Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA839815
`
`Filing date:
`
`08/16/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92063134
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Defendant
`IP Services International Inc.
`
`HEATHER KLIEBENSTEIN
`MERCHANT & GOULD PC
`80 SOUTH EIGHTH ST, STE 3200
`MINNEAPOLIS, MN 55402
`UNITED STATES
`Email: hkliebenstein@merchantgould.com, akrueger@merchantgould.com,
`marc@hankinpatentlaw.com, kevin@hankinpatentlaw.com, dockm-
`pls@merchantgould.com
`
`Other Motions/Papers
`
`Heather Kliebenstein
`
`hkliebenstein@merchantgould.com, akrueger@merchantgould.com, dockm-
`pls@merchantgould.com
`
`Signature
`
`Date
`
`/Heather Kliebenstein/
`
`08/16/2017
`
`Attachments
`
`2017 08 16 Motion for Protective Order - combined.pdf(1560681 bytes )
`
`

`

`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Petitioner,
`
`Registrant.
`
`)
`)
`) Cancellation No. 92063134
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
`THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`PHILIP MORRIS USA INC.,
`
`
`
`
`
`IP SERVICES INTERNATIONAL, INC.
`
`
`
`
`
`REGISTRANT IP SERVICES INTERNATIONAL, INC.’S MOTION
`FOR A PROTECTIVE ORDER TO PREVENT THE DEPOSITION
`OF COUNSEL OF RECORD AND MEMORANDUM IN SUPPORT
`
`
`I.
`
`Introduction.
`
`Registrant IP Services International, Inc. (“IP Services” or “Registrant”), files this Motion
`
`for a Protective Order to Prevent the Deposition of Counsel of Record (“Motion” or “Motion for
`
`Protective Order”) pursuant to T.B.M.P § 526 and 37 C.F.R. § 2.120(g). Petitioner Philip Morris
`
`USA Inc. (“Philip Morris”) seeks to depose Heather Kliebenstein, primary counsel for Registrant
`
`and counsel of record in this proceeding. Philip Morris wishes to depose Ms. Kliebenstein about a
`
`statement of excusable nonuse that Registrant filed in May 2017 regarding one of the registrations at
`
`issue in this proceeding (“Excusable Nonuse Statement”). Ms. Kliebenstein, as Registrant’s counsel,
`
`submitted this statement to the Patent and Trademark Office (PTO). Philip Morris wants to ask Ms.
`
`Kliebenstein about the facts in this document.
`
`
`
` All testimony Philip Morris seeks from Ms. Kliebenstein about the Excusable Nonuse
`
`Statement can be obtained from a Rule 30(b)(6) deposition of Registrant—a far less intrusive means
`
`to get the same information. In fact, Philip Morris’s Rule 30(b)(6) deposition notice lists a topic on
`
`this very issue. As questions about the facts in the Excusable Nonuse Statement will be answered
`
`

`

`fully by Registrant’s Rule 30(b)(6) designee, Mr. Oliver Duggal, there are no other facts for Ms.
`
`Kliebenstein to provide that are not already apparent on the face of the PTO filing.
`
`Ms. Kliebenstein’s deposition would serve no purpose other than invading attorney-client
`
`privileged conversations. But, as courts routinely recognize, “the attorney-client privilege is,
`
`perhaps, the most sacred of all legally recognized privileges.” United States v. Mett, 178 F.3d 1058,
`
`1062 (9th Cir. 1999). Depositions of counsel are disfavored for that reason alone. Philip Morris is
`
`attempting to use the noticed deposition to harass Registrant into settling this matter on terms
`
`favorable to Philip Morris. These tactics are wholly improper.
`
`Counsel of record has met and conferred on this issue through email correspondence on
`
`August 9, 2017. Counsel of record has suggested telephone conferences but Philip Morris has
`
`declined those invitations. Registrant requests that the U.S. Trademark Trial and Appeal Board (“the
`
`Board”) enter an order preventing Philip Morris from taking the deposition of Ms. Kliebenstein. In
`
`the alternative, Registrant respectfully requests that the Board enter an order permitting
`
`supplemental briefing on this topic upon completion of the 30(b)(6) deposition of Registrant, so that
`
`the parties can address whether there is any possible reason to depose Ms. Kliebenstein. Finally,
`
`Registrant requests that the Board conduct a telephone conference in connection with this Motion
`
`pursuant to 37 C.F.R. § 2.120(j)(1) and T.B.M.P. § 502.06(a).
`
`II.
`
`Factual Background.
`
`
`
`A.
`
`Status of the Cancellation Proceeding.
`
`This proceeding involves four registrations owned by Registrant: (1) Reg. No. 3,172,861 for
`
`the trademark CROSSROADS & Design; (2) Reg. No. 3,140,971 for the trademark NYC
`
`CLASSIC & Design; (3) Reg. No. 3,218,677 for the trademark CAPE DIEM & Design; and (4)
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`Reg. No. 4,261,884 for the trademark CARPE DIEM & Design (collectively “the marks at issue”).
`
`
`
`
`2
`
`

`

`(1 TTABVUE ¶¶ A-D.) Through its original petition for cancellation, Philip Morris sought
`
`cancellation of each of these registrations based on alleged nonuse. (Id. at ¶¶ 15-21.)
`
`
`
`Through documents produced in January 2017, Registrant provided Philip Morris with
`
`conclusive proof that Registrant used each of the marks at issue in commerce within the three years
`
`prior to Philip Morris filing its petition for cancellation. (12 TTABVUE Nading Decl. Ex. C at
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`IPS000001-IPS000075.) These documents also show Registrant has no intention of abandoning the
`
`marks. Given that it was now apparent that it could no longer prevail on the merits of its nonuse
`
`claim, Philip Morris sought default judgment through a motion for discovery sanctions (13
`
`TTABVUE), which the Board appropriately denied (17 TTABVUE). Unable to prevail on the
`
`merits of its claim of abandonment for nonuse or through procedural machinations, Philip Morris
`
`has now moved to amend its petition to assert a claim of naked licensing. (18 TTABVUE.)
`
`On July 26, 2017, Philip Morris served on Registrant’s counsel a number of requests for
`
`discovery including a notice of the 30(b)(6) deposition of Registrant, a notice of the deposition of
`
`Oliver Duggal, and a notice of the deposition of Ms. Kliebenstein. (Decl. of Heather J. Kliebenstein
`
`(“Kliebenstein Decl.”) Exs. A-C.) This motion is about the deposition of Ms. Kliebenstein, which
`
`seeks testimony is cumulative of testimony Registrant’s 30(b)(6) designee can provide and
`
`otherwise seeks privileged, irrelevant, and non-crucial information.
`
`B.
`
`Registrant’s Rule 30(b)(6) designee will provide facts about the Excusable
`Nonuse Statement.
`
`Philip Morris has stated it wants to depose Ms. Kliebenstein about the Excusable Nonuse
`
`Statement submitted to the PTO in May of 2017. By way of background, during the pendency of
`
`this proceeding, the renewal paperwork became due for Registration No. 3,172,861 for the
`
`trademark CROSSROADS and design. To maintain that registration, on May 19, 2017, Ms.
`
`Kliebenstein submitted an Excusable Nonuse Statement on behalf of Registrant. (Decl. of Oliver
`
`
`
`
`3
`
`

`

`Duggal (“Duggal Decl.”) Ex. A.) Registrant provided the PTO with the following facts in the
`
`Excusable Nonuse Statement:
`
`products were last sold to wholesalers under the CROSSROADS and Design mark
`in April 2014 (well within the three-year period prior to the filing of Philip Morris’s
`petition for cancellation);
`
`the manufacturers and distributors of the products bearing the CROSSROADS and
`Design mark had experienced business disruptions;
`
`none of these circumstances were within the control of Registrant;
`
`Registrant is in negotiations with a foreign entity to assign or license the
`CROSSROADS and Design mark; and
`
`the use of the CROSSROADS and Design mark would continue within the
`following six to twelve months.
`
`(1)
`
`(2)
`
`(3)
`
`(4)
`
`(5)
`
`
`
`
`The Excusable Nonuse Statement was accepted by the PTO on July 7, 2017. On July 26,
`
`
`
`
`
`
`
`(Id.)
`
`Philip Morris issued a Rule 30(b)(6) Deposition Notice that asks for a witness to testify about this
`
`document on Registrant’s behalf:
`
`SUBJECT NO. 30: The Combined Declaration of Use and/or Excusable
`Nonuse/Application for Renewal of Registration of a Mark under Sections 8 and 9, which
`was signed by Heather J. Kliebenstein and filed with the United States Patent and
`Trademark Office on May 19, 2017 in connection with the CROSSROADS & Design
`Mark (U.S. Trademark Registration No. 3172861).
`
`(Kliebenstein Decl. at Ex. C at 5.) Mr. Duggal, an employee of Registrant’s authorized
`
`representative in the United States, will provide that testimony. The parties are working to schedule
`
`that deposition in September.
`
`lawyer and communications about
`is Registrant’s
`C. Ms. Kliebenstein
`Registrant’s trademark matters are protected from disclosure by the attorney-
`client privilege.
`
`Ms. Kliebenstein and her firm, Merchant & Gould P.C. (“M&G”), replaced Registrant’s
`
`
`
`prior counsel in this proceeding on or around October 5, 2016. (7 TTABVUE.) All
`
`
`
`
`4
`
`

`

`communications between Registrant’s authorized representative and Ms. Kliebenstein have been
`
`about this proceeding or other legal matters. (Kliebenstein Decl. ¶ 2; Duggal Decl. ¶ 2.) Ms.
`
`Kliebenstein, serving as Registrant’s counsel of record, has no independent knowledge of Registrant
`
`or its operations aside from what she has learned through these privileged communications.
`
`(Kliebenstein Decl. ¶ 3.) Every single communication is protected from disclosure by the attorney-
`
`client privilege.
`
`D.
`
`Philip Morris refuses to withdraw its notice of deposition of Ms. Kliebenstein or
`even table the issue of whether Ms. Kliebenstein should be deposed pending the
`completion of other, less intrusive discovery.
`
`Counsel of record wrote to Philip Morris on August 2, 2017, explaining Philip Morris could
`
`obtain factual information about the Excusable Nonuse Statement from a Rule 30(b)(6) deposition
`
`of Registrant. (Kliebenstein Decl. Ex. D at 5-6.) Mr. Duggal was identified as the person to discuss
`
`the topics. (Id. at 3.) Ms. Kliebenstein proposed that the parties table the issue of Ms. Kliebenstein’s
`
`deposition until other depositions were complete in the hope that other testimony would render the
`
`issue of Ms. Kliebenstein’s deposition moot. (Id. at 5-6.) Philip Morris’ counsel, Mr. Nading,
`
`refused that offer. (Id. at 4-5.) In his correspondence, Philip Morris’ counsel did not deny the ability
`
`to obtain the information through other measures. (Id.) Instead, counsel seemed to take the position
`
`that, even if the testimony sought from Ms. Kliebenstein was cumulative to information that could
`
`be obtained through other means, Philip Morris was entitled to take Ms. Kliebenstein’s deposition
`
`because she filed the Excusable Nonuse Statement with the PTO. (Id.)
`
`Ms. Kliebenstein wrote to Philip Morris’s counsel again on August 9, 2017, seeking again to
`
`table the issue of Ms. Kliebenstein’s deposition pending completing the other noticed depositions.
`
`(Id. at 3.) Philip Morris again refused to do so. (Kliebenstein Decl. Ex. D at 2.) Because Philip
`
`Morris will neither withdraw its notice of the deposition of Ms. Kliebenstein nor table the issue until
`
`completion of the other depositions, it has forced Registrant to bring this Motion.
`
`
`
`
`5
`
`

`

`III.
`
`Legal Argument.
`
`A.
`
`Depositions of counsel of record are strongly disfavored.
`
`Rule 26(b)(2)(C) of the Federal Rules of Civil procedure requires that discovery be limited
`
`where, among other things, “the discovery sought is unreasonably cumulative or duplicative, or can
`
`be obtained from some other source that is more convenient, less burdensome, or less expensive.”
`
`Fed. R. Civ. P. 26(b)(2)(C)(i); see also Newkirk v. ConAgra Foods, Inc., No. 8:10-cv-22, 2010 U.S.
`
`Dist. LEXIS 60835, at *16-17 (D. Neb. May 27, 2010) (quashing subpoena for deposition of
`
`defendants’ counsel). Courts have applied Rule 26(b)(2)(C) to prevent depositions of a party’s
`
`attorneys where the information sought by the discovering party is available through other means.
`
`Newkirk, 2010 U.S. Dist. LEXIS 60835, at *16-17.
`
`Depositions of counsel are strongly disfavored, and only allowed where no other method of
`
`discovering vital factual information exists. The reasons for disfavoring the deposition of a party’s
`
`opposing counsel are numerous. One is the inherent danger of disclosure of communications
`
`protected from discovery by the attorney-client privilege or work-product protection.
`
`As the Eighth Circuit explained in Shelton,
`
`Taking the deposition of opposing counsel not only disrupts the adversarial system
`and lowers the standards of the profession, but it also adds to the already
`burdensome time and costs of litigation. It is not hard to imagine additional pretrial
`delays to resolve work-product and attorney-client privilege objections, as well as
`delays to resolve collateral issues raised by the attorney’s testimony. Finally, the
`practice of deposing opposing counsel detracts from the quality of client
`representation. Counsel should be free to devote his or her time and efforts to
`preparing the client’s case without fear of being interrogated by his or her opponent.
`Moreover, the “chilling effect” that such practice will have on the truthful
`communications from the client to the attorney is obvious.
`
`Shelton v. Am. Motors Corp., 805 F.2d 1323, 1327 (8th Cir. 1986); Deposition of a party’s counsel
`
`are fraught with the danger of inadvertent disclosure of privileged information, which places great
`
`strain on the attorney-client relationship and great burden on the party whose counsel is to be
`
`deposed. In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805-06 (Fed. Cir. 2000); Ecolab
`
`
`
`
`6
`
`

`

`USA Inc. v. Diversey, Inc., No. 12-1984, slop op. at 9 (D. Minn. May 17, 2013) (attached as Exhibit
`
`E to the Kliebenstein Decl.).
`
`Deposing a litigant’s attorney is improper unless (1) no other means exist to obtain the
`
`information sought other than deposing opposing counsel; (2) the information is relevant and
`
`nonprivileged; and (3) the information is crucial to the preparation of the case. Shelton, 805 F.2d at
`
`1327; see also Alomari v. Ohio Dep’t of Pub. Safety, 626 Fed. Appx. 558, 573-74 (6th Cir. 2015);
`
`Theriot v. Parish of Jefferson, 185 F.3d 477, 491 (5th Cir. 1999) (citing Shelton); Boughton v.
`
`Cotter Corp., 65 F.3d 823, 830 (10th Cir. 1995) (holding that a protective order is appropriate where
`
`“any one or more of the three Shelton criteria for deposition . . . are not met. (emphasis in original)).
`
`
`
`Here, Registrant can provide all facts about the Excusable Nonuse Statement in a Rule
`
`30(b)(6) deposition. Any other topic about the Excusable Nonuse Statement is privileged, and also
`
`irrelevant and not crucial to the preparation of the case. For at least these reasons, the noticed
`
`deposition of Ms. Kliebenstein is improper and Registrant’s Motion should be granted.
`
`B.
`
`Philip Morris can get all the information it seeks from Mr. Oliver Duggal and
`Registrant through depositions. Philip Morris has not exhausted less intrusive
`means of discovery.
`
`Rule 26 requires that discovery be limited where “the discovery sought is unreasonably
`
`duplicative, or can be obtained from some other source that is more convenient, less burdensome, or
`
`less expensive.” To that end, Philip Morris must show there is no way to obtain the relevant, non-
`
`privileged information sought other than deposing Ms. Kliebenstein. Shelton, 805 F.2d at 1327; see
`
`also Alomari, 626 Fed. Appx. at 573-74; Theriot, 185 F.3d at 491; Boughton, 65 F.3d at 830.
`
`The deposition notice for Ms. Kliebenstein states it will be about the Excusable Nonuse
`
`Statement. (Kliebenstein Decl. Ex. A.) Any discoverable information about that statement can be
`
`obtained from the Registrant itself through its Rule 30(b)(6) designee for Topic 30 in Philip Morris’
`
`Rule 30(b)(6) Notice. (Duggal Decl. ¶ 3.) All information provided to the PTO came ultimately
`
`
`
`
`7
`
`

`

`from Registrant, namely Mr. Duggal in his capacity as an employee of Registrant’s authorized
`
`representative. (Id.) There is nothing more to ask Ms. Kliebenstein that is not privileged, not
`
`irrelevant, or not crucial to this case.
`
`Philip Morris takes the position that the testimony it seeks from Ms. Kliebenstein is not
`
`cumulative of information available from a Rule 30(b)(6) deposition because there are alleged
`
`contradictions in the Excusable Nonuse Statement and Registrant’s discovery responses that Mr.
`
`Duggal verified in his capacity as a UCS employee. (Kliebenstein Decl. Ex. D at 5.) As an initial
`
`matter, there are no contradictions or inconsistencies. But most importantly, Philip Morris is able to
`
`explore these alleged contradictions by deposing Registrant through Mr. Duggal who will be
`
`its30(b)(6) designee on this topic. The information sought from Ms. Kliebenstein is cumulative of
`
`what Mr. Duggal will provide.
`
`C.
`
`All information Ms. Kliebenstein has learned about the Excusable Nonuse
`Statement were the result of privileged communications.
`
`
`
`Philip Morris appears to be taking the position that Ms. Kliebenstein signing the Declaration
`
`has made her a fact witness who is fair game to be deposed. (Id.) This is simply incorrect. Even if
`
`Ms. Kliebenstein had knowledge of facts relating to the Excusable Nonuse Statement that were not
`
`themselves covered by the attorney-client privilege, this would not subject Ms. Kliebenstein to
`
`questioning by deposition. See Spalding, 203 F.3d at 803 (“If an attorney-client communication
`
`could be discovered if it contained information known to others, then it would be the rare
`
`communication that would be protected and, in turn, it would be the rare client who would freely
`
`communicate to an attorney.”); Ecolab, slip op. at 6 (citing Spalding).
`
`
`
`Philip Morris cannot dispute that any information Ms. Kliebenstein has was derived from
`
`communications with Registrant’s representative. These communications were made while seeking,
`
`providing, or discussing legal advice. (Kliebenstein Decl. ¶ 2; Duggal Decl. ¶ 2.) The contents of
`
`these communications are protected from disclosure by the attorney-client privilege. Fed. R. Civ. P.
`
`8
`
`
`

`

`26(b)(1) (discovery is permitted only “regarding any nonprivileged matter that is relevant to any
`
`party’s claim or defense” (emphasis added)). This is true even if nonprivileged information was
`
`disclosed in these communications. Spalding, 203 F.3d at 803; Ecolab, slip op. at 6. A protective
`
`order preventing the deposition of Ms. Kliebenstein to protect the contents of these communications
`
`is thus appropriate. See, e.g., Chopra v. Townsend, Townsend & Crew LLP, No. 07-cv02447, 2008
`
`U.S. Dist. LEXIS 101551, at *8 (D. Colo. Nov. 28, 2008) (entering protective order based on
`
`assertion of attorney-client privilege).
`
`D.
`
`Any additional information obtainable from Ms. Kliebenstein is not relevant or
`crucial to this case.
`
`Philip Morris also cannot demonstrate that any non-privileged information it could seek
`
`based on Ms. Kliebenstein filing the Excusable Nonuse Statement with the PTO is relevant or
`
`crucial to preparing its case. To the extent any information in the Excusable Nonuse Statement
`
`relates to Philip Morris’s claim of abandonment for nonuse, the statement actually rebuts Philip
`
`Morris’s claims, explaining that goods bearing the CROSSROADS and Design mark were last sold
`
`to wholesalers in April 2014, less than two years before Philip Morris filed its petition for
`
`cancellation on February 8, 2016. (Duggal Decl. Ex. A; 1 TTABVUE.) Nothing in the Excusable
`
`Nonuse Statement relates to Philip Morris’s new proposed claim of abandonment for naked
`
`licensing. (Duggal Decl. Ex. A.) Philip Morris thus cannot demonstrate that the proposed deposition
`
`of Ms. Kliebenstein is crucial to its case as required by Shelton and its progeny.
`
`E.
`
`The notice of Ms. Kliebenstein’s deposition is part of Philip Morris’s ongoing
`pattern of harassment against Registrant.
`
`The cumulative nature of the testimony Philip Morris allegedly seeks from Ms.
`
`Kliebenstein, the fact that the testimony sought is not crucial to Philip Morris’s case, and the fact
`
`that Philip Morris refuses to even table discussion of the necessity of Ms. Kliebenstein’s deposition
`
`until after other depositions are complete exposes the deposition for what it really is: a step in Philip
`
`
`
`
`9
`
`

`

`Morris’s pattern of seeking to harass Registrant. It is not possible that Philip Morris is unaware of
`
`the disfavor with which courts view depositions of counsel. It is also not possible that Philip Morris
`
`is unaware of the disruptive nature such depositions have on parties and the attorney-client
`
`relationship. Despite this, and despite Registrant’s repeated requests to wait to take the issue up with
`
`the Board until after other depositions are completed, Philip Morris persists in violation of the letter
`
`and spirit of the Federal Rules of Civil Procedure. Fed. R. Civ. P. 1.
`
`Philip Morris takes these steps while refusing to respond to discovery in any way
`
`whatsoever (see generally 15 TTABVUE 16-17) and making baseless allegations of discovery
`
`malfeasance against Registrant. The only reasonable conclusion to be drawn from these tactics in
`
`totality is that Philip Morris seeks not only to harass Registrant, but also to burden Registrant with
`
`excessive costs while minimizing its own.
`
`IV. CONCLUSION
`
`
`
`In view of the above, Registrant respectfully requests that the Board grant its Motion and
`
`enter a Protective Order preventing Philip Morris from taking the deposition of Ms. Kliebenstein. In
`
`the alternative, Registrant respectfully requests that the Board enter an order permitting
`
`supplemental briefing on this topic upon completion of the 30(b)(6) deposition of Registrant, so that
`
`the parties can address whether there is any even arguable necessity to take Ms. Kliebenstein’s
`
`deposition at that time. Registrant also respectfully requests that the Board conduct a telephone
`
`conference in connection with this Motion pursuant to 37 C.F.R. § 2.120(j)(1) and T.B.M.P. §
`
`502.06(a).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: August 16, 2017
`
`
`
`Respectfully submitted,
`
`IP Services International, Inc.
`
`By its attorneys
`
`s/Heather Kliebenstein
`
`
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`10
`
`
`
`
`

`

`Heather J. Kliebenstein
`Eric R. Chad
`Merchant & Gould P.C. Suite 3200
`80 South Eighth Street
`Minneapolis, MN 55402
`Tel: 612.332.5300
`Fax: 612.332.9081
`
`Attorneys for Registrant
`
`
`
`
`
`
`11
`
`

`

`CERTIFICATE OF SERVICE
`
` I
`
` hereby certify that a copy of the foregoing REGISTRANT IP SERVICES INTERNATIONAL,
`
`INC.’S FOR A PROTECTIVE ORDER TO PREVENT THE DEPOSITION OF COUNSEL OF
`
`RECORD AND MEMORANDUM IN SUPPORT was filed electronically and served on this
`
`16th day of August 2017, via email to:
`
`Ann K. Ford, Esq.
`DLA Piper LLP
`500 8th Street, NW
`Washington, DC 20004
`dctrademarks@dlapiper.com
`
`
`
`
`Date: August 16, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`s/Abigail Krueger
` Abigail Krueger
`
`
`
`
`
`
`
`
`
`12
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
`THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Petitioner,
`
`Registrant.
`
`)
`)
`) Cancellation No. 92063134
`)
`)
`)
`)
`)
`)
`)
`
`
`PHILIP MORRIS USA INC.,
`
`
`
`
`IP SERVICES INTERNATIONAL, INC.
`
`
`
`
`
`
`
`
`DECLARATION OF OLIVER DUGGAL
`
`I, Oliver Duggal, do hereby state as follows:
`
`1.
`
`I am an employee of UCS, Inc., the authorized representative of Registrant IP Services
`
`International, Inc. (“IP Services”) in the United States.
`
`2.
`
`Since IP Services and UCS formed an attorney-client relationship with Merchant &
`
`Gould P.C. (“M&G”) in or around October 2016, all communications with Ms. Heather Kliebenstein,
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`a partner with M&G, were to seek or receive legal advice. I have been IP Services’ point of contact
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`with its counsel of record in this proceeding, Ms. Kliebenstein., and I have had an expectation of
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`privacy as to all of my communications with M&G.
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`3.
`
`In my capacity as an employee of IP Services’ agent, UCS, I authorized the filing of
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`the statement of excusable nonuse filed on May 19, 2017, in connection with Reg. No. 3,172,861 for
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`the trademark CROSSROADS and Design with the PTO. That Excusable Nonuse Statement is
`
`attached as Exhibit A. In that capacity, I provided IP Services and UCS’s lawyer, Ms. Kliebenstein,
`
`with the facts listed in the Excusable Nonuse Statement. On behalf of UCS and IP Services, I directed
`
`Ms. Kliebenstein to file it with the PTO. I will be able to talk about the facts in the Excusable Nonuse
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`Statement in the upcoming Rule 30(b)(6) deposition.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Dated: __August 16, 2017_____________
`
`
`_s/Oliver Duggal/______________________
`Oliver Duggal
`
`

`

`
`DUGGAL EXHIBIT A
`
`DUGGAL EXHIBIT A
`
`

`

`1.
`
`Tobacco products bearing the CROSSROADS and Design mark were last
`
`imported into the United States in or around January 2014. Those products were sold to
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`wholesalers between January and April 2014.
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`2.
`
`The product imported in or around January 2014 and sold to wholesalers between
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`January and April 2014 then worked its way through various channels of trade for 12 to 18
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`months. The CROSSROADS and Design mark thus remained in commerce before the public
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`through at least the end of 2015.
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`3.
`
`Since April 2014. one of the largest distributors ofproducts bearing the
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`CROSSROADS and Design mark folded and is no longer in business.
`
`4.
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`Additionally, one of two domestic manufacturers ofproducts bearing the
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`CROSSROADS and Design mark folded after its owner died. The other domestic manufacturer
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`made significant changes to its business and elected to stop manufacturing products bearing the
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`CROSSROADS and Design mark.
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`5.
`
`Since April 2014. the foreign manufacturer has elected to change its business for
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`financial and FDA regulatory reasons and is not currently manufacturing the products sold under
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`the CROSSROADS and Design mark.
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`6.
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`None of the decisions and events occurring at these businesses was within the
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`control of IP Services.
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`7.
`
`The CROSSROADS and Design mark is also presently subj ect to a cancellation
`
`proceeding (Cancellation No. 92063134). This proceeding has hindered IP Services’ efforts to
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`find new manufacturers and distributors for products bearing the mark.
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`8.
`
`IP Services is in negotiations with a foreign entity to assign or license the
`
`CROSSROADS and Design mark. Upon completion of these negotiations, the foreign entity
`
`

`

`intends to continue use of the CROSSROADS and Design mark in commerce in the United
`
`States. Such use should continue Within the next 6 to 12 months.
`
`

`

`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Petitioner,
`
`Registrant.
`
`
`
`)
`)
`) Opposition No. 92063134
`)
`)
`)
`)
`)
`)
`)
`)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`PHILIP MORRIS USA INC.,
`
`
`
`
`
`IP SERVICES INTERNATIONAL, INC.
`
`
`
`
`
`DECLARATION OF HEATHER J. KLIEBENSTEIN
`
`I, Heather J. Kliebenstein, do hereby state as follows:
`
`
`
`1.
`
`I am an attorney with the firm of Merchant & Gould P.C., counsel for Registrant,
`
`IP Services International, Inc. (“Registrant” or “IP Services”), in the above-captioned matter, and
`
`I submit this declaration in conjunction with IP Services International, Inc.’s Motion for a
`
`Protective Order to Prevent the Deposition of Counsel of Record.
`
`2.
`
`My firm and I replaced IP Services International Inc. and its authorized
`
`representative, UCS, Inc.’s, prior counsel in this proceeding on or around October 5, 2016. Since
`
`that time, I have had numerous conversations and exchanges of correspondence with Oliver Duggal,
`
`an employee of IP Services’ authorized representative, UCS, about this proceeding and trademark
`
`matters. These communications are protected from disclosure by the attorney-client privilege.
`
`3.
`
`I serve IP Services solely as its legal counsel. I do not fill any other roles within IP
`
`Services or its business.
`
`4.
`
`Mr. Duggal, as an employee of IP Services’ authorized representative, provided
`
`me with all of the facts recited in the Excusable Nonuse Statement. Mr. Duggal then approved
`
`the declaration and directed me to file it with the PTO.
`
`
`
`1
`
`

`

`5.
`
`Attached hereto as Exhibit A is a true and correct copy of the Notice of Deposition
`
`upon Oral Examination of Heather Kliebenstein, served by Philip Morris on July 26, 2017.
`
`6.
`
`Attached hereto as Exhibit B is a true and correct copy of the Notice of Deposition
`
`upon Oral Examination of Oliver Duggal, served by Philip Morris on July 26, 2017.
`
`7.
`
`Attached hereto as Exhibit C is a true and correct copy of the Notice of 30(b)(6)
`
`Deposition of Registrant IP Services International, Inc., served by Philip Morris on July 26, 2017.
`
`8.
`
`Attached hereto as Exhibit D is a true and correct copy of an email chain between
`
`John Nading and myself dating from July 26, 2017, to August 11, 2017.
`
`9.
`
`Attached hereto as Exhibit E is a true and correct copy of Ecolab USA Inc. v.
`
`Diversey, Inc., No. 12-1984, slip op. (May 17, 2013).
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`
`
`Date: August 16, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`s/Heather Kliebenstein
` Heather J. Kliebenstein
`
`
`
`
`
`
`
`
`
`2
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing DECLARATION OF
`
`
`
`
`HEATHER J. KLIEBENSTEIN was filed electronically and served on this 5th day of October
`
`2016, via email and First Class Mail, postage pre-paid to:
`
`Ann K. Ford, Esq.
`DLA Piper LLP
`500 8th Street, NW
`Washington, DC 20004
`dctrademarks@dlapiper.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`s/Abigail Krueger
`Abigail Krueger
`
`
`
`
`
`
`
`3
`
`

`

`
`KLIEBENSTEIN
`EXHIBIT A
`
`KLIEBENSTEIN
`
`EXHIBIT A
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`In the matter of Trademark
`Registration No. 3172861
`Mark: CROSSROADS & Design
`Filed: February 28, 2005
`Registered: November 21, 2006
`
`In the matter of Trademark
`Registration No. 3140971
`Mark: NYC CLASSIC & Design
`Filed: April 25, 2005
`Registered: September 12, 2006
`
`
`
`
`
`
`
`
`PHILIP MORRIS USA INC.,
`
`
`
`
`
`
`
`
`
`
`Petitioner,
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`IP SERVICES INTERNATIONAL, INC.,
`
`
`
`
`
`
`
`
`
`Registrant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`In the matter of Trademark
`Registration No. 4218677
`Mark: CARPE DIEM & Design
`Filed: February 15, 2011
`Registered: October 2, 2012
`
`
`
`In the matter of Trademark
`Registration No. 4261884
`Mark: CARPE DIEM & Design
`Filed: February 15, 2011
`Registered: December 18, 2012
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`Cancellation No. 92063134
`
`NOTICE OF DEPOSITION UPON ORAL EXAMINATION OF
`
`HEATHER KLIEBENSTEIN
`
`
`To: Merchant & Gould P.C.
`
`80 South Eighth Street, Suite 3200
`
`Minneapolis, Minnesota 55402
`
`Attn: Heather Kliebenstein, Esq.
`
`
`
`
`Please take notice that pursuant to Rules 30(b)(6) and 30(b)(1) of the Federal Rules of
`
`Civil Procedure and 37 C.F.R. § 2.120, Petitioner Philip Morris USA Inc., by and through its
`
`undersigned counsel, will take the deposition upon oral examination of Heather Kliebenstein, in
`
`connection with the Combined Declaration of Use and/or Excusable Nonuse/Application for
`
`Renewal of Registration of a Mark under Sections 8 & 9, which was signed by Ms. Kliebenstein
`
`EAST\145002292.2
`
`

`

`
`
`and filed with the United States Patent and Trademark Office on May 19, 2017 in connection
`
`with the CROSSROADS & Design Mark (U.S. Trademark Registration No. 3172861), before a
`
`Notary Public or other officer duly authorized by law to administer oaths, commencing on
`
`Wednesday, August 16, 2017, at 9:00 a.m. local time at the offices of DLA Piper LLP (US) at 80
`
`South Eighth Street, Suite 2800, Minneapolis, Minnesota 55402-2013. The deposition will be
`
`recorded by stenographic means and will continue until completed.
`
`
`Dated: July 26, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`/s/ John M. Nading
`Ann K. Ford
`John M. Nading
`DLA PIPER LLP (US)
`500 Eighth Street, N.W.
`Washington, D.C. 20004
`Tel. 202-799-4157
`Fax 202-799-5000
`
`Attorneys for Petitioner Philip Morris USA Inc.
`
`
`EAST\145002292.2
`
`- 2 -
`
`
`
`

`

`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`This is to certify that a copy of the foregoing NOTICE OF DEPOSITION UPON
`
`ORAL EXAMINATION OF HEATHER KLIEBENSTEIN was served via email to counsel
`
`of record:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`this 26th day of July, 2017.
`
`
`
`
`
`
`Heather Kliebenstein
`Eric R. Chad
`Merchant & Gould P.C.
`80 South Eighth