Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA937333
`
`Filing date:
`
`11/26/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92063344
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`PEI Licensing, Inc.
`
`CHRISTINE A FILARSKI
`NORVELL IP LLC
`PO BOX 2461
`CHICAGO, IL 60690
`UNITED STATES
`officeactions@norvellip.com, cfilarski@norvellip.com, tmonagan@norvellip.com
`888-315-0732
`
`Reply in Support of Motion
`
`Andrea Calvert
`
`acalvert@norvellip.com, officeactions@norvellip.com, tmonagan@norvellip.com
`
`/Andrea Calvert/
`
`11/26/2018
`
`181126 PEIs Reply in Support of PEIs Motion to Extend the Discovery Sched-
`ule.pdf(138906 bytes )
`181126 Exhibit A - Petitioners October 2017 Responses to PEIs First Set of In-
`terrogatories and RFPs.pdf(547865 bytes )
`181126 Exhibit B - Notice of Deposition of Rebecca Emily Jack on Written Ques-
`tions.pdf(265345 bytes )
`181126 Exhibit C - Perry Ellis International - Take-Private Transaction Com-
`plete.pdf(274874 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Reg. No. 4,618,160
`Mark: PEONY
`Registered: October 7, 2014
`
`PEONY SWIMWEAR PTY LTD
`
`
`
`
`
`
`
`
`
`
`Petitioner,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`PEI LICENSING, INC.
`
`
`
`
`
`
`
`
`
`
`
`
`Respondent.
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Cancellation No. 92063344
`
`PEI’s REPLY IN SUPPORT OF ITS MOTION FOR FIRST 90-DAY EXTENSION OF
`THE DISCOVERY SCHEDULE
`
`Petitioner’s Response attempts to obscure the fundamental reasons why an
`
`extension of the discovery schedule is warranted: (1) the case has effectively been in
`
`suspension since it was initiated and no real time allowed for discovery, and (2) in the
`
`limited time allowed for discovery, Petitioner was not fully cooperative and has still not
`
`produced complete and verified discovery responses.
`
`This case was first suspended in 2016 when Respondent PEI Licensing, Inc.
`
`(“PEI”) filed a Motion to Dismiss (Docket No. 4). Then it was promptly suspended (a few
`
`times) for legitimate settlement discussions. (Docket Nos. 10, 12, 14 & 16). When those
`
`settlement discussions broke down, Petitioner filed a Motion for Summary Judgment on
`
`October 12, 2017 (Docket No. 18). Then, when the Board denied Petitioner’s Motion for
`
`Summary Judgment, Petitioner filed a Motion for Reconsideration (on April 7, 2018) rather
`
`than respond to discovery. (Docket No. 24). When the Board ultimately denied the Motion
`
`for Reconsideration on August 28, 2018 (Docket No. 28), the new trial schedule left the
`
`

`

`parties with less than two months to conduct discovery. PEI tried to move discovery
`
`forward, but it was unable to get Petitioner’s cooperation in doing so. PEI then requested
`
`Petitioner’s consent to an extension, but Petitioner refused. Today, there are a few issues
`
`that still must be addressed in discovery, and the parties need additional time to do so. In
`
`its Response, Petitioner mischaracterizes the developments in this case and obscures
`
`the timeline for discovery.
`
`First, Petitioner’s statement that it produced the “vast majority of its discovery
`
`materials” in 2017 is not accurate. See Response at 2. In fact, in October 2017 Petitioner
`
`produced written objections to requests PEI served in September 2017, but it generally
`
`refused to provide documents or other information because it had just filed a Motion for
`
`Summary Judgment. See Exhibit A (Response to RFP Nos. 1-24: “Petitioner objects …
`
`on the grounds that there is currently a motion for summary judgment pending in this
`
`case. The motion is dispositive of the proceeding, and therefore Petitioner need not
`
`respond to discovery, which may be moot upon the Board's decision on the motion.”).
`
`Petitioner finally did produce supplemental responses, but not until October 5, 2018 (only
`
`two weeks before the scheduled close of discovery), and only after PEI pushed multiple
`
`times for them. Moreover, PEI contends those responses are still deficient. (See Motion
`
`for Extension at Exhibit B.) Further, to date Petitioner still has not provided any verified
`
`responses to any of PEI’s Interrogatories. To be clear, PEI did not “wait until late in the
`
`discovery period” to serve discovery requests, as Petitioner suggests. See Response at
`
`2. PEI served its first set of discovery request more than a year ago, it just took Petitioner
`
`a year to provide substantive responses, which PEI still deems to be incomplete.
`
`
`
`2
`
`

`

`Second, in the short time between the Board’s August 28, 2018 order and the
`
`scheduled close of discovery, PEI attempted to advance discovery (and also discuss a
`
`possible extension), but Petitioner was not immediately responsive:
`
`• On September 19, 2018, PEI served a notice of deposition for Petitioner’s
`principal Ms. Rebecca Jack, but Respondent did not immediately respond
`objecting to the deposition. (Motion for Extension at Exhibit A.)
`
`• On September 19 and September 27, 2018, PEI contacted Petitioner to
`demand production of its supplemental responses to PEI’s First Sets of RFPs,
`RFAs and Interrogatories. (See Motion for Extension at Exhibit A.) Petitioner
`did not provide supplemental responses until October 5, 2018—two weeks
`before the scheduled close of discovery.
`• On October 10, 2018, just three business days after finally receiving Petitioner’s
`discovery responses, PEI sent a letter highlighting the many deficiencies in
`those responses. (Motion for Extension at Exhibit B.)
`
`• On October 4, October 9, October 10, and again on October 11, PEI requested
`Petitioner’s consent to an extension of the discovery schedule. (Motion for
`Extension at Exhibits A, B & C.) On October 11, Petitioner confirmed that it
`would not consent to any extensions of time, and PEI filed the instant motion
`two business days later, on October 15, 2018.
`
`Left with very little time to complete discovery, PEI attempted to move discovery forward
`
`during this time period, but it was met with resistance.
`
`Third, specifically as to the deposition of Ms. Jack, PEI was expecting Petitioner to
`
`produce complete responses to the Requests for Production, and complete and verified
`
`responses to the Interrogatories, before PEI could fully assess the need for, and scope
`
`of, a deposition of Ms. Jack. When those responses still had not been served by
`
`September 19, 2018, PEI served a notice of deposition. (Motion for Extension at Exhibit
`
`A.) Then PEI followed up on October 1, October 4, and again on October 9. (Motion for
`
`Extension at Exhibits A & C.) However, Petitioner has still not responded to confirm that
`
`Ms. Jack will not be travelling to the United States in which case she could be made
`
`available for a deposition pursuant to TBMP Rule 404.03. Further, Petitioner has still not
`
`
`
`3
`
`

`

`produced a verified response to PEI’s Interrogatory No. 31, which asks whether Ms. Jack
`
`has current plans to travel to the United States. Regardless, PEI has now served
`
`Petitioner with a Notice of Deposition on Written Question for Ms. Jack. See Exhibit B.
`
`Fourth, Petitioner takes issue with the fact that PEI did not force a meet and confer
`
`on the discovery deficiency issues before filing the instant motion. However, after pushing
`
`numerous times for discovery responses and again receiving deficient responses less
`
`than two weeks before discovery was set to close, it was evident that discovery could not
`
`be completed in the time remaining. Therefore, rather than focusing its efforts on a meet
`
`and confer and motion to compel—when it was clear Petitioner did not intend to
`
`cooperate—PEI believed it had no choice but to prepare the Motion for Extension of Time.
`
`Finally, the large take-private transaction which consumed PEI’s law department
`
`has now closed, giving PEI additional internal resources to focus on discovery in this
`
`case. See Exhibit C.
`
`Ultimately, as set forth above and in PEI’s Motion, good cause exists for an
`
`extension, especially since this is the first request by either side. Therefore, PEI reiterates
`
`its request for a 90-day extension, or an extension of at least 30 days beyond the date of
`
`the Board’s order on PEI’s Motion, whichever is longer, including the extension of time to
`
`respond to Petitioner’s discovery requests.
`
`
`
`
`
`
`
`4
`
`

`

`
`
`Dated: November 26, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`Andrea Calvert
`/s/
`Joseph V. Norvell
`Tom Monagan
`Andrea Calvert
`NORVELL IP LLC
`P.O. Box 2461
`Chicago, Illinois 60690
`officeactions@norvellip.com
`
`Attorneys for PEI Licensing, Inc.
`
`
`
`5
`
`

`

`
`I hereby certify that on November 26, 2018, a true and correct copy of PEI’S REPLY IN
`
`CERTIFICATE OF SERVICE
`
`SUPPORT OF ITS MOTION FOR FIRST 90-DAY EXTENSION OF THE DISCOVERY
`
`SCHEDULE was served upon Petitioner Peony Swimwear Pty. Ltd. by email, with a
`
`courtesy copy via U.S. mail, to:
`
`Paulo A. de Almeida
`Patel & Almeida P.C.
`16830 Ventura Blvd Suite 360
`Encino, CA 91436
`paulo@paiplaw.com
`
`
`Dated: November 26, 2018
`
`
`
`
`
`
`
`
`
`By: /s/ Andrea Calvert
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`

`

`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Peony Swimwear Pty Ltd,
`
`____________________________________
`)
`)
`)
`)
`) Cancellation No. 92063344
`Registration No. 4,618,160
`)
`)
`Mark: PEONY
`)
`)
`)
`)
`)
`)
`Respondent.
`)
`
`
` ___________________________________)
`
`Petitioner,
`
`
`
`
`
`v.
`
`PEI Licensing, Inc.
`
`PETITIONER'S RESPONSES TO RESPONDENT'S REQUEST FOR PRODUCTION OF
`
`DOCUMENTS, SET ONE
`
`PROPOUNDING PARTY: PEI Licensing, Inc.
`
`RESPONDING PARTY:
`
`Peony Swimwear Pty Ltd
`
`SET NUMBER:
`
`ONE
`
`Petitioner, Peony Swimwear Pty Ltd ("Petitioner") responds to Respondent, PEI
`
`Licensing, Inc.’s ("Respondent") Request for Production of Documents, as follows:
`
`PRELIMINARY STATEMENT
`
`Petitioner's responses to this first set of Requests for Production of Documents are based
`
`upon information presently known to Petitioner. These responses are given without prejudice to
`
`Petitioner's right to supplement or amend these responses following further discovery and
`
`investigation. Petitioner also reserves the right to produce and use subsequently discovered
`
`information in discovery, during testimony, in its briefs, and in support of or opposition to any
`
`motion. Further, the fact that Petitioner produces any specific document in response to these
`
`

`

`Requests does not mean that Petitioner consents to the authenticity or admissibility of such
`
`document, nor that such document is relevant to any issue in this case.
`
`GENERAL OBJECTIONS
`
`Petitioner objects to Respondent's Requests for Production of Documents, including any
`
`definitions or instructions, to the extent that they purport to require any response beyond the
`
`scope of that required by the Federal Rules of Civil Procedure.
`
`Petitioner objects to each and every definition, instruction and request to the extent that it
`
`seeks information protected by the attorney-client privilege, the attorney work product doctrine
`
`or any other privilege recognized by applicable law. Without waiving and subject to such
`
`objections, Petitioner will produce non-privileged documents responsive to appropriate requests,
`
`as indicated below.
`
`Petitioner objects to each and every definition, instruction and request to the extent it
`
`seeks information containing trade secret or other proprietary or confidential business
`
`information of Petitioner, or that has been provided to Petitioner subject to protection, and
`
`Petitioner will provide such information only pursuant to the terms of an appropriate protective
`
`order entered in this case.
`
`Petitioner further objects to these Requests to the extent they purport to request it to
`
`respond on behalf of other person(s). Petitioner objects to these Requests to the extent they seek
`
`information or documents that are not relevant, uncertain as to time, overly burdensome to
`
`produce, and on the grounds that Requests are not reasonably calculated to lead to the discovery
`
`of admissible evidence. Petitioner objects to these Requests to the extent they contain compound
`
`questions or subparts, or are vague and ambiguous or otherwise improperly formulated pursuant
`
`to the Federal Rules of Civil Procedure. Petitioner objects to these Requests to the extent they
`
`seek information and/or documents that are equally available to the Respondent. Petitioner's
`
`responses to the Requests are made on behalf of Petitioner and no other.
`
`

`

`The following responses are subject to the Preliminary Statement and foregoing general
`
`objections, all of which are incorporated by reference in each response as if set forth in full
`
`below:
`
`RESPONSES
`
`
`REQUEST NO. 1
`
`All documents referring to PEI.
`
`Response:
`
`
`Petitioner incorporates herein the General Objections above. Petitioner objects to this
`
`request on the grounds that it is overbroad and unduly burdensome because it does not specify
`
`with reasonable particularity the information to be produced, and is not relevant and proportional
`
`to Respondent’s discovery needs in this case. Petitioner objects to this request on the grounds
`
`that there is currently a motion for summary judgment pending in this case. The motion is
`
`dispositive of the proceeding, and therefore Petitioner need not respond to discovery, which may
`
`be moot upon the Board's decision on the motion. See 37 CFR § 2.127(d); See Leeds
`
`Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303, 1305-06 (TTAB 2002)
`
`(time to serve discovery responses reset following decision on potentially dispositive motion).
`
`Petitioner objects to this request to the extent it seeks information containing trade secrets or other
`
`proprietary or confidential business information of Petitioner. Applicant further objects to this
`
`request to the extent that it seeks information protected by the attorney-client privilege, the attorney
`
`work product doctrine or any other privilege recognized by applicable law. Without waiving the
`
`foregoing objections, and subject to them, Petitioner responds as follows:
`
`

`

`See Petitioner’s Motion for Summary Judgment. Discovery is ongoing and Petitioner may
`
`supplement its response at a later time. Applicant will produce any additional, discoverable,
`
`responsive documents to the extent they exist.
`
`REQUEST NO. 2
`
`All documents tending to prove, and all documents otherwise related to, Petitioner’s first use in
`commerce in the United States of the Peony Swimwear Mark for each of the goods claimed in
`U.S. App. Ser. No. 86/704,465 (the “Application”).
`
`Response:
`
`
`Petitioner incorporates herein the General Objections above. Petitioner objects to this
`
`request on the grounds that it is overbroad and unduly burdensome because it does not specify
`
`with reasonable particularity the information to be produced, and is not relevant and proportional
`
`to Respondent’s discovery needs in this case. Petitioner objects to this request on the grounds
`
`that there is currently a motion for summary judgment pending in this case. The motion is
`
`dispositive of the proceeding, and therefore Petitioner need not respond to discovery, which may
`
`be moot upon the Board's decision on the motion. See 37 CFR § 2.127(d); See Leeds
`
`Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303, 1305-06 (TTAB 2002)
`
`(time to serve discovery responses reset following decision on potentially dispositive motion).
`
`Petitioner objects to this request to the extent it seeks information containing trade secrets or other
`
`proprietary or confidential business information of Petitioner. Applicant further objects to this
`
`request to the extent that it seeks information protected by the attorney-client privilege, the attorney
`
`work product doctrine or any other privilege recognized by applicable law. Without waiving the
`
`foregoing objections, and subject to them, Petitioner responds as follows:
`
`

`

`See Petitioner’s Motion for Summary Judgment. Discovery is ongoing and Petitioner may
`
`supplement its response at a later time. Applicant will produce any additional, discoverable,
`
`responsive documents to the extent they exist.
`
`
`
`REQUEST NO. 3
`
`All documents tending to prove, and all documents otherwise related to, Petitioner’s use of the
`Peony Swimwear Mark in commerce in the United States on or before January 2, 2013.
`
`Response:
`
`
`Petitioner incorporates herein the General Objections above. Petitioner objects to this
`
`request on the grounds that it is overbroad and unduly burdensome because it does not specify
`
`with reasonable particularity the information to be produced, and is not relevant and proportional
`
`to Respondent’s discovery needs in this case. Petitioner objects to this request on the grounds
`
`that there is currently a motion for summary judgment pending in this case. The motion is
`
`dispositive of the proceeding, and therefore Petitioner need not respond to discovery, which may
`
`be moot upon the Board's decision on the motion. See 37 CFR § 2.127(d); See Leeds
`
`Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303, 1305-06 (TTAB 2002)
`
`(time to serve discovery responses reset following decision on potentially dispositive motion).
`
`Petitioner objects to this request to the extent it seeks information containing trade secrets or other
`
`proprietary or confidential business information of Petitioner. Applicant further objects to this
`
`request to the extent that it seeks information protected by the attorney-client privilege, the attorney
`
`work product doctrine or any other privilege recognized by applicable law. Without waiving the
`
`foregoing objections, and subject to them, Petitioner responds as follows:
`
`

`

`See Petitioner’s Motion for Summary Judgment. Discovery is ongoing and Petitioner may
`
`supplement its response at a later time. Applicant will produce any additional, discoverable,
`
`responsive documents to the extent they exist.
`
`
`REQUEST NO. 4
`
`All documents tending to prove, and all documents otherwise related to, Petitioner’s use of the
`Peony Swimwear Mark in commerce in the United States between January 2, 2013 (or earlier if
`use was earlier) and February 4, 2013, including:
`(a) order transaction reports for all orders placed during this time frame;
`(b) order shipment reports for all orders shipped during this time frame; and,
`(c) details for each transaction, including customer names, order and shipping addresses and any
`other contact information; evidence of the products purchased (e.g. by product type, style and
`SKU numbers); and evidence of the purchase price by item and total order.
`
`Response:
`
`
`Petitioner incorporates herein the General Objections above. Petitioner objects to this
`
`request on the grounds that it is overbroad and unduly burdensome because it does not specify
`
`with reasonable particularity the information to be produced, and is not relevant and proportional
`
`to Respondent’s discovery needs in this case. Petitioner objects to this request on the grounds
`
`that there is currently a motion for summary judgment pending in this case. The motion is
`
`dispositive of the proceeding, and therefore Petitioner need not respond to discovery, which may
`
`be moot upon the Board's decision on the motion. See 37 CFR § 2.127(d); See Leeds
`
`Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303, 1305-06 (TTAB 2002)
`
`(time to serve discovery responses reset following decision on potentially dispositive motion).
`
`Petitioner objects to this request to the extent it seeks information containing trade secrets or other
`
`proprietary or confidential business information of Petitioner. Applicant further objects to this
`
`request to the extent that it seeks information protected by the attorney-client privilege, the attorney
`
`work product doctrine or any other privilege recognized by applicable law. Without waiving the
`
`

`

`foregoing objections, and subject to them, Petitioner responds as follows:
`
`See Petitioner’s Motion for Summary Judgment. Discovery is ongoing and Petitioner may
`
`supplement its response at a later time. Applicant will produce any additional, discoverable,
`
`responsive documents to the extent they exist.
`
`
`REQUEST NO. 5
`
`Documents sufficient to show when Petitioner’s website at www.peonyswimwear was live to the
`public and when the website was first able to process transactions in U.S. dollars, as well as any
`evidence of efforts to promote the website directly to consumers in the United States.
`
`Response:
`
`
`Petitioner incorporates herein the General Objections above. Petitioner objects to this
`
`request on the grounds that it is overbroad and unduly burdensome because it does not specify
`
`with reasonable particularity the information to be produced, and is not relevant and proportional
`
`to Respondent’s discovery needs in this case. Petitioner objects to this request on the grounds
`
`that there is currently a motion for summary judgment pending in this case. The motion is
`
`dispositive of the proceeding, and therefore Petitioner need not respond to discovery, which may
`
`be moot upon the Board's decision on the motion. See 37 CFR § 2.127(d); See Leeds
`
`Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303, 1305-06 (TTAB 2002)
`
`(time to serve discovery responses reset following decision on potentially dispositive motion).
`
`Petitioner objects to this request to the extent it seeks information containing trade secrets or other
`
`proprietary or confidential business information of Petitioner. Applicant further objects to this
`
`request to the extent that it seeks information protected by the attorney-client privilege, the attorney
`
`work product doctrine or any other privilege recognized by applicable law. Without waiving the
`
`foregoing objections, and subject to them, Petitioner responds as follows:
`
`

`

`See Petitioner’s Motion for Summary Judgment. Discovery is ongoing and Petitioner may
`
`supplement its response at a later time. Applicant will produce any additional, discoverable,
`
`responsive documents to the extent they exist.
`
`
`
`REQUEST NO. 6
`
`Documents sufficient to show Petitioner’s “extensive marketing and advertising” of the Peony
`Swimwear Mark in the United States, as stated in Paragraph 4 of the Petition to Cancel,
`including:
`(a) the dollar amount Petitioner spent on marketing and advertising in the United States prior to
`February 4, 2013;
`(b) the dollar amount Petitioner spent on marketing and advertising in the United States from
`February 4, 2013 to present;
`(c) the publications and/or media outlets on or in which Petitioner published or broadcasted its
`marketing and advertising prior to February 4, 2013;
`(d) the publications and/or media outlets on or in which Petitioner published or broadcasted its
`marketing and advertising from February 4, 2013 to present; and,
`(e) samples of each advertising or marketing material showing the Peony Swimwear Mark that
`Petitioner has ever had published or broadcast in the United States.
`
`Response:
`
`
`Petitioner incorporates herein the General Objections above. Petitioner objects to this
`
`request on the grounds that it is overbroad and unduly burdensome because it does not specify
`
`with reasonable particularity the information to be produced, and is not relevant and proportional
`
`to Respondent’s discovery needs in this case. Petitioner objects to this request on the grounds
`
`that there is currently a motion for summary judgment pending in this case. The motion is
`
`dispositive of the proceeding, and therefore Petitioner need not respond to discovery, which may
`
`be moot upon the Board's decision on the motion. See 37 CFR § 2.127(d); See Leeds
`
`Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303, 1305-06 (TTAB 2002)
`
`(time to serve discovery responses reset following decision on potentially dispositive motion).
`
`Petitioner objects to this request to the extent it seeks information containing trade secrets or other
`
`proprietary or confidential business information of Petitioner. Applicant further objects to this
`
`

`

`request to the extent that it seeks information protected by the attorney-client privilege, the attorney
`
`work product doctrine or any other privilege recognized by applicable law. Without waiving the
`
`foregoing objections, and subject to them, Petitioner responds as follows:
`
`See Petitioner’s Motion for Summary Judgment. Discovery is ongoing and Petitioner may
`
`supplement its response at a later time. Applicant will produce any additional, discoverable,
`
`responsive documents to the extent they exist.
`
`
`REQUEST NO. 7
`
`All documents relating to any actual consumer confusion between the use of Petitioner’s Peony
`Swimwear Mark and PEI’s PEONY Mark.
`
`Response:
`
`
`Petitioner incorporates herein the General Objections above. Petitioner objects to this
`
`request on the grounds that it is overbroad and unduly burdensome because it does not specify
`
`with reasonable particularity the information to be produced, and is not relevant and proportional
`
`to Respondent’s discovery needs in this case. Petitioner objects to this request on the grounds
`
`that there is currently a motion for summary judgment pending in this case. The motion is
`
`dispositive of the proceeding, and therefore Petitioner need not respond to discovery, which may
`
`be moot upon the Board's decision on the motion. See 37 CFR § 2.127(d); See Leeds
`
`Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303, 1305-06 (TTAB 2002)
`
`(time to serve discovery responses reset following decision on potentially dispositive motion).
`
`Petitioner objects to this request to the extent it seeks information containing trade secrets or other
`
`proprietary or confidential business information of Petitioner. Applicant further objects to this
`
`request to the extent that it seeks information protected by the attorney-client privilege, the attorney
`
`work product doctrine or any other privilege recognized by applicable law. Without waiving the
`
`

`

`foregoing objections, and subject to them, Petitioner responds as follows:
`
`Applicant will produce any additional, discoverable, responsive documents to the extent
`
`they exist.
`
`
`REQUEST NO. 8
`
`Documents sufficient to reflect all geographic areas within the United States or its territories in
`which apparel and apparel accessories bearing the Peony Swimwear Mark have been distributed.
`
`Response:
`
`
`Petitioner incorporates herein the General Objections above. Petitioner objects to this
`
`request on the grounds that it is overbroad and unduly burdensome because it does not specify
`
`with reasonable particularity the information to be produced, and is not relevant and proportional
`
`to Respondent’s discovery needs in this case. Petitioner objects to this request on the grounds
`
`that there is currently a motion for summary judgment pending in this case. The motion is
`
`dispositive of the proceeding, and therefore Petitioner need not respond to discovery, which may
`
`be moot upon the Board's decision on the motion. See 37 CFR § 2.127(d); See Leeds
`
`Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303, 1305-06 (TTAB 2002)
`
`(time to serve discovery responses reset following decision on potentially dispositive motion).
`
`Petitioner objects to this request to the extent it seeks information containing trade secrets or other
`
`proprietary or confidential business information of Petitioner. Applicant further objects to this
`
`request to the extent that it seeks information protected by the attorney-client privilege, the attorney
`
`work product doctrine or any other privilege recognized by applicable law. Without waiving the
`
`foregoing objections, and subject to them, Petitioner responds as follows:
`
`

`

`See Petitioner’s Motion for Summary Judgment. Discovery is ongoing and Petitioner may
`
`supplement its response at a later time. Applicant will produce any additional, discoverable,
`
`responsive documents to the extent they exist.
`
`
`
`REQUEST NO. 9
`
`Documents sufficient to identify the channels of trade through which apparel and apparel
`accessories bearing the Peony Swimwear Mark have been offered.
`
`Response:
`
`
`Petitioner incorporates herein the General Objections above. Petitioner objects to this
`
`request on the grounds that it is overbroad and unduly burdensome because it does not specify
`
`with reasonable particularity the information to be produced, and is not relevant and proportional
`
`to Respondent’s discovery needs in this case. Petitioner objects to this request on the grounds
`
`that there is currently a motion for summary judgment pending in this case. The motion is
`
`dispositive of the proceeding, and therefore Petitioner need not respond to discovery, which may
`
`be moot upon the Board's decision on the motion. See 37 CFR § 2.127(d); See Leeds
`
`Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303, 1305-06 (TTAB 2002)
`
`(time to serve discovery responses reset following decision on potentially dispositive motion).
`
`Petitioner objects to this request to the extent it seeks information containing trade secrets or other
`
`proprietary or confidential business information of Petitioner. Applicant further objects to this
`
`request to the extent that it seeks information protected by the attorney-client privilege, the attorney
`
`work product doctrine or any other privilege recognized by applicable law. Without waiving the
`
`foregoing objections, and subject to them, Petitioner responds as follows:
`
`

`

`See Petitioner’s Motion for Summary Judgment. Discovery is ongoing and Petitioner may
`
`supplement its response at a later time. Applicant will produce any additional, discoverable,
`
`responsive documents to the extent they exist.
`
`
`REQUEST NO. 10
`
` A
`
` list of all of Peony Swimwear’s retail partners since Peony Swimwear began selling in the
`United States and the date on which such partner began selling items featuring the Peony
`Swimwear Mark.
`
`Response:
`
`
`Petitioner incorporates herein the General Objections above. Petitioner objects to this
`
`request on the grounds that it is overbroad and unduly burdensome because it does not specify
`
`with reasonable particularity the information to be produced, and is not relevant and proportional
`
`to Respondent’s discovery needs in this case. Petitioner objects to this request on the grounds
`
`that there is currently a motion for summary judgment pending in this case. The motion is
`
`dispositive of the proceeding, and therefore Petitioner need not respond to discovery, which may
`
`be moot upon the Board's decision on the motion. See 37 CFR § 2.127(d); See Leeds
`
`Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303, 1305-06 (TTAB 2002)
`
`(time to serve discovery responses reset following decision on potentially dispositive motion).
`
`Petitioner objects to this request to the extent it seeks information containing trade secrets or other
`
`proprietary or confidential business information of Petitioner. Applicant further objects to this
`
`request to the extent that it seeks information protected by the attorney-client privilege, the attorney
`
`work product doctrine or any other privilege recognized by applicable law. Without waiving the
`
`foregoing objections, and subject to them, Petitioner responds as follows:
`
`

`

`See Petitioner’s Motion for Summary Judgment. Discovery is ongoing and Petitioner may
`
`supplement its response at a later time. Applicant will produce any additional, discoverable,
`
`responsive documents to the extent they exist.
`
`
`REQUEST NO. 11
`
`Documents sufficient to reflect the wholesale and retail price for each good sold in the United
`States bearing the Peony Swimwear Mark.
`
`Response:
`
`
`Petitioner incorporates herein the General Objections above. Petitioner objects to this
`
`request on the grounds that it is overbroad and unduly burdensome because it does not specify
`
`with reasonable particularity the information to be produced, and is not relevant and proportional
`
`to Respondent’s discovery needs in this case. Petitioner objects to this request on the grounds
`
`that there is currently a motion for summary judgment pending in this case. The motion is
`
`dispositive of the proceeding, an