The Philliesv.Philadelphia Consolidated Holding Corp.

Trademark Trial and Appeal Board

Aug 19, 2013

No. 91199364 (T.T.A.B. Aug. 19, 2013)

wbc Mailed: August 19, 2013

Opposition No. 91199364

The Phillies

v.

Philadelphia Consolidated
Holding Corp.

Wendy Boldt Cohen, Interlocutory Attorney:

This case comes up on The Phillies’ (“opposer”) motion for
protective order filed December 28, 2012 pursuant to Fed. R. Civ.
P. 26(c) seeking to protect opposer against having to respond to
all 507 of Philadelphia Consolidated Holding Corp.’s
(“applicant”) requests for admission served October 10, 2012.1
The motion has been fully briefed.
I. BACKGROUND
Applicant filed applications to register two composite word
and design marks, GREENPHLY2 and TEAMPHLY3, both for “insurance

1 The parties agree that the due date for opposer’s responses to the
October 10, 2012 requests for admission was extended to December 28,
2012.

2 Application Serial No. 85013899 filed April 14, 2010 alleging a date
of first use anywhere and in commerce of September 11, 2009 in Classes
36 and 41.

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. 91199364
2

and insurance services, namely, insurance underwriting services
in the fields of professional liability insurance, commercial
lines of insurance, directors and officers liability insurance,
errors and omissions insurance, specialty property and inland
marine insurance, automobile insurance, business and personal
property and casualty insurance; [c]haritable fundraising
services, namely, organizing and conducting events relating to
heath (sic), nutrition and the environment to raise money,” in
Class 36 and “organizing community sporting and cultural events
relating to health, nutrition and the environment; education
services, namely, classes, instructional courses, seminars,
workshops, lectures, tutoring and mentoring in the field of
health, nutrition and environmental issues,” in Class 41.
Opposer filed a notice of opposition alleging priority and
likelihood of confusion, based on ten previously used and
registered marks, six previously used and applied-for marks (all
of which matured into registrations during the pendency of this
proceeding), and additional marks for which it claims prior
common law rights. The notice of opposition, in relevant part,
includes the following allegations (emphasis added):
2. Since long prior to September 11, 2009,
Applicant’s claimed first use date for both marks,
Opposer, its predecessors, and their affiliated and

3 Application Serial No. 85013956 filed April 14, 2010 alleging a date
of first use anywhere and in commerce of September 11, 2009 in Classes
36 and 41.
Opposition No. 91199364
3

related entities, licensees and/or sponsors have used
the names or marks PHILLIES or PHILS, alone or with
other word, letter and/or design elements, in
connection with baseball games and exhibition services
and a wide variety of goods and services, including,
but not limited to insurance services; educational
services in the fields of health or the environment;
charitable services; promoting public awareness of
environmental issues; organizing community sporting
events; clothing; toys and sporting goods and the word
PHILLIE is used by fans, the press, media and public
to refer to and identify the Club’s individual
players, coaches and managers (collectively,
“Opposer’s PHILLIES Marks”).

...

4. Since long prior to September 11, 2009, Applicant’s
claimed first use date for both marks, Opposer, its
predecessors, and their affiliated and related
entities, licensees and/or sponsors have promoted and
advertised the sale and distribution of goods and
services bearing or offered in connection with
Opposer’s PHILLIES Marks, including, but not limited
to, baseball games and exhibition services and a wide
variety of goods and services, including, but not
limited to insurance services; educational services in
the fields of health or the environment; charitable
services; promoting public awareness of environmental
issues; organizing community sporting events;
clothing; toys and sporting goods and have offered
such goods and rendered such services in commerce.

...

6. Since long prior to September 11, 2009, Applicant’s
claimed first use date for both marks, Opposer, its
predecessors, and their affiliated and related
entities, licensees and/or sponsors have used designs
of the Liberty Bell, alone or with other word, letter
and/or design elements, including the following [ten]
distinctive designs [which include stylized
representations of the Liberty Bell] (collectively,
“Opposer’s Liberty Bell Design Marks”), in connection
with baseball games and exhibition services and a wide
variety of goods and services, including, but not
limited to insurance services; financial services;
Opposition No. 91199364
4

charitable services; educational services in the field
of health or the environment; organizing community
sporting events and clothing.

...

15. Applicant’s [involved marks] so resemble Opposer’s
PHILLIES Marks and Opposer’s Liberty Bell Design Marks
as to be likely, when used in connection with
Applicant’s services, to cause confusion, to cause
mistake, and to deceive the trade and public, who are
likely to believe that Applicant’s services have their
origin with Opposer and/or that such services are
approved, endorsed or sponsored by Opposer or
associated in some way with Opposer. Opposer would
thereby be injured by the granting to Applicant of
certificates of registration for Applicant’s TEAMPHLY
and Design Mark and Applicant’s GREENPHLY and Design
Mark.

During discovery, applicant served upon opposer a set of 507
requests for admission, as well as sets of interrogatories and
document requests. The requests for admission, as alleged by
both parties, comprise requests that opposer admit or deny
whether opposer is selling or licensing specific goods and
services under each of the pleaded marks. In lieu of responding
to the requests for admission, opposer filed a timely motion for
protective order in which it seeks relief from responding to the
requests for admission.
In support of its motion, opposer alleges that it is
“blatantly clear by the sheer number of requests that [a]pplicant
has failed to make any effort to seek only proper and relevant
discovery;” that information relating to the scope of opposer’s
use of its marks is “admittedly relevant” but cumulative of other
Opposition No. 91199364
5

discovery requests; that opposer would have to “comb through
potentially thousands of documents and . . . make innumerable
inquiries of its hundreds of licensees and/or sponsors;” that the
burden to opposer in time and expense would be “extensive” and
would outweigh any need of applicant for the information sought;
and that therefore, a protective order should be granted
protecting opposer from undue burden and expense and providing
that opposer need not respond to the requests for admission in
their current form.
Applicant alleges that its discovery is “proper and targeted
toward narrowing the issues in this case;” that there are over
fourteen different registrations at issue, each with a distinct
number of goods and services necessitating numerous requests for
admission; that whether the same matters are covered in other
discovery does not excuse opposer’s failure to answer the
requests for admission; and that therefore, opposer’s failure to
respond within the allotted timeframe should result in the
admissions being deemed admitted for summary judgment purposes.
II. DISCUSSION
Fed. R. Civ. P. 26(c)(1) requires that a party that moves
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
court action. Likewise, TBMP § 412.06 (3d ed. rev.2 2013)
Opposition No. 91199364
6

provides that “the parties should confer in good faith before
seeking Board intervention for a protective order.”
Opposer alleges that it attempted to resolve the dispute
over applicant’s requests for admission in an email and follow-up
conversation purportedly discussing options for resolution to the
dispute. Thereafter, opposer alleges that “inasmuch as
[a]pplicant’s counsel was unwilling to extend [o]pposer’s time to
respond to [a]pplicant’s discovery requests,” it advised
applicant it would have to seek a protective order if no
resolution regarding the dispute was reached. Opposer alleges
that having received no further response from applicant and no
resolution having been reached, the current motion was filed.
In view of the foregoing, the Board finds opposer made a
good faith effort to resolve the discovery dispute before seeking
Board intervention, pursuant to Fed. R. Civ. P. 26(c)(1) and as
discussed in TBMP § 412.06.
As noted, applicant asks that its requests for admission be
deemed admitted pursuant to Fed. R. Civ. P. 36(a)(3) as opposer
filed the present motion instead of answering the discovery
requests. TBMP § 407.03(b) states:
It is generally inappropriate for a party to respond
to requests for admission by filing a motion attacking
them, such as a motion to strike, a motion to
suppress, a motion for a protective order, etc.
Rather, the party ordinarily should respond by
answering those requests that it believes to be proper
Opposition No. 91199364
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and stating its reasons for objection to those that it
believes to be improper. (emphasis added).

However, as indicated by the highlighted language above, where
the responding party’s specific objection is to the burden and/or
expense created by having to respond to a very large number of
requests, this suggestion does not appear to apply nearly as
strongly as it does to objections solely directed to individual
requests. Both Fed. R. Civ. P. 26(c) and Trademark Rule 2.120(f)
expressly permit a party to file a motion for a protective order
limiting discovery where “justice requires to protect a party
from annoyance, embarrassment, oppression, undue burden or
expense.” See, e.g., FMR Corp. v. Alliant Partners, 51 USPQ2d
1759, 1761 (TTAB 1999); see also Fed. R. Civ. P. 36(a) Advisory
Committee notes (1970 amendment)(“requests to admit may be so
voluminous and so framed that the answering party finds the task
of identifying what is in dispute and what is not unduly
burdensome. If so, the responding party may obtain a protective
order under Rule 26(c).”); accord 7 James Wm. Moore, MOORE’S FED.
PRACTICE § 36.11[5][e](2012)(stating that filing a motion for a
protective order, in lieu of serving objections and waiting for
the requestor to file a motion to compel, may be more efficient
in some instances).

Opposition No. 91199364
8

Accordingly, applicant’s requests for admission shall not be
deemed automatically admitted solely because opposer moved for a
protective order instead of serving answers and/or objections.
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. In
serving requests for admission, a party asks its adversary to
stipulate to certain matters as a means of reducing issues for
trial. See TBMP § 407.02. Fed. R. Civ. P. 36(a) requires that
the answering party admit or deny the matter set forth in the
requests for admission, or detail the reasons why the party can
do neither. An admission in response to a request for admission
“conclusively establishe[s]” the matter that is the subject of
that request. Fed. R. Civ. P. 36(b). However, a denial in
response to a request for admission is merely a refusal to
stipulate to certain matter, thus leaving that matter to be
resolved on the merits. See Sinclair Oil Corp. v. Kendrick, 85
USPQ2d 1032, 1036 n.8 (TTAB 2007).
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
Opposition No. 91199364
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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.” FMR Corp. v. Alliant Partners, 51 USPQ2d at 1761; See
also, Micro Motion Inc. v. Kane Steel Co., 894 F.2d 1318, 13
USPQ2d 1696 (Fed. Cir. 1990), and authorities cited in TBMP §
402.02. 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. See, e.g., Dow Corning Corp.
v. The Doric Corp., 183 USPQ 377, 378 (TTAB 1974).
The movant for a protective order must establish good cause
for issuance of the order. Trademark Rule 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. v. Alliant Partners, 51 USPQ2d at 1761.
The movant must demonstrate that its ability to litigate will be
Opposition No. 91199364
10

prejudiced, not merely that the difficulty of managing the
litigation will increase. A. Hirsh, Inc. v. United States, 657
F. Supp. 1297, 1305 (C.I.T. 1987); TBMP § 412.06.
Depending on the nature of the motion, the Board may have to
determine whether there is a need for protection against a
particular request for admission due to its nature, or whether
the sheer volume of requests for admission renders them harassing
and oppressive. See, e.g., 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 parties are expected to take into account
the principles of proportionality with regard to requests for
admission 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 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); Cf. Frito-Lay
North 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).
Here, applicant’s requests for admission are neither
individually improper nor are they harassing or oppressive as a
whole. Opposer generally alleges it would be unduly burdened,
Opposition No. 91199364
11

“in both time and expense,” given the large number of requests
for admission. While the Board recognizes that having to respond
to hundreds of requests for admission may, in the abstract,
appear excessive and unduly burdensome, in this case opposer has
pleaded at least twenty-six marks, many of them cumulative and
repetitive, as bases for its Section 2(d) claim and applicant’s
requests for admission seek thirty-two admissions or denials for
each of only fourteen of opposer’s pleaded marks.4 Opposer chose
to draft its notice of opposition broadly, pleading ten (now
sixteen) registrations and at least ten common law marks for
which it claims use on or in connection with a broad variety of
goods and services. Language in the notice of opposition such as
“including, but not limited to,” or “wide variety of goods and
services,” and thereafter reciting a long list of goods and

4 The requests for admission are broken down as follows:
(1) request nos. 1-32 re: Registration No. 922084;
(2) request nos. 33-64 re: Registration No. 1517523;
(3) request nos. 65-96 re: Registration No. 1550914;
(4) request nos. 97-128 re: Registration No. 1604774;
(5a) request nos. 129-160 re: Registration No. 1660775;
(5b) request nos. 161-192 re: Registration No. 1660775;
(6) request nos. 193-224 re: Registration No. 1761475;
(7) request nos. 225-256 re: Registration No. 1786730;
(8) request nos. 257-288 re: Registration No. 1862960;
(9) request nos. 289-320 re: Registration No. 3747556;
(10) request nos. 321-352 re: Registration No. 4035158;
(11) request nos. 353-384 re: Registration No. 4120821;
(12) request nos. 385-416 re: Registration No. 4143913;
(13) request nos. 417-448 re: Registration No. 4143914; and
(14) requests nos. 449-480 re: Registration No. 4199377.
Requests for admission nos. 481-507 seek information, inter alia,
about use of PHIL, PHL, PHLY, PHILLIES, opposer’s marketing and
channels of trade, knowledge of certain of applicant’s other
registrations and instances of actual confusion.

Opposition No. 91199364
12

services, is vague and indefinite and does not provide fair
notice of the specific marks on which opposer is relying in
support of its Section 2(d) claim and/or the specific goods
and/or services upon which those marks are used.
Because opposer pleaded its Section 2(d) claim so broadly as
well as ownership of numerous used and registered marks, the
sheer number of requests (507) is not, in these circumstances,
per se oppressive and unduly burdensome. Had opposer narrowed
the scope of its Section 2(d) claim by pleading fewer, and only
the most relevant, marks and more clearly and specifically
identifying the goods and/or services relevant to this
proceeding, the scope of permissible discovery would have been
proportionately narrower as well.
While Fed. R. Civ. P. 26 allows the Board to limit discovery
if it determines that the discovery sought is obtainable from
other sources that are more convenient and less burdensome or
duplicative, as a general rule, parties are entitled to seek such
discovery as they may deem necessary to help them prepare for
trial. See FMR Corp. v. Alliant Partners, 51 USPQ2d at 1761; Dow
Corning Corp. v. The Doric Corp., 183 USPQ at 378. Although
there may exist other discovery methods available to obtain the
information sought in the requests for admission, opposer fails
to address how those other methods are more convenient or less
burdensome. Rather, opposer’s allegation of undue burden “in
Opposition No. 91199364
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both time and expense” is merely conclusory. See, e.g., McLeod,
Alexander, Powel & Apffel, P.C. v. Quarles, 894 F.2d 1482, 1485
(5th Cir. 1990) citing, Panola Land Buyers Ass’n v. Shuman, 762
F.2d 1550, 1559 (11th Cir. 1985).
The Board finds that, under the circumstances of this case,
applicant’s requests for admission are neither oppressive nor
unduly burdensome. Applicant seeks information about opposer’s
alleged use, and its requests for admission require opposer to
admit or deny that it uses its pleaded marks on or in connection
with specific pleaded goods and services. These requests are
relevant to opposer’s allegations and claims as pleaded, as
admitted by the parties, as they seek information about the scope
of use, relatedness of the parties’ goods and/or the basis for
potential counterclaims. See Johnson & Johnson v. Rexall Drug
Co., 186 USPQ 167, 171 (TTAB 1975).
As previously stated, the question of proportionality in
discovery disputes must be considered on a case by case basis,
and the Board is not persuaded that a protective order is
warranted in this case. The admittedly large number of requests
for admission is not per se unduly burdensome, harassing or
oppressive when considered in light of the pertinent facts.
Notwithstanding the foregoing, the Board notes that
applicant’s requests for admission contain some duplication or
some requests that are outside the scope of discovery. In
Opposition No. 91199364
14

particular, requests for admission nos. 161 – 192 are duplicative
of requests for admission nos. 129 – 160. Additionally, requests
for admission 321 – 384, seek information related to
Registrations Nos. 4120821 and 4035158. These registrations,
however, have not been pleaded by opposer and as such, are beyond
the scope of discovery.5
In view thereof, opposer’s motion for protective order is
DENIED with regard to request for admissions nos. 1-160 and 385-
507, but is GRANTED with regard to request for admissions nos.
161-192 and 321-384. Except as otherwise noted herein, opposer
is allowed until thirty days from the mailing date set forth in
this order to serve responses to applicant’s requests for
admission, failing which pursuant to Fed. R. Civ. P. 36(a), said
requests for admission will automatically be deemed admitted. In
addition, applicant may file a motion for sanctions pursuant to
Trademark Rule 2.120(g) for opposer’s failure to comply with a
Board order.
III. SCHEDULE

5 To the extent applicant seeks discovery in regard to opposer’s
unpleaded registrations because it seeks to determine whether there is
any basis for a counterclaim, this would be a permissive and not a
compulsory counterclaim. See TBMP § 313.05. Applicant is free to
conduct its own investigation to determine whether a permissive
counterclaim is warranted, but should avoid further complicating this
case by conducting the investigation through discovery in this case.

Opposition No. 91199364
15

Proceedings herein are resumed.6 Remaining dates are reset
as follows:
Discovery Closes 9/10/2013
Plaintiff's Pretrial Disclosures 10/25/2013
Plaintiff's 30-day Trial Period Ends 12/9/2013
Defendant's Pretrial Disclosures 12/24/2013
Defendant's 30-day Trial Period Ends 2/7/2014
Plaintiff's Rebuttal Disclosures 2/22/2014
Plaintiff's 15-day Rebuttal Period Ends 3/24/2014

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. See Trademark Rule 2.l25, 37 C.F.R. Section
2.125.
Briefs shall be filed in accordance with Trademark Rules
2.l28(a) and (b). An oral hearing will be set only upon request
filed as provided by Trademark Rule 2.l29.

6 Although proceedings herein were not suspended until after the close
of the discovery period, opposer’s motion was filed one day prior to
the closing date of the discovery period. While a party should not
presume that the Board will automatically reset discovery when it
determines a pending motion, the Board, in the exercise of its
discretion, will allow the parties a short period to complete
discovery. See TBMP § 502.04.