TTAB’s limited jurisdiction weighs against broadly requiring litigants to produce ESI

United States of America

The Federal Rules of Civil Procedure, which govern civil trial practice in US courts, were amended in December 2006 to address a number of issues associated with the proper treatment in litigation of electronic records. Although many of the amendments were significant, perhaps the most important one was the revision of Rule 26 to include all electronically stored information, or ESI, in the category of materials that may be discovered by an opposing party. Following this change, those materials include documents stored in such media as email messages, voice mail messages, database files and back-up tapes. Parties in possession of ESI can resist its disclosure, but doing so may require a showing that the burden and expense of producing it outweighs the likely benefit.

Although the revised Rule 26 has increased, and almost certainly will continue to increase, the fees and costs associated with certain kinds of litigation, the US Trademark Trial and Appeal Board (TTAB) recently held in Frito-Lay North America Inc v Princeton Vanguard LLC (Opposition 91195552, November 16 2011) (precedential)) that demands for the production of ESI in cases before it may be subject to scrutiny. The parties to that case were unable to agree on the procedure for, and proper scope of, discovery of the ESI within their possession, and that disagreement led to a motion to compel production filed by the applicant for registration.

In granting the motion in part and denying it in part, the TTAB noted that its limited jurisdiction - which extends only to disputes over the registrability of particular marks - weighed against broadly requiring litigants to gather and produce ESI. Quoting a model order entered by its reviewing court, the US Court of Appeals for the Federal Circuit, it pointed out as follows:

Excessive e-discovery, including disproportionate, overbroad email production requests, carry staggering time and production costs that have a debilitating effect on litigation. Routine requests seeking all categories of electronically stored information often result in mass productions of marginally relevant and cumulative documents. Generally, the production of these expensive requests outweighs the minimal benefits of such broad disclosure.”

In light of these considerations, the TTAB held that “the burden and expense of e-discovery will weigh heavily against requiring production in most cases”. As a consequence:

[p]arties are advised to be precise in their [discovery] requests and to have as their first consideration how to significantly limit the expense of such production. Absent such a showing, the likelihood of success of any motion to compel will be in question.”

Although ultimately ordering the production of at least some of the ESI at issue, the opinion suggests that the TTAB regards the amended Rule 26 as potentially overly burdensome and that it therefore is unlikely to give the rule expansive effect.

Theodore H Davis Jr, Kilpatrick Townsend & Stockton LLP, Atlanta

Although not involved in this case, Kilpatrick Townsend & Stockton LLP has represented Frito-Lay and its affiliates in past IP and other matters.

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