Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA218038
`ESTTA Tracking number:
`06/16/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91175116
`Plaintiff
`PHCP Inc.
`ROBYN S. LEDERMAN
`CANTOR COLBURN LLP
`55 GRIFFIN RD S
`BLOOMFIELD, CT 06002-1353
`UNITED STATES
`rlederman@cantorcolburn.com
`Motion for Summary Judgment
`P. Jay Hines
`tm-dc@cantorcolburn.com
`/pjh/
`06/16/2008
`GUYGROOMMSJ.pdf ( 11 pages )(276113 bytes )
`GUYGROOMEXHIBITS.pdf ( 56 pages )(1111649 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91 1751 16
`Application Serial No. 76/643,241
`Mark: GUYGROOM
`Filed: July 20, 2005
`
`)
`
`)
`)
`)
`)
`
`) ) )
`
`) )
`
`) )
`
`)
`
`Opposer,
`
`Applicant.
`
`PHCP lnc.,
`
`V.
`
`LG International Inc.
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`Oppo.ser, PHCP Inc., hereby moves the Board for ‘an order, pursuant to Rule 2.127(d') of
`
`the Trademark Rules of Practice and Rule 56(a) of the Federal Rules of Civil Procedure, granting
`
`summaryjudgment in its favor on the ground th-at no genuine issue as to any material fact exists
`
`and that the mark at issue is confusingly similar as a matter of law.
`
`This motion is based upon the application file, 0pposer‘s U.S. Registration No.
`
`3,278,053 a.nd related holdings, the pleadings, App1icant’s answers to written discovery (attached
`
`hereto as Exhibit A), Opposer’s verified answers to Applicant’s First Set of Interrogatories in
`
`related opposition proceeding No. 91 17493.7 (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.
`
`76/643,273 for the mark GUYGROOM in connection with “Lipstick, lip liner pencils,_ mascara,
`
`nail polish, eye shadow, eyeliner pencils, eyebrow pencils, foundation makeup, face powders,
`
`and rouges, soaps, perfume, hair shampoo, hair conditioner, hair spray, face and skin lotion,
`
`toothpaste, and mouthwash,” in International Class 3 and “Retail store services including
`
`

`
`electronic catalog services, catalog ordering services, mail order catalog services and online
`
`retail store services in the fields of personal health, beauty and grooming products and cosmetics,
`
`and clothing and related accessories,” in International Class 35. The intent-to-use based
`
`application also included goods and services in Classes 25, 44 and 45 which are not the subject
`
`of this proceeding. The application was published for opposition on September 5, 2006.
`
`Subsequent to obtaining an extension of time to oppose through January 31 2007, the Notice of
`
`Opposition was filed on January 3, 2007.
`
`The opposition is based upon Opposer’s common law rights in the marks MENSGROOM
`
`and MENSGROOM & Design and the following pending, approved and registered US records:
`
`APP. SERIAL
`
`REG. NO./ REG.
`
`GOODSISERVICES
`
`NOJFILING DATE
`
`DATE
`
`MENSGROOM&
`Design
`
`' 78/978,481
`June '3, 2005
`
`3,278,053
`August 7, 2007
`
`toiletriesforhairand
`b0d)’= 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, skin
`moisturizer masks for
`
`the face, skin
`moisturizers for the
`
`face, night cream, eye
`cream, soaps for
`personal use, shaving
`cream, after shave
`gels, after shav-e
`lotions, after shave
`
`balms, after shave
`emulsions, shaving
`foam, bath and
`
`

`
` APP. SERIAL
`N0./FILING DATE
`
`
`REG. NO.l REG.
`
`GOODS/SERVICES
`
`DATE
`
`
`
`shower gel,
`moisturizers for the
`
`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
`
`
`
`
`
`LADIE-SGROOM&
`
`78/652,884
`
`Design
`
`June 17, 2005
`
`body, namely,
`shampoo, conditioner,
`NOA issued June 13,
`hair mask, styling gel,
`
`styling foam, pomade,
`2006
`
`hair putty, hair spray,
`
`hair serum, scalp
`treatment, hair color,.
`
`
`
`
`
`facial cleanser, facial
`
`toner, face mask, face
`
`moisturizer, night
`
`creme, eye creme,
`
`soap, shave creme,
`
`after 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,
`
`fra.grance'.S. perfume,
`
`eau de parfum, eau de
`
`toilette, cologne,
`Scented oils;
`potpourri, in -Class 3;
`
` candles, pillar
`candles, votive
`
`candles, travel
`
`candles, in Class 4
`
`
`
`
`

`
`MARK
`
`APP. SERIAL
`
`REG. NOJ REG.
`
`GOODS/SERVICES
`
`NO./FILING DATE
`
`DATE
`
`
`
`candles pillar
`candles, votive
`candles, travel
`
`candles, in Class 4
`
`MENSGROOM
`
`78/858327
`April 1 1, 2005
`
`
`LADIESGROOM
`
`78/858,821
`
`
`candles. pillar
`candles, votive
`April 11, 2.006‘
`
`
`candles, travel
`
`
`candles, in Class 4
`
`
`
`
`
`MENSGROOM
`
`78/852,580
`
`
` toiletries for hair and
`April 3, 2006
`body, namely,
`
`
`shampoos, hair
`
`
`conditioners, hair
`nourishers, styling
`
`
`gels, hair styling
`
`
`foam, pomades, hair
`
`
`balsam, hair spray,
`
`
`hair care lotions and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Suspended
`May 15, 2003
`
`emollients, scalp
`treatment, hair color,
`
`facial cleansers, facial
`
`scrubs, skin toners for
`the face, skin
`moisturizer masks for
`
`the face, skin
`moisturizers for the
`
`fac-e, night cream, eye
`cream, lip balm, soaps
`for personal use,
`shaving cream, after
`shave gels, after shave
`lotions, after shave
`
`balms, after shave
`emulsions, shaving
`foam, deodorant, bath
`and shower gel,
`moisturizers for the
`
`body, bod cream,
`
`

`
`APP. SERIAL
`
`REG. NOJ REG.
`
`GOODSISERVICES
`
`NOJFILING DATE
`
`DATE
`
`LADIESGROOM
`
`78/852,558
`April 3, 2006.
`_
`Suspended
`June 6, 2003
`
`body lotion, body
`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 perfitme
`oils, body oils and
`bath oils, in Class 3
`
`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, 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, after shave
`emulsions, shaving
`foam, deodorant, bath
`and shower gel,
`moisturizers for the
`
`body, body cream,
`
`

`
`APP. SERIAL
`
`REG. NOJ REG.
`
`GOODS/SERVICES
`
`N 0./FILING DATE
`
`DATE
`
`
`
`body lotion, body
`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, i-n Class 3
`
`
`
`
`
`Electronic copies of the noted registrations together with status information from TARR
`
`for all listed records are attached hereto as E-xhibit C.
`
`As verified in response to Applicant"s First Set of Interrogatories in related opposition
`
`proceeding No. 91 l 7493'? (attached he.reto 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 evidentiary 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, LADIES.GROO'M & Design and GUYGROOM 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
`
`is a likelihood of confusion as a matter of law.
`
`111.
`
`ARGUMENT
`
`A.
`
`Summagy Judgment Is Appropriate In Likelihood Of Confusion Cases.
`
`The Court of Appeals for the Federal Circuit has consistently reiterated that Summary
`
`

`
`Judgment is an appropriate procedural mechanism by which to decide the issue of likelihood of
`
`confusion in trademark cases. Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 4 U.S.P.Q.2d
`
`1793, 1797 (Fed. Cir. 1987); 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
`
`(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 l0oking_at the marks themselves for similarity
`
`in appearance, sound, connotation, and commercial impression, 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 Sec. 2(d) goes to the
`
`cumulative effect of differences in the essential characteristics of the services and differences in
`
`the marks.” Interstate Brands Corp. 12. Ceiestial Seasonings, Inc., 198 U.S.P.Q. 15], 153 (CCPA
`
`1978). The overriding concern is to prevent buyer confusion as to the source of the goods. Miss
`
`Universe, Inc. v..Miss Teen ULS./i., Inc, 2.09 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 EJ. du Pont de Nemours & Co., 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 Pant‘ factors are not relevant here, the significant factors support the finding of a
`
`likelihood of confusion as a matter of law.
`
`1. Applicanfs Mark and O__nposer’s Mark are Nearly Identical.
`
`Both Opposcr’s marks and Applicant’s mark contain azreference to a general category of
`
`person (LADIES, MENS, GUY) attached to the term "‘Groorn.” Applicanfs mark differs in
`
`construction from 0pposer’s marks only in that Opposer’s gender de._si.gn-ations are in the
`
`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
`
`impression and sound. Where, as here, the goods and se.rvices of the parties are identical or in
`
`kind, and travel in the same channels of trade where they can be encountered by the same
`
`

`
`purchasers, the degree of similarity between the marks under which the products or services are
`
`sold need not be as great as in the case of diverse or different goods or services. INB National
`
`Bank v. Metrohost, Inc., 22 U.S.P.-Q.2d 1585, 1588 (T.T.A.B. 1992); EC! Division ofE-Systems,
`
`Inc. v. Environmental Communi-cations, Inc., 207 U.S.P.Q. 443, 449 (T.T.A.B. 1980). As stated
`
`above, the only difference in construction between 0p.poser’s m-arks and Applicanfs mark is that
`
`the ‘gender designation in Opposer’s marks contains a letter “S.” Therefore, the respective marks
`
`are highly similar, particularly in appearance and commercial impression.
`
`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 lntemational Class 3 and the subject of the services in
`
`International Class 35 in the Applicant’s application cover identical or highly related items. For
`
`example, among the identical items are shampoo, hair conditioner, hair spray, face and skin
`
`lotion, soaps and perfume. The remaining respective products for lips, eyes and grooming in
`
`international 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 Competitio-n, 4"‘ Ed, § 24:24, onlinc update 2008, and cases cited therein. Thus, on
`
`the face of the respective records, Opposer offers, and Applicant intends to offer, toiletries a_nd
`
`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 answer to Applicant’s
`
`lnterrogatory No. 3 in related proceeding No. 91174937, attached as Exhibit B). Thus, whatever
`
`Applicant’s intentions, the channels of trade will be the same.
`
`4.
`
`Sales Conditions and Buyers are the Same
`
`The products in International Class 3 being essentially the same, there is no difference in
`
`the conditions of sale or the sophistication of the purchasers.
`
`

`
`5.
`
`Th-ird-Party Use for Similar Goods and Servic.es.
`
`To the best of Opposer’s knowledge-,. there is no third party use of similarly constructed
`
`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
`
`Appl.icant’s'- marks.
`
`6.
`
`There has been No Opportunity for Actual Confusion
`
`As, by adrn.ission, 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 Opposer’s First Set of
`
`Requests for Admissions No. 1 and No. 13. Thus, du Pont factors 7 and 8 regarding the extent
`
`of actual confusion and the le-ngth of concurrent use without evidence of actual confusion are
`
`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 ofcustomers, the potential for confusion is extremely high.
`
`C.
`
`Priority of Use is Not an Issue‘.
`
`As verified in response to Applicant’s First Set of Interro-gatories in related opposition
`
`proceeding N0. 91 174937 (attached hereto as Exhibit B; see answers to Interrogatory No. l 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 A-pplieant’s filing date of July 20, 2005. Thus, Oppose-r possesses constructive
`
`use pursuant to Section 7(c) ofthe Trademark Act dating from June 3, 2005. Opposer’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-use on July 20, 2005 (see Applicant’s 're'spon'ses to
`
`Opposer’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 Opp0ser’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 Applicanfs
`
`mark denied.
`
`Date: 32‘-Lv\§..-[C7 :)0°d5
`
`Respectfully submitted,
`
`PHCP Inc.
`
`By: P-.Jay
`
`ine
`Cantor Colburn LLP
`
`1800 Diagonal Road
`Suite 510
`
`Alexandria, VA 22314
`(703) 236-4500 (Telephone)
`(703) 236-4501 (Facsimile)
`jhines@cantorcolbum.com
`Attorney for Applicant
`
`10
`
`

`
`CERTIFICATE OF SERVICE
`
`This hereby certifies that the foregoing MOTION FOR SUMMARY JUDGMENT was
`mailed by first class US. Mail, postage pre-paid, this 16"‘ day of June, 2008, to:
`
`Peter W. Peterson
`
`DeLio & Peterson LLC
`
`121 Whitney Avenue
`New Haven, CT 06510
`
`Attorneys for Applicant
`LG International LLC
`
`By: § yea,-Ea-E33 Egg)! .=§,.,,,;> '-‘&?;\t.»\,\,;\
`Denise Countiss-Lowe
`
`

`
`EXHIBIT A
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Serial No.: 76—643241
`
`)
`)
`) Mark: GUYGROOM
`)
`
`) Opposition No.: 91-175116
`)
`)
`
`Date: January 4, 2008
`
`) )
`
`PHCP Inc.
`
`Opposer
`
`v.
`
`LG International LLC
`Applicant
`
`APPLICANT’S RESPONSE TO OPPOSER'S FIRST SET OF INTERROGATORIES
`
`Applicant, LG International LLC, hereby responds to Opposer PHCP |nc.'s First Set
`
`of lnterrog-atories 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-client privilege, or which require information from documents 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:
`
`Identify each witness from whom Applicant intends to introduce testimony during its
`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 likely 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 opposer'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.
`
`Response: Applicant has filed the trademark application in issue.
`
`

`
`INTERROGATORY NO. 5:
`
`State the d_ate 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:
`
`ide.ntify,_
`For each product and/or service identified in response to lnterrogatory No. 6,
`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 N O. 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:
`
`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 N0. 11:
`
`State all facts that refer o.r relate to any claim by Applicant that consumers associate
`Applicant's Mark with Applicant's products or services.
`
`Response: None.
`
`INTERROGATORY NO. ‘[2:
`
`Identify the channels of trade through which Applicant currently markets and/or intends to
`market each product or service identified in response to Interrogatory No. 6.
`
`Response: None.
`
`INTERROGATORY NO. 1.3:
`
`Identify the c_lasses or types of purchasers to whom Applicant ..curr_ently mark.ets and/or
`intends to market each product and service identified in response to lnterrogatory No. 6.
`
`Response: None.
`
`INTERROGATORY NO. 14:
`
`Identify the purpo-se 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 N0. 15:
`
`State all attempts by Applicant ‘to register Applicant's Mark within the United States, and
`the results of each attempt.
`
`

`
`Response: The trademark app|ic.atiQn in issue in this opposition.
`
`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 contained 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:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Atty.
`Peterson
`
`Atty.
`Peterson
`
`Atty.
`Peterson
`
`Atty.
`Peterson
`
`Peter
`
`W. Henry F. Burroughs
`
`Peter
`
`W. Henry F. Burroughs
`
`Peter
`
`W. Henry F. Burroughs
`
`Peter
`
`W. Henry F. Burroughs
`
`August 1', 2005
`
`May 11, 2006
`
`July 20, 2006
`
`
`
`— A
`
`ugust 21, 2006
`
`
`
`————
`
`May 4, 2.005
`Atty.
`Peter
`W. Henry F. Burroughs
`Search and opinion
`Peterson
`regarding the mark
`
`
`GUYGROOM
`————
`
`
`May 11, 2005
`Atty.
`Peter
`W. Henry F. Burroughs
`Trademark application
`Peterson
`for the mark
`
`
`GUYG ROOM
`————
`July 15, 2005
`Henry F. Burroughs
`Atty.
`Peter
`W. Trademark application
`Peterson
`for the mark
`GUYG ROOM
`
`
`
`
`
`
`
`
`
`
`Trademark application
`for the mark
`GUYGROOM
`
`Trademark application
`for the mark
`GUYGROO-M
`
`Trademark application
`for the mark
`GUYG ROOM
`
`Trademark application
`for the mark
`GUYGROOM
`
`
`
`
`
`
`
`
`
`Request for extension
`W. Henry F. Burroughs
`Peter
`Atty.
`October 13, 2006
`
`of time to oppose
`Peterson
`
`
`trademark application
`for the mark
`GUYGROOM
`
`
`

`
`INTERROGATORY 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 requestts) for admission to which the facts stated relate.
`'
`
`Response:
`
`Admission reguest no. 2: Applicant ha.s not yet established the distribution and marketing
`chann.els 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 8:
`Design.
`
`Admission reguest no. 12: Opposer has not yet registered the marks MENSGROOM 8:
`Design and LADIESGROOM 8: 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 nofirst hand knowledge of, and opposer has not
`yet proven, the facts that establish like|i.hood of confusion, mistake or deception between
`applicant's and opposer-'5 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) pers-ons 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-captioned proceeding.
`
`Response: Henry F. Burroughs, 335 North Maple Drive, Suite 373 Beverly Hills,
`California, 90210.
`
`INTERROGATORY NO. 20:
`
`regarding the
`Identify all communications with any third party, other than counsel,
`Applicant's Mark,
`.Oppo'ser‘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, a.nd describe the communication., including, but
`not limited to,
`license -a-greernents, settlement agreements, coexistence agreements and
`consents and, if so, identify each such person or entity and the date of such agreement.
`
`Response: None.
`
`INTERROGATORY NO. 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 N0. 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, GUYGROOM or GIRLGROOM by persons other than Applicant by
`stating for each investigation the following:
`
`(a)
`
`(b)
`
`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 opp0ser'.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 paragraph 5 of 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 20, 2005.
`
`INTERROGATORY NO. 32:
`
`Identify all persons who participated or assisted in responding to these Interrogatories 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. eterson
`
`DeLIO & PETERSON LLC,
`121 Whitney Avenue
`New Haven, CT 06510
`Tel: 203-787-0595
`
`Fax: 203-787-5818
`
`Attorneys for Applicant
`LG International LLC
`
`10
`
`

`
`.IFIN-E33-E1388 15:18 FRUF1:
`
`TU:E‘B3?E?5B18
`
`P.BE11
`
`VERIFICATION OF RESPONSES
`
`1, Henry F. Burroughs, President of LG International LLC, declare under penaity of
`
`perjury that l have read the foregoing APPLl(‘ANT'S RESPONSE TO 0PPO§ER'5 FIRST
`
`SET OF INTERROGATORIES, and believe that the responses provided. herein are correct to
`
`the best of my knowledge and belief.
`
`Dated:\‘7='Di
`
`B»/:23
`
`HenryF.
`
`_a_
`
`I‘,
`
`urr ughs
`
`I1
`
`

`
`CERTIFICATE OF SERVICE
`
`This hereby certifies that the foregoing APPLlCANT'S RESPONSE TO OPPOSER'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 Coiburn LLP
`
`201 W. Big Beaver Road, Suite 1101
`Troy, Michigan 48084
`
`Attorney for Opposer PHCP, Inc.
`
`By:
`
`Peter W. Peterson
`
`!gin903re5p_rog5.doc
`
`12
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Serial N0.: 76-643241
`
`Mark: GUYGROOM
`
`) ) ) l
`
`) Opposition No.: 91475116.
`.)
`
`Date: January 4, 2008
`
`)
`
`) )
`
`PHCP Inc.
`
`Opposer
`
`V.
`
`LG International LLC
`Applicant
`
`APPL|CANT'S RESPONSE TO OPPOSER'S FIRST SET OF REQUESTS FOR ADMISSIONS
`
`Applicant, LG International LLC, hereby responds to Opposer PHCP lnc.'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 to place
`
`upon applicant obligations beyond those allowed by the Federal Rules of Civil Procedure
`
`or 37 CFR§ 2.116-etseq.
`
`REQUEST NO. 1
`
`That Applicant has never sold or offered to sell products displaying Applicant’s Mark
`within the United States.
`
`Response: Admit.
`
`

`
`REQUEST NO. 2
`
`That goods or services sold or to be sold with Applicant-‘s Mark are sold and offered for
`sale using distribution and marketing channels that are similar to those used or to be used
`to sell goods sold with Opposer's Mark.
`
`Response: Deny.
`
`RE UEST NO. 3
`
`That goods or services sold or to be sold with Applicant's Mark- and goods sold or to be
`sold with Opposer's Mark are sold and offered for sale to the same or similar consumers.
`
`Response: Deny.
`
`REQUEST NO. 4
`
`That goods or services sold or to be sold with Applicant's Mark and goods sold or to be
`sold with Opposer's Mark are intended for the same use, purpose and/or function.
`
`Response: Deny.
`
`REQUEST NO. 5
`
`That Opposer has never acquiesced to Applicant's use of the term GALGROOM,
`GUYCIROOM or GIRLG ROOM in trade or commerce in the United States.
`
`Response: Admit.
`
`REQ UEST NO. 6
`
`That Opposer is not estopped from opposing Applicant's application to register Opposer's
`Mark.
`
`Response: Admit.
`
`

`
`REQUEST NO. 7
`
`- That Opposer is not barred under the doctrine of iaches from opposing Applicant's
`application to register Applicant's Mark.
`
`Response: Admit.
`
`REQUEST NO. 8
`
`That Opposer‘ filed an application for MENSGROOM & Design on June 3, 2005.
`
`Response: Admit.
`
`RE UEST NO. 9
`
`That Opposer has a constructive first use date for the mark MENSGROOM 8: Design of at
`least as early as June 3, .2005.
`
`Response: Deny.
`
`REQUEST NO. 10
`
`That Opposer filed an application for LADIESGROOM & Desig