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ESTTA Tracking number:
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`ESTTA1358738
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`Filing date:
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`05/15/2024
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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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`91279048
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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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`Plaintiff
`Salesforce, Inc.
`
`S. ERIK COMBS IV
`PIRKEY BARBER PLLC
`1801 EAST 6TH STREET
`SUITE 300
`AUSTIN, TX 78702
`UNITED STATES
`Primary email: ecombs@pirkeybarber.com
`Secondary email(s): jbaum@pirkeybarber.com, ckuehn@pirkeybarber.com,
`drausa@pirkeybarber.com, tmcentral@pirkeybarber.com
`512-322-5200
`
`Motion to Suspend for Settlement Discussions
`
`S. Erik Combs IV
`
`ecombs@pirkeybarber.com, jbaum@pirkeybarber.com, ck-
`uehn@pirkeybarber.com, drausa@pirkeybarber.com, tmcent-
`ral@pirkeybarber.com
`
`/S. Erik Combs IV/
`
`05/15/2024
`
`Consented Motion for Suspension for Settlement with Status Report.pdf (108914
`bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In Re Serial No. 90/737,174
`Filed: May 26, 2021
`Mark: AMPLIFORCE
`Published: March 22, 2022
`
`SALESFORCE, INC.,
`
`Opposer,
`
`
`v.
`
`QLYTICS,
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`
`
`Applicant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`Opposition No. 91279048
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`Consented Motion for 60-day Suspension for Settlement
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`Pursuant to 37 C.F.R. § 2.117(c) and in accordance with the Orders issued by the Trademark
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`Trial and Appeal Board (the “Board”) on November 20, 2023, and February 6, 2024 (24 TTABVUE
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`and 28 TTABVUE) (the “Orders”), Opposer Salesforce, Inc. respectfully requests that the deadlines
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`in this proceeding be suspended for a period of sixty (60) days. Counsel for Applicant Qlytics
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`provided consent to this Motion on May 3, 2024.
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`The parties note the Board’s requirement in the Order to provide a status report with further
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`suspension or extension requests. (24 TTABVUE and 28 TTABVUE). The parties have been
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`engaged in settlement discussions for a number of months and remain diligently engaged in
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`settlement negotiations. The parties have exchanged settlement/coexistence proposals via email
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`with specific terms, which the parties (through their counsel) have discussed.
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`Specifically, the parties’ counsel are engaged in discussions relating to terms in principle
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`that will resolve this opposition and related disputes in multiple other jurisdictions. Since the
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`Board’s last order, the parties’ counsel exchanged emails on April 19, April 22, April 25, May 2,
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`1
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`

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`May 3, and May 4, 2024, concerning the Discovery Conference, the status of internal discussions,
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`timing for further exchange of terms in principle, and the continued potential for settlement of this
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`matter. In addition, the parties discussed each of these topics during the Discovery Conference
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`phone call on April 24, 2024.
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`The parties have discussed terms concerning the geographic scope of a potential agreement
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`and potential changes to and restrictions regarding use, registration, and challenges to the mark
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`and application that are subject to this proceeding that the parties believe will obviate the need for
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`proceedings to continue. However, the parties have not yet agreed on the combination of terms.
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`We expect significant progress and additional clarity regarding the foregoing will be made in the
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`next 60 days.
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`The parties are continuing to make a good-faith effort to reach and finalize an agreement
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`in this matter and will continue to do so. The parties believe it is appropriate for the Board to grant
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`a further suspension as this will avoid the need to file pleadings or engage in discovery while the
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`parties work to finalize settlement discussions.
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`The parties submit that the requested suspension is not made for the purpose of delay, but
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`rather to facilitate settlement discussions and conserve the resources of the parties and the Board
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`while the parties attempt to finalize an agreement.
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`In light of the foregoing, Opposer respectfully requests, with Applicant’s consent, that the
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`Board grant this motion and suspend the deadlines for a period of 60 days and reset the remaining
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`dates as shown below:
`
`Event
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures Due
`Plaintiff's 30-day Trial Period Ends
`
`Current Deadline
`May 24, 2024
`September 21, 2024
`October 21, 2024
`December 5, 2024
`January 19, 2025
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`New Deadline
`July 24, 2024
`November 21, 2024
`December 21, 2024
`February 4, 2025
`March 21, 2025
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`
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`2
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`

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`Current Deadline
`Event
`February 3, 2025
`Defendant's Pretrial Disclosures Due
`Defendant's 30-day Trial Period Ends March 20, 2025
`Plaintiff's Rebuttal Disclosures Due
`April 4, 2025
`Plaintiff's 15-day Rebuttal Period
`May 4, 2025
`Ends
`Plaintiff's Opening Brief Due
`Defendant's Brief Due
`Plaintiff's Reply Brief Due
`Request for Oral Hearing (optional)
`Due
`
`July 3, 2025
`August 2, 2025
`August 17, 2025
`August 27, 2025
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`New Deadline
`April 5, 2025
`May 20, 2025
`June 4, 2025
`July 4, 2025
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`September 2, 2025
`October 2, 2025
`October 17, 2025
`October 27, 2025
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`Opposer submits that good cause exists as the parties need additional time to continue negotiating
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`and attempting to finalize settlement.
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`Date: May 15, 2024
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`Respectfully submitted,
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`
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`
`
`/S. Erik Combs IV/
`John C. Baum
`Cliff Kuehn
`S. Erik Combs IV
`PIRKEY BARBER PLLC
`1801 East 6th Street, Suite 300
`Austin, TX 78702
`(512) 322-5200
`(512) 322-5201 (Fax)
`
`ATTORNEYS FOR OPPOSER
`
`
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`3
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing was served by email on May
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`15, 2024 on Applicant’s counsel of record listed below:
`
`CHARLES MIRHO
`ROWAN TELS LLC
`431 H STREET
`CRESCENT CITY, CA 95531
`charles.mirho@rowantelsllc.com
`jane.clark@rowantelsllc.com
`robert.auerbach@rowantelsllc.com
`trademarks@steptoe-johnson.com
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`
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`
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`/S. Erik Combs IV/
`S. Erik Combs IV
`
`
`
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`4
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`

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