Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA183660
`ESTTA Tracking number:
`12/28/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92046734
`Defendant
`Top Tobacco, LP
`Michael A. Kelber
`Neal, Gerber & Eisenberg LLP
`Two North LaSalle Street, Suite 2200
`Chicago, IL 60602
`UNITED STATES
`MKELBER@NGELAW.COM, LHIRSHFELD@NGELAW.COM,
`AMCSHANE@NGELAW.COM
`Motion to Compel Discovery
`Alyssa Peterson
`apeterson@ngelaw.com, lhirshfeld@ngelaw.com, amcshane@ngelaw.com,
`mkelber@ngelaw.com
`/Alyssa Peterson/
`12/28/2007
`Motion to Compel and MGK Declaration.pdf ( 92 pages )(3619395 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`JOHN PLAYER & SONS LIMITED
`
`Petitioner,
`
`V.
`
`TOP TOBACCO, L.P.
`
`Respondent.
`
`\/\/§/§/Q/Q/Q/Q/M
`
`Cancellation No.
`
`92046734
`
`MOTION TO COMPEL DISCOVERY
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`Petitioner refuses to produce any requested documents or
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`information relating to
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`Petitioner’s alleged intent to use the AMPHORA mark, even though this discovery bears directly
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`on the basis of Petitioner’s alleged standing to bring this cancellation proceeding. Accordingly,
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`Respondent, Top Tobacco, L.P. (“Top”) is entitled to this discovery, and requests that pursuant
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`to Rule 37 of the Federal Rules of Civil Procedure and Rule 2.120(e) of the Trademark Rules of
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`Practice, the Board compel Petitioner to respond to Top’s interrogatories and document requests.
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`In support of this motion, Top states as follows:
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`1.
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`Petitioner Refuses to Provide Discovery Relating to its Alleged Standing to Bring
`This Cancellation
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`1.
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`Top is in the business of selling and distributing smoker’s articles,
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`including
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`tobacco and related products. For example, Top manufactures, distributes and sells smoking
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`tobacco under its AMPHORA mark.
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`Top obtained a federal trademark registration of its
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`AMPHORA mark for smoking tobacco on July 10, 2001. See Registration No. 2,466,864.
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`2.
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`As a basis for standing in this proceeding, Petitioner pleaded that it filed an
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`application for registration of the mark AMPHORA for “tobacco, whether manufactured or
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`unmanufactured;
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`tobacco products, namely, cigarettes, cigars, snuff, chewing tobacco, pipe
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`

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`tobacco, and hand-rolling tobacco; cigarette papers, tubes and filters; machines for making one’s
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`own cigarettes; matches and smokers’ articles, namely, lighters, pipe cleaners, and pipes” based
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`on its intent to use the mark under Section l(b), Serial No. 77/050,070. See Petition for
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`Cancellation (“Petition”), 1] 1. Petitioner further pleaded that the continued registration of Top’s
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`AMPHORA mark would allegedly cause Petitioner injury and damage, specifically because the
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`continued registration of AMPHORA “is likely to cause confusion, or to cause mistake, or to
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`deceive with respect to Petitioner’s mark as used” with tobacco. See Petition at 11 1} 3, 4.
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`3.
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`Top served Petitioner with interrogatories and document requests to obtain
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`discovery that is both specific and relevant to Petitioner’s standing, including its alleged rights in
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`its AMPHORA mark, its alleged intent to use its alleged AMPHORA mark, the alleged goods it
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`intends to sell and/or distribute under the AMPHORA mark, and the alleged damage that the
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`continued registration of Top’s AMPHORA mark will cause Petitioner}
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`See Exh.
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`1,
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`Interrogatory Nos. 2, 4-19, 22-23, 27, 29-32, and 34-36 and Exh. 2, Document Requests Nos. 1-
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`16, 18-21, 26-34, and 36-39 (the “Outstanding Discovery Requests”). Petitioner, however,
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`refuses to provide such discoveryz.
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`Petitioner’s complete refiisal
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`to provide Top with its
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`requested discovery hinders Top’s ability to prepare and to ultimately present its case.
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`4.
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`Top first attempted to resolve this discovery dispute by sending Petitioner a letter,
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`3
`which plainly set forth the relevance of the Outstanding Discovery Requests. Having clarified
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`1 First Set of Interrogatories and First Set of Requests for the Production of Documents, attached as
`Exhibits 1 and 2, respectively to Declaration of M. Kelber (“Kelber Decl.”).
`2 Pursuant to 37 CFR § 2.l20(e) and TBMP § 523.02 a copy of Petitioner’s Responses and Objections to
`Respondent’s First Set of Interrogatories is attached to Kelber Decl. as Exh. 3 and a a copy of Petitioner’s
`Responses and Objections to Respondent’s First Set of Requests for the Production of Documents is
`attached to Kelber Decl. as Exh. 4.
`3 Letter from M. Kelber to B. Taylor, attached to Kelber Decl. as Exh. 5.
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`

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`the relevance of the Outstanding Discovery Requests, Top asked Petitioner to supplement its
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`discovery responses.
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`5.
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`Petitioner did not provide supplemental discovery responses.
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`Instead, Petitioner
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`responded that it disagreed with Top on the relevance of the Outstanding Discovery Requests,
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`and again refused to provide Top with any documents or information.4
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`6.
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`Consequently, Top sent a second letter to Petitioner explaining the legal basis for
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`its position that it is entitled to discovery related to the allegations in the Petition, including
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`allegations of standing.5
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`7.
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`After setting forth the legal basis for the Outstanding Discovery Requests, Top
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`invited Petitioner to cooperate and supplement its discovery responses by December 13, 2007.
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`But, Petitioner never responded to the letter nor supplemented its discovery responses.
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`In fact,
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`Petitioner has yet to produce a single document to Top. Therefore, Petitioner has refused to
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`provide meaningful responses and produce documents in response to the Outstanding Discovery
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`Requests.
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`8.
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`Thus, in accordance with 37 CFR § 2.120(e) and TBMP § 523.02, Top made a
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`good-faith attempt to secure Petitioner’s responses to the Outstanding Discovery Requests that
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`are the subject of this Motion prior to involving the Board.
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`II.
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`The Board Should Compel Petitioner to Provide Discovery Related to the Facts
`Underlying the Allegations of Standing in its Petition for Cancellation
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`9.
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`Under Article III of the Constitution, “standing
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`is jurisdictional and not subject
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`to waiver.” Lewis v. Casey, 518 U.S. 343, 349 n.1 (1996). A petitioner’s pleading does not
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`4 Letter from A. Cahill to M. Kelber, attached to Kelber Decl. as Exh. 6.
`5 Letter from M. Kelber to A. Cahill, attached to Kelber Decl. as Exh. 7.
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`

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`relieve it from the constitutional requirement of proving that
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`it has standing at trial
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`in a
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`cancellation proceeding. See Lipton Industries, Inc. v. Ralston Purina Company, 213 U.S.P.Q.
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`185, 188-189 (C.C.P.A. 1982) (“The facts regarding standing, we hold, are part of a petitioner’s
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`case and must be affirmatively proved. Accordingly, appellee is not entitled to standing solely
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`because of the allegations in its petition.”).
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`Indeed, a petitioner’s standing may be challenged at
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`anytime. See, e.g., Ajinomoto Co. v. Archer-Daniels-Midland Co., 56 U.S.P.Q.2d 1332 (Fed.
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`Cir. 1332) (challenging licensee’s standing to sue for patent infringement after trial).
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`10.
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`The Federal Circuit and the Board also recognize that a Petitioner’s allegations
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`alone do not conclusively establish standing — the facts underlying a Petitioner’s basis for
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`standing must ultimately be proven at trial. Richie v. Simpson, 50 U.S.P.Q.2d 1023, 1028-29
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`(Fed. Cir. 1999) (“a petitioner’s allegations alone do not conclusively establish standing.
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`If
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`challenged, the facts alleged which establish standing are part of the petitioner's case, and, as we
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`said in Lipton, must be affirmatively proVed.”); Lipton Industries, 213 U.S.P.Q. at 189 (“As
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`stated in United States v. Students Challenging Regulatory Agency Procedures, 412 U.S. 669,
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`689 (1973): ‘[I]t is equally clear that the allegations must be true and capable of proof at trial.’”);
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`Otto International Inc. v. Otto Kern GmbH, 83 U.S.P.Q.2d 1861, 1862 n. 4 (TTAB 2007) (while
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`Petitioner sufficiently alleged its standing to maintain the cancellation proceeding, petitioner is
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`still required to prove its standing at trial.). Thus, while a party’s pleading may allege the
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`foundation for standing, the party must still prove such facts at trial. Lipton Industries, Inc., 213
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`U.S.P.Q. at 188-189. More specifically, whether allegations regarding bona fide intent to use
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`are true, is a question of fact to be determined at trial. American Vitamin Products Inc. v.
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`DowBrands Inc., 22 U.S.P.Q.2d 1316, 1314 (TTAB 1992). Accordingly,
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`the veracity of
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`Petitioner’s allegations of standing, which include its bona fide intent to use its AMPHORA
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`mark, is a question of fact that Petitioner must ultimately prove at trial.
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`11.
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`Therefore, Top seeks discovery of information and documents from Petitioner
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`that are relevant under Rule 26 of the Federal Rules of Procedure, and necessary for Top to
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`prepare and present its case for trial. The liberal and broad scope of discovery under the Federal
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`Rules require that Petitioner provide Top with meaningfiil
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`interrogatory responses and
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`documents, particularly related to Petitioner’s allegations supporting its Petition, including on the
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`issue of standing. See Fed. R. Civ. P. 26(b)(l); TBMP § 402.01 (“A party may take discovery
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`not only as to matters specifically raised in the pleadings, but also as to any matter which might
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`serve as the basis for an additional claim, defense, or counterclaim”) See also Mack Trucks, Inc.
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`v. Monroe Auto Equipment Co., 181 USPQ 286, 287 (TTAB 1974) (opposer must answer
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`interrogatories concerning allegations in notice of opposition). Accordingly, Top is entitled to
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`information and documents relating to the facts underlying Petitioner’s allegations of standing.
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`12.
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`In View of the foregoing, Top requests that the Board enter an Order compelling
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`Petitioner to immediately provide meaningful responses and produce documents in response to
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`the Outstanding Discovery Requests.
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`WHEREFORE, Top requests that the Board enter an Order compelling Petitioner to
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`immediately supplement its responses and produce responsive documents to the Outstanding
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`Discovery Requests.
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`

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`Respectfully submitted,
`
`Date: December 28, 2007
`
`By:
`
`/Michael G. Ke1ber/
`One of the Attorneys for Top Tobacco, L.P.
`
`Antony J. McShane
`Michael G. Kelber
`
`Lara V. Hirshfeld
`
`Neal, Gerber & Eisenberg LLP
`Two North LaSalle Street, Suite 2300
`
`Chicago, Illinois 60602-3801
`(312) 269-8000
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`

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`CERTIFICATE OF SERVICE
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`1, Alyssa Peterson, state that I served a copy of the foregoing Motion to Compel and
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`Declaration of Michael G. Kelber upon:
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`Brewster Taylor, Esq.
`Stites & Haribison, PLLC
`1199 North Fairfax Street
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`Suite 900
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`Alexandria, Virginia 22314
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`by depositing said copy in a properly addressed envelope, first class postage prepaid, and
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`depositing the same in the United States mail at Two North LaSalle Street, Chicago, Illinois on
`/
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`this 28th day of December, 2007.
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`NGEDOCS: l489262.2
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`JOHN PLAYER & SONS LIMITED
`
`Petitioner,
`
`V.
`
`TOP TOBACCO, L.P.
`
`Respondent.
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`\é\é%/\é%/%/§/A
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`Cancellation No.
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`92046734
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`DECLARATION OF MICHAEL G. KELBER
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`1, Michael G. Kelber, an attorney, state and depose on oath that, if called to testify as a
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`witness in this matter, I could competently testify as follows:
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`1.
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`I am licensed to practice law in the State of Illinois and before the United States
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`District Court for the Northern District of Illinois.
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`I am a partner of the law firm Neal, Gerber &
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`Eisenberg LLP, and serve as counsel to Respondent in the above-captioned matter.
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`2.
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`Attached as Exhibit 1 hereto is a true and correct copy of Respondent’s First Set
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`of Interrogatories, served August 3, 2007.
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`3.
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`Attached as Exhibit 2 hereto is a true and correct copy of Respondent’s First Set
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`of Requests for the Production of Documents, served August 3, 2007.
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`4.
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`Attached as Exhibit 3 hereto is a true and correct copy of Petitioner’s Responses
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`and Objections to Respondent’s First Set of Interrogatories, served on September 7, 2007.
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`5.
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`Attached as Exhibit 4 hereto is a true and correct copy of Petitioner’s Responses
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`and Objections to Respondent’s First Set of Requests for the Production of Documents, served
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`on September 7, 2007.
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`6.
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`Attached as Exhibit 5 hereto is a true and correct copy of my letter to Brewster B.
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`Taylor, sent on September 28, 2007.
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`

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`7.
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`Attached as Exhibit 6 hereto is a true and correct copy of a letter from Amy S.
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`Cahill to me, sent on October 8, 2007.
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`8.
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`Attached as Exhibit 7 hereto is a true and correct copy of my letter to Amy S.
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`Cahill, sent on December 6, 2007.
`
`ichael G. Kel er
`
`

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`
`
`EXHIBIT 1EXHIBIT 1
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation N0. 92046734
`
`) ) ) ) ) )
`
`)
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`JOHN PLAYER & SONS LIMITED,
`
`Petitioner,
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`TOP TOBACCO, L.P.',
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`Respondent.
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`RESPONDENT’S FIRST SET OF INTERROGATORIES
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`Pursuant to'Rule 33 of the Federal Rules of Civil Procedure and Rule 2.120 of the
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`Trademark Rules of Practice, respondent Top Tobacco, L.P. hereby requests that petitioner John
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`Player & Sons Limited serve upon respondent’s attorneys sworn answers to the interrogatories
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`set forth below within thirty (30) days after the service hereof. These interrogatories are
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`through supplemental answers, within thirty (30) days following such discovery.
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`A.
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`Definitions
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`As used herein, the words and phrases set out below shall have the meaning or meanings
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`prescribed for them:
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`1.
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`The term “Respondent” shall mean respondent Top Tobacco, L.P., as well as its
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`predecessors, officers, directors, subsidiaries, divisions, representatives, employees, agents and
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`2.
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`The term “Petitioner” shall mean petitioner John Player & Sons Limited, as well
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`as its predecessors, officers, directors, subsidiaries, divisions, representatives, employees, agents
`and assignees.
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`

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`3.
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`The term “person” shall mean any individual, firm, partnership, corporation,
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`proprietorship, association, or other organization or entity.
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`4.
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`The term “identify” shall mean:
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`(a)
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`(b)
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`(C)
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`(cl)
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`in connection with natural persons, state their full names, titles and job
`descriptions, if applicable, and their present or last known business and
`home addresses;
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`in connection with firms, partnerships, corporations, proprietorships,
`associations or other entities, state their name, and each of their present or
`last known addresses;
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`in connection with documents, describe the documents, setting forth their
`dates, titles, authors, addresses, parties thereto and the substance thereof,
`with such reasonable particularity as would be sufficient to permit them to
`be sought by subpoenas duces tecum or under the provisions of Rule 34 of
`the Federal Rules of Civil Procedure. Documents to be identified shall
`include both documents in your possession, custody and control and all"
`other documents of which you have knowledge;
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`in connection with oral statements and communications, (i) state when and
`where they were made; (ii) identify each of the makers and recipients
`thereof as well as all others present at
`the time such statement or
`communication was made; (iii) indicate the medium of communication;
`and (iv) state their substance.
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`5.
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`The term “documents” shall mean any and all writings of any nature whatsoever
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`or other means by which information is retained in retrievable form, as well as drafts and all non-
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`identical copies thereof, including but not limited to memoranda, stenographic or handwritten
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`notes,
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`contracts,
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`agreements,
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`records,
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`audio
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`and
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`video
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`recordings,
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`correspondence,
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`communications, reports, studies, summaries, surveys, statistical compilations, minutes, charts,
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`manuals, brochures, schedules, price lists,
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`telegrams,
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`teletypes, facsimiles, E—mail, -signage,
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`certificates of registration, labels, specimens, writings, sketches, and computer disks, and any
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`other documents as defined in Rule 34 of the Federal Rules of Civil Procedure.
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`B.
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`Instructions
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`1.
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`The singular shall include the plural and the plural shall include the singular.
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`

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`2.
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`3.
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`A masculine, feminine or neuter pronoun shall not exclude the other genders.
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`The terms “and” aswell as “or” shall be construed disjunctively or conjunctively
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`as necessary in order to bring within the scope of the interrogatory all responses which might
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`otherwise be construed to be outside its scope.
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`4.
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`These interrogatories are intended to be continuing in nature and any information
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`which may be discovered subsequent to the service of Petitioner’s initial answers should be.
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`brought to the attention of Respondent through supplemental answers, within thirty (30) days
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`following such discovery.
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`5.
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`All objections or answers to interrogatories which fail or refuse to fully respond to
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`any interrogatory on the ground of any claim of privilege of any kind whatever shall:
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`(a)
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`(b)
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`(c)
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`((1)
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`(e)
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`state the nature of the claim of privilege;
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`state all facts relied upon in support of the claim of privilege or related
`thereto;
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`identify all documents related to the claim of privilege;
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`identify all persons having knowledge of any facts related to the claim of
`privilege; and
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`identify all events, transactions or occurrences related to the claim of
`privilege.
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`C.
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`Interrogatoiies ‘
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`1.
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`V State the full name of Petitioner as well as the full name of all of its respective
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`affiliated and/or controlled businesses, companies, and other entities and each of their
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`predecessors—in—interest, and for each, identify its principal(s) and, if applicable, its state and
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`country of organization.
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`2.
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`State the full name of each business, company, person, or other entity affiliated
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`with Petitioner that has at any time used an AMPHORA designation in connection with tobacco
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`

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`or any other product(s), and for each, identify its p1incipal(s) and, if applicable, its state and
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`country of organization.
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`3.
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`Identify all third parties of which Petitioner is aware that have used or currently
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`use an AMPHORA designation and with respect to each:
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`(a)
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`state their name;
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`(b)
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`(c)
`
`(cl)
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`state their present or last known address and place of incorporation (if
`applicable);
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`identify each particular designation(s) used; and
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`identify all documents relating thereto.
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`4.
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`Identify each Al\/[PHORA designation or any other designation that is visually or
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`phonetically similar thereto, used or owned at any time by Petitioner or any of the entities
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`identified in response to Interrogatory Nos. 1, 2 or 3 above, and, with respect to each such
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`designation, identify the designation, the goods used therewith, and the inclusive dates of use
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`thereof.
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`5.
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`Identify each transaction by which Petitioner claims that any right (including
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`permission to use or other license) in an Al\/[PHORA designation have passed to Petitioner,
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`including setting forth the date of each such transaction and identifying the parties to the
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`transaction and all documents related thereto.
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`6.
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`Identify by common commercial name each product
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`that Petitioner markets,
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`distributes, sells, or offers for sale, under or in connection with an AMPHORA designation, and
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`with respect to each such product:
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`(a)
`
`(h)
`
`set forth the actual geographic scope of such use;
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`set forth the annual actual volume of sales of the product in both dollars
`and units per year;
`
`‘
`
`(c)
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`set forth the unit sizes in which the product is sold;
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`

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`((1)
`
`(e)
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`identify each class or expected class of purchasers of the product;
`
`describe the channels of trade by which the product reachesdthe ultimate
`user of such goods;
`
`(f)
`
`W
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`State all types of stores or forums in which the products are offered or
`sold; and
`
`(g)
`
`identify the persons most knowledgeable of such use, as well as all
`documents relating thereto.
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`7.
`
`Identify every promotional effort, advertisement, commercial, catalogue, and/or
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`promotional piece by which each product identified in response to Interrogatory No. 6 is
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`advertised and promoted, and the associated expenditure for each such ad (including .production
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`"and media buys).
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`8.
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`Identify every trade show at which each product
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`identified in response to
`
`Interrogatory No. 6 has been advertised and/or promoted.
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`9.
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`Identify by common commercial name each product that Petitioner intends to use,
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`market, distribute, sell, or offer for sale, under or in connection with an AMPHORA designation,
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`and with respect to each such product:
`
`(3)
`
`(b)
`
`(C)
`
`(d)
`
`(6)
`
`(0
`
`(g)
`
`set forth the anticipated geographic scope of such use;
`
`set forth. the annual anticipated volume of sales of the product in both
`dollars and units per year;
`
`set forth the unit sizes in which the product will be sold;
`
`identify each expected class of purchasers of the product;
`
`describe anticipated channels of trade by which the product will reach the
`ultimate user of such goods;
`
`state all types of stores or forums in which the products will be offered or
`sold; and
`
`identify the persons most knowledgeable of such planned use, as well as
`all documents relating thereto.
`
`

`
`10.
`
`Identify every promotional effort, advertisement, commercial, catalogue, and/or
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`promotional piece by which each product identified in response to Interrogatory No. 9 will be
`
`advertised and promoted, and the anticipated associated expenditure for each such ad (including
`
`.production and media buys).
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`11.
`
`Identify every trade show at which each product
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`identified in response to
`
`Interrogatory No. 9 will be advertised and/or promoted.
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`12.
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`Identify each tobacco grower and processor (including Petitioner) from which
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`Petitioner has received, or intends to receive, product
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`to be sold under the AMPHORA
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`designation,
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`and for each,
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`identify any written agreements, correspondence or other
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`documentation related to such supply arrangement.
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`13.
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`Identify each package or label designer, advertising agency, market research
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`expert or consultant who has performed services in connection with tobacco or any other
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`product(s) planned to be promoted or sold by Petitioner under or in connection with an
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`AMPHORA designation, and, for each such entity, describe in detail the services performed and
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`the inclusive dates of such services.
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`Identify all persons involved on behalf of Petitioner in planning the advertising,
`14.
`marketing, promotion, distribution and sale of tobacco or any other product(s) under or in
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`connection with an AMPHORA designation.
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`15.
`
`State whether Petitioner has ever issued or published
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`planned to be promoted under or in connection with an AlVfl’HORA designation, and, if so,
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`identify each such release and all publications or other media in or through which information
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`contained therein was disseminated.
`
`

`
`16.
`
`State whether Petitioner or any entity identified in Interrogatory No. 1 or 2 has
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`ever objected to the use or registration of any other mark comprising the designation
`AMPHORA, and if so, with respect to each such objection, identify the mark or designation to
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`which the objection was made, the user thereof, the nature of the objection, the disposition of the
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`objection, the persons most knowledgeable of the objection, and all documents relating to the
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`objection.
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`17.
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`Identify by title, index number and tribunal each civil action or inter partes
`
`proceeding in which Petitioner or any business, company or other entity identified in response to
`Interrogatory Nos. 1 or 2 has been or is involved, other than the present cancellation proceeding,
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`that refers or relates in any way to any AIVIPHORA designation, setting forth the disposition of
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`each such proceeding or, if not disposed of, its current status.
`
`18.
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`Identify all agreements to which Petitioner or any business, company, or other
`
`entity identified in response to Interrogatory No. 1 or 2 has been or is a party that refer or relate
`
`in any way to any AMPHORA designation, including all amendments and modifications thereto,
`
`and identify the persons most knowledgeable thereof and all documents relating thereto.
`
`19.
`
`Identify all licensing agreements, authorizations, or any other rights granted to
`
`p Petitioner in connection with the AMPHORA designation for the products identified in response
`
`to Interrogatory Nos. 6 and 9, and with respect to each such agreement, authorization or other
`
`right, state:
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`the names.and addresses of all participating parties;
`
`including dates of commencement and termination and
`terms,
`all
`geographic scope;
`
`the nature of the rights involved;
`
`specific designation to which Petitioner gained the
`the
`authorization or any other right;
`
`license,
`
`

`
`(c)
`
`(f)
`
`any provisions related to the channels of trade through which such
`products are or may be marketed or sold; and
`
`knowledgeable
`person(s) most
`the
`authoiization, license or grant.
`
`about
`
`each
`
`such
`
`agreement,
`
`20.
`
`Explain the reason(s)
`
`for ‘Petitioner’s actual adoption of any AMPHORA
`
`designation for each product identified in response to Interrogatory Nos. 6 and 9 as well as the
`
`procedure followed by Petitioner in its decision to adopt each AMPHORA designation for each
`
`such product, andidentify all persons who participated in each such decision as well as all
`
`documents relating thereto, including but not limited to any trademark search reports.
`
`21.
`
`Identify each designation (other than any designation comprising the term
`
`AIVIPHORA) considered for use on or in connection with each product identified in response to
`
`Interrogatory Nos. 6 and 9; state whether such designation was ever used in association with any
`
`"of the products, explaining why or why not; and identify the persons most knowledgeable thereof
`
`and all documents relating thereto.
`
`22.
`
`Identify the wholesale and retail price at which all products bearing an
`
`AMPHORA designation are sold, or are expected to be sold; explain the process by which this
`
`price was determined; and identify those persons who participated in all decisions regarding the
`
`setting of these prices.
`
`23.
`
`Explain Petitioner’s
`
`reason(s)
`
`for
`
`filing pending application, Serial No.
`
`as all documents relating thereto.
`
`24.
`
`Explain Petitioner’s reason(s) for filing its Petition to Cancel U.S. Registration
`
`No. 2,466,864, and identify all persons involved in filing the Petition to Cancel, as well as all
`
`documents relating thereto.
`
`

`
`25.
`
`Explain Petitioner’s reason(s) for amending application Serial No. 77/050,070,
`
`from a Section 1(b) filing basis to a Section 1(b) and/or Section 44 filing basis, and identify all
`
`persons involved in amending the application, as well as all documents relating thereto.
`
`26.
`
`Identify the trademark registrations that form the basis for Petitioner’s amendment
`
`to application Serial No. 77/050,070 from a §1(b) to a § 1(b) and/or §44.
`
`27.
`
`Describe in detail each poll, survey, consumer study or market research effort
`
`initiated by or on behalf of Petitioner relating in any way to any AMPHORA designations or to
`
`the packaging, labeling or advertising of the products identified in response to Interrog-atory Nos.
`
`6 and 9, and identify all persons involved in or knowledgeable of such poll, survey, consumer
`
`study or market research, as well as all documents relating thereto.
`
`28.
`
`Describe in detail each poll, survey, consumer study or market research effort
`
`initiated by or on behalf of Petitioner relating in any way to Respondent’s use of the AMPHORA
`
`designations, and identify all persons involved in or knowledgeable of such poll, survey,
`
`consumer study or market research, as well as all‘ documents relating thereto.
`
`29.
`
`Identify all facts. and documents that relate to or tend to support the allegations in
`
`Paragraph 2 of Petitioner’s Petition to Cancel that “the mark has been discontinued with intent
`
`not to resume such use.”
`
`30.
`
`Identify all facts and documents that relate to or tend to support the allegations in
`
`Paragraph 2 Petitioner’s Petition to Cancel that “the mark has not been used by Respondent for at
`
`least three consecutive years.”
`
`31.
`
`Identify all facts and documents that relate to or tend to support the allegations in
`
`Paragraph 2 Petitioner’s Petition to Cancel that “[t]he registration should therefore be cancelled
`
`in accordance with Section 14 of the Trademark Act, 15 U.S.C. § l064.”
`
`

`
`32.
`
`Identify all facts and documents that relate to or tend to support the allegation in
`
`Paragraph 4 Petitioner’s Petition to Cancel that “Petitioner would be damaged by continued
`
`registration of U.S. Registration N0. 2,466,864 in that the registered mark “AlVfl’HORA” as used
`
`in connection with the goods listed in said registration is likely to cause confusion, or to cause
`
`mistake, or to deceive with respect to Petitioner’s “AMPHORA” mark as used in connection
`
`with the goods listed in its application.”
`
`33.
`
`Identify the first date on which Petitioner became aware of Respondent’s
`
`AMPHORA mark, U.S. Registration No. 2,466,864.
`
`34.
`
`Identify all entities that currently sell Petitioner’s tobacco or any other product(s)
`
`bearing an AMPHORA designation in the United States, and state the date when such entities
`
`executed the Master Settlement Agreement.
`
`35.
`
`Identify all entities that will sell Petitioner’s tobacco or any other product(s)
`
`bearing an AMPHORA designation in the United States, and state the date when such entities
`
`executed the Master Settlement Agreement.
`
`36.
`
`Identify all entities that have qualified under the Master Settlement Agreement
`
`Petitioner’s brand ANIPHORA, including where such entities have qualified.
`
`37.
`
`Identify all witnesses that Petitioner intends or expects to rely upon in connection
`
`with this cancellation, including any expert witnesses.
`
`10
`
`

`
`38.
`
`Identify, on an interrogatory—by-interrogatory basis, each person furnishing
`
`information upon which any part of any answer to these interrogatories is based, indicating the
`
`parts based on information so furnished by each such person, and whether such information is
`
`within the personal knowledge of such person, and if not within such person’s knowledge,
`
`identify the source of the information so furnished.
`
`, Dated: August 03, 2007
`
`Respectfully submitted,
`
`
`
` e s for Respondent,
`
`.
`
`Top Tobacco, L.
`
`Antony J. McShane
`Michael A. Kelber
`
`Lara V. Hirshfeld
`
`Neal, Gerber & Eisenberg LLP
`Two North LaSalle Street
`Suite 2200
`
`Chicago, Illinojis 60602
`(3 12) 269-8000
`
`11
`
`

`
`CERTIFICATE OF SERVICE
`
`I, Lara V.
`
`I-Iirshfeld, an attorney, state that I served a true and correct copy of
`
`Respondent’s First Set of Interrogatories, upon:
`
`Brewster Taylor
`STITES & HARBISON, PLLC
`Suite 900 1199 North Fairfax Street
`
`Alexandria, VA 22314-1437
`
`by depositing said copy in a properly addressed envelope, first class postage prepaid, and
`
`depositing same in the United States mail at Two North LaSalle Street, Chicago, Illinois, on this
`
`3rd day of August, 2007.
`
`NGEDOCS: I435l59.5
`
`
`
`

`
`
`
`EXHIBIT 2EXHIBIT 2
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`JOHN ‘PLAYER & SONS LIMITED,
`
`Petitioner,
`
`TOP TOBACCO, L.P.,
`
`Respondent.
`
`\./\/\/xyx/\/xa
`
`Cancellation N0. 92046734
`
`RESPONDENT’S FIRST SET "OF REQUESTS
`FOR THE PRODUCTION OF DOCUMENTS
`
`Pursuant to Rule 34 of the Federal Rules of Civil Procedure and Rule 2.120 of the
`
`Trademark Rules of Practice, respondent Top Tobacco, L.P. hereby requests that petitioner John
`
`Player & Sons Limited produce to respondent’s attorneys the items described hereafter for
`
`inspection and copying at the offices of Neal, Gerber & Eisenberg, Two North LaSalle Street,
`
`Suite 2300, Chicago, Illinois 60602, within thirty (30) days after the service hereof.
`
`A.
`
`Definitions
`
`As used herein, the words and phrases set out below shall have the meaning or meanings
`
`prescribed for them:
`
`1.
`
`The term “Respondent” shall mean respondent Top Tobacco, L.P., as well as its
`
`predecessors, officers, directors, subsidiaries, divisions, representatives, employees, agents and
`
`assignees.
`
`2.
`
`The term “Petitioner” shall mean John Player & Sons Limited, as well as its
`
`predecessors, officers, directors, subsidiaries, divisions, representatives, employees, agents and
`
`assignees.
`
`3.
`
`The term “person” shall mean any individual, firm, partnership, corporation,
`
`proprietorship, ‘association, or other organization or entity.
`
`

`
`4.
`
`The term “documents” shall mean any and all writings of any nature whatsoever
`
`or other means by which information is retained in retrievable form, as well as drafts and all non-
`
`communications, reports, studies, summaries, surveys, statistical compilations, minutes, charts,
`
`manuals, brochures, schedules, price lists,
`
`telegrams,
`
`teletypes, facsimiles, E—mail, signage,
`
`certificates of registration, labels, specime