Summer 2012 Issue
Federal Circuit Cases
Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A.,
685 F.3d 1046 (Fed. Cir. July 9, 2012)
Societe des Produits Nestle S.A. (“Nestle”) opposed Midwestern Pet Foods, Inc.’s (“Midwestern”) intent-to-use application for the mark WAGGIN’ STRIPS for “pet food and edible pet treats” on grounds of a likelihood of confusion with and dilution of its earlier registered and used mark BEGGIN’ STRIPS for “dog snacks.” During discovery, Nestle objected to Midwestern’s discovery requests as overbroad and unduly burdensome, irrelevant and/or protected by the attorney-client privilege and work-product doctrine, or proprietary and not required to be produced before entry of a protective order. Nestle agreed to produce “at a mutually agreeable time and place” nonprivileged documents to the extent the requests were not objectionable on some other basis, and later agreed to reconsider certain of its responses if Midwestern narrowed its requests. Following entry of a protective order, Midwestern took no steps to arrange for the production of the documents that Nestle had agreed to produce, and neither party narrowed its requests or moved to compel any of the requested documents.
On appeal, Midwestern argued that the TTAB erred by failing to sustain Midwestern’s objections to the admission of Nestle’s evidence of its advertising, sales, and marketing activities, because Nestle did not produce those documents in response to Midwestern’s discovery requests. The Federal Circuit dismissed Midwestern’s argument. First, the court pointed out that because the opposition was filed prior to 2007, when TTAB procedures were amended to require mandatory disclosures, Nestle was not required to serve initial or pretrial disclosures. Further, for cases governed by the pre-2007 procedures, TTAB precedent holds that the parties do not have a right to disclosure of the documents and witnesses that the opposing party intends to rely on at trial. The Federal Circuit agreed with the TTAB that, because Nestle objected to the discovery requests on various grounds, TTAB procedures applicable to pre-2007 procedures required Midwestern to move to compel production or test the sufficiency of Nestle’s responses, rather than wait until trial to object to the evidence that Nestle had not produced during discovery. Because of Midwestern’s failure to follow up on Nestle’s offers to produce certain materials at a mutually agreeable time and place, and to respond to narrower document requests or to move to test the sufficiency of Nestle’s responses or compel certain documents, the court held that the TTAB did not abuse its discretion by refusing to strike Nestle’s evidence.
While the decision relates to pre-2007 oppositions, it is instructive in counseling that parties dissatisfied with an adversary’s discovery responses should move to compel or risk waiving any objections to the admission of trial evidence not produced during discovery. The decision is also noteworthy for its ruling on the relevance of postapplication filing-date fame in a likelihood-of-confusion analysis.