Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1141803
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`Filing date:
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`06/22/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91249446
`
`Party
`
`Correspondence
`Address
`
`Defendant
`The Piano Studio
`
`GORDON G WAGGETT
`GORDON G WAGGETT PC
`228 WEST COWAN DRIVE
`HOUSTON, TX 77007
`UNITED STATES
`Primary Email: gordon@waggettlaw.com
`713-522-2270
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Other Motions/Submissions
`
`Kenichi Yagi
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`ky@am-law.com, ggw@am-law.com, jlb@am-law.com
`
`/Kenichi Yagi/
`
`06/22/2021
`
`Attachments
`
`Motion to Reopen and for Enlargement of Time.pdf(75268 bytes )
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposer,
`
`MUSIC MAKERS HOLDINGS LLC,
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`
`
`
`
`v.
`
`THE PIANO STUDIO,
`
`
`
`
`
`
`Applicant.
`
`
`
`Opposition No.: 91249446
`
`Mark: BACH N ROLL MUSIC
`ACADEMY
`
`
`Application No.: 88010945
`Publication Date: April 16, 2019
`Serial No.: 88010945
`Filing Date: June 22, 2018
`
`
`
`APPLICANT’S MOTION TO REOPEN
`DEFENDANT’S 30-DAY TRIAL PERIOD AND FOR ENLARGEMENT OF TIME
`
`Pursuant to Rule 6(b)(1) of the Federal Rule of Civil Procedure and Rule
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`509.01(b)(1) of the Trademark Trial and Appeal Board Manual of Procedure, The Piano
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`Studio (“Applicant”) files its Motion to Reopen Defendant’s 30-Day Trial Period and for
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`Enlargement of Time, and supporting the granting thereof provides as follows:
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`Summary
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`1.
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`Applicant failed to submit evidence and trial materials by the deadline due to
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`a clerical error when docketing the deadline, transposing the date of the 20th for the 10th.
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`This type of mistake constitutes “excusable neglect” under Rule 6(b)(1)(B) as interpreted
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`by the Supreme Court in Pioneer Investment Services Co. v. Brunswick Associates, L.P.,
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`507 U.S. 370 (1993).
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`Background Facts
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`2.
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`This is an opposition proceeding commenced by Opposer, Music Makers
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`Holding LLC.
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`
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`1
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`

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`3.
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`Applicant files this motion because its counsel inadvertently docketed the
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`“Defendant’s 30-Day Trial Period Ends” deadline for ten days after the actual deadline.
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`Applicant repeatedly and freely gave additional time when Opposer needed it and Opposer
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`agreed to reciprocate Applicant’s professional courtesy, but at present, Opposer has not
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`provided consent to this motion.
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`4.
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`In this instance, immediately after submitting Applicant’s pretrial disclosures,
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`Mr. Yagi, one of its counsel, notified Applicant of the submission. At that time, Applicant’s
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`counsel reviewed the amended scheduling order and Mr. Yagi advised Applicant by email
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`of the next deadline, which was the “Defendant’s 30—Day Trial Period Ends” deadline. In
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`doing so, Mr. Yagi made a typographical error and typed the deadline as “due 6/20” instead
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`of “due 6/10” as the numbers “1” and “2” are adjacent to each other on the keyboard. Then,
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`based on this email, Mr. Yagi docketed the deadline as June 21, 2021 based on the incorrect
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`“6/20” deadline because June 20, 2021, fell on a Sunday. Applicant’s trial team thereafter
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`relied on that docketing as the “Defendant’s 30-Day Trial Period Ends” deadline.
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`5.
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`On the evening of June 15, 2021, Mr. Yagi conferred with his co-counsel
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`regarding requesting from Opposer’s counsel an agreed extension of this “6/20” deadline
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`and planned to send a formal written request to Opposer’s counsel the next morning. At
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`that time, Mr. Yagi had not realized that he docketed the incorrect deadline. In fact, he only
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`realized this mistake when sending the written request for extension to Opposer’s counsel
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`on June 16, 2021.
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`6.
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`In response to Mr. Yagi’s request for an extension of time, Opposer’s counsel
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`responded that Opposer would not consent to reopen “Defendant’s 30-Day Trial Period
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`
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`2
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`

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`Ends” deadline. In Mr. Yagi’s first request to Opposer’s counsel, he did not provide the
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`background reasons. Therefore, on June 18, 2021, Applicant again requested that Opposer
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`consent to reopen and enlarge the deadline by 30 days providing Opposer’s counsel with
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`detailed explanations of why Applicant missed the deadline. Today, Opposer’s counsel
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`indicated that Opposer would reconsider whether it would oppose this motion after the
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`motion was filed. Thus, Applicant files this motion to reopen and for enlargement of time.
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`7.
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`The following is a timeline of Applicant’s agreements and willingness to
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`extend various deadlines for Opposer when Opposer needed them, which resulted in five
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`consent motions being filed by Opposer and the entry of new scheduling orders extending
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`the deadlines out by a total of 300 days (about 10 months):
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`February 25, 2020
`
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`Mid-March/Early April 2020
`
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`May 20, 2020
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`agreeing to a 30-day extension to respond to
`Applicant’s outstanding discovery as well as a
`60-day extension of the discovery deadline.
`Based on this agreement, on February 27, 2020,
`Opposer filed a consent motion to extend the
`discovery deadline as well as all subsequent
`deadlines.
`
`agreeing to an additional 60-day extension to
`respond to outstanding discovery and 60-day
`extension of the discovery period as well as all
`other case deadlines. Based on this agreement,
`on April 8, 2020, Opposer filed a consent motion
`to extend the discovery deadline as well as all
`subsequent deadlines.
`
`agreeing to a 120-day extension of all deadlines.
`Based on this agreement, on May 21, 2020,
`Opposer filed a consent motion, but because the
`online TTAB extension form did not have 120
`days as an option for extending the deadlines,
`Opposer requested a 90-day extension.
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`
`
`
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`3
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`

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`September 17, 2020
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`agreeing to an additional 30-day extension of the
`deadline to respond to outstanding discovery as
`well as a 30-day extension of the discovery
`deadline. Based on this agreement, on September
`17, 2020, Opposer filed a consent motion to
`extend the discovery deadline and all subsequent
`deadlines.
`
`
`8.
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`After these repeated agreements to extend Opposer’s deadlines, Opposer’s
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`counsel responded that Opposer would reciprocate as needed. Specifically, on September
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`17, 2020, Opposer’s counsel emailed to Mr. Yagi:
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`
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`9.
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`Further, in November 2020, Applicant agreed to an extension of “[Opposer’s]
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`Pretrial Disclosures Due” deadline as well as all subsequent deadlines, and based on this
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`agreement, on November 30, 2020, Opposer filed a consent motion to extend the deadline
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`and all subsequent deadlines for 60 days.
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`10.
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`In total, Opposer’s consent motions based on Applicant’s consent and
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`agreement for additional time resulted in 300 days (about 10 months) of extensions to the
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`docket control order.1
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`1 The last deadline (i.e., “Request for Oral Hearing (optional) Due”) on the initial scheduling order
`was January 21, 2021, and that of the current order is November 17, 2021.
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`
`
`4
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`

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`11. Applicant’s requests for extensions (as previously agreed to by Opposer’s
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`counsel) have been infrequent and for shorter periods. Because of the holidays, Applicant
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`did request and received a two-week extension of discovery responses that were due on
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`December 23, 2019. Applicant also received another extension for two weeks to
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`supplement discovery on a self-imposed deadline by Opposer. These brief extensions for
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`Applicant did not result in the need for any consent motion and thus any change to the
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`scheduling order.
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`A. MOTION TO REOPEN
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`
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`12.
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` “The Court recognizes that people make mistakes – even the most competent
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`professionals are likely to make a simple clerical error at some point in their careers.”
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`Cottman v. Naskrent, 2018 U.S. Dist. LEXIS 203327, at *9 (D. Ariz. Nov. 30, 2018). To
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`rectify this type of mistake is precisely the reason why Rule 6(b)(1)(B) exits. See FED. R.
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`CIV. P. 6 (b)(1)(B) (“When an act may or must be done within a specified time, the court
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`may, for good cause, extend the time … on motion made after the time has expired if the
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`party failed to act because of excusable neglect.”) (italics added).
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`13.
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`“The analysis to be used in determining whether a party has shown
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`‘excusable neglect’ was set forth by the Supreme Court in Pioneer Investment Services Co.
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`
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`5
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`

`

`v. Brunswick Associates, L.P., 507 U.S. 370 (1993).”2 See TBMP § 509.01(b)(1).3 In that
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`case, the Court stated that “‘excusable neglect’ is understood to encompass situations in
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`which the failure to comply with a filing deadline is attributable to negligence.” Pioneer,
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`507 U.S. at 395. Indeed, “[t]he Supreme Court has explained that ‘excusable neglect,’ [in
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`the context of Rule 6(b)(1)(B)], can encompass mistakes and carelessness: ‘Congress
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`plainly contemplated that the courts would be permitted, where appropriate, to accept late
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`filings caused by inadvertence, mistake, or carelessness, as well as by intervening
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`circumstance beyond the party’s control.” Cottman, 2018 U.S. Dist. LEXIS 203327, at *4
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`(quoting Pioneer, 507 U.S. at 388).
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`14. Also, whether the neglect is “excusable” is a flexible standard, “at bottom an
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`equitable one, taking account of all relevant circumstances surrounding the party’s
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`omission.” Pioneer, 507 U.S. at 395. The factors to consider include (1) the danger of
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`prejudice to the opposing party; (2) the length of the delay and its potential impact on the
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`proceedings; (3) the reason for the delay, including whether it was within the reasonable
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`control of the movant; and (4) whether the movant acted in good faith.” See, e.g., Pioneer
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`Inv. Servs, 507 U.S. at 395; see also Bateman v. United States Postal Serv., 231 F.3d 1220,
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`1222 (9th Cir. 2000) (citing Pioneer, 407 U.S. at 395). “Excusable neglect [under Rule
`
`
`2 Applicant is aware of case law suggesting that a mistake by counsel is not excusable neglect. See,
`e.g., Agnew v. United Leasing Corp., 680 FED. APPX. 149, 155 (4th Cir. 2017). However, Applicant
`submits that this type of draconian standard has been rejected by and is contrary to the “equitable”
`and “elastic” approach adopted by the Supreme Court in Pioneer and the TTAB in Pumpkin Ltd.
`v. The Seed Corps, 43 USPQ2d 1582 (TTAB 1997) as well as numerous other cases.
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` 3
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` While construing the term “excusable neglect” under FED. R. BANKR. P. 9006(b)(1), the Supreme
`Court noted that it was modeled after Rule 6(b). See Pioneer, 507 U.S. at 392 n.9.
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`
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`6
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`

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`6(b)(1)] is a broad inquiry determining whether neglect is excusable is an equitable
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`determination that takes account of all relevant circumstances surrounding the party’s
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`omission.” See Gumbs-Heyliger v. CMW & Associates Corp., 2017 U.S. Dist. LEXIS
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`49049, at *5 (D.V.I. Mar. 31, 2017) (internal quotations omitted but italics added). Further,
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`“Excusable neglect [under Rule 6(b)] is a somewhat ‘elastic concept,’ demanding equitable
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`determination that can ‘encompass situations in which the failure to comply with a filing
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`deadline is attributable to negligence.” Hanson v. Gladieux, 2017 U.S. Dist. LEXIS 163172,
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`at *2 (N.D. Ind. Oct. 2, 2017).
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`15.
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`Following these standards, “[g]enerally, courts are more forgiving of missed
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`deadlines caused by clerical calendaring errors, the mathematical miscalculations of
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`deadlines and mishandling of documents, but are less forgiving when deadlines are missed
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`to lawyering mishaps, such as where counsel misconstrues or misinterprets the rules or
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`make poor tactical decisions.” Scott v. Raudin McCormick, Inc., 2010 U.S. Dist. LEXIS
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`79792, at *2 (D. Kan. Aug. 6. 2010) quoted in Quarrie v. Wells, 2020 U.S. Dist. LEXIS
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`33816, at *6 n.3 (D.N.M. Feb 27, 2020).
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`16.
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`The calendaring error in this case was “simply an innocent oversight by
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`counsel” [which constitutes “excusable neglect”] rather than “legal error, such as an
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`attorney’s failure to review or understand the plain language of a rule” (which does not).
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`See Highfill v. USAA Cas. Ins. Co., 2012 U.S. Dist. LEXIS 200750, at *3-4 (N.D. Fla. Jan
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`4. 2012). Applicant’s counsel incorrectly calendared the “Defendant’s 30-Day Trial Period
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`Ends” deadline as June 21, 2021, instead of the actual deadline of June 10, 2021, through
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`a clerical, calendaring error. See also Eisenberg v. Citibank N.A., 2017 U.S. Dist. LEXIS
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`
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`7
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`

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`169182, at *8 (C.D. Calif. Oct. 11, 2017) (acknowledging that “a calendaring error … has
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`been held to constitute excusable neglect under Pioneer where other factors militate in
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`favor of the moving party”).
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`17. An analysis of the Pioneer factors clearly weighs in favor of a finding that
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`this was excusable neglect as set out below:
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`18.
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`Factor 1 – there is no danger of prejudice to the Opposer. The danger of
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`prejudice to Opposer is minimal, if any. Further, if this motion is granted then Opposer
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`would not be allowed to unfairly obtain a possible “quick victory” based on technicality.
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`See Rodriguez v. Village Green Realty, LLC, 788 F.3d 31, 47 (2d Cir. 2016) (holding that
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`cases should be decided on the merits, not on technicalities). In fact, any claim of prejudice
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`would be disingenuous at best, again especially in light of the nearly 10 months of
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`extensions Opposer requested and Applicant agreed to. Further, “prejudice generally
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`occurs where, for instance, the opposing party has lost evidence or placed substantial
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`reliance on the judgment or there is an increased potential for fraud or collusion.” Gumbs-
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`Heyliger, 2017 U.S. Dist. LEXIS 49049, at *8 (quoting Ragguette v. Premier Wines &
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`Sprits, 691 F.3d 315, 331-32 (3d Cir. 2012)). Thus, analysis of Factor 1 strongly favors a
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`finding of excusable neglect and a granting of the motion to reopen.
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`19.
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`Factor 2 – the length of delay will not have any impact on this proceeding.
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`The delay is brief (even considering Applicant’s concurrent request for a one-month
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`enlargement), especially in light of nearly 10 months of extensions that Applicant has
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`allowed to-date in response to Opposer’s multiple requests in this opposition proceeding.
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`Further, this motion is being filed well within two weeks of the actual deadline and within
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`
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`8
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`

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`one week of the discovery of the inadvertence. Although Applicant has had to devote time
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`to dealing with this reopening issue rather than preparation for trial, Applicant has
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`nonetheless been working towards preparation and filing of its Notice of Reliance and other
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`trial materials on or before June 21, 2021 (today’s date) – the erroneously calendared
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`deadline.4 Thus, analysis of Factor 2 strongly favors a finding of excusable neglect and a
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`granting of the motion to reopen.
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`20.
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`Factor 3 - the reason for the delay, including whether it was within the
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`reasonable control of the movant favors reopening. “Excusable neglect” is “not limited to
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`situations in which the failure to comply with a filing deadline is due to circumstances
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`beyond the control of the filer.” Pioneer Inv. Servs., 507 U.S. at 394. Indeed, as the Court
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`further reasoned, reading [Bankruptcy] Rule 9006(b)(1) [which was modeled after Rule
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`6(b)(1)] inflexibly to exclude every instance of an inadvertent or negligent omission would
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`ignore the most natural meaning of the word ‘neglect’ and would be at odds with the
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`accepted meaning of that work in analogous contexts.” Id. at 394-95. Analysis of Factor 3,
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`including the circumstances surrounding the typographical error in the docketing deadline,
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`likewise supports a finding of excusable neglect and the granting of the motion to reopen.
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`21.
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`Factor 4 – the movant has acted in good faith. No evidence of bad faith exists
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`such as “outright misconduct or inequitable behavior.” See Ragguette, 691 F.3d at 332.
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`Again, the mistake explained here was inadvertent and simply a result of a clerical error.
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`4 While Applicant plans to produce most (if not all) of the trial materials it intends to proffer,
`Applicant seeks a brief 1-month enlargement of time for the reasons stated below, and reserves its
`right to file supplemental trial materials during such brief enlargement of time.
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`
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`9
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`

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`There was no bad faith on Applicant’s part whatsoever with respect to the missing of this
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`deadline. Applicant’s willingness to accommodate Opposer’s prior requests for numerous
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`extensions of time and meeting all of the other deadlines to date likewise evidences that
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`Applicant has acted in good faith in this proceeding. Thus, analysis of Factor 4 strongly
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`favors a finding of excusable neglect and a granting of the motion to reopen.
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`22. Weighing of all the Pioneer Factors. In view of the above, taking into
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`account all of the relevant circumstances surrounding the Applicant’s inadvertent
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`docketing error and the equities and flexible nature considered when weighing of all of the
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`Pioneer factors leads only to one conclusion – that the reasons for the need to reopen were
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`attributable to excusable neglect. Therefore, Applicant respectfully submits that its motion
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`to reopen is meritorious and should be granted.
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`B. MOTION FOR ENLARGEMENT OF TIME
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`23. Applicant also seeks a brief enlargement of time to file for “Defendant’s 30-
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`Day Trial Period Ends.” Good cause exists here because, among other reasons, Opposer
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`produced an 84-page document as Exhibit 12 as “attorneys’ eyes only” (“AEO”) on April
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`8, 2021, filed under seal, and Mr. Waggett, one of Applicant’s counsel, immediately
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`complained about the designation of AEO to Opposer’s counsel on grounds that Opposer
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`maintained this information on its website. Opposer’s counsel responded on April 16, 2021,
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`and Opposer’s and Applicant’s counsel conferred by phone and Opposer agreed to produce
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`a version of Exhibit 12 as simply “confidential” and not AEO so that Applicant would be
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`permitted to review the document under the terms of the protective order. Opposer’s
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`counsel did not produce this “redacted” version of Exhibit 12 until May 6, 2021 - a month
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`10
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`

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`after the close of Opposer’s evidence period. However, the “confidential” version of EX.
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`12 was not a “redacted” version of the AEO EX. 12 and it is impossible for Applicant’s
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`counsel to decipher the differences between these two versions of EX 12.
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`24.
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`Further, the unexpected nature of presently having to seek to reopen has
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`caused delays and pushed back other efforts of Applicant to prepare for trial.
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`25.
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`Further, consistent with Applicant’s prior reliance on the erroneous June 21,
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`2021 deadline, Applicant has nonetheless been moving as diligently as possible to meet its
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`erroneous June 21, 2021 deadline, and presently plans to file a Notice of Reliance and other
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`trial materials on or before June 21, 2021, which Applicant believed, although incorrectly,
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`was the “Defendant’s 30-Day Trial Period Ends” deadline. However, extension is further
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`requested because Applicant’s counsel needed to focus on and respond to this
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`miscalendaring issue, including legal research for and preparation of this motion to reopen
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`and for enlargement of time, and such efforts consumed the additional days that would
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`normally be spent finalizing trial preparation. Although Applicant plans to make
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`submissions today (testimony, Notice of Reliance), it reserves its rights to supplement
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`those filings during such extension.
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`For the above reasons, Applicant respectfully requests that the Board grant
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`Applicant’s motion, reopen the “Defendant’s 30-Day Trial Period Ends” deadline, extend
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`that deadline (and all subsequent deadlines) by 30 days, and grant such other and further
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`relief to which it is entitled.
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`11
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`Respectfully submitted,
`
`ADAIR MYERS STEVENSON YAGI PLLC
`
`By:
`
`/Gordon Waggett/
`Gordon G. Waggett
`State Bar No. 20651700
`Email: ggw@am-law.com
`Kenichi Yagi
`State Bar No. 24013787
`Email: ky@am-law.com
`24 Greenway Plaza, Suite 1305
`Houston, Texas 77046
`Phone 713-522-2270
`Fax
`713-522-3322
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`ATTORNEYS FOR APPLICANT,
`THE PIANO STUDIO
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing instrument was served
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`by electronic mail on June 22, 2021, as follows:
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`Molly R. Littman
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`
`
`
`Sheldon H. Klein
`Lathrop GPM LLP
`
`
`Lathrop GPM LLP
`80 South 8th Street
`
`The Watergate—Suite 700
`500 IDS Center
`600 New Hampshire Avenue, NW
`Minneapolis, MN 55402
`Washington, DC 20037
`
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`Email: sheldon.klein@lathorpgpm.com Email: molly.littman@lathropgpm.com
`Phone: 202-295-2200
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`Phone: 612-632-3000
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`/Kenichi Yagi/
`Kenichi Yagi
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`12
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`CERTIFICATE OF CONFERENCE
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`I, Gordon Waggett, certify that, on June 18, 2021, I emailed Mr. Sheldon Klein
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`(Opposer’s counsel) requesting Opposer to reconsider its opposition to Applicant’s
`request to reopen and to enlarge the “Defendant’s 30-Day Trial Period Ends” deadline.
`On June 21, 2021, Mr. Klein indicated that the motion was currently opposed by Opposer,
`but that Opposer would reconsider once filed. I then provided Mr. Klein with a draft of
`the motion for his further consideration. As of the filing of this motion, Mr. Klein has not
`responded further.
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`/Gordon G. Waggett/
`Gordon G. Waggett
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`DECLARATION
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`I, Kenichi Yagi, state that I have read the foregoing Motion to Reopen Defendant’s
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`30-Day Trial Period and for Enlargement of Time, and that the factual statements therein
`are true and correct to the best of my information, knowledge and belief. I declare under
`penalty of perjury that the foregoing is true and correct.
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`/Kenichi Yagi/
`Kenichi Yagi
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`13
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