During Discovery In Pre-2007 Trademark Cases At TTAB, Parties Have No Duty To Produce Evidence On Which They Will Rely

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 relating to the BEGGIN' STRIPS mark because Nestle did not produce those documents in response to Midwestern's discovery requests. The Federal Circuit disagreed, holding that the TTAB did not abuse its discretion in refusing to strike Nestle's evidence.

"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 noted that because the opposition was filed prior to 2007 when the TTAB procedures were amended to require mandatory disclosures, Nestle was not required to identify the evidence it intended to present or the witnesses it intended to call. The Court stated that "[TTAB] precedent and procedures applicable to pre-2007 cases . . . required Midwestern to move to compel production in order to test the sufficiency of Nestle's response." Slip op. at 6. The Court noted that "[the TTAB] has not adopted [the Federal Rules of Civil Procedure] in toto, and it has retained discretion to adopt...