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).