Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA286421
`ESTTA Tracking number:
`05/28/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91171266
`Defendant
`David Joseph
`ANNA M. VRADENBURGH
`Piccionelli & Sarno
`2801 Townsgate Road, Suite 200
`Westlake Village, CA 91361
`UNITED STATES
`generalmail@piccionellisarno.com
`Motion to Compel Discovery
`Anna M. Vradenburgh
`generalmail@piccionellisarno.com
`/anna m vradenburgh/
`05/28/2009
`MotToCompel.pdf ( 14 pages )(1077297 bytes )
`Exh A.pdf ( 9 pages )(713523 bytes )
`Exh B.pdf ( 6 pages )(475929 bytes )
`Exh C.pdf ( 19 pages )(1109296 bytes )
`Exh D.pdf ( 17 pages )(946852 bytes )
`Exh E.pdf ( 5 pages )(346621 bytes )
`Exh F.pdf ( 3 pages )(138951 bytes )
`Exh G.pdf ( 6 pages )(392137 bytes )
`Exh 1.pdf ( 1 page )(74409 bytes )
`Exh 2.pdf ( 2 pages )(222649 bytes )
`
`

`
`I hereby certify that this paper is being electronically,
`CERTIFICATE OF MAILING:
`osited with the US. Trademark Trial and
`Appeal Board, PO. Box 1451, Alexandria, Virginia 223 13-1451, at usptogov on:
`7.
`,
`\
`Date: May 28,2009
`By:
`01 ‘ <A,¢mfi,»~
`
`Lori A.
`
`O
`
`ccio
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Attorney Docket No: 63254.2000PP
`
`) ) )
`
`The Deak Group, Inc.
`A Florida Corporation
`
`) Opposition No. 91,171,266
`) Cancellation No. 92,047,147
`Cancellation No. 92,047,166
`)
`)
`
`) )
`
`)
`
`Opposer
`
`v.
`
`David Joseph
`An individual
`
`Applicant
`
`APPLICANT’S MOTION TO COMPEL DISCOVERY
`
`RESPONSES FROM OPPOSER
`
`Pursuant to Trademark Rule of Procedure 2.120(e)(2) and Fed. R. Civ. P.
`
`37(a)(2)(B), Applicant David Joseph respectfully requests the Trademark Trial and
`
`Appeal Board to issue an Order compelling Opposer, The Deak Group, Inc. to fully
`
`respond to App1icant’s First Set Of Interrogatories, and further, to respond to, and
`
`produce discovery in response Applicant’s First Set for Production of Documents to
`
`Opposer (“Document Requests”), as detailed herein.
`
`INTRODUCTION
`
`Notwithstanding any confusion in the pleadings, or the TTAB’s apprehension of
`
`same, Applicant has cooperated completely with all discovery propounded to it, timely
`
`responding to each discovery request and producing in excess of _7_0_()_ documents to
`
`Opposer’s counsel’s office on October 25, 2006. However, as the facts clearly
`
`demonstrate, Opposer has failed to make even a token attempt to abide by its discovery
`
`

`
`Opposition No. 91,171,266
`
`obligations. Accordingly, Applicant has no other option than to proceed with its instant
`
`Motion to Compel.
`
`Applicant’s Compliance with its Discovery Obligations
`
`On August 24, 2006, Opposer served Applicant with a First Set of Interrogatories
`
`and a First Set of Document Production Requests. A Second Set of Interrogatories was
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`served on Applicant on August 25, 2006. The parties stipulated that Applicant’s response
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`date would be October 23, 2006. No further communications have ever been received
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`regarding the responses provided by Applicant to Opposer.
`
`Opposer’s Disregard of its Discovery Obligations
`
`On October 24, 2006, Applicant served on Opposer a First Request for
`
`Admissions, a First Set of Interrogatories and a First Set of Request for Document
`
`Production. The parties stipulated that responses were due December 26, 2006. On
`
`December 28, 2006, at Opposer’s request, Applicant granted an additional one—day
`
`extension for Applicant to provide its already over-due responses. True and correct
`
`copies of the Interrogatories and Document Requests are attached herewith as Exhibit A
`
`and B to Applicant’s Good Faith Statement (“Applicant’s Statement”).
`
`On December 29, 2006, Applicant’s counsel received Opposer’s responses to
`
`Interrogatories and a written response to Opposer’s Document Requests. True and
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`correct copies of the Opposer’s Responses to Interrogatories and Document Requests are
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`attached herewith as Exhibit C and D to Applicant’s Statement. Opposer’s responses to
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`Interrogatories contained a number of deficiencies, omissions and ill-taken objections.
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`Opposer’s written response to the Document Requests was similarly defective.
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`Moreover, Opposer failed to produce any documents, indicating instead that it would
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`make documents available for inspection and/or that copies would be submitted for
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`Applicant’s inspection. Despite repeated requests, Opposer failed to either make the
`
`documents available or to provide copies.
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`

`
`Opposition No. 91,171,266
`
`On February 15, 2007, Applicant’s counsel sent a letter to counsel for Opposer,
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`advising him of the deficiencies of Opposer’s discovery responses and requesting that
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`Applicant supplement his responses. A true and correct copy of the February 15, 2007,
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`letter sent to Opposer’s counsel is attached hereto as Exhibit E to Applicant’s Statement
`
`filed concurrently herewith. The letter invited Opposer’s counsel to contact Applicant’s
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`counsel if further clarifications were required, and further requested a protective order be
`
`forwarded to faciliate the production of responses claiming privilege. No requests for
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`further clarification were made.
`
`On February 27, 2007, Opposer’s counsel responded to the February 15, 2007,
`
`letter stating that they “were preparing the supplement as well as compiling all the
`
`documents and should have that to you shortly.” Attached hereto as Exhibit F to
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`Applicant’s Statement. As of March 21, 2007, neither responses nor documents had been
`
`received by Applicant’s counsel. However, on March 21, 2007, Opposer’s counsel
`
`reaffirmed that he would “get them to [us] as soon as possible.” Exhibit F to Applicant’s
`
`Statement, attached hereto. He also advised that “I have the documents here and 1 need
`
`to go through them.” Exhibit F to App1icant’s Statement, attached hereto. Apparently,
`
`notwithstanding the original assurances that Opposer was reviewing the documents, no
`
`review had occurred.
`
`On April 29, 2009, Applicant’s counsel again transmitted the February 15, 2007,
`
`letter to Opposer’s counsel demanding production of documents and responses. Exhibit
`
`G to Applicant’s Statement, attached hereto. On May 21, 2009, Opposer’s counsel yet
`
`again stated that “we will be reviewing [the discovery letter]
`
`and supplementing
`
`discovery.” Exhibit F to Applicant’s Statement, attached hereto. This is the same letter
`
`transmitted two (2) years ago! Finally, on May 21, 2009, Applicant’s counsel reiterated
`
`its demand for the discovery responses and set a deadline of May 25”‘ for the receipt of
`
`the responses and documents. Exhibit F to Applicant’s Statement, attached hereto. To
`
`date, no response has been received regarding the deadline demand of May 25, 2009, and
`
`not a single document or supplemental production has been produced.
`
`

`
`Opposition No. 91,171,266
`
`Discussion
`
`Pursuant to Fed. R. Civ. P. 37(a)(3), an “evasive or incomplete disclosure,
`
`answer, or response is to be treated as a failure to disclose, answer or respond.”
`
`Trademark Rule of Procedure 2.120(3) and Fed. R. Civ. P. 37 (a)(2)(B) authorizes a
`
`motion to compel if a party fails to answer an interrogatory submitted pursuant to Fed. R.
`
`Civ. P. 33, or fails to permit inspection pursuant to a request submitted pursuant to Fed.
`
`R. Civ. P. 34.
`
`A. Applicant Has Failed To Respond To Opposer’s Interrogatories
`
`Interrogatory Request No. 3: Opposer states in paragraph 3 of the Notice of
`
`Opposition that “Opposer owns the domain name <redlightvideo.com>.” Please
`
`identify the date on which Opposer received ownership or title of the domain
`
`name red1ightvideo.com.
`
`Opposer’s Response to Interrogatory Reguest No. 3: Opposer, via its prior owner,
`
`obtained rights to the domain name <redlightvideo.com> on or about October 20,
`
`1997.
`
`Discussion: In response to lnterrogatory No. 2, Opposer states that domain name
`
`was registered on October 20, 1997. However, Opposer is not the original owner
`
`of the domain name. The interrogatory states “identify the date on which
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`Opposer received ownership or title of the domain name.” Accordingly, this
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`answer cannot be correct as logic dictates that Opposer could not retroactively
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`have obtained rights in the domain name, a contract right, at the time of
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`registration, unless it registered the domain name.
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`Its rights clearly vested some
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`time after the original registration date. Opposer’s response is therefore evasive
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`and incomplete.
`
`lnterrogatory Reguest 16:
`
`Please state all facts supporting Opposer’s claim
`
`that Opposer’s trademark has been “used and advertised nationally in the United
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`

`
`Opposition No. 91,171,266
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`States” as claimed in paragraph 11 of the Notice of Opposition.
`
`Qpposer’s Response to Interrogatory Reguest No. 16: Opposer objects on the
`
`grounds that Interrogatory No. 16 may call for information containing or relating
`
`to communications or the substance of communications with counsel, or trial
`
`preparation material, which are protected by the attorney/client privilege and/or
`
`the doctrine of work product. Opposer objects on the grounds that the
`
`interrogatory is vague, and therefore unduly burdensome. Opposer objects on the
`
`grounds that the interrogatory calls for legal conclusions. Without waiving said
`
`objections, Opposer will make available for inspection documents relating to the
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`national advertising and sales relating to Opposer’s mark.
`
`Discussion:
`
`The interrogatory clearly requests “all facts supporting Opposer’s
`
`claim.” Opposer filed this Opposition and must have some basis upon which it
`
`was filed and the statements it made in the filing of the Notice of Opposition.
`
`This interrogatory does not call for any privileged or protected communications
`
`that obviously, could not possibly be relevant to the factual information requested.
`
`Regardless, even if it did, all non—privileged information should have been
`
`provided as Applicant is entitled to understand the basis of the claims being
`
`asserted. Further, Applicant has demanded all documents associated with this
`
`interrogatory and as stated would be produced by Opposer’s response. Opposer,
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`however, has failed to produce a single document.
`
`Interrogatory Request 17: Please state all facts supporting Opposer’s claim that
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`“Applicant’s use of the ‘RED LIGHT DISTRICT’ trademark started after
`
`Opposer’s ‘RED LIGHT VIDEO’ trademark has become a famous trademark” as
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`claimed in paragraph 12 of the Notice of Opposition.
`
`Opposer’s Response to Interrogatory Request No. 17: Opposer objects on the
`
`grounds that Interrogatory No. 17 [sic] may call for information containing or
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`relating to communications or the substance of communications with counsel, or
`
`trial preparation material, which are protected by the attorney/client privilege
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`

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`Opposition No. 91,171,266
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`and/or the doctrine of work product. Opposer objects on the grounds that the
`
`interrogatory is vague, and therefore unduly burdensome. Opposer objects on the
`
`grounds that the interrogatory calls for legal conclusions. Opposer objects on the
`
`grounds it has yet to be determined which date Applicant started using the mark
`
`“RED LIGHT DISTRICT”, and therefore Opposer cannot respond at this time.
`
`Discussion: Opposer has filed an opposition, subject to Fed. R. Civ. Pro. 11,
`
`contending that Applicant’s use of its mark is subsequent to Opposer’s mark
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`supposedly obtaining the status of a famous mark. When asked for the fagtnefi
`
`basis for this contention, Opposer’s response is, in essence, “we don’t know when
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`Applicant started using its mark so we really can’t say.” Applicant contends that
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`this response is prima facie proof of Opposer’s bad faith in this matter; either it
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`had a reasonable basis in fact for making this contention in its opposition, in
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`which case it E provide a response to this interrogatory, or its Opposition was
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`filed in violation of Fed. R. Civ. P. 11. Opposer cannot have it both ways.
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`Moreover, Opposer has made a claim that its mark is famous.
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`Accordingly, Opposer must at least have a date in mind by which its mark had
`
`become famous. Opposer’s answer will not be determine by the date Applicant
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`first starting using its mark, but rather, will be determine by a specific date by
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`which Opposer claims the mark was deemed famous as determined by third party
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`evidence, which is not dependent upon Applicant’s first use.
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`Finally, Opposer’s blanket objection that this information is, somehow,
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`subject to the attorney/client privilege or work product doctrines is simply
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`ridiculous. The interrogatory calls for facts supporting its claim of the mark
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`attaining famous mark status. No communication with counsel could possibly be
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`remotely related to this request.
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`Interrogatory Request 26: With respect to depictions (for example, images of box
`
`covers) published (for example, displayed) on the web site redlightvideo.com
`
`subject to 18 U.S.C. §2257 et. seq., explain how such publications have been, and
`
`currently are, compliant with the regulations set forth at 18 U.S.C. §2257 et. seq.
`
`

`
`Opposition No. 91,171,266
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`and 28 CFR Part 75 et. seq., for each year Opposer claims common law rights
`
`resulting from the use of Opposer’s mark in association with the services
`
`identified in paragraph 2 of the Notice of Opposition offered in connection with
`
`the web site redlightvideo.com.
`
`Opposer’s Response to lnterrogatory Request No. 26: Opposer objects on the
`
`grounds that Request No. 26 is irrelevant and not likely to lead to the discovery of
`
`admissible evidence. Moreover, information relating to §2257 has no bearing on
`
`this matter. Opposer objects on the grounds that the interrogatory is unintelligible
`
`and therefore cannot respond.
`
`Discussion: This request is directly related to the issue of proper use of the mark
`
`for the purpose of establishing common law rights. Use of a mark on a product
`
`or service that is in violation of the law does not support trademark use of a mark.
`
`It is highly relevant as it may directly challenge Opposer’s allegations of common
`
`law use.
`
`Interrogatogg Request 30: Please identify the registrations by Registration No.,
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`country and/or state for the terms RED LIGHT VIDEO and RedLightVideo.com
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`that are referred to by the statement “Red Light Video® and
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`RedLightVideo.com® are registered trademarks of The Deak Group, Inc.”
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`asserted on the web site redlightvideo.com in 2001.
`
`Opposer’s Response to Interrogatogg Request No. 30: Opposer objects on the
`
`grounds that the interrogatory is irrelevant and not likely to lead to the discovery
`
`of admissible evidence. Opposer objects on the grounds that it is not aware of the
`
`statement referenced in Interrogatory No. 30 and therefore requests that said
`
`document be produced so that Opposer may comment, if deemed relevant.
`
`Opposer further objects on the grounds that the interrogatory may call for
`
`documents containing or relating to communications or the substance of
`
`

`
`Opposition No. 91,171,266
`
`communications with counsel, or trial preparation material, which are protected
`
`by the attorney/client privilege and/or doctrine of work product.
`
`Discussion:
`
`This interrogatory is not irrelevant as the statements are asserting
`
`rights of ownership in registered marks. If no registrations for these alleged
`
`marks exist, Applicant is entitled to know this fact, and to be advised of
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`misstatements with respect to intellectual property rights that Opposer alleges it
`
`maintains. Further, Opposer is not entitled to determine whether it deems this
`
`relevant, and perhaps respond. Opposer also seems to be unaware of public
`
`admissions that it has made (and that are readily verified). If Opposer contends it
`
`did not make such an admission, a denial would have been a proper response.
`
`However, it is undisputed that it did. Attached hereto as Exhibit 1 is a true and
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`correct copy of a screenprint of Opposer’s website which contains the admission.
`
`Interrogatory Request 31: Please identify the name of the “new ownership”
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`referred to on the web site redlightvideo.com as of April 2001.
`
`Opposer’s Response to Interrogatory Reguest No. 31: Opposer objects on the
`
`grounds that it is not aware of the statement referenced in Interrogatory No. 31
`
`[sic] and therefore request that said document be produced so that Opposer may
`
`comment, if relevant.
`
`Discussion:
`
`Opposer is not entitled to determine whether it deems this relevant,
`
`and perhaps “comment”. This interrogatory is directed to the chain of title and
`
`control of the only service associated with the Opposer’s alleged use of its alleged
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`mark, and therefore, is highly relevant. Attached hereto as Exhibit 2 is a true and
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`correct copy of a screenprint of the website containing the admission.
`
`

`
`Opposition No. 91,171,266
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`B. Applicant has Failed to Produce Any Documents Responsive to Opposer’s
`Request for Production of Documents
`
`1.
`
`Document Requests: 1,2,3,5,l0,12,13, 14, unnumbered #1 (now 15), 20-
`
`24, and 28-31.
`
`Opposer’s written response to Applicant’s Request for Production of Documents
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`contained the following objection for Requests 1,2,3,5,l0,l2,l3, 14, unnumbered #1
`
`(now 15), 20-24, and 28-31:
`
`To the extent they exist, Opposer will make responsive documents
`available to Applicant for inspection at a mutually agreeable time and
`place, and/or copies will be submitted for your inspection as they become
`available and/or identified.
`
`As set forth above, on December 28, 2006, written responses to the Document
`
`Request were served on Applicant. On February 27, 2007, March 21, 2007, and May 21,
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`2009, Opposer’s counsel has repeatedly represented that he was “going through” the
`
`documents, the documents were in his office and the documents would be provided
`
`shortly.
`
`See Exhibit F to Applicant’s Statement. Opposer filed this, and multiple other
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`cancellations and oppositions against App1icant’s and Applicant’s company’s registration
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`and application, yet ironically, has failed to produce fly documentation supporting its
`
`allegations of first use, extent of use or, for that matter, documents supporting any other
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`issue. Whereas Applicant complied with document requests served on by providing a
`
`comprehensive production within the statutory deadline, Opposer, broken promises
`
`notwithstanding, has failed to produce one single page. It is simply inconceivable that
`
`after almost three (3) years, Opposer has failed to provide these alleged documents that,
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`according to Opposer’s counsel, are sitting in his office. Either Opposer has no evidence,
`
`or is simply of the belief that it is not required to produce it.
`
`2.
`
`Document Request 6:
`
`Request No. 6: Please produce a copy of the web page(s) of redlightvideo.com
`
`for each year Opposer’s claims common law use of Opposer’s mark for the
`
`

`
`Opposition No. 91,171,266
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`services identified in paragraph 2 of the Notice of Opposition which depicts the
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`compliance statement required pursuant to 18 U.S.C. §2257 et. seq. and 28 CFR
`
`Part 75.
`
`Opposer’s Response to lnterrogatory Document Request No. 6: Opposer [sic]
`
`object [sic] on the grounds that Request No. 6 seeks documents which are
`
`irrelevant and not likely to lead to the discovery of admissible evidence.
`
`Moreover, documents related to §2257 are irrelevant to this proceeding. Opposer
`
`further objects [sic] on the grounds that the request may call for documents
`
`containing or relating to communications or the substance of communications
`
`with counsel, or trial preparation material, which are protected by the
`
`attorney/client privilege and/or the doctrine of work product.
`
`Discussion: As set forth in the February 27, 2007, letter, this request is
`
`directly related to the issue of proper use of the mark for the purpose of
`
`establishing common law rights. Use of a mark on a product or service that is in
`
`violation of the law does not support trademark use of a mark. Further, the
`
`request clearly states “please produce a copy of the web page(s) of
`
`redlightvideo.com for each year Opposer’s claims common law use of Opposer’s
`
`mark for the services identified in paragraph 2 of the Notice of Opposition.” The
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`web pages are p_u_b_l_igfi available. Accordingly, any objection based upon
`
`privilege or work product is inapplicable. Further, if any pages are not publicly
`
`available, that is, are maintained as confidential within the Opposer’s company,
`
`these pages are not requested as they would have no bearing on the issue of
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`common law use, and thus, further illustrates that the objection is meritless.
`
`3.
`
`Requests unnumbered 2 (now 16), 6-9, 14, 16-19, and 25-27:
`
`Opposer’s written response to Applicant’s Request for Production of Documents
`
`contained the following objection for Requests unnumbered 2 (now 16), 6-9, 14, 16-19,
`
`and 25-27:
`
`10
`
`

`
`Opposition No. 91,171,266
`
`Opposer objects on the grounds that the request seeks confidential
`and trade secret information. Without waiving such objections, and upon
`the entry of an appropriate protective order, Opposer will make non
`privileged, non work product responsive documents available to Applicant
`for inspection at a mutually agreeable time and place, and/or copies will
`be submitted for your inspection as they become available and/or
`identified.
`
`Applicant has already agreed that the standard protective order of the TTAB is
`
`acceptable and applies. Nonetheless, Opposer has failed to identify or produce any
`
`documents.
`
`Conclusion
`
`Without explanation or excuse, Opposer has, nearly three years after the
`
`discovery requests were originally served, failed to produce a single document,
`
`notwithstanding repeated promises that it would do so. Opposer has also failed to
`
`supplement its inadequate interrogatory responses, notwithstanding Applicant’s good-
`
`faith attempts to address Opposer’s deficiencies and ill—taken objections with Opposer.
`
`Opposer has simply ignored all of Applicant’s efforts to resolve these issues without
`
`judicial intervention. Clearly, the time for such efforts is long past, and the intervention
`
`of the Board is required. Applicant therefore respectfiilly requests that Opposer be
`
`ordered to produce all outstanding documents, without objection, and to supplement its
`
`responses to interrogatories as detailed herein, also without objection.
`
`Date: May 28, 2009
`
`Respectfully submitted,
`
` a M. Vradenburgh
`
`Piccionelli & Sarno
`
`
`
`Attorneys for Applicant David Joseph
`Suite 200
`
`2801 Townsgate Road
`Westlake Village, California 91361
`Telephone: (805) 497-5886
`Facsimile:
`(805) 497-7046
`
`ll
`
`

`
`GOOD FAITH STATEMENT OF APPLICANT
`
`The undersigned, Anna M. Vradenburgh, declares the following:
`
`1.
`
`I am an attorney licensed to practice law in the State of California and licensed
`
`before the United States Patent and Trademark Office.
`
`I am an attorney with the firm of
`
`Piccionelli & Sarno, the current attorneys of record for the Applicant, David Joseph in
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`Opposition No. 91,171,266.
`
`2.
`
`On October 24, 2006, Applicant served on Opposer a First Request for
`
`Admissions, a First Set of Interrogatories and a First Set of Request for Document
`
`Production. The parties stipulated that responses were due December 26, 2006. On
`
`December 28, 2006, at Opposer’s request, Applicant granted an additional one—day
`
`extension for Applicant to provide its already over-due responses. True and correct
`
`copies of the Interrogatories and Document Requests are attached herewith as Exhibit A
`
`and B.
`
`3.
`
`On December 29, 2006, Applicant’s counsel received Opposer’s responses to
`
`Interrogatories and a written response to Opposer’s Document Requests. True and
`
`correct copies of the Interrogatories and Document Requests are attached herewith as
`
`Exhibits C and D, respectively. Opposer’s responses to Interrogatories contained a
`
`number of deficiencies, omissions and ill-taken objections. Opposer’s written response
`
`to the Document Requests was similarly defective. Moreover, Opposer failed to produce
`
`any documents, indicating instead that it would make documents available for inspection
`
`and/or that copies would be submitted for Applicant’s inspection. Despite repeated
`
`requests, Opposer failed to either make the documents available or to provide copies.
`
`4.
`
`On February 15, 2007, Applicant’s counsel sent a letter to counsel for Opposer,
`
`advising him of the deficiencies of Opposer’s discovery responses and requesting that
`
`Applicant supplement his responses. A true and correct copy of the February 15, 2007,
`
`letter sent to Opposer’s counsel is attached hereto as Exhibit E. The letter invited
`
`Opposer’s counsel to contact Applicant’s counsel if further clarifications were required,
`
`and further requested a protective order be forwarded to facilitate the production of
`
`responses claiming privilege. No requests for further clarification were made.
`
`

`
`Opposition No. 91,171,266
`
`5.
`
`On February 27, 2007, Opposer’s counsel responded to the February 15, 2007,
`
`letter stating that they “were preparing the supplement as well as compiling all the
`
`documents and should have that to you shortly.” Exhibit F to Applicant’s Statement,
`
`attached hereto. As of March 21, 2007, neither responses nor documents had been
`
`received by Applicant’s counsel. However, on March 21, 2007, Opposer’s counsel
`
`reaffirmed that he would “get them to [us] as soon as possible.” Exhibit F to Applicant’s
`
`Statement, attached hereto. He also advised that “I have the documents here and I need to
`
`go through them.” Exhibit F, attached hereto.
`
`6.
`
`On April 29, 2009, Applicant’s counsel again transmitted the February 15, 2007,
`
`letter to Opposer’s counsel demanding production of documents and responses. Exhibit
`
`G, attached hereto. On May 21, 2009, Opposer’s counsel yet again stated that “we will
`
`be reviewing [the discovery letter]
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`and supplementing discovery.” Exhibit F, attached
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`hereto.
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`7.
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`Finally, on May 21, 2009, Applicant’s counsel reiterated its demand for the
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`discovery responses and set a deadline of May 25”’ for the receipt of the responses and
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`documents. Exhibit F, attached hereto. To date, no response has been received regarding
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`the deadline demand of May 25, 2009, and not a single document or supplemental
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`production has been produced.
`
`The undersigned, Anna M. Vradenburgh, being hereby warned that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both, under
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`18 U.S.C. 1001, that all statements made of my own knowledge are true and all
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`statements made on information and belief are believed to be true.
`
`Dated: May 28, 2009
`
`By:
`
`

`
`STATE OF CALIFORNIA, COUNTY OF VENTURA
`
`PROOF OF SERVICE
`
`I am over the age of 18
`I am employed in the County of Ventura, State of California.
`years and am not a party to the within action. My business address is 2801 Townsgate Road,
`Suite 200, Westlake Village, California 91361.
`
`On May 28, 2009, I served the following documents described as APPLICANTS MOTION TO
`COMPEL DISCOVERY RESPONSES FROM OPPOSER on the interested parties in this action
`
`by placing C the original I a true copy thereof enclosed in a sealed envelope addressed as
`follows:
`
`Attorney for Opposer:
`David A. Gast
`
`Malloy & Malloy, P.A.
`2800 S.W. Third Avenue
`
`Miami, FL 33129
`
`I caused such envelope to be deposited in the mail at Westlake Village,
`BY MAIL:
`I am “readily familiar” with the office’s practice of collection and processing
`California.
`correspondence for mailing. Correspondence so collected and processed is deposited with
`the United States Postal Service that same day in the ordinary course of business.
`
`:1
`
`BY PERSONAL SERVICE: I delivered such envelope by hand to the offices of the
`
`addressee(s) listed above.
`
`1:!
`
`BY FACSIMILE: I caused the above document(s) to be transmitted to the office of the
`
`addressee(s) listed above.
`
`:1
`
`BY EXPRESS MAIL: I caused the document(s) to be delivered by overnight Express
`
`Mail via the United States Postal Service “Express Mail Post Office to Addressee” to the
`addressee(s) listed above.
`
`I declare under penalty of perjury under the laws of the State of California that the
`foregoing is true and correct.
`
`Executed on May 28, 2009, at Westlake Village, Cgifornia.
`
`%A. Ciccio
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD -
`
`Docket No: 431-74-016
`
`)
`
`) )
`
`The Deak Group, Inc.
`A Florida Corporation
`
`) Opposition No. 91,171,266
`
`[Serial No. 78/530,180]
`
`) )
`
`) ) )
`
`)
`
`Opposer
`
`v.
`
`David Joseph
`An individual
`
`Applicant
`
`APPLICANT’S FIRST REQUEST FOR INTERROGATORIES
`
`Applicant, David Joseph, by its attorneys, pursuant to Rule 34 of the Federal
`
`Rules of Civil Procedure, requests that Opposer, The Deak Group, Inc. answer the
`
`following interrogatories separately and fiilly in writing and under oath on or before
`
`November 28, 2006.
`
`Please read the following definitions and instructions carefully as they apply to all
`
`interrogatories, requests for production and admissions in this matter.
`
`Instructions
`
`1.
`
`In answering these interrogatories, furnish all information, however,
`
`obtained, including hearsay which is available to Opposer and information known by or
`in possession of Opposer, Opposer’s agents and attorneys, or appearing in Opposer’s
`records.
`
`2.
`
`Opposer is reminded that Opposer is under a duty to conduct a reasonable
`
`investigation in connection with Opposer’s answers, and that Opposers answers to these
`
`interrogatories must contain all information possessed by Opposer, and by Opposer’s
`agents and attorneys.
`
`3.
`
`If Opposer cannot answer the following interrogatories in full after
`
`exercising due diligence to secure the full information to do so, Opposer must state an
`
`answer to the extent possible, specifying Opposer’s inability to answer the remainder,
`
`

`
`Opposition No. 91,17l§,.
`
`.6
`
`stating whatever information or knowledge Opposer has concerning the unanswered
`
`portion and detailing what Opposer did in attempting to secure the unknown information.
`
`4.
`
`These interrogatories shall be deemed to be continuing and it is requested
`
`that Opposer serve supplementary answers as required by Rule 26(e) of the Federal Rules
`
`of Civil Procedures.
`
`5.
`
`For the convenience of the Board and counsel, it is requested that each
`
`interrogatory be set forth immediately preceding the answer thereto.
`
`Definitions
`
`l.
`
`“Opposer” means The Deak Group, Inc., and includes its officers,
`
`directors, agents, employees, licensees, subsidiaries, associated and/or related companies,
`
`servants and attorneys and all other persons acting for or on its or their behalf.
`
`2.
`
`“Applicant’s mark” shall mean the trademark represented in U.S.
`
`Application Serial No. 78/530,180, and variations thereof with respect to stylization, font
`and color.
`
`3.
`
`“Opposer’s mark” shall mean the trademark represented in U.S.
`
`Application Serial No. 78/904,442, and any stylized version thereof.
`
`4.
`
`“Person” means any natural person, corporation, association, firm,
`
`partnership or other business or legal entity.
`
`5.
`
`“Refer” shall mean refer to, relate to, concern, support, mention, discuss,
`
`describe and/or evidence.
`
`6.
`
`7.
`
`“And” shall mean and, and/or and or.
`
`“Identify” means, when used in reference to:
`
`(a) a person: his/her full name, present or last known residence address;
`
`present or last known business address; present position, business affiliation and job
`
`description (and if the same not be known, his/her last known position, business
`
`affiliation and job description, identified as such); his/her position, business affiliation
`
`and job description at the time in question, with respect to the interrogatory involved; and
`
`with respect to each present or past employee of Opposer, the date such person began
`
`employment with Opposer and, if no longer employed, the date such employment
`
`terminated; and identification of each position held by such person with Opposer,
`
`

`
`Opposition No. 91,l71§».
`
`,6
`
`including the beginning and ending dates during which each such position was held, the
`
`title of each position, the description of the duties and responsibilities of such position,
`
`the name of the direct supervisor of such person or the name of the person to whom such
`
`person reported in each such position, and the approximate number of persons who
`
`reported in each such position, and the approximate number of persons who reported to
`
`such person in each position;
`
`(b) a company, corporation, association, partnership, or any other
`
`business or legal entity not a natural person: its full name; principal place of business,
`
`state of incorporation or judicial status;
`
`(c) a document: its character (e. g., letter, memorandum, report, etc.), its
`
`title, date, author, addressee, distributees, and number of pages, its subject matter,
`
`identification of each person Opposer has reason to believe may have kn