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Trademark Trial & Appeal Board: No Redaction Permitted During Discovery

When the trademark Applicant struck out or redacted discovery material provided to Opposer, the USPTO Trademark Trial and Appeals Board (“TTAB”) compelled Applicant to provide full, unredacted discovery documents to Opposer overruling Applicant’s concerns about confidentiality and irrelevancy.  This precedential TTAB case, Intex Recreation Corp. and Intext Marekting Ltd. v. The Coleman Company, Opposition No. 91220432 (TTAB February 24, 2016)(Available Here), moves the TTAB to a “full disclosure” litigation forum, something that the newly revised Federal Rules of Civil Procedure is moving in the opposite direction (under Fed.R.Civ.P 26(b)(1), discovery should be “proportional to the needs of the case” which forces the party seeking to compel discovery to show substantive relevancy to the scope and size of the litigation).  In Intex, the Opposer filed a motion to compel the Applicant to produce unredacted version of documents originally produced in response to Opposers’ document request.  The Applicant refused and argued that the redacted material was irrelevant or confidential.

Applicant maintained that some of the redacted information was (1) product lines of Applicant’s goods that are not at issue in the proceeding, and (2) competitive information provided to Applicant’s customers that is highly proprietary in nature.

The TTAB ordered Applicant to serve non-redacted versions of the documents responsive to discovery.  Confidentiality may be protected by designating the portions of the documents under the appropriate tier of confidentiality as provided by the Board’s standard protective order.  Also, the Board found that by 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.  

The TTAB found the disapproval of unilateral redaction exists for a good reason.  The TTAB cited to another court that 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).

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