Enter to open, tab to navigate, enter to select
TTAB Punches Out The Phillies' Bid to Avoid Answering Hundreds of Admission Requests
Practical Law Legal Update 3-538-9305 (Approx. 3 pages)
TTAB Punches Out The Phillies' Bid to Avoid Answering Hundreds of Admission Requests
by Practical Law Intellectual Property & Technology
| Published on 23 Aug 2013 • USA (National/Federal) |
In The Phillies v. Philadelphia Consolidated Holding Corp., the USPTO Trademark Trial and Appeal Board (TTAB) denied The Phillies' motion for a protective order seeking to protect it from answering 507 requests for admission because it determined that the requests were not per se oppressive and unduly burdensome.
On August 19, 2013, the USPTO Trademark Trial and Appeal Board (TTAB) issued a precedential opinion in The Phillies v. Philadelphia Consolidated Holding Corp., denying The Phillies' motion for a protective order protecting it from answering Philadelphia Consolidated Holding Corp.'s 507 requests for admissions.
This litigation began when Philadelphia Consolidated filed applications to register two composite word and design marks, GREENPHLY and TEAMPHLY, both for insurance and insurance services, charitable fundraising services, organizing community sporting and cultural events relating to health, nutrition and the environment, and education services. The Phillies filed a notice of opposition, alleging priority and likelihood of confusion, based on 16 previously used and registered and applied-for marks and other marks for which it claims common law rights.
During discovery, Philadelphia Consolidated served The Phillies with 507 requests for admission, which required The Phillies to admit or deny whether it was selling or licensing specific goods and services under each of the pleaded marks. Rather than responding to the requests, The Phillies filed a motion for protective order seeking relief from responding to the requests.
The Phillies argued it should not have to answer Philadelphia Consolidated's requests because:
- Philadelphia Consolidated failed to make any effort to seek only proper and relevant discovery.
- Information relating to the scope of its use of its marks was relevant but cumulative of other discovery requests.
- Answering the requests would require The Phillies to comb through potentially thousands of documents and make innumerable inquiries of its hundreds of licensees and sponsors.
- The burden in time and expense would outweigh Philadelphia Consolidated's need for the information.
In its decision, the TTAB first noted that both the Federal Rule of Civil Procedure (FRCP) 26(c)(1) and Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 412.06 require a party to confer with the other party in good faith before seeking a protective order. Because The Phillies attempted to resolve the dispute over email and in follow-up conversations, the TTAB was satisfied that it had made a good faith effort to resolve the dispute before seeking intervention.
The TTAB also noted that under TBMP § 407.03(b), the requests for admissions are not deemed automatically admitted because, even though The Phillies did not respond to the requests, it moved for a protective order based on the overall burden of responding to so many requests.
The TTAB concluded that the protective order was not warranted because The Phillies did not establish good cause for the protective order by setting out:
- A particular and specific demonstration of fact, rather than stereotyped and conclusory statements.
- That the movant's ability to litigate would be prejudiced, not just that managing the litigation would be more difficult.
Under this standard the TTAB held that The Phillies did not show good cause for the protective order because:
- Philadelphia Consolidated's requests were neither improper, harassing or oppressive. Although The Phillies claim it would be unduly burdensome to respond to so many requests, the TTAB found that the number of requests was high because:
- The Phillies plead at least 26 marks, many of which are cumulative; and
- the requests for admission seek 32 admissions for each of only 14 of the marks.
- The Phillies chose to draft its opposition notice broadly.
Although the Board declined to issue a protective order shielding The Phillies from answering all 507 requests, it did issue the order for 96 of the requests finding those requests to be duplicative or outside of the scope of discovery.
Court document: