401.06    Other Requirements Under the Board’s Disclosure Regime

As noted above, parties are also required to hold a discovery conference discussing the subjects set forth in Fed. R. Civ. P. 26(f) as well as 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 and any other subjects that the Board may, in an institution order, require to be discussed. [ Note 1.] The parties are free to discuss additional topics besides those outlined in the institution order that could promote settlement or efficient adjudication of the Board proceeding. [ Note 2.] Because the parties may enter into stipulations altering disclosure obligations, they should continue to discuss their reciprocal obligations, and progress made in satisfying such obligations, even after the discovery conference has been held.

A party that has not made initial disclosures may not serve discovery requests or file a motion for summary judgment, except for a motion addressing the Board’s jurisdiction or claim or issue preclusion. [ Note 3.] Under these circumstances, the requirement of service of initial disclosures cannot be waived. [ Note 4.] For a further discussion regarding the timing of filing a motion for summary judgment, see TBMP § 528.02. A party that has not made initial disclosures is also precluded from filing a motion to compel. [ Note 5.]

Parties are also required to make pretrial disclosures prior to the opening of each testimony period. For further information on pretrial disclosures, see TBMP § 702.01.

The Board expects parties (and their attorneys or other authorized representatives) to cooperate with one another in the disclosure and discovery process, and looks with extreme disfavor on those who do not. For further guidance regarding the parties’ duty to cooperate, see TBMP § 408.01.

For a discussion of the duty to supplement written discovery responses and disclosures, see TBMP § 408.03.

NOTES:

 1.   See 37 CFR § 2.120(a)(2); Fed. R. Civ. P. 26(f); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007); 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.   37 CFR § 2.127(e)(1). See e.g., Qualcomm, Inc. v. FLO Corp., 93 USPQ2d 1768, 1769-70 (TTAB 2010) (motion for summary judgment denied as premature where movant had not yet made and served initial disclosures). See also Compagnie Gervais Danone v. Precision Formulations LLC, 89 USPQ2d 1251, 1255-56 (TTAB 2009) ("Because the Board does not allow a party to file a motion for summary judgment prior to the moving party’s service of initial disclosures on the adverse party, the Board generally will no longer exercise its discretion to convert motions to dismiss that refer to matters outside the pleadings into motions for summary judgment, if such motions are filed before the moving party serves its initial disclosures.").

 4.   Qualcomm, Inc. v. FLO Corp., 93 USPQ2d 1768, 1769-70 (TTAB 2010). But see Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767-68 (TTAB 2008) (Board approved parties’ stipulation to waive their reciprocal obligation to make initial disclosures).

 5.   37 CFR § 2.120(a)(3)  ("a party must make its initial disclosures prior to seeking discovery"). See Dating DNA, LLC v. Imagini Holdings, LLC, 94 USPQ2d 1889, 1893 (TTAB 2010) (motion to compel denied where moving party failed to make initial disclosures).