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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1099208
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`Filing date:
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`12/02/2020
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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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`91264169
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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
`Tula Health, Inc.
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`DEVIN MILLER
`MILLER IP LAW
`4030 W 5800 N
`MORGAN, UT 84050
`UNITED STATES
`Primary Email: devin@milleripl.com
`Secondary Email(s): sara@milleripl.com
`No phone number provided.
`
`Motion to Extend
`
`Jesse L. London
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`jesse@milleripl.com, devin@milleripl.com, sara@milleripl.com
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`/Jesse L. London/
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`12/02/2020
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`20201202 Motion for Extension of Time to Respond Tula.204.pdf(139342 bytes )
`20201202 Taylor Declaration Tula.204.pdf(154020 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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`Roche Diabetes Care GmbH, Roche Diabetes Care )
`Inc.,
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`Opposer,
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`Tula Health, Inc.,
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`Applicant.
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`Opposition No. 91264169
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`MOTION FOR EXTENSION OF TIME TO RSEPOND
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`Applicant and Respondent, Tula Health, Inc., hereby moves for an extension of “Time to
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`Answer” for a period of at least forty-five (45) days or no earlier until January 16, 2020.
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`Respondent requests this schedule to allow additional time for the USPTO Certifications
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`Division to provide file wrappers of the older cited marks not available electronically for review
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`to Respondent and to prevent an answer being due during the holidays. Good cause exists to
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`grant the extension because Respondent cannot effectively answer the complaint, state its
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`affirmative defenses, or understand its potential counterclaims without reviewing the full
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`prosecution history of Opposer’s marks cited against it.
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`Moreover, counsel for the Respondent have an ethical duty to fully review the
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`prosecution history of cited marks which cannot be done in this case since all the documents are
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`not available electronically. Counsel for Respondent requested a stipulation to this extension
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`from counsel for Opposer in advance of this Motion, however, on December 1, 2020, Opposer,
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`via counsel, declined to stipulate and opposes this Motion. The motion is not brought for the
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`- 1 -
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`

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`purpose of delay. This is the third such motion for extension of time to answer as a result of
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`waiting on the Certification Division to provide copies.
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`Respondent has acted diligently to get copies of the older file-wrappers and the delay to
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`review the cited marks is not within Respondent’s control because Respondent is still waiting on
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`the USPTO Certification Division. After service of the complaint, Respondent timely ordered
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`copies of the certified trademark file wrappers on September 21, 2020. Taylor Declaration ¶ 3.
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`Since ordering the copies, Respondent has diligently made multiple attempts to track and speed
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`the process of receiving the files. Counsel for Respondent’s paralegal, Sara Taylor, made
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`contact with the Certification Division of the USPTO on approximately seven (7) occasions
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`requesting the status of the order and asking for expedition. Taylor Decl. ¶¶ 4a, 4b, 4c, 4d, 4e,
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`4g, 4i.
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`DATED December 2, 2020.
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`Respectfully submitted,
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`/Jesse L. London/
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`Of Attorneys for Respondent Tula Health, Inc.
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`- 2 -
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`CERTIFICATE OF TRANSMISSION
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`I hereby certify that this paper is being electronically filed with the Trademark Trial and
`Appeal Board of the United States Patent and Trademark Office by means of the Electronic
`System for Trademark Trials and Appeals ("ESTTA") on this 2nd day of November 2020.
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`
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`CERTIFICATE OF SERVICE
`I hereby certify that a copy of the foregoing MOTION FOR EXTENSION OF TIME TO
`ANSWER has been served via email service upon:
`
`
`JONATHAN P. FROEMEL
`BARNES & THORNBURG LLP
`1 NORTH WACKER DRIVE, SUTE 4400
`CHICAGO, IL 60606
`UNITED STATES
`Jonathan.Froemel@btlaw.com
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`this 2nd day of December, 2020.
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`/Jesse L. London/
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`Of Attorneys for Applicant
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`- 3 -
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`Roche Diabetes Care GmbH, Roche Diabetes Care )
`Inc.,
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`Opposer,
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`v.
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`Tula Health, Inc.,
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`Applicant.
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`Opposition No. 91264169
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`IN SUPPORT OF MOTION FOR EXTENSION OF TIME TO ANSWER
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`DECLARATION OF SARA TAYLOR
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`
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`I, Sara Taylor, declare under penalty of perjury as follows:
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`1. I am over the age of eighteen and competent to make this Declaration.
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`2. The facts stated in this Declaration are within my personal knowledge and are true.
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`3. I am the Paralegal at Miller IP Law, LLC supporting the attorneys on behalf of
`Applicant and Respondent Tula Health, Inc.
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`4. File wrappers for Opposer’s cited marks, which are not available in electronic form,
`were ordered on September 21, 2020.
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`5. I made contact with the U.S. Patent and Trademark Office on approximately 7
`occasions requesting the status of our order for certified copies of file wrappers for Opposer’s
`marks cited on the following occasions:
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`a. On October 22, 2020: call to Certification Division requesting change of delivery
`address and requesting status update; informed no changes to order can be made and
`orders still in process.
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`b. On or about October 28, 2020: call to Certification Division requesting status update.
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`c. On October 28, 2020: email to Certification Division requesting status update and
`update to mailing address; staff response is that no changes can be made to order.
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`d. On November 2, 2020: email to Certification Division requesting status update; staff
`response is that order is still in process.
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`DECLARATION OF SARA TAYLOR
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` Page 1 of 2
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`

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`e. On November 11, 2020: email to Certification Division requesting status update and
`requesting to be contacted by supervisor.
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`f. On November 12, 20: Received email from Certification Division’s Gloria Murray
`regarding order in process; explained office is short-staffed and order is still in
`process.
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`g. On November 17, 2020: email to Certification Division requesting status update.
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`h. On November 19, 2020: Received email from Certification Division’s Gloria Murray
`confirming order assigned to Certified.
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`i. On November 30, 2020: email to Certification Division and Gloria Murray requesting
`status update and change of address; Murray response indicated order still in process.
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`
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`Being hereby warned that willful false statements and the like so made are punishable by fine or
`imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements may
`jeopardize the validity of the application or any resulting registration, I declare that all statements
`made of my knowledge are true and that all statements made on information are believed to be
`true.
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`Sara Taylor
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`Signed:
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`/Sara Taylor/
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`Date: December 2, 2020
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`DECLARATION OF SARA TAYLOR
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` Page 2 of 2
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`

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