704.14 Initial Disclosures and Disclosed Documents
37 CFR § 2.120(j) Initial disclosures and disclosed documents.
- (3)
- (i) A discovery deposition, an answer to an interrogatory, an admission to a request for admission, or a written disclosure (but not a disclosed document), which may be offered in evidence under the provisions of paragraph (j) of this section, may be made of record in the case by filing the deposition or any part thereof with any exhibit to the part that is filed, or a copy of the interrogatory and answer thereto with any exhibit made part of the answer, or a copy of the request for admission and any exhibit thereto and the admission (or a statement that the party from which an admission was requested failed to respond thereto), or a copy of the written disclosure, together with a notice of reliance. The notice of reliance and the material submitted thereunder should be filed during the testimony period of the party that files the notice of reliance. An objection made at a discovery deposition by a party answering a question subject to the objection will be considered at final hearing.
- (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)
- * * * *
- (5) Written disclosures, an answer to an interrogatory, or an admission to a request for admission, may be submitted and made part of the record only by the receiving or inquiring party except that, if fewer than all of the written disclosures, answers to interrogatories, or fewer than all of the admissions, are offered in evidence by the receiving or inquiring party, the disclosing or responding party may introduce under a notice of reliance any other written disclosures, answers to interrogatories, or any other admissions, which should in fairness be considered so as to make not misleading what was offered by the receiving or inquiring party. The notice of reliance filed by the disclosing or responding party must be supported by a written statement explaining why the disclosing or responding party needs to rely upon each of the additional written disclosures or discovery responses listed in the disclosing or responding party’s notice, and absent such statement the Board, in its discretion, may refuse to consider the additional written disclosures or responses.
- (6) Paragraph (j) of this section will not be interpreted to preclude reading or use of written disclosures or documents, a discovery deposition, or answer to an interrogatory, or admission as part of the examination or cross-examination of any witness during the testimony period of any party.
- (7) When a written disclosure, a discovery deposition, or a part thereof, or an answer to an interrogatory, or an admission, has been made of record by one party in accordance with the provisions of paragraph (j)(3) of this section, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.
- (8) Written disclosures or disclosed documents, requests for discovery, responses thereto, and materials or depositions obtained through the disclosure or discovery process should not be filed with the Board, except when submitted with a motion relating to disclosure or discovery, or in support of or in response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party’s testimony period.
A written disclosure (but not a disclosed document), which may be offered in evidence under 37 CFR § 2.120(j) may be made of record by filing a copy of the written disclosure with a notice of reliance. [ Note 1.] The notice of reliance and the material submitted should be filed during the testimony period of the party that files the notice of reliance. [ Note 2.]
Disclosed documents, if provided in lieu of descriptions of documents, may be introduced at trial by a notice of reliance but only if otherwise appropriate for such filing pursuant to 37 CFR § 2.122(e). [ Note 3.] See TBMP § 704.07 and TBMP § 704.08. In essence, initial written disclosures and initial disclosures of documents will be treated like responses to written discovery requests. [ Note 4.]
Written disclosures may be submitted and made part of the record only by the receiving or inquiring party except that, if fewer than all of the written disclosures are offered in evidence by the receiving or inquiring party, the disclosing or responding party may introduce under a notice of reliance any other written disclosures which should in fairness be considered so as to make not misleading what was offered by the receiving or inquiring party. The notice of reliance filed by the disclosing or responding party must be supported by a written statement explaining why the disclosing or responding party needs to rely upon each of the additional written disclosures or discovery responses listed in the disclosing or responding party’s notice, and absent such statement the Board, in its discretion, may refuse to consider the additional written disclosures or responses. [ Note 5.]
The Board will not interpret 37 CFR § 2.120(j) to preclude the reading or use of written disclosures or documents as part of the examination or cross-examination of any witness during the testimony period of any party. [ Note 6.]
When a written disclosure or a part thereof has been made of record by one party in accordance with the provisions of 37 CFR § 2.120(j)(3), it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. [ Note 7.]
Written disclosures or disclosed documents should not be filed with the Board, except when submitted with a motion relating to disclosure or discovery, or in support of or in response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party’s testimony period. [ Note 8.]
NOTES:
1. 37 CFR § 2.120(j)(3)(i). See Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1956 (TTAB 2008); Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1117 (TTAB 2005).
4. Notice of Final Rulemaking, MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See Kairos Institute. of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008).
8. 37 CFR § 2.120(j)(8). See Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1542 n.3 (TTAB 2008).