The opinion
THIS ORDER IS A UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
PRECEDENT OF THE
P.O. Box 1451
TTAB
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
September 7, 2018
Opposition No. 91235392
Opposition No. 91240011
One Jeanswear Group Inc.
v.
YogaGlo, Inc.
M. Catherine Faint,
Interlocutory Attorney:
This case now comes up on the following motions:
1) Applicant’s motion, filed March 15, 2018 in Opposition No. 91235392 (’392
case) to compel discovery responses; and
2) Opposer’s motion, filed May 1, 2018 in Opposition No. 91240011 (’011 case), to
consolidate proceedings.
The motions are contested and fully briefed.
A. Motion to Consolidate
Applicant seeks to register the marks GLO in standard character form for
goods and services in Classes 18 and 35.1 By its notices of opposition, Opposer claims
1 Application Serial Nos. 87035150 and 87035165 were both filed May 12, 2016, based on
intent to use the marks in commerce. The goods in Serial No. 87035150 are, “bags for sports;
athletic bags; carry-all bags; backpacks; general purpose bags for carrying yoga equipment.”
The services in Serial No. 87035165 are, “online retail store services featuring exercise and
fitness equipment, accessories and apparel.”
Opposition Nos. 91235392 & 91240011
ownership of multiple registrations and applications for the mark GLO2 and GLO-
formative marks, and opposes Applicant’s registration of its marks based on
likelihood of confusion with Opposer’s marks.
Opposer seeks to consolidate the above-identified cases arguing that the marks
and goods at issue in these proceedings are essentially the same, and the parties are
identical. Thus the cases present common issues of law and fact and should be
consolidated pursuant to Fed. R. Civ. P. 42(a).
Applicant argues that the motion to consolidate was filed in the ’011 case at
the time when the ’392 case was suspended for consideration of the motion to compel.
Applicant notes that Opposer relies on fewer active applications and registrations in
the ’392 case3 than in the ’011 case,4 and Opposer alleges different rights in the ’011
case than in the ’392 case. Applicant argues consolidation should wait until resolution
of the discovery issues.
2 Registration Nos. 2529980, 5200182 for GLO; Registration No. 5287975 for GLO JEANS,
and Registration No. 4809441 for GLO BY GLORIA VANDERBILT; all for footwear or
clothing items in Class 25; and multiple pending applications for GLO-formative marks for
jewelry and watches in Class 14; handbags in Class 18; and clothing and footwear items in
Class 25. Registration No. 4071178 was cancelled under Section 8 of the Trademark Act, 15
U.S.C. § 1058.
3 Registration Nos. 2529980, 4809441, 5200182, and 5287975. Registration Nos. 4071178,
3884062, and 3917806 claimed by Opposer in the ’392 case are all cancelled under Section 8
of the Trademark Act. Opposer also claimed ownership of pending application Serial No.
87434757.
4 Registration Nos. 2529980, 4809441, 5200182, and 5287975. Registration No. 4071178,
claimed by Opposer in the ’011 case, was cancelled under Section 8 of the Trademark Act.
Opposer also claimed ownership of pending application Serial Nos. 87402532, 87402546,
87402516, 87434757, 87554572, 87680447, 87722458, and 87722467.
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Opposition Nos. 91235392 & 91240011
The Board may consolidate pending cases that involve common questions of
law and fact. The Board has determined that, at this time, it is capable of evaluating
the similarities and any differences in the pleadings, evidence and defenses for these
cases. See Fed. R. Civ. P. 42(a); see also Wis. Cheese Grp., LLC v. Comercializadora
de Lacteos y Derivados, S.A. de C.V., 118 USPQ2d 1262, 1264 (TTAB 2016)
(consolidation due to common questions of law and fact). A review of the pleadings in
the above-identified opposition proceedings indicates that the parties are the same,
the marks in the opposed applications are identical, both oppositions claim likelihood
of confusion with the same four active registrations of Opposer, and the proceedings
involve common questions of law and fact. Given that the opposed marks are identical
and the grounds for opposition are similar, much of the discovery and evidence at
trial will likely be the same in both cases. Absent consolidation, the parties would
likely continue with duplicative and/or piecemeal discovery and prosecution in the
separate proceedings.
The fact that there may be additional pending applications claimed in the ’011
case does not preclude consolidation as Opposer’s pending applications, if made
properly of record, are evidence only that the applications were filed on a certain date
or used to support that Opposer has standing. Nike, Inc. v. WNBA Enters. LLC, 85
USPQ2d 1187, 1193 n.8 (TTAB 2007) (pending applications are not evidence of use of
the marks); WeaponX Performance Prods., Ltd. v. Weapon X Motorsports, Inc., 126
USPQ2d 1034, 1040 (TTAB 2018) (plaintiff may establish its standing by proving that
it owns application refused registration based on likelihood of confusion with involved
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Opposition Nos. 91235392 & 91240011
mark).5 In view thereof, Opposer’s motion to consolidate is granted and proceedings
are consolidated.
The consolidated cases may be presented on the same record and briefs. See Dating
DNA LLC v. Imagini Holdings Ltd., 94 USPQ2d 1889, 1893 (TTAB 2010).
The Board file will be maintained in Opposition No. 91235392 as the “parent” case.
As a general rule, from this point onward, only one copy of any submission should be filed
in the parent case, but that copy should include both proceeding numbers in its caption
in ascending order.
Despite being consolidated for purposes of case presentation, each proceeding
retains its separate character. The final decision on the consolidated cases shall take
into account any differences in the issues raised by the respective pleading; and a copy of
the decision shall be placed in each proceeding file.
In keeping with Board practice, dates are reset for these newly consolidated
proceedings as set out below.
B. Motion to Compel
Applicant seeks to compel responses to all of its interrogatories and specifically
seeks an order overruling Opposer’s general objection to the number of
5 We note that when a party pleads a pending application, it may make the resulting
registration of record at trial. UMG Recordings, Inc. v. O’Rourke, 92 USPQ2d 1042, 1045 n.12
(TTAB 2009). However, in this case the pending applications are suspended and are unlikely
to issue into registrations during the pendency of these proceedings.
4
Opposition Nos. 91235392 & 91240011
interrogatories as exceeding the limit of 75 total interrogatories provided in
Trademark Rule 2.120(d), 37 C.F.R. § 2.120(d).
1. Good Faith Effort
Trademark Rule 2.120(f)(1), 37 C.F.R. 2.120(f)(1), and Fed. R. Civ. P. 37(a)(1)
require a party moving to compel to disclose the required good faith efforts in which
it engaged to try to resolve the issue when submitting the motion to the tribunal.
Applicant argues that the “history of good faith efforts” is set forth in its motion.
Applicant’s counsel submitted her declaration, which details the letter and email
exchanges between counsel, together with copies of that correspondence, regarding
Opposer’s objection to the interrogatories as excessive.
Opposer argues that Applicant’s motion to compel is procedurally defective
because Applicant’s declaration does not “mention” Applicant’s efforts to resolve the
dispute or that the parties were unable to do so, and that Applicant did not make a
good faith effort to resolve the dispute prior to filing the motion to compel. Opposer
also argues it agreed to withdraw the objection as to excessive interrogatories if
Applicant would serve revised amended interrogatories deleting the phrase “and for
each product listed in the respective registration” from Interrogatory Nos. 1, 2, 3, and
4, as deletion of the phrase would limit the interrogatories to the appropriate
number.6
The Board has reviewed the briefs, arguments, declaration and attachments.
Counsel for the parties had exchanged several letters and emails regarding alleged
6 12 TTABVUE 7.
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Opposition Nos. 91235392 & 91240011
deficiencies in the interrogatories, and were unable to resolve their differences. The
Board finds Applicant has satisfied the good faith effort requirement prior to the
filing of its motion to compel. The Board next proceeds to the merits of the discovery
dispute.
2. General Objection to Interrogatories as Excessive in Number
On January 5, 2018, Applicant served 17 numbered interrogatories on
Opposer, some of which included subparts. In lieu of responding to interrogatories,
Opposer served a general objection that the interrogatories exceed the limit of 75
interrogatories set by Trademark Rule 2.120(d). Applicant argues its number of
interrogatories are well within the limit of 75 imposed by the Rule, even if the
subparts in Interrogatory Nos. 1, 2, 3, and 4 are counted, as each of the goods in the
involved registrations is not counted as a separate inquiry.
As provided by Trademark Rule 2.120(d), the total number of interrogatories
a party may serve upon another party in an entire proceeding may not exceed 75
total, counting subparts. When determining the number of interrogatories each
subpart must be counted separately. Kellogg Co. v. Nugget Distrib. Coop. of Am. Inc.,
16 USPQ2d 1468, 1469 (TTAB 1990).
Opposer’s objection to the interrogatories as containing an excessive number
of subparts concerns, in part, its view that interrogatories 1 – 4 each expressly inquire
as to the “total of 29 separate products” identified in its pleaded registrations. Thus
for interrogatories 1 – 4, Opposer counts the following:
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Opposition Nos. 91235392 & 91240011
In reply, Applicant argues Opposer made clear that it did not agree to provide
information regarding each of the goods in the pleaded registrations.
The Board is not bound by the propounding party’s numbering or designating
system. E.g., Kellogg Co., 16 USPQ2d at 1469. Rather, the Board will look to the
substance of each interrogatory to identify whether it actually asks multiple distinct
questions (e.g., sales figures and advertising figures), in which case each question is
counted as a separate interrogatory, or whether it asks a single question, or all
relevant facts and circumstances concerning a single issue, applicable to all pleaded
marks or all asserted goods and services (such as, sales figures for each of a party’s
marks for multiple years), in which case it is counted as a single interrogatory. Jan
Bell Mktg., Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990). See
also NOTICE OF FINAL RULEMAKING, 54 Fed. Reg. 34886, 34893 (August 22, 1989).
The Rule does not provide for additional interrogatories in cases where more
than one mark is pleaded and/or attacked by a plaintiff, whether in a single
proceeding or in consolidated proceedings, because the propounding party may simply
request that each interrogatory be answered with respect to each involved mark of
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Opposition Nos. 91235392 & 91240011
the responding party, and the interrogatories will be counted the same as if they
pertain to only one mark. TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 405.03(c) (2018). The count of interrogatories is not driven by
the number of goods and services named in involved applications or registrations.
Rather, as noted above, the Board looks to the text of the interrogatories and counts
the substance of each question as a separate interrogatory. Kellogg Co., 16 USPQ2d
at 1469; see also TBMP § 405.03(d) and cases cited therein.
Applying the above guidelines to Applicant’s interrogatories, the Board
determines that Interrogatory Nos. 1 ― 4 arguably comprise at most 9 subparts.
Adding that figure to Opposer’s counting of the remainder of the interrogatories
(according to Opposer, the remainder comprise 30 subparts including 14 subparts to
Interrogatory No. 13), the total number of arguably-identifiable subparts is well
below the maximum of 75 interrogatories.
Accordingly, the motion to compel is granted to the extent that Opposer must
serve, within 30 days of the date of this order, its responses to Applicant’s first set of
interrogatories.
C. Schedule
Proceedings are resumed. Dates are reset as set out below. As there is no
indication that the discovery conference has been held in the child case, a date is set
out for the discovery conference below and discovery resumes on that date.
Deadline for Discovery Conference 10/11/2018
Discovery Resumes 10/11/2018
Initial Disclosures Due 11/10/2018
Expert Disclosures Due 3/10/2019
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Opposition Nos. 91235392 & 91240011
Discovery Closes 4/9/2019
Plaintiff's Pretrial Disclosures Due 5/24/2019
Plaintiff's 30-day Trial Period Ends 7/8/2019
Defendant's Pretrial Disclosures Due 7/23/2019
Defendant's 30-day Trial Period Ends 9/6/2019
Plaintiff's Rebuttal Disclosures Due 9/21/2019
Plaintiff's 15-day Rebuttal Period Ends 10/21/2019
Plaintiff's Opening Brief Due 12/20/2019
Defendant's Brief Due 1/19/2020
Plaintiff's Reply Brief Due 2/3/2020
Request for Oral Hearing (optional) Due 2/13/2020
Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony
is taken and introduced out of the presence of the Board during the assigned
testimony periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).
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