Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA657230
`ESTTA Tracking number:
`02/20/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91216258
`Defendant
`The Concept Law Group, P.A.
`SCOTT D SMILEY
`THE CONCEPT LAW GROUP PA
`200 S ANDREWS AVE STE 100
`FORT LAUDERDALE, FL 33301 2000
`UNITED STATES
`Info@ConceptLaw.com
`Motion to Compel Discovery
`Scott D. Smiley
`scott@conceptlaw.com
`/Scott D. Smiley/
`02/20/2015
`TTAB 91216258 Motion to Compell Opposer's Responses to Applicant's First
`RFP.pdf(401872 bytes )
`EXHIBIT A.pdf(1070426 bytes )
`EXHIBIT B.pdf(171668 bytes )
`EXHIBIT C.pdf(930686 bytes )
`EXHIBIT D.pdf(1327273 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Andrey Pinsky,
`Opposer,
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`v.
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`The Concept Law Group, P.A.,
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`Applicant
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`____________________________________)
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`Opposition No. 91216258
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`Mark: THE CONCEPT LAW GROUP, P.A.
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`PATENTS COPYRIGHTS
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`TRADEMARKS (+ Design)
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`Serial No. 86/023,378
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`APPLICANT’S MOTION TO COMPEL
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`
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`Applicant, The Concept Law Group, P.A., hereby moves for an order to compel
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`discovery responses from Opposer, Andrey Pinsky, pursuant to Rule 37, Fed. R. Civ. P. and
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`pertaining to Opposer’s Response to Applicant’s First Request for Production (hereafter “RFP”)
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`served on Applicant February 3, 2015, and states as follows:
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`Opposer instituted the instant Opposition alleging he is the senior user in the United
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`States of the mark “CONCEPT LAW.” [DE 1 at ¶¶ 1–3]. Opposer alleges that Opposer and
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`Applicant’s services are in “similar channels of trade” and that “consumers could reasonably
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`believe that Opposer is the original source or sponsor of the Applicant’s legal services.” Id. at ¶
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`15. Opposer alleges that Applicant “wilfully [sic], recklessly, and in bad faith adopted” the
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`opposed mark. Id. at ¶ 11. Opposer further alleges that Applicant “was on the list of recipients
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`of [Opposer’s] promotional materials for legal services...every month between January 2010 and
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`December 2010 until he left Mayback & Hoffman, P.A.” EXHIBIT B, at ¶ 14 (Opposer’s
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`declaration provided in Opposer’s initial disclosures).
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`Applicant has defended by pointing out that:
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`Page 1 of 13
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`(1) Applicant is an attorney only licensed in the United States and that Opposer is an
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`attorney only licensed in Canada and that it is legally impossible for Opposer to offer
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`Applicant’s legal services to citizens of the United States and for Applicant to offer
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`Opposer’s legal services to citizens of the Canada (DE 4 at ¶¶ 19–20);
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`(2) Opposer committed fraud on the United States Patent and Trademark Office prior to
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`instituting the instant opposition (DE 4 at ¶ 21);
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`(3) Opposer’s has not used “CONCEPT LAW” in a way the constitutes trademark use
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`(DE 4 at ¶ 22); and
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`(4) Applicant is actually the senior user of the mark “CONCEPT LAW” in the United
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`States (DE 4 at ¶ 23).
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`On August 27, 2014 Applicant propounded its First Request for Production on Opposer.
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`On February 3, 2015, Opposer served his Response to Applicant’s First Request for Production.
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`EXHIBIT A.
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`The Federal Rules of Civil Procedure relating to disclosure and discovery apply in
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`oppositions. 37 C.F.R. § 2.120(a). Rule 26 allows a party to obtain discovery regarding any
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`nonprivileged matter that is relevant to its claims and defenses—including the existence,
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`description, nature, custody, condition, and location of any documents or other tangible things
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`and the identity and location of persons who know of any discoverable matter. Relevant
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`information need not be admissible at the trial if the discovery appears reasonably calculated to
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`lead to the discovery of admissible evidence. Fed. R. Civ. P. 26.
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`ISSUES WITH OPPOSER’S RESPONSES
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`I.
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`GENERAL OBJECTIONS TO OPPOSER’S BOILERPLATE RESPONSES
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`a. Responses Providing Only “Some” Documents are Non-Responsive
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`Page 2 of 13
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`Applicant’s Request for Production Nos. 1, 4, 5, 7, 9, 10, 13, 28, 29, and 30-34:
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`Opposer has inserted boilerplate language in his responses 1, 4, 5, 7, 9, 10, 13, 28, 29, and 30-34
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`that he is providing “some of the requested documents.” EXHIBIT A (emphasis added). These
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`responses imply he has produced or identified only “some” documents, to the exclusion of
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`others. This practice is not in conformance with the purpose of discovery, which is to ascertain
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`all responsive evidence supporting the opposing party’s case. “[T]the response to the request
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`should expressly state either that (i) all responsive documents are being produced or (ii) the
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`documents provided are only those to which the stated objection does not apply.” See Civil
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`Discovery
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`Standards,
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`2004
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`A.B.A.
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`Sec.
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`Lit.
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`12,
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`available
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`at
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`http://www.americanbar.org/content/dam/aba/administrative/litigation/litigation-aba-2004-civil-
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`discovery-standards.authcheckdam.pdf.
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`Applicant requests this Board order Opposer to provide Applicant with complete
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`responses to each request. Without such an order, Applicant is unable to determine when
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`discovery is complete.
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`b. Responses After Objections
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`Applicant’s Request for Production Nos. 1, 5, 7, 10, and 13: Opposer has inserted
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`boilerplate language in responses 1, 5, 7, 10, and 13 that he is responding “without waiving any
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`of the foregoing objections.” This practice is not in conformance with the purpose of discovery,
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`which is to ascertain all responsive evidence supporting the opposing party’s case. As provided
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`in Consumer Electronics Assoc. v. Compras & Buys Magazine, Inc., 2008 WL 4327253, *3 (S.D.
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`Fla. Sept. 18, 2008), formulaic objections followed by an answer to the request are improper, as
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`[s]uch an objection and answer preserves nothing and serves only to waste the
`time and resources of both the Parties and the Court. Further, such practice leaves
`the requesting Party uncertain as to whether the question has actually been fully
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`Page 3 of 13
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`answered or whether only a portion of the question has been answered. See Civil
`Discovery Standards, 2004 A.B.A. Sec. Lit. 18; see also Local Rule 26.1 G.3.(a).
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`Applicant requests this Board order Opposer to provide Applicant with complete
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`responses to each request.
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`c. Objections Claiming a Request is “Vague, Overly Broad or Unduly Burdensome
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`Applicant’s Request for Production Nos. 1, 6, 7, 10, 11, 14, 17-26, 35-37, and 39-41:
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`Opposer has provided non-specific and boilerplate objections to each of Applicant’s Request for
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`Production Nos. 1, 6, 7, 10, 11, 14, 17-26, 35-37, and 39-41 on the grounds of “vague,” “overly
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`broad,” and/or “unduly burdensome.” EXHIBIT A. Opposer, however, has failed to explain the
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`specific and particular ways in which each request is vague, overly broad, and/or unduly
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`burdensome and, for that reason, has failed to properly object under these bases. Milinazzo v.
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`State Farm Ins. Co., 247 F.R.D. 691, 695 (S.D. Fla. 2007) (“Objections which state that a
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`discovery request is ‘vague, overly broad, or unduly burdensome’ are, by themselves,
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`meaningless, and are deemed without merit by this Court. A party properly objecting on these
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`bases must explain the specific and particular ways in which a request is vague, overly broad, or
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`unduly burdensome.”); Fed. R. Civ. P. 33(b)(4); Josephs v. Harris Corp., 677 F.2d 985, 992 (3d
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`Cir.1982) (“[T]he mere statement by a party that the interrogatory was ‘overly broad,
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`burdensome, oppressive and irrelevant’ is not adequate to voice a successful objection to an
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`interrogatory”); Henderson v. Holiday CVS, LLC, 269 F.R.D. 682, 686 (S.D. Fla. 2010) (“to even
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`merit consideration, ‘an objection must show specifically how a discovery request is overly
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`broad, burdensome or oppressive, by submitting evidence or offering evidence which reveals the
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`nature of the burden.’”)
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`Page 4 of 13
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`Applicant submits that the requested documents are directly relevant to Applicant’s
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`claims and defenses and requests this Board order Opposer to provide Applicant with complete
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`responses to each request.
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`d. Objections Based on Privilege and Work Product
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`Applicant’s Request for Production Nos. 5, 7, 8, 10, 13, 22, 23, and 42: Opposer has
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`provided non-specific and boilerplate objections to each of Applicant’s Request for Production
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`Nos. 5, 7, 8, 10, 13, 22, 23, and 42 on the grounds of “lawyer-client privilege” and/or “lawyer
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`work product doctrine.” EXHIBIT A.
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`When a party withholds information under the attorney-client communications or work
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`product doctrines, the party must “(i) expressly make the claim; and (ii) describe the nature of
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`the documents, communications, or tangible things not produced or disclosed--and do so in a
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`manner that, without revealing information itself privileged or protected, will enable other parties
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`to assess the claim.” Fed. R. Civ. P. 26(b)(5). Opposer has provided no such claim and
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`description.
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`Opposer has failed to comply with rule 26(b)(5). Applicant submits that the requested
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`documents are directly relevant to Applicant’s claims and defenses and requests this Board order
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`Opposer to provide Applicant with complete responses to each request.
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`e. Objection Claiming Request is Not Reasonably Calculated to Lead to Admissible
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`Evidence
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`Applicant’s Request for Production Nos. 1, 6, 7, 10, 11, 14, 17-26, 35-37, 39-41:
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`Opposer has provided non-specific and boilerplate objections to each of Applicant’s Request for
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`Production Nos. 1, 6, 7, 10, 11, 14, 17-26, 35-37, 39-41 claiming each request is “not reasonably
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`calculated to lead to admissible evidence.” EXHIBIT A. Opposer has failed to properly object
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`under this ground. “An objection that a discovery request is irrelevant and not reasonably
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`calculated to lead to admissible evidence must include a specific explanation describing why the
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`request lacks relevance and why the information sought will not reasonably lead to admissible
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`evidence.” Consumer Electronics Assoc. v. Compras & Buys Magazine, Inc., 2008 WL
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`4327253, *3 (S.D. Fla. Sept. 18, 2008). Opposer has provided no such explanation.
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`Applicant submits that the requested documents are directly relevant to Applicant’s
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`claims and defenses and requests this Board order Opposer to provide Applicant with complete
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`responses to each request.
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`f. Objections Based on Relevancy and the Scope of Discovery
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`Applicant’s Request for Production Nos. 14, 17-26, 35-37, 39-41: Opposer has
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`provided non-specific and boilerplate objections to each of Applicant’s Request for Production
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`Nos. 14, 17-26, 35-37, 39-41 claiming each request is “irrelevant.” EXHIBIT A. Opposer has
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`not stated why he believes the requests are irrelevant.
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` A party is “not permitted to assert that [ ] discovery requests exceed the scope of the
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`Federal Rules without explaining how a particular request is out of bounds.” Benfatto v.
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`Wachovia Bank, N.A., 2008 WL 4938418, *2 (S.D. Fla. Nov. 19, 2008). “The scope of
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`discovery under Rule 26(b) is broad: ‘[p]arties may obtain discovery regarding any matter, not
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`privileged, which is relevant to the claim or defense of any party involved in the pending action.
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`Relevant information need not be admissible at trial if the discovery appears reasonably
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`calculated to lead to the discovery of admissible evidence.’” Henderson v. Holiday CVS, LLC,
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`269 F.R.D. 682, 685 (S.D. Fla. 2010); see also Hickman v. Taylor, 329 U.S. 495, 507–508, 67
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`S.Ct. 385, 91 L.Ed. 451 (1947); Farnsworth v. Procter and Gamble Co., 758 F.2d 1545, 1547
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`(11th Cir.1985) (the Federal Rules of Civil Procedure “strongly favor full discovery whenever
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`Page 6 of 13
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`possible”); Canal Authority v. Froehlke, 81 F.R.D. 609, 611 (M.D.Fla.1979). Thus, under Rule
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`26, relevancy is “construed broadly to encompass any matter that bears on, or that reasonably
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`could lead to another matter that could bear on any issue that is or may be in the case.”
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`Henderson v. Holiday CVS, LLC.
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`Applicant submits that the requested documents are directly relevant to Applicant’s
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`claims and defenses and requests this Board order Opposer to provide Applicant with complete
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`responses to each request.
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`Applicant’s Request for Production Nos. 5-6, 11-14, 18-19, 22-26, and 39-42: Opposer
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`has provided non-specific and boilerplate objections to each of Applicant’s Request for
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`Production Nos. 5-6, 11-14, 18-19, 22-26, and 39-42 stating he “will not allow Applicant...to
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`bring this opposition outside perimeters of the current trademark law in the United States.”
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`EXHIBIT A. Opposer has not stated why he believes the requests are “outside perimeters” or
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`otherwise irrelevant.
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` A party is “not permitted to assert that [ ] discovery requests exceed the scope of the
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`Federal Rules without explaining how a particular request is out of bounds.” Benfatto v.
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`Wachovia Bank, N.A., 2008 WL 4938418, *2 (S.D. Fla. Nov. 19, 2008). “The scope of
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`discovery under Rule 26(b) is broad: ‘[p]arties may obtain discovery regarding any matter, not
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`privileged, which is relevant to the claim or defense of any party involved in the pending action.
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`Relevant information need not be admissible at trial if the discovery appears reasonably
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`calculated to lead to the discovery of admissible evidence.’” Henderson v. Holiday CVS, LLC,
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`269 F.R.D. 682, 685 (S.D. Fla. 2010); see also Hickman v. Taylor, 329 U.S. 495, 507–508, 67
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`S.Ct. 385, 91 L.Ed. 451 (1947); Farnsworth v. Procter and Gamble Co., 758 F.2d 1545, 1547
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`(11th Cir.1985) (the Federal Rules of Civil Procedure “strongly favor full discovery whenever
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`Page 7 of 13
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`possible”); Canal Authority v. Froehlke, 81 F.R.D. 609, 611 (M.D.Fla.1979). Thus, under Rule
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`26, relevancy is “construed broadly to encompass any matter that bears on, or that reasonably
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`could lead to another matter that could bear on any issue that is or may be in the case.”
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`Henderson v. Holiday CVS, LLC.
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`Applicant submits that the requested documents are directly relevant to Applicant’s
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`claims and defenses and requests this Board order Opposer to provide Applicant with complete
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`responses to each request.
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`II.
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`SPECIFIC OBJECTIONS TO OPPOSER’S RESPONSE TO APPLICANT’S
`REQUESTS FOR PRODUCTION
`Applicant’s Request for Production No. 2: Applicant has asserted as an affirmative
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`defense that “Opposer is not a licensed United States attorney, is not legally capable of providing
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`‘legal services’ in the United States” to citizens of the United States. [DE 3, No. 19]. In
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`addition, Opposer claims to be “registered” with the USPTO. EXHIBIT C. Applicant has
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`requested “all documents evidencing [Opposer’s] admission to any bar association and other
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`lawyer regulating organization, including any state in the United States, Canada, and the United
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`States Patent and Trademark Office.” EXHIBIT A, No. 2. Opposer responded that documents
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`are on “on file with the Enrolment and Discipline Office,” but does not produce those documents
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`or state he has none.
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`Applicant submits that these documents are relevant to Opposer’s lack of ability to
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`lawfully use Opposer’s alleged mark in commerce between the United States and Canada and, as
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`such, are directly relevant to Applicant’s claims and defenses. Applicant believes Opposer’s full
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`file with the Office of Enrolment and Discipline is confidential and not available to Applicant.
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`Applicant requests this Board issue an order compelling Opposer to produce any responsive
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`documents in his possession.
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`Page 8 of 13
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`Applicant’s Request for Production No. 3: Applicant has asserted as an affirmative
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`defense, “Opposer is not a licensed United States attorney, is not legally capable of providing
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`‘legal services’ in the United States” to citizens of the United States. [DE 3, No. 19]. Applicant
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`has requested “documents evidencing [Opposer’s] qualifications or credentials allowing
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`[Opposer] to provide legal services in the United States.” EXHIBIT A, No. 3. Opposer
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`responded that documents are on “on file with the Enrolment and Discipline Office,” but does
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`not produce those documents or state he has none. Id.
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`Applicant submits that these documents are relevant to Opposer’s lack of ability to
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`lawfully use Opposer’s alleged mark in commerce between the United States and Canada and, as
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`such, are directly relevant to Applicant’s claims and defenses. Applicant believes Opposer’s full
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`file with the Office of Enrolment and Discipline is confidential and not available to Applicant.
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`Applicant requests this Board issue an order compelling Opposer to produce any responsive
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`documents in his possession.
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`Applicant’s Request for Production No. 7: Opposer claims to have “adopted and used
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`the trademark CONCEPT LAW in the United States.” [DE 1, No. 2]. Applicant has requested
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`Opposer produce “a mailing list of those [attorneys in the United States] to whom newsletters or
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`other promotional materials were sent.” EXHIBIT A, No. 7. Opposer has provided a list of
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`names in his “EXHIBIT 4” with their email addresses redacted. See EXHIBIT D. Opposer has
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`not provided a way for Applicant to contact these individuals to confirm Opposer’s claims.
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`Opposer has also not provided grounds for asserting any kind of privilege with regard to the
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`email address of these attorneys.
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`Applicant submits that the contact information for these individuals are directly relevant
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`to Applicant’s claims and defenses. Applicant requests this Board issue an order compelling
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`Opposer to produce any responsive documents in his possession, including a non-redacted copy
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`of the email addresses and corresponding names.
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`Applicant’s Request for Production No. 12: Opposer claims to have “adopted and used
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`the trademark CONCEPT LAW in the United States.” [DE 1, No. 2]. Applicant has requested
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`Opposer produce “all documents sufficient to show the geographic scope of your business and
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`promotional activities using the Mark CONCEPT LAW.” EXHIBIT A, No. 12. Opposer has
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`provided a list of names in his “EXHIBIT 4” with their email addresses redacted. See EXHIBIT
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`D. Opposer has not provided a way for Applicant to contact these individuals to confirm
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`Opposer’s claims.
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`Applicant submits that the contact information for these individuals is directly relevant to
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`Applicant’s claims and defenses. Applicant requests this Board issue an order compelling
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`Opposer to produce any responsive documents in his possession, including a non-redacted copy
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`of the email addresses and corresponding names. .
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`CONCLUSION
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`The party resisting discovery “has a heavy burden of showing why the requested
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`discovery should not be permitted.” Henderson v. Holiday CVS, LLC, 269 F.R.D. 682, 685 (S.D.
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`Fla. 2010) (citing Rossbach v. Rundle, 128 F.Supp.2d 1348, 1354 (S.D.Fla.2000) (“The onus is
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`on the party resisting discovery to demonstrate specifically how the objected-to information is
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`unnecessary, unreasonable or otherwise unduly burdensome.”); Dunkin’ Donuts, Inc. v. Mary’s
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`Donuts, Inc., 2001 WL 34079319 (S.D.Fla.2001) (“the burden of showing that the requested
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`information is not relevant to the issues in the case is on the party resisting discovery”) (citation
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`omitted); Gober v. City of Leesburg, 197 F.R.D. 519, 521 (M.D.Fla.2000) (“The party resisting
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`production of information bears the burden of establishing lack of relevancy or undue burden in
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`supplying the requested information”).
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`Opposer’s objections serve no purpose other than to prolong the proceedings and cause
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`Applicant to consume the resources of this Board. Such actions should be stopped and Opposer
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`should be made to live with the lack of evidence he is putting forth in the case he brought. For
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`the foregoing reason, Applicant asks this Board to issue an order demanding Opposer provide
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`responses to Applicant’s requests or limit his case to what has been produced to date.
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`Dated: February 20, 2015
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`Respectfully submitted,
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`The Concept Law Group, P.A.
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`By:
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`/Scott D. Smiley/
`Scott D. Smiley
`Museum Plaza
`200 South Andrews Avenue, Suite 100
`Fort Lauderdale, FL 33301
`Info@ConceptLaw.com
`(754) 300-1500
`
`Attorney for Applicant,
`The Concept Law Group, P.A.
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`Page 11 of 13
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`Certificate Of Good Faith Conference
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`Pursuant to Rule 37(a)(2), Federal Rules of Civil Procedure, counsel for Applicant certifies that
`he has in good faith attempted to confer with Opposer in an attempt to resolve the matters raised
`in this Motion but that Applicant and Opposer have been unable to agree to a resolution.
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`Page 12 of 13
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`Certificate of Mailing and Service
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` I
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` certify that on February 20, 2015, the foregoing MOTION TO COMPEL is being
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`served by email to:
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`Andrey Pinsky
`Pinsky Law
`Suite 900 45 Sheppard Avenue East
`Toronto, ONT M2N5W9
`CANADA
`andrey@pinskylaw.ca
`(416) 221-2600
`
`
`
`
`/Scott D. Smiley/
`Scott D. Smiley
`Museum Plaza
`200 South Andrews Avenue
`Suite 100
`Fort Lauderdale, FL 33301
`Info@ConceptLaw.com
`(754) 300-1500
`
`Attorney for Applicant,
`The Concept Law Group, P.A.
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`By:
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`Page 13 of 13
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`EXHIBIT A
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`EXHIBIT AEXHIBIT A
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ANDREY PINSKY,
`
`Opposer,
`
`V.
`
`THE CONCEPT LAW GROUP, P.A.
`
`Applicant.
`
`Opposition No. 91216258
`
`Mark: THE CONCEPT LAW GROUP,
`P.A. PATENTS COPYRIGHTS
`
`TRADEMARKS (+ Design)
`
`Serial No. 86/023,378
`
`OPPOSER'S REPLY TO APPLICANT'S FIRST REQUEST
`FOR PRODUCTION OF DOCUMENTS
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`Pursuant to Trademark Rule of Practice 2.120 (37 U.S.C. § 2.120), Trademark Trial and Appeal
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`Board Manual of Procedure § 408, and Federal Rule of Civil Procedure 34, OPPOSER, Andrey
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`Pinsky, provides APPLICANT, The Concept Law Group, P.A., and its lawyer SCOTT D.
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`SMILEY, who is the actual APPLICANT, with a reply to APPLICANT'S first request for
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`production of documents.
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`GENERAL OBJECTIONS
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`The following General Objections apply to every paragraph of Applicant's First Request for
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`Production of Documents:
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`Opposer objects to every request
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`that calls for privileged information,
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`including, without
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`limitation, information protected by the lawyer-client privilege.
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`Opposer objects to every request that calls for information prepared in anticipation of litigation
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`or for trial absent a showing of substantial need by Applicant.
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`Opposer objects to every request that calls for the production of any information containing or
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`reflecting the mental impressions, conclusions, opinions and/or legal theories of Opposer, on
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`the grounds that such information is protected by the lawyer work product doctrine.
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`Page 1 of 22
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`Opposer objects to every request
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`that
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`is overly broad, unduly burdensome, harassing,
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`duplicative or which requests documents which are already in the possession of Applicant or its
`
`lawyer, Scott D. Smiley, who is the actual Applicant.
`
`Opposer objects to every request that calls for information which is neither relevant to the
`
`subject matter of the pending Opposition, nor reasonably calculated to lead to the discovery of
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`admissible evidence in connection with the pending Opposition.
`
`Opposer objects to every request, and to every introductory "definition" or "instruction," that
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`seeks to impose obligations beyond those required by the Federal Rules of Civil Procedure, as
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`reasonably interpreted and supplemented by the Trademark Trial and Appeal Board's rules.
`
`Opposer expressly reserves the right to supplement these responses as additional information
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`becomes available upon further investigation or through discovery.
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`RESPONSES TO REQUESTS FOR PRODUCTION
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`Subject to and without waiver of the foregoing General Objections, Opposer responds to
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`Defendants’ specific Requests for Production as follows:
`
`DOCUMENT REQUEST NO. 1: Produce one copy of each advertising, marketing, and
`promotional material showing your use of the Mark CONCEPT LAW prior to October 24, 2012,
`including but not limited to web pages, catalogs, circulars, leaflets, direct mail pieces, brochures,
`point of sale pieces, press releases, web-based advertisements (including but not limited to banner
`ads), newspaper and magazine advertisements and articles, transcripts and audio tapes for radio
`advertisements, and transcripts and videotapes of television advertisements in the United States.
`
`RESPONSE
`
`Opposer objects to this Request on the grounds that it is overly broad, unduly burdensome, not
`
`sufficiently narrowed in time, designed to harass and annoy, not reasonably calculated to obtain
`
`discoverable evidence and that compliance with the request would be unduly burdensome to
`
`Opposer and would outweigh any probative value of the evidence sought to be obtained in
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`Page 2 of 22
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`

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`connection with said Request. Without waiving any of the foregoing objections, Opposer
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`provides some of the requested documents as EXHIBIT 1.
`
`DOCUMENT REQUEST NO. 2: Produce all documents evidencing your admission to any bar
`association and other lawyer regulating organization, including any state in the United States,
`Canada, and the United States Patent and Trademark Office.
`
`RESPONSE
`
`Documents related to admission to practice before the United States Patent and Trademark Office
`
`("USPTO") are on file with the Enrolment and Discipline Office of the USPTO. Also, see
`
`EXHIBIT 2.
`
`DOCUMENT REQUEST NO. 3: Produce all documents evidencing your qualifications or
`credentials allowing you to provide legal services in the United States.
`
`RESPONSE
`
`Documents related to admission to practice before the United States Patent and Trademark Office
`
`("USPTO") are on file with the Enrolment and Discipline Office of the USPTO. Also, see
`
`EXHIBIT 2.
`
`DOCUMENT REQUEST NO. 4: Produce all non-privileged documents not subject to attorney-
`client confidentiality referring to or relating to patent or trademark applications filed in the United
`States Patent and Trademark Office by you on behalf of your clients.
`
`RESPONSE
`
`Opposer provides some of the requested documents available in the public domain as
`
`EXHIBIT 2.
`
`DOCUMENT REQUEST NO. 5: Produce all documents referring or relating to legal services
`you have provided in the United States under the Mark CONCEPT LAW.
`
`RESPONSE
`
`Opposer objects to this request on the grounds that it seeks the disclosure of information
`
`protected from discovery by the lawyer-client privilege and the lawyer work product doctrine.
`
`Moreover, recent cases of the Federal Circuit in First Niagara Insurance Brokers, Inc., v. First
`
`Page 3 of 22
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`

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`Niagara Financial Group, Inc., 476 F.3d 867 (Fed. Cir. 2007), and National Cable Television
`
`Association V. American Cinema Editors, Inc., 937 F.2d 1572, 1578 n.4 (Fed. Cir. 1991) re-
`
`affirmed that a foreign service trademark owner only needs to show use of trademark in the United
`
`States to prevail
`
`in an opposition proceedings. Opposer has already provided Applicant with
`
`substantial evidence of use of the Canadian registered trademark CONCEPT LAW in the United
`
`States and will not allow Applicant and its lawyer Scott D. Smiley, who is the actual Applicant, to
`
`bring this opposition outside perimeters of the current trademark law in the United States. Without
`
`waiving any of the foregoing objections, Opposer provides some of the requested documents as
`
`EXHIBIT 3.
`
`DOCUMENT REQUEST NO. 6: Produce all documents referring or relating to any rented,
`leased, owned, or otherwise occupied real estate in the United States used in connection with your
`providing of legal services in the United States under the Mark CONCEPT LAW.
`
`RESPONSE
`
`Opposer objects to this Request on the grounds that it is irrelevant to the issues in the current
`
`opposition proceeding and is not reasonably calculated to obtain discoverable evidence and that
`
`compliance with the request would be unduly burdensome to Opposer and would outweigh any
`
`probative value of the evidence sought to be obtained in connection with said Request. Recent
`
`cases of the Federal Circuit in First Niagara Insurance Brokers, Inc., v. First Niagara Financial
`
`Group,
`
`Inc., 476 F.3d 867 (Fed. Cir. 2007), and National Cable Television Association v.
`
`American Cinema Editors, Inc., 937 F.2d 1572, 1578 n.4 (Fed. Cir. 1991) re-affirmed that a foreign
`
`service trademark owner only needs to show use of trademark in the United States to prevail in an
`
`opposition proceedings. Opposer has already provided Applicant with substantial evidence of use
`
`of the Canadian registered trademark CONCEPT LAW in the United States and will not allow
`
`Applicant and its lawyer Scott D. Smiley, who is the actual Applicant, to bring this opposition
`
`outside perimeters of the current trademark law in the United States.
`
`Page 4 of 22
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`

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`
`
`H’'$‘“?,x.,,5
`
`DOCUMENT REQUEST NO. 7: Produce all documents relating to newsletters or other
`promotional materials using the Mark CONCEPT LAW that you distributed to attorneys in the
`United States prior to October 24, 2012, including a mailing list of those to whom newsletters or
`other promotional materials were sent.
`
`RESPONSE
`
`Opposer objects to this Request on the grounds that it is overly broad, unduly burdensome, not
`
`sufficiently narrowed in time, designed to harass and annoy, not reasonably calculated to obtain
`
`discoverable evidence and that compliance with the request would be unduly burdensome to
`
`Opposer and would outweigh any probative value of the evidence sought to be obtained in
`
`connection with said Request. Opposer further objects to the request to provide mailing list on
`
`the grounds that it seeks the disclosure of information protected from discovery by the lawyer-
`
`client privilege and the lawyer work product doctrine. Without waiving any of the foregoing
`
`objections, Opposer provides some of the requested documents as EXHIBIT 1 and the list of
`
`attorneys as EXHIBIT 4.
`
`DOCUMENT REQUEST NO. 8: Produce all documents relating to newsletters or other
`promotional materials using the Mark CONCEPT LAW that you distributed to non-attorneys in the
`United States prior to October 24, 2012, including a mailing list of those to whom newsletters or
`other promotional materials were sent.
`
`RESPONSE
`
`Opposer objects to this request on the grounds that it seeks the disclosure of information
`
`protected from discovery by the lawyer-client privilege and the lawyer work product doctrine.
`
`DOCUMENT REQUEST NO. 9: Produce all documents relating to any incident or
`proceeding in which you have challenged the rights of a third party based on any rights you
`claim to or in the Mark CONCEPT LAW, including but not limited to any demands to cease
`and desist, and any responses thereto.
`
`RESPONSE
`
`Opposer provides some of the requested documents as EXHIBIT 5.
`
`10.
`
`DOCUMENT REQUEST NO. 10: Produce all documents evidencing your use of the Mark
`CONCEPT LAW in the United States for:
`legal consultation services;
`legal document
`
`Page 5 of 22
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`

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`V,
`
`Y
`
`I,
`
`intellectual property consulting
`legal services, namely,
`legal services;
`preparation services;
`services in the field of identification, strategy, analytics, and invention; legal services, namely,
`preparation of applications for
`trademark registration;
`legal services, namely,
`trademark
`maintenance services; and legal services, namely, trademark searching and clearance services.
`
`RESPONSE
`
`Opposer objects to this Request on the grounds that it is overly broad, unduly burdensome, not
`
`sufficiently narrowed in time, designed to harass and annoy, not reasonably calculated to obtain
`
`discoverable evidence and that compliance with the request would be unduly burdensome to
`
`Opposer and would outweigh any probative value of the evidence sought to be obtained in
`
`connection with said Request. Opposer further objects to the request to provide mailing list on
`
`the grounds that it seeks the disclosure of information protected from discovery by the lawyer-
`
`client privilege and the lawyer work product doctrine. Without waiving any of the foregoing
`
`objections, Opposer provides some of the requested documents as EXHIBIT 1.
`
`ll.
`
`DOCUMENT REQUEST NO. 11: Produce all documents sufficient to show your annual
`expenditures on advertising and mark