Britt K. Turkingtonv.Flow Sports, Inc.

Trademark Trial and Appeal Board

Feb 3, 2016

No. 92059814 (T.T.A.B. Feb. 3, 2016)

RK

Mailed: February 3, 2016

Cancellation No. 92059814
Britt K. Turkington
v.
Flow Sports, Inc.

Before Cataldo, Taylor and Gorowitz,
Administrative Trademark Judges.

By the Board:

This matter comes up on Respondent’s motion (filed September 18, 2015)
for involuntary dismissal under Trademark Rule 2.132(a). The motion is fully
briefed.
Background
Respondent owns Registration No. 4174876 for SIC in standard
characters for “paddle surfboards” in International Class 28.1 A petition to
cancel the registration was filed on August 14, 2014, and later amended on
December 10, 2014. Petitioner has asserted a claim of fraud as well as a claim
of likelihood of confusion based on his putative common law use of SIC. See
Amended Petition for Cancellation, 7 TTABVUE 3-6. Respondent, in its
answer, has denied the salient allegations of the amended petition.

1 Registered July 17, 2012, on the Principal Register.
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
Cancellation No. 92059814

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Pursuant to the Board’s order of October 30, 2014, Petitioner’s main
testimony period, as reset, opened on August 10, 2015, and closed on
September 8, 2015. Petitioner failed to take testimony or offer any other
evidence during his testimony period. As such, Respondent now seeks
judgment under Trademark Rule 2.132(a) for Petitioner’s failure to prove his
case.
Decision
Trademark Rule 2.132(a) 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.

A motion under Trademark Rule 2.132(a) is timely if filed prior to the
opening of the moving party’s testimony period. See Trademark Rule 2.132(c).
Respondent’s testimony period was scheduled to open on October 9, 2015. As
Respondent’s motion was served and filed on September 18, 2015, the motion
is timely.
Turning to the merits of Respondent’s motion, we note that Petitioner
does not dispute his failure to present any testimony or evidence during his
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testimony period. See Petitioner’s Response, 15 TTABVUE 2. Therefore, in the
face of a motion under Trademark Rule 2.132(a), Petitioner must establish
good and sufficient cause for his failure to take testimony and/or introduce
other evidence during his assigned trial period. The standard used to
determine good and sufficient cause “is excusable neglect.” See Grobet File
Co. of Am. Inc. v. Associated Distribs. Inc., 12 USPQ2d 1649, 1651 (TTAB
1989) (“Only if the plaintiff establishes that the failure to offer evidence or
take testimony during its trial period was occasioned by excusable neglect
will a motion under 2.132(a) be denied and a new trial schedule issued. That
is because in order to show good and sufficient cause why judgment should
not be entered against the plaintiff, the plaintiff must be able to reopen its
testimony period in order to introduce testimony or other evidence.”).
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 Pumpkin
Ltd. v. The Seed Corps, 43 USPQ2d 1582, 1586 (TTAB 1997).
In his response to the subject motion, Petitioner asserts a good faith effort
to comply with the Board’s rules and procedures. Petitioner’s Response, 15
TTABVUE 4. That Petitioner failed to submit testimony or evidence during
his trial period due to a misunderstanding of or confusion over the Board’s
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rules does not, without more, negate Petitioner’s good faith and we are not
persuaded by Respondent’s contentions that Petitioner lacked good faith. We
therefore find this factor to favor Petitioner.
On the other hand, mistake or confusion concerning the Board’s rules is
not a basis for demonstrating good and sufficient cause for Petitioner’s failure
to take testimony or to submit evidence during Petitioner’s trial period. Cf.
Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg. Co., 55 USPQ2d
1848, 1852 (TTAB 2000) (counsel’s misunderstanding or misinterpretation of
Board rules does not constitute excusable neglect). While we recognize that
Petitioner does not have legal representation in this proceeding2, we also note
that Petitioner made a conscious decision to proceed pro se despite several
advisories from the Board as shown below:
Petitioner acknowledges, that he was informed by [the assigned
interlocutory attorney] during the discovery conference that he
would be held to compliance with the TTAB rules and
regulations and that no favorable consideration would be
extended just because the Petitioner is [pro se].

Petitioner’s Response, 15 TTABVUE 4;
The Board strongly advises all parties to secure the services of
an attorney who is familiar with trademark law and Board
procedure. Strict compliance with the Trademark Rules of
Practice and, where applicable, the Federal Rules of Civil
Procedure, is required of all parties, whether or not they are
represented by counsel.

2 It appears, however, that Petitioner has had the benefit of at least a retired
attorney during portions of this proceeding as noted by the Board in its order of
October 30, 2014. See Board Order of October 30, 2014 (“Discovery Conference
Order”), 6 TTABVUE 1 n.1.
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Board Order of August 18, 2014 (“Institution Order”), 2 TTABVUE 6
(emphasis in original);
Petitioner is not represented by legal counsel in this proceeding.
While Patent and Trademark Rule 11.14(e) permits any person
to represent itself, it is generally advisable for a person who is
not acquainted with the technicalities of the procedural and
substantive law involved in a cancellation proceeding to secure
the services of an attorney who is familiar with such matters. ...
While it is true that the law favors judgments on the merits
wherever possible, it is also true that the Patent and Trademark
Office is justified in enforcing its procedural deadlines.

Discovery Conference Order, 6 TTABVUE 7.
Furthermore, Petitioner was continuously advised, or at least reminded,
throughout this proceeding of the Board’s trial and testimony procedures. For
instance, the Institution Order provides the following guidance:
For guidance regarding trial and testimony procedures, see
Trademark Rules 2.121, 2.123 and 2.125, as well as TBMP
Chapter 700. The parties should review authorities regarding
the introduction of evidence during the trial phase, including by
notice of reliance and by taking testimony from witnesses. For
instance, any notice of reliance must be filed during the filing
party’s assigned testimony period, with a copy served on all
other parties, and any testimony of a witness must be both
noticed and taken during the party’s testimony period. A party
that has taken testimony must serve on each adverse party a
copy of the transcript of such testimony, together with copies of
any exhibits introduced during the testimony, within thirty (30)
days after completion of the testimony deposition.

The Discovery Conference Order clearly sets out the proceeding schedule,
including Petitioner’s trial period, and further advises that “a copy of the
transcript of testimony, together with copies of documentary exhibits, must
be served on the adverse party within thirty days after completion of taking
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of testimony” and refers the parties to Trademark Rule 2.125. Discovery
Conference Order, 6 TTABVUE 6-7.
In response to Petitioner’s filing of its initial disclosures with the Board on
January 10 and January 20, 2015, the Board advised as follows:
Written disclosures, as with requests for discovery, responses
thereto, and materials or depositions obtained through the
disclosure or discovery process, should not be filed with the
Board except when submitted ... (3) under a notice of reliance
during a party’s testimony period; or (4) as exhibits to a
testimony deposition ...

The record reflects that the initial disclosures were not filed
with respect to any of these enumerated reasons. In view
thereof, the parties are advised that the Board will give no
further consideration to petitioner’s initial disclosures.

Board Order of February 17, 2015, 12 TTABVUE 1-2.
Finally, we see nothing in the record from which Petitioner could have
reasonably presumed that evidence was of record in this proceeding. See
Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717, 1717 n.3
(TTAB 1987) (party may not reasonably presume evidence is of record when
that evidence is not offered in accordance with the rules).
In view of the clarity and frequency of the Board’s advisories, we find no
basis to excuse Petitioner’s failure to properly introduce evidence into the
record during his assigned testimony period. Such failure was wholly within
Petitioner’s reasonable control and so we find this factor to favor Respondent.
As to the second factor, a reopening of the testimony period to allow
Petitioner to properly introduce evidence would certainly exacerbate the
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delay that has already been injected into these proceedings and therefore
favors Respondent. As to the danger of prejudice to Respondent, we are
neutral on this factor as there is nothing in the record to suggest any
prejudice of note to Respondent beyond what is normally attendant to any
delay.
Weighing all of the factors together, we find that Petitioner has not
demonstrated the requisite excusable neglect to grant a reopening of
Petitioner’s testimony period.
As the plaintiff, Petitioner bears the burden of proving both his standing
to petition for cancellation of the subject registration and at least one valid
ground for cancellation. Since Petitioner failed to timely take testimony or to
offer any evidence during his testimony period, and is not entitled to a
reopening thereof, Petitioner cannot prove his standing or a ground for
cancelling the involved registration. Accordingly, this cancellation proceeding
is DISMISSED with prejudice pursuant to Trademark Rule 2.132(a).3

3 We note that on January 4 and 5, 2016, Petitioner filed a putative motion for
summary judgment and attachments thereto. We further note that Respondent filed
a motion to strike Petitioner’s motion for summary judgment on February 1, 2016.
The filings have been given no consideration as they contravene the Board’s order of
September 26, 2015, suspending this proceeding pending the disposition of
Respondent’s motion for involuntary dismissal and advising the parties that any
paper filed during the pendency of the motion which is not relevant thereto would be
given no consideration. See Trademark Rule 2.127(d). We further add that even in
the absence of an explicit moratorium on the filing of further papers, Petitioner’s
motion for summary judgment is untimely as a motion for summary judgment is a
pretrial device that should be filed prior to the commencement of the first testimony
period, as originally set or reset. See Trademark Rule 2.127(e)(1). Finally,
Petitioner’s attempt to enter evidence into the trial record by way of a motion for
summary judgment is futile as evidence submitted in support of or in opposition to a
motion for summary judgment is of record only for consideration of that motion. See,
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* * *

for example, Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464
(TTAB 1993). As we have explained throughout this order, any such evidence to be
considered at final hearing must be properly introduced during the appropriate trial
period.