Precedential No. 1: Applying "Proportionality," TTAB Limits Number of Discovery Requests to Avoid Abuse
In this cancellation proceeding challenging a registration for the mark BEAUTIFUL PEOPLE for various clothing items, Petitioner Joshua Domond served 872 requests for admission, 247 document requests, and 26 interrogatories in the first two days of the discovery period. Respondent 37.37, Inc. moved for a protective order under FRCP 26(c), requesting that the Board limit the discovery items to a reasonable number. The Board found the discovery requests to be "excessive, unduly burdensome and harassing in number and content" when viewed in light of the issues raised in the proceeding, and it granted the motion, limiting the total number of discovery requests to 150, absent prior Board review and approval of additional requests. Joshua Domond v. 37.37, Inc., 113 USPQ2d 1264 (TTAB 2015) [precedential].
Petitioner Domond alleged fraud, abandonment, and likelihood of confusion. He also claimed that the subject registration was void ab initio because Respondent's specimen failed to show use in commerce. [That last claim, however, is not a proper ground for cancellation; nonuse would be the appropriate assertion].
The Board pointed out that the parties to a proceeding are generally allowed to seek discovery as they deem necessary, but the Board does not permit unlimited discovery that will harass and oppress the adversary.
When it comes to serving discovery, the parties are expected to take into account the principles of proportionality with regard to discovery requests such that the volume of requests does not render them harassing and oppressive and are expected to consider the scope of the requests as well as to confer in good faith about the proper scope of discovery so as to minimize the need for motions.
The Board found that Respondent had, through a brief email exchange with Petitioner Domond, made a good faith effort to resolve the dispute. It is usually improper to respond to a discovery request by filing a motion for a protective order [why not just object? - ed.], except in cases "where it is readily apparent that propounded discovery requests are so oppressive as to constitute clear harassment."
As is clear from the number of discovery requests within the context of this proceeding, as well as their content, Petitioner has failed in his duty to seek only such discovery as is proper and relevant to the issues in this proceeding.
The Board noted that a number of Petitioner's discovery requests were not "appropriately tailored to elicit discoverable information in this proceeding." For example, requests seeking all documents from the last seventeen years were unduly broad. Others sought irrelevant information, like stock prices and projected income. Still others improperly called for legal citations for Respondent's position and a summarized analysis of the similarities and/or differences in the parties’ marks, when Petitioner is responsible for developing its own case and "and cannot demand that Respondent prepare a comparison report, undertake legal research, or disclose its legal strategies." Petitioner's requests for the identification of witnesses was not only premature but unnecessary in view of the Board’s disclosure requirements.
And so the Board granted the motion for a protective order, and it warned Petitioner that further uncooperative or harassing behavior may result in the imposition of sanctions, possibly including the entry of judgment.
Read comments and post your comment here
TTABlog note: See TBMP Section 414, "Selected Discovery Guidelines," which lists a number of "discovery determinations, with case citations, relating to the discoverability of various matters."
Text Copyright John L. Welch 2015.