Broad Discovery Demands Approved by TTAB Given Scope Of Trademark Opposition

The USPTO Trademark Trial and Appeal Board [“TTAB”] denied an opposer’s motion for protective order, finding that applicant’s high number of requests for admission was neither burdensome nor unduly oppressive when the opposer broadly pleaded its opposition to trademark registration.  The Phillies v. Philadelphia Consolidated Holding Corp., Opposition No. 91199364 (TTAB, August 19, 2013) (available here).  Philadelphia Consolidated (“Applicant”) filed several applications to register the marks “GREENPHLY” and “TEAMPHLY” for insurance in Class 36, and for organizing community sport and cultural events in Class 41.  The Phillies (“Opposer”) opposed the registrations, alleging priority and likelihood of confusion.  The Applicant served 507 requests for admission on the Opposer, which requested Opposer to admit or deny whether Opposer is selling or licensing specific goods and services under each mark plead in the notice of opposition (similar to a complaint). Asserting an undue burden, Opposer moved for a protective order to limit the 507 requests for admission.  The TTAB denied the motion except for a few of the requests.

Opposer argued that the protective order was necessary because (1) it appeared that Applicant did not attempt to seek only proper and relevant discovery; (2) while the scope of Opposer’s use of the marks is relevant, it is cumulative of other discovery requests; (3) the burden on Opposer to search through innumerable documents is unreasonable; and (4) the burden of time and expense on Opposer to respond to all 507 requests is unreasonable.  Applicant argued that its discovery was proper because it would narrow the issues in the case, because there were more than 14 different registrations at issue, each with a separate number of goods and services.  Since Opposer filed a motion for protective order, Applicant’s requests to admit were not deemed automatically admitted.

The TTAB ruled that discovery in these proceedings is broad. “While it is a general rule that parties involved in an adversary proceeding are entitled to seek discovery as they may deem necessary to help them prepare for trial, it is not the practice of the Board to permit unlimited discovery to the point of harassment and oppressiveness.”  The Phillies, Slip Op. P. 9.  In looking at Applicant’s requests for admission the TTAB concluded that the requests were not individually improper.  The TTAB also noted that the requests were not harassing or oppressive as a whole.  “While the Board recognizes that having to respond to hundreds of requests for admission may, in the abstract, appear excessive and unduly burdensome, in this case opposer has pleaded at least twenty-six marks, many of them cumulative and repetitive, as bases for its Section 2(d) claim and applicant’s requests for admission seek thirty-two admissions or denials for each of only fourteen of opposer’s pleaded marks.”  The Phillies, Slip Op. P. 11.  Thus, the requests are not per se oppressive or unduly burdensome.

If Opposer had narrowed its opposition, the scope of discovery would have been narrowed as well.  However, the TTAB did find that several of the requests were duplicative, and that several of the requests were regarding registrations that had not been pleaded by Opposer, and were thus outside of the scope of discovery.  The TTAB denied Opposer’s motion for a protective order except for the few requests for admission deemed duplicative or those regarding registrations not at issue.

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