Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA69671
`ESTTA Tracking number:
`03/07/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92044874
`Plaintiff
`3M Company
`3M Company
`3M Center 220-11W-01
`Saint Paul, MN 55144
`
`Correspondence
`Address
`
`JOEL D. LEVITON
`FISH RICHARDSON P.C., P.A.
`60 SOUTH SIXTH STREET SUITE 3300
`MINNEAPOLIS, MN 55402
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Other Motions/Papers
`Joel D. Leviton
`leviton@fr.com, lindner@fr.com, erickson@fr.com, brathovde@fr.com
`/Joel D. Leviton/
`03/07/2006
`2006-03-07 Leviton Decl.pdf ( 97 pages )
`
`
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA69671
`ESTTA Tracking number:
`03/07/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92044874
`Plaintiff
`3M Company
`3M Company
`3M Center 220-11W-01
`Saint Paul, MN 55144
`
`Correspondence
`Address
`
`JOEL D. LEVITON
`FISH RICHARDSON P.C., P.A.
`60 SOUTH SIXTH STREET SUITE 3300
`MINNEAPOLIS, MN 55402
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Other Motions/Papers
`Joel D. Leviton
`leviton@fr.com, lindner@fr.com, erickson@fr.com, brathovde@fr.com
`/Joel D. Leviton/
`03/07/2006
`2006-03-07 Leviton Decl.pdf ( 97 pages )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`3M COMPANY,
`
`Petitioner,
`
`V’
`
`In the matter of Registration No. 2,963,732
`
`For the mark GHB
`
`Registered on June 28, 2005
`
`GASKA TAPE INC-s
`
`Cancellation No.: 92044874
`
`Registrant.
`
`
`
`United States Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`DECLARATION OF JOEL D. LEVITON IN SUPPORT OF 3M COMPANY’S
`
`MOTION FOR ENTRY OF A PROTECTIVE ORDER
`
`I, Joel D. Leviton, declare as follows:
`
`1.
`
`I am an attorney with Fish & Richardson P.C., P.A., Minneapolis, Minnesota, and
`
`counsel for 3M Company (“3M”) in the above-captioned proceeding.
`
`2.
`
`This declaration is submitted in support of 3M’s Motion for Entry of 21 Protective
`
`Order.
`
`3.
`
`3M served its first set of written discovery requests upon Registrant (“Gaska”) on
`
`November 17, 2005. On December 20, 2005, counsel for Gaska telephoned me seeking a thirty-
`
`day extension to respond to 3M’s written discovery requests. 3M granted Gaska a thirty—day
`
`extension of time to respond to 3M’s discovery requests.
`
`4.
`
`On December 27, 2005, I sent counsel for Gaska 3M’s Stipulated Protective
`
`Order. Attached hereto as Exhibit 1 is a true and correct copy of my letter dated December 27,
`
`2005 enclosing the Stipulated Protective Order. Attached hereto as Exhibit 2 is a true and
`
`
`
`correct copy of 3M's proposed Stipulated Protective Order. Gaska did not respond to my letter
`
`of December 27, 2005 enclosing the protective order.
`
`5.
`
`On February 7, 2006, I telephoned Gaska’s counsel regarding the protective order.
`
`In a return call, Gaska’s counsel indicated to me that he would discuss the protective order with
`
`his client. Gaska’s counsel further indicated that his client consented to a two—month extension
`
`of the discovery period.
`
`6.
`
`On February 9, 2006, I sent an electronic mail to Gaska’s counsel following up on
`
`our telephone call of February 7, 2006. Gaska‘s counsel did not respond to my follow-up email,
`
`nor has he contacted me regarding the status of the protective order. Gaska also has not
`
`produced any documents in response to 3M’s document requests.
`
`7.
`
`Attached hereto are as Exhibit 3 are true and correct copies of Gaska’s responses
`
`to 3M’s first set of interrogatories and discovery requests.
`
`8.
`
`Attached hereto as Exhibit 4 is a true and correct copy of U.S. Steel Corp. v. U.S.,
`
`730 F.2d 1465 (Fed. Cir. 1984).
`
`9.
`
`Attached hereto as Exhibit 5 is a true and correct copy of a printout from the
`
`Lexis database of a Board decision issued in Helene Curtis, Inc. v. Derma—Cure, Ina,
`
`Cancellation No. 23,306, 1996 TTAB LEXIS 457 (T.T.A.B. July 9, 1996).
`
`10.
`
`Attached hereto as Exhibit 6 is a true and correct copy of the Order on Protective
`
`Orderfiled in Minnesota Mining & Mfg. C0,, et al. v. Aceo Brands, Inc, et aI., Civ. No. 01-607'
`
`JRT/AJB (D. Minn. Aug. 20, 2003).
`
`ll.
`
`Attached hereto as Exhibit 7 is a true and correct copy of the Order on Protective
`
`Orderfiled in 3M Co. and 3M Innovative Props. Co. v. Reflexite Corp., Civil No. 02-1251
`
`ADM/AJB (D. Minn. Aug. 21, 2003).
`
`
`
`12.
`
`Attached hereto as Exhibit 8 is a true and correct copy of the Order on Protective
`
`Order filed in 3M Innovative Props. C0. and Dynecm, LLC v. Dupont Dow Elastomers, LLC,
`
`Civ. No. 03-3364 PAM/RLE (D. Minn. Jan. 14, 2004).
`
`I declare under penalty of perjury that the foregoing is true and correct. Executed on
`
`March 7, 2006
`
`6034398] .doc
`
`oel D. Leviton
`
`
`
`Declaration of Joel D. Leviton
`
`3M Company v. Gaska Tape, Inc.
`Cancellation No.: 92044874
`
`Registration No.: 2,963,732
`Registration Date: June 28, 2005
`
`EXHIBIT 1
`
`
`
`Frederick P. Fish
`I855-I930
`
`WK. Richardson
`1859495!
`
`®
`AUSTIN
`
`BOSTON
`
`DALLAS
`
`DELAWARE.
`
`NEW YORK
`
`SAN DIEGO
`
`SELICON VALLEY
`
`TWIN CITIES
`
`WASHINGTQN; DC
`
`3300 Dain Rauschcr Plaza
`60 South Sixth Street
`Minneapolis, Minnesota
`55401
`
`Telephone
`6:2 335-5070
`
`Facsimile
`
`"1 ““9°9°
`Web Site
`www.fr.corn
`
`FISH ac RICHARDSON P.C.,P.A.
`
`December 27, 2005
`
`VIA FEDERAL EXPRESS
`
`Gerard T. Gallagher, Esq.
`Baker & Daniels LLP
`
`205 West Jefferson Boulevard, Suite 250
`
`South Bend, IN 46601
`
`Re:
`
`3M Company v. Gaska Tape, Inc.
`Cancellation No. 92044874
`
`Our Ref.: 19457-00lPP1
`
`Dear J erry:
`
`l have enclosed a protective order to govern the treatment of confidential information
`exchanged in the cancellation proceeding. To facilitate your client producing
`responsive documents in a timely manner, we would like to have the protective order
`in place before your client’s discovery responses are due.
`
`Very truly yours,
`
`< S"%.( gig
`Joel D. Leviton
`
`Enclosure
`
`b033]594.doc
`
`
`
`Declaration of Joel D. Leviton
`
`3M Company v. Gaska Tape, Inc.
`Cancellation No.: 92044874
`
`Registration No.: 2,963,732
`Registration Date: June 28, 2005
`
`EXHIBIT 2
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Registration No. 2,963,732
`
`For the mark GHB
`
`Registered on June 28, 2005
`
`Cancellation No.: 92044874
`
`
`
`GASKA TAPE INC
`
`Registrant.
`
`3M COMPANY,
`
`Petitioner,
`
`v.
`
`STIPULATED PROTECTIVE ORDER
`
`The parties to the above-identified proceeding, through their respective attomeys,
`
`stipulate to entry of the following:
`
`WHEREAS, documents and information have been and may be sought, produced, or
`
`exhibited by and between the parties to this proceeding which relate to the parties’ confidential
`
`information; and
`
`WI-IEREAS, it has been agreed by and between the parties to this proceeding, through their
`
`respective counsel, that a protective order preserving the confidentiality of documents and
`
`information should be entered in the above action;
`
`IT IS HEREBY ORDERED THAT:
`
`1.
`
`(a)
`
`This Protective Order shall govern all documents and infonnation
`
`produced or disclosed during this proceeding and designated in accordance with the procedures
`
`set forth herein and is binding upon the parties to this proceeding, including their respective
`
`parents, subsidiaries, affiliates, employees, representatives, and attorneys (“party” or “parties”)
`
`and others as set forth in this Order.
`
`
`
`(b)
`
`This Protective Order and the protections hereunder shall be automatically
`
`applicable to all documents and information produced by third parties from whom discovery is
`
`sought in this action. Any third party who is either voluntarily or under subpoena producing
`
`documents or information, or whose deposition is being taken, may designate the documents,
`
`information and testimony as “Confidential Information” in accordance with the provisions of
`
`this Protective Order and all such designated documents, information and testimony shall be
`
`treated hereunder as Confidential Information and the protections and penalties of the Protective
`
`Order shall inure thereto.
`
`2.
`
`“Confidential Information" as used herein means any type or classification of
`
`document, material, or information which is designated pursuant to this order as “Confidential”
`
`by the supplying party, whether it be a document, tangible thing, information contained in a
`
`document, information revealed during a deposition, information revealed in an interrogatory
`
`answer or otherwise. In designating information as “Confidential," the supplying party will
`
`make such designation only as to the information that is non-public material that contains trade
`
`secrets or sensitive commercial, financial, or business information, the public disclosure of
`
`which may have an adverse effect on the commercial, business, or financial position of the party
`
`producing it. Persons shall act in good faith when determining which materials are designated as
`
`“Confidential.” Information or material which is available to the public, such as catalogs,
`
`advertising materials, and the like shall not be designated as “Conf1dential" unless confidential
`
`information is contained in the particular document.
`
`3.
`
`Documents produced by a party shall be designated as “Confidential” by marking
`
`each page thereof: CONFIDENTIAL (or any similar designation).
`
`
`
`4.
`
`When producing original files, records and materials for inspection at the place of
`
`the producing party’s business, no marking need be made by the producing party in advance of
`
`the inspection. For purposes of the inspection, all documents and materials shall be considered
`
`as marked “Confidential.” Thereafter, upon selection of specified documents and materials for
`
`copying by the inspecting party, the producing party shall mark the copies of such documents
`
`and materials as may actually contain protected subject matter with the mark “Confidential” at
`
`the time any requested copies are provided to the inspecting party or parties.
`
`5.
`
`Information disclosed at a deposition taken in connection with this proceeding
`
`may be designated as Confidential Information by a party by indicating on the record at the
`
`deposition that the testimony is “Confidential” and subject to the provisions of this Order. The
`
`party may also designate infomiation disclosed at a deposition as Confidential Information by
`
`notifying all parties in writing, within ten (10) days of the receipt of the deposition transcript, of
`
`specific pages and lines of the transcript which are designated as “Confidential.” All
`
`depositions shall be treated as Confidential Information until receipt of the designation or until
`
`expiration of the period to designate, unless the infonnation in the transcript is otherwise
`
`designated prior to that time.
`
`6.
`
`Documents and information that have been designated as “Conf1dential" shall be
`
`disclosed solely to the following persons:
`
`(a)
`
`Outside counsel employed by any party to assist in this proceeding and the
`
`stenographic, videographic, paralegal and clerical persons with whom
`
`such attorneys work in connection with this proceeding and/or hired by
`
`such attorneys in connection with this proceeding.
`
`
`
`(b)
`
`Two designated in-house attorneys of the corporate parties who agree to
`
`be bound by this Order, and their supporting stenographcrs, paralegals and
`
`clerical employees with whom such attorneys work in connection with this
`
`proceeding. 3M Company designates Michael L. Gannon and Kevin H.
`
`Rhodes as its in-house attorneys who may receive Confidential
`
`Information. Gaska Tape, Inc. designates
`
`and
`
`as its in-house attorneys who may
`
`receive Confidential Information.
`
`(c)
`
`Experts hired in conjunction with this proceeding, subject to the
`
`provisions of paragraph 7(a).
`
`(d)
`
`Third parties specifically retained to assist outside counsel in copying,
`
`imaging, and/or coding of documents but for that purpose only.
`
`(e)
`
`The Board and any members of its staff to whom it is necessary to disclose
`
`Confidential Information for the purpose of assisting the Board in this
`
`proceeding.
`
`(f)
`
`Any other persons, upon such terms and conditions that the parties may
`
`agree or as the Board may by order direct.
`
`7.
`
`If a party wishes to disclose Confidential Information to an expert hired for the
`
`purpose of this proceeding, the party seeking to disclose the Confidential Information shall
`
`obtain and retain a copy of the Confidentiality Agreement in the form attached to this Protective
`
`Order as Exhibit A and signed by each expert. Ten days prior to the disclosure of Confidential
`
`Information to an expert, the party seeking to disclose the Confidential Information shall serve
`
`on opposing counsel a copy of the Confidentiality Agreement in the form attached to this
`
`
`
`Protective Order as Exhibit A and signed by the expert along with a copy of the expert’s
`
`curriculum vitae. No Confidential Information will be disclosed to such expert if within ten (10)
`
`days after service of the signed Confidentiality Agreement and the expett’s curriculum vitae,
`
`counsel receiving the signed Confidentiality Agreement serves on opposing counsel a Notice of
`
`Objection to disclosure of Confidential Information to such expert setting forth each objection
`
`and the basis for such. The parties agree that they will only interpose good faith objections. If
`
`no Notice of Objection is made within the ten (I 0) day period, Confidential Information may
`
`thereafter be disclosed to such expert. If a Notice of Objection is made within ten (10) days, the
`
`parties agree to use a good faith effort to overcome the Notice of Objection. If the parties carmot
`
`resolve the objections, Confidential Information will not be disclosed to the expert, except upon
`
`order of the Board. The parties agree, if at all possible, to seek a prompt telephone conference
`
`with the Board for the purpose of the Board ruling on the question of disclosure.
`
`8.
`
`Witnesses deposed in this proceeding, either during the discovery or testimony
`
`periods, may be shown Confidential Information by an attorney in preparation for the deposition
`
`and during the deposition under the following circumstances:
`
`(a)
`
`Any witness may be shown Confidential lnfonnation in which the witness
`
`is identified as the originator, signatory, author, addressee, or recipient of the original or a copy;
`
`(b)
`
`A current officer, director, or employee of a party may be shown that
`
`party’s Confidential Information;
`
`(C)
`
`Any witness selected by a party to provide testimony pursuant to Rule
`
`30(b)(6) of the Federal Rules of Civil Procedure may be shown that party’s Confidential
`
`Information;
`
`
`
`(d)
`
`A former officer, director, or employee of a party may be shown that
`
`party’s Confidential Information if it appears from the face of the Confidential Information that
`
`the witness previously had access to the Confidential lnfonnation while employed by the party,
`
`provided that counsel making such disclosure shall inform the witness that the matter is
`
`confidential and may not be disclosed or used except as provided in this Order; and
`
`(c)
`
`Any witness to whom Confidential Information may be disclosed under
`
`Paragraph 6 above may be shown Confidential Information in preparation for and during a
`
`deposition.
`
`9.
`
`Confidential Information shall be used only for the purpose of this proceeding and
`
`any related court or Patent and Trademark Office proceeding between the parties and not for any
`
`business or other purpose whatsoever. Nothing shall prevent disclosure beyond the terms of this
`
`Order if the party designating the information as “Confidential" consents in writing to such
`
`disclosure, or if the Board, after reasonable notice to all affected parties, orders such disclosure.
`
`10.
`
`With respect to any Confidential Information produced which is subject to the
`
`terms of this Order, counsel shall take all reasonable and appropriate steps for its security, and
`
`limit access only to those persons listed in paragraph 6 of this Order to whom it is necessary to
`
`disclose Confidential Information for the purpose of assisting in the preparation and trial of this
`
`proceeding.
`
`1 I.
`
`No party shall be responsible to the other party for any use made of documents or
`
`information produced and not designated as “Confidential.”
`
`12.
`
`If a party inadvertently discloses any document or thing containing information it
`
`deems confidential without designating it as “Confidential," the disclosing party shall promptly,
`
`upon discovery of such inadvertent disclosure, provide the receiving party written notice of the
`
`
`
`inadvertent disclosure accompanied by a substitute copy of the material appropriately marked as
`
`“Confidential.” Thereafter, the receiving party shall treat the material and information contained
`
`therein as Confidential Information. To the extent such material or information may have been
`
`disclosed to persons other than authorized persons described herein, the receiving party shall
`
`make every reasonable effort to retrieve the information and material promptly from such
`
`persons to avoid any further disclosure to non-authorized persons.
`
`13.
`
`(a)
`
`Any party who has designated a document or information as
`
`“Confidential” pursuant to this Order may undesignated the document and thus remove the
`
`document or information from the scope of this Order by notifying all other counsel in writing of
`
`its desire to do so.
`
`(b)
`
`Except as agreed in writing by counsel of record, to the extent that any
`
`Confidential Information is quoted, attached to, or substantially paraphrased, in any pleading,
`
`motion, memorandum, appendix or other administrative or judicial filing, counsel shall file such
`
`submission under seal. Disclosure of any portion of the transcript of a deposition which reflects
`
`or contains Confidential Information shall be subject to the terms of this Order, and if filed with
`
`the Board, shall be filed under seal. All documents filed under seal pursuant to this Order shall
`
`be identified with the caption of this action, a general description of the sealed contents and a
`
`statement that “The contents hereof are confidential and may be revealed only by Board order or
`
`upon prior written consent of all counsel.” The Board shall maintain such sealed materials intact
`
`and sealed except as otherwise directed by the Board or by counsel pursuant to prior written
`
`consent of all counsel.
`
`14.
`
`If Confidential Infonnation is used during depositions, in the trial of this case or
`
`during the course of any other administrative or judicial hearing, it shall not lose its confidential
`
`
`
`status through such use, and counsel shall exercise their best efforts and take all steps
`
`reasonably required to protect its confidentiality during such use.
`
`15.
`
`Nothing herein shall be construed to affect in any manner the admissibility of any
`
`document, testimony or other evidence.
`
`16.
`
`Upon the conclusion of this proceeding, all Confidential Information, and any and
`
`all copies thereof, shall be retumed within sixty (60) days to counsel for the appropriate party or
`
`destroyed if confirmation in writing is provided to the producing party; provided, however, that
`
`counsel may retain their attorney work product even though it contains Confidential Information,
`
`and all copies of all pleadings, motions, transcripts, and exhibits. Such retained materials shall
`
`remain subject to the terms of this Order and may not thereafier be shared with any party except
`
`those permitted under this Order. Any person or entity having custody or control of any
`
`Confidential Information shall deliver to counsel for the appropriate party an affidavit certifying
`
`that all such Confidential Information, any copies thereof, and any and all records, notes,
`
`mernoranda, summaries or other writings regarding the Confidential Information (except for
`
`attorney work product and pleadings, motions, transcripts, and exhibits as stated above), have
`
`been delivered or destroyed in accordance with the terms of this Protective Order. Insofar as this
`
`Order restricts the use and disclosure of Confidential Information, this Order shall continue to be
`
`binding after the conclusion of this proceeding.
`
`17.
`
`A party is not obligated to challenge the propriety of a designation of Confidential
`
`Information at the time made, and failure to do so shall not preclude a subsequent challenge
`
`thereto. If any party to this proceeding disagrees at any stage of these proceedings with the
`
`designation by the supplying party of any information or document as Confidential Information,
`
`the parties shall try first to resolve such dispute in good faith on an informal basis. If the dispute
`
`
`
`cannot be resolved, the objecting party may seek appropriate relief from this Board. This Order
`
`shall be without prejudice to either party to bring before the Board at any time the question of
`
`whether any particular information or document is or is not in fact Confidential Infonnation;
`
`upon such hearing the party asserting the claim to Confidential lnfonnation shall have the burden
`
`of establishing it as such.
`
`18.
`
`Nothing in this Order shall bar or otherwise restrict any attomey herein from
`
`rendering advice to his or her client with respect to this proceeding and, in the course thereof,
`
`relying in a general way upon his or her examination of Confidential Information produced or
`
`exchanged herein; provided, however, that in rendering such advice and in otherwise
`
`communicating with his or her client, the attorney shall not disclose the contents of or the source
`
`of any Confidential Infonnation if such disclosure would be contrary to the tenns of this Order.
`
`19.
`
`Nothing in this Order shall limit or restrict the manner in which either party shall
`
`handle its own Confidential Information.
`
`20.
`
`In the event of a threatened or proven violation of this Order by either of the
`
`parties in this action or others, all parties acknowledge that the offending party or persons may
`
`be subject to injunction and./or sanctions detennined in the discretion of the Board.
`
`21.
`
`By written agreement of the parties, or upon motion and order of the Board, the
`
`terms of this Protective Order may be amended or modified.
`
`
`
`22.
`
`The entry of this Order does not prevent either party from seeking a fiirther order
`
`of this Board pursuant to Rule 26(c) of the Federal Rules of Civil Procedure.
`
`STIPULATED TOBY:
`
`FISH & RICHARDSON P.C., P.A.
`
`Dated: January
`
`, 2006
`
`By:
`
`Ann N. Cathcarl Chaplin
`Joel D. Leviton
`
`60 South Sixth Street, Suite 3300
`Minneapolis, Minnesota 55402
`(612) 335-5070
`
`ATTORNEYS FOR 3M COMPANY
`
`BAKER & DANIELS LLP
`
`Dated: January
`
`, 2006
`
`By:
`
`Gerard T. Gallagher
`205 West Jefferson Boulevard, Suite 250
`
`South Bend, IN 46601
`
`(574) 234-4149
`
`ATTORNEYS FOR GASKA TAPE, INC.
`
`BY ORDER OF THE BOARD:
`
`Board Attorney
`
`Dated:
`
`
`
`EXHIBIT A
`
`To Protective Order Entered on
`
`, 2006
`
`I,
`
`, being duly sworn, state that:
`
`I have carefully read the Protective Order entered by the Board on
`
`, 2006 in
`
`the case styled 3M Company v. Gaska Tape, 1nc., Cancellation No. 92044874, and agree to be
`
`bound by and comply with all of the provisions of the Protective Order.
`
`I will hold in confidence and not disclose to anyone not qualified under the Protective
`
`Order any Confidential Information and any words, summaries, abstracts, or indices of such
`
`Confidential Information
`
`Upon counsel’s request, 1 will destroy or return to counsel for the party by whom I am
`
`employed or retained all Confidential Information and any words, summaries, abstracts or indices
`
`of such Confidential Infonnation which come into my possession or which I have prepared
`
`relating thereto.
`
`Pursuant to Paragraph 7 of the Protective Order, so as to enable me to review the material
`
`encompassed by the Order,
`
`I hereby agree to be bound by all the provisions of the Protective
`
`Date:
`
`, known to me, came before me and
`
`SS.
`
`) )
`
`)
`
`, 2006,
`
`Order.
`
`Name:
`
`Address:
`
`State of
`
`County of
`
`day of
`On the
`executed this document.
`
`NOTARY PUBLIC
`
`
`
`Declaration of Joel D. Leviton
`
`3M Company v. Gaska Tape, Inc.
`Cancellation No.: 92044874
`
`Registration No.: 2,963,732
`Registration Date: June 28, 2005
`
`EXHIBIT 3
`
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`3M Company
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`Petitioner
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`V.
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`Gaska Tape, Inc.
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`Registrant
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`-...z\./~../‘~..a~./\../xa-..4
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`Cancellation No. 92044874
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`REGISTRANTS ANSWERS TO
`PETITIONER'S FIRST SET OF INTERROGATORIES TO REGISTRANT
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`Registrant, Gaska Tape, Inc., in accordance with Rule 33 of the Federal Rules of
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`Civil Procedure and 37 CPR. § 2.120, hereby answers Petitioner's First Set of Interrogatories to
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`Registrant as follows:
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`GENERAL OB,|EC'I'IONS
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`1.
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`To the extent Petitioner's Definitions and instructions seek to impose upon
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`Registrant obligations beyond those imposed by the Federal Rules of Civil Procedure and Title
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`37 of the Code of Federal Regulations, they are objected to and will not be complied with.
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`2.
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`Registrant objects to Petitioner's definition of the tenn "document" to the
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`extent that it includes any subject matter outside the scope of Rule 34 of the Federal Rules of
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`Civil Procedure.
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`3.
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`Registrant objects to Petitioners definition of "identify,“ "identifying,"
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`"identification" and "describe" as being overly broad, unduly burdensome and not reasonably
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`calculated to lead to the discovery of admissible evidence.
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`BDDBOI 4258288vl
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`4.
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`Registrant objects to Petitioner's definition of "person" as being vague,
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`ambiguous, overly broad, unduly burdensome and not reasonably calculated to lead to the
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`discovery of admissible evidence.
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`5.
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`Registrant objects to Petitioner's definition of "Registrant's Goods" as
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`vague and ambiguous. There are no services listed in U.S. Trademark Registration No.
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`2,963,732 and it is unclear to Registrant how goods could be considered services. For purposes
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`of these responses, Registrant has interpreted the term "Registrant's Goods." to mean those goods
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`listed in U.S. Trademark Registration No. 2,963,732.
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`6.
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`Registrant objects to Petitioner's definition of "Petitioner's Goods" as
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`vague and ambiguous. Registrant does not know what Petitioner means by the term "high
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`performance adhesive tapes."
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`7.
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`Registrant objects to Petitioner's definition of "state" as being overly
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`broad, unduly burdensome and not reasonably calculated to lead to the discovery of admissible
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`evidence.
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`8.
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`Registrant objects to Petitioner's definition of "refers or relates," "referring
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`or relating," "referring to" and "relating to" as being vague, ambiguous, overly broad, unduly
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`burdensome and not reasonably calculated to lead to the discovery of admissible evidence.
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`9.
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`Registrant objects to producing any documents or information that are
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`protected by the attorney—client privilege and/or work product immunity.
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`10.
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`Registrant objects to producing any documents or information of a
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`confidential, proprietary andlor trade secret nature until an appropriate protective order has been
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`agreed to by the parties.
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`B DDBDI 4258288vl
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`11.
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`The following Answers to the Interrogatories are subject to all of the
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`preceding General Objections and the following General Response.
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`GENERAL RESPONSE
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`Registrant specifically reserves the right to supplement
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`its responses to these
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`interrogatories and to Petitioner's First Requests for Production of Documents and Things to
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`Registrant as additional documents and information are obtained, if any, during the course of this
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`cancellation. A statement that. "no responsive information is available" or similar response shall
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`in no way limit Registrant's right to supplement such response if responsive information is later
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`obtained.
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`INTERROGATORIES
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`INTERROGATORY N0. 1:
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`Identify all persons Registrant believes have knowledge
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`of relevant facts in this proceeding and describe the issues upon which Registrant believes they
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`have knowledge.
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`ANSWER: Registrant objects to this interrogatory as overly broad, unduly burdensome
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`and not reasonably calculated to lead to the discovery of admissible evidence. Registrant also
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`objects to producing information of a confidential, proprietary and/or trade secret nature until the
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`parties have agreed to a mutually acceptable Protective Order. Registrant further objects to this
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`interrogatory as inherently seeking information protected by the attorney-client privilege andlor
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`work product immunity.
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`BDDBOI 4258288vl
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`INTERROGATORY NO. 2:
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`Identify those persons having the most knowledge of
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`Registrant's use and intended future use of Registrant's Mark.
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`ANSWER:
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`Jack B. Smith, Jr.
`President
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`Gaska Tape. Inc.
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`INTERROGATORY NO. 3:
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`Identify those persons having the most knowledge of
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`Registrant's marketing of Registrant's Goods.
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`ANSWER: Registrant objects to this interrogatory as overly broad, unduly burdensome
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`and not reasonably calculated to lead to the discovery of admissible evidence as it is not limited
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`to Registrant's Goods sold under Registrant's Mark. Without waiver of this objection and the
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`General Objections, Registrant responds as follows: Jack B. Smith, Jr.
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`INTERROGATORY NO. 4:
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`Identify all persons involved in the selection of
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`Registrant's Mark.
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`ANSWER: Registrant objects to this interrogatory as overly broad, unduly burdensome
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`and not reasonably calculated to lead to the discovery of admissible evidence in that it seeks the
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`identification of "all" persons involved in the selection of Registrant's Mark. Registrant further
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`objects to this request to the extent that it seeks information protected by the attorney—client
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`privilege andlor work product immunity. Registrant also objects to producing information of a
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`confidential, proprietary and/or trade secret nature until the parties have agreed to a mutually
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`acceptable Protective Order. Without waiver of these objections and the General Objections,
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`Registrant responds as follows:
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`Jack B. Smith, Jr.
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`INTERROGATORY NO. 5:
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`Identify any third party employed or consulted by
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`Registrant in connection with the adoption or decision to use Registrants Mark.
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`BDDBOI 425828Bvl
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`ANSWER: Registrant objects to this interrogatory to the extent that it seeks information
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`protected by the attomey-client privilege andlor work product immunity. Registrant also objects
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`to producing information of a confidential, proprietary and/or trade secret nature until the parties
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`have agreed to a mutually acceptable Protective Order. Without waiver of these objections and
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`the General Objections, Registrant responds as follows:
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`Doreen I. Gtidley
`Partner
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`Ice Miller, LLP
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`One American Square
`Box 82001
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`Indianapolis, IN 46282
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`INTERROGATORY NO. 6: Describe the decision-making process undertaken by
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`Registrant to adopt and use Registrant's Mark including the timing of the process, the alternatives
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`considered, the factors considered in selecting Registrant's Mark, all steps taken to clear the
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`mark, and an explanation of how and why the mark was chosen.
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`ANSWER: Registrant objects to this interrogatory as overly broad, unduly burdensome
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`and not reasonably calculated to lead to the discovery of admissible evidence. Registrant further
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`objects to this request to the extent that it seeks information protected by the attomey-client
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`privilege andfor work product immunity. Registrant also objects to producing information of a
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`confidential, proprietary andfor trade secret nature until the parties have agreed to a mutually
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`acceptable Protective Order. Without waiver of these objections and the General Objections,
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`Registrant responds that Registrant's Mark was selected as an acronym for "Gaska High Bond."
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`A trademark availability search was performed under the direction of and an opinion letter was
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`issued by Doreen J. Gridley. The opinion letter is dated October 30, 2003.
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`BDDBOI 425B28Bvl
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`1"}
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`INTERROGATORY N0. 7:
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`State whether any searches or
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`investigations were
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`conducted by Registrant or any person on its behalf (including its attorneys) to determine
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`whether Registrant's Mark was available for use as a mark and, if so, identify each such search or
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`investigation and the person(s) most knowledgeable about such search or investigation.
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`ANSWER: Registrant objects to this interrogatory to the extent that it seeks information
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`protected by the attorney-client privilege and/or work product immunity. Registrant also objects
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`to producing documents and information of a confidential, proprietary andfor trade secret nature
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`until the parties have agreed to a mutually acceptable Protective Order. Without waiver of these
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`objections and the General Objections, Registrant responds that a trademark availability search
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`was performed under the direction of and an opinion letter was issued by Doreen J. Gridley. The
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`opinion letter is dated October 30, 2003.
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`INTERROGATORY N0. 8: Identify when Registrant commenced "use in commerce"
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`of Registrant's Mark, as defined in 15 U.S.C. § 1127.
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`ANSWER: May 29, 2003
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`INTERROGATORY NO. 9:
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`Identify any third party employed or consulted by
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`Registrant
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`in connection with promoting, advertising, or marketing Registrant's Goods in
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`connection with Registrant's Mark.
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`ANSWER: None.
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`INTERROGATORY N0. 10: Describe the manner in which Registrant currently
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`distributes and sells goods offered under or in connection with Registrant's Mark, identifying all
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`channels of trade through which Registrant's Goods travel.
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`ANSWER:
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