Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA775243
`10/06/2016
`
`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91170452
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Plaintiff
`JIPC Management, Inc.
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`STEVEN E KLEIN
`STOEL RIVES LLP
`900 SW FIFTH AVENUE, SUITE 2600
`PORTLAND, OR 97204-1268
`UNITED STATES
`steven.klein@stoel.com, jere.webb@stoel.com, peggy.hall@stoel.com, dock-
`etclerk@stoel.com, TM-PDX@STOEL.COM, patrick.hartigan@stoel.com
`
`Other Motions/Papers
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`Steven E. Klein
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`steven.klein@stoel.com, peggy.hall@stoel.com, docketclerk@stoel.com,
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`/s Steven E. Klein/
`
`10/06/2016
`
`Attachments
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`91170452 -JIPC Supp Reply Brief and Decl.pdf(990261 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`OPPOSITION NO. 91170452 (Lead)
`
`In the Matter of Trademark Application
`No. 78/575077
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`Published: December 20, 2005
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`Mark: AMERICA’S INCREDIBLE PIZZA
`COMPANY GREAT FOOD, FUN,
`FAMILY & FRIENDS and Design
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`
`
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`CANCELLATION NO. 92043316
`
`In the Matter of Trademark Registration
`No. 2500872
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`Registered: October 23, 2001
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`Mark: INCREDIBLE PIZZA COMPANY and
`Design
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`
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`JIPC MANAGEMENT, INC.,
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`Opposer,
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`
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`v.
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`INCREDIBLE PIZZA CO. INC.,
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`Applicant.
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`
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`JIPC MANAGEMENT, INC.,
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`Petitioner,
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`
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`v.
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`INCREDIBLE PIZZA CO. INC.,
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`Registrant.
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`JIPC MANAGEMENT’S REPLY BRIEF ON ISSUES RESOLVED BY CIVIL ACTION
`AND ISSUES REMAINING FOR DETERMINATION BY THE BOARD
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`88377083.2 0061355-00002
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`

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`Petitioner/Opposer JIPC Management, Inc. (“JIPC”) submits this reply memorandum on
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`the issues determined in the civil action between JIPC and Registrant/Applicant Incredible Pizza
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`Co., Inc. (“IPC”) captioned JIPC Management, Inc. v. Incredible Pizza Co., Inc., Case No. 2:08-
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`cv-04310, in the U.S. District Court for the Central District of California (the “Civil Action”).
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`IPC has failed to demonstrate that the Civil Action determined the questions of whether
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`JIPC is entitled to cancellation of Registration No. 2,500,872 for the mark INCREDIBLE PIZZA
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`COMPANY GREAT FOOD FUN FAMILY & FRIENDS (and design) in connection with
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`restaurant services and to refusal of Application Serial No. 78/575,077 for the mark
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`AMERICA’S INCREDIBLE PIZZA COMPANY GREAT FOOD, FUN, FAMILY & FRIENDS
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`(and design) in connection with franchising services on the grounds of (1) likelihood of
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`confusion with JIPC’s JOHN’S INCREDIBLE PIZZA CO. marks and (2) IPC’s fraud.
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`At the outset it is important to note that IPC does not dispute that the Civil Action:
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`• Determined that JIPC is the Owner of the JOHN’S INCREDIBLE PIZZA CO.
`marks and has standing to assert the same against IPC;
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`• Determined that JIPC does not have unclean hands that would preclude JIPC from
`asserting its marks against IPC; and
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`
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`• Determined that JIPC and IPC did not make concurrent use of their respective
`marks in the same geographic territories prior to 2008.
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`Moreover, IPC concedes that the jury was not asked to, and did not determine:
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`• The validity of IPC’s Registration No. 2,500,872;
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`• Whether IPC’s use of its registered mark in connection with the services it
`covers (restaurant services) is likely to cause confusion; or
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`
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`• Whether IPC’s registration was procured through fraud.
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`Rather, as IPC admits, “the jury’s finding was based solely on the factual issues presented at
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`the first phase of trialnamely, the offering of franchises in and around California and
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`88377083.2 0061355-00002
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`broadcasts of NASCAR events into California.” IPC Supp. Br. at 7 (emphasis added).
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`Despite these concessions demonstrating that the likelihood of confusion issue presented
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`in the Civil Action involved different issues and transactional facts than the likelihood of
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`confusion and fraud issues presented in these Board proceedings, IPC nevertheless attempts to
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`claimfalselythat in the second phase of trial JIPC purportedly raised and the Court
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`purportedly considered and fully determined: the validity of IPC’s Registration, that IPC’s use
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`of its registered mark with restaurant services is not likely to cause confusion and that IPC did
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`not procure its registration through fraud. IPC’s argument is based on a misleading and
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`incomplete characterization of the scope and substance of Phase Two of trial in the Civil Action.
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`As JIPC has shown, the purpose and scope of the second phase of trial was limited to
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`determining three questions: (1) what additional relief, if any, JIPC was entitled to based on the
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`jury’s finding of likelihood of confusion in Phase One; (2) whether IPC could avoid entry of
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`judgment on the jury’s finding of likelihood of confusion, in whole or in part, based on IPC’s
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`affirmative defenses of unclean hands and trademark misuse; and (3) whether JIPC was entitled
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`to an award of exceptional case attorney fees. Those were the only issues raised and addressed
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`in Phase Two. Because none of the Court’s findings on any of these issues precludes the Board
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`from reaching JIPC’s claims in this matter, the Board should proceed with resolving the issue of
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`likelihood of confusion and fraud on the record established by the parties in this action,
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`supplemented by the testimony adduced from Evangelene Franco in the Civil Action.
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`I. ARGUMENT
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`A.
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`JIPC Did Not Assert an Affirmative Claim for Cancellation in Phase Two.
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`IPC attempts to suggest that JIPC raised an affirmative claim for cancellation of IPC’s
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`Registration based on allegations of likelihood of confusion that were separate and apart from the
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`88377083.2 0061355-00002
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`issues of likelihood of confusion determined in Phase One. JIPC did not. JIPC merely asked the
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`Court, pursuant to Fed. R. Civ. P. 54(c), to consider whether the jury’s finding of likelihood of
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`confusion in connection with the offering of franchises in and around California and broadcasts
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`of NASCAR events into California in Phase One was sufficient to merit cancellation of IPC’s
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`Registration as additional relief based on the jury’s verdict. See IPC’s Brief, Declaration of
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`Mary Clapp (“Clapp Decl.”), Ex. 3 (JIPC Proposed Findings of Fact and Conclusions of Law -
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`Second Phase) at ¶¶ 64, 68. Indeed, as the Court expressly noted in its Phase Two opinion,
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`“Plaintiff did not plead a claim for trademark cancellation or request cancellation in its prayer for
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`relief. The Court only discusses the request [for cancellation] in light of Federal Rule of
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`Civil Procedure 54(c), which provides that a Court grant relief to which a party is entitled,
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`even if the party has not demanded that relief.” July 6, 2016 Declaration of Steven E. Klein
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`(“Klein Decl.”) Ex. 12 at 8 n.5 (emphasis added).
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`Indeed, while IPC attempts to misleadingly suggest that JIPC purportedly submitted a
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`claim for cancellation of IPC’s registration based on IPC’s provision of restaurant services under
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`its mark in states such as Missouri and Texas, IPC fails to inform the Board that IPC in fact
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`moved in limine to broadly preclude JIPC from introducing in Phase Two any evidence of
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`IPC’s activities outside of California, Arizona, Nevada, Oregon and Washington,1 which
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`motion was granted by the Court prior to start of the Phase Two trial. See October 6, 2016
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`Reply Declaration of Steven E. Klein (“Klein Reply Decl.”) Exs. 14, 15. Thus, even if IPC
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`could show that JIPC asked the Court to entertain a new independent claim of likelihood of
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`1 As IPC concedes, IPC secured partial summary judgment in the Civil Action on the
`argument that IPC’s use of its marks with restaurant services had not yet given rise to a claim for
`infringement because IPC was not operating (and had not operated) restaurants in any state
`where the use and reputation of JIPC’s marks had penetrated at the time of trial, i.e., California,
`Arizona, Nevada, Oregon and Washington. See JIPC Supplemental Brief at 16-17.
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`88377083.2 0061355-00002
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`confusion in Phase Twowhich IPC cannotIPC has not shown and cannot show that JIPC
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`actually introduced or relied upon any such arguments or evidence at trial. The option to present
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`such a claim would have been precluded under the in limine ruling procured by IPC.2
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`IPC also cites to a reply brief on Phase Two issues filed by JIPC in the Civil Action in an
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`apparent attempt to suggest that JIPC sought to establish in Phase Two that IPC procured its
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`registration by fraud. See IPC’s Brief at 3-4 (quoting Clapp Decl. Ex. 1 at 23). But IPC failed to
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`provide the Board with a copy of either party’s main brief on Phase Two issues. In fact, JIPC’s
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`main brief contains no reference to seeking cancellation for fraud or otherwise. See Klein Reply
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`Decl. Ex. 18 (Dkt. 404). Rather, it was IPC that asserted in its own main brief that “IPC intends
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`to rely on its valid and subsisting trademark registration during the second phase of trial,” for the
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`purposes of asserting that IPC’s registration limited JIPC’s senior rights and claims for
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`infringement and injunctive relief to two cities in California: Victorville and Bakersfield. Klein
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`Reply Decl. Ex. 19 (Dkt. 405) at 16-19. Thus, JIPC’s reply briefharkening back to the Court’s
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`prior ruling that if IPC introduced and relied on its registration, it would be “untenable” and
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`“manifestly unfair” to preclude JIPC from introducing evidence that the registrations were
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`fraudulently procured, see Klein Decl. Ex. 7 at 12made clear that “if Defendants are
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`permitted to rely on their registration in Phase Two, [JIPC would establish that] the only
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`reason Defendants registration issued in October 2001 is because Richard Barsness submitted a
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`2 The limited scope of Phase Two, and recognition that the parties would not be
`introducing additional evidence on any issue other than IPC’s affirmative defenses, was reflected
`in an exchange between the Court and IPC’s counsel on the opening day of the second phase of
`trial. Klein Reply Decl. Ex. 16 at 12-13; see also Klein Decl. Ex. 8 at 2 (“[F]ollowing the jury’s
`return of a verdict, the above-entitled matter came on regularly for a bench trial on Plaintiff’s
`claims for injunctive relief and Defendants’ affirmative defenses.”). While IPC’s counsel
`suggested in this exchange that IPC might call one witness for three minutes on the issue of
`injunctive relief, IPC ultimately did not do so. See Klein Reply Decl. Exs. 16 at 3, 17 at 145.
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`fraudulent statement of use,” Clapp. Decl. Ex. 1 at 23 (emphasis added).
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`IPC also fails to inform the Board that, ultimately, IPC never sought to introduce its
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`Registration into the record and that neither the Registration nor the prosecution history
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`containing the false statements that form the basis of JIPC’s fraud claims in this proceeding was
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`admitted into evidence during the Phase Two trial.3 Indeed, when IPC’s counsel attempted
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`during closing argument to raise the argument that IPC’s Registration acted to limit the
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`geographic scope of JIPC’s rights to two cities in California, JIPC’s counsel objected:
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`MR. DUCKERS: Your Honor, I’m going to object. Their
`registration is not in evidence. It’s not proper argument.
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`THE COURT: Well, counsel can only argue what’s in evidence.
`To the extent that it’s not in evidence, then the argument is not
`proper as the Court reviews the evidence. If I believe that there
`was no evidence on this, then it’s an argument that the Court
`would not consider.
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`Klein Reply Decl. Ex. 17 at 334.
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`
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`In short, the only purpose of Phase Two was to determine the relief JIPC would secure
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`based on the jury’s finding of likelihood of confusion in Phase One, which IPC admits was
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`limited to different claims and transactional facts then presented by JIPC’s claims before the
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`Board. Indeed, while the Court considered in Phase Two whether the jury’s Phase One
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`likelihood of confusion determination required cancellation of IPC’s Registration as additional
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`relief under Fed. R. Civ. P. 54(c), the Court expressly stated that this was the only issue relating
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`to cancellation the Court was addressing. And while JIPC consistently reserved its right to
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`3 IPC’s Registration and prosecution history were listed by IPC on the Phase Two
`proposed Exhibit List as proposed Trial Exhibit No. 456 (together with JIPC’s objections to the
`same). Klein Reply Decl. Ex. 20 at 2, 11. The transcripts from Phase Two trial show that no
`Trial Exhibit No. 456 was ever introduced. Klein Reply Decl. Exs. 16 at 3, 17 at 145-146.
`Likewise, the parties’ post-trial proposed Phase Two stipulated findings of fact makes no
`reference to IPC’s Registration. Klein Reply Decl. Ex. at 21.
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`challenge to its Registration on any grounds available if IPC opened the door, IPC kept the door
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`shut by never attempting to introduce its Registration into evidence.4
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`B.
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`The Court’s Determination Not to Direct Cancellation as Additional Relief Based on
`the Jury’s Verdict of Likelihood of Confusion Does Not Preclude JIPC’s Claims.
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`IPC attempts to suggest that the Court in the Civil Action declined to find that the jury’s
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`finding of likelihood of confusion in Phase One merited cancellation of IPC’s Registration as
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`additional relief under Fed. R. Civ. P. 54(c), it must have been adopting one of two alternative
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`arguments now posited by IPC. IPC, however, omits mention of the primary argument IPC
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`presented in the Civil Action for why the Court should decline to direct cancellation as additional
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`relief: Because the jury’s likelihood of confusion finding was based on different
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`transactional facts. As IPC asserted in its Brief on Phase Two issues:
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`Plaintiff may attempt to argue that Defendants’ registration is not
`valid after the jury’s verdict. However, the jury’s determination
`of likelihood of confusion was based solely on the factual issues
`presented at the first phase of trial, namely (1) the offering of
`franchises in and around California, and (2) broadcasts of
`NASCAR Nationwide Series events (for which the jury and the
`Court found no harm to Plaintiff). The jury was not presented
`with the issue of likelihood of confusion in general, nor any
`evidence about whether Defendants’ operation of its stores in
`Plaintiff’s market area is likely to cause confusion.
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`Klein Reply Decl. Ex. 19 at 17 (footnote omitted) (emphasis added).
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`
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`IPC also argued the difference in transactional facts in Phase Two closing arguments:
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`4 IPC asserts that JIPC “ignores” the holding in B&B Hardware, Inc. v. Hargis Industries,
`Inc., 135 S. Ct. 1293 (2015), that an “adverse decision” could have preclusive effect in other
`cases if a party to the first proceeding does not challenge the decision on appeal. IPC Supp. Br.
`at 11. IPC raises this argument in the context of its attempt to selectively read a single phrase
`from the Court’s Phase Two opinion“that Plaintiff has not established a valid ground for
`cancellation of the trademark”in isolation and in a manner that ignores the Court’s express
`statement that the only question the Court was addressing was whether the jury’s finding of
`likelihood of confusion entitled JIPC to cancellation of IPC’s Registration as additional relief
`under Fed. R. Civ. P. 54(c). The Court’s limited determination does not carry preclusive effect
`here, regardless of whether it qualified as an “adverse decision” that JIPC elected not to appeal.
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`Importantly, Your Honor, the jury in this case was asked whether
`or not the sponsorship of NASCAR and the offer of sale -- offer
`and sale of franchises in California would create a likelihood of
`confusion. They returned the verdict that they did. They weren’t
`asked anything else, and therefore there is no evidence of and
`no finding of likelihood of confusion apart from those two
`specific activities.
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`Klein Reply Decl. Ex. 17 at 334-35 (emphasis added).
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`
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`Given IPC’s emphasis on the difference in transactional facts, it is hardly surprising that
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`the Court concluded that the jury’s verdict did not warrant cancellation of IPC’s Registration as
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`additional relief because “the jury’s verdict only reflects a likelihood of confusion in certain
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`states” and related only to events in those states that occurred in 2008 forward. Klein Decl. Ex.
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`12 at 8. This finding is likewise fully consistent with the Court’s determination in Phase One
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`that the infringement issue to be tried to the jury involved claims and transactional facts that
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`were different from JIPC’s claims for cancellation pending before the Board, Klein Decl. Ex. 7 at
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`11-12, and IPC’s concession that the issues tried were in fact different, IPC Supp. Brief at 7.
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`
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`Nor can IPC rely on the argument that res judicata applies because JIPC allegedly “could
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`have raised” the claims pending before the Board in the Civil Action. As the cases IPC cites
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`demonstrate, res judicata only applies to claims a party could have raised but did not if those
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`claims arose out of the same transactional facts as the claims presented and determined.
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`See Akhenaten v. Najee, LLC, 544 F. Supp. 2d 320, 330 (S.D.N.Y. 2008) (“[A] claim ‘could have
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`been raised’ in an earlier action for res judicata purposes if the two actions involve the same
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`‘nucleus of operative fact.’”); The Urock Network, LLC v. Sulpasso, 115 U.S.P.Q.2d (BNA)
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`1409, 1412 (TTAB 2015) (“[U]nder claim preclusion, a plaintiff is barred from a ‘subsequent
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`assertion of the same transactional facts in the form of a different cause of action or theory of
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`relief.’” (citation omitted)). As IPC expressly concedes, the issue of infringement tried to the
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`jury “was based solely” on factual issues relating to the offering of franchises in and around
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`California and broadcasts of NASCAR racing events into California from 2008 forward; as a
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`result, the claims tried to the jury did not concern, as IPC concedes, “whether IPC’s use of its
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`registered mark in connection with the services it covers (restaurant services) is likely to cause
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`confusion generally” or “whether IPC’s registration was procured by fraud.” IPC Supp. Br. at 7.
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`
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`IPC makes no effort to show either that (1) any of the representations IPC made to the
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`USPTO during prosecution of its application or (2) any of the operative facts that form the
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`nucleus underlying a claim for likelihood of confusion based on IPC’s use of its registered mark
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`with restaurant services are the same as those presented to the jury in the Civil Action. Instead,
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`IPC merely attempts to rely on a recitation of a few categories of evidence that IPC asserts, in
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`conclusory fashion, would be relevant to both the claims before the jury and those pending
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`before the Board. But the test is not whether there is some overlap in the relevant evidence, it is
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`whether the claims tried to the jury arise out of the same common nucleus of operative fact as the
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`claims before the Board. As IPC concedes, they did not. See IPC Supp. Br. at 7; see also
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`February 17, 2010 Order, Opp. No. 91170452 (TTABVUE Doc. 69), at 4 (“The transactional
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`facts for an infringement claim in a district court case and for a likelihood of confusion claim in a
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`Board proceeding are different.”).
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`
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`IPC’s attempt to shoehorn the Court’s finding that the jury’s verdict on the issue of
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`likelihood of confusion tried in Phase One did not merit cancellation of IPC’s Registration as
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`additional relief under Fed. R. Civ. P. 54(c) into one or more alternative legal theories not
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`addressed by the Court also falls flat. For example, IPC suggests that despite the fact that IPC’s
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`Registration was never introduced or admitted into evidence, the Court somehow implicitly ruled
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`that the Registration served to “freeze” JIPC’s territory to the two or three cities in California
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`that IPC contends JIPC was operating in at the time IPC’s Registration issued, under the
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`authority of Enterprise Rent-A-Care Co. v. Advantage Rent-A-Car, Inc., 330 F.3d 1333 (Fed.
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`Cir. 2003), and In re Beatrice Foods Co., 429 F.2d 466 (CCPA 1970). But Enterprise has no
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`relevance to a claim for cancellation by a senior user; it concerns the territory a senior user can
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`assert against a junior registrant in an infringement action. Likewise, Beatrice Foods only
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`concerns allocation of territory in a concurrent use proceeding, which IPC has never pursued
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`(and lacks the grounds to pursue). Moreover, IPC’s argument that the Court somehow implicitly
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`found that IPC’s Registration froze JIPC’s territory to only two or three cities in California is
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`directly contradicted by the Court’s adoption of the jury’s finding that IPC infringed JIPC’s
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`rights in California, Arizona, Nevada, Oregon and Washington. Klein Decl. Ex. 12 at 3.
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`
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`IPC also attempts to argue that the Court somehow implicitly found that JIPC and IPC
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`had been operating in the same geographic territory since 2001, so that JIPC’s admission that it
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`did not have a cause of action for infringement prior to 2008 could be construed as an admission
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`of no likelihood of confusion to support cancellation in 2001, in reliance on Tillamook Country
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`Smoker, Inc. v. Tillamook County Creamery Association, 465 F.3d 1102 (9th Cir. 2006), a case
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`the Court never cited. Again, IPC’s rationale directly contradicts the Court’s express finding on
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`summary judgment that IPC and JIPC operated in separate geographic territories prior to 2008,
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`see generally JIPC’s Supp. Brief at 16-17, which finding IPC does not dispute is binding on
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`the Board. The fact that IPC and JIPC were operating in separate geographic territories prior to
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`2008 renders Tillamook inapposite, as the court’s determination that cancellation was not
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`available in that case was directly grounded on a finding that during the 21-year period in which
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`the plaintiff admitted there was no likelihood of confusion, the parties were not only
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`continuously operating in the same geographic territory, but the plaintiff had “even sold
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`[defendant’s] products in its own gift shop and in its mail-order catalog.” Tillamook, 465 F.3d at
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`1105-07, 1109, 1112-13. Here, JIPC’s admission that it had no action for infringement prior to
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`2008 due to the undisputed absence of geographic overlap could not operate as an admission of
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`no likelihood of confusion for cancellation purposes, where geographic overlap is not required.
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`Finally, to the extent IPC purports to argue that the basis for the Court’s determination
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`that cancellation of IPC’s Registration was not compelled as a grant of additional relief based the
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`jury’s verdict of likelihood of confusion in Phase One is unclear and subject to multiple
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`interpretations, then a finding of preclusion is foreclosed. See Mayer/Berkshire Corp. v.
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`Berkshire Fashions, Inc., 424 F.3d 1229, 1234 (Fed. Cir. 2005) (the circumstances for preclusion
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`“must be certain to every intent.”); see also Stephen Slesinger, Inc. v. Disney Enters., Inc., 702
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`F.3d 640, 646 (Fed. Cir. 2012) (“If there exists a reasonable doubt as to whether an issue was
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`actually decided in the first action, preclusion should not apply in the subsequent action.”).5
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`II. CONCLUSION
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`For the reasons set forth above, JIPC respectfully requests that the Board proceed to
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`determine JIPC’s petition to cancel and notice of opposition on the merits.
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`Respectfully submitted.
`
`STOEL RIVES LLP
`
`
`
`/s Steven E. Klein/
`by: Steven E. Klein, OSB #051165
`760 SW Ninth Avenue, Suite 3000
`Portland, Oregon 97205
`
`
`
`Attorney for Petitioner/Opposer
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`Dated: October 6, 2016
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`5 IPC cites Board of Trustees of the University of Alabama v. Houndstooth Mafia
`Enterprises LLC, 2016 U.S. Dist. LEXIS 21645 (N.D. Ala. Feb. 23, 2016), for a purported rule
`requiring the Board to strictly follow a district court’s “mandate.” IPC Supp. Brief at 10-11. But
`Houndstooth only addressed the Board’s obligations when interpreting and applying the
`judgment of a district court “made while that court is acting as an appellate court reviewing a
`decision of the TTAB” under 15 U.S.C. § 1071(b)(1). Houndstooth, 2016 U.S. Dist. LEXIS
`21645, at *15. It did not address the Board’s ordinary application of claim preclusion to a
`decision in a separate district court action.
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that I served the foregoing JIPC MANAGEMENT’S REPLY
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`BRIEF ON ISSUES RESOLVED BY CIVIL ACTION AND ISSUES REMAINING
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`FOR DETERMINATION BY THE BOARD on the following named persons on the date
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`indicated below by:
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`X mailing with postage prepaid
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`hand delivery
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`facsimile transmission
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`overnight delivery
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`e-mail attachment in PDF format
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`to said persons a true copy thereof, contained in a sealed envelope, addressed to said persons
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`at their last-known address indicated below.
`
`MARY M CLAPP
`CLAPP BUSINESS LAW LLC
`2518 S CAMPBELL AVE
`SPRINGFIELD, MO 65807
`
`Attorney for Incredible Pizza Co., Inc.
`
`DATED: October 6, 2016.
`
`
`
`
`
`
`
`
`
`/s Steven E. Klein/
`Steven E. Klein
`
`
`
`88377083.2 0061355-00002
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`11
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`JIPC MANAGEMENT, INC.,
`
`Opposer,
`
`v.
`
`INCREDIBLE PIZZA CO. INC.,
`
`Applicant.
`
`JIPC MANAGEMENT, INC.,
`
`Petitioner,
`
`v.
`
`INCREDIBLE PIZZA CO. INC.,
`
`Registrant.
`
`OPPOSITION NO. 91170452 (Lead)
`
`In the Matter of Trademark Application
`No. 78/575077
`
`Published:
`
`December 20, 2005
`
`Mark: AMERICA'S INCREDIBLE PIZZA
`COMPANY GREAT FOOD, FUN,
`FAMILY & FRIENDS and Design
`
`CANCELLATION NO. 92043316
`
`In the Matter of Trademark Registration
`No. 2500872
`
`Registered:
`
`October 23, 2001
`
`Mark: INCREDIBLE PIZZA COMPANY and
`Design
`
`REPLY DECLARATION OF STEVEN E. KLEIN IN SUPPORT OF
`JIPC MANAGEMENT'S REPLY BRIEF ON ISSUES RESOLVED BY CIVIL ACTION
`AND ISSUES REMAINING FOR DETERMINATION BY THE BOARD
`
`88621141.1 0061355-00002
`
`1
`
`

`
`I, STEVEN E. KLEIN, declare and say:
`
`1.
`
`I am an attorney with Stoel Rives LLP, counsel to Petitioner/Opposer JIPC
`
`Management, Inc. ("JIPC"). I make this declaration on my personal knowledge.
`
`2.
`
`I was one of the attorneys that represented JIPC in the civil action filed by JIPC
`
`against Incredible Pizza Co., Inc. ("IPC") in in the United States District Court, Central District
`
`of California, and captioned JIPC Management, Inc. v. Incredible Pizza Co., Inc., Case No.
`
`CV08-04310 (the "Civil Action").
`
`3.
`
`Attached hereto as Exhibit 14 is a true and correct copy of IPC's Motion In
`
`Limine to Exclude Evidence re IPC's Activities Outside of California, Arizona, Nevada, Oregon,
`
`and Washington filed by IPC in the Civil Action on February 25, 2011 (Docket #429).
`
`4.
`
`Attached hereto as Exhibit 15 is a true and correct copy of a Minute Order
`
`granting IPC's Motion In Limine to Exclude Evidence re IPC's Activities Outside of California,
`
`Arizona, Nevada, Oregon, and Washington that was entered by the Court in the Civil Action on
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`April 6, 2011 (Docket #456).
`
`5.
`
`Attached hereto as Exhibit 16 is a true and correct copy of excerpts from the
`
`April 18, 2011 transcript of the phase two trial in the Civil Action.
`
`6.
`
`Attached hereto as Exhibit 17 is a true and correct copy of excerpts from the
`
`April 19, 2011 transcript of the phase two trial in the Civil Action.
`
`7.
`
`Attached hereto as Exhibit 18 is a true and correct copy of JIPC's Brief re Second
`
`Phase Issues filed by JIPC in the Civil Action on September 24, 2010 (Docket #404).
`
`88621141.1 0061355-00002
`
`2
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`

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`8.
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`Attached hereto as Exhibit 19 is a true and correct copy of excerpts from IPC's
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`Brief re Issues to be Decided at the Second Phase of Trial, filed by IPC in the Civil Action on
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`September 24, 2010 (Docket #405).
`
`9.
`
`Attached hereto as Exhibit 20 is a true and correct copy of excerpts from the
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`Notice of Lodging of Joint Exhibit List of Phase Two Trial filed on April 11, 2011 in the Civil
`
`Action (Docket #459).
`
`10.
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`Attached hereto as Exhibit 21 is a true and correct copy of excerpts from the
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`Notice of Lodging of Joint Proposed Stipulated Findings of Fact - Phase Two Trial filed on April
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`26, 2011 in the Civil Action (Docket #474).
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`I declare under penalty of perjury under the laws of the United States that the
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`foregoing statements are true and correct to the best of my knowledge.
`
`DATED: October 6, 2016, at Portland, Oregon.
`
`teven Klein
`
`88621141.1 0061355-00002
`
`3
`
`

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`CERTIFICATE OF SERVICE
`
`I hereby certify that I served the foregoing DECLARATION OF STEVEN E. KLEIN
`
`IN SUPPORT OF JIPC MANAGEMENT'S SUPPLEMENTAL BRIEF ON ISSUES
`
`RESOLVED BY. CIVIL ACTION AND ISSUES REMAINING FOR DETERMINATION
`
`BY THE BOARD on the following named persons on the date indicated below by:
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`X mailing with postage prepaid
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`hand delivery
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`facsimile transmission
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`overnight delivery
`
`e-mail attachment in PDF format
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`to said persons a true copy thereof, contained in a sealed envelope, addressed to said persons
`
`at their last-known address indicated below.
`
`MARY M CLAPP
`CLAPP BUSINESS LAW LLC
`2518 S CAMPBELL AVE
`SPRINGFIELD, MO 65807
`
`Attorney for Incredible Pizza Co., Inc.
`
`DATED: October 6, 2016.
`
`/s Steven E. Klein/
`Steven E. Klein
`
`88621141.1 0061355-00002
`
`4
`
`

`
`Case 2:08-cv-04310-CBM-PLA Document 429 Filed 02/25/11 Page 1 of 9 Page ID #:9483
`
`Gary J. Lorch
`GORDON & REES
`633 West Fifth Street 49th Floor
`Los Angeles, CA 90071
`213-576-5000
`Fax: 213-680-4470
`Email: glorch@gordonrees.com
`
`Fredric A. Cohen
`CHENG COHEN LLC
`311 North Aberdeen Street Suite 400
`Chicago, IL 60607
`Phone: 312-243-1701
`Fax: 312-277-3961
`Email: fredric.cohen@chengcohen.com
`
`Attorneys for Incredible Pizza Co., Inc.; and
`Incredible Pizza Franchise Group, LLC
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`JIPC Management, Inc.
`
`Case No. CV08-04310 CBM (PLAx)
`
`Plaintiff,
`
`v.
`
`Incredible Pizza Co., Inc.; Incredible
`Pizza Franchise Group, LLC; and CJM
`Racing, LLC
`
`Defendants.
`
`IPC’S MOTION IN LIMINE TO
`EXCLUDE EVIDENCE RE IPC’S
`ACTIVITIES OUTSIDE OF
`CALIFORNIA, ARIZONA, NEVADA,
`OREGON, AND WASHINGTON
`
`Hon. Consuelo B. Marshall
`
`Date: t.b.d.
`Time: t.b.d.
`Ctrm: Spring Street 2
`
`IPC’S MOTION IN LIMINE TO EXCLUDE EVIDENCE RE IPC’S ACTIVITIES
`OUTSIDE OF CALIFORNIA, ARIZONA, NEVADA, OREGON, AND WASHINGTON
`Klein Reply Decl. Ex. 14
`Page 1 of 9
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`Case 2:08-cv-04310-CBM-PLA Document 429 Filed 02/25/11 Page 2 of 9 Page ID #:9484
`
`I.
`
`Introduction
`
`Defendants Incredible Pizza Co., Inc. and Incredible Pizza Franchise Group, LLC
`
`(collectively, “IPC”) hereby move that the Court exclude evidence sought to be
`
`introduced by Plaintiff JIPC Management, Inc. (“Plaintiff”) regarding IPC’s activities
`
`outside of California, Arizona, Nevada, Oregon, and Washington. On January 25, 2011,
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`the Court held a status conference wherein the Court instructed the Parties to limit the
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`evidence to be presented during the second phase of trial. Plaintiff’s proposed exhibit list
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`contains a number of exhibits that have no bearing on the issues before the Court during
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`the second phase of trial and that pertain solely to IPC’s activities outside the only
`geographic area relevant to this case.1
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`Because these exhibits have no relevance to the
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`issues to be decided at the second phase of trial and would result in a waste of the Court’s
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`time and resources, the Court should exclude these exhibits.
`
`II.
`
`Background
`
`At the summary judgment stage, the Court concluded that it is “established for
`
`purposes of trial” that: (1) Plaintiff’s market penetration does not extend into any
`
`states in which IPCs currently operates restaurants; (2) Plaintiff is not entitled to
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`injunctive relief with respect to IPC’s use of the IPC mark in those states; (3) Plaintiff
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`has not suffered damage as a result of IPC’s use of its mark in those states; and (4)
`Plaintiff has not lost any sales as a result of IPC’s conduct.2
`
`[See Doc. 188 pp. 27-30]
`
`The