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
Testimony and Briefing Stages are inter-related for the purpose of
establishing evidentiary basis for positions in TTAB Proceedings.
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.
- 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).
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).
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).
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.
- 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.
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.
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
- 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).
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
- 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.
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
Nexis media articles showing differences in categorization or
characterization or products can be offered by Notice of Reliance.
Interrogatory Responses (and documents referred to therein) and
Requests for Admission Responses can be offered by Notice of Reliance.
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.
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.
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
- 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
and advertising/promotion expenditures of Plaintiff under Plaintiff's
- Don't stipulate to entry of each other's sales and advertising/promotional expenditures.
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
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.
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.
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
- 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
- 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.
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.
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.
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
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.
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.
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.