Monday, December 12, 2005

TTAB's Citable "VIGNETTE" Decision Encourages Discovery Gamesmanship

In citable decision number 15 for the year 2005, the TTAB took a rather surprising stand on the consequences of a party's failure to provide requested discovery. It denied Opposer Vignette Corporation's request for reconsideration of the Board's denial of a summary judgment motion predicated on a claim that Applicant Steven Marino did not have a bona fide intention to use the mark VIGNETTE EDITORIAL for post-production video services when he filed the opposed application. Vignette Corp. v. Marino, 77 USPQ2d 1408 (TTAB 2005).

In its summary judgment motion, Vignette pointed to its discovery requests seeking documents that corroborate Marino's purported bona fide intention to use his mark in commerce. In response, Marino stated that there were "no responsive, nonprivileged documents" as of the date of the response, but that he would produce such documents "if and when they come into his possession, custody, or control."

Vignette also pointed to Marino's interrogatory response to a question asking for the basis for his claim of a bona fide intention. Marino responded by referring Opposer to "Applicant's having signed a declaration to that effect in connection with filing the application."

In opposing the summary judgment motion, however, Marino submitted a declaration attesting to various of his activities as evidence of his bona fide intention: making a music video for a band, creating a website, and soliciting potential customers.

The Board denied Vignette's summary judgment motion on the ground that Marino's declaration raised a genuine issue of material fact. The Board also cautioned Marino that he would be precluded at trial from relying on evidence not produced in response to Vignette's discovery requests, relying on Presto Products, Inc. v. Nice Pak Products, Inc., 9 USPQ2d 1895 (TTAB 1988).

In its reconsideration request, Vignette relied on that same case in arguing that the Marino declaration "asserts new facts that were not furnished with applicant's responses to opposer's discovery requests and, therefore, it was improper for the Board to rely on those assertions [in] denying opposer's motion for summary judgment."

The Board analyzed Presto Products in view of FRCP Rule 37(c)(1), which provides that a party who "without substantial justification" fails to disclose requested information or to amend a prior discovery response is not, unless the failure was harmless, permitted to use the evidence at trial, at a hearing, or on a summary judgment motion.

Presto Products involved the introduction of evidence on a summary judgment motion, which evidence had been withheld during discovery based on a claim of attorney-client privilege. The Board there granted a motion to strike an affidavit containing previously undisclosed facts.

The situation here, according to the Board, is distinguishable because there the withholding was unequivocal.

"Thus, in cases where the offending party had absolutely refused to disclose the previously withheld evidence (as in instances such as Presto Products where the attorney-client privilege had been asserted) it is entirely appropriate to sanction the offending party by precluding it from relying on the newly disclosed evidence on summary judgment."

Again according to the Board, Applicant Marino "merely said that such documents were unavailable, and/or referred to his declaration in his application.... This case does not involve an outright statement that the information would not be provided, but rather a failure to supplement discovery responses."

"it would be unduly harsh to impose the preclusion sanction under Rule 37(c)(1). This is particularly true given that discovery responses may be supplemented at any time, even during trial, or after receipt of a summary judgment motion."

The Board limited Presto Products to its particular facts: "that a party cannot introduce evidence on summary judgment that it affirmatively withheld during discovery."

The Board therefore denied the request for reconsideration.

TTABlog comment: If the Board really is concerned about TTAB delay, how can it justify this decision? Isn't this ruling a green light for parties to withhold discovery? Shouldn't the Board have required Applicant Marino to provide "substantial justification" for his withholding, or show that no harm was done? Isn't that required by Rule 37(c)(1)?

How much time and energy was wasted in the preparation and consideration of this summary judgment motion, which presumably would never have been filed if Mr. Marino had provided proper responses in the first place? This decision merely encourages the kind of gamesmanship that is a frequent cause of TTAB delay.

At a minimum, based on this ruling, the savvy TTAB practitioner should surely avoid making any "unequivocal" statements about the client's lack of documents or information.

Text Copyright John L. Welch 2005.


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