403 Timing of Discovery
403.01 In General
- (1) …The Board will specify the deadline for a discovery conference, the opening and closing dates for the taking of discovery, and the deadlines within the discovery period for making initial disclosures and expert disclosure. The trial order setting these deadlines and dates will be included with the notice of institution of the proceeding.
- (2) …The discovery period will be set for a period of 180 days. … The parties may stipulate to a shortening of the discovery period. The discovery period may be extended upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. If a motion for an extension is denied, the discovery period may remain as originally set or as reset.
- (3) …Discovery depositions must be taken, and interrogatories, requests for production of documents and things, and requests for admission must be served, on or before the closing date of the discovery period as originally set or as reset.
When a timely opposition or petition to cancel in proper form has been filed, and the required fee has been submitted (or at the time described in 37 CFR § 2.92 for an interference and 37 CFR § 2.99(c) for a concurrent use proceeding), the Board sends out a notice advising the parties of the institution of the proceeding. [ Note 1.] See also TBMP § 310, TBMP § 1003 and TBMP § 1106. The notice includes a trial order setting the opening and closing dates for the discovery period, assigning each party’s time for taking testimony, and for those cases commenced on or after November 1, 2007, the deadlines for the discovery conference and disclosures. [ Note 2.] For such cases, the opening of discovery coincides with the deadline for the discovery conference. The date set for the close of discovery is 180 days after the opening of discovery.
Parties may modify the discovery and trial schedule, including the deadline for making disclosures, if the parties file, and the Board approves, a stipulation or motion to that effect. [ Note 3.] Parties must inform the Board, by stipulation or motion, any time they agree to modify their obligations under the rules governing disclosures and discovery, as well as when they agree to modify deadlines or schedules that involve disclosures, discovery, trial or briefing. [ Note 4.] In addition to stipulating to extend the discovery period, parties may stipulate to a shortening of the discovery period. [ Note 5.]
The traditional discovery devices, namely, discovery depositions, interrogatories, requests for production of documents and things, and requests for admission, are available for use only during the discovery period. [ Note 6.] A party has no obligation to respond to an untimely request for discovery, nor is a party obliged to respond to discovery when initial disclosures have not been served, although a party should object on that basis. [ Note 7.]
For further information regarding the timing of initial, expert and pretrial disclosures for inter partes proceedings commenced on or after November 1, 2007, see TBMP § 401 and TBMP § 702.01.
NOTES:
1. 37 CFR § 2.105 and 37 CFR § 2.113.
2. 37 CFR § 2.120(a)(1) and 37 CFR § 2.121(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
3. 37 CFR § 2.120(a)(2). See Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767-68 (TTAB 2008) (Board approved parties’ stipulation to waive their reciprocal obligation to make initial disclosures).
4. 37 CFR § 2.120(a)(2). See Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767-68 (TTAB 2008).
5. 37 CFR § 2.120(a)(2). See H.D. Lee Co. v. Maidenform, Inc., 87 USPQ2d 1715, 1720 n.55 (TTAB 2008).
6. See Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978) (although a specific time period is not provided in Fed. R. Civ. P. 34, it is implicit that utilization thereof is limited to the discovery period); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978).
7. See Dating DNA, LLC v. Imagini Holdings, LLC, 94 USPQ2d 1889, 1893 (TTAB 2010) (service of initial disclosures is a prerequisite to taking discovery); Amazon Technologies v. Wax, 93 USPQ2d 1702, 1704-06 (TTAB 2009) (opposer’s mistaken belief that applicant failed to serve initial disclosures does not excuse opposer’s failure to respond to or properly object to applicant’s interrogatories and document requests on the basis of failure to serve initial disclosures).
403.02 Time for Service of Discovery Requests and Taking of Depositions
37 CFR § 2.120(a)(3) … Discovery depositions must be taken, and interrogatories, requests for production of documents and things, and requests for admission must be served, on or before the closing date of the discovery period as originally set or as reset.
A party may serve written interrogatories, requests for production and things, and requests for admissions on an adversary during the discovery period in an inter partes proceeding before the Board; however, for cases commenced on or after November 1, 2007, the serving party must have already made its initial disclosures, absent a stipulation or a granted motion or upon order of the Board to the contrary. [ Note 1.] Written discovery may be served concurrently with initial disclosures. [ Note 2.] Additionally, for cases commenced on or after November 1, 2007, a party cannot notice depositions until it has served its initial disclosures, unless such disclosures are waived. [ Note 3.] Discovery depositions must be not only noticed but also taken during the discovery period (unless the parties stipulate or the Board orders that the deposition may be taken outside of the period). [ Note 4.]
NOTES:
1. 37 CFR § 2.120(a)(3). ("A party must make its initial disclosures prior to seeking discovery ..."); Dating DNA, LLC v. Imagini Holdings, LLC, 94 USPQ2d 1889 (TTAB 2010) (motion to compel denied where moving party failed to make initial disclosures; service of initial disclosures is a prerequisite to taking discovery). For proceedings commenced prior to November 1, 2007, see Luemme Inc. v. D.B. Plus, Inc., 53 USPQ2d 1758, 1761 (TTAB 1999); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978); Atwood Vacuum Machine Co. v. Automation Industries, Inc., 181 USPQ 606, 607 (TTAB 1974); AMP Inc. v. Raychem Corp., 179 USPQ 857, 858-59 (TTAB 1973); Deere & Co. v. Deerfield Products Corp., 176 USPQ 422, 422 (TTAB 1973).
2. 37 CFR § 2.120(a)(3). See also Luster Products Inc. v. Van Zandt, 104 USPQ2d 1877, 1879 n.2 (TTAB 2012) (initial disclosures may be served concurrently with discovery requests).
4. 37 CFR § 2.120(a)(3). See National Football League v. DNH Management LLC, 85 USPQ2d 1852 (TTAB 2008) (motion to quash granted where deposition noticed during discovery but scheduled after close of discovery); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978) (discovery may not be taken outside the discovery period); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978) (motion to quash granted where party noticed deposition for a date subsequent to the expiration of the discovery period).
403.03 Time for Service of Discovery Responses
37 CFR § 2.120(a)(3) … Responses to interrogatories, requests for production of documents and things, and requests for admission must be served within thirty days from the date of service of such discovery requests.
Responses to interrogatories, requests for production of documents and things, and requests for admission must be served within thirty days after the date of service of the request for discovery. [ Note 1.] If service of the request for discovery is made by first-class mail, Priority Mail Express®, or overnight courier, the date of mailing or of delivery to the overnight courier is considered to be the date of service, and five extra days are allowed for responding to the request. [ Note 2.] See TBMP § 113.05. If the parties agree to electronic service (e.g., by email, facsimile) the five extra day grace period does not apply. [ Note 3.]
Discovery in proceedings before the Board is not governed by any concept of priority of right to take discovery or depositions. That is, a party which is the first to serve a request for discovery does not thereby gain an absolute right to receive a response to its request before it must respond to its adversary’s subsequently served request for discovery, and this is so even if its adversary fails to respond, or respond completely, to the first party’s request for discovery. Rather, each party is under an obligation to respond to an adversary’s request for discovery during the time allowed therefor under the applicable rules, irrespective of the sequence of requests for discovery, or of an adversary’s failure to respond to a pending request for discovery. [ Note 4.] Thus, in the absence of objections or extensions, a party that is the first to serve discovery requests can be expected to receive responses first, and parties are always encouraged to initiate any necessary discovery early, but because the ability and/or willingness of an adverse party to respond to discovery can vary, there is no guarantee that the first party to serve discovery will be the first party to receive responses.
Because interrogatories, requests for production and requests for admissions may be served until the closing date of discovery, a responding party may not object to such discovery requests on the ground that responses would be due after the close of discovery. [ Note 5.] However, a responding party may serve appropriate objections when timely responding to discovery requests served late in the discovery period, even though well-taken objections may result in the inquiring party not receiving responses. [ Note 6.]
A party which fails to respond to interrogatories or document requests during the time allowed therefor, and which is unable to show that its failure was the result of excusable neglect, may be found, upon motion to compel filed by the propounding party, to have forfeited its right to object to the discovery request on its merits. [ Note 7.] For requests for admissions, a party may either (1) move to reopen its time to respond to the admission requests because its failure to timely respond was the result of excusable neglect under Fed. R. Civ. P. 6(b)(1)(B), or (2) move to withdraw and amend its admissions pursuant to Fed. R. Civ. P. 36(b). [ Note 8.] For a further discussion regarding admission requests, see TBMP § 407. Objections going to the merits of a discovery request include claims that the information sought by the request is irrelevant, overly broad, unduly vague and ambiguous, burdensome and oppressive, or not likely to lead to the discovery of admissible evidence. [ Note 9.] In contrast, objections based on claims of privilege or confidentiality or attorney work product do not go to the merits of the request, but instead to a characteristic of the information sought. [ Note 10.]
NOTES:
1. 37 CFR § 2.120(a)(3); Fed. R. Civ. P. 33(b)(2), 34(b)(2)(A), and 36(a)(3). See Amazon Technologies v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (opposer’s mistaken belief that applicant failed to serve initial disclosures does not excuse opposer’s failure to respond to or properly object to applicant’s interrogatories and document requests); MySpace Inc. v. Donnell Mitchell, 91 USPQ2d 1060, 1061 n.2 (TTAB 2009) (requirement to serve responses by particular date means having service copies in the mail by that date).
2. 37 CFR § 2.119(c). See also Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552, 1554 (TTAB 1987) (period for service of discovery responses was enlarged by five days pursuant to Trademark Rule 2.119(c) as the discovery requests were served by mail).
3. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42250 (August 1, 2007).
4. Fed. R. Civ. P. 26(d); Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1070 (TTAB 1990) (discovery in Board proceeding not governed by any concept of priority of discovery); Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626, 632 (TTAB 1986) (no priority of discovery; "it is not the prerogative . . . for parties or their counsel to unilaterally impose conditions upon the sequence and timing of discovery which are not provided by the rules governing practice before the Board").
6. See Dating DNA, LLC v. Imagini Holdings, Ltd., 94 USPQ2d 1889, 1893 (TTAB 2010) (applicant was not required to inform opposer earlier that it would not be responding to discovery requests based on objection that opposer failed to serve initial disclosures as "this was a function of opposer choosing to serve discovery requests late in the discovery period;" opposer received applicant’s objection two days after discovery closed). See also H.D. Lee Co. v. Maidenform, Inc., 87 USPQ2d 1715, 1720 n.13 (TTAB 2008) (under the Trademark Rule, responses to written discovery may be served after the close of discovery).
7. See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000) (stating that the Board has great discretion in determining whether such forfeiture should be found); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448, 449 (TTAB 1979) (excusable neglect not shown where opposer was out of the country and, upon return, failed to ascertain that responses were due); Crane Co. v. Shimano Industrial Co., 184 USPQ 691, 691 (TTAB 1975) (waived right to object by refusing to respond to interrogatories, claiming that they served "no useful purpose"). See also Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1303 (TTAB 1987) (right to object not waived where although discovery responses were late, there was some confusion regarding time to answer); and MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953 (TTAB 1979) (party seeking discovery is required to make good faith effort to determine why no response has been made before coming to Board with motion to compel).
8. See Giersch v. Scripps Networks, Inc., 85 USPQ2d 1306, 1307 (TTAB 2007) (discussing reopening time to respond to requests for admissions under Fed. R. Civ. P. 6(b)(1)(B) and withdrawal and amendment of admissions under Fed. R. Civ. P. 36(b)). See also Hobie Designs, Inc. v. Fred Hayman Beverly Hills, Inc., 14 USPQ2d 2064, 2065 (TTAB 1990) (amending admissions under Fed. R. Civ. P. 36(b)).
9. See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000).
10. See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000) (party will generally not be found to have waived the right to make these objections).
403.04 Extensions of Discovery Period, Time to Respond to Discovery Requests and Disclosures
37 CFR § 2.120(a)(2) … The discovery period may be extended upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. If a motion for an extension is denied, the discovery period may remain as originally set or as reset.
37 CFR § 2.120(a)(3) ...The time to respond [to interrogatories, requests for production of documents and things, and requests for admission] may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board. The resetting of a party’s time to respond to an outstanding request for discovery will not result in the automatic rescheduling of the discovery and/or testimony periods; such dates will be rescheduled only upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board.
37 CFR § 2.121(a) ... The resetting of the closing date for discovery will result in the rescheduling of pretrial disclosure deadlines and testimony periods without action by any party.
* * * *
37 CFR § 2.121(d) When parties stipulate to the rescheduling of a deadline for pretrial disclosures and subsequent testimony periods or to the rescheduling of the closing date for discovery and the rescheduling of subsequent deadlines for pretrial disclosures and testimony periods, a stipulation presented in the form used in a trial order, signed by the parties, or a motion in said form signed by one party and including a statement that every other party has agreed thereto, shall be submitted to the Board.
The closing date of the discovery period may be extended by stipulation of the parties approved by the Board, or on motion (pursuant to Fed. R. Civ. P. 6(b)) granted by the Board, or by order of the Board. An extension of the closing date for discovery will result in a corresponding resetting of the pretrial disclosure deadlines and testimony periods without action by any party. [ Note 1.] Also, when the parties stipulate to an extension of the closing date for discovery, or a motion for such an extension is granted, or the Board orders such an extension, the Board ordinarily will, as a matter of course, reset the deadline for expert disclosure. However, if the time for serving expert disclosures has passed and it is clear from the record that such expert disclosures have been served or the parties have made it clear that they do not intend to use experts, the Board may not reset the time for expert disclosures. A stipulation or consented motion to extend discovery, pretrial disclosure and trial dates must be filed with the Board and should be presented in the form used in a trial order. [ Note 2.] For information concerning stipulations to extend, see TBMP § 501.03. For information concerning motions to extend, see TBMP § 509.
Mere delay in initiating discovery does not constitute good cause for an extension of the discovery period. [ Note 3.] Thus, a party which waits until the waning days of the discovery period to serve interrogatories, requests for production of documents and things, and/or requests for admission will not be heard to complain, when it receives responses thereto near the end of, or after the close of the discovery period, that it needs an extension or reopening of the discovery period in order to take "follow-up" discovery. [ Note 4.]
At the same time, a party which receives discovery requests early in the discovery period may not, by delaying its response thereto, or by responding improperly so that its adversary is forced to file a motion to compel discovery, deprive its adversary of the opportunity to take "follow-up" discovery. Such a delay or improper response constitutes good cause for an extension of the discovery period. Therefore, the Board will, at the request of the propounding party, extend the discovery period (at least for the propounding party) so as to restore that amount of time which would have remained in the discovery period had the discovery responses been made in a timely and proper fashion. [ Note 5.]
The time for responding to a request for discovery may be extended or reopened by stipulation of the parties, or on motion (pursuant to Fed. R. Civ. P. 6(b)) granted by the Board, or by order of the Board. However, an extension of a party’s time to respond to an outstanding request for discovery will not automatically result in a corresponding extension of the deadline for expert disclosures, close of discovery, or any subsequent deadlines (including pretrial disclosures and the close of the parties’ testimony periods). [ Note 6.] Such periods will be rescheduled only on stipulation of the parties approved by the Board, or on motion granted by the Board, or by order of the Board.
A stipulation to extend or reopen only the time for responding to a request for discovery (that is, a request that does not also seek to extend or reopen the closing date for the discovery period and/or other subsequent deadlines) does not always have to be filed with the Board, but may be required in certain circumstances. If the stipulation to extend or reopen the time for responding to a discovery request interferes with the orderly completion of discovery or the opening of trial, the parties must first obtain Board approval. [ Note 7.] Further, to avoid any misunderstanding between the parties as to the existence and terms of such a stipulation, it is recommended that the stipulation be reduced to writing, even if it is not one which need be filed with the Board.
A party’s time to make initial or expert disclosures may be reset upon a motion granted by the Board, or by order of the Board. The resetting of a party’s time to make initial disclosures (that is, a request that does not also seek to extend or reopen subsequent deadlines) will not result in an automatic rescheduling of the deadline for expert disclosure or of the close of discovery or any subsequent deadlines. Such dates will be rescheduled upon approval of an appropriate stipulation of the parties, or motion of a party, or by order of the Board. However, when the parties stipulate to an extension of the deadline for expert disclosure, or a motion seeking such an extension is granted, or the Board orders such an extension, the Board may extend the closing date of discovery because expert disclosure generally and discovery activities related thereto are expected to occur within the discovery period.
For a discussion regarding modification of disclosure obligations, see TBMP § 401.04.
NOTES:
3. See National Football League v. DNH Management LLC, 85 USPQ2d 1852, 1854-55 (TTAB 2008) (opposers’ motion to extend discovery period denied where opposers did not serve written discovery requests until final day of discovery, and did not attempt to depose applicant during prescribed discovery period, and evidence does not support opposers’ claim that they delayed discovery because parties were engaged in settlement discussions); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987) (no reason given why discovery was not taken during the time allowed).
4. See American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1316 n.4 (TTAB 1992).
5. See Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1070 (TTAB 1990) (Board will, upon motion, reopen or extend discovery solely for benefit of party who was unfairly deprived of follow-up discovery by opponent who wrongfully refused to answer or delayed responses to discovery); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (granting motion to extend time to restore amount of time remaining in discovery to the day when applicant’s interrogatories were served).
6. 37 CFR § 2.120(a) and 37 CFR § 2.121(a). See PolyJohn Enterprises Corp. v. 1-800-TOILETS, Inc., 61 USPQ2d 1860, 1861 (TTAB 2002) (mistaken belief that resetting time to respond to discovery also extended discovery and testimony periods did not constitute excusable neglect to reopen).
7. Fed. R. Civ. P. 29(b). See Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1768 n.2 (TTAB 2008) (written stipulations to extend period to respond to discovery requests need only be filed with the Board when the extension may interfere with the orderly completion of discovery or the opening of trial).
403.05 Need for Early Initiation of Discovery
403.05(a) To Allow Time for "Follow-up" Discovery
If a party wishes to have an opportunity to take "follow-up" discovery after it receives responses to its initial requests for discovery, it must serve its initial requests early in the discovery period, so that when it receives responses thereto, it will have time to prepare and serve additional discovery requests prior to the expiration of the discovery period. See TBMP § 403.04.
403.05(b) To Facilitate Introduction of Produced Documents
37 CFR § 2.120(j)(3)(ii) A party that has obtained documents from another party through disclosure or under Rule 34 of the Federal Rules of Civil Procedure may not make the documents of record by notice of reliance alone, except to the extent that they are admissible by notice of reliance under the provisions of § 2.122(e).
37 CFR § 2.122(e) Printed publications and official records. Printed publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant under an issue in a proceeding, and official records, if the publication or official record is competent evidence and relevant to an issue, may be introduced in evidence by filing a notice of reliance on the material being offered. The notice shall specify the printed publication (including information sufficient to identify the source and the date of the publication) or the official record and the pages to be read; indicate generally the relevance of the material being offered, and be accompanied by the official record or a copy thereof whose authenticity is established under the Federal Rules of Evidence, or by the printed publication or a copy of the relevant portion thereof. A copy of an official record of the [United States]Patent and Trademark Office need not be certified to be offered in evidence. The notice of reliance shall be filed during the testimony period of the party that files the notice.
Documents produced in response to a request for production of documents or through disclosures may not be made of record by notice of reliance alone, except to the extent that the documents are otherwise admissible by notice of reliance, for example, as printed publications or official records under 37 CFR § 2.122(e). However, there are a number of different methods by which documents produced in response to a request for production of documents that do not qualify for submission under 37 CFR § 2.122(e) may be made of record. See TBMP § 704.09 and TBMP § 704.11. The most straightforward way is for the parties to stipulate that any party may introduce by notice of reliance documents produced by any other party, subject only to objections as to relevance and competence, materiality, or weight. [ Note 1.] Three other methods are available for use only if the request for production of documents is served relatively early in the discovery period.
First, if the discovery period has not yet expired, a party that has obtained documents from another party through a request for production of documents or through disclosures may serve on its opponent a request for admission of the genuineness of the subject documents, which should be attached as exhibits to the request for admission. [ Note 2.] Then, during its testimony period, the propounding party may file a notice of reliance, pursuant to 37 CFR § 2.120(j)(3)(i), on the request for admission, the exhibits thereto, and its adversary’s response.
Second, if the discovery period has not yet expired, the party which obtained the documents may make them of record by taking a discovery deposition of its adversary, marking the documents as exhibits thereto, and having the witness identify the documents during the deposition. The propounding party may then submit the deposition and identified exhibits during its testimony period under a notice of reliance. [ Note 3.]
Third, the request for production of documents may be combined with a notice of the taking of the adversary’s discovery deposition; that is, the combined request and notice may ask that the deponent bring the requested documents to his or her deposition. However, a party served with a request for production of documents has thirty days from the date of service of the request in which to respond thereto, plus an extra five days if service of the request was made by first-class mail, Priority Mail Express®, or overnight courier. See TBMP § 403.03. Moreover, in proceedings before the Board, a discovery deposition must be both noticed and taken before the end of the discovery period. See TBMP § 403.02. Thus, a combined notice of deposition and request for production of documents normally must be served at least thirty-five days prior to the close of the discovery period.
For a full discussion of making evidence of record in a Board proceeding, see TBMP Chapter 700.
NOTES:
1.See, See, e.g., ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1353 n.6 (TTAB 2007) (opposer filed notice of reliance on applicant’s response to request for admission and exhibits thereto that all documents it produced in response to opposer’s discovery requests were authentic for purposes of admission into evidence during the testimony period in this opposition proceeding); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103-04 (TTAB 2007) (because respondent availed itself of Fed. R. Civ. P. 33(d) to provide documents in response to petitioner’s interrogatories and admitted via a request for admission that the documents it produced were true and correct copies of authentic documents, the documents could be introduced by way of notice of reliance).
2. Fed. R. Civ. P. 36(a).
3. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1427 n.6 (TTAB 2013).