Tuesday, March 02, 2010

Precedential No. 52 (2009): TTAB Rules That Objection to Discovery For Failure to Provide Initial Disclosures Must Be Made Specifically

Here is a precedential decision from November 4, 2009, that, because of its interlocutory nature, does not appear on the TTAB FOIA webpage. [Therefore it slipped under the TTABlog radar.] Opposer Amazon did not respond substantively to any of Applicant Wax's discovery requests because Wax (Amazon believed) had failed to serve initial disclosures. Amazon instead stated only that it was "exempt from responding (at this time), due to Applicant's failure to comply with the applicable rules." Not good enough, said the Board. Objections must be made with specificity. And so the Board granted Wax's motion to compel. Amazon Technologies, Inc. v. Jeffrey S. Wax, 93 USPQ2d 1702 (TTAB 2009).

Amazon made a total of 35 "General Objections" to applicant's interrogatories, document requests, and requests for admission, and it posed 171 "specific" objections to each of applicant’s 171 written discovery requests, but Amazon never mentioned Wax's alleged failure to serve initial disclosures. The Board found that Amazon compounded the problem by continuing to "hide the ball" during the meet and confer prior to Wax's motion to compel.

This dispute could and should have been resolved without the necessity of filing a motion to compel. Opposer's mistaken but apparently honest belief that applicant failed to serve initial disclosures is no excuse.

The Board therefore granted Wax's motion to compel and to test the sufficiency of Amazon's s responses to his admission requests. It overruled Amazon's objections:

To the extent opposer's various boilerplate objections could be construed as specific to individual discovery requests, they are OVERRULED, for two reasons. First, opposer has not even claimed, must less established, that any of applicant’s individual discovery requests are objectionable in any specific manner or that any of opposer’s boilerplate objections are valid. Second, applicant’s discovery requests are in large part identical to requests which opposer served on applicant, and "a party ordinarily will not be heard to contend that a request for discovery is proper when propounded by the party itself but improper when propounded by its adversary."

The Board then denied Wax's motion for sanctions [Wax on, wax off? - ed.] as being premature, since Amazon had not disobeyed any Board order. And it reopened discovery for Wax only, but just for two weeks [since Wax had waited until late in the discovery period to serve his discovery demands, and only two weeks were left when Amazon's responses were due].

TTABlog comment: So even if Wax had not served his initial disclosures, Amazon's vague objection was insufficient and the Board would have granted Wax's motion to compel anyway. Would it also have required Wax to serve his initial disclosures belatedly? I suspect so.

TTABlog postscript: Amazon's request for reconsideration was denied (here). In his original decision, the Interlocutory attorney said that Amazon was trying to "hide the ball" and had not laid "its cards on the table." On reconsideration, he stated that discovery "should not be treated as a shell game." Pretty strong words.

Text Copyright John L. Welch 2010.


At 11:15 AM, Anonymous Anonymous said...

I have yet to read the Amazon case, but it appears to conflict with Dating DNA, LLC v. Imagini Holdings, Ltd.?

At 12:57 PM, Anonymous Rob said...

I agree with this decision. Still, I'm at a loss how a decision by an interlocutory att'y may be considered precedential. Are trademark judges expected to follow it? Can a decision by a Board paralegal be similarly designated as precedential? If an issue is that important, it shouldn't be brought before an attorney just because it's interlocutory.

Also, it's not clear what the legal basis is for Board paralegals to enter some of the orders. Is there a statute or rule which gives them authority similar to that of court clerks? The TBMP says that some issues may be decided "under the authority of the Board," but that doesn't really provide a legal basis.

At 3:27 PM, Anonymous Anonymous said...

My gripe with the USPTO: it that they has not addressed in the age of instant information the number of anomalies in recent USPTO decisions where (I will not state specific cases) USPTO attorneys have allowed marks to be approved and other marks that are identical in circumstance are refused (nothing I am personally involved in, part of my masters course)

It seems to me that it would have been historically acceptable for the attorneys decision to be correct without recourse to a tribunal on the basis that two wrongs do not make a right. However, Case law cannot be denied in 2010 when technological communications have ensured all the facts are clear and available to examining attorneys.
Precedents set by past cases are the very foundation stone of the law and used as references relevant to trade mark law as laid down in Acts of Congress and previously decided court cases.

I have looked at innumerable cases and even in the last three months there is a case where the exact same trademark application was approved by two independent USPTO attorneys and refused by another.
It is my opinion that USPTO should know that clarity and consistency of treatment should be imperative ?

At 5:41 PM, Anonymous Anonymous said...

This decision does not conflict with the Dating DNA v. Imagini Holdings decision. Amazon.com failed to state with specificity their reason for not responding to discovery. Amazon.com effectively hid the basis for their objection during meet and confer. The facts were different in the Dating DNA matter. The Dating DNA decision also cites and distinguishes the amazon.com decision.

At 1:11 PM, Blogger Dan said...

This is something only a TTAB insider could love... several documents with pages upon pages of commentary that all pertain to the nitpicky intricacies of just what sort of notice the parties to an opposition need to make, when, and in what manner, and whether or not they were followed in the particular case in question... all without a single word about any actual trademark, so the reader still has no clue what specific word, phrase, or logo is being fought over.


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