The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
This Order Is A Trademark Trial and Appeal Board
P.O. Box 1451
Precedent Of The TTAB Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
Mailed: January 20, 2016
Opposition No. 91215100
Emilio Pucci International BV
v.
Rani Sachdev
Krisp, Interlocutory Attorney:
This proceeding is before the Board for consideration of the June 4, 2015
motion for a protective order filed by Rani Sachdev (“Applicant”).1 The motion is
fully briefed.
Preliminary matter
The April 30, 2015 motion to strike affirmative defenses, filed by Emilio Pucci
International BV (“Opposer”), is granted as conceded. Trademark Rule 2.127(a),
37 CFR § 2.127(a); TBMP § 502.02 (2015). The Board strikes Applicant’s first
through ninth affirmative defenses, and will give said defenses no consideration.
1 Applicant filed all prior submissions in this proceeding via ESTTA, the Electronic
System for Trademark Trials and Appeals, but for no apparent reason filed her motion
for a protective order by U. S. mail with a certificate of mailing. Parties to inter partes
proceedings before the Board are well advised to submit all filings through ESTTA.
TBMP § 106.03 (2015) (“ESTTA permits round-the-clock filing with real-time receipt
confirmation, while reducing delay and the possibility of mishandling of submissions
within the USPTO.”)
Extra copies of filings should not be submitted. DeLorme Publishing Co. v. Eartha’s
Inc., 60 USPQ2d 1222, 1222 n.1 (TTAB 2000). Accordingly, Applicant’s inclusion of a
cover letter in triplicate was improper.
Opposition No. 91215100
Motion for protective order
Relevant Background
This proceeding involves Opposer’s notice of opposition against an application
to register the mark ST. PUCCHI (stylized; shown below) for “evening dresses;
evening gowns; veils; wedding dresses; wedding gowns; women’s clothing,
namely, shirts, dresses, skirts, blouses” in International Class 25.2
Opposer asserts three grounds: priority and likelihood of confusion pursuant
to Trademark Act § 2(d), 15 U.S.C. § 1052(d); dilution pursuant to Trademark Act
§ 43(c), 15 U.S.C. § 1125(c); and lack of ownership of the mark. Opposer pleads
ownership of four registrations for the marks PUCCI and EMILIO PUCCI,
registered for various goods in International Classes 3, 9, 14, 18 and 25.3
On April 30, 2015, Opposer served its first set of discovery requests, which
includes 27 numbered interrogatories, 31 numbered requests for production of
documents and things, and 83 numbered requests for admission. On Thursday,
June 4, 2015, the date on which Applicant’s responses to the discovery were due,
Applicant’s counsel sent Opposer’s counsel three emails, the first requesting a
thirty-day extension of time to serve responses, the second requesting a seven-
day extension, and the third requesting an extension until the following
2 Application Serial No 85913782, filed April 24, 2013, based on use of the mark in
commerce pursuant to Trademark Act § 1(a), and asserting a date of first use anywhere
and date of first use in commerce of April 15, 1985.
3 Opposer pleads Registration Nos. 1687909 (EMILIO PUCCI), 1689743 (EMILIO
PUCCI), 3252030 (PUCCI) and 3382298 (EMILIO PUCCI).
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Monday.4 Opposer’s counsel promptly responded to each, indicating that she did
not have and could not obtain approval from her client, who had left the office.5
On the same day, June 4, 2015, Applicant filed a motion for a protective order
directed to the entirety of Opposer’s discovery requests. The record does not
reflect that Applicant communicated with Opposer regarding the discovery
requests any time prior to June 4, 2015.
The substance of Applicant’s motion reads:
As shown in Exhibits A through C,6 Opposer has asked for a
variety of unduly burdensome and overbroad categories of
documents and information, many of which exceed the scope of
discoverable information for this opposition proceeding.
Moreover, the total of all interrogatories, including discrete
subparts, appears to exceed 75. Applicant seeks an order
precluding the discovery sought, or modifying the scope of the
discovery requests to those which are reasonably calculated to
lead to the discovery of admissible evidence in connection with
this trademark opposition proceeding.7
Urging that the Board deny the motion, Opposer argues that the motion is
improper and in violation of the rules of procedure, and that it is unfounded and
unsupported.
Analysis
Applicant’s filing of a motion for a protective order instead of responding to
Opposer’s discovery requests in a timely manner was procedurally improper. The
Board has clearly delineated that in inter partes proceedings it is generally
4 17 TTABVUE 25-27.
5 17 TTABVUE 21, 25-26. Opposer’s representatives are located in France and Italy.
16 TTABVUE 3.
6 As exhibits, Applicant attached to the motion a copy of Opposer’s discovery
requests.
7 15 TTABVUE 4.
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inappropriate for a party to respond to discovery requests by filing a motion
attacking them, such as a motion for a protective order. TBMP §§ 405.04(b)
(interrogatories), 406.04(c) (requests for production), 407.03(b) (requests for
admission) and 410. The responding party is expected to provide the information
sought in the requests or portions of requests that it believes to be proper, and
state its objections to those that it believes to be improper. TBMP § 410. Here,
Applicant moved for a protective order despite the Board’s policy that filing for
such relief is not an appropriate manner in which a party may object to discovery
with which it has been served.
Applicant’s motion was not the proper method for raising an objection that
Opposer had served what Applicant asserts to be an excessive number of
interrogatories. Again, the Board has plainly specified the appropriate procedure
to follow when a party, in good faith, believes that the number of interrogatories
served on it exceeds the limitation specified in Trademark Rule 2.120(d)(1),
37 CFR § 2.120(d)(1). This practice has been in place for over two decades and
articulated in the TBMP for many years. See TBMP § 410, and accompanying
notes. It could scarcely be made any clearer. When a party, in good faith, believes
the interrogatories with which it has been served exceed the limit and the party
is not willing to waive this basis for objection, the party shall, within the time for
(and instead of) serving answers and specific objections, serve a general objection
on the ground of their excessive number. Trademark Rule 2.120(d)(1); TBMP
§ 405.03(e). The purpose behind this requirement is to advance the discussion
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between the parties as to the number and scope of the interrogatories, and to
encourage them to discuss their respective counting methods and earnestly
attempt to resolve any dispute. It also provides the receiving party an
opportunity to persuade the serving party to reformulate and re-serve the
interrogatories, to the satisfaction of the receiving party, regardless of any
differences in the respective methods for counting the interrogatories. In
contrast, a party’s moving for a protective order from the Board when it has made
no effort, or an insufficient effort, to resolve a dispute is an entirely unworkable
and impracticable approach that reflects a disregard for the affirmative duty to
cooperate in the discovery process. See Panda Travel Inc. v. Resort Option Enter.
Inc., 94 USPQ2d 1789, 1791 (TTAB 2009) (parties have a duty to cooperate in
discovery).
It is improper for a party to move for a protective order for the purpose of
delaying service of the required responses and/or objections, or to harass one’s
adversary by forcing the adversary to engage in motion practice. Fort Howard
Paper Co. v. G.V. Gambina Inc., 4 USPQ2d 1552, 1553 (TTAB 1987). Where it is
readily apparent that discovery requests are so oppressive as to constitute clear
harassment, a party may properly move for a protective order that disclosure or
discovery not be had, or be had only on specified terms and conditions. Domond v.
37.37, Inc., 113 USPQ2d 1264, 1266 (TTAB 2015) (motion for a protective order
proper where cancellation petitioner propounded over 1000 discovery requests
within two days of the opening of discovery; requests sought documents spanning
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a period of seventeen years; requests sought information not pertinent to
proceedings, such as respondent’s stock price, five-year projected income, and
audit reports; interrogatories improperly sought disclosure of litigation
strategies; and respondent had made a good faith attempt to resolve the dispute
before seeking the protective order). See also The Phillies v. Philadelphia Consol.
Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013); Medtronic, Inc. v.
Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984). TBMP § 412.06(b).
However, such cases are rare. To address these unusual situations, Trademark
Rule 2.120(f), 37 CFR § 2.120(f) provides, in pertinent part:
Upon motion by a party obligated to make initial disclosures or
expert testimony disclosure or from whom discovery is sought,
and for good cause, the Trademark Trial and Appeal Board may
make any order which justice requires to protect a party from
annoyance, embarrassment, oppression, or undue burden or
expense, including one or more of the types of orders provided by
clauses (1) through (8), inclusive, of Rule 26(c) of the Federal
Rules of Civil Procedure.
In such cases, a movant must establish good cause for the issuance of a
protective order by providing “a particular and specific demonstration of fact, as
distinguished from stereotyped and conclusory statements.” The Phillies v.
Philadelphia Consol. Holding Corp., 107 USPQ2d at 2152 (citing FMR Corp. v.
Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999)). Furthermore, the good
faith effort requirement set forth in Fed. R. Civ. P. 26(c)(1) applies to a motion for
a protective order. The Phillies v. Philadelphia Consol. Holding Corp., 107
USPQ2d at 2152. Cf. Hot Tamale Mama…and More, LLC v. SF Inv., Inc., 110
USPQ2d 1080, 1081 (TTAB 2014) (good faith effort required for motion to
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compel); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009)
(obligation to participate in good faith in efforts to resolve a disputed discovery
matter before seeking judicial resolution).
Here, Applicant made no effort to resolve whatever issues she saw with the
discovery requests before filing her motion. In her emails seeking extensions on
the day discovery responses were due, Applicant did not mention any concerns
with the requests. To be clear, the Board’s finding of a lack of good faith effort,
alone, is sufficient to deny the motion for a protective order.
Turning to whether Opposer’s discovery warrants a protective order, the
Board expects parties to take into account the principles of proportionality with
regard to discovery. Domond v. 37.37, Inc., 113 USPQ2d at 1268. Fed. R. Civ. P.
26, as amended effective December 1, 2015, applies to Board inter partes
proceedings, including proceedings that were pending before that date, and Fed.
R. Civ. P. 26(b)(1), which has long governed the scope of discovery in Board
proceedings (TBMP § 402.01), now provides that
[u]nless otherwise limited by court order … [p]arties may obtain
discovery regarding any nonprivileged matter that is relevant to
any party’s claim or defense and proportional to the needs of the
case, considering the importance of the issues at stake in the
action, the amount in controversy, the parties’ relative access to
relevant information, the parties’ resources, the importance of
the discovery in resolving the issues, and whether the burden or
expense of the proposed discovery outweighs its likely benefit.
(emphasis added). The Committee Notes make clear that the parties are expected
to effectively manage discovery, and that there are “important occasions for
judicial management” Fed. R. Civ. P. 26(b)(1) Advisory Committee Note (2015
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amendment). This expectation is not contrary to Board practice. In the context of
determining the appropriateness of discovery-related motions seeking the Board’s
involvement, the Board will look to, among other factors, whether the filing party
seeks a remedy that is proportional to the nature and complexity of the case and
the history of the proceeding.
Here, taking into account the grounds for opposition, and applying Fed. R.
Civ. P. 26(c)(1) in view of achieving the intended objective of the Federal Rules
with respect to proportionality, the Board finds no basis to conclude that the
number or nature of Opposer’s discovery requests are such that they cause
annoyance, embarrassment, oppression or undue expense. The information and
documents requested are standard and typical for a proceeding involving the
asserted grounds, are tailored to the claims and are framed to seek information
that is clearly relevant. Moreover, under no counting method do the
interrogatories served exceed seventy-five in number, including subparts. It
should be plainly evident to any practicing attorney that the discovery requests
do not warrant a protective order.
Furthermore, the substantive deficiency of Applicant’s motion is troubling
inasmuch as it is devoid of any legal citation or supporting arguments. The
motion consists of bald, conclusory statements that can only be characterized as
boilerplate. Applicant set forth no details regarding her position, neglected to
identify which discovery requests she considered to be not reasonably calculated
to lead to the discovery of admissible evidence, failed to explain how or why the
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requests are burdensome, and made no attempt to delineate which requests are
overbroad or oppressive.
The timing of the motion is also troubling. Applicant moved for a protective
order on the very day on which her responses were due. Nothing in the record
indicates that prior to this date Applicant was prevented from either requesting
from Opposer an extension of time to respond, or filing a motion for an extension.
Either action would have been the expected practice. Indeed, on the due date for
the responses Applicant could have moved for an extension in lieu of filing a
boilerplate motion for a protective order. Applicant’s unfounded and improper
motion required the Board to expend its limited resources to rule on a motion
that manifestly calls into question whether Applicant had any objective for filing
it other than to stall the proceeding.
In summary, it is apparent that Applicant filed the motion based not on a
well-founded belief that Opposer’s discovery requests warranted relief, but rather
on the hope of delaying her obligation to serve responses, and worse, to impede
the progression of discovery. Conduct of this nature amounts to a unilaterally
manufactured delay. Even where such conduct is not part of an ongoing
indifference to litigation or a pattern of uncooperativeness or dilatory demeanor,
it is still improper. Fort Howard Paper Co. v. G.V. Gambina Inc., 4 USPQ2d at
1553-54. Cf. Patagonia, Inc. v. Azzolini, 109 USPQ2d 1859, 1862 (TTAB 2014)
(petition to cancel granted where respondent exhibited a continued pattern of
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dilatory behavior, including failure to comply with applicable rules). See also
TBMP § 412.06(b).
More to the point, under the circumstances here, where the discovery at issue
is clearly proportional to the claims, Applicant’s decision to respond to it by
moving for a protective order was in direct violation of the Board’s practice as set
forth in the TBMP. The manual clearly delineates the processes that parties are
expected to follow in discovery, as well as what specific remedies are available to
a party who has objections to discovery. TBMP §§ 410 and 526 squarely define
the limited situations in which a party may respond to discovery requests by
filing a motion for a protective order. The TBMP has been carefully drafted so as
to make clear the Board’s practices and procedures under applicable authorities.
The Board expects that parties will adhere to the manual, and retains the
inherent authority to impose sanctions, as appropriate, where parties do not.8
Ruling
Having considered all of the circumstances of record, Applicant’s motion for a
protective order is denied.
Regarding Opposer’s request for sanctions, as Opposer itself acknowledges, its
request does not accompany a motion to compel.9 Similarly, the request does not
follow a Board order relating to disclosure or discovery, and thus cannot be based
on Trademark Rule 2.120(g)(1).
8 Although Opposer did not file a motion for sanctions pursuant to Fed. R. Civ. P. 11,
the standards prescribed therein apply to all filings in Board inter partes
proceedings. TBMP § 527.02.
9 16 TTABVUE 6.
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Nonetheless, the Board maintains the inherent authority to impose any
sanction provided for under Fed. R. Civ. P. 37(b)(2). To this end, Applicant is
allowed until fifteen (15) days from the mailing date of this order to show good
cause why the Board should not exercise this authority to sanction her by finding
that 1) she has forfeited her right to object to Opposer’s discovery requests on the
merits, and 2) Opposer’s requests for admissions are deemed admitted pursuant
to Fed. R. Civ. P. 36(a)(3). If Applicant files no response, or files a response
wherein Applicant fails to show good cause, the Board will impose appropriate
sanctions.
Finally, to manage this proceeding and ensure that it progresses efficiently,
Applicant is barred from filing any unconsented or unstipulated motion in this
matter without first requesting and receiving leave to do so from the Board. Cf.
Schering-Plough Animal Health Corp. v. Aqua Gen AS, 90 USPQ2d 1184, 1185
(TTAB 2009) (upon finding that applicant filed untenable motion to dismiss and
unnecessarily delayed proceeding, increased litigation costs and wasted the
Board’s resources, Board ordered applicant’s counsel to secure permission before
filing any unconsented or unstipulated motion); Avia Group Int’l Inc. v. Faraut,
25 USPQ2d 1625, 1627 (TTAB 1992) (after finding that a pattern of baseless and
unnecessary motions, and failure to follow Board practice and procedure,
unnecessarily delayed proceeding and raised cost of litigation, Board precluded
cancellation respondent from filing further motions without the Board’s leave).
Applicant must 1) request leave by telephone conference call to the Board
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attorney assigned to this proceeding, with Opposer’s counsel included, at least
three business days prior to the anticipated filing of any unconsented motion, and
2) clearly and concisely set forth the factual and legal basis for the proposed
motion.
Schedule
Proceedings are resumed. Expert disclosure, close of discovery, and trial dates
are reset as follows:
Expert Disclosures Due 2/12/2016
Discovery Closes 3/13/2016
Plaintiff's Pretrial Disclosures 4/27/2016
Plaintiff's 30-day Trial Period Ends 6/11/2016
Defendant's Pretrial Disclosures 6/26/2016
Defendant's 30-day Trial Period Ends 8/10/2016
Plaintiff's Rebuttal Disclosures 8/25/2016
Plaintiff's 15-day Rebuttal Period Ends 9/24/2016
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. Trademark Rule 2.125, 37 CFR
§ 2.125. Briefs shall be filed in accordance with Trademark Rules 2.128(a) and
(b), 37 CFR § 2.128(a) and (b). An oral hearing will be set only upon request filed
as provided by Trademark Rule 2.129, 37 CFR § 2.129.
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