Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA346344
`ESTTA Tracking number:
`05/07/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91187729
`Defendant
`STONEXPRESS, INC.
`JOSHUA TROPPER
`BAKER, DONELSON ET AL.
`3414 PEACHTREE ROAD MONARCH PLAZA, SUITE 1600
`ATLANTA, GA 30326
`UNITED STATES
`jtropper@bakerdonelson.com
`Motion to Reopen
`Joshua Tropper
`jtropper@bakerdonelson.com
`/jtropper/
`05/07/2010
`StonExpress Applican Cross-Motion 91187729.pdf ( 4 pages )(34060 bytes )
`StonExpress Declaration of Counsel 91187729.pdf ( 6 pages )(57722 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`StonCor Group, Inc.
`Opposer,
`v.
`StoneXpress, Inc.
`Applicant.
`
`Opposition No. 91187729
`
`Application Ser. No. 77/415,370
`Mark: STONEXPRESS (Stylized Logo)
`
`:
`'
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`.
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`APPLICANT’S CONDITIONAL CROSS-MOTION TO RE-OPEN DISCOVERY
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`Applicant StoneXpress, Inc., hereby moves this Board to re-open discovery, in the event
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`that the pending motion of Opposer StonCor Group, Inc., is not denied. This is Applicant's first
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`motion for additional time in this matter, although there have been two stipulated suspensions
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`approved by the Board pending settlement negotiations. Discovery closed on January 30, 2010;
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`Opposer's Pretrial Disclosures were due March 16, 2010 and served April 21, 2010; Opposer's
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`Trial Period ended April 30, 2010, subject to Opposer's pending motion to extend that date for 45
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`days; Defendant's Pretrial Disclosures will be due May 15, 2010, unless one of these motions is
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`granted.
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`The basis of the motion is that StonCor's pending motion discloses that its counsel has
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`been so thoroughly occupied by a "hotly contested patent infringement suit" that he has been
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`unable to attend to this opposition since soon after initiating it, resulting in (1) two months of
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`silence after an initial flurry of discovery, ended by agreement
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`to the basic concept of a
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`settlement agreement and a stipulated motion for a 90—day suspension less than two weeks before
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`expert disclosures were due; (2) three more months of silence broken by a draft outline for a
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`settlement agreement and a stipulated motion for a second 90-day suspension three weeks after
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`expert disclosures were due;
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`(3) another three months of silence broken by a request for
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`stipulation to a third suspension less than ten days before the close of discovery; and (4) yet
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`another three months of silence broken by a revised draft, one week before StonCor’s trial period
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`was to end, followed almost immediately by StonCor's pending motion for a unilateral extension
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`of its own deadline. Not having known that StonCor's counsel was too busy with other things to
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`prosecute this opposition, StoneXpress reasonably inferred from StonCor's willingness to allow
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`its own deadlines to slip by that the parties were literally minutes away from concluding a
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`settlement agreement.
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`If that were true, however, StonCor would have devoted its efforts to
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`concluding the settlement instead of seeking more time for itself.
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`If the Board concludes that StonCor's participation in settlement negotiations has been a
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`mere ruse to buy time to the prejudice of StoneXpress, or that StonCor's pre-occupation with
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`other matters otherwise does not justify its lack of prosecution of this opposition, then StonCor's
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`pending motion for a unilateral extension of time should be denied.
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`In the alternative, if the
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`Board concludes that StonCor's failure to prosecute this opposition has been in good faith and
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`that it should be permitted more time to prepare and present its case, then StoneXpress submits
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`that it should be allowed more time as well and respectfully requests that this conditional motion
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`be granted to restore both parties to the calendar status they held when the last stipulated
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`suspension was entered, by re—setting the close of discovery for 90 days after entry of the Board's
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`order on this motion.
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`Respectfully submitted this
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`I)“/day of May, 2010.
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`BAKER DONELSON BEARMAN
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`CALDWELL & BERKOWITZ, P.C.
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`

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`Monarch Plaza, Suite 1600
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`3414 Peachtree Rd., N.E.
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`Atlanta, Georgia 30326
`Phone:
`(404) 577-6000
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`Facsimile:
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`(404) 221-6501
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`StonCor Group, Inc.
`Opposer,
`v.
`StoneXpress, Inc.
`Applicant.
`
`Opposition No. 91187729
`
`Application Ser. No. 77/415,370
`Mark: STONEXPRESS (Stylized Logo)
`
`2
`.
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`I
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`CERTIFICATE OF SERVICE
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`This will certify that I have this day served the following person with a true and complete
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`copy of the foregoing APPLICANT’S CONDITIONAL CROSS-MOTION TO RE-OPEN
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`DISCOVERY via first class mail, postage prepaid, addressed as follows:
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`Charles N. Quinn, Esquire
`Fox Rothschild LLP
`
`2000 Market Street
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`10”‘ Floor
`
`Philadelphia, PA 19103
`This 1% of May, 2010.
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`
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`StonCor Group, Inc.
`Opposer,
`v.
`StoneXpress, Inc.
`Applicant.
`
`Opposition No. 91187729
`
`Application Ser. No. 77/415,370
`Mark: STONEXPRESS (Stylized Logo)
`
`:
`.
`
`.
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`DECLARATION OF APPLICANT’S COUNSEL
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`(1) IN OPPOSITION TO OPPOSER'S PENDING MOTION FOR
`A FORTY-FIVE DAY EXTENSION OF STONCOR'S TESTIMONY PERIOD
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`AND (2) IN SUPPORT OF APPLICANT'S CONDITIONAL CROSS-MOTION
`TO RE-OPEN DISCOVERY
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`I, JOSHUA TROPPER, declare:
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`1.
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`I am an attorney at law, duly admitted to practice and in good standing before the
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`courts of the States of New York, California, Georgia and Massachusetts;
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`the United States
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`District Courts for the Southern and Eastern Districts of New York, the Northern, Southern and
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`Central Districts of California,
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`the Eastern District of Wisconsin,
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`the Northern District of
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`Georgia, the Eastern District of Tennessee and the Districts of Massachusetts and Colorado; the
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`United States Courts of Appeals for the Ninth and Eleventh Circuits; and the United States
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`Supreme Court.
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`I am Of Counsel to the law firm of Baker, Donelson, Bearman, Caldwell &
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`Berkowitz, P.C., and am attorney of record for Applicant StoneXpress, Inc., in this proceeding.
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`2.
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`This is one of two oppositions initiated by Opposer StonCor Group, Inc., on
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`November 26, 2008, to parallel applications filed by Applicant StoneXpress, Inc., for the name
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`"StoneXpress" (77/414,515) and for its logotype design based on that name (77/4l5,370l).
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`StoneXpress imports and markets marble and other forms of natural stone products for building
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`construction.
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`StonCor has established numerous marks for use in various aspects and
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`components of self-leveling flooring systems that do not use natural stone. StonCor's marks
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`start, as does its own name, with the four letters "Ston" but never followed by the "e" that would
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`H
`complete the word "stone. StonCor has not asserted any expectation of monopolizing the word
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`"stone," so the parties’ different products and different channels of trade indicated from the start a
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`very high probability that an agreement could be reached to avoid any possibility of confusion.
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`3.
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`At all times during the past year, all communications with StonCor's counsel,
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`Charles N. Quinn, have been courteous and professional.
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`I have no reason to doubt any of the
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`statements made in his declaration or in the motion it supports. However, I infer from StonCor's
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`pending motion to extend its trial period by 45 days that StonCor itself has not been willing to
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`resolve this dispute despite the fact that Mr. Quinn and I reached agreement on what seemed to
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`be all essential terms several months ago.
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`If that inference is mistaken, StonCor's motion for an
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`extension of time should not be necessary.
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`If the inference is valid, then the Board should be
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`aware of the following additional circumstances in considering whether to grant StonCor's
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`motion or StoneXpress's conditional cross-motion:
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`4.
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`The original schedule in these matters required expert disclosures by July 4, 2009,
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`with discovery closing on August 3 and StonCor's 30-day trial period ending November 1, 2009.
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`5.
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`On May 6, 2009, I contacted Mr. Quinn and proposed a concept for settlement.
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`To preserve the confidentiality of the settlement negotiations, I do not attach copies of the
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`settlement correspondence to this declaration, but am able to do so if any dispute arises as to the
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`accuracy of this recitation of events.
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`6.
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`On June 15, 2009, after several weeks of silence, I sent an e—mail to Mr. Quinn
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`urging him to contact me if StonCor was interested in settling. Two days later, he did, and
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`offered to draft "an initial set of points/issues for consideration" and suggested asking for a 90-
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`day suspension to work out the details.
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`I confirmed StoneXpress's agreement to both suggestions
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`within the hour.
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`7.
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`StonCor prepared and filed a consent motion for a 90-day suspension, which was
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`granted on June 23, 2009, setting expert disclosures to be due by October 2, discovery closing on
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`November 1 and StonCor's 30-day trial period ending January 30, 2010, if the controversy were
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`not resolved.
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`8.
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`Two weeks later, on July 9, 2009, I asked Mr. Quinn whether I might have missed
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`something from him; his response was "No, I've been snowed."
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`9.
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`On July 20, 2009, I inquired again, but received no response.
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`10.
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`I asked again on August 4, 2009, and received an "Out of Office AutoReply" e-
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`mail.
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`11.
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`On August 13, 2009, I sent an e—mail expressing concern that the clock on this
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`opposition was running; I received no response.
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`12.
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`On August 26, 2009, I offered to speak with one of Mr. Quinn's colleagues if he
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`was not going to be available.
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`I received no response.
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`13.
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`Finally, on September 15, 2009, less than a week before the suspension was to run
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`out, Mr. Quinn telephoned and asked for clarification of two items.
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`1 confirmed that his
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`understanding of those two matters was correct, and on September 17, 2009, he agreed to draft a
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`formal settlement agreement based on that understanding.
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`14.
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`On October 15, 2009, Mr. Quinn proposed a more detailed set of points to be
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`included in the agreement. Nothing in connection with that proposal indicated at any sense of
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`urgency; the e—mail transmitting the proposal said "1 look forward to hearing from you at your
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`convenience."
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`15.
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`Nonetheless, the very next day, Mr. Quinn expressed concern that StoneXpress
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`had not yet responded, and suggested another suspension of the calendar.
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`16.
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`I agreed, and a second consent motion for suspension was granted on October 20,
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`2009. This one set the deadline for expert disclosures as December 31, 2009,
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`the close of
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`discovery on January 30, 2010, and the end of StonCor's 30-day trial period at April 30, 2010.
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`The schedule has not changed since.
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`17.
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`On October 21, 2009,
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`the day after the second suspension order, I confirmed
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`agreement with all
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`the points Mr. Quinn had proposed, suggesting only one "tweak" to the
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`phrasing of a single item.
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`I received no response.
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`18.
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`On November 6, 2009,
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`I again confirmed StoneXpress's agreement with
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`StonCor's proposal subject to the single modification I had suggested two weeks earlier.
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`I
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`received an "Out of Office AutoReply" e—mail.
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`19.
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`On November 24, 2009, I sent another follow—up e—mail, asking whether there
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`was a problem.
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`I received no response.
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`20.
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`On January 19, 2010, after the suspension had already lapsed, a paralegal in Mr.
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`Quinn's office contacted me and suggested yet another suspension.
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`I responded the following
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`day by urging consummation of the nearly-complete settlement agreement, which seemed likely
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`to "take less time than creating and filing another motion to extend."
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`21.
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`I did not hear anything further from StonCor for three months.
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`22.
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`Finally, on April 20, 2010, almost three months after discovery closed, more than
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`a month after StonCor's pretrial disclosures had been due (on March 16, 2010), and only ten days
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`before StonCor's trial period was to end, Mr. Quinn proposed a revision to that one clause that
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`had required a fix. Regrettably, this new proposed revision was internally inconsistent (referring
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`to potential marks that commence both with the four letters "S T O N" and with the letter "e").
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`The next morning, StonCor served pretrial disclosures (more than a month late), sought to
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`

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`schedule a trial deposition on short notice, and filed the present motion to add 45 days to its 30-
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`day tri al peiiod.
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`23.
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`On April 23, 2009, after StonCor had rejected my latest formulation of the
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`troublesome point,
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`I invited Mr. Quinn to propose an alternative, saying:
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`"If StonCor is
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`interested in resolving this, just not with the specific terms that you yourself just proposed earlier
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`today, then please suggest something that might work. On the other hand, if you are now telling
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`me that StonCor will not agree, and never would have agreed, to settle on terms that would
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`permit StoneXpress to continue using its name, then we will have to deal with that as best we
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`can." StonCor has not yet made any substantive response, requiring StoneXpress to file this
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`cross—motion.
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`The undersigned being warned that willful false statements and the like are punishable by
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`fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and
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`the like may jeopardize the validity of the application or document or any registration resulting
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`therefrom, declares that all statements made of his/her own knowledge are true; and all
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`statements made on information and belief are believed to be true.
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`Respectfully submitted this
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`day of May, 2010.
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`BAKER DONELSON BEARMAN
`
`CALDWELL & BERKOWITZ, P.C.
`
` a Tropper
`Attorneys for Applican
`
`Monarch Plaza, Suite 1600
`
`3414 Peachtree Rd., N.E.
`
`Atlanta, Georgia 30326
`Phone: (404) 577-6000
`Facsimile: (404)221-6501
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`StonCor Group, Inc.
`Opposer,
`v.
`StoneXpress, Inc.
`Applicant.
`
`Opposition No. 91187729
`
`Application Ser. No. 77/415,370
`Mark: STONEXPRESS (Stylized Logo)
`
`:
`.
`
`.
`
`CERTIFICATE OF SERVICE
`
`This will certify that I have this day served the following person with a true and complete
`
`copy of the foregoing DECLARATION OF APPLICANT’S COUNSEL (1) IN
`
`OPPOSITION TO OPPOSER'S PENDING MOTION FOR A FORTY-FIVE DAY
`
`EXTENSION OF STONCOR'S TESTIMONY PERIOD AND (2) IN SUPPORT OF
`
`APPLICANT’S CONDITIONAL CROSS-MOTION_TO RE-OPEN DISCOVERY via first
`
`class mail, postage prepaid, addressed as follows:
`
`Charles N. Quinn, Esquire
`Fox Rothschild LLP
`
`2000 Market Street
`
`10”‘ Floor
`
`Philadelphia, PA 19103
`
`This :7_‘flday of May, 2010.