Monday, November 04, 2019

Precedential No. 31: TTAB Enters Judgment as a Sanction for Willful Evasion of Discovery

The Board granted Plaintiff Fifth Generation's motion for entry of judgment as a sanction, under Trademark Rule 2.120(h), due to Defendant Titomirov Vodka's failure to comply with various Board orders and for its "pattern and practice ... of avoiding its discovery obligations evidencing willful evasion." Fifth Generation Inc. v. Titomirov Vodka LLC, 219 USPQ2d 418666 (TTAB 2019) [precedential].

Relying on a variety of grounds, Fifth Generation, owner of the registered mark TITO'S for distilled spirits, opposed Titomirov Vodka's applications to register TITOMIROV VODKA and TITOMIROV ALKALINE MARTINI, and petitioned to cancel a registration for the mark LUCKY VODKA BY ALEX TIMOROV, all for vodka.

Fifth Generation had filed a motion to reopen discovery on the ground that defendant had concealed evidence by its misrepresentation that Dr. Alexander Titomirov was defendant's only officer and that he resided in Monaco. Defendant had refused to produce any witnesses for deposition. However, Fifth Generation established that two other individuals, Dr. Singer and Mr. Samuelson, represented themselves publicly as defendant's President of U.S. Operations and Vice President of Sales and Business Development, respectively. The Board reopened discovery.

Next, Fifth Generation filed a motion for sanctions, or for an order compelling discovery, on the grounds that (1) defendant continued to claim that Dr. Titomirov was its sole employee, that he lives in Monaco, and that defendant had no presence in the United States, (2) defendant refused to collect documents from its employees, and (3) it failed to supplement its discovery responses or respond to Fifth Generation's new discovery requests.

The Board ordered defendant to supplement is discovery responses and allowed Fifth Generation to depose Singer and Samuelson on notice alone. It required defendant to submit amended and supplemental response after consultation with these two individuals. And the Board precluded defendant from relying at trial on testimony from anyone other than Dr. Titomirov.

Because defendant did not comply with these discovery orders, Fifth Generation filed the subject motion for sanctions.

Defendant then requested a telephone conference with the Board to resolve the motion, but the Board denied the request: "the Board will not decide by telephone conference any motion that the Board determines may be potentially dispositive." Nor did the Board grant defendant's request that it "assist the parties in quickly fleshing out the issues raised," since "it is not the Board's role to 'mediate' the parties discovery disputes." The Board observed that it "appears that the request for a telephone conference is interposed for purpose of delay."

Although defendant's counsel submitted a declaration describing the difficulties in communicating with defendant, " As with its two prior unsuccessful motions to extend its time to respond, Titomirov once again has failed to show good cause for the Board to reset the time for it to file a response to Fifth Generation’s motion for sanctions. Fed. R. Civ. P. 6(b); SFW Licensing Corp. v. Di Pardo Packing Ltd., 60 USPQ2d 1372, 1373 (TTAB 2001) (opposers had not come forward with “detailed facts” required to carry their burden to explain their inaction).

In the subject motion for sanctions, Fifth Generation pointed out that defendant continued to refuse to make witnesses available for deposition and failed to state when Dr. Titomirov would be in the United States. Fifth Generation relied on information posted on social media regarding the corporate positions of Dr. Sanger and one Anthony Bromley, images of Dr. Titomirov at events in Florida, and two sworn documents filed in a New York state court, averring that Dr. Titomirov resides in Jupiter, Florida.

Under Rule 2.120(h)(1) and Fed. R. Civ. P. 37(b)(2), the Board may issue appropriate sanctions for failure to comply with a discovery order, including entry of judgment. "Although judgment is a harsh remedy, it is justified where there is a strong showing of willful evasion and no less drastic remedy would be effective. Unicut Corp. v. Unicut, Inc., 222 USPQ 341, 344 (TTAB 1984); see also Benedict, 101 USPQ2d at 1093."

The Board found that defendant "has failed to comply with Board orders regarding discovery by: (1) failing to properly supplement its discovery responses concerning Dr. Titomirov’s presence in the United States, and (2) failing to make witnesses available for deposition." Defendant attempted to evade discovery by misrepresenting its relationship with Sanger and Samuelson and by misrepresenting Dr. Titomirov's residence address. It filed two unsupported motions for extensions of time and requested a telephone conference apparently for the purpose of delay. "Such dubious filings not only demonstrate Titomirov's dilatory intent, but also tax Board resources."

Together, these actions show a course and pattern of delay that evidence willful evasion of Titomirov’s discovery obligations. On this record and based on all of Titomirov’s actions before us, we find that Titomirov has continually failed to comply with Board orders and hampered reasonable procedures appropriate to resolution of this trademark conflict. See Benedict, 101 USPQ2d at 1093.

The Board noted that the lesser sanctions imposed on defendant had little effect, and so the Board saw no prospect of future compliance. "Any sanction short of judgment would be futile and unfair to Fifth Generation."

And so, "[i] view of Titomirov’s failure to comply with the Board’s prior orders and its pattern and practice ... of avoiding its discovery obligations evidencing willful evasion," the Board entered judgment against defendant as a discovery sanction under Rule 2.120(h). The Board found it unnecessary to invoke its inherent authority to issue sanctions.

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TTABlog comment: As they say in Russia, tough shitsky!

Text Copyright John L. Welch 2019.


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