v.
Mark:
Ana Eloisa del Carmen Alfaro de Maron,
Respondent.
On March 11, 2010, Respondent faxed and mailed a letter to counsel for Petitioner noting
the lack of documents produced and the numerous unfounded objections, including a note that
no details regarding the amount of sales and advertising under Petitioners marks in the United
States has been produced. See Exhibit E.
On April 2, 2010, Respondent faxed and mailed a follow up letter to counsel for
Petitioner requesting responses and documents by April 9, 2010. See Exhibit F.
To date, Respondent has received no document production from Petitioner other than
Petitioners Initial Production and has not received any response to the discovery issues raised in
the March 11, 2010, letter.
The discovery period in this matter is scheduled to close May 17, 2010. Docket Docs.
10, 11.
ARGUMENT
Respondent cannot reasonably conduct depositions, issue follow up discovery requests,
or prepare for trial until Petitioner has completely complied with its outstanding discovery
obligations. Petitioner has ignored Respondents attempts to resolve these discovery disputes
without requiring to the Boards intervention.
p.2
Petitioner provided numerous objections that the interrogatories and requests are not
specific in time. See responses to Interrogatory Nos. 4a, 4b, 5, 6, 11, 20, and 23 (Ex. C) and
responses to Request for Production Nos. 9, 10, 11, and 20 (Ex. D). However, Petitioner has not
made any effort to provide responses for even a period of time which it deems reasonable.
Petitioner has alleged extensive use and advertising of its marks, that its marks are famous, and
that its marks are being diluted. See Petition to Cancel at 6, 20. It is the duty of a plaintiff
asserting that its marks are famous to clearly prove it. Leading Jewelers Guild Inc. v. LJOW
Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007); Hasbro, Inc. v. Braintrust Games, Inc.,
Opposition No. 91169603, N. 8 (T.T.A.B. Aug. 24, 2009) (Fame is a factual matter which must
be established on the record in each proceeding.). For purposes of dilution, a plaintiff must
show that when the general public encounters the plaintiffs mark, in almost any context, they
associate it with the plaintiff. Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001).
Respondent is therefore entitled to discovery of Petitioners evidence supporting these
allegations.
The handful of documents produced by Petitioner thus far includes records from its board
meetings from 1999, essentially acknowledging that documents from at least 10 years ago may
be relevant and appropriate, and acknowledging that Petitioner maintains at least some records
that date back 10 or more years.
In addition, Petitioner provided numerous objections that responses or document
production would be unduly burdensome without any justification. See Responses to
Interrogatory Nos. 4a, 4b, 5, 6, 11, 20, 21, 23, 26, (Ex. C) and Response to Requests for
Production Nos. 8, 9, 10, 11, 17, and 20 (Ex. D). A party claiming that a request is burdensome
must justify that claim; for example, by stating that the responding party has tens of thousands of
p.3
documents spanning decades. Where complete compliance with a particular request would be
unduly burdensome, a representative sampling may be provided. See TBMP 414(2) (2d ed. rev.
2004). Additionally, a production of representative documents must truly be a representative
sampling, and not merely a self-serving selection of favorable documents. See, e.g., The Procter
& Gamble Company v. Keystone Automotive Warehouse, Inc., 191 USPQ 468 (TTAB 1976).
In addition to the unwarranted and unsupported objections discussed above, the following
discovery responses and deficiencies were addressed in the March 11, 2010, letter from counsel
for Respondent:
Regarding Interrogatory No. 3, details regarding the first use of the mark and first use in
commerce have not been provided, including but not limited to the nature of the first
uses, the specific dates of the first uses, and the persons involved in the first uses.
p.4
services. As a result, Petitioners objections are unfounded and its answer nonresponsive. Respondent is entitled to know any third party companies or persons used for
promotional services so that Respondent may conduct discovery with or depose
representatives from those parties if necessary. This information is relevant to the facts
and allegations pleaded in the Petition to Cancel, numerous DuPont factors, and
Petitioners claim of fame.
Regarding Petitioners objection to Interrogatory No. 22, Petitioners response is not fully
responsive. Petitioners statements regarding the number of SKUs, volume of sales and
dollar amount of sales are not specific, not annualized, and not provided for the United
States apart from worldwide data.
Regarding Petitioners objections to Interrogatory No. 26, the request relates to any
policy for document retention in general, and thus is not overly board or burdensome
and is quite specific.
p.5
services), the requests for documents are not overly board or burdensome for a period of
at least the last 10 years in light of Petitioners claim of extensive use and famous marks.
Regarding Request No. 9, pursuant to TBMP 414(8), [a] partys plans for expansion
may be discoverable under protective order.
Regarding Request No. 17, the request relates to any policy for document retention in
general, and thus is not overly board or burdensome and is quite specific.
p.6
Erik M. Pelton
ERIK M. PELTON & ASSOCIATES, PLLC
PO Box 100637
Arlington, Virginia 22210
TEL: (703) 525-8009
FAX: (703) 525-8089
Attorney for Respondent
p.7
v.
Mark:
Ana Eloisa del Carmen Alfaro de Maron,
Respondent.
I represent Respondent Ana Eloisa del Carmen Alfaro de Maron in this matter.
2.
I have knowledge of the facts set forth herein and in Respondents Motion to
Compel.
3.
Respondents First Set of Interrogatories and First Requests for Production were
served on Respondent on December 22, 2009, and are attached hereto as Exhibits A and B.
4.
On March 11, 2010, I mailed and faxed counsel for Petitioner a letter, attached as
On April 2, 2010 I faxed and mailed counsel for Petitioner a follow up letter,
attached as Exhibit F, noting that no response has been received to my March 11, 2010, letter.
p.8
7.
First Set of Interrogatories and Petitioners First Requests for Production or to the specific issues
raised in counsels March 11, 2010, letter.
8.
As of April 15, 2010, Petitioner has not produced any documents regarding the
advertising or sales in the United States regarding the marks it asserts are famous.
9.
Pursuant to 37 C.F.R. 2.120(e) and TBMP 523.02, I have made a good faith
effort to resolve the issues presented by Petitioners objections and lack of responses to
Respondents First Set of Interrogatories and Respondents First Requests for Production.
10.
Additional details regarding the nature and dates of these good faith efforts are
contained in the Motion to Compel filed herewith and in the March 11, 2010 and April 2, 2010,
letters attached as Exhibits E and F.
I declare under penalty of Perjury that all of the foregoing is true and correct.
p.9
CERTIFICATE OF SERVICE
I hereby certify that a true and accurate copy of RESPONDENT'S MOTION TO
COMPEL has been served on the following by delivering said copy on April 16, 2010, via First
Class Mail, to counsel for Petitioner at the following address:
Stewart Gitler
Hoffman, Wasson & Gitler, P.C.
2461 South Clark Street, Crystal City 2, Suite 522
Arlington, VA 22202
By:
Erik M. Pelton, Esq.
p.10
1 of 1
http://estta.uspto.gov/com/receipt.jsp?iname=T71WZ3AVZ7MB-4478
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Receipt
ESTTA342609
04/16/2010
Proceeding
92051217
Party
Defendant
Ana Eloisa del Carmen Alfaro de Maron
Filer's Name
Erik M. Pelton
Filer's e-mail
uspto@tm4smallbiz.com
Signature
/ErikMPelton/
Date
04/16/2010
Attachments
4/16/2010 9:04 AM