Daniel A. Mendozav.Digium, Inc.

Trademark Trial and Appeal Board

Mar 27, 2009

No. 91168871 (T.T.A.B. Mar. 27, 2009)

Mailed: March 27, 2009
Skoro
Opposition No. 91168871

Daniel A. Mendoza

v.

Digium, Inc.

Before Quinn, Holtzman, and Mermelstein,
Administrative Trademark Judges.

By the Board:
This case now comes up on applicant’s second motion for
discovery sanctions in the form of judgment on the
opposition and counterclaims, filed January 13, 2009. As
grounds for the motion, applicant states that opposer has
failed to comply with the Board’s December 16, 2008 order
granting a motion to compel. Opposer has responded.1

Board’s December 16, 2008 Order
In the December 16, 2008 order, the Board denied the
sanction of dismissal and granted the motion to compel,
given applicant’s stated need for the requested
documentation to support its own counterclaims. (Order, p.

1 On March 16, 2009 opposer filed a motion for leave to file a
surreply. That motion is hereby denied. Trademark Rule
2.127(a).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
PRECEDENT OF THE
TTAB
Opposition No. 91168871
2
9). The order compelled opposer, within twenty days, (i.e.,
by January 5, 2009) to:
(1) serve on applicant’s counsel the documents
filed with the Board and not served on
applicant, whether he considers them
confidential or not;
(2) provide complete responses to applicant’s
second set of discovery requests, without
objection, and designate which documents
are truly confidential2 and specify which
documents are responsive to which of the
discovery requests; and
(3) if there were no further responsive
documents, opposer was to certify that he
has conducted a complete and thorough
search of all his records and that there
were no further documents to be produced.

The Board also stated that “[i]t appears from the
record that opposer has engaged in a course of delay in
failing to properly respond to discovery for well over two
years” (p. 8), and that “opposer’s conduct has brought him
perilously close to a grant of applicant’s motion for the
sanction of dismissal. See MHW LTD and Pepsico v. Simex, 59
USPQ2d 1477 (TTAB 2000) (delay tactics and willful disregard
treated by Board as evidence that supports entry of judgment
against the offending party) and Unicut Corp. v. Unicut
Inc., 222 USPQ 341 (TTAB 1964) (result is prejudice to
defendant and overall delay costs making judgment the only
sanction that provides appropriate relief)." Opposer was
also advised that "if this behavior continues, the Board is

2 See the Board’s standard protective order at
http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm for
the classes of protected information and information that is not
to be designated as protected.
Opposition No. 91168871
3
not likely to be lenient," and that "Opposer’s failure to
comply with this order, upon motion by applicant, may result
in the entry of judgment against opposer with respect to the
opposition and opposer’s counterclaim.” (Order, p. 9).

Applicant’s Second Motion for Sanctions
As grounds for the present motion, applicant states
that as of the filing date of this motion, opposer has not
provided any of the discovery ordered by the Board;3 not the
documents filed with the Board, not the responses to the
second set of discovery requests, nor the certification as
to his search of his records. Applicant contends that if
the Board’s order overtly warning opposer of sanctions is
not taken seriously, there is no avenue left for applicant
to obtain a fair hearing, and it will continue to suffer
unjustified delay and expense in connection with its
trademark application and rights.

Opposer’s Responses
In his first response to applicant's motion for
sanctions, on January 21, 2009, opposer filed a “Petition to

3 Applicant notes in its reply that on or about February 2, 2009,
the same date opposer’s response to this motion was filed, it
received “a smattering of document production materials” and
there was “small number of documents in October, 2008” while the
first motion for sanctions was pending. (Reply Br. at 2).
Applicant states that these exhibits “appear to be related to
occurrences in the 2008-2009 timeframe.” (Reply p. 2, n.1).
Whatever these documents are, they have not been identified in
accordance with the Board’s order that required opposer to
provide complete responses and to identify which documents are
responsive to which of the discovery requests.
Opposition No. 91168871
4
Return Confidential Documents.” Opposer states that he did
not make copies of the “large amount of documents, undated
and unsorted, including a hard drive”, filed on April 28,
2008 and June 24, 2008 (entries number 44 and 37) as
confidential.4 Opposer contends he “needs all these
documents to sort, inventory and properly label and send to
applicant’s counsel” (Pet. at 2). He further states that
this request is late because he thought he had thirty days
to respond, not twenty.
On February 2, 2009, opposer filed a second response to
applicant’s motion for sanctions. In this filing opposer
contends that applicant’s motion is “untimely, or
inappropriate, or deficient” (Response p. 1); that he does
not have the documents to comply with the Board’s order in
that he sent them to the Board unduplicated in a large 5
pound envelope labeled “Trade Secret and Highly Sensitive
Confidential”; and that he has requested a return of these
documents.5 Opposer also provides a variety of reasons why

4 The entries identified by opposer, No. 37, consist of 6 pages
of invoices regarding storage areas; and No. 44 was actually
submitted by applicant, not opposer, and consists of 63 pages of
opposer’s discovery responses to interrogatories and requests for
admissions. Many of the submissions opposer filed as
“confidential” were discussed in the Board’s previous order as
having been improperly filed despite numerous notices of such
from the Board. Additionally, opposer had in earlier filings
contended that the "hard drive" he submitted had been damaged,
and while it may have contained responsive documents, according
to opposer, it now reads "0" bytes. To have sent the hard drive
to the Board was equally improper.

5 The request to return the documents to allegedly enable opposer
to comply with the Board’s order is denied. Opposer had been
advised on numerous occasions not to file items designated as
“confidential” only with the Board. Opposer did not follow this
Opposition No. 91168871
5
he has been non-compliant: (1) he is acting pro se; (2) he
has a small work space; (3) the previously identified
storage area is really his hotel room; (4) applicant’s use
of “inflammatory language”; (5) applicant’s law firm has
changed its name, making counsel’s signature “incorrect and
improperly labeled motion”; and (6) the press of other
matters “during the high holidays.”

Decision
The record establishes that opposer has engaged in a
course of delay in failing to respond to discovery for well
over two years, and has chosen to disregard the Board’s
orders to respond. Opposer’s “Petition to Return
Confidential Documents” is seen as a further delay tactic.
It is not credible that opposer does not have copies of
these items,6 nor are the various excuses opposer asserted
as to why he delayed in responding to the Board’s order.
Opposer admits he misread the deadline and then set the
order aside, and when he took action in response to
applicant’s motion for sanctions, the action was
preparatory, not directed toward compliance. In addition,

advice. Now claiming that he failed to make a copy of the
documents or to index the documents, a requirement needed to be
in compliance with the latest Board order, is unpersuasive.
It is Board policy to contact the filing party at the
termination of a proceeding to see whether they want the
confidential filings destroyed or returned by mail. TBMP §
412.05. Opposer will be contacted accordingly in due course.

6 As noted earlier, only one of the identified "confidential"
filings was submitted by opposer, and it comprises 6 pages of
storage area invoices.
Opposition No. 91168871
6
there were additional matters required by the Board to which
opposer failed to comply with or to explain his inability to
comply.7
Inasmuch as it appears that opposer has not answered
the discovery, the motion to dismiss this proceeding as a
sanction and for entry of judgment against opposer on the
counterclaims is hereby granted as a sanction for violation
of the numerous Board orders.
Accordingly, judgment is hereby entered against
opposer, the opposition is dismissed with prejudice, and the
counterclaims for cancellation are granted. Registration
Nos. 2597355 and 3218515 will be cancelled in due course.
See Trademark Rule 2.120(g) and Fed. R. Civ. P. 37(b)(2)(C).

7 One of these items is the Board’s requirement that opposer
“certify” that he has conducted a complete and thorough search of
all his records and there are no additional responsive documents.
Attached to his response to applicant’s motion for sanctions,
opposer provided, at p.9, the following statement: “I declare
under penalty of perjury under the State of California that the
foregoing answers concerning the search of records within the set
discovery time limits, and resulted non-findings of the
applicant’s requested information, answer, data, document or
specimens are true and correct”. Although a valid certification
under 28 U.S.C. § 1746, the statement does not comply with the
Board’s order in that there is no acknowledgement that a final
search was conducted, and it is also not clear what was searched.