The Board granted Applicant JFC Tobacco's motion to extend discovery, filed on the last day of the discovery period, to allow it to receive responses to its late-filed written discovery requests and to respond to Opposer Trans-High's discovery demands. As to JFC's written discovery, Trans-High argued that JFC must show "excusable neglect" since it missed the written discovery deadline, but the Board ruled that the lesser, "good faith" standard applied. Trans-High Corp. v. JFC Tobacco Corp., 127 USPQ2d 1175 (July 2, 2018) [precedential] (Katie W. McKnight, Interlocutory Attorney).
Discovery in this proceeding was set to close on January 22, 2018. Trademark Rule 2.120(a)(3) requires that written discovery requests be served early enough in the discovery period so that responses thereto will be due no later than the close of discovery. Therefore the deadline for serving written discovery requests was December 23, 2017.
Applicant JFC served written discovery on January 10, 2018, and opposer promptly pointed out that this discovery was untimely. JFC sought Trans-High's consent for an extension of time for written discovery and for close of discovery, but opposer did not provide a definitive response. And so on January 22nd, JFC filed a motion to extend the close of discovery by thirty days.
JFC pointed out that it is located in Puerto Rico and it encountered some delays during the proceeding due to the hurricanes that recently devastated the region, making it difficult for counsel to reach applicant. It noted that it had not requested any other extensions of time and argued that it would be prejudiced if it did not receive responses to its discovery requests.
Opposer Trans-High contended that applicant's motion was "in fact" a motion to reopen its time to respond to written discovery, and therefore the FRCP 6(b) standard of excusable neglect applied. Trans-High maintained that JFC failed to meet that standard, or even the lower good faith standard that applies to request for extensions of time filed before the expiration of the relevant deadline.
The Board pointed out that, under Rule 2.120(a)(2)(iv), the Board may grant limited extensions of the discovery period. Under FRCP 6(b)(1)(A), the appropriate standard for allowing an extension of a specific time period prior to its expiration is "good faith." In that regard, JFC's request was timely.
The Board was not persuaded by Trans-High's argument that the higher "excusable neglect" standard applied. The Notice of Final Rulemaking (October 7, 2016) stated that the amendment to Rule 2.120(a)(3) with regarding to the timeliness of written discovery "has no impact on Board practice concerning the ability of parties to seek extensions of the discovery period." Moreover, when the time to respond is extended , discovery responses must be due no later than the close of discovery, as extended.
While the Board encourages early service of discovery instead of reliance upon motions to extend the discovery period, a party wishing to serve discovery requests at a point in the discovery period when the last day for responding to the requests would fall after the close of discovery may seek an extension of the discovery period when appropriate and if it can establish good cause for the extension. Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1271 n.6 (TTAB 2017) (emphasis added).
In sum, "where the close of discovery has not yet passed, the time for serving requests is effectively reset under the good cause standard and the excusable neglect standard is inapplicable. [N.B. The key factor under the excusable neglect standard is whether the delay was within the control of the movant. JFC may have been able to meet that standard as well. - ed.].
The Board found no evidence of bad faith on JFC's part. Due to the impact of the hurricane and the difficulty for counsel to reach JFC over the holiday period in order to respond to Trans-High's discovery requests, the Board concluded that JFC had demonstrated the requisite good cause for extending both the discovery period and the time for responding to Trans-High's discovery demands.
And so the Board re-set the dates for discovery responses and for the remaining schedule of dates
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