Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA785675
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`Filing date:
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`11/29/2016
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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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`92060394
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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 e-mail
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`Signature
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`Date
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`Defendant
`Hot Grabba Leaf, LLC
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`DANIEL A TESLER
`LAW OFFICES OF DANIEL A TESLER LLC
`137 CABOT STREET
`BEVERLY, MA 01915
`UNITED STATES
`anthony.arther@artherlaw.com, dtesler@teslerlaw.com
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`Opposition/Response to Motion
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`Daniel A. Tesler
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`dtesler@teslerlaw.com
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`/Daniel A. Tesler/
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`11/29/2016
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`Attachments
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`CAN92060394OppositionMotion112916.pdf(223298 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Michael Andrew Robinson
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`Petitioner,
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`v.
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`Cancellation No. 92060394
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`Mark: HOT GRABBA
`NATURAL TOBACCO LEAF
`Registration No.
`4,263,417
`Registered: December 25, 2012
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`HOT GRABBA LEAF, LLC
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`Registrant.
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`REGISTRANT’S BRIEF IN OPPOSITION TO PETITIONER’S MOTION TO EXTEND
`DEADLINE FOR TESTIMONY PERIOD AND REGISTRANT’S MOTION FOR
`JUDGMENT FOR PLAINTIFF’S FAILURE TO PROVE CASE
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`Registrant, HOT GRABBA LEAF, LLC, opposes Petitioner’s, Michael Andrew
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`Robinson, Motion to Extend Deadline for Testimony Period filed on November 25, 2016.
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`Registrant also files a Motion for Judgment for Plaintiff’s Failure to Prove Case.
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`Background
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`Petitioner, initiated the present proceeding with his November 19, 2014 Petition for
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`Cancellation seeking to cancel Registrant’s Trademark Reg. No. 4,263,417 for the HOT
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`GRABBA NATURAL TOBACCO LEAF mark. Petitioner’s November 19, 2014 Petition for
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`Cancellation was filed on behalf of Petitioner by Attorney Craig Kirsch and Attorney Jason
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`Daniel. Registrant filed a December 30, 2014 Answer to Petition for Cancellation, Affirmative
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`Defenses, and Counterclaims of Petitioner’s Marks, filed by the undersigned counsel.
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`Following Attorney Craig Kirsch’s unexpected passing on March 3, 2016, Attorney Juliet
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`Alcoba filed a March 31, 2016 Appearance of Counsel to represent Petitioner as co-counsel with
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`Attorney Jason Daniels. In a September 23, 2016 decision by the Trademark Trial and Appeal
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`Page 1 of 10
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`Board (the “Board”), the trial schedule was reset, placing the deadline for Plaintiff’s Pretrial
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`Disclosures on October 13, 2016 and Plaintiff’s 30-day testimony period closed on Sunday
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`November 27, 2016.
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`On October 12, 2016, Attorney Louis Gigliotti filed an Appearance of Counsel to
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`represent Petitioner in this matter. On October 13, 2016 Attorney Louis Gigliotti transmitted
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`Pretrial Disclosures to Registrant. Between October 13, 2016 and November 25, 2016, the
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`undersigned counsel did not receive any communication of any kind from Attorney Gigliotti. On
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`Friday November 25, 2016 at 3:50 pm, Attorney Gigliotti left a voicemail with undersigned
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`counsel requesting an extension to Petitioner’s testimony period. Attorney Gigliotti followed up
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`his voicemail with an email at 4:04pm.1 Attorney Gigliotti filed a Motion to Extend Deadline for
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`Testimony Period on Friday November 25, 2016 at 8:10 pm.
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`Undersigned counsel responded to Attorney Gigliotti on Friday November 25, 2016 at
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`10:41 pm informing him that his request would require a discussion with Registrant. After
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`undersigned counsel reached Registrant, undersigned counsel sent Attorney Gigliotti an email on
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`Saturday November 26, 2016 at 12:31 pm informing him that Registrant would not be willing to
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`consent to an extension of time. Petitioner’s Testimony period ended on Sunday November 27,
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`2016 and Petitioner did not file any evidence in support of his case.
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`I.
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`Opposition to Petitioner’s Motion to Extend Deadline for Testimony Period
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`To prevail on a Motion to Extend Time, the movant “must demonstrate that the requested
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`extension of time is not necessitated by the party’s own lack of diligence or unreasonable delay
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`in taking the required action during the time previously allotted therefor.” See TBMP 509.01(a)
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`1 Attorney Gigliotti’s communication with undersigned counsel was received at a phone number and email address
`that are not listed in Registrant’s correspondence addresses and therefore not regularly monitored for work purposes.
`Despite receiving correspondence that would not necessarily even constitute adequate notice to counsel, Registrant
`extended Attorney Gigliotti the courtesy of a prompt reply.
`Page 2 of 10
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`(emphasis added). In addition, “[a] motion to extend must set forth with particularity the facts
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`said to constitute good cause for the requested extension; mere conclusory allegations lacking
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`factual detail are not sufficient.” See id.; see, e.g., Fairline Boats plc v. New Howmar Boats
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`Corp., 59 USPQ2d 1479, 1480 (TTAB 2000) (motion denied where party failed to provide
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`detailed information regarding apparent difficulty in identifying and scheduling its witnesses for
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`testimony and where sparse motion, containing vague reference to possibility of settlement,
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`demonstrated no expectation that proceedings would not move forward during any such
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`negotiations). When a motion to extend is filed, the Board will “scrutinize [it] carefully . . . to
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`determine whether the requisite good cause has been shown.” See id. If a motion to extend is
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`not granted, “the time for taking such action may remain as previously set.” See id.; see, e.g.,
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`Procyon Pharmaceuticals Inc. v. Procyon Biopharma Inc., 61 USPQ2d 1542, 1544 (TTAB
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`2001) (petitioner’s testimony period consequently expired where motion to extend testimony
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`period was denied and dates were left as originally set).
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`1.
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`Petitioner Failed to State Good Cause with Particularity
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`Petitioner has failed to state with particularity any facts that constitute good cause for the
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`requested extension. Petitioner vaguely places blame on Thanksgiving multiple times and on
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`events earlier in the history of the case without stating how they constitute good cause for the
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`requested extension.
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`a.
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`Thanksgiving Did Not Impede Communication with Registrant
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`Petitioner first alleges that he had made “several attempts to contact opposing counsel,
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`but, upon belief, and due to the Thanksgiving holiday, the efforts were unsuccessful.” See
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`Motion to Extend Deadline for Testimony Period (“Motion”) page 1. By “several attempts,”
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`Petitioner appears to be referring to a voicemail left with the undersigned attorney on Friday
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`Page 3 of 10
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`November 25, 2016 at 3:50 pm and an email received on Friday November 25, 2016 at 4:04 pm,
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`both after Thanksgiving and promptly returned. Undersigned counsel replied to Petitioner’s
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`correspondence with an email on November 25, 2016 at 10:41 pm, within seven hours of
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`Attorney Gigliotti’s initial voicemail. After communicating with Registrant, undersigned
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`counsel promptly informed Attorney Gigliotti that Registrant would not consent to the extension
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`of time through an email sent on Saturday November 26, 2016 at 12:31 pm, within 21 hours of
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`Attorney Gigliotti’s initial voicemail.
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`Undersigned counsel reviewed his call logs and email files to confirm that Petitioner
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`made no attempt to contact Registrant regarding the testimony period until Friday November 25,
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`2016 at 3:50 pm, only two days prior to the scheduled closing date.
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`b.
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`Petitioner Failed to State with Particularity How Thanksgiving Constituted
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`Good Cause
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`Petitioner appears to be placing blame on Thanksgiving, a well-known federal holiday,
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`for his inability to “effectively complete the preparation of the testimony materials.” See Motion
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`page 2. Attorney Gigliotti knew that the testimony period was scheduled to close on November
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`27, 2016 when he accepted the case and presumably knew that Thanksgiving would occur on
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`November 24, 2016. Attorney Gigliotti chose to wait until the last week of Petitioner’s
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`testimony period to request materials from the Alcoba firm. See Motion page 2 (“Since the
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`beginning of last week, in or around November 21, 2016, undersigned counsel has tried to, but
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`could not obtain the remaining evidence, documents, and deposition transcripts needed to
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`effectively complete the preparation of the testimony materials.”).
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`After deciding to wait until the last week of the testimony period to request materials
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`from the Alcoba firm, Petitioner states that the Alcoba firm must have been “closed for vacation
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`Page 4 of 10
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`through the Thanksgiving holiday.” See Motion page 2. Petitioner fails to state the basis of his
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`belief that the Alcoba firm was closed and would be unresponsive for the entire week of
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`November 21, 2016. Petitioner also fails to point out, with any particularity, when he contacted
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`the Alcoba firm, how many times he contacted the Alcoba firm, who he contacted at the Alcoba
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`firm or what modes of communication he used. In this age of constant communication, it is
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`difficult to believe that all communication from Attorney Gigliotti to the Alcoba firm during the
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`week of November 21, 2016 went unanswered. Petitioner also failed to note why he did not
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`simply travel the 24.7 miles2 to the Alcoba firm to collect the required materials at any time
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`while he was the counsel of record.
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`Even if the Alcoba firm was closed or unresponsive to Attorney Gigliotti’s requests, he
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`failed to state whether he made any attempts to contact Attorney Jason Daniels, Petitioner’s co-
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`counsel from the initial filing of the November 19, 2014 Petition for Cancellation until Attorney
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`Gigliotti’s Appearance of Counsel on October 12, 2016. It is unreasonable to believe that co-
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`counsel, who maintained joint responsibility in the instant case, would not also have access to
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`any and all of the materials that Attorney Gigliotti desired to prepare testimony materials.
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`c.
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`Petitioner’s History of Counsel is Not Relevant to the Instant Motion
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`While Registrant is certainly sympathetic to Attorney Kirsch’s family and friends, it was
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`misplaced for Petitioner to bring his unexpected passing on March 3, 2016 into a motion to
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`extend filed on November 25, 2016. From Petitioner’s initial filing of the November 19, 2014
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`Petition for Cancellation until Attorney Gigliotti’s Appearance of Counsel on October 12, 2016,
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`Attorney Jason Daniels was co-counsel and presumably provided the continuity needed to keep
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`Petitioner’s case moving ahead. Petitioner fails to state how Attorney Kirsch’s passing was
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`2 A search in Google Maps found that Attorney Gigliotti’s office (1605 Dewey Street, Hollywood, FL 33020) is
`located 24.7 miles from the Alcoba Law Group PA (3399 Northwest 72nd Avenue Suite 211, Miami, FL 33122).
`Page 5 of 10
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`relevant to the November 25, 2016 motion to extend and would likely be unable to make a
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`plausible argument.
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`2.
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`The Extension is Only Necessitated by Petitioner’s Own Lack of Diligence
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`and Unreasonable Delay
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`Petitioner has failed to “demonstrate that the requested extension of time is not
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`necessitated by the party’s own lack of diligence or unreasonable delay in taking the required
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`action during the time previously allotted therefor.” See TBMP 5019.01(a). The Petitioner, as
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`the moving party, has the burden of persuading the Board that it was diligent during the
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`testimony period. See National Football League v. DNH Management LLC, 85 USPQ2d 1852,
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`1854 (TTAB 2008) (the moving party has the burden of persuading the Board that it was diligent
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`in meeting its responsibilities). In this case, it was clearly Petitioner’s lack of diligence and
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`unreasonable delay in taking action within its testimony period that has necessitated the motion
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`to extend.
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`a.
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`Petitioner has Failed to Show Diligence and the Lack of Unreasonable Delay
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`A Motion for an Extension of Time is only appropriate when the movant can
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`“demonstrate that the requested extension of time is not necessitated by the party’s own lack of
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`diligence or unreasonable delay in taking the required action during the time previously allotted
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`therefor.” See TBMP 509.01(a). In this case, the requested extension is solely necessitated by
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`Petitioner’s own lack of diligence and unreasonable delay in taking the required action to file
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`testimony within his scheduled period.
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`Petitioner’s first contact with Registrant during the testimony period was on Friday
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`November 25, 2016 at 3:50 pm. Petitioner’s testimony period was scheduled to close on Sunday
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`November 27, 2016. Attorney Gigliotti was Petitioner’s attorney of record for over 43 full days
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`Page 6 of 10
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`prior to deciding that he would like an extension of time. Petitioner did not once communicate
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`with Registrant over this 43 day period regarding any difficulty in obtaining case materials.
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`Rather, Attorney Gigliotti requested a last-minute consent from Registrant for an extension of
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`time, by leaving a voicemail and email late on a Friday afternoon, two days before Petitioner’s
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`testimony period was set to close. See, e.g., Baron Philippe de Rothschild S.A. v. Styl-Rite
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`Optical Manufacturing Co., 55 USPQ2d 1848, 1851 (TTAB 2000) (applicant’s motion to extend
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`discovery denied when counsel knew of unavailability of witness a month before, yet delayed
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`until last day to seek an agreement on an extension of time).
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`Even if Petitioner had a legitimate need for an extension of time, his unreasonable delay
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`in waiting until two days prior to the close of the testimony period was not explained in any way.
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`Petitioner apparently first decided to contact the Alcoba firm regarding materials on Monday
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`November 21, 2016, but apparently didn’t feel that it was important to request an extension until
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`late in the afternoon of Friday November 25, 2016. See, e.g., Luemme, Inc. v. D. B. Plus Inc., 53
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`USPQ2d 1758, 1760-61 (TTAB 1999) (diligence not shown; discovery requests not served until
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`last day of the discovery period). Petitioner failed to state when and why he arrived at the
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`conclusion that the Alcoba firm would not transmit case materials during the week of November
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`21, 2016.
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`Petitioner also failed to state why Attorney Gigliotti did not make any attempt to contact
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`Attorney Jason Daniels, Petitioner’s longest running prior co-counsel, for the required materials.
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`It is reasonable to infer that Attorney Jason Daniels, Petitioner’s co-counsel from at least
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`November 19, 2014 to October 12, 2016, would have had access to the materials that Attorney
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`Gigliotti allegedly needed to prepare testimony materials. See, e.g., SFW Licensing Corp. v. Di
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`Page 7 of 10
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`Pardo Packing Ltd., 60 USPQ2d 1372, 1373 (TTAB 2001) (opposers had not come forward with
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`“detailed facts” required to carry their burden explaining their inaction).
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`b.
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`Granting Petitioner’s Extension Would Prejudice Registrant
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`Petitioner decided to request an extension to the testimony period only after their ability
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`to call witnesses in their testimony period had expired. Prior to the examination of witnesses,
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`“due notice in writing shall be given to the opposing party . . ..” See 37 CFR 2.123(c); see
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`TBMP 533.02(a). Due notice, especially given the distance between the parties in this case
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`(Petitioner is based in FL and Registrant is based in NY), is generally at least three days. See
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`TBMP 533.02(a) note 1 (citing “Gaudreau v. American Promotional Events, Inc., 82 USPQ2d
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`1692, 1696 (TTAB 2007) (motion to strike testimony deposition granted where there was no
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`attempt to contact adversary regarding an individual’s deposition until two days before the
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`testimony period closed”); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1444
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`(TTAB 2000) (one and two-day notices were not reasonable without compelling need for such
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`haste; three-day notice was reasonable); Electronic Industries Association v. Potega, 50 USPQ2d
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`1775, 1776 (TTAB 1999) (two-day notice was not reasonable and opposing counsel’s failure to
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`appear was excused)”). Petitioner only contacted Registrant after the period of due notice for
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`taking testimony from a witness had expired, making this essentially a request to re-open rather
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`than extend.
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`c.
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`Registrant Has a Likelihood of Success on the Merits and Seeks a Timely
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`Resolution
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`Registrant has shown through materials disclosed during discovery, a lengthy discovery
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`deposition and through the Board’s denial of Petitioner’s May 13, 2016 Motion for Summary
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`Judgment that it has a likelihood of success on the merits, despite Petitioner’s attempt to
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`Page 8 of 10
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`minimize Registrant’s case in the instant motion. Petitioner is correct that one issue in the
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`present case is whether the GRABBA LEAF trademark is descriptive, however Petitioner fails to
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`mention the multitude of facts and legal theories at issue in this case. Most glaring is that
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`Petitioner fails to mention that whether the GRABBA LEAF trademark is generic is also at issue.
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`Petitioner also makes the conclusory statement that Petitioner “should prevail on priority,
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`since the goods are identical, and the markets are substantially similar.” See Motion page 2.
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`These conclusory statements are not supported by any undisputed facts and Registrant has reason
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`to believe that it will prevail on multiple legal theories. Petitioner’s attempt to diminish
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`Registrant’s case as a basis for an extension of time is not supported by the facts and merely used
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`to take attention away from Petitioner’s lack of diligence on the case.
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`II. Motion for Judgment for Plaintiff’s Failure to Prove Case
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`Registrant respectfully requests that Petitioner’s case be dismissed and judgment be
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`rendered in favor of Registrant under 37 CFR 2.132(a). In the event that the Board denies
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`Petitioner’s Motion to Extend Deadline for Testimony Period, the testimony period will have
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`ended (as scheduled) on November 27, 2016. See MPEP 509.01(a). As of today, Petitioner has
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`not taken any testimony or submitted any evidence during his prescribed testimony period.
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`Therefore, Registrant requests that Petitioner’s case be dismissed and judgment be
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`rendered in favor of Registrant. See Procyon Pharmaceuticals Inc. v. Procyon Biopharma Inc.,
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`61 USPQ2d 1542, 1544 (TTAB 2001) (motion to extend testimony period denied; motion to
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`dismiss granted).
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`Conclusion
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`Page 9 of 10
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`For the foregoing reasons, Registrant respectfully requests that Petitioner’s Motion to
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`Extend Deadline for Testimony Period be denied and that Registrant’s Motion for Judgment for
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`Plaintiff’s Failure to Prove Case be granted.
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`Respectfully submitted,
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`By: _/Daniel A. Tesler/______
`Daniel A. Tesler, Esq.
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`Attorney for Registrant,
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`Hot Grabba Leaf, LLC
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`Law Offices of Daniel A. Tesler, LLC
`137 Cabot Street
`Beverly, MA 01915
`dtesler@teslerlaw.com
`Tel. 978.969.0841
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`Page 10 of 10
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`Dated: November 29, 2016
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing Registrant’s Brief in Opposition
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`to Petitioner’s Motion to Extend Deadline for Testimony Period and Registrant’s Motion for
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`Judgment For Plaintiff’s Failure to Prove Case has been served on Louis Gigliotti, counsel of
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`record, by email to lgigliotti@bellsouth.net on November 29, 2016.
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`Date: November 29, 2016
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`By:
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`/Daniel A. Tesler/
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`Daniel A. Tesler
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`Page 1 of 1
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