Precedential No. 19: TTAB Admits Disputed Documents, Denies Summary Judgment, Suggests ACR

The Board denied cross-motions for summary judgment in this Section 2(d) cancellation proceeding, but suggested that, since the disposition of the case will likely turn on the issues of similarity of the marks and the scope of protection to be afforded the involved marks, the parties consider the Board's Accelerated Case Resolution (ACR) procedure. Before reaching that point, however, the Board ruled on two preliminary procedural matters involving the exclusion, admissibility, and probative value of certain third-party evidence. Dan Foam ApS v. Sleep Innovations, Inc., 106 USPQ2d 1939 (TTAB 2013) [precedential].

Exclusion of Evidence: Petitioner Dan Foam obtained certain documents from a third-party via subpoena duces tecum. Respondent Sleep Innovations argued that Petitioner did not provide notice to it prior to service of the subpoena, and that it became aware of the subpoena only when it received copies of the documents produced, four days later. Dan Foam subsequently submitted the documents on its summary judgment motion, authenticated by a declaration from an employee of the producing party. Sleep Innovations contended (in opposition to the summary judgment motion) that Dan Foam had violated FRCP 45(b)(1) by failing to give notice of the subpoena, and therefore that the documents should be excluded.

The Board agreed that Dan Foam had failed to comply with the Federal Rule, but that does not automatically require exclusion of the documents where the aggrieved party was not prejudiced by the delay. Although Sleep Innovations waited seven months to voice its objection, that was timely because the Board does not entertain motions in limine or otherwise exclude evidence preliminarily.

However, Sleep Innovations was not harmed by the delay, and therefore exclusion of the documents was not warranted. Discovery closed about four months after Sleep Innovations received the documents, and therefore it could have obtained additional documents from, or taken a deposition of, the third-party. It failed to do so.

Admissibility of the Third-Party Evidence: The declaration from the third-party stated that the documents produced were taken from "an established customer inquiry database" and were "genuine and authentic copies of business records kept in the normal course of ... business."

The documents in question comprised undated transcripts of live online chats and telephone conversations between representatives of the third party (identified only by first name) and customers (mostly unnamed or not identified by their first and last names). These statements were hearsay because neither the representative nor the customer testified in this proceeding. In other words, they were "out of court" statements offered to prove that the customers were confused.

The statement did not fall within the "business records" exception to the hearsay rule because the declarant did not state that the making of the transcripts "is done in the course of a regularly conducted activity of its business and that making the transcripts at issue was a regular practice of that activity." See FRE 803(6).

However, the documents are admissible under FRE 803(1) to the extent that they reflect the "present sense impressions of the customers." Furthermore, statements of customer trademark confusion fall within the "state of mind" exception of FRE 803(3). Therefore, the documents are admissible.

Probative value: These undated documents, however, which fail to fully name the participants, have little probative value "in the absence of testimony from the customers themselves as to whether they were confused and, if so, what caused their confusion."

Summary Judgment motions: At a minimum, genuine issue of material fact existed concerning the similarity of the marks, the extent of third-party use of similar marks on the same or related goods, and the scope of protection to which Petitioner's mark is entitled.

The Board noted that the goods overlap (pillows and mattresses), and therefore it must be presumed that they travel through the same, normal channels of trade to the same classes of consumers. Thus the disposition of this case will likely turn on the similarity of the marks and the strength of the involved marks. "Accordingly, this case may be appropriate for a decision on an accelerated case resolution (ACR) record."

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Text Copyright John L. Welch 2013.