Great Seats, Inc.v.Great Seats, Ltd.

Trademark Trial and Appeal Board

Sep 21, 2011

No. 91189540 (T.T.A.B. Sep. 21, 2011)

Baxley Mailed: September 21, 2011

Opposition No. 91189540

Great Seats, Inc.

v.

Great Seats, Ltd.

Andrew P. Baxley, Interlocutory Attorney:

In this proceeding, Great Seats, Inc. ("opposer")
opposes registration of Great Seats, Ltd.'s ("applicant")
mark GREAT SEATS in typed form for "arranging for ticket
reservations for shows and other entertainment events" in
International Class 41.1 Opposer has pleaded claims of
likelihood of confusion with its previously used mark GREAT
SEATS for "ticket agency services for concerts, theatrical
performances and sporting events" under Trademark Act
Section 2(d), 15 U.S.C. Section 1052(d), and that the
involved mark has not acquired distinctiveness under

1 Application Serial No. 75733290, filed June 21, 1999, based on
use in commerce under Trademark Act Section 1(a), 15 U.S.C.
Section 1051(a), and asserting August 1, 1992 as the date of
first use anywhere and date of first use in commerce. The
application includes a claim of distinctiveness under Trademark
Act Section 2(f), 15 U.S.C. Section 1052(f), and a disclaimer of
SEATS. Because applicant seeks registration under Section 2(f),
the involved mark's lack of inherent distinctiveness is an
established fact. See Yamaha International Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir.
1988).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a
Precedent of the TTAB
Opposition No. 91189540
2
Trademark Act Section 2(f), 15 U.S.C. Section 1052(f).2 The
parties filed cross-motions for summary judgment on the
pleaded Section 2(d) claim, which the Board denied in a May
12, 2010 order. Under the schedule set forth in that order,
the discovery period closed on June 24, 2010, opposer's
pretrial disclosures were due by August 8, 2010,3 and
opposer's testimony period commenced on August 24, 2010.
However, applicant's new attorney entered an appearance on
July 23, 2010. Then, beginning on September 1, 2010, i.e.,
after the trial period opened, the parties sought and
received three extensions of trial dates to accommodate
their settlement discussions, the last of which reset the
deadline for opposer's pretrial disclosures to February 4,
2011.4

2 The parties were involved in Cancellation No. 92032524, styled
Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235 (TTAB
2007). In that proceeding, opposer's Registration No. 2339519
for the mark GREAT SEATS INC. and design for "ticket agency
services for concerts, theatrical performances, and sporting
events" in International Class 41 was cancelled on the ground the
application for such registration was void ab initio because it
was not filed by the owner of the mark. Applicant's involved
application had been suspended pending final determination of the
earlier cancellation proceeding and was published for opposition
on December 9, 2008. The above-captioned opposition proceeding
followed.

3 August 8, 2010 was a Sunday. Accordingly, any pretrial
disclosures that opposer served on Monday, August 9, 2010 would
have been treated as timely. See Trademark Rule 2.196.

4 Although opposer's testimony period had begun, opposer's
consented motions to extend, which were filed electronically
through ESTTA, sought to reset dates commencing with the due date
for pretrial disclosures.
Opposition No. 91189540
3
This case now comes up for consideration of applicant's
motion (filed February 23, 2011) (1) to quash opposer’s
notice of testimony depositions and (2) to exclude the
testimony of Michael Kelly, who was first named in
applicant's original pretrial disclosures on August 9, 2010,
and twenty-six additional nonparty individuals that were
disclosed for the first time in amended and supplemental
pretrial disclosures that opposer served on February 4 and
9, 2011, respectively. The motion has been fully briefed.
In support of its motion, applicant contends that, in
initial disclosures that opposer served on August 12, 2009,
opposer named its president, Enrique Daniel Matta, as the
only person with discoverable information that opposer may
use in this proceeding; and that opposer did not
subsequently amend its initial disclosures. In applicant's
interrogatory no. 1 (served on June 23, 2010), applicant
asked opposer to "[i]dentify each person having firsthand
knowledge of Matta being known as 'GREAT SEATS' at any time
during the period from January 1, 1978 to January 1, 1993,
and for each person identified, describe his/her
relationship to Matta, both currently and over said time
period." In response, opposer objected to said
interrogatory as unduly burdensome and identified two "long-
time acquaintance[s]," Tim Lee and Donald Phillips, with no
Opposition No. 91189540
4
indication that it would subsequently name additional
persons.
In the original pretrial disclosures that opposer
timely served on Monday, August 9, 2010, opposer named
Messrs. Lee and Phillips and, for the first time, Michael
Kelly as potential witnesses regarding their "first hand
knowledge of the appellation GREAT SEATS in connection with
the sale of tickets to entertainment and sports events by
Mr. Matta and the level of recognition on the part of the
public of Mr. Matta as GREAT SEATS." On February 4, 2011,
opposer served amended pretrial disclosures in which, for
the first time, it named eighteen additional potential
witnesses who may testify regarding the same subject matter.
Then, on February 9, 2011, opposer served supplemental
pretrial disclosures in which it identified another eight
witnesses who may testify regarding that subject matter.
Opposer then, on February 16, 2011, served a notice of
testimony depositions in which it identified twenty-nine
witnesses -- Messrs. Lee and Phillips, who had been
identified in response to applicant’s interrogatory no. 1
and who were disclosed in the August 9, 2010 pretrial
disclosures, Mr. Kelly, who was first disclosed in the
August 9, 2010 pretrial disclosures, and the twenty-six
witnesses who were first disclosed in the February 2011
amended and supplemental pretrial disclosures –- whom it
Opposition No. 91189540
5
intended to depose on March 16 and 17, 2011. Opposer
refused to withdraw that notice during a telephone
conference between the parties' attorneys. In view of
opposer's failure to identify Mr. Kelly or any of the
twenty-six witnesses named in the February 2011 amended and
supplemental pretrial disclosures in either its initial
disclosures or in response to interrogatories, applicant
contends that it was deprived of the opportunity to seek
discovery from those witnesses and that it will be
prejudiced if opposer is allowed to rely on the their
testimony. Moreover, applicant contends that the February
9, 2011 supplemental pretrial disclosures are untimely and
that testimony of the eight witnesses identified therein
should be excluded on that basis.
In response, opposer contends that, because it provided
statements from Messrs. Lee and Phillips in its January 19,
2010 combined brief in response to applicant's cross-motion
for summary judgment and reply brief in support of its
motion for summary judgment, applicant had been aware for
more than a year that opposer intended to rely on nonparty
witnesses who would testify as to their knowledge of the
appellation GREAT SEATS in connection with the sale of
tickets to entertainment and sports events by Mr. Matta and
the level of recognition on the part of the public of Mr.
Matta as GREAT SEATS, and that any failure to disclose those
Opposition No. 91189540
6
witnesses earlier was harmless. Opposer further contends
that, because it was concentrating on its efforts to settle
this case in the time between applicant's July 23, 2010
change of attorneys and January 2011, any failure to
disclose those witnesses earlier was substantially
justified. Opposer contends in addition that, while
applicant's attorney asked during an August 18, 2010
telephone conference to take discovery depositions of any
new nonparty witnesses upon whom opposer may intend to rely
at trial, opposer declined to consent to such discovery
depositions because (1) opposer has no control over those
nonparty witnesses; (2) applicant would be able to cross-
examine them during their testimony depositions; and (3)
taking discovery depositions of those witnesses would not be
conducive to settling this case. Opposer further contends
that it was not able to locate the additional nonparty
witnesses until the end of 2010 and January 2011, that their
testimony is crucial to its assertion of prior rights in the
GREAT SEATS mark and that applicant will not be prejudiced
because (1) applicant knew of the subject matter about which
Mr. Kelly and the other twenty-six potential new witnesses
would testify long before opposer made the amended and
supplemental pretrial disclosures in February 2011; and (2)
applicant would have roughly a month between the Feburary
16, 2011 date of the notice of depositions and the March 16-
Opposition No. 91189540
7
17, 2011 dates on which those depositions were scheduled to
be taken to prepare for the depositions at issue.
Accordingly, opposer asks that the Board deny applicant's
motion.
In reply, applicant contends that, even if it knew that
opposer intended to rely upon nonparties as witnesses in
support of its assertion of priority, which is a central and
disputed issue in this case, applicant did not know the
identity of Mr. Kelly or any of the other twenty-six
additional potential witnesses until after the close of
discovery, and that opposer's initial pretrial disclosures
identified only one of those twenty-seven additional
potential witnesses, i.e., Mr. Kelly. Accordingly,
applicant contends that opposer's failure to disclose those
witnesses earlier is inexcusable and a blatant attempt to
circumvent taking of discovery.
Board inter partes proceedings are governed, in part,
by the Federal Rules of Civil Procedure, except as otherwise
provided in the Trademark Rules of Practice, and “wherever
[the Federal Rules are] applicable and appropriate.”
Trademark Rule 2.116. In turn, Fed. R. Civ. P.
26(a)(1)(A)(i) requires parties to provide an initial
disclosure identifying “each individual likely to have
discoverable information — along with the subjects of that
information — that the disclosing party may use to support
Opposition No. 91189540
8
its claims or defenses, unless the use would be solely for
impeachment.” Initial disclosures do not require an
exhaustive search for all information or potential witnesses
that could be used at trial.5 See Byer California v.
Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1178 (TTAB
2010). Accordingly, the Board declines to quash the notice
of testimony deposition of Mr. Kelly or the twenty-six other
new potential witnesses named in opposer’s pretrial
disclosures and exclude their testimony based on opposer's
failure to name them in initial disclosures.
In addition, the supplemental pretrial disclosures
naming for the first time eight additional potential
witnesses, which opposer served on February 9, 2011, i.e.,
five days after the last deadline for opposer's pretrial
disclosures, were in compliance with opposer's ongoing duty
to supplement its pretrial disclosures. See Fed. R. Civ. P.
26(e)(1)(A). Accordingly, the Board declines to quash the
notice of testimony deposition with regard to those eight
additional potential witnesses and to exclude their
testimony based on the alleged untimeliness of the
supplemental pretrial disclosures.

5 However, it would be curious for a trial witness not to have
discoverable information. See Byer California v. Clothing for
Modern Times Ltd., 95 USPQ2d at 1178. Therefore, if the identity
of the witness is known when initial disclosures are made, and
the relevant knowledge of the witness is known, then a party may
have to disclose the identity of the witness when making initial
Opposition No. 91189540
9
Nonetheless, opposer was under a duty to supplement or
correct its discovery responses "in a timely manner if
[opposer] learns that in some material respect the
disclosure or response is incomplete or incorrect, and if
the additional or corrective information has not otherwise
been made known to the other parties during the discovery
process or in writing." Id. Under the estoppel sanction, a
party that fails to provide information may, upon motion or
objection by its adversary, be precluded from using that
information or witness at trial, "unless the failure was
substantially justified or is harmless." Fed. R. Civ. P.
37(c)(1).6 See also TBMP Section 527.01(e) (3d ed. 2011).
In determining whether opposer's failure to disclose
Mr. Kelly or the other twenty-six new potential witnesses in
a supplemental response to interrogatory no. 1 is
substantially justified or harmless, the Board is guided by
the following five-factor test: "1) the surprise to the
party against whom the evidence would be offered; 2) the
ability of that party to cure the surprise; 3) the extent to
which allowing the testimony would disrupt the trial; 4)
importance of the evidence; and 5) the nondisclosing party's
explanation for its failure to disclose the evidence."
Southern States Rack & Fixture, Inc. v. Sherwin-Williams

disclosures, even if the party has no plans at that time to rely
on testimony from the witness.

6 This provision of Rule 37 references Rule 26(e) which requires
supplementation of discovery responses.
Opposition No. 91189540
10
Co., 318 F.3d 592, 597 (4th Cir. 2003). See also
MicroStrategy, Inc. v. Business Objects, S.A., 429 F.3d
1344, 1357, 77 USPQ2d 1001, 1009-10 (Fed. Cir. 2005)
(applying Southern States factors in excluding non-expert
damages evidence as a sanction for late disclosure). The
Board will address each of these factors.
Regarding surprise to applicant, opposer, in response
to applicant's interrogatory no. 1, identified only Messrs.
Lee and Phillips as "person[s] having firsthand knowledge of
Matta being known as 'GREAT SEATS' at any time during the
period from January 1, 1978 to January 1, 1993." Prior to
the August 9, 2010 service of opposer's first pretrial
disclosures, in which opposer disclosed Mr. Kelly as a
potential witness, applicant had no reason to believe that
opposer's response to interrogatory no. 1 was anything other
than a complete and good faith response to that
interrogatory. Cf. Panda Travel Inc. v. Resort Option
Enterprises Inc., 94 USPQ2d 1789, 1792 (TTAB 2009) (motion
to strike documents granted where documents were sought
during discovery, but not produced until trial). Opposer
then, in its amended and supplemental pretrial disclosures
that were served more than seven months after the close of
discovery, identified twenty-six new potential witnesses.
Failure to name during discovery Mr. Kelly and any of the

Opposition No. 91189540
11
twenty-six additional witnesses first named in the amended
and supplemental pretrial disclosures as persons having
firsthand knowledge of Mr. Matta being known as "GREAT
SEATS" resulted in unfair surprise to applicant and deprived
applicant of any opportunity to take discovery from any of
them. See "Miscellaneous Changes to Trademark Trial and
Appeal Board Rules," 72 Fed. Reg. 42242, 42255 (August 1,
2007) (explaining that one reason for the Board’s adoption
of a pretrial disclosure requirement was to address
assertions of unfair surprise at trial). With regard to Mr.
Kelly, this unfair surprise was compounded by opposer's
refusal to consent to applicant's request to take a
discovery deposition of him.7 In view of the disclosure of
Mr. Kelly for the first time after the close of discovery,
opposer's refusal to allow applicant an opportunity to take
a discovery deposition of Mr. Kelly prior to trial was
unreasonable. See Byer California v. Clothing for Modern
Times Ltd., 95 USPQ2d at 1178-79; TBMP Section 414(7) (3d
ed. 2011). Accordingly, this factor strongly favors
applicant.
Regarding the ability of applicant to cure the
surprise, the Board notes that applicant could not cure the

7 Applicant did not ask to take discovery depositions of the
twenty-six new potential witnesses that were first disclosed in
opposer's amended and supplemental pretrial disclosures. Rather,
applicant asked that opposer withdraw those potential new
witnesses from its amended and supplemental pretrial disclosures.
Opposition No. 91189540
12
surprise without filing the motion to quash decided in this
order, or by seeking to reopen discovery to take discovery
depositions of Mr. Kelly and the twenty-six other new
potential witnesses, or by engaging in previously unplanned
preparation to cross-examine those potential witnesses.
This factor also favors applicant.
Regarding the extent to which allowing the testimony of
the additional potential witnesses would disrupt this trial,
opposer's failure to disclose these witnesses earlier
through supplementation of its interrogatory response has
indeed been disruptive to the orderly administration of this
trial. Such late disclosure caused applicant to file its
motion in response thereto and caused the Board to suspend
this case pending a decision thereon. This factor also
favors applicant.
Regarding the importance of the evidence at issue, the
testimony of the additional witnesses may be important.
Opposer, as plaintiff, has the burden of proof in this
proceeding, and must establish its prior rights in the GREAT
SEATS mark to prevail on its Section 2(d) claim in this
case. See King Candy Co. v. Eunice King's Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974). This factor
therefore may favor opposer. The Board notes, however, that
opposer has two witnesses –- Messrs. Lee and Phillips -- who
Opposition No. 91189540
13
were named in response to interrogatory no. 1, upon whom
opposer may rely in support of this opposition.
Regarding opposer's explanation for its failure to
supplement, opposer's attorney, in a February 16, 2011
letter to applicant's attorney that applicant included as an
exhibit to its motion, stated that it was only around the
time that settlement negotiations broke down in early 2011
that "Mr. Matta devised a method to track down the
additional witnesses." At a minimum, opposer should have
been cognizant of what evidence it would need to establish
its claims and how it would obtain that evidence long before
settlement discussions were terminated, for trial had
previously opened and opposer should have had a trial plan
in place at that time. Opposer's explanation gives the
impression that opposer only fully considered how it would
establish its claims after settlement discussions ended.8
To allow all of the new potential witnesses to testify under
these circumstances would overlook and essentially excuse
opposer's failure to supplement discovery and reward its
correspondingly late disclosure of these witnesses.
Therefore, this factor strongly favors applicant.
On balance, the Board finds that opposer's failure to
name Mr. Kelly until service of its original pretrial

8 The Board is careful to distinguish the present situation from
one in which the potential witnesses could not have been
discovered earlier through reasonable diligence.
Opposition No. 91189540
14
disclosures more than a month after the close of discovery
and failure to name the twenty-six additional potential
witnesses until service of opposer's amended and
supplemental pretrial disclosures more than seven months
after the close of discovery was neither harmless nor
substantially justified. In view thereof, the Board finds
that it is appropriate to apply the estoppel sanction.
Applicant's motion to quash and to exclude testimony is
granted to the extent that opposer may not take testimony of
the twenty-six potential witnesses that were first disclosed
in opposer's February 2011 amended and supplemental pretrial
disclosures. However, opposer may rely on the testimony of
Michael Kelly, who was first disclosed in opposer's initial
pretrial disclosures on August 9, 2010, provided that
applicant has an opportunity to take Mr. Kelly’s discovery
deposition prior to his appearance for a testimony
deposition. Applicant is allowed until thirty days from the
mailing date set forth in this order to take such discovery
deposition.9
Proceedings herein are resumed. Remaining dates are
reset as follows.
Plaintiff's 30-day Trial Period Ends 12/5/11
Defendant's Pretrial Disclosures Due 12/20/11

9 Because Mr. Kelly is a nonparty witness, any such discovery
deposition must be taken pursuant to a subpoena issued by the
United States district court in the federal judicial district
where Mr. Kelly resides or is regularly employed. See TBMP
Section 404.03(a)(2) (3d ed. 2011).
Opposition No. 91189540
15
Defendant's 30-day Trial Period Ends 2/3/12
Plaintiff's Rebuttal Disclosures Due 2/18/12
Plaintiff's 15-day Rebuttal Period Ends 3/19/12

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.l25.
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.l29.
If either of the parties or their attorneys should have
a change of address, the Board should be so informed
promptly.