312.01 In General
37 C.F.R. § 2.106(a) If no answer is filed within the time initially set, or as may later be reset by the Board, the opposition may be decided as in case of default. The failure to file a timely answer tolls all deadlines, including the discovery conference, until the issue of default is resolved.
37 C.F.R. § 2.114(a) If no answer is filed within the time initially set, or as may later be reset by the Board, the petition may be decided as in case of default. The failure to file a timely answer tolls all deadlines, including the discovery conference, until the issue of default is resolved.
If a defendant fails to file an answer to a complaint during the time allowed therefor, the Board may issue a notice of default. The notice states that neither an answer nor any extension of time to answer has been filed; that notice of default under Fed. R. Civ. P. 55(a) is entered; and that defendant is allowed 30 days from the mailing date of the notice in which to show cause why default judgment should not be entered against it. If the defendant fails to file a response to the notice, or files a response that does not show good cause, default judgment may be entered against it. [ Note 1.] Cf. TBMP § 508.
If the defendant fails to file a response to the notice, or files a response which does not show good cause in a case where the plaintiff is seeking to partially cancel a registration or partially oppose an application under Trademark Act § 18, 15 U.S.C. § 1068, default judgment will be entered only to the extent that the restriction requested by plaintiff will be entered. [ Note 2.]
The issue of whether default judgment should be entered against a defendant for failure to file a timely answer to the complaint may also be raised by means other than the Board’s issuance of a notice of default. For example, the plaintiff, realizing that the defendant is in default, may file a motion for default judgment (in which case the motion may serve as a substitute for the Board’s issuance of a notice of default); or the defendant itself, realizing that it is in default, may file a motion asking that its late-filed answer be accepted. [ Note 3.] Cf. TBMP § 508. However the issue is raised, the standard for determining whether default judgment should be entered against the defendant for its failure to file a timely answer to the complaint is the Fed. R. Civ. P. 55(c) standard, that is, whether the defendant has shown good cause why default judgment should not be entered against it. [ Note 4.]
When a defendant who has not yet filed an answer to a complaint files a response to a notice of default, or to a motion for default judgment, the late answer normally should be submitted with the response. However, in some cases it may not be necessary for the defendant to submit its answer with the response. Examples include cases where the defendant has not received its copy of the complaint, and its copy of the notification letter sent to it by the Board, or where the parties have settled the case or agreed to an extension of the defendant’s time to file an answer.
In the case where a notice of default has not yet issued and a defendant files a late answer, a party is technically in default. [ Note 5.] If the parties have continued to litigate after a late-filed answer, it will generally be viewed as a waiver of the technical default. [ Note 6.]
Please Note: In instances where the defendant is in default, the parties’ obligations to conference and, subsequently, to make initial disclosures are stayed until the issue of default is resolved. [ Note 7.] If default is set aside, the Board will reset the deadline for the discovery conference as well as all subsequent dates. [ Note 8.] For more information regarding the parties' obligations with respect to initial disclosures and the discovery conference, see TBMP § 401.01, TBMP § 401.02, TBMP § 408.01(a), and TBMP § 408.01(b).
NOTES:
1. See 37 C.F.R. § 2.106(a) and 37 C.F.R. § 2.114(a); Fed. R. Civ. P. 55(a), 55(b) and 55(c); DeLorme Publishing Co v. Eartha’s Inc., 60 USPQ2d 1222, 1224 (TTAB 2000); Paolo’s Associates L.P. v. Bodo, 21 USPQ2d 1899, 1902-03 (Comm’r 1990);Identicon Corp. v. Williams, 195 USPQ 447, 449 (Comm’r 1977).
2. See Eurostar, Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1275 n.4 (TTAB 1994) (concurring opinion). Cf. Jack Lenor Larsen Inc. v. Chas. O. Larson Co., 44 USPQ2d 1950, 1952 (TTAB 1997) (where registrant defaulted in case involving petition to partially cancel registration to delete certain items identified therein on ground of abandonment and registration was cancelled in its entirety, Board, while noting that it may have been error to order cancellation of registration in its entirety, declined to set aside order, finding that default was properly entered and therefore not "void" under Fed. R. Civ. P. 60(b)(4)).
3. See, e.g., DeLorme Publishing Co v. Eartha’s Inc., 60 USPQ2d 1222, 1224 (TTAB 2000) (motion for default judgment); Paolo’s Associates L.P. v. Bodo, 21 USPQ2d 1899, 1902-03 (Comm’r 1990) (plaintiff’s motion for default judgment and defendant’s motion to accept late answer); Fred Hayman Beverly Hills, Inc. v. Jacques Bernier, Inc., 21 USPQ2d 1556, 1557 (TTAB 1991) (motion to accept late answer filed before notice of default issued).
4. See, e.g., Fred Hayman Beverly Hills, Inc. v. Jacques Bernier, Inc., 21 USPQ2d 1556, 1557 (TTAB 1991) (motion to accept late answer filed before notice of default issued was treated as response to notice of default). See also DeLorme Publishing Co v. Eartha’s Inc., 60 USPQ2d 1222, 1224 (TTAB 2000); Paolo’s Associates L.P. v. Bodo, 21 USPQ2d 1899, 1902 (Comm’r 1990).
5. DeLorme Publishing Co v. Eartha’s Inc., 60 USPQ2d 1222, 1223 n.4 (TTAB 2000).
6. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69952 (October 7, 2016).
7. 37 C.F.R. § 2.106(a) and 37 C.F.R. § 2.114(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69952 (October 7, 2016).
8. 37 C.F.R. § 2.106(b)(3)(iv); 37 C.F.R. § 2.114(b)(3)(iv); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42255 (August 1, 2007).