The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Mailed: June 16, 2010
Opposition No. 91182207
THIS OPINION IS A Opposition No. 91184467
PRECEDENT OF THE TTAB
Johnson & Johnson and RoC
International S.A.R.L.
v.
Obschestvo s ogranitchennoy;
otvetstvennostiu "WDS"
M. Catherine Faint,
Interlocutory Attorney:
During discovery, applicant responded, in whole or in
part, to certain interrogatories relating to selection of the
mark, sales, marketing and knowledgeable persons by referencing
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its business records, pursuant to Fed. R. Civ. P. 33(d).
These documents are written in Russian, and there is no English
translation.
This case comes up on opposers’ motion to compel applicant
to supplement its responses to interrogatories. Opposers
contend that applicant’s invocation of the Fed. R. Civ. P.
33(d) option to produce business records in response to
interrogatories is improper in this case and places an undue
burden on opposers because the produced records are in a
1
Applicant also produced the 276 pages of documents in response
to opposers’ first request for production of documents, but
refers to them in certain of its answers to interrogatories so
that a general reference to the documents forms some part of
these answers.
Opposition Nos. 91182207 & 91184467
foreign language. Allowing applicant to respond in this
fashion, opposers assert, is tantamount to authorizing
applicant to answer its interrogatories in Russian. Opposers
seek to compel applicant to supplement its answers to each
interrogatory so that they are answered “separately and fully,”
as Fed. R. Civ. P. 33(b)(3) requires, without reference to the
business records.
Applicant contends that it is not under any obligation to
provide an English translation of its business records, but is
obligated under Fed. R. Civ. P. 34(b) only to “produce them as
they are kept in the usual course of business.” Applicant
argues that it has met the Fed. R. Civ. P. 33(b)(3) and 33(d)
requirements by twice providing supplemental responses,
including responses that do not solely reference documents
produced by applicant, and a table describing the documents
produced along with their corresponding Bates numbers.2
In reply, opposers note that even the supplemented
interrogatory responses do not point to specific responsive
documents by Bates number. Even with the table, argue
opposers, none of the prerequisites for invoking Rule 33(d) has
been met. Thus the documents are essentially unidentified.
Fed. R. Civ. P. 33(d) provides as follows:
(d) Option to Produce Business Records.
2
Applicant also points to opposers’ statement that
“[a]pplicant’s supplementation appears to moot the issue” with
regard to Interrogatory No. 6. Upon review of the supplemental
answers to interrogatories, the Board notes that opposers made a
similar statement with regard to Interrogatory Nos. 4, 5 and 12,
while at the same time opposers maintained their concerns about
those parts of the answers that may still be contained in the
general references to applicant’s documents.
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Opposition Nos. 91182207 & 91184467
If the answer to an interrogatory may be
determined by examining, auditing, compiling,
abstracting, or summarizing a party's business
records (including electronically stored
information), and if the burden of deriving or
ascertaining the answer will be substantially
the same for either party, the responding party
may answer by:
(1) specifying the records that must be
reviewed, in sufficient detail to enable the
interrogating party to locate and identify them
as readily as the responding party could; and
(2) giving the interrogating party a reasonable
opportunity to examine and audit the records and
to make copies, compilations, abstracts, or
summaries.
A party responding to interrogatories by invoking Fed. R.
Civ. P. 33(d) must comply with three specific conditions, as
the Board explained in No Fear, Inc. v. Rule, 54 USPQ2d 1551
(TTAB 2000), and Jain v. Ramparts, Inc., 49 USPQ2d 1429 (TTAB
1998). First, a responding party “must identify documents
which the responding party knows to contain the responsive
information, and may not merely agree to provide access to a
voluminous collection of records which may contain the
responsive information.” No Fear, 54 USPQ2d at 1555. Second,
“a party may not rely on the option to produce business records
unless it can establish that providing written responses would
impose a significant burden on the party.” Id. Third, “even
if the responding party can meet” the above two requirements
and “can identify particular documents in which the inquiring
party will find its answers, the inquiring party must not be
left with any greater burden than the responding party when
searching through and inspecting the records.” Id. “That is,
the determination and weighing of the parties’ respective
burdens is only necessary and appropriate if the responding
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Opposition Nos. 91182207 & 91184467
party already has established that it would be unduly
burdensome for it to provide written answers to the
interrogatories, and if its responses to the interrogatories
have specified in sufficient detail the business records from
which the answers to the interrogatories can be ascertained.”
Jain, 49 USPQ2d at 1434. The Board has added that the third
requirement, if at issue, often will not be met “because the
responding party will have greater familiarity with its own
records and will generally have a lesser burden than the
inquiring party when searching through the relevant records.”
No Fear Inc. v. Rule, 54 USPQ2d at 1555; and Jain, 49 USPQ2d at
1433-34.
The Board notes that the parties have focused on the third
of the above-mentioned prerequisites, that is, whether
applicant would face substantially the same burden as opposers
in deriving the answers to the interrogatories from applicant’s
business records due to the fact that the documents are in
Russian. We must first examine, however, the threshold issues
of whether applicant, in the first instance, would be unduly
burdened by providing written answers to the interrogatories
and whether applicant’s interrogatory responses themselves
satisfy the Fed. R. Civ. P. 33(d) requirement for a detailed
specification of the business records asserted to contain
information responsive to the interrogatories.
Turning to these threshold issues, the Board finds that
applicant has failed to establish that it would be unduly
burdensome for applicant to provide separate and full written
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Opposition Nos. 91182207 & 91184467
answers to the interrogatories at issue in accordance with Fed.
R. Civ. P. 33(b). Applicant has made no specific mention of
what burden it faces in providing written answers, relying
instead on its “having satisfied its burden” by supplementing
its answers and providing the Bates number table.
Second, the Board finds that applicant is not entitled to
invoke Fed. R. Civ. P. 33(d) because it has failed to comply
with the requirement that the responding party specify the
records from which the answer to the interrogatory may be
ascertained in sufficient detail to permit the interrogating
party to locate and identify, as readily as can the party
served, the records from which the answer may be ascertained.
The business records at issue were produced in response to
document requests, and would require opposers to translate each
document and then attempt to ascertain what portion of any
document may contain an answer to a particular interrogatory.
The fact that the documents are in the Russian language further
complicates matters. We are not aware of, nor do the parties
cite to, a precedential case addressing the situation where a
responding party responds to interrogatories pursuant to Fed.
R. Civ. P. 33(d) by providing the interrogating party documents
in a foreign language. There are, however, non-precedential
cases. See, e.g., Sungjin Fo-Ma, Inc. v. Chainworks, Inc.,
Civ. Act. No. 08-CV-12393, 2009 U.S. Dist. LEXIS 58059, 2009 WL
2022308 (E.D. Mich. July 8, 2009)(requiring responding party to
extract information from documents in Korean and provide
answers to interrogatories in English); E. & J. Gallo Winery v.
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Opposition Nos. 91182207 & 91184467
Cantine Rallo, S.p.A., No. 1:04cv5153 OWW DLB, 2006 U.S. Dist.
LEXIS 84048, 2006 WL 3251830 (E.D. Cal. Nov. 8, 2006)(finding
volume of documents and repeated references to them in
responding to all interrogatories meant it was less burdensome
for responding party to provide written answers than for
interrogating party to attempt to ferret information from
documents); and Chocolate Comercio de Roupas Ltda. v. China
Trade & Research, Inc., Op. No. 91104145, (TTAB Apr. 14,
2000)(requiring written answers to interrogatories where
documents produced pursuant to Rule 33(d) were in foreign
language and did not mention mark at issue).
Where, as here, a responding party makes the decision to
produce documents in lieu of responding directly to an
interrogatory, a duty is imposed on the party to provide
documents from which the response to the interrogatory is
clearly ascertainable. Referencing documents written in a
foreign language does not completely fulfill this duty.
So as to be clear, applicant’s supplemental answers that
still refer to unidentified documents in Russian are
unacceptable. Although applicant may have provided partial
written answers to portions of certain interrogatories, doing
so does not entitle applicant to provide the rest of the answer
in an unidentified document located somewhere in an
accompanying document production, particularly where, as here,
the documents are in a foreign language. Moreover, the table
wherein applicant describes the documents and sets forth their
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Opposition Nos. 91182207 & 91184467
corresponding Bates numbers, while a step in the right
direction, still falls far short of fulfilling applicant’s duty
given that the documents are in Russian.
Applicant misses the point of opposers’ concern, a concern
the Board shares in the facilitation of the discovery process:
opposers are still left to guess how much of an answer is
located in the written response to the answer, as opposed to
residing in the Russian text of an unidentified document
included in applicant’s production; and this concern remains no
matter how much supplemental text is added to an interrogatory
answer because, either way, there apparently is at least some
undisclosed portion of the answer that is written in Russian
and contained within an unspecified part of an unidentified
document. Applicant’s approach clearly thwarts the exchange of
discoverable information as Fed. R. Civ. P. 33(d) contemplates
because, as stated by opposers, “it forces the responding party
first to translate all documents, then to wade through each
document in an effort to identify responsive information, and
then to guess which of that information was intended by the
responding party as comprising the balance of the answer to a
given interrogatory.” (Reply Brief, p. 3).
In view of the above, the Board finds applicant’s
invocation of Fed. R. Civ. P. 33(d) to be inappropriate. Thus,
the Board need not even reach the third prerequisite. However,
for the sake of completeness, and so as to dispel any doubt
about the Board’s frustration with applicant’s approach to
discovery, the Board will consider the third prerequisite,
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Opposition Nos. 91182207 & 91184467
namely whether opposers and applicant would face substantially
the same burden in ascertaining the answers to the
interrogatories from applicant’s business records.
The Board finds that applicant’s burden to ascertain the
answers from its business records is far less than opposers’
burden of surmising an answer, and that opposers’ burden is
dramatically increased because the documents are in Russian.
See Jain v. Ramparts Inc., 49 USPQ2d at 1433-34 (several
factors considered and balanced in determining the respective
burden, including the nature of the responding party’s business
records and the parties’ respective costs of conducting the
necessary research into those business records; “the responding
party’s greater familiarity with its own business records may,
in appropriate cases, be the determinative factor in the
analysis”). Looking at all of the factors, we consider the
fact that applicant’s documents are in a foreign language with
which applicant is more conversant, and, that applicant is more
likely to know where in its records the answers are contained
to be determinative. Indeed as opposers argue, presumably
applicant already has thoroughly reviewed its documents in
deciding which ones are responsive to particular
interrogatories or portions thereof. By requiring written
responses to the interrogatories in English, the Board is only
requiring applicant and its counsel to summarize and explain
what they found and why the responses are contained in the
documents. Applicant has already done part of the work by
reviewing documents and determining which are responsive, so it
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Opposition Nos. 91182207 & 91184467
clearly could not be much of a burden for it to summarize what
was found and why that information is relevant.3
Accordingly, the motion to compel is granted, and
applicant is ordered to withdraw those portions of its answers
to Interrogatory Nos. 4, 5, 6, 7, 10, 11, 12, 16, 18, 19 and 20
that rely on business records. Applicant is ordered to
supplement its answers to each named interrogatory so that it
is answered “separately and fully” as required by Fed. R. Civ.
P. 33(b)(3) within TWENTY DAYS of the mailing date of this
order.
Proceedings are resumed and dates are reset as set out
below:
Expert Disclosures Due 7/1/2010
Discovery Closes 7/31/2010
Plaintiff's Pretrial Disclosures 9/14/2010
Plaintiff's 30-day Trial Period Ends 10/29/2010
Defendant's Pretrial Disclosures 11/13/2010
Defendant's 30-day Trial Period Ends 12/28/2010
Plaintiff's Rebuttal Disclosures 1/12/2011
Plaintiff's 15-day Rebuttal Period
Ends 2/11/2011
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.
3
The Board notes that if applicant intends to rely on these
documents at trial, the Board could not consider them unless a
translation were submitted with them. Cf. 37 C.F.R. §
2.34(a)(3)(ii)(2010)(requiring translation of foreign
registrations not in English for applications based on § 44(e) of
Trademark Act). If such documents were submitted at trial with
translations, but the translations had not been provided to
opposers during discovery, applicant’s documents could be the
subject of a motion to strike pursuant to Fed. R. Civ. P. 37.
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Opposition Nos. 91182207 & 91184467
Briefs shall be filed in accordance with Trademark
Rules 2.l28(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.
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