IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Trademark Registration No. 2500872
`Registered:
`October 23, 2001
`Mark:
`INCREDIBLE PIZZA COMPANY GREAT FOOD, FUN, FAMILY &
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`FRIENDS and Design
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`
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`INCREDIBLE PIZZA CO., INC.,
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`
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`Registrant.
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`PETITIONER’S RESPONSE TO REGISTRANT’S
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`SECOND MOTION TO COMPEL DISCOVERY
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`I.
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`INTRODUCTION
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`In its second motion to compel discovery, Registrant Incredible Pizza Co., Inc. (“IPC”)
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`raises the same issues as in its first motion. IPC argues that Petitioner JIPC Management, Inc.
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`(“JIPC”) has (1) waived its attomey-client privilege, and (2) not met its obligation of good faith
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`in responding to IPC’s document requests. On June 30, 2005 the Board issued an order denying
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`IPC’s first motion to compel. The Board noted that IPC had served 84 requests for production
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`and was seeking to compel additional responses to 60 of them, a sign that IPC was not
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`conducting discovery in good faith; IPC’s response was to serve an additional 37 requests for
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`production, bringing its total to 121, and to make a second motion to compel additional
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`responses to 87 of them. The order further stated that some of the issues raised by IPC could be
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`resolved without the Board’s intervention, and directed the parties to try to resolve those issues
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`on their own. As to IPC’s document requests, JIPC made a unilateral effort to comgly with the
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`Portlnd2-4542391.] 0061355-00002
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`1
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`Illlllllllll||||l|||||lllll|||||l||l||l'|||lll||||
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`12_13_2005
`L'.S. Patent E TMOFEITM Mall F ‘p! DI. #22
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`JIPC MANAGEMENT IN .
`’
`C ’
`
`Petitioner,
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`v.
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`CANCELLATION NO. 92043316
`F
`
`TTAB
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`

`
`pl
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`Board’s directions. JIPC has supplemented its document production on eight separate occasions
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`since March 2005, and unilaterally dropped some of its objections.
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`As to IPC’s claim that JIPC waived its attomey-client privilege, all of the facts
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`underlying this claim are exactly the same as they were when IPC first raised the issue. This
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`issue was fully briefed and presented to the Board. IPC asked the Board to order J[PC to
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`produce documents protected by the attomey-client privilege and work product doctrine. The
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`Board denied the motion without comment, apparently agreeing with JIPC that IPC was not
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`entitled to any discovery of privileged documents because no privileged communication relevant
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`to a claim or defense at issue in the case was disclosed. JIPC does not believe that the Board
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`considered IPC’s privilege claim among the issues that could be resolved by the further efforts of
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`the parties. There was no middle ground: either IPC was entitled to make a foray into the files of
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`J[PC’s former counsel, or it was not entitled to do so. The Board’s decision lefi little room for
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`doubt. However, in an apparent effort to delay a resolution of this case on the merits, PC has
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`chosen to present this same claim again.
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`The cursory reference in the Amended Petition by JIPC to advice of former counsel to its
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`predecessor in interest has no bearing on any matter at issue in this proceeding. An implied
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`subj ect-matter waiver of the type sought by IPC is warranted only when a party makes a
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`selective disclosure of privileged communications to gain some advantage in the litigation, trying
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`to use the privilege both as a sword and a shield. In such cases, fairness requires that the other
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`party have the opportunity to evaluate the evidence necessary to respond. But JIPC has not put
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`forward the advice of counsel in support of any claim at issue in this case, or to overcome any
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`defense raised by IPC. A nonevidentiary reference to privileged communications about a matter
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`not at issue in the case does not effect an implied subject-matter waiver.
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`»J
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`II. FACTUAL BACKGROUND
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`A.
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`JIPC’s Reference to the Advice of Counsel.
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`In its Petition, JIPC makes the following allegations:
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`0
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`“John’s Incredible Pizza Company, Inc. was incorporated in the State of
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`California on June 3, 1997 and first used Petitioner’s Marks in commerce in the
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`United States in September 1997, when it opened its first pizza restaurant.”
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`(Amended Petition to Cancel 1] 3).
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`“John’s Incredible Pizza Company, Inc. assigned Petitioner’s Marks to Petitioner
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`on March 31, 1999.” (Id. 1] 4).
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`“In late 1998, John’s Incredible Pizza Company, Inc. learned that [IPC’s founder
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`Richard] Barsness was planning to rename and rebrand a ‘Mr. Gatti’s’ restaurant
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`in Amarillo, Texas as ‘Amarillo’s Incredible Pizza Company.’” (Id. 1] 14).
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`“On the advice of counsel that nothing could be done, John’s Incredible Pizza
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`Company, Inc. did not pursue legal action against Barsness or his company.” (Id.
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`1118.)‘
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`Paragraph 18 is the basis for lPC’s waiver of privilege claim. JIPC disclosed the fact that
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`in late 1998, its predecessor in interest was advised by counsel that, despite Barsness’ plan to use
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`a nearly identical mark for a nearly identical business, nothing could be done. The issue is
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`whether the reason for the inaction of JIPC’s predecessor at this early stage is relevant to any
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`‘ This advice was rendered by attorney George Lasko of Victorville, California in late
`1998 or early 1999. In spring 2000, JIPC stopped using Lasko’s services. For the next several
`months, JIPC used the Portland, Oregon firm of Tarlow, Jordan & Schrader. JIPC then switched
`to the firm of Worrel & Worrel, of Fresno, California. Finally, in March 2004, JH’C switched to
`Stoel Rives LLP, its current trial counsel.
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`claim or defense at issue in this case.2
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`B.
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`The Nature of JIPC’s Claims and IPC’s Defenses.
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`JIPC’s petition to cancel rests on three grounds, each of which is a separate basis for
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`cancellation:
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`(1) that JIPC is the senior user of a mark nearly identical in its overall commercial
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`impression to the registered mark, and used on nearly identical goods and services;
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`(2) that IPC’s founder Richard Barsness committed fraud on the Trademark
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`Office in the application for the registered mark, because he was fully aware of JIPC’s
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`superior rights and swore that he was not aware of them; and
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`(3) that Barsness committed fraud on the Trademark Office in the Statement of
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`Use for the registered mark, by submitting specimens reflecting permissive use by a third
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`party that did not inure to the benefit of Barsness or IPC.
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`Barsness did not file the application that resulted in the registered mark until September
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`21, 1999. The first use in commerce claimed by Barsness and [PC did not occur before October
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`1999. The application was not published for opposition until October 31, 2000. At the time the
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`advice was rendered, the registered mark was not in use, and Barsness and IPC had no
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`application to oppose or registration to cancel. There was no use on which to premise an
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`infringement claim, and no notice of issuance or registration to support an action before the
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`2 In the original petition, filed May 5, 2004, JIPC stated that the assignment of rights
`from its predecessor occurred on June 15, 1998. Shortly thereafter JIPC realized that this date
`was incorrect, and that the documented date of the transfer was March 31, 1999. JIPC filed an
`amended petition with the corrected date. The correction of the date of transfer in Paragraph 4
`required a corresponding correction to Paragraph 18, which originally stated that it was
`Petitioner (as opposed to JIPC, Inc.) that took no action. The Amended Petition was filed on
`June 14, 2004, about three weeks afier the original petition. No responsive pleading had been
`served by the registrant, and the claim that an implied subj ect-matter waiver had occurred had
`not been raised. IPC’s theory that the amendment of the pleading was some sort of attempt to
`mitigate the effect of a waiver of privilege does not comport with the facts.
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`4
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`TTAB. The reasons why JIPC’s predecessor did not take legal action against Barsness in late
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`1998 or early 1999, before any application for registration of the registered mark was filed and
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`before the earliest use in commerce claimed by Barsness and IPC, are irrelevant to any of the
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`grounds for cancellation. They are simply not a part of JIPC’s case.
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`IPC pleaded six affirmative defenses in its Answer to the Amended Petition. The six
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`defenses are:
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`(1) that JIPC fails to state a claim;
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`(2) that the J[PC Mark is not used in commerce;
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`(3) that JIPC has unclean hands;
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`(4) that JIPC is guilty of fraud;
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`(5) that JIPC lacks standing; and
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`(6) that JIPC does not use “Incredible Pizza” as a trademark or service mark.
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`The reasons for the inaction of JIPC’s predecessor in late 1998 or early 1999 could not logically
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`be advanced in support of any argument JIPC might make to overcome IPC’s affirmative
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`defenses. Its state of mind at that time has nothing to do with any of IPC’s affirrnative defenses
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`in this cancellation proceeding.3
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`III. ARGUMENT
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`A.
`
`There Is No Broad Subject-Matter Waiver, and Any Waiver Does Not Extend
`Beyond the Material Already Disclosed.
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`IPC argues that it is entitled to discovery concerning all advice of counsel to JIPC
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`regarding “the basis or lack thereof of potential or future legal action, such as this cancellation
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`proceeding.” G{egistrant’s Second Motion to Compel Discovery (“Motion to Compel”) at 2). In
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`other words, IPC argues that paragraph 18 effects an implied waiver of all privileged
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`3 Notably, IPC has not asserted that JIPC’s claims are barred by laches, an affirmative
`defense to which the inaction of JIPC, Inc. might conceivably be relevant.
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`5
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`communications on the same subject matter. IPC’s argument fails because it is well-settled law
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`that an implied waiver occurs only when it is required by the “faimess principle,” which prevents
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`a party from using the privilege as both a sword and a shield. Bittaker v. Woodford, 331 F.3d
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`715, 719 (9th Cir. 2003). “In practical terms, this means that parties in litigation may not abuse
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`the privilege by asserting claims the opposing party carmot adequately dispute unless it has
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`access to the privileged materials.” (Id.) No implied subj ect-matter waiver occurs when the
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`matter disclosed is not relevant to any claim or defense at issue in the case, and the party
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`claiming waiver is not prejudiced in any way by the disclosure.
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`“The advice of counsel is placed in issue where the client asserts a claim or defense, and
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`attempts to prove that claim or defense by disclosing or describing an attorney client
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`communication.” Rhone-Poulenc Rorer Inc. v. Home Indem. Co., 32 F.3d 851, 863 (3d Cir.
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`1994). In Rhone-Poulenc, the court reversed a finding of waiver because the plaintiffs had not
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`“interjected the advice of counsel as an essential element ofa claim” in the case. Id. at 864
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`(emphasis added). When advice of counsel is disclosed about a matter not at issue in the case,
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`and the disclosing party will not offer reliance on the advice of counsel to support any claim or
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`overcome any defense in the case, fairness does not require additional disclosures, and no
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`implied subject-matter waiver occurs. Cf United States v. Aronofi’, 466 F. Supp. 855, 862-63
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`(S.D.N.Y. 1979) (“[W]here the party attacking the privilege has not been prejudiced .
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`.
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`. there is
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`no reason to find a waiver by implication.”); Clark v. City ofMunster, 115 F.R.D. 609 (N.D. Ind.
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`1987) (no waiver because plaintiff did not rely on privileged communication as basis for any
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`claim or defense); Principle Bus. Enterprises, Inc. v. United States, 210 U.S.P.Q. (BNA) 26 (Ct.
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`C1. 1980) (no waiver because opinion of counsel was not at issue, so party seeking discovery was
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`not prejudiced by disclosure).
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`[PC has not pointed to any authority holding that the mere fact of disclosure of privileged
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`information is sufficient to support an implied subject-matter waiver. Instead, IPC cites to cases
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`that involve advice of counsel offered into evidence in support of a claim or defense. For
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`example, IPC relies on US. v. Nobles, 422 U.S. 225 (1975). Nobles is a classic sword-and-shield
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`case. Defendant bank robber wanted an investigator hired by defense counsel to testify that (1)
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`one of the govemment’s eyewitnesses told him all Afiican-Americans looked alike to him, and
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`(2) the other said she had only seen the defendant from behind. The Supreme Court held that
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`putting on this testimony would waive the privilege to the investigator’s written report, since it
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`had been placed directly at issue on the disputed question of identification. IPC also purports to
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`rely on Bittaker, 331 F.3d 715 (habeas claim alleging ineffective assistance of counsel waives
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`privilege to prevent strategic selective disclosure); US. v. Amlani, 169 F.3d 1189 (9th Cir. 1999)
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`(claim that conviction should be reversed because prosecutor’s disparagement of defendant’s
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`counsel caused defendant to lose confidence in his counsel placed privileged communications on
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`this subject at issue); Chevron Corp. v. Pennzoil Co., 974 F.2d 1156 (9th Cir. 1992) (putting
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`forward advice of counsel on reasonableness of defendant’s position that Hart-Scott-Rodino
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`filings were not required for purchases of plaintiffs stock placed that advice at issue); Columbia
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`Pictures Television, Inc. v. Krypton Broadcasting ofBirmingham, Inc., 259 F.3d 1186 (9th Cir.
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`2001) (advice of counsel asserted in defense of claim that copyright infringement was willful);
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`Starsight Telecast, Inc. v. Gemstar Development Corp., 158 F.R.D. 650 (N.D. Cal. 1994) (advice
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`of counsel asserted in defense of claim that patent infringement was willful); McCormick-
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`Morgan, Inc. v. Teledyne Indus., Inc., 765 F. Supp. 611 (N.D. Cal. 1991) (same); Handgards,
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`Inc. v. Johnson & Johnson, 413 F. Supp. 926 (N.D. Cal. 1976) (in defense of patent misuse
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`claim, testimony of counsel offered to establish that patent suits were brought in good faith).
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`All of the cases relied on by 11°C have one essential thing in common: the advice of
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`counsel was placed at issue by being offered in direct support of a claim or defense. In contrast,
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`the reason for the inaction of JIPC’s predecessor, more than two years before the registered mark
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`was even published for opposition, are not relevant to any claim or defense at issue in this case.
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`J[PC has not asserted any claim or defense based on that advice of counsel, nor has it attempted
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`to prove any claim or defense by disclosing or describing any attomey-client communication.
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`Because JIPC does not assert reliance on the advice of counsel mentioned in the Amended
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`Petition in support of any claim or defense in this proceeding, fairness does not require any
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`waiver of the attomey-client privilege beyond the matter already disclosed. Hercules Inc. v.
`Exxon Corp., 434 F. Supp. 136, 156 (D. Del.’ 1977) (court will find no subject matter waiver
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`unless “facts relevant to a particular, narrow subject matter have been disclosed in circumstances
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`in which it would be unfair to deny the other party an opportunity to discover other relevant facts
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`with respect to that subject matter”).
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`B.
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`If the Board Determines That the Advice Is Relevant, JIPC May Choose Between
`Excluding It from Evidence and a Waiver.
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`When there is the prospect of an implied waiver, “the holder of the privilege may
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`preserve the confidentiality of the privileged communications by choosing to abandon the claim
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`that gives rise to the waiver condition.” Bittaker, 331 F.3d at 721 (citing Lyons v. Johnston, 415
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`F.2d 540, 541-42 (9th Cir. 1969)); see also Vicinanzo v. Brunschwig & Fils, Inc., 739 F. Supp.
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`891 (S.D.N.Y. 1990) (directing defendant to choose between reliance on advice of counsel and
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`avoidance of waiver); Am. Optical Corp. v. Medtronic, Inc., 56 F.R.D. 426, 432 (D. Mass. 1972)
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`(no waiver from disclosure of opinion of counsel would occur unless defendant attempted to rely
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`on such assertions at trial).) In this case, as noted above, the disclosed advice is unrelated to any
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`of JIPC’s three grounds for cancellation or IPC’s six pleaded defenses. However, if the Board
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`determines that the advice is relevant, it should give J[PC the choice of preserving the privilege
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`by agreeing not to introduce evidence at trial of Lasko’s advice that “nothing could be done.”
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`C.
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`If a Subject-Matter Waiver Is Found, the Scope Should Be Limited.
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`If the Board concludes that the reasons for the inaction of Petitioner’s predecessor are
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`somehow relevant, that an implied waiver of the attomey-client privilege occurred as to that
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`subject, and that JIPC should not have the choice of excluding the advice from evidence, then the
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`scope of the waiver is properly limited to the discovery of communications between Lasko and
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`JIPC Inc. on the subj ect of potential legal actions available in the circumstances that existed
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`when the advice was given, i.e. before an application for registration was filed and before the
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`first use of the name “Incredible Pizza Company” by Barsness’ purported licensee.
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`When a subj ect-matter waiver occurs early in a case and causes no prejudice to the other
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`side, the public policy underlying the attorney-client privilege requires that the scope of the
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`waiver be limited to “communications about the matter actually disclosed.” Weil v.
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`Inv./Indicators, Research & Mgmt. Inc., 647 F.2d 18, 25 (9th Cir. 1981); Bittaker, 331 F.3d at
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`720 (if imposed, waiver must be “no broader than needed to ensure the fairness of the
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`proceedings before [the tribunal]’’); In re Grand Jury Proceedings October 12, 1995, 78 F.3d
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`251, 56 (6th Cir. 1996) (scope of waiver was limited to “questions that clearly pertain to the
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`subject matter of the specific points on which a waiver did occur”). The matter actually
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`disclosed in this case was that, at a time when Barsness had not used the name “Incredible Pizza
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`Company” in commerce, and had yet to apply for registration, attorney Lasko advised JIPC, Inc.
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`that nothing could be done. Nothing has been disclosed about advice of counsel given afier
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`Barsness’ purported licensee began to use the name “Incredible Pizza Company” in October
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`1999, much less advice of counsel given after the application for registration of the registered
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`mark was published for opposition on October 31, 2000. Therefore, if a subj ect-matter waiver is
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`9
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`found in this case, the subject matter should be defined as advice concerning the availability of
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`legal action before use of the name “Incredible Pizza Company” began in Amarillo, and before
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`the registered mark was published for opposition.
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`4
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`D.
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`There Was No Waiver of Work Product Immunity.
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`IPC’s argument that JIPC waived work-product immunity as to Lasko’s advice has even
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`less to recommend it than the waiver argument. To justify discovery of the attomey’s legal
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`theories, mental impressions and the like, IPC would have to demonstrate the relevance to a
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`claim or defense at issue in this case, not just of the reason why no action was taken when
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`Barsness’ intention to use the name “Incredible Pizza Company” first came to light, but also of
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`the attorney ‘s state of mind at that time. See I7zorn EMI North America, Inc. v. Micron
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`Technology, Inc., 837 F. Supp. 616, 621-22 (D. Del. 1993). In Thorn, the defendant in a patent
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`infringement action asserted reliance on the advice of counsel as a defense against a charge of
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`wilfullness. This use of the advice of counsel entitled the plaintiff to discovery of privileged
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`communications, but not to materials covered by work product immunity, because the disputed
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`issue involved the defendant ’s state of mind: whether its reliance on the advice was reasonable.
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`“Counsel’s mental impressions, conclusions, opinions or legal theories are not probative of that
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`state of mind unless they have been communicated to that client.” Id. at 622; see also Steelcase,
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`Inc. v. Haworth, Inc., 954 F. Supp. 1195, 1199 (W.D. Mich. 1997).
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`In this case, paragraph 18 refers to the state of mind of JIPC Inc. when Barsness’
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`4 The scope of any waiver would therefore be limited to the advice of Lasko on this
`subject, since use of the name “Incredible Pizza Company” by Barsness’ purported licensee
`began before any of the other three firms rendered advice on trademark matters. Moreover, a
`waiver as to the advice of prior counsel about a particular subject ordinarily does not extend to
`the advice of subsequent counsel about the same subject. Cruden v. Bank ofNew York, 957 F.2d
`961, 972 (2d Cir. 1992); Duplan Corp. v. Deering Milliken, Inc., 397 F. Supp. 1146, 1161
`(D.S.C. 1975); Wieboldt Stores, Inc. v. Schottenstein, No. 87C 8111, 1991 WL 105633, at *4
`(N.D. Ill. June 7, 1991); Brock Equities Ltd. v. Josepthal, Lyon & Ross, Inc. No. 92 Civ. 8588,
`1993 WL 350026 (S.D.N.Y. Sept. 9, 1993).
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`l 0
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`intention to use the name “Incredible Pizza Company’ first came to light. The reason for the
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`inaction at that time, although not offered in support of any claim or defense in this case, was at
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`least mentioned in the Petition. Lasko’s state of mind has never even been referred to, much less
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`placed at issue. Any opinion or theory of Lasko that was not shared with or communicated to
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`JIPC, Inc. is therefore irrelevant to the matter disclosed. Rh0ne—Poulenc, 32 F.2d at 866 (noting
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`that “[w]ork product that was not communicated to the client cannot affect the client’s state of
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`mind”). Therefore, no foray into Lasko’s mental impressions should be permitted.
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`E.
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`IPC’s Complaints About JIPC’s Production of Documents.
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`JIPC has met its discovery obligations in this proceeding in good faith. As soon as the
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`parties agreed to a protective order, JIPC made its initial production of 493 pages of documents.
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`Since the filing of the first motion to compel, JIPC has supplemented its production on eight
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`separate occasions, bringing its total production to 677 pages.5 JIPC also followed the Board’s
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`instruction to try to work out the discovery issues without the Board’s intervention. For
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`example, IPC earlier complained that JIPC would not produce “floor plans, renderings, and
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`blueprints” of its restaurants. JIPC considered these irrelevant. However, after counsel for IPC
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`explained that the purpose was to bolster IPC’s theory that JIPC’s logo is dominated by the word
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`“John’s,” and narrowed the request to specifications for the signs showing the relative size of the
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`words, JIPC produced responsive documents. The parties were not able to reach agreement on
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`all of the genuine disputed issues. However, many of IPC’s complaints are frivolous, as IPC has
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`either already received the information and documents it claims were withheld, or JIPC has
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`already represented that no responsive documents exist.
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`5 See Exhibit A to the Affidavit of David L. Silverman In Opposition to Registrant’s
`Second Motion to Compel (“Silverman Aff.”).
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`1 1
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`Request Nos. 17-25 concern JIPC’s plans for geographic expansion.6 Such plans are
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`irrelevant to any issue in this case.7 This is a cancellation proceeding, not an infringement
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`action. As long as JIPC establishes that it is the senior user, with valid common law rights, of a
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`mark to which the registered mark is confusingly similar, IPC’s mark should be cancelled. The
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`fact that the parties, apart from their Internet websites, currently use their respective marks in
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`different parts of the United States is irrelevant. Real Prop. Mgmt., Inc. v. Marina Bay Hotel,
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`221 U.S.P.Q. (BNA) 1187, 1190 (T.T.A.B. 1984); Coach House Rest., Inc. v. Coach & Six
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`Restaurants, Inc., 934 F.2d 1551, 1562 (11th Cir. 1991) (stating that, in cancellation proceeding,
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`“the registered mark must be judged against challenging marks as if the registered mark was
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`being used everywhere in the nation. .
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`.
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`. Consequently, geographical remoteness is irrelevant to
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`this likelihood of confusion inquiry.”); Giant Food, Inc. v. Nation ’s Foodservice, Inc., 710 F.2d
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`1565, 1568-69 (Fed. Cir. 1983) (present location of businesses not relevant to opposition based
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`on Section 2(d) of Lanham Act). IPC misrepresents the holding ofJohnston Pump v.
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`Chromalloy American Corp., 10 U.S.P.Q.2d (BNA) 1671 (T.T.A.B. 1988). The “expansion of
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`trade” at issue in Johnston Pump had to do with the types of goods and services the parties
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`intended to use with their marks, not the geographic extent of their use. Because the geographic
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`extent of the parties’ use is irrelevant to this cancellation proceeding, JIPC properly declined to
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`produce documents in response to Request Nos. 17-25 and also Request No. 113.
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`As to Request No. 39, JIPC made a complete disclosure of all of the persons with
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`ownership interests in itself and the related entities in response to this request and in response to
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`
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`6 IPC wastes our time by seeking to compel a further response to Requests No. 17-20 and
`22-24. JIPC has represented that there are no documents responsive to this request. See Exhibit
`B to Silverrnan Aff.
`7 lPC’s argument for their relevance echoes its argument for the relevance of the Lasko
`advice: JIPC mentioned expansion in the Petition, therefore it must be relevant.
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`1 2
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`.
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`an interrogatory propounded by IPC.8 JIPC then, at IPC’s insistence, produced an additional 40
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`pages of documents relating to a division of marital property between its founder John Parlet and
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`his ex—wife, even though IPC’s claim that these documents could lead to the discovery of
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`relevant evidence was dubious at best.9
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`Request No. 40 (for JIPC’s tax returns) was properly refused on grounds of irrelevance,
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`as was Request No. 42 (for JIPC’s accounting treatment of the trademark assignments). JIPC
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`produced documents in response to Request No. 41.10 IPC apparently believes additional
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`responsive documents would be relevant if they showed that there was no formal assignment to
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`JIPC by its predecessor of some of JIPC’s marks. IPC is mistaken. JIPC has already produced
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`documents showing the assignment of the rights in the word mark “John’s Incredible Pizza
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`Company” from its predecessor in interest to itself. JIPC need not rely on its rights in its other
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`marks (referred to by IPC in the document requests as the “Claimed Marks”) to demonstrate that
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`the registered mark is likely to cause significant consumer confusion, beyond the confusion it has
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`already caused.”
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`IPC’s complaint about Request No. 52 is meaningless. Request No. 52 does not concern
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`“licensing agreements” as stated by IPC. (Motion to Compel at 15). It asks for documents
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`reflecting conversations about the name “Amarillo’s Incredible Pizza Company.” JIPC already
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`told IPC there were no responsive documents.”
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`As to Request No. 54, this request is partially duplicative of Request No. 14, and in
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`
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`8 Exhibits C and D to Silverman Aff.
`9 Exhibit E to Silverman Aff.
`‘° Exhibit F to Silverman Aff.
`” IPC wastes our time by seeking to compel a further response to Request No. 43. JIPC
`has represented that there are no documents responsive to this request. See Exhibit B to
`Silverman Aff.
`‘2 Exhibit B to Silverman Aff.
`
`Portlnd2-454239l.l 0061355-00002
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`l 3
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`

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`A
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`response to Request No. 14, JIPC has already produced all of the documents that it would have
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`produced in response to Request No. 54 had Request No. 54 not included vague and ambiguous
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`terms. Accordingly, IPC’s complaint about JIPC’s response to Request No. 54 is moot.”
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`As to Request Nos. 90-112 and 114-121, IPC complains that JIPC has agreed to produce
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`documents and then not done so. Not only is this claim false, it is frivolous. JIPC’s response to
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`this set of requests states: “In these responses, Petitioner’s statement that it will produce
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`documents responsive to a request is not intended in any instance to be a statement that any of
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`the requested documents do in fact exist.”14 Likewise, in each instance of which IPC complains,
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`JIPC states, “Subject to and without waiver of the specific and general objections above, which
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`are renewed here, Petitioner agrees to produce non-objectionable and non-privileged documents,
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`ifany, responsive to this request.” (Id., emphasis added). [PC has chosen to pretend that these
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`responses are unfulfilled promises to produce documents. IPC has nothing to complain about,
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`because no properly discoverable documents have been withheld. Moreover, as the Board
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`pointed out in its order denying IPC’s first motion to compel, if properly discoverable documents
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`are withheld from the requesting party, the responding party can be precluded from relying on
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`such information and from adducing testimony with regard thereto during its testimony period.
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`IV. CONCLUSION
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`For the reasons stated above, JIPC respectfully requests that the Board find that no
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`waiver of attorney-client communications occurred beyond the matter actually disclosed in
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`paragraph 18 of the Amended Petition, and that it deny the Motion to Compel on that basis.
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`Alternatively, if the Board finds that a subj ect-matter waiver occurred, JIPC requests that the
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`Board give JIPC a choice between relying on such information and providing discovery of
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`13 To the extent Request No. 54 was compound and sought discovery of JIPC’s expansion
`plans, JIPC objected on the same grounds as it objected to Request Nos. 17-25.
`'4 Response to IPC’s 4th Requests for Production. Exhibit 2 to Motion to Compel.
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`Portlnd2-4542391.l 0061355-00002
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`14
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`

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`a\
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`privileged documents. Alternatively, if the Board finds that a subj ect-matter waiver occurred
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`and that JIPC is not entitled to such a choice, JIPC requests that discovery be limited to
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`communicated advice of George Lasko concerning the options for legal action against Barsness
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`or ]PC in the period before the first use of the name “Incredible Pizza Company” by Barsness’
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`purported licensee. JIPC fll1'th€I' requests that the portions of IPC’s Motion to Compel relating to
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`issues other than attomey-client privilege be denied for the reasons stated above.
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`DATED: December 12, 2005.
`
`Respectfully submitted,
`
`STOEL RIVES LLP
`
` _
`
`Randolph C. Foster‘
`David L. Silverman
`
`900 SW Fiflh Avenue, Suite 2600
`Portland, OR 97204
`(503) 224-3380
`
`Attorneys for Petitioner
`
`Portlnd2-454239 1 .1 0061355-00002
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`1 5
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`

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`CERTIFICATE OF EXPRESS MAIL UNDER 37 C.F.R.
`
`1.10
`
`[XX] Express Mail Mailing Label No.: EV105697325US
`Date of Deposit: December 13, 2005.
`
`I hereby certify that this paper is being deposited with the United States Postal Service
`“Express Mail Post Office to Addressee” service under 37 C.F.R. § 1.10 on the date indicated
`above and is addressed to the Box TTAB Commissioner for Trademarks, 2900 Crystal Drive,
`
`Arlington, VA 22202. %@i
`
`Sandra Bruner
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I served the foregoing PETITIONER’S RESPONSE TO
`REGISTRANT’S SECOND MOTION TO COMPEL DISCOVERY on the following named
`persons on the date indicated below by:
`
`IZI
`
`El
`
`Cl
`
`E]
`
`mailing with postage prepaid
`
`hand delivery
`
`facsimile transmission
`
`overnight delivery
`
`El
`
`e-mail attachment in PDF format
`
`to said persons a true copy thereof, contained in a sealed envelope, addressed to said persons at
`their last-known address indicated below.
`
`Mr. Glenn Spencer Bacal
`Jennings, Strouss & Salmon, P.L.C.
`201 East Washington Street
`Phoenix, AZ 85004-2385
`gbacal@j sslaw.com
`
`DATED: December 12, 2005.
`
`STOEL VES L P
`
`/
`
`( Zé ____,,
`
`Randolph C. Foster
`David L. Silverrnan
`
`900 SW Fifth Avenue, Suite 2600
`
`Portland, OR 97204
`(503) 224-3380
`Attorneys for Petitioner
`
`PortInd2—454239l .1 0061355-00002