Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1085468
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`Filing date:
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`09/30/2020
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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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`Party
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`Correspondence
`Address
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`92074266
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`Plaintiff
`Peja Inc.
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`STEVEN M FORTE
`SMITH & HOPEN PA
`180 PINE AVENUE NORTH
`OLDSMAR, FL 34677
`UNITED STATES
`Primary Email: trademarks@smithhopen.com
`Secondary Email(s): steven.forte@smithhopen.com
`813-925-8505
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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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`Motion to Quash
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`Paul Murty
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`paul.murty@smithhopen.com, trademarks@smithhopen.com
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`/paul murty/
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`09/30/2020
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`Attachments
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`3567.02 Motion to Quash Notice of Deposition.pdf(146407 bytes )
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`

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`Docket No. 3567.02
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`TRADEMARKS
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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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`Peja Inc.,
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`In the matter of Registration No. 5,575,238
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`
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`A Florida Profit Corporation
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`Petitioner
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`
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`Mad Italian Pizza LLC,
` A Florida Limited Liability Company
`Respondent
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`v.
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`
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`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`
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`For the mark,
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`Date registered October 2, 2018
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`Cancellation No.: 92074266
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`MOTION TO QUASH RESPONDENT’S NOTICE OF DEPOSITION
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`
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`Pursuant to the provisions of TBMP § 521 and Rule 30 of the Federal Rules of Civil
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`Procedure, Petitioner Peja, Inc. hereby moves the Board for an order granting its Motion to Quash
`Respondent’s Notice of Deposition.
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`I.
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`ARGUMENT
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`TBMP § 521 provides that notices of deposition must be reasonable in their requirements
`for the deposed party. While notices are typically seen to be reasonable with only a few days’ notice,
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`the circumstances of preparing for, attending, and taking deposition testimony have become more
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`challenging under the circumstances. Many offices remain closed, close contact between
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`individuals is actively discouraged, and technological challenges exist for parties attempting to
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`conduct typical business over video conference technologies. With that in mind, Petitioner
`respectfully requests the granting of this Motion to Quash Respondent’s Notice of Deposition.
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`1
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`Docket No. 3567.02
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`TRADEMARKS
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`Petitioner received the revised Notice from Respondent’s counsel on September 22, 2020,
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`indicating that the deposition of October 1, 2020 would take place via videoconference. No specific
`videoconference platform was noted in the Notice, and Petitioner first spoke to Respondent’s
`counsel regarding the Notice on September 25, 2020. On that date, Respondent’s counsel provided
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`contact information for the videoconference platform.
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`
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`During the same conversation, the parties began engaging in preliminary settlement
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`negotiations to discuss a potential resolution to the case. The parties spoke again on September 28,
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`2020, three days prior to the deposition date. During the September 28, 2020 telephone conference,
`Respondent’s counsel requested receipt of settlement terms by close of business on that same date,
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`and that receipt of such settlement terms would result in either a suspension of the instant
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`proceeding, an extension of time, or otherwise a postponement of the deposition date. Accordingly,
`it was Petitioner’s understanding that prioritizing the settlement negotiations would expedite the
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`resolution of the instant proceeding. On September 29, 2020, and again on September 30, 2020,
`Respondent’s counsel informed Petitioner of an apparent change in position, and of Respondent’s
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`refusal to extend deadlines (or engage in settlement negotiations) until after the discovery windows
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`close.
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`Moreover, Petitioner notes that it has been willing throughout the conversations to engage
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`in a deposition at a later date, whether via a postponement of the date mutually agreed-upon by both
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`sides, a suspension of the proceeding to engage in good faith settlement negotiations, an extension
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`of the discovery window, or any other vehicle acceptable to the parties and to the Board. Petitioner
`does not seek to remove Respondent’s ability to conduct discovery, but rather to participate in the
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`discovery window in a fair way to both parties.
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`
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`Accordingly, Petitioner believes that, under the circumstances, a notice period of four
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`business days to work through technological complexities for a videoconference deposition, and a
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`change in circumstances of two business days prior to the deposition date, represents an
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`unreasonable notice period under TBMP § 404.05 and Rule 30.
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`II.
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`CONCLUSION
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`Based on the timeline provided above, Petitioner hereby moves the Board for an order
`2
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`Docket No. 3567.02
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`TRADEMARKS
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`granting this Motion to Quash Respondent’s Notice of Deposition based on an unreasonable time
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`period under the circumstances, pursuant to TBMP § 404.05 and Rule 30.
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`Dated: September 30, 2020
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` By:
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`Very respectfully,
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`SMITH & HOPEN, P.A.
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`
`
`/Paul Murty/
`Paul Murty
`180 Pine Avenue North
`Oldsmar, Florida 34677
`(813) 925 – 8505 telephone
`(800) 726 – 1491 fax
`trademarks@smithhopen.com
`Attorneys for Petitioner
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`3
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`Docket No. 3567.02
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`TRADEMARKS
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`CERTIFICATE OF FILING AND SERVICE
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`The undersigned hereby certified that on September 30, 2020, I electronically filed this
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`document with the Board by using the ESTTA system and emailed a copy to Respondent’s counsel
`at the following contacts:
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`tmdocket@larsonpatentlaw.com
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`nathan@larsonpatentlaw.com
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`bill@larsonpatentlaw.com
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`By:
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`
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`/Paul Murty/
`Paul Murty
`180 Pine Avenue North
`Oldsmar, Florida 34677
`(813) 925 – 8505 telephone
`(800) 726 – 1491 fax
`trademarks@smithhopen.com
`Attorneys for Petitioner
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`4
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`Dated: September 30, 2020
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