Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 JOHNSTON PUMP/GENERAL VALVE, INC.
v.
CHROMALLOY AMERICAN CORPORATION
Opposition No. 76,991
November 17, 1988
Beth A. Chapman
Attorney-Examiner, Trademark Trial and Appeal Board
Chromalloy American Corporation has filed an application to register the mark shown below (in reduced form)
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
for float valves for use in downhole drill pipe. [FN1]
Johnston Pump/General Valve, Inc. has opposed registration on the ground that applicant's mark, when applied to its goods, so resembles opposer's previously used mark GV and the previously used and registered mark GV (stylized) as to be likely to cause confusion. [FN2]
In its answer, applicant admits that opposer is engaged in the manufacture and sale of valves; that opposer is the owner of Reg. No. 795,042; and that applicant's float valve is a special type of valve, but applicant has denied the remaining allegations.
This case now comes up on the following motions: [FN3]
(1) Applicant's motion, filed June 27, 1988, for extension of discovery and trial dates;
(2) Applicant's motion, filed July 5, 1988, for an order to compel discovery;
(3) Opposer's motion, filed July 18, 1988, for a protective order;
(4) Applicant's motion, filed August 16, 1988 to suspend proceedings;
(5) Applicant's motion, filed August 19, 1988 to quash opposer's notice of taking testimony; and
(6) A stipulation (amended) to suspend proceedings, filed August 25, 1988.
The Board first turns to applicant's motion for an order to compel discovery and to opposer's motion for a protective order. [FN4]
In support of its motion to compel applicant has filed a brief, a copy of the transcript of the deposition of Mr. Charles Kenneth Clark, a supplemental memorandum, [FN5] and the declaration of Mr. Richard P. Burgoon, Jr., applicant's attorney, which attests to the applicant's good faith effort to resolve with opposer the issues presented in the motion to compel.
Applicant asserts that, on June 16, 1988, applicant's attorney attempted to depose Mr. Charles Kenneth Clark, opposer's director of legal administration, and who was designated by the opposer to testify on opposer's behalf since Mr. Clark was the individual who had read and reviewed opposer's answers to applicant's interrogatories in the present opposition proceeding.
The specific area of dispute involves a plethora of questions [FN6] posed by applicant. The Board has carefully perused the transcript of the deposition of Mr. Clark. The questions to which applicant has moved for an order to compel fall into the following general categories:
(1) The specific goods upon which opposer uses the mark GV, which involve a variety of valves,
(2) Information as to four way diverter valves,
(3) A physical description of the marks which are the subject of this opposition proceeding,
(4) The intent of opposer, to expand its business to include products used in down hole operations and/or to manufacture and sell float valves,
*2 (5) Opposer's customers to whom it sells its valves bearing the mark GV,
(6) The number of salesmen and the locations of the sales representatives of opposer,
(7) The geographic locations of, and the names of the dealers who market and distribute the products which bear opposer's mark,
(8) Licensing agreements and arrangements as between Opposer and Chevron, and the amount of sales to Exxon and Chevron,
(9) The technical expertise of the purchasers of opposer's valve products and requests, if any, by those purchasers, as to those types of valves manufactured by applicant,
(10) Opposer's awareness of others in the industry who may happen to use GV on any product,
(11) The date of assignment of the mark GV from Aerojet to Johnston Pump/General Valve, Inc. and whether the mark has been in continued use by opposer since 1965,
(12) Whether deponent believes the marks in question to be confusingly similar,
(13) The sophistication of purchasers, and
(14) Questions relating to the petroleum industry.
The thrust of applicant's motion for an order to compel discovery is predicated upon the total failure of deponent to answer questions posed to him, regarding specific areas of inquiry during a discovery deposition, as instructed by counsel for opposer. Applicant further maintains that the areas of inquiry which applicant wishes to pursue and which deponent refuses to answer, upon advice of opposer's counsel, are relevant to this case and are proper discovery herein.
In contradistinction to applicant's position, the thrust of both opposer's opposition to applicant's motion for an order to compel discovery and in support of opposer's motion for a protective order [FN7] is predicated principally on an allegation of harassment on the part of applicant during applicant's discovery period; that several matters are irrelevant herein; that some questions had been answered in interrogatories and opposer's counsel refused to allow the witness to answer; and that the questions must be restricted to the scope of applicant's notice of deposition. Opposer acknowledges that the witness, on advice of counsel, refused to answer certain questions posed to him during applicant's discovery deposition, but contends that such refusals to answer were proper where, as determined by opposer, such questions of applicant were found to be irrelevant and immaterial, involved the divulging of confidential information which is to be treated as a trade secret, involving the drawing of legal conclusions on the part of deponent or were, according to opposer, absurd and harassing.
Since the parties herein have apparently not been able to resolve their differences, the Board is compelled to resolve the matter for them. Nonetheless the Board reiterates the maxim that "... each party and its attorney has a duty not only to make a good faith effort to satisfy the discovery needs of its opponent but also to make a good faith effort to seek only such discovery as is proper and relevant to the specific issues involved in the case." Medtronic Inc. v. Pacesetters Systems, Inc., 222 USPQ 80, 83 (TTAB 1984). The Board acknowledges the parties' impasse and will clarify the extent to which applicant is entitled to receive answers. With regard thereto, attention is directed to Rule 2.120(e) which provides in part that a motion to compel will rest where a party fails or refuses to answer any proper question in taking discovery depositions. The narrow issue centers around the propriety of the specific questions asked of deponent.
*3 Upon close perusal of the transcript of the oral deposition of Mr. Clark, the Board is not persuaded that applicant's questions are so oppressive as to constitute clear harassment. As the Board has previously stated, "[d]uring discovery, a party may seek not only testimony and exhibits which would be admissible evidence but also information that would be inadmissible at trial if the information appears reasonably calculated to lead to the discovery of admissible evidence. See Rule 26(b)(1), FRCP; Fischer Gesellschaft M.B.H. v. Molnar and Co., Inc., 203 USPQ 561, 565 (TTAB 1979). Accordingly, opposer's general allegation of harassment is not well taken.
Turning now to the specific dispute, centering around the propriety of applicant's inquiry into certain areas as summarized above, it is adjudged, first, that applicant's questions concerning the specific goods upon which opposer uses the mark, involving apparently a variety of valves, the purport of and/or parts of opposer's valves, and a physical description of the marks which are involved in this proceeding are proper areas of inquiry to the extent that the scope of inquiry is limited to those valve goods listed in the identification of goods or involve goods of a type marketed by applicant, or otherwise involve valves which have been mentioned by opposer during the discovery. See, generally, American Optical Corp. v. Exomet, Inc., 181 USPQ 120 (TTAB 1974).
Second, it is adjudged that applicant's questions concerning licensing agreements and arrangements between opposer and third parties and sales thereto, and matters involving the assignment of the mark and its use thereof by opposer should be answered. See American Optical Corp., supra, Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167 (TTAB 1979). However, applicant's query concerning opposer's awareness of others in the industry who may happen to use GV on any product need not be answered except to the extent that opposer is presently aware of such use by third parties for valves or related goods or services. That is, opposer need not investigate the matter in order to answer the discovery question, but the witness must answer to the extent the information is known to him. See American Society of Oral Surgeons v. American College of Oral and Maxillofacial Surgeons, 201 USPQ 531 (TTAB 1979).
Third, it is adjudged that applicant's questions concerning the technical expertise of the purchasers of opposer's valve products, including requests, if any, by those purchasers, as to those types of valves manufactured by applicant, have direct bearing on the issue of likelihood of confusion. The Board has heretofore considered the sophistication of purchasers a factor in assessing the likelihood of confusion. See, e.g., Quartz Radiation Corp. v. Comm/Scope Co., 1 U.S.P.Q.2d 1668 (TTAB 1986); Crocker National Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986). Hence, applicant's inquiry into the area of the technical expertise of the purchasers of opposer's valves, including requests by those purchasers for valves of a type manufactured by applicant, are relevant to this proceeding. The scope of inquiry herein involves a matter of fact. Applicant's inquiry does not require opposer to draw a legal conclusion, contrary to opposer's contention.
*4 Fourth, it is adjudged that applicant's questions concerning the number of salesmen and the locations of the sales representatives of opposer who market opposer's valve products bearing the mark GV, and the geographic locations of the dealers who market and distribute the products which bear opposer's mark are relevant areas of inquiry but only if limited to the mark GV as used on goods as set forth in opposer's registration. See Volkswagenwerk A.G. v. MTD Products, Inc., 181 USPQ 471 (TTAB 1974).
Fifth, a party need not reveal the names of its customers (including dealers), it is sufficient that the classes of customers or types of businesses involved be specified. However, a party usually is required to furnish the name and address of its first customer in order to verify its claimed date of first use. Also a party may be required to furnish, under protective order, the names of one or two of its customers for each year of a specified period of years, if there is a question of possible abandonment involved. See Fisons Limited v. Capability Brown Limited, 209 USPQ 167 (TTAB 1980).
Sixth, it is adjudged that questions pertaining to the intent of opposer to expand its business to include the manufacture of products which will be used in down hole operations and the intent of opposer to manufacture and market valves similar to those of applicant are relevant to proceedings herein to the extent that such questions draw light on the possibility of expansion in trade. Expansion of trade is definitely a factor for consideration. See Humana Inc. v. Humanomics, Inc. 3 U.S.P.Q.2d 1696 (TTAB 1987); and MSI Data Corp. v. Microprocessor Systems, Inc., 220 USPQ 655 (TTAB 1983). Also appropriate questions relating to the petroleum industry are relevant herein.
Finally, applicant's singular query concerning whether opposer believes the marks in question to be confusingly similar does require opposer to draw a legal conclusion as to the ultimate issue to be decided by the Board. However, opposer brought this action on the basis of likelihood of confusion; a question is not necessarily objectionable merely because it requires a party or witness to give an opinion or contention that relates to the application of law to fact; and the subject question is clearly relevant herein. Accordingly, the witness must answer this question.
The Board is not unmindful that several of applicant's queries, (i.e. dealers, customers) may encroach on confidential matters, as so asserted by opposer in its motion for a protective order and in its opposition to applicant's motion for an order to compel discovery. [FN8] Opposer has indicated in particular that questions concerning (1) the intent of opposer to commence the manufacture of goods similar to those of applicant, (2) the first customer to whom opposer sold its valves bearing the mark GV, (3) the number of salesmen and locations of sales offices, and (4) the geographic locations of dealers who market and distribute the products bearing the GV mark, touch on confidential matters which must be protected. Applicant has indicated its willingness to enter into a protective order pursuant to Rule 26(c), FRCP. Accordingly, * * * the four aforementioned areas of inquiry, constituting asserted trade secret or confidential information of opposer, are relevant and discoverable areas of inquiry to the extent hitherto established by the Board, and the parties should work out a protective order under which the information is to be provided; and they are allowed until December 2, 1988 in which to do so. In addition to those areas of inquiry for which a protective order is mandated by the Board, such an order may also contain such other provisions as are agreeable to the parties. For the proper format to be followed in preparing the order see Neville Chemical Co. v. The Lubrizol Corp., 184 USPQ 689 (TTAB 1975); and R. Simms, Tips From The TTAB: Stipulated Protective Agreements, 71 TMR 653, 656 (1981).
*5 Applicant's motion to compel is granted as indicated, [FN9] and opposer's motion for a protective order is granted as indicated.
Turning next to applicant's motion for extension of discovery and trial dates, applicant requests an extension of time to complete its discovery which was initiated before June 27, 1988, the closing date for discovery. Applicant asserts that additional time to complete discovery is required because opposer had obstructed applicant's attempt to take the deposition upon oral examination of a witness (Mr. Charles Kenneth Clark) designated pursuant to Rule 30(b)(6), FRCP. Applicant contends that opposer's attorney's conduct in instructing the witness not to answer was contrary to law. Applicant cites in support of its contention to Rule 30(c), FRCP, wherein evidence objected to shall be taken subject to the objections.
Opposer in turn has filed its opposition to applicant's motion for extension of discovery and trial dates conceding that instructing the witness not to respond "was not technically a correct instruction", but arguing essentially that applicant has had sufficient time to complete its discovery and that applicant has submitted additional discovery requests in its motion for an order to compel [although opposer has failed to set forth the nature of those additional discovery requests].
The Board has thoroughly considered the parties' arguments for and against extension of the discovery period. We believe that an extension of the period for discovery is warranted, but only for the specific purpose of completing the discovery deposition of Mr. Charles Kenneth Clark initiated by applicant. [FN10]
The Board turns, finally, to applicant's motion to suspend proceedings and its motion to quash opposer's notice of taking testimony. The parties have, through their amended stipulated request to suspend proceedings, filed August 25, 1988, requested to withdraw the motion to quash and to otherwise suspend proceedings until the remaining motions have been decided. [FN11] The parties' amended stipulation to suspend is predicated upon the following conditions as set forth by the parties: (1) that all evidence submitted by opposer during the currently set testimony period under a Notice of Reliance be accepted as timely filed, [FN12] and (2) that the trial dates be reset so that opposer's testimony period begins 30 days after the close of any extension of the discovery period or 60 days after determination of the last of the now-pending motions, whichever is later, and that the remaining testimony periods be reset accordingly.
The amended stipulation is approved, applicant's motion to quash is withdrawn and will not be further considered herein, and proceedings herein are deemed to have been suspended pending a decision on the discovery matters. The parties are allowed until December 19, 1988 in which to schedule and complete the deposition of Mr. Clark. [This case does not involve myriad complex issues; both parties have obtained at least some discovery, and the Board sees no need for further discovery herein.]
*6 Both parties are reminded that if proper discoverable matter is withheld from the requesting party, the responding party will be precluded from relying on such information and from adducing testimony with regard thereto during its testimony period. See Shoe Factory Supplies Co. v. Thermal Engineering Company, 207 USPQ 517 (TTAB 1980). Also, both parties are strongly urged to cooperate in discovery and the orderly completion of this case. The Board looks with disfavor on the actions of the parties herein.
Trial dates are rescheduled as indicated in the accompanying trial order.
In summary, applicant's motion to compel is granted as indicated; opposer's motion for a protective order is granted as indicated; applicant's motion to extend discovery and trial dates is granted in that discovery is extended only for the purpose of completing applicant's discovery deposition of Mr. Clark, and trial dates are reset; applicant's motion to suspend is moot; applicant's motion to quash is considered withdrawn; and the parties amended stipulation to suspend is approved.
FN1. Application Serial No. 628,960 filed November 6, 1986, and claiming dates of first use and first use in interstate commerce of March, 1986.
FN2. Reg. No. 795,042 issued August 31, 1965; Section 8 accepted, Section 15 filed. The registration is for rotary plug valves and rotary gate valves for the mark shown below (in reduced form)
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
The registration includes a statement that "the mark consists of the letters 'GV'."
FN3. Both parties have filed reply briefs, and reply briefs to reply briefs. Consideration of the parties' reply briefs is discretionary on the part of the Board, and we find that the issues involved herein and the arguments of the respective parties on the various motions need not be augmented by reply briefs. Accordingly, none of the reply briefs filed herein were considered in reaching the decisions on the matters now before the Board. See Avon Products, Inc. v. MarCon, Ltd., 225 USPQ 977 (TTAB 1985).
FN4. It is believed helpful to review briefly the facts immediately preceding the parties' discovery dispute. The close of discovery was originally set for May 30, 1988. On May 6, 1988, the parties filed a stipulation to extend the discovery and trial dates, wherein discovery was to close on June 29, 1988, which the Board approved on May 19, 1988. On June 16, 1988, applicant's attorneys attempted (unsuccessfully), to take the discovery deposition of Mr. Charles Kenneth Clark, opposer's director of legal administration. The unsuccessful attempt to depose Mr. Clark has culminated in the motions now before the Board.
FN5. In applicant's supplemental memorandum to applicant's motion for an order to compel discovery, applicant asserts that prior to making the present motion for an order to compel before the Trademark Trial and Appeal Board, the applicant had sought relief, pursuant to Rule 37, FRCP, for an order from the U.S. District Court for the Central District of California, compelling opposer to attend a further deposition. Applicant has filed a copy of the order of U.S. Magistrate Volney F. Brown, Jr. who declined to adjudicate applicant's ex parte motion for an order compelling discovery. The Magistrate held, "[t]he application is denied expressly without prejudice to its renewal here should the TTAB in turn decline to act or by order refers the matter back to this court."
FN6. Applicant has highlighted questions encompassing 60 pages of the transcript of the deposition of Charles Kenneth Clark, which deponent, on advice of his counsel, failed to answer.
FN7. Opposer has attached to its motion for a protective order a copy of a "(proposed) protective order". Applicant filed a "proposed order" with its motion to compel. Both parties are advised that such "proposed orders", although perhaps used in Court, need not be filed with the Board.
FN8. Applicant has filed its opposition to opposer's motion for a protective order asserting that opposer's motion for a protective order is untimely; that a motion under Trademark Rule 2.120(f) can only be made prior to a deposition. However, the Board has recognized that, in inter partes proceedings before the Board, protective orders are most frequently sought in response to motions to compel where, as here, the matter sought to be discovered assertedly constitutes a trade secret or confidential information which may be held to be discoverable or where the matter sought to be discovered is relevant and necessary to the presentation of the case. Opposer's motion for a protective order has, then, been timely filed insofar as opposer seeks to keep certain information, as sought by applicant, confidential.
FN9. Opposer is specifically advised (as opposer already knew) that the proper procedure in objecting to a question is to enter the objection in the record and allow the witness to answer the question subject to the objection.
FN10. Opposer produced Mr. Clark pursuant to applicant's Rule 30(b)(6), FRCP, notice of deposition. The Board presumes that Mr. Clark is therefor the appropriate knowledgable person. If that is not the case, then applicant may complete discovery through the appropriate Rule 30(b)(6) witness(es).
FN11. Applicant's motion to suspend is moot in view of the subsequent stipulation to suspend.
FN12. Opposer's notice of reliance filed August 29, 1988 (via a certificate of mailing) is noted and is considered timely filed in this case.