Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 MISS AMERICA PAGEANT
PETITE PRODUCTIONS, INC.
Cancellation No. 17,975
August 14, 1990
Before Sams, Rice, and Simms
By the Board:
J.D. Sams, J.E. Rice, and R.L. Simms
Miss America Pageant has petitioned to cancel that registration on the ground that petitioner is the owner of an incontestable registration for the mark "MISS AMERICA" for, inter alia, "promotion of education through the granting of scholarships, the recipients being selected in local, state, and national contests, based on such factors as beauty, personality and talent"; and that registrant's mark so closely resembles petitioner's previously used and registered mark as to be likely to cause confusion, to cause mistake or to deceive.
This case now comes up on (1) petitioner's motion for a protective order under Trademark Rule 2.120(d)(1) relieving petitioner of the obligation of answering respondent's first set of interrogatories; (2) respondent's cross-motion for an order to compel petitioner to answer those interrogatories fully and without objection; and (3) petitioner's motion for an order to compel respondent to produce documents responsive to petitioner's Request for Production Nos. 8, 13 and 14, and for an order to compel respondent to inspect documents being produced by petitioner by a date certain.
Before addressing these motions individually, a brief review of the relevant procedural history is believed to be helpful at this time.
Petitioner, on January 11, 1990, served its first set of interrogatories and requests for production of documents on respondent. This set of discovery requests was composed of thirty-nine numbered interrogatories, plus subparts, and fourteen numbered requests for production of documents. Respondent, on January 15, 1990 served a substantially identical set of interrogatories on petitioner. On February 13, 1990, respondent answered petitioner's first set of interrogatories, without objection, and responded to the production requests. With respect to Request for Production Nos. 8 and 13, respondent stated that responsive documents and things would be made available for inspection and copying at a time agreeable to both parties and that documents responsive to Request No. 14 would be produced upon entry of an appropriate protective order. Thereafter, the parties commenced settlement negotiations. Sometime after these negotiations failed, respondent refused to produce the remaining documents, and also refused to inspect documents which had been made available by petitioner, until the Board had issued a ruling on petitioner's motion for a protective order.
We turn first to petitioner's motion for a protective order and respondent's cross-motion for an order to compel.
Petitioner, in support of its motion for a protective order, argues that the interrogatories served by respondent on January 15, 1990 substantially exceeded seventy-five and that petitioner is not willing to waive its basis for objection.
*2 Respondent, in its brief in opposition to the motion for a protective order and in support of its motion to compel, filed March 5, 1990, concedes that the set of interrogatories served exceeds the limitation of the rule. Nonetheless, respondent argues that the motion for a protective order is premature inasmuch as petitioner made no good faith effort to resolve the discovery dispute, although "the spirit of the rules require it"; and that petitioner waived its right to object to the interrogatories in question inasmuch as petitioner had served the virtually identical set of interrogatories on respondent.
Petitioner, in a brief in opposition to the motion to compel argues, inter alia, that the burdens imposed upon the parties by the interrogatories differ, inasmuch as respondent is required to review only two to three years worth of material whereas the discovery served on petitioner requires a review of almost seventy years of material.
Although the Board would encourage parties to attempt to resolve the issue of excessive interrogatories between themselves before applying to the Board for a protective order, there is no requirement in Rule 2.120(d)(1) that this be done. Thus, respondent's argument that petitioner's motion should be denied as premature in view of the failure of the petitioner to attempt to work out this issue, is without merit. Pyttronic Industries, Inc. v. Terk Technologies Corporation, Opp. No. 81,744, slip op., _____ USPQ2d _____ (TTAB May 29, 1990).
On the other hand, respondent's argument is well taken that petitioner is estopped to challenge as excessive in number respondent's interrogatories. Fed.R.Civ.P. 26(g) provides, in part, that the signature of an attorney or party to a request for discovery constitutes a certification that he has read the request and that to the best of his knowledge, information, and belief formed after a reasonable inquiry, the request is, inter alia, warranted, and not unreasonable or unduly burdensome or expensive. The rule also provides for the imposition of appropriate sanctions for a certification made in violation of the rule.
Because the signature of a party or its attorney to a request for discovery constitutes a certification by the party or its attorney that, inter alia, the request is warranted, consistent with the Federal Rules of Civil Procedure, and not unreasonable or unduly burdensome, a party ordinarily will not be heard to contend that a request for discovery is proper when propounded by the party itself but improper when propounded by its adversary. See, Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666 (TTAB 1986); Medtronic, Inc. v. Pacesetter Systems, Inc., supra; Tektronix, Inc. v. Tek Associates, Inc., 183 USPQ 623 (TTAB 1974); and Gastown Inc. of Delaware v. Gas City, Ltd., 180 USPQ 477 (TTAB 1974). A contention of this nature will be entertained only if it is supported by a persuasive showing of reasons why the discovery request is proper when propounded by one party but improper when propounded by another.
*3 In this case, petitioner served the identical set of interrogatories on respondent. Petitioner has not set forth any persuasive showing as to why the number of interrogatories was proper when served by it, but not its opponent. Accordingly, petitioner is deemed to have waived its right to refuse to answer those interrogatories on the basis of their number.
We are persuaded, however, that certain of the interrogatories were proper when served upon respondent but are unduly burdensome when served upon petitioner. In this regard, petitioner allegedly has conducted beauty pageants under the mark "Miss America" for over seventy years and certainly there can be no doubt that that mark has been in use for some time. On the other hand, respondent allegedly has used its mark for only two to three years. Consequently, in the absence of a convincing showing of a legitimate need for such information, interrogatories requesting, for example, that the answering party identify the date, geographical location, and contestant qualification requirements for each contest sponsored under the involved mark since the date of first use were proper when served upon respondent but are unduly burdensome when served upon petitioner. Accordingly, petitioner is required to answer these interrogatories, that is Interrogatory Nos. 6, 18, 22(b), (c), (d), (e), 23, 24, 26, 35(b) [and to the extent it relates thereto, 35(c) ] and 36(c) by providing the information requested solely for the date, or year, of first use, as appropriate, and for a period extending 10 years prior to the date of first use relied upon by respondent, in its answers to petitioner's interrogatories, to the present.
The situation presented in this case should be distinguished from a situation in which the propounding party serves an excessive set of interrogatories upon its opponent and the opponent, in turn, serves upon the propounding party a different set of interrogatories which also exceeds the limits of Trademark Rule 2.120(d)(1). In that case, the propounding party will not be estopped from objecting to its opponent's interrogatories on the ground that they exceed the 75 interrogatory limit. See, Brawn of California, Inc. v. Bonnie Sportswear, Ltd., Opp. No. 80,272, slip op., _______ USPQ2d ______ (TTAB June 6, 1990).
In view thereof, petitioner's motion for a protective order under Trademark Rule 2.120(d)(1) is denied and respondent's cross-motion for an order to compel under Trademark Rule 2.120(f [FN1] is granted. Petitioner is ordered to answer respondent's first set of interrogatories, without objection, except to the extent indicated in this order.
This brings us now to petitioner's motion, filed May 21, 1990, for an order to compel respondent to allow the inspection of the documents requested in Request for Production Nos. 8, 13 and 14. Petitioner also moves for an order that respondent be compelled to review, by June 7, 1990, petitioner's documents, which have been available for inspection and copying since March 7, 1990, or to forgo completely the right to review those documents. In support of its motion, petitioner asserts that respondent, incorrectly, believes that it is relieved of its duty to cooperate in discovery because unrelated discovery motions are pending before the Board.
*4 Respondent, in a timely brief filed in response thereto on June 11, 1990, asserts that while it is aware that a party ordinarily is not relieved of its duty to respond to and cooperate in discovery even though its adverse party has wrongfully refused to discharge its own obligations, this is an unusual situation inasmuch as petitioner has refused to provide any answers to respondent's interrogatories, despite the fact that respondent fully answered petitioner's interrogatories.
As the parties apparently are aware, the Board has taken the position that a party is not relieved of its discovery obligations in spite of the fact that its adverse party has wrongfully failed to fulfill its own obligations. That is, discovery before the Board is not governed by any concept of priority of discovery. See: Fed.R.Civ.P. 26(d) and Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626 (TTAB 1986). This is so even if the adverse party has failed to provide any response to discovery. Respondent has not demonstrated the existence of any fact that causes the Board to view that position as inapposite here. In this regard, the parties should note that the Board will, upon motion, reopen or extend discovery solely for the benefit of a party whose opponent, by wrongfully refusing to answer, or delaying its responses to, discovery, has unfairly deprived the propounding party of the right to take follow-up.
Accordingly, petitioner's motion for an order compelling respondent to produce the documents requested in Request for Production Nos. 8, 13 and 14 is granted. Respondent is ordered to produce the documents identified within thirty days of the mailing date of this order. A stipulated protective order covering the disclosure of confidential information shall be filed within thirty mailing days of the mailing date of this order. Respondent also is directed to review petitioner's documents at its offices within thirty days of the mailing date of this order.
Except to the extent indicated above, proceedings herein are otherwise suspended for thirty days from the mailing date of this order.
The stipulations, filed April 2, 1990, and April 30, 1990, are approved to the extent that the parties will be allowed thirty days to take follow-up discovery after compliance with the order set forth above. Because each party has already served, and has received or will receive answers to, more than 75 interrogatories, counting subparts, remaining discovery must take place by means other than interrogatories. Trademark Rule 2.120(d)(1).
Without further action from the Board, proceedings herein will resume following compliance with this order (that is, thirty days following the mailing date of this order) at which time the parties will become governed by the accompanying trial order.
In summary, petitioner's motion for a protective order under Trademark Rule 2.120(d)(1) is denied and respondent's cross-motion for an order to compel is granted. Petitioner's motion for an order to compel is granted, to the extent indicated in this order.
J. D. Sams
J. E. Rice
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. The Board notes that petitioner, in its brief in opposition to the motion to compel, argues that respondent's motion to compel must be denied inasmuch as respondent failed to make a good faith effort to resolve the discovery dispute, as is required by Trademark Rule 2.120(e). Petitioner's argument is not well-taken. Respondent's motion to compel is filed pursuant to Trademark Rule 2.120(f) which provides, "If the motion for a protective order is denied in whole or in part, the Board may, on such conditions ... as are just, order that any party may provide or permit discovery." Trademark Rule 2.120(f) does not require that a good faith effort be made before the Board may, under that rule, order a party to provide or permit discovery. In this regard, the parties should note that the Board does not encourage the filing of a motion to compel in response to a motion for a protective order, inasmuch as the Board will, of its own initiative, order a party to provide or to permit discovery, as appropriate, where a motion for a protective order is denied.
Carla C. Calcagno
*5 In accordance with the Trademark Rules of Practice, trial dates are set as indicated below. 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: (opening thirty days prior October 15,
Testimony period for party in position of plaintiff to close December 14,
(opening thirty days prior thereto) 1990
Testimony period for party in position of defendant to close February 12,
(opening thirty days prior thereto) 1991
Rebuttal testimony period to close (opening fifteen days prior March 29,
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.