`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`
`
`
`
`
`
`
`
`
`Mailed: April 29, 2016
`
`Opposition No. 91220956
`
`Unique Photo Inc.
`
`v.
`
`
`
`
`
`CME
`
`
`
`Christen M. English, Interlocutory Attorney:
`
`Sanjay Agarwal
`
`This case now comes up on Opposer’s motion, filed January 28, 2016, to compel
`
`Applicant to: (1) supplement his responses to Interrogatory Nos. 5, 7, 10, 11, 14, 15,
`
`17-20 and 26; (2) produce documents in response to Document Request Nos. 1, 6, 7,
`
`20, 22, and 29; and (3) verify his interrogatory responses “without qualification.” 10
`
`TTABVUE 14. Applicant opposes the motion.
`
`The Board has carefully considered all of the parties’ arguments, presumes the
`
`parties’ familiarity with the factual bases for their filings, and does not recount the
`
`facts or arguments, except as necessary to explain the decisions herein.
`
`As an initial matter, the Board finds that Opposer made a good faith effort to
`
`resolve its discovery dispute prior to filing the motion to compel. Nonetheless, in
`
`many instances, Opposer quibbles over semantics. Such arguments elevate form over
`
`substance and needlessly expend the Board’s limited resources. Opposer also argues
`
`that “Applicant has continually evaded Opposer’s requests [to extend proceedings] in
`
`
`
`
`
`Opposition No. 91220956
`
`what amounts to a greatly reduced chance for successful completion of discovery.” 10
`
`TTABVUE 12-13. This argument is not well-taken. Opposer did not serve discovery
`
`requests until the last day of the discovery period, and therefore, Opposer has itself
`
`to blame if the “successful completion of discovery” has been “greatly reduced.” Cf.
`
`Am. Vitamin Prods. Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1316 n.4 (TTAB 1992)
`
`and TBMP §403.04 (2015).
`
`With the foregoing in mind, the Board addresses in turn below each of the
`
`discovery requests at issue in Opposer’s motion.
`
`Interrogatory No. 5
`
`The Board finds that Applicant’s response to this interrogatory, as clarified in
`
`Applicant’s letter of January 25, 2016, is sufficient. Accordingly, Opposer’s motion to
`
`compel is DENIED with respect to Interrogatory No. 5.
`
`Interrogatory No. 7
`
`This interrogatory asks Applicant to identify “all advertising and promotional
`
`activities conducted by Applicant or Applicant’s business(es) with respect to
`
`Applicant’s goods and services using the mark UUNIQUE in the United States, and
`
`provide all documents which refer or relate to such advertising and promotional
`
`activities.” 10 TTABVUE 25. Because the request seeks both information and
`
`documents, it is in the nature of a combined interrogatory and document request.
`
`While the better approach would have been to serve an interrogatory requesting only
`
`information and a separate document request seeking documents, this is not a basis
`
`on which to deny Opposer’s motion.
`
`
`
`-2-
`
`
`
`Opposition No. 91220956
`
`
`In response to this discovery request, Applicant indicates that “[t]he trademark
`
`UUnique was represented at CES 2015 organised [sic] by Brightstar in Las Vegas….”
`
`10 TTABVUE 40. Applicant, however, has not described the specific promotional
`
`activities in which he engaged at the conference (e.g. operating a trade show booth,
`
`handing out and/or testing product samples, distributing promotional literature,
`
`giving a speech about
`
` products, etc.). Applicant also has not produced any
`
`documents or stated that he does not have any documents “which refer or relate to
`
`such advertising and promotional activities.”
`
`Accordingly, Opposer’s motion to compel is GRANTED with respect to
`
`Interrogatory No. 7. Within THIRTY DAYS from the mailing date of this order,
`
`Applicant is ordered to serve: (i) a supplemental written and verified response to
`
`Interrogatory No. 7 describing the activities in which he engaged at the CES 2015
`
`conference and indicating whether he has any responsive documents; and (ii) any
`
`responsive documents.1
`
`Interrogatory No. 10
`
`Applicant is an individual. It is reasonable to read Applicant’s response to
`
`Interrogatory No. 10 as identifying himself as the person most knowledgeable about
`
`his use or plans to use the mark
`
`. For this reason, the Board finds that
`
`
`1 The Board cannot compel a party to produce what he does not have, but it is foreseeable
`
`that Applicant may have responsive documents given that his mark
`represented at CES 2015.” 10 TTABVUE 40.
`
` “was
`
`
`
`-3-
`
`
`
`Opposition No. 91220956
`
`Applicant’s response needs no further supplementation, and Opposer’s motion is
`
`DENIED with respect to Interrogatory No. 10.
`
`Interrogatory No. 11
`
`The Board has reviewed Applicant’s response to this interrogatory and finds that
`
`it is sufficient. Accordingly, Opposer’s motion is DENIED with respect to
`
`Interrogatory No. 11.
`
`Interrogatory Nos. 14 and 15
`
`Interrogatory 14 asks Applicant to “[i]dentify and describe each poll, survey,
`
`consumer study, or other market research project directed to the United States
`
`commenced or completed by Applicant or by Applicant’s business(es) with respect to
`
`the UUNIQUE mark.” 10 TTABVUE 26. Interrogatory 15 asks Applicant to identify
`
`any third parties who “cooperated with” him in any polls, surveys, consumer studies
`
`or market research identified in response to Interrogatory No. 14 and to “describe the
`
`nature and details of such cooperation.” 10 TTABVUE 27.
`
`In response to Interrogatory No. 14, Applicant stated that he “made a survey on
`
`the trademarks that have already been registered that [contain] the word ‘unique[,]’”
`
`and he reproduced the results of this “survey” in the form of a chart. 10 TTABVUE
`
`41-44. With respect to Interrogatory No. 15, Applicant indicated that “[t]here have
`
`been on [sic]2 third parties that cooperated in any way with me in relation to the
`
`above table.” 10 TTABVUE 44.
`
`
`2 In his letter of January 25, 2016, Applicant acknowledged that his use of the word “on” was
`a typographical error and that “there have been no third parties that cooperated in any way
`
`
`
`-4-
`
`
`
`Opposition No. 91220956
`
`
`To “survey” means “to ask (many people) a question or a series of questions in
`
`order to gather information about what most people do or think about something.”
`
`http://www.merriam-webster.com/dictionary/survey (last visited April 27, 2016). In
`
`the context of trademark litigation “a survey is designed to prove the state of mind of
`
`a prospective purchaser.” 6 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND
`
`UNFAIR COMPETITION, §32:163 (4th ed. March 2016 update). It is clear that Applicant’s
`
`search for registered trademarks incorporating the word “unique” is not a survey.3
`
`Nor does the search qualify as a poll, consumer study, or market research because
`
`the search did not require any inquiries or research of consumers. Accordingly, the
`
`trademark search that Applicant identified is not responsive to Interrogatory No. 14.
`
`For this reason, Opposer’s motion to compel with respect to Interrogatory No. 14
`
`is GRANTED only to the extent that Applicant is ordered within THIRTY DAYS of
`
`the mailing date of this order to provide a written supplemental and verified response
`
`identifying any surveys, polls, consumer studies or market research (all of which
`
`require either consumer inquiry or research) that he has conducted with respect to
`
`his involved mark UUNIQUE. To the extent Applicant has not engaged in any such
`
`
`with [him] in relation to the table [identified in response to Interrogatory No. 14].” 10
`TTABVUE 97 (emphasis added).
`3 Opposer, who is represented by counsel, surely knew that the search that Applicant
`identified in response to Interrogatory No. 14 did not qualify as a survey, particularly as
`Applicant identified the same search in response to Interrogatory No. 16, which specifically
`inquired as to trademark searches. By bringing a motion to compel with respect to
`Interrogatory Nos. 14 and 15, Opposer has wasted the Board’s limited time and resources.
`
`
`
`
`-5-
`
`
`
`Opposition No. 91220956
`
`activities, Applicant shall so state. Opposer’s motion with respect to Interrogatory
`
`Nos. 14 and 15 is otherwise DENIED.
`
`Interrogatory No. 17
`
`Interrogatory No. 17 is overbroad to the extent that it is not limited to Applicant’s
`
`involved mark. The interrogatory also is encompassed by Interrogatory No. 7, and
`
`the Board has ordered Applicant to supplement his response to Interrogatory 7,
`
`particularly with respect to his activities at the CES 2015 trade show.
`
`Accordingly, Opposer’s motion with respect to Interrogatory No. 17 is DENIED to
`
`the extent Opposer seeks information regarding marks other than Applicant’s mark
`
`involved in this proceeding4 and MOOT to the extent this interrogatory is
`
`encompassed by Interrogatory No. 7.
`
`Interrogatory No. 18
`
`The Board has reviewed Applicant’s response to this interrogatory and finds it
`
`sufficient. Accordingly, Opposer’s motion with respect to Interrogatory No. 18 is
`
`DENIED.
`
`Interrogatory No. 19
`
`This interrogatory seeks the “correct phonetic pronunciation of Applicant’s mark
`
`UUNIQUE, its phonetic usage by consumers, and its intended meaning in the context
`
`of the goods offered under this mark.” 10 TTABVUE 27. The Board finds that
`
`
`4 Applicant did not object to this interrogatory on the ground that it is overbroad, but the
`Board will not compel a party to produce information that falls outside the scope of this
`proceeding.
`
`
`
`-6-
`
`
`
`Opposition No. 91220956
`
`Applicant’s response regarding the “correct phonetic pronunciation of the mark”5 and
`
`its “intended meaning” is sufficient. Applicant, however, has not responded to the
`
`interrogatory to the extent it seeks information regarding the “phonetic usage [of
`
`Applicant’s mark] by consumers.” 10 TTABVUE 48. Accordingly, Opposer’s motion
`
`with respect to Interrogatory 19 is GRANTED.
`
`Applicant is ordered within THIRTY DAYS of the mailing date of this order to
`
`supplement his response to Interrogatory No. 19 regarding consumers’ phonetic
`
`usage of Applicant’s mark. The Board notes that the involved application was not
`
`filed based on use, but rather was filed pursuant to Section 66(a) of the Trademark
`
`Act, and therefore, it is feasible that there has been no consumer usage of Applicant’s
`
`mark in the United States. If this is the case, Applicant must so state in his
`
`supplemental written and verified response.
`
`Interrogatory No. 20
`
`This interrogatory asks Applicant to “[s]tate all known facts in support of
`
`Applicant’s contentions in paragraphs 11 through 34 of the Answer to Notice of
`
`Opposition dated April 30, 2015.” 10 TTABVUE 27. This request is comparable to
`
`asking Applicant to present his case-in-chief, which is premature at this time because
`
`Applicant’s trial period has not yet opened. Accordingly, Opposer motion is DENIED
`
`with respect to Interrogatory 20.
`
`
`5 The parties should note that “[f]or purposes of [a] § 2(d) analysis, there is no ‘correct’
`pronunciation of a mark because it is impossible to predict how the public will pronounce a
`particular mark[.]” TMEP § 1207.01(b)(iv) (Oct. 2015) and case cited therein.
`
`
`
`-7-
`
`
`
`Opposition No. 91220956
`
`
`Interrogatory No. 26
`
`In response to this interrogatory, Applicant stated that he “consulted a number of
`
`persons” in responding to Opposer’s interrogatories, but Applicant did not identify
`
`those persons as required by the interrogatory. 10 TTABVUE 49. Accordingly,
`
`Opposer’s motion to compel is GRANTED with respect to Interrogatory No. 26.
`
`Within THIRTY DAYS of the mailing date of this order, Applicant must provide
`
`Opposer with a supplemental written and verified response to Interrogatory No. 26
`
`identifying the persons with whom he consulted to answer Opposer’s interrogatories.6
`
`Document Request No. 1
`
`This request seeks “[a]ll documents identified, or the identification of which is
`
`requested, in Interrogatories Nos. 1-27 to Applicant.” 10 TTABVUE 29. Applicant has
`
`responded that he has “not identified any documents in relation to the Interrogatories
`
`Nos. 1-27 to Applicant.” 10 TTABVUE 52.
`
`As stated, the Board cannot compel a party to produce documents that he does not
`
`have. But to the extent the Board orders Applicant herein to supplement his
`
`interrogatory responses and Applicant identifies documents in his supplemental
`
`responses, Applicant must produce them. Accordingly, Opposer’s motion with respect
`
`to Document Request No. 1 is GRANTED to the extent that if Applicant identifies
`
`any documents in his supplemental interrogatory responses as ordered herein,
`
`
`6 As noted, Opposer served discovery on the last day of the discovery period, and therefore,
`discovery closed before Applicant’s response deadline. As such, the usefulness of
`Interrogatory No. 26 and Opposer’s other discovery requests seeking the identity of persons
`with potentially discoverable information is unclear as Opposer will not have the opportunity
`to take the discovery depositions of any identified persons.
`
`
`
`-8-
`
`
`
`Opposition No. 91220956
`
`Applicant must supplement his written response to Document Request No. 1 and
`
`produce responsive documents within THIRTY DAYS of the mailing date of this
`
`order.
`
`Document Request No. 6
`
`This document request asks Applicant to produce “[s]uch documents as will permit
`
`the identification of:
`
`(a) All outlets in the United States or accessible from the United States for sale or
`proposed sale of each good and service which has been offered by Applicant or
`Applicant’s business(es) under or by reference to Applicant's UUNIQUE mark;
`
`(b) All present, proposed or contemplated distributors and/or licensees offering
`goods or services in the United States under or by reference to Applicant’s
`UUNIQUE mark; and
`
`(c) Any other outlets where any good or service has been offered or will be offered
`in the United States by Applicant or Applicant’s business(es), under or by
`reference to Applicant's UUNIQUE mark.”
`
`
`
`
`10 TTABVUE 30.
`Applicant has responded that he has never used the
`
` mark “in relation
`
`to any sales in the United States so far … and [that he has] no specific plans related
`
`to the elements of my prospective business plan.” 10 TTABVUE 57. This response
`
`suggests that Applicant has no documents responsive to this request, but because
`
`Applicant has not expressly stated that he has no responsive documents, Opposer’s
`
`motion is GRANTED with respect to Document Request No. 6. Accordingly, within
`
`THIRTY DAYS of the mailing date of this order, Applicant is ordered to serve a
`
`
`
`-9-
`
`
`
`Opposition No. 91220956
`
`supplemental written response expressly stating whether he has documents
`
`responsive to this request, and if he has responsive documents, to produce them.7
`
`Document Request No. 7
`
`This document request seeks “[r]epresentative specimens or samples of all
`
`advertising of any form, commercial material, brochures, product description
`
`materials, and other literature which refer or relate to all goods sold or distributed or
`
`services offered, or intended to be offered, in the United States by Applicant or
`
`Applicant's business(es) in connection with any mark consisting in whole or in part
`
`of UUNIQUE, including but not limited to, newspapers, magazines, trade journals,
`
`catalogs, packaging, price lists, packaging, labels, signs, containers, boxes, bags, tags,
`
`wrappers, package inserts and other business materials which have been distributed
`
`by or on behalf of Applicant for each year from the date Applicant claims he first
`
`shipped orders for goods to the United States under the UUNIQUE mark or otherwise
`
`used the mark in the United States to the present date.” 10 TTABVUE 30.
`
`Applicant responded that he has no documents responsive to this request, and the
`
`Board cannot compel a party to produce what he does not have. Accordingly Opposer’s
`
`motion to compel with respect to Document Request No. 7 is DENIED.8
`
`
`7 Opposer argues that Brightstar, who Applicant identified in response to Interrogatory No.
`7, is a distributor, and therefore, Applicant must have documents responsive to this request.
`10 TTABVUE 40. If Brightstar is in fact a distributor or potential distributor of Applicant’s
`
` products, and Applicant has documents identifying Brightstar as such, he must
`produce them in response to this document request.
`8 Notwithstanding this determination, the Board questions whether Applicant has responsive
`documents given that his mark
` “was represented at CES 2015.” 10 TTABVUE
`
`
`
`-10-
`
`
`
`Opposition No. 91220956
`
`
`Document Request No. 20
`
`By this request, Opposer seeks “[s]uch documents as will permit the identification
`
`of all persons and firms, including but not limited to, advertising or sales agents, that
`
`have promoted or will promote the sale of the Applicant’s, or Applicant’s business(es),
`
`goods or services in the United States.” 10 TTABVUE 32. Applicant responded: “I
`
`have never used [the] UUNIQUE trademark in relation to any sales in the United
`
`States so far and I have not identified any advertising or sales agents that will
`
`promote the sale of goods under the trademark UUNIQUE.” 10 TTABVUE 60.
`
`This response suggests that Applicant has no documents responsive to this
`
`request, but because Applicant has not expressly stated that he has no responsive
`
`documents, Opposer’s motion is GRANTED with respect to Document Request No.
`
`20. Accordingly, within THIRTY DAYS of the mailing date of this order, Applicant
`
`is ordered to serve: (i) a supplemental written response expressly stating whether he
`
`has documents responsive to this request; and (ii) any responsive documents.9
`
`Document Request No. 22
`
`This request seeks “[d]ocuments which refer or relate to any search or
`
`investigation by Applicant or Applicant’s business(es) of any uses of names or marks
`
`containing the word UUNIQUE by any other company.” 10 TTABVUE 32.
`
`
`40. If Applicant has documents responsive to this request, he must promptly serve a
`supplemental written response to this document request and produce responsive documents.
`
` “was represented at CES
`9 Given Applicant statement that he was his mark
`2015,” Applicant may have documents responsive to this request. 10 TTABVUE 40.
`
`
`
`-11-
`
`
`
`Opposition No. 91220956
`
`
`Applicant responded identifying the same trademark search that he identified in
`
`response to Interrogatory Nos. 14 and 16, but Applicant did not state whether he has
`
`any documents related to the search. 10 TTABVUE 60-61. Accordingly, Opposer’s
`
`motion to compel is GRANTED with respect to Document Request No. 22. Within
`
`THIRTY DAYS of the mailing date of this order, Applicant is ordered to serve a
`
`supplemental written response indicating whether he has documents responsive to
`
`Document Request No. 22, and to produce any responsive documents.
`
`Document Request No. 29
`
`This document request seeks “[a]ll documents which support any allegation in
`
`Applicant’s ‘Answer to Notice of Opposition’ dated April 30, 2015.” 10 TTABVUE 33.
`
`This request is similar to asking Applicant to produce the documents on which he
`
`plans to rely at trial, and a party is not required to produce such documents. See
`
`CareFirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492,
`
`1500 (TTAB 2005) (“It is settled that a party in a Board proceeding generally has no
`
`obligation to identify all of its trial evidence prior to trial.”); Miscellaneous Changes
`
`to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42246 (August 1,
`
`2007). Accordingly, Opposer’s motion to compel with respect to Document Request
`
`No. 29 is DENIED.
`
`Qualification and Verification
`
`Applicant’s responses to Opposer’s discovery requests are preceded by the
`
`following (referred to as the “Preamble”): “I reserve my right to change my opinion
`
`regarding any answer at any time, including about past facts, stated opinions about
`
`
`
`-12-
`
`
`
`Opposition No. 91220956
`
`any past or future facts, circumstances or persons. No liability will be accepted based
`
`on any of the answers.” 10 TTABVUE 38. Opposer argues that the Preamble renders
`
`meaningless Applicant’s verification of his interrogatories, served January 25, 2016,
`
`and the Board agrees. 10 TTABVUE 7. Although Applicant has reserved the right to
`
`change his opinions as opposed to facts, a party may serve a discovery request that
`
`requires its adversary to give an opinion that relates to fact or the application of the
`
`law to the facts. See TBMP § 414(21) and cases cited in footnote 29 therein. Moreover,
`
`by signing interrogatory responses under oath, a party attests to the truth of the
`
`interrogatory responses. Applicant’s Preamble suggests that his interrogatory
`
`responses may not be truthful, with respect to any opinions stated therein.
`
`Accordingly, Opposer’s motion to compel is GRANTED with respect to Applicant’s
`
`verification. Applicant is ordered within THIRTY DAYS of the mailing date of this
`
`order to re-serve his interrogatory responses of December 29, 2015, without the
`
`Preamble, and with a verification.10
`
`Summary
`
`In sum, Opposer’s motion is GRANTED to the extent that within THIRTY DAYS
`
`of the mailing date of this order, Applicant is ordered to serve on Opposer:
`
`• Supplemental written and verified responses to Interrogatory Nos. 7, 14, 19,
`
`and 26;
`
`
`10 Responses to document requests and requests for admission are not required to be made
`under oath, and therefore, Applicant does not need to re-serve his responses to such discovery
`requests.
`
`
`
`-13-
`
`
`
`Opposition No. 91220956
`
`
`• Supplemental written responses to Document Request Nos. 1, 6, 20, and 22;
`
`• Copies of any documents (copied at Applicant’s own expense) responsive to
`
`Interrogatory No. 7 and Document Request Nos. 1, 6, 20 and 22; and
`
`• A revised and verified copy of his December 29, 2015 responses to Opposer’s
`
`interrogatories without the Preamble.
`
`Opposer’s motion is otherwise DENIED.
`
`At trial, Opposer may seek to preclude Applicant from relying on information or
`
`documents that should have been produced or identified in response to Opposer’s
`
`discovery requests, but were not. See Panda Travel, Inc. v. Resort Option Enters., Inc.,
`
`94 USPQ2d 1789, 1792 (TTAB 2009); Quality Candy Shoppes/Buddy Squirrel of
`
`Wisconsin Inc. v. Grande Foods, 90 USPQ2d 1389, 1392 (TTAB 2007); Presto Prods.
`
`v. Nice- Pak Prods., 9 USPQ2d 1895, 1896 n. 5 (TTAB 1988); TBMP §§ 408.02 and
`
`527.01(e).
`
`Dates Reset
`
`Proceedings remain suspended through THIRTY DAYS from the mailing date of
`
`this order and shall resume upon the schedule set forth below:
`
`Plaintiff’s Pretrial Disclosures Due
`Plaintiff’s 30-day Trial Period Ends
`Defendant’s Pretrial Disclosures Due
`Defendant’s 30-day Trial Period Ends
`Plaintiff’s Rebuttal Disclosures Due
`Plaintiff’s 15-day Rebuttal Period Ends
`
`6/17/2016
`8/1/2016
`8/16/2016
`9/30/2016
`10/15/2016
`11/14/2016
`
`
`
`-14-
`
`
`
`Opposition No. 91220956
`
`
`
`
`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 2.125.
`
`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 2.129.
`
`***
`
`
`
`
`
`-15-