Walter P. Maksym, Jr.v.Rebecca Cooper

Trademark Trial and Appeal Board

Feb 12, 2009

No. 92046755 (T.T.A.B. Feb. 12, 2009)

Skoro Mailed: February 12, 2009 Cancellation No. 92046755 Walter P. Maksym, Jr. v. Rebecca Cooper Before Zervas, Cataldo and Bergsman, Administrative Trademark Judges. By the Board: This case now comes up on registrant’s motion, filed December 8, 2008, to dismiss for failure of petitioner to take testimony or offer evidence in support of its petition. Petitioner1 has responded with a motion to reopen discovery and his testimony period, filed December 20, 2008. Registrant has opposed the motion. As grounds for the motion to dismiss, registrant states that petitioner’s testimony period closed November 10, 2008; that petitioner has not taken any testimony or introduced any other evidence during his testimony period and, thus, 1 Petitioner has added various names to the caption in his pleading: dba Walter Maksym Publishing and Breakthru Publishing, and Diets Don’t Work, Inc. In his affidavit, Mr. Maksym also indicates that he is “counsel of record” and refers to himself in the third person. For purposes of this proceeding, Walter Maksym, individual, is the only petitioner. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 THIS OPINION IS NOT PRECEDENT OF THE TTAB Cancellation No. 92046755 2 petitioner cannot prove the allegations in his petition for cancellation, and therefore the petition for cancellation should be dismissed with prejudice. In response, petitioner concedes the arguments in registrant’s motion, but nevertheless moves to reopen discovery and trial dates. In his cross motion to reopen discovery and the testimony periods, petitioner submitted a protective agreement to enable him to file an affidavit as confidential2 and states he seeks to reopen the discovery and testimony periods to enable him to obtain and enter evidence into the record to prove his case. Registrant objects to a reopening of the time periods first stating that the confidential affidavit upon which petitioner relies was not provided to it and therefore registrant is at a disadvantage in responding. To the extent it can provide grounds for objection, registrant notes that petitioner was 2 It is noted that petitioner failed to provide a copy of the affidavit to registrant’s counsel, attempting to keep it for the Board’s eyes only. However, much of the affidavit contains arguments as to why petitioner was unable to comply with the trial dates set in this proceeding, thus putting registrant at a disadvantage in responding to the motion. By one rule change effective August 31, 2007, the Board's standard protective order is made applicable to all TTAB inter partes cases, whether already pending or commenced on or after that date. The Board’s standard protective order allows outside counsel for the parties to have access to all information designated as both “confidential or highly confidential” and “trade secret/commercially sensitive.” Thus, petitioner should have provided registrant’s counsel with a copy of his affidavit and accompanying exhibits. However, we will consider petitioner’s affidavit in order to ensure that we consider all the relevant facts and circumstances in deciding these motions. Cancellation No. 92046755 3 well aware of the deadlines in this proceeding and did nothing until registrant filed its motion to dismiss; that petitioner vigorously defended against the previous motions in this proceeding in October 2007; and that registrant will be and has been prejudiced by the time required to defend its registration in both costs and the cloud over its registration. Thus, according to registrant, petitioner has not established excusable neglect to warrant a reopening of the time periods. Pursuant to Fed. R. Civ. P. 6(b)(2), the requisite showing for reopening an expired period is that of excusable neglect. In Pioneer Investment Services Company v. Brunswick Associates Limited Partnership, 507 U.S. 380, 395 (1993), and as discussed by the Board in Pumpkin, Ltd. v. The Seed Corps, 43 USPQ2d 1582 (TTAB 1997), the U.S. Supreme Court set forth factors to be considered in determining excusable neglect. Those factors 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. In subsequent applications of this test, 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 Cancellation No. 92046755 4 considered the most important factor in a particular case. See Pumpkin, supra at n.7. Before examining the Pioneer factors, a brief review of the trial schedule in this proceeding will help in establishing the time line in relation to petitioner’s explanation of his failure to act. On February 12, 2008 proceedings were resumed after the Board granted registrant’s motion for relief from default judgment. The resumption schedule provided that discovery would close on August 12, 2008 and petitioner’s testimony period would close on November 10, 2008. Petitioner’s affidavit in support of his argument to establish excusable neglect for the delay, states: that he was in California from July 20 through August 3, 2008 taking the California Bar exam;3 that, during that time, there was an earthquake in Los Angeles that damaged his computer; that he was not able to access his client files for two weeks and then had to reconstruct files and research; and that he has several health conditions that impose difficulty in practicing law and it takes him three times longer to get work done. Beyond these personal matters, petitioner also asserts that 3 Petitioner also states that he had rescheduled into August and September other pending legal matters to accommodate the bar examination. Cancellation No. 92046755 5 Dr. Leah Schwartz,4 a “key witness” for petitioner,5 was seriously ill and unable to travel from Pennsylvania to Texas to retrieve files in storage, which are needed for her testimony. Thus, according to petitioner, “due to the combined effects of constraints, difficulties, health problems, events, occurrences, disability, circumstances outside his control, and other pressing professional obligations, petitioner could not comply with the set discovery and testimony dates and would have filed a motion to extend time and reset the discovery and testimony dates at an earlier date.” (Affidavit ¶ 26). Having set forth petitioner’s arguments, we turn to the third Pioneer factor, the reason for the delay. Much of the medical documentation petitioner provided indicates that many of his health conditions and “disabilities”6 were pre- existing, well before petitioner filed his petition to cancel. Petitioner is silent as to why he rescheduled much of his other legal work to accommodate the bar examination, but did not request an extension of time in this proceeding. 4 Dr. Leah Schwartz is identified as the widow of petitioner’s predecessor in interest. 5 Registrant states that counsel is unaware of a Dr. Schwartz, in that she has not been identified as a potential witness in this proceeding. 6 Petitioner points to carpal tunnel syndrome and arthritic hips (Exs. L, N and O to Maksym affidavit). Cancellation No. 92046755 6 It is also noted that when7 petitioner learned of Dr. Schwartz’s illness he did not request an extension of time; that discovery was open for six months from February 12, 2008 and his testimony period opened in October, petitioner sets forth no extenuating circumstances from February to July or after September, yet petitioner did nothing in this proceeding until registrant filed its motion to dismiss. In light of the foregoing, we find that petitioner’s failure to conduct discovery, take testimony or offer evidence during these time periods was caused by his complete failure to act and to monitor the time periods in this proceeding. Such action was wholly within the reasonable control of petitioner.8 With regard to the second Pioneer factor, we find that the delay caused by petitioner’s failure to take testimony or offer evidence during its testimony period is 7 Petitioner does not indicate when he learned of Dr. Schwartz’ incapacity, only that it was during the discovery and testimony periods. 8 Cf. Docketing errors and breakdowns generally do not constitute excusable neglect. See Pumpkin, supra, and cases cited therein. Cancellation No. 92046755 7 significant. The Board’s growing docket of active cases, and the resulting, inevitable increase in motion practice before the Board, increasingly strains the Board’s limited resources. Both the Board and parties before it have an interest in minimizing the amount of the Board’s time and resources that must be expended on matters, such as the motions decided herein, which come before the Board solely as a result of one party’s total failure to monitor its own litigation. The Board’s interest in deterring such failure weighs against a finding of excusable neglect under the second Pioneer factor. With regard to the first Pioneer factor, we find that there is no evidence of significant prejudice to respondent, and, with regard to the fourth Pioneer factor, we find that there is no evidence of bad faith on the part of petitioner. On balance, we find that petitioner’s failure to timely act before the close of its testimony period was not caused by factors constituting excusable neglect. Petitioner brought this case and, in so doing, took responsibility for moving it forward in accordance with the trial schedule, but failed to do so. See Atlanta-Fulton County Zoo, Inc. v. DePalma, 45 USPQ2d 1858, 1860 (TTAB 1998). In that petitioner has failed to establish excusable neglect under Fed. R. Civ. P. 6(b)(2), petitioner’s request Cancellation No. 92046755 8 to reopen discovery and his testimony period is hereby DENIED. Thus, inasmuch as petitioner has failed to offer any testimony or trial evidence in this case, respondent’s motion to dismiss under Trademark Rule 2.132(a) is hereby GRANTED. Accordingly, judgment is hereby entered against petitioner, and the cancellation is dismissed with prejudice. .o0o. Cancellation No. 92046755 9