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`Part _/__ of __2_
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`I
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`B
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`In the matter of Opposition No.: 91174800
`For the Mark: Ergo Star and Design
`Publication Date: August 29,2006
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`Application Number: 78781372
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`THE STARFIELD GROUP, INC., a Missouri
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`Corporation,
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`'
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`Opposer
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`V.
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`ERGO STAR, INC., a California
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`Corporation
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`Applicant.
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`OPPOSER'S MOTION AND INCORPORATED MEMORANDUM OF LAW
`IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT
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`Opposer, The Starfield Group, Inc. (hereinafter "Opposer or The Starfield Group, lnc.')
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`hereby submits this Motion and Incorporated Memorandum of Law in Support of its Motion for
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`Summary Judgment pursuant to Federal Rule of Civil Procedure 56(a).
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`‘I. INTRODUCTION
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`This case presents an ideal situation for summary judgment. There are only a few
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`material facts which require consideration the Board. These facts, which are not in dispute,
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`provide the basis for judgment as a matter of law. Accordingly, the Board should consider these
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`simp1e—undisputed facts, and find that summary judgment is not only appropriate, but mandated
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`in these circumstances.
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`07-20-2007
`U.S. Pavenz&TMOfcfI'M Mail Rcr.tDt #34
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`II. STATEMENT OF‘ UNDISPUTED FACTS
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`1. Opposer has first use of the ergostar trademark in commerce and interstate commerce. See true
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`and correct copy of Opposer’s Supplemental Response to Applicant’s First Set of Requests for
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`Production of Documents supplemental responses Nos. 7, 13 attached as Exhibit A, hereto.
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`2. Opposer first used the trademark ergostar in commerce on Application goods on February 12,
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`1997. See true and correct copy of Opposer’s Supplemental Response to Applicant’s First Set of
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`Requests for Production of Documents supplemental responses Nos. 8, 9 attached as Exhibit A,
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`hereto.
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`3. Applicant's Trademark Application is for ergo star and design and claims first use in
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`commerce of December 7, 2005. See a true and correct copy of the TESS printout for U.S. App.
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`No. 78/781372 from www.tess2.uspto.gov as printed on July 2, 2007 attached as Exhibit B,
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`hereto. See a true and correct copy of Supplemental Response to Opposer’s First Set of Requests
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`for Production of documents to Applicant Ergo Star, Inc. supplemental responses Nos. 2 and 3
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`attached as Exhibit C, hereto.
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`4. Both parties sell application goods. See a true and correct copy of Opposer’s Supplemental
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`Response to Applicant’s First Set of Requests for Production of Documents supplemental
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`responses Nos. 8, 9 and 12 attached as Exhibit A, hereto. See a true and correct copy of the
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`TESS printout for U.S. App. No. 78/781372 from www.tess2.uspto.goV as printed on July 2,
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`2007 attached as Exhibit B, hereto. See a true and correct copy of Supplemental Response to
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`Opposer’s First Set of Requests for Production of documents to Applicant Ergo Star, Inc.
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`supplemental responses No. 12, 16 attached as Exhibit C, hereto.
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`5. Opposer has used the mark ergostar continuously from first use through current date and
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`intends to continue the use of the mark. See a true and correct copy of Opposer’s Supplemental
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`Response to Applicant’s First Set of Requests for Production of Documents supplemental
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`response No. 10 attached as Exhibit A, hereto.
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`6. The marks ERGO STAR and ERGOSTAR are virtually identical. The former is two words,
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`whereas the latter is one compound word. Compare a true and correct copy of the TESS printout
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`for U.S. App. No. 78/781372 from www.tess2.uspto.gov as printed on July 2, 2007 attached as
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`Exhibit B, hereto and a true and correct copy of the TESS printout for registration 2144286
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`(cancelled) from www.tess2.uspto.gov as printed on July 2, 2007 attached as Exhibit D, hereto.
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`Compare a true and correct copy of Opposer’s Supplemental Response to Applicant’s First Set of
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`Requests for Production of Documents supplemental response No. 28 attached as Exhibit A,
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`hereto and a true and correct copy of Supplemental Response to Opposer’s First Set of Requests
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`for Production of documents to Applicant Ergo Star, Inc. supplemental response No. 23 attached
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`as Exhibit C, hereto. Compare true and correct printouts from the www.ergostar.com web site
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`the www.ergostar.net web site as printed on the 4”‘ of July 2007 attached as Exhibit E, hereto.
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`7. Both parties advertise extensively on the Internet. See true and correct printouts from the
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`Opposer’s www.ergostar.com web site the Applicant’s www.ergostar.net web site as printed on
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`the 4”‘ of July 2007 attached as Exhibit E, hereto.
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`8. Extensive confusion has occurred. See true and correct copies of e-mails from consumers sent
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`to Opposer printed from Opposer’s e-mail system on July 4"‘, 2007 attached as Exhibit F, hereto.
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`Applicant contributes to confusion using compound mark on their web site. See true and correct
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`printouts from the www.ergostar.com web site the www.ergostar.net web site as printed on the
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`4”‘ of July 2007 attached as Exhibit E, hereto. Applicant’s vendors are confused about
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`Applicant’s web address. See true and correct copies of e-mails from App1icant’s vendors or
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`potential vendors Opposer printed from Opposer’s e-mail system on July 4”‘, 2007 and July 14,
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`2007 attached as Exhibit G, hereto. Opposer does not have the ability to determine which of the
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`mis—directed e-mails from App1icant’s vendors or potential vendors Applicant might consider
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`confidential, therefore Opposer is treating all such documents as confidential. Applicant’s
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`resellers are confused. See true and correct copies of Applicant’s Reseller’s web sites printed
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`July 4, 2007 attached as Exhibit H, hereto. The depth of confusion has been captured by Internet
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`Spammers, or senders of Internet junk mail, to the extent that Opposer is now receiving large
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`quantities ofjunk mail intended for Applicant’s employee Sitha Kosasih (Sitha). See true and
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`correct copies of e-mails from Spammers Opposer printed from Opposer’s e-mail system on July
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`4”‘, 2007 and July 14, 2007 attached as Exhibit 1, hereto.
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`9. Applicant has not limited its application to specific trade channels. See a true and correct copy
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`of the TESS printout for U.S. App. No. 78/781372 from www.tess2.uspto.goV as printed on July
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`2, 2007 attached as Exhibit B, hereto.
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`III. DISCUSSION
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`A. STANDARD OF REVIEW FOR RULE 5(c2 MOTION FOR SUMMARY
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`JUDGEMENT
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`Summary judgment, pursuant to Federal Rule of Civil Procedure 56(c), is appropriate if the
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`pleadings, depositions, and admissions on file, together with the affidavits, if any, show that
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`there is no genuine issue as to any material fact and that the moving party is entitled to a
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`judgment as a matter of law. Fed.R.Civ.P. 56(c); Pure Imagination, Inc. v. Pure Imagination
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`Studios, Inc., 2004 WL 2222269,2 (N .D.I1l. 2004) (citing Celotex Corp. V. Catrett, 477 U.S.
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`317, 322-23 (198)). The party moving for summary judgment bears the burden of proving that
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`there are no genuine issues of material fact. Id Thus, the Opposer, as the moving party,_bears the
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`burden of proving that there is no issue of material fact that a likelihood of confusion exists
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`between the mark of the Applicant and that of the Opposer. Old Grantian Co. v. William Grant
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`& Sons Ltd, 53 C.C.P.A. 1257, 1260,361 F.2d 1018, 1021 (C.C.P.A. 1966).
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`B. OPPOSER HAS ESTABLISHED PRIOR USE OF THE ERGOSTAR MARK
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`In order to succeed in this opposition, Opposer must establish priority rights in its
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`trademark. See, Herbko Intern., Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162 (Fed. Cir. 2002).
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`These proprietary rights may arise from a prior registration, prior trademark or service mark use,
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`prior use as a trade name, prior use analogous to trademark or service mark use, or any other use
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`sufficient to establish proprietary rights. Id.
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`A dispute between parties over the right to use an unregistered mark requires a
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`determination of priority of appropriation. Priority is determined by "the first actual use of [the]
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`mark in a genuine commercial transaction." Emergency One, Inc. v. Am. Fire Eagle Engine Co.,
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`332 F.3d 264, 267 (4th Cir. 2003) (quoting Allard Enters., Inc. V. Advanced Programming Res.,
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`Inc., 146 F.3d 350,358 (6th Cir. 1998) internal quotations omitted). Thus, an exclusive right to
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`use the disputed trademark belongs to the party "who first uses it in connection with specified
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`goods." Id. at 268. The first or "senior" user, may then appropriate and use a particular mark to
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`the exclusion of any subsequent or "junior" users. Id.
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`Here, it is undisputed that Opposer has priority rights. Opposer has established that it used the
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`ERGOSTAR trademark at least as early as November 26, 1996. See true and correct copy of
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`Opposer’s Supplemental Response to Applicant’s First Set of Requests for Production of
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`Documents supplemental responses No. 7 attached as Exhibit A, hereto.
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`Moreover, even prior to these sales, Opposer has used the ergostar mark. Opposer duly disclosed
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`its date of first use on its U.S. trademark Registration no. 2144286 (cancelled). See true and
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`correct copy of Opposer’s Supplemental Response to Applicant’s First Set of Requests for
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`Production of Documents supplemental responses No. 7 attached as Exhibit A, hereto.
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`Applicant has not contested this date of first use. This is an undisputed fact.
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`Applicant's first use of the ergo star mark occurred over eight years after Opposer's date of first
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`use. Applicant's earliest recorded sale of a ergostar brand product in the United States is dated
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`February 26, 2005. See a true and correct copy of Supplemental Response to Opposer’s First Set
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`of Requests for Production of Documents to Applicant Ergo Star, Inc. supplemental response
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`Nos. 2 attached as Exhibit C, hereto.
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`C. LIKELIHOOD OF CONFUSION
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`Having established rights of priority, the inquiry turns towards a likelihood of confusion
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`analysis. In accordance with § 2(d) of the Lanham Act, the Patent and Trademark Office (PTO)
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`may refuse to register a trademark if it "so resembles" a trademark previously used in the United
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`States by another "as to be likely, when used on or in connection with the goods of the applicant,
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`to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § l052(d) (2000). In
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`determining likelihood of confusion, the United States Patent and Trademark Office Trademark
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`Trial and Appeal Board (TTAB) focuses on whether consumers would mistakenly assume that
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`the Applicant's goods emanate from the same source as, or are associated with, the goods in the
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`cited applications. This determination is made on a case-specific basis, by analyzing all of the
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`probative facts in evidence that are relevant to the factors set forth in In re E. I. DuPont de
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`Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In re Miriam Jacob and Norma
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`Sawdy, 2004 WL 3060185,3 (TTAB 2004). These factors include: (1) the similarity or
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`dissimilarity of the marks in their entireties as to appearance, sound, connotation, and
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`commercial impression; (2) the similarity or dissimilarity and nature of the goods; (3) the
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`similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions
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`under which and buyers to whom sales are made, i.e. "impulse" v. careful, sophisticated
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`purchasing; (5) the fame of the prior mark; (6) the number and nature of similar marks in use on
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`similar goods; (7) The nature and extent of any actual confusion; (8) the length of time during
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`and the conditions under which there has been concurrent use without evidence of actual
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`confusion; (9) the variety of goods on which a mark is or is not used; (10) the market interface
`between the applicant and the owner of a prior mark; ( 1 1) the extent to which applicant has a
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`right to exclude others from use of its mark on its goods; (12) the extent of potential confusion;
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`and (13) any other established fact probative of the effect of use. See, In re E. I. DuPont de
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`Nemours & C00, 476 F.2d 1357.
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`No single factor of the likelihood of confusion test is dispositive and a varying range of
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`significance may be attributed to each of the factors depending on the facts presented. CAE, Inc.
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`v. Clean Air Engineering, Inc., 267 F.3d 660, 678 (7th Cir. 2001). Furthermore, the TTAB is not
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`required to analyze each of the thirteen DuPont factors in every case. In re Dixie Restaurants,
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`105 F.3d 1405, 1406-1407 (Fed. Cir. 1997). Rather, it need only consider a factor when there is
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`evidence of record on the issue and any one factor may control a particular case. Id at 1406,
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`1407.
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`All doubt must be resolved against the second comer, as "[o]ne who adopts a " mark
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`similar to another already established in the marketplace does so at his peril." Sally Beauty Co. v.
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`Beautyco, Inc., 304 F.3d 964,973 (10th Cir. 2002) quoting Beer Nuts, Inc. v. Clover Club Foods,
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`Co., 711 F.2d 934,941 (10th Cir. 1983) (citations and quotation omitted).
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`1. The Most Important DuPont Factors: Similarity of the
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`Marks and Similarity of the Goods Favor Ogposer
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`In the context of the likelihood of confusion analysis, the two central considerations are
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`the similarities between the marks and the similarities between the goods. In Re Miriam Jacob
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`and Norma Sawdy, 2004 WL 3060l85,3 (TTAB 2004).
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`In determining similarity of marks, for the purpose of infringement analysis, three axioms
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`apply: "(1) marks should be considered in their entirety and as they appear in marketplace; (2)
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`similarity is best adjudged by appearance, sound, and meaning; and (3) similarities weigh more
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`heavily than differences." Edge Wireless, LLC v. US. Cellular Corp., 312 F.Supp.2d 1325, 1330
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`(D.Or. 2003). Courts have noted explicitly the importance of the sound of a protected mark, or of
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`the dominant terms in a trademark. Forum Corp. ofNorth America v. Forum, Ltd, 903 F.2d
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`434,440 (7th Cir. 1990). The overall impression that the marks create, as well as any memorable
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`feature of a mark should be considered in analyzing likelihood of confusion. Corbitt Mfg. Co. V.
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`GSO Am., 1110., 197 F. Supp. 2d 1368,1375 (D. Ga. 2002); Id.; Henri’s Food Prod. v. Krafl, Inc.,
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`717 F.2d 352,356 (7th Cir. 1983); Blumenfeld Dev. Corp. v. Carnival Cruise Lines, Inc., 669 F.
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`Supp. 1297 (E.D.Pa. 1987).
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`Applying the above-mentioned criteria, it is evident that the Applicant's ERGO STAR
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`mark is more than similar to Opposer's ERGOSTAR mark; the two marks are nearly identical.
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`Both marks are comprised of the words ‘ergo’ and 'star' in capital letters and in the same order.
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`The only visual difference between the marks is that Applicant's mark is comprised of two
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`separate words, whereas Opposer's mark is one compound word. This minute distinction is easily
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`overshadowed by the sound of the marks. Both marks have identical pronunciation. The space in
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`Applicant’s mark, or even when used with the design element of the star, will not be perceived
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`by a listener and thus cannot constitute a difference in sound between the marks.
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`As both marks are comprised of the same English words, both marks share the same
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`meanings. The Federal Circuit has held that "when word marks are identical but neither
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`suggestive nor descriptive of the goods associated with them, the first DuPont factor weighs
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`heavily against the applicant. In re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003)
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`(citing In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566,223 USPQ 1289, 1290
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`(Fed. Cir. 198)). In sum, the marks look alike, they sound identical, and the have the same exact
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`meanings. As such, the similarity of marks factor favors the Opposer .
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`a. Similarity of the Products
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`"The rights of an owner of a. ...trademark extend to any goods related in the minds of
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`consumers in the sense that a single producer is likely to put out both goods." Keystone Consol.
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`Indus. V. Midstates Distrib. Co., 235 F. Supp. 2d 901, 909 (D. 111., 2002) (quoting E.Remy &
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`Martin Co. S.A. v. Shaw-Ross International Imports, Inc., 756 F.2d 1525, 1530 (11th Cir. 1985)).
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`Thus, an inquiry pertaining to product similarity, within the context of the likelihood of
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`confusion analysis, turns upon "'whether products are the kind that the public attributes to a
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`single source."' Ty, Inc. v. Jones Group, Inc.,237 F.3d 891, 899 (7th Cir.2001) (quoting
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`McGraw-Edison Co. v. Walt Disney Productions, 787 F.2d 1163, 1169 (7th Cir.1986))
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`A likelihood of confusion exists as long as the goods or services are closely related. CAE,
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`Inc. v. Clean Air Engineering, Inc., 267 F.3d 660, 679 (7th Cir. 2001). Generally, goods and
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`services are deemed "closely related" and thus cause confusion if consumers would reasonably
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`think that they emanate from the same source, or are somehow affiliated with, or sponsored by,
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`the trademark owner. Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947,958 (7th Cir.
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`1992); Seiko Kabushiki Kaisha v. Swiss Watch Intern., Inc. 188 F.Supp.2d 1350, 1354 (S.D.Fla.
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`2002); AutoZone, Inc. v. randy Corp., 174 F.Supp.2d 718,729 (M.D.Tenn. 2001).
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`Both parties use their respective trademarks on Application goods. This overlap in products,
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`in connection with the similarity in marks, is sufficiently significant to cause consumers to -
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`attribute both products to a single source. See CAB, 267 F .3d at 679-681 (holding that
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`consumers could reasonably conclude that defendant's products and services are affiliated or
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`associated with plaintiff due to the identical mark and the similarity or closely-related nature of
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`the products).
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`Having established that the marks are similar and the goods are identical, the Board may find
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`a likelihood of confusion as-a matter of law. See, In Re Miriam Jacob and Norma Sawdy, 2004
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`WL 3060185, 3 (TTAB 2004). Notwithstanding, the remaining DuPont factors favor Opposer as
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`well.
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`2. The Parties Share the Same Trade Channels
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`As an initial matter, where the descriptions of goods in trademark applications are not
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`limited to specific channels of trade or classes of customers, there is a presumption that the
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`parties share the same trade channels. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
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`F.2d 1098, 1101 (Cust. & Pat.App. 1976). This is precisely the situation here. Applicant has not
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`limited their application to certain channels of trade. See a true and correct copy of the TESS
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`printout for U.S. App. No. 78/781372 from www.tess2.uspto.gov as printed on July 2, 2007
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`attached as Exhibit B, hereto. Accordingly, Opposer is entitled to the presumption that the trade
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`channels overlap.
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`This presumption finds support in the factual record of the case. Applicant sells its
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`product through authorized retailers, many of whom exploit the online market and sell using
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`Opposer's ERGOSTAR mark over the Internet. See true and correct copies of Applicant’s
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`Reseller’s web sites printed July 4, 2007 attached as Exhibit H, hereto. In addition, Opposer
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`actively advertises its products including application goods on its website ergostar.com. See true
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`and correct copies of Opposer’s web site printed July 14, 2007 attached as Exhibit J, hereto.
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`Taking into account the nature of Applicant's and Opposer's businesses and the pervasiveness of
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`e—commerce in the modern consumer market, this factor strongly favors a likelihood of
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`confusion.
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`3. The Remaining Confusion Factors Favor Opposer
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`a. The Degree of Care Likely to be Exercised by Consumers
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`The degree of care likely to be exercised by consumers is properly assessed by
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`considering both parties’ potential consumers. CAE, Inc. v. Clean Air Engineering, Inc., 267 F.3d
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`660, 683 (7th Cir.2001). However, customer sophistication does not equate to trademark
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`sophistication. Kos Pharms., Inc. v. Andrx Corp., 369 F.3d 700, 717 (3d Cir. 2004); Fuji Photo
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`Film Co. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591,596 (5th Cir. 1985). Rather, the
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`almost identical nature of the marks and the similarity of the products to which the parties attach
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`these marks (both parties sell ergonomic office chairs and other products) make it highly likely
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`that even an informed and sophisticated consumer will mistakenly attribute the parties‘ products
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`to a common source. CAB at 682 (7th Cir. 2001).
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`b.The Record Reflects a Likelihood of Post-Sale Confusion
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`In addition to point-of-sale confusion, the Lanham Act also applies to "post-sale confusion" of
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`potential purchasers. Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 381 (7th Cir. 1996)
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`(citing Lois Sportswear, U.S.A., Inc. v. Levi Strauss & C0., 799 F.2d 867 (2d Cir. 1986). In this
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`context, the Act seeks to prevent a potential consumer catching a glimpse of Applicant's ergo star
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`mark and mistakenly associating the product with Opposer's ergostar product line, thereby
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`influencing his buying decision, either positively or negatively. Id. at 382. Such an association
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`would constitute infringement of Opposer's trademark. CAB, 267 F .3d at 683. Hence, in this
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`instance, it is likely that consumer sophistication will not diminish the likelihood of confusion.
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`c. The Number and Nature of Similar Marks in Use on Similar Goods
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`A search of the Patent and Trademark Office Database reveals only four claims to the ergostar,
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`ergo star, ergo-star mark. These two claims are those of Applicant and Opposer. Applicant
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`cannot demonstrate the existence of numerous third party users of the ergostar mark which could
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`weaken Opposer's mark. This clearly favors Opposer.
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`d. The Extent of Potential Confusion
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`The potential for confusion is great in light of the indistinguishable nature of the parties‘ marks
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`and products. Both parties sell timepieces under almost identical marks. There can be no doubt
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`as to the potential for confusion.
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`e. The Extent of Actual Confusion
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`Opposer has provided numerous examples of actual confusion. There is post sale confusion by
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`consumers. See true and correct copies of e-mails from consumers sent to Opposer printed from
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`Opposer’s e-mail system on July 4"‘, 2007 attached as Exhibit F, hereto. The confusion by
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`Applicant’s resellers. See true and correct copies of Applicant’s Reseller’s web sites printed July
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`4, 2007 attached as Exhibit H, hereto. There is confusion on the part of the Applicant on which
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`form of the mark it has applied for and will use ergo star or Opposer’s ergostar trademark. See
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`true and correct printout from the Applicant’s web site www.ergostar.net home page as printed
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`on the 4"‘ of July 2007 attached as Exhibit E, hereto.
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`4. The Sum of the Likelihood of Confusion Factors and Actual Confusion
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`Indisgutably Favor Opposer
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`The above analysis of the relevant factors supports Opposer's contention that no genuine
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`issue of material fact exists. Taking into consideration the undisputed facts, a likelihood of
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`confusion and actual confusion most certainly exists and Applicant has not provided any
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`evidence to the contrary. As Opposer is the senior user of the mark, its Motion for Summary
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`Judgement should be granted and Applicant's application should be denied for "one entering a
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`field occupied by another has a duty to select a trademark that will avoid confusion." Forum
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`Corp. ofNorth America v. Forum, Ltd., 903 F.2d 434,440 (7th Cir. 1998). A second user
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`entering the market has a duty to avoid confusion in its choice of a trademark, and that
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`responsibility includes selecting "a mark whose salient portion would not likely be confused with
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`a first user's mark." Id.
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`IV .CONCLUSION
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`For the forgoing reasons, Opposer respectfully requests that its Motion for Summary Judgment
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`be granted, and U.S. Serial No. 78/781372 be refused registration.
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`Dated: July 16, 2007
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`Respectfully submitted,
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`
`
` Keith Stubblefield,
`ice Presid nt
`Pro se
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`The Starfield Group, Inc.
`807 Laurel Avenue
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`Liberty, MO 64068
`PH: 800-987-9074
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`FX: 816-792-5522
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`Starfield@ergostar.com
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify thata copy of the foregoing Opposer's Motion for Summary Judgment has been
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`served via first class mail, in a sealed envelope, postage prepaid on Applicant this 16th day of
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`July, 2007 to:
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`FREDERICK GOTHA
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`Attorney for Applicant
`Law offices of Frederick Gotha
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`80 South Lake Ave., Suite 823
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`Pasadena, CA 91 101
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`
`
`Pro se
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`The Starfield Group, Inc.
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`Exhibit A
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`In the matter of Opposition No.: 91174800
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`For the Mark: Ergo Star and Design
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`Publication Date: August 29,2006
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`Application Number: 78781372
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`OPPOSER'S SUPPLEMENTAL RESPONSE TO APPLICANT'S
`FIRST SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS
`[1-30]
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`377 Pages total
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of Opposition No.: 91 174800
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`For the Mark: Ergo Star and Design
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`Publication Date: August 29, 2006
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`Application Number: 78781372
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`THE STARFIELD GROUP, INC., a Missouri
`Corporation,
`.
`
`Opposer
`
`V.
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`ERGOSTAR, INC., a California
`Corporation
`
`Applicant.
`
`Opposition No.: 91 174800-
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`OPPOSER’S SUPPLEMENTAL RESPONSE TO
`APPLICANT'S FIRST SET OF
`REQUESTS FOR PRODUCTION OF
`DOCUMENTS [l -30]
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`APPLICANT'S FIRST SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS TO
`OPPOSER
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`Pursuant to 37 C.F.R. § 2.120 (d)(2) and rule 34 of the Federal Rules of Civil Procedure,
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`Applicant requests Opposer to produce for inspection and/or copying the following documents at
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`the offices of the undersigned, or at such other place as mutually agreed upon by the parties, on
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`or before thirty (30) days after service. Opposer is required to produce the documents in the
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`manner described in Fed. R. Civ. P. 34(b).
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`DEFINITIONS AND INSTRUCTIONS
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`1. "The Starfield Group, Inc.," "YOU", "YOUR" and "OPPOSER., refer to The
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`Starfield Group, Inc, and all persons or entities acting or purporting to act on behalf of or
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`who are subject to the direction or control of OPPOSER, including, without limitation, its
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`predecessors or successors in interest, its attorneys, officers, directors, agents and
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`employees.
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`2 As used herein, the mark "Ergo Star and Design" shall mean the mark applied for in
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`Applicant's Application Serial No.7878 1 372.
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`3. As used herein, the mark "Ergostar" shall mean the mark which is the subj ect ‘of
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`OPPOSER'S cancelled Registration No.2l44286.
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`4. As used herein, the singular form of a noun or pronoun will include within its
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`meaning the plural form of that noun or pronoun, and vice versa; the use of the masculine
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`form of a pronoun will include within its meaning the feminine form of the pronoun, and
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`vice versa; the use of the tense of any verb will include all other tenses of the verb so
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`used; and the use of "and" will include "or" and vice versa.
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`5 When used in the following requests for production, the words " Application Goods"
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`refers to "Office Furniture; namely, chairs" as recited in United States Trademark
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`Application No.7878 1372.
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`6. The terms "SALE", "SALES", "SELL " or "SOLD" shall include sales, licenses,
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`leases, and all other methods of product distribution whether direct or indirect.
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`7. The term "DOCUMENT" or "DOCUMENTS" as used herein shall be defined to
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`the broadest extent permitted by Rule 34 of the Federal Rules of Civil Procedure
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`and by the Federal Rules of Evidence and include, whenever applicable, the
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`originals (absent any original, a copy) of any recordation of any intelligence or
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`information (whether handwritten, typed, printed or otherwise visually or orally
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`reproduced) in YOUR possession, custody or control or known to YOU, whether
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`or not prepared by YOU. The following items, as well as any other recordations
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`qualifying under the general descriptions contained in this paragraph, constitute
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`DOCUMENTS: all records kept by electronic, photographic, mechanical or
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`computer means (including without limitation E-mails, photographs, microfilm,
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`movie film, slides, videotapes, sound reproductions and actual or computer
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`produced interpretations of punch cards, magnetic tape or wire, and all additional
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`data processing discs or tapes), letters, compilations, data, notebooks, work papers,
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`graphs, charts, blueprints, books, pamphlets, brochures, circulars, manuals,
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`instructions, ledgers, drawings (including engineering, assembly, and detail
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`drawings), sketches, diaries, sales literature, advertising literature, expense
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`vouchers or receipts, calendars, appointment books, purchase orders,
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`acknowledgments, invoices, agreements, minutes of meetings, and summaries or
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`records of telephone conversations, personal conversations, or interviews. As used
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`herein, the term "DOCUMENT" shall also include objects of every kind and
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`nature such as, but not limited to, models, samples, prototypes and commercial
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`units, in each case, whether complete or not, or functional or not. When any
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`original, draft, copy or reproduction of any DOCUMENT has been revised or
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`altered to include any postscripts, notation, change, amendment or addendum not
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`appearing on said DOCUMENT itself as originally written, typed or otherwise
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`prepared, identify each such revised DOCUMENT, in addition to the original
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`DOCUMENT .
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`8. The designation "person" or "party" refers to and includes any natural person,
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`as well as any juristic person (e.g., corporation) or any business entity (e. g.,
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`partnership or joint venture) and his, her, its or their officers, agents and
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`employees.
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`9. The term "IDENTIFY" shall mean, with respect to a
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`DOCUMENT, to state all of the following information:
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`(a)
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`The date appearing on such DOCUMENT, and if no date appears
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`thereon, the answer shall so state and shall give the date or approximate date the
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`DOCUMENT was prepared;
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`(b)
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`The identifying or descriptive code number, file number, title or
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`label of the DOCUMENT;
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`(c)
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`The general nature or description of the DOCUMENT (i.e.,
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`whether it is a letter, memorandum, drawing, etc.) and the number of pages of
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`which it consists;
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`(d)
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`The name, business addresses, job title and responsibilities of the
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`author and each person who made any notation thereon, or has signed or initialed
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`the DOCUMENT and the person who prepared it;
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`( e )
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`The name, business address, job title and responsibility of the
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`person to whom the DOCUMENT was addressed and the name of each person
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`other than the addressee to them the DOCUMENT, or copies thereof, were given
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`or sent;
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`(I)
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`(g)
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`The general subject matter of the DOCUMENT;
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`The location(s) where the DOCUMENT has been stored and
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`identify the person having possession, custody or control of the DOCUMENT;
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`(h)
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`Whether or not any draft, copy or reproduction of the
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`DOCUMENT contains any postscript, notation, change, revision, addition,
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`deletion or addendum not appearing on said DOCUMENT itself, and if so, the
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`answer shall give the description as herein defined of each such draft, copy or
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`reproduction; and
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`(i)
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`Whether it is claimed that the DOCUMENT is privileged or attorney
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`work-product, and if so, the type of privilege claimed; whether the information
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`contained or referred to in such DOCUMENT is in the possession of any other
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`person( s ), and if so, the identity of such person( s ) and a statement of how the
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`information came into their possession; and a statement of all of the
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`circumstances upon which the OPPOSER will rely to support such claims of
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`privilege.
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`10. The term "IDENTIFY" means, with respect to any natural person, to state
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`to the extent known the following information about the person:
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`(a)
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`His or her full name;
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`(b)
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`His or her present residence and business address and if not
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`known, his or her last known address and the last known dates thereof.
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`1 1. The term “IDENTIFY" means, with respect to any entity other than a
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`natural person, to state:
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`(a)
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`The full title thereof and its state of incorporation where
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`applicable;
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`(b)
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`(c)
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`The principal place of business thereof;
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`The nature or type of entity, if known; and
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`(d)
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`The principal business thereof.
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`12. The term “REFER OR RELATE" shall mean refer, relate, summarize,
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`demonstrate, constitute, reflect, contain, study, analyze, consider, explain,
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`mention, show, discuss, describe, comment upon, or result from.
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`13.
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`"TESTIMONY PERIOD" shall mean those times throughout this
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`proceeding in which a witness is required to give testimonial evidence, whether
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`by direct examination or cross-examination.
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`14. When a request does not specifically request a particular
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`DOCUMENT, but such a DOCUMENT is necessary in order to make the
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`production in response to the request comprehensible, complete, or not
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`

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`misleading, such DOCUMENT shall be included as part of the production and the
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`request shall be deemed specifically to request such DOCUMENT .
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`15.
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`If reasonable investi