Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1078281
`
`ESTTA Tracking number:
`
`Filing date:
`
`08/28/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91256549
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`StonCor Group, Inc.
`
`MELISSA E. SCOTT
`FOX ROTHSCHILD LLP
`P.O. BOX 5231
`PRINCETON, NJ 08543-5231
`UNITED STATES
`Primary Email: mscott@foxrothschild.com
`Secondary Email(s): dmcgregor@foxrothschild.com, eflyntz@foxrothschild.com,
`ipdocket@foxrothschild.com
`610-458-1413
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Opposition/Response to Motion
`
`Deanna M. McGregor
`
`mscott@foxrothschild.com, dmcgregor@foxrothschild.com,
`eflyntz@foxrothschild.com, ipdocket@foxrothschild.com
`
`Signature
`
`Date
`
`/-d-/
`
`08/28/2020
`
`Attachments
`
`Opposition to Motion to Set Aside - 91256549.pdf(465558 bytes )
`
`

`

`
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`STONCOR GROUP, INC.,
`
`Opposer,
`
`
`
`vs.
`
`
`
`STONECOAT GP, LLC,
`
`Applicant.
`
`
`Opposition No. 91256549
`
`
`
`Mark: STONECOAT
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`Serial No. 88600289
`
`
`OPPOSER’S OPPOSITION TO APPLICANT’S MOTION TO VACATE ENTRY OF
`DEFAULT AND MOTION TO EXTEND TIME TO FILE AN ANSWER
`
`Opposer, StonCor Group, Inc. (“StonCor”), by and through its undersigned counsel,
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`hereby submits this Opposition to the Motion to Vacate Entry of Default and Motion to Extend
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`Time to File an Answer (the “Motion”) filed by Applicant Stonecoat GP, LLC (“Applicant”).
`
`I.
`
`INTRODUCTION
`
`Applicant’s Motion (which Applicant failed to properly serve on StonCor in accordance
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`with applicable Board Rules)1 purports to establish “good cause” for Applicant’s failure to
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`timely file an answer to StonCor’s Notice of Opposition. Applicant, however, attempts to cobble
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`together a basis for claiming excusable neglect by relying solely on a “good faith belief” that has
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`no factual support whatsoever, and glossing over Applicant’s inexcusable, willful delay in taking
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`
`
`1 The certificate of service for the Motion and its exhibits states that Applicant served the Motion and exhibits on
`StonCor’s counsel via the TTAB’s e-filing system. [Dkt. #5, at Certificate of Service]. It is well-settled, however,
`that “[t]he notice of filing provided by ESTTA to each party when a submission is made does not substitute for
`service by the filing party.” TBMP § 113.02. Applicant was required to serve the Motion on StonCor’s counsel via
`email—it failed to do so. See TBMP §§ 113, 113.01.
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`appropriate action and Applicant’s purposeful decision to have Applicant’s owner, rather than
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`Applicant’s legal counsel, reach out to StonCor’s legal counsel at the absolute last minute.
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`Applicant’s purposeful actions and ignorance of the law do not excuse Applicant’s failure
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`to comply with Board rules. To the contrary, as discussed more fully below, Applicant’s failure
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`to timely file is the direct result of, among other things, inexcusable delay on Applicant’s part, a
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`conscious decision to attempt to resolve matters without the assistance of its legal counsel,
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`ignorance of the law, and a willful disregard for information conveyed to Applicant. Further,
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`Applicant failed to establish that it has a “meritorious defense” to this matter.
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`For all of these reasons, and the reasons discussed more fully below, Applicant has failed
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`to satisfy the “good cause” standard for setting aside a Notice of Default. The Board should
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`deny Applicant’s Motion and enter a default judgment against Applicant.
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`II.
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`RELEVANT FACTUAL AND PROCEDURAL BACKGROUND
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`Below is a brief summary of the relevant factual and procedural background.
`
`A.
`
`Filing Of The Notice Of Opposition
`
`Applicant filed U.S. Trademark Application No. 88600289 (the “Subject Application”) to
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`register the mark STONECOAT on August 30, 2019, for use with the following services Class
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`37: “Construction services, namely, veneer surfacing and resurfacing services, in the nature of
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`applying a stone coating to building surfaces for others.” The USPTO published the Subject
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`Application for opposition on February 25, 2020.
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`On March 4, 2020, StonCor applied for, and received, an extension of time through June
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`24, 2020, to oppose the Subject Application for the STONECOAT mark. [See Dkt. #1, at p. 1].
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`On June 23, 2020, StonCor filed a Notice of Opposition against the Subject Application asserting
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`two counts: (1) likelihood of confusion; and (2) descriptiveness. StonCor based the former
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`count on a likelihood of confusion between Applicant’s STONECOAT mark, on the one hand,
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`and StonCor’s earlier, registered STONKOTE mark (pronounced “stone coat”), StonCor’s Other
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`Registered “STON” Marks (as defined in the Notice of Opposition), and/or StonCor’s “STON”
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`Family of Marks (as defined in the Opposition), on the other hand. [See id., generally].
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`On June 23, 2020, the Board issued a Notice of Institution and Trial Dates (the “Notice”),
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`advising Applicant that it must file an answer within forty (40) days of the date of the Notice,
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`and identifying all pretrial deadlines—including, without limitation, the August 2, 2020 deadline
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`for Applicant to file an answer StonCor’s Notice of Opposition. [See Dkt. #2]. Because August
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`2, 2020, fell on a Sunday, Applicant had until August 3, 2020 (an extra day), to file the answer.
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`See TBMP § 112.
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`Applicant does not assert that it failed to receive the Notice or that the 41 days of time the
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`Board afforded Applicant to answer the Notice of Opposition was insufficient. [See Dkt. #5,
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`generally]. Indeed, Applicant cannot reasonably make such an argument because inter partes
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`Board Proceedings are governed by the Federal Rules of Civil Procedure, which require only
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`notice pleading, making it significantly easier and less time consuming for an applicant to
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`answer a Notice of Opposition. See TBMP § 101.02.
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`B.
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`Applicant’s Actions After The Filing Of The Notice Of Opposition
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`On August 3, 2020, the absolute last day for Applicant to timely answer StonCor’s Notice
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`of Opposition, Applicant’s Owner, Ken Morrison (“Mr. Morrison”) cold-called StonCor’s legal
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`counsel, Melissa E. Scott, Esq. (“Attorney Scott”). [See Declaration of Melissa E. Scott, Esq.,
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`attached hereto as Exhibit 1. See Ex. 1, at ¶ 12]. Prior to Mr. Morrison’s call, neither StonCor
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`nor Attorney Scott had received any communication from Mr. Morrison or Applicant’s counsel,
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`Warren Norred, Esq. (“Attorney Norred”). [Id., at ¶ 13].
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`During the telephone call, Mr. Morrison confirmed receiving the Notice of Opposition
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`and apologized for contacting Attorney Scott “at the last moment.” [Id., at ¶ 14]. He informed
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`Attorney Scott that he had been “preoccupied with other matters.” [Id., at ¶ 15].
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`Attorney Scott advised Mr. Morrison that she understood Applicant to be represented by
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`counsel and that they should not be speaking directly to one another. [Id., at ¶ 16]. Attorney
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`Scott urged Mr. Morrison to have his legal counsel contact her directly.2 [Id., at ¶ 17].
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`Mr. Morrison informed Attorney Scott that he had already spoken to his counsel and that
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`Attorney Norred had told Mr. Morrison that he could contact Attorney Scott directly. [Id., at
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`¶ 18]. In fact, Mr. Morrison advised Attorney Scott that he had received her contact information
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`from Attorney Norred—a fact Applicant concedes in the instant Motion. [Id., at ¶ 19. See also
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`Dkt. #5, Declaration of Mr. Morrison, at ¶ 3].
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`Mr. Morrison told Attorney Scott that he contacted her to see if the parties’ could resolve
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`this matter. [Ex. 1, at ¶ 20]. Attorney Scott told Mr. Morrison that StonCor would consider any
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`proposal Applicant conveyed, but explained that the parties obviously would not be able to reach
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`a resolution (to the extent one is even possible) prior to that day’s filing deadline. [Id., at ¶ 21].
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`Mr. Morrison and Attorney Scott never discussed a possible extension of Applicant’s
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`deadline to answer the Notice of Opposition. [Id., at ¶ 22]. Mr. Morrison never requested
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`StonCor’s consent to a motion for extension of time to file an answer. [Id., at ¶ 23]. Further,
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`Attorney Scott never offered an extension of Applicant’s filing deadline or agreed to any request
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`for an extension of that deadline. [Id., at ¶ 24].
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`
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`2 Applicant’s Motion concedes that no ethical violations should be considered based on Attorney Scott’s call with
`Mr. Morrison and that Attorney Scott, at all times, acted appropriately. [See Dkt. #5, at p. 2. n.1 (“No ethical
`violation should be considered as implied by this recitation of events. By all accounts, Ms. Scott spoke only as
`appropriate with Mr. Morrison and discouraged direct communication, referring him to his counsel.”)
`4
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`Attorney Scott never told Mr. Morrison that he need not file an answer on August 3. [Id.,
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`at ¶ 25]. To the contrary, Attorney Scott informed Mr. Morrison that Applicant still needed to
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`comply with its August 3 filing deadline and, again, urged Mr. Morrison to have Attorney
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`Norred contact her directly.3 [Id., at ¶ 26]. Mr. Morrison told Attorney Scott he would do so and
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`ended the call. [Id., at ¶ 27]. During the call, Mr. Morrison never advised Attorney Scott that he
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`would be going on vacation or that he would be “unavailable” for some reason. [Id., at ¶ 28].
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`Approximately two hours following Attorney Scott’s telephone call with Mr. Morrison,
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`Attorney Norred called Attorney Scott directly. [Id., at ¶ 29]. Attorney Norred asked Attorney
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`Scott if she would consent to a motion for an extension of time to file an answer. [Id., at ¶ 30].
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`Attorney Scott informed him that she could not consent to his request without authorization from
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`StonCor. [Id., at ¶ 31]. Attorney Scott told Attorney Norred that, because it was the last day for
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`Applicant to file its answer, and her client representative frequently travels internationally, she
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`would be unable to get StonCor’s consent to any extension request before the end of the day—
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`the deadline for Applicant to file its answer. [Id., at ¶ 32].
`
`
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`3 In the Motion, Applicant claims that Attorney Norred was unable to contact Mr. Morrison because Mr. Morrison
`had gone on vacation. [Dkt. #5, p. 2, at ¶¶ 5-7]. Neither Mr. Morrison nor Attorney Norred advised Attorney Scott,
`at any time, that Mr. Morrison was on vacation. [Ex. 1, at ¶¶ 28, 34, 42]. Applicant also claims that Mr. Morrison
`“believed that either no answer was necessary, or that some sort of abatement would be employed.” [Dkt. #5, p. 2,
`at ¶ 5]. There is no reasonable basis for any such belief. Attorney Scott never discussed an extension of Applicant’s
`filing deadline with Mr. Morrison and never told Mr. Morrison that he need not timely file an answer. [Ex. 1, at
`¶¶ 22-26]. Nor does Mr. Morrison allege that Attorney Scott ever made such statements or representations. Instead,
`Mr. Morrison merely states that Attorney Scott was “pretty reasonable and I believed that she would work with me
`when I got back from some planned travel. I did not think that I had to hurry an answer to avoid default.” [Dkt. #5,
`Decl. of Mr. Morrison, at ¶ 4]. Mr. Morrison does not set forth any facts supporting the reasonableness of this
`“belief.” In fact, Mr. Morrison admits that his own counsel, Attorney Norred, did not think he correctly understood
`the situation. [Id., at ¶ 5]. Accordingly, he told Attorney Norred that Attorney Norred could call Attorney Scott and
`“resolve any problem.” [Id.]. In actuality, Attorney Scott had specifically advised Mr. Morrison that Applicant still
`needed to comply with the August 3 filing deadline. [Ex. 1, at ¶ 26]. Indeed, no other statement would make sense
`since StonCor does not have the ability to extend Applicant’s filing deadline. Only the Board can approve or grant
`such an extension. See TBMP § 310.03(c) (stating an extension of time to file an answer can only be extended by a
`stipulation of the parties, approved by the Board, or on motion granted by the Board, or by order of the Board).
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` In light of the above facts, Attorney Scott strongly recommended to Attorney Norred that
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`Applicant file its answer before the end of the day. [Id., at ¶ 33]. At no point during the call did
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`Attorney Norred advise Attorney Scott that Mr. Morrison would be going on vacation or that he
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`would be “unavailable” for some reason. [Id., at ¶ 34].
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`C.
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`Applicant’s Default And The Notice Of Default
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`Despite Attorney Scott’s recommendation, Applicant did not file an answer to the Notice
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`of Opposition on August 3, 2020. [Id., at ¶ 35]. Attorney Scott did not hear anything from Mr.
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`Morrison or Attorney Norred until August 7, 2020. [Id., at ¶ 36].
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`On the afternoon of Friday, August, 7, 2020, Attorney Norred sent Attorney Scott an
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`email stating that Applicant had not timely filed its answer because Attorney Norred had
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`“inadequate communications” with Mr. Morrison. [Id., at ¶ 37]. Attorney Norred advised
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`Attorney Scott that he intended to file a motion for leave to file an answer and asked if Attorney
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`Scott intended to oppose such a motion. [Id., at 38]. Attorney Scott advised Attorney Norred
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`that, at that time, she did not see any good cause for the failure to timely file an answer and,
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`therefore, StonCor planned to oppose any such motion. [Id., at ¶ 39].
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`At the conclusion of her email Attorney Scott asked Attorney Norred to let her know if
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`there were any “critical circumstances” of which she was unaware that might justify the failure
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`to answer. [Id., at ¶ 40]. Attorney Norred did not advise Attorney Scott of any circumstances
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`that might mitigate Applicant’s failure to file. [Id., at ¶ 41]. Further, Attorney Norred did not
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`advise Attorney Scott that Mr. Morrison was on vacation or “unavailable.” [Id., at ¶ 42].
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`Despite the fact that Applicant was in default due to its failure to timely file an answer,
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`Applicant showed no urgency to file the motion for leave to file an answer. Applicant waited
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`another whole week, until after the Board filed its Notice of Default on August 12, 2020 [see
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`Dkt. #12], to file the instant Motion on August 14, 2020 [see Dkt. #5].
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`D.
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`Applicant’s Motion
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`Distilled down to its essence, Applicant’s Motion claims that Applicant has shown good
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`cause to set aside the Notice of default because Mr. Morrison was on vacation and “believed in
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`good faith” that StonCor’s counsel would “work with him when he was back in town.” [Dkt. #5,
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`p. 1, at ¶ 1; id., p. 2, at ¶ 7; id., p. 4, at ¶ 16]. Applicant further claims that the delay has not
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`prejudiced StonCor and that Applicant has a meritorious defense to the opposition. [Id., p. 4, at
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`¶¶ 17-18]. As respecting the latter issue, Applicant claims (1) that it has used its STONECOAT
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`mark since 2008; (2) StonCor only pled “upon information and belief” that confusion between
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`the parties’ respective marks might occur someday; (3) StonCor did not plead a specific instance
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`of confusion; (4) Applicant offers a service and StonCor offers a number of products; and
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`(5) StonCor allegedly failed to plead that the parties’ goods and/or services travel in the same
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`“market.” [Id., p. 4, at ¶ 18].
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`III. ARGUMENT
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`Despite its assertions to the contrary, Applicant has failed to establish a showing of good
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`cause sufficient to justify setting aside the Board’s Notice of Default. While Applicant claims
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`that its failure to timely file an answer was the result of Mr. Morrison’s “good faith belief” that
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`Applicant did not need to file the answer on August 3, and Mr. Morrison’s purported subsequent
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`unavailability due to a vacation, the facts simply do not support Applicant’s position.
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`As discussed more fully below, Applicant’s failure to timely file an answer was not the
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`result of “excusable neglect” as Applicant contends. Rather, it is the result of inexcusable delay
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`on Applicant’s part, a conscious decision to attempt to resolve matters without the assistance of
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`its legal counsel, ignorance of the law, a willful disregard for information conveyed to Applicant
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`by StonCor’s counsel, and Mr. Morrison’s inexcusable decision to leave the matter unsettled—
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`despite Applicant’s counsel advising Mr. Morrison that he believed Mr. Morrison misunderstood
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`the situation. Moreover as explained below, Applicant has also failed to show that it has any
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`meritorious defense to this action.
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`For these reasons, and the reasons set forth below, the Board should deny Applicant’s
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`Motion and enter a default judgment against Applicant.
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`A.
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`Legal Standard for Setting Aside a Notice of Default
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`In order to set aside a notice of default, a defendant who failed to timely answer a notice
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`of opposition must make a satisfactory showing of “good cause” for why the Board should not
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`enter a default judgment against it. TBMP § 312.02 (citing Fed. R. Civ. P. 55(c)). “Good cause”
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`is found when the defendant shows: (1) the delay in filing an answer was not the result of willful
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`conduct or gross neglect on the part of the defendant; (2) the delay in filing will not substantially
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`prejudice the plaintiff; and (3) the defendant has a meritorious defense to the action. Id.
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`The failure to make a sufficient showing on any one of these factors justifies denial of
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`the motion. See Robinson v. Bantam Books, Inc., 49 F.R.D. 139, 141 (S.D.N.Y. 1970) (denying
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`motion on the ground that it fails to meet the requirements of Fed. R. Civ. P. 55(c) by failing to
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`demonstrate that defendants had a “meritorious defense”); DeLorme Publ’g Co. v. Eartha’s Inc.,
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`60 USPQ2d 1222, 1224 (TTAB 2000) (denying applicant’s motion to reopen the time allowed to
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`answer and granting opposer’s motion for default judgment even though opposer experienced no
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`prejudice and applicant had a meritorious defense, but applicant’s delay was found to be the
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`“result of applicant’s willful conduct and gross neglect”); El Encanto, Inc. v. SOS Arana
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`Alimentacion, S.A., Opp. No. 116557, 2001 WL 531176, at *4 (TTAB 2001) (non-precedential)
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`(denying applicant’s motion to set aside notice of default because the default was “clearly willful
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`and not a ‘mistake,’” even after considering the promptness in which applicant filed its motion to
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`set aside the notice of default, and finding that there was no prejudice to plaintiff and applicant
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`had a meritorious defense).
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`Even though it is the “policy of the law to decide cases on their merits,” the Board has
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`discretion in determining whether or not an applicant has shown good cause. TBMP § 312.02.
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`Further, the Board recognizes that “entry of default judgment may be necessary in some cases.”
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`TBMP § 312.2. This is especially true where, as here, the balance favors the non-movant. See
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`Lowey Dannenberg Cohen PC v. Dugan, 249 F.R.D. 67, 70 (S.D.N.Y. 2008) (“Even bearing in
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`mind that this discretion should be exercised in light of the strong preference for resolving
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`disputes on the merits rather than by default, the Court on balance declines to exercise its
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`discretion in favor of [defendants].”).
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`B.
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`Applicant Has Not Made A Sufficient Showing To Set Aside The Notice Of
`Default.
`
`
`Applicant has failed to establish “good cause” for its failure to timely answer the Notice
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`of Opposition because (1) the failure was the result of Applicant’s willful conduct and/or gross
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`neglect, and (2) Applicant has failed to show that it has a “meritorious defense” to this action.
`
`1.
`
`Applicant’s Willful Conduct Or Gross Neglect Caused The Failure To
`Timely File Its Answer.
`
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`Applicant has not satisfied the first factor of the good cause standard because its own
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`willful conduct and/or gross negligence was the reason it failed to timely file an answer. While
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`Applicant claims that its failure to timely file an answer was the result of Mr. Morrison’s “good
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`faith belief” that Applicant did not need to file the answer on August 3, and Mr. Morrison’s
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`subsequent unavailability due to a vacation, the facts simply do not support Applicant’s position.
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`First, Applicant does not dispute that it received StonCor’s Notice of Opposition and the
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`Board’s Notice, and that Applicant had more than forty (40) days to contact StonCor about the
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`possibility of resolving this matter or obtaining an extension of time to file an answer. [See Dkt.
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`#5, generally].
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`Second, Applicant admits that it waited until the absolute last day to file its answer to
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`contact StonCor’s legal counsel. [Id., p. 4, at ¶ 16]. Yet, offers no explanation for why it waited
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`until the last moment to contact StonCor’s counsel, or any other excuse for this willful delay in
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`acting. [See id., generally].
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`Third, Applicant concedes that it waited until the last day to file the answer to contact
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`StonCor’s counsel, despite allegedly knowing that Mr. Morrison planned to leave for vacation
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`that very day and would allegedly be unavailable for several days. [Id., p. 2, at ¶¶ 5-7; id., p. 5,
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`at ¶¶ 20-21]. Knowing that Applicant’s answer was due no later than August 3, 2020, and that
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`Mr. Morrison would be going on vacation that same day, Applicant cannot dispute that it should
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`have addressed any issues with StonCor’s counsel earlier, and not have waited 41 days until the
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`very last moment (when Mr. Morrison would no longer be available) to contact Attorney Scott.
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`Fourth, Applicant concedes that, Mr. Morrison, despite his lack of legal expertise,
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`consciously chose to contact StonCor’s counsel directly, rather than have Applicant’s counsel
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`contact StonCor’s counsel, for the purpose of trying to resolve this matter on the very last day for
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`Applicant to file its answer. Further, Applicant admits that Attorney Scott advised Mr. Morrison,
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`on more than one occasion, that he should not be speaking with her directly and that he should
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`have Attorney Norred contact her. [Id., p. 2, at ¶ 4 and n.1; id., Ex. A, at ¶ 2]. Despite Attorney
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`Scott’s repeated admonitions, Mr. Morrison chose to continue the call instead of having Attorney
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`Norred contact Attorney Scott.
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`Fifth, Applicant cannot reasonably argue that Mr. Morrison, Applicant’s owner, believed
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`that the parties’ could resolve this matter in less than an afternoon given that the parties had not
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`engaged in any prior dialogue with one another. Mr. Morrison’s belief in this regard was clearly
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`unreasonable.
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`Sixth, Applicant admits that the delay in filing the answer “was within the control of
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`Applicant.” [Id., p. 5, at ¶ 20].
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`Seventh, no reasonable facts exist to support Mr. Morrison’s “belief” that he did not need
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`to file an answer by the August 3 filing deadline. Tellingly, Mr. Morrison does not claim that he
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`discussed with Attorney Scott a possible extension of Applicant’s deadline to answer or that
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`Attorney Scott told him that Applicant did not need to file an answer by the August 3 deadline.
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`[See id., generally]. Mr. Morrison simply states that Attorney Scott “was pretty reasonable, and I
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`believed that she would work with me when I got back from some planned travel. I did not think
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`that I had to hurry and answer to avoid default.” [Id., Ex. A, at ¶ 4]. Of critical importance,
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`nowhere in the Motion, or Mr. Morrison’s accompanying declaration, does Applicant state any
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`facts that would give rise to Mr. Morrison’s belief in this regard.
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`To the contrary, Mr. Morrison and Attorney Scott never discussed a possible extension of
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`Applicant’s deadline to answer the Notice of Opposition. [Ex. 1, at ¶ 22]. Mr. Morrison never
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`requested StonCor’s consent to a motion for extension of time to file an answer. [Id., at ¶ 23].
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`Further, Attorney Scott never offered an extension of Applicant’s filing deadline or agreed to any
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`request for an extension of that deadline. [Id., at ¶ 24].
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`Attorney Scott never told Mr. Morrison that he need not file an answer on August 3. [Id.,
`
`at ¶ 25]. In fact, Attorney Scott informed Mr. Morrison that Applicant still needed to comply
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`with its August 3 filing deadline and, again, urged Mr. Morrison to have Attorney Norred contact
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`her directly. [Id., at ¶ 26]. Even more damning, Mr. Morrison’s declaration states that he spoke
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`with Attorney Norred after speaking with Attorney Scott and that Attorney Norred advised Mr.
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`Morrison that he did not think that Mr. Morrison correctly understood the situation. [Dkt. #5,
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`Ex. A, at ¶ 5]. Mr. Morrison claims that he told Attorney Norred that he could talk to Attorney
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`Scott to “resolve any problem.” [Id.]. Yet, despite knowing that his attorney believed he had
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`misunderstood the situation, Mr. Morrison left for vacation leaving the matter unresolved. [Id.].
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`Based on these undisputed facts, there is no good faith basis for Mr. Morrison’s purported
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`“belief” that Applicant did not need to file its answer on August 3.
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`Seventh, Applicant cannot rely on Mr. Morrison’s ignorance of the law and applicable
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`Board Rules to excuse Applicant’s delay in filing an answer. Applicant had legal counsel, yet
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`Mr. Morrison willfully and purposefully chose to contact StonCor’s counsel himself, without the
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`assistance of counsel—unreasonably thinking that he could try to resolve this matter in less than
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`an afternoon. [Dkt. #5, at p. 2, at ¶ 4; id., Ex. A, at ¶ 2].
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`If Mr. Morrison had allowed his counsel to handle the communications, Attorney Norred
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`would have known that Applicant needed to file its answer on August 3, or file a motion seeking
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`an extension of time to file an answer. Further, Attorney Norred would have understood that,
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`even if StonCor had stipulated to an extension of time, Applicant would still need to file a
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`consent motion to that effect, which the Board would then need to approve. TBMP § 310.03(c).
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`Attorney Norred would have recognized that Applicant, not StonCor, had the obligation to file a
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`paper with the Board seeking to extend Applicant’s filing deadline.
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`The fact that Mr. Morrison consciously chose not involve his legal counsel, even after
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`Attorney Scott cautioned him multiple times to do so, is willful conduct or gross negligence—
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`not excusable neglect.
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`Eighth, neither Mr. Morrison nor Attorney Norred ever advised Attorney Scott that Mr.
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`Morrison was allegedly on vacation and unavailable. [Ex. 1, at ¶¶ 28, 34, 42].
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`Ninth, Attorney Scott advised Attorney Norred on the afternoon of August 3 that she
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`could not consent to a motion to extend Applicant’s deadline to file an answer without prior
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`authorization from StonCor. [Id., at ¶ 31]. Further, Attorney Scott advised Attorney Norred that,
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`because it was the last day for Applicant to file its answer, and her client representative
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`frequently travels internationally, she would be unable to get StonCor’s consent to any extension
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`request before the end of the day—the deadline for Applicant to file its answer. [Id., at ¶ 32].
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`Thus, Attorney Scott recommended that Attorney Norred file Applicant’s Answer before the end
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`of the day. [Id., at ¶ 33]. Applicant still failed to file a timely answer.4
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`In sum, Applicant’s failure to timely file an answer is not the result of excusable neglect.
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`It is the result of inexcusable delay on Applicant’s part, a conscious decision to attempt to
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`resolve matters without the assistance of its legal counsel, ignorance of the law, a willful
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`disregard of information conveyed to Applicant by StonCor’s counsel, and Mr. Morrison’s
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`inexcusable decision to leave for vacation with the matter unsettled—despite Applicant’s counsel
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`advising Mr. Morrison that he believed Mr. Morrison misunderstood the situation. Applicant’s
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`conduct constitutes willful conduct and/or gross negligence. See, e.g., CJC Holdings Inc. v.
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`Wright & Lato Inc., 979 F.2d 60, 25 USPQ2d 1212, 1215 (5th Cir. 1992) (holding defendant’s
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`failure to read certified letter containing complaint and summons prior to leaving on vacation
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`4 Attorney Norred states that he could not timely file the answer on August 3 because he needed to Mr. Morrison’s
`obtain authority to do so. [Dkt. #5, p. 2, at ¶ 6]. StonCor does not fully understand this assertion because Attorney
`Norred is listed as the attorney of record for Applicant’s Subject Application and Mr. Morrison claims that he
`believed he had given Attorney Norred the authority and input he needed to file an answer, if necessary. [Id., Ex. A,
`at ¶ 6]. StonCor respectfully submits that, at a minimum, Attorney Norred could have filed a motion to extend
`Applicant’s time to file an answer, thereby preserving Application’s legal position.
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`willful); Marziliano v. Heckler, 728 F.2d 151, 156 (2d Cir. 1984) (holding a finding of
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`willfulness is supported by a knowing failure to timely respond). Cf. Gucci Am. Inc. v. Gold
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`Center Jewelry, 158 F.3d 631, 48 USPQ2d 1371, 1374 (2d Cir. 1998) (holding a finding of bad
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`faith is not required to support default; the default need only be supported by a finding that the
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`defendant acted deliberately).
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`2.
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`Applicant Fails To Demonstrate That It Has A Meritorious Defense
`To This Action.
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`Additionally, Applicant has also failed to demonstrate that it has a meritorious defense to
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`this action.
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`“To determine whether a party has a meritorious defense, the defaulting party need not
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`establish that there is a likelihood that it ‘will carry the day.’” El Encanto, 2001 WL 531176, at
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`*2 (quoting Enron Oil Corp. v. Diakuhara, 10 F.3d 90, 98 (2d Cir. 1993). However, the party
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`must show that “the evidence submitted, if proven at trial, would constitute a complete defense.”
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`Id. (emphasis added). See also Advanced Commc’n Design, Inc. v. Premier Retail Networks,
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`Inc., 46 Fed. Appx. 964, 973 (Fed. Cir. 2002) (stating in a patent infringement case that “in the
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`Rule 55(c) context … a meritorious defense means that the evidence or argument proffered by
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`the defaulting party could reasonably lead to a finding in the defaulting party’s favor”).
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`Applicant claims that it has a “meritorious defense” to this case because: (1) it has used
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`its STONECOAT mark since 2008; (2) StonCor only pled “upon information and belief” that
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`confusion between the parties’ respective marks might occur someday; (3) StonCor did not plead
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`a specific instance of confusion; (4) Applicant offers a service and StonCor offers a number of
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`products; and (5) StonCor allegedly failed to plead that the parties’ goods and/or services travel
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`in the same market. [Id., p. 4, at ¶ 18]. None of these arguments establish a meritorious defense.
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`First, even if Applicant has used its STONECOAT mark since 2008 (which StonCor
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`does not concede), this fact, alone, would not constitute a complete defense to this action. A
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`party may be entitled to use a mark and yet still be refused registration of that mark, based on a
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`perceived likelihood of confusion with an earlier, registered mark.
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`U.S. Trademark Registration No. 1697228 (the “‘228 Registration”) for the mark
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`STONKOTE issued to StonCor in 1992, over 16 years before Applicant’s claimed date of first
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`use for the STONECOAT mark. Further, the ‘228 Registration is incontestable and claims first
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`use and first use in commerce dates of January 5, 1984, for the STONKOTE mark—nearly 25
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`years before Applicant’s claimed first use date. Thus, it is indisputable that StonCor has priority
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`in this proceeding and that Applicant’s alleged first use of the STONECOAT mark in 2008 does
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`not constitute a complete defense to this action.
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`Second, Applicant’s assertion that StonCor pled only that confusion between the parties’
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`respective ma