Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1179473
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`Filing date:
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`12/17/2021
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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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`12/17/2021
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`Inditex v. Zara Tours - Motion to Extend all Remaining Deadlines with Consent
`(2021.17.12).pdf(20797 bytes )
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`ESTTA Tracking number:
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`ESTTA1179473
`
`Filing date:
`
`12/17/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91245732
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Zara Tours Adventures LLC
`
`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
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Stipulated/Consent Motion to Extend
`
`Boris Umansky
`
`CHIUSTM@LADAS.NET
`
`/Boris Umansky/
`
`12/17/2021
`
`Inditex v. Zara Tours - Motion to Extend all Remaining Deadlines with Consent
`(2021.17.12).pdf(20797 bytes )
`
`
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`
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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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`
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`Industria de Diseno Textil, S.A. (Inditex, S.A.), )
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`v.
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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 September 28, 2021, Applicant states that the parties
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`remain engaged in settlement negotiations, and are nearing a final global settlement in principle.
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`Applicant, with Opposer’s consent, requests that all remaining deadlines be extended for an
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`additional ninety (90) days to allow the parties to continue their settlement efforts. Applicant,
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`therefore, files this consented motion, and pursuant to the Board’s most recent order presents the
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`following progress report establishing good cause for the requested extension.
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`As advised in the parties’ most recent extension request filed on September 20, 2021, this
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`matter involves complex global issues concerning trademarks in multiple countries, with counsel
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`for the parties also located in multiple countries. Furthermore, the parties have been involved in
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`opposition, cancellation, and other contested proceedings in countries outside the United States, and
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`the 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 September 20, 2021 extension request filing, Applicant’s counsel
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`provided a settlement counterproposal to Opposer’s counsel on April 19 2021, in response to
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`Opposer’s earlier settlement offer. This settlement counterproposal involved issues relating to the
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`use and registration of certain trademarks, including those at issue in this proceeding. On July 23,
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`2021, 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. On November 11, 2021, counsel for Applicant provided additional business and trademark-
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`related documents along with relevant information to Opposer’s counsel, and on November 17,
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`2021 Opposer’s counsel requested further clarification from Applicant relative to two of the
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`proposed settlement terms. Applicant is currently considering the additional matters, but in light of
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`the approaching holidays and travel schedules, Applicant will not be in a position to respond
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`substantively to Opposer’s requests until after the current deadline of December 19, 2021 for
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`pretrial disclosures. Nevertheless, Applicant intends to provide further information and responses
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`to Opposer’s counsel shortly.
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`As indicated above, 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 filings dated June 20, 2021 and
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`September 20, 2021, the parties have been engaged in disputes in other countries relative to the
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`trademarks at issue in this proceeding, and the settlement currently being contemplated is
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`worldwide in scope. The parties continue to negotiate in good faith in an attempt to reach an
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`2
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`agreement, and Applicant plans to provide additional information and clarifications to Opposer in
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`the near future.
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`In order to allow the parties to continue their worldwide settlement negotiations, 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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`Plaintiff’s Reply Brief Due
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`Request for Oral Hearing (optional) Due
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`March 19, 2022
`May 3, 2022
`May 18, 2022
`June 17, 2022
`August 16, 2022
`September 15, 2022
`September 30, 2022
`October 10, 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 December 14, 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: December 17, 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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`3
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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 December 17, 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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`4
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