Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov ESTTA Tracking number: ESTTA1134075 Filing date: 05/16/2021
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91241468 Party Defendant Pier A Battery Park Associates, LLC Correspondence JOHN P BOSTANY Address THE BOSTANY LAW FIRM PLLC 3 WORLD FINANCIAL CENTER 24TH FLOOR NEW YORK, NY 10281 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected] 212-530-4400
Submission Opposition/Response to Motion Filer's Name Samantha B. Welborne Filer's email [email protected] Signature /SBW/ Date 05/16/2021 Attachments Opposition.5.15.21.pdf(254106 bytes ) Ex.1.Email.March 17.pdf(114359 bytes ) Ex.2.Initial.Disclosures.Amended.pdf(173808 bytes ) Ex.3.Amended.Resp.Interrog.8.28.20.pdf(167910 bytes ) Ex.4.Response RFAs.pdf(288490 bytes ) Ex.5.Response.4th.Interrogatories.3.8.21.pdf(166482 bytes ) Proof.Service.pdf(123680 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ------x Casella Wines Pty Limited,
Plaintiff-Opposer, Opposition No.91241468
- against –
Pier A Battery Park Associates, LLC,
Defendant-Applicant. ------x
OPPOSITION TO OPPOSER'S MOTION TO COMPEL
Background
After years of discovery and the matter is ripe for summary judgment, the Opposer is
seeking to compel depositions of three individuals. Applicant has not identified any witnesses in support of its claims/defenses and the Board previously determined on Opposer’s prior motion that witnesses were not required. The topics Opposer claims it needs to explore in depositions have already been answered favorably to Opposer in Applicant’s responses, i.e. there have been no
sales, advertising, contracts relating to the products that are the subject of the applications.
Applicant explained that the genesis of its BLACKTAIL mark was “inspired by "Aeromarine"
which was one of the first aviation organizations established during the early years of flight and
shuttled adventure-seeking, Latin, Irish, and American bartending talent to Cuba during
prohibition years”. See Doc. No. 4 (pp.8-9).
1 “The first location of the Applicant’s BLACKTAIL cocktail lounges was located on "Pier
A" in downtown Manhattan, the precise location where the Aeromarine planes used to took off.
Id. "The nickname/BackTail-came about through Harry Bruno, the company's resident promotional genius. It was he who suggested the tailfins of Aeromarine's meagre fleet be painted black-so they would be instantly recognisable from the ground". Id. “Hence the genesis of the
Applicant’s mark is anchored to a theme that couldn’t be further from the Kangaroo inspired
Australian Opposer’s name”. Id.
The Board denied Opposer’s request to require Applicant to use witnesses. “As Pier A
has stated that it does not intend to rely on any witnesses, there are none to disclose and nothing to
compel”. Dec. 19, 2019 Board Order, Doc. No. 33. See also, Doc. No. 23 Order April 29, 2019
denying motions to compel Applicant to accept a revised Protective Order, denying Opposer’s
request for sanctions based upon its view that Applicant was required to have a second initial
conference with it1; Doc. No. 63, January 29, 2021, denying Opposer’s motions to dismiss counterclaim.
Opposer was aware of the witnesses it now seeks to compel depositions of as early as July
9, 2018. See Doc. No. 4 (p. 9). Casella flatly misrepresents that it had a stipulation with Applicant
to postpone the depositions. This is untrue. Pier A’s objection is substantive, and while it mentions the pandemic at the end of the email, the primary objection explains that deposing witnesses to re- affirm answers already provided in other discovery serves no purpose other than to delay and escalate costs. Furthermore, Paul Lamas is the only one of the 3 witnesses that certified
Applicant’s bona fide “intent to use” in 2017 Applications as a Member of the Applicant.
Opposer fails to explain why it waited over 3 years to attempt to depose him.2
1 On May 16, 2019, the Board held a discovery conference with the parties and discovered that Opposer’s sole issue that it claimed was not fully discussed during the parties’ initial conference was the Opposer’s request for a revised protective order that Applicant already advised it would not agree to at the initial discovery conference. 2 Applicant continued its efforts to persuade Opposer to discontinue its pursuit of depositions in email and phone call on April 12 and 13, 2021. Yet the following day, April 14, Opposer claimed that Applicant was non-responsive. 2 With respect to the other two individuals that were not listed in response to Interrogatories,
14 Months ago on March 17, 2020, Applicant conveyed its objections to depositions:
“We did not identify any witnesses in support of our claims or defenses. You already moved to compel witnesses and the Board disagreed with your views. This is an intent to use application and the Applicant answered all of your questions about its intent to use the mark in the future on the goods at issue. Your accusation that it is not now using the mark is academic.”
See copy of complete email annexed as Exhibit 1.
ARGUMENT
Applicant has explained and provided both interrogatory responses and documentary
evidence to prove how it selected the Blacktail mark. Opposer does not and cannot deny that all of the factors that will be before the Board on determination of this matter have already been provided. This is an "intent to use" application and Applicant certified that it has not made any use in commerce or advertised it. Copies of Pier A’s initial disclosures, interrogatory responses and responses to requests for admission are respectfully annexed as Exhibits 2, 3, and 4.
Opposer's Motion to Compel testimony about Applicant's uses in commerce, advertising and document collection efforts are all frivolous as there can be no testimony about advertising and sales that do not exist. The remainder of Opposer's deposition topics were all provided in
Applicant's discovery responses.
Applicant does not plan on departing from its prior responses and the additional discovery that Opposer seeks and depositions that Casella waited until the week before discovery closed to seek to move to compel, are plainly designed to harass the Applicant, and drive up the costs of this case which should be determined on its merits. The Board and the Federal Circuit Court of
Appeals have repeatedly advised that matters should be determined on their merits. It is plainly
Opposer's view, that it cannot possibly persuade the Board, that its discount Yellowtail brand wine can be confused with the products that Blacktail seeks to trademark Blacktail.
3 Casella does not assert that Pier A has control over the three persons it is seeking to depose. Pier A did not identify any witnesses and only Paul Lamas, a member of Pier A Battery
Park Associates LLC certified the Interrogatories. Paul Lamas is running multiple restaurants in the downtown section of New York City and it would be an enormous burden for Mr. Lamas to appear for a deposition in a time when his restaurants are struggling to survive. The Applicant’s bona fide intention to use the mark is made clear in its interrogatory responses and additional evidence submitted in TTAB Vue Doc. 4.
In determining likelihood of confusion, the Trademark Trial and Appeal Board (TTAB) is guided by the DuPont Factors, a list of thirteen factors set forth in in In re E.I. DuPont
DeNemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (CCPA 1973). At the April 19, 2021
Conference Applicant requested permission to move for summary judgment.3 It is respectfully submitted that it is Applicant’s likelihood of success on the merits that is precipitating Opposer’s escalated efforts to harass the Applicant by taking multiple unnecessary depositions. It is plainly its plan to make this proceeding cost prohibitive for the Applicant or obtain an order requiring a witness that it knows cannot appear, so that it may avoid the matter being decided on its merits.
Opposer seeks to compare the standard character mark BLACKTAIL" with the appearance of YELLOW TAIL. It is respectfully submitted that the Opposer has assumed that a dissection of these two composite marks will take place in order to reach the conclusion that the appearance alone will be sufficient to sustain its complaint. This is contrary to bedrock controlling precedent.
First the common portion of the composite mark “tail” is insufficient to prevail on the appearance factor. See e.g. Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1358, 56 U.S.P.Q.2d
1351, 1354 (Fed. Cir. 2000)(the “ultimate conclusion of similarity or dissimilarity of the marks must rest on consideration of the marks in their entirety”); In re National Data Corp., 753 F.2d
3 Pier A agreed not to file any motion for summary judgment until the Interlocutory Attorney determined whether we had to request leave first and we were provided with the determination in the April 22, 2021 Order. 4 1056, 1058, 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985) (“[L]ikelihood of confusion cannot be
predicated on dissection of a mark, that is, on only part of a mark.”). Further, since the marks do
not have the identical sight and sound. Similarity of marks is established by “comparing their
“sight, sound, and meaning”. Continental Grain Co. v. Central Soya Co., Inc., 1995 WL 649500, at *1 (Fed. Cir. 1995).
OPPOSER’S BAD FAITH
Opposer’s bad faith is further demonstrated by its fraud upon the Trademark Trial and
Appeal Board with respect to its use of Yellowtail on alcohol products other than wine.
Casella fraudulently certified to the TTAB that it continued to use YELLOWTAIL in commerce with respect to the products set forth in Registration # 4442430. Casella neglected to inform the Board that the mark was abandoned on July 10, 2020 for inability to prove use during the precise time it was certifying to the Board that the mark should be used to prevent Pier A from registering its Blacktail marks.
To explore Opposer’s bad faith further, Applicant asked Opposer to identify the decision maker with respect to cancelation of Registration # 4442430. Casella’s counsel identified itself as a witness in this portion of the response to Interrogatory 47 annexed hereto as Exhibit 5: “Julian
Raccanello and Casella’s counsel made the decision not to renew U.S. Registration
No. 4442430”. (Emphasis Supplied). It was possible this was a typo and Casella might want to revise.
During a May 12, 2021 meet and confer, we explored this issue and explained to
Opposer’s counsel that it should be disqualified if it is a witness to the abandonment/cancelation of Registration # 4442430 which remains part of the Counterclaim pursuant to the January 29,
2021 Order. Opposer declined to revise the response even after Applicant made clear that it was a serious matter and would be brought to the Board’s attention as it appeared that Casella’s counsel could not continue at this juncture. 5 Conclusion
WHEREFORE, it is respectfully requested that the Instant Motion be denied and that the
Applicant be granted permission to move for summary judgment on the merits of this case.
Dated: May 15, 2021
Respectfully submitted,
THE BOSTANY LAW FIRM, PLLC
____/SBW/______By: Samantha B. Welborne John P. Bostany Attorneys for APPLICANT-COUNTERCLAIM PETITIONER 3 World Financial Center, 24th Floor New York, New York 10281 (212) 530-4400 [email protected]
6 From: John P. Bostany To: Bondy, Matthew Cc: Moss, Richard; Krajicek, Kathleen; Schwarz, Martha; Charen Kim; Samantha B. Welborne, Esq.; Vinci, Brianna Subject: RE: Casella Wines Pty Limited v. Pier A Battery Park Associates - Deposition Notices Date: Tuesday, March 17, 2020 1:02:00 PM
Hi Mr. Bondy,
We did not identify any witnesses in support of our claims or defenses. You already moved to compel witnesses and the Board disagreed with your views. This is an intent to use application and the Applicant answered all of your questions about its intent to use the mark in the future on the goods at issue. Your accusation that it is not now using the mark is academic. You are pressing for depositions of senior level persons on short notice in the middle of a national pandemic in an obvious effort to harass and harm the Applicant. We will report your conduct to the Board in due course in the nature of a Motion for a Protective Order and Sanctions in the event your case survives the pending motions to dismiss.
Please be guided accordingly,
The Bostany Law Firm PLLC 3 World Financial Center 24th Floor New York, NY 10281 (212) 530-4400 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ------x CASELLA WINES PTY LIMITED,
Opposer – Counterclaim-Respondent, Opposition No. 91241468
- against – AMENDED INITIAL DISCLOSURES
PIER A BATTERY PARK ASSOCIATES, LLC,
Applicant - Counterclaimant. ------x
Pursuant to Rule 26(a)(1)(A) of the Federal Rules of Civil Procedure, PIER A BATTERY PARK ASSOCIATES, LLC, through its undersigned counsel, hereby supplies the following Initial Disclosures:
(i) None. Plaintiff will rely upon the Documents referenced in section (ii).
(ii) Trademark Registrations and Documents referenced in Motion papers have been filed and/or are available to the public.
(iii) N/A.
(iv) No insurance agreement.
Dated: June 25, 2019
THE BOSTANY LAW FIRM, PLLC _ By s/Kelsey E. Gorry Attorneys for Applicant
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ------x CASELLA WINES PTY LIMITED,
Opposer – Counterclaim-Respondent, Opposition No. 91241468
- against – RESPONSE TO OPPOSER’S INTERROGATORIES
PIER A BATTERY PARK ASSOCIATES, LLC,
Applicant - Counterclaimant. ------x
Pursuant to Trademark Rules of Practice, PIER A BATTERY PARK ASSOCIATES, LLC
(“Applicant”) hereby serves responses to Opposer’s Interrogatories dated June 4, 2019 as follows:
RESPONSE TO OPPOSERS INTERROGATORIES
INTERROGATORY NO. 1: Describe in detail the facts and circumstances concerning your conception, creation, selection, and adoption of the Challenged Marks.
ANSWER: BLACKTAIL was inspired by "Aeromarine" which was one of the first
aviation organizations established during the early years of flight and shuttled adventure-seeking,
Latin, Irish, and American bartending talent to Cuba during prohibition years.
The first location of the Applicant’s BLACKTAIL cocktail lounges was located on "Pier
A" in downtown Manhattan, the precise location where the Aeromarine planes used to took off.
"The nickname/BackTail-came about through Harry Bruno, the company's resident promotional
genius. It was he who suggested the tailfins of Aeromarine's meagre fleet be painted black-so
they would be instantly recognisable from the ground".
1
INTERROGATORY NO. 2: Identify all persons who participated in or were or are responsible for the conception, creation, selection, or adoption of any Challenged Marks.
ANSWER: Paul Lamas.
INTERROGATORY NO. 3: Identify each trademark search, investigation, or any other inquiry conducted by or for Applicant concerning the availability to use or register the Challenged Marks.
ANSWER: Objection Privileged. By way of Privilege Log Applicant advises that a search report and opinion was provided in a Memo from The Bostany Law Firm PLLC to the client dated April 12, 2016. The Memo is attorney work product, attorney client privileged and confidential.
INTERROGATORY NO. 4: Identify each person involved in the review of any trademark search, investigation, or other inquiry conducted by or for Applicant concerning the availability to use or register the Challenged Marks.
ANSWER: Samantha Sannazzarro, John P. Bostany and Samantha B. Welborne
INTERROGATORY NO. 5: Identify by jurisdiction and registration or serial number any and all federal and state trademark registration(s) and application(s), whether current (including pending) or dead, for the Challenged Marks or any mark that resembles or incorporates the Challenged Marks in whole or in part.
ANSWER: None.
INTERROGATORY NO. 6: Identify all goods and services that Applicant has offered for sale, sold, or provided, or intends to offer for sale, sell, or provide under or in connection with the Challenged Marks in the United States.
ANSWER: None.
INTERROGATORY NO. 7: For each good or service that you have offered, sold, or provided, or intend to offer for sale, sell, or provide under or in connection with the Challenged Marks, state the date ranges of actual and planned use of the Challenged Marks in connection with the good or service, including the specific date of first use or intended first use of the mark for each good or service.
ANSWER: See response to Interrogatory No. 6.
-11- INTERROGATORY NO. 8: For each good or service that you have offered, sold, or provided, or intend to offer, sell, or provide under or in connection with the Challenged Marks, state the suggested or expected retail price of the good or service.
ANSWER: See response to Interrogatory No. 6.
INTERROGATORY NO. 9: Describe the nature of any advertisements, promotional materials, and marketing materials (for example, newspaper advertisements, magazine advertisements, internet websites, television commercials, brochures), including by identifying the specific media (for example, The New York Times, Time magazine, Google.com, CBS Network television) in which Applicant is using, has used, or plans to use the Challenged Marks.
ANSWER: None.
INTERROGATORY NO. 10: Identify all persons who participated in or were or are responsible for the marketing or advertising of any goods or services offered for sale, sold, or intended to be offered for sale or sold by or for Applicant under or in connection with the Challenged Marks.
ANSWER: See response to Interrogatory No. 9.
INTERROGATORY NO. 11: Identify all website(s) displaying the Challenged Marks that are owned, operated, or controlled by Applicant, and all persons who participated in or were or are responsible for the creation and development of each website.
ANSWER: See response to Interrogatory No. 9.
INTERROGATORY NO. 12: Describe all market research conducted by or on behalf of Applicant concerning the Challenged Marks or any goods or services marketed or proposed to be marketed under the Challenged Marks, including the results of such research.
ANSWER: Applicant interviewed customers at Applicant’s Blacktail bar/lounge
INTERROGATORY NO. 13: Describe all channels of trade in the United States through which Applicant has offered for sale, sold, or intends to offer for sale or sell goods or services under or in connection with the Challenged Marks.
ANSWER: None.
INTERROGATORY NO. 14: Describe all classes and/or types of customers (for example, age, gender, socioeconomic group) that comprise the intended market for goods or services offered for sale, sold, or intended to be offered for sale or sold under or in connection with the Challenged Marks.
ANSWER: Applicant does not have this information.
-11- INTERROGATORY NO. 15: Identify the geographic regions in the United States in which Applicant has or has caused to be advertised, promoted, marketed, displayed, distributed, offered for sale, or sold, or plans or intends to advertise, promote, market, display, distribute, offer for sale, or sell, either directly or through others, any goods or services under or in connection with the Challenged Marks.
ANSWER: See response to Interrogatory No. 9.
INTERROGATORY NO. 16: Identify by name and location all trade shows in the United States where goods or services under the Challenged Marks have been displayed, promoted, or sold. ANSWER: See response to Interrogatory No. 9.
INTERROGATORY NO. 17: Identify and describe all expenditures incurred by you in connection with the development, production, distribution, promotion, advertisement, and sale of any goods or services under the Challenged Marks, including by identifying the nature and amount of each expenditure.
ANSWER: See response to Interrogatory No. 9.
INTERROGATORY NO. 18: Describe the date and circumstances of Applicant first becoming aware of Opposer's use and registration of Opposer's Marks.
ANSWER: The date of the Opposition Proceeding.
INTERROGATORY NO. 19: Identify all surveys conducted by or on behalf of Applicant concerning the Challenged Marks or any other mark that incorporates the Challenged Marks in whole or in part, by date, title, the entity conducting the survey, and the person requesting the survey. ANSWER: None.
INTERROGATORY NO. 20: Identify all agreements concerning the Challenged Marks by date, parties to the agreement, and the subject matter of the agreement.
ANSWER: None.
INTERROGATORY NO. 21: Describe in detail any communications between Applicant and any third party concerning Opposer or Opposer's Marks, and any actions taken by Applicant as a result of such communications.
ANSWER: None.
INTERROGATORY NO. 22: Describe in detail any communications between Applicant and Opposer.
ANSWER: None other than from counsel after the Opposition Proceeding was filed. -11-
INTERROGATORY NO. 23: Describe each and every instance of which Applicant is aware in which any person has been in any way confused, mistaken, or deceived as to the origin, association, or sponsorship of any goods or services sold or offered for sale under or in connection with the Challenged Marks.
ANSWER: None.
INTERROGATORY NO. 24: Identify all marks and names of which Applicant is aware that include the term "TAIL" and are used or registered by third parties in connection with beer; beer, ale, lager, stout, porter, shandy; aerated water; club soda; Fruit juices; Ginger beer; Lemon juice for use in the preparation of beverages; Lime juice for use in the preparation of beverages; Mineral water; Non-alcoholic beer; Seltzer water; Soft drinks, namely sodas; Sparkling water, Spring water; Still water; Sweet cider; Alcoholic beverages except beers; Alcoholic cocktail mixes; Alcoholic punch; Gin; Rum; Vodka; Whiskey; Flavored liquors.
ANSWER: None. INTERROGATORY NO. 25: Identify all marks and names of which Applicant is aware that are used or registered by third parties in connection with beer; beer, ale, lager, stout, porter, shandy; aerated water; club soda; Fruit juices; Ginger beer; Lemon juice for use in the preparation of beverages; Lime juice for use in the preparation of beverages; Mineral water; Non- alcoholic beer; Seltzer water; Soft drinks, namely sodas; Sparkling water, Spring water; Still water; Sweet cider; Alcoholic beverages except beers; Alcoholic cocktail mixes; Alcoholic punch; Gin; Rum; Vodka; Whiskey; Flavored liquors that highlight black packaging and color coordinated labeling and the placement and combination of the color black as shown in paragraph 16 of the Notice of Opposition.
ANSWER: None
INTERROGATORY NO. 26: Describe all facts that would support a contention that Applicant owns any rights in the Challenged Marks.
ANSWER: Applicant invented the mark BLACKTAIL, and is permitted to expand into related products.
INTERROGATORY NO. 27: State whether the category/class "Alcoholic beverages except beers" as identified in challenged trademark application 87,720,013 includes wine.
ANSWER: No and Applicant is willing to enter into a Stipulation that it will not apply for wine if that resolves the matter.
INTERROGATORY NO. 28: Describe all facts and circumstances that support the contention in Paragraph 12 of Applicant's Counterclaims that "[t]he relevant purchasing public do not associate the color black on the top of wine bottles with Opposer."
ANSWER: The color black is common on the top of red wine bottles. This answer will be amplified by an expert.
-11- INTERROGATORY NO. 29: Describe all facts and circumstances that support the contention in Paragraph 13 of Applicant's Counterclaims that "[t]he color black is associated with wine."
ANSWER: The color black is common on the top of red wine bottles. This answer will be amplified by an expert.
INTERROGATORY NO. 30: Describe all facts and circumstances that support the contention in Paragraph 14 of Applicant's Counterclaims that "[t]he placement of the color black on top and front of a wine bottle is not a distinguishing characteristic."
ANSWER: The color black is common on the top and front of red wine bottles. This answer will be amplified by an expert.
INTERROGATORY NO. 31: Describe all facts and circumstances that support the contention in Paragraph 15 of Applicant's Counterclaims that "[t]he color black refers to the genus or class of wine and not a particular brand of wine."
ANSWER: The color black is common on red wine. This answer will be amplified by an expert.
INTERROGATORY NO. 32: Describe all facts and circumstances that support the contention in Paragraph 17 of Applicant's Counterclaims that "[t]he general public understands a black bottle of wine to denote red wine."
ANSWER: The color black is common on red wine. This answer will be amplified by an expert.
INTERROGATORY NO. 33: Describe all facts and circumstances that support the contention in Paragraph 18 of Applicant's Counterclaims that "[t]he color black is functional as to wine."
ANSWER: The color black is common on red wine and functions to identify red wine. This answer will be amplified by an expert.
INTERROGATORY NO. 34: Describe all facts and circumstances that support the contention in Paragraph 21 of Applicant's Counterclaims that "[t]he placement of the color black on top and front of a wine bottle is generic use of the color black."
ANSWER: See response to Interrogatories No. 32 and 33.
INTERROGATORY NO. 35: Describe all facts and circumstances that support the contention in Paragraph 25 of Applicant's Counterclaims that "[t]here is no acquired distinctiveness between the color black and the Opposer with respect to wine."
ANSWER: See response to Interrogatories No. 28 and 33.
-11- INTERROGATORY NO. 36: Describe all facts and circumstances that support the contentions in Paragraphs 26-30 of Applicant's Counterclaims.
ANSWER: See response to Interrogatories No. 28 through 33.
INTERROGATORY NO. 37: Describe all facts and circumstances that support the contentions in Paragraphs 31-33 of Applicant's Counterclaims.
ANSWER: See response to Interrogatories No. 28 through 33.
INTERROGATORY NO. 38: Identify and describe all administrative proceedings and litigation involving the Challenged Marks or any allegation that Applicant violated the trademark rights of any third party, other than this proceeding.
ANSWER: None.
INTERROGATORY NO. 39: Identify all persons that furnished information for the responses to these interrogatories, designating the number of each interrogatory for which such persons furnished information.
ANSWER: Paul Lamas for all except for #s 3 and 4.
Dated: August 28, 2020
THE BOSTANY LAW FIRM, PLLC
/SBW/ Samantha B. Welborne Attorneys for APPLICANT 3 World Financial Center, 24th Floor New York, New York 10281 (212) 530-4400 [email protected]
-11-
VERIFICATION
Paul Lamas, hereby declares, under penalty of perjury pursuant to 28 U.S.C. § 1746, as follows:
1. I am a member of the Applicant herein.
2. I have read the foregoing answers which are true to my knowledge, information and
belief.
Dated: August 28, 2020
/PTL/ Paul Lamas
-11-
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ------x CASELLA WINES PTY LIMITED,
Opposer – Counterclaim-Respondent, Opposition No. 91241468
- against – AMENDED RESPONSE TO OPPOSER’S REQUESTS FOR ADMISSION
PIER A BATTERY PARK ASSOCIATES, LLC,
Applicant - Counterclaimant. ------x
Pursuant to Rules 26 and 36 of the Federal Rules of Civil Procedure (as incorporated into the
Trademark Rules of Practice pursuant to 37 C.F.R. §§ 2.116 and 2.120), PIER A BATTERY PARK
ASSOCIATES, LLC hereby serves responses to Opposer’s First Request for Admissions:
RESPONSES
DOCUMENT REQUEST NO. 1 Denied.
DOCUMENT REQUEST NO. 2 Denied.
DOCUMENT REQUEST NO. 3 Admitted.
DOCUMENT REQUEST NO. 4 Denied.
DOCUMENT REQUEST NO. 5 Denied.
DOCUMENT REQUEST NO. 6 Denied.
DOCUMENT REQUEST NO. 7: Admitted.
DOCUMENT REQUEST NO. 8 Admitted.
DOCUMENT REQUEST NO. 9 Admitted.
DOCUMENT REQUEST NO. 10 Denied.
DOCUMENT REQUEST NO. 11 Denied.
DOCUMENT REQUEST NO. 12 Denied. DOCUMENT REQUEST NO. 13 Denied.
DOCUMENT REQUEST NO. 14 Denied.
DOCUMENT REQUEST NO. 15 Denied.
DOCUMENT REQUEST NO. 16 Denied.
DOCUMENT REQUEST NO. 17 Denied.
DOCUMENT REQUEST NO. 18 Denied.
DOCUMENT REQUEST NO. 19 Admitted.
DOCUMENT REQUEST NO. 20 Denied.
DOCUMENT REQUEST NO. 21 Denied except admit that any alcoholic beverages would be marketed only to those of legal age.
DOCUMENT REQUEST NO. 22 Denied.
DOCUMENT REQUEST NO. 23 Denied.
DOCUMENT REQUEST NO. 24 Denied.
DOCUMENT REQUEST NO. 25 Denied.
DOCUMENT REQUEST NO. 26 Denied.
DOCUMENT REQUEST NO. 27 Admitted.
DOCUMENT REQUEST NO. 28 Denied.
DOCUMENT REQUEST NO. 29 Denied.
DOCUMENT REQUEST NO. 30 Admitted.
DOCUMENT REQUEST NO. 31 Denied.
DOCUMENT REQUEST NO. 32 Denied.
Dated: August 28, 2020
THE BOSTANY LAW FIRM, PLLC /SBW/ Samantha B. Welborne Attorneys for APPLICANT 3 World Financial Center, 24th Floor New York, New York 10281 (212) 530-4400 [email protected]
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK TRIAL AND APPEAL BOARD In the matter of Trademark Application Serial Nos. 87/612,152 and 87/720,013 Published: January 30, 2018 and May 1, 2018, respectively. Mark: BLACKTAIL CASELLA WINES PTY LIMITED,
Petitioner, Opposition No. 91241468 v.
PIER A BATTERY PARK ASSOCIATES, LLC
Applicant.
CASELLA’S OBJECTIONS AND RESPONSES TO PIER A’S FOURTH SET OF INTERROGATORIES
Pursuant to Trademark Rule of Practice 2.120 and Fed. R. Civ. P. 26 and 34, Casella
Wines Pty Limited (“Casella” or “Opposer”), by and through its undersigned counsel, hereby
serves its Objections and Responses to Pier A Battery Park Associates, LLC’s (“Pier A” or
“Applicant”) Fourth Set of Interrogatories.
GENERAL OBJECTIONS
The Objections set forth in this section apply to the Interrogatories and to the Definitions,
Instructions, and the individual Interrogatories set forth therein. Unless otherwise stated, these
General Objections shall have the same force and effect as if set forth in full in response to each
Definition, Instruction, and Interrogatory. Any undertaking to search for, or provide information in response to, any Interrogatory is made subject to these General Objections.
1. Casella objects to the Interrogatories, including the Definitions and Instructions set forth therein, to the extent that they seek to impose burdens or obligations on Casella that are
broader than, inconsistent with, or not authorized under the Federal Rules of Civil Procedure, the
Trademark Rules of Practice, other applicable rules or laws, or any order entered by the Court in, or applicable to, this proceeding (the “Applicable Rules”). Subject to and without waiving any
Objections, in responding to the Interrogatories, Casella will construe the Interrogatories in accordance with the Applicable Rules.
2. Casella objects to the Interrogatories, including the Definitions and Instructions set forth therein, to the extent that they request disclosure of information that comes within the scope of the attorney-client privilege, the work-product doctrine, the common interest or joint defense privilege, or any other applicable privilege or immunity. Casella hereby claims such privileges and protections to the extent implicated by the Interrogatories and excludes privileged or protected information from its Responses to the Interrogatories. Any disclosure of any such privileged or protected information in response to the Interrogatories is inadvertent and not intended to waive those privileges and protections.
3. Casella objects to the Interrogatories, including the Definitions and Instructions set forth therein, to the extent that they purport to require Casella to conduct anything beyond a reasonable and diligent search where responsive information reasonably would be expected to be found (including electronic sources), and to the extent that the Interrogatories purport to require
Casella to exceed its obligations under the Applicable Rules.
4. Casella objects to the Interrogatories, including the Definitions and Instructions set forth therein, to the extent that they are vague, ambiguous, overly broad, unduly burdensome, lacking in particularity, unreasonable, or seek the discovery of information that is neither relevant to the claims or defenses of any party to this Action nor reasonably calculated to lead to the discovery of admissible evidence, as well as to the extent that they are unduly burdensome or
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disproportionate to the needs of the case because they impose a significant expense and
inconvenience on Casella. Casella’s Responses are based upon (i) a reasonable search and
investigation of facilities and files that could reasonably be expected to contain responsive
information; and (ii) inquiries of Casella’s employees and/or representatives who could
reasonably be expected to possess responsive information.
5. Casella objects to the Interrogatories, including the Definitions and Instructions set forth therein, to the extent that they purport to require Casella to draw subjective or legal conclusions, or are predicated on subjective or legal conclusions or arguments, or call for expert
testimony. Subject to and without waiving any objections, Casella states that any response,
production of documents, or provision of information in response to the Interrogatories is not
intended to provide, and shall not constitute or be construed as providing, an admission
concerning any of the terms used in the Interrogatories.
6. Casella objects to the Interrogatories, including the Definitions and Instructions
set forth therein, to the extent that the Interrogatories, Definitions or Instructions contain
inaccurate, incomplete, or misleading descriptions of the facts, persons, relationships, and/or
events underlying this proceeding. Casella further objects to the Interrogatories, including the
Definitions and Instructions set forth therein, to the extent that they assume the existence of facts
that do not exist or the occurrence of events that did not take place. Any response, production of
documents, or provision of information in response to the Interrogatories is not intended to
provide, and shall not constitute or be construed as providing, an admission that any factual
predicates stated in the Interrogatories are accurate.
7. Casella objects to the Interrogatories, including the Definitions and Instructions
set forth therein, to the extent that the Interrogatories call for the disclosure of Casella’s, its
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customers’, its licensees’, its counterparties’, or other third parties’ confidential, proprietary,
trade secret, and/or commercially sensitive information. The provision of such information is or
will be made pursuant to the Protective Order issued by TTAB. Where necessary, Casella will
endeavor to work with third parties to obtain their consent before identifying or producing such
information and/or documents.
8. Casella objects to the Interrogatories, including the Definitions and Instructions
set forth therein, to the extent that they seek information that is cumulative, duplicative, already in the Applicant’s possession, or equally obtainable from public sources or from some other source or through some other means of discovery that is more convenient, less burdensome, or less expensive.
9. Casella objects to the Interrogatories, including the Definitions and Instructions set forth therein, to the extent that they seek information that is not in Casella’s possession, custody, or control, or is equally available and/or in the possession, custody, or control of Pier A or any third person or entity.
10. Casella objects to the Interrogatories to the extent they seek to compel Casella to generate or create information and/or documents that do not already exist.
DEFINITIONS
1. Casella objects to the definition at paragraph 1, defining the terms “You” and
“Your” as vague, overbroad and, as used in the Interrogatories, calling for materials not relevant
to claims or defenses of the parties or not in the possession, custody or control of Casella, to the
extent that they encompass “past and present affiliates, subsidiaries, officers, directors,
employees, partners, agents, assigns, corporate parents, representatives and any other person acting on its behalf or under its control,” which are not parties to and are irrelevant to this
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proceeding. Casella further objects to the extent that it purports to require Casella to seek
information from thousands of people. Unless otherwise stated, Casella will interpret “You” and
“Your” to include only Casella Family Wines Pty. Limited.
2. Casella objects to the definition at paragraph 3, defining the term “Applicant’s
JUICES Mark” as vague and confusing to the extent that it is inconsistent with the goods and services claimed in U.S. Application Serial No. 87/612,512.
3. Casella objects to the definition at paragraph 4, defining the term “Applicant’s
ALCOHOL Mark” as vague and confusing to the extent that it is inconsistent with the goods and services claimed in U.S. Application Serial No. 87/720,013.
4. Casella objects to the definition at paragraph 5, of the terms “document” and
“documents” as overly broad, unduly burdensome, vague and ambiguous to the extent it includes materials “of any kind . . . whether or not they are . . . within [Casella]’s possession, custody, or control.” Casella further objects to the definition to the extent that it includes privileged material and explicitly calls for the production of documents “whether or not [they are] privileged.”
Unless otherwise stated, Casella will interpret “document” and “documents” to include non- privileged materials within its possession, custody, and control.
5. Casella objects to the definition at paragraph 6, of the terms “thing” or “things” as overly broad, unduly burdensome, vague and ambiguous to the extent it includes “any tangible thing or object other than a document, . . . whether or not it is . . . within [Casella]’s possession, custody or control.” Casella further objects to the definition to the extent that it includes
privileged material and explicitly calls for the production of things “whether or not [they are]
privileged.” Unless otherwise stated, Casella will interpret “thing” and “things” to include non-
privileged tangible items and objects within its possession, custody, and control.
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6. Casella objects to Pier A’s definition, at paragraph no. 7, of the terms “Person” or
“Persons” as overly broad, unduly burdensome, vague, and ambiguous to the extent it purports
not to be limited to the words in the definition and to the extent it includes any “any other
business entities.” Unless otherwise stated, Casella will interpret “Person” or “Persons” to include natural persons and legal entities.
7. Casella objects to the definitions in paragraphs 8-10 of “identify” as overly broad and unduly burdensome because they purport to impose requirements and obligations on Casella other than as set forth in the Applicable Rules.
8. Casella objects to the definition in paragraph 11 of the term “communication” as overly broad, unduly burdensome, vague and ambiguous. Casella further objects to the definition of “communication” to the extent that it includes privileged material. Unless otherwise stated, Casella will interpret “communication” to include non-privileged transmissions or messages within its possession, custody, or control.
9. Casella objects to the definition at paragraph 12, defining the terms “Refer, concerning or relate to” as vague, overbroad and, as used in the Interrogatories, calling for materials not relevant to a claim or defenses of the parties. Casella further objects to this definition to the extent that it purports to impose obligations greater than those applicable under the Applicable Rules and that are unduly burdensome and not proportional to the needs of the case.
INSTRUCTIONS
10. Casella objects to the Instructions provided to the extent that they impose
obligations greater than those created by the Applicable Rules. To the extent that the
Interrogatories do, in fact, contain subparts, Casella notes that each subpart constitutes an
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individual interrogatory. See TMBP § 405.03(d).
OBJECTIONS AND RESPONSES TO INTERROGATORIES
INTERROGATORY NO. 45
Set forth Your alleged uses in commerce of products containing the ALCOHOL mark in the years between 2015 and 2020 explaining for each the manner and location of each alleged use in commerce.
Objections and Response to Interrogatory No. 45:
Casella incorporates its General Objections herein. Casella objects to Interrogatory No.
45 on the grounds that it is overly burdensome, disproportionate to the needs of the case, and
seeks information that is not relevant to the claims of defenses of either party. Casella further
objects to this Interrogatory as vague and ambiguous, as Applicant has set forth two definitions
which include the title “ALCOHOL Mark” and the text of the Interrogatory does not specify
whether the definition “Your ALCOHOL Mark” or “Applicant’s ALCOHOL Mark” is to apply.
To the extent that the Interrogatory requests information regarding “Applicant’s ALCOHOL
Mark,” Casella does not have in its possession, custody, or control sufficient information to respond to the Interrogatory. To the extent that the Interrogatory requests information regarding what has been defined as “Your ALCOHOL Mark,” and subject to and without waiving the foregoing General and Specific Objections, Casella responds as follows:
Casella has used Registration 4442430 in connection with sales of its beer products in the
United States. Casella refers Pier A to the following article, which provides information regarding Casella’s entry into the United States beer market: https://vinepair.com/booze-
news/yellow-tail-beer-selling-beer-in-america/. Casella reserves the right to supplement its
response to this Interrogatory.
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INTERROGATORY NO. 46
Identify the persons that witnessed each of Your alleged uses in commerce set forth in Your response to Interrogatory No. 45.
Objections and Response to Interrogatory No. 46:
Casella incorporates its General Objections herein. Casella objects to Interrogatory No.
46 on the grounds that it is overly burdensome, disproportionate to the needs of the case, and
seeks information that is not relevant to the claims of defenses of either party. Casella further
objects to this Interrogatory as it requests information that is not within Casella’s possession,
custody, or control; Casella cannot reasonably know the identity of each and every person who
“witnessed” use of Registration No. 4442430 in commerce.
Subject to and without waiving its General and Specific Objections, Casella responds as follows: Casella agrees to meet and confer with Applicant regarding the proper scope of this
Interrogatory. Casella reserves the right to supplement its response to this Interrogatory.
INTERROGATORY NO. 47
Identify the persons that decided not to renew the ALCOHOL Mark.
Objections and Response to Interrogatory No. 47:
Casella incorporates its General Objections herein. Casella objects to Interrogatory No.
47 on the grounds that it is overly burdensome, disproportionate to the needs of the case, and
seeks information that is not relevant to the claims of defenses of either party. Casella further
objects to this Interrogatory to the extent that it requests information protected by the attorney-
client or work product privileges. Casella further objects to this Interrogatory as vague and
ambiguous, as Applicant has set forth two definitions which include the title “ALCOHOL Mark”
and the text of the Interrogatory does not specify whether the definition “Your ALCOHOL
Mark” or “Applicant’s ALCOHOL Mark” is to apply. To the extent that the Interrogatory
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requests information regarding “Applicant’s ALCOHOL Mark,” Casella does not have in its
possession, custody or control sufficient information to respond to the Interrogatory. To the
extent that the Interrogatory requests information regarding what has been defined as “Your
ALCOHOL Mark,” and subject to and without waiving the foregoing General and Specific
Objections, Casella responds as follows:
Julian Raccanello and Casella’s counsel made the decision not to renew U.S. Registration
No. 4442430. The content of the discussions between Casella and its counsel are confidential,
privileged communications. Casella reserves the right to supplement its response to this
Interrogatory.
INTERROGATORY NO. 48
Identify the persons that determined that Your failure to use the ALCOHOL Mark was due at least in part to the COVID-19 pandemic.
Objections and Response to Interrogatory No. 48:
Casella incorporates its General Objections herein. Casella objects to Interrogatory No.
48 on the grounds that it is overly burdensome, disproportionate to the needs of the case, and
seeks information that is not relevant to the claims of defenses of either party. Casella further
objects to this Interrogatory as vague and ambiguous, as Applicant has set forth two definitions
which include the title “ALCOHOL Mark” and the text of the Interrogatory does not specify
whether the definition “Your ALCOHOL Mark” or “Applicant’s ALCOHOL Mark” is to apply.
To the extent that the Interrogatory requests information regarding what has been defined as
“Applicant’s ALCOHOL Mark,” Casella does not have in its possession, custody or control sufficient information to respond to the Interrogatory. To the extent that the Interrogatory
requests information regarding what has been defined as “Your ALCOHOL Mark,” and subject
to and without waiving the foregoing General and Specific Objections, Casella responds as
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follows:
The circumstances surrounding Casella’s decision not to renew U.S. Registration No.
4442430 largely concern confidential communications between Julian Raccanello and counsel,
which are protected by the attorney-client privilege. The existence of the COVID-19 pandemic
and its impact on the service, bar, and restaurant industries are well-known and these circumstances were not a “decision” made by any individual. Casella reserves the right to supplement its response to this Interrogatory.
INTERROGATORY NO. 49
Explain all of Your plans to start use or continue use of the ALCOHOL Mark at any time between 2016 and the current date, including the dates of each such plan and the persons that had personal knowledge of each said plan.
Objections and Response to Interrogatory No. 49:
Casella incorporates its General Objections herein. Casella objects to Interrogatory No.
49 on the grounds that it is overly burdensome, disproportionate to the needs of the case, and
seeks information that is not relevant to the claims of defenses of either party. Casella further
objects to this Interrogatory as vague and ambiguous, as Applicant has set forth two definitions
which include the title “ALCOHOL Mark” and the text of the Interrogatory does not specify
whether the definition “Your ALCOHOL Mark” or “Applicant’s ALCOHOL Mark” is to apply.
To the extent that the Interrogatory requests information regarding “Applicant’s ALCOHOL
Mark,” Casella does not have in its possession, custody or control sufficient information to respond to the Interrogatory. To the extent that the Interrogatory requests information regarding what has been defined as “Your ALCOHOL Mark,” and subject to and without waiving the foregoing General and Specific Objections, Casella responds as follows:
Beginning in or before February 2016, Casella used the mark reflected in U.S.
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Registration No. 4442430 in commerce. Namely, Casella used the mark in connection with its
sale of beer products. For commercial reasons, Casella discontinued sales of its beer in the
United States in or about 2017. Casella at all times maintained an intent to resume sales of its beer products as soon as commercially possible. Casella built a state-of-the-art high capacity brewery to manufacture beer products, which would be sold under the YELLOW TAIL mark reflected in U.S. Registration No. 4442430. In 2019 and early 2020, Casella initiated discussions with a national food and beverage provider for the sale and distribution of Casella’s YELLOW
TAIL beer products throughout the United States. Casella has also maintained a large supply of
US standard beer kegs manufactured specifically for use in the United States. Casella has also filed an intent to use application as U.S. Application Serial No. 88925339 for YELLOW TAIL to be used in connection with beer products.
Casella reserves the right to supplement its response to this Interrogatory.
INTERROGATORY NO. 50
State whether the products contained in Your ALCOHOL Mark are similar to the products contained in Applicant’s JUICES Mark and if so, separately explain the similarities of Your ALCOHOL mark with respect to each product contained in Applicant’s JUICES Mark.
Objections and Response to Interrogatory No. 50:
Casella incorporates its General Objections herein. Casella objects to Interrogatory No.
50 on the grounds that it is overly burdensome, disproportionate to the needs of the case, and
seeks information that is not relevant to the claims or defenses of either party. Casella further
objects to this interrogatory to the extent that it seeks a legal conclusion regarding likelihood of
confusion. Casella further objects to this Interrogatory to the extent that it ignores the fact that
Casella has asserted multiple trademarks in this Opposition—U.S. Registration No. 4442430 being only one of those registrations. Subject to and without waiving the foregoing General and
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Specific Objections, Casella responds as follows:
Despite Applicant’s efforts to classify its Application Serial No. 87612152 as covering
“juices,” Application Serial No. 87612152 claims, in International Class 32, “Beer; Beer, ale, lager, stout, porter, shandy; Aerated water; Club soda; Fruit juices; Ginger beer; Lemon juice for
use in the preparation of beverages; Lime juice for use in the preparation of beverages; Mineral
water; Non-alcoholic beer; Seltzer water; Soft drinks, namely, sodas; Sparkling water; Spring
water; Still water; Sweet cider.” See U.S. Application Serial No. 87612152. Casella’s
Registration No. 4442430, which is defined in the Interrogatories as “Your ALCOHOL Mark,”
claims the following goods in International Class 32: “Beers; ale; lager; porter; stout; fruit ales
and beers; non-alcoholic cider; nonalcoholic, low alcohol and de-alcoholised beer; ginger beer.”
The goods and services claimed in Applicant’s application and in Casella’s registration are largely identical. Like Casella, Applicant claims in connection with U.S. Application Serial No.
87612152 beer, ale, lager, porter, and stout; and non-alcoholic beverages like Casella’s nonalcoholic beer, low alcohol beer, de-alcoholized beer, and ginger beer. The goods and services claimed in Applicant’s Application Serial No. 87612152 are therefore objectively
similar—and largely identical—to those claimed in U.S. Registration No. 4442430. Casella
reserves the right to supplement its response to this Interrogatory.
INTERROGATORY NO. 51
State whether the products contained in Your ALCOHOL Mark are similar to the products contained in Applicant’s ALCOHOL Mark and if so, separately explain the similarities of Your ALCOHOL mark with respect to each product contained in Applicant’s ALCOHOL Mark.
Objections and Response to Interrogatory No. 51:
Casella incorporates its General Objections herein. Casella objects to Interrogatory No.
51 on the grounds that it is overly burdensome, disproportionate to the needs of the case, and
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seeks information that is not relevant to the claims or defenses of either party. Casella further
objects to this interrogatory to the extent that it seeks a legal conclusion regarding likelihood of
confusion. Casella further objects to this Interrogatory to the extent that it ignores the fact that
Casella has asserted multiple trademarks in this Opposition—U.S. Registration No. 4442430 being only one of those registrations. Subject to and without waiving the foregoing General and
Specific Objections, Casella responds as follows:
The application defined in the Interrogatories as “Applicant’s ALCOHOL Mark” claims, in International Class 33, “Alcoholic beverages except beers; Alcoholic cocktail mixes;
Alcoholic punch; Gin; Rum; Vodka; Whiskey; Flavored liquors.” These goods and services are highly similar to those identified in Casella’s Registration No. 4442430, and to the goods and services claimed in Casella’s other asserted trademarks. It has been established that various alcoholic beverages are considered to be related goods for purposes of a likelihood of confusion analysis. E.g., In re Sugarlands Distilling Co., LLC, 2015 WL 7772696, at *4 n.12 (TTAB Nov.
20, 2015). Thus, even if the goods and services cited in the Application are not identical to those
cited in Casella’s asserted registrations, they are closely related liquor and spirits products.
Casella reserves the right to supplement its response to this Interrogatory.
INTERROGATORY NO. 52
Set forth the date that Your ALCOHOL Mark was last used in commerce, where it was last used in commerce, and how it was last used in commerce.
Objections and Response to Interrogatory No. 52:
Casella incorporates its General Objections herein. Casella objects to Interrogatory No.
52 on the grounds that it is overly burdensome, disproportionate to the needs of the case, and
seeks information that is not relevant to the claims or defenses of either party. Casella objects to
Interrogatory No. 52 on the grounds that it is vague and ambiguous; namely, it is not clear what
-13- information is sought by Applicant’s request for “when,” “where,” and “how” U.S. Registration
No. 4442430 was last used in commerce. Casella further objects to this Interrogatory to the extent that it seeks a legal conclusion. Casella further objects to this Interrogatory to the extent that it requests information protected by the attorney-client privilege. Subject to and without waiving the foregoing General and Specific Objections, Casella responds as follows:
Casella last sold goods as claimed in U.S. Registration No. 4442430 in or about 2017, when it used the mark in connection with the sale of beer products. Casella last produced beer in late 2016 but sales of Casella’s beer products continued until United States inventory was exhausted. Casella then maintained good faith intent to resume use of U.S. Registration No.
4442430 in commerce. Casella reserves the right to supplement its response to this
Interrogatory.
INTERROGATORY NO. 53
Separately set forth on an annual basis, the total revenue you realized on sales of products bearing or sold in connection with Your ALCOHOL mark for each year from 2015 to date.
Objections and Response to Interrogatory No. 53:
Casella incorporates its General Objections herein. Casella objects to Interrogatory No.
53 on the grounds that it is overly burdensome, disproportionate to the needs of the case, and seeks information that is not relevant to the claims or defenses of either party. Casella further objects to this Interrogatory to the extent that it requests information that is not within Casella’s possession, custody, or control or requests that Casella create documents or records that do not exist in the ordinary course of business. Subject to and without waiving the foregoing General and Specific Objections, Casella responds as follows:
Casella does not maintain, in the ordinary course of business, sales figures separated out by product. Casella therefore does not have records of revenue and sales of beer products sold in
-14- connection with U.S. Registration No. 4442430. Casella is not obligated to create such figures for purposes of this litigation, as doing so would be unduly burdensome. Casella reserves the right to supplement its response to this Interrogatory.
INTERROGATORY NO. 54
Amplifying Your response to Interrogatory 53, set forth the specific products You sold for each of the years.
Objections and Response to Interrogatory No. 54:
Casella incorporates its General Objections herein. Casella objects to Interrogatory No.
54 on the grounds that it is overly burdensome, disproportionate to the needs of the case, and seeks information that is not relevant to the claims or defenses of either party. Casella further objects to this Interrogatory to the extent that it requests information that is not within Casella’s possession, custody, or control or requests that Casella create documents or records that do not exist in the ordinary course of business. Subject to and without waiving the foregoing General and Specific Objections, Casella responds as follows:
Casella does not maintain, in the ordinary course of business, sales figures separated out by product. Casella therefore does not have records of revenue and sales of beer products sold in connection with U.S. Registration No. 4442430. Casella is not obligated to create such figures for purposes of this litigation, as doing so would be unduly burdensome. Casella reserves the right to supplement its response to this Interrogatory.
INTERROGATORY NO. 55
Identify each customer that purchased products from You bearing or sold in connection with the ALCOHOL Mark for the years 2015 to date, indicating the quantity of each purchase, the specific products purchased, the date and identity of each customer making said purchase.
Objections and Response to Interrogatory No. 55:
Casella incorporates its General Objections herein. Casella objects to Interrogatory No.
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55 on the grounds that it is overly burdensome, disproportionate to the needs of the case, and
seeks information that is not relevant to the claims of defenses of either party. Namely, Casella’s
customer lists are sensitive commercial information and have no bearing on any of the claims
and defenses asserted by either party. Casella further objects to this Interrogatory to the extent
that it requests information that is not within Casella’s possession, custody, or control or requests
that Casella create documents or records that do not exist in the ordinary course of business.
Casella further objects to this Interrogatory as vague and ambiguous, as Applicant has set forth two definitions which include the title “ALCOHOL Mark” and the text of the Interrogatory does not specify whether the definition “Your ALCOHOL Mark” or “Applicant’s ALCOHOL
Mark” is to apply. To the extent that the Interrogatory requests information regarding
“Applicant’s ALCOHOL Mark,” Casella does not have in its possession, custody or control sufficient information to respond to the Interrogatory. To the extent that the Interrogatory
requests information regarding what has been defined as “Your ALCOHOL Mark,” and subject
to and without waiving the foregoing General and Specific Objections, Casella responds as
follows:
Casella does not maintain, in the ordinary course of business, sales figures separated out
by product. Casella therefore does not have records of revenue and sales of beer products sold in
connection with U.S. Registration No. 4442430. Casella does not keep detailed customer lists
which display sales by customer and by product. Moreover, any customer lists would be
extremely sensitive commercial information with no relevance to the claims or defenses asserted
in this action. Casella is not obligated to create such figures for purposes of this litigation, as
doing so would be unduly burdensome. Casella reserves the right to supplement its response to
this Interrogatory.
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Dated: March 8, 2021 /Alfred W. Zaher/ Alfred W. Zaher Brianna M. Vinci MONTGOMERY McCRACKEN WALKER & RHOADS LLP 1735 Market Street Philadelphia, Pennsylvania 19103 (215) 772-7234 [email protected]
Counsel for Casella Wines Pty. Limited
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VERIFICATION
I, Julian Raccanello, am Global Customer Support and IP Manager of Casella Family Brands. I am the agent of Casella Wines Pty Limited for purposes of responding to Pier A Battery Park Associates, LLC’s Fourth Set of Interrogatories. I have reviewed the foregoing Interrogatories and the responses thereto, which are true according to the best of my knowledge, information, and belief. I declare under penalty of perjury under the laws of the United States that the foregoing is true and correct.
Dated this 8th day of March, 2020.
/Julian Raccanello/ Julian Raccanello
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CERTIFICATE OF SERVICE
I certify that I caused a true and correct copy of the foregoing document to be served
by electronic mail on counsel for Pier A Battery Park Associates, identified below, in
compliance with the rules of practice before the Trademark Trial and Appeal Board.
John Bostany The Bostany Law Firm PLLC 3 World Financial Center 24th Floor New York, NY 10281 (212) 530-4400 [email protected]
Dated: March 8, 2021 /Brianna M. Vinci/ Brianna M. Vinci
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ------x Casella Wines Pty Limited,
Plaintiff-Opposer, Opposition No. 91241468 - against –
PROOF OF SERVICE Pier A Battery Park Associates, LLC,
Defendant-Applicant. ------x
I hereby certify that on May 16, 2021, I served the Opposition to Motion to Compel with
Exhibits and Cross Motion for Sanctions with Exhibits upon the Attorney of Record for the
Opposer by electronic delivery to:
ALFRED W ZAHER Montgomery, McCracken, Walker & Rhoads, LLP 1735 Market Street Philadelphia, PA 19103 [email protected]
As well as copies to: Vinci, Brianna [email protected]; Bondy, Matthew
Dated: May 16, 2021 Respectfully submitted,
THE BOSTANY LAW FIRM, PLLC
By: /SBW/ Samantha B. Welborne Attorneys for APPLICANT 3 World Financial Center, 24th Floor New York, New York 10281 (212) 530-4400 [email protected]