Estta1117692 03/02/2021 in the United States

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1117692 Filing date: 03/02/2021

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91252983 Party Plaintiff The Scotch Whiskey Association, Ltd. Correspondence JILLIAN BURSTEIN Address REED SMITH LLP 10 SOUTH WACKER DRIVE, 40TH FLOOR CHICAGO, IL 60606 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected], [email protected] 312-207-1000

Submission Opposition/Response to Motion Filer's Name Jillian L. Burstein Filer's email [email protected] Signature /Jillian L. Burstein/ Date 03/02/2021 Attachments 2021-03-02 GLENCHOD Response in Oppotion to Motion to Com- pel.pdf(150330 bytes ) 2021-03-01 GLENCHOD Response in Oppositon to Motion to Compel_EXHIBIT A.pdf(164464 bytes ) 2021-03-01 GLENCHOD Response in Oppositon to Motion to Compel_EXHIBIT B.pdf(184630 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK TRIAL AND APPEAL BOARD

THE SCOTCH WHISKEY ASSOCIATION, LTD., Opposition No. 91252983

Opposer, Mark: THE GLENCHOD

v. Serial No. 88/347,551

SHYAM KARIA, Filing Date: March 19, 2019

Applicant. Publication Date: August 20, 2019

OPPOSER’S RESPONSE IN OPPOSITION TO APPLICANT’S MOTION TO COMPEL BETTER RESPONSES TO APPLICANT’S INITIAL DISCOVERY REQUESTS

This Opposition concerns Applicant’s admitted lack of a bona fide intention to use the

applied-for trademark at issue here – THE GLENCHOD in International Class 33 for “whiskey;

whiskey spirits” (the “Mark”) – and that registration nevertheless should be refused on the basis

that the Mark is geographically deceptive and geographically deceptively misdescriptive if used

on any type of whiskey other than Scotch Whisky. (Dkt. 11). Notably, Applicant’s motion to

compel Opposer to produce “better responses” to discovery does not challenge the substance of

Opposer’s discovery responses; rather, Applicant challenges the nature of the objections made in connection with each response and ignores that Opposer served substantive responses to

Applicant’s overly broad and sprawling discovery. The result is a motion that puts form over substance and serves only to waste Board and party resources.

Notwithstanding Opposer’s compliance with its discovery obligations, in the interests of efficiency and to permit the parties and the Board the opportunity to move forward on the merits of this dispute, Opposer has further revised its discovery responses and served same on counsel for Applicant. See Exhibit A (Amended Responses and Objections to Requests for Documents) and Exhibit B (Amended Responses and Objections to Interrogatories). Opposer undertook this

exercise to provide even more clarity as to what Opposer has produced, what (if anything) is being

withheld, and to further explain the well-founded bases of Opposer’s objections. Indeed, Opposer

wishes to resolve this dispute on its merits, rather than waste Board and party resources on

meritless discovery disputes. To that end, and for ease of Board review, Opposer addresses herein

only those objections that have not been withdrawn or otherwise revised. As Applicant’s motion

to compel serves no other purpose than to delay these proceedings and clutter the Board’s docket,

the motion to compel should be denied.

I. FACTUAL AND PROCEDURAL BACKGROUND

Opposer, the Scotch Whisky Association, is the trade association of the Scotch Whisky

industry, and has worked to safeguard the Scotch Whisky trade on a worldwide basis for over sixty

years. (Dkt. 11). There are currently over 70 members of the Association, including distillers,

blenders and brand owners of Scotch Whisky. Id. These members produce approximately 90% of the Scotch Whisky sold worldwide, including in the United States, and include such internationally well-known brands as Johnnie Walker, White Horse, Dewar’s, Ballantine’s, Chivas Regal,

Famous Grouse, The Glenlivet, Glenfiddich, Glendronach, and The Macallan. Id.

Throughout its over sixty-year history, Opposer has actively monitored trademark applications and third-party users throughout the world that seek to use or register trademarks that are confusingly similar to Scotch Whisky or are evocative of Scotland when used on whiskey products not produced in Scotland. Opposer uses reasonable efforts to amicably resolve these issues worldwide, but has initiated enforcement actions when necessary in jurisdictions around the world to protect Scotch Whisky as a geographic indication of origin.

- 2 - Opposer initiated this proceeding on December 17, 2019. (Dkt.1.) On December 18, 2020,

Applicant served Opposer with Applicant’s First Request for Production (the “Requests”) and

First Set of Interrogatories (the “Interrogatories”) which sought, among other things, broad categories of documents and information relating generally to Opposer’s organization and global trademark enforcement program. On January 18, 2021, Opposer timely responded to the propounded discovery by serving responses and setting out objections based on, among other things, the extreme over breadth of each request. Opposer also produced over eight hundred pages of non-privileged responsive documents, and agreed to produce a corporate representative for deposition pursuant to Federal Rule of Civil Procedure 30(b)(6), which the Parties set for

February 11, 2021.

On January 28, 2021, Opposer filed an Unopposed Second Amended Notice of

Opposition (the “Second Amended NOO”), opposing registration of the Mark on the following grounds: (1) the Mark is deceptive in violation of 15 U.S.C. §1052(a); (2) the Mark is geographically deceptively misdescriptive in violation of 15 U.S.C. §1052(e)(3); and (3) that

Applicant lacks a bona fide intention to use the Mark based on Opposer’s own admissions obtained during discovery. (Dkt. 11). On February 9, 2021, the Board accepted the Second

Amended NOO and reset the conferencing, discovery, and trial dates. (Dkt. 12). Under that schedule, Applicant is to answer the Second Amended Notice Opposition by March 10, 2021 and discovery is set to close on October 6, 2021. Id.

On February 1, 2021, Applicant served Opposer with a deficiency letter that challenged certain objections set forth in Opposer’s discovery responses. During the parties’ meet and confer on February 9, 2021, counsel for Opposer explained to counsel for Applicant that the overly broad and sprawling nature of each of Applicant’s discovery requests could reasonably have been

- 3 - construed to encompass a significant portion of Opposer’s organization and global trademark enforcement program, as well as include filings throughout the world that are publically available.

Such discovery was unduly burdensome, particularly considering the proportional needs of this case. In an effort to work together in good faith and resolve these issues, counsel for Opposer asked counsel for Applicant to narrow or tailor the requests and identify what specifically was being requested of Opposer. In a further effort of cooperation, Opposer supplemented its written discovery responses the following day to identify the documents that had been produced in response to each request. However, as Applicant refused to revise the propounded requests as written, Opposer did not otherwise change the substance of its objections or responses thereto.

At 10:00 PM Eastern Time that evening, Applicant filed the instant motion, along with notice that the deposition of Opposer’s corporate representative set for the following morning had been cancelled. Upon receiving the motion, counsel for Opposer reached out to counsel for

Applicant seeking to attempt to resolve this opposition by way of mediation, rather than incur

the time and expense of litigating discovery disputes and responding to the present motion. Based

on conversations with Counsel for Applicant, Counsel for Opposer was led to believe that

Applicant would be open to mediation. However, to counsel’s surprise, Counsel for Applicant

notified Counsel for Opposer on February 25, 2021 that Applicant had no interest in mediating

this dispute.

II. ARGUMENT

Motions to compel discovery are disfavored where, as here, the motion serves no purpose

other than to delay proceedings and increase costs to Opposer. Hugo Boss AG v. Jackson Int'l

Trading Co. Kurt D. Bruhl Gesellschaft MBH & Co., 2000 TTAB LEXIS 207, *4 (TTAB April

11, 2000) (“non-essential evidence and motions create a problem for the Board, and increase the

- 4 - costs for both parties.”); see also In re Porsche Cars N. Am., Inc., No. 2:11-md-2233, 2012 U.S.

Dist. LEXIS 136954, at *48-49 (S.D. Ohio Sep. 25, 2012) (denying motion to compel defendants

to withdraw “boilerplate objections” as doing so “would serve no point”). In any event, the vast

majority of Applicant’s motion is now moot, as Opposer has amended each of its discovery

responses. Fid. Prescriptions, Inc. v. Med. Chest Disc. Ctrs., Inc., 191 U.S.P.Q. (BNA) 127, 127

(TTAB March 25, 1976) (motion to compel moot and given no consideration where party served

amended responses to discovery). Moreover, and despite the sufficiency of Opposer’s prior

objections, Opposer has withdrawn its objections to Requests for Production Nos. 1, 3-5, 7, 10,

21-23, and 30 and to Interrogatory No. 1.

As set forth below, Opposer maintains the following objections: (1) Requests for

Production Nos. 24-29 and 31-32, and Interrogatory Nos. 3-7 are overly broad, unduly burdensome and disproportionate to the needs of this case; (2) the preparation and production of a privilege log is an unduly burdensome task that is disproportionate to the needs of this case; and

(3) Interrogatory Nos. 2 and 8 contain multiple sub-parts. The motion to compel the withdrawal of these objections and/or the production of a privilege log should be denied.

A. Objections as to over breadth, burden, and proportionality are well founded

Requests for Production Nos. 24-29 and 31-32 and Interrogatory Nos. 3-7 are overly broad, unduly burdensome, disproportionate to the needs of this case, and in many instances, seek information that is publically available. While Opposer has further clarified the bases of each of these objections more fully in its amended responses and objections to this discovery, see Exhibit

A and Exhibit B, these objections are well founded and should be sustained.

- 5 - i. Requests to Produce Nos. 24-29; 31-32 and Interrogatory Nos. 6-7 are unlimited in time, geographic scope, and jurisdiction and reasonably include administrative and legal proceedings throughout the world

Requests to Produce Nos 24-29 and 32 and Interrogatory Nos. 6-7 seek documents and information sufficient to identify “all opposition, cancellation, and legal proceedings instituted, commenced, or filed” by Opposer involving the legal claims at issue in this proceeding and documents and information sufficient to identify the final disposition of each. Similarly, Request

No. 31 seeks the production of “all amicus curiae briefs, response briefs, and reply briefs filed or served by you or on your behalf (in any legal jurisdiction or geographic region) in connection with any opposition, cancellation, or legal proceeding involving or relating to the use of a “GLEN”- formative mark”.

As Opposer has explained to Applicant, throughout its over sixty-year history, Opposer has actively monitored trademark applications and third-party use throughout the world that seek registration or use of trademarks dominated by the word “Glen” or are otherwise evocative of

Scotland when used on whiskey products not produced in Scotland. Opposer uses reasonable efforts to amicably resolve these issues worldwide, but has initiated enforcement actions when necessary in jurisdictions around the world to protect Scotch Whisky as a geographic indication of origin.

Given that these Requests and Interrogatories are unlimited in time, geographic scope, and jurisdiction and reasonably include administrative and legal proceedings throughout the world,

Opposer has maintained its objections that this discovery is overly broad, unduly burdensome, and disproportionate to the needs of this case. TBMP 414 (“[P]arties are expected to take into account the principles of proportionality with regard to discovery”); Domond v.37.37, Inc., 113 USPQ2d

1264, 1266 (TTAB 2015) ( “When it comes to serving discovery, the parties are expected to take

- 6 - into account the principles of proportionality with regard to discovery requests such that the

volume of requests does not render them harassing and oppressive and are expected to consider

the scope of the requests as well as to confer in good faith about the proper scope of discovery so

as to minimize the need for motions.”)

Accordingly, a global search for such information would be extremely burdensome and

wholly disproportionate to the needs of this case, which involve a trademark opposition

proceedings in the United States brought under the law of the United States, namely, the Lanham

Act. Moreover, with respect to Opposer’s enforcement program in the United States, the

information sought by these Requests and Interrogatories is publically available and therefore

equally accessible to Applicant via the Trademark Trial and Appeal Board’s website,

https://ttabvue.uspto.gov/ttabvue. In re Porsche Cars N. Am., Inc., 2012 U.S. Dist. LEXIS 136954,

at *45 (collecting cases on “the ge neral rule that a party may not compel another party to produce

documents that are publicly available and/or readily available to the requesting party through other

means.”); Sec. & Exch. Com. v. Samuel H. Sloan & Co., 369 F. Supp. 994, 995 (S.D.N.Y. 1973)

(“It is well established that discovery need not be required of documents of public record which are equally accessible to all parties.”).

Indeed, a search of the TTAB docket reflects hundreds of enforcement actions involving

Opposer, and Opposer need not create documents in response to Applicant’s discovery requests.

TBMP § 406.02 (“A party is not obligated to locate documents for production that are not in its possession, custody, or control. Nor is a party under an obligation in response to a discovery request to create or prepare documents that do not already exist.”). Notwithstanding these objections, Opposer has provided Applicant with a non-exhaustive list of TTAB proceedings initiated by Opposer involving GLEN-formative marks. See Exhibit B at Interrogatory No. 7.

- 7 - Accordingly, Opposer’s objections to the breadth, burden, and proportionality of each of these

Requests and Interrogatories are well founded, and the motion to compel should be denied.

ii. Interrogatory Nos. 3-5 seek the identity of all current, former, and prospective members and a description of the goods and services offered by each

Interrogatory Nos. 3-5 seek the names of Opposer’s current, former, and prospective

members, the names of “all Scotch Whisky distilleries, brands, companies, manufacturers,

distributors, suppliers, and retailers” (whether members of the Scotch Whisky Association or not),

as well as a particularized des cription of all goods and servic es (including Scotch Whisky and non-

Scotch Whisky) that Opposer’s current, former, or prospective m embers “have ever offered, sold,

distributed, produced, or rendered”. These Interrogatories are overly broad, unduly burdensome,

and are disproportionate to the needs of this case for at least two reasons:

First, Opposer has represented the Scotch Whisky trade for over sixty-years. Throughout

this long history, Opposer’s list of members has changed for a variety of reasons, including that

members have changed corporate form through merger or acquisition, some members have gone

out of business completely, and some members have not renewed their membership. Opposer does

not track its former members in the ordinary course of business, and a search for former members

would require a disproportionate use of time and expense that would require review of paper

documents consisting of meeting minutes dating back sixty-years that reflect the name of the

member in attendance and determining whether the member is currently in active status with the

Association today. Because the names of former members is not at issue in this proceeding, a list

of former members is not kept in the ordinary course of business, and a search of such members

would be unduly burdensome and disproportionate to the needs of this case, Opposer has stood on

its objection to conducting a burdensome search of the names of its former members.

- 8 - Similarly, Opposer does not maintain a list of prospective members or non-members in the ordinary course of business, and whether a non-member is deemed to be a “prospective member” is an overly broad characterization that could reasonably encompass any number of third-parties.

Because the names of non-members or prospective members is not at issue in this proceeding, a list of non-members or prospective members is not kept in the ordinary course of business, and the compilation of such information would be unduly burdensome and disproportionate to the needs of this case, Opposer has stood on its objection to conducting a burdensome search of the names of non-members it deems could be “prospective” members of the Association.

Further, Opposer does not keep a record of specific Scotch Whisky brands owned by its members, as the list is constantly changing. For example, Opposer’s members produce brands for specific markets, or in limited quantities for specific purposes (such as to commemorate events).

However, the United Kingdom Customs Authority maintains a publicly accessible database reflecting brands of Scotch Whisky registered with Her Majesty's Revenue and Customs (HMRC) at https://www.gov.uk/government/organisations/hm-revenue-customs. Notwithstanding these objections, Opposer has produced pursuant to Federal Rule of Civil Procedure 33(d) documents sufficient to identify its members and non-members that use the word “GLEN” in their company, brand, or distillery name, including print-outs of searches run through the UK Customs Authority’s website. See Exhibit B.

Second, while all members of the Scotch Whisky Association produce, bottle, and/or sell various types of Scotch Whisky, some of Opposer’s members produce, bottle, and/or sell other types of distilled spirits as well. As Opposer has explained in its amended Interrogatory responses,

Opposer does not track each specific type of spirit offered by its members in the ordinary course of business, and a search of such information would require an unduly burdensome and

- 9 - disproportionate use of time and expense that would require review of publically available information that is equally accessible to Applicant. However, notwithstanding these objections,

Opposer has produced pursuant to Federal Rule of Civil Procedure 33(d) documents sufficient to identify the following information: (1) all of Opposer’s current members; (2) Opposer’s current members and non-members that use the word “GLEN” in their company, brand, or distillery name; and (3) Opposer’s current members and non-members such that Applicant can investigate whether, and to what extent, these entities have ever offered sold, distributed, produced, or rendered non-

Scotch Whisky products. See Exhibit B.

Accordingly, Opposer’s objections to the breadth, burden, and proportionality of each of these Interrogatories is well founded, and the motion to compel should be denied.

B. Preparation and production of a privilege log is an unduly burdensome task that is disproportionate to the needs of this case

Opposer, through its legal department, works to protect the Scotch Whisky industry and consumers worldwide from deceptive and misleading uses of the terms indicative of Scotland or

Scotch Whisky when used on or in connection with whiskey that is not Scotch Whisky. Given the nature of its business, Opposer has objected to certain requests the extent they seek the production of information protected by the attorney client privilege or work product doctrine.

Specifically, Request Nos. 2, 6, and 8 seek the production of all documents and/or correspondence relating broadly to “the issues raised in the Notice of Opposition and Applicant’s

THE GLENCHOD Mark. Request Nos. 12-20 seek the production of all documents and/or correspondence “discussing, referencing, or relating” to: (a) the marketing or sale of non-Scotch

Whisky by Opposer’s current, former, or prospective members (No. 12-13); (b) use of the term

“GLEN” in connection with Scotch Whisky and non-Scotch Whisky (Nos. 14-15); (c) the actual or perceived meaning, commercial impression, and primary significance of the term “GLEN”

- 10 - (Nos. 16-19); and (d) the actual or perceived meaning, commercial impression, and primary

significance of the term “THE GLENCHOD” as being a generally known geographic location (No.

20).

Each of these Requests could reasonably be construed to encompass a significant portion

of Opposer’s organization and global trademark enforcement program and include documents and

correspondence made by or between Opposer’s in-house attorneys, and/or documents and

correspondence between Opposer’s in-house attorneys and outside counsel anywhere in the world.

Accordingly, Opposer has objected each of these Requests to the extent they seek the production

of information protected by the attorney client privilege or work product doctrine. See TBMP 414

(“a party need not provide its legal research and information regarding its legal strategies.”); see

also Domond, 113 USPQ2d at 1267 (“Petitioner is responsible for formulating his own case and

cannot demand that Respondent prepare a comparison report, undertake legal research, or disclose

its legal strategies. . . . These requests are improper and outside the scope of discovery.”).

Notwithstanding these objections, however, Opposer is not withholding any non-privileged

documents it understands to be responsive to these Requests, and has produced over 800 pages of non-privileged documents.

As a result of the broad implications of these Requests, Opposer has objected to producing a privilege log, as cre ating one would require logging any and all correspondence within

Opposer’s legal department, as well as between Opposer and its worldwide network of attorneys that involves, among other things, legal strategy and attorney work product. Such an endeavor would be unduly burdensome and disproportionate to the needs of this case. Accordingly,

Applicant’s motion to strike all privilege-based objections or deem them waived should be denied.

TBMP § 410 (“claims that information sought by a discovery request is . . . subject to attorney-

- 11 - client or a like privilege . . . goes not to the merits of the request but to a characteristic or attribute

of the responsive information” and the Board “generally is not inclined to hold a party to have

waived” the right to make those objections”); No Fear, Inc. v. Rule, 54 U.S.P.Q.2D (BNA) 1551,

1551 (TTAB March 30, 2000) (noting that the Board is generally not inclined to deem the attorney

client privilege waived); see also USF Ins. Co. v. Smith's Food & Drug Ctr., Inc., No. 2:10-cv-

001513-RLH-LRL, 2011 U.S. Dist. LEXIS 63926, at *8 (D. Nev. June 16, 2011) (“waiver of

the attorney-client privilege is a harsh sanction reserved generally for unjustified, inexcusable, or

bad faith conduct, and a waiver may be unnecessary where other remedies are available”).

C. Opposer has responded to Interrogatory Nos. 2 and 8 in their entirety despite both containing multiple sub-parts

Opposer is entitled to preserve its objection that Interrogatory Nos. 2 and 8 contain multiple subparts, and therefore should be construed by the Board as separate interrogatories. As set forth in the Trademark Board Manual of Procedure 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.

Although Applicant has not yet crossed the 75 Interrogatory limit set by TMEP 405.03,

Opposer has maintained this objection to put Applicant on notice of its position should Applicant

propound additional Interrogatories that would exceed the 75 Interrogatory threshold. Moreover,

as Opposer has responded to each sub-part within Interrogatory Nos. 2 and 8, the motion to compel

on this issue is moot.

- 12 - III. CONCLUSION

In light of Opposer’s amended discovery responses, Applicant’s motion to compel should be denied as moot. As set forth herein, Applicant’s motion to compel the withdrawal of Opposer’s discovery objections and/or the production of a privilege log should be denied.

Respectfully submitted,

THE SCOTCH WHISKY ASSOCIATION

Date: March 2, 2021 By: /Jillian L. Burstein/ ______Jillian L. Burstein Reed Smith LLP 10 South Wacker Dr. Suite 4000 Chicago, Illinois 60606 (312) 207-2779 Attorney for Opposer

- 13 - CERTIFICATE OF TRANSMISSION

I hereby certify that the foregoing OPPOSER’S RESPONSE TO APPLICANT’S MOTION TO COMPEL BETTER RESPONSES TO APPLICANT’S INITIAL DISCOVERY REQUESTS is being electronically transmitted via the Electronic System for Trademark Trials and Appeals (“ESTTA”) at http://estta.uspto.gov/ on the date noted below:

Date: March 2, 2021 By: /Jillian L. Burstein/______Attorney for Opposer

CERTIFICATE OF SERVICE

I hereby certify that I served a courtesy copy of the foregoing OPPOSER’S RESPONSE TO APPLICANT’S MOTION TO COMPEL BETTER RESPONSES TO APPLICANT’S INITIAL DISCOVERY REQUESTS upon Counsel for Applicant via email on the date noted below:

Mark C. Johnson JOHNSON | DALAL 111 N. Pine Island Road, Suite 103 Plantation, Florida 33324 [email protected]

Date: March 2, 2021 By: /Jillian L. Burstein/ _____ Attorney for Opposer

- 14 -

EXHIBIT A

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

THE SCOTCH WHISKEY ASSOCIATION, Opposition No. 91252983 Mark: LTD., THE GLENCHOD Opposer, Serial No. 88/347,551 v. Filing Date: March 19, 2019 SHYAM KARIA, Publication Date: August 20, 2019 Applicant.

OPPOSER’S SECOND AMENDED RESPONSES AND OBJECTIONS TO APPLICANT’S FIRST REQUEST FOR PRODUCTION

Pursuant to Federal Rule of Civil Procedure 34 and Section 2.120(e) of the Trademark

Rules of Practice of the United States Patent and Trademark Office, Opposer, The Scotch Whisky

Association, Ltd. (“Opposer”), hereby serves its Second Amended Responses and Objections to

Applicant Shyam Karia’s (“Applicant”) First Request for Production (“Requests”), dated

December 18, 2020. While Opposer maintains that Opposer’s prior discovery responses were proper, in the interest of efficiency, Opposer hereby strikes all previous objections and responses to Requests previously served, and responds herein as follows:

RESPONSE TO REQUEST FOR PRODUCTION OF DOCUMENTS

1. Any and all documents used, referred to, referenced or relating to your responses to Applicant’s First Set of Interrogatories.

RESPONSE: See Bates Nos. SWA00001-SWA00861.

2. Any and all correspondence (emails, letters, text messages, memos, etc.) relating to the issues raised in the Notice of Opposition.

RESPONSE: Opposer, through its legal department, works to protect the Scotch Whisky industry and consumers worldwide from deceptive and misleading uses of the term GLEN when used on or in connection with whisky that is not Scotch Whisky. As this Request seeks “any and all correspondence” relating broadly to “the issues raised in the Notice of Opposition”, this Request could reasonably be construed to include correspondence made by or between Opposer’s in-house attorneys, and/or correspondence between Opposer’s in-house attorneys and outside counsel anywhere in the world engaged or involved generally in GLEN-related issues. Accordingly,

Opposer objects to this Request to the extent it seeks the production of information protected by the attorney client privilege or work product doctrine, and otherwise seeks information that is unduly burdensome to collect and disproportionate to the needs of this case. Such correspondence will not be produced. Moreover, Opposer will not produce a privilege log, as creating one would require logging “any and all correspondence” between Opposer and its worldwide network of attorneys, and such an endeavor would be unduly burdensome and disproportionate to the needs of this case.

Notwithstanding these objections, Opposer has no non-privileged documents otherwise responsive to this Request.

3. All documents, manuals, standards, guidelines, public statements, and publications you intend to rely on, use, reference, or cite to in support of, or in connection with, any of the claims or issues raised in the Notice of Opposition.

RESPONSE: See Bates Nos. SWA00255-SWA00260; SWA00657-SWA00750,

SWA00751-SWA00774; SWA00790-SWA00811.

4. All non-U.S. rules, regulations, legislation, and industry standards, guidelines, manuals, and publications you intend to rely on, use, reference, or cite to in support of, or in connection with, the position that Applicant’s THE GLENCHOD Mark is primarily geographically deceptively misdescriptive.

RESPONSE: See Bates Nos. SWA00657-SWA00774; SWA00790-SWA00861. 5. All U.S. rules, regulations, legislation, and industry standards, guidelines, manuals, and publications you intend to rely on, use, reference, or cite to in support of, or in connection with, the position that Applicant’s THE GLENCHOD Mark is primarily geographically deceptively misdescriptive.

RESPONSE: See Bates Nos. SWA00255-SWA00260; SWA00790-SWA00861.

6. Any and all logs, notes, photographs, videotapes or any digital file regarding trademark application no. 88/347,551 and/or Applicant’s THE GLENCHOD mark.

RESPONSE: Opposer, through its legal department, works to protect the Scotch Whisky industry and consumers worldwide from deceptive and misleading uses of the term GLEN when used on or in connection with whisky that is not Scotch Whisky. As this Request seeks “any and all logs, notes . . . or any digital file” regarding generally to Applicant’s THE GLENCHOD mark, this Request could reasonably be construed to include correspondence made by or between

Opposer’s in-house attorneys, and/or correspondence between Opposer’s in-house attorneys and outside counsel. Accordingly, Opposer objects to this Request to the extent it seeks the production of information protected by the attorney client privilege or work product doctrine, and otherwise seeks information that is unduly burdensome to collect and disproportionate to the needs of this case. Such documents will not be produced. Moreover, Opposer will not produce a privilege log, as creating one would require logging “any and all” correspondence between Opposer and its attorneys, and such an endeavor would be unduly burdensome and disproportionate to the needs of this case.

Notwithstanding these objections, Opposer has no non-privileged documents otherwise responsive to this Request.

7. Names and addresses of all the parties that will testify or produce evidence regarding the issues raised in the Notice of Opposition and/or Applicant’s THE GLENCHOD mark.

RESPONSE: See Opposer’s Initial Disclosures. 8. Any and all documentation Opposer obtained regarding Applicant’s THE GLENCHOD mark.

Request is confusing as written, but in any event could reasonably be construed to include correspondence made by or between Opposer’s in-house attorneys, and/or correspondence between Opposer’s in-house attorneys and outside counsel. Accordingly, Opposer objects to this

Request to the extent it seeks the production of information protected by the attorney client privilege or work product doctrine, and otherwise seeks information that is unduly burdensome to collect and that is disproportionate to the needs of this case. Such documents will not be produced.

Moreover, Opposer will not produce a privilege log, as creating one would require logging any and all correspondence between Opposer and its attorneys, and such an endeavor would be unduly burdensome and disproportionate to the needs of this case.

Notwithstanding these objections, Opposer is not withholding any non-privileged documents it understands to be responsive to this Request.

9. All documents containing any statements made to you by anyone with personal knowledge of the facts at issue in this case or about the facts at issue in this case.

RESPONSE: Opposer objects to this Request as confusing as written and unanswerable as posed.

10. At least one document sufficient to identify all current members of The Scotch Whiskey Association, Ltd., including the 70 members referenced in paragraph 3 of the First Amended Notice of Opposition.

RESPONSE: See Bates Nos. SWA00640-SWA00653; SWA00656. 11. At least one document sufficient to identify all good(s) and service(s) offered, sold, or rendered by each member of The Scotch Whiskey Association, Ltd. identified in your response to Request No. 10.

RESPONSE: While all members of the Scotch Whisky Association produce, bottle, and/or

sell Scotch Whisky, some of Opposer’s members produce, bottle, and/or sell other types of distilled

spirits, rendering this Request overly broad, unduly burdensome, disproportionate to the needs of

this case, and seeking information not kept in the ordinary course of business. Information

regarding the identity of goods and services offered by Opposer’s members is publically available

and therefore equally accessible to Applicant. Opposer has produced its membership directory at

Bates Nos. SWA00640-SWA00653 to facilitate the discovery of the information requested.

12. All documents and correspondence, including those circulated internally within The Scotch Whiskey Association, Ltd., discussing, referencing, or relating to the marketing, offering for sale, or sale, by any of the members identified in your response to Request No. 10, of any whisky spirit not wholly produced in Scotland.

RESPONSE: Opposer, through its legal department, works to protect the Scotch Whisky

industry and consumers worldwide from deceptive and misleading use of terms indicative of

Scotland when used on or in connection with whisky that is not Scotch Whisky. While all members

of the Scotch Whisky Association produce, bottle, and/or sell Scotch Whisky, some of Opposer’s

members produce, bottle, and/or sell other types of distilled spirits. As this Request seeks “all

documents and correspondence . . . discussing, referencing, or relating” to the marketing or sale of

non-Scotch Whisky by Opposer’s members, this Request could reasonably be construed to include

correspondence made by or between Opposer’s in-house attorneys, and/or correspondence

between Opposer’s in-house attorneys and outside counsel anywhere in the world. Accordingly,

Opposer objects to this Request to the extent it seeks the production of information protected by

the attorney client privilege or work product doctrine, and otherwise seeks information that is

unduly burdensome to collect and disproportionate to the needs of this case. Such documents will not be produced. Moreover, Opposer will not produce a privilege log, as creating one would require logging any and all correspondence between Opposer and its worldwide network of attorneys, and such an endeavor would be unduly burdensome and disproportionate to the needs of this case.

Notwithstanding these objections, Opposer is not withholding any non-privileged documents it understands to be responsive to this Request and has produced responsive non- privileged documents at Bates Nos. SWA00790-SWA00811 (Notes And Guidelines For Members

On The Dangers Of Deceptive Marketing) and SWA00812-SWA00861 (New Product

Development Checklist).

13. All documents and correspondence, including those circulated internally within The Scotch Whiskey Association, Ltd., discussing, referencing, or relating to the marketing, offering for sale, or sale, by any former or prospective members of The Scotch Whiskey Association, Ltd., of any whisky spirit not wholly produced in Scotland.

RESPONSE: Opposer, through its legal department, works to protect the Scotch Whisky industry and consumers worldwide from deceptive and misleading use of terms indicative of

Scotland when used on or in connection with whisky that is not Scotch Whisky. While all members of the Scotch Whisky Association produce, bottle, and/or sell Scotch Whisky, some of Opposer’s members produce, bottle, and/or sell other types of distilled spirits. As this Request seeks “all documents and correspondence . . . discussing, referencing, or relating” to the marketing or sale of non-Scotch Whisky by Opposer’s former or prospective members, this Request could reasonably be construed to include correspondence made by or between Opposer’s in-house attorneys, and/or correspondence between Opposer’s in-house attorneys and outside counsel anywhere in the world.

Accordingly, Opposer objects to this Request to the extent it seeks the production of information protected by the attorney client privilege or work product doctrine, and otherwise seeks information that is unduly burdensome to collect and disproportionate to the needs of this case.

Such documents will not be produced. Moreover, Opposer will not produce a privilege log, as creating one would require logging any and all correspondence between Opposer and its worldwide network of attorneys, and such an endeavor would be unduly burdensome and disproportionate to the needs of this case.

On The Dangers Of Deceptive Marketing) and SWA00812-SWA00861 (New Product

Development Checklist).

14. All documents and correspondence discussing, referencing, or relating to the use of the term “GLEN” in connection with Scotch Whisky good(s) or service(s).

‘GLEN’ in connection with Scotch Whisky”, this Request could reasonably be construed to encompass a significant portion of Opposer’s organization and global enforcement program, as well as include correspondence made by or between Opposer’s in-house attorneys, and/or correspondence between Opposer’s in-house attorneys and outside counsel anywhere in the world.

Accordingly, Opposer objects to the extent this Request seeks non-privileged information that is unduly burdensome, if not impossible, to collect and disproportionate to the needs of this case.

Given the extremely broad nature of this Request, Opposer also objects to the extent this Request seeks the production of information protected by the attorney client privilege or work product doctrine. Such documents will not be produced. Moreover, Opposer will not produce a privilege

log, as creating one would require logging any and all correspondence between Opposer and its

worldwide network of attorneys, and such an endeavor would be unduly burdensome and

disproportionate to the needs of this case.

Notwithstanding these objections, Opposer is not withholding any non-privileged

documents it understands to be responsive to this Request and has produced responsive non-

privileged documents at Bates Nos. SWA00001-SWA00254; SWA00261-SWA00639;

SWA00654-SWA00655; and SWA00781-SWA00789.

15. All documents and correspondence discussing, referencing, or relating to the use of the term “GLEN” in connection with any non-Scotch Whisky good(s) or service(s).

RESPONSE: Opposer, through its legal department, works to protect the Scotch Whisky

industry and consumers worldwide from deceptive and misleading use of the term GLEN when

used on or in connection with whisky that is not Scotch Whisky. As this Request seeks “all

documents and correspondence . . . discussing, referencing, or relating to the use of the term

‘GLEN’ in connection with any non-Scotch Whisky”, this Request could reasonably be construed

to encompass a significant portion of Opposer’s organization and global enforcement program, as well as include correspondence made by or between Opposer’s in-house attorneys, and/or correspondence between Opposer’s in-house attorneys and outside counsel anywhere in the world.

Accordingly, Opposer objects to the extent this Request seeks non-privileged information that is unduly burdensome, if not impossible, to collect and disproportionate to the needs of this case.

Given the extremely broad nature of this Request, Opposer also objects to the extent this

On The Dangers Of Deceptive Marketing) and SWA00812-SWA00861 (New Product

Development Checklist).

16. All documents and correspondence discussing, referencing, or relating to the actual or perceived meaning or commercial impression of the term “GLEN”.

RESPONSE: Opposer, through its legal department, works to protect the Scotch Whisky industry and consumers worldwide from deceptive and misleading use of the term GLEN when used on or in connection with whisky that is not Scotch Whisky. As this Request seeks “all documents and correspondence . . . discussing, referencing, or relating to the actual or perceived meaning or commercial impression of the term ‘GLEN’”, this Request could reasonably be construed to encompass a significant portion of Opposer’s organization and global enforcement program, as well as include correspondence made by or between Opposer’s in-house attorneys, and/or correspondence between Opposer’s in-house attorneys and outside counsel anywhere in the world. Accordingly, Opposer objects to the extent this Request seeks non-privileged information that is unduly burdensome, if not impossible, to collect and disproportionate to the needs of this case.

Given the extremely broad nature of this Request, Opposer also objects to the extent this

SWA00775-SWA00789.

17. All documents and correspondence discussing, referencing, or relating to the primary significance of the term “GLEN”.

RESPONSE: Opposer, through its legal department, works to protect the Scotch Whisky industry and consumers worldwide from deceptive and misleading use of the term GLEN when used on or in connection with whisky that is not Scotch Whisky. As this Request seeks “all documents and correspondence . . . discussing, referencing, or relating to the primary significance of the term ‘GLEN’”, this Request could reasonably be construed to encompass a significant portion of Opposer’s organization and global enforcement program, as well as include correspondence made by or between Opposer’s in-house attorneys, and/or correspondence between Opposer’s in-house attorneys and outside counsel anywhere in the world. Accordingly,

Opposer objects to the extent this Request seeks non-privileged information that is unduly burdensome, if not impossible, to collect and disproportionate to the needs of this case.

Given the extremely broad nature of this Request, Opposer also objects to the extent this

Request seeks the production of information protected by the attorney client privilege or work product doctrine. Such documents will not be produced. Moreover, Opposer will not produce a privilege log, as creating one would require logging any and all correspondence between Opposer and its worldwide network of attorneys, and such an endeavor would be unduly burdensome and disproportionate to the needs of this case. Notwithstanding these objections, Opposer is not withholding any non-privileged documents it understands to be responsive to this Request, and has produced responsive non- privileged documents at Bates Nos. SWA00015-SWA00043; SWA00104-SWA00110;

SWA00775-SWA00789.

18. All correspondence discussing, referencing, or relating to the primary significance of the term “GLEN” as being a generally known geographic location.

‘GLEN’ as being a generally known geographic location”, this Request could reasonably be construed to encompass a significant portion of Opposer’s organization and global enforcement program, as well as include correspondence made by or between Opposer’s in-house attorneys, and/or correspondence between Opposer’s in-house attorneys and outside counsel anywhere in the world. Accordingly, Opposer objects to the extent this Request seeks non-privileged information that is unduly burdensome, if not impossible, to collect and disproportionate to the needs of this case.

Given the extremely broad nature of this Request, Opposer also objects to the extent this

SWA00775-SWA00789.

19. All documents showing, demonstrating, indicating, or suggesting that the primary significance of the term “GLEN” is a generally known geographic location.

RESPONSE: Opposer, through its legal department, works to protect the Scotch Whisky industry and consumers worldwide from deceptive and misleading use of the term GLEN when used on or in connection with whisky that is not Scotch Whisky. As this Request seeks “all documents showing, demonstrating, indicating, or suggesting that the primary significance of the term ‘GLEN’ is a generally known geographic location”, this Request could reasonably be construed to encompass a significant portion of Opposer’s organization and global enforcement program, as well as include correspondence made by or between Opposer’s in-house attorneys, and/or correspondence between Opposer’s in-house attorneys and outside counsel anywhere in the world. Accordingly, Opposer objects to the extent this Request seeks non-privileged information that is unduly burdensome, if not impossible, to collect and disproportionate to the needs of this case.

Given the extremely broad nature of this Request, Opposer also objects to the extent this

documents it understands to be responsive to this Request, and has produced responsive non-

privileged documents at Bates Nos. SWA00026-SWA00036; SWA00104-SWA00110;

SWA00775-SWA00789.

20. All documents and correspondence discussing, referencing, or relating to the primary significance of the composite term “THE GLENCHOD” as being a generally known geographic location.

RESPONSE: Opposer, through its legal department, works to protect the Scotch Whisky

industry and consumers worldwide from deceptive and misleading uses of the terms indicative of

Scotland when used on or in connection with whisky that is not Scotch Whisky. As this Request

seeks “all documents and correspondence discussing, referencing, or relating to the primary significance of the composite term ‘THE GLENCHOD’ as being a generally known geographic location,” this Request could reasonably be construed to include correspondence made by or between Opposer’s in-house attorneys, and/or correspondence between Opposer’s in-house attorneys and outside counsel. Accordingly, Opposer objects to this Request to the extent it seeks the production of information protected by the attorney client privilege or work product doctrine, and otherwise seeks information that is unduly burdensome to collect and disproportionate to the needs of this case. Such documents will not be produced. Moreover, Opposer will not produce a privilege log, as creating one would require logging any and all correspondence between Opposer and its attorneys, and such an endeavor would be unduly burdensome and disproportionate to the needs of this case.

Notwithstanding these objections, Opposer is not withholding any non-privileged documents it understands to be responsive to this Request, and has otherwise produced non- privileged responsive documents at Bates Nos. SWA00790-SWA00861. 21. All directories, gazetteers, encyclopedias, geographic dictionaries, catalogs, LexisNexis® database results, Internet search results, newspaper articles, magazine articles, publications, documents, and other evidence you intend to rely on in showing that Applicant’s THE GLENCHOD mark creates or engenders a goods/place association such that the public is likely to believe that the goods or services sold by, or intended to be sold by, Applicant originate in Scotland.

RESPONSE: See Bates Nos. SWA00001-SWA00861.

22. All directories, gazetteers, encyclopedias, geographic dictionaries, catalogs, LexisNexis® database results, Internet search results, newspaper articles, magazine articles, publications, documents, and other evidence you intend to rely on in showing that consumers typically identify Scotland as a known source of Scotch Whisky.

RESPONSE: See Bates Nos. SWA00001-SWA00252; SWA00310-SWA00639;

SWA00775-SWA00789.

23. All directories, gazetteers, encyclopedias, geographic dictionaries, catalogs, LexisNexis® database results, Internet search results, newspaper articles, magazine articles, publications, documents, and other evidence you intend to rely on in showing that consumers’ (mistaken) belief that Applicant’s good(s) are produced in Scotland would be a material factor in a significant portion of their relevant decision to purchase the good(s).

RESPONSE: See Bates Nos. SWA00001-SWA00252; SWA00310-SWA00639;

SWA00775-SWA00789.

24. At least one document sufficient to identify all opposition, cancellation, and legal proceedings instituted, commenced, or filed by you, where at least one of the asserted grounds for opposition/cancellation was that the challenged mark was primarily geographically deceptively misdescriptive pursuant to Trademark Act Section 2(e)(3).

RESPONSE: Throughout its over sixty-year history, Opposer has engaged in numerous proceedings in the United States that challenged registration of various trademarks as geographically deceptively misdescriptive pursuant to Trademark Act Section 2(e)(3).

Accordingly, Opposer objects to this Request as overly broad, unduly burdensome, and disproportionate to the needs of this case. As the information sought by this Request is publically available and therefore equally accessible to Applicant, documents Responsive to this Request will

not be produced.

25. At least one document sufficient to identify the final disposition of each opposition, cancellation, and legal proceeding identified by you in response to Request No. 24.

RESPONSE: Throughout its over sixty-year history, Opposer has engaged in numerous

proceedings in the United States that challenged registration of various trademarks as

geographically deceptively misdescriptive pursuant to Trademark Act Section 2(e)(3).

Accordingly, Opposer objects to this Request as overly broad, unduly burdensome, and

disproportionate to the needs of this case. As the information sought by this Request is publically

available and therefore equally accessible to Applicant, documents Responsive to this Request will

not be produced.

26. At least one document sufficient to identify all opposition, cancellation, and legal proceedings instituted, commenced, or filed by you, where at least one of the asserted grounds for opposition/cancellation was that the geographic indication which, if used on or in connection with wine or spirits, identifies a place other than the origin of the goods pursuant to Trademark Act Section 2(a).

RESPONSE: Throughout its over sixty-year history, Opposer has engaged in numerous

proceedings in the United States that challenged registration of various trademarks as

geographically deceptive pursuant to Trademark Act Section 2(a). Accordingly, Opposer objects

to this Request as overly broad, unduly burdensome, and disproportionate to the needs of this case.

As the information sought by this Request is publically available and therefore equally accessible

to Applicant, documents Responsive to this Request will not be produced. 27. At least one document sufficient to identify the final disposition of each opposition, cancellation, and legal proceeding identified by you in response to Request No. 26.

RESPONSE: Throughout its over sixty-year history, Opposer has engaged in numerous

proceedings in the United States that challenged registration of various trademarks as

geographically deceptive pursuant to Trademark Act Section 2(a). Accordingly, Opposer objects

to this Request as overly broad, unduly burdensome, and disproportionate to the needs of this case.

As the information sought by this Request is publically available and therefore equally accessible

to Applicant, documents Responsive to this Request will not be produced.

28. At least one document sufficient to identify all opposition, cancellation, and legal proceedings instituted, commenced, or filed by you, where at least one of the asserted grounds for opposition/cancellation was that the challenged mark constitutes a false designation of geographic origin and is likely to mislead the public in violation of Articles 10 and 10 bis of the Convention of Paris for the protection of Industrial Property as implemented by Sections 44(b) and (h) of the United States Trademark Act, 15 U.S.C. § 1126(b) and (h).

RESPONSE: Opposer objects to this Request as seeking irrelevant information, as this

Opposition does not allege claims in violation of Articles 10 and 10 bis of the Convention of Paris

for the protection of Industrial Property as implemented by Sections 44(b) and (h) of the United

States Trademark Act, 15 U.S.C. § 1126(b) and (h). In any event, throughout its over sixty-year history, Opposer has engaged in numerous proceedings in the United States and around the world that challenged registration of various trademarks as false designations of geographic origin likely to mislead the public in violation of the Convention of Paris for the protection of Industrial

Property. Accordingly, Opposer objects to this Request as overly broad, unduly burdensome, and disproportionate to the needs of this case. As the information sought by this Request is publically available and therefore equally accessible to Applicant, documents Responsive to this Request will not be produced. 29. At least one document sufficient to identify the final disposition of each opposition, cancellation, and legal proceeding identified by you in response to Request No. 28.

RESPONSE: Throughout its over sixty-year history, Opposer has engaged in numerous

proceedings in the United States and around the world that challenged registration of various

trademarks as false designations of geographic origin likely to mislead the public in violation of

the Convention of Paris for the protection of Industrial Property. Accordingly, Opposer objects to

this Request as overly broad, unduly burdensome, and disproportionate to the needs of this case.

As the information sought by this Request is publically available and therefore equally accessible to Applicant, documents Responsive to this Request will not be produced.

30. At least one document sufficient to identify all Scotch Whisky distillery names, Scotch Whisky brand names, and Scotch Whisky company names known to you that contain the term “GLEN”, as alleged in paragraphs 10-12 of the Notice of Opposition.

RESPONSE: See Bates Nos. SWA00001-SWA00014; SWA00044-SWA00083;

SWA00111-SWA00253; SWA00261-SWA00656.

31. All amicus curiae briefs, response briefs, and reply briefs filed or served by you or on your behalf (in any legal jurisdiction or geographic region) in connection with any opposition, cancellation, or legal proceeding involving or relating to the use of a “GLEN”-formative mark.

RESPONSE: Opposer, through its legal department, works to protect the Scotch Whisky

industry and consumers worldwide from deceptive and misleading use of the term GLEN when

used on or in connection with whisky that is not Scotch Whisky. As this Request seeks the

production of all briefs filed or served in any jurisdiction or geographic region in the world relating

to the use of a GLEN-formative mark, this Request could reasonably be construed to encompass a

significant portion of Opposer’s organization and global enforcement program, as well as include

filings throughout the world that are publically available. Accordingly, Opposer objects to the

extent this Request seeks documents that are unduly burdensome, if not impossible, to collect, and where the burden of obtaining these filings is disproportionate to the needs of this case. Given the

extremely broad nature of this Request, and as the information sought by this Request that relates at least to United States proceedings is publically available and therefore equally accessible to

Applicant, documents Responsive to this Request will not be produced.

32. At least one document sufficient to identify all opposition, cancellation, or legal proceedings in which Opposer was a party, e.g. plaintiff, opposer, defendant, applicant, registrant, permissive intervenor, intervenor as a matter of right, etc., involving or relating to the use of the term “GLEN” or any formative variation thereof.

RESPONSE: Opposer, through its legal department, works to protect the Scotch Whisky

industry and consumers worldwide from deceptive and misleading use of the term GLEN when

used on or in connection with whisky that is not Scotch Whisky. As this Request seeks the

production of documents sufficient to identify all proceedings in any jurisdiction in the world,

relating to the use of a GLEN-formative mark, this Request could reasonably be construed to

encompass a significant portion of Opposer’s organization and global enforcement program, as

well as include filings throughout the world, that are publically available. Accordingly, Opposer

objects to the extent this Request seeks documents that are unduly burdensome, if not impossible,

to collect. A list of proceedings such as that requested here is not kept in the ordinary course of

business, and the burden of obtaining documents reflecting this information is disproportionate to the needs of this case. Given the extremely broad nature of this Request, and as the information sought by this Request that relates at least to United States proceedings is publically available and therefore equally accessible to Applicant, documents Responsive to this Request will not be produced.

Dated: March 1, 2021

Respectfully submitted,

THE SCOTCH WHISKY ASSOCIATION

/s/ Jillian L. Burstein Jillian L. Burstein Reed Smith LLP 10 South Wacker Drive, Suite 4000 Chicago, Illinois 60606 (312) 207-2779 Attorney for Opposer, The Scotch Whisky Association

PROOF OF SERVICE

I declare that on March 1, 2021, I served copies of the foregoing upon the attorney of record via electronic mail.

_/s/ Jillian L. Burstein Jillian L. Burstein

EXHIBIT B

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

THE SCOTCH WHISKEY ASSOCIATION, Opposition No. 91252983 Mark: LTD., THE GLENCHOD Opposer, v. Serial No. 88/347,551 SHYAM KARIA, Filing Date: March 19, 2019 Applicant. Publication Date: August 20, 2019

OPPOSER’S FIRST AMENDED RESPONSES AND OBJECTIONS TO APPLICANT’S FIRST SET OF INTERROGATORIES

Pursuant to Federal Rule of Civil Procedure 33 and Section 2.120(d) of the Trademark

Rules of Practice of the United States Patent and Trademark Office, Opposer, The Scotch

Whisky Association, Ltd. (“Opposer”), hereby serves its First Amended Responses and

Objections to Applicant Shyam Karia’s (“Applicant”) First Set of Interrogatories, dated

December 18, 2020. While Opposer maintains that Opposer’s prior discovery responses were proper, in the interest of efficiency, Opposer hereby strikes all previous objections and responses to Interrogatories previously served, and responds herein as follows:

ANSWERS TO INTERROGATORIES

INTERROGATORY NO. 1: Identify all Persons who participated in providing responses to Applicant’s First Set of Interrogatories and Applicant’s First Request for Production.

RESPONSE: Lindesay Low, Deputy Director of Legal Affairs at the Scotch Whisky

Association.

INTERROGATORY NO. 2: Describe with particularity Opposer’s contentions and factual bases in support of its position that (1) Applicant’s Mark is primarily geographically deceptively misdescriptive; (2) the composite term “THE GLENCHOD” has a primary significance as being a generally known geographic location, i.e. Scotland; (3) the term “GLEN” has a primary significance as being a generally known geographic location, i.e. Scotland; (4) purchasers would be likely to believe that Applicant’s goods and services originate in Scotland; and (5) this belief would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services.

RESPONSE: Opposer objects to this Interrogatory on the ground that it contains

multiple subparts asserted in a single Interrogatory. Notwithstanding this objection, Opposer

responds as follows to subsections (1) through (5) of Interrogatory No. 2.

Trademarks dominated by the word “GLEN” are indicators of Scottish origin when used on whisky, as the word “Glen” is indicative of and commonly associated with Scotland and

Scotch Whisky. The word “Glen,” means “narrow valley” in Gaelic, the traditional language of

Scotland. The word “Glen” forms part of numerous Scottish place names, which refer to particular valleys or settlements located in or close to those valleys. The name is particularly prevalent in the Scottish Highlands. Many Scottish Glens, such as The Great Glen, Glencoe and

Glen Affric are intenternationally renowned due to their history and scenic beauty and are considered international tourist destinations. Moreover, many Scotch Whisky distilleries use the word “Glen” in their names to refer to the Glen in which the distillery is located or the physical distillery itself, such as Glenlivet Distillery, Glen Keith Distillery, Glen Spey Distillery, and

Glen Garioch Distillery.

“Glen” is also used extensively in the marketing of Scotch Whisky and forms part of many Scotch Whisky brand names, such, as by way of example, THE GLENLIVET (Single Malt

Scotch Whisky); GLENFIDDICH (Single Malt Scotch Whisky); GLEN DEVERON (Highland

Single Malt Scotch Whisky); GLEN ELGIN (Speyside Single Malt Scotch Whisky); GLEN

MORAY (Speyside Single Malt Scotch Whisky); GLENDRONACH (Highland Single Malt

Scotch Whisky); GLEN GRANT (Single Malt Scotch Whisky); GLEN SCOTIA (Single Malt

Scotch Whisky); GLEN NESS (Highland Single Malt Scotch Whisky); and GLENMORANGIE

(Highland Single Malt Scotch Whisky). Moreover, many Scotch Whisky companies use the word “Glen” as part of their company name. For example, Glen Catrine Bonded Warehouse,

Glen Grant Limited, Glen Turner Company, Glendronach Distillery Company, The Glenlivet

Distillers, and Glenmorangie Company. Pursuant to Federal Rule of Civil Procedure 33(d),

Opposer has produced documents reflecting the extensive use of the word “Glen” in the marketing of Scotch Whisky. See Bates Nos. SWA00015-SWA00025; SWA00037-SWA00043;

SWA00775-SWA00780 (definitions of the word “Glen”); SWA00001-SWA00014; SWA00044-

SWA00103; SWA00130-SWA00163; (third-party retail sales of “Glen” Scotch Whiskies);

SWA00164-SWA00218; SWA00111-SWA00129; SWA00026-SWA00036; SWA00104-

SWA00110; SWA00781-SWA00789 (internet articles explaining the connection between

“Glen” and Scotch Whisky); SWA00640-SWA00653 (Scotch Whisky Association Membership

Directory). As a result of the pervasive use of “Glen” in connection with Scotch Whisky in the

United States marketplace, consumers commonly associate the word “Glen” when used in connection with whisky with Scotland and Scotch Whisky. Therefore, the primary significance of trademarks dominated by the word “Glen” when used in connection with whisky is that of a generally known geographic indication, namely, Scotland.

Applicant’s Mark is primarily geographically deceptively misdescriptive because

Applicant seeks to register the wordmark GLENCHOD (the “Mark”) in International Class 33 for “Whiskey; Whiskey spirits” of any geographic origin. The dominant portion – indeed, the first syllable – of the Mark contains the word “Glen”. Moreover, the Mark seeks registration for

3 a broad category of whiskey that includes not only Scotch Whisky, but all other types of whiskey of any geographic origin. Because the dominant portion of the Mark features the word

“Glen”, and the Mark is to be used in connection with any whiskey, the Mark’s primary significance is that of a geographic location, namely Scotland. Therefore, should Applicant use the Mark on a whiskey other than Scotch Whisky (for example, on or in connection with an American Whiskey, a Bourbon Whiskey, or Rye Whiskey), consumers would mistakenly believe that the whiskey product bearing the Mark was a Scotch Whisky originating in

Scotland, when that is not the case, and make a purchasing decision based on that false belief.

INTERROGATORY NO. 3: Identify all (a) Scotch Whisky distillery names, (b) Scotch Whisky brand names, (c) Scotch Whisky company names, (d) Scotch Whisky manufacturers, (e) Scotch Whisky distributors, (f) Scotch Whisky suppliers, (g) Scotch Whisky retailers, and (h) Scotch Whisky producers known to you that contain the term “GLEN”, as alleged in paragraphs 10-12 of the First Amended Notice of Opposition, and identify which, if any, of the names are associated with any of The Scotch Whiskey Association, Ltd.’s current, former, or prospective members.

RESPONSE: Opposer has represented the Scotch Whisky trade for over sixty-years.

Throughout this long history, Opposer’s list of members has changed for a variety of reasons, including that members have changed corporate form through merger or acquisition, some members have gone out of business completely, and some members have not renewed their membership. Opposer does not track its former members in the ordinary course of business, and a search for former members would require a disproportionate use of time and expense that would require review of paper documents consisting of meeting minutes dating back sixty-years that reflect the name of the member in attendance and determining whether the member is currently in active status with the Association today. As the names of Opposer’s former members is not at issue in this proceeding, a list of former members is not kept in the ordinary

4 course of business, and a search of such members would be unduly burdensome and disproportionate to the needs of this case, Opposer has not, and will not, conduct a search of the names of its former members.

Similarly, Opposer does not maintain a list of prospective members or non-members in the ordinary course of business, and whether a non-member is deemed to be a “prospective member” is an overly broad characterization that could reasonably encompass any number of third-parties. As the names of non-members or prospective members is not at issue in this proceeding, a list of non-members or prospective members is not kept in the ordinary course of business, and the compilation of such information would be unduly burdensome and disproportionate to the needs of this case, Opposer has not, and will not, conduct a search of the names of non-members it deems could be “prospective” members of the Association.

Notwithstanding these objections, Opposer has produced pursuant to Federal Rule of

Civil Procedure 33(d) documents sufficient to identify members and non-members that use the word “GLEN” in their company, brand, or distillery name. See SWA00219-SWA00252 (Scotch

Whisky brands registered with Her Majesty’s Royal Customs); SWA00310-SWA00639

(International Wine and Spirits Reports); SWA00640-SWA00653 (Scotch Whisky Association

Membership Directory); SWA00656-SWA00656 (Map of Scotch Whisky Distilleries).

INTERROGATORY NO. 4: Identify all of The Scotch Whiskey Association, Ltd.’s current, former, and prospective members and identify whether they are current, former, or prospective members.

RESPONSE: Opposer has represented the Scotch Whisky trade for over sixty-years.

5 membership. Opposer does not track its former members in the ordinary course of business, and a search for former members would require a disproportionate use of time and expense that would require review of paper documents consisting of meeting minutes dating back sixty-years that reflect the name of the member in attendance and determining whether the member is currently in active status with the Association today. As the names of former members is not at issue in this proceeding, a list of former members is not kept in the ordinary course of business, and a search of such members would be unduly burdensome and disproportionate to the needs of this case, Opposer has not, and will not, conduct a search of the names of its former members.

Notwithstanding these objections, Opposer has produced pursuant to Federal Rule of

Civil Procedure 33(d) documents sufficient to identify members and non-members that use the word “GLEN” in their company, brand, or distillery name. See SWA00219-SWA00252 (Scotch

Whisky brands registered with Her Majesty’s Royal Customs); SWA00310-SWA00639

(International Wine and Spirits Reports); SWA00640-SWA00653 (Scotch Whisky Association

Membership Directory); SWA00656-SWA00656 (Map of Scotch Whisky Distilleries).

INTERROGATORY NO. 5: Describe with particularity all good(s) and service(s) that The Scotch Whiskey Association, Ltd.’s current, former, or prospective members have ever offered, sold, distributed, produced, or rendered and state which of The Scotch Whiskey Association, Ltd.’s current, former, or prospective members have ever offered, sold, distributed, produced, or rendered non-Scotch Whisky products.

RESPONSE: While all members of the Scotch Whisky Association produce, bottle,

and/or sell various types of Scotch Whisky, some of Opposer’s members produce, bottle, and/or

sell other types of distilled spirits as well. Opposer does not track each specific type of spirit

offered by its members in the ordinary course of business, and a search of such information

would require an unduly burdensome and disproportionate use of time and expense that would

require review of publically available information that is equally accessible to Applicant. Such

an investigation has not, and will not, be conducted.

Notwithstanding these objections, Opposer has produced pursuant to Federal Rule of

Civil Procedure 33(d) documents sufficient to identify Opposer’s members and non-members

such that Applicant can investigate whether, and to what extent, these entities have ever offered

sold, distributed, produced, or rendered non-Scotch Whisky products. See SWA00219-

SWA00252 (Scotch Whisky brands registered with Her Majesty’s Royal Customs); SWA00310-

SWA00639 (International Wine and Spirits Reports); SWA00640-SWA00653 (Scotch Whisky

Association Membership Directory); SWA00656-SWA00656 (Map of Scotch Whisky

Distilleries).

INTERROGATORY NO. 6: Describe with particularity all measures, efforts, and actions taken by you to “prevent[] the registration of trademarks that are confusingly similar to Scotch Whisky or are evocative of Scotland when used on whisky products that have not been produced in Scotland” as stated in paragraph 4 of the First Amended Notice of Opposition, including identification of all opposition, cancellation, and legal proceedings instituted, commenced, or filed by you in connection therewith and the final disposition of each proceeding.

RESPONSE: Throughout its over sixty-year history, Opposer has actively monitored

trademark applications throughout the world that seek registration of trademarks that are

confusingly similar to Scotch Whisky or are evocative of Scotland when used on whisky

products not produced in Scotland. Opposer also actively monitors third-party use of

unregistered trademarks throughout the world that are confusingly similar to Scotch Whisky or

are evocative of Scotland when used on whisky products not produced in Scotland. Opposer

uses reasonable efforts to amicably resolve these issues worldwide, but has initiated enforcement

actions when necessary in jurisdictions around the world to protect Scotch Whisky as a

geographic indication of origin. Given that this Interrogatory is unlimited in time, geographic

scope, and jurisdiction and reasonably includes administrative and legal proceedings, Opposer

objects to this Interrogatory as overly broad, unduly burdensome, and disproportionate to the

needs of this case and will not endeavor to describe or identify all efforts taken worldwide, or all

enforcement actions initiated and the disposition of each.

Notwithstanding these objections, the information sought by this Request as it relates to

Opposer’s enforcement program regarding trademark applications in the United States is

publically available and therefore equally accessible to Applicant via the Trademark Trial and

Appeal Board’s website. See https://ttabvue.uspto.gov/ttabvue (reflecting hundreds of enforcement actions involving Opposer and the disposition of each).

INTERROGATORY NO. 7: Identify all opposition, cancellation, and legal proceedings instituted, commenced, or filed by you or on your behalf (or in which you’ve appeared as a permissive intervenor or as an intervenor as a matter of right, as those terms are defined in 5 C.F.R. § 1201.34) in connection with the third party use of a “GLEN”- formative mark and describe your role therein and the final disposition of each proceeding.

RESPONSE: Throughout its over sixty-year history, Opposer has actively monitored trademark applications throughout the world that seek registration of trademarks dominated by the word “Glen” when used on whisky products not produced in Scotland. Opposer also actively

monitors third-party use of unregistered trademarks dominated by the word “Glen” when used on

whisky products not produced in Scotland. Opposer uses reasonable efforts to amicably resolve

these issues worldwide, but has initiated enforcement actions when necessary in jurisdictions

around the world to protect Scotch Whisky as a geographic indication of origin. Given that this

Interrogatory is unlimited in time, geographic scope, and jurisdiction and reasonably includes administrative and legal proceedings, Opposer objects to this Interrogatory as overly broad, unduly burdensome, and disproportionate to the needs of this case and will not endeavor to describe or identify all legal proceedings taken worldwide and the disposition of each.

Notwithstanding these objections, the information sought by this Request as it relates to

Opposer’s enforcement program regarding Glen-formative trademark applications in the United

States is publically available and therefore equally accessible to Applicant via the Trademark

Trial and Appeal Board’s website. See https://ttabvue.uspto.gov/ttabvue. These proceedings include, but are not limited to the following:

Filing Proceeding Mark Defendant Plaintiff Date The Scotch GLENCARA United States Distilled 88484325 10/1/2019 Whisky FARMS Products Company Association BEVERLY The Scotch Beverly Glen Distillers 88216065 7/8/2019 GLEN Whisky Limited DISTILLERS Association The Scotch 88059672 1/9/2019 GLENPHARMER Downing, Patrick Whisky Association The Scotch 88136346 1/9/2019 GLENQUILA Downing, Patrick Whisky Association The Scotch 91239756 2/28/2018 WINTER GLEN LeVecke Corporation Whisky Association The Scotch Skibbereen Distilleries 87072842 6/14/2017 GLENGARRIFF Whisky Holdings Limited Association

Filing Proceeding Mark Defendant Plaintiff Date GLEN HAVEN Jeffery Hughes dba The Scotch CANNING CO. 87152088 2/7/2017 J.L. Hughes & Whisky GLEN HAVEN Associates Association CANNING CO. The Scotch Allied Management, 87055577 11/15/2016 SONOMA GLEN Whisky Inc Association The Scotch OAK GLEN McKinley Vineyards, 86635791 9/12/2016 Whisky RESERVE LLC Association The Scotch Proof Artisan 86559757 12/8/2015 GLEN FARGO Whisky Distillers, LLC Association The Scotch Angus Dundee 86348112 6/5/2015 GLEN LOCHY Whisky Distillers Plc Association The Scotch 86095672 9/22/2014 GLEN SILVERS Beveland, S.A. Whisky Association The Scotch Branded Spirits (USA) 86124684 7/15/2014 GLEN OAK Whisky Ltd. Association The Scotch 86041760 2/3/2014 GLEN GRAEME ASTOR HOME LTD. Whisky Association DRIFTLESS The Scotch 91213777 12/2/2013 GLEN Weckerly, Mike Whisky DISTILLERY Association The Scotch 91204948 4/23/2012 GLEN DOWAN Sven Brassat Whisky Association The Scotch GLEN CLYDE 77435981 4/9/2012 GLEN CLYDE Whisky WHISKY LIMITED Association The Scotch Phillips Products 77206988 12/19/2007 ROYAL GLEN Whisky Company, LLC Association The Scotch Lidl Stiftung & Co. 78191125 2/26/2004 GLEN ORCHY Whisky KG Association The Scotch De Bortoli Wines Pty 91156171 4/10/2003 WILLOW GLEN Whisky Limited Association

INTERROGATORY NO. 8: Describe with particularity the nature and extent of each type of injury that you believe (a) you, (b) your members, and (c) consumers at large, would suffer as a direct and proximate result of Applicant’s use and registration of the “THE GLENCHOD” Mark and explain with particularity how and why Applicant’s use and registration of the “THE GLENCHOD” Mark would directly and proximately cause each type of injury identified.

RESPONSE: Opposer objects to this Interrogatory on the ground that it contains multiple subparts asserted in a single Interrogatory. Notwithstanding this objection, Opposer responds as follows to subsections (a), (b), and (c) of Interrogatory No. 8.

Should Applicant be permitted to use or register the Mark for use in connection with whiskey that is not Scotch Whisky, Opposer, its members, and the consuming public will be damaged. Scotch Whisky enjoys substantial prestige and salability and is considered a quality product throughout the world. As the dominant portion of the Mark contains the word “Glen”, consumers are likely to mistakenly believe that whiskey bearing the Mark is Scotch Whisky when it is not. As a result, consumers will be harmed by purchasing a product they wrongly or mistakenly believe to be Scotch Whisky when that is not the case. In addition, the Scotch

Whisky trade (including Opposer and its members) will be damaged by the lost sales that would result from such a mistaken purchase. The goodwill and image of the Scotch Whisky trade, which has been developed over many years by Scotch Whisky producers, would be further damaged to the extent a consumer mistakenly purchases or consumes a non-Scotch Whisky product bearing the Mark, and forms a negative association with Scotch Whisky as a result.

Dated: March 1, 2021

Respectfully submitted,

THE SCOTCH WHISKY ASSOCIATION

/ Jillian L. Burstein Jillian L. Burstein Reed Smith LLP

10 South Wacker Drive, Suite 4000 Chicago, Illinois 60606 (312) 207-2779 Attorney for Opposer, The Scotch Whisky Association

PROOF OF SERVICE

I declare that on March 1, 2021, I served copies of the foregoing upon the attorney of record via electronic mail.

/Jillian L. Burstein______Jillian L. Burstein

VERIFICATION

I, Lindesay Matheson Low, am Deputy Director of Legal Affairs of The Scotch Whisky

Association, Ltd. and its agent for the purpose of answering Applicant, Shyam Karia’s, First Set of Interrogatories. I have read The Scotch Whisky Association’s First Amended Responses and

Objections to Applicant’s First Set of Interrogatories, prepared by The Scotch Whisky

Association’s counsel, which are true and correct according to the best of my knowledge, information, and belief.

Date this 1st day of March, 2021

/s/___

Lindesay Matheson Low