TTAB Limits Number of Discovery Requests | Practical Law

TTAB Limits Number of Discovery Requests | Practical Law

In a precedential decision, the US Trademark Trial and Appeal Board (TTAB) in Joshua Domond v. 37.37, Inc., ruled that Domond's over 2,000 discovery requests were unduly burdensome, harassing and oppressive in light of the one trademark registration at issue in the proceeding. The TTAB granted 37.37, Inc.'s motion for a protective order shielding it from responding to Domond's discovery requests and limiting the total number of requests Domond can serve.

TTAB Limits Number of Discovery Requests

Practical Law Legal Update 6-594-9471 (Approx. 3 pages)

TTAB Limits Number of Discovery Requests

by Practical Law Intellectual Property & Technology
Published on 07 Jan 2015 • USA (National/Federal)
In a precedential decision, the US Trademark Trial and Appeal Board (TTAB) in Joshua Domond v. 37.37, Inc., ruled that Domond's over 2,000 discovery requests were unduly burdensome, harassing and oppressive in light of the one trademark registration at issue in the proceeding. The TTAB granted 37.37, Inc.'s motion for a protective order shielding it from responding to Domond's discovery requests and limiting the total number of requests Domond can serve.
On January 2, 2015, the US Trademark Trial and Appeal Board (TTAB) issued a precedential decision in Joshua Domond v. 37.37, Inc., granting 37.37, Inc.'s motion for a protective order shielding it from responding to Domond's discovery requests and limiting the total number of requests Domond can serve in the proceeding (Cancellation No. 92058841 (TTAB, Jan. 2, 2015)).
Domond petitioned to cancel 37.37, Inc.'s trademark registration for the stylized mark BEAUTIFUL PEOPLE. In the first two days of discovery, Domond served 37.37, Inc. with:
  • 872 Requests for Admission.
  • 247 Document Requests.
  • 26 Interrogatories.
In response, 37.37, Inc. moved for a protective order.
Under FRCP 26(b)(2), which governs discovery in TTAB proceedings, parties may obtain discovery regarding any nonprivileged matter relevant to any party's claim or defense. The TTAB has discretion to manage the discovery process and can limit discovery when it is unreasonably cumulative or duplicative, or can be obtained from another source that is more convenient, less burdensome or less expensive.
In its decision, the TTAB reiterated that parties are expected to cooperate with one another during the discovery process and comply with principles of proportionality with regard to the volume of discovery requests.
The TTAB found that:
  • Domond's discovery requests were excessive, unduly burdensome and harassing in number and content in light of the single trademark registration at issue.
  • Many of Domond's requests greatly exceeded what would constitute proper discovery and were not tailored to the issues in the case. Specifically, the TTAB pointed to discovery requests seeking all documents from the last 17 years and stated:
    • requests for all documents from an extended period of time were unduly burdensome;
    • under TTAB practice, it is appropriate to ask only for a representative sampling in these cases; and
    • properly tailored requests must seek documents only from the relevant time period and only those that further the claims before the TTAB.
  • Domond's request seeking identification of all witnesses was premature and unnecessary in light of the TTAB's initial disclosure rules.
The TTAB granted 37.37, Inc.'s motion for a protective order, specifically:
  • Relieving 37.37, Inc. from having to respond to Domond's discovery requests.
  • Limiting Domond to a total of 150 overall discovery requests (including requests for admission, document requests and interrogatories).
The TTAB also threatened Domond with sanctions and warned that, without prior TTAB approval, any discovery requests beyond the imposed limit would be harassing and unduly burdensome.
For a discussion of a TTAB decision considering similar issues but denying a motion for a protective order, see Legal Update, TTAB Punches Out The Phillies' Bid to Avoid Answering Hundreds of Admission Requests.