In yet another precedential decision dealing with the January 2017 rule changes, the Board rejected Opposer Asustek's motion for reconsideration of an order denying its motion to compel discovery responses as untimely: The motion to compel was filed on the day of the deadline for Opposer's pretrial disclosures, and not before that day, as required by the applicable Rule. Asustek Computer Incorporation v. Chengdu Westhouse Interactive Entertainment Co., Ltd., Opposition No. 91225271 (October 31, 2018) [precedential].
Under Rule 2.120(f)(1), as amended on January 14, 2017, "[a] motion to compel discovery must be filed before the day of the deadline for pretrial disclosures for the first testimony period as originally set or as reset." The deadline for Asustek's pretrial disclosures fell on Monday, September 25, 2017; therefore, under the rule, the last date to file a motion was "before the day of" that date—i.e, Sunday, September 24th.
Asustek filed its motion to compel on Monday, September 25, 2017. It maintained that it made "a reasonable interpretation" that Rule 2.196—which allows parties until the next business day to take action if a fixed deadline falls on a Saturday, Sunday or Federal holiday—applied to its situation. The Board, however, pointed out that Rule 2.196 does not apply to Rule 2.120(f)(1), because the latter rule does not fix a particular day by which a motion to compel must be filed, but instead requires that the motion be filed before the day another event (pretrial disclosures) occurs. Cf. Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268 (TTAB 2017) (holding that Rule 2.196 does not apply to the requirement that discovery be served early enough so responses will be due no later than close of discovery).
The phrase ""before the day of the deadline for pretrial disclosures" in Rule 2.120(f)(1) "means that the motion to compel must be filed sometime prior to the day pretrial disclosures are due." See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES; CLARIFICATION, 82 Fed. Reg. 33804, 33804 (July 21, 2017) (Clarification).
The inapplicability of Rule 2.196 remains similar to TTAB practice under the pre-amendment Rule. Under former Trademark Rule 2.120(e)(1), a motion to compel had to be filed prior to the commencement of the first testimony period. "Prior to" meant any time before the opening day of trial, i.e., before the first day of plaintiff's testimony period. See Blansett Pharmacal Co. v. Carmrick Labs., Inc., 25 USPQ2d 1473, 1476 (TTAB 1992).
In short, Trademark Rule 2.120(f)(1) requires that a motion to compel be filed before the day of the deadline for plaintiff to file and serve pretrial disclosures. As Opposer's motion to compel was filed and served on September 25, 2017, the due date for Opposer's pretrial disclosures, it was not served "before" the date set for pretrial disclosures and is untimely.
Opposer Asustek argued that the Board should apply the flexible approach for cases that arise during transition to the Board's new rules, as in the KID-Systeme case [TTABlogged here], where the Board allowed consideration of an otherwise untimely motion for summary judgment filed on the deadline for pretrial disclosures, rather than before that date. The Board pointed out, however, that KID-Systeme involved a motion that was filed prior to the Board's July 21, 2017 Clarification of the rule. Here, Asustek's motion to compel was filed two months after KID-Systeme was decided and the Clarification issued.
To the extent flexibility was warranted in KID-Systeme because of any perceived ambiguity in the Rule as originally amended, both the decision in that case and the subsequent Clarification resolved that ambiguity, putting Opposer and other Board litigants on notice of the proper application of the Rule. When Opposer filed its motion, the amended Rule had been in place more than eight months, and explicitly required filing before the day of the deadline for pretrial disclosures.
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