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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
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`January 31, 2022
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`Cancellation No. 92076531 (parent)
`Cancellation No. 92076334
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`Fashion One Television LLC
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`v.
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`FASHIONTV.COM GmbH
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`
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`Rebecca Stempien Coyle, Interlocutory Attorney:
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`On October 4, 2021 Respondent filed its combined motion for judgment on the
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`pleading and, alternatively, for summary judgment.1 On October 25, 2021, Petitioner
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`filed a “Preliminary Response for Respondent’s Motion for Judgment on the Pleadings
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`and Alternatively for Summary Judgment”.2 In this submission Petitioner “requests
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`opportunity and additional time” to respond to Respondent ’s motion. Respondent
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`then filed a response opposing Petitioner’s requested relief.3 On January 17, 2022,
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`Petitioner filed its “Response on Motion for Summary Judgment”.4
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`Inasmuch as Petitioner’s October 25, 2021 motion asserts it needs additional
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`discovery and further requests an extension of time to file a response to Respondent’s
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`1 16 TTABVUE.
`2 18 TTABVUE.
`3 19 TTABVUE.
`4 20 TTABVUE.
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`Cancellation No. 92076531
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`motion, the Board construes Petitioner’s submission as a combined motion for
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`discovery pursuant to Fed. R. Civ. P. 56(d) and, in the alternative, to extend time to
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`file its responsive brief.
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`Pursuant to Fed. R. Civ. P. 56(d), a party that believes it cannot effectively oppose
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`a motion for summary judgment without first taking discovery may file a motion with
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`the Board for time to take the needed discovery. See also Celotex v. Catrett, 477
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`U.S.317, 326 (1987). In order to establish that it is entitled to discovery under Fed.
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`R. Civ. P. 56(d), Petitioner must show through affidavit or declaration “reasons why
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`discovery is needed in order to support its opposition” to Respondent ’s motion for
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`summary judgment. Opryland USA Inc. v. The Great Am. Music Show Inc., 970 F.2d
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`847, 23 USPQ2d 1471, 1474 (Fed Cir. 1992) (citing Keebler Co. v. Murray Bakery
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`Products, 866 F.2d 1386, 1389, 9 USPQ2d 1736, 1739 (Fed. Cir. 1989)). As the movant
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`in the Rule 56(d) motion, Petitioner bears the burden of persuasion in establishing
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`why the Board should grant it the opportunity to seek specifically identified
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`information in order to respond to Respondent’s motion for summary judgment. Rule
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`56(d) is not a substitute for full-blown pre-trial discovery. Under Rule 56(d),
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`Petitioner is limited to discovery it must have in order to respond to Respondent’s
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`motion for summary judgment. See T. Jeffrey Quinn, TIPS FROM THE TTAB;
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`Discovery Safeguards in Motions for Summary Judgment; No Fishing Allowed, 80
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`Trademark Rep. 413 (1990). Cf. Fleming Cos. v. Thriftway Inc., 21 USPQ2d 1451
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`(TTAB 1991), aff’d, 36 USPQ2d 1551 (S.D. Ohio 1992).
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`
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`2
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`Cancellation No. 92076531
`
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`It is not sufficient that the party seeking discovery under Rule 56(d) simply state
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`that it needs discovery in order to respond to the motion for summary judgment;
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`rather the party seeking discovery under Rule 56(d) must state why it is unable,
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`without discovery, to present facts sufficient to show the existence of a genuine
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`dispute of material fact for trial. See Fed. R. Civ. P. 56(d); TBMP § 528.06 and cases
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`cited therein. The motion should set forth with specificity the areas of inquiry needed
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`to obtain the information necessary to enable the party to respond to the motion for
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`summary judgment. See Fed. R. Civ. P. 56(d); TBMP § 528.06; Murray Bakery
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`Products, 9 USPQ2d at 1739.
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`In support of its motion, Petitioner argues it served discovery requests on
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`Respondent, but Respondent filed its pending motion instead of responding to those
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`requests.5 Petitioner then “speculate[s]” that Respondent did so because it “has
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`nothing to substantiate actual use”.6
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`This is insufficient to support a motion for Rule 56(d) discovery. While Petitioner
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`asks that Respondent’s motion be denied “as untimely and [in] violation of the
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`prescribed process” and Respondent be ordered to “comply with the discovery
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`schedule”, Petitioner has not stated or established, either through its motion or any
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`declaration, that it is unable to present sufficient facts to show the existence of a
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`genuine dispute of material fact for trial without the requested discovery. See Sweats
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`Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1799 (Fed. Cir.
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`1987). Moreover, to the extent Petitioner seeks an order compelling Respondent’s
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`5 18 TTABVUE 5.
`6 Id.
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`3
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`Cancellation No. 92076531
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`responses to all of the outstanding discovery, Petitioner has failed to provide any
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`information from which the Board could discern whether the outstanding requests
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`are limited to the issues raised in Respondent’s motion.7
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`In view thereof, Petitioner has not made the requisite showing of a need for further
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`discovery to prepare a substantive response to Respondent ’s pending motion.
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`Petitioner’s construed Rule 56(d) motion is therefore denied.
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`The Board next addresses Petitioner’s request for an extension of time to respond
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`to Respondent’s motion. The standard for allowing an extension of a prescribed period
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`prior to the expiration of that period is good cause. See Fed. R. Civ. P. 6(b); TBMP
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`§ 509.01. The Board is generally liberal in granting extensions before the period to
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`act has lapsed, so long as the moving party has not been guilty of negligence or bad
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`faith and the privilege of extensions is not abused. Trans-High Corp. v. JFC Tobacco
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`Corp., 127 USPQ2d 1175, 1177 (TTAB 2018) (citing Am. Vitamin Prod., Inc. v.
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`DowBrands Inc., 22 USPQ2d 1313 (TTAB 1992)). “The moving party, however,
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`retains the burden of persuading the Board that it was diligent in meeting its
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`responsibilities and should therefore be awarded additional time.” Id. (citing Nat’l
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`Football League v. DNH Mgmt., LLC, 85 USPQ2d 1852, 1854 (TTAB 2008))
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`Petitioner states it requires additional time to respond to Respondent’s motion
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`because while it “intends to introduce” extensive material in support of its response,
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`the “key associate of Petitioner in charge of Intellectual Property matters” passed
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`7 Petitioner did not provide the Board with a copy of the outstanding requests.
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`4
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`Cancellation No. 92076531
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`away in April 2021.8 After reviewing the parties’ arguments and keeping in mind the
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`Board’s liberal application of the Rule 6(b) standard, the Board finds that there is no
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`evidence of negligence or bad faith on the part of Petitioner in seeking the extension,
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`Respondent has indicated no specific prejudice, and the Board finds none, which
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`would result from the extension, and Petitioner has not abused the privilege of
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`extensions. In view thereof, Petitioner has demonstrated good cause for the requested
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`extension of time to respond to Respondent’s motion. The Board further notes that
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`consideration of a Rule 56(d) motion tolls the time for filing a response to the motion
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`for summary judgment.
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`Accordingly, the Board grants Petitioner’s request for an extension of time to
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`respond to Respondent’s motion. Moreover, inasmuch as Petitioner its “Response on
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`Motion for Summary Judgment” on January 17, 2022, the Board accepts this
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`submission as Petitioner’s response brief in opposition to Respondent’s motion.
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`However, the time to file a reply brief may not be extended. Trademark Rule
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`2.127(e)(1). Accordingly, Respondent’s reply brief, if any, must be filed within
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`TWENTY DAYS of Petitioner’s January 17, 2022 response. Trademark Rule
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`2.127(e)(1).
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`Proceedings otherwise remain suspended pending disposition of Respondent’s
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`motion for judgment on the pleading and, alternatively, for summary judgment.
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`8 18 TTABVUE 6-7. Petitioner also states “many records [are] not in the direct possession of
`Respondent’s representative.” Id. In view of the preceding statement concerning the passing
`of Petitioner’s associate, it is unclear if the reference to “Respondent’s representative” is a
`typographical error.
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`5
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