estta tracking number: estta1019563 12/03/2019

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

ESTTA Tracking number: ESTTA1019563

Filing date: 12/03/2019

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91242189

Party PlaintiffRolex Watch U.S.A., Inc.

CorrespondenceAddress

BETH FRENCHMANGIBNEY ANTHONY & FLAHERTY LLP665 FIFTH AVENUENEW YORK, NY 10022UNITED [email protected], [email protected], [email protected], [email protected], [email protected], [email protected]

Submission Stipulation of Facts

Filer's Name Adam Sgro

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

Signature /Adam Sgro/

Date 12/03/2019

Attachments 01260844.PDF(2845802 bytes )

http://estta.uspto.gov



In re the Matter of:

ROLEX WATCH U.S.A., INC.,

Opposition No. 91242189

Opposer,

Opposed Mark:

v. SOME WATCHES TELL TIME… SOME

TELL A STORY

MONTRES JAQUET DROZ SA,

Applicant.

_____________________________

STIPULATION FOR CERTAIN DOCUMENTS AND TESTIMONY

TO BE ADMITTED INTO EVIDENCE

Pursuant to 37 C.F.R. § 2.123, and Rule 705 of the Trademark Trial and Appeal Board Manual

of Procedure, Opposer, Rolex Watch U.S.A., Inc. (“Rolex”) and Applicant, Montres Jaquet Droz SA

(“Jaquet Droz”), by their attorneys, hereby jointly stipulate as follows:

A. The following documents are admitted into evidence:

1. Subpoena from Rolex to Scott King, Inc. d/b/a King Jewelers (“Scott King”), dated

July 8, 2019 (the “Scott King Subpoena”), and Notice of Subpoena dated July 8,

2019 to Jaquet Droz.

2. Email from counsel of Scott King, Inc. to Rolex’s counsel in response to the Scott

King Subpoena (Production Nos. KJ-NP001- KJ-NP005).

3. Documents produced by Scott King in response to the Scott King Subpoena

(Production Nos. KJ-NP006- KJ-NP 0011).

B. With respect to the above-referenced documents admitted into evidence, the parties

reserve their right to object to the competency, relevancy, materiality and/or scope of the documents.

C. The above-referenced docunnents do not constitute the entire trial record in this matter

and the parties may separately file notices of reliance relative to other evidence ar testimony depictions

should they deem necessary.

SO AGREED.

Dated: 1 ~ ~

Dated: I ~ ~9 ~~{

ROLEX WATCH U.S.A., iNC.

By: Beth French n (}afr~~~chr~~~~n cr,~ib~~ey.c.on~) Adam Sgro (as ~t•o "ez~ gi'bnc~~.c;~~~z)

Gibney, Anthony &Flaherty, LLP

665 Fifth Avenue

New York, NY 10022

T: (212) 688-5151 F: (212) 688-8315 Attorneys for Opposer

MONTRES JAQUET DROZ SA

Marie Anne Ivla~trovito

Abelman Frayne &Schwab

666 Third Avenue 10th Floor

New York, NY 10017-5621

rnamastrovito@lawabel. com

Phone: 2l 2-949-9022





Opposer,

v.


Applicant.


Opposed Mark: SOME WATCHES TELL

TIME… SOME TELL A STORY

OPPOSER’S NOTICE OF SUBPOENA FOR PRODUCTION OF DOCUMENTS

AND THINGS TO SCOTT KING, INC., D/B/A KING JEWELERS

To: Montres Jaquet Droz SA

c/o Marie Anne Mastrovito

Abelman Frayne & Schwab

[email protected]

Opposer hereby gives notice pursuant to Federal Rule of Civil Procedure 45(a)(4) to

Applicant it intends to serve the attached subpoena commanding the production of documents,

electronically stored information, or tangible things upon Scott King, Inc., d/b/a King Jewelers.

Dated: July 8, 2019 ROLEX WATCH U.S.A., INC.

By: /Beth Frenchman/_________

Beth Frenchman ([email protected])

Adam Sgro ([email protected])

Gibney, Anthony & Flaherty, LLP

665 Fifth Avenue

New York, NY 10022

T: (212) 688-5151

F: (212) 688-8315

mailto:[email protected]



CERTIFICATE OF SERVICE

I am a citizen of the United States of America and I am employed in New York, New

York. I am over the age of 18 and not a party to the within action. My business address is 665

Fifth Avenue, New York, New York.

I served the attached: OPPOSER’S NOTICE OF SUBPOENA FOR PRODUCTION

OF DOCUMENTS AND THINGS TO SCOTT KING, INC., D/B/A KING JEWELERS on

the parties or their counsel listed below, on July 8, 2019 via first class mail and electronic mail as

follows:

Montres Jaquet Droz SA

c/o Marie Anne Mastrovito

Abelman Frayne & Schwab

[email protected]

I declare under penalty of perjury under the laws of the United States of America that the

above is true and correct.

Executed on July 8, 2019, in New York, New York.

____/Beth Frenchman/___________________

Name: Beth Frenchman


1

EXHIBIT A

DEFINITIONS

1. The terms “King Jewelers,” “You,” or “Your” shall mean and include Scott King,

Inc., d/b/a King Jewelers, a Florida corporation with an address of 18265 Biscayne Blvd.

Aventura, FL 33160, and any present or former officer, director, member, employee, servant,

agent, attorney or other representative acting on the behalf of King Jewelers and shall include any

parent, subsidiary, division, predecessor, successor or affiliate

2. The term “STORY Mark” shall mean and incorporate Applicant’s federal

trademark application to register the words “SOME WATCHES TELL TIME…SOME TELL A

STORY.”

3. The term “communication” means the transmittal of information (in the form of

facts, ideas, inquiries or otherwise).

4. The term “document” is defined to be synonymous in meaning and equal in scope

to the usage of the term “documents or electronically stored information” in Fed. R. Civ. P.

34(a)(1)(A). A draft or non-identical copy is a separate document within the meaning of this term.

5. When referring to a person, “to identify” means to give, to the extent known, the

person’s full name, present or last known address, and when referring to a natural person,

additionally, the present or last known place of employment. Once a person has been identified

in accordance with this subparagraph, only the name of that person need be listed in response to

subsequent discovery requesting the identification of that person.

6. When referring to documents, “to identify” means to give, to the extent known, the

(i) type of document; (ii) general subject matter; (iii) date of the document; and (iv) author(s),

addressee(s) and recipient(s). In the alternative, the responding party may produce the documents,

together with identifying information sufficient to satisfy Fed. R. Civ. P. 33(d).

7. The term “concerning” means relating to, referring to, describing, evidencing or

constituting.

2

8. The terms “all,” “any,” and “each” shall each be construed as encompassing any

and all.

9. The connectives “and” and “or” shall be construed either disjunctively or

conjunctively as necessary to bring within the scope of the discovery request all responses that

might otherwise be construed to be outside of its scope.

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

11. The term the BILLBOARD WITH THE STORY MARK, means the King Jewelers

billboard in the following image:

3

INSTRUCTIONS

1. If any document is withheld in whole or in part, for any reason including, without

limitation, a claim of privilege or other protection from disclosure such as the work product

doctrine or other business confidentiality or trade secret protection, set forth separately with

respect to each document:

a. the basis on which the privilege or protection is claimed;

b. the type of document;

c. the general subject matter of the document;

d. the date of the document;

e. the author of the document;

f. the addressees of the document and any other recipients; and

g. where not apparent, the relationship of the author, addressees, and recipients to

each other.

2. To the extent you assert that a document contains information that should be

protected from disclosure (based on the attorney-client privilege, work product doctrine, or

another protection) and non-privileged information, the non-privileged portions of the document

must be produced. For each such document, indicate the portion of the document withheld by

stamping the words "MATERIAL REDACTED" on the document in an appropriate location that

does not obscure the remaining text.

3. Your responses to the following Requests for Production are to be promptly

supplemented to include subsequently acquired information in accordance with the requirements

of Fed. R. Civ. P. 26(e).

4. All documents are to be produced as they are kept in the usual course of business

with any identifying labels, file markings, or similar identifying features, or shall be organized

and labelled to correspond to the categories requested herein. If there are no documents in

4

response to a particular request or if you withhold any responsive documents or categories of

documents based on any objections, you shall state so in writing.

5. Electronically stored information (ESI) must be produced in its original native

format with its accompanying metadata. For example:

a. documents created using Microsoft Word must be produced as .doc files; and

b. e-mails must be produced in a form that readily supports import into standard

email client programs (e.g., .msg or .pst files).

6. These requests call for the production of all responsive documents in your

possession, custody, or control, or in the possession, custody, or control of your employees,

predecessors, successors, parents, subsidiaries, divisions, affiliates, partners, joint venturers,

brokers, accountants, financial advisors, representatives, and agents or other persons acting on

your behalf, without regard to the physical location of such documents.

7. In responding to these requests, include documents obtained on your behalf by

your counsel, employees, agents, or any other persons acting on your behalf. If your response is

that the documents are not within your possession or custody, describe in detail the unsuccessful

efforts you made to locate each such document. If your response is that documents are not under

your control, identify who has the control and the location of the documents.

8. If any document was, but no longer is, in your possession, subject to your control

or in existence, include a statement:

(a) identifying the document;

(b) describing where the document is now;

(c) identifying who has control of the document;

(d) describing how the document became lost or destroyed or was transferred; and

(e) identifying each of those persons responsible for or having knowledge of the loss,

destruction, or transfer of this document from your possession, custody, or control.

5

9. Each request contemplates production of all documents in their entirety. If a

portion of a document is responsive to one or more requests, the document shall be produced in

its entirety.

10. Unless otherwise stated herein, all documents requested are for the period

commencing December 1, 2016 up to and including the end of this litigation.

11. Unless otherwise stated herein, these requests apply to activities in or in

connection with the United States.

12. For the convenience of the Court and the parties, each request should be quoted in

full immediately preceding the response.

13. These requests are continuing, and your response to these requests must be

promptly supplemented when appropriate or necessary in accordance with Federal Rule of Civil

Procedure 26(e).

6

REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS

REQUEST FOR PRODUCTION NO. 1

Documents and things sufficient to identify the location/address of the BILLBOARD

WITH THE STORY MARK.


Documents and things sufficient to identify the owner of the billboard on which the

BILLBOARD WITH THE STORY MARK appears.


Documents and things sufficient to identify the installation date for the BILLBOARD

WITH THE STORY MARK.


Documents and things sufficient to identify Your receipt of the ad copy/artwork/image

(the “Ad Copy”) advertised on the BILLBOARD WITH THE STORY MARK, including but not

limited to the earliest date you received the Ad Copy and source of the Ad Copy.


Documents and things sufficient to identify the time period during which the Ad Copy on

the BILLBOARD WITH THE STORY MARK ran or will run, including the date BILLBOARD

WITH THE STORY MARK first appeared with the Ad Copy and the last date that it will appear

or has appeared.


Documents and things sufficient to identify the entity that applied and/or mounted the Ad

Copy on the billboard on which the BILLBOARD WITH THE STORY MARK appears.

7

In lieu of appearing on July 31, 2019, all documents may be produced by mail/courrier to

Elizabeth Honkonen at Kenny Nachwalter, P.A., 1441 Brickell Avenue, Suite 1100, Miami,

Florida 33131, together with an original Declaration of Custodian of Records or via email to

[email protected], [email protected], and [email protected]. Please contact Beth

Frenchman or Adam Sgro at (212) 705-9881 upon receipt of this Subpoena to confirm whether

you will be appearing or producing documents in lieu of appearing.




1





Opposer,

v.


Applicant.


Opposed Mark: SOME WATCHES TELL

TIME… SOME TELL A STORY

DECLARATION OF RECORDS CUSTODIAN CERTIFYING SUBPOENAED

RECORDS PURSUANT TO FEDERAL RULES OF EVIDENCE 803(6) AND 902(11)

______________________________________________, hereby declares as follows:

1. I, ________________________________, make this declaration based on

personal knowledge.

I am a duly authorized custodian of the records for Scott King, Inc., d/b/a King Jewelers

(“King Jewelers”) and in such capacity, I have authority to certify the documents referenced in

the attached Exhibit 1, bearing production numbers

______________________________________________.

2. The documents referenced in Exhibit 1 are true and correct copies of all original

records maintained by King Jewelers that were provided in response to a subpoena issued by

Rolex Watch USA Inc., (“Rolex”) in connection with the above-captioned matter. These

documents were produced to Rolex on or about ________________________________.

2

3. The documents referenced in the attached Exhibit 1 were kept in the course of

the regularly conducted business activity of King Jewelers and were prepared as a regular

practice of that business activity.

4. The documents referenced in the attached Exhibit 1 were prepared at or near the

time of the occurrence of the matters set forth therein, by personnel of King Jewelers with

knowledge of those matters, or by personnel of King Jewelers from information transmitted by

individuals with knowledge of those matters.

Pursuant to 28 U.S.C. § 1746, I certify under the penalty of perjury that the foregoing is true and

correct.

Executed on , 20

Name:

Title:

Scott King, Inc., d/b/a King Jewelers

1

Sgro, Adam

From: DAVID MOGUL <[email protected]>

Sent: Wednesday, July 31, 2019 6:57 PM

To: Sgro, Adam

Cc: [email protected]; Frenchman-Gellman, Beth

Subject: Fwd: King Jeweler s- Billboard Co-op Credit

Attachments: KingProdRolexDroz91242189.pdf; KingBoardProdRFrenewal 4-27-18.pdf; Jaquet Droz -

Outfront Media.pdf; Jaquet Droz - Co-op Invoice.pdf

Dear Adam,

In accordance with our several telephone communications, this is to confirm that I am counsel to Scott King,

Inc., a Florida corporation.

Thank you for extending King’s time to respond from today, 10:00 A.M. through the remainder of the day, July

31, 2019,

King’s Response is attached hereto, along with the forwarded E-Mail in original format received with

attachments and duly referenced in the Response document of even date.

If you scroll down to the bottom of the forwarded email herewith, you will see the attachments. They were part

of the email I received, apparently already opened. When I went

to forward the email to you the three items appeared as attachments to that email. Had I known that beforehand

I would have had them itemized in the Response, as attachments.

Thank you for your cooperation in this matter.

Best Regards,

David

David Mogul, Esq.* Law Offices of David Mogul One Boca Place - 2255 Glades Road, Suite 324A

Boca Raton, Florida 33431

(by appointment only) tel.: (561) 706-7467

fax: (561) 206-0527

[email protected] In accordance with certain US Treasury Regulations any federal tax advice contained in this communication is not intended for and shall not be used for the purpose of avoiding tax-related penalties. This communication may contain information that is legally privileged, confidential or exempt from disclosure. If you are not the intended recipient, please note that any dissemination, distribution, or copying of this communication is strictly prohibited. Anyone who receives this message in error should notify the sender immediately by telephone or by return e-mail and delete the message from their computer.

KJ-NP001

2

*AV rated attorney admitted to the Bar in New York and Florida and various Federal Courts. Degrees include Building Construction Management from New York University.

Begin forwarded message:

From: Florence <[email protected]>

Subject: FW: King Jeweler s- Billboard Co-op Credit Date: July 22, 2019 at 4:51:16 PM EDT

To: Maxine King <[email protected]>, DAVID MOGUL <[email protected]>

Dear both,

Here bellow is the only email related to the March 2018 Billboard for Jacquet Droz. It was printed by Outfront.

Thank you.

Florence Delorme

Marketing Director

18265 Biscayne Blvd,

Aventura, Florida 33160

Phone +(1) 305-935-4900

Fax +(1) 305-932-9282

http://www.Kings1912.com

Connect with us:

KingJewelersMiami

KingsTimepieces

---------------------------------------------------------

This communication was sent from King Jewelers and contains information that may be confidential or

KJ-NP002

3

privileged. The information is solely intended for the use of the addressee only. If you have received this

communication in error, please immediately notify the sender by telephone or by electronic mail. Any

disclosure, copy, distribution, or use of the contents by anyone other than the intended addressee of

this communication is prohibited.

* Please consider the environment before printing this e-mail.

From: Florence <[email protected]>

Date: Friday, July 12, 2019 at 3:04 PM

To: Jonathan King <[email protected]>, Maxine King <[email protected]>

Subject: FW: King Jeweler s- Billboard Co-op Credit

To follow up on Jacquet Droz billboard for March 2018 this is the only communication to the brand from

Keven. I couldn’t find 1 email from J.Droz to Keven with the artwork…

This year nothing has been done yet

Let me know if you need anything else.

Thanks

From: Keven Pimentel <[email protected]>

Date: Friday, July 12, 2019 at 2:51 PM

To: Florence <[email protected]>

Subject: FW: King Jeweler s- Billboard Co-op Credit

Keven Pimentel



Phone +(1) 305-935-4900

Fax +(1) 305-932-9282

http://www.Kings1912.com

Connect with us:

KingJewelersMiami

KingsTimepieces

---------------------------------------------------------

This communication was sent from King Jewelers and contains information that may be confidential or

privileged. The information is solely intended for the use of the addressee only. If you have received this

communication in error, please immediately notify the sender by telephone or by electronic mail. Any

KJ-NP003

4

disclosure, copy, distribution, or use of the contents by anyone other than the intended addressee of

this communication is prohibited.

* Please consider the environment before printing this e-mail.

From: Keven Pimentel <[email protected]>

Sent: Thursday, September 13, 2018 4:18 PM

To: Gasanova, Elvira <[email protected]>

Cc: Eileen <[email protected]>

Subject: King Jeweler s- Billboard Co-op Credit

Hello Elvira,

We haven’t received the co-op credit for the Jaquet Droz billboard that we ran at the end of March –

April of this year.

I’ve attached the invoice and picture of the billboard as a reference.

Please let me know when we can expect a credit for the board.

Thank you!

Keven Pimentel ———————————————————————————— [email protected] Phone +(1) 305-935-4900 Fax +(1) 305-932-9282 http://www.Kings1912.com

King JewelersKing JewelersKing JewelersKing Jewelers | Miami/Aventura.



USA

King JewelersKing JewelersKing JewelersKing Jewelers | Nashville/Green Hills.

4121 Hillsboro Road,

Nashville, Tennesee 37215 USA

--------------------------------------------------------- This communication was sent from King Jewelers and contains information that may be confidential or privileged. The information is solely intended for the use of the addressee only. If you have received this communication in error, please immediately notify the sender by telephone or by electronic mail. Any disclosure, copy, distribution, or use of the contents by anyone other than the intended addressee of this communication is prohibited. * Please consider the environment before printing this e-mail.

KJ-NP004

5

KJ-NP005

King Jewelers

18265 Biscayne Blvd.

Aventura, FL 33160

Phone: 3059354900

Fax: 3059329282

Email: [email protected]

Website: www.kings1912.com

Invoice

Bill To:

Jaquet Droz

Attn: Elvira Gasanova

1200 Harbor Boulevard

Weehawken, NJ 07086

Jaquet Droz – King Jewelers – Coop

Invoice #: 1120

Date Terms

09/13/2018 Due Upon Receipt / Paid to : King Jewelers

King Jewelers

Quantity Item Description Unit Price Total

1 1 Outfront Media – March/April 2018 $15,000.00 $7,500.00

Subtotal $7,500.00

Balance Due $7,500.00

KJ-NP006

INVOICEINVOICEINVOICEInvoicInvoice No.e No.::

Date:Date:

CONTRACONTRACTCTNUMBERNUMBER

CUSTOMCUSTOMER P.OER P.O././CONTRACONTRACT NUCT NUMBERMBER

ACCOUACCOUNTNTNUMBENUMBERR

Term:Term: Due UDue Upon Rpon Receipeceiptt

ADVERTADVERTISER:ISER:

BILLINBILLING PERG PERIODIOD DESCRIDESCRIPTIONPTION AMOUNTAMOUNT

TOTAL AMOUNT DUETOTAL AMOUNT DUE::

PLEASE REFER TOPLEASE REFER TO INVOICE NUMBERINVOICE NUMBER IN ANY CORRESPOIN ANY CORRESPONDENCE AND WHENDENCE AND WHEN REMITTINGN REMITTING

PleasePlease DetacDetach andh and Invoice No.:Invoice No.: Account No.:Account No.:

SubmitSubmit withwith PaymePaymentntDate:Date: Contract No.:Contract No.:

Remit Payment toRemit Payment to::

Total Amount DueTotal Amount Due::

04334755

3/01/18

185 US Highway 46, Fairfield, NJ 07004 Account Executive: Scherfer, Neil A.

(973) 575-6900

2470915 0108897

KING JEWELERS

18265 BISCAYNE BLVD KING JEWELERS

AVENTURA FL 33160

3/23/18 To 4/30/18 MIAMI - BILLBOARDS - BULLETIN 15,000.00

Unit# 049400BO US 1 440.00 ft S/O Miami Gardens Dr W/S F/S

15,000.00

Page: 1

04334755 0108897

3/01/18 2470915

15,000.00

KING JEWELERS

18265 BISCAYNE BLVD

AVENTURA FL 33160

P.O. Box 33074

Newark, NJ 07188-0074

ManageManage youryour accouaccount atnt at myoutmyoutfrontfrontmediamedia.com.comKJ-NP007

KJ-NP008

KJ-NP009

KJ-NP010

KJ-NP011