406    Requests for Production of Documents and Things and Electronically Stored Information

406.01    When Permitted and By Whom

For inter partes proceedings commenced on or after November 1, 2007, a party may serve discovery, including requests for the production of documents and things, on any other party only during the discovery period and provided that the serving party has either previously served or is serving concurrently therewith its initial disclosures, absent a stipulation or a granted motion or upon order of the Board to the contrary. [ Note 1.] TBMP § 403.02. Requests for production may be served through the last day of the discovery period, even though the responses thereto may not be served until after the discovery period has closed. [ Note 2.] TBMP § 403.03 (Time for Service of Discovery Responses). If requests for production are combined with a notice of taking a discovery deposition (i.e., if it is requested that the deponent bring designated documents to the deposition), the requests for production must be served at least 35 days prior to the scheduled date of the deposition if service of the requests for production is made by first-class mail, Priority Mail Express®, or overnight courier, and at least 30 days prior to the deposition if service of the requests for production is made by one of the other methods specified in 37 CFR § 2.119(b). [ Note 3.] TBMP §113.04 (Manner of Service), TBMP § 113.05 (Additional Time for Service by Mail), and TBMP § 403.03 (Time for Service of Discovery Responses).

Requests for production may not be served on a non-party.[ Note 4.] However, if a discovery deposition deponent is a non-party witness residing in the United States, production of designated documents by the witness at the deposition may be obtained by means of a subpoena duces tecum. [ Note 5.] See TBMP § 404.03(a)(2). A subpoena is unnecessary, however, if the non-party witness is willing to produce the documents voluntarily.

Parties seeking to serve document production requests on a natural person residing in a foreign country should be aware that the laws of some foreign countries may serve to preclude such discovery. [ Note 6.] In determining when it is appropriate to impose sanctions for non-compliance with discovery due to a conflict with foreign laws, the following factors are considered: (1) the good faith of the non-complying party; (2) whether the non-complying party would incur foreign criminal liability; and (3) whether alternative sources of information are available. [ Note 7.]

NOTES:

 1.   37 CFR § 2.120(a)(3).

 2.   See Fed. R. Civ. P. 34(a); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978).

 3.   37 CFR § 2.119(c).

 4.   See Fed. R. Civ. P. 34(a).

 5.   35 U.S.C. § 24; Fed. R. Civ. P. 45. But see Dan Foam ApS v. Sleep Innovations Inc., 106 USPQ2d 1939, 1942-43 (TTAB 2013) (discussing notice requirement to adverse party under Fed. R. Civ. P. 45(b)(1) for a subpoena duces tecum (without deposition) issued to non-party and noting that respondent could have sought its own subpoena of the non-party to obtain additional documents and/or a discovery deposition).

 6.   Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197, 200-01 (1958) ( Swiss government ordered Swiss plaintiff in U.S. court proceeding not to produce certain documents).

 7.   Cochran Consulting Inc. v. Uwatec USA Inc.,102 F.3d 1224, 41 USPQ2d 1161, 1163 (Fed. Cir. 1996) (citing Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197 (1958)).

406.02    Scope

Fed. R. Civ. P. 34(a) In General. A party may serve on any other party a request within the scope of Rule 26(b):

  • (1) to produce and permit the requesting party or its representative to inspect, copy, test, or sample the following items in the responding party’s possession, custody, or control:
    • (A) any designated documents or electronically stored information — including writings, drawings, graphs, charts, photographs, sound recordings, images, and other data or data compilations — stored in any medium from which information can be obtained either directly or, if necessary, after translation by the responding party into a reasonably usable form; or
    • (B) any designated tangible things; or
  • (2) to permit entry onto designated land or other property possessed or controlled by the responding party, so that the requesting party may inspect, measure, survey, photograph, test, or sample the property or any designated object or operation on it.

The scope of a request for production, in an inter partes proceeding before the Board, is governed by Fed. R. Civ. P. 34(a), which in turn refers to Fed. R. Civ. P. 26(b). See TBMP § 402 (discussion of scope of discovery permitted under Fed. R. Civ. P. 26(b)).

Generally, a party does not have an obligation to locate documents that are not in its possession, custody or control and produce them during discovery. [ Note 1.] However, a party may not mislead its adversary by stating that it will produce documents and then fail to do so and claim the documents are not in its possession or control. [ Note 2.] A party also is not under an obligation to create or prepare documents that do not already exist in response to a discovery request. [ Note 3.]

Because proceedings before the Board involve only the right to register trademarks, the request for entry upon land for inspection and other purposes is rarely, if ever, used in Board proceedings.

NOTES:

 1.   Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1715 (TTAB 1999), rev’d on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009).

 2.   Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1679 (TTAB 2005).

 3.   8B C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2210 (2014) ("A document or thing is not in the possession, custody, or control of a party if it does not exist. Production cannot be required of a document no longer in existence nor of one yet to be prepared.").

406.03    Elements of Request for Production

Fed. R. Civ. P. 34(b)(1) Contents of the Request. The request:

  • (A) must describe with reasonable particularity each item or category of items to be inspected;
  • (B) must specify a reasonable time, place, and manner for the inspection and for performing the related acts; and
  • (C) may specify the form or forms in which electronically stored information is to be produced.

A request for production must include the elements specified in Fed. R. Civ. P. 34(b)(1)(A)-(B), as set forth above. Fed. R. Civ. P. 34(b)(1)(C) allows but does not require a requesting party to specify in its requests the preferred data format(s) for production of electronically stored information. Parties are expected to discuss the format for production during their mandatory discovery conference. [ Note 1.] For more information regarding discovery conferences, see TBMP § 401.01 and TBMP § 408.01(a).

NOTES:

 1.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 and 42252 (August 1, 2007); 37 CFR § 2.120(a)(2); Fed. R. Civ. P. 26(f). See also Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908 (TTAB 2011) (parties agreed only to the form of their ESI production).

406.04    Responses to Requests for Production

Fed. R. Civ. P. 34(b)(2)(A) Time to Respond. The party to whom the request is directed must respond in writing within 30 days after being served.

  • (B) Responding to Each Item. For each item or category, the response must either state that inspection and related activities will be permitted as requested or state an objection to the request, including the reasons.
  • (C) Objections. An objection to part of a request must specify the part and permit inspection of the rest.
  • (D) Responding to a Request for Production of Electronically Stored Information. The response may state an objection to a requested form for producing electronically stored information. If the responding party objects to a requested form — or if no form was specified in the request — the party must state the form or forms it intends to use.
  • (E) Producing the Documents or Electronically Stored Information. Unless otherwise stipulated or ordered by the court, these procedures apply to producing documents or electronically stored information:
    • (i) A party must produce documents as they are kept in the usual course of business or must organize and label them to correspond to the categories in the request;
    • (ii) If a request does not specify a form for producing electronically stored information, a party must produce it in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms; and
    • (iii) A party need not produce the same electronically stored information in more than one form.

Responses to requests for production should comply with the provisions of Fed. R. Civ. P. 34(b). Documents produced in electronically stored form not kept in the ordinary course of business must be organized and labeled to correspond to the categories in each request. [ Note 1.]

NOTES:

 1.   Fed. R. Civ. P. 34(b)(2)(E). See, e.g., Amazon Technologies, Inc. v. Wax, 95 USPQ2d 1865, 1869 (TTAB 2010) (for documents produced on DVD, opposer ordered to serve a complete index to all 31,144 pages of produced documents, cross-referencing the categories of documents and the discovery requests to which they are responsive, with no category in the index to exceed 300 pages).

406.04(a)    Time for Service of Responses

Fed. R. Civ. P. 34(b)(2)(A) Time to Respond. The party to whom the request is directed must respond in writing within 30 days after being served.

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 requests for production must be served within 30 days after the date of service of the requests, unless otherwise stipulated by the parties or ordered by the Board. [ Note 1.] TBMP § 403.03. If service of the requests 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 requests. [ Note 2.] TBMP § 113.05. In instances where the parties have agreed to electronic service, e.g. facsimile or email, no additional time is allowed for responding to the requests. [ Note 3.] TBMP § 403.03.

A party which fails to respond to requests for production during the time allowed therefor, and which is unable to show that its failure was the result of excusable neglect, may be found, on motion to compel filed by the propounding party, to have forfeited its right to object to the requests on their merits. [ Note 4.] TBMP § 403.03 and TBMP § 405.04(a).

NOTES:

 1.   Fed. R. Civ. P. 34(b)(2)(A); 37 CFR § 2.120(a).

 2.   37 CFR § 2.119(c).

 3.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42250 (August 1, 2007) ("As for agreed use by parties of email or fax for forwarding of service copies, the Office confirms that § 2.119(c) would not apply to service by electronic transmission (email or fax) under § 2.119(b)(6).").

 4.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) (applicant, having waived its right to object to discovery requests on their merits was not entitled to raise objection regarding place of production of documents).

406.04(b)    Place and Form of Production

37 CFR § 2.120(d)(2)  The production of documents and things under the provisions of Rule 34 of the Federal Rules of Civil Procedure will be made at the place where the documents and things are usually kept, or where the parties agree, or where and in the manner which the Trademark Trial and Appeal Board, upon motion, orders.

Fed. R. Civ. P. 34(b)(2)(E) Producing the Documents or Electronically Stored Information. Unless otherwise stipulated or ordered by the court, these procedures apply to producing documents or electronically stored information:

  • (i) A party must produce documents as they are kept in the usual course of business or must organize and label them to correspond to the categories in the request;
  • (ii) If a request does not specify a form for producing electronically stored information, a party must produce it in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms; and
  • (iii) A party need not produce the same electronically stored information in more than one form.

The place of production is governed by 37 CFR § 2.120(d)(2). [ Note 1.] A party is only obliged to make documents and materials available for inspection and copying, where the documents are stored, and as they are kept in the ordinary course of business, [ Note 2.] or as organized and labeled to correspond to the requests. [ Note 3.] However, in Board cases, parties often extend each other the courtesy of producing requested documents by copying the documents and forwarding them to the requesting party at the requesting party’s expense. [ Note 4.] Indeed, the Board believes this is more efficient and thus encourages this method of producing documents. [ Note 5.] Parties are expected to discuss such arrangements in their mandatory discovery conference. [ Note 6.] For more information regarding discovery conferences, see TBMP § 401.01 and TBMP § 408.01(a).

Electronically stored information may be produced in the form specified by the request. If no specification is made, the party must produce the electronically stored information in the form in which it is ordinarily maintained, or in a reasonably usable form. [ Note 7.] Fed. R. Civ. P. 34(a) "requires that, if necessary, a responding party ‘translate’ information it produces into a ‘reasonably usable’ form."[ Note 8.] However, the option to produce in a reasonably usable form does not mean that a responding party is free to convert electronically stored information from the form in which it is maintained to a different form that makes it more difficult or burdensome for the requesting party to use the information efficiently in the litigation. [ Note 9.] A party does not have to produce electronically stored information in more than one format. [ Note 10.] Electronically stored information produced during discovery can be used during depositions to question witnesses and may come in as exhibits thereto.

On motion pursuant to 37 CFR § 2.120(d)(2), the Board may by order specify the place and the manner in which the documents are to be produced, and in situations involving electronically stored information, the form of production. The Board may, for example, order that the responding party photocopy the documents designated in a request and mail the photocopies to the requesting party when the responding party has unreasonably refused to produce documents. [ Note 11.]

NOTES:

 1.   See Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1777 (TTAB 1998); Unicut Corp. v. Unicut, Inc., 220 USPQ 1013, 1015 (TTAB 1983); Georgia-Pacific Corp. v. Great Plains Bag Co., 190 USPQ 193, 195 (TTAB 1976).

 2.   No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).

 3.   Fed. R. Civ. P. 34(b)(2)(E)(i).

 4.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1777 (TTAB 1998).

 5.   . Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008) (most efficient means of making initial disclosures of documents and the option the Board encourages parties to use is to actually exchange copies of disclosed documents rather than merely identifying location).

 6.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 and 42252 (August 1, 2007); 37 CFR § 2.120(a)(2); Fed. R. Civ. P. 26(f).

 7.   Fed. R. Civ. P. 34(b)(2)(E)(ii). See Fed. R. Civ. P. 34 Advisory Committee’s notes (2006 Amendment). Cf. Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908 (TTAB 2011) (where the parties only agreed as to form of production, not as to other aspects such as a protocol for identifying and segregating potentially responsive ESI, applicant cannot insist that opposer start its ESI search and production over).

 8.   Fed. R. Civ. P. 34 Advisory Committee’s notes (2006 Amendment Rule 34, Subdivision (b)).

 9.   Fed. R. Civ. P. 34 Advisory Committee’s notes (2006 Amendment Rule 34, Subdivision (b)).

 10.   Fed. R. Civ. P. 34(b)(2)(E)(iii).

 11.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) (at the responding party’s expense as a discovery sanction); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1778 (TTAB 1998) (at responding party’s expense, as a discovery sanction); Unicut Corp. v. Unicut, Inc., 220 USPQ 1013 (TTAB 1983) (at the requesting party’s expense).

406.04(c)    Nature of Responses

Fed. R. Civ. P. 34(b)(2)(B) Responding to Each Item. For each item or category, the response must either state that inspection and related activities will be permitted as requested or state an objection to the request, including the reasons.

Fed. R. Civ. P. 34(b)(2)(C) Objections. An objection to part of a request must specify the part and permit inspection of the rest.

Fed. R. Civ. P. 34(b)(2)(D) Responding to a Request for Production of Electronically Stored Information. The response may state an objection to a requested form for producing electronically stored information. If the responding party objects to a requested form — or if no form was specified in the request — the party must state the form or forms it intends to use.

A response to a request for production of documents and things must state, with respect to each item or category of documents or things requested to be produced, that inspection and related activities will be permitted as requested, unless the request is objected to, in which case the reasons for objection must be stated. [ Note 1.] For any item or category of documents which is not subject to a stated objection, a proper response should state whether or not there are responsive documents and, if there are responsive documents, whether they will be produced or withheld on a claim of privilege. [ Note 2.] If accurate, a party may respond that the requested documents are not in existence (e.g., lost or destroyed or that the documents are not within its possession, custody, or control). [ Note 3.] If objection is made to only part of an item or category, the part must be specified. A party may object to a requested form of data production for electronically stored information. [ Note 4.] If no form for the electronically stored information is specified in the request, the party must state the form it intends to use. A party that produces documents for inspection must produce them as they are kept in the usual course of business, or must organize and label them to correspond with the categories in the request. [ Note 5.] A party that produces electronically stored information must produce the information in the form specified by the request, if no objection is made. It is contemplated that the parties will attempt to resolve such issues, i.e., the manner in which electronically stored information will be produced, during their discovery conference. [ Note 6.] If no specification is made as to form in the request, a party must produce the electronically stored information in the form in which it is ordinarily maintained, or in a reasonably usable form. [ Note 7.] Aspects of ESI production other than form that should be discussed during the discovery conference, or when it becomes apparent that electronically stored information ("ESI") will be produced, include a protocol for identifying and segregating potentially responsive ESI, who should review the ESI to determine whether the production of particular documents or information would be appropriate, and methods of searching the ESI, such as the use of "keywords," to identify documents and information responsive to the discovery requests. [ Note 8.]

A party withholding responsive documents on the basis of a claim of privilege must "(i) expressly make the claim; and (ii) describe the nature of the documents, communications, or tangible things not produced or disclosed--and do so in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the claim." [ Note 9.]

Fed. R. Civ. P. 26(b)(5) does not specify exactly how the party asserting privilege/protection must particularize its claim. The most common way is by using a privilege log, which identifies each document withheld, information regarding the nature of the privilege/protection claimed, the name of the person making/receiving the communication, the date and place of the communication, and the document’s general subject matter. [ Note 10.]

It is generally inappropriate for a party to respond to requests for production by filing a motion attacking them, such as a motion to strike, a motion to suppress or a motion for a protective order. Rather, the party ordinarily should respond by indicating, with respect to those requests that it believes to be proper, that inspection and related activities will be permitted, and by stating reasons for objection with respect to those requests that it believes to be improper. See TBMP § 410.

For information regarding a party’s duty to supplement responses to requests for production, see TBMP § 408.03.

NOTES:

 1.   Fed. R. Civ. P. 34(b)(2)(B).

 2.   No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).

 3.   Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1679 (TTAB 2005).

 4.   Fed. R. Civ. P. 34(b)(2)(D).

 5.   Fed. R. Civ. P. 34(b)(2)(E)(i); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1556 (TTAB 2000) (party may not simply dump large quantities of documents containing responsive as well as unresponsive documents).

 6.   Fed. R. Civ. P. 26(f)(3)(c). See also Fed. R. Civ. P. 34 Advisory Committee’s note (2006 Amendment Rule 34, Subdivision (b)).

 7.   Fed. R. Civ. P. 34(b)(2)(E)(ii).

 8.   Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1905 (TTAB 2011).

 9.   Fed. R. Civ. P. 26(b)(5)(A)(i)-(ii).

 10.   Fed. R. Civ. P. 26(b)(5) Advisory committee notes (1993 amendment); see Victor Stanley, Inc. v. Creative Pipe, Inc., 250 F.R.D. 251, 264-65 (D. Md. 2008) (discussing form of privilege logs under Fed. R. Civ. P. 26(b)(5)).