408.01(a) Obligation to Conduct Discovery Conference
In the interest of promoting among other things, cooperation in the discovery process, parties involved in inter partes proceedings commenced on or after November 1, 2007, are required to hold a conference to discuss settlement and plans for discovery. [ Note 1.] The purpose of the conference for the parties is to discuss the "nature and basis of the involved claims and defenses, the possibility of settlement of the case or modification of the pleadings, and plans for disclosures and discovery," as well as the subjects set forth in Fed. R. Civ. P. 26(f) and any other subjects that the Board requires to be discussed in the institution order for the case, including alternative means for case resolution such as Accelerated Case Resolution (ACR). [ Note 2.] See TBMP § 528.05(a)(2) and TBMP § 702.04 for further information on ACR. The parties are free to discuss additional topics besides those outlined in Fed. R. Civ. P 26(f) and the institution order that could promote settlement or efficient adjudication of the Board proceeding. [ Note 3.] Mere discussion of settlement does not substitute for a full discovery conference addressing the issues outlined in Fed. R. Civ. P. 26 and the Board’s institution order. [ Note 4.] Thus, the parties are required to discuss their plans relating to disclosures, discovery and trial evidence unless they are successful in settling the case.
All parties to a proceeding have a duty to cooperate and conduct the discovery conference in a timely fashion. [ Note 5.] If a party refuses to cooperate in scheduling the discovery conference, it is recommended that the party seeking to schedule the conference contact the assigned Board attorney via telephone to facilitate the matter prior to the deadline for the conference. [ Note 6.] In such instances, the Board professional will contact the non-cooperating party directly to schedule the conference. If the uncooperative party fails to respond to Board communications within a reasonable time frame, the Board will issue an order setting a date for the conference, and warning the uncooperative party that the conference will be held as scheduled, and that any party that has not participated may be subject to a motion for sanctions under 37 CFR § 2.120(g). In certain instances, the Board may also order the uncooperative party to show cause why judgment should not be entered against it for failure to participate in the discovery conference. Alternatively, in instances where the party seeking to schedule the conference did not engage the Board, the party may file a motion for sanctions pursuant to 37 CFR § 2.120(g). The Board may, upon grant of a motion for sanctions for failure of a party to participate in a discovery conference, impose any of the sanctions provided in Fed. R. Civ. P. 37(b)(2), including judgment. [ Note 7.] A motion to compel a party to participate in a discovery conference is not a prerequisite to filing a motion for sanctions under 37 CFR § 2.120(g) because of an adverse party’s unwillingness to participate in the required conference; however, the moving party must provide evidence of a good faith effort to schedule the conference in order to be able to prevail on a motion for such sanctions. [ Note 8.]
For a more detailed discussion of discovery conferences, see TBMP § 401.01.
For general information on the conduct of telephone conferences, participation in telephone conferences, and issuance of rulings resulting from telephone conferences, see TBMP § 502.06(a).
NOTES:
1. See 37 CFR § 2.120(a)(2); Fed. R. Civ. P. 26(f). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007). See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (TTAB 2009).
2. See, e.g., Promgirl, Inc. v. JPC Co. , 94 USPQ2d 1759, 1761 (TTAB 2009).
3. See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (TTAB 2009).
4. See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (TTAB 2009) (mere discussion of settlement does not substitute for full discovery conference of subjects set forth in Fed. R. Civ. P. 26 and Board’s institution order).
5. See, e.g., Promgirl, Inc. v. JPC Co.,94 USPQ2d 1759, 1762 (TTAB 2009) (responsibility to schedule a conference and to confer on each of the topics outlined in Fed. R. Civ. P. 26 and the institution order is a shared responsibility); Guthy-Renker Corp. v. Michael Boyd, 88 USPQ2d 1701, 1703 (TTAB 2008) ("it is the equal responsibility of both parties to ensure that the discovery conference takes place by the assigned deadline"); Influance Inc. v. Zuker, 88 USPQ2d 1859, 1860 n.2 (TTAB 2008) (holding discovery conference is a mutual obligation).
6. See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009).
8. See, e.g., Promgirl, Inc., v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009) (opposer’s motion for sanctions in the form of judgment denied where parties were engaged in settlement discussions and opposer did not broach the subject of scheduling the discovery conference until the deadline date, and only after opposer’s settlement offer was rejected); Guthy-Renker Corp. v. Michael Boyd, 88 USPQ2d 1701, 1704 (TTAB 2008) (motion for sanctions denied; moving party could have made additional efforts with adverse party to schedule discovery conference, including requesting Board participation in the discovery conference, but failed to do so).