Error: Bad annotation destination
 United States Court of Appeals for the Federal Circuit


                                     2006-1148
                              (Opposition No. 91124847)



                     FIRSTHEALTH OF THE CAROLINAS, INC.,

                                                      Appellant,

                                           v.


                         CAREFIRST OF MARYLAND, INC.,

                                                      Appellee.


       Anthony J. Biller, Coats & Bennett, P.L.L.C., of Cary, North Carolina, argued for
appellant. Of counsel was David E. Bennett.

       Barth X. DeRosa, Stevens Davis Miller Mosher LLP, of Washington, DC, argued
for appellee.

Appealed from: United States Patent and Trademark Office, Trademark Trial
               and Appeal Board
 United States Court of Appeals for the Federal Circuit

                                     2006-1148
                              (Opposition No. 91124847)


                       FIRSTHEALTH OF THE CAROLINAS, INC.,

                                                     Appellant,

                                          v.


                          CAREFIRST OF MARYLAND, INC.,

                                                     Appellee.

                           __________________________

                            DECIDED: February 27, 2007
                           __________________________


Before BRYSON, GAJARSA, and LINN, Circuit Judges.

LINN, Circuit Judge.

      FirstHealth of the Carolinas, Inc. (“FirstHealth”) appeals from a dismissal by the

Trademark Trial and Appeal Board (“Board”) of its counterclaim to cancel trademarks

registered by CareFirst of Maryland, Inc. (“CareFirst”).     CareFirst of Md., Inc. v.

FirstHealth of the Carolinas, Inc., Opposition Nos. 91116355, 91124847 (T.T.A.B. Dec.

2, 2005) (“Dismissal”).   Because the Board’s findings are supported by substantial

evidence, we affirm.

                                  I. BACKGROUND

      In 1998 and 2001, FirstHealth filed intent-to-use trademark applications—Serial

Nos. 75/455,343 and 76/222,230, respectively—for the FIRSTCAROLINACARE mark
used in conjunction with healthcare insurance claims administration and health

maintenance organizations (“HMOs”).          In each instance, CareFirst filed a notice of

opposition alleging a likelihood of confusion with and dilution of its registered

CAREFIRST mark. The two proceedings were consolidated on March 7, 2003.

       FirstHealth counterclaimed against CareFirst, seeking cancellation of the

CAREFIRST trademark registrations based on abandonment due to uncontrolled

licensing of the mark and failure to use the mark in connection with services other than

HMO services.      In accordance with 37 C.F.R. § 2.121, the parties entered into a

stipulation that provided a two-month extension of FirstHealth’s case-in-chief testimony

period until January 31, 2004.

       On February 26, 2004, FirstHealth filed a motion to reopen its testimony period

for the purpose of filing notices of reliance to introduce into evidence the discovery

deposition of David Wolf (and related exhibits), certain discovery responses, and

certified copies of third-party registrations. FirstHealth attributed its late filing to the birth

of counsel’s son, the significant amount of testimony that was taken, counsel’s time

conflicts with unrelated matters, and a docketing error made by a new paralegal. The

Board found that FirstHealth failed to demonstrate excusable neglect and denied

FirstHealth’s motion to reopen the testimony period. Dismissal, slip op. at 13.

       Noting that FirstHealth’s counterclaim arguments relied principally on the Wolf

deposition—which was not of record—the Board found that FirstHealth had failed to

prove uncontrolled licensing of the mark or failure to use the mark by a preponderance

of the evidence. Id., slip op. at 29-33. Accordingly, FirstHealth’s counterclaims for

cancellation were dismissed. Id., slip op. at 33. The Board also dismissed CareFirst’s




2006-1148                                       2
oppositions, finding that there was no likelihood of confusion with or dilution of its

registered mark. Id., slip op. at 75.

       Although both parties initially appealed the Board’s decision, CareFirst eventually

moved to dismiss its appeal. That motion was granted on February 28, 2006. This

case therefore concerns FirstHealth’s appeal from the Board’s denial of its motion to

reopen the testimony period and the Board’s dismissal of its counterclaim for

cancellation of CareFirst’s registered trademarks. We have jurisdiction pursuant to 28

U.S.C. § 1295(a)(4)(B).

                                        II. DISCUSSION

                                         A. Jurisdiction

       As a threshold matter, CareFirst argues that this appeal is moot and that we lack

appellate jurisdiction. Specifically, CareFirst argues that by having dismissed its appeal

from the opposition decision, the Board’s rulings on the likelihood of confusion with and

dilution of the CAREFIRST mark have a preclusive effect against CareFirst in any future

proceedings against FirstHealth for use of the FIRSTCAROLINACARE mark. CareFirst

argues that, as a result, the CAREFIRST mark cannot be asserted against FirstHealth

and thus there is no potential “damage” as contemplated by 15 U.S.C. § 1064 to

support FirstHealth’s cancellation counterclaim.

       CareFirst overstates the impact of the Board’s findings.          As the Board’s

regulations correctly recognize: “The Board is empowered to determine only the right to

register. The Board is not authorized to determine the right to use, nor may it decide

broader questions of infringement or unfair competition.”      T.B.M.P. § 102.01.     The

Board’s decision does not bar CareFirst from using the CAREFIRST mark or from




2006-1148                                      3
asserting that mark in subsequent claims against FirstHealth for trademark infringement

or unfair competition.     See 15 U.S.C. § 1114(1) (registrant may bring infringement

action against those using or reproducing marks for certain purposes when “such use is

likely to cause confusion, or to cause mistake, or to deceive”). Although the Board’s

findings may preclude CareFirst from re-litigating the narrow issues addressed by the

Board in the opposition proceeding,1 the CAREFIRST mark may still be used to cause

“damage” by means that do not involve inquiries into likelihood of confusion or dilution.

Accordingly, the appeal is not moot, and we turn to the merits of the case.

                                    B. Excusable Neglect

       The primary issue on appeal is whether the Board erred in denying FirstHealth’s

motion to reopen the testimony period for failure to show excusable neglect, which we

review for an abuse of discretion. See Hewlett-Packard Co. v. Olympus Corp., 931 F.2d

1551, 1552 (Fed. Cir. 1991). FirstHealth argues that the Board abused its discretion in

applying the factors identified by the Supreme Court in Pioneer Investment Services Co.

v. Brunswick Associates Ltd., 507 U.S. 380 (1993), because each factor weighs in favor

of accepting FirstHealth’s late filing.

       The Board’s regulations allow a testimony period to be reopened upon a showing

of “excusable neglect,” but do not specify what is meant by that term. See 37 C.F.R.

§ 2.116(a) (inter partes proceedings before the Board are generally governed by the



       1
                We do not decide whether the Board’s likelihood of confusion and dilution
findings would have a preclusive effect on the same issues in some hypothetical future
litigation; indeed, they may not. See Jim Beam Brands Co. v. Beamish & Crawford,
Ltd., 937 F.2d 729, 734-36 (2d Cir. 1991) (holding that the issue of likelihood of
confusion in a prior cancellation proceeding was sufficiently different from the issue of
likelihood of confusion presented in subsequent litigation such that the Board’s finding
did not have preclusive effect).


2006-1148                                    4
Federal Rules of Civil Procedure); Fed. R. Civ. P. 6(b)(2). In Pioneer, the Supreme

Court addressed the meaning of “excusable neglect” in the context of the Federal Rules

of Bankruptcy Procedure.      According to the Court, 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 [non-moving party], [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.

507 U.S. at 395. The Board adopted these factors for determining excusable neglect in

Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582 (T.T.A.B. 1997), and has found the

third factor—the reason for the delay and whether it was within the movant’s control—to

be of paramount importance. Old Nutfield Brewing Co., v. Hudson Valley Brewing Co.,

65 USPQ2d 1701 (T.T.A.B. 2002) (citing Pumpkin, 43 USPQ2d at 1586 n.7).

       The Board has discretion to reasonably interpret the meaning of “excusable

neglect” in the context of its own regulations. See Thomas Jefferson Univ. v. Shalala,

512 U.S. 504, 512 (1994) (an agency’s interpretation of its own regulation is given

“controlling weight unless it is plainly erroneous or inconsistent with the regulation”

(quoting Bowles v. Seminole Rock & Sand Co., 325 U.S. 410, 414 (1945))). Although

the Board was not required to adopt the interpretation of “excusable neglect” articulated

in Pioneer, doing so was reasonable, and we defer to that interpretation. See Custom

Computer Servs., Inc. v. Paychex Props., Inc., 337 F.3d 1334, 1336 (Fed. Cir. 2003)

(deferring to the Board’s interpretation of “mistake” in the context of 37 C.F.R.

§ 2.102(b)).




2006-1148                                  5
       The Board’s decision in Pumpkin is on point.          In that case, a party in an

opposition proceeding filed a motion to reopen its testimony period, arguing that its

failure to submit evidence during the assigned testimony period was the result of

excusable neglect. 43 USPQ2d at 1583. The Board found that there was no danger of

prejudice to the non-moving party and no evidence of bad faith. Id. at 1587-88. The

Board nevertheless denied the motion based on the second and third Pioneer factors.

Id. In doing so, the Board noted that because the reason for delay—a docketing error—

was “wholly within the reasonable control of [the movant], the third Pioneer factor

weighs heavily against a finding of excusable neglect.” Id. at 1587. The Board also

noted that its interest in deterring delay due to “sloppy practice or inattention to

deadlines” was relevant to the second Pioneer factor and also “weighs heavily against a

finding of excusable neglect.” Id. at 1588.

       Here, the reasons given for delay were wholly within FirstHealth’s reasonable

control.2   Indeed, two of the reasons for delay were accounted for in FirstHealth’s

Stipulated Motion for Enlargement of Testimony and Briefing Periods, which extended

the testimony period to January 31, 2004 “to accommodate [FirstHealth’s] witness’ [sic]

schedules and conflicts with counsels’ schedules.”          FirstHealth’s complaint of a

docketing error is belied by its reference to the January 31, 2004 deadline in a motion it

filed before the deadline had expired. Finally, to the extent an attorney’s family matters

caused delay, FirstHealth provides no explanation as to why other authorized

       2
               On appeal, FirstHealth also points to the hospitalization of counsel’s son
as a reason for delay. That hospitalization did not occur until after the testimony period
closed and was not raised in FirstHealth’s motion to reopen the testimony period.
Although unfortunate, there is no explanation as to how this event resulted in
FirstHealth’s failure to submit its notices of reliance before the testimony period expired.
We therefore do not consider it on appeal.


2006-1148                                     6
individuals in the same firm could not have assumed responsibility for the case. See

HKG Indus., Inc. v. Perma-Pipe, Inc., 49 USPQ2d 1156 (T.T.A.B. 1998) (finding that a

failure to explain why other authorized individuals could not have assumed responsibility

after counsel’s death weighed against finding excusable neglect).       As in Pumpkin,

substantial evidence supports a finding that the second and third factors weigh against

excusable neglect. Accordingly, the Board’s finding in this case is consistent with its

prior practice, and it did not abuse its discretion in denying FirstHealth’s motion to

reopen the testimony period.

       FirstHealth argues that the undisputed facts of record prove its cancellation

counterclaims even without the excluded evidence.             We find that argument

unpersuasive.    Abandonment is a question of fact, and the Board’s findings are

sustained if supported by substantial evidence. On-Line Careline, Inc. v. Am. Online,

Inc., 229 F.3d 1080, 1087 (Fed. Cir. 2000). FirstHealth bears the burden of proving

abandonment by a preponderance of the evidence. Rivard v. Linville, 133 F.3d 1446,

1449 (Fed. Cir. 1999). Without the properly excluded testimony evidence, the Board’s

finding that FirstHealth failed to prove uncontrolled licensing or failure to use by a

preponderance of the evidence is supported by substantial evidence.

                                   III. CONCLUSION

       Because the Board did not abuse its discretion in denying FirstHealth’s motion to

reopen the testimony period, and because substantial evidence supports the Board’s

finding that FirstHealth failed to prove its cancellation counterclaims, the Board’s

decision is

                                      AFFIRMED.




2006-1148                                  7
                 COSTS

     No costs.




2006-1148          8
