Cancellation of Trademark Registration OK as Sanction for Failure to Comply with TTAB Discovery Orders

Reviewing the decision of the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office to enter summary judgment against a pro se litigant for failure to comply with discovery orders, the U.S. Court of Appeals for the Federal Circuit affirmed the judgment and the sanction of cancellation of his trademark.Benedict v. Super Bakery, Inc., Case No. 11-1131 (Fed. Cir., Dec. 28, 2011) (Newman, J.)

Super Bakery owned a U.S. registration for GOODY MAN in International Class 30 for cupcakes.Ward E. Benedict owned a U.S. trademark registration for G THE GOODYMAN in International Class 29 for various meat snacks and Class 30 for cookies and cake products.Subsequent to the registration of those marks, Super Bakery applied to register GOODY MAN in Class 30 for various bakery goods.The examining attorney at the U.S. Patent and Trademark Office rejected Super Bakery’s application on the ground of likelihood of confusion with Benedict’s mark G THE GOODYMAN.Super Bakery then filed a Petition to Cancel Benedict’s registration.

During the cancellation proceeding, Super Bakery served discovery requests to Benedict, who continually failed to respond.The Board issued multiple orders requiring Benedict to respond to the discovery requests.One day prior to a Board ordered discovery deadline, Benedict filed a motion for summary judgment.Benedict did not meet the discovery deadline.Two weeks after filing his motion for summary judgment, the Board suspended the proceeding pending disposition of the motion.Super Bakery then filed a motion for sanctions against Benedict, requesting default judgment based on Benedict’s most recent failure to provide discovery.The Board granted default judgment against Benedict and cancelled his registration.

On the first appeal, the Federal Circuit vacated the Board’s decision and remanded for the Board to consider the applicability of Trademark Rule 2.127(d), which provides that upon filing a motion for summary judgment, “the case will be suspended by the [Board] with respect to all matters not germane to the motion and no party should file any paper which is not germane to the motion except as otherwise specified in the Board’s suspension order.”On remand, the Board held that the suspension of proceedings contemplated by Rule 2.127(d) is not automatic, but takes effect only after the Board issues a suspension order.Thus, the Board reasoned, despite filing a motion for summary judgment Benedict was obligated to comply with the discovery deadline until the Board issued a suspension order.The Board again granted default judgment against Benedict and imposed the sanction of cancellation of his trademark.

On the second appeal, the Federal Circuit disagreed with the Board’s position that Rule 2.127(d) supported the entry of default judgment, finding that the rule’s ambiguity did not support the extreme sanction of default judgment.However, the Federal Circuit affirmed the Board’s decision, finding that default judgment was “well supported” by Benedict’s repeated non-compliance with Super Bakery’s discovery requests and multiple Board orders.The Board explained that “[t]he possession of a trademark registration places a routine obligation on the possessor to participate in reasonable procedures concerning rights or interests effected by that registration.”