ABSTRACT

Opposer filed a motion for sanctions based on Applicant’s alleged failure to communicate with Opposer to arrange a discovery conference or to participate in the discovery conference.  The TTAB denied Opposer’s motion, finding that Opposer had not taken sufficient steps to facilitate a resolution of the parties’ problems scheduling a discovery conference to warrant the imposition of sanctions on Applicant.

CASE SUMMARY

FACTS

Pursuant to Trademark Rule 2.220(a)(1) and (a)(2), the parties were required to conduct a discovery conference on or before May 23, 2008.  Opposer sent letters to Applicant’s counsel of record, Michael Kroll, on April 10, 2008, and May 15, 2008, and left him a telephone message on May 20, 2008, attempting to schedule the discovery conference.  On May 30, 2008, Opposer filed a motion requesting a sanction “extending Opposer’s discovery period by the number of days past the discovery conference deadline until Applicant participates in a discovery conference.”

In response to Opposer’s motion, Applicant claimed that he was not contacted by Opposer due to a “misunderstanding or miscommunication,” namely, that Edwin Schindler, not Mr. Kroll, was Applicant’s attorney.  Applicant also argued that Opposer should have known that Mr. Schindler was his attorney because he had signed certain filings in connection with the proceeding.  Further, Applicant asserted that Mr. Schindler eventually contacted Opposer by email on June 27, 2008, in an attempt to schedule the discovery conference (after Opposer had filed its motion for sanctions), but that Opposer did not respond.

In response to Applicant’s arguments, Opposer asserted that it did not know Mr. Schindler claimed to be an attorney of record in the case until June 9, 2008, after Opposer’s motion for sanctions was filed and after the deadline for the discovery conference.

ANALYSIS

Regarding Applicant’s conduct, the TTAB found that (1) it was the responsibility of Applicant and his attorney of record to enter any changes in representation and correspondence address; (2) if Applicant had complied with these rules, it would have facilitated Opposer’s efforts to schedule the conference, and; (3) Applicant had not demonstrated more than a “lackluster” attempt to schedule the discovery conference.  On the other hand, the TTAB found that Opposer was not entirely blameless because it had contact information for Mr. Kroll and Mr. Schindler either prior to the filing of its motion for sanctions or shortly thereafter and Opposer did not contact Mr. Schindler.  Also, Opposer did not respond to Mr. Schindler’s belated attempt to communicate with Opposer about the discovery conference, and Opposer could have done more to facilitate a resolution of the parties’ problems, including by requesting the TTAB’s participation in the discovery conference, which may have eliminated the need to file the motion for sanctions.  For these reasons, the Board denied Opposer’s motion for sanctions in the form of extending discovery for only Opposer.

CONCLUSION

Where one party fails to participate in a discovery conference, the other party should take reasonable steps to mitigate any prejudice it may suffer as a result of the delay, including by requesting the Board’s participation in the discovery conference.