Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1026507
`
`Filing date:
`
`01/02/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92071067
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Off-Spec Solutions, LLC
`
`SCOTT D SWANSON
`SHAVER & SWANSON LLP
`PO BOX 877
`BOISE, ID 83701
`UNITED STATES
`swanson@shaverswanson.com, amy@shaverswanson.com
`208-345-1122
`
`Submission
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`Filer's Name
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`Filer's email
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`Response to Board Order/Inquiry
`
`Scott D. Swanson
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`swanson@shaverswanson.com, katie@shaverswanson.com, bri-
`an@shaverswanson.com
`
`Signature
`
`Date
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`/Scott D. Swanson/
`
`01/02/2020
`
`Attachments
`
`Response to Board Inquiry with ex.pdf(2939694 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`OFF-SPEC SOLUTIONS, LLC, a Delaware
`Limited liability company
`
`
` Petitioner,
`
`
`v.
`
`
`Nicholas D. Scoyni, an individual,
`
`
`Respondent.
`
`
`
`Cancellation No. 92071067
`
`Mark: OFFSPEC SOLUTIONS S.E.
`
`Reg. No.: 5,603,439
`
`
`
`
`
`PETITIONER’S RESPONSE TO THE BOARD’S ORDER
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`Off-Spec Solutions, LLC (“Petitioner”), by and through its undersigned counsel, hereby
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`submits copies of the operative pleadings in the civil action in the United States District Court
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`for the District of Idaho, Case No. 1:18-cv-506-REB, pursuant to the Board’s Order on
`
`December 13, 2019. The operative pleadings, attached as exhibits herein, include Plaintiff’s
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`(Respondent’s) Complaint (Exhibit A) and Defendant’s (Petitioner’s) Amended Answer and
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`Counter Claims (Exhibit B) and Plaintiff’s (Respondent’s) Answer to Counterclaims (Exhibit C).
`
`Petitioner further submits Defendant’s Motion for Summary Judgment (Exhibit D), Plaintiff’s
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`Response to Defendant’s Motion for Summary Judgment (Exhibit E), and Defendant’s Reply in
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`Support of Defendant’s Motion for Summary Judgment (Exhibit F).
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`Respectfully submitted,
`
`By:/Scott D. Swanson/
`Scott D. Swanson
`SHAVER & SWANSON, LLP
`P.O. Box 877
`Boise, ID 83702
`Phone: 208-345-1122
`Email: swanson@shaverswanson.com
`Attorney for Petitioner
`
`
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`PETITIONER’S RESPONSE TO THE BOARD’S ORDER
`Page 1 of 2
`
`

`

`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that on this 2nd day of January, 2020, a true and correct copy of the
`foregoing PETITIONER’S RESPONSE TO THE BOARD’S INQUIRY has been served upon
`Defendant by email as follows:
`
`
`
`
`
`Nicholas D. Scoyni
`Kaplanstudent2@hotmail.com
`
`
`
` /Katie C. Clow/
`Katie C. Clow
`
`
`
`
`PETITIONER’S RESPONSE TO THE BOARD’S ORDER
`Page 2 of 2
`
`

`

`Exhibit
`Exhibit
`
`A
`
`

`

`UNITED STATES DISTRICT COURT
`RCVCI
`for the
`District of Idaho
`
`NOV 1 ｾ＠ 2018
`nme ..... __
`Ated
`STEPHEN W. KENYON
`CLERK. DISTRICT OF IDAHO
`
`u.s. COURTS
`
`Nicholas D Scoyni
`
`Plaintiff
`
`-v-
`
`Daniel R Salvador,
`
`Christopher A Salvador,
`
`Wayne J Salvador,
`
`William Wardwell,
`
`(Offspec Solutions, LLC,
`
`Offspec Solutions Southeast, et al. )
`
`De[endant(s)
`
`Jmy Trial- .... Yes
`
`)
`) Case No. I: f1 - e,V -- SDto - 'R E!3
`)
`)
`)
`)
`)
`)
`)
`.)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`COMPLAINT FOR A CIVIL CASE
`
`I. The Parties to This Complaint
`
`A. Plaintiff
`
`Nmne ________ ｾｎｊｾｲ･］ｯｯｾｉ］ｾｾｄｾｾｾｮｮｾﾷ＠__________ _
`
`ｓｾｴａ､ｾ＠____ ｾＱＷｾｏｾＱｾｂ］ｬｭｮ］ﾷｾ･ｾｂｾｷ＠____________ _
`
`city and County __ ｃ｡ｬＮＺ］､ｷ･］ｉｬ］］ＭＺｃ｡ｉｬＡｾＮ］ＺＺｯｮＺＺＮＮ［ｃ］］ＺｯＺＺＮＺＺｵｮｴｹ］ＺＺＮｬＮＮＮＮＮＮ＠__ _ _
`
`1
`
`

`

`State and Zip code _Idaho, 83605 __ _ _
`
`Telephone Number
`
`(208) 519- 8246
`
`E-mail AddressNscoyni@gmail.com
`
`B. The Defendants
`
`Defendant 1
`
`Name _ _ __ William Wardwell __ __ __ __ _
`
`Job or Title _ Organizer! authorized agent! investor! person of authority
`
`Street Address
`
`242 N 8th St # 220
`
`City and County Boise, Ada county ___________ _
`
`State and Zip code _--=I==dah=o::....:,L..:8=3;..:..7..:..::02=---__________ _
`
`Telephone Number _ .J.::(2:...:.0.:::.,.8}r.:,3-:..:45:;..=6::..:,0=.21=----____ ____ __ _
`
`E-mail Address __ williamwardwell@varinwardwell.com
`
`Defendant 2
`
`Name
`
`Daniel Ray Salvador (aka) Daniel Ryan Salvador _ _ _
`
`Job or Title
`
`CEO
`
`Street Address
`
`1428 Madison, Ave
`
`City and County _ Nampa, Canyon County _____ _
`
`2
`
`

`

`State and Zip code ｾｉ］､］｡ｨ］ｯＺ［ＮＮＱＮＬＧ＠,...::8:;.::;.3..;;..68;:;..;7:.........-_______ _
`
`Telephone Number ｾＨＲＺＮＺＺ［ｏＮＮＺＺＺＮＮＸＩｌＮＮＡＴＮＮＺＮＮＺＷＵＺＮＺＲＺＺＮＺＺＺＵＮＮＺＺＮＰＰＺＺＺＺＮ｟＠_______ _
`
`E-mail Address_Danielsalvador@offspecsolutions.com
`
`Defendant 3
`
`Name
`
`Christopher A Salvador __ ___ _ __ _
`
`Job or Title
`
`CFO
`
`Street Address
`
`1428 Madison. Ave
`
`City and County _ Nampa, Canyon County _____ _
`
`State and Zip code ｾｉ］､］｡ｨ］ｯＺＺＺＮＮＺｌＬＬＮＮＮＺＺＸＺ［ＮＺＺ［ＮＳＮＮ［［ＮＮＶ［Ｚ［ＮＮ［ＸＷＺＮＮＮＮＮＮＮＮＮＭ_______ _
`
`Telephone Number ｾＨＲＺＮＺＺ［ｏｾＸＩＮｬＮＮＮｩＮＴＺＮＮＮＺＮＷＮＺＺＮＺＵＲ］］ＵＺＺＮ］ＺＺｏｾｏ＠___ __ _ _ _ _
`
`E-mail AddressChristophersalvador@offspecsolutions.com
`
`Defendant 4
`
`Name ________ ｾｖｖｾ｡ｾｹ］ｮ･ｾｊｾｓ］｡ｬｾｶ］｡､］ｯｾｲ＠____________ _
`
`Job or Title __ Recruitment/corporate advertiser
`
`Street Address
`
`1428 Madison, Ave
`
`City and County _ Nampa, Canyon County _____ _
`
`3
`
`

`

`State and Zip code ｾｉ］､］｡ｨ］ｯｾＬＮＮＮＮＮＮＺＺＸ］ＳＮＮＮＺＺ［ＮＶＭ］ＭＸＷ］ＭＭ__ __ _ __ _ _
`
`Telephone Nwnber ｾＨＲＺ］ｏＮＺＮＮＮＸＩｌＮＺＮＴＮＮＺＮＮＮＺＷＵ］Ｒ］ＵＮＮ［ＺＺＺＮＮｏｏＺＺＺＮＭ_______ _
`
`E-mail Address
`
`D. Basis for Jurisdiction
`
`Under 28 U.S.C. § 1332, a case in which a citizen of one State sues a citizen of another State or
`
`nation and the amount at stake is more than $75,000 is a diversity of citizenship case. In a
`
`diversity of citizenship case, no defendant may be a citizen of the same State as any plaintiff.
`
`The Basis for Jurisdiction Is Diversity of Citizenship
`
`1. The Plaintiff
`
`The plaintiff is an individual
`
`The plaintiff Nicholas D Scoyni is a citizen of the State of Washington.
`
`2. The Defendants
`
`Defendant 1
`
`The defendant is a corporation
`
`The defendant Offspec Solutions, LLC is incorporated under the laws of the State of Delaware
`
`and has its principal place of business in the state of Idaho.
`
`Defendant 2
`
`The defendant is a corporation
`
`4
`
`

`

`The defendant Offspec Solutions Southeast, LLC is incorporated under the laws of the state of
`
`Idaho and has its principal place of business in the state of Idaho.
`
`3. The Amount in Controversy
`
`The amount in controversy-the amount the plaintiff claims the defendant owes or the amount at
`
`stake-is more than $75,000, not counting interest and costs of court, because there is 39,468,000
`
`million as Offspec Solutions,LLC reported 2016 and 2017 as having driven 7.8 million miles to
`
`the FSMCA with a national average of 2.53 a mile as reported by DAT truck services from
`
`federal trademark registration date owned by plaintiff. Then leaving the breach of contract if
`
`from same start date at 5,920,200 that is 15 percent of total gross agreed upon by defendants to
`
`pay plaintiff. Then 3 million for defamation of character/ irreparable harm to a total of
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`$48,388,200 million owed by defendants in controversy.
`
`m. Statement of Claim
`
`Comes here respectfully before the court that defendants Christopher A Salvador, and brother
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`Daniel R Salvador attempted to enter into an oral contract in the state of Idaho with plaintiff over
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`plaintiffs intellectual property in April of 20 12. In this contract the plaintiff stipulated that the
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`defendants must retain a legal article of organization without unrepresented minors pursuant
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`Idaho law 29-101 present in a contract between state and the individuals as a limited liability
`
`corporations contract, also that plaintiff must maintain all corporation trademarks relating to
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`plaintiffs intellectual property, including observance as to federal law of trademark use, lease, by
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`being a company driver with a specific route already used by plaintiff in transportation industry,
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`and must have new truck only used by plaintiff , that after corporation reached over one million
`
`5
`
`

`

`a year gross profit, plaintiff would receive 15 percent of gross profit from then forward, and that
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`all future arbitration can be decided by polygraph test of parties, and that would be admissible in
`
`court to settle any claims, also that use of any intellectual property is an agreement to this
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`contract in full just as a signed contract legally binding in all ways by laws of Idaho state. The
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`father of defendants Wayne J Salvador advised the two defendants should simply take the
`
`property by copywriting the plaintiff's trademark, or simply sending themselves a letter in the
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`mail. In August of2012 they simply just did use plaintiffs mark without permissions or intent of
`
`payment under presumption by both parties that mark functioned as a service mark at the time.
`
`Being confronted with this in 2015 after plaintiff's discovery of department of transportation
`
`numbers in use by the defendants, the defendants did agree to abide by the above stated contract,
`
`they provided truck and route for one year, and asked if plaintiff wanted to work in the office,
`
`plaintiff simply stated that it was not in their agreement. Then had no further contract with
`
`defendants traveled as they traveled the world, and United States, Then plaintiff learns
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`defendants started another division of corporation in another of plaintiffs names, and had
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`exceeded goals of contract dismissing knowledge of a contract with plaintiff, then terminated
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`relationship with plaintiff for owning trademarks in company names. Their business partner(cid:173)
`
`attorney William Wardwell then reciprocated cease and desist letters with fraudulent statements,
`
`entity claims, date claims, as to 2010 in agricultural class designation, not class 39 for the trade
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`names even though later he states different dates on a USPTO application that was then
`
`suspended by the USPTO as the plaintiff's trade mark registration is deemed likelihood of
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`confusion to the point of baring any attempts of defendants to ever register by the USPTO , also
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`Mr Wardwell stated in same "that the plaintiff should give up or he would only cause
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`embarrassment to himself, lie detector, affidavits, and other evidence will never be admissible so
`
`6
`
`

`

`the plaintiff cannot prove his case, and that his understanding of contract laws are just fatally
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`flawed, and so he should just surrender trademarks he has ever already "Owned" or else he will
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`seek "Remedies" for plaintiffs ownership of his own trademarks, and then maybe Mr Wardwell
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`continues he would let the plaintiff off the hook for owning these trade names" (A pay to play
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`feeling, Note not exact quote is brief overview). This after plaintiff issued a cease and desists
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`December of 20 16. Defendants then told all local brokerage and customers to no longer do
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`business with or pay plaintiff or his dispatchers he knew long before these defendants entered the
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`transportation business, or Mr Wardwell would seek remedies and began a smear campaign
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`damaging plaintiffs customers and business to the point of irreparable damage, even on web
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`sites such as " Real Offspec" found on Facebook, testify to this effect. The entire time plaintiff
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`maintained a business under the trade names Offspec Solutions, Offspec Solutions Southeast,
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`and Offspec Solutions S.E that stands for Scoyni, enterprises and as service marks, since 2006 in
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`the class 39 transportation. These defendants have a direct arrogant outlook, view, dismissive
`
`nature, and attitudes on the law as to what they can get away with in their shuffling of secretary
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`of state paperwork and their licensees with malaise. Mr Wardwell also signed articles of
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`organization amendment and direct name change documents, as not only organizer, and
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`registered agent, but one name change document to trade name Offspec Solutions,LLC as
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`"authorized person" against Idaho law 30-25-203 individualizing his contribution to
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`infringement going outside third party attorney client corporate privilege, and more to the effect
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`as a private person, not a representative. There has been a police report filed for criminal fraud in
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`this case by the plaintiff as defendants used knowingly the original article of organization as an
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`identity document of state to aid in the theft of intellectual property of the plaintiffs by appearing
`
`7
`
`

`

`to be prior to plaintiffs as to their belief, creating a crime within a civil offence pursuant 18 USC
`
`ss 1028 they had knowledge of existing civil crime.
`
`IV. Relief
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`First addressing Offspec Solutions, LLC, and the direct Infrengment they have committed toward
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`this plaintiff, as plaintiff would respectfully ask the court to order this group to cease and desist
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`use of any mark with the likelihood of confusion of all of this plaintiffs own trade names or
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`service marks. Second this plaintiff would like compensation for what has been maliciously,
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`purposely taken from use by these infringing marks out of unfair business practice, use in
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`commerce, and enjoyed by these individuals without their intention of payment to owner of
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`marks this plaintiff here. That amount from the federal registration original file date 12/30/2016
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`that is published in the Gazette is upward of $39,468,000 million. The breach of contract the
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`defendants originally agreed to orally and then later through use they then accepted terms of the
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`contract as agreed comes to $5,920,200, that is 15 percent of the total amount above unless your
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`honor decided to grant the span of contract before Gazette publication amounting to much more.
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`The defendants also caused irreparable damage through defamation of character to this plaintiffs
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`business; this plaintiff seeks 3 million in damage, as business may not be able to recover from
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`damage caused by defendants, in what they believed to be just fair business competition without
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`responsibility .
`
`V. Certification and Closing
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`Under Federal Rule of Civil Procedure 11, by signing below, I certify to the best of my
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`knowledge, information, and belieftbat this complaint: (1) is not being presented for an
`
`8
`
`

`

`improper Purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of
`
`litigation; (2) is supported by existing law or by a non-frivolous argument for extending,
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`modifying, or reversing existing law; (3) the factual contentions have evidentiary support or, if
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`specifically so identified, will likely have evidentiary support after a reasonable opportunity for
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`further investigation or discovery; and (4) the complaint otherwise complies with the
`
`requirements of Rule 11.
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`A. Party Without an Attorney
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`I agree to provide the Clerk's Office with any changes to my address where case-related papers
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`may be served. I understand that my failure to keep a current address on file with the Clerk's
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`Office may result in the dismissal of my case.
`
`Date of signing: ___ ________________ _
`
`Signature ofPlaintiff ______________ __ _ _
`
`Printed Name of Plaintiff __ ｾｎｾｩ｣］ｨ］ｯＺＮＺＮＺＺｬ｡ｳ］］］ＭＭ］ｄ［Ｚ［ＮＮＮＺＺＺＺＺｓＮＮＺＮ［｣ｯＺＺＺＮＮＮｹｭｾﾷ＠___ ____ _
`
`9
`
`

`

`Exhibit
`Exhibit
`
`B
`
`

`

`Case 1:18-cv-00506-BLW Document 41 Filed 04/19/19 Page 1 of 16
`
`Thomas E. Dvorak (ID Bar #5043)
`Jason J. Blakley (ID Bar #9497)
`GIVENS PURSLEY LLP
`601 West Bannock Street
`P.O. Box 2720
`Boise, Idaho 83701-2720
`Telephone: (208) 388-1200
`Facsimile: (208) 388-1300
`Email: tedservice@givenspursley.com
`
`jasonblakley@givenspursley.com
`
`Scott D. Swanson (ID Bar #8156)
`Shaver & Swanson, LLP
`1509 S. Tyrell Ln., Ste. 100
`P.O. Box 877
`Boise, ID 83701
`Telephone: (208) 345-1122
`Facsimile: (208) 388-6035
`Email: swanson@shaverswanson.com
`
`Attorneys for Defendants Daniel R. Salvador,
`Christopher A. Salvador, Wayne J. Salvador,
`Off-Spec Solutions, LLC and
`Off-Spec Solutions Southeast, LLC et al.
`14583798_1.DOC [14491-2]
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF IDAHO
`
`
`
`
`NICHOLAS D. SCOYNI,
`
`
`Plaintiff,
`
`
`
`
`
`vs.
`
`
`DANIEL R. SALVADOR, CHRISTOPHER A.
`SALVADOR, WAYNE J. SALVADOR, (Off-
`Spec Solutions, LLC, Off-Spec Solutions
`Southeast, LLC et al),
`
`
`Defendants.
`
`
`
`Case No. 1:18-CV-506-REB
`
`AMENDED ANSWER OF
`DEFENDANTS DANIEL R.
`SALVADOR, CHRISTOPHER A.
`SALVADOR, WAYNE J.
`SALVADOR, OFF-SPEC
`SOLUTIONS, LLC AND OFF-SPEC
`SOLUTIONS SOUTHEAST, LLC
`AND COUNTERCLAIM OF OFF-
`SPEC SOLUTIONS, LLC
`
`
`
`AMENDED ANSWER OF DEFENDANTS DANIEL R. SALVADOR,
`CHRISTOPHER A. SALVADOR, WAYNE J. SALVADOR, OFF-SPEC SOLUTIONS,
`LLC AND OFF-SPEC SOLUTIONS SOUTHEAST, LLC AND COUNTERCLAIM
`OF OFF-SPEC SOLUTIONS, LLC- 1
`
`
`

`

`Case 1:18-cv-00506-BLW Document 41 Filed 04/19/19 Page 2 of 16
`
`OFF-SPEC SOLUTIONS, LLC, a Delaware
`limited liability company,
`
`
`Counterclaimant,
`
`
`
`
`
`
`
`vs.
`
`
`NICHOLAS D. SCONYI, an individual,
`
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`Counterdefendant.
`
`
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`COME NOW the Defendants, Daniel R. Salvador, Christopher A. Salvador, Wayne J.
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`Salvador, Off-Spec Solutions, LLC and Off-Spec Solutions Southeast, et al., by and through their
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`counsel of record, Givens Pursley LLP and Shaver & Swanson, LLP, and hereby answer the
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`Plaintiff’s Complaint and Demand for Jury Trial in the above-entitled matter and Defendant Off-
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`Spec Solutions, LLC files a Counterclaim as follows:
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`ANSWER
`
`FIRST DEFENSE
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`The Plaintiff’s Complaint fails to state a claim against the Defendants upon which relief
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`can be granted.
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`SECOND DEFENSE
`
`1.
`
`The Defendants deny each and every allegation of the Plaintiff’s Complaint not
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`herein expressly and specifically admitted.
`
`2.
`
`Further, the following Answer is made despite the vagueness and ambiguity of the
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`Complaint on the assumption that the Complaint pleads a claim for breach of an alleged oral
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`contract having to do with the use of a trademark or trademarks claimed to be owned by Plaintiff.
`
`
`AMENDED ANSWER OF DEFENDANTS DANIEL R. SALVADOR,
`CHRISTOPHER A. SALVADOR, WAYNE J. SALVADOR, OFF-SPEC SOLUTIONS,
`LLC AND OFF-SPEC SOLUTIONS SOUTHEAST, LLC AND COUNTERCLAIM
`OF OFF-SPEC SOLUTIONS, LLC- 2
`
`
`

`

`Case 1:18-cv-00506-BLW Document 41 Filed 04/19/19 Page 3 of 16
`
`The existence of such a contract and the enforceability of the same is expressly denied, any other
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`language in this Answer notwithstanding.
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`3.
`
`The Defendants admit Paragraphs I. A; II.1. to the extent Plaintiff is an individual.
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`The Defendants deny that Plaintiff is a Washington citizen. With respect to Paragraph II.2,
`
`Defendant Off-Spec Solutions, LLC is Delaware a limited liability company. Defendant Off-
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`Spec Solutions Southeast, LLC, was an Idaho limited liability company, but was dissolved on or
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`about December 12, 2018.
`
`4.
`
`The following paragraphs are denied: II.3; III, IV, V.
`
`THIRD DEFENSE
`
`Plaintiff performed improper and insufficient service of process upon Defendants.
`
`However, this procedural defense is voluntarily waived by Defendants in the interest of judicial
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`economy.
`
`FOURTH DEFENSE
`
`This Court lacks subject matter jurisdiction in this matter as Plaintiff may lack the
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`necessary diversity of citizenship requirement and the actual amount at stake in this action may
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`be less than the required amount in controversy.
`
`FIFTH DEFENSE
`
`To the extent that Plaintiff’s Complaint attempts to plead any other count than breach of
`
`an alleged oral contract, Plaintiff’s Complaint is too vague, ambiguous and indefinite to plead
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`any such additional count.
`
`
`AMENDED ANSWER OF DEFENDANTS DANIEL R. SALVADOR,
`CHRISTOPHER A. SALVADOR, WAYNE J. SALVADOR, OFF-SPEC SOLUTIONS,
`LLC AND OFF-SPEC SOLUTIONS SOUTHEAST, LLC AND COUNTERCLAIM
`OF OFF-SPEC SOLUTIONS, LLC- 3
`
`
`

`

`Case 1:18-cv-00506-BLW Document 41 Filed 04/19/19 Page 4 of 16
`
`SIXTH DEFENSE
`
`The Plaintiff’s claims are barred by the applicable statute of limitation, including, but not
`
`limited to, Idaho Code §§ 5-216, 5-217, 5-218, 5-219, and 5-224.
`
`SEVENTH DEFENSE
`
`The Plaintiff is guilty of negligence, careless, reckless and/or intentional misconduct at
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`the time of and in connection with the matter and damages alleged, which misconduct on his part
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`proximately caused and contributed to said events and resultant damages, if any.
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`EIGHTH DEFENSE
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`The Plaintiff’s damages, if any, were proximately caused by the negligence, omissions,
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`actions, or comparative fault of other third persons or entities, for which Defendants are not
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`legally responsible, and the responsibility should be determined by Idaho law.
`
`NINTH DEFENSE
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`The Plaintiff’s damages, if any, were caused by intervening, superseding or other causes
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`for which Defendants are not legally responsible.
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`TENTH DEFENSE
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`Defendants did not enter into any oral or written contract with Plaintiff.
`
`ELEVENTH DEFENSE
`
`The purported oral contract asserted by Plaintiff is barred by the statute of frauds.
`
`TWELFTH DEFENSE
`
`The Plaintiff’s claims are barred by failure or lack of consideration.
`
`THIRTEENTH DEFENSE
`
`The Plaintiff’s claims may be barred in whole or in part by the absence of privity.
`
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`AMENDED ANSWER OF DEFENDANTS DANIEL R. SALVADOR,
`CHRISTOPHER A. SALVADOR, WAYNE J. SALVADOR, OFF-SPEC SOLUTIONS,
`LLC AND OFF-SPEC SOLUTIONS SOUTHEAST, LLC AND COUNTERCLAIM
`OF OFF-SPEC SOLUTIONS, LLC- 4
`
`
`

`

`Case 1:18-cv-00506-BLW Document 41 Filed 04/19/19 Page 5 of 16
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`FOURTEENTH DEFENSE
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`The Plaintiff’s claims are barred in whole or in part by the doctrines of waiver and/or
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`estoppel.
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`FIFTEENTH DEFENSE
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`The Plaintiff’s claims are barred by the doctrine of unclean hands.
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`SIXTEENTH DEFENSE
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`The Plaintiff’s claims are barred by the doctrine of laches.
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`SEVENTEENTH DEFENSE
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`The Plaintiff’s claims may be barred in whole or in part by the economic loss rule.
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`EIGHTEENTH DEFENSE
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`The Plaintiff failed to mitigate the Plaintiff’s damages, if any.
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`
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`COUNTERCLAIM
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`For its counterclaims against Plaintiff/Counterdefendant Nicholas D. Scoyni (“Scoyni”),
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`Defendant Off-Spec Solutions, LLC alleges as to its own conduct and on information and belief
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`as to all other matters, as follows:
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`
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`JURISDICTION AND VENUE
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`1.
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`These Counterclaims arise out of the Complaint which alleges, to the best of
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`Counterclaimant’s understanding, purported violations of and seeks remedies and relief under the
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`Lanham Act, 15 U.S.C. §§ 1114, 1116(a), 1121(a), and 1125(a); and Idaho Code § 48-512.
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`These Counterclaims further arise under the Federal Declaratory Judgments Act, 28 U.S.C. §§
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`2201, et seq.
`
`
`AMENDED ANSWER OF DEFENDANTS DANIEL R. SALVADOR,
`CHRISTOPHER A. SALVADOR, WAYNE J. SALVADOR, OFF-SPEC SOLUTIONS,
`LLC AND OFF-SPEC SOLUTIONS SOUTHEAST, LLC AND COUNTERCLAIM
`OF OFF-SPEC SOLUTIONS, LLC- 5
`
`
`

`

`Case 1:18-cv-00506-BLW Document 41 Filed 04/19/19 Page 6 of 16
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`2.
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`This Court has original jurisdiction over this action pursuant to 28 U.S.C. §§ 1331
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`and 1338, and 15 U.S.C. § 1121, and supplemental jurisdiction over the related state law claims
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`pursuant to 28 U.S.C. § 1367.
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`3.
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`This Court further has jurisdiction over a claim seeking the cancellation of a
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`trademark registration in an action involving that registration pursuant to 15 U.S.C. § 1119.
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`4.
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`This Court has personal jurisdiction over Scoyni, and by filing his Complaint in
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`this Court, Scoyni has consented to personal jurisdiction in this district.
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`5.
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`Venue is proper in this district under 28 U.S.C. § 1391.
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`FACTS COMMON TO ALL COUNTS
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`All of the allegations of the Complaint filed in this matter, as admitted, denied or
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`6.
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`supplemented with additional affirmative allegations and affirmative defenses as set forth in this
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`Answer and Counterclaim are incorporated herein by this reference as if set forth in full.
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`7.
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`Counterclaimant Off-Spec Solutions, LLC, uses the mark OFFSPEC
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`SOLUTIONS and derivatives thereof in providing transportation services, namely freight
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`transportation by truck.
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`8.
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`Off-Spec Solutions, LLC has been using the mark Off-Spec Solutions since not
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`later than January, 2011, and Off-Spec Solutions Southeast, LLC, used the mark Off-Spec
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`Solutions Southeast from July, 2016, until late 2017, in providing transportation services, namely
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`freight transportation by truck.
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`9.
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`Counterclaimant has established a significant amount of good will with the public
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`through the use of the marks Off Spec Solutions and Off Spec Solutions Southeast.
`
`
`AMENDED ANSWER OF DEFENDANTS DANIEL R. SALVADOR,
`CHRISTOPHER A. SALVADOR, WAYNE J. SALVADOR, OFF-SPEC SOLUTIONS,
`LLC AND OFF-SPEC SOLUTIONS SOUTHEAST, LLC AND COUNTERCLAIM
`OF OFF-SPEC SOLUTIONS, LLC- 6
`
`
`

`

`Case 1:18-cv-00506-BLW Document 41 Filed 04/19/19 Page 7 of 16
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`10.
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`The Counterclaimant was not aware of any purported use by Scoyni at the time
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`they adopted the marks using the terms Off-Spec Solutions.
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`11.
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`In 2015 Off-Spec Solutions, LLC hired Scoyni as a truck driver. The
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`Counterclaimant had no knowledge of Scoyni’s purported use of any mark containing “Off Spec
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`Solutions” in any form prior to or at the time of hiring of Mr. Scoyni.
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`12.
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`The first knowledge of the Counterclaimant of Scoyni’s purported use of any
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`mark containing “Off Spec Solutions” came in 2016, when Scoyni entered the office of Off-Spec
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`Solutions employee Clark Olsen and informed him of his alleged use of the phrase “Off-Spec
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`Solutions” in a mark. Mr. Olsen denied having any knowledge of the purported contract with
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`Mr. Scoyni.
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`13.
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`The Counterclaimant has never entered into an agreement with Scoyni regarding
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`the use of any trademark or service mark.
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`14.
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`Counterclaimant has discovered upon recent inspection of Scoyni’s registered
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`trademark application that Scoyni has obtained a Federal Trademark Registration for Off-Spec
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`Solutions SE”. Scoyni’s Federal Trademark Registration number is 5,603,439.
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`15.
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`Scoyni filed a use-based trademark application that was eventually registered as
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`Registration No. 5,603,439. As part of the prosecution of that application Scoyni filed a
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`statement of use that included several photographs of a vehicle having what appears to be a paper
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`cutout of the term “Off Spec Solutions SE” temporarily affixed to the side of a flatbed truck.
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`Scoyni also filed several affidavits attempting to prove his use of the mark.
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`16.
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`As further part of the application that eventually registered as Registration No.
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`5,603,439, the Trademark Examiner asserted that Scoyni’s mark in that application was merely
`
`
`AMENDED ANSWER OF DEFENDANTS DANIEL R. SALVADOR,
`CHRISTOPHER A. SALVADOR, WAYNE J. SALVADOR, OFF-SPEC SOLUTIONS,
`LLC AND OFF-SPEC SOLUTIONS SOUTHEAST, LLC AND COUNTERCLAIM
`OF OFF-SPEC SOLUTIONS, LLC- 7
`
`
`

`

`Case 1:18-cv-00506-BLW Document 41 Filed 04/19/19 Page 8 of 16
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`descriptive and not entitled to registration on the Principal Registration. In response, Scoyni
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`amended the application to the Supplemental Register.
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`17.
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`A subsequent inspection of the Federal Trademark Database reveals that Scoyni
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`had previously filed a trademark application for “Off Spec Solutions” as an “intent to use”
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`trademark application under section 1(b) of the Lanham Act (15 U.S.C. § 1051(b)). To obtain a
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`registration Scoyni was subsequently required to file a statement of use including a specimen
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`proving use. In response to this requirement, Scoyni filed a photograph of what appears to be a
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`receipt for Counterclaimant’s transportation of goods. Scoyni further provided screen shots of
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`Counterclaimant’s website in order to prove his own use, claiming that this was a “lessor” of his
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`trademark. This application was rejected and subsequently abandoned by Scoyni on other
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`grounds.
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`18.
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`Counterclaimant has further discovered that Scoyni has filed and obtained at least
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`four Idaho State Trademark Registrations for OFFSPEC SOLUTIONS (Idaho Trademark File
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`Number 021621), Off-Spec Solutions (Idaho Trademark File Number 021669); OFFSPEC
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`SOLUTIONS SOUTHEAST (Idaho Trademark File Number 021661), and OFF_SPEC
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`SOULTIONS [sic in original certificate] (Idaho Trademark File Number 021639).
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`19.
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`Scoyni’s Complaint is vague as to the rights asserted against Counterclaimant, but
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`presumably the assertions include violation of these four Idaho State Trademark Registrations.
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`20.
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`Scoyni further alleges in his Complaint that an agreement existed between Scoyni
`
`and Counterclaimant for the “leasing” of intellectual property rights from Scoyni to
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`Counterclaimant.
`
`
`AMENDED ANSWER OF DEFENDANTS DANIEL R. SALVADOR,
`CHRISTOPHER A. SALVADOR, WAYNE J. SALVADOR, OFF-SPEC SOLUTIONS,
`LLC AND OFF-SPEC SOLUTIONS SOUTHEAST, LLC AND COUNTERCLAIM
`OF OFF-SPEC SOLUTIONS, LLC- 8
`
`
`

`

`Case 1:18-cv-00506-BLW Document 41 Filed 04/19/19 Page 9 of 16
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`21.
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`Counterclaimant denies that any such “leasing” or any license exists between
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`Counterdefendant and Scoyni, and in the alternative if an agreement existed Scoyni failed to
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`maintain any control of the licensed intellectual property including trademarks either in the
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`agreement or in practice, and therefore any of such trademarks alleged by Scoyni are deemed
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`abandoned for naked licensing.
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`FIRST COUNTERCLAIM
`(Declaratory Judgment of Non-Infringement)
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`The foregoing paragraphs are incorporated by this reference and restated as if set
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`22.
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`forth in full.
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`23.
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`Scoyni has asserted claims, inter alia, of trademark infringement against
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`Counterclaimant, accordingly an actual, present and justiciable controversy has arisen between
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`Scoyni and Counterclaimant regarding the use of marks containing the terms “Off Spec
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`Solutions” and variants thereof.
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`24.
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`Scoyni amended Federal Registration No. 5,603,439 to the Supplemental Register
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`and therefore created no substantive rights.
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`25.
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`Scoyni has not used the mark Off Spec Solutions SE in such a way as to acquire
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`distinctiveness in the asserted mark to establish any exclusive right in the purported mark and
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`therefore Counterclaimant does not infringe any purported rights in the alleged mark because
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`none exist.
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`26.
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`Counterclaimant was unaware of any use by Scoyni prior to its adoption of any of
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`the marks containing the terms Off-Spec Solutions and began use prior to any use provable by
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`Scoyni.
`
`
`AMENDED ANSWER OF DEFENDANTS DANIEL R. SALVADOR,
`CHRISTOPHER A. SALVADOR, WAYNE J. SALVADOR, OFF-SPEC SOLUTIONS,
`LLC AND OFF-SPEC SOLUTIONS SOUTHEAST, LLC AND COUNTERCLAIM
`OF OFF-SPEC SOLUTIONS, LLC- 9
`
`
`

`

`Case 1:18-cv-00506-BLW Document 41 Filed 04/19/19 Page 10 of 16
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`27.
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`Counterclaimant’s use of any and all marks containing the terms Off-Spec
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`Solutions does not create a likelihood of confusion with any alleged rights by Scoyni.
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`28.
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`Scoyni has alleged that he “leased” intellectual property rights to
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`Counterclaimant, while Counterclaimant denies that any agreement has ever existed between
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`Counterclaimant and Scoyni regarding any mark containing “Off Spec Solutions” and any
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`variants thereof.
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`29.
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`Accordingly, Counterclaimant seeks a declaration from this Court that
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`Counterclaimant’s use of the marks containing “Off Spec Solutions” and variants thereof does
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`not constitute infringement of any rights including trademark rights asserted by Scoyni, whether
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`expressly or impliedly asserted in Scoyni’s Complaint.
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`30.
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`Counterclaimant further seeks a declaration from this Court that no such
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`agreement has ever existed between Counterclaimant and Scoyni.
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`31.
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`In the alternative, Counterclaimant seeks a declaration from this Court that Scoyni
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`abandoned any right in any trademarks through naked licensing of any rights he may have
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`otherwise acquired, and that therefore Counterclaimant’s use of those terms does not constitute
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`trademark infringement.
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`SECOND COUNTERCLAIM
`(Cancellation of U.S. Trademark Reg. No. 5,603,439 –
`Void ab initio; No Use On or Before the Application Date)
`(15 U.S.C. §§ 1051, 1064, 1119)
`
`The foregoing paragraphs are incorporated by this reference and restated as if set
`
`32.
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`forth in full.
`
`
`AMENDED ANSWER OF DEFENDANTS DANIEL R. SALVADOR,
`CHRISTOPHER A. SALVADOR, WAYNE J. SALVADOR, OFF-SPEC SOLUTIONS,
`LLC AND OFF-SPEC SOLUTIONS SOUTHEAST, LLC AND COUNTERCLAIM
`OF OFF-SPEC SOLUTIONS, LLC- 10
`
`
`

`

`Case 1:18-cv-00506-BLW Document 41 Filed 04/19/19 Page 11 of 16
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`33.
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`The trademark application that registered as U.S. Trademark Registration No.
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`5,603,439 was filed under section 1(a) of the Lanham Act (15 U.S.C. § 1051(a).
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`34.
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`Upon information and belief, there was no use in commerce by Scoyni of the
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`purported mark OFFSPEC SOLUTIONS S.E. prior to the filing date of the use-based trademark
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`application that registered as U.S. Trademark Registration No. 5,603,439.
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`35.
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`Because there was no use in commerce by Scoyni an