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
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`Mailed: April 24, 2014
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`Opposition No. 91207982
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`Crytek Entertainment GmbH
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`v.
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`iConnectUS LLC
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`Jennifer Krisp, Interlocutory Attorney:
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`This proceeding is before the Board for consideration of applicant’s March
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`19, 2014 motion captioned as a “motion for an extension of time to respond,”
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`wherein applicant seeks additional time to respond to the Board’s March 3, 2014
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`order.1 The motion is fully briefed.
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`1 Applicant’s proof of service is not in compliance with Trademark Rule 2.119. The
`paragraph setting forth proof of service must clearly state the date and manner in
`which service was made, as well as the name and address of each party or person
`upon whom service was made. The Board’s Manual of Procedure (TBMP) provides
`the following suggested format for a Certificate of Service (see TBMP § 113.03):
`I hereby certify that a true and complete copy of the foregoing (insert title of
`submission) has been served on (insert name of opposing counsel or party) by
`mailing said copy on (insert date of mailing), via First Class Mail, postage
`prepaid (or insert other allowed/appropriate method of delivery) to: (set out
`name AND address of opposing counsel or party).
` Also, applicant’s motion is not in compliance with Trademark Rule 2.126. All
`motions and briefs filed in a Board proceeding must be double-spaced pursuant to
`Trademark Rule 2.126(a)(1), and numbered pursuant to Trademark Rule 2.126(a)(5).
` The Board’s file for this proceeding has been updated to reflect the appearance of
`Andrew H. Do, of Oswald and Yap, on behalf of applicant. See TBMP § 117.05
`(2013).
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`Opposition No. 91207982
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`After applicant’s copy of the Board’s September 24, 2013 suspension order
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`was returned undeliverable by the USPS, the Board issued an order allowing
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`applicant until March 18, 2014 in which to file a response to opposer’s September
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`23, 2013 motion for default judgment. Applicant did not respond in the time
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`allowed, and by way of his March 19, 2014 motion seeks an additional thirty days
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`in which to do so. Accordingly, applicant’s motion is a motion to reopen his time
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`to respond to opposer’s motion.
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`Analysis
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`Under the applicable test, applicant must establish that his failure to
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`act in a timely manner was the result of excusable neglect. In Pioneer
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`Investment Services Co. v. Brunswick Associates L.P., 507 U.S. 380 (1993),
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`discussed and adopted by the Board in Pumpkin, Ltd. v. The Seed Corps, 43
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`USPQ2d 1582 (TTAB 1997), the Supreme Court clarified the meaning and
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`scope of “excusable neglect,” as used in the Federal Rules of Civil Procedure
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`and elsewhere. The Court held that the determination of whether a party's
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`neglect is excusable is:
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`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 [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.
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`Pioneer Inv. Servs. Co. v. Brunswick Assocs. L.P., supra at 395.
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`2
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`Opposition No. 91207982
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` In subsequent applications of this test, several courts have stated that
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`the third Pioneer factor might be considered the most important factor in a
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`particular case. See Pumpkin, Ltd. v. The Seed Corps, supra at 1586 n.7 and
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`cases cited therein.
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`Turning to the merits of applicant’s motion, by way of applicant’s assertion
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`regarding a “miscommunication” from his former counsel regarding the new
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`correspondence address for applicant, as well as applicant’s asserted non-receipt
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`of opposer’s pending motion and of the Board’s suspension order (as evidence by
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`docket entry #19), the particular extent to which the reason for failing to act as
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`required was within applicant’s own control is unclear and indeterminable.
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`Nevertheless, it has been applicant’s obligation to assure that the Board’s
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`proceeding record is current and accurate with respect to all correspondence
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`information (name, street address, email address; see Board order of March 3,
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`2014, fn. 1), to assure accurate communication with his counsel, and to assure
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`that he is abreast of this proceeding and of his legal representation. Moreover,
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`the Board’s official online record of this proceeding is instantly updated upon the
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`issuance of an order or the filing of a paper, and has continually been available in
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`its entirety to applicant, and to his counsel, at any given time, since it was
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`instituted in November, 2012. Based on these factors, the third Pioneer factor
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`favors opposer.
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`Applicant states that he requested opposer’s consent for his motion prior to
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`filing it, which is the preferred practice; moreover, in its brief opposer does not
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`3
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`Opposition No. 91207982
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`contest this point. Other than the delay in receiving a ruling from the Board on
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`its motion for default judgment, the record does not reflect that the delay
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`occasioned by applicant’s inaction has hindered opposer’s ability to demonstrate
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`the merits of its pending motion. Opposer sets forth no substantial prejudice
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`that it will face, and the danger of prejudice to opposer in seeking to move
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`forward with a default judgment, although present, is not substantial.2 Thus, the
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`first Pioneer factor slightly favors applicant.
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`The motion at issue was filed September 23, 2013, and the Board issued
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`the suspension order the following day. Much of the delay since then has been
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`caused by applicant’s failure to take action or to stay abreast of this proceeding.
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`The length of the delay is notable, as is the additional delay occasioned by
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`applicant’s most recent motion requesting additional time. The record does not
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`reflect, however, that applicant’s delay has had or will have a significant impact
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`on judicial proceedings. Moreover, the Board has the discretion to disallow any
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`further time to applicant to address opposer’s pending motion, and to restrict
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`applicant’s ability to seek future extensions. In view of these circumstances, the
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`second Pioneer factor is neutral.
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`As to whether applicant has acted in good faith, it is apparent from the
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`record that applicant has not been sufficiently attentive to his obligations and
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`deadlines in this proceeding. Nevertheless, applicant’s actions to secure counsel,
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`both earlier in the proceeding and at present, do indicate that he does not seek to
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`2 The Board acknowledges the delay of nearly four months due to the failure to issue
`the March 3, 2014 order in a more timely fashion.
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`4
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`Opposition No. 91207982
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`merely ignore or avoid this proceeding, and the record does not reflect that
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`applicant’s failure to timely respond to opposer’s motion was an effort to willfully
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`delay this proceeding. Thus, the fourth Pioneer factor slightly favors applicant.
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`Upon full consideration of all of the circumstances of record, and bearing in
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`mind that the Board favors resolving the issue of registrability on the basis of the
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`merits and defenses asserted, the Board finds that applicant has minimally,
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`though sufficiently demonstrated that its failure to take action as required was
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`due to excusable neglect. In view of this finding, applicant’s motion to reopen
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`time is granted as modified: specifically, applicant is allowed until ten (10) days
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`from the mailing date of this order in which to file his brief in response to
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`opposer’s September 23, 2014 motion for entry of default judgment, failing which
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`the Board will grant said motion as conceded.
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`The Board will not entertain any further unconsented motion filed by
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`applicant in this proceeding wherein applicant seeks to extend or reopen his
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`deadline to take action. Moreover, any motion or paper filed by applicant which
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`the record reflects has been filed, in whole or in part, to effectuate a delay to this
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`proceeding is not likely to be granted the Board’s deference.
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`Finally, in the event that the parties have stipulated to the exchange of
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`service copies by electronic mail pursuant to Trademark Rule 2.119(b)(6), the
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`Board advises that they reduce this stipulation to writing, and affirmatively
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`confirm their proper designated correspondence addresses and email addresses.
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`Regarding how this method of service has an impact on response times, the
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`5
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`Opposition No. 91207982
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`parties and their counsel are directed to TBMP § 113.05 (2013); see also
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`McDonald's Corp. v. Cambrige Overseas Development Inc., 106 USPQ2d 1339
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`(TTAB 2013).
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`Proceedings remain suspended pending disposition of opposer’s motion for
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`entry of default judgment.
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`6
