Fifth Generation Inc. v. Titomirov Vodka LLC

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

THIS ORDER IS A P.O. Box 1451

PRECEDENT OF THE Alexandria, VA 22313-1451

TTAB General Contact Number: 571-272-8500

General Email: TTABInfo@uspto.gov

STANLEY

October 31, 2019

Opposition No. 91226034 (Parent Case)

Opposition No. 91235263

Cancellation No. 92066395

Fifth Generation Inc.

v.

Titomirov Vodka LLC

Before Cataldo, Bergsman, and Kuczma,

Administrative Trademark Judges.

By the Board:

This case now comes up on (1) Fifth Generation Inc.’s (“Fifth Generation”) motion,

filed June 17, 2019, for judgment as a discovery sanction or, in the alternative, to

compel Titomirov Vodka LLC (“Titomirov”) to make Dr. Melody Sanger, Mr. Anthony

Bromley, Dr. Alexander Titomirov, and a Fed. R. Civ. P. 30(b)(6) witness available

for deposition; and (2) Titomirov’s request, filed July 25, 2019, for a telephone

conference on Fifth Generation’s motion for sanctions. The request for a telephone

conference is opposed. Titomirov did not file a response to Fifth Generation’s motion

for sanctions. In addition to filing a request for a telephone conference, it twice moved

to extend its time to file a response to the motion, both of which the Board denied. 53

TTABVUE and 56 TTABVUE. In view of Titomirov’s request for a telephone

Opposition Nos. 91226034 (Parent Case) and 91235263, and Cancellation No. 92066395

conference and motions to extend its time to respond to Fifth Generation’s motion,

we will not treat Fifth Generation’s motion as conceded but will exercise our

discretion and consider the motion on the merits.

I. Background

Fifth Generation challenges the following applications and registration owned by

Titomirov:

• Application Serial No. 86504543 for the mark TITOMIROV VODKA, in

standard characters, for “vodka,”1 subject of Opposition No. 91226034;

• Application Serial No. 87225767 for the mark TITOMIROV ALKALINE

MARTINI, in standard characters, for “alcoholic mixed beverages except

beers; prepared alcoholic cocktail; vodka; pre-mixed alcoholic beverages,

other than beer-based,”2 subject of Opposition No. 91235263; and

• Registration No. 4807559 for the mark LUCKY VODKA BY ALEX

TITOMIROV, in standard characters, for “vodka,”3 subject of Cancellation

No. 92066395.

In each proceeding, Fifth Generation pleads priority and likelihood of confusion

under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), lack of bona fide intent

to use the mark in commerce with the identified goods as of the filing date of the

application under Section 1(b) of the Trademark Act, and dilution under Section 43(c)

1 Filed January 15, 2015 based on a claim of an intent to use the mark in commerce under

Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b); Amendment to Allege Use filed April

23, 2015, claiming February 2015 as the date of first use and April 14, 2015 as the date of

first use in commerce.

2 Filed November 3, 2016 based on a claim of an intent to use the mark in commerce under

Section 1(b) of the Trademark Act.

3 Issued September 8, 2015. The underlying application was filed January 15, 2015 based on

a claim of an intent to use the mark in commerce under Section 1(b) of the Trademark Act;

Amendment to Allege Use filed April 23, 2015, claiming February 2015 as the date of first

use and April 14, 2015 as the date of first use in commerce.

2

Opposition Nos. 91226034 (Parent Case) and 91235263, and Cancellation No. 92066395

of the Trademark Act, 15 U.S.C. § 1043(c). In Opposition No. 91226034 and

Cancellation No. 92066395, Fifth Generation also pleads nonuse and unlawful use.4

On September 4, 2017, Fifth Generation filed a motion to reopen discovery in

Opposition No. 91226034 on the ground that Titomirov “conceal[ed]” evidence during

discovery which “materially prejudice[d] [Fifth Generation’s] ability to prosecute the

merits[.]” 20 TTABVUE 3. At issue was Titomirov’s representations that Dr.

Titomirov is its only officer and employee and that he resides in Monaco. Id. at 19-20.

Based on those representations, Titomirov refused to produce any witnesses for

deposition. Id. at 2-3.

Fifth Generation established that Dr. Melody Sanger and Mr. John Samuelson

represent themselves publicly as Titomirov’s President of U.S. Operations and Vice

President of Sales and Business Development, respectively. 24 TTABVUE 7-8. On

December 21, 2017, the Board granted the motion, finding that the unexplained

discrepancies between Titomirov’s discovery responses and the public

representations of Dr. Sanger and Mr. Samuelson warranted reopening discovery

(“Prior Order I”). Id. at 7-9.

On June 5, 2018, Fifth Generation filed a motion for sanctions or, in the

alternative, to compel discovery on grounds that Titomirov: (1) continued to falsely

maintain that Dr. Titomirov is its sole employee and lives in Monaco “with no

presence in the United States” (26 TTABVUE 3); (2) “refused to perform a proper

4 The Board consolidated Opposition No. 91235263 and Cancellation No. 92066395 by order

dated August 7, 2017 (19 TTABVUE), and the Board consolidated Opposition No. 91226034

with Opposition No. 91235263 and Cancellation No. 92066395 by order dated December 21,

2017 (24 TTABVUE).

3

Opposition Nos. 91226034 (Parent Case) and 91235263, and Cancellation No. 92066395

document collection from its employees” (id. at 11-12), and (3) did not supplement its

original discovery responses or respond completely to newly propounded discovery

requests (id.).

On October 24, 2018, the Board declined to grant judgment as a sanction based on

the then-current record, but found that lesser sanctions were warranted based on

Titomirov’s failure yet again to explain the inconsistencies between its discovery

responses and public representations regarding Dr. Sanger and Mr. Samuelson

(“Prior Order II”). 31 TTABVUE 3. The Board further found it appropriate to compel

Titomirov to supplement certain of its discovery responses. Id. More specifically, the

Board ordered as follows:

• Because Dr. Sanger and Mr. Samuelson represent themselves

publicly as officers of Titomirov, Fifth Generation may depose them

on notice alone. …

• Titomirov must consult Dr. Sanger and Mr. Samuelson on all of Fifth

Generation’s interrogatories and document requests.

• Within thirty days of the mailing date of the order, Titomirov must

serve:

o Amended written discovery responses and responsive

documents based on information and documents collected

from Dr. Sanger and Mr. Samuelson. If Dr. Sanger and Mr.

Samuelson do not have responsive information or documents

in their possession, custody or control, Titomirov must so state

under oath.

o Supplemental verified written responses without further

objections to Interrogatories 1, 5, 8, 11, 18-24, 28, 37, and 42;

o Verified responses to Fifth Generation’s second and third sets

of interrogatories;

4

Opposition Nos. 91226034 (Parent Case) and 91235263, and Cancellation No. 92066395

o Supplemental written responses without further objections

and responsive documents to Document Requests 17, 24 and

37-40;

o Supplemental written responses to Fifth Generation’s first

and second sets of Document Requests (except requests 2-4)

specifying whether Titomirov has withheld any documents

based on objections. Fed. R. Civ. P. 34(b)(2)(C) (“An objection

must state whether any responsive materials are being

withheld on the basis of that objection.”)[; and]

o To the extent necessary, a privilege log pursuant to Fed. R.

Civ. P. 26(b)(5)(A)(ii).

• Titomirov is precluded at trial from relying on testimony from any

current or former officer, board member, or employee other than Dr.

Titomirov.

• Titomirov is precluded at trial from relying on documents and

information requested during discovery but not produced.

• Fifth Generation may use the inconsistencies in Titomirov’s

discovery responses at trial to challenge the credibility of any witness

testimony or evidence that Titomirov may introduce at trial.

31 TTABVUE 4-5 (footnotes omitted).

On November 21, 2018, Titomirov filed motions to quash the oral depositions of

Dr. Titomirov, Dr. Sanger, and its Fed. R. Civ. P 30(b)(6) witness, all noticed to take

place in Miami, Florida, which is within the judicial district of Titomirov’s corporate

address. 35 TTABVUE; 36 TTABVUE; 37 TTABVUE. On April 1, 2019, the Board

granted Titomirov’s motion to quash the notice of deposition of Dr. Titomirov but

denied the motions to quash the depositions of Dr. Sanger and the Fed. R. Civ. P

30(b)(6) witness (“Prior Order III”). 43 TTABVUE.

With respect to the deposition of Dr. Titomirov, the Board found “the record

insufficient to rebut the assertion that Dr. Titomirov resides in Monaco[,]” as Dr.

5

Opposition Nos. 91226034 (Parent Case) and 91235263, and Cancellation No. 92066395

Titomirov had previously submitted a declaration in support of a motion to quash in

the U.S. District Court for the District of Maryland averring that he is a full-time

resident of Monaco. Id. at 9 (citing 21 TTABVUE 10, ¶ 2). Because the Board will not

order the deposition in the United States of a natural person residing in a foreign

country, the Board granted the motion to quash the oral deposition of Dr. Titomirov,

in his individual capacity. Id. at 10.

The Board confirmed that Fifth Generation should be permitted to take the

deposition of Dr. Sanger and denied Titomirov’s motion to quash “because Dr. Sanger

represents herself publicly as an officer of Titomirov” and “Titomirov has not

submitted any evidence to support its assertion that Dr. Sanger ‘is not a current

volunteer, officer, or otherwise an agent [of Titomirov] in any capacity.’” Id. at 10

(quoting 36 TTABVUE 2).

With respect to the Fed. R. Civ. P. 30(b)(6) deposition, the Board noted that

“Titomirov need not produce Dr. Titomirov for a deposition in Miami, Florida, but it

must produce a witness or witnesses prepared to testify on its behalf on the topics in

Fifth Generation’s deposition notice” and “[i]f a particular potential designated

witness is unwilling or unable to testify, because he resides elsewhere or for another

reason, then Titomirov must select another, or if necessary others, to testify on the

topics set forth in the deposition notice, even if the witness(es) must become educated

about the topics.” Id. at 11-12 (citation omitted).

Fifth Generation’s present motion alleges that Titomirov has not complied with

the Board’s prior orders.

6

Opposition Nos. 91226034 (Parent Case) and 91235263, and Cancellation No. 92066395

II. Titomirov’s Request for Telephone Conference

Although there is no formal limit as to the type of matters that can be handled

through telephone conferences, the Board will not decide by telephone conference any

motion that the Board determines may be potentially dispositive, that is, a motion

which, if granted, would dispose of a Board proceeding. TRADEMARK TRIAL AND

APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 502.06(a) (2019). Such orders must

issue by a panel or per curiam. Trademark Rule 2.127(c); TBMP 102.03. Because Fifth

Generation seeks judgment as a sanction, the motion is potentially dispositive of

these consolidated proceedings. As such, to the extent Titomirov requests that the

Board resolve Fifth Generation’s motion for sanctions by telephone, Titomirov’s

request is denied.

To the extent Titomirov requests that the Board “assist the parties in quickly

fleshing out the issues raised” in the motion for sanctions (57 TTABVUE 3), that

request is also denied. The Board does not negotiate compliance with its orders, and,

although the Board may exercise its discretion to schedule a telephone conference

with parties to address discovery issues without a motion pending before the Board,

it is not the Board’s role to “mediate” the parties’ discovery disputes. In addition, in

context it appears that the request for a telephone conference is interposed for

purposes of delay.5

5 “A party served with a written motion may request a telephone conference by contacting

the assigned Board attorney soon after it receives the service copy of the motion so that the

responding party will have sufficient time to respond to the motion in the event the request

for a telephone conference is denied. A party may not request a telephone conference at or

near the end of its time to respond to the motion when its purpose in doing so is to avoid or

delay its response to the motion.” TBMP § 502.06(a) (emphasis added).

7

Opposition Nos. 91226034 (Parent Case) and 91235263, and Cancellation No. 92066395

In these circumstances, it is clear that a telephone conference will not assist the

Board in resolving the pending motion for sanctions. Although Titomirov did not

expressly request a further extension of time to file its response to Fifth Generation’s

motion for sanctions in its request for a telephone conference, Titomirov did submit

a declaration from its counsel describing the difficulties counsel had communicating

with Titomirov. 57 TTABVUE 6-7. As with its two prior unsuccessful motions to

extend its time to respond, Titomirov once again has failed to show good cause for the

Board to reset the time for it to file a response to Fifth Generation’s motion for

sanctions. Fed. R. Civ. P. 6(b); SFW Licensing Corp. v. Di Pardo Packing Ltd., 60

USPQ2d 1372, 1373 (TTAB 2001) (opposers had not come forward with “detailed

facts” required to carry their burden explaining their inaction). We will consider the

merits of Fifth Generation’s motion on the current record.

III. Fifth Generation’s Motion for Sanctions

Fifth Generation now moves for judgment, or in the alternative, to compel on

grounds that Titomirov: (1) continues to refuse to make Dr. Sanger and a corporate

representative of Titomirov available for deposition, despite the Board’s prior orders

that it do so (49 TTABVUE 7-10, 12-13, 27-35, and 39-41); (2) refuses to make

Anthony Bromley, Vice President of Business Development of Titomirov, available

for deposition, despite having been served with proper notice of his deposition (id. at

10-12 and 36-38); (3) failed to supplement its responses to interrogatories requesting

Titomirov to identify when Dr. Titomirov will be in the United States (i.e.,

8

Opposition Nos. 91226034 (Parent Case) and 91235263, and Cancellation No. 92066395

Interrogatories Nos. 8 and 20) (id. at 13-17); and (4) continues to misrepresent Dr.

Titomirov’s presence in the United States (id.).

Fifth Generation relies on: (1) the evidence it submitted with its prior motion to

compel and response to motions to quash concerning Dr. Sanger’s role at Titomirov

(id. at 7-10); (2) information posted on social media concerning Mr. Bromley’s

corporate position at Titomirov (id. at 10-12 and 48-51); (3) images of Dr. Titomirov

at events in Palm Beach, Florida in May 2019 (id. at 52-70); and (4) two documents,

both titled “Affidavit of Confession of Judgment,” that Dr. Titomirov signed on May

14 and May 23, 2019 respectively, both notarized in the State of Florida and filed in

the Supreme Court of the State of New York, and both averring that Dr. Titomirov

“resides at 2601 CAPTAINS WAY JUPITER, FL 33477” (id. at 79 and 81).

The law is clear that if a party fails to comply with a Board order relating to

discovery, including an order compelling discovery, the Board may order appropriate

sanctions as defined in Trademark Rule 2.120(h)(1), 37 C.F.R. § 2.120(h)(1), and Fed.

R. Civ. P. 37(b)(2), including entry of judgment. Benedict v. Super Bakery Inc., 665

F.3d 1263, 101 USPQ2d 1089, 1093 (Fed. Cir. 2011) (affirming Board’s entry of

judgment as a discovery sanction for repeated failures to comply with Board’s

reasonable orders), aff’g 96 USPQ2d 1134 (TTAB 2010); MHW Ltd. v. Simex

Aussenhandelsgesellschaft Savelsberg KG, 59 USPQ2d 1477, 1478 (TTAB 2000).

Sanctions are also appropriate where a party fails to produce a witness after receiving

proper notice, even if counsel indicates the witness will not attend, in the absence of

a motion to quash filed prior to the deposition date. See HighBeam Mktg., LLC v.

9

Opposition Nos. 91226034 (Parent Case) and 91235263, and Cancellation No. 92066395

Highbeam Research, LLC, 85 USPQ2d 1902, 1906 (TTAB 2008); see also Trademark

Rule 2.120(h)(2); TBMP § 527.01(b). Although judgment is a harsh remedy, it is

justified where there is a strong showing of willful evasion and no less drastic remedy

would be effective. Unicut Corp. v. Unicut, Inc., 222 USPQ 341, 344 (TTAB 1984); see

also Benedict, 101 USPQ2d at 1093.

Fifth Generation brought the parent case more than three and a half years ago,

and despite the Board granting a motion to compel (Prior Order II) and then denying

two motions to quash (Prior Order III), Fifth Generation has been unable to obtain

supplemental discovery responses or discovery depositions from Titomirov. Titomirov

has failed to comply with Board orders regarding discovery by: (1) failing to properly

supplement its discovery responses concerning Dr. Titomirov’s presence in the United

States, and (2) failing to make witnesses available for deposition.

In addition to its repeated failure to comply with discovery even after Board order,

Titomirov also has attempted to evade discovery by misrepresenting: (1) the

relationship between Titomirov and Dr. Sanger and Mr. Samuelson in an attempt to

avoid its discovery obligations, and (2) Dr. Titomirov’s residence as reflected by the

contradictions between Titomirov’s filings in this proceeding and the Affidavits of

Confession of Judgment filed in the Supreme Court of the State of New York in June

2019. Titomirov’s filings with respect to the motion for sanctions further evidence its

willful evasion. Rather than address Fifth Generation’s arguments, it filed two

unsupported motions for extension of time, which were denied,6 and filed a request

6 Although extensions of time for good cause are granted liberally, Titomirov’s perfunctory

motions, with one sentence asserting a reason for good cause, and “vague” assertions

10

Opposition Nos. 91226034 (Parent Case) and 91235263, and Cancellation No. 92066395

for a phone conference that appears to have been interposed for purposes of delay.

Such dubious filings not only demonstrate Titomirov’s dilatory intent, but also tax

Board resources.

Together, these actions show a course and pattern of delay that evidence willful

evasion of Titomirov’s discovery obligations. On this record and based on all of

Titomirov’s actions before us, we find that Titomirov has continually failed to comply

with Board orders and hampered reasonable procedures appropriate to resolution of

this trademark conflict. See Benedict, 101 USPQ2d at 1093.

The lesser sanctions already imposed on Titomirov have had little effect. Even

after sanctions were entered against Titomirov, it failed to comply with the order on

Fifth Generation’s motion to compel or make witnesses available for discovery

depositions. We therefore foresee no prospect of future compliance in view of the

continued pattern of dilatory tactics after Titomirov was first sanctioned. Any

sanction short of judgment would be futile and unfair to Fifth Generation. See

Benedict, 101 USPQ2d at 1093 (“The remedy of default judgment [under Trademark

Rule 2.120(g)(1)7] was within the Board’s discretion in view of Mr. Benedict’s repeated

failures to comply” with Board procedures and orders); SFM, LLC v. Corcamore, LLC,

129 USPQ2d 1072, 1079 (TTAB 2018) (granting judgment as a sanction under, inter

alia, Trademark Rule 2.120(h)(1); “Respondent’s conduct indicates that entry of any

regarding good cause, did not provide sufficient basis for the Board to grant such an

extension. 53 TTABVUE, 56 TTABVUE.

7Trademark Rule 2.120(g)(1) was redesignated as Trademark Rule 2.120(h)(1), effective

January 14, 2017.

11

Opposition Nos. 91226034 (Parent Case) and 91235263, and Cancellation No. 92066395

sanction short of judgment would be futile. It is obvious from a review of the record

that Respondent has been engaging for years in delaying tactics, including the willful

disregard of Board orders, taxing Board resources and frustrating Petitioner’s

prosecution of this case.”); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg.

Co., 55 USPQ2d 1848, 1854 (TTAB 2000) (granting judgment as a sanction under

Trademark Rule 2.120(g)(1) where “applicant and its counsel have engaged in a

pattern of dilatory tactics, have purposely avoided applicant’s discovery

responsibilities in this case, and have willfully failed to comply with the Board’s …

order.”).

IV. Decision

In view of Titomirov’s failure to comply with the Board’s prior orders and its

pattern and practice discussed above of avoiding its discovery obligations evidencing

willful evasion, the motion for judgment as a sanction under Trademark Rule 2.120(h)

is granted.8 Accordingly, judgment is entered against Titomirov, Opposition Nos.

91226034 and 91235263 are sustained, and application Serial Nos. 86504543 and

87225767 are refused. Cancellation No. 92066395 is granted, and Registration No.

8 “[T]he Board has the authority to control the disposition of cases, which necessarily includes

the inherent power to enter sanctions.” Patagonia, Inc. v. Azzolini, 109 USPQ2d 1859, 1861

n.8 (TTAB 2014) (citing Carrini Inc. v. Carla Carini S.R.L., 57 USPQ2d 1067, 1071 (TTAB

2000)). Because we enter judgement under Trademark Rule 2.120(h) based on Titomirov’s

disregard of prior Board orders, misrepresentations to the Board concerning Dr. Titomirov’s

residence in the United States, and a continuing pattern of frustrating Fifth Generation’s

prosecution of this case, we need not consider whether the sanction of judgment should be

entered pursuant to our inherent authority to enter sanctions. See SFM, LLC, 129 USPQ2d

at 1078-79 (granting judgment as a sanction under Trademark Rule 2.120(h)(1) and the

Board’s inherent authority).

12

Opposition Nos. 91226034 (Parent Case) and 91235263, and Cancellation No. 92066395

4807559 will be cancelled in due course. See Trademark Rule 2.120(h) and Fed. R.

Civ. P. 37(b)(2)(C).

13