Free Trial Memo - District Court of Connecticut - Connecticut

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF CONNECTICUT _____________________________________________ ) ) Plaintiff, ) ) v. ) ) OMEGA ENGINEERING, INC., ) OMEGA SCIENTIFIC, INC., and ) OMEGA PRESS, INC., ) ) Defendants. ) ) OMEGA ENGINEERING, INC., ) ) Counterclaim-Plaintiff, ) ) v. ) ) OMEGA, S.A. and ) THE SWATCH GROUP LTD., ) ) Counterclaim-Defendants. ) _____________________________________________) OMEGA, S.A.,

Civil Action No.: 3:01 CV 2104 (SRU)

JOINT TRIAL MEMORANDUM Having conferred between themselves pursuant to Fed. R. Civ. P. 16, DefendantCounterclaim-Plaintiff Omega Engineering, Inc. ("OEI") and Plaintiff-Counterclaim-Defendant Omega, S.A. ("OSA"), submit the following Joint Trial Memorandum: 1. TRIAL COUNSEL a. For Counterclaim-Plaintiffs: Thomas A. Smart Paul C. Llewellyn Victoria Haje KAYE SCHOLER LLP 425 Park Avenue New York, New York 10022
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Tel.: (212) 836-8000 Fax: (212) 836-6463
Thomas E. Minogue MINOGUE BIRNBAUM LLP 237 Elm Street New Canaan, CT 06840 Tel.: (203) 966-6916

Fax: (203) 966-6917 b. For Counterclaim-Defendants: Jess M. Collen Matthew Wagner Philip J. Miolene COLLEN IP The Holyoke-Manhattan Building 80 South Highland Avenue Ossining, New York 10562 Tel.: (914) 941-5668 Fax: (914) 941-6091 Paul A. Fattibene Arthur T. Fattibene FATTIBENE & FATTIBENE 2480 Post Road Southport, CT 06490 Tel.: (203) 255-4400 Fax: (203) 259-0033

2.

JURISDICTION This Court has jurisdiction pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1332,

1338 and 1367.

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3.

JURY TRIAL OEI Statement: OEI has moved the Court for an order of voluntary dismissal with prejudice of four of

OEI's six remaining counterclaims in this action ­ Counterclaim Three, for trademark infringement under 15 U.S.C. § 1114; Counterclaim Four, for unfair competition and false designation of origin under 15 U.S.C. § 1125(a); Counterclaim Six, for federal trademark dilution under 15 U.S.C. § 1125(c); and Counterclaim Seven, for violation of the Connecticut Unfair Trade Practices Act, Conn. Gen. Stats. §§ 42-110a, et seq. See Motion and Incorporated Memorandum of Law to Voluntarily Dismiss Certain Counterclaims and to Strike Jury Demand, filed November 7, 2005. OSA also have waived its claims for damages and profits on its remaining counterclaims, and has moved the Court to strike the jury demand in this action on the ground that no claim remains in this action that is triable to a jury, and, therefore, that this case should be tried to the Court. See id. OEI had previously requested that OSA stipulate to the foregoing dismissal of claims and withdrawal of the jury demand, but, as of November 7, 2005 when OEI filed its Motion to Voluntarily Dismiss Certain Counterclaims and to Strike Jury Demand, OSA had not indicated whether it would consent to the dismissal of claims and withdrawal of the jury demand. OSA Statement: OSA recognizes that OEI moved to voluntarily dismiss certain claims and waive claims to damages on November 7, 2005. OSA's response is due by December 1, 2005. OSA is unable to consent to OEI's motion at this time.1
1

While OSA is not in a position to consent to OEI's voluntary dismissal, OEI has represented that it does not plan to pursue its remaining claims and also waives it claims (continued...) 3

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4.

LENGTH OF TRIAL Counsel estimate a total of two to three days of trial.

5.

FURTHER PROCEEDINGS The parties will file their objections to evidence and in limine motions in accordance with

the September 27, 2005 Pre-Trial Order. As set forth above, on November 7, 2005, OEI filed its Motion to Voluntarily Dismiss Certain Counterclaims and to Strike Jury Demand, which is pending. On October 18, 2005, OSA filed its Motion for Reconsideration of the Court's Order Entered on October 3, 2005 on the Parties' Cross-Motions for Summary Judgment, which is pending. 6. NATURE OF THE CASE (a) Breach of Contract

OEI Statement: OEI alleges that OSA breached Paragraph 4(b) of the parties' 1994 Agreement by maintaining, or causing to be maintained, United States registration numbers 708,731 and 1,290,661 for apparatus industrially and/or scientifically employed for measuring or controlling variable parameters, including, in particular, the following goods: Reg. No. 1,290,661: computer apparatus for controlling the measurement of time and distance for . . . scientific investigation, and industrial application. computers for calculating information in respect of time and distance, storing such information, and making the same available in visual or audible form,
1

(...continued) for damages, fees and costs against The Swatch Group Ltd. with respect to the counterclaims that it seeks to voluntarily dismiss. As a result, it seems unlikely that The Swatch Group Ltd. will remain a party to this action. 4

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Reg. No. 708,731:

electronic time recorders for automatic precision timing in science and industry

OSA Statement: OSA denies that it has breached Paragraph 4 (b) of the 1994 Agreement. (b) Cancellation of United States Trademark Registrations Nos. 708,731 and 1,290,661 For Abandonment and Fraud Under 15 U.S.C. §§ 1064 and 1119

OEI Statement: OEI seeks cancellation in whole or in part of OSA's Registration Nos. 708,731 and 1,290,661, pursuant to 15 U.S.C. § 1064(3) and 15 U.S.C. §1119 on the grounds of abandonment and fraud. OSA has abandoned the OMEGA marks in commerce in the United States for "electronic time recorders for automatic precision timing in science and industry" as recited in Registration No. 708,731. OSA also has abandoned use of the OMEGA marks in commerce in the United States for, inter alia, "computer apparatus for checking and controlling the measurement of time and distance for . . . scientific investigation, and industrial application, including the acquisition, transmission, and management of information intended for transportation, publicity, and financial use; computers for calculating information in respect of time and distance, storing such information, and making the same available in visual or audible form," as recited in Registration No. 1,290,661. As a separate and independent ground for cancellation, OEI will show that OSA has fraudulently maintained Registration Nos. 708,731 and 1,290,661 in whole or in part by filing renewal affidavits and maintaining registrations that falsely stated that its OMEGA mark was in use in commerce on "electronic time recorders for automatic precision timing in science and industry" (Registration No. 708,731) and on "computer apparatus for controlling the measurement of time and distance for . . . scientific investigation, and industrial application" and 5

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"computers for calculating information in respect of time and distance, storing such information, and making the same available in visual or audible form." (Registration No. 1,290,661). OEI will show that no goods intended for use in "science or industry," or "scientific investigation and industrial application," as those terms are used in Registration Nos. 708,731 and 1,290,661, were sold in the United States under OSA's OMEGA marks at the time that OSA's renewals were filed, or are sold in the United States under OSA's OMEGA marks today. OSA Statement: OSA has not abandoned the goods described in the subject registrations, and has committed no fraud with respect to the maintenance and/or renewal of these registrations. Further OEI cannot demonstrate that OSA intended or intends to abandon its trademarks or intends or intended to perpetrate a fraud on the PTO. Thus, OSA denies that OEI can prove the grounds for cancellation, as set forth in 15 U.S.C. § 1119, exist. 7. STATEMENT OF THE CASE OEI Statement: This is an action by OEI against OSA in which OEI contends that by maintaining the foregoing registrations, OSA has breached a 1994 settlement agreement between the parties pursuant to which OSA agreed not to register or maintain any registrations for OMEGA marks covering "Apparatus industrially and/or scientifically employed for measuring or controlling variable parameters such as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain and flow." OEI further contends that two of OSA's federal trademark registrations for the mark OMEGA, Registration Nos. 708,731 and 1,290,661, should be cancelled in whole or in part for fraud or the Patent and Trademark Office and for

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abandonment of the OMEGA mark with respect to the goods covered by the registrations as set forth in Section 6, supra. OSA Statement: OSA intends to demonstrate that OEI cannot prove that OSA did not use the goods as represented in the registrations, including as represented in any renewals. OEI cannot prove that OSA that intends or intended to commit fraud or intends or intended to abandon the marks in question. OSA denies that it has breached the 1994 Agreement and denies that any grounds for cancellation of its registrations exist. 8. TRIAL BY MAGISTRATE JUDGE The parties do not consent to trial by a Magistrate Judge. 9. LIST OF WITNESSES (a) (b) 10. The lists of OEI's witnesses and potential witnesses are attached as Exhibit A. The lists of OSA's witnesses and potential witnesses are attached as Exhibit B.

DEPOSITION TESTIMONY OEI's list of deposition designations is attached as Exhibit C. OSA's list of deposition

designations and OEI's counter-designations and objections to OSA's deposition designations are attached as Exhibit D. 11. EXHIBITS OEI's exhibits and potential exhibits are listed in Exhibit E. OSA's exhibits and potential exhibits are listed in Exhibit F. 12. ANTICIPATED EVIDENTIARY PROBLEMS/MOTIONS IN LIMINE A list of anticipated evidentiary problems is attached as Exhibit G. 13. STIPULATIONS OF FACT AND LAW 7

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The parties' stipulations of fact are attached as Exhibit H. The parties statement of contested issues of fact and law is attached as Exhibit I. 14. TRIAL TO COURT/JURY OEI's proposed findings of fact and conclusions of law are attached as Exhibits J.2 OSA's proposed findings of fact and conclusions of law are attached as Exhibit K. OSA's Proposed Voir Dire Questions are attached as Exhibit L. OSA's Proposed Jury Instructions are attached as Exhibit M. OSA's Proposed Verdict Instructions are attached as Exhibit N. OSA's Proposed Case Statement is attached as Exhibit O.

Dated: November 10, 2005 Respectfully submitted,

_______________________ Jess M. Collen (CT 20918) Matthew Wagner (CT 25926) COLLEN IP The Holyoke-Manhattan Building 80 South Highland Avenue Ossining, New York 10562 Tel.: (914) 941-5668 Fax: (914) 941-6091 Paul A. Fattibene Arthur T. Fattibene FATTIBENE & FATTIBENE 2480 Post Road
2

________________________________ Thomas A. Smart (CT 21462) Paul C. Llewellyn (CT 25417) KAYE SCHOLER LLP 425 Park Avenue New York, NY 10022 Tel.: (212) 836-8761 Fax: (212) 836-7154

Thomas E. Minogue (CT 06845) MINOGUE BIRNBAUM LLP 237 Elm Street New Canaan, CT 06840

Because OEI has moved to strike the jury demand in this case on the ground that no issues triable to a jury remain in the case, OEI has submitted proposed findings and conclusions rather than proposed jury instructions, proposed voir dire questions, verdict form and case statement. 8

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Southport, CT 06490 Tel.: (203) 255-4400 Fax: (203) 259-0033 Attorneys for Plaintiff Omega, S.A.

Tel.: (203) 966-6916 Fax: (203) 966-6917 Attorneys for Omega Engineering, Inc., Omega Press, and Omega Scientific, Inc.

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Exhibit A: Omega Engineering's List of Witnesses 1. Witnesses OEI Expects to Call at Trial

B. Christine Riggs Omega Engineering, Inc. One Omega Drive Stamford, Connecticut Hours of testimony: 1 hour Brief summary of anticipated testimony: OEI may call on Ms. Riggs to testify regarding the products OEI offers under the OMEGA marks, OEI's trademark registrations in the United States and potential injury from OSA's conduct. Ms. Riggs may also testify regarding OEI's objections to certain trademark filings of OSA, and the parties' 1994 Agreement and its applicability to the case. Christiane Sauser Rupp Rue du Four 4, 1400 Yverdon, Switzerland Hours of testimony: 30 minutes Brief summary of anticipated testimony: OEI may call on Ms. Rupp to testify regarding OSA's trademark filings at issue in this case and concerning products sold or anticipated to be sold by OSA and its affiliates under the OMEGA marks. Hanspeter Rentsch Bangertli 12 Bettlach, Switzerland Hours of testimony: 30 minutes Brief summary of anticipated testimony: OEI may call on Mr. Rentsch to testify regarding OSA's trademark filings at issue in this case and concerning products sold or anticipated to be sold by OSA and its affiliates under the OMEGA marks.

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Robert Emmons 28 Maurice Lane Huntington, New York. Hours of testimony: 30 minutes Brief summary of anticipated testimony: OEI may call on Mr. Emmons to testify, or may rely on excerpts from Mr. Emmons' deposition testimony, regarding products sold or anticipated to be sold by OSA and its affiliates under the OMEGA marks. Guy Gibbons GDG, Inc. 1463 SE 8th Court Deerfield Beach, Florida Hours of testimony: 30 minutes Brief summary of anticipated testimony: OEI may call on Mr. Gibbons to testify, or may rely on excerpts from Mr. Gibbons' deposition testimony, regarding products sold or anticipated to be sold by OSA and its affiliates under the OMEGA marks. 2. Witnesses OEI May Call at Trial if the Need Arises

Dr. William A. Drucker 32 Lower Church Hill Road Washington, Connecticut Hours of testimony: 30 minutes Brief summary of anticipated testimony: OEI may call on Dr. Drucker to testify regarding the negotiation, drafting and execution of the 1994 Agreement between OEI and OSA. Dr. Milton B. Hollander Omega Engineering, Inc. One Omega Drive Stamford, Connecticut Hours of testimony: 30 minutes Brief summary of anticipated testimony: OEI may call on Dr. Hollander to testify regarding the products OEI offers under the OMEGA marks, OEI's trademark registrations in the United States, and OEI's objections to certain trademark filings of OSA.

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Exhibit B: Omega S.A.'s List of Witnesses A. Witnesses OSA Expects to Call at Trial 1) Hamid A. Kayal Rue de L `Evole 120 Neuchatel, Switzerland

Brief summary of anticipated testimony: Mr. Kayal will testify as to OSA products sold under Registration No. 1,290,661 and Registration No. 708, 731, the Omega Alize' Wind Gauge, the OMEGA SRFID and RFID devices, and the OMEGA "Powertime" device. Mr. Kayal will also testify as to goods sold by OSA in the United States. 2) Guy D. Gibbons GDG Inc. 1463 SE 8th Court Deerfield Beach, FL 33441

Brief summary of anticipated testimony: Mr. Gibbons will testify as to OSA products sold under Registration No. 1,290,661 and Registration No. 708, 731, the Omega Alize' Wind Gauge, the OMEGA SRFID and RFID devices, and the OMEGA "Powertime" device. Mr. Gibbons will also testify as to goods sold by OSA in the United States. 3) Robert Emmons The Swatch Group (US), Inc. 1200 Harbor Boulevard, 7th Floor Weehawken, New Jersey

Brief summary of anticipated testimony: Mr. Emmons will testify as to OSA products sold under Registration No. 1,290,661 and Registration No. 708, 731, the Omega Alize' Wind Gauge, the OMEGA SRFID and RFID devices, and the OMEGA "Powertime" device. Mr. Emmons will also testify as to goods sold by OSA in the United States. 4) Christiane Sauser Rupp The Swatch Group Ltd. PO Box 1185 Faubourg du lac, 6, CH 2501 Bienne, Switzerland

Brief summary of anticipated testimony: Ms. Rupp will testify regarding OSA's trademark filings at issue, including specimens, renewals and maintenance. Ms. Rupp may also testify as to Omega, S.A. products sold in the United States. Ms. Rupp will testify as to the negotiation, drafting, execution, and purpose of the 1994 Agreement between OSA and OEI. B. Witnesses OSA May to Call at Trial B-1

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1)

Hanspeter Rentsch The Swatch Group Ltd. PO Box 1185 Fauburg du lac, 6, CH 2501 Bienne, Switzerland

Mr. Rentsch may testify regarding OSA's trademark filings at issue, including specimens, renewals and maintenance. Mr. Rentsch may also testify as to Omega, S.A. products sold in the United States. Mr. Rupp may also testify as to the negotiation, drafting, execution, and purpose of the 1994 Agreement between OSA and OEI. 2) Silvio Chianese Omega Electronics, S.A. Mattenstrasse 149 2503 Biel/Bienne Switzerland

Brief summary of anticipated testimony: Mr. Chianese may testify as to the purpose and use of the OSA products, including the OMEGA Alize' Wind Gauge.

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Exhibit C - OEI's Deposition Designations Deposition of Robert Emmons, dated 4/08/04, in Omega, S.A. v. Omega Eng'g, Inc., 3:01 CV 2:04(MRK) Designations Page/Line 1/1 6/16 7/20 10/25 11/18 13/6 14/10 15/11 15/19 20/6 30/3 56/1 61/22 79/23 81/4 92/22 96/2 97/9 100/6 102/23 to Page/Line 1/25 6/21 10/16 11/11 12/19 13/9 15/7 15/15 16/3 20/13 31/8 57/2 62/2 80/4 83/22 93/4 96/8 97/13 100/10 103/6

Deposition of Guy D. Gibbons, dated 5/05/04, in Omega, S.A. v. Omega Eng'g, Inc., 3:01 CV 2:04(MRK) Designations Page/Line 1/1 6/15 30/4 33/7 35/14 36/16 37/8 49/8 to Page/Line 1/25 7/3 30/7 33/14 36/5 36/19 37/23 49/20 C-1

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Page/Line 49/22 51/14 54/21 57/3 59/15 60/23 71/13 76/23 81/5 85/9 86/9 91/14 93/23 99/25 109/25 112/17 117/1 118/6 118/17 119/14 122/18 123/16 126/18 142/20 144/19 151/20 153/8 157/10 182/11 185/6 195/5 195/10 195/22

to

Page/Line 50/15 51/25 55/8 57/16 59/20 61/8 72/15 78/11 82/15 85/18 86/13 92/8 94/3 100/12 110/21 116/11 117/16 118/9 118/25 120/21 123/7 126/5 126/23 143/21 144/23 152/19 153/23 157/16 182/16 185/13 195/8 195/20 195/22

Deposition of Hamid A. Kayal, dated 4/06/04, in Omega, S.A. v. Omega Eng'g, Inc., 3:01 CV 2:04(MRK) Designations Page/Line 1/1 6/17
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Page/Line 9/10 10/16 13/10 16/3 17/1 17/14 19/4 24/5 38/17 40/3 43/18 44/18 55/20 82/9 84/16 98/9 99/22 102/19 104/1 106/14 111/14 115/17 121/7 123/22 128/3 129/8 133/11 141/24 154/20 163/10 165/11 166/8 171/4 192/22 195/15 198/8 221/11 227/11 244/21 247/14 249/23 250/18

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Deposition of Hanspeter Rentsch, dated 4/23/04, in Omega, S.A. v. Omega Eng'g, Inc., 3:01 CV 2:04(MRK) Designations Page/Line 1/1 4/17 17/3 19/4 60/13 103/23 104/23 108/6 109/8 113/14 116/14 117/11 117/21 118/20 122/9 124/17 125/25 128/16 131/19 132/15 136/3 143/7 144/4 149/7 151/5 152/13 152/16 158/25 159/9 265/25 266/17 268/3 to Page/Line 1/19 5/7 18/9 21/20 62/16 104/10 105/3 108/16 10915 114/5 116/19 117/18 118/8 121/7 123/11 125/5 128/6 131/15 131/23 135/23 138/25 143/25 144/13 151/2 152/11 152/13 152/18 159/7 159/9 266/9 266/24 268/19

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Deposition of Christiane S. Rupp, dated 6/27/01, in Omega, S.A. v. Omega Eng'g, Inc., 300 CV 1848 JBA Designations Page/Line 1/1 2/1 3/14 4/13 5/15 6/25 8/3 10/3 11/25 12/10 13/12 17/22 54/4 57/14 60/24 61/21 66/14 69/13 70/1 77/9 79/13 82/22 102/8 167/17 to Page/Line 1/25 2/25 3/25 4/15 6/13 7/23 8/7 10/9 12/6 12/15 13/18 19/11 56/6 58/2 61/7 62/10 68/15 69/17 70/6 77/23 81/24 84/9 102/24 169/4

Deposition of Christiane S. Rupp, dated 3/16/04, in Omega, S.A. v. Omega Eng'g, Inc., 3:01 CV 2:04(MRK) Designations Page/Line 1/1 6/23 10/11 11/8 to Page/Line 1/25 7/7 10/22 12/3 C-5

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Deposition of Christiane S. Rupp, dated 3/16/04, in Omega, S.A. v. Omega Eng'g, Inc., 3:01 CV 2:04(MRK) Designations Page/Line 12/10 28/10 72/19 168/21 248/1 250/16 254/10 270/3 287/11 291/12 292/8 333/5 to Page/Line 12/11 28/17 73/4 169/12 248/22 252/9 255/8 271/7 290/5 291/23 293/6 333/19

Deposition of Christiane S. Rupp, dated 3/17/04, in Omega, S.A. v. Omega Eng'g, Inc., 3:01 CV 2:04(MRK) Designations Page/Line 357/1 407/8 to Page/Line 357/25 408/19

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Exhibit D - OSA's Deposition Designations Deposition of Ralph Michel, dated April 9, 2004, Omega, S.A. v. Omega Eng'g, Inc., 3:01 CV 2:04 MRK OSA's Designations Page 11, Line 25 to Page 12, Line 7 Page 28, Line 25 to Page 29, Line 5

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OEI's Counterdesignations and Objections Deposition of Ralph Michel, dated April 9, 2004, Omega, S.A. v. Omega Eng'g, Inc., 3:01 CV 2:04 MRK Objections OSA's Designations OEI's Objections

Page 11, Line 25 to Page 12, Line 7 Page 28, Line 25 to Page 29, Line 5

Relevance Relevance Counterdesignations

OEI objects to the Ralph Michel's testimony on the grounds of relevance, as indicated above. However, to the extent that the Court does not sustain OEI's objection, OEI submits the following counterdesignations:

Page 11, Line 10 to 24 Page 57, Line 18 to Page 58, Line 14

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Exhibit E - OEI's Exhibits and Potential Exhibits Exhibit E: OEI's Exhibit List Defendant/Counter-plaintiff Omega Engineering, Inc. ("OEI") expects to offer the following exhibits at trial: EXHIBIT Defendant's Exhibit A Defendant's Exhibit B Defendant's Exhibit C Defendant's Exhibit D Defendant's Exhibit E Defendant's Exhibit F Defendant's Exhibit G Defendant's Exhibit H Defendant's Exhibit I Defendant's Exhibit J DESCRIPTION OF EXHIBIT OSA's Trademark Registration Certificate for Registration No. 1,290,661 (Sauser-Rupp 3/16/04 Dep. Ex. 55) OSA's Trademark Registration Certificate for Registration No. 708,731 (Sauser-Rupp 3/16/04 Dep. Ex. 61) Trademark Renewal Application for Registration No. 708,731 (Sauser-Rupp 3/16/04 Dep. Ex. 68; Bates OSA 683-713) Trademark Renewal Application for Registration No. 1,290,661 (Sauser-Rupp 3/16/04 Dep. Ex. 69; Bates OSA 714-764) 1994 Agreement between OEI and OSA (M. Hollander 9/14/04 Dec. Ex. T, bearing numbers 2464000287-2464000289). Omega Engineering, Inc. v. Omega, S.A., 3:98 CV 2464 (AVC) ("Omega I") Settlement Agreement (Riggs 9/14/04 Dec. Ex. L) Order in Omega I, dated August 11, 2004 (Riggs 9/14/04 Dec. Ex. N) Judgment in Omega I (Riggs 9/14/04 Dec. Ex. O) Notice of Deposition of Omega S.A. Pursuant to Fed. R. Civ. P. 30(b)(6) (Smart 9/15/04 Dec. Ex. F) April 5, 2004 Letter from Collen IP to Thomas Smart re: list of topics that Mr. Emmons and Mr. Kayal will cover at their depositions (Smart 9/15/04 Dec. Ex. Q) Omega Electronics' United States sales figures and scoreboard installations (Smart 9/15/04 Dec. Ex. R & Kayal Dep. Ex. 115) Omega Electronics Invoices (Smart 9/15/04 Dec. Ex. S & Kayal Dep. Ex. 116, Bates OSA 174-278) Omega Electronics Invoices (Smart 9/15/04 Dec. Ex. T & Kayal Dep. Ex. 117, Bates OSA 488-682) E-1

Defendant's Exhibit K Defendant's Exhibit L Defendant's Exhibit M

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Defendant's Exhibit N Defendant's Exhibit O Defendant's Exhibit P Defendant's Exhibit Q Defendant's Exhibit R Defendant's Exhibit S Defendant's Exhibit T Defendant's Exhibit U Defendant's Exhibit V Defendant's Exhibit W Defendant's Exhibit X Defendant's Exhibit Y Defendant's Exhibit Z Defendant's Exhibit AA Defendant's Exhibit BB

Omega Electronics Invoices (Smart 9/15/04 Dec. Ex. U & Kayal Dep. Ex. 118, Bates OSA 1162-1273) Printouts from GDG, Inc. Website (Gibbons Dep. Ex. 252, Bates OSA 2368-2488) Omega Electronics Product Brochures (Gibbons Dep. Ex. 253, Bates OSA 2328-2367) Price Lists for Omega Electronics Products Sold by GDG, Inc. (Gibbons Dep. Ex. 256, Bates OSA 2496-2499) List of Major Display Board Installations (Kayal Dep. Ex. 108, Bates OSA 637-640) Omega Electronics Product Brochures (Kayal Dep. Ex. 107) "At the Service of Sport" Omega Electronics brochure (Kayal Dep. Ex. 104, Bates OSA 811-816) "The Last Word in Sports Timing" Omega Electronics brochure (Kayal Dep. Ex. 121, Bates OSA 609-616) "The Sport- Our Vocation" Omega Electronics brochure (Kayal Dep. Ex. 122, Bates OSA 617-624) Omega Electronics Newsletter (Kayal Dep. Ex. 123) Trademark Manual of Examination Procedures, 4th ed. Registration Certificate for OEI's Registration No. 2,022,762 (Riggs 9/14/04 Dec. Ex. C) Registration Certificate for OEI's Registration No. 2,034,705 (Riggs 9/14/04 Dec. Ex. D) List of OEI's Registered OMEGA Trademarks in the United States (Riggs 9/14/04 Dec. Ex. B) OSA's Second Supplemental Answers to Defendants' First Set of Interrogatories, dated March 15, 2004 (Sauser-Rupp 3/16/04 Dep. Ex. 22) OSA's Application for Renewal of U.S. Registration No. 1,290,661, received by the U.S. Patent & Trademark Office on February 22, 2005 PTO's Notice of Acceptance and Notice of Renewal of Registration No. 1,290,661 (mailing date 8/3/05)

Defendant's Exhibit CC

Defendant's Exhibit DD

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Defendant's Exhibit EE

Deposition of Christiane Sauser Rupp, dated June 27, 2001, in Omega S.A. v. Omega Engineering, Inc., Civil Action no. 3:00 CV 1848 JBA ("Omega II") Trademark File for OEI's Trademark Application No. 76-337450 (Rentsch Dep. Ex. 212) Trademark File for OEI's Trademark Application No. 76-337374 (Rentsch Dep. Ex. 213) Notice of Deposition of Omega S.A. Pursuant to Fed. R. Civ. P. 30(b)(6), in Omega II (Sauser-Rupp 6/27/01 Dep. Ex. 101 in Omega II) Notice of Opposition to OEI's Trademark Application No. 74747885 filed by OSA with the PTO, dated May 16, 2001 Petition for Cancellation of OEI's Trademark Registration No. 2,236,657 filed by OSA with the PTO, dated April 12, 2002 Third Amended Complaint

Defendant's Exhibit FF Defendant's Exhibit GG Defendant's Exhibit HH

Defendant's Exhibit II Defendant's Exhibit JJ Defendant's Exhibit KK

Defendant/Counter-plaintiff Omega Engineering, Inc. ("OEI") may offer the following exhibits at trial:

EXHIBIT Defendant's Exhibit LL Defendant's Exhibit MM Defendant's Exhibit NN Defendant's Exhibit OO Defendant's Exhibit PP

DESCRIPTION OF EXHIBIT Printouts from OMEGAWATCHES.COM (Smart 9/15/04 Dec. Ex. H) "Made in USA Handbook Volume 1" (M. Hollander 9/14/04 Dec. Ex. B) "Made in USA Handbook Volume 2" (M. Hollander 9/14/04 Dec. Ex. C) 1992 Agreement between OEI and OSA The American Heritage Dictionary of the English Language, Fourth Ed. (2000), http://dictionary.reference.com/search?q=such%20as

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Defendant's Exhibit QQ Defendant's Exhibit RR

Webster's Third New International Dictionary, pp. 1638, 2283, 2533 Defendants' First Set of Interrogatories and Requests for Admissions to Plaintiff-Counterclaim Defendant Omega S.A.(with attachment), dated November 21, 2003 OSA's Responses to Defendants' First Set of Interrogatories and Requests for Admissions to Plaintiff-Counterclaim Defendant Omega S.A., dated January 16, 2004 Swatch Group Annual Report 2002 (Rentsch Dep. Ex. 4)

Defendant's Exhibit SS

Defendant's Exhibit TT

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Exhibit F - OSA's Exhibits and Potential Exhibits Plaintiff/Counter-defendant Omega S.A. (OSA) expects to offer the following exhibits at trial.

PTX 1. 2.

Exhibit Description Excerpts from Omega Electronics' Website with page numbers added Document for prospective customers regarding information display systems of Omega Electronics (documents bearing production nos. 689-708) two page document referring to "Matchtime" (documents bearing production nos. 173-174) One page document called "New Water Polo" (documents bearing production nos. 194) "Starttime"-speaker and a flash for start of a competition (documents bearing production nos. 195-197) Omega Electronics Invoices from GDG Inc. Omega Saga, by Marco Richon (1998) "Rollertime"-display containing seven segments with data collection system and other terminals like the Powertime or Datalogger RS (documents bearing production nos. 215-216) Four-page Omega Electronics flap modules data sheet User manual for product from Omega Electronics (documents bearing production nos. 897-1093) All of OEI's written responses to interrogatories and requests to produce Event List which Omega was official watch and Official Time Keeper (Comontana golf tournament (Swiss), America's Cup (documents bearing production nos. 1020-1024) Publication entitled "Transactions in Measurement and Control," volume IV Publication entitled "Transactions in Measurement and Control," volume II Publication entitled "Transactions in Force-Related Measurements," volume III, second edition F-1

Origin Kayal Dep. Ex 25-A Kayal Dep. Ex 106 Kayal Dep. Ex 109 Kayal Dep. Ex 110 Kayal Dep. Ex 111

3.

4.

5.

6. 7. 8.

Kayal Dep. Ex 112

9. 10. 11. 12.

Kayal Dep. Ex 113 Kayal Dep. Ex 128

Sauser Rup Dep. Ex 21

13. 14. 15.

Sauser Rup Dep. Ex 36 Sauser Rup Dep. Ex 37 Sauser Rup Dep. Ex 38

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PTX 16. 17. 18.

Exhibit Description Temperature Handbook of Omega Engineering Document entitled "Chemical Engineering Buyers Guide, Mid-August 2002 Documents bearing production nos. OSA 2878 through OSA 2886 fax copies of Omega Electronics literature for two different types of matrix displays Documents bearing production nos.1038 through 1091 Documents bearing production nos. 2496 through 2499 Scan-O-Vision Hawk Eye Brochure Samples of an Omega Alize Wind Gauge, OMEGA "Powertime device", and OMEGA SRFID and RDID Access Systems Series of documents relating to the Alize Windgauge Documents bearing production Nos. 868 through 869, fax request for information on an Alize wind gauge and powertime display printer unit Search results for clock, marked for identification Display relating to passenger information displays (documents bearing production nos. 217-227) Series of documents from Omega Electronics relating to the Powertime Product Product and price list documents for the RFID products which was valid in 2001(documents bearing production nos. 843-862 and 228-236) User manual for product from Omega Electronics (documents bearing production nos. 897-1093): User manual; describes transmission protocol (documents bearing production nos. 253-267): Omega Electronics price book 2001 1992 Agreement (superseded by 1994 agreement) Letter from Halstead to SMH dated November 20, 1989

Origin Sauser Rup Dep. Ex 45 Sauser Rup Dep. Ex 47 Gibbons Dep. Ex 254

19. 20. 21.

Gibbons Dep. Ex 255 Gibbons Dep. Ex 256

22. 23.

Kayal Dep. Ex 214 Gibbons Dep. Ex 260 Hollander Dep. Ex 3 Kayal Dep. Ex 106 Kayal Dep. Ex 125 Kayal Dep. Ex 126 Kayl Dep. Ex 128 Kayal Dep. Ex 129 Sauser Rupp Dep. Ex. 26 Omega I Bates 00745

24. 25.

26. 27.

28. 29. 30. 31. 32.

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PTX 33.

Exhibit Description Letter from William Coutts to Dr. Hollander dated November 28, 1989 Letter from Halstead to SMH dated January 10, 1990 Letter from William Coutts to Halstead dated February 7, 1990 Letter from William Drucker to SMH dated May 1, 1992 Letter from William Drucker to SMH dated December 7, 1992 Letter from William Drucker to Robic dated May 15, 1985 Letter from Letter from Robin Bridge & John Liu to Wilkinson & Grist dated May 30, 1989 Letter from Wilkinson & Grist to Robin Bridge & John Liu dated June 27, 1989 Letter from Wilkinson & Grist (H.K.) to the H.K. Registrar dated January 2, 1992

Origin Omega I Bates 2464000300 Omega I Bates 00742 Omega I Bates 246400140 Omega I Bates 246400324 Omega I Bates 246400323 Omega I Bates 00797 Omega I Bates 00758 Omega I Bates 00749-00750 Omega I Joint Pre Trial Order Ex 383 Omega I Bates 000651 Omega I Bates 000657 Omega I Bates 000803 Omega I Bates 000811 Omega I Bates 000825 Omega I Bates 000843 Omega I Bates 001498-001546

34. 35. 36. 37. 38.

39.

40.

41.

42. 43. 44. 45. 46. 47. 48.

Omega Electronics Los Angeles '84 Olympics sports timing brochure Omega Electronics PowerTime product brochure Omega Electronics AREAS 21 product brochure Omega Electronics Product brochures Omega Electronics Sports Timing Equipment Price Book Omega Electronics RFID & SRFID Product and Price list Omega Electronics Scan `O' Vision Bridge Installation Manual, 3377-500, Version 1.3 Edition April 2001.

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PTX 49.

Exhibit Description Printouts of web pages from internet website hosted at Internet address www.omega-electronic.ch regarding technical information on products sold by Omega Electronics, produced in this litigation Promotional Information on products sold by Omega Electronics produced in this litigation.

Origin Omega I Bates 00162-00238 Omega I Joint Pretrial Order Exhibit 291 Omega I Bates 00631-00636 Omega I Bates 000539 -000540 00541 000570-000571 000572-000573 000576-000577 Omega I Bates 587-588 Omega I Bates 597-602 Omega I Bates 603-616 Omega I Bates 625-630 000625-000630 000617-000624 Omega I Bates 637-343-

50.

51.

Omega Electronics promotion materials for its timing systems Omega Electronics promotional materials for Alize Wind Gauge Omega Electronics promotion materials for Scan `O' Vision Bridge. Omega Electronics promotional brochure regarding timing. Brochure detailing information about Omega Electronics. Omega Electronics Equipment Data Sheet on False Start Monitoring System for Athletic Events. Omega Electronics Equipment Technical Data Sheet on Scan `O' Vision. Omega Electronics brochure on passenger information systems. Omega Electronics brochure on sports timing systems

52.

53. 54. 55. 56. 57.

58.

59.

60.

Omega Electronics Equipment brochure on sports timing equipment Omega Electronics Equipment brochure on sports timing equipment Omega Electronics Equipment brochure on sports timing equipment Omega Electronics Equipment brochure on ARES 21 device

61. 62. 63.

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PTX 64.

Exhibit Description Omega Electronics Equipment data sheet on Photosprint OPS2 Accessories Webster's Third New International Dictionary The NonLinear Circuits Handbook, Analog Devices, Inc. 1976 Modeling, Analysis and Control of Dynamic Systems, Palm III, William J., John Wiley & Sons (1983) NonLinear Cicuits Handbook and in Modeling Analysis and Control of Dynamic Systems Excerpts from website of www.omegaelectronics.com Demonstrative evidence in the form of a Powerpoint presentation of the chronology of the dispute Watch Your Time, Special Insert in the New York Times, October 16, 2005. Esquire Magazine, November 2004. OEI Hong Kong Application "?E under Application N" 1115A/87 in class 9 OEI applications under N's 12775 and 12776 in FDRG to register as trademarks OMEGA SOFT and OMEGA in class 9 and class 42 OEI Opposition to Application N'3221/86 OSA application N'3221/86 Agreement between OEI and OSA (UK) executed in 1984 Agreement between OEI and OSA (CAN.) executed in 1985 Trademark License Agreement between OEI and OSA executed in 1985 File History of OEI Honk Kong Trademark application 1115A of 1986 File History of OEI German trademark application nos. 12775 and 12776 File History of OEI's Canadian trademark application no. 74/480,757 Omega Engineering, Inc. Handbook of PH and Conductivity (Part only) Purchase Agreement between OEI and Valve Technologies, Inc., dated October 1998

Origin Omega I Bates 631-636

65. 66. 67. 68. 69. 70. 71. 72. 73. 74.

75. 76. 77. 78. 79. 80. 81. 82. 83.

84.

Omega I Bates 012488012496 Omega I Bates 012613012645

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PTX 85.

Exhibit Description Purchase Agreement between OEI and Danaher Controls dated October 1998 Purchase Agreement between OEI and Computer Boards dated February 1992 Purchase Agreement between OEI and Strawberry Tree Computers dated May 1986 The Flow and Level Handbook (document bearing bates stamp (001) The Electric Heaters Handbook (document bearing bates stamp 002) The Pressure Strain and Force Handbook (document bearing bates stamp 004) Omega Engineering invoice no. 844307 Omega Engineering invoice no. 906741 Omega Engineering invoice no. 780616 Omega Engineering invoice no. 859005 Omega Engineering invoice no. 922293 Omega Engineering invoice no. 449156 Omega Engineering invoice no. 472446 Omega Engineering invoice no. 298394 Omega Engineering invoice no. 502779 Omega Engineering invoice no. 527437 Omega Engineering invoice no. 561473 Omega Engineering invoice no. 668686 Omega Engineering invoice no. 683458

Origin Omega I Bates 012646012676 Omega I Bates 012677012692 Omega I Bates 012705012747 Omega I Bates 150001 Omega I Bates 150002 Omega I Bates 150004 Omega I Bates 400263 Omega I Bates 400234 Omega I Bates 400235 Omega I Bates 400239 Omega I Bates 400240 Omega I Bates 400246 Omega I Bates 400247 Omega I Bates 400249 Omega I Bates 400251 Omega I Bates 400252 Omega I Bates 400253 Omega I Bates 400254 Omega I Bates 400255

86.

87.

88. 89. 90. 91. 92. 93. 94. 95. 96. 97. 98. 99. 100. 101. 102. 103.

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PTX 104. 105. 106. 107. 108. 109.

Exhibit Description Omega Engineering invoice no. 533008 Omega Engineering invoice no. 505116 Omega Engineering invoice no. 796079 Omega Engineering invoice no. 858161 Omega Scientific Publication Omega advertisement

Origin Omega I Bates 400256 Omega I Bates 400257 Omega I Bates 400260 Omega I Bates 400261 Riggs Dep. Ex 4 M. Hollander Dep. Ex 4 Omega I Bates 2464000101 Omega I Bates 24640001062464000107 Omega I Bates 24640001122464000113 Omega I Bates 409-434 Omega I Bates 408-496) Omega I Bates 405 Omega I Bates 200-217 Omega I Joint Pretrial Order Exhibit 233

110.

OEI Solenoid Valve Timer Advertisement

111.

OEI Industrial Timer Advertisement

112.

OEI High Performance Process Timer/Controller Advertisement

113.

www.omega.com website printouts with OEI Timer/Controllers OEI Handbook of pH and Conductivity

114.

115.

OEI Transactions and Vol mm Master Index (cover)

116.

OEI Vol Complete Handbook of Science and Technical Books Subject Index to OEI Handbook and Encyclopedia

117.

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PTX 118.

Exhibit Description My Choice Collection Book

Origin Omega I Joint Pretrial Order Exhibit 308 Omega I Joint Pretrial Order Exhibit 306

119.

Omega Brochure English/Japanese

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Exhibit G - Anticipated Evidentiary Problems and Motions in Limine 1. OEI has filed a motion in limine to preclude hearsay and opinion testimony regarding the interpretation of the parties' 1994 Agreement. Each party anticipates that it will assert objections to certain exhibits listed by the other party, and that it will file and serve objections no later than seven calendar days prior to trial, pursuant to the September 27, 2005 Pre-Trial Order.

2.

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Exhibit H: Stipulations of Uncontroverted Facts Counterclaim-plaintiff Omega Engineering, Inc. ("OEI") and Counterclaim-defendant Omega, S.A. ("OSA"), solely for purposes of the trial of this action, and without waiver of any objections on the ground of relevance, hereby stipulate that the following facts are uncontroverted: Background Facts Regarding OEI 1. OEI is a Delaware corporation, with its principal place of business in

Stamford, Connecticut. 2. OEI was founded in 1962 by Mrs. Betty Ruth Hollander. OEI's very first

products were thermocouples, devices used in scientific and industrial fields (such as factories and laboratories) to measure temperatures. 3. OEI has used a design mark consisting of juxtaposed Greek letters Omega

(S) and Epsilon (+), the so-called "Omega bug." 4. The products marketed, distributed and sold under OEI's OMEGA marks

include scientific apparatus for measuring or controlling variable parameters such as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain and flow. 5. OEI maintains the domain name www.omega.com and its products are

available for purchase there. 6. In 1966, OEI first registered in the United States for an Omega trademark

relating to industrial and scientific apparatus. OEI's OMEGA trademark registrations include: Registration No. 2022,762 ("762") ("OMEGA") and Registration No. 2,034,705 ("705") ("S+").

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Registrations `762 and `705 relate "timers, namely period timers . . . industrially and/or scientifically employed" and "industrial and scientific clocks." 7. 8. mark Background Facts Regarding OSA 9. OSA is a company organized under the laws of Switzerland, with its OEI does not offer for sale watches under the mark OMEGA. Omega Engineering, Inc. has not sold any watches under the OMEGA

principal place of business in Bienne, Switzerland. 10. OSA, a subsidiary of The Swatch Group Ltd., sells, among other things,

watches, jewelry and related-watch products, such as watch bands and spare parts, under the mark OMEGA and a design mark consisting of the Greek letter Omega. 11. 12. OSA uses the domain name www.omega.ch. Swatch Group (U.S.) is the United States licensee of OSA that distributes

and sells OSA's OMEGA-branded watches in the United States. 13. Omega Electronics, a licensee of OSA, sells OMEGA-branded goods other

than watches in the United States. 14. Omega Electronics sells OMEGA-branded sports timing devices in the

United States through its exclusive U.S. distributor, GDG Inc. 15. OSA uses words and design marks that incorporate the words "Omega"

and the Greek letter "S". Its United States trademark registrations include: Registration Nos. 708,731 and 1,290,661. The 1994 Agreement Between OEI and OSA

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16.

Throughout the 1980's, Omega Engineering and OSA had a history of

disputing the scope of their respective trademark rights. 17. The two parties signed several agreements in the 1980's limited to certain

countries and trademark registrations. 18. In an effort to end such disputes in a worldwide agreement, in 1994 OEI

and OSA entered into a worldwide agreement (the "1994 Agreement"). 19. The 1994 Agreement was executed for and on behalf of OSA on May 3,

1994, and was executed for and on behalf of Omega Engineering on August 2, 1994 (the "1994 Agreement"). A true and correct copy of the 1994 Agreement is marked as Defendant's Exhibit ("DX") E. 20. only. 21. The 1994 Agreement supersedes a prior 1992 Agreement between the The 1994 Agreement was made and executed in the English language

same parties, a true and correct copy of which is marked as DX OO. 22. The 1994 Agreement was negotiated on OSA's behalf by William R.

Coutts and on OEI's behalf by Dr. William Drucker. Mr. Coutts is deceased. 23. The 1994 Agreement states, in part, that "[b]oth parties hereto are desirous

of coming to an arrangement for the avoidance of future interference Worldwide between their respective fields of commercial operation under their Rights in respect of Trademarks consisting of or including the word OMEGA and/or the Greek letter S or containing elements colourably resembling either or thos[e] two elements."

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24.

The 1994 Agreement settled various particular contested matters around

the world involving Omega Engineering's and OSA's trademarks. Among other things, Omega Engineering agreed to withdraw certain oppositions against OSA and amend certain definitions of goods in Omega Engineering's trademark applications and OSA agreed to amend certain definitions of goods in OSA's trademark applications. 25. Paragraph 4 of the 1994 Agreement states as follows:

Henceforth from the signing of the Agreement and effective in all contries of the World:a. OMEGA ENGINEERING INCORPORATED undertakes not to use, register, or apply to register any trademark consisting of or containing the word OMEGA or the Greek Letter O or any mark containing elements colourably resembling either of those two elements in respect of computer controlled measuring, timing and display apparatus, unless intended for science and industry. b. OMEGA SA undertakes not to use, register or apply to register any trademark consisting of or containing the word OMEGA or the Greek letter S, or any element colourably resembling either of those two elements, in respect of "Apparatus industrially and/or scientifically employed for measuring or controlling variable parameters such as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain and flow." c. OMEGA SA will not object to the use or registration by OMEGA ENGINEERING INCORPORATED of any trademarks consisting of or containing the word OMEGA or the Greek Letter O or either of those two elements, in respect of apparatus industrially and/or scientifically employed for measuring or controlling variable parameters such as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain, and flow. 26. The term "variable parameters" is not defined in the contract.

OSA's Renewals of Trademark Registration Nos. 708,731 and 1,290,661 Registration 708,731

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27.

United States Trademark Registration No. 708,731 was registered to OSA

on December 20, 1960 for the word OMEGA and the OMEGA symbol for use with "electronic time recorders for automatic precision timing in science and industry." 28. On December 20, 2000, OSA filed a trademark renewal application for the

mark OMEGA (and design) for Registration No. 708,731 and in doing so stated it was using the OMEGA mark on all of the goods listed in the registration. 29. OSA submitted a Combined Section 8 and 9 Declaration in accordance

with Sections 8 and 9 of the Lanham Act for its December 20, 2000 trademark renewal application for Registration No. 708,731. The declaration, also filed on December 20, 2000, was signed by Hanspeter Rentsch, senior vice president and general counsel for The Swatch Group Ltd. 30. The December 20, 2000 Combined Section 8 and 9 Declaration for

Registration No. 708, 731 stated, in pertinent part, "[t]hat registrant owns Registration No. 708,731, that the mark shown therein is in use in commerce on each of the goods recited in the registration, with the attached specimen showing the mark as currently used." 31. OSA represented that the OMEGA mark was in use in commerce as of

December 20, 2000 on electronic time recorders for automatic precision timing in science and industry. 32. In its December 20, 2000 filing with the PTO, OSA submitted a specimen

in support of renewal for Registration No. 708,731 which was a brochure for an Omega Electronics aquatic starting system.

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33.

No other specimens were submitted in support of the renewal for

Registration No. 708,731. 34. The PTO granted the renewal of Registration No. 708,731 following

receipt of OSA's renewal application. 35. OSA's Registration No, 708,731 for the word OMEGA and the OMEGA

symbol for "electronic time recorders for automatic precision timing in science and industry" remains on the United States federal trademark registry today. Registration No. 1,290,661 36. United States Trademark Registration No. 1,290,661 was registered to

OSA on August 21, 1984 and is for the word OMEGA and the OMEGA symbol for use with, among other products, "computer apparatus for checking and controlling the measurement of time and distance for sporting events, scientific investigation, and industrial application, including the acquisition, transmission, and management of information intended for transportation, publicity, and financial use; computers for calculating information in respect of time and distance, storing such information, and making the same available in visual or audible form." 37. On August 14, 1990, OSA filed a trademark renewal application for the

mark OMEGA (and design) for Registration No. 1,290,661 and in doing so stated it was using the OMEGA mark on all of the goods listed in the registration. 38. On August 14, 1990, OSA submitted a Combined Section 8 and 9

Declaration in accordance with Sections 8 and 9 of the Lanham Act for the trademark renewal application, which was signed by OSA's authorized representatives and dated July 26, 1990.

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39.

The Declaration Under Sections 8 and 15 for Registration No. 1,290,661,

dated July 26, 1990, stated, in part, that the OMEGA mark "has been in continuous use in commerce with the United States for five consecutive years from the date of the registration to the present, on or in connection with all of the goods of Classes 9 and 14 . . . recited in the registration." 40. The goods in International Class 9 recited in Registration No. 1,290,661

include "computer apparatus for controlling the measurement of time and distance for sporting events, scientific investigation, and industrial application." 41. In the declaration submitted to the PTO on August 14, 1990 in connection

with Registration No. 1,290,661, OSA represented that the OMEGA mark was in use in commerce as of July 26, 1990 on "computer apparatus for checking and controlling the measurement of time and distance for sporting events, scientific investigation, and industrial application." 42. In accordance with Sections 8 & 15 of the Lanham Act, on August 14,

1990, OSA submitted a specimen in support of renewal of Registration No. 1,290,661 which was a computer which measures and displays the times during athletic competitions. 43. The computer depicted in the specimen filed by OSA with the PTO on

August 14, 1990, in support of renewal of Registration No. 1,290,661, is a timing system for a sporting event. 44. No other specimens were submitted in support of the renewal for

Registration No. 1,290,661.

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45.

The PTO granted the renewal of Registration No. 1,290,661 following

receipt of OSA's renewal application. 46. On February 18, 2005, OSA submitted to the U.S. Patent & Trademark

Office an application for renewal of Registration No. 1,290,661, which included a declaration signed by Jean-Claude Monachon and Josiane Citiso of OSA. 47. A true and correct copy of OSA's February 18, 2005 application for

renewal of Registration No. 1,290,661, with its incorporated declaration and attached specimens, is marked as DX CC. 48. In its February 18, 2005 application for renewal of Registration No.

1,290,661, OSA requested renewal of Registration No. 1,290,661 only for the following goods: "computer apparatus for checking and controlling the measurement of time and distance for sporting events; computers for calculating information in respect of time and distance, storing such information, and making the same available in visual or audible form ­ all of which installations contain electronic elements" in International Class 9; and "watch cases" in International Class 14. 49. In its February 18, 2005 application for renewal of Registration No.

1,290,661, OSA did not seek renewal of Registration No. 1,290,661 for "Computer Apparatus for Checking and Controlling the Measurement of Time and Distance for . . Scientific Investigation, and Industrial Application, Including the Acquisition, Transmission, and Management of Information Intended for Transportation, Publicity, and Financial Use," which were previously listed in the registration. The Court's Prior Findings With Respect to the Parties' Consumers and Markets

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50.

The Court has previously found no likelihood of confusion between the

parties' uses of the OMEGA marks. 51. The Court has previously found no evidence of actual confusion between

the parties' uses of the OMEGA marks. 52. quality. 53. sophisticated. 54. channels of trade. Authentication of Exhibits 55. The document marked DX A is a true and correct copy of OSA's The Court has previously found that the parties operate in separate The Court has previously found that the parties' customers are The Court has previously found that the parties' products are of high

Trademark Registration Certificate for Registration No. 1,290,661. 56. The document marked DX B is a true and correct copy of Defendant's

OSA's Trademark Registration Certificate for Registration No. 708,731. 57. The document marked DX C is a true and correct copy of a Trademark

Renewal Application for Registration No. 708,731. 58. The document marked DX D is a true and correct copy of a Trademark

Renewal Application for Registration No. 1,290,661. 59. The document marked DX J is a true and correct copy of an April 5, 2004

Letter from Collen IP to Thomas Smart re: list of topics that Mr. Emmons and Mr. Kayal will cover at their depositions.

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60.

The document marked DX BB is a true and correct copy of OSA's Second

Supplemental Answers to Defendants' First Set of Interrogatories, dated March 15, 2004. 61. The document marked DX CC is a true and correct copy of OSA's

Application for Renewal of U.S. Registration No. 1,290,661, received by the U.S. Patent & Trademark Office on February 22, 2005. 62. The document marked DX DD is a true and correct copy of the PTO's

Notice of Acceptance and Notice of Renewal of Registration No. 1,290,661 (mailing date 8/3/05). 63. The document marked DX II is a true and correct copy of a Notice of

Opposition to OEI's Trademark Application No. 74-747885 filed by OSA with the PTO, dated May 16, 2001. 64. The document marked DX JJ is a true and correct copy of a Petition for

Cancellation of OEI's Trademark Registration No. 2,236,657 filed by OSA with the PTO, dated April 12, 2002. 65. Amended Complaint. 66. The document marked DX SS is a true and correct copy of OSA's The document marked DX KK is a true and correct copy of the Third

Responses to Defendants' First Set of Interrogatories and Requests for Admissions to Plaintiff-Counterclaim Defendant Omega S.A., dated January 16, 2004. 67. The document marked PX 31 and DX OO is a true and correct copy of the

1992 Agreement between OEI and OSA.

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68.

The document marked PX 65 and DX QQ is a true and correct copy of

Webster's Third New International Dictionary.

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Exhibit I - Contested Issues of Law 1. 2. 3. The parties dispute the correct interpretation of Paragraph 4(b) of the 1994 Agreement. The parties dispute the meaning of the phrase "science and industry." The parties dispute whether OSA uses the OMEGA mark in the United States in connection with goods intended for "science and industry" or for "scientific and industrial application." 4. The parties dispute whether OSA has any specific intent to sell OMEGA-branded goods in the United States in "science and industry" or for "scientific and industrial application." 5. The parties dispute whether, at the time of filing its renewal application for Registration No. 708,7310, the statement that the OMEGA mark was in use in the United States as of December 20, 2000 on "electronic time recorders for automatic precision timing in science and industry" was false or misleading. 6. The parties dispute whether, at the time of filing its renewal application for Registration No. 708,7310, OSA knew or should have known that its statement that the OMEGA mark was in use in the United States as of December 20, 2000 on "electronic time recorders for automatic precision timing in science and industry" was false or misleading. 7. The parties dispute whether, at the time of filing its renewal application for Registration No. 1,290,661, the statement that the OMEGA mark was in use in the United States as of August 14, 1990 on "computer apparatus for checking and controlling the measurement of time and distance for sporting events, scientific investigation, and industrial application" was false and misleading.

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8.

The parties dispute whether, at the time of filing its renewal application for Registration No. 1,290,661, OSA knew or should have known that its statement that the OMEGA mark was in use in the United States as of August 14, 1990 on "computer apparatus for checking and controlling the measurement of time and distance for sporting events, scientific investigation, and industrial application" was false and misleading.

9.

The parties dispute whether OEI can cancel United States Trademark Registrations Nos. 708,731 and 1,290,661 on the basis of either abandonment or fraud.

10.

The parties dispute whether OSA has committed a material breach of the 1994 Agreement.

11.

The parties dispute whether OSA has infringed any of OEI's marks. (OEI contends that this is irrelevant in light of its motion to voluntarily dismiss certain of its counterclaims.)

12.

The parties dispute whether OSA has unfairly competed or committed a false designation of origin. (OEI contends that this is irrelevant in light of its motion to voluntarily dismiss certain of its counterclaims.)

13.

The parties dispute whether OSA (or Swatch) has violated the Federal Trademark Dilution Act. (OEI contends that this is irrelevant in light of its motion to voluntarily dismiss certain of its counterclaims.)

14.

The parties dispute whether OSA (or Swatch) has violated the Connecticut Unfair Trade Practices Act. (OEI contends that this is irrelevant in light of its motion to voluntarily dismiss certain of its counterclaims.)

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Exhibit J - OEI's Proposed Findings and Conclusions

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF CONNECTICUT OMEGA, S.A., Plaintiff, v. OMEGA ENGINEERING, INC. OMEGA SCIENTIFIC INC., AND OMEGA PRESS, INC., Defendants. OMEGA ENGINEERING, INC., Counterclaim-Plaintiff, v. OMEGA, S.A. and THE SWATCH GROUP7 LTD. Counterclaim-Defendants.

Civil Action No.: 3:01 CV 2104 (SRU)

DEFENDANT-COUNTERCLAIM-PLAINTIFF OMEGA ENGINEERING'S PROPOSED FINDINGS OF FACT AND CONCLUSIONS OF LAW Defendant-counterclaim-plaintiff Omega Engineering, Inc. ("OEI") submits the following proposed findings of fact and conclusions of law in support of its counterclaims for breach of contract and for cancellation, pursuant to 15 U.S.C. § 1064, of counterclaim-defendant Omega, S.A.'s ("OSA") federal trademark registrations Nos. 708,731 and 1,290,661 for the mark OMEGA and design. The evidence cited herein is to the relevant pages of the deposition

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transcripts, to the names of witnesses who will testify at the hearing, to the exhibits that will be submitted at the hearing, and to findings made in the September 30, 2005 Ruling on Cross-Motions for Summary Judgment. Dated: November 10, 2005 New York, NY Respectfully submitted,

Of counsel: Victoria Haje

________________________ Thomas A. Smart (CT 21462) Paul C. Llewellyn (CT 25417) Victoria Haje KAYE SCHOLER LLP 425 Park Avenue New York, NY 10022 (212) 836-8000 Thomas E. Minogue (CT 06845) MINOGUE BIRNBAUM LLP 237 Elm Street New Canaan, CT 06840 (203) 966-6916 Attorneys for Defendants and for Counterclaim-Plaintiff

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF CONNECTICUT OMEGA, S.A., Plaintiff, v. OMEGA ENGINEERING, INC. OMEGA SCIENTIFIC INC., AND OMEGA PRESS, INC., Defendants. OMEGA ENGINEERING, INC., Counterclaim-Plaintiff, v. OMEGA, S.A. and THE SWATCH GROUP7 LTD., Counterclaim-Defendants. Civil Action No.: 3:01 CV 2104 (SRU)

DEFENDANT AND COUNTERCLAIM-PLAINTIFF OMEGA ENGINEERING'S PROPOSED FINDINGS OF FACT AND CONCLUSIONS OF LAW This is an action for common law breach of contract and for cancellation of trademarks under the federal Lanham Act, 15 U.S.C. § 1051, et. seq., arising out of the registration and maintenance of federal trademark registrations Nos. 708,731 and 1,290,661. In particular, Omega Engineering, Inc. ("OEI") alleges that Omega, S.A. ("OSA") has breached a 1994 agreement (the "1994 Agreement") between the parties pursuant to which, inter alia, OSA agreed not to register or maintain any registrations for OMEGA marks covering "Apparatus industrially and/or scientifically employed for measuring or controlling variable parameters such

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as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain and flow." OEI further contends that the foregoing OSA trademark registrations should be cancelled in whole or in part as a result of OSA's abandonment of the OMEGA mark in the United States with respect to the goods covered by the registrations, and as a result of OSA's fraud before the Patent and Trademark Office ("PTO") in connection with the renewal of the registrations. FINDINGS OF FACT The Parties 1. OEI is a Delaware corporation, with its principal place of business in Stamford, Connecticut. 2. OSA is a Swiss corporation, with its principal place of business in Bienne, Switzerland.

Defendants' Scientific and Industrial Goods Offered Under Their OMEGA Marks 3. OEI was founded in 1962 by Mrs. Betty Ruth Hollander. OEI's very first products were thermocouples, devices used in scientific and industrial fields (such as factories and laboratories) to measure temperatures. (Court's September 30, 2005 Ruling on CrossMotions for Summary Judgment, ("SJ Ruling"), p. 4; Defendants' Rule 56(a)1 Statement, ("OEI 56(a)1 Statement"), ¶ 1). 4. Although OEI initially used the Greek letter Omega standing alone as a design mark, the company eventually stopped using that design in favor of the so-called "Omega bug," a design mark consisting of the juxtaposed Greek letters Omega (S) and Epsilon (E) (the "OEI Bug"), which it has used for nearly 40 years. (SJ Ruling, p. 4; OEI 56(a)1 Statement ¶ 2).

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5.

The products marketed, distributed and sold under OEI's OMEGA marks include scientific apparatus for measuring or controlling variable parameters such as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain, flow and other variable parameters. Some of these apparatus contain a timing function. (SJ Ruling, p. 5; OEI 56(a)1 Statement ¶ 4).

6.

OEI's earliest United States trademark registration for the OMEGA trademark for industrial and scientific apparatus was issued in 1966. (SJ Ruling, p. 4). This registration, U.S. Registration No. 818,251, is a valid, subsisting, existing and incontestable trademark registration. (OEI 56(a)1 Statement, ¶ 28).

7.

OEI's OMEGA trademark registrations include: Registration No. 2022,762 ("762") (for "OMEGA"),