Joshua Domondv.37.37, Inc.

Trademark Trial and Appeal Board

Jan 2, 2015

No. 92058841 (T.T.A.B. Jan. 2, 2015)

wbc Mailed: January 2, 2015

Cancellation No. 92058841

Joshua Domond

v.

37.37, Inc.

Wendy Boldt Cohen, Interlocutory Attorney:

This case comes up on 37.37, Inc.’s (“Respondent”) motion for protective order filed
June 12, 2014 (“MPO”) pursuant to Fed. R. Civ. P. 26(c) seeking to protect
Respondent against having to respond to all of Joshua Domond’s (“Petitioner”) 872
requests for admission, 247 document requests and 26 interrogatories served the first
two days of the discovery period. The motion has been opposed by Petitioner.
I. BACKGROUND
A partial procedural history of this case is set forth for background. Petitioner
filed a petition to cancel Registration No. 3960506 for the stylized mark:1

1 Registration No. 3960506 issued May 17, 2011 alleging a date of first use anywhere and in
commerce of June 1988 in International Class 25.
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
Cancellation No. 92058841
2

alleging fraud, abandonment, priority and likelihood of confusion, and that the
registration was void ab initio because the specimen submitted in support of use does
not show use in commerce in connection with Respondent’s goods. 2
On the first day of discovery, Petitioner served upon Respondent a set of 707
requests for admission, 247 document requests, and 26 enumerated interrogatories,
some with subparts. The following day, Petitioner served upon Respondent a second
set of requests for admission, comprising 165 additional requests. In lieu of
responding to the discovery requests, Respondent filed a motion for protective order.
In support of its motion, which is accompanied by a declaration from its attorney,
Respondent alleges, inter alia, that Petitioner has stated that he plans to make this
proceeding “a long, difficult battle,” MPO, p.3; that Petitioner’s “initial requests are
clearly [an] unreasonable number of requests that were served for the sole purpose of
making this a ‘long, difficult battle,’” id.; and that therefore, a protective order should
be granted protecting Respondent from undue burden and expense. Respondent asks
that it be relieved of any obligation to respond to discovery requests until Petitioner
serves a revised set of discovery which is limited to an initial thirty requests each for
admission, for production of documents and as interrogatories; and in the alternative,

2 Although Petitioner has asserted a claim related to the sufficiency of Respondent’s
specimen, it is a claim that would normally not be a proper basis to cancel a registration.
See Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1358-59 (TTAB 1989)
(the insufficiency of the specimens, per se, does not constitute grounds for cancellation; the
proper ground for cancellation is that the term has not been used as a mark); Century 21
Real Estate Corp. v. Century Life of America, 10 USPQ2d 2034, 2035 (TTAB 1989). To the
extent Petitioner intends to assert only the insufficiency of Respondent’s specimens, the
claim would be futile. The proper ground for cancellation is that the registered mark has
not been used as a trademark. See Marshall Field & Co., 11 USPQ2d at 1359.
Cancellation No. 92058841
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Respondent be granted an additional thirty days to respond to Petitioner’s discovery
requests.
Petitioner, appearing pro se, argues, inter alia, that his discovery “has the
essential purpose of eliciting admissible evidence for trial,” Response to MPO, p. 1;
that “the TBMP does not limit the number of requests for admissions or the number
of document production requests,” id.; that Petitioner was merely using “tough talk”
when he said he would make this proceeding “long and difficult,” id. at p. 2; that
Respondent filed the MPO as a “stall tactic,” id. at p. 3; and that therefore, the MPO
should be denied.
II. DISCUSSION
The Board expects parties to cooperate with one another in the discovery process
which includes the duty to make a good faith effort to seek only such discovery as is
proper and relevant to the issues in the case. Fed. R. Civ. P. 26(g); See Panda Travel
Inc. v Resort Option Enterprises, Inc., 94 USPQ2d 1789, 1791 (TTAB 2009); Amazon
Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009); TBMP § 408.01
(2014). Failure to cooperate saddles the Board with needless motions and burdens it
with resolving disputes which should be resolved by the parties. See, e.g., Johnston
Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675
(TTAB 1988); Leuhermann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987).
“The purpose of discovery is to advance the case by requiring parties to share
certain relevant information upon request, so that the issues for trial may be focused
and the case may proceed in an orderly manner within reasonable time constraints.”
Cancellation No. 92058841
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Phillies v. Phila. Consol. Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013). The
scope of discovery in a Board proceeding is governed by Fed. R. Civ. P. 26(b)(1), which
provides that “[p]arties may obtain discovery regarding any nonprivileged matter
that is relevant to any party’s claim or defense.” Fed. R. Civ. P. 26(b)(2) allows for
limitations on discovery where such discovery is “unreasonably cumulative or
duplicative, or can be obtained from another source that is more convenient, less
burdensome, or less expensive” (emphasis added). “Although the rule contemplates
liberal discovery, the right to discovery is not unlimited. Both the Trademark Rules
and the Federal Rules of Civil Procedure grant the Board 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.” Phillies, 107 USPQ2d at
2152 (quoting FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999)).
“While it is a general rule that parties involved in an adversary proceeding are
entitled to seek discovery as they may deem necessary to help them prepare for trial,
it is not the practice of the Board to permit unlimited discovery to the point of
harassment and oppressiveness.” Id. at 2152.
When it comes to serving discovery, the parties are expected to take into account
the principles of proportionality with regard to discovery requests such that the
volume of requests does not render them harassing and oppressive and are expected
to consider the scope of the requests as well as to confer in good faith about the
proper scope of discovery so as to minimize the need for motions. See Trademark Rule
2.120(a); Fed. R. Civ. P. 26(f); Phillies, 107 USPQ2d at 2153; cf. Frito-Lay North
Cancellation No. 92058841
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America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908-10 (TTAB 2011)
(Board applied principle of proportionality in case involving discovery of
electronically-stored information). Where appropriate, the Board may, under Fed. R.
Civ. P. 26(c)(1), order that the discovery requested not be had. See TBMP § 412.06(b).
Fed. R. Civ. P. 26(c)(1) requires that a party moving for a protective order include
a certificate that the movant has in good faith conferred or attempted to confer with
the other affected parties in an effort to resolve the dispute without Board action.
Likewise, “the parties should confer in good faith before seeking Board intervention
for a protective order.” TBMP § 412.06 (citing Fed. R. Civ. P. 26(c)(1) and Phillies,
107 USPQ2d at 2152 (finding good faith effort to resolve the discovery dispute prior
to filing the motion for protective order)).
Respondent alleges that it attempted to resolve the parties’ dispute over
Petitioner’s discovery requests, and to show this Respondent provided an email
exchange between the parties wherein Respondent asks Petitioner to withdraw his
requests because they are “unnecessarily expensive and burdensome.” MPO at Exh.
F. Petitioner responded that he “will not withdraw the discovery.” Id.
Given the egregious number and nature of Petitioner’s discovery requests and
apparent refusal to even discuss or engage in a constructive dialogue regarding the
parties’ dispute, Respondent’s efforts are reasonable under the circumstances of this
case. In view of the foregoing, the Board finds Respondent made a good faith effort to
resolve the discovery dispute before seeking Board intervention, pursuant to Fed. R.
Civ. P. 26(c)(1) and Trademark Rule 2.120(f), 37 CFR § 2.120(f). See TBMP § 412.06.
Cancellation No. 92058841
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Except in cases where it is readily apparent that propounded discovery requests
are so oppressive as to constitute clear harassment, it is generally improper to
respond to a request for discovery by filing a motion for protective order. See
Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984). However,
where appropriate, the Board may have to determine whether there is a need for
protection against a particular discovery request due to its nature, or whether the
sheer volume of discovery requests renders them harassing and oppressive. See, e.g.,
Phillies, 107 USPQ2d at 2152, Double J of Broward Inc. v. Skalony Sportswear
GmbH, 21 USPQ2d 1609, 1612 (TTAB 1991); Fort Howard Paper Co. v. G.V.
Gambina Inc., 4 USPQ2d 1552, 1554 (TTAB 1987); TBMP § 412.06(b). The movant
for a protective order must establish good cause for issuance of the order. Trademark
Rule 2.120(f), 37 CFR § 2.120(f); Fed. R. Civ. P. 26(c)(1); see also TBMP § 412.06. To
establish good cause, a movant must provide “a particular and specific demonstration
of fact, as distinguished from stereotyped and conclusory statements.” FMR Corp., 51
USPQ2d at 1761.
A. Excessive Number of Requests
Here, Petitioner’s voluminous discovery requests, which have been reviewed by
the Board, are excessive, unduly burdensome and harassing in number and content.
See C.H. Stuart Inc. v. S.S. Sarna, Inc., 212 USPQ 386, 387 (TTAB 1980). As is clear
from the number of discovery requests within the context of this proceeding, as well
as their content, Petitioner has failed in his duty to seek only such discovery as is
proper and relevant to the issues in this proceeding. Petitioner has not cited any
Cancellation No. 92058841
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authority, and the Board is unaware of any, which supports the proposition that over
1000 discovery requests served within two days of the opening of discovery is a
proportional attempt to obtain information relevant to a petition to cancel one
registration.
B. Improper Nature of Requests
In addition to the sheer number of requests propounded by Petitioner, the Board
further notes that, contrary to Petitioner’s claim that his discovery “has the essential
purpose of eliciting admissible evidence for trial,” many of Petitioner’s requests
vastly exceed the bounds of proper discovery and are neither tailored to the issues of
this cancellation nor serve to advance this proceeding in a focused and orderly
manner.
A number of Petitioner’s requests are not appropriately tailored to elicit
discoverable information in this proceeding. Due to the volume of requests and in the
interest of judicial efficiency the Board will not address the requests individually.
However, a number of requests require the Board’s attention and proceedings herein
will be aided by their review. Many of Petitioner’s document requests seek all
documents from the last seventeen years. Complete compliance with a request for “all
documents” from such an extended period of time may be unduly burdensome, and
the Board has found it appropriate in such cases to require production of only a
representative sampling. See, e.g., Frito-Lay North America Inc., 100 USPQ2d at
1910 (where hundreds of thousands of dollars spent, and tens of thousands of
documents created, opposer required to produce only a representative sample with
Cancellation No. 92058841
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respect to the specific requests at issue); Sunkist Growers, Inc. v. Benjamin Ansehl
Co., 229 USPQ 147, 148 (TTAB 1985) (allowed to provide representative samples of
invoices from each calendar quarter); Neville Chemical Co. v. Lubrizol Corp., 184
USPQ 689, 689-90 (TTAB 1975) (sales and advertising figures for six different
categories of goods since 1936 limited to five-year period and a statement that there
have been sales for the other years); TBMP § 414(2). For the purposes of this
proceeding, any representative sampling ought to correspond to the dates necessary
to prove Petitioner’s claims. Information that is not relevant to a party’s claim or
defense, even if it relates to a relevant time period, is not subject to discovery. See
Fed. R. Civ. P. 26(b)(1). Moreover, to propound such a broad, untailored request is
not consistent with maintaining an orderly and focused proceeding and is therefore
not properly tailored.
A number of requests seek information not pertinent to the current proceeding.
These include requests regarding subjects such as Respondent’s current stock price,
Respondent’s projected income for the next five years, audit reports of Respondent,
and information related to Respondent’s annual gross and net revenue.3 While
annual sales and advertising figures, stated in round numbers, for a party’s involved
goods are proper matters for discovery, see, e.g., Varian Associates v. Fairfield-Noble
Corp., 188 USPQ 581, 583 (TTAB 1975); TBMP § 414(18), the noted subjects are
indiscriminate requests for financial data, information and documents that offer
nothing to further the claims before the Board and are therefore not appropriately
tailored. A party’s plans for expansion may be discoverable, see, e.g. Johnston

3 See e.g., document requests nos. 11 – 14, 25 – 31, 111, 116, and 119.
Cancellation No. 92058841
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Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675
(TTAB 1988); TBMP § 414(8), but the Board fails to see how the requests here,
asking for projected income, constitute that type of discovery. Without further
explanation of relevancy, these requests go beyond what is necessary to prove the
claims before the Board.
Many of Petitioner’s interrogatories improperly seek information related to
Respondent’s case in chief such as asking for citations to pertinent case law that
would support Respondent’s position, or on which Respondent intends to rely, and a
summarized analysis of the similarities and/or differences in the parties’ marks. It is
not the Respondent’s responsibility to provide Petitioner with the requested
information. Petitioner is responsible for formulating his own case and cannot
demand that Respondent prepare a comparison report, undertake legal research, or
disclose its legal strategies. It is Petitioner’s responsibility to prove his case. These
requests are improper and outside the scope of discovery.
With respect to identification of witnesses, although the identity of expert
witnesses is discoverable, Petitioner’s discovery requests seeking identification of all
witnesses Respondent may employ are premature and unnecessary particularly in
view of the Board’s disclosure requirements. Both parties are required to serve initial
disclosures identifying witnesses having discoverable information and to name the
witnesses expected to testify in pretrial disclosures. Trademark Rule 2.121(e), 37
CFR § 2.121(e). Additionally, each party is required to supplement its initial
disclosures, and additional witnesses may be identified during discovery. Trademark
Cancellation No. 92058841
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Rule 2.120(a)(2), 37 CFR § 2.120(a)(2); TBMP §§ 401.02 and 414(7). Likewise, many
of Petitioner’s requests for admission seek similarly irrelevant or improper
information as they are not tailored to the dispute in this cancellation proceeding.
See e.g., Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171 (TTAB 1975);
TBMP § 414.
III. ORDER
Taking into account the principles of proportionality, because of the sheer number
of discovery requests and because many of the requests are not appropriately tailored
to eliciting discoverable information, the Board is persuaded that a protective order
is warranted in this case. Cf. Phillies, 107 USPQ2d at 2149 (discussing principles of
proportionality with respect to requests for admissions where the number of pleaded
registrations was found to warrant the scope of discovery). In short, the large number
of discovery requests is unduly burdensome, harassing and oppressive when
considered in light of the issues raised by this proceeding.
In view thereof, Respondent’s motion for protective order is GRANTED.
Respondent is relieved from answering Petitioner’s May 22 and 23, 2014 discovery
requests. Therefore, with respect to Respondent’s request that Petitioner be limited
in its use of discovery requests, at least initially, in the number of discovery requests
served, the request is GRANTED as modified herein.
In an effort to curtail any further abuse of the discovery process, the Board finds
it appropriate to limit the overall number of discovery requests (total interrogatories
(including subparts), document requests and requests for admission) to be
Cancellation No. 92058841
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propounded by Petitioner to 150. As there is but one registration at issue in this
proceeding, discovery in excess of a total of 150 requests for admission, production of
documents and interrogatories,4 without prior Board review and approval, would
serve to further harass Respondent and would be unduly burdensome. If the Board
perceives any further uncooperative or harassing behavior from Petitioner, then
Petitioner may be ordered to show cause why entry of sanctions should not be
considered. Sanctions, if warranted, may include judgment against Petitioner. Cf.
Johnston Pump, 13 USPQ2d at 1721 n.4 and cases cited therein.
SCHEDULE
Proceedings herein are resumed. Remaining dates are reset as follows:
Initial Disclosures Due 1/30/2015
Expert Disclosures Due 5/30/2015
Discovery Closes 6/29/2015
Plaintiff's Pretrial Disclosures 8/13/2015
Plaintiff's 30-day Trial Period Ends 9/27/2015
Defendant's Pretrial Disclosures 10/12/2015
Defendant's 30-day Trial Period Ends 11/26/2015
Plaintiff's Rebuttal Disclosures 12/11/2015
Plaintiff's 15-day Rebuttal Period Ends 1/10/2016

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. See Trademark Rule 2.125, 37 C.F.R. § 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.

4 In addition, Petitioner shall not, in any event, exceed the limitation on the number of
interrogatories set forth in Trademark Rule 2.120(d)(1); 37 C.F.R. § 2.120(d)(1) (i.e.,
seventy-five, counting sub-parts).