Precedential No. 35: In a Real Snoozer, TTAB Rules on Several Discovery-Related Issues

In a precedential Order, the Board ruled on several discovery-related motions in this opposition to registration of the mark GROMEO for "Planters for flowers and plants; Self-watering planters for flowers and plants." Opposer OMS claimed likelihood of confusion with, and likely dilution of, its registered marks MIRACLE GRO and GRO-formatives for fertilized, soil, pots, and containers. OMS Investments, Inc. v. Habit Horticulture LLC, 2012 USPQ2d 1074 (TTAB 2022) [precedential] (Intelocutory Attorney Mary B. Miles).

Applicant Habit [actually, applicant's name is Habitat Horticulture, but Opposer OMS misspelled it in the notice of opposition - ed.] moved to compel a deposition and to extend its time to respond to OMS's discovery requests. When Habit filed it reply brief, OMS claimed the reply should be stricken as untimely. OMS served its opposition to the motion to compel on December 10, 2021 and argued that, under Trademark Rule 2.127(a), the reply filed on December 31 was one day too late. Not so, said the Board. The opposition was not filed until December 11, so the reply was due twenty days after that date and was therefore timely.

Trademark Rule 2.195(a) does not contemplate that a submission filed with the Board may have different service dates and filing dates for purposes of calculating briefing deadlines under Trademark Rule 2.127(a). Rather, “[f]or administrative purposes, a firm and single receipt-by date is necessary for submissions transmitted to the Board.” Island, LLC v. JBX Pty. Ltd., 2021 U.S.P.Q.2d 779, at *4 n.9 (TTAB 2021) (emphasis added). Thus, in the event that a party serves a copy of its motion prior to filing the submission with the Board, the submission nonetheless is assigned a single receipt-by date, based on Eastern Time, for purposes of calculating the deadline for filing a response or reply brief under Trademark Rule 2.127(a).

The Board then denied Habit's motion to compel because it was filed prematurely (OMS had not "clearly or unequivocally stated that it would not designate or produce a witness for the noticed deposition") and because Habit failed to make the required good faith effort to resolve the dispute prior to filing its motion. The parties were ordered to meet and confer forthwith in a good faith effort to resolve any disputes regarding the topics for examination (under FRCP 30(b)(6)), the designated witnesses, and/or the date and location of the deposition.

Finally the Board denied Habit's motion to extend the time for responding to OMS's discovery requests. Habit contended that is should not have to response to the requests until after the Rule 30(b)(6) deposition of Habit in order to "maintain the status quo," i.e., Habit noticed its deposition first. The Board rejected that argument, since discovery is not governed by the concept of priority and one party's discovery obligations are independent of the actions of the other party. [As a general proposition, okay, but that should not be an ironclad rule - ed.]

The Board then issued a new scheduling order.

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TTABlogger comment: I don't understand how an order issued by a single interlocutory attorney, with no statement that it is issued "By the Board," can be precedential.

Text Copyright John L. Welch 2022.