Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA343918
`ESTTA Tracking number:
`04/23/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91187729
`Plaintiff
`STONCOR GROUP, INC.
`CHARLES N. QUINN
`FOX ROTHSCHILD LLP
`2000 MARKET STREET
`PHILADELPHIA, PA 19103
`UNITED STATES
`tfall@foxrothschild.com, cquinn@foxrothschild.com,
`dmcgregor@foxrothschild.com
`Other Motions/Papers
`CHARLES N. QUINN
`ipdocket@frof.com, cquinn@frof.com, dmcgregor@frof.com
`/CHARLES N. QUINN/
`04/23/2010
`EX1-#899903-v1-stoncor_stonexpress_motion_to_extend_testimony_period.pdf
`( 5 pages )(35413 bytes )
`EX1-#899873-v1-stoncor_stonexpress_cnq_declaration.pdf ( 5 pages )(30018
`bytes )
`EX1-#899898-v1-stoncor_e-mail_to_tropper.PDF ( 1 page )(54402 bytes )
`
`

`
`
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`v.
`
`StonCor Group, Inc.
`
`
`
`
`
`Stonexpress, Inc.
`
`
`
`
`Applicant.
`
`Opposition No. 91187729
`
`
`Application Ser. No. 77/415,370
`
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`STONCOR’S MOTION FOR A FORTY-FIVE DAY EXTENSION
`
`OF STONCOR’S TESTIMONY PERIOD
`
`
`
`
`
`Opposer StonCor Group, Inc. hereby moves this Board for a forty-five (45) day extension
`
`of StonCor’s testimony period. No prior extension has been requested. StonCor’s testimony
`
`period opened on 1 April 2010 and is scheduled to close on 30 April 2010.
`
`
`
`The basis of this motion requesting additional time is that due to StonCor’s counsel’s
`
`representation of another client in a hotly contested patent infringement suit pending in the
`
`United States District Court for the Eastern District of Pennsylvania, which infringement suit
`
`commenced shortly after discovery in the instant trademark opposition proceeding opened, the
`
`press of that litigation had not, until very recently, left sufficient time for StonCor’s counsel to
`
`prepare for and schedule the testimony of StonCor’s principal witness in support of StonCor’s
`
`case-in-chief in this opposition proceeding.
`
`Additionally, efforts by StonCor’s counsel to conveniently schedule that deposition in
`
`cooperation with applicant’s counsel have not been successful in that applicant’s counsel has not
`
`responded to StonCor’s counsel’s informal inquiry as to the convenience, for applicant’s counsel,
`
`of Tuesday 27 April as the date for StonCor’s testimony in support of StonCor’s case-in-chief.
`
`
`EX1 899903v1 04/23/10 6:16:32 PM
`
`1
`
`76110.42501
`
`

`
`
`
`
`
`As further set forth in the attached Declaration of StonCor’s counsel, it is StonCor’s
`
`counsel’s ordinary practice in all contested matters to endeavor to informally schedule
`
`depositions with opposing counsel before serving the formal notice of deposition. This practice
`
`is one that is most convenient for all concerned in that by agreeing upon a deposition date and
`
`locale that is convenient for all involved in advance, there is no objection to be raised once the
`
`notice of deposition is served.
`
`
`
`As yet further set out in the attached Declaration of StonCor’s counsel, while there have
`
`been settlement discussions in this case, those discussions have not concluded in settlement, and
`
`while at the moment discussions have been initiated again and there has been progress, there is
`
`not an agreement between the parties to settle the opposition.
`
`
`
`StonCor does not wish to participate in a testimonial deposition without applicant’s
`
`counsel’s concurrence as to the date and without applicant’s counsel having the opportunity to
`
`attend, either in person or via telephone, and to cross-examine as desired. Since StonCor has not
`
`received any response from applicant’s counsel as regarding the deposition tentatively scheduled
`
`for Tuesday, 27 April, StonCor’s position is that StonCor does not wish to take that deposition
`
`without the concurrence of applicant’s counsel and without service of a formal notice of
`
`deposition. To do so would no doubt elicit an evidentiary objection on the part of applicant to the
`
`deposition testimony when StonCor went to submit that testimony into evidence.
`
`
`
`The law is clear that the press of other litigation constitutes the good cause required for
`
`the grant of a time extension motion in a trademark opposition proceeding, so long as that time
`
`extension motion is filed prior to the close of the relevant period. Societa Per Azioni Chaianti
`
`Ruffino Esportazione Vinicola Toscanna v. Colli Spolentini Soletoducale SCRL, 59 USPQ2d
`
`1383 (TTAB 2001). Here, as set forth above and in detail in the accompanying supporting
`
`
`EX1 899903v1 04/23/10 6:16:32 PM
`
`2
`
`76110.42501
`
`

`
`
`
`declaration of StonCor’s undersigned counsel, the press of Novatec, Inc. v. The Conair Group,
`
`Inc., civil action 09-cv-02887 until very recently worked to prevent StonCor’s counsel from
`
`scheduling the deposition for StonCor’s case-in-chief, and now that StonCor’s counsel has been
`
`somewhat relieved from the press of that litigation, StonCor’s counsel has not received from
`
`applicant’s counsel any indication as to whether applicant’s counsel is in a position to attend the
`
`deposition currently scheduled for 27 April 2010.
`
`
`
`StonCor requests this extension of time to relieve StonCor from the imminent closure of
`
`StonCor’s testimony period, to provide the parties with an opportunity to schedule the
`
`testimonial deposition on a day that is convenient for all concerned and further in view of
`
`StonCor’s counsel being unavailable for much of the coming month of May.
`
`
`
`Accordingly, StonCor respectfully requests grant of requested extension for StonCor’s
`
`testimony period and that dates be reset in accordance with the following schedule:
`
`StonCor’s Testimony Period Ends
`
`Stonexpress’s Pretrial Disclosures
`
`
`
`
`
`Stonexpress’s Testimony Period Ends
`
`StonCor’s Rebuttal Disclosures
`
`
`
`
`
`
`
`
`
`
`
`14 June 2010
`
`1 July 2010
`
`15 August 2010
`
` 30 August 2010
`
`StonCor’s Rebuttal Testimony Period Ends
`
`25 September 2010
`
`
`
`It should be clear that StonCor cannot represent that this motion is uncontested; StonCor
`
`has not received any indication of applicant’s counsel as to applicant’s position regarding the
`
`deposition scheduling or any requested extension.
`
`
`
`StonCor respectfully requests careful consideration and grant of the instant motion.
`
`
`EX1 899903v1 04/23/10 6:16:32 PM
`
`3
`
`76110.42501
`
`

`
`
`
`
`
`To the extent there is any fee required in connection with the receipt, acceptance and/or
`
`consideration of this paper and/or any accompanying papers submitted herewith, please charge
`
`all such fees to Deposit Account 50-1943.
`
`
`
` Respectfully submitted:
` FOX ROTHSCHILD LLP
`
`
`
`/Charles N. Quinn/
`
` Charles N. Quinn
` Counsel for Opposer, StonCor Group, Inc.
`
`
`
`
`
`
`
`23 April 2010
`
`Date:
`
`Fox Rothschild LLP
`747 Constitution Drive, Suite 100
`Exton, PA 19341
`Tel: 610-458-4984
`Fax: 610-458-7337
`Email: cquinn@foxrothschild.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EX1 899903v1 04/23/10 6:16:32 PM
`
`4
`
`76110.42501
`
`

`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that a true and correct copy of the foregoing StonCor’s Motion for a
`
`Forty-Five Day Extension of Time for StonCor’s Testimony Period and a supporting Declaration
`
`of StonCor’s counsel was served on applicant’s attorney via first class mail, postage prepaid and
`
`Joshua Tropper, Esquire
`Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
`3414 Peachtree Road
`Monarch Plaza, Suite 1600
`Atlanta, GA 30326
` jtropper@bakerdonelson.com
`
`
`via e-mail to:
`
`
`
`Date: 23 April 2010
`
`
`By:/Charles N. Quinn
` Charles N. Quinn
`
`
`
`
`
`
`EX1 899903v1 04/23/10 6:16:32 PM
`
`5
`
`76110.42501
`
`

`
`
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`v.
`
`StonCor Group, Inc.
`
`
`
`
`
`Stonexpress, Inc.
`
`
`
`
`Applicant.
`
`Opposition No. 91187729
`
`
`Application Ser. No. 77/415,370
`
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`DECLARATION OF STONCOR’S COUNSEL IN SUPPORT OF
`
`STONCOR’S MOTION FOR A FORTY-FIVE DAY EXTENSION
`
`OF STONCOR’S TESTIMONY PERIOD
`
`
`
`1.
`
`I, Charles N. Quinn, hereby declare that I am a citizen of the United States,
`
`residing at 419 Bowen Drive, Exton, Pennsylvania, 19341, a partner in the law firm of Fox
`
`Rothschild LLP having my principal office at 747 Constitution Drive, Suite 100, Exton, PA
`
`19341, a member in good standing of the Bar of the Supreme Court of the Commonwealth of
`
`Pennsylvania holding registration number 17,603 therein, admitted in good standing to practice
`
`in patent matters before the United States Patent and Trademark Office holding registration
`
`number 27,223 therein, and am the attorney of record for opposer StonCor in the above-
`
`referenced trademark opposition proceeding.
`
`2.
`
`StonCor’s thirty day testimony period in this proceeding opened on 1 April 2010
`
`and is scheduled to close on 30 April 2010.
`
`3.
`
`Since just prior to the opening of discovery in this proceeding, I have been
`
`representing Novatec, Inc. as the plaintiff in a patent infringement suit pending in the United
`
`States District Court for the Eastern District of Pennsylvania before the Honorable John P.
`
`Fullam. The case is Novatec, Inc. v. The Conair Group, Inc., civil action 09-cv-02887. The
`
`parties in that case are in, what we hope, are the final stages of negotiating a settlement.
`
`
`EX1 899873v1 04/23/10 6:17:22 PM
`
`1
`
`76110.42501
`
`

`
`
`
`4.
`
`That patent infringement case has been hotly contested from the outset, with
`
`Conair initially raising spurious jurisdictional and venue objections. There have been numerous
`
`motions, answers, replies, sur replies and the like filed, all with accompanying voluminous
`
`supporting affidavits and exhibits, as well as exchanges of substantial discovery requests and
`
`responses thereto with all of the usual and customary jousting between counsel as to the scope
`
`and propriety of those requests. In representing Novatec we won the jurisdictional and venue
`
`battle, with the case being ordered to be tried here in Philadelphia, whereupon discovery directed
`
`to the merits of the case continued to go forward. Only within the last week or so have
`
`settlement discussions between the principals, without the attorneys being involved, accelerated;
`
`this has greatly reduced the amount of time that I have had to spend on that patent infringement
`
`suit.
`
`5.
`
`Due to the press of that litigation, until the last week or so I had not been able to
`
`prepare for and schedule a date for taking StonCor’s testimony in support of StonCor’s case-in-
`
`chief in this action.
`
`6.
`
`It is my practice in every contested matter, whether it be in court or before the
`
`Trademark Trial and Appeal Board, where I am taking a deposition on behalf of our client, to
`
`endeavor to informally schedule the deposition with opposing counsel before sending out the
`
`notice of deposition. This practice, I have found, is the most expeditious and efficient way to
`
`schedule a deposition. By agreeing on a deposition date that is convenient for all involved,
`
`including opposing counsel, the opposing party, my client, our witness, and any third party
`
`witness, it makes things much easier in that there are no objections to be raised as to the date
`
`once the Notice of Deposition is served, since all involved have agreed at to the date and locale
`
`in advance.
`
`
`EX1 899873v1 04/23/10 6:17:22 PM
`
`2
`
`76110.42501
`
`

`
`
`
`7.
`
`In the instant case, there had been settlement discussions several months ago, but
`
`those discussions did not conclude in a settlement agreement. Recently, settlement discussions
`
`have been initiated again, and while there has been progress, there is no agreement as between
`
`the parties to settle this opposition as of today.
`
`8.
`
`I have inquired of counsel for the applicant as to whether Tuesday, 27 April
`
`would be a convenient day for applicant’s counsel to attend when I take StonCor’s deposition
`
`testimony in support of StonCor’s case-in-chief. I have done this via e-mail twice within the last
`
`week and have not received any response from counsel for the applicant on this point, even
`
`though we have also had exchanges as regarding possible settlement. A copy of one of my e-
`
`mails to counsel for the applicant making such an inquiry as to whether 27 April would be a
`
`convenient date for the deposition is attached. Not having received a reply, I have not served a
`
`notice of deposition an accordance with my usual practice as outlined above.
`
`9.
`
`I do not want to take the deposition testimony of our client without applicant’s
`
`counsel’s concurrence as to the date and without applicant’s counsel having the opportunity to
`
`attend, either in person or via telephone, and to cross-examine if desired. Since I have not
`
`received any response from applicant’s counsel as regarding the deposition that had been
`
`tentatively scheduled for Tuesday, 27 April, I realize that if StonCor were to take that deposition
`
`without the concurrence of applicant’s counsel, even if StonCor were to serve a formal notice of
`
`deposition, StonCor would no doubt elicit an evidentiary objection by the applicant to the
`
`deposition testimony when StonCor went to submit it into evidence. At this late date, taking the
`
`deposition on Tuesday is problematical, given that there is but one work day to prepare the
`
`exhibits and the like and to otherwise prepare for taking the deposition. Tuesday 27 April is the
`
`
`EX1 899873v1 04/23/10 6:17:22 PM
`
`3
`
`76110.42501
`
`

`
`
`
`only date in the coming week that StonCor’s witness and StonCor’s undersigned counsel are
`
`both available and StonCor’s testimony period is scheduled to close on Friday 30 April.
`
`10.
`
`In order to protect StonCor’s position in this opposition proceeding and provide
`
`an opportunity for all interested parties to attend the deposition, I am filing the accompanying
`
`Motion to Extend StonCor’s testimony period by forty-five (45) days to accordingly reset the
`
`dates for this proceeding. I have requested the forty-five day extension because I am going to be
`
`away for much of the month of May, so additional time is needed to be sure that StonCor’s
`
`testimony in support of StonCor’s case in chief can be scheduled for a date that is convenient for
`
`all concerned.
`
`11.
`
`I cannot represent that this motion is uncontested; I have stated to applicant’s
`
`counsel that I needed to know his position as to whether the 27 April date is convenient, but as of
`
`the close of business today, I have not received his answer to that inquiry. This is not to be
`
`construed as a criticism of applicant’s counsel.
`
`12.
`
`I hereby declare, under penalty of perjury pursuant to 28 USC 1746, that all
`
`statements made herein are true and that all statements made herein on information and belief are
`
`believed to be true and further that I realize that false statements and the like so made herein are
`
`punishable by fine, or imprisonment or both, under 18 USC 1001 et seq., and further may
`
`jeopardize StonCor’s position in this proceeding.
`
`13.
`
`To the extent there is any fee required in connection with the receipt, acceptance
`
`and/or consideration of declaration and/or any accompanying papers herewith, please charge all
`
`
`EX1 899873v1 04/23/10 6:17:22 PM
`
`4
`
`76110.42501
`
`

`
`
`
`such fees to Deposit Account 50-1943.
`
` Respectfully submitted:
` FOX ROTHSCHILD LLP
`
`
`
`/Charles N. Quinn/
`
` Charles N. Quinn
` Counsel for Opposer, StonCor Group, Inc.
`
`
`
`
`
`
`
`23 April 2010
`
`Date:
`
`Fox Rothschild LLP
`747 Constitution Drive, Suite 100
`Exton, PA 19341
`Tel: 610-458-4984
`Fax: 610-458-7337
`Email: cquinn@foxrothschild.com
`
`
`
`
`
`
`
`
`
`
`
`
`EX1 899873v1 04/23/10 6:17:22 PM
`
`5
`
`76110.42501
`
`

`
`Paelfl
`
`Quinn, Charles N.
`
`V
`
`From:
`
`Quinn, Charles N.
`
`Sent: Wednesday, April 21, 2010 11:41 AM
`
`To:
`
`Cc:
`
`'Tropper, Joshua‘
`
`McGregor, Deanna M.; Esch, Carolyn P.
`
`Subject: StonCor v. Stonexpress oppositions; our files 76110.42501 & 42601
`
`Dear Mr. Tropper:
`
`Having not received your reply to my e-mail of 20 April 2010 addressing settlement, in View of the approaching
`closure of StonCor’s scheduled testimony period, we have today served StonCor’s pre-trial disclosures on you via e-
`mail and regular mail.
`I apologize for the late service; I have been enmeshed in patent infringement litigation.
`
`It is my practice to attempt to schedule deposition testimony informally with opposing counsel prior to sending the
`notice of deposition, so as to avoid rescheduling and disputes over dates.
`
`We are in a position to take StonCor’s testimony on Tuesday 27 April at 9:30 in StonCor’s offices in Maple Shade,
`New Jersey. Please let me know if this would be convenient for you, and if it is not, as to what dates would be
`convenient for you. If we have to go beyond the scheduled close of StonCor’s testimony period, with your concurrence
`I will file a consented motion to extend that period for a month, which should give us plenty of time to re-schedule
`StonCor’s testimony. If Tuesday is convenient, I will serve you with the notice of deposition. Further as to scheduling,
`Tuesday is the only day of next week that our witness and I am available.
`
`While we have not discussed it, I assume you would agree that the deposition testimony can be used for both
`oppositions. O.K.-‘?-
`'
`
`Would you further agree to consolidate the oppositions, if no settlement can be reached-?-
`
`Of course, all of this can be moot if we can reach an agreement on settlement, so I would most appreciate your reply to
`my e-mail of 20 April 2010.
`
`Regards,
`
`Charlie Quinn
`
`Charles N. Quinn
`
`Attorney at Law
`Fox Rothschild LLP
`
`Eaglevlew Corporate Center
`747 Constitution Drive
`Suite 100
`Exton, PA 19341
`610-458-4984
`
`610-458-7337 (fax)
`
`4/23/2010