Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA564399
`ESTTA Tracking number:
`10/10/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053314
`Plaintiff
`adidas AG
`ANGELO NOTARO
`NOTARO MICHALOS ZACCARIA PC
`100 DUTCH HILL ROAD
`ORANGEBURG, NY 10962
`UNITED STATES
`jzaccaria@notaromichalos.com
`Testimony For Plaintiff
`John Zaccaria
`jzaccaria@notaromichalos.com, anotaro@notaromichalos.com,
`bcorsello@notaromichalos.com
`/J287-839-JZ-KT/
`10/10/2013
`Shanks-Depo Transcript -With Exhs.2-3-5.pdf(1130871 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`
`ESTTA564399
`ESTTA Tracking number:
`10/10/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053314
`Plaintiff
`adidas AG
`ANGELO NOTARO
`NOTARO MICHALOS ZACCARIA PC
`100 DUTCH HILL ROAD
`ORANGEBURG, NY 10962
`UNITED STATES
`jzaccaria@notaromichalos.com
`Testimony For Plaintiff
`John Zaccaria
`jzaccaria@notaromichalos.com, anotaro@notaromichalos.com,
`bcorsello@notaromichalos.com
`/J287-839-JZ-KT/
`10/10/2013
`Shanks-Depo Transcript -With Exhs.2-3-5.pdf(1130871 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`
`
`
`
`Original Transcript
`
`In the Matter Of:
`
`ADIDAS AG VS. CHRISTIAN FAITH FELLOWSHIP
`
`3,173,207 and 3,173,208
`
`WILLIAM SHANKS
`
`September 10, 2013
`
`
`
`800.211.DEPO (3376)
`Esquireso/utions.com
`
`I
`
`
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration Nos.
`3,173,207 and 3,173,208
`For the Mark ADD A ZERO and ADD A
`
`ZERO & Design
`Cancellation No. 92053314
`_ _ _ . . _ _ _ _ _ _ _ . _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _._X
`
`ADIDAS AG,
`
`Petitioner,
`
`—V_
`
`CHRISTIAN FAITH FELLOWSHIP
`
`Respondent.
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __X
`
`DEPOSITION OF WILLIAM SHANKS
`
`SEPTEMBER 10, 2013
`NEW YORK, NEW YORK
`
`Reported By:
`Angela Castoro, RPR
`
`QESQUIRE
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`2
`
`September 10,
`9:54 A.M.
`
`2013
`
`Trial deposition of William Shanks,
`
`pursuant to Notice of Trial Deposition, held at
`
`the offices of Esquire Deposition Solutions,
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`1384 Broadway,New York, New York, 10018, before
`
`Angela Castoro, a Registered Professional Reporter
`
`and Notary Public of the State of New York.
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`WILLIAM SHANKS
`ADIDAS AG VS. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`3
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`A P P E A R A N C E S:
`
`NOTARO, MICHALOS & ZACCARIA, P.C.
`
`Attorney for Petitioner
`
`1270 Broadway
`
`New York, New York 10001-2334
`
`JOHN ZACCARIA, ESQ.
`
`QUARLES & BRADY, LLP
`
`Attorney for Defendants
`
`300 North Lasalle Street
`
`Suite 4000
`
`Chicago, Illinois 60654
`
`RICHARD W. YOUNG, ESQ.
`
`JOHN CONOUR, ESQ.
`
`(VIA VIDEOCONFERENCE)
`
`QESQUIRE.
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`4
`
`DIRECT - WILLIAM SHANKS
`
`W-I-L-L—I—A-M S-H-A-N-K—S, having first been
`
`duly sworn by a Notary Public of the State of
`
`New York, was examined and testified as
`
`follows:
`
`EXAMINATION BY (DIRECT)
`
`MR. ZACCARIA:
`
`Q.
`
`Please state your name and address
`
`for the record.
`
`A.
`
`William Shanks,
`
`5 Old Hawleyville
`
`Road, Newtown, Connecticut 06470.
`
`MR. ZACCARIA: We are here today
`
`for the testimony deposition of William
`
`Shanks in connection with
`
`cancellation number 92053314 filed on
`
`November 23, 2010 before the Trademark
`
`Trial and Appeal Board by Adidas AG
`
`against Christian Faith Fellowship
`
`Church,
`
`I will refer to Christian Faith
`
`Fellowship Church. We will refer to
`
`Christian Faith Fellowship Church as
`
`CFFC throughout this examination.
`
`I wanted to state for the record
`
`that the notice of testimony deposition
`
`of William Shanks has been marked as
`
`
`QESQUIRE
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`5
`
`DIRECT - WILLIAM SHANKS
`
`Petitioner's Testimony Exhibit No. 5.
`
`Mr. Young,
`
`I believe that exhibit may
`
`have been e-mailed to you this morning.
`
`MR. YOUNG: Yes,
`
`I received an
`
`e—mail with three exhibits this morning.
`
`2,
`
`3 and 5,
`
`I think.
`
`MR . ZACCARIA: Yes .
`
`(Notice of Trial Deposition of
`
`William Shanks, marked Petitioner
`
`Exhibit 5 for identification, as of
`
`this date.)
`
`Q.
`
`Mr. Shanks, what is your
`
`occupation?
`
`A.
`
`I am an employed by Marksmen,
`
`Inc., a private investigative firm based out
`
`of Los Angeles.
`
`Q.
`
`Are you a licensed private
`
`investigator?
`
`A.
`
`Yes,
`
`I am licensed in the states
`
`of California and Connecticut.
`
`Q.
`
`How did you become a licensed
`
`private investigator?
`
`A.
`
`I had a couple of acquaintances
`
`who were in the business and recruited me
`
`GJ\'I0\U'IrI>UJ[\)
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`6
`
`DIRECT — WILLIAM SHANKS
`
`about circa 1996. And at that point I trained
`
`and the extent of the work we were doing was
`
`primarily restricted to intellectual property
`
`matters,
`
`trademark investigations and things
`
`of that sort.
`
`Q.
`
`Was there anything required for
`
`you to become a licensed private investigator?
`
`A.
`
`Yes,
`
`I had to take a written
`
`examination in the State of California, which
`
`was circa 1999, and that license is good for
`
`two years and has to be renewed every two
`
`years.
`
`There was no written requirement
`
`in the State of Connecticut, but there was a
`
`requirement of at least 6,000 hours of
`
`investigative time and that was required for
`
`both licenses.
`
`Q.
`
`Licenses in California and
`
`Connecticut?
`
`A.
`
`Q.
`
`And Connecticut, correct.
`
`How long have you been a private
`
`investigator?
`
`A.
`
`I have been employed under
`
`somebody else's license since 1996.
`
`I have
`
`Q
`
`800.211.DEPO (3376)
`
`Esquiresolutions. com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`7
`
`DIRECT — WILLIAM SHANKS
`
`been licensed myself since 1999.
`
`Q.
`
`Can you generally describe your
`
`employment history as a private licensed
`
`investigator, beginning from early to present?
`
`A.
`
`Sure.
`
`I began as a primarily a
`
`trademark investigator working on cases having
`
`to do with determining first use, current use
`
`of trademarks,
`
`identifying parties,
`
`locating
`
`witnesses perhaps in patent issues. Making
`
`purchases of possible infringing product or
`
`counterfeit product as it were. And that's
`
`the primary source of what I did to begin
`
`with.
`
`Several years after I began,
`
`I was
`
`asked to supervise a set of investigators.
`
`Since 1999 I have been managing or supervising
`
`and also conducting investigations for a staff
`
`of anywhere between seven to fifteen
`
`investigators, depending on the load of work
`
`we have.
`
`Q.
`
`And since 1999 is that when you
`
`began your employment with Marksmen?
`
`A.
`
`Actually in 1998.
`
`I had one last
`
`year of strictly investigative work, and then
`
`£9
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`800.211.DEPO (3376)
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`EsquireSo/utions.com
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`8
`
`DIRECT — WILLIAM SHANKS
`
`there was management work attached to that,
`
`which also included training of new people.
`
`Q.
`
`And what is the nature of
`
`Marksmen's investigation business?
`
`A.
`
`We primarily almost exclusively
`
`assist trademark and patent attorneys and
`
`copyright to a certain degree with issues
`
`regarding first use, senior use, patent
`
`infringement, which may require purchase of
`
`equipment or a search of prior art issues with
`
`regard to patents.
`
`A lot of domain name
`
`issues have come and gone.
`
`We also have a department within
`
`Marksmen that makes approaches to purchase
`
`rights to trademarks, patents and domain
`
`names. Although I do not operate in that
`
`field except to assist with perhaps locating
`
`individuals for negotiation.
`
`Q.
`
`What is your current position with
`
`Marksmen?
`
`A.
`
`Q.
`
`A.
`
`I am the lead investigator.
`
`What does that mean?
`
`I basically set the tone and the
`
`policy with another senior manager to instruct
`
`[U
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`U)
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`
`DIRECT — WILLIAM SHANKS
`
`as to how we operate, what's the realm of --
`
`let's see,
`
`just the written work for one. We
`
`have a lot of issues in terms of what goes
`
`into a report insofar as, you know,
`
`grammatical issues,
`
`things of that sort.
`
`I
`
`interface a lot with clients as to determining
`
`how to conduct an investigation, which
`
`includes an estimate of fees and the amount of
`
`manpower that may be necessary.
`
`Boy,
`
`what else.
`
`A number of other
`
`things.
`
`I am just drawing a blank at the
`
`moment.
`
`Q.
`
`And were you always the lead
`
`investigator at Marksmen?
`
`A.
`
`I have been the lead investigator
`
`since I would think about 2002.
`
`Q.
`
`Do you supervise people at
`
`Marksmen?
`
`A.
`
`Q.
`
`A.
`
`I do.
`
`Who do you supervise?
`
`I currently supervise three
`
`individuals,
`
`they are all independent
`
`contractors. And also I actually I supervise
`
`two others who are hourly employees.
`
`One
`
`N U
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`)
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`ONUTI-P
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`10
`
`DIRECT — WILLIAM SHANKS
`
`works out of our Los Angeles office and one
`
`works out of Chapel Hill out of North
`
`Carolina.
`
`The two hourly employees I am
`
`generally interfacing with regard to work that
`
`has come in, work requests and they interface
`
`with clients insofar as when I mentioned
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`before of determining fees and manpower
`
`necessary time of —— time needed to execute the
`
`request,
`
`things of that sort.
`
`Q.
`
`Do you yourself perform trademark
`
`use investigations?
`
`A.
`
`Q.
`
`I do.
`
`How many trademark use investigations
`
`approximately have you performed?
`
`A.
`
`Q.
`
`A.
`
`Myself individually?
`
`Yes.
`
`I Would estimate since 1996 at
`
`least 3,000,
`
`if not more.
`
`Probably that's a
`
`conservative number.
`
`Q.
`
`I am going to show you a document
`
`that was marked as Petitioner's Testimony
`
`Exhibit Number 2 during the testimony
`
`deposition of Edgar Bridges taken on August 7,
`
`[0
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`LA)
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`11
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`DIRECT — WILLIAM SHANKS
`
`I ask you to review it.
`
`Okay.
`
`Q.
`
`Are you familiar with Petitioner's
`
`Testimony Exhibit Number 2?
`
`A.
`
`Q.
`
`A.
`
`I am.
`
`Can you identify Exhibit 2?
`
`Yes,
`
`this is a report that was put
`
`together in an assignment to determine the use
`
`of the term Add a Zero and Add a Zero & Design
`
`that was part of registered trademarks of
`
`the Christian Faith Fellowship Church.
`
`And we were hired to determine
`
`whether the use was still enforced. And if
`
`not,
`
`if there was a date of abandonment
`
`attached to it.
`
`Q.
`
`Are you in a position to know that
`
`this is in fact what Petitioner's Testimony
`
`Exhibit Number 2 is?
`
`A.
`
`This is a very common report in
`
`terms of use investigation that we conduct
`
`daily.
`
`Q.
`
`Did Petitioner's Testimony Exhibit
`
`Number 2 come from the files of Marksmen?
`
`l\.)
`
`LA)
`
`\‘I0\U‘|n-I>
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`12
`
`DIRECT - WILLIAM SHANKS
`
`It did.
`
`Q.
`
`Which files did the Petitioner's
`
`Testimony Exhibit Number 2 come from?
`
`A.
`
`Q.
`
`A.
`
`Q.
`
`A.
`
`The file number is 58973.
`
`Is the file number on the report?
`
`Yes.
`
`Where is it on the report?
`
`It is right in the center, right
`
`below the -— right above the name of the
`
`attorney who is receiving the report, Angelo
`
`Notaro.
`
`Q.
`
`A.
`
`Go ahead,
`
`I am sorry.
`
`No, that's fine.
`
`The file number
`
`is stated filed 58973.
`
`Q.
`
`You were saying where the files
`
`came from, where the report came from?
`
`A.
`
`Yeah,
`
`insofar as what do you mean
`
`by where did it come from?
`
`Q.
`
`How does Marksmen maintain this
`
`report?
`
`A.
`
`Okay. There are several locations
`
`that a file is maintained. We provide our
`
`reports to our clients via a website, secure
`
`website, which has a database and a server and
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`%
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`800.211.DEPO (3376)
`
`Esquiresolutions. com
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`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`13
`
`DIRECT — WILLIAM SHANKS
`
`you can log in with your user name and
`
`password and retrieve your reports, once
`
`you've received an e—mail that says that your
`
`report has been released and it's available
`
`for you to pick it up.
`
`Q.
`
`When you say "you," who are you
`
`referring to?
`
`A.
`
`To the client.
`
`In this case
`
`Angelo Notaro. Once the case is released, it
`
`is set to go to billing and it is printed out
`
`into a hardcopy and put into a physical file
`
`in our Los Angeles office, along with the
`
`billing sheets and any instructions from the
`
`client.
`
`Q.
`
`Who prepared Petitioner's
`
`Testimony Exhibit Number 2?
`
`A.
`
`The case was conducted by Edgar
`
`Bridges who is a contractor for Marksmen.
`
`He
`
`has worked for us since 1998.
`
`He is licensed
`
`in the State of Georgia and he at the time of
`
`this report was working under the supervision
`
`of John Shoenfelt, who was a supervisory
`
`manager in our Chapel Hill office in North
`
`Carolina.
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`QESQUIRE.
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`14
`
`DIRECT — WILLIAM SHANKS
`
`So in terms of how our reports go
`
`out to clients, we —— the work is conducted
`
`almost exclusively by the investigator that
`
`the case is assigned to.
`
`In this case Edgar
`
`Bridges and he perhaps has a discussion with
`
`his supervisor and perhaps me as well.
`
`I was at this point in 2010 I was
`
`also troubleshooting staff frequently. But
`
`this case in itself I don't recall myself.
`
`But they would have a discussion about the
`
`work and what was required. And then Ned
`
`would conduct the investigation and file his
`
`report, which would be submitted to a case
`
`list of cases that were perhaps due on a
`
`particular day.
`
`Our turnaround time is typically
`
`five business days.
`
`So if a case was ordered
`
`today,
`
`the 10th of September,
`
`the case would
`
`be due five business days next Tuesday,
`
`whichever date that is.
`
`We have rush fees that we could
`
`attach to a case if that's necessary as well.
`
`In this case at the end of the report you will
`
`see the initials "ELB," which indicates that
`
`Q
`
`800.211.DEPO (3376)
`
`EsquireSoIutions.com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`15
`
`DIRECT - WILLIAM SHANKS
`
`the work was conducted by Edgar Bridges and
`
`was -— once the report was submitted, John
`
`Shoenfelt would look over the work. He'd --
`
`rereview the instructions from the client and
`
`insofar as what the necessary tasks were with
`
`regard to this issue.
`
`Clearly one of them was whether
`
`there was still use of the mark,
`
`length of
`
`use, duration of use, duration of use, what
`
`the use was for,
`
`the goods and services,
`
`perhaps the geographic scope of where the
`
`product was disbursed or disserviced, any
`
`distribution channels. And if it was no longer
`
`in use,
`
`to try to get a determination of a date
`
`of abandonment. That is typical to most of
`
`the in—use investigations that we do with
`
`trademarks. And that goes with federal or
`
`common law or even state trademarks.
`
`So Ned would have done this
`
`report, submitted this report to John
`
`Shoenfelt, who is the signatory at the end of
`
`the report. And John would review the work,
`
`and if he had any further questions, which is,
`
`you know, common,
`
`in terms of proofing the
`
`800.211.DEPO (3376)
`
`EsquireSoIutions.com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`16
`
`DIRECT - WILLIAM SHANKS
`
`report.
`
`I mean, primarily the supervisor at
`
`that point is looking for -— to make sure that
`
`all of the issues put forth by the instructing
`
`client have been addressed in the report and,
`
`you know, any grammatical or paragraphs that
`
`may —— if there is any portion of the
`
`narrative that may seem confusing,
`
`they will
`
`rereview anything of that sort as well.
`
`Q.
`
`Was the petitioner --
`
`MR. YOUNG: Excuse me,
`
`I am going
`
`to object. Objection,
`
`that entire
`
`testimony was speculation. This witness
`
`has said that he has no recollection of
`
`the case himself.
`
`So this is merely his
`
`speculation as to what happened without
`
`any knowledge.
`
`So objection and move to
`
`strike.
`
`Q.
`
`Was Petitioner's Testimony Exhibit
`
`Number 2 prepared in the ordinary course of
`
`business of Marksmen?
`
`A.
`
`Q.
`
`Yes.
`
`Approximately when was Petitioner's
`
`Testimony Exhibit Number 2 prepared?
`
`A.
`
`It was prepared according to the
`
`800.211.DEPO (3376)
`
`EsquireSolutions.com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG Vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`17
`
`DIRECT — WILLIAM SHANKS
`
`date on the report, May 17, 2010.
`
`Q.
`
`Is it the normal practice of
`
`Marksmen to prepare investigative reports like
`
`Petitioner's Testimony Exhibit Number 2?
`
`A.
`
`Yes.
`
`Do you have an uhderstanding of
`
`this practice?
`
`Q.
`
`A.
`
`Q.
`
`._
`
`<@%y
`
`mhmfib
`A very hint of it.
`
`You described before how this
`
`report was prepared.
`
`Can you just again
`
`describe just generally the practice of how
`
`these reports are prepared?
`
`A.
`
`Yeah,
`
`they are -— the assignment
`
`is received from the client and the work is
`
`then distributed to an appropriate
`
`investigator. There is a discussion with the
`
`investigator with his supervisory manager, and
`
`the investigator then takes to the task of
`
`determining the extent of use of the trademark
`
`and writes a report in conjunction with that
`
`in terms of what his findings are and where he
`
`found things that either determined current
`
`use or determined lack thereof.
`
`Q.
`
`Was Petitioner's Testimony Exhibit
`
`52
`
`800.211.DEPO (3376)
`
`EsquireSo/utions.com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`18
`
`DIRECT - WILLIAM SHANKS
`
`Number 2 prepared under Marksmen's practice
`
`preparing investigative reports?
`
`A.
`
`Yes.
`
`MR. YOUNG: Objection.
`
`Speculation. Move to strike.
`
`Q.
`
`Is it a normal practice of
`
`Marksmen to keep and maintain investigative
`
`reports like Petitioner's Testimony Exhibit
`
`Number 2 as part of its business records?
`
`A.
`
`Q.
`
`Yes.
`
`Do you have an understanding of
`
`this practice?
`
`A.
`
`Q.
`
`Yes,
`
`I do.
`
`Can you describe Marksmen's
`
`practice of maintaining investigative reports?
`
`A.
`
`Yes.
`
`Once a report has been released to
`
`a client, we may even followup with the
`
`client to make sure that they received the
`
`report.
`
`The report is printed out into a
`
`physical file.
`
`The report is also maintained
`
`in our database, which is a server located
`
`in Toronto, Canada, which is where our
`
`information technology employee works and
`
`Q
`
`800.211.DEPO (3376)
`
`EsquireSoIutions.com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`19
`
`DIRECT ~ WILLIAM SHANKS
`
`houses the stuff on our server, our reports
`
`and other matters regarding the company.
`
`The file is maintained in our Los
`
`Angeles office from that point onward.
`
`Q.
`
`Does Marksmen maintain copies of
`
`investigative reports as an ordinary course of
`
`its business?
`
`A.
`
`Yes, every report that goes out to
`
`a client is also printed out to a physical
`
`file and filed within our office.
`
`Q.
`
`Was Petitioner's Testimony Exhibit
`
`Number 2 maintained under Marksmen practice of
`
`keeping and maintaining investigative reports?
`
`A.
`
`Q.
`
`Yes.
`
`And does Marksmen maintain a copy
`
`of Petitioner's Testimony Exhibit Number 2 as
`
`part of its business records?
`
`A.
`
`Q.
`
`Yes.
`
`I believe you said Mr. Edgar
`
`Bridges conducted the investigation, which is
`
`the subject of Petitioner's Testimony Exhibit
`
`Number 2?
`
`A.
`
`Q.
`
`Q
`
`Yes.
`
`Did Mr. Bridges have a duty to
`
`800.211.DEPO (3376)
`
`EsquireSoIutions.com
`
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`20
`
`DIRECT - WILLIAM SHANKS
`
`provide the information contained in
`
`Petitioner's Testimony Exhibit Number 2?
`
`A.
`
`Q.
`
`Yes.
`
`Do you know how long Marksmen has
`
`used Mr. Bridges to conduct investigations?
`
`A.
`
`Yes, Mr. Bridges has been with us
`
`since I believe spring of 1998.
`
`I came on I
`
`think about a month before he did.
`
`He has
`
`been with us since some time in 1998.
`
`MR. ZACCARIA:
`
`I am showing the
`
`witness a document that was marked as
`
`Petitioner's Testimony Exhibit Number 3
`
`during the deposition testimony of Edgar
`
`Bridges taken on August 7, 2013.
`
`Q.
`
`A.
`
`Q.
`
`Can you please review Exhibit 3.
`
`Sure.
`
`Are you familiar with Petitioner's
`
`Testimony Exhibit Number 3?
`
`A.
`
`Q.
`
`Yes,
`
`I am.
`
`Can you identify Petitioner's
`
`Testimony Exhibit Number 3?
`
`A.
`
`Yes,
`
`this was a followup report of
`
`the Christian Faith Fellowship Church and
`
`their trademark Add a Zero approximately one
`
`
`QESQUIRE
`
`800.21 1.DEPO (3376)
`EsquireSoIutions.com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`21
`
`DIRECT - WILLIAM SHANKS
`
`year after the initial report was submitted to
`
`Angelo Notaro.
`
`He had us do a followup
`
`investigation to see if there was any change
`
`in use of the term "Add a Zero." He also
`
`instructed us not to contact the client —-
`
`the
`
`target.
`
`So the extent of the investigation
`
`was to look in databases and news articles,
`
`any other internet references to see if there
`
`had been any alteration to the use.
`
`Q.
`
`Did Petitioner's Testimony Exhibit
`
`Number 3 come from Marksmen's files?
`
`A.
`
`Q.
`
`A.
`
`Yes.
`
`Which files?
`
`It would come from —- since there
`
`was a followup and it was more than six
`
`months after the original report filed 58973,
`
`we have a policy of starting a new file number
`
`after that much time has lapsed.
`
`So a new
`
`file number was initiated, which was file
`
`number 62795.
`
`Q.
`
`Is that file number on
`
`Petitioner's Testimony Exhibit Number 3?
`
`A.
`
`Yes, it is.
`
`It is right in the
`
`center of the first page of the report.
`
`Q
`
`800.211.DEPO (3376)
`
`EsquireSoIutions.com
`
`
`
`WILLIAM SHANKS
`
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`22
`
`\‘IO‘\U1n-I>-(.aJ[\)I-'
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`DIRECT — WILLIAM SHANKS
`
`Q.
`
`The question was, Mr. Shanks,
`
`where did Exhibit 3 come from Marksmen's
`
`files?
`
`A.
`
`Well, it was then -— where did it
`
`come from?
`
`Yes. Did it come from Marksmen's
`
`Yes.
`
`Where exactly was it maintained?
`
`The file was maintained in our
`
`office in Los Angeles in a separate file from
`
`the original.
`
`So it was printed out into a
`
`file, along with the instructions from the
`
`client,
`
`the billing invoice and any other
`
`notes that may have been attached to it.
`
`And it was also housed and
`
`continues to be housed on our website, which
`
`is our database that's continually accessible
`
`to our clients for any work that they ordered
`
`from us.
`
`Q.
`
`When you say "website," you are
`
`referring to the server?
`
`A.
`
`I am referring ultimately to the
`
`server, but you know,
`
`there is a web interface
`
`QESQUIRE,
`
`800.21 1.DEPO (33 76)
`EsquireSoIutions.com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`23
`
`DIRECT — WILLIAM SHANKS
`
`of —- Marksmen has a website there for
`
`ordering work. You could request an
`
`investigation and you could also pick up your
`
`work from that location on the web with a
`
`login and password.
`
`Q.
`
`And who prepared Petitioner's
`
`Testimony Exhibit Number 3?
`
`A.
`
`This report --
`
`MR. YOUNG: Objection. Lacks
`
`foundation.
`
`A.
`
`The report as indicated on the
`
`last page has the initials "ELB," which are
`
`the initials for Edgar Bridges. And the
`
`report was signed at that point by supervisory
`
`manager John Shoenfelt.
`
`Q.
`
`And when, approximately, was
`
`Exhibit No.
`
`3 prepared?
`
`A.
`
`Q.
`
`In May of 2011.
`
`Was Petitioner's Testimony Exhibit
`
`Number 3 made in the ordinary course of
`
`Marksmen's business?
`
`A.
`
`Q.
`
`Yes.
`
`Was Petitioner's Testimony Exhibit
`
`Number 3 prepared under Marksmen's normal
`
`Q
`
`800.211.DEPO (3376)
`
`EsquireSoIutions.com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`24
`
`DIRECT — WILLIAM SHANKS
`
`practice of preparing investigative reports?
`
`A.
`
`Very much so.
`
`MR. YOUNG: Objection.
`
`Speculation.
`
`Q.
`
`And does Marksmen maintain a copy
`
`of Petitioner's Testimony Exhibit Number 3 as
`
`part of its business records?
`
`A.
`
`Q.
`
`Yes, it does.
`
`Was Petitioner's Testimony Exhibit
`
`Number 3 maintained under Marksmen's practice
`
`of maintaining investigative reports?
`
`A.
`
`Q.
`
`Yes.
`
`I think you have already may have
`
`testified to this. Where does Marksmen
`
`maintain a copy of Petitioner's Testimony
`
`Exhibit Number 3 as part of its business
`
`records?
`
`A.
`
`As I mentioned before,
`
`in two
`
`places on our —- Marksmen's security server,
`
`database which is accessible to our attorney
`
`or paralegal clients, and also within a
`
`physical file in our office in Los Angeles.
`
`Q.
`
`Who conducted the investigation
`
`which is the subject of Petitioner's Testimony
`
`
`
`%ESQU1RE
`
`800.211.DEPO (33 76)
`Esquiresolutions. com
`
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`25
`
`CROSS — WILLIAM SHANKS
`
`Exhibit Number 3?
`
`A.
`
`Q.
`
`That would be Edgar Bridges.
`
`Did Mr. Bridges have a duty to
`
`provide the information that's contained in
`
`Exhibit No. 3 to Marksmen?
`
`A.
`
`Yes.
`
`MR. ZACCARIA:
`
`I have no further
`
`questions on direct.
`
`EXAMINATION BY (CROSS)
`
`MR. YOUNG:
`
`Q.
`
`When did you first see Exhibits 2
`
`Some time earlier this summer.
`
`And in what connection did you see
`
`A.
`
`There was talk of Edgar Bridges,
`
`one of our independent contractors being
`
`deposed with regard to this matter. And John
`
`Shoenfelt who is no longer with our company
`
`was not available to review obviously, so I
`
`reviewed the work with Ned and had discussions
`
`with the firm Notaro Michalos.
`
`Q.
`
`Where did you see these two
`
`exhibits?
`
`QESQUIRE
`
`800.21 1.DEPO (3376)
`Esquiresolutions. com
`
`
`
`CD\‘IO\U1n-I>-UJIUI-‘
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`26
`
`CROSS - WILLIAM SHANKS
`
`A.
`
`I saw them within my office as
`
`pulled from the company's database, our case
`
`finder database, and also they were sent to me
`
`by John Zaccaria.
`
`Q.
`
`You didn't see them in the
`
`physical files in Los Angeles?
`
`A.
`
`I saw them recently in the
`
`physical files in Los Angeles to compare that
`
`they were the same reports and they indeed
`
`are.
`
`Q.
`
`Did you personally go to those
`
`physical files and pull out the reports?
`
`A.
`
`No,
`
`I instructed our person, one
`
`of my customer service representatives in Los
`
`Angeles to pull the physical files from the
`
`file number 62795 and 58973 and scan the
`
`reports to me personally. And then I reviewed
`
`Where do you work, Mr. Shanks?
`
`I work from a home office.
`
`Geographic location.
`
`I work from a home office in
`
`Newtown, Connecticut.
`
`Q.
`
`Did you personally access the
`
`
`QESQUIRE
`
`800.211.DEPO (3376)
`EsquireSoIutions.com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`27
`
`CROSS — WILLIAM SHANKS
`
`Marksmen website or server to look for these
`
`reports?
`
`A.
`
`Q.
`
`Yes.
`
`And did you find them on the
`
`Marksmen website?
`
`A.
`
`Q.
`
`Yes.
`
`You had no involvement in either
`
`of these investigations;
`
`is that right?
`
`A.
`
`To the best of my recollection,
`
`I
`
`don't recall having any interaction at the
`
`time of the investigation.
`
`Q.
`
`You didn't speak with Mr. Notaro
`
`or anyone else about these investigations at
`
`the time?
`
`A.
`
`Q.
`
`Not that I recall.
`
`You didn't supervise Mr. Bridges
`
`in doing the investigation, did you?
`
`A.
`
`Q.
`
`No.
`
`You didn't supervise
`
`Shoenfelt
`
`in his supervision of
`
`Bridges on these investigations, did you?
`
`A.
`
`Q.
`
`Not that I recall.
`
`You have no personal knowledge of
`
`the substance of the investigation, all you
`
`
`
`QESQUIRE
`
`800.211.DEPO (3376)
`EsquireSoIutions.com
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`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`28
`
`CROSS — WILLIAM SHANKS
`
`know is what's in the investigative report;
`
`isn't that right?
`
`A.
`
`That is correct. Although I take
`
`very seriously the work of Edgar Bridges,
`
`who's been our -— he has been an employee of
`
`Marksmen and —— not an employee, but an
`
`independent contractor since 1998 and has
`
`conducted stellar work for us. And they have
`
`done other investigative work in the same
`
`manner reaching back to the early '90's.
`
`Q.
`
`And you have no personal basis on
`
`which to assess the accuracy of these reports,
`
`do you?
`
`A.
`
`Define "personal." As opposed to
`
`professional?
`
`Q.
`
`You have testified you were not
`
`involved in these investigations, so you have
`
`no basis on which to assess whether these
`
`reports are accurate.
`
`A.
`
`I take it that the work that is
`
`going out to our clients is of an accurate and
`
`substantive matter, because if it wasn't we
`
`would no longer be in business.
`
`Q.
`
`All of your testimony here is
`
`
`
`QESQUIRE
`
`800.211.DEPO (3376)
`EsquireSolutions.com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`29
`
`l
`
`[0
`
`CROSS - WILLIAM SHANKS
`
`about your practices and procedures of
`
`(AJ Marksmen. My question is you have no personal
`
`basis based on your own knowledge of this
`
`investigation to assess whether the reports
`
`are accurate or not, do you?
`
`MR. ZACCARIA: Objection. Outside
`
`the scope of direct.
`
`A.
`
`Not
`
`in a personal sense, no.
`
`MR. YOUNG:
`
`I have no further
`
`questions.
`
`MR. ZACCARIA:
`
`I have no further
`
`cross.
`
`Can we stipulate on the record
`
`that petitioner can file the transcript
`
`of his testimony deposition via
`
`electronically instead of filing a
`
`sealed copy with the board?
`
`MR. YOUNG:
`
`Sure. That's fine,
`
`MR. ZACCARIA:
`
`Thank you.
`
`(Time noted: 10:27 a.m..)
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`O\U1n-I>-
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`800.211.DEPO (3376)
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`EsquireSoIutions.com
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`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`30
`
`CROSS - WILLIAM SHANKS
`
`I,
`
`the witness herein, having read
`
`the foregoing testimony, do hereby
`
`certify
`
`it to be a true and correct transcript,
`
`subject to the corrections,
`
`if any,
`
`shown
`
`on the attached page.
`
`WILLIAM SHANKS
`
`Subscribed and sworn to
`
`before me this
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`day
`
`of
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`k0(IJ\'IO\U1n-I>-
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`%EsQUIRE
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`800.211.DEPO (3376)
`EsquireSolutions.com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`31
`
`INDEX
`
`CERTIFICATE
`STATE OF NEW YORK - COUNTY OF NEW YORK
`
`I, ANGELA CASTORO, a Shorthand Reporter
`
`and Notary Public within and for the State of
`
`New York, do hereby certify:
`
`That WILLIAM SHANKS,
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`the witness whose
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`deposition is hereinbefore set forth on
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`September 10, 2013 at Esquire Deposition
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`Solutions, 1384 Broadway, New York, New York,
`
`10018 from 9:54 A.M.
`
`to 10:27 A.M.
`
`in the
`
`presence of Counsel for the Petitioner, John
`
`Zaccaria, Esq., and via videoconference
`
`Richard W. Young, Esq, John Conour, Esq.,
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`counsel for the Respondent, was duly sworn by
`
`me and that such deposition is a true record
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`of the testimony given by such witness.
`
`I further certify that I am not related
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`to any of the parties to this action by blood
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`or marriage, and that I am in no way
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`interested in the outcome of this matter.
`
`IN WITNESS WHEREOF,
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`I have hereunto set
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`my hand on
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`day of
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`, 2013.
`
`W&
`
`ANGELA CASTORO
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`QESQUIRE
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`800.211.DEPO (3376)
`EsquireSoIutions.com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`32
`
`DEPOSITION ERRATA SHEET
`
`WITNESS
`WILLIAM SHANKS
`
`Direct Examination by Mr. Zaccaria
`Cross Examination by Mr. Young
`
`oOo
`
`EXHIBITS
`
`PETITIONER (PREVIOUSLY MARKED)
`EXHIBITS
`
`Privileged and Confidential
`letter dated May 17, 2010
`to Angelo Nataro, Esq.
`from John Shoenfelt Bates
`
`stamped PET 000002 through
`PET 000004
`
`(Previously marked)
`
`Privileged and Confidential
`letter dated May 5, 2011
`to Angelo Nataro, Esq.
`from John Shoenfelt Bates
`
`stamped PET 000005 through
`PET 000008
`
`(Previously marked)
`
`oOo
`
`PETITIONER
`EXHIBITS
`
`Notice of Trial Deposition
`of William Shanks
`
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`QESQUIRE.
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`800.21 1.DEPO (33 76)
`EsquireSolutions.com
`
`
`
`WILLIAM SHANKS
`ADIDAS AG vs. CHRISTIAN FAITH FELLOWSHIP
`
`September 10, 2013
`33
`
`DEPOSITION ERRATA SHEET
`
`336804
`Our Assignment No.:
`Case Caption: Adidas v. CCFC
`
`DECLARATION UNDER PENALTY OF PERJURY
`
`I declare under penalty of perjury
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`that I have read the entire transcript of my
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`l
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`2
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`8 Deposition taken in the captioned matter or
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`9
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`the same has
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