527.01(a) For Failure to Comply With Board Discovery Order
37 C.F.R. § 2.120(h) Sanctions.
- (1) If a party fails to participate in the required discovery conference, or if a party fails to comply with an order of the Trademark Trial and Appeal Board relating to disclosure or discovery, including a protective order, the Board may make any appropriate order, including those provided in Rule 37(b)(2) of the Federal Rules of Civil Procedure, except that the Board will not hold any person in contempt or award expenses to any party. The Board may impose against a party any of the sanctions provided in Rule 37(b)(2) in the event that said party or any attorney, agent, or designated witness of that party fails to comply with a protective order made pursuant to Rule 26(c) of the Federal Rules of Civil Procedure. A motion for sanctions against a party for its failure to participate in the required discovery conference must be filed prior to the deadline for any party to make initial disclosures.
If a party fails to comply with an order of the Board relating to discovery, including a protective order or an order compelling discovery, the Board may enter appropriate sanctions, as defined in 37 C.F.R. § 2.120(h)(1). [ Note 1.] In the case of a protective order, the Board may enter these sanctions against a party if the party or any attorney, agent, or designated witness of the party fails to comply with the protective order. [ Note 2.]
Sanctions may also be appropriate when a party refuses to participate in a discovery conference under 37 C.F.R. § 2.120, without the need for the moving party to first file a motion to compel its adversary’s attendance at a discovery conference. [ Note 3.]. See TBMP § 401.01 and TBMP § 408.01(a) for further information on discovery conferences and the duty to cooperate. If the deadline for the required discovery conference passes and a party informs the Board of the opposing party’s failure to participate in a discovery conference, the non-cooperating party may be warned that it may be subject to a motion for sanctions under 37 C.F.R. § 2.120(h)(1). The Board may impose any of the sanctions provided in Fed. R. Civ. P. 37(b)(2) for failure to participate in a discovery conference, including judgment. [ Note 4.] See TBMP § 408.01(a). While a motion to compel a party to participate in a discovery conference is not a prerequisite to filing a motion for sanctions under 37 C.F.R. § 2.120(h)(1), the moving party must provide evidence of a good faith effort to schedule the conference in order to prevail on a motion for sanctions. [ Note 5.]
The sanctions that may be entered by the Board include, inter alia, striking all or part of the pleadings of the disobedient party; refusing to allow the disobedient party to support or oppose designated claims or defenses; prohibiting the disobedient party from introducing designated matters in evidence; and entering judgment against the disobedient party. [ Note 6.] Default judgment is a harsh remedy, but may be justified where no less drastic remedy would be effective and there is a strong showing of willful evasion. [ Note 7.] However, the Board will not hold any person in contempt, or award any expenses, including attorneys’ fees, to any party. [ Note 8.] See TBMP § 502.05.
The motion for sanctions for failure to comply with an order of the Board lies only when the Board has entered an order relating to discovery (i.e., an order compelling discovery or a protective order) and the order has been violated. [ Note 9.] Unlike a motion to compel discovery, there is no requirement to make a good faith effort to resolve the parties’ dispute prior to filing a motion for discovery sanctions. [ Note 10.] Sanctions are not available under 37 C.F.R. § 2.120(h)(1) with respect to initial disclosures unless a Board order granting a prior motion to compel initial disclosures has been violated, or a party has expressly stated to its adversary that it does not intend to meet its obligation. [ Note 11.] See also TBMP § 403.03. The notice of institution of the proceeding does not constitute an order of the Board relating to disclosures within the contemplation of 37 C.F.R. § 2.120(h)(1). [ Note 12.]
The motion for sanctions for failure to comply with an order of the Board relating to discovery does not apply in situations involving requests for admission. Sanctions in those situations are governed by Fed. R. Civ. P. 36, except that the Board will not award any expenses, including attorneys’ fees, to any party. [ Note 13.] See TBMP § 502.05. For information concerning sanctions for failure to respond, or respond properly, to requests for admission, see TBMP § 527.01(d).
NOTES:
1. 37 C.F.R. § 2.120(h)(1). See Fifth Generation Inc. v. Titomirov Vodka LLC, 2019 USPQ2d 418666, at *5-6 (TTAB 2019) (judgment as a sanction granted under Trademark Rule 2.120(h) for failure to comply with Board orders); SFM, LLC v. Corcamore, LLC, 129 USPQ2d 1072, 1075-79 (TTAB 2018) (motion for judgment under Trademark Rule 2.120(h)(1) granted as sanction for discovery abuses and egregious conduct), aff’d, 978 F.3d 1298, 2020 USPQ2d 11277 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021). Cf. Ingalls Shipbuilding, Inc. v. United States, 857 F.2d 1448, 1450-51 (Fed. Cir. 1988) (question of proper sanction committed to sound discretion of the court); Busy Beauty, Inc. v. JPB Group, LLC, 2019 USPQ2d 338392, at *3-7 (TTAB 2019) (motion for sanctions in the form of judgment based on spoliation of electronically stored information ("ESI") denied, but granted to the extent that nonmoving party is precluded from relying upon any information subject to the spoliated ESI at trial); Optimal Chemical Inc. v. Srills LLC, 2019 USPQ2d 338409, at *3-19 (TTAB 2019) (construed motion for sanctions for spoliation of evidence under Fed. R. Civ. P. 37(e)(1) granted to the extent that spoliated evidence given no consideration in likelihood of confusion analysis); Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008) (sanction of dismissal denied as premature when no Board order compelling discovery present); Nobelle.com LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1303 (TTAB 2003) (trial evidence not stricken as discovery sanctions when no order to compel discovery had been violated).
3. Cf. Promgirl, Inc., v. JPC Co., Ltd., 94 USPQ2d 1759, 1762 (TTAB 2009).
4. 37 C.F.R. § 2.120(h)(1). See Promgirl Inc. v. JPC Co., Ltd., 94 USPQ2d 1759, 1762 n.8 (TTAB 2009) (sanction for failure to comply with discovery conference rules should relate to that failure); Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 n.4 (TTAB 2008) ("when a party fails to participate in the required discovery conference, an adverse party may move for entry of sanctions under Trademark Rule 2.120(g)(1) even in the absence of a Board order compelling participation"). Please Note: effective January 14, 2017, former 37 C.F.R. § 2.120(g)(1) was redesignated 37 C.F.R. § 2.120(h)(1).
5. See, e.g., Promgirl, Inc. v. JPC Co., Ltd., 94 USPQ2d 1759, 1762 (TTAB 2009) (opposer’s motion for sanctions in the form of judgment denied where parties were engaged in settlement discussions and opposer did not broach the subject of scheduling the discovery conference until the deadline date, and only after opposer’s settlement offer was rejected); Guthy-Renker Corp. v. Boyd, 88 USPQ2d 1701, 1704 (TTAB 2008) (motion for sanctions denied; moving party could have made additional efforts with adverse party to schedule conference, including requesting Board participation in the discovery conference, but failed to do so).
6. See Benedict v. Superbakery Inc., 665 F.3d 1263, 101 USPQ2d 1089, 1093 (Fed. Cir. 2011) (affirming Board’s entry of judgment as a discovery sanction for repeated failures to comply with Board’s reasonable orders), aff’g 96 USPQ2d 1134 (TTAB 2010); M.C.I. Foods Inc. v. Bunte, 86 USPQ2d 1044, 1047-48 (TTAB 2008) (documents produced following sanctions will be accepted as admissible and authentic at trial if offered by non-sanctioned party; sanctioned party prohibited from relying on documents it produced only after sanctions entered); HighBeam Marketing LLC v. HighBeam Research LLC, 85 USPQ2d 1902, 1905 (TTAB 2008) (opposer may not rely at trial on discovery materials disclosed only after entry of sanctions against it); MHW Ltd. v. Simex, Aussenhandelsgesellschaft Savelsberg KG, 59 USPQ2d 1477, 1478-79 (TTAB 2000) (repeated failure to comply with orders and unpersuasive reasons for delay resulted in entry of judgment); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Manufacturing Co., 55 USPQ2d 1848, 1854 (TTAB 2000) (pattern of dilatory conduct indicated willful disregard of Board order and resulted in entry of judgment); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1556 (TTAB 2000) (applicant ordered to copy and forward documents to opposer at applicant’s expense); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1778 (TTAB 1999) (where applicant, in violation of order, served objections to discovery requests, judgment was denied as too harsh but applicant was ordered to provide new and complete responses without objection, to copy documents and forward to opposer, and to study sections of TBMP and certify completion to the Board).
See also Unicut Corp. v. Unicut, Inc., 222 USPQ 341, 344 (TTAB 1984) (respondent’s continued refusal to obey Board orders sanctioned by entry of judgment) and Unicut Corp. v. Unicut, Inc., 220 USPQ 1013, 1014-15 (TTAB 1983) (respondent sanctioned by order to produce documents by mailing them to petitioner’s attorney at petitioner’s expense); Caterpillar Tractor Co. v. Catfish Anglers Together, Inc., 194 USPQ 99, 100 (TTAB 1976) (judgment entered where applicant provided no reason for not complying with Board order compelling discovery). Cf. Ingalls Shipbuilding, Inc. v. United States, 857 F.2d 1448, 1451-52 (Fed. Cir. 1988) (failure to comply based on confusion or sincere misunderstanding of court’s order does not warrant dismissal); Nobelle.com LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1303 (TTAB 2003) (petitioner failed to file motion to compel discovery; thus, there is no procedural basis for petitioner’s motion for sanctions); Seligman & Latz, Inc. v. Merit Mercantile Corp., 222 USPQ 720, 723 (TTAB 1984) (sanction of presuming substantial actual confusion best left to situations where witness fails or refuses to answer during testimonial as opposed to discovery deposition).
7. See Benedict v. Superbakery Inc., 665 F.3d 1263, 101 USPQ2d 1089, 1093 (Fed. Cir. 2011) (entry of judgment warranted in view of repeated failures to comply with reasonable orders of the Board and no lesser sanction would be effective), aff’g 96 USPQ2d 1134 (TTAB 2010); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Manufacturing Co., 55 USPQ2d 1848, 1854 (TTAB 2000); and other cases cited in previous note.
8. See 37 C.F.R. § 2.120(h)(1) and 37 C.F.R. § 2.127(f).
9. See, e.g., Nobelle.com LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1303 (TTAB 2003) (request to preclude party from submitting trial evidence as a sanction for its alleged failure to comply with discovery obligations was procedurally baseless where no discovery order was violated or even issued); MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953-54 (TTAB 1979) (Board did not issue order compelling discovery but had only resumed proceedings after apparent failure of settlement negotiations and reset time to respond to discovery); General Sealer Corp. v. H. H. Robertson Co., 193 USPQ 384, 384 (TTAB 1976) (motion for summary judgment on basis of petitioner’s failure to answer interrogatories denied); Johnson & Johnson v. Diamond Medical, Inc., 183 USPQ 615, 616 (TTAB 1974) (motion for judgment denied).
10. See HighBeam Marketing LLC v. HighBeam Research LLC, 85 USPQ2d 1902, 1904 (TTAB 2008).
11. 37 C.F.R. § 2.120(h)(2); Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008).
12. Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008).
13. See 37 C.F.R. § 2.120(i).