Tip from the TTABlog: never fail to respond to admission requests. Respondent Hua Yongfu did just that, and it led to summary judgment and an order to cancel his registration for the mark LEARN-JOURNEY for various products in Class 16. Petitioner pleaded several grounds for cancellation, including abandonment. When Respondent failed to respond to its admission requests, Petitioner moved for summary judgment and the Board granted the motion. The Learning Journey International, L.L.C. v. Hua Yongfu, 2024 U.S.P.Q.2d 1609 (TTAB 2024) [precedential].
FRCP 36(a)(3) provides that “[a] matter is admitted unless, within 30 days after being served, the party to whom the request is directed serves on the requesting party a written answer or objection addressed to the matter and signed by the party or its attorney.” Respondent did not respond to petitioner’s requests for admission in any manner, and so the requests were deemed admitted by operation of law.
As a result of the failure to respond, the subject matter of the requests is “conclusively established unless the [Board], on motion, permits the admission[s] to be withdrawn or amended” under Fed. R. Civ. P. 36(b), or reopens the time to respond to the admission requests “so that the admissions would not be deemed admitted as put.”
Respondent’s only argument in opposition to the motion was that “Petitioner cannot rely on Rule 36(a)(3) as their requests for admission asked Respondent to admit what it had already denied in a responsive pleading.” The Board was unmoved, citing Perez, 297 F.3d at 1269 (“[t]he mere fact that a party has previously denied the matter about which an admission is sought does not obviate the need to respond to a Rule 36 request for admissions”), quoting U.S. v. Young, 1990 WL 135734, at *2 (S.D.N.Y. Sept. 10, 1990).
Respondent had “two separate avenues for relief: … either (1) move to reopen its time to respond to the admission requests because its failure to timely respond was the result of excusable neglect under Fed. R. Civ. P. 6(b)[(1)(B)], or (2) move to withdraw and amend its admissions pursuant to Fed. R. Civ. P. 36(b).” Giersch, 85 USPQ2d at 1307. It did neither.
While the Board generally takes a liberal approach in construing responses to motions based on deemed admissions as motions to withdraw or amend the admissions or, to a lesser degree, to reopen time, Respondent has made no showing that we can construe as going to the two-part test prescribed under Rule 36(b) or to a showing of excusable neglect as required under Rule 6(b)(1)(B).
The Board noted that when matter has been conclusively established under Rule 36, it is taken as a judicial, rather than an evidential, admission that “cannot be rebutted by contrary testimony or ignored by the [Board] simply because it finds the evidence presented by the party against whom the admission operates more credible,” and this “applies equally to those admissions made affirmatively and those established by default, even if the matters admitted relate to material facts that defeat a party’s claim.” Am. Auto. Ass’n (Inc.) v. AAA Legal Clinic of Jefferson Crooke, P.C., 930 F.2d 1117, 19 USPQ2d 1142, 1144 (5th Cir. 1991)>
Responded admitted (by default) that it had not sold any of the goods listed in the registration and did not have an intention to do so. Even though it submitted some evidence in opposition to the summary judgment motion that might suggest some use of the mark, "such evidence cannot raise a genuine dispute as to the material facts that have been conclusively established through Respondent’s deemed admissions."
The Board therefore granted the motion for summary judgment on the ground of abandonment.
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TTABlogger comment: So, it's worthwhile to serve admission requests that go to the heart of the case even if you expect denials, since this scenario might arise.
Text Copyright John L. Welch 2024.<
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