401.01 Discovery Conferences
37 CFR § 2.120(a)(1) ... The provisions of Federal Rule of Civil Procedure relating to ... the conference of the parties to discuss settlement and develop a disclosure and discovery plan, ... are applicable to Board proceedings in modified form ... The Board will specify the deadline for a discovery conference ...
37 CFR § 2.120(a)(2) The discovery conference shall occur no later than the opening of the discovery period, and the parties must discuss the subjects set forth in Federal Rule of Civil Procedure 26(f) and any subjects set forth in the Board’s institution order. A Board Interlocutory Attorney or Administrative Trademark Judge will participate in the conference upon request of any party made after answer but no later than ten days prior to the deadline for the conference. The participating attorney or judge may expand or reduce the number or nature of subjects to be discussed in the conference as may be deemed appropriate... The parties are not required to prepare or transmit to the Board a written report outlining their discovery conference discussions, unless the parties have agreed to alter disclosure or discovery obligations set forth by these rules or applicable Federal Rules of Civil Procedure, or unless directed to file such a report by a participating Board Interlocutory Attorney or Administrative Trademark Judge.
Fed. R. Civ. P. 26(f)(2) ... In conferring, the parties must consider the nature and basis of their claims and defenses and the possibilities for promptly settling or resolving the case; ... discuss any issues about preserving discoverable information...
For inter partes proceedings commenced on or after November 1, 2007, the parties are required to hold a discovery conference to discuss the subjects set forth in Fed. R. Civ. P. 26(f) and in the institution order for the case. [ Note 1.] As specified in the Board’s institution order:
[T]he parties are required to have a conference to discuss: (1) the nature of and basis for their respective claims and defenses, (2) the possibility of settling the case or at least narrowing the scope of claims or defenses, and (3) arrangements relating to disclosures, discovery and introduction of evidence at trial, should the parties not agree to settle the case. See Trademark Rule 2.120(a)(2). Discussion of the first two of these three subjects should include a discussion of whether the parties wish to seek mediation, arbitration or some other means for resolving their dispute. Discussion of the third subject should include a discussion of whether the Board’s Accelerated Case Resolution (ACR) process may be a more efficient and economical means of trying the involved claims and defenses. Information on the ACR process is available at the Board’s main webpage. Finally, if the parties choose to proceed with the disclosure, discovery and trial procedures that govern this case and which are set out in the Trademark Rules and Federal Rules of Civil Procedure, then they must discuss whether to alter or amend any such procedures, and whether to alter or amend the Standard Protective Order (further discussed below). Discussion of alterations or amendments of otherwise prescribed procedures can include discussion of limitations on disclosures or discovery, willingness to enter into stipulations of fact, and willingness to enter into stipulations regarding more efficient options for introducing at trial information or material obtained through disclosures or discovery.
The conference is not limited to the subjects listed in Fed. R. Civ. P. 26(f) or in the Board’s institution order and "the parties are free to discuss any additional topics that could promote settlement or efficient adjudication of the Board proceeding," including alternative means for adjudication such as the Board’s Accelerated Case Resolution (ACR) procedure. [ Note 2.] See TBMP § 528.05(a)(2) and TBMP § 702.04 for further information on ACR. Because the parties may enter into stipulations altering disclosure obligations, they should continue to discuss their reciprocal obligations, and progress made in satisfying such obligations, even after the discovery conference has been held.
The conference should take place once the pleadings have closed by the deadline set forth in the Board’s institution order (or by any extended deadline approved by the Board), and must take place no later than the opening of the discovery period. [ Note 3.] In instances, however, where the defendant is in default, or a pleading motion under Fed. R. Civ. P. 12 has been filed, or a counterclaim has been filed, the parties’ obligation to have a discovery conference is effectively stayed. [ Note 4.] The rationale is that an answer must be filed to all claims and counterclaims, and issues related to the pleadings resolved before the parties can have a meaningful discovery conference. [ Note 5.] In such cases, the Board will reset the deadline for the discovery conference as well as all subsequent dates, upon resolution of the default, or Fed. R. Civ. P. 12 motion, or acknowledgement of the counterclaim, which may include setting or resetting the deadline for filing an answer. [ Note 6.] Generally after an answer is filed, the Board is unlikely to find good cause to extend the deadline for the discovery conference for settlement negotiations, even upon stipulation or consent. [ Note 7.] There is no Fed. R. Civ. P. 16(b) scheduling/conference order.
The parties’ discovery conference may be in person or by other means (e.g. telephone). [ Note 8.] If any party wants a Board professional to participate in the required discovery conference, the party must call the Board attorney assigned to the case or file such request through ESTTA (Electronic System for Trademark Trials and Appeals), the Board’s electronic filing system, no later than ten (10) days prior to the deadline for conducting the discovery conference, so as to facilitate completion of the conference by the deadline. [ Note 9.] Board participation is encouraged where pro se litigants are involved. [ Note 10.] The participating attorney or judge has discretion to expand or reduce the number or nature of subjects to be discussed during the conference. [ Note 11.] For instance, the Board professional may ascertain whether the parties have previously engaged in settlement discussions, explain to the parties the Board’s ACR option, and may inquire whether the parties need additional time after the conference to discuss settlement. [ Note 12.] Participation by a Board professional will be by telephone. [ Note 13.]
If neither party requests Board participation in the discovery conference, the parties still must conference no later than the prescribed deadline, and the Board will operate on the assumption that the conference was held by the deadline. The mere discussion of settlement amongst the parties does not substitute for a full discovery conference of subjects set forth in Fed. R. Civ. P. 26(f) and the Board’s institution order. [ Note 14.]
Unlike the Federal Rules, the parties do not have to file a disclosure/discovery plan with the Board following their discovery conference, unless they are seeking leave by motion or stipulation to alter standard deadlines or obligations, or unless they were directed to do so by the Board. [ Note 15.]
The Board has the authority to order parties to hold a discovery conference, either sua sponte or upon motion. [ Note 16.]
For a discussion regarding the duty to cooperate in scheduling and conducting a discovery conference, and the imposition of sanctions for the failure to participate in a discovery conference, see TBMP § 408.01(a).
NOTES:
1. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 and 42252 (August 1, 2007); 37 CFR § 2.120(a)(2); Fed. R. Civ. P. 26(f). See, e.g., Promgirl, Inc. v. JPC Co., 94USPQ2d 1759, 1761-62 (TTAB 2009) (mere discussion of settlement does not substitute for full discovery conference of subjects set forth in Fed. R. Civ. P. 26 and Board’s institution order).
2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 and 42252 (August 1, 2007). See Weatherford/Lamb Inc. v. C&J Energy Servs., Inc., 96 USPQ2d 1834, 1836 n.4 (TTAB 2010) (parties encouraged to discuss ACR during discovery conference).
3. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
4. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
5. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
6. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
7. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007). See Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, n.1 (TTAB 2008) ("The Board is unlikely to find good cause when such a request is based on the parties’ desire to engage in settlement discussions.").
8. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
9. See 37 CFR § 2.120(a)(2); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007). But see Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759 (TTAB 2009) (Board professional can participate in discovery conference with less than ten days notice in instances where parties are at an impasse; conference may take place after deadline in those circumstances).
10. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42252 (August 1, 2007) ("... Board professionals involved in conferences will fill the educator’s role [that] would have to be filled by experienced counsel.").
12. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42252 (August 1, 2007).
13. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
14. Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761-62 (TTAB 2009).
15. 37 CFR § 2.120(a)(2); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245(August 1, 2007).
16. See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1763 (TTAB 2009).