April 24, 2014

“When you assume, you make an …” : Echoes From Oscar Wilde In Luster Products, Inc. v. John M. Van Zandt d/b/a Vanza USA, Opposition No. 91202788 (TTAB 11/28/2012)

A recent decision by the United States Patent and Trademark Office, Trademark Trial and Appeal Board ("TTAB"), in an opposition proceeding captioned Luster Products, Inc. v. John M. Van Zandt, reminds us of the age old Oscar Wilde adage warning us of dangers in making assumptions.  In a precedential decision, the TTAB shot down the applicant’s motion to "extend discovery," filed over a month following the close of the discovery period.  The crux of applicant’s argument, as cited by the TTAB, was that the applicant “rightfully assumed” the opposer had lost interest in the case, which it argued justified its strategic decision not to serve discovery requests.  Much to the applicant's chagrin, the opposer craftily served initial disclosures, document demands and interrogatories on the final day of the discovery period, which by TTAB rules is timely.  Left without any means to test the opposer's case, the applicant sought an extension of the already closed discovery period.

Treating the motion as a motion to reopen discovery, the TTAB found that the applicant had not met the required standard of excusable neglect.  The TTAB rejected the applicant’s argument that written discovery would be a waste of time if the opposer did not intend to prosecute, and that it would not have been able to draft discovery requests without the opposer's initial disclosures as a guide.  Maybe the TTAB's decision had something to do with the fact that the applicant rejected the opposer’s request to suspend the proceeding for settlement shortly before the close of discovery.  However, it seems more likely that the TTAB is simply not going to allow parties to consciously disregard the discovery period and then seek to prolong the opposition by reopening discovery.  As the TTAB noted, "To the extent that applicant made a calculated strategic decision not to take discovery in the hope that opposer had lost interest in the proceeding, the events in this case illustrate the danger of such a decision."

Learning from the applicant’s foible, it is important that parties to opposition proceedings and traditional litigations remember it is a dangerous business assuming your adversary has abandoned the case, after all, that’s for the TTAB or court to decide.

© 2014 Giordano, Halleran & Ciesla, P.C. All Rights Reserved

About the Author

Christopher J. Marino, Giordano Law Firm, Litigation Attorney

Mr. Marino has a bi-coastal litigation practice focusing on general commercial and business disputes, trademark law, copyright law, trade secret law and unfair business practices, and entertainment and media law. He has extensive experience litigating and resolving general commercial and intellectual property disputes, and also provides transactional and business counseling in the areas of copyright, trademark, trade secret, unfair competition and business practices, and general commercial law. Mr. Marino also has experience serving as outside general counsel, advising clients in the area...


Boost: AJAX core statistics

Legal Disclaimer

You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's  Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on are intended for general information purposes only. Any legal analysis, legislative updates or other content and links should not be construed as legal or professional advice or a substitute for such advice. No attorney-client or confidential relationship is formed by the transmission of information between you and the National Law Review website or any of the law firms, attorneys or other professionals or organizations who include content on the National Law Review website. If you require legal or professional advice, kindly contact an attorney or other suitable professional advisor.  

Some states have laws and ethical rules regarding solicitation and advertisement practices by attorneys and/or other professionals. The National Law Review is not a law firm nor is  intended to be  a referral service for attorneys and/or other professionals. The NLR does not wish, nor does it intend, to solicit the business of anyone or to refer anyone to an attorney or other professional.  NLR does not answer legal questions nor will we refer you to an attorney or other professional if you request such information from us. 

Under certain state laws the following statements may be required on this website and we have included them in order to be in full compliance with these rules. The choice of a lawyer or other professional is an important decision and should not be based solely upon advertisements. Attorney Advertising Notice: Prior results do not guarantee a similar outcome. Statement in compliance with Texas Rules of Professional Conduct. Unless otherwise noted, attorneys are not certified by the Texas Board of Legal Specialization, nor can NLR attest to the accuracy of any notation of Legal Specialization or other Professional Credentials.

The National Law Review - National Law Forum LLC 4700 Gilbert Ave. Suite 47 #230 Western Springs, IL 60558  Telephone  (708) 357-3317 If you would ike to contact us via email please click here.