*1 HOBIE DESIGNS, INC.
FRED HAYMAN BEVERLY HILLS, INC.
Opposition No. 79,928
April 19, 1990
Before Sams, Rice and Seeherman
Opinion by Seeherman
This case now comes up on opposer's motion for summary judgment and applicant's motion to amend its admissions. Opposer's motion is based on the pleadings, papers filed in connection with applicant's previously denied motion for summary judgment, and request for admissions served on applicant to which applicant failed to respond in a timely manner, as a result of which opposer asserts that these requested admissions should be deemed admitted. Applicant has opposed the motion and has moved to amend the admissions, submitting with its motion its proposed amended admissions. Opposer has opposed applicant's motion to amend.
Turning first to applicant's motion, there is no question that applicant failed to respond to opposer's request for admissions by September 19, 1989, the extension agreed upon by the parties. Accordingly, the failure to timely respond is deemed to be an admission of the matters set forth. [FN(1)] Rule 30(a), F.R.C.P. Opposer filed its motion for summary judgment on October 20, 1989, and on November 6, 1989, along with its papers opposing the summary judgment motion, applicant moved to amend its admissions, thereby tacitly conceding that its failure to respond to the request for admissions resulted in the matter being admitted as put.
In moving for amendment of its admissions, applicant has invoked Rule 36(b) of the Federal Rules of Civil Procedure. This rule provides that the court may permit withdrawal or amendment when the presentation of the merits of the action will be subserved thereby and the party who obtains the admissions fails to satisfy the court that withdrawal or amendment will prejudice him in maintaining his action or defense on the merits.
Rule 36(a) is designed to facilitate proofs and speed trial, but where the failure to timely respond to a request for admissions has a harsh result, Rule 36(b) provides a method for obtaining relief. EEOC v. Baby Products Co., Inc., 89 F.R.D. 129 (E.D. Mi. 1981). The notes of the Advisory Committee on Rules state that Rule 36(b) emphasizes the importance of having the action resolved on the merits, while at the same time assuring each party that justified reliance on the admission in preparation for trial will not operate to his prejudice.
In the present case the requested admissions are ambiguous and conclusory in nature and do not advance the presentation of the case. Thus, the presentation of the merits of the action would be better served by their amendment. Nor do we think that the amendment of the admissions will prejudice opposer through its reliance on the admissions as put. Opposer's only argument on this point is that discovery has closed. Opposer's testimony period has not yet opened, and opposer itself requested suspension of the proceedings to avoid the need to begin preparing for trial prior to a decision on its summary judgment motion. Any possible prejudice to opposer can therefore easily be overcome by extending the discovery period, which we intend to do. Accordingly, we are persuaded that we should exercise our discretion to allow applicant to amend its admissions.
*2 Since opposer's motion for summary judgment is based on the position that the requested admissions as put demonstrate no genuine issues of material fact exist, with the amendment of the admissions opposer's motion must fail. However, we point out that our decision would be the same even if applicant's motion to amend were denied. This is because, even if the request for admissions was deemed admitted as put, opposer has failed to demonstrate that there are no genuine issues of material fact and that it is entitled to judgment. For example, applicant's admission that it does not have the right to exclusive use of the letters FH does not mean that applicant does not claim exclusive rights to the particular F and H design for which it seeks registration. Thus, there would still exist a genuine issue as to applicant's rights in the applied-for FH design.
As for the issue of likelihood of confusion, the deemed admission that "'opposer has the exclusive trademark right for the stylized design of the letter H on clothing for active sportswear"' has no real effect in showing the absence of a genuine issue of fact. We cannot ascertain, from the way this admission is couched, to which stylized H design it refers. Further, even if we were to assume from a reading of all of opposer's papers that the stylized H design is the same trademark described in the notice of opposition and depicted in Registration No. 1,059,363, applicant had essentially admitted opposer's exclusive right to use this mark (prima facie evidence of which is provided by a certificate of registration under Section 7(b) of the Act) because applicant did not counterclaim to cancel the registration. However, merely because opposer has the exclusive right to use its stylized H mark for sportswear does not prove that there is likelihood of confusion from the contemporaneous use of opposer's mark and applicant's mark. As we said in our decision denying applicant's motion for summary judgment, more evidence is necessary on how the marks are used in order for us ascertain consumer perception.
In summary, applicant's motion to amend its admissions is granted and opposer's motion for summary judgment is denied. Opposer is granted thirty days to take discovery on the matters raised in the admissions. Trial dates are reset as shown in the accompanying order.
J. D. Sams
J. E. Rice
E. J. Seeherman,
Members, Trademark Trial and Appeal Board
FN1. To the extent that applicant seeks to be relieved of the untimeliness of its response, so that the admissions would not be deemed admitted as put, applicant's motion is not well taken. Applicant's reasons for failing to timely respond do not constitute excusable neglect, which is the standard for granting such relief. Applicant has argued that the request for admissions was the fourteenth page of a single document which also contained 60 interrogatories and 3 requests for production, and that the commingling of discovery requests is disfavored by the courts. However, merely because opposer's discovery requests were contained in one document does not mean that they were commingled. The request for admissions was on a separate page of the document and bore the underlined and capitalized title REQUEST FOR ADMISSIONS. Nor has applicant demonstrated excusable neglect because it was "distracted"' by having to respond to 60 interrogatories.
Ellen J. Seeherman
Administrator, Trademark Trial and Appeal Board
*3 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: Limited to
opposer as set
forth in order
Testimony period for party in position of plaintiff to close May 4, 1990
(opening thirty days prior thereto)
Testimony period for party in position of defendant to close July 3, 1990
Rebuttal testimony period to close (opening fifteen days August 17, 1990
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.