Wednesday, February 06, 2008

Precedential No. 2: TTAB Issues Sanctions For Discovery Abuses

Whenever the TTAB issues a precedential decision, I try to discern what point the Board is trying to make. In this, the second precedential decision of 2008, the message I get is this: don't mess with Interlocutory Attorney Andrew Baxley. Opposer HighBeam Marketing learned that lesson the hard way when it failed to comply with a Board order compelling additional discovery responses. Opposer also made the mistake of refusing to allow its expert witness to testify pursuant to a court subpoena unless Applicant put up her fees in advance. HighBeam Marketing, LLC v. Highbeam Research, LLC, 85 USPQ2d 1902 (TTAB 2008) [precedential].

After the Order was issued, Opposer diddled and daddled until Applicant filed a motion for sanctions. With its opposition to the motion, Opposer produced an additional 1000 pages of documents, but that was too late to qualify as compliance with the Board's order. As a result, the Board issued sanctions: Opposer was precluded from using as trial evidence any information and documents relating to actual confusion, relatedness of the parties' services, and overlap of purchasers, that were in Opposer's possession, custody, or control but were not produced prior to the filing of the sanctions motion.

As to the expert witness subpoena, Opposer's counsel refused to allow the witness to testify unless Applicant advanced funds sufficient to cover seven hours of her time along with travel expenses. Neither Opposer nor the witness sought to have the issuing court quash the subpoena.

The Board found that Opposer's counsel "clearly prevented the deposition from proceeding by insisting on resolution of a fee dispute prior to a deposition." [The Board pointed out in footnote 4 that FRCP 26(b)(4)(C) calls for the payment of a reasonable fee, but that rule was not applicable to TTAB proceedings when the subpoena was issued.] The fee dispute "could have been resolved in the district court that issued the subpoena after the taking of the deposition."

The Board found a sanction necessary, and it precluded Opposer from using as trial evidence the survey prepared by the expert, any summary report of the survey results, and any testimony of the witness.

Finally, the Board noted Opposer's lack of cooperation in scheduling the depositions of three of Opposer's employees, and it ordered Opposer to produce those employees for deposition within 30 days.

TTABlog comment: The sanction regarding the expert witness seems a bit harsh. Opposer didn't completely refuse to produce the witness. It just wanted the fees up front. Apparently from what the Board is saying (not too clearly), FRCP 26(b)(4)(C) now does apply in Board proceedings. So why not just give the Opposer a strong warning and give it 30 days to produce the witness, with the fee question to be determined later? Was its position that outrageous?

And by the way, is there any limit to the Board's "inherent authority to sanction"?

Text Copyright John L. Welch 2008.


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