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: tmdjoseph@yahoo.com412-780-4061

Submission Other Motions/Submissions

Filer's Name Thomas M. Joseph

Filer's email tmdjoseph@yahoo.com

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 candisvargo53@gmail.com.

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

tmdjoseph@yahoo.com

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: candisvargo53@gmail.com.

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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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)

)

)

)

)

)

)

)

)

)

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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: tmdjoseph@yahoo.com

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