Attorney Docket No.: 231349US33
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`) )
`
`) )
`
`C No. 91fi53,578
`) Appln. Serial Nos.: 76/074,595 and 76/075,729
`)
`
`) )
`
`) )
`
`UGO NETWORKS, INC.,
`
`Opposer,
`
`V.
`
`KONAMI CORPORATION,
`
`Applicant.
`
`APPLICANT’S MOTIONS TO COMPEL DISCOVERY &
`
`PRODUCTION OF WITNESSES, TO DETERMINE THE
`SUFFICIENCY OF ADMISSIONS & TO SUSPEND PROCEEDINGS
`AND APPLICANT’S SUPPORTING MEMORANDUM OF LAW
`
`Jeffrey H. Kaufman
`Brian B. Darville
`
`Jason A. Cody
`OBLON, SPIVAK, MCCLELLAND
`MAIER & NEUSTADT, P.C.
`1940 Duke Street
`
`Alexandria, Virginia 22314
`Phone: (703) 413-3000
`Fax:
`(703) 413-2220
`
`Counsel for Applicant
`Konami Corporation
`
`

`
`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................................................... ..
`
`iii
`
`PRELIMINARY STATEMENT ................................................................................................................. ..1
`
`FACTUAL BACKGROUND ..................................................................................................................... ..2
`
`1. Application for Registration and Opposition ........................................................................... ..2
`
`2. Applicant’s Discovery Requests .............................................................................................. ..2
`
`3. Discovery Disputes & Applicant’s Good Faith Efforts to Resolve Them ............................... ..2
`
`ARGUMENT .............................................................................................................................................. ..4
`
`I. OPPOSER MUST ADEQUATELY PROVIDE ADMINISTRATIVE INFORMATION,
`SUPPLEMENT DISCOVERY RESPONSES TO ENSURE THEIR RELIABILITY &
`PRODUCE WITNESSES ........................................................................................................... ..4
`
`A. Opposer Has Omitted Essential Contact Information of Potential Deponents .................. .. 5
`
`B. Opposer Obfuscates the Extent of Distribution of Services Under Its Marks ................... ..6
`
`C. Opposer Withholds Documents Relied Upon In Forming Responses .............................. ..7
`
`D. Opposer Has Failed to Admit or Deny Each Request for Admission ............................... .. 7
`
`E. Opposer Refuses to Produce Witnesses, Even After Receiving Timely Notice ............... .. 9
`
`II.
`
`OPPOSER CANNOT WITHHOLD INFORMATION RELATING TO AWARENESS
`
`OF APPLICANT’S MARK, CONSIDERATION OF LIKELHIOOD OF CONFUSION &
`INSTANCES OF ACTUAL CONFUSION .......................................................................... .. 10
`
`A. Opposer Obscures Its Knowledge of App1icant’s Mark and Its Consideration of
`Likelihood of Confusion ................................................................................................. .. 10
`
`B. Opposer Has Failed To Identify Any Claimed Instances of Actual Confusion .............. .. 12
`
`III.
`
`OPPOSER MUST IDENTIFY PERSONS RESPONSIBLE FOR ADOPTING & USING ITS
`
`MARKS, DESCRIBE ITS MARKS & PRODUCE DOCUMENTS THAT BEAR ON
`MARK SIIVIILARITY & LH(ELHIOOD OF CONFUSION ................................................ ..13
`
`A. Opposer Failed to Identify Any Person Involved With Initial Conception of Its Marks .. 13
`
`B. Opposer Has Failed To Produce Relevant Evidence Concerning Its Marks. .................. .. 14
`
`IV.
`
`THE BOARD SHOULD ORDER OPPOSER TO SUPPLEMENT ITS DEFICIENT
`DISCOVERY RESPONSES AND PRODUCE WITNESSES FOR DEPOSITION ............ .. 15
`
`V.
`
`THE BOARD SHOULD SUSPEND PROCEEDINGS ........................................................ .. 16
`
`CONCLUSION ......................................................................................................................................... ..16
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`A&H Sportswear, Inc. V. Victoria’s Secret Stores, Inc., 237 F.3d 198 (3d Cir. 2000) ............................. .. 14
`
`Am. Optical Corp. V. Exomet, Inc., 181 U.S.P.Q. 120 (T.T.A.B. 1974) ................................................... .. 10
`
` , 954 F.3d 713 (2d Cir. 1992) ................................... .. 13
`
`Era Cogp. V. Elec. Realm Assocs., Inc., 211 U.S.P.Q. 734 (T.T.A.B. 1981) ...................................... .. 14, 15
`
`Goodyear Tire & Rubber Co. V. Tygco Indus., 186 U.S.P.Q. 207 (T.T.A.B. 1975) ................................. .. ll
`
`Georgia-Pacific Corp. V. Great Plains Bag Co., 190 U.S.P.Q. 193 (T.T.A.B. 1976) ................................ .. 12
`
`Jain V. Ramparts, Inc., 49 USPQ2d 1429 (TTAB 1998) ........................................................................... .. 10
`
`J. B. Williams Co. V. Pepsodent G.m.b.H., 188 U.S.P.Q. 577 (T.T.A.B. 1975) ......................................... ..6
`
`Johnston Pump/Gen’l Valve Inc. V. Chromalloy Am. Co;p.,
`10 U.S.P.Q.2d 1671 (T.T.A.B. 1988 .................................................................................................. ...ll, 14
`
`Kegan V. Lane, 1998 T.T.A.B. LEXIS 276 (T.T.A.B. Apr. 15, 1998) ........................................................ ..7
`
`M-5 Steel Mfg., Inc. V. O’Hagin’s, Inc., 2000 TTAB LEXIS 294 (T.T.A.B. Apr. 28, 2000) .................... ..8
`
`Miss America Pagent V. Petite Productions, Inc., 17 USPQ2d 1067 (TTAB 1990) ................................. .. 10
`
`Neville Chem. Co. V. Lubrizol Corp, 183 U.S.P.Q. 184 (T.T.A.B. 1974) ............................................... .. 12
`
`Spice Island, Inc. V. Frank Tea & Spice Co., 505 F.2d 1293 (C.C.P.A. 1974) ......................................... .. 15
`
`Varian Assoc. V. Fairfield-Noble Corp, 188 U.S.P.Q. 581 (T.T.A.B. 1975) ........................................... .. l4
`
`Volkswagenwerk Aktiengesellschaft v. MTD Prods. Inc., 181 U.S.P.Q. 471 (T.T.A.B. 1974) ........... ..5, 14
`
`RULES, PROCEDURES & OTHER AUTHORITY
`
`Fed. R. Civ. P. 26 ........................................................................................................................................ ..5
`
`Fed. R. Civ. P. 30 ................................................................
`
`...................................................................... ..9
`
`Fed. R. Civ. P. 36 ........................................................................................................................................ ..1
`
`Fed. R. Civ. P. 37 ........................................................................................................................................ ..1
`
`37 C.F.R. § 2.120 ........................................................................................................................................ ..1
`
`TBMP § 404 .......................................................................................................................................... ..9, l0
`
`TBMP § 407 ................................................................................................................................................ ..8
`
`TBMP § 414 .......................................................................................................................................... ..6,13
`
`iii
`
`
`
`

`
`APPLICANT’S MOTIONS TO COMPEL DISCOVERY &
`
`PRODUCTION OF WITNESSES, TO DETERMINE THE
`SUFFICIENCY OF ADNIISSIONS & TO SUSPEND PROCEEDINGS
`AND APPLICANT’S SUPPORTING MEMORANDUM OF LAW
`
`Pursuant to Rules 36(a) and 37(a) of the Federal Rules of Civil Procedure and Trademark Rules
`
`2.120(d), (e), and (h), Applicant, Konami Corporation (“Konami” or “Applicant”), moves the Board for
`
`an Order:
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
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`6.
`
`7.
`
`8.
`
`Directing Opposer to supplement its answers to Applicant’s Interrogatories Nos. 2, 4, 12,
`l3,17,18, 20, 23 and 24;
`
`Directing Opposer to supplement its responses to Applicant’s Requests for
`Production of Documents and Things Nos. 13, 14, 17, 18, 20 and 21;
`
`Directing Opposer to produce all unprivileged documents responsive to Applicant’s
`Interrogatories and Requests for Production of Documents and Things;
`
`Directing Opposer to produce witnesses for depositions at a mutually agreeable time and
`place;
`
`Deeming Opposer’s responses to Applicant’s First Request for Admissions Nos. 4-10
`insufficient; and
`
`Directing Opposer to fully respond to Applicant’s First Requests for Admissions Nos. 4-
`10; and
`
`Directing Opposer to provide a log of all documents withheld on grounds of any privilege;
`and
`
`Suspending proceedings pending resolution of these motions.
`
`Pursuant to Trademark Rule 2.127(a), Opposer shall file a response to this motion within fifteen
`
`(15) days from the date of service of the motion unless this time is extended by the Board.
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`PRELIMINARY STATEMENT
`
`After making several good faith efforts to resolve discovery disputes over the course of several
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`months, Konami Corporation (Applicant) submits this Memorandum in support of its motions to compel
`
`UGO Networks,
`
`Inc.
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`(Opposer) to adequately respond to discovery and to produce witnesses,
`
`to
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`determine the sufficiency of Opposer’s responses to Applicant’s requests for admissions, and to preclude
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`Opposer from later offering evidence that it failed to produce during discovery. (SE Exhibits 10, 11, 12,
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`

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`
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`13, 15, 16, 17 and 22.) Applicant submits this Memorandum pursuant to Rules 36(a) and 37(a) of the
`
`Federal Rules of Civil Procedure and Trademark Rules 2.120(d), (e), and (h).
`
`FACTUAL BACKGROUND
`
`1.
`
`Application for Registration and Opposition
`
`On June 21, 2000, Applicant filed its applications for federal registration of its YU-GI-OH Marks
`
`(Applicant’s Marks), Application Serial Numbers 76/074,595 and 76/075,729. Applicant’s Marks were
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`published for opposition on October 8, 2002. One month later, on November 6, 2002, Opposer filed a
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`Notice of Opposition for each application, which resulted in two Opposition proceedings having
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`Opposition Numbers 91/153,578 and 91/154,657. On April 23, 2003, the Board granted the parties’
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`stipulated motion to consolidate the proceedings.
`
`2.
`
`Applicant’s Discovery Requests
`
`In the parent Opposition, the Board ordered discovery to open on December 15, 2002. By
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`January 7, 2003, Applicant had served Opposer its first set of discovery requests, which included: (1)
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`Applicant’s First Set of Interrogatories, (2) Applicant’s First Request for Production of Documents and
`
`Things, and (3) Applicant’s First Request for Admissions.‘ (Exhibits 1-3.)
`
`3.
`
`Discovery Disputes & Applicant’s Good Faith Efforts to Resolve Them
`
`More than two months after Applicant’s initial discovery requests, and after three extensions
`
`granted by Applicant, (Exhibits 4, 5 and 6), on March 14, 2003, Opposer submitted its responses.
`
`(Exhibits 7, 8 and 9.) Of these, the summary table below identifies Opposer’s responses that are most
`
`deficient:
`
`1 On November 20, 2003, Applicant received Opposer’s Supplemental Responses to Applicant’s First Set
`of Interrogatories and Opposer’s Supplemental Responses to Applicant’s First Document Requests.
`(Exhibits 20 and 21.) Nevertheless, only its response to Interrogatory No. 18 even attempted to address
`Applicant’s disputed discovery requests, and with respect to this response, Opposer, again, fell extremely
`short of its obligations as discussed infra II.B. Because these supplemental responses remain deficient,
`Applicant asked Opposer to supplement the responses further by Tuesday, November 25, 2003.
`(Exhibit
`22.) Opposer did not supplement its responses and indicated that it would not do so until early December,
`thereby requiring Applicant to File this Motion.
`
`

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`
`
`
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`DISCOVERY TOPIC
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`DEFICIENCIES
`
`Administrative Information & Unreliable Responses
`
`
`
`
`
`
`
`
`
`Incomplete: Opposer failed to provide contact
`necessary to serve subpoenas
`
`
`
`information
`
`
`
`
`
`Incomplete: Opposer failed to sufficiently identify whether it
`distributes services in connection with its marks solely via the
`
`Internet
`
`Interrogatory Nos. 2, 17’ 24
`
`
`
`Interrogatory No. 20
`
`
`
`Non-responsive: Opposer failed to produce documents and
`things
`fonning the basis
`for
`responding to requests
`for
`admissions and/or referred to in its responses to interrogatories
`
`
`
`
`Doc. Req. Nos. 18, 21
`
`Non-responsive: Opposer
`several requests
`
`Admissions Req.N0S. 3_10
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`failed to directly admit or deny
`
`
`
`
`
`Knowledge Regarding Applicant’s Mark, Likelihood of Confusion, and Actual Confusion
`
`
`
`failed to identify its knowledge
`Non-responsive:
`Opposer
`regarding when it became aware of Applicant’s Mark, advice as
`
`Interrogatory Nos. 12, 13, 18
`to likelihood of confusion between the marks at
`issue, and
`instances of actual confusion between the marks at issue
`
`
`
`
`Doc. Request Nos. 13, 14
`
`
`D00 Request No‘ 17
`
`failed to produce any documents
`Non-responsive: Opposer
`regarding its first knowledge of Applicant’s Mark or any action
`related thereto
`
`failed to produce evidence of actual
`Incomplete: . Opposer
`confusion within its custody or control
`
`Mark Similarity
`
`
`
`
`
`
`
`Non-responsive: Opposer failed to identify any person involved
`
`with conceiving of its marks
`Non-responsive: Opposer failed to identify the meaning and
`commercial impression of its marks
`
`Non-responsive: Opposer failed to produce documents regarding
`the
`appearance,
`pronunciation, meaning & commercial
`
`
` impression of its marks
`
`Interrogatory No. 4
`
`Inte1_mgat0I_yN0.23
`
`Doc. Req. No. 20
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`Based on these deficiencies, Applicant made at least six (6) written attempts over the past five (5)
`
`months to obtain adequate discovery responses from Opposer, as well as several other less formal
`
`attempts by telephone.
`
`(See Exhibits 10, 11, 12, 13, 15, 16, 17 and 22.) For example, June 16, 2003,
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`Applicant sent a letter to opposing counsel making specific objections to each of the twenty-three (23)
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`discovery requests identified in the summary chart above.
`
`I_c_l_.
`
`In this letter, Applicant noted that it was
`
`
`
`

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`writing “in a good faith effort to resolve these discovery disputes before bringing them before the Board
`
`for resolution.” Li. Six weeks later, Opposer proposed that the parties put the discovery issues on hold to
`
`discuss settlement. (Exhibit 11.) Opposer did not supplement its deficient responses.
`
`After settlement negotiations ended, and a Stipulated Protective Order was in place, Applicant
`
`reiterated its initial request. In a letter to opposing counsel, dated October 7, 2003, Applicant again asked
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`Opposer to supplement or change its aforementioned responses to discovery requests which were
`
`deficient. (Exhibit 12.) Four times hence, Applicant has made the same request. (Exhibits 13, 15, 16, 17
`
`and 22.) Rather than be responsive to Applicant’s requests, however, Opposer merely made sarcastic and
`
`unproductive remarks.
`
`For example, in a letter to Applicant dated October 27, 2003, Opposer declared:
`
`We do not fault your efforts to make certain you have an answer to your question of what
`UGO stands for. However, we do fault your devoting two pages of a supposed “good
`faith” letter to insisting that we again share in this mental exercise. (Exhibit 15.)
`
`After repeated requests, Opposer finally served its Supplemental Responses to Applicant’s First
`
`Set of Interrogatories and Applicant’s First Request for Production of Documents. (3 Exhibits 20 and
`
`21.) These supplemental responses, however, remain deficient. When Applicant requested that Opposer
`
`supplement these responses, Opposer again failed to do so, thereby forcing Applicant to file this Motion.
`
`(Exhibit 22.)
`
`In sum, Opposer has effectively ignored Applicant’s several good faith attempts to resolve the
`
`discovery disputes. Unavoidably, therefore, Applicant asks the Board to compel Opposer to fully respond
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`to Applicant’s discovery requests.
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`ARGUMENT
`
`I.
`
`ADMINISTRATIVE
`PROVIDE
`ADEQUATELY
`MUST
`OPPOSER
`INFORMATION, SUPPLEMENT DISCOVERY RESPONSES TO ENSURE THEIR
`RELIABILITY & PRODUCE WITNESSES
`
`As a general matter, Opposer’s disputed discovery responses are non-responsive, insufficient and
`
`unreliable. More specifically, Opposer fails to include contact information for individuals knowledgeable
`
`of Opposer’s Marks, it does not indicate all means by which it distributes its services, and it has not
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`

`
`
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`produced all documents used in fonning its bases for responding to interrogatories and document requests.
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`In addition, Opposer’s responses to requests for admissions are non-responsive and inadequate for
`
`evidentiary purposes. Moreover, Opposer unilaterally refused to produce its witnesses for properly
`
`noticed depositions. The record demonstrates that Opposer’s efforts to delay the discovery process are
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`unwarranted and require the Board to issue an order compelling discovery and production of witnesses,
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`and deeming Opposer’s responses to admissions insufficient.
`
`A.
`
`Opposer Has Omitted Essential Contact Information of Potential Deponents
`
`Opposer must provide contact information of individuals with knowledge of Opposer’s Marks
`
`because it is relevant and fully discoverable. The Federal Rules of Civil Procedure provide that “Parties
`
`may obtain discovery regarding .
`
`.
`
`. the identity and location of persons having knowledge of any
`
`discoverable matter.” Fed. R. Civ. P. 26(b)(1). Regarding interrogatories seeking contact information of
`
`individuals with knowledge about a party’s mark, the Board has made clear that “names and business
`
`addresses of .
`
`.
`
`. officers and directors .
`
`.
`
`. are proper subject matter for discovery since such information
`
`may enable opposer to depose any of these individuals in order to enable [a party] to prepare for trial.”
`
`Volkswagenwerk Aktiengesellschaft v. MTD Prods. Ir1c., 181 U.S.P.Q. 471, 473 (T.T.A.B. 1974).
`
`In this proceeding, Opposer has repeatedly failed to provide contact information for several
`
`individuals knowledgeable about Opposer’s Marks.
`
`Applicant’s interrogatories propounded and
`
`Opposer’s deficient responses follow:
`
`“Identify (by name and title) each of Opposer’s supervisory
`Interrogatory No. 2:
`employees responsible for the promotion, sale and distribution of Opposer’s Services
`promoted and/or sold in connection with Opposer’s Marks.”
`
`Response: “J. Moses, President and CEO; Michael McCracken, Chief Financial Officer
`and Executive Vice President, Corporate Development; Alexander Loucopoulos, Vice
`President, Corporate Development.”
`
`Interrogatory No. 17: “Identify those persons having the most knowledge of any market
`research (including surveys, studies, investigations and focus group inquiries) conducted
`by or on behalf of Opposer regarding any of Opposer’s Marks.”
`
`Response: “See response No. 2, supra.”
`
`

`
`Interro ato No. 24: “Identify each person who has supplied documents for information
`for, or who has participated in responding to, these interrogatories, Applicant’s First
`Request for Production of Documents and Things and Applicant’s First Requests for
`Admissions.”
`
` : “J. Moses, President and CEO; Michael McCracken, Chief Financial Officer
`and Executive Vice President, Corporate Development; Alexander Loucopoulos, Vice
`President, Corporate Development; Sabina Sudan, outside consultant; Linda Wright,
`Assistant; Jerry Lyons, former Chief Operation Officer of UGO Networks, Inc.”
`
`Applicant has an obvious and relevant interest in potentially deposing or serving a subpoena on
`
`individuals identified in its interrogatories. To satisfy its discovery obligations, Opposer must provide
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`full contact information for all such individuals.
`
`B.
`
`Opposer Obfuscates the Extent of Distribution of Services Under Its Marks
`
`Opposer must also unambiguously respond to interrogatories regarding use of its mark in certain
`
`channels of trade and geographic areas. Where an Opposer provides some, but not all, information
`
`relevant to distributing services in connection with its mark, the opposer must supplement its response to
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`completely answer the interrogatory. For one, “[i]nformation relating to the areas of distribution for a
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`party’s involved goods or services sold under its involved mark is discoverable.” TBMP § 4l4(l6).
`
`In
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`addition, the Board finds that “information with respect to geographic areas of distribution of the goods
`
`bearing the mark is generally proper, and since the answers may have a bearing on the question of
`
`likelihood of confusion as well as abandonment, opposer should answer the interrogatory.” @3_.
`
`Williams Co. v. Pepsodent G.m.b.H., 188 U.S.P.Q. 577, 580 (T.T.A.B. 1975).
`
`As demonstrated by the response below, Opposer has deliberately failed to provide fully
`
`responsive information.
`
`Interrogatory No. 20: “Identify the channels of distribution and the geographical areas of
`trade within which Opposer’s Services are or are intended to be promoted and/or sold in
`connection with Opposer’s Marks.”
`
`Response: “Ambiguity Objection. Proprietary Information Objection as to future plans.
`Relevance Objection as to use outside the United States. Without waiving these
`objections, Opposer responds that its services have been and are distributed via the
`Internet throughout the United States and the rest of the world. UGO’s network has
`reached up to over 10 million unique visitors in a single mont
`.”
`
`

`
`Opposer’s response is deficient. Opposer must clarify whether or not it distributes services in
`
`connection with its mark by means other than the Internet. Opposer must identify any other such means if
`
`they exist.
`
`C.
`
`Opposer Withholds Documents Relied Upon In Forming Responses
`
`Similar to its responses to interrogatories, Opposer falls short of its duty in responding to requests
`
`for documents and requests for admissions.
`
`In adjudicating a motion to compel, the Board specifically
`
`addressed this issue: A “[d]ocument request [] is acceptable to the extent that [it] ask[s] for documents
`
`relied on or referred to in responding to [] interrogatories and admission requests.” Kegan v. Lane, 1998
`
`T.T.A.B. LEXIS 276, at *3 (T.T.A.B. Apr. 15, 1998). The deficiencies of Opposer’s responses below are
`
`patently obvious, and even more impertinent given that Opposer has never produced any such documents:
`
`Doc. Reguest No. 18: “Produce those documents and things forming the basis for the
`denial, in whole or in part, with respect to each of Opposer’s responses to Applicant’s
`First Requests for Admissions.”
`
`Response: “Overbroad Objection. Ambiguity Objection. In addition to these objections,
`Opposer points out that it has as yet received no discovery from Applicant and anticipates
`that such discovery will provide support for some of these denials.”
`
`Doc. Reguest No. 21: “Produce those documents, not otherwise requested herein, and
`referred to by Opposer in responding to Applicant’s First Set of Interrogatories.”
`
`Response: “Overbroad Objection.”
`
`Opposer has flatly refused to produce documents responsive to Document Requests Nos. 18 and
`
`21. Even if Opposer needed Applicant’s discovery responses to determine why it made certain denials, it
`
`has possessed Applicant’s responses since April 25, 2003. Thus, Opposer has had a full seven months to
`
`produce responsive documents, but has simply refused to do so. Applicant requests that the Board
`
`compel Opposer to provide full responses.
`
`D.
`
`Opposer Has Failed to Admit or Deny Each Request For Admission and its
`Responses should be Deemed Insufficient.
`
`Several of Opposer’s responses to Applicant’s First Request for Admissions fail to expressly
`
`admit or deny the request. Unambiguously, a party proceeding before the Board “must admit the matter
`
`of which an admission is requested; deny the matter; or state in detail the reasons why the responding
`
`

`
`
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`party cannot truthfully admit or deny the matter.” TBMP § 407.03(b). A party may not evade an
`
`individual request and then mechanically submit subsequent responses to a previously stated one which is
`
`ambiguous. E, gg” M-5 Steel Mfg., Inc. v. O’Hagin’s, Inc., 2000 TTAB LEXIS 294, at *4-7 (T.T.A.B.
`
`Apr. 28, 2000) (concluding that evasive responses are insufficient).
`
`In response to requests for admissions seeking to determine the meaning of “UGO,” Opposer’s
`
`Mark, Opposer submitted the following insufficient responses:
`
`Adm. Reguest No. 3: “Admit that Opposer’s Mark, UGO, stands for ‘Underground
`On1ine.”’
`
`for
`currently stands
`that Opposer’s Mark, UGO,
`admits
`“Opposer
`Response:
`‘Underground Online’ or “UnderGround Online,” although Opposer notes that Opposer’s
`Mark has in the past also been used to stand for other words, although the UGO mark and
`its pronunciation has remained consistent.”
`
`Adm. Reguest No. 4: “Admit that Opposer’s Mark, UGO, is an initialism for
`‘Underground Online.”’
`
`Response: “See Response No. 3.”
`
`Adm. Reguest No. 5: “Admit that Opposer’s Mark, UGO, is an abbreviation for
`‘Underground On1ine.”’
`
`Response: “See Response No. 3.”
`
`Adm. Reguest No. 6: “Admit that Opposer’s Mark, UGO, is an acronym for
`‘Underground On1ine.”’
`
`Response: “See Response No. 3.”
`
`Adm. Reguest No. 7: “Admit that Opposer’s Mark, UGO, stands for
`‘ UnderGroundOnline. ’ ”
`
`Response: “See Response No. 3.”
`
`Adm. Reguest No. 8: “Admit that Opposer’s Mark, UGO, is an initialism for
`‘ UnderGroundOnline. ’ ”
`
`Response: “See Response No. 3.”
`
`Adm. Reguest No. 9: “Admit that Opposer’s Mark, UGO, is an abbreviation for
`‘ UnderGroundOnline. ’ ”
`
`Response: “See Response No. 3.”
`
`

`
`
`
`Adm. Re uest No. 10: “Admit that Opposer’s Mark, UGO, is an acronym for
`‘UnderGroundOnline. ”’
`
`Response: “See Response No. 3.”
`
`Opposer’s responses to Requests Nos. 4 through 10, referring back to the response to Request No.
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`3, are insufficient for discovery purposes. Opposer must actually admit, deny, or state in detail why it
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`cannot admit or deny each request for Admission. The Board should deem Opposer’s responses to
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`Requests for Admission Nos. 4 through 10 insufficient and should require Opposer to respond properly to
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`each of these requests.
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`E.
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`Opposer Refuses to Produce Witnesses, Even After Receiving Timely Notice
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`Opposer also has an obligation to provide witnesses upon timely notification, which it has
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`expressly rebuffed.
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`In a proceeding before the Board, discovery depositions of officers, directors, and
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`managing agents of a party may be taken on notice alone. Fed. R. Civ. P. 30(b)(6); TBMP § 404.05. The
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`general notice requirements are satisfied where a party gives reasonable notice in writing, states the time
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`and place for taking the deposition and the name and address of each person to be examined, if known.
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`TBMP § 404.05. Further, any “[o]bjections to errors and irregularities in a notice .
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`.
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`. must be promptly
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`served, in writing, on the party giving the notice; any such objections that are not promptly served are
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`waived.” §404.08(a).
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`On October 24, 2003, Applicant served Opposer with Notices of Depositions of Opposer and two
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`of its officers; each notice complied with notice requirements.
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`(Exhibits 13 and 14.)
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`In a letter dated
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`November 12, 2003, Opposer did not object to notice, but rather refused to produce such witnesses,
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`stating “[w]e will not produce the UGO witnesses named in your deposition notices until the conclusion
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`of the previously noticed Konami deposition.”
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`(Exhibit 18.) Opposer’s flat refusal to produce its
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`witnesses for deposition was not justified. Opposer claimed that its Rule 30(b)(6) Notice of Deposition
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`seeking to depose Konami Corporation — a Japanese corporation based in Japan ~ in New York city, gave
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`it priority in the sequence in which depositions would be taken. However, Opposer’s Rule 30(b)(6)
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`deposition notice of Applicant was improper because Applicant is based in Japan and is not subject to a
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`Rule 30(b)(6) deposition anywhere, much less in New York city. E Jain V. Ramparts, Inc., 49 USPQ2d
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`1429 (TTAB 1998). Indeed, the Rules provide for Opposer taking a deposition upon written questions of
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`a party based outside of the United States. E TBMP § 404.03(b). Hence, Opposer’s legally
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`unsupported Rule 30(b)(6) Notice of Deposition of Konami in New York city could not possibly justify
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`Opposer’s refusal to produce its witnesses for deposition in response to Applicant’s proper Notices of
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`Deposition. E Miss America Pagent v. Petite Productions, Inc. 17 USPQ2d 1067 (1990) (no priority of
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`discovery). Accordingly, Applicant respectfully requests that the Board compel Opposer to produce its
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`witnesses for deposition on a mutually agreeable date.
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`II.
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`OPPOSER CANNOT WITHHOLD INFORMATION RELATING TO AWARENESS
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`OF APPLICANT’S MARK, CONSIDERATION OF LIKELIHOOD OF CONFUSION &
`ANY CLAIMED INSTANCES OF ACTUAL CONFUSION
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`Opposer has failed to respond directly to discovery requests in a manner required by Board
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`practice,
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`the Trademark Rules, and the Federal Rules of Civil Procedure. First, Opposer has been
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`unwilling to indicate the facts and circumstances surrounding its knowledge of Applicant’s Mark. Second,
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`Opposer refuses to indicate whether it considered the issue of, or received an opinion regarding,
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`likelihood of confusion between marks at issue in this proceeding. Third, Opposer fails to describe or
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`produce documents relating to instances of actual confusion. Each of these topics is highly relevant to
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`likelihood of confusion analysis, and thus discoverable in Board proceedings. But because Opposer
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`repeatedly fails to produce such evidence, Applicant respectfully requests that the Board compel Opposer
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`to do so.
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`A.
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`Opposer Obscures Its Knowledge of Applicant’s Mark and Its Consideration
`of Likelihood of Confusion
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`Opposer must identify information and produce documents related to how and when it became
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`aware of Applicant’s Mark.
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`In addition, Opposer must identify and produce documents related to any
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`advice it received regarding likelihood of confusion between its marks and Applicant’s Mark. Not only is
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`a party required to determine when it acquired actual knowledge of the other party’s mark, Am. Optical
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`Corp. V. Exomet, Inc., 181 U.S.P.Q. 120, 123 (T.T.A.B. 1974), questions relating to whether an opposer
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`10
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`
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`believes marks to be confusingly similar are also relevant, Johnston Pump/Gen’l Valve Inc. v.
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`Chromalloy Am. Corp., 10 U.S.P.Q.2d 1671, 1676 (T.T.A.B. 1988), see all Goodyear Tire & Rubber Co.
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`v. T}gco Indus., 186 U.S.P.Q. 207, 208 (T.T.A.B. 1975) (holding that an opinion of mark validity or
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`possible conflicts regarding adoption and use of a mark is not privileged).
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`In contrast to these requirements, Opposer makes inappropriate objections in conjunction with
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`vague responses to Applicant’s discovery requests:
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`Interrogatogy No. 12: “State when Opposer first had knowledge of Applicant’s use or
`registration of Applicant’s Mark.”
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`Response: “Ambiguity Objection to the extent that Opposer is not presently aware of
`Applicant’s registration of Applicant’s Mark. As to Applicant’s use of Applicant’s Mark,
`Opposer became aware of such use at least as early as September 1, 2001 .”
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`Interrogatopy No. 13: “State whether Opposer considered the issue of, and/or received
`any opinions concerning, a likelihood of confusion between Applicant’s Mark and any of
`Opposer’s Marks.”
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`Response: “Privilege Objection. Without waiving this objection, Opposer’s notice of
`opposition in this proceeding states Opposer’s position regarding the likelihood of
`confusion between Applicant’s Mark and Opposer’s Marks.”
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`Doc. Reguest No. 13: “Produce those documents regarding the date and circumstances
`under which Opposer became aware of the use or registration of Applicant’s Mark.”
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`Response: “Privilege Objection. Relevance Objection.”
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`Doc. Reguest No. 14: “Produce those documents regarding any action taken by Opposer
`in response to its awareness of Applicant’s Mark.”
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`Response: “Public Source Objection. Privilege Objection. Relevance Objection, in that
`any action or inaction of Opposer in regard to Applicant’s Mark is not relevant to this
`proceeding.”
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`Each of the following topics is directly related to likelihood of confusion analysis, and thus a
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`relevant subject of discovery:
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`(1) Opposer’s knowledge relating to Applicant’s Mark;
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`(2) whether
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`Opposer considered likelihood of confusion between the marks at issue; and (3) action Opposer has taken
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`to remove any putative likelihood of confusion. Each of Opposer’s responses identified above are either
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`not fully responsive or are not responsive at all. Applicant respectfully requests that the Board compel
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`Opposer to supplement each of these responses.
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`11
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`B.
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`Opposer Has Failed To Identify any Claimed Instances of Actual Confusion
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`Opposer must identify and produce documents related to any incidents of actual confusion
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`between its marks and Applicant’s Mark. Since evidence of actual confusion “is directly relevant to the
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`issue of likelihood of confusion, [Opposer] should specify all instances of actual confusion of which it is
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`aware, and should describe the circumstances surrou