TTAB Denies Motion For Relief from Judgment After Applicant Failed to Appoint U.S. Counsel

When Chinese Applicant Terasako Technology's attorney withdrew from this opposition, Terasako was given time to appoint new U.S. counsel to satisfy Rule 2.11. When Terasako did not respond, the Board issued a show cause order in November 2023, asking "why the notice of opposition should not be sustained based on Applicant’s failure to appoint U.S. counsel." Again, Terasako failed to respond, nor did counsel appear, and so, on April 3, 2024 the Board entered judgement against Terasako, sustaining the opposition. New counsel appeared on July 2nd and on August 29th he filed a motion for relief from judgment under FRCP 60 (b). The Board denied the motion. Yong Tang v. Terasako and Shenzhen Dekelan Technology Co., Ltd., Opposition No. No. 91285334 [not precedential].

Relief from a final judgment is an extraordinary remedy to be granted only in exceptional circumstances or when other equitable considerations exist.

Fed. R. Civ. P. 60(b)(1) permits the Board to "relieve a party or its legal representative from a final judgment, order, or proceeding" because of "mistake, inadvertence, surprise, or excusable neglect." Terasako’s motion was timely because it was filed within one year of judgment.

The Board applied the Supreme Court's Pioneer analysis to determine whether Terasako's delay in appointing U.S. counsel was the result of "excusable neglect."

[A]t bottom [the decision is] an equitable one, taking account of all relevant circumstances surrounding the party's omission. These include. . . [1] the danger of prejudice to the [nonmovant], [2] the length of the delay and its potential impact on judicial proceedings, [3] the reason for the delay, including whether it was within the reasonable control of the movant, and [4] whether the movant acted in good faith. (quoting Pioneer).

Several courts have stated that the third Pioneer factor, the reason for the delay and whether it was in the control of the moving party, might be the most important factor.

As to the first factor, since Opposer Yong Tang did not respond to the FRCP 60(b) motion, there was no evidence of prejudice, and so this factor favored Terasako.

As to the second, the motion was filed five months after judgment was entered. Moreover, granting the motion would require resetting the schedule to account for suspension of the proceeding from more than a year ago. "This would be significantly detrimental to the Board’s orderly administration of this proceeding because, when suspended, the next deadline was initial disclosures, but had Applicant timely appointed U.S. counsel, this proceeding could be in the trial briefing stage." And so, this factor weighed against a finding of excusable neglect.

As to the third factor, Terasako asserted that it did not understand the TTAB procedures but the Board pointed to five orders concerning the U.S.-counsel requirement for foreign-domiciled parties. Terasako's post-judgment submissions did not explain "what, if any, efforts Applicant undertook in the many months preceding judgment to secure U.S. counsel; in fact, it appears Applicant did not begin contacting potential U.S. counsel until after judgment was entered." In short, Terasako did not produce any evidence "demonstrating that its months-long failure to comply with the U.S.-counsel requirement, of which it was made aware a number of times, was outside Applicant’s reasonable control." And so, this factor weighed against Terasako.

Finally, because there was no evidence of Terasako’s good or bad faith, the fourth factor was neutral.

Balancing the Pioneer factors, the Board concluded that Terasako's failure to present an acceptable explanation for its failure to timely appoint U.S. counsel, combined with the length of the delay caused by this failure, outweighed any lack of prejudice to opposer. And so, the Board denied the motion for relief from judgment.

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TTABlogger comment: You can't just fiddle and diddle for a year and expect the Board to be sympathetic.

Text Copyright John L. Welch 2024.