Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA457467
`ESTTA Tracking number:
`02/20/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92054551
`Plaintiff
`Andrey Pinsky
`ANDREY PINSKY
`PINSKY LAW
`45 SHEPPARD AVE EAST SUITE 900
`TORONTO, ON M2N 5W9
`CANADA
`andrey@pinskylaw.ca
`Motion to Compel Discovery
`Andrey Pinsky
`andrey@pinskylaw.ca
`/Andrey Pinsky/
`02/20/2012
`(Petitioner's Motion to Compell Discovery PART 1).pdf ( 81 pages )(3400388
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA457467
`ESTTA Tracking number:
`02/20/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92054551
`Plaintiff
`Andrey Pinsky
`ANDREY PINSKY
`PINSKY LAW
`45 SHEPPARD AVE EAST SUITE 900
`TORONTO, ON M2N 5W9
`CANADA
`andrey@pinskylaw.ca
`Motion to Compel Discovery
`Andrey Pinsky
`andrey@pinskylaw.ca
`/Andrey Pinsky/
`02/20/2012
`(Petitioner's Motion to Compell Discovery PART 1).pdf ( 81 pages )(3400388
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter ofmark Registration No. 3981394
`For the mark:
`KONCEPT
`
`Date of First Use:
`June 12, 2010
`Date of Registration: June 21, 2011
`
`ANDREY PINSKY,
`
`Petitioner,
`
`V.
`
`DOUGLAS BURDA
`
`Registrant.
`
`Cancellation No. 92054551
`
`Petitioner, Andrey Pinsky, files his motion to Compel Registrant
`
`to Comply with
`
`Discovery Requests and his motion to Remove Interlocutory Attorney Elizabeth A.
`
`Dunn. Petitioner's motion is divided in to three PDF files due to a number of exhibits
`
`submitted with these motions. The first PDF file has pages 1 through 80. The second PDF
`
`file has pages 81 through 160. The third PDF file has pages 161 through 212. Page
`
`numbers are marked in the top right corner of each page.
`
`February 20, 2012
`
`Respectfully submitted
`
`Andrey Pinsky
`Pinsky Law
`Suite 900
`
`45 Sheppard Avenue East
`Toronto, Ontario, M2N 5X7
`CANADA
`
`Phone: (416) 221-2600
`Fax:
`(416) 221-2640
`andrey@pinskylaw.ca
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of mark Registration No. 3981394
`For the mark:
`KONCEPT
`
`Date of First Use:
`
`June 12, 2010
`
`Date of Registration: June 21, 2011
`
`ANDREY PINSKY,
`
`Petitioner,
`
`V.
`
`DOUGLAS BURDA
`
`Registrant.
`
`Cancellation No. 92054551
`
`PETITIONER ‘S MOTION TO COMPEL REGISTRANT
`
`TO COMPLY WITH DISCOVERY RE UESTS
`
`AND
`
`PETITIONER'S MOTION TO REMOVE
`
`INTERLOCUTORY ATTORNEY ELIZABETH A. DUNN
`
`I.
`
`BACKGROUND
`
`1. Registrant in this cancellation proceeding is Mr. Douglas Burda, a sole practicing
`
`lawyer called to the Nevada Bar and residing in Las Vegas. It appears that Registrant
`
`has no formal office and carries out his law practice out of his apartment using a
`
`cellular
`
`telephone
`
`as
`
`a main telephone of his office. Registrant's website
`
`www.konceptllc.com provides no formal address and only provides Registrant's
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`cellular phone number.
`
`Page 1 of 15
`
`
`
`2.
`
`In 201 1, Registrant fraudulently registered two trademarks in his own name (Exhibit
`
`1, paragraphs 11 — 14). The trademarks were KONCEPT and PANDA. Both
`
`trademarks were in use by other entities long before the dates of first use Registrant
`
`declared in his trademark applications (Exhibit 1, paragraphs 11 — 14). Cancellation
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`of the registration for the trademark KONCEPT is subject of this proceeding. Exhibit
`
`1 at paragraphs 11 — 14 provides sworn evidence of prior use of the trademark
`
`PANDA by the law firm Panda Law. Panda Law used trademark PANDA at least
`
`seven months prior to the date of first use Registrant declared in his trademark
`
`application for the trademark PANDA.
`
`3. From commencement of
`
`this
`
`cancellation proceeding, Registrant
`
`employed
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`questionable conduct to evade service of Petitioner's Petition to Cancel. Exhibit 2
`
`provides copy of email communications that
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`took place between Petitioner and
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`Registrant immediately before service of Petitioner's Petition to Cancel.
`
`4. Petitioner realized that Registrant intended to employ his questionable conduct as
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`main defence in this proceeding and on November 1, 2011, requested Trademark
`
`Trial
`
`and Appeal Board (TTAB)
`
`interlocutory attorney Elizabeth A. Dunn's
`
`participation in Discovery Conference. Registrant on a number of occasions falsely
`
`alleged in his submissions to the TTAB that he never received a copy of the email
`
`sent to him by Petitioner with a copy of the request for interlocutory attorney Dunn's
`
`participation. Exhibit 3 provides copy of email communications that took place
`
`between Petitioner and Registrant after Registrant received that email and is a proof
`
`that Registrant's submissions to the TTAB were and are false.
`
`Page 2 of l5
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`
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`5.
`
`Information about Registrant's questionable conduct was conveyed to interlocutory
`
`attorney Dunn during the Discovery Conference. Petitioner advised interlocutory
`
`attorney Dunn that his initial attempt to serve Registrant with the Petition to Cancel
`
`was met with Registrant's extreme resistance (Exhibit 2). The USPTO file for the
`
`trademark KONCEPT listed Registrant's address as a PO Box and provided a Gmail
`
`email address. Registrant's website provided no physical address of his law office and
`
`his law firm’s fax number.
`
`Petitioner also advised interlocutory attorney Dunn that because FedEx does not
`
`deliver to PO Box addresses, Petitioner could not serve Petition to Cancel on
`
`Registrant. When Petitioner requested Registrant to provide physical address of his
`
`law office, Registrant
`
`instead of providing the information requested, repeatedly
`
`demanded that Petitioner call to Registrant to negotiate. (Exhibit 2)
`
`Petitioner
`
`further advised interlocutory attorney Dunn that Registrant provided
`
`physical address of his law office only when Petitioner informed Registrant that
`
`Petitioner would be seeking assistance of the Nevada Bar to obtain the location of
`
`Registrant's law office and to serve him with the Petition to Cancel. (Exhibit 2)
`
`Petitioner also advised interlocutory attorney Dunn that Petitioner on September 23,
`
`2011, via email requested Registrant to consent to service of the Petition to Cancel
`
`via email. Petitioner request received no reply from Registrant. Registrant provided
`
`preposterous consent to service via email on September 28, 2011, five days after
`
`Petitioner requested it and two days after Petition to Cancel was delivered to
`
`Registrant via FedEx on September 26, 201 1 (Exhibit 2).
`
`Page 3 of 15
`
`
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`9.
`
`Petitioner further advised interlocutory attorney Dunn that after ignoring Petitioner's
`
`request to consent to email service and after being served via FedEx with the Petition
`
`to Cancel, Registrant had audacity on September 28, 2011, to request Petitioners’
`
`consent to service of documents via email (Exhibit 2).
`
`10.
`
`Dealing with individuals demonstrating questionable conduct is simple - one must
`
`document all instances of such conduct. This is only possible if one communicates
`
`with such individuals in writing. Registrant appreciates the danger of communication
`
`in writing and demonstrates a strong preference to communication by any means that
`
`provide no record of communication. An unbiased and impartial TTAB interlocutory
`
`attorney would see through Registrant's ploys and would order him to communicate
`
`in writing via fax, particularly given the history of repeated requests for such an order
`
`made by Petitioner.
`
`ll.
`
`Despite all the above information about Registrant's questionable conduct, and in fact
`
`contrary to it,
`
`interlocutory attorney Dunn legitimized and endorsed Registrant's
`
`shenanigans by ordering Petitioner to communicate with Registrant via FedEx and
`
`telephone. Attorney Dunn without any clear reasons rejected Petitioner's request for
`
`an order that partiers have to communicate via fax (Exhibit 4, Page 3).
`
`12.
`
`Petitioner and his legal position in this cancellation proceeding was jeopardised by
`
`Registrant's refusal to communicate via fax and by the Order of interlocutory attorney
`
`Dunn in at least three ways and provided Registrant with at least three ways to derail
`
`this cancellation proceeding into litigation of extraneous issues that have nothing to
`
`do with merits of the cancellation.
`
`Page 4 of 15
`
`
`
`l3.
`
`First, Petitioner would have to spend a substantial amount of money to correspond
`
`with Registrant via FedEx while Registrant would be using inferior and slow U.S.
`
`First Class Mail at a fraction of Petitioner's cost. Registrant would be able to escalate
`
`Petitioner's cost even further by failing to provide timely replies to Petitioner
`
`correspondence and forcing Petitioner to send follow up correspondence.
`
`14.
`
`Second, Petitioner would have no proof what documents he delivered to Registrant.
`
`While FedEx provides tracking capabilities, unlike fax communications, FedEx does
`
`not provide proof of what was sent. In other words, if previously Registrant either
`
`ignored Petitioner's emails or falsely alleged that he never received them, now
`
`Registrant could falsely allege that he never received documents sent to him by
`
`Petitioner.
`
`15.
`
`Three, Petitioner would have to communicate with Registrant by telephone the
`
`medium that did not provide reliable proof of what was communicated, by whom, and
`
`when. Registrant could place a call
`
`to Petitioner and then file a motion with the
`
`TTAB with his version of what was said in the conversation. These motions, of
`
`course, would have nothing to do with the merits of this cancellation proceeding.
`
`16.
`
`Therefore,
`
`interlocutory attorney Dunn provided Registrant with three major
`
`opportunities to derail
`
`this cancellation and as evidence below shows Registrant
`
`utilized all three of them. As an experienced attorney, interlocutory attorney Dunn
`
`certainly understood what implications her Order (Exhibit 4, Page 3) would have for
`
`this
`
`cancellation proceeding. However,
`
`interlocutory attorney Dunn despite
`
`Petitioner's repeated protestations made the Order ordering Petitioner to communicate
`
`Page 5 of 15
`
`
`
`6
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`with Registrant via FedEx and telephone. This order clearly assisted Registrant in
`
`derailing this cancellation proceeding.
`
`17.
`
`Following release of interlocutory attorney Dunn's order on December 1, 2011, on
`
`December 7, 2011, Registrant placed a call to Petitioner's office at 22:33 (that is
`
`10:23 pm) and then filed a document with the TTAB stating that Petitioner did not
`
`answer his call (Exhibit 5, Page 2). The document was a transparent attempt to derail
`
`cancellation proceeding in litigation of issues that have nothing to do with the merits
`
`and evidence of this cancellation.
`
`18.
`
`When Petitioner returned Registrant's call the following day, Registrant requested
`
`Petitioner's written consent to allow him to file his Second Amended Answer in
`
`response to the Petition to Cancel. Petitioner advised Registrant that he had to put his
`
`request for a written consent in writing (Exhibit 6). However, Registrant refused to
`
`provide his request for consent
`
`in writing and advised Petitioner that he would
`
`interpret request to put his request in writing as a refusal of his request. Registrant
`
`then filed a motion with the TTAB falsely stating that Petitioner denied Registrant's
`
`request for consent (Exhibit 7, Page 6). The motion also was a transparent attempt to
`
`derail cancellation proceeding in litigation of issues that have nothing to do with the
`
`merits and evidence on which this cancellation is based.
`
`19.
`
`Petitioner on December 5, 2011, requested interlocutory attorney Dunn to reconsider
`
`her Order as far as it was concerned with communications between the parties and to
`
`order to the parties communicate exclusively in writing via fax in order to have a
`
`reliable proof what was sent, by whom, and when (Exhibit 8). On January 5, 2012,
`
`Page 6 of 15
`
`
`
`AA
`
`interlocutory attorney Dunn denied Petitioner's request without dealing with the
`
`issues brought by Petitioner in his request and without providing clear and compelling
`
`reasons why she denies Petitioner's request to order communications between the
`
`parties by fax (Exhibit 9).
`
`20.
`
`Petitioner on December 15, 2011, wrote to Chief Administrative Judge Gerard Rogers
`
`and requested removal of interlocutory attorney Dunn (Exhibit 10). On January 4,
`
`2012, Chief Administrative Judge Gerard Rogers denied Petitioner's request
`
`to
`
`remove interlocutory attorney Dunn (Exhibit 11).
`
`21.
`
`On November 29, 2011, during the Discovery Conference, Registrant and Petitioner
`
`agreed to expend initial disclosures required by Federal Rule of Civil Procedure 26(a)
`
`to include proof of the first date of use of their marks in commerce. As was stated in
`
`the Discovery Conference Summary released on December 1, 2011, "this stipulation
`
`is intended to save both parties time and money but does not replace or prevent
`
`discovery on the issue of first use if either party believes it necessary (Exhibit 4,
`
`Page 7).
`
`22.
`
`Expanded initial disclosures were due on January 1, 2012.
`
`23.
`
`Petitioner on December 29, 2012, via FedEx (tracking number 8496 0365 0238),
`
`served Registrant with Petitioner's expanded initial disclosures (Exhibit 12) and
`
`(Exhibit 13).
`
`24.
`
`Petitioner on December 29, 2011, via FedEx (tracking number 8496 0365 0238),
`
`served Registrant with his declaration dated December 29, 2011 (Exhibit 1), along
`
`Page 7 of 15
`
`
`
`with inter alia declarations and affidavits of sixteen (16) United States of America
`
`patent and trademark attorneys as evidence in support of Petitioner's Petition to
`
`Cancel Registrant's trademark registration for the trademark KONCEPT (Exhibit 1)
`
`and (Exhibit 14).
`
`25.
`
`Petitioner on December 29, 2011, in a letter delivered via FedEx (tracking number
`
`8496 0365 0238),
`
`along with Petitioner's
`
`initial disclosures and Petitioner's
`
`declaration dated December 29, 2011, requested Registrant to produce documents in
`
`support of Registrant's defences to Petitioner's Petition to Cancel (Exhibit 15) and
`
`(Exhibit 16). Registrant provided no reply to the letter and failed to date to produce
`
`any documents.
`
`26.
`
`Registrant on January 5, 2012, placed a telephone call to Petitioner and alleged that
`
`he did not receive Petitioner's initial disclosures. Petitioner on January 6, 2012, via
`
`FedEx (tracking number 8496 0365 0227), second time served Registrant with
`
`Petitioner's expanded initial disclosures (Exhibit 12) and (Exhibit 17), Petitioner's
`
`declaration dated December 29, 2011 (Exhibit 1) and (Exhibit 18), along with his
`
`first (Exhibit 15) and (Exhibit 19) and his second letter (Exhibit 20) and (Exhibit
`
`21)
`
`requesting production of documents
`
`in support of Registrant's defences.
`
`Registrant provided no reply to Petitioner's letters and to date failed to produce any
`
`documents.
`
`27.
`
`Registrant on January 10, 2012, served Petitioner with Registrant's initial disclosures
`
`(Exhibit 22). Registrant's initial disclosures provided no documents in support of his
`
`Page 8 of 15
`
`
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`28.
`
`29.
`
`defences. The only document served with Registrant's disclosures was publicly
`
`available registration certificate for the Registrant's trademark KONCEPT.
`
`Petitioner on January 16, 2012,
`
`served Registrant with supplementary initial
`
`disclosures (Exhibit 23) .
`
`Petitioner on January 16, 2012, via a letter delivered with the supplementary initial
`
`disclosures,
`
`third time requested Registrant to produce documents in support of
`
`Registrant's defences (Exhibit 24). Registrant provided no reply to Petitioner's letter
`
`and failed to date to produce any documents.
`
`30.
`
`Petitioner on February 13, 2012, via a letter and via ESTTA, fourth time requested
`
`Registrant to produce documents in support of Registrant's defences (Exhibit 25).
`
`Registrant provided no reply to the letter and failed to produce any documents.
`
`31.
`
`Registrant was informed in advance by Petitioner that failure to provide disclosure
`
`will
`
`lead to a motion to compel disclosure and such a motion would be filed on
`
`February 16, 2012. Having failed to produce the documents requested by Petitioner
`
`four (4) times, Registrant on February 15, 2012, filed a motion for Default Judgment
`
`against Petitioner.
`
`(Petitioner will provide a separate opposition to Registrant's
`
`motion in a due course). While Registrant's motion is baseless and preposterous as the
`
`only one who is in default
`
`is Registrant, Petitioner is certain that
`
`interlocutory
`
`attorney Dunn will
`
`rubberstamp Registrant's motion and given the history of
`
`decisions blatantly made in favour of Registrant, she most
`
`likely will grant the
`
`remedy requested by Registrant.
`
`Page 9 of 15
`
`
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`32.
`
`In summary, by the date of this motion, Petitioner complied with TTAB's order dated
`
`December l, 2011 (Exhibit 4), and made expanded initial discourses. With his
`
`expanded initial disclosures, Petitioner also provided numerous documents including
`
`inter alia declarations and affidavits of sixteen (16) United States of America patent
`
`and trademark attorneys
`
`that
`
`testified in support of Petitioner's
`
`request
`
`for
`
`cancellation of Registrant's trademark KONCEPT.
`
`33.
`
`In summary, by the date of this motion, Registrant made worthless initial disclosures
`
`(Exhibit 22) and refused to make production of any documents requested by
`
`Petitioner four (4) times in his discovery requests. Registrant simply ignored all four
`
`(4) of Petitioner's discovery requests and with assistance of the interlocutory attorney
`
`Dunn turned this cancellation in to a farce whereby, and as Petitioner pointed in his
`
`correspondence to the TTAB on numerous occasions, Registrant through his own
`
`questionable conduct creates issues that sidetrack and derail consideration of the
`
`cancellation on its merits.
`
`34.
`
`Petitioner has made a good faith effort, by correspondence, to resolve with Registrant
`
`the issues presented in this motion but the parties were unable to resolve their
`
`differences as Registrant failed to provide replies to all four (4) Petitioner's discovery
`
`requests and also failed to provide any of the documents listed in Petitioner's four (4)
`
`discovery requests.
`
`II.
`
`LAW
`
`13.
`
`37 CFR § 2.]20(a)(3) inter alia states "... Responses to interrogatories, requests for
`
`production of documents and things, and requests for admission must be served
`
`Page 10 ofl5
`
`
`
`/M
`
`within thirty days from the date of service of such discovery requests. Responses to
`
`interrogatories, requests for production of documents and things, and requests for
`
`admission must be served within thirty days after the date of service of the request for
`
`discovery. If service of the request for discovery is made by f1rst—class mail, “Express
`
`Mail,” or overnight courier, the date of mailing or of delivery to the overnight courier
`
`is considered to be the date of service, and five extra days are allowed for responding
`
`to the request."
`
`14.
`
`TBMP § 401.06 which deals with Other Requirements Under the Board’s Disclosure
`
`Regime inter alia states: "The Board expects parties (and their attorneys or other
`
`authorized representatives) to cooperate with one another in the disclosure and
`
`discovery process, and looks with extreme disfavor on those who do not."
`
`III.
`
`ARGUMENT
`
`15.
`
`Petitioner has made a good faith effort, by correspondence, to resolve with Registrant
`
`the issues presented in this motion but
`
`the parties were unable to resolve their
`
`differences as Registrant failed to provide replies to Petitioner's correspondence and
`
`also failed to provide the documents listed in four (4) Petitioner's discovery requests.
`
`16.
`
`Petitioner has written to the TTAB on numerous occasions about questionable
`
`conduct of Registrant and the stall and delay tactics adopted by Registrant since
`
`commencement of this cancellation proceeding with a clear purpose to cause
`
`unnecessary delay and needlessly increase the cost of this cancellation. Copies of
`
`Petitioner's correspondence to the TTAB in respect of these issues are filed as
`
`exhibits with this motion and are also available through the ESTTA.
`
`Page 11 of15
`
`
`
`12/
`
`17. Prior to the Discovery Conference and prior to the orders issued by interlocutory
`
`attorney Dunn (Exhibit 4 and Exhibit 9), Registrant either ignored Petitioner's
`
`emails or
`
`falsely claimed that he did not
`
`receive them. After
`
`the Discovery
`
`Conference and after the orders issued by interlocutory attorney Dunn (Exhibit 4 and
`
`Exhibit 9), Registrant adopted the same tactics in respect of correspondence
`
`delivered by Petitioner via FedEx. Now Registrant either ignores correspondence
`
`delivered by Petitioner via FedEx or claims that he did not receive what was sent by
`
`Petitioner. Registrant acknowledges receipt of only those documents that Petitioner
`
`files via ESTTA.
`
`18. Registrant's questionable conduct and his stall and delay tactics would not be possible
`
`without wilful blindness and blatant support from interlocutory attorney Dunn.
`
`Interlocutory attorney Dunn in the past outright and without any plausible reasons
`
`dismissed all Petitioner's requests for an order directing the parties to communicate in
`
`writing via fax, the mode of communication that provides confirmation what was
`
`sent, by whom, and when. Interlocutory attorney Dunn's refusal to order the parties to
`
`communicate via fax is transparently serving interests of Registrant and allows
`
`Registrant to derail this cancellation proceeding and to cause unnecessary delay in
`
`prosecution of this cancellation while needlessly increasing the cost of this
`
`cancellation.
`
`19. As the result of interlocutory attorney Dunn's wilful blindness to Registrant's
`
`questionable conduct and her blatant support of Registrant's stall and delay tactics
`
`compounded with Registrant's persistent abuse of the cancellation process, the current
`
`Page 12 of 15
`
`
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`cancellation has become compromised and lost even an appearance of legitimacy and
`
`integrity.
`
`20.
`
`Petitioner made discovery requests four (4)
`
`times during the last
`
`two months.
`
`Registrant to date neither provided a reply to any of the four (4) requests, nor
`
`produced any of the documents Petitioner requested. Petitioner does not view
`
`Registrant's failure to comply with Petitioner's discovery requests as an accident,
`
`given the protracted history of questionable conduct and stall and delay tactics
`
`employed by Registrant throughout this proceeding which were and are effectively
`
`endorsed by interlocutory attorney Dunn. Consequently, Petitioner
`
`respectfully
`
`requests the TTAB to make the following orders:
`
`(a) Order removing interlocutory attorney Elizabeth A. Dunn from responsibility
`
`for the current cancellation file;
`
`(b) Order directing the parties to communicate and to serve all documents
`
`exclusively via fax;
`
`(c) Order compelling Registrant
`
`to produce, by way of a declaration or an
`
`affidavit, not
`
`later
`
`than March 15, 2012,
`
`the documents requested by
`
`Petitioner in his discovery requests of December 29, 2011, January 6, 2012,
`
`January 16, 2012, and February 13, 2012;
`
`(d) Order striking with prejudice, and without
`
`right
`
`to file new answers,
`
`Registrant's Answer, First Amended Answer, and Second Amended Answer if
`
`Registrant fails to produce by March 15, 2012, the documents requested by
`
`Page 13 ofl5
`
`
`
`14
`
`Petitioner in his discovery requests of December 29, 2011, January 6, 2012,
`
`January 16, 2012, and February 13, 2012;
`
`(e) Order finding Registrant in default if Registrant fails to produce by March 15,
`
`2012, documents
`
`requested by Petitioner
`
`in his discovery requests of
`
`December 29, 2011, January 6, 2012, January 16, 2012, and February 13,
`
`2012;
`
`(t) Order cancelling Registrant's registration for the trademark Koncept (No.
`
`3981394).
`
`21. Petitioner submits that it is only in this way that the TTAB can effectively deal with
`
`Registrant's questionable conduct and his abuses of the cancellation process.
`
`February 17, 2012
`
`Respectfully submitted
`
`Andrey Pinsky
`Pinsky Law
`Suite 900
`
`45 Sheppard Avenue East
`Toronto, Ontario, M2N 5X7
`CANADA
`
`Phone: (416) 2212600
`Fax:
`(416) 221-2640
`andrey@pinskylaw.ca
`
`Page 14 of 15
`
`
`
`CERTIFICATE OF ELECTRONIC FILING
`
`I hereby certify that a true and complete copy of the foregoing PET1T1ONER’S
`MOTION filed pursuant to the Order of the Trademark Trial and Appeal Board dated
`December 1, 2011 is being electronically transmitted to the Trademark Trial and Appeal
`Board, U.S. Patent and Trademark Office on February 20, 2012.
`
`By
`
`Wwawtg
`
`Andrey Pinsky
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing PETITIONER’S
`MOTION filed pursuant to the Order of the Trademark Trial and Appeal Board dated
`December 1, 2011has been served on Douglas Burda by sending a copy via FedEx on
`February 17, 2012 to:
`
`DOUGLAS BURDA
`
`KONCEPT INNOVATIVE LAW
`
`UNIT 1009
`
`900 LAS VEGAS BOULEVARD SOUTH
`
`LAS VEGAS, NEVADA, 89101
`USA
`
`WW W171
`
`Andrey Pinsky
`
`Page 15 of15
`
`
`
`EXHIBIT 1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of mark Registration No. 3981394
`For the mark:
`KONCEPT
`
`Date of First Use:
`Date of Registration:
`
`June 12, 2010
`June 21, 2011
`
`ANDREY PINSKY,
`
`Petitioner,
`
`V.
`
`DOUGLAS BURDA
`
`Registrant.
`
`Cancellation No. 92054551
`
`DECLARATION OF ANDREY PINSKY
`
`I, Andrey Pinsky, of Toronto, Ontario, Canada, HEREBY DECLARE THAT:
`
`1.
`
`I am the Petitioner in this cancellation proceeding. Therefore, I have knowledge
`
`of matters to which I hereafter depose except where I expressly state that my
`
`knowledge is based on information and belief.
`
`In such circumstances I will
`
`identify the basis of my information and belief.
`
`2.
`
`I am an intellectual property and business lawyer licensed to practice in Ontario,
`
`Canada.
`
`I am admitted to practice before Canadian Intellectual Property Office
`
`and the United States Patent and Trademark Office (USPTO).
`
`I provide my
`
`Page 1 of 9
`
`
`
`intellectual property and business law services to residents of Canada, to residents
`
`of the United States of America, and to international clients.
`
`Since January 27, 2010,
`
`I have been advertising my intellectual property and
`
`business law services in the United States of America via my newsletter titled
`
`CONCEPT LAW. I used the newsletter to demonstrate my expertise in Canadian
`
`intellectual property and business law and to advertise and offer my intellectual
`
`property and business law services to the residents of the United States of
`
`America in association with the trademark CONCEPT LAW.
`
`I have attached to
`
`this Declaration (Exhibit
`
`I
`
`through Exhibit 9) documents that demonstrate
`
`samples of advertisements distributed in association with the
`
`trademark
`
`CONCEPT LAW and that also demonstrate the date of first use (January 27,
`
`2010) of the trademark CONCEPT LAW in the United States of America.
`
`Exhibit 1
`
`Exhibit 2
`
`Exhibit 3
`
`Exhibit 4
`
`Exhibit 5
`
`Copy of the advertisement of legal services distributed in the United
`States of America in January 2010 in association with the trademark
`CONCEPT LAW.
`
`Copy of the advertisement of legal services distributed in the United
`States of America in February 2010 in association with the trademark
`CONCEPT LAW.
`
`Copy of the advertisement of legal services distributed in the United
`States of America in March 2010 in association with the trademark
`CONCEPT LAW.
`
`Copy of the advertisement of legal services distributed in the United
`States of America in April 2010 in association with the trademark
`CONCEPT LAW.
`
`Copy of an announcement email accompanying advertisement of
`legal services in the United States of America in association with the
`
`Page 2 of 9
`
`
`
`M
`
`Exhibit 6
`
`Exhibit 7
`
`Exhibit 8
`
`Exhibit 9
`
`trademark CONCEPT LAW. The email provided a hyperlink back to
`the website www.pinskylaw.ca.
`
`Copy of the page titled News of the website www.pinskylaw.ca
`archived by www.a1‘chive.org and www.waybackmachinecom on
`February 11, 2010, showing a sample of the CONCEPT LAW
`trademark.
`
`Copy of the page titled News of the website www.pinskylaw.ca
`archived by www.archive.org and www.\_v_aybackmachine.com on
`April 12, 2010, showing a sample of the CONCEPT LAW trademark.
`
`Copy of the page titled Sitemap of the website www.pinskylaw.ca
`archived by www.archive.org and www.waybackmachine.com on
`February 11, 2010, showing a sample of the CONCEPT LAW
`trademark.
`
`in
`to attorney Reggie Borkum on January 25, 2010,
`Email sent
`relation to legal services provided to his client and copies of
`advertisement of legal
`services
`sent
`to him and his client
`in
`association with the trademark CONCEPT LAW.
`
`4.
`
`I clearly marked CONCEPT LAW as my trademark in the advertisements of legal
`
`services distributed in the United States of America and in the emails with which
`
`the advertisements were distributed.
`
`I used the trademark CONCEPT LAW to
`
`identify my intellectual property and business law services offered, distributed,
`
`and sold to the residents of the United States of America.
`
`5.
`
`I used the trademark CONCEPT LAW in association with advertisement,
`
`offering, and sale of my intellectual property and business law services in the
`
`form exhibited in the samples below:
`
`Page 3 of9
`
`
`
`CONCEPT LAW TM
`
`Between January 27, 2010 and June 11, 2010, I sold my intellectual property and
`
`business law services in association with the trademark CONCEPT LAW to the
`
`residents of the United States of America.
`
`Since January 27, 2010, and to date, on a continuous basis, I have been adverting,
`
`offering, and selling my intellectual property and business law services in
`
`association with the trademark CONCEPT LAW to the residents of the United
`
`States of America.
`
`I have attached to this Declaration affidavits and declarations (Exhibit 10 through
`
`Exhibit 25) provided by the United States of America patent and trademark
`
`attorneys, which evidence my date of first use (January 27, 2010) of the
`
`trademark CONCEPT LAW in the United States of America and which support
`
`my Petition to Cancel registration of the trademark KONCEPT (Registration No.
`
`3981394). All declarations and all affidavits listed below will be filed with the
`
`Trademark Trial and Appeal Board separately from my declaration.
`
`Exhibit 10
`
`Declaration of Elliot C. Alderman, copyright and trademark attorney
`and partner of Alderman Law, Washington, DC. Telephone number
`(202) 973-0188.
`
`Page 4 of 9
`
`
`
`Exhibit 1 1
`
`Exhibit 12
`
`Exhibit 13
`
`Exhibit 14
`
`Exhibit 15
`
`Exhibit 16
`
`Exhibit 17
`
`Exhibit 1 8
`
`Exhibit 19
`
`Exhibit 20
`
`Exhibit 21
`
`Exhibit 22
`
`Affidavit of Grady K. Bergen, patent and trademark attorney and
`partner of Griggs Bergen LLP, Dallas, TX. Telephone number (214)
`665-9568.
`
`Declaration of D. Whitlow Bivens, intellectual property attorney and
`partner of Musick Peeler, San Diego, CA. Telephone number (619)
`525-2553.
`
`Affidavit of William M. Borchard, intellectual property attorney and
`partner of Cowan, Liebowitz, Latman, New York, NY. Telephone
`number (212) 790-9290.
`
`Affidavit of Jonathan M. D’Silva, patent and trademark attorney and
`associate of law firm MacDonald Illig, Erie, PA. Telephone number
`(814) 870-7715.
`
`Affidavit of Aaron A. Fishman, patent and trademark attorney and
`partner of law firm Pearne Gordon LLP, Cleveland, O1-1. Telephone
`number (216) 579-1700.
`
`Affidavit of Thomas D. Foster, patent and trademark attorney and
`president of law firm Foster & Associates, San Diego, CA. Telephone
`number (858) 922-2170.
`
`Affidavit of Richard J. Gurak, patent and trademark attorney and
`partner of law firm Husch Blackwell LLP, Chicago, IL. Telephone
`number (312) 526-1574.
`
`Affidavit of Erik J. Heels, patent and trademark attorney and partner
`of law firm Clock Tower Law Group, Maynard, MA. Telephone
`number (978) 823-0008.
`
`Affidavit of Scott H. Kaliko, patent and trademark attorney and
`partner of law firm Kaliko & Associates LLC, Ramsey, NJ.
`Telephone number (201) 962-3570.
`
`Affidavit of Marvin H. Kleinberg, patent and trademark attorney and
`partner of law firm Kleinberg & Lerner LLP, Los Angeles, CA.
`Telephone number (310) 557-1511 x 3017.
`
`Declaration of Bert P. Krages ll, patent and trademark attorney
`practicing as a sole practitioner, Portland, OR. Telephone number
`(503) 597-2525.
`
`Affidavit of Mark H. Miller, patent and trademark attorney and
`partner of law firm Jackson Walker LLP, San Antonio, TX.
`
`Page 5 of 9
`
`
`
`6”
`—
`
`,,6’\../
`
`Exhibit 23
`
`Exhibit 24
`
`Exhibit 25
`
`Telephone number (210) 978-7751.
`
`Affidavit of James J. Murphy, patent and trademark attorney and
`counsel
`to law firm Thompson Knight, Dallas, TX. Telephone
`number (214) 969-1749.
`
`Affidavit of Joel D. Skinner, patent and trademark attorney and
`member of law firm Skinner & Associates, Hudson, WI. Telephone
`number (715) 386-5800.
`
`Affidavit of Miguel Villarreal Jr., patent and trademark attorney and
`member of law firm Gunn, Lee & Cave P.C., San Antonio, TX.
`Telephone number (210) 886-9500.
`
`9.
`
`I have attached to this Declaration a copy of my letter to Douglas Burda (Exhibit
`
`26), the Registrant in the current cancellation proceeding, in which I advised Mr.
`
`Burda not to register his trademark KONCEPT (Registration No. 3981394). I sent
`
`my letter to Mr. Burda on June 15, 2011, six days prior to registration of his
`
`trademark. I also sent a copy of my letter to Mr. Burda to Ms. Caryn Glasser, the
`
`attorney in cha
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