-~ .
`
`*
`
`TRADEMARK OPPOSITION
`DOCKET NO. 931 1.56
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 76/212,745
`Published in the Official Gazette of January 28, 2003
`
`\lllllllllllllllllllllllllllllllllllllllllllllll
`
`Filed: February 20, 2001
`Mark: MCARD
`
`MASTERCARD INTERNATIONAL. INC.
`
`Opposer,
`
`vs.
`
`INZM CORPORATION,
`
`Applicant
`
`
`
`Opposition No. 91 155739
`
`OPPOSITION T0
`
`MASTERCARD’S MOTION
`
`TO COMPEL
`
`Applicant, In2m Corporation, submits this opposition to Opposer’s motion to compel.
`
`INTRODUCTION
`
`Applicant has fully complied with the parties’ discovery agreements and has provided
`
`full responses to Opposer’s discovery requests. Opposer misleads the TTAB by withholding
`
`material documents of Applicant responding to Opposer’s formal and informal discovery
`
`requests. Opposer’s dissatisfaction is caused not by App1icant’s responses, but by Opposer’s
`
`decision to not inspect documents and by Opposer’s overbroad and unreasonable discovery
`
`requests. Opposer’s motion to compel should be denied in its entirety.
`
`

`
`
`
`FACTS AND BACKGROUND
`
`1.
`When responding to an allegation of colorable imitation of MasterCard’s mark
`MASTERCARD, Applicant responded by presenting the context of Applicant’s use of the mark
`
`MCARD;
`
`that Applicant had used a number of marks including the letter M without any
`
`likelihood of confusion,
`
`including the marks MSYNC, MVELOPES, MPAY, MFORM,
`
`MONEY FOR LIFE and INZM. Applicant’s Answer (responses corresponding to paragraphs
`
`seven and eight of originally filed opposition). This merely laid a foundation that MasterCard
`
`has apparently acquiesced to this group of M marks without making any demands of Applicant,
`
`filings any objections, oppositions or cancellations. Similarly, other M marks are registered for
`
`related banking goods and services.
`
`2.
`
`3.
`
`Applicant made this statement in May 2003.
`
`MasterCard has a history of making unreasonable, overbroad and unduly
`
`burdensome discovery requests. On July 1, 2003, MasterCard mailed a first set of requests for
`
`admissions, document requests and interrogatories on Applicant. Applicant timely responded to
`
`all requests.
`
`4.
`
`MasterCard’s first set of interrogatories included some 90+ interrogatories,
`
`including subparts. Exhibit 1. Not a single interrogatory mentioned a family of marks, but only
`
`the MCARD mark. Applicant objected as recommended by the TTAB rules of practice.
`
`Exhibit 2.
`
`5.
`
`MasterCard served a revised first set of interrogatories. Exhibit 3. Again, not a
`
`single mention of a family of marks, only discovery of Applicant's MCARD mark. Applicant
`
`responded timely, notwithstanding the intensive care hospitalization of counsel’s infant daughter
`
`for pulmonary hemorrhage. Exhibit 4.
`
`6.
`
`MasterCard’s initial document request sought copies of Applicant’s other M
`
`marks. MasterCard declined Applicant’s invitation to inspect documents as set forth in
`Applicant’s response to document requests. The parties agreed to copying and exchange of
`
`documents. Applicant served timely Supplemental
`
`responses to document
`
`requests and
`
`

`
`
`
`voluntarily provided documents, including the prosecution files of Applicant’s other M marks as
`
`requested by MasterCard.
`
`7.
`
`Just nine business days before the close of written discovery, MasterCard filed a
`
`second set of document requests seeking to unreasonably expand the document requests from the
`
`one MCARD mark of Applicant (subject of this opposition) to seven additional M marks of
`
`Applicant (not the subject of this opposition) heretofore acquiesced to by MasterCard. Exhibit 5.
`
`8. Due to an inadvertent disposal of documents, and two lawyers responding to
`
`MasterCard during the second hospitalization of counsel’s daughter, the undersigned understood
`
`discovery had closed October 12, 2003, hence, counsel informed MasterCard of Applicant’s lack
`
`of obligation to respond. Exhibit G. Counsel forthrightly acknowledged his misunderstanding.
`
`Exhibit G.
`
`Counsel for Applicant also informed MasterCard of his absence from the office
`
`December 24, 2003 through January 1, 2004. Exhibit G. Applicant served responses within just
`
`26 days (excluding December 24 — January 1).
`
`Exhibit 6.
`
`The parties exchanged
`
`correspondence in an attempt to resolve the matter. Exhibit 7.
`
`9.
`
`Applicant fully responded to MasterCard’s February 19, 2004 letter requesting
`
`further explanation of its January 15, 2004 responses. Exhibit 8.
`
`10.
`
`ll.
`
`Applicant also fully responded to MasterCard’s March 15, 2004 letter. Exhibit 9.
`
`MasterCard also has a history on nonresponsiveness to discovery requests.
`
`Applicant sought production of documents from MasterCard via September 15, 2003 document
`
`requests. Exhibit 10. Notwithstanding Applicant’s voluntary production of copies of documents
`
`to MasterCard on September 30, 2004 (Exhibit 11) and again on November 14, 2004 (Exhibit
`
`12), and Applicant’s subsequent request on December 9, 2003 (Exhibit G), MasterCard withheld
`
`producing them until December 24, 2003, knowing counsel for Applicant would be out of the
`
`office and not receive them until January 2, 2004, nearly four (4) months after Applicanfs
`
`discovery request. Exhibit 13.
`
`12.
`
`On January 21, 2004, Applicant detailed MasterCard’s insufficient discovery
`
`responses. Exhibit 14. MasterCard’s reply was equally nonresponsive. Exhibit 15.
`
`

`
`
`
`PQINTS AND AUTHORITIES
`
`The Federal Rules of Civil Procedure, applicable to this proceeding, limit discovery to
`
`that subject matter which “is relevant to the claim or defense of any party.” FRCP 26 (b)( 1).
`
`Discovery is
`
`to be limited when “the discovery sought
`
`is unreasonably cumulative or
`
`duplicative,” “the party seeking discovery has had ample opportunity by discovery in the action
`
`to obtain the information sought,” or “the burden or expense of the proposed discovery
`
`outweighs its likely benefit, taking into account the needs of the case, the amount in controversy,
`
`the parties’ resources, the importance of the issues at stake in the litigation, and the importance
`
`of the proposed discovery in resolving the issues.” FRCP 26 (b)(2).
`
`The Amendment notes to Rule 26 explain the intent to more narrowly focus discovery:
`
`Rule 26(b)(l) has been amended to add a sentence to deal with the
`problem of over~discovery. The objective is to guard against
`redundant or disproportionate discovery by giving the court
`authority to reduce the amount of discovery that may be directed
`to matters that are otherwise proper subjects of inquiry. The new
`sentence is intended to encourage judges to be more aggressive in
`identifying and discouraging discovery overuse.
`
`1983 Amendment Note to Rule 26, subdivision (b). Changes have been made to control
`
`discovery:
`
`Textual changes are then made in new paragraph (2) to enable the
`court to keep tighter rein on the extent of discovery.
`The
`revisions in Rule 26(b)(2) are intended to provide the court with
`broader discretion to impose additional restrictions on the scope
`and extent of discovery
`(1993 Amendment Note).
`=|=
`alt
`Bk
`III
`
`The amendment [to 26(b)(l)] is designed to involve the court more
`actively in regulating the breadth of sweeping or contentious
`discovery. . .. This [last sentence] otherwise redundant cross—
`reference [of the last sentence] has been added to emphasize the
`need for active judicial use of subdivision (2) to control excessive
`discovery. (2002 Amendment Notes to subdivision (b)(1).
`
`Indeed, “Rule 26 vests the trial judge with broad discretion to tailor discovery narrowly.”
`
`Crawford-E1 v. Britton, 118 S. Ct. 1584, 1597 (1998) quoting Rule 26 (b)(2)(z'ii).
`
`

`
`
`
`In addition, “equitable principles,
`
`including laches, estoppel, and acquiescence are
`
`applicable” to trademark matters. 15 U.S.C. § 1115 (9). Excusable neglect is also recognized as
`
`a mitigating factor for failure to timely assert objections. TTAB Practice and Procedure § 3:80.
`
`A. MasterCard Seeks To Unreasonably Expand Discovery To Seven Marks Not
`Part Of This Opposition.
`
`This opposition is to trademark application serial no. 76/212,745 regarding the mark
`
`MCARD (“‘745 Application”). On the eve of the close of written discovery, MasterCard has
`
`sought to multiply discovery seven-fold to Applicant’s seven other marks incorporating the letter
`
`M. This is unreasonable.
`
`Applicant gave substantive discovery responses to all document request nos. 53 -107 as
`
`to the MCARD mark. Exhibit H. Applicant provided supplement responses to document request
`
`nos. 54, 55, 57-59, 62, 63 and 89. Exhibit L. Applicant further clarified the bases of the
`
`responses again in correspondence to MasterCard. Exhibit 7.
`
`Applicant’s reference to its other M marks does not boot-strap them into this opposition.
`
`Applicant’s reference reveals the meaning of Applicant’s use of the letter M, such as “mobile” or
`
`“money.”
`
`In the spirit of cooperation, Applicant has provided prosecution histories and
`
`confidential business development papers to permit MasterCard to examine Applicant’s
`
`registrations, applications, uses and intended use of the letter M in its various marks.
`
`Indeed,
`
`Applicant produced copies of hundreds of documents, namely documents 8-315 and 486-499.
`
`Applicant has not avoided responding, Applicant has
`
`sufficiently responded to permit
`
`MasterCard to assess Applicant’s use of the letter M in connection with various marks.
`
`MasterCard has failed to carry its burden of demonstrating to the TTAB how the hundreds of
`
`documents already produced by Applicant fail to apprise MasterCard of Applicant’s uses of the
`
`letter M in its other marks. MasterCard simply demands more. More is not needed.
`
`MasterCard’s request for excessive discovery should be reined in and denied.
`
`Nowhere in any discovery request or response has Applicant indicated an intent to use the
`
`MCARD mark for any goods or services beyond those recited in the ‘745 Application. This has
`
`been made abundantly clear in communications to MasterCard: “M” connotes mobile. Exhibit
`
`

`
`
`
`O
`
`Q; Exhibit 7 (“In2m does not assert that the. MCARD mark will be used in place of its other
`
`marks”).
`
`B. MasterCard’s Acguiescence To Applicant’s Other M Marks Estops MasterCard
`
`Applicant’s other M marks, registered and pending reveals uses, registrations and
`
`intended use going back into the late 1990s. At no time has MasterCard objected to or filed
`
`opposition or cancellations proceedings against App1icant’s other M marks. Principles of equity,
`
`be it laches, estoppel, waiver or acquiescence prevent MasterCard from attempting to now draw
`
`Applicant’s seven other M marks into this case via excessive discovery. That day is past for
`
`MasterCard. The TTAB should narrowly tailor the discovery of this opposition to the MCARD
`
`mark.
`
`C.
`
`Including Prior Conduct Of Applicant As To Its Seven Other M Marks Unfairly
`Burdens Applicant
`
`Applicant’s application for registration of the MCARD mark, and use thereof, are the
`
`subject of this opposition and focus on alleged prospective harm to MasterCard. Yet,
`
`MasterCard inequitably attempts to point to In2m’s prior or ancillary conduct as to its other M
`
`marks preceding the alleged injury in support of its opposition. This is not fair because it places
`
`an undue burden on In2m to now respond to seven times the issues. See e.g., Finch v. Hercules,
`
`Ina, 149 F.R.D. 60, 64-65 (D. De. 1993) (discovery limited not permitted on all years preceding
`
`alleged injury to due burdensome nature ofdiscovery events ofpreceding years).
`
`D. MasterCard Demand For Eguitable Relief Should Be Denied On The Basis Of It Own
`Ineguitable Conduct
`
`MasterCard cries foul
`
`that Applicant has been dilatory in responding to discovery
`
`requests. MasterCard has not practiced the kind of equitable conduct it seeks to assert. Despite
`
`the repeated, express and detailed requests of Applicant for supplemental discovery responses,
`
`MasterCard has, to date, withheld discovery responses of Applicant served in September 2003.
`
`Exhibits 14 and 15. MasterCard has simply given insufficient responses.
`
`

`
`
`
`Similarly, MasterCard demands verification of items clarified in letters, but has failed to
`
`do so itself for matters clarified in its letter responses. See Exhibit 15 (MasterCard’s January 26,
`
`2004 letter response, without accompanying verification).
`
`E.
`
`Applicant Has Already Provided A Substantive Response To Document Reguest
`Nos. 38, 54, 55, 57, 62 And Interrogatory Nos. 1.
`
`Applicant has already provided substantive responses. Exhibits 16, 11, and 12; Exhibits H
`
`and L. MasterCard’s dissatisfaction is of its own making.
`
`Early on, applicant offered
`
`MasterCard opportunities to inspect and make copies. MasterCard declined to do so and has
`
`never done so. MasterCard has forgone discovery opportunities. Therefore, its motion is either
`
`not ripe or ill-conceived.
`
`F.
`
`Under The Circumstances Of This Case, Applicant Has Provided Reasonably
`Timely Responses.
`
`In each case except one, Applicant has served timely responses. Applicant’s delayed
`
`responses from December 2003 to January 2004 were a result of a misunderstanding which
`
`counsel
`
`later acknowledged and reasonably corrected. Exhibit G. Neither party has been
`
`prejudiced thereby. Applicant has repeatedly consented to MasterCard requests to modify the
`
`scheduling order in this case. Applicant has patiently waited since October 2003 to depose
`
`MasterCard, the timing of which lies entirely in the hands of MasterCard by agreement of the
`
`parties as to the order of depositions. Any delay in asserting objections should be excused in this
`
`CBSC.
`
`

`
`
`
`CONCLUSION
`
`Applicant has fully complied with the parties’ discovery agreements and has provided
`
`full and sufficient responses to MasterCard’s discovery requests. The complete record reveals
`
`the timeliness and reasonableness of Applicant’s formal and informal responses. MasterCard’s
`
`dissatisfaction is caused not by App1icant’s responses, but by MasterCarcl’s decision to not
`
`inspect documents and by MasterCaId’s overbroad and unreasonable discovery requests.
`
`MasterCard’s motion to compel should be denied in its entirety.
`
`DATED this
`
`it
`
`day of April, 2004.
`
`KIRTON & MCCONKIE
`
`
`
`Michael F. Krieger
`1800 Eagle Gate Plaza
`60 East South Temple
`Salt Lake City, Utah 84111
`Phone: (801) 328-3600
`Fax: (801)321-4893
`
`Attorneys for Applicant
`IN2M CORPORATION
`
`747101
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 8% day of April, 2004., a true and correct copy of the
`
`foregoing OPPOSITION TO MASTERCARD’S MOTION TO COMPEL was served on the
`
`following counsel, by United States First Class Mail, postage prepaid, in an envelope addressed
`
`as follows:
`
`Russell H. Falconer
`
`Robert M. Wasnofski, Jr.
`
`BAKER Borrs, LLP
`30 Rockefeller Plaza
`44”‘ Floor
`
`New York, New York 10112
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF APPLICATION
`
`Mark:
`
`MCARD
`
`Applicant:
`
`INZM Corporation
`
`76/212,745
`February 20, 2001
`
`Serial No.:
`Filed:
`Published in
`the Official Gazette: January 28, 2003
`
`A
`JUL 0 7 11333
`KIRTON & MCCONKIE
`
`Opposition No. 91 155739
`
`'
`
`x
`
`.
`
`_
`
`MASTERCARD INTERNATIONAL
`
`INCORPORATED,
`
`Opposer,
`
`v.
`
`‘INZM CORPORATION,
`
`Applicant.
`
`OPPOSER’S FIRST SET OF INTERROGATORIES
`
`Pursuant to Trademark Rule 2.120 and Rule 33 of the Federal Rules of Civil
`Procedure, MasterCard International Incorporated (“Opposer”), by its attorneys, hereby requests
`that IN2M Corporation (“Applicar1t") answer the following Interrogatories in writing, separately,
`fully and under oath, within thirty (30) days fi'om service hereof by mailing or otherwise
`delivering the answers to Baker Botts L.L.P., 30 Rockefeller Plaza, 44th Floor, New York, New
`York 10112-4498.
`
`INSTRUCTIONS
`
`These Interrogatories shall be deemed to seek answers as of the date
`a.
`hereof, but shall be deemed to be continuing so that any additional information relating in any
`way to these Interrogatories which Applicant acquires or which becomes known to Applicant up
`to and including the time of trial shall be furnished to Opposer promptly after such information is
`acquired or becomes known, pursuant to Rule 26 of the Federal Rules of Civil Procedure.
`
`In each instance where an Interrogatory is answered on information and
`b.
`belief, it is requested that Applicant set forth the basis for such information and belief.
`
`,
`
`NY02:445334.l
`
`’lio‘S’[o3
`
`m-
`
`"“ .
`
`‘H-"LE
`
`

`
`
`
`Should an Interrogatory not specifically request a particular fact or facts,
`c.
`but where such fact or facts are necessary to make the response to the Interrogatory
`comprehensible or not misleading, Applicant is requested to include such fact or facts as part of
`its response.
`
`In each instance where Applicant denies knowledge or information
`d.
`sufficient to answer the Interrogatory, it is requested that Applicant set forth the name and
`address of each person, if any, known to have such knowledge or information.
`
`In each instance where the existence of a document is disclosed, Applicant
`e.
`is requested to attach a copy of such document to its answer. If such document is not in
`Applicant’s possession, custody or control, it is requested that Applicant state the name and
`address of each person known to Applicant to have such possession, custody or control, and
`identify which documents are in such person’s possession, custody or control.
`
`With respect to each document which is withheld, whether under claim of
`f.
`privilege or otherwise, please provide the following information:
`
`i.
`
`ii.
`
`iii.
`
`iv.
`
`V.
`
`the date, identity and general subject matter of each such
`document;
`
`the grounds asserted in support of the failure to produce the
`document;
`
`the “identity” of each person (other than stenographic or clerical
`assistants) participating in the preparation of the “document”;
`
`the “identity” of each person to whom the contents of the
`“document” were communicated by copy, distribution, reading or
`substantial sununarization;
`
`a description of any document or other material transmitted with or
`attached to the “document”;
`
`vi.
`
`the number of pages in the “document”;
`
`vii.
`
`whether any business or non-legal matter is contained or discussed
`in the “document”.
`
`All references to any individual, corporation, partnership or limited
`g.
`partnership shall be deemed to include not only the individual, corporation, partnership or
`limited partnership named, but also his, her, its or their employees, officers, directors, partners,
`principals, shareholders, attorneys, agents and representatives under the control of the entity or
`individual identified in the request.
`
`h.
`
`Words of gender shall be construed as including all genders, without
`
`limitations.
`
`NY02:445334.1
`
`

`
`
`
`DEFINITIONS
`
`As used herein, the following terms have the following definitions:
`
`“Person” or “persons” shall mean natural persons, firms, partnerships,
`a.
`joint ventures, government entities, social or political organizations, associations, corporations,
`divisions, or any other entity in any other department or other unit thereof, whether de facto or de
`jure, incorporated or unincorporated.
`
`“Document" is used in its customary broad sense and includes, without
`b.
`being limited thereto, the following items, whether printed, or recorded, or filmed, or reproduced
`by any other mechanical process, or written or produced by hand, and whether or not claimed to
`be privileged against discovery on any ground, and including all originals, masters and copies,
`namely: agreements, contracts and memoranda of understanding; assignments; licenses;
`correspondence and communications, including intracompany correspondence and
`communications; cablegrams, telex messages, radiograms and telegrams; reports, notes and
`memoranda; summaries, minutes and records of telephone conversations, meetings and
`conferences; including lists of persons attending meetings or conferences; summaries and
`recordings of personal conversations and interviews; books, manuals, publications and diaries;
`data sheets and notebooks; charts; plans; sketches and drawings; photographs, motion pictures;
`audio and video tapes and disks; models and mock-ups; reports andfor summaries of
`investigations; opinions and reports of experts and consultants; patents, registrations of marks,
`copyrights and applications for any of them; opinions of counsel; sales records, including
`purchase orders, order acknowledgments and invoices; books of account; statements, bills,
`checks and vouchers; reports and summaries of negotiations; brochures; pamphlets, catalogs and
`catalog sheets; sales literature and sales promotion materials; advertisements; displays, circulars;
`trade letters, notices and announcements; press, publicity, trade and product releases; drafts of
`originals of or preliminary notes on, and marginal comments appearing on, any document; other
`reports and records; and any other information containing paper, writing or physical thing.
`
`c.
`
`"Identify", or to give "identity" of, shall mean:
`
`In the case of a person, to state: (1) full name; (2) present residence
`i.
`address and telephone number; (3) present business address and telephone number; (4) present
`position, business affiliation, and job description; (5) if any of the information set forth in (a)-(d)
`is unknown, so state and set forth the corresponding last known such information;
`
`In the case of a corporation, to state: (1) full name; (2) place and
`ii.
`date of incorporation or foundation; (3) address and principal place of business; (4) identity of
`officers or other persons having knowledge of the matters with respect to which such corporation
`is named;
`
`In the case of any person other than a natural person or
`iii.
`corporation, to state: (1) full name; (2) address and principal place of business; (3) identity of
`officers or other persons having knowledge of the matter with respect to which such person is
`named;
`
`NY02:445334.I
`
`

`
`
`
`In the case of a document, to state: (1) the identity of the person(s)
`iv.
`_
`originating and preparing it, and the sender; (2) its general type (e. g. letter, memo, report,
`invoice, etc.), title, identifying number and the general nature of its subject matter; (3) the
`identity of the addressees and distributees, if any; (4) its date of preparation; (5) its dates and
`manner of transmission, distribution, and publication, if any; (6) the location of each copy
`(including title, index number, and location of the file in which it is kept or fiom which it was
`removed) and the identity of the present custodian or person responsible for its filing or other
`disposition; (7) the identity of persons who can authenticate or identify it;
`
`In the case of an event or occurrence, state: (1) the date(s) and
`v.
`geographic locations(s); (2) describe the transactions and events; and (3) identify the person(s),
`corporation(s) or other entities involved in accordance with the instructions "set forth in this
`paragraph.
`
`66
`93
`As used herein, “Applicant , you” and “your” means not only the named
`d.
`Applicant, but also its agents, officers, employees, representatives, and attorneys, and any
`predecessors, subsidiaries, controlled and affiliated companies, and their agents, officers,
`employees, representatives and attorneys, to the fullest extent the context permits.
`
`“Produce” means to provide a copy or make available for inspection and
`e.
`copying at the time and place specified above.
`
`“Alleged Mark” and “Mark”, unless otherwise explained, shall mean the
`f.
`mark identified in U.S. Trademark Application Serial No. 76/212,745, and any variants thereof.
`
`The singular form of a word (e.g., “document" or “person”) shall also
`g.
`refer to the plural, and words used in the masculine, feminine, or neuter gender refer to and
`include all genders.
`
`“And” and “or” shall be construed conjunctively or disjunctively as
`h.
`necessary to bring within the Interrogatory all information which might otherwise be construed
`as outside its scope.
`
`“Date” shall mean and refer to the exact day, month and year of the event
`i.
`or events described in the Interrogatory, if ascertainable, or if not, the best approximation of the
`date of that event or events, and the basis for that approximation, including, but not limited to,
`the relationship of the event or events in question to other occurrences.
`
`j.
`
`“Concerning” means relating to, referring to, describing, evidencing or
`
`constituting.
`
`LNTERROGATORY NO. 1:
`
`INTERROGATORIES
`
`State the facts and circumstances surrounding Applicant’s decision to adopt the
`
`Alleged Mark including the reasoning and rationale behind the decision.
`
`NY02:445334.l
`
`

`
`
`
`[ETERROGATORY NO. 2:
`
`a.
`
`Identify all products and services provided or intended to be provided by
`
`Applicant under the Alleged Mark and provide a brief description thereof.
`
`b.
`
`For every product and service identified in response to Paragraph a.
`
`hereof, state the date it was first offered for sale or, if not yet offered for sale, the date on which
`
`Applicant intends to offer it for sale.
`
`c.
`
`For each product and service identified in response to Paragraph a. hereof,
`
`state the volume of sales in dollars since date of first use.
`
`cl.
`
`For each product and service identified in response to Paragraph a. hereof
`
`on which the Alleged Mark is not currently used, state:
`
`i.
`
`ii.
`
`the date on which the use of the Alleged Mark was discontinued.
`
`the reaso_n(s) for the discontinuance of the Alleged Mark.
`
`iii.
`
`whether Applicant intends to resume use of the Alleged Mark.
`
`INTERROGATORY NO. 3:
`
`State the names, addresses, titles or positions of each person responsible for,
`
`participating in or having knowledge of the selection, adoption and use of the Alleged Mark by
`
`Applicant, including the identity of the person or persons who originally suggested its use and
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`adoption.
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`I LNTERROGATORY No. 4;
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`Identify all of Applicant’s agents, employees, associates, predecessors and
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`successors and entities affiliated or related with Applicant which were or are responsible for or
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`involved in the offering and/or sale of the products and services identified in response to
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`paragraph a. of Interrogatory No. 2, and with respect to each such individual or entity identify:
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`iii.
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`iv.
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`their full name;
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`the location of all offices and places of business and telephone
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`numbers thereof;
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`the nature of each such business;
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`the products and services offered and/or sold by each such
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`individual or entity;
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`the nature and scope of their responsibility and/or involvement
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`with the Alleged Mark, including the periods of such responsibility
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`and/or involvement; and
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`vi.
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`the officers, directors or agents thereof.
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`lNTER.ROGATORY NO. 5:
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`For each product and service identified in response to paragraph a. of
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`lnterrogatory No. 2, identify all marketing forecasts and other business plans referring or relating
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`to the offering or intended offering of the productand service.
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`LNTERROGATORY NO. 6:
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`Describe in detail all test marketing conducted for each product and service
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`offered by Applicant under its Alleged Mark, including dates and locations.
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`I_NTBRROGATORY NO. 7:
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`For each product and service identified in response to paragraph a. of
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`Interrogatory No. 2 identify:
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`i.
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`the class of purchasers (by economic class or type) (1) intended as the
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`ultimate consumers and (2) which have been or will be offered an
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`opportunity to purchase Applicant’s product and service;
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`the type of entities and/or outlets at which it has been, is or is intended to
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`be provided or offered to the ultimate purchaser, identifying ten (10)
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`typical outlets for such product and service;
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`the geographical areas of the United States (by city, county or state) in
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`which such product and service has been or is intended to be offered since
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`first use in interstate commerce;
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`the date on which or the inclusive dates during which said product and
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`service was or is to be offered and the manner in which it was or is to be
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`iii.
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`iv.
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`offered; and
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`the means by which customers (wholesale and/or retail) are provided or
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`are intended to be provided with information concerning the product and
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`service offered under the Alleged Mark, including, but not limited to,
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`product and service description, price, and method of provision.
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`JCNTERROGATORY NO. 8:
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`Identify the persons/entities who are principally responsible for the advertising,
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`promotion, marketing and sale of each product and service identified in answer to paragraph a. of
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`lnterrogatory No. 2.
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`lNTERROGATORY NO. 9:
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`For each product and service identified in answer to paragraph a. of lnterrogatory
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`No. 2, state the total dollar amount Applicant has spent in advertising and promoting same for
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`each year through 2002 and the amount Applicant intends to spend during 2003, and identify
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`each advertisement which has been, or is intended to be, published, broadcast or displayed, and
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`for each such advertisement identify:
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`i.
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`the form of promotion or advertisement (g:_,gL., print ad, t.v. ad, pamphlet,
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`etc.);
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`ii.
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`iii.
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`iv.
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`the inclusive dates and geographic areas of promotion or advertisement;
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`the total amount of money spent or budgeted for such advertisement; and
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`the advertising agency(ies) used by Applicant.
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`If a print media advertisement, identify the publication in which such advertisement appeared or
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`will appear by name, date and page number. If a broadcast advertisement, identify the radio or
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`television station or network over which such advertisement was or will be broadcast and state
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`the length of the commercial and the date and time of broadcast.
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`INTERROGATORY NO. 10:
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`For each product and service identified in answer to paragraph a. of Interrogatory
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`No. 2, state whether Applicant has promoted or exhibited any product and service offered under
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`or in association with the Alleged Mark at any conventions, trade shows or exhibitions, or has
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`any plans to do so, and if so, state the title, dates and location of each such convention, trade
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`show or exhibition and the product and service exhibited or expected to be exhibited.
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`LNTERROGATORY NO.
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`1 1:
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`For each product and service identified in answer to paragraph a. of Interrogatory
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`No. 2, identify all administrative or judicial proceedings in which Applicant is or has been
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`involved relating to the Alleged Mark other than the instant action, then state the title, docket
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`number, and tribunal of the proceeding and describe its final outcome or current status.
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`I_NTERROGATORY NO. 12:
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`Identify any and all grants, licenses, authorizations or assignments (hereinafter
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`“Assignments”) regarding the Alleged Mark, all documents referring or relating to such
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`Assignments (including each amendment or modification thereof) and each person responsible
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`for, participating in or having knowledge of such Assignments. For each and every third-party
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`who is now authorized or ever was authorized to use the Alleged Mark, fully described the scope
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`of such authorization including:
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`i.
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`ii.
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`iii.
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`iv.
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`the identity of the third-party;
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`the product(s) and service(s) for which use is or was authorized;
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`the date of authorization; and
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`the method by which Applicant controls the nature and quality of the
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`product(s) and service(s) for which use of the Mark is or was authorized.
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`[NTERROGATORY NO. 13:
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`Identify any and all third-party marks or names of which Applicant is aware
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`consisting of orincorporating a mark similar to the Alleged Mark or similar to Opposer’s mark
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`MAS TERCARD.
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`INTERROGATORY NO. 14:
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`Identify the date and describe the circumstances surrounding Applicant’s first
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`knowledge of Opposer’s use of the mark MASTERCARD.
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`INTERROGATORY NO. 15:
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`State whether Applicant, or any individual(s) or other cornpany(s) or
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`organization(s) acting on Applicant’s behalf, has conducted or authorized any other individual or
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`company to conduct a survey, investigation, study, or market test (hereinafter “Survey”) relating
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`to the Alleged Mark or the products and services offered or to be offered under or in connection
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`with the Alleged Mark including, but not limited to, surveys relating to public recognition,
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`consumer acceptance, secondary meaning or confusion and, if so, identify:
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`each individual or entity who was or is in charge of conducting each
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`Survey;
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`each report or summary of the results thereof, whether written or oral and,
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`if oral, state the contents thereof and identify the persons making and
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`receiving such report or summary and each person having knowledge
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`thereof; and
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`iii.
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`each document relating to, reflecting, supporting or generated in the
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`consideration, planning, conduct or reporting of any such Survey, or the
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`results or substance thereof.
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`. EIJERROGATORY NO. 16:
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`S