El Encanto, Inc. v. Hatch Chile Company, Inc., No. 15-2012 (10th Cir. 2016)Annotate this Case
After the Hatch Chile Company sought to trademark the term “Hatch” for its exclusive use, a chile producing rival, El Encanto, objected. El Encanto argued before the Trademark Trial and Appeal Board ("TTAB," a division of the Patent and Trademark Office (PTO)), El Encanto argued that “Hatch” can’t be trademarked both because it refers to a place and because Hatch Chile used the term in a misleading manner. To prove its case of deception, El Encanto sought to show that Hatch Chile’s products regularly include chiles that weren't even from the Hatch Valley. El Encanto sought documents from Hatch Chile's packers and suppliers over where the Hatch peppers came from. Hatch Chile responded with a motion for a protective order; the packer, Mizkan Americas, Inc., moved to quash El Encanto's subpoena. Hatch Chile and Mizkan argued that before documents could be subpoenaed, a deposition had to be held. Because El Encanto's subpoena failed to seek a deposition, Hatch Chile argued the order had to be quashed. El Encanto replied that it didn’t want to waste everyone’s time with a deposition: documents would suffice to answer its pretty simple question. The district court agreed and granted Mizkan's motion to quash. El Encanto appealed. The Tenth Circuit reversed: "consistent with any of the various statutory interpretations and regulations cited to us, a party to a TTAB proceeding can obtain nonparty documents without wasting everyone’s time and money with a deposition no one really wants."