UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

STARBUCKS CORPORATION, a Washington corporation; and STARBUCKS U.S. BRANDS, INC., a California corporation,

Plaintiffs,

v.

 

WOLFE'S BOROUGH COFFEE, INC., a New Hampshire corporation d/b/a BLACK BEAR MICRO ROASTERY,

Defendant.

 

No. Ol-CV-5981 (LTS)(THK)

 

 

PLAINTIFFS' FIRST REQUESTS FOR ADMISSIONS TO DEFENDANT

              Plaintiffs Starbucks Corporation and Starbucks U.S. Brands Corporation (named herein as "Starbucks U.S. Brands, Inc.") ("Plaintiffs"), by their attorneys, Jones, Day, Reavis & Pogue, hereby request, pursuant to Rule 36 of the Federal Rules of Civil Procedure, that Defendant Wolfe's Borough Coffee, Inc., d/b/a Black Bear Micro Roastery ("Black Bear"), admit the truth of the matters set forth in this Request for Admissions (the "Request"),

               The following definitions and instructions shall apply to each and every part of this Request as if fully set forth therein:

                                        DEFINITIONS

1.                  "Plaintiffs" shall mean Starbucks Corporation and Starbucks U.S. Brands, Corporation and any of their officers, directors, employees, agents and representatives and all persons acting or purporting to act on their behalf.

2.                   "Starbucks" shall mean Starbucks Corporation and any of its officers, directors, employees, agents and representatives and all persons acting or purporting to act on its behalf.

3.       "U.S. Brands" shall mean Starbucks U.S. Brands Corporation and any of its officers, directors, employees, agents and representatives and all persons acting or purporting to act on its behalf.

4.       "Black Bear" shall mean Wolfe's Borough Coffee, me. d/b/a Black Bear Micro Roastery and any of its officers, directors, employees, agents and representatives and all persons acting or purporting to act on its behalf.

5.       The "Starbucks Mark" shall mean the name and trademark "Starbucks."

6.       "Complaint" shall mean the Complaint in this action dated July 2, 2001.

7.       "Communication" shall mean the transmittal of information (in the form of facts, ideas, inquiries or otherwise).

8.       "Document" and "documents" are used in the broadest permissible sense under the Federal Rules of Civil Procedure and shall include, without limitation, tangible things and all written, typewritten, recorded (including audio or videotape or both), graphic, photographic (including negatives), facsimile transmissions, or computerized materials in whatever form, including copies, drafts, and reproductions thereof to which you have or have had access and every copy of such document which contains any commentary or notation not appearing in the original.

9.                  "Person" shall mean any natural person or any business, legal or governmental entity or association.

10.               "Entity" shall mean any company, corporation, partnership, union, joint venture, sole proprietorship, association, government agency, organization or any other similar type of group through which business is conducted, or any director, officer, employee or agent thereof.

11.     "Concerning" shall mean relating to, referring to, describing, evidencing or constituting.

12.     "Relate to" and "relating to" shall mean and include any information concerning, comprising, identifying, summarizing, evidencing, containing, discussing, mentioning, describing, reflecting, comparing, analyzing, memorializing or pertaining in any way to the subject matter of the discovery request in which such term is used.

13.    "All" and "each" shall be construed as all and each.

14.     "And" and "or" shall be construed either disjunctively or conjunctively as necessary to bring within the scope of the discovery request all responses that might otherwise be construed to be outside of its scope.

15.     Singular forms of any noun or pronoun shall embrace and be read to  include the plural as the context may make appropriate.

16.    Masculine forms of any noun or pronoun shall embrace and be read to include the feminine or neuter, as the context may make appropriate.

INSTRUCTIONS

1.                  Each matter is admitted unless, within 30 days after service of this Request, Black Bear serves a written answer or objection addressed to the matter, signed by Black Bear or its attorney.

2.                  If objection is made, the reasons therefor shall be stated. The answer shall specifically deny the matter or set forth in detail the reasons why Black Bear cannot truthfully admit or deny the matter. A denial shall fairly meet the substance of the requested admission, and when good faith requires that Black Bear qualify an answer or deny only a part of the matter of which an admission is requested, it shall specify so much of it as is true and qualify or deny the remainder.

3.                  Black Bear may not give lack of information or knowledge as a reason for failure to admit or deny unless it states that it has made reasonable inquiry and that information known or readily obtainable by it is insufficient to enable it to admit or deny.

4.                  If Black Bear does not admit an item, it shall:

(a)                Produce to Plaintiffs all documents concerning the requested admission in its possession, custody or control;

(b)               State, with particularity, the factual basis upon which its response is based; and

(c)                Identify each and every person with knowledge of the requested admission.

5.                  These requests for admissions are continuing. Black Bear shall promptly supply by way of supplemental responses any and all additional information that may become known prior to any hearing in or trial of this action.

 

REQUESTS FOR ADMISSION

1.                  Admit that Black Bear was aware of the existence of Starbucks at the time Black Bear began manufacturing and selling a blend of roasted coffee under the name "Charbucks Blend."

2.                  Admit that Black Bear was aware of the existence of the Starbucks Mark at the time Black Bear began manufacturing and selling a blend of roasted coffee under the name "Charbucks Blend."

3.                  Admit that Starbucks' trademark registrations attached as Exhibit A to the Complaint are valid.

4.       Admit that the Starbucks Mark became a valid trademark before Black Bear began manufacturing and selling a blend of roasted coffee under the name "Charbucks Blend."

 5.       Admit that the Starbucks Mark is "famous" within the meaning of the Federal Trademark Dilution Act, 15 U.S.C. 1125(c) and 1127.

6.       Admit that the Starbucks Mark became "famous" within the meaning of the Federal Trademark Dilution Act, 15 U.S.C. 1125(c) and 1127, before Black Bear began manufacturing and selling a blend of roasted coffee under the name "Charbucks Blend."

7.       Admit that, no later than August 1997, Black Bear was informed by Starbucks that Black Bear's use of the name "Charbucks Blend" had created and would continue to create confusion among consumers that Black Bear's product is affiliated with or sponsored by Starbucks.

8.       Admit that after August 1997, Black Bear has manufactured and sold a blend of roasted coffee under the name "Charbucks Blend" with knowledge that Starbucks claimed such actions to infringe and dilute the Starbucks Mark.

9.                  Admit that Black Bear's use of the name "Charbucks" causes consumers who hear or read that name to think of Starbucks.

10.              Admit that Black Bear uses the "Charbucks" name to identify a product that Black Bear offers for sale to the public.

11.              Admit that Black Bear manufactures and sells a blend of roasted coffee under the "Charbucks" name.

12.              Admit that in February 1997, Black Bear developed a dark roasted blend of coffee that it named "Charbucks Blend."

13.              Admit that Black's Bear's "Charbucks Blend" coffee was first sold to customers on or about February 24, 1997.

14.                Admit that Black Bear's purpose in selecting the name "Charbucks" for its blend of dark roasted coffee was to convey a sense of humor.

15.              Admit the name "Charbucks" conjures up the image of charred coffee beans.

16.              Admit that the "Charbucks" name rhymes with Starbucks.

17.              Admit that the Starbucks Mark is held in high regard by consumers.

18.               Admit that the use of the word "char" in the "Charbucks" name has obvious negative connotations.

 

Dated: New York, New York

       February 1, 2002

 

JONES, DAY, REAVIS & POGUE

By:

   Bonnie L. Hemenway (BH-2246)

   Barbra S. Levy (BL-3306)

599 Lexington Avenue

New York, New York 10022

(212) 326-3939

 

 

Of Counsel:

John C. Rawls

JONES, DAY, REAVIS & POGUE

555 West Fifth Street, Suite 4600

Los Angeles, California 90013

(213) 489-3939


CERTIFICATE OF SERVICE

              

BONNIE L. HEMENWAY, declares, pursuant to 28 U.S.C. Section 1746, as follows:

               1.        I am an attorney in the firm of Jones, Day, Reavis & Pogue, counsel for Plaintiffs Starbucks Corporation and Starbucks U.S. Brands Corporation (named herein as "Starbucks U.S. Brands, Inc.").

               2.       On February 1, 2002,1 caused service of true copies of the within Plaintiffs' First Set of Interrogatories to Defendant to be made, by first-class mail, upon:

Michael K. Terry, Esq.

Konowitz & Greenberg

110 Cedar Street, Suite 250

Wellesley Hills, Massachusetts 02481-9527

 

Mark S. Kaufman, Esq.

The Law Offices of Mark S. Kaufman

36 West 44th Street, Suite 900

New York, New York 10036

 

 

Attorneys for Defendant Wolfe's

Borough Coffee, Inc., d/b/a Black

Bear Micro Roastery

 

3.              I declare under penalty of perjury that the foregoing is true and correct.

 

Dated: New York, New York

February 1, 2002

BONNIE HEMENWAY