IN THE UNITED STATES "5- '5
`
`A D TRADEMARK OFFICE
`‘
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`C No. 91+153,578
`Appln. Serial Nos.: 76/074,595
`and 76/075,729
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`Opposer,
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`.
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`A 1'
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`pp icant
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`UGO NETWORKS, INC.,
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`v.
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`KONAMI CORPORATION,
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`KONAMI CORPORATION’S BRIEF IN OPPOSITION
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`TO OPPOSER’S MOTION TO COMPEL AND PRECLUDE
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`Pursuant to 37 CFR § 2.127 and Fed. R. Civ. P. 26, Applicant Konami Corporation
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`submits this brief in opposition to the Motion to Compel (“Motion”) filed by Opposer, UGO
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`
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`’s Motion should be denied b plemented its
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`document production the day Opposer filed its Motion, a fact of which Opposer was aware,
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`before filing its motion. Konami also served its supplemental discovery responses on November
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`13, 2003, the day after Opposer filed its motion.
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`Although Opposer seeks to cast Konami
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`in a bad light, Opposer agreed to delay
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`discovery issues literally for months while the parties explored a possible settlement of this
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`proceeding. Once it became clear that
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`those discussions would not bear fruit, due to an
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`extortionist proposal made by Opposer, Konami served its supplemental discovery responses on
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`November 13, 2003, a week before Opposer served its supplemental discovery responses.
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`Opposer,
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`in
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`contrast delayed responding to Konami’s
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`repeated requests
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`for
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`supplementation of its discovery responses and did not serve its supplemental discovery
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`responses until November 17, 2003.
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`It then withheld responsive documents for two additional
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`days before agreeing to produce them to Konami.
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`Indeed, to date, Opposer still has failed to
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`produce a few boxes of responsive documents, notwithstanding Konami’s request for those
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`documents and agreement to pay reproduction and courier charges in connection with their
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`production. As detailed in Konami’s separate Motion to Compel against Opposer, Opposer also
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`simply refused to produce its available witnesses for timely noticed depositions with no
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`justification whatsoever.
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`Most importantly, Konami’s supplemental discovery responses served on November 13,
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`2003 obviate Opposer’s motion and make clear that Konami has fulfilled its discovery
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`obligations. Accordingly, Opposer’s Motion to Compel should be denied.
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`1.
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`INTRODUCTION
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`In this opposition proceeding, Opposer has opposed Konami’s applications to register
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`two design marks in stylized Kanji characters, the transliteration of which in English is “YU—GI—
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`OH,” which means “King of the Game.” Opposer bases its opposition on an alleged aural
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`similarity with Opposer’s UGO mark, which means “UnderGround Online,” notwithstanding
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`that the parties’ marks differ in appearance, sound, meaning and commercial impression.
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`II.
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`STATEMENT OF FACTS
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`Opposer served its discovery requests on January 29, 2003.
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`(Exhibits 1, 2, and 3.) After
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`agreed extensions of time to respond, Applicant served its objections and responses to Opposer’s
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`First Set of Interrogatories, First Requests for Production of Documents and Things, and First
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`Requests for Admissions.
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`(Exhibits 7, 8, and 9.) Applicant previously had consented to three
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`extensions of time for Opposer to respond to Applicant’s discovery. (Exhibits 4, 5, and 6.)
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`Each party challenged the sufficiency of the other party’s discovery responses. For
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`example, Applicant made at least five (5) written attempts over the past five (5) months to obtain
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`adequate discovery responses from Opposer, as well as several other less formal attempts by
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`telephone. (E Exhibits 10, 12, 13, 17 and 18.) Opposer also challenged the sufficiency of
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`Applicant’s discovery responses.
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`Nevertheless, on July 31, 2003, six weeks afier Applicant had requested that Opposer
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`supplement its discovery responses, Opposer proposed that the parties put the discovery issues
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`on hold to discuss settlement. (Exhibit 11.)
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`After settlement negotiations ended, and a Stipulated Protective Order was in place,
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`Applicant reiterated its initial request that Opposer supplement its discovery responses.
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`In a
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`letter to opposing counsel, dated October 7, 2003, Applicant again asked Opposer to supplement
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`or change its aforementioned responses to discovery requests which were deficient. (Exhibit 12.)
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`Applicant repeated that request several times.
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`(Exhibits 13, 17, and 18.) Yet Opposer did not
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`supplement its responses until after it filed a motion to compel against Applicant.
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`(Exhibits 26
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`and 27.) Even then, Opposer’s supplemental discovery responses remained deficient.
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`(Exhibit
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`29.)
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`Although Applicant repeatedly infonned Opposer that it would be supplementing its
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`document production and its discovery responses, Opposer nevertheless filed its motion to
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`compel the same day as App1icant’s supplemental document production and the day before
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`Applicant served its supplemental discovery responses.
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`(§e_e_: Exhibits 12, 13, 21, 22, 23 and 24.)
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`This was a transparent attempt to avoid the depositions Applicant had scheduled of
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`Opposer and two of its officers for November 24 and 25, 2003.
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`(Exhibit 12, 14, 19, 20 and 25.)
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`Opposer unilaterally refused to produce these witnesses for deposition based on a claim that it
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`had priority in the sequence of depositions — a premise repeatedly rejected by the Board.
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`§_e_e
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`Miss America Pageant v. Petite Productions Inc., 17 USPQ2d 1067 (TTAB 1990) (Exhibits 19
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`and 25.) Opposer also sought to rationalize that refusal on the ground that Applicant, Konami
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`Corporation, was not going to produce a Rule 30(b)(6) deponent in New York City pursuant to a
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`notice of deposition Opposer had served. However, because Konami is a Japanese corporation
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`based in Japan, it is not subject to deposition in the United States.
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`Jain v. Ramparts, Inc., 49
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`USPQ2d 1429 (TTAB 1998). Applicant repeatedly informed Opposer of this basic principle,
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`which Opposer merely ignored. (Exhibits 13 and 20.)
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`At bottom, had Opposer been patient enough to wait an additional day, its motion to
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`compel would have been unnecessary. Of course, that would not have served Opposer’s ulterior
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`motive of seeking to justify its unjustifiable refusal to produce its own witnesses for deposition
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`in response to proper and timely notices.
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`A review of Applicant’s supplemental discovery responses makes clear that Opposer’s
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`Motion is moot and should not have been filed in the first instance.
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`III.
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`ARGUMENT
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`UGO Network’s Motion Ignores Konami’s
`A.
`Supplemental Discovery Responses
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`Although Konami had informed Opposer that
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`it would be serving its supplemental
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`responses, Opposer filed its motion to compel the same day Konami produced its supplemental
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`documents and the day before Konami served its written supplemental discovery responses.
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`(Exhibits 18, 20, 21, 22, 23 and 24.) With the benefit of Konami’s supplemental responses, it
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`becomes clear that Konami has fulfilled its discovery obligations and cured any allegedly
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`deficient responses.
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`B.
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`Konami has Disclosed Relevant Fact Witnesses
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`Opposer’s Motion ignores Applicant’s supplemental
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`interrogatory responses, which
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`identify the relevant fact witnesses sought in Opposer’s Interrogatories. With the exception of
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`Interrogatory No. 1, where Applicant properly has objected to providing information that is not
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`within Applicant’s possession, custody or control, Applicant has identified fact witnesses
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`responsive to Interrogatory Nos. 2, 3, 8 and 14.’ Specifically, Applicant has identified fact
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`1 INTERROGATORY N0.2:
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`in any fashion or capacity,
`Identify each person who participated,
`prosecuting any application to register Applicant’s Mark.
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`in preparing, filing and/or
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`SUPPLEMENTAL RESPONSE
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`Subject to the forgoing objections, Applicant states that Yukio Kobayashi, Manager of Konami
`Corporation’s Trademark Group, participated in activities relating to preparing, filing and/or prosecuting
`the application to register Applicant’s Mark.
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`INTERROGATORY NO. 3:
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`Identify each person who participated, in any fashion or capacity, in the consideration, selection
`and adoption of Applicant’s Mark and in conducting any search or investigation by or on behalf of
`Applicant concerning Applicant’s Mark including, but not limited to, any search or investigation of the
`records at the United States Patent and Trademark Office or state corporation or trademark records or
`domain name registration records.
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`SUPPLEMENTAL RESPONSE
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`Applicant objects to this interrogatory on the basis that the information sought is within the
`custody or control of third-persons over whom Applicant does not exercise control.
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`Subject to the foregoing objections, Applicant states that Yukio Kobayashi, Manager of Konami
`Corporation’s Trademark Group, participated in activities relating to the consideration, selection and
`adoption of Applicant’s Mark.
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`INTERROGATORY NO. 8:
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`In connection with each product or service identified in response to Interrogatory No. 6, identify
`all person(s) who are or have been responsible for:
`a.
`manufacture or production;
`b.
`marketing, advertising and promotion; and
`c.
`sale.
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`SUPPLEMENTAL RESPONSE
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`a.
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`b.
`.°
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`Linda Stackpoole, manufacturing; Dennis Lee and Monique Catley, production and
`packaging.
`Dennis Lee, Rich Naylor, Chris Garske, Tammy Schachter.
`Catherine Fowler, Brad Robinson, Matt Robinson, Daniel Castillo, Jean Chung.
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`witnesses involved with the registration of Applicant’s Mark (Int. 2), the selection and adoption
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`of Applicant’s Mark (Int. 3), the manufacture, production, marketing, promotion and advertising
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`of Applicant’s Mark (Int. 8) and the entities involved with the advertising and promotion of
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`products and services under Applicant’s Mark (Int. 14).
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`(Exhibit 22.) Opposer’s mere assertion
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`that Applicant has failed to identify relevant fact witnesses is simply wrong. The Board should
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`deny this aspect of Opposer’s Motion.
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`C.
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`Konami Has Provided Information Regarding
`Knowledge or Discussions of Opposer’s Mark
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`Again, without consideration of Applicant’s supplemental discovery responses, Opposer
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`wrongly claims that Konami has not disclosed its knowledge or discussions of Opposer’s Mark.
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`Opposer challenges Konami’s responses to Interrogatory No. 21 and Document Requests Nos.
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`17 and 21.2
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`INTERROGATORY NO. 14:
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`Identify each entity that has rendered services on Applicant’s behalf in connection with the
`advertising or promotion of products or services sold or offered for sale under Applicant’s Mark and, for
`each such entity, describe the nature and dates of such service.
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`SUPPLEMENTAL RESPONSE
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`Subject to the objections in its original response, the following entities have rendered services on
`Applicant’s behalf in connection with the advertising and promotion of Applicant’s products: Vendor Help
`Impact, Shounen-Jump (Viz Communication), Matel, 4 Kids Entertainment, Kids WB, Department X, and
`Freelance Designer.
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`2 INTERROGATORY NO. 21:
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`Describe the date and circumstances under which Applicant first learned of Opposer’s use of
`Opposer’s Mark and identify each document reflecting or referring or relating to such notice.
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`RESPONSE
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`Applicant objects to this interrogatory to the extent that it calls for the production of attomey-
`client communications or infomiation subject to the attorney work—product doctrine. Such information will
`not be produced.
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`In its
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`supplemental
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`interrogatory answers, Konami
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`supplemented its answer
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`to
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`Interrogatory No. 21 and provided all responsive information. (Exhibit 22.)
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`In its original document production, Konami produced non-confidential documents
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`responsive to Document Request No. 17 concerning communications regarding third party use of
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`any mark allegedly similar to Applicant’s Mark.
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`In its supplemental production, Konami
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`produced confidential documents responsive to Request 17, which had been withheld pending
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`entry of a protective order by the Board. Konami has fully responded to Document Request No.
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`17 by producing all documents responsive to this Request.
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`Applicant objects to this objection as overly broad, harassing and unduly burdensome. To the
`extent not otherwise objected to, Applicant will provide only that information which is sufficient to meet
`the needs of the Interrogatory.
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`Applicant objects to this interrogatory on the grounds that it seeks the production of trade secret or
`other confidential research, development or commercial information within the meaning of Rule 26(c)(7),
`Fed.R.Civ.P. To the extent not otherwise objected to, Applicant will produce representative, responsive,
`confidential information only after the entry of a suitable protective order by the Board.
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`Without waiving the foregoing objections, Applicant refers to its response to Request No. 4 of
`Opposer’s First Request for Admissions.
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`Investigation of this matter is ongoing. Applicant reserves the right to supplement its answer to
`this interrogatory should the investigation reveal relevant, non-privileged information.
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`SUPPLEMENTAL RESPONSE
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`Subject to the objections included in its original response above, Applicant states that Konami of
`America, Inc. first learned of Opposer’s use of Opposer’s Mark on December 26, 2002, via internal e—mail
`correspondence of the same date.
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`REQUEST NO. 17
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`All documents reflecting or referring or relating to communications between Applicant and any
`entity regarding use by a third-party of any mark allegedly identical or similar to Applicant’s Mark or the
`term “YU-GI-OH.”
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`SUPPLEMENTAL RESPONSE
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`to the foregoing objections, Applicant will produce confidential, non-privileged
`Subject
`documents responsive to this request previously withheld pending entry of a suitable Protective Order by
`the Board.
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`
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`Similarly, in its supplemental document production on November 12, 2003, Konami
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`produced over 120 pages of documents responsive to Document Request No. 21 concerning
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`documents regarding meetings “referring to Applicant’s Mark and/or Opposer’s Mark.” At this
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`point in time, Konami has produced all documents responsive to Document Request No. 21.
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`Accordingly, to the extent Opposer’s Motion concerns Konami’s obligations regarding
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`Interrogatory No. 21 "and Document Requests Nos. 17 and 21, the Motion is moot, because
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`Konami has fully responded. Konami has no additional responsive information to provide.
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`D.
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`Konami has Produced Responsive Evidence
`Concerning its Enforcement Efforts
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`On this issue, Opposer challenges Konami’s answer to Interrogatory No. 19 (not
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`Interrogatory No. 21 as incorrectly stated in Opposer’s Motion) and Document Request No. 17.3
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`3 INTERROGATORY N0. 19
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`If Applicant has ever objected to any entity's use or registration of any trade name, trademark, service mark
`or descriptive term on the basis of Applicant's Mark, summarize the substance of each such objection and
`the resolution of the objection.
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`RESPONSE
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`Applicant objects to this interrogatory to the extent that it calls for the production of attomey-
`client communications or information subject to the attorney work-product doctrine. Such information will
`not be produced.
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`Applicant objects to this interrogatory on the grounds that it seeks the production of trade secret or
`other confidential research, development or commercial information within the meaning of Rule 26(c)(7),
`Fed. R. Civ. P. To the extent not otherwise objected to, Applicant will produce representative, responsive,
`confidential information only after the entry of a suitable protective order by the Board.
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`Subject to and without waiving the foregoing objections, Applicant states that it objected to a
`number of applications for federal trademark registration filed by Syconet.com incorporating the term
`YUGI-OH.
`The Syconet.com applications that were the subject of Applicant’s objections were
`subsequently abandoned.
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`REQUEST NO. 17:
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`All documents reflecting or referring or relating to communications between Applicant and any
`entity regarding use by a third—party of any mark allegedly identical or similar to Applicant’s Mark or the
`term “YU-GI—OH.”
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`

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`
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`In its original response to Interrogatory No. 19, Konami fully responded to the Interrogatory by
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`providing the information requested.4
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`As
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`for Document Request No.
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`17, Konami has produced non-confidential and
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`confidential documents responsive to this request, including documents produced both in its
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`original document production and its supplemental document production on November 13, 2003.
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`As a result, Konami has fillly complied with its discovery obligations in producing
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`information concerning its enforcement efforts responsive to Interrogatory 19 and Document
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`Request No. 17.
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`E.
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`Konami Already Has Produced
`Representative Licenses of Applicant’s Mark
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`Regarding licenses of Konami’s Marks, Opposer has challenged Konami’s responses to
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`Interrogatories 9 and 18 and Document Requests 43 and 45. 5
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`SUPPLEMENTAL RESPONSE
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`to the foregoing objections, Applicant will produce confidential, non-privileged
`Subject
`documents responsive to this request previously withheld pending entry of a suitable Protective Order by
`the Board.
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`4 E Appendix, Exhibit 7, p. 11; n.3 supra.
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`5 INTERROGATORY N0.9:
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`If Applicant claims to have acquired the right to use or register Applicant’s Mark from any other entity,
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`identify:
`
`a.
`b.
`c.
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`each such entity;
`the date of such acquisition; and
`each and every document reflecting, referring to or relating to such acquisition.
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`SUPPLEMENTAL RESPONSE
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`to the foregoing objections, Applicant will produce relevant confidential documents
`Subject
`responsive to this interrogatory pursuant to Rule 33(d), Fed.R.Civ.P. and TBMP §407.02, in response to
`Opposer’s Request for Production No. 43.
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`
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`

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`
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`Regarding Interrogatory No. 9 and Request No. 43, Konami has been unable to identify
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`any responsive information or documents to date. Obviously, Konami cannot and has no
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`obligation to provide information that it does not have.
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`If the Board deems it appropriate,
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`Konami can supplement its answer to Interrogatory No. 9 and Request No. 43 to state that it has
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`been unable to identify any responsive information or documents to date.
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`INTERROGATORY NO. 18:
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`If Applicant has ever entered an agreement or other understanding, written or oral (including, but
`limited to,
`licenses and agency, distributorship and joint venture agreements), with any entity
`not
`concerning use of Applicant’s Mark or goods or services sold or provided thereunder:
`a.
`identify the date of the agreement or understanding;
`b.
`identify the parties to the agreement or understanding;
`c.
`identify all persons who were involved with the negotiation or approval of such
`agreement or understanding;
`detail the quality control actually exercised under the agreement or understanding and the
`person(s) responsible therefore; and
`identify each and every document reflecting, referring or relating to such agreement,
`undertaking or understanding.
`
`(1.
`
`e.
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`SUPPLEMENTAL RESPONSE
`
`to the foregoing objections, Applicant will produce relevant confidential documents
`Subject
`responsive to this interrogatory pursuant to Rule 33(d), Fed.R.Civ.P. and TBMP §407.02, in response to
`Opposer’s Request for Production No. 43.
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`REQUEST NO. 43
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`All documents reflecting, referring to or relating to Applicant’s acquisition of the right to use or
`register Applicant’s Mark from another entity.
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`SUPPLEMENTAL RESPONSE
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`to the foregoing objections, Applicant will produce confidential, non-privileged
`Subject
`documents responsive to this request previously withheld pending entry of a suitable Protective Order by
`the Board.
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`REQUEST NO. 45
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`licenses and
`All agreements or other indicia of understanding (including, but not limited to,
`agency, distributorship and joint venture agreements) with any entity concerning use of Applicant’s Mark
`or to any plans by Applicant to consider or commence licensing or other exploitation by third parties of
`Applicant’s Mark.
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`SUPPLEMENTAL RESPONSE
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`to the foregoing objections, Applicant will produce confidential, non-privileged
`Subject
`documents responsive to this request previously withheld pending entry of a suitable Protective Order by
`the Board.
`
`10
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`

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`As for Interrogatory No. 18 and Request No. 45, Konami supplemented its response to
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`this interrogatory and produced responsive documents on November 13, 2003. Konami also
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`designated documents responsive to this Interrogatory pursuant to Fed. R. Civ. P. 33(d). (E
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`Exhibit 21.) Opposer’s bombastic claim that Konami has refused to produce any responsive
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`information is simply wrong. Accordingly, this aspect of Opposer’s Motion should be denied.
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`F.
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`Konami Properly Objected to Requests Seeking
`All Evidence in Support of Konami’s Affirmative Defenses
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`Opposer challenges Konami’s objections to Opposer’s overly broad discovery seeking all
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`facts and all documents which support Konami’s second, third, sixth and seventh affirmative
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`defenses.6 Consistent with Board precedent, Konami properly objected to this overly broad and
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`unduly burdensome discovery, which fails to articulate what information is sought or what
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`documents are requested and improperly seeks to compel Konami to produce its trial evidence
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`before trial.
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`“It is settled that a party in a Board proceeding generally has no obligation to identify its
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`fact witnesses or other trial evidence prior to trial.” Time Warner Entertainment Co. v. Jones, 65
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`USPQ2d 1650 (TTAB 2002); British Seagull Ltd. v. Brunswick Corp, 28 USPQ2d 1197 (TTAB
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`1993), fig, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994); Charrette Corp. v. Bowater
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`Communication Papers Inc., 13 USPQ2d 2040 (TTAB 1989); TBMP §419(7). As was the case
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`in Time Warner, Opposer’s interrogatories and document requests purporting to require Konami
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`to “state fully and completely all facts which support” and “all documents and things which
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`support” particular affirmative defenses are “equivalent to a request for identification of fact
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`witnesses and trial evidence prior to trial, and therefore improper.” Time Warner, 65 USPQ2d at
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`1656. Because Interrogatories 29, 30, 33 and 34, and Document Requests 29, 30, 33 and 34
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`6 See Opposer’s Motion, p. 12-13, 11. 14.
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`ll
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`

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`improperly sought disclosure of Applicant’s trial evidence in advance of trial, Applicant’s
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`objections on this ground were proper. Accordingly, the Board should deny this aspect of
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`Opposer’s Motion.
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`G.
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`Preclusion of Evidence is Inappropriate
`At this Stage in the Proceedings
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`Opposer improperly seeks to preclude evidence at trial notwithstanding its deficient
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`discovery responses and its refusal to produce witnesses for deposition, which are the subject of
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`a separate motion to compel filed by Konami Corporation on November 26, 2003. Opposer has
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`been hypocritical.
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`It refused to supplement its inadequate discovery responses for five months,
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`filed a motion to compel the day Applicant provided its supplemental document production and
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`the day before Applicant supplemented its discovery responses, and only later did Applicant
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`supplement its discovery responses. Even then, those purported supplemental responses were
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`grossly inadequate. Of course, Opposer’s Motion is an attempt to justify its improper refusal to
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`produce its witnesses for deposition. (Exhibits 19 and 25.)
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`At this stage in the proceeding, where both parties only recently supplemented their
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`discovery responses and no depositions have been taken, preclusion of evidence is inappropriate.
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`Konami has fully responded to Applicant’s discovery and did so as quickly as it could once the
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`parties’ settlement discussions ended as a result of extortionist demands made by Opposer.
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`Moreover, the discovery sanctions Opposer seeks are not available under either Rule
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`2.l20(g)(1) or 2.l20(g)(2). Applicant has not violated any order of the Board relating to
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`discovery, so sanctions under Rule 2.l20(g)(1) do not apply. Mama Mia Pasta Rest. Co. V.
`
`
`Clubs of Am.
`Inc., 1999 T.T.A.B. LEXIS 69, at *8 (T.T.A.B. Feb. 22, 1999) (unpublished).
`
`Similarly, sanctions under Rule 2.l20(g)(2) are not available because Applicant has responded to
`
`Opposer’s discovery requests, has supplemented its discovery responses and has produced
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`12
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`voluminous responsive documents.
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`S_ec_ Q at 9. Sanctions under Rule 2.120(g)(2) are only
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`available where a party has failed to respond to discovery and has informed the propounding
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`party that it will not respond. 37 CFR § 2.120(g)(2); TBMP § 527.02. That simply is not the
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`case here.
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`In light of Konami’s good faith supplementation of its discovery responses and its
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`thorough document production, preclusion of evidence is not justified. Konami respectfiilly
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`requests that the Board deny this request.
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`Conclusion
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`For all of the foregoing reasons, Konami respectfully requests that Opposer’s Motion to
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`Compel should be denied.
`
`Respectfully submitted,
`
`KONAMI CORPORATION
`
`
`
` By: 4
`
`Jeffrey H. Kaufman
`Brian B. Darville
`
`Jason A. Cody
`OBLON, SPIVAK, MCCLELLAND,
`
`MAIER & NEUSTADT, P.C.
`1940 Duke Street
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`Alexandria, Virginia 22314
`(703) 413-3000
`fax (703) 413-2220
`
`Attorneys for Applicant
`Konami Corporation
`
`Dated: December 2, 2003
`
`JHK/BBD/kan {l:\atty\JHK\Konami\Filings\l394-231349US-brief5.doc}
`
`

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`CERTIFICATE OF SERVICE
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`I hereby certify that
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`I have caused a true and correct copy of KONAMI
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`CORPORATION’S BRIEF IN OPPOSITION TO OPPOSER’S MOTION TO COMPEL
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`and APPENDIX OF MATERIALS IN SUPPORT THEREOF (WITH EXHIBITS) to be
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`served on counsel for Opposer, this 2nd day of December, 2003, by sending same via First Class
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`Mail, postage prepaid, to:
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`William M. Ried, Esquire
`WILLKIE FARR & GALLAGHER
`
`787 Seventh Avenue
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`New York, New York 10019-6099
`
`Keran A. Noel
`
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`Attorney Docket No.: 231349US33
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`UGO NETWORKS, INC.,
`
`Opposer,
`
`V.
`
`KONAMI CORPORATION,
`
`Applicant.
` )
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`%\&%/\./MM;/Q/M
`
`Consolidated Opposition No. 91/153,578
`Appln. Serial Nos.: 76/074,595
`and 76/075,729
`
`APPENDIX OF MATERIALS IN SUPPORT OF
`KONAMI CORPORATION’S BRIEF IN OPPOSITION TO
`OPPOSER’S MOTION TO COMPEL AND PRECLUDE
`
`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
`
`

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`
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`TABLE OF CONTENTS
`
`Opposer’s First Set of Interrogatories (dated 1/29/2003)
`
`Opposer’s First Request for Production (dated 1/29/2003)
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`Opposer’s First Requests for Admissions (dated 1/29/2003)
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`E-mail communication from Jeffrey Kaufman to Natasha Snitkovsky (dated 2/5/2003)
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`Facsimile communication from Natasha Snitkovsky to Jeffrey Kaufman (dated 2/5/2003)
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`Facsimile communication from William Ried to Jeffrey Kaufman (dated 3/7/2003)
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`Applicant’s Objections and Answers to Opposer’s First Set of Interrogatories (dated 4/25/2003)
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`Applicant’s Objections and Responses to Opposer’s First Request
`4/25/2003)
`
`for Production (dated
`
`Applicant’s Objections and Responses to Opposer’s First Request for Admissions (dated
`4/25/2003)
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`11.
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`12.
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`Letter from Jeffrey Kaufman to William Ried and Natasha Snitkovsky (dated 6/ 16/2003)
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`Letter from William Ried and Natasha Snitkovsky to Jeffrey Kaufman (dated 7/31/2003)
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`Letter from Jeffrey Kaufman to William Ried and Natasha Snitkovsky (dated 10/7/2003)
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`Letter from Jeffrey Kaufman to William Ried and Natasha Snitkovsky (dated 10/24/2003)
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`Applicant’s Notices of Deposition of Mr. Michael McCracken, of Mr. J. Moses, and of Opposer
`UGO Networks, Inc.’s Rule 30(b)(6) Witness (including Exhibit A) (dated 10/24/2003)
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`Letter from William Ried to Jeffrey Kaufman (dated 10/27/2003)
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`E-mail communication from Brian Darville to William Ried (dated 11/7/2003)
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`E-mail communication from Jeffrey Kaufman to William Ried (dated 11/12/2003)
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`18.
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`Letter from Brian Darville to William Ried (dated 1 1/ 12/2003)
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`Facsimile communication from William Ried and Natasha Snitkovsky to Jeffrey Kaufman (dated
`1 1/12/2003)
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`Facsimile communication from Jeffrey Kaufman to William Ried and Natasha Snitkovsky (dated
`1 1/13/2003)
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`Facsimile communication from Jeffrey Kaufman to William Ried (dated 11/13/2003)
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`Applicant’s Supplemental Objections and Answers to Opposer’s First Set of Interrogatories
`(dated 11/13/2003)
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`20.
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`22.
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`

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`23.
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`24.
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`25.
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`26.
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`27.
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`28.
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`29.
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`Applicant’s Supplemental Objections and Responses to Opposer’s First Request for Production of
`Documents and Things (dated 11/13/2003)
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`Applicant’s Supplemental Responses to Opposer’s First Request
`11/13/2003)
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`for Admissions
`
`(dated
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`E-mail communication from Natasha Snitkovsky to Brian Darville (dated 11/17/2003)
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`Opposer’s Supplemental Response to Applicant’s First Set of Interrogatories (including an
`attachment) (dated 11/ 19/2003)
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`Opposer’s Supplemental Response to Applicant’s First Document Request (dated 11/19/2003)
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`E-mail communication from Brian Darville to William Ried (dated 11/21/2003)
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`Facsimile communication from Jeffrey Kaufman to William Ried (dated 11/21/2003)
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`I:\atty\JHK\Konami\Filings\13 94-23 l349US -res .mtc .toc.doc
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`

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`
`
`Attorney Docket No.: 231349US33
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`UGO NETWORKS, INC.,
`
`Opposer,
`
`V.
`
`KONAMI CORPORATION,
`
`Applicant.
`
`\/szxax/sax/x./\/\/9
`
`Consolidated Opposition No. 91/ 153,578
`Appln. Serial Nos.: 76/074,595
`and 76/075,729
`
`EXHIBIT 1
`
`APPENDIX OF MATERIALS IN SUPPORT OF
`
`KONANII CORPORATION’S BRIEF IN OPPOSITION TO
`OPPOSER’S MOTION TO COMPEL AND PRECLUDE
`
`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
`
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`
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`IN THE UNITED STATES PA TENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91/153,578
`Appln. Serial No.: 76/074,595
`
`) )
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`) )
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`)
`)
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`) )
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`)
`)
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`UGO NETWORKS, INC.,
`
`Opposer,
`
`V.
`
`KONAMI CORPORATION,
`
`Applicant.
`'
`
`OPPOSER’S FIRST SET OF INTERROGATORIES
`
`PLEASE TAKE NOTICE that, pursuant to Rules 26 and 33 of the Federal Rules
`
`of Civil Procedure and Rule 2.120 of the Trademark Rules of Practice, Opposer, UGO
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`NETWORKS, INC., requests that Applicant, KONAMI CORPORATION, answer the following
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`interrogatories under oath within thirty (30) days after service hereof upon Applicant’s counsel of
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`record in this proceeding.
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`Dated: New York, New York
`
`January 29, 2003
`
`Yours, etc.,
`
`UGO NETWORKS, INC.
`
`
`
`William M. Ried
`
`Natasha Snitkovsky
`
`Its Attorneys
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`Copv SENT TO
`Ia.’-—{';‘
`
`WILLKIE FARR & GALLAGHER
`
`787 Seventh Avenue
`
`New York, NY 10019-6099
`(212) 728-8000
`
`

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` Q
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`Q
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`DEFINITIONS AND INSTRUCTIONS
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`As used herein, “Opposer” refers to Opposer, UGO NETWORKS, INC., and all parent,
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`subsidiary, predecessor and/or successor entities, divisions, employees, agents or
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`representatives thereof.
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`As used herein, “Applicant” refers to Applicant, KONAMI CORPORATION, and all
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`parent, subsidiary, predecessor and/or successor entities, divisions, employees, agents and
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`representatives thereof.
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`As used herein, “Applicant’s Mark” refers collectively to the mark represented by
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`Application No. 76/074,595 in the United States Patent and Trademark Office and to the
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`design mark consisting of the term “Yu-Gi-Oh” in stylized Kanji characters as used by
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`Applicant in any form alone or with another word or design.
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`As used herein, “Opposer’s Mark” refers individually and collectively to the mark UGO,
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`as used by Opposer or Opposer’s predecessor in interest, in block letter or stylized form,
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`including as represented in Registration Nos.: 2,450,661; 2,519,204; and 2,562,837.
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`As used herein, “Commerce” refers to commerce regulable by Congress, as defined in 15
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`U.S.C. § 1127.
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`In the event the answer to any interrogatory is not within Applicant's knowledge or a
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`complete answer to a particular interrogatory is not possible, Applicant's answer should
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`so indicate and Applicant should answer the interrogatory to the extent possible,
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`specifying the reason for the inability to answer the remainder and stating any
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`information or knowledge in the Applicant's possession concerning the unanswered
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`portion.
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`The singular and plural forms are used herein interchangeably, as are the masculine and
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`

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`an
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`0;
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`feminine forms. Additionally, the terms "and" and "or" are meant as both conjunctive
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`and disjunctive.
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`As used herein, the terms “entity” and “person” include natural persons, governmental
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`entities, organizations, corporations, partnerships, associations, joint ventures and any
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`other individual or group of individuals that has the purpose of conducting or, in fact,
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`conducts business.
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`As used herein, "doc