UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`
`Mailed: June 6, 2016
`
`Opposition No. 91212441 (parent)
`Cancellation No. 92057845
`
`Multisorb Technologies, Inc.
`
`v.
`
`Clariant AG
`
`
`
`RK
`
`
`
`
`
`
`
`
`Yong Oh (Richard) Kim, Interlocutory Attorney:
`
`This matter comes up on Opposer/Petitioner’s (“Opposer”) motion to compel
`
`complete responses to certain of its interrogatories and document requests and
`
`motion to make Applicant/Respondent (“Applicant”) available for a Rule 30(b)(6)
`
`deposition in the United States (filed January 1 and January 11, 2016,
`
`respectively). The motions are fully briefed.
`
`The Board presumes the parties’ familiarity with the pleadings, the history of
`
`the proceeding and the arguments and evidence submitted in connection with the
`
`briefing of the motions. As such, this order will not summarize the proceeding
`
`background or recount the parties’ arguments except as necessary.
`
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`
`Mailed: June 6, 2016
`
`Opposition No. 91212441 (parent)
`Cancellation No. 92057845
`
`Multisorb Technologies, Inc.
`
`v.
`
`Clariant AG
`
`
`
`RK
`
`
`
`
`
`
`
`
`Yong Oh (Richard) Kim, Interlocutory Attorney:
`
`This matter comes up on Opposer/Petitioner’s (“Opposer”) motion to compel
`
`complete responses to certain of its interrogatories and document requests and
`
`motion to make Applicant/Respondent (“Applicant”) available for a Rule 30(b)(6)
`
`deposition in the United States (filed January 1 and January 11, 2016,
`
`respectively). The motions are fully briefed.
`
`The Board presumes the parties’ familiarity with the pleadings, the history of
`
`the proceeding and the arguments and evidence submitted in connection with the
`
`briefing of the motions. As such, this order will not summarize the proceeding
`
`background or recount the parties’ arguments except as necessary.
`
`
`
`Opposition No. 91212441 (parent) and Cancellation No. 92057845
`
`Opposer’s Motion to Compel
`
`As an initial matter, the Board finds the motion to compel timely as it was filed
`
`prior to the commencement of Opposer’s testimony period as reset.1 See Trademark
`
`Rule 2.120(e)(1).
`
`As part of any motion to compel, the moving party must certify that it made a
`
`good faith effort to resolve with the other party the issues presented in the motion
`
`but was unable to resolve them. Id. Based on the declaration of Opposer’s counsel
`
`and supporting documents, the Board finds the good faith requirement under
`
`Trademark Rule 2.120(e)(1) discharged.
`
`Turning to the merits of the motion, Opposer’s second set of interrogatories, i.e.,
`
`Interrogatory Nos. 16 - 20, and third set of document requests, i.e., Document
`
`Request Nos. 33-35, are at issue.
`
`Interrogatory No. 16
`Identify the person or persons responsible for the research and development of
`each of Clariant’s products that uses the OXY-GUARD mark, indicating the role
`that each individual performed or will perform, as well as the period during
`which each person was or will be so responsible.
`
`In reviewing Applicant’s various objections, the Board does not find them well-
`
`taken. Opposer has asserted a claim of mere descriptiveness under Section 2(e)(1) of
`
`the Trademark Act, alleging that the subject marks merely describe “the qualities,
`
`features, functions, purpose, and use” of Applicant’s goods. See Notice of Opposition,
`
`¶ 21, and Petition for Cancellation, ¶ 17. As such, the identity of individuals
`
`responsible for the research and development of Applicant’s products under the
`
`subject mark are relevant and discoverable as they will likely have information
`
`1 As last reset, Opposer’s testimony period was scheduled to open on March 15, 2016.
`
`
`
`2
`
`
`
`Opposition No. 91212441 (parent) and Cancellation No. 92057845
`
`concerning the qualities, features, functions, purpose and use of the goods.
`
`Applicant has set forth no reason why the identification of such individuals would
`
`prove unduly burdensome or oppressive or why the request is overly broad.
`
`Furthermore, Applicant has failed to explain why the identities of such persons and
`
`descriptions of their roles, as opposed to certain of the technical information they
`
`possess, would constitute confidential business information so as to preclude
`
`disclosure. Even if it could be argued that these individuals’ identities and roles
`
`constitute confidential information, Applicant may not withhold such information
`
`on the basis of confidentiality in light of the parties’ stipulated protective order. See
`
`Amazon Techs., Inc. v. Wax, 93 USPQ2d 1702, 1706 n.6 (TTAB 2009). In view
`
`thereof, Opposer’s motion to compel a further response to Interrogatory No. 16 is
`
`hereby GRANTED.
`
`Interrogatory No. 17
`Describe in detail the technical process by which Clariant’s products under the
`OXY-GUARD mark inhibit oxidation.
`
`Request for Production No.33
`All documents relating to the technical process by which Clariant’s products
`under the OXY-GUARD mark inhibit oxidation.
`
`In response to these discovery requests, Applicant asserted the same objections
`
`as those in response to Interrogatory No. 17. In these instances, the Board finds
`
`them well-taken. The basis of Opposer’s opposition and cancellation is the claim
`
`that Applicant’s mark merely describes Applicant’s goods under that mark. These
`
`discovery requests already assume the putatively descriptive quality/feature/
`
`function/purpose/use of the goods, i.e., to inhibit oxidation, yet seeks detailed
`
`
`
`3
`
`
`
`Opposition No. 91212441 (parent) and Cancellation No. 92057845
`
`technical information on how the goods are able to perform that function. Opposer
`
`overreaches in seeking such information. Although such technical information may
`
`be relevant in a patent infringement action, it is of little relevance here. The
`
`question of descriptiveness “is determined from the viewpoint of the relevant
`
`purchasing public,” see In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227
`
`USPQ 961, 963 (Fed. Cir. 1985), which will often have little, if any, information (or
`
`concern) regarding how a product works as opposed to what it does. Even if it can be
`
`argued that such technical information has some relevance, the requests are wholly
`
`disproportionate to the needs of this case. Accordingly, Opposer’s motion to compel
`
`further responses to Interrogatory No. 17 and Request for Production No. 33 is
`
`hereby DENIED.
`
`Interrogatory No. 18
`Describe in detail the chemical process by which the presence of oxygen causes
`oxidation.
`
`As in Interrogatory No. 17, a description of the chemical process of oxidation is of
`
`little relevance to Opposer’s claim of mere descriptiveness. Furthermore, such
`
`general information is equally available to Opposer and Applicant. Accordingly,
`
`Opposer’s motion to compel Applicant’s response to Interrogatory No. 18 is hereby
`
`DENIED.
`
`Interrogatory No. 19
`Identify all Clariant products that are designed to guard or protect oxygen
`within a package, bottle, or container.
`
`This interrogatory is overbroad as it seeks the identification of all of Applicant’s
`
`products that satisfy this criteria without regard to the involved marks and the
`
`
`
`4
`
`
`
`Opposition No. 91212441 (parent) and Cancellation No. 92057845
`
`goods thereunder. The determination of whether a mark is merely descriptive must
`
`be made in relation to the goods or services identified in the application or
`
`registration and not in the abstract. See In re Chamber of Commerce of the U.S., 675
`
`F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). In view thereof, Opposer’s
`
`motion to compel Applicant’s response to Interrogatory No. 19 is DENIED in part
`
`and GRANTED in part to the extent that the interrogatory is limited to those
`
`goods identified in the involved application and registration.
`
`Interrogatory No. 20
`Explain how plastic packaging containers are used to guard or protect the
`oxygen found within a package, bottle, or container.
`
`Request for Production No. 34
`All documents relating to the use of plastic packaging containers to guard or
`protect oxygen found within a package, bottle, or container.
`
`Without regard to the mark involved herein and the goods thereunder, these
`
`requests are overbroad. Even if properly limited, these requests go beyond the
`
`putative feature or purpose of the goods, i.e., to guard or protect the oxygen within,
`
`and seek technical information on how the goods are able to guard or protect
`
`oxygen. Such technical information is of little relevance to Opposer’s mere
`
`descriptiveness claim. Thus, Opposer’s motion to compel further responses to
`
`Interrogatory No. 20 and Request for Production No. 34 is hereby DENIED.
`
`Request for Production No. 35
`All documents demonstrating products made by Clariant that protect the oxygen
`found within a package, bottle, or container.
`
`Again, without regard to the mark involved herein and the goods thereunder,
`
`the request is overbroad and seeks information of little relevance to this proceeding.
`
`
`
`5
`
`
`
`Opposition No. 91212441 (parent) and Cancellation No. 92057845
`
`On the other hand, documents that identify those goods under the involved mark
`
`that relate to protecting oxygen within such goods are discoverable. Accordingly,
`
`Opposer’s motion to compel a further response to Request for Production No. 35 is
`
`hereby DENIED in part and GRANTED in part to the extent that the request is
`
`restricted to those goods identified in the involved application and registration.
`
`Applicant is allowed until THIRTY DAYS from the mailing date of this order to
`
`supplement its discovery responses.
`
`Opposer’s Motion to Take Rule 30(b)(6) Deposition in United States
`
`On December 21, 2015, Opposer noticed the discovery deposition of Applicant’s
`
`Rule 30(b)(6) witness. Opposer’s Motion to Take Deposition, Exh. I, 34 TTABVUE
`
`86. On December 24, 2015, Applicant identified Justin Mueller, a German resident,
`
`as its Rule 30(b)(6) witness. Id., Exh. J, 34 TTABVUE 92. Opposer has objected to
`
`taking the deposition of the witness on written questions, as required under
`
`Trademark Rules 2.120(c) and 2.124, and seeks to compel Applicant to produce a
`
`30(b)(6) witness for a discovery deposition in the United States. Opposer’s motion is
`
`DENIED.
`
`To the extent that Opposer objects to Applicant’s Rule 30(b)(6) witness on the
`
`ground that Mr. Mueller is out of the country, the objection is without merit. That
`
`rule provides in relevant part:
`
`In its notice or subpoena, a party may name as the
`deponent a public or private corporation, a partnership,
`an association, a governmental agency, or other entity
`and must describe with reasonable particularity the
`matters for examination. The named organization must
`then designate one or more officers, directors, or
`
`
`
`6
`
`
`
`Opposition No. 91212441 (parent) and Cancellation No. 92057845
`
`
`managing agents, or designate other persons who consent
`to testify on its behalf; and it may set out the matters on
`which each person designated will testify. A subpoena
`must advise a nonparty organization of its duty to make
`this designation. The persons designated must testify
`about information known or reasonably available to the
`organization. . . . .
`A Rule 30(b)(6) deposition is a deposition of the corporate party, not of any
`
`particular individual. Opposer may not insist on a 30(b)(6) deposition of any
`
`particular individual; it is up to Applicant to designate someone to appear on its
`
`behalf and Applicant has done so. Furthermore, Opposer may not insist that a
`
`witness be compelled to attend a deposition in the United States at a time when the
`
`witness is in another country. See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431
`
`(TTAB 1998) (the Board will not order a witness in a foreign country to appear for a
`
`deposition in the United States). Thus, if Opposer chooses to proceed with a
`
`deposition of Mr. Mueller, it must do so upon written questions in accordance with
`
`Trademark Rules 2.120(c) and 2.124.
`
`In its reply brief, Opposer raises the notion of taking the deposition of Mr.
`
`Mueller remotely. As this option was not previously raised by Opposer,
`
`consideration thereof is DEFERRED and Applicant is allowed until THIRTY
`
`DAYS from the mailing date of this order to respond thereto.
`
`Proceedings are otherwise SUSPENDED.
`
`* * *
`
`7
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