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Estta1134075 05/16/2021 in the United States

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Estta1134075 05/16/2021 in the United States Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov ESTTA Tracking number: ESTTA1134075 Filing date: 05/16/2021 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91241468 Party Defendant Pier A Battery Park Associates, LLC Correspondence JOHN P BOSTANY Address THE BOSTANY LAW FIRM PLLC 3 WORLD FINANCIAL CENTER 24TH FLOOR NEW YORK, NY 10281 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected] 212-530-4400 Submission Opposition/Response to Motion Filer's Name Samantha B. Welborne Filer's email [email protected] Signature /SBW/ Date 05/16/2021 Attachments Opposition.5.15.21.pdf(254106 bytes ) Ex.1.Email.March 17.pdf(114359 bytes ) Ex.2.Initial.Disclosures.Amended.pdf(173808 bytes ) Ex.3.Amended.Resp.Interrog.8.28.20.pdf(167910 bytes ) Ex.4.Response RFAs.pdf(288490 bytes ) Ex.5.Response.4th.Interrogatories.3.8.21.pdf(166482 bytes ) Proof.Service.pdf(123680 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ----------------------------------------------------------x Casella Wines Pty Limited, Plaintiff-Opposer, Opposition No.91241468 - against – Pier A Battery Park Associates, LLC, Defendant-Applicant. ------------------------------------------------------------x OPPOSITION TO OPPOSER'S MOTION TO COMPEL Background After years of discovery and the matter is ripe for summary judgment, the Opposer is seeking to compel depositions of three individuals. Applicant has not identified any witnesses in support of its claims/defenses and the Board previously determined on Opposer’s prior motion that witnesses were not required. The topics Opposer claims it needs to explore in depositions have already been answered favorably to Opposer in Applicant’s responses, i.e. there have been no sales, advertising, contracts relating to the products that are the subject of the applications. Applicant explained that the genesis of its BLACKTAIL mark was “inspired by "Aeromarine" which was one of the first aviation organizations established during the early years of flight and shuttled adventure-seeking, Latin, Irish, and American bartending talent to Cuba during prohibition years”. See Doc. No. 4 (pp.8-9). 1 “The first location of the Applicant’s BLACKTAIL cocktail lounges was located on "Pier A" in downtown Manhattan, the precise location where the Aeromarine planes used to took off. Id. "The nickname/BackTail-came about through Harry Bruno, the company's resident promotional genius. It was he who suggested the tailfins of Aeromarine's meagre fleet be painted black-so they would be instantly recognisable from the ground". Id. “Hence the genesis of the Applicant’s mark is anchored to a theme that couldn’t be further from the Kangaroo inspired Australian Opposer’s name”. Id. The Board denied Opposer’s request to require Applicant to use witnesses. “As Pier A has stated that it does not intend to rely on any witnesses, there are none to disclose and nothing to compel”. Dec. 19, 2019 Board Order, Doc. No. 33. See also, Doc. No. 23 Order April 29, 2019 denying motions to compel Applicant to accept a revised Protective Order, denying Opposer’s request for sanctions based upon its view that Applicant was required to have a second initial conference with it1; Doc. No. 63, January 29, 2021, denying Opposer’s motions to dismiss counterclaim. Opposer was aware of the witnesses it now seeks to compel depositions of as early as July 9, 2018. See Doc. No. 4 (p. 9). Casella flatly misrepresents that it had a stipulation with Applicant to postpone the depositions. This is untrue. Pier A’s objection is substantive, and while it mentions the pandemic at the end of the email, the primary objection explains that deposing witnesses to re- affirm answers already provided in other discovery serves no purpose other than to delay and escalate costs. Furthermore, Paul Lamas is the only one of the 3 witnesses that certified Applicant’s bona fide “intent to use” in 2017 Applications as a Member of the Applicant. Opposer fails to explain why it waited over 3 years to attempt to depose him.2 1 On May 16, 2019, the Board held a discovery conference with the parties and discovered that Opposer’s sole issue that it claimed was not fully discussed during the parties’ initial conference was the Opposer’s request for a revised protective order that Applicant already advised it would not agree to at the initial discovery conference. 2 Applicant continued its efforts to persuade Opposer to discontinue its pursuit of depositions in email and phone call on April 12 and 13, 2021. Yet the following day, April 14, Opposer claimed that Applicant was non-responsive. 2 With respect to the other two individuals that were not listed in response to Interrogatories, 14 Months ago on March 17, 2020, Applicant conveyed its objections to depositions: “We did not identify any witnesses in support of our claims or defenses. You already moved to compel witnesses and the Board disagreed with your views. This is an intent to use application and the Applicant answered all of your questions about its intent to use the mark in the future on the goods at issue. Your accusation that it is not now using the mark is academic.” See copy of complete email annexed as Exhibit 1. ARGUMENT Applicant has explained and provided both interrogatory responses and documentary evidence to prove how it selected the Blacktail mark. Opposer does not and cannot deny that all of the factors that will be before the Board on determination of this matter have already been provided. This is an "intent to use" application and Applicant certified that it has not made any use in commerce or advertised it. Copies of Pier A’s initial disclosures, interrogatory responses and responses to requests for admission are respectfully annexed as Exhibits 2, 3, and 4. Opposer's Motion to Compel testimony about Applicant's uses in commerce, advertising and document collection efforts are all frivolous as there can be no testimony about advertising and sales that do not exist. The remainder of Opposer's deposition topics were all provided in Applicant's discovery responses. Applicant does not plan on departing from its prior responses and the additional discovery that Opposer seeks and depositions that Casella waited until the week before discovery closed to seek to move to compel, are plainly designed to harass the Applicant, and drive up the costs of this case which should be determined on its merits. The Board and the Federal Circuit Court of Appeals have repeatedly advised that matters should be determined on their merits. It is plainly Opposer's view, that it cannot possibly persuade the Board, that its discount Yellowtail brand wine can be confused with the products that Blacktail seeks to trademark Blacktail. 3 Casella does not assert that Pier A has control over the three persons it is seeking to depose. Pier A did not identify any witnesses and only Paul Lamas, a member of Pier A Battery Park Associates LLC certified the Interrogatories. Paul Lamas is running multiple restaurants in the downtown section of New York City and it would be an enormous burden for Mr. Lamas to appear for a deposition in a time when his restaurants are struggling to survive. The Applicant’s bona fide intention to use the mark is made clear in its interrogatory responses and additional evidence submitted in TTAB Vue Doc. 4. In determining likelihood of confusion, the Trademark Trial and Appeal Board (TTAB) is guided by the DuPont Factors, a list of thirteen factors set forth in in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (CCPA 1973). At the April 19, 2021 Conference Applicant requested permission to move for summary judgment.3 It is respectfully submitted that it is Applicant’s likelihood of success on the merits that is precipitating Opposer’s escalated efforts to harass the Applicant by taking multiple unnecessary depositions. It is plainly its plan to make this proceeding cost prohibitive for the Applicant or obtain an order requiring a witness that it knows cannot appear, so that it may avoid the matter being decided on its merits. Opposer seeks to compare the standard character mark BLACKTAIL" with the appearance of YELLOW TAIL. It is respectfully submitted that the Opposer has assumed that a dissection of these two composite marks will take place in order to reach the conclusion that the appearance alone will be sufficient to sustain its complaint. This is contrary to bedrock controlling precedent. First the common portion of the composite mark “tail” is insufficient to prevail on the appearance factor. See e.g. Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1358, 56 U.S.P.Q.2d 1351, 1354 (Fed. Cir. 2000)(the “ultimate conclusion of similarity or dissimilarity of the marks must rest on consideration of the marks in their entirety”); In re National Data Corp., 753 F.2d 3 Pier A agreed not to file any motion for summary judgment until the Interlocutory Attorney determined whether we had to request leave first and we were provided with the determination in the April 22, 2021 Order. 4 1056, 1058, 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985) (“[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark.”). Further, since the marks do not have the identical sight and sound. Similarity of marks is established by “comparing their “sight, sound, and meaning”. Continental Grain Co. v. Central Soya Co., Inc., 1995 WL 649500, at *1 (Fed. Cir.
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