Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`92053659
`
`Defendant
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`LaRiviere, Grubman & Payne LLP
`CHRISTOPHER J PASSARELI
`LARIVIERE GRUBMAN PAYNE LLP
`19 UPPER RAGSDALE DRIVE STE 200, PO BOX 3140
`MONTEREY, CA 93942
`UNITED STATES
`
`eam@|gpat|aw.com, uspto@|gpat|aw.com
`Motion to Strike
`
`
`
`Christopher J. Passarelli
`
`uspto@|gpat|aw.com
`
`lsl Christopher J. Passarelli
`08/13/2013
`
`Motion to Preclude 8—13—13.pdf(183662 bytes )
`Motion to Preclude CJP Dec 8-13-13.pdf(2414953 bytes )
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA553835
`ESTTA Tracking number:
`08/13/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053659
`Defendant
`LaRiviere, Grubman & Payne LLP
`CHRISTOPHER J PASSARELI
`LARIVIERE GRUBMAN PAYNE LLP
`19 UPPER RAGSDALE DRIVE STE 200, PO BOX 3140
`MONTEREY, CA 93942
`UNITED STATES
`eam@lgpatlaw.com, uspto@lgpatlaw.com
`Motion to Strike
`Christopher J. Passarelli
`uspto@lgpatlaw.com
`/s/ Christopher J. Passarelli
`08/13/2013
`Motion to Preclude 8-13-13.pdf(183662 bytes )
`Motion to Preclude CJP Dec 8-13-13.pdf(2414953 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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`

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`
`
`Date of Filing: August 13, 2013
`I hereby certify that this paper or fee is being electronically filed with the United States Patent and Trademark Office on the date
`indicated above.
`Typed or Printed Name of Person Electronically Filing Paper or Fee: Tabatha Morgan
`Signature: ________________________________________
`
`
`
`IN THE
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
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`
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`IPROPERTY, INC.,
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`
`Petitioner,
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`vs.
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`LARIVIERE, GRUBMAN & PAYNE, LLP,
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`
`Respondent.
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`)
`)
`)
`)
`)
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`)
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`)
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`TRADEMARK: IPROPERTY
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`
`Cancellation No. 92053659
`Registration No. 3,066,544
`
`RESPONDENT’S MOTION TO STRIKE
`PETITIONER’S PRETRIAL
`DISCLOSURES, QUASH NOTICES OF
`TESTIMONIAL DEPOSITIONS AND
`PRECLUDE TESTIMONY
`
`COMES NOW Respondent LARIVIERE, GRUBMAN & PAYNE, LLP (“Respondent”),
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`by and through counsel, and pursuant to Rule 37 of the Federal Rules of Civil Procedure and the
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`applicable Trademark Rules of Practice, respectfully requests that the Trademark Trial and
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`Appeal Board (“Board”): (1) strike Petitioner’s Pretrial Disclosures of witnesses untimely
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`disclosed, (2) quash Petitioner’s facially defective Notices of Testimonial Deposition as lacking
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`the information required under the Trademark Rules, and (3) preclude Petitioner from using
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`Dean Palmer, Judy Brooks, Andrew Tan, Thomas J.R. McDowell, May Lin DeHaan and Craig
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`Giles at the trial in this proceeding. The present Motion is supported by the following Points and
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`
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`RESPONDENT’S MOTION TO PRECLUDE PETITIONER’S
`TRIAL WITNESSES
`Cancellation No. 92053659
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`
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`1
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`Authorities, as well as the Declaration of Christopher J. Passarelli (“Passarelli Declaration”) and
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`exhibits attached thereto.
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`MEMORANDUM OF POINTS AND AUTHORITIES
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`I.
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`INTRODUCTION
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`
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`On or about June 2, 2011, Petitioner served its initial disclosure on Respondent disclosing
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`Dean Palmer as the only witness/person to have any information relating to the instant
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`IPROPERTY cancellation proceeding. Passarelli Declaration, para. 2, exh. A. Petitioner did not
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`at any time during the discovery period in this proceeding supplement its disclosure or otherwise
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`disclose that it may use at trial any other witness. Id., para. 3. On or about July 1, 2013, over two
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`years later -- and on the eve of trial in this proceeding – Petitioner served its Pretrial Disclosures,
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`naming five additional witnesses for the very first time: May Lin Dehaan, Judy Brooks, Thomas
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`J.R. McDowell, Andrew Tan and Craig Giles. Id., para. 4.
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`
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`On or about July 25, 2013, Petitioner served a Notice of Testimonial Deposition upon
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`Written Questions on Respondent for each of the witnesses set forth in its Pretrial Disclosures.
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`Id., para 5, exh. B.
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`Exhibits served by Petitioner in this proceeding on July 25, 2013, confirm that Petitioner
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`could have disclosed these witnesses at least as early as June 2, 2011, when Petitioner made its
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`initial disclosures.1 Passarelli Decl., paras. 8 and 9, exhs. C and D. Yet, Petitioner did not make
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`1 In Petitioner’s Motion to Amend in this proceeding filed on December 9, 2011, Petitioner indicated an
`awareness of Ms. DeHaan in connection with ”information and evidence” obtained by Petitioner, by its own
`admission, sometime “[a]fter filing the Petition” but presumably at a time before its December 9, 2011 filing.
`Petitioner should reasonably have been aware of Ms. DeHaan as of the date of the filing its Petition to Cancel since
`she was an attorney of record in prosecution of Respondent’s subject Reg. No. 3,066,544. Passarelli Decl., para. 7.
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`RESPONDENT’S MOTION TO PRECLUDE PETITIONER’S
`TRIAL WITNESSES
`Cancellation No. 92053659
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`2
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`any of the required disclosures with respect to five new witnesses until July 1, 2013, over two
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`years later, on the eve of trial and more than a year and a half after discovery closed.
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`Subsequent to that date, in serving its Notices of Depositions, Petitioner also revealed for
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`the first time that it will be using all of these witnesses at trial. However, none of the witnesses
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`appear to be knowledgeable about the relevant facts of Petitioner’s claims set forth in the Petition
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`for Cancellation.2
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`Prior to filing this Motion, Respondent’s counsel made the reasonable proposal to resolve
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`the dispute over the noticed depositions by offering not to file the instant motion if Petitioner
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`would agree to withdraw its defective Notices of Testimonial Deposition and amend its Pretrial
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`Disclosures accordingly. Id., para. 10, exh. E. As of the time of this filing, Petitioner has not
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`agreed. Id., para. 11.
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`Petitioner’s continued bad faith gamesmanship -- now with respect to its trial witnesses in
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`this proceeding -- should not be countenanced by the Board. Accordingly, Respondent requests
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`that the Board issue an order: (1) striking Petitioner’s Pretrial Disclosures of witnesses and things
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`therein as not timely disclosed; (2) striking Petitioner’s Notices of Testimonial Depositions due
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`to defective notice pursuant to Trademark Rules of Practice 2.124; and (3) precluding Petitioner
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`IPROPERTY, INC. from using Dean Palmer, May Lin DeHaan, Judy Brooks, Thomas J.R.
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`McDowell, Andrew Tan and Craig Giles as trial witnesses in this proceeding.
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`
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`2 Significantly, each of Petitioner’s witnesses, with the exception of May Lin DeHaan, are being called to
`testify regarding Petitioner’s “Mark” (defined as IPROPERTY). None of the witnesses listed in Petitioner’s Pretrial
`Disclosures or Notices of Deposition (except arguably Ms. DeHaan) are being called to testify regarding the
`registration subject of this proceeding, or Petitioner’s claims of abandonment and lack of bona fide intent to use by
`Respondent that are at issue in this proceeding.
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`RESPONDENT’S MOTION TO PRECLUDE PETITIONER’S
`TRIAL WITNESSES
`Cancellation No. 92053659
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`3
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`II.
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`ARGUMENT
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`Petitioner’s Witnesses Are Highly Prejudicial And Should Be Stricken.
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`A.
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`Petitioner waited (improperly) until the eve of trial to disclose five (5) of its witnesses,
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`thus depriving Respondent of the opportunity to conduct oral and written discovery, as well as,
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`pretrial and trial strategy with complete facts at hand.
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`Federal Rules of Civil Procedure, Rule 26(a) (1) (A) and Trademark Rules of Practice §
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`2.120 obligate all parties to disclose the identity of their witnesses and the subjects on which
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`those witnesses are knowledgeable at the outset of an inter partes proceeding.
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`A party who fails to make a required initial disclosure “is not allowed to use that
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`information or witness to supply evidence on a motion, at a hearing, or at trial unless the failure
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`was substantially justified or is harmless.” (FRCP Rule 37(c)(1); Hoffman v. Construction
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`Protective Services, Inc., 541 F.3d 1175, 1179 (9th Cir. 2008)). “Waiting until long after the
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`close of discovery and on the eve of trial to disclose allegedly relevant and non-cumulative
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`witnesses is harmful and without substantial justification.” Ollier v. Sweetwater Union High
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`School District, 267 F.R.D. 339, 344 (S.D. Cal. 2010).
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`Evidence preclusion under Rule 37 is not dependent on a finding of willfulness or bad
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`faith. Hoffman, supra at 1180; Empresa Cubana Del Tabaco v. Culbro Corporation, 213 F.R.D.
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`151, 159 (S.D.N.Y., 2003). The Court of Appeals in Hoffman explained:
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`[W]e reject the notion that the district court was required to make a finding of
`willfulness or bad faith to exclude the damages evidence. To the contrary, the
`portion of Rule 37 relied on by the district court has been described as “a self-
`executing, automatic sanction to provide a strong inducement for disclosure of
`material.” Yeti, 259 F.3d at 1106 (citation, alterations and internal quotation
`marks omitted). The implementation of the sanction is appropriate “even
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`RESPONDENT’S MOTION TO PRECLUDE PETITIONER’S
`TRIAL WITNESSES
`Cancellation No. 92053659
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`4
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`when a litigant's entire cause of action . . . [will be] precluded.” Id. (citation
`omitted).
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`Hoffman v. Constr. Protective Servs., 541 F.3d 1175, 1180 (9th Cir. Cal. 2008)
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`Petitioner had ample time and opportunity during the discovery phase of this proceeding
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`to disclose its witnesses. By failing to disclose the witnesses until service of its Pretrial
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`Disclosures, Petitioner effectively denied Respondent the right to depose each of them. See
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`Ollier, supra, at 344 (“ ... plaintiffs should have been able to depose these critical witnesses as
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`they became known to defendants, which was months prior to the actual disclosure”.)
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`Here, Petitioner served its Initial Disclosures pursuant to F.R.C.P. Rule 26 on June 2,
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`2011. (Passarelli Decl., para 2, Exh. A) Yet, Petitioner did not disclose May Lin DeHaan, Judy
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`Brooks, Thomas J.R. McDowell, Andrew Tan and Craig Giles as witnesses or identify any of the
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`topics on which they are purportedly knowledgeable until July 1, 2013, on the eve of trial and
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`more than a year after discovery closed in this proceeding. Moreover, the exhibits served by
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`Petitioner in this proceeding on July 25, 2013, confirm that Petitioner should have disclosed
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`these witnesses at least as early as the date on which Petitioner reasonably had knowledge of the
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`discoverable nature these individuals, i.e., as of the date on which Petitioner served its initial
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`disclosures. Passarelli Decl., paras. 8 and 9, Exhs. C and D.3 Petitioner has provided no
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`explanation as to why it did not provide the required disclosures for these witnesses prior to July
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`1, 2013.
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`3 Mr. Tan appears to be an employee of Petitioner, of whom Petitioner presumably had knowledge. Craig
`Giles was never disclosed or otherwise referenced by Petitioner in this proceeding during discovery.
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`RESPONDENT’S MOTION TO PRECLUDE PETITIONER’S
`TRIAL WITNESSES
`Cancellation No. 92053659
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`5
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`Petitioner’s failure to timely disclose May Lin DeHaan, Judy Brooks, Thomas J.R.
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`McDowell, Andrew Tan and Craig Giles as witnesses has, and will continue to seriously
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`prejudice Respondent.
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`First, Petitioner’s untimely disclosure of these witnesses and topics has precluded
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`Petitioner from conducting any discovery directed to these witnesses with respect to the specific
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`facts and issues that Petitioner wishes to elicit from them during trial testimony. This prejudice is
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`aggravated by the fact that Petitioner has indicated that these witnesses will testify on the
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`following topics that largely have no bearing on Respondent’s registration subject to the Petition
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`to Cancel, nor on Petitioner’s claims in this cancellation proceeding:4
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`(a)
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`Andrew Tan – the use of Petitioner’s Mark, dates of first use of the
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`
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`Mark and the Petitioner’s website www.iproperty.ca;
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`(b)
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`Thomas J.R. McDowell – Petitioner’s use of the Mark, dates of use of the Mark,
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`goodwill associated with the Mark, channels of trade of the Mark, consumer
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`recognition of the Petitioner’s Mark as a source identifier for Petitioner’s services,
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`advertising, promotion and marketing of the Mark and the services offered under
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`the Mark and Petitioner’s website www.iproperty.ca;
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`(c)
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`Craig Giles - use of the Mark, dates of use of the Mark, channels of trade of the
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`Mark, advertising, promotion and marketing of the Mark and the services offered
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`under the Mark, and website www.iproperty.ca;
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`(a)
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`Judy Brooks – use of the Mark, dates of use of the Mark, goodwill associated with
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`the Mark, channels of trade of the Mark, consumer recognition of the Petitioner's
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`4 The noticed topics largely consist of irrelevant subject matter, i.e. Petitioner’s “Mark” (defined as
`IPROPERTY).
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`RESPONDENT’S MOTION TO PRECLUDE PETITIONER’S
`TRIAL WITNESSES
`Cancellation No. 92053659
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`6
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`Mark as a source identifier for Petitioner's services, advertising, promotion and
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`marketing of the Mark and the services offered under the Mark, and website
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`www.iproperty.ca.
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`Moreover, had Petitioner timely disclosed these witnesses on the topics it has now
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`identified, it may have affected Respondent’s overall trial strategy, including possible retention
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`and designation of expert witnesses.
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`Finally, Respondent is being further prejudiced by virtue of the fact that Petitioner insists
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`on conducting depositions on written questions. This will severely impair Respondent’s ability
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`to effectively cross-examine the witnesses. See, Century 21 Real Estate Corp. v. Century Life of
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`America, 15 U.S.P.Q. 2d 1079 (1990). Among others, Respondent will be required to submit its
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`cross-examination questions prior to receiving the witnesses’ responses to the direct questions,
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`and Respondent will not be able to ask pertinent and appropriate follow up cross-examination
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`questions.
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`Accordingly, under the authorities cited above, Petitioner should be precluded from using
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`its designated witnesses at the trial in this proceeding, and its Pretrial Disclosures should be
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`stricken accordingly to remove the late-disclosed witnesses.
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`B.
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`Petitioner’s Notices of Testimonial Depositions Should Be Quashed As
`Facially Defective.
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`Petitioner’s Notices of Testimonial Depositions are facially defective and should each be
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`quashed, as they do not contain the information required under the Board Rules of Procedure.
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`37 CFR §2.123 states in pertinent part:
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`(c)
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`Notice of examination of witnesses. Before the depositions of
`witnesses shall be taken by a party, due notice in writing shall be given
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`RESPONDENT’S MOTION TO PRECLUDE PETITIONER’S
`TRIAL WITNESSES
`Cancellation No. 92053659
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`7
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`to the opposing party or parties, as provided in § 2.119(b), of the time
`when and place where the depositions will be taken, of the cause or
`matter in which they are to be used, and the name and address of
`each witness to be examined . . . Depositions may be noticed for
`any reasonable time and place in the United States. (Emphasis
`added.) 37 CFR §2.123(c).
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`Pursuant to Trademark Rules of Practice and 37 CFR §2.124:
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` A
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` party desiring to take a testimonial deposition upon written
`questions shall serve notice thereof upon each adverse party within
`ten days from the opening date of the testimony period of the party
`who serves the notice. 37 CFR §2.124 (b)(1)
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`Every notice given under the provisions of paragraph (b) of this
`section shall be accompanied by the name or descriptive title of the
`officer before whom the deposition is to be taken. 37 CFR §2.124(c)
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`
`
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`Petitioner’s Notices of Testimonial Depositions are devoid of any indication of a time,
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`location or date when the deposition is to be taken, nor is any description provided of an officer
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`before whom the deposition will be taken. Petitioner’s Notices are therefore improper under the
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`Trademark Rules of Practice and should be quashed.
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`Furthermore, 37 CFR § 2.124(b)(1) states in pertinent part: “A party desiring to take a
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`testimonial deposition upon written questions shall serve notice thereof upon each adverse party
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`within ten days from the opening date of the testimony period of the party who serves the
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`notice.” (Emphasis added.) Petitioner’s testimony period in this proceeding opened on July 16,
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`2013. The Notices of Testimonial Deposition served by Petitioner on July 25, 2013 are not valid
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`notices served within ten days of the opening of the testimony period. Petitioner therefore
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`altogether failed to serve any valid Notice of Testimonial Deposition in this proceeding within
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`the required window for filing such notice pursuant to 37 CFR § 2.124(b)(1).
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`RESPONDENT’S MOTION TO PRECLUDE PETITIONER’S
`TRIAL WITNESSES
`Cancellation No. 92053659
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`8
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`As such, the referenced notices are gravely defective and Petitioner’s noticed testimonial
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`depositions should not be allowed go forward, but should instead be quashed and said testimony
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`precluded by the Board.
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`III. CONCLUSION
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`For the foregoing reasons, Respondent respectfully requests that the Board grant the
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`present Motion, and in so doing: (1) strike Petitioner’s Pretrial Disclosures, (2) quash Petitioner’s
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`Notices of Testimonial Deposition, and (3) preclude the testimony of Petitioner’s witnesses.
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`Respectfully submitted,
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`LARIVIERE, GRUBMAN & PAYNE, LLP
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`Dated: August 13, 2013
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`
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`By /s/ Christopher J. Passarelli
`Christopher J. Passarelli
`19 Upper Ragsdale Drive, Suite 200
`P.O. Box 3140
`Monterey, CA 93942-3140
`Telephone: 831-649-8800
`Attorneys for Respondent
`LaRiviere, Grubman & Payne, LLP
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`RESPONDENT’S MOTION TO PRECLUDE PETITIONER’S
`TRIAL WITNESSES
`Cancellation No. 92053659
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`9
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`CERTIFICATE OF SERVICE
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`I, Tabatha Morgan, paralegal to Christopher J. Passarelli of LARIVIERE, GRUBMAN &
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`PAYNE, LLP, attorneys for Respondent, hereby certify that a true and complete copy of the
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`foregoing
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`RESPONDENT’S MOTION TO STRIKE PETITIONER’S PRETRIAL DISCLOSURES,
`QUASH NOTICES OF TESTIMONIAL DEPOSITIONS AND PRECLUDE TESTIMONY
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`was served on the Petitioner’s attorney of record on August 13, 2013:
`
`
`
`
`
`Gina M. Lupino
`Dean Palmer
`Dean Palmer IP Law IProperty Inc.
`Box 32, Suite 950
`609 W Hastings Street
`Vancouver, BC V6B 4W4
`Canada
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`via postage prepaid Federal Express mail
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`
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`Executed on August 13, 2013 at Monterey, California.
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`
`
`_________________________________
`Tabatha Morgan
` Paralegal
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`RESPONDENT’S MOTION TO PRECLUDE PETITIONER’S
`TRIAL WITNESSES
`Cancellation No. 92053659
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`10
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`
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`Date of Filing: August 13, 2013
`I hereby certify that this paper or fee is being electronically filed with the United States Patent and Trademark Office on the date
`indicated above.
`Typed or Printed Name of Person Electronically Filing Paper or Fee: Tabatha Morgan
`Signature: ________________________________________
`
`
`
`IN THE
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`IPROPERTY, INC.,
`
`
`Petitioner,
`
`
`vs.
`
`LARIVIERE, GRUBMAN & PAYNE, LLP,
`
`
`Respondent.
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`
`
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`I, Christopher J. Passarelli, declare:
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`TRADEMARK: IPROPERTY
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`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
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`Cancellation No. 92053659
`Registration No. 3,066,544
`
`DECLARATION OF CHRISTOPHER J.
`PASSARELLI IN SUPPORT OF
`RESPONDENT’S MOTION TO STRIKE
`PETITIONER’S PRETRIAL
`DISCLOSURES, QUASH NOTICES OF
`TESTIMONIAL DEPOSITIONS AND
`PRECLUDE TESTIMONY
`
`1.
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`I am an attorney duly licensed in the State of California. Our firm and I are the
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`attorneys of record for Respondent LARIVIERE, GRUBMAN & PAYNE, (hereinafter “LGP” or
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`“Respondent”), in this cancellation proceeding. I have personal knowledge of the following
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`facts and could competently testify thereto.
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`2.
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`On or about June 2, 2011, Petitioner served its initial disclosure on Respondent
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`disclosing Dean Palmer as the only witness/person to have any information relating to the instant
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`IPROPERTY cancellation proceeding. Attached hereto as Exhibit A is a true and correct copy of
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`Petitioner’s Initial Disclosures filed on June 2, 2011.
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`
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`DECLARATION OF CHRISTOPHER J. PASSARELLI
`Cancellation No. 92053659
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`1
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`3.
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`Petitioner did not at any time during the discovery period in this proceeding
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`supplement its disclosure or otherwise disclose that it may use at trial any other witness.
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`4.
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`On or about July 1, 2013, Petitioner served its Pretrial Disclosures, naming five
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`additional witnesses for the very first time: May Lin Dehaan, Judy Brooks, Thomas J.R.
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`McDowell, Andrew Tan and Craig Giles.
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`5.
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`On or about July 25, 2013, Petitioner served a Notice of Testimonial Deposition
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`upon Written Questions on Respondent for each of the witnesses set forth in its Pretrial
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`Disclosures.
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`6.
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`Attached hereto as Exhibit B are true and correct copies of deposition notices for
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`Dean Palmer, Andrew Tan, Judy Brooks, May Lin Dehaan, Craig Giles, and Thomas J.R.
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`McDowell.
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`7.
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`On December 9, 2011, Petitioner filed its Motion to Amend. In its brief in support
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`of that Motion, Petitioner indicated an awareness of Ms. DeHaan in connection with
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`”information and evidence” obtained by Petitioner, by its own admission, sometime “[a]fter
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`filing the Petition” but presumably at a time before its December 9, 2011 filing.
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`8.
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`Attached hereto as Exhibit C is a true and correct copy of Petitioner’s Exhibit 62
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`which is a letter addressed to McDowell dated July 7, 2000.
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`9.
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`Attached hereto as Exhibit D is a true and correct copy of Petitioner’s Exhibit 66
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`which is a letter addressed to Judy Brooks dated July 20, 2000.
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`10.
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`Attached hereto as Exhibit E is a true and correct copy of an email from
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`Respondent’s counsel to Petitioner’s counsel dated August 9, 2013 in which Respondent’s
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`
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`DECLARATION OF CHRISTOPHER J. PASSARELLI
`Cancellation No. 92053659
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`2
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`counsel made the reasonable proposal to resolve the dispute over the noticed depositions by
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`offering not to file the instant motion if Petitioner would agree to withdraw its defective Notices
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`of Testimonial Deposition and amend its Pretrial Disclosures accordingly.
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`11.
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`As of August 13, 2013, the date of this filing, Petitioner has not agreed to
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`withdraw its defective Notices of Testimonial Deposition or amend its Pretrial Disclosures.
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`I declare under penalty of perjury that the foregoing is true and correct. Executed this
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`13th day of August 2013, in Napa, California.
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`
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`Dated: August 13, 2013
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`
`
` /s/ Christopher J. Passarelli
`Christopher J. Passarelli
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`DECLARATION OF CHRISTOPHER J. PASSARELLI
`Cancellation No. 92053659
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`3
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`Exhibit A
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`Exhibit A
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding No.
`In re Registration No.:
`Mark:
`
`92,053,659
`3,066,544
`IPROPERTY
`
`Date Registered:
`
`March 7, 2006
`
`IPROPERTY INC.
`
`Petitioner
`
`V.
`
`LARIVIERE, GRUBMAN &
`PAYNE LLP
`
`Applicant
`
`\/\/\/\y\/\./\/\/\./\./\/\/
`
`INITIAL DISCLOSURE
`
`PERSONS LIKELY TO HAVE DISCOVERABLE INFORMATION IN SUPPORT OF
`OPPOSITION
`
`The following person is likely to have discoverable information in support of the
`opposition:
`
`‘I.
`
`Name:
`
`Dean A. Palmer
`
`Position:
`Address:
`
`Principal, |Property Inc.
`Box 32 - Suite 950, 609 West Hastings Street
`Vancouver, BC V6B 4W4 Canada
`
`Tel. no.:
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`(604) 677-7727
`
`Discoverable information expected to be provided:
`
`Information respecting the Petitioner, its trademark (and its rights thereto),
`the services associated with the trademark, advertising and promotion of
`those services, and information relating to the Applicant, its services and
`advertising related to same
`
`

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`DOCUMENTS AND OTHER ITEMS IN SUPPORT OF OPPOSITION
`
`The following documents and electronically-stored information will be used to support
`the Petitioner's cancellation proceeding:
`
`DOCUMENTS:
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`big
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`Description
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`1.
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`Documents evidencing use of Petitioner's IPROPERTY mark in Canada and the
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`U.S.
`
`a.
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`b.
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`Incorporation records of lProperty Inc. See Exhibit A.
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`Documents evidencing use of www.iproperty.ca domain name on or about
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`November 14, 2000. See Exhibit B.
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`Canadian trademark registration records for Petitioner's IPROPERTY
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`mark stating use as early as December 7, 2000. See Exhibit C.
`
`Correspondence containing Petitioner's IPROPERTY mark, which
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`Petitioner sent to a person in the U.S. on or about November 2001. The
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`recipient's name and other identification information is redacted to
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`preserve client confidentiality. See Exhibit D.
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`Screen prints of Petitioner's website www.iproperty.ca showing
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`Petitioner's use of its IPROPERTY mark on or about May 9, 2001. See
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`Exhibit E.
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`Applicant's application to register the IPROPERTY mark with the U.S. Patent and
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`Trademark Office filed in or around May 21, 2003. See Exhibit F.
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`Screen prints of Respondent's website wvvw.|gpat|aw.com showing Respondent's
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`use of the IPROPERTY mark on its website on or about May 25, 2009, May 26,
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`2009, and May 27, 2009. See Exhibit G.
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`

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`4.
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`Screen prints of Respondent’s website wvvw.|gpat|aw.com, as it appeared on or
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`about June 1, 2011, showing Respondent’s abandonment or non-use of the
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`IPROPERTY mark. See Exhibit H.
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`5.
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`Copy of a declaration signed by David LaRiviere pursuant to 18 U.S.C. § 1001.
`
`See Exhibit I.
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`ELECTRONICALLY-STORED INFORMATION
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`6.
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`Electronic documents evidencing use of Petitioner's IPROPERTY mark in
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`Canada and the U.S., including but not limited to advertising and marketing
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`records.
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`TANGIBLE ITEMS
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`7.
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`Items evidencing use of Petitioner's IPROPERTY mark in Canada and the U.S.
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`including but not limited to advertising materials, marketing materials, and
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`business cards.
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`DATED this 2”“ day of June, 2011.
`
`|Property Inc.
`
`Dean Palmer
`Counsel for Petitioner
`
`Canadian Trade-mark Attorney
`CIPO Trade-Mark Registration No. 10581
`DEAN PALMER IP LAW/IPROPERTY INC.
`Box 32. Suite 950
`
`609 West Hastings Street
`Vancouver, B.C. V6B 4W4
`Canada
`Tel.
`604.677.7727
`Fax
`604.677.7728
`
`Email: info@iproperty.ca
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`

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`Exhibit A
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`DUPLICATE
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`Number: BC0736435
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`CERTIFICATE
`
`OF
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`INCORPORATION
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`BUSINESS CORPORATIONS ACT
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`I Hereby Certify that IPROPERTY INC. was incorporated under the Business Corporations Act
`on September 29, 2005 at 05:15 PM Pacific Time.
`
`Issued under my hand at Victoria, British Columbia
`
`Canada
`
`RON TOWNSHEND
`
`Registrar of Companies
`Province of British Columbia
`
`On September 29, 2005
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`6;:@
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`Exhibit B
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`

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`(job:664721) Domain application accepted
`
`Subject: (job:664721) Domain application accepted
`Date: Tue, 14 Nov 2000 16:17:07 -0500 (EST)
`From: CIRA - ACEI <caprd@cira.ca>
`Reply—To: turcotte@canarie.ca
`To: dean_palmer@te1us.net
`
`—----BEGIN PGP SIGNED MESSAGE--—--
`Hash: SHA1
`
`AS PER YOUR REGISTRAR'S REQUEST, baremetal.com inc,
`FOR A REGISTRATION IN THE .CA DOMAIN,
`YOU MUST READ AND FOLLOW THE INSTRUCTIONS CONTAINED IN
`THIS EMAIL TO COMPLETE THE REGISTRATION.
`User account Number: 91366
`Private Password: ypfp35600328
`Web site to complete registration: http://cira3.cira.ca/cira/detenteurs
`If you have problems please read info at:
`http://grive.cira.ca/en/registrant.html
`
`iproperty.ca
`Requested Domain:
`Registrant: Dean Palmer
`Registrar: baremetal.com inc
`Reference no: 132644
`This email confirms that you have requested,
`the registration of the domain name
`the Applicant,
`iproperty.ca
`In order to complete the registration of
`within the CIRA Registry.
`this domain name, you must visit the following CIRA web site
`http://cira3.cira.ca/cira/detenteurs
`and complete the Registration procedure before the expiry time
`2000/11/21, 15:12:41 — Ottawa time. Please note that the requested domain name
`will not be
`
`as or on behalf of
`
`(7 day) period.
`you must contact your
`
`registered until the Registration procedure has been completed.
`The domain name iproperty.ca
`has been reserved for the Applicant for the 168 hour
`To request an additional 168 hour
`(7 day) extension,
`Registrar.
`The Registrar may request an extension of time from CIRA. Only one such
`extension may be granted.
`CIRA reserves the right to refuse to grant an
`extension in its discretion.
`If an extension is granted by CIRA, CIRA will
`advise the Registrar and the Applicant by email. Absent any such notice
`by CIRA, no extension is granted and no reliance can be placed by the
`Applicant or a Registrar on an expected extension.
`Any Registration of a new domain name effected prior to December 1, 2000 on the
`basis of a request made to CIRA by a Registrar on or after November 8, 2000
`will be made in the registry currently operated by the University of British
`Columbia (UBC Registry).
`If the Registration is a re—registration of a domain
`name that was already in the UBC Registry, it will be maintained there until
`December 1, 2000.
`In either case, when CIRA takes over operation of the .ca
`registry on December 1, 2000,
`the registration will automatically be registered
`in the CIRA Registry and activated without any further action by you.
`The date
`of your CIRA registration will be December 1, 2000.
`The failure to complete the Registration procedure within the 168 hour
`period, or any extended period which may be granted, will result in the
`Request for Registration submitted by your Registrar being cancelled and the
`requested domain being made available to others for registration.
`To begin the Registration procedure, please visit
`http://cira3.cira.ca/cira/detenteurs
`and use the User Account and Private Password provided below.
`By accessing this site, you represent and agree on your own behalf and
`
`(7 day)
`
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`httpsz//swwwbarcmetnl.com/ca_ I‘ ‘nains/R3de0c] d73e98902025e86eb4b4f60187/single.
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`4
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`
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`Domain Registration - Payment Form
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`
`
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`Thank You!
`
`Invoice: 13691
`Billed to: z_1535
`And accessable at http://baremetal.com/payments/ with the above info,
`has been marked paid as per the details below. THANK YOU!
`
`==========
`
`:.=========
`
`Baremeta|.com Inc
`4255 Shelboume St
`Victoria, BC V8N 3G1
`Canada
`
`www.baremetal.com
`
`TYPE: Completion
`
`ACCT:
`
`\/isa
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`$42.75 CAD
`
`CARD HOLDER: Palmer, Dean Expense Account
`DATE/TIME : 13 Nov0O 11:23:31
`REFERENCE #1 66012475 0010010880 M
`AUTHOR. # : 013034
`
`027 Approved - Thank You 01
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`GST # B6348T328 __
`
`Do another domain
`
`Visit our website
`
`
`
` u l
`
`LLI.liJ.ilJ |J.LLU]1lI.|.ll!.l.JJ.1.l.LLlJJ.J.l.LLL|.LLJ.l.l1|.l.|.|.IJ.l
`
`Please E-mail domain change requests to us until we have the maintenance forms online.
`
`lofl
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`14/11/00 11:23 AM
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`

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`Exhibit C
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`

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`CIPO — Can.adian Trade-marks Database
`
`http://www.cipo.ic.gP "1/app/opic-cipo/trdmrks/srch/vwTrdmrk.doj
`
`-
`
`Canclian lntellectul
`Pmperty Office
`An Agency of
`Industry Canada
`
`Gffice til: I propriété
`intellectuelle du Canada
`Un organisrne
`d'In-zlustrie Canada
`
`Home > Canadian Trade-marks Database> Basic Search
`
`:9 Search Page
`
`CANADIAN TRADE-MARK DATA
`
`.
`
`‘ "
`
`*** Note Data on trade-marks is shown in the official language in which it was submitted.
`
`The database was last updated on: 2011-05-31
`
`APPLI ATI N
`1084645
`
`MBER:
`
`R§GI§!RATIQN NUMBER:
`TMA617280
`
`REGISTERED
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`2000-12-07
`
`2000-12-08
`
`2004-03-24
`2004-08-23
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`2003-03-28
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`STATUS:
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`FILED:
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`FORMALIZED:
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`ADVERTI§ED:
`REGISTERED:
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`INACIIXAIEQ:
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`REGISTRANT:
`Dean Palmer
`
`2715 St. George Street
`Port Moody,
`V3H 2H1
`BRITISH COLUMBIA
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`CURRENT OWNER:
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`IProperty Inc.
`Suite 950
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`609 West Hastings Street
`Vancouver
`V6B 4W4
`BRITISH COLUMBIA
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`TRADE-MARK:
`
`iproperty
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`INDEX HEADINGS:
`IPROPERTY
`
`PROPERTY, I
`
`SERVICES:
`
`(1) Legal services; patent and trademark agency services; educational services in the field of law,
`the internet and technology provided via the Internet, electronic media and in-class; educational
`services, namely providing courses of instruction at the college and university level; licensing of
`courses of instruction and educational materials; providing a Web site in the field of law and
`technology.
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`CIPO — Canadian Trade-marks Database
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`http://www.cipo.ic.;'
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`‘a/app/opic-cipo/trdmrks/srch/v