TTAB Denies Petitioner's Motion to Re-open Discovery Because of Failure to Prove Excusable Neglect

In a nonprecedential interlocutory decision recently reported in the USPQ, the Board denied Petitioner's motion to re-open discovery (which was filed on the last day of its testimony period) but re-set testimony dates to allow Petitioner time to submit its case in chief. The Board ruled that Petitioner, who asserted that the parties had agreed to suspend proceedings for the purposes of settlement, failed to establish excusable neglect for its failure to act. Jodi Kristopher, Inc. v. International Seaway Trading Corp., 88 USPQ2d 1798 (TTAB 2008) [not precedential].

Respondent's INTRIGUE brand footwear
Under Pumpkin Ltd. v. The Seeds Corp., 43 USPQ2d 1582 (TTAB 1997), the standard to be applied to Petitioner's motion is "whether petitioner has demonstrated excusable neglect for its failure to act." The Board has adopted the Supreme Court's four-factor test set out in Pioneer Invest. Servs. Co. v. Brunswick Assoc. Ltd., 507 U.S. 280 (1993). The third factor, the reason for the delay, is the most important.

Petitioner stated that its failure to take discovery was due to its good faith belief that the parties had agreed "to suspend proceeding during the discovery period for the purposes of settlement." The Board, however, observed that attempts at settlement, though generally favored, do not excuse Petitioner's failure to act. Petitioner could have sought an extension of discovery or a suspension of the proceeding. Instead it waited until nearly three months after discovery closed before filing its motion.

Although the Board found no evidence of bad faith, nor of prejudice to Respondent, it did find that "from a docket management standpoint ... the delay has a significant potential impact on the judicial proceedings because reopening discovery would extend proceedings by eight months (six months for discovery and a sixty-day period between discovery and trial) which runs counter to the Board’s interest in expeditious adjudication of this case."

If therefore found that Petitioner had failed to show excusable neglect, and it denied the motion to re-open discovery.

As to the motion to re-set the testimony periods, the standard for granting such an extension of time is good cause. See FRCP 6(b)(1) and TBMP Section 509. The TTAB "generally is liberal in granting extensions before the period to act has elapsed so long as the moving party has not been guilty of negligence or bad faith and the privilege of extensions is not abused." Finding no bad faith or negligence on the part of Petitioner, and noting that there were settlement discussions during the testimony period, the Board exercised its discretion to re-set the testimony periods.

Text Copyright John L. Welch 2008.