Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA796980
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`Filing date:
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`01/24/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91223190
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Attachments
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`Plaintiff
`Hatch Chile Company, Inc.
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`ROD D BAKER
`LAW OFFICE OF ROD D BAKER
`12126 HIGHWAY 14 N SUITE A7
`CEDAR CREST, NM 87008-9406
`UNITED STATES
`rdbaker@swcp.com
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`Other Motions/Papers
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`Rod D. Baker
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`rdbaker@swcp.com
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`/Rod D. Baker/
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`01/24/2017
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`Reply Brief.pdf(100475 bytes )
`HCC Ex A.pdf(359524 bytes )
`HCC Ex B.pdf(916086 bytes )
`HCC Ex C.pdf(891321 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91223190
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`HATCH CHILE COMPANY, INC., )
`Opposer-Plaintiff,
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`v.
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`HATCH CHILE ASSOCIATION,
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`Applicant-Defendant.
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`OPPOSER’S REPLY IN SUPPORT OF ITS PETITION TO DISQUALIFY PURSUANT
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`TO TBMP 513.02
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`Hatch Chile Company, Inc. (“HCC”), hereby replies to Applicant’s Opposition to
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`Opposer’s Petition to Disqualify (“Opposition brief”). HCC respectfully requests that its Petition
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`to Disqualify be granted. HCC’s concerns are directed to a conflict of interest impacting the here
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`and now, is timely under the circumstances, and is meritorious but not – as Hatch Chile
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`Association (“HCA”) contends – with spite or “bad faith.”
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`ARGUMENT
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`One of an adjudicator’s responsibilities is to ensure that attorneys who appear before it
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`preserve the public's confidence in its adjudication system. See, e.g., Tessier v. Plastic Surgery
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`Specialists, Inc., 731 F.Supp. 724, 729 (E.D.Va.1990) (motion for disqualification matter). Yet,
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`“there must be a balance between the client’s free choice of counsel and the maintenance of the
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`highest ethical and professional standards in the legal community.” Id. Thus, disqualification
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`motions should be decided on a case-by-case analysis. Rogers v. Pittston Co., 800 F.Supp. 350,
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`353 (W.D.Va.1992), aff'd, 996 F.2d 1212 (4th Cir.1993).
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`A. The Entire Peacock Law Firm Should Be Disqualified; Alternatively, Ms. Peacock
`Must Be Completely Screened From Participating Further In This Case
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`In Section II.D. of the Opposition brief, HCA explains that “once HCC first presented its
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`contention that Ms. Peacock and her firm should withdraw, [her firm] instituted practices to
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`screen Ms. Peacock from involvement in this case . . ,” and that “this is appropriate under the
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`facts of the instant matter. . .” Opposition brief, p. 19. If the screening of Ms. Peacock is
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`“appropriate under the facts of the instant matter” as the Opposition brief concedes, one wonders
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`why a demand letter from HCC was required to get those screening practices implemented so to
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`insulate Ms. Peacock from this case. Such a “Chinese wall” ethically should have been erected
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`at this matter’s inception (setting aside the question whether the Peacock Law Firm could
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`properly undertake representation of HCA at all). The fundamental onus initially was, and
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`continually has been, on the Peacock Law Firm to safeguard its previous client, HFI/HCC from a
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`compromising conflict of interest. A lawyer should avoid even the appearance of professional
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`impropriety, and should avoid representation of a party in a suit against a former client, where
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`there may be the appearance of a possible violation of confidence, even though this may not be
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`true in fact. See, e.g., Image Technical Services, Inc. v. Eastman Kodak Co., 820 F. Supp. 1212,
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`1218 (N.D. Cal. 1993) (attorney disqualification case; “The court and the legal profession have a
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`strong interest in insuring that counsel fulfill the highest duty of loyalty to clients.”) Ms.
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`Peacock should have been separated from this case from the get-go – not merely after HCC’s
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`recently newly retained counsel exposed and reacted to her blatant conflict of interest. HCA’s
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`counsel’s letter reply (Exhibit 4 to Petition to Disqualify) to HCC’s letter requesting that the
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`Peacock Law Firm withdraw neither offered to establish nor confirmed the existence of any
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`internal screen to isolate Ms. Peacock from further involvement. In the absence of any such
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`assurance, this Petition to Disqualify necessarily followed.
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`The Opposition brief also contends that “This is an appropriate situation for allowing the
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`one attorney [Ms. Peacock] alleged to be tainted by her past representation. . . to be screened
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`from this case.” Opposition brief, pp. 17-18. For the reasons asserted previously and
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`hereinafter, HCC disagrees. “As a general proposition, disqualification of a member of a law
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`firm will also result in disqualification of the law firm.” Sunkist Growers, Inc. v. The Benjamin
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`Ansehl Co., 221 U.S.P.Q. 1077, 1081 (Comm’r Pat. & Trademarks, 1984). HCC repeats its
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`argument that the entire Peacock Law Firm should be separated from this case. The proffered
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`vague assurances of a “screen” separating only Ms. Peacock are inadequate. Ms. Peacock is a
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`named partner in the Peacock Law Firm, and can be expected to participate in the management
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`of the firm which she founded. Also, it would be expected that she would share in the profits of
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`the firm, and have authority to review any file maintained by the firm. Ms. Peacock’s status as
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`the managing partner renders it inappropriate to merely erect a “Chinese Wall” in this case. See,
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`2
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`Plus Products v. Con-Stan Indus., Inc., 221 U.S.P.Q. 1071, 1075 (Comm’r Pat & Trademarks,
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`1984) (disqualifying entire law firm from trademark opposition, due to conflict of partner
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`therein.). The arguments of the Opposition brief on this subject provide an insufficient basis to
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`depart from the principles of imputation of a partner's disqualifying conflict to her law firm. See,
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`e.g., Fund of Funds, Ltd. v. Arthur Andersen & Co., 567 F.2d 225, 228 n. 10 (2nd Cir. 1977).
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` Nevertheless, in the event the entire Peacock Law Firm is not disqualified, HCC agrees
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`that a “Chinese wall” separating Ms. Peacock from any participation whatsoever in this case,
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`may – perhaps – as suggested by the Opposition brief, “adequately protect against taint.” See,
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`Hempstead Video, Inc. v. Incorporated Village of Valley Stream, 409 F.3d 127, 137-38 (2nd Cir.
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`2005). Accordingly, if its Petition is not granted in the entirety, HCC respectfully requests the
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`entry of an order that Ms. Peacock be fully prevented from any further participation, of any kind,
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`in this and all related matters. HCC requests that such an order specifically bar Ms. Peacock
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`from communicating directly or through any intermediary with HCA, any of its employees,
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`agents, licensees, or attorneys, on any subject or topic relating to this case in any manner, at any
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`time. HCC respectfully further submits that such an order also specify potential sanctions to be
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`imposed should Ms. Peacock or her firm be determined to be in contravention of the order in the
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`future.
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`HCC proposes that such an order allow a third neutral party to be chosen by the parties to
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`review any communications relating to this matter between Peacock and the remainder of her
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`firm upon request of HCC. And that a material breach of her duty not to communicate regarding
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`this matter with other persons be subject to suspension to practice before the United States Patent
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`and Trademark Office as determined by the Office of Enrollment and Discipline.
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`B. The Petition to Disqualify Is Justified
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`Because the facts supporting disqualification are compelling, the Opposition brief
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`extensively postulates on the law of attorney disqualification. At bottom, though, before the
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`TTAB “each disqualification case must necessarily be decided on its own facts.” Sunkist
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`Growers, Inc. v. The Benjamin Ansehl Co., 221 U.S.P.Q. at 1082. The basic legal test at the
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`TTAB is simple; a petition for disqualification should be granted when the petitioner establishes:
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`(1) that the attorney subject of the petition was the petitioner’s former attorney; (2) the
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`petitioner’s former attorney currently represents a party adverse to the petitioner; and (3) the
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`3
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`subject matter embraced by the current representation is “substantially related” to the subject
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`matter in which the attorney previously represented the petitioner. Finger Furniture Co. v.
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`Finger Interests Number One Ltd., 71 U.S.P.Q.2d 1287, 1290 (Comm’r Pat & Trademarks,
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`2004) (“If the [petitioner] is a former client, the test is, inter alia, whether the subject matter of
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`the present representation is substantially related to the subject matter of the previous
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`representation.”); The Gilman Corp. v. The Gilman Brothers Co., 20 U.S.P.Q.2d 1238, 1239
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`(Comm’r Pat. & Trademarks, 1991); Halcon Int’l, Inc. v. Werbow, 228 U.S.P.Q. 611, 612
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`(Comm’r Pat. & Trademarks, 1985).
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`The Opposition brief concedes that Ms. Peacock was formerly HFI/HCC’s attorney.
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`Opposition brief, p. 2, and attached Declaration of Deborah A. Peacock, ¶¶ 3, 5, 7. It also is
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`beyond dispute that Ms. Peacock’s law firm currently represents HCA, a party adverse to HCC,
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`as these are the opposing parties to the present Opposition proceeding. The sole disputed factor,
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`then, is whether the subject matter embraced by the Peacock Law Firm’s current representation
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`is “substantially related” to the subject matter in which Ms. Peacock previously represented
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`HFI/HCC. As amply established in the Petition to Disqualify, the relationship between the
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`present matter and Ms. Peacock’s former representation of HCC is more than substantial, it is
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`direct. The Opposition brief expends considerable verbiage attempting repeatedly to paint the
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`conflict of interest as ancient history from four years, or even 20 or more years ago, and that the
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`passage of time has rendered insubstantial the conflict of interest. To the contrary, the Peacock
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`Firm’s conflict of interest has damaged HCC recently, and potentially will damage HCC in the
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`future of this proceeding.
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`In its “Background Facts” section, the Opposition brief (p. 3) contends that “HCA is not a
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`competitor of HFI or HCC.” Then, in its Argument, the Opposition brief (p. 9) asserts that the
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`“the real interests of the parties – HCC in its trademarks for its commercial products containing
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`chile and HCA in its desire to certify as authentic unprocessed chile from the Hatch Valley – are
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`not obviously opposed.” HCA then alleges (Opposition brief, p. 12) that lack of commercial
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`competition between HCC and HCA nullifies the possibility that Ms. Peacock’s former
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`representation is substantially related to the present matter. This effort to downplay the gravity
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`of this case is misleading.
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`Were HCA strictly to limit the use of its certification mark “HATCH” exclusively on
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`“unprocessed chile” (as recited in its application) – i.e., chile produce arriving freshly from the
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`4
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`field – then perhaps the threat posed by HCA’s certification mark application could be slightly
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`reduced. But such is not the case. HCA has begun granting permission, to vendors of processed
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`products directly competitive with HCC’s comparable chile products, of an HCA certification
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`mark. By way of concrete example, attached to this reply brief as Exhibit A is a true and correct
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`copy of a label taken from a directly competitive product currently available in supermarkets,
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`bearing a Hatch Chile Association (HCA) certification mark incorporating the term HATCH.
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`Anticipating such behavior by HCA, HCC was compelled to commence this Opposition
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`proceeding. The use of HCA’s supposed HATCH certification mark on products besides
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`unprocessed chile, and directly competitive with HCC’s processed products, gives rise to a
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`likelihood of confusion and competitive harm to HCC.1
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`The Opposition brief asserts (p. 2) that Ms. Peacock’s conflict of interest also is harmless
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`because “[d]uring that period [1995-1999] “she received no proprietary or confidential
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`information concerning the business of HFI or its subsidiary HCC.” The Opposition brief in a
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`footnote (footnote 3) also faults HCC for presenting “no specific facts supporting such a claim.”
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`This argument is extended, but not enhanced, on pages 14-17 of the Opposition brief. There, the
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`brief in an effort to distract from improper conduct less than two years old, again harkens back
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`“20 or more years ago,” cites to an affidavit of Ms. Peacock, and complains that Mr. Steven
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`Dawson’s affidavit in support of the Petition to Disqualify lacks adequate description of
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`confidential information.
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`No detailed description of confidential disclosures to Ms. Peacock was made by HCC in
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`part because HCC is not in the habit of describing its confidential information within a Petition
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`for Disqualification. “Moreover, the court [or here, the Commissioner] need not, indeed cannot,
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`inquire whether the lawyer did, in fact, receive confidential information during [her] previous
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`employment which might be used to the client's disadvantage. Such an inquiry would prove
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`destructive of the weighty policy considerations that serve as the pillars of Canon 4 of the Code,
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`for the client's ultimate and compelled response to an attorney's claim of non-access would
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`necessarily be to describe in detail the confidential information previously disclosed and now
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`sought to be preserved.” Emle Industries, Inc. v. Patentex, Inc., 478 F.2d 562, 571 (2nd Cir.
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`1 The Opposition brief mentions (pp. 12-13) that there is a difference between certification marks and
`conventional trademarks, and asserts that thus there can be no substantial relationship between Ms. Peacock’s
`previous representation of HFI/HCC and the present matter. Yet HCA neither argues nor cites authority for the
`notion that there can’t be a likelihood of confusion between a certification mark and a standard trademark.
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`5
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`1973). At any rate, courts considering motions to disqualify often give little weight to attorney
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`affidavits, such as Ms. Peacock’s here, containing perfunctory denials that the attorney received
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`confidential information from a previous client; specific, credible, reliable proof is required. See,
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`e.g., Healy v. Axelrod Const. Co. Defined Pension Plan & Trust, 155 F.R.D. 615, 621 (N.D. Ill.
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`1994) (“Attorney Marks’ affidavit . . . is unavailing because he shows no credible or reliable
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`proof that he had no knowledge of the information or confidences related by [former client]
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`Irwin . . .”). HCC reasonably doubts the contention that Ms. Peacock did not receive or have
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`access to confidential information during the course of her representation of HFI/HCC. “An
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`attorney [like Ms. Peacock] who is [was] responsible for protection of a company’s trade name
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`and its principal trademark . . . simply is not in a very good position to seriously deny having
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`received confidential information or having access thereto.” Plus Products v. Con-Stan Indus.,
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`Inc., 221 U.S.P.Q. 1071, 1075 (Comm’r Pat & Trademarks, 1984).
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`Also in footnote 3, and speaking of Ms. Peacock’s representation of HFI/HCC in 1990-
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`1991, the Opposition brief opines that “it is difficult to imagine what kind of proprietary
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`information its president would have provided in a run-of-the-mill trademark dispute that would
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`have any bearing on HCC’s opposition . . . 25 years later.” Ms. Peacock’s recent adverse
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`exploitation of HCC’s information will be discussed further shortly hereafter. But presently, for
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`the Commissioner’s information, that so-called “run-of-the-mill” trademark dispute has been
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`renewed, 25 years later, to cost HCC’s opponents between $300,000 and $500,000 in fees and
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`costs in state court and in TTAB proceedings involving HATCH-related trademarks. (See
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`Exhibit B hereto, an excerpt (page 215, lines 16-24) from the transcript of the deposition of Ms.
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`Jackie Baca in the related New Mexico state court case of Hatch Farms, Inc. v. El Encanto, Inc.,
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`No. D-202-CV-2013-06528, referring to expenses in that case and pending TTAB Trademark
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`Opposition No. 91204917.) HCC has spent a roughly equivalent amount, in those state court and
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`TTAB proceedings, striving to vindicate its rights under the written contact that Ms. Peacock
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`drafted for HCC. Yes, Ms. Peacock may have ceased representing HCC by 1999, but her
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`previous activities continue adversely to dog HCC to this very day.
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`Harping on a repetitive theme, the Opposition brief, (p.11) states that “Ms. Peacock’s
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`representation of HFI began 25 years ago and ended more than 17 years ago,” and thus there is
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`no showing of “a substantial relationship between Ms. Peacock’s previous representation of
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`HCC’s parent HFI, and her current representation of HCA.” Ms. Peacock’s conflict of interest is
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`not the hoary old problem that HCA makes it out to be.
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`For example, less than 18 months ago, on 30 March 2015, Ms. Peacock, on behalf of
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`HCA, filed a response to an office action in support of Trademark Application Serial
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`No. 85/942,024 – the object of the present Opposition proceeding. Advocating to the trademark
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`examining attorney for the allowance of the application (which is now opposed by her former
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`client, HCC) Ms. Peacock attached to her response, as Exhibit B to the response, a copy of an
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`agreement she had negotiated and drafted on behalf of HCC back in 1990-91.2 Significantly, but
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`for Ms. Peacock’s prior representation of HCC, she would not have known of the existence of the
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`1991 agreement, much less have had access to it so as to exploit it on behalf of HCA and against
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`the interests of her former client. If, as the Opposition brief argues, Ms. Peacock’s drafting the
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`agreement in 1991 is not “substantially related” to the present Opposition, then what is that
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`agreement doing as an exhibit in support of the certification application that HCC now opposes?
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`Perhaps the 1991 agreement was not “proprietary” and maybe it embodied no secret
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`information. Still, “[a]t any rate, disqualification can also flow from an attorney’s exposure
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`during a prior representation. . . to business methods and practices of a former client which fall
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`short of information privileged under the attorney-client privilege.” Plus Products v. Con-Stan
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`Indus., Inc., 221 U.S.P.Q. 1071, 1075 (Comm’r Pat. & Trademarks, 1984). HCC had a
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`reasonable expectation that Ms. Peacock would maintain as confidential, between the parties
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`thereto, the confidentiality of the 1991 agreement’s existence and content. Even more certainly,
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`it was and remains a plainly disqualifying conflict of interest for Ms. Peacock in 2015 to
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`advocate on behalf of HCC’s now-adversary, HCA, using a document she drafted for HCC – no
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`matter how long ago she drafted it. To prevent future deleterious impacts upon HCC’s interests
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`from Ms. Peacock’s conduct, and as a sanction for engaging in past conduct against her former
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`client, Ms. Peacock and her entire firm should be disqualified from acting any further in this
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`case. The subject matter embraced by Ms. Peacock’s current representation plainly is
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`“substantially related” to her activity while representing HFI/HCC, and the passage of time does
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`not change or mitigate that fact.
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`As demonstrated by the foregoing, the conflict of interest is recent and real, and HCC is
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`justified in a fear that the past may be prologue – that in the absence of a disqualification, HCA’s
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`2 The response to the office action resulted in the allowance of the application that HCC now opposes.
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`7
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`attorneys may, consciously or subconsciously, exploit the former representation in ways contrary
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`to the interests of HCC.
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`“A lawyer's good faith, although essential in all his professional activity, is,
`nevertheless, an inadequate safeguard when standing alone. Even the most
`rigorous self-discipline might not prevent a lawyer from unconsciously using or
`manipulating a confidence acquired
`in
`the earlier representation and
`transforming it into a telling advantage in the subsequent litigation. Or, out of
`an excess of good faith, a lawyer might bend too far in the opposite direction,
`refraining from seizing a legitimate opportunity for fear that such a tactic might
`give rise to an appearance of impropriety. In neither event would the litigant's or
`the public's interest be well served.”
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`Emle Industries, Inc. v. Patentex, Inc., 478 F.2d 562.
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`C. The Petition for Disqualification is Not Barred by Acquiescence, Waiver, or
`Laches
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`The Opposition brief contends (pp. 10-11) that HCC’s Petition to Disqualify is belated, or
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`that HCC has acquiesced to the Peacock Law Firm’s conflict of interest. The circumstances in
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`totality establish the contrary. Disqualification is not sought on the basis of events that took place
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`“20 or more years ago,” as the Opposition brief contends ad nauseum. Rather, inappropriate
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`conflicting behavior manifested less than two years ago, when Ms. Peacock used knowledge
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`acquired from HCC to advocate for HCA’s trademark application and against the interests of
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`HCC. HCC seeks now to prevent a repeat performance and added damage to her former client.
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`As a general rule, “mere delay or laches is not normally a defense to disqualification.”
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`Finger Furniture Co. v. Finger Interests Number One Ltd., 71U.S.P.Q.2d at 1294 (quoting EZ
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`Paintr Corp. v. Padco, Inc., 746 F.2d 1459, 223 U.S.P.Q. 1065, 1067 (Fed. Cir. 1984) (patent
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`infringement case). This is because, among other reasons, where disqualification is in the public
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`interest to preserve the appearance of propriety and the integrity of a litigation system, the
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`decider of a motion to disqualify cannot act contrary to that interest by permitting a party’s delay
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`in moving for disqualification to justify the continuance of a breach of ethics. See, Emle
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`Industries, Inc. v. Patentex, Inc., 478 F.2d at 562 (cited in EZ Paintr Corp. v. Padco, Inc., supra).
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`The period of delay required to lend vitality to a defense of waiver, laches, or
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`acquiescence against a motion for disqualification varies widely, and is highly dependent upon
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`the particular circumstances of a case. Cases have varied from finding waiver by failure to object
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`within ten days, Levitt v. Levitt, 9 Mass.App. 894, 403 N.E.2d 143(1980) (special case pursuant
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`8
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`to a local rule), to finding no waiver despite the passage of, for example, two, three, or nearly
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`five years before the objection was raised. British Airways v. Port Authority of NY and NJ, 862
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`F. Supp. 889 (E.D. N.Y. 1994); Emle Indus., Inc. v. Patentex, Inc., 478 F.2d 562 (2nd Cir. 1973);
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`Illaraza v. Hovensa, LLC, No. 2008-0059 (D.V.I. March 31, 2012). Moreover, “the mere length
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`of delay is not dispositive and the Court should not deny a motion to disqualify based on delay
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`alone.” Buckley v. Airshield Corp., 908 F.Supp. 299, 307 (D. Md. 1995). In the instant matter,
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`the Notice of Opposition was filed only seventeen months ago, and the proceedings have been
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`suspended, albeit briefly, twice. Thus, this is not an instance of a case that has been dragging on
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`for years.
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`Importantly, apart from a terse gripe that disqualification “would serve only to cause
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`more delay and burden HCA with greater expense,” the Opposition brief totally fails to identify
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`any specific way by which HCA would be prejudiced by a disqualification.3 HCA is, in effect,
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`complaining merely of delay and expense in litigation generally.4 In such complete absence of
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`any showing of prejudice to HCA, the Petition to Disqualify should be granted.
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`Regarding the generalized concern for delay, again, this opposition matter has been
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`pending for less than 18 months. HCA has not expressed how it will be prejudiced by a delay in
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`such a relatively briefly pending case. Especially given the Board’s ability to manage and re-set
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`deadlines to accommodate HCA in the result of a disqualification, there is no showing that HCA
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`would be prejudiced at all by a delay, any more than would HCC be similarly prejudiced. The
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`need to maintain the integrity of the proceeding, in the face of the conflict of interest of the
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`Peacock Law Firm, outweighs any adverse impact of a delay.
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`And HCA’s hand waving regarding “greater expense” rings hollow under the
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`circumstances of this case. The expense associated with a need to identify, retain, and engage
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`new attorneys is greatly ameliorated by the fact that HCA has retained other attorneys, besides
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`the Peacock Law Firm, to represent it in HATCH trademark related matters. HCA is a co-
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`petitioner with El Encanto, Inc. (a major player in the processed and frozen chile pepper foods
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`3 The Opposition brief alludes in several places to the fact that discovery has closed in this matter, but nowhere
`explains how such closure prior to the filing of the Petition to Disqualify is prejudicial.
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` 4
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` The Opposition brief (p. 3), touts HCC’s prior attorney’s letter of April 5, 2014, congratulating HCA on the filing of
`HCA’s application. However ill-advised that letter may have been, the prior attorney had no way of knowing on 5
`April 2014 that Ms. Peacock subsequently would betray HCC’s trust by filing on 30 March 2015 a response to an
`office action attaching a document she had previously prepared for HCC.
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`9
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`industry) in the closely related matter of federal Trademark Opposition No. 91204917, El
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`Encanto Inc. v. Hatch Chile Co. (consolidated). In that consolidated proceeding HCA, together
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`with El Encanto, seeks to cancel a registration, owned by HCC, relating to the use of the
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`trademark HATCH on food products, including chile. In that case, HCA and El Encanto are
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`represented jointly by the law firm of Brownstein Hyatt Farber Schreck, LLP. Upon the
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`disqualification of the Peacock Law Firm, the attorneys of Brownstein Hyatt Farber Schreck are
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`well-positioned likewise to assume representation of HCA in the present opposition, which
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`involves issues and parties in common with that consolidated Opposition No. 91204917. The
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`disruption and expense with changing attorneys will be nominal.
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`Furthermore, El Encanto has been assisting HCA with the payment of its attorneys’ fees;
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`HCA has not been bearing them alone. HCA and El Encanto evidently have an agreement
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`whereby they “split” their attorneys’ fees incurred in the various litigations involving the
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`HATCH trademarks – including, ironically, the fees involved with having Ms. Peacock attempt
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`to act as a mediator of all these litigations. (See Exhibit C attached hereto, an excerpt (p. 87,
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`lines 20-23; p. 89, lines 5-23) from the transcript of the deposition of Jackie Baca, the President
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`of El Encanto, Inc., in the related New Mexico state court case of Hatch Farms, Inc. v. El
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`Encanto, Inc., No. D-202-CV-2013-06528.)
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`The lack of a delay or expense prejudice to HCA from a disqualification notwithstanding,
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`there also has been no undue, unexcused delay in the filing of this Petition for Disqualification.
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`During the late summer of 2016, the relationship between HCC and its now-former lead counsel
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`deteriorated due in part to unfortunate oversights by that attorney. The deteriorating relationship
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`culminated in the former attorney’s resignation, on 25 August 2016, from representing HCC in
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`this matter. See Docket #21. As mentioned in the Opposition brief (p. 4), HCC’s current lead
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`attorneys, Paul Adams and Rod Baker, were relatively “recently retained;” Mr. Adams entered
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`his appearance on 29 August 2016 (Docket #22), and Mr. Baker on 30 September 2016 (Docket
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`#27) (although each had been exposed to the case for two or three weeks prior to entering their
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`respective appearances).
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`The newly-retained undersigned attorneys, upon comprehensive review of the case, first
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`identified the plain conflict of interest evidently previously overlooked by HCC’s prior attorney.
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`Shortly after realizing that Ms. Peacock had taken an action relevant to the present matter, but in
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`conflict with the interests of HCC, Messrs. Adams and Baker promptly (10 October 2016) sent a
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`10
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`letter to Ms. Peacock requesting that her firm withdraw from the case. When she refused, the
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`Petition for Disqualification followed on 9 December 2016.5 Any mild delay in the filing of the
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`Petition to Disqualify accordingly is explained and excusable. The words of the Court of
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`Appeals for the First Circuit are apropos here: “[W]e cannot, in the face of a breach of
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`professional duty, ignore the wrong because appellees' counsel neglected to discern the conflict
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`earlier. . . . We must note that it is hard to see how delay alone will benefit the plaintiffs and
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`prejudice the defendant.” Kevlik v. Goldstein, 724 F.2d 844, 848 (1st Cir. 1984).
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`D. The Request for Sanctions Should Be Denied
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`The Opposition brief concludes (p. 20) with a request for sanctions. The request,
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`comprised of succinct but inflamed argument of counsel, is frivolous. HCA’s request does not
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`describe any sanctionable conduct. The argument for sanctions alludes first to a letter from
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`HCC’s now-dismissed former counsel, which letter (ironically) was an effort to improve
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`relations between the parties, not an effort to “vex” or harass anybody.6 The other allegedly
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`harassing misconduct was that HCC “filed a motion for summary judgment prior to having
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`complied with HCC’s longstanding discovery requests.” HCC does not understand what is
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`meant by this statement, much less how the conduct described is sanctionably vexatious or
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`harassing.
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`The Petition for Disqualification is not objectively or subjectively unreasonable. HCC
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`earnestly and forcibly denies that the Petition for Disqualification was imposed for purposes of
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`delay, improper tactic, or harassment. The sole and compelling motivation for the Petition to
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`Disqualify is to eliminate the possibility that this Opposition proceeding will be tainted any
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`further by Ms. Peacock’s, or her firm’s, clear and substantially related conflict of interest.
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`5 The Petition for Disqualification initially was mistakenly misfiled in the underlying application file for Trademark
`Application Serial No. 85/942,024, rather than in this Opposition. Upon counsel’s realizing and confirming their
`error, the Petition was refiled into this Opposition on 22 December 2016.
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` 6
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` Whether the letter is the basis of a legitimate acquiescence defense to this Opposition proceeding is an issue
`outside the scope of this Petition; moreover, circumstances changed between the mailing of the letter and the
`filing of the Notice of Opposition nearly a year and a half later.
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`11
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`CONCLUSION
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`For all the foregoing reasons, the Petition for Disqualification is well-taken. Opposer
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`Hatch Chile Company respectfully requests that the Commissioner grant the Petition to
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`Disqualify Deborah Peacock and her current law firm, Peacock Myers PC, from further
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`participation in this matter due to the existence of their conflict of interest. Alternatively, and
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`solely to permit the wrongdoing to fall on the specific person involved is the conflict, HCC
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`requests that Ms. Peacock be personally disqualified and that the Board should establish a solid
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`barrier with appropriate sanctions in the event of a breach of the wall. Respondent HCA’s
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`request for sanctions is unsupported and should be denied.
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`Dated: January 24, 2017
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`Law Office of Rod D. Baker
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` /Rod D. Baker/
`Rod D. Baker
`12126 Highway 14 N., Suite A7
`Cedar Crest, NM 87008-9406
`rdbaker@swcp.com
`Attorney for Hatch Chile Company, Inc.
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`The Adams Law Firm
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` /Paul Adams/
`Paul Adams
`3800 Osuna Rd. N. E.
`Albuquerque, NM 87109
`adamspatentlaw@gmail.com
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 24, 2017, the foregoing was filed electronically with the Trademark Trial
`and Appeal Board and mailed via first class mail to:
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`Mr. Jeffrey D. Myers
`Mr. Jeffrey L. Squires
`Peacock Myers P.C.
`P. O. Box 26927
`Albuquerque, NM 87125-6927
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`12
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` /
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` Rod D. Baker/
`Rod D. Baker
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`