Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number: ESTTA915968
`
`Filing date:
`
`08/15/2018
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91225933
`
`Party
`
`Plaintiff
`The Coca-Cola Company
`
`Correspondence
`Address
`
`BRUCE W BABER
`KING & SPALDING LLP
`1180 PEACHTREE ST
`ATLANTA, GA 30309
`UNITED STATES
`bbaber@kslaw.com, kmccarthy@kslaw.com, nytrademarks@kslaw.com
`404-572-4826
`
`
`Submission
`
`Other Motions/Papers
`
`Filer's Name
`
`Bruce W. Baber
`
`Filer's email
`
`bbaber@kslaw.com, kmccarthy@kslaw.com, nytrademarks@kslaw.com
`
`Signature
`
`/Bruce W Baber/
`
`Date
`
`08/15/2018
`
`Attachments
`
`2018.08.15 Response to Order.pdf(24753 bytes )
`
`
`
`ESTTA Tracking number: ESTTA915968
`
`Filing date:
`
`08/15/2018
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91225933
`
`Party
`
`Plaintiff
`The Coca-Cola Company
`
`Correspondence
`Address
`
`BRUCE W BABER
`KING & SPALDING LLP
`1180 PEACHTREE ST
`ATLANTA, GA 30309
`UNITED STATES
`bbaber@kslaw.com, kmccarthy@kslaw.com, nytrademarks@kslaw.com
`404-572-4826
`
`
`Submission
`
`Other Motions/Papers
`
`Filer's Name
`
`Bruce W. Baber
`
`Filer's email
`
`bbaber@kslaw.com, kmccarthy@kslaw.com, nytrademarks@kslaw.com
`
`Signature
`
`/Bruce W Baber/
`
`Date
`
`08/15/2018
`
`Attachments
`
`2018.08.15 Response to Order.pdf(24753 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`THE COCA-COLA COMPANY,
`
`
`
`
`
`Opposer,
`
`
`
`
`v.
`
`
`
`
`REPLANET HOLDINGS, INC.,
`
`
`
`
`
`Applicant.
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`OPPOSITION NO. 91225933
`
`OPPOSER’S RESPONSE TO
`ORDER DATED JULY 10, 2018
`
`
`
`
`Opposer The Coca-Cola Company (“TCCC”), by and through its undersigned
`
`counsel, files this response to the Board’s July 10, 2018 order (TTABVUE 26) denying
`
`without prejudice the parties’ consent motion, filed on July 3, 2018 (TTABVUE 25), to
`
`extend the testimony periods in this proceeding. For the reasons stated below, TCCC
`
`requests that the Board approve the extension that was the subject of the parties’ July 3
`
`consent motion.
`
`ARGUMENT AND CITATION OF AUTHORITIES
`
`In its order dated March 24, 2018 (TTABVUE 24), the Board granted a consent
`
`motion, filed on March 19, 2018, to extend the discovery period. In that order, the
`
`Board imposed “a condition on the approval of all future motions to suspend or extend
`
`for settlement” (24 TTABVUE 1)(emphasis added), requiring that the parties must
`
`include in any such motion “a status report on the parties’ settlement efforts.” The order
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`further stated that “the parties may no longer use the ESTTA ‘Consent Motions’
`
`
`
`forms to submit motions to extend or suspend dates for settlement.” Id. at 2
`
`(emphasis in original). The order also made clear, however, that the requirement to use
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`the general filings option and provide such a status report “is limited to consent
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`motions based on settlement discussions, and does not prohibit the use of
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`ESTTA consent forms for other filings.” Id. (emphases added).
`
`Based on the above language, TCCC believed that it was proper for the parties
`
`to use the ESTTA consent motion form for the July 3 motion. Unlike several earlier
`
`consent motions submitted in connection with this proceeding, the July 3 motion was
`
`not “for settlement” and the form did not so indicate. Compare TTABVUE 25 (grounds
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`for request were “Parties are unable to complete discovery/testimony during assigned
`
`period”) with TTABVUE 17, 19, 21 (grounds included that “Parties are engaged in
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`settlement discussions”).
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`Following receipt of the Board’s March 24 order, the parties had discontinued
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`their settlement discussions and, during the months of April and May, had been actively
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`engaged in discovery. More specifically, TCCC served written discovery requests on
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`Applicant rePlanet Holdings, Inc. (“rePlanet”) in April, and rePlanet served responses to
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`those requests in May. As of the date of the July 3 motion, the parties were engaged in
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`discussions regarding outstanding discovery issues that had not been completed, and
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`the July 3 motion was filed in order to provide the parties the time needed to resolve
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`those issues and complete discovery. While the parties had discussed the possibility of
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`reopening their past discussions and resolving this proceeding through a settlement, no
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`settlement discussions were actively ongoing at the time the consent motion was filed
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`and the extension was not sought for purposes of pursuing settlement.
`
`- 2 -
`
`
`
`In view of the above, TCCC respectfully requests that the use of the ESTTA
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`consent motion form was proper at the time it was used on July 3, and that the Board,
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`consistent with the clear language of its March 28 order, should have approved that
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`motion without requiring “a status report on the parties’ settlement efforts.”
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`Approximately one week after the July 3 motion was filed, however, the parties
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`did in fact resume discussions regarding possible settlement of this matter. On July 11,
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`2018, counsel for TCCC sent to rePlanet’s counsel an e-mail message outlining the
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`terms on which TCCC would be willing to resolve this matter. rePlanet’s counsel
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`provided a preliminary response with respect to which the parties’ counsel had a further
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`e-mail exchange that same day (July 11) and, on August 2, 2018, rePlanet provided a
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`written substantive response to each of the terms proposed by TCCC. On Sunday,
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`August 12, counsel for the parties spoke by telephone. Based on that conversation,
`
`TCCC believes that the parties have reached an agreement in principle regarding
`
`settlement of this matter. TCCC’s counsel is now preparing a draft agreement between
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`the parties that reflects that agreement in principle, and expects to forward that draft to
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`rePlanet’s counsel within the next few days.
`
`Under the current schedule, TCCC’s testimony period is scheduled to close on
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`August 17, 2018. The consent motion submitted on July 3 would extend that date until
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`September 16, 2018. In view of the current status of this matter and the parties’ most
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`recent discussions, as outlined above, TCCC’s undersigned counsel expects that the
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`parties will be able to finalize and consummate their settlement prior to that extended
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`September 16 date.
`
`- 3 -
`
`
`
`CONCLUSION
`
`In view of the above, TCCC respectfully requests that the Board approve the
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`consent motion filed on July 3, 2018 that was previously denied without prejudice and
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`extend, to and including September 16, 2018, TCCC’s testimony period in this matter,
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`as requested in the July 3, 2018 consent motion.
`
`
`
`
`Date: August 15, 2018
`
`1180 Peachtree Street, N.E.
`Atlanta, Georgia 30309-3521
`(404) 572-4600
`
`1185 Avenue of the Americas
`New York, New York 10036
`(212) 556-2100
`
`
`Respectfully submitted,
`
`KING & SPALDING LLP
`
` /Bruce W. Baber/
`Bruce W. Baber
`Kathleen E. McCarthy
`
`
`
`Attorneys for Opposer
`THE COCA-COLA COMPANY
`
`- 4 -
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`This is to certify that I have this day served the foregoing Opposer’s Response
`
`To Order Dated July 10, 2018 upon Applicant, by causing a true and correct copy
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`thereof to be forwarded by electronic mail to Applicant’s counsel of record as follows:
`
`Mr. Kevin R. Casey
`Ms. Elizabeth M. O’Donoghue
`Stradley Ronon Stevens & Young, LLP
`30 Valley Stream Parkway
`Malvern, Pennsylvania 19355
`
`kcasey@stradley.com
`eodonoghue@stradley.com
`
`
`
`This 15th day of August, 2018.
`
`
`
`
`
` /Bruce W. Baber/
`Bruce W. Baber
`
`
`
`
`
`
`
`
`
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`
`
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