Wednesday, June 15, 2016

TTAB Grants Rule 2.132 Motion to Dismiss IODINE Opposition for Failure to Prosecute

The Board dismissed this opposition to registration of the mark IODINE for various goods and services, granting applicant's Rule 2.132(a) motion for judgment for failure to prosecute because opposer had filed no evidence and taken no testimony. Opposer failed to show "good and sufficient cause" why judgment should not be entered against it. Iodine Software, LLC v. Iodine, Inc., Opposition No. 91217516 (June 13, 2016) [not precedential].

After opposer's testimony period closed on January 24, 2016, application filed a motion to dismiss  under Rule 2.132(a), which provides that "If the time for taking testimony by any party in the position of plaintiff has expired and that party has not taken testimony or offered any other evidence, any party in the position of defendant may ... move for dismissal on the ground of the failure of the plaintiff to prosecute. *** In the absence of a showing of good and sufficient cause, judgment may be rendered against the party in the position of plaintiff. "

In its (untimely) response to the motion, opposer stated that it had agreed with applicant's settlement proposal as of February 16, 2016 and applicant's counsel had confirmed that they were awaiting further instructions from applicant. Opposer asked the Board to deny the motion and to allow the parties time to complete the settlement.

The Board then asked for "documentation of the settlement," but opposer supplied only a statement that its attorney had sent the latest settlement proposal to applicant on March 28, 2016, and that the parties were still negotiating.

Applicant responded that the parties had not reached settlement and that the negotiations did not constitute good and sufficient cause to avoid judgment.

The Board observed that the "good and sufficient cause" standard is equivalent to the "excusable neglect" standard under FRCP 6(b)(1)(B) for re-opening of the testimony periods. [A very difficult standard to meet - ed.]. The Board, as usual, turned to the four-factor test in Pioneer Inv. Serv. Co. v. Brunswick Assoc. Ltd., 507 U.S. 380 (1993).

The third Pioneer factor is the most important: the reason for the delay, including whether it was within the reasonable control of the moving party. Here, attempts at settlement did not excuse opposer's failure to act within the prescribed time limit. Opposer should have sought an extension of time or a suspension of its discovery period prior to the close of same. Opposer failed to explain why it allowed its testimony period to lapse. "Opposer brought this case and, in so doing, took responsibility for moving forward on the established schedule." In short, opposer's failure to act was within its reasonable control.

Moreover, under the second Pioneer factor, the delay in proceedings, "has a significant potential impact on this case." The proceeding is over unless the Board reopens the testimony periods, which would delay resolution of the case by several months "and runs counter the Board's interest in an expeditious adjudication of its cases."

There was no evidence of bad faith on opposer's part, nor any specific prejudice to applicant beyond mere delay.

On balance, however, the Board found that opposer had failed to show excusable neglect that would warrant proceeding any further with the case.

And so the Board granted the motion and dismissed the opposition with prejudice.

Read comments and post your comment here.

TTABlog comment: Once the testimony period closes, a party is up the creek without a paddle.

Text Copyright John L. Welch 2016.


At 12:32 PM, Anonymous Anonymous said...

I gather the with prejudice result means opposer cannot file a cancellation.

But was this case fully litigated for purposes of B&B Hardware? Discovery completed. Plaintiff/Opposer's testimony period completed.

At 6:27 PM, Blogger John L. Welch said...

B&B involves issue preclusion. You are talking about claim preclusion. Under the latter doctrine a petition for cancellation would be barred.


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