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: June 16, 2015
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`Opposition No. 91214673
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`Edge Games, Inc.
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`v.
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`Future Publishing Limited
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`Ann Linnehan, Interlocutory Attorney
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`This case now comes up for consideration of Opposer’s motion (filed February
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`2, 2015) to reopen discovery for ninety days.1
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`By way of background, in the Board’s institution order of January 28, 2014
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`discovery was set to close on October 5, 2014. On September 12, 2014, Opposer filed
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`a combined motion to compel and for sanctions. The Board suspended proceedings
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`on September 19, 2014. Thereafter, on September 25, 2014, Opposer filed an
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`amended combined motion to compel and for sanctions. In its December 30, 2014
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`order the Board noted that Opposer’s combined motion of September 25, 2014 was
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`intended by Opposer to modify or replace the motion filed by Opposer on September
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`12, 2014. In such order the Board, inter alia, denied Opposer’s September 25, 2014
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`motion to compel and deemed Opposer’s motion for sanctions to be premature.
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`1 Applicant’s brief in opposition is timely, despite Opposer argument to the contrary.
`Trademark Rule 2.196.
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`Opposition No. 91214673
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`Upon the resumption of proceedings, discovery was reset to close on January 6,
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`2015.
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`In support of its motion to reopen, Opposer argues that the Board erred in its
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`December 30, 2014 order by not resetting discovery with sixteen days remaining in
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`the period; that at the time of the September 19, 2014 suspension order the date for
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`discovery to close was October 5, 2014; that the revised date for discovery to close in
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`the December 30, 2014 order should have been January 15, 2015, and not January
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`6, 2015; that the parties “were mistakenly denied nine days of discovery per the
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`original trial dates set for the proceedings”; that it was “Opposer’s intention to
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`request Registrant’s agreement to extend discovery before discovery closed, or in the
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`alternate to file a motion (with permission) to extend discovery before it closed.
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`However, Opposer was unable to do this since discovery was closed early of when it
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`should have been per the original trial dates”; that in its December 30, 2014 order
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`“the Board rightly stated that the parties should be able to resolve any
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`disagreements between them as to completing discovery requests to mutual
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`satisfaction…”; that “indeed, the parties are currently actively working toward that
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`goal”; that the parties “immediately started to work on amicable resolutions of the
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`discovery disputes, and as a result were able to participate in an initial telephone
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`conversation on the issues on Friday, January 30, 2015; and that Opposer requests
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`that discovery be reopened for ninety days to allow the parties to complete their
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`“current round of discovery.”
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`Opposition No. 91214673
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`As an initial matter, Opposer should note that the Board, like the federal
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`courts, has the inherent power to manage cases on its docket, which necessarily
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`includes the schedule of cases on its docket. See In re Bailey, 182 F.3d 860, 864-65
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`(Fed. Cir. 1999) (non-Article III tribunals have inherent power to control
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`proceedings). Opposer should also note that a party should not presume that the
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`Board will automatically reset discovery when it determines a pending motion. A
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`party that wishes to have particular deadlines or periods reset upon the
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`determination of a particular motion should file a motion requesting such action,
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`specifying the deadlines or periods it wishes to have reset. Such a request may be
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`incorporated in the pending motion. See TBMP Section 502.04.
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`The Board may, in its discretion, permit a party to reopen an expired time period
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`where the failure to act is due to excusable neglect. See Fed. R. Civ. P. 6(b). The
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`Supreme Court has held that excusable neglect should be determined by
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`considering the circumstances surrounding the omission. Such circumstances
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`include (1) the prejudice to the non-moving party, (2) the length of the delay and its
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`potential impact on judicial proceedings, (3) the reason for the delay, and whether it
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`was within the reasonable control of the movant, and (4) whether the moving party
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`had acted in good faith. Pioneer Invest. Svcs. Co. v. Brunswick Assoc. Ltd. P’shp, 507
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`U.S. 380, 395 (1993). See also Pumpkin, Ltd. v. Seed Corps, 43 USPQ2d 1582 (TTAB
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`1997).
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`In evaluating excusable neglect in light of the factors set forth in Pioneer and
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`taking into account all relevant circumstances, the Board finds that Opposer has
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`Opposition No. 91214673
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`failed to demonstrate excusable neglect so as to justify the reopening of discovery
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`for 90 days.
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`In considering the excusable neglect standard, several courts have stated that
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`the third Pioneer factor, namely the reason for the delay and whether it was within
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`the reasonable control of the movant, might be considered the most important factor
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`in a particular case. See Pumpkin, Ltd., 43 USPQ2d at 1586 n.7, and cases cited
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`therein. In this case, Opposer’s delay in propounding discovery (Applicant states
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`that Opposer served its discovery requests on August 11, 2014 and Opposer does not
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`dispute this) and failure to work to resolve the discovery disputes with Applicant
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`prior to filing its September 25, 2014 motion to compel (leading to the denial of such
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`motion by the Board) were wholly within its reasonable control. A party which
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`waits until the waning days of the discovery period to serve interrogatories,
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`requests for production of documents and things, and/or requests for admission will
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`not be heard to complain, when it receives responses thereto near the end of or after
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`the close of the discovery period, that it needs an extension or reopening of the
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`discovery period in order to take “follow-up” discovery. See TBMP Section 403.04.
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`As to the length of delay, Opposer moved to reopen the discovery period nearly a
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`month after the close of such period. The Board finds that this Pioneer factor does
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`not favor Opposer.
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`With regard to the first Pioneer factor, there is no evidence of prejudice to
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`Applicant. Thus, this factor is neutral in the Board’s analysis.
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`Opposition No. 91214673
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`With regard to the fourth Pioneer factor, there is no evidence of any bad faith by
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`Opposer. Thus, this factor is also neutral in Board’s analysis.
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`On balance, the Board finds that Opposer has not met its burden of
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`demonstrating excusable neglect.
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`The motion to reopen discovery for 90 days is denied.
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`To the extent there was a delay between the drafting of the order of December
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`30, 2014 and the actual mailing of such order by the Office (most likely because of
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`the holiday season) the Board does find it appropriate to reset dates such that the
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`parties are allowed the nine days they had remaining in discovery.
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`Dates are reset as follows:
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`9-Day Discovery Closes
`Plaintiff's Pretrial Disclosures Due
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures Due
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures Due
`Plaintiff's 15-day Rebuttal Period Ends
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`6/27/2016
`8/11/2016
`9/25/2016
`10/10/2016
`11/24/2016
`12/9/2016
`1/8/2017
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`In each instance, a copy of the transcript of testimony together with copies of
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`documentary exhibits, must be served on the adverse party within thirty days of
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`completion of the taking of testimony. Trademark Rule 2.125.
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`Briefs shall be filed in accordance with Trademark Rule 2.128(a) and (b). An oral
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`hearing will be set only upon request filed as provided by Trademark Rule 2.129.
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`Finally, the Board notes that the parties are under a continuing obligation to
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`contact the assigned interlocutory attorney to this case (or another interlocutory
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`attorney designated to handle this case in her absence) by telephone before they file
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`Opposition No. 91214673
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`any more papers in this proceeding. See the Board’s Order of December 30, 2014.
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`As of the date set forth in the caption of this order, no outstanding verbal
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`permission exists for the filing of any motion by either party.2
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