Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA685713
`ESTTA Tracking number:
`07/24/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92057941
`Plaintiff
`Clockwork IP, LLC
`BRAD R NEWBERG
`MCGUIRE WOODS LLP
`1750 TYSONS BOULEVARD, SUITE 1800
`TYSONS CORNER, VA 22102-4215
`UNITED STATES
`bnewberg@mcguirewoods.com, wfederspiel@mcguirewoods.com, ade-
`ford@mcguirewoods.com, trademarks@mcguirewoods.com
`Reply in Support of Motion
`Brad R. Newberg
`bnewberg@mcguirewoods.com, adeford@mcguirewoods.com, trade-
`marks@mcguirewoods.com
`/Brad R. Newberg/
`07/24/2015
`Clockwork - Reply in Supp of SJ and Response to Mot for Sanctions.pdf(39414
`bytes )
`#69364642, v1 _Active_ - Clockwork - Supplemental Declaration of R. Yohn - E-
`Signed with Exhibit A.pdf(4690860 bytes )
`Part 2 of Ex A to Yohn.pdf(4506061 bytes )
`Part 3 of Ex A to Yohn.pdf(4538290 bytes )
`Clockwork - Newberg Decl with Exhibit.pdf(444724 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`CLOCKWORK IP, LLC
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`v.
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`Petitioner,
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`BARNABY HEATING & AIR, and
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`McAFEE HEATING AND AIR
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`CONDITIONING CO., INC.
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`Respondents.
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`Cancellation No. 92057941
`Reg. No. 3,618,331
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`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT AND
`RESPONSE TO RESPONDENT’S EVIDENTIARY OBJECTIONS AND MOTION TO STRIKE
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`Petitioner Clockwork IP, LLC (“Clockwork”) states the following as its Reply in Support of its
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`Motion for Summary Judgment and in response to the Evidentiary Objections and Motion to Strike:1
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`INTRODUCTION
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`Barnaby’s evidentiary objections and motion to strike are meritless and should be denied.
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`Clockwork was not required to disclose the declarants before relying on them in support of its motion,
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`and even if it was, the failure to disclose is harmless. Moreover, Clockwork has established that it is
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`entitled to judgment as a matter of law with respect to Barnaby’s fraud. Not only did Barnaby fail to
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`answer and therefore admit several Requests for Admission (“RFAs”) that conclusively establish that
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`fraud, it also failed to raise a genuine issue of material fact with respect to its fraud, which is clearly and
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`convincingly established by the record before the Board. Summary judgment is therefore appropriate.
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`ARGUMENT
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`Respondent’s evidentiary objections and motion to strike are meritless and should therefore
`be denied.
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`Barnaby objects to, and moves to strike, the declarations of Rick Yohn, Robin Faust, and Chelsea
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`I.
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`
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`Crews that Clockwork submitted in support of its motion for summary judgment, arguing that Mr. Yohn,
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`1 As Barnaby’s cross motion for summary judgment raises issues not previously raised in Clockwork’s
`motion for summary judgment, Clockwork will file a separate brief in opposition to the cross motion.
`Additionally, given that Barnaby filed a separate motion to reopen or withdraw and amend its responses
`to Requests for Admission Nos. 36 to 45, Clockwork will also oppose that motion in a separate brief.
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`

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`Ms. Faust, and Ms. Crews were not identified in Clockwork’s initial disclosures until two days after
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`Clockwork filed the motion for summary judgment. (See [Dkt. # 30] Resp’t Mem. at 4–5.) But Barnaby
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`fails to establish any facts that show that Clockwork did anything wrong or to justify imposition of any
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`sanction or other remedy.
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`
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`To start, Barnaby befuddles precedent governing exclusion of a witness at trial for failure to
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`identify the witness in initial disclosures, see Spier Wines (PTY) Ltd. v. Shepher, 105 U.S.P.Q.2d (BNA)
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`1239 (T.T.A.B. 2012); Great Seats, Inc. v. Great Seats, Ltd., 100 U.S.P.Q.2d (BNA) 1323 (T.T.A.B.
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`2011), with precedent governing when to strike declarations and/or accompanying documents submitted
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`in support of a motion for summary judgment, see Warner Bros. Entm’t, Inc. v. The Kaplan Trust, 2007
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`WL 8304081 (T.T.A.B. Nov. 26, 2007); Vignette Corp. v. Marino, 77 U.S.P.Q.2d (BNA) 1408 (T.T.A.B.
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`2005); Milliken & Co. v. Image Indus., Inc., 39 U.S.P.Q.2d (BNA) 1192 (T.T.A.B. 1996). The former is
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`not applicable here, and application of the latter shows that Barnaby’s motion fails.2
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`The Board has consistently declined to impose an estoppel sanction and to strike declarations
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`and/or evidence submitted in support of a motion for summary judgment where the non-moving party did
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`“not unequivocally refuse to provide the requested information” during discovery. Vignette Corp., 77
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`U.S.P.Q.2d (BNA) at 1411; see also Warner Bros., 2007 WL 8304081, at *2 n.3 (noting that, where the
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`“[p]etitioner did not outright refuse to furnish [the declarant’s] identity during discovery” and that the
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`“[d]eclaration does not contain any previously undisclosed facts,” it would be inappropriate and “unduly
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`harsh to impose the preclusion sanction under Fed. R. Civ. P. 37(c)(1)”); Milliken & Co., 39 U.S.P.Q.2d
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`(BNA) at 1197 (denying a motion to strike “the declaration by the retail carpet store owner” because
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`“respondent’s complaint that this witness was not identified during discovery is not supported by an
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`2 Even if Spier and Great Seats applied here, which they do not, Barnaby makes no attempt to show that
`the five factors specified weigh in favor of striking the three declarations. Those five (inapplicable)
`factors actually weigh against striking the declarations for at least the reasons that, as demonstrated
`below, there is no surprise to Barnaby because almost all of the information contained in the declarations
`and accompanying exhibits was already known to, in the possession of, and sometimes obtained from,
`Barnaby, and to the extent it is not, Barnaby would have been able to cure the surprise by submitting
`counter-declarations and evidence if it chose to do so. (See infra at 3.)
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`2
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`

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`identification of any specific discovery request asking for his identification”). Here, Barnaby propounded
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`no discovery requests. Barnaby’s objections and motion are therefore legally unsupportable.
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`Moreover, even if Clockwork had been required to disclose Mr. Yohn, Ms. Faust, and Ms. Crews
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`in order to rely on them for purposes of the summary judgment motion – which it was not – the estoppel
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`sanction is nevertheless improper because the lack of disclosure is harmless. See Fed. R. Civ. P. 37(c)(1).
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`The information contained in, and exhibits attached to, Ms. Faust’s declaration come straight from
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`documents Barnaby produced to Clockwork in this case, ([Dkt. # 22] Ex. A–C to Faust Decl. (displaying
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`Bates stamps)), and Barnaby itself relies on Ms. Faust’s declaration in its cross motion, ([Dkt. # 30]
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`Resp’t Mem. at 16–17). Similarly, the information contained in, and exhibits attached to, Mr. Yohn’s
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`declaration was included in and attached to the Petition, which Barnaby has had for over a year, (see [Dkt.
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`# 1] Petition.) And finally, the exhibit attached to Ms. Crews’ declaration was produced by Barnaby in
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`this case, ([Dkt. # 22] Ex. 1 to Crew Decl. (displaying Bates stamps)), and most of the information in her
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`declaration is admitted by Barnaby, and Barnaby is free to dispute what is not. Thus, the Board should
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`overrule the evidentiary objections and deny the motion to strike.
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`Clockwork is entitled to judgment as a matter of law on its fraud claim.
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`II.
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`Clockwork’s opening brief in support of its motion for summary judgment irrefutably establishes
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`that Clockwork is entitled to judgment as a matter of law on its fraud claim. To start, Barnaby failed to
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`respond to Requests for Admission (“RFAs”) Nos. 36 to 45, which – among other things – conclusively
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`establishes that Barnaby procured U.S. Reg. No. 3,618,331 for COMFORTCLUB by committing fraud on
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`the USPTO. (See [Dkt. # 22] Pet.’s Mem.) As explained more fully in Clockwork’s opposition to
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`Barnaby’s motion to reopen the time to respond to, or withdraw and amend, those RFAs, which is filed
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`simultaneously with this reply, (see [Dkt. # 33] Pet.’s Opp.), the Board should not permit Barnaby to
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`reopen its response time or to withdraw and amend those admissions because Clockwork properly served
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`RFA Nos. 36 to 45 on Barnaby’s counsel prior to the close of discovery, Barnaby’s failure to respond to
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`those RFAs is not the product of excusable neglect, and the facts of this case – including but not limited
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`to all of Barnaby’s conduct that gave rise to the pending motion for sanctions and entry of judgment, (see
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`3
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`

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`[Dkt. # 21] Pet.’s Sanction Mem.; [Dkt. # 27] Pet.’s Sanction Reply), its deliberate misrepresentation of
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`the allegations in the Petition, (see infra at 4–5), and the most recent fantastical story it paints in the
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`motion to reopen or withdraw or amend, (see [Dkt. # 33] Pet.’s Opp.) –demonstrate that the Board is
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`justified in declining to exercise its discretion under Rule 36(b) and to instead find the matters in RFA
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`Nos. 36 to 45 have been conclusively established.
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`Although the RFAs alone are enough to warrant judgment in favor of Clockwork on its fraud
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`claims, Clockwork additionally established in its opening brief that it is entitled to judgment as a matter
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`of law because there is no genuine dispute of material fact that Barnaby knowing made four false,
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`material representations to the Board with the intent to deceive the Board and to procure a trademark
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`registration to which Barnaby was not entitled. ([Dkt. # 22] Pet.’s Mem. at 11–14.) Barnaby makes two
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`feeble attempts to refute that conclusion and to avoid summary judgment: first, it claims – years later –
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`that the Petition to Cancel does not satisfy the heightened pleading standard of Federal Rule of Civil
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`Procedure 9(b) and therefore summary judgment must be denied as moot, and second, it tries to create an
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`issues of fact that clearly do not withstand scrutiny.
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`To support its deficient pleading argument, Barnaby blatantly misrepresents the allegations in the
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`actual Petition.3 Recognizing that “allegations based on ‘information and belief’” satisfy Rule 9(b) when
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`“accompanied by a statement of facts upon which the belief is founded,” (Resp’t Mem. at 13), Barnaby
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`quotes the “upon information and belief” language from the Petition and then deliberately excises the
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`accompanying facts, by using ellipses, to give the false impression that the Petition is deficient:
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`Petitioner also alleges that on March 13, 2008, in Respondent’s original application and
`again on August 27, 2008, in support of Respondent’s amended specimen, that
`“Respondent’s Owner and Principal, Mr. Charles Barnaby, signed a declaration in
`support of its application for the Registration that stated, inter alia, that he believes the
`applicant to be the owner of the trademark/service mark sought to be registered, . . .
`believes applicant to be entitled to use such mark in commerce, and to the best of his
`knowledge, he believes that no other person, firm, corporation, or association has the
`right to use the mark in commerce, either in the identical form thereof or in such near
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`3 Barnaby limits its deficiency contention to its manufactured belief that Clockwork failed to plead facts
`in support of the allegations based upon information and belief; it does not allege other deficiencies.
`Clockwork easily pleaded all elements of its fraud claim sufficiently to satisfy Rule 9(b). Should the
`Board disagree, however, Clockwork respectfully requests that it be allowed to file an amended Petition.
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`4
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`

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`resemblance thereto as to be likely to cause confusion. Upon information and belief,
`these statements, which were made under oath, were false. Upon information and belief,
`Mr. Barnaby made these statements with an intent to deceive the U.S. Patent and
`Trademark Office (“USPTO”) into granting registration . . .”
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`([Dkt. # 30] Resp’t Mem. at 11 (alterations in original).) But the unaltered versions of both Paragraphs 32
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`and 34 contain the following facts (italicized for ease of reference) in support of Clockwork’s fraud claim:
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`“Upon information and belief, Mr. Barnaby made those statements with an intent to deceive the U.S.
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`Patent and Trademark Office (“USPTO”) into granting registration because he was aware at the time of
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`the declaration that Petitioner owned Petitioner’s Mark, that Respondent was a licensee of Petitioner,
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`and that Respondent’s Mark was virtually identical to Petitioner’s Mark, and that up to seven (7) of
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`Petitioner’s franchisees were authorized to use Petitioner’s Mark in Respondent’s geographic area,”
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`(Petition ¶ 32), and “because he, as Respondent’s owner, was aware at the time of the declaration that
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`Petitioner owned Petitioner’s Mark, that Respondent was a licensee of Petitioner, and that Respondent’s
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`Mark was virtually identical to Petitioner’s Mark,” (id. ¶ 34; see also id. ¶¶ 9, 13, 15 (listing additional
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`facts).) Thus, like the vast majority of arguments that Barnaby has submitted in an attempt to show it did
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`not commit fraud (and its obviously false excuses regarding its failure to answer RFA Nos. 36 to 45), its
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`pleading deficiency argument is intentionally misleading and devoid of merit.
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`Similarly, Barnaby’s attempt to create a genuine issue of material fact is unavailing. “Fraud in
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`procuring a trademark registration . . . occurs when an applicant knowingly makes false, material
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`representations of fact in connection with his application.” In re Bose, 580 F.3d at 1243. As set forth
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`more fully in Clockwork’s opening brief, the record establishes that Barnaby knowingly made two false,
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`material representations (one regarding its ownership of COMFORTCLUB and one regarding the non-
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`existence of another person, firm, or organization with right to use the mark in commerce (collectively,
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`the “Barnaby Statements”)) to the Board both at the time it filed its application to register
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`COMFORTCLUB in March 2008 as well as when it filed a response to an office action in August 2008.
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`(See generally [Dkt. # 22] Pet.’s Mem.) Barnaby does not contest, and therefore concedes, that the
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`Barnaby Statements are “material representations” for purposes of the fraud claim. (See [Dkt. # 30]
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`5
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`

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`Resp’t Mem.) Barnaby also does not contest, and therefore concedes, that the Barnaby Statements are
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`false and that Barnaby knew they were false both times it made them. (See id.)
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`In fact, Barnaby’s opposition skirts around the issue of its knowledge, never addressing the crux
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`of Clockwork’s fraud claim: that Barnaby knew that Clockwork owned and used the COMFORTCLUB
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`Mark in connection with heating and air conditioning services prior to when Barnaby filed the application
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`in March 2008 and/or prior to when it filed its response to the office action in August 2008, such that
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`Barnaby – who was a non-exclusive licensee of Clockwork’s COMFORTCLUB Mark by March 2008
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`and signed the Nighthawk Agreement acknowledging it possessed no ownership rights in that mark –
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`could not believe itself the rightful owner of COMFORTCLUB, or regardless of whether it could
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`honestly believe it owned the mark, Barnaby could not truthfully declare that it knew of no other person,
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`firm, entity, or association with a right to use the COMFORTCLUB Mark on identical or related goods.
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`Instead, Barnaby attempts to avoid summary judgment by claiming that: (1) “Respondent began
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`using the COMFORTCLUB Mark in January 2008, prior to attending the March 2008 AirTime500
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`meeting in St. Louis;” (2) “Respondent filed its application for the registration of its Mark at the USPTO”
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`prior to attending the March 2008 AirTime500 meeting; (3)“Petitioner has failed to show that the
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`COMFORTCLUB Mark was adopted by Petitioner, or that it was in use at the March 17-19, 2008
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`meeting;” and (4)“The materials submitted by Petitioner fail to establish . . . that Petitioner has rights to
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`the COMFORTCLUB Mark that are superior to that of Respondent’s.” ([Dkt. # 30] Resp’t Mem. at 13–
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`14.) But none of these points carry the day.
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`The only “facts” Barnaby raises in an attempt to avoid summary judgment all focus on the March
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`2008 Senior Tech course that Barnaby attended, which has no bearing on Barnaby’s knowledge when it
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`made the August 2008 statements. Moreover, the facts regarding the timing of Barnaby’s first use and
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`application, even if accepted as true, do not refute that Barnaby knew of Clockwork’s COMFORTCLUB
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`Mark – or that he was a licensee of that mark – when it filed the application in March 2008. Thus, instead
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`of raising a triable issue, Barnaby’s facts tend to show that summary judgment for Clockwork is proper.
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`6
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`

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`Similarly, whether COMFORTCLUB was used during the March 2008 meeting cannot preclude
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`summary judgment because it is not a material fact; the Board can find Barnaby’s knowledge and intent
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`to deceive the USPTO without it. Throughout this entire proceeding, Barnaby has refused to specify
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`when it learned of Clockwork’s ownership and use of the COMFORTCLUB Mark in connection with
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`heating and air conditioning services. Its discovery responses on the topic are evasive and improper, (see,
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`e.g., [Dkt. # 22] Ex. 5 to DeFord Decl. (Barnaby responding to an RFP asking for documents relating to
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`when it first learned of Clockwork’s COMFORTCLUB Mark with “Respondent is not aware that
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`Petitioner owns any mark” despite producing a cease and desist letter it sent Clockwork in 2011 (see Ex.
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`1 to Decl. of Brad R. Newberg))), and neither its opposition nor the declaration of Charles Barnaby ever
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`states that Barnaby did not know of Clockwork’s superior rights at the time it made the Barnaby
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`Statements, (see [Dkt. # 30] Resp’t Mem.; [Dkt. # 30] Barnaby Decl.)
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`In fact, by honing in on the March 2008 conference, Barnaby ignores – and again concedes – the
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`following points that demonstrate its knowledge of Clockwork’s superior rights at the time it made the
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`Barnaby Statements in March 2008 and/or August 2008: (1) in 2007, Barnaby was surrounded by seven
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`(7) Clockwork franchisees that were using the COMFORTCLUB Mark in connection with heating and air
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`conditioning services; (2) as of August 2007, Barnaby was a member of AirTime500; (3) by March 2008,
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`Barnaby was a non-exclusive licensee of Clockwork’s COMFORTCLUB Mark; (4) by Barnaby’s own
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`admission, it was during this time frame that Barnaby supposedly conceived of a COMFORTCLUB Mark
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`out of wholecloth and began using it in commerce; (5) despite rushing to register the mark and allegedly
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`spending hundreds of thousands of dollars on it, Barnaby inexplicably cannot recall any details regarding
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`how it came up with the mark or find any physical evidence related to its creation; and (6) Barnaby was in
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`close contact with its SGI personal coach, asking for her opinion on an advertisement containing the
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`COMFORTCLUB Mark less than two weeks before it filed the registration application.4 (See [Dkt. # 22]
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`4 In its opening motion, Clockwork indicated that Ms. Faust approved of Barnaby’s ad using
`COMFORTCLUB the same day as Barnaby’s first sale of a COMFORTCLUB membership. But upon
`reviewing the exhibits while preparing its reply, Clockwork realized that Ms. Faust’s email was sent on
`March 3, 2008, not February 29. That correspondence and the fact that Barnaby requested Ms. Faust’s
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`7
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`

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`Pet.’s Mem. at 11–15. See generally [Dkt. # 30] Resp’t Mem.) These facts, coupled with Barnaby’s
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`continued evasiveness – both in discovery responses and its opposition – as to when it first learned of
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`Clockwork’s use and ownership of COMFORTCLUB lead to one escapable conclusion: Barnaby knew
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`of Clockwork’s superior rights to COMFORTCLUB at both of the times it made the Barnaby Statements.
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`Barnaby’s knowledge is therefore not dependent on a finding that COMFORTCLUB was discussed
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`during the March 2008 Senior Tech course and conference, making that factual dispute immaterial for
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`purposes of deciding the summary judgment motion.
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`In light of Barnaby’s knowledge of Clockwork’s superior (or at least clearly established) rights in
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`and use of the COMFORTCLUB Mark in connection with heating and air conditioning services, which is
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`established and unrefuted by Barnaby in its opposition, there is little question that Barnaby intended to
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`deceive the USPTO when it made the Barnaby Statements with full knowledge of their falsity. As noted
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`above, Barnaby expressly acknowledged that it possessed no ownership rights in any of the intellectual
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`property to which it was exposed through its membership in AirTime500 when it signed the Nighthawk
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`Agreement. Thus, Barnaby could not reasonably or honestly believe that it owned COMFORTCLUB at
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`either time it made the Barnaby Statements, leading to the sole conclusion that it intended to deceive the
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`USPTO by claiming otherwise.
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`Moreover – and independent from whether Barnaby could honestly believe it owned
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`COMFORTCLUB – Barnaby’s knowledge of Clockwork’s use of the identical COMFORTCLUB Mark
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`on identical or virtually identical services (such as heating and air conditioning services) as those sought
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`to be registered by Barnaby demonstrates that it could not honestly or reasonably believe that no other
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`person, firm, corporation, or association had the right to use the COMFORTCLUB mark in commerce,
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`either in the identical form thereof or in such near resemblance thereto as to be likely to cause confusion.
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`See, e.g., Intellimedia Sports Inc. v. Intellimedia Corp., 43 U.S.P.Q. 2d (BNA) 1203, 1205–06 (T.T.A.B.
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`1997). It therefore intentionally withheld information that could have affected its right to a registration,
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`approval of the ad remains significant evidence of Barnaby’s fraud in this case, but Clockwork withdraws
`any suggestion that the showing of fraud is further strengthened by Barnaby’s first sale date.
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`
`8
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`

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`
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`revealing that it intended to deceive the USPTO. See Scoa Indust., Inc. v. Kennedy & Cohen, Inc., 188
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`U.S.P.Q. (BNA) 411, 414 (T.T.A.B. 1975) (noting that fraud is the “willful withholding from [the
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`USPTO] . . . material information or facts which, if transmitted and disclosed to the Examiner, would
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`have resulted in the disallowance of the registration sought”).
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`Faced with this uncontested evidence, Barnaby makes no attempt to explain that its false
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`statements were unintentional or made as the result of mistake, inadvertence, misunderstanding, or even
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`negligence; it simply states that intent is usually a factual issue unsuited for resolution on summary
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`judgment. But this is not the usual case; as shown above, the undisputed facts before the Board clearly
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`and convincingly show that Barnaby knowingly made four, false representations with the intent to
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`deceive the Board into issuing a registration to which Barnaby is not entitled. See In re Bose, 580 F.3d at
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`1245 (“[B]ecause direct evidence of deceptive intent is rarely available, such intent can be inferred from
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`indirect and circumstantial evidence” that is clear and convincing).
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`Barnaby also cannot avoid the consequences of its fraud by claiming that Clockwork failed to
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`submit sufficient evidence of its superior rights to COMFORTCLUB or that it owns and uses
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`COMFORTCLUB. Again, Barnaby has conceded that Clockwork has rights in COMFORTCLUB dating
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`to at least 2007, which are therefore superior to Barnaby who claims first use in 2008, because Barnaby
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`does not contest that it was surrounded by seven (7) OHAC franchisees that were using
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`COMFORTCLUB in 2007–2008. Cf. L & J.G. Stickley, Inc., 81 U.S.P.Q.2d (BNA) 1956, 1965
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`(T.T.A.B. 2007) (accepting a priority of use date based in part on the petitioner’s admission of “seeing
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`respondent’s use of the mark” during that time frame). Additionally, Clockwork’s rights and use are
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`further shown because Clockwork is the owner of Application Ser. No. 85/880,911, and Barnaby sent a
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`cease and desist letter to Clockwork regarding Clockwork’s use of the mark in 2011. (Ex. 1 to Newberg
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`Decl.) Perhaps most importantly, Clockwork submitted evidence of its superior rights. In addition to the
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`details regarding Clockwork’s licensing of COMFORTCLUB to OHAC franchisees, Rick Yohn declared
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`that Exhibit 1, which contains a dated 2006 copyrighted StraightForward Pricing Guide, is evidence of
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`Clockwork’s use of COMFORTCLUB in commerce. ([Dkt. # 22] Yohn Decl. ¶ 7.) Specifically, the
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`
`9
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`

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`2006 StraightForward Pricing Guide (and its current versions) was purchased by OHAC franchisees in
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`2006, who then used that Pricing Guide in commerce by displaying it to customers during home visits in
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`order to sell COMFORTCLUB memberships. (Suppl. Yohn Decl. ¶¶ 3–5; Ex. A to Suppl. Yohn Decl.)
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`Thus, Clockwork has demonstrated that it was using (and still is using) COMFORTCLUB at least two
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`years before Barnaby’s claimed first use date.
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`Barnaby tries to question Clockwork’s evidence through the declaration of Mr. Barnaby. ([Dkt. #
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`30] Barnaby Decl. ¶ 24.) But Mr. Yohn’s declaration demonstrates that Mr. Barnaby’s “analysis” is
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`wrong, and in any event, Barnaby’s “analysis” should be struck because it is either an improper lay
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`opinion, given that Barnaby was never an OHAC franchisee and therefore lacks foundation, (id. ¶ 22), or
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`is an improper expert opinion, as Mr. Barnaby was never identified as an expert and there is no indication
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`that he would otherwise meet the expert standard.
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`Finally, Barnaby cannot avoid summary judgment by absurdly pointing to a forum-selection
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`clause in the Nighthawk Agreement. As explained more fully in Clockwork’s opposition to Barnaby’s
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`cross motion for summary judgment, that clause is inapplicable here. (See [Dkt. # 34].)
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`In sum, Clockwork has demonstrated that it is entitled to judgment as a matter of law on its fraud
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`claims because Barnaby failed to respond to several operative RFAs, which should stand as admitted, and
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`because Barnaby failed to raise a genuine dispute of material fact with respect to its knowledge of the
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`falsity of the Barnaby statements, its intent to deceive the Board, or Clockwork’s superior rights, which
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`are all clearly and convincingly established by the record currently before the Board.
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`CONCLUSION
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`For the reasons stated above and those contained in Clockwork’s opening brief, Clockwork
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`requests that the Board grant its Motion for Summary Judgment, enter judgment against Barnaby on
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`Clockwork’s fraud claim, and cancel U.S. Reg. No. 3,618,331. Additionally, Clockwork requests that the
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`Board deny Barnaby’s motion to strike. Finally, Clockwork respectfully requests that the Board strike
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`paragraph 24 from the declaration of Charles Barnaby.
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`Respectfully submitted,
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`CLOCKWORK IP, LLC
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`/Brad R. Newberg/______________
`Brad R. Newberg
`bnewberg@mcguirewoods.com
`McGuireWoods LLP
`1750 Tysons Boulevard
`Suite 1800
`Tysons Corner, VA 22102-4215
`(703) 712-5061
`(703) 712-5187 (fax)
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`Amanda L. DeFord
`adeford@mcguirewoods.com
`McGuireWoods LLP
`One James Center
`901 East Cary Street
`Richmond, Virginia 23219
`(804) 775-7787
`(804) 698-2248 (fax)
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`Attorneys for Petitioner Clockwork IP, LLC
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`CERTIFICATE OF SERVICE
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`On July 24, 2015, this document was sent by first class mail to the following counsel of record:
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`Julie Celum Garrigue
`Celum Law Firm PLLC
`11700 Preston Rd
`Suite 660 Pmb 560
`Dallas, TX 75230
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`Counsel for Respondent Barnaby
`Heating & Air
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`Melissa Replogle
`Replogle Law Office LLC
`2661 Commons Blvd.
`Suite 142
`Beavercreek, OH 45431
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`Counsel for Assignee McAfee Heating
`& Air Conditioning Co., Inc.
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`/Amanda L. DeFord/______________
`Amanda L. DeFord
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`Filed via ESTTA: July 24, 2015
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`By:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`CLOCKWORK IP, LLC
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`v.
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`Petitioner,
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`BARNABY HEATING & AIR, and
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`McAFEE HEATING AND AIR
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`CONDITIONING CO., INC.
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`Respondents.
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`Cancellation No. 92057941
`Reg. No. 3,618,331
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`SUPPLEMENTAL DECLARATION OF RICK YOHN
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`I, Rick Yohn, being duly sworn, state:
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`1.
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`My name is Rick Yohn. I am over the age of 18. I make the statements in this
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`declaration based on my own personal knowledge and the official records of my employer,
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`Clockwork Home Services (“CHS”), related the facts discussed herein. I certify under oath that
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`the statements made in this declaration are true to the best of my knowledge, information and
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`belief.
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`2.
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`I am currently employed by CHS, and I am the Vice President of Franchise
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`Operations at CHS, an entity that operates several widely known franchise brands. I have held
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`the position of Vice President of Franchise Operations at CHS since January 2014 and am well
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`aware of the records and materials that existed in the years preceding the date when I assumed
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`that position.
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`3.
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`I previously made a declaration in support of Clockwork’s Motion for Summary
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`Judgment in the above-captioned case. In that declaration, I declared, among other things, that
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`between 2003 and 2008, Clockwork licensed the COMFORTCLUB Mark to at least 100 OHAC
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`franchisees. I also declared that Exhibit 1, which is attached to my prior declaration, contains
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`true and accurate copies of documents showing use of the COMFORTCLUB Mark.
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`4.
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`The documents contained in Exhibit 1 to my prior declaration are part of the 2006
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`StraightForward Pricing Guide that OHAC franchisees purchase from Clockwork.
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`5.
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`The OHAC franchisees then use the 2006 StraightForward pricing guide in
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`commerce, by presenting it to customers while on home visits to inform them about, and explain
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`the benefits of, the COMFORTCLUB membership program. Exhibit A to this declaration
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`contains true and accurate copies of an OHAC franchisee’s use of this form (slightly altered to
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`contain the OHAC franchisee’s contact information) that date to at least as early as 2007. Any
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`redactions appearing on the form were made by Clockwork’s counsel to protect clients’ personal
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`information, such as addresses and credit card numbers.
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`6.
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`After reviewing this declaration personally and due to travel, I have authorized
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`Clockwork’s undersigned counsel to sign this declaration for me electronically. I will replace
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`this declaration with a declaration containing my handwritten signature upon my return next
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`week.
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`The undersigned being warned that willful false statements and the like are punishable by fine or
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`imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may
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`jeopardize the validity of the application or document or any registration resulting therefrom, declares that
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`all statements made of his/her own knowledge are true; and all statements made on information and belief
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`/Rick Yohn/
`Rick Yohn
`Vice President of Franchise Services
`Clockwork Home Services
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`2
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`are believed to be true.
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`Executed this 24th day of July 2015.
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`EXHIBIT A TO
`EXHIBIT A TO
`SUPPLEMENTAL
`SUPPLEMENTAL
`DECLARATION OF RICK
`DECLARATION OF RICK
`YOHN
`YOHN
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`FMGraphics,Inc.0(900)621-7635
`
`Murray: On l'frna_Dr You Dun‘! Pnyril Mun!"
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