Ttab Decisions and Developments

• Publication year: 2019
• Author: Jane Shay Wald

TTAB Decisions and Developments

Jane Shay Wald

Irell & Manella LLP

Instagram Posts And The Data That's Meta When You're Threatened With Suit, Do Preserve It The ESI Rules Are No Joke, So You'd Bettah Not Spoliate Data: Conserve It

The Board agreed that Petitioner's conduct in failing to preserve posts to its @busy.beauty Instagram account predating October 1, 2018 amounted to spoliation of electronically stored information ("ESI"). The Petition to Cancel was already pending by that date, when Petitioner re-launched its Instagram account and removed all prior posts. The Board reminded Petitioner that the duty to preserve evidence begins when litigation is pending or reasonably foreseeable and the record did not show that Petitioner took "any reasonable steps to preserve the information at the outset, such as by implementing a litigation hold." The Board recognized that "petitioner and its counsel were at least careless in their data preservation," and precluded Petitioner from relying on partially reconstructed ESI of the Instagram material. It found any prejudice to Respondent to be minimal under the circumstances and declined more serious sanctions. Busy Beauty, Inc. v. JPB Group, LLC, 2019 USPQ2d 338392 (TTAB 2019).

If Your Trademark Is "Bully" You'd Better Beware If You're Being A Bully And Liar The Board Will Be Watching And Sanctioning Fully And Tossing Your Case In The Fire

Petitioner sought to cancel seven registrations for BULLY and BULLY-inclusive marks for pesticides, herbicides and fungicides based on Petitioner's claimed prior common law use of its own BULLY marks for pest-control products. In a 48-page Opinion, the Board excluded certain of Petitioner's exhibits due to its spoliation of electronically stored information ("ESI") it sought to rely on. It also dismissed the Petition to Cancel with prejudice because it found Petitioner had knowingly falsified a number of exhibits, and submitted false testimony.

As to the spoliation, the Board clarified that there is a different standard for the destruction of ESI than for other documents. Fed. R. Civ. P. 37 (e) provides that:

[I]f ESI that should have been preserved in anticipation or conduct of litigation is lost because a party failed to take reasonable steps to preserve it, and it cannot be restored or replaced through additional discovery, the court: (1) upon finding prejudice to another party from the loss of the information, may order measures no greater than necessary to cure the prejudice; or (2) only upon finding that the party acted with the intent to deprive another party of the information's use in the litigation may:

(A) presume that the lost information was unfavorable to the party; (B)instruct the jury that it may or must presume the information was unfavorable to the party; or (C) dismiss the action or enter a default judgment.

Here, Petitioner submitted two exhibits that included a collection of screenshots of JPEG images of Petitioner's BULLY products, and their metadata. It included these ESI exhibits in its Motion for Summary Judgment ("MSJ"). Respondent contended, and the Board agreed, that this ESI was removed from Petitioner's web site so that Respondent could not examine the webpages for authenticity in responding to the MSJ. Respondent's expert "observed the inclusion of coding within the website's architecture that appears to be intended to cause the removal of information...." Petitioner, thus called out, attributed the removal to an effort to thwart some hackers. The Board nonetheless found that Petitioner precluded access to the ESI and deprived Respondent, to its prejudice, of its use. The Board therefore gave no consideration to the exhibits.

Petitioner created a larger problem, causing the Board to dismiss the Petition with prejudice based on fabrication of other evidence. The dates of Petitioner's own advertising documents belied the earlier dates it claimed other documents existed. A witness for Respondent adduced "uncontroverted testimony" that the timing was way off for certain other documents. "We also find extremely troubling the testimony of [witness] regarding the request by [Petitioner] to lie about manufacturing pesticides for Petitioner." Respondent's expert "opined that the software that was used to create certain exhibits was released three years after the claimed date of their creation. The Board applied the legal maxim "falsus in uno, falsus in omnibus" (false in one thing, false in everything). The Board found fraud in Petitioner's pattern of litigation misconduct that tainted the credibility and authenticity of any evidence. The Board made the further point that even if it had not dismissed the Petition for fraud, Petitioner would have failed to prove its asserted claim of likelihood of confusion because the Board would not consider the evidence that was excluded due to spoliation. Optimal Chemical Inc. v. Srills LLC Cancellation No. 92063200 (September 10, 2019).

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The Board Cited Rules That The Page Count Was Wrong Spelling The Death Of A Motion Petitioner's Brief Was Three Pages Too Long And Now Sleeps With The Fish In The Ocean

Two days before the deadline for Petitioner's pretrial disclosures, it filed a motion on consent to extend all dates by a week. There were no restrictions or conditions in the motion. A motion for summary judgment ("MSJ") must be filed before the deadline for the plaintiff's pretrial disclosures as originally set or as reset. Trademark Rule 2.127 (e) (1). Anticipating the Board's approval of the consented motion for extension, Petitioner filed its MSJ. The Board thereafter granted the request on consent to extend the dates. Respondent objected, arguing that it only consented to an extension of time for Petitioner to serve its pretrial disclosures - not to file its MSJ. Since there were no restrictions or conditions in the motion, this objection was without merit. In fact, the Board provided authority supporting that a specifically worded extension of the pretrial disclosure deadline also generally resets the deadline for filing an MSJ, unless the parties agree otherwise.

Respondent also argued that the MSJ was untimely, because the requested extension on consent had not yet been granted when the Petitioner filed it, and the original deadline had passed. In other words, the MSJ was filed within the time requested in the motion to extend dates, but the Board hadn't yet ruled on that motion when Petitioner filed the MSJ. The Board said that since the motion to extend was filed prior to the deadline, once granted, the extension is effective as to the dates requested in the motion to extend. The Board cautioned that if the motion to extend had not been granted, "the time for taking such action may remain as previously set." TBMP Sec. 509.01 (a). Had the Board rejected the motion to extend dates, the Petitioner's MSJ would have been untimely, but the Board accepted the extension request.

Despite prevailing on the issue of timeliness, the Petitioner's MSJ was disregarded on the basis that it was three pages over the page limit. Trademark Rule 2.127(a) "provides that no...