ATLANTA AUGUSTA CHARLOTTE DALLAS DENVER LOS ANGELES NEW YORK RALEIGH SAN DIEGO SAN FRANCISCO 

SEATTLE SHANGHAI SILICON VALLEY STOCKHOLM TOKYO WALNUT CREEK WASHINGTON WINSTON-SALEM 

Suite 2800, 1100 Peachtree Street NE

Atlanta, GA 30309-4528

t 404 815 6500 f 404 815 6555

June 28, 2016 direct dial 404 815 6010 

direct fax 404 541 3387 

nchollet@kilpatricktownsend.com 

By Email 

Lindsay Korotkin, Esq. 

Arent Fox 

1675 Broadway 

New York, New York 10019-5820 

Re: adidas America Inc., et al. v. TRB Acquisitions, LLC: Response to June 24 Letter 

Dear Lindsay: 

I write in response to your June 24 letter and to follow up on the numerous conversations 

we have had to address any alleged issues in Plaintiffs’ document production. I also write to 

follow up on my June 13 letter, in which we identified several issues with TRB’s document 

production (to which we have not received a response) and to identify a number of additional 

deficiencies in TRB’s production. 

TRB’s Deficiencies

As you know, in my June 13 letter, we identified several gaps in TRB’s production of 

documents. Specifically, we raised the following issues: 

• Missing attachments for twenty-one emails (bates numbers previously provided);

• Five non-consecutive document families (bates numbers previously provided);

• Five documents that claim a family relationship but appear to be missing the parent email

(bates numbers previously provided);

• 3,335 documents in black and white in which color is necessary (bates numbers

previously provided); and

• Three documents that have been improperly redacted (Bates Nos. TB005659, TB005661,

TB009095).

Despite raising these in my letter and addressing them on our June 14 call, we still have

not received a substantive response or a corrected production. Please provide the corrected 

production by Friday, July 1. 

Exhibit O - Page 1 of 8

Case 3:15-cv-02113-SI Document 132-15 Filed 10/11/16 Page 1 of 8
Lindsay Korotkin, Esq. 

June 28, 2016 

Page 2 

In addition to the issues identified in my June 13 letter, further deficiencies in TRB’s 

production have become evident. As Mr. Henn indicated in his June 17 email, we still are 

waiting for TRB to produce the rest of its emails and ESI. Specifically, we have identified the 

following requests to which we have not received any responsive document: Document Requests 

Nos. 2, 4, 5, 6, 7, 14, 15, 31, 32, 33, 34, 37, 38, 61, 62, 63, 67, 70, 71, 72, 75, 76, 77, 78, 79, 80, 

81, 82, 83, 84, 85, 86, and 88. In addition, TRB indicated for Document Request Nos. 12, 13, 

17, 18, 23, 26, 28, 35, 36, 39, 40, 73 and 74 that it would produce documents and would continue 

its investigation into its predecessors-in-interest’s activities and produce documents as they 

become available. Yet we have not received documents responsive to these requests or 

confirmation that such documents do not exist in TRB or its predecessor-in-interest’s records. 

Further, we are surprised by the sparse number of documents we have received for Document 

Request Nos. 19, 24, 25, 27, 29, 41, 47, 48, 49, 53, 54, 55, 57, 68, and 69. For example, we have 

received no documents regarding the license agreement with RBX.com LLC, despite TRB 

identifying RBX.com LLC as a licensee of the Infringing Marks. To the extent TRB has 

produced some documents responsive to these requests, we remain concerned that TRB has not 

produce all relevant documents, including TRB’s full set of responsive emails. Please provide us 

the date by which we can expect to receive these documents. 

We also note that TRB has refused to produce documents to Request Nos. 11, 30, 52, 87, 

89 and 90 on the basis that all documents responsive to these requests are covered by a claim of 

privilege. To evaluate that claim, we request that TRB provide a privilege log identifying the 

relevant documents and the claimed privilege. 

Finally, you have failed to produce any documents or respond to the subpoenas served on 

each of the third-party licensees. Please provide by July 1, dates by which we can expect to 

receive documents, as well as dates on which the licensees’ representatives will be available for 

depositions. 

Plaintiffs’ Production

 Turning to your letter, we address each of your questions. 

 First, you have objected to Plaintiffs’ reasonable temporal limitations on its discovery 

responses. As you know, the Federal Rules of Evidence have recently changed. Under the new 

rules, discovery requests must be proportional to the needs of the case. There is no rational basis 

under which TRB can assert that fifteen years of data or documents is proportional to the needs 

of the case, let alone justify TRB’s even more extreme position that Plaintiffs must produce any 

agreement (settlement, license or otherwise) that was entered into by one of the Plaintiffs at any 

time during their history that is still in effect. You have argued at times that the basis for your 

fifteen year cutoff is related to TRB’s abandonment claim for the RBK mark, but Plaintiffs are 

struggling to comprehend how documents dating back prior to Reebok’s claimed date of first use 

of the RBK mark are relevant to TRB’s abandonment claim. Plaintiffs set the five year date 

because that date coincides with TRB’s claimed date of first use of the RBX and RBX Logo in 

its trademark applications (July 2012), which is the crux of this case. In light of this rational 

basis to the claims, we are having trouble understanding the logical connection to TRB’s 

Exhibit O - Page 2 of 8

Case 3:15-cv-02113-SI Document 132-15 Filed 10/11/16 Page 2 of 8
Lindsay Korotkin, Esq. 

June 28, 2016 

Page 3 

insistence that Plaintiffs produce documents going back to before TRB’s own use of the 

Infringing Marks. 

 Plaintiffs also are having difficulty with TRB’s request based on TRB’s repeated 

assertion that Plaintiffs have produced too many documents. With the request for documents 

going back fifteen years, TRB is asking for potentially thousands of additional documents. 

Plaintiffs hesitate to produce these documents if in return, TRB will complain that the document 

production from Plaintiffs is too large.1 

Nevertheless, we have gone through your list of specific document categories you 

identified and provided a response. We are happy to discuss this with you further. 

• licenses, settlement agreements, co-existence agreements, consent injunctions, 

judgments, consent judgments, consent decrees, orders, decisions, judgments, and 

defaults of any kind, including those relating to the resolution of any civil action or 

proceeding before the USPTO or TTAB related in any way to Plaintiffs’ trademarks at 

issue in this litigation (“Plaintiffs’ Marks,” as defined in TRB’s discovery requests to 

Plaintiffs); 

o Response: Plaintiffs have produced all active license agreements and settlement 

agreements going back five years. TRB has access to publicly available consent 

injunctions, judgments, consent judgments, consent decrees, orders, decisions, 

judgments, and defaults of any kind, including those relating to the resolution of 

any civil action or proceeding before the USPTO or TTAB related in any way to 

Plaintiffs’ trademarks at issue in this litigation. 

• documents related to any third-party registration, application to register, or use of a 

triangular shaped mark containing lines in connection with apparel or footwear, and 

communications related thereto; 

o Response: Plaintiffs have produced settlement agreements going back five years. 

TRB has access to publicly available applications or actions taken by Plaintiffs 

before the TTAB. 

• documents related to Plaintiffs’ selection, use, attempts to register, or registration of the 

Plaintiffs’ Marks; 

o Response: Plaintiffs have produced the file wrappers for each of its registrations, 

which go to Plaintiffs’ attempts to register and registration of Plaintiffs’ Marks for 

the lifespan of the registrations. 

 

1

 We also remind you that Plaintiffs are not producing documents that are publicly available, 

including documents on Westlaw, Pacer, the U.S. Patent and Trademark Records, or the 

Trademark Trial and Appeal Board. Many of the documents you have asked for fall within those 

categories. 

Exhibit O - Page 3 of 8

Case 3:15-cv-02113-SI Document 132-15 Filed 10/11/16 Page 3 of 8
Lindsay Korotkin, Esq. 

June 28, 2016 

Page 4 

• documents that identify each kind of apparel or footwear product sold under Plaintiffs’ 

Marks; 

o Response: Plaintiffs have produced catalogs from Reebok identifying each kind of 

apparel and footwear products sold under Reebok’s Marks since 2002. Similarly, 

Plaintiffs have produced digital catalogs from adidas identifying each kind of 

apparel and footwear products sold under adidas’s Marks since 2011. 

Hardcopies of older catalogs identifying each kind of apparel and footwear 

products sold under adidas’s Marks are available at Perkins Coie. 

• a representative sample or photograph of each product ever offered or sold under the 

RBK Mark; 

o Response: Plaintiffs have produced catalogs from Reebok identifying each kind of 

apparel and footwear products sold under the RBK Mark since 2002. 

• documents sufficient to identify each store, website, or other outlet through which any 

product offered or sold under the RBK Mark was marketed, promoted, sold, or offered 

for sale; 

o Response: Plaintiffs disagree that documents sufficient to identify each store, 

website, or other outlet through which any product offered under the RBK Mark 

was marketed, promoted, sold, or offered for sale for the last fifteen years are 

relevant. Plaintiffs will agree to produce this information for the last five years. 

• documents sufficient to identify each third party that has licensed the RBK Mark; 

o Response: Plaintiffs have produced all active license agreements regardless of 

when the agreement was entered. 

• documents sufficient to identify the monthly and annual gross revenue from products 

sold, and the number of units offered for sale or sold, under Plaintiffs’ Marks including 

the RBK Mark; 

o Response: Plaintiffs disagree that documents sufficient to identify the monthly 

and annual gross revenue from products sold, and the number of units offered for 

sale or sold, under Plaintiffs’ Marks for the last fifteen years is relevant. Plaintiffs 

will agree to produce this information for the last five years. 

• documents that refer or relate to the profitability or lack of profitability of the RBK Mark; 

o Response: Plaintiffs disagree that documents that refer or relate to the profitability 

or lack of profitability of the RBK Mark for the last fifteen years is relevant. 

Plaintiffs will agree to produce this information for the last five years. 

Exhibit O - Page 4 of 8

Case 3:15-cv-02113-SI Document 132-15 Filed 10/11/16 Page 4 of 8
Lindsay Korotkin, Esq. 

June 28, 2016 

Page 5 

• representative samples of each label, tag, or packaging that has been used in connection 

with each product ever offered for sale or sold under the RBK Mark; 

o Response: Plaintiffs have produced examples of labels, tags, or packaging that 

have been used in connection with products offered for sale or sold under the 

RBK Mark, however, Plaintiffs’ document retention policy states that samples of 

each label, tag, or packaging are to be kept only for three years. 

• documents that refer or relate to any research you conducted about TRB’s Marks, the 

letters RBX, or the letters RB (whether or not accompanied by other words and/or 

designs); 

o Response: TRB has not been using the RBX mark for the past fifteen years. 

Accordingly, Plaintiffs do not understand the basis for requesting documents 

going back fifteen years for this request. 

• documents referring or relating to Plaintiffs’ policing of their alleged rights in Plaintiffs’ 

Marks; 

o Response: Plaintiffs have produced settlement agreements for the past five years. 

• documents relating to the use of the letters RB (whether or not accompanied by other 

words/designs) on footwear and apparel, including communications with third parties 

regarding such designations, and settlement agreements, co-existence agreements, and 

other documents relating to any registration, or attempt to register, a mark containing 

those designations; 

o Response: TRB has access to publicly available applications. Plaintiffs have 

produced settlement agreements for the last five years. 

• documents that refer or relate to any research you have conducted concerned designs 

incorporating 2, 3, or 4 stripes on apparel and/or footwear; 

o Response: Plaintiffs disagree that documents that refer or relate to any research 

Plaintiffs have conducted concerning designs incorporating 2, 3, or 4 stripes on 

apparel and/or footwear for the last fifteen years is relevant. Plaintiffs will agree 

to produce this information for the last five years. As Mr. Henn stated, older 

market research may exist in the documents at Perkins Coie. 

• documents sufficient to identify the stores or outlets through which Plaintiffs’ and TRB’s 

products have been sold or offered for sale; 

o Response: Plaintiffs disagree that documents sufficient to identify the stores or 

outlets through which Plaintiffs’ and TRB’s products have been sold or offered 

for sale for the last fifteen years is relevant. TRB has not been using the RBX 

Exhibit O - Page 5 of 8

Case 3:15-cv-02113-SI Document 132-15 Filed 10/11/16 Page 5 of 8
Lindsay Korotkin, Esq. 

June 28, 2016 

Page 6 

mark for fifteen years. Plaintiffs will agree to produce this information for the 

last five years. 

• documents referring or relating to consumer recognition that adidas and Reebok share 

common ownership; 

o Response: Plaintiffs disagree that documents referring or relating to consumer 

recognition that adidas and Reebok share common ownership for the last fifteen 

years is relevant. adidas and Reebok have shared common ownership only since 

late 2005. Plaintiffs will agree to produce this information for the last five years. 

• documents referring or relating to marketing or advertising of goods sold under the RBK 

Mark from the date of first use to the present; and 

o Response: Plaintiffs have produced documents referring or relating to marketing 

or advertising of goods sold under the RBK Mark. 

• documents referring or relating to the maintenance of trademark registrations for the 

Reebok Plaintiffs’ Marks. 

o Response: Plaintiffs have produced the file wrappers for each of its registrations, 

which go to Plaintiffs’ maintenance their trademark registrations. 

Second, we have attached to this letter, amended responses to TRB’s First and Second 

Set of Requests for the Production of Documents and Things to both adidas and Reebok, as well 

as amended responses to TRB’s First Set of Interrogatories to Reebok. We reviewed adidas’s 

Responses and Objections to TRB’s Interrogatories and believe we have identified those people 

with the most relevant knowledge on the identified topics. We, however, reserve our right to 

amend any of Plaintiffs’ responses if it is deemed necessary. 

Third, you asked for us to confirm that Plaintiffs’ search for responsive documents and 

information included relevant European-based custodians and data. As I mentioned during our 

last call, because this is a trademark case that is pending in the United States, documents or 

information regarding the use of the Plaintiffs’ respective Marks outside the United States is not 

relevant. Moreover, because all relevant information that would impact Plaintiffs’ Marks inside 

the United States would be communicated to U.S.-based personnel, a collection of documents 

from European-based custodians is not necessary, nor will Plaintiffs be undertaking that 

endeavor. 

Fourth, you have asked about the bankers boxes of documents at Perkins Coie. As both 

Mr. Henn and Mr. Feldman have repeatedly stated, the contents of the boxes are not the same as 

they were in 2006. Mr. Feldman expressly noted that new catalogs have been added. In 

addition, Mr. Henn told you, as you mentioned in your letter, that documents have been removed 

from those boxes pursuant to adidas’s document retention policy. (Additionally, we cannot 

guarantee that whatever numbering may have existed on the boxes in 2006 corresponds 

Exhibit O - Page 6 of 8

Case 3:15-cv-02113-SI Document 132-15 Filed 10/11/16 Page 6 of 8
Lindsay Korotkin, Esq. 

June 28, 2016 

Page 7 

identically with any numbering that may presently exist on the boxes.) Accordingly, an index 

that was created for a prior case years ago will not be useful in identifying the current contents of 

the boxes at Perkins Coie. We have made these documents available to you and strongly 

recommend that if you are interested in the contents of the boxes that you have someone go and 

review those materials in light of TRB’s specific claims and defenses. This is particularly 

important given the emphasis you have placed on documents going back more than five years. 

As Mr. Henn stated, certain of the documents in the boxes are much older and may satisfy TRB’s 

desire for documents dating back fifteen years. In the meantime, we endeavor to answer your 

specific questions: 

1. As Mr. Feldman stated, there may be correspondence within the boxes, and 

therefore, we cannot say that there is no correspondence. As Mr. Henn initially stated, however, 

the documents mainly consist of product catalogs, marketing materials, and brand tracking 

reports. 

2. Yes, documents have been added to the boxes since 2006. As Mr. Feldman 

stated, new catalogs have been added. adidas has produced digital catalogs from the past five 

years, but hardcopies of these and older catalogs are available in the boxes. 

3. Documents have been removed from the boxes pursuant to adidas’s document 

retention policy. The last time documents were removed was in May 2013. 

4. We have not undertaken any efforts to digitize the documents in the bankers 

boxes at Perkins Coie. 

5. We have not undertaken any efforts to digitize the documents in the bankers 

boxes at Perkins Coie. 

6. Although we do not believe that the prior index will accurately reflect the current 

contents of the boxes at Perkins Coie, we are willing to consider Arnett Fox’s request; however, 

before we consent to Lane Powell sharing its index, we ask that Lane Powell share the index 

with us so we can consider the contents in light of the protective order in place in the K-Mart 

case. 

7. As Mr. Henn previously stated, these documents are just adidas documents. 

We hope this answers the questions you have regarding Plaintiffs’ document production. 

We would like to set up a time to discuss the deficiencies we identified in TRB’s production. If 

you have any remaining questions on Plaintiffs’ document production, we are happy to address 

them at that time. Please let me know if you are available June 30 or July 5 to discuss. 

Exhibit O - Page 7 of 8

Case 3:15-cv-02113-SI Document 132-15 Filed 10/11/16 Page 7 of 8
Lindsay Korotkin, Esq. 

June 28, 2016 

Page 8 

Sincerely, 

Nichole Davis Chollet 

Enclosures 

cc: Michelle Mancino Marsh 

Allen G. Reiter 

Kenneth R. Davis 

Parna A. Mehrbani 

R. Charles Henn Jr. 

Charles H. Hooker III 

Exhibit O - Page 8 of 8

Case 3:15-cv-02113-SI Document 132-15 Filed 10/11/16 Page 8 of 8