Chix Gear, LLCv.Princess Race Wear Corp.

Trademark Trial and Appeal Board

Nov 26, 2019

91243081 (T.T.A.B. Nov. 26, 2019)

November 26, 2019

Opposition No. 91243081

Chix Gear, LLC

v.
Princess Race Wear Corp.

M. Catherine Faint,
Interlocutory Attorney:

This case now comes before the Board on Opposer’s fully-briefed motion, filed May
10, 2019, to compel discovery. The motion is timely.1 See Trademark Rule 2.120(f)(1),
37 C.F.R. § 2.120(f)(1).
A. Background
Opposer filed a notice of opposition2 to Applicant’s intent-to-use application to
register the mark LIFE IS BETTER AT THE RACE TRACK3 on the ground of

1 See 2 TTABVUE 3 setting the date for discovery to close as April 23, 2019 and the due date
for Plaintiff’s pretrial disclosures as June 7, 2019. This motion is filed prior to the due date
for pretrial disclosures. Trademark Rule 2.120(f)(1), 37 C.F.R. § 2.120(f)(1).
2 1 TTABVUE.
3 Application Serial No. 87658033, filed October 27, 2017 for jewelry in Class 14, coin purses,
gym bags, handbags, satchels, sport bags, wallets in Class 18, and belts, coats, flip flops,
footwear, hats, pants, shirts, shoes, shorts, socks, seaters, sweatshirts in Class 25 based on
Trademark Act § 1(b).
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: TTABInfo@uspto.gov
THIS ORDER IS A PRECEDENT
OF THE TTAB
Opposition No. 91243081

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likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d).
Applicant denied the salient allegations of the notice of opposition in its answer.4
Opposer’s motion concerns Applicant’s responses to Opposer’s combined “First Set of
Interrogatories, Document Requests and Requests for Admissions” served on
January 20, 2019.5 Under the schedule imposed by the Board when this case was
instituted, the discovery period ended on April 23, 2019. Opposer agreed to extensions
of Applicant’s time to serve its responses to March 26, 2019, apparently without
making its agreement contingent upon reserving a period for follow-up discovery and
without seeking an extension of the discovery period. Applicant responded on March
29, 2019, but did not produce any responsive documents until April 5, 2019. The
documents, produced electronically, were five photographs. On April 15, 2019, with
the close of discovery eight days away, Opposer emailed Applicant to request
supplemental information regarding the photographs. On May 10, 2019, having
received no supplemental information from Applicant, Opposer filed the instant
motion seeking to compel Applicant to provide the date the photographs were taken
and the identity of the person who took the photographs.6

4 4 TTABVUE.
5 5 TTABVUE 10.
6 The Board will give no consideration to Opposer’s additional request to preclude Applicant
from relying on any documents not produced during discovery pursuant to Trademark Rule
2.120(h)(2), the subject of TBMP § 527.01(b), cited by Opposer as authority for the motion.
Trademark Rule 2.120(h)(2) may be the basis for discovery sanctions such as preclusion
where a party “informs the party seeking discovery that no response will be made.” In this
case, Applicant served its written responses three days late, produced the responsive
documents at issue six days later on April 5, 2019, and on April 30, 2019 explained that
further production would be delayed, but that Applicant would be willing to reopen discovery.
Because there has been no refusal to provide discovery, Trademark Rule 2.120(h)(2) is
Opposition No. 91243081

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B. Opposer’s Motion to Compel
1. Good Faith Effort
Opposer made a good faith effort, through multiple emails exchanged between
counsel, to resolve the parties’ discovery dispute prior to seeking Board intervention.
See Trademark Rule 2.120(f)(1). See also Hot Tamale Mama…and More, LLC v. SF
Invs., Inc., 110 USPQ2d 1080, 1081-82 (TTAB 2014) (noting it is incumbent upon
party to make more than single inquiry to resolve dispute prior to filing motion to
compel).
2. Motion to Compel
Opposer seeks an order compelling Applicant to provide two specific types of
information regarding the five photographs produced in response to Opposer’s
Request for Production of Documents, namely: 1) the date the photographs were
taken; and 2) the identity of the person who took the photographs.
In response, Applicant argues that Opposer has not identified any discovery
request that would obligate Applicant to provide the date the photographs were taken
or to identify the person who took the photographs, and thus concludes that the
discovery requests are deficient on this point and there is nothing to compel.
In reply, Opposer refers to the requested information about the photographs as
“metadata” for the responsive documents that must be provided to fully respond to

inapplicable. Nor do we find any basis to enter discovery sanctions under our inherent
authority. See, e.g., SFM, LLC v. Corcamore, LLC, 129 USPQ2d 1072, 1078-79 (TTAB 2018)
(granting judgment as a sanction under Trademark Rule 2.120(h)(1) and the Board’s inherent
authority).
Opposition No. 91243081

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the original document request.7 Opposer argues that the five photographs were
responsive to Document Request No. 9, and the request for the metadata is inherent
in the document request:
9. All documents evidencing Applicant’s claim that Applicant has priority
over Opposer.

Applicant’s Response: 8 Applicant objects to this request on the ground that the
request for “all documents evidencing Applicant’s claim” is overly broad and
unduly burdensome, including because it is not limited to documents relating to
any particular time period. Notwithstanding this objection, Applicant responds as
follows: Applicant will produce a representative sample of responsive documents
in its possession, custody, or control, to the extent such documents exist.9

Without defining “metadata”, Opposer contends that the photographs were
provided as proof of priority, and without the requested information “the documents
cannot corroborate any alleged priority claim.”
“Metadata” is generally defined as “data that provides information about other
data.”10 The Board’s primary reviewing court has used a more detailed definition:
Data typically stored electronically that describes characteristics of ESI
[electronically stored information], found in different places in different forms.
Can be supplied by applications, users or the file system. Metadata can
describe how, when, and by whom ESI was collected, created, accessed,
modified, and how it is formatted. Can be altered intentionally or
inadvertently. Certain metadata can be extracted when native files are

7 8 TTABVUE 2.
8 5 TTABVUE 85.
9 Although not raised by Opposer’s motion to compel, the Board notes that Applicant’s
response is improper to the extent it states that it will produce documents “to the extent such
documents exist.” Such response does not inform Opposer whether responsive, non-privileged
documents actually exist, nor does the response inform Opposer whether Applicant has
withheld any documents responsive to the document request based on the objections it lodged
in response to the particular request. See Fed. R. Civ. P. 34(b)(2)(C).
10 Merriam-Webster Dictionary at https://www.merriam-webster.com/dictionary/metadata.
Opposition No. 91243081

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processed for litigation. Some metadata, such as file dates and sizes, can easily
be seen by users; other metadata can be hidden or embedded and unavailable
to computer users who are not technically adept. Metadata is generally not
reproduced in full form when a document is printed to paper or electronic
image.

CBT Flint Partners, LLC v. Return Path, Inc., 737 F.3d 1320, 108 USPQ2d 1969, 1978
n.2 (Fed. Cir. 2013) (quoting The Sedona Conference, The Sedona Conference
Glossary: E–Discovery & Digital Information Management 34 (Sherry B. Harris et al.
eds., 3d ed. 2010)).11
Fed. R. Civ. P. 34(b)(2)(E), made applicable to Board proceedings by Trademark
Rule 2.116(a), 37 C.F.R. § 2.116(a) provides,
Producing the Documents or Electronically Stored Information. Unless
otherwise stipulated or ordered by the court, these procedures apply to
producing documents or electronically stored information:

(i.) A party must produce documents as they are kept in the
usual course of business or must organize and label them
to correspond to the categories in the request;
(ii.) If a request does not specify a form for producing
electronically stored information, a party must produce it
in a form or forms in which it is ordinarily maintained or
in a reasonably usable form or forms; and
(iii.) A party need not produce the same electronically stored
information in more than one form.

11 The Board’s lead case on ESI also cites The Sedona Conference, stating “Federal courts
have referred to the Sedona Conference as ‘the leading authorit[y] on electronic document
retrieval and production.’” Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 100 USPQ2d
1904, 1908 n.9 (TTAB 2011).
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Although the Rule does not specifically address metadata, a party seeking
discovery may specify a form for production and request metadata under Fed. R. Civ.
P. 34(b)(1)(C).12
Opposer’s discovery requests have been sent as a combined request with only one
preamble applicable to interrogatories, document requests and admission requests.13
The definition section of Opposer’s combined discovery requests defines documents in
part as “the original and non-identical copies… including…photographs.”14 The
preamble makes no mention of electronically stored information (ESI), nor is there
any indication that the parties discussed how ESI would be produced, or entered into
any stipulations regarding ESI.15 In any event, it seems at least some metadata
associated with the photographs, which were served upon Opposer in electronic form,
was provided by Applicant as Opposer observes that the “meta-data associated with
the photos [Applicant] produced on April 5, 2019 indicate that the file was created on
April 5, 2019.”16

12 Fed. R. Civ. P 34(b)(1)(C) provides that a discovery request, “may provide the form or forms
in which electronically stored information is to be produced.”
13 See 5 TTABVUE 74-86. The Board is not bound by the instructions or preamble a party
may attach to its discovery requests and makes its own independent determination of the
adequacy of a discovery response. See Avia Group Int’l, Inc. v. Faraut, 25 USPQ2d 1625, 1626
(TTAB 1992).
14 5 TTABVUE 76-77.
15 See, e.g., Fed. R. Civ. P. 26(f)(3)(C) (parties’ discovery plan must state parties’ views and
proposals on how ESI should be produced), Fed. R. Civ. P. 34(b)(1)(C) (party may specify in
its discovery request in which form ESI is to be produced).
16 5 TTABVUE 93.
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Fed. R. Civ. P. 34 does not require that the requesting party specify a form of
production, but where the parties have not specified the form of production for ESI,
the responding party must produce it in the form in which it is “ordinarily
maintained” or in a “reasonably usable form.”17 Opposer does not argue that the
photographs are not in the form in which they are ordinarily maintained, that they
are not reasonably usable, or even that they do not contain metadata, but rather that
Applicant did not provide the information showing the date the photographs were
taken and by whom.
Applicant does not address whether it produced the photographs in the form in
which they were “ordinarily maintained,” but it appears on their face that they are
“reasonably usable” as photographs and Opposer does not argue otherwise. Nor has
Opposer argued that it propounded follow-up discovery requests for the information
it seeks, arguing instead that the information requested is inherent in the request for
documents, “evidencing Applicant’s claim that Applicant has priority over Opposer.”18
To the extent Opposer is arguing a request for metadata is “implicit” or inherent
in its discovery request, there is no basis for the argument. See, e.g., India Brewing,
Inc. v. Miller Brewing Co., 237 F.R.D. 190 (E.D. Wis. 2006) (while party may request
production in specific electronic format, where it simply asks for “documents,”
production in electronic format is not required).

17 Fed. R. Civ. P. 34(b) advisory committee’s note to 2006 amendment.
18 8 TTABVUE 3.
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While Rule 34 is a starting point for resolving discovery disputes involving ESI
and metadata, there is nothing inherent in the Rule requiring production of metadata
where neither party has specified the form in which discovery will be provided, or
where metadata has not been requested. See RICHARD L. MARCUS, 8B FED. PRAC. &
PROC. CIV. 3D § 2219 (Westlaw 2019). See also Autotech Techs. Ltd. P’ship v.
AutomationDirect.com, Inc., 248 F.R.D. 556, 559-60 (N.D. Ill. 2008) (finding where
requesting party did not specify it wanted metadata as part of document production,
responding party would not be compelled to supply it); Wyeth v. Impax Labs., Inc.,
248 F.R.D. 169, 171 (D. Del. 2006) (noting current trends in electronic discovery
appear to articulate presumption against production of metadata).
Here, Opposer did not request the “metadata” information in its production
requests, therefore Applicant need not provide it. See, e.g., D’Onofrio v. SFX Sports
Grp., Inc., 247 F.R.D. 43, 48 (D.D.C. 2008) (denying motion to compel metadata where
discovery request did not specifically request it).
In view thereof, Opposer’s motion to compel is denied.
C. Schedule
Proceedings are resumed. Dates are reset as set out below.
Discovery Closes CLOSED
Plaintiff's Pretrial Disclosures Due 12/14/2019
Plaintiff's 30-day Trial Period Ends 1/28/2020
Defendant's Pretrial Disclosures Due 2/12/2020
Defendant's 30-day Trial Period Ends 3/28/2020
Plaintiff's Rebuttal Disclosures Due 4/12/2020
Plaintiff's 15-day Rebuttal Period Ends 5/12/2020
Plaintiff's Opening Brief Due 7/11/2020
Opposition No. 91243081

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Defendant's Brief Due 8/10/2020
Plaintiff's Reply Brief Due 8/25/2020
Request for Oral Hearing (optional) Due 9/4/2020

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
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, 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).
***