E-mail Exchange Did Not Satisfy Good Faith Effort Requirement for Motion to Compel: TTAB | Practical Law

E-mail Exchange Did Not Satisfy Good Faith Effort Requirement for Motion to Compel: TTAB | Practical Law

In a trademark opposition proceeding, the Trademark Trial and Appeal Board (TTAB) denied the applicant's motion to compel discovery, finding that the applicant did not provide sufficient evidence of its good faith efforts to resolve the dispute prior to filing its motion to compel.

E-mail Exchange Did Not Satisfy Good Faith Effort Requirement for Motion to Compel: TTAB

by Practical Law Intellectual Property & Technology
Published on 27 Mar 2014 • USA (National/Federal)
In a trademark opposition proceeding, the Trademark Trial and Appeal Board (TTAB) denied the applicant's motion to compel discovery, finding that the applicant did not provide sufficient evidence of its good faith efforts to resolve the dispute prior to filing its motion to compel.
On March 20, 2014, in Hot Tamale Mama... and More, LLC v. SF Investments, Inc., the Trademark Trial and Appeal Board (TTAB) denied the applicant's motion to compel discovery, finding that the applicant had failed to make a good faith effort to resolve the discovery dispute before filing the motion, as required by Trademark Rule 2.120(e)(1) (37 C.F.R. § 2.120(e)(1)) (Opposition No. 91209030 (TTAB, March 20, 2014)).
In ex parte proceedings, a motion to compel discovery must include the moving party's written statement that it has made a good faith effort to resolve the discovery dispute, but the parties were unable to resolve it. The TTAB expects the statement to be supported by information about the parties' communications.
Here, the applicant filed a motion to compel production after:
  • The opposer failed to timely respond to the applicant's discovery requests.
  • The opposer's counsel failed to substantively respond to a follow up e-mail from the applicant's counsel, sent two weeks after the due date for the requests.
To satisfy the good faith effort requirement, the applicant relied on a non-substantive e-mail exchange where:
  • The applicant's counsel provided notice that it had not received any discovery responses and asked when they would be received.
  • The opposer's counsel responded only that it would check with its client and get back to the applicant's counsel with a time frame.
The TTAB found this e-mail exchange to be insufficient to establish that the applicant had made the required effort to resolve the discovery issues with the opposer. The TTAB explained that the purpose of this rule is to relieve the TTAB of the burden of ruling on motions to compel in proceedings where the parties can resolve their discovery disputes and that this single communication requesting discovery responses did not satisfy this rule.
Specifically, the TTAB found that, given the lack of information or apparent disagreement in the single e-mail exchange the applicant should have made a second inquiry directed to finding out:
  • The opposer’s situation.
  • The nature of any disputed matter.
  • Whether and when the matter could be resolved amicably.
The TTAB explained that if the applicant had made a second inquiry and the opposer provided information regarding its situation the applicant would have known whether the situation could have been resolved without TTAB intervention.