BULKY DOCUMENTS
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`(Exceeds 100 pages)
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`Proceeding/Serial No:
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`94002242
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`Filed:
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`7[20[201O
`
`Title: CONCURRENT USER OCINOMLED
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`LTD.’S FIRST NOTICE OF RELIANCE
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`Part
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`2
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`of
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`2
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`(Exceeds 100 pages)
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`Proceeding/Serial No:
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`94002242
`
`Filed:
`
`7[20[201O
`
`Title: CONCURRENT USER OCINOMLED
`
`LTD.’S FIRST NOTICE OF RELIANCE
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`Part
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`2
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`of
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`2
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`
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`JOHN W. WADE
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`No.
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`I
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`thought that the sign has three words on it:
`
`Delmonico’s, Italian and steakhouse. Does
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`Southwestern as well use Delmonico’s?
`
`Yes.
`
`That's in all four restaurants?
`
`Yes.
`
`I believe you testified earlier from your Albany
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`restaurant that the only sign outside is your
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`roadside sign;
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`is that correct?
`
`Yes.
`
`Do you have any Delmonico’s signs inside the
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`Albany restaurant?
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`No.
`
`Let's move onto your Utica restaurant.
`
`Okay.
`
`What signs are there outside your Utica
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`restaurant?
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`One road sign.
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`And it states Delmonico’s Italian Steakhouse?
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`Yes.
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`It's two—sided.
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`So, it shows on both sides?
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`JOHN W. WADE
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`Yes. Where this is only one.
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`Now, your Albany restaurant, your road sign out
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`there is two—sided as well?
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`Yes, it is.
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`And in your Utica restaurant, do you have any
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`other Delmonico’s signs inside the restaurant?
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`No.
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`And now, your Syracuse restaurant, do you have a
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`sign, a roadside sign, outside your Syracuse
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`restaurant?
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`Yes.
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`Is that single—sided or ——
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`Double.
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`Do you have any other signs outside of your
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`Syracuse restaurant?
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`Yes.
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`What do those signs say?
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`One big sign,
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`those in front of the building,
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`that
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`just say Delmonico’s.
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`And what
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`type of font or style does Delmonico’s
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`show in?
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`It's different than the sign that's on the rest of
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`Stephen N. Fiato, C.S.R.
`
`(518) 478~722O
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`JOHN W. WADE
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`the buildings.
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`How does it differ?
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`The letters are shaped different.
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`It was selected
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`because it would fit in a certain space on the
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`stucco panel that's on front.
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`And —— I'm sorry.
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`A lot of controversy in our company, because it
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`doesn't match the others.
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`How is the font different?
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`I would say more block.
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`Block letters?
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`Yes.
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`I guess there is not a picture.
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`Is there any reason that that one particular sign
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`that you have just using the Delmonico’s mark that
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`you did not choose to include Italian steakhouse
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`with that?
`
`The one that we are talking about,
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`there is not
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`room.
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`If there had been room, would you use Delmonico’s
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`Italian Steakhouse?
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`Probably.
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`Besides those two signs outside of the Syracuse
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`JOHN W. WADE
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`restaurant, are there any other signs?
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`No.
`
`Are there any Delmonico’s signs inside the
`
`restaurant?
`
`No.
`
`Does Southwestern use Delmonico’s Italian
`
`Steakhouse together in advertising and promotional
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`materials?
`
`Yes.
`
`Now,
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`is that all the time would you say?
`
`I would say all the time.
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`Now,
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`this is just in general. Does Southwestern
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`as well use the Delmonico’s mark in combination
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`with the terms Italian and steakhouse besides the
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`one sign outside the Syracuse restaurant, which
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`just uses the mark Delmonico’s?
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`We always use Italian, yes.
`
`I'm sorry.
`
`Do you always use the term Italian
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`steakhouse with Delmonico’s?
`
`Yes.
`
`So, you would say that Southwestern always uses
`
`Delmonico’s Italian Steakhouse together when
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`
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`JOHN W. WADE
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`communicating with the public --
`
`Yes.
`
`—- and also when referring to the restaurant?
`
`Yes.
`
`Does Southwestern have any policy with regard to
`
`its display of the mark?
`
`I'm not sure what you mean. We always try to use
`
`it together like you said.
`
`Do you have any policy with respect to how you
`
`display the mark or --
`
`Everything does not have the same graphics.
`
`They
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`should be. We never bothered to do that.
`
`Some
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`day soon we will I'm beginning to think.
`
`Mr. Wade,
`
`I would like to direct your attention
`
`back to Emeri1’s Exhibit 5.
`
`I believe it's a menu
`
`that you produced.
`
`I believe you testified earlier that the
`
`first page,
`
`the top half --
`
`Yes.
`
`—— you had used that,
`
`those graphics, on your
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`menus since 1998.
`
`Since we opened; that's right.
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`
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`
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`JOHN W. WADE
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`Now, on the bottom half, how long have you used
`
`the characters and slogans on the bottom half of
`
`that menu?
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`Since 2003.
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`And is there any particular relevance to the 2003
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`date?
`
`Yeah. This is our artist's version of a Cadillac
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`Escalade. We bought one to promote the
`
`restaurants.
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`So,
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`the artist made this, and we
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`have used it on everything since.
`
`How many Cadillac Escalades did you purchase?
`
`You mean for this purpose?
`
`Yes,
`
`to promote your restaurants.
`
`Two.
`
`Where are they located?
`
`We purchased one, and then we —— it was a four
`
`year lease.
`
`Then we turned it back in, and we got
`
`a new one.
`
`So, only one at a time.
`
`That's good. And where is that Cadillac located?
`
`It's based in the Utica restaurant, but we take it
`
`to various cities for promotion.
`
`And how does the Delmonico’s mark appear on the
`
`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
`
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`JOHN W. WADE
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`Cadillac?
`
`Pretty much like you see. Delmonico's Italian
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`Steakhouse.
`
`It's the same way on the other side.
`
`It's on the hood the same way, and I
`
`think it's on
`
`the back the same way.
`
`MS. SMITH: Let the record reflect that the
`
`Witness was pointing to Exhibit 5, Emeril’s
`
`Exhibit 5.
`
`Sorry.
`
`In what coloring?
`
`The new one is black with gold letters. This
`
`was —— was white with red and green letters.
`
`So,
`
`the first one was white?
`
`White with red and green letters.
`
`The second
`
`one —— that's a year old ~— is black with gold
`
`letters.
`
`Is there any significance to the change in color?
`
`No, no.
`
`Okay.
`
`If I —— now, we will stay with the front
`
`page.
`
`Sorry.
`
`Do you see the reference on the
`
`first page to big city dining?
`
`Yes.
`
`Do you know why Southwestern uses the terms big
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`JOHN W. WADE
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`city dining in its advertising or on it's menu?
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`We use it in our window. We have gold print in
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`our window. We use it sometimes in our adds.
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`believe it's a term we picked up from a
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`restaurant.
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`I don't remember where.
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`Do you remember what restaurant it was?
`
`I
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`think it was it GI Friss.
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`It was about 25 years
`
`ago.
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`I used it at Jack Appleseed’s Tavern.
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`Now I
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`have used it here.
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`And do you —— why do you use the term big city
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`dining? What kind of message —— are you trying to
`
`convey a message?
`
`No.
`
`I just think it has a casual feel to it.
`
`How —— do you know whose decision it was to use
`
`the term big city dining in Southwestern’s
`
`advertising?
`
`It was my decision to use it; although 25 years
`
`ago.
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`Just something that —— we have various
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`things.
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`It's in the windows of the Rochester
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`restaurant. There is gold letters.
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`I'm sure it
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`says it somewhere, but it's hard to see in that
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`picture.
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`JOHN W. WADE
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`MS. SMITH: Let
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`the record reflect that the
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`Witness is referring to OCI 22.
`
`Thank you.
`
`THE WITNESS:
`
`It's just a fun thing.
`
`So, would you say that the term big city dining,
`
`the terms big city dining, have been used in
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`connection with your signs in Syracuse since it
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`opened in 1998?
`
`Oh, before that, because, as I said, my probably
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`signs in 1980.
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`In connection with your De1monico’s restaurant?
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`
`Stephen N. Fiato, C.S.R.
`(518) 478-7220
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`JOHN W. WADE
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`Q.
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`By using the slogan big city dining was
`
`Southwestern creating any association with New
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`York City or ——
`
`No.
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`—— any restaurant in New York City?
`
`No, no.
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`I think I saw it in TGI Fridays in
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`Dallas.
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`Do you have any —~ does Southwestern have any
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`restaurants in big cities?
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`Well, people in Utica think Albany is big, but we
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`are in markets that are here. Albany, Syracuse
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`Rochester and Utica.
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`And --
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`It’s like the term uptown. Big city dining.
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`You're not getting anywhere with it. Maybe we may
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`have to call somebody.
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`It really has nothing to
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`do with anything.
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`I'm going to refer you back to Emeril’s Exhibit 11
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`now, Mr. Purcell.
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`I believe this is trade secret
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`highly confidential.
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`Stephen N. Fiato, C.S.R.
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`(518) 478-7220
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`JOHN W. WADE
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`there was a Delmonico’s restaurant in Florida;
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`is
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`that correct?
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`Yes.
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`MR. PURCELL:
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`I don't believe that was his
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`exact
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`testimony.
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`You are mischaracterizing it.
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`If there was another Delmonico’s opened after your
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`theoretical restaurant opens in Florida, would you
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`be concerned by that?
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`Depends on the restaurant and where it would be
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`located. Obviously,
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`I rather there not be one.
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`Okay. You are aware that there is another
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`Delmonico’s restaurant in New York City?
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`Yes.
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`Are you concerned about that?
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`No.
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`Why not?
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`Totally different kind of restaurant.
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`It's a
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`market we are not at all interested in.
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`And why are you not interested in that kind of
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`market or what
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`type of market do you mean?
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`What?
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`You said you were not interested in that type of
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`JOHN W. WADE
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`market.
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`New York City.
`
`Right. And so, by market, you meant
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`the New York
`
`City market?
`
`Manhattan.
`
`Manhattan?
`
`Why am I not interested?
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`Yes.
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`I'm not familiar with it at all.
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`Itfs totally
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`different than most other markets in the Country.
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`And when did you become aware of the restaurant in
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`New York City?
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`I Can't say for sure. At least five years ago.
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`At least five years ago would be around 2003,
`
`2004 --
`
`Yeah.
`
`—— is your guess?
`
`(Indicating.).
`
`I'm not sure.
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`How did you become aware?
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`I'm not sure. That's a good question.
`
`I'm trying
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`to think.
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`I never saw any advertising.
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`I know
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`that. Maybe somebody mentioned it to me.
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`JOHN W. WADE
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`range, much different set up.
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`Okay. Let's talk a little about Southwestern’s
`
`responses to Ocinomled’s interrogatory request.
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`MS. SMITH:
`
`I would like mark that as OCI
`
`Exhibit 23.
`
`(A response to interrogatories was marked
`
`OCI Exhibit No. 23 for identification this
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`date.)
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`BY MS.
`
`SMITH:
`
`(Continued.)
`
`Q.
`
`Mr. Wade please,
`
`take a few minutes to review that
`
`document, and we will have a couple of questions.
`
`Please,
`
`let me know when you're ready.
`
`(The Witness complied ). Okay.
`
`I would like to direct your attention to Page 17
`
`of the responses.
`
`It's the page entitled
`
`verification of responses.
`
`Yes.
`
`Whose signature appears on that page?
`
`That's my son's.
`
`Have you seen this document before?
`
`YES.
`
`Have you reviewed this document?
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`
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`
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`JOHN W. WADE
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`Yes.
`
`I went over it yesterday.
`
`MS. SMITH: All right.
`
`Thank you.
`
`Now, please,
`
`to turn Page Five of the document.
`
`(The Witness comp1ied.).
`
`In Southwestern’s response to Interrogatory Number
`
`One,
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`the response says a number of things, but
`
`I
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`would like to take one point at a time.
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`In the first sentence,
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`if you look at the
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`first sentence, Southwestern says that it selected
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`the mark, meaning Delmonico’s, because, quote, it
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`wanted to open a restaurant that had an Italian
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`theme that highlighted steaks, period, end quote.
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`What does Southwestern mean when it
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`responded, when it said, an Italian theme in that
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`response?
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`A menu of steaks and Italian food, a combination
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`of both.
`
`Did it —— besides a menu with steaks and Italian
`
`food, was the ambience of the restaurant
`
`highlighting an Italian theme, and if so,
`
`in what
`
`way?
`
`No,
`
`I wouldn't think so, no more than it has a
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`JOHN W. WADE
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`beefsteak theme.
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`And so, what would you say the ambience of your
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`restaurant is?
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`Somewhat casual and masculine, dark woods,
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`low
`
`light.
`
`And when it says Southwestern wanted to highlight
`
`an Italian theme —~
`
`We wanted both.
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`I mentioned earlier we had seen
`
`in many situations where chains were located that
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`the Olive Garden and Outback Steakhouse were both
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`doing big business, and we wanted to capture both
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`of their customers.
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`In fact,
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`they are both about
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`a block away from our first location, but that was
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`coincidence.
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`In Emeril’s Exhibit 3, on the first page,
`
`is that
`
`your business card that's reflected on the first
`
`page?
`
`Yes.
`
`On the business card surrounding the Delmonico’s
`
`Italian Steakhouse are I believe leaves.
`
`Olive branch I was told.
`
`Did you get that idea from the Olive Garden?
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
`
`
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`JOHN W. WADE
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`A.
`
`
`No. Our sign man thought that was good for what
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`he developed. This is a sign. This was a sign
`
`
`reduced and put on a business card.
`
`
`
`that would go good with an Italian restaurant, an
`
`Italian steakhouse.
`
`I would like to direct your attention back to
`
`He thought
`
`
`Ocinomled Exhibit 23, a couple of sentences down.
`
`
`I believe it's the --
`
`Is this where I'm at?
`
`Yes.
`
`
`Okay. Still on the front page?
`
`Or Page Five.
`
`Page Five?
`
`Q.
`
`Yes, please.
`
`Okay.
`
`
`
`
`I believe it's one,
`
`two —— the fourth and fifth
`
`
`
`line down.
`
`Okay.
`
`There is a response that states Applicant chose
`
`Delmonico’s because it had sounded like an Italian
`
`name with —~ especially with the final letter
`
`comprising a vowel.
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`Stephen N. Fiato, C.S.R.
`
`(518) 478~7220
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`JOHN W. WADE
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`Applicant originally thought of naming the
`
`restaurant with a fictitious man's name, quote,
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`Joey Delmonico, end quote, adding a possessive S
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`after that name.
`
`What does Southwestern mean when it said it
`
`wanted something that sounded of an Italian name?
`
`Well, a lot of Italian restaurants will have a
`
`person's name. We talked earlier about
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`Grimaldi’s, very well—known in upstate New York
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`since the mid '40s, and so, it —— we seen
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`restaurants that have one name or two names.
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`We knew we wanted to incorporate
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`Delmonico's, and we were talking about Joey
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`Delmonico’s, Sal Delmonico’s. We through those
`
`things around. What the hell. We need a name.
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`Let's just say Delmonico’s Italian Steakhouse to
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`cover both.
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`You say that you considered using Joey Delmonico’s
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`as the name for the restaurant.
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`So, would you have used Joey for the first
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`name, and Delmonico’s would have been the last
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`name of the restaurant?
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`Stephen N. Fiato, C.S.R.
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`(518) 478-7220
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`JOHN W. WADE
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`Yes.
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`Did you ever consider using any other first names
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`rather Joey?
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`Sal we talked about.
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`Probably Tony came up
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`somewhere.
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`Did you ever consider using any other last names
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`other than Delmonico’s?
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`Because that was the name of the steak,
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`that was
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`the whole point
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`in using that. That's where we
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`got the Delmonico named involved.
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`So, no, you always wanted to use Delmonico’s as
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`the last name?
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`Yes.
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`Why did Southwestern decide not
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`to use Joey
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`Delmonico’s as the name of the restaurant?
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`It was cumbersome. That's a process you go
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`through. You try different formats and different
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`angles and different sizes, and it's just cleaner
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`this way. That's all.
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`And why did Southwestern ultimately choose
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`Delmonico’s Italian Steakhouse for the name of the
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`restaurant?
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`Stephen N. Fiato, C.S.R.
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`(518) 478-7220
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`JOHN W. WADE
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`Because of the steak and Italian.
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`At
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`the point
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`in time when you were choosing the
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`name for your original Syracuse restaurant, were
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`there any other discussions regarding any other
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`restaurants that were named Delmonico’s?
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`NO.
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`Are you aware of any other meaning that the term
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`Delmonico’s may have?
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`No, no never thought about it.
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`MS. SMITH: At this time,
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`I would like
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`introduce an office action dated ~— a portion of
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`an office action dated —— January 16th, 2004,
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`which was issued by the Trademark Office in
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`connection with Southwestern’s application to
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`register the mark Delmonico’s as OCI Exhibit 24.
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`(A portion of a response to an office
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`action dated January 16, 2004 was marked
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`OCI Exhibit No. 24 for identification this
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`date.)
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`MS. SMITH:
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`I would like to correct the
`
`record to reflect that OCI Exhibit 24 is a
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`response to an office action filed by
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`Stephen N. Fiato, C.S.R.
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`(518) 478-7220
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`JOHN W. WADE
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`Okay. And based upon what you know today, do you
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`think your Delmonico’s restaurants attract the
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`same clientele as the Delmonico’s restaurant in
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`New York City?
`
`You're asking what
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`I think, and I don't know
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`Delmonico’s.
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`I think after the lunch I had with
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`the owners I think that they're priced more with
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`the Capitol Grill and Palm and Flemmings,
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`Morton's,
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`these higher priced steakhouses.
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`I can tell you —— and I already did —— that
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`our sales are up two or three percent, and I know
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`all of the public steakhouses, Morton's and
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`Flemmings and Capitol Grill and so on,
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`the
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`higher—end ones that do a lot of business with
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`business people who travel, are off 25 or 30
`
`percent everywhere, New York City, Atlanta.
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`Now, who then would you characterize that goes to
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`Delmonico’s in New York City or Morton's or the
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`other restaurants, various restaurants?
`
`I would guess that much higher income than others
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`on average and many more business travelers,
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`Stephen N. Fiato, C.S.R.
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`(518) 478-7220
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`JOHN W. WADE
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`expense accounts,
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`than our’s.
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`And would you say that's the same for in
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`comparison with Emeril's Delmonico’s restaurant?
`
`I would assume so, based upon where they are.
`
`I
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`have seen their menu on the internet.
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`And how do the menus differ between your
`
`Delmonico’s and let's say Emeril’s Delmonico’s and
`
`Ocinomled’s Delmonico’s?
`
`Same thing. About a third of the price. We are
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`having much more in Italian than they are.
`
`Besides Italian that your restaurants offer, are
`
`there any other differences in menu and pricing?
`
`The big difference is it's a pound and a half
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`steak that we have featured.
`
`It's a big part of
`
`our restaurant.
`
`How does that differ from Emeril’s?
`
`They have steaks, but
`
`I didn't notice that they
`
`made any deal big deal out of Delmonico steak.
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`And how does that differ from the —~ or how do you
`
`think from the menu at Ocinomled’s New York
`
`restaurant?
`
`I would —— I don't think they had any Italian food
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`JOHN W. WADE
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`either,
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`if I
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`remember Correctly.
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`Do you know if Ocinomled offers a Delmonico steak?
`
`I'm sure they offer one.
`
`I
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`think Emeril’s offers
`
`one, but ours —— 30 to 40 percent of our sales of
`
`the people that come to our restaurants buy a
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`Delmonico steak.
`
`I don't think they come close to
`
`featuring it like that.
`
`MS. SMITH:
`
`Thank you, Mr. Wade.
`
`No
`
`further questions for you at this time.
`
`THE WITNESS:
`
`Thank you.
`
`MS. SQUIERS:
`
`I just have a follow—up
`
`question.
`
`I'll speak very loud,
`
`so that the Court
`
`reporter can hear me.
`
`EXAMINATION BY MS. SQUIERS:
`
`Q.
`
`You testified that the New York City market is a
`
`market you would not be interested in entering;
`
`correct?
`
`Certainly not at this time.
`
`I'm not familiar with
`
`it at all.
`
`I have considered New York City the
`
`same as England or France.
`
`It's just different.
`
`The numbers are all different.
`
`As far as that,
`
`the New York City market is not
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`JOHN W. WADE
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`like the market you're currently in; correct?
`
`Yes.
`
`Are there any other markets that are like the New
`
`York City market that you wouldn't be interested
`
`in entering into?
`
`Well, we are a small company with four
`
`restaurants.
`
`So, we have to be Very careful where
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`we consider going.
`
`It's a very good reason to go
`
`to Orlando. We want to go to Clifton Park and
`
`these places.
`
`For us to decide to go to Louisville,
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`Kentucky wouldn't be a good idea.
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`So, it's not
`
`contiguous, but
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`I think we would do Very well in
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`those cities.
`
`Some of the challenges of New York City
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`might not be in San Francisco and Boston and very
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`high priced.
`
`Would that include Los Angeles?
`
`Maybe. Although I got
`
`to believe —— I have never
`
`done any real estate work there, but I have got to
`
`believe Los Angeles is priced such where there is
`
`suburbs that are comparative to Rochester or
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`
`
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`Albany.
`
`Would it be fair to say that very large cities are
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`cities you're not interested in entering into?
`
`No.
`
`I
`
`think I consider Orlando quite a large
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`city.
`
`Okay. But
`
`the market is different somewhat
`
`in San
`
`Francisco than New York?
`
`Very high priced.
`
`High priced. Does Las Vegas fall into that
`
`category?
`
`Of a place I wouldn't want to be?
`
`Correct.
`
`You know,
`
`I never looked at Las Vegas.
`
`I don't
`
`know. There is the Las Vegas strip or gambling,
`
`the tourist Las Vegas, and then there is the
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`suburbs of Las Vegas.
`
`I heard people say that the suburbs used to
`
`be very good.
`
`I have never been in the suburbs.
`
`I get
`
`the feeling it would be like the suburbs of
`
`Orlando or Atlanta or Dallas.
`
`The thing I don't like about Las Vegas to
`
`us is it's isolated.
`
`I'm trying to go from one
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`JOHN W. WADE
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`different. We have to make money on lots of value
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`and because other figures are in line.
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`Probably unless a casino wanted us for
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`something —— and I don't know why. We're not
`
`known for that.
`
`I don't know why they would make
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`any concession.
`
`Are you familiar with the complexities of opening
`
`restaurant in a casino?
`
`No.
`
`I'm sure they are some.
`
`I guess.there is
`
`everywhere.
`
`Is New Orleans a market you might be interested in
`
`opening in?
`
`No.
`
`If I lived down that way.
`
`I had a couple of
`
`Howard Johnsons when I was with them. That's 100
`
`years ago, but ——
`
`So, let's identify the markets that you would be
`
`interested in. You have identified upstate New
`
`York; correct, which would be north —— I'll let
`
`you testify.
`
`MR. PURCELL: Object to the question as to
`
`form.
`
`The time frame is his current interest
`
`versus would he ever be interested in?
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`Stephen N. Fiato, C.S.R.
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`(518) 478—722O
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`JOHN W. WADE
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`MS. SQUIERS: Current interest.
`
`MR. PURCELL: Okay.
`
`BY MS.
`
`SQUIERS:
`
`(Continued.)
`
`Your current interest.
`
`You have identified;
`
`am I
`
`Correct,
`
`the upstate New York region?
`
`And Orlando.
`
`And Orlando. Any other regions that you would
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`currently be interested in?
`
`Sure. But
`
`I haven't looked.
`
`So --
`
`Those regions would be where based upon your prior
`
`testimony?
`
`Other than the two we just mentioned?
`
`Correct.
`
`It certainly would be farther out, but
`
`I would --
`
`I have always been interested in Washington DC,
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`Virginia, Maryland,
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`that area.
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`It's the same
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`distance as Boston, but you got warmer weather,
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`and it's a big market where you can have a lot of
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`stores.
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`That would be in the city proper of Washington
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`DC --
`
`Probably not.
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`yes.
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`Can you tell us what happened.
`
`This magazine does this every year.
`
`It just
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`slipped my mind.
`
`I have to think. We got a
`
`plague.
`
`I may have covered that in that
`
`conversation. This is —— we are quite proud of
`
`this. We got it like three years in a row.
`
`And I direct your attention to Emeril’s Exhibit
`
`No. 5.
`
`MR. PURCELL: May I have the original,
`
`please, Debbie?
`
`MS. SQUIERS: Oh,
`
`I'm sorry.
`
`I'm sorry.
`
`You previously testified that this is a photocopy
`
`of the menu used at the Delmonico’s restaurant;
`
`is
`
`that correct?
`
`Yes.
`
`All right.
`
`Now, Miss Smith asked you some
`
`questions about whether the term Delmonico's was
`
`always used in connection with the word Italian
`
`and steakhouse, all three words together, and I
`
`direct your attention to the top portion of this
`
`menu on the first page. You see that exhibit?
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`JOHN W. WADE
`
`I see it.
`
`Do you see the words Italian or steakhouse in the
`
`top part of that menu?
`
`Yes. Delmonico is used alone.
`
`I direct your attention to Emeril’s Exhibit No.
`
`15, specifically to the words in the lower
`
`right—hand portion of the photograph on the first
`
`page of that exhibit.
`
`Yes.
`
`Did you see the words Italian steakhouse there?
`
`No. Delmonico's alone again.
`
`Do those exhibits refresh you recollection as to
`
`whether —~
`
`Yes.
`
`—— Delmonico’s uses the term Delmonico’s always
`
`with the other words Italian steakhouse?
`
`No. We do use it without.
`
`Also Miss Smith asked you questions whether
`
`Southwestern plans today to franchise or license
`
`De1monico’s trademark. What was your
`
`understanding of that question with regard to the
`
`term Southwestern?
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
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`JOHN W. WADE
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`Yes.
`
`So,
`
`this is distributed in Albany?
`
`Yes.
`
`MS. SQUIERS: Okay no further question.
`
`EXAMINATION BY MS. SMITH:
`
`Q.
`
`Other than the examples that you just discussed
`
`with using Delmonico’s Italian Steakhouse and
`
`Delmonico’s alone, at the photocopy of the menu,
`
`Emeril’s Exhibit 15, and the sign outside of the
`
`Syracuse restaurant, can you think of any other
`
`examples where you don't use the full terms
`
`Delmonico Italian Steakhouse?
`
`I think we looked at the menu. We might see just
`
`it called Delmonico’s.
`
`And besides the menus?
`
`Oh,
`
`things —~
`
`they are probably others now.
`
`didn't realize until you pointed it out to me.
`
`I'm sure we use it without Italian steakhouse.
`
`Would you say that you normally use the term
`
`Delmonico’s Italian Steakhouse together, if
`
`possible?
`
`Yes, yes.
`
`If it's a sign,
`
`if it's something where
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`Stephen N. Fiato, C.S.R.
`
`(518) 478-7220
`
`
`
`
`JOHN W. WADE
`
`we put an add in the paper, something like that,
`
`but
`
`in this we didn't put
`
`the whole thing on that.
`
`MS. SMITH: Okay.
`
`Thank you.
`
`(The examination of JOHN W. WADE in the
`
`above—entit1ed matter was concluded at
`
`5:15 P. M.)
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`Stephen N. Fiato, C. S. R.
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`(518) 478—722O
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`
`
`Attorney Ref. No. 23224000
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`____________________________________________________________ __x
`
`SOUTIAIWESTERN MANA(3lZl\/IENT, INC.
`
`Concurrent Use No. 94/002242
`
`V.
`
`OCINOMLED, LTD,
`
`Applicant,
`
`Concurrent User,
`
`EMERIIXS FOOD 0}’ LOVE PRODUCTIONS,
`LLC.
`
`Concurrent User.
`
`i
`
`:
`
`____________________________________________________________"X:
`
`NOTICE OF DEPOSITION
`
`PI,EASIi TAKE NOTICE that, pursuant to the TBIVIP Rule 404.05, Rule 2.120 ofthe
`
`Trademark Rules ofl’racticc and Rule 30(b)(6) of the Federal Rules of Civil Procedure,
`
`Concurrent User, l3meril’s Food of Love Productions, Ll.C (“Emcri1’s”) will take the deposition
`
`upon oral examination ol'Applicant Southwestern Management, Inc. (“Applicant”) on January 8 3
`
`2009 commencing at 10:00 am. at the law offices ofDcily, Mooney & (ilastetter, LLP, 8
`
`Thurlow Terrace, Albany, New York 12203, before a notary public or some other person duly
`
`authorized by law to administer oaths, and continuing from day to day until completed.
`
`23224/000/1074737. I
`
`
`
`
`
`Applicant shall designate one or more officers, agents or other persons who can testify on its
`
`behalf with respect to the following matters:
`
`a) All federal or state trademark applications or registrations concerning any mark
`
`containing or comprising the word “DELMONICO” or “DELMONICO’S” (“DELMONICO’S
`
`Marks”) filed by Applicant, and its officers, directors, employees, attorneys, partners,
`
`subsidiaries, predecessors, assigns, licensees, and affiliates and any employees, agents and other
`
`persons under its control or direction (“Applicant Entities”).
`
`b) The nature of any goods or services in connection with which the DELMONICO’S
`
`Marks have been used or are intended to be used by the Applicant Entities in the United States,
`
`including, but not limited to restaurant services and food items.
`
`c) Any variations in style or design of the DELMONICO’S Marks by the Applicant
`
`Entities in connection with any goods or services.
`
`d) The time period of use, including the dates of first use, of the DELMONICO’S Marks
`
`by Applicant Entities in connection with each good and/or service.
`
`e) The geographic area(s) in which use of the DELMONICO’S Marks has been made by
`
`Applicant Entities in connection with each good and/or service.
`
`f) The creation, selection and/or adoption for use of the DELMONICO’S Marks by
`
`Applicant Entities.
`
`g) Searches, opinions, investigations, surveys, or studies related to the DELMONICO’S
`
`Marks.
`
`23224/000/l074737.l
`
`
`
`h) Revenues on a yearly basis for each good and/or service in connection with which the
`
`DELMONlCO’S Marks have been used by Applicant Entities in the United States.
`
`i) Applicant Entities’ channels of distribution for all goods and services under the
`
`DELMONICO’ S Marks.
`
`j) Future or past plans or consideration for expansion of use of DELMONICO’S Marks
`
`by Applicant Entities, including, but not limited to any business plans, franchise plans, marketing
`
`plans or other documents relating to any new products or services to be offered, including, but
`
`not limited to any new restaurants.
`
`k) Any actual or potential geographic expansion ofthe use by Applicant Entities of any
`
`DELMONICO’ S Marks.
`
`1) Any advertisements, promotions, publicity and media coverage concerning the
`
`DELMONICO’S Marks by Applicant Entities, including but not limited to, how, where and
`
`when each such piece was published, broadcast, distributed or displayed.
`
`in) Any actual confusion between Applicant and its goods and services, on the one hand,
`
`and on the other hand, (1) Emeril’s, Emeril, LLC, DELMONICO restaurants in New Orleans
`
`and/or Las Vegas, and/or Emeril Lagasse and their goods and services; (2) Ocinomled, Ltd.,
`
`DELMONICO’S restaurant in New York city, and their goods and services; or (3) any other third
`
`party.
`
`n) Applicant Entities’ first knowledge of DF.l.MONl(‘.0 restaurants in New Orleans and
`
`Las Vegas or DELMONICO’S restaurant in New York city.
`
`23224/000/l074737.l
`
`
`
`0) Any claims, conflicts, objections, cease and desist demands, oppositions or
`
`cancellation proceedings, litigations or other proceedings relating to the DELMONICO’S Marks.
`
`p) All responses and documents which have been or will be produced by Applicant
`
`Entities in response to requests by Emeril’s or Ocinomled, Ltd. in this proceeding or the prior
`
`opposition proceeding by Emeril’s against Applicant.
`
`q) The principals of, organization of, predecessors of and business of Applicant.
`
`r) The formation of Applicant.
`
`s) Use of any marks containing or comprising the term BAM on or in connection with any
`
`goods or services.
`
`Dated: New York, New York
`
`COWAN, LIEBOWITZ & LATMAN, P.C.
`
`December 2, 2008
`
`Attorneys for Excepted User
`Emeril’s Food of Love Productions, LLC
`
`K
`
`By:
`
`/Qébfi/(Jo /<. /§’1>(2</4/%J
`
`Lynn S. Fruchter, Es .
`Deborah K. Squiers, Esq.
`
`Elise C. Kasell, Esq.
`1 133 Avenue of the Americas
`
`New York, New York 10036-6799
`
`(212) 790-9200
`
`23224/000/1074737.]
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing was served on all parties by
`
`mailing a copy by First Class Mail, postage paid, on December 2, 2008 addressed as follows:
`
`To Applicant Southwestern Management, Inc.:
`
`Robert E. Purcell, Esq.
`Hiscock & Barclay, LLP
`One Park Place
`
`300 South State Street
`
`Syracuse, NY 13202
`
`To Excepted User Ocinomled, Ltd.:
`
`Dickerson M. Downing, Esq.
`Crowell & Moring LLP
`153 East 53” Street, 31“ Floor
`New York, New York 10022
`
`/(2%/ULL/(_
`
`Deborah K. Squiers
`
`23224/O00/1074737. I
`
`
`
`
`
` -;_._.;_
`
`John W. Wade
`
`Albany ° Utica ° Syracuse ° Rochester
`Email:
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`G2...£3.35»ASE92....dS3.2$~-n8o“Sm.fiiamo
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