Pattishall IP Blog

December 1, 2011

E-Discovery In The Board: A Reasoned Approach

Filed under: E-Discovery, TTAB — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:27 pm

by Phillip Barengolts, Trademark Attorney

The Trademark Trial and Appeal Board (the “Board”) generally follows the Federal Rules of Civil Procedure for purposes of its proceedings, including with respect to discovery.  Thus, discovery of electronically stored information (“ESI”) has become as important in Board proceedings as in federal court litigation.  Unlike a number of federal courts, which have struggled with these issues and sometimes ruled in ways that greatly increase the costs of litigation, the Board recently struck a reasonable balance for engaging in e-discovery in its proceedings.  Specifically, the Board denied an applicant’s motion to compel an opposer to engage in extensive e-discovery in the precedential decision in Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, Opposition No 91195552 and Cancellation No. 92053001 (T.T.A.B. Nov. 16, 2011).[1]

The underlying dispute involves Frito-Lay’s opposition to Princeton’s application to register PRETZEL CRISPS for “pretzel crackers.”[2]  During their mandatory discovery conference, the parties failed to agree on discovery of ESI.  After both both parties served requests for documents, including ESI, Princeton extensively reviewed and produced its relevant ESI – costing Princeton approximately $200,000, with an anticipated $100,000 more to comply with its ongoing obligations under the Federal Rules.  Frito-Lay was less forthcoming, so Princeton moved to compel Frito-Lay to produce ESI in the same manner as Princeton.

At its heart, the dispute is best summed up in the words of the parties’ attorneys (as quoted in the Board’s Order):

  • Princeton’s counsel complained that Frito-lay had not conducted “attorney-managed electronic data retrieval and search” and this “failure to conduct an attorney-supervised ESI retrieval, search (using appropriate keywords) and review has substantially prejudiced [Princeton’s] ability to defend.”  Moreover, “[n]o cost, burden or other reason allows [Frito-Lay] to rely on custodians to search their own files where the results of that policy are clearly insufficient. . .”;
  • Frito-Lay’s counsel responded that Frito-Lay had conducted a “reasonable investigation to locate, gather and produce documents reasonably responsive” to Princeton’s discovery requests, including by identifying document custodians and asking them to search their own files and computers.  Further, attorney-supervised searches of ESI would cost Frito-Lay an additional $70,000 – $100,000, “an expense that would far outweigh the benefit of any information in determining the matters at issue in this proceeding,” especially since the claims in the proceeding pertained solely to Princeton’s mark and Frito-Lay.[3]

For the litigators among you, this dispute likely has a familiar ring.  (more…)

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