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.
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`Opposer,
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`vs.
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`Application Serial No. 77/025,496
`Opposition No.: 91,179,688
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`MOTION TO SET ASIDE
`DEFAULT JUDGMENT
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`Cotton City, Inc. D/b/a Pink Berry
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`[F.R.C.P. Rule 60]
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`Applicant.
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`PROCEDURAL STATUS
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`On May 4, 2006 Opposer filed an Application for Registration of Trademark, bearing serial
`number 78/876,538, pertaining to Opposer’s use of the mark relative to frozen yogurt, and frozen
`yogurt-based desserts combined with fruit, nuts, cereal and shaved ice and rice cakes, as well as
`“smoothies.”
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`Applicant, Cotton City, Inc. d/b/a Pink Berry (hereinafter “PINK BERRY”) filed an
`Application for Registration of Trademark, bearing serial number 77/025,496 (hereinafter “the 496
`APPLICATION”) on October 20, 2006. The 496 APPLICATION pertained to PINK BERRY’s use
`of the mark on various items of wearing apparel (e.g., shirts, caps, and the like). The Opposer filed
`its own Applications for Registration of Trademark pertaining to various items of wearing apparel,
`numbers 77/277,124 and 77/277,130, on September 1 l, 2007 (hereinafter “the PINKBERRY
`APPLICATIONS”) and on September 24, 2007 an Office Action was issued as to both of the
`PINKBERRRY APPLICATIONS on the basis ofthe 496 APPLICATION filed nearly a year before.
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`On September 25, 2007, Opposer filed a Notice of Opposition to the 496 APPLICATION.
`On December 3 , 2007, the Trademark Trial and Appeal Board (“the Board”) sent a Notice of Default
`to PINK BERRY because no answer had been filed. No response to the Board’s Notice of Default
`had been received by the Board, and, therefore, on January 18, 2008 the Board entered Judgment by
`Default, sustaining the Opposer’s Opposition and denying the 496 APPLICATION.
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`MOTION TO SET ASIDE
`DEFAULT JUDGMENT Page 1 of 3
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`

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`MEMORANDUM OF POINTS AND AUTHORITIES
`SUPPORTING MOTION TO SET ASIDE DEFAULT JUDGMENT
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`I.
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`THE BOARD HAS AUTHORITY TO SET ASIDE THE DEFAULT JUDGMENT
`ENTERED AGAINST COTTON CITY.
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`The Board has authority to set aside the default judgment entered against Applicant, PINK
`BERRY, on January 18, 2008, under the Federal Rules of Civil Procedure Rule 60(a), which states:
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`“(a) Corrections Based on Clerical Mistakes; Oversights and Omissions.
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`The court may correct a clerical mistake or a mistake arising from
`oversight or omission whenever one is found in a judgment, order, or
`other part ofthe record. The court may do so on motion or on its own,
`with or without notice. But after an appeal has been docketed in the
`appellate court and while it is pending, such a mistake may be
`corrected only with the appellate court's leave.”
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`11.
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`THE APPLICANT MEETS THE REQ QUIREMENTS FOR AN ORDER SETTING ASIDE
`DEFAULT JUDGMENT.
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`FRCP Rule 60(b) provides, in pertinent part:
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`“(b) Grounds for Relief from a Final Judgment, Order, or Proceeding.
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`On motion and just terms, the court may relieve a party or its legal
`representative from a final judgment, order, or proceeding for the
`following reasons:
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`( 1) mistake, inadvertence, surprise, or excusable neglect;....”
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`As described in the attached Declaration of Atty. B. Wynn Cromwell, it was a case of
`attorney-client miscommunication and an innocent (but mistaken) presumption on the part of Mr.
`Seok Jin Kim, the Applicant’s President/CEO, that Atty. Cromwell was going to handle the Answer
`to the Opposition which led to the silence on Applicant’s part and, ultimately, the entry of a default
`judgment. Mr. Kim had previously referred a case to Atty. Cromwell’s Legal Administrator, Mr.
`Choi, and Mr. Choi had arranged for legal representation in a case which was handled successfully
`on behalf of Mr. Kim, so Mr. Kim referred the instant case’s Opposition to Mr. Choi for purposes
`of obtaining legal representation for the Applicant. Mr. Choi accepted the case on behalf ofthe firm
`in which he worked, with the approval of Atty. Cromwell, but did not request
`the 496
`APPLICATION and the Opposition thereto from Mr. Kim in a timely way. By the time Mr. Choi
`requested the paperwork, the Board had already entered a default judgment against the Applicant.
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`Under the circumstances, where through a simple misunderstanding on the part of the
`Applicant’s President/CEO and accidental oversight on the part of the attorney for Applicant no
`Answer was filed to the Opposition, it would be quite unfair to deny the Applicant an opportunity
`to have its day in court, particularly where there are numerous substantive rights involved in its
`Application for Registration of Trademark and there are numerous distinctions between the 496
`APPLICATION and the subsequent-filed PINKBERRY APPLICATIONS.
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`These facts make clear that, through no fault of its own, Applicant was not able to timely file
`a response to the Opposition. As Atty. Cromwell’s Declaration states, in Paragraph 10 thereof, he
`took “...responsibility for failing to file the Answer....”To prevent Applicant from addressing the
`substantive rights it has in its 496 APPLICATION on the basis of a hypertechnical application ofthe
`law would be denial of its constitutional due process rights and equal protection of the law.
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`MOTION TO SET ASIDE
`DEFAULT JUDGMENT Page 2 of 3
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`

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`III.
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`THE BALANCING OF THE EQUITIES MAKES CLEAR THAT OPPOSER WOULD
`SUFFER LITTLE OR NO PREJUDICE TO SETTING ASIDE THE DEFAULT
`JUDGMENT COMPARED TO THE GREAT HARM THAT WOULD BE DONE TO
`APPLICANT BY UPHOLDING THE ISSUANCE OF DEFAULT JUDGMENT.
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`FRCP Rule 60(c)(l) states:
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`(1)
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`Timing.
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`“A motion under Rule 60(b) must be made within a
`reasonable time — and for reasons (1), (2), and (3) no
`more than a year after the entry of the judgment or
`order or the date of the proceeding.”
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`This Motion is being filed only a little more than two months after Notice of the Entry of
`Default Judgment was served on the Applicant by the Board. It is not unreasonable for the Applicant
`to believe that since it filed its 496 APPLICATION almost a year before the PINKBERRY
`APPLICATIONS were filed it should have priority as to the use of the applied-for Mark and
`certainly should be afforded an opportunity to litigate the matter of priority of use and danger of
`confusion. A two-month gap from the time the Notice of Entry of Default Judgment and the time of
`filing this Motion to Set Aside Default Judgment is hardly an unreasonably-long (and therefore
`unduly prejudicial) delay in seeking to set aside the Default Judgment.
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`Moreover, the Applicant could potentially file an independent action for relief from the
`Board’s action in entering Default Judgment. FRCP Rule 60(d)(l) states:
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`“This rule does not limit a court's power to:
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`(1) entertain an independent action to relieve a party from aj udgment,
`order, or proceeding;....”
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`However, Applicant is attempting hereby to exhaust its administrative remedies before
`invoking the assistance of the United States District Court.
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`IV.
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`CONCLUSION.
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`Accordingly, it is respectfully requested that the Board reverse its prior decision, set aside
`the entry of Default Judgment, and provide Applicant with leave to file 1tS Answer to the Opposition
`so that the parties can litigate their substantive rights in this forum,
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`Dated: March 3/ ,2008
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`Respectfully submitted,
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`LAW OFFICES OF VINCENT S. KIM & ASSOCIATES
`
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`\:iincent S. Kim, Esq.
`M '% é A
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`3255 Wilshire Blvd., Suite 1500
`Los Angeles, CA 90010
`(213)383-3888 [Tel.]
`(213) 383-3884 [Fax]
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`MOTION TO SET ASIDE
`DEFAULT JUDGMENT Page 3 of 3
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`

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`DECLARATION OF B. WYNN CROMWELL
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`I, B. WYNN CROMWELL, hereby declare as follows:
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`1.
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`I am over the age of 18 years old, and am not a party to the within action. I
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`personally know the following facts, and would and could competently testify thereto ifcalled upon
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`to do so, except for those facts declared on the basis of information and belief, and as to those facts
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`I believe them to be true.
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`2.
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`On or about October 20, 2006 Cotton City, Inc. d/b/a PINK BERRY (hereinafter
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`“Applicant”) filed an Application for Registration ofMark, Application Number 77/025,496, with
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`the U.S. Patent and Trademark office.
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`3.
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`I am informed and believe that my law firm’s Legal Administrator, Chris Choi, had
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`previously obtained a personal injury (auto accident) case from SEOK JIN KIM, President of
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`Applicant, in or about December 2006 and satisfactorily handled that case through a lawyer referral
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`he had arranged for Mr. Kim.
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`4.
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`I am informed and believe that in or about June or July 2007, PINKBERRY, INC.
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`approached Mr. Kim about the possibility of licensing the use of the name “PINK BERRY” but
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`that an agreement could not be reached.
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`5.
`On September 25, 2007 PINKBERRY, INC. filed its Notice of Opposition to
`Applicant’s Application and mailed a copy of the Opposition to COTTON CITY’s offices.
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`6.
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`About a month afterward, that is, approximately the end of October 2007, Mr. Kim
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`contacted Mr. Choi ofmy office and sought his assistance in handling the defense ofhis company’s
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`Application.
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`7.
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`After this request, Mr. Choi brought the matter to my attention.
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`I asked for
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`additional information, including copies of the Application and the Opposition, and Mr. Choi
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`agreed to obtain the paperwork from the client, COTTON CITY, INC. However, Mr. Choi did not
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`obtain the requested documentation from Mr. Kim or anyone else from COTTON CITY, INC. and
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`due to the press ofmy legal practice’ s business I did not have an opportunity to follow through with
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`Mr. Choi as soon as I would have liked to.
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`8.
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`I was not aware of any specific time deadline by which to file a response to
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`-1-
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`DECLARATION OF B. WYNN CROMWELL, ESQ.
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`PINKBERRY, INC.’s Opposition because I had not received the documents from Mr. Choi and
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`had not formally been retained at that time in November or December 2007. Accordingly, because
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`of the miscommunication on my part in failing to follow through earlier with Mr. Choi, I was not
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`able to counter PINKBERRY’s Opposition within the time limits set by law.
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`9.
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`On or about January 18, 2008 the U.S. Patent and Trademark Office served a Notice
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`of Abandonment on COTTON CITY, INC. based on the Notice of Default sent to Applicant on
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`December 3, 2007 to which no answer had been filed.
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`10.
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`I take responsibility for failing to file an answer to the Notice of Opposition filed
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`and served by PINKBERRY, INC. on September 25, 2007 and respectfully request that the
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`Application be reinstated with leave being granted to file a Counter-memorandum to the Notice
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`of Opposition within a reasonable time. I will gladly pay such reasonable sanctions awarded by the
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`Court as will compensate PINKBERRY, INC. for the reasonable costs it may incur in connection
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`with this Motion to Set Aside Default Judgment.
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`Executed under penalty ofperj ury under the laws ofthe State of California on this 19th day
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`of March, 2008 at Los Angeles, California.
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`DECLARATION OF B. WYNN CROMWELL, ESQ.
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`PROOF OF SERVICE
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`STATE OF CALIFORNIA, COUNTY OF LOS ANGELES
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`I am over the age of
`I am employed in the County of Los Angeles, State of California.
`18 and not a party to the within action. My business address is 3255 Wilshire Blvd., Suite 1500,
`Los Angeles, California 90010.
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`On March 31, 2008, I served the foregoing document described as MOTION TO SET
`ASIDE DEFAULT JUDGMENT, DECLARATION OF B. WYNN CROMWELL by
`placing, with postage thereon fully prepaid in the United States mail at Los Angeles, California
`as follows:
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`CLARK ll). GROSS
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`12424 Wilshire Blvd., Suite 1200
`Los Angeles, CA 90025
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`__ (BY PERSONAL DELIVERY)
`addressee.
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`I caused such envelope to be personally delivered to the
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`__ (BY FACSIMILE)
`addressee.
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`I caused such envelope to be delivered, via facsimile, to the
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`I caused such envelope, with postage thereon fully prepaid, to be placed in
`(BY MAIL)
`X
`the United States Mail at Los Angeles, California
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`__ (BY MAIL CALIFORNIA ONLY) I am readily familiar with this business’ practices
`for collection and processing of correspondence for mailing with the United States Postal Sevice.
`This document will be deposited with the United States Postal Service on the same day as the
`placed for collection and mailing on the same day as the execution of this document at the
`address given for deposit in the United States Postal Service and following ordinary business
`practices.
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`I declare under penalty of perjury under the laws of the State of California that
`__ (State)
`the foregoing is true and correct.
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`I declare that I am employed in the office of a member of the bar of this court
`_X_ (Federal)
`at whose direction the service was made.
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`Executed on March 31, 2008 at Los Angeles, California.
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`Min’ ng suh