Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 FORT HOWARD PAPER COMPANY
v.
C. V. GAMBINA, INC.
Opposition No. 69,705; 71,074
September 15, 1987
This case now comes up on the following motions:
(1) Applicant's motion, filed February 12, 1987, for a protective order.
(2) Applicant's motion, filed February 24, 1987, to compel.
(3) Applicant's motion, filed February 24, 1987, pursuant to Fed. R. Civ. P. 37(a) for sanctions.
(4) Applicant's motion, filed February 5, 1987, for leave to amend its application.
(5) Opposer's motion, filed February 26, 1987, for an extension of time to respond to applicant's motion for leave to amend its application.
(6) Opposer's request, filed March 13, 1987, for Rule 11 sanctions incorporated in opposer's brief in opposition to applicant's motion to compel.
(7) Opposer's motion, filed May 26, 1987, to strike applicant's notice of reliance.
(8) Opposer's motion, filed June 22, 1987, to enlarge its rebuttal period.
Robert L. Lindgren for Fort Howard Paper Company
George A. Bode for C. V. Gambina, Inc.
J.D. Sams, J.E. Rice and R.L. Simms
Members
Due to the frivolous nature of applicant's first three motions, as more fully discussed below, that is, APPLICANT'S MOTION FOR A PROTECTIVE ORDER, APPLICANT'S MOTION TO COMPEL, and APPLICANT'S MOTION FOR SANCTIONS, these motions are summarily DENIED.
We turn now to opposer's motion, in essence, for sanctions. [FN1] A brief review of the procedural history of this case is believed necessary.
The relevant history of this case commences on July 9, 1985, when applicant filed its first in a series of discovery motions. Applicant moved for a protective order on the grounds, inter alia, that opposer's discovery requests were unduly burdensome and harassing in volume, boilerplate in content and exceeded the number allowed under the local rules of the Eastern District of Louisiana. Applicant also moved for sanctions on the grounds that opposer had refused, unreasonably, to seasonably answer discovery.
The Board, in an order dated October 3, 1986 denied applicant's motion for a protective order and for sanctions noting, among other things, that the local rules of the Eastern District of Louisiana have no relevance to proceedings before the Board; that, in any event, opposer's discovery requests were not unduly burdensome and harassing; and that applicant's motion for Rule 37 (Fed. R. Civ. P.) sanctions was not legally cognizable by the Board since, under the Trademark Rules of Practice, a motion for sanctions for failure to answer discovery could not be entertained by the Board until the party failing to answer discovery had violated a Board order compelling such discovery. Moreover, it was pointed out that applicant's motion for sanctions could not be construed as a motion to compel because such a motion required, as a pre-requisite to judicial action, that the moving party attempt in good faith to resolve its differences with its adversary. Consequently, the Board issued an order requiring applicant to answer, or otherwise respond to, opposer's discovery requests within thirty days from the date of the order. A warning to applicant was also issued to the effect that:
*2 This Board has not suffered gladly the premature escalation of this conflict caused in large part by applicant's precipitous filing of its discovery motions without any good faith attempt to resolve its differences.
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Sanctions [against applicant] have not been entered in this case due, in large part, to our belief that applicant has acted out of lack of familiarity with our practice. Should it appear, however, as opposer contends, that applicant is attempting to engage its opponent and this Board in a war of attrition, this attempt shall [result in] sanctions.
Six weeks later the parties commenced their second in a series of discovery motions. Opposer filed a motion for judgment as by default on the grounds that applicant had failed to answer opposer's discovery requests as was required by the Board's prior order. Applicant responded by filing its own motion for judgment by default based upon the somewhat surprising allegations that the Board had ordered opposer, rather than applicant, to respond to discovery and that opposer had failed to comply therewith. In support of its motion, applicant submitted a letter purporting to show that applicant had attempted, in good faith, to resolve its differences with opposer, which letter is reproduced below in its entirety.
October 8, 1987
Dear Mr. Lindgren:
Pursuant to the action of the Trademark Trial and Appeal Board (mailed October 3, 1986) in the above-referenced consolidated oppositions, opposer has been found to be in violation of Rule 11 since it does not have the authority to refuse to answer discovery until after applicant responds to opposer's discovery. (§ p. 7) This being the case, applicant hereby makes demand that Opposer timely answer ('discovery must be answered in thirty days.' § p. 5) Applicant's Interrogatories and Request for Production of Documents and Things filed May 20, 1985. [FN2]
Because of the nature of these motions, as well as the pendency of a motion to quash the noticed deposition of applicant's corporate president, the Board held a telephone conference with the parties. During the course of the conference, applicant again was cautioned that it had a duty to cooperate in discovery; that it was applicant rather than opposer who had been ordered to answer discovery, primarily because applicant had failed to cooperate with opposer in any good faith attempt to resolve their differences; and that, in any event, it was clear that opposer, upon receiving applicant's answers to its outstanding discovery, had answered applicant's discovery requests. With respect to opposer's motion for sanctions, in the form of a default judgment, this motion was denied since applicant, albeit belatedly, had answered opposer's discovery requests.
This brings us now to the third set of discovery motions, filed in or around February 1987, and which are the motions currently in dispute. Applicant again moves for a protective order on the grounds that opposer's second set of interrogatories (totaling nineteen in number, including sub-parts) are unduly burdensome and harassing in volume and boilerplate in content. Applicant also moves for an order compelling answers to applicant's discovery requests, and again requests that sanctions be entered against opposer, including a default judgment and an awarding of attorney's fees under Rule 37 Fed. R. Civ. P.
*3 We can find no reasonable basis in law or in fact for the filing of these motions. With respect to applicant's motion for a protective order, under no stretch of the imagination could a total of nineteen discovery requests, including sub-parts, be considered so unduly burdensome and harrassing in sheer number as to offer any reasonable basis for the filing of a protective order. Moreover, under no stretch of the imagination could these discovery requests be considered as anything but suitably tailored to the issues of this opposition. It is noted in this regard that in the course of prior discovery it became apparent that the dates of first use set forth in the application to register are, at least, an error. Opposer's second set of discovery requests quite reasonably, therefore, seeks to discover the date of first use upon which applicant actually will rely in this opposition, the evidentiary basis therefor, and whether the application to register setting forth earlier dates of first use was signed fraudulently. Under these circumstances, we cannot but conclude that applicant's motion for a protective order was signed in the very improper hope of either delaying applicant's responses to opposer's discovery requests or for purposes of harassment.
We turn now to applicant's motions to compel answers to its discovery requests and for sanctions. By this motion, applicant seeks to compel more complete answers to twenty-four of a total of sixty-seven interrogatories and requests for production of documents (not including sub-parts). Applicant argues, in support of its motion, that opposer's objections are untimely and legally insufficient. More particularly, applicant argues that opposer's objections are not timely because they were not served within thirty days of the service of the interrogatories. However, as correctly pointed out by opposer, the period for responding to discovery requests is enlarged by five days pursuant to Trademark Rule 2.119(c) where, as here, such discovery requests were served by mail. Moreover, opposer's answers and objections to applicant's interrogatories generally are legally sufficient as, we believe, applicant would have discovered had applicant made any good faith attempt to resolve its differences with opposer or undertaken any reasonable inquiry into the scope of discovery as required both by prior Board orders in this case and precedent. With respect to applicant's motion for sanctions, applicant again is advised that the Board has no authority to award costs or attorney's fees and that no motion for sanctions will be granted for failure to answer discovery until a party has violated a Board order compelling such discovery.
In light of these circumstances and the Board's repeated prior orders to the effect that:
(1) a motion for Rule 37 sanctions cannot be entertained by the Board until the party failing to answer discovery has violated a Board order compelling such discovery;
(2) the Board has no authority to order the awarding of costs or attorney's fees;
*4 (3) a motion to compel cannot be entertained by the Board until the propounding party confers with its adversary in a good faith attempt to resolve their differences;
as well as applicant's repeated filing of its discovery motions with less than the requisite duty of good faith investigation, we have no choice but to conclude that applicant has violated its duty under Rule 11.
In view thereof, applicant is precluded from filing any further discovery motions in this case, including a motion for a protective order, a motion to compel, or a motion for Rule 37 (Fed. R. Civ. P) sanctions. Furthermore, applicant is precluded from filing any motions on whatever basis without requesting, in advance, leave from the Board to file such a motion. Applicant is allowed until October 8, 1987 to provide full and informative responses to opposer's discovery requests, as put. Failure to comply with this order, including the filing of any further frivolous pleadings, motions, or other papers or the service of untimely responses to opposer's discovery requests, shall result in the entry of default judgment against applicant. See, Giant Food v. Standard Terry Mills, 229 USPQ 955 (TTAB 1986).
We turn now to applicant's motion for leave to amend its application. By this motion, applicant seeks to amend its application to claim a date of first use later than that originally alleged in the application to register. Opposer has filed a motion for an extension of time to respond to applicant's motion for leave to amend its application.
The parties should note that it is the practice of the Board to defer ruling on motions to amend the dates of first use set forth in an application to register until after final hearing. Such motions shall be granted only if the proposed amendment is established by, or is not inconsistent with, evidence adduced during the testimony period. Accordingly, ruling on applicant's motion is deferred until after final hearing and opposer's objections, if any, to the proposed amendment should be noted in its main brief on the case.
We turn now to opposer's motion, filed May 26, 1987, to strike the notice of reliance filed by applicant on the discovery deposition of its own corporate president. Opposer, in support of its motion, argues that the discovery deposition of a party may not be offered in evidence by the interrogated party except under the circumstances set forth in Rule 2.120(j); that applicant has failed to demonstrate the existence of any of those circumstances; and that therefore applicant's notice of reliance should be stricken and the discovery deposition of applicant's corporate president be given no consideration.
Applicant has filed a paper in opposition thereto in which applicant notices its objection to opposer's motion, but fails to proffer any reason as to why such evidence should not be excluded.
Trademark Rule 2.120(j) provides, in pertinent part, that the discovery deposition of a party shall not be offered in evidence by the interrogated party unless it is shown, inter alia, that the person whose deposition was taken is either dead, or out of the United States, or unable to testify because of age, illness, infirmity or imprisonment, or that the discovery deposition has been relied on, in part, by the adverse party during its testimony period. This rule requires, in essence, that the party seeking to rely on its own discovery deposition for purposes of trial make an affirmative showing at the time of the proffer of such evidence that circumstances exist that justify acceptance of the evidence.
*5 In this case, opposer has not relied on the discovery deposition of applicant's corporate president for purposes of trial, and applicant has offered no explanation as to why such evidence should be accepted. In view thereof, opposer's motion to strike is granted. The notice of reliance, filed May 4, 1987 by applicant is accordingly stricken and the discovery deposition of applicant's corporate president shall be given no further consideration.
The stipulation with respect to confidential information filed by the parties on February 27, 1984, is approved and entered. [FN3]
Since, as we have indicated earlier, applicant must answer opposer's interrogatories as put, opposer should have an opportunity to rely on applicant's answers to these interrogatories for purposes of trial, if it so desires. Accordingly, opposer is allowed until October 18, 1987 to advise the Board whether it desires testimony periods to be reopened for the limited purpose of offering evidence relative to the dates of first use. Proceedings herein remain otherwise suspended. The parties shall be advised when proceedings herein are resumed, at which time trial and/or briefing dates shall be rescheduled appropriately. [FN4]
J. D. Sams
J. E. Rice
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Rule 11, Fed. R. Civ. P, provides, in relevant part:
The signature of an attorney or party constitutes a certificate by him that he has read the pleading, motion, or other paper; that to the best of his knowledge, information, and belief formed after reasonable inquiry it is well grounded in fact and is warranted by existing law or a good faith argument for the extension, modification, or reversal of existing law. . . . If a pleading, motion, or other paper is signed in violation of this rule, the court, upon motion or upon its own initiative, shall impose on the person who signed it, a represented party, or both, an appropriate sanction.
FN2. The portion of the Board's opinion to which applicant refers actually reads as follows:
In the present case, we are not persuaded that a plainly adequate reason exists for issuing a protective order. The large number of requests is not per se oppressive. That they exceed in number that allowed under the local rules of the Eastern District, where applicant resides, is irrelevant. While applicant argues that opposer's interrogatories and requests for production of documents do not pertain specifically to the matters raised in the opposition, applicant has failed to support this argument, even by submitting a copy of the interrogatories to which applicant objects. In short, applicant's unsupported objection that opposer's interrogatories and requests for production of documents are overly burdensome and harassing will not suffice. [Citations omitted] Applicant must respond to discovery by providing the information requested or by stating with particularity its objections to those requests believed improper. Discovery must be answered in thirty days.
FN3. It had been the practice of the Board to require that the parties themselves, as well as their counsel, sign stipulated protective orders so that the parties themselves become bound by its terms. See e.g., Neville Chemical Co v. Lubrizol, 183 USPQ 184 (TTAB 1974). This procedure was considered desirable because once a proceeding before the Board has been finally determined, the Board has no further jurisdiction over the parties. Nevertheless, it cannot be denied that the signature of both counsel is sufficient to bind the parties for purposes of the proceeding and that it is the function of counsel to decide what is in the best interest of the party. Accordingly, the Board now believes that the better practice in these situations is to approve stipulated protective orders signed by both counsel and to merely advise counsel that, for the protection of both parties, they may wish to have the parties themselves sign the order so that the parties will clearly realize that they have created a contract that will survive the proceeding.
FN4. Opposer's motion, filed June 22, 1987, for an enlargement of its rebuttal period is granted.