United States Court of Appeals for the Federal Circuit 

2006-1148 

(Opposition No. 91124847) 

FIRSTHEALTH OF THE CAROLINAS, INC., 

Appellant, 

v. 

CAREFIRST OF MARYLAND, INC., 

Appellee. 

 

Anthony J. Biller, Coats & Bennett, P.L.L.C., of Cary, North Carolina, argued for 

appellant. Of counsel was David E. Bennett. 

Barth X. DeRosa, Stevens Davis Miller Mosher LLP, of Washington, DC, argued 

for appellee. 

Appealed from: United States Patent and Trademark Office, Trademark Trial 

 and Appeal Board 
United States Court of Appeals for the Federal Circuit

 

2006-1148 

(Opposition No. 91124847) 

FIRSTHEALTH OF THE CAROLINAS, INC., 

 Appellant, 

v. 

CAREFIRST OF MARYLAND, INC., 

 Appellee. 

__________________________ 

DECIDED: February 27, 2007 

__________________________ 

Before BRYSON, GAJARSA, and LINN, Circuit Judges. 

LINN, Circuit Judge. 

 FirstHealth of the Carolinas, Inc. (“FirstHealth”) appeals from a dismissal by the 

Trademark Trial and Appeal Board (“Board”) of its counterclaim to cancel trademarks 

registered by CareFirst of Maryland, Inc. (“CareFirst”). CareFirst of Md., Inc. v. 

FirstHealth of the Carolinas, Inc., Opposition Nos. 91116355, 91124847 (T.T.A.B. Dec. 

2, 2005) (“Dismissal”). Because the Board’s findings are supported by substantial 

evidence, we affirm. 

I. BACKGROUND 

In 1998 and 2001, FirstHealth filed intent-to-use trademark applications—Serial 

Nos. 75/455,343 and 76/222,230, respectively—for the FIRSTCAROLINACARE mark 
used in conjunction with healthcare insurance claims administration and health 

maintenance organizations (“HMOs”). In each instance, CareFirst filed a notice of

opposition alleging a likelihood of confusion with and dilution of its registered 

CAREFIRST mark. The two proceedings were consolidated on March 7, 2003. 

FirstHealth counterclaimed against CareFirst, seeking cancellation of the 

CAREFIRST trademark registrations based on abandonment due to uncontrolled

licensing of the mark and failure to use the mark in connection with services other than 

HMO services. In accordance with 37 C.F.R. § 2.121, the parties entered into a 

stipulation that provided a two-month extension of FirstHealth’s case-in-chief testimony 

period until January 31, 2004. 

On February 26, 2004, FirstHealth filed a motion to reopen its testimony period 

for the purpose of filing notices of reliance to introduce into evidence the discovery

deposition of David Wolf (and related exhibits), certain discovery responses, and 

certified copies of third-party registrations. FirstHealth attributed its late filing to the birth

of counsel’s son, the significant amount of testimony that was taken, counsel’s time 

conflicts with unrelated matters, and a docketing error made by a new paralegal. The 

Board found that FirstHealth failed to demonstrate excusable neglect and denied 

FirstHealth’s motion to reopen the testimony period. Dismissal, slip op. at 13. 

Noting that FirstHealth’s counterclaim arguments relied principally on the Wolf 

deposition—which was not of record—the Board found that FirstHealth had failed to

prove uncontrolled licensing of the mark or failure to use the mark by a preponderance 

of the evidence. Id., slip op. at 29-33. Accordingly, FirstHealth’s counterclaims for 

cancellation were dismissed. Id., slip op. at 33. The Board also dismissed CareFirst’s

2006-1148 2
oppositions, finding that there was no likelihood of confusion with or dilution of its 

registered mark. Id., slip op. at 75. 

Although both parties initially appealed the Board’s decision, CareFirst eventually

moved to dismiss its appeal. That motion was granted on February 28, 2006. This 

case therefore concerns FirstHealth’s appeal from the Board’s denial of its motion to 

reopen the testimony period and the Board’s dismissal of its counterclaim for 

cancellation of CareFirst’s registered trademarks. We have jurisdiction pursuant to 28 

U.S.C. § 1295(a)(4)(B). 

II. DISCUSSION 

A. Jurisdiction 

As a threshold matter, CareFirst argues that this appeal is moot and that we lack 

appellate jurisdiction. Specifically, CareFirst argues that by having dismissed its appeal 

from the opposition decision, the Board’s rulings on the likelihood of confusion with and 

dilution of the CAREFIRST mark have a preclusive effect against CareFirst in any future 

proceedings against FirstHealth for use of the FIRSTCAROLINACARE mark. CareFirst

argues that, as a result, the CAREFIRST mark cannot be asserted against FirstHealth 

and thus there is no potential “damage” as contemplated by 15 U.S.C. § 1064 to 

support FirstHealth’s cancellation counterclaim. 

CareFirst overstates the impact of the Board’s findings. As the Board’s

regulations correctly recognize: “The Board is empowered to determine only the right to 

register. The Board is not authorized to determine the right to use, nor may it decide

broader questions of infringement or unfair competition.” T.B.M.P. § 102.01. The 

Board’s decision does not bar CareFirst from using the CAREFIRST mark or from 

2006-1148 3
asserting that mark in subsequent claims against FirstHealth for trademark infringement 

or unfair competition. See 15 U.S.C. § 1114(1) (registrant may bring infringement 

action against those using or reproducing marks for certain purposes when “such use is

likely to cause confusion, or to cause mistake, or to deceive”). Although the Board’s

findings may preclude CareFirst from re-litigating the narrow issues addressed by the 

Board in the opposition proceeding,1

 the CAREFIRST mark may still be used to cause

“damage” by means that do not involve inquiries into likelihood of confusion or dilution. 

Accordingly, the appeal is not moot, and we turn to the merits of the case. 

B. Excusable Neglect

The primary issue on appeal is whether the Board erred in denying FirstHealth’s 

motion to reopen the testimony period for failure to show excusable neglect, which we 

review for an abuse of discretion. See Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 

1551, 1552 (Fed. Cir. 1991). FirstHealth argues that the Board abused its discretion in 

applying the factors identified by the Supreme Court in Pioneer Investment Services Co.

v. Brunswick Associates Ltd., 507 U.S. 380 (1993), because each factor weighs in favor

of accepting FirstHealth’s late filing. 

The Board’s regulations allow a testimony period to be reopened upon a showing 

of “excusable neglect,” but do not specify what is meant by that term. See 37 C.F.R. 

§ 2.116(a) (inter partes proceedings before the Board are generally governed by the 

 1 We do not decide whether the Board’s likelihood of confusion and dilution 

findings would have a preclusive effect on the same issues in some hypothetical future 

litigation; indeed, they may not. See Jim Beam Brands Co. v. Beamish & Crawford,

Ltd., 937 F.2d 729, 734-36 (2d Cir. 1991) (holding that the issue of likelihood of

confusion in a prior cancellation proceeding was sufficiently different from the issue of

likelihood of confusion presented in subsequent litigation such that the Board’s finding 

did not have preclusive effect). 

2006-1148 4
Federal Rules of Civil Procedure); Fed. R. Civ. P. 6(b)(2). In Pioneer, the Supreme 

Court addressed the meaning of “excusable neglect” in the context of the Federal Rules

of Bankruptcy Procedure. According to the Court, the determination of whether a 

party’s neglect is excusable is: 

at bottom an equitable one, taking account of all relevant circumstances 

surrounding the party’s omission. These include . . . [1] the danger of

prejudice to the [non-moving party], [2] the length of the delay and its

potential impact on judicial proceedings, [3] the reason for the delay,

including whether it was within the reasonable control of the movant, and 

[4] whether the movant acted in good faith. 

507 U.S. at 395. The Board adopted these factors for determining excusable neglect in 

Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582 (T.T.A.B. 1997), and has found the 

third factor—the reason for the delay and whether it was within the movant’s control—to 

be of paramount importance. Old Nutfield Brewing Co., v. Hudson Valley Brewing Co., 

65 USPQ2d 1701 (T.T.A.B. 2002) (citing Pumpkin, 43 USPQ2d at 1586 n.7). 

The Board has discretion to reasonably interpret the meaning of “excusable 

neglect” in the context of its own regulations. See Thomas Jefferson Univ. v. Shalala, 

512 U.S. 504, 512 (1994) (an agency’s interpretation of its own regulation is given 

“controlling weight unless it is plainly erroneous or inconsistent with the regulation”

(quoting Bowles v. Seminole Rock & Sand Co., 325 U.S. 410, 414 (1945))). Although 

the Board was not required to adopt the interpretation of “excusable neglect” articulated 

in Pioneer, doing so was reasonable, and we defer to that interpretation. See Custom

Computer Servs., Inc. v. Paychex Props., Inc., 337 F.3d 1334, 1336 (Fed. Cir. 2003) 

(deferring to the Board’s interpretation of “mistake” in the context of 37 C.F.R.

§ 2.102(b)). 

2006-1148 5
The Board’s decision in Pumpkin is on point. In that case, a party in an 

opposition proceeding filed a motion to reopen its testimony period, arguing that its 

failure to submit evidence during the assigned testimony period was the result of 

excusable neglect. 43 USPQ2d at 1583. The Board found that there was no danger of 

prejudice to the non-moving party and no evidence of bad faith. Id. at 1587-88. The 

Board nevertheless denied the motion based on the second and third Pioneer factors. 

Id. In doing so, the Board noted that because the reason for delay—a docketing error—

was “wholly within the reasonable control of [the movant], the third Pioneer factor 

weighs heavily against a finding of excusable neglect.” Id. at 1587. The Board also

noted that its interest in deterring delay due to “sloppy practice or inattention to 

deadlines” was relevant to the second Pioneer factor and also “weighs heavily against a 

finding of excusable neglect.” Id. at 1588. 

Here, the reasons given for delay were wholly within FirstHealth’s reasonable 

control.2 Indeed, two of the reasons for delay were accounted for in FirstHealth’s 

Stipulated Motion for Enlargement of Testimony and Briefing Periods, which extended

the testimony period to January 31, 2004 “to accommodate [FirstHealth’s] witness’ [sic]

schedules and conflicts with counsels’ schedules.” FirstHealth’s complaint of a 

docketing error is belied by its reference to the January 31, 2004 deadline in a motion it 

filed before the deadline had expired. Finally, to the extent an attorney’s family matters 

caused delay, FirstHealth provides no explanation as to why other authorized 

 2 On appeal, FirstHealth also points to the hospitalization of counsel’s son 

as a reason for delay. That hospitalization did not occur until after the testimony period 

closed and was not raised in FirstHealth’s motion to reopen the testimony period.

Although unfortunate, there is no explanation as to how this event resulted in 

FirstHealth’s failure to submit its notices of reliance before the testimony period expired.

We therefore do not consider it on appeal. 

2006-1148 6
individuals in the same firm could not have assumed responsibility for the case. See

HKG Indus., Inc. v. Perma-Pipe, Inc., 49 USPQ2d 1156 (T.T.A.B. 1998) (finding that a 

failure to explain why other authorized individuals could not have assumed responsibility

after counsel’s death weighed against finding excusable neglect). As in Pumpkin, 

substantial evidence supports a finding that the second and third factors weigh against

excusable neglect. Accordingly, the Board’s finding in this case is consistent with its 

prior practice, and it did not abuse its discretion in denying FirstHealth’s motion to 

reopen the testimony period. 

FirstHealth argues that the undisputed facts of record prove its cancellation 

counterclaims even without the excluded evidence. We find that argument

unpersuasive. Abandonment is a question of fact, and the Board’s findings are 

sustained if supported by substantial evidence. On-Line Careline, Inc. v. Am. Online, 

Inc., 229 F.3d 1080, 1087 (Fed. Cir. 2000). FirstHealth bears the burden of proving 

abandonment by a preponderance of the evidence. Rivard v. Linville, 133 F.3d 1446, 

1449 (Fed. Cir. 1999). Without the properly excluded testimony evidence, the Board’s

finding that FirstHealth failed to prove uncontrolled licensing or failure to use by a 

preponderance of the evidence is supported by substantial evidence. 

III. CONCLUSION 

Because the Board did not abuse its discretion in denying FirstHealth’s motion to 

reopen the testimony period, and because substantial evidence supports the Board’s

finding that FirstHealth failed to prove its cancellation counterclaims, the Board’s 

decision is 

AFFIRMED. 

2006-1148 7
COSTS 

 No costs. 

2006-1148 8