Recent Decisions by the Trademark Trial and Appeal Board

March 1, 2016 | Intellectual Property

Board Rejects Request For Reconsideration

By Order dated July 13, 2015, the Board denied a motion to dismiss filed by Knowluxe LLC (“Knowluxe”) seeking dismissal of a petition for cancellation on the grounds that the claims were implausible and that the rights asserted by Guess? IP Holder L.P. (“Guess”) conflicted with the: (1) doctrine of aesthetic functionality; and (2) prohibition against claims of trademark rights in gross.

Knowluxe requested reconsideration of the Board’s denial of their motion to dismiss claiming that there was “an incomplete legal basis for the Board’s Decision on the Motion.” Specifically, Knowluxe argued that the decision did not address their arguments regarding the doctrine of aesthetic functionality or the prohibition against trademark rights in gross.

After articulating the applicable rules regarding reconsideration, the Board observed that a motion to dismiss involves only one discrete issue – – the sufficiency of the pleading. In that connection, the Board concluded that the decision subject to reconsideration properly analyzed, and concluded, that Guess properly pled both its likelihood of confusion and dilution claims. The Board also concluded that Knowluxe’s other arguments address issues apart from the legal sufficiency of Guess’ claims and, thus, were superfluous. The Board concluded that these arguments “are in the nature of defenses, i.e., matters which are alleged to bar the relief requested by [Guess]…[and that Knowluxe]…will have an opportunity to assert any appropriate defense, develop he record, and argue the merits of its case…”.

Finally, the Board rejected Knowluxe’s attempt to analogize this matter to the decision by the Board at issue in Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 316, 217 USPQ 641 (Fed. Cir. 1983). In Selva, the Federal Circuit determined that the Board did not properly articulate the grounds for the dismissal of a petition. But here, unlike Selva, the Board concluded that it did address the substantive issue before it, that is, the sufficiency of the petition. According to the Board, what it did not address were issues that were unrelated to the substantive issue presented.

Guess? IP Holder L.P. v. Knowluxe LLC, Cancellation No. 92060707 (T.T.A.B. December 9, 2015) [precedential].

Motion For Protective Order Deemed Improper

The Board rejected efforts by a litigant to avoid responding to discovery requests by filing a motion for a protective order. The Opposer served the Applicant with a comprehensive set of initial written discovery demands, including interrogatories, documents demands, and requests for admission. After unsuccessfully attempting to secure an extension of time to respond to the demands, the Applicant, on the date that responses were due, filed a motion for a protective order.
The Board, however, held that the Applicant’s filing of a motion for a protective order instead of responding to the discovery demands was improper. The Board observed that the Applicant’s motion was in contravention of “the Board’s policy that filing for such relief is not an appropriate manner in which a party may object to discovery with which it has been served.”

With respect to the Applicant’s contention that the number of interrogatories was excessive, the Board, citing Rule 2.120(d)(1), concluded that the appropriate response was to serve a general objection to the number of interrogatories in lieu of responses and specific objections. According to the Board, this approach is consistent with the affirmative duty of the parties to cooperate in discovery.

In addition, the Board observed that it is improper to request the entry of a protective order simply to delay the service of discovery responses. The Board explained that the burden was on the Applicant to demonstrate why, specifically, the Opposer’s discovery requests warranted a protective order. To that end, the Board analyzed the discovery requests at issue and concluded that “[t]he information and documents requested are standard and typical for a proceeding involving the asserted grounds, are tailored to the claims and are framed to seek information that is clearly relevant.”

Going forward, the Board criticized not only the Applicant’s failure to cite to any supporting legal authority in its motion, but also the timing of the motion which was filed on the date that the Applicant’s discovery responses were due. In sum, the Board held that conduct of this nature “amounts to a unilaterally manufactured delay.”

Finally, citing its inherent authority to impose sanctions, the Board ordered the Applicant to show good cause why the Board should not sanction the Applicant by finding that: (1) the Applicant forfeited its ability to object to the discovery requests on the merits; and (2) the Opposer’s requests for admission are deemed admitted.

Emilio Pucci International BV v. Rani Sachdev, Opposition No. 91215100 (T.T.A.B. January 20, 2016) [precedential].

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