UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O.

Box 1451 Alexandria, VA 22313-1451

alv

Mailed:

March 19, 2014

Opposition No. 91179637 Ellenberger & Poensgen GMBH v. Atlas Sound LP

Before Seeherman, Lykos and Adlin, Administrative Trademark Judges. This case now comes up on opposers motion for relief from judgment under Fed. R. Civ. P. 60(b). fully briefed. As background, following opposers failure to respond to applicants motion for involuntary dismissal for failure to prosecute, the Board granted the motion as conceded and dismissed the opposition with prejudice on August 23, 2013. Trademark Rules 2.132(a) and 2.127(a). Opposers counsel of The motion is

record from the time it filed its notice of opposition, and throughout the proceeding, including trial and to the present time, has been Venable LLP.

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On December 24 2013, opposer, through the law firm Lerner Greenberg Stemer LLP,1 filed the instant motion, alleging that opposers counsel of record, i.e., Venable, was negligent in failing to respond to the motion for involuntary dismissal and failing to inform opposer of the filing of applicants motion for dismissal, and that Venable did not adhere to Petitioners directives and instructions regarding the reporting and management of this case.2 Opposer seeks relief pursuant to Fed. R. Civ. P. 60(b)(1) and (6). Fed. R. Civ. P. 60(b) provides for relief from judgment for a party or its legal representative on grounds of (1) "mistake, inadvertence, surprise, or excusable neglect," or (6) any other reason justifying relief from the operation of the judgment." A motion for relief from final judgment must be made within a reasonable time, with the qualification that a motion under Rule 60(b)(1) must also be made no more than a year after entry of the judgment or order or the date

Although opposer did not appoint Lerner Greenberg Stemer LLP as its attorneys, it is Board practice to consider papers filed by any lawyers that state that they are representing a party. See TBMP 114 (3rd ed. rev. June 2013). However, because opposer has not revoked the power of attorney granted to Venable, nor has Venable withdrawn from representation of opposer, in accordance with Board practice, we will continue to correspond with Venable. As a matter of courtesy, we are also sending a copy of this order to Lerner Greenberg Stemer LLP, but we will not otherwise engage in duplicate correspondence. We note that opposer throughout its briefs uses the term petitioner to identify itself rather that the term opposer. We assume such label is used inadvertently.

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of the proceeding.

Relief from final judgment is an

extraordinary remedy to be granted only in exceptional circumstances. Djeredjian v. Kashi Co., 21 USPQ2d 1613, Moreover, where, as here, the adverse

1615 (TTAB 1991).

party has not consented to the motion for relief from final judgment, the moving party must show, preferably by affidavits, declarations or other documentary evidence, that the relief sought is warranted under Rule 60(b). See TBMP The

544 (3rd ed. rev. June 2013) and cases cited therein. determination of whether a Rule 60(b) motion should be

granted is a matter that lies within the sound discretion of the Board. Id.

In this case, opposer filed its Rule 60(b)(1) motion approximately four months after the Board entered judgment against opposer. Clearly, opposer filed the motion within

one year and a reasonable time. Our inquiry therefore focuses on whether opposers failure to respond to applicant's motion for involuntary dismissal was the result of excusable neglect, and whether opposer has sufficiently established "any other reason justifying relief from the operation of the judgment" as Fed. R. Civ. P. 60(b)(6) requires. In Pioneer Investment Services Company v. Brunswick Associates Limited Partnership, 507 U.S. 380 (1993), as discussed by the Board in Pumpkin, Ltd. v. The Seeds Corps,

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43 USPQ2d 1582 (TTAB 1997), the Supreme Court clarified the meaning and scope of "excusable neglect," as used in the Federal Rules of Civil Procedure and elsewhere, to impute to a party its counsel's acts or failures to act, thereby rendering irrelevant any distinction between neglect of counsel and neglect of the party. The Court held that the

determination of whether a party's neglect is excusable is: at bottom an equitable one, taking account of all relevant circumstances surrounding the party's omission. These include. . . [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. Pioneer Investment Services Co. v. Brunswick Associates L.P., 507 U.S. at 395.3 In this vein, the Board has stated: [i]t is well settled that the client and the attorney share a duty to remain diligent in prosecuting or defending the clients case; that communication between the client and attorney is a two-way affair; and that action, inaction, or even neglect by the clients chosen attorney will not excuse the inattention of the client so as to yield the client another day in court. CTRL Systems, Inc. v. Ultraphonics of North America, Inc., 52 USPQ2d 1300 (TTAB 1999)(citations omitted).

In subsequent applications of this test, several courts have stated that the third Pioneer factor, namely the reason for the delay and whether it was within the reasonable control of the movant, might be considered the most important factor in a particular case. See Pumpkin, Ltd. v. The Seed Corps, 43 USPQ2d at 1586, fn.7 and cases cited therein.

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We agree with applicant that based on the record before us, opposer has failed to demonstrate excusable neglect. In support of its position, opposer, a German entity, indicates that on or about May 26, 2011, FDST Patentanwalte (FDST) informed Mark B. Harrison, of the law firm Venable, that it was opposers new German counsel, and was authorized since January 1, 2011, to represent opposer in this case. Opposer further states that Venable failed to

notify FDST about the trial calendars that had been set by the Board, the October 2013 settlement proposal, or the filing of applicants motion for involuntary dismissal. Opposer states that at no time until after the Board had terminated the proceeding was it aware of the motion for involuntary dismissal. Opposer also asserts that Venable

failed to file a motion to withdraw, allowing opportunity for Petitioner to substitute representation and timely respond.4 In any event, opposers limited evidence includes an email letter dated December 15, 2010 to Venable from opposers first German counsel, Tergau & Walkenhorst (Tergau), telling Venable that opposer is much concerned

We are somewhat surprised by this last statement, since clearly, if opposer had wanted to retain new U.S. counsel, it could have done so without any need for Venable to file a motion to withdraw. Opposer appears to be aware of this, having retained new U.S. counsel to file the motion for relief from

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with the costs involved in this proceeding and not to undertake additional costs without first our approval. Opposer, in its brief, further tells us that on or about May 26, 2011, Venable was informed of the substitution of the new German counsel, FDST. Opposer submits additional

evidence with its motion, including correspondence between its various counsel, but this evidence is out of context and, consequently, leaves many questions unanswered. For example, there is no evidence explaining whether Venable ever sought Tergaus prior approval to incur costs in order to prosecute this opposition. Obviously, if

Venable never sought Tergaus prior approval, that failure was within opposers reasonable control, as its counsels failures are attributable to opposer. Similarly, if Venable

sought prior approval to incur costs, but opposer refused, that would be within opposers reasonable control. We also

have no evidence regarding what, if anything, Tergau or Venable discussed with FDST, whether FDST responded to any such communications, whether Tergau or FDST were in touch with opposer, what opposer instructed Tergau or FDST to do, etc. In short, the problem with opposers motion is that to

the extent it includes evidence, the evidence does not explain the relevant facts, but instead, if anything, obscures them. See Gaylord Entertainment Co. v. Calvin

judgment, even though Venable has not withdrawn as counsel of

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Gilmore Productions Inc., 59 USPQ2d 1369, 1372 (TTAB 2000)(no specific reasons for former counsels inaction provided); HKG Industries Inc. v. Perma-Pipe Inc., 49 USPQ2d 1156, 1158 (TTAB 1998)(motion for dismissal granted where no critical factual information was provided regarding date of counsels death in relation to partys testimony period). After carefully reviewing the evidence and the parties arguments, we find that opposer has failed to satisfy its burden of showing excusable neglect. From the evidence it

is not clear what exactly transpired between Tergau and Venable, and FDST and Venable, with respect to the representation of opposer. It remains unclear, for example,

who, if anyone, was providing the directives regarding opposers objectives in the opposition proceeding or which firm, Tergau or FDST, if any, was paying the legal fees of Venable and when the payment of such fees ceased. no clear information as to whether Tergau ceased representing opposer, or whether FDST and Tergau were jointly representing it in connection with directives to Venable about the U.S. proceeding. What we do know is only We have

that Venable, the counsel of record, was still writing to Tergau for instructions subsequent to being informed by FDST that it was authorized with representation of opposer in the opposition, and that Venable filed a motion to extend

record.

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opposers trial period long after being informed that FDST was taking over, but failed to further extend opposers trial period before it finally expired. Even if we treat

FDST as the sole German firm in charge of the opposition, there is no indication of what action, or inaction for that matter, FDST took with regard to the case in the two-plus years between the time FDST informed Venable that it was taking over representation on May 26, 2011 and when FDST contacted Venable asking to be informed of the current status of the case. In addition, there is no explanation as

to why, even by August 2013, FDST still did not have the file of the case in its possession after the transition of representation from Tergau to FDST occurred on January 1, 2011 if, indeed, there was a transfer of representation and not a joint representation. Applying the Pioneer factors to the circumstances presented, we find that although there is no evidence to believe that it has acted in bad faith, opposer has not made the requisite showing of excusable neglect and exceptional circumstances. We find that the length of delay in not

responding to the motion for involuntary dismissal and its potential impact on this proceeding is significant.5 We

further find that opposers stated reasons for failing to respond to the motion for involuntary dismissal were within

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its control.

The confusion surrounding which German firm

was representing opposer and which firm Venable was taking instruction from may be the reason for opposers inaction, but the point is that we do not know because opposers motion for relief from judgment does not tell us. On balance, opposer has failed to show that its inaction or the inaction of its attorney in this case was the result of unavoidable events or circumstances which could not have been prevented by reasonable diligence, nor has opposer persuaded the Board that the "catchall" provision of Fed. R. Civ. P. 60(b)(6) applies. See e.g.,

Marriot Corp v. Pappys Enterprises, Inc., 192 USPQ 735 (TTAB 1976). In view thereof, opposers motion for relief from final judgment is denied.

We also note that the involved application has issued as Registration No. 4488723 on February 25, 2014.