Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 WILLIAM H. LUEHRMANN, JR.
v.
KWIK KOPY CORPORATION
Cancellation No. 15,217
March 25, 1987
This case now comes up on the following matters:
1. Respondent's motion, filed July 10, 1986, to compel discovery and to extend the period for discovery;
2. Petitioner's motion, filed July 11, 1986, to quash depositions and to extend the period for discovery;
3. Petitioner's motion, filed September 15, 1986, to extend its testimony period;
4. Respondent's motion, filed September 29, 1986, to dismiss pursuant to Trademark Rule 2.132;
5. Respondent's motion, filed September 29, 1986, for sanctions under Fed. R. Civ. P. 11; and
6. Petitioner's cross-motion, filed October 16, 1986, for limited sanctions under Fed. R. Civ. P. 11.
For William H. Luehrmann
Att: Neil A. Smith
Limbach, Limbach & Sutton
2001 Ferry Building
San Francisco, CA 94111
For Kwik Kopy Corporation
Seed and Berry
6300 Columbia Center
Seattle, WA 98104-7092
By the Board:
J. E. Rice, R. L. Simms and G. D. Krugman
The Board first turns to respondent's motion to compel. Respondent asserts that petitioner has failed to file responses to respondent's discovery requests served on May 23, 1986 and has failed to produce witnesses for deposition. The motion is supported by counsel's affidavit. Petitioner, in response to the motion, asserts that his responses now have been served and that counsel relied upon respondent's counsel's statements that she would be 'reasonable' and 'allow additional time for responses to outstanding discovery.' In addition, petitioner contends that he was unavailable for depositions on one or two weeks notice in the middle of the summer because of vacation and work schedules. Petitioner has submitted the declaration of his counsel wherein he outlines the circumstances surrounding discovery in this proceeding. Respondent has filed a reply brief.
The thrust of respondent's motion is that petitioner has failed to respond to discovery requests. Petitioner's response to the motion, however, indicates that he has responded and copies of his responses served July 10, 1986 have been submitted. It is the Board's view that the basis of respondent's motion with respect to the discovery requests (that is, non-responsiveness) is now moot. Respondent has requested that petitioner be ordered to answer the discovery requests as put since he is deemed to have waived his right to objections due to his failure to timely respond to the requests. We do not believe that the circumstances justify such a waiver. While petitioner did file his responses late, [FN1] there is some question as to the attorneys' understanding regarding additional time to serve the responses.
As to respondent's motion to compel witnesses to appear for depositions, respondent contends that it has rescheduled these depositions four times in order to accommodate petitioner's schedule. Respondent points out that petitioner noticed respondent's deposition for the same date that petitioner's deposition was previously noticed by respondent, despite the fact that petitioner's counsel had represented that he was unavailable on that date. [FN2] Petitioner reiterates that he was unavailable due to vacation and work schedules.
*2 The Board is not unmindful of respondent's apparent frustration over the difficulties in scheduling petitioner's deposition. Nevertheless, the Board notes that the difficulties stem from petitioner's summer vacation and work schedules. In view of his reasons, and since there has been no willful refusal to be deposed, we do not believe that an order to compel Mr. Luehrmann's appearance for deposition at this time is necessary.
Respondent's motion to compel is denied. However, the parties are ordered to get together within the next thirty days and arrange for a mutually agreeable time and place for the taking of depositions of petitioner.
Petitioner has moved to quash depositions noticed by respondent. Petitioner asserts, in essence, that the notice is inadequate and unreasonable given the July Fourth holiday and that the depositions are inconvenient for the deponents and counsel due to vacation and work schedules. The motion is accompanied by counsel's declaration. Respondent, in objecting thereto, contends that the depositions should be rescheduled, not quashed. Respondent argues that it is entitled to take the depositions of petitioner and subpoenaed third parties since the depositions were to have been taken prior to the close of discovery. Petitioner has filed a reply brief.
At this stage, it appears that the noticed depositions did not take place. The parties do not seem to disagree as to the propriety of the depositions, but rather disagree as to the scheduling of such depositions. In view thereof, the motion to quash is denied as moot. [FN3] As indicated above, the parties are ordered to get together within thirty days to work out a mutually agreeable schedule for the taking of discovery depositions.
This brings us now to the various motions to extend filed by the parties. Both parties have requested an extension of the period for discovery although respondent argues that any extension should be for the sole purpose of completing discovery which was initiated before the original close of discovery (that is, July 14, 1986). Respondent asserts that petitioner waited until the closing days of the discovery period to notice a deposition for the last day of discovery. Respondent further asserts that petitioner waited until the last day of the discovery period to serve its discovery requests and that prior thereto petitioner did nothing. Petitioner, on the other hand, submits that due to the difficulties in scheduling the discovery depositions during the summer months and the fact that the issues herein are complex and require additional discovery, an extension of the discovery period for all purposes is justified.
We believe that an extension of the period for discovery is warranted, but only for the limited purpose of completing discovery that was initiated prior to the close of discovery on July 14, 1986. Petitioner, in requesting an extension for all purposes, ignores the fact that it did nothing in the way of discovery prior to the very last day of the discovery period. Rather, petitioner argues that the summer months made it difficult to schedule depositions. Even assuming that petitioner's statement is true, it does not explain petitioner's inactivity until the very last day of discovery. A party may not wait until the waning days of the discovery period to serve his discovery requests or notices of deposition and then be heard to complain that he needs an extension of the discovery period in order to take additional discovery. Mere delay in initiating discovery does not constitute good cause for an extension of the discovery period. If a party believes that issues in a case are complex and may involve lengthy discovery, it is his responsibility to begin taking discovery early in the discovery period. To allow an extension for all purposes herein would be to reward petitioner for its delay in initiating discovery, a result which is to be discouraged. While petitioner may have operated under the impression, as he asserts, that respondent would be 'reasonable' and allow additional time to respond to discovery and reschedule depositions, the phone calls between counsel referred to apparently did not take place until late in June 1986. No reason is given why discovery was not taken between the time allowed for commencement thereof under the Federal Rules of Civil Procedure and the last day in the discovery period.
*3 In view of the above, the parties' motions to extend the discovery period are granted in part and denied in part. The discovery period is extended for the sole purpose of completing discovery that was initiated on or before July 14, 1986. No other discovery is permissible.
In view of the extension of the period for discovery, petitioner's motion to extend his testimony period is denied as moot. Moreover, the rescheduling of trial dates requires that respondent's motion to dismiss under Trademark Rule 2.132 be denied as moot.
This now brings us to consideration of the parties' cross-motions for sanctions under Fed. R. Civ. P. 11. Suffice it to say that while each party's actions in this case are not to be commended (see below discussion), it is the Board's view that this conduct of non-cooperation, at least at this time, does not rise to the level that warrants a Rule 11 sanction. [FN4]
Accordingly, respondent's motion for sanctions and petitioner's cross-motion for sanctions are denied.
Finally, we would be remiss if we were not to discuss the nature and the inordinate number of papers filed in this case that clearly demonstrate a spirit of non-cooperation and antagonism between the parties.
When the Trademark Rules of Practice were amended on July 1, 1972 so as to substantially adopt for use in cases such as this the liberal discovery procedures provided under the Federal Rules of Civil Procedure, it was contemplated that parties would seriously endeavor to cooperate with one another in the discovery process. In this connection, each party and its attorney has a duty not only to make a good faith effort to satisfy the discovery needs of its opponent but also to make a good faith effort to seek only such discovery as is proper and relevant to the specific issues involved in the case. It is believed that both parties have failed in their obligation in this case. As a consequence, the parties and the Board have been saddled with needless motions which, in the Board's view, would have been avoided had the parties sought to deal with each other in a good faith cooperative manner. The number and nature of the papers filed to date in this case bear this out. Even with the press of summer vacation and work schedules, the parties should have been able to reasonably accommodate each other's schedules to arrive at a mutually convenient date for depositions, thereby avoiding the motions to compel and to quash. Moreover, with respondent's own motion to extend the discovery period still pending, clearly the filing of its motion to dismiss was unnecessary. Each party has discussed at some length the opposing party's tactics but, at the same time, has ignored its own. The filing of cross-motions for sanctions was the last episode in this acerbic and prolonged exchange of papers between the parties.
Such conduct is not condoned in Board proceedings. Any further instance of non-cooperation by either party in any phase of this proceeding will be looked upon with extreme disfavor by the Board.
*4 In summary, respondent's motions to compel, to dismiss under Trademark Rule 2.132, and for sanctions are denied. Petitioner's motion to quash is denied as moot, and the cross-motion for sanctions is denied. The parties' motions to extend are granted in part and denied in part.
Trial dates, including the period for discovery (for the limited purpose of completion of discovery initiated on or before July 14, 1986), are rescheduled as indicated in the accompanying trial order.
J. E. Rice
R. L. Simms
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. The better practice would have been for petitioner to timely move to extend his time in which to respond to the discovery requests.
FN2. Petitioner asserts that this deposition was noticed for the last day of the discovery period merely to preserve his opportunity to take such a deposition.
FN3. The Board, of course, has no jurisdiction over depositions of third parties by subpoena and, thus, has no authority to quash such depositions. Proceedings relating to the depositions of the subpoenaed non-parties are within the control of the district court.
FN4. The Board obviously must deny respondent's request for costs and expenses inasmuch as the Board has no authority to award monetary relief. Fisons Limited v. Capability Brown Limited, 209 USPQ 167 (TTAB 1980).