Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1235878
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`Filing date:
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`09/15/2022
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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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`09/15/2022
`
`Inditex v. Zara Tours - Motion to Extend all Remaining Deadlines with Consent
`(2022.14.09).pdf(22286 bytes )
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`
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`ESTTA Tracking number:
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`ESTTA1235878
`
`Filing date:
`
`09/15/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91245732
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`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
`
`Stipulated/Consent Motion to Extend
`
`Boris Umansky
`
`CHIUSTM@LADAS.NET
`
`/Boris Umansky/
`
`09/15/2022
`
`Inditex v. Zara Tours - Motion to Extend all Remaining Deadlines with Consent
`(2022.14.09).pdf(22286 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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`
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`Industria de Diseno Textil, S.A. (Inditex, S.A.), )
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`)
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`v.
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`Zara Tours Adventures LLC,
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`)
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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 SIXTY-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 June 23, 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, as reflected by their continued
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`communications and settlement discussions to date. Applicant, with Opposer’s consent, requests
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`that all remaining deadlines be extended for a further sixty (60) days to allow the parties to
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`continue their settlement efforts. Applicant has obtained Opposer’s consent to this extension
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`request, and provides the following progress report establishing good cause.
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`In its most recent consented extension request filed on June 17, 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. 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. As indicated in the parties’ prior consented extension
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`requests, various counsel for the parties are located in multiple countries, which occasionally delays
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`the communications process.
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`As previously summarized, Applicant’s counsel provided a settlement counterproposal to
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`Opposer’s counsel on April 19 2021, in response to Opposer’s earlier settlement offer. This
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`settlement counterproposal concerned the use and registration of certain trademarks, including
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`those at issue in this proceeding. On July 23, 2021, Applicant received Opposer’s substantive
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`comments and responses to its global settlement counterproposal, as well as certain inquiries and
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`requests for clarification. The undersigned counsel reported on this matter to Applicant’s U.K.-
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`based counsel, and, after receiving certain additional information from Applicant, provided
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`Opposer’s counsel with a preliminary response on September 15, 2021, including supplying
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`Opposer’s counsel with information relative to domain names at issue. On November 11, 2021,
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`counsel for Applicant provided additional business and trademark-related documents along with
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`relevant information to Opposer’s counsel, and on November 17, 2021, Opposer’s counsel
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`requested further clarification from Applicant relative to two of the proposed settlement terms. On
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`February 2, 2022, after conferring with Applicant’s U.K.-based counsel, Applicant’s counsel wrote
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`to Opposer’s counsel providing responses relative to the two subject proposed settlement terms. On
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`April 5, 2022, Opposer’s counsel responded with a further global settlement proposal concerning
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`the use and registration of various trademarks and domain names worldwide. Applicant’s
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`undersigned counsel relayed this settlement communication to Applicant’s U.K.-based counsel. On
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`May 27, 2022, and after additional communications with U.K.-based counsel for the Applicant, the
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`undersigned counsel provided a further settlement proposal to Opposer’s counsel via e-mail, which
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`included specific responses to Opposer’s various requests and proposals as reflected in Opposer’s
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`counsel’s April 5, 2022 settlement communication.
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`2
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`On July 21, 2022, and after the filing of the most recent consented extension request in this
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`proceeding, Opposer’s counsel provided substantive feedback to Applicant’s undersigned counsel
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`relative to the May 27th settlement communication, and undersigned counsel reported the matter to
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`Applicant’s U.K.-based counsel shortly thereafter. Applicant’s undersigned counsel and its U.K.-
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`based counsel subsequently corresponded regarding these matters on August 1, September 1,
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`September 9, and September 12, 2022, and Applicant’s counsel anticipates that he will shortly be
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`able to provide Opposer’s counsel with a substantive response to Opposer’s most recent settlement
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`communication.
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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 sixty (60) 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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`November 14, 2022
`December 29, 2022
`January 13, 2023
`February 12, 2023
`April 13, 2023
`May 13, 2023
`May 28, 2023
`June 7, 2023
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`3
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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 September 12, 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: September 15, 2022
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`Respectfully submitted,
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`LADAS & PARRY LLP
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`
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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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`4
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing MOTION FOR A FURTHER SIXTY-DAY
`EXTENSION OF ALL REMAINING DEADLINES IN THIS PROCEEDING FOR
`SETTLEMENT WITH CONSENT was served on Opposer by E-mail on September 15, 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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