Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA330132
`ESTTA Tracking number:
`02/02/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91181775
`Plaintiff
`Ride Snowboard Company
`Cindy L. Caditz
`Christensen O'Connor Johnson Kindness
`1420 5th Ave., Suite 2800
`Seattle, WA 98101
`UNITED STATES
`litdoc@cojk.com, cindy.caditz@cojk.com
`Opposition/Response to Motion
`Cindy L. Caditz
`cindycaditz@dwt.com, sarahduran@dwt.com, ronrutherford@dwt.com
`/Cindy L. Caditz/
`02/02/2010
`Combined doc - Request for Discovery and Opposition to MSJ.PDF ( 34 pages
`)(1101830 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`OPPOSITION No. 91181775
`
`REQUEST FOR DISCOVERY UNDER
`RULE 56(f) AND OPPOSITION TO
`MOTION FOR SUMMARY
`JUDGMENT
`
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`Ride Snowboard Company.,
`
`Opposer,
`.
`
`V.
`
`Grendene S.A.,
`
`Applicant.
`
`MOTION FOR DISCOVERY UNDER RULE 56(1) AND OPPOSITION TO MOTION
`FOR SUMMARY JUDGMENT
`
`I.
`
`INTRODUCTION
`
`Opposer Ride Snowboard Company (“Ride”) requests that the Board grant a continuance
`
`of Applicant Grendene S.A.’s motion for summary judgment pursuant to Rule 56(f) of the
`
`Federal Rules of Civil Procedure to allow Ride the opportunity to continue discovery. Ride
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`needs the discovery to respond to Applicant’s claim that it used its RIDER mark in association
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`with footwear in the winter sports industry before Ride used the mark RIDE in association with
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`snowboard boots.
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`In the alternative, if the Board denies Ride’s request to conduct discovery pursuant to a
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`continuance granted under Rule 56(f), Ride opposes Applicant’s Motion for Summary Judgment.
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`Applicant’s prior registration of a stylized version of RIDER for sandals does not support the
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`finding that Applicant is entitled to summary judgment rejecting Ride’s opposition, which is
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`based on incontestable Registration No. 1,878,248 issued in 1995 and which confers upon
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`Opposer a priority date of September 3, 1992. Applicant’s Application Serial No. 76/669,723,
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`which is the subject of this opposition, seeks registration of the mark RIDER in standard
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`characters for the broad claim of footwear. Applicant’s prior Registration No. 1,857,737 for the
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`mark RIDER claimed a stylized mark and was limited to sandals. Applicant’s prior registration
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`does not, therefore, provide the basis for a claim to the broad registration of the mark RIDER in
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`standard characters for the broad claim of “footwear.”
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`II.
`
`BACKGROUND
`
`Ride is the owner of U.S. Trademark Registration No. 1,878,248 for the mark RIDE in
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`standard characters for snowboards and accessories for snowboards;.namely, snowboard boots,
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`snowboard bindings and parts therefor, snowboard boot bags and snowboard leashes in
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`International Class 28. See Declaration of Julie VanDerZanden (VanDerZanden Decl.) and Ex.
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`A (emphasis added). Registration No. 1,878,248, issued February 7, 1995, sets forth a date of
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`first use of September 1992, and pursuant to 15 U.S.C. § 1051(b) represents a priority date of
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`September 3, 1992. Registration No. 1,878,248 is currently valid, subsisting and incontestable.
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`On October 11, 1994, Registration No. 1,857,737 was issued to Applicant claiming the
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`mark RIDER in a stylized format and claiming the goods “shoes; namely, molded slip-on sandals
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`for casual wear” in International Class 25. See Declaration of Michael J. Bradford, Exhibit A.
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`Registration No. 1,878,248 claims the stylized mark RIDER.
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`On November 30, 2006, Applicant filed Serial No. 76/669,723 seeking registration for
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`RIDER in standard characters and broadly claiming “footwear” in International Class 25. See
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`Application Serial No. 76/669,723 file history which is of record pursuant to 37 C.F.R.
`
`§ 2.122(b)(1). In Application Serial No. 76/669,723 and in the Declarations submitted in support
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`of its Motion for Summary Judgment, Applicant claims a date of first use of July 1989. Id.;
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`Motion for Summary Judgment at 3.
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`Ride has opposed Application Serial No. 76/669,723 for RIDER in standard characters on
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`the basis that Applicant is not entitled to the full scope of the broad claim of “footwear” sought
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`by that application. The Notice of Opposition filed in this Opposition specifically claims that
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`registration of the mark RIDER for all footwear causes injury and damage to Opposer’s
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`I exclusive rights in the mark RIDE in the winter sports industry. See Notice of Opposition 1] 4
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`and 11 5. To obtain evidence relevant to Applicant’s affinnative defense claiming prior use of the
`mark RIDER, Ride served by mail its First Set ofInterrogatories and Requests for Production on
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`Applicant on November 25, 2009. See Declaration of Cindy Caditz (Caditz Decl.) at 1] 2 and Ex.
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`A. Applicant’s responses were due on December 30, 2009. Id.
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`On January 7, 2010 Applicant filed a Motion seeking to compel Applicant’s provision of
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`responses to discovery, which was denied without prejudice as premature pending disposition of
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`Applicant’s Motion for Summary Judgment.
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`To date, Applicant has not provided any answers to discovery.
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`III.
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`ARGUMENT AND AUTHORITY
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`A.
`
`Ride needs the discovery it requested to respond to Applicant’s claim that it
`has priority use on footwear.
`
`Pursuant to 37 CFR § 2.127(e)(1) and Federal Rule of Civil Procedure 56(f), the Board
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`may “order a continuance to enable affidavits to be obtained, depositions to be taken, or other
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`discovery to be undertaken.” “It is well settled that the granting of a motion for summary
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`judgment is inappropriate where the responding party has been denied discovery needed to
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`enable it to respond to the motion. Orion Group, Inc. v. The Orion Ins. Co. P.L.C., 2
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`U.S.P.Q.2D 1923 (1989) (citing Dunkin ’ Donuts ofAm, Inc. v. Metallurgical Exoproducts Corp.,
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`6 USPQ2d 1026 (Fed. Cir. 1988)).
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`The discovery that Ride seeks is germane to the issues raised in Applicant’s Motion for
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`Summary Judgment. Applicant claims it has rights in the mark claimed by Application Serial
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`No. 76/669,723 that are prior to any rights owned by Opposer because it has used the mark on
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`footwear with such goods as to give Applicant rights that are superior to Opposer’s rights in the
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`winter sports industry. The interrogatories and requests for production served by Ride seek
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`information about Applicant’s use of the mark RIDER on footwear other than sandals. For
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`example, the interrogatories served by Ride specifically sought information relating to
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`Applicant’s sale of goods with the RIDER mark on “ ootwear or products that are not sandals.”
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`See Interrogatory No. 1, Ex. A of Caditz Declarationsubmitted herewith, emphasis added. Ride
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`also requested documents relied on by Applicant in responding to Interrogatory No. 1. See
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`Request for Product No. 1, Ex. A of Caditz Declaration submitted herewith. This information is
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`clearly within Applicant’s control and not available to Ride. Ride needs the information to
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`properly respond to Applicant’s claim of prior rights in the mark RIDER for the broad claim of
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`footwear, including the winter sports industry. Accordingly, the Board should grant Ride’s
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`request for discovery under Rule 56(f).
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`B.
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`Applicant’s motion should be denied because its prior registration does not
`confer on Applicant the exclusive right to registration of RIDER for the
`broad claim of all footwear.
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`In the alternative, even if the Board denies Ride’s request for discovery under Rule 56(f),
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`Applicant has failed to introduce any evidence that shows it is entitled, as a matter of law, to
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`summary judgment on the basis of prior use of RIDER with footwear in the winter sports
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`industry.
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`Applicant’s prior registration and use supports ownership of the a stylized mark RIDER
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`for “shoes; namely, molded slip-on sandals for casual wear.” A prior registration of the mark
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`RIDER claiming sandals does not entitle Applicant to registration of RIDER in standard
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`characters for the broader category of footwear. See In re Best Software, 63 USPQ2d 1109, 1113
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`(TTAB 2002) (stating that “ownership of an incontestable registration does not give the applicant
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`a right to register the same or similar mark for different goods or services, even if they are
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`closely related to the goods or services set forth in the incontestable registration”); In re Loew ’s
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`Theatres Inc., 769 F.2d 764, 768, 226 USPQ 865, 869 (Fed. Cir. 1985) (“Nothing in the statute
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`provides a right ipso facto to register a mark for additional goods when items are added to a
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`company’s line or substituted for other goods covered by a registration”); In re Merrill Lynch,
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`Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1569 (Fed. Cir. 1987) (“The Board correctly held
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`that appe1lant’s incontestable registration for specific services involving credit cards does not
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`automatically entitle appellant to a registration for broader financial services”). The
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`incontestability of Applicant’s prior registration does not change the analysis because a
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`registered mark is incontestable only in the form registered and for the goods or services
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`claimed. See In re Merrill Lynch, 828 F.2d 1567, 1568, 4 U.S.P.Q.2d 1141, 1141 (Fed. Cir.
`
`1987); In re Bose Corp., 772 F.2d 866, 873, 227 U.S.P.Q. 1, 6-7 (Fed. Cir. 1985). Applicant
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`claims it has prior use based on its earlier registration for a very narrow category of goods
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`i.e., sandals. This is simply insufficient to sustain the claim for the entirety of the broader
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`category of footwear in view of Applicant’s prior Registration No. 1,878,248 issued in 1995 and
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`Applicant’s priority date of September 3, 1992 in the mark RIDE for snowboard boots.
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`Applicant also has also failed to present evidence to show it has use of RIDER with
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`footwear in the winter sports industry that is prior to any rights owned by Opposer.
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`First and most important, none of the evidence introduced by Applicant demonstrates use
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`of the mark RIDER in association with footwear in the winter sports industry.
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`Second, Applicant proffered invoices, however invoices are not sufficient evidence of
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`use. See S. Indus, Inc. v. Stone Age Equip, Inc., 12 F. Supp. 2d 796, 49 USPQ2d 1071 (N.D. Ill.
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`1998); In re Chicago Rawhide Mfg. Co., 455 F.2d 563, 173 USPQ 8 (C.C.P.A. 1972). Similarly,
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`Applicant’s declarations and advertisements are of no value. The declarations are vague, self-
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`serving and lacking in evidentiary support. See S. Indus., Inc., 12 F. Supp. 2d at 809. The
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`advertisements ran in 1997 or later, long after Applicant’s claimed priority date, and, in any
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`event, advertisements are also insufficient evidence of use of a trademark. See In re MediaShare
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`Corp., 43 USPQ2d 1304 (TTAB 1997) (stating that “any material whose function is simply to
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`tell a prospective purchaser about the goods or to promote the sale of the goods is unacceptable
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`to support trademark use”).
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`In summary, Applicant has failed to show it has prior use of or prior rights in the mark
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`RIDER in the winter sports industry and is entitled to summary judgment. Applicant’s prior
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`registration for sandals does not confer rights to the broader category of footwear. Applicant
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`has produced no evidence to support its use of and rights to the mark for footwear in the winter
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`sports industry and has produced no evidence that shows use of RIDER as a trademark.
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`IV.
`
`CONCLUSION
`
`For the foregoing reasons, the Board should grant Opposer’s request to continue briefing
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`until Applicant has responded to Opposer’s outstanding discovery and any other discovery
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`appropriate pursuant to Rule 56(f). In the alternative, the Board should deny Applicant’s motion
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`because Applicant has not shown prior use of the RIDER mark on footwear in the winter sports
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`industry or prior use of RIDER as a trademark.
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`Respectfully submitted this 3: day of February, 2010.
`
`DAVIS WRIGHT TREMAINE LLP
`
`
` Cindy L. Caditz
`
`Sarah K. Duran
`
`Attome s for Opposer Ride Snowboard Company
`1201 3' Avenue, Suite 2200
`Seattle, WA 98101-3045
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`CERTIFICATE OF FILING
`
`I hereby certify that this Request For Discovery Under Rule 56(F) And Opposition To
`Motion For Summary Judgment is being filed with the Trademark Trial and Appeal Board using
`the ESTTA filing system of the U.S. Patent and Trademark Office on the below date.
`
`Date:
`
`7- 20/’
`
`é
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`‘,
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`CERTIFICATE OF SERVICE
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`I hereby certify that the Request For Discovery Under Rule 56(F) And Opposition To
`Motion For Summary Judgment is being duly served upon Applicant by mailing a copy thereof
`via the U.S. Postal Service in a sealed envelope as first class mail with postage thereupon fiilly
`prepaid and addressed to:
`
`Michael J. Bradford, Esq.
`Luedeka, Neely & Graham, P.C.
`P.O. Box 1871 .
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`Knoxville, TN37901
`I Z’2'Zo/O
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`Date:
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`
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`5’
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ride Snowboard Company,
`
`Opposer,
`
`V.
`
`Grendene S.A.,
`
`Applicant.
`
`OPPOSITION No. 91181775
`
`DECLARATION OF JULIE
`VANDERZANDEN IN SUPPORT OF
`
`OPPOSER’S REQUEST FOR
`DISCOVERY UNDER RULE 56(F)
`AND OPPOSITION TO MOTION FOR
`
`SUMMARY JUDGMENT
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`\J\/g/\./\a\/\J\/\J\./\-/xg
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`I, Julie VanDerZanden, declare and state as follows:
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`1.
`
`I am Vice President, General Counsel for K~2 Corporation.
`
`I have personal
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`knowledge of the matters referred to in this declaration. If called as a witness, I am competent to
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`testify to these matters.
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`2.
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`Ride Snowboard Company, a Washington Corporation, has been merged into K-2
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`Corporation.
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`3.
`Ride is the owner of U.S. Trademark Registration No. 1,878,248 for the mark
`RIDE in standard characters for snowboards and accessories for snowboards; namely, snowboard
`
`boots, snowboard bindings and parts therefor, snowboard boot bags and snowboard leashes in
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`International Class 28. Attached hereto as Exhibit A is a true and correct copy of the
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`registration.
`
`//
`
`//
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`//
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`I declare under penalty of perjury that the foregoing is true and correct.
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`DATED this
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`/67‘
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`day of February, 2010, at Seattle, Washington.
`
`' 1/
`Julie VanDerZan e
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`DWT 13945724vl 0050033~O0l868
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`CERTIFICATE OF FILING
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`I hereby certify that the Declaration of Julie VanDerZanden in Support of Opposer’s
`Request for Discovery Under Rule 56(f) and Opposition to Motion for Summary Judgment is
`being filed with the Trademark Trial and Appeal Board using the ESTTA filing system of the
`U.S. Patent and Trademark Office on the below date.
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`Date: ¢ 2 L»/v
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`4
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`r
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`I
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`CERTIFICATE OF SERVICE
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`I hereby certify that the Declaration of Julie VanDerZanden in Support of Opposer’s
`Request for Discovery Under Rule 56(1) and Opposition to Motion for Summary Judgment is
`being duly served upon Applicant by mailing a copy thereof via the U.S. Postal Service in a
`sealed envelope as first class mail with postage thereupon fully prepaid and addressed to:
`
`Michael J. Bradford, Esq.
`Luedeka, Neely & Graham, P.C.
`P.O. Box 1871
`
`Date:
`
`Knoxville, TN 37901
`
`Z'2’Z0(O
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`
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`EXHIBIT AEXHIBIT A
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`

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`1736893
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`
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`
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`.Pi—B31;3§.E'3i1_l§.5 §J1L4‘IFL___'. @,@.&E.lB
`UNITED STATES DEPARTMENT OF COMMERCE
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`
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`
`
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`CERTIFIED TO BE A TRUE COPY WHICH IS IN FULL FORCE AND
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`United States_ Patent and Trademark Office
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`February 01, 2010 -
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`THE ATTACHED U.S. TRADEMARK REGISTRATION 1,878,248 IS
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`
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`EFFECT WITH NOTATIONS OF ALL STATUTORY ACTIONS TAKEN
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`THEREON AS DISCLOSED BY THE RECORDS OF THE UNITED STATES
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`PATENT AND TRADEMARK OFFICE.
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`
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`REGISTERED FOR A TERM OF 10 YEARS FROM February 07, 1995
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`
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`1st RENEWAL FOR A TERM OF 10 YEARS FROM February 07, 2005
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`
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`SECTION 8 & 15
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`SAID RECORDS SHOW TITLE TO BE IN:
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`K-2 CORPORA TION
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`AN IN CORP
`
`
`
`,
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`By Authority of the
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`
`
`Under Secretary of Commerce for Intellectual Property
`and Director of the United S es Patent nd Trademark Office
`
`
`
`Iuimvvnnu-IHN9
`
`Certifying Officer
` umI:I-‘In!
`sum3
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`
`

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`9 Int. Cl.: 28
`
`Prior U.S. Cl.: 22
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`United States Patent and Trademark Office
`
`Reg. No. 1,878,248
`Registered Feb. 7, 1995
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`RIDE
`
`RIDE SNOWBOARD COMPANY (WASHING-
`TON CORPORATION)
`8665 — 154111 AVENUE N.E.
`REDMOND, WA 93052
`
`SNOWBOARD LEASHES,
`CL. 22).
`
`IN CLASS 28 (U.S.
`
`FIRST USE
`12-0-1992.
`
`9-0-1992;
`
`IN COMMERCE
`
`,FOR: SNOWBOARDS AND ACCESSORIES
`FOR SNOWBOARDS; NAMELY, SNOWBOARD
`BOOTS, SNOWBOARD BINDINGS AND PARTS
`THEREFOR, SNOWBOARD BOOT BAGS AND
`
`SN 74-3 10,891, FILED 9-3-I992.
`
`PAUL KRUSE, EXAMINING ATTORNEY
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ride Snowboard Company,
`
`Opposer,
`
`V.
`
`Grendene S.A.,
`
`Applicant.
`
`OPPOSITION NO. 91181775
`
`.
`DECLARATION OF CINDY CADITZ
`
`IN SUPPORT OF OPPOSER’S
`
`REQUEST FOR DISCOVERY UNDER
`RULE 56(F) AND OPPOSITION TO
`MOTION FOR SUMMARY
`
`JUDGMENT
`
`%\2%/é%%/§/\./\/\/\/\./
`
`1, Cindy Caditz, declare and state as follows:
`
`1.
`
`I am counsel of record for Ride Snowboard Company in Opposition No.
`
`91181775.
`
`I have personal knowledge of the matters referred to in this declaration. If called as a
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`witness, I am competent to testify to these matters.
`
`2.
`
`To obtain evidence relevant to Applicant’s affirmative defense claiming prior use
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`of the mark RIDER, I served by mail Ride’s First Set of Interrogatories and Requests for
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`Production on Applicant on November 25, 2009. Attached hereto as Exhibit A is a true and
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`correct copy of Opposer’s First Set of Interrogatories and Requests for Production. Applicant’s
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`responses were due on December 30, 2009.
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`I declare under penalty of perjury that the foregoing is true and correct.
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`DATED this V?’ day of February, 2010, at Seattle, Washington.
`
`Cindy Caditz
`
`DWT l3945724vl 0050033-001868
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`CERTIFICATE OF FILING
`
`I hereby certify that the Declaration of Cindy Caditz in Support of Opposer’s Request for
`Discovery Under Rule 56(f) and Opposition to Motion for Summary Judgment is being filed
`with the Trademark Trial and Appeal Board using the ESTTA filing system of the U.S. Patent
`and Trademark Office on the below date.
`
`Date:
`
`Z 2010
`
`£%4¢é '
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the Declaration of Cindy Caditz in Support of Opposer’s Request for
`Discovery Under Rule 56(f) and Opposition to Motion for Summary Judgment is being duly
`served upon Applicant by mailing a copy thereof via the U.S. Postal Service in a sealed envelope
`as first class mail with postage thereupon fully prepaid and addressed to:
`
`Michael J. Bradford, Esq.
`Luedeka, Neely & Graham, P.C.
`P.O. Box 1871
`
`Knoxville, TN 37901
`Z’Z'Z0(O
`
`Date:'
`
`; Q g ;
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`DWT l3945724vl 0050033-001868
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`

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`
`
`EXHIBIT AEXHIBIT A
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`RIDE SNOWBOARD COMPANY,
`
`Opposition No. 91 181775
`
`V
`
`"
`GRENDENE SA,
`
`Opposer,
`
`Applicant.
`
`OPPOSER'S FIRST
`INTERROGATORIES AND I
`REQUESTS FOR PRODUCTION
`To APPLICANT
`
`
`A TO:
`Applicant Grendene S.A., and its attorneys of record
`
`Pursuant to Rules 26, 33 and 34 of the Federal Rules of Civil Procedure, 37 C.F.R.
`
`§ 2.120, and Rule 406 of the T.B.M.P., Opposer, Ride Snowboard Company, hereby requests
`
`that Applicant, Grendene S.A., answer the following interrogatories and requests for
`
`production separately and fully in writing and under oath and that the answers be signed by
`
`the party making them and be served upon counsel for Opposer at Christensen O'Connor
`Johnson Kindnesspuc, 1420 5th Ave., Suite 2800, Seattle, Washington 98101, within
`
`thirty (30) days from the date of service of these interrogatories and requests for production.
`
`INSTRUCTIONS AND DEFINITIONS
`
`1.
`
`As used herein, "Applicant" shall mean Grendene S.A., a corporation of Brazil
`a mailing
`address of Av. Duque
`de Caxias,
`I 131-A C.
`Postal,
`230,
`
`having
`
`95.180 - Farroupilha RS, Brazil (hereafter "Grendene" or ''Applicant'') and related companies,
`
`employees, officers, agents, and licensees of Grendene S.A., and all other persons or entities
`
`in privity with Grendene S.A., with respect to the matters inquired of herein.
`
`2.
`As used herein, "Opposer" shall mean Ride Snowboard Company, a division of
`K-2 Corporation, having a place of business at 4201 6”‘ Avenue South, Seattle, WA 98108,
`
`(hereafter "Ride") and related companies, employees, officers, agents, and licensees of Ride"
`
`Snowboard Company, and all other persons or entities in privity with Ride, with respect to the
`
`matters inquire-d of herein.
`
`>—- DJ
`
`15
`
`17
`
`18
`
`20
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`OPPOSER'S FIRST SET
`OF INTERROGATORIES AND RFP'S - 1
`
`_
`
` T%I\}§m
`JOHNSON
`KINDNPSSPLLC
`
`LAW OFFICES
`;f,,”,f’,§‘,",,',‘“°-
`Spzfllp wn oz 1 m
`
`

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`3.
`
`As used herein, "person" or "persons" shall mean both individuals and
`
`companies.
`
`4.
`
`As used herein, "company" and "companies" shall mean a corporation, joint
`
`stock company, partnership, joint venture, sole proprietorship, trust association, firm or any
`
`other business entity in whatever form located anywhere in the world.
`
`5.
`
`Where identification of a i is requested, please state the person's name,
`
`citizenship, presentbusiness and business address, present employer and position held and, if
`
`the person is not an employee of Applicant, the person's last known home address, home
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`telephone number, and business telephone number.
`6.
`Where identification of a company is requested, please state the company's
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`correct legal name, the primary trade name used by the company, the" company's address, and
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`the telephone number of the principal officer of the company.
`
`7.
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`As used herein, "document" and "documents" shall be construed in its broadest
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`sense, and includes any original, reproduction, or non-identical copy of any kind of written,
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`typed, printed, recorded or graphic matter, photographic matter,
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`tapes, records, or other
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`devices, however produced or reproduced, in Applicant's actual or constructive possession,
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`custody or control, or of which Applicant has knowledge, wherever located, including notes,
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`drafts, and copies on which any mark, alteration, writing or any other change from the
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`original has been made.
`The following are non-limiting examples of "documents":
`correspondence, agreements, financial statements,
`invoices, minutes, memoranda, notes,
`
`diaries,
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`records, computer
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`readable files,
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`inter-office communications, electronic data
`
`processing cards and tapes, tapes or other recordings, portable electronic storage media,
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`telegrams, photographs, drawings, reports, advertising and promotional materials, packaging
`
`materials, printed matter and publications. Each copy of a document embodying or having
`
`attached to it any alterations, notes, comments, or other materials not embodied in or attached
`
`to the original or any other copy being identified, shall be deemed as separate documents.
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`OPPOSER'S FIRST SET
`or INTERROGATORIES AND RFP'S - 2
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` T%I\}§m
`JOHNSON
`KINDNESSMC
`
`LAW OFFICES
`;1?,Z§;“o3”°'
`Seattle. WA 98101
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`

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`8.
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`"All documents" means every known document, whether an original or copy,
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`as above defined, and every such document that can be located or discovered by reasonable
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`diligent effort.
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`9.
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`Where identification of a document is requested, please state the date of the
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`, document, identify the author, specify the type of document (e.g., letter, memorandum, email,
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`telegram, drawing, etc.) or some other means of identifying it, identify each of the recipients,
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`specify its present location, and identify its custodian and, if a document is no longer in
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`Applicant's possession, custody or control, please state what disposition was made of the
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`document and when.
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`10.
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`As used herein "product" or "products" shall mean "good" or "goods" and vice
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`versa.
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`11. Where identification of a pilfl is requested, state the identity of the
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`manufacturer of the product, the model number, or identifying indicia of the product, the
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`generic name of the product and basic purpose or use of the produci.
`12.
`As used herein, "and" as well as "or" shall be construed disjunctively or
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`conjunctively as necessary in order to bring within the scope of the interrogatory or request all
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`information which would otherwise be construed as outside its scope.
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`13.
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`The singular shall include the plural, and the present tense shall always include
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`the past tense and vice versa, in order to bring within the scope of the interrogatory or request
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`all information that might otherwise be construed to be outside its scope.
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`14.
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`If Applicant does not respond to any interrogatory, or if Applicant withholds
`
`any document because of a claim of privilege, set forth the claim of privilege, the facts upon
`which Applicant relies to support the claim of privilege, and furnish a list identifying each
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`document for which privilege is claimed, together with the following information:
`
`(a)
`
`A brief description of the nature and subject matter, including the title
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`and type of document;
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`(b)
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`The date of the document;
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`OPPOSER'S FIRST SET
`or INTERROGATORIES AND RFP'S — 3
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` T%I\}§m
`JOHNSON
`KJNDNESSMC
`
`LAW OFFICES
`;1?,Z§;“o3“°-
`Seattle. WA 98101
`
`

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`(C)
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`The
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`name(s)
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`and
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`title(s)
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`of
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`the
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`author(s),
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`contributor(s),
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`publisher(s),etc.;
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`(d)
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`The narne(s) and tit1e(s) of the person(s) to whom the document is
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`addressed;
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`(6)
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`The narne(s) and tit1e(s) of the person(s) to whom the document was
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`(D
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`(g)
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`distributed or made available;
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`The number of pages; and
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`The interrogatory to which the document or withheld information is
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`otherwise responsive.
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`If a claim of privilege is directed to an oral communication, please provide the
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`following:
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`(a)
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`(b)
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`(C)
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`(d)
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`.<\
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`(6)
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`The name of the person making the communication;
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`The names of the persons present while the communication was made;
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`When not apparent, the relationship of the person or persons present to
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`the person making the communication;
`The date and place ofthe communication;
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`The subject matter of the communication; and
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`(f)
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`The
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`interrogatory to which oral
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`communication is otherwise
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`responsive.
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`15.
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`Each interrogatory or request that includes itemized parts is intended to and
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`does request that each and every part be answeredwith the same force and effect as if such
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`part were the subject of or asked by separate interrogatory or request, despite the fact that the
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`parts are portions of a single interrogatory or request.
`
`16.
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`Applicant's Mark shall mean the mark claimed by U.S. Application Serial
`
`No. 76/669,723 or any mark that includes the word "RIDER" or includes the word "RIDE".
`
`OPPOSER‘S FIRST SET
`OF INTERROGATORIES AND RFP'S — 4
`
`CHRISTENSEN
`O'CONNOR
`
`JOHNSON Hm
`KINDNESS
`
`LAW OFFICES
`1420 5th Ave ,
`Suite 2800
`Seanle. WA 98101
`
`#-
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`17.
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`The following interrogatories and requests are continuing in character and,
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`therefore, require Applicant to file supplemental" answers and/or responses if further or-
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`different information is secured or available prior to the trial of this proceeding.
`
`INTERROGATORY NO. 1:
`
`INTERROGATORIES
`
`Identify each good and service on which Applicant has used Applicant's Mark and
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`separately identify the date Applicant's Mark was first used in the U.S. or in commerce with
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`the U.S. with each of these goods and services.
`
`In response to this Interrogatory specifically
`
`state whether Applicant has ever used Applicant's Mark on footwear or products that are not
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`sandals.
`
`ANSWER:
`
`INTERROGATORY NO. 2:
`
`State when Applicant created Applicant's Mark and identify the people involved in the
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`creation of Applicant's Mark. State when Applicant was first aware of Opposer"s Mark RIDE
`
`as used in association with snowboards or clothing.
`
`ANSWER:
`
`INTERROGATORY NO. 3:
`
`Describe Applicant's actual and intended channels of trade and manner of distribution
`
`of each good and service identified in response to Interrogatory No. l.
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`\O'OO\)ON
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`OPPOSER'S FIRST SET
`or INTERROGATORIES AND RFP'S — 5
`
` T%I\l§W LAW OFFICES
`JOHNSON
`;1?,‘:§;'1,’3”°'
`KINDNESSM‘
`smug. WA 98101
`
`

`
`ANSWER:
`
`U.)
`
`INTERROGATORY NO. 4:‘
`
`State which companies or persons distribute goods bearing Applicant's Mark in the
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`U.S. and describe the relationship between each such company or person and Applicant
`
`ANSWER:
`
`INTERROGATORY NO. 5:
`
`Identify each good and service with which Applicant is currently using Applicant's
`
`Mark.
`
`ANSWER:
`
`INTERROGATORY NO. 6:
`
`For each year from the date of first use to the present, state the amount, both in units
`
`and in dollars, which Applicant has sold or distributed each good or service identified in
`
`response to Interrogatory No. 1.
`
`ANSWER:
`
`INTERROGATORY NO. 7:
`
`Identify the geographic areas in which Applicant has sold or provided each good and
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`service identified in response to Interrogatory No. 1.
`
`OPPOSER'S FIRST SET
`OF INTERROGATORIES AND RFP'S - 6
`
` T%I~I§m
`JOHNSON
`KJNDNESSM‘
`
`LAW OFFICES
`$112 §‘,§‘.,3"-
`Seattle. WA 93101
`
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`ANSWER:
`
`INTERROGATORY NO. 8:
`
`Identify the persons who are in charge of or responsible for the following for
`
`Applicantzl
`
`a.
`
`advertising and promotion for each of the goods and services identified
`
`in response to lnterrogatory No. 1;
`
`b.
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`sales of each good and service identified in response to Interrogatory
`
`No. 1; and
`
`c.
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`production of each product and provision of each service identified in
`
`response to Interrogatory No. 1.
`
`ANSWER:
`
`INTERROGATORY NO. 9:
`
`Describe any and all advertising and promotion that includes Applicant's Mark which
`
`Applicant has distributed or published including, but not limited to, the nature and content of
`
`the advertisement, the medium of advertising, the dates the advertisement was published or
`
`distributed, the target audience of the advertisement, the identity of the person or persons who
`
`created and/or produced the advertisement, the amount spent to produce the advertisement,
`
`the amount spent to distribute, broadcast, or publish the advertisement, and,
`if _the
`advertisement was distributed to more than one location (or in multiple copies), the number of
`
`copies distributed.
`
`ANSWER:
`
`\O0O\lO'\
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`OPPOSER‘S FIRST SET
`OF INTERROGATORIES AND RFP'S - 7
`
`C‘PIRI]S\INTECI)\1£SEN
`%%soN
`K]NDNESSP“‘°
`
`LAW oFFIcEs
`‘s‘j?,‘Z, §‘;1,’3"°'
`Seattle. WA 93101
`
`

`
`INTERROGATORY NO. 10:
`
`Identify any and all contracts, agreements, licenses, or consents pertaining to use or
`
`registration of Applicant's Mark.
`
`ANSWER:
`
`INTERROGATORY NO. 1 1:
`
`Identify any subsidiaries, parent companies, or related companies of Applicant or
`
`licensees of Applicant which have used and/or intend to use Applicant's Mark, and for each
`
`such entity, please state:
`
`a.
`
`the common generic name of the products offered in association with
`
`Applicant's Mark and/or intended to be offered in association with
`
`Applicant's Mark; and
`
`b.
`
`the actual and/or intended channels of trade for the products offered in
`
`association with Applicant's Mark and/or intended to be offered in
`
`association with Applicant's Mark.
`
`ANSWER:
`
`INTERROGATORY NO. 12:
`
`Describe any and all instances of which Applicant is aware in which any person or
`
`company was deceived, misled or confused as to the source of goods or services as a result of
`
`Applicant's use of Applicant's Mark.
`
`ANSWER:
`
`\OOO\)O\
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`OPPOSER'S FIRST SET
`or INTERROGATORIES AND RFP'S - 8
`
`8,rggIsqNI1=bIf{s>EN
`JOHNSON
`KINDN'ESSm‘C
`
`mw omcss
`£21‘; §;"o:,"°'
`Seattle. WA 93101
`
`

`
`INTERROGATORY NO. 13:
`
`Identify each person with whom Applicant has consulted as an expert about any issues
`
`raised by this proceeding or whom Applicant may call as an expert witness to present
`
`evidence in this opposition proceeding.
`
`ANSWER:
`
`INTERROGATORY NO. 14:
`
`Identify all persons or companies or any other entity that Applicant contends has
`
`infringed or is infringing Applicant's Mark or that has sought registration of a mark that
`
`Applicant believes is confusingly similar to Applicant's Mark. For each person, company or
`
`other entity identified provide the following information:
`a.
`Identify the mark‘ used or sought to be registered by the person, company or
`
`entity.
`
`b.
`
`Identify the goods or services with which the person, company or entity used
`
`or sought registration of the mark.
`
`c.
`