Discovery Obligations - Third-Party Registrations

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By Theresa Wang

Some parties may wonder where to draw the line regarding their discovery obligations where third-party registrations may be responsive to inquiries regarding the likelihood of confusion, or the strength or weakness of a mark. The TTAB has found that "[a] party need not investigate third-party use in response to discovery requests." Sports Authority Michigan, Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1788 (TTAB 2001). For example, in Manufacturers Technical Institutes, Inc. v. Pinnacle College, LLC, the Board overruled an objection to a party's notice of reliance introducing as evidence (1) third-party registrations; (2) documents from TDR pertaining to those third-party registrations; and (3) third-party webpages with marks utilizing the same term as the marks at issue. 2013 WL 5402083 at *2 (TTAB Sept. 4, 2013). In doing so, the Board noted that "it is common practice to introduce third-party use to demonstrate that a mark is weak and, therefore, entitled to only a narrow scope of protection," and that the party objecting could prepare responsive evidence during the rebuttal testimony period. Id. The TTAB concluded that "Applicant does not have an obligation to investigate third-party uses in response to discovery requests, and opposer cannot legitimately claim to be surprised by applicant's supplementation and later submission into evidence." Id. at *3. However, again, to the extent the party responding to discovery intends to rely upon the third-party registration as evidence, it would be prudent to produce known registration at that time, rather than waiting to submit them during the testimonial period.

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