Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 JAN BELL MARKETING, INC.
v.
CENTENNIAL JEWELERS, INC.
Opposition No. 80,960
August 27, 1990
Before Chapman
Attorney-Examiner
Beth A. Chapman
Attorney-Examiner
Opposer, on May 16, 1990, filed a motion for a protective order pursuant to Trademark Rule 2.120(d)(1), on the grounds that the applicant's first set of interrogatories, served upon opposer by applicant on March 13, 1990, exceed seventy-five, counting subparts, and that applicant's first request for production of documents, also served by applicant on March 13, 1990, contained twelve additional "interrogatories in the clothing of document requests", namely, request Nos. 29 - 40. Opposer included with its motion copies of applicant's first set of interrogatories and first request for production of documents, as well as opposer's response to applicant's first request for production of documents.
Applicant argues that the total number of interrogatories in its first set is actually seventy-four, including subparts, and not the eighty-five claimed by opposer; and that opposer has failed to produce evidence that the interrogatories are burdensome. Applicant further argues that request Nos. 29 - 40 of its first request for production of documents are not interrogatories, but are clearly requests for documents, and moves that opposer be compelled to respond to said requests.
Under Trademark Rule 2.120(d)(1) as amended effective November 16, 1990, the total number of written interrogatories which a party may serve upon another party in a proceeding before the Board shall not exceed seventy-five, counting subparts, except upon motion by a party for additional interrogatories with a showing of good cause therefor or upon stipulation by the parties. If a party upon which interrogatories have been served believes that the number of interrogatories served exceeds the limitation and is not willing to waive this basis for objection, the party shall, within the time for and instead of serving answers and objections to the interrogatories, file a motion for a protective order, accompanied by a copy of the interrogatories.
Opposer was acting entirely within the provisions of Trademark Rule 2.120(d)(1) when it elected to file a motion for a protective order within the time for and instead of serving answers and objections to the interrogatories. Moreover, opposer was required only to have an honest belief that the interrogatories exceeded the limitation imposed by Trademark Rule 2.120(d)(1) and was under no further obligation to allege that the interrogatories were burdensome.
Accordingly, the first question for the Board to determine is whether the applicant's first set of interrogatories exceed seventy-five, counting subparts. When determining the number of interrogatories, Trademark Rule 2.120(d)(1) requires that each numbered subpart must be counted separately regardless of the propounding party's arguments that the division was made for clarification or convenience. Pyttronic Industries, Inc. v. Terk Technologies Corp., ---------- USPQ2d ----------, Opp. 81,744 (TTAB May 29, 1990). Further, compound questions seeking separate information but not set forth separately will be broken down by the Board and counted as separate interrogatories. See Calcagno, Tips From the TTAB: Discovery Practice Under Trademark Rule 2.120(d)(1), 80 TMR 285 (1990).
*2 Applying the above guidelines to applicant's first set of interrogatories, the Board finds that the interrogatories exceed the limitation imposed by Trademark Rule 2.120(d)(1). Applicant's interrogatories and subparts, as numbered by the applicant, do indeed exceed seventy-five. [FN1] Accordingly, opposer's motion for a protective order is granted. Opposer is relieved from answering applicant's interrogatories served on March 13, 1990. Applicant is allowed until thirty days from the date hereof to serve a revised set of interrogatories in their stead, not exceeding seventy-five in number, counting subparts. Furthermore, since the date for the close of discovery, June 29, 1990, has passed, the scope of the revised interrogatories, if any, may not go beyond that of the originally propounded interrogatories.
The Board turns now to the matter of applicant's motion to compel opposer to answer applicant's document request Nos. 29 - 40.
Under Trademark Rule 2.127(a), a brief in response to any motion must be filed within fifteen days of the service of the motion. Here opposer has not filed a responsive brief. However, the Board will consider opposer's arguments as set forth in its motion for a protective order and in opposer's response to applicant's first request for production of documents, but only as said arguments pertain to document request Nos. 29 - 40.
In its motion for a protective order, opposer incorporated a challenge to applicant's document request Nos. 29 - 40. Opposer objected to said requests characterizing them as "interrogatories in the guise of document requests". In support of its contention, opposer argued that the twelve requests were "tacked on" after the obvious end of the applicant's request for production of documents, namely, request Nos. 26 - 28. [FN2]
In its response to applicant's first request for production of documents, opposer begins with a general objection to, inter alia, applicant's definition of the word "document" and alleges that the applicant's instructions for producing the documents are harassing and unduly burdensome. Opposer specifically argues that document request Nos. 29 - 40 constitute harassment in that they are "vague and ambiguous", and opposer alleges that they are interrogatories "masquerading" as requests for document production in violation of Trademark Rule 2.120(d)(1). Opposer argues further that document request Nos. 32, 34, and 40 are redundant, that the presumptions inherent in document request Nos. 35 and 36 are unclear in that the foundation for each request is insufficient, that document request No. 38 is overly broad in seeking unlimited information with regard to individuals, and that document request No. 39 calls for public record information.
Applicant, in its motion to compel, argues that the requests do not pose questions but clearly request documents; and that eight of the twelve requests in question have a corresponding interrogatory in applicant's first set of interrogatories and as such cannot be considered as inserted in lieu of interrogatories.
*3 The Board disagrees with opposer's contention that document request Nos. 29 - 40 are interrogatories in the guise of document production requests. Each of applicant's involved document requests specifically request the production not the identification of documents. Each document request describes the category of documents with the "reasonable particularity" required by Fed. R. Civ. P. 34(b). Each request categorizes the documents according to issues readily recognizable in trademark law and/or is a follow-up request for documents which were the basis of a corresponding interrogatory in applicant's first set of interrogatories. [FN3]
Accordingly, applicant's motion to compel opposer's response to document request Nos. 29 - 40 is granted. [FN4] Opposer is ordered to produce such documents in accordance with Fed. R. Civ. P. 34(b) within twenty days from the date hereof.
In view of the delay occasioned in acting on the these motions, trial and briefing dates are rescheduled in accordance with Trademark Rule 2.121 as shown below:
THE PERIOD FOR DISCOVERY TO CLOSE: CLOSED
Testimony period for Jan Bell as plaintiff in the opposition to October
close: (opening thirty days prior thereto) 30,
Testimony period for Centennial Jewelers, Inc. (Centennial) as December
defendant in the opposition and as plaintiff in the counterclaim to 31,
close: (opening thirty days prior thereto) 1990
Testimony period for Jan Bell as defendant in the counterclaim and March 1,
its rebuttal testimony as plaintiff in the opposition to close: 1991
(opening thirty days prior thereto)
Rebuttal testimony period for Centennial as plaintiff in the April
counterclaim to close: opening fifteen days prior thereto) 15,
1991
Briefs shall be due as follows: [See Trademark Rule 2.128(a)(2)].
Brief for Jan Bell as plaintiff in the opposition shall be due: June 15,
1991
Brief for Centennial as defendant in the opposition and as July 15,
plaintiff in the counterclaim shall be due: 1991
Brief for Jan Bell as defendant in the counterclaim and its reply August 15,
brief, (if any), as plaintiff in the opposition shall be due: 1991
Reply brief, (if any), for Centennial as plaintiff in the August 30,
counterclaim shall be due: 1991
*4 If the parties stipulate to any extensions of these dates, the papers should be filed in triplicate and should set forth the dates in the format shown in this order. See Trademark Rule 2.121(d).
An oral hearing will be set only upon request filed as provided by Trademark Rule 2.129.
FN1. The Board arrived at its conclusion without counting document request Nos. 29 - 40 of applicant's first request for documents served on March 13, 1990.
FN2. Applicant's document request Nos. 26-28 read as follows:
REQUEST NO. 26
Copies of all documents, other than those produced in response to any of the foregoing requests, which refer or relate to the questions contained in Applicant's First Set of Interrogatories to Opposer served simultaneously herewith or Opposer's responses thereto.
REQUEST NO. 27
Copies of all documents, other than those produced in response to any of the foregoing requests, upon which Opposer intends to rely in connection with this opposition proceeding.
Copies of all documents, other than those produced in response to any of the foregoing requests, which were examined, reviewed or inspected by Opposer or any person acting for or on behalf of Opposer in connection with the preparation of Opposer's responses to Applicant's First Set of Interrogatories to Opposer.
FN3. Although document request Nos. 35, 36, and 37 apparently do not have a corresponding interrogatory, they nonetheless satisfy the requirements of Fed. R. Civ. P. 34(b).
FN4. Given the Board's action, there is no need to rule on the instructions in applicant's first request for production of documents regarding the information required upon objection to a request.