September 2010 Issue

TTAB Cases

Super Bakery, Inc. v. Benedict,
Canc. No. 92047859 (TTAB Sept. 16, 2010)

ABSTRACT
Respondent failed to timely respond to Petitioner’s discovery requests on multiple occasions, including in violation of two TTAB orders.  After the TTAB issued its second order directing Respondent to respond to Petitioner’s requests, Respondent filed a summary judgment motion (but still did not respond to Petitioner’s discovery requests).  Petitioner filed a motion for default judgment as a sanction.  The TTAB granted Petitioner’s motion and denied Respondent’s motion for summary judgment as moot.  Respondent appealed on the ground that the proceeding should have been automatically suspended upon the filing of his summary judgment motion.  The Federal Circuit vacated the default judgment and remanded the case to the TTAB for a determination of whether the case should have been automatically suspended under the Trademark Rules.  The TTAB held that suspension was not automatic and was inappropriate under the circumstances.  Accordingly, judgment was reentered against Respondent.

CASE SUMMARY

FACTS
Super Bakery, Inc. (“Petitioner”) filed a combined motion to compel discovery responses and request for suspension.  Ward E. Benedict (“Respondent”) did not respond to the motion and the TTAB issued an order granting the motion to compel as conceded.  Pursuant to that order, Respondent was allowed thirty days to serve full and complete responses without objection to Petitioner’s outstanding discovery requests.  Again, Respondent failed to serve any discovery responses, prompting Petitioner to file a motion for default judgment as a sanction.

Shortly thereafter, Respondent filed a motion for reconsideration of the TTAB’s order compelling Respondent to respond to the outstanding discovery requests.  The TTAB denied Respondent’s motion as untimely because it had been filed almost two months after the TTAB’s order issued, and a request for reconsideration must be filed within one month of the issuance of the order or decision.  The TTAB also ordered Respondent to again provide full and complete responses to Petitioner’s discovery requests without objection within thirty days.

Notwithstanding this order, Respondent still did not respond to any of Petitioner’s discovery requests.  Instead, one day before the discovery response deadline, Respondent filed a motion for summary judgment.  The TTAB suspended the proceedings pending determination of Respondent’s motion.

In responding to Respondent’s motion for summary judgment, Petitioner filed a second motion for sanctions, asking the TTAB to enter judgment against Respondent for his failure to comply with the TTAB’s order.  Because Respondent had failed to respond to Petitioner’s discovery requests as twice ordered, the TTAB granted Petitioner’s motion, entering default judgment against Respondent and denying Respondent’s motion for summary judgment as moot.

Respondent appealed the TTAB’s decision on the ground that Respondent’s obligation to comply with the TTAB’s discovery sanctions should have been deemed suspended upon the filing of Respondent’s motion for summary judgment.  The Federal Circuit vacated the default judgment and remanded the case for consideration of the application of Trademark Rule 2.127(d) to the facts of the case.

CONCLUSION
The TTAB will not automatically suspend a TTAB proceeding upon the filing of a motion for summary judgment, but rather a decision to suspend will be determined based on the particular facts of a case.  Suspension may be inappropriate, for example, where a party has filed a motion for summary judgment in an attempt to avoid compliance with a previous TTAB order or to otherwise frustrate the discovery process.