Precedential No. 11: TTAB Hammers Cancellation Respondent Over Inadequate Discovery Responses

In olden days, one could think of a TTAB inter partes proceeding as a lower cost, less complicated alternative to filing a trademark infringement action, but not any more. In this precedential order, the Board raked Respondent Arroware over the coals for failing to properly and fully respond to Petitioner HP's discovery demands. In line with the Board's open door policy on discovery, the Board tossed out many of respondent's objections to HP's interrogatories and document requests and required respondent to provide a (typically useless) attorney-client privilege log. Hewlett Packard Enterprise Development LP v. Arroware Industries, Inc., 2019 USPQ2d 158663 (TTAB 2019) [precedential].

HP sought cancellation of a registration for the mark MY APOLLO for peer-to-peer software for sharing data and files, claiming abandonment. Dissatisfied with Arroware's discovery responses, HP moved to compel.

Respondent Arroware objected to the number of interrogatories and document requests as excessive (i.e., more than 75, including subparts). However, rather than serving a general objection under Rule 2.120(d), Arroware made the mistake of serving objections and responses; it then asserted that it should not be required to supplement its responses because it "responded to a proper number." The Board, however, ruled that Arroware had waived its right to object on this numerical ground.

HP also argued that Arroware's objections were mere "boilerplate" and did not explain how HP's discovery requests were defective. The Board pointed out that an objecting party "may not rely on conclusory statements such as "overly broad, unduly burdensome, vague or ambiguous, or not proportional to the need of the case." The party must "detail with specificity the reasons for its objections." [Aren't the reasons often self-evident? - ed.]. Also, a responding party must state "clearly and affirmatively whether it has searched for and identified, but withheld, any documents responsive to any document request based on the objections it lodged in response to any of [the other party's] document requests." The Board therefore overruled Arroware's "boilerplate objections."

Arroware managed to win one battle: observing that neither FRCP 36 nor the Board's rules require a party to explain the basis for an admission or denial, the Board deemed "impermissible" HP's use of a "blanket interrogatory or document request" that seeks documents or information forming the basis of Arroware's responses to requests for admission.  However, somewhat paradoxically, the Board okayed without explanation a blanket document request calling for all documents pertaining to Arroware's interrogatory responses. [Although it is not crystal clear, it appears that an interrogatory or document request seeking the basis for a single admission or denial is allowed; i.e., only the "blanket" version is disallowed. - ed.].

Next, the Board considered Arroware's invocation of FRCP 33(d) in relying on its business records in response to some of HP's interrogatories, rather than providing narrative responses. The Board concluded that Arroware had failed to meet the applicable requirements for invoking this rule: it (1) failed to specify why providing written responses would impose a significant burden; (2) it failed to specify in sufficient detail where the answers to the interrogatories can be ascertained. The fact that HP's document requests called for the same documents was deemed irrelevant. And so the Board ordered Arroware to provide "sworn, complete, and narrative responses" to these interrogatories.

Finally, HP demanded that Arroware provide supplemental responses to its document requests that meet the "full scope of the requests." Arroware's responses stated that it would produce documents located after a reasonable search. Not good enough, said the Board. "[A] party must state whether or not it has responsive documents in its possession, custody or control and, if it does, state that the documents will be produced by a specified date or they are being withheld, based on a claim of privilege or a specified objection." If privilege is claimed, a privilege log must be provided.

The Board ordered Arroware to "fully complete its search and production" and to fully meet the scope of the document requests. Arroware is not required, however, to identify all U.S. customers for the preceding three years, as HP demanded. The Board ordered Arroware to identify two newly-registered U.S. users per year. [How is the identification of customers a proper response to a request for documents? - ed.].

The Board then set various deadlines for compliance with its order, and reset the remaining dates for discovery, briefing, and trial.

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TTABlog comment: Nothing generates more expense and wastes more time than disputes over discovery. Nor is there a more effective weapon to beat the other side into submission than aggressive discovery that requires the responding party to turn itself inside out. The easy position for the Board to take is to require a party to "produce everything." As long as that's the case, TTAB practice will continue to be discovery-centric, and there is little that is more uninteresting than dealing with and arguing about discovery issues.

Text Copyright John L. Welch 2019.