Petitioner Domond alleged fraud, abandonment, and likelihood of confusion. He also claimed that the subject registration was void ab initio because Respondent's specimen failed to show use in commerce. [That last claim, however, is not a proper ground for cancellation; nonuse would be the appropriate assertion].
The Board pointed out that the parties to a proceeding are generally allowed to seek discovery as they deem necessary, but the Board does not permit unlimited discovery that will harass and oppress the adversary.
When it comes to serving discovery, the parties are expected to take into account the principles of proportionality with regard to discovery requests such that the volume of requests does not render them harassing and oppressive and are expected to consider the scope of the requests as well as to confer in good faith about the proper scope of discovery so as to minimize the need for motions.
The Board found that Respondent had, through a brief email exchange with Petitioner Domond, made a good faith effort to resolve the dispute. It is usually improper to respond to a discovery request by filing a motion for a protective order [why not just object? - ed.], except in cases "where it is readily apparent that propounded discovery requests are so oppressive as to constitute clear harassment."
As is clear from the number of discovery requests within the context of this proceeding, as well as their content, Petitioner has failed in his duty to seek only such discovery as is proper and relevant to the issues in this proceeding.
The Board noted that a number of Petitioner's discovery requests were not "appropriately tailored to elicit discoverable information in this proceeding." For example, requests seeking all documents from the last seventeen years were unduly broad. Others sought irrelevant information, like stock prices and projected income. Still others improperly called for legal citations for Respondent's position and a summarized analysis of the similarities and/or differences in the parties’ marks, when Petitioner is responsible for developing its own case and "and cannot demand that Respondent prepare a comparison report, undertake legal research, or disclose its legal strategies." Petitioner's requests for the identification of witnesses was not only premature but unnecessary in view of the Board’s disclosure requirements.
And so the Board granted the motion for a protective order, and it warned Petitioner that further uncooperative or harassing behavior may result in the imposition of sanctions, possibly including the entry of judgment.
Read comments and post your comment here
TTABlog note: See TBMP Section 414, "Selected Discovery Guidelines," which lists a number of "discovery determinations, with case citations, relating to the discoverability of various matters."
Text Copyright John L. Welch 2015.
The Board needs to clarify what constitutes an appropriate meet and confer. Twice I've been in the situation where the other side just refused to respond, and twice the Board said I did not do enough. (Maybe I should have sent flowers and a box of candy?) Here the other side said stuff it, and that was deemed enough. So maybe the teaching is that stonewalling is better than engaging if you are trying to fend off a discovery motion?
ReplyDeleteI agree, Paul. It takes two to tango. I think the Board (interlocs) use this "failure to confer sufficiently" excuse to avoid having to deal with complicated motions.
ReplyDeleteIn your side note, are you suggesting that void ab initio is never an appropriate ground for cancellation? Or that it was not a proper characterization of the specimen failing to show use in commerce in this proceeding?
ReplyDelete"Void ab initio" is a result, not a ground. Nonuse is a ground. Improper specimen is not a ground for opposition. That's all the Board was saying.
ReplyDeleteJohn observes: It is usually improper to respond to a discovery request by filing a motion for a protective order [why not just object? - ed.]
ReplyDeleteIf you're the party receiving the 700 discovery requests (i.e., abuse) it's better to file the motion for protective order. You look like the responsible adult to the court. And you're the one telling your story to the court first: "look at this crazy amount of interrogs. and RFAs this joker sent me." If you just object, your opponent tells his story first: "look at this stonewalling obstructionist. He refused to answer one damn question." Then you have to come back at say, "no, I'm really not stonewalling. I just think this amount of discovery is too much."
I thought this was a clear-cut case of abusive discovery and that the court should have called out the bad behavior more emphatically. Instead, the court went on and on about the scope-of-discovery rules, treating this like it was a close call.
John observes: It is usually improper to respond to a discovery request by filing a motion for a protective order [why not just object? - ed.]
ReplyDeleteIf you're the party receiving the 700 discovery requests (i.e., abuse) it's better to file the motion for protective order. You look like the responsible adult to the court. And you're the one telling your story to the court first: "look at this crazy amount of interrogs. and RFAs this joker sent me." If you just object, your opponent tells his story first: "look at this stonewalling obstructionist. He refused to answer one damn question." Then you have to come back at say, "no, I'm really not stonewalling. I just think this amount of discovery is too much."
I thought this was a clear-cut case of abusive discovery and that the court should have called out the bad behavior more emphatically. Instead, the court went on and on about the scope-of-discovery rules, treating this like it was a close call.