UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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` Mailed: April 18, 2005
`
`Opposition No. 91123765
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`Central Mfg. Co.
`
`
`V.
`
`
`Paramount Parks, Inc.
`
`
`
`
`
`Lykos
`
`
`
`
`Angela Lykos, Interlocutory Attorney
`
`This case now comes up for consideration of opposer's
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`
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`motion (filed April 7, 2005) to compel the attendance of three
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`corporate officers of applicant for discovery depositions. The
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`motion is fully briefed.1
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`
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`Opposer seeks to compel the attendance of the following two
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`witnesses for discovery depositions: (1) Mr. Al Weber, Jr., the
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`President and Chief Executive Officer of applicant,
`
`
`1 Applicant, in its response brief, requested that the Board resolve
`this discovery dispute by telephone conference. Notwithstanding
`opposer's objection thereto, the need for a telephone conference is
`obviated inasmuch as the motion to compel has been fully briefed by
`both parties in writing, and the Board is promptly ruling on the
`motion.
`
` Opposer has submitted a reply brief which the Board has considered
`because it clarifies the issues herein. Consideration of a reply
`brief is discretionary on the part of the Board. See Trademark Rule
`2.127(a).
`
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
` Mailed: April 18, 2005
`
`Opposition No. 91123765
`
`Central Mfg. Co.
`
`
`V.
`
`
`Paramount Parks, Inc.
`
`
`
`
`
`Lykos
`
`
`
`
`Angela Lykos, Interlocutory Attorney
`
`This case now comes up for consideration of opposer's
`
`
`
`motion (filed April 7, 2005) to compel the attendance of three
`
`corporate officers of applicant for discovery depositions. The
`
`motion is fully briefed.1
`
`
`
`Opposer seeks to compel the attendance of the following two
`
`witnesses for discovery depositions: (1) Mr. Al Weber, Jr., the
`
`President and Chief Executive Officer of applicant,
`
`
`1 Applicant, in its response brief, requested that the Board resolve
`this discovery dispute by telephone conference. Notwithstanding
`opposer's objection thereto, the need for a telephone conference is
`obviated inasmuch as the motion to compel has been fully briefed by
`both parties in writing, and the Board is promptly ruling on the
`motion.
`
` Opposer has submitted a reply brief which the Board has considered
`because it clarifies the issues herein. Consideration of a reply
`brief is discretionary on the part of the Board. See Trademark Rule
`2.127(a).
`
`
`
`and (2) Mr. P. Michael Koontz, the Chief Financial Officer of
`
`applicant. Opposer contends that it spoke with counsel for
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`applicant on March 30, 2005 who responded that said witnesses
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`would not be produced.
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`In support of its motion to compel, opposer has submitted
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`copies of each respective notice of deposition served March 25,
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`2005, and scheduled to take place April 28, 2005.
`
`
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`In opposition to opposer's motion to compel, applicant
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`maintains that contrary to opposer's assertion, applicant did
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`not state that it would refuse to produce the requested
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`witnesses but rather that it needed additional time to provide
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`responses and/or objections to the noticed depositions; that
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`applicant can now confirm that none of the noticed witnesses
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`have any relevant knowledge or information with respect to the
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`trademark applications or trademark use at issue in this
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`litigation; but that nonetheless, applicant will make available
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`for deposition a corporate representative with knowledge of the
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`relevant facts to this proceeding on the date and location
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`requested by opposer. Applicant also objects to opposer's
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`notices of deposition on the grounds that they constitute "sheer
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`harassment" of applicant.
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`Applicant has submitted with its responsive brief the
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`affidavit of Lacy H. Koonce, III, applicant's counsel; and the
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`affidavits of Mr. Weber and Mr. Koontz, each attesting that he
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`2
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`
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`has "no knowledge or information of the trademark applications
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`that are the subject of this opposition, or of the trademark use
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`by Paramount of the mark HYPERSONIC, other than the fact that
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`Paramount operates a theme park ride in Virginia called
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`Hypersonic XLC Xtreme Launch Coaster."
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`
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`As a threshold matter, we find that opposer has made a
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`good-faith effort to resolve this discovery dispute prior to
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`seeking Board intervention. See Trademark Rule 2.120(e).
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`
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`Although applicant has not filed a cross-motion for
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`protective order in response to opposer's motion to compel, due
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`to the particular circumstances involved in this case, a
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`discussion of the standards governing this type of motion is
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`relevant here.
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`
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`The scope of discovery in a Board proceeding is governed by
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`Fed. R Civ. P. 26(b), which provides that a party is entitled to
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`discovery regarding any matter, not privileged, which is
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`relevant to the subject matter of the proceeding, and which
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`appears reasonably calculated to lead to the discovery of
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`admissible evidence. See TBMP § 402. Consistent with that rule,
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`a party is permitted to take the discovery deposition of "any
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`person." See TBMP § 404.03 et seq.
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`Although the rules contemplate liberal discovery, the right
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`to discovery is not unlimited. Both the Trademark Rules and the
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`Federal Rules of Civil Procedure grant the Board discretion to
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`3
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`
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`manage the discovery process in order to balance the requesting
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`party's need for information against any injury that may result
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`from discovery abuse. See TBMP § 402.02, citing Micro Motion
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`Inc. v. Kane Steel Co., 894 F.2d 1318, 13 USPQ2d 1696 (Fed. Cir.
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`1990).
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`Fed. R. Civ. P. 26 allows the Board to limit discovery if
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`it determines that the discovery sought is obtainable from other
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`sources that are more convenient and less burdensome or
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`duplicative. Trademark Rule 2.120(f) also provides that upon
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`motion by a party from whom a discovery deposition is sought,
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`and for good cause shown, the Board may make any order which
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`justice requires to protect a party from annoyance,
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`embarrassment, oppression, undue burden or expense, including
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`one or more of the types of orders provided by clauses (1)
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`through (8), inclusive, of Fed. R. Civ. P. 26(c). Among the
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`types of discovery orders that may be entered, the Board has the
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`discretion to enter a protective order that a discovery
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`deposition not be had. See Fed. R. Civ. P. 26(c)(1). The party
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`seeking a protective order bears the burden to show good cause.
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`To establish good cause, the movant must submit "a particular
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`and specific demonstration of fact, as distinguished from
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`stereotyped and conclusory statements." However, a protective
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`order that prohibits the taking of a deposition altogether is
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`rarely granted in the absence of extraordinary circumstances.
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`4
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`
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`See 8 Charles A. Wright, Arthur R. Miller & Richard L. Cooper,
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`Federal Practice and Procedure, § 2037 (2d ed. 1994).
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`The Board articulated its standard for the imposition of a
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`protective order prohibiting the taking of depositions of high-
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`level employees or officers in FMR Corp. v. Alliant Partners, 51
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`USPQ2d 1759 (TTAB 1999). When a party seeks to depose a very
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`high-level official of a large corporation, and that official
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`(or corporation) files a motion for protective order to prohibit
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`the deposition, the movant must demonstrate through an affidavit
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`or other evidence that the official has no direct knowledge of
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`the relevant facts or that there are other persons with equal or
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`greater knowledge of the relevant facts. If the movant meets
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`this initial burden, then the burden shifts to the party seeking
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`the deposition to show that the official has unique or superior
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`personal knowledge of relevant facts. If the party seeking the
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`deposition does not satisfy this showing, then the Board will
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`grant the motion for protective order and require the party
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`seeking the deposition to attempt to obtain discovery through
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`less intrusive methods.
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`Applying this standard to opposer's motion to compel, we
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`find that applicant has demonstrated that Mr. Weber and Mr.
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`Koontz have no direct knowledge of the relevant facts and that
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`there are other persons with equal or greater knowledge of the
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`relevant facts. Thus, applicant has a valid basis for
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`5
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`contending that opposer must take the depositions of other
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`corporate representatives instead.
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`Accordingly, opposer's motion to compel is denied to the
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`extent that applicant is not required to produce for discovery
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`depositions Mr. Weber and Mr. Koontz; however, opposer's motion
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`to compel is granted to the extent that applicant is required to
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`identify and produce a corporate representative (or
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`representatives) as a witness (or witnesses) prepared to testify
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`on the subjects listed in opposer’s notice of deposition ("the
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`subjects listed in the Notice of Opposition") on the day and
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`location requested by opposer: April 28, 2005, at the law
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`offices of applicant's counsel, David Wright Tremaine, LLP, 1633
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`Broadway, New York, NY 10019, commencing at 11 a.m..
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`Trial dates remain as set in the Board's March 15, 2005
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`order.
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`
`
`6
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