Rives Pitman, S.A.v.E. & J. Gallo Winery

Trademark Trial and Appeal Board

Sep 17, 2015

No. 91215384 (T.T.A.B. Sep. 17, 2015)

RK Mailed: September 17, 2015 Opposition Nos. 91215384 91215386 Rives Pitman, S.A. v. E. & J. Gallo Winery Before Quinn, Taylor and Goodman, Administrative Trademark Judges. By the Board: These oppositions come up on Applicant’s motions (filed March 16, 2015) for involuntary dismissal under Trademark Rule 2.132(a) filed in each of the proceedings. Opposer has contested the motions and moved to reopen its testimony period in each opposition.1 Background On March 12, 2014, Opposer filed notices of opposition against Application Serial Nos. 86077334 and 86077360, each on the ground of likelihood of confusion. Based thereon, the Board instituted Opposition Nos. 91215384 and 91215386, respectively. The oppositions have run on parallel tracks with 1 Although these oppositions are not consolidated, in view of the identity of the issues and the procedural posture of the proceedings, the Board has chosen to issue a single order disposing of each motion. 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 THIS DECISION IS NOT A PRECEDENT OF THE TTAB Opposition Nos. 91215384 & 91215386 2 Opposer’s initial testimony periods closing on February 15, 2015. On March 16, 2015, prior to the opening of its own testimony periods, Applicant filed motions for involuntary dismissal on grounds that Opposer has failed to take testimony or offer any evidence in support of its cases. See Trademark Rule 2.132(a). In response to each motion, Opposer does not dispute that it has failed to take testimony or introduce any other evidence into the record. Rather, Opposer posits that it pleaded and submitted a printout from the Office’s Trademark Status and Document Retrieval system of Opposer’s Application Serial No. 85855511 as part of each notice of opposition, that the application matured into Registration No. 4527914 during the pendency of each proceeding, that the pleading of the application provided Applicant with sufficient notice of Opposer’s intention to rely in each opposition on any registration that would issue and, therefore, Opposer should be permitted to reopen its testimony period for the sole purpose of introducing the registration into evidence. Response to Motion, 9 TTABVUE 2-3, 6. Opposer further adds that “the opportunities to take discovery and/or submit evidence in connection with the instant opposition[s] were unfortunately missed” because “Opposer, and their [sic] foreign counsels, have difficulty understanding and/or communicating in English [thereby] handicap[ping] U.S. counsel from acting in an efficient and expeditious manner with respect to [the] opposition proceedings.” Id. at 5. Opposition Nos. 91215384 & 91215386 3 Decision As the motions were filed prior to the opening of Applicant’s testimony periods, they are timely. See Trademark Rule 2.132(c). As to the merits of the motions, Opposer failed to take testimony or to offer any other evidence during its testimony periods. Furthermore, Applicant, in its answers, denied the salient allegations of the notices of opposition. Opposer’s notices of opposition, therefore, are subject to dismissal pursuant to Trademark Rule 2.132(a). That rule provides as follows: (a) If the time for taking testimony by any party in the position of plaintiff has expired and that party has not taken testimony or offered any other evidence, any party in the position of defendant may, without waiving the right to offer evidence in the event the motion is denied, move for dismissal on the ground of the failure of the plaintiff to prosecute. The party in the position of plaintiff shall have fifteen days from the date of service of the motion to show cause why judgment should not be rendered against him. In the absence of a showing of good and sufficient cause, judgment may be rendered against the party in the position of plaintiff. If the motion is denied, testimony periods will be reset for the party in the position of defendant and for rebuttal. Although Opposer submitted a printout of its pleaded application as part of the notices of opposition, an exhibit to a pleading, except in limited circumstances under Trademark Rule 2.122(d)(1) not present here, is not evidence on behalf of the party to whose pleading the exhibit is attached unless identified and introduced in evidence as an exhibit during the period for taking testimony. See Trademark Rule 2.122(c). See generally TBMP § 317 (2015). As Rule 2.122(d)(1) applies to a plaintiff’s registrations only, and as Opposition Nos. 91215384 & 91215386 4 Opposer has failed to enter the subsequently issued registration into the records during its testimony periods, Opposer must reopen its testimony periods in order to introduce its registration into evidence. Whether Opposer should be allowed to do so is a question of whether Opposer has shown “good and sufficient cause” for its omission. The “good and sufficient cause” standard, in the context of Trademark Rule 2.132(a), is equivalent to the “excusable neglect” standard required under Fed. R. Civ. P. 6(b) to reopen an expired period. See PolyJohn Enterprises Corp. v. 1-800-Toilets Inc., 61 USPQ2d 1860, 1860-61 (TTAB 2002). A determination of “excusable neglect” must take into account four factors: (1) the danger of prejudice to the non-moving party; (2) the length of delay and its potential impact on judicial proceedings; (3) the reason for the delay, including whether it was within the reasonable control of the moving party; and (4) whether the moving party has acted in good faith. See Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg. Co., 55 USPQ2d 1848, 1852 (TTAB 2000), citing Pioneer Inv. Servs. Co. v. Brunswick Assocs. Ltd. P’ship, 507 U.S. 380, 395 (1993). Taking the first and second factors together, we find the danger of prejudice and the potential impact on these proceedings to be minimal. The length of delay engendered by Opposer’s failure to introduce evidence is no greater than that typically found in cases subject to Rule 2.132. Furthermore, Opposition Nos. 91215384 & 91215386 5 as Applicant has not pointed to any particular prejudice it may suffer from a reopening of testimony, we find the first and second factors to favor Opposer. However, as to the third and fourth factors, Opposer, through counsel, has provided little in the way of details to explain its failure to timely enter evidence in support of its case. Although Opposer’s counsel alludes to the foreign status of Opposer and its management, as well as to the foreign status of Opposer’s Spanish and German counsels, a single sweeping statement of “difficult[ies] understanding and/or communicating in English [so as to] handicap[] U.S. counsel from acting in an efficient and expeditious manner” is scant justification for Opposer’s failure to timely act. Notwithstanding that Opposer is based overseas and that it additionally employs foreign counsel, Opposer’s U.S. counsel’s vague claims of “significant difficulty” and “handicaps,” while not evidencing any bad faith, fall far short in justifying a reopening of Opposer’s testimony period. We therefore find the third factor to weigh heavily against Opposer and the fourth factor to be neutral. It has been oft-stated that “the client and the attorney share a duty to remain diligent in prosecuting or defending the client’s case; that communication between the client and attorney is a two-way affair; and that action, inaction or even neglect by the client’s chosen attorney will not excuse the inattention of the client so as to yield the client another day in court.” CTRL Sys., Inc. v. Ultraphonics of North America, Inc., 52 USPQ2d 1300, Opposition Nos. 91215384 & 91215386 6 1302 (TTAB 1999). Thus, Opposer and its counsel share responsibility in taking timely action in these proceedings. Opposer brought these actions and, as such, bore the burden of going forward and prosecuting them. See Old Nutfield Brewing Co., Ltd. v. Hudson Valley Brewing Co., 65 USPQ2d 1701, 1704 (TTAB 2002) (“It is the opposer which bears the burden of coming forward with evidence to support its case”). Under such circumstances, neither counsel nor Opposer will be heard to excuse their mutual inaction on difficulties in communication. In view thereof, Opposer’s motions to reopen its testimony period in Opposition Nos. 91215384 and 91215386 are hereby DENIED. Since Opposer’s testimony periods have expired and Opposer failed to take testimony or to offer any evidence, Opposer cannot prove its standing or a ground for opposing the involved applications. Accordingly, Applicant’s motions for involuntary dismissal are GRANTED. Opposition Nos. 91215384 and 91215386 are DISMISSED with prejudice. * * *