Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA963759
`03/30/2019
`
`ESTTA Tracking number:
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`Filing date:
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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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`92067777
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`Party
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`Correspondence
`Address
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`Defendant
`Akaso Tech LLC
`
`ALLEN XUE
`NOVICK KIM & LEE PLLC
`3251 OLD LEE HIGHWAY, SUITE 404
`FAIRFAX, VA 22030
`UNITED STATES
`allen.xue@nkllaw.com, djung@nkllaw.com
`703-745-5495
`
`Submission
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`Filer's Name
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`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Motion to Amend/Amended Answer or Counterclaim
`
`Allen Xue
`
`allen.xue@nkllaw.com, adai@nkllaw.com
`
`/Allen Xue/
`
`03/30/2019
`
`LA500.0001-Combined Motion to Amended Answer-filed 3 30 2019.pdf(116778
`bytes )
`LA500.0001-Xue Declaration in support of Combined Motion.pdf(876940 bytes )
`
`
`ESTTA963759
`03/30/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92067777
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Akaso Tech LLC
`
`ALLEN XUE
`NOVICK KIM & LEE PLLC
`3251 OLD LEE HIGHWAY, SUITE 404
`FAIRFAX, VA 22030
`UNITED STATES
`allen.xue@nkllaw.com, djung@nkllaw.com
`703-745-5495
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Motion to Amend/Amended Answer or Counterclaim
`
`Allen Xue
`
`allen.xue@nkllaw.com, adai@nkllaw.com
`
`/Allen Xue/
`
`03/30/2019
`
`LA500.0001-Combined Motion to Amended Answer-filed 3 30 2019.pdf(116778
`bytes )
`LA500.0001-Xue Declaration in support of Combined Motion.pdf(876940 bytes )
`
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`Petitioner,
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`v.
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`AKASA (EUROPE) LIMITED,
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`AKASO TECH LLC,
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`Respondent.
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`Cancellation No. 92067777
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`Petitioned Registration No.
`4389656
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`Registration Date: August 20, 2013
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`Mark: AKASO
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`RESPONDENT’S COMBINED MOTION FOR LEAVE TO AMEND ANSWER TO THE
`PETITION FOR CANCELLATION, MOTION TO SUSPEND, MOTION TO EXTEND
`THE DISCOVERY AND TRIAL PERIODS, AND MEMORANDUM IN SUPPORT
`THEREOF
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`Pursuant to Rule 15(a) of the Federal Rules of Civil Procedure, 37 C.F.R. § 2.115,
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`and §§ 507.01 and 507.02 of the Trademark Trial and Appeal Board Manual of Procedure
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`(“TBMP”), Respondent, Akaso Tech LLC, respectfully requests leave to amend its Answer
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`to the Petition for Cancellation to correct the pleading and assert additional affirmative
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`defenses. Respondent attaches a signed copy of the proposed Amended Answer to
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`Petition for Cancellation as Exhibit A pursuant to TBMP § 507.01. Additionally,
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`Respondent attaches a red-lined copy showing the proposed changes as Exhibit B
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`pursuant to TBMP § 507.01.
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`
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`Respondent also requests that all proceedings be suspended pending disposition
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`of the Motion for Leave to Amend Answer to the Petition for Cancellation and that all dates
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`in this cancellation proceeding be reset once the Trademark Trial and Appeal Board
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`(“Board”) decides the Motion for Leave to Amend. In terms of resetting all dates in this
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`1
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`proceeding, Respondent notes that the Discovery Period is currently set to close on April
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`30, 2019. Respondent requests that upon resumption of the proceedings, the date of the
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`close of discovery be extended for sixty (60) days, and that all subsequent trial dates be
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`reset accordingly, to give both parties additional time to conduct and complete discovery
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`in light of the Amended Answer.
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`
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`MEMORANDUM IN SUPPORT OF MOTION FOR LEAVE TO AMEND
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`I.
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`Statement of Facts
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`Petitioner initiated this proceeding by filing a Petition for Cancellation on January
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`22, 2018 against U.S. Trademark Registration No. 4,389,656 for the mark AKASO
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`owned by Respondent Akaso Tech LLC (“Respondent”). (Dkt. 1, Pet. to Cancel; Xue
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`Decl., ¶ 2).
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`On March 5, 2018, Respondent, by and through its attorneys Brent M. Ahalt, Qun
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`Wang, and McNamee, Hosea, Jernigan, Kim, Greenan & Lynch, P.A., filed and served
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`its Answer in this proceeding. (Dkt. 5, Answer; Xue Decl., ¶ 3).
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`The law firm of McNamee, Hosea, Jernigan, Kim, Greenan & Lynch, P.A. is a
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`Maryland business law firm. (Xue Decl., ¶ 4). While Attorney Brent M. Ahalt has
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`experience litigating in the federal and state courts of Maryland and the District of
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`Columbia, he did not have any experience representing clients in Board proceedings
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`when the Answer was filed in this proceeding. (Xue Decl., ¶¶ 5 and 6). Attorney Qun
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`Wang is a Chinese speaking U.S. Attorney whose primary areas of practice are
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`corporate and business transactions with a focus on cross border investments and
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`transactions between the United States and China. (Xue Decl., ¶ 7). Qun Wang did not
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`2
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`have any experience representing clients in Board proceedings when the Answer was
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`filed in this proceeding. (Xue Decl., ¶ 8). To date, neither Attorney Brent M. Ahalt nor
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`Attorney Qun Wang have represented any clients other than Respondent in any Board
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`proceedings. (Xue Decl., ¶ 9).
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`After the filing of the Answer, the parties entered into settlement negotiations.
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`Due to the ongoing settlement negotiations, the parties filed and the Board granted five
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`(5) consented Motions for Suspension for Settlement. (Dkt. 6, 8, 10, and 12, P Mot. To
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`Susp. W/ Consent Pend Settl Neg.; Dkt. 15, D Mot. To Susp. W/ Consent Pend Settl
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`Neg.; Dkt. 7, 9, 11, 13, and 15, Board’s Order Granting Susp.; Xue Decl., ¶ 10).
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`The Board granted the most recent consented Motion for Suspension on October
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`3, 2018. (Dkt. 15, Board’s Order Granting Susp.; Xue Decl., ¶ 11). Under that decision,
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`the proceedings were set to resume of December 1, 2018, with Initial Disclosures being
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`due on that date. Id. As December 1, 2018 was a Saturday, the deadline for serving
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`Initial Disclosures was Monday, December 3, 2018.
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`On November 26, 2018, counsel for Respondent, Brent M. Ahalt contacted
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`counsel for Petitioner via email to ask whether Petitioner would be filing a Motion for
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`Suspension. (Xue Decl., ¶ 12). On December 3, 2018, counsel for Respondent, Brent
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`M. Ahalt, again contacted counsel for Petitioner asking whether Petitioner would be
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`filing a Motion for Suspension. (Xue Decl., ¶ 13). On December 3, 2018, counsel for
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`Petitioner informed counsel for Respondent that Petitioner would not be filing another
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`Consented Motion for Suspension but rather was preparing initial disclosures. (Xue
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`Decl., ¶ 14). Counsel for Petitioner served Initial Disclosures on Counsel for
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`Respondent on December 3, 2018. (Xue Decl., ¶15).
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`3
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`When it became clear this proceeding was going to move forward, Respondent
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`decided that it needed counsel that had experience in Board proceedings. (Xue Decl., ¶
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`16). On February 19, 2019, Respondent signed an agreement to engage Allen Xue and
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`the law firm of Novick, Kim & Lee, PLLC to represent it in these proceedings. (Xue
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`Decl., ¶ 17). On March 5, 2019, Allen Xue filed a Notice of Appearance with the Board.
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`(Dkt. 16, Not. Of Appear.; Xue Decl., ¶ 18).
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`Upon engagement by Respondent, Allen Xue and other attorneys at the law firm
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`of Novick, Kim & Lee, PLLC began familiarizing themselves with this proceeding. (Xue
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`Decl., ¶ 19). In reviewing the Answer, it became clear that prior counsel Brent M. Ahalt,
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`Qun Wang, and McNamee, Hosea, Jernigan, Kim, Greenan & Lynch, P.A. were
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`inexperienced in Board proceedings. (Xue Decl., ¶ 20). For example, in the prayer for
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`relief in the Answer, prior counsel requests that “Respondent be awarded its costs and
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`reasonable attorneys’ fees incurred in defending this matter.” (Dkt. 5, Answer; Xue
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`Decl., ¶ 20). Attorneys with experience practicing before the Board understand that
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`costs and attorneys’ fees are not awarded in Board proceedings. See TBMP § 102.
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`Additionally, a few important affirmative defenses were not included in the Answer,
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`which should have been, including failure to state a claim upon which relief can be
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`granted. (Dkt. 5, Answer; Xue Decl., ¶ 21). Importantly, the Petition for Cancellation
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`includes fraud on the USPTO as one of the grounds for cancellation. Fraud must be
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`pleaded with particularity. See Fed. R. Civ. P. 9(b); 37 C.F.R. § 2.116(a); See also King
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`Automotive, Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212 USPQ 801(CCPA
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`1981), Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478, 1479 (TTAB
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`2009). Petitioner failed to do so in the Petition for Cancellation. Respondent therefore
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`4
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`believes that it has an additional affirmative defense in this proceeding of failure to state
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`a claim upon which relief can be granted.
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`II.
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`Argument
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`A.
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`The Board Should Grant Respondent’s Motion for Leave to Amend
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`
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`“Pleadings in a cancellation proceeding may be amended in the same manner and
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`to the same extent as in a civil action in a United States district court.” 37 C.F.R. § 2.115.
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`Thus, amendments to pleadings in inter partes proceedings before the Board are
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`governed by Rule 15 of the Federal Rules of Civil Procedure. See 37 C.F.R. § 2.115,
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`TBMP § 507.01. A party may amend its pleading once as a matter of course within 21
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`days after serving it. Id.; Rule 15 FED. R. CIV. P. 15(a). Thereafter, a party may amend
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`its pleading only by written consent of every adverse party or by leave of the Board. Id.
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`Under Rule 15(a), “leave shall be freely given when justice so requires.” TMEP § 507.01.
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`The Board has repeatedly recognized that “amendments to pleadings should be
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`allowed with great liberality at any stage of the proceeding where necessary to bring about
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`a furtherance of justice unless it is shown that entry of the amendment would violate
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`settled law or be prejudicial to the rights of any opposing parties.” Commodore Elecs.
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`Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1505 (TTAB 1993) (quoting American
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`Optical Corp. v. American Olean Tile Co., Inc., 168 USPQ 471, 473 (TTAB 1971). See
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`also Polaris Indus. v. DC Comics, 59 USPQ2d 1798, 1799 (TTAB 2001).
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`Here, the proposed amendment is plainly in keeping with settled law. Indeed, “[t]he
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`primary purpose of pleadings, under the Federal Rules of Civil Procedure, is to give fair
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`notice of the claims or defenses asserted.” See Fair Indigo LLC v. Style Conscience, 85
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`USPQ2d 1536, 1539 (TTAB 2007). See also TBMP § 311.02. The proposed Amended
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`5
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`Answer is intended to give fair notice of the defenses asserted, specifically to give notice
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`to the Petitioner that Respondent is claiming failure to state a claim upon which relief can
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`be granted as an affirmative defense and to inform Petitioner that Respondent is not
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`seeking costs or attorneys’ fees. Additionally, Respondent’s proposed amendments
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`clarify some of its denials. Thus, the proposed amendment is in keeping with settled law.
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`The only issue remaining is whether granting leave to amend the Answer would
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`be unduly prejudicial to the rights of the Petitioner. In deciding whether to grant leave to
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`amend, the Board may consider undue delay, prejudice to the opposing party, bad faith
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`or dilatory motive, futility of the amendment, and whether the party has previously
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`amended its pleadings. Foman v. Davis, 371 U.S. 178, 182 (1962); Am. Express Mktg.
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`& Dev. Corp. v. Gilad Dev. Corp., 94 USPQ2d 1294, 1297 (TTAB 2010). Each of these
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`considerations favor Respondent in this proceeding, and thus, the Board should grant
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`Respondent’s Combined Motion for Leave to Amend.
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`First, the Board may consider undue delay. Id. There is no undue delay here.
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`Respondent signed an agreement to engage new counsel, Allen Xue and the law firm of
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`Novick, Kim & Lee on February 19, 2019. (Xue Decl., ¶ 17). Upon engagement by
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`Respondent, Allen Xue and other attorneys of the law firm of Novick, Kim & Lee, PLLC
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`began familiarizing themselves with this proceeding. (Xue Decl., ¶ 19). When Attorney
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`for Respondent, Allen Xue, recognized the need to amend the Answer, he promptly
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`contacted attorney for Petitioner, M. Scott Alprin, via email on March 13, 2019 to request
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`Petitioner’s consent to the proposed Amended Answer. (Xue Decl., ¶ 22). As part of this
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`request, attorney for Respondent, Allen Xue sent attorney for Petitioner a copy of the
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`proposed Amended Answer in both redline and clean formats. (Xue Decl., ¶ 22). Attorney
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`6
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`for Petitioner responded suggesting that counsel for Respondent should just submit the
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`amended Answer and stating about Petitioner “I doubt we will oppose, in which case the
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`Board will accept it as conceded.” (Xue Decl., ¶ 23). When the parties were
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`communicating about discovery issues, counsel for Respondent, Allen Xue, on March 22,
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`2019 again asked counsel for Petitioner, M. Scott Alprin, via email to consent to the
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`proposed Amended Answer and provided counsel for Petitioner with a revised copy of
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`the Amended Answer in redline and clean formats. (Xue Decl., ¶ 24). In an email on
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`March 23, 2019, counsel for Petitioner, M. Scott Alprin, refused to consent to the
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`Amended Answer. (Xue Decl., ¶ 25). Thus, Respondent sought an amendment as soon
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`as it was aware that one was needed. (Xue Decl., ¶ 22). Additionally, Respondent
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`attempted to resolve this in the most efficient way possible, namely, by twice seeking
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`consent of Petitioner. (Xue Decl., ¶¶ 22 and 24). The time between March 23, 2019 and
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`the filing of this motion was spent conducting case law research for this Memorandum in
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`Support of Respondent’s Combined Motion and drafting the Combined Motion. (Xue
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`Decl., ¶ 26). Thus, there is no undue delay here.
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`Second, the Board may consider prejudice to the opposing party. Foman, 371 U.S.
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`at 182; Am. Express Mktg. & Dev. Corp, 94 USPQ2d at 1297. Petitioner will not be
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`prejudiced here. The amendment is sought to give fair notice to Petitioner of the defenses
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`asserted in this proceeding, to clarify some denials, and to correct the Prayer for Relief,
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`now that this proceeding is moving forward after repeated suspensions of the proceedings
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`for settlement negotiations, which ultimately were unsuccessful. In determining whether
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`the other party would be prejudiced by allowance of the proposed amendment, the timing
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`of the motion for leave to amend plays a large role. Black & Decker Corp. v. Emerson
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`7
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`Electric Co., 84 USPQ2d 1482, 1486 (TTAB 2007). As explained above, as soon as
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`Respondent’s current counsel of record recognized the need to Amend the Answer, he
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`contacted the attorney for the Petitioner to request Petitioner’s consent to the proposed
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`amendment. (Xue Decl., ¶ 22). Petitioner’s counsel has had in its possession both a
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`redlined and clean version of the proposed Amended Answer since March 13, 2019, and
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`a revised version since March 22, 2019. (Xue Decl., ¶¶ 22 and 24). Further, discovery
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`in this proceeding has not closed and Respondent is requesting a suspension of the
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`proceedings pending the determination of the Motion for Leave to Amend as well as a 60-
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`Day extension of the discovery period and all trial dates to give both parties additional
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`time to conduct and complete discovery in light of the Amended Answer. The Board has
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`repeatedly found no undue prejudice by granting leave to amend where the trial period
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`has not yet commenced. See Microsoft Corp. v. Qantel Business Systems, Inc., 16
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`USPQ2d 1732 (TTAB 1990), and Anheuser-Busch v. Martinez, 185 USPQ 434 (TTAB
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`1975). Thus, Petitioner will not be prejudiced if the Board grants leave to amend the
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`Answer.
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`Third, the Board may consider bad faith or dilatory motive in deciding motions for
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`leave to amend. Foman, 371 U.S. at 182; Am. Express Mktg. & Dev. Corp, 94 USPQ2d
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`at 1297. Respondent is moving for leave to amend in good faith and for the purpose of
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`giving fair notice to the Petitioner of the defenses asserted in this proceeding, to clarify
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`some denials, and to correct the Prayer for Relief. As explained above, Respondent has
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`acted diligently in filing its Combined Motion for Leave to Amend as soon as possible after
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`recognizing the need to amend the Answer and after seeking but failing twice to receive
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`consent from the Petitioner for leave to amend. (Xue Decl., ¶¶ 22 and 24). The discovery
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`8
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`period in this proceeding has not closed and Respondent is requesting a suspension of
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`the proceedings pending the determination of the Motion for Leave to Amend as well as
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`a 60-Day extension of the discovery period and all trial dates to give both parties
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`additional time to conduct and complete discovery in light of the Amended Answer. Thus,
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`Respondent is acting diligently and in good faith in seeking leave to amend its Answer.
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`Fourth, the Board may consider the futility of the amendment in deciding motions
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`for leave to amend. Foman, 371 U.S. at 182; Am. Express Mktg. & Dev. Corp, 94 USPQ2d
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`at 1297. This amendment of the Answer is not futile. An affirmative defense of failure to
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`state a claim upon which relief can be granted is a valid defense that can be asserted in
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`a cancellation proceeding. See Order of Sons of Italy in America v. Profumi Fratelli Nostra
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`AG, 36 USPQ2d 1221, 1222 (TTAB 1995). Further, this proceeding is still in an early
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`stage, namely, the discovery stage, and Respondent will need to assert this defense at
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`various upcoming stages of this proceeding. Thus, the amendments proposed in the
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`Amended Answer, namely the addition of affirmative defenses, the clarification of some
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`denials, and the correction of the Prayer for Relief, are not futile.
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`Fifth the Board may consider whether the party has previously amended its
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`pleadings in deciding motions for leave to amend. Foman, 371 U.S. at 182; Am. Express
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`Mktg. & Dev. Corp, 94 USPQ2d at 1297. In this proceeding, Respondent has not
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`previously amended its Answer. Thus, this consideration strongly favors Respondent.
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`In conclusion, each of the factors the Board typically considers in determining
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`motions for leave to amend favor Respondent. Respondent, therefore, respectfully
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`requests the Board to grant its Combined Motion for Leave to Amend Answer to Petition
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`for Cancellation.
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`9
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`B.
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`The Board Should Grant Respondent’s Motion to Suspend and
`Motion to Extend the Discovery and Trial Periods
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`Pursuant to 37 C.F.R § 2.117(c), Respondent requests that this proceeding be
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`suspended pending the Board’s consideration of this Combined Motion and that the
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`discovery period and all dates in this cancellation proceeding be reset once the Board
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`decides the Motion for Leave to Amend Answer to Petition for Cancellation. See
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`Schering-Plough Animal Health Corp. v. Aqua Gen AS, 90 USPQ2d 1184, 1185 (TTAB
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`2009); Opticians Association of America v. Independent Opticians of America Inc., 734 F.
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`Supp. 1171, 14 USPQ2d 2021, 2029 (D.N.J. 1990). In terms of resetting all dates in this
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`proceeding, Respondent notes that the Discovery Period is currently set to close on April
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`30, 2019. Respondent requests that upon resumption of the proceedings, the date of the
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`close of discovery be extended for sixty (60) days, and that all subsequent trial dates be
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`reset accordingly, to give both parties additional time to conduct and complete discovery
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`in light of the Amended Answer.
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`III.
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`Conclusion
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`For the foregoing reasons, Respondent respectfully requests that the Board
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`issue an order granting Respondent leave to amend the Answer to the Petition for
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`Cancellation in the form attached as Exhibit A. Respondent also respectfully requests
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`that the Board suspend this proceeding pending disposition of the Motion for Leave to
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`Amend Answer to Petition for Cancellation. Finally, Respondent respectfully requests
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`that the Board issue an order extending all discovery and proceeding dates for 60 days
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`upon resumption of the proceedings.
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`Dated: March 30, 2019
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`Respectfully submitted,
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`NOVICK, KIM & LEE, PLLC
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`/ Allen Xue /_
`Allen (Zhi Yang) Xue
`Angela Y. Dai
`3251 Old Lee Highway, Suite 404
`Fairfax, VA 22030
`Telephone: (703)745-5495
`Facsimile: (703)563-9748
`allen.xue@nkllaw.com
`adai@nkllaw.com
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`Attorneys for Respondent Akaso Tech LLC
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`11
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`CERTIFICATE OF SERVICE
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`I hereby certify that on March 30, 2019, a true and complete copy of the
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`foregoing COMBINED MOTION FOR LEAVE TO AMEND ANSWER TO THE
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`PETITION FOR CANCELLATION, MOTION TO SUSPEND, MOTION TO EXTEND
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`THE DISCOVREY AND TRIAL PERIODS, AND MEMORANDUM IN SUPPORT
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`THEREOF is being served on counsel for Petitioner Akasa (Europe) Limited via
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`electronic mail to the following:
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`Steven M. Rabin
`RABIN & BERDO, P.C.
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`M. Scott Alprin
`RABIN & BERDO, P.C.
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`Hui Zhang
`RABIN & BERDO, P.C.
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`firm@rabinberdo.com
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`salprin@rabinberdo.com
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`hzhang@rabinberdo.com
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`Signed: /Allen Xue/________
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` Allen (Zhi Yang) Xue
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`Exhibit A
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`Exhibit A
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`AKASA (EUROPE) LIMITED
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`Petitioner
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`v.
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`AKASO TECH LLC
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`Respondent
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` Cancellation No. 92067777
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` Registration No. 4389656
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` Registration Date: August 20, 2013
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`RESPONDENT’S AMENDED ANSWER TO PETITION FOR CANCELLATION
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`Respondent, Akaso Tech LLC, by and through its attorneys, and pursuant to
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`Trademark Rule 2.114, hereby answers the Petition for Cancellation filed by Petitioner as
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`set forth below.
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`In regard to the preamble and electronic information listed in the Petition for
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`Cancellation, Respondent lacks sufficient information to form a belief as to the truth or falsity
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`of such allegations, and therefore denies them. In regard to the grounds of cancellation,
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`Respondent denies all such allegations and claims. In regard to the prayer for relief,
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`Respondent respectfully requests that the Board dismiss the Petition for Cancellation with
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`prejudice. With respect to the numbered Paragraphs in the Petition for Cancellation,
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`Respondent Answers as follows:
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`1.
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`Respondent is without knowledge or information sufficient to form a belief as to the
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`truth of paragraph 1 and, as a result, it is denied.
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`2.
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`Respondent is without knowledge or information sufficient to form a belief as to the
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`truth of paragraph 2 and, as a result, it is denied.
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`3.
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`Respondent is without knowledge or information sufficient to form a belief as to the
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`truth of paragraph 3 and, as a result, it is denied.
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`4.
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`Respondent admits the allegations in Paragraph 4 except that Respondent’s Mark
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`was registered in connection with “tablet computer” rather than “tablet computers”.
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`5.
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`Respondent admits only that the Statement of Use was accompanied by a specimen
`
`of use, which displayed Respondent’s Mark on the back of a tablet computer. The remaining
`
`allegations in Paragraph 5 are denied.
`
`6.
`
`7.
`
`8.
`
`Paragraph 6 is denied.
`
`Paragraph 7 is denied.
`
`Respondent admits that it does not currently sell AKASO tablet computers on
`
`http://www.tabletexpress.com. Respondent denies the remaining allegations in Paragraph
`
`8.
`
`9.
`
`Respondent admits that it markets and sells tablet computers under the mark Dragon
`
`Touch on https://www.dragontouch.com. Respondent denies the remaining allegations in
`
`Paragraph 9.
`
`10. Paragraph 10 appears to be a misplaced averment and is denied.
`
`11. Paragraph 11 is denied.
`
`12. Paragraph 12 is denied.
`
`13. Paragraph 13 is denied.
`
`14. Paragraph 14 is denied.
`
`15.
`
`It is not clear what Petitioner means by “the opposed Application.” The current
`
`proceeding involves a registration, not a pending application. Respondent, therefore, is
`
`without knowledge or information sufficient to form a belief as to the truth of paragraph 15
`
`
`
`2
`
`
`
`and, as a result, it is denied.
`
`16. Paragraph 16 is denied.
`
`17. Paragraph 17 is denied.
`
`18.
`
`It is not clear what Petitioner means by “Registration of Respondent’s Mark should
`
`be denied”. Respondent’s Mark has already registered. The current proceeding involves a
`
`registration, not a pending application. Respondent, therefore, denies the allegations in
`
`Paragraph 18.
`
`19. Paragraph 19 is denied.
`
`20. Paragraph 20 is denied.
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Affirmative Defenses
`
`Petitioner has failed to state a claim upon which relief can be granted.
`
`Petitioner’s claims are barred by the doctrine of laches.
`
`Petitioner’s claims are barred due to its own unclean hands.
`
`Petitioner’s claims are barred due to its own fraud.
`
`Petitioner’s claims are barred due to estoppel and/or equitable estoppel.
`
`Petitioner has waived its claim for cancellation.
`
`Respondent reserves all affirmative defenses under Rule 8(c) of the Federal Rules
`
`of Civil Procedure, the Lanham Act, and any other defenses or counterclaims at law or in
`
`equity, that may now exist or in the future be available based on discovery and further
`
`factual investigation in this case.
`
`
`
`WHEREFORE, the Respondent respectfully requests that the Petition to Cancel be
`
`dismissed with prejudice.
`
`
`
`
`
`3
`
`
`
`
`
`Dated: March 30, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`/Allen Xue/
`By:
`Allen (Zhi Yang) Xue
`Novick, Kim & Lee, PLLC
`3251 Old Lee Highway, Suite 404
`Fairfax, VA 22030
`Telephone: (703)745-5495
`Facsimile: (703)563-9748
`allen.xue@nkllaw.com
`djung@nkllaw.com
`
`
`
`
`
`
`
`
`
`Attorneys for Respondent
`
`
`
`
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on March 30, 2019, a true and complete copy of the foregoing
`
`RESPONDENT’S AMENDED ANSWER TO PETITION FOR CANCELLATION is being
`
`served on counsel for Petitioner Akasa (Europe) Limited via electronic mail to the following:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Steven M. Rabin
`RABIN & BERDO, P.C.
`
`M. Scott Alprin
`RABIN & BERDO, P.C.
`
`Hui Zhang
`RABIN & BERDO, P.C.
`
`
`
`
`
`
`
`firm@rabinberdo.com
`
`
`salprin@rabinberdo.com
`
`
`hzhang@rabinberdo.com
`
`
`Signed:
`
`/Allen Xue/
`
`
`
`
`
`
`
`
`
`5
`
`
`
`Exhibit B
`
`Exhibit B
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`AKASA (EUROPE) LIMITED
`
`Petitioner
`
`v.
`
`AKASO TECH, LLC
`
`Respondent
`
`
`
`
` Cancellation No. 92067777
` Cancellation No. 92067777
` Registration No. 4389656
` Registration No. 4389656
` Registration Date: August 20, 2013
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`RESPONDENT’S AMENDED ANSWER TO PETITION TO FOR CANCELLATION
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respondent, Akaso Tech, LLC, by and through its attorneys, Brent M. Ahalt, Qun
`
`Wang, and McNamee, Hosea, Jernigan, Kim, Greenan & Lynch, P.A., and pursuant to
`
`Trademark Rule 2.114, hereby answers the Petition to for Cancellation filed by Petitioner
`
`and responds to the numbered paragraphs in the Petition as followsset forth below.:
`
`In regard to the preamble and electronic information listed in the Petition for
`
`Cancellation, Respondent lacks sufficient information to form a belief as to the truth or falsity
`
`of such allegations, and therefore denies them. In regard to the grounds of cancellation,
`
`Respondent denies all such allegations and claims. In regard to the prayer for relief,
`
`Respondent respectfully requests that the Board dismiss the Petition for Cancellation with
`
`prejudice. With respect to the numbered Paragraphs in the Petition for Cancellation,
`
`Respondent Answers as follows:
`
`1.
`
`Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of paragraph 1 and, as a result, it is denied.
`
`
`
`2.
`
`Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of paragraph 2 and, as a result, it is denied.Paragraph 2 is admitted.
`
`3.
`
`Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of paragraph 3 and, as a result, it is denied.Paragraph 3 is admitted.
`
`4.
`
`Paragraph 4 is admittedRespondent admits the allegations in Paragraph 4 except that
`
`Respondent’s Mark was registered in connection with “tablet computer” rather than “tablet
`
`computers”.
`
`5.
`
`Paragraph 5 is admitted.Respondent admits only that the Statement of Use was
`
`accompanied by a specimen of use, which displayed Respondent’s Mark on the back of a
`
`tablet computer. The remaining allegations in Paragraph 5 are denied.
`
`6.
`
`7.
`
`8.
`
`Paragraph 6 is denied.
`
`Paragraph 7 is denied.
`
`Respondent admits that it does not currently sell AKASO tablet computers on
`
`http://www.tabletexpress.com. Respondent denies the remaining allegations in Paragraph
`
`8 is denied.
`
`9.
`
`Respondent admits that Paragraph 9 is admitted to the extent that it currently markets
`
`and sells tablet computers under the mark “Dragon Touch on https://www.dragontouch.com.
`
`” Respondent denies the The remaindering allegations in of Pparagraph 9 is denied.
`
`10. Paragraph 10 appears to be a misplaced averment and is denied.
`
`11. Paragraph 11 is denied.
`
`12. Paragraph 12 is denied.
`
`13. Paragraph 13 is denied.
`
`14. Paragraph 14 is denied.
`
`15.
`
`It is not clear what Petitioner means by “the opposed Application.” The current
`
`
`
`2
`
`
`
`proceeding involves a registration, not a pending application. Respondent, therefore, is
`
`without knowledge or information sufficient to form a belief as to the truth of paragraph 15
`
`and, as a result, it is denied.
`
`16. Paragraph 16 is denied. as phrased. Petitioner’s Mark is confusingly similar to
`
`Respondent’s Mark.
`
`17. Paragraph 17 is denied.
`
`18.
`
`It is not clear what Petitioner means by “Registration of Respondent’s Mark should
`
`be denied”. Respondent’s Mark has already registered. The current proceeding involves a
`
`registration, not a pending application. Respondent, therefore, denies the allegations in
`
`Paragraph 18 is denied.
`
`19. Paragraph 19 is denied.
`
`20. Paragraph 20 is denied.
`
`
`
`1.
`
`Petitioner has failed to state a claim upon which relief can be granted.
`
`Affirmative Defenses
`
`1.2. Petitioner’s claims are barred by the doctrine of laches.
`
`2.3. Petitioner’s claims are barred due to its own unclean hands.
`
`3.4. Petitioner’s claims are barred due to its own fraud.
`
`4.5. Petitioner’s claims are barred due to estoppel and/or equitable estoppel.
`
`6.
`
`Petitioner has waived its claim for cancellation.
`
`5.7. Respondent reserves all affirmative defenses under Rule 8(c) of the Federal Rules
`
`of Civil Procedure, the Lanham Act, and any other defenses or counterclaims at law or in
`
`equity, that may now exist or in the future be available based on discovery and further
`
`factual investigation in this case.
`
`
`
`3
`
`
`
`WHEREFORE, the Respondent respectfully requests that the Petition to Cancel be
`
`dismissed and that Respondent be awarded its costs and reasonable attorneys’ fees
`
`incurred in defending this matterwith prejudice.
`
`
`Respectfully submitted,
`
`
`
`Dated: March 30, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Allen Xue/
`By:
`Allen (Zhi Yang) Xue
`Novick, Kim & Lee, PLLC
`3251 Old Lee Highway, Suite 404
`Fairfax, VA 22030
`Telephone: (703)745-5495
`Facsimile: (703)563-9748
`allen.xue@nkllaw.com
`djung@nkllaw.com
`
`
`
`
`
`
`
`
`
`Attorneys for Respondent
`
`
`
`
`
`5
`
`
`
`
`
`
`
`
`
`
`
`
`
`MCNAMEE, HOSEA, JERNIGAN, KIM,
`GREENAN & LYNCH, P.A.
`
`
`
`By: /s/ Brent M. Ahalt
`
`Brent M. Ahalt
`Qun Wang
`6411 Ivy Lane, Suite 200
`Greenbelt, MD 20770
`301-441-2420
`bahalt@mhlawyers.com
`qwang@mhlawers.com
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on March 30, 2019, a true and complete copy of the foregoing
`
`RESPONDENT’S AMENDED ANSWER TO PETITION FOR CANCELLATION is being
`
`served on counsel for Petitioner Akasa (Europe) Limited via electronic mail to the following:
`
`Steven M. Rabin
`RABIN & BERDO, P.C.
`
`M. Scott Alprin
`RABIN & BERDO, P.C.
`
`Hui Zhang
`RABIN & BERDO, P.C.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`firm@rabinberdo.com
`
`
`salprin@rabinberdo.com
`
`
`hzhang@rabinberdo.com
`
`
`/Allen Xue/
`Signed:
`CERTIFICATE OF SERVICE
`
`
`
`
`
`
`
`
`
`I hereby certify that a true and complete copy of the foregoing Answer has been
`
`served on Steven M. Rabin, Rabin & Berdo, P.C. by forwarding said copy on March 5,
`
`2018, via email to: firm@rabinberdo.com.
`
`
`6
`
`
`
`
`
`March 5, 2018
`Date
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Brent M. Ahalt
`Brent M. Ahalt
`
`
`
`
`
`
`
`7
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Petitioner,
`
`v.
`
`AKASA (EUROPE) LIMITED,
`
`
`
`
`
`AKASO TECH LLC,
`
`
`
`
`Respondent.
`
`
`Cancellation No. 92067777
`
`Petitioned Registration No.
`4389656
`
`Registration Date: August 20, 2013
`
`Mark: AKASO
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`DECLARATION OF ALLEN XUE IN SUPPORT OF RESPONDENT’S COMBINED
`MOTION FOR LEAVE TO AMEND ANSWER TO THE PETITION FOR
`CANCELLATION, MOTION TO SUSPEND, MOTION TO EXTEND THE DISCOVERY
`AND TRIAL PERIODS
`
`ALLEN (ZHI YANG) XUE, pursuant to 28 U.S.C. § 1746, declares:
`
`1.
`
`I am a partner with the law firm of Novick, Kim & Lee, PLLC, attorneys for
`
`Respondent Akaso Tec
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