Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 JOHNSTON PUMP/GENERAL VALVE, INC.
CHROMALLOY AMERICAN CORPORATION
Opposition No. 76,991
September 28, 1989
By the Board:
J.E. Rice, L.E. Rooney and T.J. Quinn
This case now comes up on opposer's second motion to be relieved of admissions.
A partial procedural history of this case is set forth for background. Applicant served interrogatories on opposer on February 18, 1988. Interrogatory No. 3 asked if opposer uses any marks that include the letters GV in any form other than in the special form shown in opposer's pleaded Registration No. 785,042; to which opposer responded (on March 29, 1988) that it uses GV in plain type. A discovery deposition of Mr. Kenneth Clark, opposer's director of legal administration, was taken on June 16, 1988 during which he testified that he could find no use by opposer of the mark GV in plain type. Opposer withdrew all claims to use of the letters GV in plain type at that deposition. On June 24, 1988 (eight days after the deposition and five days before the close of discovery), applicant served requests for admission on opposer, No. 1 of which requested opposer to admit that it does not use GV in plain type as a trademark and that opposer has withdrawn such a claim. Opposer admitted request No. 1 as true, and served a supplemental response to interrogatory No. 3 stating that opposer's only use of the letters GV other than in the special form as registered is oral use. Applicant moved (on July 5, 1988) to compel the continuation of the discovery deposition of opposer, which motion was granted on November 17, 1988, involving, inter alia, opposer's improper instruction to the witness to not answer questions after objection. The deposition of Mr. Clark was continued on December 14, 1988 at which he testified that after asking and/or working with various people, including Richard Mytinger (opposer's vice president of marketing and service), they were unable to find any use by opposer of the letters GV in plain type. The discovery deposition of Mr. Mytinger was held on December 15, 1988. (Opposer had stated that Mr. Mytinger was unavailable in June 1988, due to illness.)
According to opposer, Mr. Mytinger reviewed the transcript of Mr. Clark's June 16, 1988 deposition "shortly before" his own deposition on December 15, 1988, and he remembered opposer had been using GV in plain type on seating slips for valves for four to five years; and that Mr. Mytinger reviewed engineering records, and found a photograph of such use. This information was given to opposer's counsel on the evening of December 14, 1988 and was presented to applicant's counsel at Mr. Mytinger's deposition on December 15, 1988. Before opposer's counsel allowed applicant's counsel to review the document(s), [FN1] opposer's counsel read into the record the list of documents. Applicant's counsel objected but nonetheless allowed their admission as he stated that was the only way he could obtain the documents from opposer's counsel.
*2 On January 17, 1989, opposer filed a motion to be relieved of its earlier admission that it did not use the mark GV in plain type. Said motion was denied by the Board on May 10, 1989 as opposer had not shown how the merits of the case would be subserved thereby as required by Fed.R.Civ.P. 36(b). [FN2] Opposer filed on June 12, 1989 its second motion to be relieved of its previous admission, which is now pending in this case.
In support of its motion, opposer argues that the issue in this case is likelihood of confusion between the parties' respective marks and, in determining that issue, the similarity or dissimilarity of the marks in sound, appearance, and connotation is evaluated; that opposer's use of its mark in plain block type is material to the issue of likelihood of confusion because such use impacts on the strength of opposer's rights to the mark GV and thus affects a determination of the similarity of the marks; and that the merits of the case will be subserved by granting opposer's motion.
Applicant argues that opposer has not met the standard set out in Fed.R.Civ.P. 36(b); that opposer has shown only that the merits of its own case may be improved if the admission is withdrawn but opposer has not shown how justice on the merits of the case will be so served; that relief under Rule 36(b) should be granted sparingly and only in exceptional circumstances; that applicant geared its investigative efforts to likelihood of confusion as between opposer's registered mark and applicant's mark; that it is inequitable to protect opposer to the harm of applicant; that if opposer has used the mark in plain type since 1964, it is questionable that only one employee would be aware of that fact and even that single employee previously told Mr. Clark that he could not find any use of the mark in plain type; that an employee of a customer of opposer [V.A. (Virgil) Harris, procurement manager, purchasing, for Shell Offshore, Inc.] submitted a declaration that he is familiar with opposer's products and has never seen the use of GV in plain type on opposer's products; that justice and Board precedent will not be served if opposer is allowed to be relieved of an admission after opposer made exhaustive research of its own files, answered interrogatories and document requests, and acknowledged admissions by opposer and its counsel; that if not for opposer's counsel's improper instructions to the discovery witness in June 1988, discovery would have terminated at that point without the continuation depositions ordered by the Board and held in December 1988; that allowance of the motion will not serve the merits of the case, but rather will only confuse, misdirect, and unnecessarily alter the issues in the case; that prejudice to applicant is well established, including a double set of discovery in order to properly prepare for testimony; and that the equities in this case weigh in applicant's favor. [FN3]
Fed.R.Civ.P. 36(b) provides, in relevant part, as follows:
*3 Any matter admitted under this rule is conclusively established unless the court on motion permits withdrawal or amendment of the admission. Subject to the provisions of rule 16 governing amendment of a pre-trial order, the court may permit withdrawal or amendment when the presentation of the merits of the action will be subserved thereby and the party who obtained the admission fails to satisfy the court that withdrawal or amendment will prejudice him in maintaining his action or defense on the merits.
The rule presents a two part test in order for a party to be relieved of an admission--(1) that the merits of the case will be subserved thereby, and (2) that the party who obtained the admission will not be prejudiced in maintaining his case.
Emphasized throughout the Federal Rules of Civil Procedure is the importance of resolving actions on the merits whenever possible. See, for example, Rules 1, 7, 8, 55, and the "notes of the advisory committee on rules" regarding Rule 36(b).
Opposer's use of the mark GV in plain type is clearly relevant to the issue of likelihood of confusion. Thus, the merits of the case would be subserved by allowing opposer to be relieved of its previous admission. We find that the first part of the test in Rule 36(b) is met, in that allowing opposer to be relieved of its previous admission will enhance development of the merits of the case. In reaching this conclusion, however, the Board makes no finding at this time as to the probative value of opposer's use of GV in plain type (if opposer is able to prove such use) as a factor in the likelihood of confusion analysis.
A closer question in this case is the question of prejudice to applicant. This case is in the pre-trial stage and if discovery is reopened for applicant, prejudice can be avoided or mitigated. [A more restrictive standard applies to relieving a party of an admission when the case is in the trial phase. See 999 v. C.I.T. Corp., 3 FR Serv 3d 923, 776 F.2d 866 (9th Cir.1985); and Duford v. Sears, Roebuck and Co., 9 FR Serv 3d 1175, 833 F.2d 407 (1st Cir.1987).]
In view of the foregoing, and since opposer has attempted to answer the discovery of applicant (albeit changing answers from March 1988, to June 1988, to December 1988), and has come forward prior to trial, the Board will grant the motion to be relieved of the admission and reopen limited discovery for applicant. [FN4]
Accordingly, opposer's second motion to be relieved of its admission No. 1 is granted, and the supplemental response to admission No. 1 (filed January 17, 1989) is accepted.
Discovery is reopened for applicant only and limited to the issue involved herein--namely, opposer's use of its mark GV in plain type.
Discovery and trial dates are reset as indicated in the accompanying trial order.
J. E. Rice
L. E. Rooney
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Although the record before the Board refers only to a single photograph, on page 64 of the Mytinger transcript there is a reference to "three or four manila folders before [opposer's counsel]" and applicant requested the opportunity to review the documents prior to opposer reading into the record a list of the documents.
FN2. The second part of the test under Fed.R.Civ.P. 36(b) to allow withdrawal of an admission requires that the party who obtained the admission fail to show that the withdrawal will prejudice said party. The Board also stated in the May 10, 1989 order that if opposer ultimately was successful in withdrawing its admission, discovery would be reopened for applicant only and limited to the issue of opposer's use of the mark GV in plain type.
FN3. Opposer filed a reply brief, which was not considered by the Board. The Board believed it had made clear its disfavor of reply briefs on motions in both the orders of November 17, 1988, (footnote 3 on page 2), and May 10, 1989 (page 4). In order to further clarify this matter, opposer is hereby prohibited in this case from filing any reply or surreply brief on any motion without first obtaining prior leave of the Board to do so. The presentation of one's arguments and authority should be presented thoroughly in the motion or the opposition brief thereto.
FN4. Opposer's counsel's behavior in the conduct of discovery in this case appears to the Board to have been uncooperative, and in some instances, improper, i.e., opposer acknowledged that it was "technically incorrect" at the deposition of Mr. Clark in June 1988 to object and instruct the witness not to answer the question, and discovery was only continued in this case due to opposer's counsel's conduct of that deposition (This is not to say that applicant's counsel has been without any fault, but the question at this time is prejudice to applicant.) The Board finds opposer's counsel's behavior in the conduct of discovery to be deliberately uncooperative and evasive causing lengthy delays in this case as well as causing excessive costs to both parties.
Opposer's counsel is warned that the Board will not tolerate any further "game playing" or evasiveness in discovery. If the Board perceives further such behavior by opposer's counsel, then sanctions in the form of precluding opposer from introducing evidence on certain issues (i.e. opposer's use of the mark in plain type) or, if warranted, judgment against opposer, will be considered by the Board. See Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955 (TTAB 1986); Unicut Corporation v. Unicut, Inc., 220 USPQ 1013 (TTAB 1983); and Unicut Corporation v. Unicut, Inc., 222 USPQ 341 (TTAB 1984). See also Cooper, The Application of Rule 11 Sanctions in Trademark Cases, 78 TMR 427 (1988). Opposer is hereby so warned and is ordered to cooperate in the effective and efficient completion of discovery in this case.
*4 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. Rule 2.125.
THE PERIOD FOR DISCOVERY TO CLOSE: (Limited) November 13,
Testimony period for party in position of plaintiff to close January 12,
(opening thirty days prior thereto) 1990
Testimony period for party in position of defendant to close March 13,
(opening thirty days prior thereto) 1990
Rebuttal testimony period to close (opening fifteen days prior April 27,
Briefs shall be filed in accordance with Rule 2.128(a) and (b).
An oral hearing will be set only upon request filed as provided by Rule 2.129.