Wednesday, March 26, 2014

Precedential No. 10: TTAB Denies Motion to Compel Due to Lack of Good Faith Effort to Resolve Dispute

The Board denied a motion to compel responses to an applicant's interrogatories and production requests, finding that the applicant had failed to satisfy the requirement of Trademark Rule 2.120(e)(1): namely, that the moving party show that it made a good faith effort to resolve the discovery dispute and that the parties were unable to resolve their differences. Here, counsel for the parties merely exchanged brief emails, applicant's counsel noting that responses had not been received and asking when they might be expected, and opposer's counsel promising to check with the client and "get back to you on a time frame for response." Hot Tamale Mama...and More, LLC v. SF Investments, Inc., 110 USPQ2d1080 (TTAB 2014) [precedential].

Even when a party fails completely to respond to discovery, the other party has a duty to contact its adversary to ascertain why it has not received responses and whether the matter can be resolved amicably. If the discovering party is not satisfied with the answer, only then may it file a motion to compel.

[T]he good faith efforts of the parties should be directed to understanding differences and actually investigating ways in which to resolve the dispute. Where it is apparent that the effort toward resolution is incomplete, establishing the good faith effort that is a prerequisite for a motion to compel necessitates that the inquiring party engage in additional effort toward ascertaining and resolving the substance of the dispute.

Here, two weeks after the discovery responses were due, counsel for the parties exchanged brief emails. The Board concluded that this exchange did not satisfy the good faith obligation because applicant did not undertake sufficient effort to resolve the dispute. Applicant merely said what opposer already knew: it had failed to provide responses. Opposer's reply did not state why the responses were overdue, or even when they would be provided.

It was incumbent upon applicant to follow up with opposer not only to ascertain why there were no responses, but also to determine "any underlying circumstances that might have contributed to the non-response and whether any problems could be resolved." In fact, in its responding motion papers, opposer stated that it is a small, closely held company that was moving its operations; its principal did not have the time to address discovery matters. [Maybe it shouldn't have brought the opposition then? - ed]. Applicant could have found this out had it only asked, but instead it filed the motion to compel.

And so the Board denied the motion to compel.

Read comments and post your comment here.

TTABlog note:  The motion to compel was filed on September 11, 2013 and this ruling came down more than six months later. Maybe both sides just wanted a delay? Sort of like a professional foul in soccer: stop the play, no harm done.

Text Copyright John L. Welch 2014.


At 11:59 AM, Anonymous Paul Reidl said...

One thing that irks me about TTAB practice is that some lawyers try to game the system and make demand/file motions without taking the time to negotiate legitimate discovery disputes. The Interlocutory Attorneys have been inconsistent in their approach to these kinds of issues. It is encouraging to see a firmly-worded decision holding that "meet and confer" means what it says.


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