UNITED STATES PATENT AND
`TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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` Mailed: January 9, 2015
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` Cancellation No. 92057394
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` Noble House Furnishings LLC.
`v.
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`Floorco Enterprises, LLC
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`REA/DUNN
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`Elizabeth A. Dunn, Attorney1:
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`This case comes up on Petitioner’s motion to compel Respondent to produce
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`the hard drives of its business computers for inspection and forensic copying. The
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`motion has been fully briefed.2
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`Noble House Furnishings LLC (hereafter, Petitioner) filed a petition to cancel
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`the registered mark NOBLE HOUSE in standard characters for “furniture”
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`(Registration No. 4049441 issued November 1, 2011). As amended, the petition to
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`cancel pleads that the mark was abandoned prior to the filing of the statement of
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`use, and the registration was fraudulently procured. Floorco Enterprises, LLC
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`(hereafter, Respondent) filed an answer denying the salient allegations of the
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`1 Attorney Ronald E. Aikens, detailed to the TTAB, assisted with this order.
`2 The motion to compel meets the procedural requirements of Trademark Rule 2.120(e)
`inasmuch as it is accompanied by copies of the disputed discovery requests and responses,
`and Petitioner’s showing of its good faith effort to resolve the dispute.
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`

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`Cancellation No. 92057394
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`amended petition to cancel.3 Pursuant to the Board’s September 3, 2013 order,
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`discovery closed May 11, 2014. Petitioner served multiple requests for written
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`discovery, but took no discovery depositions.
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`In support of its motion to compel, Petitioner asserts that on January 21,
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`2014, Respondent served responses to interrogatories, including the following:
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`3. For the furniture goods listed in the Subject Registration, state:
`a) Whether there have been any periods of time longer than 30 days since
`December 3, 2010 during which those furniture goods have not been
`distributed in commerce bearing the Subject Trademark (hereinafter “periods
`of nonuse”), and
`b) The inclusive dates of any “periods of nonuse” of the Subject Trademark on
`furniture goods,
`c) Identify the Person most knowledgeable conveying the facts provided by
`defendant in response to this interrogatory, and
`d) Identify all documents concerning the response to this interrogatory.
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`Response:
`Defendant objects to interrogatory No. 3 as vague and ambiguous by its use
`of the words “periods of nonuse” within the interrogatory since they have
`continued to use the Subject mark in proposals to customers relating to offers
`for sale of furniture goods even though there have been no further sales.
`Without waiving its objection, Defendant responds:
`a) Furniture goods bearing the Subject Mark have not been distributed since
`the sales of bathroom vanities to Lowes in 2009. Defendant has continued to
`use the Subject Mark in proposals to customers relating to offers for sale of
`furniture goods even though there have been no further sales.
`b) Last sale of furniture goods bearing the Subject Mark was in 2009. Defendant
`has continued to use the Subject Mark in proposals to customers relating to
`offers for sale of furniture goods even though there have been no further
`sales. The dates of these proposals were sent to potential customers include
`April 2011; May 2011; September 2011; October 2011; November 2011;
`March 2012; July 14, 2012; March 6, 2013; August 13, 2013; and September
`25, 2013.
`c) Richie Berry
`d) Objected to for being unduly vague and burdensome. Documents relating to
`this interrogatory may be found in the documents produced in response to
`Plaintiff’s Request for Production of Documents [First Set].
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`3 In view of the denial in Respondent’s answer that its address of record is correct,
`Respondent is ordered to file a change of address in its registration file within TEN DAYS
`of the mailing date of this order. See Trademark Trial and Appeal Board Manual of
`Procedure (TBMP) §117.07 (2014).
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`Cancellation No. 92057394
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`Respondent’s response to the first document requests included PowerPoint
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`presentations.
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`On February 23, 2014, Petitioner served a second set of document requests
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`stating:
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`Document Request Nos. 35-40
`Produce and permit Plaintiff to inspect and copy all documents bearing or
`imprinted with dates in [month specified in response to Response to
`Interrogatory No. 3] concerning proposals to defendant’s customers relating
`to the Subject Trademark.
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`Respondent’s response did not produce any transmittal letters sent with the
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`customer proposals, did not include any internal communications discussing or
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`instructing how the proposals were to be delivered to customers, and did not include
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`any confirmation that the proposals were sent or received. Respondent produced a
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`single confidential document comprising a computer screen printout with a listing of
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`12 PowerPoint presentations labelled with different customer names, and dates
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`from April 2011 through September 2013 (Document No. 000883).
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`On May 2, 2014, Petitioner served a third set of document requests stating:
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`Document Request Nos. 41-47
`Produce and permit Plaintiff to inspect and copy all emails or other
`documents sent in [month specified in response to Response to Interrogatory
`No. 3] to any customer or prospective customer that had attached thereto
`PowerPoint files concerning the Subject Trademark.
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`and the disputed request (Request for Production [third set] No. 48) which states, in
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`pertinent part:
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`Produce and permit Plaintiff to inspect and copy the computer hard drive and
`any other media on which PowerPoint presentations and emails concerning
`the Subject Trademark have been created, edited or stored.
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`Cancellation No. 92057394
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`On May 30, 2014, Respondent served a response which states with respect to
`Document Request Nos. 41-47 “Defendant has no documents that satisfy this
`Request” and, with respect to No. 48, states:
`Defendant objects to this request for being unduly vague and burdensome.
`Defendant’s hard drive contains a large amount of confidential and privileged
`data completely unrelated to the present case which would have to be
`reviewed and designated in accordance with the protective order. The request
`is objected to as not likely to lead to discovery of admissible documents
`beyond those already produced by Defendant.
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`On June 6, 2014, Petitioner sent Respondent a deficiencies letter seeking
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`withdrawal of Respondent’s objection to No. 48, and production of the hard drive so
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`that Petitioner could ascertain whether the single produced document “accurately
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`presents the details surrounding access to the PowerPoint proposals” and “whether
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`the file characteristics shown on Document No. 000883 have been manipulated.” On
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`June 12, 2014, Respondent sent Petitioner a letter maintaining the objection, but
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`offering to discuss production of “the metadata related to the underlying electronic
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`file listed in Document No. 000883.” On June 13, 2014, Petitioner rejected
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`Respondent’s offer because “any manipulation or lack of manipulation, of metadata
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`will show up on a forensic copy of the hard drive” and Petitioner also seeks
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`“transmittal emails and other communications relating to those PowerPoint
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`documents or, and equally importantly, the absence of those transmittal documents
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`on the Floorco computers.”
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`DISCUSSION
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`Under Federal Rule of Civil Procedure 26(b)(1), parties “may obtain discovery
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`regarding any matter, not privileged, that is relevant to the claim or defense of any
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`party.” In 2006, Federal Rule of Civil Procedure 34(a) was “amended to confirm that
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`Cancellation No. 92057394
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`discovery of electronically stored information stands on equal footing with discovery
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`of paper documents.” See Fed. R. Civ. P. 34 (a) Advisory Committee notes (2006
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`amendment). However, the amendment of Rule 34(a) “is not meant to create a
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`routine right of direct access to a party's electronic information system, although
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`such access might be justified in some circumstances.” Id. and Wright, Miller, Kane,
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`Marcus, and Steinman 4B Fed. Prac. & Proc. Civ. § 2218 (3d ed., September 2014)
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`(“Courts have already grappled with issues of intrusion and burden resulting from
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`requests for direct access… [and] charges that something that should have been
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`produced was not produced need not automatically lead to authorization for such a
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`search [of an opposing party's computer system].”).
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`With respect to broad discovery requests for electronically stored information
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`(ESI), the Board has found “the burden and expense of e-discovery will weigh
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`heavily against requiring production in most cases.” Frito-Lay North America Inc. v.
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`Princeton Vanguard LLC, 100 USPQ2d 1904, 1909 (TTAB 2011). This is consistent
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`with a leading treatise on ESI discovery, which both describes recommended
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`practices for comprehensive electronic discovery, and warns against those practices
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`becoming the norm. The Sedona Principles for Electronic Document Production
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`(Second
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`Edition,
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`2007),
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`Comment
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`2.b
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`(available
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`at
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`http://www.thesedonaconference.org/content/miscFiles/TSC_PRINCP_2nd_ed_607.p
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`df) (“Electronic discovery burdens should be proportional to the amount in
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`controversy and the nature of the case. Otherwise, transaction costs due to
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`electronic discovery will overwhelm the ability to resolve disputes fairly in
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`Cancellation No. 92057394
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`litigation.”).4 The Board’s denial of a motion to compel a broad ESI discovery
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`request may include an order to produce discoverable information more narrowly
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`tailored to the pleaded issues. Frito-Lay North America Inc. v. Princeton Vanguard
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`LLC, 100 USPQ2d at 1910 (“In preparing its supplemental responses required
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`herein, opposer must produce responsive ESI, as necessary and appropriate,
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`notwithstanding the finding that opposer's ESI discovery efforts were adequate
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`under the circumstances of this case as a general matter.”).
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`Here, the pleaded claims of abandonment and fraudulent procurement are
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`predicated on Respondent’s alleged nonuse of its mark. Information regarding
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`Respondent’s use is not just relevant, but central to the pleaded claims. Petitioner
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`seeks documentation supporting Respondent’s assertion, as stated in Respondent
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`response to Interrogatory No. 3, that Respondent used its mark on sales proposals
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`sent to customers on specific dates from 2009, the date of Respondent’s last sale of
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`goods bearing the mark, to the present. Petitioner asserts, and Respondent does not
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`4 As described by the Board’s primary reviewing court in connection with the assessment of
`costs in a patent infringement action, the use of ESI discovery practices recommended by
`The Sedona Principles may involve considerable expense:
`At stage one, to copy (or “image”) computer hard drives or other source media that
`contain the requested documents, replicating each source as a whole in its existing state,
`and then to process the whole-source images to extract individual documents, leaving the
`documents’ original properties intact;
`At stage two, to organize the extracted documents into a database, and then index,
`decrypt, and de-duplicate the database, and filter, analyze, search, and review the database
`to determine which extracted documents are responsive to discovery requests and which
`contain privileged information, resulting in identification of a subset of documents for
`production; and
`At stage three, to copy the documents selected for production onto memory media, such as
`hard drives or DVDs, or, in the case of source code, onto a secured computer, then deliver the production
`media to the requester or, in the case of source code, make it available for review in a secured location.
`CBT Flint Partners, LLC v. Return Path, Inc., 108 USPQ2d 1969, 1974 (Fed. Cir. 2013).
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`Cancellation No. 92057394
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`dispute, that the PowerPoint proposals themselves include no information about the
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`circumstances under which they were transmitted to customers. Except for a
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`computer screen printout listing the PowerPoint proposals, no documents regarding
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`these proposals were produced.
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`A lack of documentation regarding use of the mark is not, innately, evidence
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`warranting the grant of a motion to compel. See Frito-Lay North America Inc. v.
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`Princeton Vanguard LLC, 100 USPQ2d at 1909 (“A mere belief that documents
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`must exist simply is not enough to grant a motion to compel that would require the
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`party to go back to square one and begin its document collection efforts
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`anew.”)(citations omitted). Respondent may have destroyed responsive documents
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`in the ordinary course of business.5 The Board finds fault with both parties, and
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`their apparent failure to discuss document retention policies and spoliation as part
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`of the required discovery conference. Id. at 19808, citing The Sedona Principles,
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`Principle No. 3 (“Parties should confer early in discovery regarding the preservation
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`and production of electronically stored information when these matters are at issue
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`in the litigation and seek to agree on the scope of each party's rights and
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`responsibilities.”).
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`However, the Board finds that Respondent has been evasive on the point of
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`whether documentation of its post-2009 use exists. Despite petitioner’s multiple
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`efforts to obtain the information, it is not clear to the Board whether Respondent
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`5 Fed. R. Civ. P. 37(f) states:
`Absent exceptional circumstances, a court may not impose sanctions under these rules on a
`party for failing to provide electronically stored information lost as a result of the routine,
`good-faith operation of an electronic information system.
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`Cancellation No. 92057394
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`lacks documents demonstrating its use of the mark since 2009 on sales proposals
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`sent to customers, or whether Respondent has documents, but has construed
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`Petitioner’s document requests so as to avoid producing them.
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`As shown, Respondent objected that the request for documents relating to its
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`response to Interrogatory No. 3 (set forth earlier in this order) describing post-2009
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`use through customer proposals was “vague and burdensome.” On its face, the
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`request for documents in Interrogatory No. 3(d) is not vague. Moreover, inasmuch
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`as Respondent listed only ten “dates [that] these proposals were sent to potential
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`customers”, manifestly, the responsive documents are not burdensome in number.
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`Petitioner thereafter served two different requests for documents relating to the
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`response to Interrogatory No. 3, both more narrowly tailored to use the language
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`employed by Respondent in the response to Interrogatory No. 3, but obtained only
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`the computer screen shot listing the PowerPoint presentations.
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`Now, in its opposition to the motion to compel, Respondent argues that
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`petitioner’s description of Document Request Nos. 35-40 as “seeking evidence that
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`proposals have been sent to customers in 2011 and 2012” mischaracterizes the
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`requests for documents, and that petitioner’s description of Respondent’s response
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`to Document Request Nos. 41-47 as stating “there are no emails or other documents
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`sent to customers in April 2011, May 2011, September 2011, October 2011,
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`November 2011 or March 2012 that have PowerPoint files attached which concern
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`the subject registration” mischaracterizes the response. From these statements, it
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`appears that Respondent may have documents showing that the proposals were
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`Cancellation No. 92057394
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`sent. In fact, it appears that Petitioner would have been better served to seek
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`withdrawal of Respondent’s meritless objection to Interrogatory No. 3(d) rather
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`than lose the time and money required to draft two separate sets of document
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`requests in an unsuccessful attempt to overcome Respondent’s objection and obtain
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`the same information.
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`Notwithstanding the Board’s finding that Respondent has evaded its
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`discovery obligations, the appropriate remedy is not turning over Respondent’s hard
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`drive so that Petitioner can see for itself whether and where responsive documents
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`exist. Aside from the significant problems of confidentiality and privilege which
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`would arise from producing information that is not discoverable, the forensic ESI
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`search for what is, at best, a small number of responsive documents involves an
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`unnecessary delay to this proceeding.6 However, the Board is not bound to merely
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`grant or deny the requested remedy in the motion to compel.7 Once the parties
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`involve the Board in a discovery dispute, the Board may fashion an order to ensure
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`the smooth exchange of relevant information between the parties, and a better trial
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`record. See Pioneer Kabushiki Kaisha v. Hitachi High Techs. Am., Inc., 74 USPQ2d
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`6 In fact, in the case cited by Petitioner to show that information stored on computers is
`discoverable under Fed. R. Civ. P. 34(a), the Eleventh Circuit vacated a district court order
`which granted access to a party’s databases without protocols for the search or search term
`restrictions, finding that the district court order impermissibly allowed the requesting
`party “access to information that would not otherwise be discoverable.” In re Ford Motor
`Co., 345 F.3d 1315, 1316-1317 (11th Cir. 2003).
`7 While the Board generally follows the federal rules with regard to discovery matters, the
`Board retains the discretion to adopt discovery rulings suited to matters before it in order
`to balance the parties' interests. See Midwestern Pet Foods, Inc. v. Societe des Produits
`Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1438 (Fed. Cir. 2012).
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`Cancellation No. 92057394
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`1672, 1674 (TTAB 2009) (“[Fed. R. Civ. P.] 26(c) emphasizes the complete control
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`that the court has over the discovery process.”) (citations omitted).
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`Accordingly, Petitioner’s motion to compel is DENIED as to the request to
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`produce the hard drives of Respondent’s business computers for inspection and
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`forensic copying, and is GRANTED insofar as the Board sua sponte overrules
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`Respondent’s objection to Interrogatory 3(d) and orders the following response:
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`Within THIRTY DAYS from the mailing date of this order, Respondent is
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`ordered to serve Petitioner with the documents responsive to Interrogatory 3(d), and
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`a written explanation, in the form of a signed response to an interrogatory,
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`explaining how Respondent used its mark in its proposal to customers after 2009,
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`including how the proposals were sent to customers or how customers otherwise
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`encountered the proposals. Petitioner has TEN DAYS from the date of service of
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`this response to schedule and conduct a deposition regarding the response.
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`Proceedings are resumed, and dates are reset as follows:
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`Discovery
`Plaintiff's Pretrial Disclosures
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures
`Plaintiff's 15-day Rebuttal Period Ends
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`CLOSED
`3/1/2015
`4/15/2015
`4/30/2015
`6/14/2015
`6/29/2015
`7/29/2015
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`In each instance, a copy of the transcript of testimony, together with copies of
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`documentary exhibits, must be served on the adverse party within thirty days after
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`completion of the taking of testimony. Trademark Rule 2.125.
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`Cancellation No. 92057394
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`Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An
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`oral hearing will be set only upon request filed as provided by Trademark Rule
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`2.129.
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` 11