Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1056152
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`Filing date:
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`05/18/2020
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`Proceeding
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`Party
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`Correspondence
`Address
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`91254264
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`Defendant
`Ispira Srl
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`JASON L DEFRANCESCO
`HILL WALLACK LLP
`21 ROSZEL RD
`PRINCETON, NJ 08540
`UNITED STATES
`jdefrancesco@hillwallack.com, ipdocket@hillwallack.com
`609-734-6360
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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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`Attachments
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`Opposition/Response to Motion
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`Jason DeFrancesco
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`jdefrancesco@hillwallack.com
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`/Jason DeFrancesco/
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`05/18/2020
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`Response to extension.pdf(63670 bytes )
`Emails.PDF(174077 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`M2BPens Florida LLC,
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`v.
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`Ispira Srl,
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`Opposer,
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`Applicant.
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`Opposition No.: 91254264
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`APPLICANT’S RESPONSE TO
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`OPPOSER’S MOTION FOR EXTENSION OF TIME
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`Opposer requests additional time to respond to Opposer’s Motion to Dismiss. Subject
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`to the motion, Opposer improperly states “Applicant refused to consent.” The false light is out
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`of context and without merit. Under the circumstances, the undersigned could not get
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`authorization from Applicant in Italy, within the time demanded by Opposer. Applicant did
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`not refuse. Attached are communications.
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`BACKGROUND
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`On December 2019, Opposer sent Applicant a cease and desist letter. The letter
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`accused Applicant of patent infringement for a pen design. Although Opposer has no patent, if
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`Applicant did not agree to demands, Opposer would bring a TTAB proceeding to tie-up
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`Applicant’s application in the US and require Applicant to incur avoidable legal expenses
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`outside its country. (Applicant’s application is an extension of protection, under Section
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`66(A)). On December 2019, Opposer filed its own 1(b) application with the USPTO to
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`register a same LEONARDO for pens as Applicant. The application was filed by wife of
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`Opposer’s sole-owner, using her maiden name and a different address.
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`On January 2020, Opposer filed its Notice of Opposition.
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`The Opposition alleges,
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`(1)
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`Even though Opposer has an application pending for
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`LEONARDO on pens, LEONARDO is descriptive for pens and should
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`not register to Applicant.
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`(2)
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`Even though Opposer has an application pending for
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`LEONARDO on pens, LEONARDO creates a false association with
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`Leonardo da Vinci for pens and should not register to Applicant.
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`(3)
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`Even though there is no use requirement for trademark
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`applications pending with the USPTO under Section 66(A), Opposer
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`alleges Applicant defrauded the USPTO or abandoned its mark because
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`Applicant did not have use when the IB transmitted the International
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`Application to the USPTO.
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`(4)
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`Even though Applicant has an Italian trademark
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`registration, which allows Applicant to use ® in US commerce, Opposer
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`incorrectly concludes this is misuse of the registration symbol.
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`The Opposition is fatally defective and without merit. The sole purpose is to harass
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`Applicant and use the TTAB as a vehicle for leverage in an unrelated “patent” dispute.
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`Notwithstanding, Applicant does not enter an objection, but respectfully requests the
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`Board determine appropriateness of the request under the circumstances.
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`Dated: May 18, 2020
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`By:
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`Respectfully submitted,
`Hill Wallack LLP
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`/Jason DeFrancesco/
`Jason DeFrancesco
`21 Roszel Rd.
`Princeton, NJ 08540
`(609) 734-6360
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`Attorneys for Applicant,
`Ispira Srl
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing was served on this day via
`e–mail upon Kaustubh Nadkarni <ip@nadkarnilaw.com> on May 18, 2020.
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`/Jason DeFrancesco/
`Jason DeFrancesco
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`3
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`Jason L. DeFrancesco
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`From: Kaustubh Nadkarni <ip@nadkarnilaw.com>
`Sent: Thursday, May 14, 2020 2:01 PM
`To: Jason L. DeFrancesco <jdefrancesco@HillWallack.com>
`Cc: IPDocket <ipdocket@HillWallack.com>
`Subject: Re: M2B Pens v Ispira, TTAB 91254264 (Leonardo Officina Italiana, Serial No. 79247573)
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`FRE 408
`Settlement Purposes Only
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`Jason,
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`Its rather unfortunate that you and your client could not reciprocate and extend the same professional courtesy
`of consent to extension of time. Please see receipt of our filing.
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`We ask that you do not threaten us again with your baseless comments on harassment and gamesmanship. They
`have no merit as far as the case or our client is concerned. However, in the unlikely event that such meritless
`statements are made to tarnish our client’s reputation, please be advised that M2B Pens is fully prepared to
`respond against your client as well.
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`Thank you.
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`Best Regards,
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`Kaustubh Nadkarni, Esq.
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`From: Jason L. DeFrancesco <jdefrancesco@HillWallack.com>
`Sent: Thursday, May 14, 2020 11:21 AM
`To: 'Kaustubh Nadkarni' <ip@nadkarnilaw.com>
`Cc: IPDocket <ipdocket@HillWallack.com>
`Subject: RE: M2B Pens v Ispira, TTAB 91254264 (Leonardo Officina Italiana, Serial No. 79247573)
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`Kaustubh,
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`1
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`I was unable to receive authorization to consent to your request.
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`While I do not anticipate entering an objection to your motion to extend, a statement will likely be made about
`harassment and gamesmanship (not limited to the LEONARDO filing in wife’s name).
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`There is no TM dispute over serial no. 79247573. The opposition should be withdrawn.
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`Regards,
`Jason
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`From: Kaustubh Nadkarni <ip@nadkarnilaw.com>
`Sent: Thursday, May 14, 2020 9:47 AM
`To: Jason L. DeFrancesco <jdefrancesco@HillWallack.com>
`Cc: IPDocket <ipdocket@HillWallack.com>
`Subject: Re: M2B Pens v Leonardo Officina Italiana (Serial No. 79247573)
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`Jason,
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`Kindly let us know by today on the extension of time.
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`Thank you.
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`Best Regards,
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`Kaustubh Nadkarni, Esq.
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`PRIVILEGE AND CONFIDENTIALITY NOTICE: This e-mail is covered by the Electronic Communications Privacy Act, 18 U.S.C. § 2510-2521 and is legally
`privileged. The contents of this e-mail message and any attachments are intended solely for the party or parties addressed and named in this message. This
`communication and all attachments, if any, are intended to be and to remain confidential, and it may be subject to work product privileges. If you are not the intended
`recipient of this message, or if this message has been addressed to you in error, please immediately alert the sender by reply e-mail and then delete this message and its
`attachments. Do not deliver, distribute, or copy this message and or any attachments if you are not the intended recipient. Do not disclose the contents or take any
`action in reliance upon the information contained in this communication or any attachments. Although this E-mail and any attachments are believed to be free of any
`virus or other defect that might affect any computer system into which it is received and opened, it is the responsibility of the recipient to ensure that it is virus free and
`no responsibility is accepted by Sender for damage arising in any way from its use.
`
`
`
`From: Kaustubh Nadkarni <ip@nadkarnilaw.com>
`Sent: Wednesday, May 13, 2020 1:08 PM
`To: Jason L. DeFrancesco <jdefrancesco@HillWallack.com>
`Cc: IPDocket <ipdocket@HillWallack.com>
`Subject: Re: M2B Pens v Ispira, TTAB 91254264 (Leonardo Officina Italiana, Serial No. 79247573)
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`FRE 408
`Settlement Purposes Only
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`Jason,
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`2
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`We are requesting the same extension as a professional courtesy that we extended to your client
`recently. Kindly let us know at your earliest.
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` I
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` need something to take to my client to see if they are amenable to it. There may be a great opportunity to put
`this behind and both of our clients to move forward.
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`Thank you.
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`Best Regards,
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`Kaustubh Nadkarni, Esq.
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`
`PRIVILEGE AND CONFIDENTIALITY NOTICE: This e-mail is covered by the Electronic Communications Privacy Act, 18 U.S.C. § 2510-2521 and is legally
`privileged. The contents of this e-mail message and any attachments are intended solely for the party or parties addressed and named in this message. This
`communication and all attachments, if any, are intended to be and to remain confidential, and it may be subject to work product privileges. If you are not the intended
`recipient of this message, or if this message has been addressed to you in error, please immediately alert the sender by reply e-mail and then delete this message and its
`attachments. Do not deliver, distribute, or copy this message and or any attachments if you are not the intended recipient. Do not disclose the contents or take any
`action in reliance upon the information contained in this communication or any attachments. Although this E-mail and any attachments are believed to be free of any
`virus or other defect that might affect any computer system into which it is received and opened, it is the responsibility of the recipient to ensure that it is virus free and
`no responsibility is accepted by Sender for damage arising in any way from its use.
`
`
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`From: "Jason L. DeFrancesco" <jdefrancesco@HillWallack.com>
`Date: Wednesday, May 13, 2020 at 12:55 PM
`To: Kaustubh Nadkarni <ip@nadkarnilaw.com>
`Cc: IPDocket <ipdocket@HillWallack.com>
`Subject: RE: M2B Pens v Ispira, TTAB 91254264 (Leonardo Officina Italiana, Serial No. 79247573)
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`Kaustubh,
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`The opposition should be withdrawn.
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`Nevertheless, I forwarded your request to Ispira and will let you know.
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`Regards,
`Jason
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`
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`From: Kaustubh Nadkarni <ip@nadkarnilaw.com>
`Sent: Tuesday, May 12, 2020 10:23 PM
`To: Jason L. DeFrancesco <jdefrancesco@HillWallack.com>
`Cc: IPDocket <ipdocket@HillWallack.com>
`Subject: Re: M2B Pens v Leonardo Officina Italiana (Serial No. 79247573)
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`Jason,
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`Please let us know if you consent to a thirty day extension for Opposer to respond to the motion.
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`3
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`Thank you.
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`Best Regards,
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`Kaustubh Nadkarni, Esq.
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`
`
`PRIVILEGE AND CONFIDENTIALITY NOTICE: This e-mail is covered by the Electronic Communications Privacy Act, 18 U.S.C. § 2510-2521 and is legally
`privileged. The contents of this e-mail message and any attachments are intended solely for the party or parties addressed and named in this message. This
`communication and all attachments, if any, are intended to be and to remain confidential, and it may be subject to work product privileges. If you are not the intended
`recipient of this message, or if this message has been addressed to you in error, please immediately alert the sender by reply e-mail and then delete this message and its
`attachments. Do not deliver, distribute, or copy this message and or any attachments if you are not the intended recipient. Do not disclose the contents or take any
`action in reliance upon the information contained in this communication or any attachments. Although this E-mail and any attachments are believed to be free of any
`virus or other defect that might affect any computer system into which it is received and opened, it is the responsibility of the recipient to ensure that it is virus free and
`no responsibility is accepted by Sender for damage arising in any way from its use.
`
`
`From: Jason L. DeFrancesco <jdefrancesco@HillWallack.com>
`Sent: Monday, May 11, 2020 4:00 PM
`To: 'Kaustubh Nadkarni' <ip@nadkarnilaw.com>
`Cc: IPDocket <ipdocket@hillwallack.com>
`Subject: RE: M2B Pens v Leonardo Officina Italiana (Serial No. 79247573)
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`Dear Kaustubh,
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`Thank you for the follow-up.
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`We await your response to the motion to dismiss.
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` disagree with how you state the Board will treat the motion to dismiss, but look forward to your client’s
`opposition to same.
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`Best,
`Jason
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`From: Kaustubh Nadkarni <ip@nadkarnilaw.com>
`Sent: Monday, May 11, 2020 9:16 AM
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`4
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`To: Jason L. DeFrancesco <jdefrancesco@HillWallack.com>
`Cc: IPDocket <ipdocket@HillWallack.com>
`Subject: Re: M2B Pens v Leonardo Officina Italiana (Serial No. 79247573)
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`FRE 408
`Settlement Purposes Only
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`Jason,
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`Hope this finds you well.
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`We are in receipt of your motion. Before we respond and the case moves forward, we would like to inquire
`again – is your client interested in a settlement?
` Both parties have an opportunity to walk away without having to incur
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`significant costs.
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`Please note that even in the worst case scenario, which is unlikely, the TTAB will ask us to amend the
`complaint, which should be a non-issue based on the facts. The case will move forward and it will end up
`costing your client a lot of money and any settlement would be off the table at that point.
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`We ask that you client re-think about the settlement based on the agreement terms provided to you.
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`Kindly let us know, on or before May 14, 2020 so that we can proceed accordingly.
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`Best Regards,
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`
`
`Kaustubh Nadkarni, Esq.
`BS Engineering, JD, MBA, LLM
`Intellectual Property Business and Litigation Attorney
`Six Sigma Champion
`Admitted, Southern, Middle and Northern District of Florida
`Admitted, Court of Appeals for the Federal Circuit
`Approved for Admissions, Supreme Court of the United States
`Email: ip@nadkarnilaw.com | Phone: 7863001227
`Website: www.nadkarnilaw.com
`
`
`
`
`
`
`PRIVILEGE AND CONFIDENTIALITY NOTICE: This e-mail is covered by the Electronic Communications Privacy Act, 18 U.S.C. § 2510-2521 and is legally
`privileged. The contents of this e-mail message and any attachments are intended solely for the party or parties addressed and named in this message. This
`communication and all attachments, if any, are intended to be and to remain confidential, and it may be subject to work product privileges. If you are not the intended
`recipient of this message, or if this message has been addressed to you in error, please immediately alert the sender by reply e-mail and then delete this message and its
`attachments. Do not deliver, distribute, or copy this message and or any attachments if you are not the intended recipient. Do not disclose the contents or take any
`
`5
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`action in reliance upon the information contained in this communication or any attachments. Although this E-mail and any attachments are believed to be free of any
`virus or other defect that might affect any computer system into which it is received and opened, it is the responsibility of the recipient to ensure that it is virus free and
`no responsibility is accepted by Sender for damage arising in any way from its use.
`
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`6
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