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`ESTTA Tracking number:
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`ESTTA1197796
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`Filing date:
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`03/21/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91245732
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`Party
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`Correspondence
`address
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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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`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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`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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`03/21/2022
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`Inditex v. Zara Tours - Motion to Extend all Remaining Deadlines with Consent
`(2022.21.03).pdf(20472 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 February 17, 2022, Applicant states that the parties
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`remain actively engaged in settlement discussions, and remain optimistic that a global settlement
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`will be possible in the near future. Applicant, with Opposer’s consent, requests that all remaining
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`deadlines be further extended for ninety (90) days to allow the parties to continue their settlement
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`efforts. Accordingly, Applicant files this consented motion, and pursuant to the Board’s most
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`recent order presents the following progress report establishing good cause for the requested
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`extension.
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`In its most recent consented extension request filed on December 17, 2021, Applicant
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`reiterated that this matter and its proposed resolution involve rights to the use of various trademarks
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`and domain names, as well as trademark registrations in a number of countries, and with counsel
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`for the parties also located in multiple countries. Additionally, the parties have been engaged in
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`opposition, cancellation, and other contested proceedings in various countries, and the proposed
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`settlement of this matter would allow for conclusion of such additional proceedings.
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`As indicated in the parties’ prior consented extension request, Applicant’s counsel provided
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`a settlement counterproposal to Opposer’s counsel on April 19 2021, in response to Opposer’s
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`earlier 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. 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. On February 2, 2022, after conferring with Applicant’s U.K.-based
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`counsel and after the filing of the most recent extension request in this proceeding, Applicant’s
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`counsel wrote to Opposer’s counsel providing responses relative to the two subject proposed
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`settlement terms. Opposer’s counsel recently advised Applicant’s counsel that he has relayed the
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`most recent settlement communication to his client, and anticipates having a substantive response
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`soon.
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`As reflected above, the parties’ settlement efforts are ongoing, and they remain 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 relative to the trademarks at issue in this proceeding. The parties continue to
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`negotiate in good faith in an attempt to reach an agreement, and Opposer’s counsel has advised that
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`he plans to provide Applicant’s counsel with a substantive response to the most recent settlement
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`communication in the near future.
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`In order to allow the parties to continue their worldwide settlement efforts, Applicant, with
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`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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`June 17, 2022
`August 1, 2022
`August 16, 2022
`September 15, 2022
`November 14, 2022
`December 14, 2022
`December 29, 2022
`January 8, 2023
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`Applicant submits that good cause exists for the requested extension, and respectfully
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`requests that the Board grant this motion. On March 9, 2022, 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: March 21, 2022
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`Respectfully submitted,
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`LADAS & PARRY LLP
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`By: /Boris Umansky/
`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 March 21, 2022
`addressed to:
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`Ross Q. Panko
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`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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