412.01 In General – Board Standard Protective Order
For inter partes proceedings pending or commenced on or after August 31, 2007, the Board’s standard protective order is automatically in place to govern the exchange of information unless the parties, by stipulation approved by the Board, agree to an alternative order, or a motion by a party to use an alternative order is granted by the Board. [ Note 1.] The Board’s notice of institution will advise parties that the standard protective order applies, and that parties may view the Board’s standard protective order at the USPTO website at www.uspto.gov. [ Note 2.] It is not necessary for the parties to sign copies of the Board’s protective order for it to take effect, although it may be desirable to sign for other reasons. See TBMP § 412.03. Cases commenced prior to August 31, 2007 in which a protective order has already been approved or imposed by the Board are not affected.
The Board’s standard protective order provides for three tiers of protected information (1)
confidential, (2) highly confidential, and (3)trade secret/commercially sensitive. Parties and their attorneys shall have access to information designated as confidential or highly confidential, subject to any agreed exceptions. Outside counsel, but not in-house counsel, shall have access to information designated as trade secret/commercially sensitive. Parties and those parties or individuals appearing pro se will not have access to information designated as trade secret/commercially sensitive. In cases involving independent experts or consultants, non-party witnesses, or any individual not falling within the definition of a party or attorney, such individuals must sign an acknowledgement form agreeing to be bound by the standard protective order during and after the proceedings, as a condition for obtaining access to protected information. [ Note 3.] The Board has the authority to sanction attorneys and individuals determined to be in breach during a proceeding. [ Note 4.] See also TBMP § 527.
In Board proceedings, access to a party’s confidential, highly confidential or trade secret/commercially sensitive information is not provided as a matter of course, but rather must only be provided in response to a proper and relevant discovery request or when the party chooses to use such information in support of its case at trial. [ Note 5.] The Board’s standard protective order does not automatically protect all information. [ Note 6.] Parties must actively utilize the provisions when seeking to designate protected information. [ Note 7.] Thus, the burden falls on the party seeking to designate information as protected. If a party fails to designate a discovery response or submission as confidential under the terms of the protective order and/or redact confidential portions thereof, the confidentiality of the information is deemed waived. [ Note 8.] Nonetheless, when responding to discovery or filing submissions before the Board, the party seeking to designate information as confidential, highly confidential or trade secret has a duty to make a meaningful effort to designate only that information that warrants the designated level of protection. [ Note 9.] For information regarding the designation of material as confidential and procedures regarding redaction at trial, see TBMP § 703.01(p).
Parties cannot withhold properly discoverable information on the basis of confidentiality since the terms of the Board’s standard protective order automatically apply. [ Note 10.] In instances where a party has refused to provide discoverable information on such grounds, the Board, where appropriate, may order the party to provide such information consistent with the terms of the protective order. [ Note 11.]
Parties are free to modify the terms of the Board’s standard protective order, and are encouraged to discuss any proposed modifications during their discovery conference. [ Note 12.] For further information regarding modifications to the Board’s standard protective order upon stipulation,see TBMP § 412.02(a).
Apart from protective orders protecting a party’s information, the Board may issue protective orders addressing other issues. On motion pursuant to 37 CFR § 2.120(f), showing good cause, by a party from which discovery is sought, the Board may make any order which justice requires to protect a party from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the types of orders described in clauses (A) through (H) of Fed. R. Civ. P. 26(c). [ Note 13.] See also TBMP § 527 and TBMP § 703.01(p). To establish good cause, the movant must submit "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." [ Note 14.] The moving party seeking a protective order bears the burden of showing good cause. The movant must demonstrate that its ability to litigate will be prejudiced, not merely increase the difficulty of managing the litigation. [ Note 15.] Among the types of discovery orders that may be entered, the Board has the discretion to enter a protective order that a discovery deposition not be had. [ Note 16.] The applicability of the Board’s standard protective order does not preclude a party, when appropriate, from moving for a protective order under applicable Trademark or Federal Rules, when the Board’s standard order does not cover the extant circumstances or is viewed by the moving party as providing insufficient protection. [ Note 17.] For further information on motions for protective orders, see TBMP § 410 (Motions Attacking Requests for Discovery), TBMP § 412.02 (Protective Order Regarding Confidential and Trade Secret Information) and TBMP § 526 (Motion for a Protective Order).
NOTES:
1. 37 CFR § 2.116(g); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244 (August 1, 2007). See, e.g., Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1544 (TTAB 2009).
2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244 (August 1, 2007). The standard protective order can viewed on the Board’s home page of the USPTO website at www.uspto.gov.
3. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42251 (August 1, 2007).
4. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42251 (August 1, 2007).
5. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42251 (August 1, 2007).
6. 37 CFR § 2.116(g). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244 (August 1, 2007).
7. See 37 CFR § 2.116(g); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244 (August 1, 2007).
8. See, e.g., Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1633 n.6 (TTAB 2007).
9. See, e.g. ,General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.4 (TTAB 2011) (excessive markings of various information as confidential complicates record and often indicates that matter is improperly designated or not useful to case); Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1635 (TTAB 2011) (parties to refrain from improperly designating evidence or a show cause order may issue); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (finding that information concerning expert’s credentials and background were overdesignated as confidential or highly confidential in expert report and granting motion to redesignate that portion of the expert report as non-confidential); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495, n.5 (TTAB 2005) (where entirety of the briefs were deemed "confidential," Board subsequently requested and received redacted copies).
10. See, e.g., Amazon Technologies, Inc. v. Wax, 93 USPQ2d 1702, 1706 n.6 (TTAB 2009).
12. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244 (August 1, 2007).
13.See See Fed. R. Civ. P. 26(c)(1); 37 CFR § 2.120(f). See, e.g.,Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1674 (TTAB 2005).
14. FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999). See also The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013) (finding opposer’s allegations of undue burden and expense "merely conclusory").
15. A. Hirsh, Inc. v. United States, 657 F. Supp. 1297, 1305 (C.I.T. 1987). See also The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2153 (TTAB 2013) (citing A. Hirsh Inc. v. United States, 657 F. Supp. 1297, 1305 (C.I.T. 1987)).
16. See, e.g., Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1675 (TTAB 2005) (applicant’s motion for protective order to prevent taking of additional discovery depositions is granted as to three out of six employees of applicant who were to be deposed).
17. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244 (August 1, 2007).