Thursday, February 01, 2018

Precedential No. 2: TTAB Again Lets Party off the Hook Based on January 2017 Rule Changes

On June 29, 2017, the day its pretrial disclosures were due, Opposer Kid-Systeme filed a motion to reopen its time to file a motion for summary judgment. Trademark Rule 2.127(e)(1), as amended in January 2017, provides that a summary judgment motion must be filed "prior to the deadline for pretrial disclosures, as originally set or reset." The Board noted that "prior to" means the day before the deadline. Opposer missed the deadline. Would the Board reopen? Not to worry! Because opposer's motion was filed during the period of transition to the amended Rules, and because the Board clarified Rule 2.127(e)(1) in a July 21, 2017 notice issued after opposer's filing, the Board chose to consider the summary judgment motion and to treat the motion to reopen as moot. KID-Systeme GmbH v. Türk Hava Yollari Teknik Anonim Sirketi, 125 U.S.P.Q.2d 1415 (TTAB 2018) [precedential] (Order by Interlocutory Attorney Katie W. McKnight).

Before January 14, 2017, the deadline for filing a motion for summary judgment was “prior to the commencement of the first testimony period, as originally set or as reset." In January 2017, that was changed to "prior to the deadline for pretrial disclosures, as originally set or reset." The Board's July 21, 2017 clarification of Rule 2.127(e)(1) merely changed the words "prior to the deadline" to "before the day of the deadline." In any event, the Board looked kindly on opposer and its predicament, pointing to the Notice of Proposed Rulemaking of April 4, 2016, which states:

[A]ny issues that may arise concerning the transition to the revised rules for cases pending as of the effective date of the rules would be addressed by the Board and the parties on a case-by-case basis, allowing for flexibility to respond to the unique needs in each case, particularly with respect to scheduling matters.[Emphasis by the Board].

The Board therefore declared opposer's motion to reopen as moot, and it allowed applicant thirty days to respond to the motion for summary judgment.

Read comments and post your comment here.

TTABlog comment: Opposer apparently recognized that it missed the deadline under the new rules. That's why it filed a motion to reopen. So what did the transition to the new rules have to do with it? Opposer wasn't confused about the Rules.

Text Copyright John L. Welch 2018.


At 10:13 AM, Anonymous Anonymous said...

I'm more bothered that this uncontested scheduling motion required six months for a Board decision than by any other issues you've raised.

At 1:41 PM, Blogger Pamela Chestek said...

Could have missed the deadline because the deadline was set under the old rules in the docketing software and not updated. But then realized when it filing.

At 3:50 PM, Anonymous Philip Green said...

Motions are a reflection of the Constitution, notice and the opportunity to be heard. Certainly during a time when the Rules are in flux, it is better to err on the Constitutional standard than to lock out a Party.


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