Petitioner Anand K. Chakayala, rather than respond to Praise Broadcastings's discovery requests, filed a motion for summary judgment in this proceeding for cancellation of a registration for the mark PRAISELIVE & Design for broadcasting services. Praise moved for discovery under FRCP 56(d) on the relevant Section 2(d) issues. The Board granted the motion, noting that one purpose of Rule 56(d) is to protect a party from being ambushed by a summary judgment motion before that party had an opportunity to obtain relevant discovery. Anand K. Chavakula v. Praise Broadcasting AKA Praise FM, Cancellation No. 92071482 (July 28, 2020) [precedential] (Jennifer Krisp, Interlocutory Attorney).
FRCP 56(d) provides that if a party served with a summary judgment motion shows that it cannot present essential facts to justify its opposition to the motion, the court may deny or defer the motion, allow time for discovery, or issue any other appropriate order. The party seeking discovery must state the specific reasons why it needs such discovery, and if it must set forth the specific areas of discovery that it seeks.
Praise maintained that it required discovery regarding priority and certain du Pont factors, pointing out which of its interrogatories and document requests were on point, including those that covered certain "undisputed facts" set forth by petitioner Chayakala.
The Board noted that the summary judgment motion placed in issue "any matters probative of Petitioner's asserted priority, and likelihood of confusion." It further noted that a party seeking Rule 56(d) discovery need not have previously sought discovery. Here, Praise delineated the interrogatories and document requests by which it timely sought relevant information and documents. The Board found that Praise had adequately explained "why it is unable to prepare a response to without discovery and confirms that what it needs is largely within Petitioner's possession, custody or control."
In short, Respondent's need for Petitioner's discovery responses is evident under the circumstances: it seeks key information regarding priority and the various du Pont factors, the responsive information and documents are in Petitioner's possession and control, and after Petitioner stated by email that its responses would be sent, it instead moved for summary judgment. "Rule 56(f) provides nonmovants with protection from being 'railroaded' by premature summary judgment motions." Opryland USA Inc., 23 USPQ2d at 1475 (quoting Celotex v. Catrett, 477 U.S. 317, 326 (1986)).
Although the Board applies Rule 56(d) rigorously, and although it noted that Praise's motion for discovery was not "ideally supported," the Board pointed out that it will not penalize a party "when the motion arises from the actions of an uncooperative or recalcitrant adversary who gridlocks discovery." Chayakala's failure to cooperate in the discovery process was troubling to the Board: "Petitioner's behavior is emblematic of how a party's failure to meet it discovery obligations can lead to avoidable motion practice that stalls a proceeding."
Chayakala was allowed twenty days to respond to the identified discovery requests, without objection on the merits of the requests,and must serve all requested documents, labeled by Bates stamping.
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Originally published by Wolf Greenfield, August 2020
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