Reference to documents in foreign language does not comply with Rule 33(d)

United States of America

In Johnson & Johnson v Obschestvo s ogranitchennoy (Oppositions 91182207 and 91184467, June 16 2010), the Trademark Trial and Appeal Board (TTAB) has ruled that responding to interrogatories by referring to documents produced in a foreign language did not comply with Federal Rule of Civil Procedure 33(d). The TTAB ordered that the applicant fully respond in writing, in English, to each interrogatory, summarizing and explaining what was found in the relevant documents and why the responses were contained in the documents.

The opponents brought this motion to compel after receiving interrogatory responses invoking Rule 33(d), which gives a party the option to respond to interrogatories by identifying business records from which the information requested can be ascertained. However, in order to respond in this fashion, three conditions must be met:

  • The responding party must identify which particular documents contain the information and cannot just provide a voluminous range of documents;
  • The responding party cannot rely on this option, unless it can establish that providing a written response would impose a significant burden on that party; and
  • The requesting party cannot be left with a greater burden than the responding party when searching through the identified records.

The weighing of the parties’ respective burdens occurs only if the responding party has proven the first two conditions.

The TTAB found that the applicant had failed to establish that it would be unduly burdensome for it to provide separate and written answers to the interrogatories. Further, the applicant had failed to specify records from which the answers to the interrogatories could be ascertained in sufficient detail. The business records that were produced by the applicant would require the opponents to translate each document, and then attempt to ascertain what portion of the document may contain an answer to a particular interrogatory. The TTAB stated that referencing documents written in a foreign language does not fulfil the duty to provide documents from which a response to an interrogatory is clearly ascertainable.

The applicant’s supplemental answers that still referenced unidentified documents in Russian and also provided partial written answers to portions of certain interrogatories were also unacceptable. Moreover, the table in which the applicant described the documents and set forth corresponding Bates numbers, though a step in the right direction, did not fulfil the duty because the documents were in a foreign language. This still left the requesting party guessing as to what portion of the document was responsive.

Despite finding that the applicant did not meet the first two conditions for invoking Rule 33(d), the TTAB also commented that the applicant’s burden to ascertain answers from its business records was far less than the opponents’ burden, and that the opponents’ burden was dramatically increased because the documents were in Russian. The TTAB considered determinative on this issue the fact that the applicant’s documents were in a foreign language that the applicant was more conversant in than the opponents.

Lara A Holzman, Alston & Bird LLP, New York

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