The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
THIS ORDER IS A Trademark Trial and Appeal Board
PRECEDENT OF THE P.O. Box 1451
TTAB Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
Mailed: July 2, 2018
Opposition No. 91234612
Trans-High Corp.
v.
JFC Tobacco Corp.
Katie W. McKnight,
Interlocutory Attorney:
On January 22, 2018, Applicant filed an unconsented motion to extend by thirty
days the close of discovery, as well as to extend by fifteen days its time to respond to
Opposer’s written discovery requests, originally served on December 22, 2017.
Applicant’s motion is fully briefed.1
Background
As set forth in the Board’s May 17, 2017 order, discovery in this proceeding was
set to close on January 22, 2018. On December 22, 2017, Opposer timely served
Applicant with its first set of written discovery requests, making Applicant’s
1 The Board notes that on March 6, 2018 and April 2, 2018, the parties filed, and the Board
granted, consented motions to extend all remaining dates while awaiting a decision on the
instant motion. See 10 TTABVUE; 12 TTABVUE. The parties’ most recent consented motion
to extend all remaining dates, filed June 5, 2018 and granted on June 6, 2018, indicates that
the parties are engaged in settlement discussions. See 14 TTABVUE. In view thereof, the
trial schedule set forth in this order will be reset in accordance with the Board’s June 6, 2018
order.
Opposition No. 91234612
responses due on January 22, 2018.2 6 TTABVUE 2. On January 10, 2018, Applicant
served Opposer with its first set of written discovery requests, making Opposer’s
responses due on February 9, 2018, after the close of discovery. Id. That same day,
Opposer indicated that Applicant’s discovery requests were untimely because
responses would not be due until after the close of discovery, and Applicant in turn
sought Opposer’s consent for an extension of time to serve responses to Opposer’s
requests, as well as an extension of the discovery period. Id. at 44-47. When Opposer
did not provide a definitive response to Applicant’s January 12, 2018, January 18,
2018, and January 19, 2018 attempts to seek consent to the extensions of time,
Applicant filed the present motion. Id. at 3, 44-47.
In support of its motion, Applicant notes that it is located in Puerto Rico, and
encountered some delays during this proceeding as a result of the hurricanes that
devastated the region this past year. 9 TTABVUE 2-3. Applicant also argues that it
was difficult for counsel to reach Applicant during the winter holiday season in order
to provide timely responses to Opposer’s discovery requests, and Applicant conferred
in good faith with Opposer to obtain its consent to an extension of time, without
success. 6 TTABVUE 3. Moreover, Applicant contends, it has not been negligent
inasmuch as it served its discovery requests shortly after it received Opposer’s
discovery requests, and it has not asked for any other extensions of time in this
proceeding. Id. Applicant argues that it would be prejudiced if Opposer benefits from
2 Since the last day for Applicant to serve its responses, i.e. January 21, 2018, fell on a
Sunday, Applicant was permitted to respond to Opposer’s discovery requests by January 22,
2018 pursuant to Trademark Rule 2.196.
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Opposition No. 91234612
Applicant’s discovery responses without reciprocal responses to Applicant’s discovery
requests. Id. at 4.
Opposer argues that because Trademark Rule 2.120(a)(3) requires written
discovery requests to be served early enough in the discovery period so that responses
thereto will be due no later than the close of discovery, Applicant’s motion to extend
the close of discovery is “in fact” a “motion to reopen the parties’ time to serve written
discovery,” and therefore pursuant to Fed. R. Civ. P. 6(b), Applicant must show that
its failure to timely serve discovery requests was due to excusable neglect. 7
TTABVUE 4. Opposer contends that under that standard, Applicant has not
demonstrated excusable neglect. Id. Alternatively, Opposer argues that Applicant
has not demonstrated good cause for an extension because it did not explain why it
waited until January 10, 2018 to serve discovery requests. Id. at 9-10.
Analysis
Under Trademark Rule 2.120(a)(3), 37 C.F.R. § 2.120(a)(3), the time to respond to
written discovery requests may be extended upon stipulation of the parties, or upon
motion granted by the Board, or by order of the Board. Likewise, under Trademark
Rule 2.120(a)(2)(iv), 37 C.F.R. § 2.120(a)(2)(iv), limited extensions of the discovery
period may be granted upon stipulation of the parties approved by the Board, or on
motion granted by the Board, or by order of the Board.
Pursuant to Fed. R. Civ. P. 6(b)(1)(A), made applicable to Board proceedings by
Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a), the appropriate standard for allowing
an extension of a specified time period prior to the expiration of that period is “good
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Opposition No. 91234612
cause.” Here, Applicant filed its motion to extend its time to respond to Opposer’s
discovery requests as well as the close of the discovery period before both of the
respective periods expired on January 22, 2018. Therefore, the proper standard to
apply is good cause.
Opposer’s argument that Applicant’s motion to extend the close of discovery is
effectively one to reopen the time to serve requests and the proper standard is
excusable neglect is not persuasive. Under the amended rules, effective January 14,
2017, “discovery must be served early enough in the discovery period that responses
will be provided and all discovery will be complete by the close of discovery.”
MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed.
Reg. 69,950, 69,951 (October 7, 2016) (Notice of Final Rulemaking); Trademark Rule
2.120(a)(3). Notably, “[t]he amendment has no impact on current Board practice
concerning the ability of parties to seek extensions of the discovery period;” moreover,
when the time to respond is extended, discovery responses must be due no later than
the close of discovery, as extended. Notice of Final Rulemaking, 81 Fed. Reg. at
69,960-61. While the Board encourages early service of discovery instead of reliance
upon motions to extend the discovery period, a party wishing to serve discovery
requests at a point in the discovery period when the last day for responding to the
requests would fall after the close of discovery may seek an extension of the discovery
period when appropriate and if it can establish good cause for the extension. Estudi
Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1271 n.6 (TTAB 2017)
(emphasis added). The timing to serve discovery requests is bounded by the specified
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Opposition No. 91234612
time period for the close of discovery. Thus, where the close of discovery has not yet
passed, the time for serving requests is effectively reset under the good cause
standard and the excusable neglect standard is inapplicable.
Generally, the Board is liberal in granting extensions of time before the specified
period has elapsed, so long as the moving party has not been guilty of negligence or
bad faith and the privilege of extensions is not abused. See Am. Vitamin Prods., Inc.
v. Dowbrands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992). The moving party, however,
retains the burden of persuading the Board that it was diligent in meeting its
responsibilities and should therefore be awarded additional time. Nat’l Football
League v. DNH Mgmt., LLC, 85 USPQ2d 1852, 1854 (TTAB 2008) (citing Sunkist
Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147 (TTAB 1985)). Moreover, a
motion to extend must set forth with particularity the facts said to constitute good
cause; “cursory or conclusory allegations that are denied unequivocally by the non-
movant, and that are not otherwise supported by the record, will not constitute a
showing of good cause.” Instruments SA, Inc. v. ASI Instruments, Inc., 53 USPQ2d
1925, 1927 (TTAB 1999); see also Luemme, Inc. v. D.B. Plus Inc., 53 USPQ2d 1758,
1760 (TTAB 1999).
Although Applicant argues that it acted diligently, neither party appears to have
taken advantage of the first five months of the discovery period. Mere delay in
initiating discovery does not constitute good cause for an extension of the discovery
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Opposition No. 91234612
period.3 Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987).
However, Applicant indicates that it experienced delays during this proceeding as a
result of the hurricanes that devastated Puerto Rico; that, in view of the holiday
season, it was difficult for Applicant’s counsel to reach Applicant in order to provide
substantive and timely responses to Opposer’s discovery requests; that this is
Applicant’s first request to extend any deadline in this proceeding; and that the
extension privilege has not been abused. There is also no evidence of bad faith on the
part of Applicant in requesting the extension. Based on the record, Applicant has
demonstrated the requisite good cause to warrant its requested extensions of both
the discovery period and its deadline to respond to Opposer’s discovery requests and,
therefore, Applicant’s motion to extend is granted. Moreover, in view of the extension
of the close of the discovery period, Applicant’s discovery requests served on January
10, 2018 are deemed timely.
Inasmuch as the parties are engaged in settlement discussions and the first
upcoming deadline is August 5, 2018, as reset by the Board’s June 6, 2018 order,
discovery, disclosure, and trial dates, including time for Applicant to serve its
responses to Opposer’s discovery requests and time for Opposer to serve its responses
to Applicant’s requests, are reset as follows:
Expert Disclosures Due August 5, 2018
Applicant’s Responses to Opposer’s
Discovery Requests Due August 5, 2018
Opposer’s Responses to Applicant’s
Discovery Requests Due August 8, 2018
3 We further note that discovery by the Board is not governed by the concept of priority of
discovery, and parties’ discovery obligations are not dependent upon the actions of the other
party.
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Opposition No. 91234612
Discovery Closes August 8, 2018
Plaintiff's Pretrial Disclosures Due September 22, 2018
Plaintiff's 30-day Trial Period Ends November 6, 2018
Defendant's Pretrial Disclosures Due November 21, 2018
Defendant's 30-day Trial Period Ends January 5, 2019
Plaintiff's Rebuttal Disclosures Due January 20, 2019
Plaintiff's 15-day Rebuttal Period Ends February 19, 2019
BRIEFS ARE DUE AS FOLLOWS:
Plaintiff's Main Brief Due April 20, 2019
Defendant's Main Brief Due May 20, 2019
Plaintiff's Reply Brief Due June 4, 2019
Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125, 37 C.F.R. §§ 2.121 - 2.125. These include
pretrial disclosures, the manner and timing of taking testimony, matters in evidence,
and the procedures for submitting and serving testimony and other evidence,
including affidavits, declarations, deposition transcripts and stipulated evidence.
Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and (b),
37 C.F.R. §§ 2.128(a) and (b). Oral argument at final hearing will be scheduled only
upon the timely submission of a separate notice as allowed by Trademark Rule
2.129(a), 37 C.F.R. § 2.129(a).
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