Mixnet Corporationv.Tomeka Harris and Chan'Drieka Morrison

Trademark Trial and Appeal Board

Jun 8, 2020

92067984RE (T.T.A.B. Jun. 8, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: June 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Mixnet Corporation
v.
Tomeka Harris and Chan’Drieka Morrison
_____

Cancellation No. 92067984
_____

Eric J. Menhart of Lexero Law Firm,
for Mixnet Corporation.
James T. Hollin, Jr. of J.T. Hollin, Attorney at Law, P.C.,
for Tomeka Harris and Chan’Drieka Morrison.
_____

Before Cataldo, Ritchie, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
Petitioner Mixnet Corporation filed a petition for cancellation of Respondents
Tomeka Harris and Chan’Drieka Morrison’s Registration No. 51205671 under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the basis of likelihood of
confusion with its alleged prior common law use of the mark TAXPERT. 1 TTABVUE.

1 Registration No. 5120567 for the mark identifying “income tax consultation; income
tax preparation; tax advisory services; tax and taxation planning, advice, information and
consultancy services; tax filing services,” in International Class 35.
Cancellation No. 92067984
- 2 -
On February 19, 2020, the Board issued a final decision (“Final Decision”) granting
the petition. 17 TTABVUE. The next day, Respondents filed a timely Request for
Reconsideration under Trademark Rule 2.129(c), 37 C.F.R. § 2.129(c). 18 TTABVUE.
Petitioner opposes the request. 19 TTABVUE.
As background to Respondents’ request, the Final Decision addressed several
procedural issues surrounding the timing and effect of Respondents’ failure to submit
a main brief on the case. See 17 TTABVUE 3-4. Specifically, the Final Decision
discussed Respondents’ August 18, 2019 filing which “request[ed] that they be
allowed a one-day extension of time, until August 18, 2019, within which to submit
their . . . Final Brief,” 12 TTABVUE 4, and explained that under Trademark Rule
2.196 Respondents were permitted until August 19, 2019, in which to file their main
brief on the case without the need for a motion to extend.2 The Final Decision also
noted that although the certificate of service for the August 18th filing indicated that
“Registrant[s’] Final Brief” on the case accompanied the filing, no brief was submitted
therewith.3 See 12 TTABVUE 5 (certificate of service).
In response to the August 18th filing, Petitioner filed with the Board and served
upon Respondents a motion to strike in which Petitioner discussed Respondents’

2 The trial schedule set Saturday, August 17, 2019, as the due date for Respondents’ brief on
the merits of the case. 2 TTABVUE 3. Under Trademark Rule 2.196, when the last day for
taking an action falls on a Saturday, Sunday, or Federal holiday, the action may be taken on
the next succeeding day that is not a Saturday, Sunday, or holiday.
3 Although the ESTTA coversheet for the August 18th filing indicated that the submission
was the “Brief on Merits for Defendant[s],” no brief was submitted; instead, the filing
included only the motion to extend, a declaration of counsel, a copy of the specimen from
Petitioner’s pleaded application, and a certificate of service. 12 TTABVUE.
Cancellation No. 92067984
- 3 -
“purported Final Brief” and noted that Respondents had “failed to file a substantive
brief, of any kind.” 14 TTABVUE 2, 3. Petitioner indicated that Respondents’ August
18th filing in “TTABVUE shows no more than one incomplete image, a motion for a
single day extension of time, a declaration by [Respondents’] counsel, and a
Certification of Service. If [Respondents] have filed a purported substantive brief, it
has not appeared on TTABVUE, nor has it been served upon Petitioner’s counsel.” Id.
at 3.
Similarly, Petitioner’s reply brief on the merits of the case, which was submitted
“in reply to the August 18, 2019 filings of [Respondents] which are understood to be
[Respondents’] Final Brief,” 15 TTABVUE 14, indicated that to the extent the August
18th filing was meant to be or include Respondents’ final brief, such a brief “is fatally
flawed, both in substance and presentation. As for substance, [Respondents’] Final
Brief appears to consist of a single exhibit, without identification or explanation. This
document fails to meet any of the criteria required for a final brief on the merits.” Id.
Respondents did not respond to Petitioner’s motion to strike or rebuttal brief, nor
submit any additional filing in this case until the current request for reconsideration.
Respondents request reconsideration of the Board’s findings. In accordance with
our legal standards, “the premise underlying a request for . . . reconsideration . . . . is
that, based on the evidence of record and the prevailing authorities, the Board erred
in reaching the decision it issued. The request may not be used to introduce additional
evidence, nor should it be devoted simply to a reargument of the points presented in
the requesting party’s brief on the case. Rather, the request . . . should be limited to
Cancellation No. 92067984
- 4 -
a demonstration that, based on the evidence properly of record and the applicable
law, the Board’s ruling is in error and requires appropriate change.” TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 543 (June 2019); see
also, TBMP § 804. However, Respondents’ request does not contain any argument or
demonstration that the Final Decision contains an error; instead, the request is in
effect a motion to reopen Respondents’ time to file a main brief on the case as
Respondents ask “that this case be reconsidered, in view of Registrants’ Final Brief,
which [accompanied the request and] was inadvertently missing from” an earlier
filing submitted August 18, 2019.
In deciding the effective motion to reopen presented by the request for
reconsideration, we assess whether Respondents have shown the required excusable
neglect under the standards set out in Pioneer Inv. Servs. Co. v. Brunswick Assocs.
L.P., 507 U.S. 380 (1993), adopted by the Board in Pumpkin Ltd. v. The Seed Corp.,
43 USPQ2d 1582 (TTAB 1997). See FirstHealth of the Carolinas, Inc. v. CareFirst of
Md., Inc., 479 F.3d 825, 81 USPQ2d 1919, 1922 (Fed. Cir. 2007); see also TBMP
§ 509.01(b)(1). We take into account all relevant circumstances surrounding
Respondents’ omission and delay, including (1) the danger of prejudice to Petitioner,
(2) the length of the delay and its potential impact on judicial proceedings, (3) the
reason for the delay, including whether it was within Respondents’ reasonable
control, and (4) whether Respondents acted in good faith. Pioneer, 507 U.S. at 395.
“[T]he third factor – the reason for the delay and whether it was within the movant’s
control – [is] of paramount importance.” FirstHealth, 81 USPQ2d at 1921 (citing Old
Cancellation No. 92067984
- 5 -
Nutfield Brewing Co., v. Hudson Valley Brewing Co., 65 USPQ2d 1701 (TTAB 2002),
and Pumpkin, 43 USPQ2d at 1586 n.7).
Considering the first and fourth factors, there does not appear to be any
measurable prejudice to Petitioner should the Board reopen time for Respondents’
main brief on the case,4 nor is there any evidence of Respondents’ bad faith.
Considering the second factor, Respondents’ main brief was due August 17, 2019,
but was not filed until February 20, 2020, six months late – and after the Final
Decision issued. It is now almost nine months since the brief was due. See Pumpkin,
43 USPQ2d at 1588 (“[I]n addition to the time between the expiration of the time for
taking action and the filing of the motion to reopen, the calculation of the length of
the delay in proceedings also must take into account the additional, unavoidable
delay arising from the time required for briefing and deciding the motion to reopen.”).
The impact of even the six-month delay on this proceeding is significant.
Turning to the third factor, Respondents’ excuse is that it was “an unintentional
oversight” that the main brief was “inadvertently missing” from their August 18, 2019
filing. 18 TTABVUE 3, 4. No further explanation or justification is given; we are left
to guess. Nonetheless, it is clear that it was Respondents’ duty to check their filing to
ensure the main brief was of record. See, e.g., Luxco, Inc. v. Consejo Regulador del

4 Contrary to Petitioner’s arguments of “substantial prejudice” caused by “uncertainty” and
“delay,” 19 TTABVUE 5, the prejudice to the nonmovant contemplated under the first Pioneer
factor must be more than the mere inconvenience, delay, or loss of any tactical advantage;
instead, it goes to the ability to litigate the case, e.g., where the movant’s delay has resulted
in a loss or unavailability of evidence or witnesses which otherwise would have been available
to the nonmovant. See Vital Pharm., Inc. v. Kronholm, 99 USPQ2d 1708, 1710 (TTAB 2011);
TBMP § 509.01(b)(1).
Cancellation No. 92067984
- 6 -
Tequila, A.C., 121 USPQ2d 1477, 1506 n.195 (TTAB 2017) (party has responsibility
of ensuring submission entered into record); Weider Publ’ns, LLC v. D&D Beauty
Care Co., 109 USPQ2d 1347, 1350-51 (TTAB 2014) (duty of party making submissions
to ensure they were entered into the trial record), appeal dismissed per stipulation,
No. 14-1461 (Fed. Cir. Oct. 10, 2014). See also TBMP § 110.02(b). Curiously,
Respondents do not explain why they did not look into the matter after Petitioner
pointed out – in two separate filings – that it did not appear that Respondents had
submitted a main brief. Even if Respondents made a previously undetected technical
or computer error by not attaching a main brief to the April 18th filing, they were put
on notice of such mistake by Petitioner’s motion to strike and reply brief on the merits
of the case. Respondents did not act to correct the mistake. We find that Respondents’
failure to submit a main brief on the case was wholly within Respondents’ reasonable
control and was ignored when questioned by Petitioner.
After careful consideration of the Pioneer factors and the relevant circumstances
in this case, we find that Respondents have not demonstrated excusable neglect to
warrant a reopening of their time to file a main brief on the case. Although the first
and fourth Pioneer factors do not weigh against Respondents, the second factor
weighs against them, and the third factor weighs heavily against them. Accordingly,
Respondents’ request to reopen their time to file a main brief is denied.
Had Respondents’ request to reopen been granted and we considered Respondents’
main brief on the case, it would not have affected the outcome of this proceeding.
Respondents’ short brief is devoted solely to the question of whether Petitioner’s
Cancellation No. 92067984
- 7 -
evidence was sufficient to establish common law rights in the pleaded mark.5 18
TTABVUE 7-9. As we explained in the Final Decision, we carefully considered all of
the evidence of record and found that Petitioner had shown by a preponderance of the
evidence that it established prior trademark rights in its pleaded mark. 17 TTABVUE
6-8, 17. We see no error in the Final Decision. Accordingly, the request for
reconsideration is denied.

5 As noted in the Final Decision, Respondents did not submit any testimony or evidence. 17
TTABVUE 5.