Kairos Institute of Sound Healing, LLC v. Doolittle Gardens, LLC

This Decision is a UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

Precedent of the TTAB P.O. Box 1451

Alexandria, VA 22313-1451

JK Mailed:October 17, 2008

Opposition No. 91181945

Kairos Institute of Sound

Healing, LLC

v.

Doolittle Gardens, LLC

Before Holtzman, Cataldo and Ritchie de Larena:

Administrative Trademark Judges.

By the Board:

This proceeding is before the Board for consideration

of applicant’s motion (filed May 12, 2008) for sanctions in

the nature of dismissal of the opposition, or in the

alternative for imposition of a lesser sanction, for

opposer’s failure to make initial disclosures. The motion

is fully briefed.1

Under Trademark Rule 2.120(a)(2), initial disclosures

must be made no later than thirty days after the opening

date of discovery, and under Trademark Rule 2.120(a)(3) a

party cannot seek discovery until it has made its initial

1

Although the Board delayed in its issuance of an order

suspending proceedings pending disposition of applicant’s motion,

we consider proceedings to have been effectively suspended as of

the date of filing of the motion, namely, May 12, 2008. The

Board acknowledges this delay, and, in view of its ruling herein,

has reset a substantial remaining discovery period.

Opposition No. 91181945

disclosures, absent modification of this requirement by

stipulation of the parties approved by the Board, on motion

granted by the Board, or by order of the Board.

Pursuant to the Board’s January 16, 2008 notice of

institution, the parties’ reciprocal initial disclosures

were due April 25, 2008. Applicant served its initial

disclosures on April 25, 2008, but opposer did not serve its

initial disclosures until May 30, 2008, over a month late

and three days after applicant filed its motion for

sanctions.2

Applicant argues that dismissal is an appropriate

sanction under Trademark Rule 2.120(g)(1).3 Applicant

asserts that opposer, acting in bad faith, willfully evaded

its disclosure obligation, thereby causing prejudice by

leaving applicant to speculate about opposer’s evidence and

witnesses, and rendering applicant unable to formulate an

adequate discovery plan.

2

The Board notes that opposer also filed its initial disclosures

with the Board, and thereafter, on August 22, 2008, filed its

expert disclosures with the Board as well. Written disclosures

should not be filed with the Board, except when submitted with a

motion relating to disclosure or discovery, or in support of or

in response to a motion for summary judgment, or under a notice

of reliance, when permitted, during a party’s testimony period.

See Trademark Rule 2.120(j)(8).

3

Trademark Rule 2.120(g)(1) also provides for possible

imposition of a sanction when a party fails to participate in the

required discovery conference. That provision of the rule is

not, however, implicated by the pending motion, as applicant’s

brief on the motion acknowledges opposer’s participation in such

conference.

2

Opposition No. 91181945

In response, opposer represents that its failure to

serve timely disclosures was inadvertent and unintentional,

that it cured this oversight by providing such disclosures

on May 30, 2008, and that applicant has suffered no actual

prejudice inasmuch as over three months of discovery

remained after opposer served its late initial disclosures.

Analysis

Trademark Rule 2.120(a)(2) requires parties to serve

initial disclosures, see Fed. R. Civ. P. 26(a)(1), no later

than thirty days after the opening of the discovery period.

Trademark Rule 2.120(g)(1) provides, in pertinent part

(emphasis added):

If a party fails to participate in the required

discovery conference, or if a party fails to comply

with an order of the Trademark Trial and Appeal Board

relating to disclosure or discovery, including a

protective order, the Board may make any appropriate

order, including those provided in Rule 37(b)(2) of the

Federal Rules of Civil Procedure.

Trademark Rule 2.120(g)(2), which sets forth additional

provisions discussing the possible imposition of sanctions

for failure to make initial disclosures, states, in

pertinent part (emphasis added):

If a party fails to make required initial disclosures

or expert testimony disclosure, and such party or the

party’s attorney or other authorized representative

informs the party or parties entitled to receive

disclosures that required disclosures will not be made,

the Board may make any appropriate order, as specified

in paragraph (g)(1) of this section.

3

Opposition No. 91181945

Accordingly, sanctions under Trademark Rule

2.120(g)(1), with respect to initial disclosures, may be

ordered only where a party’s failure to make disclosures

follows an order of the Board affirming or reiterating the

party’s obligation to make such disclosures.4 In contrast,

the sanctions provided for under Trademark Rule 2.120(g)(2)

may be ordered even in the absence of a prior Board order

affirming or reiterating the party’s obligation to make

disclosures, but require that the party bearing the

obligation affirmatively state that disclosures will not be

forthcoming.

The requirement for parties to make reciprocal initial

disclosures was introduced into Board inter partes

proceedings by amendments to the Trademark Rules, and is

applicable to all proceedings which commenced on or after

November 1, 2007. See Notice of Final Rulemaking,

Miscellaneous Changes to Trademark Trial and Appeal Board

Rules, 72 Fed. Reg. 42242 (Aug. 1, 2007), (hereinafter

“Final Rule”). In the Final Rule, the Board indicated that

the requirement for reciprocal initial disclosures

facilitates the exchange of “core information regarding the

existence of and location of witnesses and documents,”

4

We note, however, that when a party fails to participate in the

required discovery conference, an adverse party may move for

entry of sanctions under Trademark Rule 2.120(g)(1) even in the

absence of a Board order compelling participation.

4

Opposition No. 91181945

lessens the expense of traditional discovery, and promotes

early communication toward possible settlement. It is clear

that the obligation of parties to make initial disclosures

is integral to the efficient conduct of Board proceedings

and not an obligation to be taken lightly by the parties.

However, the Final Rule also made clear, in various

places, that initial disclosures would essentially be

treated the same as discovery responses. Final Rule, 72

F.R. at 42246 ("In essence, initial written disclosures and

initial disclosures of documents will be treated like

responses to discovery requests."). "A motion to compel is

the available remedy when an adversary has failed to make,

or has made inadequate, initial disclosures or disclosures

of expert testimony. Both of these types of disclosures are

made during discovery, and a motion to compel must precede a

motion for sanctions. A motion for sanctions is only

appropriate if a motion to compel these respective

disclosures has already been granted." Final Rule, 72 F.R.

at 42256.

Clearly, the amended rules relating to initial

disclosures treat such disclosures as part of the discovery

phase of the proceeding. Just as sanctions are available

when a party fails to meet its discovery obligations, so too

are sanctions available when a party fails to meet its

initial disclosure obligations. However, in both instances,

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Opposition No. 91181945

sanctions are not available under Trademark Rule 2.120(g)(1)

unless a Board order has been violated, and sanctions are

not available under Trademark Rule 2.120(g)(2) unless the

party has failed to meet its obligation and has also

expressly stated to its adversary that it does not intend to

meet its obligation, e.g., will not provide initial

disclosures or respond to discovery.

The current motion presents neither of these

circumstances. No order compelling initial disclosures has

issued in this proceeding pursuant to Trademark Rule

2.120(e), and accordingly, imposition of any sanction under

Trademark Rule 2.120(g)(1), whether in the form of dismissal

or some lesser sanction, would be premature. Cf. Fort

Howard Paper Co. v. G.V. Gambina Inc., 4 USPQ2d 1552, 1553

(TTAB 1987) (motion for discovery sanctions “not legally

cognizable … until the party failing to answer discovery had

violated a Board order compelling such discovery” and motion

for sanctions not construed in the alternative as a motion

to compel because such a motion requires “as a prerequisite

to judicial action” good faith attempt to resolve

differences).

Furthermore, notwithstanding that the notice of

institution sets a deadline for the parties to provide

initial disclosures, it does not constitute an “order of the

Trademark Trial and Appeal Board relating to disclosure”

6

Opposition No. 91181945

within the contemplation of Trademark Rule 2.120(g)(1). A

notice of institution is merely a scheduling order, whereas

the type of order that is contemplated as a prerequisite to

a motion for sanctions under Trademark Rule 2.120(g)(1) is

an order granting or denying a motion to compel or a motion

for a protective order. Cf. M.C.I. Foods Inc. v. Bunte, 86

USPQ2d 1044, 1048 (TTAB 2008) (“Because M.C.I. failed to

comply with the Board's orders [granting motions to compel],

sanctions are appropriate.”), and MHW Ltd. v. Simex,

Aussenhandelsgesellschaft Savelsberg KG, 59 USPQ2d 1477,

1478 (TTAB 2000) (“The law is clear that if a party fails to

comply with an order of the Board relating to discovery,

including an order compelling discovery, the Board may order

appropriate sanctions as defined in Trademark Rule

2.120(g)(1) and Fed. R. Civ. P. 37(b)(2), including entry of

judgment [citations omitted].”). See also, S. Industries

Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1298 (TTAB 1997)

(“In the event that petitioner fails to comply with this

Board order compelling discovery, a formal motion for

sanctions will be entertained by the Board. See Trademark

Rule 2.120(g).”).

7

Opposition No. 91181945

Accordingly, under the circumstances presented herein,

applicant’s motion for sanctions in the nature of dismissal

is premature and is denied.5

If applicant here had first filed, and the Board had

granted, a motion to compel the disclosures, and opposer had

thereafter failed to timely provide them, or provided

inadequate disclosures, applicant would then have been able

to move for sanctions. Under such circumstances, the

question of what sanction, if any, would be appropriate,

would be committed to the discretion of the Board.

“Specific consequences for failure of a party to make

timely, proper or adequate disclosures have not been set out

in the final rule. The Board must retain the discretion to

tailor sanctions to the particular circumstances of each

case.” Final Rule 72 F.R. at 42256.6

While applicant’s motion for sanctions has been denied,

we add that opposer is now warned that it must adhere to the

provisions of applicable rules and that its lax approach to

its initial disclosure obligation may be considered as an

aggravating factor if applicant has occasion to file a later

5

We decline to construe applicant’s motion for sanctions as a

motion to compel disclosure. A motion to compel disclosure, like

a motion to compel discovery, may be filed only after the parties

have made a good faith effort to resolve the dispute in

accordance with Trademark Rule 2.120(e)(1).

6

Applicant’s alternative request for a lesser sanction sought

attorneys’ fees. The Board will not, however, award costs or

fees. See Trademark Rule 2.127(f).

8

Opposition No. 91181945

motion for sanctions under Trademark Rule 2.120(g). To be

specific, the Board would not hesitate, upon filing of a

well-taken motion for such sanctions, to consider the full

range of sanctions provided for under Fed. R. Civ. P. 26,

and case law interpretive thereof. Such sanctions could

include, for example, imposing a limitation on the number of

depositions opposer may take, directing that opposer may

only serve a certain number of interrogatories or document

requests, and/or extending the discovery period for

applicant alone in order to account for the impediment that

the late service of disclosures presented for applicant’s

ability to take discovery. Such sanctions might also result

in an order precluding opposer from relying at trial on

information or documents which should have been disclosed

(Cf. Presto Products Inc. v. Nice-Pak Products Inc., 9

USPQ2d 1895, 1896 n.5 [TTAB 1988]), or an order barring

opposer from later introducing information which it did not

produce. See TBMP § 527.01(e)(2d ed. rev. 2004). Moreover,

we have recognized that “A party may seek to strike any

testimony or portions of testimony, whether or not from an

expert, when related disclosures were untimely, improper or

inadequate.” Final Rule 72 F.R. at 42256.

As a final matter, the parties are reminded that the

provision of Fed. R. Civ. P. 26(e) regarding the duty to

supplement or amend disclosures applies to inter partes

9

Opposition No. 91181945

proceedings before the Board (see Final Rule, 72 F.R. at

42254), and that the Board’s standard protective order is

applicable in this proceeding pursuant to Trademark Rule

2.116(g).

Proceedings herein are resumed. The deadline for

expert disclosures, the close of discovery, and all trial

dates are reset as follows:

Expert Disclosures Due 2/25/2009

Discovery Closes 3/27/2009

Plaintiff's Pretrial

Disclosures 5/11/2009

Plaintiff's 30-day Trial Period

Ends 6/25/2009

Defendant's Pretrial

Disclosures 7/10/2009

Defendant's 30-day Trial Period

Ends 8/24/2009

Plaintiff's Rebuttal

Disclosures 9/8/2009

Plaintiff's 15-day Rebuttal

Period Ends 10/8/2009

In each instance, a copy of the transcript of testimony

together with copies of documentary exhibits, must be served

on the adverse party within thirty days after completion of

the taking of testimony. Trademark Rule 2.l25.

Briefs shall be filed in accordance with Trademark Rules

2.128(a) and (b). An oral hearing will be set only upon

request filed as provided by Trademark Rule 2.l29.

10