Cancellation No. 92047859) WARD E. BENEDICT v. Super Bakery, Incorporated

United States Court of Appeals
for the Federal Circuit
__________________________
(Cancellation No. 92047859)
WARD E. BENEDICT,
Appellant,
v.
SUPER BAKERY, INCORPORATED,
Appellee.
__________________________
2011-1131
__________________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
___________________________
Decided: December 28, 2011
___________________________
WARD E. BENEDICT, of Surrey, British Columbia, Can-
ada, pro se.
D AVID G. O BERDICK , Meyer, Unkovic & Scott LLP, of
Pittsburgh, Pennsylvania, for appellee.
__________________________
Before NEWMAN , LOURIE, and MOORE, Circuit Judges.

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BENEDICT v. SUPER BAKERY 2
NEWMAN , Circuit Judge.
Ward E. Benedict, appearing pro se in this cancellation
proceeding, appeals the decision of the Trademark Trial and
Appeal Board (TTAB or Board) of the United States Patent
and Trademark Office, entering judgment against Mr.
Benedict for failure to comply with discovery orders, and
imposing the sanction of cancellation of his trademark
registration. Benedict v. Super Bakery, Inc., 96 USPQ2d
1134 (TTAB 2010). On appeal of a prior TTAB ruling in this
matter, the Federal Circuit vacated the Board’s default
judgment in view of Trademark Rule 2.127(d), and re-
manded to the Board. Benedict v. Super Bakery, Inc., 367
Fed. Appx. 161 (Fed. Cir. March 3, 2010). On this appeal
from the Board’s renewed decision upon remand, we now
affirm the judgment and the sanction of cancellation.
BACKGROUND
Mr. Benedict is the owner of U.S. Trademark Registra-
tion No. 2,966,255, granted on July 12, 2005 for the mark G
THE GOODYMAN and design, registered in International
Class 29 for meat snacks, namely pepperoni sticks; and in
International Class 30 for cookies, cakes, tarts, rice cakes,
strudels, and donuts.
Super Bakery, Inc. is the owner of U.S. Trademark Reg-
istration No. 2,930,398, granted on March 8, 2005 for the
word mark GOODY MAN in International Class 30 for
bakery products, namely cupcakes. On July 6, 2005, Super
Bakery filed Trademark Application No. 78/664774 in
International Class 30, for registration of GOODY MAN for
bakery goods, namely cupcakes, marshmallow treats, glazed
rings, cookies, donuts, buns, fruit pies, muffins, and snack
cakes. The Examining Attorney rejected the Super Bakery
application on the ground of likelihood of confusion with Mr.

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BENEDICT v. SUPER BAKERY 3
Benedict’s mark G THE GOODYMAN. This rejection is
stated to be on appeal to the Trademark Trial and Appeal
Board.
On July 25, 2007 Super Bakery filed a Petition for Can-
cellation of Mr. Benedict’s Registration No. 2,966,255 for G
THE GOODYMAN, citing grounds of fraud and abandon-
ment. Super Bakery served discovery requests on Mr.
Benedict in January and February of 2008. On February
14, 2008 Mr. Benedict wrote to counsel for Super Bakery,
requesting an extension of the response time to April 18,
2008. Mr. Benedict states that Super Bakery never re-
sponded to this request. Super Bakery states that it re-
sponded by email on February 21, 2008, agreeing to the
requested extension and also requesting additional docu-
ments. Mr. Benedict disputes this statement and points out
that no substantiation of that email has been provided, and
that the parties had been communicating by registered
FedEx, not by email. In all events, no response to the
discovery requests was made by Mr. Benedict.
On April 22, 2008 Super Bakery filed a combined motion
to compel discovery and request for suspension of the pro-
ceedings, citing Mr. Benedict’s non-response to the discovery
requests. Mr. Benedict did not respond to the motion, and
on June 24, 2008 the Board granted the motion as unop-
posed, citing Trademark Rule 2.127(a) (“When a party fails
to file a brief in response to a motion, the Board may treat
the motion as conceded.”). The Board ordered Mr. Benedict
to respond to the discovery requests within thirty days. Mr.
Benedict did not respond.
On August 4, 2008 Super Bakery filed a motion for de-
fault judgment, based on failure to comply with the Board’s
discovery order of June 24, 2008. On August 22, 2008 Mr.
Benedict requested reconsideration of the discovery order of

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BENEDICT v. SUPER BAKERY 4
June 24, 2008, stating that he never received Super Bak-
ery’s April 22 motion to compel discovery, and did not re-
ceive the Board’s June 24, 2008 order granting the motion
until July 14, 2008. On February 11, 2009 the Board, while
observing that there was no proof of service of Super Bak-
ery’s April 22 motion, denied Mr. Benedict’s request for
reconsideration as untimely, citing Trademark Rule 2.127(b)
(request for reconsideration must be filed within one month
of the challenged action). The Board admonished Mr.
Benedict for failure to follow the Trademark Rules and
failure to provide discovery, and held that Super Bakery’s
requests for admissions were granted and deemed admitted
pursuant to Trademark Rule 36(a)(3). However, the Board
denied Super Bakery’s request for default judgment, and
ordered Mr. Benedict to respond to the discovery requests
within thirty days, that is, by March 13, 2009.
On March 12, 2009 Mr. Benedict filed a motion for
summary judgment, requesting denial of Super Bakery’s
cancellation action on the ground that the cancellation issue
was res judicata because of the rejection of Super Bakery’s
Application No. 78/664774 based on likelihood of confusion
with Mr. Benedict’s registered mark G THE GOODYMAN.
Mr. Benedict invoked the procedure of Trademark Rule
2.127(d), which provides:
2.127(d). When any party files . . . a motion for
summary judgment, or any other motion which is
potentially dispositive of a proceeding, the case will
be suspended by the Trademark Trial and Appeal
Board with respect to all matters not germane to
the motion and no party should file any paper which
is not germane to the motion except as otherwise
specified in the Board’s suspension order. If the
case is not disposed of as a result of the motion, pro-

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BENEDICT v. SUPER BAKERY 5
ceedings will be resumed pursuant to an order of
the Board when the motion is decided.
On March 30, 2009 the Board suspended the cancellation
proceeding due to the motion for summary judgment. On
April 16, 2009 Super Bakery filed a motion for sanctions for
failure to provide discovery, requesting default judgment
pursuant to Trademark Rule 2.120(g) (“If a party fails to
comply with an order of the Trademark Trial and Appeal
Board relating to disclosure or discovery, including a protec-
tive order, the Board may make any appropriate order,
including those provided in Rule 37(b)(2) of the Federal
Rules of Civil Procedure.”). Federal Rule 37(b)(2)(A)(vi)
authorizes "rendering a default judgment against the dis-
obedient party." Super Bakery requested cancellation of
Mr. Benedict’s registration of G THE GOODYMAN.
The Board granted the default judgment. The Board
described Mr. Benedict’s motion for summary judgment as
“a likely effort to avoid his discovery responsibilities once
again.” The Board stated that Mr. Benedict’s discovery
obligations were not suspended automatically upon his
filing of the summary judgment motion, but only after the
Board, eighteen days later, ordered the suspension of pro-
ceedings. Thus the Board held that Mr. Benedict had not
complied with the Order to provide discovery responses by
March 13, 2009. The Board observed that Mr. Benedict had
not responded to any of Super Bakery’s discovery requests,
did not comply with the Board’s orders for discovery, and
offered no excuse or explanation for his failure to respond or
comply. The Board entered default judgment against Mr.
Benedict, cancelled his registration of G THE GOODYMAN,
and denied the motion for summary judgment as moot.
Mr. Benedict appealed to the Federal Circuit, arguing
that his filing of the motion for summary judgment sus-

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BENEDICT v. SUPER BAKERY 6
pended all proceedings as of March 12, 2009, including
suspension of any pending discovery requests or discovery
orders, for Rule 2.127(d) states that “no party should file
any paper” after a motion is filed for summary judgment.
He argued that it was incorrect for the Board to have
granted Super Bakery’s motion for discovery sanctions. The
Federal Circuit vacated the Board’s ruling, observing that
the Board “did not discuss the applicability of Rule 2.127(d)
to the facts of this case in its decision.” Benedict, 367 Fed.
Appx. at 163. The court remanded to the Board for consid-
eration of this aspect.
On remand, the Board held that the suspension of pro-
ceedings as required by Rule 2.127(d) is not automatic on
the filing of a motion for summary judgment, but takes
effect only after the Board has issued a suspension order.
The Board explained that the PTO had considered and
declined to adopt an automatic suspension of proceedings,
and referred to the PTO summary of the notice-and-
comment exchange on the rule when it was proposed:
Comment: One organization suggested the section
should be amended to provide that the filing of a po-
tentially dispositive motion automatically suspends
proceedings, without any action by the Board.
Response: The suggested modification has not been
adopted. A variety of motions are potentially dispo-
sitive, including a motion for sanctions in the form
of entry of judgment. Because of the number of
situations in which a party may make a potentially
dispositive motion, it is believed better for the Board
to determine whether proceedings should be sus-
pended based on the situation presented by the par-
ticular case.

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BENEDICT v. SUPER BAKERY 7
Miscellaneous Changes to Trademark Trial and Appeal
Board Rules (Final Rule), 63 Fed. Reg. 48,081, 48,094 (Sept.
9, 1998).
The Board held that until a formal suspension of the
cancellation proceeding was announced by the Board, Mr.
Benedict “was obligated to respond to petitioner’s discovery
requests as ordered by the Board by the March 13, 2009
deadline set by the Board.” Benedict, 96 USPQ2d at 1134.
The Board stated that Mr. Benedict’s filing of the motion for
summary judgment did not “constitute good cause for not
complying with the Board’s order granting discovery sanc-
tions,” and distinguished its discovery order of February 11,
2009 as “very different from the routine obligations arising
from the service of discovery requests by an opposing party.”
Id. The Board acknowledged Mr. Benedict’s pro se status,
but concluded that there was “a strong showing of willful
evasion” of discovery, quoting Trademark Manual of Board
Procedure 527.01(a) (2d ed. Rev. 2004).
The Board also, by footnote, discussed the merits of Mr.
Benedict’s summary judgment motion:
n1. The basis for respondent’s summary judgment
motion was that cancellation of the subject registra-
tion is barred under the doctrine of res judicata by
virtue of the examining attorney’s “decision” in the
final office action issued with regard to petitioner’s
pleaded application Serial No. 78664774 . . . in
which the examining attorney found that there was
a likelihood of confusion between petitioner’s mark
and respondent’s registered mark. . . .
Respondent’s motion is without merit. A deci-
sion by an examining attorney during examination
of an application as to whether there is likelihood of

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BENEDICT v. SUPER BAKERY 8
confusion with another registered mark has no pre-
clusive effect. . . .
96 USPQ2d at 1135 n.1 (citing West Florida Seafood, Inc. v.
Jet Rests., Inc., 31 F.3d 1122, 1127 (Fed. Cir. 1994)). The
Board reinstated its default judgment against Mr. Benedict,
and cancelled his trademark registration. This appeal
followed.
D ISCUSSION
Mr. Benedict argues that the Board misinterpreted and
misapplied Trademark Rule 2.127(d), which is unqualified
in its requirement that when a summary judgment motion
is filed, the case “will be suspended by the Trademark Trial
and Appeal Board . . . and no party should file any paper
which is not germane to the motion except as otherwise
specified in the Board’s suspension order.” Mr. Benedict
states that he complied with the Rule in accordance with its
terms. He states that the Board has now restated the Rule,
and that it is unfair to apply this restatement retroactively
to him, for he relied on its plain and clear terms.
We agree with Mr. Benedict that Rule 2.127(d) does not
clearly present the interpretation with which the Board now
endows it. Only if one reads the PTO “comment” does it
become clear. The PTO “comment” is not stated in the rule
as adopted; the Rule does not state that no suspension shall
occur until the Board separately acts to impose it, and that
any filing deadlines will remain in force despite the Rule’s
prohibition on filing. The Rule does not state that the
requirement that no papers should be filed does not come
into effect when the summary judgment motion is filed,
despite the Rule’s prohibition. This ambiguity does not
support the extreme sanction of default judgment.

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BENEDICT v. SUPER BAKERY 9
However, the default judgment is well supported with-
out this event. There had been two years of failure to com-
ply with discovery requests and orders. The Board
discussed Mr. Benedict’s repeated non-compliance with
Super Bakery’s discovery requests, as well as his non-
compliance with the Board’s orders concerning discovery.
Although the Board criticized the “meritless” motion for
summary judgment as “an effort to further obstruct peti-
tioner’s rights to obtain discovery under the Board’s rules,
the Board’s order compelling discovery, and the Board’s
order granting discovery sanctions,” 96 USPQ2d at 1136,
the Board’s finding that “[t]here is no reason to assume
that, given additional opportunities, petitioner will fulfill his
obligations as a party to the proceeding,” id., is supported by
the entire experience of this case. The question is whether
it was an abuse of discretion for the Board to enter default
judgment. See Merker Counter Co. v. Central Counter Co.,
310 F.2d 746 (CCPA 1962) (“Rule 2.132(b) gives the board
discretionary powers to grant or deny motions for judgment
thereunder.”).
Due process standards guide and limit the acts and pro-
ceedings of agency tribunals. See, e.g., Transp. Leasing Co.
v. Dep’t of Employment Servs., 690 A.2d 487, 489 (D.C. 1997)
("an individual is entitled to fair and adequate notice of
administrative proceedings that will affect his or her rights,
in order that he or she may have an opportunity to defend
his or her position"). In turn, the agency has the authority
to assure diligent administration of the rights within its
charge, by establishing and enforcing reasonable rules and
procedures for disciplining non-compliance with its rules.
Trademark Rule 2.120(g) provides that “if a party fails to
comply with an order of the Trademark Trial and Appeal
Board relating to disclosure or discovery . . . the Board may
make any appropriate order, including those provided in
Rule 37(b)(2) of the Federal Rules of Civil Procedure . . ."

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BENEDICT v. SUPER BAKERY 10
The Federal Rules implement the inherent power of
courts to prevent abuses of the judicial process. In Webb v.
Dist. of Columbia, 146 F.3d 964, 971 (D.C. Cir. 1998) the
court enumerated three potential bases for dismissal or
default judgment as a sanction for abuse:
First, the court may decide that the errant party's
behavior has severely hampered the other party's
ability to present his case—in other words, that the
other party has been so prejudiced by the miscon-
duct that it would be unfair to require him to pro-
ceed further in the case. Second, the court may take
account of the prejudice caused to the judicial sys-
tem when the party's misconduct has put an intol-
erable burden on a district court by requiring the
court to modify its own docket and operations in or-
der to accommodate the delay. And finally, the
court may consider the need to sanction conduct
that is disrespectful to the court and to deter similar
misconduct in the future.
Id (citations and internal quotation marks omitted). The
court counseled restraint, and thorough review, before the
extreme sanction of default judgment is rendered, and
counseled consideration of whether a lesser sanction may be
warranted. Id. Similar remedy, and restraint, applies to
agency tribunals.
Default judgment may be warranted in cases of repeated
failure to comply with reasonable orders of the Trademark
Board, when it is apparent that a lesser sanction would not
be effective. See MHW Ltd. V. Simex Aussenhandelsgesell-
schaft Savelsberg KG, 59 USPQ2d 1477 (TTAB 2000) (”The
law is clear that if a party fails to comply with an order of
the Board relating to discovery, including an order compel-
ling discovery, the Board may order appropriate sanctions

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BENEDICT v. SUPER BAKERY 11
as defined in Trademark Rule 2.120(g)(1) and Fed. R. Civ. P.
37(b)(2), including entry of judgment.”); Baron Philippe de
Rothschild S.A. v Styl-rite Optical Mfg. Co., 55 USPQ2d
1848, 1854 (TTAB 2000) (“Default judgment is a harsh
remedy, but it is justified where no less drastic remedy
would be effective, and there is a strong showing of willful
evasion.”).
The Board found that Mr. Benedict had continually
failed to comply with Board orders, and had hampered
reasonable procedures appropriate to resolution of this
trademark conflict. Mr. Benedict offered no explanation of
why no discovery responses had been made over the two
years of requested discovery. The possession of a trademark
registration places a routine obligation on the possessor to
participate in reasonable procedures concerning rights or
interests affected by that registration. On the entirety of
the record, the Board’s orders were reasonable, and within
its authority in seeking to advance the proceedings. The
remedy of default judgment was within the Board’s discre-
tion in view of Mr. Benedict’s repeated failures to comply
with established and reasonable procedures orders. The
default judgment in this cancellation proceeding is affirmed.
AFFIRMED

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