The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
THIS OPINION IS Trademark Trial and Appeal Board
P.O. Box 1451
PRECEDENT OF THE Alexandria, VA 22313-1451
TTAB
LMS
Mailed: May 11, 2009
Opposition No. 91181141
Cancellation No. 92048120
MySpace, Inc.
v.
Donnell Mitchell
Before Seeherman, Rogers and Taylor,
Administrative Trademark Judges.
By the Board:
This case now comes up on plaintiff’s1 second motion
for discovery sanctions in the form of judgment in both the
opposition and cancellation, filed February 11, 2009, and
defendant’s February 7, 2009 motion to compel plaintiff to
respond to discovery he had served on October 10, 2008.
With respect to defendant’s motion to compel, defendant was
informed in the Board’s January 21, 2009 order that he could
not conduct discovery because he had not made initial
disclosures as required by the rules. (Order, p.6).
Accordingly, defendant’s motion to compel is denied.
1
MySpace, Inc. is opposer in the opposition and petitioner in
the cancellation. For ease of reference we will refer to
MySpace, Inc. as plaintiff and Donnell Mitchell as defendant.
Opposition No. 91181141; Cancellation No. 92048120
As grounds for its motion for sanctions, plaintiff
states that defendant has failed to comply with the Board’s
January 21, 2009 order granting sanctions that required
defendant to provide complete answers and produce documents
responsive to outstanding discovery requests. Defendant has
responded and contests the motion.
Board’s January 21, 2009 Order
In the January 21, 2009 order, the Board denied
plaintiff’s request for entry of the sanction of judgment
and afforded defendant a final opportunity to provide
necessary responses to plaintiff’s outstanding discovery
requests. (Order, p. 6-7). The order compelled defendant,
within twenty days, (i.e., by February 10, 2009) to:
(1) provide complete responses to plaintiff’s
discovery requests, without objection, and to
forward to plaintiff’s counsel’s offices, at
defendant’s cost, all produced documents;
(2) for documents produced, to include a
stipulation attesting to their authenticity
and agreeing to introduction by plaintiff at
trial by notice of reliance; and
(3) If no further responsive documents were
found, defendant was to certify that he had
conducted a complete and thorough search of
all his records and that there were no
further documents to be produced.
The Board also stated that “Defendant is advised that
he is estopped from submitting at trial, and relying on as
evidence at trial, any information or documents subject to a
2
Opposition No. 91181141; Cancellation No. 92048120
discovery request which have not been produced in the manner
directed by this order.” (Order, p. 8); and that “should
[defendant] not comply with the present order of the Board,
as well as the August 13, 2008 order, and if plaintiff
brings another motion for sanctions, the Board will likely
enter the sanction of judgment against defendant.” (Order,
p. 10). The Board also stated, at page 11 of its order:
“Defendant shall not continue his behavior of making ad
hominem attacks on opposing counsel and Board personnel; and
there shall be no use of opposing counsel’s home or family
addresses in discovery responses or in any filings. If
defendant fails to comply with his duty to cooperate or
fails to refrain from personal attacks, upon motion by
plaintiff, the Board will grant sanctions in the form of
judgment: the subject application will be abandoned and the
petition to cancel defendant’s registration will be
granted.” (Order p. 11).
Plaintiff’s Second Motion for Sanctions
As grounds for the present motion, plaintiff states
that defendant has failed to comply with the Board’s January
21, 2009 order, in that his responses were due by February
3
Opposition No. 91181141; Cancellation No. 92048120
10, 2009, and as of the filing date of the motion, February
11, 2009, none was received. (Bruso dec. ¶ 5).2
On February 13, 2009, defendant filed his own motion
for sanctions “against [plaintiff’s counsel] for Unethical
Behavior.” In addition to making various personal
allegations against plaintiff’s counsel, something defendant
was warned against in the January 21, 2009 order, defendant
argues that he had sent documents to plaintiff’s counsel on
either October 4, 7, or 10th, 2008, and again on February 9
and 12, 2009. However, from our review of the file, the
documents sent on February 9 and 12 were not documents
produced pursuant to the Board’s January 21, 2009 order, but
rather defendant’s own discovery requests.3 Further,
defendant makes in his motion and again in his reply on his
2
When the Board orders discovery responses to be provided by a
particular date, that means they must be served (i.e., put into
the mail) by the responding party by that date. Since timely
served discovery responses might not arrive until after the
deadline, the receiving party typically should wait a reasonable
period of time beyond the required date of service before making
any motion alleging a failure to serve. In this case, however,
the subsequent briefs filed by the parties make clear that
plaintiff’s motion for sanctions was not premature.
3
At paragraph 3 of defendant’s motion for sanctions, he states:
“Defendant is requesting the honorable TTAB board to allow our
updated interrogatories, request for documents, and requests for
admissions to arrive by U.S. mail without penalty. [Plaintiff’s
counsel] claims he did not receive our documents when we have
proof they arrived at his listed home address and office October
7th 2008.” Defendant has attached to each of his current filings,
namely, his motion to compel, his motion for sanctions and his
response to plaintiff’s motion for sanctions, copies of the
interrogatories he improperly served on plaintiff. There are no
copies of documents served on plaintiff’s counsel responsive to
the Board’s January order.
4
Opposition No. 91181141; Cancellation No. 92048120
motion personal attacks on plaintiff’s counsel, in direct
violation of the Board’s order.
Decision
The record establishes that defendant has engaged in a
course of delay by failing to make initial disclosures and
by failing to properly respond to discovery for well over
two years, and that defendant has disregarded the Board’s
orders to provide the required discovery. Further, the
filing of a motion to compel and then a motion for sanctions
against plaintiff, infused with personal attacks,4 are all
in direct violation of the Board’s January order. The Board
had warned in the January order, when granting a lesser
sanction than the sanction of judgment that had been
requested by plaintiff, that the Board would enter judgment
if defendant failed to comply with that order. In the
motions currently before us, defendant's only response to
plaintiff's renewed request for the sanction of judgment is
a statement that he had complied or tried to comply with the
Board's order. However, that response is belied by the fact
that the only thing defendant has done is to re-send his own
discovery requests and to continue personal attacks on
plaintiff's counsel. In view of our previous warning that
we would enter judgment unless he complied with our order
4
As defendant was advised in the Board’s January 21, 2009 order,
“parties before the Board are required to conduct their business
with decorum and courtesy.” Trademark Rule 2.192.
5
Opposition No. 91181141; Cancellation No. 92048120
and his continued blatant non-compliance, the sanction of
entry of judgment is now warranted.
Inasmuch as it appears that defendant has not responded
to the discovery requests and has otherwise failed to comply
with other conditions set forth in the Board’s January 21,
2009 order, the motion for entry of judgment against
defendant as a sanction is hereby granted.
Accordingly, judgment is hereby entered against
defendant, Opposition No. 91181141 is sustained and the
petition to cancel defendant’s Registration No. 3284330, the
subject of Cancellation No. 92048120, is hereby granted.
Registration No. 3284330 will be cancelled in due course.
See Trademark Rule 2.120(g) and Fed. R. Civ. P. 37(b)(2)(C).
6