408.01(c)    Duty to Cooperate With Regard to Written Discovery and Disclosures

Fed. R. Civ. P. 26(g)(1) Signature Required; Effect of Signature. …By signing, an attorney or party certifies that to the best of the person’s knowledge, information, and belief formed after a reasonable inquiry:

  • (A) with respect to a disclosure, it is complete and correct as of the time it is made; and
  • (B) with respect to a discovery request, response, or objection, it is:
    • (i) consistent with these rules and warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law, or for establishing new law;
    • (ii) not interposed for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation; and
    • (iii) neither unreasonable nor unduly burdensome or expensive, considering the needs of the case, prior discovery in the case, the amount in controversy, and the importance of the issues at stake in the action.

37 CFR § 2.120(e)(1) A motion to compel initial disclosures, expert testimony disclosures, or discovery must be supported by a written statement from the moving party that such party or the attorney therefor has made a good faith effort, by conference or correspondence, to resolve with the other party or the attorney therefore the issues presented in the motion but the parties were unable to resolve their differences.

The signature of a party or attorney constitutes a certification as to a discovery request, response or objection and disclosure as set forth in Fed. R. Civ. P. 26(g)(1). [ Note 1.] Provision is made, in Fed. R. Civ. P. 26(g), for the imposition of appropriate sanctions if a certification is made in violation of the rule. See also TBMP § 106.02 (Signature of Submissions). "The certification duty requires the party or attorney to make a reasonable inquiry into the factual basis of his response, request or objection." [ Note 2.]

Because the signature of a party or its attorney to a request for discovery constitutes a certification by the party or its attorney that, inter alia, the request is warranted, consistent with the Federal Rules of Civil Procedure, and not unreasonable or unduly burdensome, a party ordinarily will not be heard to contend that a request for discovery is proper when propounded by the party itself but improper when propounded by its adversary. A contention of this nature will be entertained only if it is supported by a persuasive showing of reasons why the discovery request is proper when propounded by one party but improper when propounded by another. [ Note 3.] Similarly, the signature of a party or its attorney to a discovery response (i.e., response to interrogatory, request to admit, or request for production) or objection is a certification by the party or its attorney that, inter alia, the response or objection is warranted, consistent with the Federal Rules of Civil Procedure, and not interposed for any improper purpose such as to cause unnecessary delay or needlessly increase the cost of litigation. The certification requirement is distinguishable from the signature requirements in rules such as Fed. R. Civ. P. 33 [ Note 4.] and certifies that the party or lawyer has made a reasonable effort to assure that all available information and documents responsive to the discovery demand have been provided. [ Note 5.]

Under Fed. R. Civ. P. 26(g)(1)(A), a signature with respect to a disclosure constitutes certification that the disclosure is complete and correct at the time it was made. For further information regarding the form and signatures of disclosures, see TBMP § 401.06.

In addition, the duty to cooperate is embodied in the prerequisite that prior to filing a motion to compel disclosure or discovery, the moving party must make a good faith effort, by conference or correspondence, to resolve the discovery dispute prior to seeking Board intervention. [ Note 6.] See also TBMP § 523.02. The motion must be supported by a written statement showing that such a good faith effort was made. [ Note 7.] The Board may, as necessary in any particular case, ensure that the parties have engaged in a sufficient effort to resolve their differences regarding discovery by requiring the parties to conference with the Board attorney assigned to the case prior to filing a motion to compel disclosures or discovery. See TBMP § 413.01.

NOTES:

 1.   See Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990). Cf. 37 CFR § 11.18(b); Fed. R. Civ. P. 11.

 2.   Fed. R. Civ. P. 26 Advisory Committee’s notes (1983 Amendment Rule 26, Subdivision (g)).

 3.   See, e.g.,Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) (Board was persuaded that certain interrogatories would be unduly burdensome).

 4.   Fed. R. Civ. P. 26 Advisory Committee’s notes (1983 Amendment Rule 26, Subdivision (g)).

 5.   Fed. R. Civ. P. 26 Advisory Committee’s notes (1983 Amendment Rule 26, Subdivision (g)).

 6.   37 CFR § 2.120(e). See, e.g., Hot Tamale Mama…and More, LLC v. SF Investments., Inc., 110 USPQ2d 1080, 1082 (TTAB 2014) (Board found that single email exchange alone was insufficient to satisfy the good faith effort obligation to resolve discovery dispute prior to filing motion to compel); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (parties expected to cooperate in the meet and confer process by presenting to each other the merits of their respective postions with candor, specificity and support).

 7.   37 CFR § 2.120(e). See Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 (TTAB 2014) (statement of good faith effort to be supported by recitation of communications conducted including dates, summary of telephone conversations and copies of correspondence exchanged, where applicable). Cf. International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1605 (TTAB 2002) (permission to file motion to compel denied where motion was devoid of good faith effort to resolve dispute prior to seeking Board intervention).