527.01(e)    Estoppel Sanction

A party that responds to a request for discovery by indicating that it does not have the information sought, or by stating objections thereto, may be barred by its own action from later introducing the information sought in the request as part of its evidence on the case, [ Note 1.] provided that the propounding party raises the matter by objecting to the evidence in question on that ground, and preserves the objection in its brief on the case (it is not necessary that the objecting party file a motion asking for application of this sanction). [ Note 2.] A party that fails to provide information, or provides an untimely supplement, may be precluded from using that information or witness at trial unless the failure to disclose was substantially justified or is harmless. [ Note 3.] In instances where a party does not "unequivocally refuse" to provide information in response to discovery requests, the preclusion sanction under Fed. R. Civ. P. 37(c)(1) may not apply. [ Note 4.] See TBMP § 523.04 (Failure to File a Motion to Compel).

Supervision of discovery, and in particular the application of the preclusion sanction, lies within the Board’s discretion. [ Note 5.]

NOTES:

 1.   See Panda Travel, Inc. v. Resort Option Enterprises, Inc., 94 USPQ2d 1789, 1792-93 (TTAB 2009) (documents not produced until after the start of trial stricken).

 2.   See, e.g., General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1593-94 (TTAB 2011) (trial testimony and exhibits stricken where applicant waited over two years to supplement responses and opposer lodged objection and cross-examined under protest, but no waiver of privilege) ), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential);Ingalls Shipbuilding, Inc. v. United States, 857 F.2d 1448, 1455 (Fed. Cir. 1988); Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820, 828-29 (CCPA 1980) (applicant’s representations in objecting to interrogatories that facts other than those already litigated in prior proceedings were irrelevant and not discoverable gave rise to equitable estoppel preventing applicant from introducing testimony about those other facts); Super Valu Stores Inc. v. Exxon Corp., 11 USPQ2d 1539, 1543 (TTAB 1989) (party may not refuse to answer interrogatories by claiming confidentiality and then introduce responsive information during its trial period); Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1896 n.5 (TTAB 1988) (trademark search report not produced under attorney-client privilege, albeit rightfully withheld, still cannot be relied upon to support motion for summary judgment); ConAgra Inc. v. Saavedra, 4 USPQ2d 1245, 1247 n.6 (TTAB 1987) (exhibits demonstrating pronunciation not produced during discovery, though encompassed by discovery requests, excluded from consideration); National Aeronautics and Space Administration v. Bully Hill Vineyards Inc., 3 USPQ2d 1671, 1672 n.3 (TTAB 1987) (opposer’s exhibits identified in applicant’s brief as within the scope of documents requested by applicant but not produced by opposer during discovery, excluded from consideration).

Cf. Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1071-72 (TTAB 2011) (objected-to documents were obtained or created by applicant in anticipation of trial and were not responsive documents that were already in its possession or control when it responded to document requests); Linville v. Rivard, 41 USPQ2d 1731, 1733 (TTAB 1996) (no estoppel; party should have filed motion to compel where objections that discovery requests are, for example, ambiguous or burdensome, or are otherwise not of a nature which would lead propounding party to believe that the requested information does not exist), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (no estoppel; where applicant gave partial answers and otherwise objected to requests as cumulative or burdensome but opposer did not file motion to compel, modify discovery requests, or otherwise pursue material, evidence introduced by applicant at trial was considered), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994); Seligman & Latz, Inc. v. Merit Mercantile Corp., 222 USPQ 720, 723 (TTAB 1984) (Board will not impose sanction of drawing adverse inferences against party based on inconsistent responses to questions asked during discovery deposition without motion to compel complete responses and violation of an order compelling answers); Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2041 (TTAB 1989) (in that party need not specify evidence it intends to present, failure to identify witness in response to interrogatory seeking identification of all witnesses who would testify at trial, did not preclude testimony of such witness).

 3.   See Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1346 (TTAB 2013) (applying "Great Seats factors," opposer’s failure to supplement its discovery responses or initial disclosures with respect to third-party use found harmless ); Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1757 (TTAB 2013) (where party did not supplement its discovery responses prior to taking trial testimony of non-parties, Board declined to apply estoppel sanction with regard to trial exhibits), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1242, 1246 (TTAB 2012) (party that fails to provide information via disclosure or discovery or supplements may be precluded from using that information or witness at trial unless failure was substantially justified or harmless; opposer’s failure to identify witness prior to pretrial disclosure was neither harmless nor substantially justified); Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327-28 (TTAB 2011) (opposer’s identification of 26 additional witnesses for the first time in its amended and supplemental pretrial disclosures was neither harmless nor substantially justified).

 4.   Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir. 2012) (Board did not abuse its discretion by refusing to strike plaintiff’s evidence where plaintiff objection to production, did not represent that responsive documents did not exist but defendant failed to follow up on plaintiff’s offer to produce the evidence at a mutually agreeable time and place and in view of defendant’s failure to file a motion to compel); Vignette Corp. v. Marino, 77 USPQ2d 1408, 1411 (TTAB 2005) (opposer’s request for reconsideration of Board order denying its motion for summary judgment denied; Board properly considered applicant’s declaration provided on summary judgment, reasoning that 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"). Cf. General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (motion to exclude expert testimony denied where timely-served but deficient expert disclosures were promptly supplemented; failure to notify the Board of service of expert disclosure is not a ground to exclude the testimony of the expert witness).

 5.   Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir. 2012).