523.02    Special Requirements for Motion

37 CFR § 2.120(e)   Motion for an order to compel disclosure or discovery.

    • (1) ... A motion to compel discovery shall include a copy of the request for designation or of the relevant portion of the discovery deposition; or a copy of the interrogatory with any answer or objection that was made; or a copy of the request for production, any proffer of production or objection to production in response to the request, and a list and brief description of the documents or things that were not produced for inspection and copying. A motion to compel initial disclosures, expert testimony disclosure, or discovery must be supported by a written statement from the moving party that such party or the attorney therefor has made a good faith effort, by conference or correspondence, to resolve with the other party or the attorney therefor the issues presented in the motion but the parties were unable to resolve their differences. If issues raised in the motion are subsequently resolved by agreement of the parties, the moving party should inform the Board in writing of the issues in the motion which no longer require adjudication.

A motion to compel must include a copy of the request for discovery and the response thereto, as specified in 37 CFR § 2.120(e). [ Note 1.]

In addition, the motion to compel disclosures or discovery must be supported by a written statement from the moving party that such party or its attorney has made a good faith effort, by conference or correspondence, to resolve with the other party or its attorney the issues presented in the motion, and has been unable to reach agreement. [ Note 2.]

In the event that issues raised in the motion are subsequently resolved by the parties, the moving party should inform the Board in writing, filed through ESTTA, of the issues in the motion which no longer require determination. [ Note 3.]

For information concerning the special requirements for a motion to compel answers to interrogatories that are the subject of a general objection on the ground of excessive number, see TBMP § 405.03(e). Cf. TBMP § 526.

NOTES:

 1.   See Fidelity Prescriptions, Inc. v. Medicine Chest Discount Centers, Inc., 191 USPQ 127, 128 (TTAB 1976) (Board must be able to render a meaningful decision on a motion to compel); Amerace Corp. v. USM Corp., 183 USPQ 506, 506-07 (TTAB 1974); Helene Curtis Industries, Inc. v. John H. Breck, Inc., 183 USPQ 126, 126 (TTAB 1974).

 2.   37 CFR § 2.120(e). See Amazon Techonologies, Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (good faith effort requirement); Pioneer Kabushiki Kaisha v. Hitachi, 74 USPQ2d 1672, 1679 n.11 (TTAB 2005) (motion to compel demonstrated good faith effort and included copies of relevant document requests and responses); Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626, 632 (TTAB 1986) (failed to submit documentary evidence of good faith effort); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986) (parties must narrow disputed requests for discovery to a reasonable number); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (nature and the number of discovery requests clearly demonstrated that no good faith effort had been made); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448, 450 (TTAB 1979) (good faith effort is required where there has been a complete failure to respond to discovery; telephone call to counsel sufficient); MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 954 (TTAB 1979) (same; a statement that discovery has not been responded to is insufficient).

 3.   37 CFR § 2.120(e). See, e.g., Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 (TTAB 1987) (late responses rendered motion to compel, based on complete non-responsiveness, moot).