Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA346340
`ESTTA Tracking number:
`05/07/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91187731
`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
`Applicant Cross-Motion 91187731.pdf ( 4 pages )(34027 bytes )
`StonExpress_Declaration of Applicant Counsel 91187731.pdf ( 7 pages )(57225
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`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. 91187731
`
`Application Ser. No. 77/414,515
`Mark: STONEXPRESS
`
`:
`
`.
`
`.
`
`APPLICANT’S CONDITIONAL CROSS-MOTION TO RE-OPEN DISCOVERY
`
`Applicant StoneXpress, Inc., hereby moves this Board to re—open discovery, in the event
`
`that the pending motion of Opposer StonCor Group, Inc., is not denied. This is Applicant's first
`
`motion for additional time in this matter, although there have been two stipulated suspensions
`
`approved by the Board pending settlement negotiations. Discovery closed on January 30, 2010;
`
`Opposer's Pretrial Disclosures were due March 16, 2010 and served April 21, 2010; Opposer's
`
`Trial Period ended April 30, 2010, subject to Opposer's pending motion to extend that date for 45
`
`days; Defendant's Pretrial Disclosures will be due May 15, 2010, unless one of these motions is
`
`granted.
`
`The basis of the motion is that StonCor's pending motion discloses that its counsel has
`
`been so thoroughly occupied by a "hotly contested patent infringement suit" that he has been
`
`unable to attend to this opposition since soon after initiating it, resulting in (1) two months of
`
`silence after an initial flurry of discovery, ended by agreement
`
`to the basic concept of a
`
`settlement agreement and a stipulated motion for a 90-day suspension less than two weeks before
`
`expert disclosures were due; (2) three more months of silence broken by a draft outline for a
`
`settlement agreement and a stipulated motion for a second 90-day suspension three weeks after
`
`expert disclosures were due;
`
`(3) another three months of silence broken by a request for
`
`

`
`stipulation to a third suspension less than ten days before the close of discovery; and (4) yet
`
`another three months of silence broken by a revised draft, one week before StonCor's trial period
`
`was to end, followed almost immediately by StonCor's pending motion for a unilateral extension
`
`of its own deadline. Not having known that StonCor's counsel was too busy with other things to
`
`prosecute this opposition, StoneXpress reasonably inferred from StonCor's willingness to allow
`
`its own deadlines to slip by that the parties were literally minutes away from concluding a
`
`settlement agreement.
`
`If that were true, however, StonCor would have devoted its efforts to
`
`concluding the settlement instead of seeking more time for itself.
`
`If the Board concludes that StonCor's participation in settlement negotiations has been a
`
`mere ruse to buy time to the prejudice of StoneXpress, or that StonCor's pre—occupation with
`
`other matters otherwise does not justify its lack of prosecution of this opposition, then StonCor's
`
`pending motion for a unilateral extension of time should be denied.
`
`In the alternative, if the
`
`Board concludes that StonCor's failure to prosecute this opposition has been in good faith and
`
`that it should be permitted more time to prepare and present its case, then StoneXpress submits
`
`that it should be allowed more time as well and respectfully requests that this conditional motion
`
`be granted to restore both parties to the calendar status they held when the last stipulated
`
`suspension was entered, by re-setting the close of discovery for 90 days after entry of the Board's
`
`order on this motion.
`
`Respectfully submitted this
`
`2+/Lday of May, 2010.
`
`BAKER DONELSON BEARMAN
`
`CALDWELL & BERKOWITZ, P.C.
`
`
`
`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. 91187731
`
`Application Ser. No. 77/414,515
`Mark: STONEXPRESS
`
`:
`
`.
`
`'
`
`CERTIFICATE OF SERVICE
`
`This will certify that I have this day served the following person with a true and complete
`
`copy of the foregoing 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 flay of May, 2010.
`
` Joshua Trop .3
`
`

`
`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. 91187731
`
`Application Ser. No. 77/414,515
`Mark: STONEXPRESS
`
`:
`.
`
`.
`
`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
`
`I, JOSHUA TROPPER, declare:
`
`1.
`
`I am an attorney at law, duly admitted to practice and in good standing before the
`
`courts of the States of New York, California, Georgia and Massachusetts; the United States
`
`District Courts for the Southern and Eastern Districts of New York, the Northern, Southern and
`
`Central Districts of California,
`
`the Eastern District of Wisconsin,
`
`the Northern District of
`
`Georgia, the Eastern District of Tennessee and the Districts of Massachusetts and Colorado; the
`
`United States Courts of Appeals for the Ninth and Eleventh Circuits; and the United States
`
`Supreme Court.
`
`I am Of Counsel to the law firm of Baker, Donelson, Bearman, Caldwell &
`
`Berkowitz, P.C., and am attorney of record for Applicant StoneXpress, Inc., in this proceeding.
`
`2.
`
`This is one of two oppositions initiated by Opposer StonCor Group, Inc., on
`
`November 26, 2008, to parallel applications filed by Applicant StoneXpress, Inc., for the name
`
`"StoneXpress" (77/414,515) and for its logotype design based on that name (77/415,370).
`
`StoneXpress imports and markets marble and other forms of natural stone products for building
`
`construction.
`
`StonCor has established numerous marks for use in various aspects and
`
`

`
`components of self—leveling flooring systems that do not use natural stone. StonCor's marks
`
`start, as does its own name, with the four letters "Ston" but never followed by the "e" that would
`
`complete the word "stone.
`
`StonCor has not asserted any expectation of monopolizing the word
`
`H
`
`"stone," so 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.
`
`3.
`
`At all times during the past year, all communications with StonCor's counsel,
`
`Charles N. Quinn, have been courteous and professional.
`
`I have no reason to doubt any of the
`
`statements made in his declaration or in the motion it supports. However, I infer from StonCor's
`
`pending motion to extend its trial period by 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.
`
`If that inference is mistaken, StonCor's motion for an
`
`extension of time should not be necessary.
`
`If the inference is valid, then the Board should be
`
`aware of the following additional circumstances in considering whether to grant StonCor's
`
`motion or StoneXpress's conditional cross—motion:
`
`4.
`
`The original schedule in these matters required expert disclosures by July 4, 2009,
`
`with discovery closing on August 3 and StonCor's 30-day trial period ending November 1, 2009.
`
`5.
`
`On May 6, 2009, I contacted Mr. Quinn and proposed a concept for settlement.
`
`To preserve the confidentiality of the settlement negotiations, I do not attach copies of the
`
`settlement correspondence to this declaration, but am able to do so if any dispute arises as to the
`
`accuracy of this recitation of events.
`
`6.
`
`On June 15, 2009, after several weeks of silence, I sent an e-mail to Mr. Quinn
`
`urging him to contact me if StonCor was interested in settling. Two days later, he did, and
`
`offered to draft "an initial set of points/issues for consideration" and suggested asking for a 90-
`
`

`
`day suspension to work out the details.
`
`I confirmed StoneXpress's agreement to both suggestions
`
`within the hour.
`
`7.
`
`StonCor prepared and filed a consent motion for a 90-day suspension, which was
`
`granted on June 23, 2009, setting expert disclosures to be due by October 2, discovery closing on
`
`November 1 and StonCor's 30-day trial period ending January 30, 2010, if the controversy were
`
`not resolved.
`
`8.
`
`Two weeks later, on July 9, 2009, I asked Mr. Quinn whether I might have missed
`
`something from him; his response was "No, I've been snowed."
`
`9.
`
`On July 20, 2009, I inquired again, but received no response.
`
`10.
`
`I asked again on August 4, 2009, and received an "Out of Office AutoReply" e-
`
`mail.
`
`11.
`
`On August 13, 2009, I sent an e—mail expressing concern that the clock on this
`
`opposition was running; I received no response.
`
`12.
`
`On August 26, 2009, I offered to speak with one of Mr. Quinn's colleagues if he
`
`was not going to be available.
`
`I received no response.
`
`13.
`
`Finally, on September 15, 2009, less than a week before the suspension was to run
`
`out, Mr. Quinn telephoned and asked for clarification of two items.
`
`I confirmed that his
`
`understanding of those two matters was correct, and on September 17, 2009, he agreed to draft a
`
`formal settlement agreement based on that understanding.
`
`14.
`
`On October 15, 2009, Mr. Quinn proposed a more detailed set of points to be
`
`included in the agreement. Nothing in connection with that proposal indicated at any sense of
`
`urgency; the e—mail transmitting the proposal said "I look forward to hearing from you at your
`
`convenience."
`
`

`
`15.
`
`Nonetheless, the very next day, Mr. Quinn expressed concern that StoneXpress
`
`had not yet responded, and suggested another suspension of the calendar.
`
`16.
`
`I agreed, and a second consent motion for suspension was granted on October 20,
`
`2009. This one set the deadline for expert disclosures as December 31, 2009, the close of
`
`discovery on January 30, 2010, and the end of StonCor's 30-day trial period at April 30, 2010.
`
`The schedule has not changed since.
`
`17.
`
`On October 21, 2009, the day after the second suspension order, I confirmed
`
`agreement with all
`
`the points Mr. Quinn had proposed, suggesting only one "tweak" to the
`
`phrasing of a single item.
`
`I received no response.
`
`18.
`
`On November 6, 2009,
`
`I again confirmed StoneXpress's agreement with
`
`StonCor's proposal subject to the single modification I had suggested two weeks earlier.
`
`I
`
`received an "Out of Office AutoReply" e—mail.
`
`19.
`
`On November 24, 2009, I sent another follow-up e—mail, asking whether there
`
`was a problem.
`
`I received no response.
`
`20.
`
`On January 19, 2010, after the suspension had already lapsed, a paralegal in Mr.
`
`Quinn's office contacted me and suggested yet another suspension.
`
`I responded the following
`
`day by urging consummation of the nearly-complete settlement agreement, which seemed likely
`
`to "take less time than creating and filing another motion to extend."
`
`21.
`
`I did not hear anything further from StonCor for three months.
`
`22.
`
`Finally, on April 20, 2010, almost three months after discovery closed, more than
`
`a month after StonCor's pretrial disclosures had been due (on March 16, 2010), and only ten days
`
`before StonCor's trial period was to end, Mr. Quinn proposed a revision to that one clause that
`
`had required a fix. Regrettably, this new proposed revision was internally inconsistent (referring
`
`

`
`to potential marks that commence both with the four letters "S T O N" and with the letter "e").
`
`The next morning, StonCor served pretrial disclosures (more than a month late), sought
`
`to
`
`schedule a trial deposition on short notice, and filed the present motion to add 45 days to its 30-
`
`day trial period.
`
`23.
`
`On April 23, 2009, after StonCor had rejected my latest formulation of the
`
`troublesome point,
`
`I
`
`invited Mr. Quinn to propose an alternative, saying:
`
`"If StonCor is
`
`interested in resolving this, just not with the specific terms that you yourself just proposed earlier
`
`today, then please suggest something that might work. On the other hand, if you are now telling
`
`me that StonCor will not agree, and never would have agreed, to settle on terms that would
`
`permit StoneXpress to continue using its name, then we will have to deal with that as best we
`
`can." StonCor has not yet made any substantive response, requiring StoneXpress to file this
`
`cross-motion.
`
`The undersigned being warned that willful false statements and the like are punishable by
`
`fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and
`
`the like may jeopardize the validity of the application or document or any registration resulting
`
`therefrom, declares that all statements made of his/her own knowledge are true; and all
`
`statements made on information and belief are believed to be true.
`
`Respectfully submitted this flay of May, 2010.
`
`BAKER DONELSON BEARMAN
`
`CALDWE L & BERKOWITZ, P.C.
`
` JOSHUA TROP ER
`
`Attomeysfor Applic
`
`

`
`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. 91187731
`
`Application Ser. No. 77/414,515
`Mark: STONEXPRESS
`
`I
`
`‘
`
`.
`
`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 iwiay of May, 2010.
`
` Joshua Tropper