401.01 Discovery Conferences
37 CFR § 2.120(a)(1) ... The provisions of Federal Rule of Civil Procedure relating to ... the conference of the parties to discuss settlement and develop a disclosure and discovery plan, ... are applicable to Board proceedings in modified form ... The Board will specify the deadline for a discovery conference ...
37 CFR § 2.120(a)(2) The discovery conference shall occur no later than the opening of the discovery period, and the parties must discuss the subjects set forth in Federal Rule of Civil Procedure 26(f) and any subjects set forth in the Board’s institution order. A Board Interlocutory Attorney or Administrative Trademark Judge will participate in the conference upon request of any party made after answer but no later than ten days prior to the deadline for the conference. The participating attorney or judge may expand or reduce the number or nature of subjects to be discussed in the conference as may be deemed appropriate... The parties are not required to prepare or transmit to the Board a written report outlining their discovery conference discussions, unless the parties have agreed to alter disclosure or discovery obligations set forth by these rules or applicable Federal Rules of Civil Procedure, or unless directed to file such a report by a participating Board Interlocutory Attorney or Administrative Trademark Judge.
Fed. R. Civ. P. 26(f)(2) Conference Content; Parties’ Responsibilities. ... In conferring, the parties must consider the nature and basis of their claims and defenses and the possibilities for promptly settling or resolving the case; ... discuss any issues about preserving discoverable information...
For inter partes proceedings commenced on or after November 1, 2007, the parties are required to hold a discovery conference to discuss the subjects set forth in Fed. R. Civ. P. 26(f) and in the institution order for the case. [ Note 1.] As specified in the Board’s institution order:
"[T]he parties are required to schedule and to participate with each other in a discovery conference by the deadline in the schedule. For guidance, see Fed. R. Civ. P. 26(f), Trademark Rule 2.120(a)(2), and TBMP § 401.01. In the conference, the parties are required to discuss (1) the nature of and basis for their respective claims and defenses, (2) the possibility of settling or at least narrowing the scope of claims or defenses, and (3) arrangements for disclosures, discovery and introduction of evidence at trial, if the parties are unable to settle at this time.
Discussion of amendments of otherwise prescribed procedures can include limitations on disclosures and/or discovery, willingness to stipulate to facts, and willingness to stipulate to more efficient options for introducing at trial information or materials obtained through disclosures or discovery."
The conference is not limited to the subjects listed in Fed. R. Civ. P. 26(f) or in the Board’s institution order and "the parties are free to discuss any additional topics that could promote settlement or efficient adjudication of the Board proceeding," including alternative means for adjudication such as the Board’s Accelerated Case Resolution (ACR) procedure. [ Note 2.] See TBMP § 528.05(a)(2) and TBMP § 702.04 for further information on ACR. 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.
The conference should take place once the pleadings have closed by the deadline set forth in the Board’s institution order (or by any extended deadline approved by the Board), and must take place no later than the opening of the discovery period. [ Note 3.] In instances, however, where the defendant is in default, or a pleading motion under Fed. R. Civ. P. 12 has been filed, or a counterclaim has been filed, the parties’ obligation to have a discovery conference is effectively stayed. [ Note 4.] The rationale is that an answer must be filed to all claims and counterclaims, and issues related to the pleadings resolved before the parties can have a meaningful discovery conference. [ Note 5.] In such cases, the Board will reset the deadline for the discovery conference as well as all subsequent dates, upon resolution of the default, or Fed. R. Civ. P. 12 motion, or acknowledgement of the counterclaim, which may include setting or resetting the deadline for filing an answer. [ Note 6.] Generally after an answer is filed, the Board is unlikely to find good cause to extend the deadline for the discovery conference for settlement negotiations, even upon stipulation or consent. [ Note 7.] There is no Fed. R. Civ. P. 16(b) scheduling/conference order.
The parties’ discovery conference may be in person or by other means (e.g. telephone). [ Note 8.] If any party wants a Board professional to participate in the required discovery conference, the party must call the Board attorney assigned to the case or file such request through ESTTA (Electronic System for Trademark Trials and Appeals), the Board’s electronic filing system, no later than ten (10) days prior to the deadline for conducting the discovery conference, so as to facilitate completion of the conference by the deadline. [ Note 9.] Board participation is encouraged where pro se litigants are involved. [ Note 10.] The participating attorney or judge has discretion to expand or reduce the number or nature of subjects to be discussed during the conference. [ Note 11.] For instance, the Board professional may ascertain whether the parties have previously engaged in settlement discussions, explain to the parties the Board’s ACR option, and may inquire whether the parties need additional time after the conference to discuss settlement. [ Note 12.] Participation by a Board professional will be by telephone. [ Note 13.] The conference will not be recorded by the Board and shall not be recorded by the parties.
If a party desires the appearance of more than one counsel on behalf of a party in a discovery conference with Board participation, that party is to designate a lead counsel to represent the party in the conference. With respect to pro se parties, the person who appears on behalf of the party, is one authorized under 37 CFR § 11.14(e). See TBMP § 114 (Party May Represent Itself). If a pro se litigant desires to have counsel appear on its behalf strictly for purposes of the discovery conference with Board participation, such counsel shall file a notice of appearance prior to the conduct of the discovery conference for this limited purpose. Subsequently, counsel will file a notice of withdrawal, unless counsel has been retained by the party to take further action on behalf of the party in the case. See TBMP § 116.01 regarding termination of representation.
In discovery conferences with Board participation, parties must conduct themselves with appropriate decorum and interruptions are to be avoided. The Board professional participating in the conference generally will signal that a party may make presentation by inviting the party to do so or by inviting a response to a presentation made by another. The Board professional may make other requirements for the orderly conduct of the discovery conference.
If neither party requests Board participation in the discovery conference, the parties still must conference no later than the prescribed deadline, and the Board will operate on the assumption that the conference was held by the deadline. The mere discussion of settlement amongst the parties does not substitute for a full discovery conference of subjects set forth in Fed. R. Civ. P. 26(f) and the Board’s institution order. [ Note 14.]
Unlike the Federal Rules, the parties do not have to file a disclosure/discovery plan with the Board following their discovery conference, unless they are seeking leave by motion or stipulation to alter standard deadlines or obligations, or unless they were directed to do so by the Board. [ Note 15.]
The Board has the authority to order parties to hold a discovery conference, either sua sponte or upon motion. [ Note 16.]
For a discussion regarding the duty to cooperate in scheduling and conducting a discovery conference, and the imposition of sanctions for the failure to participate in a discovery conference, see TBMP § 408.01(a).
For general information on the conduct of telephone conferences, participation in telephone conferences, and issuance of rulings resulting from telephone conferences, see TBMP § 502.06(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)(1); 37 CFR § 2.120(a)(2); Fed. R. Civ. P. 26(f). See, e.g., Promgirl, Inc. v. JPC Co., 94USPQ2d 1759, 1761-62 (TTAB 2009) (mere discussion of settlement does not substitute for full discovery conference of subjects set forth in Fed. R. Civ. P. 26 and Board’s institution order).
2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 and 42252 (August 1, 2007). See Weatherford/Lamb Inc. v. C&J Energy Servs., Inc., 96 USPQ2d 1834, 1836 n.4 (TTAB 2010) (parties encouraged to discuss ACR during discovery conference).
3. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
4. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
5. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
6. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
7. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007). See Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767 n.1 (TTAB 2008) ("The Board is unlikely to find good cause when such a request is based on the parties’ desire to engage in settlement discussions.").
8. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
9. See 37 CFR § 2.120(a)(2); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007). But see Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009) (Board professional can participate in discovery conference with less than ten days notice in instances where parties are at an impasse; conference may take place after deadline in those circumstances).
10. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42252 (August 1, 2007) ("... Board professionals involved in conferences will fill the educator’s role [that] would have to be filled by experienced counsel.").
12. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42252 (August 1, 2007).
13. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
14. Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761-62 (TTAB 2009).
15. 37 CFR § 2.120(a)(2); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245(August 1, 2007).
16. See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1763 (TTAB 2009).