Rule 36(b) of Federal Rules of Civil Procedure clarified by TTAB

In Giersch v Scripps Networks Inc, the US Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) has issued a precedential ruling granting the respondent's (Scripps Network Inc) motion to withdraw its effective admissions under Rule 36(b) of the Federal Rules of Civil Procedure and to substitute responses. The TTAB granted the motion despite Scripps's failure to submit responses to the petitioners' (Gerald David Giersch, Jr and Benjamin J Giersch (the Gierschs)) first requests for admissions by the twice-extended deadline. In light of the TTAB's decision, the Gierschs' motion for summary judgment and motions for leave to add a claim of fraud to their cancellation claim based on the effective admissions were purged.

By way of background, in the present case, Scripps moved to reopen its time to respond to the Gierschs' admission requests due to excusable neglect under Rule 6(b)(2) of the Federal Rules of Civil Procedure and, in the alternative, to withdraw its effective admissions under Rule 36(b), and have its responses accepted. The TTAB found insufficient evidence to show excusable neglect and, therefore, assessed whether the admissions could be withdrawn under Rule 36(b).

The TTAB applied a two-prong test: whether the withdrawal would (i) better serve the development of the merits of the case; and (ii) prejudice the petitioners by creating "special difficulties" for them to obtain evidence required to prove the matter. The TTAB found that the merits will be subserved by allowing the withdrawal because the responses submitted by Scripps showed that the supposedly admitted matters were actually disputed and the Gierschs would not be prejudiced because any potential prejudice could be mitigated by extending discovery since the case was still in the pre-trial stage. The TTAB noted that neither mere inconvenience nor the burden of addressing the merits rise to the level of "prejudice" as contemplated by Rule 36(b). Further, the TTAB noted that the filing of a Rule 36(b) motion prior to the close of discovery does not per se satisfy the second prong.

Upon finding it appropriate to exercise its discretion pursuant to Rule 36(b) to grant Scripp's motion and accept its later-served responses, the TTAB denied the Gierschs' motion for summary judgment under Section 2(d) because the motion was based wholly on the withdrawn admissions. Similarly, the TTAB denied the Gierschs' motions for leave to amend their petition to assert a claim of fraud because the fraud claims were predicated on the premise that the Gierschs' requests for admission had been allowed.

The board extended discovery and reset the trial dates.

Emily Bienko, King & Spalding LLP, New York

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