Kairos Institute of Sound Healing, LLCv.Doolittle Gardens, LLC

Trademark Trial and Appeal Board

Oct 17, 2008

No. 91181945 (T.T.A.B. Oct. 17, 2008)

JK Mailed:October 17, 2008

Opposition No. 91181945
Kairos Institute of Sound
Healing, LLC

v.
Doolittle Gardens, LLC

Before Holtzman, Cataldo and Ritchie de Larena:
Administrative Trademark Judges.

By the Board:
This proceeding is before the Board for consideration
of applicant’s motion (filed May 12, 2008) for sanctions in
the nature of dismissal of the opposition, or in the
alternative for imposition of a lesser sanction, for
opposer’s failure to make initial disclosures. The motion
is fully briefed.1
Under Trademark Rule 2.120(a)(2), initial disclosures
must be made no later than thirty days after the opening
date of discovery, and under Trademark Rule 2.120(a)(3) a
party cannot seek discovery until it has made its initial

1 Although the Board delayed in its issuance of an order
suspending proceedings pending disposition of applicant’s motion,
we consider proceedings to have been effectively suspended as of
the date of filing of the motion, namely, May 12, 2008. The
Board acknowledges this delay, and, in view of its ruling herein,
has reset a substantial remaining discovery period.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a
Precedent of the TTAB
Opposition No. 91181945
2
disclosures, absent modification of this requirement by
stipulation of the parties approved by the Board, on motion
granted by the Board, or by order of the Board.
Pursuant to the Board’s January 16, 2008 notice of
institution, the parties’ reciprocal initial disclosures
were due April 25, 2008. Applicant served its initial
disclosures on April 25, 2008, but opposer did not serve its
initial disclosures until May 30, 2008, over a month late
and three days after applicant filed its motion for
sanctions.2
Applicant argues that dismissal is an appropriate
sanction under Trademark Rule 2.120(g)(1).3 Applicant
asserts that opposer, acting in bad faith, willfully evaded
its disclosure obligation, thereby causing prejudice by
leaving applicant to speculate about opposer’s evidence and
witnesses, and rendering applicant unable to formulate an
adequate discovery plan.

2 The Board notes that opposer also filed its initial disclosures
with the Board, and thereafter, on August 22, 2008, filed its
expert disclosures with the Board as well. Written disclosures
should not be filed with the Board, except when submitted with a
motion relating to disclosure or discovery, or in support of or
in response to a motion for summary judgment, or under a notice
of reliance, when permitted, during a party’s testimony period.
See Trademark Rule 2.120(j)(8).

3 Trademark Rule 2.120(g)(1) also provides for possible
imposition of a sanction when a party fails to participate in the
required discovery conference. That provision of the rule is
not, however, implicated by the pending motion, as applicant’s
brief on the motion acknowledges opposer’s participation in such
conference.
Opposition No. 91181945
3
In response, opposer represents that its failure to
serve timely disclosures was inadvertent and unintentional,
that it cured this oversight by providing such disclosures
on May 30, 2008, and that applicant has suffered no actual
prejudice inasmuch as over three months of discovery
remained after opposer served its late initial disclosures.
Analysis
Trademark Rule 2.120(a)(2) requires parties to serve
initial disclosures, see Fed. R. Civ. P. 26(a)(1), no later
than thirty days after the opening of the discovery period.
Trademark Rule 2.120(g)(1) provides, in pertinent part
(emphasis added):
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.

Trademark Rule 2.120(g)(2), which sets forth additional
provisions discussing the possible imposition of sanctions
for failure to make initial disclosures, states, in
pertinent part (emphasis added):
If a party fails to make required initial disclosures
or expert testimony disclosure, and such party or the
party’s attorney or other authorized representative
informs the party or parties entitled to receive
disclosures that required disclosures will not be made,
the Board may make any appropriate order, as specified
in paragraph (g)(1) of this section.

Opposition No. 91181945
4
Accordingly, sanctions under Trademark Rule
2.120(g)(1), with respect to initial disclosures, may be
ordered only where a party’s failure to make disclosures
follows an order of the Board affirming or reiterating the
party’s obligation to make such disclosures.4 In contrast,
the sanctions provided for under Trademark Rule 2.120(g)(2)
may be ordered even in the absence of a prior Board order
affirming or reiterating the party’s obligation to make
disclosures, but require that the party bearing the
obligation affirmatively state that disclosures will not be
forthcoming.
The requirement for parties to make reciprocal initial
disclosures was introduced into Board inter partes
proceedings by amendments to the Trademark Rules, and is
applicable to all proceedings which commenced on or after
November 1, 2007. See Notice of Final Rulemaking,
Miscellaneous Changes to Trademark Trial and Appeal Board
Rules, 72 Fed. Reg. 42242 (Aug. 1, 2007), (hereinafter
“Final Rule”). In the Final Rule, the Board indicated that
the requirement for reciprocal initial disclosures
facilitates the exchange of “core information regarding the
existence of and location of witnesses and documents,”

4 We note, however, that 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.

Opposition No. 91181945
5
lessens the expense of traditional discovery, and promotes
early communication toward possible settlement. It is clear
that the obligation of parties to make initial disclosures
is integral to the efficient conduct of Board proceedings
and not an obligation to be taken lightly by the parties.
However, the Final Rule also made clear, in various
places, that initial disclosures would essentially be
treated the same as discovery responses. Final Rule, 72
F.R. at 42246 ("In essence, initial written disclosures and
initial disclosures of documents will be treated like
responses to discovery requests."). "A motion to compel is
the available remedy when an adversary has failed to make,
or has made inadequate, initial disclosures or disclosures
of expert testimony. Both of these types of disclosures are
made during discovery, and a motion to compel must precede a
motion for sanctions. A motion for sanctions is only
appropriate if a motion to compel these respective
disclosures has already been granted." Final Rule, 72 F.R.
at 42256.
Clearly, the amended rules relating to initial
disclosures treat such disclosures as part of the discovery
phase of the proceeding. Just as sanctions are available
when a party fails to meet its discovery obligations, so too
are sanctions available when a party fails to meet its
initial disclosure obligations. However, in both instances,
Opposition No. 91181945
6
sanctions are not available under Trademark Rule 2.120(g)(1)
unless a Board order has been violated, and sanctions are
not available under Trademark Rule 2.120(g)(2) unless the
party has failed to meet its obligation and has also
expressly stated to its adversary that it does not intend to
meet its obligation, e.g., will not provide initial
disclosures or respond to discovery.
The current motion presents neither of these
circumstances. No order compelling initial disclosures has
issued in this proceeding pursuant to Trademark Rule
2.120(e), and accordingly, imposition of any sanction under
Trademark Rule 2.120(g)(1), whether in the form of dismissal
or some lesser sanction, would be premature. Cf. Fort
Howard Paper Co. v. G.V. Gambina Inc., 4 USPQ2d 1552, 1553
(TTAB 1987) (motion for discovery sanctions “not legally
cognizable … until the party failing to answer discovery had
violated a Board order compelling such discovery” and motion
for sanctions not construed in the alternative as a motion
to compel because such a motion requires “as a prerequisite
to judicial action” good faith attempt to resolve
differences).
Furthermore, notwithstanding that the notice of
institution sets a deadline for the parties to provide
initial disclosures, it does not constitute an “order of the
Trademark Trial and Appeal Board relating to disclosure”
Opposition No. 91181945
7
within the contemplation of Trademark Rule 2.120(g)(1). A
notice of institution is merely a scheduling order, whereas
the type of order that is contemplated as a prerequisite to
a motion for sanctions under Trademark Rule 2.120(g)(1) is
an order granting or denying a motion to compel or a motion
for a protective order. Cf. M.C.I. Foods Inc. v. Bunte, 86
USPQ2d 1044, 1048 (TTAB 2008) (“Because M.C.I. failed to
comply with the Board's orders [granting motions to compel],
sanctions are appropriate.”), and MHW Ltd. v. Simex,
Aussenhandelsgesellschaft Savelsberg KG, 59 USPQ2d 1477,
1478 (TTAB 2000) (“The law is clear that if a party fails to
comply with an order of the Board relating to discovery,
including an order compelling discovery, the Board may order
appropriate sanctions as defined in Trademark Rule
2.120(g)(1) and Fed. R. Civ. P. 37(b)(2), including entry of
judgment [citations omitted].”). See also, S. Industries
Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1298 (TTAB 1997)
(“In the event that petitioner fails to comply with this
Board order compelling discovery, a formal motion for
sanctions will be entertained by the Board. See Trademark
Rule 2.120(g).”).
Opposition No. 91181945
8
Accordingly, under the circumstances presented herein,
applicant’s motion for sanctions in the nature of dismissal
is premature and is denied.5
If applicant here had first filed, and the Board had
granted, a motion to compel the disclosures, and opposer had
thereafter failed to timely provide them, or provided
inadequate disclosures, applicant would then have been able
to move for sanctions. Under such circumstances, the
question of what sanction, if any, would be appropriate,
would be committed to the discretion of the Board.
“Specific consequences for failure of a party to make
timely, proper or adequate disclosures have not been set out
in the final rule. The Board must retain the discretion to
tailor sanctions to the particular circumstances of each
case.” Final Rule 72 F.R. at 42256.6
While applicant’s motion for sanctions has been denied,
we add that opposer is now warned that it must adhere to the
provisions of applicable rules and that its lax approach to
its initial disclosure obligation may be considered as an
aggravating factor if applicant has occasion to file a later

5 We decline to construe applicant’s motion for sanctions as a
motion to compel disclosure. A motion to compel disclosure, like
a motion to compel discovery, may be filed only after the parties
have made a good faith effort to resolve the dispute in
accordance with Trademark Rule 2.120(e)(1).

6 Applicant’s alternative request for a lesser sanction sought
attorneys’ fees. The Board will not, however, award costs or
fees. See Trademark Rule 2.127(f).

Opposition No. 91181945
9
motion for sanctions under Trademark Rule 2.120(g). To be
specific, the Board would not hesitate, upon filing of a
well-taken motion for such sanctions, to consider the full
range of sanctions provided for under Fed. R. Civ. P. 26,
and case law interpretive thereof. Such sanctions could
include, for example, imposing a limitation on the number of
depositions opposer may take, directing that opposer may
only serve a certain number of interrogatories or document
requests, and/or extending the discovery period for
applicant alone in order to account for the impediment that
the late service of disclosures presented for applicant’s
ability to take discovery. Such sanctions might also result
in an order precluding opposer from relying at trial on
information or documents which should have been disclosed
(Cf. Presto Products Inc. v. Nice-Pak Products Inc., 9
USPQ2d 1895, 1896 n.5 [TTAB 1988]), or an order barring
opposer from later introducing information which it did not
produce. See TBMP § 527.01(e)(2d ed. rev. 2004). Moreover,
we have recognized that “A party may seek to strike any
testimony or portions of testimony, whether or not from an
expert, when related disclosures were untimely, improper or
inadequate.” Final Rule 72 F.R. at 42256.
As a final matter, the parties are reminded that the
provision of Fed. R. Civ. P. 26(e) regarding the duty to
supplement or amend disclosures applies to inter partes
Opposition No. 91181945
10
proceedings before the Board (see Final Rule, 72 F.R. at
42254), and that the Board’s standard protective order is
applicable in this proceeding pursuant to Trademark Rule
2.116(g).
Proceedings herein are resumed. The deadline for
expert disclosures, the close of discovery, and all trial
dates are reset as follows:
Expert Disclosures Due 2/25/2009
Discovery Closes 3/27/2009
Plaintiff's Pretrial
Disclosures 5/11/2009
Plaintiff's 30-day Trial Period
Ends 6/25/2009
Defendant's Pretrial
Disclosures 7/10/2009
Defendant's 30-day Trial Period
Ends 8/24/2009
Plaintiff's Rebuttal
Disclosures 9/8/2009
Plaintiff's 15-day Rebuttal
Period Ends 10/8/2009

In each instance, a copy of the transcript of testimony
together with copies of documentary exhibits, must be served
on the adverse party within thirty days after completion of
the taking of testimony. Trademark Rule 2.l25.
Briefs shall be filed in accordance with Trademark Rules
2.128(a) and (b). An oral hearing will be set only upon
request filed as provided by Trademark Rule 2.l29.