IP Law Daily, TRADEMARK—TTAB: Opposition judgment upheld after applicant's undue delay in finding counsel, (Oct 17, 2024)

By Steven Melendez

The Board declined to grant relief from judgment after an overseas trademark applicant repeatedly failed to appoint counsel in defending an opposition.

The Trademark Trial and Appeal Board (TTAB) upheld a judgment against a foreign trademark applicant after the company repeatedly didn't respond to proceedings or appoint U.S. counsel (Tang v. Terasako and Shenzhen Dekelan Technology Co., Ltd., No. 91285334 (T.T.A.B. Oct. 7, 2024)).

The applicant, Terasako and Shenzhen Dekelan Technology Co., Ltd., saw its initial counsel withdraw in September 2023, and the TTAB gave it time to appoint U.S. counsel in the matter. The company first failed to appear and then, after an order to show cause why judgment shouldn't be entered against it, filed motions to dismiss the opposition proceeding. But the motions "were filed in Applicant's pro se capacity and did not address the U.S.counsel requirement," according to the TTAB's ruling in the matter.

The Board then gave the company more time to find representation, and by April 2024, when it had failed to respond, sustained the opposition, denying the trademark application. Then, later in April and May, the company filed motions "to extend the opposition" but failed to serve the opposing party or provide proof of service, according to the TTAB ruling. In June, the company filed a petition to reopen the matter through temporary counsel, and appointed new representation in July. The petition was denied, and company filed a "motion for relief from final judgment."

The company relied upon a provision in the Federal Rules of Civil Procedure that allows a judgment to be set aside based on "excusable neglect." The TTAB relied on factors from the Supreme Court decision in Pioneer Inv. Servs. Co. v. Brunswick Assocs. L.P., 507 U.S. 380, 395 (1993), in evaluating the request.

The Board found no evidence of prejudice to the opposer from allowing the motion, which weighs in the trademark applicant's favor, and found no evidence of good or bad faith on the applicant's part, treating that factor as neutral.

But in considering the "length and impact of the delay," the TTAB noted that the motion was filed five months after judgment was initially granted. "In addition, granting the motion would require resetting the schedule to account for suspension of this proceeding from more than a year ago," according to the ruling. "This would be significantly detrimental to the Board’s orderly administration of this proceeding because, when suspended, the next deadline was initial disclosures, but had Applicant timely appointed U.S. counsel, this proceeding could be in the trial briefing stage."

And in considering the reason for the delay, another Pioneer factor, the TTAB noted that the trademark applicant said it "did not understand" the proceeding and "was not fully aware of the procedural requirements." The applicant also noted that it is difficult to search remotely for a lawyer, especially given Chinese government restrictions on Google searches. But the TTAB found that the company hadn't shown that its failure to find a lawyer was "outside Applicant's reasonable control," noting multiple orders calling for it to appoint counsel and the fact that the company doesn't appear to have sought counsel until the judgment was entered. Even if Google was restricted, the Board noted, the company hadn't shown that other "search engines or resources" weren't available to find a lawyer.

"Insofar as Applicant has not presented an acceptable explanation for its failure to timely appoint U.S. counsel, this combined with the length of the delay occasioned by this failure outweigh any lack of prejudice to Opposer," the Board ruled, declining to set aside the existing judgment.

The Case is Opposition No. 91285334.

Judge: Allard, M.

Attorneys: Clement Cheng (New Hope Law PC) for Terasako and Shenzhen Dekelan Technology Co., Ltd. Adriano Pacifici (Intellectual Property Consulting, Inc.) for Yong Tang.

Companies: Terasako and Shenzhen Dekelan Technology Co., Ltd.

Cases: Trademark USPTO