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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
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`September 9, 2019
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`Cancellation No. 92067777
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`Akasa (Europe) Limited
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`v.
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`Jill M. McCormack, Interlocutory Attorney:
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`Akaso Tech LLC
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`On September 5, 2019, the Board held a teleconference with the parties to address
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`Petitioner’s motion, filed July 29, 2019, to extend the discovery period by 60 days.1
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`The motion was contested. The participants in the conference were Scott Alprin,
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`counsel for Petitioner; Trina Longo, counsel for Respondent; and Jill McCormack,
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`Interlocutory Attorney for the Board. As stated on the call, Petitioner’s motion to
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`extend is granted, only to the extent set forth herein.
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`BACKGROUND FACTS
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`Respondent owns a registration for the standard character mark AKASO for
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`“tablet computer” in International Class 9.2 On January 22, 2018, Petitioner filed a
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`petition to cancel Respondent’s registration on the grounds of priority and likelihood
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`1 Teleconferences are informal and may not be recorded. See Trademark Rule 2.120(j). The
`Board issues a summary order following the conference which becomes part of the record. See
`TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 502.06(a) (2019).
`2 Registration No. 4389656 issued August 20, 2013.
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`Cancellation No. 92067777
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`of confusion; nonuse, abandonment; fraud; and lack of bona fide intent.3
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`(1 TTABVUE). Petitioner pleads common law rights and ownership of an application
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`for the stylized word mark
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` for “computer hardware and computer
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`peripherals” also in Class 9. (1 TTABVUE 4). On March 5, 2018, Respondent filed its
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`answer. (5 TTABVUE).
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`Discovery opened on April 5, 2018, but proceedings were suspended for settlement
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`negotiations between May 4, 2018 and November 30, 2018. Upon resumption on
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`December 1, 2018, discovery was set to close on April 30, 2019. (15 TTABVUE 2). On
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`March 30, 2019, Respondent filed a motion for leave to amend its answer to add
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`additional affirmative defenses and to extend all dates by 60 days for additional time
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`to conduct and complete discovery. (18 TTABVUE). Respondent’s motion was granted
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`as conceded, and discovery was reset to close on June 29, 2019. (20 TTABVUE).
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`On June 17, 2019, Petitioner emailed Respondent proposing that the parties
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`schedule a call with the assigned Interlocutory Attorney to address a discovery
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`dispute. (23 TTABVUE 2). Between June 17, 2019 and July 26, 2019, the parties
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`communicated multiple times via email regarding the topics to be discussed during
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`the proposed call with the Interlocutory Attorney. (23 TTABVUE 2–4). During that
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`time, on June 23, 2019, Petitioner filed a motion for a 30-day extension of all dates in
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`the proceeding, without consent, stating that the parties were having disagreements
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`3 During the teleconference, counsel for Petitioner confirmed that the inclusion of
`Registration No. 4303461 in the petition to cancel was a filing error. Respondent does not
`own Registration No. 4303461, and therefore it is not at issue in this proceeding. For the
`avoidance of doubt, all references to Registration No. 4303461 in the petition to cancel (1
`TTABVUE 1–2, 9–11) are hereby stricken and will be given no further consideration.
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`2
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`Cancellation No. 92067777
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`related to discovery. (21 TTABVUE 3). Petitioner’s motion was granted as conceded,
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`and discovery was reset to close on July 29, 2019. (25 TTABVUE 1, n.1).
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`On July 29, 2019, Petitioner filed the instant motion to extend all dates by 60 days
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`to allow for the proposed teleconference with the Interlocutory Attorney to be
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`scheduled and for the parties to react to the Interlocutory Attorney’s guidance in the
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`days following the conference. (23 TTABVUE 5). Respondent opposes the motion,
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`contending that Petitioner has failed to show good cause to warrant such an
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`extension. (24 TTABVUE 16).
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`MOTION TO EXTEND
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`The standard for allowing an extension of a prescribed period prior to the
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`expiration of that period is “good cause.” See Fed. R. Cir. P. 6(b). “[T]he Board is
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`liberal in granting extensions of time before the period to act has elapsed so long as
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`the moving party has not been guilty of negligence or bad faith and the privilege of
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`extension is not abused.” Nat’l Football League v. DNH Mgmt LLC, 85 USPQ2d 1852,
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`1854 (TTAB 2008).
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`Here, although the Board finds that a 60-day extension is inappropriate, there is
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`good cause for some extension of the discovery period based on the parties’ agreement
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`that there are outstanding discovery issues that need to be addressed. Specifically,
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`on July 1, 2019, Respondent emailed Petitioner suggesting that counsel create a list
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`of the parties’ outstanding discovery disputes, hold a call amongst themselves to try
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`resolve those disputes, and then request a call with the Interlocutory Attorney, if
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`necessary. (24 TTABVUE 111). It appears that, at that time, the parties were
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`3
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`Cancellation No. 92067777
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`operating on the assumption that there were still 28 days left in the discovery period.4
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`As a result, the Board finds good cause exists for a brief extension of time for the
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`parties to attempt to resolve or narrow their discovery disputes. See Amazon Techs.,
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`Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (noting that the parties are under
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`“equal obligation to participate in good faith” in the parties’ efforts to resolve
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`discovery disputes).
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`In light of the foregoing, Petitioner’s motion to extend the discovery period
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`is granted to the extent that all dates in this proceeding shall be extended
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`by 30 days. The Board expects that, as part of their good faith efforts to resolve or
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`narrow their respective discovery disputes, the parties will have at least one phone
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`call between counsel, in addition to any written correspondence, to discuss the
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`relevant issues.5 Moreover, to minimize further delay in this proceeding, if either
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`party wishes to file an unconsented motion for further extension of the
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`discovery period, that party must contact the assigned Interlocutory
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`Attorney for permission before filing the motion.
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`4 Although Petitioner’s June 23, 2019 motion for extension had not yet been granted, both
`parties served written discovery after that motion was filed, all of which would have been
`untimely if the June 23, 2019 motion was denied. (24 TTABVUE 102–04).
`5 The parties are reminded that each party has an obligation to provide discovery, to provide
`proper responses to discovery requests, and to supplement responses to requests as
`appropriate. These obligations are not dependent on the other parties’ discovery responses.
`See Panda Travel Inc. v Resort Option Enters., Inc., 94 USPQ2d 1789, 1791 (TTAB 2009)
`(“Each party has a duty to make a good faith effort to satisfy the reasonable and appropriate
`discovery needs of its adversary.”); TBMP § 408 (Duties to Cooperate, Search Records,
`Supplement). The Board strongly encourages the parties to review TBMP § 414 (Selected
`Discovery Guidelines), and the cases cited therein, in advance of their phone call to discuss
`their discovery disputes.
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`4
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`Cancellation No. 92067777
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`PROCEEDINGS RESUMED
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`Proceedings herein are resumed. Remaining dates reset as follows:
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`10/6/2019
`Discovery Closes
`11/20/2019
`Plaintiff’s Pretrial Disclosures Due
`1/4/2020
`Plaintiff’s 30-day Trial Period Ends
`1/19/2020
`Defendant’s Pretrial Disclosures Due
`3/4/2020
`Defendant’s 30-day Trial Period Ends
`3/19/2020
`Plaintiff’s Rebuttal Disclosures Due
`Plaintiff’s 15-day Rebuttal Period Ends 4/18/2020
`Plaintiff’s Opening Brief Due
`6/17/2020
`Defendant’s Brief Due
`7/17/2020
`Plaintiff’s Reply Brief Due
`8/1/2020
`Request for Oral Hearing (optional) Due 8/11/2020
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`Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
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`taken and introduced out of the presence of the Board during the assigned testimony
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`periods. The parties may stipulate to a wide variety of matters, and many
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`requirements relevant to the trial phase of Board proceedings are set forth in
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`Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
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`manner and timing of taking testimony, matters in evidence, and the procedures for
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`submitting and serving testimony and other evidence, including affidavits,
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`declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
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`submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
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`final hearing will be scheduled only upon the timely submission of a separate notice
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`as allowed by Trademark Rule 2.129(a).
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`5
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