Tuesday, October 21, 2008

Precedential No. 43: Absent TTAB Order, No Sanction for Failure to Provide Initial Disclosures

The TTAB denied Applicant's motion for sanctions for Opposer's failure to make initial disclosures. The Board ruled that the proper course was for Applicant to file a motion to compel and then, if Opposer did not comply with a resulting Board Order, to seek sanctions. Kairos Institute of Sound Healing, LLC v. Doolittle Gardens, LLC, 88 USPQ2d 1541 (TTAB 2008) [precedential].

Rule 2.120(a)(2) requires that initial disclosures be made on or before thirty days after discovery opens. Here, Opposer Kairos Institute failed to provide initial disclosures by the appointed date, and Applicant Doolittle filed a motion for sanctions (including dismissal of the opposition). [Three days later, Opposer served its initial disclosures.]

Doolittle claimed that dismissal was an appropriate sanction under Rule 2.120(g)(1). However, the Board noted, that rule applies if a party fails to comply with a Board order relating to disclosure. Rule 2.120(g)(2) authorizes sanctions under (g)(1) if a party fails to make initial disclosures and informs the other party that such disclosures will not be made. Here, (g)(2) did not apply because Kairos did not say it would not provide the disclosures (and in fact, it did provide them).

The question then became whether Kairos failed to comply with a Board order under 2.120(g)(1). The Board said no. Initial disclosures are essentially treated the same as discovery responses. "A motion for sanctions is only appropriate if a motion to compel these respective disclosures has already been granted."

Although the notice of institution sets a deadline for initial disclosures, "it does not constitute an 'order of the Trademark Trial and Appeal Board relating to disclosure' within the contemplation of Trademark Rule 2.120(g)(1). A notice of institution is merely a scheduling order, whereas the type of order that is contemplated as a prerequisite to a motion for sanctions under Trademark Rule 2.120(g)(1) is an order granting or denying a motion to compel or a motion for a protective order."

The Board therefore denied Doolittle's motion for sanctions.

Text Copyright John L. Welch 2008.


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