National Football League, NFL Properties LLC v. DNH Management, LLC

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

THIS OPINION IS A P.O. Box 1451

PRECEDENT OF THE TTAB Alexandria, VA 22313-1451

Brown

Mailed: January 29, 2008

Opposition No. 91176569

National Football League, NFL

Properties LLC

v.

DNH Management, LLC

Angela Lykos, Interlocutory Attorney:

On October 14, 2005, DNH Management, LLC (“applicant”)

applied to register the mark displayed below

for “motorcycle accessories, namely fender side cover

panels” in International Class 12.1 National Football

League and NFL Properties, LLC (“opposers”) have opposed

registration on the grounds that applicant's applied-for

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Application Serial No. 78733408, alleging June 8, 2005 as the date of

first use anywhere and in commerce.

Opposition No. 91176569

mark (1) so resembles opposers’ previously used and

registered marks that it is likely to cause confusion,

mistake, or deceive prospective consumers under Section 2(d)

of the Lanham Act; (2) consists of matter which falsely

suggests a connection between applicant and opposers under

Section 2(a) of the Lanham Act; and (3) will dilute the

distinctive quality of opposers’ marks.2 In their notice of

opposition, opposers pleaded ownership of Registration Nos.

1056303,3 29413474 and 3138589,5 each for the mark displayed

below:

2

In their pleading, opposers asserted their dilution claim under

Sections 2(f) and 13(a) of the Lanham Act. Opposers should note,

however, that in Board proceedings, a claim of dilution falls under

Section 43(c) of the Lanham Act as amended. The last sentence of

Section 2(f) addresses dilution but only insofar as it precludes

issuance of a refusal of registration on dilution grounds in an ex parte

context.

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Registered January 11, 1977, for “association services-namely,

promoting the interests of member football clubs, scheduling games, and

promoting interest in football” in International Class 41, alleging June

1, 1941 as the date of first use anywhere and in commerce; Sections 8

and 9 affidavits acknowledged and accepted.

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Registered April 19, 2005, for various items of men's, women's and

children's clothing in International Class 25, alleging September 15,

1941 as the date of first use anywhere and October 15, 1991 as the date

of first use in commerce.

5

Registered September 5, 2006 for various goods in International

Classes 9, 14, 16 and 28, alleging January 1, 1980 as the date of first

use anywhere and in commerce for the goods in International Class 14,

and January 1, 1970 as the date of first use anywhere and in commerce

for the goods in the remaining classes.

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Opposition No. 91176569

In its answer to the notice of opposition, applicant

denied the salient allegations therein and asserted various

affirmative defenses, including the following: “The Opposer

is not entitled to exclusively appropriate the general form

of a shield with a midline break and stars as an indicator

of origin for unrelated goods and services.” Paragraph 27,

Applicant’s Answer.

This case now comes before the Board for consideration

of (1) opposers’ motion (filed October 8, 2007) to extend

the discovery period by ninety days, and (2) applicant’s

motion (filed November 26, 2007) to quash opposers’ noticed

discovery deposition, or in the alternative, for the entry

of a protective order pursuant to Fed. R. Civ. P. 26(c)(1).

The motions are fully briefed.

For the reasons set forth below, opposers’ motion to

extend the discovery period is hereby denied, applicant’s

motion to quash is granted, and applicant’s alternative

motion for a protective order is denied as moot.

I. Opposers’ Motion to Extend Discovery

The appropriate standard for allowing an extension of a

prescribed period prior to the expiration of the term is

"good cause." See Fed. R. Civ. P. 6(b) and Trademark Trial

and Appeal Board Manual of Procedure (“TBMP”) § 509 (2d ed.

rev. 2004) and cases cited therein. Generally, the Board is

liberal in granting extensions of time before the period to

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Opposition No. 91176569

act has elapsed so long as the moving party has not been

guilty of negligence or bad faith and the privilege of

extensions is not abused. The moving party, however,

retains the burden of persuading the Board that it was

diligent in meeting its responsibilities and should

therefore be awarded additional time. See Sunkist Growers,

Inc. v. Benjamin Ansehl Company, 229 USPQ 147 (TTAB 1985).

When, as in this case, a party does not serve written

discovery requests until the final day of discovery and did

not attempt to depose its adversary during the prescribed

discovery period, a motion to extend discovery will

ordinarily be denied. See Leumme, Inc. v. D.B. Plus Inc.,

53 USPQ2d 1758, 1760 (TTAB 1999).

The Board recognizes that this is opposers’ first

request to extend any deadline in the proceeding and that

the extension privilege has not been abused in this case.

There is also no evidence of bad faith on the part of

opposers in requesting the extension. Nonetheless, after

considering the entire record and the parties’ arguments,

the Board finds that opposers have not made the minimum

showing necessary to establish good cause to support an

extension of the discovery period for any length of time.

Opposers’ principal argument in support of their motion

to extend the discovery period is that they delayed taking

discovery because the parties were engaged in settlement

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Opposition No. 91176569

discussions. However, the evidence shows that, although

discovery opened on April 23, 2007, opposers did not attempt

to initiate any settlement discussions with applicant until

more than two months later, on July 2, 2007, and did not

serve their initial discovery requests until October 22,

2007, two days after the scheduled closing day of the

discovery period.6

Once applicant filed an answer on May, 11, 2007,

opposers were on notice that the case was going to proceed,

and could have attempted settlement efforts prior to July

2, 2007.7 Furthermore, there is nothing in the record to

establish or even suggest that applicant, by word or action,

guaranteed or assured opposers that it would even consider

an offer of settlement. In fact, counsel for opposers

admits that despite repeated attempts to call, write and

email applicant from July 2, 2007 to October 2, 2007 to

discuss settlement, counsel for applicant did not respond to

“any of [o]pposers’ efforts at communication.” In its

6

Because discovery was set to close on Saturday, October 20, 2007,

opposers' service of their initial discovery requests on applicant the

following Monday, October 22, 2007 was, by rule, timely. See Trademark

Rule 2.196 and TBMP § 112.

7

Under the Board’s recently amended rules governing inter partes

proceedings, there is a requirement that the parties engage in a

settlement and discovery planning conference. See Trademark Rule

2.120(a); “Miscellaneous Changes to Trademark Trial and Appeal Board

Rules,” 72 F.R. 42242 (August 1, 2007). The Federal Register notice is

also available at the Board's web page, at

www.uspto.gov/web/offices/dcom/ttab/index.html. That provision of the

amended rules was not in place during the discovery period for this

case. Nonetheless, even prior to the amendment of the rules, the Board

has always encouraged genuine, bi-lateral discussion of settlement.

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Opposition No. 91176569

responsive brief, applicant also denied having any interest

in settlement and stated that at no point during the

proceeding did it “engage in or encourage settlement

negotiations” with opposers.

In light of their numerous unsuccessful attempts to

reach applicant through various forms of communication as

well as applicant’s lack of interest in discussing

resolution, opposers knew or should have known that

settlement or even legitimate talk of settlement was highly

unlikely. In these circumstances, opposers could not have

reasonably concluded that they need not move forward and

serve requests for discovery. See Instruments SA, Inc. v.

ASI Instruments, Inc., 53 USPQ2d 1925 (TTAB 1999). Indeed,

after receiving no response to the multiple attempts to

contact applicant to discuss settlement that were made after

July 2, 2007, opposers still had ample time remaining to

serve discovery. Opposers, however, did not do so, and have

not pointed to any exigent circumstances that prevented them

from serving discovery while they continued their unilateral

attempts to initiate settlement discussions with applicant.

Clearly, the opposers' claimed need for an extension of

discovery is the product solely of opposers' unwarranted

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Opposition No. 91176569

delay in initiating discovery.8

Accordingly, opposers’ ninety-day extension request of

the discovery period is hereby denied. In view of the

Board’s denial, discovery dates remain as originally set and

as a result, the discovery period is closed.

II. Applicant’s Motion to Quash and Alternative Motion for

Protective Order

Opposers noticed, on the last day of discovery, a discovery

deposition under Federal Rule 30(b)(6), seeking designation by

applicant of a witness for a deposition to take place on January

17, 2008, after the close of discovery. By rule and absent

stipulation between the parties –- and there was no such

stipulation -- discovery depositions must be both noticed and

taken during the prescribed discovery period as originally set

or reset. See Trademark Rule 2.120(a), TBMP § 404.01 (2d ed.

rev. 2004) and authorities cited therein.

In view of our ruling denying opposers’ motion to extend,

and with discovery now closed, applicant’s motion to quash

8

The safest course of action for a party in pursuit of settlement is to

seek the adverse party’s permission to file a consented motion to

suspend. See Instruments SA, Inc. v. ASI Instruments, Inc., 53 USPQ2d

1925 (TTAB 1999). All motions to suspend, regardless of circumstances

and even with the adverse party’s consent, are subject to the “good

cause” standard. See Trademark Rule 2.117(c). In the absence of

consent, the party seeking suspension is also expected to comply with

its responsibilities. For a plaintiff in a Board proceeding, that means

not only shouldering the burden of proof at trial but also the

responsibility for moving the case forward on the prescribed schedule.

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Opposition No. 91176569

opposers’ notice of taking a Federal Rule 30(b)(6) deposition of

applicant is granted. See Rhone-Poulenc v. Gulf Oil, 198 USPQ

172 (TTAB 1978) (deposition noticed during discovery but

scheduled after discovery closed was untimely). Applicant’s

motion in the alternative for a protective order under Fed. R.

Civ. P. 26(c)(1) is therefore denied as moot.

III. Proceedings Suspended

Proceedings remain suspended pending disposition of

opposers’ motion to compel (filed December 21, 2007). The

motion to compel will be decided in due course.

NEWS FROM THE TTAB:

The USPTO published a notice of final rulemaking in the

Federal Register on August 1, 2007, at 72 F.R. 42242. By

this notice, various rules governing Trademark Trial and

Appeal Board inter partes proceedings are amended. Certain

amendments have an effective date of August 31, 2007, while

most have an effective date of November 1, 2007. For

further information, the parties are referred to a reprint

of the final rule and a chart summarizing the affected

rules, their changes, and effective dates, both viewable on

the USPTO website via these web addresses:

http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf

http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf

By one rule change effective August 31, 2007, the Board's

standard protective order is made applicable to all TTAB

inter partes cases, whether already pending or commenced on

or after that date. However, as explained in the final rule

and chart, this change will not affect any case in which any

protective order has already been approved or imposed by the

Board. Further, as explained in the final rule, parties are

free to agree to a substitute protective order or to

supplement or amend the standard order even after August 31,

2007, subject to Board approval. The standard protective

order can be viewed using the following web address:

http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm

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