Hot Tamale Mama'and More, LLCv.SF Investments, Inc.

Trademark Trial and Appeal Board

Mar 20, 2014

No. 91209030 (T.T.A.B. Mar. 20, 2014)

Mailed: March 20, 2014

Opposition No. 91209030

Hot Tamale Mama...and More, LLC

v.

SF Investments, Inc.

Krisp, Interlocutory Attorney:
This proceeding is now before the Board for consideration of applicant’s
motion to compel discovery. The motion is fully briefed.
Applicant seeks an order compelling opposer to serve responses to its First
Set of Interrogatories and First Set of Requests for the Production of Documents
and Things, which applicant served on July 8, 2013. Opposer did not serve any
responses as of the due date therefor.1
A motion to compel discovery must be supported by a written statement
from the moving party showing that the party has made a good faith effort, by
conference or correspondence, to resolve the issues with the other party, but that
the parties were unable to resolve their differences. See Trademark Rule

1 To the extent that opposer simply ignored the deadline to either serve discovery
responses or seek from applicant an extension of time in which to do so, this was
inappropriate, and clearly inconsistent with the Board’s expectation that parties and
their attorneys cooperate with one another in the discovery process. See TBMP §
408.01 (3d ed. rev. 2 June 2013).
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. 91209030

2
2.120(e)(1), 37 CFR § 2.120(e)(1); TBMP § 523.02 (2013). Cf. The Phillies v.
Phila. Consol. Holding Corp., 107 USPQ2d 2149, 2151 (TTAB 2013). The Board
expects that, as was done here, the statement will be supported by a recitation of
the communications conducted, including dates, a summary of telephone
conversations, and copies of any correspondence exchanged, where applicable
(e.g., emails, letters, notes to file).
In 1979, the Board explained that one purpose of this rule is to relieve the
Board of the burden of ruling on motions to compel in proceedings where the
parties can resolve their discovery disputes if they make a good faith effort to do
so. See MacMillan Bloedel Limited v. Arrow-M Corp., 203 USPQ 952, 953-954
(TTAB 1979). To this end, when discussing this rule2 in two 1979 precedents, the
Board first explained in the MacMillan case that even where a party has
completely failed to respond to discovery, the party seeking discovery has a duty
to contact the adverse party to ascertain why it has received no response and
whether the matter can be resolved amicably, see id. at 954; and second, in a
subsequent precedent, explained that, following such contact, if the party seeking
discovery is dissatisfied with the adverse party’s answer, it may file a motion to
compel, supported by the statement and accompanying showing required by
Trademark Rule 2.120(e)(1). See Envirotech Corp. v. Compagnie Des Lampes,
219 USPQ 448, 450 (TTAB 1979).

2 In 1979, current Trademark Rule 2.120(e)(1) was designated Trademark Rule
2.120(c)(1).
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3
Further, Trademark Rule 2.120(e)(1) calls for the moving party to show
that it has made a good faith effort to resolve the issues presented in the motion,
and that the parties were unable to resolve their differences. Thus, more recently
the Board clarified that “[t]he purpose of the conference requirement is to
promote a frank exchange between counsel to resolve issues by agreement or to at
least narrow and focus the matters in controversy before judicial resolution is
sought.” Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009)
(emphasis supplied), quoting Dondi Properties Corp. v. Commerce Savings and
Loan Ass'n, 121 F.R.D. 284, 289 (N.D. Tex. 1988) (construing a local rule less
demanding than Trademark Rule 2.120(e)(1)).
Trademark Rule 2.120(e)(1) does not require in all cases that a party
seeking discovery ask its adversary specifically why no responses were received.
On the other hand, mere dissatisfaction with the adversary’s answer to an initial
inquiry, in itself, does not discharge the duty to undertake a good faith effort to
resolve the dispute, particularly where the inquiring party has received no,
minimal or incomplete substantive information in response to its initial inquiry.
Rather, the point is to investigate the possibility of resolving the dispute.
Although the reason why no discovery responses were served can be part –
possibly an important part – of the discussion, it may be irrelevant to resolving
the dispute in many cases. Regardless, the good faith efforts of the parties
should be directed to understanding differences and actually investigating ways
in which to resolve the dispute. Where it is apparent that the effort toward
Opposition No. 91209030

4
resolution is incomplete, establishing the good faith effort that is a prerequisite
for a motion to compel necessitates that the inquiring party engage in additional
effort toward ascertaining and resolving the substance of the dispute.
Here, that was not done. Two weeks after opposer’s responses were due,
applicant’s counsel sent a single email to opposer’s counsel, stating:
We have yet to receive your responses to the discovery requests
we served earlier. Please advise me when we can expect them,
as we need to get expert reports prepared.

Three days later, opposer’s counsel replied, stating:
I’ll check with the client and get back to you on a time
frame for response.

Applicant relies on this email exchange to establish that it satisfied the
good faith effort requirement. The question presented is whether a
communication of this nature, by itself, satisfies that requirement where, as
here, the nonmovant inappropriately served no response to written discovery
requests when due, and, when contacted by the inquiring party, provided a
minimal answer that did not even suggest a date by which the overdue
responses would be served.
Applying the analysis set forth above, we conclude that applicant
failed to satisfy the good faith effort obligation. Under the circumstances of
this proceeding, the email exchange alone was insufficient to establish that
applicant undertook sufficient effort to resolve the dispute. Applicant’s sole
communication merely stated what opposer already knew, that is, that
applicant had received no discovery responses. For its part, opposer gave
Opposition No. 91209030

5
only a brief reply that did not provide any information as to why the
responses were past due, or when applicant could expect to receive them.
Although opposer’s reply did not indicate a date by which it would respond to
the outstanding discovery requests, the reply also did not suggest any
disagreement between the parties or recalcitrance or uncooperativeness on
the part of opposer.
Although applicant was not required to wait indefinitely for further
communication from opposer, given the lack of information garnered in the
single exchange, and the lack of apparent disagreement or impasse, it was
incumbent upon applicant to make at least one additional inquiry directed to
not only ascertaining why opposer had served no responses, but also
determining any underlying circumstances that might have contributed to
the non-response, and whether any problems could be resolved. From
opposer’s short email reply,3 it should have been apparent to applicant that it
needed to make at least a second inquiry in order to determine opposer’s
situation, the nature of any disputed matter, and whether and when the
matter could be resolved amicably.
The potential fruitfulness of a supplemental inquiry is plainly evident
here. Opposer, in its consented motion for an extension to respond to the
motion to compel, as well as in its brief opposing the motion to compel,

3 Clearly, the Board must determine the sufficiency of applicant’s efforts towards
resolving the discovery issue. However, opposer’s non-substantive email reply, and
lack of follow-up, fall far short of the Board’s expectation that both parties will
Opposition No. 91209030

6
described circumstances that would have been relevant to applicant’s
understanding of the situation, namely, that opposer is a small, closely held
company that was moving its operations and whose principal had not had
time to address discovery matters.4 Had applicant made a second inquiry,
and concomitantly, had opposer provided information regarding its situation,
applicant would have known enough to assess whether the situation was of
the type that could be resolved without Board intervention. The record does
not reflect an unresolvable situation – such as would have been the case if
opposer were a defiant adversary who simply refused to engage in discovery
or to provide applicant with any answer regarding the failure to serve
discovery responses.
Given the choices of communication technologies that have become
common and nearly ubiquitous in the professional setting, and given that
current technologies (email, phone, letter, text and other means) make
substantive communications directed to ascertaining the details of a situation
that arises during litigation achievable with minimal effort, time and delay,
the Board may, under certain circumstances, expect more “effort” from a

engage in meaningful efforts that are specifically directed toward resolving any
discovery issues or delays. Cf. TBMP § 408.01 (2013).
4 Similarly, these circumstances could have supported a request by opposer for
applicant’s consent to a reasonable extension of time to respond to discovery.
However, opposer did not approach applicant with a request for such an extension.
Inasmuch as applicant consented to opposer’s request for additional time to respond
to the motion to compel, the record suggests that applicant might have provided
consent to an extension to respond to discovery, had opposer sought one.
Opposition No. 91209030

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party than a single, nonsubstantive communication prior to filing a motion to
compel discovery.
Under the circumstances of this proceeding, applicant failed to satisfy
the good faith effort requirement of Trademark Rule 2.120(e)(1). Accordingly,
its motion to compel is denied.
As a final matter, because opposer did not serve discovery responses
until after applicant filed its motion to compel, applicant set forth in the
record the alleged deficiencies with the responses in its reply brief. This
created procedural problems inasmuch as applicant first saw the discovery
responses after it filed the motion to compel, and opposer did not have an
opportunity to respond to any deficiencies that applicant perceived therein.
This also was contrary to the Board’s preference that the arguments and
authority should be presented thoroughly in the motion or the opposition
brief thereto. Cf. Johnston Pump/General Valve Inc. v. Chromalloy
American Corp., 13 USPQ2d 1719, 1920 n.3 (TTAB 1989). More to the point,
the perceived deficiencies could have been, and indeed should have been,
significantly narrowed or resolved by conference or correspondence. Cf.
Amazon Techonologies, Inc. v. Wax, 93 USPQ2d at 1705; Sentrol, Inc. v.
Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986). This only further
illustrates the manner in which applicant’s reliance on a brief and
insubstantial email exchange resulted in presenting to the Board an
otherwise resolvable or largely resolvable dispute. Adherence to the
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Trademark Rule 2.120(e)(1) good faith effort requirement is intended to avoid
the Board’s involvement in such a situation.
Schedule
Proceedings are resumed. The close of discovery, and trial dates, are
reset as follows:
Discovery Closes 4/25/2014
Plaintiff's Pretrial Disclosures 6/9/2014
Plaintiff's 30-day Trial Period Ends 7/24/2014
Defendant's Pretrial Disclosures 8/8/2014
Defendant's 30-day Trial Period Ends 9/22/2014
Plaintiff's Rebuttal Disclosures 10/7/2014
Plaintiff's 15-day Rebuttal Period Ends 11/6/2014

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 2.129.