Good Faith Effort to Resolve Discovery Dispute Requires More Than a Single Email

Author: Julia Anne Matheson

In a precedential decision issued March 20, 2014 in Hot Tamale Mama…and More, LLC v. SF Investments, Inc., Opposition No. 91209030 (March 20, 2014), the TTAB weighed in on what qualifies as a “good faith effort” to resolve a discovery dispute under governing Trademark Rule 2.120(e)(1). Like many federal courts, the TTAB requires that litigants make a good faith effort to amicably resolve discovery disputes before engaging in motion practice.

In Hot Tamale Mama, the TTAB emphasized that this guideline applies even where a nonmovant has completely failed to respond to discovery. In this case, Applicant filed a motion to compel Opposer’s responses to discovery following Opposer’s failure to serve responses by the deadline. Two weeks after the response deadline passed, counsel for Applicant contacted Opposer’s counsel by email to inquire when Opposer’s responses would be forthcoming. Opposer’s counsel responded with a single email indicating that he would check with his client and get back to Applicant’s counsel with a time frame. When no response was promptly forthcoming, Applicant filed a motion to compel.

In denying Applicant’s motion, the Board emphasized that dissatisfaction with an adversary’s answer to an initial inquiry was insufficient, standing alone, to discharge the duty to undertake a good faith effort to resolve the dispute. The rule requires that the movant investigate the possibility of resolving the dispute which, in this case, required that Applicant engage in follow-up communications to determine why discovery was not forthcoming and when it might be received. While Opposer’s reply did not provide a date certain for response, its email also did not reflect a disagreement or impasse.

Emphasizing the range of communications technologies currently available to litigating parties and the minimal effort required in follow-up, the Board stated that it expects more effort from a party than a “single non-substantive communication” prior to filing a motion to compel. In failing to inquire about the reasons behind Opposer’s failure to timely serve responses, and whether responses would be forthcoming, Applicant’s counsel doomed its motion to compel.

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