Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1160553
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`Filing date:
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`09/20/2021
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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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`91245732
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`Party
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`Correspondence
`Address
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`Defendant
`Zara Tours Adventures LLC
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`BURTON S EHRLICH
`LADAS & PARRY LLP
`224 SOUTH MICHIGAN AVENUE SUITE 1600
`CHICAGO, IL 60604
`UNITED STATES
`Primary Email: chiustm@ladas.net
`312-427-1300
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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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`Attachments
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`Stipulated/Consent Motion to Extend
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`Boris Umansky
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`CHIUSTM@LADAS.NET
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`/Boris Umansky/
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`09/20/2021
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`Inditex v. Zara Tours - Motion to Extend all Remaining Deadlines with Consent
`(2021.20.09).pdf(19564 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Industria de Diseno Textil, S.A. (Inditex, S.A.), )
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`Zara Tours Adventures LLC,
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`Opposer,
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`Applicant.
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`Opposition No. 91245732
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`MOTION FOR A FURTHER NINETY DAY EXTENSION OF ALL REMAINING
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`DEADLINES IN THIS PROCEEDING FOR SETTLEMENT WITH CONSENT
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`Pursuant to the Board’s Order dated June 25, 2021, Applicant states that the parties
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`remain engaged in settlement negotiations. Applicant, with Opposer’s consent, requests that all
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`remaining deadlines be extended for an additional ninety (90) days to allow the parties to
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`continue their settlement efforts. Applicant, therefore, files this consented motion, and pursuant to
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`the Board’s most recent order presents the following progress report establishing good cause for the
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`requested extension.
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`As advised in the parties’ most recent extension request filed on June 20, 2021, this matter
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`is complex, involving counsel for the parties in multiple countries as well as related opposition,
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`cancellation, and other contested proceedings in countries outside the United States. Further, the
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`proposed resolution of this matter is worldwide in scope, involving rights to the use of various
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`trademarks and domain names, as well as trademark registrations in a number of countries.
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`As indicated in the June 20, 2021 extension request filing, Applicant’s counsel provided a
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`settlement counterproposal to Opposer’s counsel on April 19 2021, in response to Opposer’s earlier
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`settlement offer. This settlement counterproposal involved issues relating to the use and
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`registration of certain trademarks, including those at issue in this proceeding. On July 23, 2021,
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`Applicant received Opposer’s substantive comments and responses to its global settlement
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`counterproposal, as well as certain inquiries and requests for clarification. The undersigned counsel
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`reported on this matter to Applicant’s U.K.-based counsel, and, after receiving certain additional
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`information from Applicant, provided Opposer’s counsel with a preliminary response on September
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`15, 2021, including supplying Opposer’s counsel with information relative to domain names at
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`issue. Applicant’s counsel expects to be able to provide further information and responses to
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`Opposer’s counsel shortly. The parties’ settlement efforts are ongoing, and they are cautiously
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`optimistic that they can achieve an amicable resolution to this matter and, more generally, to their
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`global dispute.
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`As explained above and in the earlier extension request filing dated June 20, 2021, the
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`parties have been engaged in disputes in other countries relative to the trademarks at issue in this
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`proceeding, and the settlement currently being contemplated is worldwide in scope. The parties
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`continue to negotiate in good faith in an attempt to reach an agreement, and Applicant plans to
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`provide additional information and substantive comments to Opposer in the near future.
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`In order to allow the parties to continue their worldwide settlement discussions, Applicant,
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`with Opposer’s consent, respectfully requests that the Board grant the requested ninety (90) day
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`extension. If any additional information would be helpful, please do not hesitate to contact any of
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`the attorneys of record in this case.
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`Upon the granting of this motion, the following time periods would apply:
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`Defendant's Pretrial Disclosures Due
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures Due
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`Plaintiff's 15-day Rebuttal Period Ends
`Plaintiff’s Opening Brief Due
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`Defendant’s Brief Due
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`December 19, 2021
`February 2, 2022
`February 17, 2022
`March 19, 2022
`May 18, 2022
`June 17, 2022
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`Plaintiff’s Reply Brief Due
`Request for Oral Hearing (optional) Due
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`July 2, 2022
`July 12, 2022
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`Applicant submits that good cause for the requested extension is shown and respectfully
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`requests that the Board grant this motion. On September 16, 2021, Applicant secured the express
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`consent of Opposer for the extension and resetting of dates requested herein.
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`Dated: September 20, 2021
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`Respectfully submitted,
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`LADAS & PARRY LLP
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`By: /Boris Umansky/
`Burton S. Ehrlich
`Boris Umansky
`224 S. Michigan Avenue
`Suite 1600
`Chicago, IL 60604
`(312)427-1300
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`Attorneys for Applicant
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing MOTION FOR A FURTHER NINETY DAY
`EXTENSION OF ALL REMAINING DEADLINES IN THIS PROCEEDING FOR
`SETTLEMENT WITH CONSENT was served on Opposer by E-mail on September 20, 2021
`addressed to:
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`Ross Q. Panko
`ross.panko@arentfox.com, ricardo.fischer@arentfox.com, danielle.bulger@arentfox.com,
`jimeelah.berryman@arentfox.com, ross.panko@arentfox.com, tmdocket@arentfox.com,
`jack.hitt@arentfox.com, laura.zell@arentfox.com
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`By:
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`/Boris Umansky/
`Boris Umansky
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