Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1033951
`
`Filing date:
`
`02/05/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92067777
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Akasa (Europe) Limited
`
`STEVEN M RABIN
`RABIN & BERDO PC
`1101 14TH STREET NW, SUITE 500
`WASHINGTON, DC 20005
`UNITED STATES
`firm@rabinberdo.com, salprin@rabinberdo.com, hzhang@rabinberdo.com
`202-371-8976
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Motion to Reopen
`
`M. Scott Alprin
`
`salprin@rabinberdo.com, firm@rabinberdo.com
`
`/M. Scott Alprin/
`
`02/05/2020
`
`Akasa Europe v. Akaso Tech - Motion to Reopen - FINAL PDF.pdf(101369
`bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEAMARK TRIAL AND APPEAL BOARD
`
`
`
`Akasa (Europe) Limited,
`
`Petitioner,
`
`v.
`
`Akaso Tech LLC,
`
`Respondent.
`
`
`Cancellation No.: 92067777
`
`Registration No. 4389656 (petitioned)
`
`Mark: AKASO
`
`
`
`
`
`PETITIONER’S MOTION IN OPPOSITION TO RESPONDENT’S
`MOTION FOR JUDGMENT
`AND
`PETITIONER’S MOTION TO REOPEN
`PETITIONER’S PRETRIAL DISCLOSURES AND TESTIMONY PERIODS
`
`Petitioner Akasa (Europe) Limited (“Petitioner”) respectfully requests that the Motion for
`
`Judgment Under 37 C.F.R. § 2.132(A) for Petitioner’s Failure To Prosecute filed by Respondent
`
`Akaso Tech LLC (“Respondent”) be denied, and that Petitioner’s testimony period be reopened
`
`briefly, and the trial dates reset, pursuant to TBMP Section 509.01.
`
`
`I. MOTION TO REOPEN TIME AND RESET TRIAL DATES: TBMP 509.01.
`
`
`
`Petitioner respectfully requests that the Board reopen Petitioner’s pretrial disclosure and
`
`testimony periods to permit Petitioner to offer into evidence the following documents:
`
` Petitioner’s Pretrial Disclosure Statement, attached hereto as Exhibit A;
`
` The unsigned declaration1 of Mr. Wai-Ming Tai, attached hereto as Exhibit B, as well as
`
`the attachments to his declaration being Exhibits B1 ~ B47 [Under Seal];
`
`                                                            
`1 Petitioner intends to submit a signed version of the declaration within the next week.  Petitioner’s priority is to 
`present its underlying evidence to Respondent as soon as possible, in order to minimize prejudice against 
`Respondent, and therefore decided not to wait to receive a signed version of the declaration before filing its 
`Motion to Reopen. 
`
` 
`
`1 
`
`

`

` Petitioner’s First Notice of Reliance, and underlying evidence, related to information and
`
`documents received from Respondent during discovery, having relevance to the grounds
`
`of, inter alia, likelihood of confusion and abandonment, submitted herewith as Exhibits
`
`C1 ~ C8 [C2 and C4 Under Seal], and Exhibits C8-1 ~ C8-5 [Under Seal].
`
` Petitioner’s Second Notice of Reliance, and underlying evidence, related to web pages
`
`obtained online and third-party registrations evidencing relatedness of the respective
`
`goods of the parties, submitted herewith as Exhibits D1-1 ~ D1-3 and Exhibits D2-1 ~
`
`D2-3.
`
`Petitioner further requests that the Board reset Respondent’s pretrial disclosure period
`
`and testimony period and the rebuttal testimony period pursuant to 37 CFR § 2.132.
`
`Petitioner’s failure to file and serve pretrial disclosures by November 20, 2019, and to file
`
`and serve its trial testimony and Notice of Reliance by January 6, 20202, prompting the instant
`
`Motion to Reopen, are justified by the excusable neglect standards of Rule 509.01. The Supreme
`
`Court clarified the meaning and scope of "excusable neglect" in Pioneer Investment Servs. Co. v.
`
`Brunswick Assocs. L.P., 507 U.S. 380 (1993), stating (with emphasis added):
`
`[The determination is] at bottom an equitable one, taking account of all
`relevant circumstances surrounding the party’s omission. These include. . . [1]
`the danger of prejudice to the [non-moving party], [2] the length of the delay
`and its potential impact on judicial proceedings, [3] the reason for the delay,
`including whether it was within the reasonable control of the movant, and [4]
`whether the movant acted in good faith.
`507 U.S. at 395.
`
`                                                            
`2 Petitioner notes that its testimony period ended on Saturday, January 4, 2020, such that the actual deadline was 
`January 6, 2020.  Petitioner has therefore calculated the length of delay from January 6, 2020 instead of January 4, 
`2020. 
`
` 
`
`2 
`
`

`

`The TTAB adopted this standard in Pumpkin Ltd. v. The Seed Corps., 43 USPQ.2d 1582 (TTAB
`
`1997), and recently ruled on the issue of “excusable neglect” in The Coffee Studio LLC v. Reign
`
`LLC dba Coffee Studio, 129 USPQ2d 1480 (TTAB 2019).
`
` A.
`
`FACTOR 1: There is Little Chance of Prejudice to Respondent
`
`
`
`Factor 1 favors granting Petitioner’s Motion to Reopen Petitioner’s Pretrial Disclosures
`
`Period and Petitioner’s Testimony Period (hereinafter, “Motion to Reopen”). There is little
`
`chance of prejudice to Respondent. “Prejudice” in this context means “more than the mere
`
`inconvenience and delay caused by the movant’s previous failure to take timely action, and more
`
`than the non-movant’s loss of any tactical advantage that it otherwise would enjoy as a result of
`
`the movant’s delay or omission.” TBMP 509.01(b)(1); Pumpkin Ltd. v. The Seed Corps, 43
`
`USPQ2d 1582, 1587 (TTAB 1997) (citing Pratt v. Philbrook, 109 F.3d 18 (1st Cir. 1997)).  
`
`Instead, “prejudice” pertains to the nonmoving party’s “ability to litigate the case.” Id. As an
`
`example, “prejudice” would result if the delay caused certain evidence or witnesses to be
`
`unavailable. Id. (citing Pumpkin, 43 USPQ2d at 1587). Petitioner contends that there is no
`
`prejudice to Respondent due to unavailability of witnesses. As stated in TMBP Section
`
`703.01(h), “Regardless of the form of the direct testimony, every adverse party must be given an
`
`opportunity to cross-examine the witness.” If the present Motion to Reopen is granted,
`
`Respondent will be able to cross-examine Petitioner’s only witness and test the credibility of the
`
`statements made in his declaration.
`
`Petitioner is prepared to undertake significant steps to minimize any potential prejudice to
`
`Respondent. Petitioner’s Pretrial Disclosure Statement is attached hereto as Exhibit A and the
`
` 
`
`3 
`
`

`

`only witness listed is Wai-Ming Tai, the Director of Petitioner.3 The witness was previously
`
`disclosed to Respondent in Petitioner’s Initial Disclosure Statement, served upon Respondent on
`
`December 3, 2018. Compare Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc.,
`
`98 USPQ2d 1370, 1371 (TTAB 2011) (pretrial disclosures adequate) with Great Seats Inc. v.
`
`Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011) (failure to identify witnesses during
`
`discovery but named in pretrial disclosures resulted in unfair surprise to adversary).
`
`In addition, Mr. Wai-Ming Tai’s declaration is being submitted for the sole purpose of
`
`authenticating pictures of Petitioner’s products and invoices evidencing use in commerce, all of
`
`which were timely served upon Respondent during the discovery period on June 23, June 29,
`
`July 8, July 29, August 10, or October 5, 2019. Because Respondent has been in possession of
`
`the documents being authenticated by Mr. Wai-Ming Tai for several months, Respondent is
`
`already familiar with the content of the documents. Accordingly, there is no danger of prejudice
`
`to Respondent in this regard.
`
`Petitioner is also submitting printouts from publicly available websites and of third-party
`
`registrations from the TESS database to evidence relatedness of the parties’ goods. Respondent
`
`has been aware since the present Petition was filed in 2018 that one of Petitioner’s grounds was
`
`likelihood of confusion based on priority of use; so, it should come as no surprise at all that
`
`Petitioner is submitting evidence of the relatedness of the respective goods of the parties.
`
`While not strictly a factor under Pumpkin Ltd. v. The Seed Corps., the prejudice to
`
`Petitioner in the absence of the relief sought is significant and far outweighs the minimal
`
`inconvenience to Respondent from an equitable perspective. Petitioner respectfully submits that
`
`                                                            
`3 Although Petitioner is submitting declarations from M. Scott Alprin (of counsel to Rabin & Berdo, P.C.) in relation 
`to its Motion to Reopen as exhibits hereto, this declarations would not have been included in Petitioner’s Pretrial 
`Disclosures had the document been filed in a timely manner. 
`
` 
`
`4 
`
`

`

`the fair and equitable decision in this matter is for the Board to allow the present case to be
`
`decided on the merits. Petitioner contends that the potential for prejudice to TTAB litigants has
`
`increased dramatically since the seminal TTAB case on “excusable neglect” was issued in 1997
`
`in In Pumpkin Ltd. v. The Seed Corps. In 2015, the Supreme Court ruled in B&B Hardware,
`
`Inc. v. Hargis Industries, Inc., 113 USPQ2d 2045 (2015), that issue preclusion can be grounded
`
`on the decision of an administrative agency. If the present motion were to fail, the Board would
`
`issue a judgment against Respondent, with prejudice, a decision that could preclude Petitioner
`
`from enforcing its rights against Respondent in civil court. Petitioner has been selling its
`
`products in the United States since 2001, with invoices dating back to 2004 attached to Mr. Wai-
`
`Ming Tai’s Declaration (see Exhibit B, and attachments thereto). It would be a truly a severe
`
`punishment for Petitioner, which has built up goodwill in its business for 19 years in the U.S., to
`
`prevent it from enforcing its rights in civil court. Whereas the Board in Pumpkin did not have to
`
`worry about the ramifications of its decision influencing the petitioner/movant’s ability to
`
`enforce its trademark rights in civil court, the stakes are higher now due to the B&B Hardware
`
`decision. Petitioner respectfully requests that the Board take into consideration the heightened
`
`prejudice against Petitioner due to the B&B Hardware decision when evaluating the issue of
`
`prejudice against Respondent, which Petitioner asserts is minimal.
`
`B.
`
`FACTOR TWO: Length of Delay and Potential Impact on Judicial Proceedings
`
`Factor 2 likewise favors granting Petitioner’s Motion to Reopen, and allowing
`
`Petitioner’s testimony and exhibits, submitted herewith, to be admitted into the record. The
`
`length of the delay in this case has been 30 calendar days, including the intervening weekends
`
`and federal holidays. This 30-day period represents the difference between the date that
`
`Respondent would otherwise have received the documents in question (Mr. Wai-Ming Tai’s
`
` 
`
`5 
`
`

`

`declaration and attachments thereto (although Respondent had received these documents during
`
`discovery) and the Notices of Reliance and attachments thereto) and the date (today) on which
`
`Respondent actually received them.
`
`Petitioner respectfully submits that a comparison of the facts of two precedential TTAB
`
`cases, Pumpkin Ltd. v. The Seed Corps., 43 USPQ.2d 1582 (TTAB 1997) (“the Pumpkin case”),
`
`and The Coffee Studio LLC v. Reign LLC dba Coffee Studio, 129 USPQ2d 1480 (TTAB 2019)
`
`[precedential] (“the Coffee case”) with the present matter shows that Petitioner’s Motion to
`
`Reopen should be granted because a 30-day delay is a comparatively short period. The
`
`following chart illustrates both that the period of delay between Petitioner’s close of testimony
`
`period and the filing of the Motion to Reopen is significantly shorter than in the Pumpkin Case
`
`by about 2 months and 15 days, but approximately three weeks longer than in the Coffee Case:
`
`Pumpkin Case
`(motion denied)
`Plaintiff’s testimony period
`ended on Nov. 14, 1996, and
`the Motion to Reopen was
`filed on February 27, 1997, a
`delay of 3 months and 15
`days.
`
`
`
`Decision by Board issued on
`July 7, 1997, nearly 8 months
`after the testimony period
`ended, and about 3 months
`and 1 week after moving
`party’s reply to non-moving
`party’s opposition to motion
`to reopen.
`
`Coffee Case
`(motion granted)
`Plaintiff’s testimony period
`ended on June 12, 2018, and
`the Motion to Reopen was
`filed on June 19, 2018, a
`delay of 7 days.
`
`
`
`
`Decision by Board issued on
`February 28, 2019, 8-and-a-
`half months after the
`testimony period ended, and
`about 7 months after moving
`party’s reply to non-moving
`party’s opposition to motion
`to reopen.
`
`This Case
`
`Plaintiff’s testimony period
`ended on January 4, 2020, a
`Saturday, such that the
`deadline was actually January
`6, 2020, and this Motion to
`Reopen is being filed on
`February 4, 2020, a delay of
`30 days.
`
`It is not known when the
`Board will rule on the Motion
`to Reopen in this case, but
`Petitioner has proposed some
`strategies below to lessen the
`overall impact on the judicial
`proceeding, if possible.
`
`
`
` 
`
`6 
`
`

`

`
`
`The contrast in how the Board viewed the time to file the Motion to Reopen in the
`
`respective cases is stark. In the Pumpkin Case, the Board expressed concern about the 3 months
`
`and 15-day delay in the following manner:
`
`However, in addition to the time between the expiration of the time for
`taking action and the filing of the motion to reopen, the calculation of
`the length of the delay in proceedings also must take into account the
`additional, unavoidable delay arising from the time required for briefing
`and deciding the motion to reopen. The impact of such delays on this
`proceeding, and on Board proceedings generally, is not inconsiderable.
`Proceedings before the Board already are quite lengthy because they
`must be conducted on the written record rather than by live testimony.
`
`More fundamentally, however, it cannot escape the notice of any
`interested observer of or participant in proceedings before the Board that
`the Board's steadily growing docket of active cases, and the resulting
`inevitable increase in motion practice before the Board, are increasingly
`straining the Board's scarce resources. The Board, and parties to Board
`proceedings generally, clearly have an interest in minimizing the
`amount of the Board's time and resources that must be expended on
`matters, such as most contested motions to reopen time, which come
`before the Board solely as a result of a sloppy practice or inattention to
`deadlines on the part of litigants or their counsel. The Board's interest
`in deterring such sloppy practice weighs heavily against a finding of
`excusable neglect, under the second Pioneer factor. See the Pumpkin
`Case, at 7.4
`
`In contrast, the Board stated the following about the 7-day delay between the end of the
`
`testimony period and the filing of the Motion to Reopen in the Coffee Case:
`
`With respect to the second Pioneer factor, namely the length of the delay and
`its potential impact on proceedings, the Board must evaluate the total length of
`the delay, including the time for the Board to consider the pending motions. See
`Pumpkin, 43 USPQ2d at 1588 (finding calculation of length of delay must
`include delay arising from time required for briefing and deciding motion to
`reopen). We find that the delay caused by Petitioner’s failure to offer
`testimony or evidence during its testimony period, and the parties’ motions
`arising therefrom, is minimal. See Trademark Rule 2.127(a); 37 C.F.R. §
`2,127(a). Further, Petitioner submitted its proposed testimonial affidavits and
`notices of reliance when it moved to reopen testimony. This factor weighs in
`                                                            
`4 To get a sense of what the judges were facing in 1997, Petitioner notes that according the USPTO e‐FOIA page, 
`the TTAB had 10 judges who participated in rulings and issued 322 decisions in 1997, an average of 33.2 decisions 
`per judge; in contrast, in 2019 there were 28 judges and 612 decisions, an average of 21.8 decisions per judge.  
`
` 
`
`7 
`
`

`

`Petitioner’s favor as it is a relatively short period of time and Petitioner
`attempted to mitigate any delay. 24 TTABVUE 5-6. Emphasis added.
`
`It is noted that the Board in the Coffee Case did not appear to count the approximately 7-month
`
`period from the movant’s Reply Brief (July 30, 2018) to the Board’s decision (February 28,
`
`2019) against the movant (the petitioner/plaintiff). This is a markedly different approach from
`
`the Board in the Pumpkin Case, when the Board lamented the “the time required for briefing and
`
`deciding the motion to reopen.” Petitioner respectfully requests that the Board follow the more
`
`recent view.
`
`
`
`The Board in the Coffee Case also appeared to value the fact that the movant
`
`(petitioner/plaintiff) “attempted to mitigate any delay” by filing its testimony with its Motion to
`
`Reopen. Petitioner is likewise filing all of its testimony along with the present motion, but
`
`would like to further mitigate delay by forfeiting certain periods to which a moving party, or a
`
`party in the position of plaintiff, are customarily entitled. The following periods are hereby
`
`forfeited, if the Board will allow Petitioner to do so:
`
`
`
`
`
`In the event that Respondent files a motion in opposition to this Motion to Reopen
`
`(by the deadline of February 24, 2020), Petitioner hereby forfeits its right to file a
`
`Reply Brief, expediting the proceeding by 20 days. Petitioner respectfully requests
`
`that the trial schedule be revised accordingly to omit this period. It is noted that “the
`
`filing of reply briefs is discouraged, as the Board generally finds that reply briefs
`
`have little persuasive value and are often a mere reargument of the points made in the
`
`main brief.” See TBMP Section 502.02(b). The forfeiting of this period by Petitioner
`
`is intended to minimize the prejudice against Respondent, and to maximize the
`
`judicial economy for the Board.
`
`In the event that the present motion is granted, Petitioner hereby forfeits its right to
`
`file rebuttal disclosures, and its 15-day rebuttal period, and respectfully requests that
`
`the trial schedule be revised accordingly to omit this period. The forfeiting of this
`
` 
`
`8 
`
`

`

`period by Petitioner is intended to minimize the prejudice against Respondent, and to
`
`maximize the judicial economy for the Board.
` Petitioner hereby requests that its period to prepare its main/opening brief be reduced
`
`from 60 days (2 months) to 14 days (2 weeks). The reduction of this time period by
`
`Petitioner is intended to minimize the prejudice against Respondent, and to maximize
`
`the judicial economy for the Board.
`
`In order to better visualize the degree of impact on the judicial proceeding, Petitioner provides
`
`the following chart, which shows the current trial schedule, and, assuming Petitioner’s proposal
`
`to forfeit or shorten periods of time is approved, sets forth a new trial schedule accounting for the
`
`Board taking 2 months or 5 months to issue its decision:
`
`Stage of Proceeding
`
`Current Date
`
`Discovery Closes
`Plaintiff’s Pretrial
`Disclosures Due
`
`10/6/2019
`11/20/2019
`
`Plaintiff’s 30-day Trial
`Period Ends
`Defendant’s Pretrial
`Disclosures Due
`Defendant’s 30-day
`Trial Period Ends
`
`Plaintiff’s Rebuttal
`Disclosures Due
`Plaintiff’s 15-day
`Rebuttal Period Ends
`Plaintiff’s Opening
`Brief Due
`
`1/4/2020
`
`1/19/2020
`
`3/4/2020
`
`3/19/2020
`
`4/18/2020
`
`6/17/2020
`
`Defendant’s Brief Due
`
`7/17/2020
`
`Plaintiff’s Reply Brief
`Due
`Request for Oral
`Hearing (optional) Due
`
`8/1/2020
`
`8/11/2020
`
`TTAB Ruling in 2
`Months after
`Respondent’s Next
`Deadline (Feb. 24, 2020)
`
`
`April 24, 2020 (2 months
`from Respondent’s
`deadline to file reply brief
`of Feb. 24, 2020)
`Completed
`
`TTAB Ruling in 5 Months
`after Respondent’s Next
`Deadline (Feb. 24, 2020)
`
`
`July 24, 2020 (5 months
`from Respondent’s deadline
`to file reply brief of Feb. 24,
`2020)
`Completed
`
`May 9, 2020 (15 days
`from April 24, 2020)
`June 23, 2020 (45 days
`from pretrial disclosure
`deadline)
`Forfeited by Petitioner
`
`Aug. 8, 2020 (15 days from
`July 24, 2020)
`September 22, 2020 (45
`days from pretrial disclosure
`deadline)
`Forfeited by Petitioner
`
`Forfeited by Petitioner
`
`Forfeited by Petitioner
`
`July 7, 2020 (60 days
`reduced to 2 weeks (14
`days) from June 23, 2020)
`August 6, 2020 (30 days
`from July 7, 2020)
`August 21, 2020 (15 days
`from Aug. 6, 2020)
`August 31, 2020 (10 days
`from Aug. 21, 2020)
`
`Oct. 6, 2020 (60 days
`reduced to 2 weeks (14
`days) from Sep. 22, 2020)
`November 5, 2020 (2 weeks
`(14 days) from Oct. 6, 2020)
`November 20, 2020 (15 days
`from Nov. 5, 2020)
`November 30, 2020 (10 days
`from Nov. 202, 2020)
`
`
`
` 
`
`9 
`
`

`

`Based on the above time frames, and assuming Petitioner’s proposed forfeiture and reductions in
`
`time are approved by the Board, in the event that it were to take the Board 2 months to issue its
`
`decision, Respondent’s main brief would be due only 20 days after it would have been due if
`
`Petitioner had not missed its deadline to submit evidence in this case. In the event that it were to
`
`take the Board 5 months to issue its decision, Respondent’s main brief would be due 3 months
`
`after it would have been due if Petitioner had not missed its deadline to submit evidence in this
`
`case. While such a delay would certainly be regrettable, it is significantly less than the delay in
`
`the Coffee Case, which was approximately 9-and-a-half months (defendant’s deadline to file its
`
`brief had been set for December 24, 2018, and was reset to October 10, 2019, per the Board’s
`
`order granting the motion to reopen on February 28, 2019). See the Coffee Case, 24 TTABVUE.
`
`Even if the Board determines that it would not be appropriate to allow Petitioner to forfeit or
`
`shorten certain time periods in the trial schedule to lessen prejudice to Respondent, which would
`
`result in a reduction of the delay by approximately 3 months, Petitioner notes that the delay
`
`would still likely be less than the overall delay in the Coffee Case.
`
`Although this proceeding has recently exceeded the 2-year threshold, Petitioner
`
`respectfully notes that a standard case with no delays takes about 10 months to move from the
`
`filing of the petition to the “Plaintiff's Pretrial Disclosures Due” deadline, which is the first
`
`period Petitioner is asking to be reopened herein. Respondent stated the following in its Motion
`
`for Judgment: “This cancellation proceeding has been dragging on for nearly two years. . . .
`
`Time is ripe to dispose of this case.” See 27 TTABVUE 5. Petitioner would note that the
`
`“dragging on” of this proceeding consisted of 7 months of mutually agreed-to motions to
`
` 
`
`10 
`
`

`

`suspend to explore settlement,5 and 3 months of delay after Respondent changed counsel,
`
`amended its Answer, and requested that the discovery period be extended by 2 months.6 In
`
`addition, in the Board’s order of September 9, 2019, the Board noticed that Respondent treated
`
`Petitioner’s motion to suspend without consent of June 23, 2019 as effective, as Respondent
`
`served discovery even though the motion had not yet been granted. See 26 TTABVUE 4, and
`
`footnote 4. Moreover, Respondent did not oppose the motion. The Board then granted
`
`Petitioner’s subsequent motion to suspend without consent of July 29, 2019 for 27 days, until
`
`October 6, 2019. Id. Thus, Petitioner would also contend that the 2 months of extended time
`
`without consent was deemed justifiable by the Board as the parties attempted to work out
`
`discovery disputes. When one considers that a standard case takes 10 months from filing to the
`
`Pretrial Disclosures deadline, and Respondent has either jointly agreed to or requested a
`
`combined 10 months of suspension and/or extension, and the Board found 2 more months
`
`justifiably extended, one would conclude that both parties share the responsibility for most of the
`
`delay in this matter. Inasmuch as Respondent may be implying that it will be prejudiced by use
`
`of expressions such as “dragged on” and “time is ripe,” Petitioner would suggest that impugning
`
`such prejudice solely to the fault of Petitioner would be misplaced.
`
`
`
`
`
`
`
`                                                            
`5 From May 4 to October 1, 2019, the parties filed 5 consented motions to suspend to explore settlement.  The last 
`of these 5 consented motions was for 60 days (see October 1, 2018), so it can be said that the case was suspended 
`for 7 months while the parties explored settlement. 
`6 On March 30, 2019, after changing counsel, Respondent filed a document entitled “Respondent’s Combined 
`Motion For Leave To Amend Answer To The Petition For Cancellation, Motion To Suspend, Motion To Extend The 
`Discovery And Trial Periods, And Memorandum In Support Thereof.”  See 18 TTABVUE.  Petitioner did not contest 
`the motion, and the case was promptly resumed on April 30, 2019. 
`
` 
`
`11 
`
`

`

`C.
`
`FACTORS THREE & FOUR: Reason for the Delay and Whether Petitioner Acted
`in Good Faith
`
`Petitioner respectfully asserts that its failure to properly docket and act upon its deadlines
`
`to submit pretrial disclosures and evidence occurred due to the illness of its attorney, which
`
`constitutes “excusable neglect.”
`
`M. Scott Alprin is of counsel to Rabin & Berdo, P.C., handling primarily difficult
`
`prosecution and litigation matters. He is the attorney in charge of the present case. Alprin Decl. ¶
`
`1.
`
`On or about October 30, 2019, Mr. Alprin started exhibiting symptoms of shingles, an
`
`illness that can come about due to a compromised immune system. Alprin Decl. ¶ 2. Mr. Alprin
`
`was prescribed 21 pills for the treatment of shingles by Dr. Eric Stern, an infectious disease
`
`doctor, on November 2, 2019. Alprin Decl. ¶ 3. See a copy of the prescription in Exhibit E1.
`
`Mr. Alprin was taking pain killers during this time, a potential source of drowsiness. Alprin
`
`Decl. ¶ 3.
`
`Also, Mr. Alprin had been experiencing pain in his eye for a few days at the time that
`
`shingles was diagnosed, and became concerned about the shingles virus causing permanent nerve
`
`damage to his eyes. This concern was confirmed by Dr. Stern. On November 3, 2019, Mr.
`
`Alprin visited the Emergency Room of Sibley Hospital in Washington, D.C. to determine if the
`
`shingles virus had spread to his eyes. It was determined that the shingles virus had not spread to
`
`Mr. Alprin’s eyes. Alprin Decl. ¶ 4; see proof of Mr. Alprin’s ER visit in Exhibit E2.
`
`In retrospect, Mr. Alprin’s performance was compromised by the shingles illness during a
`
`crucial period of this case when he needed to be focusing on the subject matter. On November
`
`14, 2019, Mr. Alprin received a status inquiry about the case, asking if any steps should be taken.
`
`Mr. Alprin responded that the case was “on my radar.” Alprin Decl. ¶ 6. Although the status
`
` 
`
`12 
`
`

`

`inquiry deserved Mr. Alprin’s attention, he gave it none. The illness had contributed to Mr.
`
`Alprin being under the mistaken impression that the litigation matter had been mutually
`
`suspended by the parties to explore settlement. Alprin Decl. ¶ 8. A week later, the Pretrial
`
`Disclosure deadline passed unbeknownst to Mr. Alprin.
`
`On December 14, 2019, Mr. Alprin received another e-mail reminding him that he should
`
`take care of the present case. He again simply acknowledged it, and did not give adequate
`
`attention to it. Alprin Decl. ¶ 7. The shingles illness, and the medicine Mr. Alprin had taken for
`
`it, had clearly sapped his energy and rendered his judgment unclear. During his illness, Mr.
`
`Alprin continued working on this case while under the impression that he could do so in a
`
`professional and competent manner. In retrospect, he believes that his judgment and
`
`attentiveness to the case was affected negatively by the illness and the medicine.
`
`
`
`In the Coffee Case, pretrial disclosures were due on April 28, 2018, and the attorney in
`
`charge of the case (and docketing) had a medical condition that required hospitalization on April
`
`2, 2018, 26 days before the deadline. See The Coffee Studio LLC, 24 TTABVUE 6. The
`
`attorney described her situation as follows:
`
`Since April 2, 2018, when Undersigned Counsel was hospitalized with
`hemoglobin counts of 5.0 mg/dL and severe anemia of unknown origin,
`Counsel has been in and out of the hospital for related treatment, requiring
`medical leave. In her absence, no one was available to take over counsel’s duties
`on this case.1 Undersigned Counsel sincerely apologizes for the inconvenience
`to Petitioner resulting from the medical situation, which was neither pleasant
`nor within Counsel’s ability to control. Undersigned Counsel sincerely
`apologizes for the inconvenience to Petitioner resulting from the medical
`situation, which was neither pleasant nor within Counsel’s ability to control. Id.
`at 10 TTABVUE 5-6.
`
`Petitioner notes the following similarities between its situation and the facts of the Coffee Case:
`
`
`
`In both cases, the attorneys’ illnesses arose well after issuance of the operative trial
`
`schedule.
`
` 
`
`13 
`
`

`

`
`
`
`
`
`In both cases, the attorneys became ill prior to the pretrial disclosure deadline. To be
`
`precise, the attorney in the Coffee Case became sick 26 days prior the deadline; Mr.
`
`Alprin became ill about 20 days prior to the deadline.
`
`In both cases, the attorneys’ illnesses continued as the deadline approached.
`
`In both cases, the cases were not handed off to experienced attorneys during the
`
`attorneys’ illnesses.
`
`In the Coffee Case, the Board ruled as follows:
`
`We find, taking into account the totality of the circumstances of this specific
`case discussed in Petitioner’s motion to reopen, that Petitioner’s failure to take
`appropriate action prior to the close of its testimony period was not within
`Petitioner’s reasonable control.9
`intermittent
`to
`[Footnote 9: While we find Respondent’s reference
`hospitalizations beginning in April to be sufficiently proximate to the relevant
`filing dates in this case, the better practice would be for counsel to provide more
`information including specific dates of hospitalization in a declaration under
`seal.] Id. at 24 TTABVUE 6.
`
`
`Petitioner contends that Mr. Alprin’s illness likewise was “sufficiently proximate to the relevant
`
`filing dates in this case.” Petitioner has attempted to heed the Board’s guidance to provide
`
`evidence of illness by providing copies of Mr. Alprin’s prescription, his pharmacy records, and
`
`his hospital visit.
`
`
`
`On January 17, 2020, Mr. Alprin received Respondent’s Motion for Judgment after 5 pm.
`
`Alprin (Scott) ¶ 9. At that moment, he realized the grave error that had been committed. Now,
`
`19 days later, and 30 days after the testimony period expired, Petitioner is filing this Motion to
`
`Reopen in an effort to preserve its rights and return the case back to the proper track, so that the
`
`parties can continue to explore settlement, and, if not, to have the case decided on the merits.
`
`In good faith, Petitioner has made every effort to ensure that Respondent’s ability to put
`
`on a quality defense is not affected in the least by the 30-day delay. As evidence of Petitioner’s
`
`good faith, Petitioner is filing and serving all of its trial testimony and evidence along with this
`
`Motion. Petitioner is not adding any witnesses beyond those already disclosed in its Initial
`
` 
`
`14 
`
`

`

`Disclosure Statement.7 As further evidence of good faith, Petitioner has consciously chosen to
`
`limit the subject matter of Mr. Wai-Ming Tai’s declaration to authentication of documents that
`
`were produced to Respondent and have been in Respondent’s possession for months.
`
`Respondent had an opportunity to submit a motion to compel about this documentation by the
`
`close of discovery, and in fact indicated an intention to do so, but chose not to do so.
`
`Respondent made the following request in its Motion for Judgment, to which, in good
`
`faith, Petitioner has no objection whatsoever: “In the event the Board denies Respondent’s
`
`Motion for Judgment, Respondent respectfully requests that the due date for serving its pretrial
`
`disclosures and all subsequent proceeding dates be reset. 37 C.F.R. § 2.132(a).”
`
`Petitioner noticed a potential similarity with the Pumpkin Case, namely, in Pumpkin, the
`
`Board discussed an irregularity in how the “bar date” in the bankruptcy case at issue occurred,
`
`stating:
`
`As the Court of Appeals noted, ordinarily the bar date in a bankruptcy case
`should be prominently announced and