On July 28, 2020, the TTAB issued a precedential decision regarding an underutilized method for responding to summary judgment motions filed before the non-moving party has had a reasonable opportunity to obtain relevant discovery.

In Anand K. Chavakula v. Praise Broadcasting AKA Praise FM (Cancellation No. 92071482), Chavakula filed a petition to cancel Praise FM’s registration for the mark PRAISELIVE & Design based on an alleged likelihood of confusion with Chavakula’s purportedly earlier, unregistered PRAISELIVE mark.

Despite having repeatedly failed to respond to Praise FM’s discovery requests, Chavakula filed a motion for summary judgment prior to the close of discovery.  Rather than file a brief in opposition, Praise FM invoked Federal Rule of Civil Procedure 56(d), an underutilized method for obtaining discovery necessary to adequately respond to a motion for summary judgment.

Pursuant to Rule 56(d), if a party served with a motion for summary judgment shows, by affidavit or declaration, that, for specified reasons, it cannot present facts essential to justify its opposition, the court (or in this case, the TTAB) may (1) defer considering the motion or deny it, (2) allow the non-moving party time to obtain affidavits or declarations or to take discovery, or (3) issue any other appropriate order.  Fed. R. Civ. P. 56(d).  To obtain the protections afforded by Rule 56(d), the party must state specific reasons why it is unable, without discovery, to present facts necessary to oppose the motion for summary judgment.  Further, the requested discovery must be reasonably directed to obtaining facts essential to the party’s opposition to the motion for summary judgment.

Praise FM argued that it required discovery regarding Chavakula’s asserted priority, as well as certain likelihood of confusion factors, to adequately respond to the motion for summary judgment.  In support of its position, Praise FM directed the TTAB to numerous of its outstanding discovery requests that were specifically directed to these issues—including numerous requests that covered certain “undisputed” facts set forth in Chavakula’s summary judgment motion.

The TTAB granted Praise FM’s Rule 56(d) motion, stating that Chavakula’s summary judgment motion “places in issue any matters that are probative of [Chavakula’s] asserted priority, and likelihood of confusion.”  Further, while acknowledging that a party invoking Rule 56(d) need not have previously sought discovery, the TTAB stated that Praise FM had, in fact, timely sought discovery regarding these issues.  In light of these facts, the TTAB found that Praise FM had adequately explained “why it is unable to prepare a response [to the summary judgment motion] without discovery and confirm[ed] that what it needs is largely within [Chavakula’s] possession, custody, or control.”

In granting Praise FM’s motion, the TTAB noted that the purpose of Rule 56(d) is to protect non-movants “from being ‘railroaded’ by premature summary judgment motions.”  Moreover, the TTAB stated that, although it rigorously applies the requirements of Rule 56(d), and denies such motions when they are unsupported, the TTAB “will not penalize a Rule 56(d) movant whose motion is less than ideally supported when the motion arises from the actions of an uncooperative or recalcitrant adversary who gridlocks discovery.”

The TTAB granted Chavakula 20 days to respond to the outstanding discovery requests identified by Praise FM, without objection, and to serve all requested documents, labeled with bates numbers.  The TTAB further granted Praise FM 40 days from the date of Chavakula response deadline to file an opposition to the motions for summary judgment.

Practitioners often consider filing an early summary judgment motion to gain a strategic advantage or to bring a quick close to an opposition or cancellation proceeding.  The Chavakula decision, however, serves as a stark reminder that such efforts may prove futile if the moving party has been unreasonable or failed to adequately comply with its own discovery obligations.

Conversely, the TTAB’s ruling reminds non-moving parties facing premature summary judgment motions that there is an avenue available for obtaining the discovery necessary to respond to such motions—if the non-moving party can satisfy the stringent requirements of Rule 56(d).