Headnotes

TRADEMARKS AND UNFAIR TRADE PRACTICES

1. Practice and procedure in Patent and Trademark Office -- Interpartes proceedings -- Opposition and cancellation -- Rules and rules practice (§ 325.0305.05) Petitioners' cancellation proceeding is dismissed, under 37 CFR 2.132(a), for failure to offer testimony or evidence in support of their case prior to closing of testimony period, since death of petitioners' attorney is not "good and sufficient cause" to reopen testimony period, given that petitioners have not provided Trademark Trial and Appeal Board with date of attorney's death or explanation as to why other attorneys listed as petitioners' counsel could not have assumed responsibility for case. Case History and Disposition:

Cancellation proceeding brought by HKG Industries Inc. and Floodtronics Inc. against respondent Perma-Pipe Inc. On respondent's motion to dismiss petition to cancel pursuant to 37 CFR 2.132(a). Granted.

Judge:
Before Seeherman, Quinn, and Hairston, administrative trademark judges. Opinion Text
Opinion By:
By the Board:
  Now up for consideration in this case is respondent's motion, filed September 12, 1997, to dismiss the petition to cancel under Trademark Rule 2.132(a) on the grounds that petitioners' testimony period has closed and petitioners have neither taken testimony nor offered any evidence in support of their case.

  Petitioners submit that the motion for dismissal should be denied inasmuch as Robert C. Podwil, an attorney of record for petitioners, "has recently passed away" and "was responsible for all aspects of this cancellation proceeding." (Petitioners' Br., p. 1). Although not captioned as a "motion to reopen," petitioners' response to the motion to dismiss is essentially a motion to reopen petitioners' testimony period and has been treated as such by the Board.

  Trademark Rule 2.132(a) provides that a motion for dismissal for failure to prosecute may be made by a defendant if a plaintiff's testimony period has expired and that party has neither taken any testimony nor offered any evidence in support of its case. In response, the plaintiff must show cause why judgment should not be rendered against it and in the absence of a showing of good and sufficient cause, judgment may be rendered against the plaintiff. See 37 CFR Section 2.132(a). The "good and sufficient cause" standard, in the context of this rule, is equivalent to the "excusable neglect" standard which would have to be met by any motion under FRCP 6(b) to reopen the plaintiff's testimony period. See Grobet File Co. of America, Inc. v. Associated Distributors Inc., 12 USPQ2d 1649 (TTAB 1989); and Fort Howard Paper Co. v. Kimberly-Clark Corp., 216 USPQ 617 (TTAB 1982). See also, TBMP Section 535.02.

  In Pioneer Investment Services Company v. Brunswick Associates Limited Partnership et al ., 507 U.S. 380 (1993), as discussed by the Board in Pumpkin Ltd. v. The Seed Corps , 43 USPQ2d 1582 (TTAB 1997), the Supreme Court clarified the meaning and scope of "excusable neglect," finding that "excusable neglect" under Rule 6(b) "is a somewhat 'elastic concept' and is not limited strictly to omissions caused by circumstances beyond the control of the movant." Pioneer , 507 U.S. at 392. Specifically, the Court held that the determination as to whether a party's neglect is excusable is 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.

  Pioneer , 507 U.S. at 395. In undertaking the Pioneer analysis, several courts have stated that the third Pioneer factor, namely, the reason for the delay and whether it was within the reasonable control of the movant, might be considered the most important of the Pioneer factors in a particular case. See Pumpkin, supra at footnote 7 and cases cited therein.

  Applying Pioneer to the present case, there does not appear to be any measurable prejudice to respondent should the Board reopen the proceeding. Respondent has made no showing of lost evidence or unavailable witnesses. See Pratt v. Philbrook , 109 F.3d 18, 22 (1st Cir. 1997); Paolo's Associates Ltd. Partnership v. Paolo Bodo , 21 USPQ2d 1899, 1904 (Comm'r 1990). Also, respondent will bear no greater cost in defending this matter than it would have if petitioners had properly presented their case. Finally, there is no evidence of respondent having taken action in this case in reliance upon petitioners' inaction.

  As to the second Pioneer factor, it is adjudged that the length of the delay and its potential impact on judicial proceedings are insignificant. Similarly, under the fourth Pioneer factor, there is no evidence of record that petitioners' failure to take the appropriate steps at the assigned time period was the result of bad faith.
[1] The Board turns now to the third Pioneer factor, i.e., the reason for the delay, including whether it was within the reasonable control of the movant. In support of the motion to reopen, petitioners assert that the death of Robert C. Podwil prevented petitioners from going forward with their testimony period, which closed on August 10, 1997. Ordinarily the death of plaintiff's counsel would constitute good and sufficient cause as contemplated by Trademark Rule 2.132, provided, however, that the death occurred at a time relatively contemporaneous with the opening and closing of the plaintiff's testimony period. In this particular case, however, petitioners have not provided critical factual information as to the precise date of Mr. Podwil's death, with the result that there is no evidence of record that his death occurred at such a time as to prevent petitioners from going forward with their testimony period. The Board is unable to weigh the third Pioneer factor in petitioners' favor in view of the absence of evidence linking the reason for the delay with the expiration of petitioners' testimony period.

  Moreover, the Board notes that petitioners, in the petition to cancel, have appointed twelve named attorneys (in addition to Mr. Podwil) of Reed, Smith, Shaw, and McClay, a rather sizable law firm, to act as petitioners' duly authorized representatives in this matter and to receive all communications relating thereto. A formal power of attorney filed in a Board proceeding which specifies both the names of one or more individuals and the name of a firm will be regarded as a power to the individuals. TBMP Section 114.03. Thus, numerous individuals other than Mr. Podwil have been authorized to represent petitioners.

  Therefore, and in addition to petitioners' failure to provide any information as to the date of Mr. Podwil's death, petitioners have provided no explanation as to why the other individuals authorized to represent petitioners could not have assumed responsibility for this case upon Mr. Podwil's death.

  After careful consideration of the Pioneer factors and the relevant circumstances in this case, and in the exercise of our discretion, the Board finds that petitioners have not made a showing of excusable neglect in support of their motion to reopen the testimony period. Accordingly, petitioners' motion to reopen their testimony period is denied. Fed. R. Civ. P. 6(b).

  Inasmuch as petitioners have failed to offer any testimony or trial evidence in this case, we find that no reason exists for going forward with the remaining testimony periods. In the absence of any evidence of record on petitioners' behalf, petitioners have failed to meet their burden of proof herein and the entry of judgment against petitioners is appropriate.

  In view thereof, respondent's motion for dismissal under Trademark Rule 2.132(a) is granted and the petition to cancel is dismissed with prejudice. 1 Respondent is allowed until thirty days from the mailing date of this order in which to advise the Board as to whether respondent wishes to proceed with respect to respondent's counterclaim to cancel petitioners' pleaded Registration No. 1,623,384, or if the counterclaim is to be dismissed.

Proceedings remain otherwise suspended.

Footnotes Footnote 1. Ordinarily the moving party should introduce, in its moving papers, all evidence and factual information in support of its requested relief. However, in view of the unusual situation presented herein, petitioners may file a request for reconsideration of this decision in the event that sufficient factual information exists which may serve to alter the Board's decision. The Board hereby requires that petitioners submit any such information in affidavit form.