412    Protective Orders

37 CFR § 2.116(g)  The Trademark Trial and Appeal Board’s standard protective order is applicable during disclosure, discovery and at trial in all opposition, cancellation, interference and concurrent use registration proceedings, 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. The standard protective order is available at the Office’s Web site, or upon request, a copy will be provided. No material disclosed or produced by a party, presented at trial, or filed with the Board, including motions or briefs which discuss such material, shall be treated as confidential or shielded from public view unless designated as protected under the Board’s standard protective order, or under an alternative order stipulated to by the parties and approved by the Board, or under an order submitted by motion of a party granted by the Board.

Excerpts from Board’s Standard Protective Order:

1) Classes of Protected Information.

The Rules of Practice in Trademark Cases provide that all inter partes proceeding files, as well as the involved registration and application files, are open to public inspection. The terms of this order are not to be used to undermine public access to files. When appropriate, however, a party or witness, on its own or through its attorney, may seek to protect the confidentiality of information by employing one of the following designations.

Confidential - Material to be shielded by the Board from public access.

Highly Confidential - Material to be shielded by the Board from public access and subject to agreed restrictions on access even as to the parties and/or their attorneys.

Trade Secret/Commercially Sensitive - Material to be shielded by the Board from public access, restricted from any access by the parties, and available for review by outside counsel for the parties and, subject to the provisions of paragraph 4 and 5, by independent experts or consultants for the parties.

2) Information Not to Be Designated as Protected.

Information may not be designated as subject to any form of protection if it (a) is, or becomes, public knowledge, as shown by publicly available writings, other than through violation of the terms of this document; (b) is acquired by a non-designating party or non-party witness from a third party lawfully possessing such information and having no obligation to the owner of the information; (c) was lawfully possessed by a non-designating party or non-party witness prior to the opening of discovery in this proceeding, and for which there is written evidence of the lawful possession; (d) is disclosed by a non-designating party or non-party witness legally compelled to disclose the information; or (e) is disclosed by a non-designating party with the approval of the designating party.

3) Access to Protected Information.

The provisions of this order regarding access to protected information are subject to modification by written agreement of the parties or their attorneys, or by motion filed with and approved by the Board.

Judges, attorneys, and other employees of the Board are bound to honor the parties’ designations of information as protected but are not required to sign forms acknowledging the terms and existence of this order. Court reporters, stenographers, video technicians or others who may be employed by the parties or their attorneys to perform services incidental to this proceeding will be bound only to the extent that the parties or their attorneys make it a condition of employment or obtain agreements from such individuals, in accordance with the provisions of paragraph 4.

-Parties are defined as including individuals, officers of corporations, partners of partnerships, and management employees of any type of business organization.

-Attorneys for parties are defined as including in-house counsel and outside counsel , including support staff operating under counsel’s direction, such as paralegals or legal assistants, secretaries, and any other employees or independent contractors operating under counsel’s instruction.

-Independent experts or consultants include individuals retained by a party for purposes related to prosecution or defense of the proceeding but who are not otherwise employees of either the party or its attorneys.

-Non-party witnesses include any individuals to be deposed during discovery or trial, whether willingly or under subpoena issued by a court of competent jurisdiction over the witness.

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.

Independent experts or consultants, non-party witnesses , and any other individual not otherwise specifically covered by the terms of this order may be afforded access to confidential or highly confidential information in accordance with the terms that follow in paragraph 4. Further, independent experts or consultants may have access to trade secret/commercially sensitive information if such access is agreed to by the parties or ordered by the Board, in accordance with the terms that follow in paragraph 4 and 5.

37 CFR § 2.120(f)  Upon motion by a party obligated to make initial disclosures or expert testimony disclosure or from whom discovery is sought, and for good cause, the Trademark Trial and Appeal 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 provided by clauses (1) through (8), inclusive, of Rule 26(c) of the Federal Rules of Civil Procedure. If the motion for a protective order is denied in whole or in part, the Board may, on such conditions (other than an award of expenses to the party prevailing on the motion) as are just, order that any party provide or permit discovery.

Fed. R. Civ. P. 26(c)(1). . . A party or any person from whom discovery is sought may move for a protective order in the court where the action is pending — or as an alternative on matters relating to a deposition, in the court for the district where the deposition will be taken. The motion must include a certification that the movant has in good faith conferred or attempted to confer with other affected parties in an effort to resolve the dispute without court action. The court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the following:

    • (A) forbidding the disclosure or discovery;
    • (B) specifying terms, including time and place, for the disclosure or discovery;
    • (C) prescribing a discovery method other than the one selected by the party seeking discovery;
    • (D) forbidding inquiry into certain matters, or limiting the scope of disclosure or discovery to certain matters;
    • (E) designating the persons who may be present while the discovery is conducted;
    • (F) requiring that a deposition be sealed and opened only on court order;
    • (G) requiring that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a specified way; and
    • (H) requiring that the parties simultaneously file specified documents or information in sealed envelopes, to be opened as the court directs.

Fed. R. Civ. P. 26(c)(2). . . If a motion for a protective order is wholly or partly denied, the court may, on just terms, order that any party or person provide or permit discovery.

Protective orders in the context of Board inter partes proceedings refer to (1) the Board’s standard protective order governing the exchange of information and materials and modifications thereto, and (2) motions for protective orders pursuant to 37 CFR § 2.120(f). "to protect a party from annoyance, embarrassment, oppression, or undue burden or expense, . . ." Both types of protective orders are discussed below.

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).

 11.   37 CFR § 2.120(g).

 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).

412.02    Modification of Board’s Standard Protective Order Governing the Exchange of Confidential, Highly Confidential and Trade Secret/Commercially Sensitive Information

The terms of the Board’s standard protective order may be modified, upon motion or upon stipulation approved by the Board, to govern the exchange of confidential, highly confidential, and trade secret/commercially sensitive information. The most common kind of order allowing discovery on conditions is an order limiting the persons who are to have access to the information disclosed. [ Note 1.]

NOTES:

 1.   8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2043 (2013).

412.02(a)    Modification of Board’s Standard Protective Order Upon Stipulation

If the parties choose to modify the terms of the Board’s standard protective order and enter into their own stipulated protective order, a copy of the executed agreement should be filed with the Board. The Board will acknowledge receipt of the agreement, but the parties should not wait for the Board’s acknowledgement to conduct themselves in accordance with the terms of their agreement. The terms of the agreement are binding as of the date the agreement is signed. Such an order may not be used as a means of circumventing paragraphs (d) and (e) of 37 CFR § 2.27, which provide, in essence, that except for matter filed under seal pursuant to a protective order issued by a court or by the Board, the file of a published application or issued registration, and all proceedings relating thereto, are available for public inspection. [ Note 1.]

NOTES:

 1.   See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).

412.02(b)   Pro Se Litigants and In-House Legal Counsel

While the Board’s standard protective order sets forth guidelines for the disclosure of confidential information to pro se litigants and in-house counsel, in some cases, a modification of the Board’s standard protective order upon motion or by stipulation of the parties, approved by the Board, may be desirable. Special issues regarding the exchange and disclosure of information during discovery may arise in cases involving pro se litigants and in-house legal counsel. For example, under the terms of the Board’s standard protective order, such individuals do not have access to trade secret/commercially sensitive information. The financial burden of retaining either legal counsel in the case of a pro se litigant or outside legal counsel in the case of in-house counsel does not constitute good cause to amend the Board’s protective order to remove the restriction with respect to trade secret/commercially sensitive information. [ Note 1.] In instances where in-house counsel moves to amend the Board’s protective order to permit access to trade secret/commercially sensitive information, the determining factor is whether in-house counsel is involved in its employer-litigant’s "competitive decision making." [ Note 2.]

NOTES:

 1.   See A. Hirsh, Inc. v. United States, 657 F. Supp. 1297, 1305 (C.I.T. 1987).

 2.   See U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1953 (TTAB 2006) (Board applied test to deny opposer’s motion to modify protective order to permit in-house counsel access to trade secret or commercially sensitive information where opposers made only minimal showing that their in-house legal counsel was not involved in "competitive decision-making" activities).

412.02(c)   In Camera Inspection

In situations where there is a dispute between the parties to a proceeding as to the relevance and/or confidentiality of a document, or portions thereof, sought to be discovered, and the Board cannot determine from the arguments of the parties, on motion to compel production, whether the document is relevant and/or confidential, the Board may request that a copy of the document be submitted to the Board for an in camera inspection, after which the document will be returned to the party which submitted it. [ Note 1.]

NOTES:

 1.   Amazon Technologies, Inc. v. Wax, 95 USPQ2d 1865, 1869 n.8 (TTAB 2010) (based on an in camera inspection, opposer properly designated produced materials as trade secret/commercially sensitive).

412.02(d)   Contents of Protective Order

In some cases, parties may agree to modify the Board’s standard protective order, or the standard protective order is modified upon motion approved by the Board. The revised protective order typically may include provisions further clarifying the following:

    • (1) The definition of the type of material to be considered confidential or trade secret information.
    • (2) The description of the manner in which confidential or trade secret information is to be handled.
    • (3) The requirement that a party claiming confidentiality or trade secret protection designate the information covered by the claim prior to disclosure of the information to the discovering party.
    • (4) The provision that a party may not designate information as confidential or trade secret unless the party has a reasonable basis for believing that the information is, in fact, confidential or trade secret in nature.
    • (5) The provision that information designated by the disclosing party as confidential or trade secret may not include information which, at or prior to disclosure thereof to the discovering party, is known to or independently developed by the discovering party; or is public knowledge or becomes available to the public without violation of the agreement.
    • (6) The provision that information designated by the disclosing party as confidential or trade secret may not include information that, after the disclosure thereof, is revealed to the public by a person having the unrestricted right to do so.
    • (7) The provision that information designated by the disclosing party as confidential or trade secret may not include information which is acquired by the discovering party from a third party, which lawfully possesses the information and/or owes no duty of nondisclosure to the party providing discovery.
    • (8) The specification of the persons to whom confidential or trade secret information may be disclosed (e.g., outside counsel; in-house counsel; counsel’s necessary legal and clerical personnel).
    • (9) The provision that all persons to whom confidential or trade secret information is disclosed shall be advised of the existence and terms of the protective order.
    • (10) The provision that the discovering party will not disclose or make use of confidential or trade secret information provided to it under the order except for purposes of the proceeding in which the information is provided.
    • (11) The means for resolving disputes over whether particular matter constitutes confidential or trade secret information.
    • (12) In order for material designated as confidential or trade secret to be made of record in the proceeding, it shall be submitted to the Board electronically designated as "CONFIDENTIAL" in ESTTA (Electronic System for Trademark Trials and Appeals), the Board’s electronic filing system, or by paper in a separate sealed envelope or other sealed container bearing the proceeding number and name, an indication of the general nature of the contents of the container, e.g. opposer’s brief, or applicant’s motion with specification of the subject of the brief or motion, and, in large letters, the designation "CONFIDENTIAL." For confidential or trade secret submissions filed either via ESTTA or by paper, two versions are required – a confidential version as well as a redacted version available for public viewing. It is preferable for parties to file confidential and trade secret materials through ESTTA. For further information regarding the filing of confidential materials, see TBMP § 120.02, TBMP § 412.04 and TBMP § 412.05.
    • (13) The statement that at the end of the proceeding, each party shall return to the disclosing party all confidential information and materials, including all copies, summaries, and abstracts thereof.

The Board’s standard protective order can be found on the USPTO website at: www.uspto.gov.

For additional information concerning the contents of a protective order, see the cases and authorities cited in the note below. [ Note 1.]

NOTES:

 1.   See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1676 (TTAB 1988) (in addition to provisions mandated by Board, protective order may contain other provisions as are agreeable to parties); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (Board required provision that information furnished by opposer would be confined to applicant’s attorneys). Note that these cases were decided prior to automatic imposition of the Board’s standard protective order.

412.03    Duration of Protective Order

Excerpt from Board’s Standard Protective Order

15) Board’s Jurisdiction; Handling of Materials After Termination.

The Board’s jurisdiction over the parties and their attorneys ends when this proceeding is terminated. A proceeding is terminated only after a final order is entered and either all appellate proceedings have been resolved or the time for filing an appeal has passed without filing of any appeal.

The parties may agree that archival copies of evidence and briefs may be retained, subject to compliance with agreed safeguards. Otherwise, within 30 days after the final termination of this proceeding, the parties and their attorneys shall return to each disclosing party the protected information disclosed during the proceeding, and shall include any briefs, memoranda, summaries, and the like, which discuss or in any way refer to such information. In the alternative, the disclosing party or its attorney may make a written request that such materials be destroyed rather than returned.

Under the Board’s protective order, once a proceeding before the Board has been finally determined, the Board has no further jurisdiction over the parties thereto. According to the terms of the Board’s protective order, within thirty days following termination of a proceeding, the parties and their attorneys must return to each disclosing party the protected information disclosed during the proceeding, including any briefs, memoranda, summaries, and the like, which discuss or in any way refer to such information. Alternatively, the disclosing party or its attorney may make a written request that such materials be destroyed rather than returned.

It is unclear whether the Board can order parties to enter into a contract that will govern the protection of information after the Board proceeding is concluded. [ Note 1.] Thus, it may be advisable for both the parties and their attorneys to sign a stipulated protective order, so that it is clear that they are all bound thereby; that they have created a contract which will survive the proceeding; and that there may be a remedy at court for any breach of that contract which occurs after the conclusion of the Board proceeding. [ Note 2.]Nonetheless, any determination of whether the agreement establishes contractual rights or is enforceable outside of the Board proceeding is for a court to decide should such matter come before it. [ Note 3.]

NOTES:

 1.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42251 (August 1, 2007).

 2.   See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 n.3 (TTAB 2000) (Board’s jurisdiction would not extend to third-party signatory); Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552, 1555 (TTAB 1987). See also with respect to violation of a Board protective order after the conclusion of the Board proceeding, Alltrade Inc. v. Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d 1698, 1702 n.11 (9th Cir. 1991) (bringing confidential business documents into the public record in violation of the Board’s protective order established a cause of action in district court).

 3.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42251 (August 1, 2007).

412.04    Filing Confidential Materials With Board

37 CFR § 2.32(d)  Pending trademark application index; access to applications. Except as provided in paragraph (e) of this section, after a mark has been registered, or published for opposition, the file of the application and all proceedings relating thereto are available for public inspection.

37 CFR § 2.27(e)  Anything ordered to be filed under seal pursuant to a protective order issued or made by any court or by the Trademark Trial and Appeal Board in any proceeding involving an application or registration shall be kept confidential and shall not be made available for public inspection or copying unless otherwise ordered by the court or the Board, or unless the party protected by the order voluntarily discloses the matter subject thereto. When possible, only confidential portions of filings with the board shall be filed under seal.

37 CFR § 2.126(c)  [Form of submissions to the Trademark Trial and Appeal Board] To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(e) must be submitted under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must be submitted.

Excerpt from Board’s Standard Protective Order:

12) Redaction; Filing Material with Board

When a party or attorney must file protected information with the Board, or a brief that discusses such information, the protected information or portion of the brief discussing the same should be redacted from the remainder. A rule of reasonableness should dictate how redaction is affected.

Redaction can entail merely covering a portion of a page of material when it is copied in anticipation of filing but can also entail the more extreme measure of simply filing the entire page under seal as one that contains primarily confidential material. If only a sentence or short paragraph of a page of material is confidential, covering that material when the page is copied would be appropriate. In contrast, if most of the material on the page is confidential, then filing the entire page under seal would be more reasonable, even if some small quantity of non-confidential material is then withheld from the public record. Likewise, when a multi-page document is in issue, reasonableness would dictate that redaction of the portions or pages containing confidential material be effected when only some small number of pages contain such material. In contrast, if almost every page of the document contains some confidential material, it may be more reasonable to simply submit the entire document under seal. Occasions when a whole document or brief must be submitted under seal should be very rare.

Protected information, and pleadings, briefs or memoranda that reproduce, discuss or paraphrase such information, shall be filed with the Board under seal. The envelopes or containers shall be prominently stamped or marked with a legend in substantially the following form:

CONFIDENTIAL

This envelope contains documents or information that are subject to a protective order or agreement. The confidentiality of the material is to be maintained and the envelope is not to be opened, or the contents revealed to any individual, except by order of the Board.

Except for materials filed under seal pursuant to a protective order or designated as confidential in ESTTA, the files of applications and registrations which are the subject matter of pending proceedings before the Board and all pending proceeding files and exhibits thereto are available for public inspection and copying on TTABVUE. To be handled as confidential pursuant to the Board’s standard protective order or the parties’ individualized protective order, and kept out of the public record, confidential materials must be so designated at the time of filing. [ Note 1.] Paper or electronic submissions in Board proceedings which are not properly designated as confidential will be placed in the Board’s public records, available on the Internet. Only the particular discovery responses, exhibits, deposition transcript pages, or those portions of a brief, pleading or motion that disclose confidential information should be electronically designated as "CONFIDENTIAL" in ESTTA or filed by paper under seal pursuant to a protective order. If a party submits any brief, pleading, motion or other such filing containing confidential information either electronically via ESTTA or by paper under seal, the party must also submit for the public record a redacted version of said paper. [ Note 2.]. Thus, for confidential submissions filed either via ESTTA or by paper, two versions are required – a confidential version as well as a redacted version available for public view. A rule of reasonableness dictates what information should be redacted, and only in very rare instances should an entire submission be deemed confidential. [ Note 3.] In cases where a redacted version has not been provided, the confidentiality of the information may be deemed waived. [ Note 4.]

Electronic filing using ESTTA is preferred for submissions containing confidential material. When using ESTTA, the filer should select "CONFIDENTIAL Opposition, Cancellation or Concurrent Use" under "File Documents in a Board Proceeding." [ Note 5.] Filings made using this option will not be made available for public viewing, although entries will be made on the publicly available docket sheet in TTABVUE indicating the Board’s receipt of such filings. These materials may be inspected only by those individuals who are entitled, under the terms of the protective order, to have access to the protected information.

For further information regarding the use of ESTTA for confidential filings, see TBMP § 120.02.

Paper submissions of material designated as confidential should be filed in a separate sealed envelope or other sealed container prominently marked with the word "CONFIDENTIAL." [ Note 6.] Many attorneys also like to attach to the sealed envelope or other sealed container a statement, such as the following:

FILED UNDER SEAL SUBJECT TO PROTECTIVE ORDER.

    • The materials contained in this envelope have been designated
    • confidential, pursuant to a protective order, and are not to be
    • disclosed or revealed except to the Trademark Trial and Appeal
    • Board and counsel for the parties, or by order of a court.

The envelope or other container must also bear information identifying the proceeding in connection with which it is filed (i.e., the proceeding number and name), [ Note 7.], and an indication of the nature of the contents of the container (i.e., "Applicant’s Answers to Opposer’s Interrogatories 8 and 19," "Pages 22-26 From the Discovery Deposition of John Doe," "Opposer’s Exhibits 3-5 to the Discovery Deposition of John Smith," etc.).

NOTES:

 1.   See 37 CFR § 2.116(g).

 2.   See 37 CFR § 2.27(d)  and 37 CFR § 2.27(e), and 37 CFR § 2.126(c); Duke University v. Haggar Clothing Inc., 54 USPQ2d 1443, 1445 (TTAB 2000).

 3.   See, e.g. , Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402-03 (TTAB 2010) (discussing improper designation as confidential testimony and exhibits submitted in Board proceeding); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1136 n.9 (TTAB 2009) (opposer ordered to file redacted brief in which only information which is truly confidential is deleted); 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).

 4.   See, e.g., Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1633 n.6 (TTAB 2007).

 5.   See http://estta.uspto.gov/filing-type.jsp.

 6.   See 37 CFR § 2.126(c).

 7.See   See 37 CFR § 2.126(c).

412.05    Handling of Confidential Materials By the Board

A confidential filing submitted via ESTTA will not be made available for public viewing, although an entry will be made on the publicly-available docket sheet in TTABVUE, indicating the Board’s receipt of such filings. Confidential materials submitted in paper form (including trade secret information) filed under seal subject to a protective order are stored by the Board in a secure location, and are disclosed only to the Board and to those people specified in the protective order as having the right to access. Confidential material, while given full consideration by the Board in its rulings, will not be disclosed in orders or decisions. [ Note 1.] After the proceeding before the Board has been finally determined, the party(ies) will be contacted to arrange for the return or retrieval of all confidential materials submitted by them, or otherwise be required to consent to their disposal. If the Board does not hear from the party(ies) within a specified time period, the confidential materials will be destroyed. For further information regarding the handling of confidential information by the Board, see TBMP § 120.02. For information concerning access to protective order materials during an appeal from the decision of the Board, see TBMP § 904.

NOTES:

 1.   See, e.g., Schering Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1324 (TTAB 2007); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1930 n.22 (TTAB 2006).

412.06    Protective Orders Limiting Discovery

37 CFR § 2.120(f)  Upon motion by a party obligated to make initial disclosures or expert testimony disclosure or from whom discovery is sought, and for good cause, the Trademark Trial and Appeal 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 provided by clauses (1) through (8), inclusive, of Rule 26(c) of the Federal Rules of Civil Procedure. If the motion for a protective order is denied in whole or in part, the Board may, on such conditions (other than an award of expenses to the party prevailing on the motion) as are just, order that any party provide or permit discovery.

Fed. R. Civ. P. 26(c)(1) . . . A party or any person from whom discovery is sought may move for a protective order in the court where the action is pending — or as an alternative on matters relating to a deposition, in the court for the district where the deposition will be taken. The motion must include a certification that the movant has in good faith conferred or attempted to confer with other affected parties in an effort to resolve the dispute without court action. The court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the following:

    • (A) forbidding the disclosure or discovery;
    • (B) specifying terms, including time and place, for the disclosure or discovery;
    • (C) prescribing a discovery method other than the one selected by the party seeking discovery;
    • (D) forbidding inquiry into certain matters, or limiting the scope of disclosure or discovery to certain matters;
    • (E) designating the persons who may be present while the discovery is conducted;
    • (F) requiring that a deposition be sealed and opened only on court order;
    • (G) requiring that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a specified way; and
    • (H) requiring that the parties simultaneously file specified documents or information in sealed envelopes, to be opened as the court directs.

Although it is generally inappropriate to respond to a request for discovery by filing a motion for a protective order, in certain situations, on motion pursuant to 37 CFR § 2.120(f), a party may properly move for a protective order that the disclosure or discovery not be had, or be had only on specified terms and conditions. [ Note 1.]

A party must establish good cause to obtain a protective order. [ Note 2.] To establish good cause, a movant must provide "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." [ Note 3.] The existence of good cause for a protective order is a factual matter to be determined from the nature and character of the information sought by deposition or interrogatory request or request for production or request for admission weighed in the balance of the factual issues involved in the Board proceeding. 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 that the difficulty of managing the litigation will increase. [ Note 4.]

When the Board grants a motion for a protective order it may direct either the disclosing party, or the parties together, to prepare an order with terms that are mutually agreeable to them, [ Note 5.] may approve the protective order proffered by a party, may order the parties to adhere to the Board’s standard protective order, or may provide whatever relief the Board deems appropriate.

The parties should confer in good faith before seeking Board intervention for a protective order. [ Note 6.]

For additional information regarding motions for protective order, see TBMP § 412 and TBMP § 526.

NOTES:

 1.   See, e.g., FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1764 (TTAB 1999) (protective order against taking deposition of high level executive granted); Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976) (protective order granted where party who was served with discovery (assignor) is not and was not at the time of commencement of proceeding the real party in interest).

 2.   37 CFR § 2.120(f); Fed. R. Civ. P. 26(c)(1).

 3.   The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152-53 (TTAB 2013); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999).

 4.   A. Hirsh, Inc. v. United States, 657 F. Supp. 1297, 1305 (C.I.T. 1987); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2153 (TTAB 2013).

 5.See,   See, e.g., Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719 (TTAB 1989); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974).

 6.   Fed. R. Civ. P. 26(c)(1). The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013) (finding good faith effort to resolve the discovery dispute prior to filing the motion for protective order).

412.06(a)   Depositions

Although issuance of a protective order totally prohibiting a deposition occurs only in extraordinary circumstances, the Board has the discretion to limit a deposition or order a deposition not to be had if it determines that the discovery sought is obtainable from other sources that are more convenient and less burdensome or duplicative. [ Note 1.] The party seeking a protective order to limit a deposition or for a deposition not to be had bears the burden to show good cause therefor. [ Note 2.] To establish good cause, the movant must submit "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." [ Note 3.]

As general rule, a lack of personal knowledge is an insufficient basis for obtaining a protective order that a discovery deposition not be had, as a party seeking discovery may test a witness’ asserted lack of knowledge. [ Note 4.] On the other hand, a motion for protective order may be granted if it is shown that the party has no unique or superior personal knowledge of the facts and that discovery may be obtained from other individuals with equivalent or greater knowledge. [ Note 5.] A party may file a motion for a protective order (or alternatively, a motion to quash) if, for example, absent a stipulation of the parties or leave of the Board, the notice of deposition would result in the inquiring party exceeding the permitted number of ten discovery depositions or if it would result in a second deposition of an individual or if the notice would result in a deposition being taken outside the discovery period. An assertion that the deponent is too busy, or that the examination would cause undue labor, expense or delay is generally an insufficient basis for obtaining a protective order. [ Note 6.]

If a party moves for a protective order to prohibit the deposition of a very high-level official or executive of a large corporation, the movant must demonstrate through an affidavit or other evidence that the high-level official has no direct knowledge of the relevant facts or that there are other persons with equal or greater knowledge of the relevant facts. [ Note 7.]

If the movant meets this initial burden, then the burden shifts to the party seeking the deposition to show that the official has unique or superior personal knowledge of relevant facts. [ Note 8.] If the party seeking the deposition does not satisfy this showing, then the Board will grant the motion for protective order and require the party seeking the deposition to attempt to obtain discovery through less intrusive methods. [ Note 9.] Depending upon the circumstances of the case, these methods should include the depositions of lower-level employees, Fed. R. Civ. P. 30(b)(6) depositions, requests for admissions, or interrogatories and requests for production of documents directed to the corporation. [ Note 10.]

If, after making a good faith effort to utilize less intrusive methods of discovery, the party is unable to obtain the information it seeks, a party may file a motion to vacate or modify the protective order. Such a motion should include a showing (1) that there is a reasonable indication that the high-level official’s deposition may or will lead to the discovery of admissible evidence, and (2) that the less intrusive methods of discovery are unsatisfactory, insufficient or inadequate. [ Note 11.] In granting the motion to vacate or modify the protective order, the Board may limit the topics and duration of the deposition. [ Note 12.]

A party moving for a protective order to delay, limit or prevent a deposition on the basis of medical grounds or health concerns has the burden of making a specific and documented factual showing. [ Note 13.]

NOTES:

 1.   Fed. R. Civ. P. 26(c)(1); 37 CFR § 2.120(f); Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1674 (TTAB 2005).

 2.   Fed. R. Civ. P. 26(c)(1); 37 CFR § 2.120(f).

 3.   . FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999).

 4.   8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2037 (2013).

 5.   Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1675 (TTAB 2005).

 6.   FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1762 (TTAB 1999).

 7.   FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).

 8.   FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).

 9.   FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).

 10.   FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).

 11.   FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).

 12.Cf.   Cf. Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1677 (TTAB 2005) (denying a motion for protective order that depositions not be had with regard to certain individuals but limiting the depositions to three hours in duration and to one particular topic).

 13.   8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2037 (2013) and cases cited therein.

412.06(b)   Other Discovery

Except in those cases where it is readily apparent that propounded discovery requests are so oppressive as to constitute clear harassment, it is generally improper to respond to a request for discovery by filing a motion for protective order. [ Note 1.] See TBMP § 405 and TBMP § 406, for proper responses to discovery and TBMP § 412 and TBMP § 526 regarding motions for protective orders. It is also improper to move for a protective order for the purpose of delaying responses to discovery or for purposes of harassment of one’s adversary. [ Note 2.] The remedy for excessive interrogatories is service of a general objection, rather than a motion for protective order. [ Note 3.] For more information regarding excessive interrogatories, see TBMP § 405.

Where appropriate, the Board may under Fed. R. Civ. P. Rule 26(c)(1) order that the discovery requested not be had with regard to interrogatories and requests for production and requests for admission. [ Note 4.] The Board must determine whether there is a need for protection against a particular interrogatory or request for admission or production of a particular document or category of documents due to their nature or whether the volume of improper requests for production or requests for admission renders them harassing and oppressive. [ Note 5.] The parties are expected to take into account the principles of proportionality with regard to document requests and requests for admission such that the volume of requests does not render them harassing and oppressive and are expected to consider the scope of the requests as well as confer in good faith about the proper scope of discovery pursuant to 37 CFR § 2.120(a)  and Fed. R. Civ. P. 26(f) so as to minimize the need for these motions. See TBMP §402 and TBMP § 408 regarding the scope of discovery, the parties’ discovery conference obligations and the duty to cooperate.

NOTES:

 1.   Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984).

 2.   Fort Howard Paper Co. v. G.V. Gambina Inc., 4 USPQ2d 1552, 1553 (TTAB 1987).

 3.   37 CFR § 2.120(d).

 4.   See, e.g., Fed. R. Civ. P. 36 Advisory Committee notes (1970 amendment) ("requests to admit may be so voluminous and so framed that the answering party finds the task of identifying what is in dispute and what is not unduly burdensome. If so, the responding party may obtain a protective order under Rule 26(c)").

 5.   The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013) (granting protective order with regard to 94 duplicative requests for admissions but denying protective order with regard to 282 requests for admissions finding them relevant to allegations and claims as pleaded, where opposer made broad claims of ownership of twenty-six registered and common law marks in its notice of opposition, and applicant’s admission requests related only to fourteen of opposer’s pleaded marks); Weatherford/Lamb Inc. v. C&J Energy Services, Inc., 96 USPQ2d 1834, 1836 n.3 (TTAB 2010) (noting that during discovery and prior to service of petitioner’s discovery responses, the Board granted motion for protective order that petitioner need only produce limited or representative samples of responsive documents); Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1613 (TTAB 1991) (granting motion for protective order with respect to discovery relating to foreign activities; denying motion for protective order with respect to applicant’s use in commerce in U.S.); Fort Howard Paper Co. v. G.V. Gambina Inc., 4 USPQ2d 1552, 1554 (TTAB 1987) (denying motion for protective order with respect to nineteen discovery requests which were suitably tailored to the issues in the opposition); C. H. Stuart Inc. v. S.S. Sarna, Inc., 212 USPQ 386, 387 (TTAB 1980) (granting protective order due to oppressive and harassing discovery requests where the requests served were "boiler-plate" requests designed for use in an infringement action, discovery was not tailored to issues in Board proceeding, and requests sought included those seeking information regarding whether officers of applicant had been convicted of a crime or subject to a proceeding before the U.S. government). See also Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976) (protective order granted where obligation to respond to discovery requests rested with assignee nor assignor).