The TTAB denied Applicant's motion for sanctions based upon Opposer's failure to make initial disclosures, and stated that sanctions are only available when a Board order has been violated or if a party affirmatively stated that it would not provide initial disclosures.
On January 16, 2008, the TTAB issued a notice of institution, providing that the initial disclosures of Kairos Institute of Sound Healing, LLC ("Opposer") and Doolittle Gardens, LLC ("Applicant") were due April 25, 2008. Applicant served its initial disclosures on April 25, 2008, but Opposer did not serve its initial disclosures until May 30, 2008. On May 25, 2008, one month after the deadline for service and prior to the service of Opposer's disclosures, Applicant filed a motion for sanctions with the TTAB, arguing that Opposer acted in bad faith by willfully evading its disclosure obligations and prejudicing Applicant's ability to proceed with its case. Opposer responded that its failure to make timely service of the disclosures was inadvertent and unintentional, and that Applicant suffered no actual prejudice since three months of discovery still remained after the delayed service.
The TTAB denied Applicant's motion for sanctions for failure to timely provide initial disclosures. Under Trademark Rule 2.120(g)(1), a party may seek sanctions only when another party fails to comply with an order of the TTAB relating to disclosures. Because no order was issued compelling a party to make initial disclosures, the TTAB held that imposing sanctions would be premature. The TTAB also noted that an order of institution does not constitute an official TTAB order relating to disclosures under the Rule. It clarified that "a notice of institution is merely a scheduling order, whereas the type of order that is contemplated as a prerequisite to a motion for sanctions under Trademark Rule 2.120(g)(1) is an order granting or denying a motion to compel or a motion for a protective order." Had Applicant filed a motion to compel the disclosures and the TTAB granted such motion, Applicant could then move for sanctions for Opposer's failure to comply with that order.
The TTAB also observed that Trademark Rule 2.120(g)(2) allows for sanctions only where a party fails to provide required initial disclosures or discovery and that party affirmatively informs the other party that the required disclosures will not be made. Here, there was no affirmative refusal to make disclosures, so the TTAB found that imposing sanctions in the form of a dismissal under Rule 2.120(g)(2) would also be premature.
The TTAB will not grant a motion for sanctions for failure to make initial disclosures under Trademark Rules 2.120(g)(1) and (2) unless a party fails to comply with a TTAB order relating to disclosures or fails to serve initial disclosures and affirmatively informs the other party that the required disclosures will not be made.