Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA979902 Filing date: 06/11/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91243206 Party Defendant Andre Rozier Correspondence FRANCIS JOHN CIARAMELLA Address RICK RUZ PLLC 300 SEVILLA AVENUE CORAL GABLES, FL 33134 UNITED STATES [email protected] 305-921-9326 Submission Opposition/Response to Motion Filer's Name Francis John Ciaramella, Esquire Filer's email [email protected] Signature /Francis John Ciaramella/ Date 06/11/2019 Attachments Motion in Opposition to Opposer Rule 56d Motion for Necessary Discov- ery.pdf(174888 bytes ) Exhibit A.pdf(5949976 bytes ) Exhibit B.pdf(103293 bytes ) Exhibit C.pdf(156497 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ____________________________ HAVOC BOXING PROMOTIONS LLC, Opposer, v. Opposition No. 91243206 ANDRE ROZIER, Applicant. ____________________________ APPLICANT’S MOTION IN OPPOSITION TO OPPOSER’S RULE 56(d) MOTION FOR NECESSARY DISCOVERY In response to Opposer’s Rule 56(d) Motion (“Motion”), filed by the Opposer on May 22, 2019, the Applicant hereby responds as follows. Here, the Opposer requests that the Board allow them to conduct additional discovery in order to respond fully to Applicant’s currently pending Motion for Summary Judgment filed by the Applicant on May 2, 2019. However, here, the Applicant has already produced substantial evidence to the Opposer documenting its prior use of a confusingly similar trademark, all before filing its Motion for Summary Judgment on May 2, 2019. Here, additional discovery under Rule 56(d) is not required in order to fully respond to Applicant’s Motion for Summary Judgment.1 BACKGROUND On June 5, 2017, Applicant filed Trademark Application Serial No. 87/475,869 (hereafter, “Applicant’s Mark”) for the mark HAVOC V ATHLETICS for use with “Clothing, namely, t-shirts, athletic uniforms, socks, hats, footwear, boxing trunks, coats, underwear, dress 1 It is also noted that the Opposer did file a Response to Applicant’s Motion for Summary Judgment alongside its Rule 56(d) Motion on May 22, 2019. Applicant filed a reply in support of its Motion for Summary Judgment on May 23, 2019. Page 1 of 17 shirts, suits, ties as clothing, shorts.” See 7 TTABVUE, Exhibit A, which consists of a copy of Applicant’s Trademark Application Serial No. 87/475,869 for the mark HAVOC V ATHLETICS; see also 7 TTABVUE, Declaration of Francis J. Ciaramella in Support of Registrant’s Motion to Compel Discovery (“Ciaramella Decl.”) ¶2. Applicant, ANDRE ROZIER, claims first use of the mark HAVOC in commerce at least as early as 1996. See 4 TTABVUE 3. See also 7 TTABVUE, Ciaramella Decl. ¶3. On August 23, 2018, the Opposer filed the instant Opposition No. 91243206 to oppose registration of Applicant’s Mark based upon priority and a likelihood of confusion with trademarks for HAVOC BOXING and H HAVOC BOXING owned by Opposer (hereafter, “Opposer’s Marks”). Please see 7 TTABVUE, Exhibit B, which consists of a copy of the Notice of Opposition. See also 7 TTABVUE, Ciaramella Decl. ¶4. On September 20, 2018, Applicant filed its Answer and Counterclaim with the Trademark Trial and Appeal Board, and counterclaimed that Opposer committed fraud on the USPTO, and that Applicant’s HAVOC mark had priority of use in commerce. Please see 7 TTABVUE, Exhibit C, which consists of a copy of the Answer and Counterclaim to the Notice of Opposition. See also 7 TTABVUE, Ciaramella Decl. ¶5. On January 30, 2019, the Opposer served Applicant with its First Requests for Production of Documents and First Set of Interrogatories, which were due no later than March 1, 2019. Please see 7 TTABVUE, Exhibits D and E, which consist of copies of the requests for production and interrogatories, respectively. See also 7 TTABVUE, Ciaramella Decl. ¶6. On March 1, 2019, counsel for the Applicant contacted Opposer to secure a one-week extension, making the deadline March 8, 2019. The same day, counsel for the Applicant memorialized this conversation in an email to counsel for the Opposer. Please see 7 TTABVUE, Exhibit F, which consists of a copy of said email. See also 7 TTABVUE, Ciaramella Decl. ¶7. Page 2 of 17 On March 8, 2019, Applicant timely served upon Opposer its responses to Opposer’s First Request for Production (with documents) and First Set of Interrogatories. Please see 7 TTABVUE, Exhibits G and H, which consist of copies of Applicant’s responses to Opposer’s requests for production (with documents) and interrogatories, respectively. See also 7 TTABVUE, Ciaramella Decl. ¶8. On March 28, 2019, Applicant served upon Opposer Applicant’s First Requests for Admissions, Applicant’s First Set of Interrogatories, and Applicant’s First Requests for Production of Documents (hereafter, “Applicant’s Discovery”), which were due no later than April 29, 2019. Please see 7 TTABVUE, Exhibits I, J, and K, which consists of copies of Applicant’s First Requests for Admission, Applicant’s First Set of Interrogatories, and Applicant’s First Requests for Production; see also 7 TTABVUE, Ciaramella Decl. ¶9. On Thursday, April 25, 2019, at approximately 6:05 pm EST, counsel for the Opposer contacted counsel for the Applicant via email and asked for a two-week extension to respond to Applicant’s Discovery, and to extend the discovery period by 90 days. Please see 7 TTABVUE, Exhibit L, which consists of a copy of Opposer’s counsel’s April 25, 2019 email; see also 7 TTABVUE, Ciaramella Decl. ¶10. After conferring with the Applicant beforehand, counsel for the Applicant informed counsel for the Opposer during a phone call on Monday, April 29, 2019 (the deadline for answering) that he would not be able to consent to an extension of time to respond to Applicant’s Discovery. Counsel for the Applicant made it clear to counsel for the Opposer during their phone call that after discussing the extension request with their client (i.e., the Applicant) that he would not be able to consent to an extension. During the same phone conversation, counsel for the Opposer asked whether Applicant had any further documents within its possession, custody, or control that were responsive to Opposer’s Discovery Requests. Counsel for the Applicant Page 3 of 17 informed Opposer that he just received some additional supplementary material and was preparing it for Opposer’s counsel. See 7 TTABVUE, Ciaramella Decl. ¶11. On May 1, 2019, Opposer served Applicant its second set of requests for production of documents, second set of interrogatories, and first requests for admission. Please see 7 TTABVUE, Exhibits M, N, and O, which consist of copies of Opposer’s First Requests for Admission, Opposer’s Second Set of Interrogatories, and Opposer’s Second Requests for Production, respectively; see also 7 TTABVUE, Ciaramella Decl. ¶12. On May 1, 2019, Applicant served upon the Opposer additional documents as previously discussed with Opposer’s counsel on April 29, 2019. Applicant’s counsel also reminded Opposer that its responses to Applicant’s Discovery were late. Please see 7 TTABVUE, Exhibit P, which consists of a copy of Applicant’s additional produced documents. Please see 7 TTABVUE, Exhibit Q, which consists of a copy of Applicant’s counsel’s May 1, 2019 email specifying which documents were responsive to which of Opposer’s requests, and reminding Opposer’s counsel that their responses to Applicant’s Discovery were still late (originally being due April 29, 2019); see also 7 TTABVUE, Ciaramella Decl. ¶13. The same day, on May 1, 2019, Applicant’s counsel reminded Opposer’s counsel that Applicant had never provided an extension to respond to Applicant’s Discovery. Please see 7 TTABVUE, Exhibit R, which consists of a copy of Applicant’s counsel’s May 1, 2019 email; see also 7 TTABVUE, Ciaramella Decl. ¶14. Later, on May 1, 2019, Opposer’s counsel emailed Applicant’s counsel and stated that Applicant should have informed Opposer that it was not going to provide Opposer with an extension earlier than the deadline they were due (i.e., on April 29, 2019 during counsels’ phone call), and that it would be excusable neglect on the part of the Opposer under Fed. R. Civ. P. 6(b)(1)(B) due to Applicant not providing an extension, despite the deadline being well-known in Page 4 of 17 advance. Please see 7 TTABVUE, Exhibit S, which consists of a copy of Opposer’s counsel’s May 1, 2019 email; see also 7 TTABVUE, Ciaramella Decl. ¶15. Under TBMP § 407.03(a), Fed. R. Civ. P. 6(b)(1)(B), and Trademark Rule 2.120(a)(3) “A matter is admitted unless, within 30 days after being served, the party to whom the request is directed serves on the requesting party a written answer or objection addressed to the matter and signed by the party or its attorney.” Here, Opposer’s responses would have been due 30 days from March 28, 2019, on April 29, 2019. See 7 TTABVUE, Ciaramella Decl. ¶9. Applicant timely responded to Opposer’s Discovery on March 8, 2019, and was prepared to do so a week earlier if Opposer was unwilling to provide an extension. On March 28, 2019, Applicant served upon Opposer Applicant’s Discovery, serving upon Opposer: Applicant’s First Requests for Admission, Applicant’s First Set of Interrogatories, Applicant’s First Requests for Production. Please see 7 TTABVUE, Exhibits I, J, and K; see also 7 TTABVUE, Ciaramella Decl. ¶9. As of May 2, 2019, Opposer has not served upon Applicant any responses to either Applicant’s First Requests for Admission, Applicant’s First Set of Interrogatories, or Applicant’s First Requests for Production.