Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1056321
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`Filing date:
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`05/19/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91224310
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`University of Kentucky
`
`MICHAEL S HARGIS
`KING & SCHICKLI PLLC
`800 CORPORATE DRIVE, SUITE 200
`LEXINGTON, KY 40503
`UNITED STATES
`trevor@iplaw1.net, michael@iplaw1.net
`859-252-0889
`
`Submission
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`Filer's Name
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`Filer's email
`
`Signature
`
`Date
`
`Attachments
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`Other Motions/Papers
`
`Trevor T. Graves
`
`trevor@iplaw1.net
`
`/Trevor T. Graves/
`
`05/19/2020
`
`Response to Board Order-FINAL.pdf(127810 bytes )
`Proposed Joint Stipulated Facts for Trial.pdf(179713 bytes )
`Stipulation for ACR-FINAL.pdf(83843 bytes )
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`

`

`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration Application Serial No. 86/534,269
`
`Filed February 13, 2015
`For the mark 40-0
`Published in the Official Gazette on September 29, 2015
`
`
`UNIVERSITY OF KENTUCKY,
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`Opposer,
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` v.
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`40-0, LLC,
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`
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`Applicant.
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`:
`:
`:
`: OPPOSITION NO. 91224310
`:
`:
`:
`:
`
`
`
`OPPOSER’S RESPONSE TO ORDER DATED MAY 4, 2020
`
`Pursuant to Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 536
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`and 37 C.F.R. §2.128(a)(3), the University of Kentucky (“Opposer”) submits this Response to
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`the Board’s Order requiring Opposer to show cause why the Board should not treat the failure
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`to file a brief as a concession of the case. While 40-0, LLC (“Applicant”) does not join in the
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`Response, Applicant has agreed to not file any opposition to Opposer’s Response. For the
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`reasons detailed below, Opposer has never lost interest in this case and has good cause
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`including a showing of excusable neglect sufficient to support the case to be reopened in order
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`for the parties to proceed under the Board’s Accelerated Case Resolution (ACR) procedure.
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`On October 18, 2019, Opposer filed a Consented Motion for Suspension for Settlement
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`as the parties continued to engage in negotiations for the settlement of this matter, which was
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`granted by the Board. In the Order dated October 24, 2019, the Board suspended the
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`proceeding and reset the scheduling deadlines, including Opposer’s Opening Brief being due
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`1
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`on April 20, 2020. Although settlement negotiations were not successful, the parties through
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`counsel worked together and agreed to pursue this matter via the Board’s ACR Procedure. To
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`this end, the parties were working on a set of Proposed Joint Stipulated Facts for Trial and
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`requested a conference with Interlocutory Attorney Winston Folmar seeking guidance
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`regarding the most efficient means of proceeding under the ACR Procedure.
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`The conference took place on November 14, 2019, and the parties agreed to submit a
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`stipulation for ACR with a proposed briefing and evidence schedule. The parties via counsel
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`continued to work together on drafting a Stipulation for ACR along with agreeing to a set of
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`Proposed Joint Stipulated Facts through late January 2020. Although the parties had agreed in
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`principle to the Stipulation for ACR, the parties were continuing to discuss the scheduling
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`dates for Evidence and Briefs in the Stipulation for ACR and the set of Proposed Joint
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`Stipulated Facts, which was the first required submission in the proposed schedule for the
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`Stipulation for ACR. Indeed, Applicant’s Counsel sent a “DRAFT Proposed Joint Stipulated
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`Facts for Trial” to Opposer’s Counsel on January 23, 2020. Opposer’s counsel was still in the
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`process of reviewing the “DRAFT Proposed Joint Stipulated Facts for Trial” and attempting
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`to obtain any additional documents required for submission under the “DRAFT Proposed Joint
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`Stipulated Facts for Trial” from its client when the COVID-19 pandemic arose.
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`As a result, Opposer effectively shut down its University as distance learning for
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`students, remote working for employees, and social distancing measures were enforced by
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`Opposer and the Governor of Kentucky. Consequently, Opposer’s ability to obtain the
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`information necessary from its client for completion of the “DRAFT Proposed Joint Stipulated
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`Facts for Trial” and related documents has been significantly curtailed. Indeed, the deadline
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`for submitting Opposer’s Brief (which necessitated the entry of the Board’s Show Cause
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`Order) was in the time period that Opposer’s University was effectively shut down and remains
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`so to date.
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`Opposer emphasizes that “[t]he principal purpose of 37 C.F.R. § 2.128(a)(3) is to save
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`the Board the burden of determining a case on the merits where the parties have entered into a
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`final settlement of the matter, but have neglected to notify the Board thereof, or where the
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`plaintiff has lost interest in the case.” See (TBMP) § 536. These factors are clearly not at play
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`as the parties (despite their efforts) have not entered a final settlement of the matter and
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`Opposer has never indicated to Applicant or its counsel that it has lost interest in the case.
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`Indeed, counsel for both parties have maintained a good working relationship throughout this
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`proceeding and Opposer had never indicated a lost interest in this case or any desire to not
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`pursue the case to a resolution.
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`Importantly, “[i]t is not the policy of the Board to enter judgment against a plaintiff for
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`failure to file a main brief on the case if the plaintiff still wishes to obtain an adjudication of
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`the case on the merits.” See id. (citing NOTICE OF FINAL RULEMAKING, 48 Fed. Reg.
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`23122, 23132 (May 23, 1983); Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708,
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`1709-10 (TTAB 2011)). Rather, “[i]f a show cause order is issued under Trademark Rule
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`2.128(a)(3) and the plaintiff files a response indicating that it has not lost interest in the case,
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`the show cause order will be discharged, and judgment will not be entered against the plaintiff
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`for failure to file a main brief.” See Vital Pharmaceuticals, 99 USPQ2d at 1710.
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`Although the show cause order for failure to file a brief should be discharged based
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`upon the precedential Vital Pharmaceuticals decision, Opposer further requests that the time
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`3
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`for it to file its main brief be extended and for the Board to reset the remaining deadlines to
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`allow the parties to conclude the trial period. The required showing to be made by a party
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`seeking to reopen an expired period is “excusable neglect.” See id. There are four factors to
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`be considered to determine whether a party's neglect of a matter is excusable, which are: (1)
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`the danger of prejudice to the non-moving party; (2) the length of the delay and its potential
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`impact on judicial proceedings; (3) the reason for the delay, including whether it was within
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`the reasonable control of the moving party; and, (4) whether the moving party has acted in
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`good faith. See id.
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`In this case, there is no danger of prejudice to the non-moving party. Specifically, the
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`parties have agreed that the “Proposed Joint Stipulated Facts for Trial” is ready for submission
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`(a copy of the “Proposed Joint Stipulated Facts for Trial” is attached hereto as Exhibit A).
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`Furthermore, the Stipulation for ACR is also ready for submission (a copy of the Stipulation
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`for ACR is attached hereto as Exhibit B). Importantly, as expressly indicated in the Stipulation
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`for ACR, the parties already stipulated to re-open Opposer’s 30-day Trial Period.
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`Turning to the second factor, the reopening of the time to file a brief and its potential
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`impact on the judicial proceedings would not cause a significant delay to this opposition as the
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`parties have already agreed to the Stipulation for ACR. In the Stipulation for ACR, the parties
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`seek an adjudication of this matter on the merits as expediently as possible, i.e., utilizing the
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`Board’s summary judgment format of ACR in lieu of a trial and the Board will render a final
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`decision based on the ACR record and briefs and may resolve and decide any genuine dispute
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`of material fact that the Board may find to exist based on the record.
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`With respect to the third factor, “several courts have stated the third factor may be
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`considered the most important factor in any particular case.” See id. (citing Pumpkin Ltd. v.
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`The Seed Corps, 43 USPQ2d 1582, 1586 at fn.7 (TTAB 1997)). As noted above, the parties
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`via counsel had worked together on drafting a Stipulation for ACR along with agreeing to a
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`set of Proposed Joint Stipulated Facts for multiple months before a brief delay proceeding the
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`COVID-19 pandemic. Clearly, the COVID-19 pandemic created a number of issues that were
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`completely out of control of Opposer.
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`Finally, the fourth factor relating to whether the moving party has acted in good faith
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`weighs heavily in Opposer’s favor as there is no evidence whatsoever that Opposer was acting
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`in bad faith. Indeed, as noted above, counsel for both parties have maintained a good working
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`relationship throughout this proceeding, including settlement negotiations and numerous
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`consented motions.
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`After considering each of the relevant factors, it is clear that all four factors weigh in
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`favor of Opposer. Namely, there is neither prejudice to Applicant nor any negative impact of
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`the judicial proceedings as the parties have clearly contemplated and agreed to move forward
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`under the Board’s ACR Procedure. Furthermore, the third (and most important factor) weighs
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`heavily in favor of Opposer in light of the unprecedented COVID-19 pandemic effects on the
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`parties. Finally, there is no evidence that Opposer has acted in bad faith in this matter.
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`For the foregoing reasons, Opposer respectfully submits that it has shown cause why
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`the Board should not treat the failure to file a brief as a concession of the case. In addition, the
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`issues created by the COVID-19 pandemic clearly constitute “a showing of excusable neglect”
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`sufficient to support reopening of the trial periods such that the parties may proceed under the
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`Board’s ACR Procedure, which the parties are ready to do as the attached ACR Stipulation
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`5
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`and Joint Stipulated Facts are ready for submission.
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`
`Dated: May 19, 2020
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`By:
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`
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`Respectfully submitted,
`
` /Trevor T. Graves/
`Trevor T. Graves
`Michael S. Hargis
`KING & SCHICKLI, PLLC
`800 Corporate Drive, Suite 200
`Lexington, KY 40503
`Telephone: (859) 252-0889
`Facsimile: (859) 252-0779
`ATTORNEY FOR OPPOSER
`UNIVERSITY OF KENTUCKY
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`6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this the 19th day of May 2020, a true and correct copy of the
`foregoing was served on attorney for Applicant via electronic mail to:
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`Brian P. McGraw
`BMcGraw@MiddletonLaw.com
`
`
`
`
`/Trevor T. Graves/
`ATTORNEY FOR OPPOSER
`UNIVERSITY OF KENTUCKY
`
`
`
`
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`7
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In Re Trademark Application Serial No. 86/534,269
`
`40-0
`
`
`Marks:
`
`Filed:
`
`Published:
`
`__________________________________
`
`UNIVERSITY OF KENTUCKY
`
` Opposer,
`
`
`
` v.
`
`40-0, LLC
`
`
` Applicant.
`__________________________________
`
`February 13, 2015
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`September 29, 2015
`
` )
` )
` )
` )
` )
` ) Opposition No. 91224310
` )
` )
` )
` )
` )
`
`
`FILED VIA ESTTA
`
`JOINT PROPOSED STIPULATED FACTS FOR TRIAL
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`The color scheme of the University of Kentucky is blue and white.
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`The University of Kentucky sells and licenses clothing and apparel.
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`40-0, LLC is not and never has been a licensee of the University of the Kentucky.
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`In October 2013, John Calipari, head men’s basketball coach for the University of
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`1.
`
`2.
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`3.
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`4.
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`Kentucky, made statements at the team’s media day, regarding his desire “to coach a team that
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`goes 40-0” and that he’s had three teams come close to going 40-0. Coach Calipari also stated in
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`the article that going 40-0 was “wishful thinking” and that it’s a “vague, wouldn’t it be great thing,
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`not a serious objective that must be achieved ….” (See USA Today, Article dated 10-15-2013).
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`1
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`5.
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`In November 2013, Mr. Son informed the University of Kentucky that he had
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`created “40-0” t-shirts via email correspondence with University of Kentucky athletics director,
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`Mitch Barnhart (see email dated 11/19/2013).
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`6.
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`In November 2013, Mr. Son mentioned to Mitch Barnhart that he was interested in
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`working with the University of Kentucky’s athletic department with a marketing promotion of t-
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`shirts (see email dated 11/19/2013).
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`7.
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`In November 2013, Mr. Son engaged in email correspondence with Nathan
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`Schwake and Jim Aronowitz regarding the University of Kentucky’s licensing process (see email
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`dated 11/21/2013).
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`8.
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`During the correspondence between Mr. Son and Nathan Schwake and Jim
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`Aronowitz, the University of Kentucky expressed its position that it had a protectable interest in
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`its school colors in conjunction with references to its sports teams (see email dated 11/21/ 2013).
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`9.
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`During the correspondence between Mr. Son and Nathan Schwake and Jim
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`Aronowitz, the University of Kentucky expressed its position that the 40-0, LLC needed UK’s
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`authorization to sell its t-shirts (see email dated 11/21/2013).
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`10.
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` During the correspondence between Mr. Son and Nathan Schwake and Jim
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`Aronowitz, the University of Kentucky expressed to Mr. Son that he should go through the
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`University’s licensing process in order to obtain approval (see email dated 11/21/2013).
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`11.
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`University of Kentucky players and fans were hoping for an undefeated 2013-14
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`men’s basketball season [Exhibits 5, 6, and 7 of Opposer’s MSJ TTABVUE #35].
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`12. Mr. Son had conversations with the University of Kentucky, through counsel,
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`toward the end of the 2015 men’s college basketball season regarding his company’s rights in the
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`40-0 mark including the possibility of selling or licensing those rights to Opposer.
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`2
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`13.
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`Since 2007, a men’s or women’s NCAA Division I basketball team that completes
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`an undefeated regular season, wins its conference tournament, and the NCAA tournament would
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`have a record of 40 wins and 0 losses.
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`14.
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`Since the inception of the NCAA in 1939, the following seven (7) teams have
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`completed a men’s NCAA Division I basketball season with an undefeated record:
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`a. Indiana University 1975-76 (32-0)
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`b. North Carolina State 1972-73 (27-0)
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`c. UCLA 1972-73 (30-0), 71-72 (30-0), 66-67 (30-0), 63-64 (30-0)
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`d. University North Carolina 1956-57 (32-0)
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`e. San Francisco 1955-56 (29-0)
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`f. University of Kentucky 1953-54 (25-0)
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`g. Army 1943-44 (15-0)
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`h. Seton Hall 1939-40 (19-0)
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`i. Long Island University 1938-39 (24-0)
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`15.
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`Since the inception of the NCAA in 1939, the following twelve (12) teams have
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`completed a women’s NCAA Division I basketball season with an undefeated record:
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`a. University of Connecticut 2016 (38-0), 2014 (40-0), 2010 (39-0), 2009 (39-0),
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`2002 (39-0)
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`b. Baylor University 2012 (40-0)
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`c. University of Tennessee 1998 (39-0)
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`d. University of Texas 1986 (34-0)
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`e. Louisiana Tech 1981 (34-0)
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`f. Delta State 1975 (28-0)
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`3
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`

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`g. Immaculata 1973 (20-0)
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`16.
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`The 2014-2015 University of Kentucky’s men’s basketball team’s record on March
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`9, 2015, was 31-0.
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`17.
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` The 2014-2015 University of Kentucky’s men’s basketball team had a record of
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`38-0 before suffering its first loss of the season in the national semi-finals to end the season with
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`a record of 38-1.
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`18.
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`The only products made by 40-0, LLC or which 40-0, LLC had made bearing the
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`40-0 designation, were t-shirts and hats.
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`19.
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`The only products that have been sold by 40-0, LLC bearing the 40-0 designation
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`are T-shirts and hats.
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`20.
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`40-0, LLC has sold or given away around 500 T-shirts and 10 hats bearing the 40-
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`0 designation.
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`21.
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`At the time of the filing of its involved trademark application 40-0, LLC had only
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`sold T-shirts bearing the 40-0 designation.
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`22.
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`40-0, LLC has used the mark 40-0 on its actual T-shirts by screen printing the
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`designation in large letters across the front of t-shirts.
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`23.
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`40-0, LLC does not use any labels, hang tags, or product packaging associated with
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`the 40-0 t-shirts it sells, bearing the 40-0 designation.
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`24.
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`40-0, LLC only shipped t-shirts with the 40-0 mark to customers via plain manila
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`envelopes or other plain envelopes of a different material that is more durable than paper.
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`25.
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`Neither party has obtained survey evidence or consumer testimony concerning the
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`issue of whether purchasers perceive the 40-0 designation as a mark, or otherwise.
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`4
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`26.
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`40-0, LLC incurred $66.30 in advertising costs associated with its Facebook page
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`in 2013. That advertising generated a paid search reach of 6,298 consumers as well as 2,141
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`consumer impressions.
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`27.
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`40-0, LLC pays $9.99 per month to maintain its website where products are offered
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`for sale, advertised, and sold.
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`28.
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`40-0, LLC used the phrase “40-0 Sportwear” on the title banner on the “about” page
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`of its Facebook page.
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`29.
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`40-0, LLC has used the phrases “40-0 team” (one time), “40-0 crew” (six times),
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`“40-0 shirts” (seven times), “40-0 tee” (fourteen times), “40-0 tee-shirt” (one time), “40-0 T-shirt
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`line” (one time) and “40-0 headquarters” (one time) on its Facebook page.
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`30.
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`40-0, LLC’s Facebook page had posts relating to the University of Kentucky
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`basketball team, including listing upcoming games, watch parties, quotes from the head basketball
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`coach, and a series of posts updating the University of Kentucky men’s basketball team’s record.
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`31.
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`376 of the 379 T-shirts produced by 6-Sigma Marketing for 40-0, LLC were royal
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`blue with white lettering.
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`32.
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`Applicant has ordered no additional shirts since the 379 T-shirts produced by 6-
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`Sigma Marketing.
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`33.
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`All of the goods sold or given away by 40-0, LLC were produced by either 6-Sigma
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`Marketing or Mr. Kyle Bates.
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`34.
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`Business cards handed out by Mr. Son were white cards with www.40and0.com
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`written in blue on them.
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`35.
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`The exact “40-0” designation did not appear on the business cards handed out by
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`Mr. Son.
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`5
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`36.
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`Each of the “Undisputed Facts” set forth in Opposer’s Motion for Summary
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`Judgment (See TTABVUE Docket #35, ¶¶ 1-8).
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`37.
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`The image of a T-shirt submitted as a specimen in support of Applicant’s
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`application for registration of the 40-0 mark depicts a computer generated rendering of a T-shirt
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`bearing the 40-0 designation printed from Applicant’s website.
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`38.
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`Opposer’s men’s basketball team finished the 1954 regular season with an
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`undefeated record of 25-0. That team declined to play in the post-season.
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`39.
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`Pictures of socks and sweatshirts offered for sale on Applicant’s website consist of
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`computer generated renderings of those products and are not photographs of actual products.
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`40.
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`Applicant has never sold socks or sweatshirts bearing the 40-0 designation.
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`41.
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`Applicant has never ordered socks or sweatshirts bearing the 40-0 designation from
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`6-Sigma Marketing.
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`42.
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`Applicant’s website initially included a page titled “The Birth of 40-0”.
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`43.
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`The University of Kentucky commemorated
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`its undefeated Southeastern
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`Conference record of 16-0 and noted its accomplishments of completing its undefeated 2014-15
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`pre-tournament record of 31-0 and its post-SEC tournament record of 34-0. See TTABVUE
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`Docket #33, Exhibit B and Exhibit 20.
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`44.
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`Based on invoices from 6-Sigma Marketing provided by Applicant during
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`discovery, there were 379 T-shirts produced with 376 of them identified as “Royal.” Applicant’s
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`Depo., Exhibit 13.
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`45.
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`Applicant initially handed out and sold its T-shirts bearing the 40-0 designation at
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`University of Kentucky men’s basketball viewing parties.
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`6
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`46.
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`Applicant’s sole member, Mr. David Son, obtained an undergraduate degree from
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`Harvard and a law degree from the University of Louisville. Mr. Son is a practicing attorney who
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`practices in the area of personal injury law.
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`47.
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`Applicant is a Kentucky limited liability company that was originally formed in
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`October, 2013.
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`48.
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`The sole owner and member of Applicant is Mr. David Son.
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`49. Mr. Son is an attorney. Mr. Son does not practice intellectual property law and
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`specializes in personal injury cases as a solo practitioner.
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`50. Mr. Son has no prior experience with the trademark registration process other than
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`this matter.
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`51.
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`Applicant was administratively dissolved in the Kentucky Secretary of State’s
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`office on September 30, 2014 for failure to file its annual report for the year 2014. Applicant filed
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`the paperwork to reinstate the entity with the Kentucky Secretary of State on March 9, 2015. The
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`entity continued to operate during is dissolution between September 30, 2014 and March 9, 2015
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`in that it maintained its website and Facebook page and offered for sale and sold T-shirts through
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`its website and Facebook page during that time.
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`52.
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`Applicant began promoting and selling T-shirts containing the designation “40-0”
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`in October, 2013.
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`53.
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`Applicant first printed t-shirts containing the 40-0 designation on October 14, 2013.
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`54.
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`Applicant handed out t-shirts bearing the 40-0 designation for promotional
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`purposes as early as October 18, 2013.
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`55.
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`Applicant started a website at the domain name <40and0.com> on October 22,
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`2013.
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`7
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`56.
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`Applicant began selling and offering for sale t-shirts bearing the 40-0 designation
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`on its website soon after the <40and0.com> website was activated on October 22, 2013.
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`57.
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`By at least as early as October 24, 2013, Applicant was selling t-shirts bearing the
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`40-0 designation and offering them for sale through its website and through its Facebook page.
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`58.
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`Applicant began marketing and promoting t-shirts under the 40-0 designation
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`through its website and Facebook page and through in-person promotions since October, 2013.
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`Twitter account started July 2014.
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`59.
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`Applicant has continuously sold and/or offered for sale t-shirts bearing the 40-0
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`designation from October 24, 2013 through today.
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`60.
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`Applicant began offering for sale on its website hats, socks, and sweatshirts bearing
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`the 40-0 designation at least as early as March, 2015.
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`61.
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`On February 13, 2015, Applicant filed an application to register the mark 40-0 for
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`use in connection with “clothing, namely, T-shirts, sport shirts, shorts, sweatshirts, mufflers, hats,
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`jackets, athletic jerseys, sweatpants, cloth bibs, shoes, scarves, bandanas, wrist-bands and socks”
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`in International Class 25 (“the 40-0 Mark”). Serial Number 86/534,269 was assigned to the
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`application (“the ‘269 Application”).
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`62.
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`The ‘269 Application was filed under §1A of the Lanham Act – with Applicant
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`claiming a first use in commerce date of October 24, 2013.
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`63. Mr. Son had never been involved with the filing of a trademark application prior to
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`the filing of the ‘269 Application.
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`64.
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`Applicant has used the “tm” symbol in connection with advertising and promotional
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`material associated with its 40-0 mark, including on its website and Facebook pages. The
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`following are true and correct copies of images taken from Applicant’s website and Facebook page
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`wherein the “tm” symbol is used in connection with the 40-0 mark:
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`65.
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`66.
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`Opposer does not own any registered trademarks for the term “40-0”.
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`Opposer’s basketball teams have never completed a season with a final record of
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`40 wins and 0 losses.
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`67. Men’s collegiate basketball governed by the National Collegiate Athletic
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`Association (“NCAA”) has been in existence as a sport since 1939. Since that time, not a single
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`team has finished the season with a final record of 40 wins and 0 losses.
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`68.
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`To the extent there has been any use of the term “40-0” by Opposer, such use was
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`aspirational in nature pointing to the event either the men’s or women’s basketball teams at the
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`University of Kentucky were in a position to achieve a record of 40 wins and 0 losses.
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`69.
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`The University of Connecticut women’s basketball team finished the 2013/2014
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`season with a record of 40 wins and 0 losses.
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`70.
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`Applicant has not objected to the University of Connecticut’s use of the term “40-
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`0” to describe the record of its women’s basketball team.
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`71.
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`Baylor University’s women’s basketball team finished the 2011/2012 college
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`basketball season with a record of 40 wins and 0 losses.
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`72.
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`Applicant has not objected to Baylor’s use of the term “40-0” to describe the record
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`of its women’s basketball team.
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`In addition, the parties stipulate to the admissibility of the following evidence which may
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`be presented at trial:
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`A. Applicant’s deposition testimony.
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`B. Opposer’s deposition testimony.
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`C. Applicant’s trial declaration.
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`D. Opposer’s trial declaration.
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`E. All documents produced during discovery.
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`F. All exhibits to the parties’ summary judgment briefing.
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`G. All pleadings in this matter.
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`H. The Affidavit of Mr. Son submitted in support of Applicant’s cross motion for
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`summary judgment.
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`I. All posts on Applicant’s Facebook and Twitter pages.
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`J. Applicant’s website, including archived screenshots.
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`K. All documents identified and exchanged by the parties prior to the submission
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`of these Joint Stipulated Facts to the Board.
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Registration Application Serial No. 86/534,269
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`Filed February 13, 2015
`For the mark 40-0
`Published in the Official Gazette on September 29, 2015
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`UNIVERSITY OF KENTUCKY,
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`Opposer,
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` v.
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`40-0, LLC,
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`Applicant.
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`:
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`: OPPOSITION NO. 91224310
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`:
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`STIPULATION FOR ACCELERATED CASE RESOLUTION
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`Initially, the parties appreciate the courtesy shown by Interlocutory Attorney Winston
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`Folmar and Administrative Trademark Judge Christen English during the telephonic
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`conference of November 14, 2019, in the above-referenced matter. During the telephonic
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`conference, Trevor Graves, appearing on behalf of Opposer University of Kentucky, and Brian
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`McGraw, appearing on behalf of Applicant 40-0, LLC, indicated their desire to proceed under
`the Board’s Accelerated Case Resolution (ACR) procedure.
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`To this end, the parties, in order to obtain a decision on the merits of their claims and
`defenses on an expedited basis, stipulate to proceed under the Board’s ACR procedure
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`pursuant to the following terms and agreements.
`1. The parties stipulate to re-open Opposer’s 30-day Trial Period, which lapsed upon the
`parties’ failure to file an agreed upon consented motion to extend the deadline.
`2. The parties will utilize the Board’s summary judgment format of ACR in lieu of a trial.
`3. The parties’ ACR briefs and evidence will be treated as the final record and briefs.
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`4. The Board will render a final decision based on the ACR record and briefs and may
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`resolve and decide any genuine dispute of material fact that the Board may find to exist
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`based on the record.
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`1
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`5. Although Opposer already served pre-trial disclosures, the parties waive pre-trial
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`disclosures and, therefore, Applicant does not need to serve any pre-trial disclosures.
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`6. The parties stipulate to the authenticity of any documents produced during discovery.
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`7. The parties stipulate to the admissibility of all evidence produced in discovery and/or
`otherwise specifically set forth and identified in the parties’ joint stipulated facts
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`(including documents and things produced or received in response to discovery
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`requests) without the need for authenticating or accompanying witness testimony,
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`subject to the right of the non-offering party to object to such evidence on substantive
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`grounds, such as competency, relevancy or materiality, or the weight to be accorded to
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`particular items of evidence.
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`8. Discovery deposition testimony may be used by either side as trial testimony.
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`9. Any additional witness testimony may be submitted in the form of an affidavit or
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`declaration under Trademark Rule 2.20. The parties waive the right to cross-examine
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`the witnesses. However, the parties retain their right to argue in their ACR briefs that
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`affidavit or declaration testimony is inconsistent, lacks corroboration, or otherwise
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`merits little evidentiary or probative weight.
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`10. The parties will file their joint stipulated facts (including identification of stipulated
`exhibits) with the Board at least one month prior to the deadline for Opposer’s Main
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`ACR brief, as set forth below.
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`11. The parties will file any additional ACR evidence five days prior to filing their ACR
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`briefs, so that in their briefs they can cite to the record by referring to the TTABVUE
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`docket and page number(s).
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`12. The ACR briefs will be presented in the form of briefing of a single motion for summary
`judgment. Opposer’s main brief and Applicant’s brief in opposition will be limited to
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`twenty-five (25) pages, inclusive of the table of contents and cases, index of cases,
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`description of the record, statement of the issues, recitation of facts, argument and
`summary. Opposer’s and Applicant’s reply brief will be limited to ten (10) pages.
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`Proceedings will be conducted on the following proposed schedule:
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`2
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`Deadline to File Joint Stipulated Facts
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`5/19/2020
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`Opposer’s ACR Evidence Due
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`Opposer’s ACR Brief Due
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`Applicant’s ACR Evidence Due
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`Applicant’s ACR Brief Due
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`Opposer’s Rebuttal Evidence Due
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`Opposer’s Reply Brief Due
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`Applicant’s Rebuttal Evidence Due on
`Cross Motion
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`Applicant’s Reply Brief in Support of
`Cross Motion Due
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`6/19/2020
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`6/24/2020
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`7/24/2020
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`7/29/2020
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`8/28/2020
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`9/2/2020
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`10/2/2020
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`10/7/2020
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`Dated: May 19, 2020
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`By:
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`Respectfully submitted,
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` /Trevor T. Graves/
`Trevor T. Graves
`Michael S. Hargis
`KING & SCHICKLI, PLLC
`800 Corporate Drive, Suite 200
`Lexington, KY 40503
`Telephone: (859) 252-0889
`Facsimile: (859) 252-0779
`COUNSEL FOR OPPOSER
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`/Brian P. McGraw/
`Brian P McGraw
`Middleton Reutlinger
`401 South Fourth Street, Suite 2600
`Louisville, KY 40202
`Telephone: (502) 625-2713
`Facsimile: (502) 588-1988
`COUNSEL FOR APPLICANT
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`3
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