Ttab Decisions and Developments

• Publication year: 2020
• Author: Jane Shay Wald

TTAB Decisions and Developments

Jane Shay Wald

Irell & Manella LLP

If You Run Out Of Time And You Can't Follow Up And Argue The Info You Wanted Was Meta If The Board Disagrees And You Can't Swallow Up The New Inquiry Into The Old, It's No Betta

The Board denied an Opposer's motion to compel production of "metadata," finding that because Opposer had not requested the metadata information in its production requests, the Applicant did not need to provide it. Here, Opposer filed a notice of opposition to Applicant's intent-to-use application to register the mark LIFE IS BETTER AT THE RACE TRACK for clothing and accessories in classes 14, 18 and 25, alleging priority and likelihood of confusion.

Opposer served discovery responses, and agreed to extensions of time for Applicant to respond. Opposer apparently had not made its agreement contingent upon reserving a period for follow-up discovery, nor did the parties extend the discovery period. Eight days before the close of discovery, Opposer emailed Applicant to request supplemental information regarding five specific photographs Applicant had previously produced. Applicant did not provide it, and after efforts to resolve the matter with Applicant were unsuccessful, Opposer made a Rule 37 Motion to Compel. The Opposer sought an order compelling Applicant to produce two specific types of evidence in response to Opposer's Request for Production of Documents, namely the date the photographs were taken, and the identity of the photographer. In response, Applicant argued that Opposer had not identified a discovery request pursuant to which such information would be responsive. The Opposer's Request sought: "All documents evidencing Applicant's claim that Applicant has priority over Opposer." Opposer referred to the date and photographer information as "metadata," and argued that it is implicit in the aforesaid discovery request. The Board disagreed.

The Board cited a dictionary definition that "metadata" is generally "data that provides information about other data," but turned to the broader definition of the Federal Circuit in CBT Flint Partners, LLC v. Return Path, Inc., 108 USPQ 2d 1969, 1978 n.2 (Fed. Cir. 2013) (quoting The Sedona Conference, The Sedona Conference Glossary: E-Discovery & Digital Information Management 34 (Sherry B. Harris et al. eds., 3rd ed. 2010). That definition is:

"Data typically stored electronically that describes characteristics of ESI [electronically stored information], found in different places in different forms. Can be supplied by applications, users or the file system. Metadata can describe how, when, and by whom ESI was collected, created, accessed, modified, and how it is formatted. Can be altered intentionally or inadvertently. Certain metadata can be extracted when native files are processed for litigation. Some metadata, such as file dates and sizes, can easily be seen by users; other metadata can be hidden or embedded and unavailable to computer users who are not technically adept. Metadata is generally not reproduced in full form when a document is printed to paper or electronic image."

The Board noted that its lead case on ESI also cites The Sedona Conference as the leading authority on electronic document retrieval and production, namely Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 100 USPQ 2s 1904, 1908 n. 9 (TTAB 2011).

The Board also went through Trademark Rule 2.116(a), 37 C.F.R. Sec. 2.116 (a), that makes Fed. R. Civ. P. 34(b) (2) (E) applicable to Board proceedings, concerning the production of documents or electronically stored information. "Although the Rule does not specifically address metadata, a party seeking discovery may specify a form for production and request metadata under Fed. R. Civ. P. 34(b) (1)(C)."

The Board emphasized that Fed. R. Civ. P. 34 doesn't require the requesting party to specify a form of production, but if they haven't specified it, the responding party is required to produce it in a form in which it is "ordinarily maintained" or in a "reasonably usable form." The Board found the five photographs appeared to be "reasonably usable" as photographs, and noted that the Opposer did not argue to the contrary.

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Where a party doesn't ask for production in a specific electronic format, and just requests "documents," production in electronic format is not required. (Opposer was not seeking electronic documents). The Board found Opposer's document request was too limited to encompass the date of the photographs and the name of the photographer. Opposer had run out of time to supplement the request. Chix Gear, LLC v. Princess Race Wear Corp., Opposition No. 91243081 (TTAB 2019).

Searching For Places To Make Every Tire Without High New Tariffs: The Reg. Won't Expire Despite Its Announcement That It Had Paused Use Respondent Took Steps So It Had An Excuse

The Board granted the petition of Double Coin Holdings Ltd. ("Double Coin") to cancel the ROAD WARRIOR registration of Tru Development ("Tru") on the basis of priority and likelihood of confusion with Double Coin's WARRIOR mark. Both parties' registrations included tires; Double Coin's registration included additional tire-related goods, e.g., inner tubes and tire flaps. The Board denied Tru's counterclaim for cancellation based on Double Coin's nonuse of the mark for two-and-a-half years, finding excusable non-use. The Board found "ROAD" to be weak for tires, so Tru's addition of "ROAD" to WARRIOR did not avoid a likelihood of confusion with Double Coin's WARRIOR mark.

Although Double Coin's registration included automotive tire goods in addition to tires, and Tru's goods were only "tires," the Board did not need to consider whether each of Double Coin's recited goods was related to Tru's tires "as it is sufficient if likelihood of confusion is found with respect to any product recited in Double Coin's registration." Emphasis added.

Tru claimed Double Coin abandoned its mark by halting shipments of its WARRIOR goods into the United States in 2015 because of high tariffs imposed by the United States Department of Commerce International Trade Administration ("DOC/ITA"). Double Coin announced as much in an industry publication, which Tru urged amounted to an intent to abandon. The same publication, however, said Double Coin's parent was seeking production facilities elsewhere, including possibly in the United States itself, to bring Applicant's WARRIOR goods back into the United States. Double Coin produced substantial evidence of such efforts to find an alternative country for manufacturing its WARRIOR tires so that they could again be sold in the United States. Tru argued that DOC/ITA tariffs notwithstanding, and despite...