ESTTA Tracking number: ESTTA1003787 09/23/2019

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1003787

Filing date: 09/23/2019

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 92070774

Party PlaintiffHoneywell Safety Products USA, Inc.

CorrespondenceAddress

JAMES D WEINBERGERFROSS ZELNICK LEHRMAN & ZISSU PC4 TIMES SQUARE, 17TH FLOORNEW YORK, NY 10036UNITED [email protected], [email protected]

Submission Other Motions/Papers

Filer's Name James D. Weinberger

Filer's email [email protected]

Signature /s/ James D. Weinberger

Date 09/23/2019

Attachments F3213866.pdf(1679088 bytes )

http://estta.uspto.gov

{F3212767.1 }



HONEYWELL SAFETY PRODUCTS USA,

INC.,

Petitioner,

-against-

ERB INDUSTRIES, INC.,

Registrant.

Cancellation No. 92070774

DECLARATION OF JAMES D. WEINBERGER

IN SUPPORT OF PETITIONER’S MOTION TO COMPEL

I, James D. Weinberger, hereby declare under penalty of perjury:

1. I am a partner at Fross Zelnick Lehrman & Zissu, P.C. (“Fross Zelnick”),

attorneys for petitioner Honeywell Safety Products USA, Inc. (“Petitioner”) and am supervising

the above-captioned matter. I submit this declaration in support of Petitioner’s motion to compel

registrant ERB Industries, Inc. (“Registrant”) to serve complete discovery responses to

Petitioner’s document requests and interrogatories and to produce all responsive documents. I

make this declaration based on my personal knowledge of the facts and circumstances set forth

herein, my review of my firm’s records and oversight of this matter, and on the records of the

Trademark Trial and Appeal Board (the “Board”), and the U.S. Patent and Trademark Office.

2. On July 15, 2019, Petitioner served Registrant with Petitioner’s requests for the

production of documents and things and interrogatories. Attached as Exhibit A are the requests

and the accompanying email sent to Registrant.

{F3212767.1 } 2

3. The deadline for Registrant to serve its written responses to Petitioner’s document

requests and interrogatories was August 14, 2019. See Trademark Trial and Appeal Board

Manual of Procedure (“TBMP”) §§ 405.04(a), 406.04(a).

4. On August 15, 2019, I emailed Registrant’s Counsel, Ronald A. DiCerbo, to

notify him that we did not receive by email service Registrant’s responses to Petitioner’s

discovery requests by the deadline. I also informed Mr. DiCerbo that as a result of his failure to

serve responses, Registrant had waived all objections to Petitioner’s discovery requests. I further

stated that Petitioner expected immediate responses and a complete document production, and

that if such responses are not forthcoming, to please advise as to his availability for a meet and

confer on an anticipated motion to compel. See Exhibit B.

5. On August 19, 2019, I sent a follow-up email asking Mr. DiCerbo to please

advise as to the status of Registrant’s responses to Petitioner’s discovery requests. See Exhibit

C.

6. On August 22, 2019, I sent another follow-up email to Mr. DiCerbo stating that it

appears that Registrant does not intend to respond to Petitioner’s discovery requests or

participate in a meet and confer and that if this is the case, Petitioner will file a motion to

compel. See Exhibit D.

7. On August 23, 2019, Registrant served its responses to Petitioner’s discovery

responses, but the responses contained untimely objections. See Exhibit E.

8. That same day, I sent Mr. DiCerbo an email asking him to explain why

Registrant’s discovery responses contained objections when such objections were untimely. See

Exhibit F.

{F3212767.1 } 3

9. On August 28, 2019, I sent a follow-up email to Mr. DiCerbo advising that we

were still waiting for an explanation as to why Registrant’s discovery responses contained

untimely objections. See Exhibit G.

10. On September, 5, 2019, I sent a letter to Mr. DiCerbo explaining that because

Registrant’s discovery responses were untimely, all objections in the responses, including those

as to privilege, are untimely and improper. I advised that Petitioner would move to compel if

Registrant did not meet and confer and provide us with an explanation for the untimeliness of its

discovery responses that meets the “excusable neglect” standard. (The letter also raised

substantive issues with the responses, not at issue in this motion.) See Exhibit H.

11. On September 9, 2019, Mr. DiCerbo sent me an email stating that he was in

receipt of my September 5 letter regarding Registrant’s discovery responses and that he would

respond “shortly.” See Exhibit I.

12. On September 16, 2019, I sent Mr. DiCerbo an email following up on my

September 5 letter. See Exhibit J.

13. To date, Mr. DiCerbo has not responded to my September 5 letter or September

16 email, has not provided any reason for his failure to do so, and has not provided any

explanation whatsoever for Registrant’s untimely discovery responses.

14. Under the circumstances, Petitioner has made the requisite good faith effort to

resolve the issues presented in the motion to compel but has been unable to reach agreement.

I declare under penalty of perjury that the foregoing is true and correct.

Executed this 23rd day of September, 2019 at New York, New York.

James D. Weinberger

{F3212767.1 }

EXHIBIT A

{F3118972.1 }




INC.

Petitioner,

-against-


Registrant.

Canc. No. 92070774

PETITIONER’S FIRST SET OF REQUESTS FOR THE

PRODUCTION OF DOCUMENTS AND THINGS TO REGISTRANT

Pursuant to 37 C.F.R. § 2.120 and Rules 26 and 34 of the Federal Rules of Civil

Procedure, Petitioner Honeywell Safety Products USA, Inc. hereby requests that Registrant ERB

Industries, Inc. respond to the following requests for the production of documents and things by

providing written responses thereto within the time specified by the Trademark Rules of Practice

and the Federal Rules of Civil Procedure and by producing the documents and things specified

herein for inspection and copying at the offices of Honeywell Safety Products USA, Inc.’s

attorneys, Fross Zelnick Lehrman & Zissu, P.C., 151 West 42nd Street, 17th Floor, New York,

NY 10036, Attn.: James D. Weinberger, simultaneously with the written responses or at another

mutually agreed upon time and place.

DEFINITIONS

A. “Registrant” means ERB Industries, Inc. and any company controlled by or

affiliated with it; any division, parent, subsidiary, licensee, franchisee, successor, predecessor-in-

interest, assign or other related business entity; and every officer, employee, agent, attorney or

{F3118972.1 }

2

other person acting or purporting to act on its behalf or through whom it acts or has acted, and

the predecessors or successors of any of them.

B. “Registrant’s Marks” means the Ridge Design (as defined in the Petition for

Cancellation) shown in Reg. Nos. 4,493,482 and 4,493,481.

C. A request “Concerning” any subject calls for all Documents or Things that reflect,

relate to, comprise, evidence, constitute, describe, explicitly or implicitly refer to, were reviewed

in conjunction with, or were generated as a result of the subject matter of the request, including

but not limited to all Documents that reflect, record, memorialize, discuss, evaluate, consider,

review or report on the subject matter of the request.

D. “Document” is used in the broadest sense possible consistent with the Federal

Rules of Civil Procedure as adopted by the Trademark Rules of Practice and includes, without

limitation, non-identical copies (whether different from the original because of underlining,

editing marks, notes made on or attached to such copy, or otherwise), and drafts, whether printed

or recorded (through a sound, video or other electronic, magnetic or digital recording system) or

reproduced by hand, including but not limited to writings, recordings, photographs, letters,

correspondence, purchase orders, invoices, facsimiles, telegrams, telexes, memoranda, records,

summaries, minutes, records or notes of personal conversations, interviews, meetings and/or

conferences, note pads, notebooks, postcards, “Post-It” notes, stenographic or other notes,

opinions or reports of consultants, opinions or reports of experts, projections, financial or

statistical statements or compilations, checks (front and back), contracts, agreements, appraisals,

analyses, confirmations, publications, articles, books, pamphlets, circulars, microfilms,

microfiche, reports, studies, logs, surveys, diaries, calendars, appointment books, maps, charts,

graphs, bulletins, tape recordings, videotapes, disks, diskettes, compact discs (CDs), data tapes or

{F3118972.1 }

3

readable computer-produced interpretations or transcriptions thereof, electronically-transmitted

messages (email), voicemail messages, inter-office communications, advertising, packaging and

promotional materials, and any other writings, papers and tangible things of whatever description

whatsoever, including but not limited to all information contained in any computer or electronic

data processing system, or on any tape, whether or not already printed out or transcribed.

Without limiting the foregoing, “Documents” include electronically stored information,

including any and all subsisting metadata associated therewith.

E. When not capitalized, “mark,” “trademark” and “trade name” each incorporate

trademarks, service marks, trade names and service names.

F. “Market Research” includes all surveys, polls, focus groups, trademark and/or any

other search reports, market research studies and other investigations, whether or not such

investigations were completed, discontinued or fully carried out.

G. “Petitioner” means Honeywell Safety Products USA, Inc.

H. “Person” means any natural person or any business, legal or governmental entity

or association.

I. “Thing” means any tangible object.

J. Whenever the terms “and” and “or” are used, they are to be construed both

disjunctively and conjunctively as necessary to bring within the scope of these discovery

requests responses that might otherwise be construed to be outside the scope.

K. The use of the singular form of any word includes the plural and vice versa.

References to the masculine gender shall apply equally to the feminine gender.

{F3118972.1 }

4

INSTRUCTIONS

1. Registrant is required to produce any and all responsive Documents in its

possession, custody or control that are known or available to it, regardless of whether those

Documents are possessed by it or by any agent, representative, attorney or other third party.

Registrant must make a diligent search of its records (including but not limited to paper records,

computerized records, electronic mail records and voicemail records) and of other papers and

materials in its possession, custody or control, including but not limited to those Documents

available to it or its agents, representatives, attorneys or other third parties.

2. All Documents produced for inspection must be organized and labeled to

correspond with the categories in the request or as the Documents are kept in the ordinary

course. Fed. R. Civ. P. 34(b).

3. In the event Registrant produces copies of the responsive Documents, it is

requested to retain the originals of all such Documents for inspection. Staples, clips, notes, tape

and other items attached in any way to Documents or attaching Documents to each other should

not be removed.

4. Where any copy of any Document is not identical to any other copy thereof by

reason of any alteration, marginal notes, comments or other material contained there or attached

thereto, or otherwise, Registrant should produce all such non-identical copies separately.

5. If there are no Documents responsive to any particular request or part thereof,

Registrant should so state in writing.

6. If Registrant objects to furnishing Documents in response to any request, or any

part or portion thereof, Registrant should state specifically the basis of such objection, identify

the Documents to which each objection applies, and furnish all requested Documents to which

{F3118972.1 }

5

the objection does not apply. Registrant is reminded that objections based on confidentiality are

not proper. See 35 C.F.R. § 2.116(g).

7. In the event any Document is withheld on a claim of attorney/client privilege or

work product immunity, Registrant should offer a statement signed by an attorney representing it

identifying as to each such Document:

(i) The reasons for withholding production of the Document and any

supporting facts, including the statute, rule, or decision which is claimed

to give rise to the privilege. The claim of privilege or any other objection

must be made in sufficient detail so as to permit the Board to adjudicate

the validity of the claim or objection.

(ii) The nature and subject matter of the Document.

(iii) The name, employment position and address of the author(s) and/or

preparer(s) and/or sender of the Document.

(iv) The names of all Persons to whom copies were distributed or to whom the

information contained therein was disclosed, and the date on which such

distribution or disclosure occurred.

(v) The date the Document was prepared.

(vi) The number of the request in Petitioner’s First Set of Requests for the

Production of Documents and Things to Registrant under which each

Document would otherwise be produced.

8. If, in responding to any Document request, Registrant perceives any ambiguity in

construing either the request or the instruction or definition relevant to the request, Registrant

{F3118972.1 }

6

should identify the matter deemed ambiguous and set forth the construction chosen or used in

answering the request.

9. These requests are continuing in character so as to require prompt supplemental

production if Registrant obtains or discovers further responsive Documents after preparing and

serving its initial responses pursuant to these requests. Registrant should serve each supple-

mental response no later than 30 days after discovery of further responsive Documents. In no

event should Registrant serve any supplemental response later than the day before the trial period

opens.

REQUESTS FOR THE PRODUCTION OF DOCUMENTS AND THINGS

Request No. 1

All Documents requested to be identified in Petitioner’s First Set of Interrogatories to

Registrant.

Request No. 2

All Documents consulted in preparing answers to Petitioner’s First Set of Interrogatories

to Registrant.

Request No. 3

All Documents Concerning or indicating the purpose or significance of Registrant’s

Marks.

Request No. 4

All Documents Concerning Registrant’s conception, creation, meaning, adoption,

development, selection and first use of Registrant’s Marks.

{F3118972.1 }

7

Request No. 5

All drawings or specimens of any logos or designs used or contemplated for use as a

trademark by Registrant for the goods now sold under Registrant’s Marks.

Request No. 6

All Documents Concerning Registrant’s claim that Registrant’s Marks or any portion

thereof are inherently distinctive.

Request No. 7

Documents sufficient to show all instances of Registrant’s use of the Ridge Design in

Documents Concerning any of Registrant’s products.

Request No. 8

All Documents Concerning consumer understanding or perception of the Ridge Designs.

Request No. 9

All Documents Concerning consumer recognition of source-identifying function of the

Ridge Designs.

Request No. 10

All Documents Concerning or constituting Registrant’s business plans for offering

products and/or services under Registrant’s Marks.

Request No. 11

All Documents Concerning the marketing of products bearing Registrant’s Marks,

including but not limited to Documents Concerning where such products and/or services are or

will be sold, when such products will or have been sold, and to whom such products will or have

been sold.

{F3118972.1 }

8

Request No. 12

All advertisements, catalogs, articles and other promotional materials, including print ads,

point-of-purchase displays, audio and video tapes Concerning Registrant’s Marks, or displaying

the goods sold by Registrant under Registrant’s Marks.

Request No. 13


point-of-purchase displays, audio and video tapes in which Registrant specifically directs the

intended recipient to the Ridge Designs and/or Registrant’s Marks as an indication of source.

Request No. 14

A representative sample of each product, label, package, container, brochure price list,

promotional item or any other products distributed by or on behalf of Registrant bearing

Registrant’s Marks.

Request No. 15

For each advertising media used (e.g., print, television, radio, internet, outdoor, point-of-

sale), representative samples of publicly-disseminated advertisements for products bearing


Request No. 16

All press clippings or press releases Concerning Registrant’s Marks or products offered

under or bearing Registrant’s Marks.

Request No. 17

All Market Research Concerning Registrant’s Marks.

{F3118972.1 }

9

Request No. 18

All Market Research Concerning consumer perception of any advertising for products

bearing Registrant’s Marks.

Request No. 19

All Documents Concerning Registrant’s right to register Registrant’s Marks.

Request No. 20

All Documents, including all Documents submitted to and received from the Patent and

Trademark Office or the trademark office of any state, Concerning any application to register a

trademark or any trademark registration that contains the Ridge Designs granted to, considered,

applied for, sought or acquired by Registrant.

Request No. 21

All Documents, including all Documents submitted to and received from the Patent and

Trademark Office, Concerning any application to register a patent or any patent that contains the

Ridge Designs granted to, considered, applied for, sought or acquired by Registrant.

Request No. 22

All Documents Concerning any claim, demand, complaint, objection, opposition,

cancellation, administrative proceeding, legal opinion or civil action involving Registrant’s use

of, registration for, or application to register Registrant’s Marks whether instituted by Registrant

or a third party.

Request No. 23

All trademark searches conducted by or on behalf of Registrant for Registrant’s Marks.

{F3118972.1 }

10

Request No. 24

All Documents and Things Concerning third party use of the Ridge Designs or designs

which Registrant has contended or presently contends are confusingly similar thereto in

connection with the sale, marketing, advertising or marketing of any product, including but not

limited to all cease and desist letters, documents evidencing legal action and any settlement

agreement or license entered into as a result of such contention.

Request No. 25

All Documents and Things Concerning third party use of a helmet design with ridges or

stacked ridges on the top, irrespective of whether Registrant has objected to or objects to same.

Request No. 26

All agreements, licenses, assignments, transfers of rights or the like Concerning


Request No. 27

All settlement agreements, consent to use agreements, coexistence agreements or the like

Concerning Registrant’s Marks entered into between Registrant and any third party.

Request No. 28

All Documents, including financial, accounting and corporate records Concerning:

(a) money spent in advertising, marketing and promoting products and/or

services bearing or sold under Registrant’s Marks;

(b) projected costs for advertising and marketing products and/or services sold

under Registrant’s Marks; and

(c) sales of products and/or services under Registrant’s Marks.

{F3118972.1 }

11

Request No. 29

All Documents and Things Concerning any challenges to use and/or registration by

Registrant of the Ridge Designs by any third party, including but not limited to Cancellation No.

92070801, and including but not limited to all cease and desist letters, documents evidencing

legal action and any settlement agreement or license entered into as a result of such challenges.

Request No. 30

For each expert Registrant intends to call to provide testimony in the proceeding,

produce: (a) all written reports relating to the issue(s) on which the expert will testify; (b) a

complete written statement of all opinions to be expressed by the expert, and the basis and

reasons therefor; (c) all Documents reflecting the data or other information considered by the

expert in forming his opinions; (d) all exhibits to be used by the expert in connection with his

opinions and testimony; (e) Documents sufficient to set forth the qualifications of the expert; (f)

a written list of all publications authored by the expert within the last ten years; (g) a list of all

other cases in which the expert has appeared or given testimony; and (h) all Documents showing

the compensation to be paid for the expert’s preparation time and testimony time.

Dated: July 15, 2019 FROSS ZELNICK LEHRMAN & ZISSU, P.C.

New York, New York

By:_____________________________________

James D. Weinberger ([email protected])

Melissa Goldstein ([email protected])

151 West 42nd Street, 17th Floor

New York, New York 10036

(212) 813-5900

Attorneys for Petitioner

{F3118972.1 }

12

CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing document was sent by email to Registrant’s attorney at [email protected] this 15th day of July, 2019.

__________________________

James D. Weinberger

{F3118979.1 }




INC.

Petitioner,

-against-


Registrant.

Canc. No. 92070774

PETITIONER’S FIRST SET OF INTERROGATORIES TO REGISTRANT

Pursuant to 37 C.F.R. § 2.120 and Rules 33 and 34 of the Federal Rules of Civil

Procedure, Petitioner Honeywell Safety Products USA, Inc. (“Petitioner”) hereby requests that

Registrant ERB Industries, Inc. provide written responses to the following interrogatories by

serving said responses at the offices of Honeywell Safety Products USA, Inc.’s attorneys, Fross

Zelnick Lehrman & Zissu, P.C., 151 West 42nd Street, 17th Floor, New York, NY 10036,

Attention: James D. Weinberger, within thirty (30) days after service of these interrogatories.

The following definitions and instructions apply to each interrogatory.

DEFINITIONS

A. “Registrant” means ERB Industries, Inc. and any company controlled by or

affiliated with it; any division, parent, subsidiary, licensee, franchisee, successor, predecessor-in-

interest, assign or other related business entity; and every officer, employee, agent, attorney or

other person acting or purporting to act on its behalf or through whom it acts or has acted, and

the predecessors or successors of any of them.

{F3118979.1 } 2

B. “Registrant’s Marks” means the Ridge Design (as defined in the Petition for

Cancellation) shown in Reg. Nos. 4,493,482 and 4,493,481.

C. “Communication” shall mean the transmittal of information (in the form of facts,

ideas, inquiries or otherwise).

D. An interrogatory “Concerning” any subject calls for all information, Documents

or Things that reflect, relate to, comprise, evidence, constitute, describe, explicitly or implicitly

refer to, were reviewed in conjunction with, or were generated as a result of the subject matter of

the request, including but not limited to all information and Documents that reflect, record,

memorialize, discuss, evaluate, consider, review or report on the subject matter of the request.

E. “Describe,” with respect to a Communication, shall mean to state or Identify the

date, time of day, duration, location, persons involved, witnesses, physical occurrences, and a

summary of the substance of any Communications. With respect to Documents, “Describe”

shall mean to Identify the type of Document, its date, its author, its recipients, and to provide a

summary of the substance thereof.

F. “Document” is used in the broadest sense possible consistent with the Federal

Rules of Civil Procedure as adopted by the Trademark Rules of Practice and includes, without

limitation, non-identical copies (whether different from the original because of underlining,

editing marks, notes made on or attached to such copy, or otherwise), and drafts, whether printed

or recorded (through a sound, video or other electronic, magnetic or digital recording system) or

reproduced by hand, including but not limited to writings, recordings, photographs, letters,

correspondence, purchase orders, invoices, facsimiles, telegrams, telexes, memoranda, records,

summaries, minutes, records or notes of personal conversations, interviews, meetings and/or

conferences, note pads, notebooks, postcards, “Post-It” notes, stenographic or other notes,

{F3118979.1 } 3

opinions or reports of consultants, opinions or reports of experts, projections, financial or

statistical statements or compilations, checks (front and back), contracts, agreements, appraisals,

analyses, confirmations, publications, articles, books, pamphlets, circulars, microfilms,

microfiche, reports, studies, logs, surveys, diaries, calendars, appointment books, maps, charts,

graphs, bulletins, tape recordings, videotapes, disks, diskettes, compact discs (CDs), data tapes or

readable computer-produced interpretations or transcriptions thereof, electronically-transmitted

messages (email), voicemail messages, inter-office communications, advertising, packaging and

promotional materials, and any other writings, papers and tangible things of whatever description

whatsoever, including but not limited to all information contained in any computer or electronic

data processing system, or on any tape, whether or not already printed out or transcribed.

Without limiting the foregoing, “Documents” include electronically stored information,

including any and all subsisting metadata associated therewith.

G. The term “Identify” when used in reference to:

(i) a current officer or employee of Registrant means to state his full name,

the name and address of his employer, his present title or position, and the address at which he is

currently employed;

(ii) a former officer or employee of Registrant means to state, to the extent

known, his full name, residence address, last title or position with Registrant, and his present

business affiliation and address;

(iii) any other person means to state, to the extent known, the person’s full

name, present or last known address, and the current or last known place of employment and

business address;

(iv) an oral communication means to describe the date and time of the

{F3118979.1 } 4

communication, the place where the communication occurred, the persons involved in the

communication, any other person present, and the substance of the communication;

(v) a business entity or institution means to state, to the extent known, its full

name and address;

(vi) a Document means to describe specifically the Document, including,

where applicable, the subject matter of the Document, its date, the name, title and address of

each writer or sender and each recipient, its present location and custodian, and, if any such

Document is not in Registrant’s possession or subject to its control, state what disposition was

made of it, by whom, and the date thereof. A copy of the Document may be furnished in lieu of

Identifying it, provided the Document contains the above information or Registrant separately

furnishes it when furnishing the Document.

H. When not capitalized, “mark,” “trademark” and “trade name” each incorporate

trademarks, service marks, trade names and service names.

I. “Market Research” includes all surveys, polls, focus groups, trademark and/or any

other search reports, market research studies and other investigations, whether or not such

investigations were completed, discontinued or fully carried out.

J. “Petitioner” means Honeywell Safety Products USA, Inc.

K. “Person” means any natural person or any business, legal or governmental entity

or association.

L. Whenever the terms “and” and “or” are used, they are to be construed both

disjunctively and conjunctively as necessary to bring within the scope of these discovery

requests responses that might otherwise be construed to be outside the scope.

{F3118979.1 } 5

M. The use of the singular form of any word includes the plural and vice versa.

References to the masculine gender shall apply equally to the feminine gender.

N. In answering these interrogatories, even though the questions may be directed to

“you,” furnish all information, which is available to you, including information in the possession

of your attorneys or investigators prepared on your behalf. If you cannot answer any of the

following interrogatories in full after exercising due diligence to secure the information, state an

answer, to the extent possible, specifying your inability to answer the remainder and stating

whatever information or knowledge you have Concerning the unanswered portions.

O. To the extent that any of the following interrogatories may call for information

subject to a claim of privilege or attorney’s work product, answer so much of each interrogatory

and each part thereof as does not request privileged or confidential information. With respect to

those portions of these interrogatories that do request privileged information, set forth the basis

for your claim of privilege or any other objection you may have.

P. If any Document covered by these interrogatories is withheld or not produced on

the basis of a claim of privilege or any other objection, Registrant shall provide Petitioner with a

list containing the following information for each of the Documents:

(i) The reasons for withholding production of the Document and any

supporting facts, including the statute, rule, or decision which is claimed

to give rise to the privilege. The claim of privilege or any other objection

must be made in sufficient detail so as to permit the Board to adjudicate

the validity of the claim or objection.

(ii) The nature and subject matter of the Document.

{F3118979.1 } 6

(iii) The name, employment position and address of the author(s) and/or

preparer(s) and/or sender of the Document.

(iv) The names of all Persons to whom copies were distributed or to whom the

information contained therein was disclosed, and the date on which such

distribution or disclosure occurred.

(v) The date the Document was prepared.

(vi) The number of the request in Petitioner’s First Set of Requests for the

Production of Documents and Things to Registrant under which each

Document would otherwise be produced.

Q. For the convenience of the Board and the parties, each interrogatory should be

quoted in full immediately preceding the response. You are also requested to order and label the

materials produced in accordance with the final paragraph of Rule 34(b), Fed. R. Civ. P.

R. These discovery requests are intended to be continuing. If, at any time after you

prepare and furnish the requested discovery, you ascertain or acquire additional information, you

are requested to produce such supplemental information to Petitioner within thirty (30) days.

INTERROGATORIES

Interrogatory No. 1

Explain in detail the purpose of Registrant’s Marks.

Interrogatory No. 2

State why Registrant chose Registrant’s Marks.

Interrogatory No. 3

Identify each person having information regarding the creation, selection, adoption, use

and applications for federal trademark registration of Registrant’s Marks.

{F3118979.1 } 7

Interrogatory No. 4

State when Registrant commenced use of Registrant’s Marks, explaining in detail how

they have been used and providing the date, manner and place of first use.

Interrogatory No. 5

Identify all writings in the possession, custody or control of Registrant, including but not

limited to correspondence, investigative reports, search reports, Market Research, interoffice

memoranda, etc., referring or relating to the creation, adoption, use and application for federal

trademark registration of Registrant’s Marks.

Interrogatory No. 6

Identify all opinions Concerning your right to register Registrant’s Marks or the existence

of possible conflicting marks.

Interrogatory No. 7

State whether the Ridge Designs are or have ever been the subject of patent protection

and, if so, identify all Documents Concerning same.

Interrogatory No. 8

Identify those persons employed by Registrant who it reasonably believes to have the

most knowledge of the current and/or prospective sales, marketing, and channels of distribution

of products sold under Registrant’s Marks.

Interrogatory No. 9

Identify those persons employed by Registrant who it reasonably believes to have the

most knowledge of the class of purchasers to whom Registrant shall direct its promotion and sale

efforts for products sold under Registrant’s Marks.

{F3118979.1 } 8

Interrogatory No. 10

Identify representative copies of all advertising or promotional material, including but not

limited to tags, labels, posters, flyers, advertisements, catalogs, brochures and signs which have

ever been used or will be used by Registrant in connection with its products offered under



State whether Registrant has ever advertised or promoted its products in a manner that

specifically directs the intended recipient to the Ridge Designs and/or Registrant’s Marks as an

indication of source.


Identify every trade show where Registrant’s products were advertised or sold in

connection with Registrant’s Marks and describe all details of the sales or promotions.


Identify all written or electronic publications in which Registrant advertises or otherwise

refers to products offered for sale under Registrant’s Marks.


Identify all persons or organizations that have participated in the creation or distribution

of advertisements or promotional materials for each product promoted under Registrant’s Marks,

state the period of time during which each such person or organization so participated, and

describe briefly the nature of that person or organization’s participation.


Identify all third party uses, in connection safety helmets, of the Ridge Designs or designs

which Registrant has contended or presently contends are confusingly similar thereto.

{F3118979.1 } 9


State what, if any, action has been taken by Registrant in connection with uses by others

of the Ridge Designs or designs which Registrant believes are confusingly similar thereto.


Identify all objections made or received by Registrant and all legal proceedings instituted

or defended by Registrant Concerning use of any designation of a third party relating to

Registrant’s Marks and for each such objection or legal proceeding:

(a) Identify the third party; and

(b) Identify all Documents Concerning to the objection or legal proceeding.


Identify all agreements, including but not limited to licenses, permissions, consents,

assignments, mergers, or other transfers or ownership of rights, relating to Registrant’s Marks,

and Identify all Documents relating and/or referring to each such agreement.


Identify and describe any Market Research or trademark searches Concerning

Registrant’s Marks that Registrant has caused to be conducted or plans to cause to be conducted,

including Concerning the level of public recognition of Registrant’s Marks or the types of goods

with which consumers associate Registrant’s Marks.


Identify any plans to change in any manner the nature of the goods you offer for sale

under Registrant’s Marks.


Identify each expert whose testimony you expect to place in evidence, and state the

{F3118979.1 } 10

substance of the facts and opinions to which the expert is expected to testify and a summary of

the ground for each opinion.


Identify each person who answered or provided information used in answering the

preceding interrogatories, specifying the particular interrogatories to which each person

answered or provided information.

Dated: July 15, 2019 FROSS ZELNICK LEHRMAN & ZISSU, P.C.

New York, New York

By:_____________________________________

James D. Weinberger ([email protected])

Melissa Goldstein ([email protected])

151 West 42nd Street, 17th Floor

New York, New York 10036

(212) 813-5900

Attorneys for Petitioner

{F3118979.1 } 11


I hereby certify that a copy of the foregoing document was sent by email to Registrant’s attorney at [email protected] this 15th day of July, 2019.

__________________________

James D. Weinberger

{F3212767.1 }

EXHIBIT B

1

James Weinberger

From: James WeinbergerSent: Thursday, August 15, 2019 9:01 AMTo: 'Ron Dicerbo'Cc: Melissa GoldsteinSubject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW

Ron, your client has failed to serve timely responses to our discovery requests by yesterday’s deadline. We expect immediate responses and a complete document production since all objections have been waived. If such responses are not forthcoming, please advise as to your availability for a meet and confer on an anticipated motion to compel. Regards – James James D. Weinberger | [email protected] Fross Zelnick | 212.813.5952

From: James Weinberger Sent: Monday, July 15, 2019 7:58 PM To: 'Ron Dicerbo' <RDICERBO@mcandrews‐ip.com> Cc: Melissa Goldstein <[email protected]> Subject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW Please see attached. James D. Weinberger | [email protected] Fross Zelnick | 212.813.5952

From: James Weinberger Sent: Thursday, June 13, 2019 1:46 PM To: Ron Dicerbo <RDICERBO@mcandrews‐ip.com> Subject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW That’s fine, will call you then. James D. Weinberger | [email protected] Fross Zelnick | 212.813.5952

From: Ron Dicerbo [mailto:RDICERBO@mcandrews‐ip.com] Sent: Thursday, June 13, 2019 1:41 PM To: James Weinberger <[email protected]> Subject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW Hello James, I had to meet with a client this morning and have not yet returned to the office. You will be able to reach me on my cell phone for our call at 1. The number is 847‐927‐9512.

Best regards,

Ron

2

From: [email protected] [mailto: [email protected]]

Sent: Monday, June 10, 2019 1:22 PM

To: Ron Dicerbo

Subject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW

Let’s do the 13th at 1CST/2EST. If that works, I’ll call you then. James D. Weinberger | [email protected] Fross Zelnick | 212.813.5952

From: Ron Dicerbo [mailto:RDICERBO@mcandrews‐ip.com] Sent: Monday, June 10, 2019 2:20 PM To: James Weinberger <[email protected]> Subject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW Hello James, I will be available at the following times. Please let me know if there is a time that works best for you. June 12, 13 (after 11 am CST), 14

Best regards,

Ron

Ronald A. DiCerbo Attorney at Law McAndrews, Held & Malloy, Ltd. 500 W. Madison St., 34th floor | Chicago, IL 60661 312-775-8193

[email protected]

www.mcandrews-ip.com

CONFIDENTIALITY NOTICE: This Material is intended for the named recipient and, unless otherwise expressly indicated, is confidential and privileged information. Any dissemination, distribution or copying of this material is prohibited. If you received this message in error, please notify the sender by replying to this message and then delete it from your system. Your cooperation is appreciated.


Sent: Monday, June 10, 2019 11:55 AM

3

To: Ron Dicerbo


Following up, please advise. James D. Weinberger | [email protected] Fross Zelnick | 212.813.5952

From: James Weinberger Sent: Thursday, June 06, 2019 8:43 AM To: 'rdicerbo@mcandrews‐ip.com' <rdicerbo@mcandrews‐ip.com> Subject: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW Mr. DiCerbo - I am counsel to Petitioner in the above-referenced proceeding. According to the March 11, 2019 Scheduling Order as extended on May 20, we are required to have our discovery conference by no later than June 19. Please let me know if there is a date between now and then (other than June 7, 17 and 18, when I am not in the office) that works for a call. Regards - James James D. Weinberger | Partner [email protected] Fross Zelnick Lehrman & Zissu, P.C. 151 West 42nd St., 17th Fl. | New York, NY 10036 T 212.813.5952 | F 212.813.5901

The information contained in this email message may be privileged, confidential, and protected from

disclosure. Any unauthorized use, printing, copying, disclosure or dissemination of this

communication may be subject to legal restriction or sanction. If you think that you have received

this email message in error, please reply to the sender.

{F3212767.1 }

EXHIBIT C

1

James Weinberger

From: James WeinbergerSent: Monday, August 19, 2019 7:29 AMTo: 'Ron Dicerbo'Cc: Melissa GoldsteinSubject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW

Following up, Ron, please advise. James D. Weinberger | [email protected] Fross Zelnick | 212.813.5952

From: James Weinberger Sent: Thursday, August 15, 2019 9:01 AM To: 'Ron Dicerbo' <RDICERBO@mcandrews‐ip.com> Cc: Melissa Goldstein <[email protected]> Subject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW Ron, your client has failed to serve timely responses to our discovery requests by yesterday’s deadline. We expect immediate responses and a complete document production since all objections have been waived. If such responses are not forthcoming, please advise as to your availability for a meet and confer on an anticipated motion to compel. Regards – James James D. Weinberger | [email protected] Fross Zelnick | 212.813.5952



From: Ron Dicerbo [mailto:RDICERBO@mcandrews‐ip.com] Sent: Thursday, June 13, 2019 1:41 PM To: James Weinberger <[email protected]> Subject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW

2

Hello James, I had to meet with a client this morning and have not yet returned to the office. You will be able to reach me on my cell phone for our call at 1. The number is 847‐927‐9512.

Best regards,

Ron



To: Ron Dicerbo




Best regards,

Ron


3

[email protected]





To: Ron Dicerbo








{F3212767.1 }

EXHIBIT D

1

James Weinberger

From: James WeinbergerSent: Thursday, August 22, 2019 2:20 PMTo: 'Ron Dicerbo'Cc: Melissa GoldsteinSubject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW

Ron, following up again. We can only assume from your silence that your client does not intend to respond and that you are unwilling to participate in a meet and confer. If this is not the case, please advise ASAP. Otherwise, we will file a motion to compel - James James D. Weinberger | [email protected] Fross Zelnick | 212.813.5952

From: James Weinberger Sent: Monday, August 19, 2019 7:29 AM To: 'Ron Dicerbo' <RDICERBO@mcandrews‐ip.com> Cc: Melissa Goldstein <[email protected]> Subject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW Following up, Ron, please advise. James D. Weinberger | [email protected] Fross Zelnick | 212.813.5952

From: James Weinberger Sent: Thursday, August 15, 2019 9:01 AM To: 'Ron Dicerbo' <RDICERBO@mcandrews‐ip.com> Cc: Melissa Goldstein <[email protected]> Subject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW Ron, your client has failed to serve timely responses to our discovery requests by yesterday’s deadline. We expect immediate responses and a complete document production since all objections have been waived. If such responses are not forthcoming, please advise as to your availability for a meet and confer on an anticipated motion to compel. Regards – James James D. Weinberger | [email protected] Fross Zelnick | 212.813.5952


2


From: Ron Dicerbo [mailto:RDICERBO@mcandrews‐ip.com] Sent: Thursday, June 13, 2019 1:41 PM To: James Weinberger <[email protected]> Subject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 (HYW Hello James, I had to meet with a client this morning and have not yet returned to the office. You will be able to reach me on my cell phone for our call at 1. The number is 847‐927‐9512.

Best regards,

Ron



To: Ron Dicerbo




Best regards,

Ron

3


[email protected]





To: Ron Dicerbo




4





{F3212767.1 }

EXHIBIT E

1

James Weinberger

From: Ron Dicerbo <[email protected]>Sent: Friday, August 23, 2019 5:27 PMTo: James WeinbergerCc: Melissa Goldstein; Joselyn MedinaSubject: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774Attachments: Response to Petitioner's First Set of Interrogatories.pdf; Response to Petitioner's First Set of

Document Request.pdf

Dear James, Please see the attached documents. With regard to the production of documents, I do not believe that we have established how the parties would like to exchange documents. I suggest that we exchange documents electronically using drop box. Is that acceptable to Honeywell? Also, pursuant to the discovery conference, the parties agreed to be bound by the standard protective order. Please confirm that is correct. Best regards, Ron DiCerbo

Ronald A. DiCerbo Attorney at Law McAndrews, Held & Malloy, Ltd. 500 W. Madison St., 34th floor | Chicago, IL 60661 312-775-8193 [email protected] www.mcandrews-ip.com

CONFIDENTIALITY NOTICE:

This material is intended for the named recipient and, unless otherwise expressly

indicated, is confidential and privileged information. Any dissemination, distribution

or copying of this material is prohibited. If you received this message in error,

please notify the sender by replying to this message and then deleting it from your

system. Your cooperation is appreciated.



)

HONEYWELL SAFETY PRODUCTS USA, INC. ) Cancellation No. 92070774 )

Petitioner, )

)

v. )

)

ERB INDUSTRIES, INC., )

)

Registrant. )

)

REGISTRANT’S RESPONSES TO PETITIONER’S FIRST SET

OF REQUESTS FOR THE PRODUCTION OF DOCUMENTS AND THINGS

Registrant ERB Industries, Inc. (“Registrant”), by and through its attorneys, objects and

responds to Petitioner Honeywell Safety Products USA, Inc.’s (“Petitioner”) First Set of

Interrogatories (the “Interrogatories”) as follows.

GENERAL OBJECTIONS

The General Objections set forth in Registrant’s Response to Petitioner’s First Set of

Interrogatories are incorporated herein by reference.

RESPONSES

Request No. 1

All Documents requested to be identified in Petitioner’s First Set of Interrogatories to

Registrant.

RESPONSE:

Registrant incorporates herein the objections raised in Registrant’s Responses to

Petitioner’s First Set of Interrogatories. Subject to and without waiving the General Objections or

the foregoing objections, Registrant will produce the non-privileged documents in its possession

responsive to this Request to the extent identified therein.

Request No. 2

All Documents consulted in preparing answers to Petitioner’s First Set of Interrogatories

to Registrant.

RESPONSE:

Registrant objects to this Request as vague, overbroad and unduly burdensome. Registrant

further objects to this Request on the grounds that it attempts to discover confidential/proprietary

information. Moreover, Registrant objects to this Request on the grounds that it seeks information

that is subject to the attorney-client privilege and/or work product doctrine. Subject to and without

waiving the General Objections or the foregoing objections, Registrant will produce the non-

privileged documents in its possession responsive to this Request to the extent identified therein.

Request No. 3

All Documents concerning or indicating the purpose or significance of Registrant’s Marks.

RESPONSE:



information. Subject to and without waiving the General Objections or the foregoing objections,

Registrant will produce the non-privileged documents in its possession responsive to this Request.

Request No. 4

All Documents Concerning Registrant’s conception, creation, meaning, adoption,

development, selection and first use of Registrant’s Marks.

RESPONSE:





Request No. 5

All drawings or specimens of any logos or designs used or contemplated for use as a

trademark by Registrant for the goods now sold under Registrant’s Marks.

RESPONSE:



information. Moreover, Registrant objects to this Request on the grounds of relevance to the extent

that it requests information regarding logos or designs not at issue in this matter. Registrant will

produce non-privileged documents identifying the design used as a trademark by Registrant for

Registrant’s Goods sold under Registrant’s Marks.

Request No. 6

All Documents concerning Registrant’s claim that Registrant’s Marks or any portion

thereof are inherently distinctive.

RESPONSE:

Registrant objects to this Request as vague, overbroad and unduly burdensome. Subject to

and without waiving the General Objections or the foregoing objections, Registrant will produce

the non-privileged documents in its possession responsive to this Request.

Request No. 7

Documents sufficient to show all instances of Registrant’s use of the Ridge Design in

documents concerning any of Registrant’s products.

RESPONSE:



a representative sample of non-privileged documents in its possession responsive to this Request.

Request No. 8

All documents concerning consumer understanding or perception of the Ridge Designs.

RESPONSE:





Request No. 9

All documents concerning consumer recognition of source-identifying function of the

Ridge Designs.

RESPONSE:



non-privileged documents in its possession responsive to this Request.

Request No. 10

All documents concerning or constituting Registrant’s business plans for offering products

and/or services under Registrant’s Marks.

RESPONSE:




Registrant will produce non-privileged documents in its possession responsive to this Request.

Request No. 11

All documents concerning the marketing of products bearing Registrant’s Marks, including

but not limited to documents concerning where such products and/or services are or will be sold,

when such products will or have been sold, and to whom such products will or have been sold.

RESPONSE:




Registrant will produce a representative sample of non-privileged documents in its possession

responsive to this Request.

Request No. 12


point-of-purchase displays, audio and video tapes concerning Registrant’s Marks, or displaying

the goods sold by Registrant under Registrant’s Marks.

RESPONSE:




Request No. 13


point-of-purchase displays, audio and video tapes in which Registrant specifically directs the

intended recipient to the Ridge Designs and/or Registrant’s Marks as an indication of source.

RESPONSE:




Request No. 14

A representative sample of each product, label, package, container, brochure price list,

promotional item or any other products distributed by or on behalf of Registrant bearing


RESPONSE:




Registrant will produce a representative sample of each product, label, package, container,

brochure price list, and promotional item bearing Registrant’s Mark in its possession responsive

to this Request.

Request No. 15

For each advertising media used (e.g., print, television, radio, internet, outdoor, point-of-

sale), representative samples of publicly-disseminated advertisements for products bearing


RESPONSE:

Subject to and without waiving the General Objections, Registrant will produce a

representative sample of publicly-disseminated advertisements for products bearing Registrant’s

Marks in its possession responsive to this Request.

Request No. 16

All press clippings or press releases concerning Registrant’s Marks or products offered

under or bearing Registrant’s Marks.

RESPONSE:



a representative sample of documents in its possession responsive to this Request.

Request No. 17

All market research concerning Registrant’s Marks.

RESPONSE:




Registrant states that it is unaware of any documents responsive to this request.

Request No. 18

All market research concerning consumer perception of any advertising for products

bearing Registrant’s Marks.

RESPONSE:




Registrant states that it is currently unaware of any documents responsive to this request.

Request No. 19

All documents concerning Registrant’s right to register Registrant’s Marks.

RESPONSE:





waiving the General Objections or the foregoing objections, Registrant will produce non-

privileged documents in its possession responsive to this Request.

Request No. 20

All documents, including all documents submitted to and received from the Patent and

Trademark Office or the trademark office of any state, concerning any application to register a

trademark or any trademark registration that contains the Ridge Designs granted to, considered,

applied for, sought or acquired by Registrant.

RESPONSE:







Request No. 21

All documents, including all documents submitted to and received from the Patent and

Trademark Office, concerning any application to register a patent or any patent that contains the

Ridge Designs granted to, considered, applied for, sought or acquired by Registrant.

RESPONSE:





waiving the General Objections or the foregoing objections, Registrant states that it is currently

unaware of any documents responsive to this request.

Request No. 22

All documents concerning any claim, demand, complaint, objection, opposition,

cancellation, administrative proceeding, legal opinion or civil action involving Registrant’s use of,

registration for, or application to register Registrant’s Marks whether instituted by Registrant or a

third party.

RESPONSE:







Request No. 23

All trademark searches conducted by or on behalf of Registrant for Registrant’s Marks.

RESPONSE:


further objects to this Request on the grounds that it seeks information that is subject to the

attorney-client privilege and/or work product doctrine. Subject to and without waiving the General

Objections or the foregoing objections, Registrant states that it is currently unaware of any

documents responsive to this request.

Request No. 24

All documents and things concerning third party use of the Ridge Designs or designs which

Registrant has contended or presently contends are confusingly similar thereto in connection with

the sale, marketing, advertising or marketing of any product, including but not limited to all cease

and desist letters, documents evidencing legal action and any settlement agreement or license

entered into as a result of such contention.

RESPONSE:




Objections or the foregoing objections, Registrant will produce non-privileged documents in its

possession responsive to this Request.

Request No. 25

All documents and things concerning third party use of a helmet design with ridges or

stacked ridges on the top, irrespective of whether Registrant has objected to or objects to same.

RESPONSE:




Objections or the foregoing objections, Registrant will produce non-privileged documents in its

possession responsive to this Request.

Request No. 26

All agreements, licenses, assignments, transfers of rights or the like concerning


RESPONSE:





Request No. 27

All settlement agreements, consent to use agreements, coexistence agreements or the like

concerning Registrant’s Marks entered into between Registrant and any third party.

RESPONSE:





Request No. 28

All Documents, including financial, accounting and corporate records concerning:

(a) money spent in advertising, marketing and promoting products and/or services

bearing or sold under Registrant’s Marks;

(b) projected costs for advertising and marketing products and/or services sold under

Registrant’s Marks; and

(c) sales of products and/or services under Registrant’s Marks.

RESPONSE:




Registrant will produce a representative sample of non-privileged documents in its possession

responsive to this Request.

Request No. 29

All documents and things concerning any challenges to use and/or registration by

Registrant of the Ridge Designs by any third party, including but not limited to Cancellation No.

92070801, and including but not limited to all cease and desist letters, documents evidencing legal

action and any settlement agreement or license entered into as a result of such challenges.

RESPONSE:







Request No. 30

For each expert Registrant intends to call to provide testimony in the proceeding, produce:

(a) all written reports relating to the issue(s) on which the expert will testify; (b) a complete written

statement of all opinions to be expressed by the expert, and the basis and reasons therefor; (c) all

Documents reflecting the data or other information considered by the expert in forming his

opinions; (d) all exhibits to be used by the expert in connection with his opinions and testimony;

(e) Documents sufficient to set forth the qualifications of the expert; (f) a written list of all

publications authored by the expert within the last ten years; (g) a list of all other cases in which

the expert has appeared or given testimony; and (h) all Documents showing the compensation to

be paid for the expert’s preparation time and testimony time.

RESPONSE:




Objections or the foregoing objections, Registrant responds that it is unaware of any document

responsive to this request.

Dated: August 23, 2019 Respectfully submitted,

/s/ Ronald A DiCerbo Ronald A DiCerbo

McANDREWS, HELD & MALLOY, LTD.

500 West Madison Street, 34th Floor

Chicago, Illinois 60661

(312) 775-8000


I hereby certify that on the date indicated below, a copy of the foregoing REGISTRANT’S

RESPONSES TO PETITIONER’S FIRST SET OF REQUESTS FOR THE PRODUCTION OF

DOCUMENTS AND THINGS was served upon Registrant’s counsel by electronic mail pursuant

to the agreement of the parties as follows:

James Weinberger

[email protected]

Date: August 23, 2019 By: /s/ Ronald A DiCerbo



)

HONEYWELL SAFETY PRODUCTS USA, INC. ) Cancellation No. 92070774 )

Petitioner, )

)

v. )

)

ERB INDUSTRIES, INC., )

)

Registrant. )

)

REGISTRANT’S RESPONSES TO PETITIONER’S FIRST SET OF INTERROGATORIES

Registrant ERB Industries, Inc. (“Registrant”), by and through its attorneys, objects and

responds to Petitioner Honeywell Safety Products USA, Inc.’s (“Petitioner”) First Set of

Interrogatories (the “Interrogatories”) as follows.

GENERAL OBJECTIONS

The following General Objections respond to all Interrogatories, whether or not

specifically repeated in the individual responses.

1. Registrant’s response to Petitioner’s first set of interrogatories is made to the best

of Registrant’s present knowledge, information, and belief. Registrant’s response is at all times

subject to, and without waiver of, such additional or different information that discovery or further

investigation may disclose.

2. Registrant’s recollection is subject to, and without waiver of, refreshing of

recollection, and such additional knowledge of facts as may result from Registrant’s further

discovery or investigation. Registrant reserves the right to make any use of any information and/or

documents responsive to Petitioner’s first set of interrogatories, but discovered subsequent to the

date of this response, including but not limited to any such information or documents obtained in

discovery herein.

3. To the extent that Registrant responds to Petitioner’s interrogatories by stating that

Registrant will provide information and/or documents which Registrant deems to embody material

that is private, business confidential, proprietary, trade secret, or otherwise protected from

disclosure pursuant to Federal rule of Civil Procedure 26(c)(7) and Federal Rule of Evidence 501,

Registrant will do so only pursuant to a protective order prohibiting the unauthorized use of

disclosure of such information.

4. Registrant reserves the right to object on any ground at any time to such other or

supplemental interrogatories as Petitioner may at any time propound involving or relating to the

subject matter of these interrogatories.

5. Registrant reserves the right to supplement its responses to Petitioner’s

interrogatories once Petitioner has produced documents in response to Registrant’s document

requests and interrogatories, deposition discovery is completed, and any third-party discovery is

completed.

6. Registrant objects to the Interrogatories to the extent that they are vague,

ambiguous, overbroad, harassing, unduly burdensome, indefinite, lacking in reasonable

particularity, and unlimited in scope of time.

7. Registrant objects to the Interrogatories to the extent that they purport to require

information in the possession, custody, or control of any person or entity other than Registrant.

8. Registrant objects to the Interrogatories to the extent that they purport to require

information that already is in the possession, custody, or control of, or otherwise is available to

Petitioner.

9. Registrant objects to the Interrogatories to the extent they seek material that

contains privileged attorney-client material, that constitutes attorney-work product, that was

prepared in anticipation of litigation, that constitutes or discloses the mental impressions,

conclusions, opinions or legal theories of any attorney or other representative of Registrant

concerning this or any other litigation, or that are otherwise protected from disclosure under any

other applicable privilege, immunity, or obligation of confidentiality. Such information or

documents shall not be provided in response to Petitioner’s Interrogatories and any inadvertent

disclosure or production thereof shall not be deemed a waiver of any privilege with respect to such

information or documents or of any work product immunity, which may attach thereto.

10. Registrant objects to the Interrogatories to the extent they are inconsistent with

and/or seek to impose requirements beyond those contained in the Federal Rules of Civil Procedure

and/or Trademark Trial and Appeal Board Manual of Procedure.

11. Registrant objects to the Interrogatories to the extent that they seek information that

is confidential, proprietary and/or trade secrets of Registrant.

12. Registrant objects to the Interrogatories to the extent that they seek information that

is neither material nor necessary to the prosecution or defense of this action.

13. In making these objections and responses to the Interrogatories, Registrant does not

in any way waive or intend to waive but rather intends to preserve and is preserving:

a. all objections as to competency, relevancy, and materiality of any objections,

responses and/or information provided in response to the Interrogatories;

b. all rights to object on any ground to the use in evidence, at trial or at any hearing of

any of these objections, responses and/or information provided in response to the

Interrogatories; and

c. all rights to object on any ground at any time to a demand for any further response

to this or any other interrogatories.

14. Registrant reserves the right to supplement or amend in any way its specific or

general objections or responses to any or all of the Interrogatories.

15. The following specific objections and responses are subject to the foregoing general

objections and responses (the “General Objections”), and the General Objections are incorporated

into each specific response set forth below.

RESPONSES

Interrogatory No. 1

Explain in detail the purpose of Registrant’s Marks.

ANSWER:

Registrant objects to this Interrogatory as overly broad and unduly burdensome. Registrant

further objects to this Interrogatory on the grounds that it attempts to discover

confidential/proprietary information. Subject to and without waiving the General Objections or

the foregoing objections, Registrant states that Registrant’s Marks distinguish Registrant’s Goods

from those of its competitors and serve as a source indicator for consumers.

Interrogatory No. 2

State why Registrant chose Registrant’s Marks.

ANSWER:




the foregoing objections, Registrant states that Registrant’s Marks were adopted to distinguish

Registrant’s Goods from those of its competitors and serve as a source indicator for consumers.

Interrogatory No. 3

Identify each person having information regarding the creation, selection, adoption, use

and applications for federal trademark registration of Registrant’s Marks.

ANSWER:




the foregoing objections, Registrant identifies Sheila Eads and Chris Padgett as having information

regarding the creation, selection, adoption, use and applications for federal trademark registration

of Registrant’s Marks.

Interrogatory No. 4

State when Registrant commenced use of Registrant’s Marks, explaining in detail how they

have been used and providing the date, manner and place of first use.

ANSWER:

Subject to and without waiving the General Objections, Registrant responds that it first

used the trademark in U.S. Registration No. 4493481 on the goods and the packaging for the goods

identified in that registration at least as early as August 30, 2004. Registrant first used the

trademark in U.S. Registration No. 4493482 on the goods and the packaging for the goods

identified in that registration at least as early as May 30, 2008.

Interrogatory No. 5

Identify all writings in the possession, custody or control of Registrant, including but not

limited to correspondence, investigative reports, search reports, Market Research, interoffice

memoranda, etc., referring or relating to the creation, adoption, use and application for federal

trademark registration of Registrant’s Marks.

ANSWER:


objects to this Interrogatory on the grounds that it attempts to discover confidential/proprietary

information. Registrant further objects to this Interrogatory on the grounds that it seeks

information that is subject to the attorney-client privilege and/or work product doctrine. Subject

to and without waiving the General Objections or the foregoing objections, Registrant states that

it is currently unaware of any non-privileged documents responsive to this request. Registrant’s

search continues and Registrant will produce any non-privileged documents responsive to this

request if and when they are identified.

Interrogatory No. 6

Identify all opinions concerning your right to register Registrant’s Marks or the existence

of possible conflicting marks.

ANSWER:









Interrogatory No. 7

State whether the Ridge Designs are or have ever been the subject of patent protection and,

if so, identify all documents concerning same.

ANSWER:

Subject to and without waiving the General Objections, Registrant states that Registrant’s

Marks are not nor have ever been the subject of patent protection.

Interrogatory No. 8

Identify those persons employed by Registrant who it reasonably believes to have the most

knowledge of the current and/or prospective sales, marketing, and channels of distribution of

products sold under Registrant’s Marks.

ANSWER:

Registrant objects to this Interrogatory on the grounds that it attempts to discover


the foregoing objections, Registrant states that Sheila Eads has knowledge about the current and/or

prospective sales, marketing, and channels of distribution of products sold under Registrant’s

Marks.

Interrogatory No. 9

Identify those persons employed by Registrant who it reasonably believes to have the most

knowledge of the class of purchasers to whom Registrant shall direct its promotion and sale efforts

for products sold under Registrant’s Marks.

ANSWER:



the foregoing objections, Registrant states that Sheila Eads has knowledge about the class of

purchasers to whom Registrant shall direct its promotion and sale efforts for products sold under



Identify representative copies of all advertising or promotional material, including but not

limited to tags, labels, posters, flyers, advertisements, catalogs, brochures and signs which have

ever been used or will be used by Registrant in connection with its products offered under


ANSWER:

Subject to and without waiving the General Objections, Registrant responds that it shall

produce representative copies of Registrant’s advertising or promotional materials used in

connection with Registrant’s Goods sold under Registrant’s Marks.


State whether Registrant has ever advertised or promoted its products in a manner that

specifically directs the intended recipient to the Ridge Designs and/or Registrant’s Marks as an

indication of source.

ANSWER:

Registrant objects to this Interrogatory as overly broad and unduly burdensome. Subject

to and without waiving the General Objections or the foregoing objection, Registrant states that

Registrant’s advertising or promotional material prominently display Registrant’s Goods and



Identify every trade show where Registrant’s products were advertised or sold in

connection with Registrant’s Marks and describe all details of the sales or promotions.

ANSWER:


to and without waiving the General Objections or the foregoing objection, Registrant responds that

it shall produce documents that identify trade shows at which Registrant’s Goods were advertised

or sold in connection with Registrant’s Marks.


Identify all written or electronic publications in which Registrant advertises or otherwise

refers to products offered for sale under Registrant’s Marks.

ANSWER:


to and without waiving the General Objections or the foregoing objection, Registrant responds that

it shall produce documents in which Registrant advertises or otherwise refers to products offered

for sale under Registrant’s Marks.


Identify all persons or organizations that have participated in the creation or distribution of

advertisements or promotional materials for each product promoted under Registrant’s Marks,

state the period of time during which each such person or organization so participated, and describe

briefly the nature of that person or organization’s participation.

ANSWER:



information. Registrant further objects to this interrogatory on the ground of relevance to the

extent that it requests information regarding third parties that participated in the creation or

distribution of advertisements or promotional materials for Registrant’s Goods. Subject to and

without waiving the General Objections or the foregoing objection, Registrant states that Sheila

Eads and Erb Industries’ employees have participated in the creation or distribution of

advertisements or promotional materials for each product promoted under Registrant’s Marks.


Identify all third party uses, in connection safety helmets, of the Ridge Designs or designs

which Registrant has contended or presently contends are confusingly similar thereto.

ANSWER:






it is aware of the North Zone hard hat being sold by Honeywell International Inc.


State what, if any, action has been taken by Registrant in connection with uses by others

of the Ridge Designs or designs which Registrant believes are confusingly similar thereto.

ANSWER:






it has been in communication with Mr. David A. Cohen of Honeywell International Inc. regarding

the design of the North Zone hard hat.


Identify all objections made or received by Registrant and all legal proceedings instituted

or defended by Registrant Concerning use of any designation of a third party relating to

Registrant’s Marks and for each such objection or legal proceeding:

(a) Identify the third party; and

(b) Identify all Documents Concerning to the objection or legal proceeding.

ANSWER:






it has been in communication with Mr. David A. Cohen of Honeywell International Inc. regarding

the design of the North Zone hard hat. Honeywell International Inc. has instituted the present

Cancellation Proceeding No. 92070774. ED Bullard Company has instituted Cancellation

Proceeding No. 92070801. Non-privileged documents responsive to this request shall be

produced.


Identify all agreements, including but not limited to licenses, permissions, consents,

assignments, mergers, or other transfers or ownership of rights, relating to Registrant’s Marks, and

Identify all Documents relating and/or referring to each such agreement.

ANSWER:




the foregoing objections, Registrant states that it has not licensed, franchised, or otherwise

authorized any party to use Registrant’s Marks.


Identify and describe any market research or trademark searches concerning Registrant’s

Marks that Registrant has caused to be conducted or plans to cause to be conducted, including

concerning the level of public recognition of Registrant’s Marks or the types of goods with which

consumers associate Registrant’s Marks.

ANSWER:










Identify any plans to change in any manner the nature of the goods you offer for sale under


ANSWER:


confidential/proprietary information. Registrant further objects to this interrogatory on the ground

of relevance to the extent that it requests information regarding Registrant’s plans to change

Registrant’s Goods in any manner in the future.


Identify each expert whose testimony you expect to place in evidence, and state the

substance of the facts and opinions to which the expert is expected to testify and a summary of the

ground for each opinion.

ANSWER:

Registrant objects to this Interrogatory to the extent it seeks information or documents

subject to the attorney-client privilege and/or work product doctrine. Subject to and without

waiving the General Objections or the foregoing objections, Registrant states that relevant experts

have not yet been identified.


Identify each person who answered or provided information used in answering the

preceding interrogatories, specifying the particular interrogatories to which each person answered

or provided information.

ANSWER:

Registrant objects to this Interrogatory to the extent it seeks information or documents

subject to the attorney-client privilege and/or work product doctrine. Subject to and without

waiving the General Objections or the foregoing objections, Registrant states that Sheila Eads and

Chris Padgett have participated in the preparation of the answers to the preceding interrogatories.

Dated: August 23, 2019 Respectfully submitted,

/s/ Ronald A DiCerbo Ronald A DiCerbo

McANDREWS, HELD & MALLOY, LTD.

500 West Madison Street, 34th Floor

Chicago, Illinois 60661

(312) 775-8000


I hereby certify that on the date indicated below, a copy of the foregoing REGISTRANT’S

RESPONSES TO PETITIONER’S FIRST SET OF INTERROGATORIES was served upon

Registrant’s counsel by electronic mail pursuant to the agreement of the parties as follows:

James Weinberger

[email protected]

Date: August 23, 2019 By: /s/ Ronald A DiCerbo

{F3212767.1 }

EXHIBIT F

1

James Weinberger

From: James WeinbergerSent: Friday, August 23, 2019 6:47 PMTo: Ron DicerboCc: Melissa Goldstein; Joselyn MedinaSubject: Re: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774

Ron, these are over a week late and therefore contain untimely objections. Please explain‐ James

James D. Weinberger | Partner [email protected] Fross Zelnick Lehrman & Zissu, P.C. 151 West 42nd St., 17th Fl. | New York, NY 10036 T 212.813.5952 | F 212.813.5901 On Aug 23, 2019, at 5:27 PM, Ron Dicerbo <RDICERBO@mcandrews‐ip.com> wrote:


<newsig_478998f7-dcac-4bfd-9018-4bdaeed41074111.PNG>








<Response to Petitioner's First Set of Interrogatories.pdf>

<Response to Petitioner's First Set of Document Request.pdf>

{F3212767.1 }

EXHIBIT G

1

James Weinberger

From: James WeinbergerSent: Wednesday, August 28, 2019 7:20 AMTo: Ron DicerboCc: Melissa Goldstein; Joselyn MedinaSubject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774

Ron, still waiting on this. James D. Weinberger | [email protected] Fross Zelnick | 212.813.5952

From: James Weinberger Sent: Friday, August 23, 2019 6:47 PM To: Ron Dicerbo <RDICERBO@mcandrews‐ip.com> Cc: Melissa Goldstein <[email protected]>; Joselyn Medina <JMedina@mcandrews‐ip.com> Subject: Re: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 Ron, these are over a week late and therefore contain untimely objections. Please explain‐ James

James D. Weinberger | Partner [email protected] Fross Zelnick Lehrman & Zissu, P.C. 151 West 42nd St., 17th Fl. | New York, NY 10036 T 212.813.5952 | F 212.813.5901 On Aug 23, 2019, at 5:27 PM, Ron Dicerbo <RDICERBO@mcandrews‐ip.com> wrote:


<newsig_478998f7-dcac-4bfd-9018-4bdaeed41074111.PNG>


2







<Response to Petitioner's First Set of Interrogatories.pdf>

<Response to Petitioner's First Set of Document Request.pdf>

{F3212767.1 }

EXHIBIT H

151 West 42nd Street, 17th Floor New York, NY 10036

{F3187922.1 }

James D. Weinberger

Partner

T 212.813.5952 [email protected]

frosszelnick.com / Fross Zelnick Lehrman & Zissu, P.C. F 212.813.5901

T 212.813.5900

September 5, 2019

BY EMAIL

Ronald A. DiCerbo, Esq.

McAndrews, Held & Malloy, Ltd.

500 W. Madison St., 34th floor

Chicago, IL 60661

[email protected]

Re: Honeywell Safety Products USA, Inc. v. ERB Industries,

Inc., Canc. No. 92070774 (HYW 1706738)

Dear Ron:

We have reviewed Registrant’s Responses to Opposer’s First Set of Requests for Production of Documents and Things and to Opposer’s First Set of Interrogatories (collectively, the

“Responses”). The Responses are deficient in numerous respects as set forth in detail below, and we write this letter pursuant to Trademark Rule of Practice 2.120(f) to determine whether

Registrant will voluntarily resolve these issues. If not, we will need to set up a conference to

attempt to resolve the issues and avoid motion practice.

I. Registrant’s Objections Have Been Waived

In the first instance, the Responses are improper because they contain objections. As you know,

we served discovery requests by email on July 15, 2019, making responses and objections due on

August 14, 2019. No responses were served by that date. While the Responses were ultimately

served on August 23, 2019, you have provided no explanation for their untimeliness despite

several inquiries. As such, objections have been waived. See Trademark Trial and Appeal

Board Manual of Procedure (“TBMP”) § 405.04(a) (“A party which fails to respond to interrogatories during the time allowed therefor, and which is unable to show that its failure was

the result of excusable neglect, may be found, on motion to compel filed by the propounding

party, to have forfeited its right to object to the interrogatories on their merits.”); TBMP § 406.04(a) (“A party which fails to respond to requests for production during the time allowed

therefor, and which is unable to show that its failure was the result of excusable neglect, may be

found, on motion to compel filed by the propounding party, to have forfeited its right to object to

the requests on their merits.”).


September 5, 2019

Page 2

{F3187922.1 }

As such, all of the objections in the Responses, including those as to privilege, are untimely and

improper. Unless you promptly provide us with an explanation that meets the “excusable neglect” standard, we will move to compel on this basis.

II. The Objections, Even if Timely, Are Improper

Even if the Responses and objections claimed therein were timely, they are improper in several

respects. In response to our client’s first set of discovery requests, Registrant asserts a number of

boilerplate and unsupported general objections not tied to any specific interrogatories or

document requests and without factual basis or specified justification. These objections include,

inter alia, that the discovery requests are objectionable in that they are “vague, ambiguous,

overbroad, harassing, unduly burdensome, indefinite, lacking in reasonable particularity, and

unlimited in scope of time” (Gen Obj. 6), and “to the extent that they seek information that is

neither material nor necessary to the prosecution or defense of this action” (Gen Obj. 12).

This is improper. Rule 34(b)(2)(B) requires Registrant to “state with specificity the grounds for objecting to [each] request, including the reasons.” Fed. R. Civ. P. 34(b)(2)(B) (emphasis

added). The same is true of Rule 33 as it relates to objections to interrogatories. Fed. R. Civ. P.

33(b)(4) (“The grounds for objecting to an interrogatory must be stated with specificity.”) Under these Rules, Registrant’s boilerplate and generalized objections are inadequate. Accordingly, in

the event that Registrant can establish the excusable neglect required to justify its untimely

responses, Registrant must amend the Responses to provide the required specificity.

The Responses also are insufficient because Registrant does not specify whether it is withholding

(or intends to withhold) any information or documents on the basis of its objections as required

under Federal Rules of Civil Procedure 33 and 34, as revised in 2015. Rule 34(b)(2)(C) requires

Registrant to state, unequivocally, “whether any responsive materials are being withheld on the basis of” any objections. Thus, Registrant must immediately amend the Responses to state,

unequivocally, whether it intends to withhold any documents or information on the basis of any

objection(s), and if so, which documents or information it is withholding on the basis of which

specific objection.

Furthermore, to the extent Registrant intends to claim privilege, it must provide Registrant with a

privilege log so that it can be in a position to review the propriety of the assertions made therein.

Finally, the Responses do not indicate when documents will be produced. Given your client’s waiver of objections, production should have been made together with the late responses. Please

advise when production will be made.

III. Specific Deficiencies in the Responses

In addition to these general issues, in Interrogatory 11, Petitioner posed a direct question to

Registrant as to whether it has ever “advertised or promoted its products in a manner that specifically directs the intended recipient to the Ridge Designs and/or Registrant’s Marks as an


September 5, 2019

Page 3

{F3187922.1 }

indication of source.” Registrant’s response was that it “prominently display[s]” the marks in

question in advertising, but this is not responsive. Please provide a supplemental response.

We also note that your response to Document Request 7 states that your client will produce a

“representative sample” of responsive documents where the request seeks only documents

“sufficient to show” all instances of use of your client’s marks. Given the narrow nature of the request, we expect that document sufficient to show all uses of your client’s claimed marks will be produced.

* * *

As you can see from the above, Registrant has failed to satisfy its discovery obligations. (We

expect that there may be additional issues with your client’s discovery once we have an opportunity to review any documents you intend to produce.) We look forward to having the

opportunity to discuss these issues with you soon in the hope that motion practice can be

avoided.

Very truly yours,

James D. Weinberger

212.813.5952

[email protected]

{F3212767.1 }

EXHIBIT I

1

James Weinberger

From: Ron Dicerbo <[email protected]>Sent: Monday, September 09, 2019 12:44 PMTo: James WeinbergerCc: Joselyn MedinaSubject: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774

Dear James, I am in receipt of your Letter regarding ERB’s discovery responses dated September 5, 2019. I am reviewing the issues raised in your letter with ERB and will respond shortly. I wrote you on August 23, 2019, and inquired how you would prefer to exchange documents and asked for written confirmation that the parties are bound by the standard protective order. I have not received a response to these questions. Therefore, unless I hear from you otherwise, I will produce ERB’s non‐confidential documents electronically using Dropbox. I request that you do the same for Honeywell’s documents. Once I have your written confirmation regarding the protective order, I will product ERB’s confidential documents the same way. Best regards, Ron DiCerbo








{F3212767.1 }

EXHIBIT J

1

James Weinberger

From: James WeinbergerSent: Monday, September 16, 2019 9:59 AMTo: 'Ron Dicerbo'Cc: 'Joselyn Medina'; Sean HarbSubject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774

Ron, following up on my letter of September 5, to which we have received no response - James James D. Weinberger | [email protected] Fross Zelnick | 212.813.5952

From: James Weinberger Sent: Monday, September 09, 2019 2:07 PM To: 'Ron Dicerbo' <RDICERBO@mcandrews‐ip.com> Cc: Joselyn Medina <JMedina@mcandrews‐ip.com>; Sean Harb <[email protected]> Subject: RE: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 Ron, the parties are already bound by the standard protective order by virtue of being parties to the cancellation. Electronic production via DropBox is fine. We will do electronic production via DropBox or a similar FTP link (we have our own in house) - James James D. Weinberger | [email protected] Fross Zelnick | 212.813.5952

From: Ron Dicerbo [mailto:RDICERBO@mcandrews‐ip.com] Sent: Monday, September 09, 2019 12:44 PM To: James Weinberger <[email protected]> Cc: Joselyn Medina <JMedina@mcandrews‐ip.com> Subject: Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Canc. No. 92070774 Dear James, I am in receipt of your Letter regarding ERB’s discovery responses dated September 5, 2019. I am reviewing the issues raised in your letter with ERB and will respond shortly. I wrote you on August 23, 2019, and inquired how you would prefer to exchange documents and asked for written confirmation that the parties are bound by the standard protective order. I have not received a response to these questions. Therefore, unless I hear from you otherwise, I will produce ERB’s non‐confidential documents electronically using Dropbox. I request that you do the same for Honeywell’s documents. Once I have your written confirmation regarding the protective order, I will product ERB’s confidential documents the same way. Best regards, Ron DiCerbo

2








{F3212767.1 }


I hereby certify that on this 23rd day of September, 2019, I have caused a copy of the

foregoing DECLARATION OF JAMES D. WEINBERGER IN SUPPORT OF

PETITIONER’S MOTION TO COMPEL and the Exhibits thereto to be sent by email to

Registrant’s Counsel at the email address [email protected].

________________________________

James D. Weinberger