UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`Mailed: August 13, 2010
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`Opposition No. 91191227
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`Virgin Enterprises
`Limited
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`v.
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`Cat Eat Cat Productions
`Inc.
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`Linda Skoro, Interlocutory Attorney
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`This case now comes up on applicant’s motion to
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`reopen1 discovery, filed May 26, 2010. Opposer has
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`objected.
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`As grounds for its request to reopen the discovery
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`period, which closed on March 31, 2010, applicant
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`states that counsel was under the mistaken belief that
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`opposer’s counsel was acting in good faith in
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`scheduling discovery matters; that this lack of good
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`faith became apparent to applicant’s counsel in May,
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`when he requested attending opposer’s testimonial
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`depositions by telephone;2 and that there is no
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`1 Together with its motion to reopen, applicant requested an
`order allowing applicant’s counsel to attend opposer’s
`testimonial depositions by telephone.
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` 2
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` It is also noted that applicant’s counsel states that it
`knowingly allowed discovery to close, not seeking an
`extension of time or reopening at the time discovery closed.
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`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
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`
`
`
`Mailed: August 13, 2010
`
`Opposition No. 91191227
`
`Virgin Enterprises
`Limited
`
`
`
`
`
`v.
`
`Cat Eat Cat Productions
`Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`
`
`
`
`Linda Skoro, Interlocutory Attorney
`
`This case now comes up on applicant’s motion to
`
`
`
`reopen1 discovery, filed May 26, 2010. Opposer has
`
`objected.
`
`
`
`As grounds for its request to reopen the discovery
`
`period, which closed on March 31, 2010, applicant
`
`states that counsel was under the mistaken belief that
`
`opposer’s counsel was acting in good faith in
`
`scheduling discovery matters; that this lack of good
`
`faith became apparent to applicant’s counsel in May,
`
`when he requested attending opposer’s testimonial
`
`depositions by telephone;2 and that there is no
`
`
`1 Together with its motion to reopen, applicant requested an
`order allowing applicant’s counsel to attend opposer’s
`testimonial depositions by telephone.
`
` 2
`
` It is also noted that applicant’s counsel states that it
`knowingly allowed discovery to close, not seeking an
`extension of time or reopening at the time discovery closed.
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`
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`prejudice to opposer to reopen discovery to take the
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`requested depositions.3
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`Opposer has objected, contending applicant has not
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`provided excusable neglect to warrant a reopening of
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`the discovery period; that applicant waited until one
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`week before the close of discovery to request
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`scheduling of depositions of third-party witnesses;4
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`that on March 30, 2010, opposer responded by simply
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`requesting applicant to provide it with copies of the
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`transcripts for the depositions that were taken, only
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`to learn that applicant stated that they were not going
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`forward with the depositions;5 and that applicant’s
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`failure to act was within applicant’s control, thereby
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`justifying denial of the motion to reopen discovery.
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`It was when, according to applicant, opposing counsel failed
`to cooperate in allowing him to attend testimonial
`depositions by telephone that he believed he could move to
`reopen, having established excusable neglect due to
`opposer’s lack of good faith.
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` 3
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` Applicant’s claim of no prejudice is based on its learning
`of opposing counsel’s unannounced absence from the country
`and thus, counsel’s unavailability before the close of
`discovery; and applicant believes that opposer’s witnesses
`and evidence are still available.
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` 4
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` While applicant’s counsel started attempting to schedule a
`time for depositions which were mutually convenient on March
`12, 2010, he finally issued a notice on March 23, 2010,
`scheduling the depositions for March 31, 2010, the last day
`of discovery. Further, as opposer contends, the notices
`were for third-party witnesses with no evidence that
`applicant had actually done anything to obtain their
`attendance, including an oral deposition in London, which
`was clearly outside the rules.
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` 5
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` See Exhibits 3 and 4 to opposer’s response.
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`2
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`In its reply, applicant’s counsel states he
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`believed the witnesses were within opposer’s control as
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`they were officers of companies related to opposer.
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`Pursuant to Fed. R. Civ. P. 6(b)(2), the requisite
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`showing for reopening an expired period is that of
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`excusable neglect. In Pioneer Investment Services
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`Company v. Brunswick Associates Limited Partnership,
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`507 U.S. 380, 395 (1993), and as discussed by the Board
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`in Pumpkin, Ltd. v. The Seed Corps, 43 USPQ2d 1582
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`(TTAB 1997), the U.S. Supreme Court set forth factors
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`to be considered in determining excusable neglect.
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`Those factors include: (1) the danger of prejudice to
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`the nonmovant; (2) the length of the delay and its
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`potential impact on judicial proceedings; (3) the
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`reason for the delay, including whether it was within
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`the reasonable control of the movant, and (4) whether
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`the movant acted in good faith. In subsequent
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`applications of this test, several courts have stated
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`that the third Pioneer factor, namely the reason for
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`the delay and whether it was within the reasonable
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`control of the movant, might be considered the most
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`important factor in a particular case. See Pumpkin,
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`supra at n.7.
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`Accordingly, we turn to the third factor and find
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`that applicant’s failure to request a timely extension
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`3
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`of the discovery period was, as applicant’s counsel
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`states, based on the belief that opposer’s counsel
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`acted in good faith in scheduling discovery matters.
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`More telling is counsel’s statement that
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`Applicant would not have sought to re-open the
`discovery period and would have proceeded without
`its discovery depositions but now that the same
`tactics are being applied in the scheduling of
`trial depositions, applicant believes that it is
`in good faith entitled to additional time to
`obtain its discovery depositions.
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` (Motion p.7).
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` The statements offered by applicant in support of
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`its motion to reopen does not constitute a circumstance
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`which meets the excusable neglect standard when, in
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`fact, it had a responsibility to move for an extension
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`of time when he was unable to work with opposing
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`counsel on a schedule at the time discovery closed. It
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`cannot now request a re-opening of a period, long-since
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`closed, based on a perceived unfairness. Such action
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`was wholly within the reasonable control of applicant.
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`See Pumpkin, supra, and cases cited therein.
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`With regard to the second Pioneer factor, we find
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`that the delay caused by applicant’s failure to request
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`a reopening of the discovery period when it cannot
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`propound discovery is significant. The Board’s growing
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`docket of active cases, and the resulting, inevitable
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`increase in motion practice before the Board,
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`4
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`increasingly strains the Board’s limited resources.
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`Both the Board and parties before it have an interest
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`in minimizing the amount of the Board’s time and
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`resources that must be expended on matters, such as the
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`motion decided herein, which come before the Board
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`solely as a result of one party’s total failure to
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`monitor its own litigation. The Board’s interest in
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`deterring such failure weighs against a finding of
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`excusable neglect under the second Pioneer factor.
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`As for the fourth factor, whether applicant acted
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`in good faith, we find that there is no evidence of bad
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`faith on the part of applicant.
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`On balance, we find that applicant’s failure to
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`timely act before the opening of opposer’s testimony
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`period was not caused by factors constituting excusable
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`neglect, and, accordingly, applicant’s motion to reopen
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`the discovery period is hereby DENIED.
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`As for applicant’s request to be able to attend
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`testimonial depositions telephonically, that request is
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`hereby GRANTED. It is noted that opposer states that
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`it would ordinarily agree to such a request, however,
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`in this case, it appeared inconsistent with applicant’s
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`request to be able to take discovery depositions in
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`person. Because the reopening of the discovery period
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`5
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`has been denied, applicant may attend opposer’s
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`testimonial depositions by telephone.6
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`Proceedings are resumed and trial dates are reset
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`as indicated below.
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`Plaintiff's 30-day Trial Period
`Ends
`Defendant's Pretrial Disclosures
`Defendant's 30-day Trial Period
`Ends
`Plaintiff's Rebuttal Disclosures
`Plaintiff's 15-day Rebuttal Period
`Ends
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`September 30, 2010
`October 15, 2010
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`November 29, 2010
`December 14, 2010
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`January 13, 2011
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`In each instance, a copy of the transcript of
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`testimony together with copies of documentary exhibits
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`must be served on the adverse party within thirty days
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`after completion of the taking of testimony. Trademark
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`Rule 2.125.
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`Briefs shall be filed in accordance with Trademark
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`Rules 2.128(a) and (b). An oral hearing will be set only
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`upon request filed as provided by Trademark Rule 2.129.
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`.o0o.
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`6 The conditions set out by opposer as to attendance by
`telephone: that attendance be at applicant’s expense and
`that there are speakerphone facilities available at the
`deposition locations, are to be met.
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`6
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