Applicant filed a motion to compel certain electronically stored information (“ESI”) from Opposer. The TTAB explained that neither the Federal Rules nor the Trademark Rules dictate how extensive ESI discovery should be. Because the parties had not reached agreement on the form of e-discovery production before responding to each other’s discovery requests, the TTAB held that Applicant could not insist that Opposer start its production over using the same methods used by Applicant, namely, attorney-supervised ESI retrieval and searching. Further, Opposer’s failure to conduct this specific type of e-discovery was not necessarily inadequate under the circumstances of the case.
Princeton Vanguard, LLC (“Applicant”) owns a Supplemental Register registration for the mark PRETZEL CRISPS, in standard characters and with PRETZEL disclaimed, for “pretzel crackers” and seeks a Principal Register registration for the same mark for the same goods under Section 2(f). In its petition to cancel and its notice of opposition, Frito-Lay North America, Inc. (“Opposer”) alleged that (1) Opposer and others in the snack-food industry have a present and prospective right to use the term “pretzel crisps” generically and/or descriptively in their business; and (2) Applicant’s mark is generic. In its notice of opposition, Opposer also pleaded as an additional ground that Applicant’s mark is “merely descriptive” and has not acquired distinctiveness. Applicant denied the salient allegations in Opposer’s pleadings.
During their discovery conference, the parties discussed ESI discovery and agreed on the format in which ESI would be produced (.pdf format). The parties did not, however, agree on a protocol for identifying and segregating potentially responsive ESI, on who should review the ESI to determine whether the production of particular documents or information would be appropriate, nor upon methods of searching the ESI, such as the use of “keywords” to identify documents and information responsive to each other’s discovery requests.
The parties exchanged initial sets of written discovery requests, both of which requested the production of ESI. In the “Definitions and Instructions” accompanying its discovery requests, Applicant stated that “[c]omputer files should be provided in electronic form on CD-ROMs in the first instance rather than printouts on paper,” and Opposer’s “Definitions and Instructions” indicate that “[t]hese requests require [Applicant] to produce all documents and electronically stored information in [Applicant’s] ‘possession, custody, or control.’”
During the spring and summer of 2010, Applicant produced documents responsive to Opposer’s discovery requests, including ESI, on a “rolling” basis. Applicant claimed that it initially identified more than 1.65 million electronic files of potential relevance and its counsel “manually reviewed” over 85,000 of these electronic files, and that in 2010 alone, Applicant incurred approximately $200,000 in fees associated with electronic discovery. Applicant produced over 40,000 electronic documents in 2010. Applicant anticipated producing tens of thousands of additional documents, and estimated its fees to be over $100,000 in 2011 in connection with the document collection and production.
Opposer also began producing documents during the spring and summer of 2010, but its production was less robust than Applicant’s and contained no e-mails other than a summary spreadsheet of sales data and an internally generated list of trademarks. Applicant objected to Opposer’s production as deficient, especially with regard to electronic files. Applicant claimed that Opposer did not conduct an “attorneymanaged electronic retrieval and search.” Opposer argued that while it conducted a “reasonable investigation to locate, gather and produce documents reasonably responsive” to Applicant’s discovery requests, including by identifying document custodians and asking them to search their own files for ESI on the computers, attorney-supervised searches for ESI on the computers of employees who received Opposer’s document retention notice would cost Opposer an additional $70,000-$100,000. Opposer argued that this expense would far outweigh the benefit for any information in determining the matters at issue in this proceeding. Opposer specifically refused to take forensic images of its employees’ computers.
After meeting and conferring on the above issues, Applicant filed a motion to compel the production of additional documents from Opposer. Applicant argued that Opposer’s failure to conduct an attorneysupervised ESI retrieval search (using appropriate keywords) and review had substantially prejudiced Applicant’s ability to defend this proceeding; that cost or burden was no excuse where relying on the custodians to search their own files had clearly proven insufficient; that Opposer could not decline to carry out the type of attorney-supervised ESI collection and review that Applicant had already undertaken; and that Applicant was entitled to discovery regarding how Opposer’s “businesspeople assess the pretzel cracker market (in which [Opposer] was a player), their consideration of the PRETZEL CRISPS mark and products, and the names and terms they use in discussing these subjects.” Opposer responded by arguing that Applicant is engaged in an ongoing document dump, that it was Applicant’s fault for not working with Opposer to avoid an excessive production, and questioned whether Applicant incurred the associated costs in connection with a district court action relating to issues similar to those in the TTAB proceeding. Opposer also claimed to have identified nineteen of its employees deemed most likely to have information relevant to this proceeding, and instructed them to search their records, including ESI, using categories keyed to Applicant’s requests. Opposer argued that the information that could be obtained through “forensic imaging” of the custodians’ (i.e., employees’) computers was not reasonably accessible, and the cost of obtaining it far outweighed the need for the information, given that Opposer’s claims relate solely to Applicant’s mark, and Opposer had not used or considered using the term “pretzel crisps.” Opposer also argued that much of the information Applicant sought related not to whether Applicant’s mark was descriptive or generic, but instead to “competitive business issues between the parties,” who are direct competitors, and that Applicant’s discovery requests “constitute a fishing expedition” for the irrelevant information. Opposer further claimed that its production was sufficient and that it had only declined to produce “trade secret business information which has no bearing on the genericness of ‘pretzel crisps’ as used by Applicant.”
The TTAB first noted that while the federal courts routinely deal with e-discovery disputes, e-discovery disputes have been relatively rare in TTAB proceedings due, most likely, to the TTAB’s limited jurisdiction, under which the TTAB is empowered with only the right to register. Further, the scope of discovery in TTAB proceedings is generally narrower than in court proceedings, especially court proceedings involving allegations of infringement, and/or in which both parties are, unlike here, making extensive use of their marks. Accordingly, the TTAB found that it was not improper that the Opposer generally treated discovery in TTAB proceedings differently than discovery in other types of trademark litigation (including, for example, not imposing a “litigation hold” after a TTAB proceeding, where Opposer does impose such a hold in district court litigations). Further, the TTAB explained that it is well settled that Opposer need not provide discovery of ESI from sources that it identifies as not reasonably accessible because of undue burden or cost. On the other hand, the TTAB noted that ESI must be produced in TTAB proceedings where appropriate and Opposer had the duty to satisfy the legitimate discovery needs of its adversary.
The TTAB next looked at whether Opposer’s ESI production efforts were adequate as a general matter. The TTAB explained that neither the Federal Rules nor the Trademark Rules dictate how extensive ESI discovery should be. Here, however, although the parties discussed ESI discovery during their discovery conference and thereafter, they reached agreement only on the form of production prior to responding to each other’s discovery requests. Having failed to reach agreement with Opposer and many of the most crucial ESI-related issues in advance of the parties’ productions, the TTAB found that Applicant could not fairly insist, after the fact, that Opposer must start its ESI search and production over, this time engaging in a process similar to Applicant’s. Further, the mere fact that Applicant chose on its own to engage in broad, expensive ESI collection, review, and production similar to or repetitive of discovery it conducts in federal court actions was not a basis upon which to compel Opposer to do the same. Nor did Opposer’s failure to conduct an attorney-supervised ESI retrieval search in the same manner as Applicant mean that Opposer’s ESI discovery efforts were necessarily inadequate under the circumstances of the case.
The TTAB explained that in the federal courts (where discovery is generally expected to be more extensive than in TTAB proceedings), there is an increasing focus on the question of proportionality, and on whether the type of extensive ESI discovery Applicant advocates is always justified. The TTAB also pointed out that the Federal Circuit had issued an E-Discovery Model Order to address, among other things, the disproportionate cost of e-discovery in patent cases, where discovery is often broader than in TTAB proceedings. And that Model Order questioned many of the positions that Applicant advocated in this case, including the practice of gathering huge amounts of information at the front of a case and running broad key searches as the issues emerge. The TTAB noted that the Model Order limited the number of custodians and search terms for all e-mail production requests, and indicated that e-mail production requests should only be propounded for specific issues rather than general discovery of a product or business.
The TTAB also noted that it is well settled that the producing party is in “the best position to determine the method by which [it] will collect documents,” at least “absent an agreement or timely objection.” And a mere belief that documents must exist is not enough to grant a motion to compel. Accordingly, the TTAB found that in view of its limited jurisdiction, the narrowness of the issues to be decided by the TTAB, and the concerns expressed by the Federal Circuit, the burden and expense of e-discovery will weigh heavily against requiring production in most cases. The TTAB advised that parties should be precise in their requests and have as their first consideration how to significantly limit the expense of such production. Absent such a showing, the likelihood of success of any motion to compel will be in question. Thus, the TTAB denied Applicant’s motion to compel to the extent that Applicant requested that Opposer be required to start its production over, using the same or similar protocols to those Applicant used. The TTAB concluded that Applicant had failed to establish that Opposer’s method of searching and producing documents was insufficient as a general matter, given the parties’ failure to agree on an ESI discovery protocol in advance, the nature of Applicant’s discovery requests, and the issues in this proceeding.
The TTAB next turned to the question of whether Opposer adequately responded to the specific document requests at issue. The TTAB noted that the case concerned only whether Applicant’s mark was generic or merely descriptive, and that while Opposer may possess e-mails and internal nonpublic documents that are relevant to these issues, the question is whether the burden or expense of the proposed discovery outweighs its likely benefit, considering the needs of the case, the amount in controversy, the parties’ resources, the importance of the issues at stake in the action, and the importance of the discovery in resolving the issues. See Fed. R. Civ. P. 26(b)(2)(C)(iii). The TTAB indicated that Applicant had not argued that Opposer’s responses to any of Applicant’s first set of document requests were inadequate (other than Opposer’s alleged failure to engage in appropriately extensive ESI discovery as a general matter). Accordingly, the TTAB focused only on the second set of responses.
After examining those requests and Opposer’s responses, the TTAB found that certain of Opposer’s responses were inadequate. Accordingly, the TTAB granted Applicant’s motion in part with respect to those specific requests and ordered Opposer to produce representative samples of responsive documents in Opposer’s possession, custody, or control, including responsive ESI, as necessary and appropriate. Additionally, Opposer was ordered to ensure that it work with, and search for documents maintained by, the appropriate employees and/or custodians. The TTAB denied Applicant’s motion to compel, however, as to Opposer’s ESI generally.
In its first substantive decision addressing e-discovery in TTAB cases, the TTAB found that because of its limited jurisdiction, the narrowness of the issues to be decided by the TTAB, and the concerns expressed by the Federal Circuit regarding the time and costs associated with disproportionate and overbroad e-discovery production requests, the burden and expense of e-discovery “will weigh heavily against requiring production in most cases.” Accordingly, in deciding a motion to compel ESI, the TTAB will look at, among other things, whether the movant’s requests were precise and whether the movant considered how to significantly limit the expense of such production.