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

gov
ESTTA Tracking number: ESTTA342230
Filing date: 04/14/2010
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 92051333
Party Plaintiff
Corporacion Habanos, S.A.; Empresa Cubana Del Tabaco
Correspondence David B. Goldstein
Address Rabinowitz Boudin Standard Krinsky & Lieberman PC
111 Broadway Suite 1102
New York, NY 10006
UNITED STATES
dgoldstein@rbskl.com
Submission Other Motions/Papers
Filer's Name David B. Goldstein
Filer's e-mail dgoldstein@rbskl.com
Signature /David B. Goldstein/
Date 04/14/2010
Attachments MLD Habana motion to strike reply.pdf ( 9 pages )(83577 bytes )
 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.

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 2. 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

dgoldstein@rbski.com, not dgoldstein@rbskl.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. Exhibit A, annexed hereto.

Apparently, Registrant elected for Petitioners to do so.

5. It is difficult to understand how Registrant’s misrepresentations to the Board

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.

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 6. 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 non-

existent 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

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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.

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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
dgoldstein@rbskl.com
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
weese_fisher@msn.com
Attorney for Thompson & Co. of Tampa, Inc.

/David B. Goldstein/
David B. Goldstein

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EXHIBIT A
EXHIBIT B