Smith Mountain Lake Marine Volunteer Fire/Rescue Department, Inc.v.Sea Tow Services International, Inc.

Trademark Trial and Appeal Board

Sep 29, 2017

No. 92059856 (T.T.A.B. Sep. 29, 2017)

DUNN Mailed: September 29, 2017

Cancellation No. 92059856
Smith Mountain Lake Marine Volunteer
Fire/Rescue Department, Inc.

v.
Sea Tow Services International, Inc.

Before Richey, Deputy Chief Administrative Trademark Judge, Lykos, and Kuczma,
Administrative Trademark Judges.

By the Board:
This case comes up on Petitioner’s motion for judgment as a discovery sanction
under Trademark Rule 2.120(h)(1) and Fed. R. Civ. P. 37(b)(2). The motion is fully
briefed.
On September 8, 2009, Registration No. 3678375 issued on the Principal Register
pursuant to a claim of acquired distinctiveness under Trademark Act Section 2(f) for
a mark comprising the color yellow applied to the boat vessels used in performing
Respondent’s services “marine emergency and non-emergency transportation by
boats; diving and underwater salvage; marine salvage; vessel salvage; boat delivery,
namely, towing by boat; delivery of fuel and other supplies by boat” as shown below1:

1 The registration alleges September 1, 1983 as the date of first use anywhere and in
commerce; Section 8 declaration of continued use accepted on March 24, 2016. The
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 ORDER IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92059856

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On August 27, 2014, Petitioner, a volunteer marine fire and rescue service, filed a
petition to cancel Respondent’s registration on the grounds that the mark is
functional under Trademark Act Section 2(e)(5), and has not acquired distinctiveness
as a mark within the meaning of Section 2(f). In its answer, Respondent denied the
salient allegations and asserted various affirmative defenses.

CHRONOLOGY OF DISCOVERY DISPUTE

As necessary background to the discovery dispute, the Board notes that on October
9, 2008 Respondent submitted the affidavit of the late Joseph Frohnhoefer, founder,
chairman, and CEO, in support of its claim of acquired distinctiveness. The affidavit
avers, in part:
13. Sea Tow’s membership magazine LIFELINES has a circulation of nearly
175,000 which ranks among the largest publications in the marine industry.
Sea Tow’s Yellow Hull Service mark is featured throughout the publication
(Exhibit D).

The attached exhibit D comprises a website printout of a LIFELINES article titled
“The Sea Tow Story: From Inspiration to Industry” by Louisa Beckett which states:
In a far-sighted move, Joe and Georgia engaged a marketing firm that
recommended all Sea Tow licensees present a unified image to the public –
right down to the color of their boats. “They came up with the color strategy,”
Joe recalled. “I said, ‘I like yellow because it’s highly visible on the water.’”

description of the mark is as follows: “The mark consists of the color yellow applied to the
boat vessels used in performing the services.”
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On March 18, 2015, Petitioner served Respondent with discovery requests,
including the following interrogatories:
7. Identify all communications which officers, directors, employees and agents,
or any of them, of Respondent Sea Tow Services International, Inc. have made
among themselves, or others except your attorneys, which relate to the
visibility of the color yellow.

8. Identify all documents in your possession, custody or control which relate to
the visibility of the color yellow.

9. State the basis of your claim in your fifth affirmative defense that
Petitioner’s claims are barred by the doctrines of estoppel, waiver,
acquiescence and/or unclean hands.

and document requests:

1. All documents, including electronically stored information, which you have
identified in response to the foregoing Interrogatories.

2. All documents, including electronically stored information, to which you
have referred in responding to these Requests for Admission, Interrogatories,
and requests for the Production of Documents.

On July 1, 2015, following Respondent’s failure to respond to Petitioner’s motion
alleging that Respondent’s discovery responses largely comprised objections, and had
resulted in the production of no responsive documents, the Board issued an order
compelling Respondent to provide full responses to Petitioner’s discovery requests.
On February 8, 2016, following review of Respondent’s supplemented responses,
the Board found that Respondent did not provide full responses as ordered, but served
responses which were evasive and nonresponsive, and granted Petitioner’s motion for
discovery sanctions. The Board closed discovery for Respondent, barred Respondent
from seeking unconsented extensions of time, and ordered Respondent to serve a
privilege log, supplemental responses to Interrogatory Nos. 7-9 and Document
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Request Nos. 1-2 (set forth above), with those declarations and signatures required
by the federal rules, sworn and signed copies of its earlier responses to interrogatories
and document requests, and all responsive documents, labelled to indicate the
request to which the document is responsive.
On September 6, 2016, the Board issued a second order granting discovery
sanctions against Respondent. The Board noted that the compelled responses to both
Interrogatory Nos. 7 and 8 stated “Respondent remains unclear of the meaning of the
phrase ‘visibility of the color yellow’ which it interprets, in accordance with the
February 8, 2016 Order, to mean acquired distinctiveness” and, with respect to the
two document requests:
Documents responsive to this request are being produced herewith and in two
[categories] per the February 8, 2016 Order:

1. Acquired distinctiveness (Bates Nos. STSI-100001 - 101398).
2. Affirmative defenses (Bates Nos. STSI-101399 - 101487).

The Board found that Respondent did not identify communications or documents
regarding the visibility of the color yellow, did not state that it had no
communications or documents regarding the visibility of the color yellow, and made
clear that if the communication or document did not state the term “functional” in
relation to the visibility of the color yellow, it was not produced.
The Board found that identifying and producing only communications and
documents demonstrating that the color yellow had acquired distinctiveness as
Respondent’s mark, instead of all communications and documents which relate to the
visibility of the color yellow, was not a reasonable construction of the Board’s order.
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The Board barred Respondent from objecting to the discovery requests or producing
business records in lieu of interrogatory responses, and, for the third time, ordered
Respondent to produce full responses and documents in response to Interrogatories
7, 8, and 9, and Document Request Nos. 1 and 2 in the form described in the order,
and stated that if there was “any doubt as to whether the reference to the color yellow
in a communication or document relates to visibility”, Respondent must identify or
produce it.
Because it is pertinent to the instant motion, the Board sets forth the additional
discovery response requirements made as a sanction in the September 16, 2016 order
(emphasis added):
With respect to Interrogatory No. 7, Respondent must set forth the discovery
request, and then identify every communication relating to the visibility of the
color yellow made by or to any of the individuals listed in the interrogatory.
The identification of each communication must be in chronological order and
each communication must identify the date, the setting (staff meeting,
telephone call with paint supplier), and the participants, as well as the
substance of the communication. If a written communication has already been
produced, it must be identified by the date the communication took place, and
also the date it was produced and the Bates number appearing on the
document must be listed. If a responsive communication is listed on the
privilege log, it must be identified by date and number where it was identified
on the privilege log. If a communication has not already been produced, it
either must be produced as an attachment to the interrogatory response, or
must be listed in an amended version of the privilege log which is served with
these responses. To be clear, the response to this interrogatory must list ALL
responsive communications. If [Respondent] has any doubt as to whether the
reference to the color yellow in a communication relates to visibility,
[Respondent] must identify the communication.

With respect to Interrogatory No. 8, Respondent must set forth the discovery
request, and then identify every document relating to the visibility of the color
yellow. The identification must be in chronological order and if the document
has already been produced, it must be identified by the date it was produced,
and the Bates number appearing on the document must be listed. If a
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responsive document is listed on the privilege log, it must be identified by date
and number where it was identified on the privilege log. If a document has not
already been produced, it either must be produced as an attachment to the
interrogatory response, or must be listed in an amended version of the privilege
log which is served with these responses. To be clear, the response to this
interrogatory must list ALL responsive documents. If [Respondent] has any
doubt as to whether the reference to the color yellow in a document relates to
visibility, [Respondent] must identify the document.

With respect to Interrogatory 9, Respondent must set forth the discovery
request, and under sub-headings for each affirmative defense of estoppel,
waiver, acquiescence and unclean hands, separately state the basis for each
defense.

With respect to Document Request No. 1, Respondent must set forth the
discovery request, and list all responsive documents indicating a) the
interrogatory in which the document was identified, and b) whether it was
produced previously and if so, on what date and with what Bates number OR
that it is attached to Interrogatory No. 8 as ordered above, OR that it is listed
in the privilege log, and provide the privilege log number where the document
is described.

With respect to Document Request No. 2, Respondent must set forth the
discovery request, and list all responsive documents indicating a) the discovery
request which required reference to the document and b) whether it was
produced previously and if so, on what date and with what Bates number OR
that it is attached to Interrogatory No. 8 as ordered above, OR that it is listed
in the privilege log, and provide the privilege log number where the document
is described.

The Board stated that discovery would be extended for Petitioner only to make
sure Petitioner could conduct depositions after written discovery was complete.
On February 16, 2017, the Board denied Respondent’s request for reconsideration
of the September 16, 2016 order and Respondent’s motion for a protective order which
would allow less than full compliance with the Board’s order. The Board found that
its previous “order that Respondent should produce any document about which it held
any doubt is a direct result of Respondent’s unreasonable claim that it was unable to
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determine which documents and communications relate to the visibility of the color
yellow”, and further found:
In sum, even if a protective order was the appropriate means for seeking
revision of a Board discovery order (which it is not); and even if Respondent
had provided the required detailed showing of good cause for the order (which
Respondent did not); these considerations would be outweighed by the Board’s
need to craft a discovery sanction which results in Petitioner receiving relevant
discovery from a party that the Board previously has found to be both
uncooperative and unreasonable.

On March 20, 2017, Respondent served Petitioner with supplemental discovery
responses which referred to the attached separate spreadsheets – one titled “Privilege
Log Revised” (39 TTABVUE 20-23) and the other “Overall Excel Sheet” (39
TTABVUE 35-87). The privilege log lists email communications dated March 12, 2006
to October 5, 2011, and no documents. In six instances, attorney client privilege is
asserted for a communication between Respondent’s prior attorney and, among
others, third party witnesses, including Louisa Beckett, author of the article
Respondent submitted in support of its claim of acquired distinctiveness. Among the
responsive documents was an email chain dated April 1, 2015 to April 6, 2015 in
which a draft of an article about Respondent apparently was forwarded to
Respondent, who then responded with another draft and copied, among other people,
Louisa Beckett.2
On March 22, 2017, Petitioner sent Respondent an email pointing out that a
document which was listed on the spreadsheet had not been supplied. 43 TTABVUE

2 The email chain has been designated as confidential and will not be described in greater
detail.
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80-81. On March 31, 2017, Respondent sent Petitioner its “Overall Excel Sheet” and
attachments (39 TTABVUE 35-87).
On May 17, 2017, Respondent refused Petitioner’s request to supplement the
privilege log which listed no documents and no communications after October 5, 2011.
29 TTABVUE 25. On May 18, 2017, Petitioner again requested an update to the
privilege log. 29 TTABVUE 27. On May 22, 2017, Petitioner sent an email titled
“Updated Production” to all three attorneys for Respondent, in which Petitioner
asked for confirmation that the March 31, 2017 spreadsheet is “your current list of
documents produced” so that Petitioner could disregard the earlier version. Petitioner
also noted difficulties in locating documents based on the spreadsheet format, and
requested alternate organization, and that Respondent update the spreadsheet of
documents produced so that it is current. Petitioner requested that Respondent
provide the attachments to the email messages already produced in the document
production, and that Respondent abandon claims of privilege regarding Ms. Beckett
or any other third party witness. 29 TTABVUE 31-32. Respondent did not respond to
this request.
MOTION FOR JUDGMENT AS A DISCOVERY SANCTION
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(h)(1) and Fed. R. Civ. P.
37(b)(2), including entry of judgment. MHW Ltd. v. Simex Aussenhandelsgesellschaft
Savelsberg KG, 59 USPQ2d 1477, 1478 (TTAB 2000). “[T]he Board has the authority
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to control the disposition of cases, which necessarily includes the inherent power to
enter sanctions.” Patagonia, Inc. v. Azzolini, 109 USPQ2d 1859, 1861 n.8 (TTAB
2014) (citing Carrini Inc. v. Carla Carini S.R.L., 57 USPQ2d 1067, 1071 (TTAB
2000)). Although default judgment is a harsh remedy, it is justified where no less
drastic remedy would be effective and there is a strong showing of willful evasion.
Unicut Corp. v. Unicut, Inc., 222 USPQ 341, 344 (TTAB 1984).
Respondent plainly did not comply with the Board’s order requiring Respondent,
among other things, to set forth the two discovery requests, and then “identify every
communication [or document] relating to the visibility of the color yellow made by or
to any of the individuals listed in the interrogatory,” noting which communication [or
document] had been produced or was being produced with the response, and which
had been withheld and was described on the privilege log, and to do so within thirty
days. Instead, on March 20, 2017, Respondent provided supplemental discovery
responses which referred to the attached separate spreadsheets comprising a
privilege log limited as to both date and content, and a preliminary spreadsheet on
document production. Eleven days after the Board’s deadline, on March 31, 2017, at
Petitioner’s request, Respondent supplemented its spreadsheet on document
production.
Respondent’s failure to serve the discovery responses promptly and in the unified
form dictated by the Board is sufficient reason to grant Petitioner’s motion.3 The

3 Petitioner’s decisions not to raise the issue of the timeliness of Respondent’s production,
and to withdraw its argument that the document production was not organized as ordered,
do not dictate that the Board must disregard points of non-compliance when considering
sanctions.
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Board is justified in enforcing its procedures and deadlines. Hewlett-Packard Co. v.
Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991); PolyJohn
Enters. Corp. v. 1-800-Toilets Inc., 61 USPQ2d 1860, 1862 (TTAB 2002). In this case,
the Board issued more general orders which allowed some flexibility in compliance,
and Respondent failed to comply with those orders. As a direct result of Respondent’s
feigned confusion and foot-dragging over the production of clearly relevant
information, the Board issued an order with detailed instructions and a specific
deadline. This order plainly was designed to ensure that Petitioner, which has been
seeking this clearly relevant information since 2015, and which has been put to the
expense and delay of filing these multiple discovery motions, would have all
responsive information, in the easily understood form dictated by the Board, by
March 20, 2017. Yet Respondent did not comply.
It is not the case that some extraordinary event caused a brief delay before
Respondent complied by providing the required substantive response, albeit in the
form chosen by Respondent and not the Board, so that the defects in timing and form
could be overlooked. In fact, Respondent did not provide the required substantive
response, and has not produced or described in its privilege log all documents or
communications relating to the visibility of the color yellow.
In support of its contention that document production remains incomplete,
Petitioner points to the single document which Respondent produced regarding
Louisa Beckett, the author of the article in Respondent’s membership magazine
which mentions the visibility of the color yellow on Respondent’s boats, and which
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Respondent submitted in support of its October 9, 2008 claim of acquired
distinctiveness for the color yellow applied to Respondent’s boats. Petitioner notes
that the 2008 article written by Ms. Beckett for Respondent, and published in
Respondent’s membership magazine, and then submitted as evidence of acquired
distinctiveness, was not produced. In addition, no communications relating to the
article, either when first published or when selected as the evidence to be submitted
in support of the claim of acquired distinctiveness were produced, or described on the
privilege log.
Respondent does not address this argument with an unequivocal statement that
Respondent does not have a copy of the article, or any communications regarding this
article, or contend that the article was part of the subject registration file and did not
have to be produced.4 Instead, Respondent makes the argument that the issue
whether a third party witness such as Ms. Beckett has produced documents in
compliance with Petitioner’s subpoena deuces tecum must be left to the district court,
and that, with respect to the missing attachments to the one document relevant to
Ms. Brooks which Respondent did produce, Respondent is still “searching for” the
missing attachments, and will “update” if the attachments are located.

4 The Board’s February 8, 2016 order required Respondent to identify the name of the person
or persons knowledgeable about the evidence of acquired distinctiveness of the yellow hull
mark which was submitted to USPTO in 2008, and the Board’s September 6, 2016 order
extended discovery for Petitioner only to allow the deposition of a Fed. R. Civ. P. 30(b)(6)
witness after all written discovery responses had been produced. Because Respondent knew
the Beckett article was part of the evidence of acquired distinctiveness and would be needed
for depositions, the presence of the Beckett article in the registration file would not excuse a
failure to produce the article as ordered. In addition, any erroneous assumption regarding
the article would not account for a failure to disclose the communications surrounding the
article.
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Petitioner points out that Respondent’s reference to the request for documents
from third party witnesses is a red herring, and the issue is not obtaining documents
from a third party, but Respondent’s refusal to produce responsive documents more
than two years after the documents were first requested, and despite issuance of
multiple orders requiring production. Petitioner also notes that, as of the filing of the
reply brief, Respondent has not produced the attachments to the email already
produced, and contends that this is part and parcel with the lack of candor that
Respondent has exhibited throughout this proceeding.
In addition, Respondent admits non-compliance with respect to the Board’s order
requiring “every communication” and “every document” regarding the visibility of the
color yellow to be either produced or listed on the privilege log. Despite the Board’s
unequivocal order, Respondent has not listed on the privilege log every responsive
communication and document which Respondent failed to produce, but only those
which were subject to a privilege claim before institution of this proceeding.
Respondent contends that “the further requirement to complete a privilege log to list
and detail the nature of each individual document created after the commencement
of the proceedings essentially amounts to busy work, in light of the fact that such
privileged documents are presumably created for, and in anticipation of the instant
litigation, and thus not subject to production.” 43 TTABVUE 90.
What Respondent regards as “busy work,” the Board regards as the necessary
protection of Petitioner’s right to assess claims of privilege by an adverse party
already the subject of multiple sanctions for failing to produce information. The
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federal rules impose requirements on a party which “withholds information otherwise
discoverable by claiming that the information is privileged or subject to protection as
trial-preparation material.” Fed. R. Civ. P. 26(b)(5)(A). The purpose of these
requirements, which were to be met in this proceeding by service of Respondent’s
privilege log as ordered by the Board, are to “enable other parties to assess the claim.”
Id. Accord ClearValue Inc. v. Pearl River Polymers Inc., 560 F.3d 1291, 90 USPQ2d
1358, 1363-1364 (Fed. Cir. 2009) (“The conclusion the court drew from this email was
that Waggett understood the nature of the work product privilege doctrine but chose
to willfully conceal the Lark and Texas Oil test results. As a result of these findings,
the district court concluded that the failure to produce the Lark and Texas Oil test
results was ‘an ongoing act of willful concealment,’ sanctionable under Fed. R. Civ. P.
26 and 37 and the court's inherent powers.”).
The Board agrees with Respondent, that the Board, like the courts, has the
discretion to limit the burden of preparing a Rule 26(b)(5) privilege log.5 However, to
the extent that each case cited by Respondent acknowledges that a privilege log may
be limited to privilege claims which arose before the litigation, the courts make clear
that it is not an absolute rule, and that comprehensive privilege logs may be

5 “Because it is impossible to set out in a rule all the circumstances that may require
limitations on discovery or the kinds of limitations that may be needed, the rules, instead,
‘permit the broadest scope of discovery and leave it to the enlightened discretion of the …
court to decide what restrictions may be necessary in a particular case’.” Pioneer Kabushiki
Kaisha dba Pioneer Corp. v. Hitachi High Technologies Am., Inc., 74 USPQ2d 1672, 1674
(TTAB 2005) (quoting Wright & Miller, 8 FED. PRAC. & PROC. CIV.2d § 2036 (1990)).
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appropriate.6 See Benson v. Rosenthal, Civil Action No. 15-782 (E.D. LA March 16,
2016) (“It is entirely conceivable that correspondence or other items responsive to
defendant's requests that are only arguably privileged or work product could have
been generated or sent after the lawsuit was filed.”); U.S. v. Bouchard
Transportation, No. 08CV4490 (NGG) (ALC) (E.D. NY April 14, 2010) (“Without an
exhaustive privilege log, Plaintiff would be unable to specifically identify all
documents to which it believes it is entitled.”); Ryan Inv. Corp. v. Pedregal De Cabo
San Lucas, No. C 06-3219 JW (RS) (N.D. Cal. Dec. 18, 2009) (“Plaintiff’s motion to
compel is therefore denied to the extent it seeks to require a log of post-litigation
counsel communications and work product, but is granted to the extent that any other
materials withheld on privilege grounds must be accounted for on a privilege log.”).
Moreover, unlike the present case, in none of the cases cited by Respondent had the
court issued a series of discovery orders finding the withholding party to be evasive,
uncooperative, and unreasonable.7

6 The Board also notes that the cases cited by Respondent are unpublished interlocutory
decisions, and would not be binding on the Board. See Trademark Trial and Appeal Board
Manual of Procedure (“TBMP”) § 101.03 (June 2017).
7 In the Board’s first sanction order issued February 8, 2016, the Board found that
Respondent demonstrated a “consistent lack of cooperation in discovery”, and found its
responses to discovery requests to be “evasive and nonresponsive.” In the Board’s second
sanction order issued September 6, 2016, the Board found that Respondent’s limited
compliance was not a reasonable construction of the Board’s order and advised Respondent
that “[w]ith the issuance of the Board’s order, Respondent became obligated to provide the
compelled information, whether or not it was easy or convenient for it to do so.” Finally, in
its February 16, 2017 order denying Respondent’s request for reconsideration of the
September 6, 2016 order, the Board noted that Respondent obtained a registration for the
color yellow, and that its objections that Respondent could not understand “what Petitioner
is actually seeking here” with its requests for documents and communications relating to the
visibility of the color yellow had been previously addressed, found without merit, and would
not be revisited.
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The Board agrees with Petitioner that Respondent’s failure to provide a complete
privilege log casts serious doubt on Respondent’s compliance with the Board’s order.
In addition to the unexplained lacuna in document production, and Respondent’s
equivocation on whether its document search is complete, Petitioner contends, and
the privilege log confirms, that Respondent has designated no responsive documents
as privileged, and no email communications after October 5, 2011. In other words,
once the registration was challenged, Respondent withheld responsive
communications and documents regarding the visibility of the color yellow and failed
to list them on a privilege log, precluding Petitioner from any opportunity to challenge
Respondent’s decision to withhold those communications and documents, and
Respondent continued to do so after issuance of the Board’s sanction order flatly
informing Respondent that it was required to list all responsive communications and
documents.
DECISION
After careful consideration of the parties’ arguments, Respondent’s inadequate
explanation, or in some cases omitted explanation, and the lack of legal support for
the explanation offered for its failure to comply with the Board’s prior sanctions, we
find that Respondent failed to comply with the order compelling responses to
interrogatories and document requests, and has failed to describe those documents
withheld on the grounds of privilege in a privilege log as ordered. As a result it is
clear that the multiple lesser sanctions already imposed upon Respondent have had
little effect, and there is no prospect of future compliance. Any sanction short of
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judgment would be futile and unfair to Petitioner. See Benedict v. Super Bakery Inc.,
665 F.3d 1263, 101 USPQ2d 1089, 1093 (Fed. Cir. 2011) (“The remedy of default
judgment was within the Board’s discretion in view of Mr. Benedict’s repeated
failures to comply with established and reasonable procedures orders.”); Patagonia,
Inc., 109 USPQ2d at 1862 (“[G]iven the continuing nature of respondent’s violations
despite multiple prior admonitions from the Board, we conclude that any sanction
short of judgment would be futile and unfair to petitioner, which brought this case
well over a year ago and has been unable, despite diligent efforts, to move it forward,
due to respondent's intransigence.”); MySpace Inc. v. Mitchell, 91 USPQ2d 1060,
1061-62 (TTAB 2009) (“In view of our previous warning that we would enter judgment
unless he complied with our order and his continued blatant non-compliance, the
sanction of entry of judgment is now warranted.”).
In view thereof, the motion for entry of sanctions under Trademark Rule
2.120(h)(1) is granted. The petition to cancel is granted, judgment is hereby entered
against Respondent, and Registration No. 3678375 will be cancelled in due course.