Super Bakery, Incorporatedv.Ward E. Benedict

Trademark Trial and Appeal Board

Sep 16, 2010

No. 92047859 (T.T.A.B. Sep. 16, 2010)

al Mailed: September 16, 2010

Cancellation No. 92047859

Super Bakery, Incorporated

v.

Ward E. Benedict

Before Bucher, Zervas, and Mermelstein,
Administrative Trademark Judges.

By the Board:

On March 3, 2010, the U.S. Court of Appeals for the
Federal Circuit vacated the Board’s decision of August 18,
2009, in which the Board entered default judgment against
respondent for his failure to comply with a Board order
granting discovery sanctions and remanded the case for
further consideration. Benedict v. Super Bakery, Inc., No.
2010-1085 (Fed. Cir. March 3, 2010). The remand is for the
purpose of considering the applicability of 37 C.F.R. Section
2.127(d) to the facts of this case. Id. Slip Op. at 3.
Background
On April 22, 2008, because respondent had not responded
to petitioner’s discovery requests, petitioner filed a
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE
TTAB
Cancellation No. 92047859
2
combined motion to compel discovery responses and request for
suspension of the proceeding. Respondent did not respond to
the motion, and the Board issued an order on June 24, 2008,
granting the motion to compel as conceded. See 37 C.F.R.
Section 2.127(a) (unopposed motion may be treated as
conceded). Pursuant to the order, respondent was allowed
thirty days from June 24, 2008, to serve full and complete
responses without objection to petitioner’s first and second
sets of interrogatories and first and second sets of requests
for production of documents.
On August 4, 2008, petitioner filed a motion for default
judgment as a sanction for respondent’s failure to comply
with the Board’s June 24, 2008, order, alleging that the
ordered discovery responses had not been served. Respondent
responded to the motion on August 22, 2008, (almost two
months after the Board issued its order compelling
discovery), seeking reconsideration of the Board’s order of
June 24, 2008. On February 11, 2009, the Board denied
respondent’s motion for reconsideration as untimely.
37 C.F.R. Section 2.127(b) (request for reconsideration must
be filed within one month of order or decision). The Board
also found that while sanctions against respondent for
failing to comply with the Board’s order of June 24, 2008,
were warranted, an entry of judgment was unwarranted at the
time. As part of the ordered sanctions, the Board again
Cancellation No. 92047859
3
ordered respondent to provide full and complete responses to
petitioner’s discovery requests without objection within
thirty days (i.e., by March 13, 2009).
Respondent did not respond to any of petitioner’s
discovery responses or otherwise comply with the Board’s
orders. On March 12, 2009, just one day before his discovery
responses were due as set by the Board’s February 11, 2009
sanctions order, respondent filed a motion for summary
judgment.1 On March 30, 2009, the Board issued an order
suspending proceedings pending determination of respondent’s
motion.
In conjunction with its response to respondent’s motion
for summary judgment, petitioner filed a second motion for
sanctions, asking the Board to enter judgment against

1 The basis for respondent’s summary judgment motion was that
cancellation of the subject registration is barred under the
doctrine of res judicata by virtue of the examining attorney’s
“decision” in the final office action issued with regard to
petitioner’s pleaded application Serial No. 78664774 (which is now
before the Board in a separate appeal), in which the examining
attorney found that there was a likelihood of confusion between
petitioner’s mark and respondent’s registered mark. In its
motion, respondent argued that this cancellation proceeding “is
nothing more than an attempt by Petitioner to secure the same
result that Petitioner tried and failed on the merits to secure”
during the examination of petitioner’s pending application.
Respondent’s motion is without merit. A decision by an
examining attorney during examination of an application as to
whether or not there is likelihood of confusion with another
registered mark has no preclusive effect. See, e.g., Cineplex
Odeon Corp. v. Fred Wehrenberg Circuit of Theatres Inc., 56 USPQ2d
1538, 1541 (TTAB 2000) (citing West Florida Seafood, Inc. v. Jet
Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1664 (Fed. Cir. 1994);
In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986) (It is well-
settled that the Board is not bound by the decisions of examining
attorneys during ex parte examination.)

Cancellation No. 92047859
4
respondent pursuant to Trademark Rule 2.120(g), for its
failure to comply with the Board’s sanctions order. Noting
that respondent had failed to respond to any of petitioner’s
discovery responses as twice ordered, the Board granted
petitioner’s motion on August 18, 2009, entered default
judgment against respondent, and denied respondent’s motion
for summary judgment as moot. On appeal, respondent argued
that because he filed a summary judgment motion, this
proceeding, including his obligation to comply with the
Board’s discovery sanctions, should have been deemed
suspended upon the filing of that motion.
Analysis
Trademark Rule 2.127(d) provides, in relevant part:

When any party files … a motion for summary
judgment, or any other motion which is
potentially dispositive of a proceeding, the case
will be suspended by the Trademark Trial and
Appeal Board with respect to all matters not
germane to the motion and no party should file
any paper which is not germane to the motion
except as otherwise specified in the Board’s
suspension order. If the case is not disposed of
as a result of the motion, proceedings will be
resumed pursuant to an order of the Board when
the motion is decided.

The mere filing of a motion for summary judgment (or any
other motion which is potentially dispositive of a case) does
not, however, automatically suspend a proceeding. In fact,
during the rulemaking process in 1998 the USPTO specifically
considered and rejected a proposal to automatically suspend
proceedings unpon the filing of a potentially-dispositive
Cancellation No. 92047859
5
motion.2 Rather, only an order of the Board formally
suspending proceedings has such effect. See Giant Food, Inc.
v. Standard Terry Mills, Inc., 229 USPQ 955, 965 (TTAB 1986);
and Consultants & Designers, Inc. v. Control Data Corp., 221
USPQ 635, 637 n.8 (TTAB 1984). Because the Board did not
issue an order suspending this case pending disposition of
applicant’s motion for summary judgment until March 30, 2009,
respondent was obligated to respond to petitioner’s discovery
requests as ordered by the Board by the March 13, 2009,
deadline set by the Board.
In certain situations, the filing of a motion for
summary judgment may serve as good cause for not responding
to discovery requests. It is our view, however, that in the

2 The following exchange occurred during the USPTO’s 1998
rulemaking process in response to a proposal to slightly modify 37
C.F.R. Section 2.127(d):

Comment: One organization suggested the section should be
amended to provide that the filing of a potentially
dispositive motion automatically suspends proceedings,
without any action by the Board.

Response: The suggested modification has not been adopted.
A variety of motions are potentially dispositive, including a
motion for sanctions in the form of entry of judgment.
Because of the number of situations in which a party may make
a potentially dispositive motion, it is believed better for
the Board to determine whether proceedings should be
suspended based on the situation presented by the particular
case.

Miscellaneous Changes to Trademark Trial and Appeal Board Rules
(Final Rule), 63 Fed. Reg. 48,081, 48,094 (Sept. 9, 1998). The
USPTO thus explicitly considered – but did not adopt – a rule (or
an interpretation of the existing rule) that would have
automatically suspended proceedings upon the filing of a
potentially-dispositive motion. The Board’s suspension practice
under Section 2.127(d) has not changed in this regard since 1998.
Cancellation No. 92047859
6
circumstances of this case, the pendency of respondent’s
motion for summary judgment does not constitute good cause
for not complying with the Board’s order granting discovery
sanctions. See Giant Food, Inc., v. Standard Terry Mills,
Inc., 229 USPQ at 962 (the Board found that the filing of
applicant’s motion for summary judgment was a “convenient
afterthought to applicant’s counsel” and did not constitute
good cause for not timely responding to opposer’s outstanding
discovery requests). A party’s obligations under a Board
order specifically directing it to respond to discovery by a
date certain upon pain of sanctions (or, in this case,
further sanctions) is very different from the routine
obligations arising from the service of discovery requests by
an opposing party. Rather than providing justification for
the failure to comply with the Board’s order, the filing of
respondent’s clearly meritless motion for summary judgment
just one day before respondent’s discovery responses were due
can only be viewed as an effort to further obstruct
petitioner’s rights to obtain discovery under the Board’s
rules, the Board’s order compelling discovery, and the
Board’s order granting discovery sanctions.3

3 Respondent admitted as much in his motion for summary judgment.
See Motion at 3-4 (complaining about the “onerous processes of
discovery,” and seeking “to be heard without bearing the weight of
the processes of discovery and trial....”). Regardless of
respondent’s characterization of its discovery burdens, that issue
is foreclosed, as the Board has already entered an order
compelling discovery, and an order granting discovery sanctions.
Cancellation No. 92047859
7
We acknowledge that respondent is proceeding pro se. We
further observe that while default judgment is sometimes
considered a harsh remedy, it is justified “where no less
drastic remedy would be effective and there is a strong
showing of willful evasion.” See Trademark Trial and Appeal
Board Manual of Procedure (“TBMP”) Section 527.01(a) (2d ed.
rev. 2004). Respondent has been afforded multiple
opportunities to comply with the Board’s discovery rules and
orders, but has not done so. Petitioner filed its original
motion to compel discovery more than two years ago, but has
yet to see any of the discovery responses to which it is
entitled. There is no reason to assume that, given
additional opportunities, respondent will fulfill his
obligations as a party to this proceeding.
In summary, we find that Trademark Rule 2.127(d) did not
effect an automatic suspension of this proceeding upon the
filing of respondent’s motion for summary judgment.
Accordingly, respondent’s compliance with the Board’s
February 11 order was due on or before March 13, and was not
affected by the filing of respondent’s motion for summary
judgment.

At this point, the issue is respondent’s compliance with the
Board’s order granting discovery sanctions, not whether that order
(or the earlier one compelling discovery) should have been entered
in the first place.

Cancellation No. 92047859
8
Our decision here regarding the applicability of
37 C.F.R. Section 2.127(d) to the facts of this case does not
change the conclusion reached in our original order entering
judgment and granting the petition for cancellation, so we
again enter judgment against respondent.
Registration No. 2966225 will be cancelled in due
course.