Galomb, Inc.
`523 N. 22“ Street
`Allentown, PA 18104
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92,040,085
`
`Mark: G02
`
`)
`)
`
`) )
`
`) )
`
`Galomb, Inc.
`
`Petitioner,
`
`v.
`
`UDS DIRECTORY CORP.
`
`_
`) —
`)
`02_02_2004
`)
`Respondent.
`u.s. Patent 8. TMOfclTM Mail Rep! 0:. #78
`
`PETITIONER’S MOTION TO COMPEL DISCOVERY
`
`GALOMB, Inc. (“Petitioner”) hereby moves pursuant to 37 C.F.R. 2.120(6) and 2.120(f)
`
`and Federal Rules of Civil Procedure 33,34, and 37 for entry of an Order compelling UDS
`
`Directory Corp. (“Respondent”) to: (1) answer, amend or supplement all interrogatories
`
`propounded by Petitioner, without objection; (2) immediately produce all requested
`
`documents, without objection.
`
`ARGUMENTS
`
`I. Introduction
`
`During the Discovery period Petitioner has propounded forty-three (43) Interrogatories and
`
`fourteen (14) requests for the production of documents to the Respondent, which are
`
`attached hereto and identified as EXHIBIT 1. The Respondent’s responses to these
`
`

`
`
`
`"~
`
`,
`
`.
`
`‘W
`
`-:
`
`
`
`.
`
`'
`
`‘.
`
`-
`
`»
`
`«
`
`,
`
`.
`
`;
`
`
`
`»
`
`*.«
`
`-.....-.‘..
`
`>1.
`
`_
`
`
`
`'
`
`.~_
`
`V
`
`»..
`
`4
`
`.
`
`y
`
`.x.
`
`.
`
`«
`
`.
`
`,
`
`‘
`
`._
`
`..
`
`‘.
`
`.
`
`_
`
`»
`
`,.
`
`-
`
`.
`
`__.
`
`_
`
`,
`
`,
`
`.,.
`
`.'
`
`.
`
`'
`
`'
`
`'..
`
`‘
`
`
`
`_
`
`,_
`
`'
`
`,
`
`.
`
`.
`
`.
`
`"
`
`
`
`.
`
`.
`
`.
`
`«
`
`I
`
`

`
`
`
`interrogatories and request for production of documents are also attached hereto and
`
`identified as EXHIBIT 2.
`
`Most of the Petitioner’s interrogatories have been objected to and/or not satisfactorily
`
`responded to by the Respondent. The Petitioner has attempted to resolve these matters
`
`directly with the Respondent before submitting this motion, but thus far has been
`
`unsuccessful. If however the Parties are able to resolve the matter before the TTAB rules
`
`on the motion, the Petitioner will advise the Board immediately of such resolution.
`
`II. Petitioner’s good faith attempt to resolve discovery issues
`
`Notwithstanding earlier phone conversations between Petitioner and Respondent, the
`
`Petitioner e-mailed the Respondent on 01/29/04 in an attempt to resolve the discovery
`
`issues without involvement of the Board. The Respondent did not respond to that e-mail, so
`
`the Petitioner mailed a letter to the Respondent dated 1/3 0/04 attempting the same, which is
`
`attached hereto and identified as EXHIBIT 3.
`
`III. Respondent’s objections to discoveg that relates to Respondent’s GOTO marks
`
`and GOTO domain names
`
`The Respondent has objected to certain interrogatories and document requests that seek
`
`information referring to and/ or relating to Respondent’s “GOTO” mark (applic.
`
`#75/548,658) and/ or Respondent’s “GOTO.COM” mark (applic. 75/548,665) and / or
`
`Respondent’s “GOTO” domain names on the grounds that they are “overly broa ” and/ or
`
`“unduly burdensome” and/ or “not reasonably calculated to lead to discoverable
`
`information” and/ or “irrelevant to any claim or defense of the parties”.
`
`

`
`
`
`»
`
`..
`":
`
`_
`.
`
`,‘
`
`>
`
`_
`
`.
`
`.~‘.
`
`'
`
`‘.
`
`-
`
`.-
`
`'
`
`.
`
`'
`
`I
`
`
`
`_
`
`_
`
`'
`
`
`
`
`
`
`
`
`..
`
`.
`
`V
`
`.,'
`
`.
`
`'
`
`'-
`
`'
`
`‘
`
`.
`
`'
`
`_
`
`A
`
`.
`
`.
`
`
`
`
`
`.
`
`.
`
`‘
`
`‘
`
`’
`
`A;
`'
`
`..
`
`’
`
`._l
`
`'
`
`‘,
`
`.
`
`.
`
`.
`
`~
`
`.>
`
`.
`
`"
`
`'
`
`'
`
`.
`
`'
`
`r~’~-'
`
`'
`
`,
`
`‘
`
`*.
`
`.
`
`.
`
`_
`
`-
`
`,'
`
`.
`
`.
`
`x
`
`.
`
`‘
`
`.
`
`.
`
`«
`
`.
`‘4«r
`
`.;
`
`.
`
`.
`
`-
`
`
`
`.
`
`
`
`..
`
`'
`
`-
`
`,
`
`’
`
`»
`
`-.
`
`‘
`
`.
`
`.
`
`_
`
`
`
`'
`
`~-‘
`-~-
`
`I
`
`‘
`
`
`"'
`
`.
`
`’
`‘.
`
`.
`
`-
`
`.
`
`
`
`.
`‘
`
`.
`
`.
`
`~
`
`
`
`‘H’
`
`v
`
`‘
`
`“ “
`
`'
`
`"
`
`
`
`"
`
`~.
`
`I
`
`'
`
`.
`
`
`
`
`
`:
`
`.,
`
`.-'
`
`_
`
`.
`
`-
`
`‘
`
`
`
`.‘
`
`.
`
`

`
`
`
`Notwithstanding Respondent’s objections, the Petitioner believes inquiries into these marks
`
`and domain names are highly relevant to this proceeding, since Petitioner’s case is
`
`significantly based on the information and belief that Respondent’s commercial use of the
`
`“G02” mark, the subject of this proceeding, substantially parallels the Respondent’s
`
`commercial use, or intended commercial use, of Respondent’s “GOTO” marks and
`
`Respondent’s “GOTO” domain names. It is further believed that Respondent has obtained
`
`rights in their GOTO trademarks and the GOTO.COM domain name by alleging confusion
`
`with their G02 mark. It is further believed that “GOTO” is a well-known generic
`
`instruction used in computer programming and on navigational devices, and “GO TO” is a
`
`generic phrase used in every day language. Some facts supporting these beliefs are as
`
`follows:
`
`1. Respondent’s answer to Interrogatory #3(a) states: “All of the domain names
`
`registered to the Respondent incorporate Respondent’s registered go2® trademark
`
`(Registration No.2,364,791) or Respondents GoTo TM trademark (Application No.
`
`75/548,665)”. See EXHIBIT 2 attached hereto.
`
`2. The Respondent has registered numerous domain names with a “goto” prefix and
`
`the “go2” prefix that otherwise mirror each other. For example, the Respondent has
`
`registered www.go2deptstores.com and www.gotodeptstores.com. See EXHIBIT 4
`
`attached hereto, which is a representative sample of the documents identified by
`
`Respondent with Bates Nos. RES 0001 — RES 0226, and were provided in response
`
`to Petitioner’s interrogatory No.1.
`
`

`
`
`
`3. Respondent’s Brief in Support of Respondent’s Motion for Summary Judgment
`
`dated April 30, 2003 argues; “. . .Go2 Systems has successfully enforced its go2
`
`mark against various companies infringing on the go2 mark (e.g., Overture
`
`Services, Inc. changed its name from GOTO, ceasing all use of the GOTO mark
`
`afier a settlement agreement was entered into with G02 Systems after a trademark
`
`dispute”. The argument was supported by the April 30, 2003 sworn declaration of
`
`Jay Bettinger stating: “Overture Services, Inc. changed its name from GOTO,
`
`ceasing all use of the GOTO mark after a settlement agreement was entered into
`
`with G02 Systems afier a trademark dispute.” See paragraph 16 of EXHIBIT 5
`
`attached hereto.
`
`. Overture Services, Inc. stated in their November 3, 2000 10-Q filing to the SEC;
`
`“..Go2 Systems, Inc. has recently threatened to file a claim against GoTo for
`
`violating its trademark rights.” See EXHIBIT 6 attached hereto.
`
`. Respondent has been served with numerous Cease and Desist letters that
`
`simultaneously refer to Respondent’s GO2 domain names and Respondent’s GOTO
`
`domain names. See EXHIBIT 7 (a representative sampling of available evidence)
`
`attached hereto.
`
`. GO TO defined as a “programming instruction” in the dictionary. GOTO is a non-
`
`source indicating instruction used on navigational devices. See EXHIBIT 8,
`
`attached hereto.
`
`

`
`
`
`.oe..
`
`....
`
`
`
`

`
`
`
`It should also be noted; to date the Respondent has not provided the Petitioner with any
`
`documentary evidence whatsoever indicating the Respondent and GoTo.com (now
`
`Overture Services, Inc.) were involved in a trademark dispute involving Respondent’s G02
`
`mark.
`
`IV. Petitioner’s first reguest to compel discoveg for: Interrogatories 1-43 and
`
`document reguests 1-14
`
`For reasons set forth Section HI above, the Petitioner respectfully requests the Boards
`
`determination that matters referring and/ or relating to Respondent’s “GOTO” mark
`
`(applic. #75/548,658) and the Respondent’s “GOTO.COM” mark (applic. 75/548,665) and
`
`Respondent’s “GOTO” domain names are properly within the scope of discovery for this
`
`proceeding because they relate to Respondent’s G02 mark, the subject of this proceeding.
`
`V. Petitioner’s second reguest to compel discovery for: Interrogatories 1-43 and
`
`document reguests 1-14
`
`Subject to Section IV of this motion, the Petitioner respectfiilly requests the Respondent be
`
`compelled to immediately produce all documents requested, without objection, and answer,
`
`amend or supplement all propounded interrogatories, without objection, that stand objected
`
`to or were not produced or fully answered because the said document request or
`
`interrogatory relates or refers to the Respondent’s “GOTO” mark (applic. #75/548,658)
`
`and/ or the Respondent’s “GOTO.COM” mark (applic. 75/548,665) and/ or Respondent’s
`
`“GOTO” domain names.
`
`

`
`...7
`
`
`
`

`
`
`
`VI. Petitioner’s third reguest to compel discovery for Interrogatories 1-43 and
`
`document reguests 1-14
`
`For those interrogatories and document requests objected to by the Respondent for
`
`allegedly calling for information that is “confidential”, “proprietary”, and/ or “protected by
`
`the attomey-client work product” or other “applicable privileges”, or because “it seeks to
`
`invade the work product privilege”, the Petitioner requests the Respondent be compelled to
`
`answer these interrogatories and provide all information requested to the extent that they do
`
`not compromise the claimed confidentiality, proprietary rights, and privileges of the
`
`Respondent. Along with a description of the documents, communications, or things not
`
`produced or disclosed in a manner that, without revealing information itself privileged or
`
`protected, will enable other parties to assess the applicability of the privilege or protection
`
`claimed. If the Respondent claims that certain information is confidential, proprietary, or
`
`privileged that the Petitioner disputes, the Petitioner reserves the right to seek further
`
`adjudication by the TTAB.
`
`VII. Petitioner’s fourth reguest to compel discovery for: Interrogatories 1-43 and
`
`document reguests 1-14
`
`For those interrogatories and document requests objected to by the Respondent for
`
`allegedly seeking information that is “unduly burdensome” and/ or “irrelevant to any claim
`
`or defense of the parties”, and/ or “not calculated to lead to discovery of admissible
`
`evidence”. The Petitioner respectfiilly requests the Respondent be compelled to fully
`
`answer these interrogatories, or be precluded from submitting their own evidence relating
`
`

`
`
`
`

`
`
`
`to the matter, and having all inferences drawn from such failure to answer be viewed in the
`
`light most favorable to the Petitioner.
`
`VIII. Petitioner’s fifth reguest to compel discoveg for: Interrogatories 1-43 and
`
`document reguests 1-14
`
`For those interrogatories and document requests objected to by the Respondent because
`
`certain words, phrases, definitions and/ or instructions used by the Petitioner are allegedly
`
`vague and/ or ambiguous, the Petitioner respectfully requests the Respondent be compelled
`
`to answer these interrogatories propounded, and if necessary, qualify their answer as to
`
`their own understanding of the word, phrase, definition or instruction the Respondent
`
`believes to be vague or ambiguous. Or in the alternative, compel the Respondent to seek
`
`clarification of the allegedly vague or ambiguous word, definition or instruction from the
`
`Petitioner before responding to the interrogatory. Petitioner reserves the right to seek
`
`further adjudication by the TTAB if Respondent’s qualification of an answer is believed to
`
`be unreasonable or disingenuous.
`
`IX. Petitioner’s sixth rcguest to compel discovery for: Interrogatories 1-43 and
`
`document reguests 1-14
`
`For those interrogatories and document requests objected to by the Respondent because
`
`Petitioner’s definitions and/ or instructions allegedly fail to comply with or impose
`
`obligations in excess of the requirements of the Federal Rules of Civil Procedure, the
`
`Petitioner respectfully requests Respondent be compelled to answer the interrogatories to
`
`the extent the Respondent believes they do not impose obligations in excess of the
`
`

`
`.
`
`V.
`
`
`
`

`
`
`
`requirements of the Federal Rules of Civil Procedure. The Petitioner further requests the
`
`Respondent be compelled to identify specifically each matter believed to be in violation of
`
`the FRCP and each FRCP rule believed to be violated by the said matter. Petitioner
`
`reserves the right to seek further adjudication by the TTAB if Respondent alleges any
`
`violations of the FRCP that are disputed by the Petitioner.
`
`X. Petitioner’s seventh reguest to compel discovegg for: Interrogatories 1-43
`
`Petitioner respectfully requests Respondent be compelled to answer the interrogatories in
`
`the manner requested rather than making general references to the same group of
`
`documents for multiple interrogatories, so that each document provided can be correlated to
`
`the particular interrogatory it responds to.
`
`The sworn declaration of David E. Galomb is also submitted in support of this motion and
`
`attached hereto as EXHIBIT 9.
`
`Respectful
`
`
`
`avid E. Galomb — President
`
`Date: /’»7/ ’° 7
`
`GALOMB, Inc.
`523 N. 22"“ Street
`
`Allentown, PA 18104
`Ph: 610-434-3283
`
`

`
`
`
` avid E. Gal
`
`- President
`
`GALOMB, Inc.
`
`
`
`I hereby certify this Petitioner’s Motion to Compel Discovery was
`prepared in accordance with the Federal Rules of Civil Procedure and
`Trademark Trial and Appeal Board rules and mailed via
`
`/ea‘ C1915 Mail on
`
`/A//0‘
`
`to:
`
`BOX TTAB — NO FEE Asst. Commissioner for Trademarks
`
`2900 Crystal Drive Arlington, VA 22202-3513
`
`And;
`
`I hereby certify that I have served a copy of this: Petitioner’s Motion to
`Compel Discovery upon Respondent by depositing one cop ther of in
`
`£ 3},
`
`,
`
`the United States Mail, First Class postage prepaid on
`
`addressed as follows:
`
`S. Lee Hancock
`
`UDS Directory Corp.
`18400 Von Karman, Suite 320
`Irvine, CA 92612
`
`

`
`
`
`EXHIBIT 1
`
`

`
`
`
`David E. Galomb — President
`Galomb, Inc. ‘K
`523 N. 22”“ Street
`Allentown, PA 18104
`TELEPHONE: 610-434-3283
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Galombdlnc.
`i
`Petitioner,
`3
`
`Cancellation No. 92,040,085
`
`)
`)
`)
`)
`
`g
`G02 Systems, Inc.
`‘
`Respondent.
`
`
`)
`)
`
`) )
`
`PETITIONERS REQUEST FOR PRODUCTION OF DOCUMENTS TO
`1
`RESPONDENT AND INTERROGATORIES
`
`Petitioner hereby requests that Respondent produce the following documents for
`Petitioner’s inspection and copying in accordance Federal Rules of Civil Procedure and
`Trademark Trial and Appeal Board rules, and answer all Interrogatories in writing, under
`oath as provided by said rules.
`
`DEFINITIONS
`
`1. “Documents”: Whenever used refers to all writings of any kind, including but not
`limited to memoranda, notes, pamphlets, books, computer printouts, fax
`documents, graphs, photographs, lists, video tapes and electronically stored
`records, whether stored on tapes, cassettes, diskettes, cd rom, computers, or other
`similar devices.
`
`2. “Conceming”: Whenever used includes without limitation, constituting, referring
`to, alluding to, responding to, connected with, commenting upon, in respect to,
`about, regarding, discussing, showing, describing, reflecting, or analyzing.
`
`3. “Party”: Whenever used includes without limitation any individual, company,
`corporation, private or public organization, government agency, or other legal
`entity.
`
`

`
`
`
`INSTRUCTIONS
`
`A. This request applies to all documents in your possession, custody, or
`control or in the possession of, custody, or control of persons acting or
`purporting to act on your behalf, including, but not limited to, your
`employees, consultants, attorneys, and accountants.
`
`Since the Respondent may have answers to some interrogatories that
`include lengthy lists, the Respondent is requested to answer such questions
`on an armexed paper or papers, and in the space provided below the
`interrogatory, identify the paper or papers where is answer is stated.
`
`. To avoid redundancy and inconvenience to the Respondent, the
`Respondent may refer to other answers already stated, rather than restate
`the same answer. For example, if one interrogatory was answered by
`providing a list of domain names labeled “Item A”. Another interrogatory
`might be answered: “All domain names listed in Item A except for ...... ..”
`The Petitioner, however, reserves the right to request all Interrogatories be
`directly answered, should there be any ambiguity or confusion resulting
`from such referring.
`‘
`
`REQUEST FOR PRODUCTION OF DOCUMENTS
`
`Copies of all cease and desist letters identified in Interrogatory #15 and #16.
`2. Proof of registration, both domestic and foreign, for all Trademarks and Service
`marks of the Respondent.
`
`INTERROGATORIES
`
`1. Please identify, in alphabetical order and by number, all domain names registered
`to the Respondent, and;
`
`l a) The date each domain name was registered to the Respondent.
`
`

`
`
`
`2. Please identify, in alphabetical order and by number, all domain names that once
`were, but no longer are, registered to the Respondent. Including, but not limited to
`any domain name that Respondent has cancelled, transferred, or let expire.
`I4
`
`3. Please identify, in alphabetical order and by number, each domain name
`registered to the Respondent that Respondent believes to incorporate a Trademark
`or Service mark of the Respondent. For each domain name identified, also
`identify:
`
`a) The mark(s) believed to be incorporated in the domain name.
`b) The registration number(s) and/ or application number(s) of the mark(s)
`incorporated in the domain name.
`
`4. Please identify, in alphabetical order and by number, each domain name
`registered to the Respondent that the Respondent believes to incorporate a
`Trademark or Service mark federally registered in the United States to a party
`other than the Respondent. For each domain name identified also identify:
`
`a) The mark believed to be incorporated in the domain name.
`b) The federal registration number(s) of the mark.
`c) The name, address, and phone number of the mark owner.
`
`

`
`
`
`. Please identify, in alphabetical order and by number, the name, address, and
`phone number of every party who has a commercial affiliation with the
`Respondent. Also state for each party answered:
`
`a) A description of the commercial affiliation
`4 b) A description of all documents that exist concerning the affiliation
`
`. Has the Respondent expressly notified any party owning a federally registered
`U.S. Trademark or Service mark that the Respondent has registered or intends to
`register and/or is commercially using or intends to commercially use a domain
`name or domain names that incorporate the said parties said federally registered
`Trademark or Service mark?
`
`If yes, please identify each party in alphabetical order and by number as follows:
`3
`a) The name, address, and phone number of the notified party.
`b) The U.S. federal registration number(s) of the notified parties mark
`c) The domain name(s) of notice.
`d) The date notice was served.
`e) A description of the specific notice given.
`0 A description of all documents that exist concerning the notice.
`
`.
`%
`‘
`
`. Has any party owning a federally registered U.S.Trademark or Service mark
`expressly authorized the Respondent to register and/or commercially use a
`domain name and/or domain names that incorporate the said parties said federally
`registered Trademark or Service mark?
`
`lf yes, please identify each party in alphabetical order and by number as follows:
`’
`a) The name, address, and phone number of the authorizing party.
`b) The U.S. federal registration number(s) of the authorizing parties mark.
`c) The domain name(s) authorized.
`d) The date authorization was granted.
`e) A description of the specific authorization granted.
`0 A description of all documents that exist concerning the authorization.
`
`

`
`
`
`8. Has any party owning a federally registered U.S.Trademark or Service mark
`expressly refused to authorize the Respondent to register and/or commercially use
`azdomain name or domain names that incorporate the said parties said federally
`registered Trademark or Service mark?
`
`If yes, please identify each party in alphabetical order and by number as follows:
`'
`a) The name, address, and phone number of the refusing party.
`b) The federal registration number(s) of the refusing parties mark.
`c) The domain name(s) refused.
`d) The date refusal was made.
`e) A description of the specific refusal stated.
`f) A description of all documents that exist concerning the refusal.
`
`9. Please identify, in alphabetical order and by number, all domain names registered
`to the Respondent, if any, that the Respondent does not have unilateral control of
`its commercial use by the Respondent. Also identify the following with each
`domain name answered:
`
`a) The name, address, and phone number of each party having any control in
`the Respondents commercial use of the domain name.
`b) A description of all documents that exist concerning the commercial use
`of the domain name.
`
`10. Please identify, in alphabetical order and by number, all domain names, if any,
`registered to the Respondent, that do not identify the Respondent as the sole
`source of goods and services provided.
`
`U:
`
`

`
`
`
`1 1. Please identify, in alphabetical order and by number, all domain names, if any,
`registered to the Respondent that Respondent believes to incorporate a famous
`Tgrademark or Service mark. With each domain, also identify:
`
`a) The famous Trademark(s) or Service mark(s) believed to be incorporated
`in the domain name
`
`b) The federal registration number(s) of the famous Trademark(s) or Service
`.mark(s).
`
`12. Please identify, in alphabetical order and by number, all domain names, at any
`time registered to the Respondent, that have at any time been publicly displayed
`on any Respondent website.
`
`13. Please identify, in alphabetical order and by number, all domain names, at any
`time registered to the Respondent, that have at any time resolved to any
`Respondent website when typed into an lntemet search engine or browser.
`
`14. Please identify all litigation the Respondent is, and has been a party to concerning
`to the Respondents GO2 Trademark. lncluding, but not limited to civil litigation,
`Trademark oppositions and petitions to cancel, UDRP proceedings for domain
`name disputes.
`
`

`
`
`
`l 5. Please identify, in alphabetical order and by number, the name, address, and
`phone number of every party the Respondent has served with a cease and desist
`letter or other notice alleging Trademark infringement of the Respondents G02
`niark. For each party identified, also state:
`
`a) A description of the allegedly inliinging marl((s_) and actions.
`
`J6. Please identify, in alphabetical order and by number, the name, address, and
`phone number of every party that has at anytime served upon the Respondent a
`cease and desist letter or other notice alleging the Respondents Trademark
`irifringernent on the serving parties mark.
`For each party identified, also state:
`
`a) A description of the Respondent: allegedly infringing mark(s) and
`actions.
`
`I 7. Please iclentify all Trademarks and Service marks of the Respondent, both
`domestic and foreign, that Respondent uses in or intends to use in connection with
`the goods and servxlces of the Respondent. If the identified Trademark or Service
`mark is registered, identify it by stating the registration number. If registration
`‘nzis been applied for but not yet registered, identify it by stating the application
`number.
`
`18. Please provide a description of all evidence and proof the Respondent has
`concerning the Petitioners alleged infringement of Respondents mark‘?
`
`.«-"“/
`J,/_" ---'”\,
`/'
`__...__(:__:_.__.._
`p _
`V
`_._.___..
`
`. Gale-nib
`—’
`/;,..-"Da\4'lCl
`" ClAl,C)MB. Inc.
`
`l ltcreb) certify this l’l:'Tl’l'l(')h’l3RS REQIJE-LST FOR, i’R(')D'L.‘C"l‘lO:\’ OF DOCUMENTS
`H”) RlE..'\‘l’(‘,N.')l'-.*-.‘T A_V'If> IN’! L RJ{<)U.-\'l”()RlES was plcpiiléd m zduulirtlhllct‘ with the
`Federal Rules nt'L.‘i»il Procedure and lr em‘
`‘ Trial and Appeal Board rules and mailed
`via L'I.\‘prcSS Mail on
`_4.'»’ fig to Respond:-ms council:
`l*-'.NC'BBEi .\'lA
`l;.? ,(.‘L.E[::\'.
`Ul.::‘J(, LLZ-’.
`L_\'nd.aJ
`.7.adra—Symz:s
`6.‘-.1“: r\.e\‘-‘purl Center Drive
`‘sixteenth Floor
`Nlcwpnrt Rr'm.‘.h, CA 92600
`
`

`
`
`
`Galomb. Inc.
`523 N. 22"‘ Street
`Allentown, PA 18104
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Galomb, Inc.
`
`Petitioner,
`
`V.
`
`G02 Systems, Inc.
`
`Cancellation No. 92,040,085
`
`Mark: G02
`
`)
`
`)
`)
`)
`)
`)
`)
`)
`
`Respondent.
`
`)
`
`PETITIONER’S SECOND SET OF INTERROGATORIES (NOS. 19-301
`
`Petitioner, GALOMB, Inc. (“Petitioner”), pursuant to Rule 2. l20(d) of the Trademark
`Rules of Practice, 37 C.F.R. Section 2. l20(d), and Rule 33 of the Federal Rules of Civil
`Procedure, hereby serves upon the Respondent, G02 SYSTEMS, INC. (“Respondent”),
`the following Interrogatories numbered 19 to 30, to be answered separately and fiilly, in
`writing and under oath within 30 days of service hereof in accordance with Rule 2. 120(a)
`of the Trademark Rules of Practice and Federal Rule 33 and to be supplemented from
`time to time as appropriate in accordance with Federal Rule 26(e).
`
`DEFINITIONS
`
`A. The term “Respondent” shall mean G02 SYSTEMS, INC. and any present or
`former ofiicer, director, servant, employee, agent, attorney or other representative
`acting on its behalf, and shall include any parent, subsidiary, division, successor,
`predecessor or afliliate either within the United States or a foreign country.
`
`B. The term “Petitioner” shall mean GALOMB, Inc., its owners, oficers, agents,
`
`and employees.
`
`C. The term “person” shall include both natural persons and corporate or other
`business entities, whether or not in the employ of the Respondent, and the acts
`and knowledge of a person are defined to include the acts and knowledge of that
`persons, directors, officers, employees, members, representatives, attorneys, and
`agents.
`
`D. The term “you” shall mean the party or person to whom the interrogatory is
`propounded, all servants, agents, attorneys, and all other representatives, and
`
`

`
`
`
`persons over whom the person or party to whom the interrogatory is propounded
`has the right to or does control or direct any activities.
`
`. The term “document” shall mean the original and all copies (whether or not
`different from the original because of notes made on or attached thereto),
`including but not limited to written, printed, typed and visually or aurally
`reproduced material of any kind in any media, whether or not privileged, such as
`(by way of example and not by way of limitation) letters, notes, memoranda,
`summaries, minutes, reports, interoflice communications, invoices, purchase
`orders, records, bills, contracts, agreements, orders, receipts, drawings or
`sketches, photographs, tapes or discs capable of being electronically or
`mechanically read, advertising or promotional literature, operating or instruction
`manuals, cables or telegrams, e-mail, computer software, microfilm, videotapes,
`tape or other recordings, and test data.
`
`The term “thing” shall mean all tangible objects of any type, nature, composition
`or construction.
`
`. A thing or document “referring or relating” to or which “relate” or “refer” to any
`given subject means any thing or document that constitutes, comprises, embodies,
`contains, identifies, reflects, refers to, states, deals with, or is in any way pertinent
`to that subject, including without limitation, documents concerning the
`preparation of other things and documents.
`
`. The term “Respondent’s Marks” shall mean and refer to each mark the
`Respondent claims rights in or to that are comprised of or contain the tem “Go2”
`or “GOTO” as a constituent part thereof, including the mark “G02” which is the
`subject of Respondent’s United States Trademark Registration No. 2,364,791 and
`of these cancellation proceedings, and including the mark “GoTo” which
`Respondent has indicated in response to Petitioner’s Interrogatory No.3 is
`identified at the USPTO as application number 75/548,665.
`
`The term “Respondent’s G02 Marks” shall mean and refer to each mark the
`Respondent claims rights in or to that are comprised of or contain the term “G02”
`as a constituent part thereof, including the mark “Go2” which is the subject of
`Respondent’s United States Trademark Registration No. 2,364,791 and of these
`cancellation proceedings.
`
`The term “Respondent’s GOTO Marks” shall mean and refer to each mark the
`Respondent claims rights in or to that are comprised of or contain the term
`“GOTO” as a constituent part thereof, including the mark “GoTo” which
`Respondent has indicated in response to Petitioner’s Interrogatory No.3 is
`identified at the USPTO as application number 75/548,665.
`
`, The term “Respondent’s Domain Names” shall mean and refer to any domain
`names registered by or to or on behalf of the Respondent that are comprised of or
`
`Ix)
`
`

`
`
`
`otherwise contain the terms “G02” or “GOTO” as a component of the domain
`name.
`
`. The term “Respondent’s G02 Domain Names” shall mean and refer to any
`domain names registered by or to or on behalf of the Respondent that are
`comprised of or otherwise contain the term “G02” as a component of the domain
`name.
`
`. The term “Respondent’s GOTO Domain Names” shall mean and refer to any
`domain names registered by or to or on behalf of the Respondent that are
`comprised of or otherwise contain the term “GOTO” as a component of the
`domain name.
`
`. The term “Respondent’s Services” shall mean and refer to all and any goods and
`services offered by or on behalf of Respondent under any of Respondent’s Marks
`and/or Respondent’s Domain Names.
`
`GENERAL INSTRUCTIONS
`
`In multi-part interrogatories, the separate parts of such interrogatories are to be
`read in the context of the entire interrogatory, but each part is to be answered
`separately.
`All requests contained in the following interrogatories to identify a person are to
`be answered by providing sufficient informationto enable the undersigned to
`contact the person by telephone and mail, and serve legal documents on such
`person. If such a person is a natural person, state his or her:
`a.
`fiill name;
`b. present employer, occupation, and position;
`c.
`a brief description of the job responsibilities of such person;
`d. current business address and residence address, including telephone
`
`numbers; and
`
`If such person is other than a natural person, state:
`a.
`its designation or fiill name;
`b.
`the legal classification of the entity (e.g., partnership, corporation, etc.),
`providing the state of incorporation where appropriate;
`the principal place of business
`the current or last known address and telephone number of the entity
`any other information reasonably necessary to permit efiicient contact
`with the entity; and
`a briefdescription of the nature of business of such person
`
`c.
`d.
`e.
`
`F.
`
`lf you are unable to answer any of the following interrogatories in full, answer to
`the extent possible specifying the exact nature of the information you are unable
`to provide and the reasons you are unable to provide it. If the response to any
`
`L4
`
`

`
`
`
`interrogatory is subject to any qualification, specify the exact nature and extent of
`the qualification.
`
`4.
`
`If you claim that any information requested is privileged, provide all information
`falling within the scope of the interrogatory that is not privileged, and identify
`with sufficient particularity for purposes of Motion to Compel a Response or
`Production each item of information, document or thing, separately, with respect
`to which you claim a privilege, and state:
`
`a.
`b.
`c.
`
`d.
`e.
`
`the grounds on which the privilege is claimed;
`the source of the information and/or author of the document;
`each person to whom the information or document or copy thereof was
`disclosed;
`the date of the information or document;
`the general subject matter of the information or document.
`
`5. Respondent’s responses to the following interrogatories shall be promptly
`supplemented to include subsequently acquired information in accordance with
`Rule 26(e) of the Federal Rules of Civil Procedure.
`
`INTERROGATORIES (NOS. 19-301
`
`INTERROGATORY ‘No. 19:
`
`State the total number of Cease and Desist letters referring or relating to Respondent’s
`Marks or Respondent’s Domain Names that have been served by the Respondent.
`
`INTERROGATORY NO. 20:
`
`State the total number of Cease and Desist letters referring or relating to Respondent’s
`Marks or Respondent’s Domain Names that have been served to the Respondent.
`
`INTERROGATORY NO. 21:
`
`Identify each person Respondent has served with a Cease and Desist letter relating or
`referring to Respondent’s Marks or Respondent’s Domain Names.
`
`

`
`
`
`INTERROGATORY NO. 22:
`
`Identify each person who has served Respondent with a Cease and Desist letter relating
`or referring to Respondent’s Marks or Respondent’s Domain Names.
`
`INTERROGATORY NO. 23:
`
`For each Cease and Desist letter served to or served by Respondent referring or relating
`to Respondent’s Marks or Respondent’s Domain Names, identify each person who has
`substantive knowledge of the circumstances relating to each said Cease and Desist letter.
`
`INTERROGATORY NO. 24:
`
`Identify all goods and services included in Respondent’s Services.
`
`INTERROGATORY N0. 25:
`
`Identify the date Respondent’s Services were first commercially offered.
`
`INTERROGATORY NO. 26:
`
`Identify each of Respondent’s Marks.
`
`INTERROGATORY NO. 27:
`
`Identify each date each mark of Respondent’s Marks was first used commercially by
`Respondent.
`
`INTERROGATORY NO. 28:
`
`Identity each and every distinction, if any, between the goods and services Respondent
`offers or intends to olfer under Respondent’s GOTO Marks and the goods a