United States: Precedential No. 4: Finding Excusable Neglect Based On Attorney's Medical Issues, TTAB Re-Opens Petitioner's Testimony Period

Last Updated: March 12 2019
Article by John L. Welch

In this brew-ha-ha over the mark COFFEE STUDIO, Respondent Reign LLC moved for dismissal after petitioner failed to submit any evidence or testimony during its testimony period. Petitioner Studio then moved (1) to strike Reign's dismissal motion due to improper service and (2) to re-open its testimony period on the ground that its evidentiary failure was excusable. The Board granted both of petitioner's motions. The Coffee Studio LLC v. Reign LLC dba Coffee Studio, Cancellation No. 92066245 (February 28, 2019) [precedential].

Improper Service Respondent Reign did not serve its motion for dismissal directly on Petitioner Studio, but instead relied on the email notice automatically generated by ESTTA that was sent to petitioner's counsel, with a link to the motion as it appears in TTABVUE. Reign argued that petitioner received actual notice of the motion via the Board's email, as evidenced by petitioner's filing a response to the motion.

The Board pointed out that Rule 2.119(a) requires that every submission filed in an inter partes proceeding, except for the petition to cancel or a notice of opposition, must be served upon the other party together with a certificate of service. In other words actual service is required, and it must be effected via e-mail, absent an agreement otherwise. See Rule 2.119(b). Respondent did not comply with the rules, and so the Board granted petitioner's motion to strike. [The Board noted that even if it accepted Reign's motion, under its inherent authority, it would have denied the motion in light of petitioner's showing of excusable neglect.]

Excusable Neglect: Because Petitioner Studio sought to re-open a time period that had passed, it was required to show "excusable neglect" under Fed. R. Civ. P. 6(b)(1)(B). The Supreme Court clarified the meaning and scope of "excusable neglect" in Pioneer Inv. Servs. Co. v. Brunswick Assocs. Ltd. P'ship, 507 U.S. 380 (1993).

[The determination is] at bottom an equitable one, taking account of all relevant circumstances surrounding the party's omission. These include. . . [1] the danger of prejudice to the [non-moving party], [2] the length of the delay and its potential impact on judicial proceedings, [3] the reason for the delay, including whether it was within the reasonable control of the movant, and [4] whether the movant acted in good faith. Pioneer, 507 U.S. at 395.

The third Pioneer factor - the reason for the delay and whether it was within the reasonable control of the movant - is generally considered the most important factor. See Pumpkin, 43 USPQ2d at 1587 n.7 and cases cited therein. See also Luster Prods., Inc. v. Van Zandt, 104 USPQ2d 1877, 1878 (TTAB 2012).

As to the first Pioneer factor, there was no evidence of prejudice to Respondent Reign, such as the unavailability of witnesses. See Pumpkin, 43 USPQ2d at 1587.8 As to the fourth factor, there was no evidence of bad faith by Petitioner Studio.

With regard to the second factor - the length of delay and its impact - the Board must consider "the total length of the delay, including the time for the Board to consider the pending motions." See Pumpkin, 43 USPQ2d at 1588. The Board found the delay caused by petitioner's failure to offer testimony or evidence during its testimony period, and the parties' motions arising therefrom, to be "minimal." [about eight and one-half months, seven of which occurred after the motion papers were filed - ed.]. The Board noted that Studio submitted its proposed testimonial affidavits and notices of reliance when it moved to reopen its testimony period. "This factor weighs in Petitioner's favor as it is a relatively short period of time and Petitioner attempted to mitigate any delay."

As to the critical third factor, counsel for Petitioner Studio asserted that "she was hospitalized with a serious medical condition on April 2, 2018, was intermittently hospitalized requiring medical leave since then, and that in her absence only an inexperienced first-year associate was available to take over her duties in this case." Respondent Reign questioned why a medical condition in April had any effect on a June date for filing trial evidence, and why the associate did not seek suspension or an extension of time based on the medical emergency. The Board sided with Petitioner Studio, but provided little explanation:

We find, taking into account the totality of the circumstances of this specific case discussed in Petitioner's motion to reopen, that Petitioner's failure to take appropriate action prior to the close of its testimony period was not within Petitioner's reasonable control.

The Board observed that it expects that petitioner's counsel "has made preparations for improved staff coverage in the event illness strikes again, and does not expect any delay to remaining trial periods or briefing."

Considering and balancing the four Pioneer factors, the Board found that Petitioner Studio's failure to act in timely fashion was the result of excusable neglect, and so the motion to reopen was granted.

The TTABlog

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
Email Address
Company Name
Confirm Password
Mondaq Newsalert
Select Topics
Select Regions
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions