Wednesday, November 23, 2011

Precedential No. 30: TTAB Refuses to Compel Sweeping E-Discovery

If your knickers have been twisted into a pretzel over fear that TTAB litigation is becoming as complicated and expensive as civil litigation, this crisp interlocutory order will provide some relief. The Board denied a motion to compel sweeping e-discovery in this particular case, observing that in TTAB proceedings "the burden and expense of e-discovery will weigh heavily against requiring production in most cases." Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 100 USPQ2d 1904 (TTAB 2011) [precedential].

This proceeding concerns the issues of genericness and/or mere descriptiveness of the term PRETZEL CRISPS for "pretzel crackers." The parties were unable to reach an agreement on a procedure for handling e-discovery (other than use of .pdf format). Applicant Princeton Vanguard proceeded to produce tens of thousands of documents (possibly from a prior civil lawsuit), including ESI (electronically stored information). Dissatisfied with Opposer Frito-Lay's production, Princeton moved to compel, claiming that F-L's electronic discovery efforts were insufficient. F-L argued that the cost ($70,000 - 100,000) would far outweigh the benefit.

The Board discussed at length the role of e-discovery in civil actions and in Board proceedings, noting that in the courts "there is an increasing focus on the question of proportionality, and on whether the type of extensive ESI discovery applicant advocates here is always justified." In Board proceedings, discovery is expected to be less extensive than in court, and demands for e-discovery should be carefully scrutinized.

In view of our limited jurisdiction, the narrowness of the issues to be decided by the Board, and the concerns expressed by the Federal Circuit, the burden and expense of e-discovery will weigh heavily against requiring production in most cases. Parties are advised to be precise in their requests and to have as their first consideration how to significantly limit the expense of such production. Absent such a showing, the likelihood of success of any motion to compel will be in question.

Here, the Board denied Applicant Princeton's motion to compel, in large part, refusing to require Frito-Lay to "start its document production over, using the same or similar protocols to those applicant employed."

Applicant has simply failed to establish that opposer’s method of searching and producing documents was insufficient as a general matter, given the parties’ failure to agree on an ESI discovery protocol in advance, the nature of applicant’s discovery requests and the issues in this proceeding.

The Board proceeded to pare down Princeton's demands and then ordered Frito-Lay to produce documents in response to certain, narrowed requests.

TTABlog comment: Bravo!

Text Copyright John L. Welch 2011.


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