407 Requests for Admissions
407.01 When Permitted and By Whom
For cases commenced on or after November 1, 2007, like interrogatories and requests for production of documents, absent a stipulation or granted motion or order of the Board to the contrary, requests for admission may be served on an adversary after service of or contemporaneously with initial disclosures, through the last day of the discovery period, even though the answers thereto will not be due until after the discovery period has closed. TBMP § 403.01 and TBMP § 403.02. During the discovery period in an inter partes proceeding before the Board, any party may serve written requests for admissions on any other party. [ Note 1.]
NOTES:
1. Fed. R. Civ. P. 36(a); 37 CFR § 2.120(a).
407.02 Scope and Nature of Requests for Admission
Fed. R. Civ. P. 36(a) Requests for Admission.
Fed. R. Civ. P. 36(a)(1) Scope. A party may serve on any other party a written request to admit, for purposes of the pending action only, of the truth of any matters within the scope of Rule 26(b)(1) relating to:
- (A) facts, the application of law to fact, or opinions about either; and
- (B) the genuineness of any described documents.
Fed. R. Civ. P. 36(a)(2) Form; Copy of a Document. Each matter must be separately stated. A request to admit the genuineness of a document must be accompanied by a copy of the document unless it is, or has been, or otherwise furnished or made available for inspection and copying.
The scope and nature of requests for admission, in inter partes proceedings before the Board, are governed by Fed. R. Civ. P. 36(a), which in turn refers to Fed. R. Civ. P. 26(b)(1).
For a discussion of the scope of discovery permitted under Fed. R. Civ. P. 26(b)(1) and electronically stored information, see TBMP § 402.01 and TBMP § 402.02.
Requests for admission are particularly useful for determining, prior to trial, which facts are not in dispute, thereby narrowing the matters that must be tried. These requests are also useful as a means of facilitating the introduction into evidence of documents produced by an adversary in response to a request for production of documents. [ Note 1.] TBMP § 403.05(b).
NOTES:
1. See, e.g., ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1353 n.6 (TTAB 2007) (opposer filed notice of reliance on applicant’s response to request for admission and exhibits thereto that all documents it produced in response to opposer’s discovery requests were authentic for purposes of admission into evidence during the testimony period in the opposition proceeding); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103 (TTAB 2007) (documents produced in response to petitioner’s interrogatories under Fed. R. Civ. P. 33(d) for which respondent admitted via a request for admission were true and correct copies of authentic documents could be introduced by way of notice of reliance).
407.03 Responses to Requests for Admission
407.03(a) Time for Service of Responses
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.
Fed. R. Civ. P. 36(a) Requests for Admission.
Fed. R. Civ. P. 36(a)(3) Time to Respond; Effect of Not responding. A matter is admitted unless, within 30 days after being served, the party to whom the request is directed serves on the requesting party a written answer or objection addressed to the matter and signed by the party or its attorney.
Fed. R. Civ. P. 6(b) Extending Time.
Fed. R. Civ. P. 6(b)(1)(B) When an act may or must be done within a specified time, the court may, for good cause, extend the time: …on motion made after the time has expired if the party failed to act because of excusable neglect.
Responses to requests for admission must be served within 30 days after the date of service of the requests. [ 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 and TBMP § 403.03. In instances where the parties have agreed to electronic service, e.g. service by facsimile or email, no additional time is allowed for responding to the requests. [ Note 3.] TBMP § 403.03
Under Fed. R. Civ. P. 36, a requested admission is deemed admitted unless a written answer or objection is provided to the requesting party within thirty days after service of the request, or within such time as the parties agree to in writing. [ Note 4.]
If a party on which requests for admission have been served fails to timely respond thereto, the requests will stand admitted by operation of law [ Note 5.] unless the party is able to show that its failure to timely respond was the result of excusable neglect [ Note 6.] or unless a motion to withdraw or amend the admissions is filed pursuant to Fed. R. Civ. P. 36(b) and granted by the Board. [ Note 7.] It is not necessary to file a motion to deem requests for admissions admitted when no response is served, since the admissions are deemed admitted by operation of Fed. R. Civ. P. 36(a).
For further information concerning motions pursuant to Fed. R. Civ. P. 36(b) to withdraw or amend admissions, see TBMP § 525.
NOTES:
1. Fed. R. Civ. P. 36(a)(3); 37 CFR § 2.120(a)(3).
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. Fed. R. Civ. P. 36(a)(3).
5. Fram Trak Industries v. Wiretracks LLC, 77 USPQ2d 2000, 2005 (TTAB 2006) (requests for admissions deemed admitted by respondent’s failure to respond to petitioner’s requests for admissions); Pinnochio’s Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227, 1228 n.5 (TTAB 1989) (same).
6. Fed. R. Civ. P. 6(b)(1)(B); Giersch v. Scripps Networks Inc., 85 USPQ2d 1306, 1307 (TTAB 2007) (counsel’s mistaken belief that opposing counsel would grant an extension for responding to admissions did not constitute excusable neglect to reopen time to respond under Fed. R. Civ. P. 6(b)); Hobie Designs Inc. v. Fred Hayman Beverly Hills Inc., 14 USPQ2d 2064, 2064 n.1 (TTAB 1990) (to the extent applicant by its motion sought to be relieved of the untimeliness of its response, motion was not well taken because the reasons for failing to timely respond did not constitute excusable neglect).
7. Fed. R. Civ. P. 36(b); Giersch v. Scripps Networks Inc., 85 USPQ2d 1306, 1307 (TTAB 2007) (finding merits of action subserved by withdrawal of admissions and replacement with later served responses and finding no prejudice to petitioner under Fed. R. Civ. P. 36(b)); Hobie Designs Inc. v. Fred Hayman Beverly Hills Inc., 14 USPQ2d 2064, 2065 (TTAB 1990) ("...where failure to timely respond to a request for admission has harsh result, Rule 36(b) provides method for obtaining relief."). See also American Automobile Association (Inc.) v. AAA Legal Clinic of Jefferson Crooke, P.C., 930 F.2d 1117, 19 USPQ2d 1142, 1144 (5th Cir. 1991) (court may not sua sponte withdraw or ignore admissions without a motion to withdraw or amend); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719, 1721 (TTAB 1989) (presentation of merits of case aided by relieving opposer of admission on relevant issue and prejudice avoided by allowing applicant limited discovery as to the amended answer; BankAmerica Corp. v. International Travelers Cheque Co., 205 USPQ 1233, 1235 (TTAB 1979) (motion to withdraw admissions by default denied, but to extent admissions are contradicted by evidence, they will not be relied on for purposes of deciding whether entry of summary judgment is appropriate); Questor Corp. v. Dan Robbins & Associates, Inc., 199 USPQ 358, 361 n.2 (TTAB 1978) (by failing to answer requests for admissions, opposer admitted that it abandoned use of certain registered marks), aff’d, 599 F.2d 1009, 202 USPQ 100 (CCPA 1979).
407.03(b) Nature of Responses
Fed. R. Civ. P. 36(a) Requests for Admission.
Fed. R. Civ. P. 36(a)(4) Answer. If a matter is not admitted, the answer must specifically deny it or state in detail why the answering party cannot truthfully admit or deny it. A denial must fairly respond to the substance of the matter; and when good faith requires that a party qualify an answer or deny only a part of a matter, the answer must specify the part admitted and qualify or deny the rest. The answering party may assert lack of knowledge or information as a reason for failing to admit or deny only if the party states that it has made reasonable inquiry and that the information it knows or can readily obtain is insufficient to enable it to admit or deny.
Fed. R. Civ. P. 36(a)(5) Objections. The grounds for objecting to a request must be stated. A party must not object solely on the ground that the request presents a genuine issue for trial.
Responses to requests for admission must be made in writing, and should include an answer or objection to each matter of which an admission is requested. [ Note 1.]
The Board prefers that the responding party reproduce each request immediately preceding the answer or objection thereto.
An answer must admit the matter of which an admission is requested; deny the matter; or state in detail the reasons why the responding party cannot truthfully admit or deny the matter. A denial shall fairly meet the substance of the requested admission, and when good faith requires that a party qualify an answer or deny only a part of the matter of which an admission is requested, the party shall specify so much of it as is true and qualify or deny the remainder. An answering party may not give lack of information or knowledge as a reason for failure to admit or deny unless the party states that the party has made reasonable inquiry and that the information known or readily obtainable by the party is insufficient to enable the party to admit or deny. [ Note 2.]
If the responding party objects to a request for admission, the reasons for objection must be stated. If a responding party believes that a matter of which an admission has been requested presents a genuine issue for trial, the party may not object to the request on that ground alone. Rather, the party may deny the matter; alternatively, the party may set forth reasons why it cannot admit or deny the matter. [ Note 3.]
It is generally inappropriate for a party to respond to requests for admission by filing a motion attacking them, such as a motion to strike, a motion to suppress, a motion for a protective order, etc. Rather, the party ordinarily should respond by answering those requests that it believes to be proper and stating its reasons for objection to those that it believes to be improper. See TBMP § 410. For information regarding a party’s duty to supplement requests for admissions, see TBMP § 408.03
For information regarding excessive requests for admissions requiring relief by protective order, see TBMP § 412.06(b).
NOTES:
1. Fed. R. Civ. P. 36(a).
2. Fed. R. Civ. P. 36(a).
3. Fed. R. Civ. P. 36(a).
407.03(c) Signature of Responses
Answers and objections to requests for admission may be signed either by the responding party, or by its attorney. [ Note 1.] However, an attorney who signs answers or objections to requests for admission risks becoming a witness or disqualification from representation. [ Note 2.]
NOTES:
1. Fed. R. Civ. P. 36(a)(3).
2. See 37 CFR § 11.307. Cf. Allstate Insurance Co. v. Healthy America Inc., 9 USPQ2d 1663, 1666 n.4 (TTAB 1988).
407.04 Effect of Admission
Any matter admitted (either expressly, or for failure to timely respond) under Fed. R. Civ. P. 36(a) is conclusively established unless the Board, on motion, permits withdrawal or amendment of the admission or the Board permits a reopening of the time for responding to the admission requests. [ Note 1.]
For further information concerning motions to withdraw or amend an admission, see TBMP § 525.
An admission made by a party under Fed. R. Civ. P. 36(a) is only for the purpose of the pending proceeding. It is not an admission for any other purpose, nor may it be used against that party in any other proceeding. [ Note 2.]
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. [ Note 3.]
NOTES:
1. Fed. R. Civ. P. 36(b); Fed. R. Civ. P. 6(b)(1)(B). See Texas Department of Transportation v. Tucker, 95 USPQ2d 1241, 1244 (TTAB 2010) (admission conclusively establishes matter that is the subject of request for admission, subsequent argument to the contrary in response brief insufficient to raise genuine issue of material fact); Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 n.8 (TTAB 2007) ("An admission in response to a request for admission ‘conclusively establishe[s]’ the matter that is subject of that request . . . . However, a denial in response to a request for admission is merely a refusal to stipulate to certain matter"). See also American Automobile Association, v. AAA Legal Clinic of Jefferson Crooke, P.C., 930 F.2d 1117, 19 USPQ2d 1144 (5th Cir. 1991) (an admission not withdrawn or amended cannot be rebutted by contrary testimony at trial); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1846 n.7 (TTAB 2004) (because proceedings were deemed suspended prior to service of requests for admissions, Board declined to treat requests for admissions as having been admitted by applicant for failure to timely respond, considering only those requests applicant expressly admitted; Olin Corp. v. Hydrotreat, Inc., 210 USPQ 63, 65 n.4 (TTAB 1981) (anything not admitted is not established).
2. Fed. R. Civ. P. 36(b).
3. Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008).