Ttab Decisions and Developments

• Jurisdiction: United States,Federal
• Author: Jane Shay Wald
• Publication year: 2019
• Citation: Vol. 44 No. 3

TTAB Decisions and Developments

Jane Shay Wald

Irell & Manella LLP

What's "Discovery Hell?"

See This Motion To Compel!

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A Blanket Rog - You Mustn't Use

To Get To Information

Behind Admissions, It's A Ruse

To Mess With Litigation

In a 25-page Opinion on Petitioner's motion to compel interrogatory responses and document production, the Board considered a laundry list of complaints and its Order was mixed. Respondent's arguments that the Petitioner's motion should be given no consideration because of formatting and similar issues did not find a warm reception with the Board. Respondent argued that the Petitioner's motion did not include a signature block at the end of its brief, and included a single-spaced certificate of service—all to circumvent the 25-page limit of the motion. The Board pointed out that "no signature at all is necessary on a motion itself if counsel signs the ESTTA filing form accompanying the motion, which appears to be the case here." The Board also pointed out that a certificate of service of a motion is not counted in page limits.

Respondent tripped up in responding with objections to interrogatories and document requests it subsequently argued exceeded 75. "The Board's rules are clear that if a party believes that the number of interrogatories served upon it exceeds seventy-five 'and is not willing to waive this basis for objection, the party shall within the time for (and instead of) serving answers and specific objections to the interrogatories, serve a general objection on the ground of their excessive number.'" (Emphasis in original). Trademark Rule 2.120(d). "The same requirement applies when a party believes that the number of requests for production exceeds seventy-five. Trademark Rule 2.120 (e)." Respondent therefore waived its objections to object on the ground that they exceed the permissible limit.

Respondent argued that documents after the filing of the petition to cancel were irrelevant "because nonuse after this date is excused by the need to defend its registration." The Board found this argument unpersuasive, arising from Respondent's confusion over the significance of Board case law that:

"'[N]onuse of a mark pending the outcome of litigation to determine the right to such use or pending the outcome of a party's protest to such use constitute[d] excusable nonuse sufficient to overcome any inference of abandonment,'" (citations omitted here). But the Board found the application of that principle "does not preclude Petitioner from seeking discovery regarding any use or nonuse of Respondent's mark after the commencement of this proceeding."

Petitioner's motion to compel was denied insofar as it sought "information and documents pertaining to all of Respondent's responses to Petitioner's requests for admission." The Board found that "one blanket interrogatory or document request that seeks the basis, facts or other information that supports the answers to all of the propounded requests for admission..." is inappropriate. The Board cited cases noting that because interrogatories (and not requests to admit) are limited in number, this type of interrogatory can impermissibly circumvent the limits on number of interrogatories. The Board is "an administrative tribunal with a narrow jurisdiction over the right to registration," so the "use of a blanket interrogatory or document request to discover information or documents that form the factual basis of a responding party's answer to each request for admission is impermissible."

Hewlett Packard Enterprise Development LP v. Arroware Industries, Inc., Cancellation No. 92067494 (May 2, 2019).

Cross-Exam Of A Witness

To Test Facts Or Prove Fitness

Or Anything Else, It Is Clear

It Can't Be In Writing

It Isn't Worth Fighting

That's The Rule, If The Witness Is Here

The Board held that a witness located in the U.S., whose testimony is presented by affidavit or declaration under Trademark Rule 2.123(a) (1) may only be cross-examined orally. Such a U.S. based witness may not be cross-examined by written questions. Where, as in this case...