Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA340906
`ESTTA Tracking number:
`04/05/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91193594
`Defendant
`Backcountry.com, Inc.
`GREGORY M. HESS
`PARR BROWN GEE & LOVELESS, PC
`185 S STATE ST STE 800
`SALT LAKE CITY, UT 84111-1549
`UNITED STATES
`ghess@parrbrown.com
`Opposition/Response to Motion
`Gregory M. Hess
`ghess@parrbrown.com
`/Gregory M. Hess/
`04/05/2010
`Opposition to Opposer's Motion for Sanctions and in Support of Applicant's
`Motion to Strike.pdf ( 84 pages )(1415014 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91193594
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`Mark: HUCKN
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`
` ROLL
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`Serial No. 77/743,536
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`| | | | | | | | |
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`NSM RESOURCES CORPORATION,
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`Opposer,
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`v.
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`BACKCOUNTRY.COM, INC.,
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`Applicant.
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`MEMORANDUM IN OPPOSITION TO OPPOSER’S MOTION FOR
`SANCTIONS AND IN SUPPORT OF APPLICANT’S MOTION TO STRIKE
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`Applicant Backcountry.com, Inc. respectfully submits this Memorandum in Opposition to
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`Opposer’s Motion for Sanctions and in Support of Applicant’s Motion to Strike.
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`INTRODUCTION
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`Opposer’s Motion for Sanctions is frivolous and defamatory. As shown below, every
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`allegation of Applicant’s counterclaims that Opposer challenges with specific factual assertions or
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`other arguments was well-supported and in many instances is proven by one of the exhibits to
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`Opposer’s own motion. Opposer’s other accusations of alleged wrongdoing by Applicant and its
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`counsel are equally baseless. What Opposer has essentially done is turn an incomplete, evasive,
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`improper response to Applicant’s counterclaims into a groundless motion for sanctions under Rule
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`11 of the Federal Rules of Civil Procedure. Opposer’s Motion for Sanctions should be denied, and
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`Opposer should be warned that, even though Opposer is acting pro se, frivolous motions and
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`baseless attacks against the opposing party and its counsel will not be tolerated.
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`In addition, because of the baseless, defamatory statements that Opposer’s Motion for
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`Sanctions makes about Applicant and its counsel, the motion should stricken from the record
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`pursuant to Rule 12(f) of the Federal Rules of Civil Procedure. The Board should also strike
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`Opposer’s Motion for Sanctions under Rule 8(b) of the Federal Rules of Civil Procedure, because
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`Opposer’s motion purports to respond to the allegations of Applicant’s counterclaims, but the
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`response is incomplete, evasive, in some instances directly contradicted by Opposer’s own motion.
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`ARGUMENT
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`I.
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`OPPOSER’S MOTION FOR SANCTIONS IS FRIVOLOUS AND DEFAMATORY.
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`Opposer apparently argues that the Board should sanction Applicant and its counsel under
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`Rule 11 of the Federal Rules of Civil Procedure for four reasons: (1) “Backcountry and Parr Brown
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`have no standing to make these claims [to cancel U.S. Registration No. 3,310,854 for HUCK
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`DOLL],” (2) Applicant and its counsel have purportedly made “false statements” in Applicant’s
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`counterclaims, “knowingly support[ed] their false statements with misleading information,” and
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`withh[eld] true evidence that portrays material evidence to the contrary;” (3) Applicant and its
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`counsel “have attempted deliberately to defraud NSM Resources and Barclay;” and (4) Applicant’s
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`counsel “made false and misleading statements about NSM Resources and Barclay to the USTPO in
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`order to attempt to deny and rebuke the rights of the Registration.” (Motion for Sanctions, pp. 1-2,
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`8-9.) Each of these assertions is baseless and should be rejected.
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`A. Motions for Sanctions under Rule 11 Are Not to Be Used for Improper Purposes.
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`Rule 11 of the Federal Rules of Civil Procedure provides for the imposition of sanctions for
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`violations of the certification required for each filing, namely, that “to the best of the person’s
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`knowledge, information, and belief, formed after reasonable inquiry under the circumstances:
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`(1) it is not being presented for any improper purpose, such as to harass,
`cause unnecessary delay, or needlessly increase the cost of litigation;
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`(2) the claims, defenses, and other legal contentions are warranted by
`existing law or by a nonfrivolous argument for extending, modifying, or
`reversing existing law or for establishing new law;
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`(3) the factual contentions have evidentiary support or, if specifically so
`identified, will likely have evidentiary support after a reasonable opportunity
`for further investigation or discovery; and
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`(4) the denials of factual contentions are warranted on the evidence or, if
`specifically so identified, are reasonably based on belief or a lack of
`information.
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`Fed. R. Civ. P. 11(b); see also Fed. R. Civ. P. 11(c)(1) (providing for sanctions).
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`Motions for sanctions under Rule 11 are not to be employed, however, “as a discovery device
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`or to test the legal sufficiency or efficacy of allegations in the pleadings” or “to emphasize the merits
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`of a party’s position, to exact an unjust settlement, to intimidate an adversary into withdrawing
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`contentions that are fairly debatable, to increase the costs of litigation, to create a conflict of interest
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`between attorney and client, or to seek disclosure of matters otherwise protected by the attorney-
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`client privilege or the work-product doctrine.” Advisory Committee’s Notes, 1993 Amendments to
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`Rule 11(b) and (c), 146 F.R.D. 401, 590; see, e.g., Wartsila NSD North America, Inc. v. Hill Intern.,
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`Inc., 315 F.Supp.2d 623, 627-30 (D.N.J. 2004). Moreover, “[a]s under former Rule 11, the filing of
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`a motion for sanctions is itself subject to the requirements of the rule and can lead to sanctions,”
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`Advisory Committee’s Notes, 1993 Amendments to Rule 11(b) and (c), 146 F.R.D. at 590, and a
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`party who is acting pro se has the same obligations under Rule 11 and is subject to the same
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`sanctions under Rule 11 as parties represented by counsel.1 Fed. R. Civ. P. 11(a); see also Business
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`Guides, Inc. v. Chromatic Comms. Enterprises, Inc., 498 U.S. 533, 540-543 (1991).
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`B. Opposer’s Argument that Applicant Lacks Standing Is Frivolous.
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`Opposer’s argument that “Backcountry and Parr Brown have no standing” to assert claims
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`1In fact, Opposer filed its Motion for Sanctions in blatant violation of Rule 11(c)(2). Rule 11(c)(2) provides
`that motions for sanctions are not to be filed until at least 21 days after they are served. Fed. R. Civ. P.
`11(c)(2); Advisory Committee’s Notes, 1993 Amendments to Rule 11(c), 146 F.R.D. at 591 (“The motion for
`sanctions is not, however, to be filed until at least 21days . . . after being served”). The reason for this rule is
`to give the alleged violator time to address the claims before they are made public. See id. Opposer violated
`Rule 11(c)(2) by filing its Motion for Sanctions simultaneously with its service of the motion on Applicant.
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`for cancellation of U.S. Registration No. 3,310,854 for HUCK DOLL is frivolous. Applicant clearly
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`has standing because Opposer cited that registration as a basis for opposing Applicant’s HUCKN
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`ROLL application. See Notice of Opposition, pp. 1-3. “A counterclaimant's standing to cancel a
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`pleaded registration is inherent in its position as defendant in the original proceeding.” TBMP §
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`309.03(b) (citing multiple cases). Even the most perfunctory research would have shown Opposer
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`that Applicant has standing to assert its counterclaims for cancellation. See id. Moreover, the law
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`firm that represents Applicant is not a party that needs standing in these proceedings.
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`C. Opposer’s Assertions That Applicant and Its Counsel Made False Statements and
`Engaged in Other Misconduct Are Baseless and Defamatory.
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`Opposer’s Motion for Sanctions contains a jumble of conclusory assertions of purported
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`dishonesty and other wrongdoing by Applicant and its counsel. All of those assertions are baseless.
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`1. Opposer’s assertion that Applicant and its counsel made false statements in the
`counterclaims, used misleading information, and withheld evidence is baseless.
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`Opposer accuses Applicant and its counsel of making “false statements” in the Applicant’s
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`counterclaims, “knowingly support[ing] their false statements with misleading information,” and
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`withholding true evidence that portrays material evidence to the contrary . . . .” (Motion for
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`Sanctions, pp. 1-2.) These conclusory assertions are baseless and defamatory.
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`The only allegations of Applicant’s counterclaims as to which Opposer attempts to respond
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`with specific facts or arguments are paragraphs 3, 4, 5, 20, 31, 32, 33, 35, 36. Every one of those
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`allegations, however, was well-supported and in many instances is proven by an exhibit to
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`Opposer’s own motion. Exhibit 1 to this memorandum contains Applicant’s specific response to
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`each of Opposer’s challenges. With respect to six of them, Opposer provides no support whatsoever
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`for its arguments other than Opposer’s own unsupported assertions . (Exhibit 1 hereto, pp. 1-2,
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`responses regarding ¶¶ 3, 4, 5, 20, 31, and 32.) For the remaining four challenges, Opposer’s own
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`exhibits establish the truth of the corresponding allegation of the counterclaims. (Exhibit 1.)
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`Whatever additional facts Opposer may claim are relevant, such as additional portions of emails,
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`does not change the fact that every single one of them was true and was fairly stated in the
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`Counterclaims.
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`Opposer also claims that “NSM Resources has never defrauded, and certainly not the
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`USPTO,” and “NSM Resources has always made bona fide use of its Registration in commerce,”
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`and “NSM Resources has never abandoned its Registration.” In addition to the fact that
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`Backcountry.com has support for its allegations, 2 it is clear from Opposer’s motion that Opposer
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`does not fully understand the grounds for Applicant’s counterclaims. See Opposer’s Motion for
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`Sanctions, p. 9; Answer and Counterclaims, ¶¶ 53-64. It is not Applicant’s obligation to instruct
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`Opposer about trademark law, and Rule 11 is not a proper means of challenging the sufficiency of
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`Applicant’s counterclaims or of reacting to what Opposer does not understand about them. See
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`Advisory Committee’s Notes, 1993 Amendments to Rule 11(b) and (c), 146 F.R.D at 590.
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`2. Opposer’s conclusory assertion that Applicant and its counsel “have
`attempted deliberately to defraud” Opposer and its president is baseless.
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`Opposer’s Motion for Sanctions makes no attempt to explain its assertion that Applicant and
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`its counsel “have attempted deliberately to defraud NSM Resources and Barclay,” Motion for
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`Sanctions, p. 9, let alone support it with any facts, evidence, or analysis. In fact, it is not apparent
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`whether Opposer understands the meaning of the word “defraud.” See id. Opposer appears to tie
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`that assertion to its assertion that Applicant has tried to “usurp the goodwill” of Opposer’s HUCK
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`DOLL mark, see id., presumably by using the mark HUCKN ROLL and seeking to register it.
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`Whatever point Opposer is trying to make, Opposer does not provide a single example of a
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`purported misrepresentation that Applicant or its counsel supposedly made to NSM or its president
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`2See, e.g., Letter of June 4, 2009 and Attachment 3 thereto, included in Exhibit B to Opposer’s Motion for Sanctions.
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`in an effort to “defraud” either of them, let alone provide any evidentiary support for any such
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`allegation. The Board should therefore reject Opposer’s baseless, conclusory assertion.
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`3. Opposer’s assertion that Applicant and its counsel “made false and
`misleading statements to the USPTO” is baseless.
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`The Board should also reject Opposer’s baseless assertion that Applicant and its counsel
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`“made false and misleading statements about NSM Resources and Barclay to the USTPO in order to
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`attempt to deny and rebuke the rights of the Registration.” (Motion for Sanctions, p. 9.) Opposer
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`appears to refer to the declaration required when a party files a trademark application or amendment
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`with the PTO, namely, that “to the best of his/her knowledge and belief no other person, firm,
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`corporation, or association has the right to use the mark in commerce, either in the identical form
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`thereof or in such near resemblance thereto as to be likely, when used on or in connection with the
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`goods/services or [sic] such other person to cause confusion, or to cause mistake, or to deceive.” Id.,
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`p. 8. Opposer appears to claim that such declaration was false in connection with a July 7, 2009
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`Preliminary Amendment to the HUCKN ROLL application because (1) Applicant and its counsel
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`knew about Opposer’s HUCK DOLL registration, (2) Backcountry “knew NSM Resources would
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`have an issue with the ‘huckn roll™’ website,” and (3) Applicant’s counsel allegedly “requested that
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`[Opposer’s president] send Backcountry a license agreement for the use of ‘huckn roll™’.”3 Id.
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`Those assertions do not support Opposer’s accusation that the declaration submitted with the
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`July 7, 2009 Preliminary Amendment was “false and misleading.” While Applicant and its counsel
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`knew about Opposer’s claim with respect to the HUCK DOLL mark before the July 7, 2009
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`3Contrary to Opposer’s assertion, Applicant’s counsel did not request that Opposer send Backcountry a
`“license agreement,” nor did the idea of a “license agreement” originate with Applicant’s counsel. Opposer
`first contacted Applicant claiming that Applicant needed a license from Opposer to use HUCKN ROLL on
`Applicant’s website. (Affidavit of Robert Bethke, attached as Exhibit 2, ¶¶ 3-4.) Applicant’s representative
`asked Opposer to send “something in writing” so that Applicant could discuss it. Opposer then sent Applicant
`a “formative license agreement” by email. (Affidavit of Robert Bethke, ¶ 5 and Exhibit A thereto.)
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`Preliminary Amendment (see Letter of June 4, 2009, attached as part of Exhibit B to Opposer’s
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`Motion for Sanctions), and Opposer had complained to Backcountry about the www.hucknroll.com
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`website before July 7, 2009, those facts do not come remotely close to foreclosing the good faith
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`belief and assertion that there is no likelihood of confusion between the mark HUCK DOLL for toys
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`and accessories and the mark HUCKN ROLL for online retail store services featuring high quality
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`mountain biking equipment bearing third-party trademarks. (See Letter of June 4, 2009, part of
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`Exhibit B to Opposer’s Motion for Sanctions.) Indeed, the PTO examiner did not even raise the
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`HUCK DOLL registration as an issue in connection with Applicant’s HUCKN ROLL application
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`before it was published for opposition, and rightly so. See Exhibit 3 hereto.
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`Thus, Opposer’s assertion about alleged misrepresentations to the USPTO and Opposer’s
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`associated request for sanctions is baseless. At a bare minimum, Applicant’s longstanding
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`contention that there is no likelihood of confusion between HUCK DOLL for toys and accessories
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`and HUCKN ROLL for retail store services featuring quality cycling products is “fairly debatable.”
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`Advisory Committee’s Notes, 1993 Amendments to Rule 11(b) and (c), 146 F.R.D. at 590. Indeed,
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`Applicant fully expects to prevail on the merits of Opposer’s opposition to the HUCKN ROLL
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`application. Furthermore, Opposer’s Motion for Sanctions is not even a proper vehicle for
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`challenging the July 9, 2009 Preliminary Amendment declaration filed with the PTO, see Fed. R.
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`Civ. P. 11, to say nothing of the fact that Opposer falls far short of establishing anything improper
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`about the declaration.
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`In a word, Opposer’s Motion for Sanctions is frivolous. As noted above, Rule 11 was never
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`intended to be used “to test the legal sufficiency or efficacy of allegations in the pleadings,” “to
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`emphasize the merits of a party’s position, to exact an unjust settlement, [or] to intimidate an
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`adversary into withdrawing contentions that are fairly debatable . . . .” Advisory Committee’s
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`Notes, 1993 Amendments to Rule 11(b) and (c), 146 F.R.D. at 590. Indeed, “the allegations in the
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`present motion are untenable, misplaced, [and] inappropriate for a Rule 11 motion . . . .” Wartsila
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`NSD North America, Inc. v. Hill Intern., Inc., 315 F. Supp. 2d 630. Accordingly, the Board should
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`deny Opposer’s Motion for Sanctions and warn Opposer that, notwithstanding its pro se status, it too
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`must comply with Rule 11, and baseless motions and unfounded accusations will not be tolerated.
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`II.
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`THE BOARD SHOULD STRIKE OPPOSER’S MOTION FOR SANCTIONS
`BECAUSE IT IS DEFAMATORY AND BECAUSE IT VIOLATES RULE 8(B).
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`The denial of Opposer’s Motion for Sanctions is not enough. The Board should also strike
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`Opposer’s motion from the record in these proceedings for two reasons: (1) Opposer’s motion
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`contains groundless, defamatory accusations against Applicant and its counsel; and (2) Opposer’s
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`motion constitutes an incomplete, evasive, and improper response to Applicant’s counterclaims.
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`A. The Board Should Strike Opposer’s Defamatory Motion for Sanctions under Rule 12(f).
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`Rule 12(f) of the Federal Rules of Civil Procedure authorizes the Board to strike a party’s
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`filing or any portion of it because it contains “immaterial, impertinent, or scandalous matter.” Fed.
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`R. Civ. P. 12(f); see also 37 C.F.R. § 2.116(a) (“Except as otherwise provided, and wherever
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`applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by
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`the Federal Rules of Civil Procedure”). The basis for Rule 12(f) is that no person appearing before a
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`court or this Board should be “subjected to scandalous or defamatory material submitted under the
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`guise of a properly pleaded court [or Board] document.” In re Gitto Global Corp., 422 F.3d 1, 12
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`(1st Cir. 2005) (quoting In re Phar-Mor, Inc., 191 B.R. 675, 678 Bankr. N. D. Ohio 1995)).
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`“Although a motion to strike generally is disfavored because it seeks an extreme remedy, a
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`court [or the Board] has ‘liberal discretion’ to strike such filings as it deems appropriate under Rule
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`12(f).” Pigford v. Veneman, 215 F.R.D. 2, 4 (D.D.C. 2003) (quoting Stanbury Law Firm v. IRS, 221
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`F.3d 1059, 1063 (8th Cir.2000)); see also 2 Moore's Federal Practice § 12.37[1] at 12-93 to 12-94
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`(3d ed.2002). Striking such filings serves “to purge the [Board’s] files and protect the person who is
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`the subject of the allegations.” Wright & Miller, Federal Practice and Procedure; Civil 3d, § 1382,
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`at 467; accord In re Gitto, 422 F.3d at 12. “[T]hese bases for removing material from the public eye
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`focus not just on the impact of the material on a person's reputation,” however, “but also on the role
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`of the material in the [Board’s] records.” In re Gitto, 422 F.3d at 12. That is, “immaterial,
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`impertinent, or scandalous matter” also confuses the issues and wastes everyone’s time.
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`Courts have exercised the power to strike defamatory statements in circumstances similar to
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`this one. For example, in In re Johnson, 236 B.R. 510 (D.D.C.1999), the court struck from the
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`record a party’s unfounded assertion that the bankruptcy trustee was a "liar." Id. at 523. The
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`bankruptcy trustee had a right not to be “subjected to scandalous or defamatory material submitted
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`under the guise of a properly pleaded court document.” In re Gitto, 422 F.3d at 12. Moreover, in
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`Intex Recreation Corp. v. Team Worldwide Corp., 390 F.Supp.2d 21 (D.D.C. 2005), the court struck
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`a party’s affirmative defense to a claim of patent infringement, where the affirmative defense was
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`based on the unsupported allegation that the patent holder had made misrepresentations to the patent
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`examiner. Id. at 24-27. Courts in other cases have exercised the power to strike other unfounded,
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`offensive accusations against parties or counsel. See Pigford, 215 F.R.D. at 4 (court stuck party’s
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`unfounded accusations that attorney was racist); Alexander v. FBI, 186 F.R.D. 21, 53 (D.D.C.1998)
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`(court struck unfounded accusation that attorney had "threatened Plaintiffs' counsel and family").
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`In this case, Opposer’s groundless assertions that Applicant and its counsel made “false
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`statements” in the counterclaims, “knowingly” supported them “with misleading information,”
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`withheld evidence, “attempted deliberately to defraud NSM Resources and Barclay,” and made
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`“false and misleading statements to the USPTO,” are not only baseless, see Section I.B., supra, they
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`are defamatory and “scandalous” within the meaning of Rule 12(f). See Intex Recreation Corp. v.
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`Team Worldwide Corp., 390 F.Supp.2d at 24-27 (unfounded accusation that party had made
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`misrepresentations to the USPTO); In re Johnson, 236 B.R. at 523 (unfounded claim that bankruptcy
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`trustee was a “liar” stricken). Indeed, the mere filing of a baseless Rule 11 motion is defamatory and
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`“scandalous” within the meaning of Rule 12(f), because a Rule 11 motion constitutes an accusation
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`of dishonesty and wrongdoing. See Fed. R. Civ. P. 11(c). A company’s reputation for honesty is
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`vital, and a law firm’s or an attorney’s reputation is his or her most important asset. Opposer’s
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`defamatory Motion for Sanctions should therefore be stricken from the record.
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`B. The Board Should Strike Opposer’s Motion for Sanctions Because It Violates Rule 8(b).
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`If that were not enough, Opposer’s Motion for Sanctions should be stricken for another
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`reason. Rule 8(b)(1) of the Federal Rules of Civil Procedure provides that “[i]n responding to a
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`pleading, a party must . . . (B) admit or deny the allegations asserted against it by an opposing
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`party.” Rule 8(b)(2) provides that “[a] denial must fairly respond to the substance of the allegation.”
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` Moreover, Rule 8(b)(4) provides that “[a] party that intends in good faith to deny only part of an
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`allegation must admit the part that is true and deny the rest.” Opposer’s Motion for Sanctions
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`purports to respond to each of the allegations Applicant’s counterclaims but violates the
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`requirements of Rules 8(b)(1), 8(b)(2), and 8(b)(4). It should therefore be stricken, and Opposer
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`should be required to provide a complete, non-evasive response to allegations of the counterclaims.
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`1. The Board can strike a pleading or portions of it for violating Rule 8(b).
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`A party’s violations of Rule 8(b), such as failure to “admit or deny the allegations” of various
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`paragraphs of a claim, provides grounds for striking all or part of the pleading. Village of Arlington
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`Heights Police Pension Fund v. Poder, 1989 WL 75189 at *1-*2 (N.D. Ill. 1989) (copy attached as
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`Exhibit 4) (striking various nonresponsive paragraphs); see also U.S. v. Carney, 2005 WL 4135397
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`at *3-*4 (W.D. Tex. 2005) (copy attached as Exhibit 5) (magistrate’s recommendation that
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`defendants’ response be stricken for failure to admit or deny the allegations of the complaint); U.S.
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`v. Schiefen, 926 F. Supp. 877, 880-881 (D.S.D.1995) (striking nonresponsive answer). Moreover,
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`the fact that a party is acting pro se does not relieve it of the obligation to comply with Rule 8(b).
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`See S.E.C. v. Randy, 1995 WL 616788, at *4 (N.D. Ill. 1995) (copy attached as Exhibit 6) (striking
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`the pro se defendants’ answers because they “are unresponsive and do not serve to narrow the issues
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`of this litigation” and ordering pro se defendants to submit answers that complied with Rule 8(b)).
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`2. Opposer’s responses to the allegations of Applicant’s counterclaims are
`incomplete, evasive, and improper.
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`In this case, the Board should strike Opposer’s Motion for Sanctions because it purports to
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`respond to the allegations of Applicant’s counterclaims but does not comply with Rules 8(b)(1)
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`8(b)(2), or 8(b)(4) of the Federal Rules of Civil Procedure.
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`a. Opposer fails to admit or deny numerous allegations.
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`Nearly half of Opposer’s responses to the allegations of Applicant’s counterclaims consist of
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`evasive refusals to respond to the substance of them. (See Opposer’s Motion for Sanctions, “Reasons
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`the Counterclaims Have No Basis,” ¶¶ 6-18, 21-25, 27-30, 37-38, 44-45, 47-49, 53, 58, and 62.)
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`Opposer’s assertion that an allegation “has no relevance” (¶¶ 6-17, 27-30, 38, 44-45, 47, 53, 58, 62)
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`or a bare declaration that Opposer “has no reason to admit or deny” an allegation (¶¶ 18, 21-25, 37,
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`48, 49) is not a proper basis for refusing to admit or deny the allegation. See Fed. R. Civ. P. 8(b).
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`b. Opposer denies allegations that its own exhibits show are true and provides evasive
`or confusing responses to other allegations.
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`In addition, Opposer flatly denies some of the allegations of Applicant’s counterclaims that
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`the exhibits to Opposer’s own filing or the statements made after the denial show are true. These
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`include paragraphs 20, 31, 33, 34, 35, 36, and 39. (See Exhibit 1 hereto) Furthermore, Opposer
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`provides evasive or confusing responses to various other allegations of Applicant’s counterclaims,
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`including paragraph 5, 40, 41, 42, and 43. Opposer’s responses do not comply with Rule 8(b).
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`CONCLUSION
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`Opposer’s Motion for Sanctions is frivolous and defamatory. Every allegation of Applicant’s
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`counterclaims was well-supported and, in some instances, established by the exhibits to Opposer’s
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`own motion. Moreover, Opposer’s Motion for Sanctions contains a jumble of conclusory assertions
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`of wrongdoing purportedly committed by Applicant and its counsel, and every one of the assertions
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`is baseless and defamatory. Furthermore, Opposer’s Motion for Sanctions purports to respond to the
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`allegations of Applicant’s counterclaims but in numerous instances evades the substance of the
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`allegations or denies facts that are established by Opposer’s own motion. Opposer’s Motion for
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`Sanctions should therefore be stricken from the record under Rules 8(b) and 12(f) of the Federal
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`Rules of Civil Procedure. For these reasons, Applicant respectfully requests that Opposer’s Motion
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`for Sanctions be denied, that Applicant’s Motion to Strike the Opposer’s motion be granted, and that
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`Opposer be warned that baseless motions and groundless accusations will not be tolerated.
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`Dated: April 5, 2010.
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`PARR BROWN GEE & LOVELESS, P.C.
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`/s/Gregory M. Hess/ *
`Attorneys for Applicant
`185 S. State Street, Suite 800
`Salt Lake City, Utah 84111
`Telephone: (801) 532-7840
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` 12
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`

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`EXHIBIT 1
`TO MEMORANDUM IN OPPOSITION
`TO MOTION FOR SANCTIONS AND
`IN SUPPORT OF APPLICANT'S
`MOTION TO STRIKE
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`EXHIBIT(cid:3)1(cid:3)
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`EXHIBIT(cid:3)1(cid:3)
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`EXHIBIT 1
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`(cid:3) (cid:3) (cid:3) (cid:3) (cid:3) (cid:3) (cid:3) (cid:3) (cid:3) (cid:3) (cid:3) (cid:3) (cid:3) (cid:3) (cid:3)
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`

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`p Backcountry's(cid:3)Allegation
`3 Backcountry(cid:3)began(cid:3)using(cid:3)the(cid:3)HUCKN(cid:3)ROLL(cid:3)mark(cid:3)
`for(cid:3)[the(cid:3)listed](cid:3)services(cid:3)on(cid:3)May(cid:3)21,(cid:3)2009.
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`PURPORTED(cid:3)RULE(cid:3)11(cid:3)VIOLATIONS
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`NSM's(cid:3)Contention
`Backcountry(cid:3)relies(cid:3)on(cid:3)a(cid:3)Copyright(cid:3)date(cid:3)of(cid:3)
`2003(cid:882)2004(cid:3)on(cid:3)the(cid:3)“huckn(cid:3)roll™”(cid:3)website(cid:3)
`which(cid:3)creates(cid:3)a(cid:3)discrepancy(cid:3)with(cid:3)regards(cid:3)to(cid:3)
`the(cid:3)date(cid:3)of(cid:3)first(cid:3)use(cid:3)supplied(cid:3)in(cid:3)claim(cid:3)[¶](cid:3)3
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`NSM's(cid:3)Support
`None
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`4 Backcountry(cid:3)denies(cid:3)any(cid:3)likelihood(cid:3)of(cid:3)confusion(cid:3)
`between(cid:3)HUCK(cid:3)DOLL(cid:3)and(cid:3)HUCKN(cid:3)ROLL.(cid:3)(cid:3)“NSM(cid:3)
`has(cid:3)nevertheless(cid:3)filed(cid:3)its(cid:3)opposition(cid:3)to(cid:3)
`Backcountry’s(cid:3)mark,(cid:3)and(cid:3)Backcountry(cid:3)therefore(cid:3)
`files(cid:3)this(cid:3)counterclaim.”
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`[T]he(cid:3)third(cid:3)sentence(cid:3)of(cid:3)claim(cid:3)(cid:3)[¶](cid:3)4(cid:3)appears(cid:3)to(cid:3)
`explain(cid:3)that(cid:3)Backcountry(cid:3)has(cid:3)no(cid:3)basis(cid:3)for(cid:3)its(cid:3)
`counterclaims.
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`None
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`5 For(cid:3)those(cid:3)reasons,(cid:3)Backcountry(cid:3)believes(cid:3)that(cid:3)it(cid:3)is(cid:3)
`being(cid:3)damaged(cid:3)or(cid:3)will(cid:3)be(cid:3)damaged(cid:3)by(cid:3)the(cid:3)'854(cid:3)
`registration(cid:3)for(cid:3)HUCK(cid:3)DOLL.(cid:3)(cid:3)In(cid:3)addition,(cid:3)
`Backcountry(cid:3)has(cid:3)already(cid:3)been(cid:3)damaged(cid:3)by(cid:3)
`NSM's(cid:3)misue(cid:3)and(cid:3)abuse(cid:3)of(cid:3)the(cid:3)HUCK(cid:3)DOLL(cid:3)
`registration(cid:3)as(cid:3)shown(cid:3)below.
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`In(cid:3)the(cid:3)first(cid:3)sentence,(cid:3)Backcountry(cid:3)provides(cid:3)no(cid:3)
`justification(cid:3)for(cid:3)"damaged",(cid:3)and(cid:3)thus(cid:3)denies(cid:3)
`the(cid:3)same.(cid:3)(cid:3)In(cid:3)the(cid:3)second(cid:3)sentence(cid:3)the(cid:3)
`Opposer(cid:3)does(cid:3)not(cid:3)know(cid:3)what(cid:3)the(cid:3)Applicant(cid:3)
`references,(cid:3)and(cid:3)thus(cid:3)denies(cid:3)the(cid:3)same
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`None
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`Backcountry's(cid:3)Support/Response
`See(cid:3)May(cid:3)22,(cid:3)2009(cid:3)Specimen(cid:3)of(cid:3)Use(cid:3)of(cid:3)
`HUCKN(cid:3)ROLL(cid:3)mark,(cid:3)showing(cid:3)no(cid:3)“Copyright(cid:3)
`date(cid:3)of(cid:3)2003(cid:882)2004”(cid:3)(copy(cid:3)attached(cid:3)as(cid:3)
`Exhibit(cid:3)1(cid:882)A).(cid:3)(cid:3)Moreover,(cid:3)a(cid:3)copyright(cid:3)date(cid:3)
`and(cid:3)date(cid:3)of(cid:3)first(cid:3)use(cid:3)of(cid:3)a(cid:3)mark(cid:3)have(cid:3)little(cid:3)or(cid:3)
`no(cid:3)relationship.
`NSM’s(cid:3)opposition(cid:3)gives(cid:3)standing(cid:3)to(cid:3)
`Backcountry(cid:3)to(cid:3)seek(cid:3)cancellation(cid:3)of(cid:3)NSM's(cid:3)
`cited(cid:3)mark.(cid:3)See(cid:3)TBMP(cid:3)§(cid:3)309.03(b)(cid:3)(“A(cid:3)
`counterclaimant's(cid:3)standing(cid:3)to(cid:3)cancel(cid:3)a(cid:3)
`pleaded(cid:3)registration(cid:3)is(cid:3)inherent(cid:3)in(cid:3)its(cid:3)
`position(cid:3)as(cid:3)defendant(cid:3)in(cid:3)the(cid:3)original(cid:3)
`proceeding”)(cid:3)(citing(cid:3)cases).(cid:3)(cid:3)In(cid:3)addition,(cid:3)
`Backcountry's(cid:3)grounds(cid:3)for(cid:3)(cid:3)cancellation(cid:3)of(cid:3)
`NSM's(cid:3)registration(cid:3)are(cid:3)not(cid:3)“likelihood(cid:3)of(cid:3)
`confusion”(cid:3)allegations.
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`The(cid:3)allegations(cid:3)of(cid:3)paragraph(cid:3)5(cid:3)show(cid:3)
`Applicant's(cid:3)standing(cid:3)to(cid:3)seek(cid:3)cancellation(cid:3)of(cid:3)
`the(cid:3)HUCK(cid:3)DOLL(cid:3)registration(cid:3)in(cid:3)whole(cid:3)or(cid:3)in(cid:3)
`part(cid:3)because(cid:3)(1)(cid:3)NSM(cid:3)cited(cid:3)it(cid:3)in(cid:3)opposition(cid:3)
`to(cid:3)Applicant's(cid:3)application,(cid:3)See(cid:3)TBMP(cid:3)§(cid:3)
`309.03(b),(cid:3)and(cid:3)(2)(cid:3)NSM(cid:3)has(cid:3)used(cid:3)the(cid:3)
`registration(cid:3)to(cid:3)try(cid:3)oppose(cid:3)or(cid:3)try(cid:3)to(cid:3)cancel(cid:3)an(cid:3)
`unrelated(cid:3)application(cid:3)(REALCYCLIST.COM)(cid:3)
`and(cid:3)registration(cid:3)(BACKCOUNTRY.COM)(cid:3)of(cid:3)
`Applicant.
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`20 Prior(cid:3)to(cid:3)filing(cid:3)the(cid:3)Petition(cid:3)for(cid:3)Cancellation(cid:3)of(cid:3)the(cid:3)
`MOUNTAIN(cid:3)HARD(cid:3)WEAR(cid:3)registration,(cid:3)NSM(cid:3)had(cid:3)
`contacted(cid:3)Mountain(cid:3)Hardwear(cid:3)and(cid:3)demanded(cid:3)
`money(cid:3)to(cid:3)settle(cid:3)NSM's(cid:3)alleged(cid:3)claims(cid:3)with(cid:3)
`respect(cid:3)to(cid:3)the(cid:3)"Huckster"(cid:3)backpacks.(cid:3)(cid:3)Mountain(cid:3)
`respect to the "Huckster" backpacks Mountain
`Hardwear(cid:3)refused(cid:3)to(cid:3)pay(cid:3)any(cid:3)money.
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`NSM(cid:3)Resources(cid:3)opposed(cid:3)the(cid:3)MOUNTAIN(cid:3)
`HARD(cid:3)WEAR(cid:3)Registration(cid:3)after(cid:3)the(cid:3)inception(cid:3)
`of(cid:3)the(cid:3)“huckn(cid:3)roll™”(cid:3)website.(cid:3)(cid:3)Prior(cid:3)to(cid:3)the(cid:3)
`inception(cid:3)of(cid:3)“huckn(cid:3)roll™”,(cid:3)NSM(cid:3)Resources(cid:3)
`had(cid:3)requested(cid:3)a(cid:3)negotiable(cid:3)amount(cid:3)of(cid:3)
`had requested a negotiable amount of
`$1500US(cid:3)from(cid:3)Mountain(cid:3)Hardwear(cid:3)to(cid:3)settle(cid:3)
`the(cid:3)issue(cid:3)of(cid:3)the(cid:3)sale(cid:3)of(cid:3)an(cid:3)unknown(cid:3)amount(cid:3)
`of(cid:3)the(cid:3)"huckster"(cid:3)backpack.
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`None
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`NSM(cid:3)admits(cid:3)the(cid:3)alle