UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

P.O. Box 1451
Alexandria, VA 22313-1451

EJW

Mailed: December 31, 2009

Opposition No. 91166320

Huber + Suhner Ltd.

v.

CHAMPLAIN CABLE CORPORATION

ELIZABETH J. WINTER, INTERLOCUTORY ATTORNEY:

Telephone Conference

On December 29, 2009, the parties, Huber + Suhner Ltd.

(represented by Julie B. Seyler of Abelman Frayne & Schwab)

and Champlain Cable Corporation (represented by Heather V.

Miller of Hinman, Howard & Kattel, LLP), and Elizabeth

Winter, the assigned Interlocutory Attorney, all

participated in a telephone conference regarding opposer’s

motion to compel.1 See Trademark Rules 2.120(i)(1) and

2.127(c); and TBMP § 502.06 (2d ed. rev. 2004). This order

summarizes the conference and sets forth the status of the

proceeding.

1The motion to compel was originally filed on March 13, 2008, but
was deemed moot by the Board in an order mailed October 22, 2008.
The motion was reinstated by the Board in its order mailed May
11, 2009. This proceeding has remained suspended since that
date.
Opposition No. 91166320

To expedite the decision on the subject motion, the

Board presumes the parties’ familiarity with the issues

presented and does not provide a complete recitation of the

allegations and arguments of each party.

Opposer’s Motion to Compel

In its reply brief, opposer specified that only

applicant’s responses to Interrogatory Nos. 6, 7(a) and

7(b), and to Requests for Production of Documents Nos. 6, 8,

9, 14 and 19 remain in dispute. In view thereof, during the

telephone conference, the Board addressed those discovery

requests and applicant’s responses thereto.

• Good Faith Effort Requirement

At the outset, the Board addressed the requirement of

Trademark Rule 2.120(e)(1), 37 C.F.R. § 2.120(e)(1), viz.

that a motion to compel must be supported by a written

statement from the moving party that such party or its

attorney has made a good faith effort, by conference or

correspondence, to resolve with the other party or its

attorney the issues presented by the motion, and has been

unable to reach an agreement. See TBMP §532.02 (2d ed. rev.

2004). Specifically, the Board noted the letters from

opposer’s counsel to applicant’s counsel dated December 26,

2007, February 19, 2008, March 7, 2008 and October 8, 2008,

and a telephone call between counsel that apparently

occurred in late September or October 2008, with which

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opposer sought to resolve the initial lack of response from

applicant and, later, alleged deficient responses from

applicant. Notwithstanding opposer’s seven-month delay in

following up regarding the alleged deficiencies in

applicant’s responses, the Board stated that opposer had

complied with the good faith effort requirement set forth in

Trademark Rule 2.120(e)(1).

• Interrogatories

The following determinations were made regarding

opposer’s interrogatories. Opposer’s motion to compel is:

(1) Granted in part, with respect to interrogatory no.

6. The Board discussed the list of goods on applicant’s

document “Bates No. 00136”, which sets forth sales in dollar

units from May 26, 2006 through 2008. Applicant clarified

that the description of goods in the involved application

includes all the goods listed on said document. The Board

stated that providing annual sales figures (rather than the

monthly figures requested) for the described goods in

connection with the involved mark is sufficient. However,

applicant is required to provide annual sales figures for

the last five years (i.e. including and subsequent to May

26, 2004), which were not already provided. See American

Optical Corp. v. Exomet, Inc., 181 USPQ 120, 123 (TTAB 1974)

(required to furnish round figures concerning sales under

mark for period of five years as well as advertising

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expenditures relating thereto; and TBMP § 414(18) (2d ed.

rev. 2004).

(2) Granted in part, with regard to interrogatory nos.

7(a) and 7(b). Applicant’s response as to whether it

engages in advertising or other promotional activities

relative to applicant’s goods with applicant’s mark was that

it does not engage in print advertising, but has sales

literature and brochures and maintains a website. Applicant

also stated the approximate cost of its sales brochures as

$30,000 annually. Such responses are sufficient but for the

wording “and maintains a website”, which begs the question

as to whether applicant provides advertising on its website.

This question is supported by evidence provided by

applicant, i.e. product summaries shown at applicant’s

website as shown in applicant’s documents, Bates Nos. 00038-

00039.

Applicant must clarify whether it provides advertising

on its website and, to the extent it does so, applicant must

(i) explain to opposer how advertising is conducted via the

website, e.g. hyperlinks to product information sheets or

single-page product summaries, and (ii) provide the annual

costs of said advertising to the extent that such

advertising and promotional costs can be separated from the

costs of creating and maintaining the website for general

purposes, and to the extent applicant’s expenditures, if

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Opposition No. 91166320

any, for website advertising exceeds the $30,000 annual

advertising expenditures for printing its brochures,

applicant must provide annual advertising figures incurred

for website advertising for the last five years. See Id.

If such data is unavailable, applicant should state so

explicitly.

As discussed, applicant must also clarify whether an

advertising agency is involved in the creation of its

product information sheets and/or any website advertising.

If such an entity is so involved, applicant must identify

the advertising agency employees having the most knowledge

of such advertising and promotion. See TBMP § 414(17) (2d

ed. rev. 2004).

• Requests for Production of Documents

Before addressing the particular requests for

production in dispute, the Board noted opposer’s requests

for “all documents” in several of its requests. To the

extent opposer requests copies of “all documents” that

relate to the production of applicant’s goods, such request

is denied for being overly broad and unduly burdensome. In

general, a request for “all documents” without any temporal

limitation is not in conformance with the parties’

obligation to make a good faith effort to seek only such

discovery as is proper and relevant to the specific issues

involved in the proceeding. See TBMP § 402.01 (2d ed. rev.

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2004). Furthermore, a party need not provide discovery with

respect to goods that are not involved in the proceeding and

have no relevance thereto. Id. at § 414(11).

The following determinations were made regarding

opposer’s requests for production of documents in dispute.

Opposer’s motion to compel is:

(1) Granted in part, with respect to request for production

no. 6. In regard to opposer’s request for documents

concerning “the production of applicant’s goods …,” the

Board notes that applicant has stated that all its goods are

produced in Colchester, Vermont. Applicant also has

provided an invoice history list (shown in applicant’s

documents, Bates Nos. 00138-00139), which sets forth a list

of buyers of “automotive products” for the year 2004, and

numerous product information sheets (shown in applicant’s

documents, Bates Nos. 00038-00090). Applicant’s counsel

stated that actual invoices are kept in storage and are

unavailable without undue burden to applicant. The Board

notes also the declaration of Rick Antic, which avers that

applicant “markets and sells wire and cable products to the

automotive and transportation industry under the RADXL mark”

and that applicant’s customer base “includes” original

equipment manufacturers for the automotive industry.

Nonetheless, these references to the “automotive industry”

or “transportation industry” are insufficient insofar as

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Opposition No. 91166320

such wording is overly vague as to the identity of customer

types in the context of such complex industries. Moreover,

the term “includes” implies that there exist other types or

classes of customers. Opposer is entitled to more specific

information on classes of customers of applicant’s involved

goods sold in connection with the RADXL mark (TBMP § 414(3))

and on geographic areas of distribution of goods sold under

the involved mark (TBMP § 414(16)). Therefore, to the

extent it has not already done so, applicant must provide

documents in its custody, possession or control which show

geographic areas of distribution of the involved goods sold

in connection with the RADXL mark and specific classes of

customers for said goods.2

As noted during the conference, where complete

compliance with this or any other granted discovery request

discussed in this order would be unduly burdensome, a

representative sampling may be provided (TBMP § 414(2));

however, an explanation must be made describing why the

request is unduly burdensome. (For example, the responding

party has tens of thousands of documents spanning decades.)

Furthermore, a production of “representative” documents must

truly be a representative sampling, and not merely a self-

2 The Board has already addressed supra, in connection with

Interrogatory no. 6, the manner in which applicant is to provide
to opposer additional information regarding annual sales of its
goods sold in connection with the RADXL mark.

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serving selection of favorable documents. See, e.g., The

Procter & Gamble Company v. Keystone Automotive Warehouse,

Inc., 191 USPQ 468 (TTAB 1976). An evasive or incomplete

response is the equivalent of a failure to disclose. Fed.

R. Civ. P. 26(g) and 37(a)(3).

(2) Granted in part, with respect to request for production

no. 8. In regard to opposer’s request for documents

relating to the implementation of applicant’s advertising

program, applicant stated in its supplemental response that

it “does not advertise its products in print media. Samples

of Applicant’s product information sheets which are directed

to customers are attached (Bates numbers 00038-00090).

Applicant is responsible for printing the product

information sheets.” This response is sufficient to the

extent applicant has provided representative samples of its

product advertising. However, in tandem with applicant’s

responses to Interrogatory Nos. 7(a) and 7(b) and document

request no. 6 discussed supra, applicant must provide

documents in its custody, possession or control which show

the classes of customers who have received or receive the

product information sheets or who access applicant’s website

advertising. As noted, supra, opposer is entitled to

information on the classes of customers for a party’s

involved goods. See TBMP § 414(3) (2d ed. rev. 2004). If

such data is unavailable, applicant should state so

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explicitly. Applicant is not obligated to create responsive

documents solely to satisfy opposer’s discovery requests.

See Washington v. Garrett, 10 F.3d 1421, 1437-1438 (9th Cir.

1993).

(3) Denied, with respect to request for production no. 9,

except as agreed between the parties. In regard to

opposer’s request for documents regarding applicant’s first

use of its RADXL mark in the United States, the Board noted

that priority is not an issue in this case (see, e.g.,

notice of opp. ¶6). Opposer asserted that such information

may be relevant to the prior relationship between the

parties. Applicant agreed to research whether original

invoices of applicant’s first use of the mark RADXL with the

involved goods and, if available, provide such document(s)

to opposer.

(4) Denied as being overly broad and burdensome, with

respect to request for production no. 14, except as agreed

to by the parties. Applicant already provided a sample

label (applicant’s document with Bates No. 00091), but

agreed during the conference to provide an actual label

showing how the mark is actually presented in connection

with the involved goods.

(5) Denied, with respect to request for production no. 19,

which requested “all documents showing that applicant was

affiliated with opposer.” Applicant’s response is sufficient

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Opposition No. 91166320

(see applicant’s documents, Bates Nos. 00092-00124); and other

documents should be in opposer’s control or possession.

Duty to Supplement Responses

Applicant is reminded of its continuing duty to

thoroughly search its records for all information properly

sought in discovery, and to provide such information to the

requesting party. TBMP § 408.02 (2d ed. rev. 2004). A party

that has responded to a request for discovery with a response

is under a continuing duty to supplement or correct the

response to include information thereafter acquired or

uncovered. Id. at § 408.03.

Applicant is also reminded that, if a party provides an

incomplete response to a discovery request, that party, upon a

timely raised objection by an adverse party, may not

thereafter rely at trial on information from its records which

was properly sought in the discovery request, but which was

not included in the response thereto, unless the response is

supplemented in a timely fashion pursuant to Fed. R. Civ. P.

26(e). See Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718

(TTAB 1987); and TBMP §408.02. Applicant is further reminded

that, should it be later found to have willfully withheld

discovery responses, introduction of such evidence withheld

may be precluded upon a motion to strike.

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Opposition No. 91166320

Proceedings Resumed; Trial Dates

Opposer’s motion to compel is granted to the extent

discussed herein. Proceedings are resumed. Applicant is

allowed until THIRTY DAYS from the mailing date of this

order in which to respond to the interrogatories, as

discussed, and to identify and copy all documents and

materials responsive to opposer’s document requests, as

discussed herein, and forward such information and materials

to opposer. Trial dates are reset as follows:

DISCOVERY PERIOD TO CLOSE: CLOSED

Thirty-day testimony period for party in March 31, 2010

position of plaintiff to close:
Thirty-day testimony period for party in May 30, 2010
position of defendant to close:
Fifteen-day rebuttal testimony period to July 14, 2010
close:

In each instance, a copy of the transcript of

testimony, together with copies of documentary exhibits,

must be served on the adverse party within thirty days after

completion of the taking of testimony. Trademark Rule

2.l25.

Briefs shall be filed in accordance with Trademark Rule

2.128(a) and (b). An oral hearing will be set only upon

request filed as provided by Trademark Rule 2.l29.

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