TTAB
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Pinkberry, Inc., Opposer
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`Plaintiff,
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`vs.
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`Opposition No. 91179688
`Application No. 77/025,496
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`Cotton City, Inc. Dba Pink Berry, Applicant
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`Defendant.
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`Reply to Opposer Pinkberry, Inc.’s
`Opposition to Applicant Cotton City, Inc.’s
`Motion to Set Aside Default Judgment
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`«Eu T1101:/Tl‘ Nail Rcti D1
`U3 Pilent
`
`
`#72
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`Hllllllllllllllllllllllllllllllllflllllllllllllll
`08-12-2008
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`Reply to Opposition To Motion
`To Set Aside Default Judgment
`Page 1 of 11
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`Table of Contents
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`Summary: Applicant’s Motion must be granted because: (1) even a cursory reading of the
`moving papers reveals the existence of a meritorious defense; (2) Applicant’s former
`attorney’s uncontroverted declaration establishes that the failure to timely answer was
`based on excusable neglect; and (3) Opposer Pinkberry will not suffer substantial
`prejudice if the relief sought is granted.............................................................................. ..3
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`Factual Background and Argument.................................................................................... ..4
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`A.
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`B.
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`C.
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`Applicant had a good-faith, but mistaken, belief that his lawyer was going to
`handle the Answer to the Opposition...................................................................... ..4
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`App1icant’s lawyer’s conduct was not “culpable” so as to fall outside of the
`classification of excusable neglect......................................................................... ..5
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`Applicant did not act negligently in bringing this case to Attorney Cromwell ....... ..7
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`Applicant’s situation is the paradigm of “mistake, inadvertence, surprise, or excusable
`neglect” for which F.R.C.P. Rule 60(b) relief must be granted.......................................... ..9
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`Conclusion.......................................................................................................................... ..9
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`II.
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`III.
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`IV.
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`Reply to Opposition To Motion
`To Set Aside Default Judgment
`Page 2 of 11
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`Applicant Cotton City, Inc.’s Reply to Opposer Pinkberry, Inc.’s
`Opposition to Applicant’s Motion to Set Aside Default Judgment
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`In Reply to Opposer Pinkberry, Inc.’s Opposition to Applicant Cotton City, Inc.’s Motion to
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`Set Aside Default Judgment, Applicant makes the following points based on the cited authorities.
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`1.
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`Summary: Applicant’s Motion must be granted because: (1) even a cursory reading of the
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`moving papers reveals the existence of a meritorious defense; (2) Applicant’s former
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`attorney’ s uncontroverted declaration establishes that the failure to timely answer was based
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`on excusable neglect; and (3) Opposer Pinkberry will not suffer substantial prejudice if the
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`relief sought is granted.
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`In reviewing the “Procedural Status” section of Applicant’s Motion to Set Aside Default
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`Judgment it is clear from even a cursory reading of the chronology that Applicant’s Application
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`77/025,496 (the “496 Application”) filed on October 20, 2006 preceded Opposer’s Application
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`numbers 77/277,124 and 77/277,130 both filed on September 1 l, 2007 by nearly afull year. On its
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`face this raises a meritorious defense as to which applications would enjoy statutory protected mark
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`status. Ordinarily, the prior Application would have priority and it would be incumbent upon the
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`Opposer to carry its burden as to why the earlier-filed Application should be denied. Despite its
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`inflamed rhetoric, Opposer has not carried this burden and is intent on confusing this tribunal by
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`engaging in speculation as to why the Applicant did not file an Answer earlier in the proceedings.
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`The Declaration of Attorney B. Wynn Cromwell makes clear that there was not the slightest
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`bit of culpability on either Atty. Cromwell’s part nor on the part of Applicant’s President, Seok Jin
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`Kim in connection with the failure to timely file an Answer, as will be more fully discussed in
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`Section II.B., infia.
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`As for the prejudice that will allegedly be suffered by Pinkberry, Inc. ifthe Default Judgment
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`is set aside, the claim is without merit. As Pinkberry, Inc. itself has noted in its Opposition to the
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`Reply to Opposition To Motion
`To Set Aside Default Judgment
`Page 3 of 11
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`Motion to Set Aside Default Judgment, Federal Rules of Civil Procedure Rule 60(b) governs this
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`Motion. The statute provides that a motion for relief thereunder must be brought within a year of
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`entry ofthe judgment. F.R.C.P. Rule 60(c)(l). Pinkberry, Inc. filed its two Responses to Suspension
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`Inquiry or Letter of Suspension on February 13, 2008 (in order to reinstate the processing of its
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`September 1 1, 2007 Applications), some three weeks after the entry ofDefault Judgment. Pinkberry
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`claims in its Opposition that it relied “...upon the finality of the default judgment...” [Opposition,
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`p. 3 , 1] II.B] and based thereon “...represented to the USPTO that Applicant’ s application had become
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`abandoned.” Id. , fn. 4 Pinkberry took a calculated risk when it filed its Responses so soon after
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`the entry ofDefault Judgment—a risk which was clearly unreasonable, given the short amount
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`of time between the entry of the Default Judgment and its own Responses and given the fact
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`that it did not bother to attempt to contact Applicant and find out its intentions or procedural
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`posture with respect to possible appeals or other post—judgment relief.
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`In short, any prejudice that might be suffered by Pinkberry by granting relief to
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`Applicant/movant would be brought about by its own hand. It knew the address and phone number
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`of Applicant and Applicant’s counsel. Through the simple expedient of a phone call, a letter, or an
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`e-mail, Pinkberry could have asked Applicant what it intended to do, if anything, about the Default
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`Judgment prior to Pinkberry submitting its responses. At that point, it could then have made a
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`rational determination of its next steps. However, because it did not communicate with Applicant,
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`it ran the risk of exactly this scenario occurring: Applicant filing a Motion to Set Aside Default
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`Judgment. Although Applicant is not aware of any legal duty for Pinkberry to have attempted to find
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`out Applicant’s intentions, certainly prudence and common sense would dictate that it make
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`reasonable inquiries as to the nature of the legal terrain it was entering prior to doing so.
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`II.
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`Factual Background and Argument
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`A.
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`Applicant had a good-faith, but mistaken, belief that his lawyer was going to
`handle the Answer to the Opposition
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`Seok Jin Kim (“KIM”), President of Applicant, is from South Korea. His English language
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`skills are very limited. He is neither sophisticated in the law nor in communication protocols here
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`in America. What he did know is that he had a contact with the Legal Administrator for B. Wynn
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`Reply to Opposition To Motion
`To Set Aside Default Judgment
`Page 4 of 11
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`Cromwell, Mr. Chris Choi (“CHOI”) and that he had previously been involved in a personal injury
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`(auto accident) lawsuit which he had brought to CHOI. He had a successful outcome in that case so
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`when he finally got the Notice of Opposition filed by Pinkberry he brought the Notice to CHOI
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`sometime in the latter part of October 2007.
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`KIM was relying on CHOI to route the Notice to an appropriate attorney in his law firm for
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`further handling. In KIM’ s mind, once CHOI had accepted the Notice in late October 2007, KIM was
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`represented by counsel and he could rely on his counsel to analyze what the document was and to
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`take appropriate steps to properly handle it. That deference to and reliance on professionals is a
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`universal trait here in this country and in that respect KIM was acting in an entirely reasonable and
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`understandable manner.
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`Whether or not he was mistaken, that was his belief, which was substantiated by his attorney
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`B. Wynn Cromwell’s own “affidavit of fault” (“Cromwell Declaration”), attached to the Motion to
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`Set Aside Default Judgment [Cromwell Declaration, 1] 5-10]
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`Opposer makes much of KIM’s failure to “keep tabs” on his lawyer [Opposition, p. 12, line
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`4] and comes up with a whole page full of questions more suitable for KIM’s deposition than to an
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`Opposition. The fact of the matter is, as stated above, KIM displayed appropriate deference to what
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`he thought was his attorney and it would have been the height of arrogance on his part to start
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`micromanaging his attorney so soon after turning the Notice over to him.
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`B.
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`Applicant’s lawyer’s conduct was not “culpable” so as to fall outside of the
`classification of excusable neglect.
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`What is present under these facts is a clear case of miscommunication between attorney and
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`client. As is usually seen in attorney-client relations, Atty. Cromwell used intermediaries when
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`dealing with his clients. In this case, Atty. Cromwell used a Legal Administrator, CHOI, to liaise
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`with his Korean speaking clients.
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`When CHOI was contacted by KIM in late October 2007 with Pinkberr'y’s Opposition he
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`reported to Atty. Cromwell that there was a new case pending for their lawfirm. However, Atty.
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`Cromwell needed to see the Application and the Opposition in order to see the factual and
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`Reply to Opposition To Motion
`To Set Aside Default Judgment
`Page 5 of 11
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`chronological background of the case. He did not get the paperwork from Mr. Choi soon enough to
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`file a timely Answer. Moreover, he had not been formally retained by Applicant by the time the
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`Answer was due. [Cromwell Declaration, W 6-8]
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`Pinkberry makes much of the supposed failure to timely answer on Atty. Cromwell’s part,
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`and quotes from the TTAB’s “Institution Notice” that
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`“ANSWER IS DUE FORTY DAYS after the transmission date hereof.”
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`It might seem simple to those for whom English is their native language, but to an ESL
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`speaker such as KIM,
`it might not be readily apparent that the Board’s use of the words
`“transmission date hereof’ and “Mailed: September 25, 2007" would (A) be related and (B) that the
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`“Mailed: September 25, 2007" would start the clock ticking relative to the time for filing a response
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`to the Opposition.
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`Because the TTAB mailed the Notice to Applicant on September 25, 2007, it was not
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`received until several days later, approximately September 30, 2007. Counting 40 days from
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`September 25, the Answer would have been due on Sunday, November 4, 2007 but due to the effect
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`of Trademark Rule 2.196 its filing deadline would have been Monday, November 5, 2007.
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`Because CHOI did not bring the paperwork requested by Atty. Cromwell to Cromwell until
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`after the filing deadline of November 5, 2007 had lapsed, and because Atty. Cromwell had not been
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`formally retained by Applicant until sometime in December 2007 he was not able to timely file the
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`Answer to Pinkberry’s Opposition. [Cromwell Declaration W 7-8]
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`In some ways, the facts ofthis case are remarkably similar to those found in the Pioneer case
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`cited three times by Pinkberry. In Pioneer, a lawyer who happened to be the general partner in a
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`series ofreal estate partnerships received a notice from the bankruptcy court in which a partnership’ s
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`debtor’s case was pending that the “bar” date was such-and-such date. However, because of the
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`unorthodox placement of that “bar date” notice, and because the language did not say “The bar date
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`for filing proofs of claims is....,” and because there are numerous bar dates in the context of
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`bankruptcy proceedings, the lawyer/general partner missed the deadline for filing Proofs of Claim.
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`When he discovered his inadvertent overlooking of the deadline, he filed a Motion with the
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`Bankruptcy Court seeking leave ofcourt to late-file his Proof of Claim. The Motion was denied. The
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`Reply to Opposition To Motion
`To Set Aside Default Judgment
`Page 6 of 11
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`U.S. District Court’s Bankruptcy Appellate Panel upheld the Bankruptcy Court’s denial of the
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`Motion. The 9"‘ Circuit Court of Appeals reversed and remanded with instructions to apply a more
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`liberal standard for evaluating excusable neglect under the applicable Federal Rules of Bankruptcy
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`Procedure. Ultimately, the case wound up in the U.S. Supreme Court because of inconsistencies in
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`the standards for excusable neglect in the various circuits.
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`As Justice White, writing for the Court in Pioneer Investment Services Co. V. Brunswick
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`Association Limited Partnership 507 U.S. 380 (1993), said:
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`“The "excusable neglect" standard for allowing late filings is also used elsewhere in
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`the Federal Rules of Civil Procedure....The same is true of Rule 60(b)(l), which
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`permits courts to reopen judgments for reasons of "mistake, inadvertence, surprise,
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`or excusable neglect," but only on motion made within one year of the judgment.”
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`Id. at 392-393
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`The Pioneer Court found that the attomey’s declaration showed lack of culpability in the face of the
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`ambiguous language and the unorthodox placement on the Notice from the Bankruptcy Court and
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`it granted the relief sought.
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`Atty. Cromwell’s Declaration establishes, without any factual contravention, that he was
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`neither constructively nor actually aware of the case on which his administrator had been consulted
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`by KIM; that he did not have the applicable filing date(s) before him; and that he was not actually
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`and formally retained in time to timely file an Answer to the Opposition. Pinkberry conveniently
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`glosses over and suppresses these facts because they establish that Cromwell was not culpable in
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`failing to timely file the answer. In short, his failure constituted “excusable neglect” for which Rule
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`60(b)(l) relief should be granted.
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`C.
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`Applicant did not act negligently in bringing this case to Attorney Cromwell
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`Under these circumstances, KIM was not proficient in the English language and had no idea
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`what the September 25, 2007 Institution Notice sent to him by the TTAB meant. It took him a couple
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`of weeks or so for its significance to sink in. He then spoke to his contact, CHOI, at Astty.
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`Cromwell’s law firm. It took a while for the documents requested by Cromwell to find their way to
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`him, and by the time they reached him and he was formally retained, November 5”‘, 2007 had passed.
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`Reply to Opposition To Motion
`To Set Aside Default Judgment
`Page 7 of 11
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`Pinkberry claims that attorney “fault” is to be imputed to the client. In many instances this
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`is true. However, this is not one of them. KIM brought the fact of the Notice to CHOI’s attention.
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`In KIM’s mind, talking to CHOI was like talking to an attorney, although CHOI never represented
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`himself as an attorney, and never engaged in the unauthorized practice of law. But to KIM’s way of
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`thinking, the ball was now in his attorney’s court. He was results-driven, not process-driven, a
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`mental process distinguishing laypeople from attorneys. He knew that he had come to CHOI before
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`with an auto accident case and that he got a good result. How that result was produced, he did not
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`know; he just knew that when he needed legal help, he should go see or talk to CHOI. That is
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`precisely what he did in this case.
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`It can be fairly argued that under a theory of vicarious liability and rules of professional
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`conduct the missteps of CHOI can and should be imputed to his boss, Atty. Cromwell. Indeed, Atty.
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`Cromwell “fell on his sword” for Applicant [Cromwell Declaration, 11 10], and rightly so. However,
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`it would be the height of unfairness to “blame the victim” for his attomey’s lack of follow through.
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`Applicant is not a mindreader, nor is he a lawyer. He does not know about filing deadlines or
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`procedural requirements. All he knew is that he had a legal problem, he used the resource he
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`previously used before with success, CHOI, and when CHOI and/or Cromwell “dropped the ball”
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`he was being told he was out of court.
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`Not being familiar with the much-accelerated timelines in USPTO proceedings (compared
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`to state court proceedings), KIM would have had no idea of when it was a good time to start nagging
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`his attorney or at least CHOI for updates on the case. Not having been a party to a USPTO
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`proceeding before he would have no independent idea of the procedures to be followed and the
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`timelines to be observed. He simply went to the law firm his contact, CHOI, was working with and
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`relied on CHOI to guide him under the direction of his boss, Atty. Cromwell. This is hardly lack of
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`diligence or negligence on KIM’s part.
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`Reply to Opposition To Motion
`To Set Aside Default Judgment
`Page 8 of 11
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`III.
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`Applicant’s situation is the paradigm of “mistake, inadvertence, surprise, or excusable
`neglect” for which F.R.C.P. Rule 60(b) relief must be granted
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`Applicant, with admittedly poor English skills, untutored in the law, was and is a simple
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`businessman. As stated in his Motion, he started using the disputed mark in commerce a lot earlier
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`than Opposer Pinkberry in connection with clothing and accessories. His application was for the
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`mark “Pink Berry.” Opposer’s application was for the mark “Pinkberry,” and it pertained to yogurt
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`and food sales, two completely unrelated fields. In short, Applicant was there first in terms of use
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`ofthe mark in commerce and in the field ofwearing apparel and accessories on which Pinkberry now
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`wishes to encroach. These facts undeniably raise a meritorious defense on Applicant’s part.
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`Opposer claims through hyperbolic language that Atty. Cromwell’s Declaration is “fatally
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`deficient.” Citing to Pretzel & Stoufler v. Imperial Adjusters, Inc. , 28 F.3d 42, 45 (7‘“ Cir. 1994) the
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`Opposer wrongfully takes the “blame-the-victim” approach and puts the onus on Applicant for
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`failing to follow through with Atty. Cromwell. Moreover,
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`it recites a tale of various alleged
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`communicative deficiencies on Applicant’s part [0pposition, p. 1 1, last full paragraph] and raises
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`a number of red herrings throughout the pleading to deflect attention from the fundamental problem
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`it has:
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`Applicant is in the clothing business and used the “Pink Berry” mark
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`in commerce long before Opposer, a frozen yogurt retailer, did.
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`In reality, what is clearly happening is that a big company wants to trample the intellectual property
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`rights of a little company. If it can’t do it through co-opting it through buyout offers then it resorts
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`to costly and time-consuming litigation to win a war of attrition.
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`IV.
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`Conclusion
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`In summary, Applicant/movant has a meritorious defense and would likely prevail on the
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`merits if given a fair chance to present its case; Applicant’s situation is the paradigm ofthe situation
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`for which Rule 60(b)( 1) reliefwas legislatively provided; and there is no real prejudice to be suffered
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`by Opposer by granting the relief sought or, if there is prejudice, Opposer brought it on itself. For
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`these reasons, the Applicant’s Motion to Set Aside Default Judgment should be granted and leave
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`should be given to file an Answer in an expedited time frame to bring finality to this matter.
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`Reply to Opposition To Motion
`To Set Aside Default Judgment
`Page 9 of 11
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`Dated this 11"‘ day of August, 2008
`
`incent S. Kim, Esq.
`Law Offices of Vincent S. Kim & Associates
`3255 Wilshire Blvd.
`Suite 1500
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`Los Angeles, CA 90010
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`Reply to Opposition To Motion
`To Set Aside Default Judgment
`Page 10 ofll
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`CERTIFICATE OF SERVICE
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`I hereby certify that one (1) true and correct copy of the foregoing REPLY TO OPPOSER
`PINKBERRY, INC.’S OPPOSITION TO APPLICANT COTTON CITY, INC.’S MOTION TO
`SET ASIDE DEFAULT JUDGMENT in Opposition No. 91 179688 has been served on Opposer by
`mailing the same Via First Class Mail, postage prepaid, to Irene Y. Lee, Esq. and Clark D. Gross,
`Esq. of RUSS AUGUST & KABAT at 11424 Wilshire BouleVard., 12"‘ Floor, Los Angeles, CA
`90025, Oppser’s attorneys, on August 12, 2008.
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`M. é__’_
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`Vincent S. Kim
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`Reply to Opposition To Motion
`To Set Aside Default Judgment
`Page 11 of 11