Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA621352
`ESTTA Tracking number:
`08/14/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91216258
`Plaintiff
`Andrey Pinsky
`ANDREY PINSKY
`PINSKY LAW
`SUITE 900 45 SHEPPARD AVENUE EAST
`TORONTO, ON M2N5W9
`CANADA
`andrey@pinskylaw.ca
`Other Motions/Papers
`Andrey Pinsky
`andrey@pinskylaw.ca
`/Andrey Pinsky/
`08/14/2014
`Opposer's Declaration Part I (Exhibits 1-25).pdf(3276189 bytes )
`Opposer's Declaration Part II (Exhibits 26-42).pdf(3479185 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`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
`
`DECLARATION OF ANDREY PINSKY
`
`DATED AUGUST 11, 2014
`
`1.
`
`Evidence in Support of the Petition Opposing Registration of the Trademark
`The Concept Law Group, P.A. Patents Copyrights Trademarks (+Design)
`
`I, Andrey Pinsky, of Toronto, Ontario, Canada, HEREBY DECLARE THAT:
`
`1.
`
`I am the Opposer in this opposition proceeding. Therefore, I have knowledge of
`
`matters to which I hereafter depose except where I expressly state that my
`
`knowledge is based on information and belief.
`
`In such circumstances I will
`
`identify the basis of my information and belief.
`
`2.
`
`I am an intellectual property and business lawyer licensed to practice in Ontario,
`
`Canada.
`
`I am admitted to practice before the Canadian Intellectual Property
`
`Office and the United States Patent and Trademark Office (USPTO). I provide my
`
`intellectual property and business law services to residents of Canada, to residents
`
`of the United States of America, and to international clients.
`
`DJ
`
`Since January 27, 2010,
`
`I have been advertising my intellectual propeity and
`
`business law services in the United States of America inter alia via my newsletter
`
`Page 1 of 16
`
`

`
`titled CONCEPT LAW.
`
`I used the newsletter to demonstrate my expertise in
`
`Canadian intellectual property and business law and to advertise, promote and
`
`offer my intellectual property and business law services to the residents of the
`
`United States of America in association with the trademark CONCEPT LAW.
`
`l
`
`have attached to this Declaration (Exhibit 1 through Exhibit 12) documents that
`
`demonstrate samples of advertisements distributed in association with the
`
`trademark CONCEPT LAW and that also demonstrate the date of first use
`
`(January 27, 2010) of the trademark CONCEPT LAW in the United States of
`
`America.
`
`Exhibit 1
`
`Exhibit 2
`
`Exhibit 3
`
`Exhibit 4
`
`Exhibit 5
`
`Exhibit 6
`
`Copy of the advertisement of legal services distributed in the United
`States of America in January 2010 in association with the trademark
`CONCEPT LAW.
`
`Copy of the advertisement of legal services distributed in the United
`States of America in February 2010 in association with the trademark
`CONCEPT LAW.
`
`Copy of the advertisement of legal services distributed in the United
`States of America in March 2010 in association with the trademark
`CONCEPT LAW.
`
`Copy of the advertisement of legal services distributed in the United
`States of America in April 2010 in association with the trademark
`CONCEPT LAW.
`
`Copy of an announcement email accompanying advertisement of
`legal services in the United States of America in association with the
`trademark CONCEPT LAW. The email provided a hyperlink back to
`the website www.pinskylaw.ca.
`
`Copy of the page titled News of the website www.pinskylaw.ca
`archived by www.archive.org and www.wavbackmachinecom on
`February ll, 2010, showing a sample of the CONCEPT LAW
`trademark.
`
`Exhibit 7
`
`Copy of the page titled News of the website www.pinskylaw.ca
`archived by www.archive.org and www.wavbackmachinecom on
`
`Page 2 of 16
`
`

`
`Exhibit 8
`
`Exhibit 9
`
`Exhibit 10
`
`Exhibit 1 1
`
`Exhibit 12
`
`April 12, 2010, showing a sample of the CONCEPT LAW trademark.
`
`Copy of the page titled Sitemap of the website www.pinskylaw.ca
`archived by www.archive.org and www.waybackmachine.com on
`February 11, 2010, showing a sample of the CONCEPT LAW
`trademark.
`
`in
`to attorney Reggie Borkum on January 25, 2010,
`Email sent
`relation to legal
`services provided to his client and copies of
`advertisement of legal
`services
`sent
`to him and his client
`in
`association with the trademark CONCEPT LAW.
`
`This advertisement of legal services in the USA, led on January 27,
`2010, to a sale of services under the trademark CONCEPT LAW to a
`client located in Las Vegas, Nevada 89117, USA. Payment for the legal
`services was received on or around February 25, 2010.
`
`Further advertisement of legal services in the USA, led on May 12,
`2010, to a sale of services under the trademark CONCEPT LAW to a
`client located in Lake Charles, Louisiana 70601, USA. Payment for
`the legal services was received on or around June 1 1, 2010.
`
`Copy of Canadian trademark application cost estimate distributed
`semiannually in the USA to potential clients and to clients together
`with a retainer agreement.
`
`Copy of Canadian intellectual property schedule of fees distributed
`semiannually in the USA together with advertisement under the
`trademark CONCEPT LAW.
`
`4.
`
`1 clearly marked CONCEPT LAW as my trademark in the advertisements of legal
`
`services distributed in the United States of America and in the emails with which
`
`the advertisements were distributed.
`
`1 used the trademark CONCEPT LAW to
`
`identify my intellectual property and business law services offered, distributed.
`
`and sold to the residents of the United States of America.
`
`5.
`
`1 used the trademark CONCEPT LAW in association with advertisement,
`
`offering, and sale of my intellectual property and business law services in the
`
`form exhibited in the samples below:
`
`Page 3 of 16
`
`

`
`CONCEPT LAW 1“
`
`~/,1,/J‘
`(“e
`C°NcEP'E'§
`go
`~§°<§
`
`/3*
`
`6.
`
`As indicated above, between January 27, 2010 and June 11, 2010,
`
`I sold my
`
`intellectual property and business law services in association with the trademark
`
`CONCEPT LAW to the residents of the United States of America.
`
`7.
`
`Since January 27, 2010, and to date, on a continuous basis, 1 have been adverting,
`
`offering, and selling my intellectual property and business law services in
`
`association with the trademark CONCEPT LAW to the residents of the United
`
`States of America.
`
`8.
`
`I have attached to this Declaration affidavits and declarations (Exhibit 13 through
`
`Exhibit 28) provided by the United States of America patent and trademark
`
`attorneys, which evidence my date of first use (January 27, 2010) of the
`
`trademark CONCEPT LAW in the United States of America and which support
`
`my Petition opposing registration of the trademark "The Concept Law Group,
`
`P.A. Patents Copyrights Trademarks (+ Design)" (serial No. 86/023,378). All
`
`declarations and all affidavits listed below will be filed with the Trademark Trial
`
`and Appeal Board as a separate submission.
`
`Exhibit 13
`
`Declaration of Elliot C. Alderman, copyright and trademark attorney
`and partner of Alderman Law, Washington, DC. Telephone number
`(202) 973-0188.
`
`Exhibit 14
`
`Affidavit of Grady K. Bergen, patent and trademark attorney and
`
`Page 4 of 16
`
`

`
`Exhibit 15
`
`Exhibit 16
`
`Exhibit 17
`
`Exhibit 18
`
`Exhibit 19
`
`Exhibit 20
`
`partner of Griggs Bergen LLP, Dallas, TX. Telephone number (214)
`665-9568.
`
`Declaration of D. Whitlow Bivens, intellectual property attorney and
`partner of Musick Peeler, San Diego, CA. Telephone number (619)
`525-2553.
`
`Affidavit of William M. Borcliard, intellectual property attorney and
`partner of Cowan, Liebowitz, Latman, New York, NY. Telephone
`number (212) 790-9290.
`
`Affidavit of Jonathan M. D’Si1va, patent and trademark attorney and
`associate of law firm MacDonald lllig, Erie. PA. Telephone number
`(814) 870-7715.
`
`Affidavit of Aaron A. Fishman, patent and trademark attorney and
`partner of law firm Pearne Gordon LLP. Cleveland, OH. Telephone
`number (216) 579-1700.
`
`Affidavit of Thomas D. Foster, patent and trademark attorney and
`president of law firm Foster & Associates, San Diego, CA. Telephone
`number (858) 922-2170.
`
`Affidavit of Richard J. Gurak, patent and trademark attorney and
`partner of law firm Huscli Blackwell LLP, Chicago. IL. Telephone
`number (312) 526-1574.
`
`Exhibit 21
`
`Affidavit of Erik J. Heels, patent and trademark attorney and partner
`of law firm Clock Tower Law Group, Maynard. MA. Telephone
`
`number (978) 823-0008.
`
`Exhibit 22
`
`Exhibit 23
`
`Exhibit 24
`
`Exhibit 25
`
`Affidavit of Scott H. Kaliko, patent and trademark attorney and
`partner of
`law firm Kaliko & Associates LLC, Ramsey, NJ.
`Telephone number (201) 962-3570.
`
`Affidavit of Marvin H. Kleinberg, patent and trademark attorney and
`partner of law firm Kleinberg & Lerner LLP, Los Angeles, CA.
`Telephone number (310) 557-1511 x 3017.
`
`Declaration of Bert P. Krages ll, patent and trademark attorney
`practicing as a sole practitioner, Portland, OR. Telephone number
`(503) 597-2525.
`
`Affidavit of Mark H. Miller, patent and trademark attorney and
`partner of law firm Jackson Walker LLP. San Antonio, TX.
`Telephone number (210) 978-7751.
`
`Page 5 of 16
`
`

`
`Exhibit 26
`
`Exhibit 27
`
`Affidavit of James J. Murphy, patent and trademark attorney and
`counsel
`to law firm Thompson Knight, Dallas, TX. Telephone
`number (214) 969-1749.
`
`Affidavit of Joel D. Skinner, patent and trademark attorney and
`member of law firm Skinner & Associates, Hudson, WI. Telephone
`number (715) 386-5800.
`
`Exhibit 28
`
`Affidavit of Miguel Villarreal Jr., patent and trademark attorney and
`member of law firm Gunn, Lee & Cave P.C., San Antonio, TX.
`
`Telephone number (210) 886-9500.
`
`9.
`
`1 have attached to this Declaration copies of my letters to Scott D. Smiley
`
`(Exhibit 29 and Exhibit 30),
`
`the attorney for the Applicant
`
`in the current
`
`opposition proceeding. In the letters I advised Mr. Smiley not
`
`to register his
`
`trademarks:
`
`(a) The Concept Law Group, P.A. Patents Copyrights Trademarks (+
`
`Design);
`
`(b) Concept Law;
`
`(0) The Concept Law Group.
`
`10.
`
`I sent my letters to Mr. Smiley on June 13, 2011, and September 21, 2013. I also
`
`sent a copy of my first letter to Mr. Smiley dated June 13, 2011, to Mr. Frank
`
`Lattuca,
`
`the attorney in charge of Mr. Smiley’s trademark application at
`
`the
`
`USPTO (Exhibit 31).
`
`Exhibit 29
`
`Exhibit 30
`
`Letter dated June 13, 2011, sent to Scott D. Smiley. the attorney for
`the Applicant in the current opposition proceeding, in respect of his
`application for the trademark "The Concept Law Group".
`
`the
`to Scott D. Smiley.
`Letter dated September 13, 2013, sent
`in
`attorney for the Applicant in the current opposition proceeding,
`respect of his application for the trademark "The Concept Law
`Group, P.A. Patents Copyrights Trademarks (,+ Design)".
`
`Page 6 of 16
`
`

`
`Exhibit3l
`
`to Frank Lattuca, the attorney in
`Letter dated June 15, 2011, sent
`charge of the trademark application for the trademark "The Concept
`Law Group".
`
`II.
`
`ll.
`
`12.
`
`14.
`
`15.
`
`Scott D. Smiley Several Times Deliberately Mislead, Deceived and Defrauded
`United States Patent and Trademark Office and the State of Florida
`
`Trademark Registry
`
`According to information provided on the Internet by Scott D. Smiley himself,
`
`between April 2007 and December 2010, he was employed as a lawyer at
`
`intellectual property law firm Mayback & Hoffman, P.A.
`
`As indicated above, in January 2010, I began to advertise my intellectual property
`
`and business law services in the United States of America in association with the
`
`trademark CONCEPT LAW.
`
`Scott D. Smiley,
`
`the attorney for
`
`the Applicant
`
`in the current Opposition
`
`proceeding, was on the list of recipients of my promotional materials for legal
`
`services, price lists for legal services as well as newsletters. all of which were
`
`distributed under the trademark CONCEPT LAW.
`
`Scott D. Smiley was receiving my promotional materials every month between
`
`January 2010 and December 2010 until he left Mayback & Hoffman. PA.
`
`in
`
`December of 2010 to start his own practice.
`
`On January 1, 201 1, Scott D. Smiley incorporated a professional corporation titled
`
`"Scott Smiley. PA." and went into practice of law as a sole practitioner.
`
`Exhibit 32
`
`Articles of incorporation of the professional corporation owned by
`Scott D. Smiley under the business name "Scott Smiley. P.A."
`
`Page 7 of 16
`
`

`
`Despite his knowledge of my trademark CONCEPT LAW and its use in the
`
`United States, on January 18, 2011, Scott D. Smiley suddenly filed articles of
`
`amendment and changed the business name of his professional corporation from
`
`"Scott Smiley, PA." to "The Concept Law Group, P.A."
`
`Exhibit 33
`
`Articles of amendment changing the business name of the professional
`corporation owned by Scott D. Smiley from "Scott Smiley, PA." to
`“The Concept Law Group, P.A."
`
`17.
`
`Despite his knowledge of my trademark CONCEPT LAW and its use in the
`
`United States, Scott D. Smiley, on January 19, 2011, in bad faith filed a trademark
`
`application with the USPTO for
`
`the trademark "Concept Law“ (application
`
`#8522101 1). Scott D. Smiley deliberately falsely claimed the date of first use of
`
`this trademark in commerce as January 13, 2011. Having realized that he had no
`
`evidence to substantiate the date of first use of his trademark in commerce he
`
`declared in the trademark application, Mr. Smiley voluntarily abandoned this
`
`trademark application on February 12, 201 1.
`
`Exhibit 34
`
`Trademark application for the trademark "Concept Law" filed by
`Scott D. Smiley.
`
`Request for express abandonment of the trademark application for the
`trademark "Concept Law" filed by Scott D. Smiley on February 12.
`2011.
`
`18.
`
`Despite his knowledge of my trademark CONCEPT LAW and its use in the
`
`United States, Scott D. Smiley on February 1, 2011, in bad faith filed a trademark
`IV‘
`lhe Concept Law
`
`application with
`
`the USPTO for
`
`the
`
`trademark
`
`Group"(application #85230890). Scott D. Smiley deliberately falsely claimed the
`
`date of first use of this trademark in commerce as January 13, 201 1.
`
`Page 8 of 16
`
`

`
`Exhibit 35
`
`Trademark application for the trademark "The Concept Law Group"
`filed by Scott D. Smiley.
`
`19.
`
`On May 3, 2011, the USPTO sent to Scott D. Smiley a letter advising l\/lr. Smiley
`
`that his trademark application for the trademark "The Concept Law Group" was
`
`refused its registration inter alia because:
`
`(a) a eonflicting trademark application for the trademark "Koncept" was
`
`previously filed by a lawyer named Douglas Burda; and
`
`(b) Scott D. Smiley deliberately falsified a specimen he submitted with
`
`his trademark application for the trademark "The Concept Law
`
`Group".
`
`Exhibit 36
`
`A letter in respect of the trademark “The Concept Law Group" sent
`by the USPTO to Scott D. Smiley.
`
`Notice of abandonment
`
`in respect of the trademark “The Concept
`
`Law Group".
`
`20.
`
`On May 18, 2011, Scott D. Smiley, despite his knowledge of my trademark
`
`CONCEPT LAW and its use in the United States, and despite receipt of the letter
`
`from the USPTO refusing registration of his trademark "The Concept Law
`
`Group" for the reasons identified above,
`
`in bad faith filed with the State of
`
`Florida's trademark registry a trademark application for
`
`the trademark "The
`
`Concept Law Group". Scott D. Smiley deliberately falsely claimed the date of
`
`first use of this trademark in commerce as January 13, 201 1.
`
`Exhibit 37
`
`Trademark application for the trademark "The Concept Law Group"
`filed by Scott D. Smiley with the State of Florida trademark registry.
`
`Page 9 of 16
`
`

`
`21.
`
`Scott D. Smiley failed to disclose to the authorities of the State of Florida that his
`
`trademark application with the USPTO for the trademark "The Concept Law
`
`Group" was refused its registration by the USPTO because:
`
`(a) a conflicting trademark application for the trademark "Koncept" was
`
`previously filed by the lawyer named Douglas Burda; and
`
`(b) Scott D. Smiley deliberately falsified a specimen he submitted with
`
`his trademark application for the trademark "The Concept Law
`
`Group".
`
`22.
`
`Scott D. Smiley willfully and deliberately mislead, deceived. and defrauded the
`
`authorities of the State of Florida about the status of his USPTO trademark
`
`application for the trademark "The Concept Law Group“ and in bad faith relied
`
`(as demonstrated by the handwritten note on the first page of the Florida
`
`application) on his USPTO trademark application without disclosing the problems
`
`with that trademark application.
`
`23.
`
`Scott D. Smiley also failed to disclose to the authorities of the State ofFlorida that
`
`he had knowledge of my trademark CONCEPT LAW and its use in the United
`
`States of America.
`
`24.
`
`Accordingly. based on the information provided above.
`
`I believe that
`
`the
`
`trademark certificate (LTIIOOOOOOSO4) which was issued to Mr. Smiley by the
`
`State ofFlorida on May 19, 201 l, is invalid ab I'm’/1'0 as fraudulently obtained.
`
`Exhibit 38
`
`Trademark certificate issued to Scott D. Smiley by the State of
`Florida on May 19, 2011.
`
`Page l0 of l6
`
`

`
`Scott D. Smiley did not return to the authorities of the State of Florida the invalid
`
`and fraudulently obtained certificate of registration for
`
`the trademark "The
`
`Concept Law Group".
`
`26.
`
`On June 13, 2011, Scott D. Smiley received from me a cease and desist letter
`
`(Exhibit 29) in which 1 demanded that Scott D. Smiley:
`
`(a) stop his use of the trademark "Concept Law"; and
`
`(b) voluntarily abandon his trademark application for the trademark
`
`"The Concept Law Group" tiled with the USPTO.
`
`27.
`
`28.
`
`29.
`
`Scott D. Smiley did not provide a reply to the cease and desist letter dated June
`
`13,2011.
`
`However, Scott D. Smiley abandoned his use of the trademark "Concept Law"
`
`and voluntarily abandoned his trademark application with the USPTO for the
`
`trademark "The Concept Law Group".
`
`On November 4, 201 1, the USPTO cancelled Mr. Smiley's trademark application
`
`(Exhibit 36) for the trademark "The Concept Law Group".
`
`On
`
`September
`
`1,
`
`201 1,
`
`Scott D.
`
`Smiley
`
`purchased
`
`domain
`
`name
`
`<www.smileyip.com> and began to Lise it as the primary domain name of his law
`
`ti rm .
`
`Exhibit 39
`
`concerning the domain
`Information (with date of purchase)
`www.smileyip.com bought by Scott D. Smiley.
`
`31.
`
`On September 12, 201 1, Scott D. Smiley tiled articles of amendment and changed
`
`the business name of his professional corporation from "The Concept Law Group.
`
`Page 11 of 16
`
`

`
`P.A." to "The Smiley IP Law Group, P.A.". Mr. Smiley continued to use
`
`<www.smileyip.com> as his law firm’s primary domain name.
`
`Exhibit 40
`
`the
`name of
`changing the business
`Articles of amendment
`professional corporation owned by Scott D. Smiley from "The
`Concept Law Group, PA." to "The Smiley IP Law Group, PA."
`
`32.
`
`Since September l2. 201 l, to date, the legal business name of Scott D. S1niley's
`
`professional corporation has been "The Smiley IP Law Group. P.A." as indicated
`
`by the annual corporate filings which were personally filed by Scott D. Smiley
`
`with the State ofF1orida.
`
`Exhibit 41
`
`Annual corporate reports concerning Scott D. Smiley‘s professional
`corporation "The Smiley IP Law Group. P.A." for the years 2014.
`20l3 and 2012 personally filed by Scott D. Smiley with the State of
`Florida.
`
`33
`
`ln September 201 l,
`
`I filed with the Trademark Trial and Appeal Board of the
`
`USPTO a petition for cancellation (proceeding #9205455l) of a confusing
`
`trademark "Koncept" registered in the United States of America in association
`
`with legal services by the lawyer Douglas Burda.
`
`34.
`
`Twenty United States of America patent and trademark lawyers gave affidavits
`
`and declarations testifying as to the date of first use by me of the trademark
`
`CONCEPT LAW in the United States in association with my intellectual property
`
`and business law services and supporting my petition to cancel registration of the
`
`trademark "Koncept" registered by the lawyer Douglas Burda.
`
`35.
`
`Douglas Burda listed Scott D. Smiley in the abovementioned trademark
`
`cancellation proceeding as his main witness. Therefore, Mr. Smiley at all material
`
`times was and is very well aware of my trademark CONCEPT LAW and its use in
`
`Page 12 of 16
`
`

`
`both the United States of America and in Canada in association with legal
`
`services.
`
`According to the personal written admissions made by Scott D. Smiley. he
`
`carefully studied the materials
`
`submitted in
`
`the
`
`cancellation proceeding
`
`concerning the trademark "Koncept".
`
`Exhibit 42
`
`Letter sent by Scott D. Smiley on September 23, 2013,
`Opposer, Andrey Pinsky.
`
`to the
`
`37.
`
`1 prevailed in the cancellation proceeding and on July 31, 2012, the Commissioner
`
`of Trademarks on behalf of the USPTO cancelled the registration of the trademark
`
`"Koncept
`
`registered in the United States of America by the lawyer Douglas
`
`Burda.
`
`38.
`
`Based on the abovementioned information, it is my belief that Scott D. Smiley
`
`repeatedly and deliberately defrauded the USPTO by:
`
`(La) deliberately falsifying the date of first use in commerce of his
`
`trademark "Concept Law" (applications #85221011). The record of
`
`the trademark application shows that Scott D. Smiley does not have
`
`any evidence to prove the date of first use in commerce of his
`
`trademark as he alleged in his trademark application;
`
`(b) deliberately falsifying the specimen submitted with his trademark
`
`application for registration of his trademark "Concept Law".
`
`(c) deliberately falsifying the date of first use in commerce of his
`
`trademark "The Concept Law Group" (application #85230890). The
`
`record of the trademark application shows that Scott D. Smiley does
`
`Page 13 of 16
`
`

`
`not have any evidence to prove the date of first use in commerce of
`
`his trademark as he alleged in his trademark application; and
`
`(d) deliberately falsifying the specimen submitted with his trademark
`
`application for registration of his trademark "The Concept Law
`
`Group".
`
`39.
`
`Based on the abovementioned information,
`
`it
`
`is also my belief that Scott D.
`
`Smiley deliberately defrauded the State of Florida trademark registry by:
`
`(a) deliberately falsifying the date of first use in commerce of the
`
`Florida
`
`trademark
`
`"The Concept Law Group"
`
`(registration
`
`#Tll000000504). The record of the trademark application shows
`
`that Scott D. Smiley does not have any evidence to prove the date of
`
`first use in commerce of his trademark as he alleged in his trademark
`
`application;
`
`(b) deliberately falsifying the specimen submitted with his Florida
`
`trademark application for registration of his trademark "The Concept
`
`Law Group" (registration #Tl 1000000504,); and
`
`(c) deliberately falsifying the status of his USPTO trademark application
`
`for the trademark "The Concept Law Group". on which he relied
`
`submitting his Florida trademark application for the trademark "The
`
`Concept Law Group" (registration #Tl 1000000504).
`
`40.
`
`Prior to filing of his trademark applications for the trademarks “Concept Law",
`
`"The Concept Law Group" and his current
`
`trademark application for
`
`the
`
`Page 14 of 16
`
`

`
`trademark "The Concept Law Group, PA. Patents Copyrights Trademarks (,+
`
`Design)", Scott D. Smiley had a clear knowledge (spanning several years) that l
`
`have been advertising, offering for sale, and selling my legal services in the
`
`United States of America in association with the trademark CONCEPT LAW
`
`long before Scott D. Smiley adopted any ofhis trademarks.
`
`41.
`
`Despite his clear knowledge (spanning several years) of my trademark CONCEPT
`
`LAW and its use in the United States of America, Scott D. Smiley willfully and
`
`deliberately mislead, deceived, and defrauded the USPTO by:
`
`(at) three times attempting to register the trademarks which he had no
`
`legal right to use and/or register;
`
`(b) three times giving his personal declaration that he believes that "the
`
`applicant to be the owner ofthe tradeinarlr/servtee mark sought to be
`
`registered, ..... ..
`
`to the best ofhis/her knowledge and beliefno other
`
`person, firm, Corporation, or association has the right to use the
`
`mark in commerce. either in the identical,/orm thereof or in such
`
`near resemblance thereto as to be likely, when ttsecl on or
`
`in
`
`connection with the gooa’s/services o_/'sttCh other person,
`
`to Cause
`
`Con_fLtsion, or to cause mistake. or to deceive,‘ and that all statements
`
`made ofhis/her own knowledge are true." and that all statements
`
`made on information and beliefare believed to be true";
`
`(c) deliberately falsifying the date of tirst use in commerce of his
`
`trademark “Concept Law" (applications #8522101 1). The record of
`
`the trademark application shows that Scott D. Smiley does not have
`
`Page l5 ofl6
`
`

`
`any evidence to prove the date of first use in commerce of his
`
`trademark as he alleged in his trademark application;
`
`(d) deliberately falsifying the specimen submitted with his trademark
`
`application for registration of his trademark "Concept Law".
`
`(e) deliberately falsifying the date of first use in commerce oi‘ his
`
`trademark "The Concept Law Group" (application #85230890). The
`
`record of the trademark application shows that Scott D. Smiley does
`
`not have any evidence to prove the date of first use in commerce of
`
`his trademark as he alleged in his trademark application; and
`
`(t) deliberately falsifying the specimen submitted with his trademark
`
`application for registration of his trademark "The Concept Law
`
`Group".
`
`Andrey Pinsky
`
`U
`
`Datc
`
`Page 16 of 16
`
`

`
`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
`
`EXHIBIT 1 TO THE DECLARATION
`
`OF ANDREY PINSKY OF AUGUST 11, 2014
`
`

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`TEL; (410) 221 — 2600
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`PINSKY LAW
`
`
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`lntellectzral Prope/‘Irv Law
`
`CANADIAN NOVELTY AND OBVIOUSNESS STANDARDS
`
`U
`
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`
`Canadian Standard of Novelty
`
`By statute, Patent Act, RS C 1985. c. P--'1. as amended R.S.C
`i985, c. 33, s. 28.2, no patent may be valid if:
`
`t.
`
`2.
`
`3.
`
`4.
`
`The stibject matter was disclosed in an application filed by a
`third pei‘soti which has a “filing date" prior to the “claim date"
`of the application in qticstioii;
`The subject matter was disclosed in an application filed by a
`third party after the “claim date” but has claimed a “filing
`date” before the claim date by reason ofconventional priority;
`The subject matter was disclosed in im application filed by a
`tltird party before the “claim date";
`The subject matter was disclosed in an application tiled by the
`applicant, or someone deriving knowledge from the applicant,
`more than one year before the filing date,
`in such a manner
`that it became available to the public.
`
`The requirements 1 and 2 above create a first to tile system in Can-
`ada, whereby the first applicant. or one claiming earliest convert-
`tion priority, will get the patent. Applications will be made avail-
`able for public inspection 18 months after filing, tluis permitting a
`subsequent applicant the opportunity to consider what disclosures
`are made by a prior application and to attempt to make such dis-
`tiiictions a may be necessary.
`
`The requirements 3 and 4 above establish a principle of absolute
`iiovelt_v. A public disclosure of the invention by a third party, who
`has not derived it from the applicant at any time prior to the filing
`date (or deemed filing date if the application claims convention
`priority), will
`invalidate the patent. whereas the applicant has a
`grace period of one year prior to the filing date during which pe-
`riod the applicaiit, or soineoue deriving the information form the
`applicant, may make a public disclosure.
`
`Pursuant to s. 28.2 of the Patent Act, a person is not entitled to a
`patent lf(Et) the invention was known or used by others in Canada.
`or patented or described in a printed publication in Canada or a
`foreign country, before the invention thereof by the applicant for
`patent. To prove invalidity under s. 28.2 of the Patent Act, a chal-
`lenger itiust show
`'
`'
`’
`' " ‘_'
`'
`J
`'
`i
`
`
`The Supreme Court ofCanada in a decision given on November 6.
`2008,
`in the ease ,»lp0/cat‘ Inc. v S(IIl0_/f-.5:l’I1I/18/CIDO Canada //re.
`[2008] S.C.J. No, 63, gave through consideration of the issue of
`novelty which, with appropriate adjustments as to whether one
`looks at prior patents. printed publications and Canadian uses or
`sales. or simply at disclosures. can be said to be applicable to all
`issues of novelty This requires that the prior material both disclose
`and enable the claimed inveiition wherein two questions must be
`answered:
`
`1. What constitutes disclosure at
`novelty’?
`rd
`How much trial and error is permitted in respect of what
`disclosed’?
`
`the first stage of the test
`
`for
`
`is
`
`if the claim is disclosed to special
`in mind that.
`lt intist be kept
`advaiitages that a clainicd invention possesses. the prior disclosure
`must be read so as to deterimne whether that special advantage
`would have been disclosed to a person skilled in the art without
`trial or error. If trial and error or expcriinentation is required, the
`
`second question is how much. A noii-exhaustive test has been pro-
`posed by the Supreme Cotirt of (‘anada in ,-l;iaIr'.\’ Inc. v. Sunu_//1
`Siwtl/re/ubo Canada Inc. 12008] S.C.J No.
`(>3,
`to be applied and
`adjusted according to evidence‘
`
`l.
`
`2.
`
`3.
`
`4.
`
`Ennoblement is to be assessed having regard to the prior pat-
`ent as whole, including the specification and the claims;
`The skilled person may use his or her common general kiiowl-
`edge to supplement infortnation contained in the prior patent:
`The prior patent must provide enough information to allow
`the subsequently claimed invention to be performed without
`tiiidtie burden:
`
`Obvious errors or omissions in the prior art will not prevent
`enablement ifreasoiiable skill and kiio\vlcdge in the art could
`readily correct the error or find what was omitted.
`
`Canadian Standard of Obviousness
`
`S. 28.3. lnventioii must not be obvious — The subject matter defined
`by a claim in an application for 2) patent in Canada must be subject-
`inatter that would not have been obvious on the “claim date" to ct
`person skilled in the art or science to which it pertains, having re-
`gard to:
`
`(a)
`
`information disclosed tnore than one year before the "filing
`date" by the applicant. or by a person who obtained knowl-
`edge, directly or indirectly from the applicant in such a inan-
`tier that
`the information hecaiiie available to the public in
`Canada or elsewhere; and
`
`lb)
`
`information disclosed before the "claim date“ by it person not
`rnentioncd in paragraph (a) in such a manner that the informa-
`tioii became available to the public in Caiiada or elsewhere
`
`The Supretne Court of Canada in /i/J0/L’.\‘ Inc. v S(i/to/i-.8)wt/re/abu
`Canada Inc. [2008] S.C..l. No. ()3, November 0. 2008. has set forth
`the following approach to the issue ofobviousiiess:
`
`l(b).ldentify the “notional person skilled in the art".
`l(b).ldentify the relevant common general knowledge of
`person;
`
`that
`
`2.
`
`3.
`
`4.
`
`Identify the inventive concept of the claim in question or. if
`that cannot readily be done, constrtic it;
`identify what.
`if any differences exist between the matter
`cited as forming part of the “state of the art“ and the inventive
`concept oftlie claim or the claim as coiistriied;
`Viewed without any knowledge of the alleged invention as
`claimed, do those differences constitute steps which would
`have been obvious to the person skilled in the art or do they
`require any degree of invention’.’
`
`lfan “obvious to try“ test is warranted. then the Court sliotild apply
`a number of factors, including as non-exhaustive list:
`
`1.
`
`rd
`
`3.
`
`Is it more or less self-evident that what is being tried ought to
`work? Are there a finite number ofidentilicd predictable solu-
`tions known to persons skilled in the art"
`What
`is the extent, nature and ainonnt of effort required to
`achieve the invention‘?
`
`Is there a motive provided in the prior art to find the solution
`the patent addrcsses'?
`
`

`
`PINSKY LAW
`
`
`Busr'ne.rs 8 /nrel/ecIur1/ Property Law
`
`FILING A CANADIAN TRADEMARK APPLICATION
`
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`
`Filing Procedure
`
`Registration is obtained by the tiling of an application in proper
`form and submitting the appropriate fee. No application is
`awarded a tiling date