Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1216222
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`Filing date:
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`06/17/2022
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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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`06/17/2022
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`Inditex v. Zara Tours - Motion to Extend all Remaining Deadlines with Consent
`(2022.17.06).pdf(21601 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 most recent Order dated March 29, 2022 requiring a showing of
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`good cause in the form of a progress report for any further extension requests, Applicant states
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`that the parties continue to actively pursue settlement, and they remain optimistic that they will
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`resolve their global dispute in the near future. Applicant, with Opposer’s consent, requests that all
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`remaining deadlines be extended for a further ninety (90) days to allow the parties to continue
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`their settlement efforts. Applicant provides the following progress report establishing good cause
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`for the requested extension.
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`In its most recent consented extension request filed on March 21, 2022, Applicant reiterated
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`the global nature of the parties’ dispute and its proposed resolution, which involves rights to the use
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`of various trademarks and domain names, as well as trademark registrations in a number of
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`countries, and with various counsel for the parties also being located in multiple countries.
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`Additionally, the parties have been engaged in opposition, cancellation, and other contested
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`proceedings in various countries, and the proposed settlement of this matter would allow for
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`conclusion of such additional proceedings.
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`As indicated in the parties’ prior consented extension requests, 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 concerned 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, Applicant’s counsel wrote to Opposer’s counsel providing responses relative to the two
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`subject proposed settlement terms. On April 5, 2022, and after the filing of the most recent
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`consented extension request in this proceeding, Opposer’s counsel responded with a further global
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`settlement proposal concerning the use and registration of various trademarks and domain names
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`worldwide. Applicant’s undersigned counsel relayed this most recent settlement communication to
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`Applicant’s U.K.-based counsel. On May 27, 2022, and after additional communications with
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`U.K.-based counsel for the Applicant, the undersigned counsel provided a further settlement
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`proposal to Opposer’s counsel via e-mail, which included specific responses to Opposer’s various
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`requests and proposals as reflected in Opposer’s counsel’s April 5, 2022 settlement communication.
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` Applicant is now awaiting Opposer’s substantive response to its most recent global settlement
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`proposal.
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`As reflected in the above progress report, the parties continue to negotiate in good faith, and
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`they remain cautiously optimistic that they can achieve an amicable resolution to the current
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`opposition proceeding, and, more generally, to their global dispute concerning various ZARA-
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`formative trademarks and domain names. In order to allow the parties to continue their worldwide
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`settlement efforts, Applicant, with Opposer’s consent, respectfully requests that the Board grant a
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`further ninety (90) day extension of all remaining deadlines in this proceeding. If any additional
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`information would be helpful, please do not hesitate to contact any of the attorneys of record in this
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`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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`September 15, 2022
`October 30, 2022
`November 14, 2022
`December 14, 2022
`February 12, 2023
`March 14, 2023
`March 29, 2023
`April 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 June 13, 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: June 17, 2022
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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 June 17, 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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`5
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