Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA641680
`ESTTA Tracking number:
`11/28/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214407
`Plaintiff
`Innovative Staffing, Inc.
`CASEY W JONES
`STRONG & HANNI
`102 S 200 E, STE 800
`SALT LAKE CITY, UT 84111
`UNITED STATES
`cjones@strongandhanni.com, awright@strongandhanni.com
`Opposition/Response to Motion
`Casey W. Jones
`cjones@strongandhanni.com
`/Casey W. Jones/
`11/28/2014
`Exhibits A-O.pdf(4379045 bytes )
`Exhibits P-T.pdf(2267875 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`EXHIBIT A
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter ofTrademark Application Serial No.: 85642675
`For the Trademark: ISHR
`Published in the Official Gazette on January 7, 2014
`
`Innovative Staffing, Inc., a Utah Corporation,
`
`Opposer,
`
`vs.
`
`ISHR, LLC., a Utah Limited Liability
`Company,
`
`Applicant.
`
`Proceeding No.:
`
`91214407
`
`APPLICANT ISHR, LLC'S RESPONSES TO FIRST SET OF INTERROGATORIES
`
`Pursuant to FRCP 33, Applicant ISHR, LLC ("ISHR") responds to Innovative Staffing,
`
`Inc.'s first set of requests for interrogatories as follows:
`
`PRELIMINARY STATEMENT
`
`These responses are made solely for the purpose of, and in relation to, this action. Each
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`response is given subject to all appropriate objections (including, but not limited to, objections as
`
`to confidence, relevance, materiality, propriety, and admissibility) which would require the
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`exclusion of any statement contained herein if the Interrogatory were asked of, or any statement
`
`contained herein were made by, a witness present and testifying in court. All such objections and
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`grounds therefore are reserved and may be interposed at the time of trial.
`
`It should be noted that this responding party has not fully completed its investigation of
`
`the facts relating to this case, has not fully completed its discovery and has not completed its
`
`preparation for trial. The following responses are given without prejudice to responding party's
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`right to produce evidence of any subsequently discovered fact or facts which this responding
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`party may later recall.
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`Page 1 of 11
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`

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`Responding party accordingly reserves the right to change any and all responses herein as
`
`additional facts. are ascertained, analysis and contentions are made and legal research is
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`completed. The responses contained herein are made in a good faith effort to supply as much
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`factual information and as much specification of legal contentions are as presently known, but
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`should in no way be to the prejudice of responding party in relation to further discovery, research
`
`or analysis.
`
`INTERROGATORIES
`
`INTERROGATORY NO. 1:
`
`Identify the exact date of Applicant's first use or intended
`
`first use of Trademark Application Serial No. 85642675 ("ISHR Mark") published in the Official
`
`Gazette on January 7, 2014 for the services identified as "Administration of business payroll for
`
`others; Business management consultation and services, namely, managing and administrating
`
`non-core functions, namely, mailing and shipping, records management, information services,
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`administration, payroll and accounting, and telemarketing services; Human resource analysis and
`
`consulting services; Human resources management; Payroll administration and management
`
`services; Payroll preparation; Payroll processing services; Wage payroll preparation." If you
`
`claim the benefit of any use of the ISHR Mark by a predecessor in title, identify the predecessor
`
`in title and describe in detail the nature and extent of the predecessor's use ofthe ISHR Mark.
`
`INTERROGATORY NO.1 REPONSE:
`
`Without waiving any objections, Applicant believes the first use or intended first use of
`
`ISHR was in or around September/October 2007. The mark was registered with the Utah
`
`Secretary of State on October 1, 2007 and, as such, intended first use likely precedes said date,
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`although the exact date, at this time. is unknown. Discovery is continuing and Applicant reserves
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`the right to supplement its responses as additional information becomes available.
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`Page 2 ofll
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`

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`INTEROGATORY NO.2:
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`For each service identified in Trademark Application Serial
`
`No. 85642675, provide the date said service was first provided, the last day it was provided, and
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`if sales ceased for more than a thirty (30) day period and then resumed, the dates when the sales
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`of said product ceased and then resumed.
`
`INTERROGATORY NO.2 RESPONSE:
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`Without waiving any objections, all services were first provided at the start of
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`Applicant's business, which is in or around October 1, 2007 and continue to the present day.
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`Discovery is continuing and Applicant reserves the right to supplement this response should
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`additional information become available.
`
`INTERROGATORY NO.3:
`
`Explain in detail the basis for your 2nd Affirmative
`
`Defense to Innovative's Amended Notice of Opposition that "Applicant's use of its mark will not
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`mistakenly [sic] thought by the public to derive from the same source as Opposer's goods, nor
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`will such use be thought by the public to be a use by Opposer or with Opposer's authorization or
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`approval."
`
`INTERROGATORY NO. 3 RESPONSE:
`
`Objection: this interrogatory prematurely seeks Applicant's contentions regarding the
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`allegations set forth
`
`in Applicant's Amended Notice of Opposition. Such contention
`
`interrogatories, if proper at all, should be answered after the completion of discovery rather than
`
`during these early stages of the proceedings. See In Re Convergent Technologies Securities
`
`Litigation, 108 F.R.D> 328, 334 (N.D. Cal. 1985). Such is especially true in cases where the
`
`Opposer has access to most of the evidence, such as the present matter. Further, this request has,
`
`in substance, been previously propounded. See Request No. 2 and 23 of Opposer's Request for
`
`Production ofDocuments.
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`.Page 3 of 11
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`

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`Without waiving and subject to said objection, Applicant responds as follows: see
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`Response to Request No. 23 of Opposer's Request for Production of Documents. Discovery is
`
`continuing and Applicant reserves the right to supplement this response should additional
`
`information become available.
`
`INTERROGATORY NO.4:
`
`Explain in detail the basis for your 3rd Affirmative Defense
`
`to Innovative's Amended Notice of Opposition that "Applicant's mark in its entirety is
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`sufficiently distinctively different from Opposer's mark to avoid confusion, deception or mistake
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`as to the source of sponsorship or association of Applicant's goods and/or services."
`
`INTERROGATORY NO.4 RESPONSE:
`
`Objection: this interrogatory prematurely seeks Applicant's contentions regarding the
`
`allegations set forth
`
`in Applicant's Amended Notice of Opposition. Such contention
`
`interrogatories, if proper at all, should be answered after the completion of discovery rather than
`
`during these early stages of the proceedings. See In Re Convergent Technologies Securities
`
`Litigation, 108 F.R.D. 328, 334 (N.D. Cal. 1985). Such is especially true in cases where the
`
`Opposer has access to most of the evidence, such as the present matter. Further, this request has,
`
`in substance, been previously propounded. See Request No.2 and 24 of Opposer's Request for
`
`Production of Documents.
`
`Without waiving and subject to said objection, Applicant responds as follows: see
`
`Response to Request No. 24 of Opposer's Request for Production of Documents. Discovery is
`
`continuing and Applicant reserves the right to supplement this response should additional
`
`information become available.
`
`INTERROGATORY NO.5:
`
`Explain in detail the basis for your 13th Affirmative
`
`Defense to Innovative's Amended Notice of Opposition that "As a result of Applicant's
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`Page 4 of 11
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`

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`eontinuous use of the mark since the time of Applicant's adoption thereof, the Mark has
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`developed significant goodwill among the consuming public and consumer acceptance of the
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`services offered by Applicant in conjunction with the Mark. Such goodwill and widespread
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`usage has caused the Mark to acquire distinctiveness with respect to Applicant, and caused the
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`Mark to become a valuable asset to Applicant."
`
`INTERROGATORY NO.5 RESPONSE:
`
`Objection: this interrogatory prematurely seeks Applicant's contentions regarding the
`
`allegations set forth
`
`in Applicant's Amended Notice of Opposition. Such contention
`
`interrogatories, if proper at all, should be answered after the completion of discovery rather than
`
`during these early stages of the proceedings. See In Re Convergent Technologies Securities
`
`Litigation, 108 F.R.D. 328, 334 (N.D. Cal. 1985). Such is especially true in cases where the
`
`Opposer has access to most of the evidence, such as the present matter. Further, this request has,
`'
`in substance, been previously propounded. See Request No.2 and 34 of Opposer's Request for
`
`Production of Documents.
`
`Without waiving and subject to said objection, Applicant responds as follows: see
`
`Response to Request No. 34 of Opposer's Request for Production of Documents. Discovery is
`
`continuing and Applicant reserves the right to supplement this response should additional
`
`information become available.
`
`INTERROGATORY NO.6:
`
`Explain in detail all of the facts that support your statement
`
`in your 14th Affirmative Defense to Innovative's Amended Notice of Opposition that "Applicant
`
`has been using the Mark and developing consumer recognition and goodwill therein since at least
`
`October 1, 2007 ... "
`
`INTERROGATORY NO.6 RESPONSE:
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`Page 5 of11
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`

`
`Objection: this intetTogatory prematurely seeks Applicant's contentions regarding the
`
`allegations set forth
`
`in Applicant's Amended Notice of Opposition. Such contention
`
`interrogatories, if proper at all, should be answered after the completion of discovery rather than
`
`during these early stages of the proceedings. See In Re Convergent Technologies Securities
`
`Litigation, 108 F.R.D. 328, 334 (N.D. Cal. 1985). Such is especially true in cases where the
`
`Opposer has access to most of the evidence, such as the present matter. Further, this request has,
`
`in substance, been previously propounded. See Request No.2 and 35 of Opposer's Request for
`
`Production of Documents.
`
`Without waiving and subject to said objection, Applicant responds as follows: see
`
`Response to Request No. 35 of Opposer's Request for Production of Documents. Discovery is
`
`continuing and Applicant reserves the right to supplement this response should additional
`
`information become available.
`
`INTERROGATORY NO.7:
`
`Explain in detail the basis for your claim in Paragraph 2 of
`
`your Counterclaim against Innovative that "Opposer's application misrepresents [sic] 'the mark
`
`was first used by the applicant or the applicant's related company or licensee predecessor in
`
`interest at least as early as 12/28/1999, and first used in commerce at least as early as
`
`12/28/1999, and is now in use in such commerce."'
`
`INTERROGATORY NO. 7 RESPONSE:
`
`Objection: this intenogatory prematurely seeks Applicant's contentions regarding the
`
`allegations set forth
`
`in Applicant's Amended Notice of Opposition. Such contention
`
`interrogatories, if proper at all, should be answered after the completion of discovery rather than
`
`during these early stages of the proceedings. See In Re Convergent Technologies Securities
`
`Page 6 of11
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`

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`Litigation, 108 F.R.D. 328, 334 (N.D. Cal. 1985). Such is especially true in cases where the
`
`Opposer has access to most of the evidence, such as the present matter.
`
`Without waiving and subject to said objection, Applicant responds as follows: the
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`allegations set forth in Paragraph 2 of Applicant's Counterclaim are based upon information
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`Applicant obtained from various sources showing that Opposer did not begin using the acronym
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`"ISihr'' until2012. Previously, Opposer had used the name "Innovative Staffing, Inc." or "lSI" in
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`all of its advertisements, products, and intemal documents. In fact, Opposer publicly announced
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`its name change in 2012 on Facebook and its own newsletter. Discovery is continuing and
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`Applicant reserves the right to supplement this response should additional information become
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`available.
`
`INTERROGATORY NO. 8:
`
`Explain in detail the basis for your claim in Paragraph 3 of
`
`your Counterclaim against Innovative that "Opposer began publicly using the mark in or around
`
`January 30, 2012 to advertise their goods and/or services."
`
`INTERROGATORY NO. 8 RESPONSE:
`
`Objection: this intenogatory prematurely seeks Applicant's contentions regarding the
`
`allegations set forth
`
`in Applicant's Amended Notice of Opposition. Such contention
`
`interrogatories, if proper at all, should be answered after the completion of discovery rather than
`
`during these early stages of the proceedings. See In Re Convergent Technologies Securities
`
`Litigation 108 F.R.D. 328, 334 (N.D. Cal. 1985). Such is especially true in cases where the
`
`Opposer has access to most of the evidence, such as the present matter. Further, this request has,
`
`in substance, been previously propounded. See Request No.7 ofinterrogatories.
`
`Without waiving and subject to said objection, Applicant responds as follows: the
`
`allegations set forth in Paragraph 3 of Applicant's Counterclaim are based upon information
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`Page 7 of 11
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`

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`Applicant obtained from various sources showing that Opposer did not begin using the acronym
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`"ISihr" unti12012. Previously, Opposer had used the name "Innovative Staffing, Inc." or "lSI'' in
`
`all of its advertisements, products, and internal documents. In fact, Opposer publicly announced
`
`its name change in 2012 on Facebook and its own newsletter. Discovery is continuing and
`
`Applicant reserves the right to supplement this response should additional information become
`
`available.
`
`INTERROGATORY NO.9:
`
`Explain in detail the basis for your claim in Paragraph 8 of
`
`your Counterclaim against Innovative that "Applicant's use of the Mark was prior in time to
`
`Opposer's use and prior to Opposer's trademark application which matured into Registration No.
`
`8567199."
`
`INTERROGATORY NO.9 RESPONSE:
`
`Objection: this interrogatory prematurely seeks Applicant's contentions regarding the
`
`allegations set forth
`
`in Applicant's Amended Notice of Opposition. Such contention
`
`interrogatories, if proper at all, should be answered after the completion of discovery rather than
`
`during these early stages of the proceedings. See In Re Convergent Technologies Securities
`
`Litigation, 108 F.R.D. 328, 334 (N.D. Cal. 1985). Such is especially true in cases where the
`
`Opposer has access to most of the evidence, such as the present matter.
`
`Without waiving and subject to said objection, Applicant responds as follows: Applicant
`
`began using ISHR registered and began using ISHR roughly around September/October 2007,
`
`which is prior in time to Opposer's use of the ISihr mark in 2012. Discovery is continuing and
`
`Applicant reserves the right to supplements its responses as more information becomes available.
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`Page 8 of 11
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`

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`INTERROGATORY NO. 10:
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`Explain in detail the basis for your claim in Paragraph 9 of
`
`your Counterclaim against Innovative that "Inability to cancel the registration in whole or in part
`
`will result in damage and unfairness on behalf of Applicant. .. "
`
`INTERROGATORY NO. 10 RESPONSE:
`
`Objection: this interrogatory prematurely seeks Applicant's contentions regarding the
`
`allegations set forth
`
`in Applicant's Amended Notice of Opposition. Such contention
`
`interrogatories, if proper at all, should be answered after the completion of discovery rather than
`
`during these early stages of the proceedings. See In Re Convergent Technologies Securities
`
`Litigation, 108 F.R.D. 328, 334 (N.D. Cal. 1985). Such is especially true in cases where the
`
`Opposer has access to most of the evidence, such as the present matter.
`
`Without waiving and subject to said objection, Applicant responds as follows: it is ｷ･ｬｬｾ＠
`
`known that unfair competition will result in damage. Opposer's continued use of the mark ISThr
`
`constitutes unfair competition and dilution of Applicant's mark, resulting in damages. Discovery
`
`is continuing and Applicant reserves the right to supplements its responses as more infom1ation
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`becomes available.
`
`INTERROGATORY NO. 11:
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`Identify in detail all services and goods that you currently
`
`sell and/or market to consumers and the date in which you first provided said service or good.
`
`INTERROGATORY NO. 11 RESPONSE:
`
`Objection: this request has, in substance, been previously propounded. See Request No. 1
`
`of Interrogatories. Further, the information sought in this request is already known and equally
`
`available to the propounding party who has already listed the services in Request No. 1 of
`
`Interrogatories.
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`Page 9 of 11
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`Without waiving and subject to said objection, refer to Response No. 4, 5, 6, 7, 8 of
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`Opposer's Request for Production of Documents. FUliher, refer to bates number ISHR000013. In
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`essence, Applicant provides services in the following areas: payroll adtninistration, such as direct
`
`deposits, live check or via paycard; accounting; new hire enrollment and termination; health,
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`dental and vision insurance; compliance with garnishment requests; workers compensation, GL
`
`and E&O; providing safety programs and manuals; risk claims management; return to work
`
`programs; regulatory compliance; union compliance; human resource outsourcing; benefit plans
`
`and administrations; 401(k) pension plans along with 125C full flex cafeteria plans; employee
`
`handbooks; performance management plans; records management; COBRA and FMLA
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`administration; unemployment claims management; leadership programs and training; staffing
`
`and recruiting; on-site personnel on an "as-needed" basis; OSHA logs. Discovery is continuing
`
`and Applicant reserves the right to supplements its responses as more information becomes
`
`available.
`
`Dated this _qJJ_ day of July, 2014.
`
`Respectfully submitted,
`
`/Michael C. Van, Esq./
`Michael C. Van, Esq.
`SHUMWAY VAN & HANSEN
`8985 S. Eastern A venue, Suite 100
`Las Vegas, Nevada 89123
`(702) 478-7770
`michael@shumwayvan.com
`
`Page 10 of11
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`CERTIFICATE OF SERVICE
`
`The undersigned certified that this submission (along with any paper referred to as being
`::?'1 day of July, 2014 that the foregoing APPLICANT
`attached or enclosed) that on tllis
`ISHR, LLC'S RESPONSES TO FIRST SET OF INTERROGATORIES was served via
`First Class Mail to the following:
`
`Casey W. Jones, Esq.
`STRONG & HANNI
`102 South 200 East, Suite 800
`Salt Lake City, Utah 84111
`Counsel for Opposer Innovative Staffing, Inc.
`
`/Michael C. Van/
`An employee of Shumway Van & Hansen
`
`Page 11 of 11
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`

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`EXHIBIT B
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`

`
`ISHR, LLC
`
`Entity Number: 6768408-0160
`Company Type: LLC- Domestic
`Address: 6770 S 900 E #201 Midvale, UT 84047
`State of Origin:
`Registered Agent: SHUMWAY VAN & HANSEN, CHTD., LLC
`Registered Agent Address:
`8 E BROADWAY ST #550
`Salt Lake City, UT 84111
`
`Status: Active
`
`as of 1010112007
`Status: Active
`Renew By: 10/31/2015
`Status Description: Good Standing
`The "Good Standing" status represents that a renewal has been filed, within the most recent
`renewal period, with the Division of Corporations and Commercial Code.
`Employment Verification: Not Registered with Verify Utah
`
`History
`
`Registration Date: 10/01/2007
`Last Renewed: 09/30/2014
`
`Additional Information
`
`NAICS Code: 9999 NAICS Title: 9999-Nonclassifiable Establishment
`
`Doing Business As
`
`EMCOR HR
`
`Former Business Names
`
`INFINISOURCE, L.L.C.
`
`Search by:
`
`Business Name I Number
`
`Executive Name
`
`Search Hints
`
`Name:
`
`

`
`EXHIBIT C
`EXHIBIT C
`
`

`
`.
`ｲＮＬｾ｣ｅＮ｜｜ｦＢｅＮｄ＠
`uc\ \\ \ 1\\\)1
`ｾｾ｣ｯﾮ＠
`ｵ｜｡｜ｴＡｎﾷＨＱＮｾﾷ＠
`
`ARTICLES OF ORGANIZATION
`
`OF
`
`INFINISOURCE, L. L. C.
`
`ｾ＠
`\::!!)
`The undersigned, acting pursuant to the Utah Limited Liability Company Act (the "Act"),
`adopts the following Articles of Organization for the purpose of organizing a Utah limited
`liability company (the "Company").
`
`C)
`1
`C)
`
`1 c
`-..) -o
`0
`I.N
`
`1.
`
`Name. The Company's name is InfiniSource, L. L. C.
`
`Term. The Company will continue until December 31, 2099, unless sooner
`2.
`dissolved by law or as provided in the Company's operating agreement.
`
`Purpose. The Company's purpose is to engage in any lawful act or activity for
`3.
`which a limited liability company may be organized under the Act.
`
`Management. The Company will be managed by a manager. The name and
`4.
`address of the Company's managers are:
`
`Leo Howell
`1338 South Foothill Dr
`Number 333
`Salt Lake City, Utah 84108
`
`Kimberly Bolinder
`1338 South Foothill Dr
`Number 333
`Salt Lake City, Utah 841 08
`
`-".:
`
`Registered Office, Registered Agent, Designated Office. The Company's
`5.
`registered office in Utah is located at 1338 South Foothill Dr #333, Salt Lake City, Utah 84108,
`and its registered agent at that location is Leo Howell. The director of the division is appointed
`the agent of the company for service of process ifthe agent has resigned, the agent's authority
`has been revoked, or the agent cannot be found or served with the exercise of reasonable
`diligence. The company's registered office shall be its designated office.
`
`Dated this I st day of October, 2007
`
`｡･･ｬｬＬｾ＠
`
`ISIHR00230
`
`

`
`ACCEPTANCE OF APPOINTMENT BY REGISTERED AGENT
`
`Pursuant to the Utah Limited Liability Company Act, the undersigned hereby accepts
`appointment as registered agent oflnfiniSource Insurance Group, L.L.C a Utah limited liability
`company.
`
`Dated this 1st day of October, 2007
`
`Leo well
`
`ISIHR00231 -
`
`

`
`EXHIBITD
`EXHIBIT D
`
`

`
`ｔｨｩｾ｟＠ｦｯｷｲｾＩｬｬｾｴＮ｢･＠t)'P9 written ｯｲ｣ｯｭｰｵｴｾｲＧｧｾＺｭｭｩｴ｣､Ｎ｝＠
`State of Utah
`ｄｬｾｐａｒｔｍｅｎｔ＠Of COMMERCE
`Division of Corporations & Commercial Code
`Articles of Arnendtnellt to Articles ofOrgHnization
`
`Non,Rcfundable Pr.'ncessing Fee: 5.37 .. 00
`Pursuant to UCA § 48-2c-408, the individual named below causes this Amendment to the A1tides of Organization
`to be delivered to the Utah Division of Corporations for filing, and states as follows:
`File Number: Ｍｾ｟ＷＶＸＴｾＸｾｓＺｾ＠60 __ _
`The name ofthe limited liability c.ompnny is: _ln_fi_m __ is_o ___ u ___ r ___ c_e_, ____ l-__ l-___ C __________________________________________________________ -j....,,
`
`The Articles of Organization shill! be mnended as set lbrth herein (mark all tllat apply):
`[Z]There is a change in the name of the limited liability company to:
`ISHR,. LLC.
`
`0The articles of organization are amended as follows:
`
`OA change of 0\Vnership stt·ucturc m exchange/reclassification ofintercsts:
`
`The amendment was adopted on ＭｾｾＡＺＧＱＭｾｾｒｙ｟ｾｾＭＭＭＭＭＭﾷＭﾷﾷﾷＭＭﾷＭＭＬ＠20 ..:!_:1__ (must be within the last 60 ｴｬｾＱｹｳＩ＠
`Each _amendment was adopted by the members ancl any managers, as required by Section ＴＸｾＲ｣ＭＸＰＳ＠or 48-
`lc-204, or otherwise required by the articles or organization or operating agreement.
`
`Delayed effective date (if noi to be cJfective upon filing) ＭＭＭﾷＭＭＭＭＭＭＭＭﾷＭＭﾷﾷﾷﾷＭＭＭＭｾＭＭＭＭＨＢｯｴ＠Jor)(Ce!<d 90duys)
`
`Under penalties ofpct:jury, J dcclOI'e that this Amcmdment ofArticles of Organization hus been examine\:)
`by me and is, to the best of my knowledge and belief, true, correct and complete.
`/ j
`Signed: ;::vv-
`Name: ｟ｴｓＩ｟ｾＮＭｾｑｾ｟ｱｾ｟ＡＳ｟｟｟｟｟｟｟｟｟｟｟｟｟｟｟｟｟｟｟｟｟｟｟｟｟｟｟＠
`ｲＺ［［ｪＺＬｊ［ｾＮＭＺＱＯ＠
`Capacity: CJ Member 0 Manager
`Dated: ＭｾｾＭｾＭＧＺＡ｟ｾｙ｟Ｑ｟ＺＳＰＱＱ＠___________ _
`
`..------
`
`ｬＺｺｾ＠
`
`Undct• ｇｒａｾＺｬＭ｜＠{63-2-201}, all reglstra1lon illformntil!ll ｭｴｬｩｮｴｾｨｭｬｬｊｹ＠ＡｬＱ･ＮｄｩＢｩｾｩｯｵｬｳ＠<h1ssilie.d ns JIUblic .-etmd, F<ir (OnJidentiul!ty ｰｵｲｰ｣＾ｳ･ｾＬ＠yvu may
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`Mailing/faxing Information: www.corpora ti ons.tttah.gov/contactus.html Division's Website: w\vw.corporations.utah.gov
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`.ISIHRQQ237 __ _
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`

`
`EXHIBIT E
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application Serial No.: 85642675
`For the Trademark: ISHR
`
`Published in the Oflicial Gazette on January 7, 2014
`
`Innovative Staffing, Inc., a Utah corporation,
`
`Opposer,
`
`v.
`
`ISHR, LLC, a Utah limited liability company,
`
`Applicant.
`
`
`
`Proceeding No. 91214407
`
`DECLARATION OF JOHN FARNSWORTH
`
`I, John Farnsworth, declare as follows:
`
`1.
`
`The facts set forth in this declaration are based on my own personal knowledge
`
`and could so testify if called upon to do so by the Court.
`
`2.
`
`I am the co—founder of Innovative Staffing, Inc. and have been its President or
`
`Vice President since its incorporation.
`
`3.
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`My wife and 1 formed “Innovative Staffing, Inc.” on December 17, 1999 by filing
`
`Articles oflncorporation with Utah Division ofCorporations and Commercial Code.
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`4.
`
`1 formed Innovative Staffing, inc. for the purpose of operating a human resource
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`management and payroll processing company.
`
`

`
`5.
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`Since forming Innovative Staffing, Inc. in December 1999, I have continuously used
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`three names to identify its services with consumers: (1) Innovative Staffing, Inc.; (2) ISI; and (3)
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`ISIHR.
`
`6.
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`Since December I999, Innovative Staffing, Inc. has provided many services to its
`
`clients, including, but not limited to, administration of business payroll; human resource analysis and
`
`consulting Services; human resources management; payroll administration and management services;
`
`payroll preparation; payroll processing services and wage payroll preparation.
`
`7.
`
`For more than 14 years, Innovative Staffing, Inc. has drawn upon the goodwill and
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`public recognition of its ISIHR and ISI marks by adopting and using these marks to signify its high
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`quality service.
`
`8.
`
`The ISIHR and [SI marks have been conspicuously applied to Innovative Staffing
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`Inc.°s services and said services so marked and identified have been extensively advertised, promoted
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`and sold in interstate commerce in the United States.
`
`9.
`
`By virtue of Innovative Staffing, Inc.’s extensive advertising, promotion, and sales of
`
`its services under its ISIHR and ISI marks, the public and trade have come to rely upon Innovative
`
`Staffing, Inc.’s ISIHR and ISI marks to identify Innovative Staffing,
`
`lnc.’s superior services and
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`distinguish them from the services of others. The ISII-IR and ISI marks have come to represent
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`extremely valuable goodwill belonging exclusively to Innovative Staffing, Inc.
`
`I0.
`
`I have had trouble locating company records more than 6 years old due to computer,
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`network and server upgrades. Old records prior to the upgrades have been lost in the transition of
`
`new technology. However, I have found many documents that evidence Innovative Staffing, lncfs
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`use ofthe ISIHR and ISI marks prior to Applicant’s use ofthe ISHR mark.
`
`

`
`11.
`
`On or about May 24, 2002 Innovative Staffing. Inc. entered into a contract with a
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`third party identifying itself as “ISI. See Contract attached hereto as Exhibit A. Since Innovative
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`Staffing Inc.’s inception, it has been common to identify the company as ISI and/or ISIHR.
`
`12.
`
`Innovative Staffing, Inc. routinely published newsletters to its clients. The oldest
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`newsletter that
`
`I have been able to locate is from Fall 2006. The newsletter clearly identifies
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`Innovative Staffing, Inc. as ISI. See Fall 2006 Newsletter attached hereto as Exhibit B.
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`13.
`
`On January 5, 2007,
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`Innovative Staffing,
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`Inc. purchased the domain name for
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`ISIIrIR.com. See Whois Report attached hereto as Exhibit C.
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`I caused Innovative Staffing, Inc. to
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`purchase the domain name because we had been using the name since 1999 and planned to use it
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`more heavily.
`
`14.
`
`Innovative Staffing, Inc. routinely publishes case studies regarding its work with its
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`clients. The oldest case study that we created was from December I I, 2008. On that date, Innovative
`
`Staffing, Inc. published a case study which clearly identifies itself as “ISIHR." See Case Study
`
`attached hereto as Exhibit D. Since 1999, customers identified Innovative Staffing, Inc. as ISIHR
`
`and ISI, shortened versions of Innovative Staffing, Inc.
`
`15.
`
`Innovative Staffing, Inc. has maintained registration of its ISIhr and ISI marks in the
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`United States Patent and Trademark Office for its services. Said ISIhr and ISI registrations owned by
`
`Innovative Staffing, Inc. are:
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`Mark
`
`ISIHR
`
`ISI
`
`Reg. No.
`
`Reg. Date
`
`4,288,774
`
`February 12, 2013
`
`4,282,891
`
`January 29, 2013
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`16.
`
`Said registrations are valid and are owned by Innovative Staffing, Inc. together with
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`the business and goodwill connected therewith.
`
`D.)
`
`

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`17.
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`Innovative Staffing, Inc. has consistently used ISI and ISIHR without interruption
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`since I999 as shortened versions oflnnovative Staffing, Inc.
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`18.
`
`Innovative Staffing,
`
`Inc.
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`is still operating under the entity named “Innovative
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`Staffing” and goes by the names ISI and ISHR as evidenced by its website. See current website page
`
`attached hereto as Exhibit E.
`
`19.
`
`Applicant ISI-IR, LLC’s (“Applicant") services are marketed, advertised, promoted,
`
`and sold through identical or similar channels of trade, and ultimately to the same kinds of customers
`
`as Innovative Staffing, Inc.’s services are marketed, promoted, and sold under its ISIhr and ISI
`
`marks.
`
`20.
`
`Innovative Staffing, Inc. and Applicant are competitors in that they offer mostly
`
`identical services to similar customers and are physically located less than 8 miles (according to
`
`Mapquest.com) from each other.
`
`21.
`
`Applicanfs designation ISHR is confusingly similar to the marks owned by
`
`Innovative Staffing, Inc., therefore, denying to Innovative Staffing, Inc. the benefits of its marks in
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`excluding confusingly similar uses.
`
`22.
`
`Thus, when applied to Applicant’s services, the designation ISHR is likely to cause
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`Confusion, to cause mistake, and to deceive consumers as to the origin, sponsorship and approval of
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`Applicant's services with consequent injury to Innovative Staffing, 1110., to the public and to the
`
`trade.
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`23.
`
`Innovative Staffing, Inc. originally operated its Facebook page under the name ISI.
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`beginning in 2009.
`
`24.
`
`Innovative Staffing,
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`Inc-. eventually changed its Facebook page to ISIHR and
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`announced the change on its Facebook page. As evidenced by Innovative Staffing, lnc.‘s website,
`
`Innovative Staffing, Inc. still uses ISIHR and IS! in association with its services.
`
`

`
`25.
`
`Innovative Staffing, Inc. did not change its name to ISIHR in 2012 as suggested by
`
`Applicant. As I mentioned above, Innovative Staffing, Inc. changed its Facebook page to ISII-IR.
`
`Innovative Staffing, Inc. used ISHR prior to 2012 as discussed herein and still uses the mark to date,
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`along with the marks ISI and Innovative Staffing.
`
`26.
`
`In about 2002, I met with Applicant’s co-owner, Rick Whatley, for lunch. At lunch,
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`Mr. Whatley said that he wanted to partner with Innovative Staffing, Inc.
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`I gave Mr. Whatley my
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`business card which had the ISI mark on it.
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`27.
`
`I DECLARE UNDER CRIMINAL PENALTY OF THE STATE OF UTAH AND
`
`THE LAWS OF THE UNITED STATES THAT THE FOREGOING IS TRUE AND
`
`CORRECT.
`
`-lk.
`
`Dated: November Z‘!-..,w--204,-4—%T—
`
`5
`
`

`
`..
`
`"
`
`INNOVATIVE
`STAFFING INC,
`
`ISI of Utah CLIENT SERVICE AND
`EMPLOYEE MANAGEMENT AGREEMENT
`
`ｚＧＭＱｾ＠ day of
`This Service Agreement ("Agreement") is made and entered into this
`, 2002t by and between INNOVATIVE STAFFING OF UfAH, INC.
`ＱＱＱｾ＠
`(hereina
`r niSI") located at 859 West South. Jordan. Parkway, Suite ＷＷｾ＠SouUt Jordan, Utah 84095,
`mailing address of P.O. Box 95330, SouthJordan1 Utah &4095, phone number (801) 984-
`0252, and Dan Van Woerkom
`(hereinafter "Client"), a business whose principal
`worksite is located at
`1226 North 70 East, American Fork. UT 84003
`
`RECITALS:
`
`1.
`
`2.
`
`3.
`
`4.
`
`IS! is a Professional Employer Organization (PEO).
`
`'
`lSI is engaged in the business of providing contracted employees ("Assigned
`Worksite Employees").
`
`Client is engaged in a business, which requires employees.
`
`lSI desires to contract with Client, and Client desires to contract with JSI to provide
`the Assigned Worksite Employees required in the operations of the Client's business,
`
`In consideration of the mutua[ promises and benefits contained in the Agreement, the parties
`agree as follows;
`
`1.
`
`2.
`
`SERVICES AND RELATIONSffiP:
`lSI shall provide Client7 at Client;s location (s), professional employers services as
`set forth herein, through the assignment of ISI Worksite Employees (Assigned
`Worksite Employees), who shall perform services for the benefit of the Client ln
`accordance with the terms and conditions of this Agreement and the Assigned
`Wor