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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`9205651 7
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`Plaintiff
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`Orley, LLC
`TED SABETY
`HAND BALDACHIN & AMBURGEY LLP
`8 W 40TH STREET, FL 12
`NEW YORK, NY 10018
`UNITED STATES
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`docket@sabety.net
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`Reply in Support of Motion
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`Ted Sabety
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`docket@sabety.net
`ltsl
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`10/08/2013
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`Ps Reply to Opposition to Motion to Extend Discovery.pdf(205797 bytes)
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA563874
`ESTTA Tracking number:
`10/08/2013
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056517
`Plaintiff
`Orley, LLC
`TED SABETY
`HAND BALDACHIN & AMBURGEY LLP
`8 W 40TH STREET, FL 12
`NEW YORK, NY 10018
`UNITED STATES
`docket@sabety.net
`Reply in Support of Motion
`Ted Sabety
`docket@sabety.net
`/ts/
`10/08/2013
`Ps Reply to Opposition to Motion to Extend Discovery.pdf(205797 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`_________________________________________
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` Orley, LLC,
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` Petitioner,
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`| Cancellation No. 92056517
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` Orly International Inc.,
`| PETITIONER’S REPLY TO
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`| REGISTRANT’S OPPOSITION TO
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`| PETITIONER’S MOTION TO
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`| EXTEND DISCOVERY DATES
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` Registrant.
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`_________________________________________|
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`PETITIONER’S REPLY TO REGISTRANT’S OPPOSITION TO PETITIONER’S
`MOTION TO EXTEND DISCOVERY AND TRIAL DATES
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`Petitioner, Orley, LLC, (“Orley” or “Petitioner”) with an address of 648 Broadway, Suite
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`1003, New York, New York 10012, hereby replies to Registrant’s Opposition to Petitioner’s
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`Motion to Extend Discovery.
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`I.
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`PETITIONER HAS MET THE STANDARD OF GOOD CAUSE
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`The baseline of good cause was adequately demonstrated by Petitioner to justify the
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`Board granting its Motion to Extend. Good cause is generally found—especially on a first
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`briefed motion to extend—when the moving party has not been guilty of negligence or bad faith
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`and the privilege of extensions is not abused. See Am. Vitamin Prods. Inc. v. DowBrands Inc., 22
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`U.S.P.Q.2d 1312, 1314 (T.T.A.B. 1992). The cause of delay in this case was the press of another
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`federal patent litigation deadline, UbiComm LLC v. OpenSky Project, Inc., No. 1:13-cv-01020
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`(D. Del. 2013), as well as Registrant’s failure to meet its discovery obligations. Petitioner’s First
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`1
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`Request for documents expressly requested evidence of sales and transportation of ORLY
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`branded class 25 goods for every year from 1980 to 2013. But Registrant only provided
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`documents from 2006 to 2013 in its reply, and the majority of which were not even relevant
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`documents. Upon receiving Registrant’s non-responsive discovery document production by the
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`extended deadline, Petitioner expected that Registrant would supplement its responses in order to
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`meet its obligations under Federal Rule of Civil Procedure 26(e) and TMBP § 408. Those rules
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`require that a responding party adequately search for records and supplement its responses and
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`disclosures accordingly to meet its full duty to search and comply with Petitioner’s Request.
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`Petitioner expected that Registrant would on its own live up to that duty to continue to search its
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`records and supplement its responses—but now understands that it was mistaken. Therefore,
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`filed concurrent with this Reply is a timely-filed Motion to Compel directed towards Registrant’s
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`inadequate reply to the Petitioner’s First Request for Documents. This filing further renders moot
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`Registrant’s objection to Petitioner’s allegation that Registrant’s deficient discovery replies were
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`an additional cause of delay.
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`Even Registrant’s Cited Cases Demonstrate that Petitioner’s Press of
`A.
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`Litigation Constitutes Good Cause to Support an Extension of the Discovery Period
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`Registrant fails to cite even one case to support its unfounded position that the press of
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`non-extendible patent litigation deadlines on a small law firm somehow does not constitute good
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`cause in seeking an extension of the discovery period. Luemme, Inc. v. D.B. Plus Inc., 53
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`U.S.P.Q.2D 1758 (T.T.A.B. 1999) involved a second briefed motion to extend the discovery
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`period, which in large part copied the same arguments of cause for delay from the first motion.
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`In that case, the Board only concluded that a barefaced allegation of “extensive travel”—already
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`sparsely alleged in the granted-first motion to extend—without supporting facts regarding that
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`2
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`travel, was not sufficient to demonstrate good cause. This case is distinguishable from Luemme
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`because this is a first briefed unconsented motion to extend, not a second one, and Petitioner has
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`alleged sufficient facts to support its claim of delay due to another complex and burdensome
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`litigation, as well as Registrant’s non-compliant responses.
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`The second case Registrant cited Societa Per Azioni Chianti Ruffino Esportazione
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`Vinicola Toscana v. Colli Spolentini Spoletoducali SCRL, 59 U.S.P.Q.2d 1383, 1384 (T.T.A.B.
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`2001), actually supports Petitioner’s position that the press of co-pending complex patent
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`litigation deadlines is good cause to justify an extension of the discovery period. Societa
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`involved a contested motion to extend due to the “press of other litigation” and deficiencies in
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`discovery responses. The Societa Board granted the request to extend time on the basis of
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`counsel’s involvement in other litigation, and explained that “[i]t is settled that the press of other
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`litigation . . . may indeed constitute good cause for an extension of time.” Id. at 1384. As in
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`Societa, Petitioner had demonstrated good cause to justify the extension.
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`Registrant’s Motion Contained Sufficient Facts to Demonstrate Good Cause
`B.
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`for Delay Due to Scheduling Burdens of a Co-Pending Patent Litigation
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`Registrant misconstrues and miscites Petitioner’s Motion, but in fact Petitioner has
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`alleged sufficient facts to support its claim of good cause for delay due to a co-pending complex
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`patent litigation. Those facts include: its counsel experienced a heavy and heightened litigation
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`work load; the litigation was a complex patent infringement case; counsel works at a small law
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`firm; the small law firm was involved in responding to a non-extendible deadline with a
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`substantive motion to dismiss brief due on Tuesday, September 3, 2013 (the deadline was
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`previously extended twice and could no longer be extended; during this time counsel was
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`involved in analyzing the asserted patent, analyzing the patent file history, researching the case
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`3
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`and dismissal theories, and drafting the complex argument for its motion to dismiss); upon the
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`subsiding of that heightened litigation work-load, Petitioner’s counsel realized the tight
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`timeframe remaining in this proceeding and requested Registrant’s counsel’s consent to an
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`extension of the discovery period; Petitioner assumed Registrant’s counsel would grant consent
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`as Petitioner itself had provided Registrant with consents for extensions upon Registrant’s
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`request; and when Registrant’s counsel refused the Petitioner’s request for extension consent,
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`Petitioner’s counsel had to then redirect its attention and efforts towards researching and drafting
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`its Motion to Extend to be filed by the final date of discovery on Monday, September 9, 2013.
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`See Pet’s Motion to Extend, at p. 3-4. In light of these facts, as well as the others contained in
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`Petitioner’s Motion, Registrant’s claim that Petitioner has not alleged supporting facts for its
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`request is simply without merit.
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`Petitioner Filed a Motion to Compel and Therefore Registrant’s Failure to
`C.
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`Comply With the First Requests is Indeed an Additional Ground to Extend Discovery
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`Petitioner concurrently files a timely Motion to Compel. Therefore, that filing moots
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`Registrant’s claim that the allegation of discovery abuses without a filing of a Motion to Compel
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`is not sufficient to show good cause. Furthermore, as Petitioner’s previously arguments already
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`demonstrated “the press of other litigation,” Societa, 59 U.S.P.Q.2d at 1384, is sufficient good
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`cause due to support a finding a good cause and grant the extension even if a Motion to Compel
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`was not filed.
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`PETITIONER HAS GRANTED REGISTRANT WITH CONSENT TO EXTEND
`II.
`ITS OWN DEADLINES ON NUMEROUS OCCASSIONS IN THE SPIRIT OF
`COOPERATION, YET REGISTRANT UNFAIRLY REFUSES TO GRANT
`PETITIONER WITH EVEN ONE EXTENSION
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`Petitioner has granted Registrant with multiple consents to extend, and yet Registrant
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`unfairly opposes Petitioner for its first request of any kind. Registrant’s refusal to grant consent
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`4
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`to extend the opposition period along with its opposition brief are mere litigation games.
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`Registrant has not demonstrated any harm or injury that it would suffer as a result of an
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`extension of the discovery period. In fact, just over two weeks after filing its Opposition to
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`Petitioner’s Motion to Extend, Registrant’s counsel contacted Petitioner’s counsel again to
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`request a twenty-one (21) day extension on the deadline for Registrant’s Responses to
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`Petitioner’s Second Requests for Documents, Information, and Admissions. Petitioner again
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`freely granted its consent in the spirit of cooperation, and remains baffled as to why Registrant
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`refuses to cooperate in any way with Petitioner despite Petitioner’s numerous accommodations
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`of Registrant’s scheduling constraints. See Am. Vitamin Prods. Inc. v. DowBrands Inc., 22
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`U.S.P.Q.2d 1312, 1315 (T.T.A.B. 1992) (noting the Board is liberal in granting timely filed
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`motions to extend so long as the motion is not filed in bad faith and the requesting party has not
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`previously abused the privilege of extension requests).
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`III. CONCLUSION
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`For the reasons stated above, Petitioner respectfully requests that the Board grant its
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`motion for an extension of the discovery period for ninety (90) days.
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`Dated: 10/8/2013
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`Respectfully submitted,
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`By: ___/s/ Ted Sabety___
`Ted Sabety
`Of Counsel
`HAND BALDACHIN AMBURGEY LLP
`8 West 40th Street, 12th Floor
`New York, NY 10018
`Telephone: 212.481.8686
`tsabety@hballp.com
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`Attorney for Petitioner Orley, LLC
`5
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`CERTIFICATE OF SERVICE
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`Petitioner ORLEY, LLC hereby certifies that a copy of this MOTION TO EXTEND
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`TIME has been served upon Registrant ORLY INTERNATIONAL INC. through its counsel
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`SHLESINGER, ARKWRIGHT & GARVEY LLP on this 8th day of October, 2013, by Federal
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`Express - Overnight Express Mail, postage prepaid, at the following address:
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`James E. Shlesinger
`Shlesinger, Arkwright & Garvey LLP
`5845 Richmond Highway, Suite 415
`Alexandria, Virginia 22303
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`___/s/ Ted Sabety___
`Ted Sabety
`Attorney for Petitioner
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`6