Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA757648
`
`Filing date:
`
`07/11/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91212905
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Plaintiff
`EMI (IP) Limited
`
`BRENT S LABARGE
`UNIVERSAL MUSIC GROUP
`2220 COLORADO AVENUE
`SANTA MONICA, CA 90404
`UNITED STATES
`brent.labarge@umusic.com, melissa.battino@umusic.com,
`nicole.villacorta@umusic.com
`
`Motion to Suspend for Settlement Discussions
`
`Brent S. LaBarge
`
`brent.labarge@umusic.com, nicole.villacorta@umusic.com
`
`/Brent S. LaBarge/
`
`07/11/2016
`
`Attachments
`
`2016-07-11 MUSIC NOW - Motion for 60-day Suspension.pdf(30466 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 78/835,315
`
`EMI (IP) LIMITED
`
`Opposer,
`
`v.
`
`OCC ESTABLISHMENT,
`
`Applicant.
`
`
`
`-and-
`
`In the matter of Registration No. 2,100,606
`
`EMI (IP) LIMITED
`
`Petitioner,
`
`v.
`
`OCC ESTABLISHMENT,
`
`Respondent.
`
`)
`)
`)
`)
`) Opposition No. 91212905
`)
`)
`)
`)
`)
`
`)
`)
`)
`)
`) Cancellation No. 92058236
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`MOTION FOR SUSPENSION FOR SETTLEMENT WITH CONSENT
`
`EMI (IP) Limited hereby moves, with consent, to suspend the discovery and trial
`
`deadlines in this matter by sixty (60) days pursuant to 37 C.F.R. § 2.117 and T.B.M.P. § 510.
`
`Pursuant to the Board’s order of May 19, 2016, as good cause therefor, the parties state
`
`that they have actively been engaged in settlement discussions and provide the following detailed
`
`report. Specifically, counsel for EMI (IP) Limited, Petitioner, received a counterproposal from
`
`OCC Establishment on May 10, 2016, which EMI has discussed both internally and with an
`
`unaffiliated entity, Sony Music Entertainment UK (which owns the NOW Marks within the
`
`European Economic Area).
`
` EMI (IP) Limited believes OCC Establishment’s recent
`
`
`
`1
`
`
`
`counterproposal resolves additional issues, and EMI (IP) Limited will communicate a further
`
`counterproposal on behalf of itself and Sony Music Entertainment UK shortly.
`
`In sum, since the last request for suspension, the parties have remained actively engaged in
`
`settlement discussions and have exchanged further proposals to that end. Given the scope of the
`
`rights at issue, the parties need more time to review and discuss the current proposals and
`
`counterproposals in order to continue working toward a potential settlement. As previously
`
`stated, the parties have tentatively agreed on several outstanding issues and expect that continued
`
`negotiations will result in a final resolution of this dispute.
`
`EMI (IP) Limited has secured the express consent of all other parties to this proceeding
`
`CLOSED
`
`CLOSED
`
`CLOSED
`
`CLOSED
`
`CLOSED
`
`September 10, 2016
`
`October 25, 2016
`
`December 9, 2016
`
`December 24, 2016
`
`February 7, 2017
`
`February 22, 2017
`
`March 24, 2017
`
`2
`
`for the suspension requested herein.
`
`Dates as Reset:
`
`Time to Answer :
`
`Deadline for Discovery Conference :
`
`Discovery Opens :
`
`Initial Disclosures Due :
`
`Expert Disclosures Due :
`
`Discovery Period to Close :
`
`Plaintiff Pretrial Disclosures :
`
`Plaintiff's 30-day Trial Period Ends :
`
`Defendant's Pretrial Disclosures :
`
`Defendant's 30-day Trial Period ends :
`
`Plaintiff's Rebuttal Disclosures :
`
`Plaintiff's 15-day Rebuttal Period Ends :
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`EMI (IP) LIMITED
`
`
`
`Dated: July 11, 2016
`
`
`
`
`
`
`
`
`
`By: s/Brent S. LaBarge/
`Brent S. LaBarge
`c/o Universal Music Group
`2220 Colorado Avenue
`Santa Monica, California 90404
`Telephone: (310) 865-1708
`Email: brent.labarge@umusic.com
`
`Attorneys for Petitioner EMI (IP) Limited
`
`
`
`3
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Motion for Suspension for
`Settlement with Consent has been served by electronically transmitting said copy, with the
`consent of OCC Establishment, on July 11, 2016, to:
`
`CHRISTOPHER WEIMER
`NORTON ROSE FULBRIGHT US LLP
`98 SAN JACINTO BLVD SUITE 1100
`AUSTIN, TX 78701-4078
`orbitmarks@nortonrosefulbright.com,
`chris.weimer@nortonrosefulbright.com
`
`
`
`/s/Brent S. LaBarge/
`Brent S. LaBarge
`
`
`
`4
`
`
`
`
`
`
`
`
