The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Order Is A General Contact Number: 571-272-8500
Precedent Of The TTAB
Mailed: February 24, 2016
Opposition No. 91220432
Intex Recreation Corp. and Intex Marketing
Ltd.
v.
The Coleman Company, Inc.
George C. Pologeorgis,
Administrative Trademark Judge:
This proceeding now comes before the Board for consideration of Opposers’ motion
to compel Applicant to produce unredacted versions of documents already produced
in response to Opposers’ document requests. The motion is fully briefed.
Initially, the Board finds that Opposers have made the required good faith effort
to resolve the parties' discovery dispute prior to seeking Board intervention and that
Opposers’ motion is timely. See Trademark Rule 2.120(e)(1).
By way of their motion to compel, Opposers request that the Board order
production of non-redacted versions of all documents that Applicant produced and
redacted on the basis that portions of the documents are either irrelevant to the
current proceeding or contain confidential information. Opposers argue that
irrelevance is not a proper ground for redaction and that they are entitled to
unredacted versions of all of these documents. Moreover, Opposers contend that
Opposition No. 91220432
redacting portions of responsive documents on the ground that such redacted portions
contain confidential information is inappropriate because the Board’s standard
protective order is automatically applicable to this proceeding.
In response, Applicant argues that it may redact irrelevant information in its
document production since such information is not reasonably calculated to lead to
the discovery of admissible evidence. Additionally, Applicant maintains that some of
the redacted information concerns (1) product lines of Applicant’s goods that are not
at issue in this proceeding, and (2) competitive information provided to Applicant’s
customers that is highly proprietary in nature. Furthermore, Applicant contends that
it offered to let Opposers review representative unredacted documents which would
have allayed any reasonable concerns, but Opposers declined that option.
Both parties cite to case law supporting their particular interpretation of the
Federal Rules of Civil Procedure related to discovery. Upon reviewing this material,
as well as additional case law on the topic, the Board is particularly persuaded by the
approach taken in Beverage Distributors, Inc. v. Miller Brewing Co., No. 2:08-cv-827,
2010 WL 1727640 (S.D. Ohio, Apr. 28, 2010).1 In that case, the court analyzed a
similar body of case law cited by the parties, which on one hand suggests that
redaction is an appropriate way to shield irrelevant or confidential material, but on
the other rejects this approach as not allowed under the Federal Rules. Compare
Spano v. Boeing Co., No. 3:06-cv-00743, 2008 WL 1774460, at *2 (S.D. Ill. Apr. 16,
2008) (holding redaction is a proper method of shielding information) and Schiller v.
1 Only the Westlaw® citations are currently available for the district court decisions cited
throughout this order.
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Opposition No. 91220432
City of New York, No. 04-cv-7922, 2006 WL 3592547, at *7 (S.D.N.Y. Dec. 7, 2006)
(same) with Orion Power Midwest, L.P. v. America Coal Sales Co., No. 2:05-cv-555,
2008 WL 4462301, at *2 (W.D. Pa. Sept. 30, 2008) (holding that redaction is not
allowed under Rule 34) and Medtronic Sofamor Danek, Inc. v. Michelson, No. 01-2373,
2002 WL 33003691, at *4–5 (W.D. Tenn., Jan. 30, 2002) (same).
In Beverage Distributors, the court concisely reconciled these two lines of cases by
noting several common themes pervading all of the opinions:
(1) redaction of otherwise discoverable documents is the exception rather than
the rule; (2) that ordinarily, the fact that the producing party is not harmed by
producing irrelevant information or by producing sensitive information which
is subject to a protective order restricting its dissemination and use renders
redaction both unnecessary and potentially disruptive to the orderly resolution
of the case; and (3) that the Court should not be burdened with an in camera
inspection of redacted documents merely to confirm the relevance or
irrelevance of redacted information, but only when necessary to protect
privileged material whose production might waive the privilege.
2010 WL 1727640 at *4. With those general themes in mind, the Board analyzes the
current dispute.
The Board is not persuaded that Applicant is entitled to redact information in its
document production that it believes is irrelevant or non-responsive to Opposers’
document requests. Indeed, the language of Fed. R. Civ. P. 34 discusses production of
“documents,” rather than paragraphs or sentences. See Orion Power Midwest, 2008
WL 4462301, at *2 (“Rule 34 talks about production of ‘documents,’ as opposed to the
relevant information contained in those documents ... Certainly, a party that seeks
to ‘inspect’ a document would anticipate being able to inspect the entire document ...
There is no express or implied support for the insertion of another step in the process
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Opposition No. 91220432
... in which a party would scrub responsive documents of non-responsive information
.”). The Board sees no compelling reason for Applicant not to disclose information
solely on the ground that Applicant believes the non-disclosed information is not
relevant or responsive where that information appears in a document that contains
otherwise relevant or responsive information. The disapproval of unilateral redaction
exists for a good reason. As one court explained:
Parties making such redactions unilaterally decide that information
within a discoverable document need not be disclosed to their
opponents, thereby depriving their opponents of the opportunity to
see information in its full context and fueling mistrust about the
redactions' propriety. And if the Court were to allow such a practice it would
improperly incentivize parties to hide as much as they dare. That is a result at
odds with the liberal discovery policies, the adversary process, and the Court's
obligation to read the Rules ‘to secure the just, speedy, and inexpensive
determination of every action and proceeding.’ Fed. R. Civ. P. 1.
Burris v. Versa Products, Inc., Civil No. 07-3938, 2013 WL 608742, at *3 (D. Minn.
Feb. 19, 2013) (emphasis added).
The Board further finds that allowing Applicant unilaterally to redact portions of
responsive documents that it believes are not relevant to the issues in this matter
would place an unnecessary and substantial burden on the Board by requiring the
Board to conduct a time-consuming in camera inspection of each of the documents at
issue in order to rule on Opposers’ motion to compel. Moreover, allowing redaction of
purportedly irrelevant information from relevant, responsive documents would only
increase the potential for discovery disputes, which would, in turn, increase the
expense of the proceeding for the parties and unnecessarily expend the Board’s
resources. See Medtronic Sofamor Danek, 2002 WL 33003691 at *5 (disapproving
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Opposition No. 91220432
redaction for irrelevance and observing that it would result in an increase in pretrial
litigation).
The Board also finds Applicant’s contention that redaction is appropriate because
some of the redacted information is highly proprietary in nature is without merit. As
the parties are aware, the Board’s standard protective order is automatically
applicable to this proceeding. Trademark Rule 2.116(g); TBMP § 412.01 (2015). To
the extent any of the documents at issue contain confidential information, Applicant
should have designated those documents under the appropriate tier of confidentiality
as set forth in the Board’s standard protective order. Alternatively, if Applicant
believed that the provisions of the Board’s standard protective order were not
sufficient to protect its proprietary information, the proper procedure would have
been to seek modification of the order, which it did not do. See ¶ 16 of the Board’s
standard protective order.2
In view thereof, Opposers’ motion to compel is GRANTED to the extent that
Applicant is allowed until March 14, 2016 in which to serve on Opposers non-
redacted versions of the documents at issue. To the extent portions of these
documents contain confidential information, Applicant should designate such
portions of the documents under the appropriate tier of confidentiality as provided by
the Board’s standard protective order. If the entire document consists of information
that can reasonably be designated as confidential, then Applicant should designate
2 The Board’s standard protective order may be viewed at the following URL address:
http://www.uspto.gov/trademarks-application-process/appealing-trademark-
decisions/standard-documents-and-guidelines-0
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Opposition No. 91220432
the document in its entirety as confidential under the appropriate tier of
confidentiality pursuant to the terms of the Board’s standard protective order.3
Trial Schedule
Proceedings are resumed. Discovery is open. Remaining trial dates are reset as
follows:
Expert Disclosures Due 5/23/2016
Discovery Closes 6/22/2016
Plaintiff's Pretrial Disclosures Due 8/6/2016
Plaintiff's 30-day Trial Period Ends 9/20/2016
Defendant's Pretrial Disclosures Due 10/5/2016
Defendant's 30-day Trial Period Ends 11/19/2016
Plaintiff's Rebuttal Disclosures Due 12/4/2016
Plaintiff's 15-day Rebuttal Period Ends 1/3/2017
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.
Briefs shall be filed in accordance with Trademarks Rules 2.128(a) and (b). An
oral hearing will be set only upon request filed as provided by Trademark Rule 2.129.
3 This ruling does not disturb or alter the Board’s jurisprudence that permits redaction of
information under appropriate circumstances under the Federal Rules of Civil Procedure and
Board rules and procedure, e.g., privileged information, customer names, and submissions to
the Board that are not filed under seal as confidential but which contain confidential
information.
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