Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA909488 Filing date: 07/16/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91235706 Party Plaintiff Del Taco LLC Correspondence APRIL L BESL Address DINSMORE & SHOHL LLP 255 E 5TH ST STE 1900 CINCINNATI, OH 45202 UNITED STATES Email: [email protected], [email protected] Submission Reply in Support of Motion Filer's Name Govinda M. Davis Filer's email [email protected], [email protected], tmdock- [email protected] Signature /Govinda M. Davis/ Date 07/16/2018 Attachments Del Tacos Reply ISO Motion for Summary Judgment and Opposition to MSJ.pdf(378908 bytes ) Del Tacos Reply ISO Motion for Summary Judgment and Opposition to MSJ Ex- hibit FF.pdf(173094 bytes ) Del Tacos Reply ISO Motion for Summary Judgment and Opposition to MSJ Ex- hibit GG.pdf(173423 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
NAUGLES CORP., ) ) Petitioner, ) -vs- ) ) Cancellation No.: 92064091 DEL TACO, LLC, ) Registration No.: 4,261,951 Respondent. ) Mark: NAUGLES ) ) Consolidated with: DEL TACO, LLC, ) ) Opposition No.: 91235706 Opposer, ) U.S. Application: 85/040,746 -vs- ) Mark: NAUGLES ) ZIEBARTH HOLDINGS, LLC, ) ) Applicant. )
DEL TACO’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT AND OPPOSITION TO NAUGLES CORP. AND ZIEBARTH HOLDINGS, LLC’S CROSS MOTION FOR SUMMARY JUDGMENT
Del Taco, LLC, (“Del Taco”), by and through counsel, hereby submits this Reply in
Support of its Motion for Summary Judgment and Opposition to Naugles Corp. (“Petitioner”) and Ziebarth Holding, LLC’s (“Applicant”) Motion for Summary Judgment pursuant to TBMP §
528.02 and 37 C.F.R. § 2.127. For clarity, Petitioner and Applicant are collectively referred to as
“Ziebarth.”
Introduction
There are no material facts that could support the Petition to Cancel Del Taco’s U.S.
Trademark Registration No. 4,261,951 for NAUGLES in connection with clothing (“Del Taco’s
NAUGLES Clothing Registration”). Therefore, Cancellation No. 92064091 (the “Petition”) should be dismissed as a matter of law. Similarly, there is no dispute of material fact that
Applicant’s U.S. Trademark Application No. 85/040,746 (the “Ziebarth Application”) should be refused registration on the grounds set forth in Del Taco’s Motion for Summary Judgment (“Del
Taco’s MSJ”). However, rather than address the straightforward claims at issue in the
Cancellation1 and Opposition2, Petitioner’s Opposition to Del Taco’s Motion for Summary
Judgment and Cross Motion for Summary Judgment (“Ziebarth’s Brief”) merely attempts to pull at the heart strings with a manufactured story of Petitioner’s “budding business” challenging the
“goliath” Del Taco in a “battle” to use and register the NAUGLES trademark. In doing so,
Ziebarth devotes countless pages to its self-serving interpretation of Del Taco’s alleged lack of trademark rights in restaurant services – which are not at issue in either proceeding. Such arguments are wholly irrelevant to the actual claims alleged in the Cancellation and Opposition and serve as nothing more than a blatant attempt to cloud the issues and avoid summary judgment again Ziebarth’s baseless claims and actions during prosecution.
Summary judgment in both the Cancellation and Opposition comes down to the basic premise that there are no facts or evidence to support any of Petitioner’s claims that Del Taco does not own protectable trademark rights in the NAUGLES trademark for clothing. Moreover, there is no dispute that Applicant committed fraud on the Trademark Office and that the Board should refuse registration of the Ziebarth Application.
Importantly, as further discussed below, Ziebarth’s main argument regarding preclusion, namely, that the Board’s finding that Del Taco did not have sufficient trademark use to maintain its previous trademark registration for NAUGLES for restaurant services should somehow preclude Del Taco from using or registration of the trademark for clothing or restaurant services,
1 U.S. Cancellation No. 92064091 filed by Naugles Corp. against Del Taco’s U.S. Registration No. 4,261,951 for NAUGLES. 2 U.S. Opposition No. 91235706 filed by Del Taco against Ziebarth Holdings, LLC’s U.S. Application No. 85/040,746 for NAUGLES.
2 is wholly unsupported by TTAB case law, and has already been rejected by the Board in Del
Taco’s previous Motion to Dismiss. (See D.E. 9 in Cancellation No. 92064091.)
Moreover, Ziebarth’s Brief relies on improper, conclusory and self-serving statements contained in the declaration of Ziebarth’s counsel of record Ms. Kelly K. Pfeiffer. The averments contained in Ms. Pfeiffer’s declaration are legal arguments and opinions, rather than facts, which do not create a dispute of fact, have no place in a declaration in support of a summary judgment motion and have no probative value.3
Del Taco’s Reply In Support Of Its Motion for Summary Judgment
As outlined and fully briefed in its Del Taco’s MSJ, all Counts in the Cancellation should be dismissed because no genuine dispute of material fact exists to support Petitioner’s claims that
Del Taco’s NAUGLES Clothing Registration: (i) is merely ornamental and fails to function as a trademark; (ii) has not been consistently used by Del Taco or abandoned; (iii) was registered under fraudulent circumstances; or (iv) misrepresents the source of Del Taco’s goods. Moreover,
Petitioner’s attempt to conflate the Board’s finding that Del Taco did not have sufficient trademark use to maintain its prior trademark registration for restaurant services4 in an attempt to cancel Del Taco’s valid trademark registration for clothing has already been rejected by the
Board and has no bearing on these proceedings. (See D.E. 98 in Cancellation No. 92053501); see also Litton Indus. v. Litronix, Inc., 577 F.2d 709, 711(C.C.P.A. 1978) (the U.S. Court of
Customs and Patent Appeals overturned the Board’s summary judgment decision on res judicata and estoppel, holding that “admission that the previous proceedings involved an application to register the mark LITRONIX for different goods is fatal to the board’s reliance on collateral estoppel.”); see also Prairie Island Indian Cmty. v. Treasure Island Corp., 2008 TTAB LEXIS
3 Del Taco also submits that Ms. Pfeiffer’s declaration is exceedingly close to lay witness testimony regarding her opinions and inferences. 4 Del Taco’s U.S. Trademark Registration No. 1,043,729 for NAUGLES (“Del Taco’s Prior Registration”).
3 798 at *8 (TTAB 2008) (“[h]owever, the hotel, restaurant, and bar services identified in
Registration No. 2176004, are different from the goods and services listed for the marks in
Cancellation Nos. 92028171 and 92028379 and, thus, cannot be considered the same
‘transactional facts.’”). Moreover, Ziebarth’s reliance on the self-serving, unsupported declarations of its attorney and principal is improper and does not create a genuine issue of material fact.
I. Collateral Estoppel Does Not Apply to The Cancellation or The Opposition Because Del Taco’s Trademark Use for Restaurant Services is Not At Issue in This Proceeding.
Petitioner argues that collateral estoppel is “pivotal” to both proceedings; however, collateral estoppel does not apply in either proceeding because Del Taco does not seek to establish that its use of NAUGLES for food items constitutes use in commerce in order to support a trademark registration. Del Taco’s trademark application for restaurant services,5 which is asserted in the Opposition, was filed on an intent to use basis and Del Taco is not required to show use of its mark at this juncture. Moreover, the services at issue in the Prior
Cancellation between Del Taco and Christian Ziebarth6 are different from the goods at issue in the instant Cancellation; therefore, the decision in the Prior Cancellation cannot preclude Del
Taco from offering evidence that shows its use in commerce of its NAUGLES trademark for clothing. See J. Thomas McCarthy, Vol. 6, McCarthy on Trademarks and Unfair Competition, §
32:104 (2018) (“If different goods or services are involved in the second case, there can be no identity of issues as required for issue preclusion.”) (citing Nina Ricci, S.A.R.L. v. E.T.F.
Enterprises, Inc., 889 F2d 1070, 1074, n.1 (Fed. Cir. 1989) (further citations omitted); see also
J.I. Case Co. v. F.L. Indus., 1986 TTAB LEXIS 112 at *6 (TTAB 1986) (“where a previous
5 U.S. Trademark Application No. 85/340,660 for “restaurant services” (“Del Taco’s NAUGLES Restaurant Application”). 6 U.S. Cancellation No. 92053501 (the “Prior Cancellation”).
4 proceeding involves an application to register a mark for different goods, such a change precludes the application of the doctrine of collateral estoppel”) (citing Litton Industries, Inc. v.
Litronix, Inc., 577 F.2d 709, 711, 198 U.S.P.Q. 280, 282 (CCPA 1978)).
Tellingly, Petitioner has not cited a single TTAB case in its Opposition to Del Taco’s
Motion for Summary Judgment which outlines how claim preclusion would apply in a cancellation for abandonment and a subsequent cancellation based on different goods or services.
Petitioner merely relies on federal district court cases law, which are based on distinguishable facts and are not controlling law in the TTAB to assert the general proposition that collateral estoppel could apply in a TTAB proceeding. (See Ziebarth’s Brief at 8-9.) For example,
Petitioner cites In re Kent G. Anderson, a case in which an Examining Attorney at the Trademark
Office invoked the doctrine of collateral estoppel in ex parte proceedings based on a final judgment entered in an prior inter partes case. (See Ziebarth’s Brief at 8) (citing In re Kent G.
Anderson, 101 U.S.P.Q.2d 1912, 1917 (TTAB 2012)). The Board found that the mark, “is identical to the mark litigated in the prior inter partes action, as are various [sic] of the goods and services in Classes 12 and 35, the classes involved in the refusal here.” In re Kent G. Anderson,
101 U.S.P.Q.2d at 1917. This question of whether there was an identical issue raised in a prior proceeding was the threshold question out of the four factors necessary to find preclusive effect of collateral estoppel. Id. (citing Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d
1229, 1232 (Fed. Cir. 2005)).
Petitioner also cites B&B Hardware, Inc., a case which examined whether a Board’s decisions regarding the identical mark for the identical classes could be given preclusive effect in a subsequent court litigation. B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293,
1305 (2014). However, B&B Hardware, Inc. “agree[d] with Professor McCarthy that issue
5 preclusion applies where ‘the issues in the two cases are indeed identical and the other rules of collateral estoppel are carefully observed.’” Id. (citing J. McCarthy, Vol. 6, Trademarks and
Unfair Competition §32:99, at 32-244 (2014)). Although collateral estoppel could apply under the right set of facts, such as identical marks for identical goods, notably, none of the cases cited by Petitioner have applied collateral estoppel to a set of facts that is similar to the facts of these proceedings.
Additionally, collateral estoppel does not apply because material facts have changed since the Prior Cancellation, in that Del Taco began use of the NAUGLES trademark for clothing and successfully registered Del Taco’s NAUGLES Clothing Registration. Therefore, since the goods at issue are different than the services in the Prior Cancellation and because Del Taco uses and successfully registered Del Taco’s NAUGLES Clothing Registration, the Prior Cancellation does preclude any arguments or claims in the instant Cancellation and Opposition.
II. Reliance on Certain Averments in Ms. Pfeiffer’s Declaration is Improper Since the Declaration Contains Self-Serving Legal Allegations Rather Than Facts.
The declaration of Ms. Pfeiffer, counsel for Ziebarth, which is used to support Ziebarth’s
Brief, contains self-serving legal arguments rather than facts. Therefore, Ziebarth’s reliance on the statements in this declaration is improper and such statements cannot be used to create a dispute of material “fact” or support Ziebarth’s Brief.
First, “[i]n countering a motion for summary judgment, more is required than mere assertions of counsel. The non-movant may not rest on its conclusory pleadings but, under Rule
56, must set out, usually in an affidavit by one with knowledge of specific facts, what specific evidence could be offered at trial.” Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560,
1562-63 (Fed. Cir. 1987) (citing Barmag Barmer Maschinenfabrik AG v. Murata Machinery,
Ltd., 731 F.2d 831, 836, (Fed. Cir. 1984)). Second, declarations “in connection with a motion
6 for summary judgment, a conclusory statement on the ultimate issue does not create a genuine issue of material fact.” Tiger Elecs., Ltd. v. Davis, 2001 TTAB LEXIS 790 at *23 (TTAB 2001)
(citing Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1564 (Fed. Cir.
1987); and Johnston v. Ivac Corp., 885 F.2d 1574, 1578 (Fed. Cir. 1989)).
Here, Ms. Pfeiffer’s declaration is riddled with self-serving conclusory allegations that have no basis in fact. For example, Paragraph 5 of Ms. Pfeiffer’s declaration claims:
Although Del Taco had closed its last NAUGLES restaurant back in 1995, it continued to fraudulently file renewals for its registration with the USPTO in 1996 and 2006.
See Declaration of Kelly K. Pfeiffer attached to Ziebarth’s Opposition to and Cross Motion for
Summary Judgment at ¶ 5. However, nowhere in the Board’s Order from the Prior Cancellation did the Board find that Del Taco acted fraudulently while filing its trademark renewals for Del
Taco’s Prior Registration. See Doc. No. 98 in the Prior Cancellation, U.S. Cancellation No.
92053501. It is clear that Ms. Pfeiffer’s declaration is merely an attempt to insert her own personal opinions, testimony, and legal arguments into this proceeding, without any verifiable facts or evidence. Moreover, Paragraph 7 of Ms. Pfeiffer’s declaration claims:
“In April 2014, before the TTAB rendered its decision in the prior cancellation proceeding, Del Taco briefly ran an unauthorized and infringing promotion for sale of food items at three of its Southern California restaurants which included the word “Naugles.”
Id. at ¶ 7. Ms. Pfeiffer’s categorization of Del Taco’s advertising campaign as
“unauthorized and infringing” similarly has not been proven by a court and has no basis in fact. Similarly, Paragraph 12 of Ms. Pfeiffer’s declaration claims:
“Although it is obvious that Del Taco no longer offers restaurant services under the NAUGLES mark, a fact that has been conclusively determined by this Board, Del Taco still fraudulently sought additional registrations for a mark it long ago abandoned.”
7 Id. at ¶ 12. For clarity, the Trademark Board did not “conclusively determine” that Del Taco did not offer restaurant services. In the Prior Cancellation, the Board merely found that Del Taco’s use of NAUGLES was not enough to support continued registration of Del Taco’s Prior
Registration. See Doc. No. 98 at p. 27 in the Prior Cancellation, U.S. Cancellation No. 92053501.
Neither the Trademark Office nor the Board has found “fraud” with respect to either Del Taco’s filing of the trademark application that matured into Del Taco’s NAUGLES Clothing
Registration or Del Taco’s NAUGLES Restaurant Application. Therefore, these averments have no basis in fact and cannot be relied upon by Ziebarth.
Ziebarth and its counsel cannot simply invent “facts” to fabricate a genuine issue of material fact in opposition to Del Taco’s Motion for Summary Judgment or fabricate “facts” to rely on in its Cross Motion for Summary Judgment. Rather, as discussed at length below, there are no facts to support Petitioner’s allegations in the Petition to Cancel and Del Taco is entitled to summary judgment and Ziebarth’s attempt to create “facts” should be given no weight.
III. There Are No Facts Which Would Rebut the Presumption that Del Taco’s NAUGLES Clothing Registration is Valid; Therefore, Del Taco is Entitled to Summary Judgment on Count 1 of the Petition.
Petitioner’s allegation that Del Taco’s use of the NAUGLES trademark on clothing does not constitute trademark use is premised on a fundamentally flawed view of trademark law and completely disregards the presumption of validity and inherent distinctiveness that Del Taco’s
NAUGLES Clothing Registration is entitled to by statute. There are simply no facts to support
Petitioner’s allegation that Del Taco’s NAUGLES Clothing Registration is not used as a trademark; therefore, Del Taco is entitled to summary judgment on Count 1.
“A mark that is registered on the Principal Register is entitled to all Section 7(b) presumptions including the presumption that the mark is distinctive and moreover, in the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods.”
8 Tea Bd. of India v. Republic of Tea, Inc., 2006 TTAB LEXIS 330 at *62-63 (TTAB 2006)
(citations omitted). Moreover, a petitioner seeking to cancel a trademark registration “must overcome the registration’s presumption of validity by a preponderance of the evidence. Cold
War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1356 (Fed. Cir. 2009)
(citing W. Fla. Seafood v. Jet Rests., 31 F.3d 1122, 1125 (Fed. Cir. 1994)).
Here, there are no facts which evidence that Del Taco’s NAUGLES Clothing
Registration is invalid – let alone, which would establish that Del Taco’s registration is invalid by a preponderance of the evidence. Petitioner has not put forth a consumer survey,7 internet evidence, internet search results, dictionary definitions or trade usage, which would demonstrate that Del Taco’s NAUGLES Clothing Registration fails to function as a trademark. Instead, in the
Ziebarth Brief regarding Count 1 of the Petition,8 Petitioner simply argues that Del Taco’s
NAUGLES trademark is merely ornamental and fails to function as a trademark solely because
Del Taco’s does not currently operate any restaurants called “Naugles” Or use the NAUGLES trademark with other goods or services. (See Ziebarth Brief at 2, 4, 5, and 18.) This assertion is illogical and again based on a fundamental misunderstanding of trademark law.
As Petitioner concedes, Del Taco’s NAUGLES Clothing Registration is prima facie evidence of Del Taco’s exclusive right to use the NAUGLES trademark pursuant to 15 U.S.C. §
1115(a). (See Ziebarth’s Brief at 14.) In fact, “[a]ll registrations for marks in the Principal
Register, regardless of whether the mark has acquired or inherent distinctiveness, are accorded the same benefits and evidentiary presumptions under 15 U.S.C. § 1057(b).” In re Chippendales
7 “One of the most scientific methods of determining the mental associations of the relevant purchaser class is to conduct a survey of the purchasers themselves.” J. Thomas McCarthy, Vol. 2, McCarthy on Trademarks and Unfair Competition, § 15:42 (2018). 8 In the Ziebarth Brief regarding Count I, Petitioner asserts that it has standing to bring the Petition. (See Ziebarth Brief at p. 13.) As an initial matter, Del Taco does not dispute Petitioner’s standing to bring the Petition and did not raise any issue with respect to standing in its Motion for Summary Judgment. Therefore, Del Taco will not address standing in this Reply and instead will focus on Petitioner’s substantive arguments.
9 USA, Inc., 622 F.3d 1346, 1353 (Fed. Cir. 2010) (alteration added). Importantly, “when the
USPTO registers a mark without requiring evidence of secondary meaning (“acquired distinctiveness”), it is presumed to be inherently distinctive.” J. Thomas McCarthy, Vol.
2, McCarthy on Trademarks and Unfair Competition, § 11:43 (2017) (citations omitted).
Additionally, since Del Taco’s NAUGLES Clothing Registration is deemed inherently distinctive by virtue of its trademark registration, “greater protection is afforded to more distinctive marks.” Tea Bd. of India, 2006 TTAB LEXIS 330 at 63 (citing Worthington Foods
Inc. v. Kellogg Co., 732 F.Supp. 1417, 14 USPQ2d 1577, 1607 (S.D. Ohio 1990)). Clearly, there are no facts which would show that Del Taco’s use of the NAUGLES trademark in connection with clothing is merely ornamental or not inherently distinctive.
A review of Del Taco’s NAUGLES Clothing Registration’s file history shows that, during the prosecution of the application, the Trademark Office did not issue a descriptiveness refusal, a surname refusal or an ornamental refusal. (See Exhibit Z attached to Del Taco’s MSJ.)
Moreover, Petitioner offers nothing more than speculation that, had Del Taco not claimed ownership of the Del Taco’s Prior Registration, Del Taco’s NAUGLES Clothing Registration would have been refused registration.9 There is nothing in the record that supports this conclusion and Petitioner cannot invent “facts” merely to support its implausible conclusion. If the Trademark Office believed that Del Taco’s NAUGLES Clothing Registration was not registrable for any reason, it would have issued an Office Action stating such – which it did not.
9 To further highlight the implausibility of Petitioner’s speculative argument, Del Taco notes that, even if Del Taco had claimed ownership in Del Taco’s Prior Registration in an attempt to claim distinctiveness in its NAUGLES trademark for clothing, it is possible that the Trademark Office would have rejected such a claim on the grounds that Del Taco’s use of NAUGLES for restaurant services was not sufficiently related to its use for clothing to permit a 2(f) claim. See generally In re Time Warner Entm’t Co., L.P., 2000 TTAB LEXIS 229 at *26-27 (TTAB 2000) (“we specifically noted that any use of a surname in connection with restaurant services did not support registration of the same mark in connection with clothing items, because those goods were not sufficiently related. I believe that case is authority supporting the refusal herein.”) (citing In re McDonald's Corp., 230 USPQ 304 (TTAB 1986)).
10 Additionally, Petitioner attempts to rely on the In re Olin Corporation case to support its proposition that Del Taco must use its NAUGLES trademark in connection with other goods or services in order for it to be distinctive for clothing. See Ziebarth’s Brief at 14 (citing In re Olin
Corp., 181 U.S.P.Q. 182 (Trademark Trial & App. Bd. November 19, 1973)). However, contrary to Petitioner’s allegations, the “secondary source” that In re Olin Corp. and subsequent cases refer to is not “secondary meaning” in the trademark sense. “Secondary source” is a term used in the context of a refusal to register a trademark on the basis that the trademark is merely ornamental and permits ornamental trademarks to be registered when the trademark is used for ancillary goods related to a separate trademark use. In re Summit Entm’t, LLC, 2016 TTAB
LEXIS 143 at *14 (TTAB 2016); see also In re Lululemon Athletica Can. Inc., 2013 TTAB
LEXIS 2 at n4 (TTAB 2013) (“The terminology ‘secondary source’ should not be confused with the synonym for acquired distinctiveness, ‘secondary meaning.’”); see also J. Thomas McCarthy,
Vol. 1, McCarthy on Trademarks and Unfair Competition, §7:24 n16 (2018).
Therefore, “secondary source” is one method used to register a trademark that is merely ornamental. However, if a trademark is distinct, as Del Taco’s NAUGLES Clothing Registration is, “secondary source” or secondary meaning is not required to receive or maintain a registration.
See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992) (“Where secondary meaning does appear in the statute, 15 U.S.C. § 1052 (1982 ed.), it is a requirement that applies only to merely descriptive marks and not to inherently distinctive ones.”)
Thus, Del Taco is entitled to summary judgment on Count 1 since there are no facts which rebut Del Taco’s presumption of protectable rights in its trademark or support Petitioner’s allegation that Del Taco’s NAUGLES Clothing Registration fails to function as a trademark.
11 IV. There is No Genuine Dispute of Material Fact that Del Taco has Failed to Police its NAUGLES Trademark Such that it has Lost its Trademark Rights; Therefore, Del Taco is Entitled to Summary Judgment on Count 2 of the Petition.
There is no evidence that Del Taco has lost its trademark rights in Del Taco’s NAUGLES
Clothing Registration for failure to police its trademark. Del Taco’s NAUGLES Clothing
Registration has not lost significance as a trademark, which would be required in order to cancel its trademark registration under § 45 of the Lanham Act (15 U.S.C. § 1127). A petitioner is only permitted to cancel a trademark under this section of the Lanham Act if the “mark has lost all capacity to act as a source-indicator for applicant’s goods; absent such a finding, no abandonment exists.” Leatherwood Scopes Int’l, Inc. v. Leatherwood, 63 USPQ2d 1699, 1704
(TTAB 2002) (emphasis added). Moreover, “an owner is not required to act immediately against every possibly infringing use to avoid a holding of abandonment.” Wallpaper Mfrs., Ltd. v.
Crown Wallcovering Corp., 680 F.2d 755, 766 (C.C.P.A. 1982) (citing United States Jaycees v.
Philadelphia Jaycees, 639 F.2d 134, 209 USPQ 457 (CA 3 1981)).
Here, there are no material facts to prove that Del Taco’s NAUGLES Clothing
Registration has lost all of its trademark significance. There are also no facts which show that
Del Taco has lost any of its trademark significance in Del Taco’s NAUGLES Trademark
Registration. Petitioner though attempts to argue that Del Taco’s then and current Vice President of Marketing, Mr. Chillingworth’s testimony during the Prior Cancellation regarding a third party that sold products using “Naugles” is evidence that Del Taco’s NAUGLES Clothing
Registration should be deemed abandoned. (See Ziebarth Brief at 18.) However, such testimony does not create a dispute of fact that Del Taco’s NAUGLES Clothing Registration has lost any or all of its trademark significance since it merely shows that Mr. Chillingworth knew about one third party selling products. Additionally, there are no facts to establish that there are numerous products in the marketplace bearing the NAUGLES trademark such that purchasers would ignore
12 the trademark as a source identifier, as required by the case law in order to cancel Del Taco’s
NAUGLES Clothing Registration.10 See, e.g., Pilates, Inc. v. Current Concepts, Inc., 120 F.
Supp.2d 286, 304 (S.D.N.Y. 2000) (“The [survey] evidence described above shows that
PILATES is understood by the public to refer to either the Pilates method (as in “I do Pilates”) or to products or services used in connection with the Pilates method (as in “Pilates equipment” or
“Pilates instruction”) (alteration added)). In both uses of the word, the primary significance of
PILATES is as a method of exercise, not as a source of a product or service.”). Therefore, Del
Taco is entitled to summary judgment on Claim 2 of the Petition.
V. There is No Genuine Dispute of Material Fact that Del Taco Committed Fraud by Claiming Ownership of its Then-Registered Trademark for NAUGLES During Prosecution of Del Taco’s NAUGLES Clothing Registration.
Similar to the presumption of validity in Del Taco’s NAUGLES Clothing Registration, Del
Taco’s Prior Registration was also presumed valid until cancelled under Section 7(b). See In re
Cron, 2009 TTAB LEXIS 403 at *3 (TTAB 2009) (“so long as the cited registration has not been canceled, it is treated as valid and it is entitled to the statutory presumptions accorded a registration.”). Here, there are no facts that would support Petitioner’s allegation that Del Taco made any fraudulent statements to the Trademark Office during prosecution of the application that matured into Del Taco’s NAUGLES Clothing Registration regarding use of the Prior
Registration. Del Taco merely clarified, as requested by the Trademark Examiner, that it owned the Prior Registration for the record. (See Exhibit Z attached to Del Taco’s MSJ.) Indeed, in light
10 Del Taco notes that Exhibit AA and BB to Del Taco’s MSJ were documents produced by Petitioner in the Cancellation as evidenced by Bates Nos. beginning with “Naugles.” Del Taco believed such documents depicted Petitioner’s use of NAUGLES for clothing, particularly in light of the fact that Exhibit BB is a photograph of Petitioner’s principal Christian Ziebarth wearing a shirt with “Naugles” written across it. Nevertheless, such documents do not establish a dispute of material fact that Del Taco’s NAUGLES Clothing Registration has lost all trademark significance due to a failure to police its trademark. See, e.g., University Bookstore v. Board of Regents, 1994 TTAB LEXIS 8 at *39 (1994) (holding that “Wisconsin Badgers” was not abandoned despite over 200 years of uncontrolled use by the public, which was found to be a “royalty-free, nonexclusive, implied license to use the [mark]”).
13 of the fact that the Prior Registration was valid at the time Del Taco made this clarification and entitled to all statuary presumptions of validity and right to use the trademark, there are no facts to support that Del Taco’s committed fraud in any way in Count 3 of the Petition. Therefore, since Del Taco merely clarified for the trademark record that it owned the Prior Registration, which was valid at the time, there are no facts which would support the conclusion that Del Taco committed fraud on the Trademark Office; thus, Del Taco is entitled to summary judgment on
Count 3.
VI. Del Taco Does Not Misrepresent the Source of its Goods Offered in Connection with Del Taco’s NAUGLES Clothing Registration.
Petitioner’s baseless misrepresentation of source claim in Count 4 of the Petition hinges on the unsupported allegation that Del Taco’s use of Del Taco’s NAUGLES Clothing
Registration is ornamental. Based on this unsupported allegation, Petitioner claims that Del
Taco’s use of the NAUGLES trademark for clothing somehow misrepresents to the public that
Del Taco is the source of its goods.
This is plainly illogical. Del Taco is the senior user of Del Taco’s NAUGLES Clothing
Registration for clothing and there is no dispute that Del Taco began use of Del Taco’s
NAUGLES Clothing Registration for clothing in 2012. (See Exhibit A to Del Taco’s MSJ.) On the other hand, Petitioner admits that it did not begin use of the NAUGLES trademark on clothing until October 31, 2015. (See Petitioner’s Responses to Del Taco’s First Set of
Interrogatories Dated July 7, 2017 attached hereto as Exhibit GG at No. 5.) Therefore, since Del
Taco has prior rights through use of Del Taco’s NAUGLES Clothing Registration, there are no facts that would support Petitioner’s misrepresentation of source claim.
Notably, rather than provide any substantiated facts in support of its claim, Petitioner attempts to “support” its misrepresentation of source claim with its unfounded and self-serving
14 “suspicions” of Del Taco’s wrongdoing. For example, Petitioner argues that the time in which
Del Taco filed the trademark application that matured into Del Taco’s NAUGLES Clothing
Registrations was “suspect” since it was after Petitioner’s principal filed the Ziebarth Application and a cancellation against Del Taco’s Prior Registration. (See Ziebarth’s Brief at 23). Petitioner also claims that Del Taco saw a “business opportunity” to market clothing bearing the
NAUGLES trademark and speculates that this business opportunity was an attempt to “capitalize on Petitioner’s growing notoriety.” (Id. at 24.) However, Petitioner’s “suspicions” are nothing more than conclusory allegations and are wholly unsupported by any facts.11 These conclusory allegations do not create a material dispute of fact.
Petitioner clearly has no actual facts to support its allegation that Del Taco’s use of the
NAUGLES trademark for clothing “blatantly misuses” the NAUGLES trademark in a way that trades on Petitioner’s goodwill. Such a showing though is required to prove its claim. “In countering a motion for summary judgment, more is required than mere assertions of counsel.
The non-movant may not rest on its conclusory pleadings but, under Rule 56, must set out, usually in an affidavit by one with knowledge of specific facts, what specific evidence could be offered at trial.” Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1562-63 (Fed. Cir.
1987) (citing Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d
831, 836, (Fed. Cir. 1984)). As such, since there no facts to support Petitioner’s misrepresentation of source claim, the Board must dismiss Count 4 of the Petition on summary judgment.
11 Nor has Petitioner cited to a single shred of evidence. See, e.g., Ziebarth’s Brief at 13 (Claim I that use of “NAUGLES” for clothing is merely ornamental is a conclusory statement. “[A] conclusory statement on the ultimate issue does not create a genuine issue of material fact.” Tiger Elecs., Ltd. v. Davis, 2001 TTAB LEXIS 790 at *23 (TTAB 2001) (citing Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1564 (Fed. Cir. 1987); and Johnston v. Ivac Corp., 885 F.2d 1574, 1578 (Fed. Cir. 1989)).
15 Del Taco’s Opposition to Applicant’s Cross Motion for Summary Judgment on Claims I- III of Del Taco’s Notice of Opposition
As an initial matter, Del Taco notes that it has set forth at length its position as to Del
Taco’s entitlement to summary judgment on Claims 1 and 3 of the Opposition in Del Taco’s
Motion for Summary Judgment. See Del Taco’s MSJ at pp. 10-12 and 13-17. Therefore, Del
Taco will not recount its arguments at length here in opposition to Applicant’s Cross Motion for
Summary Judgment. Rather, Del Taco will address some narrow and misleading points raised by
Applicant in its Cross Motion for Summary Judgment.
I. There is No Dispute That Applicant’s Statement of Use Submitted in Connection with the Ziebarth Application Was Fraudulent.
In the Ziebarth Brief, Applicant argues that it did not commit fraud on the Trademark
Office when it submitted its statement of use for the Ziebarth Application. (See Ziebarth Brief at
25.) However, Applicant’s conduct was fraudulent because, at the time that it filed its statement of use, neither Applicant nor its predecessor had the requisite use in commerce needed to support its statement of use. Applicant’s statement of use submitted with the Ziebarth Application is allegedly based on a catered lunch that Applicant’s principal, Mr. Christian Ziebarth, held at his place of employment. However, this event does not constitute use in commerce sufficient to support the statement of use and there are no facts of record which support that it does.
Applicant boasts that “There is a wealth of facts to prove that the March 20, 2012 event actually took place . . . .” (See Ziebarth’s Brief at 27.) Del Taco does not dispute that something took place on March 20, 2012; however, there is no evidence to show that the March 20, 2012, event constituted actual use in commerce in the ordinary course of trade. Even Applicant, through discovery responses and Applicant’s principal’s declaration, admits that this event was in connection with Applicant’s “building a business of offering cafeteria and restaurant services” rather than use in commerce. (See Ziebarth Decl. at ¶ 17; see also Applicant’s Responses to Del
16 Taco’s First Set of Interrogatories Dated December 19, 2017 attached hereto as Exhibit FF at No.
2.) Furthermore, the evidence shows that this lunch was provided at his place of employment to only a small group of family, friends and coworkers. (See Exhibit FF at No. 11) (“To the best of
Mr. Ziebarth’s recollection, approximately 10-12 people were in attendance at the March 20,
2012 event.”). Preparing lunch for coworkers does not constitute providing restaurant services in commerce in the ordinary course of trade, as required for use in commerce necessary to support a trademark application. Additionally, the event referenced by Applicant took place within the state of California and did not cross state lines as Francisco’s Automotive Repair is located in
Huntington Beach, CA, (id. at No. 2), and there is no evidence that Applicant’s services were advertised to out of state residents. Nationstar Mortg. LLC v. Mujahid Ahmad, 112 U.S.P.Q.2D
1361, 1372 (TTAB 2014) (“Section 45 of the Trademark Act defines ‘use in commerce’ as ‘the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For the purposes of this Act, a mark shall be deemed to be in use in commerce. . . on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce . . . .’”) (quoting 15 U.S.C. § 1127).
Additionally, there is no evidence that would demonstrate or even suggest that Applicant, its related companies, its predecessor in interest, or its principals rendered restaurant or cafeteria services to out-of-state customers or its services were advertised to out of state customers as of
March 20, 2012, (see Ziebarth’s Brief at 26), in which all uses alleged occur within the state of
California. See also TMEP § 901.03 (“The scope of federal trademark jurisdiction is commerce that may be regulated by the U.S. Congress. . . . The types of commerce encompassed in this definition are interstate, territorial, and between the United States and a foreign country.”) (citing
15 U.S.C. §1127; Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986 (Fed. Cir.
17 2016)). Despite this, Applicant’s predecessor and principal declared to the Trademark Office that he had actually used the NAUGLES mark in interstate commerce as early as March 20, 2012, and had continually used the mark since that date. (See Exhibit I attached to Del Taco’s MSJ.)
Applicant and its principal have admitted on numerous occasions that on March 20, 2012, they did not have a legitimate restaurant or cafeteria business. (See Exhibit FF at No. 2; see also
Exhibit B attached to Del Taco’s MSJ.) Therefore, Applicant’s predecessor knew his statement that he had begun use of the trademark in commerce on March 20, 2012 was false, but still submitted a declaration to the Trademark Office claiming this date of first use in commerce. This knowingly false statement was material to moving the Ziebarth Application forward to publication. See Del Taco’s MSJ at pp. 18-22. Applicant’s conduct was therefore clearly fraudulent and there are no facts which would show that Applicant’s conduct was not fraudulent.
As such, Del Taco is entitled to summary judgment on Claim 1 of the Opposition.
II. Applicant’s Cross Motion for Summary Judgment on Claims 2 (Misrepresentation of Source) and Claim 3 (Likelihood of Confusion) Rely Solely on Applicant’s Unsupported Allegations that Del Taco Does Not Own Valid Trademark Rights in NAUGLES and Therefore Must be Denied.
Similar to the faulty logic employed in Section IV of the Ziebarth Brief, Applicant asserts that Del Taco is somehow precluded from demonstrating that it has trademark rights in the
NAUGLES trademark for restaurant services and therefore, Applicant’s use of the NAUGLES trademark cannot possibly misrepresent the source of its goods. (See Ziebarth’s Brief at 32-34.)
However, as discussed above, preclusion does not apply here since the decision in the Prior
Cancellation does not preclude Del Taco from demonstrating use of its NAUGLES trademark for clothing or preclude Del Taco from use of the NAUGLES design trademark in association with its new intent to use application. See Section I above.
18 Applicant seeks to register an identical mark for identical services to those contained in
Del Taco’s NAUGLES Application and goods that are related to Del Taco’s NAUGLES
Clothing Registration. In fact, Applicant’s reason for adopting the NAUGLES trademark in connection with restaurant and cafeteria services was to represent to the public that the services are those of the original Naugles Restaurants operated by Del Taco and its predecessor in interest. (See Exhibit A to Del Taco’s MSJ at 16 and 85-86.) There is no factual dispute that
Applicant’s business model is to “revive” Naugles Restaurants that were owned by Del Taco and trade on the goodwill associated with Del Taco and the Naugles Restaurants. Therefore, confusion and misrepresentation are not only probable, but desired by Applicant.
Lastly, in any likelihood of confusion analysis, the two key considerations are the similarities between the marks and the similarities between the goods or services, the first two du
Pont factors. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973); see also
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the [services] and differences in the marks.”).
There is also no factual dispute that the trademarks contained in the Ziebarth Application and Del Taco’s NAUGLES Application are identical in appearance, sound, connotation, and commercial impression. (See generally Exhibit A to Del Taco’s MSJ at 16 and 85-86; see also
Exhibit E to Del Taco’s MSJ.) Additionally, Del Taco’s NAUGLES Application is for
“restaurant services,” which are identical to and closely related to those contained in the
Ziebarth Application, namely “cafeteria and restaurant services.” Indeed, Applicant has not raised a dispute as to material fact and cannot provide evidence which disputes that confusion is likely between the Ziebarth Application and Del Taco’s NAUGLES Application. As such,
19 consumer confusion is highly likely. Thus, as a matter of law, Applicant’s cross motion for summary judgment on Claims 3 and 4 should be denied and summary judgment should be granted in favor of Del Taco.
Conclusion
It is clear that there are no facts that support Petitioner’s allegations that Del Taco does not have protectable and valid trademark rights in Del Taco’s NAUGLES Clothing Registration.
Similarly, there are no facts that support Petitioner’s claim that Del Taco committed fraud on the
Trademark Office or that it uses the trademark to misrepresent the source of its goods. Therefore, the Board should grant Del Taco’s Motion for Summary Judgment on Counts 1-4 contained in the Petition and deny Petitioner’s Cross Motion for Summary Judgment.
Furthermore, there is no genuine dispute of material fact to support any other conclusion but to refuse registration of the Ziebarth Application because Applicant committed fraud on the
Trademark Office during prosecution and, but for the fraud, Del Taco’s NAUGLES Application would have priority over the Ziebarth Application and be likely to be confused with Del Taco’s
NAUGLES Application. Therefore, Del Taco respectfully requests that the Board deny
Applicant’s Cross Motion for Summary Judgement on all Claims contained in the Opposition and grant summary judgment in Del Taco’s favor.
Date: July 16, 2018 Respectfully submitted,
DINSMORE & SHOHL LLP
By: April L. Besl, Esq. Govinda M. Davis, Esq. Ashley J. Earle, Esq. 255 East Fifth Street, Suite 1900
20 Cincinnati, OH 45202 Telephone: (513) 977-8527 Facsimile: (513) 977-8141 E-mail:[email protected] [email protected] [email protected] Attorneys for Respondent/Opposer Del Taco, LLC
21 CERTIFICATE OF SERVICE
The undersigned hereby certifies that a copy of the foregoing Reply in Support of Del
Taco’s Motion to for Summary Judgment and Opposition to Ziebarth’s Cross Motion for
Summary Judgment was served by e-mail addressed as follows on this 16th Day of July, 2018:
Ms. Kelly K. Pfeiffer, Esq. – [email protected]
By: ______
13107528v1
22 EXHIBIT FF
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of United States Application Serial No. 85040746 Mark: “NAUGLES”
______
DEL TACO, LLC, Opposer, ) ) Opposition No. 91235706 v. ) ) ZIEBARTH HOLDINGS, LLC, ) Applicant. ) )
______
APPLICANT’S RESPONSES TO DEL TACO’S FIRST SET OF INTERROGATORIES
Pursuant to the Rules of Practice of the Trademark Trial and Appeal Board and the
applicable Federal Rules of Civil Procedure, Applicant ZIEBARTH HOLDINGS, LCC
(“Applicant”) hereby responds to Opposer DEL TACO, LLC’s (“Del Taco”) first set of interrogatories as set forth below.
GENERAL OBJECTIONS TO THE INTERROGATORIES
The following General Objections to Del Taco’s Interrogatories are incorporated by
reference in response to each Interrogatory set forth below and are not waived with respect to
any response.
1. Applicant generally objects to Del Taco’s Interrogatories to the extent they seek
disclosure of any information protected, privileged or immune or otherwise exempt from
discovery pursuant to applicable state and federal statutes, the Federal Rules of Civil Procedure,
case law, regulations, administrative orders, or any other applicable rules, decisions or laws,
1 including but not limited to, information protected by the attorney-client privilege, the work product doctrine or other applicable privilege.
2. Applicant generally objects to Del Taco’s Interrogatories to the extent they seek the disclosure of information that is not relevant to Del Taco’s standing and/or any party’s claim or defense.
3. Applicant generally objects to Del Taco’s Interrogatories, including the instructions and definitions, to the extent they purport to impose upon Applicant obligations greater than those imposed by the applicable Federal Rules of Civil Procedure, 37 C.F.R. § 2.120, or other applicable rules or law.
4. Applicant generally objects to Del Taco’s Interrogatories to the extent they seek information that is not calculated to lead to the discovery of admissible evidence or to the extent that Del Taco’s Interrogatories seek the disclosure of information, documents or things beyond the scope of discovery as provided by the Federal Rules of Civil Procedure, 37 C.F.R. § 2.120, or other applicable rules of law.
5. Some of Del Taco’s Interrogatories contain discreet subparts. To the extent Applicant considers any Interrogatory having discrete subparts to constitute multiple interrogatories,
Applicant objects to each such Interrogatory as being contrary to 37 C.F.R. § 2.120(d) and the
Trademark Trial and Appeal Board Manual of Procedure.
6. Applicant generally objects to Del Taco’s Interrogatories to the extent that they seek information that is a matter of public record or otherwise available to Del Taco without imposing undue burden on Applicant.
2
7. Only the express and overt meaning of these responses is intended. No response should be construed to contain implied statements, representations, or admissions of any kind. The fact that Applicant has responded or objected to an Interrogatory, or has produced documents in response to an Interrogatory, should not be understood as an admission that Applicant accepts or admits the existence of any “fact” set forth in or assumed by that Interrogatory.
8. Words and terms used in the following responses shall be construed in accordance with their normal meanings and connotations, and shall in no way be interpreted as terms of art or as statutorily defined terms used in the trademark or unfair competition laws. Applicant specifically disavows any such meaning or connotation that might be accorded to such terms. Likewise,
Applicant objects to Del Taco’s definitions and instructions to the extent that they make individual Interrogatories vague ambiguous, or unintelligible by attributing a novel meaning to
an ordinary word or multiple meanings to a single word.
9. Applicant generally objects to Del Taco’s Interrogatories to the extent they seek information concerning “all” or “any” person or entity concerning a particular subject on the grounds that Applicant would be required to search for information from every person or entity.
Applicant objects to performing searches of such breadth on the grounds of undue burden and expense. In its search for relevant documents, Petitioner has made, or will make, a reasonable search as required by the Federal Rules of Civil Procedure.
10. Applicant generally objects to Del Taco’s Interrogatories to the extent they seek information, documents or things not in Applicant’s possession, custody or control. Applicant’s responses are based upon information and writings presently available to Applicant.
3
11. In response to Del Taco’s Interrogatories, Applicant may exercise its option to produce documents from which the answers to the Interrogatories may be derived or ascertained in accordance with Federal Rule of Civil Procedure 33(d).
12. As to all matters referenced in these responses to Del Taco’s Interrogatories,
investigation and discovery continues. Accordingly, Applicant reserves its right to modify these
responses and to present in any proceedings and at trial any further information and documents
obtained during discovery as well as during the testimony and trial periods and preparation for
the testimony and trial periods. Further, discovery, investigation, and legal research and analysis
may supply additional facts adding meaning to known facts, as well as establish entirely new
factual conclusions or legal conclusions, all of which may lead to substantial additions to,
changes in, and variations from the responses set forth herein. Applicant reserves the right to
produce any subsequently discovered evidence, facts and/or documents, and to supplement or
change its responses based on such information. The responses given herein are done so in a
good faith effort to supply as much information as is presently known which in no way should
lead to the prejudice of Applicant in connection with further discovery, research or analysis.
RESPONSES TO DEL TACO’S FIRST SET OF INTERROGATORIES
INTERROGATORY NO. 1:
Identify the channels of trade through which Applicant’s Services have been distributed.
RESPONSE TO INTERROGATORY NO. 1:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Del Taco’s general definitions and instructions define the phrase “Applicant’s Services” as “the goods listed in U.S. Application Serial No. 85040746;”
Applicant objects to this interrogatory on the grounds that no “goods” are listed in U.S.
4
Application Serial No. 85040746, only services. Applicant further objects to this interrogatory on the grounds that it fails to designate a time frame during which the information is sought and is therefore overbroad and unduly burdensome.
Without waiving the foregoing objections, Applicant responds as follows: Cafeteria and restaurant services are offered under the NAUGLES mark at the multiple NAUGLES restaurant locations as well as various other special events and pop-up events at other locations.
INTERROGATORY NO. 2:
Identify each physical location where Applicant’s Services were actually offered and the
exact dates such services were offered in 2012.
RESPONSE TO INTERROGATORY NO. 2:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Del Taco’s general definitions and instructions define
the phrase “Applicant’s Services” as “the goods listed in U.S. Application Serial No. 85040746;”
Applicant objects to this interrogatory on the grounds that no “goods” are listed in U.S.
Application Serial No. 85040746, only services.
Without waiving the foregoing objections, Applicant responds as follows: Christian
Ziebarth offered cafeteria and restaurant services under the NAUGLES mark at All Pixels
Marketing/Page One Priority (a name change occurred at some point) located on the second floor
of Francisco's Auto Repair in Huntington Beach, CA on March 20, 2012. Mr. Ziebarth offered
food under the NAUGLES mark on other occasions during 2012 as well but cannot recall the
exact dates. All instances described herein were performed with the understanding that Mr.
Ziebarth was actively and diligently building his business of offering cafeteria and restaurant
services under the NAUGLES mark.
5
INTERROGATORY NO. 3:
Identify each physical location where Applicant’s Services were actually offered and the
exact dates such services were offered in 2013.
RESPONSE TO INTERROGATORY NO. 3:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Del Taco’s general definitions and instructions define
the phrase “Applicant’s Services” as “the goods listed in U.S. Application Serial No. 85040746;”
Applicant objects to this interrogatory on the grounds that no “goods” are listed in U.S.
Application Serial No. 85040746, only services.
Without waiving the foregoing objections, Applicant responds as follows: Mr. Ziebarth
offered food under the NAUGLES mark on multiple occasions during 2013 but cannot recall the
exact dates. All instances in 2013 were performed with the understanding that Mr. Ziebarth was
actively and diligently building his business of offering cafeteria and restaurant services under
the NAUGLES mark.
INTERROGATORY NO. 4:
Identify each physical location where Applicant’s Services were actually offered and the
exact dates such services were offered in 2014.
RESPONSE TO INTERROGATORY NO. 4:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Del Taco’s general definitions and instructions define
the phrase “Applicant’s Services” as “the goods listed in U.S. Application Serial No. 85040746;”
Applicant objects to this interrogatory on the grounds that no “goods” are listed in U.S.
Application Serial No. 85040746, only services.
6
Without waiving the foregoing objections, Applicant responds as follows: Applicant’s
services were offered under the NAUGLES mark at Coach's Bar & Grill in Lancaster, CA in July
of 2014. Applicant’s services were offered under the NAUGLES mark at Pig & Parsley in
Fountain Valley, CA in October and December of 2014. Mr. Ziebarth offered food under the
NAUGLES mark on other occasions during 2014 as well but cannot recall the exact dates. All
instances described herein were performed with the understanding that Mr. Ziebarth was actively
and diligently building his business of offering cafeteria and restaurant services under the
NAUGLES mark.
INTERROGATORY NO. 5:
Identify each physical location where Applicant’s Services were actually offered and the
exact dates such services were offered in 2015.
RESPONSE TO INTERROGATORY NO. 5:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Del Taco’s general definitions and instructions define
the phrase “Applicant’s Services” as “the goods listed in U.S. Application Serial No. 85040746;”
Applicant objects to this interrogatory on the grounds that no “goods” are listed in U.S.
Application Serial No. 85040746, only services.
Without waiving the foregoing objections, Applicant responds as follows: Applicant’s
services were offered under the NAUGLES mark at LA Weekly's Tacolandia event in
Downtown Los Angeles, CA in June 2015. Applicant’s services were offered under the
NAUGLES mark at the Fountain Valley NAUGLES restaurant location beginning in July 2015.
Food from the Fountain Valley NAUGLES restaurant location was offered under the NAUGLES
mark at a wedding in Huntington Beach, CA, on August 29, 2015. In addition to the foregoing,
7 but on which exact dates cannot be recalled, Applicant’s services were offered under the
NAUGLES mark at various other locations and events. All instances described herein were performed with the understanding that the business of offering cafeteria and restaurant services under the NAUGLES mark was actively and diligently being built.
INTERROGATORY NO. 6:
Identify the date when and physical address where Applicant first opened a restaurant under the name NAUGLES.
RESPONSE TO INTERROGATORY NO. 6:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein.
Without waiving the foregoing objections, Applicant responds as follows: The first
NAUGLES brick and mortar restaurant was opened on July 25, 2015 at 18471 Mt. Langley,
Fountain Valley, CA 92708. At least as early as March 20, 2012, Applicant has been offering cafeteria and restaurant services under the NAUGLES mark.
INTERROGATORY NO. 7:
Identify the date when and physical address where Applicant first opened a cafeteria
under the name NAUGLES.
RESPONSE TO INTERROGATORY NO. 7:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein.
Without waiving the foregoing objections, Applicant responds as follows: The first
NAUGLES brick and mortar cafeteria was opened on July 25, 2015 at 18471 Mt. Langley,
8
Fountain Valley, CA 92708. At least as early as March 20, 2012, Applicant has been offering cafeteria and restaurant services under the NAUGLES mark.
INTERROGATORY NO. 8:
Identify the members of Applicant, Ziebarth Holdings, LLC.
RESPONSE TO INTERROGATORY NO. 8:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein.
Without waiving the foregoing objections, Applicant responds as follows: Christian M.
Ziebarth; Jannette E. Ziebarth. Both individuals can be contacted through counsel of record for
Applicant.
INTERROGATORY NO. 9:
Identify the role of each of the members identified in response to Interrogatory No. 8 in
Ziebarth Holdings, LLC’s business operations.
RESPONSE TO INTERROGATORY NO. 9:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Applicant further objects to this interrogatory to the
extent that it seeks the disclosure of information protected by the attorney-client privilege and/or
the attorney work product doctrine.
Without waiving the foregoing objections, Applicant responds as follows: Both Christian
Ziebarth and Jannette Ziebarth are members of Ziebarth Holdings, LLC.
INTERROGATORY NO. 10:
On what date did the first “Naugles Preview Night” occur?
9
RESPONSE TO INTERROGATORY NO. 10:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein.
Without waiving the foregoing objections, Applicant responds as follows: Applicant cannot recall the exact date on which Christian Ziebarth first served food under the mark
NAUGLES. To the best of Mr. Ziebarth’s recollection, the first time was in 2010. There were numerous occasions ranging from in or around February 2010 through approximately mid-2015
on which Mr. Ziebarth and/or Applicant offered cafeteria and restaurant services under the
NAUGLES mark to various individuals and groups, all with the understanding that it was part of the developing business to offer cafeteria and restaurant services under the NAUGLES mark.
Although not all events and occasions were entitled “Naugles Preview Night,” each instance was indeed an occasion wherein restaurant and cafeteria services were offered under the NAUGLES
mark.
INTERROGATORY NO. 11:
Describe the first “Naugles Preview Night,” including but not limited to, the location of the event, the types of attendees of the event and the number of attendees at the event.
RESPONSE TO INTERROGATORY NO. 11:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein.
Without waiving the foregoing objections, Applicant responds as follows: Applicant cannot recall the exact date on which Christian Ziebarth first held an event wherein he served food under the mark NAUGLES. To the best of Mr. Ziebarth’s recollection, the first time he served food under the mark NAUGLES was in 2010. Mr. Ziebarth held an event on March 20,
10
2012 wherein he served food under the mark NAUGLES. While this was not the first time that
Mr. Ziebarth had served food under the mark NAUGLES, this was one of the first events at which Mr. Ziebarth diligently took pictures and documented his activities. Mr. Ziebarth has sometimes referred to these early events wherein he served food under the mark NAUGLES as
“Naugles Preview Nights.” The March 20, 2012 event was held at All Pixels Marketing/Page
One Priority (a name change occurred at some point) located on the second floor of Francisco's
Auto Repair in Huntington Beach, CA. Naugles fans, friends, friends of friends, co-workers and friends of co-workers were in attendance. To the best of Mr. Ziebarth’s recollection, approximately 10-12 people were in attendance at the March 20, 2012 event. Mr. Ziebarth made numerous food items using authentic NAUGLES recipes obtained from a member of the Naugle family. Mr. Ziebarth had advertised his event in advance to all who attended as featuring
NAUGLES food. Mr. Ziebarth prepared a menu in advance of the event bearing the NAUGLES mark, and copies of the menu were on display and circulated to attendees at the event.
NAUGLES food was served to all attendees at this March 20, 2012 event.
INTERROGATORY NO. 12:
Identify when the “Naugles Preview Night” occurred at Coaches’ Restaurant. If more
than one “Naugles Preview Night” occurred at Coaches’ Restaurant, specify the date of each
event.
RESPONSE TO INTERROGATORY NO. 12:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein.
Without waiving the foregoing objections, Applicant responds as follows: July 12, 2014.
11
INTERROGATORY NO. 13:
Describe the relationship between Applicant, Ziebarth Holdings, LLC and Christian
Ziebarth.
RESPONSE TO INTERROGATORY NO. 13:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein.
Without waiving the foregoing objections, Applicant responds as follows: Christian
Ziebarth is one of two Members of Ziebarth Holdings, LLC.
INTERROGATORY NO. 14:
Describe the relationship between Applicant, Ziebarth Holdings, LLC and Naugles, Corp.
RESPONSE TO INTERROGATORY NO. 14:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein.
Without waiving the foregoing objections, Applicant responds as follows: Naugles Corp.
is the licensee of the NAUGLES mark owned by Ziebarth Holdings, LLC.
INTERROGATORY NO. 15:
Describe the “Naugles Test Kitchen,” including but not limited to the location of the test
kitchen, whether food is sold or given away at the test kitchen, the types of customers that the
test kitchen receives and the number of customers that the test kitchen serves on an average day.
RESPONSE TO INTERROGATORY NO. 15:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Applicant further objects to this interrogatory on the grounds that it seeks information that is proprietary and confidential. Applicant further objects to
12 this interrogatory on the grounds that it seeks information that is not calculated to lead to the discovery of admissible evidence. Applicant further objects to this interrogatory on the grounds that it constitutes multiple, separate interrogatories, not one.
Without waiving the foregoing objections, Applicant responds as follows: The brick and
mortar restaurant location that has been informally dubbed the “Naugles Test Kitchen” is located
at 18471 Mt. Langley, Fountain Valley, CA 92708. The official name of this Fountain Valley restaurant is “Naugles Tacos & Burgers.” This “Test Kitchen” is a fully-functioning restaurant open to the public and functions in the same way as the other NAUGLES restaurants. This
Fountain Valley location was nicknamed the “Test Kitchen” because it was the first NAUGLES location opened. Since the date this Fountain Valley location was opened, food has always been sold, not given away, as with any fast-food, cafeteria-style restaurant. Customers range from
locals to those who have travelled from out of state to eat there. Customers consist of every age,
gender and race. The Fountain Valley location is open seven days a week as follows: Sunday
through Thursday: 10am to 7pm; Friday & Saturday: 10am to 8pm.
INTERROGATORY NO. 16:
Identify on what date Applicant or Applicant’s predecessor opened the first permanent physical restaurant location bearing the NAUGLES mark that was not a “Test Kitchen.”
RESPONSE TO INTERROGATORY NO. 16:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein.
Without waiving the foregoing objections, Applicant responds as follows: The restaurant location that has informally been dubbed the “Naugles Test Kitchen” in Fountain Valley,
California is a “permanent, physical restaurant location bearing the NAUGLES mark.” The
13 official name of this Fountain Valley restaurant is “Naugles Tacos & Burgers.” This “Test
Kitchen” is a fully-functioning restaurant open to the public and functions in the same way as the other NAUGLES restaurants. This Fountain Valley location was nicknamed the “Test Kitchen” because it was the first NAUGLES location opened. The Fountain Valley located officially opened on July 25, 2015.
INTERROGATORY NO. 17:
Describe in detail any awareness or knowledge You had of Opposer’s use of NAUGLES:
(a) at the time You commenced use of the Applicant’s Mark in the United States; and (b) at the
time of the filing of Your application to register Applicant’s Mark with the U.S. Patent &
Trademark Office.
RESPONSE TO INTERROGATORY NO. 17:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Applicant further objects to this interrogatory to the extent that it seeks disclosure of information protected by the attorney-client privilege and/or the attorney work product doctrine. Applicant further objects to this interrogatory on the grounds that it constitutes two separate interrogatories, not one. TBMP § 405.03(d) (“If an interrogatory includes questions set forth as numbered or lettered subparts, each separately designated subpart will be counted by the Board as a separate interrogatory. The propounding party will, to that extent, be bound by its own numbering system, and will not be heard to complain that an interrogatory, although propounded with separately designated subparts, should nevertheless be counted as a single interrogatory because the interrogatory concerns a single transaction, set of facts, etc., or because the division was made for clarification or convenience); Jan Bell
Marketing, Inc. v. Centennial Jewelers, Inc., 19 U.S.P.Q.2d 1636, 1637 (T.T.A.B. 1990);
14
Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 U.S.P.Q.2d 2055, 2056 (T.T.A.B.
1990). Petitioner further objects to this interrogatory as being argumentative and assuming facts not in evidence because this interrogatory, as phrased, assumes the fact that Del Taco did, in fact, use “NAUGLES” both at the time Applicant commenced use its mark in the United States and at the time Applicant filed its application to register its NAUGLES mark with the USPTO, neither of which is true.
Without waiving the foregoing objections, Applicant responds as follows: At the time
Applicant commenced use of the NAUGLES mark in the United States, Applicant was not aware of and did not believe that Del Taco was, in fact, using the NAUGLES mark, despite having searched diligently for evidence of such. At the time Applicant commenced use of the
NAUGLES mark in the United States, Applicant believed that Del Taco was not, in fact, making use of NAUGLES as a trademark for restaurant services or otherwise. At the time of the filing of
Applicant’s application to its NAUGLES trademark with the U.S. Patent & Trademark Office,
Applicant was not aware of and did not believe that Del Taco was, in fact, using the NAUGLES mark, despite having searched diligently for evidence of such. At the time of the filing of
Applicant’s application to its NAUGLES trademark with the U.S. Patent & Trademark Office,
Applicant believed that Del Taco was not, in fact, making use of NAUGLES as a trademark for restaurant services or otherwise.
INTERROGATORY NO. 18:
Describe in detail the steps taken by Applicant, leading up to the time of filing, which
would demonstrate Applicant’s bona fide intent to use Applicant’s Mark in commerce.
15
RESPONSE TO INTERROGATORY NO. 18:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Applicant further objects to this interrogatory to the
extent that it seeks disclosure of information protected by the attorney-client privilege and/or the
attorney work product doctrine.
Without waiving the foregoing objections, Applicant responds as follows: Applicant took
concrete steps towards using the mark, thereby demonstrating a bona fide intent to use sufficient
to support its application. Mr. Ziebarth discussed his ideas with Rob Hallstrom, owner of a
public relations marketing agency which specializes in the restaurant industry and co-owner of three restaurants in Orange County, California. During TTAB Cancellation Proceeding No.
92053501, Mr. Hallstrom corroborated Mr. Ziebarth’s testimony to this effect by explaining that in January 2010, Mr. Ziebarth approached him about helping him “make this idea of opening restaurants under the NAUGLES name a reality.” During TTAB Cancellation Proceeding No.
92053501, Mr. Hallstrom further testified that he and Mr. Ziebarth met in person to talk about
Mr. Ziebarth’s idea, that they had several follow-up discussions about potential properties for restaurant locations and that he and Mr. Ziebarth actually looked at a few properties, including one that was formerly a Naugles restaurant. Mr. Ziebarth recruited Daniel Dvorak, the Lead
Industrial Designer/Product Designer for Alco Designs and owner of his own design consulting business Protodraft Designs, who offered to handle marketing for Mr. Ziebarth’s venture. During
TTAB Cancellation Proceeding No. 92053501, Mr. Dvorak testified that between February and
September 2010 he met regularly with Mr. Ziebarth, and corroborated Mr. Ziebarth’s testimony that Mr. Ziebarth was actively seeking financing for his planned business as well as scouting potential locations. Prior to submitting Application Serial No. 85040746, Applicant and/or Mr.
16
Ziebarth had a presence on the Internet and in social media to identify planned, upcoming restaurant services under the NAUGLES name based on activities which took place prior to
filing the intent to use application. For example, on January 13, 2010, Mr. Ziebarth purchased the
domain name www.nauglestacos.com and currently operates a website entitled “Naugles Tacos and Burgers” under that domain name. Prior to filing the intent to use application, Applicant and/or Mr. Ziebarth also opened a Twitter account “@Naugles” and actively “tweeted” under the handle “Señor Naugles.”
INTERROGATORY NO. 19:
Describe in detail the reason(s) that Applicant and/or Applicant’s predecessor amended
Applicant’s Mark to the supplemental trademark register on September 29, 2015.
RESPONSE TO INTERROGATORY NO. 19:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Applicant further objects to this interrogatory to the
extent that it seeks disclosure of information protected by the attorney-client privilege and/or the
attorney work product doctrine.
INTERROGATORY NO. 20:
Describe in detail the reason(s) that Applicant and/or Applicant’s predecessor withdrew the amendment to the supplemental trademark register for Applicant’s Mark on October 21,
2015.
RESPONSE TO INTERROGATORY NO. 20:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Applicant further objects to this interrogatory to the
17 extent that it seeks disclosure of information protected by the attorney-client privilege and/or the attorney work product doctrine.
Without waiving the foregoing objections, Applicant responds as follows: Applicant wanted his/its registration on the Principal Register.
INTERROGATORY NO. 21:
Identify whether the five (5) years of use claimed by Applicant in its Amendment to
Allege Use dated September 29, 2015, included use of NAUGLES in connection with “Naugles
Preview Nights.”
RESPONSE TO INTERROGATORY NO. 21:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein.
Without waiving the foregoing objections, Applicant responds as follows: Mr. Ziebarth
has referred to some, but not all, of these early events dating back to 2010 wherein he offered
cafeteria and restaurant services under the mark NAUGLES as “Naugles Preview Nights.” The
five years of use claimed by Applicant in its Amendment to Allege Use dated September 29,
2015 includes services offered at these events.
INTERROGATORY NO. 22:
Identify whether the five (5) years of use claimed by Applicant in its Amendment to
Allege Use dated September 29, 2015, included use of NAUGLES in connection with “Naugles
Test Kitchens.”
RESPONSE TO INTERROGATORY NO. 22:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein.
18
Without waiving the foregoing objections, Applicant responds as follows: The brick and
mortar NAUGLES restaurant location in Fountain Valley, CA has been informally dubbed the
“Naugles Test Kitchen” because it was the first NAUGLES location opened. The official name
of this Fountain Valley restaurant is “Naugles Tacos & Burgers.” The five years of use claimed
by Applicant in its Amendment to Allege Use dated September 29, 2015 includes services
offered under the NAUGLES mark at this location.
INTERROGATORY NO. 23:
Describe in detail any awareness or knowledge You had of Opposer: (a) at the time You commenced use of the Applicant’s Mark in the United States; and (b) at the time of the filing of
Your application to register Applicant’s Mark with the U.S. Patent & Trademark Office.
RESPONSE TO INTERROGATORY NO. 23:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Applicant further objects to this interrogatory on the grounds that it constitutes two separate interrogatories, not one. TBMP § 405.03(d) (“If an interrogatory includes questions set forth as numbered or lettered subparts, each separately designated subpart will be counted by the Board as a separate interrogatory. The propounding party will, to that extent, be bound by its own numbering system, and will not be heard to complain that an interrogatory, although propounded with separately designated subparts, should nevertheless be counted as a single interrogatory because the interrogatory concerns a single transaction, set of facts, etc., or because the division was made for clarification or convenience);
Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 U.S.P.Q.2d 1636, 1637 (T.T.A.B.
1990); Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 U.S.P.Q.2d 2055, 2056
(T.T.A.B. 1990).
19
Without waiving the foregoing objections, Applicant responds as follows: At the time
Applicant commenced use of the NAUGLES mark in the United States, Applicant was aware that a chain of fast-food restaurants named Del Taco existed. At the time Applicant filed its application to register its Mark with the U.S. Patent & Trademark Office, Applicant was aware that a chain of restaurants named Del Taco existed.
INTERROGATORY NO. 24:
Describe in detail any awareness or knowledge Christian Ziebarth had of Opposer’s
NAUGLES Mark: (a) at the time You or Mr. Ziebarth commenced use of the Applicant’s Mark in the United States; and (b) at the time of the filing of Your application to register Applicant’s
Mark with the U.S. Patent & Trademark Office.
RESPONSE TO INTERROGATORY NO. 24:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Applicant further objects to this interrogatory to the
extent that it seeks disclosure of information protected by the attorney-client privilege and/or the attorney work product doctrine. Applicant further objects to this interrogatory on the grounds
that it constitutes two separate interrogatories, not one. TBMP § 405.03(d) (“If an interrogatory
includes questions set forth as numbered or lettered subparts, each separately designated subpart
will be counted by the Board as a separate interrogatory. The propounding party will, to that
extent, be bound by its own numbering system, and will not be heard to complain that an
interrogatory, although propounded with separately designated subparts, should nevertheless be
counted as a single interrogatory because the interrogatory concerns a single transaction, set of
facts, etc., or because the division was made for clarification or convenience); Jan Bell
Marketing, Inc. v. Centennial Jewelers, Inc., 19 U.S.P.Q.2d 1636, 1637 (T.T.A.B. 1990);
20
Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 U.S.P.Q.2d 2055, 2056 (T.T.A.B.
1990). Petitioner further objects to this interrogatory as being argumentative and assuming facts not in evidence because this interrogatory, as phrased, assumes the fact that Del Taco did, in fact, own or have a “NAUGLES mark” both the time Applicant or Mr. Ziebarth commenced use of the NAUGLES mark in the United States and at the time of the filing of Applicant’s application
to register its NAUGLES trademark with the U.S. Patent & Trademark Office, neither of which
are true.
Without waiving the foregoing objections, Applicant responds as follows: At the time
Applicant or Mr. Ziebarth commenced use of the NAUGLES mark in the United States,
Applicant was not aware of and did not believe that Del Taco was, in fact, using the NAUGLES
mark, despite having searched diligently for evidence of such. At the time Applicant commenced
use of the NAUGLES mark in the United States, Applicant believed that Del Taco was not, in
fact, making use of NAUGLES as a trademark for restaurant services or otherwise. At the time
of the filing of Applicant’s application to register its NAUGLES trademark with the U.S. Patent
& Trademark Office, Applicant was not aware of and did not believe that Del Taco was, in fact,
using the NAUGLES mark, despite having searched diligently for evidence of such. At the time
of the filing of Applicant’s application to register its NAUGLES trademark with the U.S. Patent
& Trademark Office, Applicant believed that Del Taco was not, in fact, making use of
NAUGLES as a trademark for restaurant services or otherwise.
INTERROGATORY NO. 25:
Describe in detail any awareness or knowledge Christian Ziebarth had of Opposer Mark:
(a) at the time You or Mr. Ziebarth commenced use of the Applicant’s Mark in the United States;
21 and (b) at the time of the filing of Your application to register Applicant’s Mark with the U.S.
Patent & Trademark Office.
RESPONSE TO INTERROGATORY NO. 25:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Applicant further objects to this interrogatory as being
vague, ambiguous and/or nonsensical as to the phrase “Opposer Mark.” Applicant further objects
to this interrogatory to the extent that it seeks disclosure of information protected by the
attorney-client privilege and/or the attorney work product doctrine. Applicant further objects to this interrogatory on the grounds that it constitutes two separate interrogatories, not one. TBMP §
405.03(d) (“If an interrogatory includes questions set forth as numbered or lettered subparts, each separately designated subpart will be counted by the Board as a separate interrogatory. The propounding party will, to that extent, be bound by its own numbering system, and will not be heard to complain that an interrogatory, although propounded with separately designated subparts, should nevertheless be counted as a single interrogatory because the interrogatory concerns a single transaction, set of facts, etc., or because the division was made for clarification or convenience); Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 U.S.P.Q.2d 1636,
1637 (T.T.A.B. 1990); Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 U.S.P.Q.2d
2055, 2056 (T.T.A.B. 1990).
Without waiving the foregoing objections, Applicant answers this interrogatory with the
assumption that the phrase “Opposer Mark” was meant to read “Opposer’s Mark” and responds
as follows: At the time Applicant or Mr. Ziebarth commenced use of the NAUGLES mark in the
United States, Applicant was not aware of and did not believe that Del Taco was, in fact, using
the NAUGLES mark, despite having searched diligently for evidence of such. At the time
22
Applicant commenced use of the NAUGLES mark in the United States, Applicant believed that
Del Taco was not, in fact, making use of NAUGLES as a trademark for restaurant services or otherwise. At the time of the filing of Applicant’s application to register its NAUGLES trademark with the U.S. Patent & Trademark Office, Applicant was not aware of and did not believe that Del Taco was, in fact, using the NAUGLES mark, despite having searched diligently for evidence of such. At the time of the filing of Applicant’s application to register its
NAUGLES trademark with the U.S. Patent & Trademark Office, Applicant believed that Del
Taco was not, in fact, making use of NAUGLES as a trademark for restaurant services or
otherwise.
INTERROGATORY NO. 26:
Identify whether Applicant had personal knowledge of the facts concerning its use of the
NAUGLES mark in connection with Applicant’s Services.
RESPONSE TO INTERROGATORY NO. 26:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein.
Without waiving the foregoing objections, Applicant responds as follows: Mr. Ziebarth,
Member of Ziebarth Holdings, LLC, had personal knowledge of the facts concerning the use of the NAUGLES mark in connection with cafeteria and restaurant services.
INTERROGATORY NO. 27:
Identify whether Mr. Ziebarth had personal knowledge of the facts concerning
Applicant’s use of the NAUGLES mark in connection with Applicant’s Services.
23
RESPONSE TO INTERROGATORY NO. 27:
Applicant incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein.
Without waiving the foregoing objections, Applicant responds as follows: Mr. Ziebarth,
Member of Ziebarth Holdings, LLC, had personal knowledge of the facts concerning the use of
the NAUGLES mark in connection with cafeteria and restaurant services.
Dated: December 19, 2017
By:______Kelly K. Pfeiffer Amezcua-Moll & Associates, P.C. 1122 E. Lincoln Ave., Suite 203 Orange, CA 92865
Attorneys for Applicant ZIEBARTH HOLDINGS, LLC
24
CERTIFICATE OF SERVICE
I certify that a copy of the foregoing APPLICANT’S RESPONSES TO DEL TACO’S FIRST SET OF INTERROGATORIES was served upon DINSMORE & SHOHL LLP, counsel for Del Taco, by emailing one copy on December 19, 2017 to the following individuals listed as counsel of record for Registrant Del Taco, LLC in this proceeding:
April Besl [email protected] Govinda Davis [email protected] Leanthony Edwards [email protected]
DINSMORE & SHOHL LLP 255 E 5th Street, Ste. 1900 Cincinnati, Ohio 45202-1971
By:______Kelly K. Pfeiffer AMEZCUA-MOLL & ASSOCIATES 1122 E. Lincoln Ave., Suite 203 Orange, CA 92865 Attorneys for Applicant ZIEBARTH HOLDINGS, LLC
25
EXHIBIT GG
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of United States Registration No. 4261951 Mark: “NAUGLES”
______NAUGLES CORP., ) Petitioner, ) ) Cancellation No. 92064091 v. ) ) DEL TACO, LLC, ) Registrant. ) )
______
PETITIONER’S RESPONSES TO DEL TACO’S FIRST SET OF INTERROGATORIES
Pursuant to the Rules of Practice of the Trademark Trial and Appeal Board (“TTAB”) and the applicable Federal Rules of Civil Procedure (“FRCP”), Petitioner NAUGLES CORP.
(“Petitioner”) hereby responds to Registrant DEL TACO, LLC’s (“Del Taco”) first set of interrogatories as set forth below.
GENERAL OBJECTIONS TO THE INTERROGATORIES
The following General Objections to Del Taco’s Interrogatories are incorporated by
reference in response to each Interrogatory set forth below and are not waived with respect to
any response.
1. Petitioner generally objects to Del Taco’s Interrogatories to the extent they seek
disclosure of any information protected, privileged or immune or otherwise exempt from
discovery pursuant to applicable state and federal statutes, the Federal Rules of Civil Procedure,
case law, regulations, administrative orders, or any other applicable rules, decisions or laws,
1 including but not limited to, information protected by the attorney-client privilege, the work product doctrine or other applicable privilege.
2. Petitioner generally objects to Del Taco’s Interrogatories to the extent they seek the disclosure of information that is not relevant to Petitioner’s standing and/or any party’s claim or defense.
3. Petitioner generally objects to Del Taco’s Interrogatories, including the instructions and definitions, to the extent they purport to impose upon Petitioner obligations greater than those imposed by the applicable Federal Rules of Civil Procedure, 37 C.F.R. § 2.120, or other applicable rules or law.
4. Petitioner generally objects to Del Taco’s Interrogatories to the extent they seek information that is not calculated to lead to the discovery of admissible evidence or to the extent that Del Taco’s Interrogatories seek the disclosure of information, documents or things beyond the scope of discovery as provided by the Federal Rules of Civil Procedure, 37 C.F.R. § 2.120, or other applicable rules of law.
5. Some of Del Taco’s Interrogatories contain discreet subparts. To the extent Petitioner considers any Interrogatory having discrete subparts to constitute multiple interrogatories,
Petitioner objects to each such Interrogatory as being contrary to 37 C.F.R. § 2.120(d) and the
Trademark Trial and Appeal Board Manual of Procedure.
6. Petitioner generally objects to Del Taco’s Interrogatories to the extent that they seek information that is a matter of public record or otherwise available to Del Taco without imposing undue burden on Petitioner.
7. Only the express and overt meaning of these responses is intended. No response should be construed to contain implied statements, representations, or admissions of any kind. The fact
2 that Petitioner has responded or objected to an Interrogatory, or has produced documents in response to an Interrogatory, should not be understood as an admission that Petitioner accepts or admits the existence of any “fact” set forth in or assumed by that Interrogatory.
8. Words and terms used in the following responses shall be construed in accordance with their normal meanings and connotations, and shall in no way be interpreted as terms of art or as statutorily defined terms used in the trademark or unfair competition laws. Petitioner specifically disavows any such meaning or connotation that might be accorded to such terms. Likewise,
Petitioner objects to Del Taco’s definitions and instructions to the extent that they make individual Interrogatories vague ambiguous, or unintelligible by attributing a novel meaning to an ordinary word or multiple meanings to a single word.
9. Petitioner generally objects to Del Taco’s Interrogatories to the extent they seek information concerning “all” or “any” person or entity concerning a particular subject on the grounds that Petitioner would be required to search for information from every person or entity.
Petitioner objects to performing searches of such breadth on the grounds of undue burden and expense. In its search for relevant documents, Petitioner has made, or will make, a reasonable search as required by the Federal Rules of Civil Procedure.
10. Petitioner generally objects to Del Taco’s Interrogatories to the extent they seek information, documents or things not in Petitioner’s possession, custody or control. Petitioner’s responses are based upon information and writings presently available to Petitioner.
11. In response to Del Taco’s Interrogatories, Petitioner may exercise its option to produce documents from which the answers to the Interrogatories may be derived or ascertained in accordance with Federal Rule of Civil Procedure 33(d).
3
12. As to all matters referenced in these responses to Del Taco’s Interrogatories,
investigation and discovery continues. Accordingly, Petitioner reserves its right to modify these
responses and to present in any proceedings and at trial any further information and documents obtained during discovery as well as during the testimony and trial periods and preparation for the testimony and trial periods. Further, discovery, investigation, and legal research and analysis may supply additional facts adding meaning to known facts, as well as establish entirely new factual conclusions or legal conclusions, all of which may lead to substantial additions to, changes in, and variations from the responses set forth herein. Petitioner reserves the right to produce any subsequently discovered evidence, facts and/or documents, and to supplement or change its responses based on such information. Moreover, certain of Del Taco’s Interrogatories
are premature in that they seek contentions or other information that Petitioner cannot provide at
this stage of the proceeding. The responses given herein are done so in a good faith effort to
supply as much information as is presently known which in no way should lead to the prejudice
of Petitioner in connection with further discovery, research or analysis.
RESPONSES TO DEL TACO’S FIRST SET OF INTERROGATORIES
INTERROGATORY NO. 1:
Identify the channels of trade through which Petitioner’s Goods have been distributed or
are intended to be distributed.
RESPONSE TO INTERROGATORY NO. 1:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine. Petitioner further objects to this interrogatory on the grounds that it fails to designate a
4 finite time frame and is therefore overly broad. Petitioner further objections to this interrogatory on the grounds that it seeks information that is neither relevant nor reasonably calculated to lead to the discovery of admissible evidence because information and materials regarding Petitioner’s use or intended use of the mark NAUGLES after the filing of the Petition to Cancel is irrelevant to Petitioner’s standing to bring this action and irrelevant to the claims and defenses submitted in connection with Del Taco’s ornamental use, abandonment, fraud in the procurement and misrepresentation of source of the NAUGLES mark. Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of any party”); T.B.M.P. § 402.01 (“While the scope of discovery is therefore somewhat broad, parties may not engage in ‘fishing expeditions’ and must act reasonably in framing discovery requests.”); see also Nirvana, Inc. v. Nirvana for Health Inc., 2010WL5099662, f.4 (T.T.A.B.,
Dec. 1, 2010) (non precedential) (stating that the nature and extent of petitioner’s use of its mark is irrelevant in connection with petitioner’s claim of abandonment of respondent’s mark). As set forth in these objections, Petitioner maintains that this interrogatory is outside the allowable scope of discovery in this proceeding.
Without waiving the foregoing objections, Petitioner responds as follows: Petitioner sells its NAUGLES products at its restaurant in Huntington Beach, CA, its test kitchen in Fountain
Valley, CA, and the gift shop of The Waterfront Beach Resort, a Hilton Hotel in Huntington
Beach, CA. Petitioner also sells its NAUGLES products at various special events in which it participates. Petitioner intends to sell its NAUGLES products online and at all of its restaurants opened in the future.
5
INTERROGATORY NO. 2:
Identify each physical and online location where Petitioner’s Goods are actually sold or
intended to be sold.
RESPONSE TO INTERROGATORY NO. 2:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine. Petitioner further objections to this interrogatory on the grounds that it seeks information that is neither relevant nor reasonably calculated to lead to the discovery of admissible evidence because information and materials regarding Petitioner’s use or intended use of the mark NAUGLES after the filing of the Petition to Cancel is irrelevant to Petitioner’s standing to bring this action and irrelevant to the claims and defenses submitted in connection with Del Taco’s ornamental use, abandonment, fraud in the procurement and misrepresentation of source of the NAUGLES mark. Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery
regarding any matter, not privileged, that is relevant to the claim or defense of any party”);
T.B.M.P. § 402.01 (“While the scope of discovery is therefore somewhat broad, parties may not
engage in ‘fishing expeditions’ and must act reasonably in framing discovery requests.”); see
also Nirvana, Inc. v. Nirvana for Health Inc., 2010WL5099662, f.4 (T.T.A.B., Dec. 1, 2010)
(non precedential) (stating that the nature and extent of petitioner’s use of its mark is irrelevant in
connection with petitioner’s claim of abandonment of respondent’s mark). As set forth in these
objections, Petitioner maintains that this interrogatory is outside the allowable scope of discovery
in this proceeding.
6
Without waiving the foregoing objections, Petitioner responds as follows:
• www.nauglestacos.com
• 18471 Mt. Langley, Fountain Valley, CA 92708
• 21351 Pacific Coast Hwy, Huntington Beach, CA 92648
• 21100 Pacific Coast Hwy, Huntington Beach, CA 92648
• 5061 Warner Ave., Huntington Beach, CA 92649
• All other NAUGLES restaurant locations that Petitioner intends to open in the
future
INTERROGATORY NO. 3:
Identify the actual or intended classes of customers of Petitioner’s Goods.
RESPONSE TO INTERROGATORY NO. 3:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine. Petitioner further objects to this interrogatory on the grounds that the phrase “classes of customers” is vague and ambiguous. Petitioner further objects to this interrogatory on the grounds that it is unduly burdensome to the extent that it calls for information already within Del
Taco’s possession and/or already produced by Del Taco in discovery. Petitioner further objections to this interrogatory on the grounds that it seeks information that is neither relevant nor reasonably calculated to lead to the discovery of admissible evidence because information and materials regarding Petitioner’s use or intended use of the mark NAUGLES after the filing of the Petition to Cancel is irrelevant to Petitioner’s standing to bring this action and irrelevant to the claims and defenses submitted in connection with Del Taco’s ornamental use, abandonment,
7
fraud in the procurement and misrepresentation of source of the NAUGLES mark. Fed. R. Civ.
P. 26(b)(1) (“Parties may obtain discovery regarding any matter, not privileged, that is relevant
to the claim or defense of any party”); T.B.M.P. § 402.01 (“While the scope of discovery is
therefore somewhat broad, parties may not engage in ‘fishing expeditions’ and must act
reasonably in framing discovery requests.”); see also Nirvana, Inc. v. Nirvana for Health Inc.,
2010WL5099662, f.4 (T.T.A.B., Dec. 1, 2010) (non precedential) (stating that the nature and
extent of petitioner’s use of its mark is irrelevant in connection with petitioner’s claim of
abandonment of respondent’s mark). As set forth in these objections, Petitioner maintains that
this interrogatory is outside the allowable scope of discovery in this proceeding.
Without waiving the foregoing objections, Petitioner responds as follows: Petitioner’s
actual and intended customers are individuals who want to purchase NAUGLES products.
INTERROGATORY NO. 4:
Identify the current or planned manufacturers of Petitioner’s Goods.
RESPONSE TO INTERROGATORY NO. 4:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine. Petitioner further objections to this interrogatory on the grounds that it seeks information that is neither relevant nor reasonably calculated to lead to the discovery of admissible evidence because information and materials regarding Petitioner’s use or intended use of the mark NAUGLES after the filing of the Petition to Cancel is irrelevant to Petitioner’s standing to bring this action and irrelevant to the claims and defenses submitted in connection with Del Taco’s ornamental use, abandonment, fraud in the procurement and misrepresentation
8
of source of the NAUGLES mark. Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery
regarding any matter, not privileged, that is relevant to the claim or defense of any party”);
T.B.M.P. § 402.01 (“While the scope of discovery is therefore somewhat broad, parties may not
engage in ‘fishing expeditions’ and must act reasonably in framing discovery requests.”); see
also Nirvana, Inc. v. Nirvana for Health Inc., 2010WL5099662, f.4 (T.T.A.B., Dec. 1, 2010)
(non precedential) (stating that the nature and extent of petitioner’s use of its mark is irrelevant in
connection with petitioner’s claim of abandonment of respondent’s mark). As set forth in these
objections, Petitioner maintains that this interrogatory is outside the allowable scope of discovery
in this proceeding.
Without waiving the foregoing objections, Petitioner responds as follows: Pursuant to
Rule 33(d) of the Federal Rules of Civil Procedure, Petitioner answers this interrogatory by
specifying the records from which the information may be derived: NAUGLES 0000085 through
NAUGLES 000105 and NAUGLES 000122 through NAUGLES 000154. These records are
being electronically produced to Del Taco concurrently with these discovery responses. Please
note: all records specified herein have been designated “CONFIDENTIAL – OUTSIDE
ATTORNEYS’ EYES ONLY” and said documents and all information contained therein should
be handled accordingly.
INTERROGATORY NO. 5:
Identify the actual or intended first use date of Petitioner’s Mark in connection with
Petitioner’s Goods.
RESPONSE TO INTERROGATORY NO. 5:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the
9 extent that it requests information protected by the attorney-client privilege or work product doctrine. Petitioner further objections to this interrogatory on the grounds that it seeks information that is neither relevant nor reasonably calculated to lead to the discovery of admissible evidence because information and materials regarding Petitioner’s use or intended use of the mark NAUGLES after the filing of the Petition to Cancel is irrelevant to Petitioner’s standing to bring this action and irrelevant to the claims and defenses submitted in connection with Del Taco’s ornamental use, abandonment, fraud in the procurement and misrepresentation of source of the NAUGLES mark. Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery
regarding any matter, not privileged, that is relevant to the claim or defense of any party”);
T.B.M.P. § 402.01 (“While the scope of discovery is therefore somewhat broad, parties may not engage in ‘fishing expeditions’ and must act reasonably in framing discovery requests.”); see
also Nirvana, Inc. v. Nirvana for Health Inc., 2010WL5099662, f.4 (T.T.A.B., Dec. 1, 2010)
(non precedential) (stating that the nature and extent of petitioner’s use of its mark is irrelevant in
connection with petitioner’s claim of abandonment of respondent’s mark). As set forth in these
objections, Petitioner maintains that this interrogatory is outside the allowable scope of discovery
in this proceeding.
Without waiving the foregoing objections, Petitioner responds as follows: at least as early
as October 31, 2015.
INTERROGATORY NO. 6:
Identify the actual or intended first use date of Petitioner’s Mark in connection with
Petitioner’s Goods in United States commerce.
10
RESPONSE TO INTERROGATORY NO. 6:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the
extent that it requests information protected by the attorney-client privilege or work product doctrine. Petitioner further objections to this interrogatory on the grounds that it seeks information that is neither relevant nor reasonably calculated to lead to the discovery of admissible evidence because information and materials regarding Petitioner’s use or intended use of the mark NAUGLES after the filing of the Petition to Cancel is irrelevant to Petitioner’s standing to bring this action and irrelevant to the claims and defenses submitted in connection with Del Taco’s ornamental use, abandonment, fraud in the procurement and misrepresentation of source of the NAUGLES mark. Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery
regarding any matter, not privileged, that is relevant to the claim or defense of any party”);
T.B.M.P. § 402.01 (“While the scope of discovery is therefore somewhat broad, parties may not
engage in ‘fishing expeditions’ and must act reasonably in framing discovery requests.”); see
also Nirvana, Inc. v. Nirvana for Health Inc., 2010WL5099662, f.4 (T.T.A.B., Dec. 1, 2010)
(non precedential) (stating that the nature and extent of petitioner’s use of its mark is irrelevant in
connection with petitioner’s claim of abandonment of respondent’s mark). As set forth in these
objections, Petitioner maintains that this interrogatory is outside the allowable scope of discovery
in this proceeding.
Without waiving the foregoing objections, Petitioner responds as follows: at least as early
as October 31, 2015.
11
INTERROGATORY NO. 7:
Describe in detail the basis for Your allegation contained in Paragraph 11 of the
Amended Petition To Cancel that “Del Taco’s use of NAUGLES is not inherently distinctive.”
RESPONSE TO INTERROGATORY NO. 7:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product
doctrine.
Without waiving the foregoing objections, Petitioner responds as follows: “NAUGLES,”
as used by Del Taco on its products (including but not limited to those products listed in
Registration no. 4261951), is not prima facie registrable, and is not an entirely invented or
"fanciful" term.
INTERROGATORY NO. 8:
Describe in detail the basis for Your allegation contained in Paragraph 12 of the
Amended Petition to Cancel that “Del Taco’s use of NAUGLES has not acquired
distinctiveness.”
RESPONSE TO INTERROGATORY NO. 8:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product
doctrine.
Without waiving the foregoing objections, Petitioner responds as follows: The term
“NAUGLES” has not become distinctive in commerce as applied to Del Taco’s goods listed in
12
Registration no. 4261951. Del Taco cannot claim ownership of one or more active prior registrations on the Principal Register for the same mark for goods or services that are sufficiently similar to those identified in Registration no. 4261951. Del Taco has not enjoyed substantially exclusive and continuous use of the term “NAUGLES” in commerce for the
requisite five years. Registration no. 4261951 has no Section 2(f) claim. The term “NAUGLES,”
as used by Del Taco on its goods, has not come to identify the source of those goods. Del Taco
cannot show that the primary significance of the term NAUGLES in the minds of the consuming
public is Del Taco.
INTERROGATORY NO. 9:
Describe in detail the basis for Your allegation contained in Paragraph 13 of the
Amended Petition to Cancel that “Del Taco cannot show that it has used or registered
NAUGLES in a non-ornamental manner for other goods or services.”
RESPONSE TO INTERROGATORY NO. 9:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine.
Without waiving the foregoing objections, Petitioner responds as follows: Del Taco has not used NAUGLES in a non-ornamental manner for goods or services other than those listed in
Registration no. 4261951. Del Taco has not registered NAUGLES in a non-ornamental manner for goods or services other than those listed in Registration no. 4261951.
13
INTERROGATORY NO. 10:
Describe in detail the basis for Your allegation contained in Paragraph 14 of the
Amended Petition to Cancel that “NAUGLES has not and is not being used as a trademark by
Del Taco.”
RESPONSE TO INTERROGATORY NO. 10:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine.
Without waiving the foregoing objections, Petitioner responds as follows: The term
NAUGLES, as used by Del Taco in connection with the goods listed in Registration no.
4261951, does not identify and/or distinguish the source of Del Taco’s goods from those of others. “NAUGLES,” as used by Del Taco on its products (including but not limited to those products listed in Registration no. 4261951), is not prima facie registrable, and is not an entirely invented or "fanciful" term. The term “NAUGLES” has not become distinctive in commerce as applied to Del Taco’s goods listed in Registration no. 4261951. Del Taco cannot claim
ownership of one or more active prior registrations on the Principal Register for the same mark
for goods or services that are sufficiently similar to those identified in Registration no. 4261951.
Del Taco has not enjoyed substantially exclusive and continuous use of the term “NAUGLES” in
commerce for the requisite five years. Registration no. 4261951 has no Section 2(f) claim. The
term “NAUGLES,” as used by Del Taco on its goods, has not come to identify the source of
those goods. Del Taco cannot show that the primary significance of the term NAUGLES in the
minds of the consuming public is Del Taco. Del Taco has not used NAUGLES in a non-
14 ornamental manner for goods or services other than those listed in Registration no. 4261951. Del
Taco has not registered NAUGLES in a non-ornamental manner for goods or services other than those listed in Registration no. 4261951.
INTERROGATORY NO. 11:
Identify all third parties You are aware of that sell clothing items bearing the NAUGLES
mark.
RESPONSE TO INTERROGATORY NO. 11:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine. Petitioner further objections to this interrogatory on the grounds that it seeks information that is neither relevant nor reasonably calculated to lead to the discovery of
admissible evidence because information and materials regarding Petitioner’s knowledge of third party uses of the mark NAUGLES is irrelevant to Petitioner’s standing to bring this action and irrelevant to the claims and defenses submitted in connection with Del Taco’s ornamental use, abandonment, fraud in the procurement and misrepresentation of source of the NAUGLES mark.
Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of any party”); T.B.M.P. § 402.01 (“While the scope of discovery is therefore somewhat broad, parties may not engage in ‘fishing expeditions’ and must act reasonably in framing discovery requests.”); see also Nirvana, Inc. v. Nirvana for Health
Inc., 2010WL5099662, f.4 (T.T.A.B., Dec. 1, 2010) (non precedential) (stating that the nature and extent of petitioner’s use of its mark is irrelevant in connection with petitioner’s claim of
15 abandonment of respondent’s mark). As set forth in these objections, Petitioner maintains that this interrogatory is outside the allowable scope of discovery in this proceeding.
Without waiving the foregoing objections, Petitioner responds as follows: Pursuant to
Rule 33(d) of the Federal Rules of Civil Procedure, Petitioner answers this interrogatory by specifying the records from which the information may be derived: NAUGLES 0000240 and
NAUGLES 000241. These records are being electronically produced to Del Taco concurrently with these discovery responses. Please note: all records specified herein have been designated
“CONFIDENTIAL” and said documents and all information contained therein should be handled accordingly.
INTERROGATORY NO. 12:
Identify each clothing item bearing the NAUGLES mark that Petitioner has sold or
intends to sell.
RESPONSE TO INTERROGATORY NO. 12:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the
extent that it requests information protected by the attorney-client privilege or work product
doctrine. Petitioner further objections to this interrogatory on the grounds that it seeks
information that is neither relevant nor reasonably calculated to lead to the discovery of
admissible evidence because information and materials regarding Petitioner’s use or intended use
of the mark NAUGLES after the filing of the Petition to Cancel is irrelevant to Petitioner’s
standing to bring this action and is irrelevant to the claims and defenses submitted in connection
with Del Taco’s ornamental use, abandonment, fraud in the procurement and misrepresentation
of source of the NAUGLES mark. Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery
16 regarding any matter, not privileged, that is relevant to the claim or defense of any party”);
T.B.M.P. § 402.01 (“While the scope of discovery is therefore somewhat broad, parties may not engage in ‘fishing expeditions’ and must act reasonably in framing discovery requests.”); see also Nirvana, Inc. v. Nirvana for Health Inc., 2010WL5099662, f.4 (T.T.A.B., Dec. 1, 2010)
(non precedential) (stating that the nature and extent of petitioner’s use of its mark is irrelevant in connection with petitioner’s claim of abandonment of respondent’s mark). As set forth in these objections, Petitioner maintains that this interrogatory is outside the allowable scope of discovery in this proceeding.
Without waiving the foregoing objections, Petitioner responds as follows: Pursuant to
Rule 33(d) of the Federal Rules of Civil Procedure, Petitioner answers this interrogatory by specifying the records from which the information may be derived: NAUGLES 000045 through
NAUGLES 000066 and NAUGLES 000076 through NAUGLES 000084. These records are being electronically produced to Del Taco concurrently with these discovery responses.
INTERROGATORY NO. 13:
Describe in detail how Petitioner’s use of the NAUGLES mark on clothing is or will be distinctive.
RESPONSE TO INTERROGATORY NO. 13:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine. Petitioner further objections to this interrogatory on the grounds that it seeks information that is neither relevant nor reasonably calculated to lead to the discovery of admissible evidence because the information sought is irrelevant to Petitioner’s standing to bring
17 this action and is irrelevant to the claims and defenses submitted in connection with Del Taco’s ornamental use, abandonment, fraud in the procurement and misrepresentation of source of the
NAUGLES mark. Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of any party”); T.B.M.P. § 402.01 (“While the scope of discovery is therefore somewhat broad, parties may not engage in ‘fishing expeditions’ and must act reasonably in framing discovery requests.”); see also Nirvana, Inc. v.
Nirvana for Health Inc., 2010WL5099662, f.4 (T.T.A.B., Dec. 1, 2010) (non precedential)
(stating that the nature and extent of petitioner’s use of its mark is irrelevant in connection with petitioner’s claim of abandonment of respondent’s mark). As set forth in these objections,
Petitioner maintains that this interrogatory is outside the allowable scope of discovery in this proceeding.
INTERROGATORY NO. 14:
Describe in detail how Petitioner’s use of the NAUGLES mark on clothing is or will be non-ornamental.
RESPONSE TO INTERROGATORY NO. 14:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the
extent that it requests information protected by the attorney-client privilege or work product
doctrine. Petitioner further objections to this interrogatory on the grounds that it seeks
information that is neither relevant nor reasonably calculated to lead to the discovery of
admissible evidence because the information sought is irrelevant to Petitioner’s standing to bring
this action and is irrelevant to the claims and defenses submitted in connection with Del Taco’s
ornamental use, abandonment, fraud in the procurement and misrepresentation of source of the
18
NAUGLES mark. Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of any party”); T.B.M.P. § 402.01 (“While the scope of discovery is therefore somewhat broad, parties may not engage in ‘fishing expeditions’ and must act reasonably in framing discovery requests.”); see also Nirvana, Inc. v.
Nirvana for Health Inc., 2010WL5099662, f.4 (T.T.A.B., Dec. 1, 2010) (non precedential)
(stating that the nature and extent of petitioner’s use of its mark is irrelevant in connection with petitioner’s claim of abandonment of respondent’s mark). As set forth in these objections,
Petitioner maintains that this interrogatory is outside the allowable scope of discovery in this proceeding.
INTERROGATORY NO. 15:
Describe in detail the basis for Your allegation contained in Paragraph 29 of the
Amended Petition to Cancel that “Del Taco knowingly, intentionally and falsely asserted to the
USPTO in sworn declarations that it was actively using the NAUGLES mark in a nonornamental
[sic] manner for goods or services other than clothing, namely in connection with restaurant services, knowing full well that it had abandoned the mark at least as early as 1995.”
RESPONSE TO INTERROGATORY NO. 15:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine.
Without waiving the foregoing objections, Petitioner responds as follows: Del Taco
closed its last NAUGLES restaurant in 1995 in connection with their business scheme to convert
Naugles restaurants to Del Taco restaurants. Del Taco has not used the mark in commerce on the
19 services identified in now-cancelled Registration no. 1043729, namely, restaurant services, since that time. Del Taco abandoned the NAUGLES mark for restaurant services at least as early as
1995. This fact was found to be true by the TTAB in its 2015 opinion ordering Del Taco’s restaurant services registration for NAUGLES cancelled due to abandonment. See Ziebarth v.
Del Taco, LLC, TTAB Cancellation No. 92053501. Despite the 1995 abandonment, Del Taco filed a renewal of Registration no. 1043729 on July 8, 1996 and Section 8 & 15 Affidavits on
May 18, 2006, presenting a photo of an old Naugles Restaurant sign that no longer exists. Del
Taco declared that they were still using the mark on the goods identified in the registration, even though no restaurant services were offered since closing the last NAUGLES some 16 years earlier. In both the 1996 and 2006 renewal filings, Del Taco and/or its attorneys falsely swore in
USPTO declarations and/or affidavits that Del Taco was still using the mark on the services identified in the registration.
INTERROGATORY NO. 16:
Describe in detail the basis for Your allegation contained in Paragraph 30 of the
Amended Petition to Cancel that “Del Taco knew its use of NAUGLES on clothing was not
inherently distinctive and had not acquired distinctiveness for clothing.”
RESPONSE TO INTERROGATORY NO. 16:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the
extent that it requests information protected by the attorney-client privilege or work product
doctrine.
Without waiving the foregoing objections, Petitioner responds as follows: Del Taco
closed its last NAUGLES restaurant in 1995 in connection with their business scheme to convert
20
Naugles restaurants to Del Taco restaurants. Del Taco has not used the mark in commerce on the services identified in now-cancelled Registration no. 1043729, namely, restaurant services, since that time. Del Taco had abandoned the NAUGLES mark for restaurant services at least as early as 1995. This fact was found to be true by the TTAB in its 2015 opinion ordering Del Taco’s restaurant services registration for NAUGLES cancelled due to abandonment. See Ziebarth v.
Del Taco, LLC, TTAB Cancellation No. 92053501. Despite the 1995 abandonment, Del Taco filed a renewal of Registration no. 1043729 on July 8, 1996 and Section 8 & 15 Affidavits on
May 18, 2006 presenting a photo of an old Naugles Restaurant sign that no longer exists. Del
Taco declared that they were still using the mark on the goods identified in the registration, even though no restaurant services were offered since closing the last NAUGLES some 16 years earlier. In both the 1996 and 2006 renewal filings, Del Taco and/or its attorneys falsely swore in
USPTO declarations and/or affidavits that Del Taco was still using the mark on the services
identified in the registration.
At the time Del Taco filed application serial no. 85281037, Del Taco knew that the term
“NAUGLES,” as intended to be used by it on its products, was not prima facie registrable, and
was not an entirely invented or "fanciful" term. At the time Del Taco filed application serial no.
85281037, Del Taco knew that the term “NAUGLES” would not become distinctive as applied
to Del Taco’s goods in commerce. At the time Del Taco filed application serial no. 85281037,
Del Taco knew that it could not claim ownership of one or more valid, active prior registrations
on the Principal Register for the same mark for goods or services that are sufficiently similar. At
the time Del Taco filed application serial no. 85281037, Del Taco knew that it had not enjoyed
substantially exclusive and continuous use of the term “NAUGLES” in commerce for the
requisite five years.
21
INTERROGATORY NO. 17:
Describe in detail any awareness or knowledge You had of Respondent’s NAUGLES
Mark: (a) at the time You commenced use of the Petitioner’s Mark in the United States; and (b) at the time of the filing of Your application to register Petitioner’s Mark with the U.S. Patent &
Trademark Office.
RESPONSE TO INTERROGATORY NO. 17:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory on the grounds that it constitutes two separate interrogatories, not one. TBMP § 405.03(d) (“If an interrogatory includes questions set forth as numbered or lettered subparts, each separately
designated subpart will be counted by the Board as a separate interrogatory. The propounding
party will, to that extent, be bound by its own numbering system, and will not be heard to
complain that an interrogatory, although propounded with separately designated subparts, should
nevertheless be counted as a single interrogatory because the interrogatory concerns a single
transaction, set of facts, etc., or because the division was made for clarification or convenience);
Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 U.S.P.Q.2d 1636, 1637 (T.T.A.B.
1990); Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 U.S.P.Q.2d 2055, 2056
(T.T.A.B. 1990). Petitioner further objects to this interrogatory as being argumentative and assuming facts not in evidence because this interrogatory, as phrased, assumes the fact that Del
Taco’s use of the term NAUGLES functions as a trademark. Petitioner further objects to this
interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine. Petitioner further objections to this interrogatory on the grounds that it
seeks information that is neither relevant nor reasonably calculated to lead to the discovery of
22 admissible evidence because information and materials regarding Petitioner’s knowledge of Del
Taco’s use of the term NAUGLES is irrelevant to Petitioner’s standing to bring this action and irrelevant to the claims and defenses submitted in connection with Del Taco’s ornamental use, abandonment, fraud in the procurement and misrepresentation of source of the NAUGLES mark.
Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of any party”); T.B.M.P. § 402.01 (“While the scope of discovery is therefore somewhat broad, parties may not engage in ‘fishing expeditions’ and must act reasonably in framing discovery requests.”); see also Nirvana, Inc. v. Nirvana for Health
Inc., 2010WL5099662, f.4 (T.T.A.B., Dec. 1, 2010) (non precedential) (stating that the nature and extent of petitioner’s use of its mark is irrelevant in connection with petitioner’s claim of
abandonment of respondent’s mark). As set forth in these objections, Petitioner maintains that this interrogatory is outside the allowable scope of discovery in this proceeding.
Without waiving the foregoing objections, Petitioner responds as follows: At the time
Petitioner commenced use of its NAUGLES mark, it was aware that Del Taco was selling online
shirts and hats bearing the term NAUGLES, but that Del Taco’s use of the term NAUGLES on
these products was not as a “trademark,” but merely ornamental. At the time Petitioner filed application serial no. 86793165, it was aware that Del Taco was selling online shirts and hats
bearing the term NAUGLES, but that Del Taco’s use of the term NAUGLES on these products
was not as a “trademark,” but merely ornamental. Petitioner has never seen shirts and/or hats
bearing the term NAUGLES being sold in any Del Taco restaurant or any brick and mortar store.
INTERROGATORY NO. 18:
Describe in detail the steps taken by Petitioner, leading up to the time of filing, which would demonstrate Petitioner’s bona fide intent to use Petitioner’s Mark in commerce.
23
RESPONSE TO INTERROGATORY NO. 18:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine.
Without waiving the foregoing objections, Petitioner responds as follows: Petitioner has been operating restaurant and cafeteria services under the NAUGLES trademark since at least as early as March 20, 2012. Prior to filing application serial no. 86793165, Petitioner began planning for the manufacture and sale of merchandise associated with its NAUGLES restaurants.
Petitioner created artwork for its intended products. Documents NAUGLES 000067 through
000075 contain the artwork created by Petitioner prior to filing Application serial no. 86793165, which have been produced to Del Taco concurrently with these discovery responses. Documents
DELTACO 000707 through DELTACO 000711, produced by Del Taco on June 7, 2017, evidence Petitioner’s intention to produce merchandise. In addition, Petitioner has promoted its clothing and other merchandise on social media. Petitioner’s employees have always worn clothing bearing its NAUGLES mark. Document DELTACO 000366, produced by Del Taco on
June 7, 2017, evidences Petitioner’s intention to offer clothing online.
INTERROGATORY NO. 19:
Identify and describe any evidence in Your possession which could demonstrate
Respondent’s “blatant misuse” of Respondent’s NAUGLES mark as alleged in Paragraph 45 of the Amended Petition to Cancel.
24
RESPONSE TO INTERROGATORY NO. 19:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory as being
nonsensical, vague, ambiguous, and assuming facts not in evidence because Paragraph 45 of the
Amended Petition to Cancel does not state what this interrogatory asserts it does. Petitioner further objects to this interrogatory as being argumentative and assuming facts not in evidence because this interrogatory, as phrased, assumes the fact that Del Taco’s use of the term
NAUGLES functions as a trademark. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine.
Without waiving the foregoing objections, Petitioner responds as follows: Contrary to the facts asserted in this interrogatory, Paragraph 45 of the Amended Petition to Cancel does not allege that Del Taco “blatantly misused” its own trademark. Rather, Paragraph 45 of the
Amended Petition to Cancel refers to Petitioner’s mark and states, “Del Taco’s above-described actions constitute blatant misuse of the mark and evidence Del Taco’s dishonest and deceptive intentions behind seeking a registration for clothing.” Because this interrogatory is nonsensical,
Petitioner is unable to answer this interrogatory.
INTERROGATORY NO. 20:
Identify and describe any evidence in Your possession which could demonstrate
Respondent’s intention to trade on Your goodwill and reputation.
RESPONSE TO INTERROGATORY NO. 20:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the
25 extent that it requests information protected by the attorney-client privilege or work product doctrine.
Without waiving the foregoing objections, Petitioner responds as follows: Pursuant to Rule
33(d) of the Federal Rules of Civil Procedure, Petitioner answers this interrogatory by specifying the records from which the information may be derived:
• DELTACO 000106 through 000357
• DELTACO 004422 through DELTACO 004430
• DELTACO 001169 through DELTACO 001269; NAUGLES 000260 through
NAUGLES 000411
• DELTACO 000714 through DELTACO 000722; DELTACO 000724 through
DELTACO 000727; DELTACO 000745 through DELTACO 000760. Please note: this
group of records specified herein have been designated “CONFIDENTIAL” and said
documents and all information contained therein should be handled accordingly.
• NAUGLES 000156 through NAUGLES 000187
• DELTACO 000017 through DELTACO 000038; DELTACO 000058 through
DELTACO 000063
• DELTACO 0000358 through DELTACO 000370; DELTACO 000385 through
DELTACO 000713
INTERROGATORY NO. 21:
Identify any specific acts by Respondent in the use of Respondent’s NAUGLES Mark,
which amount to an attempt to create the impression that Petitioner is the source of Respondent’s
goods.
26
RESPONSE TO INTERROGATORY NO. 21:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory as being
argumentative and assuming facts not in evidence because this interrogatory, as phrased,
assumes the fact that Del Taco’s use of the term NAUGLES functions as a trademark. Petitioner
further objects to this interrogatory to the extent that it requests information protected by the
attorney-client privilege or work product doctrine.
Without waiving the foregoing objections, Petitioner responds as follows: Pursuant to Rule
33(d) of the Federal Rules of Civil Procedure, Petitioner answers this interrogatory by specifying
the records from which the information may be derived:
• DELTACO 000106 through 000357
• DELTACO 004422 through DELTACO 004430
• DELTACO 001169 through DELTACO 001269; NAUGLES 000260 through
NAUGLES 000411
• DELTACO 000714 through DELTACO 000722; DELTACO 000724 through
DELTACO 000727; DELTACO 000745 through DELTACO 000760. Please note: this
group of records specified herein have been designated “CONFIDENTIAL” and said
documents and all information contained therein should be handled accordingly.
• NAUGLES 000156 through NAUGLES 000187
• DELTACO 000017 through DELTACO 000038; DELTACO 000058 through
DELTACO 000063
• DELTACO 0000358 through DELTACO 000370; DELTACO 000385 through
DELTACO 000713
27
INTERROGATORY NO. 22:
Describe in detail, including but not limited to the location, hours and days of operation,
the opening date, and the manner of advertising, of Petitioner’s “test kitchen” as identified in following URL http://nauglestacos.com/merchandise.php, attached hereto as Exhibit A.
RESPONSE TO INTERROGATORY NO. 22:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine. Petitioner further objections to this interrogatory on the grounds that it seeks information that is neither relevant nor reasonably calculated to lead to the discovery of admissible evidence because information and materials regarding Petitioner’s test kitchen is irrelevant to Petitioner’s standing to bring this action and irrelevant to the claims and defenses submitted in connection with Del Taco’s ornamental use, abandonment, fraud in the procurement and misrepresentation of source of the NAUGLES mark. Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of any party”); T.B.M.P. § 402.01 (“While the scope of discovery is therefore somewhat broad, parties may not engage in ‘fishing expeditions’ and must act reasonably in framing discovery requests.”); see also Nirvana, Inc. v. Nirvana for Health Inc., 2010WL5099662, f.4 (T.T.A.B.,
Dec. 1, 2010) (non precedential) (stating that the nature and extent of petitioner’s use of its mark is irrelevant in connection with petitioner’s claim of abandonment of respondent’s mark). As set forth in these objections, Petitioner maintains that this interrogatory is outside the allowable scope of discovery in this proceeding.
28
Without waiving the foregoing objections, Petitioner responds as follows: Petitioner’s test kitchen is located at 18471 Mt. Langley, Fountain Valley, CA 92708. The test kitchen is open 10am through 7pm, Sunday through Thursday, and 10am through 8pm, Friday and
Saturday. Petitioner’s test kitchen opened on July 27, 2015. The manner of advertising for
Petitioner’s test kitchen currently includes but is not limited to the internet, www.nauglestacos.com, social media, signage, sponsorship of local events and special events.
INTERROGATORY NO. 23:
Describe in detail the meaning of the statement “T-shirts, caps, and other items are
available at the test kitchen from time to time” as indicated at the following URL
http://nauglestacos.com/merchandise.php attached hereto as Exhibit A.
RESPONSE TO INTERROGATORY NO. 23:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine. Petitioner further objections to this interrogatory on the grounds that it seeks information that is neither relevant nor reasonably calculated to lead to the discovery of admissible evidence because information and materials regarding Petitioner’s test kitchen is irrelevant to Petitioner’s standing to bring this action and irrelevant to the claims and defenses submitted in connection with Del Taco’s ornamental use, abandonment, fraud in the procurement and misrepresentation of source of the NAUGLES mark. Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of any party”); T.B.M.P. § 402.01 (“While the scope of discovery is therefore somewhat broad, parties may not engage in ‘fishing expeditions’ and must act reasonably in framing discovery
29 requests.”); see also Nirvana, Inc. v. Nirvana for Health Inc., 2010WL5099662, f.4 (T.T.A.B.,
Dec. 1, 2010) (non precedential) (stating that the nature and extent of petitioner’s use of its mark
is irrelevant in connection with petitioner’s claim of abandonment of respondent’s mark). As set
forth in these objections, Petitioner maintains that this interrogatory is outside the allowable
scope of discovery in this proceeding.
Without waiving the foregoing objections, Petitioner responds as follows: The statement
in question was originally drafted and posted in an abundance of caution to manage expectations for merchandise. However, the test kitchen and all other locations have always consistently had products on hand for sale since Petitioner first began selling its merchandise. The statement is question is no longer necessary.
INTERROGATORY NO. 24:
Describe in detail any awareness or knowledge Christian Ziebarth had of Respondent’s
NAUGLES Mark: (a) at the time You or Mr. Ziebarth commenced use of the Petitioner’s Mark in the United States; and (b) at the time of the filing of Your application to register Petitioner’s
Mark with the U.S. Patent & Trademark Office.
RESPONSE TO INTERROGATORY NO. 24:
Petitioner incorporates by this reference its General Objections to Del Taco’s
Interrogatories as if set forth fully herein. Petitioner further objects to this interrogatory on the grounds that it constitutes two separate interrogatories, not one. TBMP § 405.03(d) (“If an interrogatory includes questions set forth as numbered or lettered subparts, each separately
designated subpart will be counted by the Board as a separate interrogatory. The propounding
party will, to that extent, be bound by its own numbering system, and will not be heard to
30 complain that an interrogatory, although propounded with separately designated subparts, should nevertheless be counted as a single interrogatory because the interrogatory concerns a single transaction, set of facts, etc., or because the division was made for clarification or convenience);
Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 U.S.P.Q.2d 1636, 1637 (T.T.A.B.
1990); Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 U.S.P.Q.2d 2055, 2056
(T.T.A.B. 1990). Petitioner further objects to this interrogatory as being argumentative and assuming facts not in evidence because this interrogatory, as phrased, assumes the fact that Del
Taco’s use of the term NAUGLES functions as a trademark. Petitioner further objects to this interrogatory to the extent that it requests information protected by the attorney-client privilege or work product doctrine. Petitioner further objections to this interrogatory on the grounds that it
seeks information that is neither relevant nor reasonably calculated to lead to the discovery of
admissible evidence because information and materials regarding Mr. Ziebarth’s knowledge of
Del Taco’s use of the term NAUGLES is irrelevant to Petitioner’s standing to bring this action and irrelevant to the claims and defenses submitted in connection with Del Taco’s ornamental use, abandonment, fraud in the procurement and misrepresentation of source of the NAUGLES mark. Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of any party”); T.B.M.P. § 402.01 (“While the scope of discovery is therefore somewhat broad, parties may not engage in ‘fishing expeditions’ and must act reasonably in framing discovery requests.”); see also Nirvana, Inc. v. Nirvana for
Health Inc., 2010WL5099662, f.4 (T.T.A.B., Dec. 1, 2010) (non precedential) (stating that the nature and extent of petitioner’s use of its mark is irrelevant in connection with petitioner’s claim of abandonment of respondent’s mark). As set forth in these objections, Petitioner maintains that this interrogatory is outside the allowable scope of discovery in this proceeding.
31
Without waiving the foregoing objections, Petitioner responds as follows: At the time
Petitioner commenced use of its NAUGLES mark, Mr. Ziebarth was aware that Del Taco was selling online shirts and hats bearing the term NAUGLES, but that Del Taco’s use of the term
NAUGLES on these products was not as a “trademark,” but merely ornamental. At the time
Petitioner filed application serial no. 86793165, Mr. Ziebarth was aware that Del Taco was selling online shirts and hats bearing the term NAUGLES, but that Del Taco’s use of the term
NAUGLES on these products was not as a “trademark,” but merely ornamental. Mr. Ziebarth has never seen shirts and/or hats bearing the term NAUGLES being sold in any Del Taco restaurant or any brick and mortar store.
Dated: July 7, 2017
By: /s/ Kelly K. Pfeiffer Kelly K. Pfeiffer Amezcua-Moll & Associates, P.C. 1122 E. Lincoln Ave., Suite 203 Orange, CA 92865
Attorneys for Petitioner NAUGLES CORP.
32
CERTIFICATE OF SERVICE
I certify that a copy of the foregoing PETITIONER’S RESPONSES TO DEL TACO’S FIRST SET OF INTERROGATORIES was served upon DINSMORE & SHOHL LLP, counsel for Del Taco, by emailing one copy on June 7, 2017 to the following individuals listed as counsel of record for Registrant Del Taco, LLC in this proceeding:
April Besl [email protected] Govinda Davis [email protected]
DINSMORE & SHOHL LLP 255 E 5th Street, Ste. 1900 Cincinnati, Ohio 45202-1971
By: /s/ Kelly K. Pfeiffer Kelly K. Pfeiffer AMEZCUA-MOLL & ASSOCIATES 1122 E. Lincoln Ave., Suite 203 Orange, CA 92865 Attorneys for Petitioner NAUGLES CORP.
33