Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA199866
`ESTTA Tracking number:
`03/21/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91121040
`Defendant
`OSHO INTERNATIONAL FOUNDATION
`MARY M. LURIA
`DAVIS & GILBERT LLP
`1740 BROADWAY
`NEW YORK, NY 10019
`UNITED STATES
`Other Motions/Papers
`Sara Edelman
`sedelman@dglaw.com
`/sedelman/
`03/21/2008
`Appendix B.PDF ( 148 pages )(9309902 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`___________________________________________________________ -_X
`
`OSHO FRIENDS INTERNATIONAL,
`
`Opposer/Petitioner,
`
`v.
`
`2
`2
`'
`:
`:
`'
`
`Opposition No. 91 121040
`Opposition No. 91 150372
`Opposition No. 91 150379
`Opposition No. 91 152313
`Opposition No. 91 153103
`Opposition No. 91 155927
`Opposition No. 91 157465
`Opposition No. 91 157610
`Opposition No. 91 157698
`Cancellation No. 92031932
`
`OSHO INTERNATIONAL FOUNDATION,
`
`(as consolidated)
`
`Applicant/Respondent.
`
`_____________________________________________________________X'
`
`APPENDIX B TO APPLICANT/RESPONDENT’S OSHO INTERNATIONAL
`
`FOUNDATION’S RESPONSE TO OPPOSER/PETITIONER’S STATEMENT
`
`OF EVIDENTIARY OBJECTIONS
`
`

`
`Exhibit 1
`
`AT&T Corp. v. Overdrive, Inc.
`
`Exhibit 2
`
`Baker v. Rio Props., Inc.
`
`Exhibit 3
`
`Cash Haggadone v. Cavanna
`
`Exhibit 4
`
`Eredi Chiarini S.R.L. v. Braemore Neckwear Co.
`
`Exhibit 5
`
`Community Financial Services Association ofAmerica v.
`Payday Garden City, L.L. C.
`
`Exhibit 6
`
`Corning Inc. v. Vitrocrisa S.A. de C. V. Co.
`
`Exhibit 7
`
`Danone Asia Pte v. Happy Dragon Wholesale
`
`Exhibit 8
`
`Food-Tek, Inc. v. Rhodia, Inc.
`
`Exhibit 9
`
`Fridkin v. Minn. Mut. Life Ins. Co.
`
`Exhibit 10
`
`Great Earth Cos., Inc. v. Intimate Beauty Corp.
`
`Exhibit 11
`
`Leiner Health Servs. Corp. v. Time of Your Life, Inc.
`
`Exhibit 12
`
`Minka Lighting, Inc. v. Ambiance Imps., Inc.
`
`Exhibit 13
`
`Pacific Sunwear of Cal., Inc. v. AIT, Inc.
`
`Exhibit 14
`
`Pinkerton Serv. Corp. v. Senior Tech.
`
`Exhibit 15
`
`Ariel Remos v. Ariel Feierman
`
`Exhibit 16
`
`Schlage Lock Co. v. MarkJ. Staiano
`
`Exhibit 17
`
`Tommy Hilfiger Licensing, Inc. v. Henri-Lloyd, Ltd.
`
`Exhibit 18
`
`Walters Gardens, Inc. v. Pride ofPlace Plants, Inc.
`
`Exhibit 19
`
`Warrior Lacrosse, Inc. v. STX, L.L.C.
`
`

`
`EXHIBIT 1
`
`

`
`LEXSEE
`
`@ A
`
`nalysis
`As of: Mar 19, 2008
`
`AT&T CORP., Plaintiff, vs. OVERDRIVE, INC., Defendant.
`
`Case N0. 1:05CV1904
`
`UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
`OHIO, EASTERN DIVISION
`
`2006 U.S. Dist. LEXIS 84836
`
`November 21, 2006, Decided
`November 21, 2006, Filed
`
`SUBSEQUENT HISTORY: Motion granted by At&T
`Corp. v. Overdrive,
`lnc., 2007 U.S. Dist. LEXIS 661
`jN.D. Ohio, Jan. 3, 2007)
`
`JUDGES: Kenneth S. McHargh, United States Magis-
`trate Judge.
`
`CORE TERMS: business records, personal knowledge,
`deposition testimony, summary judgment, authenticated,
`deposition, inadmissible hearsay, qualified witness, dic-
`tionary, moves to strike, admissible, well-taken, admissi-
`bility, inadmissible, authenticate, regularly, hearsay, sig-
`nature, competent evidence, evidence admissible, fails to
`demonstrate, business activity, normal course, informa-
`tion transmitted, common meaning, proper foundation,
`regular course, competency, personally, testifying
`
`[*1] For AT&T Corp., Plaintiff: Paul R.
`COUNSEL:
`Franke, III, LEAD ATTORNEY, Stephanie D. Lough-
`ner, William H. Eikenben'y, Murray, Franke, Green-
`house, List & Lippitt, Denver, CO; Vincent J. Lodico,
`LEAD ATTORNEY, Jeffrey D. Houser, Crabbe, Brown
`& James, Columbus, OH.
`
`For Overdrive, lnc., Defendant: Lester S. Potash, Cleve-
`land, OH.
`
`OPINION BY: Kenneth S. McHargh
`
`OPINION
`
`MEMORANDUM AND ORDER
`
`McHARGH, Mag. J.
`
`The plaintiff, AT&T Corp. ("AT&T"), a New York
`corporation, has filed an amended complaint against the
`defendant, Overdrive,
`Inc.
`("Overdrive"), a Delaware
`corporation, alleging breach of contract and unjust en-
`richment. (Doc. 8.)
`In its answer, Overdrive asserted
`counterclaims alleging a breach of an implied covenant
`of good faith and fair dealing, fraudulent misrepresenta-
`tion, and tortious interference.
`[*2] (Doc. 17.)
`
`Overdrive has filed a motion for summary judgment
`on the amended complaint. (Doc. 37.) AT&T has re-
`sponded to that motion, and filed a cross-motion for
`summary judgment. (Doc. 39-40.) Currently before the
`court are two motions to strike, filed by defendant Over-
`drive. (Doc. 42-43.)
`
`For Overdrive, lnc., Counter—Claimant: Lester S. Potash,
`LEAD ATTORNEY, Cleveland, OH.
`
`I. OVERDRIVE'S MOTIONS TO STRIKE
`
`For AT&T Corp., Counter-Defendant: Paul R. Franke,
`III, LEAD ATTORNEY, Stephanie D. Loughner, Wil-
`liam H. Eikenberry, Murray, Franke, Greenhouse, List &
`Lippitt, Denver, CO; Jeffrey D. Houser, Vincent
`J.
`Lodico, Crabbe, Brown & James, Columbus, OH.
`
`Defendant Overdrive has filed two motions to strike
`
`exhibits attached to AT&T's response and cross-motion.
`Overdrive moves to strike Exhibit 2, the affidavit of Pam
`Gritchen, arguing that it "does not constitute competent
`evidence admissible for consideration by this court."
`(Doc. 42, at 1.) Overdrive also moves to strike Exhibits
`
`Page 1
`
`

`
`2006 U.S. Dist. LEXIS 84836, *
`
`1, 3, 5-8, and 10-14, arguing that they constitute "inad-
`missible hearsay." (Doc. 43, at 1.) AT&T has responded
`to each motion. (Doc. 46-47.)
`
`Rule 56]e[ sets the standards which affidavits to a
`motion for summary judgment must satisfy, but the rule
`makes no provision for "striking" those documents which
`do not confonn. Fed. R. Civ. P. 56[e[. Overdrive's "mo-
`tions to strike" will be considered as objections to the
`affidavit and exhibits at issue.
`
`11. GRITCHEN AFFIDAVIT
`
`Overdrive moves to strike [*3] Exhibit 2, the affi-
`davit of Pam Gritchen, arguing that it "does not consti-
`tute competent evidence admissible for consideration by
`this court." (Doc. 42, at 1.) Rule 56 provides that sum-
`mary judgment affidavits "shall be made on personal
`knowledge, shall set forth such facts as would be admis-
`sible in evidence, and shall show affirmatively that the
`affiant
`is competent
`to testify to the matters stated
`therein." Fed. R. Civ. P. 56]e). Failure to comply with
`the mandatory requirements of Rule 56 e
`"makes the
`proposed evidence inadmissible during the consideration
`of the summary judgment motion." Friedel v. City of
`Madison, 832 F.2d 965, 970 (7th Cir. 1987). Overdrive
`contends that the Gritchen affidavit is not made on per-
`sonal knowledge, doc. 42, at 2, that it does not set forth
`facts which would be admissible in evidence,
`id. at 3,
`and that
`the affidavit fails to demonstrate Gritchen's
`
`competency to testify on the relevant matters, id. at 6.
`
`To be considered as competent evidence, a summary
`judgment affidavit must be based on personal knowl-
`edge. Harriscom Svenska, AB v. Harris Cogp., 3 F.3d
`576, 581 g2d Cir. 1993]; [*4] Citizens to Preserve Over-
`ton Park, Inc. v. Volpe, 432 F.2d 1307, 1319 (6th Cir.
`
`1970 [, rev'd on other grounds by 401 U.S. 402 91 S. Ct.
`814, 28 L. Ed. 2d 136 (1971 ); Reddy v. Good Samaritan
`Hosp. & Health Ctr., 137 F.Supp.2d 948, 956 (SD. Ohio
`2000). Overdrive objects that the Gritchen affidavit is not
`made on personal knowledge, thus cannot be considered
`by the court. (Doc. 42, at 2.) In her affidavit, Gritchen
`avers:
`
`I am the Final Dispute/Legal Manager
`for Revenue Management at AT&T Corp.
`I am over 18 years of age and am fully
`familiar with the facts and circumstances
`contained herein. I make this affidavit to
`
`the best of my knowledge and belief
`based upon the business records kept in
`the normal course and scope of business
`at AT&T Corp.
`
`(Doc. 40, PX 2, at P 1.)
`
`Overdrive objects to this choice of words, arguing
`that there is no evidence in the affidavit that Gritchen has
`
`personal knowledge of the "facts and circumstances."
`Overdrive contends that "familiarity" is not equivalent to
`"personal knowledge." (Doc. 42, at 3-4.) In addition,
`Overdrive asserts that
`the phrase "to the best of my
`knowledge and belief‘ does not meet the standard of
`knowledge [*5] required. Id. at 4.
`
`An affidavit normally states the basis for the facts,
`but "personal knowledge may be inferred from the con-
`tent of the statements." Reddy, 137 F .Supp.2d at 956. On
`the other hand, an affidavit "based, not on personal
`knowledge, but only on information and belief" is not
`
`competent evidence. Overton Park 432 F.2d at 1319
`(emphasis added). See also Reddy, 137 F.Supp.2d at 956
`(same). The term "belief" is not a sufficient basis for the
`asserted facts. Reddy, 137 F.Supp.2d at 956. Unfortu-
`nately, Gritchen's affidavit confuses the issue by using
`parts of both phrases. For example, Gritchen states that
`she is "fully familiar with the facts and circumstances."
`(PX 2, at P 1.) She also makes the affidavit "to the best
`of [her] knowledge and belief" based upon AT&T‘s busi-
`ness records. Id.
`
`The court detennines the common meaning or
`common understanding of a word or phrase by reference
`to the standard dictionaries. See, e.g., Amoco Prod. Co.
`v. Southem Ute Indian Tribe, 526 U.S. 865, 874-87_5,
`119 S. Ct. 1719, 144 L. Ed. 2d 22jl_99_9_). The phrase
`"familiar with" is defined by one major dictionary as
`"having personal [*6] or intimate knowledge." Merriam-
`Webster's Collegiate Dictionary 419 (10<th> ed. 1993).
`Another respected dictionary defines "familiar" as "hav-
`ing an intimate knowledge of, closely acquainted (with)."
`Webster's New World Dictionary of American English
`489 (3d college ed. 1988). In accordance with the com-
`mon meaning of
`the phrase,
`the
`court construes
`Gritchen's averment that she is "fully familiar with the
`facts" to mean that she asserts she has personal knowl-
`edge of the facts.
`
`Overdrive further argues that any knowledge that
`Gritchen possesses may have been obtained improperly,
`through "rumor, innuendo, hearsay, etc." (Doc. 42, at 3-
`4.) However, Gritchen avers that her knowledge is
`"based upon the business records kept
`in the normal
`course and scope of business at AT&T Corp.," which
`would be a proper basis. (PX 2, at P 1.)
`
`. is not strictly limited to ac-
`.
`"Personal knowledge .
`tivities in which the declarant has personally partici-
`pated." Washington Cent. R.R. Co., Inc. v. National Me-
`diation Bd. 830 F.Su
`. 1343 1352-1353 E.D. Wash.
`
`1993] (citing Londrigan v. FBI, 216 U.S. App. D.C. 345,
`670 F.2d 1164, 1174-1175 (DC. Cir. 1981]). Personal
`knowledge can come from [*7] review of the contents of
`
`Page 2
`
`

`
`2006 U.S. Dist. LEXIS 84836, *
`
`business records, and an affiant may testify to acts that
`she did not personally observe but which are described in
`business records. I_d.; Federal Sav. & Loan Ins. Corp. v.
`Griffin, 935 F.2d 691, 702 (5th Cir. 1991), cert. denied,
`
`502 U.S. 1092
`112 S. Ct. 1163
`117 L. Ed. 2d 410
`
`business at AT&T Corp." (Doc. 40, PX 2, at P 1.) As-
`suming arguendo that Gritchen may be an "other quali-
`fied witness" capable of providing a foundation for the
`exhibits at issue, her conclusory statement that the exhib-
`its are "business records" is insufficient.
`
`Documents submitted to support or oppose a sum-
`mary judgment motion must be attached to an affidavit
`that both identifies and [*10] authenticates each docu-
`ment. Stuart v. General Motors Corp., 217 F.3d 621, 635
`
`n.20 (8th Cir. 2000); Carmona v. Toledo 215 F.3d 124
`131 g 1st Cir. 2000); Klein v. Manor Healthcare Com., 19
`F.3d 1433, 1994 WL 91786, at *6 (6th Cir. 1994) (TA-
`BLE, text in WESTLAW). First of all, Gritchen's affida-
`vit does not establish that she "is familiar with what is
`
`nonnally recorded and with the process whereby the re-
`cords are created, recorded, and stored." See Brodersen
`902 F.Supp. at 955 (citing United States v. Kail 804
`F.2d 441, 449 (8th Cir. 1986)). In fact, Gritchen does not
`specifically establish that any particular exhibit was
`made in the course of a regularly conducted business
`activity, or that such documents were kept in the regular
`course of that business, or that the regular practice of
`AT&T was to have made such a record, or that the ex-
`hibits were made by a person with knowledge of the
`transaction or from information transmitted by a person
`
`with such knowledge. See generally Baker 458 F.3d at
`518.
`
`
`
`from
`to infer
`AT&T essentially asks the court
`Gritchen's job title that she has [*11]
`certain responsi-
`bilities which would lead her
`to have the requisite
`knowledge.
`(Doc. 46, at 3-4.) However, her affidavit
`itself does not establish this, nor does it satisfy the re-
`quirements for admissibility of business records. The
`objections to Gritchen's affidavit are well-taken.
`
`Overdrive argues that because the Gritchen affidavit
`has failed to properly authenticate Exhibits 1, 3, 5, 7-8,
`and 10-14, they are inadmissible as hearsay. (Doc. 42, at
`5.) This argument substantially overlaps that made by
`Overdrive's second motion to strike.
`
`III. EXHIBITS TO PLAINTlFF'S RESPONSE
`
`In their second motion, Overdrive moves to strike
`Exhibits 1, 3, 5-8, and 10-14, arguing that they are "in-
`admissible hearsay." (Doc. 43, at 1.) Overdrive argues
`that these exhibits have not been properly authenticated,
`and are thus inadmissible as hearsay. Id. at 3. Overdrive
`contends that the Gritchen affidavit is insufficient for this
`
`purpose. In addition, Overdrive claims that the docu-
`ments in question are not properly authenticated via the
`deposition testimony of either Ray Fassett or Lisa Pi-
`tagna. Id. at 5-6.
`
`AT&T responds that the documents have been au-
`thenticated by Gritchen. (Doc. 47, at 2.)
`[*l2] As dis-
`
`Page 3
`
`(1992 ).
`
`Next, Overdrive contends that the Gritchen affidavit
`does not set forth facts which would be admissible in
`
`evidence. (Doc. 42, at 3.) Overdrive argues that the un-
`derlying "business records" relied upon by Gritchen are
`in fact inadmissible hearsay, because she cannot provide
`a proper foundation for their admission under Fed. R.
`Evid. 803(6). Id. at 4. Overdrive argues that the Gritchen
`affidavit fails to demonstrate Gritchen's competency to
`testify on the relevant matters. Id. at 6.
`
`A business record must satisfy four requirements in
`order to be admissible under Rule 803(6):
`''(I) it must
`have been made in the course of a regularly conducted
`business activity; (2) it must have been kept in the regu-
`lar course of that business; (3) the regular practice of that
`business must have been to have made the memorandum;
`and (4) the memorandum [*8] must have been made by
`a person with knowledge of the transaction or from in-
`formation transmitted by a person with knowledge."
`United States v. Baker, 458 F.3d 513, 518 (6th Cir. 2006)
`(citing United States v. Jenkins, 345 F.3d 928, 935 (6th
`Cir. 2003)). The evidentiary foundation must be shown
`by "the testimony of the custodian or other qualified wit-
`
`ness[.]" Fed. R. Evid. 803(6); Baker 458 F.3d at 518.
`
`Thus, under Rule 80316), a witness does not have to
`be the custodian of the documents offered into evidence
`
`in order to meet the foundational requirements. United
`States v. Childs, 5 F.3d 1328, 1334 (9th Cir. 1993), cert.
`
`denied, 511 U.S. 1011 114 S. Ct. 1385 128 L. Ed. 2d 60
`(1994); Brodersen v. Sioux Valley Memorial Hosp., 902
`F.Su
`. 931 954-955 N.D. Iowa 1995 . "The phrase
`‘other qualified witness‘ is given a very broad interpreta-
`tion." Baker 458_ F.3d at 518 (quoting 5-803 Weinstein‘s
`Federal Evidence
`§ 803.08|8| al
`(2006)). See also
`Childs 5 F.3d at 1334 ("other qualified witness" broadly
`interpreted).
`[*9]
`It is not necessary for an "other quali-
`fied witness" to have personal knowledge of the prepara-
`tion of business records. Baker 458 F.3d at 518 (citing
`Dyno Constr. Co. v. McWane, Inc. 198 F.3d 567 575-
`576 (6th Cir. 1999)); Jenkins 345 F.3d at 935-936. All
`that's required is that the witness be capable of testifying
`that she is "familiar with the record-keeping procedures
`
`of the organization." Baker 458 F.3d at 518 (citing my
`
`Constr. Co.
`198 F.3d at 576). See also Brodersen 902
`F Supp. at 955 (person capable of testifying as to nature
`of regularly kept records of business) (citing cases).
`
`
`
`
`
`Gritchen avers that her affidavit is "based upon the
`business records kept in the normal course and scope of
`
`

`
`2006 U.S. Dist. LEXIS 84836, *
`
`cussed more fully above, the court finds that the Gritchen
`affidavit does not satisfy the requirements for admissibil-
`ity of business records pursuant to Fed. R. Evid. 803(6).
`
`In addition, AT&T asserts that Exhibits 3, 7, 8, 10,
`and 13 were signed by Fassett, Overdrive's Rule 30(b)(6)
`representative, and at his deposition "these contracts
`were all attached as exhibits and he specifically gave
`sworn testimony regarding the same." (Doc. 47, at 2.)
`However, AT&T does not cite to, or provide, those por-
`tions of Fassett's deposition testimony which would au-
`thenticate each of those exhibits, with two exceptions.
`
`Attached to AT&T's response to the motion for
`summary judgment is Exhibit 4, which is a portion of
`Fassett's deposition testimony. In that portion, the court
`finds that Fassett vouches
`for his signature on the
`"AT&T Master Agreement, MA Reference No. 3 l574."
`See doc. 39, DX 4, Fassett dep., at 58, and DX 3 (Master
`Agreement). Although the parties refer, in deposition, to
`"Exhibit 6" [to the deposition], it is plain that the docu-
`ment in question is the same as Exhibit 3 here.
`
`identified Deposition Exhibit 6 as "AT&T
`Fassett
`Master Agreement,
`[*13]
`" and confirms that his signa-
`ture appears on the first page, "AT&T 005." (Doc. 39,
`DX 4, at 58.) He testified that he signed the document on
`Oct. 10, 2001. Id. This description is totally in accord
`with what is now identified as Exhibit 3. See DX 4, at
`58, and DX 3 (Master Agreement). Thus, the court finds
`Fassett has authenticated Exhibit 3 through his deposi-
`tion testimony.
`
`In addition, Fassett identified Deposition Exhibit 13
`as "AT&T Internet Transport Services Service Order
`Attachment," and confirms that his signature appears on
`the cover sheet, dated May 10, 2002. (Doc. 39, DX 4, at
`74-75.) This description is totally in accord with what is
`now identified as Exhibit 7. See DX 4, at 74-75, and DX
`7 (Service Order Attachment). Thus, the court finds Fas-
`sett has authenticated Exhibit 7 through his deposition
`testimony.
`
`In the portion of Fassett's deposition testimony pro-
`vided to the court, Fassett also refers to Deposition Ex-
`hibit 5, but no identifying information is provided. See
`DX 4, at 46-47. Similarly, a Deposition Exhibit 2 is re-
`ferred to in passing, but no identifying information is
`provided. Id. at 58-59. Likewise, a Deposition Exhibit 9.
`Id. at 70-71. Several [*14] other exhibits were presented
`
`to Fassett, which he did not recall signing. See, e.g. DX
`4, at 72-75.
`
`Thus, the only documents which are authenticated in
`Fassett's deposition testimony, insofar as a portion of it is
`before the court, are Exhibit 3, which is a five page
`document titled "AT&T Master Agreement, MA Refer-
`ence No. 31574," between AT&T and Overdrive, dated
`Oct. 12, 2001, and Exhibit 7, which is a nine page docu-
`ment titled "AT&T Internet Transport Services, Service
`Order Attachment," signed by Ray Fassett (Overdrive)
`and Sandra Brown (AT&T) in May 2002. See DX 4, at
`58, 74-75; DX 3 (Master Agreement), and DX 7 (Service
`Order Attachment).
`
`Although Overdrive refers to Pitagna's deposition
`testimony, doc. 43, at 6-7, AT&T does not rely on her
`testimony in its response to the motion to strike. See
`generally doc. 47.
`
`Overdrive's objections to Exhibits 1, 5-6, 8, and 10-
`14, as "inadmissible hearsay" are well-taken. The court
`finds that Exhibit 3, "AT&T Master Agreement," and
`Exhibit 7, "AT&T lntemet Transport Services, Service
`Order Attachment," are authenticated by Fassett's deposi-
`tion testimony.
`
`IV. SUMMARY
`
`Overdrive's motions to strike are addressed as objec-
`tions [*15]
`to the affidavits and exhibits at issue. The
`objections to Gritchen‘s affidavit are well-taken, thus that
`motion (doc. 42) is granted. Gritchen avers that her affi-
`davit is based upon AT&T's business records, but she
`does not provide a proper foundation for the admissibil-
`ity of these records.
`
`As to Overdrive's second motion (doc. 43), the ob-
`jections to Exhibits 1, 5-6, 8, and 10-14, as "inadmissible
`hearsay" are well-taken. The court finds that Exhibit 3,
`"AT&T Master Agreement," and Exhibit 7, "AT&T
`lntemet Transport Services, Service Order Attachment,"
`are authenticated by Fassett's deposition testimony, and
`the objections to those exhibits are overruled. Thus, that
`motion is granted in part, and denied in part.
`
`IT IS SO ORDERED.
`
`Nov. 21, 2006
`
`/s/ Kenneth S. McHargh
`
`United States Magistrate Judge
`
`Page 4
`
`

`
`EXHIBIT 2
`
`

`
`LEXSEE
`
`Robert P. Baker v. Rio Properties, Inc.
`
`Cancellation No. 29,567
`
`Trademark Trial and Appeal Board
`
`2001 TTAB LEXIS 782
`
`October 24, 2001, Decided
`
`CORE TERMS: summaryjudgment, registrant, cross-motion, hotel, matter oflaw, hospitality, authenticated, misled,
`declaration, deceptiveness, deceptive, traveler, hearsay, deposition, Trademark Rule, registration, deception, guestroom,
`genuine issue of material fact, moving party, misdescriptive, personal knowledge, casino, self-authenticating, conclu-
`sory, consumer, usage, admissible, genuine, authentication
`
`JUDGES:
`
`[*1]
`
`Before Hanak, Bucher and Rogers, Administrative Trademark Judges.
`
`OPINION BY: BUCHER
`
`OPINION:
`
`THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B.
`
`Bucher, Administrative Trademark Judge:
`
`Robert P. Baker, an individual, has filed a petition to cancel Registration No. l,757,490 for the mark RIO SUITE
`HOTEL & CASINO (with the words SUITE HOTEL & CASINO disclaimed apart from the mark as a whole), as shown
`below: [SEE ILLUSTRATION IN ORIGINAL] for "casino and night club services" in International Class 41, and for
`"hotel services operated in conjunction with a casino" in International Class 42. n1 As the ground for cancellation, peti-
`tioner alleges that this mark is deceptive under Section 2(a) of the Trademark Act inasmuch as the majority of the over-
`night accommodations that registrant calls "suites" and rents out to its customers at its Las Vegas Hotel are not actually
`suites.
`
`nl Registration No. l,757,490, issued on March 9, I993, Section 8 affidavit accepted, Section 15 affidavit
`acknowledged.
`
`In its answer, registrant denied the salient allegations of the petition and raised a number of affirmative defenses.
`
`Background
`
`This extra-ordinary litigation grew [*2] out of an overnight stay in a Las Vegas hotel by a Los Angeles attorney,
`Mr. Robert P. Baker (hereinafter petitioner or "Baker"). On March 12, 1997, Baker spent the night at the Rio Suite Ho-
`tel & Casino in Las Vegas, Nevada - which hotel property is owned and operated by Rio Properties, Inc. (hereinafter
`registrant, respondent or "Rio"). Upon his return to California, Baker's written complaint to Rio about his accommoda-
`tions led to more correspondence and then settlement discussions, including Baker's suggestion that in order not to de-
`ceive prospective customers, perhaps Rio should delete the word "Suite" from its name.
`
`Claiming that Baker had raised a claim under the Lanham Act, Rio sued Baker in the United States District Court
`for Nevada, seeking declaratory relief action (hereinafter, the "Nevada Federal Action"). Baker counterclaimed based on
`false advertising under California's consumer protection laws. After two years of litigation, Rio moved to dismiss its
`complaint, depriving the federal court of supplemental jurisdiction over Baker's state counterclaim. Even before dis-
`
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`2001 TTAB LEXIS 782, *
`
`missing the Nevada Federal Action, Rio filed a similar lawsuit in a Nevada state court, in a proceeding [*3] that is still
`pending.
`
`Allegedly fearing never-ending litigation without resolution in the Nevada state forum, Baker then filed the instant
`petition requesting the cancellation of Rio's above-listed federal trademark registration. In spite of an earlier interlocu-
`tory decision of this Board noting with displeasure the "over-litigious conduct" of the parties to this action, the fervor of
`each motion along with the heft of each submission promise much more litigation before this suite issue is resolved.
`
`Current Disputes
`
`This case now comes up on the parties’ cross-motions for summary judgment and related motions. n2 Specifically,
`on August 7, 2000, Rio filed a motion for summary judgment on Baker's allegation of deceptiveness. On September 6,
`2000, Baker filed a brief opposing Rio's motion, moved for summary judgment in his own favor on the ground of de-
`ceptiveness, as pleaded in his petition to cancel, and objected to certain documents submitted in the appendix to regis-
`trant's motion for summary judgment. On September 26, 2000, Rio filed a reply to Baker's opposition to Rio's motion
`and on September 29, 2000, Rio submitted its opposition to Baker's cross-motion for summary judgment. [*4] On Sep-
`tember 29, 2000, Baker filed a motion to strike new evidence submitted by Rio in its reply to Baker's motion for sum-
`mary judgment. Needless to say, each of these motions and objections has been fully briefed.
`
`n2 It appears as if Baker's motion of July 13, 2000 to allow testimonial use of the depositions of Ms. Ax-
`elrod and Ms. Lockshin, which motion was filed before the motions for summary judgment, remains unopposed
`by Rio but has not been acknowledged or acted upon by this Board. Accordingly, we explicitly grant Baker's
`motion for this testimony of June 1998 from the Nevada Federal Action to be submitted as evidence during his
`case in chief. See Nina Ricci S.A.R.L. v. E.T.F. Enter rises Inc. 9 USP 2d 1061 TTAB 1988 rev'd on other
`
`grounds, 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. I989); 37 CFR § 2.l22]f[; and TBMP § 715 - Testimony
`From Another Proceeding.
`
`As evidence in support of its motion for summary judgment, registrant/respondent submitted exhibits including:
`Rio's Annual Report for the SEC (Form l0-K); Rio's king suite floor plan for room 548 (the room occupied by Baker);
`cover letter with [*5] attached awards and recognitions for Rio Suite Hotel and Casino; heading and statement of action
`in Nevada Federal District Court proceeding; photocopy of Baker's Rio folio, having room charges and credit; copy of
`letter from Rio to Ms. Axelrod, another of Rio's unhappy guests; a report by its expert, Leo M. Renaghan, on the rela-
`tionship between the term "suite" and guest room products in U.S.; Baker's responses to Rio's first set of interrogatories;
`a copy of relevant pages of "Dictionary of Travel, Tourism and Hospitality"; and a copy of relevant pages of "Glossary
`of Hospitality Management Terms."
`
`In response, petitioner asserts that registrant is not entitled to summary judgment, but in fact, that petitioner is him-
`self entitled to summary judgment as a mater of law. Petitioner's brief in opposition to registrant's motion for summary
`judgment (and in support of his own cross-motion for summary judgment) is supported by the affidavits of Sheila Cohn,
`Bruce Baltin, Edward Perkins, William Christopher, and Robert P. Baker, and a voluminous appendix of exhibits sub-
`mitted therewith.
`
`Petitioner's objections to documents in appendix
`
`Before addressing the respective motions for [*6] summary judgment, we turn briefly to Baker's objections to
`documents in the appendix to registrant's motion for summary judgment. n3 Baker's motion of September 6, 2000 asks
`us to rule on objections pertaining to the admissibility of nine exhibits under the Federal Rules of Evidence. n4
`
`n3 Rio argues that Baker's objections herein are simply a clever attempt to get around his page limit on a
`brief in opposition to a motion for summary judgment. After considering the arguments on both sides of this
`question, we find it reasonable that these objections were made in a separate brief.
`
`n4 Rio had attached ten exhibits to its motion for summary judgment, and Baker objected to nine of them,
`as follows:
`
`. Exhibit A: Rio's Annual Report for the SEC (Form 10-K), [Baker contends that this exhibit is
`not authenticated; hearsay; conclusory; irrelevant];
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`2001 TTAB LEXIS 782, *
`
`. Exhibit B: Rio's king suite floor plan for room 548, [Baker contends that this exhibit is not au-
`thenticated; hearsay];
`. Exhibit C: Cover letter with attached awards and recognitions for Rio Suite Hotel and Casino,
`[Baker contends that this exhibit is not authenticated; no foundation; opinions of lay witnesses;
`hearsay; conclusory; not best evidence; irrelevant];
`. Exhibit D: Heading and statement of action in Nevada Federal District Court action, [Baker con-
`tends that this exhibit is not authenticated; incomplete];
`. Exhibit E: Photocopy of Baker's room charges and credit, [Baker contends that this exhibit is not
`authenticated; irrelevant];
`. Exhibit F: Copy of letter from Rio to Ms. Axelrod, [Baker contends that this exhibit is not au-
`thenticated; no foundation; conclusory; opinions of lay witnesses];
`. Exhibit G: Report by Leo M. Renaghan on relationship between term "suite" and guestroom
`product in U.S., [Baker contends that this exhibit is not authenticated; author not qualified as an
`expert; merely opinions and conclusions; no foundation; reports of authorities are hearsay and not
`best evidence; statements not made under oath];
`. Exhibit H: Baker's responses to Rio's first set of interrogatories, (No objection];
`. Exhibit 1: Copy of relevant page of "Dictionary of Travel, Tourism and Hospitality," [Baker
`contends that this exhibit is not authenticated; hotel usage of term is irrelevant; conclusory opin-
`ions; authors not shown to be experts];
`. Exhibit J: Copy of relevant page of "Glossary of Hospitality Management Terms," [Baker con-
`tends that this exhibit is not authenticated; hotel usage of tenn is irrelevant; conclusory opinions;
`authors not shown to be experts].
`
`[*7]
`
`As to the authentication of several of these exhibits, we find that the dictionary entry, glossary entry and Rio's An-
`nual Report for the Securities and Exchange Commission (SEC Fonn 10-K) are self-authenticating under Trademark
`Rule 2.l22(e). n5
`
`n5 As to the issue of admissibility of documents in the context of a motion for summary judgment before
`the Board:
`
`"By their qualification as printed publications or official records under Trademark Rule 2.l22(e),
`Baker, the non-moving party, will be able to independently verify the authenticity of the docu-
`ments, and hence, no further evidence of authenticity is required as a condition to the admissibil-
`ity of these documents."
`
`Raccioppi v. Apogee Inc., 47 USPQ2d 1368, l369_(TTAB I998 [.
`
`For those exhibits not self-authenticating under Rule 2.l22(e), we find that the later-filed affidavits cure any prob-
`lems inasmuch as the affiant has asserted personal knowledge of the source thereof:
`
`It is not mandatory, however, that any or all exhibits submitted in connection with a motion for summary
`judgment be self-authenticating and thus qualify as being admissible under Trademark Rule 2. 122(e).
`Rather,
`[*8] documents and other exhibits which are not self-authenticating may be submitted in con-
`nection with a summary judgment motion, pursuant to the provisions of Rule 56(e). To be admissible
`under Rule 56(e), such documents and/or exhibits must be authenticated by and attached to an affidavit
`(or declaration in a Board proceeding) complying with the requirements of Rule 56(e) and the afliant
`must be a person through whom the exhibits could be admitted into evidence. Wright, Miller & Kane,
`Federal Practice and Procedure: Civil 2d Section 2722 (2nd ed. 1983). The requirement of authentication
`as a condition precedent to the admissibility of evidence is satisfied by evidence sufficient to support a
`finding that the matter in question is what the proponent claims. Fed. R. Evid. 901. Thus, in the same
`manner that depositions may be used during the testimony period to introduce documents which are not
`self-authenticating, affidavits or declarations may be used to introduce documents in support of a motion
`for summary judgment, so long as the declarant has personal knowledge of the source thereof...
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`2001 TTAB LEXIS 782, *
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`The source of the information is within the personal knowledge [*9] of the declarant Baker and, thus, it
`has been adequately shown that Exhibit 7 is what opposer claims it to be, i.e., printouts ofinforrnation
`accessed at specified Internet addresses. We find this sufficient to hold the profl°ered printouts admissible
`as evidence in support of opposer's motion for summary judgment. The declarant is not required to have
`personal knowledge of the information set forth in these printouts. He obviously does not have personal
`knowledge of these matters. Instead, the reliability of t