ESTTA Tracking number: ESTTA1111773 02/02/2021

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

ESTTA Tracking number: ESTTA1111773

Filing date: 02/02/2021

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91243622

Party DefendantStraight Arrow Products, Inc.

CorrespondenceAddress

DOUGLAS PANZERCAESAR RIVISE PC1635 MARKET ST 12TH FLOORPHILADELPHIA, PA 19103UNITED STATESPrimary Email: [email protected] Email(s): [email protected]

Submission Opposition/Response to Motion

Filer's Name Douglas Panzer

Filer's email [email protected], [email protected]

Signature /Douglas Panzer/

Date 02/02/2021

Attachments S229540001 - Response in Opposition to Second Motion to Com-pel.PDF(286007 bytes )Exhibit A.pdf(340410 bytes )Exhibit B.pdf(696963 bytes )Exhibit C.pdf(1081189 bytes )Exhibit D.pdf(1293710 bytes )Exhibit E.pdf(254563 bytes )Exhibit F.pdf(388092 bytes )Exhibit G bw.pdf(711671 bytes )Exhibit H_bw_sm.pdf(1431554 bytes )Exhibit I.pdf(205158 bytes )Exhibit J.pdf(3487461 bytes )Exhibit L.pdf(1011340 bytes )Exhibit M.pdf(689941 bytes )

http://estta.uspto.gov

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Rocky Mountain Natural Labs, LLC |

|

Opposer, | Opposition No. 91243622

|

v. | Serial No. 87631636

|

Straight Arrow Products, Inc., | Published: August 21, 2018

|

Applicant. | Mark: COWGIRL MAGIC

|

APPLICANT’S RESPONSE IN OPPOSITION TO

SECOND MOTION TO COMPEL AND REQUEST FOR 30(b)(6) DISCOVERY

DEPOSITION OF STRAIGHT ARROW PRODUCTS, INC.

I. Introduction

Before the Board is the untimely motion of Opposer Rocky Mountain Natural Labs, LLC

(“RMNL”) – filed literally the day before RMNL’s already-extended deadline to make pretrial

disclosures – seeking (i) to compel Applicant Straight Arrow Products, Inc. (“Straight Arrow”)

to supplement its document production to include materials created after the discovery deadline

and (ii) to reopen discovery so that RMNL may take a deposition of Straight Arrow despite the

fact that it never sought to take such deposition at any time during the more than two years since

discovery opened in this proceeding. 40 TTABVUE.

This motion should be denied because:

1. The motion is untimely, filed 9 months after the close of discovery, and Opposer

makes no showing of “excusable neglect”, the standard of the Board;

2. Opposer seeks, by this motion, a deposition that it never sought during the formal

discovery period in this proceeding, which lasted for more than 500 days;

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3. Opposer seeks, by this motion, to compel the production of documents created

after the close of discovery, which are duplicative and/or cumulative of the

information already provided through discovery, essentially creating an endless

discovery period inconsistent with Fed. R. Civ. P. 26(e)1;

4. This is the second motion of Opposer after the close of the discovery period and

addresses purported issues that would have been known to Opposer at the time of

the first post-discovery motion but were not raised;

5. Opposer argues, by this motion, that it has an exceptional need to reopen

discovery on the topic of “channels of trade”, which RMNL stated from the outset

of this litigation, through its own discovery responses, were:

a. Not required to be produced because the information was publicly

available and “not proportional to the issues in this case”, See Exh. A,

RMNL Responses to Applicant’s First Requests for Production at

Response 8; and

b. Not required to be produced because a request for such information

“exceeds the scope of discovery”, Id. at Response 32.

The discovery period in this proceeding closed on April 17, 2020. (28 TTABVUE 1).

During that period, which lasted more than 500 days and began more than two years ago, on

November 25, 2018, (2 TTABVUE 3), Opposer never sought to take a deposition in this

1 “Fed. R. Civ. P. 26(e) is not intended to create never ending discovery obligations or continuous

rolling discovery. Oppo. at 13 (citing Our Children's Earth v. Leland Stanford Jr. Univ., 2015 U.S. Dist. LEXIS

188302, 2015 WL 12964638, at *3 (N.D. Cal. Oct. 29, 2015) (noting that "the duty to supplement under Rule 26(e)

does not automatically supersede the fact discovery cutoff as to developments thereafter that relate to prior requests

for discovery made before the cutoff" and that "endless rolling production would undermine" the just, speedy, and

inexpensive determination of cases and the need of proportionate discovery). Thompson v. Ret. Plan for Emples. of

S.C. Johnson & Sons, Inc., No. 07-CV-1047, 2010 U.S. Dist. LEXIS 78865, at *3-4 (E.D. Wis. July 12, 2010)

(motion to compel denied); See further analysis in Section IV, infra.

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proceeding until the filing of the present motion. As more fully set forth below, Straight Arrow

has made thorough document productions and has already provided supplementation of written

discovery responses – in each case providing more information on each issue in this proceeding

than the Opposer has.

This motion is untimely, it is dilatory, and there is no excusable reason for RMNL’s

delay in this instance, or overall in this proceeding, sufficient to justify any further extension of

time or the reopening of discovery. Applicant respectfully submits that this motion must be

denied.

II. RMNL’s motion is an untimely motion to reopen discovery and the requested relief is only available upon a demonstration of excusable neglect by RMNL

“Where the time for taking required action, as originally set or as previously reset, has

expired, a party desiring to take the required action must file a motion through ESTTA to reopen

the time for taking that action. The movant must show that its failure to act during the time

previously allotted therefor was the result of excusable neglect.” TBMP § 509.01(b)(1)

(citing Fed. R. Civ. P. 6(b)(1)(B)).

The conducting of discovery, including the taking of depositions and the filing of motions

to compel, is an action controlled by this standard. “Discovery depositions must be properly

noticed and taken during the discovery period.” TBMP § 509, 37 C.F.R. § 2.120(a)(3).

“Pursuant to Fed. R. Civ. P. 6(b), made applicable to Board proceedings by 37 C.F.R. § 2.116(a),

a party may file a motion for an extension of the time in which an act may or must be done…If,

however, the motion is not filed until after the expiration of the period as originally set or

previously extended, the motion is one to extend a period that has closed (often referred to as a

motion to ‘reopen’), and the moving party must show that its failure to act during the time

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allowed therefor was the result of excusable neglect.” This motion is, therefore, a motion to

reopen discovery and the standard of the Board requires that the movant, RMNL, demonstrate

excusable neglect in not previously taking the actions it now endeavors to take. RMNL has

made no attempt whatsoever to address this burden.

III. No excusable neglect exists: RMNL has delayed throughout these proceedings and

has made no statements in its motion attempting to excuse its neglect

Straight Arrow reiterates that RMNL never sought a single deposition in this proceeding,

despite the discovery period lasting for 509 days, from November 25, 2018 to April 17, 2020. In

Polyjohn Enters. Corp. v. 1-800-Toilets, Inc. the Board succinctly stated that “Petitioner brought

this case and, in so doing, took responsibility for moving it forward in accordance with the

trial schedule, but failed to do so.” 2002 TTAB LEXIS 34, *8-9 (Trademark Trial & App. Bd.

February 28, 2002) (citing See Atlanta-Fulton County Zoo, Inc. v. DePalma, 45 USPQ2d 1858,

1860 (TTAB 1998)). “When, as in this case, a party…did not attempt to depose its adversary

during the prescribed discovery period, a motion to extend discovery will ordinarily be

denied.” NFL v. DNH Mgmt., LLC , 2008 TTAB LEXIS 3, *4 (Trademark Trial & App. Bd.

January 29, 2008)(citing Luemme, Inc. v. D.B. Plus, 53 U.S.P.Q.2d (BNA) 1758, 1760 (TTAB

1999)).

The Board has so held in similar scenarios many times and Straight Arrow respectfully

submits the same is appropriate here. In San Juan Pools of Okla., Inc. v. San Juan Prods, the

Board denied a motion to reopen discovery finding “that the motion [wa]s untimely, brought two

and a half months after the close of discovery…[and] Opposer has not established excusable

neglect which would support the reopening of discovery.” 1999 TTAB LEXIS 303, *11

(Trademark Trial & App. Bd. July 13, 1999). RMNL’s present motion is its second motion after

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the discovery deadline and comes nine months after that date (and one day before its deadline for

pretrial disclosures).

In Luemme, Inc. v. D.B. Plus Inc. the Board denied a cancellation petitioner’s motion to

extend discovery, filed on the last day of an already-extended discovery period, observing, as

here, that the moving party had “never made any effort to depose respondent during the initial

discovery period.” 1999 TTAB LEXIS 726, *7 (Trademark Trial & App. Bd. April 12, 1999).

Relying upon that failure of the movant to seek depositions during the formal discovery period,

the Board admonished that “[t]o the extent that petitioner was truly concerned about whether it

could proceed with taking the discovery deposition of respondent, petitioner could have taken

steps to avoid this situation in the first instance. For example, petitioner could have diligently

pursued discovery earlier in the discovery period.” Id. at *9. RMNL has never been at all

concerned with taking any deposition in this matter – until the day before its pretrial disclosures

were due.

A. RMNL’s cited precedent reinforces that RMNL is not entitled to the relief it seeks

Indeed, the sole opinion of the Board that RMNL cites in its present motion, (40

TTABVUE 8-9), presents facts similar to this proceeding and confirms that RMNL must, but

cannot, meet the “excusable neglect” standard. In that proceeding, the Board wrote that “under

our system of representative litigation, a party must be held accountable for the acts and

omissions of its chosen counsel…for purposes of making the ‘excusable neglect’ determination.”

Pumpkin, Ltd. v. Seed Corps, 1997 TTAB LEXIS 24, *12 (Trademark Trial & App. Bd. July 7,

1997). Beyond simply denying the motion, the Board in Pumpkin, Ltd. found that the opposer in

that case failed to demonstrate excusable neglect, denied the motion to reopen, and dismissed the

opposition with prejudice. Id. at *22-24.

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In Pumpkin, Ltd., the Board pointedly stated that “The Board, and parties to Board

proceedings generally, clearly have an interest in minimizing the amount of the Board's time and

resources that must be expended on matters, such as most contested motions to reopen time,

which come before the Board solely as a result of sloppy practice or inattention to deadlines on

the part of litigants or their counsel. The Board's interest in deterring such sloppy practice weighs

heavily against a finding of excusable neglect, under the second Pioneer factor.” Id. at *21.

These principles strongly argue for denying RMNL’s motion. It should not go unsaid

that, without limitation, RMNL and its counsel in this matter:

Missed the actual discovery deadline of April 15, 2020, in this proceeding, failing

to serve responses to Straight Arrow’s discovery requests and emergently seeking

the intervention of the Board by ex parte telephone conference on April 16, 2020,

in order to obtain an extension to April 17, 2020, Exh. B, Email of K. Jahn to D.

Panzer, 4/15/2020 at 7:26 PM, See also 28 TTABVUE;

Failed to timely respond to Straight Arrow’s First Request for Production of

Documents and Things, despite Straight Arrow agreeing to an extension of time

for the same, Exh. C, Email of K. Jahn to D. Panzer, 3/15/2019 at 6:46 PM; Exh.

D, Emails Between K. Jahn and D. Panzer, 3/25/2019 at 5:19 PM to 3/29/2019 at

8:09 PM;

Never produced a single document or interrogatory response showing sales

figures or marketing expenditures in connection with RMNL’s products under the

asserted marks, affirmatively declining to do so and claiming that such

information was unduly burdensome, Exh. E, D. Panzer Ltr. to K. Jahn, June 21,

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2019 at ¶¶ 1-2, Exh. F, Opposer’s Response to Applicant’s First Set of

Interrogatories at Response 1;

Never sought to depose any witness; and

Have now twice filed discovery motions mere days prior to RMNL’s pretrial

disclosure deadline. See 29 TTABVUE, 40 TTABVUE.

In seeking an extension of time for discovery or, as here, to reopen discovery, “[t]he

moving party…retains the burden of persuading the Board that it was diligent in meeting its

responsibilities and should therefore be awarded additional time.” Trans-High Corp. v. JFC

Tobacco Corp. , 2018 TTAB LEXIS 208, *7 (Trademark Trial & App. Bd. July 2, 2018) (citing

Nat'l Football League v. DNH Mgmt., LLC, 85 USPQ2d 1852, 1854 (TTAB 2008), Sunkist

Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147 (TTAB 1985)). RMNL has at no point in

this proceeding prosecuted it in a manner that can reasonably meet this burden.

B. Every Federal Circuit Court of Appeals in the United States has affirmed the

denial of motions to compel on the same or similar facts

In addition to the numerous precedents of the Board, every Circuit Court in the United

States, reviewing determinations of motions similar to the present motion, has agreed that such

delay in the filing of a motion – particularly where coupled with lack of diligence – is, in itself,

sufficient reason to deny the motion.2 Just one example of the cases presented in footnote 2,

2 1

st Circuit: See Ayala-Gerena v. Bristol Myers-Squibb Co., 95 F.3d 86, 94 (1st Cir. 1996) (finding no

abuse of discretion by the district court in denying "what was clearly Appellants “untimely motion to

compel document production" where "Appellants waited more than one month after the second extended discovery

deadline had elapsed to properly request an order from the district court"); 2nd

Circuit: See Richardson v. City of

N.Y., 326 F. App'x 580, 582 (2d Cir. 2009) (“district court did not abuse its discretion in denying Plaintiff's motion

to compel discovery, which was filed over one month after the close of discovery, as untimely.”); 3rd Circuit: See

Laughlin v. Peck, 552 F. App'x 188, 192 (3d Cir. 2014) (Affirmed district court, stating that “[b]ecause the case had

been pending for almost two years, the District Court did not abuse its discretion in denying Laughlin's motion to

compel answers to untimely discovery requests.”); 4th Circuit: See Gulfstream, Inc. v. Palm Yacht Sales, No. 94-

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each of which supports Straight Arrow’s present opposition, is Pittman v. Experian Info. Sols.,

Inc., 901 F.3d 619 (6th Cir. 2018), in which the court of appeals affirmed the district court’s

denial of a motion to compel depositions after the close of discovery “[i]n light of Pittman's lack

of diligence and failure to conduct any depositions” during the formal discovery period, where

“[t]hough Pittman had more than eight months to depose iServe representatives, he did not

conduct any depositions during those months.” Pittman at 643. Here, RMNL had from

November 25, 2018 to April 17, 2020 to seek a deposition and never did so. And intermittent

2155, No. 94-2381, No. 95-1144, 1999 U.S. App. LEXIS 7208, at *9 (4th Cir. Apr. 12, 1999) (Affirmed denial of

motion to compel and reopen discovery finding “that each side had ample time to conduct discovery. The court noted that the case had been pending for approximately two years, that the court had allowed discovery to be

reopened once following expiration of the initial discovery period, and that the second discovery period had also

expired…[and] [t]he plaintiff filed no motions to compel prior to the cutoff date for discovery.”); 5th Circuit: See

Outley v. Luke & Assocs., 840 F.3d 212, 220 (5th Cir. 2016) (Affirming district court’s denial of plaintiff’s motion to compel where “her motion as untimely because she filed it a week after the deadline for discovery requests.”); 6th

Circuit: See Pittman v. Experian Info. Sols., Inc., 901 F.3d 619, 643 (6th Cir. 2018) (Affirming denial of motion to

compel depositions after discovery period “[i]n light of Pittman's lack of diligence and failure to conduct any depositions” where “[t]hough Pittman had more than eight months to depose iServe representatives, he did not conduct any depositions during those months.”); 7th

Circuit: See Packman v. Chi. Tribune Co., 267 F.3d 628, 647

(7th Cir. 2001) (Circuit court affirmed district court’s denial of plaintiff’s motion to compel after the close of discovery, reasoning “in light of her lack of diligence in pursuing the perceived inadequacies in discovery, the district court did not abuse its discretion in denying Ms. Packman's motion to compel as untimely.”); 8th

Circuit:

See Firefighters' Inst. for Racial Equal. v. City of St. Louis, 220 F.3d 898, 903 (8th Cir. 2000) (Affirming lower

court’s denial of motion to compel additional discovery, including a deposition, where the moving party filed its

motion three days after the court’s discovery motion deadline, which was eleven days after the close of discovery.); 9

th Circuit: See McIntosh v. Wells Fargo Bank, NA, 667 F. App'x 245, 245 (9th Cir. 2016) (Affirmed denial of

motion to compel, stating “district court did not abuse its discretion in denying McIntosh's motion to

compel because discovery had closed and McIntosh did not demonstrate good cause for the untimely motion.”); 10th

Circuit: See Mollinger-Wilson v. Quizno's Franchise Co., 122 F. App'x 917, 920 (10th Cir. 2004) (Affirming the

order of the district court denying motion where the “district court held that plaintiffs' request to take additional depositions was untimely because the deadline for discovery had expired, that plaintiffs had not employed previous

opportunities to take depositions, and that plaintiffs had presented inadequate proof that additional depositions were

necessary.”); 11th Circuit: See El-Saba v. Univ. of S. Ala., 738 F. App'x 640, 644 (11th Cir. 2018) (Affirming

district court’s denial of motion for deposition after the discovery deadline where “[a]pproximately two weeks after the close of discovery, El-Saba filed a motion to compel in which he sought production of certain of the University's

attorney notes and emails; a reopening of discovery as to Steadman, Johnson, and in-house University counsel;

disqualification of defense counsel; and a reopening of Alam's deposition. A magistrate judge denied the motion,

finding that it was untimely and that—because El-Saba never moved for an extension of the discovery deadline

before the close of discovery, waited until very late in the discovery period to take [**9] contentious depositions,

and waited almost two weeks after the close of discovery to file the motion to compel—he had not shown diligence

justifying the filing of his out of time motion.”); Federal Circuit: See Malico, Inc. v. Cooler Master USA Inc., 594

F. App'x 621, 625 (Fed. Cir. 2014) (Observing district court’s holding that “Malico's motion to compel was filed

months after the close of discovery and was denied as untimely.”)

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suspensions of the proceedings for the determination of motions do not alleviate this failure, as

Opposer never even mentioned the possibility of such deposition.

IV. RMNL’s proposed interpretation of Rule 26(e) is contrary to the intent of the Rule

and would never permit a case to be considered ready for trial

With respect to the portion of this motion seeking to compel Straight Arrow to

supplement its responses to document requests, RMNL cites the duty of supplementation under

Fed.R.Civ.P. 26(e), but seeks to extend that duty in a manner that would indefinitely extend this

proceeding, so that it will never proceed to trial. “Fed. R. Civ. P. 26(e) is not intended to create

never ending discovery obligations or continuous rolling discovery. Oppo. at 13 (citing Our

Children's Earth v. Leland Stanford Jr. Univ., 2015 U.S. Dist. LEXIS 188302, 2015 WL

12964638, at *3 (N.D. Cal. Oct. 29, 2015) (noting that "the duty to supplement under Rule 26(e)

does not automatically supersede the fact discovery cutoff as to developments thereafter that

relate to prior requests for discovery made before the cutoff" and that "endless rolling production

would undermine" the just, speedy, and inexpensive determination of cases and the need of

proportionate discovery) and Kuhns v. City of Allentown, 2010 U.S. Dist. LEXIS 113813, 2010

WL 4236873, at *3 (E.D. Pa. Oct. 26, 2010) (noting that to allow supplementation "would be to

invite rolling discovery in a way that would unfairly burden [Defendant] and indefinitely

postpone trial")).” Campos-Eibeck v. C R Bard Inc., No. 19cv2026-W(BLM), 2020 U.S. Dist.

LEXIS 30189, at *15 (S.D. Cal. Feb. 20, 2020). The interpretation that RMNL seeks “creates

the appearance of a general and on-going duty of supplementation throughout the entire life of an

action, regardless of the procedural posture of the case or the relative significance of

the discovery to a final resolution. The language of rule 26(e) does not support such a broad and

continuous duty but, instead, states that a party must supplement its discovery disclosures and

10

responses only if ‘the party learns that in some material respect the disclosure or response is

incomplete or incorrect.’ Fed. R. Civ. P. 26(e)(1)(A). Thus, the duty to supplement is triggered

when a party later becomes aware of information or documents that undermine the accuracy or

completeness of its original discovery responses.” Thompson v. Ret. Plan for Emples. of S.C.

Johnson & Sons, Inc., No. 07-CV-1047, 2010 U.S. Dist. LEXIS 78865, at *3-4 (E.D. Wis. July

12, 2010) (motion to compel denied; emphasis in original).

Straight Arrow has complied with its discovery obligations, indeed timely producing

documents on at least March 25, 2019, April 15, 2020, April 17, 2020 and responding to

interrogatories on March 25, 2019. Straight Arrow has also supplemented its discovery after the

close of discovery – first on October 30, 2020, in compliance with the order of the Board on

RMNL’s first motion to compel, 33 TTABVUE, and then on December 13, 2020, in a voluntary

and cooperative manner that was arguably beyond its obligations based on the timing of the

supplementation. This presents a complete body of evidence, ready for trial. There is no

information that existed prior to the discovery deadline, that is not cumulative or duplicative, and

that has not been sufficiently conveyed by Straight Arrow to RMNL through the discovery

process. That is, there is nothing that undermines the accuracy of Straight Arrow’s discovery

responses in this proceeding or renders them incomplete or incorrect.

For avoidance of any doubt, specifically addressing the question of discovery regarding

channels of trade and actual use in commerce, RMNL has been aware since at least April 15,

2020, of Straight Arrow’s commencement of use of the COWGIRL MAGIC mark. On that date

(during the formal discovery period), Straight Arrow timely produced to RMNL documents

evidencing public advertising3, documents identifying the website associated with Straight

3 See, e.g. Exh. G, Document 000601 and Exh. H, 000606-000611.

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Arrow’s Cowgirl Magic product4 (which, in turn, links directly to an Amazon.com listing for a

hand lotion product under the COWGIRL MAGIC mark), documents internally discussing the

aforementioned advertising5, and a video of Straight Arrow’s unveiling of the product at the

American Horse Publications 2019 Conference.6

In addition to these timely produced documents, Straight Arrow had informed RMNL as

early as March 25, 2019, that “goods of the type identified in U.S. Trademark Application Serial

No. 87/631636 are intended to be sold via wholesale distribution, direct internet sales, and to

retailers and distributors of human skincare products and equestrian tack stores.” Exh. I,

Applicant’s Answers and Objections to Opposer’s Interrogatories, March 25, 2019, at Response

4. Notably, this is at least as specific as RMNL’s own statement as to channels of trade, which it

described by stating that “Opposer’s goods move in all channels of trade that would be normal

for such goods, including hundreds of retail stores located throughout the country, on-line stores

(e.g. Amazon.com, Pharmaca.com) and national rodeo events.” Exh. F at Response 16.

V. RMNL has abused the privilege of extensions in this proceeding and has not

diligently prosecuted this case

Compounding its failure to show excusable neglect in connection with this motion to

reopen discovery are RMNL’s copious uses of the privilege of extension in this proceeding.

“The Board is generally liberal in granting extensions of time so long as the moving party has

not been guilty of negligence or bad faith and the privilege of extensions is not abused.”

Roederer v. J. Garcia Carrion, S.A. , 2004 TTAB LEXIS 235, *12 (Trademark Trial & App. Bd.

April 15, 2004) (citing Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710

4 See Exh. J, Document 000584-000586.

5 See Exh. K, Document 000443 (filed under seal).

6 Document 000320, timely produced to Opposer on April 15, 2020, is not submitted herewith due to large

file size of approximately 1.06 GB.

12

(Fed. Cir. 1991); American Vitamin Products, Inc. v. DowBrands Inc., 22 USPQ2d 1313 (TTAB

1992); and Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147 (TTAB 1985)).

RMNL, despite initiating this proceeding, has initiated extensions of the schedule at least four

times, including the present motion.

Straight Arrow consented, in good faith, to RMNL’s request for an extension of time

early in these proceedings, on December 21, 2018. (5 TTABVUE). Upon determination of a

motion more recently in this proceeding, the Board’s order of April 16, 2020, (28 TTABVUE),

set the date for RMNL’s pretrial disclosures on June 1, 2020. Less than two weeks before that

deadline, on May 18, 2020, RMNL filed a Motion to Compel. (29 TTABVUE). Upon

disposition of that motion on October 1, 2020, the Board reset the date for RMNL’s pretrial

disclosures for November 16, 2020. (33 TTABVUE). Straight Arrow then consented to two

more requests of RMNL to extend that deadline – in part as a professional courtesy in view of

the withdrawal of one of RMNL’s attorneys7 – on November 12, 2020, Exh. L, and December

11, 2020, Exh. M., each time only four days prior to RMNL’s reset pre-trial disclosure deadline.

These extensions ultimately led to the RMNL’s pretrial deadline being moved to January 14,

2021. (36-39 TTABVUE).

RMNL filed this motion literally the day before its pretrial deadline. As demonstrated in

the immediate prior section, the instant motion now complains of characteristics of Straight

Arrow’s discovery of which RMNL was well aware at least prior to the fling of its May 18, 2020

motion and, in some cases, as far back as March 25, 2019. RMNL’s May 18 motion did not

address the topic before the Board, which would have been known to RMNL at that time had it

7 Note that RMNL’s remaining counsel has been counsel of record since August, 12, 2019, (11 TTABVUE)

and the recent withdrawal of her former co-counsel, (34 TTABVUE), should not have any bearing on the ability to

prosecute this matter.

13

needed to be addressed. As also demonstrated, the information that Straight Arrow provided

addressed the complained of topics during the formal discovery period by way of substantive,

documentary evidence and written interrogatory responses consistent in nature and depth with

those of RMNL. See Section IV, supra.

RMNL has now abused the privilege of extensions in this proceeding and is seeking to

avoid its obligation to prosecute its case. “A party may not wait until the waning days of the

discovery period”, or in this case the eve of pre-trial disclosures, “and then be heard to complain

that he needs an extension of the discovery period in order to take additional discovery.”

Luehrmann v. Kwik Kopy Corp., 1987 TTAB LEXIS 77, *6-7 (Trademark Trial & App. Bd.

March 25, 1987). The motion before the Board now seeks to reopen discovery, literally on the

eve of the trial period. “[T]he Board should not have to remind petitioner that it brought this

[opposition] proceeding in the first instance, and that it carries the burden of going forward in a

timely manner.” Luemme, Inc. v. D.B. Plus Inc., 1999 TTAB LEXIS 726, *8 (Trademark Trial

& App. Bd. April 12, 1999). Any further extension is an abuse of the practice by RMNL and

should be denied.

Dated: February 2, 2021

Respectfully Submitted,

Caesar Rivise, PC

Attorneys for Applicant

By: __________________________

Douglas Panzer

1635 Market Street

12th

Floor

Philadelphia, PA 19103

215-567-2010

[email protected]

mailto:[email protected]

14

CERTIFICATE OF SERVICE

I HEREBY CERTIFY that, on February 2, 2021, I caused a true and correct copy of the

foregoing Applicant’s Response in Opposition to Second Motion to Compel and Request for

30(B)(6) Discovery Deposition of Straight Arrow Products, Inc., including all lettered exhibits

thereto, to be sent via electronic mail to attorney for Opposer:

Joy Woller

Lewis Roca Rothgerber Christie LLP

1200 17th Street, Suite 3000

Denver, Colorado 80202-5855

[email protected]

I further certify that I have filed a true and correct copy of the foregoing via ESTTA and

that such is therefore available for viewing and download.

_______________________________

Douglas Panzer

mailto:[email protected]

EXHIBIT A

1



Rocky Mountain Natural Labs, LLC Opposition No. 91243622

Opposer

v. Serial No. 87/631636

Straight Arrow Products, Inc.

Applicant

______________________________________________________________________

RESPONSE TO APPLICANT’S FIRST REQUEST FOR PRODUCTION OF DOCUMENTS AND THINGS

_____________________________________________________________________

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

Opposer, hereby responds as follows to Applicant’s First Request for Production of

Documents and Things. Due to the amount of document requests and responsive

documents, Opposer will produce responsive documents via flash drive to Applicant.

OBJECTIONS TO DEFINITIONS AND INSTRUCTIONS

1. Opposer objects to the definitions of “Opposer,” “you,” and “your,” as

overly broad and unduly burdensome because they encompass entities and persons

that are not related to this proceeding. Opposer will interpret “Opposer” as meaning

Rocky Mountain Natural Labs, LLC, its predecessors in interest and its wholly owned

subsidiaries.

2. Opposer objects to each Request to the extent it seeks or calls for information

protected by the attorney-client privilege and or protected by the work-product doctrine,

or subject to any other applicable privilege.

3. Opposer objects to each Request to the extent it seeks information that is

neither relevant nor reasonably calculated to lead to the discovery of admissible

evidence.

4. Opposer objects to each Request to the extent it purports to call for

information not in their possession, custody or control.

2

5. Opposer objects to the definition of “all documents” as being overbroad, unduly

burdensome, vague and ambiguous.

6. Opposer objects to each Request to the extent it seeks to impose

requirements and/or obligations inconsistent with and in addition to, the Federal Rules of

Civil Procedure, the Federal Rules of Evidence and/or Rules of this tribunal, and that are

unduly burdensome and not proportional to the needs of this case.

7. Discovery is continuing in this action. Opposer reserves the right to

supplement and amend its responses to these Requests based on, but not limited to,

information subsequently discovered, inadvertently omitted, or mistakenly stated in these

responses.

8. Opposer objects that all documents be provided in PDF, Opposer will produce

documents in reasonably useable form and endeavor to provide them as searchable

PDF’s. If a document cannot be converted to PDF, it will be produced in its native

format.

9. Opposer objects to the number of requests for production as being unduly

burdensome and not proportional to these proceedings.

DOCUMENTS REQUESTED

DOCUMENT REQUEST NO. 1. All Documents identified in Opposer’s initial disclosures

pursuant to Federal Rule of Civil Procedure 26(a), dated January 24, 2019.

RESPONSE: Opposer will produce documents responsive to this request.

DOCUMENT REQUEST NO. 2. All Documents evidencing, showing, or tending to show

that Opposer’s Marks have become well known and famous in the United States, as

alleged in Paragraph 8 of the Notice of Opposition.

RESPONSE: Opposer objects to this request on the basis that it is unduly

burdensome to produce “all Documents” and “tending to show.” Opposer will provide

documents which support the allegations contained in Paragraph 8 of this Opposition.

3

DOCUMENT REQUEST NO. 3. All Documents that Opposer intends or is reasonably

likely to offer as evidence in support of its allegation that it has promoted, advertised

and/or sold goods or services under any COWGIRL mark since 2000, as alleged in

Paragraph 2 of the Notice of Opposition.

RESPONSE: Opposer objects to this request on the basis that it is overbroad,

unduly burdensome as to “All documents” which are publically available including the

registrations for Opposer’s Marks. Subject to these objections, Opposer will produce

documents responsive to this Request.

DOCUMENT REQUEST NO. 4. All Documents that Opposer intends or is reasonably

likely to offer as evidence in support of its allegation that Opposer’s activities referred to

in Document Request No. 3 distinguish the goods and services of Opposer from the same

and similar goods and services of others.

RESPONSE: Opposer will produce documents responsive to this Request.

DOCUMENT REQUEST NO. 5. Documents sufficient to identify all goods and services

actually or planned or intended to be sold, offered, or licensed by Opposer under or in

connection with any of Opposer’s Marks.

RESPONSE: Opposer objects to this request on the basis it is overly broad,

unduly burdensome and not proportional to the issues in this case. Subject to these

objections, Opposer will produce documents responsive to this Request.


that that consumers associate Opposer’s Marks with Opposer.

RESPONSE: Opposer objects to this request on the basis that it is unduly

burdensome to produce “all Documents” and “tending to show.” Opposer will produce

documents in support of its claim that consumers associate Opposer’s Marks with

Opposer.

4

DOCUMENT REQUEST NO. 7. Documents sufficient to identify the target purchasers or

potential purchasers of goods or services actually or planned or intended to be sold,

offered, distributed, or licensed by Opposer under or in connection with Opposer’s Marks.

RESPONSE: Opposer will produce documents responsive to this Request.

DOCUMENT REQUEST NO. 8. Documents sufficient to identify all channels of trade

through which Opposer advertises, promotes, distributes, sells, offers, or licenses, or

plans to advertise, promote, distribute, sell, offer, or license, any goods or services under

or in connection with Opposer’s Marks, including, but not limited to, Documents identifying

the distributors, retailers, or other business outlets that offer or will offer Opposer’s goods

or services in connection with Opposer’s Marks.

RESPONSE: Opposer objects to this request on the basis that it seeks information

which is publically available and is not proportional to the issues in this case. Subject to

these objections, relevant, non-privileged, non-attorney work product documents, if any

exist, will be produced.


that that Opposer’s Marks and Applicant’s Mark are confusingly similar.

RESPONSE: Opposer objects to this request on the basis that it seeks information

which is publically available. Opposer further objects to this request on the basis that “All

documents” and “tending to show” is overbroad and unduly burdensome. Subject to these

objections, relevant, non-privileged, non-attorney work product documents, if any exist,

will be produced.

DOCUMENT REQUEST NO. 10. All studies, surveys, investigations, research,

development, analyses, or opinions Concerning the Challenged Mark, including, but not

limited to, any such Documents comparing the Challenged Mark to any of Opposer’s

Marks or Concerning any actual confusion or likelihood of confusion between the

Challenged Mark (or any mark that incorporates in whole or in part the Challenged Mark

or is similar thereto) and any of Opposer’s Marks.

5

RESPONSE: Opposer objects to this request on the basis that it may call for

information protected by the attorney-client privilege and/or attorney work product

doctrine. Subject to these objections, relevant, non-privileged, non-work product

documents, if any exist, will be produced at the time specified in the scheduling order.

DOCUMENT REQUEST NO. 11. All Documents, from November 30, 1994 to the present,

demonstrating efforts of Opposer to restrict the use by any third party of a trademark

including the word COWGIRL.

RESPONSE: Opposer objects to this request on the basis that it is overly broad

and unduly burdensome with respect to “All Documents” and “from November 30, 1994

to the present.” Subject to these objections, relevant, non-privileged, non-attorney work

product documents will be produced.

DOCUMENT REQUEST NO. 12. All Communications with third parties identified in

response to Document Request No. 11.

RESPONSE: Opposer objects to this request on the basis that it is overly broad

and unduly burdensome with respect to “All Communications”, vague as to “identified in

response to.” Subject to these objections, relevant, non-privileged, non-attorney work

product documents will be produced.

DOCUMENT REQUEST NO. 13. All Documents Concerning Opposer’s knowledge of

U.S. Trademark Registration No. 3132341 or the trademark COWGIRL MAGIC, including,

but not limited to, all Documents and Communications Concerning or with Applicant or

any predecessor in interest of Applicant, or about Opposer’s awareness of Applicant’s

use or the use by any predecessor in interest of Applicant of the mark COWGIRL MAGIC.

RESPONSE: Opposer objects to this request on the basis that it is vague,

ambiguous, compound, exceeds the scope and limitation of Fed. R. Civ. P. 26(b)(1) with

respect to Reg. 3132341, and is not proportional to the issues in this case.

DOCUMENT REQUEST NO. 14. All Documents referring to U.S. Trademark Registration

No. 3132341.

6

RESPONSE: Opposer objects to this request on the basis that it calls for

documents which are publically available. Opposer further objects to this request on the

basis that it is vague, ambiguous, compound, exceeds the scope and limitation of Fed. R.

Civ. P. 26(b)(1) with respect to Reg. 3132341, and is not proportional to the issues in this

case.

DOCUMENT REQUEST NO. 15. All Documents Concerning the trademark COWGIRL

MAGIC.

RESPONSE: Opposer objects to this request on the basis that it calls for

documents which are publically available. Opposer further objects to this request on the

basis that it is overbroad, unduly burdensome with respect to “All Documents Concerning”

exceeds the scope and limitation of Fed. R. Civ. P. 26(b)(1) with respect to Reg. 3132341,

and is not in proportion to the issues in this case. Subject to these objections, relevant,

non-privileged, non-attorney work product documents will be produced.

DOCUMENT REQUEST NO. 16. All Documents Concerning Opposer’s decision to

contact Kristine Shoberg and/or Udder Delight, Inc. regarding its use in commerce of the

mark MIDNIGHT COWGIRL.

RESPONSE: Opposer objects to this request to the extent it calls for documents

which are protected by attorney client privileged and/or work product. Subject to these

objections, Opposer has no documents responsive to this Request.

DOCUMENT REQUEST NO. 17. All Communications with Kristine Shoberg and/or Udder

Delight, Inc., or any representative thereof, regarding its use in commerce of the mark

MIDNIGHT COWGIRL.


DOCUMENT REQUEST NO. 18. All Documents Concerning Opposer’s decision to

contact Cowgirl Dirt LLC regarding its use in commerce of the mark COWGIRL DIRT.

RESPONSE: Opposer objects to this request to the extent it calls for documents

which are protected by attorney client privileged and/or work product. Subject to these

objections, Opposer has no documents responsive to this Request.

7

DOCUMENT REQUEST NO. 19. All Communications with Cowgirl Dirt LLC, or any

representative thereof, regarding its use in commerce of the mark COWGIRL DIRT.


DOCUMENT REQUEST NO. 20. To the extent not produced in response to the

foregoing requests, all Documents, including but not limited to Communications,

Concerning any actions taken or proceedings initiated by or on behalf of Opposer to

preclude the issuance of U.S. Trademark Registration No. 3132341 for the mark

COWGIRL MAGIC.

RESPONSE: Opposer objects to this request on the basis that it is overbroad,

unduly burdensome with respect to “All Documents” exceeds the scope and limitation of

Fed. R. Civ. P. 26(b)(1) with respect to Reg. 3132341, and is not in proportion to the

issues in this case.

DOCUMENT REQUEST NO. 21. All Documents, including but not limited to

Communications, Concerning any actions taken or proceedings initiated by or on behalf

of Opposer to preclude the issuance of U.S. Trademark Registration No. 4084138 for

the mark GYPSY COWGIRL.

RESPONSE: Opposer objects to this request to the extent it is vague and

overbroad with respect to “Communications, Concerning,” is duplicative of earlier

requests and calls for documents which are protected by attorney client privileged and/or

work product. Subject to these objections, relevant, non-privileged, non-attorney work

product documents, if any exist, will be produced.




the mark URBAN COWGIRL.

RESPONSE: Opposer objects to this request to the extent it is vague and overbroad

with respect to “Communications, Concerning,” is duplicative of earlier requests and calls

for documents which are protected by attorney client privileged and/or work product.

8

Subject to these objections, relevant, non-privileged, non-attorney work product

documents, if any exist, will be produced.




the mark ROCK & ROLL COWGIRL.



requests and calls for documents which are protected by attorney client privileged

and/or work product. Subject to these objections, relevant, non-privileged, non-work

product documents, if any exist, will be produced.




the mark COWGIRL DIRT.



requests and calls for documents which are protected by attorney client privileged

and/or work product. Subject to these objections, relevant, non-privileged, non-attorney

work product documents, if any exist, will be produced.

DOCUMENT REQUEST NO. 25. All Documents comprising agreements between

Opposer and any third party regarding the use in commerce in the United States of any

Mark that includes the literal element COWGIRL.

RESPONSE: Opposer objects to this request to the extent is duplicative of earlier

requests. Subject to this objection, Opposer will produce documents responsive to this

request.

9

DOCUMENT REQUEST NO. 26. All Documents comprising agreements between

Opposer and any third party placing restrictions upon the use of any Mark in commerce

in the United States and referring to or Concerning Opposer’s Marks.

RESPONSE: Opposer objects to this request to the extent is duplicative of earlier

requests, including Request No. 25. Subject to this objection, Opposer will produce

documents responsive to this request.

DOCUMENT REQUEST NO. 27. All Documents Concerning Opposer’s allegation in

Paragraph 7 of the Notice of Opposition that Applicant’s use of the Challenged Mark

suggests a connection with or approval by the Opposer.

RESPONSE: Opposer objects to this request on the basis that “All Document

Concerning” is overbroad. Subject to this objection, Opposer will produce documents in

support of its allegation in Paragraph 7 of the Opposition.

DOCUMENT REQUEST NO. 28. All Documents Concerning any damage suffered by

Opposer by use of the Mark that was the subject of U.S. Trademark Registration No.

3132341.

RESPONSE: Opposer objects to this request on the basis that “All Documents

Concerning” and “any damage” is overbroad and not proportional to the issues in this

matter. Opposer further objects to this request on the basis that Registration 3132341 is

irrelevant to this case and has been cancelled.

DOCUMENT REQUEST NO. 29. All Documents Concerning damage reasonably likely

to be suffered by Opposer by the registration of the Challenged Mark.


Concerning damage” is overbroad. Subject to this objection, Opposer will produce

documents responsive to this request.

10

DOCUMENT REQUEST NO. 30. Documents sufficient to show the circumstances of

Opposer’s first use of each of Opposer’s Marks in the United States, including, but not

limited to, the time, place, and manner of such use.

RESPONSE: Opposer objects to this request on the basis that it is vague as to

“use” and whether it is referring to trademark use and on the basis it is overbroad since

Opposer has been using its marks for over 25 years. Subject to these objections,

Opposer will produce representative samples of Opposer’s first use in commerce of

Opposer’s Marks.

DOCUMENT REQUEST NO. 31. All Documents evidencing, showing, or tending to

show that Opposer has continuously used or failed to continuously use each of

Opposer’s Marks in commerce in the United States since each Mark’s respective date of

registration.

RESPONSE: Opposer objects to this request on the basis that it is vague as to

“use” or “used” and “failed to continuously use.” Opposer further objects to this request

on the basis that it is overbroad and unduly burdensome in proportion to the issues in is

matter. Subject to these objections, Opposer will produce representative samples of

Opposer’s use in commerce of Opposer’s Marks.

DOCUMENT REQUEST NO. 32. Documents sufficient to identify the geographic

regions in the United States in which Opposer has or has caused to be advertised,

promoted, distributed, sold, offered, or licensed, or plans or intends to advertise,

promote, distribute, sell, offer, or license, any goods or services under or in connection

with Opposer’s Marks.

RESPONSE: Opposer objects to this request on the basis that it is duplicative of

earlier requests regarding trade channels and target market. Opposer further objects to

this request to the extent it exceeds the scope of discovery and not proportional to the

issues in this case.

DOCUMENT REQUEST NO. 33. All Documents Concerning Opposer’s belief, at the

time of filing of the applications for registration of Opposer’s Marks, identified by the

serial numbers in the Notice of Opposition, that no person other than the applicant

11

therein identified, except, if applicable, concurrent users, had the right to use, in

commerce in the United States, the mark that was the subject of such application for

registration.

RESPONSE: Opposer objects to this request on the basis that it is overbroad

and unduly burdensome as to “All Documents Concerning.” Opposer further objects to

this request on the basis that it is irrelevant to this proceeding and the request

unnecessarily expands discovery and is not proportional to the issues in this case.

Subject to these objections, Opposer will produce documents responsive to this request.

DOCUMENT REQUEST NO. 34. All Documents Concerning any inquiry by the

applicant for registration of any of Opposer’s Marks to determine the veracity of the

contention in Document Request No. 28.


Concerning” and “any inquiry” is overbroad and not proportional to the issues in this

matter. Opposer further objects to this request on the basis that it is it is irrelevant as to

Registration 3132341 which is not at issue in this case and moreover because that

registration has been cancelled, it exceeds the scope of discovery which is not

proportional to the issues in this case. Opposer further objects on the basis that the

request is vague and ambiguous.

DOCUMENT REQUEST NO. 35. All Documents concerning any opinion letter, analysis,

or other Communication concerning whether, at the time of application for registration

with the USPTO of each of Opposer’s Marks, Opposer had the freedom, right, or ability

to use or register each such Opposer’s Mark as a trademark, service mark, domain

name, or other designation of origin, including the opinion Document and Documents

sufficient to show the identity of the individual or entity that requested the opinion, when

the opinion was requested, and who prepared the opinion.

RESPONSE: Opposer objects to this request on the basis that it may call for

information protected by the attorney-client privilege and/or attorney work product

doctrine. Subject to these objections, relevant, non-privileged, non-work product

documents, if any exist, will be produced at the time specified in the scheduling order.

12

DOCUMENT REQUEST NO. 36. All Documents concerning any instances of actual or

possible confusion, mistake, deception, or association of any kind between Opposer,

any of Opposer’s Marks, or Opposer’s goods or services on the one hand, and the Mark

that was the subject of U.S. Trademark Registration No. 3132341 or the goods identified

therein on the other hand.

RESPONSE: Opposer objects to this request on the basis that this request is

overbroad, unduly burdensome, irrelevant and not proportional to the issues in this case

because Registration 3132341 is not at issue in this case and has been cancelled.

DOCUMENT REQUEST NO. 37. All Documents concerning Applicant or any goods or

services sold, offered, advertised, or licensed, directly or indirectly, by or on behalf of

Applicant under or in connection with the Challenged Mark that are not responsive to or

that you are not otherwise producing in response to any other request contained herein.

RESPONSE: Opposer objects to this request on the basis that it is vague and

ambiguous as to “not responsive to or that you are not otherwise producing in response

to.” Opposer further objects to this request on the basis that it is overbroad and unduly

burdensome in proportion to the issues in is matter.

DOCUMENT REQUEST NO. 38. All Documents concerning The Cummings Group, Inc.

or any goods or services sold, offered, advertised, or licensed, directly or indirectly, by

or on behalf of The Cummings Group, Inc. under or in connection with the Mark

COWGIRL MAGIC that are not responsive to or that you are not otherwise producing in

response to any other request contained herein.

RESPONSE: Opposer objects to this request on the basis that it is vague and

ambiguous as to “not responsive to or that you are not otherwise producing in response

to.” Opposer further objects to this request on the basis that it is overbroad and unduly

burdensome in proportion to the issues in is matter.

DOCUMENT REQUEST NO. 39. Documents sufficient to show all third party marks of

which Opposer is aware that resemble or are similar to the Challenged Mark or any of

Opposer’s Marks and that are used or registered in connection with goods or services

13

that Opposer contends are sold, offered for sale, or promoted in the same channels of

trade as the Challenged Mark.

RESPONSE: Opposer objects to this request on the basis that it is vague,

ambiguous, compound and duplicative of several requests. Subject to this objection,

Opposer will produce documents responsive to this Request.

DOCUMENT REQUEST NO. 40. All Documents that tend to show or disprove that

consumers perceive each of Opposer’s Marks as a trademark.

RESPONSE: Opposer objects to this request on the basis that it is overbroad and

unduly burdensome as to “all documents,” vague and ambiguous as to “tend to show or

disprove” and “consumers perceive” and “as a trademark.”

DOCUMENT REQUEST NO. 41. To the extent not produced in response to the

foregoing requests, all Documents that support or refute Opposer’s claims in this

proceeding, including, but not limited to, any Documents that support or refute any

factual allegations or legal theories or conclusions Opposer has presented or relied on

or intends to present or rely on in connection with such claims.


and unduly burdensome, including as to “all documents, “any documents.” Opposer

further objects to this request on the basis that it is vague and ambiguous as to “support

or refute,” “legal theories,” and “conclusions.” Subject to these objections, Opposer will

produce all documents it intends to rely upon at trial.

DOCUMENT REQUEST NO. 42. If at any time after the date of application for

registration in the United States of any of Opposer’s Marks, you learned that any

representation in the application or any document in the United States Patent and

Trademark Office file relating thereto was false or inaccurate, all Documents concerning

steps taken by you to address the falsity or inaccuracy of the representations.


and unduly burdensome with respect to “any document in the United States Patent and

14

Trademark Office file relating thereto”, “all documents” and exceeds the scope of

discovery and proportionality to this matter. Opposer further objects to this request on

the basis that it is irrelevant, vague and ambiguous as to “steps taken by you to

address” and “false or inaccurate,” or “falsity or inaccuracy.”

DATED: March 25, 2019 JAHN & ASSOCIATES, LLC

________________________

Kirstin M. Jahn

1942 Broadway Suite 314

Boulder, CO 80302

303-545-5128

Attorney for Opposer

Rocky Mountain Natural Labs, LLC


I hereby certify that the foregoing document was served via email on counsel for

Applicant on March 25, 2019 addressed to:

Douglas Panzer

[email protected]

__________________

Kirstin M. Jahn

EXHIBIT B

1

From: Kirstin Jahn <[email protected]>Sent: Wednesday, April 15, 2020 7:26 PMTo: Douglas PanzerCc: William D. Harger; Woller, Joy; Michelle HoppesSubject: Re: S229540001 COWGIRL MAGIC Opposition 91243622 - Applicant (Defendant) -

Straight Arrow Products, Inc.’s supplemental document production

Douglas,

In light of the recent TTAB Order, I would like to confirm the due date for our respective discovery responses since the discovery requests from both of us were both sent on the same day.

I believe our responses are both due on April 17, 2020. I am asking because an argument exists that they are due on April 23, 2020.

I would appreciate a confirmation of the due date on your end so that we are all on the same page.

Sincerely,

Kirstin Jahn

www.jahnlaw.com

Attorneys for Creative Thinkers®

1942 Broadway, Suite 314 Boulder, CO 80302 Tel: 303-545-5128

This e-mail is a confidential communication. If this message was not intended for you, please delete it.

On 4/15/2020 1:54 PM, William D. Harger wrote:

Counsel please find for your download at the following link Applicant, Straight Arrow Products, Inc.’s supplemental document production in TTAB Proceeding #91243622. https://spaces.hightail.com/receive/E6JSmtB5k6 Available via this link are document productions bearing bates numbers: 000320 (confidential); 000321; 000322-000528 (confidential); and 000529-000611 Please note that this production, per the agreement of the parties, is designated in accordance with the standard protective order of the Trademark Trial and Appeal Board and should be treated accordingly. Best Regards,

2

William D. Harger Litigation Paralegal CAESAR RIVISE, PC 7 Penn Center│12th Floor│1635 Market Street│Philadelphia, PA 19103-2212 215.567.2010 (P)│215.751.1142 (F) [email protected]│http://www.crbcp.com

THE INFORMATION CONTAINED IN THIS ELECTRONIC MESSAGE (E-MAIL) AND ANY ATTACHMENT(S) TO IT IS/ARE INTENDED FOR THE EXCLUSIVE USE OF THE ADDRESSEE(S) AND MAY CONTAIN INFORMATION THAT IS CONFIDENTIAL AND/OR PRIVILEGED AND EXEMPT FROM DISCLOSURE UNDER APPLICABLE LAW. IT IS INTENDED SOLELY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHICH IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT(S), YOU ARE HEREBY NOTIFIED THAT ANY USE, DISSEMINATION OR COPYING OF THIS COMMUNICATION AND ITS ATTACHMENT(S) IS STRICTLY PROHIBITED. THUS, PLEASE DO NOT DISTRIBUTE IT. INSTEAD, PLEASE NOTIFY CAESAR RIVISE, PC. IMMEDIATELY BY TELEPHONE (COLLECT) AT 215-567-2010 OR BY E-MAIL AT [email protected], AND DESTROY ALL COPIES OF THIS MESSAGE AND ANY ATTACHMENTS. THANK YOU FOR YOUR COOPERATION!

EXHIBIT C

1

From: Kirstin Jahn <[email protected]>Sent: Friday, March 15, 2019 6:46 PMTo: Douglas PanzerSubject: Re: Rocky Mountain v. Straight Arrow TTAB Opposition - Straight Arrow's First RPD

Douglas,

We confirm our agreement to the 5 day extension for discovery responses by both parties.

Sincerely,

Kirstin Jahn

www.jahnlaw.com




On 3/14/2019 12:35 PM, Douglas Panzer wrote:

*******FOR SETTLEMENT PURPOSES – SUBJECT TO FRE 408******* Kirstin, I have conferred with my client and we do not believe a 15-day extension is warranted, nor should it be necessary. First, Rocky Mountain Natural Labs is the opposer in this proceeding and should have been prepared to prosecute it. Second, the questions for resolution are discrete and limited. Third, Straight Arrow Products already agreed to delay on the Initial Disclosures deadline without extending the other deadlines of the proceeding. A longer extension will jeopardize the ability to properly conduct any follow up discovery, and extension of the discovery period itself may prove prejudicial to Straight Arrow Products as it requires resolution of this matter to undertake necessary business steps. Straight Arrow will therefore be opposed to any extension of the discovery period unless it finds that delay from Rocky Mountain Natural Labs deprives Straight Arrow of full discovery. In view of the foregoing, we are amenable to an extension of the deadline for each party to respond to the currently-outstanding discovery requests of five (5) days, making the date for response Monday, March 25, 2019. Please confirm. If Rocky Mountain Natural Labs believes that it will be unable to properly respond by that date and/or to support its claims or disprove Straight Arrow’s defenses, we will consider a proposal for co-existence predicated on withdrawal, with prejudice, of the opposition and without amendment to the current identification of goods and services specified in the opposed application. Thank You, DOUGLAS PANZER | REGISTERED PATENT ATTORNEY | FITZPATRICK LENTZ & BUBBA, P.C. 4001 Schoolhouse Lane, Center Valley, PA 18034

2

Tel: (610) 797-9000, ext. 390 | Fax: (610) 797-6663 Administrative Assistant: Michelle Hoppes, ext. 373 Email| Admin Email| Website | Bio| LinkedIn From: Kirstin Jahn [mailto:[email protected]] Sent: Tuesday, March 12, 2019 5:39 PM To: Douglas Panzer <[email protected]> Subject: Re: Rocky Mountain v. Straight Arrow TTAB Opposition - Straight Arrow's First RPD

Douglas,

We would like a 15 day extension on providing a response to your discovery requests- up through and including April 4, 2019.

Please let me know if that will be acceptable.

Sincerely,

Kirstin Jahn

www.jahnlaw.com




On 2/18/2019 1:15 PM, Douglas Panzer wrote:

Kirstin, Attached are Straight Arrow First Request for Production of Documents and Things. Thank You, Doug DOUGLAS PANZER | REGISTERED PATENT ATTORNEY | FITZPATRICK LENTZ & BUBBA, P.C. 4001 Schoolhouse Lane, Center Valley, PA 18034 Tel: (610) 797-9000, ext. 390 | Fax: (610) 797-6663 Administrative Assistant: Michelle Hoppes, ext. 373 Email| Admin Email| Website | Bio| LinkedIn ***CONFIDENTIALITY NOTICE*** This e-mail contains confidential information which is legally privileged and which is only for the use of the intended recipient(s) of this message. If you have received this e-mail inadvertently, you are hereby notified that the forwarding or copying of this e-mail, or the taking of any action in reliance on its contents is strictly prohibited.

3

Please notify us immediately by reply e-mail and delete this message from your inbox if you have received this message in error. Thank you.

***CONFIDENTIALITY NOTICE*** This e-mail contains confidential information which is legally privileged and which is only for the use of the intended recipient(s) of this message. If you have received this e-mail inadvertently, you are hereby notified that the forwarding or copying of this e-mail, or the taking of any action in reliance on its contents is strictly prohibited. Please notify us immediately by reply e-mail and delete this message from your inbox if you have received this message in error. Thank you.

EXHIBIT D

1

From: Kirstin Jahn <[email protected]>Sent: Friday, March 29, 2019 8:09 PMTo: Douglas PanzerSubject: Re: Opposition No. 91243622

David,

Please be advised, my assistant has been out since late last week and my ediscovery program has been failing, so needless to say we have been very short handed.

Further,since discovery requests go back pretty far, some documents are in files and need to be scanned in digitally. Some files need to be located. Be assured, we are working diligently to get you the documents as quickly as feasible.

I hope you have a nice weekend.

Sincerely,

Kirstin Jahn

www.jahnlaw.com




On 3/29/2019 8:53 AM, Douglas Panzer wrote: The end of next week?! You have to be kidding. We agreed to a 5-day extension and you gave us nothing. The end of next week is more than 10 days after the agreed-upon extension date – and perhaps not coincidentally – is close to the 15-day extension that we declined. We are now creeping (rather quickly) toward the end of discovery. I have no choice at this point to advise my client to file dispositive motions and I expect we will do so before the end of next week. From: Kirstin Jahn [mailto:[email protected]] Sent: Friday, March 29, 2019 10:50 AM To: Douglas Panzer <[email protected]> Subject: Re: Opposition No. 91243622

Douglas,

Not to worry, we expect to have the documents to you by the end of next week.

2

Sincerely,

Kirstin Jahn

www.jahnlaw.com




On 3/27/2019 10:02 AM, Douglas Panzer wrote: Kirstin, When will your client deliver these documents? We extended a courtesy by agreeing to the extension of the discovery response deadline, which, as mentioned before, is the second time we have agreed to a delay in this proceeding – which your client initiated. There is no reason that these documents should not have been in our hands already. It is appearing more and more that Rocky Mountain Natural Labs went into this opposition on a strategy of hoping that Straight Arrow Products would roll over and give up like Vermont Cowgirl. This is a much different situation. If your client does not intend to actively prosecute this matter then it becomes a simple matter of harassment and obstruction of Straight Arrow’s legitimate business and you and your client are obligated to dismiss it. (See e.g. 37 CFR §11.301.) At this point, due to the threadbare complaint and essential disappearance of your client from this matter we are strongly inclined to file a motion for judgment on the pleadings and are exploring every detail of that option at this time. DOUGLAS PANZER | REGISTERED PATENT ATTORNEY | FITZPATRICK LENTZ & BUBBA, P.C. 4001 Schoolhouse Lane, Center Valley, PA 18034 Tel: (610) 797-9000, ext. 390 | Fax: (610) 797-6663 Administrative Assistant: Michelle Hoppes, ext. 373 Email| Admin Email| Website | Bio| LinkedIn From: Kirstin Jahn [mailto:[email protected]] Sent: Tuesday, March 26, 2019 12:19 PM To: Douglas Panzer <[email protected]> Subject: Re: Opposition No. 91243622

Douglas,

We are working on getting those files on to a flash and mailing it to you.

FYI, I did not see any production from you yesterday.

3

Sincerely,

Kirstin Jahn

www.jahnlaw.com




On 3/25/2019 3:37 PM, Douglas Panzer wrote: Kirstin, There are no documents included with your responses. Did you intend to attach another file? Doug DOUGLAS PANZER | REGISTERED PATENT ATTORNEY | FITZPATRICK LENTZ &

BUBBA, P.C. 4001 Schoolhouse Lane, Center Valley, PA 18034 Tel: (610) 797-9000, ext. 390 | Fax: (610) 797-6663 Administrative Assistant: Michelle Hoppes, ext. 373 Email| Admin Email| Website | Bio| LinkedIn From: Kirstin Jahn [mailto:[email protected]] Sent: Monday, March 25, 2019 5:19 PM To: Douglas Panzer <[email protected]> Subject: Opposition No. 91243622

Douglas,

Attached please find Rocky Mountain Natural Labs response to Applicant's First Set of Requests for Production.

We are unaware of any other outstanding discovery requests from Applicant. Sincerely,

4

Kirstin Jahn

www.jahnlaw.com







EXHIBIT E

[email protected]

June 21, 2019

VIA EMAIL ONLY

Kirstin M. Jahn

Jahn & Associates, LLC

[email protected]

RE: TTAB Proceeding 91243622 – Deficient Responses to Interrogatories

Dear Kirstin:

I write to request that Opposer correct certain deficiencies in discovery responses.

Specifically, with respect to Opposer’s responses to Applicant’s First Set of Interrogatories:

1) First, in its General Objections, Opposer states that it “objects to each Request to the extent

it seeks or calls for information protected by the attorney-client privilege and or protected

by the work-product doctrine, or subject to any other applicable privilege.” (Emphasis

added) However, Opposer’s responses provide no indication as to whether any material or

information has been withheld on the basis of any such privilege and only Opposer’s

response to Interrogatory 22 makes any further reference to privilege. Please clarify

whether Opposer has asserted the existence of any privilege with respect to any specific

information requested by any individual interrogatory that Applicant has propounded.

2) With respect to Interrogatory 1, Opposer avers that Applicant’s demand for information

regarding the monthly sales of products under the COWGIRL Marks is “disproportional to

the needs of this case and is overly broad and unduly burdensome.” Opposer provides no

information whatsoever identifying sales figures of any kind, or during any period.

Opposer’s claims and contentions in this proceeding are expressly based on Opposer’s

averments that its asserted COWGIRL Marks are famous and that the marks “have

established tremendous goodwill…[a]s a result of Opposer’s extensive sales.” Notice,

Docket #1 at ¶3, ¶8 (emphasis added).

Similarly, Opposer has objected to Applicant’s Interrogatory 2, and declined to disclose

the requested information regarding marketing expenditures, despite its assertion in the

TTAB Proceeding 91243622

June 21, 2019

Page 2

response to the interrogatory that products under the COWGIRL Marks have been

“extensively publicized in the United States.” See also: Notice, Docket #1 at ¶2, ¶3.

Courts “consider many factors to determine a mark’s commercial strength” including “(1)

advertising expenditures…[and] (3) sale success.” Variety Stores, Inc. v. Wal-Mart Stores,

Inc., 888 F.3d 651, 663 (4th Cir. 2018). Moreover, “[d]irect evidence of fame, for example

from widespread consumer polls, rarely appears in contests over likelihood of confusion.

Instead, the fame of a mark may be measured indirectly, among other things, by the volume

of sales and advertising expenditures of the goods traveling under the mark, and by the

length of time those indicia of commercial awareness have been evident.” Omaha Steaks

Int'l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1319 (Fed. Cir. 2018)(internal

citation omitted). Scores of precedential opinions reiterate these well-established,

fundamental principles of the likelihood of confusion analysis.

3) Next, Opposer has provided no substantive response to Interrogatory 6 or Interrogatory

7, requesting identification of the value of the asserted COWGIRL Marks and any change

in that value in connection with the sale of products under the COWGIRL MAGIC mark.

Surely, these interrogatories cannot be properly described as “vague” or “ambiguous” as

objected by Opposer. Opposer has asserted dilution as a basis for this opposition. Notice,

Docket #1 at ¶10. “Dilution requires some proof that the use of a trademark decreases its

commercial value.” Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176, 1186 (11th Cir.

1985). Opposer is, therefore, by definition, asserting that Straight Arrow’s use of the

COWGIRL MAGIC mark will diminish the value of Opposer’s marks. Straight Arrow’s

predecessor made actual use of the COWGIRL MAGIC mark, during at least the definite,

unambiguous period stated in Interrogatory 7, in connection with goods nearly identical to

those identified in the opposed application. Opposer’s statement that the requested

information is “overly broad and disproportionate to the needs of this case” is disingenuous

and withholding of such information in toto is clear obfuscation of direct evidence of a

material issue. Please immediately supplement Opposer’s responses to provide such

information.

4) Opposer’s similar objections to Interrogatories 8 and 9 are likewise inappropriate.

Whereas the challenged mark and the asserted marks are not identical, but differ in part,

information similar to that discussed in the prior section, with regard to the component

elements of the challenged and asserted compound marks may be highly relevant. Again,

withholding such information serves to obfuscate important evidence and Opposer’s

responses must be supplemented.


June 21, 2019

Page 3

5) Opposer’s response to Interrogatory 10 is a clearly conclusory statement devoid of any

facts and simply restating a most basic notice pleading statement. Again, supplementation

is necessary and required.

6) With respect to Interrogatory 11, Opposer is irrefutably aware that the mark COWGIRL

MAGIC was previously registered in International Class 3, in connection with goods at

least partially identical to those in the challenged application. Opposer is also aware, at

least in view of the pleadings in this proceeding, that the prior COWGIRL MAGIC

registration was owned by Straight Arrow’s predecessor in interest (and subsequently

Straight Arrow) and that Straight Arrow has asserted sales of those products bearing that

mark as evidence that refutes the claims of the Notice of Opposition. Opposer’s response

that “Applicant’s COWGIRL MAGIC mark was filed as an Intent-to-Use mark and has not

been used in commerce” is either based on a misreading of Interrogatory 11 or a unilateral

determination not to respond to the interrogatory as properly read. There is no question

that the relationship in the market between actual products under the Challenged Mark and

Opposer are highly relevant to the bases of opposition and the affirmative defenses.

Even if we were to wholly ignore the relationship of the prior registration to Straight Arrow,

in considering the strength of an asserted mark, “evidence of third-party use and

registrations is powerful on its face” in the calculus of likelihood of confusion. Jack

Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,

S.L.U., 797 F.3d 1363, 1373–74 (Fed. Cir. 2015).

For the same reasons, Opposer’s responses to Interrogatories 12-14 ignore the plain facts

of the main issue of this proceeding, which require Opposer to demonstrate the scope of its

rights in the asserted marks in order to demonstrate priority and likelihood of confusion.

Evidence regarding Opposer’s actions vis a vis a prior, identical registration and use are

highly relevant. Therefore, Opposer’s responses to these interrogatories must be

supplemented.

7) With respect to Interrogatory 22, Opposer appears to contend that even the mere fact of

whether it does or does not make use of any trademark or domain name watch services

constitutes information protectable by the attorney client privilege. This – absent any

substantive content of a communication between attorney and client – cannot possibly be

so, as attorney-client privilege protects an attorney's communication to a client only when

it reveals, “the attorney-client privilege protects an attorney’s communications [with] a

client only when it reveals directly or indirectly, the substance of a confidential

communication by the client made for the purpose of obtaining legal advice.” City of

Wilmington v. United States, 141 Fed. Cl. 558, 562 (2019). This claim of privilege is

misplaced and the response must be supplemented.


June 21, 2019

Page 4

These numerous shortcomings and the pattern of withholding information suggest that Opposer

is actively seeking to avoid disclosing to Straight Arrow sufficient information to permit proper

discovery of the facts directly relating to the claims and counterclaims in this matter. It is my

sincere hope that Opposer will immediately correct these glaring shortcomings, avoiding any need

for Straight Arrow to seek an order from the Board compelling the same.

I look forward to your timely response. Please contact me if you wish to discuss this matter.

Very truly yours,

Douglas Panzer

EXHIBIT F

1


BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Rocky Mountain Natural Labs, LLC Opposition No. 91243622

Opposer Serial No. 87/631636


Applicant _____________________________________________________________________ OPPOSER’S RESPONSE TO APPLICANT’S FIRST SET OF INTERROGATORIES

_____________________________________________________________________

Opposer, Rocky Mountain Natural Labs responds as follows to Applicant Straight

Arrow Products, Inc. First Set of Interrogatories.

GENERAL OBJECTIONS

Opposer makes the following General Objections in response to each Interrogatory

Request.

1. Opposer objects to each Request to the extent it seeks or calls for information protected

by the attorney-client privilege and or protected by the work-product doctrine, or subject

to any other applicable privilege.

2. Opposer objects to each Request to the extent it seeks information that is neither

relevant nor reasonably calculated to lead to the discovery of admissible evidence and

exceeds the scope and limitation of Fed. R. Civ. P. 26(b)(1).

3. Opposer objects to each Request to the extent it purports to call for information not in

its possession, custody or control.

2

4. Opposer objects to the definition of “you” and “your” as being overbroad, unduly

burdensome, vague and ambiguous.

5. Opposer objects to each Request to the extent it seeks to impose requirements and/or

obligations inconsistent with and in addition to, the Federal Rules of Civil Procedure, the

Federal Rules of Evidence and/or Rules of this tribunal, and that are unduly burdensome

and oppressive.

6. Discovery is continuing in this action. Opposer reserves the right to supplement and

amend its responses to these Requests based on, but not limited to, information

subsequently discovered, inadvertently omitted, or mistakenly stated in these responses.

RESPONSE TO INTERROGATORIES

INTERROGATORY 1. Identify all products or services sold by Opposer bearing or

incorporating the term "COWGIRL" and state the total monthly sales in units and dollars

of each such product or service for each month since the first sale of the product or service.

RESPONSE: Opposer has used its COWGIRL Marks in connection with bath, beauty,

body personal care and skin care products with the earliest COWGIRL mark used since at

least, 1994. To the extent that this Interrogatory seeks information beyond that provided

in the above response, Opposer objects to this Interrogatory because it is disproportional

to the needs of this case and is overly broad and unduly burdensome as to “total monthly

sales in units and dollars of each such product or service for each month since the first

sale of the product or service” and is not limited as to time since Opposer’s COWGIRL

marks have been used since at least 1994.

INTERROGATORY 2. Describe in detail all facts and circumstances that show that

3

“Opposer’s COWGIRL marks have been widely used and extensively publicized in the

United States, and therefore, have become well known and famous as a distinctive symbol

of Opposer and Opposer’s goodwill”, including but not limited to identifying the annual

marketing expenditures made by or on behalf of Opposer, since November 30, 1994,

relating to each of the Asserted Marks.

RESPONSE: Opposer has used various COWGIRL Marks since at least 1994 throughout

the United States at several hundred boutiques and retail stores, on-line including through

Amazon.com and Pharmaca.com along with its website and website of its affiliates.

Opposer advertises its COWGIRL products on these platforms as well as social media

platforms such as Facebook, Twitter, Instagram, LinkedIn, and through print advertising,

digital advertising and presence at the PBR National Rodeo. Opposer’s COWGIRL

products have been featured in numerous national magazines such as Vogue, Marie

Claire, Self, Glamour, In Style, W and Teen People. It is the only COWGIRL skin care

product offered for sale at Amazon.com. To the extent that this Interrogatory seeks

information beyond that provided in the above response, Opposer objects to this

Interrogatory because it is disproportional to the needs of this case and is overly broad

and unduly burdensome as to “identifying the annual marketing expenditures made by or

on behalf of Opposer, since November 30, 1994, relating to each of the Asserted Marks.”

INTERROGATORY 3. For each Asserted Mark, state the date when you claim the

Asserted Mark became famous.

RESPONSE. Opposer’s marks became well known at least prior to the filing date of

Applicant’s mark at issue here. To the extent that this Interrogatory seeks information

beyond that provided in the above response, Opposer objects to this Interrogatory

because it calls for a legal conclusion.

INTERROGATORY 4. For each Asserted Mark, describe in detail all facts and

circumstances that support or tend to disprove your claim that the Asserted Mark was

famous as of the date required to be identified in your response to Interrogatory No. 3.

RESPONSE. Opposer has used various COWGIRL Marks since at least 1994 throughout


4







product offered for sale at Amazon.com.

INTERROGATORY 5. Describe in detail all facts and circumstances that show or tend to

disprove that “tremendous goodwill belonging to and associated with Opposer” exists in

the Asserted Marks.

RESPONSE. Opposer has used various COWGIRL Marks since at least 1994 throughout








product offered for sale at Amazon.com and is recognized by consumers for skin care

products.

INTERROGATORY 6. For each Asserted Mark, identify the value of such Asserted Mark

and describe in detail your methodology for arriving at such valuation.

RESPONSE. Opposer objects to this request on the basis that it is it is vague, ambiguous,

overly broad and disproportionate to the needs of this case.

INTERROGATORY 7. Describe in detail all facts and circumstances that show any change

in valuation of any Asserted Mark during the period January 2006 to April 2017, inclusive,

resulting from the sale or offering for sale, under or in connection with the mark COWGIRL

MAGIC, of any product or service of the type identified in U.S. Trademark Registration No.

3132341.

5




in valuation of any Asserted Mark, during the period November 30, 1994 to the present,

resulting from the sale or offering for sale, under or in connection with a trademark

including the word “Cowgirl”, by any third party of any product or service of the type

identified in the Challenged Mark.




in valuation of any Asserted Mark, during the period November 30, 1994 to the present,

resulting from the sale or offering for sale, under or in connection with a trademark

including the word “Magic”, by any third party of any product or service of the type identified

in the Challenged Mark.



INTERROGATORY 10. State all facts supporting Opposer’s contention that Opposer will

be damaged by registration of the Challenged Mark.

RESPONSE. Opposer will be damaged by the customer confusion created through the

registration of the Challenged Mark.

INTERROGATORY 11. Describe each and every instance, from November 30, 1994 to

the present, of which Opposer is aware, in which any person has been in any way

confused, mistaken, or deceived as to the origin or sponsorship of any goods or services

sold or offered for sale under or in connection with the mark COWGIRL MAGIC.

RESPONSE. Opposer objects to this on the basis that it is vague, ambiguous, unduly

burdensome and disproportionate to the needs of this case. On information and belief

6

Applicant’s COWGIRL MAGIC mark was filed as an Intent-to-Use mark and has not been

used in commerce.

INTERROGATORY 12. Identify and describe the date and circumstances of Opposer first

becoming aware of The Cummings Group, Inc.’s use and registration of the mark

COWGIRL MAGIC.

RESPONSE. Opposer objects to this on the basis that it is irrelevant, vague and

ambiguous regarding “The Cummings Group, Inc.” who is not a party to this action.

INTERROGATORY 13. Identify and describe in detail all administrative proceedings and

litigations, other than this proceeding, Concerning any Asserted Mark.



INTERROGATORY 14. Describe in detail any Communications between Opposer and

The Cummings Group, Inc. or any representative of The Cummings Group, Inc., during

the period from November 30, 1994 to the present.



INTERROGATORY 15. Describe in detail all actions taken by, or on behalf of, Opposer,

between November 30, 1994 and September 16, 2018, to restrict the use of any trademark

identified in Applicant’s Affirmative Defenses, paragraph 2, or shown in Exhibit B to

Applicant’s Answer in this proceeding, or the sale or offering for sale of any product bearing

such trademark, including but not limited to the filing, by, or on behalf of, Opposer, with the

US Trademark Trial and Appeal Board of any notice of opposition or petition for

cancellation, or the sending of any cease and desist letter.

RESPONSE. Opposer objects to this request on the basis that it is vague, compound,

ambiguous, overbroad and disproportionate to the needs of this action. Without waving

these objections and as Opposer understands the request, cease and desist letters have

been sent to the following people or entities:

7

Kiss Me In the Garden

Pear Blossom Ranch

Karen Mooney d/b/a/ Vermont Cowgirl

Custom Cowgirl

Cowgirl Dirt, LLC

Fairy4u

Native Cowgirl

Honeysuckle Farms

Greenhorse Organics

Bodylish

Udder Delight and

Cowboy Decor

INTERROGATORY 16. Describe all channels of trade in the United States through which

Opposer has offered for sale, sold, or intends to offer for sale or sell goods or services

under or in connection with the Asserted Marks.

RESPONSE. Opposer’s goods move in all channels of trade that would be normal for

such goods, including hundreds of retail stores located throughout the country, on-line

stores (e.g. Amazon.com, Pharmaca.com) and national rodeo events and markets its

goods through its websites and social media platforms such as Facebook, Twitter,

Instagram, LinkedIn, on-line, print advertising and digital advertising.

INTERROGATORY 17. Describe all classes and/or types of customers (for example, age,

gender, socioeconomic group) that comprise the intended market for goods or services

offered for sale, sold, or intended to be offered for sale or sold under or in connection with

the Asserted Marks.

8

RESPONSE. Opposer’s goods are purchased and intended to be purchased by any and

all consumers seeking bath, beauty, body, personal care and skin care products. To the

extent this Interrogatory seeks information beyond that stated above, Opposer objects to

this interrogatory because Opposer is entitled to a presumption that its goods would be

purchased by all potential consumers and is not required to provide specific demographic

information regarding its customers or potential customers.

INTERROGATORY 18. Identify the geographic regions in the United States in which

Opposer has or has caused to be advertised, promoted, marketed, displayed, distributed,

offered for sale, or sold, or plans or intends to advertise, promote, market, display,

distribute, offer for sale, or sell, either directly or through others, any goods or services

under or in connection with the Asserted Marks.

RESPONSE. Opposer’s advertising and marketing is nationwide.

INTERROGATORY 19. Identify by name, location, and year all trade shows in the United

States where goods or services under the Asserted Marks have been displayed, promoted,

or sold.

RESPONSE. Opposer has attended at least the following trade shows:

Cosmoprof Las Vegas

New York Gift Show

To the extent this Interrogatory seeks information other than what is stated above,

Opposer objects to this interrogatory on the basis that is unduly burdensome and seeks

information disproportional to the issues of case.

INTERROGATORY 20. Describe any Communications between Opposer and any third

party Concerning Applicant or Applicant’s Marks, and any actions taken by Opposer as a

result of such Communications.

RESPONSE. Opposer objects to this interrogatory on the basis that is irrelevant, vague

and unduly burdensome. Subject to this objection, Opposer is unaware of any

communications with third parties Concerning Applicant or Applicant’s Marks.

9

INTERROGATORY 21. Identify all persons, including but not limited to Applicant and third

parties, with whom Opposer has communicated Concerning the protection or enforcement

of trademark rights associated with the Asserted Marks, and, for each such person, identify

the date(s) of the Communication(s) and the nature and substance of each such

Communication.

RESPONSE. Opposer has communicated to the following third parties regarding the

Asserted Marks:

Kiss Me In the Garden for use of COWGIRL in connection with skin care products, 2014-

2016

Pear Blossom Ranch for use of COWGIRL in connection with skin care products, 2017

Rising Sun for use of COWGIRL in connection with skin care products, 2019

TTAB opposition against Karen Mooney d/b/a/ Vermont cowgirl against use of VERMONT

COWGIRL, 2017

Custom Cowgirl for use of CUSTOM COWGIRL in connection with skin care products,

2013

Cowgirl Dirt, LLC for use of COWGIRL DIRT in connection with skin care products, 2017

Fairy4u for use of COWGIRL in connection with skin care products, 2017

Native Cowgirl for use of NATIVE COWGIRL in connection with skin care products, 2012

Honeysuckle Farms for use of COWGIRL in connection with skin care products, 2017

Greenhorse Organics for use of ORGANIC COWGIRL in connection with skin care

products, 2017

Bodylish for use of COWGIRL in connection with skin care products, 2019

Udder Delight for use of MIDNIGHT COWGIRL in connection with skin care products, 2019

10

To the extent Applicant seeks information other than that stated above, Opposer objects

to the request on the basis of it exceeding the scope of discovery, overly broad and

disproportionate to the needs of this action.

INTERROGATORY 22. Identify and describe in detail all trademark or domain name watch

or surveillance notices Concerning the Challenged Mark received or reviewed by Opposer,

during the period January 2006 to September 16, 2018, and Opposer’s response thereto,

including any actions taken in connection with same.

RESPONSE. Opposer objects to this request on the basis that it seeks information which

is disproportionate to the needs of this case and may be protected by the attorney client

privilege.

INTERROGATORY 23. Identify all witnesses, including the address of such witness which

you expect to call to testify at trial and state the subject matter of each witness’s testimony.

RESPONSE. Alexis Mayne of Rocky Mountain Natural Labs, c/o Jahn & Associates, LLC

1942 Broadway Suite 314 Boulder, Colorado 80302.

INTERROGATORY 24. Identify all individuals who assisted in any manner in the

preparation of the answers to these interrogatories.

RESPONSE. Alexis Mayne.

Dated: May 28, 2019 JAHN & ASSOCIATES, LLC

s/Kirstin M. Jahn

Attorneys for Opposer

11


I hereby certify that the foregoing document was served via email on counsel for Applicant

on May 28, 2019 addressed to:

Douglas Panzer

[email protected]

______________

Kirstin M. Jahn

EXHIBIT G

TTAB PROCEEDING #91243622 000601

EXHIBIT H



EXHIBIT I



In re Application Serial No. 87/631,636

Filed: October 3, 2017

For Mark: COWGIRL MAGIC

Published in the Official Gazette: August 21, 2018

------------------------------------------------------X

Rocky Mountain Natural Labs, LLC, :

Opposer, : Opposition No. 91243622

:

:

Straight Arrow Products, Inc., :

Applicant. :

:

------------------------------------------------------X

APPLICANT’S ANSWERS AND OBJECTIONS TO OPPOSER’S

INTERROGATORIES

In accordance with the Federal Rules of Civil Procedure and TBMP, Applicant Straight

Arrow Products, Inc. (“Applicant” or “Company”), provides responses and objections to

Opposer’s Interrogatories (“Opposer’s Interrogatories”) as set forth below.

PRELIMINARY STATEMENT

The information set forth below reflects Applicant’s best present knowledge based upon

its review and investigation to date. Applicant reserves the right to amend or supplement these

responses or objections as necessary or appropriate in the future or as the discovery of additional

or further information may warrant.

GENERAL OBJECTIONS

1. Applicant objects to providing any information and/or documents in response to

Opposer’s Interrogatories which is protected from disclosure by the attorney/client privilege, or

any other privilege recognized by the common law, the Trademark Trial and Appeal Board

Manual of Procedure, or the Federal Rules of Evidence, or which is prepared or maintained in

connection with litigation or potential litigation, and which constitutes or reflects attorney work

product, or which is otherwise privileged or protected.

2. Applicant objects to Interrogatories that specify no time frame or specify an

overly broad time frame or geographic scope on the grounds that they are overly broad, seek

information that is neither relevant nor proportional to the claims and defenses of this matter, and

to the extent they are vague and/or ambiguous for the foregoing reasons.

3. Applicant objects to providing any information and/or documents in response to

Opposer’s Interrogatories which would abridge or infringe upon protected third party privacy

interests.

4. Applicant objects to Opposer’s Interrogatories to the extent they cause

unreasonable annoyance, embarrassment, oppression, burden or expense to Applicant.

5. Applicant responds to Opposer’s Interrogatories without waiving, but expressly

preserving: (a) any objections as to the competency, relevancy, materiality and admissibility of

any of the responses; and (b) the right to object to other discovery procedures involving or

relating to the subject matter of the interrogatories responded to herein.

6. Applicant’s General Objections shall be deemed continuing throughout the

responses to specific Interrogatories, even if not specifically referred to in a particular response,

and the fact that certain General Objections are referred to in any response is not to be construed

as limiting their effect.

ANSWERS TO SPECIFIC INTERROGATORIES

1. Describe in reasonable detail your selection and adoption of the mark COWGIRL

MAGIC Serial No. 87/631636., including all steps taken to clear that mark, all research

conducted, all alternative marks considered, all persons involved in selecting the mark and an

explanation of how and why the mark was chosen.

ANSWER:

Applicant restates and incorporates its general objections and additionally/more specifically

objects to the foregoing interrogatory on the basis that it is overly broad, vague and ambiguous,

without limitation, in its use of the phrase “to clear the mark”, reference to “all research

conducted”, and failure to limit the scope of “alternative marks considered” and “selecting the

mark.” Without waiver of the foregoing objections, Applicant responds that Applicant acquired

all right, title, and interest in the existing mark COWGIRL MAGIC by operation of an asset

purchase agreement, effective March 17, 2014, between Applicant and Cummings Group, Inc.

In connection therewith Applicant verified the existence of prior U.S. Trademark Reg. No.

3132341 for COWGIRL MAGIC in international class 3.

2. Identify all trademark search reports, studies, investigations, or analyses performed by or

for Applicant relating, in whole or in part, to the mark COWGIRL MAGIC.

ANSWER:


objects to the foregoing interrogatory on the basis that it is overly broad, vague and ambiguous.

Without waiver of the foregoing objections, Applicant, subject to its Preliminary Statement,

above, responds that Applicant is not aware of the existence of any such reports, studies,

investigations, or analyses.

3. Identify all documents relating or referring to any opinion of any type, legal or otherwise

known to Applicant regarding Applicant's right to use or register the mark COWGIRL

MAGIC.

ANSWER:



and to the extent it seeks information protected from disclosure by the attorney/client privilege,

attorney work product doctrine, or other privilege. Without waiver of the foregoing objections,

Applicant, subject to its Preliminary Statement, above, responds that Applicant is not aware of

the existence of any such documents.

4. For each good and service described in Applicant’s Trademark application Serial No.

87/631636, describe in reasonable detail the channels of trade through which each such

good or service will be offered by you, including, the use of any domain names and the

class(es) of customer(s) for each such good and service.

ANSWER:



to the extent it calls for speculation, and to the extent it seeks to impose upon Applicant

obligations other than those authorized by the Federal Rules of Civil Procedure and the

Trademark Trial and Appeal Board Manual of Procedure. Without waiver of the foregoing

objections, Applicant, subject to its Preliminary Statement, above, responds that goods of the

type identified in U.S. Trademark Application Serial No. 87/631636 are intended to be sold via

wholesale distribution, direct internet sales, and to retailers and distributors of human skincare

products and equestrian tack stores.

5. If Applicant has ever received an opinion from a consultant, expert or otherwise,

concerning its right to use a mark with the words COWGIRL MAGIC, including, but not

limited to, an opinion regarding whether Applicant’s use of such mark(s) is likely to

cause confusion, mistake or deception with any third party mark or vice versa, for each

such opinion state the date of the opinion, the name of the individual or individuals who

rendered the opinion and the identity of all written or oral opinions.

ANSWER:



on the basis and to the extent it is duplicative of, without limitation, Interrogatory #3, above, and

to the extent it seeks information protected from disclosure by the attorney/client privilege,

attorney work product doctrine, or other privilege. Without waiver of the foregoing objections,

Applicant, subject to its Preliminary Statement, above, responds that Applicant is not aware of

the existence of any such opinion.

6. State whether you have purchased any advertising employing or using keywords using

the word “COWGIRL”, and, if so, list all keywords you have selected, purchased or

employed.

ANSWER:



at least based on its failure to limit the scope of “any advertising”, and to the extent it seeks to

impose upon Applicant obligations other than those authorized by the Federal Rules of Civil

Procedure and the Trademark Trial and Appeal Board Manual of Procedure. Without waiver of

the foregoing objections, Applicant, subject to its Preliminary Statement, above, responds that

Applicant has not purchased advertising of the type described.

7. State the author of any consumer reaction studies, market research or similar consumer

studies or research relative to Opposer's marks and identify any documents relating to

each such study or research.

ANSWER:

Applicant restates and incorporates its general objections. Without waiver of the foregoing

objections, Applicant, subject to its Preliminary Statement, above, responds that Applicant is not

aware of the existence of any such studies.

8. State when you first became aware of Opposer and/or any of the COWGIRL Marks (as

that term is defined in the Notice of Opposition), including the person(s) associated with

Applicant who was involved in such initial awareness, and the date and circumstances

surrounding such initial awareness.

ANSWER:


objects to the foregoing interrogatory on the basis and to the extent that it seeks information

protected from disclosure by the attorney/client privilege, attorney work product doctrine, or

other privilege. Without waiver of the foregoing objections, Applicant responds that it first

became aware of the COWGIRL Marks (as that term is defined in the Notice of Opposition) on

September 16, 2018.

9. Identify all witnesses, including the address of such witness which you expect to call to

testify at trial and state the subject matter of each witness’s testimony.

ANSWER:

Applicant has not completed its discovery or preparation for trial in this proceeding and,

therefore, restates and incorporates its Preliminary Statement, above. Further, Applicant restates

and incorporates its general objections and additionally/more specifically objects to the

foregoing interrogatory on the basis and to the extent that it seeks information protected from

disclosure by the attorney/client privilege, attorney work product doctrine, or other privilege.

Without waiver of the foregoing objections, Applicant responds that it may rely at trial upon the

testimony of:

Devon Katzev

President,


This individual may be

contacted through counsel for

Applicant.

Mr. Katzev has knowledge and information regarding

Applicant’s bona fide intent to use the COWGIRL MAGIC

mark; Applicant’s acquisition, ownership and rights in the

assets of Cumming Group, Inc.; and the facts, defenses and

circumstances set forth in Applicant’s Answer.

James Cummings

President,

Mr. Cummings has knowledge and information regarding

the sale and transfer to Applicant of all right, title, and

Cummings Group, Inc.

9485 Villa Isle Drive

Villa Park CA 92861

(714) 342-7426

interest in and to the assets of Cummings Group, Inc.,

including but not limited to U.S. Trademark Registration

No. 3132341 and products of the type identified therein; the

use in commerce of the trademark COWGIRL MAGIC in

association, without limitation, with at least the goods

identified in U.S. Trademark Registration No. 3132341; the

absence, on the part of Opposer or any predecessor in

interest, of any formal opposition, petition for cancelation,

or any other action challenging, complaining of, or

opposing such use.

10. Identify all individuals who assisted in any manner in the preparation of the answers to

these interrogatories.

ANSWER:


objects to the foregoing interrogatory on the basis and to the extent that it seeks information

protected from disclosure by the attorney/client privilege, attorney work product doctrine, or

other privilege. Without waiver of the foregoing objections, Applicant responds that its attorney,

Douglas Panzer, prepared the foregoing responses, in consultation with Devon Katzev and

Robyn Frankenfield. Any contact with these individual employees of Applicant shall be through

counsel for Applicant.

< ********** SIGNATURE PAGE FOLLOWS **********>

Dated: March 25, 2019

By,

____________________________________

Douglas Panzer

Fitzpatrick Lentz & Bubba, P.C.

4001 Schoolhouse Lane

P.O. Box 219

Center Valley, PA 18034-0219

(610) 797-9000

[email protected]



I hereby certify that a true and complete copy of Applicant’s foregoing Answers

And Objections to Opposer’s Interrogatories has been served on Opposer by forwarding said

copy on March 25, 2019, via email to Attorney for Opposer:

Kirstin Jahn

Jahn & Associates, LLC

1942 BROADWAY SUITE 314

BOULDER, CO 80302

[email protected]

_________________________

Signature

Douglas Panzer

Fitzpatrick Lentz & Bubba, P.C.

4001 Schoolhouse Lane

P.O. Box 219

Center Valley, PA 18034-0219

Phone: (610) 797-9000, ext. 390

Fax: (610) 797-6663

Email: [email protected]


EXHIBIT J




EXHIBIT L

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From: Woller, Joy <[email protected]>Sent: Thursday, November 12, 2020 7:13 PMTo: Douglas Panzer; TrademarksCc: Jackson, David A.; Nicholas, Rachel; Wildman, KarenSubject: RE: COWGIRL MAGIC/ Opposition No. 91243622

Doug, Thank you for the response and for the consent to the 30-day extension. We will go ahead and get that on file. Best regards, Joy

Joy Woller Partner 303.628.9504 office 303.623.9222 fax [email protected]

_____________________________

Lewis Roca Rothgerber Christie LLP 1200 17th Street, Suite 3000 Denver, Colorado 80202-5855 lrrc.com

From: Douglas Panzer <[email protected]> Sent: Thursday, November 12, 2020 2:57 PM To: Woller, Joy <[email protected]>; Trademarks <[email protected]> Cc: Jackson, David A. <[email protected]>; Nicholas, Rachel <[email protected]> Subject: RE: COWGIRL MAGIC/ Opposition No. 91243622 [EXTERNAL]

Joy, I appreciate you calling to discuss yesterday. Please see the attached responsive letter. Regards, Doug

Douglas Panzer Partner Registered Patent Attorney CAESAR RIVISE, PC

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7 Penn Center│12th Floor│1635 Market Street│Philadelphia, PA 19103-2212 215.567.2010 (P)│215.751.1142 (F) [email protected]│Bio at http://www.caesar.law│Download vCard From: Woller, Joy [mailto:[email protected]] Sent: Wednesday, November 11, 2020 9:24 PM To: Douglas Panzer; Trademarks Cc: Jackson, David A.; Nicholas, Rachel Subject: COWGIRL MAGIC/ Opposition No. 91243622 Doug, Thank you for the call earlier today. Please see the attached letter concerning discovery in this opposition. In light of the upcoming pre-trial disclosure deadline and to allow us to confer further on these issues as well as the possibility of settlement, we have requested a response on the proposed extension by end of day tomorrow. If it would be helpful to discuss this on a call, please let me know. Best regards, Joy


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EXHIBIT M

1

From: Douglas Panzer <[email protected]>Sent: Friday, December 11, 2020 12:32 PMTo: Woller, Joy; Manny D. PokotilowCc: Jackson, David A.; Wildman, KarenSubject: RE: RMNL/ COWGIRL MAGIC

Joy, We are looking into this with our e-discovery vendor and expect to have a complete response today. Generally, this appears to be related to Adobe Illustrator file types and other graphics-related files. That said, we are confirming what, if any, other files of any substance should have been included in native format. We will deliver any omitted documents ASAP. This does not appear to be a substantive issue bearing on the merits, therefore it likely will not require a sixty day extension. Based on the fact that the delay does exist, however, we will agree to a thirty-day extension. Please let us know about that or feel free to file the 30-day extension. Manny or I will follow up shortly with additional substance on the above. Doug From: Woller, Joy [mailto:[email protected]] Sent: Thursday, December 10, 2020 4:53 PM To: Douglas Panzer; Manny D. Pokotilow Cc: Jackson, David A.; Wildman, Karen Subject: RMNL/ COWGIRL MAGIC Good afternoon Manny and Doug, We have received and reviewed the supplemental production provided by Straight Arrow on Monday. We are continuing to review it, but there appear to be some gaps and other issues we wanted to bring to your attention: • The following bates numbers appear to be missing: 1402, 1404, 1408, 1413, 1415, 1434, 1436, 1453, 1455, 1458, 1460, 1470, 1472, 1474, 1476, 1482, 1484, 1493, 1506, 1508, 1516, 1518, 1549, 1551, 1556, 1572, 1574, 1580, 1582, 1661, 1663, 1668, 1670, and 1799. • We received PDF placeholders for several files that were not produced due to missing passwords or because they are native files (e.g. wav files). For example, 1392, 1396, 1468, 1504, 1666, 1784, and 1837. If you intended to make a native production along with the PDF, we did not receive it. • It does not appear that we received any written supplemental responses to our Interrogatories and Discovery Requests. It may be helpful to discuss an efficient manner for both parties to exchange documents from this point forward. For example, it looks like these documents were produced as single page TIFFs out of a litigation support tool. We are able to receive these in load file, which may eliminate some of the native file issues. We had originally requested a 60-day extension and you had consented to just 30 days. However, we are now again just four business days from our pretrial disclosure deadline and will need the opportunity to receive and review these materials. In light of this deadline, and the holidays, please let me know if your client will consent to a 60-day extension

2

of all deadlines so we can confer on and attempt to resolve the discovery issues before the trial period. Please let me know when we can expect to receive the written discovery responses. Best regards, Joy


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