The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
This Decision is a Trademark Trial and Appeal Board
Precedent of the TTAB P.O. Box 1451
Alexandria, VA 22313-1451
Mailed: November 28, 2012
Opposition No. 91202788
Luster Products, Inc.
v.
John M. Van Zandt d/b/a Vanza
USA
Andrew P. Baxley, Interlocutory Attorney:
Pursuant to the Board notice instituting this
proceeding, the discovery period closed on August 6, 2012.
On September 13, 2012, applicant filed a motion to “extend
discovery.” The motion has been fully briefed.
In support of such motion, applicant contends that he
timely served initial disclosures by the March 9, 2012
deadline set forth in the Board notice instituting this
proceeding; that opposer did not timely serve initial
disclosures and did not respond to March 26, 2012 and May
17, 2012 letters from applicant’s attorney to opposer’s
attorney regarding opposer’s failure to serve initial
disclosures; that, in view of such failure to respond,
applicant “rightfully assumed” that opposer had lost
interest in this case; that applicant “was justified in not
Opposition No. 91202788
serving discovery because fashioning written discovery
would be a waste of time if [opposer] did not intend to
prosecute” this case; and that “[w]ithout [opposer’s]
initial disclosures as a guide, [applicant] could not focus
[his] written discovery effectively.” Applicant further
contends that, in “late July or early August,” the parties’
attorneys discussed settlement by telephone; that, during
that discussion, opposer’s attorney requested a three-month
suspension for settlement, which applicant’s attorney
declined; that opposer served its initial disclosures,
first set of interrogatories, and first set of document
requests by mail on the closing date of the discovery
period; and that applicant timely responded to opposer’s
discovery requests. In view of the foregoing, applicant
asks that the Board allow applicant additional time in
which to serve discovery requests and receive responses
thereto.
In opposition, opposer contends that applicant’s
motion is one to reopen discovery and that applicant has
failed to meet the required standard of excusable neglect.
In particular, opposer contends that the parties had a
series of telephone communications prior to the close of
discovery; that, during those discussions, applicant
refused to agree to an extension of the discovery period;
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Opposition No. 91202788
that applicant was seeking to obtain a better position in
settlement negotiations by allowing the discovery period to
close; that, in view of applicant’s acknowledgement of
opposer’s participation in settlement negotiations,
applicant’s assertion that opposer had lost interest in the
proceedings is internally inconsistent; that applicant
could have commenced taking discovery without receiving
opposer’s initial disclosures; that applicant’s remedy for
opposer’s failure to serve timely initial disclosures was
to file a motion to compel such disclosures; and that
applicant has not explained why he waited until five weeks
after the close of discovery to seek to reopen discovery.
Accordingly, opposer asks that the Board deny applicant’s
motion.
In reply, applicant admits that he could have prepared
discovery, despite opposer’s failure to act herein, and
that his motion is one to reopen discovery. However,
applicant contends that he has shown that any failure to
act in a timely manner was the result of excusable neglect;
and that opposer, in opposing applicant’s motion, fails to
explain why it waited until the closing date of the
discovery period to serve its initial disclosures.
Because the discovery period had closed in this case,
applicant’s motion is one to reopen the discovery period.
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Opposition No. 91202788
See Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708,
1710 n.10 (TTAB 2011). As such, applicant must establish
that his failure to act in a timely manner was the result
of excusable neglect. See id. at 1710. In Pioneer
Investment Services Co. v. Brunswick Associates L.P., 507
U.S. 380 (1993), as discussed by the Board in Pumpkin, Ltd.
v. The Seed Corps, 43 USPQ2d 1582 (TTAB 1997), the Supreme
Court clarified the meaning and scope of "excusable
neglect," as used in the Federal Rules of Civil Procedure
and elsewhere. The Court held that the determination of
whether a party's neglect is excusable is:
at bottom an equitable one, taking account of all
relevant circumstances surrounding the party's
omission. These include. . . [1] the danger of
prejudice to the [nonmovant], [2] the length of
the delay and its potential impact on judicial
proceedings, [3] the reason for the delay,
including whether it was within the reasonable
control of the movant, and [4] whether the movant
acted in good faith.
Pioneer Inv. Servs. Co. v. Brunswick Assocs. L.P., supra at
395. In subsequent applications of this test, several
courts have stated that the third Pioneer factor, namely
the reason for the delay and whether it was within the
reasonable control of the movant, might be considered the
most important factor in a particular case. See Pumpkin,
Ltd. v. The Seed Corps, supra at 1586 n.7 and cases cited
therein.
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Opposition No. 91202788
The Board turns initially to the third Pioneer factor
and finds that it weighs strongly against a finding of
excusable neglect. In short, if applicant was concerned
about opposer’s failure to serve initial disclosures,
applicant should have filed a motion to compel initial
disclosures after failing to receive timely initial
disclosures from opposer or responses to his March 26, 2012
and May 17, 2012 letters, and prior to the close of the
discovery period.1 See Trademark Rule 2.120(e)(1), and
Miscellaneous Changes to Trademark Trial and Appeal Board
Rules, 72 Fed. Reg. 42242, 42256 (August 1, 2007) (“A
motion to compel is the available remedy when an adversary
has failed to make, or has made inadequate, initial
disclosures….”). If such motion were granted and opposer
did not comply with the order compelling such disclosures,
applicant could have then moved for dismissal as a sanction
under Trademark Rule 2.120(g)(1). A party that does not
receive initial disclosures and does not file a motion to
compel such disclosures risks their being served late in
the discovery period concurrently with discovery requests,
1
Although applicant indicates that he considered filing a
motion to dismiss for failure to prosecute after opposer failed
to respond to his March 26, 2012 and May 17, 2012 letters, such a
motion should not be filed prior to the close of a plaintiff’s
testimony period. See Trademark Rule 2.132; TBMP Section 534 (3d
ed. rev. 2012). Accordingly, a motion to dismiss for failure to
prosecute would have been premature.
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Opposition No. 91202788
as illustrated by the instant case.2 If such disclosures
and discovery requests are served by mail only, the
responding party may, as happened here, not be aware of
those disclosures and discovery requests until after the
close of the discovery period.
To the extent that applicant made a calculated
strategic decision not to take discovery in the hope that
opposer had lost interest in the proceeding, the events in
this case illustrate the danger of such a decision.3
Further, even if it was reasonable for applicant to assume
opposer’s non-response to applicant’s letters of March 26,
2012 and May 17, 2012 indicated loss of interest in the
case by opposer, the parties’ settlement discussions in
July and August 2012 should have been taken by applicant as
a clear indication that opposer had not lost interest in
2
Under Trademark Rule 2.120(a)(3), “a party must make its
initial disclosures prior to seeking discovery.” However,
“[w]ritten discovery may be served concurrently with
initial disclosures.” TBMP Section 403.02.
3
The Board generally does not sua sponte take any action noting
a plaintiff’s failure to act in a case except when a plaintiff
fails to act after the withdrawal of its attorney or when it
becomes necessary to issue an order to show cause under Trademark
Rule 2.128(a)(3) following the expiration of the plaintiff’s time
to file a brief. In particular, when a plaintiff fails to take
testimony or submit evidence during its testimony period, the
Board does not sua sponte take action; however, the defendant may
file a motion to dismiss under Trademark Rule 2.132 following the
close of the plaintiff’s testimony period. See TBMP Section 534.
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Opposition No. 91202788
the case.4 One generally only seeks settlement of a case in
which one has an interest. An opposer without interest in
a case need not reach settlement with an applicant and can
instead allow the case to be dismissed by way of an
applicant’s motion to dismiss for failure to prosecute
under Rule 2.132(a) following the expiration of its
testimony period, or by failing to respond to an order to
show cause under Trademark Rule 2.128(a)(3) after failing
to file a brief on the case.
Although applicant contends that opposer’s initial
disclosures were necessary to the preparation of his own
discovery requests, we note again that he failed to file a
motion to compel.5 While initial disclosures are certainly
useful in preparing discovery requests, applicant could
have prepared discovery requests in connection with
opposer’s pleaded claim under Trademark Act Section 2(d),
4
Indeed, this case illustrates a danger of failing to
communicate in a Board proceeding. Better and more frequent
communication between parties facilitates settlement and
compliance with applicable rules and reduces the need for motions
such as the one decided herein.
5
Initial disclosures “promote more efficient discovery and
trial, reduce incidents of unfair surprise, and increase the
likelihood of fair disposition of the parties’ claims and
defenses.” Miscellaneous Changes to Trademark Trial and Appeal
Board Rules, 72 Fed. Reg. 42242, 42244 (August 1, 2007).
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Opposition No. 91202788
15 U.S.C. Section 1052(d),6 by reviewing applicable case law
regarding likelihood of confusion and discoverability of
various types of information in Board proceedings, as would
have been necessary for parties defending against such a
claim prior to the institution of the disclosure regime in
2007.7 See TBMP Section 414 and cases cited therein.
The Board further notes that applicant refused to
consent to opposer’s request, made in the waning days of
discovery, to extend the discovery period, but took no
action prior to the close of the discovery period. Thus,
applicant’s failure to act appears to have been the result
of a strategic decision, which was entirely within his
control.
With regard to the second Pioneer factor, the extent
of delay for the proceeding, we find that the delay caused
by applicant's failure to act prior to the close of the
6
Opposer alleges in the notice of opposition its pleaded marks
“have acquired great recognition and renown” and that
registration of applicant’s mark “will result in ... dilution” of
opposer’s “famous names and marks.” Notice of opposition,
paragraphs 3 and 14. However, opposer’s dilution claim is
insufficiently pleaded because opposer did not allege that any of
its pleaded marks became famous prior to any date upon which
applicant can rely in support of his application. See Trek
Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540 (TTAB 2001).
7
Opposer’s argument that applicant could have commenced taking
discovery without receiving opposer’s initial disclosures is
technically correct, but ignores the fundamental unfairness
resulting from opposer having the benefit of applicant’s initial
disclosures, while applicant did not have the benefit of
opposer’s disclosures.
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Opposition No. 91202788
discovery period is significant. In addition to the time
between the close of discovery and the filing of
applicant’s motion to reopen, there is the additional,
unavoidable delay arising from the time required for
briefing and deciding such motions. See PolyJohn
Enterprises Corp. v. 1-800-Toilets Inc., 61 USPQ2d 1860
(TTAB 2002). Both the Board and parties before it have an
interest in minimizing the amount of the Board's time and
resources that must be expended on matters, such as the
motion decided herein, which come before the Board solely
as a result of one party's strategic decision to allow the
discovery period to close and subsequent change of
position. Cf. id. (misunderstanding of a rule does not
constitute excusable neglect). Thus, the second Pioneer
factor also weighs against a finding of excusable neglect.
With regard to the first Pioneer factor, the Board
finds that there is no evidence of significant prejudice to
opposer, and, with regard to the fourth Pioneer factor, the
Board finds that there is no evidence of bad faith on the
part of applicant. On balance, the Board finds that
applicant’s failure to timely act before the close of the
discovery period did not result from excusable neglect.
Accordingly, applicant’s motion to reopen the discovery
period is denied.
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Opposition No. 91202788
Nonetheless, opposer’s failure to meet its obligation
to make initial disclosures at the prescribed time early in
the discovery period and its failure to respond promptly to
applicant’s correspondence in connection with such failure
evidence opposer’s disregard for the rules applicable to
this opposition proceeding and have resulted in unnecessary
delay. To avoid further delay, if the parties do not
settle this case, opposer is expected to make its pretrial
disclosures and commence its presentation of evidence in
accordance with the schedule outlined below. Dates will be
reset only upon agreement of the parties to accommodate
settlement discussions.
Proceedings herein are resumed. Remaining dates are
reset as follows.
Plaintiff's Pretrial Disclosures Due 1/12/2013
Plaintiff's 30-day Trial Period Ends 2/26/2013
Defendant's Pretrial Disclosures Due 3/13/2013
Defendant's 30-day Trial Period Ends 4/27/2013
Plaintiff's Rebuttal Disclosures Due 5/12/2013
Plaintiff's 15-day Rebuttal Period Ends 6/11/2013
In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days
after completion of the taking of testimony. Trademark
Rule 2.l25.
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Opposition No. 91202788
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.
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