Friday, February 05, 2016

Precedential No. 2: TTAB Denies Protective Order Motion and Sanctions Movant

The Board was not pleased with Applicant Rani Sachdev's motion for a protective order, filed on the day her discovery responses were due. It denied the motion as deficient and meritless, ordered Sachdev to show cause why sanctions should not be imposed, and barred her from filing any unconsented or unstipulated motion without Board permission. Emilio Pucci International BV v. Rani Sachdev, 18 USPQ2d 1383 (TTAB 2016) [precedential].

Opposer Emilio Pucci opposed Sachdev's application to register the mark St. Pucchi, in the stylized form shown above, for women's clothing, on the grounds of likelihood of confusion, dilution, and lack of ownership. It served a first set of discovery requests comprising 27 numbered interrogatories, 31 numbered document requests, and 83 numbered requests for admission. Applicant's counsel, on the day her discovery responses were due, sent three emails to Opposer's counsel requesting extensions of time (of decreasing length), but Opposer's counsel responded that she was unable to obtain instructions from Opposer. Applicant then filed a motion for protective order under FRCP 26(c), claiming that the discovery requests were overly broad and burdensome.

The Board first pointed out that filing a motion for a protective order, instead of responding and/or objecting to discovery requests, is generally not the proper course of action. See TBMP Sections 405.04(b), 406.04(c), and 410. With regard to interrogatories in particular, if the receiving party believes that the number exceeds the seventy-five interrogatory limit of Rule 2.120(d)(1), that party may serve a general objection. The purpose of the Rule is to "advance the discussion" between the parties and to "encourage them to discuss" their differences. Allowing a party to seek a protective order when there has been insufficient effort to resolve the dispute "is an entirely unworkable and impracticable approach that reflects a disregard for the affirmative duty to cooperate in the discovery process."

However, a party  may seek a protective order where it is "readily apparent that the discovery requests are so oppressive as to constitute clear harassment." Domond v. 37.37, Inc., 113 USPQ2d 1264, 1266 (TTAB 2015). Rule 2.120(f) provides, in pertinent part, that the Board may "make any order which justice requires to protect a party from annoyance, embarrassment, oppression, or undue burden or expense ...." In such case, the movant must establish good cause for the issuance of a protective order, i.e., "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." The Phillies v. Philadelphia Consol. Holding Corp., 51 USPQ2d 1759, 1761 (TTAB 2013); and see FRCP 26(c)(1).

Applicant Sachdev made no effort to resolve the disputed issues before filing her motion. That lack of good faith effort was alone a sufficient basis for denial of the motion.

As to whether a protective order was warranted, the Board expects the parties to apply the principles of proportionality with regard to discovery. Domond at 1268; and see TBMP Section 402.01 and FRCP 26(b)(1) (as amended on December 1, 2015). The Federal Rule now states:

[u]nless otherwise limited by court order ... [p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.

Applying the principle of proportionality here, the Board found no basis for concluding that Opposer's discovery requests would cause annoyance, embarrassment, oppression or undue expense. The discovery requests were standard and typical for this type of proceeding, and were tailored to seek relevant information. The interrogatories, under any counting method, did not exceed seventy-five in number.

Moreover, Applicant's motion lacked any legal citation or supporting argument, but rather contained  conclusory, "boilerplate" statements, with no explanation as to why the requests were burdensome or oppressive. The fact that Applicant filed her motion on the very day her responses were due was also troubling to the Board. She could have requested an extension of time prior to, or even on, the due date. Her unfounded and improper motion "calls into question whether Applicant had any objective for filing it other than to stall the proceeding."

The Board therefore denied the motion. Furthermore, exercising its inherent power to impose any sanction provided for by FRCP 37(b)(2), the Board allowed Applicant 15 days within which to show cause as to why the Board should not sanction her by finding that (1) she has forfeited her right to object on the merits to Opposer's discovery requests, and (2) Opposer's requests for admissions are deemed admitted  pursuant to FRCP 36(a)(3).

In addition, the Board barred Applicant from filing any unconsented or unstipulated motion in this proceeding without first requesting and receiving the Board's permission to do so.

Read comments and post your comment here.

TTABlog comment: Hard to understand why applicant did not simply file a request for extension even without Opposer's consent.

Text Copyright John L. Welch 2016.


Post a Comment

<< Home