Tuesday, June 03, 2008

TTABlog Practice Pointer: Failure to Answer Admission Requests May Be Harmful to Your Application's Health

Applicant Fine Spirits was surely in poor spirits after its lame attempt to fend off a summary judgment motion in a Section 2(d) opposition brought by Gallo Winery. Gallo asserted that Fine's mark FALCON for distilled spirits was likely to cause confusion with Gallo's registered mark FALCON RIDGE for wine. Thanks in no small part to Fine's failure to respond to Gallo's admission requests, the Board agreed with Gallo. E. & J. Gallo Winery v. Fine Spirits Distribution, LLC, Opposition No. 91175854 (May 22, 2008) [not precedential].

Fine Spirits first moved to suspend proceedings, claiming settlement negotiations. Gallo objected, insisting that there were no on-going negotiations. The Board denied Fine's motion, noting that any suspension "is subject to a request to resume at any time" and that Gallo would likely file such a request.

Next, Fine sought a reopening of the time to respond to Gallo's summary judgment motion, claiming that its failure to respond in timely fashion "was due to an impending death in his family, email transmission problems with opposer’s counsel, and that applicant did not receive opposer’s discovery requests." The Board applied the excusable neglect standard of Pumpkin Ltd. v. The Seeds Corp., 43 USPQ2d 1582 (TTAB 1997), which adopted the Supreme Court's four-factor test regarding excusable neglect as set out in Pioneer Invest. Servs. Co. v. Brunswick Assoc. Ltd., 507 U.S. 280 (1993). The Board noted that "several courts have stated that the third Pioneer factor, namely the reason for the delay and whether it was within the reasonable control of the movant, might be considered the most important factor in a particular case."

Here the Board found that "applicant's failure to respond to the motion for summary judgment was caused by its complete failure to act and to monitor the time periods in this proceeding. Such action was wholly within the reasonable control of applicant."

"While the Board is sympathetic to counsel’s personal circumstances, as opposer points out, perhaps there were other members of counsel’s firm who could have either stepped in or requested an extension of time. Docketing errors and breakdowns do not constitute excusable neglect."

The Board found that, on balance, applicant's failure to timely respond to the summary judgment motion was not caused by factors constituting excusable neglect, and so it denied applicant's request to reopen the time for response to the summary judgment motion.

Turning to the merits of the motion, Gallo asserted that Applicant's failure to answer its requests for admission removed any genuine issue of fact regarding likelihood of confusion. [Fine had not requested withdrawal or amendment of its admissions.] These admissions established that the involved goods are "related and competitive," that the goods are "impulse items, sold to customers at retail," that such consumers "will assume they are related," and that Gallo has priority of use. The Board therefore granted the motion for summary judgment.

TTABlog comment: The word "movant" always reminds me of the song "High Hopes":

Once there was a little old ant.
Thought he'd move a rubber tree plant.
Nothing could make that ant scant.
He kept pushing that plant.

Text Copyright John L. Welch 2008.


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