[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] In this cancellation proceeding involving a registration for the mark SOFT COAG for medical instruments, Petitioner Covidien dodged a motion to strike its summary judgment motion as untimely, but tripped over another procedural hurdle, resulting in the Board declining to consider its motion. Covidien LP v. ERBE Elektromedizin GmbH, 2019 USPQ2d 265006 (TTAB 2019) [precedential] (Order by Interlocutory Attorney Mary Beth Myles).

The Board faced the question of whether the granting of a consent motion for extension of all dates, filed just before the pretrial disclosure deadline, also extended the date for filing a summary judgment motion. Yes indeed, said the Board.

The relevant dates in this case are as follows: On December 21, 2018, the Board reset the trial dates, extending the deadline for Covidien’s pretrial disclosures to January 18, 2019. On January 16, 2019, Covidien filed a motion to extend all dates, with Respondent ERBE’s consent, by one week. In this recent Order, the motion was granted, and Covidien’s pretrial disclosures became retroactively due by January 25, 2019.

Anticipating the Board’s approval of its extension request, Covidien filed a motion for summary judgment on January 22, 2019. ERBE then promptly filed a motion to strike the summary judgment motion.

ERBE argued two points: (1) That it did not consent to an extension of time to file a summary judgment motion, but only to an extension of time for Covidien to serve its pretrial disclosures, and (2) that the summary judgment motion was untimely because the Board did not grant the extension prior to January 18, 2019 (the original deadline for Covidien’s pretrial disclosures). The Board addressed each issue in turn.

As to the issue of consent, the Board noted that ERBE consented to the extension with no conditions or restrictions:

At the time the consented motion to extend was filed (January 16), that deadline was due to expire on January 18, and Petitioner’s deadline to file a summary judgment motion would have been January 17 absent any extension. Thus, Respondent must have known that a summary judgment motion not only was still possible at the time it consented to the extension, but also that, by agreeing to extend all deadlines, it was consenting as well to extend the time for filing a summary judgment motion. If Respondent’s consent to an extension was conditioned upon a limitation, it was incumbent upon Respondent to identify that limitation and ensure that the limitation was conveyed in the motion when filed.

Because there was no condition or limitation in ERBE’s consent, the Board found that ERBE had agreed to an extension of time for all dates, including the deadline for filing a summary judgment motion.

Moving to the issue of whether Covidien’s summary judgment motion was timely, the Board stated that “[i]nasmuch as the unrestricted consented motion was filed prior to the deadline, once granted, the extension is effective before the deadline.” Again, the Board reiterated that “[t]he extension of the pretrial disclosure deadline . . . generally resets the deadline for filing a motion for summary judgment, unless the parties agree to the contrary.” [Emphasis added]. Because the Board found that a grant of an extension is retroactively effective, ERBE’s motion to strike was rejected.

In a curious twist, however, the Board declined to consider Covidien’s motion for summary judgment since it exceeded the allotted page limit. Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a), provides that no motion “shall exceed twenty-five pages in length in its entirety . . . .” Covidien’s motion for summary judgment was twenty-eight pages long. Since “[t]he Board generally does not consider briefs that exceed the page limit” (see Saint-Gobain Corp. v. Minn. Mining and Mfg. Co., 66 USPQ2d 1220, 1221-22 (TTAB 2003)), Covidien’s motion for summary judgment was given no consideration.

Accordingly, proceedings in the case resumed and the remaining dates were reset as needed. The new deadline for pre-trial disclosure was set as July 14, 2019. Covidien re-filed its summary judgment motion (in shortened form) on July 13th.

Read comments and post your comment here.

KKM Comment: A really good case for practitioners on what consenting to an extension of time implicates and the importance of adhering to procedural rules!

Text Copyright Kira-Khank McCarthy and John L. Welch 2019.