Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA843763
`09/05/2017
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92063134
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`Party
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`Correspondence
`Address
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`Plaintiff
`Philip Morris USA Inc.
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`ANN K FORD
`DLA PIPER LLP (US)
`500 8TH ST NW
`WASHINGTON, DC 20004
`UNITED STATES
`Email: ann.ford@dlapiper.com, thomas.zutic@dlapiper.com,
`john.nading@dlapiper.com, ashley.joyce@dlapiper.com, dctrade-
`marks@dlapiper.com
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Opposition/Response to Motion
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`John M. Nading
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`john.nading@dlapiper.com
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`/John M. Nading/
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`09/05/2017
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`Attachments
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`Petitioner Response in Opp. to Motion for Protective Order.pdf(1188739 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of Trademark
`Registration No. 3172861
`Mark: CROSSROADS & Design
`Filed: February 28, 2005
`Registered: November 21, 2006
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`In the matter of Trademark
`Registration No. 3140971
`Mark: NYC CLASSIC & Design
`Filed: April 25, 2005
`Registered: September 12, 2006
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`PHILIP MORRIS USA INC.,
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`Petitioner,
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`v.
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`IP SERVICES INTERNATIONAL, INC.,
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`Registrant.
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`In the matter of Trademark
`Registration No. 4218677
`Mark: CARPE DIEM & Design
`Filed: February 15, 2011
`Registered: October 2, 2012
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`
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`In the matter of Trademark
`Registration No. 4261884
`Mark: CARPE DIEM & Design
`Filed: February 15, 2011
`Registered: December 18, 2012
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`Cancellation No. 92063134
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`PETITIONER’S RESPONSE IN OPPOSITION TO REGISTRANT’S MOTION FOR A
`PROTECTIVE ORDER TO PREVENT DEPOSITION OF COUNSEL OF RECORD
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`Petitioner Philip Morris USA Inc. (“Petitioner” or “PM USA”), by and through the
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`undersigned counsel, files this Response in Opposition to Registrant IP Services International,
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`Inc.’s (“Registrant” or “IP Services”) Motion for a Protective Order to Prevent the Deposition of
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`Counsel of Record (“Motion” or “Motion for Protective Order”) (20 TTABVUE). Issuance of a
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`protective order “totally prohibiting a deposition occurs only in extraordinary circumstances,”
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`T.B.M.P. § 412.06(a), and Registrant’s Motion seriously misrepresents the facts and misleads the
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`U.S. Trademark Trial and Appeal Board (“Board” or “TTAB”). Indeed, Registrant cannot show
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`that any attorney-client privilege attaches to the communications between Registrant’s counsel
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`Heather Kliebenstein and Oliver Duggal, who is not an officer, director, or employee of
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`Registrant. As discussed more fully herein, Ms. Kliebenstein has made herself an important fact
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`witness regarding the statements she made in the Combined Declaration of Use and/or Excusable
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`Nonuse/Application for Renewal of Registration of a Mark under Sections 8 & 9, which she
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`signed and filed with the United States Patent and Trademark Office (“USPTO”) on May 19,
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`2017 in connection with the CROSSROADS & Design Mark, U.S. Trademark Registration No.
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`3172861 (one of the four registrations at issue) (“Declaration of Excusable Nonuse” or
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`“Declaration”). As set out below, Registrant continues to give Petitioner the run-around by
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`obstructing and obfuscating discovery of the key facts at issue in this Cancellation Proceeding
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`(“Proceeding”). Accordingly, the Board should deny Registrant’s Motion and all the requested
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`relief therein, and order Ms. Kliebenstein to appear for her deposition.
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`I.
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`BACKGROUND
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`This Proceeding, which seeks cancellation for abandonment for non-use and (Petitioner
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`anticipates shortly) for naked licensing1 of four trademark registrations,2 would be simple if
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`Registrant were held accountable to provide truthful and forthright discovery responses. It is
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`clear that Registrant is not using the IP Services Marks nor is Registrant even an ongoing
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`company. Had the Board required Registrant to provide any evidence to demonstrate that it is an
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`1 Registrant has stated unequivocally in writing that it does not oppose Petitioner’s request to
`amend its Petition to add a second claim for abandonment for naked licensing. (See, e.g., 19
`TTABVUE 2.) A signed copy of Petitioner’s proposed Amended Petition for Cancellation is
`already before the Board. (18 TTABVUE 18-30.)
`2 Registration No. 3172861 for the trademark CROSSROADS & Design (“CROSSROADS &
`Design Mark”), Registration No. 3140971 for the trademark NYC CLASSIC & Design (“NYC
`CLASSIC & Design Mark”), Registration No. 4218677 for the trademark CARPE DIEM &
`Design (“CARPE DIEM & Design Mark”), and Registration No. 4261884 for the second
`trademark CARPE DIEM & Design (“Second CARPE DIEM & Design Mark”) (collectively,
`hereinafter, the “IP Services Marks” or “Registrations”).
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`ongoing business (see 11 TTABVUE 11; cf. 5 TTABVUE 10-11 & 10 TTABVUE 10-11), then
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`this ruse would most likely have been fully exposed almost a year ago.3
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`Instead, it was not until July 19, 2017 (a year-and-half after the Proceeding was first
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`filed), that Registrant disclosed the name of anyone allegedly directly connected with Registrant
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`(Aaron Shoaf, discussed further below), and August 22, 2017, that Registrant clarified that Mr.
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`Shoaf is an officer and director of Registrant. (Decl. of John Nading (“Nading Decl.”) at ¶ 4,
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`Exh. A (email chain between July 10 and 19, 2017); ¶ 5, Exh. B (email chain between July 26
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`and August 24, 2017).4) This inability to tie anyone directly to Registrant is highly important as
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`Registrant cannot show that there is any attorney-client privilege attaching to communications
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`between Ms. Kliebenstein and non-party UCS consultant Oliver Duggal regarding her
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`representation of Registrant.
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`In the Board’s Order on Petitioner’s Motion for Sanctions (“Sanctions Order”), the Board
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`admonished Registrant “for failing to adhere to the Board’s order [on the Motion to Compel
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`(“Compelling Order”) (11 TTABVUE)] as outlined [in the Sanctions Order],” and ordered
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`Registrant to provide “current contact and job title information of Mr. [Oliver] Duggal” within
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`ten (10) days of the Sanctions Order. (17 TTABVUE 4.) On July 19, 2017, almost two weeks
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`after the Board’s July 6, 2017 deadline,5 and after much follow-up from Petitioner, Registrant
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`finally provided “job title information” for Mr. Duggal. (Nading Decl. at ¶ 4, Exh. A.)
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`3 As set out herein, the Board can now clearly see how this information is highly relevant to the
`cancellation for abandonment and naked licensing claims.
`4 A review of the email chain shows the fallacy of many of Registrant’s statements in its Motion
`about communications between counsel. (Cf. 20 TTABVUE 3, 6.)
`5 As this delinquent response is a violation of the Board’s Sanctions Order, Petitioner reserves its
`right to “renew its motion for sanctions in the nature of judgment” for Registrant’s failure to
`comply, as contemplated by the Board. (17 TTABVUE 4.)
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`Registrant had initially said on July 6, 2017, only that “Mr. Duggal is an Authorized
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`Representative of IP Services.” (Id. at ¶ 6, Exh. C (Registrant’s Second Supp. Answer to
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`Petitioner’s Interrogatory No. 12).) Petitioner objected that “authorized representative” is not
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`“job title information,” nor does it indicate what Mr. Duggal’s affiliation with Registrant is or
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`was that would allow him to be an “authorized representative,” and/or whom at Registrant
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`granted Mr. Duggal authorization to represent an entity for which he otherwise would not be
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`authorized to act. (Id. at ¶ 4, Exh. A.) On July 19, Registrant finally begrudgingly confirmed
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`that: “Mr. Duggal is not, and never has been, employed by IP Services. Mr. Duggal represents
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`IP Services through his employment as a business consultant and authorized signatory with third
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`party UCS.” (Id. (emphasis added).)
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`Registrant then disclosed for the first time ever a new witness and the purported fact that:
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`“IP Services authorized UCS to represent IP Services in connection with licensing of IP
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`Services’ trademarks. This agreement was executed by Aaron Shoaf on behalf of IP Services
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`and Mr. Duggal on behalf of UCS.” (Id.) Suspiciously, this was the first time that Mr. Shoaf
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`had been disclosed, and further, Mr. Shoaf is the only person disclosed in the case who allegedly
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`has any direct tie to Registrant.6 Indeed, Registrant’s further disclosure on August 22, 2017 that
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`Mr. Shoaf is an officer and director of Registrant (Id. at ¶ 5, Exh. B), is a violation of the Board’s
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`Compelling Order which ordered Registrant “to provide the names of its corporate officers, as
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`6 Petitioner noticed the deposition of Mr. Shoaf for August 25, 2017, but Registrant’s counsel
`had a conflict that day and, at least as of September 5, 2017, has been unable to get in contact
`with Mr. Shoaf to re-schedule his deposition. (Nading Decl. at ¶ 5, Exh. B; ¶ 7, Exh. D (Notice
`of Deposition of Aaron Shoaf).) Indeed, Ms. Kliebenstein has said, “Mr. Duggal is my only
`vehicle to reach Mr. Shoaf.” (Id. at ¶ 5, Exh. B.) Counsel for the parties have agreed to re-
`schedule for September the deposition of Mr. Shoaf (assuming Registrant is able to contact Mr.
`Shoaf – an officer and director of Registrant, no less – and provide alternative dates).
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`well as their addresses (not that of Respondent’s counsel).” (11 TTABVUE 11; see also 13
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`TTABVUE 15-16; 16 TTABVUE 6.)
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`Registrant also proceeded to make the astounding assertion that: “This [“authorization”]
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`agreement is memorialized as a license agreement that permits UCS to freely sub-license certain
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`of IP Services’ trademarks provided a percentage of the value received by UCS is provided to IP
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`Services. This agreement was previously produced bearing the production numbers IPS000074-
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`75.” (Nading Decl. at ¶ 4, Exh. A.) This two-page document is already before the Board (12
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`TTABVUE 127-28 (Confidential – Filed Under Seal)), where the Board can readily see that it
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`says nothing of the kind regarding Mr. Duggal being an “authorized representative” for
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`Registrant. Id.
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`The Board ordered Registrant to provide complete responses a long time ago. (11
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`TTABVUE 7-11.) For that reason, information disclosed by Registrant for the first time in Ms.
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`Kliebenstein’s Declaration and in July and August 2017, would have been available prior to the
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`Board’s Compelling Order and should have been disclosed as part of Registrant’s compliance
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`with that Order. On that point, too, Registrant has never formally disclosed in this Proceeding
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`the facts enumerated in the May 2017 Declaration, which “facts” directly contradict Registrant’s
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`protestations in this case that it is allegedly using all four of the IP Services Marks.7 To the
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`contrary, it was Petitioner who discovered the existence of this Declaration and its novel “facts”
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`of “excusable nonuse.” Registrant has either held back relevant, responsive facts or is making up
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`“alternative facts” to disclose, when forced to do so, as the case goes forward. This course of
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`conduct cannot be allowed to continue, and Ms. Kliebenstein, who has made herself a key fact
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`7 Amazingly, in its recent responses to Petitioner’s Second Requests for Admissions, Registrant
`is unable to admit or deny that it has not disclosed the specific facts set out in the Declaration.
`(Nading Decl. at ¶ 8, Exh. E (Registrant’s Responses to Second Requests for Admissions) (in
`particular, Nos. 34-40).)
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`witness on how and when she came to know these “facts” attested to in her Declaration of
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`Excusable Nonuse, must be ordered to appear for her deposition.
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`II.
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`ARGUMENT
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`A.
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`No Attorney-Client Privilege Exists Regarding Facts at Issue in Deposition.
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`As set out in detail above, Registrant cannot show any attorney-client privilege attaches
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`to communications between Ms. Kliebenstein and Mr. Duggal, who allegedly instructed Ms.
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`Kliebenstein to file the Declaration of Excusable Nonuse on behalf of Registrant. (Cf. 20
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`TTABVUE 8-9.) Registrant admits that all of the information in the Declaration allegedly came
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`from “Mr. Duggal in his capacity as an employee of Registrant’s authorized representative” (id.
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`at 9, 18), not from Registrant. (See also id. at 14.) But Registrant is the party in this Proceeding,
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`not Mr. Duggal or his purported employer UCS.
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`“[A] party asserting the attorney-client privilege has the burden of establishing the
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`[existence of an attorney-client] relationship and the privileged nature of the communication.”
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`Allstate Insur. Co. v. Nassiri, No. 2:08-cv-00369, 2011 WL 810088, at *2 (D. Nev. Mar. 1,
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`2011) (citing United States v. Graf, 610 F.3d 1148, 1156 (9th Cir. 2010), quoting United States
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`v. Ruehle, 583 F.3d 600, 607 (9th Cir. 2009)). Unsubstantiated assertions that Mr. Duggal is
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`“Registrant’s authorized representative” (20 TTABVUE 6), are not sufficient to establish
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`attorney-client privilege, especially when they are belied by the facts. Further, Registrant has not
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`shown and cannot show how Mr. Duggal can avail himself of the attorney-client privilege with
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`Registrant’s counsel in this Proceeding which is against Registrant’s Registrations. To the
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`contrary, Registrant and Ms. Kliebenstein are unable to show anyone at Registrant who has been
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`giving Ms. Kliebenstein instructions in this Proceeding, let alone communicating with her or Mr.
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`Duggal. (Cf. id. at 14, 18.) Indeed, as noted above, Ms. Kliebenstein has admitted, “Mr. Duggal
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`is my only vehicle to reach Mr. Shoaf.” (Nading Decl. at ¶ 5, Exh. B.)
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`B.
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`Narrow Scope of Heather Kliebenstein’s Deposition.
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`The Notice of Deposition of Ms. Kliebenstein is specifically tailored to the Declaration of
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`Excusable Nonuse. (20 TTABVUE 22-24.) Registrant does not dispute this fact in its Motion.
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`(See id. at 2, 8.) Ms. Kliebenstein made herself a fact witness on the Declaration of Excusable
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`Nonuse. She signed and filed the Declaration with the USPTO declaring, among other things,
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`that:
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`• To the best of the signatory’s knowledge, information, and belief, formed after an
`inquiry reasonable under the circumstances, the allegations and other factual
`contentions made above have evidentiary support.
`• The signatory being warned that willful false statements and the like are
`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that
`such willful false statements and the like may jeopardize the validity of this
`submission and the registration, declares that all statements made of his/her own
`knowledge are true and all statements made on information and belief are
`believed to be true.
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`As only Ms. Kliebenstein knows, and as Petitioner seeks to find out in deposition,
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`Petitioner is entitled to know the basis for the Declaration of Excusable Nonuse that Ms.
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`Kliebenstein signed, especially as she has attested to facts never previously disclosed in
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`discovery and which contradict statements made in pleadings and discovery. Given the detailed
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`factual basis set out in her Declaration, which information was entirely omitted from any
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`discovery responses, either before or after the Compelling Order, Petitioner absolutely has the
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`right to know how she came by this information and when.
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`Petitioner strongly disputes the assertion that the discovery sought from Ms. Kliebenstein
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`“can be obtained from a Rule 30(b)(6) deposition of Registrant” and that “questions about the
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`facts in the [Declaration of Excusable Nonuse] will be answered fully by Registrant’s Rule
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`30(b)(6) designee, Mr. Oliver Duggal.” (20 TTABVUE 2-3.) To the contrary, in its recent
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`responses to Petitioner’s Second Sets of Interrogatories and Second Requests for Production,
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`Registrant could not answer basic questions seeking detail as to the allegations in the Declaration
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`without referring full-circle to the Declaration. (Nading Decl. at ¶ 9, Exh. F; and ¶ 10, Exh. G
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`(Registrant’s Answers to Second Set of Interrogatories (in particular, Nos. 31-34), and
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`Responses
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`to Second Requests for Production (in particular, No. 64), respectively.)
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`Additionally, Registrant stated in response to every one of the second document requests (except
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`for No. 64, which said “no responsive documents exist in [its] possession”), that “non-public,
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`non-privileged documents responsive to this request and that relate to the subject matter of this
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`Cancellation Proceeding that can be located upon a reasonable search, if any, will be produced.”
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`(Id. at ¶ 10, Exh. G.) But Ms. Kliebenstein’s cover letter accompanying Registrant’s responses
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`said: “Our client is reviewing its files to determine if any responsive documents exist, and we
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`will provide those documents shortly.” (Id. at ¶ 11, Exh. H (August 25, 2017 letter from Ms.
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`Kliebenstein).) To date, Petitioner has received no documents in response to the second
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`document requests. (Id. at ¶ 16.) As such, efforts to get information from Registrant explaining
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`the Declaration remain futile. Thus, the facts about how and when Ms. Kliebenstein came by the
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`information in her Declaration are not cumulative, irrelevant, and “non-crucial.” (Contra 20
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`TTABVUE 4.)
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`This case is not at all similar to the facts in Shelton v. American Motors Corp., 805 F.2d
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`1323 (8th Cir. 1986), the main case Registrant relies upon. There, documents on the exact issues
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`to be the subjects of the pending deposition had been produced and other fact witnesses of the
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`defendant who could testify on the issues had been offered. Id. at 1328-29. Moreover, the
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`Shelton Court specifically noted: “We do not hold that opposing trial counsel is absolutely
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`immune from being deposed. We recognize that circumstances may arise in which the court
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`should order the taking of opposing counsel’s deposition.” Id. at 1327 (emphasis added).8
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`As well-documented in Petitioner’s pleadings before the Board, Petitioner has been
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`seeking discovery and documents, including information on any relevant deponents, from
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`Petitioner since the beginning of this Proceeding in February 2016. Deposing Ms. Kliebenstein
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`is the only means to obtain the information as to how and when she came by the information in
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`her Declaration; the information is highly relevant where Registrant has violated Board Orders
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`previously and continues to play fast-and-loose with its obligations and the information is not
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`covered by any privilege attaching to communications between Ms. Kliebenstein and her
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`purported source, Mr. Duggal; and the information is crucial to the prosecution of this case. See
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`id.
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`This case is also unlike Boughton v. Cotter Corp., 65 F.3d 823, 830-31 (10th Cir. 1995),9
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`another case cited by Registrant, where the plaintiffs “did not even fully explore those matters
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`8 The Shelton Court simply limited those circumstances “to where the party seeking to take the
`deposition has shown that (1) no other means exist to obtain the information than to depose
`opposing counsel; (2) the information sought is relevant and nonprivileged; and (3) the
`information is crucial to the preparation of the case.” 805 F.2d at 1327 (internal citation
`omitted). Some circuits, however, like the Second Circuit, have explicitly rejected the Shelton
`rule. See In re Friedman, 350 F.3d 65, 71-2 (2d Cir. 2003) (Sotomayor) (“[W]e have never
`adopted the Shelton rule and have stated specifically that the disfavor with which the practice of
`seeking discovery from adversary counsel is regarded is not a talisman for the resolution of all
`controversies of this nature. Gould Inc. v. Mitsui Min. & Smelting Co., Ltd., 825 F.2d 676, 680
`n.2 (2d Cir. 1987). Indeed, only the Sixth Circuit has followed the Eighth in adopting the
`Shelton rule. See Nationwide Mut. Ins. Co. v. Home Ins. Co., 278 F.3d 621, 628 (6th Cir. 2002)
`(adopting Shelton ).”). Thus the Friedman Court reversed the lower court, which had refused to
`order the deposition of former counsel and current counsel in another proceeding, but found that
`since counsel had voluntarily agreed to submit to the deposition, actually ordering it to go
`forward was “moot.”)
`9 This Proceeding is also nothing like other cases cited by Registrant. See Theriot v. Parish of
`Jefferson, 185 F.3d 477, 491 (5th Cir. 1999) (affirming order quashing deposition subpoenas
`where “the record [was] voluminous and present[ed] a more than [sic] adequate alternative
`source for the proof intervenor’s counsel seeks to meet the [standard required for the case]”);
`(continue)
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`upon which they wished to inquire of defendant’s counsel with the witnesses they did depose.”
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`Ms. Kliebenstein, who signed the Declaration, is the only deponent in possession of information
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`about how and when she became aware of the facts supporting her Declaration. Further,
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`Petitioner has tried for over a year to locate a single employee of Registrant to be deposed
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`concerning the facts at issue in the Cancellation Proceeding. Registrant has been unable to
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`provide a single deponent, save for Oliver Duggal, a non-party. Mr. Shoaf was only mentioned
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`for the first time in July 2017 when Registrant was pressed to try to explain Mr. Duggal’s
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`identity. On that point, too, Ms. Kliebenstein asked the undersigned counsel in a call on August
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`22, 2017 if Petitioner would agree to table Mr. Shoaf’s deposition until after the Rule 30(b)(6)
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`deposition of Registrant and deposition of Mr. Duggal, which Petitioner declined to do. (Nading
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`Decl. at ¶ 17.) As noted above, Registrant has still not provided alternative dates to re-schedule
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`Mr. Shoaf’s deposition in September, however. (Id.)
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`The non-privileged information needed from Ms. Kliebenstein should not be shielded
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`merely because she is a lawyer. Indeed, the Federal Rules of Civil Procedure anticipate such
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`discovery:
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`It is inconceivable that had the drafters of the Federal Rules of Civil Procedure,
`the Supreme Court or Congress intended to exempt attorneys from the provisions
`of Rule 30 or to otherwise limit discovery from attorneys, they would not have
`included a provision in Rule 30 similar to that contained in Rule 26(b)(3). Had
`the Court or Congress intended to engraft a preliminary showing when deposition
`discovery was sought from attorneys, such an exception would likely have been
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`
`(continued)
`Newkirk v. Conagra Foods, Inc., No. 8:10-cv-22, 2010 WL 2135263, at *6 (D. Neb. May 27,
`2010) (granting motion to quash deposition of attorney where Conagra had “already produced
`[the report at issue], thousands of pages of related non-privileged documents, and documents
`relating to the [studies at issue]” and made available “persons most knowledgeable on these
`documents and issues” who had already been deposed); In re Spalding Sports Worldwide, Inc.,
`203 F.3d 800, 53 U.S.P.Q.2d 1747 (Fed. Cir. 2000) (patent case discussing whether attorney-
`client privilege applies to an invention record); Ecolab USA, Inc. v. Diversey, Inc., No. 12-1984
`(D. Minn. May 17, 2013) (patent case).
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`found in Rule 30 or otherwise within the Rules of Civil Procedure. Attorneys with
`discoverable facts, not protected by attorney-client privilege or work product, are
`not exempt from being a source for discovery by virtue of their license to practice
`law or their employment by a party to represent them in litigation.
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`Newkirk, 2010 WL 2135263, at *4 (emphasis in original). Accordingly, Ms. Kliebenstein’s
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`deposition must proceed. Allstate Insur. Co., 2011 WL 810088, at *4 (allowing the deposition
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`of counsel to proceed); Hina v. Anchor Glass Container Corp., 2:05-CV-008, 2008 WL
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`2201979, at *3 (S.D. Ohio May 23, 2008) (permitting deposition of litigation counsel to proceed
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`as she “is the only witness who has filed an affidavit contradicting [another] affidavit [in the
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`case]. By doing so, [counsel] has offered herself as a witness on a substantive issue in this case.
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`It is not immediately apparent to the Court that anyone else can testify as to the timing of [such
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`facts in the case].”).
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`Petitioner cannot rely merely on Mr. Duggal’s testimony, particularly when Mr. Duggal
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`is the one who has been purportedly verifying the interrogatory answers and supplemental
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`answers served to date, but failed to raise these alleged facts and even verified contrary
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`positions.10 Mr. Duggal is not even an employee, officer, or director of Registrant. Petitioner is
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`entitled to explore the factual basis, if any, for Ms. Kliebenstein’s statements in the Declaration,
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`and the reasons why the statements in it contradict discovery responses sworn to by Mr. Duggal.
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`As Ms. Kliebenstein is a percipient fact witness as to all of those issues and Mr. Duggal is not,
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`Petitioner is entitled to depose her.
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`10 While Registrant has not provided a verification for its answers to Petitioner’s Second Set of
`Interrogatories, it is most likely the verification will be signed by Mr. Duggal once again.
`Peculiarly, Registrant continues to be unable to answer basic questions about Mr. Duggal.
`(Nading Decl. at ¶ 9, Exh. F (in particular, Nos. 37-39).) Further, Registrant makes flat-out
`incorrect statements about documents it has submitted to the USPTO, claiming that a Declaration
`of Use filed with the USPTO on September 9, 2016 for the NYC CLASSIC & Design Mark,
`U.S. Trademark Registration No. 4218677 (at issue in this Proceeding), is a “Declaration of
`Excusable Nonuse . . . and associated specimen of use.” (Id. (No. 40).)
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`Thus, Ms. Kliebenstein has made herself a highly relevant fact witness. Petitioner is
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`entitled to take her deposition as a self-declared fact witness on highly relevant facts, especially
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`given that Registrant has had such a difficult time providing information in discovery about
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`parties and witnesses; for example, about Registrant, purported licensees, Mr. Duggal (one of
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`three witnesses in Registrant’s Initial Disclosures), and cannot provide any identifying
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`information for the other two witnesses named in Registrant’s own Initial Disclosures (Rene Cox
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`and Richard Cutler), nor these individuals’ purported knowledge as witnesses in contravention of
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`Fed. R. Civ. P. 26(a)(1)(A)(i) and 37 C.F.R. § 2.120(a)) (see 5 TTABVUE 11). As such,
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`Petitioner maintains its right to take Ms. Kliebenstein’s deposition in connection with the
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`Declaration of Excusable Nonuse regardless of any other factual witness testimony.
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`C.
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`Registrant’s Continued Violation of Board’s Compelling Order.
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`The Board had previously ordered Registrant to serve complete responses to discovery
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`requests in its Compelling Order (11 TTABVUE 7-11), and in its most recent Sanctions Order,
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`the Board strongly admonished Registrant and allowed Petitioner to renew its motion for
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`sanctions in the nature of judgment. (17 TTABVUE 4.) As set out above, with Ms.
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`Kliebenstein’s Declaration, Registrant continues to flout Board Orders and obfuscate.
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`Prior to Ms. Kliebenstein’s Declaration, Registrant had previously claimed no knowledge
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`of use because of its alleged licensing of the IP Services Marks. Specifically, Registrant has
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`stated in its discovery responses that it “is not in possession, custody, or control of information”
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`concerning sales of goods and advertising for the IP Services Marks because Registrant “does
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`not sell, market, or advertise any goods directly to consumers;” instead, Registrant stated that it
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`“licenses the rights to use the IP Services Marks to third-parties.” (13 TTABVUE 27-28.)
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`Registrant has also stated in its discovery responses that it does not have information concerning
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`channels of trade and marketing methods for the IP Services Marks because Registrant does not
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`sell, market, or advertise goods to consumers; instead, Registrant claimed that these activities are
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`or have been done by manufacturers, distributors, and other third-parties of which IP Services is
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`not even aware. Registrant further stated that it did not control where these products were sold
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`or how they were sold to consumers. (12 TTABVUE 31-32.) Mr. Duggal verified these
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`responses. (17 TTABVUE 4 n.3.)
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`Yet, following the Sanctions Order, Registrant belatedly disclosed for the first time that
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`Mr. Duggal, the man behind the curtain, is purportedly an employee of third-party UCS, and that
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`Registrant allegedly “authorized UCS to represent IP Services in connection with licensing of IP
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`Services’ trademarks” (Nading Decl. at ¶ 4, Exh. A.) (As discussed above, Registrant provides
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`no support for this assertion, including no one at Registrant who can even pretend to verify it.)
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`Amazingly, Mr. Duggal now admits in his declaration in support of Registrant’s Motion that he
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`has been Registrant’s “point of contact” with Ms. Kliebenstein, and that he provided Ms.
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`Kliebenstein with the facts listed in her Declaration of Excusable Nonuse. (20 TTABVUE 14.)
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`Ms. Kliebenstein further avers in her declaration in support of Registrant’s Motion that Mr.
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`Duggal provided her with “all of the facts” in her Declaration of Excusable Nonuse. (20
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`TTABVUE 18.) Any information in the Declaration would, on its face, have been within
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`Registrant’s knowledge prior to the Board’s Compelling Order. As Mr. Duggal is the one and
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`only person who has purportedly verified the interrogatory answers and supplemental answers
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`served to date, he failed to raise the alleged facts in the Declaration and even verified contrary
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`positions.
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`The fact that “Registrant” cavalierly acknowledges willful obstruction and withholding of
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`responsive and relevant information in discovery cannot be condoned. Registrant’s continued
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`failure to cooperate in discovery and comply with Board Orders is sanctionable, and Registrant
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`has improperly delayed a judgment in this Cancellation Proceeding. Petitioner is entitled to take
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`the deposition of Ms. Kliebenstein in connection with her Declaration if for no other reason than
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`Mr. Duggal’s testimony alone cannot be trusted to say how and when Ms. Kliebenstein first
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`learned of the facts she attests to in her Declaration.
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`D.
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`Ongoing Duty to Supplement Discovery Responses.
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`Registrant has an ongoing obligation to formally supplement its discovery responses. See
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`T.B.M.P. § 408.03 (“the duty to supplement disclosures and discovery responses in proceedings
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`before the Board is governed by Fed. R. Civ. P. 26(e)(1) and (2)”); Fed. R. Civ. P. 26(e)(1) (“A
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`party who has . . . responded to an interrogatory, request for production, or request for
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`admission—must supplement or correct its disclosure or response: (A) in a timely manner if the
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`party learns that in some material respect the disclosure or response is incomplete or incorrect,
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`and if the additional or corrective information has not otherwise been made known to the other
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`parties during the discovery process or in writing . . . .”).
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`“A party served with a request for discovery has a duty to thoroughly search its records
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`for all information properly sought in the request, and to provide such information to the
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`requesting party within the time allowed for responding to the request . . . . A responding party
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`which, due to an incomplete search of its records, provides an incomplete response to a
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`discovery request, may not thereafter rely at trial on information from its records which was
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`properly sought in the discovery request but was not included in the response thereto (provided
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`that the requesting party raises the matter by objecting to the evidence in question) unless the
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`response is supplemented in a timely fashion pursuant to Fed. R. Civ. P. 26(e).” T.B.M.P. §
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`408.02.
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`Despite R