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
`ESTTA285360
`ESTTA Tracking number:
`05/21/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91181512
`Defendant
`5 Star Linux, Inc.
`J. James Li
`Greenberg Traurig LLP
`1900 University Avenue, 5th Floor
`EAST PALO ALTO, CA 94303
`UNITED STATES
`IPDOCKETING@HOWREY.COM
`Other Motions/Papers
`J. JAMES LI
`lij@gtlaw.com
`/J. JAMES LI/
`05/21/2009
`Motion.PDF ( 5 pages )(131241 bytes )
`Exhibit A 1.PDF ( 5 pages )(64979 bytes )
`Exhibit A 2.PDF ( 4 pages )(58301 bytes )
`Exhibit A 3.PDF ( 5 pages )(75493 bytes )
`Exhibit B.PDF ( 20 pages )(479998 bytes )
`Exhibit C.PDF ( 16 pages )(393518 bytes )
`Exhibit D.PDF ( 3 pages )(37038 bytes )
`Exhibit E 1.PDF ( 13 pages )(507321 bytes )
`Exhibit E 2.PDF ( 2 pages )(17541 bytes )
`Exhibit E 3.PDF ( 10 pages )(382488 bytes )
`Exhibit E 4.PDF ( 5 pages )(129676 bytes )
`Exhibit E 5.PDF ( 10 pages )(378869 bytes )
`
`

`
`
`
`
`OpenTV, Inc.
`
`Opposition No. 91 181512
`
`v.
`
`Opposer,
`
`JUDGMENT FOR THE APPLICANT
`
`APPLICANTS MOTION FOR ENTRY OF
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`5 Star Linux, Inc.
`
`Application Serial No.: ?'?J'082,330
`Filing Date: January 12,200’?
`Publication Date: August 28, 200'?
`
`Applicant.
`
`
`
`
`
`Applicant and Defendant 5 Star Linux, Inc. (“5 SL1"), though its counsel of record, hereby move
`
`to dismiss OpenTV, Inc. (“OpenTV”)’s Opposition to 5SLI’s OPENPVR trademark application and for
`
`entry ofjudgment in 5SLI’s favor.
`
`I.
`
`INTRODUCTION
`
`SSLI registered the openpvr.com domain name in 20-00 and filed its application for the mark
`
`I—|
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`:—I 45- OPENPVR in 2007. OpenTV attempts to invalidate 5SLI’s OPENPVR registration on the claim that it
`
`:~--- U1 has a family mark with the surname “OPEN” and that it has a common—law mark OPENTV PVR that
`
`I-—I CK predates 5SLI’s application. OpenTV, however, did not respond to 5SLI’s discovery requests and did
`
`t—I "--1 not present any witness testimony to support its claims. Now the deadlines for discovery and trial have
`
`9- 00 passed. OpenTV has no evidence on the record to support its claims of family mark or common law
`
`I--A \D mark. Therefore, judgment should be entered for Applicant SSLI.
`
`II.
`
`STATEMENT OF FACTS
`
`SSLI and its parent company, EnReach Technology, Inc., have been the owners of the domain
`
`I0 NI names openpvncom, openpvrorg, and open};-vr.net since 2000. Ex. A. On January 12, 2007, SSLI filed
`
`its application for the trademark “OPENPVR” (the ‘‘Application’’) The Application was published in
`
`the Official Gazette on August 28, 2007. The OPENPVR mark covers the following goods and
`
`services:
`
`Audio and video receivers, signal decoder boxes, television set—top boxes and signal
`converters; consumer electronics hardware devices for playing audio and video fi'om a
`computer hard disk drive and storing and playing transmissions from television and radio
`broadcasts and from computer networks, namely, audio and video disk recorders, remote
`controls, computer hardware and computer peripherals; computer client-server software
`for use in delivering, receiving and managing integrated voice, video and data from the
`l
`
`
`
`
`
`3464025901/1
`
`APPLICANTS MOTION FOR ENTRY OF JUDGMENT FOR THE APPLICANT
`Opposition No. 91181512
`
`[NJ (3
`
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`
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`
`
`Internet to display units and televisions; computer software for use in operating
`telecommunications devices; and user manuals and guides sold as a unit therewith.
`(International Class 9)
`
`Broadcasting programs via computer networks; electronic transmission of messages and
`data, delivery of messages via computer networks; video broadcasting and messaging
`services; video-on-demand transmission services, providing multiple-user access to a
`global computer information network; and providing consulting in the field of
`telecommunications. (International Class 38)
`
`On December 26, 2007, OpenTV filed the instant Opposition to the Application. 0penTV
`
`alleges that it has a common-law OPENTV PVR mark and “a family of ‘OPEN’ marks” and that these
`
`marks predate 5SLI’s Application in priority.
`
`On February 8, 2007, pursuant to a stipulation, this Board granted an extension of time and set
`
`forth the following case schedule:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`On March 4, 2008, SSLI filed its answer. On June 9, 2008, SSLI served on OpenTV its First Set
`
`of Document Requests and First Set of Interrogatories by mail. Ex. B & C. The deadline for OpenTV
`
`to respond to SSLI discovery requests was July 14, 2008. Counsel for OpenTV acknowledged the
`
`deadline in an email and asked for extension in view of 0penTV’s settlement proposal. Ex. D. SSLI
`
`bJ
`
`
`
`\-DOG‘--JO'\.U'I-PU3
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`2
`
`APPLICANTS MOTION FOR ENTRY OF JUDGMENT FOR THE APPLICANT
`Opposition No. 91131512
`
`34I54025QDv‘f
`
`_
`
`

`
`
`
`I did not agree to the requested extension of time. Ex. D.
`
`OpenTV never responded to 5SLl’s discovery requests. In fact, OpenTV did not do anything in
`
`(DMDOQ~JChLn.45DJb)
`
`ha
`
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`
`this case after its settlement proposal was rejected in July 2008.
`
`III.
`
`ARGUNIENT
`
`A.
`
`There Is No Evidential Support for the Alleged “OPEN” Family Mark
`
`A "family of marks" is “a group of marks having a recognizable common characteristic, wherein
`
`the marks are composed and used in such a way that the public associates not only the individual marks,
`
`but the common characteristic of the family, with the trademark owner. ” AM Gen. Corp. v.
`
`Daimlerclnysler Corp, 311 F.3d 796, 814 (7th Cir. Ind. 2002) (internal quotations and citations
`
`omitted). “Simply using a series of similar marks does not of itself establish the existence of a family.
`
`There must be a recognition among the purchasing public that the common characteristic is indicative of
`
`a common origin of the goods.” Id.
`
`OpenTV merely shows that it has registered several marks with the common prefix “OPEN.”
`
`There is no evidence whatsoever that the public associates the word “OPEN” with OpenTV. To the
`
`contrary, OPEN is a highly descriptive term used widely in the industry to connote the meaning of being
`
`free, non-proprietary, or decentralized (e.g., OpenlD, Open System, OpenDNS, OpenOffice,
`
`OpenSource) See Ex. E. None of the commonly used OPEN technology or products belonged to
`
`OpenTV. Thus, OpenTV cannot claim ownership to the family mark OPEN.
`
`B.
`
`There Is No Evidence Supporting OpenTV’s Claim Based on OPENTV PVR
`
`OpenTV claims that it has a common—law mark OPENTV PVR which predates the OPENPVR
`
`b0 he
`
`applicatiorfs filing date. There are two problems with this claim. First, there is no evidence for the
`
`b3 b3
`
`existence of the mark OPENTV PVR. To be sure, SSLI explicitly requested documentary proof on this
`
`b0 DJ
`
`point through its document requests. See Ex. B, Request No. 12 (“Any and all documents relating to
`
`b3 43
`
`your purported common law trademark rights in the mark OPENTV PVR”), No. 13 (“Any and all
`
`P3Ln
`
`documents relating to your purported use of OPENTV PVR"), No. 29 (“Any and all documents relating
`
`bJON
`
`to your purported efforts and the expenditure of considerable sums of money in connection with
`
`bJ~d
`
`advertising, promotional and market services relating to OPENTV PVR”), No. 30 (“Any and all
`
`b3 00
`
`documents relating to your purported valuable goodwill and consumer recognition of OPENTV PVR"),
`
`APPLICANT ’S MOTION FOR ENTRY OF JUDGMENT FOR THE APPLICANT
`Opposition No. 91131512
`
`346402590V1
`
`3
`
`
`
`

`
`
`
`No. 31 (“Any and all documents demonstrating that OPENTV PVR is distinctive and famous”), No. 31
`
`(“Any and all documents demonstrating that your alleged common law rights in the OPENTV PVR
`
`mark also proceed Applicant’s filing date”), No. 38 (“Any and all documents demonstrating that
`
`OPENTV PVR is distinctive for your goods and services”). 0penTV never bothered to even respond to
`
`these document requests. Thus, as a matter of fact OpenTV does not have the right to the alleged
`
`common-law mark OPENTV PVR.
`
`Second, even assuming auguendo that OpenTV has a common-law mark OPENTV PVR, which
`
`it does not, OpenTV has not presented any evidence of any potential or actual consumer confiision
`
`between OPENTV PVR and OPENPVR. Again, SSLI has explicitly requested such evidence through
`
`its document requests. See Ex. B, Request No. 56 (“Any and all documents demonstrating that
`
`applicant’s mark resembles OPENTV PVR”), No. 57 (“Any and all documents demonstrating that
`
`Applicant's ma1‘k’s resemblance to OPENTV PVR is likely, when applied to App1icant’s Goods and
`
`Services, to cause confusion, to cause mistake, or to deceive as to the origin, sponsorship, or approval of
`
`App1icant’s Goods and Services"), No. 58 (“Any and all documents demonstrating the injury to
`
`Opposer, the trade and the public that would result from the Applicant’s Mark’s resemblance to
`
`OPENTV PVR”), No. 74 (“Any and all documents demonstrating that the registration of Applicant’s
`
`mark would prevent Opposer from exercising exclusive control over the goodwill and reputation
`
`associated with OpenTV PVR”). Therefore, as a matter of fact, there is no consumer COI1fl.1SlO11 between
`
`OPENTV PVR and OPENPVR.
`
`Thus, 0penTV’s opposition based on the alleged OpenTV PVR mark is baseless.
`
`pan
`
`
`
`8\D00---llO\'U'I-BL:-‘IIN.)
`
`|—|
`
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`
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`
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`
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`
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`
`P—‘ IX.‘
`
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`
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`
`K0 r—-
`
`IV.
`
`CONCLUSION
`
`IN-‘I {NJ
`
`I10 DJ
`
`E»)-13-
`
`[NJ U1
`
`[NJ ON
`
`IN)H!
`
`{O 00
`
`The Opposer OpenTV has not provided any evidence supporting its Opposition. Judgment
`
`should be entered in favor of the Applicant SSLI.
`
`Respectfully submitted,
`
`Greenberg Traurig LLP
`
`By:
`
`J. James
`
`1
`
`Attorneys for Applicant
`
`
`
`34640259014‘
`
`APPLICANT ’S MOTION FOR ENTRY OF JUDGMENT FOR THE APPLICANT
`Opposition No. 91181512
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY THAT THIS, APPLICANTS MOTION FOR
`ENTRY OF JUDGMENT FOR THE APPLICANT, is being
`deposited WITH THE United States Postal Service with sufficient
`postage as first class mail on May 21, 2008 in an envelope addressed
`to counsel for Opposerz Grace I-Ian Stanton, Esq., 1201 Third Avenue,
`43"‘ Floor, seat;
`bin
`
`1 1.3099
`
`
`
` APPLICANTS MOTION FOR ENTRY OF JUDGMENT FOR THE APPLICANT
`Opposition No. 91181512
`
`34640259091
`
`

`
`EXHIBIT A 1
`
`

`
`openpvlxcom WHOIS domain registration information from Network Solutions
`
`' Customer Feedback E Give Us Your Ideas E
`
`;3_i_:no_uj__l__J§_ Mysoiuiionsgotm
`
`,
`NetworkSoiutions.
`
`Page 1 of 4
`
`US Dollar-
`
`Ca
`H
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`SSL
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`Em" C9 _
`
`__
`
`
`
`°m[°”°'S
`
`Education
`Manage
`Canter
`mu t
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`
`Domain
`web Sites
`Oniine
`_ 5 Home Mrkins
`
`
`WHOIS Search Results
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`
`it i
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`it
`
`open pvr.com
`
`'°9'5""““'- Qflflm
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`[mag my
`AVAILABLE
`
`Make an Instant, anonymous offer to the current domain
`
`i'ii_§ooTi6iaEr’<"".§i?§"3§:":
`
`The data contained in GoDaddy.com. |nc.'s whole database.
`while beiieved by the company to be reliable. is provided “as is"
`with no guarantee or warranties regarding its accuracy. This
`information is provided for the soie purpose of assisting you
`in obtaining infonnation about domain name registration records.
`Any use of this data for any other purpose is expressly forbidden without the prior written
`permission of GoDaddy.com. inc. By submitting an inquiry.
`In particular.
`you agree to these terms of usage and limitations of warranty.
`you agree not to use this data to allow. enable. or othenivise make possible.
`dissemination or collection of this data. in part or in its entirety. for any
`purpose. such as the transmission of unsolicited advertising and
`and solicitations of any kind. including spam. You further agree
`not to use this data to enable high volume. automated or robotic electronic
`processes designed to coiled or compile this data for any purpose,
`including mining this data for your own personal or commercial purposes.
`Please note: the registrant of the domain name is specified
`in the "registrant" field.
`In most cases. GoDaddy.com. inc.
`is not the registrant of domain names listed in this database.
`
`_
`
`Registrant:
`EnReach Technology. Inc.
`Bo Wu .
`2130 Gold Street
`San Jose. Caiifomia 95002
`United States
`
`5
`5
`
`5
`i
`
`:
`
`i
`
`i
`i
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`g
`
`
`
`SEARCH AGA
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`5
`
`Enter a search
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`e_g_ networkso]
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`Search by:
`5 QQDIBJILN
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`http:i’fwww.networl<solutions.comfwhois-searchfopenpvtxcom
`
`5r'21/2009
`
`

`
`openpvncom WHOIS domain registration information from Network Solutions
`
`Page 2 of 4
`
`Registered through: GoDaddy.com. Inc. (http:.-'!www.godaddy.oom)
`Domain Name: OPENPVRCOM
`Created on: 27-Jul-00
`Expires on: 27-Jul-09
`Last Updated on: 27-Jul-08
`
`Administrative Contact:
`.
`i:H:Iwu@enreaol1.com
`EnReach Technology. Inc.
`Bo Wu
`2130 Gold Street
`San Jose. California 95002
`United States
`408-956-8200
`
`Fax —
`
`Technical Contact:
`. howu@enreach.oom
`EnReach Technology. Inc.
`Bo Wu
`2130 Gold Street
`San Jose, California 95002
`United States
`408-955-8200
`
`Fax —
`
`Domain sewers in listed order:
`NS1.CHtNAQ.CDM
`NS2.CHlNAQ.CDM
`
`The previous information has been obtained either directly from the registrant or a registrar of the domain name
`other than Network Solutions. Network Solutions, therefore. does not guarantee its accuracy or completeness.
`
`Show underlying registry data for this re;:_o_r5_i
`
`Current Registrar: GODADDY.COli.-‘I. INC.
`I? Address:
`1.1.1.1 (ARIN & RIPE IP search)
`-{-}
`IP Location:
`Record Type:
`Domain Name
`Server Type:
`Indeterminate
`Lock Status:
`clientDeleteProhibited
`
`DMOZ
`Yt Directory:
`Secure:
`E-commerce:
`
`no listings
`see listings
`No
`No
`
`Traffic Ranking: Not available
`Data as of:
`20-Apr-2008
`
`
`
`http:i'J'www.networksolutions.cornfwhois-search/openpvr.com
`
`51210009
`
`

`
`openpvncom WHOIS domain registration information from Network Solutions
`
`Page 3 of 4
`
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`SOLUTIONS TO GET
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`:5.'|'n 'G-'l_IF|.CH:INT-E--E- SUI‘-I‘IC‘I'I-5
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`GET
`
`100% Secure Transaction
`For your protection. this Web site is secured with the highest level of SSL Certificate encryption.
`
`0 Copyright 2009 Network Solutions. All rights reserved.
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`http :.«’!www.networkso1utions.comfwhois-search;"openpvr.corn
`
`5;"2I:"2009
`
`

`
`EXHIBIT A 2
`
`

`
`openpvtznet WHOIS domain registration information from Network Solutions
`
`t'.‘ustomerFeedbacic i Give Us Your Ideas if About Us 5 Mysoiotionspoti"
`
`0
`Networksoiutions,
`
`Page 1 of 3
`
`Us Dollar.
`
`Ca
`H
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`Manage
`Education
`All
`SSL
`_
`Online
`Domain Web Sites
`__
`__ &H°=ti9 . Marketing EM”
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`
`WHOIS Search Results
`
`
`Your WHOIS Search Results
`
`openpvnnet
`
`registrant. Learn More
`
`HA5; N91
`AVMLABLE
`
`Make an instant. anonymous offer to the current domain
`
`;l§_n0“0l<l*'ll-'lRl< it 93 are -2
`
`The data contained in GoDaddy.com. lnc.'s whole database.
`while believed by the company to be reliable, is provided "as is”
`with no guarantee or warranties regarding its accuracy. This
`infonnation is provided for the sole purpose of assisting you
`in obtaining information about domain name registration records.
`Any use of this data for any other purpose is expressly forbidden without the prior mitten
`pennission of GoDaddy.oom. inc. By submitting an inquiry.
`in particular,
`you agree to these tenns of usage and limitations of warranty.
`you agree not to use this data to allow. enable. or otherwise make possible.
`dissemination or collection of this data. in part or in its entirety. for any
`purpose. such as the transmission of unsolicited advertising and
`and solicitations or any kind. including spam. You further agree
`not to use this data to enable high volume. automated or robotic electronic
`processes designed to collect or compile this data for any purpose.
`including mining this data for your own personal or commercial purposes.
`Please note: the registrant of the domain name is specified
`in the "registrant" field.
`In most cases. GoDaddy.oom. inc.
`is not the registrant of domain names listed in this database.
`
`g
`
`-.
`
`Registrant:
`EnReach Technology. inc.
`
`Registered through: GoDaddy.com, inc. (http:r'iwww.godaddy.com)
`Domain Name: OPENPVR.NE'l'
`
`
`
`'
`.
`-
`
`_
`-
`
`3: SEARCH ASA
`
`Enter a search
`
`
`.91" assesses:
`
`Search by:
`_
`(5 D—°J-'fl3lILN
`(-_
`lEAd_d[9§
`
`http:i'r’www.networksoIutions.comfwhois-searchr'openpvr.net
`
`5r'21l2009
`
`

`
`openpvnnet WHOIS domain registration information from Network Solutions
`
`Page 2 of 3
`
`Domain servers In listed order:
`NS1.CHlNAQ.COM
`NS2.CHlNAQ.COM
`
`For complete domain details go fl):
`httpzlrwho.godaddy.con-|Mholscl1eck.aspx?Domaln=0PENPVR.NET
`The previous infon-nation has been obtained either directly from the registrant or a registrar of the domain name
`other than Network Solutions. Network Solutions. therefore, does not guarantee its accuracy or completeness.
`
`Show underlyimiregistrynqzajgior this record
`
`current Registrar: GODADDYEOM. INC.
`Record Type:
`Domain Name
`Server Type:
`Indeterminate
`Look Status:
`clientDeleteProhibited
`
`no listings
`DMOZ
`see listings
`‘fl Directory:
`No
`Secure:
`No
`E-commerce:
`Traffic Ranking: Not available
`Data as of:
`22-Apr-2008
`
`Pay Per Click from Network
`Soiutions
`Create and manage your lag
`ge_r__g_|i_c,-ic ggvertising from as
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`SE2 H2009
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`Page 3 of 3
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`II\v.‘Ia'oh.*nm _
`JESJITORSE I
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`httpzflwww.networksolutions.corm’whois-searchfopenpvnnet
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`5/2119009
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`

`
`EXHIBIT A 3
`
`

`
`openpvnorg WHOIS domain registration information from Network Solutions
`
`CUSIDMEFFEWEMGMDQDR 1 Give Us Your Ideas 3 About Us i MySoiution$p_o,if""
`
`,
`Networksoiutlonst
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`openpvnorg
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`registrant
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`mmgg N3-f
`AVMLABLE
`
`Make an instant. anonymous offer to the current domain
`
`NOTICE: Access to .ORG WHOIS information is provided to assist persons in
`detennining the contents of a domain name registration record in the Public interest
`Registry
`registry database. The data in this record is provided by Public interest Registry
`for infonnationai purposes only. and Public interest Registry does not guarantee its
`accuracy. This service is intended only for query-based access. You agree
`that you will use this data only for lawful purposes and that. under no
`circumstances will you use this data to: (a) allow. enabte. or otherwise
`support the transmission by e-mall. telephone. or facsimile of mass
`unsolicited. commercial advertising or solicitations to entities other than
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`Registry Operator or any lCANN—Accredited Registrar. except as reasonabty
`necessary to register domain names or modify existing registrations. All
`rights reserved. Public interest Registry reserves the light to modify these terms at any
`time. By submitting this query, Wu agree to abide by this policy.
`Domain |D:D33520584-LROR
`Domain Name:OF'ENPVR.0RG
`Created 0n:25-Aug-2000 04:20:33 UTC
`Last Updated 0n:26—Aug-2003 13:16:19 UTC
`Expiration Date:25-Aug-2009 04:20:33 UTC
`Sponsoring RegistranGoDacidy.com. Inc. {R91-LROR)
`StatLIs:Ci.|ENT DELETE PROHIBITED
`Status:Ci.|ENT RENEW PROHIBITED
`Status:CL|ENT TRANSFER PROHIBITED
`Status:CL|ENT UPDATE PROHIBITED
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`openpviaorg WI-IOIS domain registration information from Network Solutions
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`Registrant iD:GODA-021725770
`Registrant Name:Bo Wu
`Registrant 0rganEzation:EnReach Technology. Inc.
`Registrant Street1:4-B55 Old ironsides Drive. Suite 460
`Registrant Street2:
`Registrant Streets:
`Registrant City:Santa Clara
`Registrant State!Provlnce:Callfernla
`Registrant Postal Code:95U54
`Registrant Country:US
`Registrant Phone:+1.4089886866
`Registrant Phone Ext.:
`Registrant FAX:
`Registrant l‘-‘AX Ext:
`Registrant Emai|:bowLi@enreach.com
`Admin ID:GODA-221725770
`Admin Narne:Be Wu
`Admin Organization:EnReach Technology. inc.
`Admin Street1:2130 Gold Street
`Admin Street2:
`Admin Street3:
`Admin City:San Jose
`Admin StatefProvince:California
`Admin Postal Code:95EiD2
`Admin Country:US
`Admin Phone:+1.40B958B200
`Admin Phone at
`Admin FAX:+1.4DB9538209
`Admin FAX Ext.:
`Admin Emai|:bowI.I@enread1.com
`Tech ID:GODA-121725770
`Tech Nameznomain Registrar
`Tech 0rganizatlon:Register.Com
`Tech Street1:575 8th Avenue
`Tech Street2:11th Floor
`Tech Streets:
`Tech City:New York
`Tech State!F'rovince:New York
`Tech Postal Code:10018
`Tech Country:US
`Tech Phone:+1.9D27492701
`Tech Phone Ext:
`Tech FAX:+‘i.902749542Q
`Tech FAX Ext:
`Tech Emailzdomain-registrar@reglster.com
`Name Server:NS1.CHiNAQ.COM
`Name Server:NS2.CHiNAQ.COM
`Name Server:
`Name Server:
`Name Server:
`Name Server:
`Name Server:
`Name Server.
`Name Server.
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`http:;'!www.networksolutions.comfwhois-search/openpvlzorg
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`5i'21!2009
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`openpvnorg WHOIS domain registration information fiom Network Solutions
`
`Page 3 of 4
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`Name Semen
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`The previous infonnalion has been obtained either directly from the registrant or a registrar of the domain name
`other than Network Soiutions. Network Solutions. therefore, does not guarantee its accuracy or completeness.
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`‘Show I,I__r_1__d_e_r_|ying registry data for this record
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`Record Type: Domain Name
`ServerType:
`lndetenninete
`DMOZ
`no listings
`YI Directory:
`see listings
`: Secure:
`No
`i E-commerce:
`No
`
`Traffic Ranking: Not available
`Data as of:
`22-Apr-2003
`
`design fee
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`SE2 H2009
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`openpvnorg WHOIS domain registration information from Network Solutions
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`Page 4 of 4
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`SOLUTIONS TO GET
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`5;'21:’2009
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`

`
`EXHIBIT B
`
`

`
`5\eoe~.1a~m.nm:~.r»--
`s-—au--In--a—un-cum‘-JO\l.J'i-P-U-*1‘-3
`
`11
`
`J. JAMES LI (SBN 202855)
`DAVID PEREZ (SBN238136)
`GREENBERG TRAURIG, LLP
`1900 University Avenue, Fifth Floor
`East Palo Alto, California 94303
`5 Telephone: (650) 328-8500
`.' Facsimile: (650) 328-8508
`_ Email: 1ij@gtlaw.com
`
`: Attorneys for Applicant,
`5 ‘STAR LINUX, INC.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`OPENTV, l'NC.,
`
`Opposition No. 91 181512
`
`Opposer,
`
`vs.
`
`5 STAR LINUX, INC.,
`
`APPLICANTS REQUESTS FOR
`PRODUCTION OF
`DOCUMENTS, SET ONE
`
`Applicant.
`
`
`PROPOUNDING PARTY?‘ Applicant 5 Star Linux, Inc.
`
`RESPONDING PARTY:
`
`Opposer 0pen'l"V, Inc.
`
`SET NO.:
`
`One
`
`I TO OPPOSER AND ITS ATTORNEYS OF RECORD:
`
`Pursuant to Federal Rule of Civil Procedure 34, Applicant, 5 Star Linux, 1110., request that
`Opposer, OpenTV, Inc. produce the documents described below on July Lg, 2008, at 9:00 a.m.,
`at Greenberg Traurig LLP, 1900 University Avenue, 5th Floor, East Palo Alto, CA 94303, and
`
`5 permit the attorneys for Applicant to inspect and copy them.
`
`This request is governed by the following Definitions and Instructions:
`
`DEFINITIONS
`
`1.
`
`"YOU," “YOUR," and “OPPOSER” means Opposer 0penTV, Inc., and includes
`
`ofiicers, directors, employees, attorneys, authorized agents or other persons acting or pmporting
`
`to act on YOUR behalf‘.
`
`
`Applicant‘: Rcqucsls for Production ol'Docun1cnls, so 011:
`Op¢mTK Inc. v. 5 Sfarlfmoc .l'nc., Opposition NO. 91131512
`SI/346292034 3
`
`

`
`2.
`
`“A}’PLICAN'I"’ means Applicant 5 Star Linux, Inc., and includes officers,
`
`directors, employees, attorneys, authorized agents or other persons acting or purporting to act on
`
`, APPLICANT'S behalf.
`
`3.
`
`The term "DOCUMENT" has the broadest meaning accorded to that term under
`
`the law, and includes, but is not limited to, any kind ofwritten or graphic material, however
`produced or reproduced, ofany kind or description, whether sent or received or neither,
`including originals, copies, drafls and both sides thereof, and including, but not limited to:
`papers, writings, objects, letters, bills, memoranda, electronic mail, notes, notations, work
`papers, reports, books, book accounts, photographs, tangible things, correspondence, reports and
`
`recordings oftelephone conversations, telephone logs, statements, summaries, opinions,
`
`agreements, lodgers, journals, records ofaccounts, checks, summary ofaccounts, spreadsheets,
`
`receipts, balance sheets, income statements, confirmation slips, questionnaires, desk calendars,
`
`Q
`
`-
`
`appointment hooks, diaries, graphs, test results, charts, and all of the records kept by electronic,
`
`. photographic or mechanical means and things similar to any of the foregoing, including
`
`' computer media and sound recordings, regardless of their author.
`
`4.
`
`“OPPOSITION” as used herein means YOUR Notice of Opposition, filed
`
`December 26, 2007 in the United States Patent and Trademark Office Before the Trademark
`
`_ Trial and Appeal Board.
`
`5.
`
`“OPENTV" as used herein, shall mean and include YOUR Word Marks identified
`
`G‘-D00‘--.'lO’\Lh-I'5-l-J~3l~}I—|
`\DO0"'--IlO'\Lh-PI-LI-1l\J
`
`I-I
`
`5...: kn
`
`I—lI—.i|-II-lIl|"F|II|I-III)-I-5|-‘oi
`
`20
`
`as OPENTV, in YOUR OPPOSITION, including but not limited to, U.S. Registration No.
`2703881, 2703382, 2635594, and any other‘registrations ofsuch a Word Mark.
`
`6.
`
`"OPENTV H20" as used herein shall mean and include YOUR Word Mark
`
`identified as OPBNTV H20, in YOUR OPPOSITION, including but not limited to, U.S.
`
`Registration No. 3088215, and any other registrations of such a Word Mark.
`
`7.
`
`“OPENSTREAMER" as used herein shall mean and include YOUR Word Mark
`
`identified as OEPNSTREAMER, in YOUR OPPOSITION, including but not limited to, U.S.
`
`Registration No. 2641627, and any other registrations of such a Word Mark.
`
`III
`
`Applicant‘: Requests for Production ot'Docume:a1Ls, Seton:
`Opcnfl’. Inc v. Ssrar Linux, Jm.-., Opposition No. 9] l8l5l2
`311346292034 3
`
`\
`
`

`
`
`
`8.
`“OPENAUTHOR” as used herein shall mean and include YOUR Word Mark
`identified as OPENAUTI-IOR, in YOUR OPPOSITION, including but not limited to, U.S.
`Registration No. 2459555, and any other registrations ofsuch a Word Mark.
`
`9.
`
`“OPENADVAN'i‘AGE" as used herein shall mean and include YOUR Word
`
`Mark identified as OPENADVANTAGE, in YOUR OPPOSITION, including but not limited to,
`U.S. Registration No. 2539307, and any other registrations of such a Word Mark.
`
`' 10.
`“OPENTV PVR” as used herein shall mean and include YOUR alleged Word
`5 Mark identified as OPENTV PVR, in YOUR OPPOSITION.
`_
`11.
`The “OPENTV RELEVANT TIME PERIOD” consists ofthe time period
`- between March I, 1995, through the present, and moving forward.
`
`The “OPENTV H20 RELEVANT TIME PERIOD" consists ofthe time period
`12.
`between February 10, 2002, through the present, and moving forward.
`13.
`The “OPENSTREAMBR RELEVANT TIME PERIOD” consists of the time
`
`period between June 7, 1999, through the present, and moving forward.
`
`The “OPENAUTHOR RELEVANT TIME PERIOD” consists ofthe time period
`I4.
`between April 6, 1999, through the present, and moving forward.
`
`15.
`
`The “OPENADVAI~l‘I‘AGE RELEVANT TIME PERIOD” consists of the time
`
`period between May 1, 1999, through the present, andmoving forward.
`I6.
`The "OPENTV PVR RELEVANT TIME PERIOD" consists ofthe time period
`between August 1, 2005, through the present. and moving forward.
`
`“OWNERSHIP” as used herein means the registration ofthe alleged trademarks
`17.
`at issue, the process involved in registeringthe alleged trademarks and any otherprocesses
`andfor events whereby YOU have allegedly obtained rights to the alleged trademarks at issue.
`
`“USE" as used herein means the initial or first use, the first use in commerce, and
`18.
`any continuing use beyond the first use and first use in commerce ofthe trademarks at issue in
`this case.
`I
`
`boil
`
`u--at-n
`
`3-'$‘~DOfl‘-IO'\U‘I-bu-‘I10
`l—|in1-:i-I._o-an>--I3--At—-\DOfi‘--JO‘\U'l-l1'hUJl\J
`
`20
`
`21 :,
`22
`23
`
`24
`25
`26 -
`
`27
`
`23
`
`III
`
`fl!
`
`. Applicant‘: Requests for Production ol'DocumenIs, So! one
`0pmTi", Inc. v. sswum-, Ina. Oppusiaonno. 931 31512
`SI/3482920343
`
`3
`
`

`
`“PERSON” or “PERSONS" as used herein shall mean any natural person, or any
`19.
`; organization, business, company, firm, corporation, association, joint venture, trust or legal
`
`entity.
`
`20.
`
`"RELATING TO," “DEMONSTR.ATlNG,” "SUPPORTS," or “SUPPORTING”
`
`:
`
`shall mean and include constitute, refer, reflect, discuss, show, demonstrate, or be in any way
`Iogically or factually connected with the matter discussed or identified.
`
`The words "and" and "or" shall be read in the conjunctive and in the disjunctive
`21.
`whereverthey appear, and neither ofthese words shall be interpreted to limit the scope ofthis
`
`. Request.
`
`22.
`
`The use ofa verb in any tense shall be construed as the use ofthe verb in all other
`
`tenses.
`
`The singular form of any word shall be deemed to include the plural. The plural
`23.
`form of any word shall be deemed to include the singular.
`
`INSTRUCTIONS
`
`Should YOU seek to withhold any DOCUMENT based upon some limitation o
`1.
`E discovery (including but not limited to a claim of privilege), YOU shall supply a list of the
`DOCUMENTS for which such limitation ofdiscovery is claimed, indicating:
`
`a.
`
`b.
`
`c.
`
`The identity of each document's author, writer, sender;
`
`The identity of each document's recipient, addressee, or person for whom
`
`it was intended;
`
`The date of creation or transmittal indicated on each document, or an
`
`estimate of that date,
`
`indicated as such, if no date appears on the
`
`document;
`
`cl.
`
`The general subject matter as described on each document, or, if no such
`
`description appears, then some other description sufficient to identify the
`
`document; and,
`
`e.
`
`The claimed grounds for the limitation of discovery (e.g., “attomey—client
`
`privilege")
`
`E.
`
`.
`Applicant’: Requests for Production ofncenments, Set One
`i opium Inc. v. 5 sm-Lmux. Jae. Opposition No. 91131512
`SV345292034 3
`
`4
`
`'
`
`

`
`no
`
`DOCIJIVLENTS REQUESTED
`
`REQUEST NO. 1:
`
`|—|
`
`|—I
`
`3\DOO--SIONUI-I‘:-l..IJt~J
`
`
`[QI--n-I--Ia—-n-—a1-d9-4>---1-:C3\DO0'--.'lO\l-h-lb-UJINJ
`
`IN) 2-:
`
`Any and all DOCUMENTS RELATING TO YOUR purported OWNERSI-IIP Of
`
`OPENTV, as alleged in paragraph 5 of YOUR OPPOSITION.
`
`REQ QUEST N0. 2:
`
`Any and all DOCUMENTS RELATING TO YOUR purported USE of OPENTV during
`
`i
`
`the OPENTV RELEV