UNITED STATES PATENT AND TRADEMARK OFFICE
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`I
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`2900 Crystal Drive
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`.
`
`TrademarkTrialandAppealBoard
`i
`\ Arlington,Virginia22202-3513
`.
`Opposition No. 100,014
`Opposition NoI[l00,049
`Opposition No. 100,196
`Opposition No. 100,206
`Opposition No. 100,264
`Opposition No . 101, 472
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`Sterling Software Inc.
`
`Before, Cissel, Wendel and Holtzman, Administrative
`Trademark Judges.
`
`By the Board:
`
`This case now comes up on opposer’s July 31, 2000
`
`motion to consolidate proceedings, applicant's June 30, 2000
`
`motion to dismiss for failure to prosecute in Oppositionlflo.
`
`100,014, and applicant's response to the notice of default
`
`in Opposition No. 100,206. Opposer has responded to
`applicant's motion to dismiss in opposition No. 100,014;
`
`applicant has not responded to opposer’s motion for
`
`consolidated proceedings.
`
`
`
`I
`
`2900 Crystal Drive
`
`.
`
`TrademarkTrialandAppealBoard
`i
`\ Arlington,Virginia22202-3513
`.
`Opposition No. 100,014
`Opposition NoI[l00,049
`Opposition No. 100,196
`Opposition No. 100,206
`Opposition No. 100,264
`Opposition No . 101, 472
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`l,
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`Sterling Software Inc.
`
`Before, Cissel, Wendel and Holtzman, Administrative
`Trademark Judges.
`
`By the Board:
`
`This case now comes up on opposer’s July 31, 2000
`
`motion to consolidate proceedings, applicant's June 30, 2000
`
`motion to dismiss for failure to prosecute in Oppositionlflo.
`
`100,014, and applicant's response to the notice of default
`
`in Opposition No. 100,206. Opposer has responded to
`applicant's motion to dismiss in opposition No. 100,014;
`
`applicant has not responded to opposer’s motion for
`
`consolidated proceedings.
`
`
`
`Opposition Nos.
`
`100,014, 100,049, 100,196, I1o0,2os, 100,264 and
`
`101,472
`
`Consolidation
`
`In support of its motion, opposer states that opposer
`
`has instituted six proceedings against applicant opposing
`
`the registration of applicant's marks;
`
`that each opposition
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`is based on the same grounds;
`
`that the marks are similar anti
`
`the parties identical; and that in the interest of judicial
`
`economy,
`
`the proceedings can be presented on the same recorci
`
`without “appreciable inconvenience or prejudice.”
`
`The Board has reviewed each of the above identified
`
`proceedings, and each proceeding involves the same parties
`
`and at least some of the same questions of law and fact.
`
`When cases involving common questions of law or fact
`
`are pending before the Board, consolidation of such cases
`
`may be appropriate.
`
`See Fed. R. Civ. P. 42(a); and.TBMP
`
`Section 511.
`
`In addition,
`
`the Board,
`
`in its discretion,Inay
`
`order cases consolidated prior to joinder of issue (i.e”
`
`before an answer has been filed in each case).1
`
`Inasmuch as the Board finds it appropriate toi
`
`consolidate the above identified proceedings,
`
`the <3pposer's
`
`motion to consolidate is granted.
`
`See, also, TreuiemarkIh1le
`
`2.127(a).
`
`Opposition Nos. 100,014, 100,049, 100,196, 100,200
`
`100,264, and 101,472 will be presented on the sanma
`
`records
`
`
`
`100,049,
`1 Answers have been filed in Opposition Nos. 100,014,
`100,196, 100,264, and 101,472. Answer has not been fjfiledin
`Opposition No. 100, 206.
`
`
`
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`‘
`
`Opposition Nos.
`101,472 _
`
`100,014, 100,049, 100,196, 100,206, 100,264 and
`I
`
`and briefs.
`
`The record will be maintained in Opposition No.
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`100,014 as the “parent” case, but all papers filed in these
`
`cases should include all proceeding numbers in ascending
`
`order.
`
`Response to Notice of Default as to Opposition No. 100,206
`
`Answer was due on November 10, 1999.
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`A notice of
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`default was issued in Opposition No. 100,206 on.April 3,
`
`2000, and applicant was allowed time to show cause why
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`default judgment should not be entered against it.
`
`On April 18, 2000, applicant responded to the notice of
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`default alleging that it never received, and the Board never
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`issued,
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`a resumption order lifting the suspension in.this
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`case, and as a result, it was not aware of any due date for
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`filing its answer.
`
`Although the six-month suspension period as set.f0rth
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`in the Board order of October 14, 1998 had lapsed,
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`and no
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`resumption order had been issued by the Board, applicant
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`exercised its right of resumption by filing severi ccnsenteci
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`requests to extend time to answer subsequent
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`to the
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`expiration of the six month suspension period.2 Wluile
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`successive extensions of time to extend undercut apmflicant's
`
`position that proceedings were not resumed,
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`the toteflity of
`
`the circumstances herein,
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`including consolidatiori of
`
`___________________
`
`the
`2 Prior to receiving a resumption order from the Board,
`better practice would have been for applicant to file a motion
`to resume proceedings rather than successive motions to extend
`its time to answer once the six month suspension period expired.
`
`
`
`Opposition Nos.
`101,472
`
`100,014, 100,049, 100,196, 100,206, 100,254 and
`‘
`’
`
`proceedings, warrant setting aside the notice of default.3
`
`Thus, notice of default is discharged and applicant is
`
`answer .
`
`The Board notes that there have been numerous
`
`extensions filed,
`
`totaling over three and.a half (3 %)
`
`years, ostensibly to allow the parties to pursue settlanent.
`
`However,
`
`the Board will not grant infinite extensions of
`
`time, even with consent. Thus, no further extensions of
`
`time to file an answer will be permitted.
`
`In the event that
`
`an answer is not filed in the time allowed, default judgment
`
`will be entered against applicant in Opposition No. 100,206.
`
`Motion to Dismiss as to Opposition No. 100,014
`
`On March 1, 2000,
`
`the Board issued an order allowing
`
`applicant thirty days in which to file an answer,
`
`and
`
`reiterating that the discovery and trial dates wouldzmanain
`
`as set in the Board order of January 6, 2000 (whjxflladopted
`
`the discovery and trial dates set forth in the parties’
`
`November 11, 1999 consented motion to extend).
`
`Applicant's answer, filed on March 31, 2000,
`
`is noted
`
`and entered.
`
`___._________________________________________________________
`
`3 Applicant filed seven consented requests to extend its time to
`answer for thirty day periods on April 16, 1999, May 17, 1999,
`June 14, 1999, July 15, 1999, August 11, 1999, September 13,
`1999, and October 14, 1999.
`The consented motion of October 14,
`1999 requested an extension up to November 10, 1999 for
`applicant to file its answer.
`
`
`
`Opposition Nos.
`101,472
`
`100,014, 1oo,o49, 100,196, 1oo,2os, 100,264 and
`
`As set forth in the parties’ November 11, 1999 motion,
`
`discovery in this proceeding closed on February 27, 2000,
`
`and the testimony period for opposer concluded on May 27,
`2000.
`I
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`On June 30, 2000, applicant filed a motion to dismiss
`Opposition No. 100,014 because of opposer’s failure to take!
`
`testimony.
`
`In support of its motion to dismiss, applicant states
`
`that the testimony period closed on May 27, 2000;
`
`that
`
`neither the applicant nor its attorney have been informed of
`
`any intention on the part of opposer to take testimony; and
`
`that as a result of opposer’s failure to take testimony,
`
`opposer cannot meet the burden of prooffor supporting this
`
`opposition because it cannot show it will be damaged by the
`
`issuance of the applicant's registration or that it has
`
`priority over applicant.
`
`In response, opposer states that the parties have spent
`
`four years in settlement negotiations which are still
`
`ongoing;
`that on March 1, 2000,
`the Board granted applicant
`additional time to answer the notice of opposition;
`that
`
`opposer never received an answer to the notice of opposition
`
`and assumed applicant was in default;
`
`that in the weeks
`
`prior to applicant's filing of the motion to dismiss,
`
`opposer’s counsel attempted repeatedly to Contact
`
`applicant's counsel and left messages for applicant's
`
`
`
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`Opposition Nos-
`101,472
`
`100,014, 100,049, 100,196, 100,206, 100,264 and
`
`counsel indicating a desire to discuss the status of the
`
`matter, but applicant's counsel did not return his calls;
`
`that having never been served with applicant's answer,
`
`oppposer assumes applicant is in default, and as a result,"
`
`applicant should have no standing to move for dismissal; and
`
`that judgment should be entered against applicant for
`
`failure to file an answer.
`
`Applicant has not filed a reply to 0pposer’s opposition
`
`to applicant's motion to dismiss.
`
`Trademark Rule 2.132(a) provides that when the party in
`
`the position of plaintiff fails to take testimony during the
`
`time allowed,
`
`judgment may be entered against plaintiff in
`
`the absence of a showing of good and sufficient cause. The
`
`“good and sufficient cause” standard,
`
`in the context of this
`
`rule,
`is equivalent to the excusable neglect standard which
`would have to be met by a motion under Fed. R. Civ.
`15.
`
`6(b) (2)
`
`to reopen the plaintiff's testimony period. See
`
`Hewlett—Packard Co. v. Olympus Corp., 931 F.2d 1551, 18
`
`UsPQ2d 1710 (Fed. Cir. 1991).
`
`In determining excusable neglect,
`
`four factors are
`
`considered:
`
`1) danger of prejudice to the nonmovant; 2)
`
`length of the delay and potential impact on judicial
`
`proceedings 3)reason for the delay,
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`including whether it.was
`
`within the control of the movant; and 4) whether the movant
`
`
`
`SW
`
`_f;;’-
`
`Opposition Nos.
`101,472
`
`100,014, 100,049, 100,196, 100,206, 100,254 and
`
`acted in good faith.
`
`See Pumpkin Ltd. v. The Seed Corps, 43
`
`USPQ2d 1582 (TTAB 1997).
`In this case,
`the prejudice and length of delay are
`
`minimal since the parties have spent four years in ongoing
`settlement discussions and numerous extensions have been
`
`granted by the Board in this proceeding for that purpose.
`Moreover, although any delay that resulted from opposer’s
`
`failure to take testimony was because of the mistaken
`
`assumption that applicant was in defaultfl opposer did.make
`
`reasonable efforts to ascertain the status of the matter.
`
`However, applicant's attorney did not return opposer”s phorua
`
`calls to apprise opposer that applicant had in fact filed an
`
`answer and that opposer should proceed with its testim0ny.5
`
`Thus, opposer has shown that, under the circumstances, its
`
`delay in taking action was reasonable.
`
`In view thereofl
`
`applicant's motion to dismiss for failure to prosecutejs
`
`denied and dates are reset as indicated below.
`
`Discovery and trial dates in the consolidated
`
`proceedings are reset as follows:
`
`_______§_{—_j———:———-
`4 Although opposer states that it never received applicant's
`answer,
`the answer filed by applicant includes a certificate of
`service to opposer, dated March 31, 2000.
`A copy of the answer
`and accompanying certificate of service are enclosed herewith
`for opposer.
`5 After finally reaching applicant on July 25, 2000 and learning
`from applicant that an answer had been timely filed, opposer
`immediately filed this motion to reopen on July 26, 2000.
`
`
`
`Opposition Nos.
`
`100,014, 100,049, 100,196, !00,2oe, 100,264 and
`
`101,472
`
`THE PERIOD FOR DISCOVERY TO CLOSE:
`
`December 15, 2000
`
`30—day testimony period for party in
`.position of plaintiff to close:
`
`March 15, 2001
`
`30-day testimony period for party in
`position of defendant
`to close:
`
`May 14, 2001
`
`15-day rebuttal testimony period'for
`plaintiff to close:
`
`June 28, 2001
`
`In each instance, a copy of the transcript of testimony
`
`together with copies of documentary exhibits, must be served
`
`on the adverse party within thirty days after completion of
`
`the taking of testimony. Trademark Rule 2.125.
`
`Briefs shall be filed in accordance with Trademark Rule
`
`2.128(a) and (b). An oral hearing will be set only upon
`
`request filed as provided by Trademark Rule 2.129.
`
`The parties are reminded that, due to the numerous
`
`extensions requests in these proceedings dating back four
`
`years, any further extensions will be looked on with
`
`disfavor and denied absent a showing of good cause.
`
`See
`
`Board order March 8, 2000, Opposition No. 100,196; Board
`
`Order dated March 6, 2000, Opposition No. 101,472,
`
`and Board
`
`order dated March 1, 2000, Opposition no. 100,014.
`
`If the parties seek any extensions to facilitate
`
`settlement they must establish good cause by providing
`
`a report on the progress of the settlement
`
`negotiations.
`
`Such report must include:
`
`a recitation
`
`of issues that have been resolved,
`
`issues that remain
`
`
`
`Opposition Nos.
`
`100,014, 100,049, 100,196, !00,206, 100,264 and
`
`101,472
`
`to be resolved, and a firm timetable. for resolution.
`
`Absent such a report, any future motion to extend or
`
`‘Suspend will be looked upon with disfavor and may be
`
`denied ,
`
`even though agreed to by the parties.
`
`??4;/
`
`R. F. Cissel
`
`
`
`Judges, Trademark Trial
`and Appeal Board
`
`
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