Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA748429
`
`Filing date:
`
`05/25/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91225175
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Ms. Brenna Terry
`
`MS BRENNA TERRY
`25 W 132ND STREET, 11B
`NEW YORK, NY 10037
`UNITED STATES
`thelawtenderblog@gmail.com
`
`Opposition/Response to Motion
`
`Brenna Terry
`
`thelawtenderblog@gmail.com
`
`/Brenna Terry/
`
`05/25/2016
`
`Opposition to Motion for Extension of Time to Respond to Discovery.pdf(16673
`bytes )
`Exhibit A.pdf(25086 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91225175
`
`Application No. 86/635,477
`
`BRENNA TERRY,
`
`THOMAS ICE,
`
`Opposer,
`
`v.
`
`Applicant.
`
`OPPOSER’S OPPOSITION TO
`
`APPLICANT’S MOTION FOR EXTENSION OF TIME
`
`TO RESPOND TO DISCOVERY
`
`Pursuant to Trademark Trial and Appeal Board Manual of Procedure §§ 403.04 and 509,
`
`37 C.F.R. § 2.120, Opposer Brenna Terry (“Opposer”) files this Opposition to Applicant’s
`
`Motion for Extension of Time to Respond to Discovery in the above-captioned proceeding (the
`
`“Opposition”).
`
`BACKGROUND
`
`On March 17, 2016, Applicant served extensive discovery requests on Opposer, a pro se
`
`party, in the form of requests for admissions, interrogatories, and requests for document
`
`production, to which Opposer has timely answered and responded and is still in the process of
`
`collecting additional responsive documentation. On April 21, 2016, Opposer served her First Set
`
`of Interrogatories and First Request for Production of Documents and Things on Applicant. Two
`
`and a half weeks later, on May 9, 2016, Applicant filed its Motion to Suspend Proceedings (the
`
`“First Motion”), in connection with a lawsuit that Ice Legal, P.A.1 filed in the Southern District
`
`1
`
`Applicant made another motion on May 10, 2016, to substitute Ice Legal, P.A. as the Applicant.
`
`

`
`of Florida, naming Opposer as a defendant, stating that Applicant “is serving a copy of the
`
`complaint on [Opposer]. Upon receipt of the Executed Return of Summons for the process
`
`server, [Applicant] will promptly file it with the District Court” (emphasis added). On May 25,
`
`2016, nearly another two and a half weeks later, Applicant filed its Motion for Extension of Time
`
`to Respond to Discovery (the “Second Motion”), stating that “Applicant is in the process of
`
`formally serving Opposer with a copy of the Complaint” (emphasis added). To date, nearly a
`
`month after Ice Legal, P.A. filed a lawsuit in the Southern District of Florida, Applicant has
`
`failed to serve Opposer with any related process.
`
`ARGUMENT
`
`Under Rule 510, 37 C.F.R. § 2.117, if “parties to a pending case are engaged in a civil
`
`action . . . proceedings before the Board may be suspended until termination of the civil action.”
`
`Here, however, the parties are not engaged in a civil action because, despite Applicant’s repeated
`
`assertions that Opposer will be served, Applicant has failed to do so (notwithstanding the fact
`
`that, even if served, the Southern District of Florida has no personal jurisdiction over Opposer).
`
`Accordingly, as previously briefed, Applicant’s First Motion is premature and will have no
`
`practical effect other than to unduly delay discovery and resolution of this proceeding. Indeed,
`
`this Second Motion attempts to do just that.
`
`In its Second Motion, Applicant makes much of the fact that discovery efforts would be a
`
`waste of the Board’s and the parties’ time and resources. Applicant has had the benefit of
`
`Opposer’s answers, admissions, and responses to Applicant’s discovery requests, and has had
`
`notice of Opposer’s discovery requests, since April 21, 2016. It is unclear to Opposer how
`
`Applicant’s compliance with its discovery obligations would result in a waste of the Board’s
`
`resources. Moreover, if it is Applicant’s position that the lawsuit filed in the Southern District of
`
`2
`
`

`
`Florida “has a strong bearing on this Opposition,” any discovery that Opposer has requested to
`
`date would be relevant in such litigation and thus the parties’ resources would not be wasted, but
`
`will simply be brought closer to parity.
`
`As a general matter, it is Opposer’s understanding that a process server’s job, as an agent
`
`for the attorney who hires him or her, is to follow instructions. Given that nearly (1) a month has
`
`passed since Ice Legal, P.A. has filed a lawsuit in the Southern District of Florida and (2) two
`
`and a half weeks have passed since Applicant filed its First Motion, it appears that Applicant has
`
`not yet given instructions to a process server to serve Opposer with process. If Applicant
`
`genuinely desires to effect service upon Opposer, nothing is preventing this endeavor. Opposer
`
`is not a citizen or resident of a foreign country. Applicant has Opposer’s home and work
`
`addresses in New York, which were provided to Applicant on April 21, 2016, and, based on the
`
`number of lawsuits in which Applicant’s counsel is involved as plaintiff’s counsel (see, for
`
`example, Exhibit A), it would appear that Applicant’s counsel has experience with hiring process
`
`servers. Until Opposer is actually served, it cannot be supported that Opposer is “involved in a
`
`civil action” because other than simply naming her, Applicant has, under the plain language of
`
`Rule 510, 37 C.F.R. § 2.117 and as a matter of law, failed to involve her. Accordingly, it is
`
`highly likely that the Board will deny Applicant’s First Motion as premature and so Applicant’s
`
`Second Motion has no practical effect other than to unduly delay discovery and resolution of this
`
`proceeding.
`
`Applicant waited until three days before its discovery deadline to make known its desire
`
`to extend its time to respond and answer. As a matter of professional courtesy, Opposer agreed
`
`to extend Applicant’s time to respond to Tuesday, May 31. Instead, Applicant filed this motion a
`
`day before its discovery deadline.
`
`3
`
`

`
`Opposer therefore respectfully requests that the Trademark Trial and Appeal Board deny
`
`Applicant’s motion for extension of time to respond to discovery.
`
`Dated: New York, New York
`May 25, 2016
`
`/s/ Brenna Terry
`Brenna Terry
`
`25 W. 132nd Street, Apt. 11B
`New York, NY 10037
`thelawtenderblog@gmail.com
`(518) 331-4142
`
`Opposer, Pro Se
`
`4
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 25, 2016, I served upon the following, by First Class U.S.
`Mail, postage prepaid, a true and complete copy of the foregoing OPPOSER’S OPPOSITION
`TO APPLICANT’S MOTION FOR EXTENSION OF TIME TO RESPOND TO DISCOVERY:
`
`Woodrow H. Pollack, Esq.
`GRAYROBINSON, P.A.
`Suite 2700
`401 E. Jackson Street
`Tampa, Florida 33602
`Attorney for Applicant
`
`Dated:
`
`New York, New York
`May 25, 2016
`
`/s/ Brenna Terry
`
`Brenna Terry
`
`

`
`EXHIBIT A
`EXHIBIT A
`
`

`
`Tampa Bay
`USDC
`Middle
`District of
`Florida -
`Tampa Bay
`2:16cv400
`05/24/2016
`Ft. Myers
`
`Tampa Bay
`USDC
`Middle
`District of
`Florida -
`Tampa Bay
`8:16cv1067
`04/29/2016
`Tampa
`
`Miami
`Federal
`USDC
`Southern
`District of
`Florida
`9:16cv80677
`04/28/2016
`West Palm
`Beach
`
`Hartford
`USDC
`Connecticut
`- Hartford
`3:16cv546
`04/07/2016
`
`Hartford
`USDC
`Connecticut
`- Hartford
`3:16cv387
`03/07/2016
`
`Phoenix Entertainment
`Partners LLC, a North Carolina
`LLC
`v.
`Cocosally's Sports Bar and
`Grill Inc.; Edward Williams
`
`Trademark infringement.
`Defendant copied plaintiff's
`protected karaoke tracks.
`
`Cinclips LLC, a Georgia LLC
`v.
`Z Keepers LLC
`
`Judge: Merryday
`
`Patent infringement. Defendant
`is using plaintiff's U-Mounts
`name.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`Grayrobinson
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`Grayrobinson
`
`Ice Legal PA
`v.
`Brenna Terry
`
`Judge: Bloom
`
`Trademark. Defendant used
`plaintiff's "Lawtender" mark
`on her blog without
`authorization.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`Grayrobinson
`
`Novitaz, Inc., a Delaware
`Corporation
`v.
`Swirl Networks, Inc.
`
`Judge: Bryant
`
`Novitaz, Inc., a Delaware
`Corporation
`v.
`InMarket Media, LLC, a
`Delaware Corporation
`
`Judge: Bryant
`
`Patent infringement. Defendant
`is infringing '787 patent for
`determining a marketing
`message for a customer based
`on tracked events.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`GrayRobinson
`
`Patent infringement. Defendant
`is infringing on plaintiff's
`customer relationship
`management system.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`GrayRobinson
`
`1
`
`

`
`Tampa Bay
`USDC
`Middle
`District of
`Florida -
`Tampa Bay
`2:16cv106
`02/05/2016
`Ft. Myers
`
`Tampa Bay
`USDC
`Middle
`District of
`Florida -
`Tampa Bay
`2:16cv81
`02/01/2016
`Ft. Myers
`
`Orlando
`USDC
`Middle
`District of
`Florida
`6:16cv80
`01/19/2016
`Orlando
`
`Tampa Bay
`USDC
`Middle
`District of
`Florida -
`Tampa Bay
`8:15cv2877
`12/17/2015
`Tampa
`
`Phoenix Entertainment
`Partners LLC, a North Carolina
`LLC
`v.
`Hogbodys of North Ft. Myers
`LLC; Bonnie Shamburger
`
`Judge: Steele
`
`Phoenix Entertainment
`Partners LLC, a North Carolina
`LLC
`v.
`Miscue Lounge Inc.; Alsajen
`Inc. dba Sidelines Sports Bar
`and Grill; Dave Sookhiram
`
`Phoenix Entertainment
`Partners LLC, a North Carolina
`LLC
`v.
`Orlando Beer Garden Inc. dba
`St. Matthews Tavern at
`Orlando Beer Garden; Diane
`M. Calo
`
`Judge: Presnell
`
`Phoenix Entertainment
`Partners LLC
`v.
`JGC Management Inc. dba
`Gaspar's Patio Bar And Grille
`
`Judge: Merryday
`
`Trademark infringement.
`Defendants used plaintiff's
`karaoke tracks without
`permission.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`Grayrobinson
`
`Trademark infringement.
`Defendants played plaintiff's
`karaoke tracks without
`
`permission.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`Grayrobinson
`
`Trademark infringement.
`Defendant is using karaoke
`tracks without permission.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`GrayRobinson
`
`Trademark infringement.
`Defendants used unauthorized
`re-formatted versions of
`plaintiff's karaoke CDs.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`GrayRobinson
`
`2
`
`

`
`Tampa Bay
`USDC
`Middle
`District of
`Florida -
`Tampa Bay
`8:15cv2842
`12/11/2015
`Tampa
`
`Miami
`Federal
`USDC
`Southern
`District of
`Florida
`9:15cv81690
`12/11/2015
`West Palm
`Beach
`
`New Haven
`USDC
`Connecticut
`- Bridgeport
`3:15cv1160
`07/30/2015
`
`San
`Francisco
`Fed
`USDC
`Northern
`District of
`California
`3:15cv1066
`03/06/2015
`San
`Francisco
`
`Phoenix Entertainment
`Partners LLC, a North Carolina
`LLC
`v.
`Goodtime Charlie's Inc.
`
`Judge: Bucklew
`
`Trademark infringement.
`Defendant used plaintiff's
`musical tracks for karaoke
`without permission.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`Grayrobinson
`
`Ice Legal PA
`v.
`Blue Basil Studios Ltd., a
`Canadian Corporation
`
`Judge: Rosenberg
`
`Protegrity Corporation, a
`Cayman Islands Company;
`Protegrity USA, Inc., a
`Delaware Corporation
`v.
`Adallom, Inc., a Delaware
`Corporation
`
`Judge: Bolden
`
`Protegrity USA Inc., a
`Delaware corporation;
`Protegrity Corporation, a
`Cayman Islands company
`v.
`Vaultive, a Delaware
`corporation
`
`Judge: Donato
`
`Trademark. Defendant
`unlawfully used plaintiff's
`"Lawtender" trademark in
`connection with its legal
`services.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`Grayrobinson
`
`Patent infringement. Defendant
`is infringing on plaintiff's
`method of intrusion into a
`database system.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`GrayRobinson
`
`Transfer from District of
`Connecticut. Related to MDL
`No. 2600 In re: Protegrity
`Corporation and Protegrity
`USA Inc., Patent Litigation.
`
`P: Woodrow
`H. Pollack
`P. Lawyer
`Firm: Gray
`Robinson
`
`3
`
`

`
`San
`Francisco
`Fed
`USDC
`Northern
`District of
`California
`3:15cv1065
`03/06/2015
`San
`Francisco
`
`San
`Francisco
`Fed
`USDC
`Northern
`District of
`California
`3:15cv861
`02/25/2015
`San
`Francisco
`
`San
`Francisco
`Fed
`USDC
`Northern
`District of
`California
`3:15cv829
`02/24/2015
`San
`Francisco
`
`San
`Francisco
`Fed
`USDC
`Northern
`District of
`California
`3:15cv825
`02/24/2015
`San
`Francisco
`
`Protegrity USA Inc., a
`Delaware corporation;
`Protegrity Corporation, a
`Cayman Islands company
`v.
`Netskope Inc., a California
`corporation
`
`Judge: Donato
`
`Transfer from District of
`Connecticut. Related to MDL
`No. 2600 In re: Protegrity
`Corporation and Protegrity
`USA Inc., Patent Litigation.
`
`P: Woodrow
`H. Pollack
`P. Lawyer
`Firm: Gray
`Robinson
`
`Protegrity Corp. et al
`v.
`Skyhigh Networks Inc.
`
`Judge: Donato
`
`Transfer from District of
`Connecticut. Related to MDL
`No. 2600 In re: Protegrity
`Corporation and Protegrity
`USA Inc., Patent Litigation.
`
`Protegrity Corp. et al
`v.
`Corduro Inc.
`
`Judge: Donato
`
`Transfer from District of
`Connecticut. Related to MDL
`No. 2600 In re: Protegrity
`Corporation and Protegrity
`USA Inc., Patent Litigation.
`
`Protegrity Corp. et al
`v.
`Corduro Inc.
`
`Judge: Donato
`
`Transfer from District of
`Connecticut. Related to MDL
`No. 2600 In re: Protegrity
`Corporation and Protegrity
`USA Inc., Patent Litigation.
`
`4
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm: Gray
`Robinson
`D: Jonathan
`Tropp
`D. Lawyer
`Firm: Day
`Pitney
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm: Gray
`Robinson
`D: Jon Hyland
`D. Lawyer
`Firm: Munsch
`Hardt
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm: Gray
`Robinson
`D: Jon Hyland
`D. Lawyer
`Firm: Munsch
`Hardt
`
`

`
`New Haven
`USDC
`Connecticut
`3:15cv230
`02/18/2015
`
`New Haven
`USDC
`Connecticut
`3:15cv231
`02/18/2015
`
`New Haven
`USDC
`Connecticut
`3:15cv232
`02/18/2015
`
`Hartford
`USDC
`Connecticut
`- Hartford
`3:14cv1814
`12/03/2014
`
`Hartford
`USDC
`Connecticut
`- Hartford
`3:14cv1076
`07/28/2014
`
`New Haven
`USDC
`Connecticut
`3:14cv825
`06/06/2014
`
`New Haven
`USDC
`Connecticut
`3:14cv790
`06/02/2014
`
`Protegrity USA Inc.; Protegrity
`Corporation
`v.
`Netskope Inc.
`
`Judge: Unassigned
`
`Protegrity USA Inc.; Protegrity
`Corporation
`v.
`Netskope Inc.
`
`Judge: Unassigned
`
`Protegrity USA Inc.; Protegrity
`Corporation
`v.
`Vaultive Inc.
`
`Judge: Unassigned
`
`Protegrity Corp, a Cayman
`Islands Company; Protegrity
`USA, Inc.., a Delaware
`Company
`v.
`Skyhigh Networks, Inc.
`
`Judge: Thompson
`
`Protegrity Corp.; Protegrity
`USA, Inc.
`v.
`Corduro, Inc.
`
`Judge: Shea
`
`Protegrity Corp
`v.
`Gazzang, Inc.
`
`Protegrity Corporation
`v.
`Protegrity Advisors, LLC
`
`Patent infringement.
`Defendant's database security
`systems infringe on plaintiffs'
`patent number 7,305,707
`entitled "Method for Intrusion
`Detection In A Database
`System."
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`GrayRobinson
`
`Patent infringement. Defendant
`sells database security systems
`that infringe on plaintiffs'
`patent numbers 8,402,281 and
`6,321,201 for similar security
`systems.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`GrayRobinson
`
`Patent infringement.
`Defendant's database security
`system infringes upon
`plaintiffs' patent numbers
`8,402,281 and 6,321,201.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`GrayRobinson
`
`Patent infringement. Defendant
`infringed on the plaintiffs data
`security system.
`
`P: Woodrow
`Pollack
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm: Gray
`Robinson
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm: Gray
`Robinson
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm: Gray
`Robinson PA
`
`Patent infringement. Defendant
`infringed on the plaintiffs
`database software.
`
`Patent Infringement. Defendant
`violated the plaintiffs '707
`patent.
`
`Trademark infringement.
`Plaintiff's "Protegrity" mark
`has become uniquely
`associated with and now
`identifies plaintiff's services.
`
`5
`
`

`
`Tampa Bay
`USDC
`Middle
`District of
`Florida -
`Tampa Bay
`8:13cv1595
`06/18/2013
`Tampa
`
`Tampa Bay
`USDC
`Middle
`District of
`Florida -
`Tampa Bay
`8:11cv1160
`05/25/2011
`Tampa
`
`Geodetic Services Inc.
`v.
`Zhenghzou Sunward
`Technology Co. Ltd., a
`Chinese co.
`
`Judge: Scriven
`
`Copyright infringement.
`Plaintiff partnered with
`defendant to distribute its
`product in China. Defendant
`copied the product and now
`competes against plaintiff.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`Grayrobinson
`
`Oceans of Images Photograph
`Inc.
`v.
`Foster And Smith Inc.
`
`Judge: Moody
`
`Copyright infringement. The
`defendant used photos of
`which the plaintiff owns the
`copyright.
`
`P: Woodrow
`Pollack
`P. Lawyer
`Firm:
`Grayrobinson
`
`6