TTAB decision shows danger of delayed request for extension of discovery

In Luster Products Inc v Van Zandt (Opposition No 91202788, November 28 2012), the Trademark Trial and Appeal Board (TTAB) has denied a request to extend the discovery period of an opposition because the request was made after discovery had closed and there was no showing of excusable neglect.

One phase of an opposition is the discovery period. During that period, the parties exchange initial disclosures and can serve document requests and interrogatories on the other side, as well as being able to depose the other side’s witnesses and third-party witnesses. This period is set at the beginning of the case and can be extended at the discretion of the TTAB. The general rule is that requests to extend the discovery period - or any other period - must be made before that period expires. If the request is filed after the period expires, the party making the request must show that  “excusable neglect” was the reason for the failure to timely request the extension.

In this opposition, the applicant requested an extension of the discovery period five weeks after that period had expired. The applicant argued that there was excusable neglect because the history of discovery and negotiations led it to believe that the opponent was not interested in pursuing the opposition and it was surprised when the opponent served discovery on the last day of the discovery period. The applicant pointed out that the opponent had failed to serve initial disclosures and that the latter had requested to a three-month extension of the discovery period for settlement which the applicant declined, leading it to believe the opponent had lost interest in the action. 

The TTAB first reviewed the factors set by the Supreme Court in assessing excusable neglect: 

1. the danger of prejudice to the other party;
2. the length of the delay and the impact on the judicial process;
3. the reason for the delay and the control the movant had over that delay; and
4. whether the movant acted in good faith. 

The TTAB observed that it had previously held that the third factor “might be considered the most important factor in a particular case”.

The TTAB then applied the factors to this action, starting with the third factor. The TTAB found that the third factor weighed strongly against excusable neglect because the applicant had other remedies if it thought the opponent was not interested and was not properly providing information in discovery. Specifically, the applicant should have moved to compel the initial disclosures and if, after being ordered, the opponent still did not comply and serve initial disclosures, the applicant could have moved to dismiss. The TTAB pointed out that this case illustrates the danger of assuming a party has lost interest and making a strategic decision not to take discovery. As a result, the TTAB concluded that the failure to timely request an extension was a strategic decision, rather than neglect. 

In analysing the other factors, the TTAB found that the delay caused by the failure to timely request the extension was significant because the TTAB has an interest in minimising the time and resources for motions such as this one, instead of a timely request which is easily disposed of.  The TTAB found that there was no prejudice to the opponent and no evidence of bad faith. In sum, the TTAB found no excusable neglect and denied the motion.

In summary, this case shows the danger of a relaxed approach to the deadlines set by the TTAB. There is a high standard of excusable neglect when the failure to timely request extensions is in the hands of the party making the request.

Ethan Horwitz, King & Spalding, New York