Societe des Produits Nestle S.A. (“Nestle”) opposed Midwestern Pet Foods, Inc.’s (“Midwestern”) intent-to-use application for the mark WAGGIN’ STRIPS for “pet food and edible pet treats” on grounds of a likelihood of confusion with and dilution of its earlier registered and used mark BEGGIN’ STRIPS for “dog snacks.” During discovery, Nestle objected to Midwestern’s discovery requests as overbroad and unduly burdensome, irrelevant and/or protected by the attorney-client privilege and work-product doctrine, or proprietary and not required to be produced before entry of a protective order. Nestle agreed to produce “at a mutually agreeable time and place” nonprivileged documents to the extent the requests were not objectionable on some other basis, and later agreed to reconsider certain of its responses if Midwestern narrowed its requests. Following entry of a protective order, Midwestern took no steps to arrange for the production of the documents that Nestle had agreed to produce, and neither party narrowed its requests or moved to compel any of the requested documents.
At trial, Midwestern asserted a number of objections to Nestle’s notices of reliance, testimony, and exhibits on the ground that some of the documents were responsive to Midwestern’s document requests, but Nestle had represented during discovery that no documents responsive to that request existed. The TTAB dismissed the majority of Midwestern’s objections, finding that Nestle’s discovery responses “in no way led [Midwestern] to believe that no documents satisfied [its] discovery requests.” The TTAB further ruled that because Midwestern was dissatisfied with Nestle’s failure to produce documents in response to its document requests, it was incumbent on Midwestern to file a timely motion to compel as a means of testing Nestle’s objections. Having failed to do so, Midwestern waived its right to object to such evidence on the ground that Nestle should have produced it during discovery and did not. Regarding fame evidence postdating the filing date of Midwestern’s application, the TTAB held that although the fame of Nestle’s BEGGIN’ STRIPS mark had to be established before Midwestern’s filing date, the evidence was relevant to the issue of likelihood of confusion because the TTAB considers evidence of fame for purposes of likelihood of confusion up to the time of trial. Midwestern appealed to the Federal Circuit.
On appeal, Midwestern argued that the TTAB erred by failing to sustain Midwestern’s objections to the admission of Nestle’s evidence of its advertising, sales, and marketing activities, because Nestle did not produce those documents in response to Midwestern’s discovery requests. The Federal Circuit dismissed Midwestern’s argument. First, the court pointed out that because the opposition was filed prior to 2007, when TTAB procedures were amended to require mandatory disclosures, Nestle was not required to serve initial or pretrial disclosures. Further, for cases governed by the pre-2007 procedures, TTAB precedent holds that the parties do not have a right to disclosure of the documents and witnesses that the opposing party intends to rely on at trial. The Federal Circuit agreed with the TTAB that, because Nestle objected to the discovery requests on various grounds, TTAB procedures applicable to pre-2007 procedures required Midwestern to move to compel production or test the sufficiency of Nestle’s responses, rather than wait until trial to object to the evidence that Nestle had not produced during discovery. Because of Midwestern’s failure to follow up on Nestle’s offers to produce certain materials at a mutually agreeable time and place, and to respond to narrower document requests or to move to test the sufficiency of Nestle’s responses or compel certain documents, the court held that the TTAB did not abuse its discretion by refusing to strike Nestle’s evidence.
Additionally, Midwestern argued that the TTAB erred in admitting evidence of the fame of Nestle’s BEGGIN’ STRIPS mark that postdated the filing date of Midwestern’s application for the mark WAGGIN’ STRIPS. The court ruled that evidence of postapplication filing-date fame, although not relevant to the issue of dilution, is relevant to the issue of likelihood of confusion. Thus, while a party asserting dilution in an opposition proceeding must establish that its mark became famous prior to the filing date of an intent-to-use application, no such restriction applies to use of evidence of the strength of the mark for purposes of showing likelihood of confusion. Accordingly, the TTAB did not err in considering this postapplication filing-date evidence.
While the decision relates to pre-2007 oppositions, it is instructive in counseling that parties dissatisfied with an adversary’s discovery responses should move to compel or risk waiving any objections to the admission of trial evidence not produced during discovery. The decision is also noteworthy for its ruling on the relevance of postapplication filing-date fame in a likelihood-of-confusion analysis.