throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA882266
`
`Filing date:
`
`03/09/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91226377
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Plaintiff
`Deutsche Telekom AG
`
`Ross Q. Panko
`Arent Fox LLP
`1717 K Street, N.W.
`Washington, DC 20006
`UNITED STATES
`Email: ross.panko@arentfox.com, tmdocket@arentfox.com,
`judy.yolles@arentfox.com
`
`Motion to Compel Discovery or Disclosure
`
`/Ross Q. Panko/
`
`judy.yolles@arentfox.com, tmdocket@arentfox.com
`
`/Ross Q. Panko/
`
`03/09/2018
`
`Attachments
`
`DTAG Motion to Compel Re Textras.pdf(1237056 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91226377
`
`)
`
`) )
`
`)
`)
`
`) )
`
`) )
`
`DEUTSCHE TELEKOM AG,
`
`Opposer,
`
`v.
`
`TEXTRAS INC,
`
`)
`Applicant.
`___—)
`
`OPPOSER’S MOTION TO COMPEL AND MOTION TO SUSPEND
`
`Pursuant to 37 CFR § 2.120(f), Opposer Deutsche Telekom AG (“Opposer”) hereby
`
`moves for an order compelling Applicant Textras Inc. (“Applicant”) to serve its Initial
`
`Disclosures and its responses to both Opposer’s First Set of Interrogatories to Applicant
`
`(“Interrogatories”) and Opposer’s First Set of Requests for the Production of Documents and
`
`Things to Applicant (“Document Requests”). Opposer further requests that the Board suspend
`
`the proceeding during the pendency of this Motion and that it reset the dates of the discovery and
`
`trial periods thereafter to allow the parties sufficient time to complete discovery.
`
`I.
`
`OPPOSER’S EFFORTS TO RESOLVE THE ISSUES PRESENTED IN
`
`THIS MOTION AND APPLICANT’S FAILURE TO DO SO
`
`As detailed below, Opposer certifies that it made a good faith effort to resolve with
`
`Applicant the issues presented in this Motion, but Applicant has failed to remedy the
`
`deficiencies.
`
`On January 11, 2018, Opposer served its Interrogatories and Document Requests on
`
`Applicant. See Exhibits A and B. Applicant failed to timely answer the requests by its February
`
`

`

`10, 2018 deadline, and to date has served no responses. Applicant also has never served any
`
`initial disclosures.
`
`On February 13, 2018, Opposer sent Applicant an email noting the failure to serve
`
`Applicant’s required responses to the Interrogatories and Documents, and requesting a meet-and-
`
`confer phone call to promptly address the issue in light of the close of discovery scheduled for
`
`February 16, 2018. See Exhibit C. Applicant’s counsel responded that “I am having some
`
`trouble contacting my client” and “I will circle back shortly.” Id. Having received no further
`
`response from Applicant, Opposer thereafter followed up with Applicant again by email on
`
`February 15, 2018, to inquire whether Applicant would be serving the discovery responses.
`
`Applicant did not respond and thus Opposer followed up again on February 16, 2018.
`
`Applicant’s counsel responded: “Client emerged for the first time in weeks a couple of days ago.
`
`I am hoping we can get this done by next week.” In light of this representation, Opposer
`
`proposed that the parties extend the discovery period for 30 days, and Applicant consented. The
`
`new close of discovery deadline is thus March 18.
`
`However, Applicant did not in fact serve its discovery responses the “next week” and
`
`thus Opposer followed up with Applicant via e-mail on February 26, 2018. Applicant never
`
`responded to that email. Thus, Opposer followed up with Applicant again on March 5, 2018,
`
`but Applicant did not respond to that e-mail either. And Opposer still has not served its long
`
`overdue discovery responses nor provided any information on whether or when it will serve
`
`them.
`
`

`

`II.
`
`CONCLUSION
`
`In View of the above, Applicant should be compelled to serve its initial disclosures and
`
`responses to Opposer’s Interrogatories and Document Requests. Opposer respectfully requests
`
`that its Motion to Compel be granted.
`
`
`Dated: March 9 2018
`
`By:
`
`DEUTSCHE TELEKOM AG
`
`/Ross Q. Panko/
`Anthony V. Lupo
`Ross Q. Panko
`Danielle Bulger
`Arent Fox LLP
`
`1717 K St. NW
`
`Washington, DC. 20006
`(202) 857-6000
`
`Attorneys for Opposer
`Deutsche Telekom AG
`
`

`

`CERTIFICATE OF SERVICE
`
`It is hereby certified that the foregoing OPPOSER’S MOTION TO COMPEL AND
`MOTION TO SUSPEND (re: Opposition No. 91237026) was served on Applicant’s Attorney of
`Record Ronald D. Coleman on this 9th day of March, 2018, by e-mail at
`rcoleman@archerlaw.com and rcoleman@lawfirm.ms.
`
`By:
`
`/Ross Q. Panko/
`Ross Q. Panko
`
`

`

`EXHIBIT A
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DEUTSCHE TELEKOM AG,
`
`V.
`TEXTRAS INC,
`
`Opposer,
`
`Applicant.
`
`)
`
`i
`3
`i
`3
`
`Opposition N0.: 91226377
`
`OPPOSER’S FIRST SET OF WRITTEN INTERROGATORIES T O APPLICANT
`
`Pursuant to 37 CPR. § 2.120, Trademark Trial and Appeal Board Manual of Procedure
`
`(“TEMP”) § 405, and Rules 26 and 33 of the Federal Rules of Civil Procedure, Opposer
`
`Deutsche Telekom AG (“DTAG” or “Opposer”), hereby serves its First Set of Written
`
`Interrogatories upon Applicant, Textras Inc. (“Applicant” or “Textras”), to be answered
`
`separately and fully in writing and under oath. A copy of the answers shall be served upon
`
`Opposer’s counsel within thirty (30) days of service hereof. These interrogatories are deemed
`
`continuing in nature as permitted by Rule 26(e) of the Federal Rules of Civil Procedure, and the
`
`answers are to be supplemented promptly upon Applicant’s acquisition of further or additional
`
`information.
`
`DEFINITIONS AND INSTRUCTIONS
`
`The following interrogatories are subject to the definitions and instructions set forth
`
`below:
`
`1.
`
`The term “document” is defined to be synonymous in meaning and equal in scope
`
`to the usage of this term in Rule 34(a) of the Federal Rules of Civil Procedure. A draft or non-
`
`identical copy is a separate document within the meaning of this term.
`
`AFDOCS/15875362J
`
`1
`
`

`

`2.
`
`The term “person” is defined as any natural person or any business, legal or
`
`governmental entity or association.
`
`3.
`
`“Identify” when used with reference to a natural person, means to give, to the
`
`extent known, the person’s full name, present or last known address, and the present or last
`
`known place of employment. “Identify” when used with reference to any other type of person,
`
`means to give the person’s full name (including any assumed or business name), address(es) and
`
`form oforganization (i.e. corporation, partnership, unincorporated association, etc.) Once a
`
`person has been identified in accordance with this subparagraph, only the name of that person
`
`need be listed in response to subsequent discovery requesting the identification of that person.
`
`4.
`
`“Identify” when used with reference to a document, means to give, to the extent
`
`known, the (i) type of document; (ii) general subject matter; (iii) date of the document; (iv)
`
`author(s), addressee(s) and recipient(s); and (iv) the present or last known location and custodian
`
`of the document.
`
`5.
`
`The term “communication” means the transmittal of information (in the form of
`
`facts, ideas, inquiries or otherwise).
`
`6.
`
`“State” or “state all facts” means to state all facts discoverable under Rule 26 of
`
`the Federal Rules of Civil Procedure that are known to Applicant. When used in reference to a
`,9
`flfi
`1? “
`state all facts ,
`
`identify”, “identify all documents”, and “identify all
`
`contention, “state,
`
`communications”, shall include all facts, documents and communications negating, as well as
`
`supporting the contention. When used in reference to a contention, “identify each person” shall
`
`include persons having knowledge of facts negating, as well as supporting, the contention.
`
`7.
`
`The term “concerning” shall mean relating to, referring to, describing, evidencing
`
`or constituting.
`
`AFDOCS/15875362.l
`
`

`

`8.
`
`“Applicant” shall include Textras, and any predecessor in interest and, where
`
`applicable, its officers, directors, agents, attorneys, employees, partners, corporate parent,
`
`subsidiaries or affiliates.
`
`9.
`
`“Opposer” shall include DTAG and, where applicable, any affiliates of DTAG.
`
`10.
`
`“Textras Application” or “T Application” refers to US. Application Serial No.
`
`86/643,251.
`
`l 1.
`
`“T Mark” refers to the trademark depicted and claimed in the Textras Application.
`
`12.
`
`“Textras Services” includes any or all services identified in the Textras
`
`Application, and/or any or all other goods and services with which the Textras Mark is used.
`
`13.
`
`“Textras Licensee(s)” refers to any person, including any business entity, that is
`
`licensed or otherwise authorized to use the T Mark in the United States.
`
`14.
`
`“DTAG Marks” refers, collectively, to (1) any or all of the trademark registrations
`
`relied upon in this opposition, including, but not limited to, US. Registration Nos. 2,284,387;
`
`2,460,631; 2,472,584; 2,508,277; 2,911,878; 2,941,016; 3,219,515; 3,216,527; 3,238,547;
`
`3,269,199; 3,452,974; 3,538,688; 3,578,791; 3,608,190; and 3,629,779; (2) US. Application
`
`Serial No. 76/252,927; and/or (3) any or all of the common law trademark rights described and
`
`asserted in DTAG’s Notice of Opposition.
`
`15.
`
`“DTAG Goods and Services” includes (1) any or all goods and services identified
`
`in the trademark registrations relied upon in this opposition, including, but not limited to, US.
`
`Registration Nos. 2,284,387; 2,460,631; 2,472,584; 2,508,277; 2,911,878; 2,941,016; 3,219,515;
`
`3,216,527; 3,238,547; 3,269,199; 3,452,974; 3,538,688; 3,578,791; 3,608,190; and 3,629,779;
`
`(2) any or all goods and services identified in US. Application Serial No. 76/252,927; and/or (3)
`
`any or all other goods and services with which the DTAG Marks are used.
`
`AFDOCS/15875362.l
`
`

`

`16.
`
`“Commerce” shall mean all commerce which may lawfully be regulated by the
`
`US. Congress.
`
`17.
`
`“Applicant’s Answer” refers to Applicant’s Answer to Notice of Opposition and
`
`Affirmative Defenses, filed in this opposition proceeding on or about March 28, 2016.
`
`18.
`
`The terms “all” and “each” shall be construed as all and each.
`
`19.
`
`Where an objection or claim of privilege is asserted in objection to any
`
`interrogatory or sub-part thereof, and an answer is not provided on the basis of such assertion,
`
`the objection shall (i) identify the nature of the privilege (including work product) which is being
`
`claimed and (ii) identify the following information:
`
`(a)
`
`for documents:
`
`(1) the type of document; (2) general subject matter of the
`
`document; (3) the date of the document; and (4) such other information as is sufficient to identify
`
`the document for a subpoena duces tecum, including where appropriate, the author of the
`
`document, the addressee of the document, and, where not apparent, the relationship of the author
`
`and the addressee to each other;
`
`(b)
`
`for oral communications: (1) the name of person making the
`
`communication and the names of the persons present while the communication was made and,
`
`where not apparent, the relationship of each person present to the person making the
`
`communication; (2) the date and place of the communication; and (3) the general subject matter
`
`of the communication.
`
`AFDOCS/15875362. 1
`
`

`

`INTERROGATORIES
`
`
`
`Intern) mmrv N0. 1:
`
`
`
`Identify, by common commercial descriptive name, each
`
`product or service currently or in the past offered for sale in connection with the T Mark in the
`
`United States by Applicant or any Textras Licensee.
`
`
`
`
`
`l'ntcrro atorv Pm. 2:
`
`For each product or service identified in lnterrogatory No. 1,
`
`state the date of first use in US. commerce, and specify the details of such first use in commerce.
`
`
`
`
`Intern) , atorv N0. 3:
`
`For each product or service identified in Interrogatory No. l,
`
`describe in detail such product or service and the manner in which the product or service is or
`
`was offered for sale, including dates and the actual or intended sale price and the marketing,
`
`sales, and distribution channels.
`
`Interrogatogy N0. 4:
`
`Identify, by common commercial descriptive name, each
`
`product or service Applicant or any Textras Licensee intends to offer for sale in connection with
`
`the T Mark in the United States.
`
`Interrogatog N0. 5:
`
`For each product or service identified in Interrogatory No. 4,
`
`describe in detail such product or service and the manner in which the product or service will be
`
`offered for sale, including the intended sale price and the marketing, sales, and distribution
`
`channels.
`
`lnterropatorv Not 6:
`
`Describe in detail Applicant’s use of the T Mark in connection
`
`with each of the Textras Services in US. commerce.
`
`lnl’crrngmtot’y‘ No. 7;
`
`Describe in detail any of Applicant‘s efforts, actions, or
`
`expenditures that support or relate to Applicant’s intent to use the T Mark in connection with
`
`each of the Textras Services in US. commerce.
`
`AFDOCS/15875362.]
`
`

`

`litterrormtorv No. 8;
`
`Identify all printed and electronic publications (including web
`
`pages) in which Applicant or any Textras Licensee has promoted, currently promotes, or plans to
`
`promote the Textras Services in United States commerce in connection with the T Mark,
`
`including, for each such publication, the identity of the publication, the location of the
`
`publication, the date of publication, and which of the Textras Services are promoted or planned
`
`to be promoted therein.
`
`lnterrogatow N0. 9:
`
`identify the channels of distribution and the geographical areas
`
`of trade in the United States within which the Textras Services are promoted and/or sold in
`
`commerce by Applicant or any Textras Licensee in connection with the T Mark.
`
`
`
`
`Interro atorv No. 10:
`
`
`
`Identify the chamiels of distribution and the geographical areas
`
`of trade in the United States within which the Applicant or any Textras Licensee intends to
`
`promote and/or sell the Textras Services in connection with the T Mark.
`
`lnterro‘mtorv No. 11:
`
`Identify all establishments, retail outlets, distributors, or
`
`websites that carry, promote, or sell products bearing the T Mark, and/or that offer services under
`
`the T Mark in the United States.
`
`
`
`Ixitc'rro tatorv No. 12:
`
`
`
`Identify all fictitious business names or “doing business as”
`
`names of Applicant and all Textras Licensees.
`
`in term 'I
`
`
`
`
`ator , No. l3:
`
`
`
`Identify the person or persons responsible for, involved in, or
`
`with knowledge of the design and/or selection of the T Mark.
`
`Interrogatogg N0. 14:
`
`Describe in detail the facts and circumstances surrounding the
`
`design and/or selection of the T Mark.
`
`Intcrro raitor
`
`No. 15:
`
`
`
`Describe in detail any clearance efforts undertaken by
`
`Applicant or any Textras Licensee for the T Mark.
`
`AFDOCS/15875362. l
`
`

`

`
`Intern) Jittery No, 16:
`
`Describe in detail any challenges, conflicts, accusations, or
`
`disputes anywhere in the world relating to the T Mark, whether or not they resulted in the
`
`institution of proceedings of any kind.
`
`lntcrroyzutorv No. ,17:
`
`Describe Applicant’s knowledge of DTAG or any of its
`
`affiliates, including, but not limited to T-Mobile USA Inc., T-Venture, T-Systems, N.A., and
`
`Telekom Innovation Laboratories (T—Labs), before Applicant designed, selected, chose, and/or
`
`filed a trademark application for the T Mark.
`
`
`
`Intern) rater
`
`
`
`
`
`No. 1.8:
`
`Describe Applicant’s knowledge of any of the DTAG Marks
`
`before Applicant designed, selected, chose, and/or filed a trademark application for the T Mark.
`
`lntcrrogmtory No. 19:
`
`Describe in detail the first occasion in which Applicant or any
`
`Textras Licensee learned of any of the DTAG Marks.
`
`Internigatory No, 20:
`
`Identify each Textras Licensee and specify in detail, for each
`
`Textras Licensee, the nature of the rights in the T Mark that were or have been granted to each
`
`such Textras Licensee, and the manner in which each such Textras Licensee has used or is using
`
`those rights.
`
`
`Inform rater , N0. 21:
`
`Describe in detail any current, past, or future plans, or
`
`consideration, by Applicant or any Textras Licensee to use a mark that includes “T” by itself, or
`
`in connection with other elements or designs including but not limited to the letter “T” featured
`
`inside a square with a design element in black, in United States Commerce.
`
`linten’ogratorv No. 22:
`
`Describe in detail any plans by Applicant or any Textras
`
`Licensee to use any T or T-formative trademarks in United States Commerce.
`
`AFDOCS/15875362il
`
`

`

`Interrogatom No. 23:
`
`State in detail all facts supporting Applicant’s contention in
`
`Paragraph 61 that to the extent the Opposer’s Registrations are the same as those of Applicant,
`
`Opposer did not make bona fide use of its DTAG Marks at the time of registration.
`
`
`lnterrmmturv No. 24:
`
`Describe in detail the facts and circumstances surrounding any
`
`instances known to Applicant or any Textras Licensee in which any consumer associated the T
`
`Mark with DTAG, or otherwise experienced source confusion with respect to the T Mark.
`
`luterrogatorv No. 25:
`
`State in detail all facts supporting Applicant’s contention that
`
`the use of the Textras Mark in connection with the Textras Services is not likely to result in
`
`consumer confusion with respect to the DTAG Marks.
`
`
`lnt‘ernmatory No. 2.6:
`
`State in detail all facts supporting Applicant’s denial, in
`
`paragraph 1 of Applicant’s Answer, that DTAG is not the owner of all right, title, interest in and
`
`to a family of famous marks containing or comprised of the letter “T,” including the “T” logo,
`
`and other “T” formatives such as “T-MOBILE“ and “T-SYSTEMS.”
`
`
`Intern) mtorv N0. 27:
`
`
`
`State in detail all facts supporting Applicant’s denial, in
`
`paragraph 7 of Applicant’s Answer, that Textras is a Massachusetts corporation with an address
`
`at 16 Gardner Road, Nantucket, Massachusetts 02554.
`
`
`
`
`
`lrtrerm mtm'v No. 28:
`
`State in detail all facts supporting Applicant’s denial, in
`
`paragraph 9 of Applicant’s Answer, that the dominant element of the T Mark is the letter “T” and
`
`that “in the DTAG Marks, the letter ‘T’ is the dominant—and often sole—literal element.”
`
`
`Interrovamr ' No. 25):
`
`State in detail all facts supporting Applicant’s denial, in
`
`paragraph 14 of Applicant’s Answer, that “the services claimed in the T Application are highly
`
`similar to goods and services covered by the DTAG Marks.”
`
`AFDOCS/15875362.l
`
`

`

`
`intern) mtor , Not 30:
`
`State in detail all facts supporting Applicant’s contention that
`
`DTAG’S rights in the DTAG Marks are not senior to Applicant’s rights in the T Mark.
`
`
`lnl’erm n’nttorv No. 31:
`
`State in detail all facts supporting Applicant’s contention in
`
`Paragraph 33 of Applicant’s Answer that the Notice of “Opposition fails to state a claim upon
`
`which relief can be granted.”
`
`
`
`
`Interro mtorv No. 32:
`
`Identify each person who has supplied documents or
`
`information for, or who has participated in responding to, these Interrogatories, and/0r Opposer’s
`
`First Set of Requests for Production of Documents and Things.
`
`Respectfully submitted,
`
`DEUTSCHE TELEKOM AG
`
`By:
`
`' g '”
`i
`
`f” ’
`MG.”
`,
`........
`Anthony V. Lupo
`Ross Q. Panko
`Danielle W. Bulger
`ARENT FOX LLP
`1717 K Street NW
`
`Washington, DC 20006-5344
`Phone: 202-857-6000
`
`Attorneys for Opposer
`
`AFDOCS/15875362.1
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that, on this 1 1th day of January, 2018, the foregoing OPPOSER’S
`
`FIRST SET OF WRITTEN INTERROGATORIES TO APPLICANT were served via 6-
`
`mail upon the following attorney of record for Applicant, Textras, Inc:
`
`RONALD D COLEMAN
`ARCHER & GREINER
`
`/i
`
`I
`
`./
`M, C.“
`«f
`‘1;
`.\._.m.m...w... WNW...—
`kw:
`[a
`Ross Q. Panko
`
`rcoleman@archerlaw.com
`
`,4,»
`I//
`
`By’
`
`AFDOCS/15875362.1
`
`10
`
`

`

`EXHIBIT B
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DEUTSCHE TELEKOM AG,
`
`v.
`TEXTRAS INC,
`
`Opposer,
`
`Applicant.
`
`)
`
`3
`3
`l
`3
`
`Opposition No: 91226377
`
`OPPOSER’S FIRST SET OF REQUESTS FOR
`PRODUCTION OF DOCUMENTS AND THINGS
`
`Pursuant to 37 OF .R. § 2.120, Trademark Trial and Appeal Board Manual of Procedure
`
`(“TBMP”) § 406, and Rules 26 and 34 ofthe Federal Rules of Civil Procedure, Opposer
`
`Deutsche Telekom AG (“DTAG” or “Opposer”), hereby requests that Applicant, Textras Inc.
`
`(“Applicant” or “Textras”), produce for inspection and copying the following documents at the
`
`offices of Opposer’s counsel, or by such other means and at such other time and place as may be
`
`agreed upon by the parties, and that said production be made within thirty (30) days of the date
`
`of service of this request. These Requests for Production are deemed continuing in nature as
`
`permitted by Rule 26(e) of the Federal Rules of Civil Procedure, and Applicant’s answers and/or
`
`production are to be supplemented promptly upon Applicant’s acquisition of further or additional
`
`documents or things.
`
`DEFINITIONS AND INSTRUCTIONS
`
`The following requests are subject to the definitions and instructions set forth below:
`
`1.
`
`The term “document” is defined to be synonymous in meaning and equal in scope
`
`to the usage of this term in Rule 34(a) of the Federal Rules of Civil Procedure. A draft or non-
`
`identical copy is a separate document within the meaning of this term.
`
`AFDOCS/15875447J
`
`1
`
`

`

`2.
`
`The term “person” is defined as any natural person or any business, legal or
`
`governmental entity or association.
`
`3.
`
`“Identify” when used with reference to a natural person, means to give, to the
`
`extent known, the person’s full name, present or last known address, and the present or last
`
`known place of employment. “Identify” when used with reference to any other type of person,
`
`means to give the person’s full name (including any assumed or business name), address(es) and
`
`form of organization (i.e. corporation, partnership, unincorporated association, etc.) Once a
`
`person has been identified in accordance with this subparagraph, only the name of that person
`
`need be listed in response to subsequent discovery requesting the identification of that person.
`
`4.
`
`“Identify” when used with reference to a document, means to give, to the extent
`
`known, the (i) type of document; (ii) general subject matter; (iii) date of the document; (iv)
`
`author(s), addressee(s) and recipient(s); and (iv) the present or last known location and custodian
`
`of the document.
`
`5.
`
`The term “communication” means the transmittal of information (in the form of
`
`facts, ideas, inquiries or otherwise).
`
`6.
`
`“State” or “state all facts” means to state all facts discoverable under Rule 26 of
`
`the Federal Rules of Civil Procedure that are known to Applicant. When used in reference to a
`M 6‘
`,3
`6‘ '
`state all facts ,
`identify”, “identify all documents”, and “identify all
`
`contention, “state,
`
`communications”, shall include all facts, documents and communications negating, as well as
`
`supporting the contention. When used in reference to a contention, “identify each person” shall
`
`include persons having knowledge of facts negating, as well as supporting, the contention.
`
`7.
`
`The term “concerning” shall mean relating to, referring to, describing, evidencing
`
`or constituting,
`
`AFDOCS/15875447.l
`
`

`

`8.
`
`“Applicant” shall include Textras, and any predecessor in interest and, where
`
`applicable, its officers, directors, agents, attorneys, employees, partners, corporate parent,
`
`subsidiaries or affiliates.
`
`9.
`
`“Opposer” shall include DTAG and, where applicable, any affiliates of DTAG.
`
`10.
`
`“Textras Application” or “T Application” refers to US. Application Serial No.
`
`86/643,251.
`
`1 1.
`
`“T Mark” refers to the trademark depicted and claimed in the Textras Application.
`
`12.
`
`“Textras Services” includes any or all
`
`services
`
`identified in the Textras
`
`Application, and/or any or all other goods and services with which the Textras Mark is used.
`
`13.
`
`“Textras Licensee(s)” refers to any person, including any business entity, that is
`
`licensed or otherwise authorized to use the Textras Mark in the United States.
`
`14.
`
`“DTAG Marks” refers, collectively, to (1) any or all of the trademark registrations
`
`relied upon in this opposition, including, but not limited to, US. Registration Nos. 2,284,387;
`
`2,460,631; 2,472,584; 2,508,277; 2,911,878; 2,941,016; 3,219,515; 3,216,527; 3,238,547;
`
`3,269,199; 3,452,974; 3,538,688; 3,578,791; 3,608,190; and 3,629,779; (2) US. Application
`
`Serial No. 76/252,927; and/or (3) any or all of the common law trademark rights described and
`
`asserted in DTAG’s Notice of Opposition.
`
`15.
`
`“DTAG Goods and Services” includes (1) any or all goods and services identified
`
`in the trademark registrations relied upon in this opposition, including, but not limited to, US.
`
`Registration Nos. 2,284,387; 2,460,631; 2,472,584; 2,508,277; 2,91 1,878; 2,941,016; 3,219,515;
`
`3,216,527; 3,238,547; 3,269,199; 3,452,974; 3,538,688; 3,578,791; 3,608,190; and 3,629,779;
`
`(2) any or all goods and services identified in US. Application Serial No. 76/252,927; and/or (3)
`
`any or all other goods and services with which the DTAG Marks are used.
`
`AFDOCS/15875447.1
`
`

`

`16.
`
`“Commerce” shall mean all commerce which may lawfully be regulated by the
`
`US. Congress.
`
`17.
`
`“Applicant’s Answer” refers to Applicant’s Answer to Notice of Opposition, filed
`
`in this opposition proceeding on or about March 28, 2016.
`
`18.
`
`The terms “all” and “each” shall be construed as all and each.
`
`19.
`
`Where an objection or claim of privilege is asserted in objection to any document
`
`request or sub—part thereof, and an answer is not provided on the basis of such assertion, the
`
`objection shall (i) identify the nature of the privilege (including work product) which is being
`
`claimed and (ii) identify the following information:
`
`(a)
`
`for documents:
`
`(1) the type of document; (2) general subject matter of the
`
`document; (3) the date of the document; and (4) such other information as is sufficient to identify
`
`the document for a subpoena duces tecum, including where appropriate, the author of the
`
`document, the addressee of the document, and, where not apparent, the relationship of the author
`
`and the addressee to each other;
`
`(b)
`
`for oral communications: (1) the name of the person making the
`
`communication and the names of the persons present while the communication was made and,
`
`where not apparent, the relationship of each person present to the person making the
`
`communication; (2) the date and place of the communication; and (3) the general subject matter
`
`of the communication.
`
`REQUESTS FOR PRODUCTION
`
`Reguest No.4,»;
`
`Documents sufficient to identify, by common commercial
`
`descriptive name, each product or service that is or was offered for sale in connection with the T
`
`Mark in the United States by Applicant or any Textras Licensee.
`
`AFDOCS/1587S447. ]
`
`

`

`Request No. 2‘:
`
`Documents sufficient to identify the manner in which any product
`
`or service is or was offered for sale in connection with the T Mark, including but not limited to
`
`the actual sale price and channels of sales, marketing and distribution.
`
`Reguest N0. 3:
`
`Documents sufficient to identify the first use of the T Mark in the
`
`United States.
`
`Request No. 4:
`
`Documents sufficient to identify, by common commercial
`
`descriptive name, each product or service Applicant or any Textras Licensee intends to offer or is
`
`considering offering for sale in connection with the '1‘ Mark in the United States.
`
`Request No. 5:
`
`Documents sufficient to identify the manner in which any product
`
`or service will be offered for sale in connection with the T Mark, including but not limited to the
`
`intended sale price and channels of sales, marketing and distribution.
`
`Reguest No. 6:
`
`Documents sufficient to identify all goods and services in
`
`connection with which the T Mark is, was, will be, or is intended to be used in United States
`
`commerce by Applicant or any other person that owns, in whole 01‘ in part, the rights to the T
`
`Mark or that is licensed or otherwise authorized to use the T Mark in the United States.
`
`Reguest N0. 7:
`
`All documents concerning Applicant’s use of the T Mark (either
`
`directly or through other authorized entities) at the time the Textras Application was filed.
`
`
`Rec nest. N0, 8;
`
`Documents sufficient to identify all goods and services used in
`
`connection with the T Mark by Applicant, or any other person that owns, in whole or in part, the
`
`rights to the T Mark, or that is licensed or otherwise authorized to use the T Mark in the United
`
`States, or intends to use the T Mark in the future.
`
`AFDOCS/15875447.|
`
`

`

`Reguest No. 9:
`
`Documents sufficient to identify efforts by Applicant or any
`
`Textras Licensee to promote (with actions, expenditures or otherwise) the T Mark, or the Textras
`
`Services, in United States commerce.
`
`Rer’west No. '10:
`
`Documents sufficient to show the channels of US. commerce used
`
`or intended to be used by Applicant, or any other person that owns, in whole or in part, the rights
`
`to the T Mark, or that is licensed or otherwise authorized to use the T Mark in the United States,
`
`to market, distribute and/or sell the goods and services claimed in the Textras Application.
`
`Request No. .l 1:
`
`Documents sufficient to identify all establishments, retail outlets,
`
`distributors, or websites that carry, promote, or sell products bearing or otherwise use or display
`
`the T Mark in the United States.
`
`Request No. 12:
`
`All fictitious business name registrations or “doing business as”
`
`name statements, or similar documents, for Textras.
`
`Reguest No. 13:
`
`All fictitious business name registrations or “doing business as”
`
`name statements, or similar documents, for each person, including each business entity, that
`
`owns, in whole or in part, the rights to the T Mark, or that is licensed or otherwise authorized to
`
`use the T Mark in the United States.
`
`Reguest N o. 14:
`
`All documents concerning Applicant’s design, selection, or choice
`
`of the T Mark.
`
`Request No. 15:
`
`All documents concerning any clearance efforts undertaken by
`
`Applicant or any Textras Licensee for the T Mark.
`
`Request No. 16:
`
`All documents concerning any challenges, conflicts, disputes, or
`
`accusations anywhere in the world regarding Applicant’s selection, filing, or use of the T Mark,
`
`whether or not official proceedings were instituted.
`
`AFDOCS/15875447.1
`
`

`

`Reguest N0. 17:
`
`All documents concerning Applicant’s knowledge of DTAG or any
`
`of its affiliates, including but not limited to T-Mobile USA Inc., T-Venture, T—Systems, NA,
`
`and Telekom Innovation Laboratories (T—Labs), before or at the same time as Applicant
`
`designed, selected, or chose the T Mark.
`
`Reguest No. 18:
`
`All documents concerning Applicant’s knowledge of DTAG or any
`
`of its affiliates, including, but not limited to, T-Mobile USA Inc, T—Venture, T-Systems, NA,
`
`and Telekom Innovation Laboratories (T-Labs), before Applicant filed the Textras Application.
`
`Request No. 19:
`
`All documents concerning Applicant’s knowledge of any of the
`
`DTAG Marks before or at the same time as Applicant designed, selected, or chose the T Mark.
`
`Reg uest N0. 20:
`
`All documents concerning Applicant’s knowledge of any of the
`
`DTAG Marks before Applicant filed the Textras Application.
`
`Request No. 2‘]:
`
`All documents concerning the first occasions in which Applicant
`
`or any Textras Licensee learned of any of the DTAG Marks.
`
`Reguest N0. 22:
`
`Documents sufficient to reflect the ownership and composition of
`
`Textras, including, without limitation, the business organization documents, the operating
`
`agreement, the certificate of formation, the bylaws, and any amendments to the foregoing.
`
`Reguest No. 23:
`
`Documents sufficient to reflect the ownership and composition of
`
`all persons, including all business entities, that are licensed or otherwise authorized to use the T
`
`Mark in the United States, including, for each such person, the business organization documents
`
`and other company records, including, without limitation, the operating agreement, the certificate
`
`of formation, and any amendments to the foregoing.
`
`AFDOCS/15875447,1
`
`

`

`
`
`
`Rer ucst No. 24:
`
`Documents sufficient to reflect the organizational structure of
`
`Textras, and the name and location of each person in charge of each business operation and/or
`
`office in the organizational structure.
`
`Reguest N0. 25:
`
`Documents sufficient to reflect the organizational structure of all
`
`persons, including all business entities, that are licensed or otherwise authorized to use the T
`
`Mark in the United States, and the name and location of each person in charge of each business
`
`operation and/or office in the organizational structure.
`
`Request No. 26:_
`
`Documents sufficient to reflect the US. organizational structure of
`
`Textras and the name and location of each person in charge of each business operation and/or
`
`office in the organizational structure.
`
`Reguest No. 27:
`
`Documents sufficient to reflect the US. organization

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket