Nationwide Mutual Insurance Company v. Nationwide Auto Lease LLC, 92067046, No. 38 (T.T.A.B. May. 26, 2020)

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1057925
`
`Filing date:
`
`05/26/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92067046
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`Nationwide Auto Lease LLC
`
`MITCHELL P NOVICK
`LAW OFFICES OF MITCHELL P NOVICK
`623 EAGLE ROCK AVENUE, SUITE 407
`WEST ORANGE, NJ 07052
`UNITED STATES
`mnovick@mitchellnovick.com, nhyman@mitchellnovick.com
`973-744-5150
`
`Opposition/Response to Motion
`
`Mitchell P. Novick, Esq.
`
`mnovick@mitchellnovick.com, trademarks@mitchellnovick.com
`
`/mitchell p. novick/
`
`05/26/2020
`
`Attachments
`
`1939sancmot3_rsp.pdf(177414 bytes )
`
`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration
`Registration No. 5,005,305
`Registered: July 19, 2016
`Mark: NATIONWIDE AUTO LEASE
`
`NATIONWIDE MUTUAL INSURANCE COMPANY,
`
`Petitioner,
`
`-vs-
`
`NATIONWIDE AUTO LEASE LLC,
`
`Registrant.
`
`Cancellation No. 92067046
`
`REGISTRANT'S RESPONSE TO
`
`PETITIONER'S THIRD MOTION
`
`FOR JUDGMENT AS A SANCTION
`
`Registrant hereby responds to Petitioner's Third Motion For
`
`Sanctions, filed 04/28/2020 (“Petitioner's Current Motion”).
`
`Registrant has now satisfied all the concerns and issues raised in
`
`Petitioner's Current Motion. Specifically, Registrant has now provided
`
`Petitioner:
`
`(1) with a procedure to “to work with
`
`Petitioner’s counsel on deposition scheduling”
`
`(Petitioner's Current Motion, p. 2); see attached
`
`Exhibit A, and
`
`(2) with [(a)] “[o]rganized and
`
`consecutively numbered ... documents (including all
`
`documents previously produced); [(b)] ... any
`
`1939sancmot3.rsp 052620
`
`- 1 -
`
`

`supplemental written responses, ... indicating the
`
`number (or range of numbers) of documents responsive
`
`to each corresponding request; [(c)] ... a detailed
`
`explanation of what search was conducted to locate
`
`documents and things responsive to each of
`
`Petitioner’s requests; and [(d)] [s]igned ...
`
`responses under penalty of perjury” (Petitioner's
`
`Current Motion, p. 3); see attached Exhibits A, B,
`
`and C.
`
`Because much of the delay in responding earlier to Petitioner was
`
`due to difficulty in operating under the current COVID-19 pandemic conditions,
`
`Registrant now is immediately ready to move forward promptly to complete the
`
`remaining discovery in this matter, in a manner as expeditious and reasonable
`
`as current conditions permit.
`
`Therefore, Registrant respectfully requests that Petitioner's
`
`Current Motion be denied, and that the TTAB order the remaining discovery to
`
`be completed in an expedited, but reasonable, manner.
`
`1939sancmot3.rsp 052620
`
`- 2 -
`
`

`Respectfully submitted,
`
`LAW OFFICES OF MITCHELL P. NOVICK
`
`By: /mitchell p. novick/
` MITCHELL P. NOVICK, ESQ.
` Reg. No. 30,305
`
` Counsel for Registrant
` NATIONWIDE AUTO LEASE LLC
` 623 Eagle Rock Avenue, Suite 407
` West Orange, NJ 07052
` Phone: 973/744-5150
` Fax: 973/744-2227
` Email: mnovick@mitchellnovick.com
`
`Thank you.
`
`Dated: May 26, 2020
`
`MPN/s
`2068-1939
`
`1939sancmot3.rsp 052620
`
`- 3 -
`
`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing
`
`PRELIMINARY RESPONSE TO PETITIONER'S THIRD MOTION FOR JUDGMENT AS A SANCTION
`
`has been served upon the attorney of record for Petitioner by e-mail to the
`
`following address, on May 26, 2020:
`
`Martin Miller, Esq.
`PORTER, WRIGHT, MORRIS & ARTHUR LLP
`Counsel for Petitioner
`41 South High Street
`Suite 2900
`Columbus, OH 43215
`E-mail: mmiller@porterwright.com
`
` /mitchell p. novick/
` MITCHELL P. NOVICK
`
`Dated: May 26, 2020
`
`1939sancmot3.rsp 052620
`
`- 4 -
`
`

`EXHIBIT A
`EXHIBIT A
`
`

`EXHIBIT B
`EXHIBIT B
`
`

`Subject: Re: Nationwide Mutual Insurance Company vs. Nationwide Auto Lease - Cancellation No.
`92067046 (2068-1939)
`From: "Mitchell P. Novick" <mnovick@mitchellnovick.com>
`Date: 5/26/20, 10:55 PM
`To: "Miller, Martin J." <MMiller@porterwright.com>
`CC: "Gerken, Jason T." <JGerken@porterwright.com>
`
`Hi, Martin.
`
`Attached is Registrant's Third Response to Petitioner's First Document Request.
`
`Also attached are some documents (numbered 66-89) which were previously produced, but were
`inadvertently omitted in the set of numbered documents sent to you yesterday. When
`originally produced, this set was labeled "02", but because we sent you yesterday a set
`with that label, this attached set is labeled "02a".
`
`Regarding Mr. Shmalo's deposition, Mr. Shmalo is available to be deposed on a mutually
`agreeable date which can been as soon as possible. However, due to the current dangerous
`and highly infectious COVID-19 pandemic conditions, we do not believe it appropriate or
`fair for a court stenographer to be physically present in Mr. Shmalo's location. Thus, we
`are willing to agree to another reasonable procedure for the deposition to be recorded by
`a court reporter or otherwise. Do you have any proposals?
`
`Please contact me to discuss or with any questions that you may have. Thank you.
`
`Regards,
`Mitchell
`
`Mitchell P. Novick wrote on 5/25/20 11:49 PM:
`Hi, Martin.
`
`Attached is a set of the documents previously produced by Registrant in this matter, in
`the same order as before but which have been consecutively numbered (1-65).
`Registrant's supplemental response to Petitioner's document request will be sent to you
`tomorrow.
`
`Please contact me if you have any questions. Thank you.
`
`Regards,
`Mitchell
`
`--
`Mitchell P. Novick
`-----------------------------------------
`Law Offices Of Mitchell P. Novick
`623 Eagle Rock Avenue | Suite 407 | West Orange, NJ 07052
`tel 973-744-5150 | fax 973-744-2227
`mnovick@mitchellnovick.com | www.mitchellnovick.com
`
`Attachments:
`
`1939docs3_rsp.pdf
`1939-docprod-02a-numbered_tmk.pdf
`
`1 of 1
`
`60.7 KB
`3.5 MB
`
`

`EXHIBIT C
`EXHIBIT C
`
`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92067046
`
`REGISTRANT'S THIRD RESPONSE TO
`PETITIONER'S FIRST REQUEST
`FOR PRODUCTION OF DOCUMENTS TO
`REGISTRANT
`
`In the Matter of Registration
`Registration No. 5,005,305
`Registered: July 19, 2016
`Mark: NATIONWIDE AUTO LEASE
`
`NATIONWIDE MUTUAL INSURANCE COMPANY,
`
`Petitioner,
`
`-vs-
`
`NATIONWIDE AUTO LEASE LLC,
`
`Registrant.
`
`TO: Martin J. Miller, Esq.
` Porter Wright Morris & Arthur LLP
` Counsel for Petitioner
` 250 E. Fifth Street, Suite 2200
` Cincinnati, Ohio 45202
` 513/369-4250
` mmiller@porterwright.com
`
`Registrant, NATIONWIDE AUTO LEASE LLC (“Registrant”), by and through its
`
`attorneys, Law Offices Of Mitchell P. Novick, hereby responds to the
`
`Production Requests from Petitioner, NATIONWIDE MUTUAL INSURANCE COMPANY
`
`(“Petitioner”).
`
`GENERAL STATEMENT
`
`This Response replaces all previous responses to Petitioner's First
`
`Request For Production Of Documents To Registrant.
`
`Registrant's responses set forth herein are based upon its knowledge of
`
`facts and information presently available.
`
`1939docs3.rsp 052620
`
`- 1 -
`
`

`Respondent's responses set forth herein does not constitute an admission
`
`of relevance, materiality, or admissibility of the subject matter or any
`
`documents referred to therein produced.
`
`REQUESTS FOR PRODUCTION
`
`1.
`
`See enclosed documents numbered 1-89. Searching was conducted both
`
`through electronically-maintained records available at Respondent's
`
`business location, 616 NE 195th Street, Miami, Florida 33179,
`
`(“Respondent's Business Location”) and on internet by Elie Shmalo
`
`(“Shmalo”) and Liad Maccabi (“Maccabi”), both members of Respondent, on
`
`about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`2.
`
`See enclosed documents numbered 1-89. Searching was conducted both
`
`through electronically-maintained records available at Respondent's
`
`Business Location and on internet by Shmalo and Maccabi on about
`
`07/02/2019, 10/04/2019, and 04/22/2020.
`
`3.
`
`See enclosed documents numbered 12-27, 78-80. Searching was conducted
`
`both through electronically-maintained records available at Respondent's
`
`Business Location and on internet by Shmalo and Maccabi on about
`
`07/02/2019, 10/04/2019, and 04/22/2020.
`
`4.
`
`See enclosed documents numbered 1-7, 66-70, 78-80. Searching was
`
`conducted both through electronically-maintained records available at
`
`Respondent's Business Location and on internet by Shmalo and Maccabi on
`
`about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`5.
`
`See enclosed documents numbered 1-7, 66-70, 78-80. Searching was
`
`conducted both through electronically-maintained records available at
`
`1939docs3.rsp 052620
`
`- 2 -
`
`

`Respondent's Business Location and on internet by Shmalo and Maccabi on
`
`about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`6.
`
`See enclosed documents numbered 1-11, 28-64, 66-72, 75, 81-89.
`
`Searching was conducted both through electronically-maintained records
`
`available at Respondent's Business Location and on internet by Shmalo
`
`and Maccabi on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`7.
`
`See enclosed documents numbered 1-11, 28-64, 66-72, 75, 81-89.
`
`Searching was conducted both through electronically-maintained records
`
`available at Respondent's Business Location and on internet by Shmalo
`
`and Maccabi on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`8.
`
`See enclosed documents numbered 1-11, 28-64, 66-72, 75, 81-89.
`
`Searching was conducted both through electronically-maintained records
`
`available at Respondent's Business Location and on internet by Shmalo
`
`and Maccabi on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`9.
`
`See enclosed documents numbered 1-7, 13-19, 26-27, 66-70, 78-80. Also
`
`see the file for United States trademark registration application Serial
`
`No. 86/725,538, available on the United States Patent and Trademark
`
`Office public website, WWW.USPTO.GOV. Searching was conducted both
`
`through electronically-maintained records available at Respondent's
`
`Business Location and on internet by Shmalo and Maccabi on about
`
`07/02/2019, 10/04/2019, and 04/22/2020.
`
`10.
`
`None. Searching was conducted both through electronically-maintained
`
`records available at Respondent's Business Location and on internet by
`
`Shmalo and Maccabi on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`1939docs3.rsp 052620
`
`- 3 -
`
`

`11.
`
`See enclosed documents numbered 1-11, 28-64, 66-76, 81-89. Searching
`
`was conducted both through electronically-maintained records available
`
`at Respondent's Business Location and on internet by Shmalo and Maccabi
`
`on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`12.
`
`See enclosed documents numbered 1-11, 28-64, 66-76, 81-89. Searching
`
`was conducted both through electronically-maintained records available
`
`at Respondent's Business Location and on internet by Shmalo and Maccabi
`
`on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`13.
`
`See enclosed documents numbered 1-11, 26-64, 66-76, 78-89. Searching
`
`was conducted both through electronically-maintained records available
`
`at Respondent's Business Location and on internet by Shmalo and Maccabi
`
`on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`14.
`
`See enclosed documents numbered 1-11, 28-64, 66-76, 81-89. Searching
`
`was conducted both through electronically-maintained records available
`
`at Respondent's Business Location and on internet by Shmalo and Maccabi
`
`on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`15.
`
`None. Searching was conducted both through electronically-maintained
`
`records available at Respondent's Business Location and on internet by
`
`Shmalo and Maccabi on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`16.
`
`None. Searching was conducted both through electronically-maintained
`
`records available at Respondent's Business Location and on internet by
`
`Shmalo and Maccabi on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`17.
`
`None. Searching was conducted both through electronically-maintained
`
`records available at Respondent's Business Location and on internet by
`
`Shmalo and Maccabi on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`1939docs3.rsp 052620
`
`- 4 -
`
`

`18.
`
`None. Searching was conducted both through electronically-maintained
`
`records available at Respondent's Business Location and on internet by
`
`Shmalo and Maccabi on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`19.
`
`None. Searching was conducted both through electronically-maintained
`
`records available at Respondent's Business Location and on internet by
`
`Shmalo and Maccabi on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`20.
`
`None. Searching was conducted both through electronically-maintained
`
`records available at Respondent's Business Location and on internet by
`
`Shmalo and Maccabi on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`21.
`
`None. Searching was conducted both through electronically-maintained
`
`records available at Respondent's Business Location and on internet by
`
`Shmalo and Maccabi on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`22.
`
`See enclosed documents numbered 65, 77. Searching was conducted both
`
`through electronically-maintained records available at Respondent's
`
`Business Location and on internet by Shmalo and Maccabi on about
`
`07/02/2019, 10/04/2019, and 04/22/2020.
`
`23.
`
`See enclosed documents numbered 1-11, 28-64, 66-76, 78-89. Searching
`
`was conducted both through electronically-maintained records available
`
`at Respondent's Business Location and on internet by Shmalo and Maccabi
`
`on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`24.
`
`See enclosed documents numbered 1-11, 28-64, 66-76, 78-89. Searching
`
`was conducted both through electronically-maintained records available
`
`at Respondent's Business Location and on internet by Shmalo and Maccabi
`
`on about 07/02/2019, 10/04/2019, and 04/22/2020.
`
`1939docs3.rsp 052620
`
`- 5 -
`
`

`CERTIFICATION
`
`I hereby certify, under penalty of perjury, that the above responses are
`
`true.
`
` /elie shmalo/
`ELIE SHMALO, Member
`Nationwide Auto Lease LLC
`
`Dated: May 26, 2020
`
`Dated: May 26, 2020
`
`Respectfully submitted,
`
`LAW OFFICES OF MITCHELL P. NOVICK
`Counsel for Registrant
`
`By:
`
` /mitchell p. novick/
`MITCHELL P. NOVICK, ESQ.
`
`623 Eagle Rock Avenue
`Suite 407
`West Orange, New Jersey 07052
`Telephone: 973/744-5150
`Facsimile: 973/744-2227
`
`1939docs3.rsp 052620
`
`- 6 -
`
`

`CERTIFICATE OF SERVICE
`
`I, Mitchell P. Novick, do hereby certify that on May 26, 2020, I e-
`
`mailed the foregoing REGISTRANT'S THIRD RESPONSE TO PETITIONER'S FIRST REQUEST
`
`FOR PRODUCTION OF DOCUMENTS TO REGISTRANT to the following:
`
`Martin J. Miller, Esq.
`Porter Wright Morris & Arthur LLP
`Counsel for Petitioner
`250 E. Fifth Street, Suite 2200
`Cincinnati, Ohio 45202
`e-mail: mmiller@porterwright.com.
`
` /mitchell p. novick/
` MITCHELL P. NOVICK
`
`1939docs3.rsp 052620
`
`- 7 -
`
`

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