BIG WANTS INFO, FAST


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1. Pursuant to Fed. R. Civ, P. 26(d), 30(a), 33(a), 34(b) and 36(a), defendant/counterclaimant Big, hereby applies to the Court for the entry of an Order, consistent with the proposed form of Order lodged with this Application, to expedite discovery. Big specifically requests an Order: (a) granting Big leave to serve on the plaintiff-counterdefendant Small, P.C. the document requests and interrogatories attached in Exhibits A and B, and shortening the response time to August 9, 2007 via hand-delivery; and (b) granting Big leave to serve notice of, and take, the depositions of plaintiff-counterdefendant Small, P.C. and counterdefendant John T. Cpaatty on August 11 and 12, 2007, consistent with the notices of deposition attached in Exhibits C & D.

2. Big also moves that this Application be given expedited consideration to allow Big to take the requested discovery in advance of the hearing on its Application for Preliminary Injunction.

Memorandum in Support of Big's Application

3. Big has filed with this Court an Application for an Order to Show Cause and an Application for Preliminary Injunction to enjoin the Counterdefendants from further infringement of Big's protected trademarks and service marks "TaxHQ" and "Big TaxHQ" in soliciting business on their website and other promotional materials, and using those marks as part of their website domain name and as keywords that attract Big's clients and prospective clients to their website. Good cause for accelerating discovery exists here to enable Big to prepare for the preliminary injunction hearing, which Big has requested to have set on August 16, 2007, or as soon thereafter as is possible.

4. The attached discovery is narrowly focused on obtaining evidence that will be relevant to the issues to be presented at that hearing:

-5. The Counterdefendants' use of their claimed mark in commerce in Washington and elsewhere, which is relevant to Small P.C's claim that its mark has priority over Big's marks and the likelihood of public confusion stemming from the parties use of their respective marks;

-6. The prosecution history underlying the Counterdefendants' application for registration to the Patent and Trademark Office, which is relevant to the validity of the registration:

-7. The Counterdefendants' awareness of Big's use of its marks, which is relevant to whether their conduct was willful and the likelihood of confusion;

-8. The Counterdefendants' creation of their website and the use of Big's claimed marks on the website, its domain name. and in keywords, which are relevant to their awareness of Big's use and whether their use of Big's marks was intended to confuse Internet users who were searching for Big's website;

-9. Efforts made by Counterdefendants to associate their services with their claimed mark, which is relevant to public association of the mark with their services and the likelihood of confusion with Big's marks; and

-10. Evidence relating to the potential for confusion stemming from the Counterdefendants' use of their mark and Big's use of its marks.

11. Courts have not hesitated to expedite discovery in such circumstances. The advisory committee notes to Rule 26(d) expressly recognize that a Court should authorize expedited discovery where a preliminary injunction is requested. Fed. R. Civ. P. 26 advisory committee notes (expedited discovery by court order "will be appropriate, in some cases, such as those involving requests for preliminary injunction"); see also Ellsworth Assocs., Inc. v. United States, 917 F, Supp. 841, 844 (D.D.C. 1996) ("[E]xpedited discovery is particularly appropriate when a plaintiff seeks injunctive relief because of the expedited nature of injunctive proceedings"). Consistent with that authority, expedited discovery is routinely granted in actions involving infringement and unfair competition." Benham Jewelry Corp. v. Aron Basha Corp., No. 97 Civ, 3841 (RWS), 1997 U.S.

DEFENDANTS/COUNTERCLAIMANTS' FIRST SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS TO SMALL:

12. Pursuant to Fed. R. Civ. P. 34, defendants/counterclaimants Big request that plaintift-counterdefendant Small produce for inspection and copying on or before August 9, 2007, the following documents and things at the offices of Smith & Williams, P.A., or at such other place as counsel for the parties may agree.

DOCUMENTS AND THINGS TO BE PRODUCED

13. All documents referring or relating to the preparation and prosecution of applications to register any "TaxHQ" marks with the U.S. Patent and Trademark Office or any state within the United States, including a copy of each specimen of use that was submitted to the U.S. Patent and Trademark Office or other government agency.

14. The license and assignment referenced in paragraph 5 of the complaint and all documents referring or relating to them.

15. All documents referring or relating to consideration, selection or adoption of any "TaxHQ" mark.

16. All documents referring or relating to any study, survey, investigation, or search relating to the selection, use, registration or enforcement of any "TaxHQ" mark, including any document referring or relating to the likelihood of confusion between "TaxHQ" mark and any Big mark.

17. A sample of every brochure, newsletter, flyer, correspondence, advertisement or marketing material, using or displaying a "TaxHQ" mark, used by you in connection with the marketing, advertising or sale of services.

18. All documents referring or relating to your registration with Network Solutions, Inc. of the domain name "TaxHQ.NET", and any other attempted registration of any domain name containing the term "TaxHQ" or any similar or derivative term.

19. All documents referring or relating to the use of metatag "TaxHQ" in your website.

20. A hard-copy of all versions of your website that you have created, including hard copies of any pages that have been changed.

21. All documents referring or relating to any use of "TaxHQ" marks by you in intrastate or interstate commerce. A. All documents referring or relating to Big or its use of the marks "TaxHQ" or "Big TaxHQ", including all documents reflecting communications with Big, your awareness of Big, or your awareness of Big's use of the marks "TaxHQ" or "Big TaxHQ: B. All documents referring or relating to whether consumers have identified or associated any "TaxHQ" mark with you, with Big, or with any third party. B1. All documents referring or relating to any actual or potential public confusion between any of your services and any services offered by Big. C. All documents referring or relating to sales or attempted sales by you involving any service featured on your website or on other promotional materials displaying the "TaxHQ" mark. D. All documents referring or relating to expenses by you to promote any "TaxHQ" marks.

DEFINITIONS

22. "Small" "you," or "your" mean plaintiff/counterdefendant Small, its predecessors or successors in interest (including any one from whom rights of use were assigned or licensed), and its past and present officers, directors, agents, employees, consultants and others acting or purporting to act on its behalf, including counterdefendant John T. Cpaatty.

23. "Big" means defendants/counterclaimant Big and its past and present officers, directors, agents, employees, consultants and others acting or purporting to act on its behalf.

24. "TaxHQ mark" means any purported trademark, service mark, trade name, certification mark or collective mark in which "TaxHQ"(in capital or small letters or a mixture thereof) comprises all or a portion of the mark.

25. "Your website" means the website accessible at the web address ''http://www.TaxHQ.net'' and the website accessible at the web address ''http://www.abouttax.com''.

26. "Document" has the same meaning as used in Rules 26 and 34 of the Federal Rules of Civil Procedure.

27. "Identity," when used with respect to a person, means to state the person's name, current or last known employer and job title, and current or last known work and home addresses and telephone numbers.

28. The phrase "referring or relating to" means and includes concerning, reflecting, alluding to, mentioning, regarding, discussing, summarizing, supporting, bearing upon, commenting upon, constituting, pertaining to, describing or depicting.

29. The words "and" and "or" shall be construed conjunctively or disjunctively, whichever makes the request more inclusive.

INSTRUCTIONS

30. All responsive documents stored in machine readable form shall be produced in hard copy form with the generation date, the printout date, file name, and file location appearing on the copy.

31. If you object to the production of any document sought by these Requests for Production based on some limitation on discovery (including a claim of privilege or immunity), provide the following:

32. The date of creation or transmittal indicated on each document (or an estimate of that date, indicated as such, if no date appears on the document);

33. A general description of the subject matter of the document that is sufficiently specific to permit a fair evaluation of the merits of your reasons for not producing the document; and The reason the document was withheld from production (e.g., "attorney-client privilege)

DEFENDANTS/COUNTERCLAIMANTS' FIRST SET OF INTERROGATORIES TO SMALL

34. Pursuant to Fed. R. Civ. P. 33, defendants/counterclaimants Big request that Small answer in writing and under oath the following interrogatories on or before August 9, 2007.

Interrogatory No.1

35. Identify all uses in commerce of the "TaxHQ" mark by you or counterdefendant John T. Cpaatty, stating the first date of each such use and the circumstances of such use.

Interrogatory No.2

36. Describe in detail all facts and circumstances regarding your or counterdefendant John T. Cpaatty's first use and first use in interstate commerce of the "TaxHQ" mark.

Interrogatory No.3

37. Describe in detail all facts and circumstances regarding your or counterdefendant John T. Cpaatty's selection and adoption of the "TaxHQ" mark, including the identity of each person involved in the selection and adoption of the mark, a description of the participation by each person so identified, whether a search was conducted to determine whether anyone was using a similar mark, and, if so,the results of the search.

Interrogatory No.4

38. Identify all print, broadcast, or Internet media in which you or counterdefendant John T. Cpaatty has advertised services using the "TaxHQ" mark, and provide the dates of all such advertisements.

Interrogatory No.5

39. State when and how you or counterdefendant John T. Cpaatty first became aware of Big or its use of the marks "TaxHQ", "Big TaxHQ" or any derivative thereof.

Interrogatory No.6

40. Describe in detail any communications you or counterdefendant John T. Cpaatty have had with Big.

Interrogatory No.7

41. Describe in detail any communications you or counterdefendant John T. Cpaatty have had with Big or any third party regarding the "TaxHQ"mark or any mark claimed or used by Big.

Interrogatory No.8

42. Identify any facts of which you are aware that would suggest that the services promoted under, and associated with, defendants' "TaxHQ"mark and Big's services promoted under, and associated with, the "TaxHQ" or "Big TaxHQ" marks are not substantially similar to one another.

Interrogatory No.9

43. Identify any facts of which you are aware that would suggest that plaintiff/counterdefendant's "TaxHQ" mark and Big's "TaxHQ" mark are not substantially similar to one another.

Interrogatory No. 10

44. Identify any facts of which you are aware that would suggest that there could be no actual confusion between plaintiffs services associated with plaintiffs "TaxHQ" mark and Big's services promoted under, and associated with, its "TaxHQ" mark.

DEFINITIONS

45. "Small" "you," or "your" mean plaintiff/counterdefendant Small, its predecessors or successors in interest (including anyone from whom rights of use were assigned or licensed), and its past and present officers, directors, agents, employees, consultants and others acting or purporting to act on its behalf.

46. "Big" means any entity using the name Big, and its past and present officers, directors, agents, employees, consultants and others acting or purporting to act on its behalf.

47. "TaxHQ" mark means any purported trademark, service mark, trade name, certification mark or collective mark in which "TaxHQ"(in capital or small letters or a mixture thereof) comprises all or a portion of the mark.

48. "Your website" means the website accessible at the web address ''http://www.TaxHQ.net'' and the website accessible at the web address ''http://www.abouttax.com''.

49. "Document" has the same meaning as used in Rules 26 and 34 of the Federal Rules of Civil Procedure.

50. "Identity," when used with respect to a person, means to state the person's name, current or last known employer and job title, and current or last known work and home addresses and telephone numbers.

51. "Identity" when used with respect to a document, means to state the date, title, the identity of the author(s) and the identity of the recipients(s) of the document and its present location and the identity of the custodian. If the present location or custodian of the document is unknown, state the last known location or custodian.

52. The phrase "relating to" means and includes referring to, concerning, reflecting, alluding to, mentioning, regarding, discussing, summarizing, supporting, bearing upon, commenting upon, constituting, pertaining to, describing or depicting.

53. The words "and" and "or" shall be construed conjunctively or disjunctively, whichever makes the request more inclusive.

INSTRUCTIONS

54. If, because of a claim of privilege or any other objection, you do not answer any interrogatory or portion thereof, set forth the privilege claimed or the objection, the facts upon which you rely to support the claim of privilege or the objection, and, if applicable to a document to be identified, furnish a list identifying each document for which a privilege is claimed or an objection is made, together with the following information for each document:

-55. The identity of each document's author, writer, sender or initiator and the identity of each document's recipient, addressee, or party for whom it was. intended; the date of creation or transmittal indicated on each document (or an estimate of that date, indicated as such, if no date appears on the document); a general description of the subject matter of the document that is sufficiently specific to permit a fair evaluation of the merits of your reasons for not producing the document; the reason the document was withheld from production (e.g., "attorney-client privilege")

NOTICE OF DEPOSITION OF SMALL

56. PLEASE TAKE NOTICE THAT pursuant to Rule 30(b)(6) of the Federal Rules of Civil Procedure, defendants/counterclaimants Big will take the deposition upon oral examination of Small, beginning on Wednesday, August 11, 2007, at 9:30 a.m. at the offices of Smith & Williams. The deposition will be taken stenographically before a notary public or any other officer duly authorized to administer oaths and will continue from day to day until completed.

57. Pursuant to Fed. R. Civ. P. 30(b)(6), you are obligated to designate one or more officers, directors, or managing agents or other persons to testify on behalf of Small who is, or who are, most knowledgeable as to the following matters:

-58. The organization, formation, and incorporation of Small, P.C.

-59. The services offered by Small, P.C., and the methods it uses to promote or advertise those services.

-60. All uses in commerce by Small, P.C., or John T. Cpaatty of the mark "TaxHQ" or any other similar mark, including the first use in commerce of those marks.

-61. Awareness of Big, its services, its promotional activities and its marks by Small or John T. Cpaatty.

-62. Expenditures made by Small, P.C., or John T. Cpaatty to promote the mark "TaxHQ" and any other similar mark, any study, survey, investigation, or search conducted by (or behalf of) Small, P.C., or John To Cpaatty relating to the selection, use, registration or enforcement of "TaxHQ" mark or any similar mark.

-63. The creation, development and use of the Small, P.C., website and any on-line service on that website, including the use of marks on the pages of the website and the use of keywords in the website's HTML code.

-64. Applications for registration of service marks and domain names submitted by (or on behalf of) Small, P.C., or John T. Cpaatty.

-65. Sales, profits and revenues realized by Small, P.C., or John T. Cpaatty through or in connection with Small, P.C.'s website and promotional materials displaying the "TaxHQ" mark.

66. Any confusion or potential confusion between the services of Small and the services of Big.

67.NOTICE OF DEPOSITION OF JOHN T. CPAATTY

68. PLEASE TAKE NOTICE THAT pursuant to Rule 30 of the Federal Rules of Civil Procedure, defendants/counterclaimants Big will take the deposition upon oral examination of John T. Cpaatty beginning on Thursday, August 12, 2007, at 9:30 a.m. at the offices of Smith & Williams. The deposition will be taken stenographically before a notary public or any other officer duly authorized to administer oaths and will continue from day to day until completed.

[PROPOSED] ORDER GRANTING EXPEDITED DISCOVERY

69. After considering Defendants/Counterclairnants' Application for Order Granting Expedited Discovery and Motion for Expedited Consideration Of the Application, and Memorandum in Support thereof, and good cause having been shown,

70. IT IS HEREBY ORDERED that Defendants/Counterclaimants' Application for Order Granting Expedited Discovery is granted.

71. IT IS FURTHER ORDERED that Defendants/Counterclaimants may serve upon plaintiff-counterdefendant Small, P.C., the written discovery entitled Defendants/Counterclaimants' First Set of Requests for Production of Documents and Things to Small, P.C., and Defendants/Counterclaimants' First Set of Interrogatories to Small, P.C., the forms of which are is attached to Defendants/Counterclaimants' Application.

72. IT IS FURTHER ORDERED that plaintiff counterdefendant Small P.C. shall respond by August 9, 2007, to Defendants/Counterclaimants' First Set of Requests for Production of Documents and Things to Small, P,C., and Defendants/Counterclaimants' First Set of Interrogatories

73. IT IS FURTHER ORDERED that said responses, and documents to be produced pursuant to Defendants/Counterclaimants' First Request for Production of Documents and Things, shall be served via hand-delivery upon Counterdefendants' counsel on that date.

74. IT IS FURTHER ORDERED that plaintiff-counterdefendant Small and counterdefendant John T. Cpaatty make themselves available for depositions on August 11, 2007, and August 12, 2007, respectively, consistent with the notices of deposition attached to the Application or at such other times and places as counsel for the parties may agree.

DATED this __day___________.2007.

Hon. Paul Judge, United States District Judge

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