Coach, Inc. et al v. Di Da Import and Export Inc.

MEMORANDUM

N.D. Ill.January 5, 2015

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION COACH, INC. and COACH SERVICES, INC., Plaintiffs, v. DI DA IMPORT AND EXPORT INC. d/b/a DI DA NEW YORK, Defendant. _____________________________________ ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Civil Action No.: 13-cv-7165 Judge Der-Yeghiayan DEFENDANT’S OPPOSITION TO PLAINTIFFS’ MOTION FOR A RESTRAINING ORDER; MEMORANDUM OF LAW; DECLARATIONS OF AMY SHI AND CAROLYN SHIELDS Date: January 6, 2015 Time: 9:00 a.m. Place: Courtroom 1903 Defendant DI DA Import and Export Inc. d/b/a DI DA New York (“Defendant” or “DI DA”) opposes plaintiffs’ motion for a restraining order on the following grounds: 1. This Court lacks personal jurisdiction over the Defendant, a defense which Defendant has been required to defer until plaintiffs had the opportunity to take jurisdictional discovery through depositions of Defendant’s designees and of Defendant’s Illinois customers, which discovery concluded on or about November 17, 2014. 2. Plaintiffs have not shown the following: (a) that no adequate remedy at law exists; or (b) that plaintiffs will suffer irreparable harm if the injunction is not granted; or (c) that plaintiffs’ case has some likelihood of success on the merits; Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 1 of 190 PageID #:389 3. Plaintiffs’ motion is based on repeated misstatements of fact and misrepresentations of deposition testimony and other discovery; MEMORANDUM OF LAW I. THIS COURT LACKS PERSONAL JURISDICTION OVER THE DEFENDANT Defendant’s Answer contains an affirmative defense that this Court lacks personal jurisdiction over the Defendant. Defendant was required to defer moving to dismiss on this ground because plaintiffs were entitled to an opportunity to discover information about the Illinois contacts of Defendant through depositions of Defendant’s designees and depositions of Defendant’s nonparty customers located in Illinois. Plaintiffs have now had this opportunity, and Defendant will cross-move to dismiss on this ground in connection with plaintiffs’ prospective motion for leave the complaint. A. There is no general personal jurisdiction. The Shi Declaration, para. 2, shows there is no general personal jurisdiction over the Defendant: “[T]he inquiry under Goodyear is . . . ‘whether that corporation’s affiliations with the State are so ‘continuous and systematic’ as to render [it] essentially at home in the forum State.” Daimler AG v. Bauman, 134 S. Ct. 746, 761 (2014). See also Goodyear Dunlop Tires Operations, S.A. v. Brown, 131 S. Ct. 2846, 2851 (2011). In determining whether general jurisdiction exists, courts examine the following factors: (1) whether defendants maintain offices or employees in Illinois; (2) whether defendants send agents into Illinois to conduct business; (3) whether defendants have designated an agent for service of process in Illinois; (4) whether defendants advertise or solicit business in Illinois; and (5) the extent to which defendants conduct business in Illinois. Richter v. Instar Enters. Int'l, Inc., 594 F. Supp. 2d 1000, 1006 (N.D. Ill. 2009). The Shi Declaration (para. 2) shows that there is no general personal jurisdiction based on the foregoing factors. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 2 of 190 PageID #:390 B. There is no specific personal jurisdiction. “Specific jurisdiction, on the other hand, depends on an “affiliatio[n] between the forum and the underlying controversy,” principally, activity or an occurrence that takes place in the forum State and is therefore subject to the State's regulation. . . . In contrast to general, all- purpose jurisdiction, specific jurisdiction is confined to adjudication of “issues deriving from, or connected with, the very controversy that establishes jurisdiction.” Goodyear Dunlop Tires Operations, S.A. v. Brown, 131 S. Ct. 2846, 2851 (2011). C. Defendant’s website does not provide specific personal jurisdiction. The Shi Declaration and exhibits show that DI DA’s website does not create personal jurisdiction. The website is passive; it displays information about DI DA’s products; no goods can be ordered over the website; no contracts can be entered into over the website; business cannot be not transacted over the website. The website does have an email function, but goods cannot be ordered through this email function. The Court of Appeals for the Seventh Circuit has held: We need not decide in this case what level of "interactivity" is sufficient to establish personal jurisdiction based on the operation of an interactive website. Rather, it is enough to say that this logic certainly does not extend to the operation of a "passive" website, such as the one that AC Hydraulic maintains, which merely makes available information about the company and its products. The exercise of personal jurisdiction based on the maintenance of a passive website is impermissible because the defendant is not directing its business activities toward consumers in the forum state in particular. . . . [W]e now join the several circuits that have addressed and rejected it . . . , and hold that a defendant's maintenance of a passive website does not support the exercise of personal jurisdiction over that defendant in a particular forum just because the website can be accessed there. Thus, the district court in this case concluded correctly that AC Hydraulic's maintenance of a passive website did not contribute to Jennings's effort to establish specific jurisdiction in Indiana. Jennings v. AC Hydraulic A/S, 383 F.3d 546, 549-50 (7th Cir. 2004). Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 3 of 190 PageID #:391 DI DA did not have the additional voluntary contacts with the state of Illinois that, when added to a website, would create specific personal jurisdiction: We note the legitimate concern that "[p]remising personal jurisdiction on the maintenance of a website, without requiring some level of 'interactivity' between the defendant and consumers in the forum state, would create almost universal personal jurisdiction because of the virtually unlimited accessibility of websites across the country." Jennings, 383 F.3d at 550. Courts should be careful in resolving questions about personal jurisdiction involving online contacts to ensure that a defendant is not haled into court simply because the defendant owns or operates a website that is accessible in the forum state, even if that site is "interactive." Here, we affirm the district court's conclusion that Hemi is subject to personal jurisdiction in Illinois, not merely because it operated several "interactive" websites, but because Hemi had sufficient voluntary contacts with the state of Illinois. Illinois v. Hemi Grp. LLC, 622 F.3d 754, 760 (7th Cir. 2010). Nor did DI DA target the Illinois market: "Courts should be careful in resolving questions about personal jurisdiction involving online contacts to ensure that a defendant is not haled into court simply because the defendant owns or operates a website that is accessible in the forum state, even if that site is 'interactive.'" Illinois v. Hemi Group, LLC, 622 F.3d 754, 760 (7th Cir. 2010). Beyond simply operating an interactive website that is accessible from the forum state, a defendant must in some way target the forum state's market. . . . If the defendant merely operates a website, even a "highly interactive" website, that is accessible from, but does not target, the forum state, then the defendant may not be haled into court in that state without offending the Constitution. be2 LLC v. Ivanov, 642 F.3d 555, 559 (7th Cir. 2011). In short, a website, even an interactive website, is not enough: The interactivity of a website is also a poor proxy for adequate in-state contacts. We have warned that "[c]ourts should be careful in resolving questions about personal jurisdiction involving online contacts to ensure that a defendant is not haled into court simply because the defendant owns or operates a website that is accessible in the forum state, even if that site is 'interactive.'" be2 LLC, 642 F.3d at 558 (citing Illinois v. Hemi Grp., LLC, 622 F.3d 754, 760 (7th Cir. 2010)). This makes sense; the operation of an interactive website does not show that the defendant has formed a contact with the forum state. And, without the defendant's creating a sufficient connection (or "minimum contacts") with the forum state itself, personal jurisdiction is not proper. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 4 of 190 PageID #:392 Even if we assume that interactivity matters at least in an evidentiary way, it is unclear how any interactivity of the website here affected the alleged trademark infringement. Real Action posted a notice (by itself not interactive) on its website; that notice allegedly infringed Advanced Tactical's trademark. But whether the notice amounted to infringement has nothing to do with interactivity. We need not belabor the point: if having an interactive website were enough in situations like this one, there is no limiting principle—a plaintiff could sue everywhere. Such a result would violate the principles on which Walden and Daimler rest. Having an "interactive website" (which hardly rules out anything in 2014) should not open a defendant up to personal jurisdiction in every spot on the planet where that interactive website is accessible. To hold otherwise would offend "traditional notions of fair play and substantial justice." Int'l Shoe, 326 U.S. at 316. Advanced Tactical Ordnance Sys., LLC v. Real Action Paintball, Inc., 751 F.3d 796, 803 (7th Cir. 2014). Even if the email function of the website were considered, it is unilateral—it is a one-way communication from the user to DI DA, with DI DA replying to the user’s email address, not through the website. Such unilateral activity of the user does not and should not create personal jurisdiction: “[T]he unilateral activity of another party cannot establish defendant's contact with the forum state. Burger King, 471 U.S. at 475. As a result, the actions of plaintiff's husband in accessing defendant's website cannot provide the sole foundation of defendant's minimum contacts with Illinois. If personal jurisdiction over defendant could be established simply by plaintiff accessing the page of the website that offers to sell plaintiff's artwork, plaintiff could establish personal jurisdiction over defendant in any state, and this would defeat the nature of personal jurisdiction altogether. Richter v. Instar Enters. Int'l, Inc., 594 F. Supp. 2d 1000, 1014 (N.D. Ill. 2009) (“this court cannot find that by offering the artwork for sale on the internet, without more, demonstrates that defendant purposefully directed its activities concerning plaintiff's artwork toward customers in Illinois, as required by Jennings”). “A passive Web site that does little more than make information available to those who are interested in it is not grounds for the exercise of personal jurisdiction”. Euromarket Designs, Inc. v. Crate & Barrel Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 5 of 190 PageID #:393 Ltd., 96 F. Supp. 2d 824, 838 (N.D. Ill. 2000). This is not a situation where “the defendant enters into contracts with residents of a foreign jurisdiction . . . over the Internet . . . .” Euromarket Designs, Inc. v. Crate & Barrel Ltd., 96 F. Supp. 2d 824, 837 (N.D. Ill. 2000). II. PLAINTIFFS HAVE NOT SHOWN AN ENTITLEMENT TO A RESTRAINING ORDER A. The marks at issue in this case. 1. Defendant’s allegedly infringing goods In response to Defendant’s Interrogatory Number 1 asking plaintiffs to “[i]dentify by model number, description or photograph all goods offered for sale, sold, or distributed by Defendant which bear marks that you claim infringe the trademark rights of Plaintiffs,” plaintiffs identified certain models of Defendant’s handbags. (Plaintiffs’ response to Defendant’s Interrogatory Number 1, Exhibit A, Shields Declaration.) These models involve two marks, marks that were the subject of two (2) trademark applications by Defendant, both of which were opposed by plaintiffs in the USPTO and ultimately abandoned without the knowledge of Defendant: USPTO serial numbers 85316065 (“the 2 D mark”) and 85267743 (“the 6 D mark”). (Shields Declaration, Exhibit C, first two applications.) Defendant has a registered mark for the 1D mark, USPTO Registration Number 4438198. (Shields Declaration, Exhibit D.) Defendant’s designee Amy Shi testified that sales of models bearing the 2D mark or the 6D mark ceased in 2012, almost 3 years ago. Plaintiffs’ repeated use of the present tense in connection with the use of these marks is mistaken and misleading. Because there is no threat to use these marks in the future, there will be no need for an injunction “to prevent” the use of these marks. In addition, plaintiffs opposed Defendant’s trademark application serial number 85267696 (“D&D” or “D ampersand D” mark) (Shields Declaration, Exhibit B, third application). The latter application, for the “D&D” mark, was filed on an intent to use basis and Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 6 of 190 PageID #:394 was never used. (Id. and Shi Declaration, para. 12.) Thus, the D&D mark was never used, never infringed any right of plaintiffs, therefore provides no basis for injunctive relief. Defendant has a USPTO registered trademark for the “1D mark”, registration number 4438198, registered on November 26, 2013 with a first use on April 19, 2011. (Shields Declaration, Exhibit D.) This 1D mark appears in the 2D mark and the 6D mark. 2. Plaintiffs’ marks allegedly infringed In response to Defendant’s Interrogatory Number 2, asking plaintiffs to “[i]dentify by United States Patent and Trademark Office registration number all marks owned by Plaintiffs or either Plaintiff which Plaintiffs claim have been infringed by Defendant,” plaintiffs identified the following marks: 2,626,565 2,822,318 2,832,589 2,592,963 2,822,629 4,365,898 3,396,554 3,695,290 (Plaintiffs’ Response to Defendant’s Interrogatory No. 2, Shields Declaration, Exhibit A.) These marks can be seen to be the same mark (C’s) but in connection with different goods. (Shields Declaration, Exhibit C.) These allegedly infringed Coach marks do not include the marks used in connection with hang tags, Coach trademark registration numbers 2,162,303 and 2,088,707 (Complaint, para. 11.) Even if Coach had identified its hang tag marks as allegedly infringed, DI DA’s hang tags were not similar to Coach’s hang tags. (Shi Declaration, para. 13.) Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 7 of 190 PageID #:395 B. There is no equitable claim on which to base a restraining order. As shown herein, there is no basis for a restraining order based on any threat to an injunctive remedy to which plaintiffs are entitled, both because plaintiffs are not entitled to an injunctive remedy based on the proffered ground, the recovery of Defendant’s profits, and because, even if they were, there is no imminent threat that DI DA’s profits will be dissipated. The Supreme Court of the United States characterizes the recovery of a defendant’s profits under the Lanham Act as not an equitable remedy but as legal compensatory damages: “[T]he Lanham Act, . . . . specifically ‘provided not only for injunctive relief, but also for compensatory recovery measured by the profits that accrued to the defendant by virtue of his infringement, the costs of the action, and damages which may be trebled . . . .” Hall v. Cole, 412 U.S. 1, 10 (1973). See also Calvin Klein Jeanswear Co. v. Tunnel Trading, 2001 U.S. Dist. LEXIS 18738, 34, 2001 WL 1456577 (S.D.N.Y. 2001) (“In addition to injunctive relief, the Complaint demands from Defendants an accounting for profits”, emphasis added); Grupo Mexicano De Desarrollo v. Alliance Bond Fund, 527 U.S. 308, 333, 119 S. Ct. 1961, 1975 (1999) (“Because such a remedy was historically unavailable from a court of equity, we hold that the District Court had no authority to issue a preliminary injunction preventing petitioners from disposing of their assets pending adjudication of respondents' contract claim for money damages”). Plaintiffs seek, prior to any determination of the merits, an equitable remedy to obtain the equivalent of a prejudgment writ of attachment, which they might have sought if they had brought this action in the right jurisdiction, New York, where there would be personal jurisdiction over DI DA and where DI DA’s assets, however di minimis, are located. Even if a restraining order may be predicated on the recovery of defendant’s profits, it is not likely that plaintiffs would choose defendant’s profits over statutory damages. DI DA is a Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 8 of 190 PageID #:396 small family business. There is one shareholder. The primary employees are four family members: brother and sister and their son and daughter respectively. Defendant’s taxable income was $4351 in 2013; $3675 in 2012; $3262 in 2011. (Shi Declaration, para. 17.) C. Plaintiffs have not shown that no adequate remedy at law exists and that they are entitled to injunctive relief. The Lanham Act provides: “In an action brought under this subsection, the owner of the famous mark shall be entitled to injunctive relief as set forth in section 34 [1116].” 15 USCS § 1125(c)(5). Section 1116 provides: “The several courts vested with jurisdiction of civil actions arising under this Act shall have power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section 43 [15 USCS § 1125]. (Emphasis added.) There is no need for an injunction under this section because there is no need “to prevent” any conduct of the Defendant. The conduct of which plaintiffs complain (and which Defendant denies is an infringement of any of plaintiffs’ rights) ceased before plaintiffs’ February 2013 cease and desist letter with respect to hangtags. (Shi Declaration, paras. 1, 2.) DI DA’s sale of goods bearing marks which plaintiffs challenge ceased in 2012 (Shi Declaration, para. 10); and photographs of goods with the challenged marks were taken off DI DA’s website in 2013. (Id.) There is no continuing use or threatened use by DI DA of the challenged marks which needs to be prevented through an injunction. Thus, this case involves two marks, neither of which is in current use (and which Defendant denies were infringing uses) and a third mark which was never used. // // Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 9 of 190 PageID #:397 D. Plaintiffs have not shown that they will suffer irreparable harm if an injunction is not granted. For the same reasons discussed above, the absence of any present or future threat to the rights of plaintiffs, plaintiffs have not shown that they will suffer irreparable harm. E. Plaintiffs have not shown that their case has a likelihood of success on the merits. Plaintiffs challenge three of Defendant’s marks. One of these was never used. The other two are based on Defendant’s registered 1D mark and is not confusingly similar to plaintiffs’ marks. III. PLAINTIFFS’ MISSTATEMENTS AND MISREPRESENTATIONS Plaintiffs’ misstatements appear in single-spaced, quoted text in this section, followed by Defendant’s comments in double-spaced text: “Defendant’s products are offered through a fully- interactive commercial Internet website hosted at http://www.didanewyork.com and through at least one third-party vendor store located in Chicago, Illinois. (Plaintiffs’ Motion, pages 1-2.) See part I above and the Shi Declaration, para. 5. “Defendant has an extended history of this willful conduct.” (Plaintiff’s Motion, page 2.) Plaintiffs failed to disclose the entire USPTO and therefore have misrepresented the willfulness issue. The USPTO file shows that the USPTO provided notice by mail to Defendant of plaintiffs’ opposition to three of Defendant’s trademark applications and that that letter was returned to the USPTO “addressee unknown. (Shields Declaration, Exhibit E.) Sam Zhu testified that he accessed DI DA’s attorney’s website to check the status of DI DA’s trademark application, but that the attorney’s website did not show that any oppositions had been filed. (Shields Declaration, Exhibit F.) Long Zhu testified that the designer of the logos was the design group of the factory in China. The issue of willfulness is an issue for the jury. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 10 of 190 PageID #:398 “Coach delivered a letter notifying Defendant of its infringing activity and violation of both federal and state laws, and demanding that all sales of products infringing on Coach’s trademarks immediately cease and desist.” (Plaintiffs’ Motion, page 2.) This is incomplete and misleading. Plaintiffs’ Exhibit 2 shows that this Cease and Desist letter relates to hang tags, USPTO registration numbers 2,162,303 and 2,088,707, not any other marks. As can be seen from plaintiffs’ responses to Defendant’s Interrogatory Number 2 (Shields Declaration, Exhibit A), this case does not involve an infringement of plaintiffs’ rights in Coach hang tags. Even if it did, DI DA had ceased using this hang tag by the date of the letter, presumptively February of 2013 (Shi Declaration paras. 8, 13 ). Whether DI DA’s goods bore marks that were confusingly similar to Coach’s marks or were studied imitations of Coach’s marks is an ultimate issue in this case and an issue for the jury. “Defendant’s counsel has represented to Coach’s counsel that Defendant may very well run off to China in an attempt to avoid litigation and potential liability.” (Plaintiffs’ Motion, page 3.) Defendant’s counsel did not say this but said the opposite—Defendant would not run off to China to avoid litigation and potential liability. (Shields Declaration, para. 8.) It was plaintiffs’ attorney who said this. DI DA is a family business with four primary employees— shareholder Sam Zhu, his father Long Zhu, his aunt Hong Zhu, and his cousin Amy Shi. Sam, Hong, and Amy are U.S. citizens and have no interest in leaving the U.S. Long Zhu is a permanent resident of the U.S. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 11 of 190 PageID #:399 “Further, Defendant apparently routinely wires the company’s income back to China, where its president “will be the one who decide[s] this money goes to the freight company or this money goes to the factory.” Shi Dep. at 129:6-14; 134:7-135:14.” (Plaintiffs’ Motion, page 4.) Under Chinese law, a manufacturer in China may not directly export manufactured goods. An export company with a license and quota to export certain classes of goods must be the entity which exports the goods. In this case, the manufacturer gives the goods to the export company, which, as agent for the manufacturer, exports the goods and sends the importer, DI DA, an invoice. DI DA wires money to the export company (also referred in depositions to the freight company), which pays the manufacturer. (Declaration of Amy Shi, para. 14.) Payment to the export company is payment to the manufacturer. Defendant’s tax returns reflect “Loans from “Shareholders” despite Defendant’s assertion that no money has ever been loaned to the company or that a loan to Defendant was ever repaid. Sam Dep. at 46:7-17; 54:8-14. Nevertheless, Defendant’s financial officer could not account for a two hundred thousand dollar loan, which was accepted without terms or documentation. Hong Dep. at 13:12-14; 60:12-61:14; 64:23-65:2. Nor did Defendant “know anything about” a fifty thousand dollar loan listed on Defendant’s 2013 tax return. Id. at 66:18-67:3.” (Plaintiffs’ Motion, page 4.) The deposition testimony of Defendant was clear that DI DA’s starting capital of $200,000 was provided by Long Zhu, in exchange for which stock was issued to his son Sam Zhu. The 30(b)(6) witnesses were unclear whether this was a capital contribution or a loan, but whichever it was it flowed to the corporation at the time of its formation, not away from the corporation, and no part of it has been returned. Defendant does not know why its accountant reduced 2013 deductible expenses by $50,000, but knows that no part of $50,000 was returned to any of the family members. (Shi Declaration, para. 15.) There is no threat to dissipate Defendant’s assets. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 12 of 190 PageID #:400 “Defendant’s most knowledgeable representatives could not even attest to whether Defendant has shareholders. Compare Hong Dep. at 62:17-64:8; 111:18-112:19 (representing that Defendant does not have any shareholders but also that Defendant issued stock for the first time only recently) with Sam Dep. at 40:17-41:17; 45:4-11 (discussing the signature of the stock certificate in October 2014, but also that no consideration for the stock shares was exchanged).” (Plaintiff’s Motion, page 5.) Hong Zhu was not produced as the person most knowledgeable about corporate structure and financing. Sam Zhu was. And Sam Zhu testified that stock was issued to him, in consideration of his father’s contribution of $200,000 to the corporation. “Defendant was not instructed not to destroy relevant materials pertaining to the case at hand and has actually disposed of relevant documents. Shi Dep. at 211:8-213:14; 428:4-430:24.” (Plaintiffs’ Motion, page 5.) Plaintiffs have not shown that Defendant has destroyed any relevant documents. The cited testimony by Amy Shi does not show the destruction of relevant documents. The documents she was asked about and testified to were notes she used in preparing a spreadsheet of the number and cost of logo bags, a spreadsheet she created for the purpose of settlement discussions. The spreadsheet was a document which the discovery rules would not have required her to create. The notes she created to go from information contained in the sales invoices to the spreadsheet were not retained, but these were not business records. And the business records which provided the data, the sales invoices, were retained and produced to plaintiffs’ counsel, as was the spreadsheet. // // // // // Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 13 of 190 PageID #:401 “[U]pon information and belief, the Defendant in this case hold[s] most of its assets in China . . . .” (Plaintiffs’ Motion, page 14.) This statement is incorrect. Defendants’ assets, inventory and bank accounts, are in the United States. Payments made by Defendant to China are for payment of the goods, which are manufactured in China. (Shi Declaration, para. 16.) “Defendant was not surprised to learn that a computer used by Defendant in its operations had been tampered with. Shi Dep. at 217:5-11.” (Plaintiffs’ Motion, page 5.) Plaintiffs’ statement fails to disclose Defendant’s attorney’s objection to the form of this question: Q. All right. Are you surprised to know that documents -- that -- that the computer has been tampered with? MS. SHIELDS: Objection. (Shi deposition tr., page 217, lines 5-8, Exhibit 5 to Plaintiffs’ Motion.) The question violates “the law of the excluded middle,” a more common example of the question being, “Have you stopped beating your spouse?” Whether the witness answers yes or no to such a question, the witness is admitting that the computer was tampered with or that the spouse was beaten, which is why the form of the question is improper. As such, the answer is inadmissible. In any case, the computer was the personal computer of Ms. Shi’s cousin. “Coach seeks the immediate identification of all bank accounts, interest in real property and any other asset owned by Defendant . . . .” (Plaintiffs’ Motion, page 15.) Defendant has already provided all of the foregoing information: statements of Defendant’s bank accounts; deposition testimony about real property (witnesses testified that they owned no real property, in the U.S. or in China). Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 14 of 190 PageID #:402 “Defendant will likely hide or move its ill-gotten funds to offshore bank accounts.” (Plaintiffs’ Motion, page 15.) Plaintiffs provide no support for this statement. Plaintiffs do not have any offshore bank accounts. Plaintiffs have produced statements of all of their bank accounts and do not have excess funds to transfer anywhere. (Shi Declaration, para. 17.) Plaintiffs previously complained that Defendant’s designee testified that Defendant had “zero” funds in its bank accounts yet now posit excess funds that might be moved. CONCLUSION For the reasons discussed herein, Defendant respectfully asks the Court to deny plaintiffs’ motion. The personal jurisdiction ground in part I of this Memorandum also will appear in Defendant’s prospective cross-motion to dismiss. Dated: January 5, 2015 Respectfully submitted, /s/ Carolyn Shields Carolyn Shields Ying Liu LIU & SHIELDS LLP 41-60 Main Street, Suite 208A Flushing, NY 11355 shieldscj524@gmail.com Attorneys for Defendant DI DA IMPORT AND EXPORT INC. d/b/a DI DA NEW YORK Local Counsel: Brian J. Lum, Esq. ICE MILLER LLP 200 West Madison Street, Suite 3500 Chicago, IL 60606 312-726-8129 brian.lum@icemiller.com Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 15 of 190 PageID #:403 DECLARATION OF AMY SHI I, Amy Shi, declare: 1. I am a vice president of DI DA Import and Export Inc. I have personal knowledge of the facts set forth and if called as a witness could and would competently testify thereto. Personal Jurisdiction 2. At all times relevant to this action, DI DA has not been present in the state of Illinois. DI DA does not have an office in Illinois; does not have any employees in Illinois; does not have any bank accounts in Illinois; does not have any property in Illinois; does not have any agents in Illinois; has not designated any agent for service of process in Illinois; does not solicit business in Illinois. 3. DI DA sells to wholesalers. DI DA makes most of its sales at trade shows, located in Las Vegas, Nevada and in Florida. At the trade shows, customers place orders, and DI DA fills those orders when it returns to its showroom and warehouse in the State of New York, shipping the goods to the addresses given to it by its customers. Trade show customers occasionally are repeat customers, calling from their home states to DI DA in New York to place subsequent orders, which DI DA ships from New York to their addresses. Other customers are customers who drop into DI DA’s showroom in New York. 4. DI DA does not have activities in Illinois that are so continuous and systematic as to make DI DA at home in Illinois. 5. DI DA maintains a website, didanewyork.com (“Website”). The Website is available throughout the world wherever a user can access the internet. The Website does not target Illinois customers. It is passive and not interactive: one accessing the Website can see information about DI DA’s products but cannot place orders through the website. DI DA does Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 16 of 190 PageID #:404 not transact business over the Website. Attached hereto as Exhibit A is a true and correct copy of an email from a user who asked whether orders could be placed over the website, and DI DA’s reply that they could not. There is an email function that allows a user to communicate by email with DI DA but not to place orders. 6. The volume and value of sales to customers in Illinois is very small as well as a small proportion of DI DA’s total sales. Attached hereto as Exhibit B are true and correct copies of invoices to customers located in Illinois. 7. DI DA did not sell the duffle bag to the Chicago seller who allegedly sold the bag to Coach’s investigator. Plaintiffs disclosed the name of the seller as Maruti Convenience Corner, owned by Maruti Convenience Corporation. I reviewed all of DI DA’s invoices and determined that DI DA never sold to that seller. That seller must have obtained the bag from another source. DI DA had discontinued that item before the date of Coach’s claimed purchase. Responses to Plaintiffs’ Motion 8. Coach sent DI DA a cease and desist letter relating to certain hang tags which Coach believed DI DA was using, at the time of the letter in February of 2013, in connection with DI DA’s goods. DI DA was not using said hang tags at the time of the letter and had ceased using them before the date of the letter. DI DA has not used those hang tags since and will not use those hangtags in the future. 9. As shown by Coach’s February 2013 cease and desist letter, the letter related solely to hangtags. It did not mention any other mark which DI DA was using in connection with its goods. 10. The marks which DI DA calls the “2D mark” and the “6D mark” are not in current use. The last sale of any goods with these marks was made in 2012. Photographs of Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 17 of 190 PageID #:405 goods bearing the challenged marks were taken off DI DA’s website in 2013. DI DA contends that these marks did not infringe plaintiffs’ marks. 11. DI DA is named after a family relative and means “large” in Chinese. DI DA filed applications with the USPTO for marks that use the letter “D”, because of the D’s in its name. DI DA has multiple registered trademarks for the word mark “DI DA” and design marks based on various configurations of the letter “D” in connection with such goods as handbags and wallets. 12. The mark which DI DA calls the “D&D” or “D ampersand D” mark was never used. The application was filed on an intent to use basis. 13. By February of 2013, the date of Coach’s cease and desist letter concerning hang tags, DI DA had ceased using such hang tags. In any case, the hang tags used by DI DA were not similar in appearance to Coach’s hang tag. 14. Under the laws of China, a manufacturer may not directly export manufactured goods. An export company with a license and quota to export certain classifications of goods must be the entity which exports the goods. DI DA’s manufacturers give the goods to the export company, which, as agent for the manufacturer, exports the goods and sends the importer, DI DA, an invoice. DI DA wires money to the export company (we also call the export company the freight company), which pays the manufacturer. 15. The deposition testimony of DI DA’s witnesses was clear that DI DA’s starting capital of $200,000 was provided by Long Zhu, in exchange for which stock was issued to his son Sam Zhu. The witnesses were unclear whether this was a capital contribution or a loan, but whichever it was it flowed to the corporation, not away from the corporation, and no part of it Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 18 of 190 PageID #:406 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 19 of 190 PageID #:407 EXHIBIT A Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 20 of 190 PageID #:408 Message from your shop DIDA NEW YORK Handbags E-mail address: jestacy1@comcast.net Message: I am trying to order a handbag online and get all the way to the payment screen where it says there is not payment module installed so I cannot order and I do not see a phone number where I can order online. I need to order asap to ensure I have by 2/13 for a friends party. Please let me know if this can be fixed or if there is an alternate way of ordering. My phone number is 303-917-8691 DIDA NEW YORK Handbags powered with PrestaShop™ From: dida newyork Date: Mon, Mar 11, 2013 at 3:05 PM Subject: Re: [DIDA NEW YORK Handbags] Message from contact form To: Lydia Crivolio Hi there, The online does not do any transaction. We only do wholesales. Regards, Amy On Mon, Mar 11, 2013 at 2:39 PM, Lydia Crivolio wrote: Message from your shop DIDA NEW YORK Handbags E-mail address: lydlite85@aol.com Message: I have set up an account and would like to make a purchase, but I keep getting kicked back by an error message telling me I have not entered my payment information. I can't find where to do so. Please help. -Lydia Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 21 of 190 PageID #:409 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 22 of 190 PageID #:410 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 23 of 190 PageID #:411 EXHIBIT B Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 24 of 190 PageID #:412 CONFIDENTIAL--SUBJECT TO PROTECTIVE ORDER DD 1990 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 25 of 190 PageID #:413 CONFIDENTIAL--SUBJECT TO PROTECTIVE ORDER DD 2118 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 26 of 190 PageID #:414 CONFIDENTIAL--SUBJECT TO PROTECTIVE ORDER DD 2197 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 27 of 190 PageID #:415 CONFIDENTIAL--SUBJECT TO PROTECTIVE ORDER DD 2280 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 28 of 190 PageID #:416 CONFIDENTIAL--SUBJECT TO PROTECTIVE ORDER DD 2371 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 29 of 190 PageID #:417 CONFIDENTIAL--SUBJECT TO PROTECTIVE ORDER DD 2398 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 30 of 190 PageID #:418 CONFIDENTIAL--SUBJECT TO PROTECTIVE ORDER DD 2614 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 31 of 190 PageID #:419 CONFIDENTIAL--SUBJECT TO PROTECTIVE ORDER DD 2623 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 32 of 190 PageID #:420 CONFIDENTIAL--SUBJECT TO PROTECTIVE ORDER DD 2733 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 33 of 190 PageID #:421 CONFIDENTIAL--SUBJECT TO PROTECTIVE ORDER DD 2770 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 34 of 190 PageID #:422 CONFIDENTIAL--SUBJECT TO PROTECTIVE ORDER DD 2789 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 35 of 190 PageID #:423 CONFIDENTIAL--SUBJECT TO PROTECTIVE ORDER DD 3645 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 36 of 190 PageID #:424 DECLARATION OF CAROLYN SHIELDS I, CAROLYN SHIELDS, declare: 1. I am one of the attorneys of record for the Defendant, DI DA Import and Export, Inc. I have personal knowledge of the facts set forth herein and if called as a witness could and would competently testify thereto. . 2. Attached as Exhibit A is a true and correct copy of plaintiffs’ responses to Defendant’s Interrogatory Numbers 1 and 2. 3. Attached as Exhibit B is a true and correct copy of Defendant’s trademark applications which plaintiffs opposed. The first two applications, for the 2 D and 6 D marks, cover the goods which plaintiffs claim are infringing. The third application, for the D&D mark, was filed on an intent to use basis and as shown by the USPTO records was never used. 4. Attached as Exhibit C is a true and correct copy of the USPTO records for the trademarks identified in Exhibit A as allegedly infringed by Defendant. 5. Attached as Exhibit D is a true and correct copy of the USPTO registration of Defendant’s 1 D mark. 6. Attached as Exhibit E is a true and correct copy of the USPTO records showing that the notices of opposition mailed by the USPTO to Defendant were returned to the USPTO stamped “addressee unknown.” In addition, the deposition testimony of Sam Zhu shows that he did not know that Coach had filed any opposition to DI DA’s trademark applications and that when he checked DI DA’s attorney’s website for the status of the applications it did not show that any oppositions had been filed. Attached hereto as Exhibit F is that testimony of Sam Zhu. The refusal of the USPTO to register Defendant’s three marks was by default, by reason of Defendant’s failure to respond to plaintiffs’ opposition. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 37 of 190 PageID #:425 7. I did not say or write to plaintiffs’ attorneys that Defendant’s principal would “run off to China” making collection of any judgment difficult. Indeed, I said the opposite, that they would not do so. And I mentioned the practice of others, not my clients, of moving to China, making enforcement of U.S. judgments difficult. Not only will Defendant’s principals not do this; they have shown by their investment and persistent participation in this litigation that they will not do so. 8. Defendant has already provided information regarding Defendant’s assets, and plaintiffs’ attorneys have examined all four of Defendant’s designees about the same: I produced Defendant’s bank account statements. Plaintiffs’ attorneys examined all four of Defendant’s designees about real property. The witnesses testified that they and Defendant owned no real property, in the U.S. or in China. I declare under penalty of perjury that the foregoing is true and correct. Executed on January 5, 2015. __/s/ Carolyn Shields_________________ CAROLYN SHIELDS Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 38 of 190 PageID #:426 EXHIBIT A Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 39 of 190 PageID #:427 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 40 of 190 PageID #:428 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 41 of 190 PageID #:429 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 42 of 190 PageID #:430 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 43 of 190 PageID #:431 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 44 of 190 PageID #:432 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 45 of 190 PageID #:433 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 46 of 190 PageID #:434 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 47 of 190 PageID #:435 EXHIBIT B Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 48 of 190 PageID #:436 Mark Information Mark Literal Elements: D D Standard Character Claim: No Mark Drawing Type: 5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM Description of Mark: The mark consists of the literal elements "D D" facing each other, of which the left one is reversed to the other like a mirror image of the letter "D" as shown in the mark. Color(s) Claimed: Color is not claimed as a feature of the mark. Related Properties Information Claimed Ownership of US Registrations: 4298751 Goods and Services 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 Asterisks *..* identify additional (new) wording in the goods/services. For: Leather products, namely, handbags, traveling bags, tote bags, shoulder bags, duffel bags, wallets and key chains International Class(es): 018 - Primary Class U.S Class(es): 001, 002, 003, 022, 041 Class Status: ABANDONED Basis: 1(a) First Use: Apr. 01, 2011 Use in Commerce: Apr. 01, 2011 Basis Information (Case Level) Filed Use: Yes Currently Use: Yes Amended Use: No Filed ITU: No Currently ITU: No Amended ITU: No Filed 44D: No Currently 44D: No Amended 44D: No Filed 44E: No Currently 44E: No Amended 44E: No Filed 66A: No Currently 66A: No Filed No Basis: No Currently No Basis: No Current Owner(s) Information Owner Name: DI DA IMPORT & EXPORT INC. Owner Address: 1205 BROADWAY RM 203 NEW YORK, NEW YORK 10001 UNITED STATES Legal Entity Type: CORPORATION State or Country Where Organized: NEW YORK Generated on: This page was generated by TSDR on 2013-11-01 23:36:31 EDT Mark: D D US Serial Number: 85316065 Application Filing Date: May 09, 2011 Register: Principal Mark Type: Trademark Status: Abandoned after an inter partes decision by the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page. Status Date: Oct. 29, 2013 Publication Date: Jul. 09, 2013 Date Abandoned: Oct. 29, 2013 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 49 of 190 PageID #:437 Attorney/Correspondence Information Attorney of Record Attorney Name: Raj Abhyanker Docket Number: 26478 Attorney Primary Email Address: trademarks@rajpatent.com Attorney Email Authorized: Yes Correspondent Correspondent Name/Address: RAJ ABHYANKER RAJ ABHYANKER PC 1580 W EL CAMINO REAL STE 8 MOUNTAIN VIEW, CALIFORNIA 94040-2462 UNITED STATES Phone: 650- 965-8731 Fax: 650- 989-2131 Correspondent e-mail: trademarks@rajpatent.com Correspondent e-mail Authorized: Yes Domestic Representative - Not Found Prosecution History Date Description ProceedingNumber Oct. 29, 2013 ABANDONMENT NOTICE MAILED - INTER PARTES DECISION Oct. 29, 2013 ABANDONMENT - AFTER INTER PARTES DECISION Oct. 29, 2013 OPPOSITION TERMINATED NO. 999999 211648 Oct. 29, 2013 OPPOSITION SUSTAINED NO. 999999 211648 Jul. 19, 2013 OPPOSITION INSTITUTED NO. 999999 211648 Jul. 19, 2013 OPPOSITION PAPERS RECEIVED AT TTAB Jul. 09, 2013 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Jul. 09, 2013 PUBLISHED FOR OPPOSITION Jun. 19, 2013 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED May 31, 2013 LAW OFFICE PUBLICATION REVIEW COMPLETED 77976 May 26, 2013 APPROVED FOR PUB - PRINCIPAL REGISTER May 26, 2013 EXAMINER'S AMENDMENT ENTERED 88888 May 26, 2013 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328 May 26, 2013 EXAMINERS AMENDMENT E-MAILED 6328 May 26, 2013 EXAMINERS AMENDMENT -WRITTEN 60219 May 20, 2013 PREVIOUS ALLOWANCE COUNT WITHDRAWN May 12, 2013 WITHDRAWN FROM PUB - OG REVIEW QUERY 76621 Apr. 29, 2013 LAW OFFICE PUBLICATION REVIEW COMPLETED 77976 Apr. 21, 2013 APPROVED FOR PUB - PRINCIPAL REGISTER Apr. 21, 2013 EXAMINER'S AMENDMENT ENTERED 88888 Apr. 21, 2013 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328 Apr. 21, 2013 EXAMINERS AMENDMENT E-MAILED 6328 Apr. 21, 2013 EXAMINERS AMENDMENT -WRITTEN 60219 Apr. 06, 2013 LIE CHECKED SUSP - TO ATTY FOR ACTION 77976 Sep. 26, 2012 REPORT COMPLETED SUSPENSION CHECK CASE STILL SUSPENDED 77976 Apr. 25, 2012 AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP Mar. 22, 2012 NOTIFICATION OF LETTER OF SUSPENSION E-MAILED 6332 Mar. 22, 2012 LETTER OF SUSPENSION E-MAILED 6332 Mar. 22, 2012 SUSPENSION LETTER WRITTEN 60219 Mar. 14, 2012 TEAS/EMAIL CORRESPONDENCE ENTERED 77976 Mar. 14, 2012 CORRESPONDENCE RECEIVED IN LAW OFFICE 77976 Mar. 06, 2012 TEAS RESPONSE TO OFFICE ACTION RECEIVED Feb. 28, 2012 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 50 of 190 PageID #:438 Feb. 28, 2012 NON-FINAL ACTION E-MAILED 6325 Feb. 28, 2012 NON-FINAL ACTION WRITTEN 60219 Feb. 15, 2012 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 88888 Feb. 15, 2012 TEAS CHANGE OF OWNER ADDRESS RECEIVED Feb. 07, 2012 ASSIGNED TO LIE 77976 Jan. 26, 2012 TEAS RESPONSE TO OFFICE ACTION RECEIVED Jul. 27, 2011 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Jul. 27, 2011 NON-FINAL ACTION E-MAILED 6325 Jul. 27, 2011 NON-FINAL ACTION WRITTEN 60219 Jul. 26, 2011 ASSIGNED TO EXAMINER 60219 May 14, 2011 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM May 12, 2011 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information TM Staff Information TM Attorney: HERMAN, RUSS Law Office Assigned: LAW OFFICE 101 File Location Current Location: TTAB Date in Location: Oct. 29, 2013 Assignment Abstract Of Title Information Summary Total Assignments: 1 Applicant: Zhu, Feng Assignment 1 of 1 Conveyance: ASSIGNS THE ENTIRE INTEREST Reel/Frame: 4758/0127 Pages: 3 Date Recorded: Apr. 17, 2012 Supporting Documents: assignment-tm-4758-0127.pdf Assignor Name: ZHU, FENG Execution Date: Apr. 13, 2012 Legal Entity Type: INDIVIDUAL Citizenship: UNITED STATES Assignee Name: DI DA IMPORT & EXPORT INC. Legal Entity Type: CORPORATION State or Country Where Organized: NEW YORK Address: 1205 BROADWAY RM 203 NEW YORK, NEW YORK 10001 Correspondent Correspondent Name: RAJ ABHYANKER Correspondent Address: 1580 W. EL CAMINO REAL SUITE 8 MOUNTAIN VIEW, CA 94040 Domestic Representative - Not Found Proceedings Summary Number of Proceedings: 1 Type of Proceeding: Opposition Proceeding Number: 91211648 Filing Date: Jul 19, 2013 Status: Terminated Status Date: Oct 29, 2013 Interlocutory Attorney: ELIZABETH A DUNN Defendant Name: DI DA Import & Export, Inc. Correspondent Address: RAJ ABHYANKER RAJ ABHYANKER PC Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 51 of 190 PageID #:439 1580 W EL CAMINO REAL , STE 8 MOUNTAIN VIEW CA , 94040-2462 UNITED STATES Correspondent e-mail: trademarks@rajpatent.com Associated marks Mark Application Status SerialNumber Registration Number D D Abandoned - After Inter-Partes Decision 85316065 Plaintiff(s) Name: Coach Services, Inc. Correspondent Address: JEAN MARIANI COACH SERVICES INC 516 WEST 34TH STREET NEW YORK NY , 10001 UNITED STATES Correspondent e-mail: jmariani@coach.com Associated marks Mark Application Status SerialNumber Registration Number CC Section 8 and 15 - Accepted and Acknowledged 76441558 2822318 CC Section 8 and 15 - Accepted and Acknowledged 76491780 2822629 CC CC CC CC Renewed 78007596 2626565 CC CC CC CC Renewed 78007598 2592963 CC Registered 78972141 3396554 CC CC CC CC Registered 77687107 3695290 CC CC CC CC Section 8 and 15 - Accepted and Acknowledged 76348453 2832589 Prosecution History Entry Number History Text Date Due Date 1 FILED AND FEE Jul 19, 2013 2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jul 19, 2013 Aug 28, 2013 3 PENDING, INSTITUTED Jul 19, 2013 4 NOTICE OF DEFAULT Sep 12, 2013 5 BD DECISION: SUSTAINED Oct 29, 2013 6 TERMINATED Oct 29, 2013 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 52 of 190 PageID #:440 Mark Information Mark Literal Elements: DDDDDD Standard Character Claim: No Mark Drawing Type: 5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM Description of Mark: The mark consists of D like figures facing each other, two D like figures placed above them facing downwards and two D like figures placed below them facing upwards as shown in the mark. Color(s) Claimed: Color is not claimed as a feature of the mark. Goods and Services 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 Asterisks *..* identify additional (new) wording in the goods/services. For: Leather goods, namely, leather handbags, traveling bags, shoulder bags, wallets and key chains International Class(es): 018 - Primary Class U.S Class(es): 001, 002, 003, 022, 041 Class Status: ABANDONED Basis: 1(b) Basis Information (Case Level) Filed Use: No Currently Use: No Amended Use: No Filed ITU: Yes Currently ITU: Yes Amended ITU: No Filed 44D: No Currently 44D: No Amended 44D: No Filed 44E: No Currently 44E: No Amended 44E: No Filed 66A: No Currently 66A: No Filed No Basis: No Currently No Basis: No Current Owner(s) Information Owner Name: DIDA import & export inc Owner Address: 140-34 Negundo Ave Flushing, NEW YORK 11355 UNITED STATES Legal Entity Type: CORPORATION State or Country Where Organized: NEW YORK Attorney/Correspondence Information Attorney of Record Attorney Name: Raj Abhyanker Docket Number: 24954 Generated on: This page was generated by TSDR on 2013-11-01 23:54:26 EDT Mark: DDDDDD US Serial Number: 85267743 Application Filing Date: Mar. 15, 2011 Register: Principal Mark Type: Trademark Status: Abandoned after an inter partes decision by the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page. Status Date: May 10, 2012 Publication Date: Aug. 02, 2011 Date Abandoned: May 10, 2012 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 53 of 190 PageID #:441 Attorney Primary Email Address: trademarks@rajpatent.com Attorney Email Authorized: Yes Correspondent Correspondent Name/Address: DIDI IMPORT & EXPORT INC 140-34 NEGUNDO AVE FLUSHING, NEW YORK 11355 UNITED STATES Phone: 650-965-8731 Fax: 650-989-2131 Correspondent e-mail: trademarks@rajpatent.com Correspondent e-mail Authorized: Yes Domestic Representative - Not Found Prosecution History Date Description ProceedingNumber May 10, 2012 ABANDONMENT - AFTER INTER PARTES DECISION May 10, 2012 OPPOSITION TERMINATED NO. 999999 202713 May 10, 2012 OPPOSITION SUSTAINED NO. 999999 202713 Nov. 28, 2011 OPPOSITION INSTITUTED NO. 999999 202713 Aug. 24, 2011 EXTENSION OF TIME TO OPPOSE RECEIVED Aug. 02, 2011 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Aug. 02, 2011 PUBLISHED FOR OPPOSITION Jun. 17, 2011 APPROVED FOR PUB - PRINCIPAL REGISTER Jun. 14, 2011 ASSIGNED TO EXAMINER 76613 Mar. 21, 2011 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Mar. 18, 2011 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information TM Staff Information TM Attorney: MARTIN, EUGENIA K Law Office Assigned: LAW OFFICE 114 File Location Current Location: TTAB Date in Location: May 10, 2012 Proceedings Summary Number of Proceedings: 2 Type of Proceeding: Opposition Proceeding Number: 91202713 Filing Date: Nov 28, 2011 Status: Terminated Status Date: May 10, 2012 Interlocutory Attorney: CHERYL S GOODMAN Defendant Name: Dida Import & Export, Inc. Correspondent Address: DIDI IMPORT & EXPORT INC 140-34 NEGUNDO AVE FLUSHING NY , 11355 UNITED STATES Associated marks Mark Application Status SerialNumber Registration Number DDDDDD Abandoned - After Inter-Partes Decision 85267743 Plaintiff(s) Name: Coach Service, Inc. Correspondent Address: SUZANNE WHITE COACH SERVICE INC 516 WEST 34 STREET NEW YORK NY , 10001 UNITED STATES Correspondent e-mail: swhite@coach.com Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 54 of 190 PageID #:442 Associated marks Mark Application Status SerialNumber Registration Number CC Registered 78972141 3396554 CC CC CC CC Renewed 78007598 2592963 CC CC CC CC Renewed 78007596 2626565 CC CC CC CC Registered 77687107 3695290 CC CC CC CC Section 8 and 15 - Accepted and Acknowledged 76348453 2832589 CC Section 8 and 15 - Accepted and Acknowledged 76441558 2822318 CC Section 8 and 15 - Accepted and Acknowledged 76491780 2822629 Prosecution History Entry Number History Text Date Due Date 1 FILED AND FEE Nov 28, 2011 2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Nov 28, 2011 Jan 07, 2012 3 PENDING, INSTITUTED Nov 28, 2011 4 D'S REQUEST TO WITHDRAW AS ATTORNEY Dec 22, 2011 5 RESPONSE DUE 30 DAYS (DUE DATE) Jan 17, 2012 Feb 16, 2012 6 RESPONSE DUE Mar 03, 2012 7 UNDELIVERABLE MAIL Mar 29, 2012 8 UNDELIVERABLE MAIL Apr 12, 2012 9 BOARD'S DECISION: SUSTAINED May 10, 2012 10 TERMINATED May 10, 2012 Type of Proceeding: Extension of Time Proceeding Number: 85267743 Filing Date: Aug 24, 2011 Status: Terminated Status Date: Nov 30, 2011 Interlocutory Attorney: Defendant Name: DIDA import & export inc Correspondent Address: RAJ ABHYANKER RAJ ABHYANKER, P.C. 1580 W EL CAMINO REAL STE 8 MOUNTAIN VIEW CA , 94040-2462 Associated marks Mark Application Status SerialNumber Registration Number DDDDDD Abandoned - After Inter-Partes Decision 85267743 Potential Opposer(s) Name: Coach Service, Inc. Correspondent Address: Suzanne White Coach Service, Inc. 516 West 34th Street New York NY , 10001 UNITED STATES Correspondent e-mail: swhite@coach.com Associated marks Mark Application Status Serial Number RegistrationNumber Prosecution History Entry Number History Text Date Due Date 1 INCOMING - EXT TIME TO OPPOSE FILED Aug 24, 2011 2 EXTENSION OF TIME GRANTED Aug 24, 2011 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 55 of 190 PageID #:443 Mark Information Mark Literal Elements: D & D Standard Character Claim: No Mark Drawing Type: 5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM Description of Mark: The mark consists of the literal elements D & D as shown in the mark. Color(s) Claimed: Color is not claimed as a feature of the mark. Goods and Services 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 Asterisks *..* identify additional (new) wording in the goods/services. For: Leather goods, namely, leather handbags, traveling bags, shoulder bags, wallets and key chains International Class(es): 018 - Primary Class U.S Class(es): 001, 002, 003, 022, 041 Class Status: ABANDONED Basis: 1(b) Basis Information (Case Level) Filed Use: No Currently Use: No Amended Use: No Filed ITU: Yes Currently ITU: Yes Amended ITU: No Filed 44D: No Currently 44D: No Amended 44D: No Filed 44E: No Currently 44E: No Amended 44E: No Filed 66A: No Currently 66A: No Filed No Basis: No Currently No Basis: No Current Owner(s) Information Owner Name: DIDA import & export inc. Owner Address: 140-34 Negundo Ave Flushing, NEW YORK 11355 UNITED STATES Legal Entity Type: CORPORATION State or Country Where Organized: NEW YORK Attorney/Correspondence Information Attorney of Record Attorney Name: Raj Abhyanker Docket Number: 24955 Generated on: This page was generated by TSDR on 2013-11-02 00:10:24 EDT Mark: D & D US Serial Number: 85267696 Application Filing Date: Mar. 15, 2011 Register: Principal Mark Type: Trademark Status: Abandoned after an inter partes decision by the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page. Status Date: Oct. 10, 2012 Publication Date: Aug. 02, 2011 Date Abandoned: Oct. 10, 2012 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 56 of 190 PageID #:444 Attorney Primary Email Address: trademarks@rajpatent.com Attorney Email Authorized: Yes Correspondent Correspondent Name/Address: DIDA IMPORT EXPORT INC 140 34 NEGUNDO AVE FLUSHING, NEW YORK 11355 UNITED STATES Phone: 650-965-8731 Fax: 650-989-2131 Correspondent e-mail: trademarks@rajpatent.com Correspondent e-mail Authorized: Yes Domestic Representative - Not Found Prosecution History Date Description ProceedingNumber Oct. 10, 2012 ABANDONMENT - AFTER INTER PARTES DECISION Oct. 10, 2012 OPPOSITION TERMINATED NO. 999999 202712 Oct. 10, 2012 OPPOSITION SUSTAINED NO. 999999 202712 Nov. 28, 2011 OPPOSITION INSTITUTED NO. 999999 202712 Aug. 31, 2011 EXTENSION OF TIME TO OPPOSE RECEIVED Aug. 02, 2011 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Aug. 02, 2011 PUBLISHED FOR OPPOSITION Jun. 14, 2011 APPROVED FOR PUB - PRINCIPAL REGISTER Jun. 14, 2011 ASSIGNED TO EXAMINER 83186 Mar. 22, 2011 NOTICE OF PSEUDO MARK MAILED Mar. 21, 2011 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Mar. 18, 2011 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information TM Staff Information TM Attorney: BIBB, SCOTT Law Office Assigned: LAW OFFICE 109 File Location Current Location: TTAB Date in Location: Oct. 10, 2012 Proceedings Summary Number of Proceedings: 2 Type of Proceeding: Opposition Proceeding Number: 91202712 Filing Date: Nov 28, 2011 Status: Terminated Status Date: Oct 10, 2012 Interlocutory Attorney: MICHAEL B ADLIN Defendant Name: DIDA Import & Export Inc. Correspondent Address: DIDA IMPORT EXPORT INC 140 34 NEGUNDO AVE FLUSHING NY , 11355 UNITED STATES Associated marks Mark Application Status SerialNumber Registration Number D & D Abandoned - After Inter-Partes Decision 85267696 Plaintiff(s) Name: Coach Services, Inc. Correspondent Address: SUZANNE WHITE COACH SERVICES INC 516 W 34TH STREET NEW YORK NY , 10001 UNITED STATES Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 57 of 190 PageID #:445 Correspondent e-mail: swhite@coach.com Associated marks Mark Application Status SerialNumber Registration Number CC Registered 78972141 3396554 CC CC CC CC Renewed 78007598 2592963 CC CC CC CC Renewed 78007596 2626565 CC CC CC CC Registered 77687107 3695290 CC CC CC CC Section 8 and 15 - Accepted and Acknowledged 76348453 2832589 CC Section 8 and 15 - Accepted and Acknowledged 76441558 2822318 CC Section 8 and 15 - Accepted and Acknowledged 76491780 2822629 Prosecution History Entry Number History Text Date Due Date 1 FILED AND FEE Nov 28, 2011 2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Nov 28, 2011 Jan 07, 2012 3 PENDING, INSTITUTED Nov 28, 2011 4 D'S REQUEST TO WITHDRAW AS ATTORNEY Dec 22, 2011 5 RESPONSE DUE 30 DAYS (DUE DATE) Jan 19, 2012 Feb 18, 2012 6 UNDELIVERABLE MAIL Feb 27, 2012 7 UNDELIVERABLE MAIL Feb 27, 2012 8 NOTICE OF DEFAULT Jul 09, 2012 9 RESPONSE DUE 30 DAYS (DUE DATE) Aug 23, 2012 Sep 22, 2012 10 BOARD'S DECISION: SUSTAINED Oct 10, 2012 11 TERMINATED Oct 10, 2012 Type of Proceeding: Extension of Time Proceeding Number: 85267696 Filing Date: Aug 31, 2011 Status: Terminated Status Date: Nov 30, 2011 Interlocutory Attorney: Defendant Name: DIDA import & export inc. Correspondent Address: RAJ ABHYANKER RAJ ABHYANKER, P.C 1580 W EL CAMINO REAL STE 8 MOUNTAIN VIEW CA , 94040-2462 Associated marks Mark Application Status SerialNumber Registration Number D & D Abandoned - After Inter-Partes Decision 85267696 Potential Opposer(s) Name: Coach Services, Inc. Correspondent Address: Suzanne White Coach Services, Inc. 516 W. 34th Street New York NY , 10001 UNITED STATES Correspondent e-mail: swhite@coach.com Associated marks Mark Application Status Serial Number RegistrationNumber Prosecution History Entry Number History Text Date Due Date 1 INCOMING - EXT TIME TO OPPOSE FILED Aug 31, 2011 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 58 of 190 PageID #:446 2 EXTENSION OF TIME GRANTED Aug 31, 2011 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 59 of 190 PageID #:447 EXHIBIT C Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 60 of 190 PageID #:448 United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Wed Dec 31 03:20:58 EST 2014 Please logout when you are done to release system resources allocated for you. Record 1 out of 1 ( Use the "Back" button of the Internet Browser to return to TESS) Word Mark CC CC CC CC Goods and Services IC 018. US 001 002 003 022 041. G & S: HANDBAGS, PURSES, CLUTCHES, SHOULDER BAGS, PORTFOLIOS, TOTE BAGS, WAIST POUCHES, BACKPACKS, COSMETIC CASES SOLD EMPTY, TOILETRY CASES SOLD EMPTY, BRIEFCASES, LUGGAGE, GARMENT BAGS, BILLFOLDS, WALLETS, KEY CASES, BUSINESS CARD CASES, CREDIT CARD CASES, PASSPORT HOLDERS, IDENTIFICATION CASES, [TIE CASES] AND COIN POUCHES. FIRST USE: 20010400. FIRST USE IN COMMERCE: 20010400 Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS Design Search Code 26.03.03 - Incomplete ovals; Ovals, incomplete 27.03.01 - Geometric figures forming letters, numerals or punctuation Serial Number 78007596 Filing Date May 10, 2000 Current Basis 1A Original Filing Basis 1B Published for Opposition June 26, 2001 Registration Number 2626565 Registration September 24, 2002 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 61 of 190 PageID #:449 Date Owner (REGISTRANT) COACH, INC. CORPORATION MARYLAND 516 WEST 34TH STREET NEW YORK NEW YORK 10001 (LAST LISTED OWNER) COACH SERVICES, INC. CORPORATION MARYLAND 516 WEST 34TH STREET NEW YORK NEW YORK 10001 Assignment Recorded ASSIGNMENT RECORDED Attorney of Record Sarah B. Kickham Description of Mark Color is not claimed as a feature of the mark. Type of Mark TRADEMARK Register PRINCIPAL-2(F) Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20121003. Renewal 1ST RENEWAL 20121003 Live/Dead Indicator LIVE |.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 62 of 190 PageID #:450 United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Wed Dec 31 03:20:58 EST 2014 Please logout when you are done to release system resources allocated for you. Record 1 out of 1 ( Use the "Back" button of the Internet Browser to return to TESS) Word Mark CC Goods and Services IC 003. US 001 004 006 050 051 052. G & S: Fragrances for personal use; Lipsticks. FIRST USE: 20070401. FIRST USE IN COMMERCE: 20070401 Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Trademark Search Facility Classification Code LETS-1 CCCC A single letter, multiples of a single letter or in combination with a design SHAPES-GEOMETRIC Geometric figures and solids including squares, rectangles, quadrilaterals and polygons SHAPES-OVALS Oval figures or designs including incomplete ovals and one or more ovals Serial Number 78972141 Filing Date September 12, 2006 Current Basis 1A Original Filing Basis 1B Published for Opposition January 9, 2007 Registration Number 3396554 Registration Date March 11, 2008 Owner (REGISTRANT) Coach Services, Inc. CORPORATION MARYLAND 516 West 34th Street New York NEW YORK 10001 Attorney of Record Sarah B. Kickham Prior Registrations 2592963;2626565;2832589 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 63 of 190 PageID #:451 Description of Mark Color is not claimed as a feature of the mark. The mark consists of a repeating pattern featuring a stylized letter "C" in different orientations. Type of Mark TRADEMARK Register PRINCIPAL Affidavit Text SECT 15. SECT 8 (6-YR). Live/Dead Indicator LIVE |.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 64 of 190 PageID #:452 United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Wed Dec 31 03:20:58 EST 2014 Please logout when you are done to release system resources allocated for you. Record 1 out of 1 ( Use the "Back" button of the Internet Browser to return to TESS) Word Mark CC CC CC CC Goods and Services IC 025. US 022 039. G & S: CLOTHING, NAMELY, SCARVES, TIES, GLOVES, BELTS, CAPS, HATS, SHOES, [ SLIPPERS, ] COATS, JACKETS [ AND SUSPENDERS ]. FIRST USE: 20010400. FIRST USE IN COMMERCE: 20010400 Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS Design Search Code 26.03.03 - Incomplete ovals; Ovals, incomplete 27.03.01 - Geometric figures forming letters, numerals or punctuation Serial Number 78007598 Filing Date May 10, 2000 Current Basis 1A Original Filing Basis 1B Published for Opposition June 26, 2001 Registration Number 2592963 Registration Date July 9, 2002 Owner (REGISTRANT) COACH, INC. CORPORATION MARYLAND 516 WEST 34TH STREET NEW YORK NEW YORK 10001 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 65 of 190 PageID #:453 (LAST LISTED OWNER) COACH SERVICES, INC. CORPORATION MARYLAND 516 West 34th Street New York NEW YORK 10001 Assignment Recorded ASSIGNMENT RECORDED Attorney of Record Sarah B. Kickham Description of Mark Color is not claimed as a feature of the mark. Type of Mark TRADEMARK Register PRINCIPAL-2(F) Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20120504. Renewal 1ST RENEWAL 20120504 Live/Dead Indicator LIVE |.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 66 of 190 PageID #:454 United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Wed Dec 31 03:20:58 EST 2014 Please logout when you are done to release system resources allocated for you. Record 1 out of 1 ( Use the "Back" button of the Internet Browser to return to TESS) Word Mark CC Goods and Services IC 024. US 042 050. G & S: Fabric for use in the manufacture of clothing, shoes, handbags and luggage. FIRST USE: 20020802. FIRST USE IN COMMERCE: 20020802 Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS Design Search Code 26.03.03 - Incomplete ovals; Ovals, incomplete 26.03.16 - Ovals touching or intersecting 26.03.21 - Ovals that are completely or partially shaded 27.03.01 - Geometric figures forming letters, numerals or punctuation Serial Number 76441558 Filing Date August 14, 2002 Current Basis 1A Original Filing Basis 1A Published for Opposition December 23, 2003 Registration Number 2822318 Registration Date March 16, 2004 Owner (REGISTRANT) Coach Services, Inc. CORPORATION MARYLAND 516 West 34th Street New York NEW YORK 10001 Attorney of Record Sarah B. Kickham Prior 2592963;2626565 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 67 of 190 PageID #:455 Registrations Description of Mark Color is not claimed as a feature of the mark. The mark consists of a repeating pattern featuring a stylized letter "C" in different orientations. Type of Mark TRADEMARK Register PRINCIPAL-2(F) Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20140407. Renewal 1ST RENEWAL 20140407 Live/Dead Indicator LIVE |.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 68 of 190 PageID #:456 United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Wed Dec 31 03:20:58 EST 2014 Please logout when you are done to release system resources allocated for you. Record 1 out of 1 ( Use the "Back" button of the Internet Browser to return to TESS) Word Mark CC Goods and Services IC 035. US 100 101 102. G & S: Retail store services featuring handbags, luggage, home furnishings, stationary, jewelry, watches, small leather goods, clothing, accessories, shoes, eyewear, toys, desk accessories and pet products. FIRST USE: 20021028. FIRST USE IN COMMERCE: 20021028 Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Serial Number 76491780 Filing Date February 20, 2003 Current Basis 1A Original Filing Basis 1A Published for Opposition December 23, 2003 Registration Number 2822629 Registration Date March 16, 2004 Owner (REGISTRANT) Coach Services, Inc. CORPORATION MARYLAND 516 West 34th Street New York NEW YORK 10001 Attorney of Record Sarah B. Kickham Prior Registrations2592963;2626565 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 69 of 190 PageID #:457 Description of Mark Color is not claimed as a feature of the mark. Type of Mark SERVICE MARK Register PRINCIPAL Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20140408. Renewal 1ST RENEWAL 20140408 Live/Dead Indicator LIVE |.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 70 of 190 PageID #:458 United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Wed Dec 31 03:20:58 EST 2014 Please logout when you are done to release system resources allocated for you. Record 1 out of 1 ( Use the "Back" button of the Internet Browser to return to TESS) Word Mark CC CC CC CC Goods and Services (CANCELLED) IC 004. US 001 006 015. G & S: [ CANDLES ]. FIRST USE: 20011000. FIRST USE IN COMMERCE: 20011000 IC 006. US 002 012 013 014 023 025 050. G & S: METAL KEY FOBS. FIRST USE: 20001200. FIRST USE IN COMMERCE: 20001200 IC 009. US 021 023 026 036 038. G & S: SUNGLASSES AND EYEGLASS CASES. FIRST USE: 20010300. FIRST USE IN COMMERCE: 20010300 IC 014. US 002 027 028 050. G & S: WATCHES AND WATCH STRAPS; JEWELRY, NAMELY, NECKLACES, BRACELETS, EARRINGS, RINGS. FIRST USE: 20010900. FIRST USE IN COMMERCE: 20010900 (CANCELLED) IC 016. US 002 005 022 023 029 037 038 050. G & S: [ ; DIARIES AND PLANNING DIARIES MADE OF LEATHER ]. FIRST USE: 20010200. FIRST USE IN COMMERCE: 20010200 IC 018. US 001 002 003 022 041. G & S: LEATHER KEY FOBS, UMBRELLAS, DOG AND CAT COLLARS AND LEASHES. FIRST USE: 20010300. FIRST USE IN COMMERCE: 20010300 (CANCELLED) IC 025. US 022 039. G & S: [ CLOTHING, NAMELY, [ SKIRTS AND PANTS, AND ] DOG COATS ]. FIRST USE: 20011200. FIRST USE IN COMMERCE: 20011200 Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Serial Number 76348453 Filing Date December 14, 2001 Current Basis 1A Original Filing Basis 1B Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 71 of 190 PageID #:459 Published for Opposition October 1, 2002 Change In Registration CHANGE IN REGISTRATION HAS OCCURRED Registration Number 2832589 Registration Date April 13, 2004 Owner (REGISTRANT) Coach Services, Inc. CORPORATION MARYLAND 516 West 34th Street New York NEW YORK 10001 Attorney of Record Sarah B. Kickham Prior Registrations 2592963;2626565 Description of Mark Color is not claimed as a feature of the mark. Type of Mark TRADEMARK Register PRINCIPAL Affidavit Text SECT 15. SECT 8 (6-YR). PARTIAL SECTION 8(10-YR) 20140407. Renewal 1ST RENEWAL 20140407 Live/Dead Indicator LIVE |.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 72 of 190 PageID #:460 United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Wed Dec 31 03:20:58 EST 2014 Please logout when you are done to release system resources allocated for you. Record 1 out of 1 ( Use the "Back" button of the Internet Browser to return to TESS) Word Mark CC CC CC CC Goods and Services IC 009. US 021 023 026 036 038. G & S: Cases for spectacles and sunglasses; Eyeglass cases; Eyeglasses; Frames for spectacles and sunglasses; Sunglasses. FIRST USE: 20010300. FIRST USE IN COMMERCE: 20010300 Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Trademark Search Facility Classification Code LETS-1 CCCCCCCC A single letter, multiples of a single letter or in combination with a design SHAPES-OVALS Oval figures or designs including incomplete ovals and one or more ovals Serial Number 77687107 Filing Date March 10, 2009 Current Basis 1A Original Filing Basis 1A Published for Opposition July 28, 2009 Registration Number 3695290 Registration Date October 13, 2009 Owner (REGISTRANT) Coach Services, Inc. CORPORATION MARYLAND 516 West 34th Street New York NEW YORK 10001 Attorney of Record Sarah B. Kickham Prior 2832589 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 73 of 190 PageID #:461 Registrations Description of Mark Color is not claimed as a feature of the mark. The mark consists of a repeating pattern featuring stylized letters "CC" in different orientations. Type of Mark TRADEMARK Register PRINCIPAL-2(F) Live/Dead Indicator LIVE |.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 74 of 190 PageID #:462 United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Wed Dec 31 03:20:58 EST 2014 Please logout when you are done to release system resources allocated for you. Record 1 out of 1 ( Use the "Back" button of the Internet Browser to return to TESS) Word Mark CC CC CC CC Goods and Services IC 009. US 021 023 026 036 038. G & S: Protective covers and cases for cell phones, laptops and portable media players. FIRST USE: 20130415. FIRST USE IN COMMERCE: 20130415 Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Serial Number 85655987 Filing Date June 19, 2012 Current Basis 1A Original Filing Basis 1B Published for Opposition September 4, 2012 Registration Number 4365898 Registration Date July 9, 2013 Owner (REGISTRANT) Coach Services, Inc. CORPORATION MARYLAND 516 West 34th Street New York NEW YORK 10001 Attorney of Record Sarah B. Kickham Prior Registrations 2822318;2822629;3396554;AND OTHERS Description of Mark Color is not claimed as a feature of the mark. The mark consists of a repeating pattern featuring a stylized letter "C" in different orientations. Type of Mark TRADEMARK Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 75 of 190 PageID #:463 Register PRINCIPAL Live/Dead Indicator LIVE |.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 76 of 190 PageID #:464 EXHIBIT D Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 77 of 190 PageID #:465 Trademark Electronic Search System (TESS) CS EX TM 1 D registered .htm[1/5/2015 9:06:06 AM] United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Sun Jan 4 03:20:58 EST 2015 Please logout when you are done to release system resources allocated for you. Record 1 out of 1 ( Use the "Back" button of the Internet Browser to return to TESS) Word Mark D Goods and Services IC 018. US 001 002 003 022 041. G & S: Leather goods, namely, leather handbags, traveling bags, shoulder bags, wallets and key chains. FIRST USE: 20110401. FIRST USE IN COMMERCE: 20110401 Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Serial Number 85298333 Filing Date April 19, 2011 Current Basis 1A Original Filing Basis 1A Published for Opposition June 4, 2013 Registration Number 4438198 Registration Date November 26, 2013 Owner (REGISTRANT) DI DA IMPORT & EXPORT INC. CORPORATION NEW YORK 1205 BROADWAY RM 203 NEW YORK NEW YORK 10001 (LAST LISTED OWNER) DI DA IMPORT AND EXPORT INC CORPORATION NEW YORK 7416 GRAND AVE ELMHURST NEW YORK 11373 Assignment Recorded ASSIGNMENT RECORDED Prior Registrations 4298751 Description of Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 78 of 190 PageID #:466 Trademark Electronic Search System (TESS) CS EX TM 1 D registered .htm[1/5/2015 9:06:06 AM] Mark Color is not claimed as a feature of the mark. The mark consists of letter "D" as shown in the mark. Type of Mark TRADEMARK Register PRINCIPAL Live/Dead Indicator LIVE |.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 79 of 190 PageID #:467 EXHIBIT E Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 80 of 190 PageID #:468 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 81 of 190 PageID #:469 PTO Form 1478 (Rev 9/2006) OMB No. 0651-0009 (Exp 12/31/2011) Trademark/Service Mark Application, Principal Register Serial Number: 85267743 Filing Date: 03/15/2011 The table below presents the data as entered. Input Field Entered SERIAL NUMBER 85267743 MARK INFORMATION *MARK \\TICRS\EXPORT11\IMAGEOUT 11\852\677\85267743\xml1\ APP0002.JPG SPECIAL FORM YES USPTO-GENERATED IMAGE NO COLOR MARK NO *DESCRIPTION OF THE MARK (and Color Location, if applicable) The mark consists of D like figures facing each other, two D like figures placed above them facing downwards and two D like figures placed below them facing upwards as shown in the mark. PIXEL COUNT ACCEPTABLE YES PIXEL COUNT 750 x 600 REGISTER Principal APPLICANT INFORMATION *OWNER OF MARK DIDA import & export inc *STREET 140-34 Negundo Ave *CITY Flushing *STATE (Required for U.S. applicants) New York *COUNTRY United States *ZIP/POSTAL CODE (Required for U.S. applicants only) 11355 LEGAL ENTITY INFORMATION TYPE corporation Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 82 of 190 PageID #:470 STATE/COUNTRY OF INCORPORATION New York GOODS AND/OR SERVICES AND BASIS INFORMATION INTERNATIONAL CLASS 018 *IDENTIFICATION Leather goods, namely, leather handbags, traveling bags, shoulder bags, wallets and key chains. FILING BASIS SECTION 1(b) ATTORNEY INFORMATION NAME Raj Abhyanker ATTORNEY DOCKET NUMBER 24954 FIRM NAME Raj Abhyanker, P.C. INTERNAL ADDRESS Suite 8 STREET 1580 W. El Camino Real CITY Mountain View STATE California COUNTRY United States ZIP/POSTAL CODE 94040 PHONE 650-965-8731 FAX 650-989-2131 EMAIL ADDRESS trademarks@rajpatent.com AUTHORIZED TO COMMUNICATE VIA EMAIL Yes OTHER APPOINTED ATTORNEY Christopher Ditico,Vandana Balakrishnan, Jennifer Lu, Hong Cui, Ashwin Anand, Benjamin Ashurov, John Salcido CORRESPONDENCE INFORMATION NAME Raj Abhyanker FIRM NAME Raj Abhyanker, P.C. INTERNAL ADDRESS Suite 8 STREET 1580 W. El Camino Real CITY Mountain View STATE California COUNTRY United States Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 83 of 190 PageID #:471 ZIP/POSTAL CODE 94040 PHONE 650-965-8731 FAX 650-989-2131 EMAIL ADDRESS trademarks@rajpatent.com AUTHORIZED TO COMMUNICATE VIA EMAIL Yes FEE INFORMATION NUMBER OF CLASSES 1 FEE PER CLASS 325 *TOTAL FEE DUE 325 *TOTAL FEE PAID 325 SIGNATURE INFORMATION SIGNATURE /Raj Abhyanker/ SIGNATORY'S NAME Raj Abhyanker SIGNATORY'S POSITION Attorney of record, CA bar member DATE SIGNED 03/16/2011 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 84 of 190 PageID #:472 PTO Form 1478 (Rev 9/2006) OMB No. 0651-0009 (Exp 12/31/2011) Trademark/Service Mark Application, Principal Register Serial Number: 85267743 Filing Date: 03/15/2011 To the Commissioner for Trademarks: MARK: (Stylized and/or Design, see mark) The applicant is not claiming color as a feature of the mark. The mark consists of D like figures facing each other, two D like figures placed above them facing downwards and two D like figures placed below them facing upwards as shown in the mark. The applicant, DIDA import & export inc, a corporation of New York, having an address of 140-34 Negundo Ave Flushing, New York 11355 United States requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following: International Class 018: Leather goods, namely, leather handbags, traveling bags, shoulder bags, wallets and key chains. Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)). The applicant's current Attorney Information: Raj Abhyanker and Christopher Ditico,Vandana Balakrishnan, Jennifer Lu, Hong Cui, Ashwin Anand, Benjamin Ashurov, John Salcido of Raj Abhyanker, P.C. Suite 8 1580 W. El Camino Real Mountain View, California 94040 United States The attorney docket/reference number is 24954. The applicant's current Correspondence Information: Raj Abhyanker Raj Abhyanker, P.C. Suite 8 1580 W. El Camino Real Mountain View, California 94040 650-965-8731(phone) Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 85 of 190 PageID #:473 650-989-2131(fax) trademarks@rajpatent.com (authorized) A fee payment in the amount of $325 has been submitted with the application, representing payment for 1 class(es). Declaration 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. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true. Signature: /Raj Abhyanker/ Date Signed: 03/16/2011 Signatory's Name: Raj Abhyanker Signatory's Position: Attorney of record, CA bar member RAM Sale Number: 4990 RAM Accounting Date: 03/16/2011 Serial Number: 85267743 Internet Transmission Date: Tue Mar 15 17:52:50 EDT 2011 TEAS Stamp: USPTO/BAS-115.252.151.6-2011031517525096 4606-85267743-48064fb419d6f47a5f969b4ce8 ae2291bda-CC-4990-20110315174557526674 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 86 of 190 PageID #:474 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 87 of 190 PageID #:475 *** User:emartin *** # Total Dead Live Live Status/ Search Marks Marks Viewed Viewed Search Docs Images Duration 01 1 0 1 1 0:01 "dddddd"[bi,ti] 02 3 1 2 2 0:01 "dd dd dd"[bi,ti] 03 0 0 0 0 0:02 "d d d d d d"[bi,ti] 04 0 0 0 0 0:01 "ddd ddd"[bi,ti] 05 0 0 0 0 0:01 "dd d d dd"[bi,ti] 06 0 0 0 0 0:01 "dd d d d d"[bi,ti] 07 0 0 0 0 0:02 "d d d d dd"[bi,ti] 08 0 0 0 0 0:01 "d dd dd d"[bi,ti] 09 20318 N/A 0 0 0:01 "d"[bi,ti] 10 7408 N/A 0 0 0:04 "d"[bi,ti] not dead[ld] 11 1659913 N/A 0 0 0:02 "018"[cc] 12 2444 N/A 0 0 0:01 10 and 11 13 101040 N/A 0 0 0:03 ("018" or "200" or "a" or "b")[ic] 14 278 0 278 250 0:01 12 and 13 15 243 0 243 232 0:01 "dd"[bi,ti] not (dead[ld] or 14 or 1 or 2) 16 144 0 144 123 0:02 "d d"[bi,ti] not (dead[ld] or 14 or 1 or 2 or 15) 17 21 N/A 0 0 0:01 "ddd"[bi,ti] not (dead[ld] or 14 or 1 or 2 or 15 or 16) 18 0 0 0 0 0:01 "d d d"[bi,ti] not (dead[ld] or 14 or 1 or 2 or 15 or 16) 19 6 N/A 0 0 0:01 "dddd"[bi,ti] not (dead[ld] or 14 or 1 or 2 or 15 or 16) 20 0 0 0 0 0:01 "dd dd"[bi,ti] not (dead[ld] or 14 or 1 or 2 or 15 or 16) 21 0 0 0 0 0:02 "d d d d"[bi,ti] not (dead[ld] or 14 or 1 or 2 or 15 or 16) Session started 6/17/11 3:47:43 PM Session finished 6/17/11 3:58:17 PM Total search duration 0 minutes 31 seconds Session duration 10 minutes 34 seconds Defaut NEAR limit=1ADJ limit=1 Sent to TICRS as Serial Number: 85267743 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 88 of 190 PageID #:476 Trademark Snap Shot Publication Stylesheet (Table presents the data on Publication Approval) OVERVIEW SERIAL NUMBER 85267743 FILING DATE 03/15/2011 REG NUMBER 0000000 REG DATE N/A REGISTER PRINCIPAL MARK TYPE TRADEMARK INTL REG # N/A INTL REG DATE N/A TM ATTORNEY MARTIN, EUGENIA K L.O. ASSIGNED 114 PUB INFORMATION RUN DATE 06/18/2011 PUB DATE N/A STATUS 680-APPROVED FOR PUBLICATON STATUS DATE 06/17/2011 LITERAL MARK ELEMENT DDDDDD DATE ABANDONED N/A DATE CANCELLED N/A SECTION 2F NO SECTION 2F IN PART NO SECTION 8 NO SECTION 8 IN PART NO SECTION 15 NO REPUB 12C N/A RENEWAL FILED NO RENEWAL DATE N/A DATE AMEND REG N/A FILING BASIS FILED BASIS CURRENT BASIS AMENDED BASIS 1 (a) NO 1 (a) NO 1 (a) NO 1 (b) YES 1 (b) YES 1 (b) NO 44D NO 44D NO 44D NO 44E NO 44E NO 44E NO 66A NO 66A NO NO BASIS NO NO BASIS NO MARK DATA STANDARD CHARACTER MARK NO LITERAL MARK ELEMENT DDDDDD Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 89 of 190 PageID #:477 MARK DRAWING CODE 5-AN ILLUSTRATION DRAWING WITH WORD(S)/LETTER(S)/NUMBER(S) IN STYLIZED FORM COLOR DRAWING FLAG NO CURRENT OWNER INFORMATION PARTY TYPE 10-ORIGINAL APPLICANT NAME DIDA import & export inc ADDRESS 140-34 Negundo Ave Flushing, NY 11355 ENTITY 03-CORPORATION CITIZENSHIP New York GOODS AND SERVICES INTERNATIONAL CLASS 018 DESCRIPTION TEXT Leather goods, namely, leather handbags, traveling bags, shoulder bags, wallets and key chains GOODS AND SERVICES CLASSIFICATION INTERNATIONAL CLASS 018 FIRST USE DATE NONE FIRST USE IN COMMERCE DATE NONE CLASS STATUS 6-ACTIVE MISCELLANEOUS INFORMATION/STATEMENTS CHANGE IN REGISTRATION NO COLORS CLAIMED STATEMENT Color is not claimed as a feature of the mark. DESCRIPTION OF MARK The mark consists of D like figures facing each other, two D like figures placed above them facing downwards and two D like figures placed below them facing upwards as shown in the mark. PSEUDO MARK DIDA PROSECUTION HISTORY DATE ENT CD ENT TYPE DESCRIPTION ENT NUM 06/17/2011 CNSA P APPROVED FOR PUB - PRINCIPAL REGISTER 004 06/14/2011 DOCK D ASSIGNED TO EXAMINER 003 03/21/2011 NWOS I NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM 002 03/18/2011 NWAP I NEW APPLICATION ENTERED IN TRAM 001 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 90 of 190 PageID #:478 CURRENT CORRESPONDENCE INFORMATION ATTORNEY Raj Abhyanker CORRESPONDENCE ADDRESS RAJ ABHYANKER RAJ ABHYANKER, P.C. 1580 W EL CAMINO REAL STE 8 MOUNTAIN VIEW, CA 94040-2462 DOMESTIC REPRESENTATIVE NONE Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 91 of 190 PageID #:479 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 92 of 190 PageID #:480 From: TMOfficialNotices@USPTO.GOV Sent: Tuesday, August 2, 2011 00:36 AM To: trademarks@rajpatent.com Subject: Official USPTO Notice of Publication: Serial Number 85267743 NOTICE OF PUBLICATION Serial Number: 85-267,743 Mark: DDDDDD(SYTLIZED/DESIGN) International Class(es): 018 Applicant: DIDA import & export inc Attorney Reference Number: 24954 The mark identified above has been published in the Trademark Official Gazette (OG) on Aug 02, 2011. Any party who believes it will be damaged by the registration of the mark may file a notice of opposition (or extension of time therefor) with the Trademark Trial and Appeal Board. If no party files an opposition or extension request within thirty (30) days after the publication date, then within twelve (12) weeks of the publication date a notice of allowance (NOA) should issue. (Note: The applicant must file a Statement of Use or Extension Request within six (6) months after the NOA issues.) On the publication date or shortly thereafter, the applicant should carefully review the information that appears in the OG for accuracy (see steps, below). If any information is incorrect, the applicant should immediately email the requested correction to TMPostPubQuery@uspto.gov. For general information about this notice, please contact the Trademark Assistance Center at 1-800-786-9199. 1. Click on the following link or paste the URL into an internet browser: http://www.uspto.gov/web/trademarks/tmog/20110802_OG.pdf#page=1 2. Wait for the total OG to download completely (as indicated on bottom of OG page). 3. At the top/side of the displayed page, click wherever the "binoculars" icon appears. 4. Enter in the "search" box the name of the applicant (for individual: last name, first name) or the serial number in this exact format (with hyphen and comma): 85-267,743, e.g. 5. View the retrieved result(s). If multiple results appear in the "results" box, click directly on each "search term" shown in the box to access all separate appearances in the OG. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 93 of 190 PageID #:481 PTO Form 2196 (Rev 9/2005) OMB No. 0651-0056 (Exp 09/30/2014) Revocation of Attorney/Domestic Representative and/or Appointment of Attorney/Domestic Representative The table below presents the data as entered. Input Field Entered SERIAL NUMBER 85267743 LAW OFFICE ASSIGNED LAW OFFICE 114 MARK SECTION MARK DDDDDD (stylized and/or with design) ATTORNEY SECTION ORIGINAL ADDRESS 24954 140-34 NEGUNDO AVE FLUSHING New York (NY) 11355 US 650-965-8731 650-989-2131 trademarks@rajpatent.com STATEMENT TEXT By submission of this request, the undersigned REVOKES the power of attorney currently of record, as listed above. NEW CORRESPONDENCE ADDRESS NAME DIDA IMPORT & EXPORT INC FIRM NAME DIDI IMPORT & EXPORT INC DOCKET/REFERENCE NUMBER 24954 STREET 7416 GRAND AVE CITY ELMHURST STATE New York COUNTRY United States POSTAL/ZIP CODE 11373 PHONE 718-476-8888 FAX 718-476-8885 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 94 of 190 PageID #:482 EMAIL DIDANEWYORK@GMAIL.COM AUTHORIZED TO COMMUNICATE VIA E-MAIL YES SIGNATURE SECTION SIGNATURE /LINDA ZHU/ SIGNATORY NAME LINDA ZHU SIGNATORY DATE 11/01/2013 SIGNATORY POSITION MANAGER SIGNATORY PHONE NUMBER 718-476-8888 FILING INFORMATION SECTION SUBMIT DATE Fri Nov 01 15:44:27 EDT 2013 TEAS STAMP USPTO/RAA-108.12.155.34-2 0131101154427369118-85267 743-5006e2489173c8f2cf338 13386731e7c5e7568a85f6d29 93f13695d1daabaa7e-N/A-N/ A-20131101154314211809 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 95 of 190 PageID #:483 PTO Form 2196 (Rev 9/2005) OMB No. 0651-0056 (Exp 09/30/2014) Revocation of Attorney/Domestic Representative and/or Appointment of Attorney/Domestic Representative To the Commissioner for Trademarks: MARK: DDDDDD (stylized and/or with design) SERIAL NUMBER: 85267743 The original attorney 24954 140-34 NEGUNDO AVE FLUSHING New York 11355 US 650-965-8731 650-989-2131 trademarks@rajpatent.com By submission of this request, the undersigned REVOKES the power of attorney currently of record, as listed above. Original Correspondence Address : 140-34 NEGUNDO AVE FLUSHING New York 11355 US 650-965-8731 650-989-2131 trademarks@rajpatent.com The following is to be used as the correspondence address: DIDA IMPORT & EXPORT INC DIDI IMPORT & EXPORT INC 7416 GRAND AVE ELMHURST, New York 11373 United States 718-476-8888 718-476-8885 DIDANEWYORK@GMAIL.COM The attorney docket/reference number is 24954. Signature: /LINDA ZHU/ Date: 11/01/2013 Signatory's Name: LINDA ZHU Signatory's Position: MANAGER Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 96 of 190 PageID #:484 Signatory's Phone Number: 718-476-8888 Serial Number: 85267743 Internet Transmission Date: Fri Nov 01 15:44:27 EDT 2013 TEAS Stamp: USPTO/RAA-108.12.155.34-2013110115442736 9118-85267743-5006e2489173c8f2cf33813386 731e7c5e7568a85f6d2993f13695d1daabaa7e-N /A-N/A-20131101154314211809 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 97 of 190 PageID #:485 USPTO TSDR Case Viewer USPTO TSDR Case Viewer Case Id 85267743 Document Description 1. Notice of Abandonment Mail/Create Date Nov. 04, 2013 of Your browser does not support inline frames or is currently configured not to display inline frames. file:///C|/Users/carolyn/Documents/DI%20DA/DOCS%20P...214/7%20USPTO%20TSDR%20743%20Notice%20of%20Aban.htm4/23/2014 6:57:05 PM Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 98 of 190 PageID #:486 Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA426908 Filing date: 08/24/2011 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Applicant: DIDA import & export inc Application Serial Number: 85267743 Application Filing Date: 03/15/2011 Mark: DDDDDD Date of Publication 08/02/2011 First 90 Day Request for Extension of Time to Oppose for Good Cause Pursuant to 37 C.F.R. Section 2.102, Coach Service, Inc., 516 West 34th Street, New York, NY 10001, UNITED STATES, a corporation organized under the laws of Maryland , respectfully requests that it be granted a 90-day extension of time to file a notice of opposition against the above-identified mark for cause shown . Potential opposer believes that good causes are established for this request by: - The potential opposer needs additional time to investigate the claim - The potential opposer needs additional time to confer with counsel The time within which to file a notice of opposition is set to expire on 09/01/2011. Coach Service, Inc. respectfully requests that the time period within which to file an opposition be extended until 11/30/2011. Respectfully submitted, /suzanne white/ 08/24/2011 Suzanne White Senior Counsel Coach Service, Inc. 516 West 34th Street New York, NY 10001 UNITED STATES swhite@coach.com 212 629 2217 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 99 of 190 PageID #:487 Suzanne White Coach Service, Inc. 516 West 34th Street New York, NY 10001 Mailed: August 24, 2011 Serial No.: 85267743 ESTTA TRACKING NO: ESTTA426908 The request to extend time to oppose is granted until 11/30/2011 on behalf of potential opposer Coach Service, Inc. Please do not hesitate to contact the Trademark Trial and Appeal Board at (571)272-8500 if you have any questions relating to this extension. Note from the Trademark Trial and Appeal Board TTAB forms for electronic filing of extensions of time to oppose, notices of opposition, petition for cancellation, notice of ex parte appeal, and inter partes filings are now available at http://estta.uspto.gov. Images of TTAB proceeding files can be viewed using TTABVue at http://ttabvue.uspto.gov. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 100 of 190 PageID #:488 Mailed: November 28, 2011 Opposition No. 91202713 Serial No. 85267743 RAJ ABHYANKER RAJ ABHYANKER, P.C. 1580 W EL CAMINO REAL STE 8 MOUNTAIN VIEW, CA 94040-2462 trademarks@rajpatent.com Coach Service, Inc. v. DIDA import & export inc Suzanne White Coach Service, Inc. 516 West 34th Street New York, NY 10001 swhite@coach.com ESTTA443153 A notice of opposition to the registration sought by the above- identified application has been filed. A service copy of the notice of opposition was forwarded to applicant (defendant) by the opposer (plaintiff). An electronic version of the notice of opposition is viewable in the electronic file for this proceeding via the Board's TTABVUE system: http://ttabvue.uspto.gov/ttabvue/v?qs=91202713. Proceedings will be conducted in accordance with the Trademark Rules of Practice, set forth in Title 37, part 2, of the Code of Federal Regulations ("Trademark Rules"). These rules may be viewed at the USPTO's trademarks page: http://www.uspto.gov/trademarks/index.jsp. The Board's main webpage (http://www.uspto.gov/trademarks/process/appeal/index.jsp) includes information on amendments to the Trademark Rules applicable to Board proceedings, on Alternative Dispute Resolution (ADR), Frequently Asked Questions about Board proceedings, and a web link to the Board's manual of procedure (the TBMP). Plaintiff must notify the Board when service has been ineffective, within 10 days of the date of receipt of a returned service copy or the date on which plaintiff learns that service has been ineffective. Plaintiff has no subsequent duty to investigate the defendant's whereabouts, but if plaintiff by its own voluntary investigation or through any other means discovers a newer correspondence address for UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 101 of 190 PageID #:489 2 the defendant, then such address must be provided to the Board. Likewise, if by voluntary investigation or other means the plaintiff discovers information indicating that a different party may have an interest in defending the case, such information must be provided to the Board. The Board will then effect service, by publication in the Official Gazette if necessary. See Trademark Rule 2.118. In circumstances involving ineffective service or return of defendant's copy of the Board's institution order, the Board may issue an order noting the proper defendant and address to be used for serving that party. Defendant's ANSWER IS DUE FORTY DAYS after the mailing date of this order. (See Patent and Trademark Rule 1.7 for expiration of this or any deadline falling on a Saturday, Sunday or federal holiday.) Other deadlines the parties must docket or calendar are either set forth below (if you are reading a mailed paper copy of this order) or are included in the electronic copy of this institution order viewable in the Board's TTABVUE system at the following web address: http://ttabvue.uspto.gov/ttabvue/. Defendant's answer and any other filing made by any party must include proof of service. See Trademark Rule 2.119. If they agree to, the parties may utilize electronic means, e.g., e-mail or fax, during the proceeding for forwarding of service copies. See Trademark Rule 2.119(b)(6). The parties also are referred in particular to Trademark Rule 2.126, which pertains to the form of submissions. Paper submissions, including but not limited to exhibits and transcripts of depositions, not filed in accordance with Trademark Rule 2.126 may not be given consideration or entered into the case file. As noted in the schedule of dates for this case, the parties are required to have a conference to discuss: (1) the nature of and basis for their respective claims and defenses, (2) the possibility of settling the case or at least narrowing the scope of claims or defenses, and (3) arrangements relating to disclosures, discovery and Time to Answer 1/7/2012 Deadline for Discovery Conference 2/6/2012 Discovery Opens 2/6/2012 Initial Disclosures Due 3/7/2012 Expert Disclosures Due 7/5/2012 Discovery Closes 8/4/2012 Plaintiff's Pretrial Disclosures 9/18/2012 Plaintiff's 30-day Trial Period Ends 11/2/2012 Defendant's Pretrial Disclosures 11/17/2012 Defendant's 30-day Trial Period Ends 1/1/2013 Plaintiff's Rebuttal Disclosures 1/16/2013 Plaintiff's 15-day Rebuttal Period Ends 2/15/2013 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 102 of 190 PageID #:490 3 introduction of evidence at trial, should the parties not agree to settle the case. See Trademark Rule 2.120(a)(2). Discussion of the first two of these three subjects should include a discussion of whether the parties wish to seek mediation, arbitration or some other means for resolving their dispute. Discussion of the third subject should include a discussion of whether the Board's Accelerated Case Resolution (ACR) process may be a more efficient and economical means of trying the involved claims and defenses. Information on the ACR process is available at the Board's main webpage. Finally, if the parties choose to proceed with the disclosure, discovery and trial procedures that govern this case and which are set out in the Trademark Rules and Federal Rules of Civil Procedure, then they must discuss whether to alter or amend any such procedures, and whether to alter or amend the Standard Protective Order (further discussed below). Discussion of alterations or amendments of otherwise prescribed procedures can include discussion of limitations on disclosures or discovery, willingness to enter into stipulations of fact, and willingness to enter into stipulations regarding more efficient options for introducing at trial information or material obtained through disclosures or discovery. The parties are required to conference in person, by telephone, or by any other means on which they may agree. A Board interlocutory attorney or administrative trademark judge will participate in the conference, upon request of any party, provided that such participation is requested no later than ten (10) days prior to the deadline for the conference. See Trademark Rule 2.120(a)(2). The request for Board participation must be made through the Electronic System for Trademark Trials and Appeals (ESTTA) or by telephone call to the interlocutory attorney assigned to the case, whose name can be found by referencing the TTABVUE record for this case at http://ttabvue.uspto.gov/ttabvue/. The parties should contact the assigned interlocutory attorney or file a request for Board participation through ESTTA only after the parties have agreed on possible dates and times for their conference. Subsequent participation of a Board attorney or judge in the conference will be by telephone and the parties shall place the call at the agreed date and time, in the absence of other arrangements made with the assigned interlocutory attorney. The Board's Standard Protective Order is applicable to this case, but the parties may agree to supplement that standard order or substitute a protective agreement of their choosing, subject to approval by the Board. The standard order is available for viewing at: http://www.uspto.gov/trademarks/process/appeal/guidelines/stndagmnt.jsp. Any party without access to the web may request a hard copy of the standard order from the Board. The standard order does not automatically protect a party's confidential information and its provisions must be utilized as needed by the parties. See Trademark Rule 2.116(g). Information about the discovery phase of the Board proceeding is available in chapter 400 of the TBMP. By virtue of amendments to the Trademark Rules effective November 1, 2007, the initial disclosures and expert disclosures scheduled during the discovery phase are required only in cases commenced on or after that date. The TBMP has not yet been amended to include information on these disclosures and the parties are referred to the August 1, 2007 Notice of Final Rulemaking (72 Fed. Reg. 42242) posted on the Board's webpage. The deadlines for Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 103 of 190 PageID #:491 4 pretrial disclosures included in the trial phase of the schedule for this case also resulted from the referenced amendments to the Trademark Rules, and also are discussed in the Notice of Final Rulemaking. The parties must note that the Board allows them to utilize telephone conferences to discuss or resolve a wide range of interlocutory matters that may arise during this case. In addition, the assigned interlocutory attorney has discretion to require the parties to participate in a telephone conference to resolve matters of concern to the Board. See TBMP § 502.06(a) (2d ed. rev. 2004). The TBMP includes information on the introduction of evidence during the trial phase of the case, including by notice of reliance and by taking of testimony from witnesses. See TBMP §§ 703 and 704. Any notice of reliance must be filed during the filing party's assigned testimony period, with a copy served on all other parties. Any testimony of a witness must be both noticed and taken during the party's testimony period. A party that has taken testimony must serve on any adverse party a copy of the transcript of such testimony, together with copies of any exhibits introduced during the testimony, within thirty (30) days after the completion of the testimony deposition. See Trademark Rule 2.125. Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral hearing after briefing is not required but will be scheduled upon request of any party, as provided by Trademark Rule 2.129. If the parties to this proceeding are (or during the pendency of this proceeding become) parties in another Board proceeding or a civil action involving related marks or other issues of law or fact which overlap with this case, they shall notify the Board immediately, so that the Board can consider whether consolidation or suspension of proceedings is appropriate. ESTTA NOTE: For faster handling of all papers the parties need to file with the Board, the Board strongly encourages use of electronic filing through the Electronic System for Trademark Trials and Appeals (ESTTA). Various electronic filing forms, some of which may be used as is, and others which may require attachments, are available at http://estta.uspto.gov. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 104 of 190 PageID #:492 Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA443153 Filing date: 11/28/2011 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Notice of Opposition Notice is hereby given that the following party opposes registration of the indicated application. Opposer Information Name Coach Service, Inc. Granted to Date of previous extension 11/30/2011 Address 516 West 34th Street New York, NY 10001 UNITED STATES Attorney information Suzanne White Coach Service, Inc. 516 West 34th Street New York, NY 10001 UNITED STATES swhite@coach.com Phone:212 629 2217 Applicant Information Application No 85267743 Publication date 08/02/2011 Opposition Filing Date 11/28/2011 Opposition Period Ends 11/30/2011 Applicant DIDA import & export inc 140-34 Negundo Ave Flushing, NY 11355 UNITED STATES Goods/Services Affected by Opposition Class 018. All goods and services in the class are opposed, namely: Leather goods, namely, leather handbags, traveling bags, shoulder bags, wallets and key chains Grounds for Opposition Priority and likelihood of confusion Trademark Act section 2(d) Marks Cited by Opposer as Basis for Opposition U.S. Registration No. 3396554 Application Date 09/12/2006 Registration Date 03/11/2008 Foreign Priority Date NONE Word Mark CC Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 105 of 190 PageID #:493 Design Mark Description of Mark The mark consists of a repeating pattern featuring a stylized letter "C" in different orientations. Goods/Services Class 003. First use: First Use: 2007/04/01 First Use In Commerce: 2007/04/01 Fragrances for personal use; Lipsticks U.S. Registration No. 2592963 Application Date 05/10/2000 Registration Date 07/09/2002 Foreign Priority Date NONE Word Mark CC CC CC CC Design Mark Description of Mark NONE Goods/Services Class 025. First use: First Use: 2001/04/00 First Use In Commerce: 2001/04/00 CLOTHING, NAMELY, SCARVES, TIES, GLOVES, BELTS, CAPS, HATS, SHOES, [ SLIPPERS, ] COATS, JACKETS [ AND SUSPENDERS ] U.S. Registration No. 2626565 Application Date 05/10/2000 Registration Date 09/24/2002 Foreign Priority Date NONE Word Mark CC CC CC CC Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 106 of 190 PageID #:494 Design Mark Description of Mark NONE Goods/Services Class 018. First use: First Use: 2001/04/00 First Use In Commerce: 2001/04/00 HANDBAGS, PURSES, CLUTCHES, SHOULDER BAGS, PORTFOLIOS, TOTE BAGS, WAIST POUCHES, BACKPACKS, COSMETIC CASES SOLD EMPTY, TOILETRY CASES SOLD EMPTY, BRIEFCASES, LUGGAGE, GARMENT BAGS, BILLFOLDS, WALLETS, KEY CASES, BUSINESS CARD CASES, CREDIT CARD CASES, PASSPORT HOLDERS, IDENTIFICATION CASES, [TIE CASES] AND COIN POUCHES U.S. Registration No. 3695290 Application Date 03/10/2009 Registration Date 10/13/2009 Foreign Priority Date NONE Word Mark CC CC CC CC Design Mark Description of Mark The mark consists of a repeating pattern featuring stylized letters "CC" in different orientations. Goods/Services Class 009. First use: First Use: 2001/03/00 First Use In Commerce: 2001/03/00 Cases for spectacles and sunglasses; Eyeglass cases; Eyeglasses; Frames for spectacles and sunglasses; Sunglasses U.S. Registration No. 2832589 Application Date 12/14/2001 Registration Date 04/13/2004 Foreign Priority Date NONE Word Mark CC CC CC CC Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 107 of 190 PageID #:495 Design Mark Description of Mark NONE Goods/Services Class 004. First use: First Use: 2001/10/00 First Use In Commerce: 2001/10/00 CANDLES Class 006. First use: First Use: 2000/12/00 First Use In Commerce: 2000/12/00 METAL KEY FOBS Class 009. First use: First Use: 2001/03/00 First Use In Commerce: 2001/03/00 SUNGLASSES AND EYEGLASS CASES Class 014. First use: First Use: 2001/09/00 First Use In Commerce: 2001/09/00 WATCHES AND WATCH STRAPS; JEWELRY, NAMELY, NECKLACES, BRACELETS, EARRINGS, RINGS Class 016. First use: First Use: 2001/02/00 First Use In Commerce: 2001/02/00 ; DIARIES AND PLANNING DIARIES MADE OF LEATHER Class 018. First use: First Use: 2001/03/00 First Use In Commerce: 2001/03/00 LEATHER KEY FOBS, UMBRELLAS, DOG AND CAT COLLARS AND LEASHES Class 025. First use: First Use: 2001/12/00 First Use In Commerce: 2001/12/00 CLOTHING, NAMELY, [ SKIRTS AND PANTS, AND ] DOG COATS U.S. Registration No. 2822318 Application Date 08/14/2002 Registration Date 03/16/2004 Foreign Priority Date NONE Word Mark CC Design Mark Description of Mark The mark consists of a repeating pattern featuring a stylized letter "C" in different orientations. Goods/Services Class 024. First use: First Use: 2002/08/02 First Use In Commerce: 2002/08/02 Fabric for use in the manufacture of clothing, shoes, handbags and luggage Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 108 of 190 PageID #:496 U.S. Registration No. 2822629 Application Date 02/20/2003 Registration Date 03/16/2004 Foreign Priority Date NONE Word Mark CC Design Mark Description of Mark NONE Goods/Services Class 035. First use: First Use: 2002/10/28 First Use In Commerce: 2002/10/28 Retail store services featuring handbags, luggage, home furnishings, stationary, jewelry, watches, small leather goods, clothing, accessories, shoes, eyewear, toys, desk accessories and pet products Attachments 78972141#TMSN.jpeg ( 1 page )( bytes ) 78007598#TMSN.gif ( 1 page )( bytes ) 78007596#TMSN.gif ( 1 page )( bytes ) 77687107#TMSN.jpeg ( 1 page )( bytes ) 76348453#TMSN.gif ( 1 page )( bytes ) 76441558#TMSN.gif ( 1 page )( bytes ) 76491780#TMSN.gif ( 1 page )( bytes ) Statement of Opposition - 85267743.pdf ( 4 pages )(106301 bytes ) Certificate of Service The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by Overnight Courier on this date. Signature /suzanne white/ Name Suzanne White Date 11/28/2011 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 109 of 190 PageID #:497 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 110 of 190 PageID #:498 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 111 of 190 PageID #:499 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 112 of 190 PageID #:500 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 113 of 190 PageID #:501 Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA447980 Filing date: 12/22/2011 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91202713 Party Defendant DIDA import & export inc Correspondence Address RAJ ABHYANKER RAJ ABHYANKER, P.C. 1580 W EL CAMINO REAL STE 8 MOUNTAIN VIEW, CA 94040-2462 trademarks@rajpatent.com Submission Request to Withdraw as Attorney Filer's Name Jennie Cheng Filer's e-mail trademarks@rajpatent.com, jennie@rajpatent.com Signature /Jennie Cheng/ Date 12/22/2011 Attachments DDDDDD_POA.pdf ( 2 pages )(497196 bytes ) Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 114 of 190 PageID #:502 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 115 of 190 PageID #:503 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 116 of 190 PageID #:504 lg Mailed: January 17, 2012 Opposition No. 91202713 Coach Service, Inc. v. DIDA import & export inc On December 22, 2011, applicant's attorneys filed a request to withdraw as applicant's counsel of record in this case.1 The request to withdraw as counsel is in compliance with the requirements of Trademark Rule 2.19(b) and Patent and Trademark Rule 10.40, and is accordingly granted. The law firm of Raj Abhyanker, P.C. no longer represents applicant in this proceeding. In view of the withdrawal of applicant's counsel, and in accordance with standard Board practice, proceedings herein are suspended, and applicant is allowed until thirty days from the mailing date of this order to appoint new counsel, or to file a paper stating that applicant chooses to represent itself. If applicant files no response, the Board may issue an order to show cause why default judgment should not be entered against UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 117 of 190 PageID #:505 2 applicant based on applicant's apparent loss of interest in the case. The parties will be notified by the Board when proceedings are resumed, and dates will be rescheduled at the appropriate time. A copy of this order has been sent to all persons listed below. cc: DIDA Import & Export Inc. 140-34 Negundo Ave. Flushing, NY 11355 Suzamme Ahite Coach Service, Inc. 516 West 34th Street New York, NY 10001 Raj Abhyanker Raj Abhyanker, P.C. 1580 W El Camino Real Ste. 8 Mountain View, CA 94040-2462 1 A copy of said request has been placed in both the opposition file and the application file. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 118 of 190 PageID #:506 lg Mailed: March 3, 2012 Opposition No. 91202713 Coach Service, Inc. v. DIDA import & export inc Lalita R. Greer, Paralegal Specialist: On January 17, 2012, the Board issued an order suspending this proceeding in view of the withdrawal of applicant's counsel on December 22, 2011. Applicant was allowed time in which to either appoint a new attorney or to state that applicant would represent itself. No appearance or other response has been received. Accordingly, applicant is allowed until thirty days from the mailing date of this order to show cause why default judgment should not be entered against applicant based on applicant's apparent loss of interest in this case. Proceedings herein remain otherwise suspended. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 119 of 190 PageID #:507 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 120 of 190 PageID #:508 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 121 of 190 PageID #:509 TTAB UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 i/S1,2h 7 7 Cf. Mailed: March 3, 2012 Opposition No. 91202713 Coach Service, Inc. V . DIDA import & export inc Lalita R. Greer, Paralegal Specialist: On January 17, 2012, the Board issued an order suspending this proceeding in view of the withdrawal of applicant's counsel on December 22, 2011. Applicant was allowed time in which to either appoint a new attorney or to state that applicant would represent itself. No appearance or other response has been received. Accordingly, applicant is allowed until thirty days from the mailing date of this order to show cause why default judgment should not be entered against applicant based on applicant's apparent loss of interest in this case. Proceedings herein remain otherwise suspended. 1111111 11111 11111 11111 11111 11111 1111111111 11111111 04-12-2012 U . S . Pat E•rit TMOf TM Ila i 1 Rcpt. Tt tl• lg Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 122 of 190 PageID #:510 uNn'Eo > `S> F - (.1) 0 i, .-, -0 -fl- 0 7) o ) (4 0 01 da'i (.) C.1 f.1.1 • Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 123 of 190 PageID #:511 kk Mailed: May 10, 2012 Opposition No. 91202713 Coach Service, Inc. v. Dida Import & Export, Inc. On March 3, 2012, the Board issued an order to show cause in view of applicant's apparent loss of interest in this case. Inasmuch as no response to the Board's order has been received, judgment is hereby entered against applicant. The opposition is accordingly sustained and registration to applicant is refused. By the Trademark Trial and Appeal Board UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 124 of 190 PageID #:512 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 125 of 190 PageID #:513 PTO Form 1478 (Rev 9/2006) OMB No. 0651-0009 (Exp 12/31/2011) Trademark/Service Mark Application, Principal Register Serial Number: 85267696 Filing Date: 03/15/2011 The table below presents the data as entered. Input Field Entered SERIAL NUMBER 85267696 MARK INFORMATION *MARK \\TICRS\EXPORT11\IMAGEOUT 11\852\676\85267696\xml1\ APP0002.JPG SPECIAL FORM YES USPTO-GENERATED IMAGE NO LITERAL ELEMENT D & D COLOR MARK NO *DESCRIPTION OF THE MARK (and Color Location, if applicable) The mark consists of the literal elements D & D as shown in the mark. PIXEL COUNT ACCEPTABLE YES PIXEL COUNT 750 x 600 REGISTER Principal APPLICANT INFORMATION *OWNER OF MARK DIDA import & export inc. *STREET 140-34 Negundo Ave *CITY Flushing *STATE (Required for U.S. applicants) New York *COUNTRY United States *ZIP/POSTAL CODE (Required for U.S. applicants only) 11355 LEGAL ENTITY INFORMATION TYPE corporation STATE/COUNTRY OF INCORPORATION New York Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 126 of 190 PageID #:514 GOODS AND/OR SERVICES AND BASIS INFORMATION INTERNATIONAL CLASS 018 *IDENTIFICATION Leather goods, namely, leather handbags, traveling bags, shoulder bags, wallets and key chains. FILING BASIS SECTION 1(b) ATTORNEY INFORMATION NAME Raj Abhyanker ATTORNEY DOCKET NUMBER 24955 FIRM NAME Raj Abhyanker, P.C INTERNAL ADDRESS Suite 8 STREET 1580 W. El Camino Real CITY Mountain View STATE California COUNTRY United States ZIP/POSTAL CODE 94040 PHONE 650-965-8731 FAX 650-989-2131 EMAIL ADDRESS trademarks@rajpatent.com AUTHORIZED TO COMMUNICATE VIA EMAIL Yes OTHER APPOINTED ATTORNEY Christopher Ditico, Vandana Balakrishnan, Jennifer Lu, Hong Cui, Ashwin Anand, Benjamin Ashurov, John Salcido CORRESPONDENCE INFORMATION NAME Raj Abhyanker FIRM NAME Raj Abhyanker, P.C INTERNAL ADDRESS Suite 8 STREET 1580 W. El Camino Real CITY Mountain View STATE California COUNTRY United States ZIP/POSTAL CODE 94040 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 127 of 190 PageID #:515 PHONE 650-965-8731 FAX 650-989-2131 EMAIL ADDRESS trademarks@rajpatent.com AUTHORIZED TO COMMUNICATE VIA EMAIL Yes FEE INFORMATION NUMBER OF CLASSES 1 FEE PER CLASS 325 *TOTAL FEE DUE 325 *TOTAL FEE PAID 325 SIGNATURE INFORMATION SIGNATURE /Raj Abhyanker/ SIGNATORY'S NAME Raj Abhyanker SIGNATORY'S POSITION Attorney of record, CA bar member DATE SIGNED 03/16/2011 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 128 of 190 PageID #:516 PTO Form 1478 (Rev 9/2006) OMB No. 0651-0009 (Exp 12/31/2011) Trademark/Service Mark Application, Principal Register Serial Number: 85267696 Filing Date: 03/15/2011 To the Commissioner for Trademarks: MARK: D & D (stylized and/or with design, see mark) The literal element of the mark consists of D & D. The applicant is not claiming color as a feature of the mark. The mark consists of the literal elements D & D as shown in the mark. The applicant, DIDA import & export inc., a corporation of New York, having an address of 140-34 Negundo Ave Flushing, New York 11355 United States requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following: International Class 018: Leather goods, namely, leather handbags, traveling bags, shoulder bags, wallets and key chains. Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)). The applicant's current Attorney Information: Raj Abhyanker and Christopher Ditico, Vandana Balakrishnan, Jennifer Lu, Hong Cui, Ashwin Anand, Benjamin Ashurov, John Salcido of Raj Abhyanker, P.C Suite 8 1580 W. El Camino Real Mountain View, California 94040 United States The attorney docket/reference number is 24955. The applicant's current Correspondence Information: Raj Abhyanker Raj Abhyanker, P.C Suite 8 1580 W. El Camino Real Mountain View, California 94040 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 129 of 190 PageID #:517 650-965-8731(phone) 650-989-2131(fax) trademarks@rajpatent.com (authorized) A fee payment in the amount of $325 has been submitted with the application, representing payment for 1 class(es). Declaration 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. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true. Signature: /Raj Abhyanker/ Date Signed: 03/16/2011 Signatory's Name: Raj Abhyanker Signatory's Position: Attorney of record, CA bar member RAM Sale Number: 4498 RAM Accounting Date: 03/16/2011 Serial Number: 85267696 Internet Transmission Date: Tue Mar 15 17:23:25 EDT 2011 TEAS Stamp: USPTO/BAS-115.252.151.6-2011031517232552 4235-85267696-4809a3a166acd2be03dc688b96 fc0e4fb3c-CC-4498-20110315171131700350 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 130 of 190 PageID #:518 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 131 of 190 PageID #:519 From: TMDesignCodeComments Sent: Tuesday, March 22, 2011 00:29 AM To: trademarks@rajpatent.com Subject: Notice of Pseudo Mark for Serial Number: 85267696 ATTORNEY REFERENCE NUMBER: 24955 The USPTO may assign pseudo marks, as appropriate, to new applications to assist in searching the USPTO database for conflicting marks. They have no legal significance and will not appear on the registration certificate. A PSEUDO MARK may be assigned to marks that include words, numbers, compound words, symbols, or acronyms that can have alternative spellings or meanings. For example, if the mark comprises the words 'YOU ARE' surrounded by a design of a box, the pseudo mark field in the USPTO database would display the mark as 'YOU ARE SQUARE'. A mark filed as 'URGR8' would receive a pseudo mark of 'YOU ARE GREAT'. Response to this notice is not required; however, to suggest additions or changes to the pseudo mark assigned to your mark, please e-mail TMDesignCodeComments@USPTO.GOV. You must reference your application serial number within your request. The USPTO will review the proposal and update the record, if appropriate. For questions, please call 1-800-786- 9199 to speak to a Customer Service representative. The USPTO will not send any further response to your e-mail. Check TESS in approximately two weeks to see if the requested changes have been entered. Requests deemed unnecessary or inappropriate will not be entered. Pseudo marks assigned to the referenced serial number are listed below. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 132 of 190 PageID #:520 *** User:sbibb *** # Total Dead Live Live Status/ Search Marks Marks Viewed Viewed Search Docs Images Duration 01 399 N/A 0 0 0:02 ("dd" "d d")[bi,ti] and live[ld] 02 1231 N/A 0 0 0:02 ("di" "d i")[bi,ti] and live[ld] 03 914 N/A 0 0 0:02 ("da" "d a")[bi,ti] and live[ld] 04 14981 N/A 0 0 0:03 *new*[bi,ti] and live[ld] 05 3135 N/A 0 0 0:03 *york*[bi,ti] and live[ld] 06 1 0 1 1 0:01 1 and 2 and 3 and 4 07 12 0 12 12 0:01 2 and 3 08 181 0 181 167 0:03 1 and 018[cc] 09 7 0 7 4 0:01 1 and (2 3) 10 8 0 8 8 0:01 (1 2 3) and (4 5) 11 7 0 7 4 0:03 "d & d"[bi,ti] and live[ld] 12 14 0 14 13 0:03 "d&d"[bi,ti] and live[ld] 13 3 0 3 3 0:02 "Dida Import"[ow] Session started 6/14/2011 12:47:04 PM Session finished 6/14/2011 12:58:08 PM Total search duration 0 minutes 27 seconds Session duration 11 minutes 4 seconds Defaut NEAR limit=1ADJ limit=1 Sent to TICRS as Serial Number: 85267696 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 133 of 190 PageID #:521 Trademark Snap Shot Publication Stylesheet (Table presents the data on Publication Approval) OVERVIEW SERIAL NUMBER 85267696 FILING DATE 03/15/2011 REG NUMBER 0000000 REG DATE N/A REGISTER PRINCIPAL MARK TYPE TRADEMARK INTL REG # N/A INTL REG DATE N/A TM ATTORNEY BIBB, SCOTT L.O. ASSIGNED 109 PUB INFORMATION RUN DATE 06/15/2011 PUB DATE N/A STATUS 680-APPROVED FOR PUBLICATON STATUS DATE 06/14/2011 LITERAL MARK ELEMENT D & D DATE ABANDONED N/A DATE CANCELLED N/A SECTION 2F NO SECTION 2F IN PART NO SECTION 8 NO SECTION 8 IN PART NO SECTION 15 NO REPUB 12C N/A RENEWAL FILED NO RENEWAL DATE N/A DATE AMEND REG N/A FILING BASIS FILED BASIS CURRENT BASIS AMENDED BASIS 1 (a) NO 1 (a) NO 1 (a) NO 1 (b) YES 1 (b) YES 1 (b) NO 44D NO 44D NO 44D NO 44E NO 44E NO 44E NO 66A NO 66A NO NO BASIS NO NO BASIS NO MARK DATA STANDARD CHARACTER MARK NO LITERAL MARK ELEMENT D & D Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 134 of 190 PageID #:522 MARK DRAWING CODE 5-AN ILLUSTRATION DRAWING WITH WORD(S)/LETTER(S)/NUMBER(S) IN STYLIZED FORM COLOR DRAWING FLAG NO CURRENT OWNER INFORMATION PARTY TYPE 10-ORIGINAL APPLICANT NAME DIDA import & export inc. ADDRESS 140-34 Negundo Ave Flushing, NY 11355 ENTITY 03-CORPORATION CITIZENSHIP New York GOODS AND SERVICES INTERNATIONAL CLASS 018 DESCRIPTION TEXT Leather goods, namely, leather handbags, traveling bags, shoulder bags, wallets and key chains GOODS AND SERVICES CLASSIFICATION INTERNATIONAL CLASS 018 FIRST USE DATE NONE FIRST USE IN COMMERCE DATE NONE CLASS STATUS 6-ACTIVE MISCELLANEOUS INFORMATION/STATEMENTS CHANGE IN REGISTRATION NO COLORS CLAIMED STATEMENT Color is not claimed as a feature of the mark. DESCRIPTION OF MARK The mark consists of the literal elements D & D as shown in the mark. PSEUDO MARK D AND D PROSECUTION HISTORY DATE ENT CD ENT TYPE DESCRIPTION ENT NUM 06/14/2011 CNSA P APPROVED FOR PUB - PRINCIPAL REGISTER 005 06/14/2011 DOCK D ASSIGNED TO EXAMINER 004 03/22/2011 MPMK O NOTICE OF PSEUDO MARK MAILED 003 03/21/2011 NWOS I NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM 002 03/18/2011 NWAP I NEW APPLICATION ENTERED IN TRAM 001 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 135 of 190 PageID #:523 CURRENT CORRESPONDENCE INFORMATION ATTORNEY Raj Abhyanker CORRESPONDENCE ADDRESS RAJ ABHYANKER RAJ ABHYANKER, P.C 1580 W EL CAMINO REAL STE 8 MOUNTAIN VIEW, CA 94040-2462 DOMESTIC REPRESENTATIVE NONE Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 136 of 190 PageID #:524 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 137 of 190 PageID #:525 From: TMOfficialNotices@USPTO.GOV Sent: Tuesday, August 2, 2011 00:36 AM To: trademarks@rajpatent.com Subject: Official USPTO Notice of Publication: Serial Number 85267696 NOTICE OF PUBLICATION Serial Number: 85-267,696 Mark: D & D(SYTLIZED/DESIGN) International Class(es): 018 Applicant: DIDA import & export inc. Attorney Reference Number: 24955 The mark identified above has been published in the Trademark Official Gazette (OG) on Aug 02, 2011. Any party who believes it will be damaged by the registration of the mark may file a notice of opposition (or extension of time therefor) with the Trademark Trial and Appeal Board. If no party files an opposition or extension request within thirty (30) days after the publication date, then within twelve (12) weeks of the publication date a notice of allowance (NOA) should issue. (Note: The applicant must file a Statement of Use or Extension Request within six (6) months after the NOA issues.) On the publication date or shortly thereafter, the applicant should carefully review the information that appears in the OG for accuracy (see steps, below). If any information is incorrect, the applicant should immediately email the requested correction to TMPostPubQuery@uspto.gov. For general information about this notice, please contact the Trademark Assistance Center at 1-800-786-9199. 1. Click on the following link or paste the URL into an internet browser: http://www.uspto.gov/web/trademarks/tmog/20110802_OG.pdf#page=1 2. Wait for the total OG to download completely (as indicated on bottom of OG page). 3. At the top/side of the displayed page, click wherever the "binoculars" icon appears. 4. Enter in the "search" box the name of the applicant (for individual: last name, first name) or the serial number in this exact format (with hyphen and comma): 85-267,696, e.g. 5. View the retrieved result(s). If multiple results appear in the "results" box, click directly on each "search term" shown in the box to access all separate appearances in the OG. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 138 of 190 PageID #:526 PTO Form 2196 (Rev 9/2005) OMB No. 0651-0056 (Exp 09/30/2014) Revocation of Attorney/Domestic Representative and/or Appointment of Attorney/Domestic Representative The table below presents the data as entered. Input Field Entered SERIAL NUMBER 85267696 LAW OFFICE ASSIGNED LAW OFFICE 109 MARK SECTION MARK D & D (stylized and/or with design) ATTORNEY SECTION ORIGINAL ADDRESS 24955 140 34 NEGUNDO AVE FLUSHING New York (NY) 11355 US 650-965-8731 650-989-2131 trademarks@rajpatent.com STATEMENT TEXT By submission of this request, the undersigned REVOKES the power of attorney currently of record, as listed above. NEW CORRESPONDENCE ADDRESS NAME DIDA IMPORT & EXPORT INC FIRM NAME DIDA IMPORT EXPORT INC DOCKET/REFERENCE NUMBER 24955 STREET 7416 GRAND AVE CITY ELMHURST STATE New York COUNTRY United States POSTAL/ZIP CODE 11373 PHONE 718-476-8888 FAX 718-476-8885 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 139 of 190 PageID #:527 EMAIL DIDANEWYORK@GMAIL.COM AUTHORIZED TO COMMUNICATE VIA E-MAIL YES SIGNATURE SECTION SIGNATURE /LINDA ZHU/ SIGNATORY NAME LINDA ZHU SIGNATORY DATE 11/01/2013 SIGNATORY POSITION MANAGER SIGNATORY PHONE NUMBER 718-476-8888 FILING INFORMATION SECTION SUBMIT DATE Fri Nov 01 15:29:14 EDT 2013 TEAS STAMP USPTO/RAA-108.12.155.34-2 0131101152914021391-85267 696-50097c1f993f13d56178d 3df3fed35e6663d70e3ffebed 9f91baff55379dd6cfd-N/A-N /A-20131101152710521601 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 140 of 190 PageID #:528 PTO Form 2196 (Rev 9/2005) OMB No. 0651-0056 (Exp 09/30/2014) Revocation of Attorney/Domestic Representative and/or Appointment of Attorney/Domestic Representative To the Commissioner for Trademarks: MARK: D & D (stylized and/or with design) SERIAL NUMBER: 85267696 The original attorney 24955 140 34 NEGUNDO AVE FLUSHING New York 11355 US 650-965-8731 650-989-2131 trademarks@rajpatent.com By submission of this request, the undersigned REVOKES the power of attorney currently of record, as listed above. Original Correspondence Address : 140 34 NEGUNDO AVE FLUSHING New York 11355 US 650-965-8731 650-989-2131 trademarks@rajpatent.com The following is to be used as the correspondence address: DIDA IMPORT & EXPORT INC DIDA IMPORT EXPORT INC 7416 GRAND AVE ELMHURST, New York 11373 United States 718-476-8888 718-476-8885 DIDANEWYORK@GMAIL.COM The attorney docket/reference number is 24955. Signature: /LINDA ZHU/ Date: 11/01/2013 Signatory's Name: LINDA ZHU Signatory's Position: MANAGER Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 141 of 190 PageID #:529 Signatory's Phone Number: 718-476-8888 Serial Number: 85267696 Internet Transmission Date: Fri Nov 01 15:29:14 EDT 2013 TEAS Stamp: USPTO/RAA-108.12.155.34-2013110115291402 1391-85267696-50097c1f993f13d56178d3df3f ed35e6663d70e3ffebed9f91baff55379dd6cfd- N/A-N/A-20131101152710521601 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 142 of 190 PageID #:530 PTO Form 2196 (Rev 9/2005) OMB No. 0651-0056 (Exp 09/30/2014) Revocation of Attorney/Domestic Representative and/or Appointment of Attorney/Domestic Representative The table below presents the data as entered. Input Field Entered SERIAL NUMBER 85267696 LAW OFFICE ASSIGNED LAW OFFICE 109 MARK SECTION MARK D & D (stylized and/or with design) ATTORNEY SECTION ORIGINAL ADDRESS 24955 140 34 NEGUNDO AVE FLUSHING New York (NY) 11355 US 650-965-8731 650-989-2131 trademarks@rajpatent.com STATEMENT TEXT By submission of this request, the undersigned REVOKES the power of attorney currently of record, as listed above. NEW CORRESPONDENCE ADDRESS NAME DIDA IMPORT EXPORT INC FIRM NAME DIDA IMPORT EXPORT INC DOCKET/REFERENCE NUMBER 24955 STREET 7416 GRAND AVE CITY FLUSHING STATE New York COUNTRY United States POSTAL/ZIP CODE 11373 PHONE 718-476-8888 FAX 718-476-8885 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 143 of 190 PageID #:531 EMAIL DIDANEWYORK@GMAIL.COM AUTHORIZED TO COMMUNICATE VIA E-MAIL YES SIGNATURE SECTION SIGNATURE /LINDA ZHU/ SIGNATORY NAME LINDA ZHU SIGNATORY DATE 11/01/2013 SIGNATORY POSITION MANAGER SIGNATORY PHONE NUMBER 7184768888 FILING INFORMATION SECTION SUBMIT DATE Fri Nov 01 15:31:02 EDT 2013 TEAS STAMP USPTO/RAA-108.12.155.34-2 0131101153102803758-85267 696-500d34a21dc35b49d9015 cd84e99419d11dee84cd68ea1 603a22162da6f82f5b9-N/A-N /A-20131101152952329018 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 144 of 190 PageID #:532 PTO Form 2196 (Rev 9/2005) OMB No. 0651-0056 (Exp 09/30/2014) Revocation of Attorney/Domestic Representative and/or Appointment of Attorney/Domestic Representative To the Commissioner for Trademarks: MARK: D & D (stylized and/or with design) SERIAL NUMBER: 85267696 The original attorney 24955 140 34 NEGUNDO AVE FLUSHING New York 11355 US 650-965-8731 650-989-2131 trademarks@rajpatent.com By submission of this request, the undersigned REVOKES the power of attorney currently of record, as listed above. Original Correspondence Address : 140 34 NEGUNDO AVE FLUSHING New York 11355 US 650-965-8731 650-989-2131 trademarks@rajpatent.com The following is to be used as the correspondence address: DIDA IMPORT EXPORT INC DIDA IMPORT EXPORT INC 7416 GRAND AVE FLUSHING, New York 11373 United States 718-476-8888 718-476-8885 DIDANEWYORK@GMAIL.COM The attorney docket/reference number is 24955. Signature: /LINDA ZHU/ Date: 11/01/2013 Signatory's Name: LINDA ZHU Signatory's Position: MANAGER Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 145 of 190 PageID #:533 Signatory's Phone Number: 7184768888 Serial Number: 85267696 Internet Transmission Date: Fri Nov 01 15:31:02 EDT 2013 TEAS Stamp: USPTO/RAA-108.12.155.34-2013110115310280 3758-85267696-500d34a21dc35b49d9015cd84e 99419d11dee84cd68ea1603a22162da6f82f5b9- N/A-N/A-20131101152952329018 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 146 of 190 PageID #:534 Side - 1 NOTICE OF ABANDONMENT MAILING DATE: Nov 4, 2013 The trademark application identified below was abandoned on Oct 10, 2012 as a result of Trademark Trial and Appeal Board proceedings. SERIAL NUMBER: 85267696 MARK: D & D OWNER: DIDA import & export inc. Side - 2 UNITED STATES PATENT AND TRADEMARK OFFICE COMMISSIONER FOR TRADEMARKS P.O. BOX 1451 ALEXANDRIA, VA 22313-1451 FIRST-CLASS MAIL U.S POSTAGE PAID DIDA IMPORT EXPORT INC DIDA IMPORT EXPORT INC 7416 GRAND AVE FLUSHING , NY 11373 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 147 of 190 PageID #:535 Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA427938 Filing date: 08/31/2011 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Applicant: DIDA import & export inc. Application Serial Number: 85267696 Application Filing Date: 03/15/2011 Mark: D & D Date of Publication 08/02/2011 First 90 Day Request for Extension of Time to Oppose for Good Cause Pursuant to 37 C.F.R. Section 2.102, Coach Services, Inc., 516 W. 34th Street, New York, NY 10001, UNITED STATES, a corporation organized under the laws of Maryland , respectfully requests that it be granted a 90-day extension of time to file a notice of opposition against the above-identified mark for cause shown . Potential opposer believes that good causes are established for this request by: - The potential opposer needs additional time to investigate the claim - The potential opposer needs additional time to confer with counsel The time within which to file a notice of opposition is set to expire on 09/01/2011. Coach Services, Inc. respectfully requests that the time period within which to file an opposition be extended until 11/30/2011. Respectfully submitted, /suzanne_white/ 08/31/2011 Suzanne White Senior Counsel Coach Services, Inc. 516 W. 34th Street New York, NY 10001 UNITED STATES swhite@coach.com (212) 629-2217 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 148 of 190 PageID #:536 Suzanne White Coach Services, Inc. 516 W. 34th Street New York, NY 10001 Mailed: August 31, 2011 Serial No.: 85267696 ESTTA TRACKING NO: ESTTA427938 The request to extend time to oppose is granted until 11/30/2011 on behalf of potential opposer Coach Services, Inc. Please do not hesitate to contact the Trademark Trial and Appeal Board at (571)272-8500 if you have any questions relating to this extension. Note from the Trademark Trial and Appeal Board TTAB forms for electronic filing of extensions of time to oppose, notices of opposition, petition for cancellation, notice of ex parte appeal, and inter partes filings are now available at http://estta.uspto.gov. Images of TTAB proceeding files can be viewed using TTABVue at http://ttabvue.uspto.gov. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 149 of 190 PageID #:537 Mailed: November 28, 2011 Opposition No. 91202712 Serial No. 85267696 RAJ ABHYANKER RAJ ABHYANKER, P.C 1580 W EL CAMINO REAL STE 8 MOUNTAIN VIEW, CA 94040-2462 trademarks@rajpatent.com Coach Services, Inc. v. DIDA import & export inc. Suzanne White Coach Services, Inc. 516 W. 34th Street New York, NY 10001 swhite@coach.com ESTTA443147 A notice of opposition to the registration sought by the above- identified application has been filed. A service copy of the notice of opposition was forwarded to applicant (defendant) by the opposer (plaintiff). An electronic version of the notice of opposition is viewable in the electronic file for this proceeding via the Board's TTABVUE system: http://ttabvue.uspto.gov/ttabvue/v?qs=91202712. Proceedings will be conducted in accordance with the Trademark Rules of Practice, set forth in Title 37, part 2, of the Code of Federal Regulations ("Trademark Rules"). These rules may be viewed at the USPTO's trademarks page: http://www.uspto.gov/trademarks/index.jsp. The Board's main webpage (http://www.uspto.gov/trademarks/process/appeal/index.jsp) includes information on amendments to the Trademark Rules applicable to Board proceedings, on Alternative Dispute Resolution (ADR), Frequently Asked Questions about Board proceedings, and a web link to the Board's manual of procedure (the TBMP). Plaintiff must notify the Board when service has been ineffective, within 10 days of the date of receipt of a returned service copy or the date on which plaintiff learns that service has been ineffective. Plaintiff has no subsequent duty to investigate the defendant's whereabouts, but if plaintiff by its own voluntary investigation or through any other means discovers a newer correspondence address for UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 150 of 190 PageID #:538 2 the defendant, then such address must be provided to the Board. Likewise, if by voluntary investigation or other means the plaintiff discovers information indicating that a different party may have an interest in defending the case, such information must be provided to the Board. The Board will then effect service, by publication in the Official Gazette if necessary. See Trademark Rule 2.118. In circumstances involving ineffective service or return of defendant's copy of the Board's institution order, the Board may issue an order noting the proper defendant and address to be used for serving that party. Defendant's ANSWER IS DUE FORTY DAYS after the mailing date of this order. (See Patent and Trademark Rule 1.7 for expiration of this or any deadline falling on a Saturday, Sunday or federal holiday.) Other deadlines the parties must docket or calendar are either set forth below (if you are reading a mailed paper copy of this order) or are included in the electronic copy of this institution order viewable in the Board's TTABVUE system at the following web address: http://ttabvue.uspto.gov/ttabvue/. Defendant's answer and any other filing made by any party must include proof of service. See Trademark Rule 2.119. If they agree to, the parties may utilize electronic means, e.g., e-mail or fax, during the proceeding for forwarding of service copies. See Trademark Rule 2.119(b)(6). The parties also are referred in particular to Trademark Rule 2.126, which pertains to the form of submissions. Paper submissions, including but not limited to exhibits and transcripts of depositions, not filed in accordance with Trademark Rule 2.126 may not be given consideration or entered into the case file. As noted in the schedule of dates for this case, the parties are required to have a conference to discuss: (1) the nature of and basis for their respective claims and defenses, (2) the possibility of settling the case or at least narrowing the scope of claims or defenses, and (3) arrangements relating to disclosures, discovery and Time to Answer 1/7/2012 Deadline for Discovery Conference 2/6/2012 Discovery Opens 2/6/2012 Initial Disclosures Due 3/7/2012 Expert Disclosures Due 7/5/2012 Discovery Closes 8/4/2012 Plaintiff's Pretrial Disclosures 9/18/2012 Plaintiff's 30-day Trial Period Ends 11/2/2012 Defendant's Pretrial Disclosures 11/17/2012 Defendant's 30-day Trial Period Ends 1/1/2013 Plaintiff's Rebuttal Disclosures 1/16/2013 Plaintiff's 15-day Rebuttal Period Ends 2/15/2013 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 151 of 190 PageID #:539 3 introduction of evidence at trial, should the parties not agree to settle the case. See Trademark Rule 2.120(a)(2). Discussion of the first two of these three subjects should include a discussion of whether the parties wish to seek mediation, arbitration or some other means for resolving their dispute. Discussion of the third subject should include a discussion of whether the Board's Accelerated Case Resolution (ACR) process may be a more efficient and economical means of trying the involved claims and defenses. Information on the ACR process is available at the Board's main webpage. Finally, if the parties choose to proceed with the disclosure, discovery and trial procedures that govern this case and which are set out in the Trademark Rules and Federal Rules of Civil Procedure, then they must discuss whether to alter or amend any such procedures, and whether to alter or amend the Standard Protective Order (further discussed below). Discussion of alterations or amendments of otherwise prescribed procedures can include discussion of limitations on disclosures or discovery, willingness to enter into stipulations of fact, and willingness to enter into stipulations regarding more efficient options for introducing at trial information or material obtained through disclosures or discovery. The parties are required to conference in person, by telephone, or by any other means on which they may agree. A Board interlocutory attorney or administrative trademark judge will participate in the conference, upon request of any party, provided that such participation is requested no later than ten (10) days prior to the deadline for the conference. See Trademark Rule 2.120(a)(2). The request for Board participation must be made through the Electronic System for Trademark Trials and Appeals (ESTTA) or by telephone call to the interlocutory attorney assigned to the case, whose name can be found by referencing the TTABVUE record for this case at http://ttabvue.uspto.gov/ttabvue/. The parties should contact the assigned interlocutory attorney or file a request for Board participation through ESTTA only after the parties have agreed on possible dates and times for their conference. Subsequent participation of a Board attorney or judge in the conference will be by telephone and the parties shall place the call at the agreed date and time, in the absence of other arrangements made with the assigned interlocutory attorney. The Board's Standard Protective Order is applicable to this case, but the parties may agree to supplement that standard order or substitute a protective agreement of their choosing, subject to approval by the Board. The standard order is available for viewing at: http://www.uspto.gov/trademarks/process/appeal/guidelines/stndagmnt.jsp. Any party without access to the web may request a hard copy of the standard order from the Board. The standard order does not automatically protect a party's confidential information and its provisions must be utilized as needed by the parties. See Trademark Rule 2.116(g). Information about the discovery phase of the Board proceeding is available in chapter 400 of the TBMP. By virtue of amendments to the Trademark Rules effective November 1, 2007, the initial disclosures and expert disclosures scheduled during the discovery phase are required only in cases commenced on or after that date. The TBMP has not yet been amended to include information on these disclosures and the parties are referred to the August 1, 2007 Notice of Final Rulemaking (72 Fed. Reg. 42242) posted on the Board's webpage. The deadlines for Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 152 of 190 PageID #:540 4 pretrial disclosures included in the trial phase of the schedule for this case also resulted from the referenced amendments to the Trademark Rules, and also are discussed in the Notice of Final Rulemaking. The parties must note that the Board allows them to utilize telephone conferences to discuss or resolve a wide range of interlocutory matters that may arise during this case. In addition, the assigned interlocutory attorney has discretion to require the parties to participate in a telephone conference to resolve matters of concern to the Board. See TBMP § 502.06(a) (2d ed. rev. 2004). The TBMP includes information on the introduction of evidence during the trial phase of the case, including by notice of reliance and by taking of testimony from witnesses. See TBMP §§ 703 and 704. Any notice of reliance must be filed during the filing party's assigned testimony period, with a copy served on all other parties. Any testimony of a witness must be both noticed and taken during the party's testimony period. A party that has taken testimony must serve on any adverse party a copy of the transcript of such testimony, together with copies of any exhibits introduced during the testimony, within thirty (30) days after the completion of the testimony deposition. See Trademark Rule 2.125. Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral hearing after briefing is not required but will be scheduled upon request of any party, as provided by Trademark Rule 2.129. If the parties to this proceeding are (or during the pendency of this proceeding become) parties in another Board proceeding or a civil action involving related marks or other issues of law or fact which overlap with this case, they shall notify the Board immediately, so that the Board can consider whether consolidation or suspension of proceedings is appropriate. ESTTA NOTE: For faster handling of all papers the parties need to file with the Board, the Board strongly encourages use of electronic filing through the Electronic System for Trademark Trials and Appeals (ESTTA). Various electronic filing forms, some of which may be used as is, and others which may require attachments, are available at http://estta.uspto.gov. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 153 of 190 PageID #:541 Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA447983 Filing date: 12/22/2011 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91202712 Party Defendant DIDA import & export inc. Correspondence Address RAJ ABHYANKER RAJ ABHYANKER, P.C 1580 W EL CAMINO REAL STE 8 MOUNTAIN VIEW, CA 94040-2462 trademarks@rajpatent.com Submission Request to Withdraw as Attorney Filer's Name Jennie Cheng Filer's e-mail trademarks@rajpatent.com, jennie@rajpatent.com Signature /Jennie Cheng/ Date 12/22/2011 Attachments D&D_POA.pdf ( 2 pages )(494212 bytes ) Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 154 of 190 PageID #:542 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 155 of 190 PageID #:543 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 156 of 190 PageID #:544 MBA/lg Mailed: January 19, 2012 Opposition No. 91202712 Coach Services, Inc. v. DIDA Import & Export Inc. Michael B. Adlin, Interlocutory Attorney: On December 22, 2011, applicant's attorneys filed a request to withdraw as applicant's counsel of record in this case.1 The request to withdraw as counsel is in compliance with the requirements of Trademark Rule 2.19(b) and Patent and Trademark Rule 10.40, and is accordingly granted. The law firm of Raj Abhyanker, P.C. no longer represents applicant in this proceeding. In view of the withdrawal of applicant's counsel, and in accordance with standard Board practice, proceedings herein are suspended, and applicant is allowed until THIRTY DAYS from the mailing date of this order to appoint new counsel, or to file a paper stating that applicant chooses to represent itself. If applicant files no response, the Board may issue an order to show cause why default judgment should not be entered against UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 157 of 190 PageID #:545 Opposition No. 91202712 2 applicant based on applicant's apparent loss of interest in the case. The parties will be notified by the Board when proceedings are resumed, and dates will be rescheduled at the appropriate time. A copy of this order has been sent to all persons listed below. cc: DIDA Import & Export Inc. 140-34 Negundo Ave. Flushing, NY 11355 Suzanne White Coach Service, Inc. 516 West 34th Street New York, NY 10001 Raj Abhyanker Raj Abhyanker, P.C. 1580 W El Camino Real Ste. 8 Mountain View, CA 94040-2462 1 A copy of the request has been placed in both the opposition file and the application file. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 158 of 190 PageID #:546 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 159 of 190 PageID #:547 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 160 of 190 PageID #:548 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 161 of 190 PageID #:549 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 162 of 190 PageID #:550 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 163 of 190 PageID #:551 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 164 of 190 PageID #:552 lg Mailed: July 9, 2012 Opposition No. 91202712 Coach Services, Inc. v. DIDA import & export inc. Lalita R. Greer, Paralegal Specialist: On January 19, 2012, the Board issued an order suspending this proceeding in view of the withdrawal of applicant's counsel on December 22, 2011. Applicant was allowed time in which to either appoint a new attorney or to state that applicant would represent itself. No appearance or other response has been received. Accordingly, applicant is allowed until thirty days from the mailing date of this order to show cause why default judgment should not be entered against applicant based on applicant's apparent loss of interest in this case. Proceedings herein remain otherwise suspended. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 165 of 190 PageID #:553 lg Mailed: August 23, 2012 Opposition No. 91202712 Coach Services, Inc. v. DIDA Import & Export Inc. Lalita Greer, Paralegal Specialist: On July 9, 2012, the Board issued an order suspending this proceeding in view of the withdrawal of applicant's counsel on January 19, 2012. Applicant was allowed time in which to either appoint a new attorney or to state that applicant would represent itself. No appearance or other response has been received. Accordingly, applicant is allowed until thirty days from the mailing date of this order to show cause why default judgment should not be entered against applicant based on applicant's apparent loss of interest in this case. Proceedings herein remain otherwise suspended. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 166 of 190 PageID #:554 lg Mailed: October 10, 2012 Opposition No. 91202712 Coach Services, Inc. v. DIDA Import & Export Inc. On August 23, 2012, the Board issued an order to show cause in view of applicant's apparent loss of interest in this case. Inasmuch as no response to the Board's order has been received, judgment is hereby entered against applicant. The opposition is accordingly sustained and registration to applicant is refused. By the Trademark Trial and Appeal Board UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 167 of 190 PageID #:555 EXHIBIT F Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 168 of 190 PageID #:556 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 1 IN THE UNITED STATES DISTRICT COURT FOR NORTHERN DISTRICT EASTERN DIVISION - - - - - - - - - - - - - - - - - - - x : COACH, INC. and COACH SERVICES, INC., : : Case No. Plaintiff, : 13-cv- - vs - : 7165 : DI DA IMPORT and EXPORT, INC., : : Defendant. : : - - - - - - - - - - - - - - - - - - - x DEPOSITION OF SAM ZHU New York, New York Monday, November 17, 2014 Reported by: Joseph V. Connolly Job No. 12923 Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 169 of 190 PageID #:557 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 137 1 S. ZHU 2 Q. Why not? 3 A. There was no such document. How 4 can we review? 5 No. 6 Q. I'll give you what will be marked 7 as Exhibit No. 7. 8 (S. Zhu Exhibit 7, Notice of 9 Opposition, so marked for 10 identification, as of this date.) 11 (Handed to the witness.) 12 Q. If you can take a minute to 13 review Exhibit No. 7 and let me know when 14 you've done so? 15 (Witness reviews the exhibit.) 16 Q. Have you reviewed it? 17 A. Yes. 18 Q. And have you seen this document 19 before? 20 A. Never. 21 Q. Okay. Do you know what it is, 22 based on your review? 23 (Witness reviews the exhibit.) 24 A. I don't know. I don't know the 25 meaning of this. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 170 of 190 PageID #:558 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 138 1 S. ZHU 2 Q. Well, this is a document produced 3 by your company, in this litigation, and it 4 is the Notice of Opposition filed by my 5 clients, Coach. 6 And, as you see in the Applicant 7 Information, this is in opposition to the 8 Application Number, Serial Number, 85267743. 9 (Witness reviews the exhibit.) 10 A. (No response). 11 Q. This, again, was produced to us 12 by Di Da. 13 And is it your testimony that 14 you've never seen this document before? 15 (Witness reviews the exhibit.) 16 A. I have no recollection that I've 17 seen this document before. 18 Q. Okay. I'll hand you what will be 19 marked as Exhibit No. 8. 20 (S. Zhu Exhibit 8, United States 21 Patent and Trademark Office Letter, 22 Bates-stamped DD 1907 through DD 1910, 23 so marked for identification, as of this 24 date.) 25 (Handed to the witness.) Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 171 of 190 PageID #:559 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 139 1 S. ZHU 2 Q. If you could take a minute to 3 review Exhibit No. 8 and let me know when 4 you've done so? 5 (Witness reviews the exhibit.) 6 A. Yes. 7 Q. Are you familiar with this 8 document? 9 A. No. Nothing at all. 10 Q. This is an Order from the 11 U.S.P.T.O. setting out the Discovery -- 12 setting out the deadlines as a relates to 13 your application for Serial Number 85267743, 14 which corresponds with Exhibit No. 6, the 15 Application; right? 16 (Witness reviews the exhibit.) 17 A. Yes. 18 Q. And this document was produced by 19 your company, as DD 1907 through 1910. 20 (Witness reviews the exhibit.) 21 Q. And is it your testimony that 22 you've never seen this document before? 23 A. Never seen it before. 24 Q. Okay. How did Di Da come in 25 possession of it? Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 172 of 190 PageID #:560 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 140 1 S. ZHU 2 A. Never seen it before. 3 Q. You're in-charge of? 4 A. (Witness speaks Chinese). 5 Q. I'm sorry; go ahead. 6 A. My attorney provide this. I've 7 never seen this document before. 8 Q. You've been designated as the 9 person to testify on behalf of Di Da for all 10 of its Trademark Applications; correct? 11 A. Yes. 12 Q. All right. This is a document 13 produced by Di Da to Coach. 14 Do you agree? 15 (Witness reviews the exhibit.) 16 A. Yes; agree. 17 Q. Yet you're unprepared to discuss 18 the contents of this document? 19 A. I can answer questions, but I 20 never receive this document before. 21 Q. Okay. So, I'd ask again: How 22 did Di Da come in possession of it? 23 A. Our attorney, our attorney help 24 us. 25 Q. Okay. But you -- Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 173 of 190 PageID #:561 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 141 1 S. ZHU 2 MR. COLE: Okay. 3 Q. You've never seen it and you 4 can't testify about it? 5 A. Yes. I never received this, 6 personally. 7 Q. "Personally." Okay. 8 Do you see the mail date here is 9 November 28, 2011? 10 (Witness reviews the exhibit.) 11 Q. Top right corner. 12 A. Yes. 13 Q. And you see that it's going to 14 Mr. Abayanker? 15 (Witness reviews the exhibit.) 16 A. Yes. 17 Q. And this is -- Mr. Abayanker was 18 your attorney at the time; correct? 19 A. Yes. 20 Q. And looking at the second page. 21 MR. COLE: Well, excuse me. 22 Q. Going back to the first page, the 23 first paragraph, in bold, it says, "A Notice 24 of Opposition to the registration sought by 25 the above-identified application has been Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 174 of 190 PageID #:562 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 142 1 S. ZHU 2 filed." 3 Do you see that? 4 (Witness reviews the exhibit.) 5 A. (Indicating by a nodding of the 6 head). 7 Q. Okay. Then it shows the second 8 page -- going to the second page. 9 A. (Witness complies). 10 Q. And it has a list of deadlines. 11 (Witness reviews the exhibit.) 12 Q. Do you see that? 13 A. Huh. 14 Q. And if you go to the second full 15 paragraph here, on page 2, in bold, it says, 16 Defendant's Answer is due 40 days after the 17 mailing date of this order." 18 (Witness reviews the exhibit.) 19 Q. And do you see that? 20 (Witness reviews the exhibit.) 21 A. (No response). 22 Q. "Yes"? 23 A. Yes. 24 Q. And it's your testimony that Di 25 Da did not receive this and was never Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 175 of 190 PageID #:563 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 143 1 S. ZHU 2 notified by its attorneys? 3 A. (No response). 4 Q. Okay. 5 A. Yes. 6 Q. Okay. But you don't know how Di 7 Da came in possession of it and how you've 8 now produced it to us? 9 A. Yes. I never had this in my 10 possession. I don't know where it came from. 11 Q. And as part of your preparation 12 for today you didn't think it was important 13 to review documents related to Di Da's 14 Trademark Applications that were actually 15 produced by Di Da in this case, did you? 16 MS. SHIELDS: Objection. 17 A. Well, I did review whatever I had 18 in my possession. 19 Q. Okay. Was Di Da notified that 20 it's attorney, Mr. Abayanker, withdrew as 21 counsel on December 22, 2011? 22 INTERPRETER: I'm sorry; I didn't 23 get the date. December? 24 MR. COLE: December 22nd. 25 INTERPRETER: 22nd. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 176 of 190 PageID #:564 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 144 1 S. ZHU 2 MR. COLE: 2011. 3 A. I don't know. 4 Q. You were responsible for 5 communications with the trademark attorney. 6 Isn't that correct? 7 A. Yes. 8 Q. All right. But you can't 9 testify, you can't -- you can't testify, as 10 you sit here today, as to whether or not Di 11 Da was aware that Mr. Abayanker withdrew as 12 Di Da's counsel in December of 2011? 13 MS. SHIELDS: Objection. 14 A. Can you repeat the date? 15 Q. December of 2011. December 22, 16 2011, to be specific. 17 A. Well, I didn't know there was any 18 problem, so. 19 Q. That's not the question there. 20 Was Di Da aware that its attorney 21 withdrew as counsel? 22 A. I didn't know. 23 Q. Okay. Is this the first you're 24 ever hearing of it? 25 A. Yes. Because on-line, there Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 177 of 190 PageID #:565 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 145 1 S. ZHU 2 was an organization. 3 Q. This is the first time you're 4 hearing that Di Da's trademark attorneys 5 withdrew in December of 2011? 6 A. Yes. 7 Q. I'll hand you what will be marked 8 Exhibit No. 9. 9 (S. Zhu Exhibit 9, United States 10 Patent and Trademark Office Document, 11 Bates-stamped DD 1925 through DD 1929, 12 so marked for identification, as of this 13 date.) 14 (Handed to the witness.) 15 Q. If you can take a minute to 16 review Exhibit No. 9, let me know when you've 17 done so? 18 (Witness reviews the exhibit.) 19 Q. Have you had an opportunity to 20 review it? 21 A. Yes. 22 Q. Okay. Do you know -- are you 23 familiar with this document? 24 (Witness reviews the exhibit.) 25 A. No. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 178 of 190 PageID #:566 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 146 1 S. ZHU 2 Q. Okay. 3 A. Nothing, really. 4 Q. It's a document that's been 5 produced by Di Da in this litigation, 6 Bates-labeled DD 1925 through DD 1929. 7 (Witness reviews the exhibit.) 8 A. Yes. 9 Q. And it's an Order from the 10 U.S.P.T.O. office, dated March 3, 2012. 11 And in it, the Order, it says, in 12 the first fall paragraph, that "On January 13 17, 2012 the Board" -- being the U.S.P.T.O. 14 -- "Issued an order suspending this 15 proceeding in view of the withdrawal of 16 Application's counsel on December 22, 2011." 17 Having reviewed this, does this 18 help refresh your recollection on whether or 19 not your trademark attorneys withdraw in 20 December of 2011? 21 A. No. 22 I've never seen this before. 23 Q. That's not the question. 24 Does this document, what I just 25 read to you, does it help refresh your Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 179 of 190 PageID #:567 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 147 1 S. ZHU 2 recollection as to whether or not your 3 trademark attorneys withdrew in December of 4 2011? 5 A. No. It doesn't refresh my 6 memory. 7 Q. Okay. And this is the first time 8 you've seen this document? 9 A. Yes. 10 Q. So, you can't testify as to the 11 substance of this document, can you? 12 A. I never seen this before; I never 13 got this before. I don't know. 14 Q. So, did Di Da -- and I'm not 15 asking you personally, I'm asking for Di Da, 16 because you're here representing Di Da -- was 17 Di Da aware that its trademark attorneys 18 withdrew in December of 2011? 19 A. No. We don't know. 20 Q. Do you know how Di Da came in 21 possession of this document, Exhibit No. 9? 22 A. I think the attorney help us. 23 Q. If Di Da would have been made 24 aware that its attorney had withdrawn, would 25 it have changed Di Da's Response to the Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 180 of 190 PageID #:568 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 148 1 S. ZHU 2 Opposition by Coach? 3 A. I don't really understand your 4 question. But we would be the same, like 5 today. 6 MR. COLE: Okay. 7 MS. SHIELDS: I think there's a 8 problem with the subjunctive. 9 MR. COLE: All right; could be. 10 Q. Do you understand the question? 11 A. Not completely. 12 MR. COLE: I'll withdraw the 13 question. 14 Going back to Exhibit No. 6 15 (exhibited). 16 (Witness reviews the exhibit.) 17 BY MR. COLE: 18 Q. How did Di Da receive this image 19 from the manufacturer? 20 A. My father gave it to me. 21 Q. Your father gave it to you? 22 A. (No response). 23 Q. And what, if anything, did your 24 father say when he gave you that design? 25 A. This is the trademark provide for Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 181 of 190 PageID #:569 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 158 1 S. ZHU 2 Q. Okay. "At that location, now"? 3 Was there a time -- when Di Da 4 moved there in 2012, was it receiving mail at 5 that location? 6 A. Yes. 7 Q. I'm going to hand you what will 8 be marked Exhibit No. 11. 9 (S. Zhu Exhibit 11, Notice of 10 Abandonment, Bates-stamped DD 1953, so 11 marked for identification, as of this 12 date.) 13 (Handed to the witness.) 14 Q. Have you seen this document 15 before? 16 (Witness reviews the exhibit.) 17 A. I never seen this before. 18 Q. Okay. Do you recall ever 19 receiving, Di Da ever receiving, and envelope 20 from the U.S.P.T.O. Office, which contained 21 information similar to, if not the same as 22 this, what's found on this page? 23 (Witness reviews the exhibit.) 24 A. No. 25 Q. Okay. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 182 of 190 PageID #:570 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 159 1 S. ZHU 2 A. I never received them. 3 Q. Okay. So, just to be clear, 4 Exhibit No. 11 appears to be a Notice of 5 Abandonment, with, on the first page, or -- 6 excuse me -- on the top of the page and on 7 the bottom of the page it's a copy of the 8 envelope. 9 And this was produced by Di Da in 10 this litigation and marked as DD 1953. 11 It appears that this was pulled 12 from the U.S.P.T.O.'s website. And so, it's 13 just an image of what was mailed. 14 (Witness reviews the exhibit.) 15 Q. And the address that's used here 16 is 7416 Grand Avenue, Flushing, New York, 17 11373. 18 A. Yes. 19 Q. Okay. Is it your testimony that 20 Di Da's never received this from the 21 U.S.P.T.O.? 22 A. No. I never received this 23 letter. 24 Q. Did Di Da -- just to be very 25 clear, Di Da -- did Di Da ever receive this? Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 183 of 190 PageID #:571 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 160 1 S. ZHU 2 A. No. I don't think so. 3 Q. Okay. Do you know how Di Da came 4 into the possession of this and produced it 5 in this litigation? 6 A. Yes. 7 Q. How? 8 A. Our attorney help us to provide 9 that to you. 10 Q. Prior to today's deposition, in 11 preparation for it, you'd never seen this 12 document? 13 MR. COLE: Or strike that. 14 Excuse me. 15 Q. Prior to today's deposition 16 you've never seen this document. 17 Is that true? 18 A. This document I never seen 19 before. 20 Q. Have you seen something similar 21 to it? 22 A. This says, like, "Abandonment." 23 That means that refused; right? 24 Q. (Indicating). 25 A. On-line, I seen something like Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 184 of 190 PageID #:572 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 161 1 S. ZHU 2 that. But I never seen this document before. 3 Q. Okay. Does Di Da have a Board of 4 Directors? 5 A. No. 6 Q. And as far as officers, you've 7 identified yourself as the President of Di 8 Da; correct? 9 A. Yes. 10 Q. Are there any other officers? 11 A. Yes. 12 Q. Who? 13 A. Amy is the Sales, Vice President. 14 Q. She's the "Vice President." 15 A. For Sales. 16 Q. Okay. So, I'm not talking about 17 positions. All right? 18 What is your understanding of 19 what an officer of a corporation is? 20 A. Employee. 21 INTERPRETER: Do you want me to 22 explain to him or? 23 MR. COLE: No. 24 Q. Who all has access to Di Da's 25 bank accounts? Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 185 of 190 PageID #:573 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 240 1 S. ZHU 2 Q. Okay. 3 MR. COLE: I'm okay. 4 MS. SHIELDS: Okay. 5 EXAMINATION 6 BY MS. SHIELDS: 7 Q. Mr. Zhu, could you look at the 8 documents that have been marked L. Zhu 3 -B 9 through 3-J? 10 A. Okay. 11 (Witness reviews the exhibit.) 12 Q. Is the website shown on this, 13 these documents, the website on which you 14 applied for a trademark through your 15 attorney? 16 (Witness reviews the exhibit.) 17 A. Yes. 18 Q. And did you ever go on-line to 19 check the status of Di Da's Trademark 20 Applications? 21 A. Yes. 22 Q. And was this, this website, in 23 which you went on-line to check the status of 24 Di Da's Trademark Applications? 25 A. Yes. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 186 of 190 PageID #:574 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 241 1 S. ZHU 2 Q. Take a look at L. Zhu 3-F. 3 A. (Witness complies). 4 Q. Is there any part of this 5 exhibit that shows the status of Di Da's 6 Application for this mark? 7 (Witness reviews the exhibit.) 8 A. Yes. 9 Q. And where -- what page is that? 10 (Witness reviews the exhibit.) 11 A. The last page. 12 Q. And do you see on there any 13 Notice of an Opposition filed by Coach? 14 (Witness reviews the exhibit.) 15 A. Yes. 16 No, no. 17 Q. Take a look at the mark on the 18 first page of this exhibit. 19 A. (Witness complies). 20 Q. Did Di Da use this mark? 21 (Witness reviews the exhibit.) 22 A. Never. 23 Q. Could you look at L. Zhu 3-G? 24 (Witness reviews the exhibit.) 25 A. Okay. Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 187 of 190 PageID #:575 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 242 1 S. ZHU 2 Q. Do you see anywhere on this 3 exhibit information about the status of the 4 application for this mark? 5 (Witness reviews the exhibit.) 6 A. Yes. 7 Q. And where, where do you see that? 8 A. The third page. 9 Q. And do you see, on the third 10 page, any Notice of Opposition filed by 11 Coach? 12 A. No. 13 Q. Could you look at L. Zhu 3-J? 14 (Witness reviews the exhibit.) 15 A. Yes. 16 Q. Is there anywhere on this exhibit 17 that shows the status of Di Da's application 18 for this mark? 19 (Witness reviews the exhibit.) 20 A. Yes. 21 Q. Where is that? 22 A. The third page. 23 Q. Does that carry-over onto the 24 following page? 25 (Witness reviews the exhibit.) Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 188 of 190 PageID #:576 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 243 1 S. ZHU 2 A. Yes. 3 Q. Do you see on those pages, 3 and 4 4, any Notice of Opposition filed by Coach? 5 (Witness reviews the exhibit.) 6 A. No. 7 MS. SHIELDS: I have no other 8 questions. 9 EXAMINATION 10 BY MR. COLE: 11 Q. Looking back at 3-G and 3-F 12 there. 13 (Witness reviews the exhibit.) 14 Q. When you look at the first page 15 and you see "abandoned" there, do you see 16 that? 17 (Witness reviews the exhibit.) 18 A. Yes. 19 Q. All right. When you saw that, 20 did you ask yourself, "Wait. We didn't 21 abandon our application. What's this about?" 22 A. No, I won't. 23 Q. You "won't"? 24 A. (No response). 25 I'm asking: Did you? Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 189 of 190 PageID #:577 depo@transperfect.com -- 212.400.8845 TransPerfect Legal Solutions Page 254 1 2 CERTIFICATE 3 4 STATE OF NEW YORK ) 5 : ss 6 COUNTY OF NEW YORK ) 7 8 I, JOSEPH V. CONNOLLY, a Reporter 9 and Notary Public for the State of New 10 Jersey, do hereby certify: 11 THAT SAM ZHU, the witness whose 12 deposition is herein before set forth, 13 was duly sworn by me and that such 14 deposition is a true record of the 15 testimony given by such witness. 16 I FURTHER CERTIFY that I am not 17 related to any of the parties to this 18 action by blood or marriage and that I am 19 in no way interested in the outcome of 20 this matter. 21 IN WITNESS WHEREOF, I have hereunto 22 set my hand this 28th day of November, 23 2014. 24 25 JOSEPH V. CONNOLLY Case: 1:13-cv-07165 Document #: 32 Filed: 01/05/15 Page 190 of 190 PageID #:578