Precedential No.35: TTAB Denies Protective Order, Requires Opposer to Answer Hundreds of Admission Requests

In this Section 2(d) opposition, when The Phillies were served with 507 requests for admission, they cried "foul" and proceeded to file a motion for a protective order under FRCP 26(c). They claimed that the sheer number of requests demonstrated that applicant made no effort to seek only proper and relevant discovery, and that the time to be spent and expenses incurred in responding would be unduly burdensome. Those arguments failed to get The Phillies to first base, the Board unsympathetically noting that The Phillies had pleaded more than two dozen marks as bases for the pleaded claim. The Board did, however strike 96 of the admission requests as duplicative or as seeking irrelevant information. The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149 (TTAB 2013) [precedential].

Applicant's requests for admission asked The Phillies to admit or deny whether they were selling or licensing specific goods or services under each of the pleaded marks. The Phillies admitted that the information sought was relevant, but they asserted that these requests were cumulative of other discovery requests, that responding thereto would require opposer to spend extensive time and effort, and that the burden on opposer outweighed any need of applicant for the information sought.

There was nothing improper in The Phillies filing a motion for a protective order rather than respond to the requests. The Board noted that the Trademark Rules and the Federal Rules of Civil Procedure vest the Board with "discretion to manage the discovery process in order to balance the requesting party's need for information against any injury that may result from discovery abuse."

A party seeking a protective order must establish good cause by providing "a particular and specific demonstration  of fact, as distinguished from stereotyped and conclusory statements." It must show that its ability to litigate will be hampered, not just that litigation will be more difficult.

The Board found applicant's requests to be neither improper individually, nor harassing or oppressive as a whole. The subject admission requests included 32 requests for each of fourteen marks (although The Phillies had pleaded 26 marks in all). Since Opposer chose to draft its notice of opposition broadly, the sheer number of requests (507) is not per se oppressive and unduly burdensome.

Applicant seeks information about opposer’s alleged use, and its requests for admission require opposer to admit or deny that it uses its pleaded marks on or in connection with specific pleaded goods and services. These requests are relevant to opposer’s allegations and claims as pleaded, as admitted by the parties, as they seek information about the scope of use, relatedness of the parties’ goods and/or the basis for potential counterclaims.

Nonetheless, applicant's requests did contain some duplication, and also some requests (directed to unpleaded registrations) that were outside the scope of discovery.

And so the Board denied the motion for the most part.

Read comments and post your comments here.

TTABlog note: BTW, when someone mentions "Robin Roberts," I think of the Phillies' pitcher, not the television newsperson.

Text Copyright John L. Welch 2013.

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