throbber
JOHN JOSEPH HALL
`
`1631 BEVERLY BOULEVARD
`
`LOS ANGELES, CA 90026-5710
`
`(213)250-1145
`
`ATTORNEY FOR REGISTRANT
`
`MB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92044469
`
`> ) ) > )
`
`PLEASANT TRAVEL SERVICE,
`
`a California corporation,
`
`Petitioner
`
`v.
`
`) REGISTRANT’S OPPOSITION TO
`
`) PETITIONER’S MOTION TO AMEND
`
`PLEADINGS TO CONFORM TO EVIDENCE,
`COMBINED STATEMENT OF REASONS AND
`
`MEMORANDUM OF POINTS AND
`
`AUTHORITIES, DECLARATION OF
`JOHN JOSEPH HALL
`
`) ) ) ) )
`
`MARISOL, LLC, a limited
`
`liability company,
`
`Registrant
`
`COMINED STATEMENT OF REASONS AND
`
`MEMORANDUM OF POINTS AND AUTHORITIES
`
`Petitioner's motion to amend pleadings to conform to evidence
`
`should be denied for the following reasons:
`
`I. THE PROBATIVE EVIDENCE OF RECORD PROVES THAT THE FOOD FACILITY
`
`AT PETITIONER'S ROYAL LAINA RESORT LOCATION 3 WHICH WAS OPERATED AS
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`BEACHCOMBERS WAS ALWAYS REFERRED TO AS A RESTAURANT ONLY.
`
`A. Petitioner's Exhibit 39 Shows the Use of Beachcombers
`
`Restaurant at Location 3.
`
`(Exhibit 1 to Hall Declaration)
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`1
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`04-28-2609
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`Petitioner's (P's) Exhibit 39 is a portion of a sales kit and its
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`page 2 contains a property map (P's Bates No. 0039). P's Exhibit 39
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`is attached to Hall declaration as H Exh 1—1,2,3. H Exh 1-2 lists
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`locations of various facilities of Petitioner's Royal Lahaina Resort
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`and shows location 3 as Beachcombers.(P’s Bates No. 0039).
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`Petitioner's vice—president Glenn Hogan testified that the property
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`map shows that”
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`number 3 is Beachcombers.” GH Test. Depo.
`
`Tr.,Vol.I, P.87, L 9,
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`taken on December 28, 2007. The third page of
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`P's Exh 39; H Exh.l—3, P's Bates No. 0044, has a list of food and
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`beverage services, and shows in pertinent part:
`
`“BEACHCOMERS RESTAURANT
`
`including
`Serving a wide variety of Pacific Rim favorites,
`Chinese and American specialties.”
`Hawaiian, Thai, Japanese,
`
`Glenn Hogan further testified that the sales kit
`
`(P's Exh.39;
`
`H Exh. 1) was used by Petitioner during “ Late 1990s and 2000s”.
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`When asked by Petitioner's attorney,
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`[referring to the kit of
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`P's Exh.39; H Exh.l)]:
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`“Q. Is it still in use? A I believe it is.” GH Test. Depo. Tr.,
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`Vol.1, P.87, LL 15—20,
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`taken on December 28,
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`2007.
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`Registrant notes that neither Glenn Hogan's testimony above nor
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`P's Exh.39, H Exh.1—2, refers to location 3 as a banquet facility.
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`Registrant notes further that neither Glenn Hogan's above testimony
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`nor P's Exh 39, H Exh 1 refers to the presence or operation of a DON
`
`THE BEACHCOMBER restaurant at location 3 or anywhere else during the
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`period “Late 1990s and 2000s” to December 28, 2007.
`
`(JJN
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`B.
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`In November, 2003,
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`the Food Establishment at Location 3 Was
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`Operating as Beachcombers, And as a Restaurant, But Not as DON THE
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`BEACHCOMBER.
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`In his 30(b)(6) discovery deposition, Glenn Hogan testified as
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`follows in pertinent part:
`
`“Q All right.
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`But what I am asking you is:
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`That
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`in November of
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`2003, was the restaurant at location 3 operating under the
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`name of Beachcombers?
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`A It was operating under Beachcombers here.”
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`GH Disc.Depo.Tr., P.88, LL 7-10,
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`taken on April 6,
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`2006.
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`The above testimony confirms the discussion under Point A above
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`showing that a restaurant named Beachcombers was at location 3, and
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`was operating as a restaurant, not a banquet facility.
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`Further, Registrant notes that Petitioner's attorney did not
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`object to the above testimony or examine the witness to claim that
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`Beachcombers was operating as a banquet facility in November, 2003
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`and not as a restaurant. Nor did the witness change his testimony by
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`claiming location 3 was a banquet facility and not a restaurant.
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`C. Petitioner's Exhibits of Yellow Page Hawaii Telephone
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`Directories Show Beachcombers Only Under the Heading Restaurants
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`During the Period 1994 through 2007, Not Don the Beachcomber.
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`In his testimony deposition taken on December 28, 2007, Glenn
`
`Hogan, Petitioner's Vice—President,
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`testified regarding Beachcombers
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`being listed in the Yellow Page Hawaii Telephone Directories as a
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`

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`restaurant continuously during the period beginning 1994 through 2007
`
`as follows:
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`(Registrant notes no listing of Beachcomber as a banquet
`
`facility)
`
`for each year Pleasant Travel Service placed ads
`“Q. Mr. Hogan,
`in the Yellow Pages for its Beachcombers’ restaurants, as
`reflected in the exhibits 9 through 20, was there a restaurant
`operating at the Royal Lahaina Resort under the name
`‘Beachcombers’?
`
`A. For what period of time?
`Q. Each year that the company placed a Yellow Pages ad.
`A. Yes.” (GH Test.Depo.Tr.Vol.I, P.40, LL 2-10)
`
`P's Exhibit 9, H Exhibit 2 is a copy of listings of restaurants
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`under the heading restaurants
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`for June, 1994 and lists Beachcombers
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`under the heading of restaurants.
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`(P's Exh 9; H Exh. 2—1,2-2)
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`P's Exhibit 20 is a copy of listings of restaurants under the
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`heading Restaurants
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`for the year 2007 and lists Beachcombers
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`under the heading of restaurants.
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`(P's Exh.20; H Exh 3-1, 3-2)
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`Registrant notes that none of the listings of restaurants in the
`
`Yellow Pages of Hawaii
`
`telephone directories during the period 1994
`
`to 2007 lists a restaurant under the name DON THE BEACHCOMBER as
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`shown by Petitioner's Exhibits 9 through 20. Registrant only copied
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`Exhibits 9 and 20 as H Exh. 2—1,2—2 and 3-1, 3-2 after noting that
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`all of Exhibits 9 through 20 listed only Beachcomber as a restaurant
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`and not Don the Beachcomber.
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`Petitioner's own evidence fails to show any telephone listing of
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`a Don the Beachcomber restaurant during the period 1994 to 2007.
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`D. The Record Has No Probative Evidence that a Restaurant or a
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`Banquet Facility Was Open and Operating Under the Name Don the
`
`Beachcomber During the Year 2002 at Location 3 of the Royal Lahaina
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`Resort Property Map, Petitioner's Exhibit 39, P 2; H Exh 1-2.
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`Petitioner purports to claim that Exhibit 46 shows that a
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`restaurant under the name Don the Beachcombers was open and operating
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`during the year 2002. An examination of Exhibit 46, page 2 shows only
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`that a Don the Beachcombers restaurant was “(Opening Soon)”.
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`A restaurant that is advertised as “Opening Soon” in the absence
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`of probative evidence that the restaurant was open and operating on a
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`specified date,
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`is no proof that the restaurant was operating under
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`the name Don the Beachcomber in 2002. See P's Exh 46; H Exh 4—1,4—2.
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`Registrant notes that this advertisement is of a restaurant, not
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`a banquet facility. The word banquet is absent
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`from Exh 46;H Exh 4-2.
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`E. Petitioner's Own Evidence Shows That Only the Beachcomber
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`Restaurant Provided Banquets, And There Was No Operating Don the
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`Beachcomber Restaurant for Banquets or Otherwise.
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`Glenn Hogan, Petitioner's Vice—President,
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`testified regarding
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`Exhibits 47-49 in his testimony deposition Vol.1,
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`taken on December
`
`28, 2007.
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`A copy of Exhibit 47 is attached to the Hall declaration as
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`H Exhibit 5. A copy of Exhibit 48 is attached to the Hall declaration
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`as
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`H Exhibit 6. A copy of Exhibit 49 is attached to the Hall
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`declaration as H Exhibit 7.
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`(2Jl\)
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`Each of the three sets of exhibits
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`show banquets each and all at
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`the Beachcomber location. The words Don the Beachcomber do not appear
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`on any of Exhs 47,48, or 49; H Exhs 5, 6, and 7.
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`Glenn Hogan identified these exhibits in his testimony
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`deposition transcript Vol.1, as follows:
`
`Exh 47, H Exh 5,
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`on pages 102, 104,
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`and 105;
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`Exh 48, H Exh 6
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`on pages 106 and 107; Exh 49, H Exh 7 on pages 108 and 109.
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`Exh 47, H Exh 5 shows a banquet order dated January 20, 2003 for
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`a function date of 1/21//03 and a banquet order dated January 3, 2003
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`for function dates of 1/27/03, 1/29/03, 1/30/03, all at a location
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`identified as Beachcomber.
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`Exh 48, H Exh 6 shows a banquet order dated March 1, 2004 for a
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`function date of 3/12/04 and a banquet order dated March 23, 2004 for
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`function dates of 4/23/04, 4/24/04, and 4/25/04, all at a location
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`identified as Beachcomber.
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`Exh 49, H Exh 7 shows banquet orders dated February 22, 2005 for
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`function dates of 2/23/05, 2/24/05,2/25/05 Breakfast, 2/25/05 Dinner,
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`2/26/05 Breakfast, 2/26/05 Dinner, 2/27/05 Breakfast, all at a
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`location identified as Beachcomber. The words Don the Beachcomber are
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`non—existent
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`in all of these exhibits.
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`During each of the years 2003, 2004, 2005, Beachcombers was
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`listed as a restaurant in the Yellow Pages of Hawaii
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`telephone
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`directories as shown under Point C above. Don the Beachcomber was
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`not.
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`F. The Record Has No Probative Evidence that a Restaurant or a
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`Banquet Facility Was Open and Operating Under the Name Don the
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`Beachcomber During the Period 2002 to 2007.
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`Petitioner purports to claim that a Don the Beachcomber facility
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`was in operation as a restaurant or banquet facility in 2002 and 2003
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`because of a sign on the outside wall of a structure stating DON THE
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`BEACHCOMBER OPENING THIS CHRISTMAS identified as Petitioner's Exhibit
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`45. Petitioners’ Exh 45 has 2 pages,
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`the second page being a better
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`color copy showing a green sign stating “OPENING THIS CHRISTMAS”. A
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`copy of Exh 45 with page 2 is attached to the Hall declaration as H
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`Exh 8-1, 8-2.
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`Glenn Hogan, Petitioner's Vice—President,
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`testified in his
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`testimony deposition as follows with reference to “OPENING THIS
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`CHRISTMAS”:
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`the second page,
`“Q. Looking back at Exhibit 45,
`green sign under the Don the Beachcomber’s sign.
`A. Yes.
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`there is a
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`Q. What does that say?
`A.
`‘Opening this Christmas.’ That would be 2002.”
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`Glenn Hogan Test.Depo.Tr.Vol.I, P.101, LL 6-11.
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`There is no probative evidence in the record that a restaurant
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`was operating in the year 2002 or 2003 under the name Don the
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`Beachcomber.
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`Further, Glenn Hogan testified in pertinent part:
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`“Q. Do you know whether or not this sign was in place in January
`of 2003, at the Royal Lahaina Resort, as pictured in Exhibit 45?
`A. Yes,
`I have personal knowledge.”
`
`Glenn Hogan Test.Depo.Tr.Vol.I, P.103, LL 18-21.
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`Glenn Hogan then testified that the sign was in place at the
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`facility for the years 2004 to 2006 and today, as follows:
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`“Q. Was this sign in place at the facility for the year 2004?
`A. Yes.
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`“Q. Was this sign in place at the facility for the year 2005?
`A. Yes.
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`Q. Was this sign in place at the facility for the year 2006?
`A. Yes.
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`Q. Was this — is this sign still in place today?
`A. Yes.”
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`Glenn Hogan Test.Depo.Tr.Vol.I, P.l04, LL 4-14.
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`The result of this testimony is that Don the Beachcomber was
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`“OPENING THIS CHRISTMAS” in 2002,
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`in 2003,
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`in 2004,
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`in 2005,
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`in 2006,
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`and is still “OPENING THIS CHRISTMAS” today (2007) without any
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`evidence it ever opened.
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`A Don the Beachcomber sign that also states “OPENING THIS
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`CHRISTMAS” for each year during the period 2002 to 2007 fails to
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`constitute probative evidence that a restaurant or banquet facility
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`to which that statement applied, ever opened or was in operation
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`during that period.
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`No probative evidence is in the record that a food establishment
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`operating under the name Don the Beachcomber was ever operating as a
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`restaurant or a banquet facility during the period 2002 to 2007.
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`In fact,
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`Exh 45, H Exh 8-1,8-2,
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`shows no indication that the
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`structure on which the sign was placed, housed a restaurant or a
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`banquet facility. It could house a completely different business
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`establishment, a sports clothes shop,
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`for instance.
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`>!>LAJ[\)
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`II. PETITIONER HAS FAILED TO PROVE ANALOGOUS USE PRIORITY OF
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`DON THE BEACHCOMBER AS A RESTAURANT OR AS A BANQUET FACILITY.
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`A. The Record Has No Probative Evidence of Publicity sufficiently
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`Clear, Widespread, and Repetitive to Establish Analogous Use Priority
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`of Don the Beachcomber for Petitioner.
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`Petitioner's Exhs 45 and 45 page 2, H Exhs 8-1, 8-2 of the sign
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`DON THE BEACHCOMBER COMING THIS CHRISTMAS on the wall of a structure
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`not identified, fails to constitute analogous use priority for three
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`reasons.
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`(1)
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`the sign remained in place without any change during the
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`entire period 2002 to 2007. It was not clear as to when there would
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`be an opening if at all.
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`(2) There was no probative evidence of widespread publicity of
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`the sign of Petitioner's Exhs 45 and 45 page 2, H Exhs 8-1, 8-2
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`to have substantial impact on the purchasing public. There was no
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`evidence of any advertising expense of the sign.
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`(3) There was no identification shown by the sign of any service
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`associated with the sign to become available later.
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`Accordingly,
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`the sign of Exhs 45 and 45 page 2, H Exhs 8-1, 8-2,
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`does not fulfill the requirements of the leading case of T.A.B.
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`Systems V. PacTel Teletrac, 37 USPQ2d 1879, 1882 (Fed.Cir. 1996),that
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`the publicity must be “... sufficiently clear, widespread and
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`repetitive to create the required association in the minds of
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`potential purchasers between the mark as an indicator of a particular
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`source and the service to become available later.”
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`The statement
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`in H Exh 4-2 of Petitioner's Exhibit 46, H Exhs 4-
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`l,4—2 of a Don the Beachcombers restaurant
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`(Opening Soon) fails to
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`constitute analogous use priority of Don the Beachcomber for
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`Petitioner for the following reasons:
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`(1) Exh 46 and its page 2, H Exhs 4—1,4—2 was printed on
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`October 11, 2002. GH Test.Depo.Tr.P.125, L.25; P.126, LL.1—6.
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`There is no probative evidence in the record of any repetition
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`of the above statement
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`in Exh 46, page 2 and H Exh 4—2,as required by
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`the T.A.B. Systems case cited above.
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`(2) There is no probative evidence in the record of that Exhibit
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`46 created “the necessary association",
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`the “prior public
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`identification” and the “popularization in the public mind” of a Don
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`the Beachcomber restaurant and the service to become available later
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`as required by the T.A.B. Systems case at page 1883 of 37 USPQ2d.
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`The case of Evans Chemetics,
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`Inc. v. Chemetics International
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`Ltd., 207 USPQ 695, 700, states that:
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`\\
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`another question is whether the services were actually
`rendered or available for performance soon enough after the
`initial advertising campaign to preclude a finding that the
`advertising was merely an attempt to preempt a mark for use
`at an indefinite future date.”
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`In the present action,
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`the record has no probative evidence that
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`a restaurant ever opened and operated under the name Don the
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`Beachcomber during the period 2002 to 2007. An inference can then be
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`drawn that the advertising of a Don the Beachcomber restaurant by
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`Petitioner was “merely an attempt
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`to preempt a mark for use at an
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`indefinite future date”.
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`The
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`claim of Glenn Hogan,
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`the Vice—President of Petitioner,
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`that
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`Beachcomber and Don the Beachcomber are synonymous,
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`is unsupported by
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`any probative evidence in the record and is merely his speculation.
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`Further,
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`the record has no testimony of any customer of the Royal
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`Lahaina Resort
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`to support Glenn Hogan's speculation.
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`B. The Dictionary Definition of Restaurant, of Which the Board
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`May Take Judicial Notice, Is Sufficiently Comprehensive to Inherently
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`Include the Term Banquet.
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`Exhibit 9-3 of Hall Exh 9-1,2,3 to the Hall declaration is a copy
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`of the definition of restaurant taken from Merriam—Webster’s
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`Collegiate Dictionary, Tenth Edition, 1995, Merriam—Webster Inc.,
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`Springfield, MA, which defines a restaurant as:
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`\\
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`...a business establishment where meals or refreshments may be
`procured"
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`A banquet facility falls within the above definition of
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`restaurant because meals or refreshments may be procured there.
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`The Board may take judicial notice of dictionary definitions on
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`its own as shown in the case of The University of Notre Dame du Lac
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`v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982) at page
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`596 of an opposition action:
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`(.A)I\)
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`“ While applicant has failed to make the dictionary definition
`of record,
`the Board may take judicial notice of use of a term
`in dictionaries.”
`
`The Board did so in the above case and is requested to do so now.
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`Registrant did not make the dictionary definition of “restaurant”
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`of record in this action because there was no banquet issue raised in
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`this action. Points IA through F and IIA through B show the absence
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`of that issue in the record which is confirmed by the Hall
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`declaration. If there had been a banquet issue, Registrant would
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`have obtained expert testimony showing that restaurants often have
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`banquet facilities. Amendment of the pleadings now is prejudicial.
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`III. SINCE FEDERAL COURT DECISIONS HOLD ON THE GROUND OF HEARSAY
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`THAT A PARTY MAY NOT UTILIZE ITS OWN ADMISSIONS AT THE TRIAL,
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`REGISTRANT OBJECTS ON THE GROUND OF HEARSAY TO PETITIONER’S USE OF
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`ANY OF PETITIONER’S RESPONSES TO REGISTRANT’S RFAS LISTED IN EXHIBITS
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`A AND B.
`
`(RFA = Requests For Admissions)
`
`A. Rule Stated in Treatise of Federal Practice and Procedure of
`
`Wright, Miller, and Marcus.
`
`“ A party may not utilize its own admissions at the trial. It is
`only when the admission is offered against the party who made
`it that it comes within the exception to the hearsay rule for
`admissions of a party opponent.”
`
`Wright, Miller & Marcus, Federal Practice and Procedure,
`
`Civil
`
`§ 2264 Use and Effect of Admissions,
`
`(2008)
`
`B. Federal Appellate Decision Citing and Following § 2264
`
`Walsh v. McCain Foods Ltd., 81 F.3d 722, 726 (7th Cir. 1996),
`
`12
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`
`where the Appellate Court held:
`
`“’Admissions obtained under Rule 36 may be offered in evidence at
`
`the trial of the action, but
`they are subject to all pertinent
`objections to admissibility that may be interposed at the trial.
`It is only when the admission is offered against the party
`who made it that it comes within the exception to the hearsay
`
`rule for admissions of a party opponent.’
`Wright, Miller & Marcus, Federal Practice and Procedure:
`2d § 2264, at 57l—572(1994)”
`
`Civil
`
`Plaintiff Walsh wanted to use his own admissions at trial, but
`
`the Appellate Court affirmed the exclusion of them by the trial court
`
`as hearsay because Walsh's admissions were not of a party opponent.
`
`Accordingly, Registrant objects to Petitioner's making any use
`
`of its responses to Registrant's RFAS on the ground of hearsay.
`
`IV. SINCE FEDERAL COURT DECISIONS HOLD ON THE GROUND OF EITHER
`
`SELF—SERVING OR MORE CORRECTLY THAT A PARTY’S OWN ANSWERS TO
`
`INTERROGATORIES ARE HEARSAY WHEN OFFERED TO PROVE THE TRUTH OF THE
`
`MATTER ASSERTED, REGISTRANT OBJECTS ON THE GROUNDS OF SELF-SERVING
`
`AND HEARSAY TO PETITIONER’S USE OF ANY OF PETITIONER’S RESPONSES TO
`
`REGISTRANT’S INTERROGATORIES LISTED IN EXHIBIT C.
`
`A. Rule Stated in Treatise of Federal Practice and Procedure,
`
`Civil, of Wright, Miller, and Marcus.
`
`“ Older cases said that a party could not ordinarily introduce
`his or her own answers to an opponent's interrogatories, since
`they would be self—serVing statements.
`[10] But
`the ‘self-
`serving’ nature of evidence is ordinarily no ground for
`exclusion, and a more correct explanation would be that a
`party's own statements are hearsay when offered to prove
`the“truth of the matter asserted, and that they fall within no
`
`recognized hearsay exception[ll].”
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`.J>-(A)I\)l—‘
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`O\U'\
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`& Marcus,
`Wright, Miller,
`§ 2180 Use of Answers,
`(2008)
`
`Federal Practice and Procedure, Civil,
`
`B. Federal Court Decisions In Accord with § 2180
`
`Underberg V. United States of America, 362 F.Supp.2d 1278, 1283
`
`(DC N.M. 2005), where the District Court held:
`
`“ When offered by the adverse party, answers to interrogatories
`and requests for admission usually are not considered hearsay
`insofar as they fall under the exception for admissions by a
`party opponent. See Fed.R.Evid. 801(d)(2). However, a party
`generally may not introduce statements from its own answers to
`interrogatories or requests for admissions as evidence because
`such answers typically constitute hearsay when used in this
`manner.
`[numerous citations omitted]”
`
`Lobel v. American Airlines, Inc., 192 F.2d 217, 221 (2nd Cir.
`
`1951), where the Appellate Court held:
`
`“5. Plaintiff was allowed to read to the jury his own answers to
`to defendant's interrogatories about
`the extent of his injuries.
`These answers were se1f—serving and should not have been
`admitted. See 4 Moore's Federal Practice Sec. 33.29(195O 2nd
`ed.)”
`
`Accordingly, Registrant objects to Petitioner making any use of
`
`its responses to any of Registrant's RFAs listed in Exhibits A and B
`
`and to its answers to any of Registrant's Interrogatories listed in
`
`Exhibit C of the declaration of Petitioner's attorney on the ground
`
`of inadmissible hearsay.
`
`V. PETITIONER’S ADMISSIONS TO REGISTRANT’S ADMISSION REQUESTS
`
`ARE CONCLUSIVE, CANNOT BE REBUTTED OR IGNORED OR USED BY PETITIONER.
`
`A. Admissions Under FRCP 36 Are Conclusive and Cannot be Rebutted
`
`TBMP Section 407.04 Effect of Admission, states:
`
`“Any matter admitted (either expressly, or for failure to timely
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`“respond under Fed. R.Civ.P.36 is conclusively established
`unless the Board, on motion, permits withdrawal or amendment of
`the admission.
`[Note] 185”
`
`“185 See Fed.R.Civ.P.36(b). See also American Automobile Ass’n
`
`v. AAA Legal Clinic of Jefferson Crooke, P.C., 930 F.2d 1117,
`19 USPQ2D 1142, 1144 (5th Cir.1991)(an admission not withdrawn
`or amended cannot be rebutted by contrary testimony at trial)”
`
`The Appellate Court held in the American Automobile Ass’n case
`
`as follows at page 1120 of 930 F.2d 1117:
`
`“’In form and substance a Rule 36 admission is comparable to an
`admission in pleadings or a stipulation drafted by counsel for
`use at trial, rather than to an evidentiary admission of a
`party.’ An admission that is not withdrawn or amended cannot be
`
`rebutted by contrary testimony or ignored by the district court
`simply because it finds the evidence presented by the party
`against whom the evidence operates more credible.”
`
`Petitioner's response to Registrant's Request for Admission No.
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`155 listed as Exhibit 5 in Registrant's Notice of Reliance No.
`
`1 is:
`
`"155. During all of the period beginning January 1, 1993 to
`November, 2003,
`there was no restaurant or bar operated by
`Pleasant Travel Service operating under the words Don the
`Beachcomber.
`
`Response: Admit “
`
`Petitioner's Motion to Amend in effect seeks to rebut this
`
`admission by claiming a banquet facility is different from a
`
`restaurant to avoid the effect of the admission by reference to
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`discovery not listed in a Notice of Reliance including Petitioner's
`
`responses to Registrant's RFAs
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`listed in Exhibit B and to
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`Petitioner's responses to Registrant's interrogatories listed in
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`Exhibit C of the declaration of Petitioner's attorney.
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`Although the responses to RFAs
`
`in Exhibit A were listed in
`
`Registrant's Notice of Reliance No. 1,
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`the evidence in the record
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`shows that Registrant made no use of those RFAs
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`in its Main Brief
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`and the Hall declaration shows no use of them were made in
`
`Registrant's oral argument. Similarly, Petitioner's Opening Brief and
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`Reply Brief makes no mention of those RFAs.
`
`B. Since Discovery Documents Listed in Exhibits B and C of
`
`Petitioner's Declaration Were Not Listed in Either Parties’
`
`Notices of Reliance, Exhibits B and C are Not Part of the Record in
`
`the Cancellation Action and Cannot Be Used by Petitioner.
`
`A Notice of Reliance is required to make the documents listed in
`
`Exhibits B and C part of the record in this action. Petitioner never
`
`filed a Notice of Reliance to list the documents of Exhibits B or C
`
`under 37 CFR § 2.120(5). Petitioner did not refer to the documents
`
`of Exhibit A, B or C in its Trial Brief or Reply Brief or in its
`
`Oral Argument.
`
`VI. THE ISSUE OF A BANQUET FACILITY USING THE WORDS DON THE
`
`BEACHCOMBER WAS NEVER RAISED OR TRIED IN THIS CANCELLATION ACTION
`
`REGARDING THE DON THE BEACHCOMBER WORDS.
`
`A. The Fact that Petitioner's Motion to Amend Is Erroneously
`
`Attempting to use Discovery Documents Listed in Exhibits A, B, and C
`
`of Petitioner's Declaration as Evidence of a Banquet Facility Using
`
`the Words Don the Beachcomber Proves the Absence of Such Evidence in
`
`the Record.
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`(;.)I\)
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`(.O[\)
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`Petitioner's Motion papers are attempting to use discovery
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`documents in Exhibits A, B, and C which are inadmissible by
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`Petitioner (see Points III &
`
`IV)
`
`to support its claim that the
`
`evidence in the record shows that the issue of a banquet facility
`
`using the words Don the Beachcomber was tried. The fact of such
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`attempted use of inadmissible documents by Petitioner proves
`
`the
`
`absence of evidence in the record that an issue of a banquet facility
`
`using the words Don the Beachcomber was tried.
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`B. No Issue of a Banquet Facility Using the Words Don the
`
`Beachcomber Was Raised in Registrant's Main Brief or in Petitioner's
`
`Trial Brief.
`
`Petitioner's Trial Brief lists only three issues and none of them
`
`raise the issue of a banquet facility.
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`None of Registrant's issues in its Main Brief mention or raise
`
`the issue of a banquet facility. A banquet facility was never
`
`discussed in Registrant's Main Brief. That being so, Petitioner's
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`Reply Brief necessarily could not rebut the non—existence of the
`
`banquet facility issue in Registrant's Main Brief and did not.
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`VII. THE ISSUE OF A BANQUET FACILITY USING THE WORDS DON THE
`
`BEACHCOMBER ONLY AROSE FOR THE FIRST TIME AT PETITIONER’S ORAL
`
`REBUTTAL ARGUMENT ON MARCH 31, 2009.
`
`A. No motion by Petitioner to Amend its Pleadings re Banquet
`
`Facility Until Now.
`
`The prosecution history of this action shows that Petitioner
`
`17
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`

`
`»1>(Jn.)l\.))-“
`
`OWU1
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`filed amended pleadings on August 1, 2007. These amended pleadings
`
`made no mention of a banquet facility using the words Don the
`
`Beachcomber. Instead,
`
`the amended pleadings as set forth in
`
`Petitioner's present motion to amend still referred only to
`
`restaurant and bar services.
`
`Yet, Petitioner is claiming in its present motion to amend that
`
`Registrant was well aware of the issue of the use of Don the
`
`Beachcomber for a banquet facility, which is refuted by this
`
`Opposition and the Hall Declaration.
`
`However, Petitioner had to be “well aware” of the issue of
`
`banquet facility “in the early stages of this proceeding”, more so
`
`than Registrant allegedly.
`
`Nevertheless, at a later stage of this proceeding, Petitioner
`
`filed its amended pleading on 8-31-07 without alleging any issue of
`
`banquet facility for Don the Beachcomber therein,
`
`still referring to
`
`only to restaurant and bar services for Don the Beachcomber.
`
`Soon after the filing of the amended pleading on 8-31-07, on 10-
`
`5-07, Registrant served Petitioner with Registrant's 6th set of RFAS,
`
`among which was No. 155. Petitioner admitted RFA No. 155 without any
`
`objection or denial, knowing at that time allegedly, of the issue of
`
`banquet facility for Don the Beachcomber. Registrant relied on
`
`Petitioner's admission that:
`
`"155. During all of the period beginning January 1, 1993 to
`November, 2003,
`there was no restaurant or bar operated by
`Pleasant Travel Service operating under the words Don the
`
`18
`
`

`
`“Beachcomber.” As listed in Exhibit 5 of Registrant's Notice of
`
`Reliance No. 1.
`
`Accordingly, Registrant did not make an issue or argument
`
`relating to a banquet facility for Don the Beachcomber in its Main
`
`Brief or in its oral argument on March 31, 2009.
`
`It would be unfair and prejudicial to Registrant to allow
`
`amendment of Petitioner's pleadings at this very late date as sought
`
`by Petitioner regarding the non—issue of banquet facility for Don the
`
`Beachcomber and which would be contrary to the conclusive effect of
`
`Petitioner's admission to RFA No. 155.
`
`B. Petitioner Never Filed a Motion to Withdraw or Amend Its
`
`Response to Registrant's RFA No. 155.
`
`Petitioner allegedly was “well aware” of the issue of banquet
`
`facility for Don the Beachcomber when Petitioner was served on lO-5—
`
`07 with Registrant's 6th set of RFAs,
`
`including No. 155. If
`
`Petitioner allegedly had mistakenly admitted No. 155 without a denial
`
`or objection, Petitioner could have filed a motion for leave to
`
`withdraw or amend its admission. But Petitioner did not do so.
`
`Accordingly, Petitioner's admission to No. 155 is
`
`effective
`
`and is conclusively established as evidence in the record and
`
`precludes rebuttal of it by any contrary evidence.
`
`Thus, all of the testimony of Glenn Hogan,
`
`Petitioner's vice-
`
`president, relating to a banquet facility for Don the Beachcomber is
`
`in effect,
`
`a denial or rebuttal of RFA No. 155 by contrary testimony
`
`-J>(A)l\)
`
`©kOC0\1O\U'1
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`which is not permitted by FRCP 36(b) and by TBMP Section 407.04.
`
`CONCLUSION
`
`Petitioner has failed to carry its burden of proof by the
`
`preponderance of evidence in its motion to amend as shown by the
`
`foregoing reasons and legal authorities.
`
`1. Location 3 of the Royal Lahaina Resort was always referred to
`
`as Beachcombers, never as Don the Beachcomber.
`
`2. The restaurant at Location 3 was operating as Beachcombers,
`
`not as Don the Beachcomber.
`
`3. The Yellow Pages of the Hawaii
`
`telephone directories from 1994
`
`to 2007 listed only Beachcombers under the heading of restaurants,
`
`not Don the Beachcomber.
`
`4. A single instance of advertising of a Don the Beachcomber
`
`restaurant
`
`(Opening Soon)
`
`(H Exh 4-2)
`
`is not probative evidence of
`
`the operation of it and fails to create “the necessary association,
`
`the “prior public identification” or “popularization in the public
`
`mind” required for analogous use priority by the T.A.B. Systems case.
`
`5. A sign stating DON THE BEACHCOMBER (COMING THIS CHRISTMAS)
`
`for each of the years 2002 through 2007 on the wall of an
`
`unidentified structure is without clarity of opening, without
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`widespread publicity and without identification of what service,
`
`if any,
`
`was housed inside the structure,
`
`fails to qualify as
`
`analogous use priority as required by the T.A.B. case.
`
`ul>(,«)l\)
`kOOO\IO‘\U'|
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`6. Pursuant to federal court decisions, Registrant objects to any
`
`use of Exhibits A, B, and C attached to Petitioner's declaration as
`
`inadmissible hearsay.
`
`7. Due to Petitioner's admission to RFA No.
`
`155,
`
`Petitioner
`
`cannot rebut the admission by any contrary testimony at trial
`
`such as a Don the Beachcomber banquet facility, as held in the
`
`American Automobile Ass’n case.
`
`(See FRCP 36(b) and TBMP § 407.04.
`
`8. Petitioner's failure to move the Board to withdrawal or
`
`amendment of Petitioner's admission to RFA No. 155, at a time when
`
`Petitioner allegedly knew of the claimed issue of Don the Beachcomber
`
`as a banquet facility, results in estoppel of Petitioner from seeking
`
`to amend its pleadings at this late date.
`
`For each and all of the foregoing reasons and legal authorities
`
`cited and discussed, Petitioner's motion to amend to conform to
`
`proof should be denied.
`
`
`
`ATTORNEY FOR REGISTRANT
`
`ubb.)l\)
`G301
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`

`
`DECLARATION OF JOHN JOSEPH HALL
`
`I,
`
`the undersigned,
`
`John Joseph Hall, declare:
`
`1.
`
`I am the attorney of record for Registrant, Marisol, Inc.,
`
`in
`
`Cancellation No. 92044469.
`
`2. Attached to this Declaration are true copies of Petitioner's
`
`Exhibits referred to in the foregoing Combined Statement of Reasons
`
`and Memorandum of Points and Authorities, except for No. 9, which is
`
`a true copy of excerpts from Merriam—Webster’s Coll

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