Trademark Trial and Appeal Board Electronic Filing System. ggjgg
`
`ESTTA Tracking number: ESTTA5593
`
`Filing 5131333
`
`02/12/2004
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Party
`
`Proceeding
`
`91155965
`Plaintiff
`SCHERING-PLOUGH HEALTHCARE PRODUCTS
`ii3;§{}iii$“ji.“ii£i§:ii{;§“
`Correspondence Oblon, Spivak, McC1e11and, MAIER & NEUSTADT, P.C.
`Address
`3 1940 DUKE STREET
`ALEXANDRIA, VA 22314
`
`Submission
`
`OPPOSER'S MOTION AND MEMORANDUM TO COMPEL
`DISCOVERY RESPONSES WITHOUT OBJECTION, TO DEEM
`REQUESTS FOR ADMISSIONS ADMITTED, TO SUSPEND
`§ PROCEEDINGS AND TO FURTHER EXTEND DISCOVERY
`(FOR OPPOSER ONLY) AND TRIAL DATES WITH EXHIBITS
`
`Filer's Name
`Filer's e—mail
`Signature
`Date
`
`Brian B. Darville
`tn1d0cket@0b10n.c0m
`/Brian B. Darvillel
`02/12/2004
`
`Attachments
`
`233818us-n10ti0n.PDF ( 7 pages )
`233818us - exhibit 1.PDF (9 pages)
`§ 233818us - exhibit 2.PDF ( 9 pages )
`233818us - exhibit 3.PDF ( 51 pages)
`233818us - exhibit 4.PDF (2 pages)
`
`

`
`Attorney Docket No.: 233818US-21
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 155,965
`U. S. Appln. Serial No.: 76/388,837
`Mark: BUG-SUN
`TECHNOLOGIES
`
`
`
`Schering-Plough HealthCare Products, Inc., )
`)
`
`Opposer,
`
`V.
`
`Mitchell R. Swartz,
`
`Applicant.
`
`
`) )
`
`)
`)
`)
`)
`
`) )
`
`OPPOSER’S MOTION AND MEMORANDUM TO COMPEL
`DISCOVERY RESPONSES WITHOUT OBJECTION, TO DEEM
`REQUESTS FOR ADMISSIONS ADMITTED, TO SUSPEND
`PROCEEDINGS AND TO FURTHER EXTEND DISCOVERY
`FOR OPPOSER ONL AND TRIAL DATES
`
`Pursuant to Rules 26, 33, 34, 36 and 37, Fed. R. Civ. P., and Trademark Rules 2.116,
`
`2.120(d), (e), (t) and (h), and 2.121, Opposer, Schering-Plough HealthCare Products, Inc.
`
`(hereinafter “Opposer”), herein moves the Board for an Order:
`
`(1)
`
`(2)
`
`(3)
`
`4)
`
`(5)
`
`Directing Applicant to answer fully, without objection, Opposer’s First Set
`of Interrogatories;
`
`Directing Applicant to respond fully, without objection, to Opposer’s First
`Requests for Production of Documents and Things;
`
`all documents
`to produce, without objection,
`Directing Applicant
`responsive to Opposer’s First Set of Interrogatories and First Requests for
`Production of Documents and Things;
`
`for admission contained within
`“admitted” each re uest
`Deemin
`8
`‘l
`Opposer’s First Requests for Admissions; and
`
`Suspending proceedings pending resolution of this motion; and
`
`

`
`(6)
`
`Extending the discovery period for Opposer only for not less than 120
`days alter the Board’s detennination of this motion, so that Opposer — and
`only Opposer — can take additional discovery in this proceeding.
`
`Good Faith Efforts to Resolve
`This Discovery Dispute
`
`Since the Board instituted proceedings on April 15, 2003, Applicant has demonstrated an
`
`utter disregard for the Board’s Order, the Trademark Rules of Practice, the Federal Rules of Civil
`
`Procedure, Opposer’s discovery, and the deadlines imposed by each of them. Although
`
`Applicant’s Answer to the Notice of Opposition originally was due on May 25, 2003, Applicant
`
`failed to file an answer, forcing Opposer to file a motion for notice of default. On August 28,
`
`2003, the Board entered an Order allowing Applicant 30 days to file an answer. According to
`
`the Board’s online database, Applicant did not file that answer until October 3, 2003.
`
`On October 30, 2003, Opposer served on Applicant by First Class Mail, Opposer’s First
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`Set of Interrogatories, First Requests for Production of Documents, and First Requests for
`
`Admissions. See Exhibits 1, 2 and 3, respectively (attached). Applicant’s responses to this
`
`discovery was due on December 4, 2003. Applicant failed to serve any responses to this
`
`discovery.
`
`On January 29, 2004, Opposer sent a letter to Applicant stating Applicant’s failure to
`
`respond to the discovery and asking that Applicant inform Opposer of when Applicant would
`
`respond to Opposer’s outstanding discovery. See Exhibit 4 (attached).
`
`On February 9, 2004, undersigned counsel received a telephone call from Applicant who
`
`said he would arrange for his lawyer to call Opposer’s counsel. During this telephone
`
`conversation, Applicant never stated whether Applicant would respond to Opposer’s outstanding
`
`discovery and, if so, when he might do so. To date, Applicant’s lawyer has not entered an
`
`

`
`appearance as counsel for Applicant in this proceeding, nor has he ever contacted Opposer’s
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`counsel.
`
`It has been well over three months since Opposer served its discovery.
`
`To date,
`
`Applicant has not responded, has not indicated that it plans to respond, and has not requested any
`
`extension of time to respond. Notwithstanding Opposer’s efforts to resolve this discovery
`
`dispute between the parties, Applicant’s intransigence and disregard of the applicable discovery
`
`rules has forced Opposer to file this motion to compel the discovery which should have been
`
`provided months ago.
`
`Applicant has not propounded any discovery in this proceeding since the discovery
`
`period opened nine months ago on May 5, 2003.
`
`1.
`
`Applicant Should Be Ordered to Respond Fully and
`Without Objection To Opposer’s First Set of Interrogatories
`and First Reguest for Production Of Documents and Things
`
`Applicant has failed to answer Opposer’s First Set of Interrogatories and has failed to
`
`respond to Opposer’s First Requests For Production of Documents and Things. As a result,
`
`Applicant has waived its objections to this discovery and carmot assert such objections at this
`
`time. E, gg, Pham V. Hartford Fire Ins. Co., 193 F.R.D. 659 (D. Colo. 2000) (failure to timely
`
`object and respond to interrogatories and document requests waives objections on the merits);
`
`TBMP § 407.01 (a party failing to respond to interrogatories forfeits the right to object to the
`
`interrogatories on their merits); Rule 33(b)(4), Fed. R. Civ. P. (“Any ground not stated in a
`
`timely objection is waived unless the party’s failure to object is excused .
`
`.
`
`. for good cause
`
`shown”); TBMP § 409.01 (a party failing to respond timely to document requests forfeits the
`
`right to object on the merits).
`
`

`
`In E, the Court held that the defendant waived its right to assert any objections,
`
`including the attomey-client privilege, to Plaintiff s First Set of Interrogatories and First Request
`
`for Production of Documents. The defendant failed to assert any objection to plaintiffs
`
`interrogatories or production requests within the time specified in the Federal Rules, failed to file
`
`a motion to extend the time within which to respond, first asserted objections 71 days after the
`
`discovery was served, and then only in response to a court order, and never explained or sought
`
`to articulate good cause for its delay.
`
`I_d.
`
`Accordingly, Opposer respectfully requests that the Board, as did the Court in Pham,
`
`order Applicant to respond, fiilly and without objection to Opposer’s First Set of Interrogatories
`
`and First Request for Production of Documents and Things. 1g. at 662.
`
`II.
`
`Opposer’s First Requests for Admissions
`to Applicant Should be Deemed Admitted
`
`Applicant has failed to object or respond to Opposer’s First Requests for Admissions.
`
`Exhibit 3. Under Rule 36(a), Fed. R. Civ. P., Applicant is deemed to have admitted each of the
`
`requests contained in Opposer’s First Request for Admissions. Rule 36(a) provides, in pertinent
`
`part, as follows:
`
`Each matter of which an admission is requested shall be separately set
`forth. The matter is admitted unless, within 30 days after service of the request,
`or within such shorter or longer time as the court may allow or as the parties may
`agree in writing, .
`.
`. the party to whom the request is directed serves upon the
`party requesting the admission a written answer or objection addressed to the
`matter, signed by the party or by the party’s attorney.
`
`id. Because Applicant merely has ignored the outstanding Requests for Admissions, and has
`
`failed to object or respond within 30 days (plus five days for service by mail), “the matter is
`
`admitted.” lg; Goodman v. Mead Johnson & Co., 534 F.2d 566, 573 (3rd Cir. 1976) (request for
`
`admission that was not denied was properly deemed admitted under Rule 36(a)), fit. denied,
`
`

`
`429 U.S. 1038, 975 S. Ct. 732 (1977); McNeil v. AT&T Universal Card, 192 F.R.D. 492 (E.D.
`
`Pa. 2000) (matters addressed in requests for admissions are deemed admitted where plaintiffs
`
`never responded to the requests for admissions). See all, TBMP § 411.01 (same).
`
`Accordingly, Opposer respectfully requests that the Board enter an order that each
`
`request for admission contained within Opposer’s First Requests for Admissions is deemed
`
`admitted for purposes of this Opposition.
`
`III.
`
`Proceedings Should be Suspended Pending Resolution of this Motion
`and the Discoveg Period Should be Extended for Qpposer Only
`
`Throughout
`
`the discovery period, Opposer has sought
`
`to obtain full and complete
`
`responses from Applicant to the written discovery propounded to date. Applicant has failed to
`
`answer or respond to that discovery in Q. Pursuant to Trademark Rule 2.120(e)(2), Opposer
`
`requests that the Board suspend further proceedings herein while the Board addresses this
`
`Motion.
`
`Finally, Opposer requests that, after a decision on this motion, the board re-set discovery
`
`and trial dates, and that the discovery period — for Opposer only — be reset to a date not less than
`
`120 days after the mailing date of the Board’s Order. Since the discovery period opened in this
`
`proceeding over 9 months ago, Applicant has served no discovery. Instead, Applicant ignored its
`
`obligation to Answer the Notice of Opposition, and only filed an answer months after it was
`
`originally due in response to an order from the Board. Similarly, Applicant has deliberately
`
`ignored Opposer’s discovery and has chosen not to respond to it.
`
`In these circumstances,
`
`Applicant should not be permitted to take any discovery after the Board’s ruling on this motion.
`
`

`
`E, _e_.g,, Luehrmann v. Kwik Kopy, 2 USPQ2d 1303, 1305 (TTAB 1987) (extending discovery
`
`afier motion to compel solely for purpose of completing outstanding discovery).
`
`Respectfully submitted,
`
`Schering-Plough HealthCare Products, Inc.
`
`
`
`David J. Kera
`
`
`
`
`
`Brian B. Darville
`
`Amy S. Cahill
`OBLON, SPIVAK, MCCLELLAND,
`MAIER & NEUSTADT, P.C.
`1940 Duke Street
`
`22314
`
`Alexandria, Virginia
`(703) 413-3000
`fax (703) 413-2220
`e-mail:
`tmdocket@ob1on.com
`
`Attorneys for Opposer
`
`Date: Februggd 2004
`
`DJK/BBD/kan {|:\A1'rY\DJK\1246-23381BUS-MTc.Doc}
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing OPPOSER’S MOTION AND
`
`MEMORANDUM TO COMPEL DISCOVERY RESPONSES WITHOUT OBJECTION, TO
`
`DEEM REQUESTS FOR ADMISSIONS ADMITTED, TO SUSPEND PROCEEDINGS AND
`
`TO FURTHER EXTEND DISCOVERY (FOR OPPOSER ONLY) AND TRIAL DATES with
`'0‘)
`all EXHIBITS was served on counsel for Applicant, this i day of February, 2004, by sending
`
`same Via First Class mail, postage prepaid, to:
`
`Dr. Mitchell Swartz
`
`16 Pembroke Road
`
`Weston, Massachusetts 02493-2247
`
`ntgm
`
`

`
`Attorney Docket No.: 233 818US-21
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 155,965
`U. S. Appln. Serial No.: 76/388,837
`Mark: BUG-SUN
`TECHNOLOGIES
`
`Schering-Plough HealthCare Products, Inc., )
`)
`
`g
`
`)
`)
`)
`)
`
`) )
`
`Opposer,
`
`v.
`
`Mitchell R. Swartz,
`
`Applicant.
`
`EXHIBIT 1
`
`TO OPPOSER’S MOTION AND MEMORANDUM TO COMPEL
`
`DISCOVERY RESPONSES WITHOUT OBJECTION, TO DEEM
`REQUESTS FOR ADMISSIONS ADMITTED, TO SUSPEND
`PROCEEDINGS AND TO FURTHER EXTEND DISCOVERY
`
`(FOR OPPOSER ONLY) AND TRIAL DATES
`
`David J. Kera
`Brian B. Darville
`
`Amy S. Cahill
`OBLON, SPIVAK, MCCLELLAND,
`
`MAIER & NEUSTADT, P.C.
`1940 Duke Street
`
`Alexandria, Virginia 22314
`(703) 413-3000
`fax (703) 413-2220
`e-mail:
`tmdocket@ob1on.com
`
`Attorneys for Opposer
`Schering-Plough HealthCare Products, Inc.
`
`

`
`Attorney Docket No.: 23381 8US-21
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Schering—Plough HealthCare Products, Inc., )
`)
`
`Opposition No.: 155,965
`U. S. Appln. Serial No.: 76/388,837
`Mark: BUG-SUN
`TECHNOLOGIES
`
`) )
`
`)
`)
`)
`)
`
`Opposer,
`
`v.
`
`Mitchell R. Swartz,
`
`Applicant.
`
`
`) )
`
`0PPOSER’S FIRST SET OF INTERROGATORIES
`
`Opposer, Schering-Plough HealthCare Products, Inc. (hereinafter “Opposer”), serves the
`
`following interrogatories under Rule 33, Fed.R.Civ.P., and Trademark Rules 2.1 16(a) and
`
`2.120(d)(1), to be answered separately and fully in writing under oath by Applicant, Mitchell R.
`
`Swartz (“Applicant”). Each separately numbered or lettered sub-part of each interrogatory
`
`requires a separate answer. Furthermore, these interrogatories shall be deemed to be continuing
`
`to the fullest extent permitted by the Rules and Applicant shall provide Opposer with any
`
`supplemental answers and additional information, responsive to these interrogatories, which shall
`
`become available to Applicant at a later date.
`
`DEFINITIONS AND INSTRUCTIONS
`
`A.
`
`The term “document” shall be construed in its broadest permissible sense, and
`
`shall include any and all means of conveying, storing, or memorializing information, whether in
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`paper or other tangible physical form, or in electronic form, in the possession, custody, or control
`
`

`
`of Applicant. Each comment, or addition to, or deletion from, a document shall constitute a
`
`separate document.
`
`B.
`
`If Applicant refuses to identify and/or produce any document(s) based upon a
`
`claim of confidentiality, privilege, or work product immunity, Applicant shall, in log form: (i)
`
`identify each document by its author, intended recipient(s), the date(s) of the document(s), and
`
`its/their general subject matter, and (ii) set forth for each withheld document the particular basis
`
`for the refusal of production.
`
`C.
`
`As used herein, the term “regarding” means relating or referring to, incorporating,
`
`comprising, touching upon, indicating, evidencing, affinning, denying, concerned with, relevant
`
`to, or likely to lead to admissible evidence concerning.
`
`D.
`
`As used herein, the phrase “Applicant’s BUG-SUN TECHNOLOGIES Mark” or
`
`“Applicant’s Mark” shall refer to the trademark which is the subject of Application Serial No.
`
`76/388,837.
`
`E.
`
`As used herein, the phrase “Applicant’s Products” shall refer to those products
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`recited in Application Serial No. 76/388,837, as published for opposition in the Official Gazette
`
`on October 22, 2002, Vol. 1263, No. 4 at page TM 346.
`
`INTERROGATORIES
`
`INTERROGATORY NO. 1
`
`Identify, by common commercial descriptive name, each of Applicant’s Products bearing
`
`Applicant’s Mark actually offered or intended to be offered for sale by or on behalf of Applicant.
`
`

`
`INTERROGATORY NO. 2
`
`For each of Applicant’s Products identified in Applicant’s Answer to Interrogatory No. 1,
`
`state the date of first use or anticipated date of first use anywhere by Applicant, or any
`
`predecessor of Applicant, or any entity in which Applicant had an ownership interest.
`
`INTERROGATORY NO. 3
`
`For each of Applicant’s Products identified in Applicant’s Answer to Interrogatory No. 1,
`
`state the date of first use or anticipated date of first use in commerce by Applicant, or any
`
`predecessor of Applicant, or any entity in which Applicant had an ownership interest.
`
`INTERROGATORY NO. 4
`
`Identify all searches of any type conducted by or on behalf of Applicant in connection
`
`with its decision to adopt, use, or apply for registration in the United States Patent and
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`Trademark Office (“PTO”) of Applicant’s Mark.
`
`INTERROGATORY NO. 5
`
`State whether Applicant, or any predecessor of Applicant, or any entity in which
`
`Applicant had an ownership interest had knowledge of Opposer’s use of its BUG & SUN
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`designation prior to Applicant’s decision to adopt, use, or file for registration in the PTO of
`
`Applicant’s Mark.
`
`INTERROGATORY NO. 6
`
`If Applicant, or any predecessor of Applicant, or any entity in which Applicant had an
`
`ownership interest had prior knowledge of Opposer’s use of its BUG & SUN designation prior to
`
`Applicant’s decision to adopt, use, or file for registration in the PTO of Applicant’s Mark, state
`
`whether Applicant considered the issue of, or received any opinions concerning, a likelihood of
`
`confusion between Applicant’s Mark and Opposer’s BUG & SUN designation.
`
`

`
`INTERROGATORY NO. 7
`
`Identify (by title, publisher, issue date, page number, and any other relevant designation),
`
`those printed and electronic media publications (including broadcasts and websites) in which
`
`Applicant, or any predecessor of Applicant, or any entity in which Applicant had an ownership
`
`interest has promoted or plans to promote Applicant’s Products in connection with Applicant’s
`
`Mark.
`
`INTERROGATORY NO. 8
`
`Identify (by name, date and location) all marketing Venues, such as trade shows, fairs,
`
`conventions, and exhibitions, where Applicant, or any predecessor of Applicant, or any entity in
`
`which Applicant had an ownership interest has promoted or plans to promote any of Applicant’s
`
`Products in connection with Applicant’s Mark.
`
`INTERROGATORY NO. 9
`
`Identify those agreements (such as assignments, licenses, authorizations, permissions, or
`
`consents) entered into by Applicant, or any predecessor of Applicant, or any entity in which
`
`Applicant had an ownership interest, and those agreements negotiated by Applicant, or any
`
`predecessor of Applicant, or any entity in which Applicant had an ownership interest, but not
`
`consummated, regarding Applicant’s Mark and the products sold or intended to be sold under
`
`Applicant’s Mark.
`
`INTERROGATORY NO. 10
`
`Identify the types of retail outlets where Applicant’s Products are sold or intended to be
`
`sold in connection with Applicant’s Mark and identify four representative examples by name.
`
`

`
`INTERROGATORY NO. 11
`
`Identify the channels of distribution and the geographical areas of trade within which
`
`Applicant’s Products are or are intended to be promoted and sold in connection with App1icant’s
`
`Mark.
`
`INTERROGATORY NO. 12
`
`For each expert Applicant has retained to give testimony in this proceeding, provide the
`
`information required in Rule 26(a)(2)(B), Fed.R.Civ.P.
`
`INTERROGATORY NO. 13
`
`Identify all persons or companies involved in the manufacture, marketing, and sale of
`
`App1icant’s Products.
`
`INTERROGATORY NO. 14
`
`State the full factual basis for App1icant’s denial of paragraph 2 of the Notice of
`
`Opposition.
`
`INTERROGATORY NO. 15
`
`Identify by mark, owner, and PTO registration or application number each trademark that
`
`Applicant contends is relevant to this proceeding.
`
`INTERROGATORY NO. 16
`
`Explain in reasonable detail the manner in which Applicant believes it has gained rights
`
`to App1icant’s Mark.
`
`INTERROGATORY NO. 17
`
`State whether Applicant is now aware and whether Applicant, or any predecessor of
`
`Applicant, or any entity in which Applicant had an ownership interest was aware prior to the
`
`

`
`filing of Application Serial No. 76/388,837 of uses by persons or entities other than Applicant of
`
`the terms “bug” and/or “sun” in connection with insect repellent and/or sunscreen.
`
`INTERROGATORY NO. 18
`
`Identify separately why Applicant, or any predecessor of Applicant, or any entity in
`
`which Applicant had an ownership interest chose each of the fonnatives “bug” and “sun” in
`
`connection with the goods which are the subject of Application Serial No. 76/388,837.
`
`INTERROGATORY NO. 19
`
`State the factual basis for each denial in whole or in part of each request for admission in
`
`Plaintiffs First Request for Admissions which is not admitted without qualification.
`
`INTERROGATORY NO. 20
`
`Identify each person who has supplied documents or information for, or who has
`
`participated in, answering these interrogatories, Opposer’s First Request for Production of
`
`Documents and Things, and Opposer’s First Requests for Admissions.
`
`

`
`INTERROGATORY NO. 21
`
`Identify by name, address, state of incorporation or domicile, and dates of existence each
`
`corporation, company, partnership, or person which Applicant will claim as a predecessor in
`
`interest of the term BUG-SUN or the tenn SUN—BUG.
`
`Respectfully submitted,
`
`Schering—Plough HealthCare Products, Inc.
`
` David J. Kera
`
`Brian B. Darville
`
`Amy S. Cahill
`OBLON, SPIVAK, McCLELLAND,
`
`MAIER & NEUSTADT, P.C.
`1940 Duke Street
`
`22314
`
`Alexandria, Virginia
`(703) 413-3000
`fax (703) 413-2220
`e—mail:
`t1ndocket(cL{oblon.com
`
`Attorneys for Opposer
`
`Date: October 210, 2003
`
`DJK/BBD/kan/ojb
`
`{|:\A1TY\DJK\1246-233818US-INT.Doc}
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing OPPOSER’S FIRST SET OF
`1%
`INTERROGATORIES was served on counsel for Applicant, this _3Q day of October, 2003, by
`
`sending same via First Class mail, postage prepaid, to:
`
`Dr. Mitchell Swartz
`
`16 Pembroke Road
`
`Weston, Massachusetts 02493-2247
`
`Q; 5 K
`
`

`
`Attorney Docket No.: 2338 1 8US-21
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Schering-Plough HealthCare Products, Inc.,
`
`Opposer,
`
`V.
`
`Mitchell R. Swartz,
`
`Applicant.
`
`\/\./\./\/\./\./\./g/yz\/
`
`Opposition No.: 155,965
`U. S. Appln. Serial No.: 76/388,837
`Mark: BUG-SUN
`
`TECHNOLOGIES
`
`EXHIBIT 2
`
`TO OPPOSER’S MOTION AND MEMORANDUM TO COMPEL
`
`DISCOVERY RESPONSES WITHOUT OBJECTION, TO DEEM
`REQUESTS FOR ADMISSIONS ADMITTED, TO SUSPEND
`PROCEEDINGS AND TO FURTHER EXTEND DISCOVERY
`
`(FOR OPPOSER ONLY) AND TRIAL DATES
`
`David J. Kera
`
`Brian B. Darville
`
`Amy S. Cahill
`OBLON, SPIVAK, MCCLELLAND,
`MAIER & NEUSTADT, P.C.
`1940 Duke Street
`
`22314
`
`Alexandria, Virginia
`(703) 413-3000
`fax (703) 413-2220
`e-mail:
`tmdocket@ob1on.com
`
`Attorneys for Opposer
`Schering-Plough HealthCare Products, Inc.
`
`

`
`Attorney Docket No.: 23 3 81 8US-21
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 155,965
`U. S. Appln. Serial No.: 76/388,837
`Mark: BUG-SUN
`TECHNOLOGIES
`
`Schering-Plough HealthCare Products, Inc., )
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`) )
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`) )
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`Opposer,
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`v.
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`Mitchell R. Swartz,
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`Applicant.
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`OPPOSER’S FIRST REQUESTS FOR
`PRODUCTION OF DOCUMENTS AND THINGS
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`Opposer, Schering-Plough HealthCare Products,
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`Inc.
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`(“Opposer”), hereby requests,
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`pursuant
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`to Rule 34, Fed.R.Civ.P., and Trademark Rules 2.116(a) and 2.120(d)(2),
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`that
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`Applicant, Mitchell R. Swartz (“Applicant”), produce the documents and things listed below for
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`inspection and copying, and that said production be made accompanying Applicant’s service of
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`its responses to this Request upon Opposer at the offices of Oblon, Spivak, McClel1and, Maier &
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`Neustadt, P.C., 1940 Duke Street, Alexandria, Virginia 22314.
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`DEFINITIONS AND INSTRUCTIONS
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`A.
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`The definitions
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`and
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`instructions
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`contained in Opposer’s First Set of
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`Interrogatories (the “Interrogatories”) are incorporated by reference.
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`B.
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`With respect to any document requested below for which a claim of privilege,
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`work product or confidentiality is made, specify (in log form) the nature of the document,
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`identify by name, address,
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`title and business affiliation,
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`the writer, the addressee, and all
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`recipients of the document, and set forth the general subject matter to which the document
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`relates, and its date.
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`C.
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`Applicant shall separately identify by number the Request pursuant to which each
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`document or thing is produced.
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`D.
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`A written response to this Request is required pursuant to Rule 34 Fed.R.Civ.P.
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`REQUESTS
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`1.
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`Produce representative specimens of the current and proposed advertising and
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`promotional documents for use in all print, broadcast, and electronic media, bearing Applicant’s
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`Mark, used or to be used by or on behalf of Applicant.
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`2.
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`Produce those documents and things regarding the creation, selection, and
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`adoption of Applicant’s Mark.
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`3.
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`Produce those documents regarding any investigation, such as a service mark,
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`trademark, trade name, Internet name, or corporate name search, regarding Applicant’s adoption,
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`use, or application for registration in the United States Patent and Trademark Office of
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`Applicant’s Mark.
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`4.
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`Produce those documents and things relating to and showing the earliest use or
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`anticipated first use anywhere of Applicant’s Mark by or on behalf of Applicant or any related
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`company(ies).
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`5.
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`Produce those documents and things relating to and showing the earliest use in
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`commerce or anticipated first use in commerce of Applicant’s Mark for each of Applicant’s
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`Products by or on behalf of Applicant or any related company(ies).
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`6.
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`Produce those documents and things demonstrating the type(s) of Applicant’s
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`Products in connection with which Applicant’s Mark has been used or is proposed to be used.
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`7.
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`Produce those documents regarding the geographical areas and channels of trade
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`in which Applicant’s Mark has been used or is proposed to be used.
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`8.
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`Produce those documents
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`showing any consent, authorization,
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`license or
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`permission entered into, or negotiated but not consummated, between Applicant and any
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`individua1(s) or company(ies) regarding the use or intended use of Applicant’s Mark, including
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`any modifications made thereto.
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`9.
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`Produce specimens of each different item of packaging and labeling materials for
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`Applicant’s Products bearing Applicant’s Mark, including the prototypes, drafts, and sketches for
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`said packaging and labeling.
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`10.
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`Produce documents regarding the design and creation of packaging and labeling
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`materials for Applicant’s Products bearing Applicant’s Mark.
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`11.
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`Produce those documents regarding each printed, broadcast, and electronic-
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`medium publication in which Applicant has advertised or promoted, is advertising or promoting,
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`or plans to advertise or promote Applicant’s Products in connection with Applicant’s Mark.
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`12.
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`Produce those documents regarding the types of customers with whom Applicant
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`does or intends to do business, and ultimate purchasers whom Applicant intends to be purchasers
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`of Applicant’s Products bearing Applicant’s Mark.
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`13.
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`Produce those documents regarding the annual dollar value of Applicant’s actual
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`and/or projected sales of Applicant’s Products bearing Applicant’s Mark since the date of first
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`use of the mark.
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`14.
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`Produce those documents regarding the amount of money budgeted, the amount
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`of money already spent and the amount of money Applicant anticipates will be spent annually to
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`promote Applicant’s Products bearing Applicant’s Mark since the date of first use of the mark.
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`15.
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`Produce those documents regarding the date and circumstances under which
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`Applicant became aware of the use of Opposer’s BUG & SUN designation identified in the
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`Notice of Opposition prior to Applicant’s decision to adopt, use, or apply for registration in the
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`United States Patent and Trademark Office of Applicant’s Mark.
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`16.
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`Produce those documents regarding any action taken by Applicant in response to
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`its awareness of Opposer’s BUG & SUN designation identified in the Notice of Opposition.
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`17.
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`Produce copies of any surveys, market research tests, investigations, demographic
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`or consumer profile studies, and focus group inquiries regarding the ultimate purchasers or
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`potential ultimate purchasers of Applicant’s Products actually or intended to be sold, offered for
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`sale, advertised, or promoted under Applicant’s Mark, including the results thereof.
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`18.
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`Produce all documents regarding or constituting any studies, surveys, and market
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`research tests regarding Applicant’s Products bearing Applicant’s Mark and the products
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`promoted and sold in connection with Opposer’s BUG & SUN designation identified in the
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`Notice of Opposition.
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`19.
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`Produce all documents regarding any claimed first use by Applicant of the
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`designation SUN-BUG and the designation BUG—SUN TECHNOLOGIES.
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`20.
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`Produce all documents
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`regarding Applicant’s knowledge or awareness of
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`Opposer’s use of the expression BUG & SUN.
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`21.
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`Produce all documents regarding confusion or likelihood of confusion between
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`Applicant’s Products bearing Applicant’s Mark and Opposer’s Products bearing Opposer’s BUG
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`& SUN designation.
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`22.
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`Produce those documents regarding any instance in which a person has been
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`confused, mistaken, or deceived about the source of Applicant’s Products advertised, promoted,
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`offered for sale, or sold under Applicant’s Mark and the source of Opposer’s products advertised,
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`promoted, offered for sale, or sold under Opposer’s BUG & SUN designation.
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`23.
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`Produce those documents and things fonning the basis for the denial, in whole or
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`in part, with respect
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`to each of Applicant’s responses to Opposer’s First Requests for
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`Admissions.
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`24.
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`For each expert Applicant intends to call to provide testimony in this proceeding,
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`produce all documents listed in Federal Rule of Civil Procedure 26(a)(2).
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`25.
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`Produce those documents showing the manufacturer of Applicant’s Products and
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`the quantity, wholesale price and suggested retail price of Applicant’s Products manufactured to
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`date.
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`Mark.
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`26.
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`Produce those documents and things regarding Applicant’s use of Applicant’s
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`27.
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`Produce those documents and things regarding express instructions, advice,
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`comments, and/or suggestions made by Applicant to others regarding the use of Applicant’s
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`Products.
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`28.
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`Produce those documents and things supporting Applicant’s denial of paragraph 2
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`of the Notice of Opposition.
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`29.
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`Produce those documents and things identifying Applicant’s sales representatives,
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`retailers or any other person who has offered to sell or has sold Applicant’s Products.
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`30.
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`Produce literature concerning,
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`including instructions for use of, Applicant’s
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`Products.
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`31.
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`Produce an original of each different label, tag, decal, imprint, package, package
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`insert, wrapper, container, display, or any prototype of the same on which Applicant’s Mark has
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`appeared or is intended to appear.
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`32.
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`Produce those documents and things regarding any litigation or administrative
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`proceeding involving Applicant’s Mark in the U.S.
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`33.
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`Produce those documents and things regarding requests by third parties to have
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`Applicant cease and/or desist from using Applicant’s Mark.
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`34.
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`Produce any research, development or other documents analyzing actual or
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`potential uses or applications for Applicant’s Products.
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`35.
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`Produce those documents regarding Applicant’s knowledge of the use by persons
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`or entities other than Applicant of the terms “bug” and/or “sun” in connection with insect
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`repellant and/or sunscreen.
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`36.
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`Produce all documents regarding products which Applicant deems to be or views
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`as competitive with Applicant’s Products marketed and/or sold in connection with Applicant’s
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`Mark.
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`37.
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`Produce all documents regarding the generic or descriptive nature of Applicant’s
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`Mark in connection with Applicant’s Products and the capability or inability of Applicant’s Mark
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`to serve as a trademark for Applicant’s Products.
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`38.
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`Produce all documents regarding the qualities, characteristics, features, fimctions,
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`purposes, subject matter and/or use of Applicant’s Products promoted, advertised, sold or to be
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`sold under Applicant’s Mark.
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`39.
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`Produce all documents regarding any website maintained by or on behalf of
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`Applicant regarding the sale of Applicant’s Products bearing Applicant’s Mark.
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`40.
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`Produce all documents regarding any legal or administrative proceeding regarding
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`any application to register SUN—BUG,
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`including any decision by the Trademark Examining
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`Operation of the United States Patent and Trademark Office and any decision by the Trademark
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`Trial and Appeal Board regarding that designation.
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`41.
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`Produce all documents regarding any litigation or administrative proceeding
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`between Applicant and Opposer or between Applicant and any of Opposer’s affiliates or
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`shareholders as referenced in paragraph 5 of App1icant’s so-called Preliminary Response to
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`Opposition by Schering-Plough Healthcare Products, a copy of which is attached as Exhibit C to
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`Opposer’s First Request for Admissions in this proceeding.
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`42.
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`Produce those documents, not otherwise requested herein, and referred to by
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`Applicant in responding to Opposer’s First Set of Interrogatories in this proceeding.
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`Respectfiilly submitted,
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`Schering-Plough HealthCare Products, Inc.
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`
`
` David J. Kera
`
`Brian B. Darvi e
`
`Amy S. Cahill
`OBLON, SPIVAK, MCCLELLAND,
`MAIER & NEUSTADT, P.C.
`1940 Duke Street
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`22314
`
`Alexandria, Virginia
`(703) 413-3000
`fax (703) 413-2220
`e-mail:
`tmdocket(éDoblo11.com
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`Attorneys for Opposer
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`Date: October $0, 2003
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`DJK/BBD/ojb/kan
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`{|2\A'lTY\DJK\1246-233818US-REQ.DOC}
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of the foregoing OPPOSER’S FIRST REQUEST FOR
`“Go
`PRODUCTION OF DOCUMENTS AND THINGS was served on Applicant, this Q day of
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`October, 2003, by sending same via First Class mail, postage prepaid, to:
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`Dr. Mitchell Swartz
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`16 Pem