Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 GROBET FILE COMPANY OF AMERICA, INC.
ASSOCIATED DISTRIBUTORS, INC.
Opposition No. 73,917
June 13, 1989
Regina R. Ford for File Company of America, Inc. c/o MacDonald, Jaekel, Seavers & Ford
Schwartz, Jeffery, Schwaab, Mack, Blumenthal & Koch, P.C. for Associated Distributors, Inc.
Before Rice, Simms and Krugman
Opposer has filed a request for reconsideration of the Board's decision issued February 4, 1988, wherein the Board denied opposer's motion to reopen discovery and testimony periods and, because opposer failed to take any testimony or present other evidence during its time for doing so, dismissed the opposition with prejudice. Applicant has filed a brief in opposition and opposer has filed a short responsive letter in reply. The Board has read and considered all papers filed in connection with this motion. [FN1]
The procedural facts in this case are largely undisputed. Shortly after applicant received notice of this proceeding, it initiated discovery by serving various discovery requests upon opposer on June 12, 1986. Although responses were due in mid-July 1986, opposer failed to make any responses or to move for an extension of time in which to do so. However, in late July 1986, opposer's attorney wrote to applicant's attorney and, among other things, indicated that at least sixty additional days would be required to answer the discovery requests. While applicant's attorney responded that he considered opposer to be in default, he nevertheless indicated that he would refrain from filing a motion to compel in view of the fact that opposer indicated that responses would eventually be served.
Because opposer took the position that a protective order was needed before opposer could respond to applicant's discovery, the attorneys prepared a stipulated protective order. Because applicant needed additional time in which to respond to opposer's discovery requests, applicant sought and obtained the consent of opposer's attorney to a request for extension of time in which applicant could do so. Applicant's consented motion was filed on November 3, 1986. Inasmuch as applicant had not yet received opposer's responses to applicant's discovery requests, applicant by consent indicated in its request that applicant would have the same amount of time to answer opposer's discovery requests as opposer would have to serve its already overdue responses.
According to the affidavit of applicant's attorney, this was the only time he obtained a specific consent from counsel for opposer to respond to opposer's discovery requests. Instead, while a total of eight separate consented motions were filed to extend applicant's time to respond to opposer's discovery, applicant's counsel relied upon this one consent by opposer's attorney given in October 1986 that applicant could take as long to answer opposer's discovery as opposer would take to answer applicant's. In none of applicant's consented motions was there any mention of any extension of the times for conducting discovery or taking testimony.
*2 Shortly after applicant's first motion to extend was filed, opposer filed a consented-to motion to extend the discovery and testimony periods for two months. By this motion, which was approved by the Board, discovery was set to close on February 10, 1987 and opposer's time for taking testimony was set to expire on April 9, 1987. At no time subsequent to this first and only motion by opposer to extend discovery and testimony did applicant's counsel discuss with opposer's counsel further extensions of the time for conducting discovery and taking testimony. Further, according to applicant's attorney, he never indicated to opposer's attorney that applicant consented to any further extension of the discovery and testimony periods.
As can be seen from this summary, opposer took no formal steps to move to extend its time for answering applicant's discovery and only once moved for an extension of the discovery and trial dates. Opposer failed to take any testimony on or before April 9, 1987 and did not move to extend the time for doing so until it filed its motion to reopen discovery on October 5, 1987, almost six months after its testimony period closed.
While opposer's attorney argues that applicant's motions gave opposer's attorney a reasonable basis to assume that applicant consented to an extension of the time for taking discovery and testimony, we see no merit in this argument. As applicant has pointed out, the fact that opposer filed a motion for an extension of the discovery and testimony periods shortly after applicant filed its initial motion to extend the time in which to answer opposer's discovery requests belies opposer's position and instead reflects the recognition by opposer's attorney of the need to seek extensions of the discovery and testimony periods, action which was not sought in applicant's motions. If opposer's attorney believed that applicant's motions would have the effect of extending the discovery period and the trial dates, there would have been no need to have filed opposer's motion. Rather, opposer's attorney appears to have known the difference between an extension of time to respond to discovery requests and an extension of the discovery period. [FN2]
Moreover, from the facts recited above we cannot accept opposer's argument that "it was implicitly understood by and between counsel" (affidavit, paragraph 7) that discovery and trial dates were to be extended by applicant's motions. Opposer has not persuasively shown that there was any such understanding. Rather, as explained above, opposer's behavior in the filing of its own motion to extend discovery and trial dates demonstrates just the opposite--that opposer itself considered the matter of the extension of the discovery period separate from the time in which the parties had to respond to the respective discovery requests. [FN3] In any event, opposer's failure to take testimony during the time set therefor or to timely move to extend that period cannot be considered to have been occasioned by excusable neglect.
*3 Finally, opposer argues that the Board's dismissal of the opposition in view of its failure to introduce any evidence or take testimony denied opposer the right to argue, pursuant to Trademark Rule 2.132(a), that there was good and sufficient cause why judgment should not be rendered against it. Suffice it to say that the standard under Fed.R.Civ.P. 6(b) is one of excusable neglect, admitted by opposer in its motion for reconsideration, and that even if this case came up as a result of a motion filed by applicant under Trademark Rule 2.132(a) (wherein the language "good and sufficient cause" can be found), the "good and sufficient cause" in a situation of this type is equivalent to the standard required to reopen the plaintiff's trial period, that is, excusable neglect. See Fort Howard Paper Co. v. Kimberly-Clark Corp., 216 USPQ 617, 618 (TTAB 1982) and Lefkowitz and Rice, Adversary Proceedings Before the Trademark Trial and Appeal Board, 75 TMR 323, 377 (1985). Only if the plaintiff establishes that the failure to offer evidence or take testimony during its trial period was occasioned by excusable neglect will a motion under 2.132(a) be denied and a new trial schedule issued. That is because in order to show good and sufficient cause why judgment should not be entered against the plaintiff, the plaintiff must be able to reopen its testimony period in order to introduce testimony or other evidence. To hold otherwise leaves the anomalous result of denying a motion for judgment (assuming opposer demonstrates good and sufficient cause) and resuming the proceeding with no opportunity for the plaintiff to prevail on the merits because, absent a reopening of the trial for excusable neglect, it would have no time left in which to take testimony or present evidence. Therefore, excusable neglect must be shown under these circumstances.
Accordingly, and because, as explained in the ruling complained of, opposer has no evidence of record, the request for reconsideration is denied.
Members, Trademark Trial and Appeal Board
FN1. The Board apologizes for the delay in ruling upon opposer's request for reconsideration.
FN2. In the affidavit of opposer's attorney, she states:
I was under the impression that the consented to motions also extended the time period for "closing of discovery," which automatically extends the discovery period under applicable rules. Evidently, I failed to closely scrutinize the consented to motion documents for the actual words "closing of discovery."
In her affidavit in support of the motion to reopen, however, opposer's attorney stated that she "inadvertently" thought that approval of applicant's motions automatically reset the discovery and testimony periods.
FN3. In opposer's papers filed in support of the request for reconsideration, opposer's attorney has stated that, in connection with applicant's motions to extend applicant's time for responding to discovery requests, she consented to extensions of time for "closing of discovery to allow applicant to provide answers to opposer's interrogatories ..." (affidavit, paragraph 6). If opposer's attorney indeed means to state that she agreed to an extension of the period for discovery, rather than applicant's time for responding to opposer's discovery requests, then this statement is simply unsupported by the record, including the wording of applicant's motions and the filing by opposer of its separate motion for an extension of discovery and trial dates shortly after the first of applicant's motions was filed.