The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a
Precedent of the TTAB
Mailed: February 19, 2008
Cancellation No. 92045959
M.C.I. Foods, Inc.
v.
Brady Bunte
__________________________
Cancellation No. 92046056
Brady Bunte
v.
M.C.I. Foods, Inc.
Before Walters, Rogers and Mermelstein, Administrative
Trademark Judges
By the Board:
These cases now come up for consideration of two
virtually identical motions for sanctions, each filed
October 19, 2007. In each motion, Brady Bunte -- respondent
in Cancellation No. 92045959 and petitioner in Cancellation
No. 92046056 -- seeks judgment in his favor as a sanction
for M.C.I. Foods, Inc.’s (“M.C.I.”) failure to produce
documents as required by previous orders of the Board,
issued separately in each case. The motions are fully
briefed and ready for decision.
Cancellation Nos. 92045959 and 92046056
Background
Mr. Bunte owns a registration of the mark CABO CHIPS
for “processed snack foods formed from corn, namely,
chips.”1 In Cancellation No. 92045959, M.C.I. seeks to
cancel Bunte’s registration based on an alleged likelihood
of confusion with M.C.I.’s registered marks CABO PRIMO2, LOS
CABOS3 and CABO CLASSICS4, all of which are used for Mexican
food products. In his answer to M.C.I.’s petition for
cancellation, filed July 28, 2006, Bunte denies the salient
allegations in the petition for cancellation.
On July 19, 2006, prior to filing his answer in
Cancellation No. 92045959, Bunte initiated Cancellation No.
92046056. In it, Bunte seeks to cancel M.C.I.’s
1
Registration No. 3086128, issued April 25, 2006, with a
claimed date of first use in commerce of December 2, 2003.
2
Registration No. 2674112, issued January 14, 2003, based on
a claimed date of first use in commerce of April 19, 2001, for:
“Mexican Style Food Products, namely, chimichangas, tacos,
breakfast tacos, burritos, breakfast burritos, enchiladas,
tostados, tortillas, corn tortillas, flour tortillas, tamales,
taquitos, chalupas, taco boats, and flautas; Gorditas, namely
thick Mexican bread containing cooked meats and/or poultry,
vegetables, and seasoning; Appetizers, namely miniature hand held
burritos, tacos, taquitos, quesadillas, tamales, and flautas;
rice, cookies, pastries, coffees, candy, Snacks, namely salsa,
tortilla chips, Mexican cookies, and Mexican candies; Bunuelos,
namely thin tortilla pieces, deep fried with cinnamon and sugar;
seasonings, cactus-flavored seasoning, spices, salsas, sauces,
and mole sauce.”
3
Registration No. 2988402, issued August 30, 2005, based on a
claimed date of first use in commerce of April 6, 1992, for:
“burritos, enchiladas, tacos, taquitos, soft tacos, sold in bulk
to food distributors who resell to convenience stores, schools,
fast food restaurants and the food service industry.”
4
Registration No. 3088995, issued May 9, 2006, based on a
claimed date of first use in commerce of September 1997 for:
“burritos, enchiladas, tacos, and taquitos.”
2
Cancellation Nos. 92045959 and 92046056
Registration No. 2674112 for CABO PRIMO, alleging that it
was procured by fraud. M.C.I. denies the salient
allegations in this petition for cancellation.
Consolidation
These proceedings involve identical parties, an
identical registration and related issues. When cases
involving common questions of law or fact are pending before
the Board, the Board may order consolidation of the cases.
See Fed. R. Civ. P. 42(a); see also, Regatta Sport Ltd. v.
Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991). In view
thereof, Cancellation Nos. 92045959 and 92046056 are hereby
consolidated.
The consolidated cases may be tried and presented on
the same record and briefs. See Helene Curtis Indus. Inc.
v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989); Hilson
Research Inc. v. Soc’y for Human Res. Mgmt., 27 USPQ2d 1423
(TTAB 1993).
The Board file will be maintained in Cancellation No.
92045959 as the “parent” case. From this point on only a
single copy of any paper or motion should be filed herein;
but that copy should bear both proceeding numbers in its
caption. The consolidated cases shall be scheduled in the
same manner as a single case with a counterclaim by Bunte.
Despite being consolidated, each proceeding retains its
separate character. The decision on the consolidated cases
3
Cancellation Nos. 92045959 and 92046056
shall take into account any differences in the issues raised
by the respective pleadings; a copy of the decision shall be
placed in each proceeding file.
Motions for Sanctions
In each of these now-consolidated proceedings, Bunte
filed a motion to compel for M.C.I.’s failure to respond in
any manner to Bunte’s interrogatories and document requests.
In each proceeding, Bunte’s motion was granted as
uncontested, and M.C.I. was “ordered to serve no later than
THIRTY DAYS from the mailing date of this order its
responses, without objection, to [Bunte’s] first set of
interrogatories and first request for production of
documents.” The Board’s order in Cancellation No. 92045959
issued on May 18, 2007, and the Board’s order in
Cancellation No. 92046056 issued on May 31, 2007.
In his motion for sanctions, Bunte indicates that on
May 14, 2007, after the filing of Bunte’s motion to compel
but before issuance of the Board’s first order granting
Bunte’s motion to compel, M.C.I. served untimely responses
and objections to Bunte’s discovery requests served in
Cancellation No. 92045959. In its response to certain
document requests, M.C.I. indicated that “[r]esponsive
documents will be made available to [Bunte] upon entry of a
suitable protective order,” and in response to others,
M.C.I. indicated that “[r]esponsive documents will be made
4
Cancellation Nos. 92045959 and 92046056
available” to Bunte. However, documents were not made
available to Bunte, even after issuance of the Board’s
orders granting Bunte’s motions to compel, nor did M.C.I.
provide responses to Bunte’s interrogatories or document
requests without objection, even after issuance of the
Board’s orders.
We note at this point: (1) that a mere promise to
produce unspecified documents at some unspecified later time
is an insufficient response to a Board order compelling
production; and (2) by rule, on August 31, 2007, the Board’s
standard protective order automatically went into effect,
and it now governs this proceeding. See, Trademark Rule
2.116(g); “Miscellaneous Changes to Trademark Trial and
Appeal Board Rules,” 72 Fed. Reg. 42,242 (Aug. 1, 2007).5
As to the former point, Federal Rule 34(b) and the comments
thereto clearly contemplate various ways in which a
requesting party can seek production. Thus, a responding
party can arrange for production, and the parties can
resolve disputes about production prior to the filing of a
motion to compel. However, after the motion to compel has
been granted, production must be made in the manner
requested by the inquiring party, unless otherwise directed
5
Further information on the Federal Register notice and the
Board’s standard protective order made applicable to all Board
proceedings by that notice of rulemaking is available on the
Board’s webpage:
http://www.uspto.gov/web/offices/dcom/ttab/index.html.
5
Cancellation Nos. 92045959 and 92046056
by the Board in the order granting the motion to compel. In
the case at hand, Bunte had requested that production be
made at his counsel’s offices. Thus, that is the place
where M.C.I. was obligated to produce the documents when the
motions to compel were granted.
On August 1, and September 11, 2007, Bunte contacted
M.C.I. to ask when M.C.I. would provide responses without
objection. On September 27, 2007, M.C.I. responded by e-
mail as follows:
My client is completing the assembly of documents
in response to your discovery requests. Also, my
client is executing the protective order that will
govern some of the documents produced in response
to your discovery requests. We hope to have the
documents available in the coming days.
M.C.I. has still not produced documents or served responses
without objection, however, and Bunte contends that
therefore “sanctions in the form of a default judgment
should be entered against M.C.I.”6
In opposing Bunte’s motion, M.C.I. indicates that it
“has provided full and complete responses to Bunte’s
Requests for Admissions and Interrogatories. These
responses were provided prior to the Board’s order granting
Bunte’s Motion to Compel.” M.C.I. also claims that “some of
6
Because M.C.I. did not timely serve its discovery responses,
its objections on the merits have been waived. Fed. R. Civ. P.
33(b)(4); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448,
449 (TTAB 1979).
6
Cancellation Nos. 92045959 and 92046056
the document requests required an exhausting (sic) and
voluminous review of materials in M.C.I.’s possession,
including materials that date back 50 years.” Furthermore,
“M.C.I. advised Bunte that all of the document responses
were available to be produced upon Bunte’s signing of a
protective order (which protective order was drafted by
Bunte’s counsel).”
M.C.I. argues that sanctions are not “needed at all,”
because M.C.I. notified Bunte on October 19, 2007, the day
Bunte filed its motion, that documents were available.
M.C.I. also claims that it has not engaged in “willful
evasion” of the Board’s orders.
In his reply brief, Bunte argues that M.C.I. has yet to
produce documents, and that “[p]etitioner’s response to
interrogatories included numerous untimely objections.”
According to Bunte, because the discovery period is now
closed, this places him at an unfair disadvantage.
Furthermore, “there is no declaration or other basis in the
record submitted by M.C.I. to demonstrate that M.C.I. has
diligently been attempting to collect responsive discovery
materials ….”
Decision
“If a party fails to comply with an order of the
[Board] relating to discovery … the Board may make any
appropriate order, including any of the orders provided in
7
Cancellation Nos. 92045959 and 92046056
Rule 37(b)(2) of the Federal Rules of Civil Procedure,
except that the Board will not hold any person in contempt
or award expenses to any party.” Trademark Rule
2.120(g)(1). In this case, it is clear that M.C.I. failed
to comply with the Board’s orders granting Bunte’s motions
to compel.
Indeed, even after it was ordered to respond to Bunte’s
discovery requests without objection on the merits, M.C.I.
did not do so. In fact, M.C.I. violated the Board’s orders
by effectively maintaining (i.e. not withdrawing) its
objections on the merits to Interrogatory No. 17 and
Document Request Nos. 4, 7, 11-13, 17-22 and 24 in
Cancellation No. 92045959, and Document Request Nos. 1, 7,
11-13, 17-22 and 24 in Cancellation No. 92046056.7
M.C.I.’s other objections (those not based on the
merits) are also inappropriate. Specifically, M.C.I.
7
The Board has previously distinguished objections on the
merits of a discovery request from other types of objections:
Objections going to the merits of a discovery request
include those which challenge the request as overly
broad, unduly vague and ambiguous, burdensome and
oppressive, as seeking non-discoverable information on
expert witnesses, or as not calculated to lead to the
discovery of admissible evidence. In contrast, claims
that information sought by a discovery request is
trade secret, business-sensitive or otherwise
confidential, is subject to attorney-client or a like
privilege, or comprises attorney work product, goes
not to the merits of the request but to a
characteristic or attribute of the responsive
information.
No Fear v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000).
8
Cancellation Nos. 92045959 and 92046056
objected to a large number of Bunte’s discovery requests
asserting that the information requested is protected by the
attorney-client privilege or attorney work product doctrine.
However, M.C.I. failed to produce the required privilege
log. Fed. R. Civ. P. 26(b)(5)(A)(ii); No Fear, 54 USPQ2d at
1556 (such objections require “a particularized explanation
of the privilege relied on, and a description of the
documents which, without revealing the privileged
information, is sufficient to allow the inquiring party to
assess the applicability of the privilege”).
Furthermore, and in violation of the Board’s orders,
M.C.I. did not make responsive documents available to Bunte
until over three months after the Board issued its orders.
The Board required M.C.I. to do so within 30 days. While it
may have been acceptable to merely make identified documents
available to Bunte when M.C.I. originally responded to
Bunte’s document requests, it was not acceptable for M.C.I.
to offer production in this manner once the Board ordered
M.C.I. to respond without objection. Indeed, Bunte
requested that documents be produced in the office of his
counsel, and M.C.I.’s offer to merely make the requested
documents available at an unspecified time and place
effectively constituted an objection on the merits, which
was prohibited by the Board’s orders. No Fear, 54 USPQ2d at
9
Cancellation Nos. 92045959 and 92046056
1554 (TTAB 2000) (“it was improper for applicant, after
being ordered to provide discovery responses without
objection, to have raised an objection regarding place of
production.”).
Because M.C.I. failed to comply with the Board’s
orders, sanctions are appropriate. Bunte requests the
sanction of judgment, but under the circumstances presented
here we believe that at this point this ultimate sanction
would go too far. See, Elec. Indus. Ass’n v. Potega, 50
USPQ2d 1775, 1777 (TTAB 1999).
Lesser sanctions are appropriate, however, and
accordingly, Bunte’s motions for sanctions are hereby
GRANTED, as follows:
(1) Within TWENTY DAYS of the mailing date of this
order, M.C.I. shall: (a) prepare and serve written
responses to Bunte’s discovery requests, without
objection on the merits; (b) copy all responsive
documents at its own expense and deliver them to Bunte;
and (c) serve a privilege log.
(2) The Board will accept any documents produced by
M.C.I., if filed during trial by Bunte, as authentic
and admissible.
(3) M.C.I. is prohibited from relying at trial on any
documents requested by Bunte during discovery but not
produced by M.C.I. within the time set for complying
with the Board orders granting Bunte’s motions to
compel.
As a result of this prohibition, M.C.I. may not
introduce documents requested by Bunte during discovery as
an exhibit to a testimonial deposition or by notice of
reliance. By contrast, Bunte may rely on any and all
10
Cancellation Nos. 92045959 and 92046056
documents produced by M.C.I. M.C.I. is not, however,
precluded from relying on documents which were reasonably
not part of a document production request by Bunte during
discovery.8
Proceedings are resumed, and the discovery and trial
dates are reset as follows:
THE PERIOD FOR DISCOVERY TO CLOSE: CLOSED
30-day testimony period for
plaintiff in Cancellation No.
92045959 (M.C.I.) to close: May 14, 2008
30-day testimony period for
defendant in Cancellation No.
92045959 (Bunte) and plaintiff in
the counterclaim to close: July 13, 2008
30-day testimony period for
defendant in the counterclaim
and rebuttal testimony for plaintiff
in the cancellation to close: September 11, 2008
15-day rebuttal testimony period for
plaintiff in the counterclaim to
close: October 26, 2008
Briefs shall be due as follows:
Brief for plaintiff in the
cancellation shall be due: December 25, 2008
Brief for defendant in the
cancellation and plaintiff in
the counterclaim shall be due: January 24, 2009
Brief for defendant in the
counterclaim and reply brief,
if any, for plaintiff in the
cancellation shall be due: February 23, 2009
8
Of course, both parties’ registrations are of record and the
parties may rely on them at trial. Trademark Rule 2.122(b)(1).
11
Cancellation Nos. 92045959 and 92046056
Reply brief, if any, for
plaintiff in the counterclaim
shall be due: March 10, 2009
***
12