Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1088158
`10/13/2020
`
`ESTTA Tracking number:
`
`Filing date:
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92071349
`
`Defendant
`Irina S. Kozodaeva
`
`KENNETH M MOTOLENICH-SALAS
`MOTOSALAS LAW PLLC
`16210 NORTH 63RD STREET
`SCOTTSDALE, AZ 85254
`UNITED STATES
`Primary Email: Ken@motosalaslaw.com
`202-257-3720
`
`Opposition/Response to Motion
`
`Kenneth Motolenich-Salas
`
`ken@motosalaslaw.com
`
`/Kenneth Motolenich-Salas/
`
`10/13/2020
`
`part 1 of ex d.pdf(5757136 bytes )
`part 2 of ex d.pdf(1261327 bytes )
`CORRECTED FINAL part 3 of exhibit D.pdf(3992848 bytes )
`CORRECTED part 4 of exhibit d.pdf(4261321 bytes )
`part 5 of ex d.pdf(6063698 bytes )
`part 6 of exhibit d.pdf(3640700 bytes )
`index to paper no 37.pdf(2145 bytes )
`
`

`

`EXHIBIT D
`EXHIBIT D
`
`

`

`DECLARATION OF IRINA KOZODAEVA
`
`I, Kenneth M. Motolenich-Salas, declare as follows:
`
`1.
`I am over eighteen (18) years old and am the attorney of record for Registrant Irina
`Kozodaeva in this action. I have personal knowledge of the facts set forth herein and could and
`would testify competently thereto if called as a witness.
`
`
`2.
`I have reviewed all documents produced by Petitioner NT-MDT LLC in this action
`(“TTAB Produced Documents”), as well as all documents created by NT-MDT LLC in this
`proceeding, including (i) pleadings and other documents filed with the TTAB, (ii) discovery
`requests, (iii) disclosure statements, and (iv) discovery responses (“TTAB Created Documents”).
`
`3.
`Moreover, I am the attorney of Registrant in a copending civil litigation in the
`District of Arizona, NT-MDT LLC et al. v. Kozodaeva et al., Case No. 2:19-cv-03691-JJT.
`
`4.
`As such, I have reviewed all documents produced by Plaintiffs NT-MDT LLC and
`NT-MDT America, Inc. in that action (“Civil Litigation Produced Documents”), as well as all
`documents created by Plaintiffs in that proceeding, including (i) pleadings and other documents
`filed with the Court, (ii) discovery requests, (iii) disclosure statements, and (iv) discovery
`responses (“Civil Litigation Created Documents”).
`
`5.
`There is no reference or even a mention of any 2003 oral or other assignment of the
`Mark at issue in this action from NT-MDT CJSC or any other entity to CJSC NTI or any other
`entity. That is, no reference or mention is found in either the TTAB Produced Documents or the
`Civil Litigation Produced Documents to any such 2003 assignment.
`
`6.
`The only reference to the 2003 oral assignment from NT-MDT CJSC to CJSC NTI
`asserted by Petitioner to exist is in TTAB Created Documents and Civil Litigation Created
`Documents. That is, the 2003 oral assignment’s only reference in writing is in documents created
`in 2019 or 2020, sixteen or seventeen years later, for purposes of this proceeding and the civil
`litigation.
`
`7.
`Furthermore, there is no reference or even a mention of any 2005 oral or other
`assignment of the Mark at issue in this action from CJSC NTI or any other entity to NT-MDT
`Service & Logistics, Ltd. or any other entity. That is, no reference or mention is found in either
`the TTAB Produced Documents or the Civil Litigation Produced Documents to any such 2005
`assignment.
`
`8.
`The only reference to the 2005 oral assignment from CJSC NTI to NT-MDT
`Service & Logistics, Ltd. asserted by Petitioner to exist is in TTAB Created Documents and Civil
`Litigation Created Documents. That is, the 2005 oral assignment’s only reference in writing is in
`documents created in 2019 or 2020, fourteen or fifteen years later, for purposes of this proceeding
`and the civil litigation. Relatedly, there is no document in TTAB Produced Documents or the Civil
`Litigation Produced Documents that references or even mentions the assigning by CJSC NTI of
`only U.S. common law rights in the Mark in 2005 to NT-MDT Service & Logistics, Ltd., with
`
`1
`
`

`

`DECLARATION OF IRINA KOZODAEVA
`
`CJSC NTI retaining non-U.S. common law rights in the Mark. It should be recalled that Petitioner
`alleges that the 2003 oral assignment was of the trademark rights, not just U.S. rights, in the NT-
`MDT Mark to CJSC NTI, see Pet’n ¶ 8 and Am. Compl. ¶ 12,1 whereas the 2005 oral assignment
`from CJSC to NT-MDT Service & Logistics, Ltd. is alleged to have been a U.S.-only transfer, see
`Pet’n ¶ 14, Am. Compl. ¶ 18, with U.S. rights carved apart from non-U.S. rights to the Mark.
`
`9.
`Moreover, other than for the undated minutes of the meeting of the NT-MDT
`Service & Logistics, Ltd. Directors (“Meeting Minutes”) that took place ostensibly on December
`12, 2014 (Petitioner’s Exhibit E, NT-124, which is Exhibit 4 to the Declaration of Alexander
`Bykov submitted in support of Registrant’s Response to Petitioner’s Motion for Summary
`Judgment), there is no reference or even a mention of the January 1, 2015 assignment alleged to
`have been effectuated in such Meeting Minutes. That is, other than the Meeting Minutes itself and
`TTAB Created Documents and Civil Litigation Created Documents from 2019 or 2020 (four and
`five years after the alleged meeting), there is no reference or mention found in either the TTAB
`Produced Documents or the Civil Litigation Produced Documents to the purported January 1, 2015
`assignment.
`
`10.
`
`11.
`I have experience searching Trademark Office records, including assignments of
`https://assignment.uspto.gov/trademark/index.html#/trademark/search
`and
`at
`trademarks
`applications
`and
`registrations
`through
`TESS,
`trademark
`http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4807:9ho11v.1.1,
`and
`TSDR,
`http://tsdr.uspto.gov/.
`
`12.
`I searched the Trademark Records for information concerning any trademark
`application of registration of NT-MDT Service & Logistics, Ltd.
`
`13.
`I found records of eleven trademark registrations owned by NT-MDT Service &
`Logistics, Ltd. A true and correct copy of a listing of these in TESS made on April 24, 2020 and
`the registration certificates of such trademarks obtained from TSDR is attached hereto as Exhibit
`1.
`
`As indicated above, I am the attorney for Registrant in this proceeding.
`
`
`14.
`trademarks.
`
`15.
`for the Mark.
`
`16.
`
`
`The Mark is not listed in the listing of NT-MDT Service & Logistics, Ltd.
`
`I searched both the Assignment Records for evidence of any assignment recorded
`
`I did not find evidence in the Assignment Records for any such assignment.
`
`
`1 Exhibit 3 to Declaration of Alexander Bykov.
`
`2
`
`

`

`DECLARATION OF IRINA KOZODAEVA
`
`I did not find evidence in the Assignment Records for any such assignment.
`
`17.
`I also searched the Assignment Records for evidence of any assignment of the NT-
`MDT Service & Logistics, Ltd. trademarks, such as those listed in Exhibit 1, to any other entity,
`including but not limited to NT-MDT LLC, an assignment which Petitioner alleges occurred on
`January 1, 2015.
`
`18.
`
`19.
`One of the NT-MDT Service & Logistics, Ltd. trademark registrations, iCAIR,
`4,962,139, was filed on October 1, 2015, ten months after the purported assignment of all of NT-
`MDT Service & Logistics, Ltd. trademarks from it to NT-MDT LLC.
`
`20.
`As attorney of record for Registrant in this proceeding, I served on Petitioner’s
`counsel responses to interrogatories. On March 27, 2020, I served amended responses to the first
`set of interrogatories, a true and correct copy of relevant portions of these which Registrant relies
`upon for the Response to the Motion for Summary Judgment is attached hereto as Exhibit 2. These
`contained amended responses to select interrogatories. Relevant portions of the original responses
`to the first set of interrogatories on which Registrant relies upon for the Response to the Motion
`for Summary Judgment, which includes responses to those interrogatories for which no
`amendment to the response was made, are attached hereto as Exhibit 3.
`
`21. Moreover, I served responses to the second set of interrogatories on Petitioner’s
`counsel on March 13, 2020. A true and correct copy of relevant portions of these which Registrant
`relies upon for the Response to the Motion for Summary Judgment is attached hereto as Exhibit
`4.
`
`
`22.
`All declarants supporting the Registrant’s response to the Petitioner’s motion for
`summary judgment are listed in Registrant’s Supplemental Disclosures, viz., Irina Kozodaeva,
`Alexander Bykov, Dimitry Kozodaev, Rashid Dzhaubaev, and Anastasia Aleksandrovna
`Yakovleva, which were served on March 3, 2020. A true and correct copy of these is attached
`hereto as Exhibit 5, with these declarants listed on pp. 2-3.
`
`23.
`Additionally, documents in this matter, including an NT-MDT CJSC audit report,
`identified a May 24, 2016 trademark license grant from NT-MDT CJSC to STC LLC (referenced
`in Petitioner’s motion as Scientific Technology Company). Despite serving multiple requests for
`production to which the license would be responsive, Petitioner did not produce this document,
`although the undersigned believes that it would have possession of it.
`
`24.
`I even went so far as to contact the company that prepared the audit report; however,
`the audit report company did not have a copy of the license. A true and correct copy of a March
`12-13, 2020 email conversation with the audit report company is attached hereto as Exhibit 6 and
`bears bates labels KOZ3244-3247.
`
`
`3
`
`

`

`DECLARATION OF IRINA KOZODAEVA
`
`25.
`On April 30, 2020, I was provided by Mr. Alexander Bykov a copy of a document
`that is a license between NT-MDT CJSC and NT-MDT Europe B.V. related to rights in former’s
`trademarks, including the NT-MDT Mark. A true and correct copy of this document is attached
`hereto as Exhibit 7. It is my firm belief that Petitioner had a copy or access to this document during
`the entire pendency of this action, yet failed to produce it. Registrant was only provided a copy of
`this agreement herself on April 30, 2020, which prompted my immediate production of it.
`
`26.
`I represent Registrant and her husband in parallel civil litigation in the District of
`Arizona. In such action, Petitioner, along with NT-MDT America Inc., filed an original complaint
`against my clients on May 20, 2019, which was later amended. A true and correct copy of the
`original complaint is attached hereto as Exhibit 8. I read the original complaint and there is no
`reference therein to any assignment of the Mark of any kind or abandonment of usage of the Mark
`by NT-MDT or any other entity.
`
`27.
`On April 30, 2020, I obtained from TSDR the statement of use and specimen of use
`filed in the application leading to the registration of NT-MDT, and a true and correct copy of these
`filings with the Trademark Office is attached hereto as Exhibit 9.
`
`28.
`Attached hereto as Exhibit 10 is a true and correct copy of a web archive of
`ntmdt.com from April 21, 2014 made on June 14, 2019 bates labeled KOZ439 showing usage by
`NT-MDT CJSC of its NT-MDT Trademark on its website and identifying its Moscow office as
`the “Head Office” and identifying (i) NT-MDT Service & Logistics as a “branch office of NT-
`MDT in Limerick” in Ireland, (ii) NT-MDT Shanghai as the “branch office of NT-MDT” “located
`in Shanghai”, (iii) NT-MDT European Sales and Application office as the “branch office of NT-
`MDT” located in “Apeldorn, The Netherlands”, and (iv) NT-MDT America as the “branch office
`of NT-MDT” “located in Tempe” Arizona.
`
`29.
`Attached hereto as Exhibit 11 is a true and correct copy of the record of the NT-
`MDT trademark with the Russian Trademark Office I made on Oct. 11, 2019 by accessing
`new.fips.ru/iiss/document.xhtml?faces-redirect=true&id=3c4217889cb2a2e7457805d967b7565f.
`I bates labelled the page KOZ1052-1056.
`
`30.
`In addition to responses to interrogatories, Registrant served responses to requests
`for admission on, inter alia, Sep. 11, 2019, relevant portions of which are attached hereto as
`Exhibit 12.
`
`31.
`On March 10, 2020, I accessed the Wayback Machine to obtain archived webpages
`of various NT-MDT-related websites. A true and correct copy of some of the archived webpages
`I accessed that day and that were produced in this proceeding is attached as Exhibit 13 and bears
`bates labels ranging from KOZ3074 to 3177, and Exhibit 14 with bates labels KOZ2823-2824 and
`KOZ2830, 2833-36.
`
`
`4
`
`

`

`DECLARATION OF IRINA KOZODAEVA
`
`32.
`Attached hereto as Exhibit 15 is a true and correct copy of a document produced
`in this proceeding bearing bates label KOZ3340-3341.
`
`33.
`On March 9, 2020, the Wayback Machine to obtain archived webpages of the
`Materials Research Society (“MRS”), mrs.org. A true and correct copy of the mrs.org archive from
`Dec. 27, 2009 is attached hereto as Exhibit 16 and bates labelled KOZ2899-2907, with NT-MDT
`Co. identified as an exhibitor at the MRS Fall Meeting (on KOZ2904).
`
`34.
`Attached hereto as Exhibit 17 is a true and correct copy of a document produced
`in this proceeding bearing bates label KOZ3282-3283.
`
`35.
`Attached hereto as Exhibit 18 is a true and correct copy of a webarchive made on
`March 9, 2020 of nanotech-america.com of Nov. 24, 2006 and bates labelled KOZ2804.
`
`36.
`Attached hereto as Exhibit 19 is a true and correct copy of Regisrant’s responses
`to Petitioner’s second set of requests for admission served on March 10, 2020.
`
`37.
`Attached hereto as Exhibit 20 is a true and correct copy of Registrant’s mandatory
`initial discovery responses served in parallel civil litigation on November 12, 2019.
`
`38.
`Attached hereto as Exhibit 21 is a true and correct copy of the record from the
`European Trademark Office made on May 4, 2020 of the iCAIR and Solver Next registrations
`owned by a company related to Petitioner (NT-MDT Service & Logistics, Ltd.). Such information
`is publicly available.
`
`39.
`Attached hereto as Exhibit 22 is a true and correct copy of Registrant’s Amended
`Responses to the First Set of Interrogatories dated Aug. 26, 2020.
`
`40.
`Attached hereto as Exhibit 23 is a true and correct copy of Registrant’s Amended
`Responses to the Second Set of Interrogatories dated Aug. 25, 2020.
`
`
`I, being warned that willful false statements and the like are punishable by fine or
`imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like
`may jeopardize the admissibility of the declaration, declares that all statements made of my own
`knowledge are true and all statements made on information and belief are believed to be true.
`Further, I declare under penalty of perjury under the laws of the United States and the Russian
`Federation that the facts stated herein are true and correct.
`
`Dated this 8th day of October, 2020.
`
`
`
`
`
`
`
`_______________________________________________________________
`
`
`
`Signature of Affiant, Kenneth M. Motolenich-Salas
`
`5
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Record List Display
`
`Page 1 of 1
`
`Un it e d St a t e s Pa t e n t a n d Tr a de m a r k Office
`
`H om e| Sit e I n de x| Se a r ch| FAQ| Glossa r y| Con t a ct s| e Bu sine ss| e Biz a le r t s| N e w s
`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Fri Apr 24 04:37:23 EDT 2020
`
`Logout Please logout when you are done to release system resources allocated for you.
`
`Start
`
`List
`At:
`
`OR Jump
`
`to
`record:
`
`11 Records(s) found (This
`page: 1 ~ 11)
`
`Refine Search (nt-mdt service)[OW]
`
`Submit
`
`Current Search: S1: (nt-mdt service)[OW] docs: 11 occ: 11
`
`Serial Number Reg. Number
`
`Word Mark
`
`Check Status Live/Dead
`
`1 79073424
`
`2 79114916
`
`3 79114915
`
`4 79080430
`
`5 79176273
`
`6 77678164
`
`7 77622688
`
`8 77623345
`
`9 77622727
`
`10 77622711
`
`11 77622739
`
`3832139
`
`4359597
`
`4359596
`
`3910380
`
`4962139
`
`3890721
`
`4019833
`
`4012840
`
`4009835
`
`4009834
`
`3944839
`
`NTEGRA LIFE
`
`TSDR
`
`SOLVER SPECTRUM TSDR
`
`SOLVER NANO
`
`SOLVER OPEN
`
`ICAIR
`
`SOLVER NEXT
`
`HEADHIPEX
`
`PINPOINT
`
`EXPERTFBA
`
`TSDR
`
`TSDR
`
`TSDR
`
`TSDR
`
`TSDR
`
`TSDR
`
`TSDR
`
`ISOSHIELD SYSTEM TSDR
`
`SCANSCALER
`
`TSDR
`
`DEAD
`
`DEAD
`
`DEAD
`
`DEAD
`
`LIVE
`
`LIVE
`
`DEAD
`
`DEAD
`
`DEAD
`
`DEAD
`
`DEAD
`
`| .HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
`
`http://tmsearch.uspto.gov/bin/showfield?f=toc&state=4807%3A9ho11v.1.1&p_search=sea… 4/24/2020
`
`

`

`(63“th étateg’ £an1112r
`Mattel: films 319mm anti Erahematk @fit’ce
`ltd?
`
`Ntegra Life
`
`NT-MDT SERVICE E: LOGISTICS LIMJTED (IRELAND PRC.)
`Reg. No. 3,832,139
`FIT-MDT I—IOI JSE
`_
`Reglstered Aug. 10, 2010 NATIONAL TECHNOLOGICAL PARK CASTIETROY
`LI MERI‘CK. I RELAND
`
`Int. CL: 9
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`FOR. MICROSCOPES, IN CLASS 9111.5. CIS. 2]. 23. 20. 3(1ANI)38).
`
`THE. MARK. CO'NSISTS 0F STANDARD CHARACTERS WITHL'HJT CLAIM TO ANY PAR-
`]ICULAR FONT STYLE, SIZE, OR COLOR.
`
`PRIORITY DATE OF T—3|~2(1i’]9 IS CLAIMED.
`
`OWNER OF WTERNAHDNAL REGISTRATI DN [014723 DATE-D 8-17-2009: EXPERES 3—!7-
`2h] 9.
`
`SER. NO. 79-[173.—'IZ4. FILED R-l T-ZUU‘).
`
`DAVID MJI .L ER= EXA MINING ATTORNEY
`
`
`
`|I.r.:L-Iur Mm: unimi {mum l'-)rcnl Inn] Imemrk I ”fin:
`
`KOZ1778
`KOZ1778
`
`

`

`(593112“ étatw of Qmer
`mutter! 5mm: iBatent mm TIErahemark QBffice
`
`ltd?
`
`SOLVER SPEC TRUM
`
`Reg, No, 4,359,597
`
`NT-MDT SERVICE & LOGISTICS LTD. (IRELAND LIMITED COMPANY)
`NT—MDT HOUSE
`
`Registered July 2, 2013 NATIONAL TECHNOLOGICAL PARK, CASTLETROY
`LIMERICK. IRELAND
`
`Int. Cl.: 9
`
`TRADENIARK
`
`FOR: MICROSCOPES, IN CLASS 9(U.S. CLS. 21, 23,26, 36AND 38).
`
`TIIE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`PRINCIPAL REGISTER
`
`PRIORITY DATE OF 3-26-2012 IS CLAIMED.
`
`OWNER OF INTERNATIONAL REGISTRATION I 121482 DATED 4-30-2012, EXPIRES 4-30-
`2022.
`
`OWNER OF US REG. NOS. 3,890,721 AND 3,910,380.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "SPECTRUM", APART FROM
`THE MARK AS SHOWN.
`
`SER. NO. 79-114,916, FILED 4-30-2012.
`
`JENNIFER BUTTON, EXAMINING ATTORNEY
`
`
`
`‘jlg/x/Az/ {M‘fli/
`
`Acting Director nfthe United States Patent and Trademark Office
`
`KOZ1849
`KOZ1849
`
`

`

`(593112“ étatw of Qmer
`mutter! 5mm: iBatent mm TIErahemark QBffice
`
`ltd?
`
`SOLVER NANO
`
`Reg, No, 4,359,596
`
`NT-MDT SERVICE & LOGISTICS LTD. (IRELAND LIMITED COMPANY)
`NT—MDT HOUSE
`
`Registered July 2, 2013 NATIONAL TECHNOLOGICAL PARK, CASTLETROY
`LIMERICK. IRELAND
`
`Int. Cl.: 9
`
`TRADENIARK
`
`FOR: MICROSCOPES, IN CLASS 9(U.S. CLS. 21, 23,26, 36AND 38).
`
`TIIE MARK CONSISTS OF STANDARD CHARACTERS WITIIOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`PRINCIPAL REGISTER
`
`PRIORITY DATE OF 4-2-2012 IS CLAIMED.
`
`OWNER OF INTERNATIONAL REGISTRATION I 121481 DATED 4-30-2012, EXPIRES 4-30-
`2022.
`
`OWNER OF US REG. NOS. 3,890,721 AND 3,910,380.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "NANO", APART FROM THE
`MARK AS SHOWN.
`
`SER. NO. 79-114,915, FILED 4-30-2012.
`
`JENNIFER BUTTON, EXAMINING ATTORNEY
`
`
`
`‘jlg/x/Az/ {M‘fli/
`
`Acting Director nfthe United States Patent and Trademark Office
`
`KOZ1918
`KOZ1918
`
`

`

`“a“, IBIJ étatefi of gm“.
`mutter: 5mm" 39mm mm Erahmarh @fiicz
`Solver Open
`
`([8?
`
`Reg. No. 3,910,380
`
`Registered Jan. 25, 2011
`
`NT-MDT SERVICE & LOGISTICS LINE—FED [IRELAND PRIVATE LIMITED COMPANY)
`N ILMDT I’lOlJSE
`NATIONAL TECI-DNIDLDGICAL PARK
`CAS'I'LETROY. LIMERICK. IRELAND
`
`Int. CL: 9
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`FOR: MCROSCOPES. IN CLASS 9 ILLS CLS. 2!. 23. 26. RtSAND 38).
`
`THE. MARK CONSIS’I'S 0F STAN DARD CHARACTERS WIT HUI] I CLAIM TI} ANY PAR—
`TIC ULAR FONT. STYLE, SIZE. OR COLOR.
`
`PRIORITY DATE OF l-2I-2Ul0 IS CLAIMED.
`
`OWNER OF INTERNATIONAL REGISTRATION [032872 DATED 2-2 5-20 ll}. EXPIRES 245-
`2H2FL
`
`NO CLAIM IS MADF. TO I'ILL' EXCLUSIVE RIGHT TO USE ”OPEN“. APART FROM THE
`MARKAS SI—IO'WN
`
`SER. NO. "IQ-I 180.4 31], 1:1 LED 2-25—32} [I].
`
`LAME-ZS MACFARLANEI EXAMINTNG ATTORNEY
`
`
`
`Ihruclnr ni llh: LInIh‘J Mann I")I\:nI um] I1.uimm: k I ”71-:
`
`

`

`wfivtm étateg of Elmer
`mutter! 5mm: iBatent mm TIErahemark QBffice
`ltd?
`
`iCAIR
`
`Reg, No, 4,962,139
`
`NT-MDT SERVICE & LOGISTICS LTD. (IRELAND CORPORATION)
`NT—MDT HOUSE,
`Registered May 24, 2016 NATIONAL TECHNOLOGICAL PARK,; CASTLETROY; LIMERICK
`IRELAND
`
`Int. CL: 9
`
`TRADENIARK
`
`FOR: MICROSCOPES, IN CLASS 9(U.S. CLS. 21, 23,26, 36AND 38).
`
`TIIE MARK CONSISTS OF STANDARD CHARACTERS WITTIOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`PRINCIPAL REGISTER
`
`PRIORITY DATE OF 4—13—2015 IS CLAIMED.
`
`OWNER OF INTERNATIONAL REGISTRATION 1273558 DATED 10-1-2015, EXPIRES 10-
`1—2025.
`
`SER. NO. 79-176.273, FILED 10-1-2015.
`
`JONATHAN FALK, EXAMINING ATTORNEY
`
`
`
`Director of the United States
`Patent and Trademark Office
`
`KOZ1823
`KOZ1823
`
`

`

`wan“ étatefi’ of am“,
`
`anther: fitatm‘ iBateut anti flirahmuarh @fiite
`
`(I?
`
`SOLVER NEXT
`
`NILMDT SERVICE & LOGISHCS LTD. {IRELAND CORPORAHON _l
`Reg. No. 3,890,72 I
`MLMD'I‘ i-iCJUSE NATIONAL '1 EC‘I—MULOUIL‘AL PARK
`.
`RegIStered Dec. 14, 2010 CASTLETROY, LIMERICK. IRELAND
`
`Int. Cl.: 9
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`FOR: SCLENHFIC AND ELEC'IRONIC APPARAJ'US AM) INSTRUMENI'S. NAMEIX. M]—
`(.‘RUSCOPES USED FOR SCANNING. ETCI LINGANI) ULNERA'HNG SAD IMAGES Ol- ‘I'Hh
`SURFACES OF SPECEV‘LENS, 1N CLASS 9 {US CLS 21.23. 2:3. 36AN‘D 3S 1.
`
`FIRST LJSI-. 3—22—2009}; [N comer; 3—22—2mau
`
`THE MARK CONSIST‘S or STANDARD CHARACTERS WTH-IQUT CLAIM TO ANY PAR.
`TICI .11 AR FONT. S‘rWI-i. SIZE. 0R COLUR.
`
`5N 774173.104, FILLD 2—35-2009.
`
`SA MUE'L E. SHA RPER IR EXA MTN'ING ATTORNEY
`
`
`
`I Ilruulur nillu; Ummi 51mm I")l\:nr um] Imimuu-k I ”fir:
`
`K022479
`KOZ2479
`
`

`

`wfivtm étatw of firmer,
`mutter! 5mm: iBatent mm TIErahemark QBffice
`ltd?
`
` EADHIPEX
`
`NT-MDT SERVICES & LOGISTICS LTD. (IRELAND CORPORATION)
`Reg. No. 4,019,833
`
`NT—MDT HOUSE NATIONAL. "ECHNOLOGICAI, PARK
`.
`Registered Aug. 30, 2011 CASTLETROY, LIMERICK, IRELAND
`
`Int. CL: 9
`
`FOR: AUTOMATED HIGH PRECISION SWITCHING DEVICE USED TO EXCHANGE
`SCANNING HEADS IN MICROSCOPES, IN CLASS 9 (US. CLS. 21, 23, 26, 36 AND 38).
`
`TRADEMARK
`
`EIRST USE 1—1—2009; IN COMMERCE 1—1—2009.
`
`PRINCIPAL REGISTER
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE OR COLOR.
`
`SN 77-622,688, FILED 11-26-2008.
`
`SUSAN LESLIE DUBOIS7 EXAMINING ATTORNEY
`
`
`
`Director 0th: United States Patent and Trademark Office
`
`KOZ1990
`KOZ1990
`
`

`

`wfivtm étatw of Elmer
`mutter! 5mm: iBatent mm TIErahemark QBffice
`ltd?
`
`PINPOINT
`
`Reg, No, 4,012,840
`
`NT-MDT SERVICE & LOGISTICS LTD. (IRELAND CORPORATION)
`NATIONAL TECHNOLOGY PARK
`
`Registered Aug. 16, 2011 NT—MDT HOUSE
`CASTLETROY, IRELAND
`
`Int. CL: 9
`
`FOR: PRECISION INSTRUMENT, NAMELY, SCANNING PROBE MICROSCOPES THAT
`ALLOW A USER TO PERFORM SCANS OF PRECISEAREAS WITHIN THE OPTICAL FIELD
`
`TRADEMARK
`
`OF VISION, IN CLASS 9 (U.S. CLS. 21. 23, 26, 36 AND 38).
`
`PRINCIPAL REGISTER
`
`FIRST USE 1—1—2009; IN COMMERCE 1—1—2009.
`
`TIIE MARK CONSISTS OF STANDARD CHARACTERS WITIIOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`SN 77-623345, FILED 11-30-2008.
`
`MICHAEL ENGEL, EXAMINING ATTORNEY
`
`
`
`Director Ofthe United States Patent and Trademark Office
`
`K0221 12
`KOZ2112
`
`

`

`wfivtm étatw of Elmer
`mutter! 5mm: iBatent mm TIErahemark QBffice
`ltd?
`
`EXPERTFBA
`
`NT-MDT SERVICE & LOGISTICS LTD. (IRELAND CORPORATION)
`Reg, No, 4,009,835
`NT—MDT HOUSENATIONAI. TECHNOLOGICAL PARK
`.
`Registered Aug. 9, 2011 CASTLE’ROY, LIMERICK, IRELAND
`
`Int. CL: 9
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`
`
`Director Uflhe United States Patent and Trademark Office
`
`
`
`FOR: AUTOMATIC OPTICAL DEVICE FOR SCANNING PROBE MICROSCOPES, NAMELY,
`A DEVICE FOR THE AUTOMATIC OPTICAL ALIGNMENT OF MICROSCOPE LASER
`BEAMS. )ROBES, AND PHOTODIODES, IN CLASS 9 (US. CLS. 21) 23, 26, 36 AND 38).
`
`FIRST USE 1-1-2009; IN COMMERCE 1-1-2009.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT. STYLE. SIZE, OR COLOR.
`
`SN 77-622,727, FILED 11-26-2008.
`
`MICIIAEL ENGEL, EXAMINING ATTORNEY
`
`K022256
`KOZ2256
`
`

`

`wfivtm étatw of Qmer
`mutter! 5mm: iBatent mm TIErahemark QBffice
`
`ltd?
`
`ISOSHIELD SYSTEM
`
`NT—MDT SERVICE & LOGISTICS LTD. (IRELAND CORPORATION)
`NT—MDT HOIISENATIONAI. TECHNOLOGICAL PARK
`CASTLETROY, LIMERICK, IRELAND
`
`
`
`FOR: MUL’TFUNCTIONAL SYSTEM, NAMELY, SCANNING PROBE MICROSCOPES WHICH
`CREATE A HOMOGENEOUS ENVIRONMENT, IN CLASS 9 (U. S. CLS. 21, 23, 26, 3 6 AND
`3 8).
`
`FIRST USE 1-1-2009; IN COMIVIERCE 1-1-2009.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT. STYLE, SIZE, OR COLOR.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "SYSTEM", APART FROM THE
`MARK AS SHOWN.
`
`SN 77-622,711, FILED 11-26-2008.
`
`MICHAEL ENGEL, EXAMINING ATTORNEY
`
`Reg. No. 4,009,834
`
`Registered Aug. 9, 2011
`
`Int. Cl.: 9
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`
`
`Director Uflhe United States Patent and Trademark Office
`
`

`

`REQUIREIVIENTS TO MAINTAIN YOLR FEDERAL
`TRADENIARK REGISTRATION
`
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`
`Requirements in the First Ten Years*
`What and When to File:
`
`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the
`5th and 6th years after the registration date, See 15 U.S.C, §§1058, 1141k.
`If the declaration is
`accepted, the registration will continue in force for the remainder of the ten-year period, calculated
`from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a
`federal court.
`
`Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an
`Application for Renewal between the 9th and 10th years after the registration datef‘<
`See 15 U.S,C. §1059.
`
`Requirements in Successive Ten-Year Periods"
`What and When to File:
`
`You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between
`every 9th and 10th-year period, calculated from the registration date”<
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above
`with the payment of an additional fee.
`
`The United States Patent and Trademark Office (USPTO) will NOT send you any future notice or
`
`reminder of these filing requirements.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with
`an extension of protection to the United States under the Madrid Protocol must timely file the Declarations
`of Use (or Excusable Nonuse) referenced above directly with the USPTO. The time periods for filing are
`based on the US, registration date (not the international registration date), The deadlines and grace periods
`for the Declarations of Use (or Excusable Nonuse) are identical to those for nationally issued registrations,
`See 15 USC. §§ 1058, 1 141k. However, owners of international registrations do not file renewal applications
`at the USPTO. Instead, the holder must file a renewal of the underlying international registration at the
`International Bureau of the World Intellectual Propelty Organization, under Article 7 of the Madrid Protocol,
`before the expiration of each ten-year term of protection, calculated from the date of the international
`registration. See 15 U.S.C, §ll4lj. For more information and renewal forms for the international registration,
`see http://www.wipo.int/madrid/en/C
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information. With the exception of renewal applications for registered
`extensions of protection, you can file the registration maintenance documents referenced above online
`at http://www,uspto,gov,
`
`Page: 2 / RN # 4,009,834
`
`

`

`roadie“ étatez of am“,
`
`3:111in 5mm: 39:1th ant: flirahemarh @fline
`
`(2?
`
`SCANSCALER
`
`NT—MDT SERVICE R LOGISDCS LTD. uRELARD CORPORAHDNJ
`Reg. No. 3,944,839
`NT-MDT H0USE,NATI0NA L '1 EC‘I—MOLOUICA L PARK
`.
`Reglstel‘ed Apr. 12, 2011 CASTLETROY, LIMERICK. IRELAND
`
`Int. CL: 9
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`FOR. El. ECTRDNIC ADJUSMN‘I' SYSTEM? NAMELY. SCANNlNG PROBE MICROSCOPES
`USED TO CREATE HlGi-LQUAl ITY SCA NN|:'D IMAGES. 1N CLASS ‘3‘ (11.3. L'LS. 2] . 23. 2h.
`36AM) 33‘!
`
`FIRST USI: l—U—ZUOQL IN COMMERCE [Ii-211119
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WTH-IQUT CLAIM TO ANY PAR.
`TICI JI AR FONT.S‘FX‘1.FT.SIZIE.OR COLOR.
`
`5N 77~b22.739, FILLD l 1464008.
`
`LAURA KOVCA.I_.SKY. EXAMlN'WG ATT(I)RNEY
`
`
`
`I IIrcCIur M lhr Un 1 ME FmEm l'-)rcn|
`
`:m I]
`
`I1. mm mrk I'Hfim
`
`KOZ2363
`KOZ2363
`
`

`

`EXHIBIT 2
`EXHIBIT 2
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NT-MDT LLC,
`
`Opposition No. 92/071,349
`
`Petitioner,
`
`Mark: NT-MDT Design Mark
`
`v.
`
`Irina Kozodaeva,
`
`Registrant.
`
`Reg. No. 5,753,336
`
`Filing Date: July 19, 2018
`
`Registered: May 14, 2019
`
`REGISTRANT IRINA KOZODAEVA’S AMENDED RESPONSES TO PETITIONER
`
`NT-MDT LLC’S FIRST SET OF INTERROGATORIES
`
`Pursuant to TBMP § 405.04, TBMP § 410, TBMP § 412.01, 37 C.F.R. § 2.120, and
`
`Rules 26 and 33 of the Federal Rules of Civil Procedure, Registrant Irina Kozodaeva
`
`(“Registrant”), by and through its undersigned counsel, hereby submits its amended responses
`
`to select interrogatories included in Petitioner’s (“Petitioner”) First Set of Requests for
`
`Interrogatories (“Interrogatories”) served on August 12, 2019 as follows. If a response to an
`
`interrogatory is not included herein, there has been no amendment to the previously-served
`
`response to such interrogatory.
`
`GENERAL OBJECTIONS
`
`Pursuant to TBMP § 410, Registrant makes the following general responses and
`
`objections (“General Objections”) to each definition, instruction, and Request propounded in
`
`Petitioner’s First Request for the Production of Documents to Registrant. These General
`
`Objections are hereby incorporated into each specific response. The assertion of the same,
`
`similar or additional objections or partial responses to individual Interrogatories does not waive
`
`any of Registrant’s General Objections.
`
`1.
`
`Registrant objects to the Interrogatories to the extent they purport to require
`
`unreasonably costly and/or time-consuming measures to locate and produce responsive
`
`documents, beyond the requirements of Fed. R. Civ. P. 26(b).
`
`1
`
`

`

`2.
`
`Registrant objects to each Request and to Petitioner’s “Definitions” and
`
`“Instructions” to the extent they are vague, ambiguous, overbroad, or unduly burdensome, or
`
`purport to impose upon Registrant any duty or obligation that is inconsistent with or in excess
`
`of those obligations that are imposed by the Federal Rules of Civil Procedure, the TBMP, the
`
`T.T.A.B.’s Scheduling Order, and/or any other applicable rule.
`
`3.
`
`Registrant objects to Petitioner’s definition of “Document” to the extent it is
`
`inconsistent with or unequal in scope to its usage in Fed. R. Civ. P. 34(a)(1)(A) and/or its usage
`
`in TBMP.
`
`4.
`
`Registrant objects to Petitioner’s definition of “Registrant,” “you,” or “your” to
`
`the extent it purports to include any person or entity that is separate and distinct from Registrant
`
`and not under Registrant’s control.
`
`5.
`
`Registrant objects to Petitioner’s definition of “Communication” as overly
`
`broad and unduly burdensome and to the extent it purports to impose requirements or
`
`obligations on Registrant beyond those set forth in the Federal Rules of Civil Procedure.
`
`6.
`
`Registrant objects to the Interrogatories on the grounds of disproportionality to
`
`the extent they purport to require Registrant to provide “all” or “any” information or other
`
`similarly expansive or all-inclusive terms.
`
`7.
`
`Registrant objects to each Interrogatory to the extent that it seeks information
`
`that is protected from disclosure by the attorney-client privilege, the attorney work product
`
`doctrine or any other applicable privilege, doctrine or discovery immunity. Pursuant to Fed.
`
`R. Evid. 502(b), the inadvertent production by Registrant of information protected from
`
`disclosure by any such privilege, doctrine or immunity shall not be deemed a waiver by
`
`Registrant of any such privileges or protections. Nothing herein is intended to be or should be
`
`construed as a waiver of the attorney-client privilege, the work product doctrine, or any other
`
`protection. Inadvertent production of such protected information is not intended to be and shall
`
`2
`
`

`

`not operate as a waiver of the applicable privilege. Registrant will identify any information
`
`withheld on the basis of such privilege, doctrine or immunity on a privilege log.
`
`8.
`
`Registrant objects to the Interrogatories to the extent it would require Registrant
`
`to produce documents containing confidential, proprietary, or trade secret information that is
`
`protected by rights of privacy. Registrant will produce any such documents pursuant to the
`
`T.T.A.B.’s standard protective order. TBMP § 412.01.
`
`9.
`
`Registrant objects to the scope of the Interrogatories on the grounds that they
`
`are overbroad