Vignette Corporationv.Steven Marino

Trademark Trial and Appeal Board

Nov 29, 2005

No. 91158854 (T.T.A.B. Nov. 29, 2005)

Lykos Mailed: November 29, 2005

Opposition No. 91158854
Vignette Corporation
v.
Marino, Steven

Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.

By the Board:

This case now comes up for consideration of opposer's
motion (filed August 26, 2005) for reconsideration of the
Board's order denying opposer's motion for summary judgment.
By way of background, on January 8, 2003, applicant
applied to register the mark VIGNETTE EDITORIAL for "video
post-production services, namely, editing of music videos,
television commercials and motion pictures” in International
Class 41, alleging a bona fide intent to use the mark in
commerce.1 Opposer timely filed a notice of opposition on
December 8, 2003 based on a claim of priority and likelihood

1 Application Serial No. 76481237.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451

THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.
of confusion.
Thereafter, on March 3, 2005, opposer filed a motion to
amend its notice of opposition to add a claim that
application Serial No. 76481237 is void ab initio under
Trademark Act Section 1(b) because applicant did not have a
bona fide intention to use the mark in commerce when he
filed the application.2 The Board, on July 26, 2005,
granted opposer's motion to amend the notice of opposition,
and deemed the notice of opposition to be amended to set
forth the following claim:
11. Alternatively, Applicant did not have a bona
fide intention to use the mark in commerce on the
specified services when he filed his application
for VIGNETTE EDITORIAL (Ser. No. 76/481,237)
because Applicant did not have a single document
to establish a bona fide intention to use VIGNETTE
EDITORIAL on the services covered by the involved
application.

On the same date that opposer filed its motion to amend
the notice of opposition, opposer moved for summary judgment
on the amended claim. The Board denied opposer's motion for
summary judgment in the same Board order.
It is this decision which is the subject of opposer’s
motion for reconsideration. The motion is fully briefed.3

2 See e.g., Lane Ltd. v. Jackson International Trading Co., 33
USPQ2d 1351; and Commodore Electronics Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ2d 1503 (TTAB 1993).

3 Opposer has submitted a reply brief which the Board has
considered pursuant to our discretion under Trademark Rule
2.127(a).
Opposer, in its motion for summary judgment, argued
that applicant failed to produce any documents in response
to opposer's document production requests to corroborate his
purported bona fide intention to use his mark in commerce.
In its brief on summary judgment, opposer highlighted
several document production requests and applicant's
responses thereto, including the following:
Opposer's Document Production Request No. 1: All
documents that relate to or reflect all use and
planned or intended uses of Applicant's Mark in
connection with the advertising, promotion or
marketing of products or services including, but
not limited to, sales brochures, promotional
materials, business plans, displays and
advertisements.

In his supplemental response to this request, and other
similar requests, applicant stated:
There are no responsive, nonprivileged documents in
Applicant's possession, custody or control, as of the
date of these supplemental responses. Applicant will
produce such documents if and when they come into his
possession, custody or control.

Supplemental Response to Request for Production of Documents
No. 1. Opposer also pointed to applicant's responses to
certain interrogatories as confirmation that applicant had
no basis to assert a bona fide intention to use the mark in
commerce. To illustrate, applicant was asked in
Interrogatory Nos. 21, 22, and 23 to “[s]tate the basis for
Applicant’s bona fide intent to use Applicant’s mark for
video post production services, namely editing of music
videos,” “television commercials,” and “motion pictures.”
Applicant provided the following response to each of those
three interrogatories:
Applicant's bona fide intent to use the VIGNETTE
EDITORIAL mark in connection with the identified
services is established by Applicant's having
signed a declaration to that effect in connection
with filing the application.

On this basis, opposer moved for summary judgment on the
amended claim.
Applicant responded to opposer's motion for summary
judgment by submitting his own declaration ("Marino
Declaration"), attesting to the various activities applicant
has engaged in as evidence of his bona fide intention to use
his applied-for mark in commerce, including but not limited
to directing and producing a music video for a band,
supervising construction of commercial space, creating an
Internet web site as a conduit for prospective clients to
learn more about applicant’s services, and soliciting
potential customers.
The Board denied opposer's motion for summary judgment,
finding that applicant's declaration was sufficient to raise
a genuine issue of material fact as to his bona fide
intention to use the mark in commerce. The Board cautioned
applicant, however, that he would be precluded at trial from
relying on evidence which was not produced in response to
discovery requests properly propounded by opposer, and
cited, inter alia, Presto Products, Inc. v. Nice Pak
Products, Inc., 9 USPQ2d 1895 (TTAB 1988) (“Presto
Products”) in support of that proposition.
We now turn to opposer's request for reconsideration.
Opposer contends that the Marino Declaration asserts new
facts that were not furnished with applicant's responses to
opposer’s discovery requests and, therefore, it was improper
for the Board to rely on these assertions in applicant's
declaration as a basis for denying opposer's motion for
summary judgment. In support of its request for
reconsideration, opposer relies on the same case cited by
the Board in its order, Presto Products, for the proposition
that a party cannot introduce previously undisclosed
evidence to defeat a motion for summary judgment.
First, we consider whether the holding in Presto
Products prohibits consideration by the Board on summary
judgment of the Marino Declaration because it contains
information that was not disclosed during discovery.
Essentially, opposer has moved to strike the Marino
Declaration pursuant to Fed. R. Civ. P. 37(c)(1).
Therefore, in determining whether Presto Products applies
here, both cases must be analyzed within the framework
provided by Federal Rule 37(c)(1). Federal Rule 37(c)(1)
states, in pertinent part:

A party that without substantial justification
fails to disclose information required by Rule
26(a) or 26(e)(1), or to amend a prior response to
discovery as required by 26(e)(2), is not, unless
such failure is harmless, permitted to use as
evidence at a trial, at a hearing, or on a motion
any witness or information not so disclosed. In
addition to or in lieu of this sanction, the
court, on motion and after affording the other
party to be heard, may impose other appropriate
sanctions.

Presto Products involved the introduction of evidence
on summary judgment which had previously been withheld
during discovery, based on the claim that the evidence was
protected by attorney-client privilege. Applicant in the
Presto Products case had moved for summary judgment on
opposer's claim of likelihood of confusion. As evidence of
its good faith adoption of its mark, applicant submitted the
affidavit testimony of its officials regarding the legal
advice given to them by applicant's trademark counsel during
the process of selecting applicant’s mark. Opposer moved to
strike the affidavit on the ground that applicant had
refused to produce the underlying opinion during discovery
based on the attorney-client privilege. The Board granted
the motion to strike because the facts disclosed in the
affidavit were not disclosed in discovery due to the claim
of attorney-client privilege. Presto Products, supra, n.5.
We find that the present case is distinguishable from
Presto Products. In Presto Products, the applicant had
previously refused to provide the information sought in
discovery, and had stated unequivocally that such
information would not be provided. In light of such a clear
refusal, there was no basis for the Board to allow applicant
to then submit such evidence, even though the submission was
being made prior to trial in the context of a summary
judgment motion. It is well established that a party cannot
rely on purported communications and discussions with
counsel, while at the same time refusing to provide, or
selectively providing, those communications. See e.g.,
Afro-Lecon v. United States, 820 F.2d 1198 (Fed. Cir. 1987).
Thus, because the applicant had asserted the attorney-client
privilege for refusing to provide documents, and because
such privilege cannot be asserted selectively, the Board
refused to allow applicant later, in the context of its
summary judgment motion, to rely on documents for which it
had previously asserted the privilege.
Within the context of Federal Rule 37(c)(1), the
Board’s ruling in Presto Products essentially amounts to a
finding that applicant’s failure to disclose was not
substantially justified or was not harmless. Thus, in cases
where the offending party had absolutely refused to disclose
the previously withheld evidence (as in instances such as
Presto Products where the attorney-client privilege had been
asserted), it is entirely appropriate to sanction the
offending party by precluding it from relying on the newly
disclosed evidence on summary judgment.
In the case before us, however, applicant merely said
that such documents were unavailable, and/or referred to his
declaration in his application of a bona fide intention to
use his mark in responding to interrogatories asking for
information as to the basis for his intent. This case does
not involve an outright statement that the information would
not be provided, but rather a failure to supplement
discovery responses. Although applicant clearly could have
been more forthcoming in his responses to interrogatories,
we do not believe that applicant’s delay in providing this
information requires us to exclude his declaration. In the
circumstances before us here, it would be unfair to
foreclose applicant from the opportunity to amplify the
assertions made in his previous discovery responses in order
to defend against opposer's motion for summary judgment.4
Thus, in cases such as the present one, where applicant
does not unequivocally refuse to provide the requested

4 We make clear, however, that parties have a duty to supplement
their discovery responses when information or documents come to
their attention. See Fed. R. Civ. P. 26(e) and TBMP § 408.03
(2d. ed. rev. 2004). In the event that applicant fails to
properly supplement his discovery responses with any additional
information or documents that were requested in discovery in
either the interrogatories or document production requests,
including any additional information to that provided in his
declaration submitted in response to the summary judgment motion,
applicant will be precluded from relying on such information or
documents at trial.

information, we believe that it would be unduly harsh to
impose the preclusion sanction under Federal Rule 37(c)(1).
This is particularly true given that discovery responses may
be supplemented at any time, even during trial, or after
receipt of a summary judgment motion. To apply the
preclusion sanction under Federal Rule 37(c)(1) here or in
similar circumstances would amount to elevating form over
substance since no practical distinction exists between
consideration of information provided as part of a
responsive brief to a summary judgment motion or information
provided in supplemental responses to discovery that are
submitted at the same time as a responsive brief.
Therefore, we find that Presto Products does not apply
to the circumstances of the present case. The holding in
Presto Products is limited to the particular factual
circumstances of that case –- that a party cannot introduce
evidence on summary judgment affirmatively withheld during
discovery. Thus, the Board’s July 26, 2005 order is
modified to the extent that the citation of Presto Products
is not applicable.
Because we find no error in our consideration of the
Marino Declaration in determining opposer's motion for
summary judgment, opposer’s request for reconsideration is
denied. See Trademark Rule 2.127(b).
In view of the circumstances of this case, the Board
hereby sua sponte reopens discovery for opposer only.
Accordingly, the discovery (for opposer only) and
testimony periods are reset as follows:
THE PERIOD FOR DISCOVERY FOR OPPOSER
ONLY TO CLOSE: 1/15/06

30-day testimony period for party in
position of plaintiff to close: 4/15/06

30-day testimony period for party in
position of defendant to close: 6/14/06

15-day rebuttal testimony period for
plaintiff to close: 7/29/06

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.