509.01    Nature of Motions

Pursuant to Fed. R. Civ. P. 6(b), made applicable to Board proceedings by 37 C.F.R. § 2.116(a), a party may file a motion for an extension of the time in which an act may or must be done. [ Note 1.] If the motion is filed prior to the expiration of the period as originally set or previously extended, the motion is one to extend a period that has not yet closed (often referred to as a motion to "extend"), and the moving party need only show good cause for the requested extension. If, however, the motion is not filed until after the expiration of the period as originally set or previously extended, the motion is one to extend a period that has closed (often referred to as a motion to "reopen"), and the moving party must show that its failure to act during the time allowed therefor was the result of excusable neglect. [ Note 2.] An exception to the usual requirement for showing excusable neglect when the period for taking an action has expired arises when a defendant is in default because its time to answer has expired. In such circumstances, the showing required is good cause to excuse the default. See TBMP § 312 and TBMP § 508.

NOTES:

 1.   Compare 37 C.F.R. § 2.127(a)  ("The time for filing a reply brief [on a motion] will not be extended or reopened.") with 37 C.F.R. § 2.127(e)(1)  ("The time for filing a motion under [Fed. R. Civ. P.] 56(d) will not be extended").

 2.   Fed. R. Civ. P. 6(b). See also Vital Pharmaceuticals, Inc. v. Kronholm, 99 USPQ2d 1708, 1710 n.10 (TTAB 2011) ("The Board construes a motion to extend an expired period as a motion to reopen such period.").

509.01(a)    Motions to Extend Time

A motion to extend must set forth with particularity the facts said to constitute good cause for the requested extension; mere conclusory allegations lacking in factual detail are not sufficient. [ Note 1.]

Moreover, a party moving to extend time must demonstrate that the requested extension of time is not necessitated by the party’s own lack of diligence or unreasonable delay in taking the required action during the time previously allotted therefor. [ Note 2.] The Board will "scrutinize carefully" any motion to extend time, to determine whether the requisite good cause has been shown. [ Note 3.]

For further information concerning good cause for a motion to extend, see the cases cited in the note below. [ Note 4.]

If a motion to extend the time for taking action is denied, the time for taking such action may remain as previously set. [ Note 5.] If a motion to extend trial dates is filed after the deadline for discovery but prior to the deadline for pretrial disclosures and the motion is granted by the Board, all deadlines beginning with the pretrial disclosure deadline, and including the time for filing a motion for summary judgment, will be extended. [ Note 6.] If a defendant’s motion to extend its time to file an answer is granted, the order granting the motion will usually include a resetting of all subsequent deadlines or dates, including the discovery conference, disclosures, discovery and testimony periods.

The time for filing a reply brief on a motion will not be extended, even upon the parties’ consent. In addition, while the time for filing a brief in response to a motion for summary judgment may be extended, the time for filing, in lieu thereof, a motion for discovery under Fed. R. Civ. P. 56(d) will not be extended. [ Note 6.] See TBMP § 528.06.

NOTES:

 1.   SFW Licensing Corp. v. Di Pardo Packing Ltd., 60 USPQ2d 1372, 1373 (TTAB 2001) (opposers had not come forward with "detailed facts" required to carry their burden explaining their inaction); Societa Per Azioni Chianti Ruffino Esportazione Vinicola Toscana v. Colli Spolentini Spoletoducali SCRL, 59 USPQ2d 1383, 1384 (TTAB 2001) ("Opposer’s counsel, in his declaration, has set forth the facts relating to his other litigation matters in sufficient detail to warrant a finding that good cause exists for at least a limited extension of opposer’s testimony period"); Fairline Boats plc v. New Howmar Boats Corp., 59 USPQ2d 1479, 1480 (TTAB 2000) (motion denied where party failed to provide detailed information regarding apparent difficulty in identifying and scheduling its witnesses for testimony and where sparse motion, containing vague reference to possibility of settlement, demonstrated no expectation that proceedings would not move forward during any such negotiations); Instruments SA Inc. v. ASI Instruments Inc., 53 USPQ2d 1925, 1927 (TTAB 1999) (cursory or conclusory allegations that were denied unequivocally by the nonmovant and were not otherwise supported by the record did not constitute a showing of good cause); Luemme, Inc. v. D. B. Plus Inc., 53 USPQ2d 1758, 1760-61 (TTAB 1999) (sparse motion contained insufficient facts on which to find good cause); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719, 1720 n.3 (TTAB 1989) ("The presentation of one’s arguments and authority should be presented thoroughly in the motion or the opposition brief thereto.").

 2.   National Football League v. DNH Management LLC, 85 USPQ2d 1852, 1854 (TTAB 2008) ("the Board is liberal in granting extensions of time before the period to act has elapsed so long as the moving party has not been guilty of negligence or bad faith and the privilege of extension is not abused" and the moving party has the burden of persuading the Board that it was diligent in meeting its responsibilities; motion denied because opposer failed to make the minimum showing necessary to establish good cause to extend discovery); Luemme, Inc. v. D. B. Plus Inc., 53 USPQ2d 1758, 1760-61 (TTAB 1999) (diligence not shown; discovery requests not served until last day of the discovery period); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Manufacturing Co., 55 USPQ2d 1848, 1851 (TTAB 2000) (applicant’s motion to extend discovery denied when counsel knew of unavailability of witness a month before, yet delayed until last day to seek an agreement on an extension of time).

 3.   Luemme, Inc. v. D. B. Plus Inc., 53 USPQ2d 1758, 1760-61 (TTAB 1999).

 4.   Chesebrough-Pond’s Inc. v. Faberge, Inc., 618 F.2d 776, 205 USPQ 888, 891 (CCPA 1980) (an attorney has no right to assume that extensions of time will always be granted, and there appears no reason why a brief was not timely filed); Trans-High Corp. v. JFC Tobacco Corp., 127 USPQ2d 1175, 1176-77 (TTAB 2018) (good cause found to extend close of discovery even though extension served to "reopen" time to serve discovery requests); Societa Per Azioni Chianti Ruffino Esportazione Vinicola Toscana v. Colli Spolentini Spoletoducale SCRL, 59 USPQ2d 1383, 1383-84 (TTAB 2001) (the press of other litigation may constitute good cause to extend but alleged deficiencies in discovery responses not good cause to extend discovery where timely motion to compel was not filed); Procyon Pharmaceuticals Inc. v. Procyon Biopharma Inc., 61 USPQ2d 1542, 1543-44 (TTAB 2001) (petitioner failed to explain how activity of rearranging its laboratory facilities during relevant time period prevented taking testimony; no detailed information regarding petitioner’s apparent difficulty in preparing and submitting its evidence or why petitioner waited until the last day of its testimony period to request the extension);SFW Licensing Corp. v. Di Pardo Packing Ltd., 60 USPQ2d 1372, 1373 (TTAB 2001) (attorney’s unwarranted and untimely request for permission to withdraw from representation of party viewed as bad faith attempt to obtain an extension of time); Fairline Boats plc v. New Howmar Boats Corp., 59 USPQ2d 1479, 1480 (TTAB 2000) (mere existence of settlement negotiations or proposals, without more, would not justify delay in proceeding with testimony); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Manufacturing Co., 55 USPQ2d 1848, 1851 (TTAB 2000) (while maternity leave may constitute good cause, in this case defendant’s counsel knew that defendant would not be able to comply with deadline, yet waited until penultimate day of response period to file unconsented motion to extend time); Instruments SA Inc. V. ASI Instruments, Inc., 53 USPQ2d 1925, 1927 (TTAB 1999) (plaintiff’s claim of ongoing bilateral settlement negotiations was rebutted by defendant, and no other reason for plaintiff’s failure to proceed with discovery was shown); Luemme, Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1760-61 (TTAB 1999) (plaintiff failed to set forth detailed facts concerning the circumstances - plaintiff’s allegedly busy travel schedule - which necessitated the extension, and record showed that need for extension in fact resulted from plaintiff’s delay and lack of diligence during previously-set discovery period).

 5.   37 C.F.R. § 2.120(a)(2)(iv)  (discovery period); 37 C.F.R § 2.121(a)  (testimony period); 37 C.F.R. § 2.127(a)  (time for responding to a motion); 37 C.F.R. § 2.127(e)(1)  (time for responding to a summary judgment motion); National Football League v. DNH Management LLC, 85 USPQ2d 1852, 1855 (TTAB 2008) (in view of the denial of opposer’s motion to extend discovery, "discovery dates remain as originally set and as a result, the discovery period is closed"); Procyon Pharmaceuticals Inc. v. Procyon Biopharma Inc., 61 USPQ2d 1542, 1544 (TTAB 2001) (petitioner’s testimony period consequently expired where motion to extend testimony period was denied and dates were left as originally set); Fairline Boats plc v. New Howmar Boats Corp., 59 USPQ2d 1479, 1479 (TTAB 2000); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Manufacturing Co., 55 USPQ2d 1848, 1851 (TTAB 2000); Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1760-61 (TTAB 1999). Cf. C.H. Stuart Inc. v. Carolina Closet, Inc., 213 USPQ 506, 507 (TTAB 1980) (three-day testimony period for opposer reset "putting opposer in the same position it would have been in had no motion to compel been filed."). See also NOTICE OF FINAL RULEMAKING, 63 Fed. Reg. 48081, 48091 (September 9, 1998).

 6.   Covidien LP v. ERBE Elektromedizin GmbH, 2019 USPQ2d 265006, at *1-2 (TTAB 2019) (unrestricted consented motion to extend deadlines filed prior to deadline for plaintiff’s pretrial disclosure, once granted, was effective before the deadline and motion for summary judgment was timely).

 7.   37 C.F.R. § 2.127(a)  and 37 C.F.R. § 2.127(e)(1). See McDonald’s Corp. v. Cambrige Overseas Development Inc., 106 USPQ2d 1339, 1340 (TTAB 2013) (parties’ stipulation to add five days to service by email was improper agreement to automatically extend time to file reply brief or a motion under Fed. R. Civ. P. 56(d)).

509.01(b)    Motions to Reopen Time

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, 177 n.2 (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).

509.01(b)(2)    To Introduce Newly Discovered Evidence

If a party files a motion to reopen its testimony period to introduce newly discovered evidence, the moving party must show not only that the proposed evidence has been newly discovered, but also that the evidence could not have been discovered earlier through the exercise of reasonable diligence. [ Note 1.] However, even if a sufficient showing of due diligence has been made, the Board will not automatically reopen a party’s testimony period for introduction of the new evidence. The Board must also consider such factors as the nature and purpose of the evidence sought to be brought in, the stage of the proceeding, and prejudice to the nonmoving party. [ Note 2.]

NOTES:

 1.   Harjo v. Pro-Football, Inc., 45 USPQ2d 1789, 1790 (TTAB 1998); Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., 221 USPQ 354, 360-61 n.11 (TTAB 1984); Rowell Laboratories, Inc. v. Canada Packers Inc., 215 USPQ 523, 524 n.2 (TTAB 1982) (improper to attempt to introduce newly discovered evidence by way of rebuttal testimony rather than moving to reopen testimony period); Oxford Pendaflex Corp. v. Rolodex Corp., 204 USPQ 249, 254 n.5 (TTAB 1979); Tektronix, Inc. v. Daktronix, Inc., 187 USPQ 588, 589 n.1 (TTAB 1975), aff’d, 534 F.2d 915, 189 USPQ 693 (CCPA 1976); Wilson Sporting Goods Co. v. Northwestern Golf Co., 169 USPQ 510, 511-12 (TTAB 1971); Chemetron Corp. v. Self-Organizing Systems, Inc., 166 USPQ 495, 499 n.6 (TTAB 1970); United States Plywood Corp. v. Modiglass Fibers, Inc., 125 USPQ 144, 145 (TTAB 1960).

 2.   L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1886-87 (TTAB 2008) (the Board declined to reopen applicant’s testimony period after the briefs had been filed because (1) the newspaper article sought to be introduced into evidence was not probative of opposer’s intent to abandon its mark and (2) an abandonment claim could only be entertained through a counterclaim to cancel opposer’s registration which would be prejudicial to opposer at such a late date); Harjo v. Pro-Football, Inc., 45 USPQ2d 1789, 1790 (TTAB 1998) (newly discovered evidence was cumulative and redundant and did not have significant probative value to justify further delay of case) (newly discovered evidence was hearsay in nature and pertained to unpleaded defense) (citing Canadian Tire Corp. Ltd. v. Cooper Tire & Rubber Co., 40 USPQ2d 1537, 1539 (Comm’r 1996)).