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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
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`Mailed: March 23, 2021
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`Cancellation No. 92070173
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`24-7 Bright Star Healthcare, LLC
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`
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`Res-Care, Inc.
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`Wendy Boldt Cohen, Interlocutory Attorney:
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` v.
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`This case now comes up for consideration of Respondent’s motion to compel1
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`Petitioner to supplement its responses to Respondent’s Document Request Nos. 15
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`and 16 (collectively, the “Disputed Discovery”). 39 TTABVUE. The motion is fully
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`briefed.2
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`1. Motion to Compel
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`a. Good Faith Effort
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`Respondent asserts that it made a good faith effort to resolve its discovery dispute
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`as evidenced by various letters, emails and a videoconference. See 39 TTABVUE 5-7.
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`Upon review thereof, the Board finds that Respondent made a good faith effort to
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`1 Pursuant to Trademark Rule 2.120(f), a motion to compel must be filed before the deadline
`for pretrial disclosures for the first testimony period. The deadline for pretrial disclosures for
`the first testimony period was, as last reset, April 13, 2021. See 38 TTABVUE. Respondent’s
`motion to compel was filed January 29, 2021 and is therefore, timely.
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`2 The Board has considered the parties’ submissions and presumes the parties’ familiarity
`with the factual bases for the motion and does not recount them here except as necessary to
`explain the Board’s order.
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`

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`Cancellation No. 92070173
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`resolve its discovery dispute regarding the Disputed Discovery. See Trademark Rule
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`2.120(e)(1).
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`The parties are reminded that many of the issues raised in the motion could have
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`been avoided if the parties had simply reviewed TBMP § 414 (2020) and Board law
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`and rules, and cooperated with one another in the discovery process. See TBMP §
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`408.01. The parties are expected to cooperate with one another in the future to avoid
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`unnecessary motions that tax the Board’s limited resources and to move this case
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`forward efficiently. A frank exchange between counsels, given the parties’ equal
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`obligations to make efforts to resolve the discovery dispute, could have obviated this
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`motion. Cf. Amazon Tech. Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009).
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`b. Document Request Nos. 15 and 16
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`The Disputed Discovery reads as follows:
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`15. All documents and things relating to the circumstances under which
`Petitioner first became aware of Respondent; and
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`16. All documents concerning Respondent, Respondent’s Mark, or
`Respondent’s Services.
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`39 TTABVUE 14.
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`In response to the Disputed Discovery, Petitioner asserts that it provided
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`“representative documents for both Requests” and documents “reflecting when it first
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`learned of Respondent’s use of its new mark BRIGHTSPRING.” 40 TTABVUE 5.
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`Respondent now seeks to compel Petitioner to respond to the Disputed Discovery
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`providing all documents related to when Petitioner first learned of Respondent,
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`namely, when Respondent used the mark, RES-CARE. 39 TTABVUE 9. Respondent
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`2
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`Cancellation No. 92070173
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`argues this information is relevant because even when it provided services under its
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`RES-CARE mark, Respondent’s services were the same services it now provides
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`under its BRIGHTSPRING mark. 39 TTABVUE 8-9. Petitioner objects to the
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`Disputed Discovery asserting that it seeks information unrelated to the issue of
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`likelihood of confusion between the parties’ respective BRIGHT STAR and
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`BRIGHTSPRING marks; that the requests seek production of all documents related
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`to when Petitioner became aware of “the corporate entity, Res-Care, Inc. and …
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`knowledge of Res-Care’s business activities under its prior RES-CARE mark.” 40
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`TTABVUE 3. In short, the parties’ dispute is centered on whether Petitioner must
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`supplement its responses by providing documents related to its knowledge of
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`Respondent’s use of its prior mark, RES-CARE.3
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`Pursuant to Fed. R. Civ. P. 26(b)(1), parties may obtain discovery regarding any
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`nonprivileged matter that is relevant to any party’s claim or defense and proportional
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`to the needs of the case. A party may take discovery as to matters that are relevant
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`to its claims and defenses (i.e., those specifically raised in the pleadings), and such
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`discovery may serve as the basis for an additional claim, defense, or counterclaim.
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`3 For example, Respondent argues that “despite the different names, Petitioner’s knowledge
`of Respondent’s services prior to the rebrand are relevant to this proceeding”; that
`“Petitioner’s first awareness of Respondent, even if that awareness was before Respondent’s
`adoption of BRIGHTSPRING, is highly relevant”; and that in evaluating the similarity of the
`parties’ services, “when Petitioner first learned of Respondent (under its original name, Res-
`Care)” is relevant. 39 TTABVUE 3, 8-9; 43 TTABVUE 4-5. Petitioner argues that during the
`parties’ meet and confer, Respondent asserted that Petitioner needed to provide all
`documents regarding Petitioner’s “knowledge of [Respondent] as a company, including, and
`especially, any documents in [Petitioner]’s possession from years ago that mention
`Respondent before it adopted the BrightSpring name, i.e., when it did business as ‘Res-Care’”
`(emphasis in original). 40 TTABVUE 5-6.
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`3
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`Cancellation No. 92070173
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`See Mack Trucks, Inc. v. Monroe Auto Equip. Co., 181 USPQ 286, 287 (TTAB 1974);
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`The Phillies v. Philadelphia Consol. Holding Corp., 107 USPQ2d 2149, 2153 (TTAB
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`2013).
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`Here, Petitioner has asserted likelihood of confusion in its petition to cancel . 1
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`TTABVUE. Respondent has not asserted any affirmative defenses in its answer. See
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`4 TTABVUE.
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`A party need not provide discovery with respect to those of its marks and goods
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`and/or services that are not involved in the proceeding and have no relevance
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`thereto.4 See, e.g., Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147, 149
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`n.2 (TTAB 1985) (information regarding goods other than those in involved
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`application and registration is irrelevant); Varian Assoc. v. Fairfield-Noble Corp., 188
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`USPQ 581, 584 (TTAB 1975); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184,
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`187 (TTAB 1979) (applicant’s use of mark on goods other than those in application
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`irrelevant); Volkswagenwerk AAG v. Thermo-Chem Corp., 176 USPQ 493, 493 (TTAB
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`1973) (applicant need not provide information as to its other marks or its other
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`products, or as to whether involved mark is used on other products); TBMP § 414
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`(11). The Disputed Discovery seeks information related to Petitioner’s knowledge of
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`Respondent but is not limited to the claim at issue – whether registration of
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`Respondent’s BRIGHTSPRING mark for its noted services would lead to a likelihood
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`4 As noted by the parties, likelihood of confusion under Section 2(d) involves a claim that a
`defendant’s mark so resembles a mark registered in the Office, or a mark or trade name
`previously used in the United States by another and not abandoned, as to be likely, when
`used on or in connection with the goods or services of the defendant, to cause confusion, or to
`cause mistake, or to deceive. 15 U.S.C. § 1052(d).
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`4
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`Cancellation No. 92070173
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`of confusion with Petitioner’s cited registrations that include the terms BRIGHT
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`STAR for its noted services.
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`While Respondent argues that it needs the requested information so it can rebut
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`Petitioner’s evidence regarding the relatedness of the parties’ services, Respondent
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`has not convincingly explained to the Board how Petitioner’s knowledge of
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`Respondent’s use of RES-CARE, whether or not for the same services Respondent
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`now provides under the mark BRIGHTSPRING,5 would be relevant to the Board’s
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`analysis of likelihood of confusion between the marks at issue – BRIGHT STAR v.
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`BRIGHTSPRING. 39 TTABVUE 7-8. In short, the Board is not persuaded that
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`whether Petitioner had knowledge of Respondent prior to Respondent’s use of its
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`BRIGHTSPRING mark is relevant or proportional to the needs of this case or that
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`the requested information would serve as the basis for a counterclaim or affirmative
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`defense.
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`Moreover, in addition to the Disputed Discovery, Respondent’s document request
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`no. 14 (which is not part of the motion to compel) seeks information regarding when
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`Petitioner first became aware of Respondent’s BRIGHTSPRING mark. 6 39
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`TTABVUE 14. Discovery seeking information about a party’s actual knowledge of the
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`other party has been found to be cumulative and “more or less comprehended by” a
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`discovery request seeking information about a party’s “actual knowledge of [the other
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`5 Indeed, Respondent asserts that “[w]hether the services are allegedly related should have
`no bearing on the issues.” 43 TTABVUE 3.
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`6 Document Request No. 14 reads: All documents and things relating to the circumstances
`under which Petitioner first became aware of Respondent’s Mark. 39 TTABVUE 14.
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`5
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`Cancellation No. 92070173
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`party’s mark].” Am. Optical Corp. v. Exomet, Inc., 181 USPQ 120, 123 (TTAB 1974)
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`(interrogatory asking applicant when it had actual knowledge of opposer considered
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`cumulative and “more or less comprehended by” interrogatory asking when applicant
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`had actual knowledge of opposer’s mark). Here, Respondent’s request that Petitioner
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`provide information about when Petitioner became aware of Respondent is more or
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`less comprehended by document request no. 14 which seeks information about when
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`Petitioner first became aware of Respondent’s BRIGHTSTAR mark.
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`In view of the above-mentioned, Respondent’s motion to compel, namely, to compel
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`Petitioner to provide supplemental responses to the Disputed Discovery regarding
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`Petitioner’s knowledge of Respondent’s use of RES-CARE,
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`is denied.7
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`Notwithstanding, to the extent Respondent’s motion to compel seeks supplemental
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`responses to the Disputed Discovery regarding Petitioner’s kno wledge of
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`Respondent’s use of the BRIGHTSTAR mark, the motion is granted as modified. To
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`the extent Petitioner has not already provided responses or documents in response to
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`the Disputed Discovery or to document request no. 14, Petitioner is allowed until
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`twenty days from the date of this order in which to serve its supplemental responses
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`or documents to the Disputed Discovery. See Amazon Tech. Inc., 93 USPQ2d at 1706,
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`7 The Board reminds the parties that a party that has responded to a request for discovery is
`under a duty to supplement or correct the response in a timely manner to include information
`under the particular circumstances specified in Fed. R. Civ. P. 26(e)(1) and (2). See Great
`Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1326-27 (TTAB 2011). If a party fails to
`disclose properly discoverable information or documents, that party may, upon timely
`objection from the other party, be precluded from using such information or documents at
`trial, unless such failure is substantially justified or is harmless. See Fed. R. Civ. P. 37(c)(1).
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`6
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`Cancellation No. 92070173
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`n.5; No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).8 If no such
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`supplemental responses or documents exists, Petitioner must so clearly state.
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`2. Schedule
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`Proceedings are resumed. Dates are reset as follows:9
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`Discovery Closes
`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
`BRIEFS SHALL BE DUE AS FOLLOWS:
`Plaintiff’s Main Brief Due
`Defendant’s Main Brief Due
`Plaintiff’s Reply Brief Due
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`April 25, 2021
`June 9, 2021
`July 24, 2021
`August 8, 2021
`September 22, 2021
`October 7, 2021
`November 6, 2021
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`
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`January 5, 2022
`February 4, 2022
`February 19, 2022
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`3. General Information
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`Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
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`taken and introduced out of the presence of the Board during the assigned testimony
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`periods. The parties may stipulate to a wide variety of matters, and many
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`requirements relevant to the trial phase of Board proceedings are set forth in
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`Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
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`8 Petitioner “must produce [responsive] documents as they are kept in the usual course of
`business or must organize and label them to correspond to the categories in the request[s].”
`Fed. R. Civ. P. 34(b)(2)(E)(i). If complete compliance with a discovery request seeking “all
`facts,” “all documents” or the like would be unduly burdensome, Petitioner may provide a
`representative sampling of the information sought. See, e.g., Domond v. 37.37, Inc., 113
`USPQ2d 1264, 1267 (TTAB 2015); Frito-Lay N. Am. Inc., 100 USPQ2d at 1910; Bison Corp.
`v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720-21 (TTAB 1987).
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`9 The Board will ordinarily reset the time for expert disclosures when resetting the closing
`date of discovery. See Trademark Rule 2.120(a)(2)(iv); TBMP § 403.04. However, inasmuch
`as the time for expert disclosures has passed and the record does not indicate the parties
`intend to use experts, the Board has not reset the time for expert disclosures.
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`7
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`Cancellation No. 92070173
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`manner and timing of taking testimony, matters in evidence, and the procedures for
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`submitting and serving testimony and other evidence, including affidavits,
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`declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
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`submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
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`final hearing will be scheduled only upon the timely submission of a separate notice
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`as allowed by Trademark Rule 2.129(a).
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`8
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