Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA874608
`
`Filing date:
`
`01/31/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91233334
`
`Party
`
`Correspondence
`Address
`
`Defendant
`BillHero, Inc.
`
`CLIFF KUEHN
`KUEHN LAW
`981 MISSION ST
`SAN FRANCISCO, CA 94103
`UNITED STATES
`Email: cliff@kuehnlawip.com, office@kuehnlawip.com
`
`Submission
`
`Motion for Summary Judgment
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
`
`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 05/31/2018
`
`Cliff Kuehn
`
`cliff@kuehnlawip.com, office@kuehnlawip.com
`
`/ck/
`
`01/31/2018
`
`20180131 - MSJ with Proof of Service.pdf(274803 bytes )
`20180131 - CK Declaration with Proof of Service.pdf(66452 bytes )
`EX 1 - SOS Digital Receipts LLC.pdf(1344221 bytes )
`EX 2 - SOS Nxtbigthing LLC.pdf(1367752 bytes )
`EX 3 - SOU Signed Batterman.pdf(1699027 bytes )
`EX 4 - SOU Signed Batterman.pdf(4667610 bytes )
`EX 5 - scanlon law office.pdf(1623027 bytes )
`EX 6 - Spreadsheet ALL TMs.pdf(112882 bytes )
`EX 7 - Specimens for class 9.pdf(2649473 bytes )
`EX 8a - Svcs specimens.pdf(5574066 bytes )
`EX 8b - svcs specimens.pdf(4019077 bytes )
`EX 8c - Svcs specimens.pdf(4219649 bytes )
`EX 9 - Domains WHOIS.pdf(2687217 bytes )
`EX 10 - EXPENSEMATCH Application.pdf(98634 bytes )
`EX 11 - BILLMATCH APP.pdf(253398 bytes )
`EX 12 - BILLHERO APP.pdf(612280 bytes )
`EX 13 - EXPENSEMATCH SOU.pdf(192468 bytes )
`EX 14 - BILLMATCH SOU.pdf(5087416 bytes )
`EX 15 - INTERNMATCH complaint.pdf(587388 bytes )
`EX 16 - Intermatch ORDER.pdf(561449 bytes )
`EX 17 - Internmatch ORDER ATTY FEES.pdf(249018 bytes )
`EX 18 - domain purchase emails.pdf(351967 bytes )
`EX 19 - Billhero com parked page.pdf(531998 bytes )
`EX 20 - Emails btw Applicant and Chad.pdf(327747 bytes )
`EX 21 - Postmark.pdf(1657998 bytes )
`EX 22 - RFA 1st set POS.pdf(984698 bytes )
`EX 23 - ROGS - POS.pdf(880578 bytes )
`EX 24 - Email 1.pdf(149557 bytes )
`EX 25 - Domainer definition.pdf(2140055 bytes )
`EX 26 - ID of Batterman.pdf(393709 bytes )
`
`

`

`EX 27 - Receiptmatch Screenshot.pdf(3085777 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Application Serial Nos. 87078094 and 87202074
`
`Published: November 8 and 23, 2016, respectively
`
`
`
`
`Digital Receipts, LLC,
`
`
`Opposer,
`
`
`v.
`
`Billhero, Inc.,
`
`Applicant.
`
`
`
`Billgo, Inc. (formerly Billhero, Inc.),
`Petitioner for cancellation,
`
`
`v.
`
`Digital Receipts, LLC,
`Respondent.
`
`
`
`Opposition No. 91233334 (parent of
`Opposition and Counterclaim for
`Cancellation No. 91233983)
`
`
`APPLICANT’S MOTION FOR
`SUMMARY JUDGMENT AND
`MEMORANDUM IN SUPPORT OF
`MOTION
`
`
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`
`Applicants Billhero, Inc. and Billgo, Inc. (collectively “Applicant”) through its undersigned
`
`counsel hereby moves, pursuant to Fed. R. Civ. P. 56 and TBMP § 528.02 for entry of
`
`summary judgment in Applicant’s favor in Oppositions Nos. 91233334 and 91233983,
`
`inclusive of the counterclaims filed by Applicant (the “Oppositions”) on the grounds that
`
`there is no genuine dispute as to any material fact and Applicant is entitled to judgment as a
`
`matter of law.
`
`In accordance with 37 C.F.R § 2.127(d), Applicant also requests the Trademark Trial and
`
`Appeal Board (the “Board”) suspend the Oppositions pending its decision on the Motion for
`
`Summary Judgment, and if summary judgment is denied that the proceeding dates be reset.
`
`

`

`MEMORANDUM IN SUPPORT OF APPLICANT’S MOTION
`
`I.
`
`INTRODUCTION
`
`While this case is between companies on paper, it is really about Mr. Chad Batterman, a savvy
`
`businessperson who trades in domain names and who serves as the CEO for two companies
`
`comprised of himself. But this is where the legitimacy stops: Mr. Batterman uses both
`
`companies, the Federal Rules of Civil Procedure, and blatant lies as shields to his illegal
`
`activities, activities which stand to make him great profits at the expense of the integrity of the
`
`United States Patent and Trademark Office and the trademark registry it maintains. The
`
`concept of a trademark “troll” is not nearly as well-known as a patent “troll” for a key
`
`distinction: use requirements apply only to trademarks, and not patents. However Mr.
`
`Batterman seems to have discovered, and consequently exploited, a simple strategy to the
`
`use requirements: submit falsified evidence of use to the USPTO to obtain trademark
`
`registrations, use those registrations as a hard bargaining chip in selling domain names, and
`
`lie under oath when he is questioned about genuine use of his marks.
`
`Mr. Batterman initiated two oppositions against applicant’s Billhero, Inc. and Billgo, Inc.,
`
`which were consolidated by the Board due to the similarities among the cases. His
`
`oppositions were based on 3 trademark registrations and 1 application, all of which the
`
`applicant’s contend were acquired by fraud. This motion looks at Mr. Batterman’s past
`
`business dealings, past encounters in litigation, and avoidance tactics engaged in the current
`
`proceedings to answer the question: what was Mr. Batterman’s intent when he certified
`
`statements of use in more than 38 trademark prosecutions at the USPTO, and what does that
`
`say about his 3 trademarks which Applicant now seeks to cancel?
`
`In fact, the evidence and arguments will show that his trademarks which form the bases of his
`
`underlying oppositions are part of a larger, calculated scheme to maximize his competitive
`
`advantage as a domainer, and that he willfully submitted false statements to the USPTO with
`
`the intent to deceive. As such, his trademark registrations
`
`2
`
`
`
`
`
`

`

`II.
`
`PROCEDURAL BACKGROUND
`
`A. THE CONSOLIDATED OPPOSITIONS
`
`1. OPPOSITION 91233334 AGAINST BILLGO
`
`On March 8, 2017, CEO Chad Batterman of Digital Receipts, LLC (“Opposer”) filed a Notice
`
`of Opposition with the Board, opposing Applicant’s Section 1(b) application for the word
`
`mark BILLGO in Class 35 (Serial No. 87078094)(“BILLGO”). The Notice of Opposition pleaded
`
`5 grounds for refusal:
`
`• Priority and likelihood of confusion
`• Descriptiveness
`• Dilution
`• No bona fide intent to use the mark
`• Fraud on the USPTO
`
`Four word marks were cited by Mr. Batterman as the bases for his opposition against BILLGO:
`
`• EXPENSEMATCH in Classes 9, 35, and 42 (Reg. No. 4752396) (“EXPENSEMATCH”)
`• BILLMATCH in Classes 9, 35, and 42 (Reg. No. 4629317) (“BILLMATCH”)
`• BILLHERO in Classes 9, 35, and 42 (Reg. No. 5093681) (“BILLHERO”)
`• BILLS2GO in Class 9 (Serial No. 87264136) (“BILLS2GO”)
`
`On April 18, 2017, Applicant filed an answer in Opposition 91233334.
`
`2. OPPOSITION 91233983 AGAINST BILLGO INTELLIGENT BILL PAY
`
`On April 12, 2017, CEO Chad Batterman of Digital Receipts, LLC filed a Notice of Opposition
`
`with the Board, opposing Applicant’s Section 1(b) application for the word mark BILLGO
`
`INTELLIGENT BILL PAY in Classes 9, 36, and 42 (Serial No. 87202074)(“BILLGO BILL PAY”)..
`
`The Notice of Opposition pleaded the same 5 grounds for refusal as Opposition 91233334,
`
`and cited the same four word marks as the bases of the opposition.
`
`On May 23, 2017, Applicant filed an answer and counterclaim for cancellation in Opposition
`
`91233983. The counterclaim sought to cancel Opposer’s registrations for EXPENSEMATCH,
`
`BILLMATCH, and BILLHERO in all Classes (“Contested Registrations” or “Contested Marks”).
`
`
`
`
`
`3
`
`

`

`3. CONSOLIDATION OF THE OPPOSITIONS
`
`On July 14, 2017 the Board consolidated the two oppositions, finding that the parties to both
`
`oppositions were the same and the proceedings involved common questions of law or fact.
`
`See Board’s consolidation order of July 14, 2017. Opposition 91233334 was deemed the
`
`“Parent Case” and Opposition 91233983 the “Child Case”.
`
`4. THE BOARD’S DISMISSAL OF MR. BATTERMAN’S CLAIMS AND GRANTING OF
`LEAVE TO AMEND IN THE CHILD CASE
`
`On August 7, 2017 the Board dismissed several of Mr. Batterman’s claims in the Child Case
`
`following a telephone conference between Interlocutory Attorney Michael Webster, Mr.
`
`Batterman, and Applicant’s attorney Cliff Kuehn. In the August 7th order, Mr. Batterman’s
`
`claims of likelihood of confusion, dilution, nonuse, and fraud were dismissed on the basis that
`
`those claims were deficiently pleaded. See pg. 15 of Board’s order of August 7, 2017. The
`
`order granted Mr. Batterman leave until September 6, 2017 to file an amended notice of
`
`opposition, adding that failure to serve an amended pleading would result in Mr. Batterman’s
`
`opposition proceeding to move forward on the descriptiveness claim only.
`
`Mr. Batterman did not serve an amended pleading, and thus Opposition 91233983 is
`
`proceeding on the sole claim of descriptiveness.
`
`B.
`
`SUMMARY OF ALL PENDING CLAIMS IN THE CONSOLIDATED OPPOSITIONS AND
`COUNTERCLAIMS FOR CANCELLATION
`
`Parent Case,
`Opposition 91233334
`against BILLGO
`
`Child Case,
`Opposition 91233983
`against BILLGO INTELLIGENT
`BILL PAY
`
`Child Case,
`Counterclaim for Cancellation
`against EXPENSEMATCH,
`BILLMATCH, and BILLHERO
`
`Remaining grounds:
`
`Remaining grounds:
`
`Remaining grounds:
`
`- priority and likelihood of confusion
`- descriptiveness
`- dilution
`- no bona fide intent to use the mark
`- fraud on the USPTO
`
`- descriptiveness
`
`- Fraud against
`EXPENSEMATCH
`- Fraud against BILLMATCH
`- Fraud against BILLHERO
`
`4
`
`
`
`
`
`
`
`
`
`

`

`III.
`
`FACTUAL BACKGROUND
`
`Applicant’s counterclaims for cancellation are based on claims of fraud against the
`
`companies Mr. Batterman serves as CEO for, Opposer Digital Receipts, LLC. Succeeding on
`
`claims of fraud requires proof of a mental state, and thus evidence regarding Mr. Batterman’s
`
`patterns of patterns of behavior before federal authorities, both in his capacity as CEO for
`
`Digital Receipts, LLC and as a CEO for another company, Nxtbigthing, LLC. Evidence of Mr.
`
`Batterman’s conduct on behalf of both these entities are relevant to his state of mind because
`
`his past patterns of behavior, under circumstances similar to the case at hand, are predictive
`
`of how he has continued to behave in the current Board proceedings.
`
`A.
`
`MR. BATTERMAN’S 2 COMPANIES USED IN TRADEMARK PROSECUTION
`
`On November 30, 2012 Mr. Chad Batterman caused Nxtbigthing, LLC and Digital Receipts,
`
`LLC to be incorporated in Delaware (Exhibits 1-2) (collectively the “Companies”). Mr. Chad
`
`Batterman is an individual believed to reside in Pennsylvania and signs submissions to the
`
`USPTO as “CEO” or “President” in connection with Companies (Exhibits 3-4). Both LLCs have
`
`the following contact information listed for the registered agent for service of process:
`
`
`
`Registered Office Service Company
`203 NE Front Street, Suite 101
`Milford, DE 19963
`
`
`
`This address is identical to the address for the Law Offices of Patrick Scanlon (Exhibit 5), and
`
`is not an address from which Mr. Batterman is operating either of his companies. This location
`
`was provided to the Board by Mr. Batterman as a correspondence address in the current
`
`proceedings.
`
`B.
`
`PROSECUTION ACTIVITIES BY MR. BATTERMAN ON BEHALF OF HIS COMPANIES
`
`1.
`
` MR. BATTERMAN’S PROSECUTION ACTIVITIES
`
`
`
`
`
`5
`
`

`

`Beginning in December 2012, Mr. Batterman has, through his Companies, applied for 42
`
`trademark registrations, 38 of which are currently registered. Referring to Exhibit 6, general
`
`observations can be made regarding these prosecution activities:
`
`• 30 of the registrations contain claims for a first use date in 2007, more than 5 years
`before any of his Companies were formed and 5 years before any of his applications
`were ever filed.
`• 31 files (i.e., pending applications and registrations) claim Class 9
`• 26 files claim Class 35
`• 29 files claim Class 42
`• 27 files are for marks with the following formulation: [GENERIC TERM] + MATCH (e.g.,
`IDEAMATCH, PROMOMATCH, REBATEMATCH, etc.)
`
`Upon further analysis of Mr. Batterman’s prosecution history, further observations emerge:
`
`• Nearly all specimens submitted by Mr. Batterman for software in Class 9 consist of a
`
`white CD with the mark in simple text printed directly on the CD (Exhibit 7). Some
`
`specimens of use are used up to 3 times for different applications, where a CD is
`
`“cobranded” with multiple marks belonging to Mr. Batterman
`
`• Many specimens for service Classes notably fail to contain 1) contact information 2)
`
`pricing information, or 3) information as to where the services are performed, whether
`
`digitally or in person (Exhibit 8). Multiple specimens for different marks appear
`
`identical in font, color, layout, and overall format.
`
`• At least 9 domains identical to Mr. Batterman’s registered marks are owned by Mr.
`
`Batterman, as can be seen by those domains’ WHOIS page (Exhibit 9). All of these
`
`domains are currently not in use and appear to never have been in use, for any
`
`purpose. Referring to WHOIS data in Exhibit 9, in at least 5 instances the “creation
`
`date” of the domain is 3-5 years after the claimed first use date:
`
`o RECEIPTFLY (Reg. No 4629239)
`§ Claimed first use date: 10/11/07
`§ Creation date of receiptfly.com: 12/17/11
`
`o REWARDMATCH (Reg. No 4769126)
`§ Claimed first use date: 3/1/07
`§ Creation date of receiptfly.com: 9/27/12
`
`o REGISTRYMATCH (Reg. No 4841752)
`
`6
`
`
`
`
`
`

`

`§ Claimed first use date: 3/1/07
`§ Creation date of receiptfly.com: 8/17/12
`
`o RETREATMATCH (Reg. No 4720701)
`§ Claimed first use date: 4/25/10
`§ Creation date of receiptfly.com: 1/12/14
`
`o REBATEMATCH (Reg. No 4818338)
`§ Claimed first use date: 3/1/07
`§ Creation date of receiptfly.com: 2/12/13
`
`2. SPECIFIC PROSECUTION ACTIVITIES SURROUNDING MR. BATTERMAN’S 3
`TRADEMARKS CURRENTLY SOUGHT TO BE CANCELLED
`
`Mr. Batterman filed and signed the trademark applications for EXPENSEMATCH,
`
`BILLMATCH, and BILLHERO (Exhibits 10-12), as well as statements of use for
`
`EXPENSEMATCH and BILLMATCH, both originally filed under Section 1(b) (Exhibits 13-14).
`
`The first use in commerce dates claimed for all Classes for all 3 of these trademarks is 2007,
`
`with the sole exception being Class 35 for BILLMATCH where the claimed date of first use in
`
`commerce is May 15, 2012 (Exhibits 10-14).
`
`C.
`
`MR. BATTERMAN’S PAST CONTENTIOUS ACTIONS INVOLVING TRADEMARKS
`
`1.
`
`INTERNMATCH V. NXTBIGTHING
`
`Mr. Batterman was previously involved in trademark litigation where his trademark was the
`
`subject of a cancellation action based on failure to use his mark in commerce (Exhibit 15). In
`
`Internmatch, Inc. v. Nxtbigthing, LLC, principal factual issues were whether Mr. Batterman’s
`
`evidence of commercial use of the INTERNMATCH trademark was genuine and whether
`
`statements made by him to the USPTO to procure his INTERNMATCH registration were false.
`
`In that case, plaintiff Internmatch, Inc., founded in 2009, provided online resources and tools
`
`to connect students seeking internships with employers seeking interns. On March 27, 2013
`
`Mr. Batterman filed an intent-to-use application for the word INTERNMATCH on behalf of
`
`Nxtbigthing, LLC. In January 2014, Internmatch, Inc. filed a trademark application which was
`
`
`
`
`
`7
`
`

`

`subsequently suspended pending the outcome of Mr. Batterman’s intent-to-use application
`
`(pgs. 1-3, Exhibit 16).
`
`a) MR. BATTERMAN SOUGHT TO SELL HIS INTERNMATCH TRADEMARK TO A
`COMPANY WITH AN IDENTICAL COMMERCIAL DESIGNATION
`
`In January 2014 Internmatch, Inc. mailed Mr. Batterman, informing him of their prior rights in
`
`the INTERNMATCH trademark. He responded by offering to “settle” the INTERNMATCH
`
`matter for $325,000. He also provided documents purporting to demonstrate use of the
`
`INTERNMATCH trademark as early as 2007, including marketing flyers and an activity log. Mr.
`
`Batterman’s offer was not accepted by Internmatch (pg. 2, Exhibit 16).
`
`b) MR. BATTERMAN TOOK LEGAL ACTION AGAINST THE COMPANY WHEN HE
`COULD NOT SELL INTERNMATCH, CLAIMING PRIOR USE SINCE 2007
`
`After his failed attempt to sell the INTERNMATCH trademark for $325,000, Mr. Batterman
`
`subsequently issued trademark claim notices to various social networking services used by
`
`Internmatch. Id. Specifically, Internmatch, Inc. alleged that Mr. Batterman sent false trademark
`
`claim notices to the LinkedIn® and Twitter® social networking services, requesting
`
`Internmatch, Inc.’s social media pages to be disabled (para. 45, Exhibit 15).
`
`c) MR. BATTERMAN STATED IN DEPOSITIONS THAT 2 LIGHTNING STRIKES AND A
`POWER SURGE DESTROYED COMPUTERS CONTAINING EVIDENCE OF USE
`
`Mr. Batterman testified that since 2007, Nxtbigthing maintained a database on a hard drive
`
`allowing users to search for job postings. He testified that two separate lightning strikes in
`
`2011 struck his office, rendering data on the hard drives unrecoverable. He testified he then
`
`transferred documents evidencing his use of the INTERNMATCH mark to a replacement
`
`computer, using a backup jump drive which contained past marketing, advertising, and
`
`financial materials and information (pg. 4, Exhibit 16).
`
`
`
`
`
`8
`
`

`

`While litigation was pending in Internmatch, Mr. Batterman claimed a power surge destroyed
`
`the replacement computer and other electronic devices, which contained “material central to
`
`the parties’ dispute”, and that those destroyed devices were discarded (pg. 4, Exhibit 16).
`
`d) MR. BATTERMAN WAS FOUND TO HAVE ACTED IN BAD FAITH IN THE COURSE
`DISCOVERY AND ORDERED TO PAY MONETARY SANCTIONS.
`
`Ruling on Internmatch, Inc.’s motion for sanctions, the District court found that Mr. Batterman
`
`“willfully spoliated evidence” and that “the extraordinary measures Batterman undertook to
`
`mislead opposing counsel and the Court merit a finding of bad faith” (pg. 18, Exhibit 16).
`
`The court also held that Mr. Batterman “willfully failed to preserve relevant evidence of use
`
`documents [he] had a duty to preserve” (pg. 22, Exhibit 16). The court found that Mr.
`
`Batterman and Nxtbigthing, LLC “consciously disregarded their obligations to preserve
`
`relevant evidence” when Mr. Batterman and his wife discarded various electronic devices
`
`after experiencing an alleged power surge, without first checking whether files containing
`
`data pertaining to the creation date of Mr. Batterman’s evidence of use could be recovered
`
`(pg. 18, Exhibit 16).
`
`The District court granted an adverse inference instruction sanction and plaintiff’s attorneys’
`
`fees in the amount of $69,322.45. In the order awarding attorneys’ fees, the court responded
`
`to Mr. Batterman’s request to reduce the award by 50% by “conclud[ing] that the amount
`
`requested [wa]s reasonable in light of Defendants’ culpability and the scope of work required
`
`in preparing the spoliation motion.” (Exhibit 17).
`
`2. MR. BATTERMAN V. BILLHERO, INC.
`
`a) MR. BATTERMAN SOUGHT TO SELL APPLICANT A DOMAIN AND IMMEDIATELY
`APPLIED FOR AN IDENTICAL TRADEMARK
`
`On June 10, 2015 Applicant reached out to Mr. Batterman through a hired intermediary, Alex
`
`Carey, to purchase the domain www.billhero.com from Mr. Batterman (pg. 7, Exhibit 18).
`
`
`
`
`
`9
`
`

`

`On July 29, 2015, Mr. Batterman responded to Applicant’s intermediary, stating “I just saw
`
`your email in my spam folder. We are currently developing a website to incorporate into
`
`billhero.com…we have invested a significant amount of money in the name already…How
`
`much [money] were you thinking?” (pg. 7, Exhibit 18).
`
`On the same day and unbeknown to Applicant, Mr. Batterman applied for registration of the
`
`word mark BILLHERO in Classes 9, 35, and 42 (Reg. No. 5093681).
`
`As of the date of this writing, there is no evidence any website exists, or has existed, at
`
`www.billhero.com (Exhibit 19) for the last 2.5 years, since Mr. Batterman claimed he was
`
`“currently developing a website” for www.billhero.com.
`
`b) MR. BATTERMAN HID OWNERSHIP OF HIS TRADEMARK APPLICATION AND THEN
`USED IT SOLELY TO INCREASE THE SALE PRICE OF A DOMAIN NAME
`
`On August 14, 2015, Applicant’s intermediary contacted Mr. Batterman with a $10,000 offer
`
`for purchasing the www.billhero.com domain, which Mr. Batterman immediately turned
`
`down, reasoning he had “already spent more then [sic] that on marketing, logo design, etc.”
`
`and that it didn’t make sense for him to “take a loss on the name as we were planning on
`
`rolling out an updated website on billhero.com.” (pg. 3, Exhibit 18).
`
`Applicant’s intermediary wrote back: “to be honest the ‘Billhero’ name will be worthless [to
`
`you] as we have a trademark issued on the name. Out of the interest of having you not loose
`
`[sic] all of your investment…I will up my final offer to $11,000.” Mr. Batterman replied:
`
`Regarding the trademark, do you have a registered trademark in the United States for
`"BillHero"? Just want to be sure I understood your email previous correctly. I appreciate
`you coming up to $11k and depending on the [sic] if you have a trademark or not we
`can proceed from there. (pg. 3, Exhibit 18).
`
`Later that day, Applicant’s intermediary responded, stating he was mistaken about having
`
`filed the trademark and that “someone else filed a trademark before us. So I guess [the
`
`domain] is really useless to me now” (pg. 2, Exhibit 18). Mr. Batterman replied:
`
`…an application was filed for the mark “BillHero” with the USPTO. The good news is
`that BillHero.com is not useless as my company was the one who filed the trademark
`for “BillHero” and are owners of the mark. I think the trademark alone significantly
`
`
`
`
`
`10
`
`

`

`increases the value of the name “BillHero” as our trademark is registered in three
`different federal classes thus having full control and use of how the BillHero trademark
`is used. Add to that several domains in our portfolio which relate to Bill and Hero, the
`offer of $11k is low regardless of the amount of money we have already invested in the
`name. (pgs. 1-2, Exhibit 18).
`
`D.
`
`MR. BATTERMAN’S CONDUCT AND THE CURRENT PROCEEDINGS
`
`Applicant decided in early 2016 to apply for 2 BILLGO-formative marks in June and October
`
`2016. Mr. Batterman filed the 2 oppositions at issue against those applications.
`
`a) MR. BATTERMAN SOUGHT TO SELL TRADEMARK RIGHTS TO APPLICANT
`
`On April 25, 2017, Applicant’s former counsel Daniel Sineway and Mr. Batterman held a
`
`discovery conference related to the Parent Case. The next day Mr. Batterman and Applicant
`
`discussed a settlement offer, coming up with a $30,000 figure for Mr. Batterman to withdraw
`
`the oppositions (pg. 14, Exhibit 20).
`
`One day later on April 27, 2017, Mr. Batterman abruptly countered with $55,000, which he
`
`continued to insist on for days. After Applicant declined, Mr. Batterman warned “we do not
`
`feel confident that your client is taking this situation seriously and is simply wasting our time
`
`as they did previously” and “if we are unable to find middle ground we plan to swiftly move
`
`forward with the oppositions as well as additional options our counsel advising us has
`
`pointed out are within our legal rights” (pg. 10, Exhibit 20). To date, no counsel has been
`
`introduced to Applicant’s counsel in either of the pending Oppositions, despite this and
`
`other references by Mr. Batterman to an unnamed attorney employed by him (para. 3,
`
`Kuehn Decl.).
`
`b) MR. BATTERMAN HAS NOT PROVIDED APPLICANT ANY INFORMATION
`REGARDING THE BUSINESS CONNECTED TO ANY OF THE MARKS SOUGHT TO BE
`CANCELLED.
`
`On May 30, 2017 at 1:00pm Eastern time Applicant’s current counsel Cliff Kuehn and Mr.
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`Batterman participated in the mandatory discovery conference. In an attempt to limit the
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`universe of discoverable information, Applicant’s counsel directly requested Mr. Batterman at
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`least two times to provide general information as to the nature of Opposer’s business so that
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`a comprehensive discussion about potential settlement could occur. Mr. Batterman did not
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`provide any form of information that would assist the discovery process. Instead, Mr.
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`Batterman’s responses alluded multiple times to the fact that Applicant’s unwillingness to
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`settle didn’t make “business sense”, that Applicant is “wasting his time”, and that all
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`information about evidence would need to come out during the discovery process. During
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`the discovery conference, Mr. Batterman did not inquire once regarding Applicant’s
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`discoverable information or basis for its defense (para. 4, Kuehn Decl.).
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`At the time of this writing, Mr. Batterman has failed to produce any information or data that is
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`responsive to any of the discovery propounded on him by Applicant (para. 5, Kuehn Decl.).
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`c) MR. BATTERMAN FILED A MOTION TO COMPEL WITHOUT ATTEMPTING TO
`RESOLVE THE DISCOVERY MATTER IN GOOD FAITH
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`At the same time, Mr. Batterman served upon Applicant 186 discovery requests in the Parent
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`Case the same day he participated with Applicant’s counsel in the mandatory discovery
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`conference, May 30, 2017. Applicant timely responded to all discovery requests, and Mr.
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`Batterman responded with a single email claiming those responses were generally deficient
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`before filing a Motion to Compel.
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`Mr. Batterman also allegedly served 211 discovery requests in the Child Case under an
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`unusual set of circumstances.
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`On June 30, 2017, the Board reset trial dates for the Child Case, which effectively delayed the
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`original opening of the discovery period, eight days earlier.
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`On July 6, 2017, Mr. Batterman filed a “Motion to Notify the Board of Discovery Served Prior
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`to Resetting of Trial Dates”. The essence of this motion was that Mr. Batterman claimed he
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`served 211 discovery requests on June 27, 2017 by mail, and requested the Board to instruct
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`Applicant to respond to those discovery requests within 30 days of that date of service. The
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`211 discovery requests were attached as exhibits, all of which contained Mr. Batterman’s
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`signatures and bearing a June 27, 2017 date.
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`On July 10, 2017, Applicant’s attorney received a package from Mr. Batterman containing the
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`motion and exhibits containing the 211 discovery requests. The package was postmarked
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`July 7, 2017 (Exhibit 21 and para. 6, Kuehn Decl.). Applicant’s attorney never received the
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`alleged, original 211 discovery requests, neither via email as required nor via first class mail
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`(para. 7, Kuehn Decl.).
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`On October 19, 2017 in an order regarding the motion to compel, the Board found Mr.
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`Batterman had failed to make a good faith effort to resolve or narrow the discovery issues.
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`See pgs. 3-5 of Board order of October 19, 2017 in the Child Case.
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`d) MR. BATTERMAN FAILED TO RESPOND TO APPLICANT’S REQUESTS FOR
`ADMISSIONS AND STATED THAT BUILDING SPRINKLERS DESTROYED DOCUMENTS
`AND ELECTRONICS
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`On November 20, 2017 and November 21, 2017 Mr. Batterman was electronically served first
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`sets of Requests for Admissions and Interrogatories regarding the Parent Case, respectively
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`(Exhibits 22-23). As such, the deadlines for responses were December 20 and 21, 2017,
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`respectively.
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`On December 22, 2017, Applicant’s counsel Cliff KuehEn emailed Mr. Batterman, stating the
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`deadlines for responses had passed and that no responses had been received (Exhibit 24).
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`On December 29, 2017, Mr. Kuehn emailed Mr. Batterman again, stating the deadlines for
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`responses had been exceeded by more than a week and that no responses had been
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`received. Mr. Batterman was requested to respond with a reason for the delay, and to
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`indicate whether he intended to respond (Exhibit 24).
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`On January 9, 2017, Mr. Kuehn called Mr. Batterman and left a voicemail (Exhibit 24 and
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`para. 8, Kuehn Decl.).Applicant’s counsel followed up with an email to Mr. Batterman,
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`identifying the phone number called and that the reason he was being contacted was related
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`to his overdue discovery responses (Exhibit X).
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`On January 12, 2017, Mr. Batterman responded by email stating that Mr. Kuehn’s discovery
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`requests and emails “went to spam” and that he would be provided responses “shortly as we
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`had our buildings [sic] sprinkler system go off and our office documents as well as electronics
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`were destroyed.” (Exhibit 24). Mr. Kuehn reminded Mr. Batterman that the responses were
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`overdue by nearly a month and asked when responses could be expected (Exhibit 24).
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`As of the date of this writing, Applicant has not received any further communication from Mr.
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`Batterman (para. 9, Kuehn Decl.).
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`IV. ARGUMENT
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`A. APPLICANT HAS STANDING TO BRING THIS CANCELLATION ACTION
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`A counterclaimant’s standing to cancel a pleaded registration is inherent in its position as
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`defendant in the original proceeding. Harry Winston, Inc. v. Bruce Winston Gem Corp., 111
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`USPQ2d 1419, 1428 (TTAB 2014) and TBMP § 309.03(b).
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`Applicant’s standing to bring this cancellation is established as a consequence of its
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`applications to register the trademarks BILLGO and BILLGO INTELLIGENT BILL PAY being
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`opposed by Mr. Batterman’s company Digital Receipts, LLC.
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`B.
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`THERE IS NO GENUINE ISSUE OF MATERIAL FACT THAT MR. BATTERMAN OBTAINED THE
`CONTESTED REGISTRATION BY MAKING FALSE STATEMENTS WITH AN INTENT TO DECEIVE
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`Any individual who provides false material representations of fact in order to obtain a
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`trademark registration or renewal has committed fraud. 15 U.S.C.A § 1064(3). Additionally,
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`the deception must be willful to constitute fraud in procuring a trademark registration or
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`renewal. See In re Bose Corp, 580 F.3d 1240 (Fed. Cir. 2009).
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`It is undisputed that Opposer failed to use any of the Contested Marks in commerce in
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`connection with any of the goods or services in the Contested Registrations. CEO Chad
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`Batterman has admitted this. Mr. Batterman’s extensive and intimate experiences with
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`trademark prosecution and litigation removes any doubt that he was fully aware that lack of
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`genuine use of a mark is fatal for a trademark application, and thus knowingly made false
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`statements to the USPTO that the Contested Marks were being used in commerce. The intent
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`to deceive the USPTO is clear, as the only value of a trademark registration to Mr. Batterman
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`is that it affords him a stronger negotiating position against customers in his real business:
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`the sale of domain names.
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`1. MR. BATTERMAN ADMITTED NOT USING THE CONTESTED MARKS
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`A matter is admitted unless, within 30 days after being served, the party to whom the request
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`is directed serves on the requesting party a written answer or objection addressed to the
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`matter and signed by the party or its attorney. Fed. R. Civ. P. 36(a)(3). It is not necessary to file
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`a motion to deem requests for admissions admitted when no response is served, since the
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`admissions are deemed admitted by operation of Fed. R. Civ. P. 36(a). TBMP §407.03(a).
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`Mr. Batterman was served 31 Requests for Admission on November 20, 2017 at his agreed
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`upon email address for service, billhero14@gmail.com. He failed to make a timely response
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`by the December 20, 2017 deadline. Only weeks later, and after 4 attempts at
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`communication with him, did Applicant finally receive any response from Mr. Batterman,
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`stating he needed more time to respond. After Applicant’s attorney inquired as to how much
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`time was needed, Mr. Batterman again failed to respond. He has not communicated with
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`Applicant’s attorney since.
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`a) MR. BATTERMAN SHOULD NOT BE ALLOWED TO RESUBMIT HIS ADMISSIONS
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`Mr. Batterman will surely seek relief from his admissions by operation of Fed. R. Civ. P. 36(a),
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`citing the destruction of documents and evidence on part of his building’s sprinkler system.
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`The Board should not accept excuses from Mr. Batterman, as his own inexcusable neglect led
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`to the current circumstances.
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`First, it is suspect that Mr. Batterman has received all prior email communications from
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`Applicant’s attorney Cliff Kuehn, and vice versa, except in the 2 instances where lapses in
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`communication would prejudice Applicant and benefit Mr. Batterman. He allegedly did not
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`receive Mr. Kuehn’s email service of the Requests for Admissions, despite both individuals
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`using Google’s mail service Gmail and both parties exchanging email with the same
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`addresses. It is mysterious because spam filters will not mark email from a prior sender as
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`spam unless the recipient voluntarily marks the sender as a source of spam. By claiming
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`Applicant’s discovery requests went to spam, Mr. Batterman is effectively