Mattel, Inc. v. Henson

88 F. App'x 401
CourtCourt of Appeals for the Federal Circuit
DecidedFebruary 3, 2004
DocketNo. 03-1360
StatusPublished

This text of 88 F. App'x 401 (Mattel, Inc. v. Henson) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Mattel, Inc. v. Henson, 88 F. App'x 401 (Fed. Cir. 2004).

Opinion

PER CURIAM.

This case involves the issue of “excusable neglect” in the context of a failure to prosecute an opposition to a trademark application. Appellant Mattel, Inc. argues that its failure to take any action during the discovery and testimony periods scheduled for Mattel’s opposition to appellee Emilia J. Henson’s trademark application was excusable neglect, because Mattel did not receive Henson’s answer to Mattel’s opposition papers. The Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office rejected this argument, denied Mattel’s motion to reopen the opposition proceeding, and granted Henson’s motion to dismiss. We affirm.

BACKGROUND

The following facts are undisputed:

On June 21, 2001, Mattel filed a notice of opposition to Henson’s application for the mark GRANDMA SAYS. On July 10, 2001, the TTAB mailed to the parties notice that the opposition proceeding had commenced. The notice included a scheduling order for the proceeding, with discovery set to close on January 26, 2002, the period for Mattel’s testimony set to end on April 26, 2002, the period for Henson’s testimony set to [402]*402close on June 25, 2002, and the period for Mattel’s rebuttal testimony set to end on August 9, 2002.

On September 12, 2001, Henson filed an answer to the opposition.1 Mattel asserts that either Henson failed to mail the answer to Mattel, or that it was somehow lost in the mail as a result of the September 11 terrorist attacks and the later anthrax attacks. The TTAB’s copy of the answer does not contain a certificate of service, and on appeal Henson does not argue that she served the answer on Mattel.

During the discovery and testimony periods, Mattel did not conduct any discovery or take any testimony. Nor did Mattel move for default based on Henson’s failure to serve an answer. Indeed, Mattel did not even check on the status of the case until July 2002, when it learned that an answer had been filed. At that point, Mattel began the process of obtaining outside counsel.

Once engaged, on August 29, 2002— almost three weeks after the scheduled end of discovery and testimony—Mattel’s outside counsel mailed the TTAB a motion to reopen the opposition proceeding. Henson opposed Mattel’s motion to reopen, and filed a cross-motion to dismiss the opposition proceeding for failure to prosecute. On February 13, 2003, the TTAB issued a decision denying Mattel’s motion and granting Henson’s motion, both on the ground that Mattel had failed to show excusable neglect for its failure to prosecute. Mattel timely appealed to our court.

DISCUSSION

We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B). We review the TTAB’s decision for abuse of discretion. See Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 1552 (Fed.Cir.1991) (stating that abuse-of-discretion standard governed review of TTAB decision to dismiss an opposition proceeding for failure to prosecute, where the TTAB determined that opposer had not shown excusable neglect).

This case involves two procedural rules that ultimately turn on the same legal standard: excusable neglect. First, Mattel’s motion to reopen the opposition proceeding was pursuant to Federal Rule of Civil Procedure 6(b), which gives a court discretion to enlarge a scheduled period of time “upon motion made after the expiration of the specified period ... where the failure to act was the result of excusable neglect.” (Emphasis added). See also 37 C.F.R. § 2.116(a) (incorporating the Federal Rules of Civil Procedure for inter partes trademark proceedings).

Second, Henson’s motion to dismiss was pursuant to 37 C.F.R. § 2.132(a), which provides in pertinent part that

[i]f 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---In the absence of a showing of good and sufficient cause, judgment may be rendered against the party in the position of plaintiff.

(Emphasis added.) The TTAB has stated that “[t]he ‘good and sufficient cause’ stan[403]*403dard, in the context of [37 C.F.R. § 2.132(a) ], 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.” HKG Indus., Inc. v. Perma-Pipe Inc., 49 USPQ2d 1156, 1157 (T.T.A.B.1998). Neither Mattel nor Henson challenges this interpretation.

In analyzing excusable neglect in this case and others, the TTAB has relied on the Supreme Court’s discussion of excusable neglect in Pioneer Investment Services Co. v. Brunswick Associates Limited Partnership, 507 U.S. 380, 113 S.Ct. 1489, 123 L.Ed.2d 74 (1993). See, e.g., Old Nutfield Brewing Co. v. Hudson Valley Brewing Co., 65 USPQ2d 1701, 1702-04 (T.T.A.B. 2002) (applying Pioneer factors for excusable neglect); HKG Indus., 49 USPQ2d at 1157-58 (same). The Pioneer case dealt with a bankruptcy rule that “empowered] a bankruptcy court to permit a late filing if the movant’s failure to comply with an earlier deadline ‘was the result of excusable neglect.’ ” 507 U.S. at 382, 113 S.Ct. 1489. The Supreme Court defined the inquiry into excusable neglect as

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 [non-moving party], [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.

Id. at 395, 113 S.Ct. 1489. Neither Mattel nor Henson challenges the applicability of the Pioneer factors to the analysis of excusable neglect in the TTAB context. Applying these factors in this case, the TTAB determined that the first factor favored excusable neglect, the second and third factors undercut excusable neglect, and the fourth factor was neutral; the TTAB stated that “on balance, we find that opposer’s failure to take testimony was not the result of excusable neglect.”

On appeal, Mattel argues that the TTAB erred in analyzing the second and third Pioneer factors.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Cite This Page — Counsel Stack

Bluebook (online)
88 F. App'x 401, Counsel Stack Legal Research, https://law.counselstack.com/opinion/mattel-inc-v-henson-cafc-2004.