXHIBIT B
`EXHIBIT B
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`
`HAT WORLD, INC.,
`
`
`
`v.
`
`JJM MANUFACTURING LTD.,
`
`
`
`
`Applicant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
` Opposition No. 91231211
`
`
` Mark: LACE LIDZ
`
`
`
`
`
`
`
`OPPOSER HAT WORLD’S OBJECTIONS AND RESPONSES
`TO APPLICANT’S FIRST INTERROGATORIES TO HAT WORLD
`
`On the basis of information now known, and without waiving any objection or admitting
`
`
`
`the relevance or materiality of any of the information sought, Opposer Hat World, Inc.
`
`(“Opposer”) serves the following Objections and Responses to Applicant JJM Manufacturing
`
`Ltd.’s (“Applicant”) First Interrogatories to Hat World (the “Interrogatories”), pursuant to Rules
`
`2.116 and 2.120 of the Trademark Rules of Practice and Federal Rules of Civil Procedure 26 and
`
`33.
`
`PRELIMINARY STATEMENT
`
`
`
`Opposer has made reasonable efforts to respond to the Interrogatories, to the extent that
`
`they call for information that is not otherwise privileged or objectionable, as Opposer
`
`understands and interprets them. If Applicant subsequently asserts a different interpretation,
`
`Opposer reserves the right to supplement its objections and responses.
`
`
`
`Opposer’s objections and responses to these Interrogatories are based upon facts and
`
`information presently known to Opposer. Opposer’s investigation and discovery, including the
`
`review of its own files, are continuing, and Opposer may subsequently learn additional facts and
`
`

`

`
`
`
`
`uncover additional documents in its possession, custody, or control. Opposer reserves the right to
`
`supplement and/or amend its responses to the Interrogatories, in accordance with Rule 26(e) of
`
`the Federal Rules of Civil Procedure, if Opposer later discovers information in its possession,
`
`custody, or control that is responsive to the Interrogatories. However, Opposer undertakes no
`
`duty to supplement its objections or responses beyond what is required by the Trademark Rules
`
`of Practice, the Federal Rules of Civil Procedure, or applicable law. Opposer reserves the right to
`
`rely upon all such evidence as may become available during the course of discovery and trial
`
`preparation and to use the same at trial or otherwise in this proceeding.
`
`GENERAL RESPONSES AND OBJECTIONS
`
`Opposer asserts the following General Responses and Objections to each instruction,
`
`definition, and Interrogatory, each of which is incorporated by reference in each of the specific
`
`responses set forth below:
`
`1.
`
`Each of Opposer’s Interrogatory responses is subject to the Board’s standard
`
`Protective Order, which governs this proceeding.
`
`2.
`
`Opposer objects to the Interrogatories in their entirety and to each Interrogatory to
`
`the extent the information sought is protected from discovery by the attorney-client privilege or
`
`the work product doctrine or would disclose the mental impressions, conclusions, opinions, or
`
`legal theories of counsel and, as such, is protected from discovery.
`
`3.
`
`Opposer objects to the Interrogatories in their entirety and to each Interrogatory to
`
`the extent they attempt to impose obligations upon Opposer inconsistent with or greater than the
`
`Trademark Rules of Practice or the Federal Rules of Civil Procedure.
`
`4.
`
`Opposer objects to the Interrogatories in their entirety and to each Interrogatory to
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`the extent they prematurely call for the disclosure of information that Opposer may obtain
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`2
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`through discovery or otherwise.
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`5.
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`Opposer objects to the Interrogatories in their entirety and to each Interrogatory to
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`the extent that they call for Opposer to “identify” if such request would require the identification
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`of cumulative or duplicative information or otherwise would impose a burden on Opposer that
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`outweighs the benefit of the information sought.
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`6.
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`Opposer objects to the Interrogatories in their entirety and to each Interrogatory to
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`the extent that they seek information not within Opposer’s possession, custody, or control.
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`7.
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`Opposer objects to the Interrogatories in their entirety and to each Interrogatory to
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`the extent that they seek information related to matters outside the United States. Unless
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`otherwise specified, the geographic area encompassed by Opposer’s Interrogatory responses is
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`the United States.
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`8.
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`To the extent that the Interrogatories are unlimited in time, Opposer objects that
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`the Interrogatories are overbroad and unduly burdensome.
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`9.
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`Opposer objects to the Interrogatories in their entirety and to each Interrogatory to
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`the extent that they seek information that is neither relevant to any party’s claim or defense nor
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`proportional to the needs of the case, considering the importance of the issues at stake in the
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`action, the amount in controversy, the parties’ relative access to relevant information, the parties’
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`resources, the importance of the discovery in resolving the issues, and whether the burden or
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`expense of the proposed discovery outweighs its likely benefit.
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`10.
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`Opposer reserves the right to supplement the responses to these Interrogatories
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`during and upon completion of discovery.
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`11.
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`By responding to these Interrogatories, Opposer does not in any way waive or
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`intend to waive, but instead intends to preserve, all objections as to the competency, relevancy,
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`materiality, and admissibility of the responses and the subject matter of those responses.
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`SPECIFIC RESPONSES AND OBJECTIONS
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`1.
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`Describe all instances of actual confusion between Hat World, or any registration
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`or mark of Hat World applied to any product of Hat World, and JJM’s LACE LIDZ trademark or
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`products sold under the trademark. For each instance of actual confusion set forth the date(s),
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`entity confused (including name, address, contact person if any, and phone number); and provide
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`(in response to Document Request #1) copies of all documents associated therewith including,
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`but not limited to, memos or notes generated by Hat World or communications from the entity
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`confused.
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`RESPONSE:
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`In addition to the general objections, Opposer incorporates by reference its objections to
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`Document Request No. 1. Opposer also objects to this Interrogatory to the extent that it
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`prematurely calls for the disclosure of information that Opposer may obtain through discovery or
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`otherwise and/or that is not within its possession, custody, or control, including information that
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`may be within Applicant’s possession, custody, or control.
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`Subject to these objections, Opposer responds that it is unaware of any instances of actual
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`confusion at this time.
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`2. Describe by entity name, address, phone number, and contact person if any, all other
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`entities besides JJM whom Hat World has information has ever used or registered a trademark or
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`service mark that includes LIDS or LIDZ as all or part of the mark and relates in any way to the
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`sale of caps, hats, or headwear, or items for use with caps, hats, or headwear; and provide (in
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`response to Document Request #2) copies of all documents associated therewith including, but
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`4
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`not limited to, memos or notes generated by Hat World or communications between the entity
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`and Hat World.
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`RESPONSE:
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`In addition to the general objections, Opposer incorporates by reference its objections to
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`Document Request No. 2. Opposer also objects to this Interrogatory to the extent it calls for
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`information protected from discovery by the attorney-client privilege, the work product doctrine,
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`or Federal Rule of Civil Procedure 26(b). Opposer further objects to this Interrogatory to the
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`extent that it is unlimited in time.
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`Subject to these objections, Opposer responds that, in accordance with Federal Rule of
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`Civil Procedure 33(d), it will produce non-privileged documents within its possession, custody,
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`or control from which information responsive to this Interrogatory can be derived or ascertained
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`for the time period from 2012 to the present, to the extent such documents exist.
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`3. Identify by name, title (if any), address, and phone number all natural persons having
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`knowledge of the allegations made in paragraph 2 of the Notice of Opposition; and provide (in
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`response to Document Request #3) copies of all documents related to that knowledge.
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`RESPONSE:
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`In addition to the general objections, Opposer incorporates by reference its objections to
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`Document Request No. 3. Opposer also objects to this Interrogatory on the ground that it is
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`overbroad and unduly burdensome in that it seeks identification of “all natural persons,” many of
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`whom are not employed by or affiliated with Opposer. Moreover, Opposer objects to this
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`Interrogatory to the extent it calls for information protected from discovery by the attorney-client
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`privilege, the work product doctrine, or Federal Rule of Civil Procedure 26(b). Opposer further
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`5
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`objects to this Interrogatory to the extent that it prematurely calls for the disclosure of
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`information that Opposer may obtain through discovery or otherwise and/or that is not within its
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`possession, custody, or control, including information that may be within Applicant’s possession,
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`custody, or control.
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`Subject to these objections, Opposer responds that John DeWaal, Vice President of
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`Marketing for LIDS Sports Group; Eric Johnson, Executive Vice President, Retail for LIDS
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`Sports Group; and David Baxter, Chief Executive Officer of LIDS Sports Group, have
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`knowledge of the allegations made in paragraph 2 of the Notice of Opposition. These individuals
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`may be contacted through counsel for Opposer.
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`4. Identify by name, title (if any), address, and phone number all natural persons having
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`knowledge of the allegations made in paragraph 6 of the Notice of Opposition; and provide (in
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`response to Document Request #4) copies of all documents related to that knowledge.
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`RESPONSE:
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`In addition to the general objections, Opposer incorporates by reference its objections to
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`Document Request No. 4. Opposer also objects to this Interrogatory on the ground that it is
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`overbroad and unduly burdensome in that it seeks identification of “all natural persons,” many of
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`whom are not employed by or affiliated with Opposer. Moreover, Opposer objects to this
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`Interrogatory to the extent it calls for information protected from discovery by the attorney-client
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`privilege, the work product doctrine, or Federal Rule of Civil Procedure 26(b). Opposer further
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`objects to this Interrogatory to the extent that it prematurely calls for the disclosure of
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`information that Opposer may obtain through discovery or otherwise and/or that is not within its
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`possession, custody, or control, including information that may be within Applicant’s possession,
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`6
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`custody, or control.
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`Subject to these objections, Opposer responds that John DeWaal, Vice President of
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`Marketing for LIDS Sports Group; Eric Johnson, Executive Vice President, Retail for LIDS
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`Sports Group; David Baxter, Chief Executive Officer of LIDS Sports Group; and Jonathan
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`Williams, Creative Manager of LIDS Sports Group, have knowledge of the allegations made in
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`paragraph 2 of the Notice of Opposition. These individuals may be contacted through counsel for
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`Opposer.
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`5. In Reg. No. 2,174,170 why was the statement “NO CLAIM IS MADE TO THE
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`EXCLUSIVE RIGHT TO USE ‘LIDS’ APART FROM THE MARK AS SHOWN” made?
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`RESPONSE:
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`In addition to the general objections, Opposer objects to this Interrogatory to the extent it
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`calls for information protected from discovery by the attorney-client privilege, the work product
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`doctrine, or Federal Rule of Civil Procedure 26(b). Opposer further objects to this Request on the
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`ground that it calls for a legal conclusion.
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`Subject to these objections, Opposer responds that at the time the USPTO was reviewing
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`the application for the mark that is the subject of the registration, the USPTO required the
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`applicant to include the statement “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO
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`USE ‘LIDS’ APART FROM THE MARK AS SHOWN” in the application.
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`6. List all publications (by title, author, date, web address, and/or other identifying
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`information) that Hat World is aware of where the word “lids” is indicated as a synonym or
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`substantial synonym of a cap, hat, or headwear; and provide (in response to Document Request
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`#6) a copy of the relevant portion of each such publication.
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`7
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`RESPONSE:
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`In addition to the general objections, Opposer incorporates by reference its objections to
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`Document Request No. 6. Opposer also objects to this Interrogatory on the ground that it is
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`overbroad and unduly burdensome in that it seeks identification of “all publications.” Opposer
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`further objects to this Interrogatory on the ground that it is vague and ambiguous and fails to
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`identify the information sought with reasonable particularity as the terms “publications” and
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`“substantial synonym” are undefined.
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`Subject to these objections, Opposer responds that it is unaware of any publications, as it
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`understands that term, that indicate that “lids” is a synonym of “cap,” “hat,” or “headwear.”
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`7. Provide the product number and (in response to Document Request #7) a
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`representative photograph and advertisement of all caps, hats, or headwear sold or offered for
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`sale by Hat World that have the word “lace” associated therewith in any way, or which have any
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`type of representation of a hockey skate lace.
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`RESPONSE:
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`In addition to the general objections, Opposer incorporates by reference its objections to
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`Document Request No. 7. Opposer also objects to this Interrogatory on the ground that it is
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`overbroad and unduly burdensome in that it seeks identification of “all caps, hats, or headwear.”
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`Opposer further objects to this Interrogatory on the ground that it seeks the disclosure of
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`information that is neither relevant to any party’s claim or defense nor proportional to the needs
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`of the case, considering the importance of the issues at stake in the action, the amount in
`
`controversy, the parties’ relative access to relevant information, the parties’ resources, the
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`importance of the discovery in resolving the issues, and whether the burden or expense of the
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`8
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`proposed discovery outweighs its likely benefit.
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`Subject to these objections, Opposer responds that, through its over 875 LIDS retail
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`stores, since at least as early as 1993, has sold and offered for sale hockey-themed hats, caps,
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`headwear, apparel, and accessories. Opposer further responds that, in accordance with Federal
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`Rule of Civil Procedure 33(d), it will produce non-privileged documents within its possession,
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`custody, or control from which information can be derived or ascertained regarding Opposer’s
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`sale of hats, caps, headwear, and apparel in connection with which the term “lace” or a derivative
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`thereof is used and that have any representation of hockey skate laces.
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`8. For each of the following marks state a) when a natural person at Hat World first
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`became aware of the mark or a registration document associated with the mark, b) who the
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`natural person is (by name, title, address and phone number), c) what the person did when she/he
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`became aware, and d) provide (in response to Document Request #8) copies of all documents
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`related thereto: 1) LIVE LIDS; 2) SASSY LIDS ETC.; 3) UNSCRIPTED LIDS; 4) BILLY’S
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`LIDS FOR KIDS; 5) LID CRIB; 6) LACE LIDZ.
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`RESPONSE:
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`In addition to the general objections, Opposer incorporates by reference its objection

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