ESTTA Tracking number:
`
`ESTTA1355921
`
`Filing date:
`
`05/01/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91288673
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Plaintiff
`McDonald's Corporation
`
`JOHN A. CULLIS
`MCDONALD'S CORPORATION
`ONE NORTH WACKER DR.
`SUITE 4400
`CHICAGO, IL 60606
`UNITED STATES
`Primary email: ipdocket@btlaw.com
`Secondary email(s): btmcdonalds@btlaw.com, jcullis@btlaw.com,
`lee.james@btlaw.com, valerie.matthews@btlaw.com, cor-
`rine.conway@btlaw.com, jeff.nicholas@btlaw.com
`312-357-1313
`
`Motion to Compel Discovery or Disclosure
`
`John A. Cullis
`
`ipdocket@btlaw.com, btmcdonalds@btlaw.com, jcullis@btlaw.com,
`lee.james@btlaw.com, valerie.matthews@btlaw.com, cor-
`rine.conway@btlaw.com, jeff.nicholas@btlaw.com
`
`Signature
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`Date
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`/John A. Cullis/
`
`05/01/2024
`
`Attachments
`
`McDonalds Corporation Motion to Compel.pdf(1281283 bytes )
`
`
`
`ESTTA1355921
`
`Filing date:
`
`05/01/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91288673
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Plaintiff
`McDonald's Corporation
`
`JOHN A. CULLIS
`MCDONALD'S CORPORATION
`ONE NORTH WACKER DR.
`SUITE 4400
`CHICAGO, IL 60606
`UNITED STATES
`Primary email: ipdocket@btlaw.com
`Secondary email(s): btmcdonalds@btlaw.com, jcullis@btlaw.com,
`lee.james@btlaw.com, valerie.matthews@btlaw.com, cor-
`rine.conway@btlaw.com, jeff.nicholas@btlaw.com
`312-357-1313
`
`Motion to Compel Discovery or Disclosure
`
`John A. Cullis
`
`ipdocket@btlaw.com, btmcdonalds@btlaw.com, jcullis@btlaw.com,
`lee.james@btlaw.com, valerie.matthews@btlaw.com, cor-
`rine.conway@btlaw.com, jeff.nicholas@btlaw.com
`
`Signature
`
`Date
`
`/John A. Cullis/
`
`05/01/2024
`
`Attachments
`
`McDonalds Corporation Motion to Compel.pdf(1281283 bytes )
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial Nos.:
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`97/634,264 for MCHOSE
`
`Published in the Official Gazette
`on September 5, 2023
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`McDONALD’S CORPORATION,
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`
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`Opposer,
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`Consolidated Opposition No. 91288673
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`
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`v.
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`SHENZHEN ZHISHI INTELLIGENT
`TECHNOLOGY CO., LTD.,
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`Applicant.
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`
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`OPPOSER’S MOTION TO COMPEL INITIAL DISCLOSURES
`
`Pursuant to Rule 37 of the Federal Rules of Civil Procedure and Rule 2.120(f) of the
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`Trademark Rules of Practice, Opposer, McDonald’s Corporation (“Opposer”), hereby moves the
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`Trademark Trial and Appeal Board (the “Board”) for an Order compelling Applicant, Shenzhen
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`Zhishi Intelligent Technology Co., Ltd. (“Applicant”), to serve initial disclosures in this
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`Proceeding.
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`I.
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`FACTUAL BACKGROUND.
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`
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`On December 8, 2023, Opposer filed its Notice of Opposition against Applicant’s
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`trademark application, Serial No. 97/634,264, (the “Subject Application”) on the grounds that the
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`applied for mark, McHose, is likely to cause confusion with and dilute Opposer’s incontestable
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`and famous family of “Mc” formative marks, as exemplified by Reg. Nos. 1426681, 743572,
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`1440655, 3074164, 10377773, 3201441, 3212858, 1065885, 1266500, 1315979, 1369360,
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`4071074, 2678272, 2805110, 2805109, 5241953, and 5501789. (1 TTABVUE.) Applicant
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`answered the Notice of Opposition on January 15, 2024. (4 TTABVUE.)
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`On February 16, 2024, the Parties conducted a Discovery Conference. (See Email
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`Correspondence between Opposer’s counsel and Applicant’s counsel, attached as Exhibit A, p. 5-
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`6.) During the Conference, Applicant indicated his client’s interest in settling the matter amicably.
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`He advised that he and his client would consider the letters that Opposer had previously sent
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`regarding its objection to Applicant’s trademark application, and would subsequently contact
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`Opposer regarding the same. (Id., at 4.) Despite several emails to Applicant’s counsel, Applicant
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`has been silent since February 19, 2024.
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`In an attempt to keep the door to an amicable resolution open, Opposer emailed Applicant’s
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`counsel on March 18, 2024, stating:
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`We have not heard from you in response, however, the parties have a deadline of today to
`serve initial disclosures. Do you agree to a two-week extension to do so as we await your
`client’s response to the below correspondence.
`
`
`(Exh. A, p. 2.)
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`Applicant did not respond. As a result, in compliance with the Board’s December 8, 2023
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`trial schedule in this proceeding (2 TTABVUE) and Fed. R. Civ. P. 6(b), Opposer served its initial
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`disclosures in a timely manner. (Exh. A, p. 1.)
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`Applicant has not engaged in discovery, and in fact, it has not once responded to Opposer’s
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`correspondence since February 2024. As a result, on April 3, 2024, Opposer sent Applicant a
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`deficiency letter requesting that Applicant serve its initial disclosures by April 9, 2024, or in the
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`alternative, provide a time for the parties to meet and confer. (Exhibit B.) Applicant has yet to
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`2
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`
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`acknowledge this letter or provide an explanation as to why it has not responded or complied with
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`the Board’s Order and the Federal Rules of Civil Procedure.
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`Opposer cannot litigate this Proceeding without engagement from the other side. As a
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`result, Opposer must ask the Board to compel Applicant to participate meaningfully in discovery,
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`including by serving its initial disclosures.
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`II.
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`OPPOSER HAS MADE A GOOD-FAITH EFFORT TO ASCERTAIN
`APPLICANT’S INITIAL DISCLOSURES.
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`
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`As outlined above, Opposer has made a good-faith effort to resolve the discovery issues
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`with Applicant without the Board’s intervention as required by Trademark Rule 2.120(e)(1) and
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`37 C.F.R. § 2.120(f)(1). Opposer sent to Applicant’s counsel a letter asking for counsel’s
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`availability to meet and confer concerning Applicant’s failure to serve initial disclosures. (See,
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`Exh. B.) Applicant did not respond to this letter, nor did he provide availability for a meet and
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`confer.
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`As is evident from the foregoing and the attached correspondence, Opposer’s counsel has
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`made a good faith effort to resolve with Applicant the issues presented in this motion, but
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`Applicant has refused to reciprocate and continues to withhold its initial disclosures. Because the
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`March 18, 2024, date for Applicant to serve initial disclosures has passed, and the parties have
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`been unable to resolve this dispute among themselves, Opposer must now hereby request that this
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`motion to compel be granted and the Board issue an order requiring Applicant to serve its complete
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`initial disclosures.
`
`3
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`
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`
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`III.
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`THE BOARD SHOULD COMPEL APPLICANT TO SERVE INITIAL
`DISCLOSURES WITHIN SEVEN (7) DAYS.
`
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`“A motion to compel is the available remedy when an adversary has failed to make, or has
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`made inadequate, initial disclosures or disclosures of expert testimony. Both of these types of
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`disclosures are made during discovery…” See Trademark Rule 2.120(e)(1); Miscellaneous
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`Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42256 (Aug. 1, 2007).
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`Applicant’s initial disclosures are overdue, and Applicant has not done anything to demonstrate a
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`willingness to meaningful engage in this Proceeding. At this point, Applicant has refused to meet
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`and confer with Opposer and has given no indication of when Opposer can expect its initial
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`disclosures.
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`Meanwhile, Applicant’s ongoing failure to engage in discovery has substantially
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`prejudiced Opposer’s ability to discover relevant evidence and identify witnesses for depositions.
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`In fact, it leaves the Proceeding at a standstill.
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`Because Applicant has failed to engage in meaningful discovery, an order compelling
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`Applicant to serve initial disclosures is necessary to allow Opposer to advance this proceeding and
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`avoid further prejudice.
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`WHEREFORE, Opposer respectfully requests that the Board enter an order compelling
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`Applicant to, within seven (7) days of entry of such order, serve its initial disclosures.
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`
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`4
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`
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`Date: May 1, 2024
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`Respectfully submitted,
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`McDONALD’S CORPORATION
`
`By:
`
`_/s/ John A. Cullis______
`
`
`
`
`
`
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`
`
`
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`
`
`
`
`John A. Cullis
`Lawrence E. James, Jr.
`Valerie G. Matthews
`Barnes & Thornburg LLP
`1 North Wacker Drive, Suite 4400
`Chicago, IL 60606
`(312) 357-1313 (Telephone)
`(312) 759-5646 (Fax)
`
`One of the Attorneys for Opposer,
`McDonald’s Corporation
`
`5
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`
`
`
`
`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that the foregoing OPPOSER’S MOTION TO COMPEL INITIAL
`DISCLOSURES is being electronically transmitted via the Electronic System for Trademark
`Trials and Appeals (“ESTTA”) at http://estta.uspto.gov/ on the date noted below:
`
`Date: May 1, 2024
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/John A. Cullis/
`One of the Attorneys for Opposer,
`McDonald’s Corporation
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I served a copy of the foregoing OPPOSER’S MOTION TO
`
`COMPEL INITIAL DISCLOSURES upon Applicant:
`
`
`Haoyi Chen
`2500 Wilcrest Dr. Suite 300
`Houston, TX 77042
`United States
`haoyichen@archlakelaw.com
`
`
`
`via email to Applicant’s correspondence email address of record on May 1, 2024:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Valerie G. Matthews/
`One of the Attorneys for Opposer,
`McDonald’s Corporation
`
`
`
`
`
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`
`
`
`
`
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`
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`6
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`EXHIBIT A
`EXHIBIT A
`
`
`
`
`Matthews, Valerie
`Haoyi Chen
`ip docket; BT McDonald"s; Cullis, John; James, Lee; Conway, Corrine; Nicholas, Jeff
`RE: [EXTERNAL] Re: ESTTA Filing Receipt: Proceeding or Serial or Registration No. 91288673 Answer Filing
`Receipt for ESTTA Tracking No: ESTTA1334042
`Wednesday, April 3, 2024 8:26:17 PM
`McHose - Deficiency Letter(42600776.1).pdf
`image002.png
`image003.png
`image005.png
`image010.png
`image012.png
`image020.png
`
`From:
`To:
`Cc:
`Subject:
`
`Date:
`Attachments:
`
`Haoyi,
`
`
`
`Please see attached for a letter relating to your client’s deficiencies in this proceeding.
`
`
`
`Best,
`
`Valerie
`
`
`Valerie Matthews | Associate
`Barnes & Thornburg LLP
`One North Wacker Drive Suite 4400, Chicago, IL 60606
`Direct: (312) 214-2109 | Mobile: (847) 769-0588
`
`Visit our Subscription Center to sign up for legal insights and events.
`
`From: Matthews, Valerie <Valerie.Matthews@btlaw.com>
`
`Sent: Monday, March 18, 2024 6:15 PM
`
`To: Haoyi Chen <haoyichen@archlakelaw.com>
`
`Cc: ip docket <ipdocket@btlaw.com>; BT McDonald's <btmcdonalds@btlaw.com>; Cullis, John
`
`<JCullis@btlaw.com>; James, Lee <Lee.James@btlaw.com>; Conway, Corrine
`
`<Corrine.Conway@btlaw.com>; Nicholas, Jeff <Jeff.Nicholas@btlaw.com>
`
`Subject: RE: [EXTERNAL] Re: ESTTA Filing Receipt: Proceeding or Serial or Registration No. 91288673
`
`Answer Filing Receipt for ESTTA Tracking No: ESTTA1334042
`
`Haoyi,
`
`
`
`Please see attached for Opposer’s initial disclosure in this proceeding.
`
`
`
`Best,
`
`Valerie
`
`
`Valerie Matthews | Associate
`Barnes & Thornburg LLP
`
`
`
`One North Wacker Drive Suite 4400, Chicago, IL 60606
`Direct: (312) 214-2109 | Mobile: (847) 769-0588
`
`Visit our Subscription Center to sign up for legal insights and events.
`
`From: Matthews, Valerie <Valerie.Matthews@btlaw.com>
`
`Sent: Monday, March 18, 2024 1:26 PM
`
`To: Haoyi Chen <haoyichen@archlakelaw.com>
`
`Cc: ip docket <ipdocket@btlaw.com>; BT McDonald's <btmcdonalds@btlaw.com>; Cullis, John
`
`<JCullis@btlaw.com>; James, Lee <Lee.James@btlaw.com>; Conway, Corrine
`
`<Corrine.Conway@btlaw.com>; Nicholas, Jeff <Jeff.Nicholas@btlaw.com>
`
`Subject: RE: [EXTERNAL] Re: ESTTA Filing Receipt: Proceeding or Serial or Registration No. 91288673
`
`Answer Filing Receipt for ESTTA Tracking No: ESTTA1334042
`
`Dear Haoyi,
`
` I
`
` am following up on the communications below, and what was discussed during the parties’
`
`discovery conference. We have not yet heard from you in response, however, the parties have a
`
`deadline of today to serve initial disclosures. Do you agree to a two-week extension to do so as we
`
`await your client’s response to the below correspondence? Please confirm.
`
`
`
`Best,
`
`
`Valerie Matthews | Associate
`Barnes & Thornburg LLP
`One North Wacker Drive Suite 4400, Chicago, IL 60606
`Direct: (312) 214-2109 | Mobile: (847) 769-0588
`
`Visit our Subscription Center to sign up for legal insights and events.
`
`From: Matthews, Valerie <Valerie.Matthews@btlaw.com>
`
`Sent: Tuesday, March 12, 2024 8:00 PM
`
`To: Haoyi Chen <haoyichen@archlakelaw.com>
`
`Cc: ip docket <ipdocket@btlaw.com>; BT McDonald's <btmcdonalds@btlaw.com>; Cullis, John
`
`<JCullis@btlaw.com>; James, Lee <Lee.James@btlaw.com>; Conway, Corrine
`
`<Corrine.Conway@btlaw.com>; Nicholas, Jeff <Jeff.Nicholas@btlaw.com>
`
`Subject: RE: [EXTERNAL] Re: ESTTA Filing Receipt: Proceeding or Serial or Registration No. 91288673
`
`Answer Filing Receipt for ESTTA Tracking No: ESTTA1334042
`
`
`
`
`Haoyi,
`
` I
`
` am following up on our communications below, as well as our settlement discussion during the
`
`parties’ discovery conference.
`
`
`
`Do you have any information from your client pertaining to its use of the MCHOSE mark? We look
`
`forward to hearing from you soon.
`
`
`
`Best,
`
`
`
`
`Valerie Matthews | Associate
`Barnes & Thornburg LLP
`One North Wacker Drive Suite 4400, Chicago, IL 60606
`Direct: (312) 214-2109 | Mobile: (847) 769-0588
`
`Visit our Subscription Center to sign up for legal insights and events.
`
`From: Matthews, Valerie <Valerie.Matthews@btlaw.com>
`
`Sent: Monday, February 19, 2024 12:36 PM
`
`To: Haoyi Chen <haoyichen@archlakelaw.com>
`
`Cc: ip docket <ipdocket@btlaw.com>; BT McDonald's <btmcdonalds@btlaw.com>; Cullis, John
`
`<JCullis@btlaw.com>; James, Lee <Lee.James@btlaw.com>; Conway, Corrine
`
`<Corrine.Conway@btlaw.com>; Nicholas, Jeff <Jeff.Nicholas@btlaw.com>
`
`Subject: RE: [EXTERNAL] Re: ESTTA Filing Receipt: Proceeding or Serial or Registration No. 91288673
`
`Answer Filing Receipt for ESTTA Tracking No: ESTTA1334042
`
`Hi Haoyi,
`
`
`
`The prior correspondence is attached. As discussed during the discovery conference, our client is
`
`interested in learning more regarding how your client uses its mark. Specifically, our client is
`
`interested in the pronunciation, appearance, and meaning of the mark.
`
`
`
`Looking forward to hearing from you.
`
`
`
`Thank you,
`
`Valerie
`
`
`Valerie Matthews | Associate
`Barnes & Thornburg LLP
`One North Wacker Drive Suite 4400, Chicago, IL 60606
`Direct: (312) 214-2109 | Mobile: (847) 769-0588
`
`
`
`Visit our Subscription Center to sign up for legal insights and events.
`From: Haoyi Chen <haoyichen@archlakelaw.com>
`
`Sent: Monday, February 19, 2024 11:53 AM
`
`To: Matthews, Valerie <Valerie.Matthews@btlaw.com>
`
`Cc: ip docket <ipdocket@btlaw.com>; BT McDonald's <btmcdonalds@btlaw.com>; Cullis, John
`
`<JCullis@btlaw.com>; James, Lee <Lee.James@btlaw.com>; Conway, Corrine
`
`<Corrine.Conway@btlaw.com>; Nicholas, Jeff <Jeff.Nicholas@btlaw.com>
`
`Subject: Re: [EXTERNAL] Re: ESTTA Filing Receipt: Proceeding or Serial or Registration No. 91288673
`
`Answer Filing Receipt for ESTTA Tracking No: ESTTA1334042
`
`Caution: This email originated from outside the Firm.
`
`Hi, Valerie. Could you please send me those prior communications mentioned in our last call,
`so that I could push my client for its decisions. Thank you.
`
`Arch & Lake LLP
`Haoyi Chen PhD JD / Partner
`haoyichen@archlakelaw.com
`Arch & Lake LLP
`2500 Wilcrest, Suite 301
`Houston, Texas, 77042
`Phone: 346-335-9890
`Fax: 312-614-1873
`
`
`CONFIDENTIALITY NOTICE: This electronic mail transmission and any attachments are confidential and may be
`privileged. They should be read or retained only by the intended recipient. If you have received this transmission in
`error, please notify the sender immediately and delete the transmission from your system.
`
`
`On Fri, Feb 16, 2024 at 12:02 PM Matthews, Valerie <Valerie.Matthews@btlaw.com> wrote:
`Haoyi,
`
`
`
`Following up on my email and voicemails. Are you still available today for a call? We are flexible.
`
`
`
`Thank you,
`
`Valerie
`
`
`Valerie Matthews | Associate
`Barnes & Thornburg LLP
`One North Wacker Drive Suite 4400, Chicago, IL 60606
`Direct: (312) 214-2109 | Mobile: (847) 769-0588
`
`
`
`Visit our Subscription Center to sign up for legal insights and events.
`
`From: Matthews, Valerie
`
`Sent: Friday, February 16, 2024 11:07 AM
`
`To: 'Haoyi Chen' <haoyichen@archlakelaw.com>
`
`Cc: ip docket <ipdocket@btlaw.com>; BT McDonald's <btmcdonalds@btlaw.com>; Cullis, John
`
`<JCullis@btlaw.com>; James, Lee <Lee.James@btlaw.com>; Conway, Corrine
`
`<Corrine.Conway@btlaw.com>; Nicholas, Jeff <Jeff.Nicholas@btlaw.com>
`
`Subject: RE: [EXTERNAL] Re: ESTTA Filing Receipt: Proceeding or Serial or Registration No.
`
`91288673 Answer Filing Receipt for ESTTA Tracking No: ESTTA1334042
`
`Hi Haoyi,
`
`
`
`We are on the Teams link. Are you still available for a call at this time?
`
`
`
`Best,
`
`Valerie
`
`
`Valerie Matthews | Associate
`Barnes & Thornburg LLP
`One North Wacker Drive Suite 4400, Chicago, IL 60606
`Direct: (312) 214-2109 | Mobile: (847) 769-0588
`
`Visit our Subscription Center to sign up for legal insights and events.
`From: Haoyi Chen <haoyichen@archlakelaw.com>
`
`Sent: Wednesday, February 14, 2024 3:37 PM
`
`To: Matthews, Valerie <Valerie.Matthews@btlaw.com>
`
`Cc: ip docket <ipdocket@btlaw.com>; BT McDonald's <btmcdonalds@btlaw.com>; Cullis, John
`
`<JCullis@btlaw.com>; James, Lee <Lee.James@btlaw.com>; Conway, Corrine
`
`<Corrine.Conway@btlaw.com>; Nicholas, Jeff <Jeff.Nicholas@btlaw.com>
`
`Subject: Re: [EXTERNAL] Re: ESTTA Filing Receipt: Proceeding or Serial or Registration No.
`
`91288673 Answer Filing Receipt for ESTTA Tracking No: ESTTA1334042
`
`Caution: This email originated from outside the Firm.
`
`Received with thanks.
`
`
`
`
`Arch & Lake LLP
`Haoyi Chen PhD JD / Partner
`haoyichen@archlakelaw.com
`Arch & Lake LLP
`2500 Wilcrest, Suite 301
`Houston, Texas, 77042
`Phone: 346-335-9890
`Fax: 312-614-1873
`
`
`CONFIDENTIALITY NOTICE: This electronic mail transmission and any attachments are confidential and may be
`privileged. They should be read or retained only by the intended recipient. If you have received this transmission in
`error, please notify the sender immediately and delete the transmission from your system.
`
`
`On Wed, Feb 14, 2024 at 3:31 PM Matthews, Valerie <Valerie.Matthews@btlaw.com>
`wrote:
`
`Friday at 11 a.m. works – I will send a calendar invite. Thank you!
`
`
`Valerie Matthews | Associate
`Barnes & Thornburg LLP
`One North Wacker Drive Suite 4400, Chicago, IL 60606
`Direct: (312) 214-2109 | Mobile: (847) 769-0588
`
`Visit our Subscription Center to sign up for legal insights and events.
`From: Haoyi Chen <haoyichen@archlakelaw.com>
`
`Sent: Wednesday, February 14, 2024 3:28 PM
`
`To: Matthews, Valerie <Valerie.Matthews@btlaw.com>
`
`Cc: ip docket <ipdocket@btlaw.com>; BT McDonald's <btmcdonalds@btlaw.com>; Cullis, John
`
`<JCullis@btlaw.com>; James, Lee <Lee.James@btlaw.com>; Conway, Corrine
`
`<Corrine.Conway@btlaw.com>; Nicholas, Jeff <Jeff.Nicholas@btlaw.com>
`
`Subject: Re: [EXTERNAL] Re: ESTTA Filing Receipt: Proceeding or Serial or Registration No.
`
`91288673 Answer Filing Receipt for ESTTA Tracking No: ESTTA1334042
`
`Caution: This email originated from outside the Firm.
`
`either day at 11:00 AM (Central time) works for me. Thank you.
`
`Arch & Lake LLP
`Haoyi Chen PhD JD / Partner
`haoyichen@archlakelaw.com
`Arch & Lake LLP
`
`
`
`2500 Wilcrest, Suite 301
`Houston, Texas, 77042
`Phone: 346-335-9890
`Fax: 312-614-1873
`
`
`CONFIDENTIALITY NOTICE: This electronic mail transmission and any attachments are confidential and may be
`privileged. They should be read or retained only by the intended recipient. If you have received this transmission
`in error, please notify the sender immediately and delete the transmission from your system.
`
`
`On Wed, Feb 14, 2024 at 12:10 PM Matthews, Valerie <Valerie.Matthews@btlaw.com>
`wrote:
`
`Mr. Chen,
`
`
`
`Please let us know your availability for a discovery conference tomorrow or Friday.
`
`
`
`Thank you,
`
`Valerie
`
`
`Valerie Matthews | Associate
`Barnes & Thornburg LLP
`One North Wacker Drive Suite 4400, Chicago, IL 60606
`Direct: (312) 214-2109 | Mobile: (847) 769-0588
`
`Visit our Subscription Center to sign up for legal insights and events.
`From: Haoyi Chen <haoyichen@archlakelaw.com>
`
`Sent: Monday, January 29, 2024 8:00 AM
`
`To: ip docket <ipdocket@btlaw.com>; BT McDonald's <btmcdonalds@btlaw.com>; Cullis,
`
`John <JCullis@btlaw.com>; James, Lee <Lee.James@btlaw.com>; Matthews, Valerie
`
`<Valerie.Matthews@btlaw.com>; Conway, Corrine <Corrine.Conway@btlaw.com>; Nicholas,
`
`Jeff <Jeff.Nicholas@btlaw.com>
`
`Subject: [EXTERNAL] Re: ESTTA Filing Receipt: Proceeding or Serial or Registration No.
`
`91288673 Answer Filing Receipt for ESTTA Tracking No: ESTTA1334042
`
`Caution: This email originated from outside the Firm.
`
`Attorney Cullis. I am also wondering if you would be available for a discovery
`conference call early next week. Thank you.
`
`Arch & Lake LLP
`Haoyi Chen PhD JD / Partner
`haoyichen@archlakelaw.com
`
`
`
`Arch & Lake LLP
`2500 Wilcrest, Suite 301
`Houston, Texas, 77042
`Phone: 346-335-9890
`Fax: 312-614-1873
`
`
`CONFIDENTIALITY NOTICE: This electronic mail transmission and any attachments are confidential and may
`be privileged. They should be read or retained only by the intended recipient. If you have received this
`transmission in error, please notify the sender immediately and delete the transmission from your system.
`
`
`On Mon, Jan 15, 2024 at 9:10 PM Haoyi Chen <haoyichen@archlakelaw.com> wrote:
`Attorney Cullis. Please find this attorney's appearance, as well as the Applicant's
`answer, to the Proceeding No. 91288673. Thank you.
`
`Arch & Lake LLP
`Haoyi Chen PhD JD / Partner
`haoyichen@archlakelaw.com
`Arch & Lake LLP
`2500 Wilcrest, Suite 301
`Houston, Texas, 77042
`Phone: 346-335-9890
`Fax: 312-614-1873
`
`
`CONFIDENTIALITY NOTICE: This electronic mail transmission and any attachments are confidential and
`may be privileged. They should be read or retained only by the intended recipient. If you have received this
`transmission in error, please notify the sender immediately and delete the transmission from your system.
`
`
`---------- Forwarded message ---------
`From: <Estta_autoreply@uspto.gov>
`Date: Mon, Jan 15, 2024 at 9:08 PM
`Subject: ESTTA Filing Receipt: Proceeding or Serial or Registration No. 91288673
`Answer Filing Receipt for ESTTA Tracking No: ESTTA1334042
`To: <haoyichen@archlakelaw.com>
`
`ESTTA Filing Receipt
`
`This ESTTA Filing Receipt confirms receipt of your submission
`associated with the above-identified ESTTA Tracking Number.
`
`Your submission may be viewed on TTABVUE at
`https://ttabvue.uspto.gov/ttabvue/ . If you don't see your
`submission on TTABVUE a week after you file, or if you received an
`error message or experienced a technical issue while submitting
`your submission on ESTTA, please send an email to estta@uspto.gov
`and provide the ESTTA Tracking Number and the Serial, Registration
`
`
`
`or Proceeding Number identified above, and a brief description of
`the error message or technical issue you encountered.
`
`For non-technical status or information inquiries, please contact
`the TTAB Assistance Center at ttabinfo@uspto.gov or 571-272-8500
`Monday through Friday from 8:30 a.m. to 5:00 p.m. Eastern Time
`(ET).
`----
`Tracking no.: ESTTA1334042
`Filing date: 01/15/2024
`
`Proceeding no.: 91288673
`Filing party: Defendant
`Shenzhen Zhishi Intelligent Technology Co., Ltd.
`
`Filing party's correspondence address: JIAWEI PENG
`12234 SHADOW CREEK PKWY BLDG 5 UNIT 110,
`PEARLAND, TX 77584
`UNITED STATES
`Primary email: jpeng202104@gmail.com
`Secondary email(s): trademarkdocket@ipspeedy.com
`202-818-9676
`
`Submission: Answer
`
`Filer's name: Haoyi Chen
`Filer's email: haoyichen@archlakelaw.com
`Signature: /Haoyi Chen/
`Date: 01/15/2024
`
`Attachments: Answer MCHOSE.pdf
`
`
`
`CONFIDENTIALITY NOTICE: This email and any attachments are for the exclusive and confidential
`use of the intended recipient. If you are not the intended recipient, please do not read, distribute or
`take action in reliance upon this message. If you have received this in error, please notify us
`immediately by return email and promptly delete this message and its attachments from your
`computer system. We do not waive attorney-client or work product privilege by the transmission of
`this message.
`
`
`
`CONFIDENTIALITY NOTICE: This email and any attachments are for the exclusive and confidential
`use of the intended recipient. If you are not the intended recipient, please do not read, distribute or
`take action in reliance upon this message. If you have received this in error, please notify us
`immediately by return email and promptly delete this message and its attachments from your computer
`system. We do not waive attorney-client or work product privilege by the transmission of this message.
`
`
`
`
`
`CONFIDENTIALITY NOTICE: This email and any attachments are for the exclusive and confidential use
`of the intended recipient. If you are not the intended recipient, please do not read, distribute or take
`action in reliance upon this message. If you have received this in error, please notify us immediately by
`return email and promptly delete this message and its attachments from your computer system. We do
`not waive attorney-client or work product privilege by the transmission of this message.
`
`
`
`EXHIBIT B
`EXHIBIT B
`
`
`
`
`
`BARNES & THORNBURG LLP
`
`
`
`
`Valerie G. Matthews
`(312) 214-2109
`valerie.matthews@btlaw.com
`
`
`
`April 3, 2024
`
`
`
`
`Suite 4400
`One North Wacker Drive
`Chicago, IL 60606-2833 U.S.A.
`(312) 357-1313
`Fax (312) 759-5646
`www.btlaw.com
`
`
`
`Via Email Only (haoyichen@archlakelaw.com)
`
`Haoyi Chen
`Arch & Lake LLP
`2500 Wilcrest Dr. Suite 300
`Houston, Texas 77042
`
`
`Re: McDonald’s Corp. v. Shenzhen Zhishi Intelligent Technology Co., Ltd.,
`Opposition Proceeding No. 91288673
`
`Dear Mr. Chen:
`
`We are writing to address your client’s failure to comply with the Federal Rules of Civil
`Procedure, as well as the Board’s schedule in this proceeding. As you know, the Board’s December
`8, 2023 sets forth the trial schedule that governs this proceeding. (See 2 TTABVUE.) Pursuant to
`the Board’s Order and Fed. R. Civ. P. 6(b), the parties’ deadline to serve initial disclosures was
`March 17, 2024. Petitioner served its initial disclosures in a timely manner on March 17, 2024.
`
`Your client has failed to serve his initial disclosures as required by the Federal Rules, Board
`procedure, and the Board’s December 8th Order. Further, your client did not ask for an extension
`of time to serve his initial disclosures, nor did it provide an explanation as to why it is failing to
`comply with the Board’s December 8th Order.
`
`We have now provided ample time for Registrant to remedy this missed deadline, however,
`Registrant’s lack of compliance and engagement in discovery throughout this proceeding is now
`prejudicing Petitioner. As a result, unless Registrant provides initial disclosures by April 9, 2024,
`we will raise this issue before the Board.
`
`Please confirm that Registrant will serve initial disclosures by April 9, 2024, or let us know
`when you are available to meet and confer on this issue.
`
`
` Best,
`
`Valerie G. Matthews
`
`
`
`
`
`
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