Cadbury UK Limitedv.Meenaxi Enterprise, Inc.

Trademark Trial and Appeal Board

Jul 21, 2015

No. 92057280 (T.T.A.B. Jul. 21, 2015)

Mailed: July 21, 2015

Cancellation No. 92057280
Cadbury UK Limited
v.
Meenaxi Enterprise, Inc.

Robert H. Coggins,
Interlocutory Attorney:

Now before the Board is Respondent’s motion to compel Petitioner’s
responses to Respondent’s First Set of Requests for the Production of
Documents and Things. Respondent seeks an order that Petitioner produce
responsive documents, without the ability to interpose objections, to the office
of counsel for Respondent. The motion is fully briefed. Respondent included
with its motion the declaration of Jason DeFrancesco, counsel for
Respondent; a copy of Respondent’s First Set of Interrogatories; a copy of
Respondent’s First Set of Requests for the Production of Documents and
Things; and several emails between the parties showing multiple agreements
to extensions of time for Petitioner to respond to discovery, and Respondent’s
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
This Decision is
a Precedent of
the TTAB
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attempt to resolve the discovery dispute prior to seeking Board intervention.
As explained below, the Board grants the motion.
Background
Respondent served its First Set of Interrogatories and First Set of
Requests for the Production of Documents and Things at the same time.
Thus, Petitioner’s responses were due at the same time, in accordance with
Fed. R. Civ. P. 33(b)(2) and 34(b)(2)(A).1 On the due date for responses (which
the parties extended by consent several times), Petitioner served objections to
the interrogatories but did not respond or object to the document requests.2
Following Respondent’s effort to determine the reason for Petitioner’s failure
to respond to the document requests and whether Petitioner would provide
any response thereto, Respondent filed the current motion to compel.
Analysis
Trademark Rule 2.120(e)(1), 37 CFR § 2.120(e)(1), requires that a motion
to compel discovery be supported by a written statement from the moving
party that such party or the attorney therefor has made a good faith effort, by
conference or correspondence, to resolve with the other party or the attorney

1 Rules 33 and 34 are applicable to this proceeding pursuant to Trademark Rule
2.116(a), 37 CFR § 2.116(a), which provides that “[e]xcept as otherwise provided, and
wherever applicable and appropriate, procedure and practice in inter partes
proceedings shall be governed by the Federal Rules of Civil Procedure.” In this
instance, the provisions of Trademark Rule 2.119(c) would not have lengthened the
response periods provided by the Federal Rules, because service of the discovery
requests was effected by hand delivery.

2 Petitioner’s responses to the interrogatories are not at issue in the motion to
compel.
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therefor the issues presented in the motion but has been unable to resolve
those issues. See Hot Tamale Mama…and More, LLC v. SF Invs., Inc., 110
USPQ2d 1080 (TTAB 2014); see also Trademark Trial and Appeal Board
Manual of Procedure (“TBMP”) § 523.02 (2015). Based on the DeFrancesco
declaration and exhibits thereto, the Board finds that Respondent made the
requisite good faith effort prior to filing the motion and that the “record ...
reflect[s] an unresolvable situation” between the parties. Hot Tamale
Mama…, 110 USPQ2d at 1082.3
As to the merits, this dispute centers on a typographical error.
Respondent concedes that it made a typographical error in its document
requests, inadvertently referring in the preamble to Petitioner as “Venture
Execution Partners, Inc.,” instead of “Cadbury UK Limited.” Respondent
argues, however, that the error was minor, obvious, and did not render the
requests fatally flawed such that Petitioner was relieved from responding at
all. Respondent also argues that it amounted to gamesmanship when
Petitioner sought, and Respondent agreed, to four extensions of time to
respond to “discovery” without ever mentioning the typo or its intent not to
respond at all to the document requests.4 Respondent notes that, aside from

3 Trademark Rule 2.120(e)(1) also requires, in relevant part, that the movant include
with its motion to compel a copy of the requests for production at issue. Respondent
has also complied with this provision.

4 Nothing in the briefing of the motion to compel suggests that Petitioner raised the
issue of the reference to “Venture Execution Partners, Inc.” during discussions
regarding the requests for extension of time to respond to discovery.

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the typographical error in the preamble referencing an unrelated third party
as “Petitioner,” the document requests are otherwise correctly captioned.
Respondent also notes that the document requests, which themselves contain
no separately listed definitions, refer to and incorporate the definitions in
Respondent’s First Set of Interrogatories. One of the separate, numbered
definitions in the interrogatories clearly defines “Petitioner” as “Cadbury UK
Limited.” It is Respondent’s position that, in these circumstances, the single
mention of Venture Execution Partners, Inc. in the opening sentence of the
document requests is an “obvious typographical error” which does not justify
Petitioner’s failure to respond in any manner to those requests.
Petitioner argues that the typographical error was a crucial mistake, the
result of which is that the document requests were never directed to
Petitioner. Petitioner also argues that, although the document requests
incorporate the definition of “Petitioner” from the interrogatories, the
document requests themselves specifically define “Petitioner” to mean
“Venture Execution Partners, Inc.,” and that this definition necessarily
prevails over the definition in a separate document (i.e., the interrogatories).
Petitioner states that Respondent’s remedy in this situation is to re-serve a
corrected version of its document requests, at which time Petitioner may then
respond, interposing objections as it deems appropriate. Because Petitioner
agrees that the document requests may be re-served (albeit with the typo
corrected), the discovery dispute at issue in the motion to compel essentially
boils down to whether Petitioner, by its complete failure to respond to the
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requests as originally served, has, in these circumstances, waived its right to
interpose objections to the requests.
Pursuant to TBMP § 106.01, documents in a Board inter partes proceeding
should bear at their top the name and number of the inter partes proceeding
to which they relate. Pursuant to Trademark Rule 2.194(b)(2),
correspondence pertaining to “a registered trademark should identify the
registration number, the name of the registrant, and the mark.” Respondent’s
First Set of Requests for the Production of Documents and Things does these
things. In addition, the attorney who signed the requests was identified as
“Attorney[] for Registrant Meenaxi Enterprise, Inc.” This, too, is correct.
However, the opening sentence to the preamble to the document requests, on
the same title page with the proper caption, states: “Petitioner Meenaxi
Enterprise, Inc. (hereinafter ‘Registrant’) hereby requests that Petitioner
Venture Execution Partners, Inc. (hereinafter ‘Petitioner’) produce the
requested documents and things....” (emphasis added).5 In the next
paragraph, but still on the same title page, Respondent states that “[t]he
definitions and instructions contained in Registrant Meenaxi Enterprise,
Inc.’s First Set of Interrogatories are hereby incorporated by reference as
though fully set forth herein.” (emphasis in original). This is important
because the document requests do not contain separately-numbered

5 As can be seen, the preamble also mistakenly states “Petitioner Meenaxi,” when
Meenaxi is obviously the respondent in this proceeding and identifies itself as
“Registrant.”

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definitions but the interrogatories do. The interrogatories (which are also
properly captioned), not only correctly identify Petitioner Cadbury UK
Limited in the preamble, but they also contain a separately-numbered
specific definition of “Petitioner” as “Cadbury UK Limited, and any
predecessor or successor corporation or entity; any parent, subsidiary, or
affiliated company; and any attorney, officer, director, agent, representative
or employee of Cadbury UK Limited or any of the other foregoing entities.”6
The interrogatories make no mention of Venture Execution Partners, Inc.
In arguing that the naming of a third party in the document requests was
a crucial mistake—the effect of which was that no requests were ever made
to Petitioner—Petitioner cites to Fed. R. Civ. P. 34(b)(2)(A) which provides, in
part, that “[t]he party to whom the request is directed must respond in
writing within 30 days after being served.” Petitioner argues that, under this
provision, the document requests at issue were not “directed” to Petitioner
and thus triggered no obligation for Petitioner to respond. Notably, however,
Petitioner fails to cite any authority to directly support its position that a
typographical error of this sort wholly relieves a party from responding to
requests for the production of documents and things.
Here, the requests were hand delivered to Petitioner with another
document (the interrogatories) which contained an identical caption
providing the same proceeding name, proceeding number, subject mark, and

6 The Board does not pass on the appropriateness of this full definition, other than to
note that it specifically and correctly refers to Cadbury UK Limited as Petitioner.
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registration number, and which is meaningfully referenced within the
document requests. There is no question that Petitioner received both the
interrogatories and document requests and that each discovery device is
correctly captioned, provides other correct information identifying this
proceeding, and is properly signed. In this situation, Petitioner’s position is
unsupportable. See Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1652 (TTAB
2007) (objection to notice of deposition as facially deficient overruled where,
even though it contained an inadvertent typographical error referencing a
third party in its body, it contained “enough other correct information on the
face of the notice” including, inter alia, correct caption, parties’ names,
proceeding number, mark, subject application serial number, and signatory).
Petitioner should have clearly understood what matter was involved in the
document requests notwithstanding the obviously inadvertent reference to
“Venture Execution Partners, Inc.”
It is noted that the December 9 and 10, 2013, email correspondences
between the parties, in which Respondent agreed to and Petitioner
acknowledged an extension of time to respond to discovery, refers to “the
discovery that Meenaxi served on November 18, 2013.” See Motion, Exhibit C
(12 TTABVUE 40). Petitioner argues that its requests for extension of time to
respond to discovery—to which Respondent agreed—“concerned ‘discovery,’
not ‘document requests.’” Brief in Opp., p.2 (14 TTABVUE 3); see also id. n.2
(14 TTABVUE 4-5). In other words, Petitioner points out that it never
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referred “to the document requests,” but only to “discovery.” Petitioner thus
seeks to shift the blame—for Respondent thinking it was ultimately going to
receive responses to its document requests—to Respondent, for incorrectly
failing to decipher that Petitioner, by saying only “discovery,” was implicitly
taking the position that it did not have to respond to the document requests.
This is a most spurious argument.
Discovery includes document requests. Title V of the Federal Rules of
Civil Procedure is titled “Disclosures and Discovery” and includes Rule 34
which expressly deals with the production of documents and things. The
Committee Notes to Title V and to Rule 34 clearly contemplate requests for
production of documents and things as a discovery device. For Petitioner to
claim that Respondent’s document requests were not contemplated by
Petitioner’s requests to extend time to respond to “discovery” is disingenuous
at best, and an affront to the Board and Respondent. Petitioner’s argument is
further undercut by the fact that when Respondent retained new counsel in
this proceeding and asked Petitioner to “kindly send [to new counsel] the
discovery and initial disclosures exchanged thus far,” Petitioner responded by
sending to Respondent’s new counsel copies of the “document requests and
interrogatories” served upon Petitioner by Respondent’s prior counsel. See
Reply, Exhibit A (February 20, 2014 email correspondence between counsel
for the parties) (15 TTABVUE 11). This establishes without doubt that
Petitioner knew that the document requests at issue in this motion were
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served upon Petitioner and related to this proceeding. Moreover, inasmuch as
Petitioner thereafter sent to Respondent an email memorializing the parties’
telephone conversation “during which [Respondent] agreed that [Petitioner’s]
responses to discovery requests would be due [April 3, 2014],” Petitioner
tacitly admitted that the document requests were contemplated by the
multiple extensions of “discovery” granted by Respondent. See Motion,
Exhibit G (February 21, 2014 email correspondence from counsel for
Petitioner to new counsel for Respondent) (12 TTABVUE 50).
As noted above, the First Set of Requests for the Production of Documents
and Things was correctly captioned and contained other correct identifying
information. The isolated reference to Venture Execution Partners, Inc., was
clearly a typographical error; it did not cause a matter of real confusion or
misunderstanding. The motion to compel is the result of Petitioner’s attorney
apparently concluding, upon the discovery of a typographical error, that he
had found an excuse to become pedantic, unreasonable, and uncooperative.
The Board expects each party to every case to use common sense and reason
when faced with what the circumstances clearly show to be a typographical
error. Cf. Haney v. Saldana, No. 1:04-cv-05935, 2010 WL 3341939, at *3, *10
(E.D. Cal. Aug. 24, 2010) (motion to compel a request for production granted,
the Court stating, “[t]he responding party shall use common sense and
reason, and hyper-technical, quibbling, or evasive objections will not be
treated with favor” (internal citation omitted) and that the responding party
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could have “easily rectified” the meaning of the request “by logically
correcting the typographical error”); Cole v. Saks, Inc., No. 5:06-cv-229, 2007
WL 2997453, at *1 (E.D.N.C. Oct. 12, 2007) (case history showing motion to
compel granted where male responding party maintained he was not
required to respond because discovery requests contained a typographical
error and referred to him as “her,” even though “General Definitions” section
of the interrogatories stated that “[a] masculine, feminine or neuter pronoun
shall include all other genders”).
Although the mistake of mentioning a third party in the preamble to
Respondent’s First Set of Requests for the Production of Documents and
Things suggests that the document requests were modeled from another case
in which Respondent or its prior counsel was involved, the refusal of
Petitioner to provide any response to the requests is untenable. If Petitioner
had any doubt as to the document requests, it should have contacted
Respondent for clarification rather than simply refusing to respond. See, e.g.,
Cobalt Multifamily Investors I, LLC v. Arden, No. 06-cv-6172, 2008 WL
5336664, at *1 (S.D.N.Y. Dec. 18, 2008) (motion to compel document
production granted where brief in opposition focused on a single, obvious
typographical error). Alternatively, Petitioner could have stated an objection
to the potential ambiguity in its written responses and concurrently
responded on behalf of itself, as contemplated by the specific definition of
“Petitioner” in the incorporated interrogatory definitions. At barest
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minimum, Petitioner should have accepted Respondent’s explanation, during
the later good faith effort to resolve the issue, that the single reference to
Venture Execution Partners, Inc., was merely a typographical error.
The Board will not allow a party to avoid its discovery obligations due to
an obvious typographical error such as this one. See Ocean Spray
Cranberries, Inc. v. Trundle & Co., Inc., Opposition No. 91104411, 1998 WL
132958, at *2 (TTAB March 19, 1998) (although applicant’s interrogatories
and document requests erroneously referred to opposer’s pleaded mark as
CRANTISTIC instead of CRANTASTIC, opposer ordered to answer, without
objection, all of the discovery requests as if they contained no typographical
error; opposer’s earlier responses to the discovery requests as written (i.e.,
with the error) were deemed disingenuous, it being apparent that applicant
made a typographical error and opposer should have noted the mistake and
answered the discovery requests as they related to opposer’s pleaded mark).
Petitioner’s unreasonable position here has resulted in the filing of an
unnecessary motion, wasting the time and resources of both parties and the
Board. The Board expects that when there is an obvious and inadvertent
typographical error in any discovery request or other filing—particularly
where, as here, the intended meaning was clear—the parties will not require
the Board’s intervention to correct the mistake. See McGee v. Edwards, Civ.
No. 10-3152, 2012 WL 1805144, at *1 (C.D. Ill. May 17, 2012) (motion to
compel granted where discovery requests were correctly captioned but the
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body of the requests were directed to another person; reference to another
person in the body of the requests “was clearly a typographical error”); Derry
Finance N.V. v. Christiana Cos., Inc., 102 F.R.D. 892, 896 (D. Del. 1984)
(motion to compel granted over objection that discovery requests were
ambiguous due to propounding party’s listing of an incorrect party in the
requests which were served on the correct party, the Court stating, “[t]he
immediate and reasonable conclusion is that [the propounding party]
inadvertently allowed the [name of an incorrect party] to be substituted for
the [name of the correct party]. That’s poor proofreading but not so
perplexing that the subpoena can be called ambiguous.”).
Conclusion
Respondent’s motion to compel is granted. Petitioner is hereby ordered to
serve and deliver to the office of counsel for Respondent, no later than thirty
days from the mailing date of this order, Petitioner’s written responses,
together with the documents and things responsive to Respondent’s First Set
of Requests for the Production of Documents and Things, without objection
on the merits.7 See No Fear, 54 USPQ2d at 1554. In the event Petitioner fails
to respond to Respondent’s document requests as ordered herein, Petitioner

7 The Board has previously distinguished objections on the merits of a discovery
request from other types of objections such as confidentiality or privilege. See
Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1706 n.5 (TTAB 2009), citing No
Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000). Petitioner must provide
Respondent with a privilege log, if applicable, within the same thirty day period
provided above.
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may be subject to sanctions, potentially including entry of judgment against
it. Fed. R. Civ. P. 37(b)(2); Trademark Rule 2.120(g)(1).
It also must be stressed that Petitioner’s conduct has not demonstrated
the good faith and cooperation that is expected of litigants during discovery.
Such conduct has delayed this proceeding, unnecessarily increased the
litigation costs of the parties, wasted valuable Board resources, and
interfered with Respondent’s ability and, indeed, its right, to take discovery.
If Respondent perceives Petitioner as not having complied with the terms of
this order, or can establish any further abusive, uncooperative, or harassing
behavior from Petitioner, then Respondent’s remedy will lie in a motion for
entry of sanctions. Sanctions the Board can order, if warranted, may include
judgment against Petitioner. See TBMP § 527.01 (Motion for Discovery
Sanctions) and cases cited therein; cf. Johnston Pump/Gen. Valve Inc. v.
Chromalloy Am. Corp., 13 USPQ2d 1719, 1721 n.4 (TTAB 1989) and cases
cited therein.
Schedule
Proceedings are resumed. Dates are reset on the following schedule.
Compelled Discovery Due 30 days
Expert Disclosures Due 9/21/2015
Discovery Closes 10/21/2015
Plaintiff's Pretrial Disclosures 12/5/2015
Plaintiff's 30-day Trial Period Ends 1/19/2016
Defendant's Pretrial Disclosures 2/3/2016
Defendant's 30-day Trial Period Ends 3/19/2016
Plaintiff's Rebuttal Disclosures 4/3/2016
Plaintiff's 15-day Rebuttal Period Ends 5/3/2016

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In each instance, a copy of the transcript of testimony, together with
copies of documentary exhibits, must be served on the adverse party within
thirty days after completion of the taking of testimony. Trademark Rule
2.125. Briefs shall be filed in accordance with Trademark Rules 2.128(a) and
(b). An oral hearing will be set only upon request filed as provided by
Trademark Rule 2.129.