Daniel A. Mendozav.Digium, Inc.Download PDFTrademark Trial and Appeal BoardMar 27, 2009No. 91168871 (T.T.A.B. Mar. 27, 2009) Copy Citation 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. Copy with citationCopy as parenthetical citation