Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA906814
`
`Filing date:
`
`07/02/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91239630
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Plaintiff
`Talking Rain Beverage Company, Inc.
`
`LYNNE E GRAYBEAL & WINFIELD B MARTIN
`PERKINS COIE LLP
`1201 THIRD AVE STE 4900
`SEATTLE, WA 98101-3099
`UNITED STATES
`Email: pctrademarks@perkinscoie.com, wmartin@perkinscoie.com
`
`Motion to Compel Discovery or Disclosure
`
`Colleen Ganin
`
`cganin@perkinscoie.com, pctrademarks@perkinscoie.com, talkin-
`grain@perkinscoie.com, wrava@perkinscoie.com
`
`Signature
`
`Date
`
`/Colleen Ganin/
`
`07/02/2018
`
`Attachments
`
`Combined Motion to Compel.pdf(298846 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA906814
`
`Filing date:
`
`07/02/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91239630
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Plaintiff
`Talking Rain Beverage Company, Inc.
`
`LYNNE E GRAYBEAL & WINFIELD B MARTIN
`PERKINS COIE LLP
`1201 THIRD AVE STE 4900
`SEATTLE, WA 98101-3099
`UNITED STATES
`Email: pctrademarks@perkinscoie.com, wmartin@perkinscoie.com
`
`Motion to Compel Discovery or Disclosure
`
`Colleen Ganin
`
`cganin@perkinscoie.com, pctrademarks@perkinscoie.com, talkin-
`grain@perkinscoie.com, wrava@perkinscoie.com
`
`Signature
`
`Date
`
`/Colleen Ganin/
`
`07/02/2018
`
`Attachments
`
`Combined Motion to Compel.pdf(298846 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TALKING RAIN BEVERAGE COMPANY,
`INC.
`
`Opposition No.: 91239630
`
`Mark: ISKLAR
`
`v.
`
`ISKLAR AS,
`
`Opposer,
`
`Applicant.
`
`Application Serial No. 87/437,011
`
`Filing Date: May 4, 2017
`
`Publication Date: October 24, 2017
`
`OPPOSER’S MOTION TO COMPEL INITIAL DISCLOSURES
`
`Pursuant to 37 C.F.R. § 2.120 and Trademark Trial and Appeal Board Manual of
`
`Procedure (“T.B.M.P.”) § 523, Opposer Talking Rain Beverage Company, Inc. (“Talking Rain”
`
`or “Opposer”), by and through counsel, hereby moves the Trademark Trial and Appeal Board
`
`(the “Board”) to compel Applicant Isklar AS (“Applicant” or “Isklar”) to produce its initial
`
`disclosures. In support of this Motion, Talking Rain states as follows.
`
`BACKGROUND
`
`On February 21, 2018, Talking Rain filed the instant Notice of Opposition against
`
`Applicant’s application to register ISKLAR (English translation: “ICE CLEAR”) for “Fruit
`
`drinks; Fruit juices; Mineral and aerated waters; Preparations for making beverages, namely,
`
`fruit drinks; Soft drinks; Syrups for making beverages” in Class 32, based on a likelihood of
`
`confusion with Talking Rain’s highly similar marks covering the same goods.
`
`On April 2, 2018, Registrant filed its Answer; on April 18, 2018, the parties participated
`
`in a discovery conference; and on May 2, 2018, discovery opened.
`
`
`
`On May 31, 2018, Talking Rain timely served its Initial Disclosures to Applicant. See
`
`Correspondence to Applicant’s Counsel, attached as Exhibit A, and Opposer’s Initial
`
`Disclosures, attached as Exhibit B. By June 1, 2018, however, the deadline for serving its initial
`
`disclosures, Applicant had not, and still has not, served its initial disclosures.
`
`On June 18, 2018, counsel for Talking Rain notified Applicant’s counsel that the initial
`
`disclosures were overdue, and requested that they be served immediately. See Correspondence to
`
`Applicant’s Counsel, attached as Exhibit C.
`
`On June 22, 2018, because Applicant had still neither served its initial disclosuresnor
`
`responded to Talking Rain’s correspondence, Talking Rain sent Applicant’s counsel another
`
`follow-up email. See Correspondence to Applicant’s Counsel, attached as Exhibit D.
`
`Finally, on June 27, 2018, Talking Rain’s counsel contacted Applicant’s counsel by
`
`phone. During that call, Applicant’s counsel confirmed that Applicant had not provided
`
`instructions to provide initial disclosures as of that date and that he did not expect to receive any
`
`such instructions.
`
`ARGUMENT
`
`A motion to compel may be filed when a party fails to provide initial disclosures, and
`
`must be filed within thirty days of the disclosure deadline. See 37 C.F.R. §§ 2.120(f), (f)(1);
`
`T.B.M.P. § 523.01. The moving party must assert that it has made a good faith effort to resolve
`
`the discovery dispute with the other party prior to filing the motion to compel. 37 C.F.R. §
`
`2.120(e). That assertion must be supported by a recitation of the communications conducted,
`
`including dates, a summary of telephone conversations, and copies of any correspondence
`
`exchanged, such as email and letters. T.B.M.P. § 523.03.
`
`2
`
`
`
`Based on the facts set forth above, and the supporting Exhibits thereto, Talking Rain has
`
`met each of these legal requirements.
`
`REQUEST FOR RELIEF
`
`Applicant’s failure to adequately participate in discovery and satisfy its discovery
`
`obligations has been unreasonable, causing prejudice to Talking Rain. Therefore, Talking Rain
`
`respectfully requests that the Board grant this Motion, and issue an Order compelling Applicant
`
`to serve its initial disclosures.
`
`Dated: July 1, 2018
`
`Respectfully submitted,
`
`TALKING RAIN BEVERAGE COMPANY, INC.
`
`By: /s/ Colleen Ganin
`William Rava
`Colleen Ganin
`Perkins Coie LLP
`1201 Third Avenue, Ste. 4900
`Seattle, Washington 98101-3099
`Telephone: (206)359-8000
`Email: wrava@perkinscoie.com
` cganin@perkinscoie.com
`
`Attorneys for Opposer
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on July 1, 2018, I served a true and correct copy of the foregoing
`
`Opposer’s Motion to Compel by emailing a copy to Applicant’s attorney of record, Mark Lebow
`
`of Ladas & Parry, at mlebow@ladas.com and CRing@ladas.com.
`
`/s/ Colleen Ganin
`Attorney for Opposer Talking
`Rain Beverage Company, Inc.
`
`4
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`Ganin, Colleen M. (SEA)
`Ganin, Colleen M. (SEA)
`From:
`Sent:
`Thursday, May 31, 2018 6:41 AM
`mlebow@ladas.com
`To:
`Ring, Christopher; Graybeal, Lynne E. (SEA); *TALKINGRAIN; Rava, William C. (SEA)
`Cc:
`Subject:
`Opposer's Initial Disclosures - Opp. 91239630 - Talking Rain Bev. Co. v. Isklar AS (113405-7075)
`Talking Rain_Initial Disclosures.pdf
`Attachments:
`
`Dear Mark,
`
`In advance of the June 1, 2018 deadline, please find Talking Rain’s Initial Disclosures for Opposition No. 91239630
`attached to this email.
`
`Best,
`
`Colleen
`
`Colleen Ganin | Perkins Coie LLP
`ASSOCIATE
`1201 Third Avenue Suite 4900
`Seattle, WA 98101-3099
`D. +1.206.359.3443
`E. CGanin@perkinscoie.com
`
`
`1
`
`
`
`EXHIBIT B
`EXHIBIT B
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TALKING RAIN BEVERAGE COMPANY,
`INC.
`
`Opposition No.: 91239630
`
`Mark: ISKLAR
`
`Opposer,
`
`v.
`
`Application Serial No. 87/437,011
`
`Filing Date: May 4, 2017
`
`ISKLAR AS,
`
`Publication Date: October 24, 2017
`
`Applicant.
`
`OPPOSER’S INITIAL DISCLOSURES
`
`Pursuant to 37 C.F.R. § 2.120(a) and Fed. R. Civ. P 26(a)(1), Opposer Talking Rain
`
`Beverage Company, Inc. (“Opposer”) provides the following as Initial Disclosures in the above-
`
`referenced Opposition.
`
`PRELIMINARY STATEMENT
`
`Opposer makes its Initial Disclosures based on its current knowledge, understanding, and
`
`belief as to the facts and information available as of the date below. The parties have not yet
`
`exchanged discovery in this Opposition, and, therefore, Opposer has not completed its
`
`investigation, collection of information, discovery, or analysis relating to this Opposition.
`
`Opposer will clarify, amend, supplement, or modify the information contained in these Initial
`
`Disclosures if and when Opposer obtains supplemental information, to the extent required by the
`
`Federal Rules of Civil Procedure, Code of Federal Regulations, and/or the Trademark Trial and
`
`Appeal Board Manual of Procedure. Opposer also reserves its right to present witnesses,
`
`documents, and/or evidence in addition to the information that it discloses and identifies herein.
`
`140011363.1
`
`
`
`A. Persons Likely to Have Discoverable Information
`
`Based upon currently available information, the following individuals and/or entities are
`
`likely to have discoverable information in their possession, custody, or control that Opposer may
`
`use to support its claims:
`
`Name
`Sarah Gusta
`
`Director of Opposer’s
`Marketing Department
`
`Address
`Contact through
`Opposer’s counsel
`
`Unknown
`
`Employees and/or
`representative of
`Applicant, whom are
`presently unknown to
`Opposer
`
`Subject Matter
`Information on Opposer’s use of,
`and its sales and marketing related
`to, the SPARKLING ICE,
`SPARKLING ICE LEMONADE,
`and ICE marks; information
`regarding the harm that would be
`caused to Opposer by registration of
`Applicant’s ISKLAR mark.
`Information regarding Applicant’s
`intended use of the ISKLAR mark;
`information regarding the meaning
`of the ISKLAR mark; information
`regarding Applicant’s trade
`channels, advertisements,
`promotional activities, and
`marketing relating to the ISKLAR
`mark; information regarding
`Applicant’s business.
`
`In addition to those individuals and/or entities identified above, Opposer reserves the
`
`right to depose, examine, and/or request testimony from any persons listed in Applicant’s initial
`
`disclosures. Opposer also reserves the right to present testimony during the trial period, or at any
`
`other time, from any persons deposed during the course of this Opposition, or otherwise
`
`identified during the course of this Opposition.
`
`Although Opposer believes the above-identified individuals are likely to have
`
`information relating to the identified subject matter set forth above, inclusion of an individual in
`
`these Initial Disclosures shall not be construed as an admission that the listed individual will
`
`have information that is admissible as evidence.
`
`140011363.1
`
`2
`
`
`
`B. Relevant Documents
`
`The following are the types of documents (and their locations), which are relevant to
`
`Opposer’s Notice of Opposition:
`
`Category
`
`Location
`
`Opposer’s incorporation documents and other
`corporate documents
`
`File history for Opposer’s SPARKLING ICE
`Registration Nos. 1944414 and 4880558,
`SPARKLING ICE LEMONADE Registration No.
`4392374, and ICE Registration Nos. 2040885 and
`4507255
`File history for Applicant’s ISKLAR mark
`Documents regarding Applicant’s adoption and
`intended use of the ISKLAR mark
`Documents regarding Applicant’s use of the
`ISKLAR mark
`Documents regarding sales and marketing of
`Opposer’s goods and services sold under the
`SPARKLING ICE, SPARKLING ICE
`LEMONADE, and ICE marks
`Documents regarding Opposer’s use of its
`SPARKLING ICE, SPARKLING ICE
`LEMONADE, and ICE marks
`Documents showing the injury that will be caused to
`Opposer if registrant’s ISKLAR mark were granted
`registration
`
`Opposer’s Corporate Offices
`30520 SE 84th Street
`Preston, WA 98050
`USPTO
`
`Applicant; USPTO
`Applicant
`
`Applicant
`
`Opposer’s Corporate Offices
`30520 SE 84th Street
`Preston, WA 98050
`
`Opposer’s Corporate Offices
`30520 SE 84th Street
`Preston, WA 98050
`Opposer’s Corporate Offices
`30520 SE 84th Street
`Preston, WA 98050
`
`140011363.1
`
`3
`
`
`
`DATED: May 31, 2018
`
` Respectfully submitted,
`
`PERKINS COIE LLP
`
`/Lynne E. Graybeal/
`By
`Lynne E. Graybeal
`William C. Rava
`Colleen M. Ganin
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, Washington 98101-3099
`Phone: (206) 359-8000
`Fax:
`(206) 359-9000
`Attorneys for Opposer
`
`140011363.1
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned affirms that OPPOSER’S INITIAL DISCLOSURES were served on
`
`Applicant ISKLAR AS by emailing a copy to Applicant’s attorney of record, Mark Lebow of
`
`Ladas & Parry, at mlebow@ladas.com and CRing@ladas.com, as required pursuant to 37 CFR §
`
`2.119 and Trademark Trial and Appeal Board Manual of Procedure § 113.04, on the date set
`
`forth below.
`
`Dated: May 31, 2018
`
`/Lynne E. Graybeal/
`Lynne E. Graybeal
`
`140011363.1
`
`5
`
`
`
`EXHIBIT C
`EXHIBIT C
`
`
`
`Ganin, Colleen M. (SEA)
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Dear Mark,
`
`Ganin, Colleen M. (SEA)
`Monday, June 18, 2018 11:12 AM
`’mlebow@ladas.com’
`’Ring, Christopher’; Graybeal, Lynne E. (SEA); *TALKINGRAIN; Rava, William C. (SEA)
`RE: Opposer’s Initial Disclosures - Opp. 91239630 - Talking Rain Bev. Co. v. Isklar AS
`(113405-7075)
`
`We have not received your client’s initial disclosures, which were due on June 1, 2018.
`
`Please provide your client’s initial disclosures at your earliest convenience.
`
`Best,
`
`Colleen
`
`Colleen Ganin | Perkins Coie LLP
`ASSOCIATE
`1201 Third Avenue Suite 4900
`Seattle, WA 98101-3099
`D. +1.206.359.3443
`E. CGanin@perkinscoie.com
`
`From: Ganin, Colleen M. (SEA)
`Sent: Thursday, May 31, 2018 6:41 AM
`To: mlebow@ladas.com
`Cc: Ring, Christopher <CRing@ladas.com>; Graybeal, Lynne E. (SEA) <LGraybeal@perkinscoie.com>; *TALKINGRAIN
`<TALKINGRAIN@perkinscoie.com>; Rava, William C. (SEA) <WRava@perkinscoie.com>
`Subject: Opposer’s Initial Disclosures - Opp. 91239630 - Talking Rain Bev. Co. v. Isklar AS (113405-7075)
`
`Dear Mark,
`
`In advance of the June 1, 2018 deadline, please find Talking Rain’s Initial Disclosures for Opposition No. 91239630
`attached to this email.
`
`Best,
`
`Colleen
`
`Colleen Ganin | Perkins Coie LLP
`ASSOCIATE
`1201 Third Avenue Suite 4900
`Seattle, WA 98101-3099
`D. +1.206.359.3443
`E. CGanin@perkinscoie.com
`
`1
`
`
`
`EXHIBIT D
`EXHIBIT D
`
`
`
`Ganin, Colleen M. (SEA)
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Ganin, Colleen M. (SEA)
`Friday, June 22, 2018 10:46 AM
`’mlebow@ladas.com’
`’Ring, Christopher’; Graybeal, Lynne E. (SEA); *TALKINGRAIN; Rava, William C. (SEA)
`RE: Opposer’s Initial Disclosures - Opp. 91239630 - Talking Rain Bev. Co. v. Isklar AS
`(113405-7075)
`
`Importance:
`
`High
`
`Mark,
`
`You have not responded to our prior email, nor have we received your client’s overdue initial disclosures. Please let us
`know a time on Monday to discuss this issue.
`
`Regards,
`
`Colleen
`
`Colleen Ganin | Perkins Coie LLP
`ASSOCIATE
`1201 Third Avenue Suite 4900
`Seattle, WA 98101-3099
`D. +1.206.359.3443
`E. CGanin@perkinscoie.com
`
`From: Ganin, Colleen M. (SEA)
`Sent: Monday, June 18, 2018 11:12 AM
`To: ’mlebow@ladas.com’ <mlebow@ladas.com>
`Cc: ’Ring, Christopher’ <CRing@ladas.com>; Graybeal, Lynne E. (SEA) <LGraybeal@perkinscoie.com>; *TALKINGRAIN
`<TALKINGRAIN@perkinscoie.com>; Rava, William C. (SEA) <WRava@perkinscoie.com>
`Subject: RE: Opposer’s Initial Disclosures - Opp. 91239630 - Talking Rain Bev. Co. v. Isklar AS (113405-7075)
`
`Dear Mark,
`
`We have not received your client’s initial disclosures, which were due on June 1, 2018.
`
`Please provide your client’s initial disclosures at your earliest convenience.
`
`Best,
`
`Colleen
`
`Colleen Ganin | Perkins Coie LLP
`ASSOCIATE
`1201 Third Avenue Suite 4900
`Seattle, WA 98101-3099
`D. +1.206.359.3443
`E. CGanin@perkinscoie.com
`
`From: Ganin, Colleen M. (SEA)
`Sent: Thursday, May 31, 2018 6:41 AM
`To: mlebow@ladas.com
`
`1
`
`
`
`Cc: Ring, Christopher <CRing@ladas.com>; Graybeal, Lynne E. (SEA) <LGraybeal@perkinscoie.com>; *TALKINGRAIN
`<TALKINGRAIN@perkinscoie.com>; Rava, William C. (SEA) <WRava@perkinscoie.com>
`Subject: Opposer’s Initial Disclosures - Opp. 91239630 - Talking Rain Bev. Co. v. Isklar AS (113405-7075)
`
`Dear Mark,
`
`In advance of the June 1, 2018 deadline, please find Talking Rain’s Initial Disclosures for Opposition No. 91239630
`attached to this email.
`
`Best,
`
`Colleen
`
`Colleen Ganin | Perkins Coie LLP
`ASSOCIATE
`1201 Third Avenue Suite 4900
`Seattle, WA 98101-3099
`D. +1.206.359.3443
`E. CGanin@perkinscoie.com
`
`2
`
`
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