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US: TTAB enters judgment based on finding of wilful evasion

In Fifth Generation Inc. v Titomirov Vodka LLC, the Trademark Trial and Appeal Board (TTAB) issued a precedential ruling, granting Fifth Generation's motion for summary judgment as a sanction in view of Titomirov Vodka's failure to comply with the TTAB's orders, as well as its pattern and practice of avoiding its discovery obligations.

By way of background, Fifth Generation, owner of Tito's® brand vodka, challenged two applications and a registration owned by Titomirov Vodka, pleading priority and likelihood of confusion, among other claims. After the close of discovery, Fifth Generation filed a motion to reopen, alleging that Titomirov Vodka concealed evidence which materially prejudiced Fifth Generation's ability to prosecute the merits. At issue was Dr Alexander Titomirov's refusal to produce any witnesses for deposition, based on his representations that he was Titomirov Vodka's sole officer and employee, and resided in Monaco. Fifth Generation sought to establish that Dr Titomirov's representations were false, and an attempt to evade discovery.

Fifth Generation rebutted Dr Titomirov's representation that he was the only officer and employee of Titomirov, pointing out that they had located two individuals who represented themselves publicly as Titomirov Vodka's President of US Operations and Vice President of Sales and Business Development. Disproving Dr Titomirov's claim that he resided in Monaco, Fifth Generation identified and produced (i) social media images of Dr Titomirov at events in Palm Beach, Florida; and (ii) documents titled "Affidavit of Confession of Judgment" that Dr. Titomirov signed in 2019, which were notarised in the State of Florida, filed in the Supreme Court of the State of New York, and which averred that Dr Titomirov resides in Florida. After Fifth Generation brought its findings to the TTAB's attention, rather than addressing Fifth Generation's revelations, Titomirov filed two motions for extensions of time and a request for a phone conference.

The TTAB denied Titomirov's motions and request, stating that "such dubious filings not only demonstrate Titomirov's dilatory intent, but also tax Board resources… show[ing] a course and pattern of delay that evidence willful evasion of Titomirov's discovery obligations." Based on Dr Titomirov's actions, and the record established by Fifth Generation, the TTAB found that the lesser sanctions it had already imposed on Titomirov had little effect, future compliance by Titomirov was highly unlikely, and that "any sanction short of judgment would be futile and unfair to Fifth Generation."

Declining to exercise its inherent authority to enter sanctions in this instance, the TTAB opted to enter judgement under Trademark Rule 2.120(h), "based on Titomirov's disregard of prior Board orders, misrepresentations to the Board concerning Dr. Titomirov's residence in the United States, and a continuing pattern of frustrating Fifth Generation's prosecution of the case."

This decision provides cautionary guidance with respect to what types of behaviour may lead to the drastic remedy of dispositive sanctions, and displays how seemingly innocuous information posted on social media and the Internet can affect the outcome of a case.

Karen Artz AshJerry Jakubovic

Katten Muchin Rosenman LLP 575 Madison AvenueNew York, NY 10022-2585United StatesTel: +1 212 940 8554Fax: +1 212 940 8671karen.ash@kattenlaw.comwww.kattenlaw.com

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