Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA497178
`ESTTA Tracking number:
`09/28/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053945
`Plaintiff
`Darlington Apple Festival, Inc.
`HARA K JACOBS
`BALLARD SPAHR LLP
`1735 MARKET STREET, 51ST FLOOR
`PHILADELPHIA, PA 19103-7599
`UNITED STATES
`jacobsh@ballardspahr.com, phila_tmdocketing@ballardspahr.com,
`sternam@ballardspahr.com, camposcruzl@ballardspahr.com
`Motion for Sanctions
`Hara K. Jacobs
`jacobsh@ballardspahr.com, sternam@ballardspahr.com,
`shorem@ballardspahr.com, phila_tmdocketing@ballardspahr.com
`/Hara K. Jacobs/
`09/28/2012
`20120928_Motion for Sanctions.pdf ( 212 pages )(4110576 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DARLINGTON APPLE FESTIVAL INC.
`
`Petitioner,
`
`V.
`
`Cancellation No.
`
`92053945
`
`STEPHEN SMITH
`
`Registrant.
`
`PETITIONER’S MOTION FOR SANCTIONS
`
`Petitioner, Darlington Apple Festival Inc. (“Petitioner”), pursuant to 37 CFR §§
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`2.l20(g)(l) and 2.l20(g)(2), hereby moves the Board for sanctions against Stephen Smith
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`(“Registrant”).
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`PRELIMINARY STATEMENT
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`Petitioner seeks sanctions against Registrant for Registrant’s repeated failure to
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`abide by the rules and participate in discovery. Registrant has willfully ignored the Board’s
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`Order compelling him to respond to Petitioner’s discovery requests and has refused to attend a
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`deposition. Through his purposeful misconduct, Registrant is preventing Petitioner from
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`obtaining access to documents and testimony that conclusively demonstrate that Registrant
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`fraudulently procured his trademark registration that is the subj ect of this cancellation proceeding
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`because he has never used it commerce and he knows that Petitioner is and has been the rightful
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`owner of the mark well prior to his trademark application. Registrant’s flagrant violation of the
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`Board’s Order and his discovery obligations should not be countenanced.
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`

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`FACTUAL BACKGROUND
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`Registrant has refused to participate in discovery proceedings. First, in direct
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`contravention of the Board’s August 315‘ Order, Registrant has not responded to any of
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`Petitioner’s discovery requests. Petitioner served its First Set of Requests for the Production of
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`Documents and Things on May 14, 2012, and its First Set of Interrogatories to Registrant on
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`May 23, 2012. (Dkt. No. 17 at 2). On June 28, 2012, due to a lack of response by Registrant,
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`Petitioner filed a Motion to Compel Registrant’s responses to Petitioner’s discovery requests.
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`(Dkt. No. 17). On August 31, 2012, the Board issued an order granting Petitioner’s Motion to
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`Compel, stating that Registrant was given “20 days from the mailing date of [the] order in which
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`to respond to petitioner’s first set of interrogatories and first set of document requests, without
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`objection, failing which a motion for sanctions will be entertained by the Board.” (Dkt. No. 18)
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`On September 24, 2012, in conjunction with correspondence attempting to secure his deposition
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`testimony, Petitioner inquired as to the status of Registrant’s overdue discovery responses.
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`(Jacobs Decl. at 1112; Email from Hara K. Jacobs, Esq. to Stephen Smith, dated September 24,
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`2012, Exh. H to Jacobs Decl.). On September 24, 2012, Registrant replied to Petitioner’s
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`correspondence, indicating his refusal to participate in discovery proceedings, and urging
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`Petitioner to involve the Board. (Jacobs Decl. at 1113; Email from Stephen Smith to Hara K.
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`Jacobs, Esq., dated September 24, 2012, Exh. Ito Jacobs Decl.) As of September 28, 2012,
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`Petitioner has not received responses to its outstanding discovery requests. (Jacobs Decl. at 1[5).
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`Thus, Registrant has directly flouted the Board’s Order.
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`Consistent with Registrant’s fundamental disregard for the rules, Registrant has
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`refused to appear for his deposition. Petitioner initially noticed Registrant’s deposition for July
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`3, 2012. (Jacobs Decl. at 1[2; Email from Andrew M. Stern, Esq. to Stephen Smith, dated June
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`

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`12, 2012, Exh. A to Jacobs Decl.). Petitioner received no response from Registrant regarding the
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`notice. (Jacobs Decl. at 112). After Registrant failed to respond to the deposition notice and failed
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`to produce responses to Petitioner’s discovery requests, Petitioner informed Registrant that it was
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`forced to reschedule the deposition until Registrant provided his discovery responses. (Jacobs
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`Decl. at 1l4; Email from Andrew M. Stern, Esq. to Stephen Smith, dated June 29, 2012, Exh. B to
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`Jacobs Decl.).
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`Petitioner re-noticed Registrant’s deposition for September 25, 2012, but
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`Registrant was again uncooperative in its scheduling and attendance. (Jacobs Decl. at fl[6; Email
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`from Andrew M. Stern, Esq. to Stephen Smith, dated September 12, 2012, Exh. C to Jacobs
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`Decl.). Petitioner did not receive a response from Registrant until Sunday, September 16, 2012,
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`when Registrant expressly refused to attend the deposition. (Jacobs Decl. at fl[7; Email from
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`Stephen Smith to Andrew M. Stern, Esq., dated September 16, 2012, Exh. D to Jacobs Decl.).
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`Registrant stated he would attend a deposition either the next day (Monday), on Rosh Hashanah,
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`or in November, after the presidential election.
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`I_d_. He further stated that he would not
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`participate in a discovery until “I know who are the people you represent in addition to there
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`[sic] address and full names!” I_d_.
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`Petitioner’s counsel responded to Registrant that same day, on Sunday, September
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`16”‘, requesting that Registrant either confirm his attendance at the deposition as originally
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`noticed, or provide another date and time that would be mutually convenient. (Jacobs Decl. at
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`1l8; Email from Hara K. Jacobs, Esq. to Stephen Smith, dated September 16, 2012, Exh. E to
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`Jacobs Decl.). Registrant did not respond. (Jacobs Decl. at1l10). On September 20, 2012,
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`Petitioner again contacted Registrant, requesting confirmation of his deposition attendance or
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`another mutually agreeable date in the discovery period. (Jacobs Decl. at fl[9; Email from Hara
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`

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`K. Jacobs, Esq. to Stephen Smith, dated September 20, 2012, Exh. F to Jacobs Decl.). Registrant
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`did not reply to Petitioner’s email for four days. He then claimed that he would only be available
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`for deposition on Sunday, September 30, 2012 at 2 p.m. (Jacobs Decl. at 1111; Email from
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`Stephen Smith to Hara K. Jacobs, Esq. dated September 24, 2012, Exh. G to Jacobs Decl.).
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`Petitioner replied immediately, explaining that a Sunday was not feasible, and, in any case, was
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`after the close of discovery. (Jacobs Decl. at 1112; Email from Hara K. Jacobs, Esq. to Stephen
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`Smith, dated September 24, 2012, Exh. H to Jacobs Decl.). Registrant responded by stating that
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`he would no longer communicate with Petitioner regarding discovery matters and encouraged
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`Petitioner to involve the Board. (Jacobs Decl. at 1113; Email from Stephen Smith to Hara K.
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`Jacobs, Esq., dated September 24, 2012, Exh. Ito Jacobs Decl.).
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`ARGUMENT
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`As a party to this proceeding, Registrant has a duty to cooperate with Petitioner in
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`the discovery process, including the provision of responses to interrogatories and document
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`requests, and the attendance at a deposition. TBMP §§ 408.01 and 408.02 (“A party served with
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`a request for discovery has a duty to thoroughly search its records for all information properly
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`sought in the request, and to provide such information to the requesting party within the time
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`allowed for responding to the request”); Panda Travel Inc. v. Resort Option Enter., Inc., 94
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`U.S.P.Q.2d. 1789, 1791 (TTAB 2009) (“Each party has a duty to make a good faith effort to
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`satisfy the reasonable and appropriate discovery needs of its adversary”); Sunrider Corp. v.
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`Raats, 83 U.S.P.Q.2d 1648, 1654 (TTAB 2007) (parties have a duty to cooperate in resolving
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`conflicts in the scheduling and taking of depositions). A party that fails to cooperate in these
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`discovery proceedings can be the subj ect of a motion to compel. TBMP § 411. And where a
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`party does not comply with a motion to compel that is granted by the Board, or explicitly refuses
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`

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`to participate in discovery altogether, the Board may enter appropriate sanctions, including,
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`among other things, entry of default judgment. 37 CFR §§ 2.120(g)(1) and 2.120(g)(2); TBMP
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`§§ 527.01(a) and 527.01(b).
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`I.
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`Registrant Should Be Sanctioned for Violating the Board’s Order
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`Registrant has not only failed to provide discovery responses as ordered by the
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`Board, but has expressly refused to further communicate with Petitioner with regard to discovery
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`proceedings, and is therefore subject to sanctions under 37 CFR §2.120(g)(1). Petitioner’s
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`previously filed Motion to Compel was granted on August 31, 2012, with the Board stating that
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`Registrant had twenty (20) days from the issuance of the order to serve discovery responses to
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`Petitioner, i.e., September 20, 2012. (Dkt. No. 18). It is now September 27, 2012, and Petitioner
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`has not received responses to its outstanding discovery requests. (Jacobs Decl. at 115). In fact,
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`when questioned about the outstanding requests, Registrant replied that he will no longer
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`communicate with Petitioner. (Email from Stephen Smith to Hara K. Jacobs, Esq., dated
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`September 24, 2012, Exh. Ito Jacobs Decl.). Not only is Registrant refusing to participate in
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`discovery as a party to this proceeding, but he is flouting the Board’s Order compelling
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`responses to Petitioner’s discovery requests. Registrant has provided no legitimate reason for his
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`refusal to participate in the discovery process.
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`Registrant’s behavior is no different from that of the applicant in Caterpillar
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`Tractor Co. v. Catfish Anglers Together, Inc., 194 U.S.P.Q. 99, 100 (TTAB 1976). There, the
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`opposer issued its first set of interrogatories on May 21, 1976, and when it was still without any
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`response, filed a motion to compel on July 19, 1976. The motion was granted on August 17,
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`1976, with applicant allowed until September 16, 1976, to answer opposer’s interrogatories.
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`When applicant failed to answer by September 23, 1976, opposer moved to have a default
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`judgment entered against the applicant. In the following month, the applicant filed various
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`documents with the Board, some appearing to address opposer’s motion for default judgment,
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`but none addressing his overdue responses to interrogatories. The Board noted:
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`Applicant has made absolutely no response to the interrogatories
`served by opposer over seven months ago. It has not even made
`casual reference to them in arguing against opposer’s motion for
`sanctions and judgment. No reason for failure to comply with the
`order compelling discovery has been given.
`I_d_.
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`The Board explained that the Applicant had not complied with the Trademark Rules in any sense
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`with respect to opposer’s interrogatories, and that “[i]n the absence of even an excuse or reason
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`by applicant explaining or mitigating its failure to comply, the Board is left with no basis for
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`proceeding with the opposition.” Ld. As a result, the Board entered a default judgment against
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`the Applicant.
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`_Igd_.
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`Petitioner finds itself in the exact same situation. Petitioner served requests for
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`production and interrogatories in May 2012. (Dkt. No. 17 at 2). After receiving no response
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`from Registrant, Petitioner filed its Motion to Compel on June 28, 2012, and the Board granted
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`the motion on August 31, 2012. (Dkt. Nos. 17 and 18). It is now over four months since
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`Petitioner initially served its discovery requests, and it is without any responses or responsive
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`documents from Registrant. (Jacobs Decl. at 115). When asked about the status of the
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`outstanding discovery requests, Registrant skirted the question, and responded by saying that he
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`will no longer communicate with Petitioner regarding discovery matters. (Email from Stephen
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`Smith to Hara K. Jacobs, Esq., dated September 24, 2012, Exh. Ito Jacobs Decl.). Thus, not
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`only has Registrant provided no reason for his refusal to participate in discovery, he flat out
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`refuses to do so. Caterpillar, 194 U.S.P.Q. at 100. A default judgment in Petitioner’s favor
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`cancelling Petitioner’s registration is appropriate here because Registrant, like the applicant in
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`Caterpillar, will not play by the rules.
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`

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`II.
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`Registrant’s Failure to Attend His Deposition and
`Refusal to Communicate with Petitioner Regarding
`His Discovery Obligations Further Demonstrates the Need for Sanctions
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`In addition to Registrant’s failure to provide responses to Petitioner’s discovery
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`requests, Registrant refuses to cooperate with Petitioner in the scheduling of his deposition, and
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`has expressly stated that he will not fulfill this obligation, and is therefore subject to sanctions
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`under 37 CFR §2.120(g)(2).
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`_S_e_§ Kairos Inst. of Sound Healing, LLC V. Doolittle Gardens, LLC,
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`88 U.S.P.Q.2d. 1541 (TTAB 2008) (sanctions under 37 CFR §2.120(g)(2) available where party
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`bearing discovery obligation affirmatively states that discovery will not be forthcoming).
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`Registrant’s explicit refusal to cooperate in securing his deposition testimony is inexcusable. In
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`S. Indus. Inc. v. Lamb—Weston Inc., the Board granted a party’s motion to compel deposition
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`testimony because the opposing party refused to attend its deposition and would not cooperate in
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`rescheduling the deposition. 45 U.S.P.Q.2d. 1293 (TTAB 1997). Lamb—Weston, filed a motion
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`to compel petitioner, S. Industries, and its president, Leo Stoller, to appear at a Fed. R. Civ. P.
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`30(b)(6) deposition. Li. at 1297. Lamb-Weston served a proper notice of deposition, but the
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`petitioner expressly refused to attend the deposition because Mr. Stoller would supposedly be
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`attending another deposition during the week of the noticed deposition. Id Additionally, Lamb-
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`Weston offered to reschedule the date of deposition, but Mr. Stoller indicated that he would be
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`unavailable for several months. Li. at 1297-1298. The Board found that Lamb-Weston’s notice
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`of deposition was timely served and that it had, in good faith, sought to resolve the matter before
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`bringing it to the attention of the Board, by offering to reschedule the deposition on an
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`alternative date. Q at 1298. The Board indicated that the petitioner and Mr. Stoller, “on the
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`other hand, [have] been wholly uncooperative,” noting that “[i]t is obvious from the record that
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`respondent [(Lamb-Weston)] has made every attempt to accommodate petitioner. However,
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`petitioner has refused to reschedule the deposition within a reasonable time period.” I_d. The
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`Board granted Lamb-Weston’s motion to compel the petitioner’s deposition appearance as
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`scheduled by Lamb—Weston.
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`I_d.
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`Registrant’s refusal to appear for deposition is similarly unjustifiable. Registrant
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`has simply been playing games with Petitioner and has no intention of cooperating with
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`Petitioner’s requests. Like Lamb-Weston, Petitioner has made several attempts to secure the
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`deposition testimony of Registrant, and has, in good faith, sought to resolve the matter before
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`bringing it to the attention of the Board. (Jacobs Decl. at W 6, 8 and 9). However, Registrant,
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`much like Leo Stoller, has expressly refused to attend the deposition as noticed, and would not
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`cooperate with Petitioner to schedule a mutually convenient time for both parties. The dates
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`offered by Mr. Smith in his September 16”‘ correspondence were impossible to accommodate,
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`which was precisely Registrant’s intention. (E email from Stephen Smith to Andrew M. Stern,
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`Esq., dated September 16, 2012, Exh. D to Jacobs Decl.) After reaching out to Registrant several
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`times with no response, Registrant finally responded to Petitioner’s correspondence, offering to
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`appear for his deposition on Sunday, September 30, 2012 at 2 p.m. (Email from Stephen Smith
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`to Hara K. Jacobs, Esq., dated September 24, 2012, Exh. G to Jacobs Decl.) Of course,
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`Registrant does not acknowledge the fact that his “offer” of compromise is futile, being on a
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`weekend, and outside of the discovery deadline set by the Board. After further correspondence,
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`with Petitioner explaining that the suggested date is outside of the discovery period set by the
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`Board, Mr. Smith replied that he will no longer communicate with Petitioner on this matte.
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`(Jacobs Decl. at W 12-13; Email from Hara K. Jacobs, Esq.. to Stephen Smith, dated September
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`24, 2012, Exh. H to Jacobs Decl.; Email from Stephen Smith to Hara K. Jacobs, Esq., dated
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`September 24, 2012, Exh. Ito Jacobs Decl.).
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`

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`Unlike Mr. Stoller, Registrant has not provided any reason for his inflexibility,
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`and, furthermore, has not provided responses to Petitioner’s discovery requests, which is what
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`caused the initial rescheduling of Mr. Smith’s deposition testimony. (Jacobs Decl. at W 4, 5 and
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`7; Email from Andrew M. Stern, Esq. to Stephen Smith, dated June 29, 2012, Exh. B to Jacobs
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`Decl.). Mr. Smith has been wholly uncooperative and flat out refuses to negotiate a mutually
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`convenient time for his deposition testimony, only suggesting times that would clearly never
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`work under the circumstances. Registrant has failed to cooperate in scheduling his deposition,
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`and has informed Petitioner that he will no longer communicate with Petitioner about the same.
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`III.
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`The Appropriate Sanction Under the Circumstances is a Default Judgment
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`Registrant’s flouting of the Board’s Order, willful refusal to participate in
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`discovery, and his explicit response to Petitioner’s correspondence that he will not do so,
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`demonstrates the need for the ultimate sanction of a default judgment in this case. While default
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`judgment is a harsh remedy, it is justified where no less drastic remedy would be effective, and
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`there is a strong showing of willful evasion. Barone Philippe de Rothschild S.A. V. Sty]-Rite
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`gm, 55 U.S.P.Q.2d. 1848, 1854. Much like in Caterpillar, it is clear from Registrant’s failure
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`to provide responses to Petitioner’s discovery requests, the lack of any reason for doing so, and
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`Registrant’s unequivocal statement that he will no longer communicate with Petitioner regarding
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`discovery, that Registrant has no interest in proceeding with this case or complying with orders
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`issued by the Board. Registrant is willfully evading any and all attempts from Petitioner and the
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`Board to secure discovery responses, and, therefore, the only effective remedy is the entry
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`default judgment against Registrant. Caterpillar Tractor Co. v. Catfish Anglers Together, Inc.,
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`194 U.S.P.Q. 99, 100 (TTAB 1976).
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`IV.
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`Alternatively, the Board Should Admit Critical Documents
`into Evidence that Registrant Has Refused to Produce
`and Reguire Registrant to Appear for His Deposition
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`

`
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`In the alternative, Petitioner requests that, inter alia the Board admit into
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`evidence emails between Registrant and Ms. Jennifer Tisch, a graphic designer, that Petitioner
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`obtained by subpoena from Ms. Tisch. (Jacobs Decl. at 1ll4; Documents received from J. Tisch,
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`Exhibit J to Jacobs Decl.). The e-mails explain that Registrant obtained the services of Ms.
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`Tisch to put together a website for “The Darlington Apple Festival.” 15; Critically, the e-mails
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`show that Ms. Tisch was confused by Registrant ’s requestfor a website, believing that Registrant
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`was acting on behalfofPetitioner, Darlington Apple Festival, Inc. ld, Further, the emails
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`indicate that although the commissioned website was never accessible by the public, and was
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`only kept as a mock-up design (which Registrant knew full well), Registrant nonetheless
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`fraudulently submitted the mock-up website to the U.S. Patent and Trademark Office as evidence
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`of his purported use of THE DARLINGTON APPLE FESTIVAL mark.
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`I_d_,
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`The foregoing emails among Ms. Tisch and Registrant are directly responsive to
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`Petitioner’s document requests, which seek all documents concerning Ms. Tisch and all
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`communications between Registrant and Ms. Tisch. (Jacobs Decl. at 1ll5; Exhibit K to Jacobs
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`Decl. at Request Nos. 20-21.) However, Registrant has refused to produce any documents to
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`Petitioner and has refused to attend a deposition to answer questions about these documents, thus
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`effectively depriving Petitioner of the critical evidence that literally makes Petitioner’s case.1
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`Under the unique circumstances presented here, if a default judgment is not entered, Petitioner
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`respectfully requests an order:
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`0
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`admitting all of the documents produced by Ms. Tisch into evidence (attached at Exhibit
`J hereto);
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`Ms. Tisch is seriously ill and is unable to attend a deposition. (Jacobs decl. 1] 16.) We
`are advised by her counsel that it is unlikely that she will be able to give testimony in this
`case. (Li) Petitioner suspects that Registrant is aware of Ms. Tisch’s current health
`situation and, together with his willful refusal to participate in discovery, is attempting to
`use it to his advantage.
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`

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`0 permitting Ms. Tisch to testify through an affidavit; and
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`0
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`requiring Registrant to appear for his deposition at the Baltimore office of Petitioner’s
`counsel and granting only Petitioner a brief extension of the discovery period to enable
`Petitioner to take Registrant’s deposition.
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`Although these remedies will not provide Petitioner with the same discovery that it should have
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`received from Registrant, it would alleviate some but not all of the prejudice that Petitioner has
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`suffered and will continue to suffer as a result of Registrant’s willful refusal to produce
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`responsive documents, answer interrogatories and to appear for his deposition.
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`CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the Board grant
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`Petitioner’s Motion for Sanctions and issue a default judgment against Registrant, or, in the
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`alternative, grant Petitioner’s alternative request for sanctions. Petitioner respectfully requests
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`that the Board suspend the proceedings pending the disposition of Petitioner’s motion.
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`Date: September 28, 2012
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`Respectfully submitted,
`
`BALLARD SPA
`
`LLP
`
`1735 Market Street, 51“ Floor
`Philadelphia, PA 19103-7599
`215.665.8500
`
`Attorney for Petitioner Darlington Apple
`Festival, Inc.
`
`

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`CERTIFICATE OF SERVICE
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`1, Andrew M. Stern, hereby certify that on today’s date, I caused a copy of the
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`foregoing Petitioner’s Motion for Sanctions, to be served by Priority Mail on the Registrant as
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`set forth below:
`
`STEPHEN SMITH
`
`4539 CONOWINGO ROAD
`
`DARLINGTON, MD 21034
`
`Dated: September 28, 2012
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DARLINGTON APPLE FESTIVAL INC.
`
`STEPHEN SMITH
`
`Petitioner,
`
`V.
`
`Registrant.
`
`Cancellation No.
`
`92053945
`
`DECLARATION OF HARA K. JACOBS
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`I, Hara K. Jacobs, declare as follows:
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`1.
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`I am a partner in the law firm of Ballard Spahr LLP, counsel for Petitioner,
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`Darlington Apple Festival, Inc. (“Petitioner”) in the above-captioned proceeding.
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`I submit this
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`Declaration in support of Petitioner’s Motion for Sanctions.
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`2.
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`On June 12, 2012, Petitioner, through counsel, served a Notice of Deposition
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`upon Stephen Smith (“Registrant”), scheduling Registrant’s deposition for July 3, 2012, attached
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`hereto as Exhibit A. Petitioner received no response from Registrant regarding this notice.
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`3.
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`On June 28, 2012, Petitioner filed its Motion to Compel due to Registrant’s
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`failure to provide responses to Petitioner’s discovery requests. (Dkt. No. 17).
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`4.
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`On June 29, 2012, Andrew Stern, Esq., an associate with our firm working on this
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`matter, e-mailed Registrant to inform him that due to his failure to provide timely discovery
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`

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`responses, Petitioner’s counsel would reschedule Registrant’s deposition to a later date, once the
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`responses were received. A copy of Mr. Stern’s e—mail is attached as Exhibit B.
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`5.
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`To date, Registrant has not responded to Petitioner’s outstanding discovery
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`requests.
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`6.
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`On September 12, 2012 Petitioner served a second Notice of Deposition upon
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`Registrant, scheduling Registrant’s deposition for September 25, 2012, attached hereto as Exhibit
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`C.
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`7.
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`On September 16, 2012, Registrant responded to Petitioner by email, indicating
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`his refusal to comply with Petitioner’s Notice of Deposition, with no justification as to why he
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`could not attend the deposition as noticed, and providing alternative dates that would be
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`convenient for him. A copy of Mr. Smith’s email is attached as Exhibit D.
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`8.
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`On September 16, 2012, I responded to Registrant’s email, explaining that the
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`deposition could not be rescheduled to the dates offered by Registrant, because the first date was
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`less than twenty-four hours notice and fell on a religious holiday observed by Petitioner’s
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`counsel, and the second date was well beyond the close of discovery. Petitioner sought to
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`confirm Registrant’s attendance at the deposition as noticed, and offered to reschedule to a
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`mutually agreeable date and time. A copy of my email is attached as Exhibit E.
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`

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`9.
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`Registrant did not respond to my September 16, 2012 e-mail.
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`10.
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`On September 20, 2012, I followed up with a second email to Registrant, and
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`again requested confirmation that Registrant would attend the deposition as scheduled, or
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`suggest another date and time that would be more convenient. A copy of my email is attached as
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`Exhibit F.
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`11.
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`On September 24, 2012, Registrant responded to my email dated September 20,
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`2012, indicating that the only time he would be available to meet with Petitioner would be
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`Sunday, September 30, 2012 at 2 p.m. A copy of Mr. Smith’s email is attached as Exhibit G.
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`12.
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`On September 24, 2012, I replied to Registrant’s email dated September 24, 2012,
`
`reiterating that the dates proposed by Registrant are outside of the discovery period and inquiring
`
`as to the status of overdue responses to Petitioner’s discovery requests. A copy of my email is
`
`attached as Exhibit H.
`
`13.
`
`On September 24, 2012, Registrant replied to my email dated September 24,
`
`2012, indicating that he “will now cease this communication” with Petitioner. A copy of Mr.
`
`Smith’s email is attached as Exhibit 1.
`
`

`
`14.
`
`On May 7, 2012, Petitioner issued a subpoena to Ms. Jennifer Tisch, a graphic
`
`designer in Bel Air, Maryland. Based on the documentation received from Ms. Tisch, Registrant
`
`requested that Ms. Tisch build him a website to publicize “The Darlington Apple Festival,”
`
`however, the documentation indicates that the website was never accessible by the public, was
`
`only a mock~up and that Registrant was fully aware of these facts. Additionally, Ms. Tisch’s
`
`emails indicate that she was under the impression that Registrant was obtaining her services on
`
`behalf of Petitioner, Darlington Apple Festival, Inc. A copy of the pertinent documentation
`
`received from Ms. Tisch is attached as Exhibit J.
`
`15.
`
`The e-mails that Ms. Tisch produced are directly responsive to Petitioner’s First
`
`Set of Document Requests, including Request Nos. 20 and 21, and should have been produced
`
`by Registrant. A copy of Petitioner’s First Set of Requests for the Production of Documents is
`
`attached as Exhibit K.
`
`16.
`
`I have been advised by counsel for Ms. Tisch that she is seriously ill and,
`
`therefore, unable to attend a deposition at the present time.
`
`I have been further advised that
`
`because of her illness, it is unlikely that she will be able to give testimony in this case during the
`
`testimony period.
`
`I declare, under penalty of perjury, that the foregoing is true and correct.
`
`Dated: Philadelphia, Pennsylvania
`
`September 28, 2012
`
`

`
`EXHIBIT A
`
`

`
`Stern, Andrew M. (Phila)
`
`From:
`
`Sent:
`To:
`Cc:
`
`Subject:
`
`Mr. Smith:
`
`Stern, Andrew M. (Phila)
`
`Tuesday, June 12, 2012 5:52 PM
`'stephenhque@gmail.com'
`Jacobs, Hara K.
`(Phila)
`
`Darlington Apple Festival Cancellation Proceeding —— Notice of Deposition
`
`Pursuant to Rule 30 of the Federal Rules of Civil Procedure and 37 C.F.R. § 2120, we are enclosing a notice of
`deposition which requires your appearance at our offices for deposition testimony on July 3, 2012 at 10AM.
`
`We are additionally enclosing a copy of a subpoena being sewed on Ms. Jennifer Tisch for her deposition testimony.
`
`Thank you.
`
`®
`
`Sta n -0024 . p elf
`
`Sea n -0022 . p dlf
`
`Andrew Stern
`
`Ballard Spahr, LLP
`1735 Market Street, 51st Floor
`Philadelphia, PA 19103-7599
`Direct: 215.864.8127
`Fax: 215.864.8999
`
`sternam@ba||ardspahr.com | www.ba|lardspahr.com
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DARLINGTON APPLE FESTIVAL INC.
`
`Petitioner,
`
`v.
`
`Cancellation No.
`
`92053945
`
`STEPHEN SMITH
`
`Registrant.
`
`NOTICE OF DEPOSITION
`
`PLEASE TAKE NOTICE that in accordance with Rules 30 of the Federal Rules
`
`of Civil Produce and 37 CPR. § 2.120, Petitioner, Darlington Apple Festival, Inc. (“Petitioner”),
`
`by its undersigned counsel, will take the deposition upon oral examination of Stephen Smith
`
`(“Registrant”). The deposition will commence on July 3, 2012, at 10:00 am., at the offices of
`
`Ballard Spahr LLP, 1735 Market Street, 51st Floor, Philadelphia, PA 19103, and will continue
`
`day to day until completed. The deposition will be taken before an officer authorized by law to
`
`administer oaths pursuant to the Federal Rules of Civil Procedure and shall be recorded by
`
`sound, visual and/or steno graphic means.
`
`Dated: June 12, 2012
`
`I-Iara K. Jacobs
`BALLARD SPAHR LLP
`
`1735 Market Street, 51“ Floor
`Philadelphia, PA 19103-7599
`215.665.8500
`ATTORNEY FOR PETITIONER
`
`DMEAST15163998 V1
`
`

`
`CERTIFICATE OF SERVICE
`
`I, Andrew M. Stern, hereby certify that on today’s date, I caused a copy of the foregoing
`
`Notice of Deposition, to be served by First Class Mail on the Registrant as set forth below:
`
`STEPHEN SMITH
`4539 CONOWINGO ROAD
`
`DARLINGTON, MD 21034
`
`Dated: June 12, 2012
`
`DMEAST 15183998 V1
`
`l\.'J
`
`

`
`EXHIBIT B
`
`

`
`Stern, Andrew M. (Phila)
`
`From:
`
`Sent:
`To:
`Cc:
`
`Subject:
`
`Mr. Smith,
`
`Stern, Andrew M. (Phila)
`
`Friday, June 29, 2012 2:24 PM
`’stephenhque@gmail.com‘
`Jacobs, Hara K.
`(Phila)
`
`Deposition in Darlington Apple Festival Cancellation Proceeding
`
`Yesterday, we filed a Motion to Compel your discovery responses because you have not responded to Petitioner's
`outstanding document or interrogatory requests, you have not produced any documents and you have not responded to
`any of our emails on this subject. Please be advised that we are rescheduling your deposition originally set for July 3rd so
`that we can have your documents and interrogatory responses at the time of your deposition. We look fonivard to
`receiving your production of documents and your interrogatory responses so that we can reschedule your deposition.
`
`Thank you.
`
`Andrew Stern
`
`Ballard Spahr, LLP
`1735 Market Street, 51st Floor
`Philadelphia, PA 19103-7599
`Direct: 215.864.8127
`Fax: 215.864.8999
`
`sternam@ballardspahr.com | www.ballardsgahr.com
`
`

`
`EXHIBIT C
`
`

`
`Stern, Andrew M. (Phila)
`
`From:
`
`Sent:
`To:
`Cc:
`
`Subject:
`Attachments:
`
`Mr. Smith:
`
`Stern, Andrew M. (Phila)
`
`Wednesday, September 12, 2012 1:50 PM
`'stephenhque@gmail.com’
`Jacobs, Hara K.
`(Phila)
`
`Darlington Apple Festival Cancellation Proceeding —— Notice of Deposition
`Scan—0O37.pdf
`
`Pursuant to Rule 30 of the Federal Rules of Civil Procedure and 37 C.F.R. § 2120, we are enclosing a notice of
`deposition which requires your appearance at our offices for deposition testimony on September 25, 2012 at 9:00 am.
`
`Thank you.
`
`Andrew Stern
`
`Ballard Spahr, LLP
`1735 Market Street, 51st Floor
`Philadelphia, PA 19103-7599
`Direct: 215.864.8127
`Fax: 215.864.8999
`
`sternam@ballardspahr.com | www.ba|lardsgahr.com
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DARLINGTON APPLE FESTIVAL INC.
`
`Petitioner,
`
`V.
`
`Cancellation No.
`
`92053945
`
`STEPHEN SMITH
`
`Registrant.
`
`NOTICE OF DEPOSITION
`
`PLEASE TAKE NOTICE that in accordance with Rules 30 of the Federal Rules
`
`of Civil Produce and 37 C.F.R. § 2120, Petitioner, Darlington Apple Festival, Inc. (“Petitioner”),
`
`by its undersigned counsel, will take the deposition upon oral examination of Stephen Smith
`
`(“Registrant”). The deposition will commence on September 25, 2012, at 9:00 a.m., at the
`
`offices of Ballard Spahr LLP, 1735 Market Street, 51st Floor, Philadelphia, PA 19103, and will
`
`continue day to day until completed. The deposition will be taken before an officer authorized
`
`by law to administer oaths pursuant to the Federal Rules of Civil Procedure and shall be recorded
`
`by sound, visual and/or stenographic means.
`
`Dated: September 12, 2012
`
`. Jaco
`Hara
`BALLARD SPAHR LLP
`1735 Market Street, 51“ Floor
`Philadelphia, PA 19103-7599
`215.665.8500
`ATTORNEY FOR PETITIONBR
`
`DMEAST 15163998 V1
`
`

`
`CERTIFICATE OF SERVICE
`
`1, Andrew M. Stern, hereby certify that