The TTAB issued its first decision concerning the requirements for initial disclosures under the new TTAB rules. Although the Board agreed that Fed. R. Civ. P. 26(a)(1) does not require a "great deal of specificity," it held that the mere listing of general categories of documents that do not pertain to specific claims or defenses are insufficient under the Rule. Although not citable, in this important decision the Board concluded that initial disclosures must be sufficiently detailed and specific to address each of the parties' claims and defenses, as well as each of the individual factors that are used to evaluate each claim and defense.
In-N-Out Burger, Inc. ("Petitioner") filed a Petition to Cancel BB&R Spirits Ltd.'s ("Respondent" or "BB&R") registered mark DOUBLE DOUBLE for whisky and liquors on the grounds of likelihood of confusion, lack of bona fide intent to use, likelihood of dilution, and false suggestion of a connection or association. Petitioner based its claims on, among other things, its prior use and registration of the mark DOUBLE DOUBLE for sandwiches. Respondent filed an Answer, including affirmative allegations that there is no likelihood of confusion, the marks "differ in meaning and commercial impression," and "the respective goods, purchasers, channels of trade, marketing and distribution of the goods at issue are vastly different."
Respondent served initial disclosures, identifying two categories of documents: (1) trademark application papers; and (2) documents located at BB&R's corporate office or the offices of its undersigned counsel. After Petitioner objected to Respondent's disclosures as insufficient, Respondent served supplemental initial disclosures identifying eight different categories of documents: (1) documents showing there is no likelihood of confusion between the marks at issue; (2) documents pertaining to Registrant's business;
Petitioner subsequently filed a motion to compel more detailed initial disclosures and requested a telephone-conference hearing to adjudicate its motion. In support of its motion, Petitioner maintained that Respondent's supplemental disclosures were "insufficiently detailed." Respondent, on the other hand, argued that Federal Rule 26(a)(1) does not require the level of specificity demanded by Petitioner. Respondent also argued that Petitioner would have ample opportunity to seek and obtain specific documents during discovery.
Although the Board agreed with Respondent that Federal Rule 26(a)(1) "does not require a great deal of specificity," it nonetheless granted Petitioner's motion. The Board held that "the Rule requires more specificity than the exceedingly general categories of documents Respondent disclosed, as the Rule specifically requires that parties disclose documents relating to their respective claims or defenses." The Board found that Respondent's supplemental initial disclosures "insufficiently related to its defenses, and do not serve as a substitute for a certain amount of traditional discovery and…provide a more efficient means for exchange of information that otherwise would require the parties to serve traditional discovery requests and responses thereto."
Further, the Board noted that none of Respondent's disclosures specifically related to or mentioned the meaning and commercial impression of Respondent's mark, goods sold or intended to be sold under Respondent's mark, or Respondent's use of or intent to use its mark in the United States. And, with one exception, Respondent's disclosures did not specifically relate to the factors that would be used to evaluate Petitioner's claims of likelihood of confusion, dilution, and false suggestion of association. Thus, the Board required detailed and specific disclosures addressing each of the parties' claims and defenses, as well as each of the individual factors that are used to evaluate each claim and defense. For example, in a footnote, the Board referred to the Respondent's potential identification of "documents related to Respondent's lack of any intention to expand its use of DOUBLE DOUBLE beyond the goods identified in its registration."
The Board also stated, in dicta, in a footnote, that initial disclosures must reflect a party's plans for defending the action at trial. It also suggested, in a footnote, that "[t]he most efficient means of making initial disclosures of documents, and the option the Board encourages parties to use, is to actually exchange copies of disclosed documents, rather than merely identifying their location."
Although this decision is not citable, it is significant as it is the first to offer guidance on the level of specificity required for initial disclosures in TTAB cases.