*1 BARON PHILLIPPE DE ROTHSCHILD S.A.
v.
S. ROTHSCHILD & COMPANY, INC.
Opposition No. 79,773
June 25, 1990
Before Hohein
Member
G. Douglas Hohein
Administrative Trademark Judge
This case now comes up on applicant's contested motion, filed on May 22, 1990, for a protective order pursuant to Trademark Rule 2.120(d)(1). [FN1] Specifically, applicant requests a protective order with respect to opposer's second set of interrogatories on the basis that:
On May 16, 1989, the Opposer served in excess of 150 interrogatories, counting subparts. Applicant responded to Opposer's First Set of Interrogatories on December 8, 1989. On April 27, 1990, Opposer served a Second Set of Interrogatories on Applicant. Said Second Set of Interrogatories necessarily exceeds the 75 Interrogatories provided for in 37 C.F.R. § 2.120(d)(1) which provides that "the total number of written interrogatories which a party may serve upon another party pursuant to Rule 3 [3] of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed 75, counting subparts4)4B'D'D' Opposer having heretofore served in excess of 150 interrogatories cannot now serve additional interrogatories without leave of the Board.
Pursuant to 37 C.F.R. 2.120(d)(1) a copy of the Opposer's initial Set of Interrogatories are annexed as well as a copy of Opposer's Second Set of Interrogatories to which Applicant is objecting.
Opposer, in its response submitted on June 1, 1990, maintains that the motion for a protective order should be denied, arguing that:
As indicated in Applicant's Motion, Opposer's First Set of Interrogatories was served on May 16, 1989. This was prior to the effective date of the seventy-five Interrogatory Rule. Had applicant responded promptly thereto, a Second Set of Interrogatories could have been served without this issue ever being raised. However, applicant did not respond to Opposer's First Set of Interrogatories until more than six (6) months later, namely, December 8, 1989. Accordingly, applicant should not now be able to hide behind the new rule as a basis for not responding to Opposer's Second Set of Interrogatories which are basically three (3) Interrogatories which total twenty-one (21) if the sub-parts are included therein.
Separate and apart therefrom, opposer also contends that as follow-up to the information received in response to its initial set of interrogatories, its "Second Set of Interrogatories to Applicant which was combined with Opposer's Third Request for Production of Documents is narrowly circumscribed to the issue of whether and to what extent applicant uses ROTHSCHILD in block letters by itself without any other wording or design in conjunction therewith" and that:
In view of the fact that only twenty-one (21) Interrogatories - if sub-parts are included - have been served upon applicant directed toward a single issue after the new seventy-five (75) Interrogatory Rule has taken effect, and in view of the fact that these Interrogatories are narrowly circumscribed [ [ [,] are not meant for purposes of harassment and are directed toward an issue which is important to opposer in determining its further action herein, it is believed that the Motion for a Protective Order should be denied.
*2 Trademark Rule 2.120(d)(1), which became effective on November 16, 1989, provides that:
The total number of written interrogatories which a party may serve upon another party pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed seventy-five, counting subparts, except that the Trademark Trial and Appeal Board, in its discretion, may allow additional interrogatories upon motion therefor showing good cause, or upon stipulation of the parties. A motion for leave to serve additional interrogatories must be accompanied by a copy of the interrogatories, if any, which have already been served by the moving party, and by a copy of the interrogatories proposed to be served. If a party upon which interrogatories have been served believes that the number of interrogatories served exceeds the limitation specified in this paragraph, and is not willing to waive this basis for objection, the party shall, within the time for (and instead of) serving answers and objections to the interrogatories, file a motion for a protective order, accompanied by a copy of the interrogatories which together are said to exceed the limitation.
With respect to opposer's contention that delayed responses to its first set of interrogatories should not permit applicant to "hide behind the new rule," the Board in its notice of final rulemaking [FN2] stated as its policy in response to a comment that such rule should not be applied to pending cases that:
[I]t is believed that the better alternative is to make the new interrogatory rule applicable to all inter p artes proceedings pending before the Board on or after the effective date of the rule amendments. However, the new rule will apply only to interrogatories served on or after that date (although interrogatories served prior to that date will, of course, be counted in determining whether interrogatories served after the effective date violate the limitations specified in the new rule; that is, a party who has served 100 interrogatories prior to the effective date of the new rule is not given license by the new rule to serve another 75 after the effective date).
Thus, since long before receipt of responses to its initial set of interrogatories and more than two months before the effective date of the new rule, opposer has been on notice that the limitation imposed by the new rule would be applicable to this proceeding and that, in consequence thereof, any further interrogatories served by opposer on or after the effective date of the new rule would necessarily exceed the number of interrogatories allowed under such rule without prior leave of the Board. Opposer, when applicant failed to respond to opposer's first set of interrogatories in a timely manner, [FN3] could have promptly filed a motion to compel discovery instead of allowing applicant to take several more months to respond. Moreover, inasmuch as opposer failed to seek leave from the Board by motion before serving its second set of interrogatories, [FN4] opposer's remaining contention that good cause exists for permitting the service of otherwise excessive interrogatories is unavailing. [FN5]
*3 Applicant's motion for a protective order, being well taken, is accordingly granted. Trademark Rule 2.120(d)(1). In consequence thereof, it is hereby ordered that applicant is under no obligation to answer or object to opposer's second set of interrogatories. [FN6]
FN1. The consented motion, filed by applicant with a certificate of mailing dated May 24, 1990, for a sixty-day extension of the discovery and testimony periods is granted. Fed. R. Civ. P. 6(b). Trial dates, including the period for discovery, are accordingly rescheduled as set forth in the consented motion for an extension of time.
FN2. 54 Fed. Reg. 34893-94 (August 22, 1989) and 1106 TMOG 32 (September 12, 1989).
FN3. By a stipulated extension of time approved by the Board, opposer permitted applicant until August 21, 1989 to respond.
FN4. In light of the "proposed to be served" language in Trademark Rule 2.120(d)(1), any request for leave to serve additional interrogatories will generally be considered timely only if it is filed prior to the service of further interrogatories. That is, the new rule clearly contemplates that a motion for leave to serve additional interrogatories must be filed prior to the service of further interrogatories and not in response to a motion for a protective order. Consequently, if a party waits until after a motion for a protective order has been filed to assert that good cause exists for the service of additional interrogatories, such argument will not be entertained by the Board.
FN5. It is pointed out in any event that the good cause requirement of Trademark Rule 2.120(d)(1) must necessarily be interpreted in a restrictive manner in order to effectuate the new rule's purpose of curtailing the number of interrogatories permitted to be served in a proceeding. Consequently, good cause will generally be found only where a legitimate need for further discovery by means of interrogatories is shown. In the present case, the fact that the additional interrogatories served by opposer may be relevant and narrowly drawn to a single issue is insufficient, in and of itself, to demonstrate good cause.