Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91181380
`
`Defendant
`MIMULANI AG
`
`MARK LEBOW
`YOUNG & THOMPSON
`209 MADISON STREET, SUITE 500
`ALEXANDRIA, VA 22314
`UNITED STATES
`
`embon@young-thompson.com
`
`Reply in Support of Motion
`Mark Lebow
`
`m|ebow@you ng—thompson.com
`lmll
`
`02/09/2009
`
`2008-02-09 Reply to Opposition to Motion to Compe|.pdf (5 pages )(70316
`bytes)
`2009-02-09 Declaration of ML for Reply to Opp. to M. to Compe|.pdf ( 2 pages
`)(56862 bytes )
`EX. A.pdf (2 pages )(45563 bytes)
`EX. B.pdf (2 pages )(17556 bytes)
`EX. C.pdf (4 pages )(64192 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA265497
`ESTTA Tracking number:
`02/09/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91181380
`Defendant
`MIMULANI AG
`MARK LEBOW
`YOUNG & THOMPSON
`209 MADISON STREET, SUITE 500
`ALEXANDRIA, VA 22314
`UNITED STATES
`embon@young-thompson.com
`Reply in Support of Motion
`Mark Lebow
`mlebow@young-thompson.com
`/ml/
`02/09/2009
`2008-02-09 Reply to Opposition to Motion to Compel.pdf ( 5 pages )(70316
`bytes )
`2009-02-09 Declaration of ML for Reply to Opp. to M. to Compel.pdf ( 2 pages
`)(56862 bytes )
`EX. A.pdf ( 2 pages )(45563 bytes )
`EX. B.pdf ( 2 pages )(17556 bytes )
`EX. C.pdf ( 4 pages )(64192 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
` Opposition No. 91181380 (consolidated)
` Opposition No. 91181381
` Opposition No. 91181384
` Opposition No. 91181385
` Opposition No. 91181386
` Opposition No. 91181388
`
`E. & J. GALLO WINERY,
`
`
`Opposer,
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`v.
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`
`
`
`MIMULANI AG,
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`
`
`
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`Applicant.
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`APPLICANT MIMULANI AG'S REPLY TO
`OPPOSITION TO APPLICANT'S MOTION TO COMPEL
`
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`Counsel for Mimulani AG ("Mimulani") made more than sufficient effort to raise and
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`resolve Mimulani's discovery dispute with counsel for Opposer E. & J. Gallo Winery ("E. &
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`J.") and fully discharged Mimulani's duty to meet and confer regarding this dispute.
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`Opposer's brief in opposition mischaracterizes the parties' communications and confuses
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`Mimulani's meet and confer duty regarding its discovery dispute with a separate and later
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`arising discovery dispute originating from Opposer.
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`
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`Mimulani's meet and confer began with its counsel sending to Opposer's counsel an
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`email on December 16, 2008 identifying in detail each of Opposer's discovery responses that
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`Mimulani believed deficient. The email included the manner and nature of the alleged
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`deficiency. This email was attached to Mimulani's motion as Exhibit A and is incorporated
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`into this Reply by reference. The email is sufficiently specific to ripen the issues upon
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`response by Opposer and does not require further clarification to particularize Mimulani's
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`position. Mimulani's position regarding Opposer's discovery responses was clearly and
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`

`
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`APPLICANT MIMULANI AG'S REPLY TO
`OPPOSITION TO APPLICANT'S MOTION TO COMPEL
`Opposition No. 91181160
`Page 2 of 5
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`completely set out in the email and any narrowing of the issues was the responsibility of
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`Opposer to make substantive responses thereto. In response to the email, if Opposer
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`conceded that some or all of its responses were deficient then the issues could have been
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`narrowed. Absent such concession, the parties' dispute was crystallized and ripe for
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`determination from the Board.
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`
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`Opposer made an immediate, preliminary email response to the December 16 email,
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`which was also included in Exhibit A to Mimulani's motion. The response (1) indicated that
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`Opposer disagreed that it owed Mimulani additional discovery responses, (2) requested
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`authority from Mimulani supporting its position, and (3) indicated that a more substantive
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`response would be forthcoming in the following week. Mimulani's counsel followed up by
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`emailing Opposer's counsel on the same day that "we look forward to hearing back from you
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`upon your return from New York", thus confirming Opposer's counsel's indication that
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`substantive responses would be forthcoming the following week. (See declaration of Mark
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`Lebow and Exhibit A)
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`
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`Applicant is not required to provide authority supporting its position that Opposer's
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`discovery responses were deficient. Nevertheless, on December 19, 2008, in the spirit of
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`resolving the dispute without requiring the Board's intervention, counsel for Mimulani
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`emailed Opposer's counsel several case law citations supporting its position as has been
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`requested. (See declaration of Mark Lebow and Exhibit B) Despite this second follow up
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`communication, Opposer made no response, substantive or otherwise, regarding Mimulani's
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`detailed December 16 email in the weak following the email.
`
`

`
`
`APPLICANT MIMULANI AG'S REPLY TO
`OPPOSITION TO APPLICANT'S MOTION TO COMPEL
`Opposition No. 91181160
`Page 3 of 5
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`Parallel to this meet and confer process, alleged counsel for Opposer began to raise a
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`separate, unrelated discovery issue regarding Opposer's alleged failure to receive Mimulani's
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`discovery responses timely served on October 6, 2008. On the afternoon of December 29
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`Mimulani's counsel received voice mail messages from an attorney named Peter Harvey
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`claiming to represent Opposer. However, Mr. Harvey was not counsel of record and had
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`made no appearance in this proceeding and has yet to make an appearance in this proceeding
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`as of this filing. Counsel for Mimulani also received an email/letter from Mr. Harvey on the
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`morning of December 30, 2008 (sent after business hours, EST, on the 29th and received on
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`the 30th).
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`
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`The transcribed voicemail reads:
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`Hi Mr. Lebow this is Peter Harvey calling. I'm with Harvey-Siskin in
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`San Francisco. I'm calling you in connection with the E.& J. Gallo winery
`case versus Mimulani, the GALLISS opposition or cancellation proceeding. I
`wanted to check in with you on the discovery that's recently come to light.
`Could you give me a call at your convenience, 515-354-0100, thanks.
`
`
`(See Declaration of Mark Lebow). Mr. Harvey's letter/email is attached hereto as Exhibit C.
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`As is apparent, neither the voicemail nor the letter mentions Mimulani's discovery issues
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`raised in its detailed email of December 16. Rather, each is dedicated solely to Opposer's
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`separate discovery dispute which arose after Mimulani's December 16 email. Neither
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`communication attempts to more substantively respond to Mimulani's email or even
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`acknowledges that such a substantive response is overdue.
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`
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`Opposer's brief at page 2, and Peter Harvey's declaration at paragraph 2, describes
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`Mr. Harvey's voice mail and email/letter as requesting correspondence on "pending
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`

`
`
`APPLICANT MIMULANI AG'S REPLY TO
`OPPOSITION TO APPLICANT'S MOTION TO COMPEL
`Opposition No. 91181160
`Page 4 of 5
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`discovery issues". While this is technically true, it is not the whole truth. The "pending
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`discovery issues" with which the communications were directed were Opposer's discovery
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`dispute not Mimulani's discovery dispute. It is clear that Mr. Harvey (who was not Opposer's
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`counsel and whose voicemail message did not claim to be) was interested only in discussing
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`its issues with Mimulani's discovery and had no intention of making a response to
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`Mimulani's email of December 16 that would narrow the issue. The fact that Opposer had no
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`intention of narrowing the issues with a substantive response to the December 16 email is
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`confirmed by Opposer's opposition in its brief to each and every issue raised by Mimulani's
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`motion to compel.
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`Opposer's concentration in its brief in opposition on Mr. Harvey's two
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`communications is a red herring and an obvious attempt to mischaracterize Mimulani's
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`efforts to meet and confer. Opposer's decision to emphasize these communications in its
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`brief is at odds with the incomplete description of them in Harvey’s declarations and the
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`strategic failure to include them as exhibits to Opposer's brief. To have done so would have
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`revealed the mischaracterization and red herring and would have been fatal to Opposer's
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`allegation that Mimulani ignored any request for additional meet and confer regarding
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`Opposer's discovery deficiencies.
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`And, as noted, Mr. Harvey is not a counsel in this proceeding. His authority to act for
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`Opposer in any capacity has not been confirmed, and it would have been improper for
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`Mimulani’s counsel to confer substantially with him given his lack of appearance or
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`authority. The dispute regarding Opposer's discovery deficiencies was ripe at the time of
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`

`
`
`APPLICANT MIMULANI AG'S REPLY TO
`OPPOSITION TO APPLICANT'S MOTION TO COMPEL
`Opposition No. 91181160
`Page 5 of 5
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`Mimulani's filing and Harvey’s communications at the end of December were directed
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`toward Opposer's harried interest in reopening discovery and in meeting and conferring
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`regarding a separate discovery issue. This fact is confirmed by Opposer's filing of its Motion
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`to Reopen Discovery even after the Board suspended the proceeding, in disregard of the
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`Board's instructions.
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`In consideration of the above, Mimulani requests that the Board disregard Opposer's
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`allegations regarding the meet and confer and address the substantive issues raised in
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`Mimulani's Motion.
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`February 9, 2009
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`Respectfully submitted,
`
`
`
`
`
`/Mark Lebow/
`Mark Lebow
`Attorney for Applicant
`Young & Thompson
`209 Madison Street, # 500
`Alexandria, Virginia 22314
`Tel: (703) 521-2297
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify the foregoing APPLICANT MIMULANI AG'S REPLY TO
`
`OPPOSITION TO APPLICANT'S MOTION TO COMPEL was deposited as first class
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`U.S. Mail to Paul W. Reidl, Attorney for Opposer, E. & J. Gallo Winery, 600 Yosemite
`
`Boulevard, Modesto, CA 95354 this 9th day of February 2009.
`
`
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`/Jeff Goehring/
`Jeff Goehring
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Cancellation No. 91181380 et al.
`(Consolidated)
`
`
`
`
`
`
`E. & J. GALLO WINERY,
`
`
`Opposer,
`
`v.
`
`
`
`
`MIMULANI AG,
`
`Applicant.
`
`
`
`
`
`
`
`SUPPORT OF REPLY TO OPPOSITION TO APPLICANT'S MOTION TO COMPEL
`
`DECLARATION OF MARK LEBOW IN
`
`I, Mark Lebow, declare as follows:
`
`
`1. I am a partner of Young & Thompson, counsel for Applicant Mimulani AG. I make this
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`declaration based on my own personal knowledge.
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`2. Attached hereto as Exhibit A is a true and correct copy and email representing
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`Mimulani's first follow up communication (email) with Opposer's counsel after having
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`received Opposer's counsel's preliminary response to my December 16 email to
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`Opposer's counsel.
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`3. Attached hereto as Exhibit B is Mimulani's second follow up communication (email)
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`with Opposer's counsel after having received Opposer's counsel's preliminary response to
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`my December 16 email to Opposer's counsel.
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`4. I received a voicemail from Peter Harvey of Harvey Siskind LLP in the afternoon of
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`December 29, 2008. The true and correct text of that voicemail as transcribed is as
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`follows:
`
`

`
`
`DECLARATION OF MARK LEBOW IN
`SUPPORT OF REPLY TO OPPOSITION TO
`APPLICANT'S MOTION TO COMPEL
`Opposition No. 91181160
`Page 2 of 2
`
`
`
`
`
`
`
`
`Hi Mr. Lebow this is Peter Harvey calling. I'm with Harvey-Siskin
`in San Francisco. I'm calling you in connection with the E.& J.
`Gallo winery case versus Mimulani, the GALLISS opposition or
`cancellation proceeding. I wanted to check in with you on the
`discovery that's recently come to light. Could you give me a call at
`your convenience, 515-354-0100. Thanks.
`
`5. Attached hereto as Exhibit C is a true and correct copy of an email and attached letter I
`
`received from Peter Harvey on the morning of December 30, 2008.
`
`
`
`/ Mark Lebow/
`Mark Lebow
`
`
`
`
`
`
`
`
`
`
`
`

`
`EXHIBIT A
`
`EXHIBIT A
`
`

`
`Page 1 of 5
`
`From: Mark Lebow
`Sent: Tuesday, December 16, 2008 6:49 PM
`To: 'Reidl, Paul'
`Subject: RE: Galliss Oppositions - TTAB Consolidated Opposition No. 91181380 - Our Ref. 0540-1048-1
`
`
`Hi Paul,
`
`
`Any enforcement of the GALLO mark that resulted in a settlement is relevant because settlements,
`particularly any settlements that include coexistence agreements, can be relevant to the scope of
`protection properly afforded to Gallo's marks and, more particularly, to the factors that scope would
`depend on such as the area of commerce in which the marks are used or in which Gallo considers them
`to be used, the likelihood that Gallo will "bridge the gap," and any other issue related to the commercial
`use of the GALLO mark. This relevance is not necessarily restricted by national boundaries.
`
`
`Additionally, Gallo denies that it has not challenged several third party marks, and not based on lack of
`knowledge of the third party marks. Is it Gallo's position that there are no documents relating to the
`non-TTAB challenges to these third party marks? No letters, no agreements, nothing?
`
`
`Further, Gallo is obligated to investigate the facts it is being asked to admit and Applicant has made
`some such investigations straightforward by explicitly providing the sources that support the facts
`Applicant asks Gallo to admit. None of the denials are base on lack of knowledge, so we assume you
`have reasons for denying the alleged facts and such reasons/knowledge is clearly discoverable through
`separate discovery requests. Our production requests already include this type of request and
`interrogatories would not be inappropriate. We believe many of these issues are resolvable by Gallo
`admitting that the identified third party marks are used in commerce as we believe is clear from sources
`available to anyone.
`
`In any event, we look forward to hearing back from you upon your return from New York.
`
`
`Very truly yours,
`
`
`Mark Lebow | Young & Thompson
`209 Madison St. | Suite 500
`Alexandria, VA 22314
`Tel: (703) 521-2297 | Fax: (703) 685-0573
`mlebow@young-thompson.com | www.young-thompson.com
`Skype: gaucho000
`
`
`CONFIDENTIALITY NOTICE. This email message and any attachments may be confidential and may
`be subject to the attorney-client privilege or other privilege. If you are not the intended recipient, please
`do not read, copy or re-send this email message or its attachments; immediately notify the sender by
`reply email or call to 703-521-2297; and delete this email message and any attachments. Thank you for
`your kind assistance.
`
`
`
`From: Reidl, Paul [mailto:Paul.Reidl@ejgallo.com]
`Sent: Tuesday, December 16, 2008 5:10 PM
`To: Mark Lebow
`Subject: RE: Galliss Oppositions - TTAB Consolidated Opposition No. 91181380 - Our Ref. 0540-1048-1
`
`
`Dear Mr. Lebow:
` 
`
`1/27/2009
`
`

`
`EXHIBIT B
`
`EXHIBIT B
`
`
`

`
`Page 1 of 1
`
`Dear Paul,
`
`
`We received your letter dated December 9, 2008 regarding discovery. In it you state that we did not respond to your
`discover requests. This is not correct. Responses to each of your requests were served on October 6, 2008 and were
`timely. Scans of the originals are attached. As you can see, they were sent to the P.O. Box that appears on your
`letterhead. Have you received the responses since your December 9 letter? Delivery may be delayed due to our error in
`using the 95353 zip code rather than the 95354 zip code, for which we apologize for any inconvenience this may have
`caused. However, both zip codes appear to be in Modesto and it is likely delivery will be or has been made despite this
`error. The package has not been sent back to us by the post office, though we will watch for it. Please let us know
`if/when you received it.
`
`
`Further to your request earlier this week to Mark Lebow for authority, please see below some citations to case law
`regarding a responding parities’ duty in responding to admissions.
`
`
`U.S. ex rel. Englund v. Los Angeles County, 235 F.R.D. 675, 684 (E.D. Cal. 2006)
`
`
`Bouchard v. U.S., 241 F.R.D. 72, 76 (D.Me. 2007)
`
`
`Herrera v. Scully, 143 F.R.D. 545, 548-49 (S.D.N.Y 1992)
`
`
`
`Sincerely,
`
`
`Jeff Goehring
`
`
`Jeffrey M. Goehring
`Young & Thompson
`209 Madison St.
`Suite 500
`Alexandria, VA 22314
`(703) 521-6590 (direct)
`Fax: (703) 685-0573
`jgoehring@young-thompson.com
`
`
`
`1/27/2009
`
`

`
`EXHIBIT C
`
`EXHIBIT C
`
`
`
`

`
`Page 1 of 1
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`Dear Messrs. Lebow and Goehring:
`
`
`Please see the attached letter and call me as soon as possible.
`
`
`Thank you.
`
`
`Sincerely,
`
`
`Peter Harvey
`Harvey Siskind LLP
`4 Embarcadero Center, Suite 3950
`San Francisco, CA 94111
`
`
`Tel: 415.354.0100
`Fax: 415.391.7124
`email: pharvey@harveysiskind.com
`
`
`
`The contents of this e-mail message and any attachments may be privileged, confidential, and protected from disclosure.
`If you are not the intended recipient, any use, dissemination, or reproduction of this transmission is strictly prohibited. If
`you have received this transmission in error, please notify the sender by reply e-mail, by telephone at 415.354.0100, or
`by forwarding this message to mail@harveysiskind.com, and delete this message and any attachments immediately.
`Thank you for your cooperation.
`
`
`
`
`1/27/2009
`
`

`
`HARVEY
`
`f3f§E3l*:l"l‘~él'§f7} LLP
`
`December 29, 2008
`
`D. Peter Harvey
`
`VIA ELECTRONIC MAIL
`
`Mark Lebow, Esq.
`Jeff Goehring, Esq.
`Young & Thompson
`209 Madison Street
`
`Suite 500
`
`Alexandria, Virginia 22314
`
`Re:
`
`TTAB Cancellation No. 91181160
`
`E&JGallo Winery V. Mimulani AG
`
`Dear Messrs. Lebow and Goehring:
`
`This confirms my telephone voice mail messages to you both this morning. Paul Reidl at
`
`E&J Gallo Winery has asked us to associate in as counsel in the above matter, in light of his
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`existing obligations with respect to a very active federal court litigation.
`
`Mr. Goehring’s email of December 19 forwards discovery responses dated October 6,
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`2008. He states that service was effected to an incorrect address. Gallo in fact did not receive
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`these responses until Mr. Goehring’s email transmitted them.
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`I trust you will agree that this development — and the fact that Gallo has not yet received
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`any of the documents which Mimulani’s response to Gallo’s first request for production indicates
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`will be produced — necessitates extending the existing discovery and trial deadlines in the case.
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`At a minimum, we feel that a sixty—day extension of all dates is required. Please let us know
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`right away if you agree, and we will prepare a stipulation and proposed order to that effect.
`
`FOUR EMBARCADERO CENTER
`TELEPHONE 415.354.0100
`
`SAN FRANCISCO
`39TH FLOOR
`FACSIMILE 415.391.7124
`
`94111
`CALIFORNIA
`WWW.HARVEYSISKIND.COM
`
`

`
`Mark Lebow, Esq.
`Jeff Goehring, Esq.
`December 29, 2008
`
`Page 2
`
`If you wish to discuss the matter, feel free to contact either my associate, Seth Appel, or
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`me.
`
`In light of the pending discovery cutoff, we would appreciate hearing from you as soon as
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`possible.
`
`< wwwswmg
`K"
`
`S4
`
`,
`
`l.
`
`Sincerely,M X”?
`
`‘t /
`// t
`/‘E K
`
`,
`
`
`
`sf;/;:? f“'l& M y’
`ii.
`lmvwkf
`D. Peter Harvey
`
`DPH:tlb
`
`cc:
`
`Paul R. Reidl, Esq.
`Seth I. Appel, Esq.