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`PLEASE DELIVER As SOON As P0ss1BLE T0:
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`15712738950
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`FAX NO.
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`15712738950
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`From:
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`Massara, Cindy (Phila)
`
`Date:
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`06/02/2015 3:23 PM ET
`
`Matter:
`
`00172940
`
`If you do not receive all the pages, please call 215.665.8500.
`
`Cynthia M. Massara
`Legal Administrative Assistant
`Ballard Spahr LLP
`1735 Market Street, 51st Floor
`Philadelphia, PA 19103-7599
`Direct 215-864-8277
`Fax:
`215-864-8999
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`Please Note: The information contained in this facsimile message is privileged and confidential and is intended only for
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`rm. :>.r5.66s.8§oo
`I-‘AX 113.861.3999
`\\.'\5"\\’,h.’i H3 Tl’! KPI)l1 l" rem
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`June 2, 20l5
`
`Tyler Marundola
`Tel: 215.864.8628
`Fax: 215.864.8999
`mzxrandoia1@haiIardspahr, corn
`
`ByFc1x (571-2 73-8950)
`
`Office of the Commissioner for Trademarks
`
`Petitions Department
`
`Re:
`
`Opgosition to Petition to Director. Serial Number 85737435
`
`Dear Sir/Madam:
`
`Enclosed for filing is LVGV, LLC’s Memorandum ofLaw in Opposition to Applicaufs Petition for
`Suspension ofthe Rules and For Extension of Time to File Reply Briefs Filed May 20, 2015. LVGV
`respectfully requests that this document be filed in place of the document attached to LVGV’s
`June l, 2015 filing under Serial Number 85737435, and considered accordingly. The originally-filed
`document was filed in error, and LVGV requests that it be disregarded.
`
`lfthere are any additional Fees associated with the substitute memorandum of law, LVGV asks that
`they be charged to Ballard Spahr’s USPTO account, Number 020755.
`
`Very truly yours
`
`//é<//
`
`T ~ r Marandola
`
`TM/cmm
`Attachments
`
`DMEAST #2 M04692 vi
`
`| LosA.ngeics
`i Las Vegas
`| Bethesda 1 Denver
`Atlanta | Baltimore
`San Diego ; Washington, DC | Wilmington |
`\W.'w.baliardspahr.cor11
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`| New Jersey | New York 1 Hiiladelpiiia
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`| Phoenix | SaltI,al~:e City 1
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`LVGV, LLC,
`
`Opposer,
`
`v.
`
`Empire Resorts, Inc,
`
`Applicant.
`
`:
`:
`
`Opposition Nos.:
`
`91215208 (parent)
`91215212
`
`91215216
`91215246
`91215247
`91215415
`
`MEMORANDUM OF LAW IN OPPOSITION TO
`APPLlCANT’S PETITION FOR SUSPENSION OF THE RULES
`
`AND FOR EXTENSION OF TIME TO FILE REPLY BRIEFS FILED MAY 20, 20151
`
`Opposer, LVGV, LLC (“Opposer” or “LVGV”), respectfully submits this
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`memorandum oflaw in opposition to Applicant, Empire Resort, Inc.’s (“App1icant” or
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`"Emplre”) Petition for Suspension of the Rules and for Extension ofTime to File Reply Briefs.
`
`Empire’s petition effectively concedes what LVGV has already explained twice in
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`these proceedings: a motion asking the Board to suspend the rules is procedurally improper
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`because it seeks relief that the Board is not authorized to grant. (May 20, 2015 Petition, at 5 n.l.)
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`Rather than withdraw its improper motion, Empire’s petition asks the Director to treat its motion
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`addressed to the Board as an actual petition with the Director and decide it as though it were
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`properly tiled. But Empire’s untimely request made almost three weeks past the deadline for a
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`petition from the Board’s April 1, 2015 decision — does not change the nature ofits motion,
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`which was improperly directed to the Board and tellingly fails to even address, let alone satisfy,
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`LVGV respectfully asks the Director to disregard its previous memorandum oflaw in
`opposition to Empire's petition, docketed June 1, 2015. That document was filed in
`error.
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`the stringent legal standard for a petition under 37 C.F.R. § 2.14-6{a)(5) or 2.148. Additionally,
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`Empire’s motion necessarily fails on the merits because E1'npi1‘e’s only stated justification for a
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`suspension ofthe rules — a docketing failure — is indisputably not an extraordinary situation
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`under the governing legal precedence. Accordingly, En1pire’s petition seeking to treat its earlier
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`motion with the Board as a proper petition should be denied.2
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`BACKGROUND
`
`Empire seeks to register an “M” logo and “Me.” logo for goods and services
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`emanating from a destination casino resort. LVGV, the owner ofa destination casino resort, is
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`the owner of a number of federal registrations for its “M” mark and logo and its “M IS FOR
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`ME" slogan, which LVGV uses to designate the source of the goods and services emanating
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`from its destination casino resort.
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`(1E_,g_., D1-ct. 1, Opp. 91215208, at 1111 14-15, 19.)
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`Empire filed individual intent-to-use applications for its “M” and “Me.” logos in
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`three separate classes for a total of six applications. Given the cornmon issues of law and fact
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`across the six applications, all of which are for goods and services emanating from a destination
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`casino resort, LVGV moved to consolidate the proceedings, and the Board granted its request on
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`April 1, 2015.
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`(Diet. 5, Opp. 91215208; Dkt. 26, Opp. 91215208.) Empire tiled a motion for
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`reconsideration ofthat decision on May 1. 2015. (Dkt. 27. Opp. 91215208.)
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`Two months after LVGV moved for consolidation, Empire filed six motions for
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`judgment on the pleadings, which the Board characterized as “largely redundant,” while
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`observing that “large swaths ofeach motion are repeated verbatim." (Dkt. 26, Opp. 91215208.)
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`At the same time the Board consolidated the proceedings. it denied all six motions, recognizing
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`that it had no authority to “weigh any evidence” and that “at a minimum, genuine issues as to the
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`2
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`LVGV takes no position on Empire’s separate request for a 30-day extension of time to
`tile reply briefs in further support of its three May 1, 2015 motions.
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`strength ofthe marks and their commercial impressions, the similarities of the marks, and the
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`relatedness ofthe goods and services” precluded judgment on the pleadings. (Q) Empire filed a
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`motion for reconsideratiorl ofthat decision on May 1, 2015 as well. (Dkt. 28, Opp. 91215208.)
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`Empire also filed a third motion on May 1, 2015, directed to the Board, that it
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`styled a “Motion for Suspension of the Rules and for Extended Time to Petition the Director
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`Regarding Procedural Irnproprieties Respecting the Board’s 1 April 2015 Decision Denying
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`Empire’s Motion for Judgment/Partial Judgment on the Pleadings.” (Dkt. 29, Opp. 91215208.)
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`The motion did not identify the “procedural improprieties” that Empire wished to raise with the
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`Director. Empire’s request for additional time was based on its failure to properly docket the 30-
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`day deadline for a petition to the Director from an interlocutory order. See 37 C.F.R. §
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`2.l46(e)(2). Rather than the correct deadline, Empire’s counsel asserted that his “docketing
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`personnel” mistakenly inputted a 60-day time limit. Thus, despite having already filed two
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`motions for reconsideration concerning the same order, Empire asked for 30 extra days to tile a
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`petition to the Director.
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`LVGV filed oppositions to all three motions within the fifieen day period
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`prescribed by the Rules. 37 C.F.R. 2.2l7(a_).
`
`In opposing Empire’s motion to suspend the rules,
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`LVGV pointed out that the Board lacked the authority to suspend the rule imposing a 30 day
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`deadline for petitions to the Director from an interlocutory order of the Board. 37 CPR. §
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`2.l46(e)(2); (Dkt. 32, Opp. 91215208, at 2-3.) Empire now concedes that LVGV is correct.
`
`What Empire fails to note is that the parties have been here before. Earlier in this
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`opposition, on November 5, 2014, Empire tiled a motion with the Board asking for it to suspend
`
`the rules. fig, Dkt. 19, Opp. 91215208.) As LVGV explained at the time, “Rule 2.148 does not
`
`grant authority to the Board to suspend the rules,” and thus Empire’s motion sought “relief that
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`the Board is not authorized to grant.” (Dkt. 20, Opp. 91215208, at 1.) Thus, Empire was on
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`notice long before its May 1, 2015 motion that asking the Board to suspend the Trademark Rules
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`of‘ Practice is improper.
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`it did so a second time a.nyway.
`
`ARGUMENT
`
`Empirc’s petition offers no reason or legal authority for convening its improper
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`motion to the Board into a petition to the Director. Instead, the entirety of its argument in favor
`
`ofthis unusual relief is contained in a footnote stating that Empire’s counsel now “realiz[es]”
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`that its motion “should have been filed as a petition." That is insufficient.
`
`First, Empire’s realization comes too late. The Board rendered its decision on
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`April 1, 2015, and thus Empire’s deadline for filing a petition with the Director was May 1,
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`2015. 37 C.F.R. §2.l46(e)(2).
`
`Instead of filing such a petition, on the last day ofthe deadline,
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`Empire improperly asked the Board to double the time for filing a petition. Now, almost two
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`months after the Board’s decision, and three weeks past the deadline, Empire has admitted its
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`error and directed its request for more time to the Director. And Empire has still not explained
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`what “procedural impropriety” would warrant the extraordinary relief of a petition to the
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`Director or why it could not have addressed the issue (whatever it is) in one or both of its
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`motions for reconsideration. Empire’s seemingly endless procedural machinations continue to
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`prejudice LVGV by multiplying the costs of this proceeding and denying LVGV an opportunity
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`to have its opposition evaluated on the merits.
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`Second, Empirt-:’s motion, apart from citing the Rules relating to petitions to the
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`Director, fails to state or apply the proper standard for extending the time to file a petition. As
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`explained in the Trademark Manual ofllxamining Procedure, the time limits for petitioning the
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`Director are “strictly enforced." TMEP § 1705.04. If additional time for filing the petition is
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`necessary, the petitioner must show that “extraordinary circumstances caused the delay in filing
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`the petition.” _I£i_. (citing 37 C.F.R. § 2.l46(a)(5) and 2.148). Empire does not even cite this
`
`applicable legal standard, let alone argue that the facts and circumstances here satisfy it.
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`Third, the “cioel<eting error” that forms the basis for Empire’s extension request is
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`not an “extraordinary circumstancefl” as contemplated by the Rule because the controlling
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`authority is squarely to the contrary. In in re Universal Card Grp., 25 U.S.P.Q.2d I 157 (Comm’r
`
`Pat. I992), the Director held that counsel’s “failure to properly docket” a deadline “does not
`
`constitute an extraordinary situation as contemplated by Trademark Rules 2. l46(a)(5) and
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`2.148.” Thus, Empire’s docketing error is likewise not an extraordinary circumstance and cannot
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`support Empire’s request to suspend the rules to permit it to file an untimely petition to the
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`Director concerning alleged and undisclosed procedural errors in the Board’s decision denying
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`Empire’s motions forjudgment on the pleadings. Accordingly, LVGV respectfully submits that
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`Empire’s Petition seeking to treat its earlier motion with the Board as a proper petition should be
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`denied.
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`CONCLUSION
`
`For the foregoing reasons, LVGV respectfully requests that the Director deny
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`Empire’s request to treat its improper motion to the Board as a petition to the Director.
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`Respectfully submitted,
`
`Date: June 2, 2015
`
`By: fHara K. Jacobs/
`Hara K. Jacobs
`
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`Daniel B. Englandcr
`BALLARD SPAHR LLP
`1735 Market Street, 51" F1.
`Philadelphia, PA 19103
`215-665-8500
`
`
`;'ac»0bsl"1@b~a~1lia1'cis 7al1r.c0n1
`mgmdwglmmrfimhmm
`
`ATTORNEYS FOR OPPOSER
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`LVGV, LLC,
`
`Opposer,
`
`V.
`
`Empire Resorts, Inc.,
`
`Applicant.
`
`:
`:
`
`Opposition Nos:
`
`91215208 (Parent)
`91215215
`
`91215216
`91215246
`
`91215247
`91215415
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that 21 copy ofOpposer’s Memorandum of Law
`
`in Opposition to Applieant’s Petition for Suspension ofthe Rules and for Extension ofTime to
`
`File Reply Briefs was served by e—mail on June 2, 2015, upon Applicanfs counsel:
`
`Charles N. Quinn
`FOX ROTHSCHILD LLP
`
`2000 Market Street, Floor 20
`Philadelphia, PA 19103-3222
`cquinn@foxrothschild_com
`clmcgregor@foxrothschilcl.com
`cescl1@foxrothschi1d.com
`ipdooket@foxrothsehild.eom
`
`By:
`
`/1“y ler R. Marandolaf
`Tyler R. Marandola
`
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