Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA348016
`ESTTA Tracking number:
`05/18/2010
`
`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, Esq.
`cquinn@foxrothschild.com, dmcgregor@foxrothschild.com
`/CHARLES N. QUINN/
`05/18/2010
`StonCor Reply & Oppos to Cross-Motion - 91187729.pdf ( 21 pages )(685094
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`
`
`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 REPLY TO STONEXPRESS’ OPPOSITION TO
`
`STONCOR’S MOTION FOR A FORTY-FIVE DAY EXTENSION
`
`OF STONCOR’S TESTIMONY PERIOD
`
`
`
`StonCor’s motion to extend its testimony period should be granted; Stonexrpess’
`
`opposition to that motion lacks merit.
`
`Stonexpress’s Opposition is based on an erroneous premise, namely that StonCor’s
`
`Motion to Extend StonCor’s Testimony Period presented fewer than all of the relevant facts to
`
`this Board for decision. As set forth in more detail on the accompanying Declaration of
`
`StonCor’s counsel, all of the relevant facts were in StonCor’s Motion. StonCor did the prudent
`
`and required thing, namely moving for an extension of the testimony period when it became
`
`apparent that settlement would not be effectuated by the close of StonCor’s testimony period.
`
`For StonCor to have done otherwise would have risked being placed in a position where
`
`no case-in-chief testimony could have been presented if settlement could not be reached. In that
`
`case, Stonexpress would clearly and inequitably be in the driver’s seat. StonCor would be
`
`limited to relying on the trademark registration evidentiary materials that accompanied
`
`StonCor’s Notice of Opposition and the Notice of Reliance materials that were submitted during
`
`StonCor’s testimony period to prove StonCor’s case-in-chief. Neither of these is the most
`
`
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`
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`desirable, palatable approach to proving one’s case when testimony is available. StonCor filed
`
`its Motion to Extend the Testimony Period to protect StonCor’s position in the event settlement
`
`cannot be achieved. No matter what the previous communications were between the parties and
`
`no matter what time was consumed by those communications, StonCor had no choice with the
`
`approach of close of the testimony period but to move for an extension of the same.
`
`Extension of StonCor’s testimony period will not have any effect of “pinching”
`
`Stonexpress; Stonexpress will still be free to take its own testimony in support of its own case, to
`
`submit notices of reliance, etc. The only facts relevant to the Motion by StonCor to extend the
`
`testimony period are the fact that the close of the testimony period was approaching and that the
`
`testimony period needed to be extended, since the parties were unable to reach a settlement
`
`agreement and the fact that counsel for Stonexpress did not respond at all to StonCor’s various
`
`communications regarding the testimony period, the date for taking testimony, and the like.
`
`Stonexpress’ Opposition to StonCor’s Motion is further based on an inference drawn by
`
`Stonexpress’ counsel, namely a belief that the perceived differences in the parties’ products and
`
`trade channels indicated, from the start, a high probability that an agreement could be reached in
`
`this trademark opposition proceeding, and that the absence of any such agreement means that
`
`StonCor was not negotiating in good faith. This is wrong. Stonexpress’ counsel has apparently
`
`been operating under the misimpression--namely that “stone for building and construction” and
`
`“building stone”, recited as a portion of the goods for which Stonexpress seeks registration of its
`
`mark, have no relation to StonCor’s self-leveling flooring products. This is incorrect. As set
`
`forth in the attached Declaration of StonCor’s counsel, and the materials submitted with these
`
`papers, and as readily apparent from StonCor’s website, www.stonhard.com (where there are
`
`references to the use of aggregate, e.g. stone, as a substrate of subflooring material supporting
`
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`StonCor’s self-leveling flooring underlayerments), there is a clear relationship as between the
`
`“stone for building and construction” (as recited in Stonexpress’ instant application) and stone
`
`used for building and construction by StonCor and by StonCor’s clients as underlayerment
`
`support or foundation for StonCor’s self-leveling floors.
`
`As such, the stone for building and construction as recited in the Stonexpress application
`
`is a component that an architect could specify, that a builder could purchase, and over which
`
`StonCor could install one of its self-leveling floors. Indeed, since StonCor is a turnkey
`
`contractor in many instances, StonCor might well specify the stone for building or construction
`
`to be used as the aggregate underlayerment for its self-leveling floors, whereupon a building or
`
`construction contractor purchasing the stone pursuant to StonCor’s specifications might well
`
`encounter the Stonexpress product in the marketplace.
`
`Accordingly, Stonexpress’ counsel’s inference that because of his perception of
`
`differences in the parties’ goods and trade channels, there was from the start a high probability of
`
`an agreement being reached, is incorrect, as is his implication that in view of his (erroneous)
`
`perception, the fact agreement has not been reached evidences bad faith on the part of StonCor.
`
`This is an erroneous conclusion founded on a baseless inference. Stonexpress’ goods, especially
`
`the Stonexpress “stone for building and construction” are closely related to StonCor’s self-
`
`leveling floors. To the extent he understands to the contrary, Stonexpress’ counsel is in error.
`
`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, please charge all
`
`
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`such fees to Deposit Account 50-1943.
`
` Respectfully submitted:
` FOX ROTHSCHILD LLP
`
`
`
`/Charles N. Quinn/
`
` Charles N. Quinn
` Counsel for Opposer, StonCor Group, Inc.
`
`
`
`
`
`
`
`
`
`
`Date: 17 May 2010
`
`
`
`
`
`Fox Rothschild LLP
`747 Constitution Drive, Suite 100
`Exton, PA 19341
`Tel: 610-458-4984
`Fax: 610-458-7337
`Email: cquinn@foxrothschild.com
`
`
`
`
`
`
`EX1 906398v1 05/18/10 10:34:35 AM
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`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposer,
`
`StonCor Group, Inc.
`
`
`
`
`
`Stonexpress, Inc.
`
`
`
`v.
`
`Opposition No. 91187729
`
`
`Application Ser. No. 77/415,370
`
`
`
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`
`
`
`Applicant.
`
`CERTIFICATE OF SERVICE
`
`
`I, Deanna M. McGregor, of full age, by way of certification, state that a copy of
`
`StonCor’s Reply to Stonexpress’ Opposition to StonCor’s Motion for a Forty-Five Day
`
`Extension was served on applicant’s counsel on the date set forth below via first class mail,
`
`postage prepaid, addressed as follows:
`
`Joshua Tropper, Esquire
`Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C.
`Monarch Plaza, Suite 1600
`3414 Peachtree Road, N.E.
`Atlanta, GA 30326
`
`
`
`
`
`
`
`
`
`/-d-/
`
`
`Deanna M. McGregor
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: 18 May 2010
`
`
`
`
`
`EX1 906398v1 05/18/10 10:34:35 AM
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`76110.42601
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`

`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`StonCor Group, Inc.
`
`
`
`
`
`Stonexpress, Inc.
`
`
`
`
`v.
`
`
`
`Opposer,
`
`Applicant.
`
`Opposition No. 91187729
`
`
`Application Ser. No. 77/415,370
`
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`STONCOR’S OPPOSITION TO STONEXPRESS’ CONDITIONAL
`
`CROSS-MOTION TO EXTEND DISCOVERY
`
`
`
`
`
`Stonexpress’ Conditional Cross-Motion to Extend Discovery should be denied since it is
`
`based on an erroneous premise and an incorrect inference, and is not timely.
`
`Taking these in reverse order, if Stonexpress wanted to extend discovery, Stonexpress
`
`should have moved to do that while discovery was open. Federal Rule of Civil Procedure
`
`6(b)(1)(A) clearly states that when an act may or must be done within a specified time, the Court,
`
`in this case the Board, may extend the time with or without motion if a request is made before
`
`the original time or extension expires, but may only extend the time after the time has expired if
`
`the party failed to act because of excusable neglect. In this case, Stonexpress, Inc. has not shown
`
`any excusable neglect and has not even addressed that issue in its Conditional Cross-Motion.
`
`Accordingly, StonCor respectfully submits that Stonexpress’ Conditional Cross-Motion to
`
`restore the parties to the position they would have been during the discovery period and to permit
`
`three (3) additional months of discovery is woefully late, does not comport with the requirements
`
`of FRCP 6(b)(1)(A) and, accordingly, should be denied.
`
`
`EX1 906409v1 05/18/10 10:27:21 AM
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`Stonexpress’s Conditional Cross-Motion to Extend Discovery is further based on an
`
`erroneous premise, namely the suggestion that StonCor’s Motion to Extend StonCor’s Discovery
`
`Request presented fewer than all of the relevant facts to this Board for decision. As set forth in
`
`more detail in the accompanying Declaration of StonCor’s counsel, all of the relevant facts were
`
`presented in StonCor’s Motion to Extend Its Testimony Period. StonCor did the prudent and
`
`required thing, namely moving for an extension of the testimony period when it became apparent
`
`that settlement would not be effectuated by the close of StonCor’s testimony period.
`
`For StonCor to have done otherwise would have risked being placed in a position where
`
`no testimony could have been presented in the event settlement could not be reached. In that
`
`case, Stonexpress would clearly and inequitably be in the driver’s seat. StonCor would be
`
`limited to relying on the trademark registration evidentiary materials that accompanied
`
`StonCor’s Notice of Opposition and the Notice of Reliance materials submitted during
`
`StonCor’s testimony period. Neither of these is the most desirable, palatable approach to
`
`proving one’s case when testimony is available. StonCor took the step of filing its Motion to
`
`Extend the Testimony Period to protect StonCor’s position in the event settlement cannot be
`
`achieved. No matter what the communications were heretofore between the parties and no
`
`matter what time was consumed by and between those communications, the simple fact is that
`
`StonCor had no choice with the approach of close of the testimony period but to move for an
`
`extension of the same.
`
`Extension of StonCor’s testimony period will not have any effect of “pinching”
`
`Stonexpress; Stonexpress will still be free to take its own testimony in support of its own case, to
`
`submit notices of reliance, etc. The only facts relevant to the Motion by StonCor to extend the
`
`testimony period are the fact that the close of the testimony period was approaching, the
`
`
`EX1 906409v1 05/18/10 10:27:21 AM
`
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`
`76110.42601
`
`

`
`testimony period needed to be extended since the parties were unable to reach a settlement
`
`agreement, and the fact that counsel for Stonexpress did not respond at all to StonCor’s various
`
`communications regarding the testimony period, the date for taking testimony and the like.
`
`Stonexpress’ Conditional Cross Motion to Extend Discovery is further based on an
`
`erroneous inference drawn by Stonexpress’ counsel, namely a belief that the perceived
`
`differences in the parties’ products and trade channels indicated, from the start, a high probability
`
`that an agreement could be reached in this trademark opposition proceeding. Stonexpress
`
`counsel is apparently under the misimpression that “stone for building and construction” and
`
`“building stone” as recited as some of the goods for which Stonexpress seeks registration of its
`
`mark, have no relation to StonCor’s self-leveling flooring products. This is incorrect.
`
`As set forth in the attached Declaration of StonCor’s counsel and the materials submitted
`
`with these papers and as readily apparent from StonCor’s website, www.stonhard.com, where
`
`there are numerous references to the use of aggregate, e.g. stone, as a substrate of subflooring
`
`material supporting StonCor’s self-leveling flooring underlayerments, there is a clear
`
`relationship as between the “stone for building and construction” as recited in Stonexpress’
`
`instant application and the use of stone for building and construction by StonCor, and by
`
`StonCor’s clients, as underlayerment support or foundation for StonCor’s self-leveling floors.
`
`As such, the “stone for building and construction” as recited in the Stonexpress application is a
`
`component that an architect could specify, that a builder could purchase, and over which StonCor
`
`could install one of its self-leveling floor. Indeed, since StonCor is a turnkey contractor in nearly
`
`every instance, StonCor might well specify the stone for building or construction to be used as
`
`the aggregate underlayerment for its self-leveling floors, whereupon a building or construction
`
`contractor purchasing the stone pursuant to StonCor’s specifications might well encounter the
`
`
`EX1 906409v1 05/18/10 10:27:21 AM
`
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`76110.42601
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`Stonexpress product in the marketplace. Accordingly, Stonexpress’ counsel’s inference that
`
`because of his perceived difference in the parties’ goods and trade channels, there was from the
`
`start a high probability of an agreement being reached, is incorrect. Stonexpress’ goods,
`
`especially the Stonexpress “stone for building and construction” is closely related to StonCor’s
`
`self-leveling floors. Stonexpress’ counsel is in error, to the extent he believes to the contrary.
`
`Stonexpress’ counsel makes much of the on-and-off discussions between counsel for the
`
`parties as respecting settlement. While it is true those discussions were intermittent in nature,
`
`the intermittent character of the discussions was dictated by StonCor’s counsel’s involvement in
`
`patent infringement litigation, as detailed in the accompanying Declaration of StonCor’s counsel.
`
`The recitation of the on-and-off nature of the discussions merely serves to highlight the
`
`fundamental issue here – the inability of the parties to reach a definitive, comprehensive
`
`settlement agreement to-date and therefore the need to extend StonCor’s testimony period to
`
`allow StonCor to take testimony to the extent that becomes necessary if the on-going settlement
`
`negotiations break down completely. In any event, Stonexpress’ Conditional Cross-Motion to
`
`Extend Discovery should be denied as being untimely, being based on an erroneous inference
`
`and a evidencing a misunderstanding of the relevant facts.
`
`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
`
`such fees to Deposit Account 50-1943.
`
` Respectfully submitted:
` FOX ROTHSCHILD LLP
`
`
`
`/Charles N. Quinn/
`
` Charles N. Quinn
` Counsel for Opposer, StonCor Group, Inc.
`
`
`
`
`
`Date:
`
`
`17 May 2010
`
`
`
`
`EX1 906409v1 05/18/10 10:27:21 AM
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`76110.42601
`
`

`
`Fox Rothschild LLP
`747 Constitution Drive, Suite 100
`Exton, PA 19341
`Tel: 610-458-4984
`Fax: 610-458-7337
`Email: cquinn@foxrothschild.com
`
`
`EX1 906409v1 05/18/10 10:27:21 AM
`
`5
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`76110.42601
`
`

`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`StonCor Group, Inc.
`
`
`
`
`
`Stonexpress, Inc.
`
`
`
`
`v.
`
`:
`:
`:
`:
`:
`:
`:
`:
`
`Opposition No. 91187729
`
`
`Application Ser. No. 77/415,370
`
`
`
`Applicant.
`
`
`CERTIFICATE OF SERVICE
`
`
`I, Deanna M. McGregor, of full age, by way of certification, state that a copy of
`
`StonCor’s Opposition to Stonexpress’ Conditional Cross-Motion to Extend Discovery was
`
`served on applicant’s counsel on the date set forth below via first class mail, postage prepaid,
`
`addressed as follows:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: 18 May 2010
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Joshua Tropper, Esquire
`Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C.
`Monarch Plaza, Suite 1600
`3414 Peachtree Road, N.E.
`Atlanta, GA 30326
`
`
`
`
`
`
`
`
`
`/-d-/
`
`
`Deanna M. McGregor
`
`
`
`
`
`EX1 906409v1 05/18/10 10:27:21 AM
`
`6
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`76110.42601
`
`

`
`
`
`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 REPLY TO STONEXPRESS’ OPPOSITION TO STONCOR’S MOTION
`
`FOR A FORTY-FIVE DAY EXTENSION OF STONCOR’S TESTIMONY PERIOD AND
`
`IN SUPPORT OF STONCOR’S OPPOSITION TO STONEXPRESS’ CONDITIONAL
`
`CROSS MOTION TO RE-OPEN DISCOVERY
`
`
`
`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.
`
`As correctly summarized by Stonexpress’ counsel in paragraph 2 of Stonexpress’
`
`counsel’s Declaration, this is one of two oppositions initiated by StonCor on 26 November 2008
`
`against parallel applications filed by Stonexpress for registration of the mark “StoneXpress” and
`
`for a stylized mark including the word “StoneXpress”. Based on the information we have been
`
`able to obtain, Stonexpress imports and markets marble and other forms of natural stone products
`
`for building construction, as stated in Stonexpress’ counsel’s Declaration. In its applications
`
`
`EX1 906416v1 05/18/10 10:37:23 AM
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`Stonexpress seeks registration of its marks for “building stone; limestone; marble; slate; stone for
`
`building and construction”.
`
`3.
`
` StonCor owns and has asserted in this trademark opposition proceeding,
`
`numerous incontestably registered marks, many of which are used for self-leveling flooring
`
`systems and for component portions of self-leveling flooring systems. The StonCor marks are as
`
`follows:
`
`U.S. Registration No.: 1487280, STONHARD
`
`U.S. Registration No.: 1306662, STONCLAD-PT
`
`U.S. Registration No.: 1645258, STONCRETE
`
`U.S. Registration No.: 1655954, STONLOK
`
`U.S. Registration No.: 1687420, STONLUX
`
`U.S. Registration No.: 1688593, STONLINER
`
`U.S. Registration No.: 1689713, STONSHIELD
`
`U.S. Registration No.: 1691045, STONSET
`
`U.S. Registration No.: 1697228, STONKOTE
`
`U.S. Registration No.: 1697229, STONPROOF
`
`U.S. Registration No.: 1697230, STONSEAL
`
`U.S. Registration No.: 1703299, STONFIL
`
`U.S. Registration No.: 1706070, STONCLAD
`
`U.S. Registration No.: 1712857, STONBLEND
`
`U.S. Registration No.: 1740723, STONCREST
`
`
`
`
`EX1 906416v1 05/18/10 10:37:23 AM
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`
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`
`4.
`
`Stonexpress’ counsel’s Declaration is wrong where Stonexpress’ counsel states
`
`that StonCor’s “self-leveling flooring systems do not use natural stone.” Stone, namely
`
`aggregate, is often used as a base layer for StonCor’s self-leveling flooring systems.
`
`Consequently, the stone for which registration is sought in this proceeding and as furnished by
`
`Stonexpress, the applicant of this proceeding, would be used in connection with StonCor’s self-
`
`leveling flooring products and could be promoted and sold to the same architects and building
`
`contractors as those to whom StonCor promotes and sells its self-leveling flooring products. As
`
`evidence of this, attached are materials available on StonCor’s website showing use of aggregate
`
`and of concrete (of which “stone” is a constituent) as an interface and underlayering for a
`
`StonCor self-leveling floor.
`
`5.
`
`The dates as set forth in Stonexpress’ counsel’ Declaration as regarding
`
`communications between the parties are correct; however, the characterizations of the
`
`communications between the parties are not something with which StonCor agrees. Nothing
`
`would be served by individually dissecting Stonexpress’ numerous self-serving characterizations
`
`accompanying the dates and describing the sequence of events.
`
`6.
`
`Stonexpress’ counsel’s statement that “However, I infer from StonCor’s pending
`
`motion to extend its trial period by forty-five (45) days that StonCor itself has not been willing to
`
`resolve this dispute despite the fact that Mr. Quinn and I reached agreement on what seemed to
`
`be all essential terms several months ago.” That inference on the part of counsel for Stonexpress
`
`is largely correct, but “all essential terms” leaves out a major sticking point on which the parties
`
`have not been able to reach agreement. It has never been the case that StonCor has not been
`
`willing to resolve this dispute; what has been the case is that the parties have been close to
`
`
`EX1 906416v1 05/18/10 10:37:23 AM
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`
`
`resolving the dispute, but one major point remains outstanding and that point does not seem to be
`
`one on which either side is willing to budge, at least at this time.
`
`7.
`
`As the positions of the parties on the remaining “sticking” point seemed to be
`
`getting clearer and clearer, and the differences between the parties seemed to be getting more and
`
`more unbridgeable, I filed the motion to extend StonCor’s testimony period to protect StonCor’s
`
`right to take testimony in the event settlement of this opposition proceeding could not be
`
`achieved.
`
`8.
`
`The operative wording in Stonexpress’ counsel’s Declaration is “on what seem to
`
`be all essential terms” regarding the settlement negotiations between the parties. Since the
`
`parties had not been able to bridge the gap separating the parties on the issue of settlement, I had
`
`no choice but to seek to extend StonCor’s testimony period in order to provide additional time to
`
`try to either bridge that gap or to provide the time to take testimony in this proceeding in order
`
`for StonCor to be able to support its position in the event opposition needs to go to a judgment
`
`on the merits.
`
`9.
`
`I take no blame and I make no excuses for any of the periods of non-
`
`communication as addressed in Stonexpress’ counsel Declaration, I again note that in the course
`
`of representing one of my principal clients in the case of Novatec, Inc. v. The Conair Group,
`
`Civil Action 09-cv-02887, which has recently settled, that case consumed, on a continuous basis
`
`from mid-Summer 2009 until very recently, nearly all of my time. However, at no time was
`
`StonCor unwilling to settle this opposition proceeding and in that regard, StonCor remains
`
`willing to settle this opposition proceeding if the gap separating the positions of the parties can
`
`be bridged.
`
`
`EX1 906416v1 05/18/10 10:37:23 AM
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`10.
`
`Once we were into the period for taking StonCor’s testimony in support of
`
`StonCor’s case-in-chief, as the Novatec v. The Conair Group case was winding down, I 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 intended to take StonCor’s deposition testimony in support
`
`of StonCor’s case-in-chief. This was consistent with my normal practice in which I try to secure
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`the agreement of counsel in advance as to the date for taking of a deposition so that if the date is
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`agreed upon in advance by all involved, namely opposing counsel, the opposing party, my client,
`
`our witness and any third party witness, it makes this much easier in that there are no objections
`
`to be raised as to the date once a notice of deposition has been served, since all involved have
`
`agreed to the date and locale in advance.
`
`11.
`
`I inquired twice of counsel for Stonexpress regarding the date for StonCor’s
`
`testimony in support of StonCor’s case-in-chief; neither time did I receive any response. Not
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`having received any reply, I filed the Motion to Extend StonCor’s testimony period by forty-five
`
`days since I will be out of the office after today until Thursday, 3 June on a personal matter.
`
`12.
`
`In the Declaration of Stonexpress’ counsel in paragraph 23, there is the assertion
`
`that StonCor has not made any substantive response to Stonexpress’ latest formulation of the
`
`troublesome point; a response to that will be sent today; StonCor will be awaiting a positive,
`
`forward-going reply.
`
`13.
`
`From the foregoing it should be clear that StonCor’s participation in settlement
`
`negotiations has been in good faith; there was and is no reason on the part of StonCor to delay
`
`those settlement negotiations; the only reason those negotiations were delayed from time to time
`
`was StonCor’s counsel’s participation in the patent infringement suit noted above. In that regard,
`
`it is well-established law of the Board that litigation, especially complex, hotly contested patent
`
`
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`76110.42601
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`
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`litigation, may well monopolize the time and attention of counsel, requiring counsel to obtain
`
`time extensions for other matters, including matters before the Board, for which that counsel is
`
`responsible. See Societa Per Azioni Chaianti Ruffino Espoertazione Vinicola Toscanna v. Colli
`
`Spolentini Soletoducale SCRL, 59 USPQ2d 1383 (TTAB 2001)
`
`14.
`
`Addressing paragraph 1 of the Declaration of counsel for Stonexpress, StonCor
`
`has every reason to believe that that is true.
`
`15.
`
`Addressing paragraph 2 of the Declaration of counsel for Stonexpress, as noted
`
`above StonCor agrees with this paragraph with the exception of Stonexpress’ counsel’s
`
`characterization that StonCor’s components of self-leveling flooring systems “do not use natural
`
`stone”. Moreover, StonCor does not agree with the assertion that “the parties different products
`
`and different channels of trade indicated from the start a very high probability that an agreement
`
`could be reached to avoid any possibility of confusion.” StonCor has always been interested in
`
`exploring settlement in this trademark opposition proceeding and in all of the other trademark
`
`opposition proceedings in which StonCor is involved. However, StonCor cannot agree that there
`
`was “from the start a very high probability that an agreement could be reached” as asserted by
`
`Stonexpress’ counsel.
`
`16.
`
`Addressing paragraph 3 of the Declaration of counsel for Stonexpress, the
`
`inference Stonexpress’ counsel has drawn from StonCor’s pending Motion to Extent its trial
`
`period by forty-five days that StonCor itself has not been willing to resolve this dispute is
`
`incorrect. As set forth above, StonCor moved to extend its trial period by forty-five days when it
`
`became apparent that the parties would not be able to reach agreement by the close of StonCor’s
`
`testimony period. StonCor filed that motion as a matter of self-protection in order that the
`
`StonCor testimony period not go by without testimony being taken. The inference drawn by
`
`
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`Stonexpress’ counsel in paragraph 3 of his Declaration that StonCor has not been willing to
`
`resolve the dispute is mistaken, and the contention that StonCor’s Motion would not be
`
`necessary is also incorrect for the reason noted above, namely StonCor’s preservation of its
`
`position and right to take testimony in this proceeding in the event an agreement could not be
`
`reached.
`
`17.
`
`Addressing paragraph 4 of the Declaration of counsel for Stonexpress, StonCor
`
`agrees with that paragraph.
`
`18.
`
`Addressing paragraphs 5 through 21 of the Declaration of counsel for
`
`Stonexpress, those paragraphs express, in Stonexpress’ self-serving language, the nature of the
`
`communications and lack of communications as between the parties during that period. As noted
`
`above, StonCor’s counsel was consumed with representation of Novatec, Inc. in the matter of
`
`Novatec, Inc. v. The Conair Group, Inc., Civil Action 09-cv-02887 as was pending in the United
`
`States District Court to the Eastern District of Pennsylvania.
`
`19.
`
`Addressing paragraph 22 of the Declaration of counsel for Stonexpress, StonCor
`
`does not agree that the new proposed version was “internally inconsistent” as asserted by counsel
`
`for Stonexpress. The “new proposed version” proffered by StonCor was intended to address all
`
`possibilities as regarding the two parties and marks that they might seek to use or register in the
`
`future.
`
`20.
`
`Further addressing paragraph 22 of the Declaration of counsel for Stonexpress,
`
`StonCor served pre-trial disclosures in an effort to move the matter forward in the event it would
`
`be necessary to take testimony and file the motion to add time to the trial period which was
`
`rapidly coming to a close.
`
`
`EX1 906416v1 05/18/10 10:37:23 AM
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`21.
`
`Addressing paragraph 24 of the Declaration of counsel for Stonexpress, StonCor
`
`is making a response to that proposal.
`
`22.
`
`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.
`
`23.
`
`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
`
`such fees to Deposit Account 50-1943.
`
` Respectfully submitted:
` FOX ROTHSCHILD LLP
`
`
`
`/Charles N. Quinn/
`
` Charles N. Quinn
` Counsel for Opposer, StonCor Group, Inc.
`
`
`
`
`
`
`
`17 May 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 906416v1 05/18/10 10:37:23 AM
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