Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA218032
`ESTTA Tracking number:
`06/16/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91174937
`Plaintiff
`PHCP Inc.
`Robyn S. Lederman
`Cantor Colburn LLP
`55 Griffin Road South
`Bloomfield, CT 06002
`UNITED STATES
`rlederman@cantorcolburn.com
`Motion for Summary Judgment
`P. JAY hINES
`tm-dc@cantorcolburn.com
`/PJH/
`06/16/2008
`GALGROOMMSJ.pdf ( 11 pages )(272954 bytes )
`GALGROOMEXHIBITS.pdf ( 56 pages )(1106785 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91174937
`Application Serial No. '76/643,242
`Mark: GALGROOM
`Filed: July 20, 2005
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`Opposer,
`
`Applicant.
`
`PHCP Inc.,
`
`v.
`
`_
`LG International Inc.
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`Opposer, PHCP Inc., hereby moves the Board for an order, pursuant to Rule 2.I27(d) of
`
`the Trademark Rules of Practice and Rule 56(a) of the Federal Rules of Civil Procedure, granting
`
`summary judgment in its favor on the ground that no genuine issue as to any material fact exis.ts
`
`and that the mark at issue is confusingly similar as a matter of law.
`
`This motion is based upon the application file, Opposer’s U.S. Registration No.
`
`3,278,053 and related holdings, the pleadings, Applicant’s answers to written discovery (attached
`
`hereto ‘as Exhibit A), Opposer’s verified answers to Applicanfs First Set of _Interro.gatories
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`(attached hereto as Exhibit B), and the arguments presented herein.
`
`In the event that a decision on the instant motion does not dispose of the proceedings,
`
`Opposer requests -additional time for follow-up discovery.
`
`1.
`
`SUMMARY OF FACTS
`
`On July 20', 2005, Applicant, LG International Inc., filed Application Serial No.
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`76/643,242 for the mark GALGROOM in connection with “Lipstick, lip liner pencils, mascara,
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`nail polish, eye shadow, eyeliner pencils, eyebrow pencils, foundation makeup, face powders,
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`and rouges, soaps, perfume, hair shampoo, hair conditioner, hair spray, face and skin lotion,
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`toothpaste, and mouthwash," in Intemational Class 3. and “Retail store services including
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`electronic catalog services, catalog ordering services, mail order catalog services and online
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`

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`retail store services in the fields of personal health, beauty and grooming products and cosmetics,
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`and clothing and related accessories,” in International Class 35. The intent-to-use based
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`application also included goods and services in Classes 25, 44 and 45 which are not the subject
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`of this proceeding. The application was published for opposition on September 5, 2006.
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`Subsequent to obtaining an extension of time to oppose through January 3, 2007,. the Notice‘ of
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`Opposition was filed on January 3, 2007.
`
`The opposition is based upon Opposer’s common law rights in the marks MENSGROOM
`
`and MENS GROOM & Design and the following pending, approved and registered US -records:
`
`APP. SERIAL
`
`
`
`REG. N0./ REG.
`
`GOODSISERVICES i
`
`
`
`MARK
`
`
`
`
`MENSGROOM &
`73/973,431
`
`
`August 7, 2007
`June 3, 2005
`Design
`
`
`
`
`N0./FILING DATE
`
`DATE
`
`3,273,053
`
`toiletries for hair and
`
`body, namely.
`shampoos, hair
`conditioners, hair
`
`nourishers, styling
`gels, hair styling
`
`foam, pomades, hair
`
`balsam, hair spray,
`
`hair care lotions and
`
`
`emollients, scalp
`treatment, facial
`
`cleansers, facial
`
`scrubs, skin toners for
`
`the face, jskin
`
`moisturizer masks for
`
`
`the face, skin
`moisturizers for the
`
`face, night cream, eye
`
`cream, soaps for
`
`personal use, shaving
`
`cream, after shave
`
`gels, after shave
`
`lotions, ‘after shave
`
`balms, afier shave.
`
`emulsions, shaving
`
`foam, bath and
`
`shower gel,
`
`moisturizers for the
`
`

`
`MARK
`
`APP. SERIAL
`
`REG. NOJ REG.
`
`GOODSISERVICES
`
`N0./FILING DATE
`
`DATE
`
`
`
`
`
`
`
`
`
`
`
`
`body, body cream,
`body lotion, body
`scrubs, non-medicated
`foot cream, hand
`
`cream, scented oils,
`namely body oils and
`bath oils, in Class 3
`
`
`
`
`
`
`
`
`
`
`Toiletries for hair and
`body, namely,
`
`
` candles, pillar
`candles, votive
`
`candles, travel
`
`candles, in Class 4
`
`
`
`
`
`
`
`LADIESGROOM &
`Design
`
`78/652,884
`June 17, 2005
`
`2006
`
`
`
`::?:nH?:;)1:$c:t;%fi:)::f:
`NOA issued June 13,
`
`styling foam, pomade,
`
`hair putt_y, hair spray,
`hair serum, scalp
`
`treatment, hair color,
`facial cleanser,. facial
`
`toner, face mask, face
`
`moisturizer, night
`
`creme, eye creme,
`
`soap, shave creme,
`
`afier shave, after
`
`shave balm, after
`
`shave oil, shave foam,
`
`deodorant, bath and
`
`shower gel, body
`
`moisturizer, body
`
`creme, body lotion,
`
`body powder, foot
`
`creme, hand creme,
`
`fragrances, perfisme,
`
`eau de parfum, eau de
`
`toilette, cologne,
`
`scented oils;
`potpourri, in Class 3;
`
`

`
`
`APP. SERIAL
`NOJFILING DATE
`
` REG. NOJ REG.
`
`DATE
`
`
`
`GOODSISERVICES
`
`
`
`'
`
`candles, pillar
`candles, votive
`candles, travel
`candles, in Class 4
`
`
`
`
`
`78/858,827
`
`ApfiIl1,2006
`
`
`
`
`
`
`
`7-8/858,821
`
`April 11, 2006
`
`
`candles, pillar
`candles, votive
`
`candles, travel
`candles, in Class 4
`
`
`
`
`78/852,580
`
`
`
`toiletries for hair and
`
`April 3, 2006
`
`Suspended
`
`May 15, 2008
`
`
`
`body, namely,.
`shampoos, hair
`
`
`conditioners, hair
`
`nourishers, styling
`
`gels, hair styling
`foam, pornades, hair
`
`balsam, hair spray,
`hair care lotions and
`
`emollients, scalp
`
`treatment, hair color,
`
`facial cleansers, facial
`
`scrubs, skin toners for
`
`the face, skin
`
`moisturizer masks for
`
`the face, skin
`
`moisturizers for the
`
`face, night cream, eye
`
`cream, lip balm, soaps
`
`for personal use,
`
`shaving cream, after
`
`shave gels, after shave
`
`lotions, after shave
`
`balms, afier shave
`
`emulsions, shaving
`
`foam, deodorant, bath
`
`and shower‘ gel,
`
`moisturizers for the
`
`body, body cream,
`body lotion, body
`
`
`
`MARK
`
`MENSGROOM
`
`LADIESGROOM
`
`MENSGROOM
`
`

`
`MARK
`
`APP. SERIAL.
`
`REG. NO.l REG‘.
`
`GOODS/SERVICES
`
`NOJFILING DATE
`
`DATE
`
`powder, body scrubs,
`non-medicated foot
`
`
`
`
`
`cream, hand cream,
`fragrances for
`personal use, perfume-,
`
`eau de perfume, eau
`
`de toilette, cologne;
`
`potpourri, scented
`
`oils, namely perfume
`
`oils, body oils and
`bath oils, in Class 3
`
`
`
`
`
`
`LADIES GROOM
`
`
`
`78/852,558
`
`toiletries for hair and
`
`
`
`
`
`body, namely,
`April 3, 2006
`h
`h '
`Suspendfld
`:oifl1il:il)?1Sersaliair
`
`nourishers, styling
`June 6, 2008
`gels, hair styling
`
`foam, pomades, hair
`balsam, hair spray.,
`hair care lotions and
`
`emollients, scalp
`
`treatment, hair color,
`
`facial cleansers, facial
`
`scrubs, skin toners for
`
`the face, skin
`
`moisturizer masks for
`
`
`
`
`the face, skin
`moisturizers for the
`
`face, night cream, eye
`cream, lip balm, soaps
`
`for personal use,
`
`shaving cream, afier
`
`shave gels, after shave
`
`lotions, afier shave
`
`balms, after shave
`
`emulsions, shaving.
`
`foam, deodorant, bath
`
`and shower gel,
`
`moisturizers for the
`
`body, body cream,
`bod. -lotion, body
`
`
`
`

`
`APP. SERIAL
`
`REG. N0./ REG.
`
`GOODSISERVICES
`
`NOJFILING DATE
`
`DATE
`
`powder, body scrubs,
`non-medicated. foot
`
`cream, hand cream,
`fragrances for
`personal use, perfume,
`eau de perfume, eau
`de toilette, cologne;
`potpourri, scented
`oils., namely perfume
`oils, body oils and
`bath oils, in Class 3
`
`
`
`
`
`
`
`Electronic copies of the noted registrations together with status information from TARR
`
`for all listed records are attached hereto as Exhibit C.
`
`As verified in response to App1icant’s First Set of interrogatories (attached hereto as
`
`Exhibit B; see answers to Interrogatory No. 1 and No. 3), Opposer has been using the
`
`MENSGROOM and MENSGROOM & Design marks in connection with Class 3 personal
`
`grooming products since at least as early October 25, 2006.
`
`II.
`
`SUMMARY OF ARGUMENT
`
`There is no evidenti_ary conflict in this proceeding. Given the admissions of the
`
`Applicant-, no genuine issue of material fact remains. The sole issue before the Board is the
`
`likelihood of confusion between the marks MENSGROOM, MENSGROOM & Design,
`
`LADIESGROOM, LADIESGROOM & Design and GALGROOM for identical or closely
`
`related goods and services. Given the similarity of the marks-, their construction and the identity
`
`of the ‘goods and services, channels of trade and general class of consumers, it is submitted there
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`is a likelihood of confusion as a matter of law.
`
`III.
`
`ARGUMENT
`
`A.
`
`Summary Judgment I.s Appropriate In Likelihood Of Confusion Cases.
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`The Court of Appeals for the Federal Circuit has consistently reiterated that Summary‘
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`

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`Judgment is an appropriate procedural mechanism by which to decide the issue of likelihood of
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`confusion in trademark case-s. Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 4 U.S.P.Q.2d
`
`1793, 1797 (Fed. Cir. I987_); Octocom Systems, Inc. v. Houston Computer Services, Inc., 16
`
`U.S.P.Q.2d 1783 (Fed. Cir. 1990); Aries Systems Corp. v. World Book, Inc., 23 U.S.P.Q.2d 1742
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`(T.T.A.B. 1992). Accordingly, where the issue of likelihood of confusion is clear, summary
`
`judgment should be granted.
`
`B.
`
`The Marks are Confusingly Similar as a Matter of Law.
`
`Likelihood of confusion is determined by looking at the marks themselves for similarity
`
`in appearance, sound, connotation,_ and commercial impr'e'ss'ion, as well as comparing the goods
`
`or services to determine if they are related or if activities surrounding their marketing_ are such
`
`that confusion as to origin is- likely. “The fundamental inquiry mandated by See. 2-(d) goes to the
`
`cumulative effect of differences in the essential characteristics of the services and differences‘ in
`
`the marks." Interstate Brands Corp. v. Celestial Seasonings, Inc.. 198 U.S.P.Q. 151, 153 (CCPA
`
`1978). The overriding concern is to prevent buyer confusion as to the source of the goods. Miss
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`Universe, Inc. v. Miss Teen U.S.A., Inc, 209 U.S.P.Q. 698, 702-703 (N.D. GA. 1980)..
`
`The principal factual considerations pertinent to the issue of likelihood of confusion are
`
`collected in re EI. du Pont de Nemours & C0,, 177 U.S.P.Q. 563 (CCPA 1973). In the instant
`
`case, there are no material facts in dispute as to the du Pont factors. Furthermore, although
`
`some of the du Pont factors are not relevant here, the significant factors support the finding -of a
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`likelihood of confusion as- a matter of law.
`
`1. Applicanfs Mark and Opp0ser’s Mark are Nearly‘ Identical..
`
`Both Opposer’s marks and Applicant’s mark contain a reference to a general category of
`
`person (LADIES, MENS, GAL) attached to the term “Groom.” Applicant’s mark differs in
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`construction from Opposer’s_ marks only in that Opposer’s gender designations are in the
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`possessive form. Thus, the respective marks are highly similar in construction, appearance and
`
`commercial impression. Thus, when viewed in their entireties, the similarities clearly outweigh
`
`the dissimilarities.
`
`Similarity is based on an examination of the marks as a whole,_ including visual
`
`.irnpre-ssion and sound. Where, as here, the goods and services of the parties are identical or in
`
`kind, and travel in the same channels of trade where they can be encountered by the same
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`

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`purchasers, the degree of similarity between the marks under which the products or services are
`
`sold need not be as great as i.n the case of diverse or different goods‘ or services. [NB National
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`Bank v. Metrohost, Inc., 22 U.S.P.Q.2d 1585, 1588 (T.T.A.B. 1992); EC! Division ofE—Systems,
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`Inc. v. Environmental Communications, Inc_., 207 U.'S.P.Q. 443, 449 (T.T.A.B. 1980). As stated
`
`above, the only difference in construction between Opposer‘s marks and Applicant's mark is that
`
`the gender designation in Opposer’s marks contains a letter
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`Therefore, the respective marks
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`are highly similar, particularly in appearance and commercial impression.
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`2.
`
`The Goods and Services of the Applicant and the Goods and Services of the
`
`Opposer are Identical or Closely Related.
`
`The identifications of goods in International Class 3 and. the subject of the services in
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`International Class 35 in the Applicant’s application cover identical or highly related. items. For
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`example, among the identical items are shampoo, hair conditioner, hair spray, face and skin
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`lotion, soaps and perfume. The remaining respective products for lips, -eyes and grooming in
`
`lntemational Class 3 are so highly related as to clearly fall within the related goods doctrine. In
`
`re Save Venice New York, Inc., 59 USPQ2d 1778 (Fed. Cir. 2001); McCarthy on Trademarks
`
`and Unfair Competition, 4”" Ed., § 24:24, online update 2008, and cases cited therein. Thus, on
`
`the "face-of the respective records, Opposer offers, and Applicant intends to offer, toiletries and
`
`grooming products for hair and body, perfume and other related items.
`
`3.
`
`The Channels of Trade and the General Class of Customers are the. Same.
`
`Both. parties offer, or intend to offer, common consumer products. The parties are direct
`
`competitors for these types of goods and related services. Opposer has commenced on line sales
`
`and has arranged for sales in brick and mortar retail outlets (See Opposer’s verified answer to
`
`App.licant’s Inter-rogatory No. 3, attached as Exhibit B). Thus, whatever Applicant’s intentions,
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`the channels oftrade will be the same.
`
`4.
`
`Sales Conditions and Buyers are the Same
`
`The products in International Class‘ 3 being essentially the same, the.re is no difference in
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`the conditions of sale or the sophistication of the purchasers.
`
`

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`5.
`
`Third-Party Use for Similar Goo.ds and Services.
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`To the best of Opposer’s knowledge, there is no third party use of similarly constructed
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`marks in connection with goods and services identical or similar to those of the Opposer or
`
`Applicant, thereby further increasing the likelihood of confusion between Opposer’s and
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`Applicant’s marks.
`
`6.
`
`There has been No Opportunity for Actual Confusion
`
`As, by -admission, Applicant has made no use of its mark in the US_, there has been no
`
`possibility for actual confusion to arise. See Applicant’s responses to 0pposer’s First Set of
`
`Requests for Admissions No. 1 and No. 13. Thus, du Port! factors 7 and 8 regardingthe extent
`
`of actual confusion and the length of concurrent use without evidence of actual confusion are
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`inapposite or neutral.
`
`7.
`
`The Extent of Potential Confusion is Substantial.
`
`Given the near identity of the marks and the identity of the goods and services, channels
`
`of trade, and general class of customers, the potential for confiision is extremely high.
`
`C.
`
`Priority of Use is Not an Issue.
`
`As verified in response to.Applicant’s First Set of interrogatories (attached hereto as
`
`Exhibit B; see answers to Interrogatory No. 1 and No. 3), Opposer began using the
`
`MENSGROOM and MENSGROOM & Design marks in connection with its Class 3 goods at
`
`least as early as October 26, 2006. Registration No. 3,278,053 for the mark MENSGROOM &
`
`Design, issued on August 7, 2007, was filed on June 3-, "2005-, prior to Applicanfs filing date of
`
`July 20, 2005. Thus, Opposer possesses constructive use pursuant to Section 7(c) of the
`
`Trademark Act dating from June 3, 2005. Oppo_s'er’s application Serial No. 78/652,884, also
`
`covering Class 3 goods, confers constructive use priority as of filing date June 17, 2005.
`
`Further, Applicant admits that it has not made use of the subject mark, applied for on the basis
`
`intent-to~u'se' on July 20, 2005 (see Applicant’s responses to Oppo.ser’s First Set of Requests for
`
`Admissions No. 1 and No. 13).
`
`Therefore, there is no genuine issue as to priority of use.
`
`

`
`IV.
`
`CONCLUSION
`
`The undisputed evidence of record supports Opposer’s claim of a likelihood of confusion
`
`as a matter of law. There being no genuine issue as to any material fact, and it being unlikely
`
`that more evidence than is already available would reasonably be expected to change the result,
`
`Opposer’s Motion for Summary Judgment should be. granted and registration of App1icant’s
`
`mark denied.
`
`Respectfully submitted,
`
`PHCP Inc.
`
`r”"'
`
`Date:
`
`2-vAfi9_~ /6,?D0?
`
`By:
`
`'
`
`P. Ja I
`
`ine
`
`Cantor Colburn LLP
`
`1800 Diagonal Road
`Suite 510
`
`Alexandria, VA 22314
`(7.03) 236-4500 (Telephone)
`(703) 236-4501 (Facsimile)
`jhines@cantorco.lburn.com
`Attorney for Applicant
`
`

`
`CERTIFICATE OF SERVICE
`
`This hereby certifies that the foregoing MOTION FOR SUMMARY JUDGMENT was
`mailed by first class U.'S. Mail, postage pre—paid, this 16”‘ day of June, 2008, to:
`
`Peter W. Peterson
`
`DeLio & Peterson LLC
`
`12] Whitney Avenue
`New Haven, CT 065-10
`
`Attorneys for Applicant
`LG International LLC
`
`B)/Q4
`
`Denise Countiss-Lowe
`
`

`
`EXHIBIT A
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PHCP inc.
`
`Opposer
`
`v.
`
`LG international LLC
`Applicant
`
`Serial No.: 76-643242
`
`Mark: GALG ROOM
`
`Opposition No.: 91-17493?
`
`Date: January 4, 2008
`
`'&I~...—'-_r-«...e-_/5.;-..._¢si-._,
`
`APPI.ICANT'S RESPONSE TO OPPOSER'S FIRST SET OF INTERROGATORIES
`
`Applicant, LG International LLC, hereby responds to Opposer PHCP lnc.'s First Set
`
`of interrogatories in accordance with Rules 26 and 33 of the Federal Rules of Civil
`
`Procedure, as follows:
`
`GENERAL OBIECTIONS:
`
`Applicant objects to any and all requests to the extent that they purport to place
`
`upon applicant obligations beyond those allowed by the Federal Rules of Civil Procedure
`
`or 37 CFR § 2.116 et seq.
`
`Applicant objects to any and all
`
`interrogatories which require identification or
`
`production of information and documents which are protected by attorney work product
`
`and/or attorney-cli.ent privilege, or which require information from doc.uments not owned
`
`or under the control of applicant.
`
`Applicant responds herein to each and every interrogatory on the basis of its current
`
`knowledge and information and, as discovery proceeds in this case, discovery may reveal
`
`

`
`additional facts supporting applicant's positions. Accordingly, applicant reserves the right
`
`to supplement each of its responses to these requests.
`
`INTERROGATORY NO. 1:
`
`intends to introduce testimony during its
`Identify each witness from whom Applicant
`testimony period in this proceeding and state the substance of each witness‘ testimony.
`
`Response: Henry F. Burroughs, 335 North Maple Drive, Suite 373 Beverly Hills,
`California, 90210.
`(Applicant's marks and information relating to likelihood of confusion
`between applicant's marks and opposer's pleaded marks.)
`
`INTERROGATORY NO. 2:
`
`Identify each person likely" to have any information regarding the disputed facts of this
`action, what
`that
`information specifically relates to, and the like.ly scope of
`that
`information.
`
`Response: Henry F. Burroughs, 335 North Maple Drive, Suite 373 Beverly Hills,
`California, 90210.
`(Information relating to likelihood of confusion between applicant's
`marks and oppo.ser's pleaded marks.)
`
`INTERROGATORY NO. 3:
`
`Identify the person or persons most knowledgeable about Applicant's use, intent to use,
`promotion and advertisement of Applicant's Mark.
`
`Response: Henry F. Burroughs, 335 North Maple Drive, Suite 373 Beverly Hills,
`California, 90210.
`
`INTERROGATORY NO. 4:
`
`Describe all actions that Applicant has undertaken to prepare for the use of Applicant's
`Mark in trade or commerce within the United States that occurred prior to the date that
`Applicant responds to these interrogatories.
`
`Resp-onse: Applicant has filed the trademark application in issue.
`
`

`
`INTERROGATORY N0. 5:
`
`State the date that Applicant intends to begin using Applicant's Mark in trade or commerce
`within the United States.
`
`Response: No such date has been established.
`
`INTERROGATORY NO. 6
`
`Identity all products and services currently sold or offered by LG International LLC, within
`the United States.
`
`Response: None.
`
`INTERROGATORY NO. 7:
`
`identify,
`in response to Interrogatory No. 6,
`For each product and/or service identified.
`where applicable, the period(s) of time during which use of Applicant's Mark on or in
`connection therewith has occurred, if any.
`
`Response: None.
`
`INTERROGATORY NO. 8:
`
`in units and United States Dollars, of all products
`State the monthly sales, by product,
`displaying Applicant's Mark, from the first use of Applicant's Mark in trade or commerce
`within the United States through and including the date that Applicant responds to these
`interrogatories.
`
`Response: None.
`
`INTERROGATORY NO. 9:
`
`Identify all individuals involved in the selection of Applicant's Mark for use as a trademark
`by Applicant and, for each such individual, describe their involvement.
`
`Response: Henry F. Burroughs, 335 North Maple Drive, Suite 373 Beverly Hills,
`California, 90210. (Responsible for selection of applicant's mark.)
`
`

`
`INTERROGATORY NO. 10:
`
`I
`
`Identify all individuals involved in the decision to apply to register Applicant's Mark as a
`trademark with the United States Patent and Trademark Office "and,
`for each -such
`individual, describe their involvement.
`
`Response: Henry F. Burroughs, 335 North Maple Drive, Suite 373 Beverly Hills,
`California, 90210. (Responsible for decision to apply to register applicant's mark.)
`
`INTERROGATORY NO. 11:
`
`State all facts that refer or relate to any claim by Applicant that consumers "associate
`Applicant's Mark with Applicant's products or services.
`
`Response: None.
`
`INTERROGATORY NO. 12:
`
`Identify the channels of trade through which Applicant currently markets and/or intends to
`market each product or service identified in response to lnterrogatory No. 6.
`
`Response: None.
`
`INTERROGATORY NO. 13:
`
`identify the classes or types of purchasers to whom Applicant currently markets and/or
`intends to market each product and service identified in response to lnterrogatory No. 6.
`
`Response: None-.
`
`INTERROGATORY NO. 14:
`
`Identify the purpose and/or field of use for which Applicant currently markets and/or
`intends to market each product and service identified in response to lnterrogatory No. 6.
`
`Response: None.
`
`INTERROGATORY NO. 15:
`
`State all attempts by Applicant to register Applicant's Mark within the United States, and
`the results of each attempt.
`
`

`
`Response: The trademark application in issue in this oppo5.ition.
`
`INTERROGATORY NO. 16:
`
`list the author of the
`If any documents are being withheld by some sort of privilege,
`document, the recipient of the document, the date of the document, and a summary of the
`information containe.d in the document.
`
`Response: Documents dated prior to the instant opposition and for which attorney client
`and attorney work product privilege are claimed are as follows:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Author
`Reci - ient
`— —
`
`May 4, 2005
`Atty.
`Peter
`W. Henry F. Burroughs
`' Search and opinion
`
`
`Peterson
`regarding the mark
`
`
`CIALGROOM
`
`
`————
`
`
`May 11, 2005
`Atty.
`Peter
`W. Henry F. Burroughs
`Trademark -application
`Peterson
`for the mark
`
`
`GALGROOM
`
`————
`
`
`July 15, 2005
`Henry F. Burroughs
`Atty.
`Peter
`W. Trademark application
`Peterson
`for the mark
`
`
`GALCI ROOM
`——_—
`
`
`August 1, 2005
`Atty.
`Peter
`W. Henry F. Burroughs
`Trademark application
`
`
`Peterson
`for the mark
`
`
`GALG ROOM
`
`
`————
`
`
`
`May 11, 2006
`Atty.
`Peter
`W. Henry F. Burroughs
`Trademark application
`Peterson
`for the mark
`
`
`GALGROOM
`————
`
`July 20, 2006
`.Atty.
`Peter
`W. Henry F. Burroughs
`- Trademark application
`
`
`Peterson
`for the mark
`GALGROOM
`_———
`
`August 21, 2006
`Atty.
`Peter
`W. Henry F. Burroughs
`Trademark application
`
`Peterson
`for the mark
`GALGROOM
`
`
`
`
`
`
`Request for extension
` Peterson
`of time to oppose
`
`trademark application
`for the mark
`
`GALGROOM
`
`
`
`
`
`

`
`I NTERR-OGATORY. NO. 17:
`
`To the extent that Applicant's response to any of the Requests for Admissions served
`contemporaneously herewith is anything other than an unqualified admission, describe in
`detail
`the. facts upon which Applicant bases its response,
`identifying by number the
`specific request(s) for admission ‘to which the facts stated relate.
`
`Response:
`
`Admission reguest no. 2: Applicant has not yet established the distribution and marketing
`channels for the goods and services to be sold with applicant's marks, and applicant has
`no first hand knowledge of the distribution and marketing channels for the goods and
`services to be sold with opposer's marks.
`
`Admission reguest no. 3: Applicant has not yet established the intended consumers for the
`goods and services to be sold with applicant's marks, and applicant has no first hand
`knowledge of the intended consumers for the goods and services to be sold with 'opposer's
`marks.
`
`Admission reguest no. 4: Applicant has no first hand knowledge of the use, purpose or
`function for the goods and services to be sold with opposer's marks.
`
`Admission reguest no. 9: Opposer has not yet registered the mark MENSGROOM 8:
`Design.
`
`Admission reguest no. 11: Opposer has not yet registered the mark LADIESGROOM &
`Design.
`
`.Admi's.s.i0n reg uest no. 12: Opposer has not yet registered the marks. MENSGROOM 8:
`Design and LADIESGROOM & Design.
`
`Admission reguest no. 14: Applicant has no first hand knowledge of, and Opposer has not
`yet proven,
`the facts that establish likelihood of confusion between applicant's and
`opposer's marks as used on their respective goods and services.
`
`Admission reguest no. 15: Applicant has no first hand knowledge of, and opposer has not
`yet proven, the facts that establish likelihood of confusion, mistake or deception between
`applicant's and opposer's marks as used on their respective goods and services, or any
`damage or injury resulting therefrom.
`
`Admission reguest no. 16: Applicant has no first hand knowledge of, and opposer has not
`yet proven, the facts that establish likelihood of confusion, mistake or deception between
`applicant‘-s and opposer's marks as used on their respective goods and services, or any
`damage or injury resulting therefrom.
`
`

`
`INTERROGATORY NO. 18:
`
`Identify any instances in which consumers have inquired into or commented upon the
`similarity between Opposer's Mark and Applicant's Mark.
`
`Response: None.
`
`INTERROGATORY NO. 19:
`
`Identify the three (3) persons employed by or working on behalf of Applicant having the
`most knowledge of any allegations, claims, denials or admissions made in the Notice of
`Opposition and/or the Answer filed in this above-capt_ioned proceeding.
`
`Response: Henry F. Burroughs, 335 North Maple Drive, Suite 373 Beverly Hills,
`California, 90210.
`
`INTERROGATORY NO. 20':
`
`Identify all communications with any third p_arty, other than counsel, regarding the
`Applicant's Mark, Opposer's Mark or
`the
`instant proceeding, and describe the
`communication.
`
`Response: None.
`
`INTERROGATORY NO. 21:
`
`Identify any communications with third parties, other than counsel, regarding the use
`and/or registration of Applicant's Mark, and describe the communication, including, but
`not limited to,_license agreements, settlement agreements, coexistence agreements and
`consents and, if so, identify each such person or entity and the date of .such agreement.
`
`Response: None.
`
`INTERROGATORY N0. 22:
`
`State when and under what circumstances Applicant first became aware of Opposer's
`Mark.
`
`Response-: Applicant first became aware of the trademark applications filed by opposer for
`the marks. MENSGROOM and LADIESGROOM following receipt of the requests for
`
`

`
`extension of time to file the oppositions filed by opposer against applicant's marks
`GUYGROOM, GIRLGROOM and GALGROOM.
`
`INTERROGATORY NO. .23:
`
`Identify all investigations or studies that Applicant has ever conducted or had conducted
`concerning use of the mark GALGROOM or any marks comprised of or containing the
`term GALGROOM, GUYG-ROOM or GIRLGROOM by persons other than Applicant by
`stating for each investigation the following:
`
`(a)
`
`lb)
`
`The result of the investigation; and
`
`The persons responsible for conducting the investigation and preparing the
`results of the investigation.
`
`Response: a) The trademark search reports and opinions dated May 4, 2005 for the marks
`GALGROOM, GUYGROOM or GIRLGROOM, and b) conducted by Thomson 8:
`Thomson and prepared by Attorney Peter W. Peterson.
`
`INTERROGATORY NO. 24:
`
`State the basis for Applicant's denial of the allegations in Paragraph 3 of its Answer to
`Opposer's Notice of Opposition.
`
`Response: Applicant has no first hand knowledge of the truth of the -allegations contained
`in paragraph 3 of opposer‘s Notice of Opposition.
`
`INTERROGATORY NO. 25:
`
`State the basis for Applicant's denial of the allegations in Paragraph 4 of its Answer to
`Opposer's Notice of Opposition.
`
`Response: Applicant has no first hand knowledge of the. truth of the allegations contained
`in paragraph 4 of opposer‘s Notice of Opposition.
`
`INTERROGATORY NO. 26':
`
`State the basis for Applicant's denial of the allegations in Paragraph 5 of its Answer to
`Opposer's Notice of Opposition.
`
`Response: Applicant has no first hand knowledge of the truth of the allegations contained
`in pa_r'agr'aph 5 of opposer‘s Notice of Opposition.
`
`

`
`INTERROGATORY NO. 27:
`
`State the basis for Applicant's denial of the allegations in Paragraph 6 of its Answer to
`Opposer's Notice of Opposition.
`
`Response: Applicant has no first hand knowledge of the truth of the allegations contained
`in paragraph 6 of opposer's Notice of Opposition.
`
`INTERROGATORIES NO. 28:
`
`State the basis for Applicant's denial of the allegations in Paragraph 8 of its Answer to
`Opposer's Notice of Opposition.
`
`Response: Applicant has no first hand knowledge of the truth of the allegations contained
`in paragraph 8 of opposer's Notice of Opposition.
`
`INTERROGATORY NO. 29:
`
`State the .basis for Applicant's denial of the allegations in Paragraph 9 of its Answer to
`Opposer's Notice of Opposition.
`
`Response: Applicant has no first hand knowledge of the truth of the-allegations contained
`in paragraph 9 of opposer's Notice of Opposition, and applicant believes that there. is no
`likelihood of confusion between applicant's mark and opposer's marks for the respective
`goods and services of the parties so as to cause damage and injury to opposer.
`
`INTERROGATORY NO. 30:
`
`State the basis-for Applicant's denial of the allegations in Paragraph 10 of its Answer to
`Opposer's Notice of Opposition.
`
`Response: Applicant has. no first hand knowledge of the truth of the allegations contained
`in paragraph 9 of opposer's Notice of Opposition, and applicant believes that there is no
`likelihood of confusion between applicant's mark and opposer's marks for the respective
`goods and services of the parties so as to cause damage and injury to opposer.
`
`INTERROGATORY N 0. 31:
`
`State the basis for Applicant's denial of the allegations in Paragraph 11 of its Answer to
`Opposer's Notice of Opposition.
`
`

`
`Response: Applicant had no knowledge of opposer's pleaded marks or applications at the
`time it filed its trademark application in issue on July 2-0, 2005.
`
`I NTERROGATORY N O. 32.:
`
`Identify all persons who participated or assisted in responding to these lnterrogatories and,
`for each person, describe their involvement.
`
`Response: Henry F. Burroughs, 335 North Maple Drive, Suite 373 Beverly Hills,
`California, 90210.
`(Participated or assisted in responding to these interrogatories.)
`
`Date: January 4, 2008
`
`LG International LLC
`
`By:
`Peter W. Peterson
`
`DeLl0 8: PETERSON LLC,
`121 Whitney Avenue
`New Haven, CT 06510
`Tel: 203-787-0595
`
`Fax: 203-787-5818
`
`Attorneys for Applicant
`LG International LLC
`
`10
`
`

`
`VERIFICATION OF RESPONSES
`
`1, Henry F- Burroughs, President of LG international LLC, declare under penalty of
`
`perjury that I have read the foregoing AFPl.lO\NT'.S RESPONSE TO OPPOSETS FIRST
`
`5!! OF INTEIIOCATORIES, and believe that the responses provided hérein-are correct to
`
`the best of my knowledge and belief. .
`
`Dated:‘
`
`'
`
`‘D3
`
`By}
`
`Hen
`
`-‘L
`
`F. Burr ug s
`
`'
`
`D
`
`11.,
`
`

`
`CERTIFICATE OF SERVICE
`
`This hereby certifies that the foregoing APPl.lCANT'S RESPONSE TO 0PPOSER'S
`
`FIRST SET OF INTERROGATORIES was mailed by first class U.S. Mail, postage pre-paid,
`
`this 4th
`
`day of January, 2008., to:
`
`Robyn S. Lederman
`Cantor Colburn LLP
`
`201 W. Big Beaver Road, Suite 1101
`Troy, Michigan 48084
`
`Attorney for Opposer PHCP, Inc.
`
`By:
`
`Peter W. Peterson
`
`lgin901resp_rogs.doc
`
`12
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PHCP Inc.
`
`Opposer
`
`v.
`
`LG International LLC
`Applicant
`
`Serial No.: 76-643242
`
`Mark: GALGROOM
`
`Opposition No.: 91-17493?
`
`Date: January 4, 2008
`
`'-—v‘-.d*—.4N_r-../~._a-._—-.._a-._,
`
`APPL|CANT'S RESPONSE TO OPPOSER'S FIRST SET OF REQUESTS FOR ADMISSIONS
`
`Applicant, LG International LLC, hereby- responds to Opposer PHCP |nc.'s First Set
`
`of Requests for Admissions in accordance with Rules 26 and 36- of the Federal Rules of
`
`Civil Procedure, as follows:
`
`GENERAL OBJECTIONS:
`
`Applicant objects to any and all requests to the extent that they purport t