Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA996075
`08/19/2019
`
`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
`
`Submission
`
`Filer's Name
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`Filer's email
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`Signature
`
`Date
`
`Attachments
`
`Defendant
`Akaso Tech LLC
`
`ALLEN XUE
`NOVICK KIM & LEE PLLC
`3251 OLD LEE HIGHWAY, SUITE 404
`FAIRFAX, VA 22030
`UNITED STATES
`docket@nkllaw.com, allen.xue@nkllaw.com, adai@nkllaw.com,
`tlongo@nkllaw.com
`703-745-5495
`
`Opposition/Response to Motion
`
`Trina A. Longo
`
`tlongo@nkllaw.com, docket@nkllaw.com, allen.xue@nkllaw.com,
`adai@nkllaw.com
`
`/trina a longo/
`
`08/19/2019
`
`LA500 0001-Opposition to Petitioners Motion to Extend.8.19.2019.pdf(206050
`bytes )
`Xue Decl with Exhibits.pdf(633633 bytes )
`Longo Decl with Exhibits.pdf(607848 bytes )
`
`

`

`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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`
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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 OPPOSTION TO PETITIONER’S MOTION TO EXTEND
`FOR 60 DAYS WITHOUT CONSENT
`
`Pursuant to 37 C.F.R § 2.126 and §§ 502.02(b) and 509 of the Trademark Trial and
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`Appeal Board Manual of Procedure (“TBMP”), Respondent, Akaso Tech LLC (“Respondent”)
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`hereby files its brief in opposition to Petitioner’s Motion to Extend for 60 Days Without Consent
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`(“Petitioners Motion to Extend”), which was filed with the Trademark Trial and Appeal Board
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`(the “Board”) on July 29, 2019. For the reasons set forth below, Respondent respectfully
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`requests that the Board deny Petitioner’s Motion to Extend.1
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`
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`MEMORANDUM IN OPPOSITION TO PETITIONER’S MOTION TO EXTEND FOR 60
`DAYS WITHOUT CONSENT
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`I.
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`Statement of Facts
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`Petitioner initiated this proceeding nineteen (19) months ago by filing a Petition for
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`1 Respondent notes that Petitioner had previously filed a Motion to Extend Without Consent for 30 Days
`(“30-Day Motion to Extend”) on June 23, 2019. (Dkt. 21, Petitioner’s Motion to Extend W/O Consent).
`Respondent did not file an opposition to that 30-Day Motion to Extend. To date, the Board has not ruled
`on the 30-Day Motion to Extend. Respondent only opposes Petitioner’s Motion to Extend for 60 Days
`Without Consent filed on July 29, 2019.
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`
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`1
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`

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`Cancellation on January 22, 2018 against U.S. Trademark Registration No. 4,389,656 for the
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`mark AKASO. (Dkt. 1, Petition For Cancellation).
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`On March 5, 2018, Respondent, by and through its then attorneys Brent M. Ahalt, Qun
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`Wang, and McNamee, Hosea, Jernigan, Kim, Greenan & Lynch, P.A., filed and served its
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`Answer in this proceeding. (Dkt. 5, Answer).
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`After the filing of the Answer, the parties entered into settlement negotiations. Xue
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`Decl., ¶ 2. Due to the ongoing settlement negotiations, the parties filed and the Board granted
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`five (5) consented Motions for Suspension for Settlement. (Dkt. 6, 7, 8, 9, 10, 11, 12, 13, 14,
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`and 15).
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`The Board granted the most recent consented Motion for Suspension on October 3,
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`2018. (Dkt. 15, Board’s Order granting the suspension of this proceeding for 60 days). Under
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`that decision, the proceedings were set to resume on December 1, 2018, with Initial
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`Disclosures being due on that date. Id. As December 1, 2018 was a Saturday, the deadline
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`for serving Initial Disclosures was Monday, December 3, 2018. 37 C.F.R. § 2.196, TBMP §
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`112.
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`On November 26, 2018, counsel for Respondent contacted counsel for Petitioner
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`asking whether Petitioner would be filing another Motion for Suspension. Xue Decl., ¶ 3.
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`Petitioner did not respond. Xue Decl., ¶ 4. On December 3, 2018, counsel for Respondent
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`again contacted counsel for Petitioner asking whether Petitioner would be filing another
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`Motion for Suspension. Xue Decl., ¶ 5. On December 3, 2018, counsel for Petitioner informed
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`counsel for Respondent that Petitioner would not be filing another Consented Motion for
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`Suspension but rather was preparing initial disclosures. Xue Decl., ¶ 6. This was a clear
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`indication that Petitioner rejected the latest proposed settlement terms and seemed to be no
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`longer interested in pursuing settlement. Id. Counsel for Petitioner served Initial Disclosures
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`on counsel for Respondent on December 3, 2018. Xue Decl., ¶ 7.
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`2
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`

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`On January 20, 2019, Petitioner served Petitioner’s First Set of Requests for
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`Production, Interrogatories, and Requests for Admission on Respondent’s original counsel of
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`record. Xue Decl., ¶ 8.
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`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 this proceeding. Xue Decl., ¶ 9.
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`On February 19, 2019, Respondent’s original counsel of record sent an email to
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`Petitioner’s counsel advising that Respondent was hiring new counsel to represent it in this
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`proceeding. Xue Decl., ¶ 10. Because of the change in counsel, Respondent’s original
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`counsel of record asked Petitioner’s counsel to agree to a 60-Day extension of all of the
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`deadlines in this proceeding, including the deadline to respond to Petitioner’s discovery
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`requests. Id.
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`On February 20, 2019 Petitioner through its counsel agreed to only a 30-Day extension
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`of Respondent’s deadline to respond to Petitioner’s discovery requests. Xue Decl., ¶ 11.
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`On March 5, 2019, Respondent’s new counsel, Allen Xue, filed a Notice of Appearance
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`with the Board. (Dkt. 16, Notice of Appearance). On March 21, 2019, Respondent timely
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`served objections and responses to Petitioner’s First Set of Requests for Production and
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`Admission and a General Objection to Petitioner’s First Set of Interrogatories, as they were
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`excessive in number. TBMP § 405.03(a); Xue Decl., ¶ 13, Exh. A.
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`On March 22, 2019, Petitioner served a Revised First Set of Interrogatories in
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`response to Respondent’s General Objection. Xue Decl., ¶ 14, Exh. B.
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`On March 27, 2019, Counsel for Respondent sent an email to Petitioner’s counsel
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`noting that Respondent’s Responses to Petitioner’s Revised First Set of Interrogatories were
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`due on Monday, April 22, 2019, which was thirty days from the date of service of the Revised
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`First Set of Interrogatories. Xue Decl., ¶ 15, Exh. C; 37 C.F.R. § 2.196, TBMP § 112.
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`On March 27, 2019, Respondent served its First Set of Requests for Production and
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`3
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`

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`First Set of Interrogatories on Petitioner. Xue Decl., ¶ 16, Exh. D. Responses to these
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`discovery requests were due on April 26, 2019. 37 C.F.R § 2.120(a)(3); TBMP § 403.03.
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`On March 29, 2019, Respondent’s attorney received an email from Tracy Zhang of
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`Rabin & Berdo, P.C. stating in part:
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`Mr. Alprin is considering setting up a telephone call with the interlocutory
`attorney to discuss the due date of the [Respondent’s] interrogatory responses.
`Please let us know if you would be available for a call on Tuesday or
`Wednesday of next week, and Scott can call the interlocutory attorney and
`attempt to set up a call.
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`Xue Decl., ¶ 17, Exh. E. On that same day, Respondent’s attorney responded, stating that
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`“Next Tuesday afternoon works for a call with the Interlocutory Attorney.” Xue Decl., ¶ 18,
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`Exh. F. The Tuesday referenced in these emails was Tuesday, April 2, 2019. Id.
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`On March 30, 2019, Respondent filed a Combined Motion for Leave to Amend Answer
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`to Petition for Cancellation, Motion to Suspend, Motion to Extend the Discovery and Trial
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`Periods, and Memorandum in Support Thereof (“Respondent’s Combined Motion”) with the
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`Board. (Dkt. 18, Motion to Amend). Given that the Discovery Period was set to close on April
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`30, 2019, Respondent’s Combined Motion specifically requested that upon resumption of the
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`proceedings, the date of the close of discovery be extended for sixty (60) days, and that all
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`subsequent trial dates be reset accordingly, to give both parties additional time to conduct
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`and complete discovery in light of the Amended Answer. (Dkt. 18, Motion to Amend,
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`Preamble).
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`On April 1, 2019, Respondent’s attorney was surprised to receive an email from
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`Petitioner’s attorney indicating that Petitioner’s attorney had already spoken with the
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`Interlocutory Attorney, who agreed with Respondent that Respondent’s Responses to
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`Petitioner’s Revised First Set of Interrogatories were due on Monday, April 22, 2019. Xue
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`Decl., ¶ 20, Exh. F. Although the Interlocutory Attorney specifically stated that Respondent’s
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`Responses to Petitioner’s Revised First Set of Interrogatories were due on Monday, April 22,
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`4
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`

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`2019, Petitioner’s attorney requested that Respondent serve its Responses by April 17, 2019,
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`a full five days before they were due under the Board’s rules. Id.
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`On that same date, Respondent’s attorney responded to Petitioner’s attorney and
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`agreed to serve Responses to Petitioner’s Revised First Set of Interrogatories on April 17,
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`2019, as a courtesy to Petitioner. Xue Decl., ¶ 21, Exh. G.
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`On April 10, 2019, the Board suspended proceedings pending the disposition of
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`Respondent’s Combined Motion. (Dkt. 19, Board Order suspending proceedings).
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`On April 17, 2019 Respondent, in keeping with its agreement, and as a courtesy to
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`Petitioner, served objections and verified responses to Petitioner’s Revised First Set of
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`Interrogatories on Petitioner. Xue Decl., ¶ 22, Exh. H.
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`On April 26, 2019, Petitioner missed its deadline to serve discovery responses on
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`Respondent. Xue Decl., ¶ 23. On April 27, 2019 and April 29, 2019, counsel for Respondent
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`sent an email to Petitioner’s attorney inquiring as to when Respondent might expect to receive
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`Petitioner’s Responses to Respondent’s discovery requests. Xue Decl., ¶ 24, Exhs. I and J.
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`On April 29, 2019, Petitioner’s attorney stated that “We have e-mailed our client urgently and
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`are in the process of investigating. It may be that language issues contributed to a
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`misunderstanding. We will provide an update to you as soon as we can.” Xue Decl., ¶ 25,
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`Exh K.
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`
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`On April 30, 2019, the Board granted Respondent’s Combined Motion and reset the
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`discovery and trial dates. (Dkt. 20, Board Order granting Respondent’s Combined Motion).
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`In the Board’s order, the date of the close of discovery was reset to June 29, 2019. Id.
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`Between May 1, 2019 and May 10, 2019, there were seven emails between counsel
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`for Respondent and counsel for Petitioner discussing Petitioner’s delay in serving responses
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`to Respondent’s discovery requests. Xue Decl., ¶ 26.
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`The attorneys for the parties met and conferred via telephone on May 10, 2019. Xue
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`5
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`Decl., ¶ 27. Petitioner’s attorneys stated that they could not give Respondent’s attorneys a
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`definitive date as to when Petitioner would be serving its overdue responses to Respondent’s
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`discovery requests. Xue Decl., ¶ 27, Exh. L.
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`A full three weeks after they were due, Petitioner finally served responses to
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`Respondent’s First Set of Interrogatories on Friday, May 17, 2019 at 6:59 pm. Xue Decl., ¶
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`28, Exh. M. Petitioner’s interrogatory responses were not verified by Petitioner, but rather
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`signed by Petitioner’s counsel. Xue Decl., ¶ 28. Petitioner did not serve any responses or
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`documents to Respondent’s First Set of Requests for Production. Xue Decl., ¶ 29, Exh. M.
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`On Monday, May 20, 2019, Respondent’s attorney requested a meet and confer by
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`telephone to discuss the overdue responses to Respondent’s First Set of Requests for
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`Production. Xue Decl., ¶ 30, Exh. N. On May 21, 2019, counsel for Petitioner, Mr. Hui Zhang,
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`replied “sorry that we could not reply to your earlier email in time, as we were attending a
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`conference (we are now in Boston attending INTA). Scott will get back to you as soon as he
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`can.” Xue Decl., ¶ 31, Exh. O. That same day, Respondent’s counsel followed up asking
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`when Petitioner’s counsel would be available to talk. Xue Decl., ¶ 31, Exh. P.
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`It was not until two days later, on May 22, 2019, that counsel for Petitioner, Mr. Hui
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`Zhang, finally replied that it would be difficult to discuss things from the INTA convention
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`center and asked whether they could wait to have a call until Friday, May 24, 2019. Xue Decl.,
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`¶ 32, Exh. Q. Respondent’s counsel replied on the same day, stating: “I hope we can talk
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`before that. In any event, I should be available to talk anytime this week.” Xue Decl., ¶ 32,
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`Exh. R. Respondent’s counsel provided his office and cell phone number to Petitioner’s
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`counsel. Id. Petitioner’s attorney did not reply to this email. Id.
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`Over a week after Respondent’s counsel requested a call, the attorneys for the parties
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`finally had a meet and confer via telephone on May 29, 2019. Xue Decl., ¶ 33. During that
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`call, Respondent’s counsel requested a 30-Day extension of the discovery period and all trial
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`6
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`

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`dates. Id. Respondent’s counsel was concerned because to date he had not received any
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`responses or documents from Petitioner to Respondent’s First Set of Requests for Production
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`and he wanted to preserve his ability to take follow-up discovery in the event that Petitioner
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`ever provided the overdue responses. Id. During that telephone conference, Petitioner’s
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`counsel orally agreed to a 30-Day extension. Id. But in a follow-up email shortly after the call
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`that day, Petitioner’s counsel seemed to have changed his mind, writing: “We would like to
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`receive our client’s authorization for the extension.” Id., Exh. S.
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`On May 30, 2019, Respondent’s counsel sent an email to Petitioner’s counsel
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`inquiring as to whether Petitioner’s counsel had received authorization from Petitioner for the
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`requested 30-day extension. Xue Decl., ¶ 34, Exh. T. Petitioner’s counsel responded: “To
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`the best of my knowledge, we have not received authorization. Please let me know the last
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`day by which we can send you our consent.” Xue Decl., ¶ 34, Exh. U.
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`
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`Meanwhile, on May 30, 2019, Respondent served Petitioner with Respondent’s
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`Second Set of Requests for Production and Second Set of Interrogatories. Xue Decl., ¶ 35,
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`Exh. V. As June 29, 2019 was a Saturday, Petitioner’s responses were due on Monday, July
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`1, 2019. 37 C.F.R. § 2.196, TBMP §§ 112 and 403.03.
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`On May 31, 2019, Respondent served on Petitioner over 2,000 pages of documents
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`in response to Petitioner’s First Request for Production of Documents and Things. Xue Decl.,
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`¶ 36, Exh. W. On June 4, 2019, Respondent served on Petitioner more than 2000 additional
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`pages of documents in response to Petitioner’s First Request for Production of Documents
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`and Things. Xue Decl., ¶ 37, Exh X.
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`Between June 4, 2019 and June 16, 2019, the attorneys for the parties exchanged
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`eleven email messages regarding various discovery issues, including Petitioner’s overdue
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`responses to Respondent’s First Set of Requests for Production and when Respondent could
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`expect to receive them. Xue Decl., ¶ 38.
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`7
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`

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`Counsel for the parties further exchanged three (3) emails on June 17, 2019, to work
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`through some discovery issues. Xue Decl., ¶ 39. As Petitioner notes in Petitioner’s Motion to
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`Extend, Petitioner proposed a telephone conference with regard to a specific issue regarding
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`the proper scope of discovery. Specifically, in a third email on June 17, 2019, Petitioner’s
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`counsel stated:
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`Rather, you and I are free to work out a compromise over e-mail or the
`telephone without an official re-serving of interrogatories, in our opinion.
`Please let us know if you are amenable to such a compromise over e-mail or
`the telephone.
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`If not, please let me know if you would be willing to [sic] a joint phone call with
`the interlocutory attorney to receive assistance in working out this apparent
`disagreement.
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`Xue Decl., ¶ 39, Exh. Y. In a subsequent email that day responding to Petitioner’s counsel,
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`counsel for Respondent informed Petitioner’s counsel that he was “…traveling abroad” which
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`would make scheduling a call with the Interlocutory Attorney difficult.” Xue Decl., ¶ 39, Exh.
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`Z.
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`
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`On June 23, 2019, a full fifty-eight (58) days overdue, Petitioner finally served
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`Petitioner’s Objections and Responses to Respondent’s First Set of Requests for Production
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`along with twenty documents via email. Xue Decl., ¶ 40, Exh. Z. In the same email, Petitioner
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`stated: “Please let me know when you will return, or if another lawyer at your firm can handle
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`a call with the interlocutory attorney, as it is looking like the guidance of the interlocutory
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`attorney may be helpful with respect to a few discovery disputes between the parties.
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`(emphasis added). Id. On that same day, counsel for Respondent replied stating, “Please
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`specify the discovery disputes that you wish to discuss with the interlocutory attorney.” Xue
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`Decl., ¶ 40, Exh. AA.
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`
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`On June 24, 2019, Petitioner’s counsel emailed counsel for Respondent providing a
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`“non-exhaustive list” of ongoing disputes, including three (3) issues regarding discovery and
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`8
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`

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`four (4) requests to clarify, provide additional documents, and provide additional information
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`regarding information and documents that Respondent produced to Petitioner in response to
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`Petitioner’s First Set of Interrogatories and First Request for Production of Documents and
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`Things. Xue Decl., ¶ 41, Exh. AB.
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`
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`On June 26, 2019, attorneys Trina A. Longo and Angela Y. Dai of Novick, Kim & Lee,
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`PLLC filed a Joint Notice of Appearance with the Board in this proceeding, in order to
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`accommodate Petitioner’s counsel’s request to have another attorney at Novick, Kim & Lee
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`handle the call with the Interlocutory Attorney. (Dkt. 22, Joint Notice of Appearance).
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`
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`On Thursday, June 27, 2019, two (2) days before discovery was set to close in this
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`proceeding, Petitioner served Petitioner’s Second Set of Interrogatories on Respondent’s
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`counsel. Longo Decl., ¶ 3, Exh. AD. In that same email Petitioner’s counsel wrote that
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`Petitioner’s counsel “…would like to know if you are available to speak with him on Friday
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`afternoon about the possibility of contacting the interlocutory attorney to receive assistance
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`in resolving ongoing discovery disputes” (emphasis added). Id. Respondent’s counsel, Allen
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`Xue, responded that same day, stating,
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`I would not be able to call the interlocutory attorney on Friday due to my travel
`schedule and time difference. Further, I would like to let you know that Ms.
`Longo is out of office for the rest of week. She will respond to your latest
`emails/requests as soon as she can but next Monday will be the earliest.
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`Xue Decl., ¶ 42, Exh. AC.
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`
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`On Friday, June 28, 2019, Respondent served Respondent’s First Set of Requests for
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`Admission, Third Set of Requests for Production of Documents, and Third Set of
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`Interrogatories on Petitioner. Longo Decl., ¶ 4, Exh. AE. As July 28, 2019 was a Sunday,
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`Petitioner’s responses were due on July 29, 2019. 37 C.F.R. § 2.196, TBMP §§ 112 and
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`403.03.
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`On Saturday, June 29, 2019, Petitioner served supplemental objections and
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`9
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`responses to Respondent’s First Set of Requests for Production along with 24 documents.
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`Longo Decl., ¶ 5, Exh. AF. In that same email, Petitioner’s counsel stated:
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`Please propose a time for us to discuss the current disputes related to
`discovery, so that we can set up a call with the interlocutory attorney. We think
`it might be helpful to offer to send a brief summary of the disputes jointly agreed
`upon by the parties in advance of the call.
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`Id.
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`
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`On Monday, July 1, 2019, Respondent’s counsel emailed counsel for Petitioner
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`stating:
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`I understand that you would like to schedule a call with the Interlocutory
`Attorney in an effort to work out some discovery disputes between the parties.
`Allen has forwarded to me the non-exhaustive list of the topics/issues that
`you sent to him on June 24, 2019.
`
`Given that Interlocutory Attorneys have extremely busy caseloads, the best
`approach would be for the parties' attorneys to exchange lists of discovery
`dispute topics/issues and then schedule a call between the parties’ attorneys
`only. We, as the parties' attorneys, should be in a position to work out many,
`if not most, of the disputes ourselves. Then, if there are any topics/issues
`that cannot be amicably resolved, we could bring those limited issues to the
`Interlocutory Attorney, being both mindful and respectful of the Interlocutory
`Attorney’s time.
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`We are currently working on our list of topics/issues and will send that list to
`you as soon as possible. As you mentioned that your list was non-
`exhaustive, please provide us with an updated list of topics/issues. Once
`we've exchanged lists, we can schedule a phone call with just the parties’
`attorneys to discuss.
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`Longo Decl., ¶ 6, Exh. AG.
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`
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`Although Petitioner’s responses to Respondent’s Second Set of Requests for
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`Production and Second Set of Interrogatories were due on July 1, 2019, Petitioner did not
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`serve any responses or documents on Respondent on that day. Longo Decl., ¶ 7.
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`
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`On July 3, 2019, Petitioner’s counsel replied to Respondent’s counsel’s July 1 email.
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`Longo Decl., ¶ 8, Exh. AH. In that reply email Petitioner’s counsel reproduced his email of
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`June 24, 2019, in which he included three (3) issues regarding discovery and four (4) requests
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`10
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`for Respondent to clarify, provide additional documents, and provide additional information
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`regarding information and documents that Respondent produced to Petitioner in response to
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`Petitioner’s First Requests for Interrogatories and First Requests for Production. Id.
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`
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`On July 5, 2019, Respondent’s counsel sent a list of discovery issues to Petitioner’s
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`counsel, which included fifteen (15) issues that were concerning to Respondent. Longo Decl.,
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`¶ 9, Exh. AI. The email from Respondent’s counsel enclosing the list of issues also mentioned
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`the fact that Petitioner’s responses to Respondent’s Second Set of Requests for Production
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`and Second Set of Interrogatories were overdue and requested the responses and
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`documents. Id. Respondent’s counsel also tried to schedule the call with Petitioner’s counsel,
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`stating: “We are available on Wednesday, July 10th, Thursday, July 11th, or Friday, July 12th
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`from 11:00 am until 2:30 pm for a call with you to work through these issues. Please let us
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`know what dates/times work for you.” Id.
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`
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`That same day, Petitioner’s counsel responded by email, with comments regarding
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`each of the fifteen (15) issues. Longo Decl., ¶ 10, Exh. AJ. Although Respondent’s counsel
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`was clear in her July 1 email that this was the list for the parties’ attorneys to work through
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`and that only the issues that the attorneys were unable to resolve would be brought before
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`the Interlocutory Attorney, Petitioner’s counsel “addressed” some of these issues by stating
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`“Please let us know if you would be willing to remove this issue from the list that is shown to
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`the interlocutory attorney.” Id. In addressing the times for a call proposed by Respondent’s
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`counsel, Petitioner’s counsel stated, “I will be out of town all next week with intermittent e-
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`mail access. Would the week of July 16th work for you? We are generally available in the
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`afternoon, although we would prefer not to make it Monday.” Id.
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`
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`On July 18, 2019, Respondent’s counsel emailed Petitioner’s counsel and tried to
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`resolve the misunderstanding regarding the issues that would be brought to the Interlocutory
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`Attorney. Longo Decl., ¶ 11, Exh. AK. Reiterating what was in her email of July 1, 2019,
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`11
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`

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`Respondent’s counsel went on to state:
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`It was evident from our email that we did not plan to bring every issue on our
`list to the Interlocutory Attorney. As we stated, if there were any topics/issues
`that the parties were not able to amicably resolve, we would bring only those
`specific issues to the Interlocutory Attorney.
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`We were under the impression that you understood our clear language when
`you responded on July 3, 2019: “I agree with your comments on minimizing the
`impact on the interlocutory attorney's time to the greatest extent possible.”
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`In any case, we hope that the plan for the parties to work through discovery
`topics/issues is apparent now. The parties will work through the issues they
`identify. If there are any issues that the parties cannot amicably resolve, the
`unresolved issues only will be presented to the Interlocutory Attorney. The
`parties will request a conference call and send a list of only those unresolved
`topics to the Interlocutory Attorney in advance.
`
`It appears from your email of July 5, 2019 that you prefer for the parties to work
`through the list of discovery dispute topics/issues (before involving the
`Interlocutory Attorney) via email rather than the telephone call that I had
`originally proposed. To that end, please see our comments to your email of
`July 5, 2019….
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`Id. Respondent’s counsel addressed each of the fifteen (15) issues on her list based on the
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`comments in the email from Petitioner’s counsel of July 5, 2019. Respondent’s counsel also
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`addressed the seven (7) issues raised by Petitioner in emails from Petitioner’s counsel of
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`June 24, 2019 and July 3, 2019. Id. Respondent’s counsel agreed to include one (1) of the
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`issues from Petitioner’s list in the list for the Interlocutory Attorney, stating that one issue had
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`now been resolved, and that Respondent was working on resolving the other five (5) issues
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`by addressing Petitioner’s concerns. Id.
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`On July 22, 2019, Petitioner served Petitioner’s CORRECTED Responses to
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`Respondent’s First Set of Interrogatories. Longo Decl., ¶ 11, Exh. AL. Petitioner also served
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`Petitioner’s Responses to Respondent’s First Set of Requests for Admission and Petitioner’s
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`Responses to Respondent’s Third Set of Interrogatories, a week before they were due. Id.
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`On July 24, 2019, Petitioner’s counsel responded to the email from Respondent’s
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`counsel of July 18, 2019. (Dkt. 23, Petitioner’s Motion to Extend). Petitioner’s counsel added
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`one (1) issue to its list of issues to raise with the Interlocutory Attorney. Id. Petitioner
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`requested Respondent to consent to suspend or extend the proceeding for at least 30 days.
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`Longo Decl., ¶ 12. On that same date, Respondent’s counsel provided information requested
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`by Petitioner as part of Petitioner’s list of seven (7) issues, resolving two of those issues and
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`stating, “We are drafting a list of the unresolved issues/topics for the call between counsel for
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`both parties and the Interlocutory Attorney.” Longo Decl., ¶ 13, Exh. AN. Respondent’s
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`counsel also explained that she was conferring with Respondent regarding Petitioner’s
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`request for an extension/suspension. Id.
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`On July 26, 2019, Respondent’s counsel sent an email to Petitioner’s counsel
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`attaching the proposed list of the unresolved issues/topics for the call with the Interlocutory
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`Attorney. Longo Decl., ¶ 14, Exh. AO. Respondent’s counsel requested petitioner’s
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`comments and proposed revisions. Id. That proposed list contained three (3) issues. Id. In
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`that email, Respondent’s counsel also provided legal reasoning why the parties might be able
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`to work through two (2) of the other issues that had been among Petitioner’s list of issues
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`without having to go to the Interlocutory Attorney. Id. Respondent’s attorney also addressed
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`the one (1) new issue Petitioner’s attorney added to the list in its email of July 24, 2019. Id.
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`Respondent’s counsel advised Petitioner’s counsel that Respondent did not consent to an
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`extension/suspension of the proceedings. Id.
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`A full twenty-eight (28) days after they were due, on July 29, 2019, Petitioner finally
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`served Petitioner’s Responses to Respondent’s Second Set of Interrogatories and
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`Petitioner’s Responses to Respondent’s Second Set of Requests for Production of
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`Documents. Longo Decl., ¶ 15, Exh. AP. But to date, it does not appear that Petitioner has
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`completed its production of documents to these requests. Additionally, Petitioner’s
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`Responses to Respondent’s Second Set of Interrogatories were not verified by Petitioner, but
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`rather signed by its counsel.
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`On July 29, 2019, Petitioner also served Petitioner’s Responses to Respondent’s Third
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`Set of Requests for Production of Documents. Longo Decl., ¶ 15, Exh. AP and ¶ 16. But to
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`date, it does not appear that Petitioner has completed its production of documents to these
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`requests.
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`After additional correspondence between the parties’ attorneys, Petitioner filed
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`Petitioner’s Motion to Extend on July 29, 2019. (Dkt. 23, Petitioner’s Motion to Extend).
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`Respondent’s counsel did not receive a response email to her July 26, 2019 email and
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`proposed list of topics until August 10, 2019, a full fifteen (15) days after Respondent’s
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`counsel provided Petitioner’s counsel with the list of topics for review and comment. Longo
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`Decl., ¶ 18, Exh. AQ.
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`II.
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`Board Standard for Determining Unconsented Motions to Extend
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`Under Trademark Rule 2.120(a)(2)(iv), 37 C.F.R. § 2.120(a)(2)(iv), limited extensions
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`of the discovery period may be granted upon stipulation of the parties approved by the Board,
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`or on motion granted by the Board, or by order of the Board. The appropriate standard for
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`allowing an extension of a specified time period prior to the expiration of that period is “good
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`cause.” Fed. R. Civ. P. 6(b)(1)(A); 37 C.F.R. § 2.116(a).
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`A motion to extend time must set forth with particularity the detailed facts that allegedly
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`constitute good cause for the requested extension. TBMP § 509.01(a). Mere cursory or
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`conclusory allegations that are denied unequivocally by the nonmovant, and that are not
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`otherwise supported by the record, will not constitute a showing of good cause.” Instruments
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`SA, Inc. v. ASI Instruments, Inc., 53 USPQ2d 1925, 1927 (TTAB); see also Luemme, Inc. v.
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`D.B. Plus Inc., 53 USPQ2d 1758, 1760 (TTAB 1999). The TTAB will carefully scrutinize any
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`motion to extend time for showing of good cause. Luemme Inc., 53 USPQ2d at 1760.
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`Moreover, the Board will deny a motion to extend if the moving party is guilty of
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`negligence or bad faith, or has abused the privilege of extensions. See Am. Vitamin Prods.,
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`14
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`Inc. v. DowBrands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992). Importantly, the moving party
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`retains the burden of persuading the Board that it was diligent in meeting its responsibilities
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`and should therefore be awarded additional time. Id.; Nat’l Football League v. DNH Mgmt.,
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`LLC, 85 USPQ2d 1852, 1854 (TTAB 2008) (citing Sunkist Growers, Inc. v. Benjamin Ansehl
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`Co., 229 USPQ 147 (TTAB 1985)). “…[A] party moving to extend time must demonstrate that
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`the requested extension of time is not necessitated by the party’s own lack of diligence or
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`unreasonable delay in taking the required action during the time previously allotted therefor.
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`TBMP § 509.01; See Nat’l Football League, 85 USPQ2d at 1854.
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`III.
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`The Board Should Deny Petitioner’s Motion to Extend for 60 Days Without
`Consent Because Petitioner Has Failed to Establish Good Cause
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`Here, Petitioner fails to establish “good cause.” Specifically, Petitioner has repeatedly
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`requested that Respondent go above and beyond its required discovery obligations while at
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`the same time not meeting its own discovery obligations. For example, Petitioner requested
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`that Respondent serve Respondent’s Responses to Petitioner’s Revised First Set of
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`Interrogatories a full five days before they were due under the Federal Rules of Civil
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`Procedure and Board practice. Xue Decl., ¶ 22, Exh. H. And yet, Petitioner was twenty-one
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`(21) days late in serving its own Responses to Respondent’s First Set of Interrogatories, fifty-
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`eight (58) days late in serving responses and producing documents in response to
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`Respondent’s First Set of Requests for Production, and twenty-eight (28) days late in serving
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`responses to Respondent’s Second Set of Interrogatories and Respondent’s Second Set of
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`Requests for Production of Documents. Xue Decl., ¶¶ 28, 29, 40; Longo Decl., ¶ 15, Exh. AP.
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`Similarly, Petitioner has refused or limited consent to Respondent’s reasonable
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`requests for extensions while at the same time requesting extensions itself. For example,
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`when former counsel for Respondent requested a 60-Day E