Friday, September 21, 2018

Precedential No. 30: Rejecting Opposer's Over-Counting of Interrogatories, TTAB Grants Motion to Compel Responses

The Board ordered consolidation of two oppositions involving the same marks and parties and common issues of law and fact. The Board then granted Applicant YogaGlo's motion to compel responses to its interrogatories, overruling opposer's objection that the number of interrogatories exceeded Rule 2.120(d)'s limit of 75, including subparts. One Jeanswear Group Inc. v. YogaGlo, Inc., 127 USPQ2d 1787 (TTAB 2018) [precedential].

Consolidation: In response to opposer's motion to consolidate, applicant feebly argued that one proceeding involved fewer active applications and registrations than the other, that opposer asserted different rights in the two cases, and in any case that consolidation should await a ruling on its motion to compel.

The Board, however, observed that the parties are the same and the marks identical, both oppositions assert likelihood of confusion with the same four registered marks, and common questions of law and fact are involved. Much of the discovery and evidence would be the same in both cases. Without consolidation, "duplicative and/or piecemeal discovery and prosecution" in the two proceedings would likely continue.

The fact that additional pending applications are included by opposer in one case does not preclude consolidation, since applications are evidence only of their filing dates, not evidence of use of the marks.

Motion to Compel: Applicant served 17 numbered interrogatories in one of the proceedings, in response to which opposer served a general objection that the number of interrogatories exceeded the limit of 75, including subparts. Opposer claimed that applicant's interrogatories 1-4 each inquire as to the "total of  29 separate products" identified in the pleaded registrations, and each of those four interrogatories contain several subparts. Opposer counted those four interrogatories as follows:

The Board is not bound by a party's numbering or designation system. Instead, the Board will look at the substance of each interrogatory to see "whether it actually asks multiple distinct questions (e.g., sales figures and advertising expenditures), in which case each question is counted as a single interrogatory, or whether it asks a single question, or all relevant facts and circumstances concerning a single issue, applicable to all pleaded marks or all asserted goods and services (such as, sales figures for each of a party's marks for multiple years), in which case it is counted as a single interrogatory."

A propounding party may request that each interrogatory be answered with respect to each involved mark of a party and the interrogatories will be counted the same as if pertaining to only one mark. The count is not driven by the number of goods and services named. (Thus the Rules do not provide for additional interrogatories where more than one mark is pleaded or attacked, whether in a single or a consolidated proceeding).

The Board concluded that applicant's interrogatories 1-4 "arguably comprise at most 9 subparts." Adding the remaining interrogatories (which, according to opposer, comprised 30 subparts), the total fell well within the 75-interrogatory limit.

And so the Board granted the motion to compel and ordered opposer to serve its responses within 30 days.

Read comments and post your comment here.

TTABlog comment: Note that under the 2017 Rule changes, productions requests and admission requests are also now limited to 75. Happy counting!

Text Copyright John L. Welch 2018.


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