throbber
LAW OFFICES
`
`BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ
`A PROFESSIONAL CORPORATION
`FIRST TENNESSEE BUILDING
`I65 MADISON AVENUE
`SUITE 2000
`MEMPHIS, TENNESSEE 38103
`(901) 526-2000
`FACSIMILE
`(901) 577-2303
`
`B
`
`CERTIFICATE or FIRST CLASS MAIL UNDER 37 CFR
`1.8
`
`Date of Deposit: October 26 2004
`I hereby certify that this paper or fee is being deposited
`with the United States Postal Service "First Class Mail Post
`Office to Addressee" service under 37 CFR 1.8 on the date
`indicated above and is addressed to the United States
`Patent
`and Trademark Office, Commissioner
`for
`Trademarks, 2900 Crystal Drive, Arlington, VA 22202-
`3514.
`
`Dam, M Awdeh
`inted nam of pers n mailing paper or fee)
`
`
`
`October 26’
`
`DANNY AWDEH
`Direct Dial: (901) 577-2383
`Direct Fax: (901) 577-0837
`E'Ma“ Addressi daWd°h@bak°‘d°“€‘5°“~°°m
`
`Assistant Commissioner for Trademarks
`.
`2900 Crystal Dnve
`Arlington’ Virginia
`
`Re: Mark:
`Sena] No;
`Filed:
`Petitioner;
`
`SPORTING WOOD
`,533
`July 29, 2003
`Elizabeth Morando
`
`Dear Sir:
`
`Enclosed please find the following:
`
`Signature of person mailing or transmitting paper or fee)
`
`1.
`
`2.
`
`3.
`
`4.
`
`Petitioner's Motion to Compel Answers to Interrogatories, Production of Documents and
`For An Order Deeming Admitted Unanswered Requests for Admissions and Supporting
`Memorandum (original and one copy);
`
`[Proposed] Order Granting Motion to Compel Answers to Interrogatories, Production of
`Documents, and Deeming Admitted Unanswered Requests for Admissions;
`
`Certificate of First Class Mail; and
`
`A return receipt postcard.
`
`If you have any further questions or comments regarding this matter, please do not hesitate to
`contact me.
`
`M DA 753965 V2
`2830743-000114 10/26/04
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`
`1 1-01-2004
`
`U.S. Patent & TMOfclTM Mail Rcpt Dt. #72
`
`ALABAMA - GEORGIA ° LOUISIANA ' MISSISSIPPI
`
`' TENNESSEE ' WASHINGTON. D.C.
`
`' BEI]ING,Cl-{INA
`Representative Office,
`BDBC Inlemalinmll. LLC
`
`

`
` I
`
`"
`
`. éommissioner for Trademarks
`
`October 26, 2004
`
`Page 2
`
`DA: tmh
`
`Enclosures
`
`cc (w/encl.)
`
`Chris E. Karlsrud
`David C. Karlsrud
`
`Sincerely yours,
`
`Danny M. Awdeh, Esq.
`
`M DA 753965 V2
`2830743-000114 10/26/04
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APEAL BOARD
`
`Cancellation No.: 92043081
`
`) ) ) ) ) ) ) ) ) )
`
`ELISABETH MORANDO
`
`Petitioner,
`V.
`
`CHRIS E. KARLSRUD
`
`DAVID C. KARLSRUD
`
`Registrant.
`
`PETITIONER'S MOTION TO COMPEL ANSWERS TO INTERROGATORIES,
`PRODUCTION OF DOCUMENTS, AND FOR AN ORDER DEEMING ADMITTED
`
`UNANSWERED REQUESTS FOR ADMISSIONS AND SUPPORTING
`MEMORANDUM
`
`COMES NOW Petitioner, Elisabeth Morando, and pursuant to Rule 37 of the Federal
`
`Rules of Civil Procedure and Trademark Rule 2.120 files this Motion in response to Registrant's,
`
`Chris E. Karlsrud and David C. Karlsrud (collectively known as "Registrant"), complete failure
`
`to respond to Petitioner's Interrogatories, Requests for Production of Documents and Requests
`
`for Admissions, stating as follows:
`
`1.
`
`On September 3, 2004, Petitioner served Registrant with Interrogatories, Request
`
`for Production of Documents and Request for Admissions, copies of which are attached as
`
`Exhibit “A.”
`
`2.
`
`On October 6, 2004, Registrant's responses to Petitioner's Interrogatories, Request
`
`for Production of Documents and Request for Admissions were due.
`
`M DA 790073 V3
`0-0 10/26/04
`
`

`
`
`
`3.
`
`On October 11, 2004, counsel for Petitioner sent a letter to Registrant requesting
`
`the status of Registrant's responses to Petitioner's Interrogatories, Requests for Production of
`
`Documents and Requests for Admissions, a copy of which is attached hereto as Exhibit "B."
`
`4.
`
`On October 19, 2004, Chris Karlsrud, representing himself pro se, called Darmy
`
`Awdeh, counsel for Petitioner, to discuss Registrant's response to Petitioner's Interrogatories,
`
`Request for Production of Documents and Request for Admissions. During this telephone
`
`conversation, Chris Karlsrud stated he had received Petitioner's Interrogatories, Request for
`
`Production of Documents and Request for Admissions and that he could not provide Petitioner's
`
`counsel with a date for his response. Chris Karlsrud stated he did not feel motivated to respond
`
`at this time. Leaving Petitioner with no other choice, Petitioner's counsel notified Chris Karlsrud
`
`that Petitioner would file a Motion to Compel Answers to Interrogatories, Request for Production
`
`of Documents and Request for Admissions. Chris Karlsrud did not object to Petitioner's Motion
`
`to Compel and commented that this matter should be brought before the Trademark Trial and
`
`Appeal Board.
`
`5.
`
`As of this date, Registrant has completely failed to respond or seek extensions of
`
`time to respond to Petitioner's Interrogatories, Requests for Production of Documents and
`
`Requests for Admissions.
`
`6.
`
`Registrant's answers to Petitioner's Interrogatories, Requests for Production of
`
`Documents and Requests for Admissions are late and Registrant has thereby waived any
`
`objections which it might have interposed.
`
`M DA 790073 V3
`0-0 10/26/04
`
`

`
`
`
`7.
`
`Under Rule 36 of the Federal Rules of Civil Procedure, Registrant's failure to
`
`respond to Petitioner's Requests for Admissions is deemed an admission.
`
`8.
`
`Rule 37(b)(2)(C) of the Federal Rules of Civil Procedure and Trademark Rule
`
`2.l20(g)(2) authorize the Board to render a judgment of default against Registrant because of
`
`Registrant's complete failure to respond and failure to indicate when such responses will be
`
`forthcoming.
`
`WHEREFORE, the Petitioner respectfully request the Board enter an Order:
`
`(a)
`
`rendering a judgment of default against Registrant, or alternatively,
`
`(b)
`
`finding Registrant has admitted each request
`
`for admission to which the
`
`Registrant failed to timely respond,
`
`(c)
`
`compelling Registrant to produce the requested documents no later than ten (10)
`
`days from the date of the Order,
`
`((1)
`
`compelling Registrant to answer Interrogatories no later than ten (10) days from
`
`the date of the Order,
`
`(e)
`
`finding that Registrant has waived all objections to the discovery,
`
`including
`
`objections based on privilege, and
`
`(i)
`
`for all other and further relief the Court deems appropriate and just under the
`
`circumstances.
`
`MEMORANDUM OF LAW
`
`Registrant has completely failed to make any response to Petitioner's Interrogatories,
`
`Request for Production of Documents and Request for Admissions without providing any
`
`M DA 790073 V3
`0-0 10/26/04
`
`

`
`
`
`excuse, justifiable or otherwise, for such failure. Further, Registrant has refilsed to provide
`
`Petitioner with any future date upon which he will respond to Petitioner's discovery requests.
`
`Registrant's evasiveness is working to the detriment of Petitioner, who has four (4) trademark
`
`applications before the Patent and Trademark Office ("PTO") that are presently "suspended"
`
`pending the outcome of this Cancellation Proceeding. These pending trademark applications
`
`include SPORTING WOOD (Serial No. 78351461), SPORTING WOOD (Serial No. 78280533),
`
`SPORTING WOOD CREATIONS (Serial No.
`
`78307392)
`
`and SPORTING WOOD
`
`CREATIONS DISPLAY YOUR PASSION (Serial No. 78307397). As such, Registrant's delay
`
`is not only causing Petitioner to engage in costly discovery disputes but is also preventing
`
`Petitioner from receiving federal trademark registrations, to which it is entitled, for the above
`
`named trademarks. Petitioner should not be continually harmed by Registrant's irreverence for
`
`the procedures provided under both the Federal Rules of Civil Procedure and the Trademark
`
`Rules. Thus, Registrant should at least be compelled to respond to Petitioner's Interrogatories
`
`and Request for Production of Documents, without objection, and Petitioner's Request for
`
`Admissions should be deemed admitted.
`
`Rule 33(a) of the Federal Rules of Civil Procedure and Trademark Rule 2.l20(a) require
`
`a party to respond to Interrogatories within 30 days, unless the parties agree otherwise or the
`
`court orders otherwise. Fed. R. Civ. P. 33(a); Trademark Rule 2.l20(a). Here, Registrant has
`
`completely ignored the thirty (30) day deadline provided under the applicable rules and has
`
`failed to file any response whatsoever to Petitioner's discovery requests or to provide Petitioner
`
`with any indication as to when such responses may be forthcoming. A party failing to make any
`
`M DA 790073 V3
`0-0 10/26/04
`
`

`
`
`
`responses to interrogatories may be found to have waived its right to object to answering any of
`
`the interrogatories. Bison Corp.
`
`v. Perfecta Chemie B. V., 4 U.S.P.Q. 2d (BNA) 1718
`
`(Trademark Trial & App. Bd. 1987); Luehrmann v. Kwik Kopy Corp., 2 U.S.P.Q. 2d (BNA)
`
`1303 (Trademark trial & App. Bd. 1987); see also Davis v. Fendler, 650 F. 2d 1154, 1160 (9th
`
`Cir. 1981) (“Generally, in the absence of an extension of time or good cause, the failure to object
`
`to interrogatories within the time fixed by Rule 33, F.R. Civ. P., constitutes a waiver of any
`
`objection. This is true even of an objection that the information sought is privileged”) (Attached
`
`hereto as Exhibit "C"); Godsey v. United States, 133 F.R.D. 111 (S.D. Miss. 1990) (holding that
`
`plaintiffs untimely objection to defendant’s propounded interrogatories and production of
`
`documents requests resulted in the waiver of the objections) (Attached here as Exhibit "D");
`
`Scott v. Arex, Inc., 124 F.R.D. 39, 41 (D. Conn. 1989) (finding that party waived objection to
`
`interrogatories and requests for production by failing to reply or request any extension of time)
`
`(Attached hereto as Exhibit "E"); Fretz v. Keltner, 109 F.R.D. 303, 309 (D. Kan. 1985) (holding
`
`that the failure to answer or object in timely manner constitutes waiver of right to object; this
`
`waiver includes claims of privilege) (Attached hereto as Exhibit "F"); Turick v. Yamaha Motor
`
`Corp., 121 F.R.D. 32, 36 (S.D.N.Y. 1988) (Attached hereto as Exhibit "G"). As a result of
`
`Registrant's delay, Petitioner has been unable to proceed with this Cancellation Proceeding,
`
`including any dispositive motions, and has been unable to obtain trademark registrations for her
`
`four pending applications. Thus, Registrant should be compelled to respond to Petitioner's
`
`Interrogatories and Registrant's failure to timely respond should be deemed a waiver if his right
`
`to object.
`
`M DA 790073 V3
`0-0 10/26/04
`
`

`
`
`
`The same rule applies to requests for production. Under Rule 34 “[t]he party upon whom
`
`the request is served shall serve a written response within 30 days after the service of the
`
`request.” Fed. R. Civ. P. 34. Failure to respond within the allotted time constitutes a waiver of a
`
`party's right to object to producing any document requested. Bison Corp. v. Perfecta Chemie
`
`B. V., 4 U.S.P.Q. 2d (BNA) 1718 (Trademark Trial & App. Bd. 1987); Luehrmann v. Kwik Kopy
`
`Corp., 2 U.S.P.Q. 2d (BNA) 1303 (Trademark trial & App. Bd. 1987); see also Scott, 124 F.R.D.
`
`at 41; Godsey; 133 F.R.D. at 112; Day v. Boston Edison Co., 150 F.R.D. 16, 21 (D. Mass. 1993)
`
`(Attached hereto as Exhibit "H"); US. v. 58.16 Acres of Land, 66 F.R.D. 570, 572 (E.D. Ill.
`
`1975) (holding that an objection to a request for production of documents based on privilege is
`
`waived if not timely made) (Attached hereto as Exhibit "I").
`
`In this case, Registrant has
`
`completely failed to produce any documents and to provide any response to Petitioner's Request
`
`for Production of Documents. Further, as with Petitioner's Interrogatories, Registrant has refused
`
`to provide Petitioner with a time during which it will respond to these discovery requests.
`
`Accordingly, Registrant should at least be compelled to respond to Petitioner's Request for
`
`Production of Documents and should be deemed to have waived his objections, if any, to the
`
`Request for Production of Documents.
`
`A party's failure to timely respond to a request for admissions is deemed an admission.
`
`Rule 36 of the Federal Rules of Civil Procedure provides that “[e]ach matter is admitted unless,
`
`within thirty (30) days after service of the request, or within such shorter or longer time as the
`
`court may allow or as the parties may agree to in writing, subject to Rule 29, the party to whom
`
`the request is directed serves upon the party requesting the admission a written answer or
`
`M DA 790073 V3
`0-0 10/26/04
`
`

`
`
`
`objection addressed to the matter, signed by the party or by the party’s attorney.” Fed. R. Civ. P.
`
`36. Here, Registrant neither answered the Requests for Admissions nor interposed objections.
`
`Accordingly, under Rule 36, “[e]ach matter is admitted.” Fed. R. Civ. P. 36.
`
`Pursuant to Rule 37 of the Federal Rules of Civil Procedure and Trademark Rule 2.120(e)
`
`a party may move for an order compelling an answer or inspection if a party fails to answer an
`
`interrogatory or request for production. Fed. R. Civ. P. 37; Trademark Rule 2.120(e). Further,
`
`Trademark Rule 2.120(g)(2) allows the Board to grant sanctions pursuant to Rule 37(b)(2) of the
`
`Federal Rules of Civil Procedure against a party failing to respond to interrogatories or requests
`
`for production of documents where the non-responding party indicates that no response will be
`
`made. Trademark Rule 2.120(g)(2). Such sanctions include rendering a judgment by default
`
`against the disobedient party. Fed. R. Civ. P. 37(b)(2)(C).
`
`Here, Registrant failed to respond to Petitioner's discovery requests and refused to
`
`indicate when any such responses may be forthcoming. There is no justifiable excuse for
`
`Registrant's conduct. Registrant's continued delay prevents Petitioner from completing written
`
`discovery,
`
`taking depositions and moving forward with this Cancellation Proceeding.
`
`Furthennore, the outcome of this Cancellation proceedings affects the registration of four of
`
`Petitioner's trademarks, all of which are presently subject to office action suspensions. As such,
`
`Registrant's delay in responding to Petitioner's discovery requests is causing continued harm to
`
`Petitioner's business. Accordingly, Registrant's actions should be sanctioned by rendering a
`
`judgment in default against Registrant, or alternatively by the entry of an Order compelling
`
`M DA 790073 V3
`0-0 l0/26/O4
`
`

`
`
`
`answers to Petitioner's Interrogatories and Requests for Production of Documents and finding
`
`that Registrant waived his objections, if any, and deeming admitted the Requests for Admissions.
`
`Respectfully submitted,
`
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ
`
`A Professional Corporation
`
`By:
`
`Lea Hall Spe
`Darmy M. Awdeh
`165 Madison Avenue
`
`Suite 2000
`
`Memphis, Tennessee 38103
`(901) 526-2000
`(901) 577-2303 — Facsimile
`
`Attorneys for Petitioner
`Elisabeth Morando
`
`CERTIFICATE OF CONSULTATION
`
`I hereby certify that I have made a good faith effort, by conference and correspondence,
`to resolve the issues presented in this motion with Registrant Chris Karlsrud. On October 11,
`2004, I sent a letter to Registrant regarding the status of its overdue responses to Petitioner's
`discovery. On October 19, 2004, I conferred with Registrant Chris Karlsrud regarding this
`Motion to Compel, during which time Chris Karlsrud chose to neither oppose nor consent to this
`
`motion.
`
`Mk
`
`Danny Awdeh;
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing has been mailed, postage
`prepaid, to Chris E.
`arlsrud and David C. Karlsrud, 1160 North Judd Place, Chandler, Arizona
`85226-8703 this
`day of October, 2004.
`
`M DA 790073 V3
`0-0 10/26/04
`
`Darmy Awdeh
`
`

`
`

`
`
`
`.
`
`LAW OFFICES
`BAKER, Dd JISON, BEARMAN, CALDWELL &l ERKOWITZ
`A PROFESSIONAL CORPORATION
`FIRST TENNESSEE BUILDING
`I65 MADISON AVENUE
`SUITE zooo
`
`DANNY AWDEH
`Direct Dial: (901) 577-2383
`Direct Fax: (901) 577-0837
`E-Mail Address: dawdeh@bakerdonelson.com
`
`MEMPHIS, ‘I‘iEssEE 38103
`(901) 526-2000
`FACSIMILE
`(901) 577-2303
`
`September 3, 2004
`
`Chris E. Karlsrud
`
`David C. Karlsrud
`
`1 160 North Judd Place
`
`Chandler, Arizona 85226-8703
`
`’ Re:
`
`SPORTIN WOOD MARK
`
`Dear Gentlemen:
`
`Enclosed please find copies of Petitioner's First Set of Interrogatories to Registrant, Petitioner's
`First Request for Production of Documents and Things from Registrant and Petitioner's First Request for
`Admissions to Registrants in the above referenced cause.
`
`If you have any questions or if I can be of any further assistance, please do not hesitate to contact
`
`me.
`
`IV::Mm.y.iy0m
`
`Darmy Aw eh, Esq.
`
`DA:tmh
`
`Enclosures
`
`cc:
`
`Lea Hall Speed
`
`M DA 780780 V2
`2830743-000I2l 09/03/04
`
`ALABAMA - GEORGIA ' LOUISIANA - MISSISSIPPI
`
`- TENNESSEE 0 WASHINGTON. D.C.
`
`0 BEIIING.CHINA
`Repruauuivc Olice.
`BDIC Iluzmnnonll. Ll.C
`
`

`
`
`
`«
`
`(
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APEAL BOARD
`
`ELISABETH MORANDO
`
`Petitioner,
`
`V.
`
`CHRIS E. KARLSRUD
`
`DAVID C. KARLSRUD
`
`Registrant.
`
`%%é\/€%€%%%%%
`
`Cancellation No.: 92043081
`
`PETITIONER'S FIRST SET OF INTERROGATORIES TO REGISTRANT
`
`COMES NOW the Petitioner, Elisabeth Morando, and pursuant to 37 C.F.R. §2.120 and
`
`Rule 33 of the Federal Rules of Civil Procedure, submits the following First Set of
`
`Interrogatories to Registrant, Chris B. Karlsrud and David C. Karlsrud (collectively known as
`
`"Registrant"), to be answered fully in the manner and within the time period provided by law.
`
`INSTRUCTIONS
`
`1.
`
`The following interrogatories shall deemed to be continuing and, in accordance
`
`with Fed. R. Civ. P. 26(e), Petitioner requests that if afier answering the interrogatories,
`
`Registrant acquires knowledge or information regarding additional information responsive to any
`
`of these interrogatories, Registrant shall provide Petitioner with a statement of such additional
`
`information in a supplemental interrogatory response.
`
`M DA 777793 vl
`2830743-000121 08/23/O4
`
`

`
`
`
`2.
`
`The
`
`following interrogatories
`
`call
`
`for
`
`information (including infonnation
`
`contained in any Document) that
`
`is known or available to Registrant, or in Registrant's
`
`possession, custody, or control of Registrant's attomeys, agents, representatives, investigators, or
`
`any other person acting on Registrant's behalf, under Registrant's direction or control, or under
`
`the control of Registrant's attorneys, agents, representatives, or investigators.
`
`3.
`
`If Registrant contends that any of the following interrogatories are objectionable
`
`in whole or in part, Registrant shall state with particularity each objection and the reasons for the
`
`objection. Registrant shall then answer to the extent the interrogatory is not objectionable
`
`according to Fed. R. Civ. P. 33(b)( 1).
`
`4.
`
`If Registrant withholds any infonnation or document
`
`responsive to any
`
`interrogatory, please identify: (a) any basis for privilege or immunity fi'om discovery asserted;
`
`(b) all Documents that contain or refer to the information; (c) all individuals having knowledge
`
`of the information; (d) the subject matter and general nature of the information; and (e) all facts
`
`that are alleged to support the assertion of privilege or immunity.
`
`5.
`
`If Registrant finds the meaning of any term in these interrogatories to be unclear,
`
`Registrant shall assume a reasonable meaning, state what the assumed meaning is, and respond
`
`to the interrogatories according to the assumed meaning.
`
`6.
`
`With respect to any response for which Registrant specifies records pursuant to
`
`Fed. R. Civ. P. 33(d), specify such records by the bates numbers imprinted upon them.
`
`DEFINITIONS
`
`A.
`
`The terms "Registrant", "you", "your person(s)" and "your(s)" refer to Chris E.
`
`Karlsrud and David C. Karlsrud, as well as agents, servants, employees, representatives
`
`M DA 777793 vl
`2830743-000121 08/23/04
`
`

`
`
`
`I
`
`(including attorneys) and other persons or entities directly or indirectly subject to Registrant's
`
`control.
`
`person:
`
`B.
`
`A request to "identify" a person requires that you state with respect to such
`
`The person's full name;
`
`The person's last known residence and business address;
`
`The person's last known residence and business telephone number;
`
`The person's business, occupation or profession.
`
`C.
`
`The term "entity" means a person or group of persons organized for a specific
`
`purpose (e.g. a corporation). A request to "identify" an entity requires that you state with respect
`
`to such entity:
`
`1.
`
`2.
`
`The full name of the entity;
`
`The last known address of the entity (if the entity has more than one address,
`
`provide the address for the principal place of business of that entity and the
`
`address of the entity which relates to the interrogatory in question);
`
`The last known telephone number of the entity;
`
`The identity of the person affiliated with the entity whom you believe to be most
`
`knowledgeable with respect to the subject matter of the interrogatory in question.
`
`D.
`
`The term "document" is intended to encompass any writings, drawings, graphics,
`
`charts, photographs, recordings and any other data compilations from which infonnation can be
`
`obtained. A request to "identify" a document requires that you state with respect to the
`
`document:
`
`M DA 777793 vl
`2830743-000121 08/23/04
`
`

`
` K
`
`(
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`A description of the document, i.e., letter, memorandum, handwritten
`
`notes, etc. and the general nature of its subject matter;
`
`The date the document was prepared;
`
`The identity of the persons who authorized, prepared and/or signed the
`
`document;
`
`The identity of the addressee(s) or person(s) who received the document
`
`and/or a copy of the document;
`
`Whether a copy of the document is in your possession and, if not, the
`
`identity of each person who does have possession or control of the
`
`document or a copy thereof;
`
`Whether the document contains, encloses or attaches to or is accompanied
`
`by any other document(s) and, if so, the identity of the other document(s);
`
`For documents for which immunity or confidentiality is claimed, the
`
`general nature of the document, the author and all recipients of the
`
`document and the date of the document.
`
`E.
`
`In lieu of identifying a document when identification is requested, a copy of the
`
`document may be attached to your response to these interrogatories; however, any specific
`
`information required by the definition in Section D above that is not fully set forth on the face of
`
`the attached copy must be separately provided.
`
`F.
`
`The term "date" means the exact day, month and year if ascertainable, or, if not,
`
`the best approximation thereto.
`
`M DA 777793 vl
`2330743-000121 08/23/04
`
`

`
`
`
`G.
`
`The term "relate" means concerning, referring to, describing, evidencing,
`
`constituting or otherwise relating in any way to the subject matter with respect to which the term
`
`is used.
`
`H.
`
`The term "Registrant's Products" means clothing goods; namely hats, shirts, pants,
`
`shorts, jackets, swimwear and any other goods or services advertised, offered for sale or sold by
`
`Registrant under the SPORTIN WOOD mark.
`
`I.
`
`The term "SPORTIN WOOD mark" means the trademark SPORTIN WOOD as
`
`identified in United States Trademark Registration Number 2390483.
`
`J.
`
`The term "use in commerce" means the bona fide use of a mark in the ordinary
`
`course of trade, and not made merely to reserve a right in the mark, as defined in 15 U.S.C.
`
`§1127.
`
`K.
`
`The term "channels of trade" means the outlet(s) through which goods are sold
`
`and/or distributed. A request to identify the "channels of trade" requires that you state:
`
`1.
`
`2.
`
`3.
`
`4.
`
`The geographic area by state, territory or possession in which the
`
`trademark is used,
`
`The manner in which goods bearing the trademark reach the ultimate
`
`consumer,
`
`The geographic reach of each charmel of trade,
`
`The approximate percentage of total sales of the goods through each
`
`charmel of trade.
`
`L.
`
`"All" or "each" shall be construed as "all and each."
`
`M DA 777793 vl
`2830743-000121 08/23/04
`
`

`
`
`
`M.
`
`"And" or "or" shall be construed either disjunctively or conjunctively as necessary
`
`to bring within the scope of the discovery requests all responses that might otherwise be
`
`construed to be outside of its scope.
`
`N.
`
`"State" and "describe" mean to set forth a complete and detailed statement of all
`
`information, circumstances and facts that refer to, relate to, reflect, compromise, or bear upon the
`
`matter concerning which information is requested.
`
`INTERROGATORIES
`
`INTERROGATORY N0. 1:
`
`In Petitioner's First Request for Admissions, for each
`
`Request for Admission that Registrant denies, state the factual basis for such denial.
`
`INTERROGATORY N0. 2:Identify and describe each product sold and/or service
`
`provided by Registrant under Registrant's SPORTIN WOOD mark and/or any variants thereof.
`
`INTERROGATORY NO. 3: For each product identified in response to Interrogatory
`
`No. 1, state the date and identify all documents supporting the date on which the mark was first
`
`used in commerce and the date on which the mark was last used in commerce.
`
`INTERROGATORY NO. 4: Describe in detail the nature of Registrant's business or
`
`business relating to the SPORTIN WOOD mark, including the date upon which Registrant first
`
`engaged in each such business and the date on which Registrant last engaged in each such
`
`business.
`
`INTERROGATORY NO. 5: Describe in detail all past and existing relations, including
`
`contracts, agreements, licenses, assignments, or other relations, between Registrant and any third
`
`M DA 777793 vl
`2830743-000121 08/23/04
`
`

`
`
`
`party, including predecessor companies, related, or affiliated companies, relating in any manner
`
`to Registrant's SPORTIN WOOD mark.
`
`INTERROGATORY NO. 6: Has Registrant ever licensed or permitted or had
`
`negotiations to license or permit, or otherwise granted rights to third parties to use Registrant's
`
`SPORTIN WOOD mark or any mark including the term "SPORTIN WOOD" as a component?
`
`If so, identify the party or parties who have received or sought such license or permission or
`
`other right, state the nature and extent of any such license or permitted use or right, given or
`
`negotiated, and identify and describe all documents comprising or containing any such license,
`
`pennission, or other right, or any agreement in respect to such mark.
`
`INTERROGATORY NO. 7: Identify all manufacturers or intended manufacturers of
`
`Registrant's Products and state the number of Registrant's Products manufactured or intended to
`
`be manufactured by each identified manufacturer.
`
`INTERROGATORY NO. 8: State the factual basis for your assertion as stated in No. 2
`
`of your Answer that you "plan to aggressively market our products in the fi1ture" and state all
`
`action taken by Registrant to market Registrant's Products in the future, including, but not
`
`limited to, any pending marketing, promotion and/or sales contracts for Registrant's Products.
`
`INTERROGATORY NO. 9: State the number of each type of Registrant's Product
`
`currently in inventory.
`
`INTERROGATORY NO. 10: State the name and employment title or position of each
`
`person who participated in Registrant's selection, design and adoption of any mark or name
`
`containing the tenn "SPORTIN WOOD" and/or variants thereof.
`
`M DA 777793 vl
`2830743-000121 08/23/04
`
`7
`
`

`
`
`
`INTERROGATORY NO. 11: Identify the person or persons with principal
`
`responsibility for:
`
`a. marketing and sale;
`
`b.
`
`the advertising and promotion; and/or
`
`c.
`
`the packaging
`
`of any products distributed by Registrant under the SPORTIN WOOD mark and/or variants
`
`thereof.
`
`INTERROGATORY N0. 12: Identify all persons employed by or connected with
`
`Registrant who have knowledge of Registrant's SPORTIN WOOD mark as used on Registrant's
`
`Products.
`
`INTERROGATORY N0. 13: State what, if any, action has been taken by Registrant in
`
`connection with uses by others of marks including the words "SPORTING" and/or "WOOD"
`
`and/or variants thereof, including, but not limited to, the sending of a cease and desist letter to
`
`any person or entity, and identify the person or entity subject to Registrant's action.
`
`INTERROGATORY N0. 14: State the dollar amount, on a monthly basis, of
`
`Registrant's sales of all goods bearing the SPORTIN WOOD mark from the time of Registrant's
`\
`
`first sale to the present.
`
`INTERROGATORY N0. 15: State the dollar amount , on a monthly basis, of
`
`Registrant's advertising and/or promotion of any of Registrant's Products fi'om the time of
`
`Registrant's first advertisement to the present.
`
`M DA 777793 vl
`2830743-000l2l 08/23/04
`
`

`
`
`
`INTERROGATORY NO. 16: Identify each different sign, display, point-of—sale
`
`display, label, hangtag, wrapper, container, package, advertisement, brochure, promotional
`
`material, and the like, known to Registrant that contains or bears the SPORTIN WOOD mark or
`
`any variation thereof and which is intended to be used or has been used or disseminated at any
`
`time by Registrant.
`
`INTERROGATORY NO. 17: State in detail the charmels of trade in which the
`
`SPORTIN WOOD mark is used and in which goods bearing the SPORTIN WOOD mark are
`
`sold, including the geographic area by state, territory or possession in which Registrant's mark is
`
`used and/or sold, the manner in which the goods reach the ultimate consumer, the geographical
`
`reach of each such channel, and the approximate percentage of total sales of goods through each
`
`such channel, and identify documents sufficient to support your response to this interrogatory.
`
`INTERROGATORY NO. 18: Identify all retail locations through which Registrant's
`
`Products are or have been sold.
`
`INTERROGATORY NO. 19: Identify with specificity the marketing methods used in
`
`the advertising and/or sale of goods bearing the SPORTIN WOOD mark by or for Registrant,
`
`including, without limitation, the names of television stations, radio stations, Intemet web sites,
`
`newspapers, magazines, trade journals or periodicals, and/or retail establishments in which
`
`Registrant has advertised and/or intend to advertise its goods under the SPORTIN WOOD mark,
`
`the dates upon which each marketing method was ever used, and identify documents sufficient to
`
`support your response to this Interrogatory.
`
`INTERROGATORY NO. 20: Identify each person who participated in or supplied
`
`M DA 777793 vl
`2830743-000121 08/23/04
`
`

`
`
`
`information used in answering any of the above Interrogatories and for each such person, state
`
`the number of the Interrogatory answer(s) with respect to which that person participated in or
`
`supplied information.
`
`Respectfully submitted,
`
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ
`
`A Professional Corporation
`
`By:
`
` \
`
`Lea Hall Spee
`Danny M. Awdeh
`165 Madison Avenue
`
`Suite 2000
`
`Memphis, Tennessee 38103
`(901) 526-2000
`(901) 577-2303 — Facsimile
`
`Attorneys for Petitioner
`Elisabeth Morando
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing has been mailed, postage
`prepaid, to Chris B. Karlsrud and David C. Karlsrud, 1160 North Judd Place, Chandler, Arizona
`85226-8703 this 3rd day of September, 2004.
`
`Ezvj-;_Il'“’1_i_
`
`M DA 777793 vl
`2830743-00012] 09/03/04
`
`

`
`
`
`.
`
`<
`
`(
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APEAL BOARD
`
`
`
`ELISABETH MORANDO
`
`Petitioner,
`v.
`
`CHRIS E. KARLSRUD
`
`DAVID C. KARLSRUD
`
`\-Ié€\/\é€%\u/N-1%
`
`Cancellation No.: 92043081
`
`Registrant.
`
`
`PETITIONER'S FIRST REQUEST FOR PRODUCTION OF DOCUMENTS AND
`THINGS FROM REGISTRANT
`
`
`COMES NOW the Petitioner, Elisabeth Morando, and pursuant to 37 C.F.R. §2.120 and
`
`Rule 34 of the Federal Rules of Civil Procedure, submits the following First Request for
`
`Production of Documents and Things to Registrant Chris E. Karlsrud and David C. Karlsrud
`
`(collectively known as "Registrant"), to be answered fully within thirty (30) days and provided
`
`by law by providing copies of responsive documents to Danny Awdeh, Baker, Donelson,
`
`Bearman, Caldwell & Berkowitz, 165 Madison Avenue, Suite 2000, Memphis, Tennessee
`
`38103.
`
`INSTRUCTIONS
`
`1.
`
`The following requests shall deemed to be continuing and, in accordance with
`
`Fed. R. Civ. P. 26(e), Petitioner requests that if afier responding to these requests, Registrant
`
`acquires knowledge or information regarding additional information responsive to any of these
`
`requests, Registrant shall provide Petitioner with such infonnation.
`
`M DA 777824 v3
`2830743-000l2l 08/23/04
`
`

`
` .
`
`<’
`
`<
`
`2.
`
`The following requests call
`
`for information that
`
`is known or available to
`
`Registrant, or in Registrant's possession, custody, or control of Registrant's attorneys, agents,
`
`representatives,
`
`investigators, or any other person acting on Registrant's behalf, under
`
`Registrant's direction or control, or under
`
`the control of Registrant's attorneys, agents,
`
`representatives, or investigators.
`
`3.
`
`If Registrant contends that any of the following requests are objectionable in
`
`whole or in part, Registrant shall state with particularity each objection and the reasons for the
`
`objection.
`
`4.
`
`If Registrant withholds any information or document responsive to any request,
`
`please identify:
`
`(a) any basis for pri

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