ESTTA Tracking number: ESTTA399884 03/25/2011 IN … · ESTTA Tracking number: ESTTA399884 ... requested in the instructions to the document requests . Instead , ... INITIAL DISCLOSURES

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

ESTTA Tracking number: ESTTA399884Filing date: 03/25/2011

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91194042

Party DefendantRenu Sood

CorrespondenceAddress

PAUL W REIDLLAW OFFICE OF PAUL W REIDL3300 WYCLIFFE DRIVEMODESTO, CA 95355UNITED [email protected]

Submission Motion to Strike

Filer's Name Paul W. Reidl

Filer's e-mail [email protected]

Signature /pwr/

Date 03/25/2011

Attachments Sood Strike Motion.pdf ( 9 pages )(235736 bytes )Reidl Decl.pdf ( 14 pages )(321990 bytes )

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MOTION TO STRIKE TESTIMONY OF CHARLES MASSIE

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BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE

TRADEMARK TRIAL AND APPEAL BOARD

Application No. 77/767,891 Mark: RONDO HILLS Class: 33 ___________________________________ )

CANTINE RIONDO, S.p.A., ) Opposition No: 91194042

)

Opposer, ) MOTION TO STRIKE TESTIMONY

) OF CHARLES MASSIE

v. )

)

RENU SOOD, )

)

Applicant. )

___________________________________ )

Pursuant to 37 C.F.R. § 2.123 (e)(3), Applicant moves to strike the testimony of Charles

Massie that was taken in this case on March 24, 2011. This motion is based on the Board’s

Rules and the Declaration of Paul W. Reidl submitted herewith.1

When the Board revised its Rules in 2007, it sent a strong message to practitioners that

trial by ambush and guerrilla tactics would not be tolerated in Board proceedings. The Board

made it clear that the new paradigm was voluntary disclosure. The Board also made it clear that

there would be consequences for failing to disclose, and its subsequent decisions have affirmed

its seriousness about the new Rules and the consequences for failing to comply with them.

//

1 Applicant notified Opposer in writing of its intention to attend the deposition of Mr.

Massie under protest, and counsel put this objection on the record. Counsel also objected to the

admission of all of the documents at the deposition. (Reidl Decl. ¶ 31). This motion is being

brought “promptly” after the conclusion of the testimony as required by the Board’s Rules.

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This case involves a large Italian company (with a United States office) opposing an

application filed by an individual residing in the United Kingdom. The imbalance of financial

resources and market clout between the two parties is substantial. Applicant is bringing this

motion to strike the testimony of Mr. Massie because the testimony was the culmination of many

months of refusing to comply with the Board’s disclosure rules, of sharp practices, of doing

everything possible to drive up the cost of defending the case, and of “hiding the ball” on the

witnesses, facts and evidence. From start to finish Opposer has done everything possible to

avoid disclosure.

Mr. Massie is the CEO of Cantine Riondo USA. His office is in New Jersey. Under the

Board’s rules, his identity and his office should have been disclosed to Applicant in its Initial

Disclosures because he clearly has knowledge of the issues in the case. He testified that he

created the trademark and the product, and that he runs the business in the United States. (Reidl

Decl. ¶ 36).

As detailed in the Reidl Declaration, however, Opposer never made any Initial

Disclosures during the discovery period. (Id. ¶¶ 4-6). Counsel for Applicant reminded Opposer

twice that it had not received its Initial Disclosures. (Id. ¶ 5). Cynically, Opposer served its

Initial Disclosures two weeks into the trial period concurrently with its Pre-Trial Disclosure in

which it identified Mr. Massie as a trial witness. (Id. ¶ 10).

This was the first time that Applicant learned that Opposer had offices and an employee

in the United States. (Id. ¶ 25). It is abusive and totally inconsistent with the concept of full

disclosure for a party to disclose the existence of such important facts and witnesses long after

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discovery is closed.2 Had these facts and witness been disclosed during the discovery period – in

Initial Disclosures, supplemented Initial Disclosures, an interrogatory response, or a

supplemental interrogatory response – Applicant’s counsel could have taken a discovery

deposition during one of the times when he was on the East Coast for other business. (Id. ¶¶ 23,

37). This would have significantly reduced the cost for the client. But rather than making a

disclosure Opposer went to great lengths to bury this information.

Of course, by the time the Pre-Trial Disclosures were served Applicant has lost the

opportunity to take discovery on Mr. Massie because the discovery period had long-since closed.

The fact that the Pre-Trial Disclosures were two weeks late only compounded the prejudice. (Id.

¶¶ 24-25). In addition, Opposer’s Pre-Trial Disclosures did not identify the subjects on which

Mr. Massie (or any of the other witnesses) would be testifying as required by the Board’s Rules,

37 C.F.R. § 2.121(e). (Id. ¶ 27). Applicant could only guess at the subjects that would be

covered by the testimony. Applicant therefore had no choice but to attend the deposition under

protest and cross-examine Mr. Massie the best it could.

Opposer’s failure to follow the disclosure rules was not confined to the location and

existence of Mr. Massie: it played hide-the-ball with its documents and exhibits as well.3 This

took four forms:

2 Opposer mentioned Mr. Massie in its interrogatory responses but did not disclose his title

or office location as required by the instructions to the interrogatories. Applicant believed that,

like the other individual disclosed in the interrogatory responses, his office was in Italy because

Opposer is an Italian company, its web site is in Italian, and it makes no mention of a United

States company (Reidl Decl. ¶¶ 20-23).

3 Applicant is not asking the Board to rule on the admissibility of specific Exhibits.

Rather, it is using Opposer’s shenanigans with its documents to illustrate the facts and

circumstances surrounding the Massie testimony and why the entire process was unfair and

prejudicial to Applicant.

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1. Opposer refused to produce documents at the offices of Applicant’s counsel as

requested in the instructions to the document requests. Instead, knowing that it would be hugely

expensive for Applicant, Opposer demanded that Applicant’s counsel travel to the offices of

Opposer’s counsel in Virginia to look at the documents. This was totally unreasonable, in part

because the instructions were customary but also because Applicant’s counsel resides in

California. Thus, Opposer was demanding that Applicant – an individual – pay counsel for his

time and travel expenses to fly cross-country to review some documents that should have been

produced voluntarily. (Reidl Decl. ¶ 12).

Applicant offered as a compromise that it would reimburse the cost of duplicating the

documents. (Id. ¶ 13). This offer was refused by Opposer: the only way that Applicant would

have access to the documents was to travel to Virginia at great cost and expense. (Id.). At that

point Applicant’s counsel was faced with a choice: invest in a motion to compel and delay the

proceedings (which was Opposer’s apparent tactical objective) or put Opposer on notice that it

engaged in these kinds of sharp practices at the risk of a motion to strike any trial exhibits that

were not disclosed. Applicant chose the latter and it so advised Opposer’s counsel. (Id. ¶¶ 7,

16). In other words, Opposer’s counsel continued playing “hide the ball” during the trial period

with full knowledge that he was going to have to answer this motion.

Opposer’s refusal of the offer to copy the documents was petty and made solely for the

purposes of harassment and driving up the cost of the case to Applicant. Why? Because even if

Applicant’s counsel had traveled to Virginia to inspect the documents Applicant still would have

been entitled to copies of them. There was no legitimate reason for refusing to copy the

documents and send them to Applicant’s counsel.

//

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2. After discovery had closed Opposer apparently decided that it was in its interest

to disclose some documents to Applicant, so it send several pages of materials downloaded from

the internet by e-mail to Applicant’s counsel. (Reidl Decl. ¶¶ 15-16). Applicant’s counsel

chastened Opposer for its selective disclosure and again demanded that Opposer produce all of

the documents. Opposer again refused and invited Applicant’s counsel to travel to Virginia to

inspect them at the office of opposing counsel. (Id. ¶ 16). There was no legitimate reason to

disclose some but not all of the documents.

3. Opposer disclosed certain types of documents in its Pre-Trial Disclosures.

Among the types of documents disclosed were those that it was supposedly willing to have

Applicant inspect in its offices in Virginia. (Id. ¶ 33). More alarmingly, it disclosed various

documents that it had objected to producing in the first place and that Applicant would not

have seen even if it had traveled to counsel’s offices in Virginia. (Id. ¶ 34). In other words,

Opposer used its objections during discovery to shield the documents from Applicant and in the

testimony period decided that it would use those documents as trial exhibits anyway.

4. Opposer used as Exhibits at the Massie testimony certain types of documents that

were not disclosed in its Pre-Trial Disclosures. (Id. ¶ 35).

* * * * * * * *

The bottom line is that with the exception of the documents selectively disclosed to

Applicant after the close of discovery, Applicant had not seen any of the Exhibits to the Massie

deposition so it was impossible to cross-examine him properly on them. Applicant never had an

opportunity to depose Mr. Massie because he had not been disclosed properly in an Initial

Disclosure or otherwise. Since Applicant attended the testimony by telephone (by agreement) in

order to reduce the costs, the prejudice to playing hide-the-ball on the documents was manifest:

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it was impossible to cross examine Mr. Massie effectively without the documents. The Exhibits

used at the testimony reflected those documents that Opposer, after the discovery period, decided

to put into the record. Applicant could not cross examine Mr. Massie on the full scope of

documents produced during discovery because there were none. These sharp practices were

unfair and they adversely infected the integrity of Mr. Massie’s testimony. (Reidl Decl. ¶ ¶ 37-

38). In short, having been put on notice that Applicant would move to strike the testimony and

Exhibits, Opposer apparently doubled down on its strategy and made a cynical but calculated

decision that at the end of the day the Board would decline to strike the testimony and Exhibits

and put the onus on Applicant for not spending time and more money chasing Opposer to

comply with its basic disclosure and discovery obligations that are supposed to be voluntary

under the Board’s rules.

Taken together, these facts compel the conclusion that the Massie testimony should be

stricken. Opposer did not comply with the disclosure rules, it did not comply with the discovery

rules, and it did so precisely to place as heavy a burden as possible on Applicant, who is an

individual. There is simply no excuse for Opposer’s conduct. Applicant, for its part, was

reduced to “winging it” at the Massie testimony because it was truly facing the kind of “trial by

ambush” that the Board’s disclosure rules were intended to prevent. Any result other than

striking the Massie testimony would set a terrible precedent: it would be signal that large

companies appearing before the Board can engage in guerrilla, hide-the-ball tactics that are

designed to drive up the cost and expense of Board proceedings and face no consequences at all.

These facts are even more egregious than those in Jules Jurgensen/Rhapsody, Inc.

v. Peter Baumberger, 91 U.S.P.Q.2d 1443 (TTAB 2009). In that case, the Board struck the

testimony of a witness who had not been disclosed in the Initial Disclosures, observing that:

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it is also surprising that Mr. Clayman was not identified in petitioner’s initial

disclosures, and we must consider this fact as one of the relevant circumstances to

be considered in determining whether to strike Mr. Clayman’s testimony

deposition. That is, petitioner’s failure to identify Mr. Clayman in its initial

disclosures deprived respondent of the opportunity to seek discovery of Mr.

Clayman.

In this case, of course, Mr. Massie was not disclosed in the Initial Disclosures because

there were none. Opposer kept that fact to itself and buried all hope of having Applicant learn of

Mr. Massie’s office in the United States by taking unreasonable positions on its document

production: the documents undoubtedly would have disclosed both the importance of Mr. Massie

and his office in the United States.

Similarly, Opposer should not be permitted to rely on trial Exhibits that were not

produced during discovery. See Panda Travel, Inc. v. Resort Option Enterprises, Inc., 94

U.S.P.Q.2d 1789 (TTAB 2009) (granting motion to strike where party provided no reason for

failing to produce responsive documents before trial opened); Quality Candy Shoppes/Buddy

Squirrel of Wisconsin Inc. v. Grande Foods, 90 U.S.P.Q.2d 1389 (TTAB 2007) (same). Since no

documents were produced during discovery, the Exhibits to the Massie testimony should be

stricken.

When the Board considers “all the relevant circumstances”, it is clear that Opposer has

failed to comply with the letter and the spirit of the Board’s disclosure rules, that this has caused

extreme prejudice to Applicant, and that it has infected the integrity of Mr. Massie’s testimony.

For all of these reasons, Applicant requests that the Massie testimony be stricken in its entirety.

//

//

//

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Respectfully submitted,

LAW OFFICE OF PAUL W. REIDL

By: /s/ Paul W.Reidl_______

Paul W. Reidl

Dated: March 25, 2011 Law Office of Paul W. Reidl

3300 Wycliffe Drive

Modesto, CA 95355

(209) 526-1586

[email protected]

Attorney for Applicant,

Renu Sood

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PROOF OF MAILING AND SERVICE

On March 25, 2011, I caused to be served the following document:


to opposing counsel by placing a true copy thereof in the United States mail enclosed in an

envelope, postage prepaid, certified, return receipt requested, addressed as follows to them at

their address of record:

James C. Wray

1493 Chain Bridge Road

Suite 300

McLean, Virginia 22101

Executed on March 25, 2011, at Modesto, California.

__________________________________________

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DECLARATION OF PAUL W. REIDL IN SUPPORT OF APPLICANT’S


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BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE

TRADEMARK TRIAL AND APPEAL BOARD

Application No. 77/767,891 Mark: RONDO HILLS Class: 33 ___________________________________ )

CANTINE RIONDO, S.p.A., ) Opposition No: 91194042

)

Opposer, ) DECLARATION OF PAUL W. REIDL

) IN SUPPORT OF APPLICANT’S

v. ) MOTION TO STRIKE TESTIMONY

) OF CHARLES MASSIE

RENU SOOD, )

)

Applicant. )

___________________________________ )

The undersigned, being duly advised of the penalties for perjury, hereby states as follows:

BACKGROUND

1. My name is Paul W. Reidl. I am the principal attorney in the Law office of Paul

W. Reidl located in Modesto, California. I have been practicing law for over thirty (30) years

and am a former President of the International Trademark Association. I am counsel for

Applicant in this matter.

2. Applicant Renu Sood is an individual residing in the United Kingdom. She has

applied to register the trademark in the United Kingdom and the United States. She plans to

bottle wine bearing the mark in Europe and export it to the United States

3. Opposer is a large Italian producer of sparkling wine. It has opposed Applicant’s

applications to register the mark in both the United Kingdom and in the United States.

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INITIAL DISCLOSURES

4. Under the Board’s Scheduling Order, the Initial Disclosures of the parties were

due on July 20, 2010. Applicant served Initial Disclosures on Opposer. Opposer did not serve

Initial Disclosures on Applicant.

5. I reminded Counsel for Opposer that I had not received Initial Disclosures in

letters of October 12, 2010 and November 17, 2010. Counsel for Opposer did not respond to my

letters and no Initial Disclosures were served on me during the discovery period.

6. Opposer did not serve any discovery on Applicant until the last day of the

discovery period, December 17, 2010. Citing Dating DNA LLC v. Imagini Holdings, Ltd., 94

U.S.P.Q.2d 1889 (TTAB 2010), Applicant declined to respond to the discovery requests because

Opposer had never served Initial Disclosures.

7. Up until the point that I received Opposer’s discovery requests I believed that

Opposer was not seriously interested in prosecuting the case. Instead, Opposer wanted to delay

resolution for as long as possible and defer investing in the United States proceeding until it

knew the outcome of the proceeding in Europe. If Opposer won in Europe, my client would not

be able to bottle wine bearing the mark in Europe and, therefore, it would be unable to export

wine bearing the mark to the United States. This would explain their responses to my discovery

requests had been slap-dash, their lawyer was taking very unreasonable positions in discovery

(see ¶¶ 11-23 infra), and they had done no discovery on my client. I have no doubt that Opposer

was very confident about the proceeding in Europe because the applicant was representing

herself without counsel.

8. On February 23, 2011, the opposition in Europe against Applicant was dismissed

because the two marks were deemed to be dissimilar.

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9. Several weeks after I served the objections to the discovery (i.e. after January 21,

2011) counsel for Opposer telephoned me and asked me to respond to the discovery requests. I

explained my objection and my client’s unwillingness to extend the schedule. He accused be of

being uncooperative. I said that discovery was closed and my client wanted a resolution; she did

not want this hanging over her head any longer. We were not interested in a “do over.”

10. On February 16, 2011 – the day that Opposer’s trial period opened – Opposer

served its Initial Disclosures. In a letter of February 22, 2011, I put counsel for the Opposer on

notice that:

[Y]ou have used every sharp tactic in the book to “hide the ball” on your case in

the United States and to drive up costs. My client is not interested in any more

delay.

Accordingly, I continue my objections to the way you have prosecuted this case

and will, at the appropriate time, move the Board to strike your evidence. I am

confident that the Board will agree that your sharp practices and flouting of the

disclosure and discovery rules should have severe consequences

DISCOVERY RESPONSES

11. I served discovery requests on Opposer in July 2010 and, at the request of

opposing counsel, extended the time to respond.

A. DOCUMENT RESPONSES

12. The instructions to the document requests requested Opposer to produce the

documents at my office in California. In its response, Opposer stated that the documents were

available for review only at the offices of its counsel in Virginia. In a letter to Opposer’s counsel

of October 12, 2010, I wrote that:

The Instructions to the Documents Requests specifically requested that the

documents be produced at my office. This is the customary way to produce

documents. You did not object to this Instruction. Instead, you asserted that I

should fly from California to Washington, D.C., at a great expense to my client, to

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look at the documents. That is gamesmanship and it is unreasonable. I assume

that you did not fly to Italy to get the documents from your client; instead they

copied them and mailed them to you. So please copy the documents and send

them to me immediately as requested in the Document Requests.

13. In the spirit of compromise I also offered to pay the reasonable costs for copying

the documents. Opposer declined that offer and insisted that the only way I could see the

documents was to fly to to the East Coast at great cost and expense. I renewed my offer in a

letter dated October 20, 2010. This was followed-up with a letter of November 17, 2010 in

which I wrote:

As I have said repeatedly, you are the Opposer in this case but you have refused

to prosecute it: a frivolous Answer to my counterclaim, no Rule 26 disclosures,

frivolous objections to discovery, and in general a complete failure to prosecute

this case in good faith. I understand that your client wants to delay this matter

pending the resolution of the proceeding in the United Kingdom, but I will not be

goaded into delaying the matter by filing motions to compel with the Board – nor

will I waste the Board’s time with them. You continue to be on notice that any

attempt to dump documents, evidence or witnesses on my client at the trial stage

will be objected to vigorously.

Counsel for Opposer did not respond to this letter.

14. At the time, both I and my client were very concerned about the mounting costs of

the case. Opposer’s position on settlement was unchanged from its position at the start of the

case, and we deemed that to be unreasonable. When the costs of my time were included along

with the travel costs, the cost of the trip demanded by Opposer could have approached $5,000.

While that may seem insignificant to a large company like Opposer, it is very significant to an

individual who is trying to start a business.

15. On December 1, 2010, in response to my expert report, Opposer e-mailed me a

single document. I thereupon demanded that Opposer produce all of the documents requested in

discovery. Opposer did not respond to my request.

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16. On January 13, 2011, a month after the close of the discovery period, counsel for

Opposer e-mailed me certain documents he had downloaded from the internet and that he

planned to use as evidence. I responded with a letter of January 21, 2011, in which I stated in

part as follows:

You will recall that the instructions on my document requests specifically

requested that the documents be produced at my office. These are customary

instructions in TTAB and Federal Court practice. You did not object to them but,

instead, unreasonably demanded that I fly from San Francisco to Washington,

D.C. – at great expense to my client – to review the documents. I responded by

offering to pay the duplicating costs of the documents so that they could be

mailed to me. You refused to do that and, instead, insisted that I review the

documents in your office.

It is improper for you to respond selectively to my document requests, which is

exactly what you have done here.

As I have said several times before, I will object vigorously to the introduction of

any documents in this case because of your failure to produce them and I am

confident that the Board will not bless your sharp practices here.

I did not receive a response to this letter.

17. As indicated above in paragraph 9, in January 2011 counsel for Opposer

telephoned me and insisted that I respond to his discovery requests even though Opposer had not

served Initial Disclosures. During this conversation I again asked Opposer to produce the

documents I had requested during discovery -- again to be copied at Applicant’s expense.

Opposer refused and insisted that I make a cross-country trip to Virginia to review the

documents. Counsel for Opposer confirmed this in a letter dated February 7, wherein he invited

me to come to his office in Virginia and review the documents.

18. Applicant’s document requests sought, among other things: marketing and

business plans for goods bearing the mark (Request 1), advertising and promotional materials

(Request 3), media reviews (Request 4), market research reports (Requests 6-7), communications

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with distributors and retailers (Request 11), magazine and newspaper articles regarding goods

bearing the mark (Request 13), Certificates of Label Approval (Request 19), documents

sufficient to show sales in the United States of goods bearing the mark (Request 23), and sales

invoices (Request 27).

a. With respect to Requests 1, 3, 6, 7, 11, 13, and 23 Opposer objected to producing

any documents on confidentiality and relevance grounds. They were never produced.

b. With respect to Requests 4, 19 and 27 Opposer stated that documents would be

produced. They were never produced.

19. I followed-up these responses with a detailed letter explaining why these

objections were improper. Opposer never responded to the letter and did not produce the

documents.

B. INTERROGATORY RESPONSES

20. Interrogatory Instruction 9 defined “Identify” as requiring the name, business

address, and job title of persons requested to be identified. Interrogatory No. 6 requested the

identity of the person responsible for various sales and marketing functions in the United States.

In response, Opposer provided the name of Charles Massie without the additional information.

21. In a letter of October 12, 2010, I requested Counsel for Opposer to provide the

requested information regarding the persons identified in the interrogatory responses. Opposer

refused to do so.

22. The responses were never supplemented as required by the Board’s Rules.

23. Based on my research, I believed that Opposer only had offices in Italy; I did not

believe it had an office in the United States. Opposer is an Italian company, its web site is in

Italian, and it makes no mention of a United States company. Opposer did not disclose the

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existence of a United States office either in Initial Disclosures or in the responses to the

Interrogatories. If it had done so, I would have recommended a deposition to my client. I made

three trips to New York during the discovery period and could have easily tacked on a half-day

deposition in New Jersey (where Mr. Massie’s office is located) thereby reducing the cost to my

client of taking that discovery.

PRE-TRIAL DISCLOSURES

24. Opposer’s Pre-Trial Disclosures were due on January 31, 2011. They were not

made in a timely way. I therefore assumed that Opposer would not be introducing any testimony

at trial but would, instead, merely be making the legal argument that the two marks – both for

wines -- are confusingly similar in sight, sound and meaning. This is the same argument that

Opposer made (and lost) in the proceeding in Europe.

25. I was shocked to receive Pre-Trial Disclosures served on February 16, 2011 –

nearly two weeks late on the day the testimony period opened (attached). This is when I learned

that Mr. Massie had an office in the United States and that he the Chief Executive Officer of a

company called Riondo USA located in New Jersey.

26. The Pre-Trial Disclosures also stated that the trial exhibits would include:

1. The Certificate of Registration of RIONDO.

2. Sales records of shipments of RIONDO labeled wines to

the United States.

3. Wine and label approval by the United States.

4. Photographs of wine bottles showing the RIONDO labels.

5. Advertisements of RIONDO wines.

6. Statements made in a parallel opposition in England.

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7. Photographs of labeled wine bottles used in Europe by the

applicant.

8. Photographs and text materials from the applicant's website

and the websites of the applicant's European distributors.

9. Photographs and text materials from the Opposer's

websites.

27. The Pre-Trial Disclosure disclosed the identity of three witnesses: Mr. Massie, an

individual residing in Italy, and a second individual from Opposer’s office in New Jersey. It did

not disclose the substance of the testimony on which these individuals were to be testifying. I

surmised that one or more of them would be testifying on the subject matter of the documents

listed in the Pre-Trial Disclosure.

28. I sent a letter to Counsel for Opposer on February 22, 2011 in which I pointed out

the numerous ways in which Opposer had violated the Board’s disclosure and discovery rules

and I put Opposer on notice (again) that I would move to strike its evidence because it had not

disclosed any of this during discovery.

29. I received three deposition notices on March 2, 2011. On March 3,

2011, I wrote Opposer’s counsel and noted that:

It is shocking to learn in the testimony period that your client actually has an

office and employees in the United States – facts that should have been disclosed

either in a Rule 26 Initial Disclosure, a discovery response, or a supplemental

discovery [response].

I then put Opposer on notice that pursuant to 37 C.F.R. § 2.123 (e)(3) I was

protesting the deposition due to the failures to disclose, discovery abuses, and

inadequate notice.

//

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TESTIMONY OF MR. MASSIE

30. The testimony of Mr. Massie was taken on March 24, 2011. By agreement, I

appeared by telephone to reduce costs.

31. At the outset of the testimony, I stated on the record that I was participating under

protest. Counsel stipulated to a continuing objection to the introduction of documents.

32. At the conclusion of the testimony counsel for Opposer disclosed that Mr. Massie

would be the only witness even though Opposer had designated two others. The remaining

testimony was canceled.

33. The following documents (among others) were introduced as exhibits at the

deposition:

• Media reviews of goods bearing the mark (Exhibits 764-771, 947-

957)

These were documents that Opposer supposedly had available for production but refused to copy

and send to me. See ¶ 8 supra.

34. The following documents (among others) were introduced as exhibits at the

deposition:

• Total sales figures for goods bearing the mark (Exhibits 632, 765,

788-789, 959)

• Documents that Mr. Massie characterized as his market research

for the mark (765, 959)

• A business plan for goods bearing the mark (Exhibit 791-841)

• Advertising and promotional materials (Exhibits 772, 773, 861,

862, 979-998)

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• Distribution agreements (Exhibits 775-778).

These were documents that Opposer objected to producing during discovery. See ¶ 8 supra.

35. The following types of documents were introduced as Exhibits that were not

disclosed in the Pre-Trial Disclosure (see ¶ 26 supra):

• Media reviews of goods bearing the mark (Exhibits 764-771, 947-957)

• Documents that Mr. Massie characterized as his market research for the

mark (Exhibits 765, 959)

• A business plan for goods bearing the mark (Exhibit 791-841)

• Distribution agreements (Exhibits 775-778).

These were also not produced during discovery.

36. I was stunned to learn at the testimony that Mr. Massie was not an

incidental individual with knowledge of Opposer’s mark. He testified that he created the

brand, that he created the product, and that he runs the United States business. The

failure to disclose his identity and importance in Initial Disclosures was inexcusable and

could not have been accidental.

37. My ability to prepare the defense of this case in an orderly, cost-effective way,

and to cross-examine Mr. Massie in an effective way was severely prejudiced by Opposer’s

failure to follow the disclosure and discovery rules. I did not have the benefit of any prior

testimony with which to impeach the witness nor did I have the ability to cross-examine Mr.

Massie effectively on the documents because I had not seen them even though they had been

requested during discovery. If I had been informed of Mr. Massie’s importance in this matter I

would have recommended to my client that he be deposed.

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38. I believe this also compromised the integrity of the record. As an example, on

direct Mr. Massie testified that wine bearing the RIONDO trademark was the 5th

largest selling

wine in the country. At another point he said it was the 2d largest selling wine. To anyone

familiar with the wine industry, these statements were laughable. (He also testified that he is the

only person in the wine business to use social media.) This testimony was based on A.C. Nielsen

sales data that he characterized as “market research.” These kinds of documents were not

produced during discovery nor were they disclosed in the Pre-Trial Disclosure.

Further declarant sayeth not.

Signed under the penalty of perjury on March 25, 2011.

_________________________________

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ATTACHMENT: OPPOSER’S INITIAL AND PRE-TRIAL DISCLOSURES

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PROOF OF MAILING AND SERVICE

On March 24, 2011 I caused to be served the following document:



to opposing counsel by placing a true copy thereof in the United States mail enclosed in an

envelope, postage prepaid, certified, return receipt requested, addressed as follows to them at

their address of record:

James C. Wray

1493 Chain Bridge Road

Suite 300

McLean, Virginia 22101

Executed on March 24, 2011 at Modesto, California.

__________________________________________