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  • Definition: Reconsideration.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • The purpose of a request for reconsideration is to point out errors made by the Board in reaching its decision, based on the evidence of record and the prevailing authorities. It is not merely to allow either the applicant or the examining attorney to reargue the case. See TBMP §1219.01 (2d ed. rev. 2004), citing TBMP §§ 543 and 544.
  • Although the Federal Circuit has confronted this procedural issue only in the context of appeals of decisions from district courts, where it must apply the procedural law of the regional circuit in which the district court sits, the TTAB notes that the procedure outlined above is followed in virtually all of the circuit courts.
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • Although the Federal Circuit has confronted this procedural issue only in the context of appeals of decisions from district courts, where it must apply the procedural law of the regional circuit in which the district court sits, we note that the procedure outlined above is followed in virtually all of the circuit courts. See 12 Moore's § 60.67[2][b]; see also Lans v. Gateway 2000, Inc., 110 F.Supp.2d 1 (D.D.C. 2000); aff'd Lans v. Digital Equip. Corp., 252 F.3d 1320, 59 USPQ2d 1057 (Fed. Cir. 2001).
  • Case Finding: As the Federal Circuit issued its mandate and opinion prior to the filing of respondent's motion, and the Federal Circuit's ruling is not the subject of a petition for a writ of certiorari, the TTAB has jurisdiction to hear this motion without leave from the Federal Circuit.
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • As the Federal Circuit issued its mandate and opinion prior to the filing of respondent's motion, and the Federal Circuit's ruling is not the subject of a petition for a writ of certiorari, the Board has jurisdiction to hear this motion without leave from the Federal Circuit. Standard Oil Co. of California v. United States, 429 U.S. 17, 17-18 (1976).
  • When a Rule 60(b) motion is filed while a judgment is on appeal, the district court has jurisdiction to entertain the motion, and should do so promptly. If the district court determines that the motion is meritless, as experience demonstrates is often the case, the court should deny the motion forthwith.
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • As the Fourth Circuit has explained, "[W]hen a Rule 60(b) motion is filed while a judgment is on appeal, the district court has jurisdiction to entertain the motion, and should do so promptly. If the district court determines that the motion is meritless, as experience demonstrates is often the case, the court should deny the motion forthwith; any appeal from the denial can be consolidated with the appeal from the underlying order. If the district court is inclined to grant the motion, it should issue a short memorandum so stating. The movant can then request a limited remand from [the appellate] court for that purpose." Fobian v. Storage Technology Corp., 164 F.3d 887, 891 (4th Cir. 1999).
  • A new registration not in existence at the time of trial does not qualify as newly discovered evidence that would entitle respondent to the relief sought.
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • Based on respondent's own contentions, the new registration was not in existence at the time of trial as it registered on June 3, 2008, well after the Board's decision on January 29, 2008. Accordingly, the registration does not qualify as newly discovered evidence that would entitle respondent to the relief sought.
  • Case Finding: By waiting to see whether the Federal Circuit would grant his appeal before filing his motion for relief from judgment, respondent unnecessarily maximized the resources that the TTAB and the Federal Circuit expended on this case.
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • By waiting to see whether the Federal Circuit would grant his appeal before filing his motion for relief from judgment, respondent unnecessarily maximized the resources that the Board and the Federal Circuit expended on this case.
  • Case Finding: Even if the registration qualified as new evidence, while the Rule 60(b)(2) motion was filed within one year of the TTAB's entry of judgment, the motion does not meet the second requirement of Rule 60(c), that a Rule 60(b) motion be filed within a "reasonable time."
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • Even if the registration qualified as new evidence, while the Rule 60(b)(2) motion was filed within one year of the Board's entry of judgment, the motion does not meet the second requirement of Rule 60(c), that a Rule 60(b) motion be filed within a "reasonable time." Upon the issuance of his new registration in June 2008, respondent should have filed the Rule 60(b) motion with the Board. If the Board was inclined to grant the motion, the Board would have issued an order indicating its intention to grant the order upon proper remand, and respondent then could have filed a motion with the Federal Circuit to remand the appeal to the Board to grant the Rule 60(b) motion.
  • Every motion under Rule 60(b) must be made within a reasonable time and a motion under section (b)(2) must be filed no more than a year after the entry of the judgment.
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • Every motion under Rule 60(b) "must be made within a reasonable time" and a motion under section (b)(2) must be filed "no more than a year after the entry of the judgment." Fed. R. Civ. P. 60(c)(1).
  • Even if a Rule 60(b) motion involves newly discovered evidence that was in existence at the time of trial but not in possession of the moving party, and the motion is made both within a reasonable time and within the outside limit of one year, then the motion still may be denied if the evidence is merely cumulative or not of a type that would change the result.
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • Finally, we note that even if a Rule 60(b) motion involves newly discovered evidence that was in existence at the time of trial but not in possession of the moving party, and the motion is made both within a reasonable time and within the outside limit of one year, then the motion still may be denied if the evidence is merely cumulative or not of a type that would change the result. See 12 Moore's § 60.42[8], [9]; Atkinson v. Prudential Property Co., 43 F.3d 367 (8th Cir. 1994); Matter of Wildman, 859 F.2d 553 (7th Cir. 1988); Trans Mississippi Corp. v. U.S., 494 F.2d 770 (5th Cir. 1974); see also Smith Int'l Inc. v. Hughes Tool Co., 759 F.2d 1572, 225 USPQ 889 (Fed. Cir. 1985).
  • Trademark Rule 2.122(b)(2) provides: "The allegation in an application for registration, or in a registration, of a date of use is not evidence on behalf of the applicant or registrant; a date of use of a mark must be established by competent evidence."
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • FOOTNOTE 6 "Trademark Rule 2.122(b)(2) provides: "The allegation in an application for registration, or in a registration, of a date of use is not evidence on behalf of the applicant or registrant; a date of use of a mark must be established by competent evidence.""
  • Cases construing newly discovered evidence uniformly hold that the new evidence must be of facts in existence at the time of the trial, but only discovered later, to entitle a party to relief.
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • However, we first must address whether the evidence qualifies as newly discovered evidence under Rule 60(b)(2). Cases construing "newly discovered evidence" uniformly hold that the new evidence must be of facts in existence at the time of the trial, but only discovered later, to entitle a party to relief. See generally 11 C. Wright & A. Miller, Federal Practice and Procedure §2859 (2d ed. 1995); 12 J. Moore, Moore's Federal Practice § 60.42[3] (3d ed. 2009) ("Moore's"); see, e.g., Swope v. Siegel-Robert, Inc., 243 F.3d 486, 498 (8th Cir. 2001), cert. denied, 534 U.S. 887 (2001); Rivera Pomales v. Bridgestone Firestone, Inc., Rivera v. M/T Fossarina, 840 F.2d 152, 156 (1st Cir. 1988); Chilson v. Metropolitan Transit Authority, 796 F.2d 69, 70 (5th Cir. 1986); National Anti-Hunger Coalition v. Executive Comm. Etc., 711 F.2d 1071, 1075 (D.C. Cir. 1983); Corex Corp. v. U.S., 638 F.2d 119, 121 (9th Cir. 1981).
  • If respondent was unsure whether the Federal Circuit and the TTAB would follow the prevailing procedure concerning the filing of a Rule 60(b) motion with the trial court during a pending appeal, respondent could have, in the alternative, brought the issuance of the registration to the attention of the Federal Circuit and sought suspension of the appeal and leave to file the Rule 60(b) motion.
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • If respondent was unsure whether the Federal Circuit and the Board would follow the prevailing procedure concerning the filing of a Rule 60(b) motion with the trial court during a pending appeal, respondent could have, in the alternative, brought the issuance of the registration to the attention of the Federal Circuit and sought suspension of the appeal and leave to file the Rule 60(b) motion.
  • The registration of respondent's second registration for a very similar mark is neither unrebuttable nor prima facie evidence of respondent's priority of use of that mark, especially where the evidence at trial established petitioner's priority of use.
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • In this case, the issuance of respondent's second registration for a very similar mark, virtually identical goods and identical dates of use does not change the underlying trial record in any significant way. Respondent contends that the registration is prima facie evidence that he, rather than petitioner, is the owner of the OMIC mark. Nonetheless, the registration is neither unrebuttable nor prima facie evidence of respondent's priority of use of that mark, and the evidence at trial established petitioner's priority of use.6 The subsequent issuance by the Office of an arguably conflicting registration does not alter the record created at trial or dictate that the decision should be set aside.
  • Where Respondent does nothing upon issuance of the registration and fails to explain why his inaction was reasonable under the circumstances, a Rule 60(b) motion does not satisfy the Rule 60(c) requirement that it be filed within a reasonable time.
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • Respondent, however, did nothing upon issuance of the registration and has not explained why his inaction was reasonable under the circumstances. We therefore conclude that the Rule 60(b) motion does not satisfy the Rule 60(c) requirement that it be filed within a reasonable time.
  • Rule 60(b)(2) of the Federal Rules of Civil Procedure allows for relief from judgment based on newly discovered evidence that, with reasonable diligence, could not have been discovered in time to move for a new trial under Rule 59(b).
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • Rule 60(b)(2) of the Federal Rules of Civil Procedure allows for relief from judgment based on "newly discovered evidence that, with reasonable diligence, could not have been discovered in time to move for a new trial under Rule 59(b)." Fed. R. Civ. P. 60(b)(2); see also discussion in TBMP §544 (2nd ed. rev. 2004).
  • This practice conserves the resources of the courts because if the trial court (in this case the TTAB) grants the motion, then the appellate court may not need to decide the appeal. If the trial court denies the motion, then an appeal from that decision may be incorporated into the appeal.
    • Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009)
      • This practice conserves the resources of the courts because if the trial court (in this case the Board) grants the motion, then the appellate court may not need to decide the appeal. If the trial court denies the motion, then an appeal from that decision may be incorporated into the appeal.
Pramil S.R.L. v Michel Farah, Cancellation No. 92032341 (TTAB 2009) Grand Total
Swope v. Siegel-Robert, Inc., 243 F.3d 486, 498 (8th Cir. 2001), cert. denied, 534 U.S. 887 (2001) 1
Lans v. Gateway 2000, Inc., 110 F.Supp.2d 1 (D.D.C. 2000)(aff'd Lans v. Digital Equip. Corp., 252 F.3d 1320, 59 USPQ2d 1057 (Fed. Cir. 2001) 1
Fobian v. Storage Technology Corp., 164 F.3d 887 (4th Cir. 1999) 1
Atkinson v. Prudential Property Co., 43 F.3d 367 (8th Cir. 1994) 1
Matter of Wildman, 859 F.2d 553 (7th Cir. 1988) 1
Rivera Pomales v. Bridgestone Firestone, Inc., Rivera v. M/T Fossarina, 840 F.2d 152 (1st Cir. 1988) 1
Chilson v. Metropolitan Transit Authority, 796 F.2d 69 (5th Cir. 1986) 1
Smith Int'l Inc. v. Hughes Tool Co., 759 F.2d 1572, 225 USPQ 889 (Fed. Cir. 1985) 1
National Anti-Hunger Coalition v. Executive Comm. Etc., 711 F.2d 1071 (D.C. Cir. 1983) 1
Corex Corp. v. U.S., 638 F.2d 119 (9th Cir. 1981) 1
Trans Mississippi Corp. v. U.S., 494 F.2d 770 (5th Cir. 1974) 1
Grand Total 11 12
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