Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA151840
`ESTTA Tracking number:
`07/18/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91151254
`Defendant
`ONEIDA INDIAN NATION OF NEW YORK
`ONEIDA INDIAN NATION OF NEW YORK
`BOX 1, ROUTE 5
`VERNON, NY 13476
`
`LISA PELLER LONDON & CHRISTIE BATY HEINZ
`FINNEGAN, HENDERSON, FARABOW, GARRETT, & DUNNER
`901 New York Ave., N.W.
`WASHINGTON, DC 20001-4413
`UNITED STATES
`timothy.lemper@finnegan.com
`Other Motions/Papers
`Timothy A. Lemper
`timothy.lemper@finnegan.com, david.kelly@finnegan.com,
`christie.heinze@finnegan.com, pamela.scully@finnegan.com,
`linda.mcleod@finnegan.com
`/Timothy A. Lemper/
`07/18/2007
`Response and Cross-Motion for Judgment 2.132(a) with Supporting Declaration
`filed 7-18-2007.pdf ( 37 pages )(2389456 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ONEIDA LTD.,
`
`Consolidated
`
`Mark: ONEIDA
`
`Opposer,
`
`V.
`
`Opposition No. 91151254 (parent)
`Serial No. 76034695
`
`Mark: ONEIDA ll ONLINE
`
`ONEIDA INDIAN NATION OF NEW YORK,
`_
`AI0I0"Ca“i-
`
`Opposition No_ 91151404
`Serial No. 75842211
`
`APPLICANT’S COMBINED OPPOSITION TO OPPOSER’S
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`MOTION TO EXTEND AND APPLICANT’S
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`CROSS-MOTION FOR JUDGMENT UNDER TRADEMARK RULE 2.1321a1
`
`I.
`
`INTRODUCTION
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`Oneida Ltd. (“Opposer”) has not taken or submitted any testimony in this case.
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`On the very last day of its testimony period, Opposer moved for an extension. Opposer
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`claims that its last-minute extension is warranted because an unnamed executive (who
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`is not identified as a witness) resigned on May 21, 2007, prior to the opening of its
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`testimony period, causing an increased workload and scheduling difficulties for one of
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`its two intended testimony witnesses, Paul Gebhardt. Opposer also suggests that it
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`expected that Applicant would consent to a last-minute extension of its testimony period
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`because it had done so in the past. Further, Opposer mentions the parties’ past
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`settlement discussions, which ended several months ago, as a possible justification for
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`its motion.
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`None of these explanations, however, constitute good cause to grant Opposer’s
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`last-minute extension request. Opposer delayed until just four business days before the
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`close of its testimony period to contact Applicant about its alleged deposition scheduling
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`difficulties and an extension, and it waited until the very last day of its testimony period
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`

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`to file the instant motion. Moreover, during its entire thirty-day testimony period,
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`Opposer failed to take the testimony of any other witnesses (including he other
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`unnamed witness), failed to introduce any other evidence, and failed to even notice any
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`depositions. Opposer has not given any detailed explanations for its failure to take
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`these actions during the testimony period or its failure to file a motion to extend earlier in
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`its testimony period. Nor has Opposer demonstrated why it was unable to take these
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`actions in a timely manner. The reason is clear —nothing prevented Opposer from
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`taking such steps. Here, Opposer’s delay in filing the instant motion, and its failure to
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`present any testimony evidence in this case was completely within its own control and
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`the result of its own lack of diligence and unreasonable delay.
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`Having failed to take or submit any testimony during the prescribed time period,
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`the Board should enter judgment against Opposer for failure to prosecute this case
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`under Trademark Rule 2.132(a). As detailed below, the justifications for Opposer’s
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`motion to extend do not demonstrate good cause, let alone meet the rigorous standards
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`of excusable neglect.
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`II.
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`RELEVANT FACTS
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`Opposer filed its Notice of Opposition more than five years ago, on March 25,
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`2002. This opposition proceeding is now in its sixth year, having been extended or
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`suspended 12 times.
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`On December 29, 2006, in response to one of Opposer’s previous requests to
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`extend its testimony period, the Board noted the numerous extensions and suspensions
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`in this proceeding and advised that the parties would have to show good cause for any
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`further extensions of time.
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`

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`On February 27, 2007, Opposer again filed a motion to extend its testimony
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`period. Applicant consented to that motion because the parties had not yet completed
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`the exchange of their discovery documents. The parties subsequently exchanged their
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`discovery documents by March 5, 2007.
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`True to its word, the Board issued an order on March 9, 2007, requiring Opposer
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`to show good cause for its request to extend its testimony period.
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`In its response filed
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`on March 27, 2007, Opposer asserted that the extension was necessary because, at
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`the time, the parties had not yet exchanged their discovery documents. Opposer also
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`noted that the parties had discussed settlement, although it acknowledged that the
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`parties “have elected to proceed with the merits of the case. .
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`.
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`(Opposer’s Resp. to
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`Order to Show Cause, Docket No. 33, p. 3.) Accordingly, by the time Opposer filed its
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`response to the Board’s Show Cause Order, the parties had completed the exchange of
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`discovery documents, and settlement discussions had ceased.
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`On April 24, 2007, the Board issued an order granting Opposer’s extension
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`request, and reset Opposer’s testimony period to open on May 29, 2007 and close June
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`28, 2007.
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`Between February 27, 2007 and June 22, 2007, almost four full months,
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`Applicant did not receive any communication from Opposer about settlement or
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`testimony.
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`(Declaration of Timothy A. Lemper 1] 2) (hereinafter “Lemper Decl.”). Then,
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`on Friday, June 22, 2007, counsel for Applicant received an email from Opposer’s
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`counsel at 7:33 p.m. in the evening—just four business days before the close of
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`Opposer’s testimony period on June 28th. Opposer’s counsel’s email stated:
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`Tim — As you know, we are currently in the midst of our Testimony
`Period. We have two witnesses to take testimony from and have been
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`

`
`I
`having a great deal of difficulty scheduling a mutually agreeable time.
`have no idea what your or David's schedule might be but I suspect that
`we will not be able to find a time between now and the close of our
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`Testimony Period in which to complete these depositions. Would you
`client be willing to grant Oneida Ltd. yet another extension to the
`Testimony Period so that we can try to identify a mutually convenient
`time for the witnesses and attorneys? I look forward to your response.
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`(Id. at 1] 3 & Ex. 1.) This was the first communication that Applicant received from
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`Opposer concerning its testimony period that opened on May 29, 2007.
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`(Id. at 1] 4.)
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`Significantly, as reflected in the email, Opposer did not serve deposition notices for its
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`two witnesses, it did not identify the witnesses, and it did not identify or propose dates
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`or identify locations for their depositions.
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`(Id.)
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`On June 25, 2007, the next business day after receiving Opposer’s counseI’s
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`Friday evening email, AppIicant’s counsel advised Opposer’s counsel in writing that
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`Applicant would not consent to any further extensions of Opposer’s testimony period.
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`(Id. at 1] 5 & Ex. 2.) Applicant received no further communications from Opposer until
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`after the close of Opposer’s testimony period, when Applicant received a copy of
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`Opposer’s motion to extend its testimony period, which it filed on the last day of its
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`testimony period.
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`(Id. at 1] 6.) Between Opposer’s counseI’s email on June 22, 2007,
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`and the close of Opposer’s testimony period on June 28, 2007, Opposer did not serve
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`any notices to take testimonial depositions, did not serve and file any Notices of
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`Reliance, and did not take or submit any other testimony in this case. (See id. at 1] 7.)
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`III.
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`THE BOARD SHOULD DENY OPPOSER’S MOTION TO EXTEND ITS
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`TESTIMONY PERIOD
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`A.
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`Opposer Must Show That Its Motion is Supported By Good Cause
`and Not Necessitated By Its Lack of Diligence or Unreasonable Delay
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`Opposer’s motion to extend its testimony period, which was filed on the last day
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`of its testimony period, constitutes a motion to extend time under Fed. R. Civ. P. 6(b).
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`

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`See TBMP 509.01 (explaining the difference between a motion to extend and a motion
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`to reopen). Section 509.01 (a) states:
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`A motion to extend must set forth with particularity the facts said to
`constitute good cause for the requested extension; mere conclusory
`allegations lacking in factual detail are not sufficient. Moreover, a party
`moving to extend time must demonstrate that the requested extension
`of time is not necessitated by the party’s own lack of diligence or
`unreasonable delay in taking the required action during the time
`previously allotted therefor. The Board will “scrutinize carefully” any
`motion to extend time, to determine whether the requisite good cause
`has been shown.
`
`See TBMP 509.01 (a) (emphasis added). Moreover, and as specifically stated under
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`Trademark Rule 2.121 (a)(1), if a motion to extend is denied, dates may remain as
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`originally set or as reset.
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`Thus, to prevail, Opposer must set forth specific facts demonstrating: (1) that the
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`requested extension is supported by good cause; (2) that Opposer has been diligent
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`during the prescribed time period; and (3) that Opposer has not unreasonably delayed
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`taking action. As detailed below, Opposer has failed to satisfy these standards.
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`B.
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`Opposer’s Motion is Necessitated By Its Own Lack of Diligence
`and Unreasonable Delay in Submitting Its Case
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`A party’s motion to extend its testimony period should be denied where, as here,
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`it is necessitated by the party’s own lack of diligence and unreasonable delay. See
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`TMBP 509.01(a). See e.g., Baron Philippe de Rothschild S.A. v. Sty/—Rite Optical Mfg.
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`Co., 55 USPQ2d 1848, 1851 (TTAB 2000) (applicant’s motion to extend discovery
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`denied when counsel knew of unavailability of witness a month before, yet delayed until
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`last day to seek an agreement on an extension of time); Procyon Pharm. Inc. v. Procyon
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`Biopharma lnc., 61 USPQ2d 1542, 1543-44 (TTAB 2001) (no detailed information
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`regarding petitioner's apparent difficulty in preparing and submitting its evidence or why
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`

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`petitioner waited until the last day of its testimony period to request the extension);
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`Fair/ine Boats plc v. New Howmar Boats Corp., 59 USPQ2d 1479, 1480 (TTAB 2000)
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`(motion to extend denied when filed on last day and moving party failed to provide
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`detailed information regarding difficulty identifying and scheduling witnesses’ testimony).
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`The Board’s decision in Fair/ine Boats is on point.
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`In that case, the plaintiff filed a
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`motion to extend on the very last day of its testimony period.
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`In support of its motion,
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`the plaintiff argued that the extension was necessary to take the testimony deposition of
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`of two witnesses (i.e., the president of its U.S. subsidiary and a possible second witness
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`not yet identified). Plaintiff also maintained that difficulty identifying a witness and
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`constant travel made it impossible to schedule depositions prior to the deadline due to
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`the inability to coordinate the witnesses and attorneys’ schedules.
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`in denying the motion to extend, the Board was “dismayed” and held that
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`the record is devoid of any explanation as to why petitioner waited until
`the day before its testimony period closed to request the extension.
`Petitioner brought this cancellation proceeding in May 1997 and, thus,
`carries the burden of going forward in a timely manner. The Board
`clearly set forth petitioner's present testimony period in the July 13,
`1999 order, and petitioner had a duty to diligently plan how it would
`prove its case during that prescribed testimony period. Waiting until
`the commencement, or later, of that period to identify its witnesses—
`and the resulting inability to schedule those witnesses for testimony
`due to conflicting schedules—does not, in our view, constitute good
`cause for the requested extension.
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`59 USPQ2d at 1480.
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`Here, as in Fair/ine Boats, Opposer’s request to extend its testimony period is
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`necessitated by Opposer’s own lack of diligence and unreasonable delay in presenting
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`its case in chief. Opposer asserts that it worked diligently to prepare and file its Motion
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`on the last day of its testimony period after it learned that Applicant would not consent to
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`an extension. (See Opposer’s Motion 1] 7.) However, Opposer learned of the
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`resignation of its Consumer Products VP on May 21, 2007, and delayed for more than a
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`month before contacting Applicant about an extension just four business days before
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`the close of Opposer’s testimony period. Moreover, Opposer necessarily learned prior
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`to June 20, 2007 that Mr. Gebhardt was attending to business matters and only
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`available for deposition on that date, but did not contact Applicant about its alleged
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`scheduling difficulties and did not even serve a notice of deposition.
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`lndeed, Opposer
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`fails to state with particularity facts demonstrating that it took any steps whatsoever to
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`identify, notice, and take the depositions of its intended witnesses; to arrange for other
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`employees to provide testimony on Opposer’s behalf; or to prepare and submit notices
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`of reliance for any other evidence during its case in chief.
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`C.
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`Opposer Has Failed to Show Good Cause for Its Motion
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`Opposer offers three justifications for its last-minute request to extend its
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`testimony period:
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`(1) the difficulty of scheduling one witness (Paul Gebhardt) caused by
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`the unexpected resignation of another executive; (2) Opposer’s expectation that
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`Applicant would consent to extend its testimony period because it had done so in the
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`past; and (3) the mere possibility of settlement based on the parties’ past discussions,
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`which had ended months ago. As detailed below, however, none of these explanations
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`constitute good cause to grant Opposer’s last-minute request for an extension of its
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`testimony period.
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`1.
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`The Resignation of One Non-Witness Executive and Scheduling
`Difficulties for One Witness Known for More Than a Month Does
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`Not Constitute Good Cause for Opposer’s Last-Minute Request
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`Opposer bases its request for an extension of its testimony period on its inability
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`to schedule the deposition of a single witness, Paul Gebhardt, who “was unable to
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`devote attention to the present Opposition” after the unexpected resignation of
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`

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`Opposer’s Senior Vice President and General Manager of its Consumer Products
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`Division (its “Consumer Products VP”). (See Opposer’s Motion 1111 3-5; Suttmeier Decl.
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`111] 3-6.) According to Opposer, Mr. Gebhardt has been “essentially unavailable to
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`provide testimony since May 21, 2007.” (Opposer’s Motion 1] 5.) Such explanations do
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`not constitute good cause sufficient to extend the testimony period, let alone explain
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`Opposer’s lack of diligence and unreasonable delay in filing the instant motion.
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`Opposer had ample time to arrange the deposition of Mr. Gebhardt and/or other
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`witnesses or at least file a motion to extend earlier in its testimony period. Opposer
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`learned of the resignation of its Consumer Products VP on May 21, 2007, prior to the
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`opening of its testimony period. Opposer does not claim that its Consumer Products VP
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`was one of its intended witnesses—only that his unexpected resignation caused Mr.
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`Gebhardt’s obligations to increase. See id. But Opposer’s testimony period did not
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`close until more than five weeks later, on June 29, 2007, and therefore Opposer had
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`more than five weeks to take the deposition of Mr. Gebhardt and/or other witnesses.
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`Despite this, Opposer failed to take Mr. Gebhardt’s testimony, failed to seek a timely
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`extension, failed to take the testimony of any other witnesses, failed to introduce any
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`other evidence, failed to even notice any depositions, and failed to communicate atall
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`with Applicant’s counsel before or during its testimony period prior to Opposer’s last-
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`minute request for an extension of time.
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`Opposer also fails to explain why, given its knowledge of Mr. Gebhardt’s limited
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`availability, it was not able to take Mr. Gebhardt’s deposition testimony when he was
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`available, or to find other witnesses to take his place. According to Opposer, Mr.
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`Gebhardt was available for deposition on June 20th, but the attorney handling this
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`matter, Mr. McKenna, was not available. See Suttmeier Decl. 1] 6. Even so, the firm
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`representing Opposer in this matter has more than 1,000 attorneys, including 280
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`attorneys in the Milwaukee office where Mr. McKenna is located.
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`(Lemper Decl. 1] 8 &
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`Ex. 3 (website excerpts from http://www.foley.com)). Even if Mr. McKenna was not
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`available, Opposer fails to explain why it could not arrange for another attorney to take
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`Mr. Gebhardt’s deposition on that day. See HKG Industries Inc. v. Perma—Pipe lnc., 49
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`USPQ2d 1156, 1157 (TTAB 1998) (plaintiff failed to explain why other lawyers in
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`attorney’s firm could not have assumed responsibility for the case).
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`Similarly, Opposer fails to explain why it could not find another employee to give
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`testimony on Opposer’s behalf during the five weeks between the resignation at issue
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`and the close of Opposer’s testimony period. Opposer is a large, publicly traded
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`company with 11 executive members on its management team.
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`(Lemper Decl. 1] 9 & Ex.
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`4 (web pages from www.oneida.com/index)).
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`In addition to those executives, Opposer
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`no doubt has a number of experienced, high—ranking administrative and managerial
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`employees. Significantly, Opposer does not claim that Mr. Gebhardt was the only
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`person capable of giving testimony on behalf of Opposer, and it does not explain why it
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`did not and could not submit testimony from any of these other employees on Opposer’s
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`behalf.
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`lndeed, Opposer’s counsel’s June 22, 2007 email stated that Opposer “[has]
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`two witnesses to take testimony from” (Lemper Decl. 1] 3 & Ex. 1), but failed to identify
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`the two witnesses or to explain its failure to notice or even take their testimony
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`depositions.
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`If “the present Oppositions are very important to Opposer’s business,” as it
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`contends (Opposer’s Motion 1] 7), why was it unable to take any other testimony or
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`introduce any evidence during its testimony period.
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`Moreover, Opposer offers no explanation for its unreasonable delay and lack of
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`diligence in both addressing its alleged scheduling difficulties and filing the instant
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`motion. As early as May 21, 2007, Opposer knew that one of its executives had
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`resigned, and that Mr. Gebhardt therefore would be pressed with business matters. Yet,
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`Opposer waited until the eleventh hour to contact Applicant, and waited until the very
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`last day of its testimony period to file the instant motion.
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`Opposer’s email of June 22, 2007, was the first communication that Applicant’s
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`counsel had received from Opposer’s counsel in almost four months, including during
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`Opposer’s entire testimony period. Thus, Opposer’s counsel’s admission that “it did not
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`communicate effectively with Applicant’s counsel .
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`.
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`. as early as possible” (Opposer’s
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`Motion 1] 8) is an understatement.
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`Opposer also fails to explain its failure to introduce any other evidence during its
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`testimony period. Unless Opposer planned to base its entire case in chief on Mr.
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`Gebhardt’s deposition, it could have—and should have—taken the testimony of other
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`witnesses. Opposer could have submitted notices of reliance for self-authenticating
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`documentary evidence, such as certified copies of Opposer’s trademark registrations,
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`Applicant’s responses to Opposer’s discovery requests, copies of official PTO records,
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`or articles in printed publications, but instead failed to submit any other evidence or
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`testimony, or even to serve notices of testimonial depositions. Opposer’s failure to
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`introduce any evidence in support of its case in chief thus belies its claim that the limited
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`availability of one witness (Paul Gebhardt) prevented it from putting in its entire case.
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`As the foregoing demonstrates, the limited availability of one of Opposer’s
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`witnesses does not constitute good cause for Opposer’s request to extend its testimony
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`10
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`period. See Luemme, Inc. v. D. B. P/us lnc., 53 USPQ2d 1758 (TTAB 1999) (denying
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`motion to extend that contained insufficient facts on which to find good cause).
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`2.
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`Applicant’s Consent to Prior Extensions of Opposer’s
`Testimony Period Is Not Good Cause for Opposer’s Last-
`Minute Extension Request at Issue Here
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`Opposer states that it expected Applicant to consent to its last-minute request for
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`an extension of its testimony period because, among other things, the parties have a
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`history of extending deadlines to accommodate the schedules of the parties and their
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`counsel. (See Opposer’s Motion 1111 2, 7.) Opposer’s assumption that Applicant would
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`consent to another extension of its testimony period is unreasonable and unwarranted
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`under the circumstances.
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`Opposer did not communicate with Applicant’s counsel at all for almost four
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`months after the last extension of time, including during its testimony period, until just
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`four business days before the close of its testimony period. Had it done so earlier, it
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`would have learned that Applicant would not consent to further extensions of this
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`opposition proceeding.
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`Further, Opposer had no reason to believe that Applicant would consent to a
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`further extension under the circumstances, or that the Board would agree to another
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`extension even with Applicant’s consent. The Board had previously warned Opposer in
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`its December 29, 2007 Order that further extensions of its testimony period, even if
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`consented, would be granted only for good cause. Applicant consented, and the Board
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`accepted, prior extensions of Opposer’s testimony period in December 2006 and
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`February 2007 because the parties had not yet completed the exchange of discovery
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`documents.
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`Indeed, Opposer’s response to the Board’s March 9, 2007 Show Cause
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`Order acknowledged that this was the reason for the last extension of its testimony
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`11
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`period. But the parties completed the exchange of discovery documents in early March
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`2007. Thus, there was no reason for any further extensions of time (and, consequently,
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`no reason for Opposer to expect any further extensions of time) for nearly three months
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`before the opening of Opposer’s testimony period.
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`Under the circumstances, Opposer’s assumption that Applicant would consent to
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`a further extension of Opposer’s testimony period was unreasonable and unwarranted,
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`and does not constitute good cause for an extension of Opposer’s testimony period.
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`3.
`
`The Parties’ Prior Settlement Discussions, Which Ended Months
`Ago, Do Not Constitute Good Cause for Opposer’s Extension
`
`Opposer also states in its Motion that the parties have a history of extending
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`deadlines to accommodate settlement negotiations, that “to some extent, potential
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`settlement is an issue that is still being raised in this case,” and that this history is, in
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`part, the reason Opposer expected Applicant to consent to its last-minute request to
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`extend its testimony period yet again. (See Opposer’s Motion 1111 1-2, 7.) Opposer’s
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`vague and conclusory references to potential settlement do not constitute good cause
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`for an extension of its testimony period.
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`The Board has recognized that the mere existence of settlement discussions or
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`proposals does not constitute good cause to extend a party’s testimony period. See
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`Fair/ine Boats plc v. New Howmar Boats Corp., 59 USPQ2d 1479, 1480 (TTAB 2000)
`
`(motion denied where vague reference to possibility of settlement demonstrated no
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`expectation that proceedings would not move fon/vard during any such negotiations);
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`Instruments SA Inc. v. ASI Instruments Inc., 53 USPQ2d 1925 (TTAB 1999) (plaintiff’s
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`claim of ongoing bilateral settlement negotiations was rebutted by defendant, and
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`plaintiff showed no other reason for its failure to proceed with discovery).
`
`12
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`

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`In this case, the parties ceased all settlement discussions months before the
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`opening of Opposer’s testimony period. The parties last discussed settlement in
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`December 2006, at which time Opposer made a settlement proposal. But the parties
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`have not engaged in any settlement discussions since that time, and Opposer has not
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`even inquired about settlement since February 27, 2007.
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`(Lemper Decl. 111] 2-6.) Thus,
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`by the time Opposer’s testimony period opened, it had been more than five months
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`since the parties had engaged in settlement discussions and more than three months
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`since Opposer had inquired about settlement.
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`Under the circumstances, Opposer’s vague reference to the parties’ past
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`settlement discussions does not constitute good cause for an extension of its testimony
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`period.
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`Indeed, as early as March 27, 2007, in its response to the Board’s Show Cause
`
`Order, Opposer acknowledged that the parties “have elected to proceed with the merits
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`of the case” because their settlement discussions had failed to progress. Further,
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`Opposer acknowledges in its Motion that “it appears unlikely that the Parties will reach
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`such an agreement.” (Opposer’s Motion 1] 1.) Thus, Opposer cannot credibly claim that
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`the parties’ past settlement discussions, which Opposer concedes ended months ago,
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`justify its extension or excuse its inaction during the testimony period.
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`Accordingly, Opposer has failed to show good cause for an extension of its
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`testimony period, and Opposer’s testimony period has expired.
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`IV.
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`THE BOARD SHOULD ENTER JUDGMENT AGAINST OPPOSER FOR
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`FAILURE TO PROSECUTE UNDER TRADEMARK RULE 2.132 (a)
`
`Having failed to take or submit any testimony during the prescribed time period,
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`the Board should enter judgment against Opposer for failure to prosecute this case.
`
`Trademark Rule 2.132 (a) provides that if the time for taking testimony by plaintiff has
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`13
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`

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`expired and that party has not taken testimony or offered any other evidence, the
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`defendant may move for dismissal on the ground of the failure of plaintiff to prosecute.
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`See TBMP § 534. The Board has held that in the absence of any evidence of record,
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`an Opposer has failed to meet its burden of proof and entry of judgment against
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`Opposer is appropriate. See At/anta—Fu/ton County Z00, Inc. v. DePa/ma, 45 USPQ2d
`
`1858, 1860 (TTAB 1998) (dismissal is appropriate under Rule 2.132(a) where plaintiff’s
`
`time for taking testimony has expired and plaintiff has not taken any testimony or offered
`
`any evidence); Fair/ine Boats, 59 USPQ2d at 1480 (dismissal of a proceeding
`
`appropriate under Rule 2.132(a) where plaintiff's time for taking testimony has expired
`
`and it has not taken any testimony or offered any evidence).
`
`Opposer, apparently recognizing that it has failed to take or submit any testimony
`
`evidence, cites the “excusable neglect” standard in support of its motion to extend. The
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`“excusable neglect” standard is more stringent than the “good cause” standard to
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`extend a deadline. The Board has treated the "good and sufficient cause" standard in
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`Trademark Rule 2.132(a) as equivalent to the stringent "excusable neglect" standard in
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`Fed. R. Civ. P. 6(b). See HKG Industries, 49 USPQ2d at 1157; Grobet File Co. of
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`America, Inc., 12 USPQ2d 1649, 1651 (TTAB 1989); TBMP §534.02.
`
`The "excusable neglect" standard was discussed in the Board’s leading decision
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`Pumpkin Ltd. v. The Seed Corps., 43 USPQ2d 1582 (TTAB 1997), which followed the
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`test set out by the Supreme Court in Pioneer Investment Services Co. v. Brunswick Ltd.
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`Partnership, 507 U.S. 280 (1993). See FirstHea/th of the Caro/inas Inc. v. CareFirst of
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`Maryland, Inc., 81 USPQ2d 1919, 1922 (Fed. Cir. 2007) (citing with approval the
`
`14
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`

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`Board’s excusable neglect standard articulated in Pumpkin).
`
`ln Pioneer, the Court
`
`stated that a determination of excusable neglect is
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`an equitable one, taking account of all relevant circumstances
`surrounding the party's omission. These include .
`.
`. (1) the danger of
`prejudice to the [nonmovant], (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.
`
`507 U.S. at 395.
`
`As noted by the Board in Pumpkin, the third Pioneer factor, namely, the reason
`
`for the delay, and whether it was within the reasonable control of the Opposer, is the
`
`most critical and important factor. See Pumpkin, 43 USPQ2d at 1586, n. 7, and cases
`
`cited therein; see also Baron Philippe de Rothchild S.A. Styl-Rite Optical Mfg. Co., 55
`
`USPQ2d 1848, 1851 (TTAB 2000).
`
`Indeed, several courts have recognized that the
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`four Pioneer factors are not accorded equal weight, and the third factor—the reason for
`
`the delay—is the predominant one. See, e.g., Williams v. KFC Nat’l Mgmt. Co., 391
`
`F.3d 411, 415-416 (2d Cir. 2004); U.S. V. Torres, 372 F.3d 1159, 1163 (10th Cir. 2004)
`
`(“fault in the delay... [is] perhaps the most important single factor in determining
`
`whether neglect is excusable”); Graphic Communs. lnt'l Union, Local 12—N v. Quebecor
`
`Printing Providence, lnc., 270 F.3d 1, 5 (1st Cir. 2001) (the reason for delay is always a
`
`critical factor); Chanute v. Williams Natural Gas Co., 31 F.3d 1041, 1046 (8th Cir. 1994)
`
`(‘‘It is true that fault in the delay remains a very important factor -- perhaps the most
`
`important single factor -- in determining whether neglect is excusable.”); In re Kmart
`
`Corp., 381 F.3d 709, 715 (7th Cir. 2004) (observing that in several sister circuits that
`
`“fault in the delay is the preeminent factor”). The other factors are relevant only in close
`
`cases. Williams, 391 F.3d at 415-16.
`
`15
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`

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`In this case, Opposer has failed to show “excusable neglect.” Taking into
`
`account all of the relevant circumstances surrounding Opposer’s delay, the most
`
`important Pioneer factors weigh in favor of Applicant, rather than Opposer.
`
`In particular,
`
`the third and most critical factor—the reason for the delay—weighs heavily in favor of
`
`Applicant and is alone sufficient to defeat a finding of excusable neglect.
`
`A.
`
`The Reasons for Delay Were Wholly Within the Reasonable Control
`of Opposer
`
`Under the critical third Pioneer factor, Opposer has failed to demonstrate that its
`
`failure to take or submit any testimony or its delay in filing the instant motion until the
`
`very last day of its testimony period were beyond its reasonable control. Opposer again
`
`argues that the reasons for the delay were the unexpected resignation of an executive
`
`(who was not even identified as a witness) on May 21, 2007, and the subsequent
`
`burden and resulting unavailability of its key witness, Mr. Gebhardt. According to
`
`Opposer, all of these circumstances were beyond the control of Opposer.
`
`As noted above, however, none of these reasons excuse Opposer’s failure to
`
`take or submit any testimony during the entire testimony period or excuse its delay in
`
`contacting Applicant or in filing the instant motion until the very last day of its testimony
`
`period. Opposer clearly knew of its executive’s resignation more than a week prior to
`
`the opening of its testimony period. At that time, Opposer also knew or should have
`
`known that Mr. Gebhardt may be devoting significant time to business matters in view of
`
`the resignation. Yet, for almost five weeks, Opposer failed to communicate with
`
`Applicant about the resignation and the deposition scheduling issues. Likewise,
`
`Opposer failed to alert the Board to these issues or file a motion to extend earlier in its
`
`testimony period.
`
`It was certainly within Opposer’s control to take these steps. See
`
`16
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`

`
`FirstHea/th, 81 USPQ2d at 1922 (scheduling difficulties for witnesses and counsel
`
`within reasonable control of a party and do not constitute excusable neglect).
`
`More important, Opposer has not demonstrated why it was unable to take or
`
`submit any other testimony during the prescribed time period, such as filing Notices of
`
`Reliance or taking the testimony depositions of other witnesses.
`
`in fact, nothing
`
`prevented Opposer from taking such action during its testimony period; it simply failed
`
`to do so.
`
`In short, the cause for the delay was in fact within the reasonable control of
`
`Opposer, and the third and most critical Pioneer factor weighs heavily in favor of
`
`Applicant. On this basis alone, the Board should grant Applicant’s cross-motion to
`
`dismiss for failure to prosecute.
`
`B.
`
`The Length of the Delay and its Potential Impact on Judicial
`Proceedings is Significant
`
`The delay in this case has been substantial. Opposer filed its Notice of
`
`Opposition more than five years ago, on March 25, 2002. This opposition proceeding is
`
`now in its sixth year. Opposer's testimony p