MHW, Ltd. and Pepsico, Inc.

Trademark Trial and Appeal Board

Nov 29, 2000

No. 91093359 (T.T.A.B. Nov. 29, 2000)

THIS DISPOSITION IS
CITABLE AS
PRECEDENTOF THE
TTAB
11/29/00
EAD
Opposition No. 93,3591
MHW, Ltd. and PepsiCo,
Inc.
v.
Simex,
Aussenhandelsgesellschaf
t
Savelsberg KG
Before Seeherman, Walters, and Rogers, Administrative
Trademark Judges.
By the Board:
This case comes up on applicant’s motion, filed
March 6, 1997, for default judgment under Fed. R. Civ. P.
37(b), which we construe as a motion for sanctions under
Trademark Rule 2.120(g)(1). In addition to dismissal of

1 Both parties have submitted papers relevant only to this
proceeding which list the proceeding numbers for both Opposition
Nos. 93,359 and 98,232. As set forth in the Board’s February 2,
1997 order, the filing of an answer in Opposition No. 98,232 was
a prerequisite to consolidation. The Board has entered notice
of default against applicant in Opposition 98,232 because no
answer has been filed and thus no consolidation has taken place.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 93,9359
2
this opposition proceeding, applicant seeks entry of
judgment against opposers on applicant's counterclaim for
cancellation of Registration 860,268. The motion has
been fully briefed.
As a preliminary matter, the parties are advised
that the Board did not consider any papers filed after
applicant’s reply brief in reaching its decision herein.2
Such filings have long been disfavored. See Orion Group
Inc. v. The Orion Insurance Co. P.L.C., 12 USPQ2d 1923,
1924 (TTAB 1989).3
Turning to applicant’s motion for default judgment,
the record is clear, and the parties do not dispute, that
opposers’ discovery responses were due on or before March
4, 1997 and that opposers neither served applicant with
their discovery responses nor sought an extension on or
before March 4, 1997.

2 These papers comprise opposers’ April 28, 1997 motion to file
a sur-reply, applicant’s May 8, 1997 opposition to opposers’
motion to file a sur-reply, opposers’ May 15, 1997 reply to
applicant’s opposition, applicant’s May 20, 1997 response to the
reply (titled “concluding submission”), and opposers’ May 28,
1997 response to the response.
3 The Board notes that, subsequent to the filing of these
papers, the Trademark Rules of Practice were changed (effective
October 9, 1998) to codify the Board’s practice of refusing to
consider sur-replies, providing that while the Board may
exercise its discretion to consider a reply brief, “No further
papers in support of or in opposition to a motion will be
considered by the Board.” Trademark Rule 2.127(a). See, Notice
Opposition No. 93,9359
3
The record in this proceeding is equally clear that
this is not opposers’ first failure to provide timely
discovery responses to applicant’s first set of
interrogatories and first request for production of
documents. Applicant’s requests for discovery were
initially served on opposers on June 3, 1994. Responses
were not provided and the Board, on June 15, 1995,
ordered opposers to file discovery responses within
thirty days. On July 20, 1995, applicant agreed, in
writing, to a three-week extension of opposers’ time to
file discovery responses on the express condition “that
there shall be no further extensions of time to answer
these discovery requests.” Finally, the Board’s February
2, 1997 order required opposers to comply with the
Board’s June 15, 1995 order by providing to applicant
responses to the requested discovery within thirty days
of the date of the Board’s decision “regardless of any
motions that may be filed herein” and stating that
“opposers will be granted absolutely no further
extensions of time in which to provide their responses to

of Final Rulemaking, published in the Federal Register on
September 9, 1998 at 63 FR 48081, 48093.
Opposition No. 93,9359
4
the outstanding discovery requests, except with the
consent of applicant.”4
The record shows that opposers unsuccessfully sought
applicant’s consent to an enlargement of time on March 5,
1997, the day after the responses were due; that opposers
served applicant with responses to the first request for
production of documents on March 6, 1997; that opposers
served responses to applicant’s first set of
interrogatories on March 7, 1997; that opposers served
applicant with a “supplemental answer to certain
interrogatories” on April 1, 1997; and that opposers
served applicant with a “supplemental response” to
applicant’s request for production of documents and
things, also on April 1, 1997.
In support of its motion for default judgment,
applicant relies on the foregoing undisputed facts;
points out that opposers’ conduct involves not only
repeated failure by opposers to meet their discovery
obligations but also repeated failure to comply with
Board orders specifically directing opposers to respond

4 The Board’s last order in this proceeding also denied as moot
opposers’ motion to suspend this proceeding pending the outcome
of a German cancellation proceeding; and denied applicant’s
cross-motions for default judgment (on the basis that opposers
had failed to comply with the Board’s June 15, 1995 order
compelling opposers’ responses to applicant’s discovery
requests) and for summary judgment.
Opposition No. 93,9359
5
to applicant’s June 3, 1994 discovery requests; and
contends that opposers’ protestations of diligence are
belied by the vagueness of opposers’ reasons for serving
those responses late.
Further, applicant argues that opposers’ many
objections to providing the information sought by the
discovery requests, in combination with the contradictory
information supplied by the responses and the supplements
to responses, yield perfunctory discovery responses
“utterly lacking in content”.
Opposers argue that the motion for default judgment
should be denied because opposers were diligent in
complying with the Board’s order, because the untimely
service of discovery responses was “due to a delay in
receiving certain information from a third party
licensee, along with the logistics of obtaining final
review and signature from two outside parties and an
outside counsel”; because opposers attempted to obtain
applicant’s consent to an enlargement (albeit after the
responses were due); and because, failing to obtain
applicant’s consent to the enlargement, opposers were
only a few days late in serving applicant with opposers'
discovery responses.
Opposition No. 93,9359
6
The law is clear that if a party fails to comply
with an order of the Board relating to discovery,
including an order compelling discovery, the Board may
order appropriate sanctions as defined in Trademark Rule
2.120(g)(1) and Fed. R. Civ. P. 37(b)(2), including entry
of judgment. Baron Philippe de Rothschild S.A. v. Styl-
Rite Optical Mfg. Co., 55 USPQ2d 1848 (TTAB 2000); Unicut
Corp. v. Unicut, Inc., 222 USPQ 341 (TTAB 1984); and TBMP
Section 527.01.5 It is obvious from a review of the
record that opposers have been engaging for years in
delaying tactics, including the willful disregard of the
Board’s orders. Opposers’ protestations that their
attempts at compliance have been diligent are
unconvincing, and their reasons for delay are undermined
by their obvious failure to take any action within the
Board ordered periods for responding to applicant’s
discovery requests. We agree with applicant that the
responses and supplements to responses served on
applicant demonstrate opposers’ intent to continue to
delay this proceeding by setting up obstacles to
applicant’s receipt of clearly relevant information.

5 The Trademark Trial and Appeal Board Manual of Procedure
(TBMP) is available in printed form from the Superintendent of
Documents, in CD-ROM form from the PTO Office of Electronic
Opposition No. 93,9359
7
Accordingly, applicant’s motion for sanctions in the
nature of entry of judgment against opposers is granted
as to both the opposition and counterclaim; the
opposition is dismissed with prejudice; and Registration
860,268 will be cancelled in due course.
E. J. Seeherman
C. E. Walters
G. F. Rogers
Administrative Trademark
Judges,
Trademark Trial and Appeal
Board

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