UNITED STATES PATENT AND T O Trademark Trial and Appeal ...

JLE

March 1, 2021

Opposition No. 91239678 (parent)

Opposition No. 91244601

Monster Energy Company

v.

Eben McGarr

Jennifer L. Elgin, Interlocutory Attorney:

Opposer Monster Energy Company opposes registration by Applicant Eben

McGarr of the marks MAD MONSTER PARTY in standard characters, and MAD

MONSTER and MAD MONSTER PARTY in the designs shown below, on the

Principal Register:1

1 MAD MONSTER PARTY, Application Serial No. 87333442, and MAD MONSTER PARTY

& design, Application Serial No. 87333464, both filed February 13, 2017 under Section 1(a)

of the Trademark Act, 15 U.S.C. § 1051(a), for “Organizing exhibitions for educational and

entertainment purposes services, namely, organizing and conducting conventions in the

fields of horror and popular culture” in International Class 41, alleging dates of first use of

June 1, 2010. A disclaimer of “MONSTER PARTY” is of record in both applications. The

design mark is described as follows:

The mark consists of the wording “Mad Monster Party” outlined to appear as

liquid dripping from the words “Mad Monster” and where the “O” in “Monster”

is the head of a monster, the wording “Party” is in a different font and to the

right of the word “Party” is a martini glass.

MAD MONSTER & design, Application Serial No. 87328584, filed February 8, 2017 under

Section 1(a) of the Trademark Act for “General feature magazine in the field of horror and

pop culture” in International Class 16, alleging dates of first use of March 1, 2010 and first

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

P.O. Box 1451

Alexandria, VA 22313-1451

General Contact Number: 571-272-8500

General Email: [email protected]

mailto:[email protected]



2

Opposer asserts claims of priority and likelihood of confusion under Trademark Act

Section 2(d), 15 U.S.C. § 1052(d) based on prior registrations and alleged common law

rights in various “monster” formative marks.2

Now before the Board is Opposer’s motion, filed November 2, 2020, to compel

Applicant’s further discovery responses and document production, and extend the

discovery period to allow Opposer to conduct a deposition of Applicant.3 Opposer’s

motion to compel discovery is timely and includes copies of the relevant requests and

responses. Trademark Rule 2.120(f)(1). The motion is fully briefed.4

A. Background

Opposer’s motion to compel details the long history of correspondence and

conferences between the parties regarding alleged deficiencies in Applicant’s

use in commerce of April 8, 2011. A disclaimer of “MONSTER” is of record. The mark is

described as follows:

The mark consists of the wording “Mad Monster” with the “O” in “Monster”

being a monster head and the letters outlined with dripping liquid.

2 1 TTABVUE. Record citations are to TTABVUE, the Board’s publicly available docket

history system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).

3 22 TTABVUE.

4 For purposes of this order, the Board presumes the parties’ familiarity with the pleadings,

the history of the proceeding, and the arguments submitted in connection with the motion.

In deciding the motion, all of the parties’ arguments were carefully considered in light of the

evidence of record, although the Board does not find it necessary to discuss all of them in this

order. See Guess? IP Holder L.P. v. Knowluxe LLC, 116 USPQ2d 2018, 2018 (TTAB 2015).



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responses to Opposer’s discovery requests.5 On July 9, 2019, Opposer filed its first

motion to compel.6 The Board denied Opposer’s first motion to compel on November

29, 2019, finding that Opposer had not exercised the necessary good faith effort to

resolve the parties’ dispute before seeking Board intervention.7 After several

extensions, the Board reset the close of discovery for November 10, 2020.8

Opposer contends that the parties held a conference on October 8, 2020 to discuss

“Applicant’s refusal to produce documents responsive to Request for Production Nos.

8 and 13-17, Applicant’s representations that he had produced all documents

responsive to Request for Production Nos. 1-3, 9, 10, 19-25, 27, 28, and 31-33 in his

opposition to Opposer’s Motion to Compel, Applicant’s inadequate responses to

Interrogatory Nos. 3-5, 25, and 27, and deposition scheduling.”9 Following the

conference, Opposer’s counsel documented the matters discussed by, and agreements

reached between, the parties, including the following:

(1) Applicant represented that documents responsive to Document Request

Nos. 1‐3, 19‐25, 27, 28, 31‐33 had been produced.

(2) Applicant would inform Opposer by October 15, 2020 whether Applicant

has any responsive documents to Requests for Production Nos 5, 8‐10, and

13‐17.

5 22 TTABVUE.

6 12 TTABVUE.

7 Id. at 2-3.

8 21 TTABVUE 6-7.

9 22 TTABVUE at 9.



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(3) Applicant refused to further supplement his responses to Interrogatory

Nos. 3‐5, 25, and 27.10

On October 15, 2020, Opposer offered to make its witness available for deposition

on November 9, 2020.11 Applicant immediately accepted the November 9 date, and in

turn offered November 10, 2020 for the deposition of Applicant. Opposer’s counsel

replied none of its attorneys were available on November 10 and asked for alternative

dates for the deposition prior to the close of discovery.12 Applicant’s counsel responded

that this was the only date Applicant was available, and he found it “strange that a

firm of your size cannot provide someone to take a deposition.”13 Later that day,

Applicant supplemented its document production.14 Then, on October 19, 2020,

Applicant served its third amended responses to Request for Production Nos. 5, 8-10,

and 13-17, and Interrogatory Nos. 3-5, 25, and 27.15 Opposer has not submitted

evidence of any further discussions between the parties.

On November 2, 2020, Opposer filed the instant motion to compel (supported by

the declaration of its counsel, Nicole Townes) requesting that Applicant be ordered

to:

(1) Produce additional documents responsive to Requests for Production

Nos. 1, 2, 5, 19-21, 28, and 32;

10 Id. at 210.

11 Applicant noticed Opposer’s CEO, Mr. Rodney Sacks, for deposition in his individual

capacity, along with requests for documents. See 27 TTABVUE 17-24; Fed. R. Civ. P. 32(b)(2).

12 22 TTABVUE 208-09.

13 Id. at 208.

14 Id.

15 Id. at 217-46.



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(2) Supplement his responses to Interrogatory Nos. 3 and 7; and

(3) Produce information and documents responsive to Opposer’s Requests

for Production and Interrogatories relating to Applicant’s magazines

offered in connection with Applicant’s Marks.16

Opposer also requests that the Board “provide Opposer with sufficient time after

the date by which Applicant must provide his supplemental document production and

responses to Opposer’s Interrogatories for Opposer to conduct its noticed deposition

of Applicant on a date mutually agreeable to the parties.”17

On November 5, 2020, counsel for Opposer informed Applicant it would not

produce its witness for the scheduled November 9, 2020 deposition because this

proceeding was suspended for Opposer’s motion to compel. Opposer further objected

to the format of the amended notice of deposition for Mr. Sacks (which had been

served on October 20, 2020, along with a link for remote attendance), and further

complained that, “we have failed to receive any information from you regarding the

logistics, court reporter, etc. for Mr. Sacks’ deposition.”18 Opposer also asserted that

Applicant’s counsel had failed to provide alternative dates for Applicant’s deposition.

Accordingly, Opposer stated it would not provide alternate dates for Mr. Sacks’

deposition until “after Applicant serves a proper deposition notice and the suspension

lifts. Further, [Opposer] will conduct [Applicant’s] deposition after it receives a

16 See id. at 2.

17 27 TTABVUE 10.

18 25 TTABVUE 15.



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decision on its Motion to Compel.”19 After Applicant’s counsel objected to Opposer’s

refusal to produce Mr. Sacks for deposition as scheduled, Opposer’s counsel

responded, inter alia, that Mr. Sacks was no longer available on November 9, 2020.20

On November 10, 2020, the Board issued a suspension order pending disposition

of the motion to compel. The order confirmed—in accordance with Trademark Rule

2.120(f), 37 C.F.R. § 2.120(f)—that “[t]he filing of the motion to compel disclosure or

discovery shall not toll the time for a party to . . . respond to any outstanding discovery

requests or to appear for any noticed discovery deposition.”21 See also TRADEMARK

TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 523.01 (June 2020).

B. Good Faith Effort

Pursuant to Trademark Rule 2.120(f)(1), a party seeking to compel discovery is

required to demonstrate that it made a good faith effort to resolve the issues

presented in the motion and that the parties were unable to resolve their differences.

Hot Tamale Mama…and More, LLC v. SF Invs., Inc., 110 USPQ2d 1080, 1081 (TTAB

2014). An important purpose of this rule “is to relieve the Board of the burden of

ruling on motions to compel in proceedings where the parties can resolve their

discovery disputes if they make a good faith effort to do so.” Id.

A party seeking discovery has a duty to contact the adverse party to ascertain why

it has received incomplete or insufficient responses to its discovery requests and to

19 Id.

20 Id. at 12.

21 23 TTABVUE 1.



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determine whether the matter can be resolved amicably. See id. at 1081 (citing

MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 954 (TTAB 1979)). “The

purpose of the conference requirement is to promote a frank exchange between

counsel to resolve issues by agreement or to at least narrow and focus the matters in

controversy before judicial resolution is sought.” Amazon Techs. Inc. v. Wax, 93

USPQ2d 1702, 1705 (TTAB 2009) (emphasis in original) (quoting Dondi Props. Corp.

v. Commerce Sav. and Loan Ass’n, 121 F.R.D. 284, 289 (N.D. Tex. 1988) (construing

a local rule less demanding than Trademark Rule 2.120(f)(1))); see also Hot Tamale

Mama, 10 USPQ2d at 1081 (quoting Amazon Techs. Inc., supra).

“In determining whether a good faith effort to resolve the discovery dispute has

been made, the Board may consider, among other things, whether the moving party

has investigated the possibility of resolving the dispute, whether, depending on the

circumstances, sufficient effort was made towards resolution, and whether attempts

at resolution were incomplete.” TBMP § 523.02. Furthermore, although a deficiency

letter may be a good means to outline and frame the issues for a substantive meet-

and-confer conference between the parties, “mere dissatisfaction with the adversary’s

answer to an initial inquiry, in itself, does not discharge the duty to undertake a good

faith effort to resolve the dispute . . . .” Hot Tamale Mama, 10 USPQ2d at 1081. Where

the effort toward resolution is incomplete, establishing the good faith effort

necessitates that the inquiring party engage in additional effort toward ascertaining

and resolving the substance of the dispute. Id.; see also TBMP § 523.02.



8

Upon review of the parties’ briefs, the Board concludes Opposer never raised the

issue of the adequacy of Applicant’s response to Interrogatory No. 7 following the

Board’s decision on the first motion to compel. Accordingly, Opposer’s motion to

compel further responses to Interrogatory No. 7 is denied without prejudice for

failure to comply with Trademark Rule 2.120(f)(1).

The remaining discovery disputes arguably were addressed by the parties in their

October 8, 2020 phone conference. The Board notes and is concerned, however, that

Opposer failed to make any effort to contact Applicant regarding remaining alleged

deficiencies after Applicant served its third amended responses and supplemental

document production on October 15 and 19, 2020.22

Nonetheless, because several of Applicant’s amended responses are not

satisfactory or remain unclear even after numerous supplementations, the Board

exercises its discretion to decide the motion to compel as to the remaining matters.

C. Discovery Requests

1. Applicant’s General Objections

Opposer does not challenge Applicant’s objections. As an initial matter, however,

the Board notes that Applicant largely has incorporated “general objections” and the

same boilerplate objections in each of its responses.

22 Opposer’s post-hoc explanation that it needed to file its motion because discovery was about

to close (27 TTABVUE 4) is unconvincing. Motions to compel are timely if filed prior to the

deadline for pretrial disclosures for the first testimony period. Trademark Rule 2.120(f)(1),

37 C.F.R. § 2.120(f)(1). When the motion is filed after discovery has closed, proceeding dates

are reset after the motion is decided. Id. See also TBMP 523.01.



9

Objections to interrogatory requests and requests for production must be stated

“with specificity.” Fed. R. Civ. P. 33(b)(4), 34(b)(2)(B). Broad general objections and

boilerplate objections incorporated into every answer are clearly in violation of the

Federal Rules and will not be considered by the Board. Hewlett Packard Enterp. Dev.

LP v. Arroware Indus., Inc., 2019 USPQ2d 158663, at *4 (TTAB 2019) (responding

party may not rely on conclusory statements when objecting but must specifically

state the underlying basis for the objection); Amazon Techs., 93 USPQ2d at 1704

(objections to interrogatories must be made with particularity); Medtronic, Inc. v.

Pacesetter Sys., Inc., 222 USPQ 80, 83 (TTAB 1984) (same); see also Fed. R. Civ. P.

33(b)(4) (“The grounds for objecting to an interrogatory must be stated with

specificity.”) and Fed. R. Civ. P. 34(b)(2)(B) (“For each item or category, the response

must . . . state with specificity the grounds for objecting to the request, including the

reasons.”); see also TBMP § 405.04(b). Any objection that is not stated with specificity

is considered waived.

2. Document Request No. 1

Document Request No. 1 seeks all documents relating to the development,

selection and/or adoption of Applicant’s marks.23 In response to the motion, Applicant

responds: “As set out in the Applicant’s response to the Opposition and initial

disclosure, the Mad Monster Party is a tribute to an animated film of the same name.

The cover image of that film was produced as was other Horror Convention names

23 22 TTABVUE 34.



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that were taking into consideration to avoid similarities.”24 Opposer complains that

“these documents are not responsive to Opposer’s request for all documents relating

to the development, selection, and/or adoption of Applicant’s Marks.”25

Information concerning Applicant’s selection and adoption of its involved mark for

involved goods and services is discoverable. See Goodyear Tire & Rubber Co. v. Tyrco

Indus., 186 USPQ 207, 208 (TTAB 1975); Volkswagenwerk AG v. MTD Prods. Inc.,

181 USPQ 471, 473 (TTAB 1974) (identification of persons who suggested use of

involved mark on involved goods is not improper); see also TBMP 414(4). Opposer

claims he produced a document showing the origin of the selection of its mark – a

movie entitled “Mad Monster Party.”

Accordingly, Opposer’s motion to compel with respect to Document Request No. 1

is granted with respect to the involved goods and services. To the extent Applicant

contends that he has already produced all non-privileged responsive documents in

his possession, custody, and control, however, Applicant should so state in his

supplemental response.


Document Request No. 2 requests all documents relating to the first use of

Applicant’s marks.26 Opposer complains that Applicant has only produced documents

24 25 TTABVUE 6.

25 27 TTABVUE 6.

26 22 TTABVUE 34.



11

from 2012, whereas his pending applications claim first use of the mark in 2010.27

Applicant responds that he no longer has any documents from 2010.28

Information concerning a party’s first use of its involved mark is discoverable. See,

e.g., Georgia-Pacific Corp. v. Great Plains Bag Co., 190 USPQ 193, 195-96 (TTAB

1976) (dates petitioner’s plants first began production of goods bearing mark are

pertinent to claim of priority); Miller & Fink Corp. v. Servicemaster Hosp. Corp., 184

USPQ 495, 496 (TTAB 1975) (must provide name, address and occupation of persons

to whom service was first rendered). See also Double J of Broward Inc. v. Skalony

Sportswear GmbH, 21 USPQ2d 1609, 1613 (TTAB 1991) (use or intended use of

applicant’s mark in commerce with U.S. is relevant).

Accordingly, Opposer’s motion to compel with respect to Document Request No. 2

is granted. To the extent Applicant contends that he has already produced all non-

privileged responsive documents in his possession, custody, and control, however,

Applicant should so state in his supplemental response.


Document Request No. 5 seeks all documents relating to how Applicant’s marks

have been or will be used, advertised or promoted in the United States, including, but

not limited to, representative samples of all advertising and/or marketing materials

used by Applicant or considered by Applicant for potential use in connection with

27 27 TTABVUE 6, 14.

28 25 TTABVUE 6.



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Applicant’s marks.29 In response, Applicant referred Opposer to “news articles,

advertisings, content on MadMonster.com, and other materials disseminated to the

public and equally available to the Opposer.”30 Opposer argues that Applicant has

not produced any images showing use of Applicant’s marks its conventions, Mad

Monster Radio shows, and/or Mad Monster Movie Nights, any magazines that use

Applicant’s marks, and any documents evidencing where all of the advertisements

shown in its renderings have been used.31 In response, Applicant states documents

are available on its website and the request is overbroad.32

To the extent Applicant points to documents that are “equally available,”

Applicant’s response is insufficient. In responding to document requests, Applicant

must state whether or not he has responsive documents in his possession, custody or

control and, if so, state that such documents will be produced or that such documents

are being withheld, based on a claim of privilege. Fed. R. Civ. P. 34(b)(2)(B)–(C); No

Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).

Samples of advertising materials for the involved goods and services—namely,

horror conventions and magazines—are relevant to the conditions of sale and thus

are discoverable. A party need not provide discovery with respect to those of its marks

and goods and/or services that are not involved in the proceeding and have no

29 22 TTABVUE 35.

30 Id. at 221.

31 Id. at 13.

32 25 TTABVUE 5.



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relevance thereto. Where the goods of the parties differ, however, “information from

which it may be learned whether the parties market some goods of the same type is

relevant to establishing the relationship between the goods of the parties. This

information may lead to the discovery and introduction of admissible evidence

concerning likelihood of confusion.” TBC Corp. v. Grand Prix Ltd., 16 USPQ2d 1399,

1400 (TTAB 1990) (citations omitted).

Here, Opposer has pleaded that it uses its “monster” formative marks in

connection with live events including music events, and promotes its goods through

printed, audio and visual promotional materials.33 Accordingly, Opposer’s motion to

compel is granted as to Document Request No. 5 as to Applicant’s horror

conventions, magazine, MAD MONSTER radio shows and MAD MONSTER movie

nights.

5. Document Request Nos. 19 and 20

Document Request Nos. 19 and 20 request all documents relating to the

characteristics, demographics, or classes of persons and the target purchasers for

Applicant’s goods and services.34 Opposer claims Applicant has not produced any

responsive documents; Applicant states that he has “produced documents to the

extent they exist. There is no specific study or demographic assessment to classify

target purchasers. Applicant target horror fans of all shapes and sizes.”35

33 1 TTABVUE 11-13, ¶¶ 4-6.

34 22 TTABVUE 37.

35 25 TTABVUE 6.



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The classes of customers for a party’s involved goods or services are discoverable.

J.B. Williams Co. v. Pepsodent GmbH, 188 USPQ 577, 580 (TTAB 1975) (must

identify class of customers who purchase products under mark, but not names of

customers). Accordingly, Opposer’s motion to compel is granted as to Document

Request Nos. 19 and 20 as to Opposer’s involved goods and services. To the extent

Applicant contends that it has already produced all non-privileged responsive

documents in his possession, custody, and control, however, Applicant should so state

in his supplemental response.


Document Request No. 21 requests documents sufficient to show the current

wholesale and retail prices for Applicant’s goods and services.36 Opposer contends

Applicant has not produced any documents showing the prices of tickets for events or

magazines. Applicant responds:

Documents have been produced as the price for ticket sales is equally

available on the Mad Monster website and previous a screen shots for

ticket sales page has been presented. Additionally, although not the

service or products the marks are promoting, various goods are sold on

the website, including the magazines and advertising paraphernalia

such as t-shirts. Printed screen shots of these have also been produced.37

The prices of the applicable goods and services may be relevant to the conditions

of sale and are discoverable. See, e.g., Edom Labs., Inc. v. Llichter, 102 USPQ2d 1546,

1552 (TTAB 2012) (considering price as part of conditions of sale). Again, merely

36 22 TTABVUE 37.

37 25 TTABVUE 6.



15

referring to documents that are “equally available” is insufficient. No Fear, 54

USPQ2d at 1555.

However, Opposer has not explained the relevance of wholesale prices of

Applicant’s goods, and the Board finds that such information is not relevant to this

proceeding.38 Accordingly, Opposer’s motion to compel is granted in part as to

Document Request No. 21 to the extent that Applicant must produce non-privileged

documents and things sufficient to show the current retail prices for Applicant’s

involved goods and services (including magazines) sold under the challenged marks.

To the extent Applicant contends that he has already produced sufficient responsive

documents in his possession, custody, and control to show current prices of

Applicant’s goods and services, however, Applicant should so state in his



Document Request No. 28 requests documents sufficient to show Applicant’s

efforts to enforce rights in Applicant’s marks against any third party.39 Opposer

argues no such documents have been produced; Applicant responds that documents

relating to his application are relevant and have been produced, but he has not

38 Opposer’s complaint that “Applicant’s website shows ticket prices for upcoming MAD

MONSTER PARTY events in North Carolina and Arizona, it does not show prices for past

events” also is irrelevant. See 27 TTABVUE 8, 16 (Declaration of Nicole Townes, ¶ 6).

Document Request No. 21 requests documents regarding “current” prices only.

39 22 TTABVUE 38.



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enforced his mark against any third parties and therefore has no further

documents.40

Information concerning litigation and controversies including settlement and

other contractual agreements between a responding party and third parties based on

the responding party’s involved mark is discoverable. See Am. Soc’y of Oral Surgeons

v. Am. College of Oral & Maxillofacial Surgeons, 201 USPQ 531, 533 (TTAB 1979)

(relevant to show admissions against interest, limitations on rights in mark, course

of conduct leading to abandonment, that the mark has been carefully policed, etc.);

see also TBMP § 414(10).

Accordingly, Opposer’s motion to compel is granted as to Document Request No.

28. To the extent Applicant contends that he already has produced sufficient

responsive documents in his possession, custody, and control, however, Applicant

should so state in his supplemental response.


Document Request No. 32 requests documents “sufficient to show any mention in

the press of Applicant’s marks. . . .”41 Opposer states Applicant has failed to produce

any press releases, webpages, magazines, newspapers, or other printed publications

containing articles or stories about Applicant or his goods and services.42 Applicant

argues that he has produced his website which “includes new pressings and

40 25 TTABVUE 6.

41 22 TTABVUE 38.

42 Id. at 14.



17

promotional.”43 Applicant further contends he does not maintain third party articles

about his events but further states to the extent they exist, they are “equally

available.”44

Documents reflecting news coverage go to the fame of Applicant’s mark as an

element of the likelihood of confusion analysis and as such are discoverable. See, e.g.,

Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014).

Again, to the extent Applicant points to documents that are “equally available,”

Applicant’s response is insufficient. Applicant must state whether or not he has

responsive documents in his possession, custody or control and, if so, state that such

documents will be produced or that such documents are being withheld, based on a

claim of privilege. Fed. R. Civ. P. 34(b)(2)(B)–(C); No Fear Inc., 54 USPQ2d at 1555.

Accordingly, Opposer’s motion to compel is granted as to Document Request No.

32. To the extent Applicant contends that he has already produced all responsive

documents in his possession, custody, and control, Applicant should so state in his


9. Interrogatory No. 3

Interrogatory No. 3 requests that Applicant identify all goods and services that

have been promoted, rendered, sold, or offered under each of Applicant’s involved

marks. Opposer argues that, although Applicant has identified his conventions,

43 25 TTABVUE 7.

44 Id.



18

magazine and radio show, he has failed to identify other goods sold under his marks

such as beer and candy bars.45

Opposer responds:

The beer Opposer cited was not included under Design Marks at issue

here as the USTPO found the Design Mark was not identical. The candy

bars were used for advertisement purposes similar to a t-shirt.

Applicant is not in the business of promoting candy sales. Thus neither

of those are truly responsive to the request, but are included due to the

vague overbroad nature of the Interrogatory.

In view of Opposer’s pleaded rights in food and beverage products, the Board finds

that information related to Applicant’s food and beverage products may lead to the

discovery and introduction of admissible evidence concerning likelihood of confusion.

See TBC Corp., 16 USPQ2d at 1400 (related goods and services discoverable).

In view thereof, Opposer’s motion to compel a complete response to Interrogatory

No. 3 is granted as to Applicant’s food and beverage products. Applicant must

supplement his response by listing each such product “promoted, rendered, sold, or

offered” under each of Applicant’s challenged marks – whether offered for sale or of a

promotional nature.

10. Summary

Opposer’s motion to compel a supplemental response to Interrogatory No. 7 is

denied without prejudice.

Opposer’s motion to compel is granted in part to the extent that Applicant is

ordered, within thirty days from the date of this order, to supplement his responses

45 22 TTABVUE 15.



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(and produce responsive documents) as specified above with respect to Requests for

Production Nos. 1, 2, 5, 19-21, 28, and 32, and Interrogatory No. 3.46

In addition, to prevent further delay in this proceeding and subject to the Board’s

inherent authority to manage the cases on its docket, to the extent there are any

remaining discovery disputes in this proceeding, the parties are required to

conduct at least one teleconference to address each of their disputes in

substance before the Board will entertain any further motions to compel

with regard to such disputes. Written correspondence alone will not be sufficient

to establish that the parties have satisfied the requirement that the parties engage

in a good faith effort to resolve their disputes before bringing them before the Board.

The parties are reminded that they are expected to present the merits of their

positions with candor, specificity and support during informal negotiations. Amazon

Techs. Inc., 93 USPQ2d at 1705.

The Board also reminds the parties that a party that fails to provide information

or documents during discovery may, upon motion or objection by its adversary, be

precluded from using that information or documents at trial, “unless the failure was

substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1); see, e.g., Panda Travel,

Inc. v. Resort Option Enters., Inc., 94 USPQ2d 1789, 1792–93 (TTAB 2009)

(documents not produced until after the start of trial stricken); see also TBMP

46 If, in response to this order, Applicant withholds any documents based on a claim of

privilege, then Applicant also must produce a privilege log that comports with the

requirements of Fed. R. Civ. P. 26(b)(5)(A)(i)–(ii) within thirty days of this order.



20

§ 527.01(e) (estoppel sanction) and cases cited therein. Furthermore, parties have a

duty to supplement discovery responses “in a timely manner if the party learns that

in some material respect the disclosure or response is incomplete or incorrect, and if

the additional or corrective information has not otherwise been made known to the

other parties during the discovery process or in writing.” Fed. R. Civ. P. 26(e)(1)(A).

D. Depositions

Opposer also requests that the Board extend the proceeding deadlines to allow

Opposer to take the previously noticed deposition of Applicant.47 Opposer does not

mention the deposition of its own witness, which it refused to produce on November

9, 2020 as scheduled. Opposer first informed Applicant that the Board’s rules provide

that motions to compel suspend the proceedings and raised issues such as purported

irregularities in the notice of deposition to justify cancelling the deposition. Only after

Applicant responded that suspension for motions to compel do not toll the time for a

party to appear for any noticed discovery depositions, Trademark Rule 2.120(f), 37

C.F.R. § 2.120(f), did Opposer claim its witness was no longer available.48 Opposer

stated it would not provide its witness for deposition until after the motion to compel

was decided and after Applicant’s counsel provided alternative dates for the

deposition of Applicant.

47 27 TTABVUE 10.

48 See 25 TTABVUE 8. The Board notes Opposer has not moved to quash the allegedly

insufficient notice or for a protective order. See Trademark Rule 2.120(g), 37 C.F.R. § 2.120(g).

See also TBMP §§ 410, 521.



21

The Board is troubled by Opposer’s shifting positions and representations,

including its misstatements as to effect of the filing of its motion to compel. It seems,

however, Applicant also has not been entirely cooperative in scheduling depositions.49

The Board will not tolerate failures to cooperate. With regard to the scheduling of

depositions, the Board reminds the parties that discovery before the Board is not

governed by any concept of priority of discovery – that is, a party is not relieved of its

discovery obligations, including its duty to cooperate, in spite of the fact that an

adverse party wrongfully may have failed to fulfill its own obligations. See, e.g.,

Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (TTAB 2009).

Accordingly, pursuant to Fed. R. Civ. P. 26(c)(2), Trademark Rule 2.120(g), and

the Board’s inherent authority “to manage its docket, to prevent undue delays, and

to regulate the conduct of those who appear before it,” Carrini, Inc. v. Carini S.R.L.,

57 USPQ2d 1067, 1071 (TTAB 2000), the parties are allowed sixty days from the

date of this order to serve the opposing party with notices of deposition pursuant to

Fed. R. Civ. P. 30(b)(1) to be set at a mutually agreeable date and time, and must

conduct such depositions no later than ninety days from the date of this order.50 The

Board expects that the parties will cooperate to address the most suitable means for

49 See 22 TTABVUE 8-9.

50 These dates may not be extended unless granted by the Board upon an appropriate motion.

Even if any such motion is consented, the parties must use the “general” filing option

on ESTTA rather than the “consented” motions filing. Any such motion must set forth

detailed reasons for the requested extension.



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taking the depositions.51 Any attempted gamesmanship in scheduling or attending

the depositions will not be tolerated.

E. Proceedings Resumed

Proceedings are resumed. Discovery is extended for the limited purpose of

Applicant’s supplemental responses to discovery and the depositions to be noticed by

the parties as ordered herein. Dates for disclosures and trial are reset as follows:

Expert Disclosures Due 5/2/2021

Limited Discovery Closes 6/1/2021

Plaintiff’s Pretrial Disclosures Due 7/16/2021

Plaintiff’s 30-day Trial Period Ends 8/30/2021

Defendant’s Pretrial Disclosures Due 9/14/2021

Defendant’s 30-day Trial Period Ends 10/29/2021

Plaintiff’s Rebuttal Disclosures Due 11/13/2021

Plaintiff’s 15-day Rebuttal Period Ends 12/13/2021

Plaintiff’s Opening Brief Due 2/11/2022

Defendant’s Brief Due 3/13/2022

Plaintiff’s Reply Brief Due 3/28/2022

Request for Oral Hearing (optional) Due 4/7/2022

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

51 Pursuant to Fed. R. Civ. P. 30(b)(4), depositions may be taken by remote means if stipulated

by the parties. Given the ongoing health risks from the COVID-19 pandemic, the Board

expects that the parties will cooperate to schedule depositions by videoconference or other

remote means.



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Trademark Rules 2.121 through 2.125. These include pretrial disclosures, matters in

evidence, the manner and timing of taking testimony, 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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