Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA872127
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`Filing date:
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`01/19/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91225884
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Plaintiff
`University of Kentucky
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`MICHAEL S HARGIS
`KING & SCHICKLI PLLC
`800 CORPORATE DRIVE SUITE 200
`LEXINGTON, KY 40503
`UNITED STATES
`Email: michael@iplaw1.net, trevor@iplaw1.net
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`Opposition/Response to Motion
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`Michael S. Hargis
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`michael@iplaw1.net, trevor@iplaw1.net, jim@francis-law.com
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`/Michael S. Hargis/
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`01/19/2018
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`Attachments
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`Response to Motion to Suspend.pdf(4914118 bytes )
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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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`In the Matter of Registration Application Serial No. 86/577,855
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`Filed March 26, 2015
`For the mark KENTUCKY MIST MOONSHINE & Design
`Published in the Official Gazette on January 19, 2016
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`UNIVERSITY OF KENTUCKY,
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`Opposer,
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`KENTUCKY MIST MOONSHINE, INC.
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`Applicant.
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`: OPPOSITION NO. 91225884
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`RESPONSE TO APPLICANT’S MOTION TO SUSPEND AND MOTION TO SUSPEND
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`Pursuant to Trademark Trial and Appeal Board Rules of Procedure, the University of
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`Kentucky (“Opposer”) hereby responds to Kentucky Mist Moonshine, Inc.’s (“Applicant”)
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`Motion to Extend [TTABVUE 29] requesting denial of Applicant’s Motion to Extend for three
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`reasons.
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`First, the motion fails to set forth the facts said to constitute good cause with particularity.
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`See, e.g., SFW Licensing Corp. v. Di Pardo Packing Ltd., 60 USPQ2d 1372, 1373 (TTAB 2001)
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`(opposers had not come forward with “detailed facts” required to carry their burden explaining
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`their inaction); Luemme, Inc. v. D. B. Plus Inc., 53 USPQ2d 1758, 1760-61 (TTAB 1999) (sparse
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`motion contained insufficient facts on which to find good cause and plaintiff failed to set forth
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`detailed facts concerning the circumstances - plaintiff’s allegedly busy travel schedule - which
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`necessitated the extension); and Johnston Pump/General Valve Inc. v. Chromalloy American
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`Corp., 13 USPQ2d 1719, 1720 n.3 (TTAB 1989) (“The presentation of one’s arguments and
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`authority should be presented thoroughly in the motion or the opposition brief thereto.”).
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`Second, the motion fails to demonstrate that the requested extension of time is not
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`necessitated by the party’s own lack of diligence or unreasonable delay in taking the required
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`action during the time previously allotted therefor. See, Luemme, Inc., 53 USPQ2d at 1760-61
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`(diligence not shown; discovery requests not served until last day of the discovery period, and
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`record showed that need for extension in fact resulted from plaintiff’s delay and lack of diligence
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`during previously-set discovery period).
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`Third, the motion misleads the Board with regard to Opposer’s suggestion that
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`Applicant’s Rule 30(b)(6) deposition may require rescheduling after the discovery deadline and
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`whether both parties require additional time to finish discovery.
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`FACTS
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`Opposer filed its Notice of Opposition on January 19, 2016 [TTABVUE 1]. In lieu of an
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`answer, Applicant sought suspension of the Opposition which was granted by the Board
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`[TTABVUE 8]. Upon termination of the civil litigation, the Board granted Opposer’s Motion to
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`Resume and reset trial dates on September 29, 2016 [TTABVUE 11]. Again in lieu of an
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`Answer, Applicant filed a Motion to Dismiss which was denied in-part by the Board in its Order
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`dated January 12, 2017 [TTABVUE 15]. That order reset trial dates including the opening of
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`discovery to February 19, 2017. On that same day, January 12, 2017, following the Board’s
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`Order, Opposer filed a First Amended Notice of Opposition [TTABVUE 16]. Applicant filed an
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`Answer thereto on February 1, 2017 [TTABVUE 17].
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`Opposer served initial written discovery requests on Applicant on February 20, 2017.
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`These initial requests included (1) Opposer’s First Set of Requests for Admissions, (2) Opposer’s
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`First Set of Requests for Production of Documents, and (3) Opposer’s First Set of Interrogatories
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`to Applicant. Concurrently, Opposer filed a Motion to Strike Affirmative Defenses [TTABVUE
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`18] which motion was granted on March 17, 2017, via an Order again resetting trial dates
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`including a new “opening” of discovery on April 14, 2017. Applicant filed its Amended Answer
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`on March 25, 2017, [TTABVUE 24].
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`Between this period and June 1, 2017, the parties exchanged email communications
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`regarding outstanding discovery responses and settlement, and a proposed settlement agreement
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`was drafted by Opposer and forwarded to Applicant on April 3, 2017. In email correspondence
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`from Opposer to Applicant dated June 1, 2017, Opposer requests information concerning the
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`outstanding discovery responses which Applicant stated were due May 14, 2017.1 [Exhibit A].
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`The parties continued to work toward settlement and Applicant provided email correspondence
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`on June 2, 2017, indicating that Applicant was “working on” responses. [Exhibit B].
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`On June 30, 2017, Opposer sent another email communication demanding responses to
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`the initial discovery requests by July 8, 2017. [Exhibit C]. On July 17, 2017, Opposer sent still
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`another email communication requesting a status update concerning the still outstanding
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`discovery responses. [Exhibit D].
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`The parties continued settlement negotiations and agreed to suspend proceedings on
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`September 1, 2017, [TTABVUE 25] and October 3, 2017, [TTABVUE 27] thereby
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`reestablishing the close of discovery as January 9, 2018. On the same day (October 3, 2017), the
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`Board issued an Order suspending proceedings through December 3, 2017, and gave the parties
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`an additional thirty days from resumption in which to serve responses to any outstanding
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`discovery requests. [TTABVUE 28].
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`1 Applicant managed to respond to Opposer’s First Set of Requests for Admission to Applicant on March 31, 2017.
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`Subsequent to the resumption of proceedings, on December 4, 2017, Opposer sent written
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`correspondence to Applicant reiterating the Board’s allowance of an additional thirty (30) day
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`period in which to respond to outstanding discovery and informing Applicant that “we expect to
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`receive responses . . . no later than January 1, 2017.” (emphasis added) [Exhibit E]. Given
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`Applicant’s apparent reluctance to seriously engage settlement discussions and its complete
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`disregard for discovery rules, Opposer further indicated that it would “not agree to any further
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`extensions.” (emphasis added) [Id.]. The December 4, 2017, correspondence further included
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`Opposer’s Notice of Rule 30(b)(6) Deposition, which was scheduled for January 5, 2017, and
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`Opposer’s second set of written discovery requests. [Id.].
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`On Friday, December 29, 2017, Applicant substantively responded to the December 4,
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`2017, correspondence indicating a demand to alter the location of the deposition. [Exhibit F].
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`The letter did not, however, address any other outstanding discovery or request an extension with
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`regard thereto. [Id.]. Given the timing immediately prior to the New Year holiday weekend,
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`Opposer indicated a willingness to accommodate Applicant’s witness, on January 2, 2017, by
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`moving the deposition to a different location and invited a telephone conference to discuss the
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`details. [Id]. The parties were able to speak on January 3, 2017, and reached an agreement
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`whereby the deposition was postponed “likely” until after the close of discovery pending
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`Opposer’s receipt of the still outstanding first written discovery requests (initially served
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`February 20, 2017). [Exhibit G].
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`On January 5, 2017, Applicant responded to the January 3rd email communication
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`indicating “that it would be appropriate to extend the discovery deadline for both parties and then
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`suspend the case to continue our settlement talks and muddling through discovery.” [Exhibit
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`H.]. The January 5th email communication concludes with “What do you think?” [Id.]. Prior to
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`receiving a response, and some twenty-two minutes after sending the January 5th email
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`communication, Applicant filed the present Motion to Extend. [TTABVUE 29].
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`To date, Applicant has provided unverified responses to Opposer’s First Set of
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`Interrogatories to Applicant and Opposer’s Second Set of Interrogatories to Applicant, a late
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`response to Opposer’s Second Set of Requests for Admission to Applicant2, and no response
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`whatsoever to Opposer’s First Set of Requests for Production of Documents to Applicant or
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`Opposer’s Second Set of Requests for Production of Documents to Applicant.
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`Applicant filed the present motion on January 5, 2018, some four (4) days prior to the
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`close of discovery.
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`ARGUMENT
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`The standard for granting an extension of a prescribed period prior to the expiration of
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`that period is good cause. See Fed. R. Civ. P. 6(b)(1). Ordinarily, the Board is liberal in granting
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`extensions of time before the period to act has elapsed, so long as the moving party has not been
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`guilty of negligence or bad faith and the privilege of extensions is not abused. American Vitamin
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`Products Inc. v. DowBrands Inc., 22 USPQ2d 1312, 1314 (TTAB 1992).
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`The party moving for an extension bears the burden of proof, and must “state with
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`particularity the grounds therefor, including detailed facts constituting good cause.” Luemme,
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`Inc. v. D.B. Plus Inc., 53 U.S.P.Q.2D (BNA) 1758, 1760 (Trademark Trial & App. Bd. Apr. 12,
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`1999). See also, Trademark Rule 2.127(a); HKG Industries, Inc. v. Perma-Pipe, Inc., 49
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`USPQ2d 1156, 1158 (TTAB 1998); and Johnston Pump/General Valve Inc. v. Chromally
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`American Corp., 13 USPQ2d 1719, 1720 n.3 (TTAB 1989). Given this standard, the Board
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`should use its discretion in this proceeding to deny Applicant’s Motion to Extend.
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`2 Opposer’s Second Set of Requests for Admission to Applicant stand admitted in view of Applicant’s failure to
`timely respond thereto. See, Fed. R. Civ. P. 36(a)(3); see also Pinnochio’s Pizza Inc. v. Sandra Inc., 11 USPQ2d
`1227, 1228 n.5 (TTAB 1989).
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`Applicant Does Not State Facts with Sufficient Particularity
`to Establish Good Cause
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`In its Motion to Extend, Applicant first states “[t]he Defendant requires additional time
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`due to serious injuries suffered by Defense counsel in November which delayed work on the
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`Defendant’s behalf.” [TTABVUE 29]. This one line explanation falls woefully short of the
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`requirement of stating with particularity the grounds for the requested extension. For instance,
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`when did the injury occur, was counsel completely unable to work for a period, what was the
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`period, what was the injury that prevented work, a phone call, etc. Without more, the one line
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`explanation is insufficient to constitute good cause.
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`Applicant Fails to Demonstrate the Extension is Not Necessitated
`by Its Own Lack of Diligence
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`Even more, the motion fails to demonstrate that the requested extension of time is not
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`necessitated by the party’s own lack of diligence or unreasonable delay in taking the required
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`action during the time previously allotted therefor.
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`First, it is important to note that counsel’s reason for failing to conduct discovery
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`between February 19, 2017, and November 1, 2018, is not the result of an injury in November.
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`Applicant provides no explanation for this failure. In fact, Applicant elected to forego discovery
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`efforts from the initial opening of discovery on February 19, 2017, until the November injury
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`which is at least an eight (8) month period of time. While Applicant will no doubt reply that the
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`parties were engaged in settlement discussions during at least a portion of this period, the email
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`communications attached to this Response clearly show that Opposer was actively conducting
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`discovery throughout this period and continuously insisting that Applicant participate in the
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`process, at the very least, by responding to outstanding discovery requests. At no time prior to, or
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`even after, the November injury has Applicant alerted Opposer or the Board to the now relied
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`upon circumstances, or even requested an extension – until the 11th hour, i.e., January 5, 2018,
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`exactly four (4) days prior to the close of discovery.
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`Second, it is worth noting that Applicant states that the November injury delayed work
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`“on the Defendant’s behalf.” Apparently, however, the injury did not preclude work on all of
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`counsel’s client’s work as a plethora of filings were made throughout November and December
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`in at least U.S. District Court for the Eastern District of Kentucky.3 These filings include: (1) a
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`Motion to Compel compliance with subpoena duces tecum (Nov. 1, 2017); (2) a Motion for
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`Temporary Restraining Order and Motion for Preliminary Injunction (Nov. 13, 2017); (3) an
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`Amended Memorandum (Nov. 21, 2017); (4) a Joint Motion for Protective Order (Dec. 9, 2017);
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`and (5) a Joint Claims Construction Statement (Dec. 11, 2017). [Exhibit I].
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`Third, Applicant waited until two (2) days before the close of discovery to serve its first
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`discovery requests. The written discovery requests were served on January 7, 2018. Clearly, the
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`reason for the present motion is due to Applicant’s lack of diligence in propounding discovery
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`within an appropriate time period such that responses to its discovery requests could be made
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`prior to the close of discovery in accordance with Trademark Rule 2.120. Applicant’s present
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`Motion to Extend is a blatant attempt to overcome this problem created by its own dilatory
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`behavior and to avoid this circumstance.
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`Applicant Misleads the Board
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`Last, Applicant states in its Motion to Extend that “Plaintiff has asked to schedule the
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`deposition of the Defendant after the deadline” and concludes that “it appears that both parties
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`require additional time to finish discovery.” [TTABVUE 29]. This statement is clearly intended
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`to mislead the Board.
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`3 Blazer v. Chrisman Mill Farms LLC, Case 5:17-cv-00430 (filed February 7, 2017).
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`As the facts establish, Applicant received first written discovery requests from Opposer
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`in February 2017, making it keenly aware of the opening of the discovery period. Opposer has
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`repeatedly requested responses to those first written discovery requests throughout the ensuing
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`year. Even with the Board’s October Order [TTABVUE 28] suspending proceedings through
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`December 3, 2017, and giving the parties an additional thirty days from resumption in which to
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`serve responses to any outstanding discovery requests, Applicant failed to meet even the
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`extended deadline. To date, Applicant has yet to produce a response to Opposer’s document
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`requests or verified responses to interrogatories. This complete disregard for the Board’s rules is
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`the reason that Opposer indicated to Applicant that it would likely need to postpone the noticed
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`deposition. As is customary, it would be beneficial to the deposition to have Applicant’s
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`responses to written discovery requests prior to the deposition. This fact was explained to
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`Applicant as the reason for likely postponing the deposition in email correspondence [Exhibit
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`G].
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`For Applicant to subsequently suggest that Opposer requires additional time due entirely
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`to Applicant’s failure to abide by discovery rules is farcical at best. The fact is that Opposer does
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`not require any additional time to conduct discovery. Rather, Opposer apparently requires
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`additional time to receive any responses to its multiple unanswered discovery requests from
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`Applicant. This does not require an extension of the discovery period for either party, but may
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`require an order from the Board compelling responses to all outstanding discovery.
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`CONCLUSION
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`WHEREFORE, Opposer requests that Applicant’s Motion to Extend be denied and that
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`the discovery period remain closed. Opposer would further request that the Board (1) suspend
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`proceedings until such time as all outstanding discovery requests are received and Opposer is
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`able to conduct its previously noticed Rule 30(b)(6) deposition, and (2) order Applicant to
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`respond to all outstanding discovery requests by a date certain or be subject to sanctions,
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`preferably, in the form of sustaining the opposition. Opposer would request any other and further
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`relief as deemed appropriate.
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`Dated: January 19, 2018
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`Respectfully submitted,
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`By:
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` /Michael S. Hargis/
`Michael S. Hargis
`KING & SCHICKLI, PLLC
`800 Corporate Drive
`Lexington, KY 40503
`Telephone: (859) 252-0889
`Facsimile: (859) 252-0779
`Attorneys for University
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`-9-
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`I hereby certify that on this the 19th day of January 2018, a true and correct copy of the
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`foregoing University’s Response to Applicant Kentucky Mist Moonshine, Inc.’s Motion to
`Extend was served on attorney for Applicant via electronic mail to:
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`James M. Francis
`2333 Alexandria Drive
`Lexington, Kentucky 40504
`jim@francis-law.com
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`CERTIFICATE OF SERVICE
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` /Michael S. Hargis/
`Michael S. Hargis
`Attorney for Opposer
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`EXHIBIT A
`EXHIBIT A
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`Michael Hargis
`From:
`Sent:
`To:
`Subject:
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`Michael Hargis
`Thursday, June 1, 2017 3:02 PM
`Jim Francis | Attorney at Law
`Our Reference 850-109 OPP | Opposition No. 91225884 - KENTUCKY MIST
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`Dear Jim,
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`In follow-up our recent communications, including your email of April 19, 2017, in which you indicate a belief that
`discovery responses were due May 14, 2017, I am writing to inquire whether you intend to respond to to Opposer’s
`initial discovery requests. This email is in follow-up to the same question presented on May 17, 2017, shortly after the
`date you indicated the responses were due.
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`If I do not receive a response by tomorrow, I intend to contact the interlocutory attorney and request a teleconference
`concerning the outstanding discovery. There is also a draft settlement agreement that you indicated an intent to “wrap
`up” in March. You have had the proposed agreement for weeks without response. Please advise.
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`Kind Regards,
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`Michael
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` About the Firm Our Attorneys
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`Michael S. Hargis
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`Registered Patent and Trademark Attorney
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`King & Schickli, PLLC
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`800 Corporate Drive, Suite 200, Lexington, KY 40503
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`Telephone: (859) 252-0889
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`Facsimile: (859) 252-0779
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`michael@iplaw1.net
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`
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`The contents of this e-mail are confidential and may be privileged, and are intended only for the use of the person or company
`named herein. If you are not the intended recipient of this e-mail or a person responsible for delivering it to the intended recipient,
`you are hereby notified that any distribution, copying or dissemination of the information herein is strictly prohibited. If you have
`received this e-mail in error, please contact us immediately by telephone, facsimile or e-mail, and then delete the e-mail from your
`computer system without keeping any copies. Furthermore, nothing herein relating to settlement shall be considered an admission
`for purposes of FRE 408 or the corresponding state rule of evidence. Thank you.
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`1
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`EXHIBIT B
`EXHIBIT B
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`Michael Hargis
`From:
`Sent:
`To:
`Subject:
`Attachments:
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`Jim Francis | Attorney at Law <jim@francis-law.com>
`Friday, June 2, 2017 11:31 AM
`Michael Hargis
`Opp 91225884
`91225884 Initial Disclosures.pdf
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`There was a misunderstanding on the part of the client regarding how to answer the interrogatories and produce
`documents. They are working on it. The document request was exceptionally broad and they are trying to cull the
`responsive documents from their files. Can you forward the word document for the interrogatories to make it easier to
`answer?
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`Jim
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`Virus-free. www.avast.com
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`EXHIBIT C
`EXHIBIT C
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`Michael Hargis
`From:
`Sent:
`To:
`Subject:
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`Michael Hargis
`Friday, June 30, 2017 11:37 AM
`Jim Francis | Attorney at Law
`RE: Good to Go...one caveat
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`Jim,
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` I
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` need a revised agreement or responses to the past due written discovery requests no later than July 8th.
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`I’m not sure what is going on but this has been dragging on for a long time and needs to wrap up or move forward with
`the opposition/discovery.
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` I
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` look forward to hearing from you.
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`Kind Regards,
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`Michael
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` About the Firm Our Attorneys
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`
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`
`
`Michael S. Hargis
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`Registered Patent and Trademark Attorney
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`King & Schickli, PLLC
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`800 Corporate Drive, Suite 200, Lexington, KY 40503
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`Telephone: (859) 252-0889
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`Facsimile: (859) 252-0779
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`michael@iplaw1.net
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`
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`The contents of this e-mail are confidential and may be privileged, and are intended only for the use of the person or company
`named herein. If you are not the intended recipient of this e-mail or a person responsible for delivering it to the intended recipient,
`you are hereby notified that any distribution, copying or dissemination of the information herein is strictly prohibited. If you have
`received this e-mail in error, please contact us immediately by telephone, facsimile or e-mail, and then delete the e-mail from your
`computer system without keeping any copies. Furthermore, nothing herein relating to settlement shall be considered an admission
`for purposes of FRE 408 or the corresponding state rule of evidence. Thank you.
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`
`
`From: Jim Francis | Attorney at Law [mailto:jim@francis-law.com]
`Sent: Friday, June 2, 2017 3:51 PM
`To: Michael Hargis <michael@iplaw1.net>
`Subject: RE: Good to Go...one caveat
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`Already in the works.
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`Jim
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`1
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`EXHIBIT D
`EXHIBIT D
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`Michael Hargis
`From:
`Sent:
`To:
`Subject:
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`Michael Hargis
`Monday, July 17, 2017 10:23 AM
`Michael Hargis
`RE: Good to Go...one caveat
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`Jim,
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`Please bring me up to date.
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`Michael
`
`From: Michael Hargis
`Sent: Friday, June 30, 2017 12:44 PM
`To: 'jim' <jim@francis-law.com>
`Subject: RE: Good to Go...one caveat
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`Jim,
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`They would be excluded from using royal blue and close shades. They could use light blue, navy blue, purples, etc. I’m
`not confident that UK will agree to specific numbers. Maybe if your client proposed a number, or numbers, that they
`desire to use, that would be easier. The University could simply approve specific numbers ahead of time. There are
`obvious numbers that would be fine, obvious numbers in the grey area, and obvious problematic numbers.
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`If I had to select PMS numbers, they would be 273-275, 279-281, 285-288, 293-295, 300-302, 2675, 2685, 2725-2728,
`2735-2738, 2745-2748, 2755-2758, 2935, 2945, 2955, 3005, 3015, and 3025. See attached chart.
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`Michael
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`From: jim [mailto:jim@francis-law.com]
`Sent: Friday, June 30, 2017 12:19 PM
`To: Michael Hargis <michael@iplaw1.net>
`Subject: RE: Good to Go...one caveat
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`Do you have the color numbers for the blues they can't use?
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`Jim
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`Sent from my Verizon, Samsung Galaxy smartphone
`
`-------- Original message --------
`From: Michael Hargis <michael@iplaw1.net>
`Date: 6/30/17 11:37 AM (GMT-05:00)
`To: Jim Francis | Attorney at Law <jim@francis-law.com>
`Subject: RE: Good to Go...one caveat
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`Jim,
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`EXHIBIT E
`EXHIBIT E
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`December 7, 2017
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`Re: U.S. Patent and Trademark Office Trademark
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` Trial and Appeal Board
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`Opposition No. 91225884
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`Our Reference: 850-109 OPP
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`Warren D. Schickli
`Michael S. Hargis
`Andrew D. Dorisio
`Patrick M. Torre, Ph.D.
`___________
`
`Trevor T. Graves
`Nicholas P. Coleman
`___________
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`
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`Of Counsel
`J. Ralph King
`Zachary E. Derbyshire, Ph.D.
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`Mr. James M. Francis
`Francis Law Firm
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`2333 Alexandria Dr.
`Lexington, Kentucky 40504
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`Dear Jim:
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`As you are aware, the Board’s Order dated October 3, 2017, temporarily
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`suspended proceedings allowing them to resume, without more, on December 2, 2017.
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`Outstanding Discovery Requests
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`The Board further allowed thirty days from resumption in which to serve
`responses to any outstanding discovery requests. Accordingly, we expect to receive
`responses to (1) Opposer’s First Set of Requests for Production of Documents to
`Applicant, and (2) Opposer’s First Set of Interrogatories to Applicant, no later than
`January 1, 2018. As these requests were served on February 20, 2017, the University is
`not interested in delaying the process further.
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`Additional Discovery Requests
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`Enclosed, please find (1) Opposer’s Second Set of Requests for Admission to
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`Applicant, (2) Opposer’s Second Set of Requests for Production of Documents to
`Applicant, and (3) Opposer’s Second Set of Interrogatories to Applicant served on
`February 20, 2017.
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`Notice of Deposition
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`Enclosed, please find Opposer’s Notice of Rule 30(b)(6) Deposition.
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`800 Corporate Drive, Suite 200 | Lexington, Kentucky 40503 | Tel: (859) 252-0889 | Fax: (859) 252-0779 | www.iplaw1.net
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`Mr. James M. Francis
`Francis Law Firm
`December 7, 2017
`Page 2
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`Settlement Negotiations
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`As my records indicate that a first proposed settlement agreement was directed to
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`your attention on April 3, 2017, and a latest revised agreement was directed to your
`attention on September 21, 2017. I look forward to receipt of any comments you may
`have regarding same.
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`MSH/lks
`Enclosure
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`KING & SCHICKLI, PLLC
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`Very truly yours,
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`/Michael S. Hargis/
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`Michael S. Hargis
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`800 Corporate Drive, Suite 200 | Lexington, Kentucky 40503 | Tel: (859) 252-0889 | Fax: (859) 252-0779 | www.iplaw1.net
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`EXHIBIT F
`EXHIBIT F
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`Michael Hargis
`From:
`Sent:
`To:
`Subject:
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`Michael Hargis
`Wednesday, January 3, 2018 4:24 PM
`'Jim Francis'
`RE: Fultz Deposition
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`Dear Jim,
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` I
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` would appreciate a call at your earliest convenience.
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`Kind Regards,
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`Michael
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`Michael S. Hargis
`Registered Patent and Trademark Attorney
`King & Schickli, PLLC
`800 Corporate Drive, Suite 200
`Lexington, Kentucky 40503
`Telephone: (859) 252-0889
`Mobile: (859) 553-5537
`michael@iplaw1.net
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` About the Firm Our Attorneys
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`The contents of this e-mail are confidential and may be privileged, and are intended only for the use of the person or company
`named herein. If you are not the intended recipient of this e-mail or a person responsible for delivering it to the intended recipient,
`you are hereby notified that any distribution, copying or dissemination of the information herein is strictly prohibited. If you have
`received this e-mail in error, please contact us immediately by telephone, facsimile or e-mail, and then delete the e-mail from your
`computer system without keeping any copies. Furthermore, nothing herein relating to settlement shall be considered an admission
`for purposes of FRE 408 or the corresponding state rule of evidence. Thank you.
`
`From: Michael Hargis
`Sent: Tuesday, January 2, 2018 9:18 AM
`To: 'Jim Francis' <Jim@francis-law.com>
`Subject: RE: Fultz Deposition
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`Dear Jim,
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` I
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` just received your email seeking to amend the location of the deposition. While I am agreeable to a closer location, I
`would like to discuss the time and location with you at your convenience. I tried your phone but there was no answer
`this morning.
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`Please contact me when you get a chance today.
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`Kind Regards,
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`Michael
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` About the Firm Our Attorneys
`
`
`Michael S. Hargis
`Registered Patent and Trademark Attorney
`King & Schickli, PLLC
`800 Corporate Drive, Suite 200
`Lexington, Kentucky 40503
`Telephone: (859) 252-0889
`Mobile: (859) 553-5537
`michael@iplaw1.net
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`The contents of this e-mail are confidential and may be privileged, and are intended only for the use of the person or company
`named herein. If you are not the intended recipient of this e-mail or a person responsible for delivering it to the intended recipient,
`you are hereby notified that any distribution, copying or dissemination of the information herein is strictly prohibited. If you have
`received this e-mail in error, please contact us immediately by telephone, facsimile or e-mail, and then delete the e-mail from your
`computer system without keeping any copies. Furthermore, nothing herein relating to settlement shall be considered an admission
`for purposes of FRE 408 or the corresponding state rule of evidence. Thank you.
`
`From: Jim Francis [mailto:Jim@francis-law.com]
`Sent: Friday, December 29, 2017 1:43 PM
`To: Michael Hargis <michael@iplaw1.net>
`Subject: Fultz Deposition
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`Michael,
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`Mr. Fultz will be available for his deposition on January 5 in Whitesburg. He is objecting to having to travel to
`Lexington. Given the distance of 150 miles, I believe that his objection is valid.
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`Thanks,
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`Jim
`
`Francis Law Firm PLLC
`2333 Alexandria Dr
`Lexington, KY 40504
`859-519-0755
`jim@francis-law.com
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`EXHIBIT G
`EXHIBIT G
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`Michael Hargis
`From:
`Sent:
`To:
`Subject:
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`Michael Hargis
`Wednesday, January 3, 2018 5:03 PM
`'Jim Francis'
`Our Reference: 850-109 OPP | Opposition No. 91225884
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`Dear Jim,
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`It was good speaking with you this afternoon.
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`As we discussed, we have agreed to postpone the deposition of Mr. Fultz scheduled for January 5, 2018, in Lexington.
`The postponement will likely result in the deposition being taken after the close of discovery which is January 9, 2018.
`We have agreed that the deposition can be taken outside of this period if need be. We have further agreed that you are
`working to respond to both the first and second written discovery requests and will provide those in the near term. After
`receipt of the responses, we will work together to schedule the deposition 7-10 days or so thereafter. I anticipate that
`the deposition will be in Pikeville if not Lexington.
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`In the meantime, you are reviewing the settlement agreement that has been on the table for several months – including
`the rediscovered PMS numbers related to the color royal blue.
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`Last, after ending the discussion, I thought it might simply be best to suspend the proceedings for a 30 day period for the
`purpose of completing discovery/deposition/negotiations. Please let me know if you are in agreement.
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`Kind Regards,
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`Michael
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` About the Firm Our Attorneys
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`
`
`
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`
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`The contents of this e-mail are confidential and may be privileged, and are intended only for the use of the person or company
`named herein. If you are not the intended recipient of this e-mail or a person responsible for delivering it to the intended recipient,
`you are hereby notified that any distribution, copying or dissemination of the information herein is strictly prohibited. If you have
`received this e-mail in error, please contact us immediately by telephone, facsimile or e-mail, and then delete the e-mail from your
`computer system without keeping any copies. Furthermore, nothing herein relating to settlement shall be considered an admission
`for purposes of FRE 408 or the corresponding state rule of evidence. Thank you.
`
`
`
`Michael S. Hargis
`Registered Patent and Trademark Attorney
`King & Schickli, PLLC
`800 Corporate Drive, Suite 200
`Lexington, Kentucky 40503
`Telephone: (859) 252-0889
`Mobile: (859) 553-5537
`michael@iplaw1.net
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`EXHIBIT H
`EXHIBIT H
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`Michael Hargis
`From:
`Sent:
`To:
`Subject:
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`Jim Francis <Jim@francis-law.com>
`Friday, January 5, 2018 1:58 PM
`Michael Hargis
`RE: Our Reference: 850-109 OPP | Opposition No. 91225884
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`Mike,
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`I’ve got a call in to Kentucky Mist. I’m hoping to hear from him today.
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`I’m still trying to get to the documents he sent. The responses will go out no later than this weekend.
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`In light of your need for more time, I think that it would be appropriate to extend the discovery deadline for both parties
`and then suspend the case to continue our settlement talks and muddling through discovery.
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` I
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` think that we can settle this based on the restriction to specific PMS numbers.
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`What do