Estta1042041 03/13/2020 in the United States Patent And

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1042041 Filing date: 03/13/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92068175 Party Defendant Land's End Direct Merchants, Inc. Correspondence NATHAN T HARRIS Address LANDO & ANASTASI LLP 60 STATE STREET, 23RD FLOOR BOSTON, MA 02109 UNITED STATES [email protected], [email protected], emailser- [email protected] 617-395-7013 Submission Defendant's Notice of Reliance Filer's Name Nathan T. Harris Filer's email [email protected] Signature /Nathan T. Harris/ Date 03/13/2020 Attachments L2089-5001 - Lands Ends First Notice of Reliance.pdf(4508248 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Retrobrands USA LLC, Petitioner, Cancellation No. 92068175 v. Registration Nos. 1,394,814 Lands’ End Direct Merchants, Inc., 1,492,716 Registrant. LANDS’ END’S FIRST NOTICE OF RELIANCE Pursuant to 37 C.F.R. § 2.122, Registrant Lands’ End Direct Merchants, Inc. (“Lands’ End”) makes of record and will rely upon the following documents, copies of which are attached hereto. 1a. Lands’ End’s First Set of Requests for Admission (with Exhibits 1-7). 1b. Petitioner Retrobrands USA LLC’s (“Retrobrands”) Amended Responses Nos. 1- 16, and 24-27 to Lands’ End’s First Set of Requests for Admission. These responses are relevant to Retrobrands’ standing in this proceeding, and in particular its lack of a bona fide intent to use its purported WILLIS & GEIGER mark in interstate commerce. 2. Petitioner’s Answers No. 1-5 and 9 to Registrant’s First Set of Interrogatories. These responses are relevant to Retrobrands’ standing in this proceeding, and in particular its lack of a bona fide intent to use its purported WILLIS & GEIGER mark in interstate commerce (Nos. 1-5) and to Lands’ End’s non-abandonment of its WILLIS & GEIGER mark (No. 9). 3. Printouts from the USPTO’s Trademark Status & Document Retrieval (TSDR) database showing the details and status of 25 trademark applications filed on an intent-to-use basis by Retrobrands. These applications are relevant to Retrobrands’ standing in this proceeding, and in particular its lack of a bona fide intent to use its purported WILLIS & GEIGER mark in interstate commerce. 4. Printout from the USPTO’s TSDR database of U.S. Trademark Application No. 78/100,421, which eventually issued as U.S. Trademark Registration No. 2,761,675 (the “’675 Registration”). This application is relevant to Retrobrands’ standing in this proceeding, and in particular its lack of a bona fide intent to use its purported WILLIS & GEIGER mark in interstate commerce. 5. A true and correct copy of the Board’s decision in Warner Bros. Ent. Inc. v. The Kaplan Trust, Cancellation No. 92043813, 2007 WL 8304081 at *4-5 (TTAB Nov. 26, 2007), cancelling the ’675 Registration on the ground of fraud. This decision is relevant to Retrobrands’ standing in this proceeding, and in particular its lack of a bona fide intent to use its purported WILLIS & GEIGER mark in interstate commerce. 6. A Consent Decree entered by the court in in Lands’ End, Inc. et al. v. Connecticut Shotgun Manufacturing Co., Civ. No. 3:09-cv-00278-BBC (W.D. Wisc.) (the “2009 Litigation”), accessed at https://www.pacer.gov. The Consent Decree is relevant to Lands’ End’s non- abandonment of its WILLIS & GEIGER mark. 7. Lands’ End’s Responses Nos. 7-9 and 12-18 to Petitioner’s First Set of Requests for Admissions to Registrant. These responses are relevant to Lands’ End’s non-abandonment of its WILLIS & GEIGER mark, and should in fairness be considered pursuant to 37 C.F.R. § 2.120(k)(5) so as to make not misleading the evidence offered by the inquiring party (Retrobrands), namely, Lands’ End’s Response No. 20 to Petitioner’s First Set of Requests for Admissions to Registrant and Lands’ End’s Response No. 10 to Petitioner’s First Set of Written Interrogatories to Registrant. See Petitioner’s Notice of Reliance on Registrant’s Discovery Responses at Paras. (a), (b). - 2 - Dated: March 13, 2020 Respectfully submitted, Nathan T. Harris John N. Anastasi Ann Lamport Hammitte LANDO & ANASTASI, LLP 60 State Street, 23rd Floor Boston, MA 02109 Tel: (617) 395-7013 Email: [email protected] Attorneys for Registrant - 3 - CERTIFICATE OF SERVICE I certify that the foregoing document was served upon Petitioner Retrobrands USA LLC on March 13, 2020, by emailing a copy thereof to the following correspondence address of record for Petitioner: [email protected] /Nathan T. Harris/ Nathan T. Harris - 4 - Exhibit 1a IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Retrobrands USA LLC, Petitioner, Cancellation No. 92068175 v. Registrations No. 1,394,814 Lands’ End Direct Merchants, Inc., 1,492,716 Registrant. LANDS’ END’S FIRST SET OF REQUESTS FOR ADMISSION Pursuant to Rule 32 of the Federal Rules of Civil Procedure and 37 C.F.R. §2.120(d), Lands’ End Direct Merchants, Inc. (“Lands’ End”) propounds the following Requests for Admission (“Requests”) to Retrobrands USA LLC (“Retrobrands”), to be answered fully and separately, in writing, within thirty (30) days after service of these requests, with all documents and things to be produced at the offices of Lando & Anastasi, LLP, Riverfront Office Park, One Main Street, Eleventh Floor, Cambridge, MA 02142, or at such other place as agreed by counsel. Definitions The Requests are subject to the definitions set forth below: A. The term “WILLIS & GEIGER Registrations” collectively refers to U.S. Trademark Registrations No. 1,394,814 and 1,492,716. B. The term “WILLIS & GEIGER Registered Marks” collectively refers to Lands’ End’s WILLIS & GEIGER (and design) marks identified in the WILLIS & GEIGER Registrations. C. The term “Retrobrands Application” refers to U.S. Trademark Appl. No. 87/574,744. D. The term “Retrobrands WILLIS & GEIGER Mark” refers to Retrobrand’s asserted WILLIS & GEIGER trademark that is the subject of the Retrobrands Application. E. The term “document” is synonymous in meaning and equal in scope to its usage in Federal Rule of Civil Procedure 34(a). A draft or non-identical copy is a separate document within the meaning of this term. Any document bearing any marks, including, without limitation, initials, stamped information, comments or notations not a part of the original text is also a separate document within the meaning of this term. F. The term “person” means any natural person or any business, legal, or governmental entity or association. G. When referring to a person, to “identify” means to give the person’s full name, present or last known address, and, when referring to a natural person, the present or last known place of employment. H. When referring to documents, to “identify” means to give, to the extent known, the (i) type of document; (ii) general subject matter; (iii) date of the document; and (iv) author(s), addressee(s), and recipient(s). I. The term “Lands’ End” as well as the party’s full or abbreviated name or a pronoun referring to a party, means Lands’ End Direct Merchants, Inc. and, where applicable, the company’s officers, directors, employees, agents, affiliates, and predecessors in interest. J. The terms “you,” “your,” and “Retrobrands” as well as the party’s full or abbreviated name or a pronoun referring to a party, means Retrobrands USA - 2 - LLC, and, where applicable, the company’s officers, directors, employees, agents, affiliates, and predecessors in interest. K. The term “concerning” means referring to, describing, evidencing, or constituting. L. The singular shall include the plural and vice versa; the terms “and” and “or” are both conjunctive and disjunctive. Instructions 1. Where a claim of privilege is asserted in objecting to any disclosure, and any information is withheld on the basis of such assertion, specify in log form the nature of the document or disclosure, identify by name, address, title and business affiliation the writer, the addressee, and all recipients thereof, and set forth the general subject matter to which the information relates, and its date. 2. A reason should be stated for any objection. The response to each Request should either specifically admit or deny the matter, or set forth in detail the reason(s) why the matter be be truthfully admitted or denied. A denial should fairly meet the substance of the Request, and when good faith requires, an answer should specify as much of the matter as true and qualify or deny the remainder. 3. A lack of information or knowledge cannot be given as a reason for failure to admit or deny unless the response indicates that reasonable inquiry has been made and that information known or readily obtainable is insufficient to enable admission or denial of the matter. 4. To the extent that any Request is objected to as vague or ambiguous, please identify the particular words, terms, or phrases that are asserted to make such Request vague or - 3 - ambiguous, specify the meaning actually attributed by you to such words, terms, or phrases for purposes of your response, and respond to the Request accordingly. 5. These Interrogatories are continuing and may require supplemental response and production. If any information responsive to any Request is not presently known, identifiable or available, include a statement to that effect and furnish the information when known, identifiable, or available. - 4 - DOCUMENT REQUESTS Request No. 1 Admit that Retrobrands has no documents in its possession, custody, or control evidencing its intent to use the Retrobrands WILLIS & GEIGER Mark on or before August 18, 2017. Request No.

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