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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA628096
`ESTTA Tracking number:
`09/19/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91203192
`Plaintiff
`Beats Electronics, LLC
`MICHAEL G KELBER
`NEAL GERBER & EISENBERG LLP
`TWO NORTH LaSALLE STREET , SUITE 1700
`CHICAGO, IL 60602
`UNITED STATES
`mkelber@ngelaw.com, ljames@ngelaw.com, knye@ngelaw.com, mben-
`son@ngelaw.com, docketmail@ngelaw.com
`Motion to Suspend for Settlement Discussions
`Katherine Dennis Nye
`knye@ngelaw.com, mkelber@ngelaw.com, afuelleman@ngelaw.com, fwest-
`brown@ngelaw.com, docketmail@ngelaw.com
`/Katherine Dennis Nye/
`09/19/2014
`Consented_Motion_to_Suspend_60_days_URBAN_BEATZ.pdf(14703 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No. 91203192
`
`
`
`
`
`
`BEATS ELECTRONICS, LLC
`
`
`
`
`
`
`
`
`
`Opposer,
`
` v.
`
`
`MERKURY INNOVATIONS, LLC
`
`
`
`
`
`Applicant.
`
`
`
`CONSENTED MOTION TO SUSPEND
`
`Pursuant to Rule 510.03(a) of the Trademark Trial and Appeal Board Manual of Practice
`
`and 37 C.F.R. § 2.117(c), Opposer, Beats Electronics, LLC, with the consent of Applicant,
`
`Merkury Innovations, LLC., hereby moves the Board for an Order suspending these proceedings
`
`for a period of sixty (60) days pending the outcome of settlement negotiations between the
`
`parties. In support of this Motion, Opposer states:
`
`1.
`
`On December 29, 2011, Opposer filed its Notice of Opposition to Applicant’s
`
`registration of the mark URBAN BEATZ, and a scheduling order issued.
`
`2.
`
`On January 23, 2012, Applicant filed its Answer to the Notice of Opposition
`
`together with a counterclaim against Opposer.
`
`3.
`
`During the course of these proceedings, Opposer and Applicant have spent
`
`considerable time and effort towards completion of discovery. Specifically, Opposer and
`
`Applicant have exchanged initial disclosures, first sets of written discovery requests and
`
`responses and propounded document production, and have each completed 30(b)(6) depositions.
`
`

`
`4.
`
`In addition, on February 17, 2014, Opposer served supplemental discovery
`
`requests including Requests for Admission, Requests for the Production of Documents and
`
`Interrogatory on Applicant, which remain outstanding.
`
`5.
`
`Opposer and Applicant likewise exchanged expert disclosures pursuant to the
`
`Board’s scheduling order. In order to permit time for expert discovery, fact discovery was
`
`suspended on March 4, 2014. On May 1, 2014, the suspension for expert discovery was
`
`extended by four days, and the parties duly completed expert discovery. Pursuant to the Board’s
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`May 1, 2014 Order, the Proceedings were resumed on May 5, 2014 and the discovery period was
`
`set to close on June 4, 2014.
`
`6.
`
`The Parties efforts described in Paragraphs 3-5 demonstrate Opposer’s and
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`Applicant’s diligent, ongoing efforts to move these proceedings forward, towards resolution.
`
`7.
`
`Throughout the course of the discovery period, the parties intermittently discussed
`
`settlement, but these discussions were largely unproductive. On May 20, 2014, counsel for
`
`Applicant contacted counsel for Opposer to reinvigorate the settlement discussion, and proposed
`
`a potential settlement framework that the parties had not previously considered. In view of the
`
`parties’ settlement efforts, the parties requested a 60 day suspension to further explore
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`settlement. The request was granted, and pursuant to the Board’s June 17, 2014 Order, the
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`proceedings were suspended for 60 days.
`
`8.
`
`Throughout the suspension period, the parties were still seriously discussing the
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`new potential settlement framework. Indeed, on July 15, 2014, Applicant sent a revised proposal
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`to Opposer. Accordingly, on July 21, 2014, the parties requested a further 60-day suspension to
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`allow Opposer time to consider the revised offer. The request was granted, and pursuant to the
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`Board’s August 7, 2014 Order, the proceedings were suspended for 60 days.
`
`
`
`-2-
`
`
`
`

`
`9.
`
`During the most recent suspension period, Opposer Beats Electronics, LLC was
`
`acquired by Apple Inc. Thus, a further suspension is needed in order to provide Apple Inc.
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`adequate time to consider Applicant’s current settlement proposal.
`
`10.
`
`Efforts to reach a mutually agreeable settlement are ongoing. A suspension of
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`these proceedings will permit the parties to continue their settlement efforts and, hopefully,
`
`resolve these proceedings.
`
`11.
`
`Counsel for Opposer and counsel for Applicant have conferred and agreed to seek
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`the suspension of this matter to allow the parties to focus their efforts on attempting to resolve
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`this matter, and, therefore, counsel for Applicant has consented to this motion.
`
`
`
`WHEREFORE, Opposer respectfully requests that the Board suspend this Opposition for
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`a period of sixty (60) days, pending the outcome of the settlement discussions and reset the
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`deadlines as set forth below or as otherwise appropriate:
`
`Proceedings Resume
`
`Discovery Closes
`
`Plaintiff's Pretrial Disclosures
`
`Plaintiff’s 30-day Trial Period Ends
`
`Defendant/Counterclaim Plaintiff's
`Pretrial Disclosures
`
`30-day Trial Period for Defendant/
`Counterclaim Plaintiff Ends
`
`Counterclaim Defendants & Plaintiff’s
`Rebuttal Disclosures Due
`
`30-day Trial Period for Counterclaim
`Defendant & Rebuttal as Plaintiff Ends
`
`Counterclaim Plaintiff’s Rebuttal
`Disclosures Due
`
`
`November 19, 2014
`
`December 5, 2014
`
`January 19, 2015
`
`March 4, 2015
`
`March 18, 2015
`
`May 4, 2015
`
`May 18, 2015
`
`July 3, 2015
`
`July 17, 2015
`
`
`
`-3-
`
`
`
`

`
`15-day Rebuttal Period for
`Counterclaim Plaintiff Ends
`
`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
`
`August 16, 2015
`
`October 15, 2015
`
`November 14, 2015
`
`December 15, 2015
`
`December 30, 2015
`
`Respectfully submitted,
`
`_/Katherine Dennis Nye/ _______________________
`One of the Attorneys for Opposer,
`Beats Electronics, LLC
`
`-4-
`
`
`
`
`
`
`
`
`
`Date: September 19, 2014
`
`
`
`Michael G. Kelber
`Katherine Dennis Nye
`Neal, Gerber & Eisenberg LLP
`2 N. LaSalle Street, Suite 1700
`Chicago, Illinois 60602
`312.269.8000
`
`
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`I, Katherine Dennis Nye, state that I served a copy of the foregoing Consented Motion
`
`To Suspend via First Class Mail, U.S. postage prepaid, upon counsel for Applicant:
`
`Anthony F. Lo Cicero
`Marc J. Jason
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`
`
`on this 19th day of September, 2014.
`
`
`
`NGEDOCS: 2174550.3
`
` / Katherine Dennis Nye/
` Katherine Dennis Nye
`
`
`
`-5-

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