Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 FRED HAYMAN BEVERLY HILLS, INC.
JACQUES BERNIER, INC., D.B.A. PARFUMS GIANELLI
Opposition No. 84,521
November 7, 1991
Marshall A. Burmeister
Burmeister, York, Palmatier
135 South LaSalle Street, Suite 1046
Chicago, IL 60603
George W. Hoover
Blakely, Sokoloff, Taylor & Zafman
12400 Wilshire Boulevard, Seventh Floor
Before Rice, Rooney and Quinn
By the Board:
J.E. Rice, L.E. Rooney and T.J. Quinn
Members, Trademark Trial and Appeal Board
The Board, in its order of July 19, 1991, allowed applicant until August 28, 1991 to file an answer to the amended notice of opposition. Applicant has now filed a motion, by certificate of mailing dated September 6, 1991, for an extension to time to file its answer and for the Board to accept the answer which is submitted therewith. Applicant states that although the answer had been prepared prior to the due date and reviewed by applicant, applicant's counsel failed to note that the answer had not been filed prior to taking a vacation over Labor Day and failed to file the answer by September 3, 1991. [FN1] Applicant maintains that it is clear from the record of this case that applicant intended at all times to pursue this opposition.
Opposer, in its opposition to the motion, argues that applicant has failed to show that the tardiness of its answer was the result of excusable neglect and thus applicant's motion should be denied. Opposer has concurrently filed a motion to suspend all proceedings, including discovery, pending the Board's disposition of applicant's motion.
Applicant has filed a reply, arguing that the good cause standard of Fed.R.Civ.P. 55(c) should be applied here rather that the excusable neglect requirement of Rule 6(b)(2) and that applicant's motion satisfies this standard. Applicant agrees to opposer's motion to suspend to the extent that the time for opposer to respond to applicant's outstanding discovery requests would be extended until thirty days after the Board's decision on this motion.
While the Board had not yet issued a notice of default at the time of applicant's filing of its motion, the answer was already overdue. Thus applicant's motion will be treated in the same manner as a response to a notice of default. Although applicant in fact is requesting an enlargement of its time to file an answer, the showing which has consistently been required by the Board and the courts in order to permit the late filing of an answer is that set forth in Rule 55(c), i.e., good cause, and not the excusable neglect required by Rule 6(b)(2). See Kleckner v. Glover Trucking Corporation, 103 F.R.D. 553 (M.D.Penn 1984). This good cause is usually found to have been established if the delay in filing is not the result of willful conduct or gross neglect on the part of the defendant, if the delay will not result in substantial prejudice to the plaintiff, and if the defendant has a meritorious defense. See Heleasco Seventeen, Inc. v. Drake, 102 F.R.D. 909 (D.Del.1984).
*2 In the present case, the failure to timely file the answer was clearly due to an inadvertence on the part of applicant's counsel and not the result of any willful conduct or gross neglect. Moreover, the nine day delay in the filing of the answer will cause minimal prejudice to opposer. Finally, by the submission of an answer which is not frivolous, applicant has adequately shown that it has a meritorious defense.
Accordingly, applicant's motion is granted and the answer submitted therewith is accepted and made of record. Insofar as opposer's motion to suspend is concerned, trial dates have not yet been set and thus the motion need only be considered as it is directed to outstanding discovery requests. Since applicant has agreed to a thirty day extension for response by opposer to its requests, opposer's responses stand due thirty days from the date hereof.
Trial dates are now scheduled as set forth in the accompanying trial order.
J. E. Rice
L. E. Rooney
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. As pointed out by opposer and later acknowledged by applicant, counsel had incorrectly calculated the due date for the answer as September 3, 1991, rather than the actual date of August 28, 1991.
In accordance with the Trademark Rules of Practice, trial dates are set as indicated below. 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. Rule 2.125.
THE PERIOD FOR DISCOVERY TO CLOSE: February 5,
Testimony period for party in position of plaintiff to close April 6,
(opening thirty days prior thereto) 1992
Testimony period for party in position of defendant to close June 5, 1992
(opening thirty days prior thereto)
Rebuttal testimony period to close (opening fifteen days prior July 20,
Briefs shall be filed in accordance with Rule 2.128(a) and (b).
An oral hearing will be set only upon request filed as provided by Rule 2.129.