Today’s lesson from the Federal Circuit (that you should already know): Don’t miss deadlinesFebruary 27, 2007

In a case decided today, the Federal Circuit affirmed the TTAB’s dismissal of a party’s cancellation claim. The party seeking cancellation sought to do so by proving uncontrolled licensing of the trademark, but failed to file a notice of reliance with regard to the relevant testimony on the issue before the deadline. The TTAB denied the motion to reopen the testimony period, finding no excusable neglect. The Federal Circuit affirmed, stating that because the reasons given for the delay were wholly within the party’s reasonable control, it was not an abuse of discretion to find no excusable neglect. More details of the case after the jump.FirstHealth of the Carolinas applied for trademark registration on FIRSTCAROLINACARE for use with HMOs and health care insurance claims. These applications were opposed by CareFirst of Maryland, which holds a registration on CAREFIRST. FirstHealth counterclaimed, seeking cancellation of the CAREFIRST registration. The basis of FirstHealth’s cancellation counterclaim was that CareFirst has allowed uncontrolled licensing of its CAREFIRST mark, thus destroying its ability to function as a source identifier. This contention relied principally on the deposition of an individual by the name of David Wolf, however FirstHealth did not file a notice of reliance on this deposition testimony before the end of its discovery period on January 31, 2004. On February 26, 2004, FirstHealth filed a motion to reopen its testimony period to file such a notice of reliance, stating that its earlier failure to do so was the result of excusable neglect. The TTAB disagreed, denied the motion, and, because Mr. Wolf’s testimony was necessary for FirstHealth to prove its cancellation claim, dismissed the claim. The Federal Circuit affirmed. In order to find excusable neglect, the TTAB and the Federal Circuit applied the test from the 1993 Supreme Court case Pioneer Investment Servs. Co. v. Brunswich Assocs. Ltd.. Those factors include:

  1. The danger of prejudice to the non-moving party,
  2. The length of the delay and its potential impact on judicial proceedings,
  3. The reason for the delay, and
  4. Whether the movant acted in good faith.

Here, FirstCare alleged several reasons why its delay was excusable neglect, including a docketing error by a new paralegal, the birth of its counsel’s child, the volume of testimony taken, and counsel’s time conflicts with unrelated matters. The Federal Circuit found that two of these, the volume of testimony and the unrelated time conflicts, were accounted for with a two month extension to the testimony period that was granted. Also, the court noted that there was no explanation why another attorney could not have taken care of the notice of reliance when the lead counsel’s child was born. Finally, the court completely disregarded the docketing error, because FirstCare had referenced the January 31, 2004 deadline in a motion filed before the deadline had expired, showing that FirstCare was aware of the proper deadline. At the end of the day, the Federal Circuit found the TTAB did not abuse its discretion in not reopening FirstCare’s testimony period, and thus affirmed the TTAB’s decision. So, in case practicing attorneys needed another reminder: don’t miss deadlines before the USPTO. To read the full decision in FirstHealth of the Carolinas, Inc. v. CareFirst of Md., Inc., click here.

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