Wednesday, December 26, 2018

Precedential No. 35: TTAB Enters Judgment as a Sanction for Discovery Abuses and Egregious Conduct

After four years of misconduct by Respondent Corcamore, LLC, the Board granted Petitioner SFM's motion for judgment under Trademark Rule 2.120(h)(1) and pursuant to the Board’s inherent authority to sanction, due to Corcamore's numerous discovery violations and repeated flouting of Board orders, rules, and procedures. SFM, LLC v. Corcamore, LLC, 129 USPQ2d 1072 (TTAB 2018) [precedential].

SFM, LLC petitioned for cancellation of Corcamore's registration for the mark SPROUT for "vending machine services," alleging priority and likelihood of confusion with its marks SPROUTS and SPROUTS FARMERS MARKET for "retail grocery store services."

In 2015, after determining that Corcamore had filed an “inordinate number of motions (all of which have been denied) at a very early stage in this proceeding,” the Board prohibited Respondent from filing any additional unconsented motions without first obtaining Board permission. Nonetheless, Corcamore continued to file unnecessary or procedurally improper motions, causing the Board to issue another prohibition on unconsented motions without first obtaining its permission. The Board ordered that, in the future, Corcamore contact the Board's interlocutory attorney to conduct a case conference with counsel for Petitioner SFM also present. Corcamore failed to comply.

In the discovery arena, Corcamore filed an "eleventh-hour" motion for a protective order, seeking to defer the deposition of its Fed. R. Civ. P. 30(b)(6) witness until the Board had ruled on Corcamore’s untimely motion to compel. The Board denied the motion. The Board then granted SFM's motion to compel supplemental responses to certain document requests and interrogatories.

Corcamore refused to provide its Rule 30(b)(6) witness for deposition, failed to timely and fully provide supplemental discovery responses, and failed to "Bates number" the documents it did produce, despite the Board's order that it do so.

Respondent has refused to cooperate in the discovery process for over sixteen months. Respondent’s discovery violations are repeated, egregious and demonstrate Respondent’s intent to thwart Petitioner’s discovery of information and documents the Board has already determined are discoverable. There is no reason to assume that, given additional opportunities, Respondent will fulfill its obligations under the Federal and Trademark Rules and the Board’s orders. Accordingly, Petitioner’s motion for discovery sanctions in the form of judgment is granted under Trademark Rule 2.120(h).

In addition, Corcamore violated two Board orders in numerous ways, as noted below. The Board concluded that Corcamore's conduct, taken as a whole, warranted the sanction of judgment pursuant to the Board’s inherent authority to enter sanctions. "In assessing sanctions under our inherent authority, we consider: (1)bad faith conduct; (2) willful disobedience of Board orders; (3) length of delay or clear pattern of delay; (4) due warning that sanctions may be entered; (5) reasons for noncompliance; and (6) effectiveness of lesser or alternative sanctions."

Respondent’s conduct has been particularly egregious. Respondent made good on its promise to impose a “procedural Rubicon” in this proceeding with Respondent’s campaign of filing frivolous motions, by, inter alia, refusing to meet and confer with counsel for Petitioner regarding Respondent’s discovery responses, hanging up on counsel for Petitioner during a meet and confer telephone conference on two separate occasions, outright refusing to “read or open” emails from Petitioner’s counsel of record for years, and refusing to work with counsel for Petitioner to reschedule depositions of its Fed. R. Civ. P. 30(b)(6) and 30(b)(1) witnesses. In violation of Patent and Trademark Office Rule 11.402(a), counsel for Respondent also communicated directly with Petitioner about this case, without authorization to do so, knowing that Petitioner was represented by counsel.

The Board found it "obvious from a review of the record that Respondent has been engaging for years in delaying tactics, including the willful disregard of Board orders, taxing Board resources and frustrating Petitioner’s prosecution of this case." The Board therefore granted SFM's motion for sanctions in the form of judgment a pursuant to the Board’s inherent authority to sanction.

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TTABlog comment: What about a sanction against counsel?

Text Copyright John L. Welch 2018.


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