Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`91211014
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`Defendant
`ACS AYOUB CARPET SERVICE
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`ROBERT J KENNEY
`BIRCH STEWART KOLASCH & BIRCH LLP
`PO BOX 747
`FALLS CHURCH, VA 22040-0747
`UNITED STATES
`maiIroom@bskb.com
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`Other Motions/Papers
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`Robert J. Kenney
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`rjk@bskb.com, johnst@bskb.com, Michae|.T.Smith@bskb.com,
`maiIroom@bskb.com
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`
`
`/Robert J. Kenneyl
`01/07/2014
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`2014-01-07 Memorandum in Opposition to Opposers' Motion for Continued
`Discovery (fina|).pdf(165451 bytes )
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA580479
`ESTTA Tracking number:
`01/07/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91211014
`Defendant
`ACS AYOUB CARPET SERVICE
`ROBERT J KENNEY
`BIRCH STEWART KOLASCH & BIRCH LLP
`PO BOX 747
`FALLS CHURCH, VA 22040-0747
`UNITED STATES
`mailroom@bskb.com
`Other Motions/Papers
`Robert J. Kenney
`rjk@bskb.com, johnst@bskb.com, Michael.T.Smith@bskb.com,
`mailroom@bskb.com
`/Robert J. Kenney/
`01/07/2014
`2014-01-07 Memorandum in Opposition to Opposers' Motion for Continued
`Discovery (final).pdf(165451 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
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`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
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`AYOUB, INC., and
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`AYOUB SUPPLY, LLC
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`Opposers,
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`v.
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`Opposition No.: 91211014
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`Mark: AYOUB
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`Application Serial No.: 85/566,860
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`ACS AYOUB CARPET SERVICE
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`Applicant.
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`MEMORANDUM IN OPPOSITION TO
`OPPOSERS’ MOTION FOR CONTINUED DISCOVERY
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`INTRODUCTION
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`For parties that have (1) opposed ACS’ registration of the AYOUB mark; (2) sued ACS
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`in federal court in connection with the same mark; and (3) fully negotiated and signed an
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`agreement relating to the use of the AYOUB mark, Opposers have surprisingly little knowledge
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`of facts supporting their claims. Opposers ignored their duty to conduct a reasonable
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`investigation prior to filing their Notice of Opposition, disregarded case law on fraud counter to
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`their positions, failed to diligently seek discovery, and now, when faced with a Motion for
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`Summary Judgment, complain because ACS has refused to prove Opposers’ case for them. This
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`is Opposers’ case, and yet they have no evidence to place into dispute the material facts
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`necessary to support their claims. Opposers’ motion for continued discovery should be denied,
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`and ACS’ motion for summary judgment should be granted without further briefing.
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`In its motion for summary judgment, ACS pointed to the total absence of evidence to
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`support Opposers’ claims of falsity and fraud (Count III) and failure to function as a mark (Count
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`IV). In response, rather than identifying any facts and evidence Opposers uncovered during their
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`Opposition No. 91211014
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`Application Serial No. 85/566,860
`Page 2
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`reasonable investigation prior to filing their Notice of Opposition, they argued they need more
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`time to find evidence to support the facts as they would like them to be. There is no evidence
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`supporting either claim, however, which makes summary judgment appropriate. No amount of
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`time will suffice to find the non-existent evidence.
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`With regard to Opposers’ likelihood of confusion claim, ACS identified publically
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`available documents corroborating Ayoub Rug Cleaning Co., Inc.’s use of, and establishment of
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`trademark rights in, the AYOUB mark at least as early as the 1960s and through the late 1990s.
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`ACS further relied on an Asset Purchase Agreement, of which Opposers were aware, to establish
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`the transfer of the AYOUB mark and the associated goodwill from Ayoub Rug Cleaning Co.,
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`Inc. to ACS. Opposers posited no theory of their case under which they can establish priority of
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`use before Ayoub Rug Cleaning Co, Inc.
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`ARGUMENT
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`Opposers motion for continued discovery should be denied because they have been
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`dilatory in seeking discovery and information relevant to the claims at issue in this Opposition.
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`Opposers have failed to explain or justify their need for further discovery. The information they
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`seek is not relevant to the claims at issue, and Opposers have no meritorious basis for opposing
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`ACS’ motion for summary judgment.
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`A. OPPOSERS’ MOTION FOR CONTINUED DISCOVERY SHOULD BE DENIED
`BECAUSE OPPOSERS FAILED TO DILIGENTLY PURSUE DISCOVERY OF
`FACTS NECESSARY TO PROVE THE ELEMENTS OF THEIR CLAIMS.
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`Opposers advance two overarching arguments to justify their need for additional time for
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`discovery: (1) ACS has stonewalled in discovery and is preventing Opposers from obtaining
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`information necessary to support their claims, and (2) Opposers need more time to obtain
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`Opposition No. 91211014
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`Application Serial No. 85/566,860
`Page 3
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`information from third parties with relevant information. Neither argument justifies the need for
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`additional time for discovery, and Opposers’ motion should be denied.
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`On September 14, 2013, Opposers served their first set of document requests.
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`On October 1, 2013, Opposers served their first set of interrogatories and second set of
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`document requests.
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`On October 24, 2013, ACS served its objections and responses to Opposers’ first
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`document requests.
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`On October 31, 2013, ACS served its objections and responses to Opposers’ first set of
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`interrogatories and second document requests.
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`On November 13, 2013, counsel for ACS emailed a draft Protective Order to Opposers’
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`counsel for review and execution prior to document production. A copy of the email submitting
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`ACS’ proposed Protective Order is attached hereto as Exhibit 1. ACS’ counsel never received a
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`signed copy of the Protective Order or suggested revisions or objections to the Protective Order.
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`Opposers acknowledge that ACS timely responded to Opposers’ discovery requests.
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`Opposers complained about ACS’ Initial Disclosures, which were supplemented by ACS after
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`receiving Opposers’ objection. Opposers have lodged no objections or otherwise provided detail
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`regarding their perceived insufficiencies in ACS’ discovery responses. There has been no meet
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`and confer to discuss the content of ACS’s responses, and there have been no discussions or
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`requests for ACS to supplement its responses. Until their response to ACS’ motion for summary
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`judgment, Opposers had not provided any detail regarding their perceived deficiencies in the
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`discovery responses of ACS. Despite their assertions to the contrary, Opposers have not
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`diligently sought discovery nor availed themselves of the Rules of Civil Procedure in addressing
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`Opposition No. 91211014
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`Application Serial No. 85/566,860
`Page 4
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`discovery responses alleged to be deficient. See Rivera-Torres v Rey-Hernandez, 502 F.3d 7, 11
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`(1st Cir. 2007) (Plaintiffs' Fed. R. Civ. P. 56(f) motion failed to show good cause for their
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`professed inability to conduct desired discovery at earlier date; they did not demonstrate that they
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`seasonably availed themselves of any of usual remedies under Fed. R. Civ. P. 37 for failure of
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`production during discovery period.).
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`ACS’ bases for summary judgment are straightforward and premised on publically
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`available information as easily accessible to Opposers as to ACS. Opposers cannot establish the
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`priority of use necessary to support a claim for likelihood of confusion. ACS submitted evidence
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`consisting of telephone book advertisements that show use of AYOUB as a mark by Ayoub Rug
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`Cleaning Co., Inc. in connection with rug care services as early as the 1960s, which is well-
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`before any date of first use to which Opposers can claim priority. The telephone books were
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`accessed by ACS at the public library where they remain available to Opposers for review. ACS
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`submitted a copy of the Asset Purchase Agreement by which it acquired the assets, including the
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`AYOUB “name” and associated goodwill from Ayoub Rug Cleaning Co., Inc. Such is the basis
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`for ACS’ claim to its earlier priority in the AYOUB mark.
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`Similarly, with regard to Opposers’ argument that AYOUB is primarily merely a
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`surname that has not acquired distinctiveness, ACS relied on the same publically available
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`telephone book advertisements to establish Ayoub Rug Cleaning Co., Inc. used the AYOUB
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`mark substantially exclusively for decades and that the mark therefore acquired distinctiveness.
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`This information is not in the possession, custody, or control of ACS and it is equally accessible
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`to Opposers. No additional discovery is required for Opposers to obtain this and similar
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`information.
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`Opposition No. 91211014
`Application Serial No. 85/566,860
`Page 5
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`ACS confirmed it did not commit fraud on the Trademark Office as evidenced by the fact
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`it owns another federal trademark registration in the name ACS Ayoub Carpet Service, and the
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`publically available corporate records that show Danco, Inc. trades as, and has registered, various
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`fictitious names incorporating ACS, AYOUB, and CARPET SERVICE in various permutations
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`and combinations. Danco, Inc. and ACS Ayoub Carpet Service are one in the same as evidenced
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`by the public records.
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`Finally, the basis of Opposers’ allegation that ACS is estopped from registering the
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`AYOUB mark is a fully negotiated Settlement Agreement to which Opposers were parties and in
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`which Opposers were fully represented by counsel. Opposers provide no support for their
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`assertion they need additional discovery to obtain information about an agreement to which they
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`are parties.
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`Similarly with regard to discovery from third parties, Opposers provided no evidence of
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`their attempts to obtain information from third parties alleged to have information relevant to
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`Opposers’ claims. For example, there is no indication Opposers have subpoenaed documents or
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`testimony from third parties and that those attempts have been rebuffed. Opposers provide
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`nothing substantive to corroborate that they have diligently sought relevant information from
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`third parties, nor do they identify by name who such critical third party witnesses might be.
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`Opposers cannot now seek to stave off summary judgment under the guise of the need for
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`additional discovery. See, e.g., United States v Bob Stofer Oldsmobile-Cadillac, Inc., 766 F.2d
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`1147, 1153 (7th Cir. 1985)(Party who has been dilatory in discovery may not use Rule 56(f) to
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`gain continuance where he has made only vague assertions that further discovery would develop
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`genuine issues of material fact.); Acceleron, LLC v Hewlett-Packard Co., 755 F. Supp.2d 551,
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`Opposition No. 91211014
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`Application Serial No. 85/566,860
`Page 6
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`555 (D. Del. 2010)(Additional discovery under Fed. R. Civ. P. 56(f) was not justified because
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`patent owner, which asserted patent infringement, failed to diligently pursue discovery necessary
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`to prove elements of claims asserted in its complaint during fact discovery period; court was not
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`convinced that patent owner was unaware of its burden to prove infringing customer
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`configurations until motions for summary judgment on non-infringement were filed).
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`Opposers’ motion for continued discovery should be denied because Opposers have not
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`diligently sought discovery and they should not reap the benefits of the protections afforded
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`under Fed. R. Civ. P. 56(d).
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`B. OPPOSERS MOTION FOR CONTINUED DISCOVERY SHOULD BE DENIED
`BECAUSE THEY FAILED TO SHOW GOOD CAUSE FOR THEIR INABILITY
`TO CONDUCT DISCOVERY OR OBTAIN INFORMATION MATERIAL TO
`THE CLAIMS AT ISSUE IN THIS OPPOSITION.
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`A party seeking continued discovery does not need to know precise content of requested
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`discovery, but does need to give the court some idea of how sought-after discovery might
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`reasonably be supposed to create a factual dispute; mere fleeting mention of matter, without
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`description of its likely relevance, does not suffice to alert the court to the potential importance
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`of undiscovered items. Enplanar, Inc. v Marsh, 11 F.3d 1284, 1292 (5th Cir. 1994). In the
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`present case, Opposers failed to explain their need for additional information. Instead, Opposers
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`refer to their theory of the case without explaining how the information they require fits into or
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`supports that theory and how it will create a genuine issue of material fact sufficient to preclude
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`summary judgment. Rule 56(f) cannot be relied upon to defeat a summary judgment motion
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`where the result of the continuance to obtain further information would be wholly speculative.
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`Contemporary Mission v. United States Postal Serv., 648 F.2d 97, 107 (2d Cir. 1981).
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`Opposition No. 91211014
`Application Serial No. 85/566,860
`Page 7
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`Opposers provide no theory of their case by which they can (1) antedate Ayoub Rug
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`Cleaning Co, Inc.’s priority date, (2) establish the AYOUB mark did not acquire distinctiveness,
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`(3) establish ACS committed fraud on the Trademark Office, or (4) prove ACS is estopped from
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`registering the AYOUB mark, and for which additional discovery is needed. Further discovery
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`is not required where there is no reason to believe that it will lead to the denial of a pending
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`motion for summary judgment. Pacific Service Stations Co. v. Mobil Oil Corp., 689 F.2d 1055,
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`1066 (Temporary Emergency Court of Appeals 1982). Rule 56(f) is not a shield that can be
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`raised to block a motion for summary judgment without even the slightest showing by the
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`opposing party that its opposition is meritorious. Lamb’s Patio Theatre, Inc. v. Universal Film
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`Exchanges, Inc., 582 F.2d 1068, 1071 (7th Cir. 1978). Opposers failed to suggest any factual
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`scenario under which ACS is not entitled to summary judgment.
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`The claim of inability to present by affidavit facts justifying opposition to a motion for
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`summary judgment because of ignorance of essential facts is an insufficient reason to grant
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`further opportunity for discovery where those facts are already known to the party opposing a
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`summary judgment motion or are fully available to it. Istituto Per Lo Sviluppo Economico Dell’
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`Italia Meridionale v. Sperti Products, Inc., 47 F.R.D. 310, 317 (S.D.N.Y. 1969). As discussed
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`and acknowledged by both parties, this Opposition involves a dispute between the parties dating
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`back to 2011 when Opposers sued ACS in federal district court in Maryland seeking a
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`declaration that Opposers do not infringe ACS’ common law rights in the AYOUB mark. The
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`history of Ayoub Rug Cleaning Co., Inc. is known to both parties as is the existence of the asset
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`purchase agreement by which ACS acquired the rights in the AYOUB mark. Much of the
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`information relied upon by ACS in its motion for summary judgment is publically available and
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`Opposition No. 91211014
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`Application Serial No. 85/566,860
`Page 8
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`accessible to Opposers. Information from third parties regarding their use of “Ayoub” as part of
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`their trade names decades after Ayoub Rug Cleaning Co., Inc. established trademark rights in the
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`AYOUB mark is irrelevant to the claims at issue. Opposers cannot now feign ignorance of facts
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`either known to or fully available to them to avoid summary judgment.
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`CONCLUSION
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`For all of the foregoing reasons, Opposers’ motion for continued discovery should be
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`denied and ACS’ motion for summary judgment should be granted and the Opposition dismissed
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`ACS Ayoub Carpet Service
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`By Counsel:
`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`/Robert J. Kenny/
`Robert J. Kenney
`Michael T. Smith
`P.O. Box 747
`Falls Church, VA 22040-0747
`(703) 205-8000
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`By:
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`with prejudice.
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`Dated: January 7, 2014
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`Opposition No. 91211014
`Application Serial No. 85/566,860
`Page 9
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 7th day of January, 2014, a copy of the foregoing
`“Memorandum in Opposition to Opposers’ Motion for Continued Discovery” was served upon
`counsel of record for Opposers, Daniel A. Ball, by email at dball@dablaw.com, and by depositing a
`true copy thereof in the United States mail, postage prepaid, in an envelope addressed as follows:
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`Daniel A. Ball
`Ball Law Offices, PC
`5410 Edson Lane, Suite 315
`Rockville, Maryland 20852
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`/Michael T. Smith/
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`Michael T. Smith
`Birch, Stewart, Kolasch & Birch, LLP
`Attorneys for Applicant
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`EXHIBIT 1
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`EXHIBIT 1
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`
`
`

`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Attachments:
`
`Smith, Michael T.
`Wednesday, November 13, 2013 5:51 PM
`Daniel Ball
`Kenney, Robert J.; Docketing - Trademark; MailRoom
`RE: AYOUB, INC V. ACS AYOUB CARPET - Opposition No. 91211014; OurRefNo.
`3715-0117L - Applicants Response to First Request for Production
`2013-10-31 DRAFT Protective Order.doc
`
`Dan, please find attached a draft Protective Order for your review and consideration.  
` 
`Mike 
` 
`Michael T. Smith
`Of Counsel
`Birch Stewart Kolasch & Birch, LLP
`8110 Gatehouse Road, Suite 100 East
`Falls Church, VA 22042
`Phone: (703) 205-8048
`Fax: (703) 205-8050
`msmith@bskb.com
`www.bskb.com 
` 
`*licensed in WV; not licensed in VA 
` 
`From: Daniel Ball [mailto:dball@dablaw.com]
`Sent: Monday, October 28, 2013 4:24 PM
`To: Apelogun, Moji
`Cc: Smith, Michael T.; Kenney, Robert J.; Thomas, Ann; Kehrer, Stephanie; Johnson, Tiffany; Docketing - Trademark
`Subject: RE: AYOUB, INC V. ACS AYOUB CARPET - Opposition No. 91211014; OurRefNo. 3715-0117L - Applicants
`Response to First Request for Production
` 
`Bob or Michael,
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`Would you please provide me with your proposed Protective Order. Thank you.
`
`
`
`Daniel A. Ball
`Ball Law Offices, P.C. 
`BECO Building West 
`Suite 315 
`5410 Edson Lane 
`Rockville, Maryland 20852 
`Main: (301) 770-3050 
`Fax: (301) 770-3017 
`E-Mail: dball@dablaw.com 
`Website: www.dablaw.com 
`Bar Memberships: MD, VA, DC 
`
`  
`NOTICE: This message, including attachments, if any, contains confidential information that may be legally privileged. If you are not the intended
`recipient, please do not review, retransmit, convert to hard copy, copy, use or disseminate this message or any attachments to it. If you have received
`this message in error, please immediately notify us by return e-mail or fax or by telephone and delete or destroy this message. Thank you.  
`  
`  
`
`

`
` 
`
` 
`
`From: Apelogun, Moji [mailto:apelm@bskb.com]
`Sent: Thursday, October 24, 2013 5:14 PM
`To: Daniel Ball
`Cc: Smith, Michael T.; Kenney, Robert J.; Thomas, Ann; Kehrer, Stephanie; Johnson, Tiffany; Docketing - Trademark
`Subject: AYOUB, INC V. ACS AYOUB CARPET - Opposition No. 91211014; Our RefNo. 3715-0117L - Applicants Response
`to First Request for Production
` 
`Dear Counsel, 
` 
`Please find attached Applicant ACS Ayoub Carpet Service Corporation’s Response to Ayoub Inc.’s First Request for 
`Production of Documents.  
` 
`Please note that these documents are also being sent to you via first class mail. Please feel free to contact us if you have 
`any questions or concerns. 
` 
`Thank you, 
` 
`Moji Apelogun
`IP Paralegal
`Birch Stewart Kolasch & Birch, LLP
`8110 Gatehouse Road, Suite 100 East
`Falls Church, VA 22042
`Phone: (703) 205-8000
`Fax: (703) 205-8050
`Email: mailroom@bskb.com
`www.bskb.com
`
`Please copy all instructions to mailroom@bskb.com to ensure proper handling.
`
`Warning: In rare cases our email filtering software may eliminate legitimate email from clients unnoticed.
`Therefore, if your email contains important instructions, please make sure that we acknowledge receipt of those
`instructions.
`
`This transmission is intended for the sole use of the individual and entity to whom it is addressed, and may
`contain information that is privileged, confidential, and exempt from disclosure under applicable law. You are
`hereby notified that any dissemination, distribution, or duplication of this transmission by someone other than
`the addressee or its designated agent is strictly prohibited. If your receipt of this email is in error, please destroy
`the transmission (and any copies thereof) immediately.
`
`2
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`

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`EXHIBIT 2
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`EXHIBIT 2
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`

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`Opposition No. 91211014
`Application Serial No. 85/566,860
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`AYOUB, INC., and
`AYOUB SUPPLY, LLC
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`Opposers,
`V.
`ACS AYOUB CARPET SERVICE
`Applicant.
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`)
`)
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`3
`3
`3
`3
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`Opposition No.: 9121 1014
`Mark: AYOUB
`Application Serial No.: 85/566,860
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`DECLARATION OF MICHAEL T. SMITH IN OPPOSITION TO
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`OPPOSERS’ MOTION FOR CONTINUED DISCOVERY
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`1, Michael T. Smith, pursuant to 28 U.S.C. § 1746, declare as follows:
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`1.
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`I am over the age of eighteen. I have personal knowledge of the facts stated
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`below.
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`2.
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`I am an attorney at Birch, Stewart, Kolasch & Birch, LLP, counsel for Applicant
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`ACS Ayoub Carpet Service in this Opposition proceeding.
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`3.
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`My purpose in submitting this Declaration is to place before the Trademark Trial
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`and Appeal Board various relevant facts and documents, including the information contained in
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`those documents.
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`4.
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`Attached to Applicant’s Memorandum in Opposition to Opposers’ Motion for
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`Continued Discovery as Exhibit 1 is a true and correct copy of an email that I sent to opposing
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`counsel on Wednesday, November 13, 2013, which contained a draft Protective Order for
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`opposing counsel’s review.
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`

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`Opposition No. 91211014
`Application Serial No. 85/566,860
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`5.
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`I did not receive any indication that the email was not received nor did I receive a
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`reply from opposing counsel to the email attached hereto as Exhibit 1.
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`I DECLARE UNDER PENALTY OF PERJURY THAT THE FOREGOING IS TRUE
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`AND CORRECT.
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`Dated: January 7, 2014
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` %/
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`-
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`Michael T. Smith
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`Falls Church, Virginia