IP Law Daily, TRADEMARK—TTAB: Late filing of trial brief due to mistaken reading of rule was excusable, (Apr 17, 2014)

By Cheryl Beise, J.D.

An interlocutory attorney’s order granting an opposer’s motion to strike an applicant’s late-filed final brief on the merits as untimely was set aside by Trademark Trial and Appeal Board on equitable grounds in consideration of the facts of the case (Promark Brands Inc. v. GFA Brands, Inc., April 11, 2014, Rogers, G.). The applicant, GFA Brands, Inc., mistakenly believed that Trademark Rule 2.119(c)—providing an additional five days for filing certain responsive documents served by mail—applied to its trial brief.

Trademark Rule 2.128 governs “Briefs at final hearing.” Subsection (a)(1) provides, in relevant part, that the “brief of the party in the position of defendant, if filed, shall be due not later than thirty days after the due date of the first brief.”

Under Rule 2.128(a)(1), GFA’s final brief on the merits was due September 11, 2013, 30 days after the date opposer Promark Brands Inc.’s brief was due. GFA actually filed its brief on September 17, 2013, six days after it was due. The Board interlocutory attorney granted Promark’s motion to strike GFA’s brief as untimely; and denied the applicant’s cross-motion to reopen the time for filing the brief.

GFA then filed a petition to the Director pursuant to Trademark Rule 2.146, seeking “reconsideration” of the interlocutory attorney’s order striking its brief as clear error. The Director has delegated authority to review petitions seeking review of Board interlocutory orders to the Commissioner for Trademarks. The Commissioner’s office determined that it was appropriate for GFA’s petition to be considered in the first instance by the Board, as a request for reconsideration.

In its cross-motion to reopen the time for filing its brief, GFA explained why its brief was late. First, GFA mistakenly believed that the additional five days provided under Trademark Rule 2.119(c)—governing responses to documents serviced by mail—applied to its trial brief. Second, due to “unexpected problems that arose in connection with e-filing,” GFA’s brief was filed at 11:10 p.m. Central Time on September 16, which was 12:10 a.m. Eastern Time on September 17, “making its filing about ten minutes after what GFA Brands’ counsel had believed to be the deadline.”

In their filings, both parties analyzed the late-filing issue under the Supreme Court’s decision in Pioneer Investment Services Co. v. Brunswick Associates Ltd., 507 U.S. 380 (1993), as applied by the Board in Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582 (TTAB 1997). The parties also cited other Board decisions addressing whether a party’s neglect of a deadline was excusable. However, as none of those decisions had been issued as a precedent by the Board, they were not binding.

The lack of precedential decisions, in the Board’s view, underscored the fact-specific nature of inquiries regarding whether neglect of a matter is excusable. “Questions of such character arising in Board cases necessarily must be left to resolution by exercise of the discretion of the Board,” the Board said.

In Pioneer, the Supreme Court noted that the inquiry is “at bottom an equitable one, taking account of all relevant circumstances surrounding the party’s omission. These include…” and listed four factors. The Board remarked that “the list of factors in this manner clearly suggests that all other factors bearing on the party’s omission may be considered; and broader equitable considerations are not to be overlooked.”

GFA contended that the interlocutory attorney clearly erred (1) in concluding that the second Pioneer factor—the length of the delay and its potential impact on judicial proceedings)—weighed “somewhat against applicant” and (2) by focusing on the third Pioneer factor—the reason for the delay, including whether it was within the reasonable control of the movant—in striking its brief.

The Board found no clear error in the interlocutory attorney’s analysis. In fact, the Court in Pioneer stated that “mistakes construing the rules do not usually constitute ‘excusable neglect.’” The Board nevertheless chose to exercise its discretion to consider additional circumstances in this case, cautioning that its decision was “based solely on the particular facts of this case, and should not be taken as an indication that a similar result would be attainable in another case that differs in any particular fact or circumstance.”

The Board noted that the full exchange of briefs between the parties would be valuable to the Board, especially because the case was set for oral argument and there was large record that included survey evidence, expert testimony, and numerous disputes about evidentiary matters.

The Board also was not unsympathetic to GFA’s counsel’s mistake in relying on Trademark Rule 2.119(c). “We are aware that mistaken reliance on that rule has occurred in other Board cases. While the Board’s attorneys and judges are very familiar with Board application of this rule, as well as its inapplicability to briefing deadlines that are set by Trademark Rule 2.128, the occasional erroneous coupling of the two rules suggests some confusion among the bar,” the Board said.

Even Section 801.02(b) of the Trademark Board Manual of Procedure (“TBMP”), discussing the “Defendant’s Main Brief,” does not mention the inapplicability of Rule 2.119(c) the filing deadlines, the Board noted. Moreover, there are no precedential cases cited in the TBMP regarding the inapplicability of Rule 2.119(c) to briefing deadlines. “Certainly, it would appear useful to consider incorporating additional clarifying language or cross-references in the rules,” the Board commented.

Considering the circumstances and facts of the case, the Board set aside the order striking GFA’s brief.

The case is Opposition Nos. 91194974 and 91196358.

Attorneys: Johanna M. Wilbert (Quarles & Brady LLP) for GFA Brands, Inc. Matthew J. Cavanagh (McDonald Hopkins LLC) for Promark Brands Inc. and H.J. Heinz Co.

Companies: GFA Brands, Inc.; Promark Brands Inc.; H.J. Heinz Co.

Cases: Trademark USPTO