Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ORION GROUP, INC.
THE ORION INSURANCE COMPANY P.L.C.
Opposition No. 79,009
June 29, 1989
J.D. Sams, J.E. Rice and R.L. Simms
During the discovery period as last reset (to close on April 4, 1989), applicant (a corporation of England) filed (on February 17, 1989) a motion for summary judgment, supported by the affidavit of Ronald W. Wright, applicant's secretary. In an order dated February 17, 1989, the Board suspended proceedings pending disposition of applicant's motion.
Turning first to opposer's motion under Fed.R.Civ.P. 56(f), opposer contends that discovery opened in January 1989 [FN1] and the parties began settlement discussions; that opposer has served interrogatories [FN2] on applicant and has noticed the deposition of Mr. Ronald Wright; [FN3] that opposer informally requested but never received information as to applicant's use of its mark on its services; that applicant's entire support for its summary judgment motion is the affidavit of Mr. Wright, which affidavit is "artfully drafted" regarding (i) applicant's use of its mark in England or the United States, (ii) applicant's broadly defined services ("insurance underwriting services"), and (iii) the more specifically defined services in the affidavit ("reinsurance and surplus lines insurance"); that the material issues involved herein (i.e., the "highly specialized services" of applicant, the multiple channels of distribution, and the myriad state and federal regulations which must be complied with prior to commencing an insurance business in the United States) are complex; and that opposer needs to obtain discovery in order to effectively defend against the summary judgment motion. Opposer's motion is supported by the declarations of Mary Rossman, one of opposer's attorneys, regarding, essentially, the complexity of the issues; and Francis J. Kelly, Jr., opposer's vice president, regarding, essentially, the nature of the insurance business.
Applicant contends that opposer has not shown why it cannot present an opposition to the motion for summary judgment; that opposer describes and argues legal issues, not factual issues; that opposer has not addressed the issues raised by applicant's motion--specifically opposer's (alleged) lack of standing based on applicant's prior use, and opposer's lack of grounds to oppose; and that opposer has not demonstrated what facts are sought and how they are reasonably expected to create a genuine issue of material fact. Opposer filed a reply brief, and applicant filed a sur-reply, both practices disfavored by the Board.
Fed.R.Civ.P. 56(f) provides, in part, that the court may order a continuance to permit discovery to be taken for a party opposing a summary judgment motion. That is, the party against whom summary judgment is sought may be permitted to take discovery if same is necessary to enable him to respond to the motion. See Schoenbaum v. Firstbrook, 12 FR Serv.2d 1233 (2d Cir.1968); Texas Partners v. Conrock Co., 34 FR Serv.2d 1218 (9th Cir.1982); and Southwire Co. v. Essex Group, Inc., 37 FR Serv.2d 313 (ND Ill.1983). Also, it is well settled that the granting of a motion for summary judgment is inappropriate where the responding party has been denied discovery needed to enable it to respond to the motion. Dunkin' Donuts of America, Inc. v. Metallurgical Exoproducts Corp., 6 USPQ2d 1026 (Fed.Cir 1988).
*2 In the instant case applicant seeks summary judgment, based on a single affidavit, that of Ronald Wright, on the asserted grounds that opposer has shown no standing; and that opposer has no proper grounds for opposition (either priority and likelihood of confusion or "overbreadth" of applicant's identification of services). Opposer's motion to obtain discovery in order to respond to the summary judgment motion is well taken. Opposer has set forth specific issues of fact [FN4] on which it asserts it needs information which is in applicant's control, such as facts relating to applicant's use of its mark in the United States, the specific services offered by applicant in the United States under this mark, and applicant's compliance with the laws and regulations governing the insurance industry in the United States. These types of factual issues are central issues in this opposition proceeding, and opposer is entitled to discovery thereon prior to responding to applicant's motion for summary judgment.
Opposer's motion to compel discovery under Fed.R.Civ.P. 56(f) is granted.
Turning now to opposer's motion to take the deposition of Ronald W. Wright by oral examination, opposer argues that "good cause" pursuant to Trademark Rule 2.120(c)(1) has been shown to take Mr. Wright's oral deposition in that (i) his affidavit forms the entire basis of applicant's motion for summary judgment, (ii) his affidavit raises questions which are solely in applicant's (and Mr. Wright's) control, (iii) the factual and legal issues involved herein are "unusually complex and depend on a myriad of factors"; and that although Mr. Wright is located in England, the deposition must be taken orally or there will be serious prejudice to opposer, while there is a relatively minor inconvenience to applicant's attorneys (located in New York City) in attending a deposition in England.
Applicant contends that opposer has not established a need for any discovery and therefore cannot be granted this specific additional request.
Prior to a June 1983 rule change, Trademark Rule 2.120 provided for oral examination of foreign parties only as provided in Trademark Rule 2.124, i.e. by deposition upon written questions, unless the parties stipulated otherwise. [FN5] However, by amendment to the rules effective June 22, 1983 (published in the Federal Register on May 23, 1983 at 48 FR 23122), Trademark Rule 2.120 was revised to provide, in paragraph (c)(1) thereof, as follows:
(c) Discovery deposition in foreign countries. (1) The discovery deposition of a natural person residing in a foreign country who is a party or who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, shall, if taken in a foreign country, be taken in the manner prescribed by § 2.124 unless the Trademark Trial and Appeal Board, upon motion for good cause, orders or the parties stipulate, that the deposition be taken by oral examination.
*3 See Simms, Compelling the Attendance of a Witness in Proceedings Before the Board, 75 TMR 296 (1985).
What constitutes good cause for a motion to take a discovery deposition orally must be determined on a case-by-case basis, upon consideration of the particular facts and circumstances in each situation. Cf. Feed Flavors Incorporated v. Kemin Industries, Inc., 209 USPQ 589 (TTAB 1980). In determining such a motion, the Board weighs the equities, including the advantages of an oral deposition and any financial hardship that the party to be deposed might suffer if the deposition were taken orally in the foreign country, and orders that the deposition be taken orally in appropriate cases. Cf. Rice, Recent Changes in the TTAB Discovery Rules, 74 TMR 449, at 450 (1984).
In this case, applicant (a foreign entity) seeks to register a mark in the United States, which right opposer has challenged. Applicant now seeks summary judgment as a matter of law based on the affidavit of one person, applicant's corporate secretary (located in England). Applicant, in effect, is requesting judgment in its favor without a trial and without allowing opposer an opportunity to obtain discovery on the issues involved in this case. That is, the central issues involved in this case are currently before the Board due to applicant's summary judgment motion; and opposer has argued successfully that it needs information on facts within applicant's control (regarding, inter alia, applicant's use of its mark) in order to respond to that summary judgment motion. Regarding the technicalities of an oral deposition in England, applicant's counsel is located in New York City, and opposer's counsel is located in San Francisco. Applicant's attorneys would presumably encounter less expense and time involved in traveling to England for a deposition than would opposer's attorneys. Moreover, the cost of a round-trip flight from New York to England is currently not that much greater than many round-trip flights within the United States. Finally, the taking of the oral deposition of Mr. Wright would not involve problems of translating to and from a foreign language.
It would be unjust in these circumstances to deprive opposer of the opportunity of obtaining discovery and specifically of confronting and examining the witness by oral examination. See Societe Nationale Industrielle Aerospatiale, et al. v. U.S. District Court for the Southern District of Iowa, 107 U.S. 2542 (1987).
The Board believes that the factors discussed above constitute good cause, and opposer's motion to take the oral deposition of Ronald W. Wright is granted.
The parties are allowed until July 31, 1989 in which to notice, schedule, and complete the oral discovery deposition of Mr. Wright on the matters relevant to applicant's motion for summary judgment. Further applicant is allowed until July 17, 1989 in which to respond to opposer's interrogatories which pertain to matters relevant to applicant's motion for summary judgment.
*4 Opposer is then allowed until August 21, 1989 in which to file a response on the merits to applicant's motion for summary judgment. [FN6]
Proceedings herein remain otherwise suspended pending a decision on the motion for summary judgment.
J. D. Sams
J. E. Rice
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Actually, discovery opened for plaintiff on October 17, 1988 when notice of this proceeding was sent to defendant, and it opened for defendant on September 27, 1988 when plaintiff commenced this proceeding by filing its notice of opposition. See Fed.R.Civ.P. 33(a) and 34(b).
FN2. Opposer, in its reply brief on the discovery motions, indicates that a copy of the interrogatories was filed with the Board. There is no copy of the interrogatories of record herein.
Additionally, the Board notes that technically opposer's serving of the notice of deposition and the interrogatories on applicant on March 7, 1989 after proceedings had been suspended by the Board was improper. Since proceedings had been suspended by the Board, further discovery activity was improper unless and until allowed by the Board.
FN4. Opposer's argument regarding the applicability of Section 18 of the Trademark Act of 1946, as amended by the Trademark Law Revision Act of 1988 (effective November 16, 1989), is, as argued by applicant, a matter of law not fact, and further it is irrelevant to the present Fed.R.Civ.P. 56(f) motion.
FN5. Prior to the 1983 change, Trademark Rule 2.120(a)(2) read as follows:
(2) Discovery of foreign party. The discovery deposition of a party or an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or 31(a) of the Federal Rules of Procedure to testify on behalf of a party, domiciled in a foreign may be taken in the manner prescribed by § 2.124.