Wednesday, December 30, 2009

Precedential No. 50: TTAB Strikes Opposer's Documents Produced During Testimony Period

Applicant Resort Option won the evidentiary skirmish but lost the war in this opposition to its registration of the mark PANDA TRAVEL in standard character and design form (shown below left) for "travel agency services, namely making reservations and bookings for transportation" [TRAVEL disclaimed]. The Board found that Applicant's mark is likely to cause confusion with the previously-used mark PANDA TRAVEL and the design mark shown on the right, for travel agency services. Panda Travel, Inc. v. Resort Option Enterprises, Inc., 94 USPQ2d 1789 (TTAB 2009) [precedential].

Evidentiary Issue: Was Opposer's document production timely? No, said the Board.

Opposer served some production documents prior to the commencement of its testimony period, but it served additional responsive documents during its testimony period. It then filed a notice of reliance that included some of those additional documents. Applicant objected to the introduction of those additional documents during Opposer's testimony deposition, and it moved to strike the documents during the briefing period.

Opposer contended that it timely served written responses to the production requests, and that there is no requirement that responsive documents be produced concurrently with written responses.

The Board was not pleased, loftily pointing out that "[e]ach party has a duty to make a good faith effort to satisfy the reasonable and appropriate needs of its adversary."

A responding party which, due to an incomplete search of its records, provides an incomplete response to a discovery request, may not thereafter rely at trial on information from its records which was properly sought in the discovery request but was not included in the response thereto (provided that the requesting party raises the matter by objecting to the evidence in question) unless the response is supplemented in a timely fashion pursuant to Fed. R. Civ. P. 26(e).

The Board granted Applicant's motion to strike: "it stretches credulity for opposer to contend that its written responses to the effect that opposer would produce documents responsive to applicant's discovery requests absolves opposer of timely producing other responsive documents in its custody or under its control."

Priority: Applicant established first use of its marks in late 1983. Opposer's testimony established first use of PANDA TRAVEL in June 1981. Applicant argued that Opposer did not use its mark in interstate commerce until 2001, but that was irrelevant to the issue of priority because "an opposer claiming priority may rely on intrastate use."

Likelihood of Confusion: The Board's likelihood of confusion analysis was straightforward. Applicant asserted a laches defense, but the oppositions were timely filed, and so that defense travelled nowhere.

Applicant next tried equitable estoppel, asserting that Opposer learned of Applicant's use of its marks in 1998 but did not object. According to Applicant, it was prejudiced "by its reliance on Opposer's failure to act and its justifiable assumption that Opposer's business was limited to Hawaii or was transitioning to use of PANDA ONLINE, PANDA HAWAII, or one of Opposer's other marks."

The record, however, showed that Applicant and Opposer did have some communications in 2005 regarding a possible co-marketing initiative, but Opposer never indicated that it would not oppose the subject marks and it did not delay in asserting its rights. So there was no basis for an equitable estoppel defense.

Therefore, the Board sustained the opposition.

TTABlog comment: These oppositions were commenced prior to the effective date of the amended TTAB Rules requiring pre-trial disclosure. See Rule 2.121(e). However, even under the new disclosure regime, Opposer would not have been required to identify every individual document that it intended to introduce at trial, but only "a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness."

Text Copyright John L. Welch 2009.


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