Wednesday, February 24, 2010

Precedential No. 6: TTAB Spanks Opposer Who Failed to Serve Initial Disclosures

It seems that any decision involving a violation of the Board's "new" rules (new since 2007) will be labeled "precedential." Well, here's another one. Opposer Dating DNA failed to serve its initial disclosures and so, when it served written discovery on Applicant Imagini, the latter refused to answer, pointing to Rule 2.120(a)(3): "A party must make its initial disclosures prior to seeking discovery...." Because the discovery period had closed, Opposer then moved to re-open discovery and sought an Order compelling Imagini to answer the discovery. No dice, said the Board, procedurally. Dating DNA, LLC v. Imagini Holdings, Ltd., 94 USPQ2d 1889 (TTAB 2010) [precedential].

Dating DNA feebly claimed that its failure to serve initial disclosures was an "oversight" due to "some clerical error," and that the error was harmless. It accused Imagini of trying to "game the system." [What one party calls "gaming the system" is often what the other calls "just following the Rules" - ed.] Opposer further whined that Imagini "should not have waited until after discovery closed to inform opposer that it would not be responding to opposer's discovery requests." Imagini pointed out that the written discovery requests were served on June 9, 2009, that discovery closed on July 12, 2009, and that its refusal to answer was served on Dating DNA on July 14, 2009, the due date for responses.

Motion to Re-open Discovery: It probably comes as no surprise that the Board ruled in favor of Imagini on this motion. The Board pointed out that Dating DNA must show "excusable neglect" in order to justify re-opening. Noting that Opposer delayed in serving its initial disclosures until July 29, 2009, the Board found that it had failed to establish "that its delay was outside of its reasonable control" and that the length of the delay was meaningful. "These factors easily outweigh the relative lack of prejudice to applicant."

Motion to Compel: The motion to compel was likewise denied. "That applicant did not inform opposer of its position until two days after discovery closed is not necessarily a function of applicant attempting to 'game the system,' but instead a function of opposer choosing to serve its discovery requests late in the discovery period."

Motion for Consolidation: The Board granted Dating DNA's motion for consolidation of these two oppositions, which involve "identical parties and similar marks and issues." The oppositions concern Imagini's applications to register the marks VISUALDNA and VISUALDNA SHOPS for various services. In the latter case, discovery remains open until August 5, 2010, and so all was apparently not lost for Opposer vis-a-vis its discovery efforts.

Tip from the TTABlog: Read the rules.

Text Copyright John L. Welch 2010.


At 12:52 PM, Anonymous Sharon Sessions said...

What one blogger calls "whining" is often what another would call "pleading your case."

This could actually backfire on Imagini, since they'll continue to use the potentially-infringing mark, building their brand upon a term which they could easily lose in the end. Imagini would have been much wiser to simply given up the discovery voluntarily rather than see the cases consolidated and pushed out another year. Why Imagini would want to prolong the uncertainty around their brand is a mystery to me. If I were building a brand, I'd want to know ASAP if I am going to have to change my name or not. All Imagini did was add one more year of lost brand marketing and more potential damages (should they be found to be infringing). Ouch.


At 1:31 PM, Blogger John L. Welch said...

I stand by my "whining" comment.
Perphaps Imagini didn't expect consolidation, since discovery was closed in one case but had just opened in the other.

BTW: Imagini's applications are ITU's, so maybe they are not in a hurry for a decision. Also, are the marks that close that Imagini should fear an infringement charge?

At 2:05 PM, Anonymous Danny H. Zannoe said...

I agree that it appears that Dating DNA was just "whining" and the court properly ruled.

However, if they are they are both in the same classification (social networking), VisualDNA does appear to be "confusingly similar" to Dating DNA, because DNA appears to be unique and non-descriptive to social networking. From a business perspective, it makes one wonder why a company would risk building their brand on a mark that they don't own. The chance, however small it my be, in having to change that brand down the road and the potential damages that they could incur seems to be a Rick Factor that a prudent company would avoid.

At 2:39 PM, Anonymous Sharon Sessions said...

Imagini has already done quite a bit of marketing and branding for "Visual DNA." Google shows 41,400 pages for "Visual DNA." ("Dating DNA" produces 81,800 pages, even though they're largely an iPhone app, not website.) Imagini is stuck at ITU because of Dating DNA's opposition. So, yes, that makes my point. Better for Imagini to know sooner while they have 41,400 pages than in a year when they could have significantly more, only to be forced to change their name. Bad move on their part to force Dating DNA into consolidating. Given that they ARE in fact branding their term aggressively on their site and elsewhere, if they intentionally delayed the case, that was a very bad move, IMHO.

I see that Dating DNA has successfully challenged two other "dna" marks in the dating and social networking space, forcing them to choose new names. "Dating by DNA" and "Social DNA." Dating DNA is a very popular iPhone app. I can see why they would be protective of the "DNA" aspect to their name. (Non descriptive.) If Dating DNA has already prevailed against Social DNA, my prediction is they will prevail here as well against Imagini's "Visual DNA."


At 8:17 PM, Anonymous Rob said...

Motions to consolidate are granted 99% of the time. Opposing them is a waste of client's money and counsel's time.

For some reason, the Board has rather selectively given priority to two main issues arising from the 2007 rules changes, namely discovery conferences and initial disclosures, and applies a policy of strict compliance with the same.

The parties shouldn't be surprised to have lost the "excusable neglect" claim. After an Answer is filed, the Board never finds "good cause" in a timely motion to extend the discovery conference deadline, even if filed jointly. But of course, there are ways around that, e.g. filing a suspension-triggering motion.

At 5:47 AM, Blogger John L. Welch said...

I agree that motions for suspension are almost always granted. But in my experience, when discovery has closed in one and just opened in the other, suspension is by no means automatic.

As for re-opening discovery, that is just about impossible.

At 1:00 PM, Anonymous Anonymous said...

Under the "new" rules the Board appears to follow them strictly in some cases and loose in others.

It appears that upon initiation of a case they appear to be more generous with issues such as proper service, but when the case gets close to end of discovery they appear to tighten things up and become more strict.

At 3:40 PM, Anonymous Dating said...

I agree that it appears that Dating DNA was just "whining" and the court properly ruled.

At 1:47 PM, Blogger Someone with a camera said...

I am pleased the Board ruled this way. Opposer puts defendant to expense of defending a case, but cannot get its act together to follow the rules? Happens time and again. Regardless of how the case "should" have come out on the issue of confusion, Opposer should -- at the very least -- be held to the same standard as defendant. Shame on (whining) Opposer.


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