Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91197240
`
`Defendant
`Trans Research International Trust Limited
`
`BRUNO TARABICHI
`OWENS TARABICHI LLP
`111 N MARKET ST, SUITE 730
`SAN JOSE, CA 95113
`UNITED STATES
`btarabichi@owenstarabichi.com
`Motion to Dismiss 2.132
`
`Bruno Tarabichi
`
`
`
`btarabichi@owenstarabichi.com
`/bruno tarabichil
`
`08/29/2012
`
`Trans Research — Motion for Judgment.pdf ( 7 pages )(78162 bytes)
`Tarabichi Declaration ISO Motion for Judgment.pdf (2 pages )(61294 bytes)
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA491654
`ESTTA Tracking number:
`08/29/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91197240
`Defendant
`Trans Research International Trust Limited
`BRUNO TARABICHI
`OWENS TARABICHI LLP
`111 N MARKET ST, SUITE 730
`SAN JOSE, CA 95113
`UNITED STATES
`btarabichi@owenstarabichi.com
`Motion to Dismiss 2.132
`Bruno Tarabichi
`btarabichi@owenstarabichi.com
`/bruno tarabichi/
`08/29/2012
`Trans Research - Motion for Judgment.pdf ( 7 pages )(78162 bytes )
`Tarabichi Declaration ISO Motion for Judgment.pdf ( 2 pages )(61294 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
`
`Owens Tarabichi Docket No. 291-2001
`
`
`FGN USA INC.
`
`
`Opposer,
`
`
`
`
`
`Opposition No. 91197240
`Application Serial No. 85/027,022
`Mark: TPR 20
`
`APPLICANT TRANS RESEARCH INTERNATIONAL TRUST LIMITED’S
`MOTION FOR JUDGMENT FOR OPPOSER’S FAILURE TO PROVE CASE
`Pursuant to 37 CFR § 2.132(a) and TBMP § 534, Applicant Trans Research International
`
`Trust Limited (“Applicant”) hereby moves the Trademark Trial and Appeal Board (the “Board”)
`
`for involuntary dismissal due to Opposer FGN USA Inc.’s (“Opposer”) failure to prosecute the
`
`instant opposition. Applicant respectfully requests that the instant opposition proceeding be
`
`dismissed with prejudice.
`
`This Motion is made on the ground that Opposer’s time for taking testimony has expired
`
`and Opposer did not take any testimony or offer any other evidence. As such, Opposer has failed
`
`to prove its case as a matter of law, and the instant opposition should be dismissed with
`
`prejudice.
`
`This Motion is supported by this Motion and the accompanying Memorandum, the
`
`pleadings on file in this proceeding, and the Declaration of Bruno W. Tarabichi.
`
`owens tarabichi llp
`Counselors At Law
`
`Applicant’s Motion for Judgment 
`
`
`TRANS RESEARCH INTERNATIONAL
`TRUST LIMITED,
`
`
`v.
`
`Applicant.
`
`
`
`
`
`

`
`MEMORANDUM OF POINTS AND AUTHORITIES
`
`I.
`
`INTRODUCTION
`
`Despite initiating the instant opposition, Opposer has taken no action in this opposition
`
`proceeding. Opposer did not make its pretrial disclosures and did not take any testimony or offer
`
`any evidence during its testimony period. Because Opposer’s testimony period has now expired,
`
`Opposer has failed to carry its burden of proof as a matter of law. Therefore, Applicant
`
`respectfully requests that the Board dismiss the instant opposition with prejudice.
`II.
`
`PROCEDURAL BACKGROUND
`A. The initial application and opposition
`On April 30, 2010, Applicant filed an application to register the TPR 20 trademark in
`
`connection with “topical pain relief medication; topical pain relief cream; anti-inflammatory
`
`cream” in International Class 5. The application was assigned Serial No. 85/027,022 and
`
`published for opposition on November 2, 2010.
`
`That same day, on November 2, 2010, Opposer filed a notice of opposition. The initial
`
`notice of opposition was completely deficient consisting solely of the following paragraph:
`
`“TPR20 Group – Trans Research International Trust Ltd., their Board of Directors and in
`
`particular Director Michael Van Der Horn, fraudulently appropriated proprietary APR15
`
`formula, promotional material existing customers and business partner lists, website structure
`
`and functionality, copyright material for personal gain.”
`
`On November 3, 2010, the Board set the initial schedule of dates for the opposition.
`
`Under that schedule, Applicant’s answer was due on or before December 13, 2010.
`B. Applicant moves to dismiss twice and the Board resets the schedule of dates
`In lieu of answering, Applicant filed a motion to dismiss on December 8, 2010. Rather
`
`than oppose Applicant’s motion to dismiss, Opposer filed an amended notice of opposition that
`
`same day on December 8, 2010. On March 24, 2011, the Board issued an order finding the
`
`motion to dismiss moot in light of the amended notice of opposition—although the Board did
`
`2 
`
`owens tarabichi llp
`Counselors At Law
`
`Applicant’s Motion for Judgment 
`
`

`
`dismiss some claims in the amended notice of opposition, including dilution, false suggestion of
`
`a connection, and deception.
`
`Because Applicant believed the remaining claims in the amended notice of opposition
`
`were not properly pled, Applicant filed a second motion to dismiss on April 15, 2011. Opposer
`
`did not bother to oppose the second motion to dismiss. In any event, the Board denied
`
`Applicant’s second motion to dismiss on August 18, 2011 and reset the schedule of dates as
`
`follows:
`
`Discovery Conference
`
`Initial Disclosures Due
`
`Discovery Closes
`
`Plaintiff’s Pretrial Disclosures
`
`November 15, 2011
`
`December 15, 2011
`
`May 13, 2012
`
`June 27, 2012
`
`Plaintiff’s 30 Day Trial Period Ends
`
`August 11, 2012
`
`Defendant’s 30 Day Trial Period Ends
`
`October 10, 2012
`
`These dates remain the operative dates in this proceeding.
`C. Opposer fails to participate in the discovery conference, serve initial disclosures,
`take discovery, serve pretrial disclosures, take testimony, or offer evidence
`
`Despite the Board’s schedule of dates, Opposer has failed to prosecute, and participate in,
`
`this opposition proceeding. In this regard, Opposer did not make itself available for the
`
`discovery conference, which the Board ordered to be held on or before November 15, 2011.
`
`Tarabichi Decl., ¶¶ 3–4. Likewise, Opposer failed to serve initial disclosures by the Board’s
`
`December 15, 2011 deadline. Tarabichi Decl., ¶¶ 5–6. Opposer did not propound any discovery
`
`during the discovery period. Tarabichi Decl., ¶¶ 7–8. Opposer also failed to make its pretrial
`
`disclosures. Tarabichi Decl., ¶¶ 9–10. And finally, Opposer did not take any testimony during
`
`its trial period or introduce any evidence. Tarabichi Decl., ¶¶ 11–12. Consequently, Applicant
`
`now moves for judgment for Opposer’s failure to prove its case.
`
`
`
`owens tarabichi llp
`Counselors At Law
`
`3 
`
`Applicant’s Motion for Judgment 
`
`

`
`III. ANALYSIS
`When a plaintiff in an opposition proceeding fails to take testimony or offer evidence
`
`during its testimony period, the defendant may move for judgment pursuant to 37 CFR
`
`§ 2.132(a). In this regard, 37 CFR § 2.132(a) states that
`
`If the time for taking testimony by any party in the position of
`plaintiff has expired and that party has not taken testimony or
`offered any other evidence, any party in the position of defendant
`may, without waiving the right to offer evidence in the event the
`motion is denied, move for dismissal on the ground of the failure
`of the plaintiff to prosecute. The party in the position of plaintiff
`shall have fifteen days from the date of service of the motion to
`show cause why judgment should not be rendered against him. In
`the absence of a showing of good and sufficient cause, judgment
`may be rendered against the party in the position of plaintiff. If the
`motion is denied, testimony periods will be reset for the party in
`the position of defendant and for rebuttal.
`The purpose of a motion under 37 CFR § 2.132(a) is to save the defendant the expense and delay
`
`of continuing with a trial where plaintiff has failed to offer any evidence during its testimony
`
`period. Litton Business Systems, Inc. v. J.G. Furniture Co. Inc., 190 USPQ 428 (TTAB 1976);
`
`TBMP § 534.02. In such cases, the Board does not hesitate to enforce its procedural deadlines
`
`and is justified in doing so. Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 1554 (Fed.
`
`Cir. 1991); Netcore Tech. v. Firstwave Tech., 2001 TTAB LEXIS 143, *6 (TTAB 2001)
`
`(“[c]lient and counsel share the duty to advance prosecution of the case”); Gaudreau v. American
`
`Promotional Events, Inc., 2007 TTAB LEXIS 24, *16 (TTAB 2007) (“dismissal of this
`
`proceeding is appropriate under Trademark Rule 2.132 because opposers’ lack of evidence
`
`means that they cannot meet their burden of proof as plaintiff in this case”); Atlanta-Fulton
`
`County Zoo, Inc. v. DePalma, 1998 TTAB LEXIS 9, *9–10 (TTAB 1998); Azor, Inc. v. Novell,
`
`Inc., 1996 TTAB LEXIS 452, *3–4 (TTAB 1996) (“we cannot overlook opposer’s total
`
`disregard of its procedural responsibilities in this case”) (non-precedential).
`
`Furthermore, in order for a plaintiff to request that its testimony period be reopened, the
`
`plaintiff must show good and sufficient cause. HKG Indus. v. Perma-Pipe, Inc., 1998 TTAB
`
`owens tarabichi llp
`Counselors At Law
`
`Applicant’s Motion for Judgment 
`
`4 
`
`

`
`LEXIS 399, *1–2(TTAB 1998). This standard is equivalent to the excusable neglect standard.
`
`Id. The Federal Circuit and the Board have defined excusable neglect as the
`
`failure to take the proper steps at the proper time, not in
`consequence of the party’s own carelessness, inattention, or willful
`disregard of the process of the court, but in consequence of some
`unexpected or unavoidable hindrance or accident ….
`Hewlett-Packard Co., 931 F.2d at 1552–53 . In other words, plaintiff’s carelessness, inattention,
`
`or willful disregard of dates does not suffice. See e.g., Hewlett-Packard Co., 931 F.2d 1551
`
`(Fed. Cir. 1991) (affirming Board’s denial to reopen based on the parties’ prior settlement
`
`negotiations); HKG Indus., 1998 TTAB LEXIS 399 (denying request to reopen testimony period
`
`despite death of plaintiff’s counsel); Netcore Tech., 2001 TTAB LEXIS at * 6 (belated
`
`withdrawal of attorney does not constitute excusable neglect).
`
`In the instant case, Opposer has completely ignored the Board’s schedule and failed to
`
`put on a case. In this regard, Opposer did not make itself available for the discovery conference,
`
`which the Board ordered to be held on or before November 15, 2011. Tarabichi Decl., ¶¶ 3–4.
`
`Likewise, Opposer failed to serve initial disclosures by the Board’s December 15, 2011 deadline.
`
`Tarabichi Decl., ¶¶ 5–6. Opposer failed to propound any discovery. Tarabichi Decl., ¶¶ 7–8.
`
`Opposer failed to make its pretrial disclosures. Tarabichi Decl., ¶¶ 9–10. And finally, Opposer
`
`did not take any testimony during its trial period or introduce any evidence. Tarabichi Decl., ¶¶
`
`11–12. Opposer’s testimony period has now expired, and Opposer will not be able to introduce
`
`any evidence to support its claims. As a result, Applicant is entitled to judgment, and the instant
`
`opposition should be dismissed with prejudice.
`
`Moreover, Applicant’s motion for judgment should be granted because Opposer will not
`
`be able to show good and sufficient case for its failure to put on a case. Opposer’s neglect does
`
`not stem from any unexpected or unavoidable hindrance or accident. Rather, Opposer has
`
`simply chosen not to participate in this case, willfully and repeatedly disregarding the Board’s
`
`schedule of dates. This does not constitute good cause or excusable neglect.
`
`owens tarabichi llp
`Counselors At Law
`
`Applicant’s Motion for Judgment 
`
`5 
`
`

`
`IV. CONCLUSION
`For all the foregoing reasons, Applicant respectfully requests that the Board grant its
`
`motion for judgment and dismiss the instant opposition with prejudice.
`
`
`Dated: August 29, 2012
`
`
`
`
`Respectfully submitted,
`
`Bruno W. Tarabichi
`OWENS TARABICHI LLP
`111 N. Market St., Suite 730
`San Jose, California 95113
`Tel. (408) 298-8204
`Fax (408) 521-2203
`btarabichi@owenstarabichi.com
`Attorneys for Applicant Trans Research
`International Trust Limited
`
`owens tarabichi llp
`Counselors At Law
`
`Applicant’s Motion for Judgment 
`
`6 
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the following document:
`
`APPLICANT TRANS RESEARCH INTERNATIONAL TRUST LIMITED’S MOTION
`FOR JUDGMENT FOR OPPOSER’S FAILURE TO PROVE CASE
`
`DECLARATION OF BRUNO TARABICHI IN SUPPORT OF APPLICANT’S MOTION
`FOR JUDGMENT
`
`has been served on
`
`Marco D’Amici
`FGN USA Inc.
`1358 West Georgia Street
`RPO BOX 76025
`Vancouver, BC V6E 4S2
`Canada
`
`by mailing such document on August 29, 2012 by First Class Mail, postage prepaid.
`
`I declare under penalty of perjury under the laws of the State of California and the United States
`of America that the foregoing is true and correct.
`
`
`
`Dated: August 29, 2012
`
`
`
`
`
`
`Bruno W. Tarabichi
`
` 
`
`7 
`
`owens tarabichi llp
`Counselors At Law
`
`Applicant’s Motion for Judgment 
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Owens Tarabichi Docket No. 291-2001
`
`
`FGN USA INC.
`
`
`Opposer,
`
`
`
`
`
`Opposition No. 91197240
`Application Serial No. 85/027,022
`Mark: TPR 20
`
`
`TRANS RESEARCH INTERNATIONAL
`TRUST LIMITED,
`
`
`v.
`
`Applicant.
`
`
`
`
`
`DECLARATION OF BRUNO TARABICHI IN SUPPORT OF
`APPLICANT’S MOTION FOR JUDGMENT
`I, BRUNO TARABICHI, declare as follows:
`1.
`
`I am an attorney at law, duly admitted into practice before all courts for the State
`
`of California. I am a partner of the law firm Owens Tarabichi LLP, counsel for Applicant Trans
`
`Research International Trust Limited (“Applicant”). I make this Declaration in support of
`
`Applicant’s Motion for Judgment for Plaintiff’s Failure to Prove Case. The matters set forth
`
`herein are of my own personal knowledge, and, if called upon to testify as to such matters, I
`
`could and would do so.
`2.
`
`As detailed in the paragraphs below, Opposer has continually refused to
`
`prosecute, and participate, in this opposition proceeding—despite the fact that Opposer initiated
`
`the proceeding.
`
`Opposer Fails to Make Itself Available for a Discovery Conference by the Deadline
`3.
`
`According to the Board’s August 18, 2011 Order, the parties were required to
`
`conduct a discovery conference on or before November 15, 2011.
`4.
`
`Opposer made no attempt to communicate or coordinate the holding of a
`
`discovery conference with Applicant’s counsel. Accordingly, a discovery conference was never
`
`held.
`
`owens tarabichi llp
`Counselors At Law
`
`Tarabichi Decl. ISO Mtn. for Judgment 
`
`

`
`Opposer Fails to Serve Its Initial Disclosures
`5.
`
`According to the Board’s August 18, 2011 Order, the parties were required to
`
`serve their initial disclosures on or before December 15, 2011.
`6.
`
`Opposer never served its initial disclosures.
`
`Opposer Did Not Take Discovery
`7.
`
`According to the Board’s August 18, 2011 Order, discovery opened on November
`
`15, 2011 and closed on May 13, 2012.
`8.
`
`To date, Opposer has not served any discovery requests of any kind or noticed
`
`any depositions. As such, Opposer wholly failed to participate in good faith in discovery during
`
`this opposition proceeding.
`
`Opposer Did Not Serve Its Pretrial Disclosures
`9.
`
`According to the Board’s August 18, 2011 Order, Opposer was required to serve
`
`its initial disclosures on or before June 27, 2012.
`10.
`
`To date, Opposer has not served its pretrial disclosures.
`
`Opposer Did Not Take Testimony or Offer Evidence
`11.
`
`According to the Board’s August 18, 2011 Order, Opposer’s 30 day trial period
`
`ended on August 11, 2012.
`12.
`
`Opposer did not take any testimony or offer any evidence whatsoever during its
`
`testimony period.
`
`I declare under penalty of perjury under the laws of the State of California that the
`
`foregoing is true and correct and that this declaration was executed on August 29, 2012 at San
`
`Bruno W. Tarabichi
`
`2 
`
`Jose, California.
`
`
`
`
`
`
`
`
`
`owens tarabichi llp
`Counselors At Law
`
`Tarabichi Decl. ISO Mtn. for Judgment