Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1090881
`
`Filing date:
`
`10/23/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92072819
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Badawi Aviation, LLC
`
`AVA K DOPPELT
`ALLEN DYER DOPPELT & GILCHRIST PA
`255 SOUTH ORANGE AVENUE SUITE 1401
`ORLANDO, FL 32801
`UNITED STATES
`Primary Email: adoppelt@allendyer.com
`Secondary Email(s): mrodriguez@allendyer.com
`407-841-2330
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Motion to Reopen
`
`Ava K. Doppelt
`
`adoppelt@allendyer.com, mrodriguez@allendyer.com
`
`/Ava K. Doppelt/
`
`10/23/2020
`
`Motion to Reopen Non Confidential_Part1.pdf(5964705 bytes )
`Motion to Reopen Non Confidential_Part2.pdf(6266085 bytes )
`Motion to Reopen Non Confidential_Part3.pdf(6272083 bytes )
`Motion to Reopen Non Confidential_Part4.pdf(329813 bytes )
`
`

`

`MOTION TO REOPEN PART 1 of 4
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Registration No. 5,665,928
`for the Mark AFAF AVIATION & Design
`
`Badawi Aviation, LLC,
`
`Petitioner,
`
`vs.
`
`Afaf Aviation, LLC,
`
`Respondent.
`
`/
`
`Cancellation No: 92072819
`
`PETITIONER BADAWI AVIATION, LLC’S MOTION TO REOPEN TIME FOR
`FILING ITS SUMMARY JUDGMENT MOTION
`
`Pursuant to TBMP 509.01(b), Badawi Aviation, LLC hereby moves The Trademark Trial
`
`and Appeal Board (the “Board” or “TTAB”) to reopen the deadline for Petitioner to file its Motion
`
`for Summary Judgment. Good cause exists for this request for the reasons that follow:
`
`Petitioner Badawi filed this cancellation action on November 22, 2019, seeking to cancel
`
`Registration No. 5665928. On the same date, the Board issued the Notice of Institution listing pre-
`
`trial and trial deadlines for the case.
`
`Based on those dates, Badawi, through its counsel, entered the filing date into the law firm” s
`
`automatic docketing system, thereby generating all the pretrial and trial deadlines in the case, along
`
`with reminders. These dates were duly displayed so that they could be reviewed by those regularly
`
`checking the docket. See, Declaration of Attorney Ava K. Doppelt attached hereto as Exhibit 1.
`
`The Declaration of Attorney Doppelt, the responsible attorney for Petitioner in this case,
`
`describes in detail the manner in which the deadlines for matters, including cancellation actions
`
`such as this one, are generated and recorded by the firm’s electronic software docketing system.
`
`

`

`As set forth therein, the algorithm for generating the deadlines for summary judgment
`
`motions in TTAB matters was somehow set up incorrectly sometime during the twenty years the
`
`system has been in use. As a result the system generates an incorrect date for filing summary
`
`judgment motions in TTAB cases. The error affects everyone in the firm, because the docketing
`
`rules are firm-wide. Apparently the problem had never been discovered previously and corrected
`
`because no one had filed a motion for summary judgment in a TTAB matter, or at least none were
`
`filed at a time after the actual deadline for such motions specified in the TMEP rules. See Decl.
`
`1115.
`
`As a result of the docketing error, Petitioner’s motion for summary judgment in this case
`
`was attempted to be filed after the deadline for summary judgment motions had already passed.
`
`See Exhibit 2. According to the rule, the motion had to be filed before the day of the deadline for
`
`pretrial disclosures for the first testimony period. 37 CFR § 2.127(e)(1). In this case that deadline
`
`would therefore have been October 7, 2020. Instead, the docketing system generated a deadline of
`
`October 21, 2020, which is the date on which Badawi’s counsel tried to file.
`
`Because the reason for the late filing of Petitioner’s summary judgment motion was the
`
`result of a long—ago programming error, causing the generation of an incorrect — and overdue —
`
`deadline for filing summary judgment motions in TTAB proceedings, it constitutes “excusable
`
`neglect.” Thus there is good cause to reopen the time for filing summary judgement motions in
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`this case, and allow Petitioner’s motion for summary judgment to be filed.
`
`WHEREFORE, Petitioner asks that its motion to reopen the time to file its summary
`
`judgment motion be granted, and that
`
`it be given a new deadline by which to file its
`
`

`

`summary judgment motion. Alternatively it requests that the copy of the summary judgment
`
`motion attached as Exhibit J to the Declaration be accepted as the filed motion.
`
`Dated: October 23, 2020
`
`Respectfully submitted,
`
`fAva K. Doppelt/
`Ava K. Doppelt, Esq.
`Allen, Dyer, Doppelt
`& Gilchrist, PA.
`255 South Orange Avenue
`Orlando, Florida 32801
`Telephone: (407) 841-2330
`Facsimile: (407) 841-2343
`Email: adoppelt@allendyer.com
`
`Altameyfar Petitioner
`Badmui A viariou, LLC
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on October 23, 2020, a cepy of the foregoing was
`served via e-mail transmission on the following:
`
`Todd Wengrovsky, Esq. - TW4823
`Law Offices of Todd Wengrovsky, PLLC.
`285 Southfield Road, Box 585
`Calverton, NY 1 1933
`
`Attorneyfor Registrant
`AfafA viation, LLC
`
`
`fMichel Rodriguez!
`Michel Rodriguez
`
`

`

`Exhibit 1
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Registration No. 5,665,923
`for the Mark AFAF AVIATION & Design
`
`Badawi Aviation, LLC,
`
`Petitioner,
`
`vs.
`
`Afaf Aviation, LLC,
`
`Respondent.
`
`l'
`
`Cancellation No: 92072819
`
`DECLARATION OF AVA K. DOPPEL‘I‘ IN SUPPORT OF PETITIONER BADAWI
`
`AVIATION, LLC’S MOTION TO REOPEN TIME FOR FILING SUMMARY
`
`w
`
`Ava K. Doppelt hereby declares and states as follows:
`
`1.
`
`I am a shareholder in the intellectual property law firm Allen, Dyer, Doppelt d:
`
`Gilchrist, P.A., and I am the lawyer representing the Petitioner in this case.
`
`2.
`
`I have practiced at my firm, primarily in the areas of trademark and copyright law,
`
`for over thirty-seven years. During that time I have worked on and directed a significant number
`
`of trademark matters, including both oppositions and cancellations before the Trademark Trial and
`
`Appeal Board, for a wide array of clients ranging from individuals to Fortune 100 companies.
`
`3.
`
`I am a Phi Beta Kappa graduate of Northwestern University and the New York
`
`UniVersity School of Law.
`
`I am a member in good standing of both the New York and Florida
`
`Bars, and am certified in intellectual property law by the Florida Bar.
`
`4.
`
`I have written and spoken extensively on numerous trademark-related topics over
`
`the years, have taught trademark law at Barry University School of Law, and have been qualified
`
`as an expert witness.
`
`

`

`5.
`
`When we file or receive a matter filed in the Trademark Trial and Appeal Board
`
`such as an opposition or cancellation action, I ask the trademark paralegal who has worked with
`
`our firm for fourteen years to immediately docket it in our firm’s electronic trademark docketing
`
`system. That system is a component of our larger firm—wide integrated practice management
`
`system called AIM, Attorney’s Information Manager, which is a part of Perfect Law All-In-One
`
`Software, a product developed by Executive Data Systems, Inc. (See Exhibit A).
`
`6.
`
`When our firm first began using this system in 2000 for docketing (it dockets all
`
`matters, including trademarks, copyrights, patents, litigation and other due dates), the developer
`
`worked with us to create certain “rules” for the docketing of deadlines. For instance, if our client
`
`is served with a lawsuit in our local state circuit court, when we enter the date of service into the
`
`matter set up for that case, the rules, or algorithm, we created will automatically generate the
`
`deadline date for filing the answer. This is based on the fact that we created these rules to reflect
`
`any deadlines measured by time (e.g., a certain number of days from a particular event). Thus, if
`
`our court requires that an answer to a complaint be filed within twenty days, as it does, then the
`
`system will generate a date twenty days from service and display that date as the deadline for
`
`response.
`
`7.
`
`It works the same way in TTAB matters. In this case we filed the Petition to Cancel
`
`on November 22, 2019. On the same date we received the Board’s Notice of Initiation, which sets
`
`forth the deadlines for pretrial and trial.
`
`8.
`
`One deadline that is not specified in the Notice is the deadline for filing dispositive
`
`motions such as for summary judgment.
`
`9.
`
`As soon as we receive the Notice, we (our paralegals) type into the system the date
`
`of that Notice, and the system, again, automatically generates all the pretrial and trial dates. These
`
`

`

`dates are based on the rules that were created for our system twenty years ago, although we make
`
`modifications to reflect any changes in the court rules or administrative deadline rules (including
`
`those of the TTAB).
`
`10.
`
`Likewise, we re—calibrate the deadlines if there is a change in a particular case. That
`
`happened in this case because we filed a motion to compel, which suspended the deadlines. After
`
`the motion was resolved, the Board issued a new scheduling order (on July 8, 2020), and when we
`
`entered the new date from that order all the other deadlines were automatically re-calculated.
`
`11.
`
`Exhibit B attached shows a screenshot of the remaining AIM docket for this case,
`
`beginning with the deadline for the summary judgement motion.
`
`It displays the deadline as
`
`October 21, 2020, which is the date we tried to file our motion.
`
`12.
`
`Our office planned to prepare and file our motion for summary judgment by this
`
`date. We also advised the client of this deadline.
`
`13.
`
`That date was generated by our system’s docketing rules for TTAB matters, shown
`
`in Exhibit C. This list of dates shows that the deadline for dispositive motions is fifteen days from
`
`the date the pretrial disclosures are due.
`
`14.
`
`Unfortunately, as it turns out, this is not the correct date. And unfortunately, all
`
`TTAB matters in our office show an incorrect deadline for summary judgment motions, because
`
`all use the same rule to generate the deadlines. See, e.g., Exhibits D-I attached (client names are
`
`redacted).
`
`15.
`
`Apparently, we never discovered this error until now, because we don’t often file
`
`motions for summary judgment in TTAB cases.
`
`I don’t recall that I ever have previously done so.
`
`

`

`16.
`
`My staff and I are devastated by this occurrence. We rely every day on the
`
`deadlines generated by our docketing system, and we must feel confident that those deadlines are
`
`accurate. It would not be practical to check the rule for every deadline “just in case.”
`
`17.
`
`To my knowledge, this is the first time our system failed us by automatically
`
`generating an incorrect deadline and causing us to miss the actual deadline.
`
`18.
`
`I should have reviewed the summary judgment rules to verify that our docketing
`
`system was correct, although by the time I would have checked, the actual deadline would likely
`
`have passed. But in the twenty years 1 have used AIM for docketing, I have come to rely on its
`
`accuracy.
`
`19.
`
`I believe that the circumstances here constitute excusable neglect and good cause
`
`sufficient to allow the reopening of time to file the motion.
`
`In what is perhaps an excess of
`
`optimism, I am enclosing a copy of our motion as Exhibit .1.
`
`20.
`
`When we tried to file electronically on October 21, 2021, we received a notice that
`
`the motion was untimely. See Exhibit K.
`
`21.
`
`This was the first time we had any inkling that cur motion was overdue. We
`
`emailed and Fed Ex’d the motion to the Board on the same day, but we fervently hope that we will
`
`be permitted to file it properly, within the additional time allowed to us by the Board.
`
`I declare under penalty of perjury under the laws of the United States that the foregoing is
`
`true and correct to the best of my knowledge.
`
`Dated; October 23, 2020
`
`
`
` Ava K. Doppelt
`
`

`

`EXHIBIT A
`
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`EXHIBIT J
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`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Registration No. 5,665,923
`for the Mark AFAF AVIATION 8; Design
`
`Badawi Aviation. LLC,
`
`Petitioner,
`
`vs.
`
`Afaf‘Aviation, LLC,
`
`Respondent.
`
`l
`
`Cancellation No: 920728l9
`
`PETITIONER BA DAW] AVIATION, LLC’S MOTION FOR SUMMARY JUDGMENT
`
`Badawi Aviation. LLC hereby moves For summary judgment cancelling registration
`
`number 5,665,928. registered by Afat‘ Aviation, LLC, because the evidence incontrovertibly
`
`establishes that Badawi used its mark in commerce well before Afaf. Any purported evidence to
`
`the contrary created by Afaf for this proceeding does not withstand scrutiny, and as such. cannot
`
`establish a genuine issue of material fact.
`
`I.
`
`A.
`
`Background
`
`The Undisputed Facts Support Cancellation.
`
`Badawi and Afaf adopted and use virtually identical service marks to identify their
`
`respective services:
`
`
`
`Badawi uses its mark to promote. offer and sell Badawi's aviation-related services,
`
`including aircraft rental and leasing services and flight training services. Declaration of Monzer
`
`l
`
`

`

`Badawi, attached as Exhibit “A”. (“Badawi Dec”) 1i4. Likewise, Afaf uses its mark to promote
`
`and sell its OWH flight training services. See Deposition ofMohcine Afaftaken on July 28, 2020,
`
`(“Afaf Depo") p. 40, attached as Exhibit “B“.
`
`Badawi first used its mark in connection with its services at least as early as August of'
`
`2014, and it has used the mark, consistently and continuously, ever since. Badawi Dec. 1] 3. Over
`
`the past six years, consumers of aviation—related services haVe ceme to recognize Badawi’s mark
`
`and associate it with Badawi. Badawi Dec. 1i 7. Badawi has expended time, effort and resources
`
`to achieve this, prominently displaying its mark in all of' its marketing materials, including its
`
`website at http:/r'www.llightreadvaviationxomt’, as well as on various social media platforms.
`
`Badawi Dec. fil 5 . Badawi also features signs showing its mark on both the interior and exterior of
`
`its building, which is widely viewed by visitors at the airport where Badawi's business is based.
`
`Badawi Dec. 1] 6.
`
`in November of 2019, Mr. Badawi, Badawi's owner, received an email from Mohcine
`
`Afar, accusing Badawi of‘ stealing his company’s logo and threatening to sue on the basis of his
`
`trademark registration. Badawi Dec. 1] 9. Afaf Depo, Ex. 2., attached as Exhibit “C" (confidential).
`
`Mr. Badawi denied he had copied AFai', but upon seeing that Afaf was using and had registered a
`
`mark virtually identical to his, he filed this action seeking to cancel Afaf’s registration on the basis
`
`of priority and likelihood of confusion. The following information appears on Afaf’s registration
`
`(Afai‘Depo, Ex. [0), attached as Exhibit “D”:
`
`Mark
`
`App]
`Date
`
`Reg No.
`
`Reg.
`Date
`
`Int’ l.
`Class
`
`Goods or
`Services
`
`Date of Date of 1“
`I" use
`use in
`commerce
`
`instruction
`
`#3FF
`
`-. ”I. a 1”;er
`
`5,665928
`
`January
`
`29, 20W
`
`Airplane
`
`flight
`
`January
`
`4,2017
`
`January 4,
`
`20!?
`
`

`

`When Mr. At‘af filed his application to register the Afaf mark in ZOIS. he swore under
`
`penalty of'perjury that Afaffirst used the mark For airplane flight instruction, and first used it in
`
`commerce for those services, on January 4, 20 l 7. Afaf Depo, Ex.
`
`I l, attached as Exhibit “E". And
`
`in his November 2019 demand to Mr. Badawi, he repeated those first use dates, claiming that the
`
`Afai‘ mark was first used in 20”. Badawi Dec.1l 9, Afaf‘ Depo, Ex. 2.
`
`'
`
`Discovery in this action is now completed, and all the competent undisputed evidence
`
`requires that Afan registration be cancelled. There is no dispute that the two parties‘ marks look
`
`and feel the same, are used for exactly the same type of services, and are aimed at the same
`
`audience. They are, therefore, confusingly similar, and likely to be confu3ed with one another.
`
`The only question in this case is priority which party used its mark first? Whichever party can
`
`establish it was first must prevail.
`
`Badawi’s evidence as to its first use of its mark in 2014 is undisputed. See, e.g., Badawi
`
`Dec.1] 3; Afaf Depo, Ex. 2. Unless Afat‘s evidence of prior trademark use is sufficient to create a
`
`genuine issue of fact, which it is not, Badawi’s summary judgment motion should be granted and
`
`Afaf’s registration cancelled. Until Badawi filed this action stating that it first used its mark in
`
`20M, Afaf had sworn and reaffirmed that its mark had not been used until 20 l 7, well after Badawi
`
`began using its own mark. AFai‘Depo, Ex. I 1. After the cancellation petition was filed, for the first
`
`time, Afaf’ asserted an earlier first use date — not only earlier than Mr. Afaf had previously sworn
`
`to, but conveniently one year earlier than Badawi. 2013- Afai'Depo, PF. 49-50. Ex.
`
`ID-l '- Yet
`
`Mr. Afai‘s own deposition testimony establishes that in 20l3 he was a college student and not
`
`
`
`‘ Shortly after he filed the application for the AFAF AVIATION mark in August onO 13, Mr. Afaffilcd an application
`in his own name for AFAFAIR using the identical airplane design. See Application Serial No. 88I073,247, for the
`294
`_
`as" FAFruo
`
`in the application he swore that he first used the mark for those
`, for charter flying services.
`mark
`services on April 30, ZDI 3. Mr. At‘ai‘abandoned this application in July of2019 after failing to respond to an Office
`Action. Afaf Depo, Exhibits tel-l6.
`
`

`

`certified to give flying lessons. Afaf Depo, pp. 42-44. He admitted that he did not graduate from
`
`college until 2015, and did not receive his first flight certification until 2016. Afaf Depo, pp. 40-
`
`41. He had no business of his own that could have provided flight instruction, and no business that
`
`served as a predecessor to Afaf’s business. At best, he may have helped secure students for
`
`someone else '5 flight school. Afaf Depo, pp. 41-42. It is impossible for Mr. Afaf or his company
`
`to have offered the services shown on the registration prior to the time Mr. Afaf was qualified to
`
`offer those services.
`
`It would have been illegal for him to have done so.
`
`B.
`
`The Evidence Purporting to Demonstrate AfaPs Prior Use of The Mark Is Not
`Believable and Should Be Given No Consideration.
`
`In answering the petition, Afaf filed only a general denial.
`
`In responding to the requests
`
`for production (Afaf Depo, Ex. 9), attached as Exhibit “F”, Mr. Afaf, again tardily, submitted an
`
`unswom and rambling “letter” dated January 26, 2020 addressed “To whom it may concern,” in
`
`which he claimed to describe his creation and use of the Afaf mark. Afaf Depo, Ex. 22, attached
`
`as Exhibit “G”. He included six letters signed by from friends or acquaintances, all containing
`
`identical information, to back up his story that he created the mark in March of 2013 and that he
`
`formed his company in 2017 (they all remembered the exact month and year!).
`
`At least two of them admitted that Mr. Afaf himself wrote the letters and simply asked
`
`them to sign. Deposition of Seung Suh taken August 10, 2020 (“Suh Depo”), pp. 17—18, attached
`
`as Exhibit “H”; and Deposition of Marcris Buchanan taken on August 20, 2020 (“Buchanan
`
`Depo”), pp. 18-20, attached as Exhibit “1”. Mr. Afaf also submitted photographs purporting to
`
`show his “drafts” of the mark, which they were supposedly signed and dated by Mr. Afaf in 2013.
`
`Afaf Depo, Ex. 22. Finally, he submitted Facebook evidence purporting to show his use of the
`
`mark going back to 2013. Afaf Depo, Ex. 22. None of this evidence should be given any credence.
`
`Apart from its self-service nature,
`
`it
`
`is internally inconsistent, unverifiable, unreliable, and
`
`

`

`apparently created after the fact by Mr. Afaf himself, or by his friends at his request and with his
`
`personal assistance. This is not evidence that can create a genuine issue of material fact sufficient
`
`to refute the uncontested facts supporting Badawi’s position.
`
`Every bit of evidence provided by Afaf in this case is unreliable on its face and need not
`
`be countenanced. Moreover, almost all of these items of evidence, even if they could be shown to
`
`be legitimate, are irrelevant to the issue of trademark priority, since they do not establish, or even
`
`address, Afaf’s first trademark use of the mark for the services shown on the registration.
`
`Afaf’s Alleged Evidence of Prior Use
`
`Reasons It Should Carry No Weight
`
`(includes
`1. Letter of Mohcine Afaf
`
`followin )
`
`2. “Drafts” of logo
`3. Letter of Hoeton Gabbidon
`
`not
`all Self-serving,
`responsive
`unreliable, internall
`inconsistent
`Refuted b sworn testimon of others
`Inconsistent with his deosition testimon
`
`to
`
`request,
`
`
`
`4. Letter of Marcris Buchanan
`
`Virtuall
`
`identical to other letters
`
`5. Letter of Badreddine Messeleka
`
`Virtuall
`
`identical to other letters
`
`6. Letter of Bilal Alsa edi
`7. Letter of William Daza Parra
`
`8. Letter of Seun; Suh
`9. Facebook
`'
`10. Plctures of busmess card
`
`Virtuall
`Virtuall
`
`identical to other letters unswom)
`identical to other letters
`
`identical to other letters
`Virtuall
`Private; doesn’t show use
`Doesn’t show use
`
`To test this evidence, Badawi scheduled the deposition of Mr. Afaf, and served third-party
`
`subpoenas duces tecum on the six others whose letters were included with Afaf‘s letter. Of those,
`
`one ignored the subpoena altogether, and the others appeared by Zoom or phone. None complied
`
`with the duces tecum requests.
`
`The witnesses’ deposition testimony was self-contradictory, uncooperative and unreliable.
`
`They did not support either Afaf’ s timeline as to the first use of the mark for flight training services,
`
`or the story of the mark’s creation. What emerges is that Mr. Afaf substantially or wholly prepared
`
`all the letters himself, asked his friends and acquaintances to sign them and then attempted to use
`
`them to buttress his story.
`
`

`

`II.
`
`Legal Standard for Summary Judgment
`
`Summary judgment is to be regarded as a salutary method of disposition designed to secure
`
`the just, speedy, and inexpensive determination of every action. Sweats Fashions, Inc. v. Pannill
`
`Knitting C0,, 833 F.2d 1560, 1562 (Fed. Cir. 1987).
`
`It
`
`is appropriate when the pleadings,
`
`depositions, answers to interrogatories, and admissions on file, together with any affidavits show
`
`that there is no genuine issue as to any material fact and that the moving party is entitled to
`
`judgment as a matter of law. Celotex Corp. v. Catrett, 477 US. 317, 322 (1986); Fed. R. Civ. P.
`
`56(c); Pure Gold, Inc., 739 F.2d at 626. A dispute about a material fact is genuine only “if
`
`the evidence is such that a reasonable jury could return a verdict for the nonmoving party.”
`
`Anderson v. Liberty Lobby, Inc, 477 U.S. 242, 248 (1986); TBMP §528.01.
`
`A non-movant may not rest on its conclusory pleadings or mere allegations but must
`
`present an evidentiary basis for its opposition to the motion. Pure Gold, Inc., 739 F.2d at 627.
`
`Thus, one cannot overcome a motion for summary judgment merely by contradicting the movant’s
`
`facts.
`
`III.
`
`Argument
`
`A.
`
`Afaf Failed to Respond Timely to the Requests for Admission with No Excuse, and
`thus the Requests are Deemed Admitted.
`
`Badawi served Afaf with requests for admissions on February 10, 2020. Afaf Depo, Ex. 8,
`
`attached as Exhibit “J”. There were nine requests:
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Admit that you did not use Respondent’s Mark prior to August 2014.
`
`Admit that you did not use Respondent’s Mark prior to 2015.
`
`Admit that you did not use Respondent’s Mark prior to 2016.
`
`Admit that you did not use Respondent’s Mark prior to 2017.
`
`Admit that you did not create the design for Respondent’s Mark.
`
`

`

`6.
`
`7.
`
`8.
`
`9.
`
`Admit that you were aware of Petitioner’s Mark prior to 2017.
`
`Admit that you were aware of Petitioner prior to 2017.
`
`Admit that Respondent’s Mark resembles Petitioner’s Mark.
`
`Admit that the design in Respondent’s Mark is substantially the same as the design
`
`in Petitioner’s Mark.
`
`Id.
`
`Despite repeated emails asking for a response, Badawi received no response to these
`
`requests until April 7, 2020, almost a month late. Afaf Depo, Ex. 17, attached as Exhibit “K”.
`
`Afaf never sought an extension nor provided any excuse. Because the responses were served after
`
`the 30-day deadline, the facts in the requests are deemed to be admitted. Fed. R. Civ. P 36(a)(3);
`
`37 CPR § 2.120(a)(3); TMEP 407.03(a) “The failure to timely respond to Requests for
`
`Admissions results in automatic admission of the matters requested. Fed. R. Civ. P. 36(a)(3). ‘No
`
`motion to establish admissions is needed because Federal Rule of Civil Procedure 36(a) is self-
`
`executing’... Once admitted, the matter is conclusively established ‘unless the court on motion,
`
`permits the admission to be withdrawn or admitted.’ Fed. R. Civ. P. 36(b).” (Emphasis is original;
`
`citations omitted), Doctors Medical Center ofModesto, Inc. v. Principal Life Insurance Company,
`
`201 1 US. Dist. LEXIS 26885 *4 (ED. Cal. 201 l) (for the standard; but court allowed responses
`
`on these facts).
`
`In Armida Winery, Inc. v. Cuban, LLC, Armida claimed priority over PSI’S (Cuban’s
`
`predecessor in interest) registration filing date in 2012. 2018 TTAB LEXIS 295, *29 (TTAB
`
`2018). PSI failed to timely respond to Armida’s request for admissions, and thus was deemed to
`
`have admitted that its earliest date of use was not on or before 2016. Id. at *23. The Board found
`
`that neither date was prior to Armida’s first use in 2001. Id. at *29. Accordingly, the Board found
`
`

`

`“no genuine dispute of material fact that Armida has shown priority of use for its mark .
`
`.
`
`. .” Id.
`
`at 31.
`
`Here, because Afaf responded after the de