On August 5, 2020, the United States Court of Appeals for the Federal Circuit affirmed the TTAB’s decision to cancel a trademark registration for the mark HOLLYWOOD BEER as a discovery sanction for the registrant’s repeated, frivolous filings and failure to comply with discovery orders.

In August 2015, Hollywood Vodka, LLC (“HVL”) filed a petition to cancel Kris Kaszuba’s registration for the mark HOLLYWOOD BEER. Following a lengthy and somewhat tortured pleading stage, the parties moved on to discovery. Due to repeated filings that continually delayed the case, the TTAB issued an Order directing Kaszuba to seek leave from the Interlocutory Attorney before filing any future submissions. The TTAB did not issue a similar warning to HVL because HVL had just retained new counsel.

In November 2017, the TTAB granted, in part, HVL’s motion to compel discovery based on Kaszuba’s failure to respond to interrogatories and document requests. The TTAB ordered Kaszuba to respond to the discovery requests, but denied HVL’s request for sanctions. The TTAB, however, cautioned Kaszuba that the failure to respond to the discovery requests could result in “a renewed motion for sanctions, including entry of judgment as appropriate.” The TTAB further directed both parties to seek leave before filing any new motions.

Without explanation, Kaszuba chose not to respond to the discovery requests, instead filing a request for permission to seeking reconsideration of the TTAB’s November 2017 decision on HVL’s motion to compel. The TTAB denied Kaszuba’s request.

Despite the TTAB’s ruling, Kaszuba again failed to respond to the discovery requests, leading to another motion for sanctions and another motion for reconsideration—both of which the parties filed without leave. The TTAB denied the motions, noting that Kaszuba had “deliberately sought to evade and frustrate” HVL’s efforts to take discovery. The TTAB granted Kaszuba an additional extension of time to serve discovery responses and cautioned Kaszuba that, if he again failed to comply with the discovery order, the TTAB would enter judgment against him following motion by HVL.

Kaszuba, again, failed to serve the requested discovery responses and continued to file numerous submissions with the TTAB seeking reconsideration of the TTAB’s Orders, claiming that the TTAB had treated him unfairly. HVL ultimately filed a renewed motion for sanctions seeking entry of judgment or an order precluding Kaszuba from introducing evidence at trial.

The TTAB granted HVL’s motion, entering judgment against Kaszuba. In its Order, the TTAB acknowledged that the sanction was harsh, but held “no less drastic remedy would be effective and there is a strong showing of willful evasion.”

On appeal, Kaszuba argued that the TTAB based the cancellation of his mark on “erroneous and inadequate filings.” In affirming the TTAB’s decision, the Federal Circuit noted: “Kaszuba [did] not offer any explanation for his refusal to comply with the Board’s orders compelling discovery, despite the multiple extensions afforded to him. Nor [did] he provide any basis for us to conclude that the Board abused its discretion in imposing the sanction of default judgment.” The Federal Circuit also pointed to the Board’s repeated warnings that his failure to comply with the TTAB’s discovery orders could result in entry of a default judgment against Kaszuba and that the TTAB had granted Kaszuba multiple extensions of time to produce the requested discovery.

The Federal Circuit’s decision underscores the need to timely comply with discovery obligations and the specifics of TTAB Orders. Failure to do so, can result in the loss of trademark rights—a result that all parties and trademark practitioners obviously want to avoid. Yet another reminder that parties and counsel’s conduct before the TTAB should be above reproach.

The case is Kris Kaszuba, d/b/a Hollywood Group v. Andrei Iancu, Docket No. 2019-1547 (Fed. Cir. Aug. 5, 2020).