IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
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`THE TRADEMARK TRIAL AND APPEAL BOARD
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`T T A B
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`Opposition No. 91/164,475
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`Serial Number 78/325,927
`Publication Date: September 14, 2004
`Mark: FLYIN HAWAIIAN (Stylized)
`......................................................-X
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`PARIS CHOCOLATES, INC.
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`Opposer,
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`vs.
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`DOCEIRA CAMPOS DO JORDAO LTDA.,.:
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`Applicant.
`____________________________________________________-_x
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`OPPOSER’S REPLY TO APPLICANT’S OPPOSITION TO
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`ITS MOTION TO WITHDRAW
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`AND
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`OPPOSER’S OPPOSITION TO APPLICANT’S MOTION TO DISMISS
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`Kenyon & Kenyon LLP (“Kenyon”) hereby submits its: (i) reply to Applicant’s
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`Opposition to Motion to Withdraw as Representative and To Suspend Proceedings Due to
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`Withdrawal of Counsel; and (ii) opposition to Applicant’s Motion to Dismiss Opposition for
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`Failure to Take Testimony or Offer Evidence.
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`A.
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`Kenyon Motion is Properly Made in Good Faith
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`In its initial brief, Kenyon properly set out grounds under 37 C.F.R. § 10.40(c) for
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`requesting permission to withdraw in this matter, including, inter alia, lead counsel suffering a
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`serious medical emergency.1 Furthermore, Kenyon plainly stated in its initial brief that the
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`request to withdraw was not “a subterfuge to obtain an extension or reopening of time that a
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`party would not otherwise be entitled to.” It is regrettable that Applicant Dociera Campos Do
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`' The exact nature of Mr. Mudge’s emergency has been withheld to respect his privacy, however, Kenyon notes that
`Mr. Mudge has required extensive hospitalization.
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`-1- F
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`06-30-2006
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`U.S. Patent & TMOfc/TM Mail Rcpt Dt. #22
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`Jordao Ltda. (“Applicant”) sees fit to question the sincerity of Kenyon’s request and add more
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`unpleasantness to what is already an unfortunate set of circumstances.
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`Applicant attempts to impugn bad faith by stating that Kenyon filed its motion on May
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`24, 2006 when Opposer’s testimony period ended on May 28, 2006 (as May 28th was a Sunday,
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`Opposer’s testimony period would have closed on May 29, 2006 pursuant to 37 C.F.R. § 2.196).
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`However, the date that Kenyon filed its motion should not matter given the unexpected nature of
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`the medical emergency that forms the primary basis for the motion. Obviously, such situations
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`are unpredictable and do not occur at the convenience of those involved.
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`As acknowledged by Applicant, on May 12, 2006, Kenyon contacted Applicant’s counsel
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`to obtain an extension as a result of Mr. Mudge’s injury. Rather than allow the courtesy of an
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`extension in light of the circumstances, Applicant’s counsel conditioned its consent on further
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`settlement talks——in effect, using Mr. Mudge’s personal crisis to gain leverage in the litigation.
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`Kenyon was left with little choice but to file its motion to withdraw. Strangely, Applicant points
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`to the fact that this unsuccessful communication was not detailed in Kenyon’s initial brief as if
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`its omission is somehow probative.2 That Applicant had not consented to Kenyon’s requested
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`extension was clear since Kenyon did not file its motion on consent.
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`Additionally, Applicant also points out that “Kenyon has 210 attorneys” in an attempt to
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`imply that any one attorney could have simply replaced Mr. Mudge on this case. Aside from the
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`fact that those attorneys are geographically spread across three different offices and most have no
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`experience before the Board, this statistic is meaningless. Those other attorneys are not familiar
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`with the facts of this case nor the legal theories on which the case has proceeded. Furthermore,
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`such a position ignores Opposer’s right to choose his own counsel. As evidenced by all of the
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`2 Applicant’s insinuation that Opposer has been uncooperative with regard to exploring settlement is unfounded. In
`fact, Opposer has made many attempts to resolve this dispute amicably.
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`other pleadings filed by Opposer up until the motion to withdraw, Mr. Mudge had been lead
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`counsel with the assistance of another Kenyon attorney, Susan Smith. While normally Ms.
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`Smith would have been able to proceed with the case in Mr. Mudge’s absence, Ms. Smith was
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`out on maternity leave during the relevant time. It is true that Kenyon’s present motion——which
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`does not address the merits of the underlying case—was not filed by Mr. Mudge or Ms. Smith
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`for what should be obvious reasons, as it was their inability to be present and handle the case
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`which lead to the motion in the first place. The attorneys who filed the motion to withdraw are
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`involved for specific purpose of filing the motion to withdraw.
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`Kenyon believes that in light of the above, and the argument put forth in its initial brief, it
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`is clear that its motion is the result of an unfortunate and unpredictable confluence of events, and
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`not a subterfuge to obtain an extension or reopening of time to which Opposer would not
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`otherwise be entitled.
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`B.
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`Applicant’s Motion to Dismiss is Unreasonable and Should Be Denied
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`Applicant’s Motion to Dismiss is simply an unreasonable attempt to exploit the
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`circumstances described above and in Kenyon’s initial brief. Moreover, Applicant’s completely
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`unsupported assertion of prejudice is belied by its own conduct. Applicant has admitted that it
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`would have consented to a reasonable extension when first contacted by Kenyon, if the Opposer
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`agreed to certain conditions having nothing to do with the taking of testimony in this matter, so a
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`similar extension granted now ought be no more “prejudicial” than it would have been before.
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`In any event, Opposer should not be prejudiced by its attomey’s medical emergency.
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`Therefore, should the Board deny Kenyon’s motion to withdraw and suspend proceedings,
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`Kenyon respectfully requests that the Board at least allow a reasonable amount of time for new
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`counsel at Kenyon to familiarize itself with the matter and proceed with Opposer’s testimony
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`period so as not to prejudice Opposer.
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`

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`C.
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`Conclusion
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`For all of the above reasons, Kenyon respectfully requests that the Board grant the relief
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`requested in its initial brief, and alternatively, should the Board deny Kenyon’s motion, allow a
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`reasonable amount of time for new counsel at Kenyon to familiarize itself with the matter and
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`proceed with Opposer’s testimony period.
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`KENYON & KENYON LLP
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`By:
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` Dated: June3_e, 2006
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`Edward T. Colbert
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`Brian S. Mudge
`Susan A. Smith
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`Michael Kelly
`One Broadway
`New York, New York 10004
`Attorneys for Opposer
`Paris Chocolates, Inc.
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of this OPPOSER’S REPLY TO APPLICANT’S
`OPPOSITION TO ITS MOTION TO WITHDRAW AND OPPOSER’S OPPOSITION TO
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`APPLICANT’S MOTION TO DISMISS by mailing the same by first class mail on App1icant’s
`counsel of record:
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`Howard N. Aronson
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`Lackenbach Siegel LLP
`One Chase Road
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`Scarsdale, NY 10583
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`and
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`John Paris
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`Paris Chocolates, Inc.
`P.O. Box 1281
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`Washington, CT 06793
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`Miuxkt-3-
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`'5'-‘—‘”~'—u
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`I hereby certify that this correspondence is being deposited with the
`United States Postal Service as~tir9t-eiase/express mail in an
`envelope addressed to: Commissioner for Trademarks. P.O. Box
`1451Alexandria. VA 22313-1451 on
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`KNYO 3. KENYON
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`Signature
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