ESTTA Tracking number:
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`ESTTA1325728
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`Filing date:
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`11/30/2023
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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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`92080263
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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
`Meshki Pty Limited
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`G. WARREN BLEEKER
`LEWIS ROCA ROTHGERBER CHRISTIE LLP
`P.O. BOX 29001
`GLENDALE, CA 91203-9001
`UNITED STATES
`Primary email: pto@lewisroca.com
`Secondary email(s): wbleeker@lewisroca.com, kykim@lewisroca.com,
`lbolter@lewisroca.com
`626-795-9900
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`Opposition/Response to Motion
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`Karen Y. Kim
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`kykim@lewisroca.com, wbleeker@lewisroca.com, lbolter@lewisroca.com,
`dplumley@lewisroca.com
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`/Karen Y. Kim/
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`11/30/2023
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`Meshki - RESPONDENTS Opposition to Motion to Compel -
`11-30-23.pdf(216602 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`TRADEMARK
`Docket No. 311053-00001
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`The Men’s Wearhouse, LLC,
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`Petitioner,
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`v.
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`Meshki Pty Limited,
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`Respondent.
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`Cancellation No. 92080263
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`Mark: M (and Design)
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`RESPONDENT’S OPPOSITION TO PETITIONER’S MOTION TO COMPEL
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`DISCOVERY REPONSES
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`Respondent Meshki Pty Limited (“Meshki”) hereby opposes and responds to Petitioner
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`The Men’s Wearhouse, LLC’s (“TMW”) Motion to Compel Discovery Responses, which was
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`untimely filed over a month before Respondent’s December 9, 2023, deadline to provide discovery
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`responses.
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`I.
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`BACKGROUND
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`Petitioner seeks to capitalize on the parties’ settlement negotiations in an attempt to paint
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`Respondent as unresponsive to Petitioner’s discovery requests. To the contrary, Meshki is
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`diligently working with its newly appointed counsel to timely serve its responses to Petitioner’s
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`discovery requests. Indeed, Respondent has served both its initial disclosures and a preliminary
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`response to Petitioner’s discovery requests. Respondent is actively collecting responsive
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`documents and preparing a large substantive production, which it intends to produce on or before
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`the December 9, 2023, deadline.
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`Respondent’s deadline to submit substantive responses to Petitioner’s discovery requests
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`is currently December 9, 2023, at the very earliest. The Board suspended all proceedings starting
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`September 11, 2023, including Respondent’s September 12, 2023, deadline to respond to
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`Petitioner’s discovery requests. Proceedings were resumed on November 8, 2023, pursuant to the
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`Board’s order. As the September discovery deadline was one day after the proceedings were
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`suspended, it follows that the new deadline would be November 9, 2023. However, when the Board
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`123088954.1
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`Cancellation No. 92080263
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`resumed these proceedings, it simultaneously granted Respondent’s Motion to Extend for thirty
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`days—therefore extending the discovery deadline to December 9, 2023.
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`Petitioner TMW attempts to mischaracterize the deadlines and extensions associated with
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`this proceeding. A brief review of this Board’s orders amply demonstrate that Petitioner has no
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`basis for its Motion to Compel.
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`• On August 9, 2023, the Board granted a consent motion to extend all deadlines,
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`including initial disclosures, setting the initial disclosure deadline on September 12,
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`2023. 21 TTABVUE 1.
`• On September 11, 2023, previous counsel for Respondent filed a request to withdraw
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`as Respondent’s counsel of record in this proceeding. 22 TTABVUE 1–2.
`• On September 13, 2023, the Board suspended all proceedings to permit Respondent
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`sufficient time to appoint new counsel. 23 TTABVUE 1–2.
`• On October 13, 2023, counsel for Respondent timely filed a Notice of Appearance
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`within thirty days of the Board’s September 13 order. 24 TTABVUE 1–2. Respondent
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`also filed a non-consented Motion to Extend time for thirty days so that Respondent’s
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`newly appointed counsel could review the matter. 25 TTABVUE 1–2.
`• On November 8, 2023, the Board granted Respondent’s October 13 Motion to Extend,
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`resuming proceedings and resetting all trial dates, including setting the deadline for
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`initial disclosures on December 8, 2023. 27 TTABVUE 1–3.
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`As of the date of Petitioner’s Motion to Compel, only two days had passed since the Board
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`resumed proceedings and granted Respondent’s October 13 Motion to Extend. Tellingly, Petitioner
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`does not cite to, respond to, or even mention the Board’s order granting Respondent’s Motion to
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`Extend.
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`II.
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`ARGUMENT
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`A.
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`Respondent’s Substantive Responses Are Not Due Until December 9, 2023
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`As explained above, the Board suspended all proceedings on September 13, 2023 to permit
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`Respondent sufficient time to appoint new counsel. 23 TTABVUE 1–2. The Board did not
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`Cancellation No. 92080263
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`subsequently resume these proceedings until its November 8, 2023 Order granting Respondent’s
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`Motion to Extend.1 27 TTABVUE 1–3.
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`Board proceedings are deemed suspended as of the filing of the relevant motion. See, e.g.,
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`Jain v. Ramparts Inc., 49 USPQ2d 1429, 1430 (TTAB 1998); Hollywood Casino LLC v. Chateau
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`Celeste, Inc., 116 U.S.P.Q.2d 1988, FN6 (T.T.A.B. 2015); TMEP 510.03(a). Here, Respondent’s
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`withdrawal of counsel served as the relevant motion that causing the Board to suspend this
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`proceeding. See 22 TTABVUE 1–2. As such, this proceeding was suspended beginning
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`September 11, 2023, and
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`this proceeding did not resume until November 8, 2023.
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`See 27 TTABVUE 1–2.
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`Petitioner readily admits that, prior to the suspension, “Meshki’s substantive discovery
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`response were due on September 12.” 28 TTABVUE 6. This September 12, 2023, discovery
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`deadline therefore unambiguously falls within the suspension period instituted by the Board’s
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`order.
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`A Board order suspending proceedings as a result of withdrawal of counsel includes the
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`suspension of discovery response deadlines. See Designtech Int'l, Inc, No. 29, 2001 WL 1345049,
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`at *2 (Oct. 29, 2001) (“The [suspension] order, once issued by the Board, operated retroactively
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`to suspend the proceeding as of the date the request to withdraw was filed . . . and to effectively
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`suspend all existing time frames, including the time for applicant to file an answer and to respond
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`to opposer's discovery requests.”). As such, Respondent’s original September 12, 2023, deadline
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`to respond to Petitioner’s discovery requests was suspended pending resumption of these
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`proceedings.
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`As the proceedings were not resumed until November 8, 2023, Respondent’s substantive
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`responses cannot possibly have been due by September 12 or October 12, as alternatively argued
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`by Petitioner. See 28 TTABVUE 6–7. Instead, if the Board’s order had simply resumed the
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`proceedings, the earliest deadline for Respondent’s discovery requests would be one day after the
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`1 Petitioner’s position that proceedings were suspended “for thirty days” is unsupported by the
`Board’s September 13, 2023 Order, which stated that “proceedings are suspended, and Respondent
`is allowed until thirty days from the date of this order to appoint new counsel.” Respondent’s
`thirty-day deadline to appoint new counsel is not equivalent to a thirty-day suspension period—as
`is evident by the Board’s resumption of the proceedings nearly two months later on November 8,
`2023.
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`Cancellation No. 92080263
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`proceedings resumed—as the responses were originally due on September 12, one day after the
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`proceedings were suspended beginning September 11.
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`Of course, the Board’s order did not merely resume the proceedings. Instead, the Board
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`granted Respondent’s October 13, 2023, Motion to Extend for thirty days: “Respondent’s motion,
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`filed October 13, 2023, to extend disclosure, discovery, and trial dates is granted as conceded.”
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`27 TTABVUE 1. The order extended all trial dates by thirty days, including the deadline for initial
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`disclosures, deadline for expert disclosures, and the close of discovery. Id. at 1–2.
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`As such, Respondent’s deadline to respond to Petitioner’s discovery requests is
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`December 9, 2023.
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`This is consistent with the remainder of the trial dates set by the Board in the November 8
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`order—Initial Disclosures (which are typically due before substantive discovery responses) are not
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`due until December 8, 2023. And, discovery closes May 6, 2023, giving Petitioner half a year to
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`continue pursuing discovery—resulting in no prejudice to Petitioner sufficient to support a motion
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`to compel. Petitioner’s Motion to Compel should accordingly be denied.
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`B.
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`Petitioner’s Motion to Compel Is Untimely
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`Responses to interrogatories, requests for production of documents and things, and requests
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`for admission must be served within thirty days after the date of service of the request. Fed. R. Civ.
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`P. 33(b)(2), 34(b)(2)(A); 37 C.F.R. § 2.120(a)(3). The time to respond may be extended upon
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`stipulation of the parties or order of the Board. 37 C.F.R. § 2.120(a)(3). If any party fails to answer
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`any interrogatory or produce any document or thing by the deadline, the propounding party may
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`move to compel a response. 37 C.F.R. § 2.120(f).
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`As a result of stipulated extensions of time, suspension of the proceedings, and orders of
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`the Board, Respondent’s substantive answers to Petitioner’s discovery requests are not due until at
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`least December 9, 2023. As such, Respondent has not “failed” to answer any interrogatory or
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`produce any document or thing, as it is not required to do so until the deadline. As 37 C.F.R.
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`§ 2.120(f) accordingly does not authorize Petitioner to file the subject Motion to Compel,
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`Petitioner’s Motion to Compel is untimely and should be denied.
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`Cancellation No. 92080263
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`III. CONCLUSION
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`For these reasons, Meshki requests that the Board deny Petitioner’s Motion to Compel.
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`Date: November 30, 2023
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`Respectfully submitted,
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`LEWIS ROCA ROTHGERBER
`CHRISTIE LLP
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` By /Karen Y. Kim/
`Karen Y. Kim
`G. Warren Bleeker
`Attorneys for Respondent
`P.O. Box 29001
`Glendale, CA 91209-9001
`626/795-9900
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`KYK/llb
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`Cancellation No. 92080263
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`CERTIFICATE OF SERVICE BY ELECTRONIC MAIL
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`I
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`hereby
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`certify
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`that
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`a
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`true
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`and
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`complete
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`copy
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`of
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`the
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`foregoing
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`RESPONDENT’S INITIAL DISCLOSURES is being served via email addressed to:
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`Donna F. Schmitt
`Melanie E. King
`ARMSTRONG TEASDALE LLP
`7700 Forsyth Blvd., Suite 1800
`St. Louis, MO 63105
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`Attorneys for Petitioner
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`At the following email addresses:
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`dschmitt@atllp.com; meking@atllp.com; mvandertuig@atllp.com; iptm@atllp.com
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`Date: November 30, 2023
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` /Linda Bolter/
`Linda Bolter
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`-6-
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