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`us. Patent 3. TMOfc/TM Man Hep! D1
`IN THE UNITED STATES PATENT AND TRADEMARK .. - -.,.-.
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`o7-09-zoos
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`. #73
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`}
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`1
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`‘
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`SOBE NEWS, INC.,
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`Opposer,
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`v.
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`SOUTH BEACH COFFEE COMPANY
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`Applicant.
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`/
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`Opposition No. 91152675
`Mark: OCEAN DRIVE
`Application No. 76/308,090
`Published: January 22, 2002
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`OPPOSER’S BRIEF IN OPPOSITION TO KLUGER, PERETZ, KAPLAN & BERLIN,
`P.L’S MOTION TO WITHDRAW AS COUNSEL FOR
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`SOUTH BEACH COFFEE COMPANY
`COMES NOW Opposer, SoBe News, Inc. (“SoBe News”), by and through undersigned
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`counsel, and opposes Kluger, Peretz, Kaplan & Berlin, P.L’s Motion to Withdraw as Counsel for
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`South Beach Coffee Company (“KPKB’s Motion”).
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`By motion filed on June 11, 2003, Kluger, Peretz, Kaplan & Berlin, P.L. (“KPKB”) seeks
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`to withdraw as counsel for South Beach Coffee Company.
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`It is submitted that KPKB has failed
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`to meet the standard required for withdrawal pursuant to 37 C.F.R. §§ 2.19(b) and §10.40 and
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`such motion should be denied.
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`I.
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`KPKB HAS FAILED TO COMPLY WITH §10.40
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`“A request to withdraw must be based upon one of the grounds for mandatory or
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`permissive withdrawal listed in 37 C.F.R. §§10.40(b) and (c), and the practitioner must meet
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`certain requirements.” Netcore Technologies, Inc. v. Firstwave Technologies, Inc., 2001 TTAB
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`LEXIS 143 at *2 (2001). KPKB’s Motion is not based upon one of the grounds for mandatory
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`or permissive withdrawal
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`listed in 37 C.F.R. §§l0.40(b) and (c) nor has KPKB met the
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`requirements set forth in §10.40(a).
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`LOTT & FRIEDLAND, P.A. - 355 Alhambra Circle - Suite 1100 - Coral Gables, Florida 33134
`(305) 448-7089 ° (305) 446-6191 telecopier
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`

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`A.
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`KPKB’S MOTION FAILS TO STATE A GROUND FOR MANDATORY OR
`PERMISSIVE WITHDRAWAL
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`KPKB cites “irreconcilable differences” as its basis for withdrawal. See KPKB’s Motion
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`Opposition No. 91,152,675
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`at 1] 1.
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`Irreconcilable differences are not a basis for withdrawal provided for in 37 C.F.R.
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`§§l0.40 (b) or (c).
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`Section 116.05 of the Trademark Trial and Appeal Board Manual of
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`Procedure stats that “the request to withdraw must be based upon one of the grounds for
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`mandatory or permissive withdrawal listed in 37 C.F.R. §§l-.40 (b) and (c).”
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`37 C.F.R. §l0.40 (b) provides the bases for mandatory withdrawal:
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`A practitioner representing a client before the Office shall withdraw from
`employment if:
`(1) The practitioner knows or it is obvious that the client is bringing a legal
`action, commencing a proceeding before the Office, conducting a
`defense, or asserting a position in litigation or any proceeding pending
`before the Office, or is otherwise having steps taken for the client, merely
`for the purpose of harassing or maliciously injuring any person;
`(2) The practitioner knows or it is obvious that the practitioner’s continued
`employment will result in violation of a Disciplinary Rule;
`(3) The practitioners’ mental or physical condition renders it unreasonably
`difficult for the practitioner to carry out the employment effectively; or
`(4) The practitioner is discharged by the client.
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`37 C.F.R. §10.40(c) provides the bases for permissive withdrawal:
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`...a practitioner may not request permission to withdraw in matters pending
`before the Office unless such request or such withdrawal is because:
`(1) The petitioner’s client:
`(i)
`Insists upon presenting a claim or defense that is not warranted
`under existing law and cannot be supported by good faith
`argument for an extension, modification, or reversal of existing
`law;
`Personally seeks to pursue an illegal course of conduct;
`Insists that the practitioner pursue a course of conduct that is
`illegal or that is prohibited under a Disciplinary Rule;
`By other conduct renders it unreasonably difficult for the
`practitioner to carry out the employment effectively;
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`(ii)
`(iii)
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`(iv)
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`LOTT & FRIEDLAND, P.A. - 355 Alhambra Circle - Suite 1100 - Coral Gables, Florida 33134
`(305) 448-7089 ' (305)446-6191 telecopier
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`2
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`Opposition No. 91,152,675
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`(v)
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`(vi)
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`that the
`in a matter not pending before a tribunal,
`Insists,
`practitioner engage in conduct that is contrary to the judgment
`and advice of the practitioner but not prohibited under the
`Disciplinary Rule; or
`Has failed to pay one or more bills rendered by the practitioner
`for an unreasonably period of time or has failed to honor an
`agreement to pay a retainer in advance of the performance of
`legal services.
`(2) The practitioner’s continued employment is likely to result in violation of
`a Disciplinary Rule;
`(3) The practitioner’s inability to work with co-counsel indicates that the best
`interests of the client likely will be served by withdrawal;
`(4) The practitioner’s mental or physical condition renders it difficult for the
`practitioner to carry out the employment effectively;
`(5) The practitioner’s client knowingly and freely assents to termination of
`the employment; or
`(6) The practitioner believes in good faith, in a proceeding pending before the
`Office, that the Office will find the existence of other good cause for
`withdrawal.
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`Nowhere in 37 C.F.R. §§ 10.40 (b) and (c) are “irreconcilable differences” enumerated as a basis
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`for withdrawal. Further, “[a] request to withdraw, as with any motion before the Board, should
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`state with particularity the grounds therefor and include detailed facts in support of the requested
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`relief. See 37 C.F.R. §2.127(a).” Netcore Technologies, Inc., 2001 TTAB LEXIS at *2 -3.
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`KPKB has failed to state a basis for withdrawal and has failed to state with particularity the
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`grounds for its withdrawal, therefore, KPKB’s Motion should be denied.
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`B.
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`KPKB FAILED To MEET THE REQUIREMENTS or §10.40(a)
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`37 C.F.R. §10.40(a) requires a practitioner to take “reasonable steps to avoid
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`foreseeable prejudice to the rights of the client, including giving due notice to his or her client,
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`allowing time for employment of another practitioner, delivering to the client all papers and
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`LOTT & FRIEDLAND, P.A. - 355 Alhambra Circle - Suite 1100 - Coral Gables, Florida 33134
`(305) 448-7089 - (305)446-6191 telecopier
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`3
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`

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`property to which the client is entitled, and complying with applicable laws and rules.” Section
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`513.01 of the Trademark Trial and Appeal Board Manual of Procedure provides:
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`Opposition No. 91,152,675
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`A request for permission to withdraw should include ( 1) a specification of the
`basis for the request; (2) a statement that the practitioner has notified the
`client of his or desire to withdraw from employment, and has allowed time for
`employment of another practitioner;
`(3) a statement that all papers and
`property that relate to the proceeding and to which the client is entitled have
`been delivered to the client; (4) if any part of a fee paid in advance has not
`been earned, a statement that the unearned part has been refunded; and (5)
`proof of service of the request upon the client and upon every other party to
`the proceeding.
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`KPKB’s Motion does not include any of these requirements. As discussed above, KPKB
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`has failed to state an acceptable basis for withdrawal. KPKB’s Motion also fails to state it has
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`notified the client of its desire to withdraw from employment, that all papers and property that
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`relate to the proceeding and to which the client is entitled have been delivered to the client, and
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`that any unearned part of an advance fee has been refimded. Finally, KPKB’s Motion fails to
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`show proof of service of the request upon South Beach Coffee Company.
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`Section lO.40(a) also clearly states that “a practitioner shall not withdraw from
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`employment in a proceeding before the Office without permission from the Office.” See also 37
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`C.F.R. §2.l9(b)
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`(which allows for withdrawal “upon application and approval” by the
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`Commissioner).
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`In its motion, KPKB assumes its motion to withdraw will be granted and
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`requests, “all future correspondence, pleadings, etc” to be forwarded to the Applicant. See
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`KPKB’s Motion at 1] 3. As KPKB’s Motion has not been granted, KPKB remains counsel of
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`record. KPKB’s Motion should be denied because KPKB has failed to meet the requirements of
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`§10.40(a).
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`LOTT & FRIEDLAND, P.A. - 355 Alhambra Circle - Suite 1100 - Coral Gables, Florida 33134
`(305) 448-7089 - (305) 446-6191 telecopier
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`4
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`

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`Opposition No. 91,152,675
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`II.
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`SOBE NEWS WILL BE PREJUDICED BY ANY DELAY IN THESE
`PROCEEDINGS
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`Opposer has been prejudiced by Applicant’s conduct thus far in these proceedings. As
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`set forth in Opposer’s Motion to Compel and for Sanctions and to Extend Testimony Period,
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`filed with the Trademark Trial and Appeal Board (“Board”) on May 15, 2003 and in Opposer’s
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`brief in Opposition to Applicant’s First Motion to Enlarge Time to Respond to Opposer’s Motion
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`to Compel, filed with the Board on June 24, 2003, Opposer has been more than accommodating
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`to Applicant’s requests for extensions of time. As a result, Opposer was forced to take testimony
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`without Applicant’s complete discovery responses or requested documents. Opposer has also
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`been unable to secure a deposition of Applicant’s representative.
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`These proceedings are currently in the middle of App1icant’s testimony period. Any
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`further delays merely prolong the conclusion of these proceedings. Opposer has complied with
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`all trial dates and deadlines. Allowing KPKB to withdraw only allows Applicant to further
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`disregard deadlines it has ignored thus far in these proceedings. Opposer will be prejudiced by
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`any further delays. As a result, KPKB’s Motion should be denied.
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`Date: July 3, 2003
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`Iv..l)TT & Fm};nfA1§i),P.A.
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`
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`By: Leslie J. ott
`Florida Bar No. 1821 6
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`Abby R. Dritz
`Florida Bar No. 0591475
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`355 Alhambra Circle
`Suite 1 100
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`5
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`LOTT & FRIEDLAND, P.A. - 355 Alhambra Circle - Suite 1100 ' Coral Gables, Florida 33134
`(305) 448-7089 - (305)446-6191 telecopier
`
`

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`
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`Opposition No. 91,152,675
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`Coral Gables, Florida 33134
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`(305) 448-7089
`(3 05) 446-6191 telecopier
`
`Attorneys for Opposer
`SoBe News, Inc.
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that the foregoing OPPOSER’S BRIEF IN OPPOSITION TO
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`KLUGER, PERETZ, KAPLAN & BERLIN, P.L’S MOTION TO WITHDRAW AS
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`COUNSEL FOR SOUTH BEACH COFFEE COMPANY is being served upon Applicant by
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`delivering a true and correct copy of same to counsel for Applicant as follows:
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`Michael B. Chesal, Esq.
`Mirit Steiger, Esq.
`Kluger, Peretz, Kaplan & Berlin, P.L
`201 South Biscayne Blvd., Suite 1700
`Miami, Florida 3313 1
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`via United States First Class Mail, in a postage-[paid envelope, on J
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`‘/
`/./
`\
`'2
`\.
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`\~.’>__<::
`Leslie J. Lott
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`_
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`LOTT & FRIEDLAND, P.A. - 355 Alhambra Circle - Suite 1100 - Coral Gables, Florida 33134
`(305) 448-7089 - (305)446-6191 telecopier
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`6
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`l
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`.7/7,425 M
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`US. Patent & TMOfcITM Mail Rcpt 0t. #73
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`IN THE UNITED STATES PATENT AND TRADEMARK urrrpn
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SOBE NEWS, INC.,
`
`Opposer,
`
`v.
`
`SOUTH BEACH COFFEE COMPANY,
`
`Applicant.
`
`Opposition No. 91,152,675
`Mark: OCEAN DRIVE
`
`Application No. 76/308,090
`Published: January 22, 2002
`
`/
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`TRANSMITTAL
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`Enclosed for filing please accept the following papers related to this proceeding:
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`OPPOSER’S BRIEF IN OPPOSITION TO KLUGER, PERETZ, KAPLAN & BERLIN,
`P.L.’S MOTION TO WITHDRAW AS COUNSEL FOR SOUTH BEACH COFFEE
`COMPANY
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`Also enclosed is our return postcard, which we would appreciate the mail room stamping
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`as to the date received and returning to our offices. The Commissioner is authorized to charge
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`any additional fees, or credit any overpayment, to Account No. 12-2155. A duplicate copy of this
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`sheet is enclosed.
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`Date:
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`July 3, 2003
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`Respectfully submitted,
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`LOTT & FRIEDLAND, P.A.
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`l\-r~\\
`Leslie J. Lott
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`-’~o.._.._.__ [1 > L
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`Abby R. Dritz
`P.O. Drawer 141098
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`Coral Gables, FL 33114-1098
`(305) 448-7089
`Attorneys for Opposer
`EXPRESS MAIL CERTIFICATE OF MAILING
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`Express Mail Label:
`Date:
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`EV 309371293 US
`July 3, 2003
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`I hereby certify that this correspondence is being deposited with the United States Postal Service's “Express Mail -- Post Office to Addresses" service on the date
`indicated above and is addressed to: Assistant Commissioner of Trademarks, Box TTAB, 2900 Crystal Drive, Arlington, VA 22202-3513.
`Anna-Louise Owens
` , ;/
`’
` —
`MLA_*a-v._;_____
`Typed or printed name of person mailing paper or fee
`Signature ofperson mailing paper or fee
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`LOTT & FRIEDLAND, P.A. - Post Office Drawer 141098 - Coral Gables, Florida 33114
`(305) 448-7089 - (305) 446-6191 telecopier