702.01 Pretrial Disclosures
Pretrial disclosures are governed by Fed. R. Civ. P. 26(a)(3) with one exception: the Board does not require pretrial disclosure of each document or other exhibit that a party plans to introduce at trial as provided by Fed. R. Civ. P. 26(a)(3)(A)(iii). [ Note 1.] Disclosures allow parties to know prior to trial the identity of trial witnesses, thus avoiding surprise witnesses. [ Note 2.]
Because the trial schedule in a Board proceeding employs alternating testimony periods with gaps between them, the due dates for pretrial disclosures will be different for each party and will be specified in the Board’s notice instituting the proceeding. [ Note 3.] Under 37 CFR § 2.121(e), the party scheduled to present evidence must make pretrial disclosures no later than fifteen days prior to the opening of each testimony period, or on such alternate schedule as may be provided by order of the Board. Witnesses who are expected to or may testify by affidavit, in accordance with a written stipulation of the parties under 37 CFR § 2.123(b), must be disclosed under Fed. R. Civ. P. 26(a)(3)(A) along with disclosure of witnesses who are expected to or may testify by giving oral testimony. [ Note 4.]
In making its pretrial disclosures, the party must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises. [ Note 5.] The party must disclose general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness. [ Note 6.]
Pretrial disclosure of a witness under 37 CFR § 2.121(e) does not substitute for issuance of a proper notice of examination under 37 CFR § 2.123(c) or 37 CFR § 2.124(b). [ Note 7.]
If a party does not plan to take testimony from any witnesses, it must so state in its pretrial disclosure. [ Note 8.]
When a party fails to make required pretrial disclosures, any adverse party or parties may have remedy by way of a motion to the Board to delay or reset any subsequent pretrial disclosure deadlines and/or testimony periods. [ Note 9.]
A party may object to improper or inadequate pretrial disclosures and may move to strike the testimony of a witness for lack of proper pretrial disclosure. [ Note 10.] The pretrial disclosure requirement cannot simply be ignored because some information about a testifying individual may be known by the adverse party or parties. [ Note 11.]
A party need not disclose, prior to its testimony period, any notices of reliance it intends to file during its testimony period. Thus, each document or other exhibit that a party plans to introduce at trial does not need to be disclosed to the other party. [ Note 12.] A party planning to introduce an adverse party’s discovery deposition, or part thereof, need not disclose such plans. [ Note 13.]
If pretrial disclosures or the notice of examination of witnesses served pursuant to 37 CFR § 2.123(c) are improper or inadequate with respect to any witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances. [ Note 14.] A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with 37 CFR § 2.121(e). [ Note 15.]
If the deficiencies in the pretrial disclosure are technical in nature the parties are encouraged to resolve the matter between themselves or to bring the matter to the Board's attention promptly for resolution for judicial economy and before the parties incur the expense associated with taking a testimonial deposition. The Board often allows parties to cure timely, but technically deficient matters. [ Note 16.]
A party making a pretrial disclosure is not required to file routinely a copy of such disclosure with the Board. In this regard, the Board's practice varies slightly from that set forth in Fed. R. Civ. P. 26(a)(3)(A). Alerting the Board to a party's witness list is not a purpose of the pretrial disclosure requirement as the Board does not preside at the taking of testimony or at a pretrial conference. [ Note 17.]
For information on pretrial disclosure of expert witnesses, see TBMP § 401.03.
NOTES:
1. See 37 CFR § 2.121(e); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).
2. See Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015) (both parties are required to serve initial disclosures identifying witnesses having discoverable information and to serve pretrial disclosures naming the witnesses expected to testify at trial); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as confidential), on appeal, No. 14-CV-4463 (D. Minn.); Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372 (TTAB 2011); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009) (citing MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42257-58 (August 1, 2007)). See also Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (witness first identified in pretrial disclosure and not previously identified in initial disclosures, discovery responses or supplements resulted in unfair surprise and was neither harmless nor substantially justified); Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011) (failure to identify witnesses during discovery but named in pretrial disclosures resulted in unfair surprise to adversary).
3. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).
4. See 37 CFR § 2.121(e); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007); Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015); Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371-72 n.1 (TTAB 2011) ("A party is expected to disclose all witnesses it expects to call as well as those that it may call if the need arises").
5. 37 CFR § 2.121(e). See Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371 (TTAB 2011) (pretrial disclosure adequate and sufficient); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444-45 (TTAB 2009) (under Trademark Rules, petitioner is required to name any witnesses from whom it intended to take testimony, or even might take testimony, if needed; 37 CFR § 2.121(e) contemplates that contact information of a witness may previously have been provided to the party receiving a disclosure and need not be repeated).
6. 37 CFR § 2.121(e). See Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371 (TTAB 2011) (pretrial disclosure adequate and sufficient).
10. See 37 CFR § 2.123(e)(3). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as confidential), on appeal, No. 14-CV-4463 (D. Minn.); Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 n.4 (TTAB 2011).
11. See Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009).
12. See 37 CFR § 2.118; MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).
13. See 37 CFR § 2.118; MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42247 (August 1, 2007) (Fed. R. Civ. P. 26(a)(3)(B), which discusses objections to the use under Fed. R. Civ. P. 32(a) of a deposition designated by another party under Fed. R. Civ. P. 26(a)(3)(A)(ii), does not apply to the situation where a party plans to introduce an adverse party’s discovery deposition, or part thereof).
14. See Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 n.4 (TTAB 2011).
15. 37 CFR § 2.123(e)(3). See Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as confidential), on appeal, No. 14-CV-4463 (D. Minn.); Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327-28 (TTAB 2011) (Opposer's failure to name one witness until original pretrial closures and twenty-six witnesses until supplement to amended pretrial disclosures was neither harmless nor substantially justified and motion to quash granted as to twenty-six witnesses but testimony of one witness, identified months before in original pretrial disclosure, not excluded provided adverse party be given an opportunity to take a discovery deposition); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009) (failure to disclose testimony witness in initial disclosures considered as a relevant circumstance in determining whether to strike testimony deposition).
16. See Carl Karcher Enterprise, Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 n.4 (TTAB 2011). Cf. Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011) (applicant could not cure surprise without moving to quash, or seeking to reopen discovery, or engaging in unplanned preparation to cross examine witnesses identified for the first time in pretrial disclosures).
17. See Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 (TTAB 2011).