Free Statement of Material Facts - District Court of Connecticut - Connecticut

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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 GROUP LTD. Counterclaim-Defendants. __________________________________________________ DEFENDANTS' LOCAL RULE 56(a)2 STATEMENT IN OPPOSITION TO OMEGA S.A.'s MOTION FOR PARTIAL SUMMARY JUDGMENT Pursuant to Local Rule 56(a)2, defendants Omega Engineering, Inc. ("OEI"), Omega Scientific, Inc. ("OSI") and Omega Press, Inc. ("OPI") (together, "defendants") submit this statement in response to the Local Rule 56(a)1 statement of plaintiff Omega S.A. ("OSA"), in opposition to OSA's motion for partial summary judgment. By way of preliminary statement, defendants submit that numerous paragraphs of OSA's Local Rule 56(a)1 Statement fail to comply with Local Rule 56(a)3, which requires each statement in a party's Statement of Undisputed Facts to include "a specific citation to (1) the affidavit of a witness competent to testify as to the facts at trial and/or (2) evidence that would be Civil Action No.: 3:01 CV 2104 (MRK)

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admissible at trial," and which further provides that "failure to provide specific citations to evidence in the record as required by this Local Rule may result in sanctions, including, when the movant fails to comply, an order denying the motion for summary judgment." See also Fed. R. Civ. P. 56(e) (requiring summary judgment motions to be premised on "such facts as would be admissible in evidence" and "[s]worn or certified copies of all papers" relied upon). It is fundamental that evidence on motion for summary judgment must be "admissible evidence." Shumway Co. v. United Parcel Serv., 118 F.3d 60, 65 (2d Cir. 1997); see also, e.g., Barlow v. Connecticut, 319 F. Supp. 2d 250, 257 (D. Conn. 2004) ("The principles concerning admissibility of evidence do not change on a motion for summary judgment," and the Court should not consider "documents submitted in support of a motion for summary judgment [that] contain inadmissible hearsay or conclusory statements, are incomplete, or have not been properly authenticated."). As set forth more fully below, however, numerous statements in OSA's Statement of Facts lack any citation to evidence, or cite to inadmissible hearsay and other inadmissible evidence. In addition, most of the exhibits submitted by OSA in support of its Statement of Facts are not authenticated. For these reasons, as also set forth below, defendants object to OSA's evidentiary submissions and move to strike them from the record. In addition, in many instances, as described below, not only is there no support for the purported undisputed fact contained in OSA's Local Rule 56(a)1 statement, but the undisputed record evidence is flatly to the contrary. That defendants disagree with the vast majority of the purported "undisputed" facts contained in OSA's statement does not mean, however, that there are material issues of fact in dispute that must be tried. As explained more fully in defendants' brief in opposition to OSA's summary judgment motion, there is simply no

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relevant evidence in the record that creates a factual dispute pertinent to the claims at issue in this case. On the contrary, as shown in defendants' Local Rule 56(a)1 Statement of Undisputed Facts submitted in support of defendants' motion for summary judgment ("Def. 56(a)1 Statement"), defendants are entitled to summary judgment on the undisputed factual record. That defendants disagree with a factual statement on the grounds that there is utterly no record support for the statement or on the grounds that the "undisputed" fact asserted is immaterial or irrelevant to the claims at issue, does not create a factual dispute, but, rather, demonstrates the lack of one.

DEFENDANTS' RESPONSES TO OSA'S ASSERTIONS OF FACT

1. Plaintiff, Omega, S.A. ("OSA" or "Plaintiff") is the manufacturer, seller and distributor of the world-renowned OMEGA brand of watches, horological products, and other specialized devices. [Ex. 2, OSA's website at www.omega.ch] RESPONSE TO PARAGRAPH 1: Denied as unsupported. Defendants object to the cited exhibit on the grounds that it constitutes hearsay. The only evidence cited by OSA for the assertions in Paragraph 1, including the statements that OSA's OMEGA brand is "world-renowned" and that OSA sells or is known for "horological products, and other specialized devices," is OSA's own website, which, to the extent cited for the truth of statements found therein, constitutes inadmissible hearsay. The cited web site does not use the terms "horological products" or "specialized devices" and provides no evidence as to whether or to what extent OSA's OMEGA brand is "world-renowned" as to any products.

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The undisputed record evidence is that OSA currently sells in the United States under the OMEGA mark wristwatches and watch-related items like watch bands and the like, and sports timing devices, typically to athletic organizations and educational athletic departments. (Sauser Rupp Tr. 41, 62-63, 65-67, 89-90, 163-64; Rentsch Tr. 104, 109, 111, 119120; Gibbons Tr. 37, 138-44, 153; Kayal Tr. 142-44, 176-77; Emmons Tr. 30-32, 40; Smart 9/15/04 Dec. Exs. G, R). It does not sell in the United States clocks or pocket watches, and sells no timing devices of any kind to anyone engaged in scientific or industrial activities. (Emmons Tr. 32-34, 51-52; Kayal Tr. 244-45; Sauser Rupp Tr. 260; Gibbons Tr. 142-45, 153; Rentsch Tr. 105-06, 120-21, 124, 128-31, 133-34, 138; Sauser Rupp Tr. 251-52, 270-71). The undisputed evidence further shows that OSA's sports timing subsidiary, Omega Electronics S.A. ("Omega Electronics"), has had limited sales in the United States, with total annual United States sales in the past several years of less than $200,000. (Kayal Tr. 142-43; Gibbons Tr. 124, 131; Smart 9/15/04 Dec. Ex. R). In addition, the undisputed evidence is that although Omega Electronics sells passenger information display systems and Radio Frequency Identification Devices under the OMEGA marks abroad, it does not advertise or sell such goods in the United States. (Kayal Tr. 98-104, 106, 212, 246-47; Rentsch Tr. 111-14; Gibbons Tr. 85-86, 110, 119-20). See Def. 56(a)1 Statement, ¶¶ 44, 54-55, 58, 64-69. Although OSA has previously sold a total of five sports stadium displays to large sports organizations in the United States, the last such sale occurred in 1988, sixteen years ago. (Gibbons Tr. 112-15; Kayal Tr. 142-44; Smart 9/15/04 Dec. Ex. R).

2. OSA has been manufacturing watches and other timepieces since 1848, and has been using OMEGA and the Greek letter in conjunction with its products since 1894. [Ex. 1, Registration No. 25,036]

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RESPONSE TO PARAGRAPH 2: Denied as unsupported. Defendants object to the cited exhibit on the grounds that is unauthenticated and constitutes hearsay. The only evidence cited by OSA for the assertions in Paragraph 2 is a trademark registration certificate, which is not authenticated and which, to the extent cited for the truth of statements found therein, constitutes inadmissible hearsay. As set forth in the response to Paragraph 1, supra, the undisputed admissible evidence in the record shows that OSA has not sold OMEGA-branded products in the United States or otherwise used its OMEGA marks in the United States except for wristwatches and, to a limited extent, sports timing devices.

3. Consistently, throughout its long existence, Omega has been recognized as a maker of precision timepieces of the highest quality. [Ex. 2, www.omega.ch]The Omega Speedmaster was worn by Edward White on the American astronaut's first walk in space and is the only watch ever to be worn on the moon. [Ex. 4, printout from www.omega.ch., visited September 14, 2004] The Speedmaster has accompanied every American astronaut on every space mission since that time and remains an integral part of the astronauts' standard equipment as it has been certified by NASA for the next 100 Space Shuttle flights. [Id.] RESPONSE TO PARAGRAPH 3: Denied as unsupported. Defendants object to the cited exhibits on the grounds that they constitute hearsay. The only evidence cited by OSA for the assertions in Paragraph 3 is OSA's own website, which, to the extent cited for the truth of statements found therein, constitutes inadmissible hearsay. OSA has cited no admissible evidence regarding the scope, manner or extent of its use of its OMEGA marks, or of any public recognition of those marks. OSA has cited no admissible evidence to support its assertion that it " has been recognized as a maker of precision timepieces of the highest quality," or any of the other statements in Paragraph 3. Although OSA repeatedly uses the term "timepiece" to create the impression that it has

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exclusive rights to all time-related products, there is no evidence in the record that OSA sells anything called a "timepiece," and its only sales in the United States under the OMEGA marks are wristwatches and sports timing devices. Indeed, it is undisputed that OSA does not sell, for example, clocks or pocket watches, and that OSA has never sold time-related goods for use in science and industry. (Emmons Tr. 32-34, 51-52; Kayal Tr. 244-45; Gibbons Tr. 142-45, 153; Rentsch Tr. 105-06, 120-21, 124, 128-31, 133-34, 138; Sauser Rupp Tr. 251-52, 260, 270-71).

4. With the advent of new technology, Omega continued to be a pioneer. An important part of Omega's pursuit of excellence in precision timing is its long involvement in the timing of sporting events. [Id.] Omega's pioneering efforts in this area began with the Gordon Bennett balloon race of 1909 in Zurich. In 1932, Omega was the official timekeeper of the Olympic Games. [Id.] Its efforts in this area have produced a number of timing innovations: the Omega Time Recorder, an electronic quartz-driven chronograph for timing to the 1/1000 of a second; the first infrared photoelectric cell in 1945; the first Photofinish camera in 1949, and the Scan `O' Vision computerized imaging device in 1990. [Id.] Omega also developed giant matrix scoreboards in 1974, now equipping numerous stadiums, and the first timing electronic data processing center and display in 1978. [Ex. 3, Dep. Tr. Gibbons at 18.] Most recently, Omega's timing devices were used in the 2004 summer Olympic games held in Greece and broadcast nationally in the United States. [Ex. 4, Press Releases from www.omegaelectronicsus.com; Ex. 3, Dep. Tr. of Gibbons, at 18.] RESPONSE TO PARAGRAPH 4: Denied as unsupported. Defendants object to OSA Exhibit 3 on the ground that it is unauthenticated and object to both Exhibit 3 and 4 on the grounds that they constitute hearsay. To the extent that OSA relies, in support of the assertions in Paragraph 4, on statements on its cited website and on press releases, those documents constitute inadmissible hearsay. The deposition testimony of Guy Gibbons (Tr. at 18) cited in Paragraph 4 does not provide support for the statements for which it is cited. OSA has cited no admissible evidence concerning the goods and activities it describes in Paragraph 4, or the manner, scope or extent of use of its OMEGA marks in

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connection with those goods and activities. As set forth in the response to Paragraph 1, supra, the undisputed admissible evidence in the record shows that OSA has not sold OMEGA-branded products in the United States or otherwise used its OMEGA marks in the United States except for wristwatches and, to a limited extent, sports timing devices, and has not sold any clocks, timers or other timing devices in the United States or elsewhere for use in science and industry. As for the assertion that "[OSA] also developed giant matrix scoreboards in 1974, now equipping numerous stadiums, and the first timing electronic data processing center and display in 1978," the cited Gibbons testimony, as noted above, does not support the statement. Moreover, the undisputed evidence is that OSA's licensee Omega Electronics S.A. has sold a total of only five scoreboards in the United States, and that those sales ­ which took place between 1978 and 1988 ­ were made to large sports facilities operated by major league sports teams and large municipalities. (Gibbons Tr. 112-15; Kayal Tr. 142-44; Smart 9/15/04 Dec. Ex. R). There is no evidence in the record that OSA or its licensee is offering such scoreboards for sale in the United States today. Lastly, OSA has cited no admissible evidence to support the assertion in Paragraph 4 that "Most recently, [OSA]'s timing devices were used in the 2004 summer Olympic games held in Greece and broadcast nationally in the United States." The cited Gibbons testimony (Tr. at 18) does not support the statement. The cited press releases are inadmissible hearsay to the extent cited for the truth of statements therein, and also do not support the statement and provide no indication of what, if anything, was "broadcast nationally in the United States." At best, one press release, dated October 31, 2002, merely suggests that OSA's parent company, Swatch Group Ltd., is a sponsor of certain U.S. Olympic Teams. In fact, according to the official web site of the 2004 Olympic games (at http://www.athens2004.

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com/en/OlympicPartners), "SWATCH" ­ not Omega S.A. ­ was "the Official Timekeeper of the ATHENS 2004 Olympic Games." (Smart 10/5/04 Dec. ¶ 18 and Ex. UU).

5. OSA has all right, title and interest in and to the following United States trademark registrations for the mark OMEGA: MARK OMEGA (& Design) [Exhibit 1] OMEGA [Exhibit 5] REG. NO. 25,036 GOODS Watch movement and watchcases Watches and parts thereof and Horological instruments Watches REG. DATE 07/24/1894

566,370

11/04/1952

OMEGA (& Design) [Exhibit 6] OMEGA (& Design) [Exhibit 7] OMEGA (& Design) [Exhibit 8]

578,041

07/28/1953

577,415

Wrist watch bracelets, bands, and straps Automatic recording machines and apparatus for use in determining the results of sporting events Electronic time recorders for automatic precision timing in science and industry Lubricating oils for watches and clocks

07/14/1953

660,541

04/15/1958

OMEGA (& Design) [Exhibit 9]

708,731

12/20/1960

OMEGA (& Design) [Exhibit 10]

1,290,661

08/21/1984

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RESPONSE TO PARAGRAPH 5: Denied in part. Defendants object to the cited exhibits on the grounds that they are unauthenticated and constitute hearsay. Defendants do not dispute that OSA is the registered owner of the U.S. Trademark Registrations listed in Paragraph 5. Defendants deny that the list in Paragraph 5 is a complete list of goods identified in the cited applications, and, in particular, note that Registration No. 1,290,661 also covers "Computer Apparatus for Checking and Controlling the Measurement of Time and Distance for Sporting Events, Scientific Investigation, and Industrial Application." (Smart 9/15/04 Dec. Ex. L). As set forth more fully in Defendants' Rule 56(a)1 Statement, however, OSA's witnesses have admitted that OSA and its affiliates do not sell any OMEGA-branded goods for "science and industry" or for "scientific investigation and industrial application" in the United States as those terms are used in Registration Nos. 708,731 and 1,290,661, and did not do so at the time that OSA's renewal affidavits for those registrations were filed. (Rentsch Tr. 120-24, 129, 131, 134-35, 138; Kayal Tr. 244-45; Emmons Tr. 10-12; Sauser-Rupp Tr. 252, 270-71; Gibbons Tr. 142-45, 153; Smart 9/15/04 Dec. Exs. N, O). See Def. 56(a)1 Statement, ¶¶ 68, 118-127. Thus, for the reasons set forth in support of OEI's Motion for Partial Summary Judgment, those registrations are invalid and should be cancelled.

6. Omega Engineering, Inc. ("OEI" or "Defendant(s)") OEI is a Stamford, Connecticut based company formed in 1962 specializing in products used for process measurement and control in industrial and scientific settings. [Ex. Dr. Hollander Decl., 2/22/04 at 2.] Specifically, these products are for the control or measurement of temperature, humidity, pressure, strain, force, flow, level, pH and conductivity. [Id.]

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RESPONSE TO PARAGRAPH 6: Undisputed with respect to the first sentence of Paragraph 6. Denied as incomplete with respect to the second sentence of Paragraph 6. In particular, the parameters listed in Paragraph 6 (temperature, humidity, pressure, strain, force, flow, level, pH and conductivity) are merely illustrative of the parameters that OEI's process measurement and control products measure and control. Thus, the declaration of Dr. Milton B. Hollander cited in Paragraph 6 provides a non-exhaustive list of parameters that includes several other such parameters, including, without limitation, load, vibration and liquid level. (M. Hollander 2/22/02 Dec. ¶ 2; see also M. Hollander 9/14/04 Dec. ¶ 5). Defendants object to the cited exhibit on the ground that it is unauthenticated.

7. Omega Press, Inc. ("OPI") is in the business of printing and publishing books on engineering and science. [Id. at 3.] RESPONSE TO PARAGRAPH 7: Undisputed.

8. Omega Scientific, Inc. ("OSI") is in the business of distributing scientific instruments. [Id.] OEI, OPI and OSI are collectively referred to as Defendants. RESPONSE TO PARAGRAPH 8: Undisputed.

9. Although OPI and OSI are separate and distinct corporate entities, OEI refers to them as "trade vehicles" and neither OSI or OPI has any employees of its own. [Id.; Ex. 12, 2003/2004 Corporate filings for OSI and OPI; Ex. 13, Deposition of Riggs at 15-17, 15253; Ex. 14, Dep. Tr. of Dr. Hollander at 57-64, 68.]

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RESPONSE TO PARAGRAPH 9: Undisputed. Defendants object to the cited exhibits on the ground that they are unauthenticated.

10. All of OPI's and OSI's activities are carried out by OEI employees. [Ex. 14, Dep. Tr. of Dr. Hollander at 57-64, 68.] RESPONSE TO PARAGRAPH 10: Undisputed.

11. Betty Ruth Hollander ("Mrs. Hollander") is the President of OEI and her husband Dr. Milton Hollander ("Dr. Hollander") is the Director of OEI and its affiliates, including Newport Electronics ("Newport"). [Ex. 13, Dep. Tr. of Riggs at 22.] RESPONSE TO PARAGRAPH 11: Denied as unsupported to the extent that Paragraph 11 asserts that Dr. Milton Hollander is "the Director of OEI and its affiliates, including Newport Electronics." The cited deposition testimony does not support the assertion that Dr. Hollander is the sole director of OEI or any of its affiliates and does not address Newport Electronics at all. The cited deposition testimony makes clear that both Dr. Hollander and Mrs. Betty Ruth Hollander are directors of OEI, OPI and OSI. (Riggs Tr. 22).

12. Christine Riggs ("Riggs") is in-house counsel for OEI, responsible in part for maintaining its trademark portfolio. [Ex. 11, Dep. Tr. of Riggs at 7-8.] RESPONSE TO PARAGRAPH 12:

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Undisputed.

13. Dr. William Drucker has served as outside trademark counsel for OEI and has managed its trademark portfolio since the company's inception in 1962. [Ex. 14, Dep. Tr. of Dr. Hollander at 355-56.] RESPONSE TO PARAGRAPH 13: Denied in part as unsupported. The deposition testimony cited in support of Paragraph 13 merely establishes that Dr. William Drucker has served as one of OEI's outside trademark counsel, and does not support the assertion that Dr. Drucker "has managed [OEI's] trademark portfolio since the company's inception in 1962." (See M. Hollander Tr. 355-56). As OSA correctly states in Paragraph 12, supra, OEI's in-house counsel, Christine Riggs, is responsible for maintaining OEI's trademark portfolio. (Riggs Tr. 7-8). As Dr. Drucker explained at his deposition, OEI's trademark portfolio is managed in-house, and he is merely one of several outside trademark attorneys with whom OEI consults. (Drucker 9/2/04 Tr. 29).

14. Newport Electronics is a corporate affiliate of OEI and under common ownership and control with OEI. [Ex. 13 Dep. Tr. of Riggs at 73.] RESPONSE TO PARAGRAPH 14: Denied as unsupported and misleading. The deposition testimony cited in Paragraph 14 states that Newport Electronics ("Newport") is an affiliated company of OEI and that an affiliated company is one that is under "common ownership and/or control." (Riggs Tr. 73) (emphasis added). The cited testimony does not state that Newport Electronics is under common ownership and control of OEI, and does not specify the precise nature of Newport's relationship to OEI.

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15. When OEI first formed in 1962, it manufactured only one product, the bare wire thermocouple. [Ex. 15, Dep. Tr. Mrs. Hollander at 12-13.] RESPONSE TO PARAGRAPH 15: Undisputed. Defendants object to the cited exhibit on the ground that it is unauthenticated.

16. Since that time, OEI has greatly expanded the scope of its goods and services, now claiming to offer more than 68,000 products. [Id.] RESPONSE TO PARAGRAPH 16: Denied as unsupported with respect to the assertion that OEI has expended the "scope" of its goods and services. The testimony cited in Paragraph 16 merely states that OEI has expanded the number of its goods from thermocouples, in 1962, to over 68,000 goods today. (Mrs. B. Hollander Tr. 12-13). The undisputed evidence is that OEI started as a company selling process control and measurement devices for scientific and industrial use, and that its products remain limited to those for scientific and industrial use. (M. Hollander 9/14/04 Dec. ¶¶ 3, 5, 6, 13, 15-16).

17. While in its early years, OEI and OSA amicably coexisted, the expansion of OEI's use of the Omega marks quickly closed the gap between OSA's established rights in the Omega marks, and OEI's original use of the marks in connection with the bare wire thermocouple.

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RESPONSE TO PARAGRAPH 17: Denied as unsupported and contrary to the undisputed evidence. OSA cites no evidence whatsoever in support of Paragraph 17. Moreover, there is no evidence that "the expansion of OEI's use of the Omega marks quickly closed the gap between OSA's established rights in the Omega marks, and OEI's original use of the marks in connection with the bare wire thermocouple," as asserted in Paragraph 17. To the contrary, as set forth more fully in Defendants' Local Civil Rule 56(a)1 Statement of Undisputed Facts, the undisputed evidence is that there is no competitive overlap between the parties, that OSA's rights in its OMEGA marks in the United States are limited to consumer wristwatches and to sports timing devices, that defendants use their OMEGA marks solely in connection with goods and services for scientific and industrial application, and that there is no likelihood of confusion between the parties' marks. See Def. Rule 56(a)1 Statement ¶¶ 3-9, 11-12, 44, 54, 68-74, 110-113 and evidence cited therein. Moreover, the undisputed testimony of OSA's own witnesses is that OSA and its licensees have not made any sales of OMEGA-branded goods for scientific investigation or industrial application or for use in scientific or industrial fields, do not sell period timers, and have no plans to sell any timing devices for use in science or industry. (Kayal Tr. 244-45; Gibbons Tr. 142-45, 153; Rentsch Tr. 108, 120-21, 124, 128-31, 133-34, 138, 271; Sauser Rupp Tr. 66, 168-69, 251-52, 270-71). In contrast, it is undisputed that OEI's products are advertised and sold solely for use in science and industry. (M. Hollander 9/14/04 Dec. ¶¶ 3, 5, 6, 13, 1521).

18. This inevitable head-on collision reached a critical stage in 1994, over 100 years after OSA first established its right to the Omega mark in connection with timing devices,

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when the term timers and timing devices began frequently appearing in OEI's trademark applications. [Ex. 16, Reg. No. 2,022,762; Ex. 17, Ser. No. 75/747,885; Ex. 18, Ser. No. 76/242,073.] RESPONSE TO PARAGRAPH 18: Denied as unsupported by the citations and contrary to the undisputed facts. Defendants object to the cited exhibits on the ground that they are unauthenticated. The citations do not support OSA's contention that there has been a "head-on collision" between the products sold by OSA under its OMEGA marks and the products sold by OEI under its OMEGA marks. The citations are to unauthenticated "TESS" reports for OEI's U.S. Registration No. 2,022,762, U.S. Application Serial No. 75/747,885 and U.S. Application Serial No. 76/242,073, in each of which the timing goods covered are expressly limited to timing goods for use in science and industry. 1 It is further undisputed that OSA has only sold wristwatches and sports timing devices in the United States, and that at no time has OSA sold any timing devices for use in science and industry. (Kayal Tr. 102-04, 106-07, 142-44, 176-77, 244-45, 250-51; Gibbons Tr. 37, 54-55,142-45, 153; Rentsch Tr. 104, 109, 111, 115-21, 124, 128-31, 133-34, 138; Sauser Rupp Tr. 41, 65-66, 89-90, 163-64, 251-52, 270-71; Emmons Tr. 30-32, 40). OSA's citations do not establish that OSA has made sales in science and industry, and each of OSA's 30(b)(6) and other witnesses admitted that OSA has made no sales in science and industry. (Kayal Tr. 244-

1

OSA's Exhibit 18, also cited in Paragraph 18, appears to be an unauthenticated copy of OEI's initial application to register a stylized design mark which was assigned Serial No. 76/242,073. A review of that exhibit shows that the initial application did not refer to timers or timing devices. (OSA Ex. 18). Although, as amended during the PTO application examination process, the application now includes apparatus for timing variable parameters, those goods are clearly limited to "for use only in science or industry." (Riggs 9/14/04 Dec. Ex. H).

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45; Gibbons Tr. 142-45, 153; Rentsch Tr. 120-21, 124, 128-31, 133-34, 138; Sauser Rupp Tr. 251-52, 270-71). In fact, the undisputed evidence is that OEI has been selling period timers under its OMEGA marks since approximately 1987, and that those timers are computer-controlled measuring, timing and display apparatus used in the measurement and control of variable parameters in science and industry. (M. Hollander 9/14/04 Dec. ¶¶ 6, 7). As set forth more fully in Defendants' Local Civil Rule 56(a)1 Statement of Undisputed Facts (¶¶ 75-80, 82-87), the parties have entered into at least two agreements pursuant to which OSA has expressly permitted OEI to register and use its OMEGA marks in connection with such goods, and, in one agreement, expressly released its claims with respect to such conduct by OEI. Thus, in 1994 the parties entered into an agreement in which they expressly agreed that OEI may use and register its OMEGA marks in connection with timing apparatus for science and industry. (M. Hollander 9/14/04 Dec. ¶¶ 30-34 & Ex. T). Paragraph 4(a) of the 1994 Agreement recites that OEI will not use, register or apply to register the OMEGA or stylized omega trademarks for, among other things, computer controlled timing apparatus, unless intended for science or industry. OEI does in fact sell industrial and scientific computer controlled timing apparatus under the OMEGA or stylized omega trademarks to the industrial and scientific markets. (M. Hollander 9/14/04 Dec. ¶ 33 & Ex. T). The 1994 Agreement goes on to state in Paragraph 4(c) that OSA will not object to the use or registration by OEI of the OMEGA mark or stylized OMEGA trademarks for apparatus industrially and/or scientifically employed for measuring or controlling variable parameters. The term "variable parameters" as used in the 1994 Agreement, including paragraph 4(c), is illustrated by the examples of variable parameters given "such as temperature, pressure, force, load, vibration, electrical conductivity,

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liquid level, acidity, humidity, strain and flow." These "variable parameters" are some of the same variable parameters that Omega Engineering's industrial and scientific products measure and control. Thus, for example, OEI's industrial and scientific period timers and clocks are used to both measure and control variable parameters such as flow and temperature in industrial and scientific settings. (M. Hollander 9/14/04 Dec. ¶ 34 & Ex. T) (See generally Def. Rule 56(a)1 Statement ¶¶ 75-80). In addition, in 2003, the parties entered into a Settlement Agreement in another case in this district, Omega Engineering, Inc. v. Omega, S.A., 3:98 CV 2464 AVC ("Omega I"), pursuant to which, inter alia, OSA expressly consented to OEI's registration and use of its OMEGA marks in connection with timers for use in science and industry, and released its claims in this action with respect to such conduct by OEI. (Riggs 9/14/04 Dec. ¶ 15 & Ex. L). In Paragraph 3 of that Agreement, OSA agreed to "release and forever discharge" OEI and its affiliates from "any and all claims, actions and causes of action in the U.S.A. relating to the application to register, registration or use of period timers for science and industry or industrial and scientific clocks under the Omega mark or Omega design, in the Omega I Litigation, Omega III Litigation [i.e. this case] or the Cancellation Proceedings." (Riggs 9/14/04 Dec. Ex. L at ¶ 3). Pursuant to paragraph 4 of the Settlement Agreement, OSA agreed to withdraw its claims in this action relating to OEI's Registration Nos. 2,022,762 and 2,034,705 including, specifically, Paragraphs 31 and 322 of the complaint in this action and the request for cancellation of these registrations. OSA agreed that it "will not make any claims or assertions in Omega III relating to
2

At the time of the drafting of the Settlement Agreement, the Third Amended Complaint had not yet been filed by OSA and the Settlement Agreement referred to Paragraphs 31 and 32 of the Second Amended Complaint. The same paragraphs appear under the same numbering in the Third Amended Complaint.

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application to register, registration or use by OEI of the Omega mark or Omega design on period timers or industrial and scientific clocks." (Riggs 9/14/04 Dec. Ex. L at ¶ 4). The Omega I Settlement Agreement is in effect and enforceable. (Riggs 9/14/04 Dec. ¶¶ 16-17 and Exs. M, N, O). (See generally Def. Rule 56(a)1 Statement ¶¶ 81-87). In sum, there is utterly no record evidence of any sales by OSA of any goods, let along "timing devices," to science and industry, and there has been and is no "head-on collision" between the goods of OSA and those of OEI. To repeat, there is nothing in the record that supports this statement.

19. By the year 2000, OEI had further expanded its trademark application regimen concerning the Omega marks in connection with timing devices, filing, for example, a trademark application with a description of goods that contained: (a) two references to the term time; (b) two references to timing; and (c) six references to timers. Ex. 19, Ser. No. 76/052,828. RESPONSE TO PARAGRAPH 19: Denied as unsupported, incomplete and misleading. Defendants object to the cited exhibit on the ground that it is unauthenticated. The only evidence cited in support of Paragraph 19 is OSA Exhibit 19, which appears to be an unauthenticated PTO "TESS" report for an OEI trademark application, Serial No. 76/052,828, which is not identified in the complaint as an application at issue in this case and for that reason should not be considered. Even if OSA Exhibit 19 is considered, it provides no support for the assertions that any OEI "trademark application regimen" exists or existed, or that OEI "had further expanded" any such regimen. In addition, a review of OSA Exhibit 19 shows that the application expressly limits the covered goods to those intended for use in science and industry. (OSA Ex. 19).

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Moreover, as set forth more fully in response to Paragraph 18 above, OSA has at least twice expressly consented to OEI's registration and use of its OMEGA marks in connection with timers for science and industry, which have been sold by OEI since at least 1987, and agreed in the Omega I Settlement Agreement to drop and release such claims in this case. (See generally Def. Rule 56(a)1 Statement ¶¶ 75-87; M. Hollander 9/14/04 Dec. ¶ 30-34; Riggs 9/14/04 Dec. ¶¶ 15-17).

20. OSA has, therefore, been forced to police OEI and its marks around the globe in a constant expensive effort to fight back the encroachment by OEI on its rights; often times this encroachment is explained by OEI as a simple mistake, and the offending goods are deleted [see for example, Ex. 20]; frequently OSA must fight and win in tribunals around the world. [Ex. 21 In Re Registration No. 1557184, July 15, 2004] RESPONSE TO PARAGRAPH 20: Denied as unsupported, misleading and incomplete. Defendants object to the cited exhibits on the grounds that they are unauthenticated and constitute hearsay. OSA has cited no evidence to support its assertions in Paragraph 20 that OEI has engaged in any alleged course of conduct encroaching on OSA's "rights." OSA has cited no evidence establishing the nature, extent or scope of its claimed rights in any OMEGA marks in foreign countries. OSA also has cited no evidence to support its assertion that OSA has "been forced to police OEI and its marks around the globe," that any such effort has been "constant" or "expensive," or that "frequently OSA must fight and win in tribunals around the world." Nor has OSA cited any evidence regarding the applicable foreign law governing the parties' respective foreign trademark rights. Exhibit 20 cited by OSA in Paragraph 20 merely shows that one time, on March 7, 2003, OEI's European Community trademark counsel, David J. Crouch, submitted letters requesting a narrowing of the goods and services listed in three OEI European Community

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Trademark ("CTM") applications. OSA has cited no evidence that the goods and services of which it complains constituted any "encroachment" on OSA's claimed rights and, no evidence setting forth the nature, scope or extent of its claimed rights in OMEGA marks in the European Community, and no evidence regarding the applicable foreign law governing the CTM applications to which OSA Exhibit 20 relates and governing parties' respective trademark rights with respect to CTM filings. Exhibit 21 cited by OSA is merely a single decision in one foreign trademark proceeding in the United Kingdom relating to one OEI trademark registration. Contrary to the misleading and unsupported assertion that "frequently OSA must fight and win in tribunals around the world," the undisputed evidence is that, in a number of trademark proceedings in foreign jurisdictions, OEI has prevailed against OSA and succeeded in canceling or partially canceling OSA's trademark registrations for OMEGA marks. (See Riggs 4/1/04 Dec. ¶¶ 5-7 and Exs. A, B, C). Moreover, OSA has cited no evidence to support its assertions in Paragraph 20 that the cited evidence is illustrative or "examples" of other foreign disputes. What the undisputed evidence does show is that it is OSA itself that has engaged in the practice of filing overbroad trademark applications in foreign countries for goods for which OSA's own 30(b)(6) witness candidly acknowledged it has no intent to use and which it has never bothered to amend to reflect its true intent. (See Riggs 4/1/04 Dec. ¶¶ 5-7 and Exs. A, B, C; Smart 10/5/04 Dec. Ex. QQ at 2137-2152; Sauser Rupp Tr. 540-56). Lastly, for the reasons set forth in Defendants' April 1, 2004 motion for, inter alia, an order of preclusion with respect to evidence relating to foreign trademark filings, OEI

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objects to OSA's reliance on evidence relating to its claims based on alleged foreign filings by defendants, and reasserts its motion to preclude such evidence.

21. It is now possible for any consumer with access to the Internet to purchase from OEI a timing device that measures periods of time, the time of day, and bears the Omega trademark. Ex. 22, printout from OEI website, www.omega.com, as visited on September 14, 2004. RESPONSE TO PARAGRAPH 21: Denied as unsupported, misleading, incomplete and immaterial. The OSA Exhibit 22 cited in Paragraph 21 displays various period timers which, on the face of the exhibit, are offered for sale for use in scientific and industrial applications for the measurement and control of industrial and scientific processes and parameters. There is absolutely no evidence in the record that any consumer has ever purchased an OEI period timer for any purpose at all or that any consumer even would recognize an OEI timer as a timer. OEI's period timers are designed to be purchased and used by scientists and engineers in scientific and industrial settings, and are not intended or sold to be used by consumers to tell time. (M. Hollander 9/14/04 Dec. ¶ 15). As is evident from the exhibits cited by OSA, period timers are not wristwatches, are not strapped on persons' wrists to tell time, and are too bulky to be used in such fashion. Rather, they look and are used like the other scientific and industrial controllers that OEI sells. Thus, when shown an OEI period timer and an OEI temperature controller at their depositions, each of OSA's Rule 30(b)(6) witnesses could not tell the difference between the two and did not recognize OEI's period timers as timers. (Rentsch Tr. 272; Sauser Rupp Tr. 222-23;, 234-35; Gibbons Tr. 191-92; Kayal Tr. 229-32; Riggs 10/4/04 Dec. ¶¶ 8-10 & Exs. U, V, W).

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The undisputed evidence is that defendants do not offer or sell any goods or services under OMEGA marks for use in markets or fields outside of industry and science, that at no time in the over 40-year history of OEI have defendants marketed or sold any goods or services under any OMEGA marks to consumers, and that the only time-related devices that defendants have offered to sell or sold are period-timers or scientific or industrial clocks and similar apparatus that are used to regulate scientific, research or manufacturing processes in laboratories or factories. (M. Hollander 9/14/04 Dec. ¶¶ 3, 13, 15-16; Riggs Tr. 258). Moreover, as set forth more fully in response to Paragraph 18 above, OSA has at least twice expressly consented to OEI's registration and use of its OMEGA marks in connection with timers for science and industry, and agreed in the Omega I Settlement Agreement to drop and release such claims in this case. (See generally Def. 56(a)1 Statement ¶¶ 75-87).

22. This is the third dispute in this Court between the Parties regarding rights to the Parties respective rights to the Omega marks. As noted by the Court in Omega S.A. v. Omega Engineering, Inc., 228 F. Supp. 112, 114-115 (D. Conn. 2002) ("Omega II"): Throughout the 1980s, [OEI] and OSA had a history of disputing the scope of their respective trademark rights. During that period, the two parties signed several agreements limited to certain countries and trademark registrations. In an effort to end such disputes once and for all, in 1992, [OEI] entered into a worldwide agreement with OSA. In 1994, the agreement was replaced by a new worldwide agreement, which was executed for and on behalf of OSA on May 3, 1994, and [OEI] on August 2, 1994 ("1994 Agreement"). Id. at 115, n. 12. The 1994 Agreement states, in part, that both 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 or containing elements colourably resembling either of thos[e] two elements. Id. RESPONSE TO PARAGRAPH 22:
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Undisputed.

23. In May of 2003, in an effort to resolve the Parties' dispute in Omega Engineering, Inc. v. Omega, S.A., Civ. No. 3:98CV2468 (AVC) ("Omega I"), the Parties entered into settlement discussions. RESPONSE TO PARAGRAPH 23: Denied as incomplete. Defendants do not dispute that the parties entered into settlement discussions in Omega I in May of 2003, but further state that, as found by Magistrate Judge Smith and Judge Covello, the parties entered into a binding Settlement Agreement in Omega I in May of 2003 and that judgment has been entered in Omega I. (Riggs 9/14/04 Dec. ¶¶ 15-17 and Exs. L, M, N, O).

24. Although the Omega I agreement remains disputed by OSA, Judge Covello recently ordered that the agreement should be enforced. [Ex. 23, Order and Judgment dated 8/12/04.] RESPONSE TO PARAGRAPH 24: Undisputed.

25. A Notice of Appeal has been filed by OSA challenging the enforcement of this agreement. [Ex. 24, OSA's Notice of Appeal.] RESPONSE TO PARAGRAPH 25: Denied as misleading and incomplete. A Notice of Appeal has been filed appealing from Judge Covello's order enforcing the settlement agreement; however, OSA has not sought a stay of enforcement of the judgment in Omega I. See Omega I docket.

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Accordingly, the judgment and Settlement Agreement in that case are binding and enforceable notwithstanding the pendency of OSA's appeal. See American Town Center v. Hall, 912 F.2d 104, 110-11 (6th Cir. 1990) (appeal does not deprive federal court of jurisdiction to enforce judgment).

26. On or about November 4, 2002, the Parties settled, Omega S.A. v. Omega Engineering, Inc., Civ. No. 300CV1848 (JBA) ("Omega II"), when OEI transferred the marks OMEGAWATCH.COM and OMEGATIME.COM to OSA. [Ex. 25, Docket History of Case printed from PACER (9/14/04).] RESPONSE TO PARAGRAPH 26: Denied in part as unsupported and inaccurate. Defendants object to the cited exhibit on the ground that it is unauthenticated. Defendants do not dispute that Omega II was settled on or about November 4, 2002, but OSA inaccurately states that OEI transferred the marks omegawatch.com and omegatime.com to OSA. In fact, OEI transferred the domain names omegawatch.com and omegatime.com to OSA.

27. The core of OSA's business is time and timing devices. [Ex. 21, In re Reg. No. 1557184 at 31 and 38.] RESPONSE TO PARAGRAPH 27: Denied as unsupported and misleading. The only evidence cited in support of Paragraph 27 is the decision in a United Kingdom trademark proceeding. To the extent that OSA relies on this document for the truth of matters asserted therein, the document constitutes hearsay, and defendants object to the cited Exhibit 21 on the grounds that it is unauthenticated and constitutes hearsay.

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In addition, the record evidence does not show that the "core" of OSA's business is "time and timing devices," and defendants submit that nobody owns or can monopolize "time." The evidence shows that the core of OSA's business is luxury wristwatches sold to consumers, and that, in the United States, OSA's licensee Omega Electronics S.A. also does a modest business in the sale of sports timing equipment for the timing of swim meets and athletic competitions. (Sauser Rupp Tr. 41, 62-63, 65-67, 89-90, 163-64; Emmons Tr. 30-32, 40; Rentsch Tr. 104, 109, 111, 119-20; Kayal Tr. 43, 64, 78-79, 82, 134-35, 142-44; Gibbons Tr. 37, 46-47, 124, 131, 153; Smart 9/15/04 Dec. Exs. G, K, R). There is no evidence that OSA sells pocket watches or clocks or a variety of other timekeeping instruments. (Emmons Tr. 32-34, 5152; Sauser Rupp Tr. 260; Rentsch Tr. 105-06). There is no evidence that OSA has any business, let alone a "core" business, in selling period timers to regulate scientific and industrial processes, which is a business that OEI has indisputably been in since at least 1987. (M. Hollander 9/14/04 Dec. ¶ 6).

28. OSA also has exclusive rights to the Omega marks in connection with sports timing, data logging and display apparatus. [Ex. 13, Dep. Tr. Riggs at 105; Ex. 1, Registration No. 25,036; Ex. 5, Reg. No. 566,370; Ex. 8, Reg. No. 650,541.] RESPONSE TO PARAGRAPH 28: Denied as unsupported, misleading and incomplete. First, the Riggs testimony does not support the statement that OSA has exclusive rights in connection with "sports timing, data logging, and display apparatus." Rather, in her testimony, which OSA has not bothered to include in the exhibits it submitted in support of its summary judgment motion, Ms. Riggs merely testified that she is aware that, in the United States, OSA sells "wristwatches" and "sports timing devices." She did not testify to anything

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regarding "data logging" or "display apparatus," and did not testify that OSA has "exclusive rights" to anything. Second, none of the three trademark registrations cited by OSA is for "data logging" or "display apparatus." OSA Exhibit 1 is a trademark registration covering "WatchMovements and Watchcases." OSA Exhibit 5 is an trademark registration covering "Watches and parts thereof." OSA Exhibit 8 is a trademark registration covering "Automatic recording machines and apparatus for use in determining the results of sporting events." Defendants object to the cited exhibits on the ground that they are unauthenticated.

29. The core of OEI's business is the manufacture and sale of process measurement and control devices for science and industry. [Ex. 11, Dr. Hollander Decl. 2/22/02 at 2.] RESPONSE TO PARAGRAPH 29: Undisputed.

30. OSA and OEI both sell their goods to similar customers including universities, engineers, and NASA. [Ex. 14, Dep. Tr. of Dr. Hollander, at 233-36, 258-59; Ex. 3 Dep. Tr. of Gibbons at 138; Ex. 4, printout from OSA's website at www.omega.ch, visited September 14, 2004.] RESPONSE TO PARAGRAPH 30: Denied as unsupported and misleading. Defendants object to the cited exhibits on the ground that they are unauthenticated, and object to OSA Exhibit 4 on the ground that it constitutes hearsay.

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It is not the case that OSA and OEI both sell their goods to similar customers. The testimony cited by OSA, that of Dr. Hollander at Tr. 233-36 and Mr. Gibbons at Tr. 138, does not establish that the customers are similar. On the contrary, the undisputed testimony of every OSA witness is that OSA sells wristwatches to consumers. In contrast, OEI sells scientific and industrial process control instruments to science and industry ­ in particular, to entities such as manufacturers, power plants, and laboratories, including university laboratories. The purchasers and users of OEI's products at these entities are scientists and engineers who select and use the products for scientific and industrial purposes and not for their own personal use the way a purchaser of a wristwatch uses a wristwatch. (M. Hollander 9/14/04 Dec. ¶¶ 13, 15). As for OSA's sports timing device business, which has less than $200,000 in annual sales, those products are occasionally sold to colleges and universities, typically to the athletic departments at such institutions. (Kayal Tr. 143, 168-69; Gibbons Tr. 124, 131, 138-44, 148-57; Smart 9/15/04 Dec. Exs. R, T). However, there is no evidence that OEI sells any products to the athletic departments at colleges and universities. Rather, OEI sells its scientific and industrial process control devices to the engineering departments or laboratories at universities and colleges. (M. Hollander 9/14/04 Dec. ¶ 13). What is more, OSA has offered no evidence that OSA has sold a sports timing device to any college or university to which OEI has sold any of its products. Thus, the record is clear from the testimony of OSA's own witnesses that OSA does not share any customers with OEI. (Gibbons Tr. 143-45,193-94; Kayal Tr. 171-73, 176-78; Sauser Rupp Tr. 142-45). Indeed, when presented with a list of OEI's top 100 customers, OSA's witnesses could not identify any shared customers with the possible exception of one university,

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to the athletic department of which OSA's licensee might have sold sports timing equipment, and a few companies who had participated in OSA's corporate program in which, for example, OMEGA watches are awarded to employees who have worked for the company for many years. (Gibbons Tr. 154-57; Kayal Tr. 178; Emmons Tr. 86-87,176-78; Smart 9/15/04 Dec. Ex. I; M. Hollander 9/14/04 Dec. ¶ 13 & Ex. H). OSA also has cited no admissible evidence that its goods are sold to "engineers" or to NASA, as asserted in Paragraph 30. The OSA website cited in Paragraph 30 constitutes inadmissible hearsay to the extent that it is cited for the truth of statements contained therein. There is no evidence that OSA or Omega Electronics has sold any products under the OMEGA marks to the government, the military, research laboratories, the automobile industry, steel mills or other manufacturers in the United States ­ that is, the kinds of customers to which OEI sells ­ and the testimony of OSA's witnesses is that they have not done so. (Sauser Rupp Tr. 142; Kayal Tr. 171-73, 177; Gibbons Tr. 144-45; M. Hollander 9/14/04 Dec. ¶ 13).

31. OEI's goods are available for purchase by any individual or company with access to the world wide web. [Ex. 22, printout from OEI's website at www.omega.com, visited September 14, 2004.] RESPONSE TO PARAGRAPH 31: Denied as unsupported, misleading and immaterial. The only evidence cited by OSA in Paragraph 31 is selected pages from OEI's web site. There is absolutely no evidence in the record that any consumer has ever purchased an OEI product for any purpose at all. The undisputed evidence is that defendants do not offer or sell any goods or services under OMEGA marks for use in markets or fields outside of industry and science, that at no time in the over 40year history of OEI have defendants marketed or sold any goods or services under any OMEGA

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marks to consumers, and that the only time-related devices that defendants have offered to sell or sold are period-timers or scientific or industrial clocks and similar apparatus that are used to regulate scientific, research or manufacturing processes in laboratories or factories. (M. Hollander 9/14/04 Dec. ¶¶ 3, 13, 15-16; Riggs Tr. 258).

32. OSA and OEI both sell timing devices. [Ex. 2, printout from OSA's website www.omega.ch, visited on September 14, 2004; Ex. 22, OEI's website at www.omega.com, visited on September 14, 2004.] RESPONSE TO PARAGRAPH 32: Denied as unsupported, misleading and immaterial. The only evidence cited in support of Paragraph 32 are selected pages from OSA's and OEI's websites. The cited web sites do not themselves use the vague and general term "timing devices," and do not establish that any likely purchasers of OSA's goods or OEI's goods use or understand that term or classify goods according to that term. In addition, defendants object to OSA Exhibit 2 on the ground that it constitutes hearsay. In fact, the goods offered on the two cited websites ­ luxury wristwatches on OSA's site, and period timers for scientific and industrial use on OEI's site ­ are very different products with very different uses and users. Thus, as set forth more fully in Paragraphs 1, 6, 1718 and 31 above and in Defendants' Rule 56(a)1 Statement of Undisputed Facts, the undisputed evidence is that the parties sell different products in different markets to different purchasers. OSA sells luxury wristwatches to consumers and sports timing equipment for athletic competitions. OEI sells scientific and industrial process measurement and control instruments to industry and the scientific community for manufacturing and research. OSA's own witnesses testified that OSA and its licensees have not made any sales of OMEGA-branded goods for

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scientific investigation or industrial application or for use in scientific or industrial fields, do not sell period timers, and have no plans to sell any timing devices for use in science or industry. (Kayal Tr. 244-45; Gibbons Tr. 142-45, 153; Rentsch Tr. 108, 120-21, 124, 128-31, 133-34, 138, 271; Sauser Rupp Tr. 66, 168-69, 251-52, 270-71). In contrast, it is undisputed that OEI's products are advertised and sold solely for use in science and industry, that defendants do not offer or sell any goods or services under OMEGA marks for use in markets or fields outside of industry and science, that at no time in the over 40-year history of OEI have defendants marketed or sold any goods or services under any OMEGA marks to consumers, that defendants do not sell goods for timing athletic competitions or sports events, and that the only time-related devices that defendants have offered to sell or sold are period-timers or scientific or industrial clocks and similar apparatus that are used to regulate scientific, research or manufacturing processes in laboratories or factories. (M. Hollander 9/14/04 Dec. ¶¶ 3, 6, 13, 15-16; Riggs Tr. 258). Moreover, as set forth more fully in response to Paragraph 18 above, OSA has at least twice expressly consented to OEI's registration and use of its OMEGA marks in connection with timers for science and industry, and agreed in the Omega I Settlement Agreement to drop and release such claims in this case. (See generally Def. Rule 56(a)1 Statement ¶¶ 75-87).

33. More than a century before OEI was even formed, OSA had been using the Omega mark in connection with timing devices worldwide and first used the mark in the United States more than 68 years prior to OEI's existence. [Ex. 1, Reg. No. 25,036; Ex. 5, Reg. No. 566,370.] RESPONSE TO PARAGRAPH 33: Denied as unsupported. The only evidence cited by OSA for the assertions in Paragraph 33 are two trademark registration certificates, which are not authenticated and which,

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to the extent cited for the truth of statements found therein, constitute inadmissible hearsay. Defendants object to OSA Exhibits 1 and 5 on the foregoing grounds. OSA has cited no admissible evidence regarding the scope, nature or extent of its use of its OMEGA marks in the United States. The only record evidence regarding OSA's sales in the United States under OMEGA marks is with respect to sales of luxury wristwatches and sports timing equipment. There is no evidence in the record that OSA sells any product called a "timing device"; indeed, OSA does not even sell clocks or pocket watches in the United States. (Emmons Tr. 32-34; Rentsch Tr. 105-06; Sauser Rupp Tr. 260).

34. OEI has filed numerous trademark applications in the United States and abroad (including, for example, Ex. 26, Ser. No. 76/337,450; Ex. 27, Ser. No. 76/337,374; Ex. 18, Ser. No. 76/242,073; Ex. 28, Ser. No. 002180834 (CTM)) for use of the Omega marks in connection with goods that are the same or confusingly similar to OSA's core business, such as the following: · · · · · · · · · · · Timers; Period timers; Precious metals; Jewelry; Horological and chronometric instruments; Precious stones; Apparatus for timing variable chemical and physical parameters such as timing; Dataloggers; Data storing, registering and recording apparatus; Industrial and scientific clocks; and Apparatus for display timing. RESPONSE TO PARAGRAPH 34: Denied as unsupported, incomplete, misleading and immaterial. Defendants object to the cited exhibits on the ground that they are unauthenticated. The evidence cited in support of Paragraph 34 relates to three United States applications and a single CTM application, and appears to consist of unauthenticated copies of PTO "TESS" reports for two of OEI's United 31

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States trademark applications (OSA Exhibits 26 and 27), an unauthenticated copy of a database report for one of OEI's CTM trademark applications (OSA Exhibit 28), and unauthenticated copies of OEI's initial applications that were assigned Serial No. 76/337.450 (OSA Exhibit 26), Serial No. 76/337,374 (OSA Exhibit 27) and Serial No. 76/242,073 (OSA Exhibit 18). The cited evidence does not support OSA's assertions and are selectively quoted and their contents distorted by OSA in Paragraph 34. First, all of the four cited applications do not contain all of the goods and services listed by OSA. To the extent each application contains any of the listed goods, all such goods about which OSA complains are expressly limited to "science and industry," which comports with the parties' 1994 Agreement (see ¶ 18, supra). Thus, the United States applications in OSA Exhibits 26 and 27 are expressly limited to "science and industry." (OSA Exs. 26, 27). As for the application in OSA Exhibit 18, the initial application did not refer to timers or timing devices or to any of the other specific goods listed in Paragraph 34. (OSA Ex. 18). Although the application was amended during the PTO examination process to include a reference to "apparatus for metering, gauging, counting, . . . timing, testing, data logging, sensing and controlling variable chemical and physical parameters," the application now is clearly limited to goods for "science or industry." (Riggs 9/14/04 Dec. Ex. H). All of the goods and services listed in the cited OEI CTM application also are expressly limited to "science and industry." (OSA Ex. 28). Second, most of the goods identified by OSA in Paragraph 34 are not contained in the cited United States applications, either in the initial applications as filed with the PTO or in the applications as narrowed during the examination process and reported on the PTO's TESS database. (See OSA Exhibits 26, 27 and 18; Riggs 9/14/04 Dec. Ex. H). Thus, none of the three

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cited United States applications contain "period timers," "precious metals," "jewelry," "horological and chronometric instruments," "precious stones" or "industrial and scientific clocks" among their listed goods, either as originally filed or as modified during PTO examination. (See OSA Exhibits 26, 27 and 18; Riggs 9/14/04 Dec. Ex. H). In light of the foregoing, and given the clear lack of overlap between the parties' fields of trade (see ¶¶ 1, 6, 17-18, 31, 32, supra), the cited evidence does not support the assertion that the goods cited "are the same as or confusingly similar to OSA's core business." Indeed, OSA has provided no admissible evidence that any of the goods listed in Paragraph 34 constitute "OSA's core business." Nor has OSA cited any admissible evidence regarding the scope, nature or extent of its use of its OMEGA marks in connection with the goods listed in Paragraph 34, any admissible evidence regarding the scope of its claimed rights in the OMEGA marks in any foreign jurisdictions, or any admissible evidence regarding the applicable foreign trademark law governing the parties' respective foreign trademark rights. Third, the assertions of Paragraph 34 are immaterial because the undisputed evidence is that the cited United States applications are intent to use applications that have been suspended as a result of this litigation and with respect to which the PTO has not yet taken any final action, and defendants have not made any use in commerce of the marks applied for in those applications. (Riggs 9/14/04 Dec. ¶¶ 8, 10, 12 & Exs. F-H; M. Hollander 9/14/04 Dec. ¶ 29). Thus, for the reasons set forth in defendants' accompanying memorandum of law, the Court lacks jurisdiction over these applications. Fourth, the assertions of Paragraph 34 also are immaterial because OSA has submitted no admissible evidence that it has suffered any injury or loss as a result of any trademark applications filed by OEI. To the contrary, OSA's Rule 30(b)(6) witness conceded

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that no OSA trademark applications have been "blocked" or otherwise impeded by any of OEI's United States trademark filings, that OSA has not suffered any injury to its business or reputation as a result of any OEI trademark filings, and that she could not identify any actual or potential OSA customers who even are aware of the existence of OEI's trademark applications or registrations about which OSA complains in this action. (Sauser Rupp Tr. 313, 363-64, 367, 388-89, 391-92, 416-17). Fifth, for the reasons set forth in Defendants' April 1, 2004 motion for, inter alia, an order of preclusion with respect to evidence relating to foreign trademark filings, OEI objects to OSA's reliance on evidence relating to its claims based on alleged foreign filings by defendants, and reasserts its motion to preclude such evidence.

35. OEI has also filed numerous trademark applications in the United States and abroad (including, for example, Ex. 26, Ser. No. 76/337,450; Ex. 27, Ser. No. 76/337,374; Ex. 18, Ser. No. 76/242,073; Ex. 28, Ser. No. 002180834 (CTM)) for use of the Omega marks in connection with goods and services clearly unconnected with OEI's business and for which, in some instances, it has admitted no intent to use (Ex. 14, Dep. Tr. of Dr. Hollander at 362-365): · · · · · · · · · · · Typewriters; Fire extinguishing apparatus; Cardboard; Artists' materials; Playing cards; Advertising services; Photographs; Stationery; Business administration; Office functions; and Paper. RESPONSE TO PARAGRAPH 35: Denied as unsupported, incomplete, misleading and immaterial. The evidence cited in support of Paragraph 35 relates to three United States applications and a single CTM 34

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Page 35 of 77

application, and appears to consist of unauthenticated copies of PTO "TESS" reports for two of OEI's United States trademark applications (OSA Exhibits 26 and 27), an unauthenticated copy of a database report for one of OEI's CTM trademark applications (OSA Exhibit 28), unauthenticated copies of OEI's initial applications that were assigned Serial No. 76/337,450 (OSA Exhibit 26), Serial No. 76/337,374 (OSA Exhibit 27) and Serial No. 76.242,073 (OSA Exhibit 18). OSA also cites excerpts of Dr. Hollander's deposition testimony. Defendants object to the cited exhibits on the ground that they are unauthenticated. The evidence cited by OSA does not support OSA's assertions and is selectively quoted and its contents distorted by OSA in Paragraph 35. With respect to the cited United States applications, a number of the goods identified by OSA in Paragraph 34 are not contained in the applications as narrowed during the examination process and reported on the PTO's "TESS" database. (See OSA Exhibits 26, 27; Riggs 9/14/04 Dec. Ex. H). Thus, none of the three cited United States applications as narrowed during the examination process and currently reported on the TESS database contain the goods "Typewriters," "Fire extinguishing apparatus," "Cardboard," "Artists' materials" or "Paper." (See OSA Exhibits 26, 27; Riggs 9/14/04 Dec. Ex. H). As for the other cited goods and services about which OSA complains in the cited United States applications in Paragraph 35, the evidence does not support OSA's assertions that the goods and services are "clearly unconnected with OEI's business" or that OEI "has admitted no intent use" its OMEGA marks in connection with those goods and services. The cited deposition testimony of Dr. Hollander merely states to Dr. Hollander's knowledge, OEI does not currently plan to offer fire-extinguishing apparatus, typewriters or automatic vending m