Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1029734
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`Filing date:
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`01/17/2020
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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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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`Akaso Tech LLC
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`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
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`Motion to Dismiss 2.132
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`Angela Y. Dai
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`adai@nkllaw.com, docket@nkllaw.com, allen.xue@nkllaw.com,
`tlongo@nkllaw.com
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`/Angela Y. Dai/
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`01/17/2020
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`Akaso MOTION FOR JUDGMENT UNDER 37 CFR 2.132(a).pdf(244435 bytes )
`Declaration of Trina Longo in Support of Akaso Motion for Judgment w EXH
`1.pdf(380248 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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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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`MOTION FOR JUDGMENT UNDER 37 C.F.R. § 2.132(a) FOR
`PETITIONER’S FAILURE TO PROSECUTE,
`AND MEMORANDUM IN SUPPORT THEREOF
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`Respondent, Akaso Tech LLC (“Respondent”), hereby moves for judgment for Petitioner’s
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`failure to prosecute under 37 C.F.R § 2.132(a) and §§ 534.01 and 534.02 of the Trademark Trial
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`and Appeal Board Manual of Procedure (“TBMP”). Respondent files this Motion For Judgment
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`For Petitioner’s Failure To Prosecute (“Motion for Judgment”) seeking dismissal and judgment
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`against Petitioner, Akasa (Europe) Limited (“Petitioner”), in this Cancellation Proceeding No.
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`92067777. Respondent’s Motion for Judgment is supported by the points and authorities cited in
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`the Memorandum in Support herein and by the Declaration of Trina A. Longo (“Longo Decl.”)
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`and exhibit attached thereto. For the reasons set forth below, Respondent respectfully requests
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`that the Board grant Respondent’s Motion for Judgment and dismiss this proceeding with
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`prejudice.
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`Further, Respondent respectfully requests that the Board suspend this proceeding pending
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`1
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`

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`disposition of the current motion.
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`In the event the Board denies Respondent’s Motion for Judgment, Respondent respectfully
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`requests that the due date for serving its pretrial disclosures and all subsequent proceeding dates
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`be reset. 37 C.F.R. § 2.132(a).
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`MEMORANDUM IN SUPPORT OF MOTION FOR JUDGMENT
`UNDER 37 C.F.R. § 2.132(a) FOR PETITIONER’S FAILURE TO PROSECUTE
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`I.
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`STATEMENT OF FACTS
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`Petitioner initiated this proceeding nearly two years ago by filing a Petition for Cancellation
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`on January 22, 2018 against U.S. Trademark Registration No. 4,389,656 for the mark AKASO. (1
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`TTABVUE). The alleged grounds for cancellation stated in the Petition for Cancellation were
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`priority and likelihood of confusion; no use of the mark in commerce before the application,
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`amendment to allege use, or statement of use was filed; abandonment; fraud on the United States
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`Patent and Trademark Office; and lack of bona fide intent to use the mark. (Id.).
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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 Answer
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`in this proceeding. (5 TTABVUE).
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`On March 30, 2019, Respondent filed with the Board a Combined Motion for Leave to
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`Amend Answer to the Petition for Cancellation, Motion to Suspend, Motion to Extend the
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`Discovery and Trial Periods, and Memorandum in Support Thereof (“Respondent’s Combined
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`Motion”). (18 TTABVUE).
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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. (20 TTABVUE). The Board’s Order stated, inter alia, that
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`“Respondent’s amended answer is accepted as Respondent’s operative pleading in this
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`proceeding.” (Id. at 1; see also 18 TTABVUE Exhibit A).
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`2
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`On September 9, 2019, the Board issued an Order setting forth the latest operative schedule
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`of dates in this proceeding. (26 TTABVUE). According to the Board’s schedule, Petitioner’s
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`Pretrial Disclosures were due on November 20, 2019. (Id. at 5). (Emphasis added). The
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`Petitioner, however, did not serve any pretrial disclosures on Respondent’s counsel. (Longo Decl.
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`¶ 3). Further, Petitioner’s 30-day trial period ended on January 4, 2020. (26 TTABVUE 5).
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`(Emphasis added). By calculation, Petitioner’s 30-day trial period opened on December 5,
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`2019. (Longo Decl. ¶ 4). During its trial period from December 5, 2019 to January 4, 2020,
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`Petitioner did not submit any evidence or notices of reliance, or take any testimony. (Id.).
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`In the same September 9, 2019 Order, the Board also required that parties hold “at least
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`one phone call between counsel . . . to discuss the relevant [discovery dispute] issues” (26
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`TTABVUE 4). Pursuant to the Board’s Order, the parties’ counsel held a teleconference on
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`October 3, 2019. (Longo Decl. ¶ 5). During the call, apart from addressing the discovery dispute
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`issues, Petitioner’s counsel also proposed restarting settlement negotiations between the parties.
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`(Id. ¶ 6). Petitioner’s counsel stated that Petitioner would send a proposal for Respondent’s review
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`as the start of the negotiations. (Id.). Petitioner’s counsel stated that he planned on sending the
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`proposal “by the end of the week.” (Id.). Petitioner’s counsel further stated that if there was some
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`sort of hiccup, then he would provide Respondent’s counsel with the proposal the following week.
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`(Id.). Because October 3, 2019 was a Thursday, Respondent’s counsel expected to receive
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`Petitioner’s settlement proposal by the very next day (Friday, October 4, 2019) or sometime during
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`the week of October 7, 2019, at the latest. (Id.). Petitioner’s counsel, however, never sent any
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`settlement proposal. (Id.). Indeed, to date, despite follow-up emails to Petitioner’s counsel,
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`Respondent has never received the settlement proposal from Petitioner. (Id. ¶ 7).
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`In fact, in one of the last emails that Petitioner’s counsel sent to Respondent’s counsel,
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`3
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`Petitioner’s counsel stated that “[w]e have not heard from our client with regard to settlement . . .
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`. We will send a reminder, and apologize for the delay.” (Id. ¶ 8, Ex. 1). That was nearly three
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`months ago and the last time Respondent’s counsel heard any mention of settlement from
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`Petitioner’s counsel. (Id. ¶ 9). Since October 31, 2019, Respondent’s counsel has not received any
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`communication from Petitioner’s counsel. (Id. ¶ 11).1
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`As explained above, Petitioner’s Pretrial Disclosure Deadline and Testimony Period have
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`come and gone. Petitioner did not serve any Pretrial Disclosures on Respondent. Further, Petitioner
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`did not submit any evidence or notices of reliance, or take any testimony during its designated
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`testimony period. As such, Petitioner has failed to prosecute this cancellation proceeding. Under
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`the Trademark Rules of Practice, this cancellation proceeding should be dismissed with prejudice
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`for Petitioner’s failure to prosecute.
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`II.
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`ARGUMENT
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`A.
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`Respondent’s Motion for Judgment under 37 C.F.R. § 2.132(a) should be
`granted because Petitioner failed to submit any evidence or take any
`testimony during its testimony period.
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`Trademark Rule 2.132(a) provides that “[i]f the time for taking testimony by any party in
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`the position of plaintiff has expired . . . any party in the position of defendant may, without waiving
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`the right to offer evidence in the event the motion is denied, move for dismissal on the ground of
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`the failure of the plaintiff to prosecute.” See SFW Licensing Corp. v. Di Pardo Packing Ltd., 60
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`USPQ2d 1372, 1374-75 (TTAB 2001) (denying motion to extend testimony period and granting
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`motion to dismiss). Further, “[i]n the absence of a showing of excusable neglect, judgment may
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`be rendered against the party in the position of the plaintiff. 37 C.F.R. § 2.132(a); TBMP §534.02;
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`1 Respondent further notes that since at least as early as April 26, 2019, Petitioner has
`consistently caused delays in this proceeding, including serving late responses and serving
`incomplete responses to Respondent’s discovery requests. (24 TTABVUE 5 to 14).
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`4
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`see also SFW Licensing Corp., 60 USPQ2d at 1375 (granting motion for judgment because there
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`was no showing of excusable neglect).
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`The purpose of the motion under 37 C.F.R. § 2.132(a) is to save the defendant the expense
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`and delay of continuing with the trial in those cases where plaintiff has failed to offer any evidence
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`during its testimony period. TBMP § 534.02.
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`Here, Petitioner has failed to offer any evidence or notices of reliance, or take any
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`testimony during its testimony period (i.e., December 5, 2019 to January 4, 2019). (Longo Decl. ¶
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`4). In this situation, “where [Petitioner] did, in fact, fail to offer any evidence during its testimony
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`period, [Petitioner] cannot prevail and, thus, [Respondent] need not offer evidence either.”
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`TBMP § 534.02 (emphasis added).
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`Moreover, it is difficult to envision any possible excuse that Petitioner may have to explain
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`its failure to offer any evidence or take testimony during the prescribed period, much less be able
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`to prove excusable neglect.
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`This cancellation proceeding has been dragging on for nearly two years. When Petitioner
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`had the opportunity to present evidence in support of any of its alleged grounds for cancellation,
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`Petitioner failed to do so. When a petitioner fails to offer any evidence during its testimony period,
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`as is the case here, it cannot prevail. Time is ripe to dispose of this case. Petitioner has failed to
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`prosecute this proceeding and, as such, judgment should be rendered against Petitioner and this
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`cancellation proceeding should be dismissed, with prejudice.
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`III. CONCLUSION
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`For the forgoing reasons, Respondent respectfully requests that the Board issue an order
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`granting Respondent’s Motion for Judgment Under 37 C.F.R. § 2.132(a) and dismissing this
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`cancellation proceeding with prejudice.
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`5
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`Further, Respondent respectfully requests that the Board suspend this proceeding pending
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`disposition of the current motion.
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`In the event that the Board denies Respondent’s Motion for Judgment, Respondent
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`respectfully requests that the due date for serving its pretrial disclosures and all subsequent
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`proceeding dates be reset.
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`Dated: January 17, 2020
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`Respectfully submitted,
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`NOVICK, KIM & LEE, PLLC
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`/Angela Y. Dai/
`Allen (Zhi Yang) Xue
`Angela Y. Dai
`Trina A. Longo
`3251 Old Lee Highway, Suite 404
`Fairfax, VA 22030
`Telephone: (703)745-5495
`Facsimile: (703)563-9748
`allen.xue@nkllaw.com
`adai@nkllaw.com
`tlongo@nkllaw.com
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`Attorneys for Respondent Akaso Tech LLC
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`6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 17, 2020, a true and complete copy of the foregoing
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`MOTION FOR JUDGMENT UNDER 37 C.F.R. § 2.132(a) FOR PETITIONER’S
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`FAILURE TO PROSECUTE, AND MEMORANDUM IN SUPPORT THEREOF and
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`DECLARATION OF TRINA A. LONGO and EXHIBIT thereof, are being served on counsel
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`for Petitioner Akasa (Europe) Limited via 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: /Angela Y. Dai/
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` Angela Y. Dai
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`

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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,
`
`v.
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`AKASA (EUROPE) LIMITED,
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`
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`AKASO TECH LLC,
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`
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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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`DECLARATION OF TRINA A. LONGO
`IN SUPPORT OF RESPONDENT’S MOTION FOR JUDGMENT
`UNDER 37 C.F.R. § 2.132(a) FOR PETITIONER’S FAILURE TO PROSECUTE
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`TRINA A. LONGO, pursuant to 28 U.S.C. § 1746, declares:
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`1.
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`I am of counsel with the law firm of Novick, Kim & Lee, PLLC, attorneys for
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`Respondent, Akaso Tech LLC (“Respondent”). I submit this declaration in support of
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`Respondent’s Motion for Judgment Under 37 C.F.R. § 2.132(a) For Petitioner’s Failure To
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`Prosecute. The following facts are within my knowledge and, if called and sworn as a witness, I
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`could and would testify competently thereto. The matters referred to in this declaration are based
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`on my personal knowledge.
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`2.
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`On June 26, 2019, attorney Angela Y. Dai of Novick, Kim & Lee, PLLC and I filed
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`a Joint Notice of Appearance with the Trademark Trial and Appeal Board in this proceeding. (22
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`TTABVUE).
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`3.
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`According to the Board’s Order of September 9, 2019 setting forth the latest
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`operative schedule of dates in this proceeding, Petitioner’s Pretrial Disclosures were due on
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`1
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`

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`November 20, 2019. (26 TTABVUE 5). The Petitioner, however, did not serve any pretrial
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`disclosures.
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`4.
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`In the same Order, Petitioner’s 30-day trial period was set to end on January 4,
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`2020. (Id.). By my calculations, Petitioner’s 30-day trial period opened on December 5, 2019.
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`During its trial period from December 5, 2019 to January 4, 2020, Petitioner did not submit any
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`evidence or notices of reliance, or take any testimony.
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`5.
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`In the same September 9, 2019 Order, the Board also required that parties hold “at
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`least one phone call between counsel . . . to discuss the relevant [discovery dispute] issues” (Id. at
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`4). Accordingly, on October 3, 2019, my colleagues and I held a teleconference with Petitioner’s
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`counsel, M. Scott Alprin of Rabin & Berdo, P.C. On the call with me were my colleagues Allen
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`Xue and Angela Dai.
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`6.
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`During the call, apart from addressing the discovery dispute issues, Mr. Alprin also
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`proposed restarting settlement negotiations between the parties. Petitioner’s counsel stated that
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`Petitioner would send a proposal for Respondent’s review as the start of the negotiations.
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`Petitioner’s counsel stated that he planned on sending the proposal “by the end of the week”.
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`Petitioner’s counsel further stated that if there was some sort of hiccup, then he would provide us
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`with the proposal the following week. Because October 3, 2019 was a Thursday, Respondent’s
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`counsel expected to receive Petitioner’s settlement proposal by the very next day (Friday, October
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`4, 2019) or sometime during the week of October 7, 2019, at the latest. Petitioner’s counsel,
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`however, never sent any settlement proposal.
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`7.
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`I sent follow-up emails on October 11, 2019 and then again on October 25, 2019,
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`asking Mr. Alprin for a status update regarding the settlement proposal. Despite my follow-up
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`emails to Mr. Alprin, to date, Respondent has never received the settlement proposal from
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`2
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`Petitioner.
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`8.
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`In fact, on October 25, 2019, in reply to my email requesting a status update on the
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`settlement information, Mr. Alprin’s email stated: “We have not heard from our client with regard
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`to settlement . . . . We will send a reminder, and apologize for the delay.” See true and correct
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`copy of the email from Scott Alprin dated October 25, 2019, attached as Exhibit 1.
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`9.
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`Mr. Alprin’s email reply was nearly three months ago and the last time I or my
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`colleagues heard any mention of settlement from Petitioner’s counsel.
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`10.
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`The last email I received from Petitioner’s counsel was on October 30, 2019 in
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`reply to questions I posed regarding one of Petitioner’s documents. There was no mention of
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`settlement.
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`11.
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`Since October 31, 2019, neither I nor my colleagues have received any
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`communication from Petitioner’s counsel.
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` I
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` DECLARE UNDER PENALTY OF PERJURY THAT THE FOREGOING IS TRUE AND
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`CORRECT. EXECUTED ON JANUARY 17, 2020 AT VIENNA, VIRGINIA.
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`/Trina A. Longo/
`Trina A. Longo
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`3
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`EXHIBIT 1
`EXHIBIT 1
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`

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`Angela Dai
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`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Attachments:
`
`Dear Trina:
`
`Scott Alprin <salprin@rabinberdo.com>
`Friday, October 25, 2019 8:35 PM
`Trina Longo
`Angela Dai; Allen Xue; Hui Zhang; Tracy Zhang
`Re: Akasa v. Akaso - Petition to Cancel No. 92067777; Your Ref: GIA 353TM; Our Ref:
`LA500.0001
`Akasa (Europe) v. Zheng - Discovery - Rsp. - Docs (1st) - Doc 103 (Prods. per inv. -
`Commercially Sensitive).pdf
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`Thanks for your e-mail. We have not heard from our client with regard to settlement or the answers to your
`questions about the sales figures document. We will send a reminder, and apologize for the delay.
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`As for a possible document linking pictures to invoices, we have not located a document with pictures
`(although we have tried), but we found a document that provides a chart linking three invoices to certain
`products. I am not sure if we made a determination that the information in the document was duplicative, or
`if the document was overlooked. Please find it attached hereto as Document 103.
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`Have a good weekend.
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`Best regards,
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`Scott
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`Scott Alprin
`RABIN & BERDO, PC
`Patent, Trademark and Copyright Law
`1101 14th Street, N.W., Suite 500
`Washington DC, 20005
`Phone: (202) 371-8976
`Fax: (202) 408-0924
`Email: firm@rabinberdo.com - address for all official email correspondence
`Website: www.rabinberdo.com
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`From: Trina Longo <tlongo@nkllaw.com>
`Sent: Friday, October 25, 2019 9:17 AM
`To: Scott Alprin <salprin@rabinberdo.com>
`Cc: Angela Dai <adai@nkllaw.com>; Allen Xue <allen.xue@nkllaw.com>; Hui Zhang <hzhang@rabinberdo.com>; Tracy
`Zhang <tzhang@rabinberdo.com>; Trina Longo <tlongo@nkllaw.com>
`Subject: Re: Akasa v. Akaso - Petition to Cancel No. 92067777; Your Ref: GIA 353TM; Our Ref: LA500.0001
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`Dear Scott,
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`We just wanted to follow up with you regarding the proposed settlement, a possible document linking pictures
`to invoices, and the answers to our questions about the sales figures document.
`1
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