estta tracking number: estta1164150 10/06/2021
TRANSCRIPT
Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
ESTTA Tracking number: ESTTA1164150
Filing date: 10/06/2021
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 94003032
Party ApplicantMomspiration412 Worldwide LLC
CorrespondenceAddress
THOMAS M. JOSEPHTHOMAS M. JOSEPH, ESQ.P.O. BOX 14789PITTSBURGH, PA 15234UNITED STATESPrimary Email: [email protected]
Submission Other Motions/Submissions
Filer's Name Thomas M. Joseph
Filer's email [email protected]
Signature /Thomas M. Joseph/
Date 10/06/2021
Attachments Motion to Compel.pdf(23418 bytes )Exhibits for motion.pdf(1143448 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
MOMSPIRATION412 WORLDWIDE LLC
Petitioner,
vs.
CANDIS M. VARGO
Defendant.
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Concurrent Use Proceeding No.
94-003,032
Application and Registration Nos.
88-895,674 and 5,873,056
MOTION TO COMPEL DISCOVERY CONFERENCE
Petitioner Momspiration412 Worldwide LLC (“Petitioner”), by and through
undersigned attorney, hereby submits this Motion to Compel Discovery Conference (“Motion”).
Through this Motion, Petitioner is seeking an Order to compel Defendant to participate in the
Discovery Conference as set forth pursuant to 3 7 CFR § 2.120(a)(l) and Fed. R. Civ. P. 26(f).
As grounds for this Motion, Petitioner states, as follows:
1. Prior to the initiation of this proceeding, Petitioner sent two email communications to
Defendant in an effort to settle this dispute. See Exhibits 1-2. The email communications were sent
on September 28, 2020 and November 18, 2020 to [email protected].
2. Petitioner, through undersigned attorney, also attempted to reach Defendant via telephone
on September 7, 2020 using the telephone number that Defendant provided to the U.S. Patent and
Trademark Office when she applied for her trademark registration, but her voicemail box was full.
3. Defendant never responded to the email communications or phone call.
4. Petitioner also sent an email communication to Defendant on August 21, 2021 seeking,
inter alia, to schedule the Discovery Conference. See Exhibit 3. The email communication was
followed by a telephone call on September 3, 2021, but, again, her voicemail box was full.
5. Petitioner also attempted to contact Defendant through the mail using the address listed in
Defendant’s trademark application on September 9, 2021. See Exhibit 4.
6. Defendant never responded to the email communication, phone call, or letter.
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7. Since the Board’s August 9, 2021 Order sets an October 18, 2021 deadline to complete the
Discovery Conference and Defendant has not responded to any of Petitioner’s attempts to contact
her, Petitioner respectfully requests that the Board issue an Order compelling Defendant to
schedule and to participate in the Discovery Conference.
Respectfully submitted,
October 6, 2021 /Thomas M. Joseph/ .
Thomas M. Joseph, Esq.
PA ID No. 87,012
Thomas M. Joseph, Esq.
P.O. Box 14789
Pittsburgh, PA 15234-9998
Phone: (412) 780-4061
Attorney for Petitioner
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CERTIFICATE OF SERVICE
I hereby certify that a true and complete copy of the foregoing Motion to Compel
Discovery Conference has been served on Defendant Candis M. Vargoby forwarding said copy
on October 6, 2021, via email to: [email protected].
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/Thomas M. Joseph/ .
Thomas M. Joseph
PA Bar No. 87,012
(412) 780-4061
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
MOMSPIRATION412 WORLDWIDE LLC
Petitioner,
vs.
CANDIS M. VARGO
Defendant.
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Concurrent Use Proceeding No.
94-003,032
Application and Registration Nos.
88-895,674 and 5,873,056
[PROPOSED] ORDER
Defendant Candis M. Vargo is hereby Ordered to schedule and to participate in the
Discovery Conference within ten days of the date of this Order.
______________________
Name:_________________
Title: __________________
EXHIBIT 1
EXHIBIT 2
EXHIBIT 3
EXHIBIT 4
THOMAS M. JOSEPH, ESQ.
Patent Attorney
Attorney-at-Law
Thomas M. Joseph P.O. Box 14789 Phone: (412) 780-4061 .
Pittsburgh, PA 15234-9998 Email: [email protected]
www.joseph-iplaw.com
September 9, 2021
Candis M. Vargo
34321 Route 187
Rome, PA 18837
RE: Matter No. 417 - Proposed Consent Agreement with Momspiration412 Worldwide LLC
Dear Ms. Vargo:
This is a follow-up to my September 28, 2020, November 18, 2020, and August 21, 2021 email
communications on behalf of Momspiration412 Worldwide LLC (“MSPW”) in which we
offered to resolve a potential conflict between each party’s respective trademarks through a
consent agreement. I have also attempted to contact you via telephone at the phone number listed
in your trademark application without success.
Please note that the Trademark Trial and Appeal Board instituted a concurrent use proceeding
between the parties’ respective marks on August 9, 2021. See Order dated August 9, 2021 in
Momspiration412 Worldwide LLC v. Candis M. Vargo, Concurrent Use No. 94003032 (TTAB).
Pursuant to that Order, we are required to have a discovery conference by October 18, 2021.
Accordingly, I request that you provide me with a list of dates and times in which you (or your
counsel) will be available for a telephonic discovery conference.
Alternatively, we would prefer to resolve this dispute through a settlement agreement. Through
this settlement agreement, both parties will consent to each other’s use and registration of its
respective marks. A draft settlement agreement is attached.
If you have any questions, please feel free to call me at (412) 780-4061 or contact me via email
communication at the address listed above.
Sincerely,
Thomas M. Joseph
Enclosures
Thomas M. Joseph