IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Vitacost.com, Inc.
Petitioner,

Cancellation No. 92051217

Registration No. 3636607

v.
Mark:
Ana Eloisa del Carmen Alfaro de Maron,
Respondent.

RESPONDENT'S MOTION TO COMPEL

COMES NOW, Respondent and pursuant to TBMP 325 and 411.01 and Rule 37 of
the Federal Rules of Civil Procedure moves to compel Petitioner to comply with its discovery
obligations. In support of this Motion, Respondent states as follows:
FACTUAL BACKGROUND
Respondent served its first interrogatories and requests for production on Petitioner on
December 22, 2009. See Exhibits A and B. On February 15, 2010, Petitioner served
Petitioners Response to Respondents First Set of Interrogatories and Petitioners Response
to Respondents First Set of Request for Production of Documents and Things (collectively,
Petitioners Responses). See Exhibits C and D. Petitioners responses contained a handlful of
documents, and contained numerous unsupported objections.
The documents produced by Petitioner contained no details regarding the amount of sales
and advertising under Petitioners marks in the United States. The documents produced by
Petitioner consist solely of:

Information from the USPTO regarding Petitioners two U.S. trademark

registrations;

Incorporation and Secretary of State documents regarding Petitioners

corporation;
Petitioners stock Prospectus;
Petitioners Agenda for Directors Meeting 05/23/99
July 29, 1999, board meeting minutes;
December 6, 1999, board meeting minutes;
December 3, 1999 letter to Natures Wealth Shareholders;
Minutes of Annual Meeting December 18, 1999;
Proxy voting papers, statement, and ballot; and
Notice of Annual Meeting of Stockholders (collectively, Petitioners Initial
Production).

On March 11, 2010, Respondent faxed and mailed a letter to counsel for Petitioner noting
the lack of documents produced and the numerous unfounded objections, including a note that
no details regarding the amount of sales and advertising under Petitioners marks in the United
States has been produced. See Exhibit E.
On April 2, 2010, Respondent faxed and mailed a follow up letter to counsel for
Petitioner requesting responses and documents by April 9, 2010. See Exhibit F.
To date, Respondent has received no document production from Petitioner other than
Petitioners Initial Production and has not received any response to the discovery issues raised in
the March 11, 2010, letter.
The discovery period in this matter is scheduled to close May 17, 2010. Docket Docs.
10, 11.
ARGUMENT
Respondent cannot reasonably conduct depositions, issue follow up discovery requests,
or prepare for trial until Petitioner has completely complied with its outstanding discovery
obligations. Petitioner has ignored Respondents attempts to resolve these discovery disputes
without requiring to the Boards intervention.

Cancellation No. 92051217: RESPONDENT'S MOTION TO COMPEL

p.2

Petitioner provided numerous objections that the interrogatories and requests are not
specific in time. See responses to Interrogatory Nos. 4a, 4b, 5, 6, 11, 20, and 23 (Ex. C) and
responses to Request for Production Nos. 9, 10, 11, and 20 (Ex. D). However, Petitioner has not
made any effort to provide responses for even a period of time which it deems reasonable.
Petitioner has alleged extensive use and advertising of its marks, that its marks are famous, and
that its marks are being diluted. See Petition to Cancel at 6, 20. It is the duty of a plaintiff
asserting that its marks are famous to clearly prove it. Leading Jewelers Guild Inc. v. LJOW
Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007); Hasbro, Inc. v. Braintrust Games, Inc.,
Opposition No. 91169603, N. 8 (T.T.A.B. Aug. 24, 2009) (Fame is a factual matter which must
be established on the record in each proceeding.). For purposes of dilution, a plaintiff must
show that when the general public encounters the plaintiffs mark, in almost any context, they
associate it with the plaintiff. Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001).
Respondent is therefore entitled to discovery of Petitioners evidence supporting these
allegations.
The handful of documents produced by Petitioner thus far includes records from its board
meetings from 1999, essentially acknowledging that documents from at least 10 years ago may
be relevant and appropriate, and acknowledging that Petitioner maintains at least some records
that date back 10 or more years.
In addition, Petitioner provided numerous objections that responses or document
production would be unduly burdensome without any justification. See Responses to
Interrogatory Nos. 4a, 4b, 5, 6, 11, 20, 21, 23, 26, (Ex. C) and Response to Requests for
Production Nos. 8, 9, 10, 11, 17, and 20 (Ex. D). A party claiming that a request is burdensome
must justify that claim; for example, by stating that the responding party has tens of thousands of

Cancellation No. 92051217: RESPONDENT'S MOTION TO COMPEL

p.3

documents spanning decades. Where complete compliance with a particular request would be
unduly burdensome, a representative sampling may be provided. See TBMP 414(2) (2d ed. rev.
2004). Additionally, a production of representative documents must truly be a representative
sampling, and not merely a self-serving selection of favorable documents. See, e.g., The Procter
& Gamble Company v. Keystone Automotive Warehouse, Inc., 191 USPQ 468 (TTAB 1976).
In addition to the unwarranted and unsupported objections discussed above, the following
discovery responses and deficiencies were addressed in the March 11, 2010, letter from counsel
for Respondent:

Regarding Interrogatory No. 3, details regarding the first use of the mark and first use in
commerce have not been provided, including but not limited to the nature of the first
uses, the specific dates of the first uses, and the persons involved in the first uses.

Regarding Petitioners objections to Interrogatory No. 4 as overly broad and burdensome,

the volume and dollar amount of annual sales in the United States for the last 10 years is
clearly relevant to the facts and allegations pleaded in the Petition to Cancel, numerous
DuPont factors, and Petitioners claim of fame.

Regarding Petitioner objections to Interrogatory No. 6, information regarding trademark

searches is not overly broad or burdensome. Trademark searches and monitoring reports
are relevant to the facts and allegations pleaded in the Petition to Cancel, numerous
DuPont factors, and Petitioners claim of fame. Furthermore, pursuant to TBMP 414,
Search reports are discoverable.

Regarding Petitioners objections to Interrogatory No. 10, the Definitions section of

Respondents interrogatories defines service provider as advertising agencies, public
relations agencies, market research agencies, and other providers of promotional

Cancellation No. 92051217: RESPONDENT'S MOTION TO COMPEL

p.4

services. As a result, Petitioners objections are unfounded and its answer nonresponsive. Respondent is entitled to know any third party companies or persons used for
promotional services so that Respondent may conduct discovery with or depose
representatives from those parties if necessary. This information is relevant to the facts
and allegations pleaded in the Petition to Cancel, numerous DuPont factors, and
Petitioners claim of fame.

Regarding Petitioners objections to Interrogatory No. 11, 20002 is clearly intended to

refer to the year 2002. The interrogatory is not overly broad or burdensome and is
specific in time.

Regarding Petitioners objection to Interrogatory No. 20, as detailed above the

Interrogatory is not overly broad and burdensome in light of Petitioners claim of
extensive use, famous marks, and dilution.

Regarding Petitioners objection to Interrogatory No. 22, Petitioners response is not fully
responsive. Petitioners statements regarding the number of SKUs, volume of sales and
dollar amount of sales are not specific, not annualized, and not provided for the United
States apart from worldwide data.

Regarding Petitioners objections to Interrogatory No. 26, the request relates to any
policy for document retention in general, and thus is not overly board or burdensome
and is quite specific.

Regarding Petitioners objections to Request Nos. 8 (annual sales), 10 (advertising and

promotional expenses), 11 (samples of advertising and promotional materials), and 20
(documents showing use of the mark in connection with each of Petitioners good and/or

Cancellation No. 92051217: RESPONDENT'S MOTION TO COMPEL

p.5

services), the requests for documents are not overly board or burdensome for a period of
at least the last 10 years in light of Petitioners claim of extensive use and famous marks.

Regarding Request No. 9, pursuant to TBMP 414(8), [a] partys plans for expansion
may be discoverable under protective order.

Regarding Request No. 17, the request relates to any policy for document retention in
general, and thus is not overly board or burdensome and is quite specific.

See Exhibits C, D, and E.

As detailed above, Petitioner has made numerous inappropriate objections, failed to
provide many complete discovery responses, and failed to produce many responsive documents.
Petitioner commenced this proceeding by filing a Petition to Cancel on July 10, 2009.
Now, more than nine months later, Petitioner has failed to sufficiently answer many of
Respondents Interrogatories and Requests for Production pursuant to Fed. R. Civ. Pr. 26 and
Rule 37, and TBMP 411 and 523. Petitioner has also failed to produce more than a handful of
documents, none of which relate to the sales or advertising of Petitioners allegedly famous
marks. Petitioner has failed to address Respondents good faith efforts regarding Petitioners
failure to respond to Respondents discovery. Respondent attaches a statement from counsel
regarding his good faith effort to resolve this discovery dispute without interference from the
Board pursuant to 37 C.F.R. 2.120(e) and TBMP 523.02.
REQUEST FOR RELIEF
Respondent moves this Board for an Order compelling Petitioner, within fifteen (15) days
from the date of the Order, to fully and completely respond to all of Respondents December 22,
2009, Interrogatories and Requests for Production, including each Interrogatory and each

Cancellation No. 92051217: RESPONDENT'S MOTION TO COMPEL

p.6

Request for Production, without objections regarding burden, vagueness, confidentiality, or

relevance.
Respondent moves this Board for an Order compelling Petitioner, within fifteen (15) days
from the date of the Order, to fully and completely respond to all of Respondents December 22,
2009, Interrogatories and Requests for Production with a scope time covering at least 10 years.
Respondent moves this Board to direct Petitioner to serve, within fifteen (15) days from
the date of the Order, hard or electronic copies of all responsive documents and things to counsel
for Respondent at the expense of Petitioner, or be prevented from introducing any evidence.
Respondent moves this Board to direct Petitioner to serve, within fifteen (15) days from
the date of the Order, full and complete response to Interrogatory No. 3, 4a, 4b, 5, 6, 11, 20, 21,
22, 23, 26, and Response to Request for Production Nos. 8, 9, 10, 11, 17, and 20.
Respondent moves this Board to reset the close of discovery and subsequent deadlines to
allow Petitioner time to conduct follow up discovery and depositions after the time allocated for
Petitioner to provide complete and full responses to the discovery detailed herein.
Respondent further moves this Board for any other relief it deems appropriate.
WHEREFORE, Respondent respectfully requests that the Trademark Trial and Appeal
Board grant its Motion to Compel and grant all other appropriate relief.

Dated this 16th day of April, 2010.

Erik M. Pelton
ERIK M. PELTON & ASSOCIATES, PLLC
PO Box 100637
Arlington, Virginia 22210
TEL: (703) 525-8009
FAX: (703) 525-8089
Attorney for Respondent

Cancellation No. 92051217: RESPONDENT'S MOTION TO COMPEL

p.7

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Vitacost.com, Inc.
Petitioner,

Cancellation No. 92051217

Registration No. 3636607

v.
Mark:
Ana Eloisa del Carmen Alfaro de Maron,
Respondent.

DECLARATION OF ERIK M. PELTON, ESQ.

I, Erik M. Pelton, Esq., declare as follows:
1.

I represent Respondent Ana Eloisa del Carmen Alfaro de Maron in this matter.

2.

I have knowledge of the facts set forth herein and in Respondents Motion to

Compel.
3.

Respondents First Set of Interrogatories and First Requests for Production were

served on Respondent on December 22, 2009, and are attached hereto as Exhibits A and B.
4.

On March 11, 2010, I mailed and faxed counsel for Petitioner a letter, attached as

Exhibit E, regarding Respondent inappropriate objections, failure to provide complete responses

to numerous interrogatories and requests for production, and failure to produce more than a
handful documents and no documents regarding Petitioners sales or advertising.
6.

On April 2, 2010 I faxed and mailed counsel for Petitioner a follow up letter,

attached as Exhibit F, noting that no response has been received to my March 11, 2010, letter.

Cancellation No. 92051217: RESPONDENT'S MOTION TO COMPEL

p.8

7.

As of April 15, 2010, Petitioner has not completely responded to Respondents

First Set of Interrogatories and Petitioners First Requests for Production or to the specific issues
raised in counsels March 11, 2010, letter.
8.

As of April 15, 2010, Petitioner has not produced any documents regarding the

advertising or sales in the United States regarding the marks it asserts are famous.
9.

Pursuant to 37 C.F.R. 2.120(e) and TBMP 523.02, I have made a good faith

effort to resolve the issues presented by Petitioners objections and lack of responses to
Respondents First Set of Interrogatories and Respondents First Requests for Production.
10.

Additional details regarding the nature and dates of these good faith efforts are

contained in the Motion to Compel filed herewith and in the March 11, 2010 and April 2, 2010,
letters attached as Exhibits E and F.
I declare under penalty of Perjury that all of the foregoing is true and correct.

Dated: April 16, 2010

Erik M. Pelton, Esq.

Cancellation No. 92051217: RESPONDENT'S MOTION TO COMPEL

p.9

CERTIFICATE OF SERVICE
I hereby certify that a true and accurate copy of RESPONDENT'S MOTION TO
COMPEL has been served on the following by delivering said copy on April 16, 2010, via First
Class Mail, to counsel for Petitioner at the following address:
Stewart Gitler
Hoffman, Wasson & Gitler, P.C.
2461 South Clark Street, Crystal City 2, Suite 522
Arlington, VA 22202

By:
Erik M. Pelton, Esq.

Cancellation No. 92051217: RESPONDENT'S MOTION TO COMPEL

p.10

USPTO. ESTTA. Receipt

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ESTTA Tracking number:

Filing date:

ESTTA342609
04/16/2010

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding

92051217

Party

Defendant
Ana Eloisa del Carmen Alfaro de Maron

Erik M. Pelton & Associates PLLC

PO BOX 100637
Correspondence
Arlington, VA 22210
Address
UNITED STATES
uspto@tm4smallbiz.com
Submission

Motion to Compel Discovery

Filer's Name

Erik M. Pelton

Filer's e-mail

uspto@tm4smallbiz.com

Signature

/ErikMPelton/

Date

04/16/2010

Attachments

VITACOM - Motion to Compel - FINAL.pdf ( 10 pages )(66717 bytes )

VITACOM - Motion to Compel - EXHIBITS.pdf ( 69 pages )(1366051
bytes )

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