Page 7 - Grapevine Jan-Feb 2020

In The Winery

attorney will ask many questions and likely want through which you get information from the other
to see some documentation. This is their due dili- side in order to try to prove your case. In both
gence process to see whether you have reasonable TTAB proceedings and court litigations, the dis-
grounds to bring your case and to assess your likeli- covery process is fairly broad, meaning that you
hood of success in the matter. They are looking for are allowed to ask for a wide array of information
such issues as: whether you own a valid trademark from the other side. Court litigations, however, are
and have standing to bring the case; whether the broader in scope because, for example, those cases
other party has a valid trademark and, if so, which usually involve monetary damages, which are not
party has priority in its rights; the similarity of the at issue in TTAB proceedings. This is also one of the
two trademarks and their channels of trade; evi- reasons that court litigations are more expensive.
dence of when and how the other party has used
its mark, etc. If, after reviewing these materials, There are four basic tools in discovery: inter-
the attorney agrees that you have a reasonable rogatories, requests for production, requests for
basis for your case, they will draft the initial filing admission, and depositions. Interrogatories are
documents. In the TTAB, these would be a Notice simply questions you ask the other side and they
of Opposition or a Petition for Cancellation; in fed- are required to answer. For example, you might
eral court, it would be a Complaint. For simplicity ask the other party to describe the dates and cir-
sake, I will refer to all of these documents as com- cumstances under which they created and adopt-
plaints. ed their trademark. Requests for production are
how you ask the other party to provide you with
Filing the Complaint documents or other tangible items in their pos-
session. As an example, you might ask the other
Your attorney will synthesize the material you party to produce documents that demonstrate the
provide into a complaint. While complaints have a geographic areas in which they have sold products
required structure that is somewhat dry and formu- under the challenged trademark. Requests for
laic, because it is the first opportunity to educate admission are statements of fact that you ask the
the TTAB or judge as to what the case is about, it other side to admit or deny. These can be useful
should paint a very clear picture of how you have to narrow the issues and pin your opponent down
been aggrieved and the other party is responsible. on specific points. For example, you might ask the
The cost of this stage of the case will depend upon other party to admit that they did not use their
the complexity of the issues and, of course, your trademark before a particular date. Depositions
attorney’s hourly rate. For a complex case, it may are probably the most dreaded discovery tool.
take as much as 30-40 hours of attorney time to do Through a deposition, you subpoena a witness to
the legal research, analysis, investigation, and draft physically appear in a room with your attorney and
the complaint. The government filing fees for the to answer questions under oath in the presence of
complaint, whether at the TTAB or in federal court a stenographer and/or video recorder that will take
are $400. down their every word. Depending upon the com-
plexity of the case, these depositions may last as
Discovery long as 7 hours, each.

This is the stage of litigation of which clients tend Often, there will be several rounds of written dis-
to have the least understanding, and for good rea- covery between the parties before depositions are
son. It’s a complex array of processes and rules taken. This enables the parties to review the docu-
and is frequently the source of many disputes ments and narrow the issues so they may ask more
between the parties. For this reason, it is also pointed questions of the deposition witnesses. This
often the most expensive part of the litigation pro- written discovery process can be lengthy, ardu-
cess. ous, and disruptive to the parties’ businesses. The
parties generally have 30 days to respond to each
As a general matter, “discovery” is the process discovery request, so the whole discovery process

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