Thursday, February 07, 2008

Precedential No. 3: NFL Thrown for a Loss as TTAB Denies Request to Extend Discovery

Some people think the NFL is overly aggressive in enforcing its trademark rights. Will its institution of this case bolster that impression? The NFL is opposing (on 2(a), 2(d), and dilution grounds) the mark shown below left, for motorcycle fender side cover panels, based upon the League's ownership of the mark shown on the right, for football services, clothing, and various other goods. As the discovery clock wound down in this proceeding, the NFL sought to extend the discovery period, but the Board denied the motion because the NFL's predicament was its own darn fault. National Football League v. DNH Management, LLC, 85 USPQ2d 1852 (TTAB 2008) [precedential].

Although a party is supposed to show "good cause" for extending the discovery period, the Board is usually liberal in granting an extension "so long as the moving party has not been guilty of negligence or bad faith and the privilege of extensions is not abused." But if you wait too long ....

Having made no effort to take discovery, the NFL waited until the twelve days before the close of the discovery period before filing a motion to extend. The Board acknowledged that this was the first request by the NFL to extend any date, and that there was no evidence of bad faith. Nevertheless, the Board found that the NFL "have not made the minimum showing necessary to establish good cause to support an extension of the discovery period for any length of time."

The NFL claimed that it delayed taking discovery because of settlement negotiations, but it admitted that Applicant never responded to any of its "efforts at communication." In it brief, Applicant stated that it never had any interest in settlement and at no point engaged in or encouraged any discussions.

The Board observed that the NFL should have "reasonably concluded" that it needed to move forward with discovery. "Clearly, the opposers' claimed need for an extension of discovery is the product solely of opposers' unwarranted delay in initiating discovery." Consequently, the Board denied the requested 90-day extension.

The Board also quashed a deposition notice served by the NFL on the last day of discovery, since discovery depositions must be both noticed and taken during the discovery period.

TTABlog comment: What's the lesson here? Losers sit on their hands, winners run to daylight! Or something like that.

Text Copyright John L. Welch 2008.


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