402.01    In General

Fed. R. Civ. P. 26(b)(1) Scope in General. Unless otherwise limited by court order, the scope of discovery is as follows: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense — including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable matter. For good cause, the court may order discovery of any matter relevant to the subject matter involved in the action. Relevant information need not be admissible at the trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence. All discovery is subject to the limitations imposed by Rule 26(b)(2)(C).

Fed. R. Civ. P. 26(g) Signing Disclosures and Discovery Requests, Responses, and Objections.

    • (1) Signature Required; Effect of Signature. Every disclosure under Rule 26(a)(1) or (a)(3) and every discovery request, response, or objection must be signed by at least one attorney of record in the attorney’s own name — or by the party personally, if unrepresented — and must state the signer’s address, e-mail address, and telephone number. By signing, an attorney or party certifies that to the best of the person’s knowledge, information, and belief formed after a reasonable inquiry:
      • (A) with respect to a disclosure, it is complete and correct as of the time it is made; and
      • (B) with respect to a discovery request, response, or objection, it is:
        • (i) consistent with these rules and warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law, or for establishing new law;
        • (ii) not interposed for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation; and
        • (iii) neither unreasonable nor unduly burdensome or expensive, considering the needs of the case, prior discovery in the case, the amount in controversy, and the importance of the issues at stake in the action.
    • (2) Failure to Sign. Other parties have no duty to act on an unsigned disclosure, request, response, or objection until it is signed, and the court must strike it unless a signature is promptly supplied after the omission is called to the attorney’s or party’s attention.

The general scope of discovery that may be obtained in inter partes proceedings before the Board is governed by Fed. R. Civ. P. 26(b)(1), which provides, in part, as follows: [ Note 1.]

Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense -- including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons having knowledge of any discoverable matter. ... Relevant information need not be admissible at the trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence.

A party may take discovery not only as to matters specifically raised in the pleadings, [ Note 2.] but also as to any matter which might serve as the basis for an additional claim, defense, or counterclaim. [ Note 3.] While the scope of discovery is therefore somewhat broad, parties may not engage in "fishing expeditions" and must act reasonably in framing discovery requests. [ Note 4.] The parties are expected to take into account the principles of proportionality with regard to certain types of discovery. [ Note 5.] The scope of discovery in Board proceedings, though, is generally narrower than in court proceedings, especially those involving infringement and/or where both parties have made extensive use of the marks. [ Note 6.] The guidelines set forth in Fed. R. Civ. P. 26(a)(1) also apply to the discovery of information stored in digital or electronic form. A party may not, by limiting its own discovery and/or presentation of evidence on the case, thereby restrict another party’s discovery in any way. [ Note 7.] However, parties are free to discuss agreed limits on discovery as a means of reducing the time and cost associated with discovery. [ Note 8.]

Each party has a duty not only to make a good faith effort to satisfy the discovery needs of its adversary, but also to make a good faith effort to seek only such discovery as is proper and relevant to the specific issues involved in the proceeding. [ Note 9.]

In addition, because the signature of a party or its attorney to a request for discovery constitutes, under the provisions of Fed. R. Civ. P. 26(g), a certification by the party or its attorney that, inter alia, the request is warranted, consistent with the Federal Rules of Civil Procedure, and not unreasonable or unduly burdensome, a party ordinarily will not be heard to contend that a request for discovery is proper when propounded by the party itself but improper when propounded by its adversary. [ Note 10.] A contention of this nature will be entertained only if it is supported by a persuasive showing of reasons why the discovery request is proper when propounded by one party but improper when propounded by another. [ Note 11.] For a further discussion regarding discovery guidelines, see TBMP § 408.01 and TBMP § 414.

For a discussion of the scope of required disclosures intended to obviate the need for some basic discovery, see TBMP § 401.

NOTES:

 1.   See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) ("[d]uring discovery, a party may seek not only testimony and exhibits which would be admissible evidence but also information that would be inadmissible at trial if the information appears reasonably calculated to lead to the discovery of admissible evidence."). See also Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 856-66 (TTAB 1979); Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583 (TTAB 1975) (relevancy construed liberally).

 2.   See Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583 (TTAB 1975) (discussing general scope of discovery);Mack Trucks, Inc. v. Monroe Auto Equipment Co., 181 USPQ 286, 287 (TTAB 1974) (opposer must answer interrogatories concerning allegations in notice of opposition).

 3.   See J. B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (information concerning possible abandonment, if revealed, may provide basis for counterclaim); Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171 (TTAB 1975) (the mere taking of discovery on matters concerning the validity of a pleaded registration, under any circumstances, cannot be construed as a collateral attack on the registration); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 187 (TTAB 1974) ("applicant is entitled to take discovery not only as to the matters specifically raised in the pleadings but also as to any matters which might serve as the basis for an affirmative defense or for a counterclaim.").

 4.   Fed. R. Civ. P. 26(b). See Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987).

 5.   See, e.g., The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2153 (TTAB 2013) (discussing principles of proportionality with respect to requests for admissions); Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908-10 (TTAB 2011) (Board applied proportionality principles to electronically- stored information).

 6.   Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1907 (TTAB 2011).

 7.   See Crane Co. v. Shimano Industrial Co., 184 USPQ 691, 691 (TTAB 1975) (scope of discovery limited only by restrictions in Fed. R. Civ. P. 26).

 8.   37 CFR § 2.120(a)(2)  ("[t]he parties may stipulate to a shortening of the discovery period.").

 9.   Fed. R. Civ. P. 26(g). See The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013) (parties are entitled to seek discovery as they may deem necessary to help them prepare for trial, but it is not the practice of the Board to permit unlimited discovery to the point of harassment and oppressiveness); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987) ("each party and its attorney has a duty not only to make a good faith effort to satisfy the discovery needs of its opponent but also to make a good faith effort to seek only such discovery as is proper and relevant to the specific issues involved in the case."); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984). Cf. Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908 (TTAB 2011) (opposer’s failure "to conduct an attorney-supervised ESI retrieval, research and review" does not necessarily mean the discovery efforts were inadequate under the circumstances).

 10.   See Fed. R. Civ. P. 26(g). See also Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) (petitioner estopped to challenge respondent’s interrogatories as excessive in number having served virtually identical set on respondent); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986) (parties who served identical discovery requests on each other in effect waived their right to object and must answer each request completely). See also Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (applicant, having served 114 interrogatories, is estopped from challenging opposer’s 122 interrogatories as excessive); Tektronix, Inc. v. Tek Associates, Inc., 183 USPQ 623, 623 (TTAB 1974); Gastown Inc. of Delaware v. Gas City, Ltd., 180 USPQ 477, 477 (TTAB 1974). Cf. Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) (no estoppel where opposer served a different, albeit also excessive, set of interrogatories on applicant); Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990) (opposer not estopped from arguing that applicant’s interrogatories are excessive even though opposer also exceeded the limit because applicant waived its rights to complain because it did not file a motion for a protective order).

 11.   See Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) (Board was persuaded that certain interrogatories would be burdensome).