536 Motion For Order to Show Cause Under 37 C.F.R. § 2.128(a)(3)
37 C.F.R. § 2.128(a)(3) When a party in the position of plaintiff fails to file a main brief, an order may be issued allowing plaintiff until a set time, not less than fifteen days, in which to show cause why the Board should not treat such failure as a concession of the case. If plaintiff fails to file a response to the order, or files a response indicating that plaintiff has lost interest in the case, judgment may be entered against plaintiff. If a plaintiff files a response to the order showing good cause, but does not have any evidence of record and does not move to reopen its testimony period and make a showing of excusable neglect sufficient to support such reopening, judgment may be entered against plaintiff for failure to take testimony or submit any other evidence.
When a plaintiff fails to file a main brief on the case, it is the normal practice of the Board to issue, sua sponte, an order to show cause why the failure to file a brief should not be treated as a concession of the case. If such an order is not issued by the Board sua sponte, or if an adverse party finds that the Board has inadvertently overlooked a plaintiff’s failure to file a main brief, the adverse party may file a motion for an order to show cause. In contrast, because a defendant in a Board inter partes proceeding is not obligated to file a brief, or, for that matter, to take discovery or offer testimony or other evidence, there is no procedure by which the Board will issue a show cause order based upon a defendant’s failure to take discovery, offer testimony, or file a brief.
The principal purpose of 37 C.F.R. § 2.128(a)(3) is to save the Board the burden of determining a case on the merits where the parties have entered into a final settlement of the matter, but have neglected to notify the Board thereof, or where the plaintiff has lost interest in the case. It is not the policy of the Board to enter judgment against a plaintiff for failure to file a main brief on the case if the plaintiff still wishes to obtain an adjudication of the case on the merits. [ Note 1.] If a show cause order is issued under 37 C.F.R. § 2.128(a)(3), and the plaintiff files a response indicating that it has not lost interest in the case, the show cause order will be discharged by Board order, and judgment will not be entered against plaintiff based on the presumption of lack of interest stemming from its failure to file a main brief. [ Note 2.] Even if the show cause order is discharged, the plaintiff may not be accorded an opportunity to present a brief for consideration because a late-filed brief may not be accepted and the time for filing a brief may not necessarily be reset. [ Note 3.] In addition, even if the show cause order is discharged, the plaintiff’s claims may be dismissed if plaintiff placed no evidence in the record. In other words, even if a plaintiff avoids entry of judgment based on loss of interest, it may still face dismissal for failure to prosecute unless it files, and the Board grants, a motion to reopen the plaintiff’s testimony period, and the plaintiff files admissible evidence or testimony during its reopened testimony period. See TBMP § 509.01(b)(1). If the plaintiff files no response to the show cause order, or files a response indicating that it has lost interest in the case, judgment may be entered against the plaintiff. [ Note 4.]
When the Board discharges a 37 C.F.R. § 2.128(a)(3) order to show cause, plaintiff’s time for filing its brief necessarily will have passed. Therefore, notwithstanding that plaintiff may have shown that it is still interested in having the Board decide the case on its merits, unless plaintiff has included with its response a motion to reopen its time for filing its brief, plaintiff may not have a second chance to file a brief. [ Note 5.] If the plaintiff files a motion to reopen that is granted by the Board (based on plaintiff’s showing of excusable neglect, or on consent, or because the motion is conceded), plaintiff will then be afforded an opportunity to file its main trial brief, and the Board will reset the times for filing that brief and all remaining briefs on the case. If, however, plaintiff included a copy of its brief with its motion to reopen, and the Board issues an order granting the motion and accepting the brief, then the Board will reset remaining briefing deadlines beginning with the deadline for defendant’s brief. In instances where the show cause order has been discharged and the plaintiff has submitted its main brief without including a motion to reopen its time to file the main brief under Fed. R. Civ. P. 6(b)(1)(B), the plaintiff’s main brief will be given no consideration, even if the defendant raises no objection thereto, and the Board may reset the times for filing remaining briefs beginning with the deadline for defendant’s brief, if evidence is in the record. [ Note 6.]
It is not unusual for a plaintiff to file a response to the Board’s 37 C.F.R. § 2.128(a)(3) order to show cause in a case in which the plaintiff cannot bear its burden of proof, regardless of whether the Board reopens the time for the plaintiff to file its brief. If the record shows (1) that plaintiff failed, during its testimony period, to take any testimony or offer any other evidence in its behalf, (2) that plaintiff failed to make (if applicable) a pleaded registration properly of record with its complaint, and (3) that defendant in its answer did not admit to any dispositive allegations, the Board, in lieu of reopening the briefing schedule, may proceed to enter judgment against plaintiff for failure to prove its case, absent the filing of, and granting of, a motion to reopen testimony brought by plaintiff. [ Note 7.] Where plaintiff has made its pleaded registrations of record and/or defendant has made admissions in its answer, the Board may make a determination without the need for defendant to file a brief. [ Note 8.]
Thus, all times for filing briefs on the case will be reset, commencing with the deadline for plaintiff’s main brief, only in instances where the plaintiff includes with its response to the show cause order a motion under Fed. R. Civ. P. 6(b)(1)(B) to reopen its time to file a main brief (see TBMP § 509), and there is evidence in the record. In such a case, the Board may in its discretion set a time for defendant to file a response to the motion to reopen. Similarly, in instances where plaintiff argues that it has established excusable neglect to reopen its testimony period with or without filing a formal motion under Fed. R. Civ. P. 6(b)(1)(B) to reopen, the Board may in its discretion set a time for defendant to file a response to the motion.
NOTES:
1. See NOTICE OF FINAL RULEMAKING, 48 Fed. Reg. 23122, 23132-33 (May 23, 1983); Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708, 1709-10 (TTAB 2011).
2. See Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708, 1710 (TTAB 2011).
3. See Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708, 1710 (TTAB 2011).
4. See, e.g., CTRL Systems Inc. v. Ultraphonics of North America Inc., 52 USPQ2d 1300, 1302 (TTAB 1999) (no response filed).
5. See Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708, 1710-11 (TTAB 2011).
6. See Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708, 1711 (TTAB 2011) (explanation of briefing schedule had motion to reopen testimony and/or alternative motion to reopen time to file a brief been granted).
7. 37 C.F.R. § 2.128(a)(3). See Gaylord Entertainment Co. v. Calvin Gilmore Productions Inc., 59 USPQ2d 1369, 1372 (TTAB 2000) (show cause order discharged but plaintiff failed to show excusable neglect to reopen case). Cf. Old Nutfield Brewing Co. v. Hudson Valley Brewing Co., 65 USPQ2d 1701, 1704 (TTAB 2002) (judgment entered against opposer under 37 C.F.R. § 2.132(a) where opposer’s motion to reopen its testimony period denied for failure to establish excusable neglect).
8. See Vital Pharmaceuticals, Inc. v. Kronholm, 99 USPQ2d 1708, 17111-12 (TTAB 2011) (opposer’s pleaded registrations of record with notice of opposition and applicant made limited admissions in its answer).