Joshua Domond v. 37.37, Inc.

UNITED STATES PATENT AND TRADEMARK OFFICE

This Decision is a Trademark Trial and Appeal Board

Precedent of the TTAB P.O. Box 1451

Alexandria, VA 22313-1451

General Contact Number: 571-272-8500

wbc Mailed: January 2, 2015

Cancellation No. 92058841

Joshua Domond

v.

37.37, Inc.

Wendy Boldt Cohen, Interlocutory Attorney:

This case comes up on 37.37, Inc.’s (“Respondent”) motion for protective order filed

June 12, 2014 (“MPO”) pursuant to Fed. R. Civ. P. 26(c) seeking to protect

Respondent against having to respond to all of Joshua Domond’s (“Petitioner”) 872

requests for admission, 247 document requests and 26 interrogatories served the first

two days of the discovery period. The motion has been opposed by Petitioner.

I. BACKGROUND

A partial procedural history of this case is set forth for background. Petitioner

filed a petition to cancel Registration No. 3960506 for the stylized mark:1

1 Registration No. 3960506 issued May 17, 2011 alleging a date of first use anywhere and in

commerce of June 1988 in International Class 25.

Cancellation No. 92058841

alleging fraud, abandonment, priority and likelihood of confusion, and that the

registration was void ab initio because the specimen submitted in support of use does

not show use in commerce in connection with Respondent’s goods. 2

On the first day of discovery, Petitioner served upon Respondent a set of 707

requests for admission, 247 document requests, and 26 enumerated interrogatories,

some with subparts. The following day, Petitioner served upon Respondent a second

set of requests for admission, comprising 165 additional requests. In lieu of

responding to the discovery requests, Respondent filed a motion for protective order.

In support of its motion, which is accompanied by a declaration from its attorney,

Respondent alleges, inter alia, that Petitioner has stated that he plans to make this

proceeding “a long, difficult battle,” MPO, p.3; that Petitioner’s “initial requests are

clearly [an] unreasonable number of requests that were served for the sole purpose of

making this a ‘long, difficult battle,’” id.; and that therefore, a protective order should

be granted protecting Respondent from undue burden and expense. Respondent asks

that it be relieved of any obligation to respond to discovery requests until Petitioner

serves a revised set of discovery which is limited to an initial thirty requests each for

admission, for production of documents and as interrogatories; and in the alternative,

2 Although Petitioner has asserted a claim related to the sufficiency of Respondent’s

specimen, it is a claim that would normally not be a proper basis to cancel a registration.

See Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1358-59 (TTAB 1989)

(the insufficiency of the specimens, per se, does not constitute grounds for cancellation; the

proper ground for cancellation is that the term has not been used as a mark); Century 21

Real Estate Corp. v. Century Life of America, 10 USPQ2d 2034, 2035 (TTAB 1989). To the

extent Petitioner intends to assert only the insufficiency of Respondent’s specimens, the

claim would be futile. The proper ground for cancellation is that the registered mark has

not been used as a trademark. See Marshall Field & Co., 11 USPQ2d at 1359.

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Cancellation No. 92058841

Respondent be granted an additional thirty days to respond to Petitioner’s discovery

requests.

Petitioner, appearing pro se, argues, inter alia, that his discovery “has the

essential purpose of eliciting admissible evidence for trial,” Response to MPO, p. 1;

that “the TBMP does not limit the number of requests for admissions or the number

of document production requests,” id.; that Petitioner was merely using “tough talk”

when he said he would make this proceeding “long and difficult,” id. at p. 2; that

Respondent filed the MPO as a “stall tactic,” id. at p. 3; and that therefore, the MPO

should be denied.

II. DISCUSSION

The Board expects parties to cooperate with one another in the discovery process

which includes the duty to make a good faith effort to seek only such discovery as is

proper and relevant to the issues in the case. Fed. R. Civ. P. 26(g); See Panda Travel

Inc. v Resort Option Enterprises, Inc., 94 USPQ2d 1789, 1791 (TTAB 2009); Amazon

Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009); TBMP § 408.01

(2014). Failure to cooperate saddles the Board with needless motions and burdens it

with resolving disputes which should be resolved by the parties. See, e.g., Johnston

Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675

(TTAB 1988); Leuhermann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987).

“The purpose of discovery is to advance the case by requiring parties to share

certain relevant information upon request, so that the issues for trial may be focused

and the case may proceed in an orderly manner within reasonable time constraints.”

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Cancellation No. 92058841

Phillies v. Phila. Consol. Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013). The

scope of discovery in a Board proceeding is governed by Fed. R. Civ. P. 26(b)(1), which

provides that “[p]arties may obtain discovery regarding any nonprivileged matter

that is relevant to any party’s claim or defense.” Fed. R. Civ. P. 26(b)(2) allows for

limitations on discovery where such discovery is “unreasonably cumulative or

duplicative, or can be obtained from another source that is more convenient, less

burdensome, or less expensive” (emphasis added). “Although the rule contemplates

liberal discovery, the right to discovery is not unlimited. Both the Trademark Rules

and the Federal Rules of Civil Procedure grant the Board discretion to manage the

discovery process in order to balance the requesting party’s need for information

against any injury that may result from discovery abuse.” Phillies, 107 USPQ2d at

2152 (quoting FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999)).

“While it is a general rule that parties involved in an adversary proceeding are

entitled to seek discovery as they may deem necessary to help them prepare for trial,

it is not the practice of the Board to permit unlimited discovery to the point of

harassment and oppressiveness.” Id. at 2152.

When it comes to serving discovery, the parties are expected to take into account

the principles of proportionality with regard to discovery requests such that the

volume of requests does not render them harassing and oppressive and are expected

to consider the scope of the requests as well as to confer in good faith about the

proper scope of discovery so as to minimize the need for motions. See Trademark Rule

2.120(a); Fed. R. Civ. P. 26(f); Phillies, 107 USPQ2d at 2153; cf. Frito-Lay North

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Cancellation No. 92058841

America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908-10 (TTAB 2011)

(Board applied principle of proportionality in case involving discovery of

electronically-stored information). Where appropriate, the Board may, under Fed. R.

Civ. P. 26(c)(1), order that the discovery requested not be had. See TBMP § 412.06(b).

Fed. R. Civ. P. 26(c)(1) requires that a party moving for a protective order include

a certificate that the movant has in good faith conferred or attempted to confer with

the other affected parties in an effort to resolve the dispute without Board action.

Likewise, “the parties should confer in good faith before seeking Board intervention

for a protective order.” TBMP § 412.06 (citing Fed. R. Civ. P. 26(c)(1) and Phillies,

107 USPQ2d at 2152 (finding good faith effort to resolve the discovery dispute prior

to filing the motion for protective order)).

Respondent alleges that it attempted to resolve the parties’ dispute over

Petitioner’s discovery requests, and to show this Respondent provided an email

exchange between the parties wherein Respondent asks Petitioner to withdraw his

requests because they are “unnecessarily expensive and burdensome.” MPO at Exh.

F. Petitioner responded that he “will not withdraw the discovery.” Id.

Given the egregious number and nature of Petitioner’s discovery requests and

apparent refusal to even discuss or engage in a constructive dialogue regarding the

parties’ dispute, Respondent’s efforts are reasonable under the circumstances of this

case. In view of the foregoing, the Board finds Respondent made a good faith effort to

resolve the discovery dispute before seeking Board intervention, pursuant to Fed. R.

Civ. P. 26(c)(1) and Trademark Rule 2.120(f), 37 CFR § 2.120(f). See TBMP § 412.06.

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Cancellation No. 92058841

Except in cases where it is readily apparent that propounded discovery requests

are so oppressive as to constitute clear harassment, it is generally improper to

respond to a request for discovery by filing a motion for protective order. See

Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984). However,

where appropriate, the Board may have to determine whether there is a need for

protection against a particular discovery request due to its nature, or whether the

sheer volume of discovery requests renders them harassing and oppressive. See, e.g.,

Phillies, 107 USPQ2d at 2152, Double J of Broward Inc. v. Skalony Sportswear

GmbH, 21 USPQ2d 1609, 1612 (TTAB 1991); Fort Howard Paper Co. v. G.V.

Gambina Inc., 4 USPQ2d 1552, 1554 (TTAB 1987); TBMP § 412.06(b). The movant

for a protective order must establish good cause for issuance of the order. Trademark

Rule 2.120(f), 37 CFR § 2.120(f); Fed. R. Civ. P. 26(c)(1); see also TBMP § 412.06. To

establish good cause, a movant must provide “a particular and specific demonstration

of fact, as distinguished from stereotyped and conclusory statements.” FMR Corp., 51

USPQ2d at 1761.

A. Excessive Number of Requests

Here, Petitioner’s voluminous discovery requests, which have been reviewed by

the Board, are excessive, unduly burdensome and harassing in number and content.

See C.H. Stuart Inc. v. S.S. Sarna, Inc., 212 USPQ 386, 387 (TTAB 1980). As is clear

from the number of discovery requests within the context of this proceeding, as well

as their content, Petitioner has failed in his duty to seek only such discovery as is

proper and relevant to the issues in this proceeding. Petitioner has not cited any

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Cancellation No. 92058841

authority, and the Board is unaware of any, which supports the proposition that over

1000 discovery requests served within two days of the opening of discovery is a

proportional attempt to obtain information relevant to a petition to cancel one

registration.

B. Improper Nature of Requests

In addition to the sheer number of requests propounded by Petitioner, the Board

further notes that, contrary to Petitioner’s claim that his discovery “has the essential

purpose of eliciting admissible evidence for trial,” many of Petitioner’s requests

vastly exceed the bounds of proper discovery and are neither tailored to the issues of

this cancellation nor serve to advance this proceeding in a focused and orderly

manner.

A number of Petitioner’s requests are not appropriately tailored to elicit

discoverable information in this proceeding. Due to the volume of requests and in the

interest of judicial efficiency the Board will not address the requests individually.

However, a number of requests require the Board’s attention and proceedings herein

will be aided by their review. Many of Petitioner’s document requests seek all

documents from the last seventeen years. Complete compliance with a request for “all

documents” from such an extended period of time may be unduly burdensome, and

the Board has found it appropriate in such cases to require production of only a

representative sampling. See, e.g., Frito-Lay North America Inc., 100 USPQ2d at

1910 (where hundreds of thousands of dollars spent, and tens of thousands of

documents created, opposer required to produce only a representative sample with

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Cancellation No. 92058841

respect to the specific requests at issue); Sunkist Growers, Inc. v. Benjamin Ansehl

Co., 229 USPQ 147, 148 (TTAB 1985) (allowed to provide representative samples of

invoices from each calendar quarter); Neville Chemical Co. v. Lubrizol Corp., 184

USPQ 689, 689-90 (TTAB 1975) (sales and advertising figures for six different

categories of goods since 1936 limited to five-year period and a statement that there

have been sales for the other years); TBMP § 414(2). For the purposes of this

proceeding, any representative sampling ought to correspond to the dates necessary

to prove Petitioner’s claims. Information that is not relevant to a party’s claim or

defense, even if it relates to a relevant time period, is not subject to discovery. See

Fed. R. Civ. P. 26(b)(1). Moreover, to propound such a broad, untailored request is

not consistent with maintaining an orderly and focused proceeding and is therefore

not properly tailored.

A number of requests seek information not pertinent to the current proceeding.

These include requests regarding subjects such as Respondent’s current stock price,

Respondent’s projected income for the next five years, audit reports of Respondent,

and information related to Respondent’s annual gross and net revenue.3 While

annual sales and advertising figures, stated in round numbers, for a party’s involved

goods are proper matters for discovery, see, e.g., Varian Associates v. Fairfield-Noble

Corp., 188 USPQ 581, 583 (TTAB 1975); TBMP § 414(18), the noted subjects are

indiscriminate requests for financial data, information and documents that offer

nothing to further the claims before the Board and are therefore not appropriately

tailored. A party’s plans for expansion may be discoverable, see, e.g. Johnston

3 See e.g., document requests nos. 11 – 14, 25 – 31, 111, 116, and 119.

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Cancellation No. 92058841

Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675

(TTAB 1988); TBMP § 414(8), but the Board fails to see how the requests here,

asking for projected income, constitute that type of discovery. Without further

explanation of relevancy, these requests go beyond what is necessary to prove the

claims before the Board.

Many of Petitioner’s interrogatories improperly seek information related to

Respondent’s case in chief such as asking for citations to pertinent case law that

would support Respondent’s position, or on which Respondent intends to rely, and a

summarized analysis of the similarities and/or differences in the parties’ marks. It is

not the Respondent’s responsibility to provide Petitioner with the requested

information. Petitioner is responsible for formulating his own case and cannot

demand that Respondent prepare a comparison report, undertake legal research, or

disclose its legal strategies. It is Petitioner’s responsibility to prove his case. These

requests are improper and outside the scope of discovery.

With respect to identification of witnesses, although the identity of expert

witnesses is discoverable, Petitioner’s discovery requests seeking identification of all

witnesses Respondent may employ are premature and unnecessary particularly in

view of the Board’s disclosure requirements. Both parties are required to serve initial

disclosures identifying witnesses having discoverable information and to name the

witnesses expected to testify in pretrial disclosures. Trademark Rule 2.121(e), 37

CFR § 2.121(e). Additionally, each party is required to supplement its initial

disclosures, and additional witnesses may be identified during discovery. Trademark

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Cancellation No. 92058841

Rule 2.120(a)(2), 37 CFR § 2.120(a)(2); TBMP §§ 401.02 and 414(7). Likewise, many

of Petitioner’s requests for admission seek similarly irrelevant or improper

information as they are not tailored to the dispute in this cancellation proceeding.

See e.g., Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171 (TTAB 1975);

TBMP § 414.

III. ORDER

Taking into account the principles of proportionality, because of the sheer number

of discovery requests and because many of the requests are not appropriately tailored

to eliciting discoverable information, the Board is persuaded that a protective order

is warranted in this case. Cf. Phillies, 107 USPQ2d at 2149 (discussing principles of

proportionality with respect to requests for admissions where the number of pleaded

registrations was found to warrant the scope of discovery). In short, the large number

of discovery requests is unduly burdensome, harassing and oppressive when

considered in light of the issues raised by this proceeding.

In view thereof, Respondent’s motion for protective order is GRANTED.

Respondent is relieved from answering Petitioner’s May 22 and 23, 2014 discovery

requests. Therefore, with respect to Respondent’s request that Petitioner be limited

in its use of discovery requests, at least initially, in the number of discovery requests

served, the request is GRANTED as modified herein.

In an effort to curtail any further abuse of the discovery process, the Board finds

it appropriate to limit the overall number of discovery requests (total interrogatories

(including subparts), document requests and requests for admission) to be

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Cancellation No. 92058841

propounded by Petitioner to 150. As there is but one registration at issue in this

proceeding, discovery in excess of a total of 150 requests for admission, production of

documents and interrogatories,4 without prior Board review and approval, would

serve to further harass Respondent and would be unduly burdensome. If the Board

perceives any further uncooperative or harassing behavior from Petitioner, then

Petitioner may be ordered to show cause why entry of sanctions should not be

considered. Sanctions, if warranted, may include judgment against Petitioner. Cf.

Johnston Pump, 13 USPQ2d at 1721 n.4 and cases cited therein.

SCHEDULE

Proceedings herein are resumed. Remaining dates are reset as follows:

Initial Disclosures Due 1/30/2015

Expert Disclosures Due 5/30/2015

Discovery Closes 6/29/2015

Plaintiff's Pretrial Disclosures 8/13/2015

Plaintiff's 30-day Trial Period Ends 9/27/2015

Defendant's Pretrial Disclosures 10/12/2015

Defendant's 30-day Trial Period Ends 11/26/2015

Plaintiff's Rebuttal Disclosures 12/11/2015

Plaintiff's 15-day Rebuttal Period Ends 1/10/2016

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. See Trademark Rule 2.125, 37 C.F.R. § 2.125.

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 2.129.

4 In addition, Petitioner shall not, in any event, exceed the limitation on the number of

interrogatories set forth in Trademark Rule 2.120(d)(1); 37 C.F.R. § 2.120(d)(1) (i.e.,

seventy-five, counting sub-parts).

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