Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA617257
`ESTTA Tracking number:
`07/23/2014
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91207982
`Defendant
`iConnectUS LLC
`ANDREW H DO
`OSWALD AND YAP
`16148 SAND CANYON AVENUE
`IRVINE, CA 92618
`UNITED STATES
`ado@oswald-yap.com
`Opposition/Response to Motion
`Andrew H. Do
`ado@oswald-yap.com
`/Andrew H. Do/
`07/23/2014
`2014-07-23 opp 2 mtn 2 compel dis.pdf(26681 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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`222,605
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91207982
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`In the Matter of Serial No. 85/626,388
`Filed: May 15,2012
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`Crytek Entertainment GmbH, a/k/a,
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`Gface GmbH
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`Opposer,
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`Applicant.
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`v.
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`iConnectUS LLC.
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`APPLICANT’S OPPOSITION TO OPPOSER’S MOTION TO COMPEL DISCOVERY
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`Applicant iConnectUS LLC (“Applicant”) by and through its attorneys submits
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`this Opposition to Opposer’s Gface GmbH (“Opposer”) motion to compel discovery which was
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`filed on July 3, 2013.
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`As outlined in Opposer’s motion to compel, Opposer’s attorney Mr. Ned Branthover was
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`in communication with Applicant’s prior attorney Mr. Mark Morrison regarding the timing of
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`Applicant’s responses to Opposer’s First Set of Interrogatories and First Request for Production
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`of Documents.
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`Mr. Morrison withdrew as Applicant’s counsel on May 27, 2013. On June 7, 2013
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`Opposer was notified by attorney Barak Vaughn, who indicated that he was in the process of
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`being retained by Applicant. On June 26, 2013 Mr. Branthover emailed Mr. Vaughn and
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`Applicant to discuss the timing of Applicant’s responses. Later that same day, Mr. Vaughn
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`emailed Mr. Branthover that Mr. Vaughn would not be representing Applicant in this matter.
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`Applicant did not hear from Opposer or its counsel Mr. Branthover again after June 26, 2013.
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`On July 3, 2013, Opposer filed its Motion to Compel Discovery Responses. This
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`Motion was mailed to an ineffective address (2299 Pacific Ave., Costa Mesa, CA 92627) that
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`was provided by Applicant’s previous attorney, Mark Morrison, at the time of the substitution on
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`May 27, 2013. Consequently, Applicant did not receive notice of this Motion.
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`Due to Applicant’s failure to file any opposition, on August 19, 2013 the TTAB issued an
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`Order compelling Applicant to file its responses to Opposer’s discovery requests by September
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`18, 2013. This Order was also mailed to the improper address above, and Applicant never
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`received it.
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`On September 23, 2013 Opposer filed its Motion for Entry of Default Judgment due to
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`Applicant’s failure to comply with the TTAB Order of August 19, 2013. Opposer’s Motion
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`was again served at the same 2299 Pacific Ave. address as listed above. Therefore, Applicant
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`also did not receive notice of this Motion.
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`On September 24, 2013 the TTAB issued an Order suspending proceedings pending
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`disposition of Opposer’s Motion for Entry of Default Judgment. This Order was sent to the
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`same ineffective address for Applicant and returned undelivered by the United States Postal
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`Service. The TTAB was then able to locate Applicant’s correct address from its website online
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`and thereafter issued an Order on March 3, 2014 granting Applicant fifteen days from that date
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`to file its opposition.
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`Applicant retained its current counsel, Andrew Do of OSWALD & YAP, APC, on March
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`18, 2014 who immediately filed on March 19, 2014 a Motion for Extension of Time to Respond
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`to Opposer’s Motion for Entry of Default Judgment pursuant to the TTAB’s Order of March 3,
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`2014. Applicant’s Petition was granted on April 24, 2014, and Applicant was given ten days
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`from that date to file its Opposition.
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`On July 8, 2014 the TTAB granted’s Applicant’s Motion to Set Aside the Default
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`Judgment and allowed Applicant’s fifteen days from that date to file its Opposition to Opposer’s
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`Motion to Compel.
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`As outlined above, Applicant did not hear from Opposer’s attorney Mr. Branthover again
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`after Mr. Vaughn indicated he would not represent Applicant. Instead of contacting Applicant
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`directly to discuss the deadline for the discovery responses, Mr. Branthover left the situation in
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`an ambiguous status because Applicant had no way of knowing what was discussed between Mr.
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`Branthover and Mr. Vaughn. Mr. Branthover’s decision to jump the gun and file a motion to
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`compel without attempting to contact Applicant, coupled with his service of the motion at the
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`wrong address of Applicant, placed Applicant in an unfair situation. Regarding the discovery
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`responses, Applicant has hired new counsel and is prepared to respond to Opposer’s discovery
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`requests.
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`In view of Applicant’s lack of notice and Opposer’s contributory neglect in clarifying the
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`deadline of the responses, there is ample evidence to demonstrate excusable neglect on the part
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`of Applicant. Applicant respectfully request that the Board deny Opposer’s Motion to Compel
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`and allow Applicant 60 days to respond to Opposer’s First Set of Interrogatories and First
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`Request for Production of Documents.
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`Date: July 23, 2014
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`Respectfully Submitted,
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`Andrew H. Do
`OSWALD & YAP, APC
`16148 Sand Canyon Avenue
`Irvine, California 92618
`Tel: 949-788-8900
`Fax: 949-788-8980
`Email: ado@oswald-yap.com
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`Attorneys for Applicant
`iConnectUS LLC
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`CERTIFICATE OF SERVICE
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`I hereby certify that this 23rd day of July, 2014, a copy of the foregoing was sent via
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`Email, Facsimile and U.S. first-class mail to the following:
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`Mr. Ned W. Branthover
`ABELMAN, FRAYNE & SCHWAB
`666 Third Avenue
`New York, New York 10017
`Tel: 212-949-9022
`Fax: 212 949-9190
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`Email: nwbranthover@lawabel.com
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`Andrew H. Do
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