Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
CANADIAN TIRE CORPORATION, LIMITED
v.
COOPER TIRE & RUBBER COMPANY
96-23(R)
Opposition No. 86,446
July 12, 1996
*1 Filed: March 27, 1996
Attorney for Petitioner:
James E. Shlesinger, Esq.
Shlesinger, Arkwright & Garvey
3000 South Eads Street
Arlington, VA 22202
Jeffery A. Handelman, Esq.
Willian Brinks Hofer Gilson & Lione
NBC Tower
455 N. Cityfront Plaza Dr., Suite 3600
Chicago, IL 60611
Philip G. Hampton, II
Assistant Commissioner for Trademarks
On Request for Reconsideration
Cooper Tire & Rubber
Company has requested reconsideration of the Commissioner's decision dated
March 8, 1996, denying its petition to reverse a non-final interlocutory order
of the Trademark Trial and Appeal Board (the "Board") in the
above-referenced opposition proceeding. Although the Trademark Rules do not
specifically provide for requests for reconsideration of decisions on
petitions, the Commissioner has the discretion to consider such requests
pursuant to Trademark Rule 2.146(a)(3), 37 C.F.R. § 2.146(a)(3). Upon reconsideration, the petition is granted to the
extent that the Commissioner's decision dated
March 8, 1996 is modified in part. The request upon reconsideration to include
the newspaper article in the record is denied.
FACTS
Canadian Tire
Corporation, Limited ("Opposer") filed a Notice of Opposition against
registration of Petitioner's Application Serial No. 74/079,106 for the mark
MOTOMASTER, based in part upon prior and continuous use of the same mark in
Canada and the U.S. After numerous extensions of the trial dates, the period
for rebuttal testimony closed on May 9, 1994.
On February 15, 1995,
Petitioner filed a Motion to Reopen its Discovery and Testimony Periods (the
"Motion"), in view of newly discovered evidence, consisting of an
article which appeared in a Toronto newspaper. Petitioner requested further
discovery by means of interrogatories, document requests and admissions.
Opposer filed a response in opposition to the Motion.
On July 26, 1995, the
Board denied Petitioner's Motion. On August 25, 1995, Petitioner filed a
Request for Reconsideration that was later denied by the Board on October 4,
1995. On October 31, 1995, Petitioner filed a petition to the Commissioner for
reversal of the non-final interlocutory order of the Board. The petition was
denied on March 8, 1996. This Request for Reconsideration followed.
DECISION
Paragraph four of the
March 8, 1996 decision denying Petitioner's petition to the Commissioner read,
in part, as follows:
On July 26, 1995, the
Board denied Petitioner's Motion and noted the following: 1) Petitioner's
Motion was filed late in the proceeding, after Opposer had filed its main brief
and shortly before Petitioner's brief was due; 2) Petitioner failed to show not
only that the evidence is newly discovered, but also that the evidence could
not have been discovered earlier through the exercise of reasonable diligence;
3) Petitioner sought not merely to introduce the newspaper article, but to
reopen discovery to "ascertain if additional facts should be brought to
the Board's attention" and subsequently to amend its pleadings; 4)
Petitioner did not have in hand evidence that would enable it to amend its
pleadings to include the defenses of abandonment based on continuous nonuse or
lack or standing; and 5) it was much too late in the proceeding to permit a
reopening of discovery in order to allow Petitioner the opportunity to
investigate potential defenses for which it presently has no concrete evidence
...
*2 As noted by the
Petitioner in its Request for Reconsideration, the petition decision contained
a misstatement concerning the Board's action denying
Petitioner's Motion. That is, the Board stated in its action that "it is
obvious that [Petitioner] did not have access earlier to the newspaper article
with respect to opposer's intended closing of its U.S. Auto Source stores"
not that "Petitioner failed to show not only that the evidence is newly
discovered, but also that the evidence could not have been discovered earlier
through the exercise of reasonable diligence." Therefore, upon
reconsideration, the petition is corrected to the extent that point two in
paragraph four, asserting that Petitioner failed to show not only that the
evidence was newly discovered, but also that the evidence could not have been
discovered earlier through the exercise of reasonable diligence, is deleted
from the Commissioner's decision.
Nevertheless, the
Commissioner finds no clear error or abuse of discretion for the other reasons
stated in the Commissioner's decision. A motion to reopen is a matter committed
to the sound discretion of the Board. See Federal Rule of Civil Procedure 6(b).
When a party moves to reopen based upon newly discovered evidence, the mere
fact that the party is able to show that the evidence could not have been
discovered earlier through the exercise of reasonable diligence does not, in
and of itself, mean that the motion must be granted. The nature and purpose of
the evidence sought to be added, the stage of the proceeding, the adverse
party's right to a speedy and inexpensive determination of the proceeding and
the need for closure once the trial period has
been completed (barring some compelling reason to reopen), are all factors
which must be considered by the Board in determining a motion to reopen such as
this. The Board clearly and properly weighed those factors in reaching its
decision on the motion.
Also in its Request for
Reconsideration, Petitioner requests clarification concerning whether the
Commissioner will grant Petitioner's request, made in its petition to the
Commissioner, to include the newspaper article in the record. Upon
reconsideration, this request is denied. Had the Board believed that
introduction of the article into the record was warranted, the Board could have
elected to accept it as part of the record in spite of denying the Petitioner's
Motion to Reopen its Discovery and Testimony Periods. Nevertheless, the Board did
not do so. Considering the hearsay nature of the article, and the fact that it
pertains to an unpleaded defense for which Petitioner has no present
evidentiary basis, the Commissioner sees no clear error or abuse of discretion
with respect to this non-final decision by the Board.
The opposition file will
be forwarded to the Board for resumption of the opposition proceeding.
40 U.S.P.Q.2d 1537
END OF DOCUMENT