1262 (LGS) – Joint Adjournment Request Dear Judge Subramanian: This firm represents Plaintiff, Solid 21, Inc., in the above referenced action.

Counsel for Defendants consents to this request as well as to either proposal for moving forward set forth below.

While the Parties are amenable to this acceleration, it is not either side’s preference, as the preparation time for oral argument on all open motions would be very short.

This adjournment is preferred by the Parties but comes with its own set of concerns, as the Hearing would then be perilously close to certain pre-trial submission dates.

We appreciate the Court’s attention to this request and can be available for a call to discuss the proposed scenarios at the Court’s earliest convenience.

Thus "[t]he question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment."

As the controversy is justiciable, the Court elects to exercise its discretion to accept jurisdiction under the Declaratory Judgment Act.

A declaratory judgment on the trademark issue would finalize the controversy and offer plaintiff and its customers relief from future uncertainty.

They share issues of originality, sources of discovery, likelihood of confusion, and resulting damages.

On the other hand, the prospect that either issue (trade dress or trademark) will separately lose significance is a hope too insubstantial to justify its dismissal on the present record.

Additionally, by Monday, August 21, 2023, at 5:00 p.m., the parties are hereby ORDERED to file on ECF a joint letter updating the Court on the status of the case.

A brief statement of the nature of the case and/or the principal defenses thereto; A brief explanation of why jurisdiction and venue lie in this Court.

A statement of whether the parties have discussed the use of alternate dispute resolution mechanisms and indicating whether the parties believe that (a) a settlement conference before a Magistrate Judge; (b) participation in the District’s Mediation Program; and/or (c) retention of a privately retained mediator would be appropriate and, if so, when in the case (e.g., within the next 60 days, after the deposition of plaintiff is completed, after the close of fact discovery, etc.) the use of such a mechanism would be appropriate;

If this case has been settled or otherwise terminated, counsel are not required to submit such letter or to appear, provided that a stipulation of discontinuance, voluntary dismissal, or other proof of termination is filed on the docket prior to the joint letter submission deadline, using the appropriate ECF Filing Event.

Requests for extensions or adjournment may be made only by letter-motion filed on ECF, and must be received at least 48 hours before the deadline or scheduled appearance, absent compelling circumstances.

The request to extend time to oppose is granted until 08/19/2023 on behalf of potential opposer BARR Laboratories, Inc..

The request to extend time to oppose is granted until 08/19/2023 on behalf of potential opposer BARR Laboratories, Inc..

The request to extend time to oppose is granted until 08/19/2023 on behalf of potential opposer BARR Laboratories, Inc..

First, none of Egenera’s precedent considers Williamson.

Cisco identified none in its brief, nor when pressed at oral argument.

Trademark/Unfair Competition To prove trademark infringement under the Lanham Act, a plaintiff must demonstrate that “(1) it has a valid mark that is entitled to protection and that (2) the defendant’s actions are likely to cause confusion with that mark.” Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74, 84 (2d Cir. 2020) (internal quotations and alterations omitted).

“In assessing similarity, courts look to the overall impression created by the logos and the context in which they are found and consider the totality of factors that could cause confusion among prospective purchasers.” Gruner, 991 F.2d at 1078; accord Flushing Bank v. Green Dot Corp., 138 F. Supp.

“The Lanham Act provides that when a party ‘uses the words constituting [a registered] mark in a purely descriptive sense, this use may qualify as permissible fair use.’” Tiffany & Co., 971 F.3d at 92 (quoting Kelly-Brown v. Winfrey, 717 F.3d 295, 308 (2d Cir. 2013)).

Use “As a Mark” A defendant uses a term “as a mark” when it employs it “as a symbol to attract public attention,” Kelly-Brown, 717 F.3d at 306 (internal quotation marks omitted), or “to identify and distinguish ... goods [or services] ... and to indicate [their] source,” 15 U.S.C. § 1127.

Descriptive sense is often evident “[w]here a mark incorporates a term that is the only reasonably available means of describing a characteristic of another’s goods.” EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 65 (2d Cir. 2000).

1093550 Register Principal Registration date 06/20/1978 Word mark Design mark TICKS-OFF Application date 02/18/1977 Foreign priority date NONE Description of mark Goods/services NONE Class 005.

1594843 Register Principal Registration date 05/08/1990 Word mark Design mark OFF! Application date 09/11/1989 Foreign priority date NONE Description of mark Goods/services NONE Class 005.

1596048 Register Principal Registration date 05/15/1990 Application date 10/23/1989 Foreign priority date NONE Word mark Design mark Description of mark Goods/services OFF! DEEP WOODS NONE Class 005.

IT IS HEREBY ORDERED that any person subject to this Protective Order-including without limitation the Parties to this action (including their respective corporate parents, subsidiaries, affiliates, successors, and assigns), their attorneys, representatives, agents, experts and consultants, all third parties providing discovery in this action, and all other interested persons with notice of this Order who agree to be bound thereby-will adhere to the following terms, upon pain of appropriate sanction as the Court may determine: Designation and Use of Discovery Material

any other category of information that a Party reasonably believes in good faith should be, or which the Court determines shall be, accorded confidential status.

any non-party witness whom counsel for a Party in good faith believes may be called to testify at a deposition or hearing or the trial in this action, provided that such person has first executed a Non-Disclosure Agreement in the form appended hereto ;

any mediator or arbitrator that the Parties engage in connection with this action or that this Court appoints, provided such person has first executed a Non-Disclosure Agreement in the form appended hereto;

In either event, on or before the expiration of the aforesaid 60-day deadline, each recipient shall certify its return or destruction of such material by providing a written certification to the Producing Party that affirms such return or destruction and confirms that it has not retained any copies, abstracts, compilations, summaries, or other forms that reproduce or capture any of such Confidential or Highly Confidential Discovery Material.

A trial was scheduled for January 9, 2023, then adjourned to March 6, 2023; WHEREAS, on November 9, 2022, Plaintiff’s former counsel moved to withdraw from this action citing an irreconcilable breakdown in the attorney-client relationship.

On February 15, 2023, the Court adjourned sine die the jury trial scheduled for March 6, 2023; WHEREAS, new counsel for Plaintiff filed a notice of appearance on April 27, 2023;

ORDERED that by May 25, 2023, the parties shall file a joint letter addressing Defendants’ December 2, 2022, motion to strike Plaintiff’s jury demand and proposing a briefing schedule, if necessary.

A United States magistrate judge of this court is available to conduct all proceedings in this civil action (including a jury or nonjury trial) and to order the entry of a final judgment.

Reference Order Date: District Judge’s signature Printed name and title Note: Return this form to the clerk of court only if you are consenting to the exercise of jurisdiction by a United States magistrate judge.

WHEREAS, a telephonic hearing in this matter is scheduled for May 3, 2023, at 4:20 P.M.

It is hereby ORDERED that the telephonic hearing is adjourned to May 3, 2023, at 4:30 P.M.

DATED: May 2, 2023 New York, New York

WHEREAS, a telephonic show-cause hearing in this matter is scheduled for April 27, 2023, at 4:00 P.M.; WHEREAS, Plaintiff has been in touch with chambers telephonically and has communicated its intent to retain counsel by this Friday, April 28, 2023.

It is hereby

ORDERED that no later than May 1, 2023, Plaintiff shall show cause, by letter filed with the Court, why this action should not be dismissed for failure to prosecute pursuant to Federal Rule of Civil Procedure 41(b); it is further ORDERED that the telephonic show-cause hearing scheduled for April 27, 2023, at 4:00 P.M., is adjourned to May 3, 2023, at 4:20 P.M.

DATED: April 25, 2023 New York, New York

Dear Judge Schofield: Pursuant to the Court’s Order dated February 15, 2023, ECF No. 236, we have decided to not appear in the Action as counsel for plaintiff Solid 21, Inc.

The discussions only gained steam yesterday, so opposing counsel has made it clear that we should advise the Court that the case is not settled yet, and we will tell the Court if and when it is.

But the parties are working toward settlement, and we will continue to facilitate this while not appearing in this litigation.

We thank the Court for affording us the opportunity to review certain confidential materials in connection with our consideration of the representation, and confirm that all Protected Information will be immediately destroyed in accordance with Paragraph 13 of the Protective Order.

Defendants shall file such a status letter every three weeks thereafter until either the parties reach a settlement or discussions break down.