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Trademark Trial and Appeal Board Electronic Filing System.http://estta.uspto.gov

ESTTA Tracking number:

ESTTA274309

Filing date:

03/25/2009

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARDProceeding 91186534PartyPlaintiffCorporacion Habanos, S.A., Empresa Cubana del Tabaco, dba CubatabacoCorrespondenceAddressDavid B. GoldsteinRabinowitz, Boudin, Standard, Krinsky, et al111 Broadway, Suite 1102New York, NY 10006-1901UNITED STATESdgoldstein@rbskl.comSubmission Reply in Support of MotionFiler's Name David B. GoldsteinFiler's e-mail dgoldstein@rbskl.comSignature /David B. Goldstein/ Date 03/25/2009Attachments R 56(f) Reply.91186534.pdf ( 8 pages )(34088 bytes )

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

_______________________________________________CORPORACION HABANOS, S.A., d.b.a. )HABANOS, S.A., and EMPRESA CUBANA DEL )TABACO, d.b.a. CUBATABACO, ))Opposers, ))v. ) Opposition No. 91186534) Serial No. 77273188XIKAR, INC., ))Applicant. ))

OPPOSERS’ REPLY IN SUPPORT OF RULE 56(f) REQUEST FOR DISCOVERY TORESPOND TO APPLICANT’S MOTION FOR SUMMARY JUDGMENT

Opposers Corporacion Habanos, S.A. (hereinafter “Habanos, S.A.”) and Empresa Cubanadel Tabaco (hereinafter “Cubatabaco”) (together “Opposers”), by and through their undersignedattorneys, hereby submit their Reply, pursuant to Fed. R. Civ. P. 56(f); 37 C.F.R. § 2.127(e)(1);TBMP § 528.06, in support of their request for time to take discovery to respond to Applicant’spending motion for summary judgment in the above-captioned proceeding, and in supportthereof state as follows:

Applicant concedes, as it must, that no matter the result of Applicant’s summary judgment motion, there necessarily will be further proceedings in this matter, includingdiscovery, on Opposers’ fraud claim, Applicant’s Response (“App. Resp.”), at 2. Further, in thevery likely event that the summary judgment motion is denied, it is almost certain that, afterdiscovery, the parties will bring another round of summary judgment motions. These facts,while not necessarily dispositive of the Rule 56(f) Request, certainly weigh in favor of allowingthis matter to proceed in an orderly, efficient matter, rather than through disjointed discovery and

seriatum

summary judgment motions.

See

Declaration of David B. Goldstein, dated February20, 2009 (“Goldstein Decl.”), ¶¶ 7-10.Applicant fails to make any argument why the parties and the Board should be putthrough such unnecessary and inefficient piecemeal litigation. Its claim that the situation here isthe same as

Corporacion Cimex, S.A. v. DM Enter. & Dist. Inc.

, Opp. No. 91178943 (Nov. 17,2008), is simply bizarre. First, in

Cimex

, the parties made summary judgment motions

after

theclose of discovery. Second, there was no piecemeal litigation. Rather, both parties moved forsummary judgment on fully dispositive grounds – Opposer moved on its Inter-AmericanConvention (“IAC”) claim, and Applicant moved on lack of standing. The Board foundstanding, and found for the opposer on the IAC claim, thereby disposing of the case in full.Third, this is

not

a case in which,

after

discovery, the parties have moved for partial summary judgment in contemplation of narrowing the issues for trial.Here, there is a certainty that there will be discovery, and a near certainty that there willbe additional summary judgment motions, including by Opposers. Therefore, Opposers requestthat the Board: 1) allow a reasonable period for Opposers to take discovery on all three of itsgrounds for opposition (Applicant has expressly represented that it has no need for discovery onthe section 2(e)(3) and 2(d) grounds, and Applicant plainly does not need discovery of Opposerson whether and when Applicant used the mark); and 2) after the close of discovery, allow theparties to cross-move for summary judgment on any grounds they deem appropriate.

II.

Applicant seriously mischaracterizes Opposers’ position on the section 2(e)(3) claim, andthen, relying on that mischaracterization, claims, “Discovery on this issue is unnecessary andwill not lead to any admissible evidence.” App. Resp. at 2. Applicant first quotes fromOpposers’ Request, which noted that Applicant was “resist[ing] discovery as to the relevant2