*1 PYTTRONIC INDUSTRIES, INC.
v.
TERK TECHNOLOGIES CORPORATION
Opposition No. 81,744
May 29, 1990
Michael F. Petock for Pyttronic Industries, Inc.
46 The Commons at Valley Forge
1220 Valley Forge Road
P. O. Box 856
Valley Forge, PA 19481-0856
Martin A. Levitin, Bryan 7 Kevitin
330 Madison Avenue
33rd Floor
Before Wendel
Attorney-Examiner
Helen R. Wendel
Attorney Examiner
Applicant, on April 26, 1990, has filed a motion for a protective order pursuant to Trademark Rule 2.120(d)(1), on the grounds that the interrogatories served by opposer on March 27, 1990 substantially exceeded seventy-five and that applicant is not willing to waive its objection. A copy of the interrogatories has been submitted with the motion.
Opposer, on May 1, 1990, has filed its response to the motion, arguing that the motion is premature in that applicant failed to attempt to resolve the problem before filing its motion and that opposer's counsel is willing to pare down any unnecessary interrogatories, although most are necessary for a proper adjudication of the case. [FN1]
Under amended Trademark Rule 2.120(d)(1), effective November 16, 1989, the total number of written interrogatories which a party may serve upon another party in a proceeding before the Board shall not exceed seventy-five, counting subparts, except upon motion by a party for additional interrogatories with a showing of good cause therefor or upon stipulation by the parties. If a party upon which interrogatories have been served believes that the number of interrogatories served exceeds the limitation and is not willing to waive this basis for objection, the party shall, within the time for (and instead of) serving answers and objections to the interrogatories, file a motion for a protective order, accompanied by a copy of the interrogatories.
Applicant asserts that opposer's interrogatories number over 390, when the subparts of the 52 interrogatories are counted. Upon a review thereof, the Board agrees that the interrogatories exceed the 75 limitation of Rule 2.120(d)(1). Although opposer may argue that the subparts are "clarifications and a convenience for breaking down of the questions"D', each subpart must be separately counted under Rule 2.120(d)(1). Accordingly, applicant was acting within the provisions of Rule 2.120(d)(1) when it elected to file a motion for a protective order within the time for and instead of serving answers and objections to the interrogatories.
Furthermore, although the Board would encourage parties to attempt to resolve the issue of excessive interrogatories between themselves before applying to the Board for a protective order, there is no requirement in Rule 2.120(d)(1) that this be done. Thus, opposer's argument that applicant's motion should be denied as premature, in view of the failure of the parties to attempt to work out this issue, is without merit.
In view of the above, applicant's motion for a protective is granted. Applicant is relieved from answering opposer's interrogatories served March 27, 1990. Opposer is allowed until the close of discovery on July 25, 1990 to serve a revised set of interrogatories in their stead, not exceeding seventy-five in number, counting subparts.
*2 Trial dates, including the period for discovery, remain as set in the Board's order of April 25, 1990. [FN2]
FN1. Although opposer maintains that it did not receive a copy of the interrogatories with the motion, the motion as filed with the Board did include a copy thereof, as previously noted. Moreover, it is assumed that opposer is familiar with the requests in issue. Opposer's further comments with respect to delayed delivery of the motion do not appear to raise a serious problem, in view of the promptness of opposer's response to the motion.
FN2. Opposer has filed, on April 16, 1990, an answer to the "purported"D' first counter-claim of applicant, accompanied by a motion that paragraph 6 (headed First Counter-Claim) of applicant's answer be stricken as "improper and ineffectively asserted"D'. Applicant has failed to respond to this motion.
Opposer's motion is granted, as uncontested. Trademark Rule 2.127(a). Moreover, the motion is well taken. Although entitled a counterclaim, paragraph 6 of the answer is improper in that it consists of a petition to cancel any registration which might issue in the future from a pending application which had been pleaded by opposer. Such a hypothetical pleading is not permitted. Moreover, the requisite fee for the filing of a petition to cancel was not submitted therewith. The Board would note that the pleaded application has now issued as a registration and applicant remains free to file a motion to amend its answer and assert a proper counterclaim. Fed. R. Civ. P. 15(a). Opposer's answer will be given no further consideration.