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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`We
`
`,._
`
`Cancellation Proceeding No. 92 041036
`
`REGISTRANT’S MEMORANDUM OF
`
`LAW IN SUPPORT OF ITS OPPOSITION
`
`TO PETITIONER’S CROSS-MOTION TO
`
`STRIKE REGISTRANT’S OBJECTIONS
`
`AND COMPEL RESPONSES TO
`
`DISCOVERY REQUESTS AND IN
`FURTHER SUPPORT OF REGISTRANT'S
`
`CROSS-MOTION TO STRIKE
`
`PETITIONER'S OBJECTIONS AND
`
`COMPEL RESPONSES TO DISCOVERY
`REQUESTS
`
`) ) ) ) ) )
`
`§
`
`) ) ) ) )
`
`INTEGRATED ELECTRICAL SERVICES,
`INC.
`
`Petitioner,
`
`V-
`
`INTERNATIONAL ENERGY. SERVICES
`
`U.S.A., INC.
`
`Registrant.
`
`International Energy Services, Inc. ("Registrant") submits this Memorandum Of Law In
`
`INTRODUCTION
`
`Support Of Its Opposition To Petitioner’s Cross-Motion To Strike Registrant’s Objections And
`
`Compel Responses To Discovery Requests And In Further Support Of Registrant's Cross-
`
`Motion To Strike Petitioner's Objections And Compel Responses To Discovery Requests.
`
`I.
`
`PETITIONER'S CROSS-MOTION TO COMPEL INTERROGATORY RESPONSES SHOULD BE
`SUMMARILY DENIED
`
`Petitioner neither contradicts nor cites to any contrary case law in its opposition to
`
`“Registrant’s Cross-Motion” to Strike Petitioner’s Objections and Compel Responses to
`
`Discovery Requests. With no legal or factual basis to oppose Registrant’s Cross-Motion,
`
`Petitioner instead attempts to obfuscate the issues by improperly filing its own Cross-Motion to
`
`Strike Registrant’s Objections and Compel Responses to Discovery Requests (“Petitioner’s
`
`{M:\4480\71194\00025478.DOC *448 07 1194 * }
`
`

`
`fl‘-“H?122"27-.-:."'~.-.'.:..,a.‘
`
`
`
`-.‘§3?'?.t‘-‘"1§:72'-3.172?’
`
`Cross-Motion”) to allegedly ''level the playing field." (Pet. Cross-Motion at 2)‘ Petitioner’s
`
`sleight of hand should be seen for what it truly is -- a silent admission that it cannot establish
`
`excusable neglect. By filing its motion simply to "level the playing field," Petitioner has
`
`admitted that Petitioner’s Cross-Motion is completely devoid of merit and nothing more than a
`
`"tit for tat" move.
`
`Indeed, prior to the filing of Petitioner’s Cross-Motion, Petitioner had
`
`never complained about the sufficiency of Registrant's timely served interrogatory responses.
`
`The fact that Petitioner never once previously objected to the sufficiency of Registrant's
`
`interrogatory responses is not only indicative of the fact that the claims in Petitioner's Cross-
`
`Motion are completely lacking in merit, but also it renders the filing of the motion itself
`
`improper. The Board's Rules make it plainly clear that before filing a discovery motion, the
`
`moving party must make a "good faith effort, by conference or correspondence, to resolve
`
`with the other party .
`
`.
`
`. the issues presented in the motion." 37 C.F.R. 2.120(e); TBMP §
`
`523.02. Unlike Registrantz which attempted to resolve Petitioner's objections by email and
`
`telephone3, Petitioner made no effort whatsoever to resolve what it now alleges are improper
`
`objections to its interrogatory requests. Under the circumstances, the Board should summarily
`
`deny Petitioner's Cross-Motion. See, e.g., Giant Food Inc. v. Standard Terry Mills, Inc., 231
`
`' Petitioner's Response to Registrant's Cross-Motion to Strike Petitioner's Objections and Compel
`Responses to Discovery Requests and Petitioner's Cross-Motion to Strike Registrant's Objections and Compel
`Responses to Petitioner's First Set of Interrogatories,
`is hereafter referred to as "Pet. Cross—Motion."
`Since
`Petitioner failed to number any of the pages of its Cross-Motion, Registrant shall treat the page which begins with
`the heading "Introductory Statement" as page 1.
`2 Petitioner takes issue with Registrant's statement (in Registrant’s brief in opposition to Petitioner’s
`Motion to Re—open and Extend Discovery by Four Months) that "Petitioner's actions throughout this proceeding to
`date indicate that it believes that the Board's rules and the Federal Rules of Civil Procedure do not apply to it,"
`yet Petitioner's failure to comply with Rule 2.120(e) is just the latest example of Petitioner's blatant disregard for
`these rules.
`
`3 See Miller Dec. 1121; Exs. P, U. and V. Exhibits A through R are attached to the Declaration of Randi
`S. Miller which was submitted on June 2, 2003 ("Miller Dec."). Exhibits S through V are attached to the
`Supplemental Declaration of Randi S. Miller ("Mi11er Supp. Dec.") submitted herewith.
`
`{M : \4480\7l 194\00025478 . DOC Illlfllllllllllllllllllllllllllllllllllllllllllllll }
`
`

`
`U.S.P.Q. 626, 632 (TTAB 1986) (Denying motion to compel for failure to make a good faith
`
`effort to resolve the issues raised in the motion); Ford Motor Co. v. Shelby Int '1, Inc., 193
`
`U.S.P.Q. 236 (TTAB 1986) (same).
`
`In light of Petitioner's failure to even attempt to comply
`
`with Rule 2.120(e), Registrant has not addressed the "merits" of Petitioner's Cross-Motion.
`
`Should the Board determine that notwithstanding Petitioner's flagrant disregard for Rule
`
`2.120(e), it will nonetheless consider Petitioner's Cross-Motion, Registrant respectfully
`
`requests an opportunity to specifically address the substance of Petitioner's Cross-Motion.
`
`Registrant respectfully requests that Petitioner’s Cross-Motion to compel interrogatory
`
`responses be denied without consideration for failure to comply with Rule 2.120(e).
`
`II.
`
`REGISTRANT'S CROSS-MOTION T0 STRIKE PET1TIONER'S OBJECTIONS AND COMPEL
`
`DISCOVERY RESPONSES SHOULD BE GRANTED
`
`As Petitioner acknowledged, "much of [Petitioner's memorandum] includes portions of
`
`a previously filed reply on June 13, 2003. "
`
`(Pet. Cross-Motion at 1).
`
`Indeed, because
`
`Petitioner has no excuse for failing to timely respond to Registrant's discovery requests, it has
`
`attempted to distract the Board by repeating its excuses for its other failures. Registrant does
`
`not wish to burden the Board by repeating previously submitted arguments, but it feels that it
`
`must briefly address Petitioner’s purported excuses.
`
`In an effort to now show excusable neglect for its failure to timely respond to
`
`Registrant's discovery requests“, to seek additional discovery and to explain the closure of the
`
`“ Petitioner implies that Registrant mislead the Board into thinking that Registrant did not know why
`Petitioner's discovery responses were untimely.
`(Pet. Cross-Motion at 4). Registrant did not intend to mislead
`the Board, if in fact it did. Furthermore, Petitioner has itself attempted to mislead the Board by failing to disclose
`all of the relevant facts: First, Petitioner failed to disclose that
`its explanation for the delay in sending its
`(continued. . .)
`
`{M:\4480\71 194\00025478.DOC IllllllIlllllllllllllllllllllllllllllllfllllll }
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`

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`discovery period, Petitioner seeks to pin its failures on Registrant. Petitioner lists 8 "excuses5"
`
`which together do not amount to excusable neglect for any of its failures.
`
`Individually, most
`
`have nothing whatsoever to do with the only issue under consideration in connection with
`
`Registrant’s Cross-Motion.
`
`(Pet. Cross—Motion at 2-3). Each are addressed briefly below:
`
`°"passing of the discovery deadline without either side ever answering or
`
`responding to the other's written discovery": Except for depositions which must be taken
`
`during the discovery period, parties may answer written discovery requests after discovery has
`
`closed so long as they are answered within the 30 day period proscribed by Federal Rule of
`
`Civil Procedure 33 or 34 or within a time agreed upon by the parties. See TBMP § 403.02
`
`(written discovery may be served through the last day of discovery "even though the answers
`
`thereto will not be served until after the discovery period has closed") (citing cases).
`
`In
`
`addition, "the resetting of a party's time to respond to an outstanding request for discovery will
`H
`
`not result in the automatic rescheduling of the discovery and/or testimony periods .
`
`.
`
`.
`
`.
`
`TBMP § 403.04. Thus, the fact that extensions had been granted which resulted in discovery
`
`responses being due shortly after the close of discovery is of no import.
`
`It also has nothing to
`
`(. . .continued)
`Responses was no_t an explanation for its failure to serve them prior to its deadline to do so. Rather, E
`Registrant advised Petitioner that its Responses were late and its objections had been waived, Petitioner promised
`to serve them within a few days and then did not do so for more than two weeks.
`In the interim, in response to an
`inquiry from Registrant (sent after about a week and a half had passed), Petitioner explained that the Responses
`had been ready for a week, but that the verification had not yet been signed. Second, Petitioner failed to disclose
`to the Board that this explanation was not given to Registrant intentionally, but rather as a result of Petitioner’s
`counsel’s inadvertent transmission of an internal email to Registrant.
`(See Exhibit W).
`5 These "excuses" were also made by Petitioner in its Reply Memorandum in Support of Petitioner's
`Motion to Re—Open and Extend Discovery by Four Months. See Petitioner's June 13, 2003 Reply Memorandum
`at 6-7.
`
`{M:\4480\71 194\00O25478.DOC lllllllIilllIllllllllllllllllllllllllllllllllllllll }
`
`

`
`
`
`do with why Petitioner did not respond to Registrant’s discovery requests prior to the
`
`expiration of its final extension.
`
`°"the tenor associated with granting the extensions implied an extension of the
`
`discovery deadline": As discussed in detail in Registrant's Memorandum in Opposition to
`
`Petitioner's Motion to Re-open Discovery ("Reg. Opp. Mem. "), this does not constitute
`
`excusable neglect. See P0lyJ0hn Enter. Corp. v. I-800—T0z'lets, Inc., 61 U.S.P.Q.2d 1860,
`
`1861 (TTAB 2002) (finding no excusable neglect "because [t]he professed understanding of
`
`petitioner's counsel regarding the extension of testimony periods stands in stark contrast to the
`
`clear requirements for resetting the trial calendar that are unequivocally set forth in Rule
`
`2.l20(a)."); Reg. Opp. Mem. at 10-11. Not surprisingly, Petitioner does not cite to a single
`
`case to support its allegation that reliance on the granting of prior extensions constitutes
`
`excusable neglect. Petitioner's position is also entirely incomprehensible in View of the fact
`
`that it was Petitioner which first refused to grant any additional extensions. See Ex. P.
`
`It can
`
`hardly be surprised by Registrant's unwillingness to further extend matters given Petitioner's
`
`refusal of Registrant’s request for an extension of time to respond to Petitioner's discovery.
`
`Moreover, Petitioner’s belief that it could deny an extension of time to Registrant and
`
`simultaneously assume that it could take an additional month to respond to Registrant’s
`
`discovery requests without Registrant’s consent defies the laws of logic.
`
`°"neither side would expect the other to take depositions without responses to
`
`interrogatories and production in response to document requests": The parties never
`
`discussed the taking of depositions and, therefore, Petitioner's assumptions about Registrant's
`
`plans are unfounded. Moreover, even if true, Petitioner points to no case law supporting its
`
`{M:\4480\71 l94\0OO25478.DOC llllllIilllIllllllllllflllllllllllllllllilllllll }
`
`

`
`contention that this would constitute excusable neglect. Furthermore, regardless of the parties’
`
`respective expectations, Petitioner alone bears the burden of prosecuting this action. Finally,
`
`Petitioner has not explained what this statement has to do with its failure to timely serve
`
`responses to Registrant’s discovery requests.
`
`°"neither side has produced documents, despite talking about delaying responding
`
`in lieu of negotiating a settlement“: This statement does not even make sense. Moreover,
`
`Petitioner's reliance on the fact that Registrant had not produced documents is mystifying in
`
`light of the fact that Petitioner has never served any document requests and, therefore,
`
`Registrant was not under any obligation to produce documents. Finally, it is because
`
`Petitioner has not produced any documents and has entered numerous objections to Registrant’s
`
`discovery requests that Registrant filed its Cross-Motion. Thus, to the extent that this
`
`statement is comprehensible, it is merely descriptive of the situation and not an excuse for
`
`Petitioner’s failure to timely respond to Registrant’s discovery requests.
`
`°"change in personnel at Petitioner's headquarters": Until it filed its Memorandum
`
`in Support of its Motion to Re-open and Extend Discovery by Four Months,7 Petitioner had
`
`never advised Registrant that there had been a change in personnel at Petitioner's headquarters
`
`or that this change impeded Petitioner's ability to proffer its long promised settlement offer,
`
`to accept copies of Petitioner's
`5 Petitioner suggested and, on May 22, 2003, Registrant agreed,
`documents rather than traveling to Texas to review the originals. Ex. S. Nonetheless, Petitioner has still neither
`produced any documents nor provided any reason why it has not yet done so. Since Petitioner has not alleged that
`it has a large quantity of documents that would be burdensome to copy, Registrant can only conclude that
`Petitioner’s refusal to send them to Registrant’s counsel is based solely on its desire to cause Registrant to bear the
`extra expense associated with examining them in Texas.
`its
`7 Although Petitioner’s motion purports to seek only a fo_ur month extension of discovery,
`memorandum includes a chart showing that it is actually requesting a _fiv_e month extension of both the discovery
`and the testimony periods.
`
`{M : \4480\7l 194\OOO25478 . DOC lllllllllllllllllllllllllllllllllllfllllllllll }
`
`

`
`serve additional discovery, and timely respond to Registrant's discovery or that it impacted on
`
`the close of discovery. This after the fact lawyers‘ argument cannot be sufficient to establish
`
`excusable neglect.
`
`In addition, Petitioner has neither indicated exactly when this alleged
`
`change in personnel occurred nor explained how, under these circumstances, its counsel was
`
`able to obtain authorization to submit a settlement proposal and refuse to grant an extension of
`
`time to Registrant, while simultaneously being unable to obtain authorization to timely request
`
`an extension of the discovery period and an extension of time to respond to Registrant’s
`
`discovery requests.
`
`°"the parties focus on a settlement agreement rather than discovery": This is the
`
`only excuse offered by Petitioner that is at least arguably relevant to Registrant’s Cross-
`
`Motion. However, as discussed in Registrant's Opposition Memorandum (see Reg. Opp.
`
`Mem. at 9-10), settlement talks also do not constitute excusable neglect. See Atlanta—Fult0n
`
`County Z00, Inc. v. DePalma, 45 U.S.P.Q.2d 1858, 1859 (TTAB 1998) (stating that "it is
`
`well—established that the mere existence of settlement negotiations alone does not justify a
`
`party's inaction or delay") (citing cases).
`
`°"Registrant's inability to timely provide Petitioner with an answer on
`
`acceptability of Petitioner's Rule 408 Settlement Offer": This excuse amounts to nothing
`
`more than the "pot calling the kettle black." It took Petitioner nearly 5 months to make its
`
`proposal, yet it blames its multiple failures on the fact that Registrant had not responded to its
`
`proposal within 3 weeks. See Miller Dec. 1[ 19. Moreover, Petitioner does not explain how
`
`this has anything to do with Petitioner’s failure to timely respond to Registrant’s discovery
`
`requests.
`
`{M:\4480\71 194\00025478 . DOC lllllllllllllllllllllllllllllllllllllllllllllllllll }
`
`

`
`52
`
`°"Registrant‘s repeated promises early on in this case, but failure to provide
`
`Petitioner with a single specimen showing Registrant's use of the IES mark .
`
`. .This
`
`failure to deliver also contributed to the delay in Registrant receiving Petitioner's Rule
`
`408 settlement offer of April 1, 2003.” This is perhaps the most bizarre of Petitioner's
`
`reasons. Petitioner originally requested a specimen because, in November 2002, it proposed
`
`that Registrant should narrow the identification of services in the subject registration and it
`
`wanted to review information about the services that Registrant offers in regard to that
`
`proposal. However, Registrant later advised Petitioner that it would not consider any proposal
`
`which required that Registrant's identification be narrowed. Thereafter, Petitioner never again
`
`raised the issue of needing a specimen and never claimed that it could not make a settlement
`
`proposal without one being provided.
`
`In fact, Petitioner's only explanation for taking 5
`
`months to make a settlement proposal was the travel of its counsel. Ex. T and 1[ 16 of Miller
`
`Decl. Notably, Petitioner has submitted no evidence to support its contrary contention that it
`
`repeatedly requested a specimen. Furthermore, Registrant’s alleged failure to provide a
`
`specimen clearly has nothing to do with Petitioner’s failure to timely respond to Registrant’s
`
`discovery requests.
`
`In sum, it is apparent that Petitioner's failures are entirely of its own making.
`
`Its
`
`attempts to blame Registrant simply do not withstand the slightest bit of scrutiny.
`
`Furthermore, most of its excuses are not even relevant to the matter at issue, namely
`
`Registrant’s Cross—Motion to compel responses.
`
`In fact, by repeating the same list of excuses
`
`8 Petitioner cites to Exhibit 7 of Petitioner’s Cross—Motion as evidence that Registrant's failure to provide
`it with a specimen resulted in a delay of its settlement offer.
`Inexplicably, Exhibit 7 is a letter from Registrant's
`counsel dated May 16, 2003 which in no way supports this allegation.
`
`{M : \4480\7l l94\00O25478 . DOC IlllllllllllllllllllIllllllllllllllllllllllllllIll }
`
`

`
`that it previously asserted, Petitioner has only emphasized the fact that it did not merely make
`
`a single error that should be overlooked. Rather, Petitioner has engaged in a pattern of
`
`disregarding the procedural rules which all parties are required to follow.
`
`III.
`
`CONCLUSION
`
`Despite its multiplicity of briefs, Petitioner never challenges either the facts as set forth
`
`by Registrant or the case law cited by Registrant. Clearly, Petitioner has no real excuse for its
`
`total failure to comply with even the most basic procedural rules.
`
`Indeed, the filing of
`
`Petitioner’s Cross-Motion is simply further evidence that Petitioner cannot satisfy the
`
`excusable neglect standard because it has never concerned itself with the Rules. Petitioner’s
`
`Cross-Motion to compel interrogatory responses should be dismissed without consideration of
`
`the merits.
`
`In the alternative, should the Board decide to consider Petitioner’s Cross-Motion
`
`notwithstanding its failure to comply with Rule 2.120(e), Registrant respectfully requests an
`
`opportunity to address its merits. Finally, Registrant’s Cross-Motion should be granted.
`
`Respectfully submitted,
`DARBY & DARBY P.C.
`
`
` Ay . Be @. .‘
`
`Randi S. Miller
`
`Attorneys for Registrant
`International Energy Services U.S.A., Inc.
`
`805 Third Avenue
`
`New York, NY 10022
`
`(212) 527—7700
`
`Date: July 14, 2003
`
`{M : \4480\71 l94\0O025478 . DOC Illlllllllllllllllllllllllllllllllllllllllllllll }
`
`

`
`-t3."?.~.=‘-532.22:7‘:?
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing REGISTRANT’S
`
`MEMORANDUM OF LAW IN SUPPORT OF ITS OPPOSITION TO PETITIONER’S
`
`CROSS-MOTION TO STRIKE REGISTRANT’S OBJECTIONS AND COMPEL
`
`RESPONSES TO DISCOVERY REQUESTS AND IN FURTHER SUPPORT OF
`
`REGISTRANT’S CROSS-MOTION TO STRIKE PETITIONER’S OBJECTIONS AND
`
`COMPEL RESPONSES TO DISCOVERY REQUESTS was served on Petitioner Integrated
`
`Electrical Services, Inc. through their attorney of record on July 14, 2003 by Express Mail,
`
`postage prepaid, as follows:
`
`Gordon T. Arnold, Esq.
`
`Erik J. Osterrider, Esq.
`Arnold & Associates
`
`2401 Fountain View Drive, Suite 630
`
`Houston, TX 77057
`
`Telephone: (713) 972-1150
`Fax: (713) 972 -1180
`
`ILHJAVS,/»u;Z&4
`
`{M : \4480\71 194\00025478 . DOC lllllllIlllllillllllllfllllllllllllllllllllllll }
`
`10
`
`

`
`EXPRESS MAIL CERTIFICATE
`
`I
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`3
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`Laoemo El. 706 73747.7 705
`Date Z/fl/03
`I h§I!_by certify that on me date unoncaleo above this paper or
`fee was depositeo min the Us. Postal Service & ma: it was
`addressed for delivety to the Assuslam Commlssuonev for
`Trademarks. 2900 Crystal Dnve Arlington. VA 22202-3514
`by ‘Express Mail Post OIIICC to Addressee' SGTVIGC
`1
`4430/71194
`ZEMI <,/»-,'//y é=£ 3, £4,154
`Name (Print)
`Signature
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`INTEGRATED ELECTRICAL SERVICES, INC.
`
`Petitioner,
`
`V.
`
`INTERNATIONAL ENERGY SERVICES U.S.A., INC.
`
`Registrant.
`
`%
`
`€%€%€€€€
`
`cancellation proceeding N0_
`92 041036
`
`SUPPLEMENTAL DECLARATION OF RANDI S. MILLER IN SUPPORT OF
`
`REGISTRANT’S OPPOSITION TO PETITIONER’S CROSS-MOTION TO STRIKE
`
`REGISTRANT’S OBJECTIONS AND COMPEL RESPONSES TO DISCOVERY
`REQUESTS AND IN FURTHER SUPPORT OF REGISTRANT’S CROSS-MOTION TO
`STRIKE PETITIONER'S OBJECTIONS AND COMPEL DISCOVERY REQUESTS
`
`I, RANDI MILLER, under penalty of perjury hereby declare:
`
`1.
`
`I am a member of the Bar of the State of New York and an associate of the law firm
`
`of Darby & Darby P.C., counsel for International Energy Services U.S.A., Inc.
`
`(“Registrant”).
`
`I submit this supplemental declaration in Support Of Registrant’s
`
`Opposition To Petitioner’s Cross-Motion To Strike Registrant’s Objections And
`
`Compel Responses To Discovery Requests And In Further Support Of Registrant's
`
`Cross-Motion To Strike Petitioner's Objections And Compel Discovery Requests All
`
`facts stated herein are based upon my personal knowledge.
`
`2. A true and correct copy of email correspondence between me and Erik Osterreider,
`
`Petitioner's counsel on May 22, 2003 is attached hereto as Exhibit S.
`
`{M:\4480\71194\00025682.DOC *44807 1194 * }
`
`

`
`2.72
`
`Qfiééfiflfififfiix
`
`3. A true and correct copy of email correspondence between me and Osterreider on
`
`January 14, 2003 is attached hereto as Exhibit T.
`
`4. A true and correct copy of a letter dated May 22, 2003 from me to Osterreider is
`
`attached hereto as Exhibit U.
`
`5. A true and correct copy of email correspondence between me and Osterreider on
`
`April 25, 2003 is attached hereto as Exhibit V.
`
`6. A true and correct copy of email correspondence between me and Osterreider on May
`
`7 and May 9, 2003 is attached hereto as Exhibit W. An email sent to me in error by
`
`Osterreider on May 9, 2003 has been redacted.
`
`Q ZQX,/vlclflu
`
`Dated: July 14, 2003
`
`Randi S. Miller
`
`Executed at: New York, New York
`
`{M:\4480\71194\00025682.DOC *44807l194 * }
`
`

`
`
`
`.if}
`
`Qvzzgoazraixz
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing SUPPLEMENTAL
`
`DECLARATION OF RANDI S. MILLER IN SUPPORT OF REGISTRANT’S OPPOSITION
`
`TO PETITIONER’S CROSS-MOTION TO STRIKE REGISTRANT’S OBJECTIONS AND
`
`COMPEL RESPONSES TO DISCOVERY REQUESTS AND IN FURTHER SUPPORT OF
`
`REGISTRANT’S CROSS-MOTION TO STRIKE PETITIONER’S OBJECTIONS AND
`
`COMPEL DISCOVERY REQUESTS was served on Petitioner Integrated Electrical Services,
`
`Inc. through their attorney of record on July 14, 2003 by Express Mail, postage prepaid, as '
`
`follows:
`
`Gordon T. Arnold, Esq.
`Erik J. Osterrider, Esq.
`Arnold & Associates
`
`2401 Fountain View Drive, Suite 630
`
`Houston, TX 77057
`Telephone: (713) 972-1150
`Fax: (713) 972 -1180
`
`/jg,,g—)2>./wtééa/,
`
`{M:\4480\71194\OO025682.DOC *44 8071194 * }
`
`

`
`
`

`
`wifmfifffi
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`
`A
`
`‘.—.,-.
`(.5
`
`Miller, Randi
`
`From:
`Sent:
`To:
`Subject:
`
`Erik,
`
`Miller. Randi
`Thursday, May 22, 2003 3:35 PM
`‘Erik J. Osterrieder'
`RE: IES case (|30246US)
`
`Thank you for acknowledging our letter of today's date regarding Integrated's discovery
`responses. We assume that you have also received the letter that we sent on May 16, 2003
`with IE8‘ counter-proposal.
`
`We understand that you do not wish to send original documents to us. However, our offer to
`copy the originals and then return them was intended only to make production of the
`documents easier for you. We have no objection to receiving copies.
`
`Randi S. Miller
`Darby & Darby, P.C.
`805 Third Avenue
`New York, NY 10022
`
`(212) 527-7691 | direct
`(212) 753-6237 |
`fax
`
`http://www.darbylaw.com
`
`—————Original Message----—
`From: Erik J. Osterrieder [mailto:eosterrieder@arnold—iplaw.com]
`Sent: Thursday, May 22, 2003 1:24 PM
`To: Miller, Randi
`Cc: Gordon T. Arnold
`
`Subject:
`
`IES case (I30246US)
`
`IMPORTANT/CONFIDENTIAL: This message is intended only for the use of the individual or
`entity to whom it is addressed. This message contains information from the law firm of
`Arnold & Associates. Unless otherwise apparent from its subject,
`this message may contain
`privileged material, and its viewing by anyone other than the intended recipient is
`strictly prohibited.
`If you have received this e—mail in error, please contact the sender
`so that we may arrange for retrieval at no cost to you.
`Thank you.
`
`May 22, 2oo3
`
`Randi,
`
`We are in receipt of your 5/22/03 fax regarding your position that you may file a motion
`to strike and to compel after May 28 if we do not voluntarily withdraw our objections to
`your requests. We will discuss this with our client. After that discussion, we will
`respond to your recommendation that we reconsider our decision to force you to come to
`Texas. We note, however,
`that your suggestion to ship you the originals to copy and
`return to the originals to us is highly unlikely. We would never ship original documents
`to an opponent.
`Instead, a third—party copying service would be more prudent.
`
`Understand that no representations were made by the above e—mail. After discussing your
`fax with our client, we will determine how to respond to your fax.
`
`

`
`Best regards,
`Erik
`
`Arnold & Associates
`
`Erik Osterrieder, Esq.
`2401 Fountainview, Suite 630
`Houston, TX
`77057
`(713) 972-1150 (phone)
`(713) 335-3021 (direct line)
`(713) 972-1180 (fax)
`eosterrieder@arno1d—iplaw.com <mai1to:eosterrieder@arno1d—iplaw.com>
`
`Tracking;
`
`Recipient
`‘Erik J. Osterrieder'
`
`Benjamin, Amy
`
`Read
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`Deleted: 6/23/2003 12:36 PM
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`Miller, Randi
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Erik J. Osterrieder [eosterrieder@arno|d-ip|aw.com]
`Tuesday, January 14, 2003 5:21 PM
`Miller, Randi
`Benjamin, Amy
`Discovery deadline and settlement
`
`IMPORTANT/CONFIDENTIAL: This message is intended only for the use of the individual or
`entity to whom it is addressed. This message contains information from the law firm of
`Arnold & Associates. Unless otherwise apparent from its subject,
`this message may contain
`privileged material, and its viewing by anyone other than the intended recipient is
`strictly prohibited.
`If you have received this e—mail in error, please contact the sender
`so that we may arrange for retrieval at no cost to you.
`Thank you.
`
`January 14, 2003
`
`Dear Randi,
`
`As we discussed yesterday, our productions and answers are due on January 27, 2003. But
`as you suggested,
`I was more clairvoyant than we realized. Late yesterday afternoon,
`Gordon asked me to request an additional two—weeks’ extension from you. This is because
`Gordon will be in Toronto and Orlando during the next
`two weeks running ragged with
`depositions and the like for a patent infringement case.
`
`In line with the discovery extension requested, Gordon needs the same amount of time to
`attend to the settlement agreement. That is, he expects delivery to you in mid-February.
`
`Please respond to this e—mail with your permission.
`
`Thank you.
`
`Best regards,
`Erik
`
`Arnold & Associates
`Erik Osterrieder, Esq.
`2401 Fountainview, Suite 630
`Houston, TX
`77057
`(713) 972-1150 (phone)
`(713) 335-3021 (direct line)
`(713) 972-1180 (fax)
`eosterrieder@arnold—iplaw.com <mai1to:eosterrieder@arnold-iplaw.com>
`
`

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`I
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`‘DARBY &
`
`DARBY
`PROFESSIONAI
`COKPOKAIION
`
`INTELIECIUAI. PROPERTY IAW
`
`aos mum AVENUE
`NEW voax, NY 10022-7513
`
`TEL (212) 527-7700
`FAX (212)753¢2a7
`
`May 22, 2003
`
`Reference: 4480/71194
`
`RAND! S. MILLER
`ATTORNEY AT LAW
`
`(212) 527-7642
`rrmi||er@darby|ow.com
`
`VIA FACSIIVIILE (713) 972-1180
`Confirmation Via Mail
`Erik J. Osterreider, Esq.
`Arnold & Associates
`
`2401 Fountain View Drive, Suite 630
`
`Houston, TX 77057
`
`Re:
`
`Cancellation Proceeding No. 92041036
`Integrated Electrical Services, Inc. v. International Energy
`Services U.S.A., Inc.
`
`Dear Erik:
`
`As you know, Integrated’s discovery responses were served long after its deadline
`to serve them had passed. As we previously advised you, by filing its discovery
`responses late,
`Integrated waived its
`right
`to object
`to any of the requests.
`Therefore, we were surprised to see objections entered throughout Integrated’s
`discovery responses in flagrant contravention of the Federal Rules.
`
`If
`Please withdraw all of Integrated’s objections by Wednesday, May 28, 2003.
`you do not voluntarily withdraw them, then we intend to file a motion to strike all
`of Integrated’s objections and compel complete responses to all of IES’ requests.
`We recommend that you also reconsider your decision to force us to go to Texas to
`review Integrated’s documents, particularly since it does not appear that there are a
`large number of them. Otherwise, we intend to address that.point in a motion as
`well.
`In that regard, we note that if you ship the original documents to us, we will
`be happy to make the copies ourselves and then return the originals to you.
`
`We look forward to hearing from you‘ soon.
`
`Very truly yours,
`/~
`'3
`I
`"
`'
`1&4 4/5. ,5}. AW/&J)
`
`Randi S. Miller
`
`cc: Mr. Richard Brien
`
`Amy J. Benjamin, Esq.
`
`{M:\4480\71194\RSM2794.DOC [*448071194*] }
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` Miller, Randi
`
`
`
`From:
`Sent:
`To:
`
`Subject:
`
`Erik,
`
`Miller, Randi
`Friday, April 25, 2003 6:14 PM
`‘Erik J. Osterrieder'
`
`RE: IES
`
`I tried to call him both at his office and on his cell phone, but'he did
`As Gordon knows,
`not answer either phone. Therefore,
`I left a message on his cell phone voicemail.
`I know
`that he received my message because he returned my call and left a message in which he
`acknowledged it.
`I called him again only a few minutes later, but again he did not answer
`his phone. Therefore,
`I left another message and waited for him to call me back.
`I never
`heard from him again, so I do not understand your request that I return his call.
`I am
`about to leave for the weekend, but Gordon is welcome to call me on Monday.
`
`Thank you for confirming that you intend to_respond to our discovery requests. We
`forward to receiving your responses, without objections, early next week.
`
`look
`
`Randi
`
`Randi S. Miller
`
`Darby & Darby, P.C.
`805 Third Avenue
`New York, NY 10022
`
`(212) 527-7691
`(212) 753-6237
`
`direct
`fax
`
`http://www.darbylaw.com
`
`\
`
`‘-—-——Original Message----—
`From: Erik J. Osterrieder [mailto:eosterrieder@arnold—iplaw.com]
`Sent: Friday, April 25, 2003 5:20 PM
`‘
`To: Miller, Randi
`Subject: RE:
`IES
`
`April 25, 2003
`
`Randi,
`
`As you know, Gordon called and left a message for you and he to discuss this case: Please
`return his call.
`
`Second, we are working hard on preparing answer and responses to your discovery requests.
`However,
`they will not be ready today.
`I believe Monday or Tuesday will more be more
`likely. This e—mail is to let you know we intend on complying with providing you the
`discovery you seek.
`If you need or want an additional day or two from Monday, when you
`say your discovery responses are due to us,
`then please feel free to take that one or two
`days.
`
`Best regards,
`Erik
`
`Arnold & Associates
`
`Erik Osterrieder, Esq.
`2401 Fountainview, Suite 630
`Houston, TX
`77057
`
`(713) 972-1150 (phone)
`(713) 335-3021 (direct line)
`(713) 972-1180 (fax)
`eosterrieder@arnold—iplaw.com
`
`

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`Message
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`Page 1 of 3
`
`Miller, Randi
`
`
`
`From:
`
`Erik J. Osterrieder [eosterrieder@arno|d-iplaw.com]
`
`Sent:
`
`Friday, May 09, 2003 5:36 PM
`
`To:
`
`Miller, Randi
`
`Subject: RE: Extension of Testimony Periods
`
`IMPORTANT/CONFIDENTIAL.‘ This message is intended only for the use of the individual or entity to
`whom it is addressed. This message contains information from the law firm of Arnold & Associates.
`Unless otherwise apparent from its subject,
`this message may contain privileged material, and its
`viewing by anyone other than the intended recipient is strictly prohibited. Ifyou have received this