Precedential No. 26: TTAB Denies Motion to Compel: Responding without Objection to First Set of Discovery Requests does not Preclude Excessiveness Objection to Second Set

The Board denied Opposer 1661's motion to compel discovery responses premised on the unsupported and dubious notion that, once a party responds to a first set of interrogatories or document requests, it cannot object to a second set on the ground that the total number of interrogatories or documents requests exceeds the maximum limit of 75. 1661, Inc. v. TF Intellectual Property Pty Ltd, 2024 USPQ2d 1719 (TTAB 2024) [precedential] (Interlocutory Attorney Jennifer Krisp).

Trademark Rules 2.120 (d) and (e) limit the number of interrogatories and requests for production (RFPs) that a party may serve to 75 (counting subparts). If a party wants to object under these Rules, it must serve a general objection on the ground of excessiveness, rather than responding.

Applicant TFIP responded to 1661's first set of interrogatories and requests for production (RFPs) and did not raise an objection to their number. Opposer 1661 then served second sets of interrogatories and RFPs, to which TFIP objected on the ground that the total number now exceeded 75 for each. 1661 moved to compel responses, claiming that because TFIP did not object to the first sets, it could not object to the second sets on the ground of excessiveness.

In attempting to resolve this dispute, TFIP informed 1661 that it counted the first sets of RFPs and interrogatories as totaling 69 and 68, respectively, and the second sets as totaling 79 and 85, and TFIP provided its counting methodology.

The Board pointed out that TFIP, when responding to the first sets, had "no duty to inform 1661 how it counted, i.e., that it counted some to be compound or have subparts." Then, upon concluding that the second sets pushed the numbers over the limit, TFIP permissibly served its general objections.

Under the Rules, a party has no obligation to inform its adversary of its analysis of the total or its method of counting unless (and until) it believes the total number exceeds the permissible limit. In sum, TFIP did not fail to timely object, and thus did not forfeit its right to serve general objections upon determining the requests exceeded 75 using its counting method.

1661 feebly accused TFIP of "gamesmanship," but the Board observed that "as a practical matter, when served with the first set of requests, TFIP had no basis to believe it needed to or should inform 1661 that it counted therein fewer than 75 requests. As TFIP aptly states, it 'cannot be expected to know 1661’s plans for discovery and whether 1661 even wanted to serve another set of discovery requests.'"

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TTABlogger comment: Suppose the original sets had exceeded 75 and TFIP did not object. Could FTIP have objected to further sets on the ground of excessiveness? I think so.

Text Copyright John L. Welch 2024.