estta tracking number: estta1081473 09/11/2020
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA1081473
Filing date: 09/11/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91252016
Party PlaintiffRLP Ventures, LLC
CorrespondenceAddress
RAMONA PRIOLEAURLP VENTURES LLCTIMES SQUARE STATIONPO BOX 2605NEW YORK, NY 10108-2605UNITED STATESPrimary Email: rlpvllc@gmail.comNo phone number provided.
Submission Opposition/Response to Motion
Filer's Name Ramona Prioleau
Filer's email rlpvllc@gmail.com
Signature /Ramona Prioleau/
Date 09/11/2020
Attachments Response to Motion to Compel - 09112020.pdf(123430 bytes )Declaration of Ramona Prioleau - Opp to MTC- 09112020.pdf(1624353 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
RLP Ventures, LLC
Opposer,
v.
Mosaic Learning, Inc.
Applicant.
Opposition No. 91252016
Mark: MOSAIC LEARNING
Serial No. 88/075,609
Filed: Aug. 13, 2018
Published: Sep. 3, 2019
OPPOSER’S (I) RESPONSE TO APPLICANT’S MOTION TO COMPEL AND (II)
OPPOSER’S MOTION FOR PROTECTIVE ORDER
INTRODUCTION
Opposer, RLP Ventures, LLC (“Opposer”), hereby responds to the motion to compel
filed by Mosaic Learning, Inc. (“Applicant”) on August 22, 2020. The motion is fundamentally
flawed because the discovery requests (namely, the interrogatories and production requests) were
responded to in accordance with the Trademark Trial and Appeal Board Manual of Procedure
(“TBMP”) and the cases related thereto.
Opposer opposes the motion to compel on the grounds that (i) the Applicant did not
provide the Board with an accurate statement of the facts in the motion to compel; (ii) the
Applicant failed to meet and confer in good faith and (iii) the Opposer complied with its
obligations during discovery and has responded to Applicant’s discovery requests in accordance
with the TBMP as well as the cases related thereto. Thus, Applicant’s motion to compel should
be denied.
Separately, Opposer moves for a protective order from the Board pursuant to Rule 26(c)
of the Federal Rules of Civil Procedure concerning Applicant’s First Set of Interrogatories and
Applicant’s First Set of Request for Production of Documents & Things.
As described below, Applicant has asked for a variety of discovery requests that are
excessive, unnecessary, unduly burdensome and overbroad categories of documents and
information, many of which exceed the scope of discoverable information for this opposition
proceeding and clearly are meant to harass and financially tax the Opposer, which is a small
limited liability company. Moreover, the total of all interrogatories and document requests, including
discrete subparts, appears to exceed 75.
Opposer seeks an order precluding the excessive discovery sought, or modifying the
scope of the discovery requests to that which is related to the matters that are the subject of the
opposition proceeding as well as an order denying the motion to compel. In support of thereof,
Opposer states as follows:
BACKGROUND
The relevant facts are set forth in the Notice of Opposition dated November 2, 2019, as
supplemented by the First Amended Notice of Opposition dated August 24, 2020, and the
Declaration of Ramona Prioleau (“Prioleau Decl.”), attached hereto as Attachment A. However,
for the Board’s convenience, a brief recitation of the facts is repeated here.
The Opposer
The Opposer is the owner and operator of an entity that uses the trademark
“MOSAEC”. The MOSAEC platform is a commerce, content, entertainment, advertising,
technology and social media ecosystem that spotlights film, music, art, theater, dance, literature,
fashion, sports and locales. In addition, via the MOSAEC platform, the Opposer distributes
consumer goods, buys and sells advertising, and seeks funding from individuals, corporations
2
and governments. It has also been used to advance personal, educational, and career goals. The
use of the MOSAEC mark commenced as early as September 1998. See Prioleau Decl. ¶¶ 5-9.
The Applicant’s Application
Pursuant to Section 1(a) of the Lanham Act, on Aug. 13, 2018, Applicant filed the
Application with the United States Patent and Trademark Office to register Applicant’s Mark on
the Principal Register, which was published for opposition on September 3, 2019 for the
following services (“Applicant’s Services”):
“business advisory services in the field of development, education and training programs
and methodologies” in Class 35;
“educational services, namely, developing customized curriculum and course material in
connection therewith, for others; consulting services in the development and
implementation of customized curriculum and course material in connection therewith,
for others” in Class 41; and
“development of software for others, namely, non-downloadable software used to
manage their proprietary digital content; downloadable software provided as a service,
namely, non-downloadable software used to manage proprietary digital content” in Class
42.
Notice of Opposition
Opposer’s original notice of opposition pleaded (i) priority and (ii) likelihood of
confusion under § 2(d) of the Lanham Act as the statutory basis for opposition, among other
matters. 1 TTABVUE.
On December 9, 2019, Applicant filed an answer to the Notice of Opposition, denying
Opposer’s claims.
On August 24, 2020, Opposer filed a motion for leave to file a First Amended Notice of
Opposition (as attached thereto) in this proceeding, alleging (i) priority; (ii) likelihood of
confusion and (iii) Applicant lacked a bona fide use in commerce of Applicant’s Mark on each of
the recited services. (See TTABVUE 8). The motion to amend is still pending.
3
Discovery
Discovery opened on January 13, 2020, and closed on July 11, 2018. See TTABVUE 2.
Opposer served written first requests on Applicant on June 11, 2020. Similarly, Applicant, in
served written first requests on Opposer on June 11, 2020.
Initial Disclosures: On February 11, 2020, Opposer served its initial disclosures. On
February 11, 2020, Applicant served its initial disclosures.
Opposer’s Interrogatories, Requests for Documents and Requests for Admissions: On
June 11, 2020, Opposer served its First Set of Interrogatories, First Set of Documents Requests
and First Set of Requests for Admission on Applicant.
Applicant’s Interrogatories and Requests for Documents: On June 11, 2020, Applicant
served its First Set of Interrogatories, First Set of Documents Requests and First Set of Requests
for Admission on Opposer.
On July 11, 2020, Opposer objected to Applicant’s excessive discovery requests in
accordance with the TBMP.
Discovery closed on July 11, 2020.
On July 14, 2020, Applicant served upon Opposer amended discovery requests – three
days after the close of discovery.
On August 13, 2020, Opposer objected to Applicant’s late revised discovery requests in
accordance with the TBMP.
On August 22, 2020, Applicant filed a motion to compel (See TTABVUE 7).
On August 24, 2020, Opposer filed a Motion for Leave to File an Amended Notice of
Opposition (See TTABVUE 8).
4
Prior to the filing of the instant motion to compel, Applicant did not attempt to meet and
confer with the Opposer.
Applicant could have easily avoided the time and expense of these motions by meeting
and conferring with Opposer. Instead of taking that simple step to attempt to resolve these issues,
the Applicant filed this motion, upending established processes that the Board mandates to avoid
needless motion practice.
ARGUMENT
A motion to compel may be filed when a party fails to produce requested documents or
responses. See, e.g., 37 C.F.R. 2.120(e)(1). If the non-moving party cannot show that neglect of
its discovery obligations was excusable, the Board generally should order that discovery
responses be provided without objection. See No Fear, Inc. v. Rule, 54 USPQ2d 1551, 1554
(TTAB 2000).
Here, Opposer has not neglected its discovery obligations. In fact, not only has Opposer
objected to Applicant’s discovery requests in accordance with the TBMP, Opposer provided
Applicant’s attorney the sections of the TBMP that governs objections related to excessive
requests. See the Opposer’s analysis of Applicant’s excessive requests Prioleau Decl. Exs Q &R.
Despite Opposer having met its obligations under the TBMP, Applicant filed a motion to
compel seemingly in bad faith, for the purpose of delay, as well as to overburden, harass and
financially tax the Opposer with vexatious litigation practice.
In addition, Applicant’s claims that Opposer failed to meet its discovery obligations
should be considered in light of Applicant’s misleading statements that Opposer failed to confer
in good faith.
Applicant’s First Set of Requests for Production of Documents and Things to Opposer
Applicant’s First Set of Interrogatories to Opposer: TBMP § 405.03(e) and TBMP § 406.05(e) instructs
5
a party receiving excessive interrogatories and requests for the production of documents, respectively, to
withhold responding to any propounded request.
Specifically, TBMP § 405.03(b) and TBMP § 406.05(b), respectively, provide that the total
number of interrogatories and requests for production of documents that a party may serve on another
party over the course of an entire proceeding, not just per set of discovery requests, cannot exceed 75
(emphasis added). Thus, pursuant to the rules, if two or more separate sets of discovery requests are
served over the course of the proceeding, the discovery requests in the separate sets would be added
together for purposes of determining whether the numerical limit specified in the rules have been
exceeded. See Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467
(TTAB 1990) (interrogatories); See also, Kellogg Co. v. Nugget Distributors’ Cooperative of America
Inc., 16 U.S.P.Q.2d 1468 (TTAB), wherein the Board held:
In determining whether a set of interrogatories exceeds this limit, each subdivision of separate
questions, whether set forth as a numbered or lettered subpart, or as a compound question or a
conjunctive question, is counted as a separate interrogatory. Kellogg, 16 U.S.P.Q.2d at 1469.
Here, Opposer counted the First Set of Interrogatories and Second Set of Interrogatories together
as well as First Set of Document Requests and Second Set of Document Requests together. As a result,
the Opposer found that Applicant propounded over 75 interrogatories and document requests. See
Prioleau Decl. Exs Q & R.
Applicant’s Bad Faith in Filing a Motion to Compel.
Applicant’s claim that Opposer has not responded to Applicant’s discovery requests are
insincere. Opposer objected to discovery requests in accordance with the TBMP, providing the
sections of the TBMP that governs objections related to excessive requests.
Even with its motions, though, Applicant has failed to follow the rules. Before a party
may move for sanctions or to compel, it must confer with the adverse party in good faith in an
effort to resolve (or at least narrow) the dispute. See 37 CFR § 2.120(f)(1); Fed. R. Civ. P. 37(a)
(1), (d)(1)(B). Applicant offers no certification of good faith consultation here because it did not
6
even try to provide a reasoned analysis of the discovery requests to the Opposer. Rather,
Applicant’s approach was (and continues to be) that any concerns Opposer raised are invalid and
that absent full compliance, Applicant would seek Board relief.
Applicant’s allegations signify nothing and are mere cover for its decision to fail to meet
and confer. Based on the TBMP, Opposer’s objection to Applicant’s discovery requests were
per se proper, meaning Opposer objected in accordance with the TBMP. Thus, there is no basis
for granting Applicant’s request for sanctions or entering an order compelling Opposer to
respond to Applicant’s interrogatories or production requests cause of Applicant’s negligent
disregard of the TBMP and the case law related thereto.
Applicant’s raising of issues related to the document requests in the instant motion to
compel is in bad faith as the Applicant has not complied with the requirements of TBMP
§523.02, requiring that
the motion to compel be supported by a written statement from the moving party that
such party or its attorney has made a good faith effort, by conference or correspondence,
to resolve with the other party or its attorney the issues presented in the motion, and has
been unable to reach agreement.
As such, the motion to compel with respect to Opposer’s objections to said discovery is
procedurally deficient and should be given no consideration.
Applicant Failed to Meet and Confer in Good Faith as Required by the Rules
Applicant’s motion separately fails because Applicant failed to confer with Opposer
in good faith in advance about the issues on which it moves. Cf. Fed. R. Civ. P. 37(a)(1), (d)(1)
(B) (a motion to compel discovery or for sanctions based on a failure to respond to discovery
requests “must include a certification that the movant has in good faith conferred or attempted to
confer” with the party that allegedly failed to act); cf. also 37 CFR § 2.120(f)(1). Here, the
Opposer has not failed to act and the Applicant failed to confer in good faith. In accordance with
the TBMP, Opposer objected to Applicant’s discovery requests.
7
MOTION FOR PROTECTIVE ORDER
Pursuant to 37 CPR § 2.120(f), “the Trademark Trial and Appeal Board may make any
order which justice requires to protect a party from annoyance, embarrassment, oppression, or
undue burden or expense, including one or more of the types of orders provided by clauses (1)
through (8), inclusive, of Rule 26( c) of the Federal Rules of Civil Procedure.”
The TBMP explains that a party may seek a protective order when the adverse party
serves a clearly unreasonable number of requests for production. TBMP 410 provides that in
cases where a request for discovery constitutes clear harassment – for example, when a clearly
unreasonable number of requests for production or interrogatories are served – the party on
which the request was served may properly respond to it by filing a motion for a protective order
that the discovery not be had, or be had only on specified terms and conditions.
Applicant seeming use of the motion to compel as a means to overburden, harass and
financially tax the Opposer with vexatious litigation practice, necessitates Opposer’s seeking,
pursuant to 37 CFR § 2. 120(f), a protective order relieving Opposer of any obligation to provide
any additional responses to Applicant’s discovery requests given that Opposer has provided
substantive responses and objections to date in accordance with the TBMP and cases related
thereto.
Moreover, depending on the subject matter, the exhibits to the Prioleau Declaration
provide substantial supporting documentary evidence that clearly demonstrate Opposer’s
superior rights in the opposition proceeding.
CONCLUSION
Opposer urges the Board to reject the motion to compel. Separately, for the reasons stated
herein, the Board should issue an order granting Opposer the motion for protective order.
8
Respectfully submitted,
Dated: September 11, 2020 By: /Ramona Prioleau/
Ramona Prioleau
RLP Ventures, LLC
Times Square Station
P.O. Box 2605
New York, NY 10108-2605
rlpvllc@gmail.com
Opposer
9
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the attached Opposer’s (i)
Response To Applicant’s Motion To Compel and (ii) Opposer’s Motion For Protective Order was
served on the Attorney for the Applicant on the date listed below via email:
Jonathan R. Wachs
Offit Kurman, P.A.
8171 Maple Lawn Boulevard Suite 200
Maple Lawn, MD 20759
jwachs@offitkurman.com
trademarks@offitkurman.com
lwinston@offitkurman.com
alison.pratt@offitkurman.com
Dated: September 11, 2020 By: /Ramona Prioleau/
Ramona Prioleau
ATTACHMENT A
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
RLP Ventures, LLC
Opposer,
v.
Mosaic Learning, Inc.
Applicant.
Opposition No. 91252016
Mark: MOSAIC LEARNING
Serial No. 88/075,609
Filed: Aug. 13, 2018
Published: Sep. 3, 2019
Declaration of Ramona Prioleau
I, Ramona Prioleau, declare under penalty of perjury as follows:
1 I am over the age of eighteen and competent to make this Declaration.
2 The facts stated in this Declaration are within my personal knowledge are true.
3 I am the founder and representative of Opposer (RLP Ventures, LLC), who, in the
above referenced trademark opposition proceeding, is opposing registration of the mark
MOSAIC LEARNING in International Classes 35, 41 and 42 (the “Applicant’s Mark”). In my
position, I am authorized to assert to and confirm the activities and beliefs of Opposer.
4 I verify that Opposer is the owner and operator of an entity using the trademark
“MOSAEC” (“Opposer’s Mark”).
5 Opposer offers the
5.a Class 41 services identified in USPTO electronic records (TSDR) for U.S.
Registration No. 5,409,856 (See Exhibit A (RLP 1-5)); and
5.b Class 42 services identi�ied in USPTO electronic records (TSDR) for U.S.
Registration No. 5,284,032 (SeeExhibitB(RLP6-9)).
6 In addition, since 1999, Opposer has used Opposer’s Mark for the following
services – “Advisory services in the field of development, education and training” in Class 35.
7 The MOSAEC mark is used only with the permission and under the control of
Opposer. The Opposer also uses and/or licenses the use of Opposer’s Mark.
8 The MOSAEC entity was and continues to be targeted to users interested in Class
35, 41 and 42 services.
9 The use of the MOSAEC mark commenced as early as September 1998.
10 I, on behalf of Opposer, developed the concept for the MOSAEC platform during
the period 1996 – 1998, including classes with publishing executives. Initially, the concept began
in paper form and transitioned to a digital format with a “beta” platform. Aspects of the business
plan and source code for the platform were developed by me, acting on behalf of Opposer,
during courses at New York University and other schools during the period 1996-1999.
11 Opposer first released the platform in a “beta” form during the fall of 1998. The
beta version of the site was used to recruit talent, seek funding as well as sell ads. The “alpha”
version of the platform was launched in the spring of 1999. Since its launch, the MOSAEC
platform has been used throughout the United States and internationally with users engaging
with its content and purchasing its consumer goods.
12 On behalf of Opposer, I assert that the Opposer is located in New York.
13 On August 13, 2018, Applicant filed a use-based (Section 1(a)) application with
the United States Patent and Trademark Office for the MOSAIC LEARNING mark
(“Applicant’s Mark”) shown in USPTO electronic records (TSDR) for U.S. Application Serial
No. 88/075,609 (“Applicant’s Application”). (See Exhibit C (RLP 10-14)).
2
14 Applicant’s Application identified the following services (“Applicant’s
Services”):
14.a “business advisory services in the field of development, education and training
programs and methodologies” in Class 35;
14.b“educational services, namely, developing customized curriculum and course
material in connection therewith, for others; consulting services in the
development and implementation of customized curriculum and course material
in connection therewith, for others” in Class 41; and
14.c “development of software for others, namely, non-downloadable software used to
manage their proprietary digital content; downloadable software provided as a
service, namely, non-downloadable software used to manage proprietary digital
content” in Class 42.
15 On November 2, 2019, Opposer filed a Notice of Opposition with the Trademark
Trial and Appeal Board against registration of the Applicant’s Application. The opposition was
designated No. 91252016.
16 On February 11, 2020, Applicant served upon Opposer its Initial Disclosures, a
true and correct copy of which is attached hereto as Exhibit D (RLP 15-18) and relied upon in
the Response.
17 On February 11, 2020, Opposer served upon Applicant its Initial Disclosures, a
true and correct copy of which is attached hereto as Exhibit E (RLP 19-24) and relied upon in
the Response.
3
18 On June 11, 2020, Applicant served upon Opposer its First Set of Interrogatories,
a true and correct copy of which is attached hereto as Exhibit F (RLP 25-43) and relied upon in
the Response.
19 On June 11, 2020, Applicant served upon Opposer its First Set of Document
Requests, a true and correct copy of which is attached hereto as Exhibit G (RLP 44-57) and
relied upon in the Response.
20 On June 11, 2020, Applicant served upon Opposer its First Set of Requests for
Admission, a true and correct copy of which is attached hereto as Exhibit H (RLP 58-62) and
relied upon in the Response.
21 On July 11, 2020, Opposer served Applicant RLP Ventures, LLC’s Objection to
Applicant’s First Set of Interrogatories and dated July 11, 2020, a true and correct copy of which
is attached hereto as Exhibit I (RLP 63-66) and relied upon in the Response.
22 On July 11, 2020, Opposer served Applicant RLP Ventures, LLC’s Objection to
Applicant’s First Set of Requests for Production of Documents and dated July 11, 2020, a true
and correct copy of which is attached hereto as Exhibit J (RLP 67-70) and relied upon in the
Response.
23 On July 11, 2020, Opposer served Applicant RLP Ventures, LLC’s Response to
Applicant’s First Set of Requests for Admission and dated July 11, 2020, a true and correct copy
of which is attached hereto as Exhibit K (RLP 71-78) and relied upon in the Response.
24 I, on behalf of the Opposer authenticate that attached as Exhibit L (RLP 79-81)
is a true and correct copy of a September 10, 2020 print out of an email dated July 14, 2020 from
Opposer to Applicant.
4
25 On July 14, 2020, Applicant served upon Opposer its Amended First Set of
Interrogatories, a true and correct copy of which is attached hereto as Exhibit M (RLP 82-97)
and relied upon in the Response.
26 On July 14, 2020, Applicant served upon Opposer its Amended First Set of
Document Requests, a true and correct copy of which is attached hereto as Exhibit N (RLP 98-
108) and relied upon in the Response.
27 On August 13, 2020, Opposer served Applicant RLP Ventures, LLC’s Objection
to Applicant’s First Set of Requests for Production of Documents and dated August 13, 2020, a
true and correct copy of which is attached hereto as Exhibit O (RLP 109-112) and relied upon
in the Response.
28 On August 13, 2020, Opposer served Applicant RLP Ventures, LLC’s Objection
to Applicant’s First Set of Interrogatories and dated August 13, 2020, a true and correct copy of
which is attached hereto as Exhibit P (RLP 113-116) and relied upon in the Response.
29 Attached hereto as Exhibit Q (RLP 117-135) is an annotated copy of Applicant’s
First Set of Interrogatories, which is relied upon in the Response.
30 Attached hereto as Exhibit R (RLP 136-149) is an annotated copy of Applicant’s
First Set of Document Requests, which is relied upon in the Response.
31 Discovery closed on July 11, 2020.
The undersigned, being hereby warned that willful false statements and the like so made
are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful
false statements may jeopardize the validity of the current cancellation proceeding, declares that
all statements made of his or her own knowledge are true and that statements made on
information are believed to be true.
5
Ramona Prioleau
By: / Ramona Prioleau /
Title: Founder
Date: September 11, 2020
6
Exhibit A
RLP 1
STATUS DOCUMENTS MAINTENANCE Back to Search Print
For assistance with TSDR, email teas@uspto.gov and include your serial number, the document you are looking
for, and a screenshot of any error messages you have received.
Generated on: This page was generated by TSDR on 2020-09-11 22:23:44 EDT
Mark: MOSAEC
US Serial Number: 86587316 Application Filing Date: Apr. 03, 2015
US Registration Number: 5409856 Registration Date: Feb. 27, 2018
Filed as TEAS Plus: Yes Currently TEAS Plus: Yes
Register: Principal
Mark Type: Service Mark
TM5 Common Status
Descriptor:
LIVE/REGISTRATION/Issued and Active
The trademark application has been registered with the Of
Status: Registered. The registration date is used to determine when post-registration maintenance documents ar
Status Date: Feb. 27, 2018
Publication Date: Dec. 12, 2017
Mark Information
Goods and Services
Mark Literal Elements: MOSAEC
Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Mark Drawing Type: 4 - STANDARD CHARACTER MARK
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
Brackets [..] indicate deleted goods/services;
Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
Asterisks *..* identify additional (new) wording in the goods/services.
For: Entertainment services, namely, providing information by means of a global computer network in the field
and popular culture; Entertainment services, namely, providing on-line reviews of entertainment, film, fine
culture, music, sports, fashion, theater, and dance; Providing a website featuring entertainment informatio
entertainment, film, fine arts, museums, literature, culture, music, sports, fashion, theater, dance, and new
and commentary in the field of entertainment; Providing information, news and commentary i
activities; Provision of information relating to children's entertainment
International Class(es): 041 - Primary Class U.S Class(es): 100, 101, 107
Status Search SN 5409856 https://tsdr.uspto.gov/#caseNumber=5409856&caseSearchType=US_AP...
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RLP 2
Basis Information (Case Level)
Current Owner(s) Information
Attorney/Correspondence Information
Prosecution History
Class Status: ACTIVE
Basis: 1(a)
First Use: Sep. 03, 1998 Use in Commerce: Sep. 03, 1998
Filed Use: Yes Currently Use: Yes
Filed ITU: No Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Owner Name: RLP Ventures, LLC
Owner Address: Times Square Station
PO Box 2605
New York, NEW YORK UNITED STATES 10037
Legal Entity Type: LIMITED LIABILITY COMPANY State or Country Where
Organized:
NEW YORK
Attorney of Record
Attorney Name: Willard A. Stanback Docket Number: 321-03
Attorney Primary Email
Address:
willardalonzo@stanback-pc.com Attorney Email Authorized: Yes
Correspondent
Correspondent
Name/Address:
RLP VENTURES, LLC
Willard Alonzo Stanback, PC
36 West Lafayette Street, Suite 103
Trenton, NEW JERSEY UNITED STATES 08608
Phone: 8556141111 Fax: 609-751-5121
Correspondent e-mail: willardalonzo@stanback-pc.com
willardalonzo@gmail.com
Correspondent e-mail
Authorized:
Yes
Domestic Representative - Not Found
Date Description Proceeding Number
Aug. 30, 2018 NOTICE OF SUIT
Mar. 03, 2018 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Status Search SN 5409856 https://tsdr.uspto.gov/#caseNumber=5409856&caseSearchType=US_AP...
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RLP 3
Feb. 27, 2018 REGISTERED-PRINCIPAL REGISTER
Dec. 12, 2017 OFFICIAL GAZETTE PUBLICATION CONFIRMATION
E-MAILED
Dec. 12, 2017 PUBLISHED FOR OPPOSITION
Nov. 22, 2017 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Nov. 08, 2017 APPROVED FOR PUB - PRINCIPAL REGISTER
Nov. 04, 2017 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Nov. 03, 2017 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Nov. 03, 2017 TEAS REQUEST FOR RECONSIDERATION RECEIVED
Oct. 02, 2017 NOTIFICATION OF FINAL REFUSAL EMAILED
Oct. 02, 2017 FINAL REFUSAL E-MAILED
Oct. 02, 2017 FINAL REFUSAL WRITTEN 91234
Sep. 12, 2017 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Sep. 12, 2017 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Sep. 12, 2017 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Mar. 14, 2017 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Mar. 14, 2017 NON-FINAL ACTION E-MAILED 6325
Mar. 14, 2017 NON-FINAL ACTION WRITTEN 91234
Mar. 09, 2017 LIE CHECKED SUSP - TO ATTY FOR ACTION 76568
Aug. 27, 2016 REPORT COMPLETED SUSPENSION CHECK CASE STILL
SUSPENDED
76568
Aug. 27, 2016 ASSIGNED TO LIE 76568
Feb. 19, 2016 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Feb. 12, 2016 NOTIFICATION OF LETTER OF SUSPENSION E-MAILED 6332
Feb. 12, 2016 LETTER OF SUSPENSION E-MAILED 6332
Feb. 12, 2016 SUSPENSION LETTER WRITTEN 91234
Jan. 21, 2016 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Jan. 20, 2016 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Jan. 20, 2016 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Dec. 28, 2015 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
Dec. 28, 2015 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP
RECEIVED
Jul. 20, 2015 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Jul. 20, 2015 NON-FINAL ACTION E-MAILED 6325
Jul. 20, 2015 NON-FINAL ACTION WRITTEN 91234
Jul. 10, 2015 ASSIGNED TO EXAMINER 91234
Apr. 15, 2015 NOTICE OF PSEUDO MARK E-MAILED
Apr. 14, 2015 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN
TRAM
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RLP 4
TM Staff and Location Information
Assignment Abstract Of Title Information - Click to Load
Apr. 07, 2015 TEAS AMENDMENT ENTERED BEFORE ATTORNEY
ASSIGNED
88889
Apr. 07, 2015 TEAS VOLUNTARY AMENDMENT RECEIVED
Apr. 07, 2015 NEW APPLICATION ENTERED IN TRAM
TM Staff Information - None
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Feb. 27, 2018
Proceedings - Click to Load
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RLP 5
Exhibit B
RLP 6
STATUS DOCUMENTS MAINTENANCE Back to Search Print
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Generated on: This page was generated by TSDR on 2020-09-11 22:22:57 EDT
Mark: MOSAEC
US Serial Number: 87159118 Application Filing Date: Sep. 01, 2016
US Registration Number: 5284032 Registration Date: Sep. 12, 2017
Filed as TEAS Plus: Yes Currently TEAS Plus: Yes
Register: Principal
Mark Type: Service Mark
TM5 Common Status
Descriptor:
LIVE/REGISTRATION/Issued and Active
The trademark application has been registered with the Of
Status: Registered. The registration date is used to determine when post-registration maintenance documents ar
Status Date: Sep. 12, 2017
Publication Date: Jun. 27, 2017
Mark Information
Goods and Services
Mark Literal Elements: MOSAEC
Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Mark Drawing Type: 4 - STANDARD CHARACTER MARK
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
Brackets [..] indicate deleted goods/services;
Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
Asterisks *..* identify additional (new) wording in the goods/services.
For: Providing temporary use of a non-downloadable web application for posting, searching, accessing, sharin
ratings, referrals, recommendations, and other information as well as advertising, uploading photos, addin
interacting with other users, related to entertainment, film, fine arts, museums, literature, culture, music, s
restaurants, recreation and leisure activities
International Class(es): 042 - Primary Class U.S Class(es): 100, 10
Class Status: ACTIVE
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RLP 7
Basis Information (Case Level)
Current Owner(s) Information
Attorney/Correspondence Information
Prosecution History
Basis: 1(a)
First Use: Sep. 1998 Use in Commerce: Sep. 1998
Filed Use: Yes Currently Use: Yes
Filed ITU: No Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Owner Name: RLP Ventures, LLC
Owner Address: Times Square Station
PO Box 2605
New York, NEW YORK UNITED STATES 10108
Legal Entity Type: LIMITED LIABILITY COMPANY State or Country Where
Organized:
NEW YORK
Attorney of Record - None
Correspondent
Correspondent
Name/Address:
RLP VENTURES, LLC
RLP VENTURES, LLC
PO BOX 2605
TIMES SQUARE STATION
NEW YORK, NEW YORK UNITED STATES 10108
Domestic Representative - Not Found
Date Description Proceeding Number
Apr. 21, 2020 NOTICE OF SUIT
Nov. 13, 2019 NOTICE OF SUIT
Aug. 30, 2018 NOTICE OF SUIT
Sep. 12, 2017 REGISTERED-PRINCIPAL REGISTER
Jun. 27, 2017 OFFICIAL GAZETTE PUBLICATION
CONFIRMATION E-MAILED
Jun. 27, 2017 PUBLISHED FOR OPPOSITION
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TM Staff and Location Information
Assignment Abstract Of Title Information - Click to Load
Jun. 07, 2017 NOTIFICATION OF NOTICE OF PUBLICATION
E-MAILED
May 19, 2017 APPROVED FOR PUB - PRINCIPAL
REGISTER
May 18, 2017 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
May 18, 2017 CORRESPONDENCE RECEIVED IN LAW
OFFICE
88889
May 18, 2017 TEAS RESPONSE TO OFFICE ACTION
RECEIVED
Nov. 30, 2016 NOTIFICATION OF NON-FINAL ACTION
E-MAILED
6325
Nov. 30, 2016 NON-FINAL ACTION E-MAILED 6325
Nov. 30, 2016 NON-FINAL ACTION WRITTEN 68603
Nov. 29, 2016 ASSIGNED TO EXAMINER 68603
Sep. 08, 2016 NEW APPLICATION OFFICE SUPPLIED DATA
ENTERED IN TRAM
Sep. 05, 2016 NEW APPLICATION ENTERED IN TRAM
TM Staff Information - None
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Sep. 12, 2017
Proceedings - Click to Load
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RLP 9
Exhibit C
RLP 10
STATUS DOCUMENTS Back to Search Print
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Mark: MOSAIC LEARNING
US Serial Number: 88075609 Application Filing Date: Aug. 13, 2018
Filed as TEAS RF: Yes Currently TEAS RF: Yes
Register: Principal
Mark Type: Service Mark
TM5 Common Status
Descriptor:
LIVE/APPLICATION/Opposition Pending
The pending trademark application has been examined by
published for opposition, at which time one or more oppos
they have not yet been decided.
Status: An opposition after publication is pending at the Trademark Trial and Appeal Board. For further informatio
Trademark Trial and Appeal Board web page.
Status Date: Nov. 04, 2019
Publication Date: Sep. 03, 2019
Mark Information
Goods and Services
Mark Literal Elements: MOSAIC LEARNING
Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Mark Drawing Type: 4 - STANDARD CHARACTER MARK
Disclaimer: "LEARNING"
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
Brackets [..] indicate deleted goods/services;
Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
Asterisks *..* identify additional (new) wording in the goods/services.
For: business advisory services in the field of development, education and training programs and methodologi
International Class(es): 035 - Primary Class U.S Class(es): 100, 101, 102
Class Status: ACTIVE
Basis: 1(a)
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Basis Information (Case Level)
Current Owner(s) Information
Attorney/Correspondence Information
First Use: May 21, 2007 Use in Commerce: May 21, 2007
For: educational services, namely, developing customized curriculum and course material in connection therew
services in the development and implementation of customized curriculum and course material in connec
International Class(es): 041 - Primary Class U.S Class(es): 100, 101, 107
Class Status: ACTIVE
Basis: 1(a)
First Use: May 21, 2007 Use in Commerce: May 21, 2007
For: development of software for others, namely, non-downloadable software used to manage their proprietary
software provided as a service, namely, non-downloadable software used to manage proprietary digital co
International Class(es): 042 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(a)
First Use: May 21, 2007 Use in Commerce: May 21, 2007
Filed Use: Yes Currently Use: Yes
Filed ITU: No Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Owner Name: MOSAIC LEARNING, INC.
Owner Address: Suite R-250
10005 Old Columbia Road
Columbia, MARYLAND UNITED STATES 21046
Legal Entity Type: CORPORATION State or Country Where
Organized:
MARYLAND
Attorney of Record
Docket Number: Mosaic
Attorney Primary Email
Address:
jwachs@offitkurman.com Attorney Email Authorized: Yes
Correspondent
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Prosecution History
TM Staff and Location Information
Correspondent
Name/Address:
JONATHAN R WACHS
OFFIT KURMAN PA
8171 MAPLE LAWN BOULEVARD
SUITE 200
MAPLE LAWN UKRAINE 20759
Phone: 212-545-1900 Fax: 301-575-0335
Domestic Representative - Not Found
Date Description Proceeding Number
Nov. 04, 2019 OPPOSITION INSTITUTED NO. 999999 252016
Sep. 26, 2019 EXTENSION OF TIME TO OPPOSE RECEIVED
Sep. 03, 2019 OFFICIAL GAZETTE PUBLICATION
CONFIRMATION E-MAILED
Sep. 03, 2019 PUBLISHED FOR OPPOSITION
Aug. 14, 2019 NOTIFICATION OF NOTICE OF PUBLICATION
E-MAILED
Jul. 29, 2019 ASSIGNED TO LIE 70138
Jul. 19, 2019 APPROVED FOR PUB - PRINCIPAL
REGISTER
Jan. 04, 2019 NOTIFICATION OF LETTER OF SUSPENSION
E-MAILED
6332
Jan. 04, 2019 LETTER OF SUSPENSION E-MAILED 6332
Jan. 04, 2019 SUSPENSION LETTER WRITTEN 78329
Dec. 27, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Dec. 27, 2018 CORRESPONDENCE RECEIVED IN LAW
OFFICE
88889
Dec. 27, 2018 TEAS RESPONSE TO OFFICE ACTION
RECEIVED
Dec. 03, 2018 NOTIFICATION OF NON-FINAL ACTION
E-MAILED
6325
Dec. 03, 2018 NON-FINAL ACTION E-MAILED 6325
Dec. 03, 2018 NON-FINAL ACTION WRITTEN 78329
Nov. 29, 2018 ASSIGNED TO EXAMINER 78329
Aug. 21, 2018 NEW APPLICATION OFFICE SUPPLIED DATA
ENTERED IN TRAM
Aug. 16, 2018 NEW APPLICATION ENTERED IN TRAM
TM Staff Information
TM Attorney: PRATER, JILL I Law Office Assigned: LAW OFFICE 119
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Assignment Abstract Of Title Information - Click to Load
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Jul. 30, 2019
Proceedings - Click to Load
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Exhibit D
RLP 15
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
_______________________________________
)
RLP VENTURES, LLC )
) Opposition No. 91252016
Opposer; )
) Mark: MOSAIC LEARNING
) Serial No. 88/075,609
)
v. )
)
)
)
)
MOSAIC LEARNING, INC. )
)
Applicant. )
)
_______________________________________)
OPPOSER’S RULE 26(a)(1) INITIAL DISCLOSURES
Pursuant to Federal Rule of Civil Procedure 26(a)(l), Applicant Mosaic Learning,
Inc. (“Applicant”) hereby makes its initial disclosures:
I. Individual with Discoverable Information: Applicant at this time believes
that the following individual may have discoverable information that Applicant may use
to support its claims (other than information that would be used solely for impeachment):
1. Brendan Connors, Chief Executive Officer, Mosaic Learning, Inc., c/o Offit Kurman,
P.A., 8171 Maple Lawn Boulevard, Suite 200, Maple Lawn, Maryland 20759,
Attn: Jonathan R. Wachs
Brendan Connors is likely to have knowledge of issues related to Applicant’s use of
the trademark MOSAIC LEARNING.
RLP 16
2
Applicant reserves the right to amend this list upon identification of other
individuals through discovery or through development of the issues.
II. Documents: The following documents are in the possession, custody, or
control of Applicant and may be used to support Applicant’s claims:
1. Documents related to Applicant’s federal trademark application for the
trademark MOSAIC LEARNING.
2. Documents related to Applicant’s use of the trademark MOSAIC
LEARNING.
3. Documents related to Applicant’s advertising and marketing, channels of
trade, and exposure of the mark MOSAIC LEARNING.
4. Documents related to consumer recognition of the mark MOSAIC
LEARNING associated with the services for which the mark is used.
Applicant reserves the right to amend this list upon identification of other
documents and things through discovery or through development of the issues.
III. Computation of Damages: Not applicable.
IV. Insurance Coverage: Not applicable.
Respectfully submitted,
OFFIT KURMAN, P.A.
Dated: February 11, 2020 By__/s/ Jonathan R. Wachs___________________
Jonathan R. Wachs
Laura J. Winston
Attorneys for Applicant
8171 Maple Lawn Boulevard, Suite 200
Maple Lawn, Maryland 20759
Email: jwachs@offitkurman.com;
lwinston@offitkurman.com;
trademarks@offitkurman.com
RLP 17
3
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true copy of the foregoing INITIAL
DISCLOSURES was served by e-mail to Opposer at its address of record.
DATED: February 11, 2020
By: /s/ Jonathan R. Wachs
4844-4267-5380, v. 1
RLP 18
Exhibit E
RLP 19
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
RLP Ventures, LLC
Opposer,
v.
Mosaic Learning, Inc.
Applicant.
Opposition No. 91252016
Mark: MOSAIC LEARNING
Serial No. 88/075,609
Filed: Aug. 13, 2018
Published: Sep. 3, 2019
OPPOSER’S RULE 26 INITIAL DISCLOSURES
Opposer, RLP Ventures, LLC (“Opposer”) hereby makes the following disclosures
required under Fed.R.Civ.P. 26(a)(l) based upon information reasonably available to it at this
time. These disclosures are preliminary and discovery is ongoing. The Opposer therefore
reserves the right to correct, amend, or modify these disclosures based on new information.
A. The name and, if known, the address and telephone number of each
individual likely to have discoverable information that the disclosing party may use to
support its claims or defenses, unless solely for impeachment, identifying the subjects of
the information.
Subject to the limitations set forth in Fed.R.Civ.P. 26(a)(l)(A), Opposer identifies the
following individuals, each of whom is likely to have discoverable information that Opposer
may use to support its claims or defenses:
Name/Title Address & Phone Number Subject Matter
Ramona Prioleau
Owner
RLP Ventures, LLC
Time Square Station
P.O. Box 2605
New York, NY 10108-2605
(917) 960-9693
Adoption of MOSAEC mark,
continuing use of mark in
commerce, and type of goods
and services associated with
mark.
RLP 20
2
Opposer reserves the right to amend the list of persons upon identification of other
individuals through discovery or otherwise through the process of the proceedings.
B. A copy of, or a description by category and location of, all documents, data
compilations, and tangible things that are in the possession, custody, or control of the party
and that the disclosing party may use to support its claims or defenses, unless solely for
impeachment.
Subject to the limitations set forth in Fed.R.Civ.P. 26(a)(1)(B), Opposer identifies the
following categories of documents which Opposer may use to support its claims or defenses. By
making this disclosure, Opposer does not represent that it is identifying every potentially relevant
document upon which it may rely for purposes of this proceeding. Opposer’s continuing
investigation and discovery may reveal additional relevant documents and Opposer therefore
reserves the right to supplement this disclosure accordingly. Opposer does not waive its right to
object to the production of any particular document disclosed herein on the basis of any valid
objection as to its discoverability or admissibility. However, Opposer will not produce any
documents that are privileged or otherwise protected from disclosure. Opposer will also only
produce confidential documents in accordance with the Protective Order now in force as entered
by the Board. Opposer identifies the following initial list of documents:
1. Documents concerning Opposer’s ownership and use of its MOSAEC mark.
2. Documents concerning Opposer’s priority in the MOSAEC mark.
3. Documents concerning the nature of the goods and services that are offered under
Opposer’s MOSAEC mark.
4. Documents concerning the facts and circumstances underlying Opposer’s claims set
forth in its Notice of Opposition.
RLP 21
3
Opposer notes that there may be documents in the possession, custody or control of
Applicant and/or third parties that are relevant to the claims and defenses in this proceeding,
including but not limited to:
1. Documents associated with all applications for registration of the Applicant’s mark;
2. Documents reflecting the origin and creation of the Applicant’s mark;
3. Documents related to Applicant’s proposed goods and services using Applicant’s
mark; and
4. Documents related to the marketing of Applicant’s proposed goods and services using
Applicant’s mark.
Opposer reserves the right to amend this list of document categories upon identification
of additional types of documents through discovery or otherwise through the process of the
proceedings. In addition, Opposer may rely on documents in the public domain to support any of
its claims or defenses.
C. A computation of any category of damages claimed by the disclosing party,
making available for inspection and copying under Rule 34 the documents or other
evidentiary material, not privileged or protected from disclosure, on which such
computation is based, including materials bearing the nature and extent of injuries
suffered,
Opposer asserts that no damages are required to be claimed in this administrative action.
D. For inspection and copying as under Rule 34 any insurance agreement under
which any person carrying on an insurance business may be liable to satisfy part or all of a
judgment which may be entered in the action or to indemnify or reimburse for payments
made to satisfy the judgment.
Not applicable in this matter.
RLP 22
4
Respectfully submitted,
Dated: February 11, 2020 By: /s/Ramona Prioleau
Ramona Prioleau
RLP Ventures, LLC
Times Square Station
P.O. Box 2605
New York, NY 10108-2605
rlpvllc@gmail.com
OPPOSER
RLP 23
5
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of Opposer’s Rule 26 Initial
Disclosures was served on the Attorney for the Applicant on the date listed below via email:
Jonathan R. Wachs
Offit Kurman, P.A.
8171 Maple Lawn Boulevard Suite 200
Maple Lawn, MD 20759
jwachs@offitkurman.com
trademarks@offitkurman.com
lwinston@offitkurman.com
alison.pratt@offitkurman.com
Dated: February 11, 2020 By: /s/Ramona Prioleau
Ramona Prioleau
RLP 24
Exhibit F
RLP 25
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
_______________________________________
)
RLP VENTURES, LLC )
) Opposition No. 91252016
Opposer; )
) Mark: MOSAIC LEARNING
) Serial No. 88/075,609
)
v. )
)
)
)
)
MOSAIC LEARNING, INC. )
)
Applicant. )
)
_______________________________________)
APPLICANT’S FIRST SET OF INTERROGATORIES
Pursuant to Federal Rule of Civil Procedure 33, Applicant Mosaic Learning, Inc.
(“Applicant”) hereby requests that Opposer, RLP Ventures, LLC (“Opposer”), answer
each of the following interrogatories separately and fully, in writing and under oath,
within thirty (30) days after service hereof. Pursuant to these interrogatories, Opposer has
a continuing obligation to update its responses with any information discovered after the
original date set for responses, and correct any response to any interrogatory as may be
required.
DEFINITIONS AND INSTRUCTIONS
The following definitions and instructions apply to these document requests.
1. The term “Opposer” shall mean RLP Ventures, LLC, its predecessors in
RLP 26
2
interest, and all of its subsidiaries and affiliated companies, and the officers, directors,
employees, agents, brokers, attorneys, representatives and any other persons or entities
acting or purporting to act on its behalf.
2. The term “Applicant” shall mean Mosaic Learning, Inc., its predecessors
in interest, and all of its subsidiaries and affiliated companies, and the officers, directors,
employees, agents, brokers, attorneys, representatives and any other persons or entities
acting or purporting to act on its behalf.
3. The terms “you” and “your” shall refer to Opposer as defined above.
4. The term “person(s)” means any natural person, any form of business
entity (whether partnership, association, cooperative, corporation, company or
otherwise), and any governmental entity or department, agency, bureau, or political
thereof.
5. The term “MOSAEC” refers to the designation that is the subject of
Opposer’s United States Trademark Registration Nos. 5409856 and 5284032.
6. The term “Opposer’s Services” refers to the services identified by or used
in connection with MOSAEC, whether or not included in Registration Nos. 5409856
and/or 5284032.
7. The term “Opposed Application” refers to Applicant’s United States
Trademark Application Serial No. 88075609.
8. The term “MOSAIC LEARNING” refers to the mark that is the subject of
the Opposed Application.
9. The term “Applicant’s identified services” refers to the services identified
in the Opposed Application.
RLP 27
3
10. The term “document(s)” shall be given the fullest interpretation allowable
under Rule 34 of the Federal Rules of Civil Procedure, including but not limited to paper
and electronic documents and files, and shall include writings, recordings, and
photographs, as those terms are defined in Rule 1001 of the Federal Rules of Evidence.
Without limiting the foregoing, “document(s)” means all written, typed, or printed matter
and all electronic, magnetic or other records or documentation of any kind or description
(including, without limitation, letters, correspondence, telegrams, memoranda, notes,
records, minutes, contracts, agreements, records, or notations of telephone or personal
conversations, conferences, interoffice communications, e-mail, microfilm, bulletins,
circulars, pamphlets, photographs, facsimiles, invoices, tape recordings, computer
printouts and worksheets), including drafts and copies not identical to the originals, all
photographs and graphic matter, however produced or reproduced, and all compilations
of data from which information can be obtained, and any and all writings or recordings or
any type or nature, in your actual possession, custody or control, including those in the
possession, custody or control of any consultants, accountants, attorneys, or other agents,
whether or not prepared by you.
11. Without limiting the term “control,” a document is deemed to be within
your control if you have ownership, possession or custody of the document, or the right
to secure the document or a copy thereof from any person or entity having physical
possession thereof.
12. Unless otherwise specified, “describe” or “identify,” when referring to a
person, means you must state the following: (a) the full name; (b) the present or last
known residential and/or business address; (c) the present or last known residential and/or
RLP 28
4
business telephone numbers; (d) the present occupation, job title, employer and
employer’s address at the time of event or period referred to in each particular
interrogatory; and (e) in the case of any person other than an individual, identify the
officer, employee, or agent most closely connected with the subject matter of the
interrogatory, and the officer who is responsible for supervising that officer or employee.
13. Unless otherwise specified, “describe” or “identify,” when referring to a
document, means you must state the following: (a) the type of document (e.g. letter,
handwritten note, etc.); (b) the title or heading that appears on the document; (c) its date,
author or authors, and addressee(s), if any; and (d) its present location and custodian. If
any such document is no longer in your possession or subject to your control, “identify”
also means to state: (e) what disposition was made of it; (f) the circumstances
surrounding the authorization of the document’s disposition; and (g) the date of
disposition.
14. Unless otherwise specified, “describe” or “identify,” when referring to an
act, occurrence, transaction, decision, statement, or communication (hereinafter
collectively referred to as “act”), means you must describe in substance the event or
events constituting such act(s), the place and date thereof, the manner in which such
act(s) took place and to identify the persons present, the persons involved, and any
document referring or relating thereto.
15. The term “communication(s)” is used herein in its broadest sense to
encompass any transmission or exchange of information, ideas, facts, data, proposals, or
any other matter, whether between individuals or between or among members of a group,
whether face-to-face, by telephone or by means of written electronic or other medium.
RLP 29
5
16. The phrase “relate to,” the word “concerning,” or any variants thereof,
mean any document, communication or information that constitutes, contains, embodies,
responds to, describes, analyzes, or is otherwise pertinent to the subject matter request.
17. The term “or” shall mean “and/or”; the term “and” shall mean “and/or”;
and the terms “and” as well as “or” shall be construed either disjunctively or
conjunctively as necessary to bring within the scope of the request all documents which
might otherwise be construed to be outside its scope.
18. The term “any” refers to any and all documents, persons or entities
inclusively.
19. All references to the singular shall include the plural, and all references to
the plural shall include the singular.
20. In the following interrogatories, if a privilege is alleged as to information
or materials, if an interrogatory is otherwise not answered in full, or if an objection is
made to any of this discovery, the reasons therefor shall be stated for not answering in
full and answering said interrogatory to the extent to which it is not objected, including
the identification of all information or materials for which privilege is claimed and the
specific nature of any such privilege.
INTERROGATORIES
Interrogatory No. 1
Identify each officer and managing agent of Opposer, giving each officer’s and
managing agent’s name, address, title and duties with respect to Opposer.
Answer:
RLP 30
6
Interrogatory No. 2
Identify Opposer’s predecessors-in-interest, and all of its subsidiaries and
affiliated companies, and the officers, directors, employees, agents and representatives
thereof.
Answer:
Interrogatory No. 3
Describe in detail your first use of MOSAEC in the United States as a trademark,
including the date of first use, the context in which it was used, the geographic location of
its use, and the services in connection with which it was first used.
Answer:
Interrogatory No. 4
Describe in detail your use of MOSAEC in the United States from first use to the
present, including the type of services associated with MOSAEC, the geographic scope of
your use, the target market of customers to whom MOSAEC is directed (i.e., gender, age,
hobbies, activities, etc. of such customers), and the channels of trade through which
Opposer’s Services have been sold and/or provided.
Answer:
Interrogatory No. 5
State all facts relating to the circumstances under which you first became aware of
Applicant’s use of MOSAIC LEARNING, including when you became aware of
RLP 31
7
such use, how it was being used by Applicant, and where you saw Applicant's use of the
mark.
Answer:
Interrogatory No. 6
State all facts relating to how you promoted the MOSAEC in the United States
from your first use to the present, including identifying the specific marketing medium
utilized, the geographic area(s) in which such marketing, advertising or promoting
occurred, the time period(s) during which such marketing, advertising or promoting was
conducted, as well as the specific goods and/or services marketed, advertised or
promoted.
Answer:
Interrogatory No. 7
Explain why you chose to adopt the designation MOSAEC.
Answer:
Interrogatory No. 8
State all facts and identify all documents relating to the specimen you submitted
during the prosecution of the application which matured into the pleaded Reg. No.
5284032.
Answer:
RLP 32
8
Interrogatory No. 9
State all facts and identify all documents relating to the specimen you submitted
during the prosecution of the application which matured into the pleaded Reg. No.
5409856.
Answer:
Interrogatory No. 10
State all facts and identify all documents supporting your allegation in Paragraph
1 of your Notice of Opposition.
Answer:
Interrogatory No. 11
State all facts and identify all documents supporting your allegation in Paragraph
2 of your Notice of Opposition.
Answer:
Interrogatory No. 12
State all facts and identify all documents supporting your allegation in Paragraph
3 of your Notice of Opposition.
Answer:
Interrogatory No. 13
RLP 33
9
State all facts and identify all documents supporting your allegation in Paragraph
4 of your Notice of Opposition.
Answer:
Interrogatory No. 14
State all facts and identify all documents supporting your allegation in Paragraph
5 of your Notice of Opposition.
Answer:
Interrogatory No. 15
State all facts and identify all documents supporting your allegation in Paragraph
7 of your Notice of Opposition.
Answer:
Interrogatory No. 16:
State all facts and identify all documents supporting your allegation in the second
Paragraph 8 of your Notice of Opposition.
Answer:
Interrogatory No. 17
State all facts and identify all documents supporting the following statement in
your allegation in Paragraph 10 of your Notice of Opposition: “[T]o the extent that
RLP 34
10
Applicant’s and Opposer’s Services do not already overlap, Applicant’s Services are
within Opposer’s zone of natural expansion.”
Answer:
Interrogatory No. 18
State all facts and identify all documents supporting the following statement in
your allegation in Paragraph 13 of your Notice of Opposition: “[U]pon information and
belief, Applicant will offer Applicant’s Services under Applicant’s Mark in connection
with services for users that are within the same group targeted by Opposer.”
Answer:
Interrogatory No. 19
State all facts and identify all documents supporting the statement in your
allegation in Paragraph 13 of your Notice of Opposition that you have cultivated a
“diverse community of users” through your “long, extensive, and continuous use of
Opposer’s Mark.”
Answer:
Interrogatory No. 20
Identify all third party uses of MOSAEC or MOSAIC for any goods or services of
which you are aware.
Answer:
RLP 35
11
Interrogatory No. 21
If you are aware of any instances of actual or possible confusion between you and
Applicant or between goods and/or services of you and those of Applicant, including but
not limited to telephone calls, inquiries by mail, or other communications from anyone
referring to or making any mention of Applicant, Applicant's goods and/or services, or
Applicant's trademarks, or exhibiting any mistaken association between Applicant or
Applicant's services and you or your goods and/or services, describe each instance of
actual or possible confusion, including the date thereof, the identity of the persons
involved, and all documents relating in any way to such instance.
Answer:
Interrogatory No. 22
Identify each person or agency which has rendered or is rendering assistance to
you in connection with the advertising, promotion, distribution, and/or sale of any
product or service bearing MOSAEC in the United States and, with respect to each such
person or agency, describe each matter in which assistance has been or is being rendered.
Answer:
Interrogatory No. 23
Describe and identify any and all communications which took place between you
and any other person regarding the subject of the pending opposition proceeding, and
identify any and all documents which relate to your answer.
RLP 36
12
Answer:
Interrogatory No. 24
Identify all contracts and/or agreements between you and other persons relating to
MOSAEC, including but not limited to all purchase contracts, distribution contracts, and
license agreements.
Answer:
Interrogatory No. 25
State the dollar amount of your gross sales revenue derived from use of MOSAEC
in the United States from your first use of MOSAEC to the present, broken down
annually.
Answer:
Interrogatory No. 26
State the dollar amount of your advertising expenditures for the promotion of
MOSAEC in the United States from your first use of MOSAEC to the present, broken
down annually.
Answer:
Interrogatory No. 27
Identify each witness, including experts, whose testimony you intend to rely upon
in this proceeding.
RLP 37
13
Answer:
Interrogatory No. 28
Describe the media (e.g., radio, television, internet, magazines, etc.) which you
used to promote the goods and/or services offered under MOSAEC.
Answer:
Interrogatory No. 29
Identify all agreements concerning MOSAEC, including all licenses and
assignments.
Answer:
Interrogatory No. 30
Identify the persons employed or retained by you, including, but not limited to,
any third-party independent contractors or consultants, with the most knowledge
concerning the identity and nature of goods and/or services you are marketing,
distributing or selling, or intend to market, distribute or sell, under MOSAEC.
Answer:
Interrogatory No. 31
RLP 38
14
Identify the persons, including, but not limited to, any third-party independent
contractors or consultants, with the most knowledge concerning your business or
marketing plans for the sale or intended sale of goods and/or services under MOSAEC.
Answer:
Interrogatory No. 32
Identify any actual and/or intended sales representatives, dealers, distributors,
retailers and/or licensees for goods and/or services under MOSAEC.
Answer:
Interrogatory No. 33
Identify all persons (other than clerical personnel) who participated in any way in
providing responses to these interrogatories.
Answer:
Interrogatory No. 34
Identify all persons whose files were searched for documents responsive to
Opposer’s First Request for Production of Documents served concurrently herewith.
Answer:
Interrogatory No. 35
Have you or any of your officers or managing agents identified in the answer to
Interrogatory No. 1 ever considered or attempted to initiate or ever been party to a
RLP 39
15
lawsuit, United States Patent and Trademark Office opposition or cancellation proceeding
(other than the present proceeding) in the United States involving or relating to the use or
registration of Applicant’s Mark?
Answer:
Interrogatory No. 36
If the answer to Interrogatory 35 is yes, set forth the following concerning each
such litigation or proceeding: identify each actual or potential adversary and the
trademarks involved; state its case docket number and filing date and identify the tribunal
involved; state its outcome; identify all documents referring or relating to such litigation
or proceeding and ensuing negotiations, if any; and state the name(s) and address(es) and
telephone number(s) of all counsel representing any adverse party in such litigation or
proceeding.
Answer:
Interrogatory No. 37
Identify any study, research, focus group, testing or similar validation procedure
employed by you or any person or entity at your request or on your behalf to determine
the presence and/or absence of any confusion between Opposer’s Services and
Applicant’s Identified Services.
Answer:
Interrogatory No. 38
RLP 40
16
State the number of current registered users for the web site MOSAEC.COM.
Answer:
Interrogatory No. 39
State the number of visits to the web site MOSAEC.COM in the past five (5)
years.
Answer:
Interrogatory No. 40
State the number of unique visitors to the web site MOSAEC.COM in the past
five (5) years.
Answer:
Interrogatory No. 41
Identify any and all documents responsive to the foregoing interrogatories which
are lost or unavailable and identify the date(s) the loss or unavailability was first
discovered, the person(s) who first discovered the loss or unavailability and the person(s)
most knowledgeable about the contents of such lost or unavailable documents.
Answer:
Interrogatory No. 42
RLP 41
17
Identify the person within Applicant who has the greatest knowledge as to the
information requested, as to each of the above interrogatories.
Answer:
OFFIT KURMAN, P.A.
Dated: June 11, 2020 By__/s/ Laura J. Winston___________________
Jonathan R. Wachs
Laura J. Winston
Attorneys for Applicant
8171 Maple Lawn Boulevard, Suite 200
Maple Lawn, Maryland 20759
Email: jwachs@offitkurman.com;
lwinston@offitkurman.com;
trademarks@offitkurman.com
RLP 42
18
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true copy of the foregoing APPLICANT’S
FIRST SET OF INTERROGATORIES was served by e-mail to Opposer at its address of
record.
DATED: June 11, 2020
By: /s/ Laura J. Winston
4827-3581-0239, v. 2
RLP 43
Exhibit G
RLP 44
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
_______________________________________
)
RLP VENTURES, LLC )
) Opposition No. 91252016
Opposer; )
) Mark: MOSAIC LEARNING
) Serial No. 88/075,609
)
v. )
)
)
)
)
MOSAIC LEARNING, INC. )
)
Applicant. )
)
_______________________________________)
APPLICANT’S FIRST SET OF REQUESTS FOR PRODUCTION OF
DOCUMENTS
Pursuant to Federal Rule of Civil Procedure 34, Applicant Mosaic Learning, Inc.
(“Applicant”) hereby requests that Opposer, RLP Ventures, LLC (“Opposer”), respond to
the Requests for Production listed below in writing and under oath within thirty (30) days
after service hereof. Pursuant to these requests for production, Opposer has a continuing
obligation to update its responses with any information discovered after the original date
set for responses.
DEFINITIONS AND INSTRUCTIONS
Applicant incorporates by reference all the instructions and definitions listed in
Applicant’s First Set of Interrogatories served concurrently with these Requests for
RLP 45
2
Production of Documents. The following definitions and instructions apply to these
RPDs.
REQUESTS
Request No. 1
Produce all documents requested to be identified in Applicant’s First Set of
Interrogatories.
Request No. 2
Produce all documents relating to your responses to each of Applicant’s
Interrogatories, and all documents relied on or employed in formulating such responses.
Request No. 3
If Opposer denies any of the requested admissions set forth in Applicant’s First
Set of Requests for Admission to Opposer served herewith, produce all documents
Opposer will rely upon in this proceeding to prove that each such requested admission is
untrue.
Request No. 4
Produce all documents relating to Opposer's organizational structure, including
without limitation, documents identifying all officers, directors, and employees with
RLP 46
3
responsibilities relating to MOSAEC.
Request No. 5
Produce all documents relating to any search, investigation or evaluation of any
United States Patent and Trademark Office (“USPTO”) records conducted by or for
Opposer relating to MOSAEC.
Request No. 6
State all facts relating to how you promoted the MOSAEC in the United States
from your first use to the present, including identifying the specific marketing medium
utilized, the geographic area(s) in which such marketing, advertising or promoting
occurred, the time period(s) during which such marketing, advertising or promoting was
conducted, as well as the specific goods and/or services marketed, advertised or
promoted.
Request No. 7
Produce all documents relating to your selection and adoption of MOSAEC.
Request No. 8
Produce all documents relating to any other mark considered, used or intended to
be used by you in connection with the goods and/or services offered under MOSAEC in
RLP 47
4
the United States.
Request No. 9
Produce all documents relating to any applications for registration of MOSAEC
with the USPTO.
Request No. 10
Produce all documents relating to any application or registration of MOSAEC or
of any variation of, permutation of, or phrase containing MOSAEC with any computer
network domain name registering body.
Request No. 11
Produce all documents relating to your first use of MOSAEC in commerce in
connection with any goods and/or services.
Request No. 12
Produce all documents relating to your first use of MOSAEC in commerce
between your first use and the present.
Request No. 13
Produce all documents relating to your specimen submitted during the prosecution
RLP 48
5
of the application which matured into the pleaded Reg. No. 5284032.
Request No. 14
Produce all documents relating to your specimen submitted during the prosecution
of the application which matured into the pleaded Reg. No. 5409856.
Request No. 15
Produce all receipts and invoices relating to the sale of goods and/or services
under MOSAEC by you to any and all other persons between your first use of MOSAEC
and the present.
Request No. 16:
Produce all documents relating to your gross revenue earned from the sales of any
goods and/or services under MOSAEC between your first use of MOSAEC and the
present.
Request No. 17
Produce all documents concerning all advertising, marketing, and/or other efforts
by you to promote goods and/or services offered under MOSAEC between your first use
of MOSAEC and the present.
RLP 49
6
Request No. 18
Produce all documents relating to use of MOSAEC in connection with “advisory
services in the field of development, education and training”.
Request No. 19
Produce all documents relating to Applicant within the last five (5) years.
Request No. 20
Produce documents sufficient to describe your document retention policies,
document destruction policies, document retention practices, and document destruction
practices within the last six (6) years.
Request No. 21
Produce all documents concerning your perceived market for goods and/or
services offered under MOSAEC from your first use of MOSAEC to the present.
Request No. 22
Produce all documents relating to your allegation in Paragraph 1 of your Notice of
Opposition.
Request No. 23
Produce all documents relating to your allegation in Paragraph 2 of your Notice of
Opposition.
RLP 50
7
Request No. 24
Produce all documents relating to your allegation in Paragraph 3 of your Notice of
Opposition.
Request No. 25
Produce all documents relating to your allegation in Paragraph 4 of your Notice of
Opposition.
Request No. 26
Produce all documents relating to your allegation in Paragraph 5 of your Notice of
Opposition.
Request No. 27
Produce all documents relating to your allegation in Paragraph 7 of your Notice of
Opposition.
Request No. 28
Produce all documents relating to your allegation in the second Paragraph 8 of
your Notice of Opposition.
Request No. 29
Produce all documents relating to the following statement in Paragraph 10 of your
RLP 51
8
Notice of Opposition: “[T]o the extent that Applicant’s and Opposer’s Services do not
already overlap, Applicant’s Services are within Opposer’s zone of natural expansion.”
Request No. 30
Produce all documents relating to the following statement in Paragraph 13 of your Notice
of Opposition: “[U]pon information and belief, Applicant will offer Applicant’s Services
under Applicant’s Mark in connection with services for users that are within the same
group targeted by Opposer.”
Request No. 31
Produce all documents relating to the statement in Paragraph 13 of your Notice of
Opposition that you have cultivated a “diverse community of users” through your “long,
extensive, and continuous use of Opposer’s Mark.”
Request No. 32
Produce all DOCUMENTS which refer to or describe the types or categories of
customers, or intended customers, of the goods and/or services offered under MOSAEC.
Request No. 33
Produce documents sufficient to show all geographic territories within the United
States in which you have customers of the good and/or services offered under MOSAEC.
RLP 52
9
Request No. 34
Produce all documents which refer to the channels of trade in which you have sold or
distributed and/or intend to sell or distribute goods and/or services under MOSAEC in the
United States.
Request No. 35
Produce all documents relating to your advertising or promotional expenditures
for any goods and/or services offered or intended to be offered under the MOSAEC in the
United States.
Request No. 36
Produce all documents relating to the number of registered users of the
MOSAEC.COM web site during each of the past five (5) calendar years.
Request No. 37
Produce all documents relating to the number of visits to the MOSAEC.COM
web site during each of the last five (5) calendar years.
Request No. 38
Produce all documents relating to the number of visitors who logged into the
MOSAEC.COM web site during each of the past five (5) calendar years.
Request No. 39
RLP 53
10
Produce all documents relating to the media in which you have advertised or
promoted or will advertise or promote your goods and/or services in the United States in
connection with MOSAEC, including but not limited to documents relating to television,
radio, internet, and printed media publications promoting MOSAEC.
Request No. 40
Produce all documents relating to any instance in which a person demonstrated or
suggested a belief that any of your goods and/or services marketed or distributed under
the MOSAEC were in any way associated with or related to Applicant or Applicant’s
identified services.
Request No. 41
Produce all documents relating to communications received by you, including
telephone calls, letters, emails, invoices and other forms of communication, that relate to
Applicant or Applicant’s identified services.
Request No. 42
Produce all agreements between you and any other persons relating to MOSAEC,
including, but not limited to, licenses, assignments, coexistence agreements, settlement
agreements, and consent agreements.
Request No. 43
RLP 54
11
Produce all documents relating to proposed agreements with third parties
regarding MOSAEC including, but not limited to proposed licenses, assignments,
coexistence agreements, settlement agreements, and consent agreements.
OFFIT KURMAN, P.A.
Dated: June 11, 2020 By__/s/ Laura J. Winston___________________
Jonathan R. Wachs
Laura J. Winston
Attorneys for Applicant
8171 Maple Lawn Boulevard, Suite 200
Maple Lawn, Maryland 20759
Email: jwachs@offitkurman.com;
lwinston@offitkurman.com;
trademarks@offitkurman.com
RLP 55
12
RLP 56
13
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true copy of the foregoing APPLICANT’S
FIRST SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS was served by e-
mail to Opposer at its email address of record.
DATED: June 11, 2020
By: /s/ Laura J. Winston
4834-5696-8383, v. 1
RLP 57
Exhibit H
RLP 58
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
_______________________________________
)
RLP VENTURES, LLC )
) Opposition No. 91252016
Opposer; )
) Mark: MOSAIC LEARNING
) Serial No. 88/075,609
)
v. )
)
)
)
)
MOSAIC LEARNING, INC. )
)
Applicant. )
)
_______________________________________)
APPLICANT’S FIRST SET OF REQUESTS FOR ADMISSION
Pursuant to Federal Rule of Civil Procedure 36, Applicant Mosaic Learning, Inc.
(“Applicant”) hereby requests that Opposer, RLP Ventures, LLC (“Opposer”), answer
each of the following requests separately and fully, in writing and under oath, within
thirty (30) days after service hereof. Pursuant to these requests, Opposer has a continuing
obligation to update its responses with any information discovered after the original date
set for responses, and correct any response as may be required.
DEFINITIONS AND INSTRUCTIONS
Applicant incorporates by reference all the instructions and definitions listed in
Applicant’s First Set of Interrogatories served concurrently with these Requests for
RLP 59
2
Admission.. The following definitions and instructions apply to these RFAs.
REQUESTS
Request No. 1
Admit that you do not currently use MOSAEC in connection with “advisory
services in the field of development, education and training” in the United States.
Request No. 2
Admit that you have not used MOSAEC in connection with “advisory services in
the field of development, education and training” in the United States in the past three (3)
years.
Request No. 3
Admit that you have never used MOSAEC in connection with “advisory services
in the field of development, education and training” in the United States.
Request No. 4
Admit that the documents you have produced in response to Opposer’s First Set
of Requests for Production of Documents served herewith are authentic.
.
RLP 60
3
OFFIT KURMAN, P.A.
Dated: June 11, 2020 By__/s/ Laura J. Winston___________________
Jonathan R. Wachs
Laura J. Winston
Attorneys for Applicant
8171 Maple Lawn Boulevard, Suite 200
Maple Lawn, Maryland 20759
Email: jwachs@offitkurman.com;
lwinston@offitkurman.com;
trademarks@offitkurman.com
RLP 61
4
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true copy of the foregoing APPLICANT’S
FIRST SET OF REQUESTS FOR ADMISSION was served by e-mail to Opposer at its
email address of record.
DATED: June 11, 2020
By: /s/ Laura J. Winston
4824-5046-6495, v. 1
RLP 62
Exhibit I
RLP 63
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
RLP Ventures, LLC
Opposer,
v.
Mosaic Learning, Inc.
Applicant.
Opposition No. 91252016
Mark: MOSAIC LEARNING
Serial No. 88/075,609
Filed: Aug. 13, 2018
Published: Sep. 3, 2019
RLP VENTURES, LLC’S OBJECTION TO
APPLICANT’S FIRST SET OF INTERROGATORIES
RLP Ventures, LLC hereby objects to Mosaic Learning, Inc.’s (“Applicant”) First Set of
Interrogatories (the “Interrogatories”), pursuant to Rule 33 of the Federal Rules of Civil
Procedure and Section 405 of the Trademark Trial and Appeal Board Manual of Procedure
(“TBMP”).
In violation of TBMP § 405.03, Applicant has propounded interrogatories in excess of
the 75 interrogatory limit set by the Trademark Trial and Appeal Board. Accordingly, RLP
Ventures, LLC will not respond to any interrogatory in Applicant’s First Set of Interrogatories.
See TBMP § 405.03(e) (instructing a party receiving excessive interrogatories to withhold
responding to any propounded interrogatory).
RLP 64
Respectfully submitted,
Dated: July 11, 2020 By: /Ramona Prioleau/
Ramona Prioleau
RLP Ventures, LLC
Times Square Station
P.O. Box 2605
New York, NY 10108-2605
rlpvllc@gmail.com
2
RLP 65
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the attached RLP Ventures,
LLC’s Objection to Applicant’s First Set of Interrogatories was served on the Attorney for the
Applicant on the date listed below via email:
Jonathan R. Wachs
Offit Kurman, P.A.
8171 Maple Lawn Boulevard Suite 200
Maple Lawn, MD 20759
jwachs@offitkurman.com
trademarks@offitkurman.com
lwinston@offitkurman.com
alison.pratt@offitkurman.com
Dated: July 11, 2020 By: /Ramona Prioleau/
Ramona Prioleau
3
RLP 66
Exhibit J
RLP 67
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
RLP Ventures, LLC
Opposer,
v.
Mosaic Learning, Inc.
Applicant.
Opposition No. 91252016
Mark: MOSAIC LEARNING
Serial No. 88/075,609
Filed: Aug. 13, 2018
Published: Sep. 3, 2019
RLP VENTURES, LLC’S OBJECTION TO APPLICANT’S FIRST SET
OF REQUEST S FOR PRODUCTION OF DOCUMENTS
RLP Ventures, LLC hereby objects to Mosaic Learning, Inc.’s (“Applicant”) First Set of
Requests for Production of Documents (the “Requests”), pursuant to Rule 34 of the Federal
Rules of Civil Procedure and Section 406 of the Trademark Trial and Appeal Board Manual of
Procedure (“TBMP”).
In violation of TBMP § 406.05, Applicant has propounded Requests in excess of the 75
limit for the production of documents and things set by the Trademark Trial and Appeal Board.
Accordingly, RLP Ventures, LLC will not respond to any Request in Applicant’s First Set of
Requests for Production of Documents. See TBMP § 406.05(e) (instructing a party receiving
excessive requests for the production of documents to withhold responding to any propounded
request).
RLP 68
Respectfully submitted,
Dated: July 11, 2020 By: /Ramona Prioleau/
Ramona Prioleau
RLP Ventures, LLC
Times Square Station
P.O. Box 2605
New York, NY 10108-2605
rlpvllc@gmail.com
2
RLP 69
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the attached RLP Ventures,
LLC’s Objection to Applicant’s First Set of Requests for Production of Documents was served
on the Attorney for the Applicant on the date listed below via email:
Jonathan R. Wachs
Offit Kurman, P.A.
8171 Maple Lawn Boulevard Suite 200
Maple Lawn, MD 20759
jwachs@offitkurman.com
trademarks@offitkurman.com
lwinston@offitkurman.com
alison.pratt@offitkurman.com
Dated: July 11, 2020 By: /Ramona Prioleau/
Ramona Prioleau
3
RLP 70
Exhibit K
RLP 71
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
RLP Ventures, LLC
Opposer,
v.
Mosaic Learning, Inc.
Applicant.
Opposition No. 91252016
Mark: MOSAIC LEARNING
Serial No. 88/075,609
Filed: Aug. 13, 2018
Published: Sep. 3, 2019
RLP VENTURES, LLC’S RESPONSE TO
APPLICANT’S FIRST SET OF RE Q UEST S FOR ADMISSION
RLP Ventures, LLC hereby objects and responds to Mosaic Learning, Inc.’s
(“Applicant”) First Set of Requests for Admission (the “Requests,” also referred to individually
as “Request”), pursuant to Rule 36 of the Federal Rules of Civil Procedure and Section 407 of
the Trademark Trial and Appeal Board Manual of Board Procedure.
PRELIMINARY STATEMENT
These responses are made solely for the purpose of this opposition proceeding, and are
subject to all objections as to competence, relevance, materiality, propriety, admissibility, and all
other objections and grounds that would require the exclusion of any information identified
herein if such information were proffered to be received in evidence at trial, all of which are
expressly reserved.
RLP Ventures, LLC has not concluded formal and informal review and trial preparation
with respect to the issues in this proceeding. Therefore, while these responses are based upon
diligent exploration and investigation by RLP Ventures, LLC, they reflect the current state of
RLP 72
RLP Ventures, LLC’s knowledge and analysis respecting the matters about which inquiry is
made and are not intended to be final and conclusive. RLP Ventures, LLC reserves the right to
amend, supplement, delete from, or otherwise change any response herein as further discovery
may make appropriate, and/or if it appears that omissions or errors have been made herein.
The responses below are based upon information presently available to RLP Ventures,
LLC, and no incidental or implied admissions are intended. The fact that RLP Ventures, LLC
agrees to respond to all or part of any request is not and should not be deemed to be either (1) an
admission that RLP Ventures, LLC accepts or admits the existence of any facts set forth or
assumed by such request, or that such response constitutes admissible evidence, or (2) a waiver
by RLP Ventures, LLC of all or any part of any objections which it has made to any request.
RECURRING OBJECTIONS
1. The general objections set forth in paragraphs 2 through 8 apply to and are
incorporated into RLP Ventures, LLC’s response to each Request as if set forth at length, unless
the context specifically states otherwise.
2. RLP Ventures, LLC objects to the Applicant’s Requests to the extent they request
information not reasonably calculated to lead to the discovery of admissible evidence where
Applicant’s definition is broad enough to cover matters that manifestly are not in issue in this
proceeding.
3. RLP Ventures, LLC objects to the Requests to the extent they seek discovery of
information protected by the attorney-client privilege and/or the work product doctrine. RLP
Ventures, LLC does not intend to disclose any information or produce any documents protected
by the attorney-client privilege or the work product doctrine. Any inadvertent disclosure of such
information or production of such documents shall not be deemed a waiver of the attorney-client
privilege or the work product doctrine. RLP Ventures, LLC will describe any response withheld
2
RLP 73
on the ground of immunity or privilege in a manner that, without revealing information itself
privileged or protected, will enable RLP Ventures, LLC to assess the applicability of the
privilege or protection.
4. RLP Ventures, LLC objects to all of the Requests to the extent they seek disclosure of
information containing or embodying trade secrets, confidential business information,
proprietary materials and/or other private matters protected under Federal Rule of Civil
Procedure 26(c)(7) and/or Federal Rule of Evidence 501. RLP Ventures, LLC will describe any
response withheld on the ground of immunity or privilege in a manner that, without revealing
information itself privileged or protected, will enable RLP Ventures, LLC to assess the
applicability of the privilege or protection.
5. RLP Ventures, LLC objects to the Requests to the extent they seek discovery of
information provided in confidence to RLP Ventures, LLC by persons or entities not a party to
this action which constitute or embody information or material that is private, confidential,
business, proprietary or trade secret and which RLP Ventures, LLC has agreed not to disclose or
disseminate, pursuant to any form of confidentiality or non-disclosure agreement or which are
inadmissible under Federal Rules of Evidence 408.
6. RLP Ventures, LLC objects to the Requests to the extent they seek information that
could be obtained from another source that would be more convenient, less burdensome, or less
expensive.
7. RLP Ventures, LLC objects to the Requests to the extent they attempt to obligate RLP
Ventures, LLC (a) to conduct anything other than a reasonable inquiry about the information
sought, or (b) to respond as to information, documents or things that are not within RLP
Ventures, LLC’s possession, custody or control.
3
RLP 74
8. RLP Ventures, LLC objects to the definition of “Opposer”, “You” and “Your”
respectively contained in Definitions 1 and 3, in that Definitions 1 and 3 require RLP Ventures,
LLC to make a determination whether a person or entity qualifies or acted within one of many
enumerated capacities, and/or bears a particular relationship to or affiliation with another person
or entity, which renders the Definition and each Request to which it applies, unduly burdensome,
vague and ambiguous.
9. RLP Ventures, LLC objects to each Request to the extent that it assumes disputed facts
or legal conclusions in defining the information requested. RLP Ventures, LLC ’s objections are
based on a good faith investigation and are made without in any manner waiving the right to
object to the use of any response for any purpose, in this action or other actions, on the grounds
of privilege, relevance, materiality, or any other available ground. In responding to each request,
RLP Ventures, LLC neither admits nor denies any such disputed facts or legal conclusions.
10. RLP Ventures, LLC reserves all objections or other questions as to the competency,
relevance, materiality, privilege or admissibility of evidence in this or any subsequent proceeding
or trial or any other action for any purpose whatsoever.
11. These responses are given without prejudice to further revision or supplementation of
these responses by RLP Ventures, LLC if further discovery or investigation so requires.
12. RLP Ventures, LLC also notes that discovery in this matter is ongoing, and that it has
not yet completed its preparations for trial. As discovery proceeds, facts, information, evidence,
documents, and things may be discovered that are not set forth in these responses, but which may
have been included in these responses had they been available.
4
RLP 75
RESPONSES
REQUEST NO. 1: Admit that you do not currently use MOSAEC in connection with
“advisory services in the field of development, education and training” in the United States.
RESPONSE:
� RLP Ventures, LLC hereby incorporates by reference all of its Recurring Objections.
Notwithstanding and without waiving the foregoing objections and based on RLP
Ventures, LLC’s understanding of Applicant’s Request, denied.
REQUEST NO. 2: Admit that you have not used MOSAEC in connection with “advisory
services in the field of development, education and training” in the United States in the past three
(3) years.
RESPONSE:
� RLP Ventures, LLC hereby incorporates by reference all of its Recurring Objections.
Notwithstanding and without waiving the foregoing objections and based on RLP
Ventures, LLC’s understanding of Applicant’s Request, denied.
REQUEST NO. 3: Admit that you have never used MOSAEC in connection with “advisory
services in the field of development, education and training” in the United States.
RESPONSE:
� RLP Ventures, LLC hereby incorporates by reference all of its Recurring Objections.
Notwithstanding and without waiving the foregoing objections and based on RLP
Ventures, LLC’s understanding of Applicant’s Request, denied.
5
RLP 76
REQUEST NO. 4: Admit that the documents you have produced in response to Opposer’s
First Set of Requests for Production of Documents served herewith are authentic.
RESPONSE:
� RLP Ventures, LLC hereby incorporates by reference all of its Recurring Objections.
Notwithstanding and without waiving the foregoing objections and based on RLP
Ventures, LLC’s understanding of Applicant’s Request, not applicable. RLP Ventures,
LLC served Applicant with its Objection to Applicant’s First Set of Interrogatories and
its Objection to Applicant’s First Set of Requests for Production of Documents.
Respectfully submitted,
Dated: July 11, 2020 By: /s/Ramona Prioleau
Ramona Prioleau
RLP Ventures, LLC
Times Square Station
P.O. Box 2605
New York, NY 10108-2605
rlpvllc@gmail.com
6
RLP 77
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the attached RLP Ventures,
LLC’s Response to Applicant’s First Set of Requests for Admission was served on the Attorney
for the Applicant on the date listed below via email:
Jonathan R. Wachs
Offit Kurman, P.A.
8171 Maple Lawn Boulevard Suite 200
Maple Lawn, MD 20759
jwachs@offitkurman.com
trademarks@offitkurman.com
lwinston@offitkurman.com
alison.pratt@offitkurman.com
Dated: July 11, 2020 By: /s/Ramona Prioleau
Ramona Prioleau
7
RLP 78
Exhibit L
RLP 79
RLP Vent <rlpvllc@gmail.com>
RE: RLP Ventures v. Mosaic Learning - Oppn. No. 912520161 message
Winston, Laura <lwinston@offitkurman.com> Tue, Jul 14, 2020 at 11:51 AM
To: RLP Vent <rlpvllc@gmail.com>Cc: "Wachs, Jonathan" <jwachs@offitkurman.com>
Dear Ramona,
Please see attached (1) Applicant’s Amended First Set of Requests for Production and (2) Applicant’s Amended First
Set of Interrogatories. Although we disagree with your determination that our original versions exceeded the allowed
number of discovery requests, we have substantially reduced the number in a good-faith effort to resolve this issue
without the need for intervention by the TTAB.
Please notify us by Monday, July 20, 2020 if you do not plan to respond substantively to our amended discovery
requests within 30 days, i.e. by August 13, 2020. We take the opportunity to remind you that both parties have a
good-faith obligation to cooperate with one another to resolve disputes over discovery in accordance with TBMP 408. We are doing so and trust that you will as well.
Regards,
Laura J. Winston
Laura J. Winston
Principal
D 347.589.8536
lwinston@offitkurman.com
10 East 40th Street
Suite 3500
New York, NY 10016
T 212.545.1900
F 347.589.8535
offitkurman.com
Gmail - RE: RLP Ventures v. Mosaic Learning - Oppn. No. 91252016 https://mail.google.com/mail/u/0?ik=5aa2707a5b&view=pt&search=all...
1 of 2 9/11/2020, 10:30 PM
RLP 80
PRIVILEGED COMMUNICATION/PRIVACY NOTICE
Information contained in this transmission is attorney-client privileged and confidential. It is solely intended for use by the individual or entity
named above. If the reader of this message is not the intended recipient, you are hereby notified that any dissemination, distribution or copying
of this communication is strictly prohibited. If you have received this communication in error, please immediately notify us by telephone and
delete this communication.
Any tax advice included in this communication may not contain a full description of all relevant facts or a complete analysis of all relevant tax
issues or authorities. This communication is solely for the intended recipient’s benefit and may not be relied upon by any other person or entity.
2 attachments
Applicant's Amended First Set of Interrogatories 7 14 20.pdf
170K
Applicant's Amended First Set of Requests for Production 7 14 20.pdf
137K
Gmail - RE: RLP Ventures v. Mosaic Learning - Oppn. No. 91252016 https://mail.google.com/mail/u/0?ik=5aa2707a5b&view=pt&search=all...
2 of 2 9/11/2020, 10:30 PM
RLP 81
Exhibit M
RLP 82
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
) RLP VENTURES, LLC )
) Opposition No. 91252016
Opposer; ) ) Mark: MOSAIC LEARNING ) Serial No. 88/075,609 )
v. ) ) ) )
) MOSAIC LEARNING, INC. )
) Applicant. )
)
)
APPLICANT’S AMENDED FIRST SET OF INTERROGATORIES
Pursuant to Federal Rule of Civil Procedure 33, Applicant Mosaic Learning, Inc.
(“Applicant”) hereby requests that Opposer, RLP Ventures, LLC (“Opposer”), answer
each of the following interrogatories separately and fully, in writing and under oath,
within thirty (30) days after service hereof. Pursuant to these interrogatories, Opposer has
a continuing obligation to update its responses with any information discovered after the
original date set for responses, and correct any response to any interrogatory as may be
required.
DEFINITIONS AND INSTRUCTIONS
The following definitions and instructions apply to these interrogatories.
1. The term “Opposer” shall mean RLP Ventures, LLC, its predecessors in
RLP 83
2
interest, and all of its subsidiaries and affiliated companies, and the officers, directors,
employees, agents, brokers, attorneys, representatives and any other persons or entities
acting or purporting to act on its behalf.
2. The term “Applicant” shall mean Mosaic Learning, Inc., its predecessors
in interest, and all of its subsidiaries and affiliated companies, and the officers, directors,
employees, agents, brokers, attorneys, representatives and any other persons or entities
acting or purporting to act on its behalf.
3. The terms “you” and “your” shall refer to Opposer as defined above.
4. The term “person(s)” means any natural person, any form of business
entity (whether partnership, association, cooperative, corporation, company or
otherwise), and any governmental entity or department, agency, bureau, or political
thereof.
5. The term “MOSAEC” refers to the designation that is the subject of
Opposer’s United States Trademark Registration Nos. 5409856 and 5284032.
6. The term “Opposer’s Services” refers to the services identified by or used
in connection with MOSAEC, whether or not included in Registration Nos. 5409856
and/or 5284032.
7. The term “Opposed Application” refers to Applicant’s United States
Trademark Application Serial No. 88075609.
8. The term “MOSAIC LEARNING” refers to the mark that is the subject of
the Opposed Application.
9. The term “Applicant’s identified services” refers to the services identified
in the Opposed Application.
RLP 84
3
10. The term “document(s)” shall be given the fullest interpretation allowable
under Rule 34 of the Federal Rules of Civil Procedure, including but not limited to paper
and electronic documents and files, and shall include writings, recordings, and
photographs, as those terms are defined in Rule 1001 of the Federal Rules of Evidence.
Without limiting the foregoing, “document(s)” means all written, typed, or printed matter
and all electronic, magnetic or other records or documentation of any kind or description
(including, without limitation, letters, correspondence, telegrams, memoranda, notes,
records, minutes, contracts, agreements, records, or notations of telephone or personal
conversations, conferences, interoffice communications, e-mail, microfilm, bulletins,
circulars, pamphlets, photographs, facsimiles, invoices, tape recordings, computer
printouts and worksheets), including drafts and copies not identical to the originals, all
photographs and graphic matter, however produced or reproduced, and all compilations
of data from which information can be obtained, and any and all writings or recordings or
any type or nature, in your actual possession, custody or control, including those in the
possession, custody or control of any consultants, accountants, attorneys, or other agents,
whether or not prepared by you.
11. Without limiting the term “control,” a document is deemed to be within
your control if you have ownership, possession or custody of the document, or the right
to secure the document or a copy thereof from any person or entity having physical
possession thereof.
12. Unless otherwise specified, “describe” or “identify,” when referring to a
person, means you must state the following: (a) the full name; (b) the present or last
known residential and/or business address; (c) the present or last known residential and/or
RLP 85
4
business telephone numbers; (d) the present occupation, job title, employer and
employer’s address at the time of event or period referred to in each particular
interrogatory; and (e) in the case of any person other than an individual, identify the
officer, employee, or agent most closely connected with the subject matter of the
interrogatory, and the officer who is responsible for supervising that officer or employee.
13. Unless otherwise specified, “describe” or “identify,” when referring to a
document, means you must state the following: (a) the type of document (e.g. letter,
handwritten note, etc.); (b) the title or heading that appears on the document; (c) its date,
author or authors, and addressee(s), if any; and (d) its present location and custodian. If
any such document is no longer in your possession or subject to your control, “identify”
also means to state: (e) what disposition was made of it; (f) the circumstances
surrounding the authorization of the document’s disposition; and (g) the date of
disposition.
14. Unless otherwise specified, “describe” or “identify,” when referring to an
act, occurrence, transaction, decision, statement, or communication (hereinafter
collectively referred to as “act”), means you must describe in substance the event or
events constituting such act(s), the place and date thereof, the manner in which such
act(s) took place and to identify the persons present, the persons involved, and any
document referring or relating thereto.
15. The term “communication(s)” is used herein in its broadest sense to
encompass any transmission or exchange of information, ideas, facts, data, proposals, or
any other matter, whether between individuals or between or among members of a group,
whether face-to-face, by telephone or by means of written electronic or other medium.
RLP 86
5
16. The phrase “relate to,” the word “concerning,” or any variants thereof,
mean any document, communication or information that constitutes, contains, embodies,
responds to, describes, analyzes, or is otherwise pertinent to the subject matter request.
17. The term “or” shall mean “and/or”; the term “and” shall mean “and/or”;
and the terms “and” as well as “or” shall be construed either disjunctively or
conjunctively as necessary to bring within the scope of the request all documents which
might otherwise be construed to be outside its scope.
18. The term “any” refers to any and all documents, persons or entities
inclusively.
19. All references to the singular shall include the plural, and all references to
the plural shall include the singular.
20. In the following interrogatories, if a privilege is alleged as to information
or materials, if an interrogatory is otherwise not answered in full, or if an objection is
made to any of this discovery, the reasons therefor shall be stated for not answering in
full and answering said interrogatory to the extent to which it is not objected, including
the identification of all information or materials for which privilege is claimed and the
specific nature of any such privilege.
INTERROGATORIES
Interrogatory No. 1
Identify each officer of Opposer.
Answer:
Interrogatory No. 2
RLP 87
6
Identify the officers of Opposer’s related companies.
Answer:
Interrogatory No. 3
Describe in detail your first use of MOSAEC in the United States as a trademark,
including the goods and/or services in connection with which it was first used.
Answer:
Interrogatory No. 4
Describe in detail your use of MOSAEC in the United States from first use to the
present, including the type of services associated with MOSAEC, the target market of
customers to whom MOSAEC is directed, and the channels of trade through which
Opposer’s Services have been provided.
Answer:
Interrogatory No. 5
State all facts relating to the circumstances under which you first became aware of
Applicant’s use of MOSAIC LEARNING.
Answer:
Interrogatory No. 6
State all facts relating to how you promoted the MOSAEC in the United States
from your first use to the present.
RLP 88
7
Answer:
Interrogatory No. 7
State all facts relating to the specimen you submitted during the prosecution of the
application which matured into the pleaded Reg. No. 5284032.
Answer:
Interrogatory No. 8
State all facts relating to the specimen you submitted during the prosecution of the
application which matured into the pleaded Reg. No. 5409856.
Answer:
Interrogatory No. 9
State all facts supporting your allegation in Paragraph 1 of your Notice of
Opposition.
Answer:
Interrogatory No. 10
State all facts supporting your allegation in Paragraph 2 of your Notice of
Opposition.
Answer:
Interrogatory No. 11
RLP 89
8
State all facts supporting your allegation in Paragraph 3 of your Notice of
Opposition.
Answer:
Interrogatory No. 12
State all facts supporting your allegation in Paragraph 4 of your Notice of
Opposition.
Answer:
Interrogatory No. 13
State all facts supporting your allegation in Paragraph 5 of your Notice of
Opposition.
Answer:
Interrogatory No. 14
State all facts supporting your allegation in Paragraph 7 of your Notice of
Opposition.
Answer:
Interrogatory No. 15:
State all facts supporting your allegation in the second Paragraph 8 of your Notice
of Opposition.
RLP 90
9
Answer:
Interrogatory No. 16
State all facts supporting the following statement in your allegation in Paragraph
10 of your Notice of Opposition: “[T]o the extent that Applicant’s and Opposer’s
Services do not already overlap, Applicant’s Services are within Opposer’s zone of
natural expansion.”
Answer:
Interrogatory No. 17
State all facts supporting the following statement in your allegation in Paragraph
13 of your Notice of Opposition: “[U]pon information and belief, Applicant will offer
Applicant’s Services under Applicant’s Mark in connection with services for users that
are within the same group targeted by Opposer.”
Answer:
Interrogatory No. 18
State all facts supporting the statement in your allegation in Paragraph 13 of your
Notice of Opposition that you have cultivated a “diverse community of users” through
your “long, extensive, and continuous use of Opposer’s Mark.”
Answer:
RLP 91
10
Interrogatory No. 19
Identify all third party uses of MOSAEC or MOSAIC for any goods or services of
which you are aware.
Answer:
Interrogatory No. 20
If you are aware of any instances of confusion between you and Applicant,
describe each instance of actual or possible confusion.
Answer:
Interrogatory No. 21
Identify each person that has rendered assistance to you in connection with the
advertising, and/or sale of any product or service bearing MOSAEC in the United States.
Answer:
Interrogatory No. 22
Identify any and all communications which took place between you and any other
person regarding the subject of the pending opposition proceeding.
Answer:
Interrogatory No. 23
Identify all agreements between you and other persons relating to MOSAEC.
Answer:
RLP 92
11
Interrogatory No. 24
State the dollar amount of your gross sales revenue derived from use of MOSAEC
in the United States from your first use of MOSAEC to the present, broken down
annually.
Answer:
Interrogatory No. 25
State the dollar amount of your advertising expenditures for the promotion of
MOSAEC in the United States from your first use of MOSAEC to the present, broken
down annually.
Answer:
Interrogatory No. 26
Identify each witness, including experts, whose testimony you intend to rely upon
in this proceeding.
Answer:
Interrogatory No. 27
Describe the media which you used to promote the goods and/or services offered
under MOSAEC.
Answer:
RLP 93
12
Interrogatory No. 28
Identify the persons with the most knowledge concerning the inature of goods
and/or services you are selling under MOSAEC.
Answer:
Interrogatory No. 29
Identify the persons with the most knowledge concerning your business plans for
the sale of goods and/or services under MOSAEC.
Answer:
Interrogatory No. 30
Identify any licensees for goods and/or services under MOSAEC.
Answer:
Interrogatory No. 31
Identify all persons (other than clerical personnel) who participated in any way in
providing responses to these interrogatories.
Answer:
Interrogatory No. 32
Identify all persons whose files were searched for documents responsive to
Applicant’s Amended First Request for Production of Documents served concurrently
herewith.
RLP 94
13
Answer:
Interrogatory No. 33
Have you ever been party to a lawsuit, United States Patent and Trademark Office
opposition or cancellation proceeding (other than the present proceeding) in the United
States relating to the use or registration of MOSAEC?
Answer:
Interrogatory No. 34
If the answer to Interrogatory 33 is yes, set forth the following concerning each
such litigation or proceeding: state its case docket number and filing date and identify the
tribunal involved.
Interrogatory No. 35
Identify any procedure initiated by you to determine whether there is any
confusion between Opposer’s Services and Applicant’s Identified Services.
Answer:
Interrogatory No. 36
State the number of current registered users for the web site MOSAEC.COM.
Answer:
Interrogatory No. 37
RLP 95
14
State the number of visits to the web site MOSAEC.COM in the past five (5)
years.
Answer:
Interrogatory No. 38
State the number of unique visitors to the web site MOSAEC.COM in the past
five (5) years.
Answer:
Interrogatory No. 39
Identify the person within Applicant who has the greatest knowledge as to the
information requested, as to each of the above interrogatories.
Answer:
OFFIT KURMAN, P.A.
Dated: July 14, 2020 By__/s/ Laura J. Winston
Jonathan R. Wachs Laura J. Winston Attorneys for Applicant
8171 Maple Lawn Boulevard, Suite 200 Maple Lawn, Maryland 20759 Email: jwachs@offitkurman.com;
lwinston@offitkurman.com
RLP 96
15
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true copy of the foregoing APPLICANT’S AMENDED FIRST SET OF INTERROGATORIES was served by e-mail to Opposer at its address of record.
DATED: July 14, 2020
By: /s/ Laura J. Winston
4840-0780-7683, v. 1
RLP 97
Exhibit N
RLP 98
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
) RLP VENTURES, LLC )
) Opposition No. 91252016
Opposer; ) ) Mark: MOSAIC LEARNING ) Serial No. 88/075,609 )
v. ) ) ) )
) MOSAIC LEARNING, INC. )
) Applicant. )
)
)
APPLICANT’S AMENDED FIRST SET OF REQUESTS FOR PRODUCTION OF
DOCUMENTS
Pursuant to Federal Rule of Civil Procedure 34, Applicant Mosaic Learning, Inc.
(“Applicant”) hereby requests that Opposer, RLP Ventures, LLC (“Opposer”), respond to
the Requests for Production listed below in writing and under oath within thirty (30) days
after service hereof. Pursuant to these requests for production, Opposer has a continuing
obligation to update its responses with any information discovered after the original date
set for responses.
DEFINITIONS AND INSTRUCTIONS
Applicant incorporates by reference all the instructions and definitions listed in
Applicant’s First Set of Interrogatories served concurrently with these Requests for
RLP 99
2
Production of Documents. The following definitions and instructions apply to these
RPDs.
REQUESTS
Request No. 1
Produce all documents relating to Opposer's organizational structure.
Request No. 2
Produce all documents relating to any trademark search conducted by or for
Opposer relating to MOSAEC.
Request No. 3
Produce all documents relating to your selection and adoption of MOSAEC.
Request No. 3
Produce all documents relating to any other mark used by you in connection with
the goods and/or services offered under MOSAEC in the United States.
Request No. 4
Produce all documents relating to any application or registration of a domain
RLP 100
3
name containing MOSAEC with any computer network domain name registering body.
Request No. 5
Produce all documents relating to your first use of MOSAEC in commerce in
connection with any goods and/or services.
Request No. 6
Produce all documents relating to your use of MOSAEC in commerce between
your first use and the present.
Request No. 7
Produce all documents relating to your specimen submitted during the prosecution
of the application which matured into the pleaded Reg. No. 5284032.
Request No. 8
Produce all documents relating to your specimen submitted during the prosecution
of the application which matured into the pleaded Reg. No. 5409856.
Request No. 9
Produce all invoices relating to the sale of goods and/or services under MOSAEC
by you to any and all other persons between your first use of MOSAEC and the present.
Request No. 10:
RLP 101
4
Produce all documents relating to your gross revenue earned from the sales of any
goods and/or services under MOSAEC between your first use of MOSAEC and the
present.
Request No. 11
Produce all documents concerning efforts by you to promote goods and/or
services offered under MOSAEC between your first use of MOSAEC and the present.
Request No. 12
Produce all documents relating to use of MOSAEC in connection with “advisory
services in the field of development, education and training”.
Request No. 13
Produce all documents relating to Applicant within the last five (5) years.
Request No. 14
Produce documents sufficient to describe your document retention policies,
document destruction policies, document retention practices, and document destruction
practices within the last six (6) years.
RLP 102
5
Request No. 15
Produce all documents concerning your perceived market for goods and/or
services offered under MOSAEC from your first use of MOSAEC to the present.
Request No. 16
Produce all documents relating to your allegation in Paragraph 1 of your Notice of
Opposition.
Request No. 17
Produce all documents relating to your allegation in Paragraph 2 of your Notice of
Opposition.
Request No. 18
Produce all documents relating to your allegation in Paragraph 3 of your Notice of
Opposition.
Request No. 19
Produce all documents relating to your allegation in Paragraph 4 of your Notice of
Opposition.
Request No. 20
Produce all documents relating to your allegation in Paragraph 5 of your Notice of
Opposition.
RLP 103
6
Request No. 21
Produce all documents relating to your allegation in Paragraph 7 of your Notice of
Opposition.
Request No. 22
Produce all documents relating to your allegation in the second Paragraph 8 of
your Notice of Opposition.
Request No. 23
Produce all documents relating to the following statement in Paragraph 10 of your
Notice of Opposition: “[T]o the extent that Applicant’s and Opposer’s Services do not
already overlap, Applicant’s Services are within Opposer’s zone of natural expansion.”
Request No. 24
Produce all documents relating to the following statement in Paragraph 13 of your Notice
of Opposition: “[U]pon information and belief, Applicant will offer Applicant’s Services
under Applicant’s Mark in connection with services for users that are within the same
group targeted by Opposer.”
Request No. 25
Produce all documents relating to the statement in Paragraph 13 of your Notice of
RLP 104
7
Opposition that you have cultivated a “diverse community of users” through your “long,
extensive, and continuous use of Opposer’s Mark.”
Request No. 26
Produce all DOCUMENTS which refer to or describe the types of customers of
the goods and/or services offered under MOSAEC.
Request No. 27
Produce documents sufficient to show all geographic territories within the United
States in which you have customers of the good and/or services offered under MOSAEC.
Request No. 28
Produce all documents which refer to the channels of trade in which you have sold goods
and/or services under MOSAEC in the United States.
Request No. 29
Produce all documents relating to your advertising expenditures for any goods
and/or services offered or intended to be offered under the MOSAEC in the United
States.
Request No. 30
Produce all documents relating to the number of registered users of the
MOSAEC.COM web site during each of the past five (5) calendar years.
RLP 105
8
Request No. 31
Produce all documents relating to the number of visits to the MOSAEC.COM
web site during each of the last five (5) calendar years.
Request No. 32
Produce all documents relating to the number of visitors who logged into the
MOSAEC.COM web site during each of the past five (5) calendar years.
Request No. 33
Produce all documents relating to the media in which you have advertised your
goods and/or services in the United States in connection with MOSAEC.
Request No. 34
Produce all documents relating to any instance in which a person demonstrated a
belief that any of your goods and/or services marketed under the MOSAEC were in any
way related to Applicant or Applicant’s identified services.
Request No. 35
Produce all documents relating to communications received by you that relate to
Applicant or Applicant’s identified services.
Request No. 36
RLP 106
9
Produce all agreements between you and any other persons relating to MOSAEC.
Request No. 37
Produce all documents relating to proposed agreements with third parties
regarding MOSAEC.
OFFIT KURMAN, P.A.
Dated: July 14, 2020 By__/s/ Laura J. Winston
Jonathan R. Wachs Laura J. Winston Attorneys for Applicant
8171 Maple Lawn Boulevard, Suite 200 Maple Lawn, Maryland 20759 Email: jwachs@offitkurman.com;
lwinston@offitkurman.com
RLP 107
10
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true copy of the foregoing APPLICANT’S FIRST SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS was served by e- mail to Opposer at its email address of record.
DATED: July 14, 2020
By: /s/ Laura J. Winston
4851-3555-1171, v. 1
RLP 108
Exhibit O
RLP 109
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
RLP Ventures, LLC
Opposer,
v.
Mosaic Learning, Inc.
Applicant.
Opposition No. 91252016
Mark: MOSAIC LEARNING
Serial No. 88/075,609
Filed: Aug. 13, 2018
Published: Sep. 3, 2019
RLP VENTURES, LLC’S OBJECTION TO APPLICANT’S AMENDED
FIRST SET OF REQUEST S FOR PRODUCTION OF DOCUMENTS
Pursuant to Rule 34 of the Federal Rules of Civil Procedure and Trademark Rule 2.120(a)
(3), Opposer, RLP Ventures, LLC, objects to the Amended First Set of Document Requests (the
“Requests”) that Applicant, Mosaic Learning, Inc., served on July 14, 2020.
Rule 2.120(a)(3) provides that document requests must be served early enough in
discovery so that responses will not be due later than the close of discovery. See 37 CFR §
2.120(a)(3); see also TBMP, § 406.01. Opposer’s responses to the Requests were due on August
13, 2020. Discovery, however, closed on July 11, 2020. See D.I. 2. The Requests were therefore
improper because they failed to afford Opposer sufficient time to prepare a response.
RLP 110
Respectfully submitted,
Dated: August 13, 2020 By: /Ramona Prioleau/
Ramona Prioleau
RLP Ventures, LLC
Times Square Station
P.O. Box 2605
New York, NY 10108-2605
rlpvllc@gmail.com
2
RLP 111
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the attached RLP Ventures,
LLC’s Objection to Applicant’s Amended First Set of Requests for Production of Documents
was served on the Attorney for the Applicant on the date listed below via email:
Jonathan R. Wachs
Offit Kurman, P.A.
8171 Maple Lawn Boulevard Suite 200
Maple Lawn, MD 20759
jwachs@offitkurman.com
trademarks@offitkurman.com
lwinston@offitkurman.com
alison.pratt@offitkurman.com
Dated: August 13, 2020 By: /Ramona Prioleau/
Ramona Prioleau
3
RLP 112
Exhibit P
RLP 113
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
RLP Ventures, LLC
Opposer,
v.
Mosaic Learning, Inc.
Applicant.
Opposition No. 91252016
Mark: MOSAIC LEARNING
Serial No. 88/075,609
Filed: Aug. 13, 2018
Published: Sep. 3, 2019
RLP VENTURES, LLC’S OBJECTION TO
APPLICANT’S AMENDED FIRST SET OF INTERROGATORIES
Pursuant to Rule 33 of the Federal Rules of Civil Procedure and Trademark Rule 2.120(a)
(3), Opposer, RLP Ventures, LLC , objects to the Amended First Set of Interrogatories (the
“Interrogatories”) that Applicant, Mosaic Learning, Inc., served on July 14, 2020.
Rule 2.120(a)(3) provides that interrogatories must be served early enough in discovery
so that responses will not be due later than the close of discovery. See 37 CFR § 2.120(a)(3); see
also TBMP, § 405.01. Opposer’s responses to the Interrogatories were due on August 13, 2020.
Discovery, however, closed on July 11, 2020. See D.I. 2. The Interrogatories were therefore
improper because they failed to afford Opposer sufficient time to prepare a response.
RLP 114
Respectfully submitted,
Dated: August 13, 2020 By: /Ramona Prioleau/
Ramona Prioleau
RLP Ventures, LLC
Times Square Station
P.O. Box 2605
New York, NY 10108-2605
rlpvllc@gmail.com
2
RLP 115
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the attached RLP Ventures,
LLC’s Objection to Applicant’s Amended First Set of Interrogatories was served on the Attorney
for the Applicant on the date listed below via email:
Jonathan R. Wachs
Offit Kurman, P.A.
8171 Maple Lawn Boulevard Suite 200
Maple Lawn, MD 20759
jwachs@offitkurman.com
trademarks@offitkurman.com
lwinston@offitkurman.com
alison.pratt@offitkurman.com
Dated: August 13, 2020 By: /Ramona Prioleau/
Ramona Prioleau
3
RLP 116
Exhibit Q
RLP 117
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
_______________________________________
)
RLP VENTURES, LLC )
) Opposition No. 91252016
Opposer; )
) Mark: MOSAIC LEARNING
) Serial No. 88/075,609
)
v. )
)
)
)
)
MOSAIC LEARNING, INC. )
)
Applicant. )
)
_______________________________________)
APPLICANT’S FIRST SET OF INTERROGATORIES
Pursuant to Federal Rule of Civil Procedure 33, Applicant Mosaic Learning, Inc.
(“Applicant”) hereby requests that Opposer, RLP Ventures, LLC (“Opposer”), answer
each of the following interrogatories separately and fully, in writing and under oath,
within thirty (30) days after service hereof. Pursuant to these interrogatories, Opposer has
a continuing obligation to update its responses with any information discovered after the
original date set for responses, and correct any response to any interrogatory as may be
required.
DEFINITIONS AND INSTRUCTIONS
The following definitions and instructions apply to these document requests.
1. The term “Opposer” shall mean RLP Ventures, LLC, its predecessors in
RLP 118
2
interest, and all of its subsidiaries and affiliated companies, and the officers, directors,
employees, agents, brokers, attorneys, representatives and any other persons or entities
acting or purporting to act on its behalf.
2. The term “Applicant” shall mean Mosaic Learning, Inc., its predecessors
in interest, and all of its subsidiaries and affiliated companies, and the officers, directors,
employees, agents, brokers, attorneys, representatives and any other persons or entities
acting or purporting to act on its behalf.
3. The terms “you” and “your” shall refer to Opposer as defined above.
4. The term “person(s)” means any natural person, any form of business
entity (whether partnership, association, cooperative, corporation, company or
otherwise), and any governmental entity or department, agency, bureau, or political
thereof.
5. The term “MOSAEC” refers to the designation that is the subject of
Opposer’s United States Trademark Registration Nos. 5409856 and 5284032.
6. The term “Opposer’s Services” refers to the services identified by or used
in connection with MOSAEC, whether or not included in Registration Nos. 5409856
and/or 5284032.
7. The term “Opposed Application” refers to Applicant’s United States
Trademark Application Serial No. 88075609.
8. The term “MOSAIC LEARNING” refers to the mark that is the subject of
the Opposed Application.
9. The term “Applicant’s identified services” refers to the services identified
in the Opposed Application.
RLP 119
3
10. The term “document(s)” shall be given the fullest interpretation allowable
under Rule 34 of the Federal Rules of Civil Procedure, including but not limited to paper
and electronic documents and files, and shall include writings, recordings, and
photographs, as those terms are defined in Rule 1001 of the Federal Rules of Evidence.
Without limiting the foregoing, “document(s)” means all written, typed, or printed matter
and all electronic, magnetic or other records or documentation of any kind or description
(including, without limitation, letters, correspondence, telegrams, memoranda, notes,
records, minutes, contracts, agreements, records, or notations of telephone or personal
conversations, conferences, interoffice communications, e-mail, microfilm, bulletins,
circulars, pamphlets, photographs, facsimiles, invoices, tape recordings, computer
printouts and worksheets), including drafts and copies not identical to the originals, all
photographs and graphic matter, however produced or reproduced, and all compilations
of data from which information can be obtained, and any and all writings or recordings or
any type or nature, in your actual possession, custody or control, including those in the
possession, custody or control of any consultants, accountants, attorneys, or other agents,
whether or not prepared by you.
11. Without limiting the term “control,” a document is deemed to be within
your control if you have ownership, possession or custody of the document, or the right
to secure the document or a copy thereof from any person or entity having physical
possession thereof.
12. Unless otherwise specified, “describe” or “identify,” when referring to a
person, means you must state the following: (a) the full name; (b) the present or last
known residential and/or business address; (c) the present or last known residential and/or
RLP 120
4
business telephone numbers; (d) the present occupation, job title, employer and
employer’s address at the time of event or period referred to in each particular
interrogatory; and (e) in the case of any person other than an individual, identify the
officer, employee, or agent most closely connected with the subject matter of the
interrogatory, and the officer who is responsible for supervising that officer or employee.
13. Unless otherwise specified, “describe” or “identify,” when referring to a
document, means you must state the following: (a) the type of document (e.g. letter,
handwritten note, etc.); (b) the title or heading that appears on the document; (c) its date,
author or authors, and addressee(s), if any; and (d) its present location and custodian. If
any such document is no longer in your possession or subject to your control, “identify”
also means to state: (e) what disposition was made of it; (f) the circumstances
surrounding the authorization of the document’s disposition; and (g) the date of
disposition.
14. Unless otherwise specified, “describe” or “identify,” when referring to an
act, occurrence, transaction, decision, statement, or communication (hereinafter
collectively referred to as “act”), means you must describe in substance the event or
events constituting such act(s), the place and date thereof, the manner in which such
act(s) took place and to identify the persons present, the persons involved, and any
document referring or relating thereto.
15. The term “communication(s)” is used herein in its broadest sense to
encompass any transmission or exchange of information, ideas, facts, data, proposals, or
any other matter, whether between individuals or between or among members of a group,
whether face-to-face, by telephone or by means of written electronic or other medium.
RLP 121
5
16. The phrase “relate to,” the word “concerning,” or any variants thereof,
mean any document, communication or information that constitutes, contains, embodies,
responds to, describes, analyzes, or is otherwise pertinent to the subject matter request.
17. The term “or” shall mean “and/or”; the term “and” shall mean “and/or”;
and the terms “and” as well as “or” shall be construed either disjunctively or
conjunctively as necessary to bring within the scope of the request all documents which
might otherwise be construed to be outside its scope.
18. The term “any” refers to any and all documents, persons or entities
inclusively.
19. All references to the singular shall include the plural, and all references to
the plural shall include the singular.
20. In the following interrogatories, if a privilege is alleged as to information
or materials, if an interrogatory is otherwise not answered in full, or if an objection is
made to any of this discovery, the reasons therefor shall be stated for not answering in
full and answering said interrogatory to the extent to which it is not objected, including
the identification of all information or materials for which privilege is claimed and the
specific nature of any such privilege.
INTERROGATORIES
Interrogatory No. 1
Identify each officer and managing agent of Opposer, giving each officer’s and
managing agent’s name, address, title and duties with respect to Opposer.
Answer:
This Interrogatory has 8 questions based on 405.03
RLP 122
6
Interrogatory No. 2
Identify Opposer’s predecessors-in-interest, and all of its subsidiaries and
affiliated companies, and the officers, directors, employees, agents and representatives
thereof.
Answer:
Interrogatory No. 3
Describe in detail your first use of MOSAEC in the United States as a trademark,
including the date of first use, the context in which it was used, the geographic location of
its use, and the services in connection with which it was first used.
Answer:
Interrogatory No. 4
Describe in detail your use of MOSAEC in the United States from first use to the
present, including the type of services associated with MOSAEC, the geographic scope of
your use, the target market of customers to whom MOSAEC is directed (i.e., gender, age,
hobbies, activities, etc. of such customers), and the channels of trade through which
Opposer’s Services have been sold and/or provided.
Answer:
Interrogatory No. 5
State all facts relating to the circumstances under which you first became aware of
Applicant’s use of MOSAIC LEARNING, including when you became aware of
This Interrogatory has 15 questions based on 405.03
This Interrogatory has 4 questions based on 405.03
This Interrogatory has 7 questions based on 405.03
This Interrogatory has 3 questions based on 405.03
RLP 123
7
such use, how it was being used by Applicant, and where you saw Applicant's use of the
mark.
Answer:
Interrogatory No. 6
State all facts relating to how you promoted the MOSAEC in the United States
from your first use to the present, including identifying the specific marketing medium
utilized, the geographic area(s) in which such marketing, advertising or promoting
occurred, the time period(s) during which such marketing, advertising or promoting was
conducted, as well as the specific goods and/or services marketed, advertised or
promoted.
Answer:
Interrogatory No. 7
Explain why you chose to adopt the designation MOSAEC.
Answer:
Interrogatory No. 8
State all facts and identify all documents relating to the specimen you submitted
during the prosecution of the application which matured into the pleaded Reg. No.
5284032.
Answer:
This Interrogatory has 1 question based on 405.03
This Interrogatory has 2 questions based on 405.03
This Interrogatory has 4 questions based on 405.03
RLP 124
8
Interrogatory No. 9
State all facts and identify all documents relating to the specimen you submitted
during the prosecution of the application which matured into the pleaded Reg. No.
5409856.
Answer:
Interrogatory No. 10
State all facts and identify all documents supporting your allegation in Paragraph
1 of your Notice of Opposition.
Answer:
Interrogatory No. 11
State all facts and identify all documents supporting your allegation in Paragraph
2 of your Notice of Opposition.
Answer:
Interrogatory No. 12
State all facts and identify all documents supporting your allegation in Paragraph
3 of your Notice of Opposition.
Answer:
Interrogatory No. 13
This Interrogatory has 2 questions based on 405.03
This Interrogatory has 2 questions based on 405.03
This Interrogatory has 2 questions based on 405.03
This Interrogatory has 2 questions based on 405.03
RLP 125
9
State all facts and identify all documents supporting your allegation in Paragraph
4 of your Notice of Opposition.
Answer:
Interrogatory No. 14
State all facts and identify all documents supporting your allegation in Paragraph
5 of your Notice of Opposition.
Answer:
Interrogatory No. 15
State all facts and identify all documents supporting your allegation in Paragraph
7 of your Notice of Opposition.
Answer:
Interrogatory No. 16:
State all facts and identify all documents supporting your allegation in the second
Paragraph 8 of your Notice of Opposition.
Answer:
Interrogatory No. 17
State all facts and identify all documents supporting the following statement in
your allegation in Paragraph 10 of your Notice of Opposition: “[T]o the extent that
This Interrogatory has 2 questions based on 405.03
This Interrogatory has 2 questions based on 405.03
This Interrogatory has 2 questions based on 405.03
This Interrogatory has 2 questions based on 405.03
This Interrogatory has 2 questions based on 405.03
RLP 126
10
Applicant’s and Opposer’s Services do not already overlap, Applicant’s Services are
within Opposer’s zone of natural expansion.”
Answer:
Interrogatory No. 18
State all facts and identify all documents supporting the following statement in
your allegation in Paragraph 13 of your Notice of Opposition: “[U]pon information and
belief, Applicant will offer Applicant’s Services under Applicant’s Mark in connection
with services for users that are within the same group targeted by Opposer.”
Answer:
Interrogatory No. 19
State all facts and identify all documents supporting the statement in your
allegation in Paragraph 13 of your Notice of Opposition that you have cultivated a
“diverse community of users” through your “long, extensive, and continuous use of
Opposer’s Mark.”
Answer:
Interrogatory No. 20
Identify all third party uses of MOSAEC or MOSAIC for any goods or services of
which you are aware.
Answer:
This Interrogatory has 2 questions based on 405.03
This Interrogatory has 2 questions based on 405.03
This Interrogatory has 2 questions based on 405.03
RLP 127
11
Interrogatory No. 21
If you are aware of any instances of actual or possible confusion between you and
Applicant or between goods and/or services of you and those of Applicant, including but
not limited to telephone calls, inquiries by mail, or other communications from anyone
referring to or making any mention of Applicant, Applicant's goods and/or services, or
Applicant's trademarks, or exhibiting any mistaken association between Applicant or
Applicant's services and you or your goods and/or services, describe each instance of
actual or possible confusion, including the date thereof, the identity of the persons
involved, and all documents relating in any way to such instance.
Answer:
Interrogatory No. 22
Identify each person or agency which has rendered or is rendering assistance to
you in connection with the advertising, promotion, distribution, and/or sale of any
product or service bearing MOSAEC in the United States and, with respect to each such
person or agency, describe each matter in which assistance has been or is being rendered.
Answer:
Interrogatory No. 23
Describe and identify any and all communications which took place between you
and any other person regarding the subject of the pending opposition proceeding, and
identify any and all documents which relate to your answer.
This Interrogatory has 14 questions based on 405.03
This Interrogatory has 8 questions based on 405.03
This Interrogatory has 4 questions based on 405.03
RLP 128
12
Answer:
Interrogatory No. 24
Identify all contracts and/or agreements between you and other persons relating to
MOSAEC, including but not limited to all purchase contracts, distribution contracts, and
license agreements.
Answer:
Interrogatory No. 25
State the dollar amount of your gross sales revenue derived from use of MOSAEC
in the United States from your first use of MOSAEC to the present, broken down
annually.
Answer:
Interrogatory No. 26
State the dollar amount of your advertising expenditures for the promotion of
MOSAEC in the United States from your first use of MOSAEC to the present, broken
down annually.
Answer:
Interrogatory No. 27
Identify each witness, including experts, whose testimony you intend to rely upon
in this proceeding.
This Interrogatory has 3 questions based on 405.03
This Interrogatory has 1 question based on 405.03
This Interrogatory has 1 question based on 405.03
This Interrogatory has 1 question based on 405.03
RLP 129
13
Answer:
Interrogatory No. 28
Describe the media (e.g., radio, television, internet, magazines, etc.) which you
used to promote the goods and/or services offered under MOSAEC.
Answer:
Interrogatory No. 29
Identify all agreements concerning MOSAEC, including all licenses and
assignments.
Answer:
Interrogatory No. 30
Identify the persons employed or retained by you, including, but not limited to,
any third-party independent contractors or consultants, with the most knowledge
concerning the identity and nature of goods and/or services you are marketing,
distributing or selling, or intend to market, distribute or sell, under MOSAEC.
Answer:
Interrogatory No. 31
This Interrogatory has 8 questions based on 405.03
This Interrogatory has 2 questions based on 405.03
This Interrogatory has 4 questions based on 405.03
RLP 130
14
Identify the persons, including, but not limited to, any third-party independent
contractors or consultants, with the most knowledge concerning your business or
marketing plans for the sale or intended sale of goods and/or services under MOSAEC.
Answer:
Interrogatory No. 32
Identify any actual and/or intended sales representatives, dealers, distributors,
retailers and/or licensees for goods and/or services under MOSAEC.
Answer:
Interrogatory No. 33
Identify all persons (other than clerical personnel) who participated in any way in
providing responses to these interrogatories.
Answer:
Interrogatory No. 34
Identify all persons whose files were searched for documents responsive to
Opposer’s First Request for Production of Documents served concurrently herewith.
Answer:
Interrogatory No. 35
Have you or any of your officers or managing agents identified in the answer to
Interrogatory No. 1 ever considered or attempted to initiate or ever been party to a
This Interrogatory has 2 questions based on 405.03
This Interrogatory has 1 question based on 405.03
This Interrogatory has 1 question based on 405.03
This Interrogatory has 10 questions based on 405.03
RLP 131
15
lawsuit, United States Patent and Trademark Office opposition or cancellation proceeding
(other than the present proceeding) in the United States involving or relating to the use or
registration of Applicant’s Mark?
Answer:
Interrogatory No. 36
If the answer to Interrogatory 35 is yes, set forth the following concerning each
such litigation or proceeding: identify each actual or potential adversary and the
trademarks involved; state its case docket number and filing date and identify the tribunal
involved; state its outcome; identify all documents referring or relating to such litigation
or proceeding and ensuing negotiations, if any; and state the name(s) and address(es) and
telephone number(s) of all counsel representing any adverse party in such litigation or
proceeding.
Answer:
Interrogatory No. 37
Identify any study, research, focus group, testing or similar validation procedure
employed by you or any person or entity at your request or on your behalf to determine
the presence and/or absence of any confusion between Opposer’s Services and
Applicant’s Identified Services.
Answer:
Interrogatory No. 38
This Interrogatory has 24 questions based on 405.03
This Interrogatory has 20 questions based on 405.03
This Interrogatory has 8 questions based on 405.03
RLP 132
16
State the number of current registered users for the web site MOSAEC.COM.
Answer:
Interrogatory No. 39
State the number of visits to the web site MOSAEC.COM in the past five (5)
years.
Answer:
Interrogatory No. 40
State the number of unique visitors to the web site MOSAEC.COM in the past
five (5) years.
Answer:
Interrogatory No. 41
Identify any and all documents responsive to the foregoing interrogatories which
are lost or unavailable and identify the date(s) the loss or unavailability was first
discovered, the person(s) who first discovered the loss or unavailability and the person(s)
most knowledgeable about the contents of such lost or unavailable documents.
Answer:
Interrogatory No. 42
This Interrogatory has 1 question based on 405.03
This Interrogatory has 1 question based on 405.03
This Interrogatory has 6 questions based on 405.03
This Interrogatory has 1 question based on 405.03
RLP 133
17
Identify the person within Applicant who has the greatest knowledge as to the
information requested, as to each of the above interrogatories.
Answer:
OFFIT KURMAN, P.A.
Dated: June 11, 2020 By__/s/ Laura J. Winston___________________
Jonathan R. Wachs
Laura J. Winston
Attorneys for Applicant
8171 Maple Lawn Boulevard, Suite 200
Maple Lawn, Maryland 20759
Email: jwachs@offitkurman.com;
lwinston@offitkurman.com;
trademarks@offitkurman.com
This Interrogatory has 1 question based on 405.03
RLP 134
18
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true copy of the foregoing APPLICANT’S
FIRST SET OF INTERROGATORIES was served by e-mail to Opposer at its address of
record.
DATED: June 11, 2020
By: /s/ Laura J. Winston
4827-3581-0239, v. 2
RLP 135
Exhibit R
RLP 136
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
_______________________________________
)
RLP VENTURES, LLC )
) Opposition No. 91252016
Opposer; )
) Mark: MOSAIC LEARNING
) Serial No. 88/075,609
)
v. )
)
)
)
)
MOSAIC LEARNING, INC. )
)
Applicant. )
)
_______________________________________)
APPLICANT’S FIRST SET OF REQUESTS FOR PRODUCTION OF
DOCUMENTS
Pursuant to Federal Rule of Civil Procedure 34, Applicant Mosaic Learning, Inc.
(“Applicant”) hereby requests that Opposer, RLP Ventures, LLC (“Opposer”), respond to
the Requests for Production listed below in writing and under oath within thirty (30) days
after service hereof. Pursuant to these requests for production, Opposer has a continuing
obligation to update its responses with any information discovered after the original date
set for responses.
DEFINITIONS AND INSTRUCTIONS
Applicant incorporates by reference all the instructions and definitions listed in
Applicant’s First Set of Interrogatories served concurrently with these Requests for
RLP 137
2
Production of Documents. The following definitions and instructions apply to these
RPDs.
REQUESTS
Request No. 1
Produce all documents requested to be identified in Applicant’s First Set of
Interrogatories.
Request No. 2
Produce all documents relating to your responses to each of Applicant’s
Interrogatories, and all documents relied on or employed in formulating such responses.
Request No. 3
If Opposer denies any of the requested admissions set forth in Applicant’s First
Set of Requests for Admission to Opposer served herewith, produce all documents
Opposer will rely upon in this proceeding to prove that each such requested admission is
untrue.
Request No. 4
Produce all documents relating to Opposer's organizational structure, including
without limitation, documents identifying all officers, directors, and employees with
This Request has 1 question based on 405.03
This Request has 3 questions based on 405.03
This Request has 1 question based on 405.03
This Request has 3 questions based on 405.03
RLP 138
3
responsibilities relating to MOSAEC.
Request No. 5
Produce all documents relating to any search, investigation or evaluation of any
United States Patent and Trademark Office (“USPTO”) records conducted by or for
Opposer relating to MOSAEC.
Request No. 6
State all facts relating to how you promoted the MOSAEC in the United States
from your first use to the present, including identifying the specific marketing medium
utilized, the geographic area(s) in which such marketing, advertising or promoting
occurred, the time period(s) during which such marketing, advertising or promoting was
conducted, as well as the specific goods and/or services marketed, advertised or
promoted.
Request No. 7
Produce all documents relating to your selection and adoption of MOSAEC.
Request No. 8
Produce all documents relating to any other mark considered, used or intended to
be used by you in connection with the goods and/or services offered under MOSAEC in
This Request has 6 questions based on 405.03
This Request has 4 questions based on 405.03
This Request has 2 questions based on 405.03
This Request has 3 questions based on 405.03
RLP 139
4
the United States.
Request No. 9
Produce all documents relating to any applications for registration of MOSAEC
with the USPTO.
Request No. 10
Produce all documents relating to any application or registration of MOSAEC or
of any variation of, permutation of, or phrase containing MOSAEC with any computer
network domain name registering body.
Request No. 11
Produce all documents relating to your first use of MOSAEC in commerce in
connection with any goods and/or services.
Request No. 12
Produce all documents relating to your first use of MOSAEC in commerce
between your first use and the present.
Request No. 13
Produce all documents relating to your specimen submitted during the prosecution
This Request has 1 question based on 405.03
This Request has 6 questions based on 405.03
This Request has 1 question based on 405.03
This Request has 1 question based on 405.03
This Request has 1 question based on 405.03
RLP 140
5
of the application which matured into the pleaded Reg. No. 5284032.
Request No. 14
Produce all documents relating to your specimen submitted during the prosecution
of the application which matured into the pleaded Reg. No. 5409856.
Request No. 15
Produce all receipts and invoices relating to the sale of goods and/or services
under MOSAEC by you to any and all other persons between your first use of MOSAEC
and the present.
Request No. 16:
Produce all documents relating to your gross revenue earned from the sales of any
goods and/or services under MOSAEC between your first use of MOSAEC and the
present.
Request No. 17
Produce all documents concerning all advertising, marketing, and/or other efforts
by you to promote goods and/or services offered under MOSAEC between your first use
of MOSAEC and the present.
This Request has 4 questions based on 405.03
This Request has 1 question based on 405.03
This Request has 2 question based on 405.03
This Request has 6 question based on 405.03
RLP 141
6
Request No. 18
Produce all documents relating to use of MOSAEC in connection with “advisory
services in the field of development, education and training”.
Request No. 19
Produce all documents relating to Applicant within the last five (5) years.
Request No. 20
Produce documents sufficient to describe your document retention policies,
document destruction policies, document retention practices, and document destruction
practices within the last six (6) years.
Request No. 21
Produce all documents concerning your perceived market for goods and/or
services offered under MOSAEC from your first use of MOSAEC to the present.
Request No. 22
Produce all documents relating to your allegation in Paragraph 1 of your Notice of
Opposition.
Request No. 23
Produce all documents relating to your allegation in Paragraph 2 of your Notice of
Opposition.
This Request has 4 questions based on 405.03
This Request has 1 question based on 405.03
This Request has 1 question based on 405.03
This Request has 2 questions based on 405.03
This Request has 1 question based on 405.03
This Request has 2 questions based on 405.03
RLP 142
7
Request No. 24
Produce all documents relating to your allegation in Paragraph 3 of your Notice of
Opposition.
Request No. 25
Produce all documents relating to your allegation in Paragraph 4 of your Notice of
Opposition.
Request No. 26
Produce all documents relating to your allegation in Paragraph 5 of your Notice of
Opposition.
Request No. 27
Produce all documents relating to your allegation in Paragraph 7 of your Notice of
Opposition.
Request No. 28
Produce all documents relating to your allegation in the second Paragraph 8 of
your Notice of Opposition.
Request No. 29
Produce all documents relating to the following statement in Paragraph 10 of your
This Request has 1 question based on 405.03
This Request has 1 question based on 405.03
This Request has 1 question based on 405.03
This Request has 1 question based on 405.03
This Request has 1 question based on 405.03
This Request has 1 question based on 405.03
RLP 143
8
Notice of Opposition: “[T]o the extent that Applicant’s and Opposer’s Services do not
already overlap, Applicant’s Services are within Opposer’s zone of natural expansion.”
Request No. 30
Produce all documents relating to the following statement in Paragraph 13 of your Notice
of Opposition: “[U]pon information and belief, Applicant will offer Applicant’s Services
under Applicant’s Mark in connection with services for users that are within the same
group targeted by Opposer.”
Request No. 31
Produce all documents relating to the statement in Paragraph 13 of your Notice of
Opposition that you have cultivated a “diverse community of users” through your “long,
extensive, and continuous use of Opposer’s Mark.”
Request No. 32
Produce all DOCUMENTS which refer to or describe the types or categories of
customers, or intended customers, of the goods and/or services offered under MOSAEC.
Request No. 33
Produce documents sufficient to show all geographic territories within the United
States in which you have customers of the good and/or services offered under MOSAEC.
This Request has 2 questions based on 405.03
This Request has 1 question based on 405.03
This Request has 1 question based on 405.03
This Request has 4 questions based on 405.03
RLP 144
9
Request No. 34
Produce all documents which refer to the channels of trade in which you have sold or
distributed and/or intend to sell or distribute goods and/or services under MOSAEC in the
United States.
Request No. 35
Produce all documents relating to your advertising or promotional expenditures
for any goods and/or services offered or intended to be offered under the MOSAEC in the
United States.
Request No. 36
Produce all documents relating to the number of registered users of the
MOSAEC.COM web site during each of the past five (5) calendar years.
Request No. 37
Produce all documents relating to the number of visits to the MOSAEC.COM
web site during each of the last five (5) calendar years.
Request No. 38
Produce all documents relating to the number of visitors who logged into the
MOSAEC.COM web site during each of the past five (5) calendar years.
Request No. 39
This Request has 6 questions based on 405.03
This Request has 4 questions based on 405.03
This Request has 1 question based on 405.03
This Request has 1 question based on 405.03
This Request has 1 question based on 405.03
RLP 145
10
Produce all documents relating to the media in which you have advertised or
promoted or will advertise or promote your goods and/or services in the United States in
connection with MOSAEC, including but not limited to documents relating to television,
radio, internet, and printed media publications promoting MOSAEC.
Request No. 40
Produce all documents relating to any instance in which a person demonstrated or
suggested a belief that any of your goods and/or services marketed or distributed under
the MOSAEC were in any way associated with or related to Applicant or Applicant’s
identified services.
Request No. 41
Produce all documents relating to communications received by you, including
telephone calls, letters, emails, invoices and other forms of communication, that relate to
Applicant or Applicant’s identified services.
Request No. 42
Produce all agreements between you and any other persons relating to MOSAEC,
including, but not limited to, licenses, assignments, coexistence agreements, settlement
agreements, and consent agreements.
Request No. 43
This Request has 24 questions based on 405.03
This Request has 16 questions based on 405.03
This Request has 10 questions based on 405.03
This Request has 5 questions based on 405.03
RLP 146
11
Produce all documents relating to proposed agreements with third parties
regarding MOSAEC including, but not limited to proposed licenses, assignments,
coexistence agreements, settlement agreements, and consent agreements.
OFFIT KURMAN, P.A.
Dated: June 11, 2020 By__/s/ Laura J. Winston___________________
Jonathan R. Wachs
Laura J. Winston
Attorneys for Applicant
8171 Maple Lawn Boulevard, Suite 200
Maple Lawn, Maryland 20759
Email: jwachs@offitkurman.com;
lwinston@offitkurman.com;
trademarks@offitkurman.com
This Request has 5 questions based on 405.03
RLP 147
12
RLP 148
13
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true copy of the foregoing APPLICANT’S
FIRST SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS was served by e-
mail to Opposer at its email address of record.
DATED: June 11, 2020
By: /s/ Laura J. Winston
4834-5696-8383, v. 1
RLP 149
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