John Ryan Pekas
`
`Attorney & Counselor at Law
`3101 West 41" Street, Ste. 214
`Sioux Falls, South Dakota 57105
`
`‘ admitted in South Dakota
`* admitted in Nebraska
`* admitted to Federal District Court
`* admitted to the 8"‘ Circuit Court of Appeals
`* admitted to the United States Supreme Court
`
`March 31, 2008
`
`The Commissioner of Patents and Trademarks
`
`Trademark Trail and Appeal Board
`Washington, D.C. 20231
`
`RE: Cabe1a’s.com, Inc. v. Dakota Industries, Inc., 92047600
`
`-
`
`Dear Commissioner:
`
`Telephone: (605) 339-8983
`Facsimile: (605) 338-l58l
`Email: Jgekas@aol.com
`
`7
`
`92 3 7 7/
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`0/
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`5
`
`Please find enclosed the Response to Petitioners Motion for Summary Judgment and its
`Exhibits 1 and 2.
`
`If you have any questions, please feel free to call.
`
`Very truly yours,
`
`72¢
`
`John Pekas
`
`cc:
`
`Greg Chinlund
`
`llllllllllllllllillllllllillllllllllllllllllllllll
`04-14-2008
`Us. Paco-A is 'rrvu:nun-M Mal: nope DI. -use
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK
`
`OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of:
`
`DAKOTA
`
`Serial No.:
`
`92047600
`
`Filed: June 3, 2007.
`
`
`
`CABELA’ S. COM, INC
`
`Trademark Opposition No.
`92047600
`
`Response to Petitioners Motion for
`Summary Judgment
`
`
`
`Petitioner,
`
`V.
`
`DAKOTA INDUSTRIES, INC.
`
`Respondent.
`
`
`
`
`
`Hon. Commissioner of Patents and Trademarks,
`Washington, D.C. 20231
`
`Comes now the Respondent, DAKOTA INDUSTRIES, INC., by and through their
`
`counsel, John R. Pekas, opposing through this brief Petitioner’s Motion for Summary Judgment.
`
`In support of this Brief in Opposition to Petitioner’s Motion for Summary Judgment, Respondent
`
`submits along with this Brief the following:
`
`1.
`
`2.
`
`Pleadings, other documents, and records filed in this action.
`
`The Deposition of Donald P. Mackintosh
`
`These Briefs and all points of law, assertions of fact, and arguments contained therein are
`
`hereby incorporated by reference into this Responsive Brief as though they had been separately
`
`set forth herein.
`
`OBJECTION
`
`This Action Was Prefaced on a Fraud by the Petitioner. The Respondent Has an
`
`Incontestable Trademark in the word “Dakota.” Prior to the Petition being filed, the
`
`-1-
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`

`
`Petitioner, Cabela’s.com. Inc. has been in litigation alleging the same arguments on
`
`Abandonment and the Patent and Trademark is involved in identical litigation.
`
`Therefore, fraud on the part of the Petitioner should not be allowed in the Patent
`
`and Trademark Office. This has been hailed into a Court of competent jurisdiction
`
`and the Administrative Law Court of the Patent and Trademark is without
`
`Jurisdiction at this time.
`
`I.
`
`Introduction
`
`Petitioner has submitted a Motion for Summary Judgment because: Respondents
`
`abandoned the “Dakota ®” trademark by non-use; and fraud. Petitioner has submitted a Brief in
`
`Support. Respondent submits this Brief in Opposition to the Petitioner’s Motion.
`
`There are several responses to the Brief of Petitioners. Without waiving the prior points
`
`of law raised in earlier filings, Respondent asserts firstly that they have never intended to
`
`abandon the trademark. Exhibit 1. Secondly, there was no fraud committed in the application for
`
`renewal of the trademark. Exhibit 1. Thirdly, Petitioner’s unclean hands in filing their petition
`
`for abandonment and fraud while litigating in state court the same res judicata issues prevents the
`
`doctrine of abandonment from being applied. Exhibit 2. Petitioner’s Motions fail after
`
`application of appropriate authority.
`
`11.
`
`Facts
`
`Respondent accepts the facts set forth in Petitioners Statement of Uncontested Material in
`
`with exception to the following:
`
`1 .
`
`Cabelas.com alleges that the registrant has abandoned its registration for DAKOTA based
`
`on non-use. [Petition for Cancellation, 1fl]4- 8]
`
`

`
`Response:
`
`This is a misstatement. Petitioner has brought multiple claims in more than one court
`
`without proper disclosure to the US Patent and Trademark Office at its initial filing. (Exhibit 2,
`
`Petitioners Brief for Summary Judgment Page 3, note 2; Respondent’s Response 111] 12- 15)
`
`2.
`
`The registrant did not sell any products listed in the registration bearing the
`
`DAKOTA designation in 2001. [Exhibit D at Mackintosh Dep., page 69, lines 17 to 24;
`
`Mackintosh Dep. Ex. 1 : 2001 U.S. Corporation Short-Form Income Tax Return Form 1120-A
`
`for Dakota Industries, Inc. (line la for gross receipts or sales indicates “-0-”).]
`
`Response:
`
`This is a misstatement. Respondent has licensees that continue to sell. [ Exhibit 1,
`
`Mackintosh Dep., page 92 line 10-14; page 93 line 23-25, page 94 line 1-2, page 77 line 19 - 2,
`
`page 78, line 1-19; page 80 line 12-18; page 82 line 13-18; page 84 line 4-6; page 86 line 9-19;
`
`page 87 line 23-25, page 88 line 1-8, page 101 line 10-23]
`
`3.
`
`The registrant did not license or collect any royalties for licensing DAKOTA for use on
`
`any products listed in the registration in 2001. [Exhibit D at Mackintosh Dep., page 69, line 25 to
`
`page 70, line 4; Mackintosh Dep. Ex. 1 : 2001 U.S. Corporation Short-Form Income Tax Return
`
`Form 1120-A for Dakota Industries, Inc. (line 7 for gross royalties indicates “-0-”).]
`
`Response:
`
`This is a misstatement. Respondent had not put royalties through Dakota Industries, Inc.
`
`[Exhibit 1, Mackintosh Dep., page 95-2 line 19-21]
`
`4.
`
`On August 19, 2002, the registrant submitted a Declaration Under Sections 8 and 15 of
`
`the Lanham Act, 15 U.S.C. § 1051 et seq., in order to maintain U.S. Trademark Registration No.
`
`-3-
`
`
`
`

`
`941,497 for DAKOTA. [Exhibit D at Mackintosh Dep. Exhibit 2.]
`
`Response:
`
`This is correct and uncontested.
`
`5.
`
`In the Declaration Under Sections 8 and 15, Mackintosh declared under oath that the
`
`DAKOTA mark was “still in use in commerce as evidenced by the attached specimen presented
`
`herewith showing the mark as currently used; that the mark shown therein has been in continuous
`
`use in interstate commerce for five consecutive years from August 22, 1972 to the present on the
`
`following goods recited in the registration:
`
`Snowmobile suits, jackets, coats, coveralls, ski pants and jackets, jumpsuits and jackets.”
`
`that said mark is still in used in interstate commerce.” [Exhibit D at Mackintosh Dep. Exhibit 2.]
`
`Response:
`
`This is correct and uncontested.
`
`6.
`
`The label submitted in support of the Declaration Under Sections 8 and 15 was a label
`
`only applied to products listed in the registration by the registrant and not any licensees. [Exhibit
`
`D at Mackintosh Dep., page 110, line 15 to page 112, line 8.]
`
`Response:
`
`This is a misstatement. Respondent has licensees that continue to use the word mark
`
`DAKOTA. Petitioner is confusing the abandoned “hawk” trademark logo. [Exhibit 1,
`
`Mackintosh Dep., page 110 line 23, page lll line 1-10]
`
`7.
`
`The registrant was not using DAKOTA on any products listed in the registration on
`
`August 19, 2002, the date on which Mackintosh signed the Declaration Under Sections 8 and 15.
`
`The registrant did not sell any products bearing the DAKOTA designation in 2002. [Exhibit D at
`
`-4-
`
`

`
`Mackintosh Dep., page 69, lines 17 to 24; Mackintosh Dep. Ex. 1 : 2002 U.S. Corporation Short-
`
`Form Income Tax Return Form 1 120—A for Dakota Industries, Inc. (line la for gross receipts or
`
`sales indicates “-0-”).]
`
`Response:
`
`This is a misstatement. Respondent has licensees that continue to sell.[Exhibit 1,
`
`Mackintosh Dep., page 92 line 10-14; page 93 line 23-25, page 94 line 1-2, page 77 line 19 - 2,
`
`page 78, line 1-19; page 80 line 12-18; page 82 line 13-18; page 84 line 4-6; page 86 line 9-19;
`
`page 87 line 23-25, page 88 line 1-8, page 101 line 10-23]
`
`8.
`
`The registrant did not license or collect any royalties for licensing DAKOTA for use on
`
`any products listed in the registration in 2002. [Exhibit D at Mackintosh Dep., page 69, line 25 to
`
`page 70, line 4; Mackintosh Dep. Ex. 1: 2002 U.S. Corporation Short-Form Income Tax Return
`
`Form 1120-A for Dakota Industries, Inc. (line 7 for gross royalties indicates “-0-”).]
`
`Response:
`
`Response:
`
`This is a misstatement. Respondent had not put royalties through Dakota Industries, Inc.
`
`[Exhibit 1, Mackintosh Dep., page 95-2 line 19-21] Respondent has licensees that continue to
`
`sell.[Exhibit 1, Mackintosh Dep., page 92 line 10-14; page 93 line 23-25, page 94 line 1-2, page
`
`77 line 19 - 2, page 78, line 1-19; page 80 line 12-18; page 82 line 13-18; page 84 line 4-6; page
`
`86 line 9-19; page 87 line 23-25, page 88 line 1-8, page 101 line 10-23]
`
`9.
`
`The registrant did not sell any products listed in the registration bearing the
`
`DAKOTA designation in 2003. [Exhibit D at Mackintosh Dep., page 69, lines 17 to 24;
`
`Mackintosh Dep. Ex. 1: 2003 U.S. Corporation Short-Form Income Tax Return Form 1140-A for
`
`-5-
`
`
`
`

`
`Dakota Industries, Inc. (line la for gross receipts or sales indicates “-0-”).]
`
`Response:
`
`This is a misstatement. Respondent has licensees that continue to sell.[Exhibit 1,
`
`Mackintosh Dep., page 92 line 10-14; page 93 line 23-25, page 94 line 1-2, page 77 line 19 - 2,
`
`page 78, line 1-19; page 80 line 12-18; page 82 line 13-18; page 84 line 4-6; page 86 line 9-19;
`
`page 87 line 23-25, page 88 line 1-8, page 101 line 10-23]
`
`10.
`
`The registrant did not license or collect any royalties for licensing DAKOTA for use on
`
`any products listed in the registration in 2003. [Exhibit D at Mackintosh Dep., page 69, line 25 to
`
`page 70, line 4; ; Mackintosh Dep. Ex. 1 : 2003 U.S. Corporation Short-Form Income Tax Return
`
`Form 1 120-A for Dakota Industries, Inc. (line 7 for gross royalties indicates “-0-”).]
`
`Response:
`
`This is a misstatement. Respondent had not put royalties through Dakota Industries, Inc.
`
`[Exhibit 1, Mackintosh Dep., page 95-2 line 19-21] Respondent has licensees that continue to
`
`sell.[ Exhibit 1, Mackintosh Dep., page 92 line 10-14; page 93 line 23-25, page 94 line 1-2, page
`
`77 line 19 - 2, page 78, line 1-19; page 80 line 12-18; page 82 line 13-18; page 84 line 4-6; page
`
`86 line 9-19; page 87 line 23-25, page 88 line 1-8, page 101 line 10-23]
`
`11.
`
`The registrant did not sell any products listed in the registration bearing the
`
`DAKOTA designation in 2004. [Exhibit D at Mackintosh Dep., page 69, lines 17 to 24;
`
`Mackintosh Dep. Ex. 1 : 2004 U.S. Corporation Short-Form Income Tax Return Form 1 120-A
`
`for Dakota Industries, Inc. (line la for gross receipts or sales indicates “-0-”).]
`
`Response:
`
`This is a misstatement. Respondent has licensees that continue to sell.[ Exhibit 1,
`
`-6-
`
`

`
`Form 1 120-A for Dakota Industries, Inc. (line 7 for gross royalties indicates “-0-”).]
`
`Response:
`
`This is a misstatement. Respondent had not put royalties through Dakota Industries, Inc.
`
`[Exhibit 1, Mackintosh Dep., page 95-2 line 19-21] Respondent has licensees that continue to
`
`se11.[Exhibit 1, Mackintosh Dep., page 92 line 10-14; page 93 line 23-25, page 94 line 1-2, page
`
`77 line 19 - 2, page 78, line 1-19; page 80 line 12-18; page 82 line 13-18; page 84 line 4-6; page
`
`86 line 9-19; page 87 line 23-25, page 88 line 1-8, page 101 line 10-23]
`
`17.
`
`The registrant has stipulated that it has not made or sold any goods in the registration
`
`bearing the DAKOTA designation since 1997. [Exhibit D at Mackintosh Dep., page 69, lines 17
`
`to 24.]
`
`Response:
`
`This is correct and uncontested.
`
`18.
`
`The registrant has stipulated that it has not licensed or collected any royalties related to
`
`the licensing of DAKOTA since 2001. [Exhibit D at Mackintosh Dep., page 69, line 25 to page
`
`70, line 4.]
`
`Response:
`
`This is correct and uncontested.
`
`Respondent submits the following Facts that are disputed by Respondent:
`
`1. Respondent filed an application for renewal on August 19, 2002, for the incontestable
`
`trademark in the word “DAKOTA.” [Exhibit 1, Mackintosh Dep., page 106 line 23-25, page 107
`
`linel-25, page 108 line 1]
`
`2.
`
`Respondent still has licensees that have a presence in the marketplace.
`
`[Exhibit 1,
`
`-9-
`
`
`
`

`
`14.
`
`The registrant did not license or collect any royalties for licensing DAKOTA for use on
`
`any products listed in the registration in 2005. [Exhibit D at Mackintosh Dep., page 69, line 25 to
`
`page 70, line 4; Mackintosh Dep. Ex. 1: 2005 U.S. Corporation Short-Form Income Tax Return
`
`Form 1120—A for Dakota Industries, Inc. (line 7 for gross royalties indicates “-0—”).]
`
`Response:
`
`This is a misstatement. Respondent had not put royalties through Dakota Industries, Inc.
`
`[Exhibit 1, Mackintosh Dep., page 95-2 line 19-21] Respondent has licensees that continue to
`
`sell.[Exhibit 1, Mackintosh Dep., page 92 line 10-14; page 93 line 23-25, page 94 line 1-2, page
`
`77 line 19 - 2, page 78, line 1-19; page 80 line 12-18; page 82 line 13-18; page 84 line 4-6; page
`
`86 line 9-19; page 87 line 23-25, page 88 line 1-8, page 101 line 10-23]
`
`15.
`
`The registrant did not sell any products listed in the registration bearing the
`
`DAKOTA designation in 2006. [Exhibit D at Mackintosh Dep., page 69, lines 17 to 24;
`
`Mackintosh Dep. Ex. 1 : 2006 U.S. Corporation Short-Forrn Income Tax Return Form 1 120—A
`
`for Dakota Industries, Inc. (line la for gross receipts or sales indicates “-0-”).]
`
`Response:
`
`This is a misstatement. Respondent has licensees that continue to sell. [Exhibit 1,
`
`Mackintosh Dep., page 92 line 10-14; page 93 line 23-25, page 94 line 1-2, page 77 line 19 — 2,
`
`page 78, line 1-19; page 80 line 12-18; page 82 line 13-18; page 84 line 4-6; page 86 line 9-19;
`
`page 87 line 23-25, page 88 line 1-8, page 101 line 10-23]
`
`16.
`
`The registrant did not license or collect any royalties for licensing DAKOTA for use on
`
`any products listed in the registration in 2006. [Exhibit D at Mackintosh Dep., page 69, line 25 to
`
`page 70, line 4; Mackintosh Dep. Ex. 1: 2006 U.S. Corporation Short-Form Income Tax Return
`
`-3-
`
`

`
`Mackintosh Dep., page 92 line 10-14; page 93 line 23-25, page 94 line 1-2, page 77 line 19 - 2,
`
`page 78, line 1-19; page 80 line 12-18; page 82 line 13-18; page 84 line 4-6; page 86 line 9-19;
`
`page 87 line 23-25, page 88 line 1-8, page 101 line 10-23]
`
`12.
`
`The registrant did not license or collect any royalties for licensing DAKOTA for use on
`
`any products listed in the registration in 2004. [Exhibit D at Mackintosh Dep., page 69, line 25 to
`
`page 70, line 4; Mackintosh Dep. Ex. 1 : 2004 U.S. Corporation Short-Form Income Tax Return
`
`Form 1 120-A for Dakota Industries, Inc. (line 7 for gross royalties indicates “-0-”).]
`
`Response:
`
`This is a misstatement. Respondent had not put royalties through Dakota Industries, Inc.
`
`[Exhibit 1, Mackintosh Dep., page 95-2 line 19-21] Respondent has licensees that continue to
`
`sell.[ Mackintosh Dep., page 92 line 10-14; page 93 line 23-25, page 94 line 1-2, page 77 line 19
`
`- 2, page 78, line 1-19; page 80 line 12-18; page 82 line 13-18; page 84 line 4-6; page 86 line 9-
`
`19; page 87 line 23-25, page 88 line 1-8, page 101 line 10-23]
`
`13.
`
`The registrant did not sell any products listed in the registration bearing the
`
`DAKOTA designation in 2005. [Exhibit D at Mackintosh Dep., page 69, lines 17 to 24;
`
`Mackintosh Dep. Ex. 1 : 2005 U.S. Corporation Short-Form Income Tax Return Form 1 120-A
`
`forDakota Industries, Inc. (line la for gross receipts or sales indicates “-0-”).]
`
`Response:
`
`This is a misstatement. Respondent has licensees that continue to sell.[ Exhibit 1,
`
`Mackintosh Dep., page 92 line 10-14; page 93 line 23-25, page 94 line 1-2, page 77 line 19 - 2,
`
`page 78, line 1-19; page 80 line 12-18; page 82 line 13-18; page 84 line 4-6; page 86 line 9-19;
`
`page 87 line 23-25, page 88 line 1-8, page 101 line 10-23]
`
`-7-
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`

`
`Mackintosh Dep., page 109 line 14-25, page 110 line 1]
`
`3.
`
`Respondent has persisted in continuous use of the word trademark “DAKOTA.” [ Exhibit 1,
`
`Mackintosh Dep., page 114 line 23-25, page 115 line 1-4]
`
`4. Respondent has garments in the marketplace currently. [Exhibit 1, Mackintosh Dep., page
`
`115 line 11-25, page 116 line 1-21]
`
`5.
`
`Jake Freddie, a liquidator, continues to sell. [Exhibit 1, Mackintosh Dep., page 115 line
`
`11-25, page 116 line 1-21; page 120 line 10-25, page 121 line 1]
`
`III.
`
`Legal Argument
`
`A.
`
`STANDARDS FOR SUMMARY JUDGMENT
`
`The court recognizes "that summary judgment is a drastic remedy and must be exercised
`
`with extreme care to prevent taking genuine issues of fact away from juries." Wabun-Inini v.
`
` , 900 F.2d 1234, 1238 (8th Cir. 1990). On the other hand, the Federal Rules of Civil
`
`Procedure have authorized for nearly 60 years "motions for summary judgment upon proper
`
`showings of the lack of a genuine, triable issue of material fact.” Celotex Co§p.v. Catrett, 477
`
`U.S. 317, 327 (1986). Thus, "summary judgment procedure is properly regarded not as a
`
`disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole,
`
`which are designed ‘to secure the just, speedy and inexpensive determination of every action."'
`
`Wabun-Inini, 900 F.2d at 1238 (quoting 91, 477 U.S. at 327); Hartnagel V. Norman, 953
`
`F .2d 394, 396 (9th Cir. 1992).
`
`The standard for granting summary judgment is well established. Rule 56 of the Federal
`
`Rules of Civil Procedure provides, in relevant part:
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`-10-
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`
`
`

`
`Rule 56. Summary Judgment
`
`For Claimant. A party seeking to recover upon a claim, counterclaim, or cross-
`(a)
`claim or to obtain a declaratory judgment may, at any time afier the expiration of 20 days
`from the commencement of the action or after service of a motion for summary judgment
`by the adverse party, move with or without supporting affidavits for a summary judgment
`in the party's favor upon all or any part thereof.
`(b)
`For Defending Party. A party against whom a claim, counterclaim, or cross-claim
`is asserted or a declaratory judgment is sought may, at any time, move with or without
`supporting affidavits for a summary judgment in the party's favor as to all or any part
`thereof.
`
`. The judgment sought shall be rendered
`.
`Motions and Proceedings Thereon. .
`(c)
`forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file,
`together with the affidavits, if any, show that there is no genuine issue as to any material
`fact and that the moving party is entitled to judgment as a matter of law.
`
`Fed. R. Civ. P. 56(a)-(c); see also Celotex, 477 U.S. at 322-23;
`
`Wabun-Inini, 900 F.2d at 1238 (citing Fed. R. Civ. P. 56(c)). A court considering a motion for
`
`summary judgment must view all the facts in the light most favorable to the nonmoving party,
`
`here Dakota, and give it the benefit of all reasonable inferences that can be drawn from the facts.
`
`Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (quoting United
`
`
`States v. Diebold Inc., 369 U.S. 654, 655 (1962)); Quick v. Donaldson Co., 90 F.3d 1372, 1377
`
`(8th Cir. 1996).
`
`Procedurally, the moving party, the Petitioners, bears the initial responsibility of
`
`informing the district court of the basis for their motion and identifying those portions of the
`
`record which show lack of a genuine issue." Hartnagel, 953 F.2d at 395 (citing Q_e_l(ge_x, 477
`
`U.S. at 323); see also Reed V. Woodruff County, Ark., 7 F.3d 808, 810 (8th Cir. 1993). The
`
`Petitioners are not required by Rule 56 to support its motion with affidavits or other similar
`
`materials negating the opponent's claim. Q.
`
`"When a moving party has carried its burden under Rule 56(c), its opponent must do
`
`-11-
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`

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`more than simply show there is some metaphysical doubt as to the material facts." ,
`
`475 U.S. at 586. Dakota Industries Inc. is required under Rule 56(e) to go beyond the pleadings,
`
`and by affidavits, or by the "depositions, answers to interrogatories, and admissions on file,"
`
`designate "specific facts showing that there is a genuine issue for trial." Fed. R. Civ. P. 56(e);
`
` , 477 U.S. at 324; Rabushka ex rel. United States V. Crane Co., 122 F.3d 559, 562 (3th
`
`Cir. 1997); McLaughlin V. Esselte Pendaflex CorD., 50 F .3d 507, 511
`
`(8th Cir. 1995).
`
`Although "direct proof is not required to create a jury question, .
`
`.
`
`. to avoid summary judgment,
`
`‘the facts and circumstances relied upon must attain the dignity of substantial evidence and must
`
`not be such as merely to create a suspicion."‘ Metae V. Baehler, 762 F.2d 621, 625 (8th Cir.
`
`1985) (quoting Impro Prods, Inc. V. Herrick, 715 F.2d 1267, 1272 (8th Cir. 1983)). The
`
`necessary proof that the nonmoving party must produce is not precisely measurable, but the
`
`evidence must be "such that a reasonable jury could return a verdict for the nonmoving party."
`
`Anderson V. Liberg Lobby, Inc., 477 U.S. 242, 248; Allison V. Flexway Trucking, Inc., 28 F.3d
`
`64, 66 (8th Cir. 1994).
`
`
`In Anderson Celotex, and Matsushita, the United States Supreme Court established that a
`
`summary judgment motion should be interpreted by the trial court to accomplish its purpose of
`
`disposing of factually unsupported claims, and the trial judge's function is not to weigh the
`
`evidence and determine the truth of the matter, but to determine whether there is a genuine issue
`
`for trial. The trial court, therefore, must "assess the adequacy of the nomnovants' response and
`
`whether that showing, on admissible evidence, would be sufficient to carry the burden of proof at
`
`trial." Hartnagel, 953 F.2d at 396 (citing g3_e_:l_o_t<a_x, 477 U.S. at 322). If Dakota fails to make a
`
`sufficient showing of an essential element of a claim with respect to which he has the burden of
`
`-12-
`
`adnn.‘ .n.-_... .:m._~..;i
`
`

`
`proof, then the Petitioners are "entitled to judgment as a matter of law." _Q_e1ote_)_<_, 477 U.S. at
`
`323; In re Temporomandibular Joint (TMJ ) Implants Prod. Liab. Litig., 113 F.3d 1484, 1492 (8th
`
`Cir. 1997). However, if the Court can conclude that a reasonable trier of fact could return a
`
`verdict for the nonmovant, then summary judgment should not be granted. , 477 U.S.
`
`at 248; M, 948 F.2d at 492.
`
`B.
`
`Legal Analysis of the Abandonment argument.
`
`Petitioner fails to recognize the previous sales and marketing of Dakota by Respondent’s
`
`licensees. Where there is a trademark, such as DAKOTA, in use, although the volume of the
`
`business of is small as compared with that which he formerly did or that of an infringer, the
`
`continued use the mark manifests the owner’s intention not to abandon it. Woodward V. White
`
`Satin Mills Corp., 42 F.2d 987 (C.C.A. 8”‘ Cir. 1930); Interstate Brands Co1_‘p. V. Way Baking
`
`Q, 403 Mich. 479, 270 NW2d 103 (1978). Respondent has licensees continuing to sell
`
`DAKOTA garments.
`
`[ Mackintosh Dep., page 115 line 11-25, page 116 line 1-21; Mackintosh
`
`Dep., page 92 line 10-14; page 93 line 23-25, page 94 line 1-2, page 77 line 19 — 2, page 78, line
`
`1-19; page 80 line 12-18; page 82 line 13-18; page 84 line 4-6; page 86 line 9-19; page 87 line
`
`23-25, page 88 line 1-8, page 101 line 10-23] Furthermore, it is undisputed that Respondent has
`
`recently viewed garments bearing DAKOTA for sale by Jake Freddie in Sioux Falls, South
`
`Dakota.
`
`[ Mackintosh Dep., page 115 line 11-25, page 116 line 1-21; page 120 line 10-25, page
`
`121 line 1] The misstatements by the Petitioner in an attempt to undermine the Respondents
`
`claim to the word mark DAKOTA fails.
`
`Petitioner argues that the lack of royalties paid and continuous manufacturing by
`
`Respondent is concluding proof of abandonment. Respondent has continued to supervise the use
`
`-13-
`
`

`
`of the trademark in the marketplace. , 596 F.2d 1322, 4
`
`Fed.R. Evid. Serv. 1422 (7"‘ Cir. 1979). It is undisputed that Respondent has licensed many
`
`licensees to sell the DAKOTA word trademark. [Mackintosh Dep., page 92 line 10-14; page 93
`
`line 23-25, page 94 line 1-2, page 77 line 19 - 2, page 78, line 1-19; page 80 line 12-18; page 82
`
`line 13-18; page 84 line 4-6; page 86 line 9-19; page 87 line 23-25, page 88 line 1-8, page 101
`
`line 10-23] Respondent has granted oral licenses not requiring the payment of royalties.
`
`[Mackintosh Dep., page 87 line 23-25, page 88 line 1-16] Furthermore, Respondent has
`
`allowed the sales of garments for the payment of only $1. [Mackintosh Dep., page 88 line 24-25,
`
`page 89 line 1-3] Moore Business forms, Inc. V. R33, 960 F2d 486, 118 A.L.R. Fed. 677 (S‘“
`
`Cir. 1992). The Petitioner argues that the lack of royalties on the tax returns is evidence of non-
`
`use. However, the lack of royalties on Dakota Industries Inc. tax returns is evidence of nothing.
`
`Respondent stated that they haven’t had royalties paid pass thm Dakota Industries, Inc.
`
`[
`
`Mackintosh Dep., page 95-2 line 19-21] The Respondent is still in the marketplace despite the
`
`allegations of the Petitioner.
`
`C.
`
`Legal Analysis of the Fraud argument.
`
`Petitioner fails to recognize the veracity of the renewal application and omits evidence of
`
`DAKOTA’s continued use. Petitioner argues that Respondents licensing as opposed to
`
`manufacturing diminishes their claim on the DAKOTA word trademark and renewal therefore
`
`was fraudulent. 15 U.S.C. §§ 1051 et seq. To establish that Respondent committed fraud in the
`
`procurement of the federal registration, Petitioner must plead and prove "(1) the false
`
`representation regarding a material fact; (2) the registrant's knowledge or belief that the
`
`representation is false (scienter); (3) the intention to induce action or refraining from action in
`
`-14-
`
`

`
`-3
`
`reliance on the misrepresentation; (4) reasonable reliance on the misrepresentation; and (5)
`
`
`damages proximately resulting from the reliance." Thomas Industries Inc. v. L.E. Mason Co.,
`
`1991 U.S. Dist. LEXIS 6491, No 90 C 4099, 1991 WL 83821, at *2 (N.D. Ill. May 12, 1991)
`
`(citing San Juan Products Inc. V. San Juan Pools of Kansas Inc., 849 F.2d 468, 473 (10th Cir.
`
`1988))., 849 F.2d 468, 473 (10th Cir. 1988)).
`
`It is undisputed that Respondent has recently
`
`Viewed garments bearing DAKOTA for sale by Jake Freddie in Sioux Falls, South Dakota.
`
`[Mackintosh Dep., page 115 line 11-25, page 116 line 1-21; page 120 line 10-25, page 121 line
`
`1] Respondent filed an application for renewal on August 19, 2002, for the incontestable
`
`trademark in the word “DAKOTA.” [ Mackintosh Dep., page 106 line 23-25, page 107 linel-25,
`
`page 108 line 1] Petitioner cannot overcome the fact that Respondents garments were in the
`
`marketplace for sale in 2002 and are currently in sale.
`
`[ Mackintosh Dep., page 108 line 20-25]
`
`Respondent still has licensees that have a presence in the marketplace.
`
`[ Mackintosh Dep., page
`
`109 line 14-25, page 110 line 1] Respondent has persisted in continuous use of the word
`
`trademark “DAKOTA.” [Mackintosh Dep., page 114 line 23-25, page 115 line 1-4]
`
`Jake
`
`Freddie, a liquidator, continues to sell. [Mackintosh Dep., page 115 line 11-25, page 116 line 1-
`
`21; page 120 line 10-25, page 121 line 1] The misstatements by the Petitioner alleging fraud in
`
`an attempt to undermine the veracity of Respondents claim to the word mark DAKOTA fails.
`
`IV.
`
`Conclusion
`
`There are disputed facts and Petitioner’s Motion for Summary Judgment fail when
`
`viewed in a light most favorable to the nonmoving party. Furthermore, Petitioner was fraudulent
`
`with this court for bringing action against Respondent until the prior litigation was concluded.
`
`-15-
`
`

`
`Petitioner’s unclean hands prevents the doctrine of abandonment from being applied.
`
`Dated on March 30, 2008.
`
`Q I
`John gyan Pekas
`
`115 S. Main
`
`Sioux Falls, SD 57104
`
`(605) 339-8983
`
`Certificate of Service
`
`I hereby certify that an original and one copy of the foregoing Response is being
`
`deposited with the United States Postal Service as First Class Mail in an envelope addressed to:
`
`The Commissioner of Patents and Trademarks
`
`Trademark Trail and Appeal Board
`Washington, D.C. 20231
`
`Greg Chinlund, Esq.
`233 S. Wacker Drive 6300 Sears Tower
`
`Chicago, IL 60606
`
`and,
`
`on March 31, 2008.
`
` é“”“
`
`Attorney for Respondent
`
`-15-
`
`
`
`

`
`Exhibit 1
`
`Dakota Industries, Inc. Response to
`Petitioner’s Motion for Summary
`Judgment
`
`Cancellation No. 92047600
`
`

`
`Dakota Industries vs. Cabe|a's.com Inc. Donald Mackintosh, 11/28/07
`"
`1
`
`
`IN CIRCUIT COURT
`1
`STATE OF SOUTH DAKOTA
`2
`COUNTY OF LINCOLN
`SECOND JUDICIAL CIRCUIT
`1
`S
`T
`I
`P U L A T I O N
`3
`’
`'
`'
`*
`*
`'
`‘
`'
`’
`*
`*
`'
`'
`*
`'
`*
`*
`'
`*
`*
`*
`2
`It is hereby stipulated and agreed, by and
`DAKOTA INDUSTRIES:
`CiV- N°- 05’531
`3
`between the above-named parties through their
`Plaintiff,
`4
`attorneys of record, whose appearances have been
`
`*
`
`'
`
`*
`
`
`
`5
`
`hereinabove noted,
`
`that
`
`the deposition of DONALD
`
`6
`this time and place,
`MACKINTOSH may be taken at
`_
`7
`that is, at
`the Cutler 5 Donahoe Law Firm, Sioux
`8
`Falls, South Dakota, on the 28th day of November,
`
`
`the hour of 10:30 a.m.; said
`2007, commencing at
`
`f
`‘
`'
`s
`d‘
`spa
`10
`deposition taken be ore Suzanne
`ru igan,
`,
`a Notary Public within and for the State of
`11
`csR,
`
`12
`South Dakota; said deposition taken for the
`purpose of discovery or for use at trial or for
`each of said purposes, and said deposition is
`taken in accordance with the applicable Rules of
`15
`
`Civil Procedure as if taken pursuant
`16
`to written
`
`v
`I
`_
`
`notice. Objections, except as to the form of
`the
`,
`y
`,
`f
`18
`question, are reserved until
`the time 0
`trial.
`
`19
`DONALD MACKINTOSH'
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`vs,
`
`.
`
`.
`
`.
`
`.
`
`*
`
`»
`
`.
`
`.
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`k
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`
`.
`
`Cutler & Donahoe
`Sioux Falls,
`SD
`INC.,
`CABELA'S.COM,
`November 28, 2007
`10:30 a.m_
`Defendant.
`t
`r
`+
`i
`»
`a
`i
`w
`*
`.
`.
`.
`¢
`«
`I O N
`O F
`T
`I
`D E
`P O S
`DONALD MACKINTOSH
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`
`1-
`
`4-
`
`i-
`
`APPEARANCES
`Mr.
`John R. Pekas
`Attorney at Law
`115 South Main Avenue
`Sioux Falls,
`SD 57104
`
`.._
`
`F
`
`
`
`for the Plaintiff;
`
`Mr. Thomas I. Ross
`Marshall, Gerstein 5 Boruny LL?
`233 South Wacker Drive
`6300 Sears Tower
`Chicago,
`IL
`60606-6357
`
`for the Defendant;
`
`Mr. Barry L. Kelmachter
`Bachman 5 L3P°i“te
`Patent Attorneys
`900 Chapel Street, Suite 1201
`New Haven, CT
`06510-2802
`
`
`
`
`4
`
`5
`
`6
`
`7
`8
`9
`1°
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`
`21
`
`22
`
`4
`
`5
`6
`
`7
`8
`9
`
`10
`11
`
`12
`13
`
`14
`15
`
`called as a witness, being first duly sworn,
`testified as follows:
`
`EXAMINATION By MR_ R035;
`
`
`for the Defendant.
`23
`would you state your name for the record.
`
`
` Donald P. Mackintosh. And before we get into
` it, I'd like to call your attention of our
`INDEX OF EXAMINATIONS
`4
`
`
`discussion this morning, and I will not waive
`
`2
`By Mr. Ross
`Page 3
`client rights of conflict because you were with a
`3
`firm that obtained our copyright -— or our
`trademark, rather.
`
`I
`y
`‘
`
`Q.
`Okay. All right. You're not waiving any rights
`to conflict?
`
`No.
`
`Q. All right. Okay. What do you understand that
`to
`
`mean?
`
`_
`_
`10
`A.
`It means that you were privy -- your firm was
`
`
`
`ll
`privy to information.
`All
`. ht
`B t
`.
`t
`.
`Ch
`
`Q.
`rig
`.
`u
`you re no
`saying
`at
`I was
`
`13
`privy to any information?
`You were in that firm.
`
`
`All right.
`But you and I have never met,
`°°“°°t?
`
`16
`No.
`A_
`
`
`
`17
`Q.
`And I have never represented you, correct?
`
`18
`A
`Your firm did.
`19
`»
`w
`*
`19
`20
`Q.
`But
`I have never represented you?
`
`21
`A
`p
`_
`I
`Mackintosh Deposition Exhibits 1-5 were retained
`
`. Well, not me. Dakota Industries.
`A wasn t even
`0
`with the original
`tzanscript_
`The Original
`
`
`there
`transcript of this deposition was mailed to
`flirt
`'
`21
`Mr. Ross after reading and signing.
`
`
`
`23
`Q.
`Oh, okay. All right. You're talking --
`
`24
`A.
`That's why I wouldn't have met you.
`Initially I
`
` 25 was not president of Dakota Industries.
`
`Suzanne M. Brudigan, (605) 338-0470
`Page 1 to 4 of 169
`
`‘k
`
`~k
`
`fl
`
`fl
`
`#-
`
`INDEX OF DEPOSITION EXHIBITS
`
`Marked for
`Identification
`
`Offered into
`Evidence
`
`
`
`
`
`
`
`
`
`--
`
`Exhibit
`1
`——
`49
`Plaintiff's Supplemental
`Answers to Defendant's
`Request
`for Production
`of Documents and Things
`Exhibit
`2
`__
`106
`8/l9/O2 letter from
`John Pekas to Hon. Commissioner
`05 Patents 5 Trademarks
`
`123
`--
`3
`Exhibit
`Mark Registration Application
`Exhibit
`4
`—-
`126
`Amended Complaint
`Ejhibgt
`5 --
`161
`4
`3
`typed letter with
`attachments
`
`

`
`Dakota Industries vs. Cabela's.com Inc. Donald Mackintosh, 11/28/07
`
`5
`
`1
`
`in Dakota Industries,
`
`Inc.?
`
`2 A.
`3
`Q.
`
`4 A.
`5
`
`There are shareholders, yes.
`And who are the shareholders?
`
`That's not public information.
`held corporation.
`
`It's a privately
`
`
`
`6 Q. All right.
`7 A.
`No.
`
`You are a shareholder?
`
`You are the chief executive officer?
`8 Q. All right.
`9 A.
`That is correct.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`10 Q. All right. And do you hold any other titles in
`11
`Dakota Industries?
`
`some of the employees have some for me but
`12 A. Well,
`13
`not officially.
`
`14 Q. Let's say official titles.
`
`15 A.
`
`15 Q.
`17 A.
`
`Q.
`
`18
`19
`20 A.
`
`No.
`
`No other official title.
`
`Do you receive a salary?
`No.
`
`Do you have any compensation coming to you from
`Dakota Industries?
`No.
`
`
`
`
`
`
`
`
`
`
`£3
`
`£3>
`
`A.
`
`Q.
`A.
`
`hiC:In00*405UIJ>UV54F‘
`
`1
`
`Q.
`1
`12 A.
`
`13 Q.
`14 A.
`
`15
`
`16 Q.
`17 A.
`
`18
`
`19 Q.
`20 A.
`
`Q
`
`21
`22
`
`23 A.
`
`Q
`24
`5 A.
`
`Okay. when you took over Dakota Industries, did
`you use a law firm for your trademar