Precedential No. 37: Judge Rogers Beams as Section 2(d) Case is Tried Without Discovery

The Board dismissed a Section 2(d) opposition to registration of the mark ONE FAB FIT for women's foundation garments, undergarments, and intimate apparel, finding the mark not likely to cause confusion with the mark ONE TRUE FIT, registered for outwear, including coats shorts, skirts, jeans, and pants. Opposer Lee failed to establish that the goods are related, and the Board found the marks "dissimilar when viewed in their entireties." In a concurring "opinion," Judge Rogers noted that this case was tried without the benefit of discovery (neither party answered the other's requests), suggesting that "rather limited and focused" discovery may be all that is necessary in a Board proceeding. H.D. Lee Co. v. Maidenform, Inc., 87 USPQ2d 1715 (TTAB 2008) [precedential].


The Board first dealt with evidentiary issues, including Applicant Maidenform's objection to all the documents introduced by Opposer Lee on the ground that they were not produced in response to discovery requests. Maidenform noted that Lee did not file a motion to compel. The Board sided with Lee, pointing out that opposer, by not responding, "in no way led applicant to believe that there were no documents responsive to its requests." In short, if Maidenform wanted documents, it should have filed a motion to compel.

Moreover, Maidenform did not respond to Lee's discovery requests, yet it introduced evidence that was "purportedly requested in opposer's discovery." [The TTABlog hesitates to use the phrase "tit for tat" here].

Turning to likelihood of confusion, the Board first considered the similarity and nature of the goods, finding the case "long on argument and short on evidence." Lee submitted eight third-party registrations for clothing products that are identified in both Lee's registration and the opposed application. The Board, however, found this evidence "not particularly compelling" in light of the differences in the clothing products and Opposer's testimony that the parties are not competitors and that the goods are not related. Lee contended that undergarments and outerwear are considered complementary products and my be purchased as part of an ensemble, but the Board declined to take judicial notice of "women's shopping practices."

It found that the parties' goods travel through the same channels of trade and are purchased by the sames classes of consumers, a factor favoring Lee. Because the identified goods include inexpensive items bought by ordinary consumers, the conditions of sale also favor Lee.

As to the strength of Opposer's mark, however, the Board noted that ONE TRUE FIT is a sub-brand that is never used as a stand-alone mark, i.e., never without the LEE trademark. Moreover, ONE TRUE FIT has a suggestive connotation and therefore the mark is not entitled "to the same scope of protection as arbitrary marks." In sum, Lee failed to demonstrate that ONE TRUE FIT is a widely recognized mark entitled to broad protection.

As to the marks, "there is a difference in nuance that creates a different commercial impression," one being formal and the other more "slangy." Coupling this observation with the highly suggestive nature of ONE TRUE FIT, the Board found the marks to be dissimilar.

Balancing all the factors, the Board ruled that the marks not likely to be confused, and it dismissed the opposition.

Judge Gerard F. Rogers
In his concurrence, Judge Rogers took the opportunity to point out that this case proceeded under the old rules, which required "no disclosures." He asserts that:

"The fact that this case was tried and defended without either disclosures or discovery responses places it in stark contrast to the many Board cases in which traditional discovery processes have often unnecessarily complicated proceedings."

He observed that "the absence of discovery responses caused no significant prejudice to either party's ability to marshal support for the claim or defense it had the responsibility to support and prove." [Emphasis in original].

Judge Rogers, chief architect of last year's TTAB rules overhaul, does not contend that "there is no place for discovery in a Board proceeding." But if parties want to avoid "the expenditure of resources that often accompanies entry into a district court," they "must accept that discovery practice in Board proceedings can and should be rather limited and focused."

TTABlog comment: Is Judge Rogers concurrence really an "opinion," or a lecture? I don't see how it has much to do with deciding the case at hand. Wouldn't his comments be more appropriate in an academic article than in a Board decision?

A reader points out that, although Judge Rogers claims that neither party was prejudiced by the lack of discovery, both parties failed to prove their main contentions. Maybe discovery would have helped.

Judge Rogers has, in my opinion, a misguided view that parties (and their counsel) actually want each case to proceed to a prompt Board decision. I think most parties simply want to win the case, and if they can use discovery as a tool to force the other side to capitulate at an early stage, they will do so. They are not that interested in helping the other side via voluntary or informal disclosures; what they are interested in is victory

Text Copyright John L. Welch 2008.