Tuesday, January 05, 2010

Precedential No. 51: TTAB Denies Sanctions But Orders Parties to Hold Discovery Conference with Board Participation

One of the cornerstones of the TTAB's 2007 rule changes is the requirement of Rule 2.120 that the parties hold a discovery conference at the outset of each inter partes proceeding. The Board takes that requirement very seriously, as demonstrated in its ruling in Promgirl, Inc. v. JPC CO., LTD., 94 USPQ2d 1759 (TTAB 2009) [precedential].

Opposer Promgirl, Inc. filed a motion for sanctions or, alternatively, for an order compelling Applicant JPC to participate in a Rule 2.120 discovery conference. The parties had exchanged some e-mails regarding settlement, but Applicant refused to cooperate when Opposer sought to hold the required discovery conference.

The Board made the obvious observation that, even though the parties discussed settlement, they did not address all the issues outlined in FRCP 26 and in the Board's institution order:

As the institution order makes clear, the parties are required to discuss their plans relating to disclosures, discovery, and trial evidence unless they are successful in settling the case. This includes discussion of the possibility of utilizing the Board’s Accelerated Case Resolution ("ACR") procedure (see information posted at the Board’s website, at http://www.uspto.gov/trademarks/process/appeal/index.jsp), possible modification of the Board's standard protective order, limitations on disclosures or discovery, the willingness of the parties to enter into stipulations of fact, and the willingness of the parties to enter into stipulations to utilize efficiencies for the introduction of evidence at trial, all as explained in the Board's standard institution order.

The Board pointed out that the parties have a mutual obligation to hold the discovery conference. Here, Applicant made "no overture of its own to schedule a conference ... and failed to cooperate in the scheduling of a conference." On the other hand, "Opposer is not without blame." According to the Board, Promgirl should have made an earlier attempt to schedule a conference and should have followed up earlier with regard to its settlement proposal.

Moreover, either party could have requested Board participation in the discovery conference, under Rule 2.120(a)(2).

Therefore, the Board denied Opposer's request for sanctions and ordered that the parties hold a discovery conference with Board participation on or before January 29, 2010.

TTABlog comment: I think the Board was a bit harsh on Promgirl. If Applicant was acting like an uncooperative jerk, why was Opposer supposed to keep inviting it onto the dance floor?

Text Copyright John L. Welch 2010.


At 9:23 AM, Anonymous Anonymous said...

I agree the Board was harsh on Opposer. It was Applicant who did not comply with the Rules. Further, I find the Board's comments regarding "better practices" troublesome. Does the Board see one way to handle cases and that should be used in all cases regardless of the circumstances?

At 11:14 AM, Blogger John L. Welch said...

If the Board really wanted to send a message as to how important the discovery conference is, perhaps it should have sustained the opposition as a sanction. Stressing the "mutual obligation" of the parties doesn't seem appropriate here when Applicant clearly violated the Rule. I don't know anyone who starts requesting a date for the discovery conference weeks in advance. In fact, I usually wait until a week or so before the deadline, and I find that to be fairly common practice.

At 2:14 PM, Anonymous Anonymous said...

This case seems to almost invite a party to always request board participation. That would appear to get you off the hook and place the burden on the Board to get in touch with the opposing party. The Board has a good oultline it goes through when you get board participation and there is less opportunity for arguing in a conference call.


Post a Comment

<< Home