Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
SWEATS FASHIONS, INC., PETITIONER,
v.
PANNILL KNITTING COMPANY, INC., RESPONDENT.
Opposition No. 69,983
March 3, 1987
John W. Burke, III, Esq.
Elizabeth F. Edwards, Esq.
*1 McGuire, Woods & Battle
One James Center
Richmond, Virginia 23219
Marsha G. Gentner Esq.
Fleit, Jacobson, Cohn & Price
Washington, D.C. 20004-1998
Donald W. Peterson
Deputy Commissioner of Patents and Trademarks
ON RECONSIDERATION
Petitioner, Sweats
Fashion, Inc. (Sweats), has filed a REQUEST FOR RECONSIDERATION OF DECISION
DENYING PETITION. Sweats requests reconsideration of an October 9, 1986,
decision denying Sweats' petition to extend the time for filing a notice of appeal
to the United States Court of Appeals for the Federal Circuit. Upon
reconsideration, Sweats' petition is granted.
Background
The Trademark Trial and
Appeal Board (TTAB) issued an Order in Opposition No. 69,983 granting
respondent's (Pannill Knitting Company, Inc.) motion for summary judgment on
May 9, 1986. No request for reconsideration was filed. Accordingly, a notice of
appeal was due on July 8, 1986, sixty days after May 9, 1986. 37 CFR 2.145(d).
On July 9, 1986, the day following the end of
the period for filing an appeal, Sweats filed its notice of appeal, accompanied
with a petition under 37 CFR 2.145(d) (Rule 2.145(d)) to extend the time for
filing a notice of appeal to the United States Court of Appeals for the Federal
Circuit. That petition was denied. Sweats Fashions, Inc. v. Pannill Knitting
Co., 231 USPQ 560 (Comm'r Pat. 1986).
Petitioner filed a
REQUEST FOR RECONSIDERATION on November 19, 1986. Petitioner's REQUEST FOR
RECONSIDERATION did not include a Certificate of Service showing the papers had
been served on counsel for respondent. On December 17, 1986, the REQUEST was
denied without prejudice with leave to renew the REQUEST within ten days from
the date of the decision provided proper service was made on counsel for
respondent.
On December 29, 1986,
petitioner filed a copy of a Certificate of Service certifying that on November
12, 1986, the REQUEST FOR RECONSIDERATION OF DECISION DENYING PETITION was
served via first class mail to counsel for respondent. In addition, petitioner
submitted a copy of respondent's RESPONSE TO REQUEST FOR RECONSIDERATION,
opposing a one-day extension of time, mailed by respondent to petitioner on
November 24, 1986. The original RESPONSE was apparently filed by mail but did
not reach the Commissioner's file.
In view of petitioner's
representation that petitioner's REQUEST FOR RECONSIDERATION was served on
counsel for respondent on the same date it was filed
in the Patent and Trademark Office, as evidenced by the Certificate of Service,
the Commissioner's November 17, 1986, ORDER DISMISSING REQUEST FOR
RECONSIDERATION WITHOUT PREJUDICE TO RENEWAL is hereby vacated.
Opinion
*2 In Sweats'
petition, the reason given for filing the Notice of Appeal one day late was
stated to be due to an inadvertent miscalculation by Sweats' counsel of the
'due date' for filing such a Notice of Appeal; Sweat's counsel believed the
60-day period ended on July 9, 1986, instead of the correct date of July 8,
1986. Pursuant to Rule 2.145(d), the time to file a notice of appeal 'may be
extended . . . upon a showing of sufficient cause.' 37 CFR 2.145(d). In the
Decision Denying Petition, 231 USPQ 560 (Comm'r Pat. 1986), the Commissioner
determined that Sweats had failed to make a showing of 'sufficient cause'. The
petition was, therefore, denied.
The standard for
'sufficient cause' used in the initial decision was considered to be comparable
to the standard for 'excusable neglect.' 'In effect, a showing of sufficient
cause under 37 CFR 2.145(d) should establish excusable neglect in those cases
where an appeal is belatedly filed.' Id. at 561. Upon reconsideration, the
Commissioner has determined that (a) those standards are not equivalent and (b)
'excusable neglect' is not the appropriate standard
in deciding petitions requesting an extension of time under Rule 2.145.
Prior to amendment of
Rule 2.145 in 1976, leave to file a late notice of appeal could be granted only
by means of a petition to waive the time requirement under 37 CFR 2.148. [FN1]
Thus, prior to 1976, a petitioner was required to show that the failure to
comply with the time requirements of Rule 2.145(d) occurred as a result of an
'extraordinary situation.' When Rule 2.145 was amended in 1976, a provision was
added permitting the Commissioner to extend the time period for filing a notice
of appeal upon the showing of 'sufficient cause.' As 'sufficient cause' is a
less stringent standard than 'extraordinary situation,' the 1976 amendment of
Rule 2.145(d) represents a liberalization of the showing necessary for the
Commissioner to exercise his discretion to grant an extension of time to file a
notice of appeal. There is no indication that the amendment was intended to
substitute the standard of 'excusable neglect,' even though the 'excusable
neglect' standard is specifically used in 37 CFR 1.304(a) with respect to
extending the time for seeking judicial review of a decision of the Board of
Patent Appeals and Interferences. [FN2] Accordingly, what constitutes a showing
of 'sufficient cause' will not be determined by comparison with the standard of
'excusable neglect.'
Sweats' Request For
Reconsideration includes two affidavits [FN3] that describe the facts and circumstances relating
to the late filed Notice of Appeal. The affidavit filed by Sweats' counsel details
an established procedure for docketing 'due dates' for all papers received by
the firm. Also submitted was an affidavit of the firm's chief Docket Clerk.
This affidavit confirms that the usual docketing process was followed upon
receipt of the Order from the TTAB. [FN4] However, for an as yet unexplained
reason, the chief Docket Clerk not only failed to note the 'due date' for
taking further action in the matter, but also failed to enter the 'due date'
into the docket system. Those failures to complete the docketing procedure are
described as an 'aberration and an inadvertent error' which could not be
specifically explained or excused.
*3 In addition to
the central docket system, counsel for Sweats states in her affidavit that she
follows a practice of noting deadlines on her own calendar for cases in which
she is involved. This is essentially a back-up system to the firm's established
practice of centrally docketing 'due dates' for the firm. The miscalculation of
the sixty-day appeal period referred to in the Sweats' petition specifically
deals with counsel's calculations with respect to her personal calendar, the
back-up system. The one-day error in calculating the due date is not incapable
of belief. Moreover, the Notice of Appeal was filed on the erroneously
calculated date.
Under all the facts and
circumstances as further explained in Sweats' Request For Reconsideration, the
Commissioner has determined that petitioner has
made an adequate showing of sufficient cause for the Commissioner to exercise
his discretion and grant a one-day extension of the time for filing a notice of
appeal to the United States Court of Appeals for the Federal Circuit.
The petition for
extension of time is, therefore, granted. The certified list called for by 15 U.S.C.
1071(a)(3) will be transmitted to the United States Court of Appeals for the
Federal Circuit in due course.
FN1. 37 CFR 2.148 Commissioner may suspend certain rules.
In an extraordinary
situation, when justice requires and no other party is injured thereby, any
requirement of the rules in this part not being a requirement of the statute
may be suspended or waived by the Commissioner.
FN2. 37 CFR 1.304(a) concerns appeals from an interference when a
request is untimely filed after expiration of the prescribed time for appeal.
FN3. In the Commissioner's view, the affidavits should have been
presented with the original petition for the extension of time. The
Commissioner will, however, invoke his discretion to consider the affidavits at
this stage of the proceeding.
FN4. A copy of the first page of the TTAB's order, submitted with
counsel's affidavit, indicates that the
order was initialed by the appropriate individuals in the firm's Docketing
department as required by the established practice.
2 U.S.P.Q.2d 1380
END OF DOCUMENT