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UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
`
`
` Mailed: July 30, 2010
`
`
`
`
`
`Opposition No. 91188519
`Opposition No. 91193344
`
`Deutsche Telekom AG
`
`
`v.
`
`
`SK Telecom Co., Ltd.
`
`
`George C. Pologeorgis, Interlocutory Attorney:
`
`
` It has come to the attention of the Board that
`
`Opposition Nos. 91188519 and 91193344 involve the same
`
`parties and common questions of law and fact. It would
`
`therefore be appropriate to consolidate these proceedings
`
`pursuant to Fed. R. Civ. P. 42(a).
`
`
`
`Consolidation is discretionary with the Board, and may
`
`be ordered upon motion granted by the Board, or upon
`
`stipulation of the parties approved by the Board, or upon
`
`the Board’s own initiative. See, for example, Wright &
`
`Miller, Federal Practice and Procedure: Civil §2383 (2004);
`
`Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154
`
`(TTAB 1991) (Board’s initiative).
`
`
`
`Accordingly, the above-noted opposition proceedings are
`
`hereby consolidated and may be presented on the same record
`
`and briefs.
`
`

`
`Opposition No. 91188519
`Opposition No. 91193344
`
`
`
`The Board file will be maintained in Opposition No.
`
`91188519 as the “parent” case. The parties should no longer
`
`file separate papers in connection with each proceeding
`
`except for answers to the main pleading and/or any asserted
`
`counterclaims. Such answers should be filed in the
`
`appropriate corresponding proceeding. Only a single copy of
`
`each paper should be filed by the parties and each paper
`
`should bear the case captions as set forth above.1
`
`
`
`In accordance with Board practice, discovery and trial
`
`dates are reset to conform to the dates latest set in the
`
`opposition proceedings that are being consolidated. The
`
`Board notes, however, that in each of these now consolidated
`
`proceedings the parties filed a consented motion on July 28,
`
`2010 to suspend the proceedings up to, and including,
`
`September 28, 2010 so that the parties may pursue settlement
`
`negotiations. Each of the motions to suspend is hereby
`
`granted.
`
`Accordingly, these now consolidated proceedings are
`
`suspended up to, and including, September 28, 2010, subject
`
`to the right of either party to request resumption at any
`
`time. See Trademark Rule 2.117(c).
`
`
`1 The parties should promptly inform the Board in writing of any
`other related inter partes proceedings. See Fed. R. Civ. P.
`42(a).
`
`
`
` 2
`
`

`
`Opposition No. 91188519
`Opposition No. 91193344
`
`
`
`In the event that there is no word from either party
`
`concerning the progress of their negotiations, upon
`
`conclusion of the suspension period, proceedings shall
`
`resume without further notice or order from the Board, upon
`
`the schedule set out below.
`
`
`
`Opposer is allowed the time set forth below from
`
`resumption in which to answer applicant’s counterclaim in
`
`Opposition No. 91188519. Additionally, applicant is allowed
`
`the time set forth below upon resumption in which to answer
`
`the notice of opposition in Opposition No. 91193344.
`
`Proceedings resume:
`
`
`
`
`
` September 29, 2010
`
`Conferencing, disclosure, discovery and trial dates are
`
`reset as follows:
`
`Answer in Opposition No. 91193344 and
`answer to Counterclaim in 91188519
`are both Due
`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures
`30-day testimony period for
`plaintiff's testimony to close
`Defendant/Counterclaim Plaintiff's
`Pretrial Disclosures
`
`30-day testimony period for defendant
`and plaintiff in the counterclaim to
`close
`Counterclaim Defendant's and
`Plaintiff's Rebuttal Disclosures Due
`
`October 29, 2010
`November 28, 2010
`November 28, 2010
`December 28, 2010
`April 27, 2011
`May 27, 2011
`July 11, 2011
`
`August 25, 2011
`
`September 9, 2011
`
`October 24, 2011
`
`November 8, 2011
`
` 3
`
`

`
`Opposition No. 91188519
`Opposition No. 91193344
`
`
`30-day testimony period for defendant
`in the counterclaim and rebuttal
`testimony for plaintiff to close
`Counterclaim Plaintiff's Rebuttal
`Disclosures Due
`15-day rebuttal period for plaintiff
`in the counterclaim to close
`Brief for plaintiff due
`Brief for defendant and plaintiff in
`the counterclaim due
`
`Brief for defendant in the
`counterclaim and reply brief, if any,
`for plaintiff due
`Reply brief, if any, for plaintiff in
`the counterclaim due
`
`
`December 23, 2011
`
`January 7, 2012
`
`February 6, 2012
`April 6, 2012
`
`May 6, 2012
`
`June 5, 2012
`
`June 20, 2012
`
`In each instance, a copy of the transcript of testimony
`
`together with copies of documentary exhibits, must be served
`
`on the adverse party within thirty days after completion of
`
`the taking of testimony. Trademark Rule 2.l25.
`
`If, during the suspension period, either of the parties
`
`or their attorneys should have a change of address, the
`
`Board should be so informed.
`
`
`
` 4

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