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Strategies For Gathering, Filing and Objecting To Evidence In TTAB Proceedings: Perspective of Party In Position Of Defendant
Charles P. LaPolla, Esq. - 12/10/1999
1. Introduction:

  • Pleading, Discovery, Testimony and Briefing Stages are inter-related for the purpose of establishing evidentiary basis for positions in TTAB Proceedings.

  • It is important to develop strategies early and take appropriate steps at each stage of proceeding to gather the type of evidence and to seek to enter it in a manner which will properly implement such strategies.

2. Pleadings:

  • Under Board practice, an Opposer's prior issued registration on the Principal Register will be presumed to have priority over the Applicant's pending application or any claimed common law use in the absence of a counterclaim for cancellation or separate petition to cancel. King Candy Co. v. Eunice King's Kitchen, Inc., 182 U.S.P.Q. 108 (CCPA 1974); Flow Technology, Inc. v. Picciano, 18 U.S.P.Q.2d l970 (TTAB 1991).
  • Counterclaim asserting priority can be made without claim of likelihood of confusion or in combination with an alternative or hypothetical claim of likelihood of confusion. Lipton Industries, Inc. v. Ralson Purina, 213 U.S.P.Q. 185 (CCPA 1982).
  • Any attack on the validity of a plaintiff's registration in either an opposition or a cancellation proceeding must be in the form of a counterclaim (or separate petition) for cancellation. Trademark Rule 2.106(b)(2); In re National Data Corp., 222 U.S.P.Q. 515 (TTAB 1984); Giant Food, Inc. v. Standard Terry Mills, Inc., 229 U.S.P.Q. 955 (TTAB 1986).
  • A counterclaim to cancel a plaintiff's registration is compulsory if grounds exist at the time when the Answer is filed. If grounds are known, counterclaim must be filed with the Answer or if grounds become subsequently learned, the counterclaim must be promptly asserted. Trademark Rule 2.106(b)(2)(i) and 2.114(b)(2)(i); Vitaline Corp. v. General Mills, Inc., 13 U.S.P.Q.2d 1172 (Fed. Cir. 1984); Libertyville Saddle Shop, Inc. v. E Jeffries & Sons, Ltd., 22 U.S.P.Q.2d 1594 (TTAB), further proc, 24 U.S.P.Q.2d 1376 (TTAB 1992).
  • Allegation of fraud must be plead with particularity in accordance with Fed. R. Civ. P. 9(b), La Maur, Inc. v. Computer Styles, Inc., 169 U.S.P.Q. 495 (TTAB 1971), amended, 170 U.S.P.Q. 159 (TTAB 1971).
  • The Board will not consider non-pleaded claims unless other party has failed to object and allowed claim to be tried by implied consent. CCI Corp. v. Continental Communications, Inc., 184 U.S.P.Q. 445 (TTAB 1974); Dep, Inc. v. Litton Industries, Inc., 185 U.S.P.Q. 177 (TTAB 1975).
  • Affirmative Defenses must be plead, e.g., laches, estoppel, and acquiesce. Duffy-Mott Co. v. Cumberland Packing Co., 165 U.S.P.Q. 422 (CCPA 1970); U.S. Olympic Comm. v. Bata Shoe Co., Inc., 225 U.S.P.Q. 340 (TTAB 1984).
  • Failure to plead is not necessarily always fatal because Board is liberal about granting leave for amended pleadings upon motion. Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d 1503 (TTAB 1993).
  • Board under some circumstances may allow amendment to subsequently assert counterclaim for cancellation deemed compulsory, especially where pertinent facts are subsequently learned and there is not undue prejudice to other party. See's Candy Shops, Inc. v. Campbell Soup Co., 12 U.S.P.Q.2d 1395 (TTAB 1989); Mitek Corp. v. Woods Indus., Inc., 41 U.S.P.Q.2d 1307 (TTAB 1996); Chapman, Tips from the TTAB: Amended Pleadings: The Right Stuff, 81 TMR 302 (1991).
  • Board may consider issues not raised by pleadings when they are tried by the express or implied consent of the parties. Colony Foods, Inc. v. Sagemark, Ltd., 222 U.S.P.Q. 185 (Fed. Cir. 1984); Laboratoires du Dr. N.G. Payot Etablissement v. Southwestern Classic Collection, Ltd., 3 U.S.P.Q.2d 1600 (TTAB 1987).
  • In view of the foregoing, it is necessary for the party in position of Defendant to think early about defenses such as priority, or grounds for alleging the invalidity of the Plaintiff's mark and registration, e.g., descriptiveness or genericness of Plaintiff's mark, fraud in the procurement of Plaintiff's registration, affirmative defenses, etc.

3. Discovery:

  • Even in the absence of a Motion to Compel Discovery, a party which responds to discovery by stating that it lacks information or by stating objections may be barred from later introducing the information provided that the other party objects upon the offering thereof upon introduction and in its Brief. Weiner King, Inc. v. Weiner King Corp., 204 U.S.P.Q. 820 (CCPA 1980); Super Valu Stores Inc. v. Exxon Corp., 11 U.S.P.Q.2d 1539 (TTAB 1989).
  • As a sanction for failing to comply with a Board Order granted in response to a Motion to Compel Discovery, the Board can also prohibit the disobedient party from introducing the designated matter in evidence. Trademark Rule 2.120(g); Fed. R.Civ. 37(b)(2);TBMP ' 527.01.
  • Supporting evidence should be assembled and produced during discovery to prevent the potential that it might be excluded later from evidence for failure to do so. Your Discovery Requests should also seek information on subjects potentially harmful to your case since your opponent's failure to provide adequate response may form the basis for subsequently excluding entry of such evidence.
  • Discovery plays a central role in the gathering of evidence and should be engaged in with a view towards the type of favorable evidence which will help your case substantively and will be accepted by the Board procedurally during your subsequent testimony period.
  • Pursuant to Trademark Rule 2.120(j), all or portions of the discovery depositions of a party (or officer, director or manager thereof) and Responses to Interrogatories (and attached documents referred to therein) and Responses to Requests for Admissions can be offered into evidence by an adverse party by Notice of Reliance. Once this is done, the other party can also introduce other portions of the same depositions, Responses to Interrogatories, and Responses to Requests for Admissions if in fairness it would be misleading not to do so. Trademark Rule 2.120(j).
  • Pursuant to Trademark Rule 2-120(j), discovery depositions of a non-party can be offered into evidence by Notice of Reliance if the person who gave the testimony is dead or is (non-intentionally) out of the U.S. or unable to testify because of age, infirmity, imprisonment or cannot be served with a subpoena during the testimony period of the offering party.
  • It should keep in mind that when obtaining discovery from your opponent or producing discovery to your opponent, it may possibly be used by your opponent or you as evidence during testimony periods.
  • A Motion to Compel Discovery shall be filed with respect to inadequate Discovery Responses from your opponent on subjects likely to be helpful to your case.
  • A Motion to Compel Discovery with respect to inadequate Discovery Responses from your opponent on subjects likely to be harmful to your case, should probably not be filed. Despite the potential for avoiding unfair surprise by late introduction of evidence, it does not seem beneficial to press your opponent for evidence that is harmful to your case and you can seek to preclude entry of such late evidence for failure of your opponent to have produced it in response to Discovery Requests even though no Motion to Compel Discovery was filed.

4. Review of Certain Types of Evidence Favorable for Defendant to Gather During Discovery And How to Get it In Evidence

1. Similar Third Party marks

1. Type of Evidence of Third Party Marks

  • Evidence of similar third party marks in the form of status and title copies of third party marks or Nexis media articles referring to third party marks can be filed with Notice of Reliance during testimony period as official records and/or printed publications under Trademark Rule 2.122(e). Mack Trucks, Inc. v. California Business News, Inc., 223 U.S.P.Q. 164 (TTAB 1984); Weyerhaeuser Co. v. Katz, 24 U.S.P.Q.2d 1230 (TTAB 1992).
  • Search reports containing similar third party marks cannot be filed by Notice of Reliance, but can be offered via a witness during your testimony period, although they may be objected to as hearsay and for lack of foundation when the person who prepared the report is not called as a witness. Burns Philip Food, Inc. v. Modern Products, Inc., 24 U.S.P.Q.2d 1157 (TTAB 1992), aff'd, 28 U.S.P.Q.2d 1687 (Fed. Cir. 1993); St. Louis Janitor Supply Co. v. Abso-Clean Chemical Co., 196 U.S.P.Q. 778 (TTAB 1977).
  • Evidence of third party marks in the form of third party registrations, search reports or Nexis media articles can be admitted only to establish that a portion common to the marks involved has a normally understood and well-known meaning and that the inclusion of such term in both marks should be discounted in the likelihood of confusion analysis. Red Carpet Corp. v. Johnstown American Enterprises, Inc., 7 U.S.P.Q.2d 1404, 1406 (TTAB 1988).
  • Evidence of third party marks in the form of third party registrations, search reports or Nexis media articles does not constitute evidence that the marks are in use for any goods or services and therefore is not considered by the Board to be probative for showing a crowded field of similar marks and weakness of the Plaintiff's mark. American Hospital Supply Corp. v. Air Products & Chemicals, Inc., 194 U.S.P.Q. 340 (TTAB 1997); Charrette Corp. v. Bowater Communication Papers, Inc., 13 U.S.P.Q.2d 2040 (TTAB 1989); National Football League v. Jasper Alliance Corp., 16 U.S.P.Q.2d 1212 (TTAB 1990).
  • If it is desired to introduce evidence of third party marks as evidence that there is a crowded field of third party marks and that the Plaintiff's mark is weak, the Board wishes to see evidence of actual use of the mark, preferably in the form of product sample, labels, tags or promotional literature, the nature of the goods or services for which the mark is used and the duration and extent of use of the mark. Con-Stan Indus., Inc. v. Nutri-System Weight Loss, 212 U.S.P.Q. 953 (TTAB 1981); MRI Systems Corp. v. Wesley,-Jenssen, Inc., 189 U.S.P.Q. 214 (TTAB 1975); Smith Bros. Mfg. Co. v. Stone Mfg. Co., 177 U.S.P.Q. 462 (CCPA 1973).

2. Ethical Issues Involved With Third Party Use Investigations

  • Rule 4.2 ABA Model Rules of Professional Conduct provides, "In representing a client, lawyer shall not communication about the subject of the representation with a party the lawyer knows to be represented by another lawyer in the matter, unless the lawyer has the consent of the other lawyer or is authorized by law to do so."
  • Rule 4.3 ABA Model Rules of Professional Conduct provides, "In dealing on behalf of a client with a person who is not represented by counsel, a lawyer shall not state or imply that the lawyer is disinterested. When the lawyer knows or reasonably should know that the unrepresented person misunderstands the lawyer's role in the matter, the lawyer shall make reasonable efforts to correct the misunderstanding."
  • A majority of courts considering Rule 4.2 do not bar ex parte contacts by an attorney or Investigator acting on an attorney's behalf with third parties. Olson v. Snap Products, Inc., 183 F.R.D. 539 (D.Min. 1998).

In the context of investigations of third parties by attorneys or investigators acting on an attorney's behalf, some courts have held that ABA Model Rule 4.3 dictates that the attorney or investigator must: (1) fully disclose their representative capacity to the third party, (2) state the reason for seeking the interview as it concerns the attorney's client and the adverse party, (3) inform the individual of his or her right to refuse to be interviewed, (4) inform the person that he or she has the right to have their own counsel present, and finally (5) may not under any circumstances seek to obtain attorney-client or work product information from the third party. In re Environmental Insurance, 252 N.J. Super. 510, 600 A.2d 165 (N.J. Super. Ct. Law Div. 1991); McCallum v. CSX Trans., Inc., 149 F.D.R. 104 (M.D.N.C. 1993). 3. Hearsay Involved With Third Party Use Investigations

  • Even if investigations of third party marks result in evidence of use of the marks, the duration and extent of such use and the type of goods or services, it will often involve hearsay in the form of queries and responses by telephone.
  • An effort can be made to overcome such hearsay objections involved with third party use investigations by employing professional Investigator and calling the Investigator as an expert witness during your testimony period and relying upon Fed. R. Civ. P. 703 in the same way that hearsay in survey reports is typically allowed in evidence. An expert's opinion or inference can be based upon hearsay facts or data of the type reasonably relied upon by such an expert. However, it is questionable whether professional Investigators of third party trademark use qualify as experts or are rendering an opinion or drawing an inference of the type contemplated by Rule 703. It is also questionable whether the methodology of a professional Investigator will meet the rigorous standards applied to survey evidence.
  • Even if evidence resulting from an investigation of third party marks is deemed by the Board to constitute hearsay, as in the case of all substantive evidentiary objections, the Board will usually not strike the evidence but rather (unless waived) will consider the substantive objections in its evaluation of the probative value of the evidence. Marshall Field & Co. v. Mrs. Fields Cookies, 25 U.S.P.Q.2d 1321 (TTAB 1992).
  • The best method of obtaining evidence of third party use of similar marks from the Board's perspective, is to take testimony depositions during your testimony period, either voluntarily or via subpoenas of persons with personal knowledge of the extent and duration of use of the mark and the nature of the goods and services involved and to offer documents supporting such use during the testimony deposition.

2. Evidence of Differences in Nature of Products, Channels of Distribution and Classes of Purchasers

  • The Board has held that goods or services must be assumed to travel in all known channels of trade and to be sold or rendered to all normal purchasers for the goods or services of the type set forth in the statement of goods or services in the applications or registrations at issue and the Board will consider the statement of goods or services set forth in the applications or registrations regardless of what the record may reveal as to the particular nature of the parties' goods or services or the actual trade channels or classes of purchasers. Jockey International, Inc. v. Butler, 3 U.S.P.Q.2d 1607 (TTAB 1987).
  • Even if the statements of goods or services appear to be the same or to overlap, the Defendant must give a college try at gathering and presenting evidence of differences in the nature of products, channels of trade, and classes of purchasers because evidence of actual marketplace practices has been held to be probative of the extent to which the goods or services listed in the statements of goods or services are in conflict. See, e.g., In re Nobody's Perfect Inc., 44 U.S.P.Q.2d 1054 (TTAB 1997); In re E.I. du Pont de Nemour & Co., 177 U.S.P.Q. 563 (CCPA 1973).
  • Nexis media articles showing differences in categorization or characterization or products can be offered by Notice of Reliance.
  • Opponent's Interrogatory Responses (and documents referred to therein) and Requests for Admission Responses can be offered by Notice of Reliance.
  • Opponent's documents produced in response to Request for Production of Documents can be offered by Notice of Reliance during your testimony only if they constitute printed publications or official records or if they were offered during cross-examination of the discovery deposition of your adversary or they have been authenticated by your adversary in Responses to Requests for Admission or they are referred to in your opponent's Interrogatory Responses. Otherwise, they may be offered during cross-examination of your opponent's testimony deposition or can be offered in a testimony deposition taken by you of your opponent.

3. Dissimilarities in Meanings and Connotations of Terms in the Marks

  • Evidence set forth in opponent's Responses to Interrogatories (and documents referred to therein) and Requests for Admission can be filed by Notice of Reliance.
  • Nexis or other media articles and dictionary definitions can be entered by Notice of Reliance during your testimony as printed publications.
  • Direct testimony and documents can be offered during your testimony depositions taken during your testimony period.

4. Sophistication of Purchasers

  • Evidence set forth in your opponent's Responses to Interrogatories (and documents referred to therein) or Responses to Requests for Admissions can be filed by Notice of Reliance during your testimony period.
  • Users manuals, price lists, product literatures and other documents obtained from adversary during discovery can be offered by Notice of Reliance only if they constituted printed publications or official records or if they were offered during cross-examination during discovery deposition of your adversary or they have been authenticated by Responses to Requests for Admission or they are referred to in your opponent's Interrogatory Responses. Otherwise, they can be offered during cross-examination in your opponent's testimony deposition or can be offered in the direct of a testimony deposition taken by you of your opponent.
  • Direct testimony and documents can be offered during your testimony deposition taken during your testimony period.

5. Evidence Harmful to Party in Position of Defendant And How To Seek To Prevent Entry of It

1. Sales and advertising/promotion expenditures of Plaintiff under Plaintiff's mark

  • Don't stipulate to entry of each other's sales and advertising/promotional expenditures.
  • Your opponent's annual reports and other corporate records are not official records or printed publications which can be filed by your adversary by Notice of Reliance. If your adversary does so, you must raise your objection in your Brief.
  • Try not to file parts of your opponent's Interrogatory Responses or Requests for Admission Responses by Notice of Reliance which, in fairness, would allow your adversary to file other portions of his own Interrogatories or Requests for Admission Responses which pertain to sales and advertising/promotion figures.
  • If Plaintiff produces a list of annual sales and advertising/promotion figures in response to an Interrogatory or Document Request in Discovery, then request production in discovery of underlying documentation to support such figures.
  • If Plaintiff offers a list of annual sales and advertising/promotion figures with a witness during Plaintiff's testimony period, objection may be possible on some of the following grounds:
    • Plaintiff failed to produce underlying documents substantiating such figures during discovery in response to Discovery Requests seeking such materials.
    • Witness lacks personal knowledge as to the preparation of the figures because the witness was not employed with Plaintiff during all or some of the years to which the figures pertain or had no job duties related to or other knowledge as to the procedure for the preparation of figures for some or all of the years to which the figures pertain.
  • Attempt to prevent Plaintiff's utilization of the business record exception under Fed. R. Evid. ' 803(8) by noting or seeking to establish through cross-examination that Plaintiff failed to lay foundation as to how the summary figures were created and that it was a regular business practice of Plaintiff to maintain the figures and for employees such as the witness to rely on them. Peopleware Systems, Inc v. Peopleware, Inc., 226 U.S.P.Q. 320 (TTAB 1985).

2. Survey Evidence Presented By Plaintiff

  • Opponent's survey expert should be cross-examined during discovery deposition and/or testimony deposition in an effort to establish evidence, and arguments can be made in Brief that:
  • Survey experts qualifications are not adequate.
  • The design, methodology and execution of survey do not comply with standards set forth in Handbook of Recommended Procedures for Trial of Protracted Cases.
  • Survey results do not support plaintiff's position.

3. Evidence of Actual Confusion

  • Evidence of actual confusion can often be objected to as hearsay if party which personally experienced confusion is not called by plaintiff as witness in testimony deposition.
  • Evidence of actual confusion in the form of misdirected telephone calls or letters can be objected to on the basis of hearsay if the persons who placed such calls or forwarded such letters are not called as witness by plaintiff in testimony depositions.

6. Procedures of Presenting or Objecting to Plaintiff's Evidence

  • Do not agree to stipulated entry of evidence likely to be harmful to defendant.
  • Do not agree to stipulated entry of evidence likely to be burdensome for plaintiff to establish and enter in absence of equivalent quid pro quo.
  • Procedural objections to evidence filed by opponent by Notice of Reliance, if curable, must be timely raised by Motion to Strike. If not curable, they can be raised in Brief.
  • Substantive objections to evidence filed by opponent by Notice of Reliance must be raised only in Brief.
  • Procedural objections to opponent's testimony based on untimeliness or improper notice must be raised at deposition and by Motion to Strike. Other procedural objections to opponent's testimony deposition must be promptly raised at the deposition and in Brief, but will be recognized only if they cause substantial injury.
  • Substantive objections to testimony and evidence offered by opponent during testimony should be objected to at testimony deposition but are not required to be unless to do so would provide basis to alleviate grounds for objection.
  • Substantive objections to testimony and evidence offered by opponent during testimony must always be raised in Brief whether or not they were previously raised at the testimony deposition.
  • Objections should be raised in your Brief to any exhibits attached to or referred to in opponent's Brief which were not otherwise properly filed by Notice of Reliance or offered at testimony deposition.
  • Objections should be raised to any testimony or exhibit offered by opponent during rebuttal testimony which exceed the purpose of rebuttal of testimony or evidence presented during your testimony period. Such objection should be raised at the rebuttal.



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