Monday, September 13, 2010

Precedential No. 35: Amazon Spanked Again in TTAB Discovery Ruling

The Board was again displeased with the discovery antics of Opposer Amazon Technologies in its opposition to Jeffrey Wax's application to register AMAZON VENTURES for investment consultation services. Last year the Board issued a precedential ruling [TTABlogged here] concerning Amazon's improper, non-specific objections to Wax's discovery requests. Here, the Board issued rather mild sanctions against Amazon for failing to comply with the Board's 2009 Order requiring it to supplement its discovery responses. It also denied Amazon's motion for summary judgment on the issues of lack of bona fide intent and violation of Section 10 of the Act regarding a purported assignment of Wax's ITU application. Amazon Technologies, Inc. v. Jeffrey S. Wax, 95 USPQ2d 1865 (TTAB 2010) [precedential].

Discovery Sanction:In its November 4, 2009 decision, the Board said that Amazon was trying to "hide the ball" and had not laid "its cards on the table," warning Amazon (on reconsideration) that discovery "should not be treated as a shell game." Here, it found that some of Amazon's discovery responses "constituted a textbook 'document dump.'" Amazon produced a DVD containing some 31,000 pages of documents, without an index and not in chronological order.

Amazon claimed (to the Board's "surprise") that it does not have a database that would allow it to find its own trademark applications and registrations that identify finance-related services. In any case, the Board agreed with Applicant Wax that "under the circumstances of this case and given the discovery requests and responses before us, opposer’s burden in identifying certain of its own applications and registrations as meeting certain criteria is substantially less than applicant’s in this case, even if no database exists."

thousands of pages of opposer’s produced documents comprise the file histories of opposer’s applications, and while those file histories may arguably be tangentially related to opposer’s communications to applicant, identifying all of them, without an index, in response to Document Request No. 25 is an example of gameplaying rather than compliance with the Prior Order.

The Board concluded that Amazon's unindexed document production violated FRCP 34(b) . However, it declined to issue the ultimate sanction of judgment in Wax's favor "because opposer made substantial efforts to comply with the Prior Order in some respects." Instead it merely required Amazon to provide an index within thirty days, and to fully respond in narrative form to two interrogatories.

Lack of bona fide Intent: The opposed ITU application was originally filed jointly by Applicants Wax and Friedman in 2000. Friedman assigned his interest in the application to Wax in 2008. The business had no assets, no business plan, never paid taxes, and never advertised. Friedman testified that he never worked with Wax on any project, and that as of 2008, Friedman had no intent to use the mark. Wax provided declaration from third parties stating that he did provide consultation services under the mark. He further asserted that Friedman had been out of the business since 2001, and that the assignment was formally executed only when needed (in 2008).

The Board found that genuine issues of material fact exist regarding, at a minimum, "whether the original joint applicants, and the current applicant, had or have a bona fide intention to use AMAZON VENTURES for the identified services."

Section 10 Assignment: The Board ruled as a matter of law that Section 10 had not been violated by the "assignment" from Friedman to Wax. The Board observed that an "assignment" is defined as "[a] transfer or making over to another the whole of any property."

In this case, there was no transfer to “another,” as Mr. Wax was an original joint applicant and is now the sole remaining applicant.11 In fact, the “Trademark Assignment” in this case was more akin to a change in the type of entity which owned the application than to a traditional assignment of a mark from one unrelated party to another.

The Board noted that the purpose of Section 10 is to preclude "trafficking" in unused trademarks. Here there was no "trafficking."

In short, the assignment from one joint applicant to another, where the assignee joint applicant was and remains an owner of the application, is more in the nature of a "relinquishment" of ownership rights by one of the joint owners than a true "assignment" to a different legal entity and, thus, it is not prohibited under Section 10 of the Trademark Act.

And so the Board ruled in Wax's favor on this prong of Amazon's summary judgment motion.

The Board then re-set that trial dates, preceded by a short discovery period to allow Wax to conduct follow-up discovery.

TTABlog comment: Good case to remember when you receive a "document dump" from your adversary.

Text Copyright John L. Welch 2010.


At 11:50 PM, Anonymous Anonymous said...

Hello John,

A little late to the game on this topic but this is a discovery related question.

Can one party begin discovery immediately, i.e., interrogatories, RFAs, etc..., after providing initial disclosures without having received adversary's initial disclosures?

Or must one wait until they receive adversary's initial disclosures?

I've read the rules but I'm not clear on this.


At 5:39 AM, Blogger John L. Welch said...

Once you serve your initial disclosures, you may proceed with discovery. Don't have to wait for the other party to serve its disclosures.


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