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Proceeding Party Correspondence Address
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 92051333 Plaintiff Corporacion Habanos, S.A.; Empresa Cubana Del Tabaco David B. Goldstein Rabinowitz Boudin Standard Krinsky & Lieberman PC 111 Broadway Suite 1102 New York, NY 10006 UNITED STATES firstname.lastname@example.org Other Motions/Papers David B. Goldstein email@example.com /David B. Goldstein/ 04/14/2010 MLD Habana motion to strike reply.pdf ( 9 pages )(83577 bytes )
Submission Filer's Name Filer's e-mail Signature Date Attachments
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ________________________________________________ CORPORACION HABANOS, S.A., and EMPRESA ) CUBANA DEL TABACO, d.b.a. CUBATABACO, ) ) Petitioners, ) ) v. ) Cancellation No. 92051333 ) Registration No. 2872267 THOMPSON & CO. OF TAMPA, INC., ) ) Registrant. ) ) PETITIONERS’ MOTION TO STRIKE REGISTRANT’S REPLY TO PETITIONERS’ RESPONSE TO REGISTRANT’S REPLY TO THE BOARD’S ORDER TO SHOW CAUSE WHY A JUDGMENT BY DEFAULT SHOULD NOT BE ENTERED, AND PETITIONERS’ OPPOSITION TO REGISTRANT’S MOTION TO ALLOW THE LATE FILING OF REGISTRANT’S REPLY AND ANSWER AND AFFIRMATIVE DEFENSES Petitioners CORPORACION HABANOS, S.A. and EMPRESA CUBANA DEL TABACO (together “Petitioners”), by and through their undersigned counsel, hereby move to strike Registrant’s self-styled additional “Reply” filed on April 9, 2010, and further to oppose Registrant’s Motion To Allow The Late Filing Of Registrant’s Reply And Answer And Affirmative Defenses, and further request that a judgment by default be entered, on the ground that no excusable neglect excuses Registrant’s failure to file a timely Answer, due no later than January 20, 2010, or a timely response to the Board’s February 16, 2010 Order to Show Cause, and further to bring Registrant’s additional misrepresentations to the attention of the Board, and in support thereof state as follows: 1. As Registrant acknowledges, the Board’s rules do not appear to provide for an
additional “Reply” to Registrant’s Reply to the Board’s February 16, 2010 Order to Show Cause Why a Judgment of Default Should Not be Entered, and the additional “Reply” should be stricken on that basis alone.
More seriously, the additional “Reply” should be stricken for its additional
misrepresentations to the Board, and Registrant’s refusal to date to correct those misstatements after Petitoners brought them to Registrant’s attention, as follows: 3. In support of its additional “Reply,” Registrant submitted a series of emails
purportedly sent by Registrant’s counsel to undersigned’s counsel. However, the following emails were misaddressed as shown in Registrant’s Exhibits, and were never sent to, or received by undersigned counsel: Exhibit 1, dated 1/19/10; Exhibit 3, dated 2/16/10; Exhibit 5 (there is no Exhibit 4), dated 2/17/10; Exhibit 6, dated 3/21/10. Each of these were misaddressed to firstname.lastname@example.org, not email@example.com . Petitioners note that Registrant does have the correct email address on its certificates of service, and further, Registrant has sent properly addressed emails to counsel, which counsel has received, including Registrant’s Exhibit 2. 4. Upon receipt of Registrant’s papers on ESTTA on April 12, 2010, undersigned
counsel brought Registrant’s misrepresentations to the Board regarding these emails to Registrant’s counsel’s attention, and advised him that either Registrant could bring his misstatements to the Board’s attention or Petitioners would. Apparently, Registrant elected for Petitioners to do so. 5. It is difficult to understand how Registrant’s misrepresentations to the Board Exhibit A, annexed hereto.
concerning these misaddressed emails could have been a mere oversight, in light of the statements in Petitioners’ Response To Registrant’s Reply To The Board’s Order To Show Cause Why A Judgment By Default Should Not Be Entered, filed on April 2, 2010 (“Petitioners’ Response”). Those representations necessarily must have put Registrant on notice that there was an issue with the delivery of the purported emails.
First, undersigned counsel for Petitioners was unequivocal that there had been no
agreement to a 30-day extension on January 19, 2010, Petitioners’ Response ¶¶ 1-3 (and remains unequivocal on that point, the misrepresentation in Registrant’s undelivered email of January 19, 2010 notwithstanding, and as proven by the fact that no motion for extension of time was ever filed, and no Answer was ever filed in accord with the imaginary extension). Counsel also stated, “Petitioners never heard from Registrant, other than several emails that counsel would be meeting with the client soon, the last being February 9. No reference was ever made to a nonexistent extension of the January 20 deadline.” Id. ¶ 9 (emphasis added). These statements were inconsistent with the undelivered emails, including two emails purported sent after February 9. 7. Further, on April 2, 2010, undersigned counsel emailed to Registrant’s counsel
Petitioners’ filing with the Board of that date, and stated in the email, “By the way, I never received your March 21 filing by email, on March 21 or thereafter.” Exhibit B, annexed hereto. 8. In light of these statements, it is inexplicable how Registrant could have simply
submitted the emails to the Board on April 9 without examining why they had obviously never gotten to Petitioners’ counsel. Had Registrant’s counsel spent 30 seconds examining the emails in response to Petitioners’ submission (which is how long it took undersigned to realize the emails were misaddressed upon reviewing Registrant’s April 9 filing), during the week between April 2 and April 9, he would have realized the error, rather than compounding his misrepresentations to the Board by asserting that Petitioners’ statements were “incomplete and misleading,” and incorrectly representing that these emails were sent to Petitioners’ counsel. 9. Registrant has failed to show excusable neglect for its belated response to the
Order to Show Cause, and the untimely motion of April 9, 2010, to allow the untimely filing of March 21, 2010 should be denied. The purported post hoc rationale in Registrant’s April 9
Motion makes no sense, and is, at best, inexcusable neglect. This series of meritless excuses does not come in a vacuum. Registrant’s conduct from the start has been one long series of inexcusable errors and misconduct that has dragged this matter out for months, from filing, and then withdrawing a patently frivolous and incomprehensible motion to dismiss based on a facially inapplicable regulation; failing to abide by a first agreement to file an Answer by December 18, 2009; failure to file an Answer by January 20, 2010, as Ordered by the Board; blatant misrepresentations regarding a proposed settlement agreement; failure to file a motion for more time pursuant to an imaginary agreement to further extend the time to Answer; failure to Answer within the imaginary agreed extension; failure to respond to the Order to Show Cause within the required time; failure to correctly address emails; failure to examine the emails to determine the basis for Petitioners’ representations to the Board before making further misrepresentations to the Board; and then failure to withdraw its further misrepresentations to the Board when Petitioners brought the errors to its attention. 10. Although the Board is often tolerant of a late filed Answer, Registrant’s
unexplained, unjustified, inexcusable conduct, including its disregard for the Board’s rules and the deadlines set by the Board or agreed to by the parties, is simply far beyond the pale. 11. Petitioners otherwise stand on their April 2, 2010 filing.
WHEREFORE, Petitioners request that: Registrant’s additional “Reply” filed on April 9, 2010, be stricken; Registrant’s Motion To Allow The Late Filing Of Registrant’s Reply And Answer And Affirmative Defenses be denied; the Board enter a judgment by default against Registrant; and registration of the mark MONSENOR DE LA HABANA, Registration No. 2872267, be cancelled.
Dated: April 14, 2010
Respectfully submitted, By: /David B. Goldstein/ DAVID B. GOLDSTEIN RABINOWITZ, BOUDIN, STANDARD, KRINSKY & LIEBERMAN, P.C. 111 Broadway – Suite 1102 New York, New York 10006-1901 212-254-1111 firstname.lastname@example.org Attorneys for Petitioners Corporacion Habanos, S.A. and Empresa Cubana del Tabaco
CERTIFICATE OF SERVICE The undersigned certifies that a true and correct copy of the foregoing Petitioners’ Motion To Strike Registrant’s Reply To Petitioners’ Response To Registrant’s Reply To The Board’s Order To Show Cause Why A Judgment By Default Should Not Be Entered, And Petitioners’ Opposition To Registrant’s Motion To Allow The Late Filing Of Registrant’s Reply And Answer And Affirmative Defenses was served on Registrant by mailing, postage prepaid, said copy on April 14, 2010 via U.S. first-class mail, postage prepaid, and a copy was sent by email to: Arthur W. Fisher, III, Registration No. 26,453 5553 W. Waters Avenue Suite 316 Tampa, FL 33634
Attorney for Thompson & Co. of Tampa, Inc. /David B. Goldstein/ David B. Goldstein