509.01(b)(1)    In General

Where the time for taking required action, as originally set or as previously reset, has expired, a party desiring to take the required action must file a motion through ESTTA to reopen the time for taking that action. The movant must show that its failure to act during the time previously allotted therefor was the result of excusable neglect. See Fed. R. Civ. P. 6(b)(1)(B). But see discussion in TBMP § 508 regarding requirement only to show good cause to obtain reopening of time for defendant to file an answer to a complaint.

The analysis to be used in determining whether a party has shown excusable neglect was set forth by the Supreme Court in Pioneer Investment Services Co. v. Brunswick Associates L.P., 507 U.S. 380 (1993), adopted by the Board in Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582 (TTAB 1997). These cases hold that the excusable neglect determination must take into account all relevant circumstances surrounding the party’s omission or delay, including (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. [ Note 1.] See also cases cited throughout this section and in TBMP § 534.02 regarding motions to dismiss under 37 C.F.R. § 2.132, and TBMP § 544 regarding motions for relief from final judgment.

The "prejudice to the nonmovant" contemplated under the first Pioneer factor must be more than the mere inconvenience and delay caused by the movant’s previous failure to take timely action, and more than the nonmovant’s loss of any tactical advantage that it otherwise would enjoy as a result of the movant’s delay or omission. Rather, "prejudice to the nonmovant" is prejudice to the nonmovant’s ability to litigate the case, e.g., where the movant’s delay has resulted in a loss or unavailability of evidence or witnesses that otherwise would have been available to the nonmovant. [ Note 2.]

It has been held that the third Pioneer factor, i.e., "the reason for the delay, including whether it was within the reasonable control of the movant," may be deemed to be the most important of the Pioneer factors in a particular case. [ Note 3.] Additionally, although many excusable neglect decisions which were issued prior to the Board’s 1997 Pumpkin decision may no longer be controlling under the somewhat more flexible excusable neglect standard set out in Pioneer and Pumpkin (e.g., decisions holding that a failure to act due to counsel’s docketing errors is, per se, not the result of excusable neglect), they nonetheless may be directly relevant to the Board’s analysis under the third Pioneer excusable neglect factor. [ Note 4.] For additional cases involving the excusable neglect standard, see TBMP § 534 (Motion for Judgment for Plaintiff’s Failure to Prove Case) and TBMP § 544 (Motion for Relief from Final Judgment).

A party moving to reopen its time to take required action must set forth with particularity the detailed facts upon which its excusable neglect claim is based; mere conclusory statements are insufficient. [ Note 5.]

In addition, for purposes of making the excusable neglect determination, it is irrelevant that the failure to timely take the required action was the result of counsel’s neglect and not the neglect of the party itself. Under our system of representative litigation, a party must be held accountable for the acts and omissions of its chosen counsel. [ Note 6.]

NOTES:

 1.   Pioneer Investment Services Co. v. Brunswick Associates L.P., 507 U.S. 380, 395 (1993); Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582, 1586 (TTAB 1997). See, e.g., Dating DNA LLC v. Imagini Holdings Ltd., 94 USPQ2d 1889, 1892-93 (TTAB 2010) (weighing all four factors together, motion to reopen discovery denied; opposer’s "oversight" in failing to timely serve initial disclosures and seek an extension of the discovery period does not constitute excusable neglect).

 2.   Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582, 1587 (TTAB 1997) (citing Pratt v. Philbrook, 109 F.3d 18 (1st Cir. 1997)); Paolo’s Associates L.P. v. Bodo, 21 USPQ2d 1899, 1904 (Comm’r 1990).

 3.   See FirstHealth of the Carolinas Inc. v. CareFirst of Maryland Inc., 479 F.3d 825, 81 USPQ2d 1919, 1921-22 (Fed. Cir. 2007) (Court affirmed finding of no excusable neglect based on second and third factors, with third weighed heavily in the analysis); Luster Products Inc. v. Van Zandt, 104 USPQ2d 1877, 1879 (TTAB 2012) (applicant made a calculated strategic decision, within its control, not to take discovery in the hope opposer had lost interest in the case, even though the parties held settlement discussions and opposer requested an extension of the discovery period before it closed); Old Nutfield Brewing Co. v. Hudson Valley Brewing Co., 65 USPQ2d 1701, 1702 (TTAB 2002); Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582, 1586 n.7 (TTAB 1997). See also Giersch v. Scripps Networks Inc., 85 USPQ2d 1306, 1307-08 (TTAB 2007) (respondent’s mistaken belief that counsel for petitioner would agree to an extension request did not relieve respondent of its duty to adhere to appropriate deadlines); Gaylord Entertainment Co. v. Calvin Gilmore Productions Inc., 59 USPQ2d 1369, 1372 (TTAB 2000) (failed to provide specific reasons for former counsel’s inaction); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Manufacturing Co., 55 USPQ2d 1848, 1851 (TTAB 2000) (counsel’s press of other business, docketing errors and misreading of relevant rule are circumstances wholly within counsel’s control); HKG Industries Inc. v. Perma-Pipe Inc., 49 USPQ2d 1156, 1158 (TTAB 1998) (failed to provide evidence linking the reason for the delay with the expiration of movant’s testimony period); Atlanta-Fulton County Zoo Inc. v. De Palma, 45 USPQ2d 1858, 1859-60 (TTAB 1998) (failure to timely move to extend testimony period was due to counsel’s oversight and mere existence of settlement negotiations did not justify party’s inaction or delay).

 4.   Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582, 1586-87 n.8 (TTAB 1997). Such pre-Pioneer cases include, e.g., Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1712 (Fed. Cir. 1991) (no excusable neglect where plaintiff’s counsel unreasonably relied on defendant’s counsel to sign and file plaintiff’s proposed stipulated motion to extend trial dates); American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1315-16 (TTAB 1992) (defendant’s desire to take follow-up discovery and its uncertainty regarding status of plaintiff’s pending motion to strike affirmative defenses did not excuse respondent’s neglect in failing to file timely motion to extend discovery); Hobie Designs Inc. v. Fred Hayman Beverly Hills Inc., 14 USPQ2d 2064, 2065 (TTAB 1990) (no excusable neglect where defendant’s failure to timely respond to certain discovery requests was due to defendant’s oversight or lack of care in reading discovery requests); Consolidated Foods Corp. v. Berkshire Handkerchief Co., 229 USPQ 619, 621 (TTAB 1986) (no excusable neglect where defendant’s failure to timely respond to summary judgment motion was due to counsel’s press of other litigation); Coach House Restaurant, Inc. v. Coach and Six Restaurants, Inc., 223 USPQ 176 (TTAB 1984) (same).

 5.   See Gaylord Entertainment Co. v. Calvin Gilmore Productions Inc., 59 USPQ2d 1369, 1372 (TTAB 2000) (no specific reasons for former counsel’s inaction);HKG Industries Inc. v. Perma-Pipe Inc., 49 USPQ2d 1156, 1158 (TTAB 1998) (no factual details as to the date of counsel’s death in relation to plaintiff’s testimony period or as to why other lawyers in deceased counsel’s firm could not have assumed responsibility for the case).

 6.   Pioneer Investment Services Co. v. Brunswick Associates L.P., 507 U.S. 380, 396 (1993) (citing Link v. Wabash R. Co., 370 U.S. 626 (1962) and United States v. Boyle, 469 U.S. 241 (1985)); Gaylord Entertainment Co. v. Calvin Gilmore Productions Inc., 59 USPQ2d 1369, 1373 (TTAB 2000); CTRL Systems Inc. v. Ultraphonics of North America Inc., 52 USPQ2d 1300, 1302-03 (TTAB 1999); Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582, 1586 (TTAB 1997).