Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA861773 Filing date: 12/01/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91223136 Party Plaintiff Texas A&M University Correspondence JOHN C CAIN Address FLECKMAN & MCGLYNN PLLC 8945 LONG POINT ROAD , SUITE 120 HOUSTON, TX 77055 UNITED STATES Email: [email protected], [email protected], [email protected] Submission Testimony For Plaintiff Filer's Name Zachariah Wolfe Filer's email [email protected], [email protected] Signature /Zachariah Wolfe/ Date 12/01/2017 Attachments 2017.12.01 Notice of Filing of Deposition.pdf(308135 bytes ) 2017 0808 Deposition of Shane Hinckley.pdf(777567 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD TEXAS A&M UNIVERSITY § OPPOSITION § Opposer, § Opposition No.: 91223136 § v. § Application Serial No.: 86/445,864 § § Filed: November 5, 2014 § WASHINGTON SOAP COMPANY § § Applicant. § OPPOSER’S NOTICE OF FILING OF TESTIMONY DEPOSITION In accordance with 37 C.F.R. § 2.125(d), Opposer Texas A&M University files the attached certified transcript and exhibits of the testimony deposition of Shane Hinckley taken on August 8, 2017. (Exhibits will be filed separately due to file size limitations.) December 1, 2017 /s/ John C. Cain John C. Cain Email: [email protected] Zachariah Wolfe Email: [email protected] Fleckman & McGlynn, PLLC 8945 Long Point Rd, Suite 120 Houston, Texas 77055 Telephone: (713) 722-0120 Facsimile: (832) 446-2424 ATTORNEYS FOR OPPOSER, TEXAS A&M UNIVERSITY 1 CERTIFICATE OF SERVICE I hereby certify that a true and correct copy of Opposer’s Notice of Filing of Testimony Deposition is being served on Applicant on December 1, 2017 by email to [email protected] with copies of the exhibits being served on Applicant by certified mail to Mr. Jeff Sellentin, Washington Soap Company, 785 16th Pl., Suite 22, Mukilteo, WA 98275-2283. /s/ Zachariah Wolfe Zachariah Wolfe 2 Shane Hinckley 8/8/2017 1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Texas A&M University, ) Opposition No. 91223136 ) Serial No. 886/445,864 Opposer, ) ) VS. ) OPPOSITION ACTION ) Washington Soap ) Company, ) ) Applicant. ) Mark: 12th MAN HANDS ******************************************* ORAL DEPOSITION OF SHANE HINCKLEY AUGUST 8, 2017 ****************************************** ORAL DEPOSITION OF SHANE HINCKLEY, produced as a witness at the instance of the OPPOSER, and duly sworn, was taken in the above-styled and numbered cause on the 8th day of August, 2017, from 9:02 a.m. to 4:45 p.m., before Donna J. Whiteside, CSR in and for the State of Texas, reported by machine shorthand, at Texas A&M University, Jack K. Williams Administration Building, 400 Bizzell Street, Room 002, College Station, Texas, pursuant to the Federal Rules of Civil Procedure and the provisions stated on the record or attached hereto. THE LEGAL CONNECTION, INC. WWW.TLC-TEXAS.COM Shane Hinckley 8/8/2017 2 1 A P P E A R A N C E S 2 3 FOR THE OPPOSER: 4 Mr. John C. Cain FLECKMAN & McGLYNN, PLLC 5 8945 Long Point Road, Suite 120 Houston, Texas 77055 6 Phone: (713) 722-0120 Fax: (713) 722-0122 7 [email protected] 8 Ms. Katherine R. Knight THE TEXAS A&M UNIVERSITY SYSTEM 9 OFFICE OF GENERAL COUNSEL John B. Connally Building, 6th Floor 10 301 Tarrow Street College Station, Texas 77840-7896 11 Phone: (979) 458-7461 Fax: (979) 458-6150 12 [email protected] 13 FOR THE APPLICANT: 14 Mr. Jeff Sellentin (NOT PRESENT) WASHINGTON SOAP COMPANY 15 785 16th Place, Suite 22 Mukilteo, Washington 98275-2283 16 [email protected] 17 ALSO PRESENT: 18 Ryan Pope 19 20 21 22 23 24 25 THE LEGAL CONNECTION, INC. WWW.TLC-TEXAS.COM Shane Hinckley 8/8/2017 3 1 I N D E X 2 Page 3 Appearances.................................. 2 4 Examinations Page 5 6 EXAMINATION BY MR. CAIN..................... 11 7 OPPOSER'S EXHIBITS 8 No. Description Offered 9 1 Printout of Book Entitled "The Twelfth 35 10 Man" by Wilbur Evans and H.B. McElroy 11 2 Photo from Circa 1930 of Kyle Field 38 12 3 Photo from Kyle Field in a Game in 1984 39 13 4 Manuscript of Dr. E. King Gill's Speech 42 14 5 Photo of a Statue of E. King Gill on the 44 Plaza Outside Kyle Field 15 6 News Article Out of the Eagle Newspaper 45 16 Dated August 12th, 2013 17 7 A National Sports Blog Entitled "Good 47 Bull Hunting" 18 8 Newspaper Article from an Alabama 49 19 Newspaper Titled "Who Is The 12th Man for Texas A&M Aggies?" 20 9 News Article by KBTX dated January 50 21 of 2017 22 10 Document from the Association of Former 53 Students Website Depicting the Statues 23 of E. King Gill 24 11 12th Man Trademark Certificate Issued on 62 September 4th of 1990 25 THE LEGAL CONNECTION, INC. WWW.TLC-TEXAS.COM Shane Hinckley 8/8/2017 4 1 EXHIBITS CONTINUED 2 12 Trademark of Service Certificate of 12th 62 Man for Classes 14 and 41, Registered on 3 January 16, 1996. 4 13 12th Man Mark in Class 41, Registered 62 December 18, 2007 5 14 Trademark Certificate for Home of the 62 6 12th Man in Classes 25 and 41, Registered March 12, 2013 7 15 Screenshots From the Texas A&M Athletic 63 8 Website 12thMan.com 9 16 (No exhibit offered) 10 17 Screenshots of Videos from Website 60 11 18 Texas A&M Athletics Mobile App 67 12 19 Media Guide 68 13 20 Article by Steve Berkowitz 77 14 21 Printouts of the 12thManFoundation.com 79 15 22 12th Man Foundation Logo 82 16 23 Sticker That Contains the 12th Man Logo 82 17 24 Copy of the July 15, 2017, 12th Man 83 Magazine 18 25 Picture of the Outside of Kyle Field 88 19 Student Entrance 20 26 Photos of the Student Union in the 89 Memorial Student Center 21 27 Photo of the 12th Man Hall in the 90 22 Memorial Student Center 23 28 Pictures of the 12th Man Rally Towels 91 24 29 Photo of the Section of the Stadium that 92 Displays the "Home of the 12th Man" 25 THE LEGAL CONNECTION, INC. WWW.TLC-TEXAS.COM Shane Hinckley 8/8/2017 5 1 EXHIBITS CONTINUED 2 30 Sports Illustrated Article Dated 1983 92 3 and Entitled "College and Pro Football Spectacular" 4 31 "Dude Perfect Video. World's Longest 94 5 Basketball Shot." (On USB Drive) 6 32 Video on USB (Skipped, Not Attached.) 7 33 Video on USB (Skipped, Not Attached.) 8 34 Video on USB (Skipped, Not Attached.) 9 35 Screenshots of the Dude Perfect Videos 96 10 36 (Skipped and Not Attached) 11 37 (Skipped and Not Attached) 12 38 Video of Johnny Manziel's Heisman Trophy 107 Acceptance Speech [On USB Drive] 13 39 Article out of Sports Media Watch 108 14 40 Website Entitled "Topbet Sports Betting 109 15 Tips, News, and Analysis" 16 41 Article Out of the Sports Section in the 110 Dallas News from February of 2015 17 42 Article by National Sports Writer George 112 18 Schroeder 19 43 Picture of a Branded State of Texas, 112 Texas A&M License Plate 20 44 Dallas Morning News Article Regarding 113 21 the License Plate 22 45 Blog Post from TexAgs 115 23 46 12th Man Foundation Facebook Page 116 24 47 Post Off of the Reddit Blog 117 25 THE LEGAL CONNECTION, INC. WWW.TLC-TEXAS.COM Shane Hinckley 8/8/2017 6 1 EXHIBITS CONTINUED 2 48 Post Off of the Reddit Website Entitled 118 3 "Home of the 12th Man, Removed from Seattle CenturyLink Field" 4 49 Texas A&M Athletics Facebook Page 118 5 50 Instagram Social and Media Account of 119 6 Texas A&M Athletics 7 51 Official Twitter Account of Texas A&M 119 Athletics 8 52 Official Texas A&M University Pinterest 120 9 Account 10 53 Official Twitter Account of Texas A&M 121 University 11 54 Search on Twitter for Hashtag 12th Man 121 12 and @TAMU 13 55 Results of Search on Twitter for Hashtag 122 TAMU and Hashtag 12th Man 14 56 Twitter Search for the Word "Texas#12th 122 15 Man" 16 57 Texas A&M Athletics YouTube Page 123 17 58 Depict All of the Products That Are 125 Branded with 12th Man 18 59 Table Referencing a Representative 142 19 Sampling of Some of the Infringers of the 12th Man Mark and Enforcement Action 20 Taken 21 60 Cease and Desist Letter to Aggie Student 143 Painting 22 61 Cease and Desist Letter to 146 23 Aggielandtickets.com 24 62 Cease and Desist Letter to Aggswaggear 147 25 THE LEGAL CONNECTION, INC. WWW.TLC-TEXAS.COM Shane Hinckley 8/8/2017 7 1 EXHIBITS CONTINUED 2 63 Cease and Desist Letter Sent By the 147 3 Collegiate Licensing Company to Around Aggieland 4 64 Cease and Desist Letter to Atkinson 147 5 Toyota 6 65 Cease and Desist Letter to the Cake 148 Junkie 7 66 Cease and Desist Letter Sent to Celtic 148 8 Realtors 9 67 Cease and Desist Letter sent in November 149 of 2010 to a Chevy Dealership in Dallas, 10 Texas 11 68 Cease and Desist Letter Sent to 149 Montelongo's Fine Jewelry 12 69 Cease and Desist Letter sent on February 150 13 of 2012 to Fabulous Fare 14 70 Cease and Desist Letter Sent to Fat 151 Burger Grill 15 71 Cease and Desist Letter Sent by Our 150 16 Licensing Agency on November 20th, 2014 to Chasing Trends 17 72 Cease and Desist Letter Sent on January 151 18 of 2014 19 73 Cease and Desist Letter Sent to Kate's 151 Coasters 20 74 Cease and Desist Letter From Our 152 21 Licensing Agency, Sent on January of 2013 to Kroger 22 75 Cease and Desist Letter From Our 152 23 Licensing Agency Sent on February 5th of 2014 to a Company Located in Hawaii 24 76 Cease and Desist Letter Sent to Party 155 25 Time Rentals THE LEGAL CONNECTION, INC.