412.06(b) Other Discovery
Except in those cases where it is readily apparent that propounded discovery requests are so oppressive as to constitute clear harassment, it is generally improper to respond to a request for discovery by filing a motion for protective order. [ Note 1.] See TBMP § 405 and TBMP § 406, for proper responses to discovery and TBMP § 412 and TBMP § 526 regarding motions for protective orders. It is also improper to move for a protective order for the purpose of delaying responses to discovery or for purposes of harassment of one’s adversary. [ Note 2.] The remedy for excessive interrogatories is service of a general objection, rather than a motion for protective order. [ Note 3.] For more information regarding excessive interrogatories, see TBMP § 405.
Where appropriate, the Board may under Fed. R. Civ. P. Rule 26(c)(1) order that the discovery requested not be had with regard to interrogatories and requests for production and requests for admission. [ Note 4.] The Board must determine whether there is a need for protection against a particular interrogatory or request for admission or production of a particular document or category of documents due to their nature or whether the volume of improper requests for production or requests for admission renders them harassing and oppressive. [ Note 5.] The parties are expected to take into account the principles of proportionality with regard to document requests and requests for admission such that the volume of requests does not render them harassing and oppressive and are expected to consider the scope of the requests as well as confer in good faith about the proper scope of discovery pursuant to 37 CFR § 2.120(a) and Fed. R. Civ. P. 26(f) so as to minimize the need for these motions. See TBMP §402 and TBMP § 408 regarding the scope of discovery, the parties’ discovery conference obligations and the duty to cooperate.
NOTES:
1. Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984).
2. Fort Howard Paper Co. v. G.V. Gambina Inc., 4 USPQ2d 1552, 1553 (TTAB 1987).
4. See, e.g., Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (granting protective order with regard to 707 requests for admission, 247 document requests, and 26 enumerated interrogatories); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013) (granting protective order with regard to 94 duplicative requests for admissions and those that sought admissions as to unpleaded registrations); Fed. R. Civ. P. 36 Advisory Committee notes (1970 amendment) ("requests to admit may be so voluminous and so framed that the answering party finds the task of identifying what is in dispute and what is not unduly burdensome. If so, the responding party may obtain a protective order under Rule 26(c)").
5. Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (when only one registration was at issue in cancellation, granting protective order with regard to 707 requests for admission, 247 document requests, and 26 enumerated interrogatories (some with subparts) and limiting the overall total discovery requests (interrogatories, including subparts, document requests and requests for admission) to be propounded to 150); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013) (granting protective order with regard to 94 duplicative requests for admissions and those that sought admissions as to unpleaded registrations but denying protective order with regard to 282 requests for admissions finding them relevant to allegations and claims as pleaded, where opposer made broad claims of ownership of twenty-six registered and common law marks in its notice of opposition, and applicant’s admission requests related only to fourteen of opposer’s pleaded marks); Weatherford/Lamb Inc. v. C&J Energy Services, Inc., 96 USPQ2d 1834, 1836 n.3 (TTAB 2010) (noting that during discovery and prior to service of petitioner’s discovery responses, the Board granted motion for protective order that petitioner need only produce limited or representative samples of responsive documents); Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1613 (TTAB 1991) (granting motion for protective order with respect to discovery relating to foreign activities; denying motion for protective order with respect to applicant’s use in commerce in U.S.); Fort Howard Paper Co. v. G.V. Gambina Inc., 4 USPQ2d 1552, 1554 (TTAB 1987) (denying motion for protective order with respect to nineteen discovery requests which were suitably tailored to the issues in the opposition); C. H. Stuart Inc. v. S.S. Sarna, Inc., 212 USPQ 386, 387 (TTAB 1980) (granting protective order due to oppressive and harassing discovery requests where the requests served were "boiler-plate" requests designed for use in an infringement action, discovery was not tailored to issues in Board proceeding, and requests sought included those seeking information regarding whether officers of applicant had been convicted of a crime or subject to a proceeding before the U.S. government). See also Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976) (protective order granted where obligation to respond to discovery requests rested with assignee nor assignor).