Influance, Inc.v.Elaina Zuker

Trademark Trial and Appeal Board

Nov 13, 2008

No. 92049076 (T.T.A.B. Nov. 13, 2008)

MBA Mailed: November 13, 2008

Cancellation No. 92049076

Influence, Inc.

v.

Elaina Zuker

Michael B. Adlin, Interlocutory Attorney:

This case now comes up for consideration of
petitioner’s motion to compel respondent to serve initial
disclosures, filed September 3, 2008. The motion is fully
briefed.
In support of its motion, petitioner claims that
respondent failed to serve initial disclosures prior to the
parties’ agreed deadline of August 4, 2008.1 Petitioner
claims that it sent letters to respondent on August 11, 20
and 27, 2008, requesting that respondent serve disclosures,
but that respondent was completely unresponsive.
In her response to the motion to compel, respondent
first claims that “Petitioner failed to meet the deadline

1 The deadline was extended to August 4, 2008 by agreement of
the parties. See, Stipulated Motion for Extension filed July 14,
2008, which was granted by the Board’s order of September 8,
2008.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE
T.T.A.B.
Cancellation No. 92049076
2
for holding the voluntary disclosure conference,” without
explaining how or why this is relevant to the motion to
compel. In any event, respondent concedes that she
“consented to the reopening” of the time for holding the
discovery conference, and thus that the conference was
timely held.2
With respect to the merits of petitioner’s motion,
respondent claims that the parties conferred about the
required initial disclosures at unspecified times, and that
petitioner requested that respondent produce or disclose
irrelevant materials. Respondent also concedes that she did
not timely serve her initial disclosures, but states that
she transmitted her initial disclosures on September 12,
2008, and that petitioner’s motion “is thus moot.”
Respondent contends that if petitioner is dissatisfied with
the initial disclosures, its “remedy is to make discovery

2 To be absolutely clear, the obligation for the parties to
hold a conference to discuss settlement and planning for
disclosures and discovery is a mutual obligation. A plaintiff in
a Board inter partes proceeding bears a burden of proof and is
generally expected to move forward in a proceeding, while a
defendant may choose to “defend” the case by doing little and
hoping that the plaintiff will not be able to prove its case.
Nonetheless, the obligation to confer and determine whether the
parties can settle a case, or if not, at least plan for a
cooperative exchange of disclosures and any possible discovery
requests, is a shared responsibility. The mutual nature of the
conferencing obligation is illustrated by the Board policy of
participating in the conference “upon request of any party,” see
Trademark Rule 2.120(a)(2), as well as by the requirement that
both a plaintiff and a defendant must make initial disclosures,
and planning for such disclosures is one of the subjects to be
discussed in the conference.

Cancellation No. 92049076
3
requests.” Respondent did not include a copy of her initial
disclosures with her response to the motion to compel.
In its reply brief, petitioner also failed to include a
copy of respondent’s late-served initial disclosures,
although a copy of the disclosures was eventually filed with
the Board on October 30, 2008. In any event, petitioner
complains about the form of respondent’s initial
disclosures, claiming that it “has received no formal,
signed disclosures subject to the same restrictions and
constraints, including ethical constraints, as any other
discovery or pleading filed under counsel’s signature.”
Petitioner further claims that respondent is “relying upon a
‘list of witnesses and documents’ that does not comport with
the scope of matters discussed during the discovery
conference, makes no attempt to provide telephone or other
contact information for witnesses, and does not respond in
scope to the scope of discovery (sic) relevant to the matter
at hand.”
There is no dispute that respondent served initial
disclosures, albeit late and only after petitioner filed its
motion to compel. The primary question is whether the
disclosures are adequate.3

3 Contrary to respondent’s contention that petitioner’s only
remedy is to serve discovery requests, the Board may compel a
party to supplement inadequate disclosures, and/or sanction a
party for failing to make initial disclosures after being ordered
to do so. Trademark Rules 2.120(e) and (g).
Cancellation No. 92049076
4
While petitioner claims that respondent’s initial
disclosures are inconsistent with what the parties agreed to
during the discovery conference, or the “scope of
discovery,” these contentions are entirely unexplained and
completely unsupported. Accordingly, they cannot be
considered, and the Board is left to determine only whether
respondent’s initial disclosures comply with the applicable
rules. Under Fed. R. Civ. P. 26(a)(1)(A)(i), respondent was
required to disclose “the name and, if known, the address
and telephone number of each individual likely to have
discoverable information – along with the subjects of that
information – that [respondent] may use to support its
claims or defenses ….” Under Fed. R. Civ. P.
26(a)(1)(A)(ii), respondent was required to provide a copy
“or a description by category and location” of documents,
electronically stored information and tangible things it
“may use to support its claims or defenses ….”
Respondent’s initial disclosures, while not well-
organized or as clear as they should be, do include lists of
witnesses and documents, some with limited descriptions.
However, respondent has not identified the address or
telephone number of the witnesses, or the subject matter(s)
about which each has information, nor has she stated that
she is unaware of the witnesses’ addresses or telephone
numbers. Similarly, while respondent has identified a
Cancellation No. 92049076
5
number of documents, she has not provided their location, or
taken the alternative step of actually producing them.
Accordingly, petitioner’s motion to compel is GRANTED,
to the extent that within THIRTY DAYS of the mailing date of
this order, respondent shall provide the subject matter(s)
about which each identified witness is likely to have
discoverable information, as well as any known addresses
and/or phone numbers for the identified witnesses.
Respondent shall also provide the location of all identified
documents, or, in the alternative, produce them.4 In
addition, petitioner’s argument regarding the form of
respondent’s initial disclosures is well-taken. As
petitioner points out, respondent’s initial disclosures are
not signed by respondent or by her attorney. This violates
Fed. R. Civ. P. 26(g). Furthermore, respondent’s initial
disclosures do not bear the case number of this proceeding,
or its caption. Accordingly, respondent’s supplemental
initial disclosures served pursuant to this order shall be
properly signed and bear the caption and proceeding number
for this case. Failure to comply with this order may
subject respondent to sanctions, potentially including entry
of judgment against her.

4 The most efficient means of making initial disclosures of
documents, and the option the Board encourages parties to use, is
to actually exchange copies of disclosed documents, rather than
merely identifying their location.

Cancellation No. 92049076
6
Proceedings herein are resumed. Discovery, trial and
other dates are reset as follows:

Expert Disclosures Due February 20, 2009

Discovery Closes March 22, 2009

Plaintiff's Pretrial Disclosures May 6, 2009

Plaintiff's 30-day Trial Period Ends June 20, 2009

Defendant's Pretrial Disclosures July 5, 2009

Defendant's 30-day Trial Period Ends August 19, 2009

Plaintiff's Rebuttal Disclosures September 3, 2009

Plaintiff's 15-day Rebuttal Period Ends October 3, 2009

News from the TTAB
The USPTO published a notice of final rulemaking in the
Federal Register on August 1, 2007, at 72 F.R. 42242. By
this notice, various rules governing Trademark Trial and
Appeal Board inter partes proceedings are amended. Certain
amendments have an effective date of August 31, 2007, while
most have an effective date of November 1, 2007. For
further information, the parties are referred to a reprint
of the final rule and a chart summarizing the affected
rules, their changes, and effective dates, both viewable on
the USPTO website via these web addresses:
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf

By one rule change effective August 31, 2007, the Board's
standard protective order is made applicable to all TTAB
inter partes cases, whether already pending or commenced on
or after that date. However, as explained in the final rule
and chart, this change will not affect any case in which any
protective order has already been approved or imposed by the
Board. Further, as explained in the final rule, parties are
free to agree to a substitute protective order or to
supplement or amend the standard order even after August 31,
2007, subject to Board approval. The standard protective
order can be viewed using the following web address:
http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm