Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA381513
`ESTTA Tracking number:
`12/02/2010
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92052958
`Defendant
`Lucerne Farms
`DAVID SWETNAM-BURLAND
`BRANN & ISAACSON
`184 MAIN STREET, PO BOX 3070
`LEWISTON, ME 04243-3070
`UNITED STATES
`dsb@brannlaw.com, dgreene@brannlaw.com, dnuzzi@brannlaw.com
`Opposition/Response to Motion
`David Swetnam-Burland
`dsb@brannlaw.com
`/s/ /David Swetnam-Burland/
`12/02/2010
`20101202 Lucerne Opp to DQ Mtn.pdf ( 11 pages )(70251 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Cancellation No. 92052958
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`Registration No. 2866756
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`COUNTRY FARE LLC,
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`Petitioner
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`v.
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`LUCERNE FARMS
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`Registrant
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`LUCERNE FARMS’ OPPOSITION TO
`COUNTRY FARE’S PETITION TO DISQUALIFY
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`Rather than litigate the merits of Registrant Lucerne Farms’ (“Lucerne’s”) pending motion to
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`dismiss (Doc. No. 4), Petitioner Country Fare LLC (“Country Fare”) has chosen to attack Lucerne’s
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`counsel by filing a motion to disqualify (“Motion”) (Doc. No. 7) Lucerne’s law firm, Brann & Isaacson
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`(“B&I”), from representing it. Under Country Fare’s interpretation of the Trademark Trial and Appeal
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`Board’s (“Board’s”) Rule of Practice in Trademark Cases (“Rule”) 10.63, a law firm that represented a
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`client during registration proceedings could never defend that client in subsequent litigation alleging
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`fraudulent registration. Under this regime, simply by filing a motion to disqualify and claiming that
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`trademark counsel would be a necessary witness, a petitioner could guarantee disqualification of
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`opposing counsel. Because that result is neither contemplated nor required by the rule, and because
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`Country Fare has failed to meet its heavy burden of proof, Country Fare’s Motion should be denied.
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`BACKGROUND
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`Country Fare’s Motion is, at best, premature, and at worst, a cynical ploy to drive up Lucerne’s
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`costs and distract the Board’s attention from the merits of Lucerne’s pending motion to dismiss. As
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`Country Fare has not yet established that it has stated a valid claim to relief, much less established any
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`factual basis for its allegations of fraud, Country Fare simply cannot at this early juncture demonstrate
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`that B&I attorney Kevin Haley’s testimony will be necessary to either party, let alone, that such
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`testimony, if needed, would be prejudicial to Lucerne. Because of the nature of Country Fare’s factual
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`allegations, however, Lucerne must take a few moments to dispel the misimpressions left by reading
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`Country Fare’s petition and motion.
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`As a threshold matter, Lucerne contends that its pending motion to dismiss will dispose of this
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`case on the pleadings—County Fare has simply not stated sufficient facts to state a claim of fraudulent
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`registration. Were this case to proceed, however, Lucerne submits that it would develop the following
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`facts through witnesses directly affiliated with Lucerne and Country Fare without any need for Mr.
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`Haley’s testimony:
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`‚ The products later sold under the Mainely Mulch mark were jointly developed by Lucerne and
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`Country Fare;
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`‚ Country Fare did not and does not own the products marketed using the Mainely Mulch mark
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`to the exclusion of Lucerne;
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`‚ Country Fare did not and does not have a prior, exclusive, or superior claim to ownership of the
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`Mainely Mulch mark;
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`‚ Lucerne and Country Fare did not enter any agreement that established or memorialized that
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`Country Fare had a prior, exclusive, or superior claim to ownership of the Mainely Mulch mark;
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`2
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`‚ Lucerne did not know, and could not have known, at the time it registered the Mainely Mulch
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`mark that Country Fare had a prior, exclusive, or superior claim to ownership of the mark,
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`because Country Fare did not, and does not, have such a claim.
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`‚ Lucerne did not doctor any specimen submitted to the United States Patent and Trademark
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`Office (“PTO”) in connection with the registration of the Mainely Mulch mark;
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`‚ Lucerne did not submit any specimen to the PTO with the intent to mislead the PTO;
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`‚ Lucerne was (and has been) using the Mainely Mulch mark in commerce.
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`In sum, facts known to witnesses directly associated with Lucerne and Country Fare will
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`demonstrate that Lucerne did not fraudulently register the Mainely Mulch mark, as alleged by Country
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`Fare. For present purposes, these relevant facts can all be established (one way or another) by witnesses
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`and other evidence associated directly with the parties, without the need for any attorney testimony. In
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`other words, neither party’s case depends on the testimony of Mr. Haley; and Lucerne has no plans to
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`rely on such testimony. Accordingly, there is no reason why B&I cannot represent Lucerne in this
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`matter.
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`ARGUMENT
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`“Motions to disqualify counsel are strongly disfavored.” Visa U.S.A., Inc. v. First Data Corp., 241
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`F. Supp. 2d 1100, 1104 (N.D. Cal. 2003) (trademark case). “[S]uch motions should be viewed with
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`extreme caution for they can be misused as techniques of harassment.” Freeman v. Chicago Musical
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`Instrument Co., 689 F.2d 715, 721 (7th Cir. 1982) (brackets added). “The cost and inconvenience to
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`clients and the judicial system from misuse of the rules for tactical purposes is significant.” Optyl Eyewear
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`Fashion Int’l Corp. v. Style Cos., Ltd., 760 F.2d 1045, 1050 (9th Cir. 1985) (citation omitted). Because
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`3
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`motions to disqualify can be misused for purposes of delay, to impose additional expense on an opposing
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`party, and to interfere with an existing attorney–client relationship, motions to disqualify are “subjected
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`to a higher standard of proof.” Merck Eprova AG v. ProThera, Inc., 670 F. Supp. 2d 201, 207 (S.D.N.Y.
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`2009) (collecting cases); see Optyl Eyewear, 760 F.2d at 1050 (“Because of this potential for abuse,
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`disqualification motions should be subjected to particularly strict judicial scrutiny.”) (quotation
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`omitted).
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`These general principles apply to the interpretation and application of Rule 10.63. Rule 10.63
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`“closely parallels Disciplinary Rules 5–102(A) and (B) of the ABA Model Code of Professional
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`Responsibility (1980).” Little Caesar Enters., Inc. v. Domino’s Pizza, Inc., 11 U.S.P.Q.2d 1233, 1989 WL
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`297868, *2 (Comm’r Pat. & Trademarks 1989). The rule “‘was not designed to permit a lawyer to call
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`opposing counsel as a witness and thereby disqualify him as counsel.’” Little Caesar, 1989 WL 297868 at
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`*2 (quoting ABA Code, Canon 5, n.31). As Country Fare acknowledges, Country Fare “bears the
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`burden of demonstrating specifically how and as to what issue in the case prejudice may occur and that
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`the likelihood of prejudice occurring is substantial.” Motion at 4 (quoting Summagraphics Corp. v.
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`Sanders Assocs., Inc., 19 U.S.P.Q.2d 1859, 1861 (D. Conn. 1991) (internal citation omitted)). Country
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`Fare offers too little, too early to meet its enhanced burden.
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`Rule 10.63 requires withdrawal under two circumstances, neither of which is present here. “In
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`determining whether or not disqualification is required, the principal considerations under 37 C.F.R. §§
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`10.63(a) and (b) are ‘(1) whether the attorney ought to be called to testify on behalf of his client, …or
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`(2) whether the attorney may be called other than on behalf of his client and his testimony is or may be
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`prejudicial to the client.’” Little Caesar, 1989 WL 297868 at *2 (quoting Optyl Eyewear, 760 F.2d at
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`1048) (ellipsis in original). Put differently, Country Fare must prove either that Lucerne needs to call
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`4
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`Mr. Haley in its defense, or that Mr. Haley’s testimony if and when called by Country Fare will
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`necessarily be harmful to Lucerne. Country Fare simply has not made the threshold showing to
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`disqualify Mr. Haley and B&I, Lucerne’s counsel of choice. Country Fare’s unsworn attorney argument
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`speculating about Mr. Haley’s hypothetical testimony is no substitute for evidence that such testimony is
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`needed by either party. Gemtron Corp. v. Saint–Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009).
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`“The phrase ‘ought to be called as a witness’ has been narrowly construed to refer to an attorney
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`‘who has crucial information in his possession which must be divulged’ in the course of a trial.” SMI
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`Indus. Canada Ltd v. Caelter Indus., Inc., 586 F. Supp. 808, 817 (N.D.N.Y. 1985) (citing Universal Athletic
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`Sales Co. v. Am. Gym, Recreational & Athletic Equip. Corp., 546 F.2d 530, 539 n.21 (3d Cir. 1976). At this
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`point—when the parties have not even briefed Lucerne’s pending motion to dismiss—Country Fare has
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`no evidence that Lucerne “ought to call” Mr. Haley to testify on its behalf. And Country Fare has no
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`intention of calling Mr. Haley to testify. See S&S Hotel Ventures Ltd. P’ship v. 777 S.H. Corp., 508 N.E.2d
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`647, 651 (N.Y. 1987) (“Where [an informed commercial plaintiff]…knowingly chooses to forego the
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`testimony of its lawyer because it prefers to continue the representation of its law firm, it is curious
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`indeed for an adversary to insist that the lawyer ought to be called as a witness for that client, and for the
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`court on that basis to disqualify the law firm.”) (brackets and ellipsis added). If that is not enough—and
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`it is—several additional reasons demonstrate that Country Fare has not proven that Lucerne needs to
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`call Mr. Haley.
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`First, Lucerne’s pending motion to dismiss may dispose of this case on the pleadings—without
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`Lucerne calling any witness, including Mr. Haley.
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`Second, any testimony Mr. Haley might give regarding the registration of the Mainely Mulch
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`mark would be “essentially ministerial in nature,” and therefore not a proper ground for disqualification.
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`5
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`Nadel & Sons Toy Corp. v. William Shaland Corp., 657 F. Supp. 133, 136 (S.D.N.Y. 1987) (copyright
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`case); compare Rule 10.62(b)(2) (practitioner may represent client if his testimony “will relate solely to
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`a matter of formality”); see Rule 10.63(a) (incorporating Rule 10.62(b)(2) by reference).
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`Third, it is Country Fare that bears the “heavy burden” of proving fraudulent registration, not
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`Lucerne. In re Bose, 580 F.3d 1240, 1243 (Fed. Cir. 2009). To carry that burden, Country Fare must
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`prove that Lucerne knowingly made a false, material representation with the intent to deceive the PTO.
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`Id. at 1245. That is, Country Fare must prove that Lucerne made a conscious effort to obtain a
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`registration to which Lucerne knew it was not entitled. Id. While the Board must assume the truth of
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`Country Fare’s pleadings for purposes of ruling on Lucerne’s motion to dismiss, Country Fare receives
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`no such benefit of the doubt on its Motion to disqualify—that motion must be based on actual proof,
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`which is wholly absent.
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`More to the immediate point, Mr. Haley is not a direct source of evidence regarding what
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`Lucerne knew when. Country Fare’s theory—which is factually inaccurate and legally inadequate—is
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`that Lucerne “had full knowledge that [Country Fare] was the owner of the mark, or at the very least,
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`[Lucerne] knew that [County Fare] had the right to use the mark in commerce.” Motion at 6 (brackets
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`added). Based on this alleged knowledge, County Fare goes on to allege (with equal inaccuracy) that
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`Lucerne submitted altered samples of mulch bags bearing the mark to the PTO with the intent to
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`disguise Country Fare’s ownership rights. Id. Having offered no evidence in support of these allegations,
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`Country Fare cannot possibly prove them at this point.
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`Regardless, testimony about what Lucerne knew about Country Fare’s purported ownership
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`rights to the Mainely Mulch mark will come from Lucerne, not its counsel. Even if Country Fare could
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`establish that a “doctored” specimen was submitted to the PTO—it was not—only after developing
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`such evidence will Country Fare be in a position to know who has relevant testimony on that subject. At
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`the moment, it is by no means “obvious” that Mr. Haley ought to be called as a witness. Lucerne does
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`not intend to call, and Country Fare cannot establish that Lucerne will or “ought to call,” Mr. Haley as a
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`witness, and thus, Country Fare cannot satisfy the first prong of Rule 10.63. See S&S Hotel Ventures, 508
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`N.E.2d at 651.
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`Fourth, forced disqualification of B&I would work a substantial hardship on Lucerne, because
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`B&I’s representation has a distinctive value to Lucerne. Under Rule 10.63(a), a firm may continue to
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`represent a client even if one of its attorneys ought to testify on the client’s behalf if withdrawal “would
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`work a substantial hardship on the client because of the distinctive value of…the practitioner’s firm as
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`counsel in the particular case.” Rule 10.62(b)(4) (ellipsis added); see Rule 10.63(a) (incorporating Rule
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`10.62(b)(4) by reference). While, for reasons already stated, Lucerne does not need Mr. Haley’s
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`testimony at all, Lucerne unquestionably needs B&I’s continued representation in this matter. B&I has
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`represented Lucerne in trademark and other matters since the 1990s. During the course of that
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`relationship, the attorney–client relationship “has become intimate, and the firm has acquired
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`specialized knowledge” of Lucerne and its operations, including Lucerne’s relationship with Country
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`Fare. SMI Indus., 586 F. Supp. at 817 (finding substantial hardship based on analogous facts) (trademark
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`and patent infringement action). Lucerne would be substantially harmed—both in the quality of its
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`representation and as to the cost of the litigation—if it was now required to hire new counsel that did
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`not have the same familiarity with its business generally and the facts of this case specifically as B&I,
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`based on its longstanding role as counsel to Lucerne. Moreover, Country Fare has presented no evidence
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`that these proceedings would somehow be tainted by B&I’s continued representation of Lucerne. See id.
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`That leaves prong two of Rule 10.63, under which an attorney who may be called as a witness by
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`an opposing party “may continue the representation until it is apparent that the practitioner’s…testimony
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`is or may be prejudicial to the practitioner’s client.” Rule 10.63(b) (emphasis and ellipsis added). As
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`already noted, this rule does not give Country Fare carte blanche to disqualify opposing counsel simply
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`by naming an attorney with counsel’s law firm as a potential witness. Little Caesar, 1989 WL 297868 at
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`*2. Rather, Country Fare must come forward with specific proof; and its speculation about what Mr.
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`Haley might say if called falls well short of proof that there is a substantial likelihood that Mr. Haley’s
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`testimony on a specific, relevant issue will be prejudicial to Lucerne. Country Fare’s argument is a house
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`of cards built on the untested (and mistaken) assumption that Lucerne has submitted a “doctored”
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`specimen of the mark to the PTO, and presumably that Mr. Haley’s testimony is necessary to confirm
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`this unsupported allegation. See Motion at 8–9. Country Fare has not reviewed the specimen, yet
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`confidently asserts that the specimen was doctored by Lucerne, was not used in commerce, and breaches
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`a Lucerne–Country Fare contract. Id. Because Country Fare has not examined the specimen, its
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`argument that the specimen has been doctored is pure conjecture, as is its speculation that Mr. Haley’s
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`testimony is required to find out. Country Fare’s conjecture is, as it turns out, false—the specimen is not
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`a “doctored” bag—and neither Mr. Haley nor any witness will be required to testify to that effect to the
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`prejudice of Lucerne. County Fare’s hypotheses regarding what Mr. Haley must say in his testimony are
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`groundless. See Motion at 9. Thus, it is by no means “apparent” that Mr. Haley must testify to Lucerne’s
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`prejudice, as Country Fare cannot demonstrate that Mr. Haley, as opposed to a Lucerne employee, is the
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`only witness who can testify to these facts.
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`The Board cannot disqualify Lucerne’s chosen counsel based on nothing more than Country
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`Fare’s say–so that Mr. Haley must testify, and about what he must say. The simple truth is that Country
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`Fare does not and cannot know whether Mr. Haley’s testimony will be required by either party in this
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`matter, or that Mr. Haley has knowledge of any fact that could not be elicited from a non–attorney
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`witness affiliated with Lucerne. Instead of contesting Lucerne’s motion to dismiss, Country Fare has
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`fired a premature, preemptive strike at Lucerne’s counsel that raises all of the red flags of abuse that often
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`accompany motions to disqualify. In so doing, Country Fare counsel should be careful what it wishes for.
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`Country Fare has married itself to an interpretation of Rule 10.63 that requires the disqualification from
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`subsequent litigation of any law firm—including its own—that assisted a client with registering a mark,
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`based on nothing more than generalized (and unproven) allegations of fraud by an opposing party.
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`Because such allegations do not amount to the kind of heightened proof required to prevail on a
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`disfavored, disqualification motion, County Fare’s motion should be denied, and this case should be put
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`back on a track leading to a resolution on the merits.
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`CONCLUSION
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`Based on the foregoing, Lucerne respectfully requests that the Board deny Country Fare’s
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`petition to disqualify.
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`Dated: December 2, 2010
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`/s/ /David Swetnam–Burland/
`Daniel A. Nuzzi (Me. Bar. No. 8349)
`dnuzzi@brannlaw.com
`David Swetnam–Burland (Me. Bar No. 9569)
`dsb@brannlaw.com
`BRANN & ISAACSON
`184 Main Street; Box 3070
`Lewiston, Maine 04243–3070
`Phone: (207) 786–3566
`Fax:
`(207) 783–9325
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`Attorneys for Lucerne Farms
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`CERTIFICATE OF FILING
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`I certify that on December 2, 2010, the foregoing Lucerne Farms’ Opposition to Country Fare’s
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`Petition to Disqualify was filed with the Trademark Trial and Appeal Board using the Electronic System
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`for Trademark Trial and Appeals.
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`/s/ /David Swetnam–Burland/
`David Swetnam–Burland
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`10
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`CERTIFICATE OF SERVICE
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`I certify that on December 2, 2010, a true and complete copy of the foregoing Lucerne Farms’
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`Opposition to Country Fare’s Petition to Disqualify was served on Petitioner Country Fare, LLC by first
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`class mail, postage prepaid to the following counsel of record for Petitioner:
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`K. Bradford Adolphson
`WARE, FRESSOLA, VAN DER SLUYS & ADOLPHSON, LLP
`Bradford Green, Building 5
`755 Main Street, P.O. Box 224
`Monroe, Connecticut 06468
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`/s/ /David Swetnam–Burland/
`David Swetnam–Burland
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`11