Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA743166
`
`Filing date:
`
`04/28/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91216585
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Thatch, LLC
`
`FRANK J GILBERT
`SCHWARTZ & CERA LLP
`201 CALIFORNIA STREET SUITE 450
`SAN FRANCISCO, CA 94111
`UNITED STATES
`frank@schwartz-cera.com
`
`Response to Board Order/Inquiry
`
`Frank J. Gilbert
`
`frank@schwartz-cera.com
`
`/frank j. gilbert/
`
`04/28/2016
`
`Registrant Applicants Response to Order to Show Cause.pdf(2486646 bytes )
`Declaration of DRS ISO Registrant Applicants Response to OSC.pdf(1029499
`bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 85/932,097
`
`Mark: PATIO BY THE SPADES
`
`Kate Spade LLC,
`
`Thatch, LLC
`
`Opposer,
`
`V.
`
`Applicant.
`
`Opposition No.: 91216585
`
`In the matter of Registration No. 3,647,470 and Serial No. 86/179,137
`
`Marks: THE SPADES (DESIGN) and THE SPADES
`
`Cancellation No.: 92059594 and
`
`Opposition No.: 91217168
`
`Kate Spade LLC,
`
`Petitioner/Opposer,
`
`v.
`
`The Spades Trademark Company, LLC
`
`Registrant/Applicant.
` M;
`
`REGISTRANT/APPLICANTS’ RESPONSE
`TO ORDER TO SHOW CAUSE
`
`The Spades Trademark Company, LLC (“Registrant”) hereby responds to the Order to
`
`Show Cause issued by the Board on April 1, 2016, in View of the Motion for Order to Show
`
`Cause filed by Kate Spade, LLC (“Petitioner”), with respect to the cancellation under Section 8
`
`of the Trademark Act for Registration No. 3,647,470 (the “Cancelled Registration”), for the
`
`mark “THE SPADES (AND DESIGN)” (“The Spades Design Mark”). In summary, since the
`
`30857/000/2065341 .1
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`

`
`cancellation was occasioned by the fact that The Spades Design Mark was abandoned and that
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`such abandonment was not made for the purpose of avoiding this proceeding but was instead the
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`result of non—use of The Spades Design Mark which commenced well before Registrant learned
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`of this proceeding, Registrant respectfully requests the judgment be entered only and specifically
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`on the ground of abandonment, and not the ground of fraud, and that such judgment not have any
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`res judicata effect on the remainder of this consolidated action.
`
`BACKGROUND AND LEGAL ARGUMENT
`
`Registrant purchased and acquired The Spades Design Mark, which is the subject of the
`
`Cancelled Registration, from its original registrant, Jac Spade, LLC, in October, 2013.
`
`Registrant purchased The Spades Design Mark in advance of filing to register “THE SPADES”
`
`and “PATIO BY THE SPADES” marks, which are the other marks at issue in this consolidated
`
`proceeding.
`
`Petitioner filed its Petition for Cancellation in this proceeding on July 3, 2014, well after
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`Registrant acquired The Spades Design Mark. Since purchasing The Spades Design Mark in
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`2013, Registrant has not used The Spades Design Mark for any goods or services. Indeed, in
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`Paragraph 17 of its Answer to Petition for Cancellation (TTABvue No. 7) filed in this action,
`
`Registrant admits the allegations of Paragraph 7 of Petitioner’s Petition for Cancellation, which
`
`avers, “Upon information and belief, to date, Registrant has made no use in commerce of THE
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`SPADES (AND DESIGN) in connection with the goods cited in Registration No 3,647,470.” In
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`addition, in Registrant/Applicant’s Response to Petitioner/Opposer’s First Set of Interrogatories,
`
`served on September 11, 2015, in each of the Response to lnterrogatory No. 3 and the Response
`
`to Interrogatory No. 4, Registrant (along with Thatch, LLC) states that, “Without waiving the
`
`foregoing objections, Responding Parties have not used any of the Marks in commerce,”
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`30857/000/206534l.1
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`

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`referring to the three marks at issue in this consolidated proceeding, including The Spades
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`Design Mark.
`
`(_S_ee_:, Exhibit A to the Declaration of Douglas R. Schwartz filed herewith). Thus,
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`the admissions and evidence submitted in this proceeding demonstrate that Registrant had not
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`used The Spades Design Mark since acquiring it in 2013, and such non-use commenced well
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`before the filing of this proceeding.
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`Registrant’s Section 8 filing was due on or before June 30, 2015, but since Registrant was
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`not using The Spades Design Mark at that time and had not used it at all since acquiring the mark
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`in 2013, Registrant could not, and did not, make the Section 8 filing, which requires a declaration
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`that the Registrant continues to use the mark in commerce. Registrant consequently allowed the
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`Cancelled Registration to be cancelled.
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`The Order to Show Cause allows Registrant to show cause why such cancellation should
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`not be deemed to be the equivalent of a cancellation by request of Registrant without the consent
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`of the adverse party, and should not result in the entry ofjudgment against Registrant as
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`provided by 37 C.F.R. Sec. 2.134(a).
`
`TMBP Rules 535 and 602.02(b) both provide in relevant part, that in response to an
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`Order to Show Cause with respect to 37 C.F.R. Sec. 2.134(a):
`
`If respondent submits a showing that the cancellation or expiration was
`occasioned by the fact that its registered mark had been abandoned and
`that such abandonment was not made for purposes of avoiding the
`proceeding but rather was the result, for example, of a two-year period
`of nonuse which commenced well before respondent learned of the
`existence of the proceeding, judgment will be entered against it only
`and specifically on the ground of abandonment.
`
`(S_ee_ also, C.H. Guenther & Son Inc. v. Whitewirzg Ranch C0., 8 USPQ2d 1450, fn. 4 (TTAB
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`1988); Notice of Final Rulemaking published in the Federal Register on May 23, 1983 at 48 FR
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`23122, 23133, and in the Official Gazette on June 21, 1983 at 1031 TMOG 13, 23.)
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`30857/000/2065341 .1
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`

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`Since the cancellation of the Cancelled Registration was due to Registrant’s non-use and
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`abandonment of The Spades Design Mark begun well before the commencement of this
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`proceeding, and not for purposes of avoiding this proceeding (such opposition proceedings will
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`continue with respect to the remaining two marks), Registrant requests that Judgment be entered
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`against it only with respect to Registration No. 3,647,470 and only and specifically on the ground
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`of abandonment, and not fraud or any other purported grounds as alleged in Petitioner’s Petition
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`for Cancellation.
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`CONCLUSION
`
`For all of the foregoing reasons, Registrant does not contest the entry of Judgment against
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`it with respect to Registration No. 3,647,470 only, provided such Judgment is limited solely to
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`abandonment of The Spades Design Mark, and requests that Judgment be entered against it only
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`and specifically on the ground of abandonment, and not the ground of fraud.
`
`Dated: April 28, 2016
`
`SCHWARTZ & CERA
`
`By:
`
`c§/9/tY;fl.;%/
`
`Douglas R. Schwartz
`Kenneth B. Cera
`
`Frank J. Gilbert
`
`Attorneys for Registrant/Applicants
`Thatch, LLC and The Spades Trademark
`Company, LLC
`
`30857/000/2065341 .1
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 28”‘ day of April, 2016, a true and complete copy of the
`foregoing Registrant/Applicant’s Response to Order to Show Cause to Petitioner/Opposer
`has been served upon the Petitioner/Opposer’s counsel of record by delivering the same via
`email and overnight delivery at the following address:
`
`G. Roxanne Elings
`Danielle Toaltoan
`
`Lisa Keith
`
`Davis Wright Tremaine LLP
`1251 Avenue of the Stars, 21“ Floor
`New York, NY 10020
`
`l;onise Higginbotharn
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 85/932,097
`
`Mark: PATIO BY THE SPADES
`Kate Spade LLC,
`Opposer,
`
`
`
`Opposition No.: 91216585
`
`
`
`Thatch, LLC
`
`V.
`
`Applicant.
`
`In the matter of Registration No. 3,647,470 and Serial No. 86/179,137
`
`Cancellation No.: 92059594 and
`Opposition No.: 91217168
`
`Marks: THE SPADES (DESIGN) and THE SPADES
`Kate Spade LLC,
`
`Petitioner/Opposer,
`
`v.
`
`
`
`The Spades Trademark Company, LLC
`
`Registrant/Applicant.
`
`DECLARATION OF DOUGLAS R. SCHWARTZ
`IN SUPPORT OF
`
`REGISTRANT/APPLICANTS
`
`RESPONSE TO ORDER TO SHOW CAUSE
`
`Douglas R. Schwartz hereby declares as follows:
`
`1.
`
`I am an attorney licensed to practice law in the State of New York and am a
`
`member of the law firm Schwartz & Cera, counsel to Registrant/Applicants The Spades
`
`Trademark Company, LLC and Applicant Thatch, LLC in the above-captioned cases. The
`
`following matters are true to my own knowledge and if called as a witness, I could and would
`
`testify completely thereto.
`
`

`
`2.
`
`Attached hereto as Exhibit A is a true and correct copy of Registrant/Applicanfs
`
`Response to Petitioner/Opposer’s First Set of Interrogatories, served in this proceeding on
`
`September 11, 20l5.
`
`I declare under penalty of perjury that the foregoing is true and correct, and that this
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`Declaration was executed on April 28, 2016 in San Francisco, California.
`
`&r9/31%;
`
`DOUGLAS R. SCHWARTZ
`
`

`
`EXHIBIT A
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARIC TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 85/932,097
`
`Mark: PATIO BY
`
`
`
`SPADES
`
`Opposer,
`
`V.
`
`Kate Spade LLC,
`
`
`Applicant.
`
`Thatch, LLC
`
`Opposition No.: 91216585
`
`In the matter of Registration No. 3,647,470 and Serial No. 86/179,137
`
`Cancellation No.: 92059594 and
`Opposition No.: 91217168
`
`Marks: THE SPADES (DESIGN) and THE SPADBS
`
`Kate Spade LLC,
`
`Petitioner/Opposer,
`
`V.
`
`The Spades Trademark Company, LLC
`
`
`
`
` Registrant/Applicant.
`
`REGISTRANT/APPLCIANT’S RESPONSE TO PETITIONER/OPPOSER’S
`FIRST SET OF INTERROGATORIES
`
`Registrant/Applicant The Spades Trademark Company, LLC and Applicant Thatch, LLC
`(hereinafter “Responding Parties”), by and through their attorneys ofrecord, Schwartz & Cera,
`hereby respond to Petitioner/Opposer Kate Spade LLC’s (hereinafter “Petitioner”) First Set of
`lnterrogatories.
`
`

`
`served in the lead case as captioned above, with specific references to the separate Marks as
`needed so that such response applies to all three original cases.
`
`For purposes of these Interrogatory responses, the terms listed below shall have the
`
`definitions as described:
`
`A.
`
`The term “Patio by the Spades Mark” shall mean the mark identified in US.
`
`Trademark Application Serial No. 85/932,097.
`
`B.
`
`The term “Patio by the Spades Application” shall mean U.S. Trademark
`
`Application Serial No. 85/932,097.
`
`C.
`
`The term “The Spades Word Mark” shall mean the mark identified in U.S.
`
`Trademark Application Serial No. 86/179,137.
`
`D.
`
`The term “The Spades Word Mark Application” shall mean U.S. Trademark
`
`Application Serial No. 86/179,137.
`
`E.
`
`The term “The Spades Design Mark” shall mean the mark identified in US.
`
`Trademark Registration No. 3647470.
`
`F.
`3647470.
`
`The term “The Registration” shall mean in U.S. Trademark Registration No.
`
`The term “Responding Parties’ Marks” shall mean collectively the Patio by the
`G.
`Spades Mark, The Spades Word Mark and The Spades Design Mark.
`
`The term “Applications” shall mean collectively the Patio by the Spades
`H.
`Application and The Spades Word Mark Application.
`
`GENERAL OBJECTIONS:
`
`The following General Objections apply to, and are hereby incorporated by reference in,
`each and every response to each specific Interrogatory. Responding Parties’ specification of one
`or more objections in any given response is not intended to preclude the applicability of any of
`the general objections.
`
`Responding Parties’ response is made without waiving, in any way: (1) the right
`l.
`to object on any basis permitted by law to the use of any such information, for any purpose, in
`whole or in part, in any subsequent proceeding in this action or any other action; and (2) the right
`
`

`
`to object on any basis permitted by law to any other discovery request or proceeding involving or
`relating to the subject matter of this response.
`
`Responding Parties have not completed investigation ofthe facts relating to this
`2.
`case, discovery or preparation for trial, and the following responses are given subject to the
`Responding Parties’ right to supplement these discovery responses should other information
`subsequently be discovered. Responding Parties reserve the right to make any use ofi or to
`introduce at any hearing or trial, information that is responsive to Petitioner’s Interrogatories, but
`discovered subsequent to Responding Parties’ responses, including, but not limited to,
`information in any documents filed, served, or obtained in discovery in this action.
`
`Responding Parties object to these lnterrogatories to the extent that they are
`3.
`neither relevant to the subject matter ofi not within the time period relevant to, these
`proceedings, nor reasonably calculated to lead to the discovery of admissible evidence.
`
`Responding Parties object to these lnterrogatories to the extent that they seek
`4.
`disclosure of information which is private or privileged under the attorney—client privilege, the
`attorney-work product rule, the tax privilege or any other applicable privilege.
`
`Responding Parties object to these Interrogatories on the basis that they are vague,
`5.
`ambiguous, compound, over broad, and unduly burdensome.
`
`Responding Parties object to these interrogatories to the extent they seek
`6.
`information that is unreasonably cumulative or duplicative of other discovery responses, or is
`obtainable from some other source that is more convenient, less burdensome or less expensive.
`Responding Parties object to these Interrogatoroes to the extent they seek information already in
`Petitioner’s possession, custody or control, or that is equally available to Petitioner, including
`information that may be derived or ascertained from publicly available documents.
`
`Responding Parties object to Petitioner’s Definitions and Instructions to the extent
`7.
`that they purport to impose requirements that are different from, or in addition to, those imposed
`by the Federal Rules of Civil Procedure, the Trademark Trial and Appeal Board Manual of
`Procedure, the Trademark Rules of Practice, or any other applicable rule or statute.
`8.
`Responding Parties object to Petitioner’s Definitions and Instructions to the extent
`that they purport to enlarge, expand, or alter in any way the plain meaning and scope of any
`specific term or specific Interrogatory on the grounds that such enlargement, expansion, or
`
`3
`
`

`
`alteration renders such a term or Interrogatory vague, ambiguous, unintelligible, overly broad,
`unduly burdensome, and/or uncertain.
`
`Responding Parties object to Petitioner’s definition ofthe terms “Applicant,”
`9.
`“Registrant,” “You” and “Your” to the extent that Petitioner purports to extend these definitions
`
`to cover information outside the possession, custody, or control of Responding Parties.
`Responding Parties will respond on behalf ofthemselves as parties to this action pursuant to their
`obligations under the Federal Rules of Civil Procedure, the Trademark Rules of Practice and the
`Trademark Trial and Appeal Board Manual of Procedure.
`
`SUBJECT TO SUCH GENERAL OBJECTIONS AND RESERVATION OF RIGHTS,
`EACH OF WHICH IS SPECIFICALLY INCORPORATED INTO EACH RESPONSE SET
`
`FORTH BELOW, RESPONDING PARTIES SUBMIT THE FOLLOWING INDIVIDUAL
`
`AND SEPARATE RESPONSES TO THE INTERROGATORIES:
`
`RESPONSE TO INTERROGATORY NO. 1:
`
`The members of Thatch, LLC are Andrew Spade, Katherine Brosnahan Spade and Elyce Arons.
`The members of The Spades Trademark Company, LLC are Andrew Spade and Katherine
`Brosnahan Spade.
`
`RESPONSE TO INTERROGATORY NO. 2:
`
`Responding Parties object to this interrogatory to the extent it seeks information protected from
`discovery by the attorney-client privilege or the work product doctrine. Responding Parties
`object to this interrogatory on the ground that it is vague and ambiguous, overly broad and
`unduly burdensome, and not reasonably calculated to lead to the discovery of admissible
`evidence. Without waiving the foregoing objections, Responding Parties had intended to market,
`advertise, promote, manufacture, offer for sale, sell and distribute each ofthe goods identified in
`the Applications and the Registration, and also jewelry, under the Marks. The Responding
`Parties have put on hold their plans to use the Marks in connection with such goods pending the
`outcome ofthese cases and the settlement negotiations among the parties. The Responding
`Parties, through their respective counsel, also had at one point entered into an informal stay
`agreement with Petitioner under which they agreed not to launch any products using the Marks
`pending the parties’ ongoing negotiations. Responding Parties reserve the right to market,
`advertise, promote, manufacture, offer for sale, sell and distribute each of the goods identified in
`
`4
`
`

`
`the Applications and the Registration, respectively, under the Marks in the event the parties’
`negotiations are unsuccessful.
`
`RESPONSE TO INTERROGATORY NO. 3:
`
`Responding Parties object to this interrogatory on the ground that it is vague and ambiguous,
`including to the extent it assumes the Marks have been used in commerce by Responding Parties
`in connection with goods or services. Without waiving the foregoing objections, Responding
`Parties have not used any of the Marks in commerce.
`
`RESPONSE TO INTERROGATORY NO. 4:
`
`Responding Parties object to this interrogatory on the ground that it is vague and ambiguous,
`including to the extent it assumes the Marks have been used in commerce by Responding Parties
`in connection with goods or services. Without waiving the foregoing objections, Responding
`Parties have not used any of the Marks in commerce.
`
`RESPONSE TO INTERROGATORY NO. 5:
`
`Responding Parties have not commenced use of any ofthe Marks with respect to any ofthe
`products and/or services listed in the Applications or the Registration.
`
`RESPONSE TO INTERROGATORY NO. 6:
`
`Responding Parties object to this interrogatory to the extent it seeks information protected from
`discovery by the attorney—client privilege or the work product doctrine. Responding Parties
`object to this interrogatory on the ground that it is vague and ambiguous, including its use ofthe
`term “business plan.” Without waiving the foregoing objections, Responding Parties do not have
`any business plans in connection with the use of the Marks.
`
`RESPONSE TO INTERROGATORY NO. 7:
`Responding Parties object to this interrogatory to the extent it seeks information protected from
`discovery by the attorney—client privilege or the work product doctrine. Responding Parties
`object to this Interrogatory as vague, ambiguous and unintelligible, including its use ofthe term
`“business plan” and to the extent it assumes the Marks have been used in commerce by
`
`5
`
`

`
`Responding Parties in connection with goods or services. Without waiving the foregoing
`objections and subject to the Response to Interrogatory No. 2, Responding Parties do not have
`any current plans for expanding use of the Marks in connection with any goods or services not
`identified in response to Interrogatory No. 2.
`
`RESPONSE TO INTERROGATORY NO. 8:
`
`Responding Parties object to this interrogatory on the ground that it is vague and ambiguous,
`including to the extent it assumes the Marks have been used in commerce by Responding Parties
`in connection with goods or services. Without waiving the foregoing objections, Responding
`Parties are not currently marketing, advertising, promoting, distributing or selling goods under
`the Marks. Subject to the Response to Interrogatory No. 2, in the event Responding Parties do
`market, advertise, promote, distribute, or sell goods using the Marks, the types of consumer to
`whom such goods would likely be targeted would be female, likely in the approximately 25-45
`age range.
`
`RESPONSE TO INTERROGATORY NO. 9:
`
`Responding Parties object to this interrogatory to the extent it seeks information protected from
`discovery by the attorney—client privilege or the work product doctrine. Responding Parties
`object to this interrogatory on the ground that it is vague and ambiguous, including its use of the
`term “channels of trade” and to the extent it assumes the Marks have been used in commerce by
`Responding Parties in connection with goods or services. Without waiving the foregoing
`objections, Responding Parties are not currently marketing, advertising, promoting, distributing
`or selling goods under the Marks. Subject to the Response to Interrogatory No. 2, in the event
`Responding Parties do market, advertise, promote, distribute, or sell goods using the Marks, the
`channels of trade through which such goods would likely be marketed, advertised, promoted,
`distributed or sold are the major department stores such as Bergdorf Goodman, Neiman Marcus,
`Saks Fifth Avenue, and Bloomingdales, among others.
`In the event that a diffusion line were
`produced, a likely channel of distribution could be Target.
`
`RESPONSE TO INTERROGATORY NO. 10:
`
`

`
`Responding Parties object to this interrogatory on the ground that it is vague and ambiguous,
`including to the extent it assumes the Marks have been used in commerce by Responding Parties
`in connection with goods or services. Without waiving the foregoing objections, since no goods
`or services have been sold or offered for sale bearing the Marks, no persons, entities, agents or
`distributors have been involved.
`
`RESPONSE TO INTERROGATORY N0. 11:
`
`Responding Parties object to this Interrogatory as vague, ambiguous, unintelligible and not
`reasonably calculated to lead to the discovery of admissible evidence, including to the extent it
`assumes the Marks have been used in commerce by Responding Parties in connection with goods
`or services. Without waiving the foregoing objections, Responding Parties respond that no
`goods or services have been manufactured bearing the Marks, so no persons, entities,
`manufacturers or suppliers have been involved.
`
`RESPONSE TO INTERROGATORY NO. 12:
`
`Responding Parties object to this Inteirogatory as vague, ambiguous, overly broad and not
`reasonably calculated to lead to the discovery of admissible evidence, including to the extent it
`assumes the Marks have been used in commerce by Responding Parties in connection With goods
`or services. Without waiving the foregoing objections, Responding Parties are not currently
`marketing, advertising, promoting, distributing or selling goods under the Marks. Subject to the
`Response to Interrogatory No. 2, in the event Responding Parties do market, advertise, promote,
`distribute, or sell goods using the Marks, the likely geographical areas would be all major cities
`
`in the United States.
`
`RESPONSE TO INTERROGATORY NO. 13:
`Responding Parties object to this Interrogatory as vague, ambiguous, overly broad and not
`reasonably calculated to lead to the discovery of admissible evidence, including the use ofthe
`term “methods.” Without waiving the foregoing objections, Responding Parties are not currently
`marketing, advertising, promoting, distributing or selling goods under the Marks. Subject to the
`Response to lnteirogatory No. 2, the Responding Parties have not determined the methods by
`which they would market, advertise, promote,'distribute, or sell goods using the Marks.
`4
`
`7
`
`

`
`RESPONSE TO INTERROGATORY NO. 14:
`
`Responding Parties object to this lnterrogatory as vague, ambiguous, overly broad and not
`reasonably calculated to lead to the discovery ofadmissible evidence, including to the extent it
`assumes the Marks have been used in commerce by Responding Parties in connection with goods
`or services. Without waiving the foregoing objections, Responding Parties have not engaged in
`any actual marketing, promotion and/or advertising with respect to any goods or services bearing
`
`the Marks.
`
`RESPONSE TO INTERROGATORY NO. 15:
`
`Responding Parties further object to this Interrogatory to the extent that it seeks disclosure of
`information which is privileged under the attorney—client privilege or protected by the attorney-
`work product rule. Responding Parties object to this lnterrogatory as vague, ambiguous, overly
`broad and not reasonably calculated to lead to the discovery of admissible evidence. Without
`waiving the foregoing objections, Andrew Spade originated the idea of using the Marks and
`discussed it with his business partners, Katherine Brosnahan Spade and Elyce Axons. The
`Responding Parties then requested counsel to obtain a trademark search report for the Marks
`“The Spades” and “Patio by the Spades,” which reports will be produced. The Spades
`Trademark Company, LLC purchased the Registration from its original owner and registrant, Jac
`
`produced.
`
`RESPONSE TO INTERROGATORY NO. 16:
`
`Andrew Spade, whose address is 850 Park Avenue 3B, New York, NY 10075, Phone
`212.988 .6948, Email a1'spade@me.com
`
`RESPONSE TO INTERROGATORY NO. 17:
`Responding Parties object to this lntexrogatory as vague, ambiguous, unintelligible, overly broad
`and not reasonably calculated to lead to the discovery of admissible evidence. Responding
`Parties further object to this lnterrogatory to the extent it seeks Responding, Parties’ legal
`opinions and conclusions. Without waiving the foregoing objections, Responding Parties are not
`
`8
`
`

`
`aware of any actual confusion caused by the Applications, the Registration or any of the Marks,
`including but not limited to prior marketing, distribution and sales of goods bearing The Spades
`Design Mark and/or otherwise in connection with The Spades Design Mark prior to the
`Registration being purchased by The Spades Trademark Company.
`
`RESPONSE TO INTERROGATORY NO. 18:
`
`Interrogatory as overly broad, unduly burdensome and not reasonably calculated to lead to the
`discovery of inadmissible evidence to the extent it seeks such information regarding the
`members of Responding Parties other than in their capacities as members, managers or affiliates
`of Responding Parties. Without waiving the foregoing objections, the members of the
`
`Responding Parties, as identified in the Response to Interrogatory No. 1, were the founders, and
`in the case of Katherine Brosnahan Spade (aka Kate Spade), the namesake, of Petitioner, and as
`such created Petitioner’s Marks and were aware of Petitioner’s Marks from their inception. The
`Responding Parties object to this lnterrogatory as overly broad, unduly burdensome and not
`
`reasonably calculated to lead to the discovery of inadmissible evidence to the extent it seeks the
`identification of “all” documents referring to or relating to “all” facts and circumstances
`
`regarding Responding Parties’ first awareness of Petitioner’s Marks. The documents
`
`responsive to this request are extremely voluminous, possibly numbering in the hundreds of
`thousands or millions of pages.
`
`RESPONSE TO INTERROGATORY NO. 19:
`
`Responding Parties object to this Interrogatory as overly broad, unduly burdensome and not
`reasonably calculated to lead to the discovery of inadmissible evidence to the extent it seeks such
`information regarding the members of Responding Parties other than in their capacities as
`members, managers or affiliates of Responding Parties. Without waiving the foregoing
`objections, Responding Parties have not undertaken or had undertaken on their behalf any
`surveys, studies, polls or other research regarding Petitioner’s Marks.
`
`RESPONSE TO INTERROGATORY NO. 20:
`
`Responding Parties object to this interrogatory to the extent it seeks information protected
`
`from discovery by the attorney-client privilege or the work product doctrine. Responding Parties
`
`9
`
`

`
`object to this inteirogatory to extent it calls for legal conclusions or opinions. Responding
`
`Parties object to this request on the ground that it is vague and ambiguous, overly broad and
`
`unduly burdensome, including to the extent it requests documents relating to future events.
`Responding Parties have not completed investigation ofthe facts relating to this case, discovery
`or preparation for trial. Responding Parties reserve the right to make any use of, or to introduce
`
`at any hearing or trial, any information and documents that are responsive to Petitioner’s
`
`requests, but discovered subsequent to Responding Parties’ responses, including, but not limited
`
`to, any documents filed, served, or obtained in discovery in this action. Without waiving the
`
`foregoing objections, Petitioner’s claims fail to state a claim upon which relief may granted
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`because Responding Parties’ use and registration ofthe Marks will not create a likelihood of
`
`confusion among consumers that Responding Parties’ goods are offered by, sponsored by, or
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`endorsed by Petitioner in that, among other reasons, Responding Parties’ mark differs from
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`Petitioner’s Marks in sight, sound and meaning and has a distinct commercial impression from
`
`Petitioner’s marks. Petitioner has not and will not suffer any injury or damage from the
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`registration of the Marks because Responding Parties’ use and registration of the Marks will not
`
`create a likelihood of confusion among consumers that Responding Parties’ goods are offered by,
`
`sponsored by, or endorsed by Petitioner. Petitioner’s claims are barred by the equitable defenses
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`of laches, acquiescence, waiver and/or estoppel because, among other reasons, Petitioner took no
`
`action and made no objection with respect to The Spades Design Mark and the Registration
`
`during the period prior to and for a period of roughly four years after the registration of The
`
`Spades Design Mark, and similarly failed to take any action and made no objection with respect
`to other persons and entities using marks identical or substantially similar to the Marks.
`
`RESPONSE TO INTERROGATORY NO. 21:
`
`10
`
`

`
`Responding Parties object to this interrogatory to the extent it seeks information protected from
`discovery by the attorney-client privilege or the work product doctrine. Responding Parties have
`not completed investigation ofthe facts relating to this case, discovery or preparation for trial.
`Responding Parties reserve the right to make any use of, or to introduce at any hearing or trial,
`information and documents that are responsive to Petitioner’s requests, but discovered
`subsequent to Responding Parties’ responses, including, but not limited to, any documents filed,
`served, or obtained in discovery in this action. Without waiving the foregoing objections,
`Responding Parties do not currently intend to have any experts testify on their behalf.
`
`RESPONSE TO INTERROGATORY NO. 22:
`
`Responding Parties do not have a formal document retention policy.
`
`RESPONSE TO INTERROGATORY NO. 23:
`
`Responding Parties object to this interrogatory to the extent it seeks information protected from
`discovery by the attorney—client privilege or the work product doctrine. Without waiving the
`foregoing objections, Responding Parties have taken reasonable steps to preserve documents that
`may be relevant to these proceedings. Any email communications that may have taken place are
`secure on a cloud back up and hard copy documents exist of any legal documents pertaining to
`the matter. Responding Parties have not to their knowledge lost or destroyed any documents that
`may be relevant to these proceedings.
`
`RESPONSE TO INTERROGATORY NO. 24:
`
`Andrew Spade, member and founder of Responding Parties, whose address is 850 Park Avenue
`3B, New York, NY 10075, Phone 212.988.6948, Email ajspade@me.com
`
`Dallas Sowers, assistant to Andrew Spade, whose address is 460 West 24”‘ Street 4B, New York,
`NY 10011, Phone 917.929.8321, Email d sowers@rne.com
`
`11
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`

`
`Date: September 1 1, 2015
`
`SCHWARTZ & CERA
`
`/Q}//«Kg
`
`Kenneth B. Cera
`
`Frank J. Gilbert
`
`Schwartz & Cera
`
`201 California St, Suite 450
`San Francisco, CA 94110
`(415) 956~260O
`Attorneys for Registrant/Applicants
`Thatch, LLC and The Spades Trademark
`Company, LLC
`
`

`
`
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