Last Month at the Federal Circuit
Last Month at the Federal Circuit

August 2012

In Pre-2007 TTAB Cases, Party Seeking to Exclude Trial Evidence Not Produced By Adversary During Discovery Must First File Motion to Compel

Judges:  Bryson (author), Mayer, Dyk (concurring-in-part and dissenting-in-part)
[Appealed from TTAB]

In Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., No. 11-1482 (Fed. Cir. July 9, 2012), the Federal Circuit affirmed the TTAB’s decision denying registration of Midwestern Pet Foods, Inc.’s (“Midwestern”) WAGGIN’ STRIPS mark, based on a likelihood of confusion with Societe des Produits Nestle S.A.’s (“Nestle”) registered BEGGIN’ STRIPS mark, and because the TTAB committed no reversible procedural error in admitting evidence offered by Nestle.

Nestle’s BEGGIN’ STRIPS registered mark for pet treats has been in continuous use since 1988 and has been registered since 1989.  In connection with the introduction of a new product, Midwestern filed an intent-to-use application with the PTO seeking to register the mark WAGGIN’ STRIPS for pet food and edible pet treats.  Nestle opposed Midwestern’s application on the ground of a likelihood of confusion between the two marks.

The TTAB allowed Nestle to present certain evidence over Midwestern’s objections.  On the merits, the TTAB rejected Nestle’s claim of trademark dilution but sustained Nestle’s opposition to Midwestern’s application based on a likelihood of confusion.  Midwestern appealed.

On appeal, Midwestern argued that the TTAB erred by failing to sustain Midwestern’s objection 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 initial disclosures, Nestle was not required to specify in advance of trial the evidence it intended to present or the witnesses it intended to call.  Further, for cases governed by the pre-2007 procedures, TTAB precedent holds that 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] precedent and procedures applicable to pre-2007 procedures . . . required Midwestern to move to compel production in order to test the sufficiency of Nestle’s response.”  Slip op. at 6.  “In view 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, and . . . to test the sufficiency of Nestle’s objections to the discovery requests by moving to compel the production of the requested materials,” the Court held that the TTAB did not abuse its discretion by refusing to strike Nestle’s evidence.  Id. at 8-9.

“While the [TTAB] has followed the federal rules with regard to discovery matters in most respects, it has not adopted those rules in toto, and it has retained discretion to adopt discovery rulings suited to matters before it in order to balance the parties’ interests.”  Slip op. at 7.

The Court held that the TTAB did not err in considering Nestle’s evidence of the fame that postdated the filing of Midwestern’s application.  The Federal Circuit reasoned that Midwestern had misread the TTAB’s precedent on the issue, which holds that while such evidence is not relevant to the issue of dilution, it is relevant to the issue of likelihood of confusion.

On the merits, Midwestern argued that the TTAB erred in finding Midwestern’s WAGGIN’ STRIPS mark confusingly similar to Nestle’s BEGGIN’ STRIPS mark.  The Federal Circuit disagreed, holding that
“[s]ubstantial evidence support[ed] the [TTAB’s] finding that BEGGIN’ STRIPS, although not a famous
mark, . . . enjoyed ‘at least a high degree of recognition’ that has rendered the mark ‘distinctive and strong and entitled to a broad level of protection.’”  Id. at 11 (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1375 (Fed. Cir. 2005)).  “Although Nestle did not introduce consumer survey evidence in support of its showing of a likelihood of confusion, neither the [TTAB] nor [the Federal Circuit] . . . require[s] survey evidence in order to show a likelihood of confusion.”  Id. at 13.

Judge Dyk concurred-in-part and dissented-in-part.  Judge Dyk agreed with the majority’s resolution of the likelihood-of-confusion issue on the record, but disagreed with its approval of the process by which the TTAB reached its decision.  Specifically, Judge Dyk stated that the majority’s holding that Nestle had no duty to produce the evidence on which it intended to rely and that Midwestern’s failure to file a motion to compel barred it from objecting to admission of that evidence are incorrect and conflict with the advisory committee notes and with decisions interpreting the Federal Rules of Civil Procedure.