Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1040616
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`Filing date:
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`03/06/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91238496
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`Party
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`Correspondence
`Address
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`Plaintiff
`IMG Universe, LLC
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`ANDREA L CALVARUSO
`KELLEY DRYE & WARREN LLP
`101 PARK AVENUE
`NEW YORK, NY 10178
`UNITED STATES
`trademarks@kelleydrye.com
`212-808-7800
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Motion to Extend
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`Kelli D. Ortega
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`trademarks@kelleydrye.com
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`/Kelli D. Ortega/
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`03/06/2020
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`Attachments
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`MRS. USA - Motion to Extend Trial Deadlines.pdf(268831 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`IMG UNIVERSE, LLC,
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` Opposer,
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`v.
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` Opposition No.: 91238496
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`MELISA MARTIN,
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`Applicant.
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`OPPOSER’S MOTION TO EXTEND TRIAL DATES
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`I.
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`Introduction
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`Pursuant to TBMP §§509.01(a) and 701, Opposer, IMG Universe, LLC (“Opposer”)
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`hereby moves the Board for: (1) an extension of Opposer’s deadline to submit pretrial
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`disclosures for sixty (60) days to May 8, 2020, and a corresponding extension of all trial and
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`testimony periods as set forth herein; and (2) an order suspending the above referenced
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`opposition proceeding with respect to all matters not germane to the motion, pursuant to 37 CFR
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`§2.117 (c), including a corresponding extension of all trial and testimony periods.
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`As detailed herein, the requested extension of time is based upon good cause and is not
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`the result of Opposer’s lack of diligence or unreasonable delay in taking action within the
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`previous discovery period or existing pretrial disclosures period. This request for a sixty day
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`extension is necessitated by: (a) Applicant’s failure to engage with Opposer in discussions
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`regarding an Accelerated Case Resolution (“ACR”) plan to streamline the trial proceedings; and
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`(b) Applicant’s counsel’s pending motion to withdraw as counsel in this proceeding, which was
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`filed four days ago on March 2, 2020.
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`1
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`Applicant has failed to substantively respond to Opposer’s numerous requests over the
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`last several months to discuss an ACR plan that would streamline the trial proceedings in this
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`matter. An extension of time is necessary for Opposer to: (a) engage in discussions with
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`Applicant regarding an ACR plan, particularly as Applicant’s counsel moved to withdraw from
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`this proceeding on March 2; and/or (b) adequately prepare its case in the event the parties are
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`unable to agree upon an ACR plan for trial.
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`II.
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`History of Proceedings to Date
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`Opposer filed a Notice of Opposition in this proceeding on December 19, 2017. On
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`December 19, 2017, Opposer also filed a motion to consolidate Opposition Nos. 91232744 and
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`91238496, which the Board granted by an Order dated January 20, 2018. Applicant filed its Answer
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`in this proceeding on February 2, 2018. On May 7, 2019, Opposer filed a Motion for Summary
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`Judgment. On November 26, 2019, the Board issued an order: (a) granting Opposer’s Motion for
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`Summary Judgment and sustaining its Opposition No. 91232744 to Applicant’s Serial No.
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`87/034,141; (b) denying Opposer’s Motion for Summary Judgment with respect to Opposition No.
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`91238496 with respect to Applicant’s Serial No. 87/179,106, on the basis that it found that there a
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`genuine dispute of material questions of fact existed; and (c) resetting the remaining trial dates for
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`this proceeding (the “November 26th Order”). The November 26th Order encouraged the parties to
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`discuss and implement an ACR plan with respect to trial of the issues that remained in Opposition
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`No. 91238496. See November 26th Order, at p. 21. Under the current schedule, Opposer’s deadline
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`to submit pretrial disclosures is March 9, 2020.
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`Since shortly after the Board issued the November 26th Order, Opposer’s counsel has been
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`attempting to meet and confer with counsel for Applicant to discuss the possibility of engaging in
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`ACR as recommended by the Board. Via email dated November 26, 2019, Opposer’s counsel first
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`2
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`requested that Applicant consent to a sixty day extension of time to provide the parties time to meet
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`and confer regarding the possibility of ACR and to implement any agreed upon ACR plan.
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`Thereafter, Opposer filed a consented motion to extend the trial dates, which was granted by the
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`Board on December 2, 2019. For several months thereafter, Opposer’s counsel and Applicant’s
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`counsel exchanged multiple emails regarding Opposer’s request. Via email on January 23, 2020,
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`Applicant’s counsel indicated that Applicant was still considering the possibility of ACR and
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`requested that Opposer consent to a thirty day extension of time to provide the parties additional
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`time to meet and confer, to which Opposer consented. Applicant’s counsel filed the stipulated
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`motion to extend on January 30, 2020. Since then, Opposer has sent several emails to counsel for
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`Applicant requesting to schedule a conference to discuss a potential ACR trial plan that would more
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`efficiently bring this proceeding to a final decision by the Board. All such requests have gone
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`unanswered. During this period, Opposer was reasonable in waiting to fully prepare its trial
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`evidence in the hopes that the parties would agree upon an accelerated trial procedure.
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`On March 2, 2020, a mere week before Opposer’s deadline to submit pretrial disclosures in
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`this proceeding, counsel for Applicant filed a Motion to Withdraw as Counsel (the “Motion to
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`Withdraw”). This motion is presently pending before the Board. Applicant’s counsel did not give
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`counsel for Opposer any indication prior to March 2, 2020 that he intended to withdraw as
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`Applicant’s counsel.
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`Opposer will be prejudiced if the requested extension of the trial period is not granted
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`because it will be forced to spend time and resources to meet trial deadlines that will not be
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`necessary if the parties are ultimately able to reach an agreement regarding an accelerated trial
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`procedure. 1 Opposer will also be prejudiced if the requested extension of time is not granted
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`1 This is Opposer’s first request for an unconsented extension of time in this proceeding.
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`3
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`because it would be very difficult for Opposer to prepare and submit its evidence in accordance with
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`the schedule set forth in the Board’s November 26th Order.
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`III. Good Cause Exists for the Requested Extension of Time
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`The standard for allowing an extension of a prescribed period prior to the expiration of
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`that period is good cause. See Fed. R. Civ. P. 6(b)(1); TMBP §509. The Board is typically
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`liberal in granting extensions of time before the period to act has elapsed, so long as the
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`requested extension of time is not necessitated by the party’s own lack of diligence or
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`unreasonable delay in taking the required action during the allotted time. See generally, Am.
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`Vitamin Prods., Inc. v. DowBrands Inc., 22 U.S.P.Q.2d 1316 (T.T.A.B. 1992); see also DBC,
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`LLC v. Renaissance Herbs, Inc., Opp. No. 91161992, 2007 TTAB LEXIS 130, at *5 (T.T.A.B.
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`Oct. 22, 2007); Silicon Genetics v. Genetworks, Inc., Cancellation No. 92040690, 2003 TTAB
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`LEXIS 103, at *4 (T.T.A.B. Mar. 4, 2003) (granting petitioner’s motion to extend trial deadlines
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`for good cause on the grounds that the parties were engaged in ongoing settlement discussions
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`because respondent was aware of petitioner’s desire to pursue settlement despite the fact that the
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`parties had not yet started substantive settlement negotiations); Members First Fed. Credit Union
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`v. Members1st Credit Union, Cancellation No. 27,376, 2000 TTAB LEXIS 222, at *3-4
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`(T.T.A.B. Mar. 31, 2000) (granting motion to extend time to respond to motion to dismiss for
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`good cause where petitioner did not proceed with efforts to respond to the motion during the
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`allotted time because the parties were engaged in settlement discussions that abruptly ended).
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`Good cause exists here for Opposer’s requested sixty day extension of time. Given
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`Opposer’s diligent attempts to engage in discussions with Applicant regarding the possibility of
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`ACR, Opposer was reasonable in waiting to fully prepare its trial evidence in the hopes that the
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`parties would agree upon an accelerated trial procedure. In light of counsel for Applicant’s
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`4
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`Motion to Withdraw, however, filed a mere seven days prior to Opposer’s deadline to submit
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`pretrial disclosures, it would be very difficult for Opposer to prepare and submit its evidence in
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`accordance with the schedule set forth in the Board’s November 26th Order.
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`This request is not necessitated by unreasonable delay by Opposer or its counsel.
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`Counsel for Opposer has worked diligently to meet the existing deadlines in this case. As set
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`forth above, since shortly after the issuance of the Board’s November 26th Order, Opposer’s
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`counsel has repeatedly attempted to meet and confer with Applicant to discuss the possibility of
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`engaging in an ACR plan that would streamline trial proceedings, as suggested by the Board.
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`Applicant indicated a willingness to engage in ACR as recently as January 30, 2020, however to
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`date, Applicant has failed to engage in substantive discussions regarding a potential ACR plan
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`that would more expeditiously bring this proceeding to a final decision by the Board.
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`Accordingly, there is good cause to grant Opposer’s request for a sixty day extension of
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`time of its trial period.
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`For all of the foregoing reasons and upon good cause shown pursuant to TBMP
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`§§509.01(a) and 701, Opposer requests an extension of the trial period and resetting of all
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`subsequent deadlines as follows:
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`Plaintiff’s Pretrial Disclosures Due:
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`Plaintiff’s 30-day Trial Period Ends:
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`Defendant’s Pretrial Disclosures:
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`Defendant’s 30-day Trial Period Ends:
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`Plaintiff’s Rebuttal Disclosures:
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`Plaintiff’s 15-day Rebuttal Period Ends:
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`Plaintiff’s Opening Brief Due
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`May 8, 2020
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`June 22, 2020
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`July 7, 2020
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`August 21, 2020
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`September 6, 2020
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`October 6, 2020
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`December 5, 2020
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`5
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`Defendant’s Brief Due
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`Plaintiff’s Reply Brief Due
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`Request for Oral Hearing (optional) Due:
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`January 4, 2021
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`January 19, 2021
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`January 29, 2021
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`Opposer further respectfully requests the Board issue an Order suspending the above
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`referenced opposition proceeding with respect to all matters not germane to this motion, pursuant
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`to 37 CFR §2.117 (c), including a corresponding extension of all trial and testimony periods.
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`Dated: New York, New York
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`March 6, 2020
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`Respectfully submitted,
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`KELLEY DRYE & WARREN LLP
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` /Andrea L. Calvaruso/
`Andrea L. Calvaruso
`Kelli D. Ortega
`Attorneys for Opposer
`101 Park Avenue
`New York, NY 10178
`(212) 808-7800
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`CERTIFICATE OF SERVICE
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`I hereby certify that I caused a copy of the foregoing OPPOSER’S MOTION TO
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`EXTEND TRIAL DATES to be served on counsel for Applicant, this 6th day of March 2020, via
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`email to:
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`Anthony Verna, Esq.
`VERNA LAW PC
`80 Theodore Fremd Drive
`Rye, NY 10580
`anthony@vernalaw.com
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` /Kelli D. Ortega/
` Kelli D. Ortega
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`7
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