The opinion
THIS ORDER IS UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
A PRECEDENT
P.O. Box 1451
OF THE TTAB
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
October 31, 2018
Opposition No. 91225271
Asustek Computer Incorporation
v.
Chengdu Westhouse Interactive
Entertainment Co., Ltd.
M. Catherine Faint, Interlocutory Attorney:
Opposer has filed a motion for reconsideration of the Board’s order denying
Opposer’s earlier motion to compel discovery responses as untimely because that
motion was filed on the day of the deadline for Opposer’s pretrial disclosures, and not
before that day as required by the applicable Rule.
The premise underlying a motion for reconsideration is that based on the facts
then before it and the prevailing authorities, the Board erred in the decision it issued.
See Guess? IP Holder L.P. v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015);
see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §
518 (2018).
A motion for reconsideration of an order must be filed within one month from the
date of the order. Trademark Rule 2.127(b), 37 C.F.R. § 2.127(b). Inasmuch as
Opposition No. 91225271
Opposer’s motion for reconsideration was filed within one month of the January 16,
2018 order, Opposer’s request for reconsideration is timely.
As previously reset, the deadline for Opposer’s pretrial disclosures fell on Monday,
September 25, 2017; therefore, under Trademark Rule 2.120(f)(1), 37 C.F.R. §
2.120(f)(1), the last date to file a motion was “before the day of” that date. Opposer
filed its motion to compel on Monday, September 25, 2017, and argues that it made a
“reasonable interpretation that [Trademark Rule 2.196,] 37 CFR § 2.196, allowing
parties until the next business day if a deadline falls on a Saturday, Sunday or
Federal holiday, applied to Opposer’s circumstances.”1
Trademark Rule 2.196 provides that when the day or last day as fixed by statute
or regulation falls on a Saturday, Sunday or Federal holiday within the District of
Columbia, the action may be taken on the next succeeding day that is not a Saturday,
Sunday or Federal holiday. However, this Rule does not apply to the relevant
provision of Trademark Rule 2.120(f)(1), which does not fix a particular day by which
a motion to compel must be filed, but instead ensures that the motion be filed before
the day another event (pretrial disclosures) occurs. Cf. Estudi Moline Dissey, S.L. v.
BioUrn Inc., 123 USPQ2d 1268 (TTAB 2017) (holding Rule 2.196 does not apply to
requirement that discovery be served early enough so responses will be due no later
than close of discovery).
Trademark Rule 2.120(f)(1), 37 C.F.R. § 2.120(f)(1) amended effective January 14,
2017, states that “[a] motion to compel discovery must be filed before the day of the
1 35 TTABVUE 3.
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Opposition No. 91225271
deadline for pretrial disclosures for the first testimony period as originally set or as
reset.” “Before the day of the deadline for pretrial disclosures” means that the motion
to compel must be filed sometime prior to the day pretrial disclosures are due. See
MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES;
CLARIFICATION, 82 Fed. Reg. 33804, 33804 (July 21, 2017) (Clarification). The
inapplicability of Rule 2.196 remains similar to practice under the pre-amendment
Rule.2 Cf. KID-Systeme GmBH v. Türk Hava Yollari Teknik Anonim Sirketi, 125
USPQ2d 1415, 1416 (TTAB 2018)(pre-amendment Rule for filing summary judgment
required filing “prior to commencement” of first testimony period). As explained in
the Notice of Proposed Rulemaking regarding this amended Rule, the timing ensures
that discovery disputes have been resolved prior to trial, and avoids the expense and
uncertainty that arise when discovery disputes erupt on the eve of trial.
MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF
PRACTICE, 81 Fed. Reg. 19296, 19298 (Apr. 4, 2016). The deadline for pretrial
disclosures is the opening of the trial phase of the proceeding. See KID-Systeme, 125
USPQ2d at 1416 n.3 (deadline for first pretrial disclosure signals commencement of
trial portion of proceeding).
2 Trademark Rule 2.196 has never applied to the timeliness of a party’s service and filing of
a motion to compel because “it is not applicable when the opening of an assigned period …
falls on a Saturday, Sunday or Federal Holiday.” TBMP § 112 (2018). Under former
Trademark Rule 2.120(e)(1), motions to compel must have been filed prior to the
commencement of the first testimony period. “Prior to” meant any time before the opening
day of trial, i.e., before the first day of plaintiff’s testimony period. See Blansett Pharmacal
Co. v. Carmrick Labs., Inc., 25 USPQ2d 1473, 1476 (TTAB 1992) (noting former rule required
timely filing prior to commencement of testimony period).
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Opposition No. 91225271
In short, Trademark Rule 2.120(f)(1) requires that a motion to compel be filed
before the day of the deadline for plaintiff to file and serve pretrial disclosures. As
Opposer’s motion to compel was filed and served on September 25, 2017, the due date
for Opposer’s pretrial disclosures, it was not served “before” the date set for pretrial
disclosures and is untimely.
Opposer argues that the Board should apply the flexible approach for cases that
arise during transition to the Board’s new rules as was done in cases such as KID-
Systeme where the Board allowed consideration of an otherwise untimely motion for
summary judgment filed on the deadline for pretrial disclosures, rather than before
that date.3 However, that case can be distinguished as the motion for summary
judgment was filed prior to the Board’s July 21, 2017 Clarification of the rule. KID-
Systeme, 125 USPQ2d at 1416 (noting motion at issue in that case was filed June 29,
2017). In this case, Opposer’s motion to compel was filed September 25, 2017, two
months after KID-Systeme and the Clarification issued.4 To the extent flexibility was
warranted in KID-Systeme because of any perceived ambiguity in the Rule as
originally amended, both the decision in that case and the subsequent Clarification
resolved that ambiguity, putting Opposer and other Board litigants on notice of the
proper application of the Rule. When Opposer filed its motion, the amended Rule had
3 Motions for summary judgment, just as motions relating to discovery, must be filed before
the proceeding enters the trial phase. Trademark Rule 2.127(e)(1) was clarified in the same
way and in the same notice that clarified Trademark Rule 2.120(f)(1).
4 Opposer was also notified of the Rule in the Board’s order of June 26, 2017. See 29
TTABVUE 2 (“Motions to compel discovery … must be filed prior to the first pretrial
disclosure deadline”).
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Opposition No. 91225271
been in place more than eight months, and explicitly required filing before the day of
the deadline for pretrial disclosures.
In view of the foregoing, the Board did not err in denying Opposer’s motion to
compel as untimely. Accordingly, Opposer’s motion for reconsideration is denied.
Schedule
Proceedings are resumed. Dates are reset as set out below. The due date for
Opposer’s pretrial disclosures has previously opened, and although reset below, the
Board will not entertain any further motions to compel discovery or for summary
judgment.
Plaintiff's Pretrial Disclosures Due 11/19/2018
Plaintiff's 30-day Trial Period Ends 1/3/2019
Defendant's Pretrial Disclosures Due 1/18/2019
Defendant's 30-day Trial Period Ends 3/4/2019
Plaintiff's Rebuttal Disclosures Due 3/19/2019
Plaintiff's 15-day Rebuttal Period Ends 4/18/2019
Plaintiff's Opening Brief Due 6/17/2019
Defendant's Brief Due 7/17/2019
Plaintiff's Reply Brief Due 8/1/2019
Request for Oral Hearing (optional) Due 8/11/2019
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-.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
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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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