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Federal Circuit affirms cancellation of 'G the Goodyman' mark, citing discovery noncompliance

The U.S. Court of Appeals for the Federal Circuit has affirmed a cancellation of the "G The Goodyman" trademark for meat snacks and bakery products. On Dec. 28, a unanimous panel upheld a decision by the Trademark Trial and Appeal Board to issue a default judgment and sanction the trademark registrant by canceling the trademark registration.

Sheri Qualters
January 02, 2012
The U.S. Court of Appeals for the Federal Circuit has affirmed a cancellation of the "G The Goodyman" trademark for meat snacks and bakery products. On Dec. 28, a unanimous panel upheld a decision by the Trademark Trial and Appeal Board to issue a default judgment and sanction the trademark registrant by canceling the trademark registration.

The ruling, authored by Judge Pauline Newman and joined by judges Alan Lourie and Kimberly Moore, cited trademark registrant Ward Benedict's "two years of failure to comply with discovery requests and orders" in its ruling affirming the board. It is an indication that the Federal Circuit, long considered lenient to pro se parties, has its limits in this regard.

Although the Federal Circuit upheld the appeals board's decision, the court in Benedict v. Super Bakery Inc. disagreed with the board's interpretation of a federal trademark rule that calls for it to suspend unrelated matters when there's a motion that could dispose of a case.

Benedict's pro se Federal Circuit appeal disputed the trademark board's cancellation of his trademark for meat snacks, cookies and cakes. Benedict's litigation opponent, Super Bakery owns the "Goody Man" trademark for cupcakes.

In 2005, the U.S. Patent and Trademark Office rejected Super Bakery's application to expand the "Goody Man" trademark to a variety of bakery goods, including marshmallow treats, glazed rings, cookies, donuts, buns, fruit pies, muffins, and snack cakes. The examining attorney found a likelihood of confusion with Benedict's "G the Goodyman" mark. Two years later, Super Bakery filed a petition to cancel Benedict's trademark registration for fraud and abandonment.

After procedural wrangling about discovery motions, the appeals board granted Super Bakery's default motion against Benedict in August 2009.

In March 2010, the Federal Circuit vacated that ruling and remanded the case on the ground that the board's decision did not discuss the applicability of a trademark rule that requires the suspension of unrelated matters when a dispositive motion is filed, such as Benedict's March 2009 summary judgment motion.

On remand, the board held that until it announced a formal suspension of the cancellation proceeding, Benedict "was obligated to respond to petitioner's discovery requests as ordered by the Board by the March 13, 2009 deadline set by the Board." The board reinstated the default judgment and cancelled Benedict's trademark registration.

In the recent Federal Circuit ruling, Newman wrote that the panel agrees with Benedict that the trademark rule in question "does not clearly present the interpretation with which the Board now endows it."

Although ambiguities in the rule do not support "the extreme sanction of default judgment," this case does support such a ruling, Newman wrote, adding, "the default judgment is well supported without this event. There had been two years of failure to comply with discovery requests and orders."

"The possession of a trademark registration places a routine obligation on the possessor to participate in reasonable procedures concerning rights or interests affected by that registration," Newman wrote. "On the entirety of the record, the Board's orders were reasonable, and within its authority in seeking to advance the proceedings. The remedy of default judgment was within the Board's discretion in view of Mr. Benedict's repeated failures to comply with established and reasonable procedures orders."

Benedict of Surrey, British Columbia, Canada, said that it's "been very difficult to fight this case" from Canada, particularly because Super Bakery communicated variously by snail mail, Fed Ex and e-mail.

"We either didn't receive their documents or received them at the really last minute, which put us in a difficult position for complying," Benedict said.

Super Bakery's lawyer, David Oberdick, of counsel to Meyer, Unkovic & Scott in Pittsburgh, said that Benedict "truly had failed to comply with numerous orders."

Although the Federal Circuit has "a history of being lenient and forgiving of pro se parties, here you have an indication of where that lenience will no longer be given when certain lines are crossed," Oberdick said.

Martin Schwimmer, a partner at White Plains, N.Y.-based Leason Ellis, who isn't involved in the case, had mixed feelings about the ruling. Schwimmer said it's encouraging to see the board enter a default when one party appears to be abusing the process.

On the other hand, he said a lot of oppositions [to trademark registrations] involve a large party intimidating a small party to walk away, because a trademark board fight is often expensive.

The danger is that larger entities will demand discovery from smaller entities in future cases and "cite this decision, saying that the applicant has to comply with onerous discovery or default," Schwimmer said.

"You can only go to the well so many times," said Andrew Berger about of Benedict. Berger is an intellectual property counsel to New York-based Tannenbaum Helpern Syracuse & Hirschtritt who isn't involved in the case.

"No appellate court wants to affirm a default unless the conduct is so egregious...they can't do otherwise," Berger said. "They always take a more objective look at things but here the disrespect and the prejudice went on for too long."

Sheri Qualters can be contacted at squalters@alm.com.