704.10    Interrogatory Answers; Admissions

37 CFR § 2.120(j)  

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  • (3)
    • (i) A discovery deposition, an answer to an interrogatory, or 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 which 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.
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  • (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 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.

Ordinarily, an answer to an interrogatory, or an admission to a request for admission, may be submitted and made part of the record by only the inquiring party. [ Note 1.] See TBMP § 401 and TBMP § 704.14 for further information concerning disclosures.

However, if fewer than all of the answers to a set of interrogatories, or fewer than all of the admissions, are offered in evidence by the inquiring party, the responding party may introduce, under a notice of reliance, any other answers to interrogatories, or any other admissions that should be considered so as to avoid an unfair interpretation of the responses offered by the inquiring party. [ Note 2.] The notice of reliance must be supported by a written statement explaining why the responding party needs to rely on each of the additional interrogatory answers, or admissions, listed in the responding party's notice, failing which the Board, in its discretion, may refuse to consider the additional responses. [ Note 3.]

An interrogatory answer (including documents provided as all or part of an interrogatory answer under Fed. R. Civ. P. 33), or an admission to a request for admission, [ Note 4.], that may be offered in evidence under 37 CFR § 2.120(j)  may be made of record by notice of reliance during the testimony period of the offering party. The party should file a copy of the interrogatory and the 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), together with its notice of reliance thereon. [ Note 5.]

The notice of reliance need not indicate the relevance of the discovery responses relied on. [ Note 6.] Interrogatory answers, or admissions, may be admitted into evidence through the testimony deposition of a witness as an alternative to the notice of reliance procedure. [ Note 7.]

An interrogatory answer may also be made of record by stipulation of the parties, accompanied by a copy of the interrogatory and the answer thereto with any exhibit made part of the answer. Similarly, an admission may be made of record by stipulation of the parties, accompanied by 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). [ Note 8.]

When an interrogatory answer, or an admission, has been made of record by one party in accordance with 37 CFR § 2.120(j), it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. [ Note 9.]

An interrogatory answer, or an admission, not properly offered in evidence under 37 CFR § 2.120(j)  may nevertheless be considered by the Board if the nonoffering party (parties) does not object thereto; and/or treats the answer, or admission, as being of record; and/or improperly offers an interrogatory answer, or an admission, in the same manner. [ Note 10.]

Written disclosures, 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 (1) with a motion relating to disclosure or discovery; or (2) in support of or response to a motion for summary judgment; or (3) under a notice of reliance during a party's testimony period; or (4) as exhibits to a testimony deposition; or (5) in support of an objection to proffered evidence on the ground that the evidence should have been, but was not, provided in response to a request for discovery. [ Note 11.] Please Note: Unlike documents that are provided as all or part of an interrogatory answer under Fed. R. Civ. P. 33, documents that are produced in response to a document request cannot be made of record under a notice of reliance unless they are otherwise eligible for submission under a notice of reliance, e.g., because they are printed publications or were provided in connection with a response to an interrogatory. See TBMP § 704.08 and TBMP § 704.11

Nothing in 37 CFR § 2.120(j)  precludes reading or using an interrogatory answer, or an admission, as part of the examination or cross-examination of any witness during the testimony period of any party. [ Note 12.]

Denials to admission requests cannot be submitted under notice of reliance. [ Note 13.] "[U]nlike an admission (or a failure to respond which constitutes an admission), the denial of a request for admission establishes neither the truth nor the falsity of the assertion, but rather leaves the matter for proof at trial. Cf. Fed. R. Civ. P. 36(b)." [ Note 14.]

Although parties are obliged to supplement their discovery responses under Fed. R. Civ. P. 26(e)(1), supplemental discovery materials served upon an adversary during trial cannot be made of record unless such materials fall under an exception in 37 CFR §  2.120 (j) (8). [ Note 15.]

For information concerning the taking of discovery by way of interrogatories, see TBMP § 405. For information concerning the taking of discovery by way of requests for admission and for the effect of not responding to a request for admission, see TBMP § 407. For information concerning the raising of objections to notices of reliance and materials filed thereunder, see TBMP § 532 and TBMP § 707.02.

Please Note: Some of the cases cited in this section established principles later codified in the cited provisions in current 37 CFR § 2.120(j), or were decided under rules which were the predecessors to such provisions.

NOTES:

 1.   37 CFR § 2.120(j)(5). See Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1217 (TTAB 2011) (defendant's responses to plaintiff's interrogatories and document requests, but not produced documents); Triumph Machinery Co. v. Kentmaster Manufacturing Co., 1 USPQ2d 1826, 1827 n.3 (TTAB 1987); Wilderness Group, Inc. v. Western Recreational Vehicles, Inc., 222 USPQ 1012, 1015 n.7 (TTAB 1984); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.8 (TTAB 1982); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949, 950 (TTAB 1981).

See also Safeway Stores, Inc. v. Captn's Pick, Inc., 203 USPQ 1025, 1027 n.1 (TTAB 1979); Jerrold Electronics Corp. v. Magnavox Co., 199 USPQ 751, 753 n.4 (TTAB 1978; Cities Service Co. v. WMF of America, Inc., 199 USPQ 493, 495 n.4 (TTAB 1978); General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690, 692 n.6 (TTAB 1977) ; Hovnanian Enterprises, Inc. v. Covered Bridge Estates, Inc., 195 USPQ 658, 660 n.2 (TTAB 1977); A. H. Robins Co. v. Evsco Pharmaceutical Corp., 190 USPQ 340 (TTAB 1976); W. R. Grace & Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308, 309 n.6 (TTAB 1976) ; Beecham Inc. v. Helene Curtis Industries, Inc., 189 USPQ 647, 647 (TTAB 1976).

 2.37   37 CFR §  2.120 (j)(5). See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476-77 (TTAB 2014) (concurrent-use defendant's objection to plaintiff's submission of initial answer to interrogatory with notice of reliance, on ground that answer did not include defendant's supplemental response, is overruled, since 37 CFR § 2.120(j)(5)  provides in relevant part that inquiring party may make answer to interrogatory of record by notice of reliance, and that, if fewer than all answers to interrogatories are offered in evidence, responding party may introduce, under notice of reliance, any other answers to interrogatories which should in fairness be considered so as to render inquiring party's submission not misleading, and since defendant remedied any perceived unfairness by submitting supplemental answer and documents it produced under Fed. R. Civ. P. 33(d)); Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842, 1844 n.5 (TTAB 1988). Cf. Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1218 (TTAB 2011) (plaintiff introduced its responses to defendant's interrogatories by notice of reliance which were considered only to the extent that defendant submitted the non-confidential portions of plaintiff's responses through its own notice of reliance).

 3.   37 CFR § 2.120(j)(5). See Hiraga v. Arena, 90 USPQ2d 1102, 1105 (TTAB 2009) (additional interrogatory responses by answering party not considered because he did not include explanation as to why he needed to rely on each additional discovery response, and not obvious in what way they avoided any unfairness from what propounding party submitted); Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125, 1128 n.4 (TTAB 1995) (notice of reliance on responses stricken since responses did not clarify answers relied on by inquiring party); Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842, 1844 n.5 (TTAB 1988) (TTAB 1988) (answering party is expected to select only the relevant answers and to inform the Board of the relationship of that answer to those offered by propounding party); Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1719 n.4 (TTAB 1987) (other answers may be introduced to clarify, rebut or explain responses relied on by inquiring party; opposer failed to indicate the relevance of its interrogatory responses to rebut those relied on by applicant); Board of Trustees of the University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408, 409 n.3 (TTAB 1986) (broad statement by answering party that without the additional responses the selected responses would be misleading is insufficient); Packaging Industries Group, Inc. v. Great American Marketing, Inc., 227 USPQ 734, 734 n.3 (TTAB 1985) (applicant did not introduce the additional responses referred to in its brief by notice of reliance); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949, 950 (TTAB 1981) (answering party may not simply rely on all remaining answers and expect Board to determine which, if any, answers require explanation or clarification); Beecham Inc. v. Helene Curtis Industries, Inc., 189 USPQ 647, 647 (TTAB 1976).

 4.   Cf. Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008) (denials of requests for admission not admissible; the denial of a request for admission establishes neither the truth nor the falsity of the assertion, but rather leaves the matter for proof at trial).

 5.   37 CFR § 2.120(j)(3)(i). See B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1503 (TTAB 2007) (catalog produced in lieu of interrogatory response can be made of record through notice of reliance on interrogatory response); BASF Wyandotte Corp. v. Polychrome Corp., 586 F.2d 238, 200 USPQ 20, 21 (CCPA 1978); M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB 1990) (notice of reliance must specify and be accompanied by the interrogatory to which each document was provided in lieu of an answer); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1447 n.9 (TTAB 1986) (documents provided in lieu of interrogatory answer admissible by notice of reliance); May Department Stores Co. v. Prince, 200 USPQ 803, 805 n.1 (TTAB 1978) (notice of reliance filed after close of testimony period untimely); Bausch & Lomb Inc. v. Gentex Corp., 200 USPQ 117, 119 n.2 (TTAB 1978) (neither party filed notice of reliance on the other party's interrogatories and therefore not of record).

See also E. I. du Pont de Nemours & Co. v. G. C. Murphy Co., 199 USPQ 807, 808 n.2 (TTAB 1978); Miss Nude Florida, Inc. v. Drost, 193 USPQ 729, 731 (TTAB 1976), pet. to Comm'r denied, 198 USPQ 485 (Comm'r 1977); Hollister Inc. v. Ident A Pet, Inc., 193 USPQ 439, 440 n.2 (TTAB 1976); Plus Products v. Don Hall Laboratories, 191 USPQ 584, 585 n.2 (TTAB 1976); A. H. Robins Co. v. Evsco Pharmaceutical Corp., 190 USPQ 340, 341 n.3 (TTAB 1976).

Cf. Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984) (applicant's notice of reliance on responses which were already made of record by opposer was superfluous).

 6.   See 37 CFR § 2.120(j)(3)(i); Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881, 883 (TTAB 1979) (not required to set forth the relevance of interrogatory answers).

 7.   See Lacoste Alligator S.A. v. Everlast World's Boxing Headquarters Corp., 204 USPQ 945, 947 (TTAB 1979).

 8.   See Wilderness Group, Inc. v. Western Recreational Vehicles, Inc., 222 USPQ 1012, 1015 n.7 (TTAB 1984) (although parties stipulated that certain interrogatory answers were part of evidentiary record, because copies of the interrogatories and answers were never submitted to the Board, they could not be considered). See also Jerrold Electronics Corp. v. Magnavox Co., 199 USPQ 751, 753 n.4 (TTAB 1978); General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690, 692 n.5 (TTAB 1977). Cf. Wella Corp. v. California Concept Corp., 192 USPQ 158, 160 n.4 (TTAB 1976) (supplemental answers to interrogatories were not covered by the stipulation), rev'd on other grounds, 558 F.2d 1019, 194 USPQ 419 (CCPA 1977).

 9.   37 CFR § 2.120(j)(7). See Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984) (applicant's notice of reliance on matter already made of record by opposer is superfluous). See also American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1025 (TTAB 2011) (objection based on failure to indicate relevance to applicant's notice of reliance sustained, but applicant may rely on copy of record by opposer' deposition); Henry Siegel Co. v. M & R International Manufacturing Co., 4 USPQ2d 1154, 1155 n.5 (TTAB 1987); Beecham Inc. v. Helene Curtis Industries, Inc., 189 USPQ 647, 647 (TTAB 1976) (where party relies on all of adversary’s answers to interrogatories, the adversary need not file its own notice of reliance thereon).

 10.   See, e.g., L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1435 n.3 (TTAB 2012) (opposer did not object to applicant’s improper introduction of applicant’s responses to interrogatories and requests for admission but instead treated as matter as being of record); Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1848 n.6 (TTAB 2008) (because the parties stipulated to the use of discovery depositions as evidence, petitioner did not object to respondent's reliance on respondent's answers to petitioner's written discovery, and the discovery responses were used as exhibits during depositions, respondent’s discovery responses considered as having been properly made of record); Riceland Foods Inc. v. Pacific Eastern Trading Corp., 26 USPQ2d 1883, 1884 n.3 (TTAB 1993) (no objection to party's reliance on its own answers and moreover the responses set forth facts which were described in the parties' stipulation); Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842, 1844 n.5 (TTAB 1988) (no objection to responding party's notice of reliance on remaining answers and such answers were deemed as explanatory or clarifying); Triumph Machinery Co. v. Kentmaster Manufacturing Co., 1 USPQ2d 1826, 1827 n.3 (TTAB 1987) (no objection to party's reliance on its own answers); Board of Trustees of the University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408, 409 n.3 (TTAB 1986) (objection which was raised for first time in brief waived since defect of failing to explain why the additional responses were necessary could have been cured); Plus Products v. Natural Organics, Inc., 204 USPQ 773, 775 n.4 (TTAB 1979) (no objection to untimely notice of reliance or to failure to submit copies of the discovery requests or responses thereto); Safeway Stores, Inc. v. Captn's Pick, Inc., 203 USPQ 1025, 1027 n.1 (TTAB 1979) (no objection by either party to the other's improper reliance on its own answers; opposer did not object to interrogatories introduced by applicant and in fact referred to answers to other of opposer's interrogatories without benefit of notice of reliance); Pamex Foods, Inc. v. Clover Club Foods Co., 201 USPQ 308, 310 n.3 (TTAB 1978) (discovery depositions filed without a notice of reliance were treated as being of record where both parties referred to the depositions in their briefs and in view of stipulations concerning marking of exhibits in the depositions); Jerrold Electronics Corp. v. Magnavox Co., 199 USPQ 751, 753 n.4 (TTAB 1978) (both parties relied on answers given by each to the other's interrogatories without objection); General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690, 692 n.5 (TTAB 1977) (same); Plus Products v. Don Hall Laboratories, 191 USPQ 584, 585 n.2 (TTAB 1976) (neither party objected to improper notice of reliance by the other and each relied on the contents of the other's notice of reliance); Plus Products v. Sterling Food Co., 188 USPQ 586, 587 n.2 (TTAB 1975) (applicant did not file required notice of reliance on opposer's answers but both parties referred to the answers in their briefs).

Cf. Hiraga v. Arena, 90 USPQ2d 1102, 1106 (TTAB 2009) (additional interrogatory answers not considered because non-offering party timely objected and never treated interrogatory answers as being of record).

 11.   37 CFR § 2.120(j)(8).

 12.   37 CFR § 2.120(j)(6). See West End Brewing Co. of Utica, N.Y. v. South Australian Brewing Co., 2 USPQ2d 1306, 1308 n.3 (TTAB 1987) (use of interrogatory answers to refresh memory of witness and testifying as to veracity of interrogatory answers permitted). Cf. Steiger Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 169-70 (TTAB 1984) (reading answers into record when witness was present at deposition inadmissible because no written copy given to refresh witness’s memory), different results reached on reh'g, 3 USPQ2d 1708 (TTAB 1984).

 13.   37 CFR §  2.120 (j)(3)(i)  See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1477 (TTAB 2014) (concurrent use defendant’s objection to submission of denial to admission request sustained; "rule does not extend to denials"); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1957 (TTAB 2008) (denials to requests for admission inadmissible).

 14.   Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008).

 15.   Joel Gott Wines LLC v. Rehobeth Von Gott, Inc., 107 USPQ2d 1424, 1427-28 (TTAB 2013) ("It is true that Fed. R. Civ. P. 26(e)(1) charges parties with a duty to supplement their discovery responses. But this does not make whatever supplemental material is produced of record in the case.").