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JLE
March 1, 2021
Opposition No. 91239678 (parent)
Opposition No. 91244601
Monster Energy Company
v.
Eben McGarr
Jennifer L. Elgin, Interlocutory Attorney:
Opposer Monster Energy Company opposes registration by Applicant Eben
McGarr of the marks MAD MONSTER PARTY in standard characters, and MAD
MONSTER and MAD MONSTER PARTY in the designs shown below, on the
Principal Register:1
1 MAD MONSTER PARTY, Application Serial No. 87333442, and MAD MONSTER PARTY
& design, Application Serial No. 87333464, both filed February 13, 2017 under Section 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a), for “Organizing exhibitions for educational and
entertainment purposes services, namely, organizing and conducting conventions in the
fields of horror and popular culture” in International Class 41, alleging dates of first use of
June 1, 2010. A disclaimer of “MONSTER PARTY” is of record in both applications. The
design mark is described as follows:
The mark consists of the wording “Mad Monster Party” outlined to appear as
liquid dripping from the words “Mad Monster” and where the “O” in “Monster”
is the head of a monster, the wording “Party” is in a different font and to the
right of the word “Party” is a martini glass.
MAD MONSTER & design, Application Serial No. 87328584, filed February 8, 2017 under
Section 1(a) of the Trademark Act for “General feature magazine in the field of horror and
pop culture” in International Class 16, alleging dates of first use of March 1, 2010 and first
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: [email protected]
Opposition No. 91239678 (parent)
Opposition No. 91244601
2
Opposer asserts claims of priority and likelihood of confusion under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d) based on prior registrations and alleged common law
rights in various “monster” formative marks.2
Now before the Board is Opposer’s motion, filed November 2, 2020, to compel
Applicant’s further discovery responses and document production, and extend the
discovery period to allow Opposer to conduct a deposition of Applicant.3 Opposer’s
motion to compel discovery is timely and includes copies of the relevant requests and
responses. Trademark Rule 2.120(f)(1). The motion is fully briefed.4
A. Background
Opposer’s motion to compel details the long history of correspondence and
conferences between the parties regarding alleged deficiencies in Applicant’s
use in commerce of April 8, 2011. A disclaimer of “MONSTER” is of record. The mark is
described as follows:
The mark consists of the wording “Mad Monster” with the “O” in “Monster”
being a monster head and the letters outlined with dripping liquid.
2 1 TTABVUE. Record citations are to TTABVUE, the Board’s publicly available docket
history system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
3 22 TTABVUE.
4 For purposes of this order, the Board presumes the parties’ familiarity with the pleadings,
the history of the proceeding, and the arguments submitted in connection with the motion.
In deciding the motion, all of the parties’ arguments were carefully considered in light of the
evidence of record, although the Board does not find it necessary to discuss all of them in this
order. See Guess? IP Holder L.P. v. Knowluxe LLC, 116 USPQ2d 2018, 2018 (TTAB 2015).
Opposition No. 91239678 (parent)
Opposition No. 91244601
3
responses to Opposer’s discovery requests.5 On July 9, 2019, Opposer filed its first
motion to compel.6 The Board denied Opposer’s first motion to compel on November
29, 2019, finding that Opposer had not exercised the necessary good faith effort to
resolve the parties’ dispute before seeking Board intervention.7 After several
extensions, the Board reset the close of discovery for November 10, 2020.8
Opposer contends that the parties held a conference on October 8, 2020 to discuss
“Applicant’s refusal to produce documents responsive to Request for Production Nos.
8 and 13-17, Applicant’s representations that he had produced all documents
responsive to Request for Production Nos. 1-3, 9, 10, 19-25, 27, 28, and 31-33 in his
opposition to Opposer’s Motion to Compel, Applicant’s inadequate responses to
Interrogatory Nos. 3-5, 25, and 27, and deposition scheduling.”9 Following the
conference, Opposer’s counsel documented the matters discussed by, and agreements
reached between, the parties, including the following:
(1) Applicant represented that documents responsive to Document Request
Nos. 1‐3, 19‐25, 27, 28, 31‐33 had been produced.
(2) Applicant would inform Opposer by October 15, 2020 whether Applicant
has any responsive documents to Requests for Production Nos 5, 8‐10, and
13‐17.
5 22 TTABVUE.
6 12 TTABVUE.
7 Id. at 2-3.
8 21 TTABVUE 6-7.
9 22 TTABVUE at 9.
Opposition No. 91239678 (parent)
Opposition No. 91244601
4
(3) Applicant refused to further supplement his responses to Interrogatory
Nos. 3‐5, 25, and 27.10
On October 15, 2020, Opposer offered to make its witness available for deposition
on November 9, 2020.11 Applicant immediately accepted the November 9 date, and in
turn offered November 10, 2020 for the deposition of Applicant. Opposer’s counsel
replied none of its attorneys were available on November 10 and asked for alternative
dates for the deposition prior to the close of discovery.12 Applicant’s counsel responded
that this was the only date Applicant was available, and he found it “strange that a
firm of your size cannot provide someone to take a deposition.”13 Later that day,
Applicant supplemented its document production.14 Then, on October 19, 2020,
Applicant served its third amended responses to Request for Production Nos. 5, 8-10,
and 13-17, and Interrogatory Nos. 3-5, 25, and 27.15 Opposer has not submitted
evidence of any further discussions between the parties.
On November 2, 2020, Opposer filed the instant motion to compel (supported by
the declaration of its counsel, Nicole Townes) requesting that Applicant be ordered
to:
(1) Produce additional documents responsive to Requests for Production
Nos. 1, 2, 5, 19-21, 28, and 32;
10 Id. at 210.
11 Applicant noticed Opposer’s CEO, Mr. Rodney Sacks, for deposition in his individual
capacity, along with requests for documents. See 27 TTABVUE 17-24; Fed. R. Civ. P. 32(b)(2).
12 22 TTABVUE 208-09.
13 Id. at 208.
14 Id.
15 Id. at 217-46.
Opposition No. 91239678 (parent)
Opposition No. 91244601
5
(2) Supplement his responses to Interrogatory Nos. 3 and 7; and
(3) Produce information and documents responsive to Opposer’s Requests
for Production and Interrogatories relating to Applicant’s magazines
offered in connection with Applicant’s Marks.16
Opposer also requests that the Board “provide Opposer with sufficient time after
the date by which Applicant must provide his supplemental document production and
responses to Opposer’s Interrogatories for Opposer to conduct its noticed deposition
of Applicant on a date mutually agreeable to the parties.”17
On November 5, 2020, counsel for Opposer informed Applicant it would not
produce its witness for the scheduled November 9, 2020 deposition because this
proceeding was suspended for Opposer’s motion to compel. Opposer further objected
to the format of the amended notice of deposition for Mr. Sacks (which had been
served on October 20, 2020, along with a link for remote attendance), and further
complained that, “we have failed to receive any information from you regarding the
logistics, court reporter, etc. for Mr. Sacks’ deposition.”18 Opposer also asserted that
Applicant’s counsel had failed to provide alternative dates for Applicant’s deposition.
Accordingly, Opposer stated it would not provide alternate dates for Mr. Sacks’
deposition until “after Applicant serves a proper deposition notice and the suspension
lifts. Further, [Opposer] will conduct [Applicant’s] deposition after it receives a
16 See id. at 2.
17 27 TTABVUE 10.
18 25 TTABVUE 15.
Opposition No. 91239678 (parent)
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6
decision on its Motion to Compel.”19 After Applicant’s counsel objected to Opposer’s
refusal to produce Mr. Sacks for deposition as scheduled, Opposer’s counsel
responded, inter alia, that Mr. Sacks was no longer available on November 9, 2020.20
On November 10, 2020, the Board issued a suspension order pending disposition
of the motion to compel. The order confirmed—in accordance with Trademark Rule
2.120(f), 37 C.F.R. § 2.120(f)—that “[t]he filing of the motion to compel disclosure or
discovery shall not toll the time for a party to . . . respond to any outstanding discovery
requests or to appear for any noticed discovery deposition.”21 See also TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 523.01 (June 2020).
B. Good Faith Effort
Pursuant to Trademark Rule 2.120(f)(1), a party seeking to compel discovery is
required to demonstrate that it made a good faith effort to resolve the issues
presented in the motion and that the parties were unable to resolve their differences.
Hot Tamale Mama…and More, LLC v. SF Invs., Inc., 110 USPQ2d 1080, 1081 (TTAB
2014). An important purpose of this rule “is to relieve the Board of the burden of
ruling on motions to compel in proceedings where the parties can resolve their
discovery disputes if they make a good faith effort to do so.” Id.
A party seeking discovery has a duty to contact the adverse party to ascertain why
it has received incomplete or insufficient responses to its discovery requests and to
19 Id.
20 Id. at 12.
21 23 TTABVUE 1.
Opposition No. 91239678 (parent)
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7
determine whether the matter can be resolved amicably. See id. at 1081 (citing
MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 954 (TTAB 1979)). “The
purpose of the conference requirement is to promote a frank exchange between
counsel to resolve issues by agreement or to at least narrow and focus the matters in
controversy before judicial resolution is sought.” Amazon Techs. Inc. v. Wax, 93
USPQ2d 1702, 1705 (TTAB 2009) (emphasis in original) (quoting Dondi Props. Corp.
v. Commerce Sav. and Loan Ass’n, 121 F.R.D. 284, 289 (N.D. Tex. 1988) (construing
a local rule less demanding than Trademark Rule 2.120(f)(1))); see also Hot Tamale
Mama, 10 USPQ2d at 1081 (quoting Amazon Techs. Inc., supra).
“In determining whether a good faith effort to resolve the discovery dispute has
been made, the Board may consider, among other things, whether the moving party
has investigated the possibility of resolving the dispute, whether, depending on the
circumstances, sufficient effort was made towards resolution, and whether attempts
at resolution were incomplete.” TBMP § 523.02. Furthermore, although a deficiency
letter may be a good means to outline and frame the issues for a substantive meet-
and-confer conference between the parties, “mere dissatisfaction with the adversary’s
answer to an initial inquiry, in itself, does not discharge the duty to undertake a good
faith effort to resolve the dispute . . . .” Hot Tamale Mama, 10 USPQ2d at 1081. Where
the effort toward resolution is incomplete, establishing the good faith effort
necessitates that the inquiring party engage in additional effort toward ascertaining
and resolving the substance of the dispute. Id.; see also TBMP § 523.02.
Opposition No. 91239678 (parent)
Opposition No. 91244601
8
Upon review of the parties’ briefs, the Board concludes Opposer never raised the
issue of the adequacy of Applicant’s response to Interrogatory No. 7 following the
Board’s decision on the first motion to compel. Accordingly, Opposer’s motion to
compel further responses to Interrogatory No. 7 is denied without prejudice for
failure to comply with Trademark Rule 2.120(f)(1).
The remaining discovery disputes arguably were addressed by the parties in their
October 8, 2020 phone conference. The Board notes and is concerned, however, that
Opposer failed to make any effort to contact Applicant regarding remaining alleged
deficiencies after Applicant served its third amended responses and supplemental
document production on October 15 and 19, 2020.22
Nonetheless, because several of Applicant’s amended responses are not
satisfactory or remain unclear even after numerous supplementations, the Board
exercises its discretion to decide the motion to compel as to the remaining matters.
C. Discovery Requests
1. Applicant’s General Objections
Opposer does not challenge Applicant’s objections. As an initial matter, however,
the Board notes that Applicant largely has incorporated “general objections” and the
same boilerplate objections in each of its responses.
22 Opposer’s post-hoc explanation that it needed to file its motion because discovery was about
to close (27 TTABVUE 4) is unconvincing. Motions to compel are timely if filed prior to the
deadline for pretrial disclosures for the first testimony period. Trademark Rule 2.120(f)(1),
37 C.F.R. § 2.120(f)(1). When the motion is filed after discovery has closed, proceeding dates
are reset after the motion is decided. Id. See also TBMP 523.01.
Opposition No. 91239678 (parent)
Opposition No. 91244601
9
Objections to interrogatory requests and requests for production must be stated
“with specificity.” Fed. R. Civ. P. 33(b)(4), 34(b)(2)(B). Broad general objections and
boilerplate objections incorporated into every answer are clearly in violation of the
Federal Rules and will not be considered by the Board. Hewlett Packard Enterp. Dev.
LP v. Arroware Indus., Inc., 2019 USPQ2d 158663, at *4 (TTAB 2019) (responding
party may not rely on conclusory statements when objecting but must specifically
state the underlying basis for the objection); Amazon Techs., 93 USPQ2d at 1704
(objections to interrogatories must be made with particularity); Medtronic, Inc. v.
Pacesetter Sys., Inc., 222 USPQ 80, 83 (TTAB 1984) (same); see also Fed. R. Civ. P.
33(b)(4) (“The grounds for objecting to an interrogatory must be stated with
specificity.”) and Fed. R. Civ. P. 34(b)(2)(B) (“For each item or category, the response
must . . . state with specificity the grounds for objecting to the request, including the
reasons.”); see also TBMP § 405.04(b). Any objection that is not stated with specificity
is considered waived.
2. Document Request No. 1
Document Request No. 1 seeks all documents relating to the development,
selection and/or adoption of Applicant’s marks.23 In response to the motion, Applicant
responds: “As set out in the Applicant’s response to the Opposition and initial
disclosure, the Mad Monster Party is a tribute to an animated film of the same name.
The cover image of that film was produced as was other Horror Convention names
23 22 TTABVUE 34.
Opposition No. 91239678 (parent)
Opposition No. 91244601
10
that were taking into consideration to avoid similarities.”24 Opposer complains that
“these documents are not responsive to Opposer’s request for all documents relating
to the development, selection, and/or adoption of Applicant’s Marks.”25
Information concerning Applicant’s selection and adoption of its involved mark for
involved goods and services is discoverable. See Goodyear Tire & Rubber Co. v. Tyrco
Indus., 186 USPQ 207, 208 (TTAB 1975); Volkswagenwerk AG v. MTD Prods. Inc.,
181 USPQ 471, 473 (TTAB 1974) (identification of persons who suggested use of
involved mark on involved goods is not improper); see also TBMP 414(4). Opposer
claims he produced a document showing the origin of the selection of its mark – a
movie entitled “Mad Monster Party.”
Accordingly, Opposer’s motion to compel with respect to Document Request No. 1
is granted with respect to the involved goods and services. To the extent Applicant
contends that he has already produced all non-privileged responsive documents in
his possession, custody, and control, however, Applicant should so state in his
supplemental response.
3. Document Request No. 2
Document Request No. 2 requests all documents relating to the first use of
Applicant’s marks.26 Opposer complains that Applicant has only produced documents
24 25 TTABVUE 6.
25 27 TTABVUE 6.
26 22 TTABVUE 34.
Opposition No. 91239678 (parent)
Opposition No. 91244601
11
from 2012, whereas his pending applications claim first use of the mark in 2010.27
Applicant responds that he no longer has any documents from 2010.28
Information concerning a party’s first use of its involved mark is discoverable. See,
e.g., Georgia-Pacific Corp. v. Great Plains Bag Co., 190 USPQ 193, 195-96 (TTAB
1976) (dates petitioner’s plants first began production of goods bearing mark are
pertinent to claim of priority); Miller & Fink Corp. v. Servicemaster Hosp. Corp., 184
USPQ 495, 496 (TTAB 1975) (must provide name, address and occupation of persons
to whom service was first rendered). See also Double J of Broward Inc. v. Skalony
Sportswear GmbH, 21 USPQ2d 1609, 1613 (TTAB 1991) (use or intended use of
applicant’s mark in commerce with U.S. is relevant).
Accordingly, Opposer’s motion to compel with respect to Document Request No. 2
is granted. To the extent Applicant contends that he has already produced all non-
privileged responsive documents in his possession, custody, and control, however,
Applicant should so state in his supplemental response.
4. Document Request No. 5
Document Request No. 5 seeks all documents relating to how Applicant’s marks
have been or will be used, advertised or promoted in the United States, including, but
not limited to, representative samples of all advertising and/or marketing materials
used by Applicant or considered by Applicant for potential use in connection with
27 27 TTABVUE 6, 14.
28 25 TTABVUE 6.
Opposition No. 91239678 (parent)
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12
Applicant’s marks.29 In response, Applicant referred Opposer to “news articles,
advertisings, content on MadMonster.com, and other materials disseminated to the
public and equally available to the Opposer.”30 Opposer argues that Applicant has
not produced any images showing use of Applicant’s marks its conventions, Mad
Monster Radio shows, and/or Mad Monster Movie Nights, any magazines that use
Applicant’s marks, and any documents evidencing where all of the advertisements
shown in its renderings have been used.31 In response, Applicant states documents
are available on its website and the request is overbroad.32
To the extent Applicant points to documents that are “equally available,”
Applicant’s response is insufficient. In responding to document requests, Applicant
must state whether or not he has responsive documents in his possession, custody or
control and, if so, state that such documents will be produced or that such documents
are being withheld, based on a claim of privilege. Fed. R. Civ. P. 34(b)(2)(B)–(C); No
Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).
Samples of advertising materials for the involved goods and services—namely,
horror conventions and magazines—are relevant to the conditions of sale and thus
are discoverable. A party need not provide discovery with respect to those of its marks
and goods and/or services that are not involved in the proceeding and have no
29 22 TTABVUE 35.
30 Id. at 221.
31 Id. at 13.
32 25 TTABVUE 5.
Opposition No. 91239678 (parent)
Opposition No. 91244601
13
relevance thereto. Where the goods of the parties differ, however, “information from
which it may be learned whether the parties market some goods of the same type is
relevant to establishing the relationship between the goods of the parties. This
information may lead to the discovery and introduction of admissible evidence
concerning likelihood of confusion.” TBC Corp. v. Grand Prix Ltd., 16 USPQ2d 1399,
1400 (TTAB 1990) (citations omitted).
Here, Opposer has pleaded that it uses its “monster” formative marks in
connection with live events including music events, and promotes its goods through
printed, audio and visual promotional materials.33 Accordingly, Opposer’s motion to
compel is granted as to Document Request No. 5 as to Applicant’s horror
conventions, magazine, MAD MONSTER radio shows and MAD MONSTER movie
nights.
5. Document Request Nos. 19 and 20
Document Request Nos. 19 and 20 request all documents relating to the
characteristics, demographics, or classes of persons and the target purchasers for
Applicant’s goods and services.34 Opposer claims Applicant has not produced any
responsive documents; Applicant states that he has “produced documents to the
extent they exist. There is no specific study or demographic assessment to classify
target purchasers. Applicant target horror fans of all shapes and sizes.”35
33 1 TTABVUE 11-13, ¶¶ 4-6.
34 22 TTABVUE 37.
35 25 TTABVUE 6.
Opposition No. 91239678 (parent)
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14
The classes of customers for a party’s involved goods or services are discoverable.
J.B. Williams Co. v. Pepsodent GmbH, 188 USPQ 577, 580 (TTAB 1975) (must
identify class of customers who purchase products under mark, but not names of
customers). Accordingly, Opposer’s motion to compel is granted as to Document
Request Nos. 19 and 20 as to Opposer’s involved goods and services. To the extent
Applicant contends that it has already produced all non-privileged responsive
documents in his possession, custody, and control, however, Applicant should so state
in his supplemental response.
6. Document Request No. 21
Document Request No. 21 requests documents sufficient to show the current
wholesale and retail prices for Applicant’s goods and services.36 Opposer contends
Applicant has not produced any documents showing the prices of tickets for events or
magazines. Applicant responds:
Documents have been produced as the price for ticket sales is equally
available on the Mad Monster website and previous a screen shots for
ticket sales page has been presented. Additionally, although not the
service or products the marks are promoting, various goods are sold on
the website, including the magazines and advertising paraphernalia
such as t-shirts. Printed screen shots of these have also been produced.37
The prices of the applicable goods and services may be relevant to the conditions
of sale and are discoverable. See, e.g., Edom Labs., Inc. v. Llichter, 102 USPQ2d 1546,
1552 (TTAB 2012) (considering price as part of conditions of sale). Again, merely
36 22 TTABVUE 37.
37 25 TTABVUE 6.
Opposition No. 91239678 (parent)
Opposition No. 91244601
15
referring to documents that are “equally available” is insufficient. No Fear, 54
USPQ2d at 1555.
However, Opposer has not explained the relevance of wholesale prices of
Applicant’s goods, and the Board finds that such information is not relevant to this
proceeding.38 Accordingly, Opposer’s motion to compel is granted in part as to
Document Request No. 21 to the extent that Applicant must produce non-privileged
documents and things sufficient to show the current retail prices for Applicant’s
involved goods and services (including magazines) sold under the challenged marks.
To the extent Applicant contends that he has already produced sufficient responsive
documents in his possession, custody, and control to show current prices of
Applicant’s goods and services, however, Applicant should so state in his
supplemental response.
7. Document Request No. 28
Document Request No. 28 requests documents sufficient to show Applicant’s
efforts to enforce rights in Applicant’s marks against any third party.39 Opposer
argues no such documents have been produced; Applicant responds that documents
relating to his application are relevant and have been produced, but he has not
38 Opposer’s complaint that “Applicant’s website shows ticket prices for upcoming MAD
MONSTER PARTY events in North Carolina and Arizona, it does not show prices for past
events” also is irrelevant. See 27 TTABVUE 8, 16 (Declaration of Nicole Townes, ¶ 6).
Document Request No. 21 requests documents regarding “current” prices only.
39 22 TTABVUE 38.
Opposition No. 91239678 (parent)
Opposition No. 91244601
16
enforced his mark against any third parties and therefore has no further
documents.40
Information concerning litigation and controversies including settlement and
other contractual agreements between a responding party and third parties based on
the responding party’s involved mark is discoverable. See Am. Soc’y of Oral Surgeons
v. Am. College of Oral & Maxillofacial Surgeons, 201 USPQ 531, 533 (TTAB 1979)
(relevant to show admissions against interest, limitations on rights in mark, course
of conduct leading to abandonment, that the mark has been carefully policed, etc.);
see also TBMP § 414(10).
Accordingly, Opposer’s motion to compel is granted as to Document Request No.
28. To the extent Applicant contends that he already has produced sufficient
responsive documents in his possession, custody, and control, however, Applicant
should so state in his supplemental response.
8. Document Request No. 32
Document Request No. 32 requests documents “sufficient to show any mention in
the press of Applicant’s marks. . . .”41 Opposer states Applicant has failed to produce
any press releases, webpages, magazines, newspapers, or other printed publications
containing articles or stories about Applicant or his goods and services.42 Applicant
argues that he has produced his website which “includes new pressings and
40 25 TTABVUE 6.
41 22 TTABVUE 38.
42 Id. at 14.
Opposition No. 91239678 (parent)
Opposition No. 91244601
17
promotional.”43 Applicant further contends he does not maintain third party articles
about his events but further states to the extent they exist, they are “equally
available.”44
Documents reflecting news coverage go to the fame of Applicant’s mark as an
element of the likelihood of confusion analysis and as such are discoverable. See, e.g.,
Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014).
Again, to the extent Applicant points to documents that are “equally available,”
Applicant’s response is insufficient. Applicant must state whether or not he has
responsive documents in his possession, custody or control and, if so, state that such
documents will be produced or that such documents are being withheld, based on a
claim of privilege. Fed. R. Civ. P. 34(b)(2)(B)–(C); No Fear Inc., 54 USPQ2d at 1555.
Accordingly, Opposer’s motion to compel is granted as to Document Request No.
32. To the extent Applicant contends that he has already produced all responsive
documents in his possession, custody, and control, Applicant should so state in his
supplemental response.
9. Interrogatory No. 3
Interrogatory No. 3 requests that Applicant identify all goods and services that
have been promoted, rendered, sold, or offered under each of Applicant’s involved
marks. Opposer argues that, although Applicant has identified his conventions,
43 25 TTABVUE 7.
44 Id.
Opposition No. 91239678 (parent)
Opposition No. 91244601
18
magazine and radio show, he has failed to identify other goods sold under his marks
such as beer and candy bars.45
Opposer responds:
The beer Opposer cited was not included under Design Marks at issue
here as the USTPO found the Design Mark was not identical. The candy
bars were used for advertisement purposes similar to a t-shirt.
Applicant is not in the business of promoting candy sales. Thus neither
of those are truly responsive to the request, but are included due to the
vague overbroad nature of the Interrogatory.
In view of Opposer’s pleaded rights in food and beverage products, the Board finds
that information related to Applicant’s food and beverage products may lead to the
discovery and introduction of admissible evidence concerning likelihood of confusion.
See TBC Corp., 16 USPQ2d at 1400 (related goods and services discoverable).
In view thereof, Opposer’s motion to compel a complete response to Interrogatory
No. 3 is granted as to Applicant’s food and beverage products. Applicant must
supplement his response by listing each such product “promoted, rendered, sold, or
offered” under each of Applicant’s challenged marks – whether offered for sale or of a
promotional nature.
10. Summary
Opposer’s motion to compel a supplemental response to Interrogatory No. 7 is
denied without prejudice.
Opposer’s motion to compel is granted in part to the extent that Applicant is
ordered, within thirty days from the date of this order, to supplement his responses
45 22 TTABVUE 15.
Opposition No. 91239678 (parent)
Opposition No. 91244601
19
(and produce responsive documents) as specified above with respect to Requests for
Production Nos. 1, 2, 5, 19-21, 28, and 32, and Interrogatory No. 3.46
In addition, to prevent further delay in this proceeding and subject to the Board’s
inherent authority to manage the cases on its docket, to the extent there are any
remaining discovery disputes in this proceeding, the parties are required to
conduct at least one teleconference to address each of their disputes in
substance before the Board will entertain any further motions to compel
with regard to such disputes. Written correspondence alone will not be sufficient
to establish that the parties have satisfied the requirement that the parties engage
in a good faith effort to resolve their disputes before bringing them before the Board.
The parties are reminded that they are expected to present the merits of their
positions with candor, specificity and support during informal negotiations. Amazon
Techs. Inc., 93 USPQ2d at 1705.
The Board also reminds the parties that a party that fails to provide information
or documents during discovery may, upon motion or objection by its adversary, be
precluded from using that information or documents at trial, “unless the failure was
substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1); see, e.g., Panda Travel,
Inc. v. Resort Option Enters., Inc., 94 USPQ2d 1789, 1792–93 (TTAB 2009)
(documents not produced until after the start of trial stricken); see also TBMP
46 If, in response to this order, Applicant withholds any documents based on a claim of
privilege, then Applicant also must produce a privilege log that comports with the
requirements of Fed. R. Civ. P. 26(b)(5)(A)(i)–(ii) within thirty days of this order.
Opposition No. 91239678 (parent)
Opposition No. 91244601
20
§ 527.01(e) (estoppel sanction) and cases cited therein. Furthermore, parties have a
duty to supplement discovery responses “in a timely manner if the party learns that
in some material respect the disclosure or response is incomplete or incorrect, and if
the additional or corrective information has not otherwise been made known to the
other parties during the discovery process or in writing.” Fed. R. Civ. P. 26(e)(1)(A).
D. Depositions
Opposer also requests that the Board extend the proceeding deadlines to allow
Opposer to take the previously noticed deposition of Applicant.47 Opposer does not
mention the deposition of its own witness, which it refused to produce on November
9, 2020 as scheduled. Opposer first informed Applicant that the Board’s rules provide
that motions to compel suspend the proceedings and raised issues such as purported
irregularities in the notice of deposition to justify cancelling the deposition. Only after
Applicant responded that suspension for motions to compel do not toll the time for a
party to appear for any noticed discovery depositions, Trademark Rule 2.120(f), 37
C.F.R. § 2.120(f), did Opposer claim its witness was no longer available.48 Opposer
stated it would not provide its witness for deposition until after the motion to compel
was decided and after Applicant’s counsel provided alternative dates for the
deposition of Applicant.
47 27 TTABVUE 10.
48 See 25 TTABVUE 8. The Board notes Opposer has not moved to quash the allegedly
insufficient notice or for a protective order. See Trademark Rule 2.120(g), 37 C.F.R. § 2.120(g).
See also TBMP §§ 410, 521.
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The Board is troubled by Opposer’s shifting positions and representations,
including its misstatements as to effect of the filing of its motion to compel. It seems,
however, Applicant also has not been entirely cooperative in scheduling depositions.49
The Board will not tolerate failures to cooperate. With regard to the scheduling of
depositions, the Board reminds the parties that discovery before the Board is not
governed by any concept of priority of discovery – that is, a party is not relieved of its
discovery obligations, including its duty to cooperate, in spite of the fact that an
adverse party wrongfully may have failed to fulfill its own obligations. See, e.g.,
Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (TTAB 2009).
Accordingly, pursuant to Fed. R. Civ. P. 26(c)(2), Trademark Rule 2.120(g), and
the Board’s inherent authority “to manage its docket, to prevent undue delays, and
to regulate the conduct of those who appear before it,” Carrini, Inc. v. Carini S.R.L.,
57 USPQ2d 1067, 1071 (TTAB 2000), the parties are allowed sixty days from the
date of this order to serve the opposing party with notices of deposition pursuant to
Fed. R. Civ. P. 30(b)(1) to be set at a mutually agreeable date and time, and must
conduct such depositions no later than ninety days from the date of this order.50 The
Board expects that the parties will cooperate to address the most suitable means for
49 See 22 TTABVUE 8-9.
50 These dates may not be extended unless granted by the Board upon an appropriate motion.
Even if any such motion is consented, the parties must use the “general” filing option
on ESTTA rather than the “consented” motions filing. Any such motion must set forth
detailed reasons for the requested extension.
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taking the depositions.51 Any attempted gamesmanship in scheduling or attending
the depositions will not be tolerated.
E. Proceedings Resumed
Proceedings are resumed. Discovery is extended for the limited purpose of
Applicant’s supplemental responses to discovery and the depositions to be noticed by
the parties as ordered herein. Dates for disclosures and trial are reset as follows:
Expert Disclosures Due 5/2/2021
Limited Discovery Closes 6/1/2021
Plaintiff’s Pretrial Disclosures Due 7/16/2021
Plaintiff’s 30-day Trial Period Ends 8/30/2021
Defendant’s Pretrial Disclosures Due 9/14/2021
Defendant’s 30-day Trial Period Ends 10/29/2021
Plaintiff’s Rebuttal Disclosures Due 11/13/2021
Plaintiff’s 15-day Rebuttal Period Ends 12/13/2021
Plaintiff’s Opening Brief Due 2/11/2022
Defendant’s Brief Due 3/13/2022
Plaintiff’s Reply Brief Due 3/28/2022
Request for Oral Hearing (optional) Due 4/7/2022
Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
51 Pursuant to Fed. R. Civ. P. 30(b)(4), depositions may be taken by remote means if stipulated
by the parties. Given the ongoing health risks from the COVID-19 pandemic, the Board
expects that the parties will cooperate to schedule depositions by videoconference or other
remote means.
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Trademark Rules 2.121 through 2.125. These include pretrial disclosures, matters in
evidence, the manner and timing of taking testimony, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).
* * *