401    Introduction to Disclosures and Discovery

37 C.F.R. §  2.120(a)(1)  [Discovery.] In general. Except as otherwise provided in this section, and wherever appropriate, the provisions of the Federal Rules of Civil Procedure relating to disclosure and discovery shall apply in opposition, cancellation, interference and concurrent use registration proceedings. The provisions of Rule 26 of the Federal Rules of Civil Procedure relating to required disclosures, the conference of the parties to discuss settlement and to develop a disclosure and discovery plan, the scope, proportionality, timing and sequence of discovery, protective orders, signing of disclosures and discovery responses, and supplementation of disclosures and discovery responses, are applicable to Board proceedings in modified form, as noted in these rules and as may be detailed in any order instituting an inter partes proceeding or subsequent scheduling order. The Board will specify the deadline for a discovery conference, the opening and closing dates for the taking of discovery, and the deadlines within the discovery period for making initial disclosures and expert disclosure. The trial order setting these deadlines and dates will be included within the notice of institution of the proceeding.

Through the use of the various disclosures (i.e., initial and expert) and discovery devices (i.e., discovery depositions, interrogatories, requests for production of documents and things, and requests for admission) available to litigants in inter partes proceedings before the Board, a party may ascertain the facts underlying its adversary’s case. Discovery of these facts may lead to a settlement of the case, may simplify the issues, or may reveal a basis for a motion for summary judgment, an additional claim (in the case of a plaintiff), or an additional defense or counterclaim (in the case of a defendant). At the very least, taking discovery enables the propounding party to propose to the responding party stipulations of fact, stipulations as to procedures for introducing into the record evidence produced in response to discovery requests, and to otherwise prepare for trial. Propounding and responding to discovery may further lead parties to stipulate to narrowing the issues for trial, or to stipulate to expedited determination of their case under the Board’s Accelerated Case Resolution (ACR) process. [ Note 1.] See TBMP § 528.05(a)(2), TBMP § 702.04 and TBMP § 705 for information regarding ACR and stipulations.

The conduct of discovery in Board inter partes proceedings is governed by 37 C.F.R. § 2.120. Discovery before the Board under 37 C.F.R. § 2.120  is similar in many respects to discovery before the federal district courts under the Federal Rules of Civil Procedure. Ordinarily, the discovery provisions of the Federal Rules of Civil Procedure are applicable in Board inter partes proceedings, except as otherwise provided in 37 C.F.R. § 2.120. The provisions of the Federal Rules of Civil Procedure relating to automatic disclosure and discovery conferences are applicable to inter parties proceedings. However, the Board has adopted a modified disclosure and conferencing regime. [ Note 2.] All parties to Board proceedings are obliged to (1) conduct a discovery conference to discuss, inter alia, disclosure and discovery plans, and (2) make initial, expert, and pretrial disclosures. The Board adopted the disclosure regime of the Federal Rules of Civil Procedure in order to promote the early exchange of information and earlier settlement of cases and, for cases that do not settle, "more efficient discovery and trial, [reduction of] incidents of unfair surprise, and [to] increase the likelihood of fair disposition of the parties’ claims and defenses." [ Note 3.] In addition, the utilization of initial and expert disclosures is intended to "obviate the need to use traditional discovery to obtain ‘basic information’ about a party’s claims or defenses." [ Note 4.] In the absence of any express written statement from the parties filed with the Board that they waive their reciprocal rights to obtain disclosures or agree to restrictions on the use of particular discovery devices, the Board will presume the parties will comply with their obligation to make all required disclosures and will utilize traditional discovery devices, as permitted by the Trademark Rules and Federal Rules of Civil Procedure. [ Note 5.]

For more information regarding discovery conferences, see TBMP § 401.01 and TBMP § 408.01(a).

For a discussion of when discovery requests, discovery responses, and disclosures should be filed with the Board, see TBMP § 409 and 37 C.F.R. § 2.120(k)(8).

For information regarding pretrial disclosures, see TBMP § 702.01.

For information regarding Accelerated Case Resolution (ACR), see TBMP § 528.05(a)(2), TBMP § 702.04, and TBMP § 705.

NOTES:

 1.   For a discussion of the purposes served by discovery, see Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 865 (TTAB 1979). See also Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720 (TTAB 1987); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 250 (TTAB 1978). For a discussion of ACR, see, for example, Eveready Battery Co., Inc. v. Green Planet, Inc., 91 USPQ2d 1511, 1513 (TTAB 2009).

 2.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244-47 (August 1, 2007); 37 C.F.R. § 2.120(a); Fed. R. Civ. P. 26(a)(1)(A); Fed. R. Civ. P. 26(a)(2); Fed. R. Civ. P. 26(a)(3); Fed. R. Civ. P. 26(f).

 3.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 and 42246 (August 1, 2007). See also Luster Products Inc. v. Van Zandt, 104 USPQ2d 1877, 1879-80 n.5 (TTAB 2012) (citing August 1, 2007 final rule); Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (disclosures, from initial through pretrial, and discovery responses should be viewed as a continuum of communication designed to avoid unfair surprise and to facilitate a fair adjudication of the case on the merits); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (adoption of disclosure model intended to provide an orderly administration of the proceeding as it moves to trial).

 4.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 and 42246 (August 1, 2007).

 5.   Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767-68 (TTAB 2008).

401.01    Discovery Conferences

37 C.F.R. §  2.120(a)(1)  [Discovery] . . . The provisions of Rule 26 of the Federal Rules of Civil Procedure relating to . . . the conference of the parties to discuss settlement and to 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 C.F.R. § 2.120(a)(2)(i)  The discovery conference shall occur no later than the opening of the discovery period, and the parties must discuss the subjects set forth in Rule 26(f) of the Federal Rule of Civil Procedure 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, or when the Board deems it useful for the parties to have Board involvement. 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.

* * * *

(v) 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, and develop a proposed discovery plan.

For all inter partes proceedings, 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:

"The parties are required to schedule and hold a discovery conference by the deadline in the schedule in this order, or as reset by the Board. In the conference, the parties are required to discuss, at a minimum, 1) the nature and basis of their claims and defenses, 2) the possibility of promptly settling, or at least narrowing the scope of claims or defenses, and 3) arrangements for disclosures, discovery, preserving discoverable information and introduction of evidence at trial. For guidance, see Fed. R. Civ. P. 26(f), Trademark Rule 2.120(a)(2)(i), and TBMP §§ 401.01 and 408.01(a).

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 and 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 tolled or 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 submit such request through ESTTA, the Board’s electronic filing system, or call the Board attorney assigned to the case 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.] Submitting a request using ESTTA is preferred; however, parties are encouraged to follow up a few days later with a phone call to the Board attorney assigned to the case if they have not yet been contacted by a Board attorney. Board participation is encouraged where pro se litigants are involved. [ Note 10.] The Board, on its own initiative, may elect to participate in the discovery conference when the Board deems it useful for the parties to have Board involvement. [ Note 11.] The participating attorney or judge has discretion to expand or reduce the number or nature of subjects to be discussed during the conference. [ Note 12.] 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 13.] Participation by a Board professional will be by telephone. [ Note 14.] The conference will not be recorded by the Board and shall not be recorded by the parties. [ Note 15.]

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, must be authorized under 37 C.F.R. § 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. [ Note 16.] The Board professional participating in the conference generally will signal that a party may make a 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 and the Board does not elect to participate in the conference on its own initiative, 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 among 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 17.]

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 18.]

The Board has the authority to order parties to hold a discovery conference, either sua sponte or upon motion. [ Note 19.]

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.   37 C.F.R. § 2.120(a)(1); 37 C.F.R. § 2.120(a)(2)(i); 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). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 and 42252 (August 1, 2007) for information about the adoption of a discovery conference in Board proceedings.

 2.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 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). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959, 69961 (October 7, 2016) (if voluminous productions anticipated, method of service is worthwhile issue to discuss at Board discovery conference; production of ESI is a subject for discussion at discovery).

 3.   37 C.F.R. § 2.120(a)(2)(i). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).

 4.   37 C.F.R. § 2.106(a), 37 C.F.R. § 2.114(a)  and 37 C.F.R. § 2.127(d). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957, 69959, 69967 (October 7, 2016). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007) (filing of a counterclaim results in proceeding effectively being stayed).

 5.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).

 6.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).

 7.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 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 OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).

 9.   See 37 C.F.R. § 2.120(a)(2)(i); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 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 OF PRACTICE, 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.").

 11.   37 C.F.R. § 2.120(a)(2)(i). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).

 12.   37 C.F.R. § 2.120(a)(2)(i).

 13.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42252 (August 1, 2007).

 14.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).

 15.   37 C.F.R. § 2.120(j)(3).

 16.   37 C.F.R. § 2.192; 37 C.F.R. § 11.305(d).

 17.   Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761-62 (TTAB 2009).

 18.   37 C.F.R. § 2.120(a)(2)(v); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).

 19.   See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1763 (TTAB 2009).

401.02    Initial Disclosures

37 C.F.R. § 2.120(a)(2)(ii)  Initial disclosures must be made no later than thirty days after the opening of the discovery period.

37 C.F.R. § 2.120(a)(3)  A party must make its initial disclosures prior to seeking discovery, absent modification of this requirement by a stipulation of the parties approved by the Board, or a motion granted by the Board, or by order of the Board. * * * *

Fed. R. Civ. P. 26(a)(1) Initial Disclosure.

• (A) In General. Except as exempted by Rule 26(a)(1)(B) or as otherwise stipulated or ordered by the court, a party must, without awaiting a discovery request, provide to the other parties:
  • (i) the name and, if known, the address and telephone number of each individual likely to have discoverable information — along with the subjects of that information — that the disclosing party may use to support its claims or defenses, unless the use would be solely for impeachment;
  • (ii) a copy — or a description by category and location — of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment . . . .
  

Each party involved in an inter partes proceeding is obligated to make initial disclosures to every other party, by the deadline set in the Board’s institution order, or as may be reset by stipulation of the parties approved by the Board, or by motion granted by the Board, or by order of the Board. [ Note 1.] A party may not seek discovery through traditional devices until after it has made its initial disclosures, absent modification of this requirement by a stipulation or motion of the parties approved by the Board, or upon Board order. [ Note 2.] Generally, each party will meet this obligation by complying with the disclosure requirements set forth in Fed. R. Civ. P. 26(a)(1)(A)(i) and (ii); subsections (iii) and (iv) of Rule 26(a)(1)(A) do not apply to Board proceedings. [ Note 3.] "Initial disclosures are not intended to substitute for all discovery but, rather, to prompt routine disclosure of names of potential witnesses and basic information about documents and things that a party may use to support a claim or defense." [ Note 4.]

Pursuant to Fed. R. Civ. P. 26(a)(1), a party is not obligated to disclose the name of every witness, document or thing that may have or contain discoverable information about its claim or defense, but merely the witnesses, documents and things having or containing discoverable "information that the disclosing party may use to support its claims or defenses." [ Note 5.] If, however, a party does identify a trial witness in its initial disclosures, the party must provide the subject matter(s) about which each identified witness is likely to have discoverable information, as well as any known addresses and/or phone numbers for the identified witness. [ Note 6.] In addition, a party must either provide the location of all identified documents in its initial disclosures or, in the alternative, produce them. [ Note 7.]

Initial disclosures are not a substitute for taking comprehensive discovery. [ Note 8.] Nonetheless, discovery in Board proceedings should be more limited in scope than in district court cases since Board jurisdiction is limited to determining a party’s right to obtain or retain a registration. [ Note 9.] However, in the spirit of cooperation, parties can, subject to Board approval, stipulate to rely on more expansive use of reciprocal disclosures in lieu of formal discovery, as a more efficient and less costly means of litigating a Board proceeding. [ Note 10.]

There is no concept of priority in regard to initial disclosures, and a party is not relieved of its obligation to make or supplement initial disclosures merely because it may not have received such disclosures or supplementation from an adverse party or parties. [ Note 11.] For information regarding the duty to supplement initial disclosures, see TBMP § 408.03.

A party making initial disclosures has the option of disclosing information about the existence and location of documents instead of producing copies of documents. [ Note 12.] However, the Board encourages parties to actually exchange copies of disclosed documents rather than to merely identify their location. [ Note 13.]

Initial written disclosures and initial disclosures of documents are treated like responses to discovery requests insofar as they may be used in support of or in opposition to a motion for summary judgment and, at trial, may be introduced by notice of reliance. [ Note 14.] For more information on motions for summary judgment and introduction of disclosures at trial by notice of reliance, see TBMP § 528 and TBMP § 704.14.

Pertinent information under Fed. R. Civ. P. 26(a)(1) stored in digital or electronic form must also be identified in initial disclosures. For further information regarding the discovery of electronically stored information, see TBMP § 402.02.

A party failing to make initial disclosures may be subject to a motion to compel, and ultimately, a motion for discovery sanctions. [ Note 15.] A motion to compel initial disclosures must be filed within thirty days after the disclosure deadline. [ Note 16.] For further information regarding motions to compel initial disclosures, see TBMP § 523.

In addition, a party may not file a motion for summary judgment until the party has made its initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the Board. [ Note 17.]

For further information regarding the duty to cooperate and remedies for failure to make initial disclosures, see TBMP § 408.01(b) and TBMP § 411.01.

NOTES:

 1.   37 C.F.R. § 2.120(a)(1), 37 C.F.R. § 2.120(a)(2)(ii), 37 C.F.R. § 2.120(a)(2)(iv), and 37 C.F.R. § 2.120(a)(3).

 2.   37 C.F.R. § 2.120(a)(3). See Amazon Technologies, Inc. v. Wax, 93 USPQ2d 1702, 1704-06 (TTAB 2009) (party objecting to discovery due to proponent’s alleged failure to make initial disclosures must specifically articulate that objection); Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1768 (TTAB 2008) (parties’ notice of waiver of initial disclosures approved).

 3.   See 37 C.F.R. § 2.120(a)(1). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007); Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008) (initial disclosures must be signed by party or party’s attorney to comply with Fed. R. Civ. P. 26(g)).

 4.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 5.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1326 (TTAB 2011) (because an exhaustive search for all information or potential witnesses is not required, Board did not exclude the testimony of certain witnesses named for the first time in pretrial disclosures based on the failure to name them in initial disclosures, though the testimony for most witnesses was excluded for other reasons); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 n.1 (TTAB 2009) ("A party need not, through its mandatory initial disclosures, identify particular individuals as prospective trial witnesses, per se, but must identify ‘each individual likely to have discoverable information that the disclosing party may use to support its claims or defenses.’ . . . Individuals identified through initial disclosures therefore could reasonably be viewed as possible witnesses.").

See also Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1103-04 (TTAB 2018) (where applicant’s initial disclosures provided notice that applicant would submit documentary evidence of third-party use at trial, and its supplemental initial disclosures described unnamed witnesses who would testify regarding third-party use, applicant’s failure to make pretrial disclosure of certain witnesses was substantially justified and harmless). But see Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1179 (TTAB 2010) (where opposer identified trial witness in pretrial disclosures who was not identified in initial disclosures, opposer ordered to serve revised pretrial disclosures limiting testimony of the previously undisclosed witness to subjects other than those on which a previously disclosed witness who was identified in initial disclosures could testify).

 6.   Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008).

 7.   Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008).

 8.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 9.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245-46 (August 1, 2007). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016) ("The Board continues to view the universe of [electronically stored information] within the context of its narrower scope of jurisdiction, as compared to that of the federal district courts.").

 10.   37 C.F.R. § 2.120(a)(2)(iv). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016) ("parties may stipulate … that reciprocal disclosures be used in place of discovery").

 11.   Fed. R. Civ. P. 26(a)(1)(E).

 12.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42254 (August 1, 2007).

 13.   Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 n.4 (TTAB 2008).

 14.   37 C.F.R. § 2.127(e)(2); 37 C.F.R. § 2.122(g); 37 C.F.R. § 2.120(k)(3)(i)  - 37 C.F.R. § 2.120(k)(3)(ii). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69962 (October 7, 2016); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 15.   37 C.F.R. § 2.120(f)(1); 37 C.F.R. § 2.120(h); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42256 (August 1, 2007). See also Luster Products Inc. v. Van Zandt, 104 USPQ2d 1877, 1878-79 (TTAB 2012) (motion to compel is available remedy for failure to serve, or insufficient, initial disclosures).

 16.   37 C.F.R. § 2.120(f)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69961 (October 7, 2016).

 17.   37 C.F.R. § 2.127(e)(1). See, e.g., Qualcomm, Inc. v. FLO Corp., 93USPQ2d 1768, 1769-70 (TTAB 2010) (motion for summary judgment denied as premature where movant had yet to serve 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.").

401.03    Expert Disclosures

37 C.F.R. § 2.120(a)(2)(iii)  . . . Disclosure of expert testimony must occur in the manner and sequence provided in Rule 26(a)(2) of the Federal Rule of Civil Procedure, unless alternate directions have been provided by the Board in an institution order or any subsequent order resetting disclosure, discovery or trial dates. If the expert is retained after the deadline for disclosure of expert testimony, the party must promptly file a motion for leave to use expert testimony. Upon disclosure by any party of plans to use expert testimony, whether before or after the deadline for disclosing expert testimony, the Board, either on its own initiative or on notice from either party of the disclosure of expert testimony, may issue an order regarding expert discovery and/or set a deadline for any other party to disclose plans to use a rebuttal expert.

Fed. R. Civ. P. 26(a)(2) Disclosure of Expert Testimony.

• (A) In General. In addition to the disclosures required by Rule 26(a)(1), a party must disclose to the other parties the identity of any witness it may use at trial to present evidence under Federal Rule of Evidence 702, 703, or 705.
• (B) Witnesses Who Must Provide a Written Report. Unless otherwise stipulated or ordered by the court, this disclosure must be accompanied by a written report — prepared and signed by the witness — if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party’s employee regularly involve giving expert testimony. The report must contain:
  • (i) a complete statement of all opinions the witness will express and the basis and reasons for them;
  • (ii) the facts or data considered by the witness in forming them;
  • (iii) any exhibits that will be used to summarize or support them;
  • (iv) the witness’s qualifications, including a list of all publications authored in the previous 10 years;
  • (v) a list of all other cases in which, during the previous 4 years, the witness testified as an expert at trial or by deposition; and
  • (vi) a statement of the compensation to be paid for the study and testimony in the case.
  
• (C) Witnesses Who Do Not Provide a Written Report. Unless otherwise stipulated or ordered by the court, if the witness is not required to provide a written report, this disclosure must state:
  • (i) the subject matter on which the witness is expected to present evidence under Federal Rule of Evidence 702, 703, or 705; and
  • (ii) a summary of the facts and opinions to which the witness is expected to testify.
  
• (D) Time to Disclose Expert Testimony. A party must make these disclosures at the times and in the sequence that the court orders. Absent a stipulation or a court order, the disclosures must be made:
  • (i) at least 90 days before the date set for trial or for the case to be ready for trial; or
  • (ii) if the evidence is intended solely to contradict or rebut evidence on the same subject matter identified by another party under Rule 26(a)(2)(B) or (C), within 30 days after the other party’s disclosure.
  
• (E) Supplementing the Disclosure. The parties must supplement these disclosures when required under Rule 26(e).

Although not frequently utilized in Board proceedings, experts in Board inter partes proceedings are typically recruited on the basis of experience in the relevant trade or industry and not on the basis of personal knowledge of or on-the-scene involvement in any sequence of events that gave rise to the Board proceedings. [ Note 1.] As set forth in Federal Rule of Evidence 702, made applicable to Board proceedings by 37 C.F.R. § 2.122(a), "[a] witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case." [ Note 2.] A party generally must decide within the discovery period whether it plans to use an expert to testify at trial since expert disclosure is due 30 days prior to the close of discovery, or by any deadline that may be reset by any order of the Board issued after the initial institution order, but the expert disclosure deadline must always be scheduled prior to the close of discovery whenever disclosure and discovery deadlines are modified. [ Note 3.]

The extent of the expert disclosure obligation is governed by Fed. R. Civ. P. 26(a)(2). [ Note 4.] Parties are not required to disclose consulting experts. [ Note 5.] On the other hand, both retained, specially employed experts, and unretained experts must be disclosed. [ Note 6.] Only retained experts are required to provide a report, unless otherwise stipulated. [ Note 7.] For unretained experts, a party must provide the subject matter on which the witness is expected to present evidence under Fed. R. Evid. 702, 703, or 705; and a summary of the facts and opinions to which the witness is expected to testify. [ Note 8.]

The disclosure of planned or possible expert testimony by any party must be made by the expert disclosure deadline, regardless of whether any other party has made such disclosure. Thus, for example, if a defendant has plans to present, or may present, expert testimony to support an affirmative defense, regardless of whether a plaintiff may use expert testimony in support of a main claim, then the defendant must disclose the planned or possible presentation of such testimony by the deadline set by the Board. [ Note 9.] If a party decides after the deadline for expert disclosure that it would like to, or may need to, rely on expert testimony at trial, the party must file a motion for leave to use the expert at trial. [ Note 10.] The provisions regarding the timing of expert disclosure are intended to facilitate the taking of any necessary discovery by any party or parties adverse to the disclosing party, in regard to the proposed expert witness, and to allow the adverse party or parties to determine whether it will be necessary to rely on a rebutting expert. Parties are expected to cooperate in the process of exchanging information about any testifying experts, and should at least discuss, during the discovery conference, the possibility of entering into stipulations that will facilitate the exchange of such information and/or the presentation of expert testimony. The parties should revisit these discussions whenever it appears that a testifying expert witness may become involved in the case. [ Note 11.]

Any party disclosing plans to use an expert must notify the Board that it has made the required disclosure (but should not file with the Board copies of the materials provided to adverse parties) to comply with Fed. R. Civ. P. 26(a)(2). [ Note 12.] The Board may then suspend proceedings to allow for discovery limited to experts. [ Note 13.] The suspension order may leave unchanged the deadline specified in the Federal Rule for disclosure of plans to use a rebuttal expert, or may reset the deadline, depending upon the circumstances at the time the Board issues the suspension order. Suspension is as to activities unrelated to the exchange of information about, and reports by, expected expert witnesses, and the parties should continue with the expert disclosure procedures specified in the Federal Rule pending issuance of any suspension order by the Board that will specify any actions of the parties required by the Board. If a party discloses plans to use an expert witness early in the discovery period, the Board may choose not to suspend discovery activities unrelated to the expected expert witnesses and may direct that all discovery activities continue concurrently with the disclosures and discovery relative to the experts. [ Note 14.] There may be cases in which a party may not decide until after the deadline for expert disclosure that it needs to present an expert witness at trial. In such cases, disclosure must be made promptly when the expert is retained and a motion for leave to present testimony by the expert must be filed. [ Note 15.] Prompt disclosure after the deadline, however, does not necessarily ensure that the expert’s testimony or evidence will be allowed into the record at trial. [ Note 16.] The Board will decide on a case-by-case basis how to handle a party’s late identification of experts. [ Note 17.]

Upon disclosure by any party of plans to use expert testimony, whether before or after the deadline for disclosing expert testimony, the Board, either on its own initiative or on notice from either party of the disclosure of expert testimony, may issue an order regarding expert discovery and/or set a deadline for any other party to disclose plans to use a rebuttal expert. [ Note 18.]

A party has the prerogative of deciding not to use a designated expert for testimony. [ Note 19.] In addition, a party may be permitted to withdraw a previously disclosed expert and expert report and substitute a new expert witness and expert report. [ Note 20.] However, if the substitution occurs after the expert disclosure deadline, the Board will consider whether the substitution is substantially justified or harmless. [ Note 21.] A party may redesignate a testifying expert witness as a non-testifying or consulting expert. [ Note 22.] If a party redesignates the designated testifying expert witness as a non-testifying or consulting expert after an expert report has been disclosed, the expert will be subject to deposition only under exceptional circumstances. [ Note 23.] If a party discloses an expert report after the expert disclosure deadline, the Board will consider whether the late disclosure is substantially justified or harmless. [ Note 24.]

A motion to compel an expert testimony disclosure must be filed prior to the close of the discovery period. [ Note 25.] For further information regarding motions to compel, see TBMP § 523.

A party may supplement or correct its expert disclosures "if the party learns that in some material respect the disclosure . . . is incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing." [ Note 26.] A party may supplement or correct information included in an expert report and information given in the expert’s deposition testimony before a party’s pretrial disclosures are due. [ Note 27.] Fed. R. Civ. P. 26(e), however, does not allow an expert to bolster previously disclosed opinions or to add new opinions. [ Note 28.]

Rebuttal expert reports should be limited to a rebuttal or critique of the methods proposed by the expert report and the analysis of the data that resulted. [ Note 29.] Under appropriate circumstances, sur-rebuttal expert testimony may be allowed so long as a party that wishes to provide a sur-rebuttal expert report promptly seeks leave of the Board. [ Note 30.]

For further information regarding the duty to cooperate and to the duty to supplement with regard to expert disclosures, see TBMP § 408.01(b) and TBMP § 408.03. For information regarding remedies for failure to disclose or inadequate expert disclosures, see TBMP § 411.01.

NOTES:

 1.   RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1494-95 (TTAB 2013).

 2.   Fed. R. Evid. 702. See also Fed. R. Evid. 702, Notes of Advisory Committee on Proposed Rules. See, e.g., McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268, 1298 n.58 (TTAB 2014) ("While a party is not required to employ an expert to be able to direct criticisms to an opposing party’s survey, having a qualified expert confirm that the criticisms reflect the relevant standards employed in the survey field would lend additional weight to such criticisms."); Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1757 (TTAB 2013) (witness qualified as an expert in the field of travel writing and journalism based on professional experience as a travel writer and editor), aff’d mem, 565 F. App’x 900 (Fed. Cir. 2014).

 3.   See 37 C.F.R. § 2.120(a)(2)(iii)  and 37 C.F.R. § 2.120(a)(2)(iv). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016) ("an expert disclosure deadline must always be scheduled prior to the close of discovery"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007) (in the absence of an order from the Board setting a deadline, expert disclosures are governed by Fed. R. Civ. P. 26(a)(2), per 37 C.F.R. § 2.120(a)(2)); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (party is to disclose its plan to use an expert 30 days before the close of discovery).

 4.   37 C.F.R. § 2.120(a)(2)(iii). See RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1494 (TTAB 2013) (use of testifying expert); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1891-92 (TTAB 2011).

 5.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42254 (August 1, 2007). See also Fed. R. Civ. P 26(b)(4)(D); Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1567 (TTAB 2014) (discussing the differences between testifying and consulting experts in connection with redesignation of a testifying expert as a consulting expert).

 6.   Fed. R. Civ. P. 26(a)(2)(A).

 7.   Fed. R. Civ. P. 26(a)(2)(B); Fed. R. Civ. P. 26(a)(2)(C). See RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1495 (TTAB 2013) (an expert is retained for purposes of Rule 26(a)(2)(B) and required to provide a written report "[w]here an expert’s opinion testimony arises from his enlistment as an expert and not from an on-the-scene involvement in any incidents giving rise to the litigation").

 8.   Fed. R. Civ. P. 26(a)(2)(C). A witness under Fed. R. Civ. P. 26(a)(2)(C) may testify as both a fact witness and also provide expert testimony under Fed. R. Evid. 702, 703 or 705. See Fed. R. Civ. P. 26(a)(2)(C) Committee Notes on Rules – 2010 Amendment.

 9.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 10.   37 C.F.R. § 2.120(a)(2)(iii). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 11.   See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 n. 3 (TTAB 2011) (parties expected to cooperate to resolve problems arising from timely but incomplete expert disclosures).

 12.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007). RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1493 n.3 (TTAB 2013) (a party must notify the Board of its plan to use an expert (without including copies of expert disclosures), and that it has made required expert disclosures to adversary; the best practice is to notify the Board concurrently with the expert disclosures to adverse party). But see Monster Energy Co. v. Martin, 125 USPQ2d 1774, 1776, 2018 (TTAB 2018) ("even the failure to inform the Board of the timely disclosure of an expert witness is not a ground to exclude the noticed testimony of such witness"); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (37 C.F.R. § 2.120(a)(2) does not mandate that a disclosing party inform the Board that an expert disclosure has been made; disclosing party’s failure to notify the Board is not a ground to exclude the testimony).

 13.   See 37 C.F.R. § 2.120(a)(2)(iii); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007); Monster Energy Co. v. Martin, 124 USPQ2d 1774, 1777-78 (TTAB 2018) Cancellation No. 92064649 (parent case) ("Trademark Rule 2.120(a)(2)(iii) provides the Board wide latitude in managing a proceeding following any party's disclosure of plans to use expert testimony, including but not limited to, suspending proceedings to allow for discovery of the expert and for any other party to disclose plans to use a rebuttal expert."). But see, General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) ("The purpose of informing the Board of such a disclosure is to facilitate discovery," but notification to the Board may not be necessary if expert-related discovery can be concluded by the close of discovery).

 14.   See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (in any given case, suspension of proceedings for expert-related discovery may not be necessary).

 15.   See 37 C.F.R. § 2.120(a)(2)(iii).

 16.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 17.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See, e.g., Entravision Communications Corp. v. Liberman Television LLC, 113 USPQ2d 1526, 1528-29 (TTAB 2015) (after balancing relevant factors, substitution of witness and expert report after expert disclosure deadline due to witness unavailability found to be substantially justified and harmless under circumstances of the case); Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d 1559, 1563-64 (TTAB 2014) (after balancing relevant factors, untimely disclosure of expert opinion found neither substantially justified nor harmless under circumstances of case).

 18.   37 C.F.R. § 2.120(a)(2)(iii); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).

 19.   Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1567 (TTAB 2014).

 20.   Entravision Communications Corp. v. Liberman Television LLC, 113 USPQ2d 1526, 1528-29 (TTAB 2015).

 21.   Fed. R. Civ. P. 37(c)(1). See, e.g., Entravision Communications Corp. v. Liberman Television LLC, 113 USPQ2d 1526, 1528 (TTAB 2015) (substitution of expert and expert report after expert disclosure deadline).

 22.   Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1567, 1567 n.9 (TTAB 2014) (noting that a designated expert witness can be redesignated as a non-testifying or consulting expert and shielded from discovery).

 23.   Fed. R. Civ. P. 26(b)(4)(D)(ii); Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1568 (TTAB 2014) (showing of exceptional circumstances required in case of noticed deposition (without subpoena) of party’s redesignated consulting expert). Please Note: The Board has no jurisdiction over depositions of non-parties by subpoena.

 24.   See Fed. R. Civ. P. 37(c)(1). See, e.g., Entravision Communications Corp. v. Liberman Television LLC, 113 USPQ2d 1526, 1528 (TTAB 2015) (substitution of expert and expert report); Gemological Institute of America, Inc. v. Gemology Headquarters Int’l, LLC, 111 USPQ2d 1559, 1562 (TTAB 2014) (untimely expert report).

 25.   37 C.F.R. § 2.120(f); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69961 (October 7, 2016).

 26.   Fed. R. Civ. P. 26(e)(1)(A). Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d 1559, 1561-62 (TTAB 2014) (discussing what is proper supplementation of an expert report).

 27.   Fed. R. Civ. P. 26(e)(2). Entravision Communications Corp. v. Liberman Television LLC, 113 USPQ2d 1526, 1528 n.5 (TTAB 2015); Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d 1559, 1562 (TTAB 2014).

 28.   ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1241 (TTAB 2015). See also Newegg Inc. v. Schoolhouse Outfitters, LLC, 118 USPQ2d 1242, 1244 (TTAB 2016) (in connection with leave to file sur-rebuttal expert report, party’s expert precluded from offering corrections or amplifications to original expert report, introducing new evidence or consumer surveys).

 29.   See Newegg Inc. v. Schoolhouse Outfitters, LLC, 118 USPQ2d 1242, 1244 (TTAB 2016) (discussing what constitutes proper rebuttal expert report); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1238-39 (TTAB 2015) (considering whether rebuttal expert report was proper rebuttal).

 30.   Newegg Inc. v. Schoolhouse Outfitters, LLC, 118 USPQ2d 1242, 1244 (TTAB 2016).

401.04    Modification of Disclosure Obligations

37 C.F.R. § 2.120(a)(2)(iv)  The parties may stipulate to a shortening of the discovery period, that there will be no discovery, that the number of discovery requests or depositions be limited, or that reciprocal disclosures be used in place of discovery. Limited extensions of the discovery period may be granted upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. If a motion for an extension is denied, the discovery period may remain as originally set or as reset. Disclosure deadlines and obligations may be modified upon written stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board, but the expert disclosure deadline must always be scheduled prior to the close of discovery. If a stipulation or motion for modification is denied, discovery disclosure deadlines may remain as originally set or reset and obligations may remain unaltered.

Disclosure deadlines and obligations may be modified upon written stipulation of the parties approved by the Board, upon motion granted by the Board, or by order of the Board. [ Note 1.] However, the expert disclosure deadline must always be scheduled prior to the close of discovery. [ Note 2.] Written initial disclosures or disclosed documents, and materials obtained through the disclosure 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. [ Note 3.] The parties may agree to waive or otherwise modify their obligation to make disclosures, but must inform the Board by written stipulation or by motion. [ Note 4.] A party who fails to make the required or adequate disclosures may be subject to a motion to compel, and ultimately a motion for sanctions, including possible judgment. [ Note 5.] See TBMP § 411.01 and TBMP § 523 for further information on motions to compel initial or expert disclosures.

In instances where the defendant is in default, or a pleading motion under Fed. R. Civ. P. 12 or counterclaim has been filed, the parties’ obligation to make initial disclosures is tolled or effectively stayed. [ Note 6.] In such cases, the Board will reset the deadline for making initial disclosures, as well as the deadline for the discovery conference and all subsequent dates, after resolving or accounting for the default, motion, or counterclaim. [ Note 7.] For further information regarding the rescheduling of the discovery conference in these circumstances, see TBMP § 401.01.

Pretrial disclosures are not part of the discovery process and, therefore, a motion to compel is not the remedy when a party fails to make, or makes inadequate, pretrial disclosures. See TBMP § 702.01 for further information on pretrial disclosures.

For a discussion regarding extensions of time to make disclosures and the impact of extensions of time regarding the close of discovery on disclosure obligations, see TBMP § 403.04.

NOTES:

 1.   37 C.F.R. § 2.120(a)(2)(iv).

 2.   37 C.F.R. § 2.120(a)(2)(iv). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).

 3.   37 C.F.R. § 2.120(k)(8). See also Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1427 n.6 (TTAB 2013) (documents obtained through disclosure may be offered as exhibits in connection with the taking of an adversary’s discovery deposition, and may be introduced as exhibits during the taking of an adversary’s testimony).

 4.   37 C.F.R. § 2.120(a)(2)(iv); 37 C.F.R. § 2.120(a)(2)(v); and 37 C.F.R. § 2.120(a)(3). See, e.g., Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 (TTAB 2013) (parties stipulated to waive pretrial disclosures); Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767-68 (TTAB 2008) (waiver of initial disclosures).

 5.   37 C.F.R. § 2.120(f)(1); 37 C.F.R. § 2.120(h)(1); and 37 C.F.R. § 2.120(h)(2); RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1493 (TTAB 2013) (motion to compel is an available remedy for inadequate expert disclosures); Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1760 n.2 (TTAB 2009) (motion to compel is remedy when adversary has failed to make or has made inadequate initial disclosures); Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008) (petitioner’s motion to compel amended initial disclosures granted where respondent failed to identify the address or telephone number of listed witnesses, the subject matter(s) about which each has information, and the location or production of identified documents).

 6.   37 C.F.R. § 2.106(a); 37 C.F.R. § 2.114(a); and 37 C.F.R. § 2.127(d). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957, 69959 (October 7, 2016); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).

 7.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).

401.05    Form of Disclosures

Fed. R. Civ. P. 26(a)(4) Form of Disclosures. Unless the court orders otherwise, all disclosures under Rule 26(a) must be in writing, signed, and served.

Fed. R. Civ. P. 26(g) Signing Disclosures and Discovery Requests, Responses, and Objections.

• (1) Signature Required; Effect of Signature. Every disclosure under Rule 26(a)(1) or (a)(3) and every discovery request, response, or objection must be signed by at least one attorney of record in the attorney’s own name — or by the party personally, if unrepresented — and must state the signer’s address, e-mail address, and telephone number. By signing, an attorney or party certifies that to the best of the person’s knowledge, information, and belief formed after a reasonable inquiry:
  • (A) with respect to a disclosure, it is complete and correct as of the time it is made * * * *
  
• (2) Failure to Sign. Other parties have no duty to act on an unsigned disclosure, request, response, or objection until it is signed, and the court must strike it unless a signature is promptly supplied after the omission is called to the attorney’s or party’s attention.

Disclosures must be in writing, signed by either the party or its attorney, and bear the caption and proceeding number for the case. [ Note 1.] The signer’s address, email address, and telephone number must also be provided. [ Note 2.] Signature of a disclosure constitutes certification that the disclosure is complete and correct at the time it was made. [ Note 3.] Disclosures also must be served. [ Note 4.]

Fed. R. Civ. P. 26 specifically exempts privileged information and work product from disclosure.

For a discussion of the duty to supplement initial disclosures, see TBMP § 408.03.

For a discussion of violations of Fed. R. Civ. P. 26(g), see TBMP § 408.01(c).

NOTES:

 1.   Fed. R. Civ. P. 26(a)(4); Fed. R. Civ. P. 26(g). See Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008).

 2.   Fed. R. Civ. P. 26(g)(1).

 3.   Fed. R. Civ. P. 26(g)(1)(A).

 4.   Fed. R. Civ. P. 26(a)(4).

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. [ Note 3.]

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 4.] Under these circumstances, the requirement of service of initial disclosures cannot be waived. [ Note 5.] 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, absent a Board-approved modification of the requirement to make initial disclosures prior to seeking discovery. [ Note 6.]

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 C.F.R. § 2.120(a)(1)  and 37 C.F.R. § 2.120(a)(2)(i); Fed. R. Civ. P. 26(f); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959, 69961 (October 7, 2016); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 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 C.F.R. § 2.120(a)(2)(iv); 37 C.F.R. § 2.120(a)(2)(v); and 37 C.F.R. § 2.120(a)(3). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016) (parties may "stipulate to limit discovery by shortening the period, limiting requests, using reciprocal disclosures in lieu of discovery, or eliminating discovery altogether").

 4.   37 C.F.R. § 2.120(a)(3)  and 37 C.F.R. § 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.").

 5.   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).

 6.   37 C.F.R. § 2.120(a)(3)  ("A party must make its initial disclosures prior to seeking discovery, absent modification of this requirement by a stipulation of the parties approved by the Board, or a motion granted by the Board, or by order of the Board."). 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).

402    Scope of Discovery

402.01    In General

Fed. R. Civ. P. 26(b)(1) Scope in General. Unless otherwise limited by court order, the scope of discovery is as follows: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable.

Fed. R. Civ. P. 26(g) Signing Disclosures and Discovery Requests, Responses, and Objections.

• (1) Signature Required; Effect of Signature. Every disclosure under Rule 26(a)(1) or (a)(3) and every discovery request, response, or objection must be signed by at least one attorney of record in the attorney’s own name — or by the party personally, if unrepresented — and must state the signer’s address, e-mail address, and telephone number. By signing, an attorney or party certifies that to the best of the person’s knowledge, information, and belief formed after a reasonable inquiry:
  • (A) with respect to a disclosure, it is complete and correct as of the time it is made; and
  • (B) with respect to a discovery request, response, or objection, it is:
    • (i) consistent with these rules and warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law, or for establishing new law;
    • (ii) not interposed for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation; and
    • (iii) neither unreasonable nor unduly burdensome or expensive, considering the needs of the case, prior discovery in the case, the amount in controversy, and the importance of the issues at stake in the action.
  
• (2) Failure to Sign. Other parties have no duty to act on an unsigned disclosure, request, response, or objection until it is signed, and the court must strike it unless a signature is promptly supplied after the omission is called to the attorney’s or party’s attention.

37 C.F.R. § 2.120(a)(1)  . . . The provisions of Rule 26 of the Federal Rules of Civil Procedure relating to . . . the scope, proportionality, timing and sequence of discovery, protective orders, signing of disclosures and discovery responses, and supplementation of disclosures and discovery responses, are applicable to Board proceedings in modified form . . . .

The general scope of discovery that may be obtained in inter partes proceedings before the Board is governed by Fed. R. Civ. P. 26(b)(1). [ Note 1.]

A party may take discovery as to matters that are relevant to its claims and defenses (i.e., those specifically raised in the pleadings), [ Note 2.] and such discovery may serve as the basis for an additional claim, defense, or counterclaim. [ Note 3.] Parties may not engage in "fishing expeditions" and must act reasonably in framing discovery requests. [ Note 4.] The parties are expected to take into account the principles of proportionality with regard to discovery. [ Note 5.] The scope of discovery in Board proceedings is generally narrower than in court proceedings, especially those involving infringement and/or where both parties have made extensive use of the marks. [ Note 6.] The guidelines set forth in Fed. R. Civ. P. 26(b)(1) also apply to the discovery of information stored in digital or electronic form. [ Note 7.] A party may not, by limiting its own discovery and/or presentation of evidence on the case, thereby restrict another party’s discovery in any way. [ Note 8.] However, parties are free to discuss agreed limits on discovery as a means of reducing the time and cost associated with discovery. [ Note 9.]

Each party has a duty to make a good faith effort to satisfy the discovery needs of its adversary and to seek only such discovery as is proper and relevant to the specific issues involved in the proceeding. [ Note 10.]

In addition, because the signature of a party or its attorney to a request for discovery constitutes, under the provisions of Fed. R. Civ. P. 26(g), a certification by the party or its attorney that, inter alia, the request is warranted, consistent with the Federal Rules of Civil Procedure, and not unreasonable or unduly burdensome, a party ordinarily will not be heard to contend that a request for discovery is proper when propounded by the party itself but improper when propounded by its adversary. [ Note 11.] A contention of this nature will be entertained only if it is supported by a persuasive showing of reasons why the discovery request is proper when propounded by one party but improper when propounded by another. [ Note 12.] For a further discussion regarding discovery guidelines, see TBMP § 408.01 and TBMP § 414.

For a discussion of the scope of required disclosures intended to obviate the need for some basic discovery, see TBMP § 401.

NOTES:

 1.   37 C.F.R. § 2.120(a)(1) See FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999) ("scope of discovery in a Board proceeding is governed by Fed. R. Civ. P. 26(b)(1)").

 2.   See Mack Trucks, Inc. v. Monroe Auto Equipment Co., 181 USPQ 286, 287 (TTAB 1974) (opposer must answer interrogatories concerning allegations in notice of opposition). See also The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2153, (TTAB 2013) (scope of permissible discovery would have been proportionately narrower if opposer had pleaded only the most relevant marks and clearly and specifically identified the goods and services relevant to this proceeding); Fed. R. Civ. P. 26(b)(1) Committee Notes on Rules – 2015 Amendment ("Proportional discovery relevant to any party’s claim or defense suffices, given a proper understanding of what is relevant to a claim or defense. The distinction between matter relevant to a claim or defense and matter relevant to the subject matter was introduced in 2000. The 2000 Note offered three examples of information that, suitably focused, would be relevant to the parties’ claims or defenses.").

 3.   See J. B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (information sought had a bearing on issues involved in proceeding but could also be a basis for providing information concerning possible abandonment, that, if revealed, may provide basis for counterclaim); Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171 (TTAB 1975) (the mere taking of discovery on matters concerning the validity of a pleaded registration, under any circumstances, cannot be construed as a collateral attack on the registration); Fed. R. Civ. P. 26(b)(1) Committee Notes on Rules – 2015 Amendment ("Discovery that is relevant to the parties’ claims or defenses may also support amendment of the pleadings to add a new claim or defense that affects the scope of discovery."). See also The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154, 2154 n.5 (TTAB 2013) (opposer’s unpleaded registrations are beyond the scope of discovery; party is free to conduct own investigation to determine whether a permissive counterclaim is warranted but should avoid further complicating the case by conducting the investigation through discovery).

 4.   Fed. R. Civ. P. 26(b). See Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987) (parties should seek only discovery which is proper and relevant to the specific issues involved in the case); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999) (". . . the right to discovery is not unlimited. Both the Trademark Rules and the Federal Rules of Civil Procedure grant the Board discretion to manage the discovery process."); Dow Corning Corp. v. The Doric Corp., 183 USPQ 377, 378 (TTAB 1974) ("tremendous and prolonged discovery" which lacked specificity and was "too comprehensive in scope" not warranted).

 5.   37 C.F.R. § 2.120(a)(1). See, e.g., Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1386 (TTAB 2016) (Board expects parties to take into account the principles of proportionality with regard to discovery); Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (Board applied proportionality principle to interrogatories, document requests and requests for admission); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2153 (TTAB 2013) (discussing principles of proportionality with respect to requests for admissions); Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908-10 (TTAB 2011) (Board applied proportionality principles to electronically-stored information). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951, 69960 (October 7, 2016).

 6.   Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1907 (TTAB 2011).

 7.   See 37 C.F.R. § 2.120(e); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016) ("To further reflect the Federal Rules of Civil Procedure, the [trademark] rules explicitly include references to electronically stored information . . . as subject matter for discovery.").

 8.   See Crane Co. v. Shimano Industrial Co., 184 USPQ 691, 691 (TTAB 1975) (scope of discovery limited only by restrictions in Fed. R. Civ. P. 26).

 9.   37 C.F.R. § 2.120(a)(2)(iv)  ("The parties may stipulate to a shortening of the discovery period, that there will be no discovery, that the number of discovery requests or depositions be limited, or that reciprocal disclosures be used in place of discovery."); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016).

 10.   Fed. R. Civ. P. 26(g). See Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1387 (TTAB 2016) (taking into account the grounds for opposition and proportionality, the Board found discovery requests tailored to the claims and framed to seek information that is clearly relevant); Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267-68 (TTAB 2015) (plaintiff’s discovery requests were irrelevant and improper because they went beyond what was necessary to prove the claims before the Board and were not appropriately tailored to elicit discoverable information); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013) (parties are entitled to seek discovery as they may deem necessary to help them prepare for trial, but it is not the practice of the Board to permit unlimited discovery to the point of harassment and oppressiveness); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987) ("each party and its attorney has a duty not only to make a good faith effort to satisfy the discovery needs of its opponent but also to make a good faith effort to seek only such discovery as is proper and relevant to the specific issues involved in the case."); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986) (same); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (same). Cf. Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908 (TTAB 2011) (opposer’s failure "to conduct an attorney-supervised ESI retrieval, research and review" does not necessarily mean the discovery efforts were inadequate under the circumstances).

 11.   See Fed. R. Civ. P. 26(g). See also Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) (petitioner estopped to challenge respondent’s interrogatories as excessive in number having served virtually identical set on respondent); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986) (parties who served identical discovery requests on each other in effect waived their right to object and must answer each request completely). See also Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (applicant, having served 114 interrogatories, is estopped from challenging opposer’s 122 interrogatories as excessive); Tektronix, Inc. v. Tek Associates, Inc., 183 USPQ 623, 623 (TTAB 1974) (each party was estopped from objecting to interrogatory requests served upon them by the opposing party which were essentially the same requests); Gastown Inc. of Delaware v. Gas City, Ltd., 180 USPQ 477, 477 (TTAB 1974) (opposer must answer applicant’s interrogatories which are similar to those which were served by opposer upon applicant). Cf. Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) (no estoppel where opposer served a different, albeit also excessive, set of interrogatories on applicant); Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990) (opposer not estopped from arguing that applicant’s interrogatories are excessive even though opposer also exceeded the limit because applicant waived its rights to complain because it did not file a motion for a protective order).

 12.   See Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) (Board was persuaded that certain interrogatories would be burdensome).

402.02    Limitations on Right to Discovery and on Electronically Stored Information

Fed. R. Civ. P. 26(b)(2)(A) When Permitted. By order, the court may alter the limits in these rules on the number of depositions and interrogatories or on the length of depositions under Rule 30. By order or local rule, the court may also limit the number of requests under Rule 36.

Fed. R. Civ. P. 26(b)(2)(B) Specific Limitations on Electronically Stored Information. A party need not provide discovery of electronically stored information from sources that the party identifies as not reasonably accessible because of undue burden or cost. On motion to compel discovery or for a protective order, the party from whom discovery is sought must show that the information is not reasonably accessible because of undue burden or cost. If that showing is made, the court may nonetheless order discovery from such sources if the requesting party shows good cause, considering the limitations of Rule 26(b)(2)(C). The court may specify conditions for the discovery.

The right to discovery is not unlimited. Even if the discovery sought by a party is relevant, it will be limited, or not permitted, where, inter alia, it is unreasonably cumulative or duplicative; or is unduly burdensome or obtainable from some other source that is more convenient, less burdensome, or less expensive; or "where harm to the person from whom discovery is sought outweighs the need of the person seeking discovery of the information." [ Note 1.]

For example, in those cases where complete compliance with a particular request for discovery would be unduly burdensome, the Board may permit the responding party to comply by providing a representative sampling of the information sought, or some other reduced amount of information which is nevertheless sufficient to meet the propounding party’s discovery needs. [ Note 2.]

In addition, a party will not be permitted to obtain, through a motion to compel, discovery broader in scope than that actually sought in the discovery request(s) to which the motion pertains. [ Note 3.]

Discovery of confidential commercial information is subject to the terms of the Board’s standard protective order, or an appropriate alternative protective agreement or order. [ Note 4.] For a further discussion of protective orders, see TBMP § 412.

Similarly, information protected by the attorney-client privilege is not discoverable unless the privilege has been waived [ Note 5.]; and documents and things prepared in anticipation of litigation or for trial by or for another party, or by or for that other party’s representative, are discoverable only upon a showing that the party seeking discovery has substantial need of the materials in the preparation of its case and that it is unable, without undue hardship, to obtain the substantial equivalent of the materials by other means. [ Note 6.]

Fed. R. Civ. P. 26(b)(2)(B) also provides for limitations regarding the discovery of electronically stored information (ESI). Specifically, a "party need not provide discovery of [ESI] from sources that the party identifies as not reasonably accessible because of undue burden or cost." [ Note 7.] Pursuant to the rule, when an adverse party seeks to compel the production of such material, the party resisting discovery must show that the material sought is "not reasonably accessible because of undue burden or cost." [ Note 8.] If that showing is made, the burden shifts to the requesting party to show good cause for the production of the not-reasonably-accessible electronically stored information. [ Note 9.] In deciding whether the requisite showing has been made, the Board will consider, as it would in any discovery dispute, whether (i) "the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive;" (ii) "the party seeking discovery has had ample opportunity to obtain the information by discovery in the action;" or (iii) "proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit." [ Note 10.]

With respect to the adequacy of ESI production, there is an increasing focus on the question of proportionality and whether extensive ESI discovery is necessary and justified. [ Note 11.] In view of the Board’s limited jurisdiction, the narrowness of the issues to be decided by the Board, and the concerns existing with respect to excessive e-discovery, the burden and expense of e-discovery will weigh heavily against requiring production in most cases. Parties are to be precise in their requests and should have as their first consideration how to significantly limit the expense of such production. [ Note 12.]

NOTES:

 1.   See Micro Motion Inc. v. Kane Steel Co., 894 F.2d 1318, 13 USPQ2d 1696, 1699 (Fed. Cir. 1990); Fed. R. Civ. P. 26(b)(2). See also Haworth Inc. v. Herman Miller Inc., 998 F.2d 975, 27 USPQ2d 1469, 1472 (Fed. Cir. 1993) (must first seek discovery from party before burdening non-party); Katz v. Batavia Marine & Sporting Supplies Inc., 984 F.2d 422, 25 USPQ2d 1547, 1549 (Fed. Cir. 1993) (in response to non-party’s prima facie showing that discovery was burdensome, party did not meet burden of showing need for information sought); Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (large number of discovery requests was unduly burdensome, harassing, and oppressive); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999) (motion for protective order to prohibit deposition of "very high-level official of a large corporation" granted).

 2.   See, e.g., Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir. 2012) (Board did not abuse its discretion by refusing to strike plaintiff’s evidence where defendant failed to follow up on plaintiff’s offer to produce the evidence at a mutually agreeable time and place and in view of defendant’s failure to file a motion to compel); Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1910 (TTAB 2011) (representative samples of documents, including ESI, required for certain requests); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (where applicant gave partial answers and otherwise objected to requests as cumulative or burdensome but opposer did not file motion to compel, modify discovery requests, or otherwise pursue material, objection to evidence introduced by applicant at trial was overruled), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994);Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720 (TTAB 1987) (production of representative sample was not appropriate where full production, that is, a total of eleven documents, was clearly not burdensome); Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147, 148 (TTAB 1985) (representative sample of invoices from identified calendar quarters is sufficient where there are so many items as to make respondent’s task unduly burdensome); J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (permitted to identify reasonable number of corporate officers most knowledgeable); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (burden of calculating sales and advertising figures in round numbers for six categories of goods for each year since 1936 mitigated by limiting sales figures to five most recent years); Van Dyk Research Corp. v. Xerox Corp., 181 USPQ 346, 348 (TTAB 1974) (applicant allowed to produce ten representative samples of documents pertaining to the marketing of each copy machine or as alternative, may allow opposer’s representative to visit sites where relevant documents are kept); Mack Trucks, Inc. v. Monroe Auto Equipment Co., 181 USPQ 286, 288 (TTAB 1974) (allowed to furnish representative samples of advertisements).

 3.   Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167, 170 (TTAB 1980).

 4.   37 C.F.R. § 2.116(g)  (Board’s standard protective order automatically applies to all cases absent Board approval of a substitute); Fed. R. Civ. P. 26(c)(1)(G); Intex Recreation Corp. v. Coleman Co., 117 USPQ2d 1799, 1801 (TTAB 2016) (Board standard protective order is automatically in place, and party should have designated confidential documents under the appropriate tier of confidentiality or sought modification of the order); Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1862 (TTAB 2001) (protective agreement would adequately protect against disclosure of trade secret manufacturing and technical information); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (unless issue is abandonment or first use, party need not reveal names of its customers, including dealers, it being sufficient to identify classes of customers and types of businesses); Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167, 170 (TTAB 1980) (need for names of customers, as in case where issue is abandonment, outweighs justification for protecting customer confidentiality); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (protective order must contain provision that customer names will be revealed only to applicant’s attorneys). See also Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147, 148 (TTAB 1985) (protective orders available for confidential material); Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583 (TTAB 1975) ("While it is the Board’s policy not to require the disclosure of customer and mailing lists, a party may be asked to reveal the particular classes of customers or the types of businesses in which they are engaged."); J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (as a general rule, party need not furnish names of actual customers); Ortho Pharmaceutical Corp. v. Schattner, 184 USPQ 556, 557-58 (TTAB 1975) (discussing whether certain interrogatories seek proprietary or confidential matter); Miller & Fink Corp. v. Servicemaster Hospital Corp., 184 USPQ 495, 495-96 (TTAB 1975) (opposer need only reveal the classes of people to whom such goods sold under the mark are distributed and not the actual customer names); Cool-Ray, Inc. v. Eye Care, Inc., 183 USPQ 618, 621 (TTAB 1974) (names of applicant’s customers are confidential information and the need to protect customers from harm such as harassment outweighs disclosure).

 5.   Fed. R. Civ. P. 26(b)(5). See, e.g., In re Seagate Technology LLC, 497 F.3d 1360, 83 USPQ2d 1865, 1873 (Fed. Cir. 2007) (attorney-client privilege provides absolute protection from disclosure unless waived), abrogated on the other grounds by Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923, 195 L.Ed.2d 278 (2016; Genentech Inc. v. U.S. International Trade Commission, 122 F.3d 1409, 43 USPQ2d 1722, 1728 (Fed. Cir. 1997) ("Generally disclosure of confidential communications or attorney work product to a third party, such as an adversary in litigation, constitutes a waiver of privilege as to those items."); Red Wing Co. v. J. M. Smucker Co., 59 USPQ2d 1861, 1864 n.5 (TTAB 2001) (party making claim of privilege must do so expressly and otherwise describe the nature of the withheld information as provided in Fed. R. Civ. P. 26(b)(5)). See also Fed. R. Evid. 502 and Explanatory Note on Evidence Rule 502 (revised November 28, 2007) regarding attorney-client privilege and limitations on waiver.

 6.   Fed. R. Civ. P. 26(b)(3) and 26(b)(5). See, e.g., In re Seagate Technology LLC, 497 F.3d 1360, 83 USPQ2d 1865, 1874 (Fed. Cir. 2007) (work product protection is qualified and absent waiver may be overcome by a showing of need and undue hardship but a higher burden must be met to obtain that pertaining to mental processes), abrogated on other grounds by Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923, 195 L.Ed.2d 278 (2016); Goodyear Tire & Rubber Co. v. Tyrco Industries, 186 USPQ 207, 208 (TTAB 1975) (the fact that an attorney may have given an opinion to a client is not in and of itself privileged information; only the substance of the communication is considered privileged); Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171 (TTAB 1975) (opposer must provide discovery of matters, not privileged, relevant to the subject matter of the Board proceeding). See also Miles Laboratories, Inc. v. Instrumentation Laboratory, Inc., 185 USPQ 432, 434 (TTAB 1975) ("search reports, per se do not fall within the attorney-client privilege . . . [h]owever any comments or opinions provided by opposer’s attorney in relation thereto are privileged"); Amerace Corp. v. USM Corp., 183 USPQ 506, 507 (TTAB 1974) (trademark search report not privileged; comments or opinions of attorney relating thereto fall within attorney-client privilege); Goodyear Tire & Rubber Co. v. Uniroyal, Inc., 183 USPQ 372, 374-75 (TTAB 1974) (discussing attorney-client privilege and work product rule). See also Fed. R. Evid. 502 and Explanatory Note on Evidence Rule 502 (revised November 28, 2007) regarding work product and limitations on waiver.

 7.   Fed. R. Civ. P. 26(b)(2)(B).

 8.   Fed. R. Civ. P. 26(b)(2)(B). See, e.g., Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1910 (TTAB 2011) (opposer established that all of the specific materials applicant sought in response to specified requests were not reasonably accessible because of undue burden or costs).

 9.   Fed. R. Civ. P. 26(b)(2)(B). See, e.g., Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1910 (TTAB 2011) (applicant established that some of the requested documents should be produced before taking depositions).

 10.   Fed. R. Civ. P. 26(b)(1) and 26(b)(2)(C).

 11.   Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908 (TTAB 2011). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016) ("The Board continues to view the universe of ESI within the context of its narrower scope of jurisdiction, as compared to that of the federal district courts. The burden and expense of e-discovery will weigh heavily in any consideration.").

 12.   Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1909 (TTAB 2011) (opposer not required to start its document production over where parties did not agree on ESI discovery protocol, applicant failed to show opposer’s methods were insufficient, and given the nature of the requests and issues involved).

403    Timing of Discovery

403.01    In General

37 C.F.R. § 2.120(a)  [Discovery]

• (1) . . . The Board will specify the deadline for a discovery conference, the opening and closing dates for the taking of discovery, and the deadlines within the discovery period for making initial disclosures and expert disclosure. The trial order setting these deadlines and dates will be included with the notice of institution of the proceeding.
• (2)
  • (i) . . . The discovery period will be set for a period of 180 days.
  • * * * *
  • (iv) The parties may stipulate to a shortening of the discovery period . . . . Limited extensions of the discovery period may be granted upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. If a motion for an extension is denied, the discovery period may remain as originally set or as reset. * * * *
  
• (3) . . . Discovery depositions must be properly noticed and taken during the discovery period. Interrogatories, requests for production of documents and things, and requests for admission must be served early enough in the discovery period, as originally set or as may been reset by the Board, so that responses will be due no later than the close of discovery. * * * *

When a timely opposition or petition to cancel in proper form has been filed, and the required fee has been submitted (or at the time described in 37 C.F.R. § 2.92  for an interference and 37 C.F.R. § 2.99(c)  for a concurrent use proceeding), the Board sends out a notice advising the parties of the institution of the proceeding and provides a web link or web address to access the electronic proceeding record which constitutes service of the proceeding. [ Note 1.] See TBMP § 310, TBMP § 1003 and TBMP § 1106. The notice includes a trial order setting the opening and closing dates for the discovery period, assigning each party’s time for taking testimony, and the deadlines for the discovery conference and disclosures. [ Note 2.] The opening of discovery coincides with the deadline for the discovery conference. The date set for the close of discovery is 180 days after the opening of discovery.

Parties may modify the discovery and trial schedule, including the deadline for making disclosures, if the parties file, and the Board approves, a stipulation or motion to that effect. [ Note 3.] Parties must inform the Board, by stipulation or motion, any time they agree to modify their obligations under the rules governing disclosures and discovery, as well as when they agree to modify deadlines or schedules that involve disclosures, discovery, trial or briefing. [ Note 4.] In addition to stipulating to extend the discovery period, parties may stipulate to shorten the discovery period. [ Note 5.] The expert disclosure deadline, however, must always be scheduled prior to the close of discovery. [ Note 6.]

The traditional discovery devices, namely, discovery depositions, interrogatories, requests for production of documents and things, and requests for admission, are available for use only during the discovery period. [ Note 7.] For further information regarding the timing of discovery requests and discovery depositions, see TBMP § 403.02. A party has no obligation to respond to the merits of an untimely request for discovery, nor is a party obliged to respond to the merits of discovery when initial disclosures have not been served, although a party should object on those bases. [ Note 8.]

For further information regarding the timing of initial, expert, and pretrial disclosures for inter partes proceedings, see TBMP § 401.02, TBMP § 401.03, and TBMP § 702.01.

NOTES:

 1.   37 C.F.R. § 2.105(a)  and 37 C.F.R. § 2.113(a).

 2.   37 C.F.R. § 2.120(a)(1)  and 37 C.F.R. § 2.121(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).

 3.   37 C.F.R. § 2.120(a)(2)(iv); 37 C.F.R. § 2.120(a)(3); 37 C.F.R. § 2.121(a); 37 C.F.R. § 2.121(c); and 37 C.F.R. § 2.121(d). See, e.g., Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 (TTAB 2013) (parties stipulated to waive pretrial disclosures); 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).

 4.   37 C.F.R. § 2.120(a)(2)(iv); 37 C.F.R. § 2.120(a)(3); 37 C.F.R. § 2.121(a); 37 C.F.R. § 2.122(c); and 37 C.F.R. § 2.121(d). See Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767-68 (TTAB 2008) (parties must inform Board by stipulation or motion when they agree to modify their disclosure and discovery obligations; the parties’ filing should include a description of alternate plans for discovery).

 5.   37 C.F.R. § 2.120(a)(2)(iv). See H.D. Lee Co. v. Maidenform, Inc., 87 USPQ2d 1715, 1720 n.55 (TTAB 2008) (parties may stipulate to shortening of discovery period).

 6.   37 C.F.R. § 2.120(a)(2)(iv).

 7.   37 C.F.R. § 2.120(a)(3). See also Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978) (although a specific time period is not provided in Fed. R. Civ. P. 34, it is implicit that utilization thereof is limited to the discovery period); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978) (depositions are to be taken during discovery period) .

 8.   37 C.F.R. § 2.120(a)(3). See Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1270 (TTAB 2017) (discovery must be served "early enough … so that responses will be due no later than the close of discovery"); Dating DNA, LLC v. Imagini Holdings, LLC, 94 USPQ2d 1889, 1893 (TTAB 2010) (service of initial disclosures is a prerequisite to taking discovery); Amazon Technologies v. Wax, 93 USPQ2d 1702, 1704-06 (TTAB 2009) (opposer’s mistaken belief that applicant failed to serve initial disclosures does not excuse opposer’s failure to respond to or properly object to applicant’s interrogatories and document requests on the basis of failure to serve initial disclosures).

403.02    Time for Service of Discovery Requests and Taking of Depositions

37 C.F.R. § 2.120(a)(3)  . . . Discovery depositions must be properly noticed and taken during the discovery period. Interrogatories, requests for production of documents and things, and requests for admission must be served early enough in the discovery period, as originally set or as may have been reset by the Board, so that responses will be due no later than the close of discovery. * * * *

A party may serve written interrogatories, requests for production and things, and requests for admissions on an adversary during the discovery period in an inter partes proceeding before the Board; however, the serving party must have already made its initial disclosures, absent a granted stipulation, granted motion, or order of the Board to the contrary. [ Note 1.] Written discovery may be served concurrently with initial disclosures. [ Note 2.] Additionally, a party cannot notice depositions until it has served its initial disclosures, absent a granted stipulation, granted motion, or order of the Board to the contrary. [ Note 3.] Discovery depositions must be not only properly noticed but also taken during the discovery period (unless the parties stipulate, approved by the Board, to an extension of the period or the Board orders an extension of the period for purposes of taking the deposition). [ Note 4.] Interrogatories, requests for production of documents and things, and requests for admission must be served early enough in the discovery period, as originally set or as may have been reset by the Board, so that responses, including production or inspection of documents, will be due no later than the close of discovery. [ Note 5.] Service of discovery must be made by email, unless otherwise stipulated, or if the serving party shows by written explanation that it attempted service by email but such service could not be made due to technical problems or extraordinary circumstances, by the manner described in 37 C.F.R. § 2.119(b)(1)  - 37 C.F.R. § 2.119(b)(4); however, a party not domiciled in the United States or not represented by an attorney or authorized representative in the United States, is not eligible to use United States postal mail. [ Note 6.]

NOTES:

 1.   37 C.F.R. § 2.120(a)(3)  ("A party must make its initial disclosures prior to seeking discovery . . . ."); Dating DNA, LLC v. Imagini Holdings, LLC, 94 USPQ2d 1889 (TTAB 2010) (motion to compel denied where moving party failed to make initial disclosures; service of initial disclosures is a prerequisite to taking discovery).

 2.   37 C.F.R. § 2.120(a)(3). See also Luster Products Inc. v. Van Zandt, 104 USPQ2d 1877, 1879 n.2 (TTAB 2012) (initial disclosures may be served concurrently with discovery requests).

 3.   37 C.F.R. § 2.120(a)(2)(iv)  and 37 C.F.R. § 2.120(a)(3).

 4.   37 C.F.R §2.120(a)(2)(iv); 37 C.F.R. § 2.120(a)(3). See National Football League v. DNH Management LLC, 85 USPQ2d 1852 (TTAB 2008) (motion to quash granted where deposition noticed during discovery but scheduled after close of discovery); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978) (discovery may not be taken outside the discovery period); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978) (motion to quash granted where party noticed deposition for a date subsequent to the expiration of the discovery period).

 5.   37 C.F.R. § 2.120(a)(3). See alsoEstudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1270 (TTAB 2017) (discovery must be served "early enough … so that responses will be due no later than the close of discovery"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951, 69960 (October 7, 2016).

 6.   37 C.F.R. § 2.119(b)  and 37 C.F.R. § 2.119(d).

403.03    Time for Service of Discovery Responses

37 C.F.R. § 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. The time to respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery. * * * *

Responses to interrogatories, requests for production of documents and things, and requests for admission must be served within thirty days after the date of service of the request for discovery. [ Note 1.] Service must be made by email, unless otherwise stipulated, or if the serving party attempted service by email but service could not be made due to technical problems or extraordinary circumstances, by the manner described in 37 C.F.R. § 2.119(b)(1)  - 37 C.F.R. § 2.119(b)(4). However, a party not domiciled in the United States or not represented by an attorney or authorized representative in the United States, is not eligible to use United States postal mail. [ Note 2.] Please Note: 37 C.F.R. § 2.119(c)  was amended in January 2017 to remove the provision adding five days to the prescribed period for action after service by the postal service or overnight courier; no additional time is available for responding to discovery requests due to manner of service. [ Note 3.]

The time to respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery. [ Note 4.] For further information regarding extensions of the discovery period and time to respond to discovery requests and disclosures, see TBMP § 403.04.

Discovery in proceedings before the Board is not governed by any concept of priority of right to take discovery or depositions. That is, a party which is the first to serve a request for discovery does not thereby gain an absolute right to receive a response to its request before it must respond to its adversary’s subsequently served request for discovery, and this is so even if its adversary fails to respond, or respond completely, to the first party’s request for discovery. Instead, each party is under an obligation to cooperate and to respond to an adversary’s request for discovery during the time allowed therefor under the applicable rules, irrespective of the sequence of requests for discovery or of an adversary’s failure to respond to a pending request for discovery. [ Note 5.] Thus, in the absence of objections or extensions, a party that is the first to serve discovery requests can be expected to receive responses first, and parties are always encouraged to initiate any necessary discovery early, but because the ability and/or willingness of an adverse party to respond to discovery can vary, there is no guarantee that the first party to serve discovery will be the first party to receive responses.

Because interrogatories, requests for production, and requests for admissions must be served early enough that responses will be due by the closing date of discovery, a responding party may object to such discovery requests on the ground that they were served so late that responses would be due after the close of discovery. [ Note 6.]

A party which fails to respond to interrogatories or document requests during the time allowed therefor, and which is unable to show that its failure was the result of excusable neglect, may be found, upon motion to compel filed by the propounding party, to have forfeited its right to object to the discovery request on its merits. [ Note 7.] For requests for admissions, which are deemed admitted due to failure to respond or timely respond, a party may either (1) move to reopen its time to respond to the admission requests because its failure to timely respond was the result of excusable neglect under Fed. R. Civ. P. 6(b)(1)(B), or (2) move to withdraw and amend its admissions pursuant to Fed. R. Civ. P. 36(b). [ Note 8.] For a further discussion regarding admission requests, see TBMP § 407. Objections going to the merits of a discovery request include claims that the information sought by the request is irrelevant, overly broad, unduly vague and ambiguous, burdensome and oppressive, or not likely to lead to the discovery of admissible evidence. [ Note 9.] In contrast, objections based on claims of privilege or confidentiality or attorney work product do not go to the merits of the request, but instead to a characteristic of the information sought. [ Note 10.]

NOTES:

 1.   37 C.F.R. § 2.120(a)(3); Fed. R. Civ. P. 33(b)(2), Fed. R. Civ. P. 34(b)(2)(A), and Fed. R. Civ. P. 36(a)(3). See Amazon Technologies v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (opposer’s mistaken belief that applicant failed to serve initial disclosures does not excuse opposer’s failure to respond to or properly object to applicant’s interrogatories and document requests); MySpace Inc. v. Donnell Mitchell, 91 USPQ2d 1060, 1061 n.2 (TTAB 2009) (requirement to serve responses by particular date means having service copies in the mail on or before that date).

 2.   37 C.F.R. § 2.119(b)  and 37 C.F.R. § 2.119(d).

 3.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).

 4.   37 C.F.R. § 2.120(a)(3). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016) ("[D]iscovery must be served early enough in the discovery period that responses will be provided and all discovery complete by the close of discovery.").

 5.   Fed. R. Civ. P. 26(d)(3); Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1070 (TTAB 1990) (discovery in Board proceeding not governed by any concept of priority of discovery); Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626, 632 (TTAB 1986) (no priority of discovery; "it is not the prerogative . . . for parties or their counsel to unilaterally impose conditions upon the sequence and timing of discovery which are not provided by the rules governing practice before the Board").

 6.   37 C.F.R. § 2.120(a)(3); see Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1271 (TTAB 2017) (sustaining an objection to discovery requests as untimely because the answers were due after the close of the discovery period; but allowing propounding party time to re-serve the requests due to its misunderstanding regarding the time by which the requests had to be served under the Board’s recently revised rules).

 7.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000) (stating that the Board has great discretion in determining whether such forfeiture should be found); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448, 449 (TTAB 1979) (excusable neglect not shown where opposer was out of the country and, upon return, failed to ascertain that responses were due); Crane Co. v. Shimano Industrial Co., 184 USPQ 691, 691 (TTAB 1975) (waived right to object by refusing to respond to interrogatories, claiming that they served "no useful purpose"). See also Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1387-88 (TTAB 2016) (applicant ordered to show cause why sanction forfeiting her right to object to discovery requests on the merits should not be entered after she filed improper motion for purpose of delaying her discovery responses); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1303 (TTAB 1987) (right to object not waived where although discovery responses were late, there was some confusion regarding time to answer); and MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953 (TTAB 1979) (party seeking discovery is required to make good faith effort to determine why no response has been made before coming to Board with motion to compel).

 8.   See Giersch v. Scripps Networks, Inc., 85 USPQ2d 1306, 1307 (TTAB 2007) (discussing reopening time to respond to requests for admissions under Fed. R. Civ. P. 6(b)(1)(B) and withdrawal and amendment of admissions under Fed. R. Civ. P. 36(b)). See also Hobie Designs, Inc. v. Fred Hayman Beverly Hills, Inc., 14 USPQ2d 2064, 2065 (TTAB 1990) (amending admissions under Fed. R. Civ. P. 36(b)).

 9.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000).

 10.   See Cadbury UK Ltd. v. Meenaxi Enterprises, Inc., 115 USPQ2d 1404, 1408 n.7 (TTAB 2015) (Board has distinguished objections on the merits of a discovery request from other types of objections such as confidentiality and privilege); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000) (party will generally not be found to have waived the right to make non-merit objections).

403.04    Extensions of Discovery Period, Time to Respond to Discovery Requests and Disclosures

37 C.F.R. § 2.120(a)(2)(iv)  [Discovery] . . . Limited extensions of the discovery period may be granted upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. If a motion for an extension is denied, the discovery period may remain as originally set or as reset. * * * *

37 C.F.R. § 2.120(a)(3)  . . . The time to respond [to interrogatories, requests for production of documents and things, and requests for admission] may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery. The resetting of a party’s time to respond to an outstanding request for discovery will not result in the automatic rescheduling of the discovery and/or testimony periods; such dates will be rescheduled only upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board.

37 C.F.R. § 2.121(a)  [Assignment of times for taking testimony and presenting evidence] . . . The resetting of the closing date for discovery will result in the rescheduling of pretrial disclosure deadlines and testimony periods without action by any party.

* * * *

37 C.F.R. § 2.121(d)  When parties stipulate to the rescheduling of a deadline for pretrial disclosures and subsequent testimony periods or to the rescheduling of the closing date for discovery and the rescheduling of subsequent deadlines for pretrial disclosures and testimony periods, a stipulation presented in the form used in a trial order, signed by the parties, or a motion in said form signed by one party and including a statement that every other party has agreed thereto, shall be submitted to the Board through ESTTA, with the relevant dates set forth and an express statement that all parties agree to the new dates.

Limited extensions of the discovery period may be granted upon stipulation of the parties approved by the Board, or on motion (pursuant to Fed. R. Civ. P. 6(b)) granted by the Board, or by order of the Board. [ Note 1.] An extension of the closing date for discovery will result in a corresponding resetting of the pretrial disclosure deadlines and testimony periods without action by any party. [ Note 2.] Also, the expert disclosure deadline must always be scheduled prior to the close of discovery. [ Note 3.] Therefore, when the parties stipulate to an extension of the closing date for discovery, or a motion for such an extension is granted, or the Board orders such an extension, the Board ordinarily will reset the deadline for expert disclosure. However, if the time for serving expert disclosures has passed and it is clear from the record that such expert disclosures have been served or the parties have made it clear that they do not intend to use experts, the Board may not reset the time for expert disclosures. A stipulation or consented motion to extend discovery, pretrial disclosure, and trial dates must be filed with the Board through ESTTA, and should be presented in the form used in a trial order with the relevant dates set forth. [ Note 4.] For information concerning stipulations to extend, see TBMP § 501.03. For information concerning motions to extend, see TBMP § 509.

Mere delay in initiating discovery does not constitute good cause for an extension of the discovery period. [ Note 5.] Thus, a party which waits until late in the discovery period to serve interrogatories, requests for production of documents and things, and/or requests for admission will not be heard to complain, when it receives responses thereto near the end of the discovery period, that it needs an extension or reopening of the discovery period in order to take "follow-up" discovery. [ Note 6.]

At the same time, a party which receives discovery requests early in the discovery period may not, by delaying its response thereto, or by responding improperly so that its adversary is forced to file a motion to compel discovery, deprive its adversary of the opportunity to take "follow-up" discovery. Such a delay or improper response constitutes good cause for an extension of the discovery period. Therefore, the Board will, at the request of the propounding party, extend the discovery period (at least for the propounding party) so as to restore that amount of time which would have remained in the discovery period had the discovery responses been made in a timely and proper fashion. [ Note 7.]

The time for responding to a request for discovery may be extended or reopened by stipulation of the parties, or on motion (pursuant to Fed. R. Civ. P. 6(b)) granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery. [ Note 8.] An extension of a party’s time to respond to an outstanding request for discovery will not automatically result in a corresponding extension of the deadline for expert disclosures, close of discovery, or any subsequent deadlines (including pretrial disclosures and the close of the parties’ testimony periods). [ Note 9.] Such periods will be rescheduled only on stipulation of the parties approved by the Board, or on motion granted by the Board, or by order of the Board.

A stipulation to extend or reopen only the time for responding to written discovery (that is, a request that does not also seek to extend or reopen the closing date for the discovery period and/or other subsequent deadlines) does not always have to be filed with the Board, but may be required in certain circumstances. If the stipulation to extend or reopen the time for responding to a discovery request interferes with the orderly completion of discovery or the opening of trial, the parties must first obtain Board approval. [ Note 10.] Further, to avoid any misunderstanding between the parties as to the existence and terms of such a stipulation, it is recommended that the stipulation be reduced to writing, even if it is not one which need be filed with the Board.

A party’s time to make initial or expert disclosures may be reset upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board, but the expert disclosure deadline must always be scheduled prior to the close of discovery. [ Note 11.] The resetting of a party’s time to make initial disclosures (that is, a request that does not also seek to extend or reopen subsequent deadlines) will not result in an automatic rescheduling of the deadline for expert disclosure or of the close of discovery or any subsequent deadlines. Such dates will be rescheduled upon approval of an appropriate stipulation of the parties, or motion of a party, or by order of the Board. However, when the parties stipulate to an extension of the deadline for expert disclosure, or a motion seeking such an extension is granted, or the Board orders such an extension, the Board will extend the closing date of discovery to the extent necessary to schedule the expert disclosure deadline prior to the close of the discovery period.

For a discussion regarding modification of disclosure obligations, see TBMP § 401.04.

NOTES:

 1.   37 C.F.R. § 2.120(a)(2)(iv). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016) ("The Office is further amending § 2.120(a)(2)(iv) to clarify that extensions of the discovery period granted by the Board will be limited.").

 2.   37 C.F.R. § 2.121(a).

 3.   37 C.F.R. § 2.120(a)(2)(iv). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).

 4.   37 C.F.R. § 2.121(d).

 5.   See National Football League v. DNH Management LLC, 85 USPQ2d 1852, 1854-55 (TTAB 2008) (opposers’ motion to extend discovery period denied where opposers did not serve written discovery requests until final day of discovery, and did not attempt to depose applicant during prescribed discovery period, and evidence does not support opposers’ claim that they delayed discovery because parties were engaged in settlement discussions); Dating DNA, LLC v. Imagini Holdings, Ltd., 94 USPQ2d 1889, 1892 n.3 (TTAB 2010) ("a party that delays in initiating discovery . . . generally is not entitled to an extension to allow for follow-up discovery"); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987) (no reason given why discovery was not taken during the time allowed).

 6.   See Dating DNA, LLC v. Imagini Holdings, Ltd., 94 USPQ2d 1889, 1892 n.3 (TTAB 2010); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987); American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1316 n.4 (TTAB 1992).

 7.   See Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1070 (TTAB 1990) (Board will, upon motion, reopen or extend discovery solely for benefit of party who was unfairly deprived of follow-up discovery by opponent who wrongfully refused to answer or delayed responses to discovery); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (granting motion to extend time to restore amount of time remaining in discovery to the day when applicant’s interrogatories were served).

 8.   37 C.F.R. § 2.120(a)(3). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016) (". . . when the time to respond [to discovery] is extended, discovery responses may not be due later than the close of discovery.").

 9.   37 C.F.R. § 2.120(a)(3)  and 37 C.F.R. § 2.121(a). See PolyJohn Enterprises Corp. v. 1-800-TOILETS, Inc., 61 USPQ2d 1860, 1861 (TTAB 2002) (mistaken belief that resetting time to respond to discovery also extended discovery and testimony periods did not constitute excusable neglect to reopen).

 10.   Fed. R. Civ. P. 29(b). See Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1768 n.2 (TTAB 2008) (written stipulations to extend period to respond to discovery requests need only be filed with the Board when the extension may interfere with the orderly completion of discovery or the opening of trial).

 11.   37 C.F.R. § 2.120(a)(2)(iv).

403.05    Need for Early Initiation of Discovery

403.05(a)    To Allow Time for "Follow-up" Discovery

Pursuant to 37 C.F.R. § 2.120(a)(3), interrogatories, requests for production of documents and things, and requests for admission must be served early enough in the discovery period, as originally set or as may have been reset by the Board, so that responses will be due no later than the close of discovery. If a party wishes to have an opportunity to take "follow-up" discovery after it receives responses to its initial requests for discovery, it must serve its initial requests early in the discovery period, so that when it receives responses thereto, it will have time to prepare and serve additional discovery requests, the responses to which also must be due no later than the close of the discovery period. See TBMP § 403.04.

403.05(b)    To Facilitate Introduction of Produced Documents

37 C.F.R. § 2.120(i)  Requests for admission. The total number of requests for admission which a party may serve . . . shall not exceed seventy-five. . . . [I]ndependent of this limit, a party may make one comprehensive request for admission of any adverse party that has produced documents for an admission authenticating specific documents, or specifying which of those documents cannot be authenticated.

37 C.F.R. § 2.120(k)(3)(ii)  [Use of discovery deposition, answer to interrogatory, admission or written disclosure.] A party that has obtained documents from another party through disclosure or under Rule 34 of the Federal Rules of Civil Procedure may not make the documents of record by notice of reliance alone, except to the extent that they are admissible by notice of reliance under the provisions of § 2.122(e), or the party has obtained an admission or stipulation from the producing party that authenticates the documents.

37 C.F.R. § 2.122(e)  Printed publications and official records.

• (1) Printed publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant in a particular proceeding, and official records, if the publication or official record is competent evidence and relevant to an issue, may be introduced in evidence by filing a notice of reliance on the material being offered in accordance with paragraph (g) of this section. The notice of reliance shall specify the printed publication (including information sufficient to identify the source and the date of the publication) or the official record and the pages to be read; and be accompanied by the official record or a copy thereof whose authenticity is established under the Federal Rules of Evidence, or by the printed publication or a copy of the relevant portion thereof. A copy of an official record of the Office need not be certified to be offered in evidence.
• (2) Internet materials may be admitted into evidence under a notice of reliance in accordance with paragraph (g) of this section, in the same manner as a printed publication in general circulation, so long as the date the internet materials were accessed and their source (e.g., URL) are provided.

37 C.F.R. § 2.122(g) Notices of Reliance. . . . A notice of reliance shall be filed during the testimony period of the party that files the notice. For all evidence offered by notice of reliance, the notice must indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding. Failure to identify the relevance of the evidence, or associate it with issues in the proceeding, with sufficient specificity is a procedural defect that can be cured by the offering party within the time set by Board order.

Documents produced in response to a request for production of documents or through disclosures may not be made of record by notice of reliance alone, except to the extent that the documents are otherwise admissible by notice of reliance, for example, as printed publications or official records under 37 C.F.R. § 2.122(e). However, there are a number of different methods by which documents produced in response to a request for production of documents that do not qualify for submission under 37 C.F.R. § 2.122(e)  may be made of record. See TBMP § 704.09 and TBMP § 704.11. The most straightforward way is for the parties to stipulate that any party may introduce by notice of reliance documents produced by any other party, subject only to objections as to relevance and competence, materiality, or weight. [ Note 1.] Three other methods are available for use only if the request for production of documents is served relatively early in the discovery period.

First, if there remains sufficient time in the discovery period for requests for admission to be served and answered, a party that has obtained documents from another party through a request for production of documents or through disclosures may serve on its opponent a request for admission of the genuineness of the subject documents, which should be attached as exhibits to the request for admission. [ Note 2.] Independent of the numerical limit on the number of requests for admission that may be served during a proceeding, a party is allowed one comprehensive request for admission of any adverse party that has produced documents for authenticating specific documents, or specifying which of those documents cannot be authenticated. [ Note 3.] Then, during its testimony period, the propounding party may file a notice of reliance, pursuant to 37 C.F.R. § 2.120(k)(3)(ii), on the request for admission, the exhibits thereto, and its adversary’s response.

Second, if the discovery period has not yet expired, the party which obtained the documents may make them of record by taking a discovery deposition of its adversary, marking the documents as exhibits thereto, and having the witness identify the documents during the deposition. The propounding party may then submit the deposition and identified exhibits during its testimony period under a notice of reliance. Alternatively, the documents may be introduced during the taking of a testimonial deposition of an adversary who can identify the documents. [ Note 4.]

Third, the request for production of documents may be combined with a notice of the taking of the adversary’s discovery deposition; that is, the combined request and notice may ask that the deponent bring the requested documents to his or her deposition. However, a party served with a request for production of documents has thirty days from the date of service of the request in which to respond thereto. See TBMP § 403.03. Moreover, in proceedings before the Board, a discovery deposition must be both properly noticed and taken before the end of the discovery period. [ Note 5.] See TBMP § 403.02. Thus, a combined notice of deposition and request for production of documents normally must be served at least thirty days prior to the close of the discovery period. [ Note 6.]

For a full discussion of making evidence of record in a Board proceeding, see TBMP Chapter 700.

NOTES:

 1.   37 C.F.R. § 2.120(k)(3)(ii); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69962 (October 7, 2016) ("…a party may make documents produced by another party of record by notice of reliance alone if the party has obtained an admission or stipulation from the producing party that authenticates the documents."). 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 this opposition proceeding); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103-04 (TTAB 2007) (because respondent availed itself of Fed. R. Civ. P. 33(d) to provide documents in response to petitioner’s interrogatories and admitted via a request for admission that the documents it produced were true and correct copies of authentic documents, the documents could be introduced by way of notice of reliance).

 2.   Fed. R. Civ. P. 36(a)(2).

 3.   37 C.F.R. § 2.120(i); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69962 (October 7, 2016).

 4.   Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1427 n.6 (TTAB 2013).

 5.   37 C.F.R. § 2.120(a)(3).

 6.   See 37 C.F.R. § 2.120(a)(3)  ("[R]equests for production of documents and things . . . must be served early enough in the discovery period . . . so that responses will be due no later than the close of discovery. Responses to . . . requests for production of documents and things . . . must be served within thirty days from the date of service of such discovery requests.").

404    Discovery Depositions

404.01    When Permitted and By Whom

Discovery depositions must be properly noticed and taken during the discovery period unless the parties stipulate that the deposition may be taken outside of the period. [ Note 1.] See TBMP § 403.02. Discovery depositions generally may be taken by any party, of any adverse party or any relevant non-party.

As a matter of convenience and courtesy and to avoid scheduling conflicts, the parties should attempt to schedule depositions by agreement rather than have the deposing party unilaterally set a deposition date. [ Note 2.] However, it is not unusual for the deposing party to notice a deposition and subsequently discuss alternative dates with the party to be deposed.

See TBMP § 408 regarding the parties’ duty to cooperate in discovery.

NOTES:

 1.   See 37 C.F.R. § 2.120(a)(3); National Football League v. DNH Management LLC, 85 USPQ2d 1852, 1855 (TTAB 2008).

 2.   Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1654 (TTAB 2007) (parties have a duty to cooperate in resolving conflicts in the scheduling and taking of depositions); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 (TTAB 1987) (parties ordered to work out a mutually agreeable schedule for taking of discovery depositions).

404.02    Who May be Deposed

Fed. R. Civ. P. 30(a). Depositions by Oral Examination. When a Deposition May Be Taken.

• (1) Without Leave. A party may, by oral questions, depose any person, including a party, without leave of court except as provided in Rule 30(a)(2). The deponent’s attendance may be compelled by subpoena under Rule 45.
• (2) With Leave. A party must obtain leave of court, and the court must grant leave to the extent consistent with Rule 26(b)(1) and (2):
  • (A) if the parties have not stipulated to the deposition and:
    • (i) the deposition would result in more than 10 depositions being taken under this rule or Rule 31 by the plaintiffs, or by the defendants, or by the third-party defendants;
    • (ii) the deponent has already been deposed in the case; or
    • (iii) the party seeks to take the deposition before the time specified in Rule 26(d), unless the party certifies in the notice, with supporting facts, that the deponent is expected to leave the United States and be unavailable for examination in this country after that time; or
  • (B) if the deponent is confined in prison.
  

A discovery deposition generally may be taken of any person, whether or not the person is a party, and whether or not the person resides in the United States. However, the Board’s permission must be obtained under the following circumstances:

• (1) If without written stipulation of the parties, (i) a proposed deposition would result in more than ten discovery depositions being taken by the plaintiffs or by the defendants, or (ii) the person to be examined already has been deposed in the case, or
• (2) If the person to be examined is confined in prison.

[ Note 1.]

Deposition of a non-party witness residing in the United States may be taken by subpoena under Fed. R. Civ. P. 45 or, or on notice alone if the non-party witness agrees to appear voluntarily. See TBMP § 404.03(a)(2).

For information concerning limitations on the right to discovery, see TBMP § 402.02.

NOTES:

 1.   See Fed. R. Civ. P. 30(a).

404.03    Place of Deposition; Oral or Written Deposition; Securing Attendance of Deponent

404.03(a)    Person Residing in the United States – In General

37 C.F.R. § 2.120(b)  Discovery deposition within the United States.

The deposition of a natural person shall be taken in the Federal judicial district where the person resides or is regularly employed or at any place on which the parties agree in writing* * * *

The deposition of a natural person shall be taken in the Federal judicial district where the person resides or is regularly employed or at any place on which the parties agree by stipulation. [ Note 1.] The deposition may be taken either orally, or on written questions in the manner described in 37 C.F.R. § 2.124. [ Note 2.]

For information on the taking of a discovery deposition on written questions, see TBMP § 404.07.

NOTES:

 1.   37 C.F.R. § 2.120(b). See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998) (general rule in federal district court that a plaintiff is required to make itself available for examination in district where suit is brought does not apply in Board proceedings).

 2.   See Fed. R. Civ. P. 30 and 31.

404.03(a)(1)    Person Residing in the United States – Party

If a proposed deponent residing in the United States is a party, or, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party, the deposition may be taken on notice alone. [ Note 1.] When such a proposed deponent fails to appear for a noticed deposition, the deposing party may seek to compel attendance by a motion to compel. See TBMP § 523.

For information concerning notices of deposition, see TBMP § 404.05.

For information concerning testimonial depositions of adverse party witnesses residing in the United States, seeTBMP § 703.01(f)(2).

NOTES:

 1.   37 C.F.R. § 2.120(b); Fed. R. Civ. P. 30(b); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 (TTAB 1976).

404.03(a)(2)    Person Residing in the United States – Non-party

35 U.S.C. § 24  Subpoenas, witnesses.

The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent and Trademark Office.

Every witness subpoenaed and in attendance shall be allowed the fees and traveling expenses allowed to witnesses attending the United States district courts.

A judge of a court whose clerk issued a subpoena may enforce obedience to the process or punish disobedience as in other like cases, on proof that a witness, served with such subpoena, neglected or refused to appear or to testify. No witness shall be deemed guilty of contempt for disobeying such subpoena unless his fees and traveling expenses in going to, and returning from, and one day’s attendance at the place of examination, are paid or tendered him at the time of the service of the subpoena; nor for refusing to disclose any secret matter except upon appropriate order of the court which issued the subpoena.

37 C.F.R. § 2.120(b)  Discovery deposition within the United States.

. . . The responsibility rests wholly with the party taking discovery to secure the attendance of a proposed deponent other than a party or anyone who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure.

The responsibility rests with the deposing party to secure the attendance of a proposed deponent residing within the United States unless the proposed deponent is a party, or a person who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party. [ Note 1.] If the proposed non-party deponent is not willing to appear voluntarily, the deposing party must secure the non-party deponent’s attendance by subpoena, pursuant to 35 U.S.C. § 24  and Fed. R. Civ. P. 45. [ Note 2.]

The subpoena must be issued from the United States district court in the federal judicial district where the deponent resides or is regularly employed. [ Note 3.]

If a person named in a subpoena compelling attendance at a discovery deposition fails to attend the deposition, or refuses to answer a question propounded at the deposition, the deposing party must seek enforcement from the United States District Court that issued the subpoena; the Board has no jurisdiction to enforce the subpoena. [ Note 4.]

For information regarding the taking of a non-party testimonial deposition of a non-party witness residing in the United States, see TBMP § 703.01(f)(2).

NOTES:

 1.   37 C.F.R. § 2.120(b).

 2.   Fed. R. Civ. P. 30(a)(1) and Fed. R. Civ. P. 45; Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2048-49 (TTAB 1988) (deposition of former employee can only be taken by voluntary appearance or by subpoena). Cf. regarding testimony depositions, Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990) (testimony deposition on written questions of adverse party); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 (TTAB 1976) (testimony deposition of adverse witness).

Please Note: To the extent that Fed. R. Civ. P. 45(a)(2) and 45(f), as amended in 2013, conflict with the provisions of 35 U.S.C. § 24, the statute is controlling. See 37 C.F.R. § 2.116(a)  ("Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.").

 3.   37 C.F.R. § 2.120(b). See generally cases cited in preceding Note 2.

 4.   See, e.g., Ate My Heart v. GA GA Jeans, 111 USPQ2d 1564, 1565 n.5 (TTAB 2014) (notice of deposition of unwilling non-party witness must include subpoena, and related motions must be filed with district court that issued subpoena, not Board); Dan Foam ApS v. Sleep Innovations Inc., 106 USPQ2d 1939, 1942 n.4 (TTAB 2013) (Board cannot modify or quash a subpoena issued by a district court); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 n.3 (TTAB 1987) (motion to quash subpoenaed third-party depositions due to scheduling problems denied). See also In re Johnson & Johnson, 59 F.R.D. 174, 178 USPQ 201 (D. Del. 1973) (asserting jurisdiction to enforce subpoenas for TTAB proceeding); PRD Electronics Inc. v. Pacific Roller Die Co., 169 USPQ 318, 319 n.3 (TTAB 1971).

404.03(b)    Person Residing in a Foreign Country – Party

37 C.F.R. § 2.120(c)  Discovery deposition in foreign countries; or of foreign party within jurisdiction of the United States.

• (1) The discovery deposition of a natural person residing in a foreign country who is a party or who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, shall, if taken in a foreign country, be taken in the manner prescribed by § 2.124 unless the Trademark Trial and Appeal Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate.
• (2) Whenever a foreign party is or will be, during a time set for discovery, present within the United States or any territory which is under the control and jurisdiction of the United States, such party may be deposed by oral examination upon notice by the party seeking discovery. Whenever a foreign party has or will have, during a time set for discovery, an officer, director, managing agent, or other person who consents to testify on its behalf, present within the United States or any territory which is under the control and jurisdiction of the United States, such officer, director, managing agent, or other person who consents to testify in its behalf may be deposed by oral examination upon notice by the party seeking discovery. The party seeking discovery may have one or more officers, directors, managing agents, or other persons who consent to testify on behalf of the adverse party, designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure. The deposition of a person under this paragraph shall be taken in the Federal judicial district where the witness resides or is regularly employed, or, if the witness neither resides nor is regularly employed in a Federal judicial district, where the witness is at the time of the deposition. This paragraph (c)(2) does not preclude the taking of a discovery deposition of a foreign party by any other procedure provided by paragraph (c)(1) of this section.

The discovery deposition of a natural person who resides in a foreign country, and who is a party, or who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party may be taken on notice alone. [ Note 1.]

However, if the discovery deposition of such a person is taken in a foreign country, it must be taken on written questions, in the manner described in 37 C.F.R. § 2.124, unless the Board, on motion for good cause, orders, or the parties stipulate, that the deposition be taken by oral examination. [ Note 2.]

Similarly, if a testimonial deposition is taken in a foreign country, it must be taken by deposition on written questions, as described in 37 C.F.R. § 2.123(a)(2)  unless the Board, on motion for good cause orders the deposition taken by oral examination, or the parties so stipulate; or by affidavit or declaration subject to the right of cross examination. [ Note 3.] See TBMP § 703.01(b) for further information about the form of trial testimony. It should be noted, however that some countries prohibit the taking of testimony within their boundaries for use in any other country, including the United States, even though the witness is willing; or may permit the taking of testimony only if certain procedures are followed. A party which wishes to take a deposition in a foreign country should first consult with local counsel in the foreign country, and/or with the Office of Legal Affairs, Department of State, in order to determine whether the taking of the deposition will be permitted by the foreign country, and, if so, what procedure must be followed.

For information concerning the procedure for taking discovery depositions on written questions, see TBMP § 404.07.

For information on a motion to take a foreign deposition orally, see TBMP § 520. For information on taking the testimony deposition of a willing or unwilling adverse party or non-party witness in a foreign country through the letter rogatory procedure or by procedures provided under the Hague convention or other applicable treaties, see TBMP § 703.01(g).

The Board will not order a natural person residing in a foreign country to come to the United States for the taking of his or her discovery deposition. [ Note 4.]

Parties seeking to take the discovery deposition of a natural person residing in a foreign country should be aware that the laws of some foreign countries may serve to preclude the taking of such depositions. [ Note 5.] In determining when it is appropriate to impose sanctions for non-compliance with discovery due to a conflict with foreign laws, the following factors are considered: (1) the good faith of the non-complying party; (2) whether the non-complying party would incur foreign criminal liability; and (3) whether alternative sources of information are available. [ Note 6.]

NOTES:

 1.   See 37 C.F.R. § 2.120(c)  and 37 C.F.R. § 2.124.

 2.   37 C.F.R. § 2.120(c)(1). See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998). See also Orion Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923, 1925 (TTAB 1989) (by motion); Jonergin Co. v. Jonergin Vermont Inc., 222 USPQ 337, 340 (Comm’r 1983) (by stipulation).

 3.   37 C.F.R. § 2.123(a)(2). See TBMP § 703.02(a).

 4.   See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 374 (TTAB 1978) (deposition may only be taken by written questions unless otherwise stipulated, or unless the party is present in the U.S.). See also Miller v. N. V. Cacao-En Chocoladefabrieken Boon, 142 USPQ 364, 365-66 (E.D.N.Y. 1964); Cf. Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises, Ltd, 511 F.3d 437, 85 USPQ2d 1385, 1391 (4th Cir. 2007) (foreign corporation party required to obey a subpoena issued by the district court, pursuant to Rule 30(b)(6) notice, to appear in the United States to give trial testimony).

 5.   Cf. Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197, 200-01 (1958) (Swiss government ordered Swiss plaintiff in U.S. court proceeding not to produce certain documents).

 6.   Cf. Cochran Consulting Inc. v. Uwatec USA Inc., 102 F.3d 1224, 41 USPQ2d 1161, 1163-67 (Fed. Cir. 1996) (citing Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197 (1958)).

404.03(c)    Person Residing in a Foreign Country – Non-party

404.03(c)(1)    Willing Non-party

The discovery deposition of a natural person who resides in a foreign country, and is not a party, or an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party, but is willing to appear voluntarily to be deposed, may be taken in the same manner as the discovery deposition of a natural person who resides in a foreign country and who is a party, i.e., in the manner described in TBMP § 404.03(b). [ Note 1.] It should be noted, however that some countries prohibit the taking of testimony within their boundaries for use in any other country, including the United States, even though the witness is willing; or may permit the taking of testimony only if certain procedures are followed. A party which wishes to take a deposition in a foreign country should first consult with local counsel in the foreign country, and/or with the Office of Legal Affairs, Department of State, in order to determine whether the taking of the deposition will be permitted by the foreign country, and, if so, what procedure must be followed.

NOTES:

 1.   Cf. 37 C.F.R. § 2.120(c)  and 37 C.F.R. § 2.123(a).

404.03(c)(2)    Unwilling Non-party – The Hague Convention and Letter Rogatory Procedure

28 U.S.C. § 1781  Transmittal of letter rogatory or request.

• (a) The Department of State has power, directly, or through suitable channels—
  • (1) to receive a letter rogatory issued, or request made, by a foreign or international tribunal, to transmit it to the tribunal, officer, or agency in the United States to whom it is addressed, and to receive and return it after execution; and
  • (2) to receive a letter rogatory issued, or request made, by a tribunal in the United States, to transmit it to the foreign or international tribunal, officer, or agency to whom it is addressed, and to receive and return it after execution.
  
• (b) This section does not preclude—
  • (1) the transmittal of a letter rogatory or request directly from a foreign or international tribunal to the tribunal, officer, or agency in the United States to whom it is addressed and its return in the same manner; or
  • (2) the transmittal of a letter rogatory or request directly from a tribunal in the United States to the foreign or international tribunal, officer, or agency to whom it is addressed and its return in the same manner.
  

There is no certain procedure for obtaining, in an inter partes proceeding before the Board, the discovery deposition of a natural person who resides in a foreign country, is not a party, or an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party, and does not agree to appear voluntarily to be deposed. However, a party may be able to obtain the discovery deposition of such a person through the letter rogatory procedure, whereby an unwilling non-party witness in a foreign country sometimes may be compelled to respond to questions routed through diplomatic channels to an appropriate judicial authority in the foreign country. [ Note 1.]

The term "letter rogatory" or "letter of request" is defined in Black’s Law Dictionary (10th edition 2014) as follows:

letter of request. 1. A document issued by one court to a foreign court, requesting that the foreign court (1) take evidence from a specific person within the foreign jurisdiction or serve process on an individual or corporation within the foreign jurisdiction and (2) return the testimony or proof of service for use in a pending case. See Fed. R. Civ. P. 28. — Also termed letter rogatory; rogatory letter; requisitory letter.

While the letter rogatory procedure is usually conducted through the judicial system, because the Board proceeding is before an administrative body the Board would function as the initiating "court" contemplated by the preceding definition.

A party that wishes to have the Board issue a letter rogatory should file a written request therefor with the Board. [ Note 2.] The party must also submit an original and two copies of the proposed letter rogatory, and an original and two copies of the questions to be propounded to the non-party witness. If the official language of the foreign country is not English, the propounding party must submit an original and two copies of the letter rogatory and questions in English, and an original and two copies thereof translated into the official language of the country in which the witness will be deposed. In addition, the propounding party must serve on each adverse party a copy of every submission filed with the Board. [ Note 3.]

If the request by the Board is granted (i.e. it is willing to issue the letter once all questions are exchanged and translations are provided) each adverse party will be given an opportunity to submit cross questions, a copy of which must also be served on the propounding party. If an adverse party submits cross questions, the propounding party, in turn, will be given an opportunity to submit redirect questions, a copy of which must be served on each adverse party. [ Note 4.] As in the case of the initial questions, an original and two copies of any cross questions and redirect questions must be submitted to the Board; if the official language of the foreign country is not English, an original and two copies of the questions in English, and an original and two copies thereof translated into the official language, must be submitted.

After the original and copies of the letter rogatory, and of all of the questions, have been submitted to the Board, and the letter rogatory has been approved as to form, the letter rogatory will be issued by the Board. The letter rogatory will be signed by the Chief Administrative Trademark Judge; however, the propounding party will be responsible for having the signature authenticated in such a manner as to meet the requirements of the foreign country. After the signature is appropriately authenticated, the Board will forward the original and one copy of the letter rogatory and accompanying questions to the United States Department of State with a transmittal letter from the Board (the remaining copy of these papers will be retained in the Board proceeding file). In its transmittal letter, the Board will request, pursuant to 28 U.S.C. § 1781  (which authorizes the Department of State to, inter alia, "receive a letter rogatory issued, or request made, by a tribunal in the United States, to transmit it to the foreign or international tribunal, officer, or agency to whom it is addressed, and to receive and return it after execution"), that the Department of State transmit the letter rogatory to the appropriate judicial authority in the foreign country, and, after execution, receive it back and return it to the Board. Thereafter, the Department of State will transmit the letter rogatory, through diplomatic channels, to the appropriate judicial authority in the foreign country.

The party seeking discovery must pay all fees, including authentication, consular, and foreign government fees, charged in connection with the letter rogatory procedure. The Department of State will require the propounding party to make a deposit to cover the consular and foreign government fees. Payment must include a certified check payable to the U.S. Embassy [insert the name of the appropriate city, e.g., Paris, Bonn, Tokyo, etc.]. Any unused portion of the deposit will be returned to the depositor after completion of the letter rogatory process.

Further information concerning the letter rogatory process may be obtained from the Judicial Assistance Officer, U.S. Department of State, Office of Legal Affairs (CA/OCS/L), SA-17, 10th Floor, 2201 C Street NW, Washington, D.C. 20522-1710 or at the U.S. Department of State’s website at https://travel.state.gov/content/travel/en/legal-considerations/judicial/obtaining-evidence/preparation-letters-rogatory.html.

Once the appropriate foreign judicial authority has received the letter rogatory, it may or may not be executed. The letter rogatory "rest[s] entirely upon the comity of courts towards each other . . . ." [ Note 5.] Some countries refuse or are reluctant to lend assistance in the taking of a discovery deposition in their country through the letter rogatory procedure, and compliance with the procedural requirements for a letter rogatory does not ensure that the requested deposition will be completed. [ Note 6.] Before a request for issuance of a letter rogatory is filed with the Board, the requesting party should examine the law and policy of the involved foreign country, and consult with the Office of Legal Affairs, Department of State, in order to determine whether the country in question is likely to honor a letter rogatory, particularly a letter rogatory issued by the Board. The likelihood that the Board will agree to issue the letter rogatory may be influenced by any information the requesting party is able to provide about the likelihood that the foreign country will execute the letter.

Even in those foreign countries that may be willing to execute a letter rogatory, the foreign judicial authority may refuse to honor a letter rogatory issued by the Board (an administrative tribunal) rather than by a United States district court. Further, if the foreign country has a "blocking statute" prohibiting its residents from disclosing certain types of information in judicial or administrative proceedings outside of the foreign country, a letter rogatory may not be honored if the foreign judicial authority believes that disclosure of the information requested therein would violate the blocking statute.

If a letter rogatory is honored, its probative value may be limited. In executing the letter rogatory, the foreign judicial tribunal will follow its customary procedures for taking discovery or testimony. The fact that these procedures may differ from those normally followed in proceedings before the Board does not mean that the deposition must necessarily be excluded. Rather, any such differences are matters to be considered by the Board in determining the probative value of the deposition. [ Note 7.]

A party considering the filing of a request for issuance of a letter rogatory should bear in mind not only the complexity and uncertain outcome of the procedure, but also its time-consuming nature. The entire process, from the filing of the initial request for issuance of a letter rogatory, to receipt by the Board either of the completed deposition, or of notification that the letter rogatory will not be honored, will consume months, if not years. During the interim, proceedings in the case before the Board most likely will be suspended pending the execution and return to the Board of the letter rogatory. [ Note 8.]

The Convention on the Taking of Evidence Abroad in Civil or Commercial Matters (commonly known as the "Hague Convention"), opened for signature March 18, 1970, 23 U.S.T. 2555, T.I.A.S. No. 7444, prescribes procedures under which a judicial authority in one member country may request evidence located in another. The Hague Convention offers another possible method by which a party to an inter partes proceeding before the Board may attempt to obtain the discovery deposition of an unwilling non-party witness residing in a foreign country, if the foreign country is a member of the Hague Convention. [ Note 9.]

The Hague Convention provides for the compulsion of evidence (including the deposition of an unwilling witness) in a member country pursuant to a "letter of request," which is very similar in nature to a letter rogatory. [ Note 10.] However, the Board has been advised by the Department of State that foreign countries are more likely to lend assistance in the taking of a discovery deposition if the request therefor is made under the more formal letter rogatory procedure. Before filing a motion for issuance of a letter of request under the Hague Convention, the moving party should consult with the Office of Legal Affairs, Department of State, in order to determine whether the foreign country in question is likely to honor a letter of request, particularly a letter of request issued by the Board.

NOTES:

 1.   Cf. DBMS Consultants Ltd. v. Computer Associates International, Inc., 18 Fed. R. Serv. 3d 33, 131 F.R.D. 367 (D. Mass. 1990) (court granted application for issuance of a letter rogatory finding that it would be unjust and inappropriate to require oral examination and that opposing party has shown no good reason to deny the application).

 2.   See Fed. R. Civ. P. 28(b).

 3.   37 C.F.R. § 2.119(a). Cf. 37 C.F.R. § 2.124(b)(2).

 4.   Cf. 37 C.F.R. § 2.124(d)(1).

 5.   22 C.F.R. § 92.54 ("Letters rogatory" defined).

 6.   See Fed. R. Civ. P. 28(b) Notes of Advisory Committee on Rules –1963 Amendment; 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2083 (3d ed. 2016).

 7.   See Fed. R. Civ. P. 28(b) Notes of Advisory Committee on Rules –1963 Amendment); 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2083 (3d ed. 2016).

 8.   Cf. 37 C.F.R. § 2.124(d)(2).

 9.   See, e.g., Societe Nationale Industrielle Aerospatiale v. U.S. District Court for the Southern District of Iowa, 482 U.S. 522, 533-40 (1987) (although Hague Convention not exclusive discovery procedure, it may apply even if Federal Rules of Civil Procedure are available); In re Anschuetz & Co., 838 F.2d 1362, 1364 (5th Cir. 1988) (U.S. district courts have discretion to resolve discovery conflicts between Federal Rules of Civil Procedure and Hague Convention); 8 C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2005.1 (3d ed. 2016). For general information concerning the Hague Convention, see Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612-13 (TTAB 1991) (applicant failed to establish necessity of using Hague procedures). [Please Note: This case involved the taking of discovery by interrogatories, requests for production of documents, and requests for admissions, rather than by deposition].

 10.   For information concerning the letter of request procedure under the Hague Convention, see Chapter 1 of the Convention. See also Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612-13 (TTAB 1991).

404.03(d)    Foreign Person Present Within the United States – Party

37 C.F.R. § 2.120(c)(2)  Whenever a foreign party is or will be, during a time set for discovery, present within the United States or any territory which is under the control and jurisdiction of the United States, such party may be deposed by oral examination upon notice by the party seeking discovery. Whenever a foreign party has or will have, during a time set for discovery, an officer, director, managing agent, or other person who consents to testify on its behalf, present within the United States or any territory which is under the control and jurisdiction of the United States, such officer, director, managing agent, or other person who consents to testify in its behalf may be deposed by oral examination upon notice by the party seeking discovery. The party seeking discovery may have one or more officers, directors, managing agents, or other persons who consent to testify on behalf of the adverse party, designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure. The deposition of a person under this paragraph shall be taken in the Federal judicial district where the witness resides or is regularly employed, or, if the witness neither resides nor is regularly employed in a Federal judicial district, where the witness is at the time of the deposition. This paragraph (c)(2) does not preclude the taking of a discovery deposition of a foreign party by any other procedure provided by paragraph (c)(1) of this section.

Whenever a natural person who is a foreign party, or an officer, director, or managing agent, of a foreign party, or some other person who consents to testify on a foreign party’s behalf, is or will be, during a time set for discovery, present within the United States or any territory which is under the control and jurisdiction of the United States, such party, officer, director, managing agent, or other person may be deposed, while in the United States, by oral examination on notice pursuant to 37 C.F.R. § 2.120(c)(2). Indeed, this option was available even before the adoption of 37 C.F.R. § 2.120(c)(2). [ Note 1.]

When the discovery deposition of a foreign party, or an officer, director, managing agent, or other person who consents to testify on behalf of a foreign party, is taken in the United States by oral examination pursuant to 37 C.F.R. § 2.120(c)(2), the deposition must be taken in the federal judicial district where the witness resides or is regularly employed, or, if the witness neither resides nor is regularly employed in a federal judicial district, where the witness is at the time of the deposition. [ Note 2.] Parties may obtain information regarding a potential foreign witness’ presence in the United States during the discovery period in the form of an interrogatory request, which is subject to the duty to supplement. [ Note 3.]

NOTES:

 1.   See Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373-74 (TTAB 1978). Cf. Jonergin Co. v. Jonergin Vermont Inc., 222 USPQ 337, 340 (Comm’r 1983) (parties may agree to take oral deposition of foreign domiciliary in U.S.).

 2.   37 C.F.R. § 2.120(c)(2).

 3.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69961 (October 7, 2016).

404.03(e)    Foreign Person Present Within the United States – Non-party

If the proposed deponent is a foreign person who is present within the United States but the person is not a party to the proceeding and is not willing to appear voluntarily, it may be necessary to secure the deponent’s attendance, if at all, by the procedures set forth in TBMP § 404.03(c).

404.04    Persons before Whom Depositions May be Taken

Fed. R. Civ. P. 28(a)(1). Persons Before Whom Depositions May Be Taken

• (a) Within the United States.
  • (1) In General. Within the United States or a territory or insular possession subject to United States jurisdiction, a deposition must be taken before:
    • (A) an officer authorized to administer oaths either by federal law or by the law in the place of examination; or
    • (B) a person appointed by the court where the action is pending to administer oaths and take testimony.
  • (2) Definition of "Officer." The term "officer" in Rules 30, 31, and 32 includes a person appointed by the court under this rule or designated by the parties under Rule 29(a).
  
• (b) In a Foreign Country.
  • (1) In General. A deposition may be taken in a foreign country:
    • (A) under an applicable treaty or convention;
    • (B) under a letter of request, whether or not captioned a "letter rogatory";
    • (C) on notice, before a person authorized to administer oaths either by federal law or by the law in the place of examination; or
    • (D) before a person commissioned by the court to administer any necessary oath and take testimony.
  • (2) Issuing a Letter of Request or a Commission. A letter of request, a commission, or both may be issued:
    • (A) on appropriate terms after an application and notice of it; and
    • (B) without a showing that taking the deposition in another manner is impracticable or inconvenient.
  • (3) Form of a Request, Notice, or Commission. When a letter of request or any other device is used according to a treaty or convention, it must be captioned in the form prescribed by that treaty or convention. A letter of request may be addressed "To the Appropriate Authority in [name of country]." A deposition notice or a commission must designate by name or descriptive title the person before whom the deposition is to be taken.
  • (4) Letter of Request—Admitting Evidence. Evidence obtained in response to a letter of request need not be excluded merely because it is not a verbatim transcript, because the testimony was not taken under oath, or because of any similar departure from the requirements for depositions taken within the United States.
  
• (c) Disqualification. A deposition must not be taken before a person who is any party’s relative, employee, or attorney; who is related to or employed by any party’s attorney; or who is financially interested in the action.

Discovery depositions in Board inter partes proceedings may be taken before the persons designated by Fed. R. Civ. P. 28.

Thus, in the United States (or in any territory or insular possession subject to the jurisdiction of the United States) a discovery deposition in a Board proceeding "must be taken before an officer authorized to administer oaths either by federal law or by the law in the place of examination; or a person appointed by the court where the action is pending to administer oaths and take testimony." [ Note 1.] As a practical matter, Board proceeding depositions taken in the United States are usually taken before a court reporter that is authorized to administer oaths in the jurisdiction where the deposition is taken.

In a foreign country, a discovery deposition in a Board proceeding may be taken pursuant to Fed. R. Civ. P. 28(b). This means, for example, that discovery deposition in a Board proceeding, taken of a willing witness in a foreign country, usually may be taken on notice before a United States consular official, or before anyone authorized by the law of the foreign country to administer oaths therein. Some countries, however, may prohibit the taking of testimony within their boundaries for use in any other country, including the United States, even though the witness is willing; or may permit the taking of testimony only if certain procedures are followed. [ Note 2.] A party which wishes to take a deposition in a foreign country should first consult with local counsel in the foreign country, and/or with the Office of Legal Affairs, Department of State, in order to determine whether the taking of the deposition will be permitted by the foreign country, and, if so, what procedure must be followed.

NOTES:

 1.   Fed. R. Civ. P. 28(a).

 2.   See 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2083 (3d ed. 2016).

404.05    Notice of Deposition

Fed. R. Civ. P. 30(b) Notice of Deposition; Other Formal Requirements.

• (1) Notice in General. A party who wants to depose a person by oral questions must give reasonable written notice to every other party. The notice must state the time and place of the deposition and, if known, the deponent’s name and address. If the name is unknown, the notice must provide a general description sufficient to identify the person or the particular class or group to which the person belongs.
• (2) Producing Documents. . . . The notice to a party deponent may be accompanied by a request under Rule 34 to produce documents and tangible things at the deposition.
• * * * *
• (6) Notice or Subpoena Directed to an Organization.

  In its notice or subpoena, a party may name as the deponent a public or private corporation, a partnership, an association, a governmental agency, or other entity and must describe with reasonable particularity the matters for examination. The named organization must then designate one or more officers, directors, or managing agents, or designate other persons who consent to testify on its behalf; and it may set out the matters on which each person designated will testify. A subpoena must advise a nonparty organization of its duty to make this designation. The persons designated must testify about information known or reasonably available to the organization. This paragraph (6) does not preclude a deposition by any other procedure allowed by these rules.

  

37 C.F.R. § 2.124(b)(2)  [Depositions upon written questions] A party desiring to take a discovery deposition upon written questions shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board. The notice shall state the name and address, if known, of the person whose deposition is to be taken. If the name of the person is not known, a general description sufficient to identify the witness or the particular class or group to which he or she belongs shall be stated in the notice, and the party from whom the discovery deposition is to be taken shall designate one or more persons to be deposed in the same manner as is provided by Rule 30(b)(6) of the Federal Rules of Civil Procedure.

37 C.F.R. § 2.124(c)  Every notice given under the provisions of paragraph (b) of this section shall be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken.

In an inter partes proceeding before the Board, the discovery deposition of a natural person who is a party, or who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party may be taken on notice alone.

Prior to the taking of a discovery deposition on notice alone, the party seeking to take the deposition ("the deposing party") must give reasonable notice in writing to every adverse party. [ Note 1.] Whether notice is reasonable depends upon the individual circumstances of each case. [ Note 2.] The elements to be included in the notice are specified in Fed. R. Civ. P. 30(b)(1) for a deposition on oral examination, and in 37 C.F.R. § 2.124(b)(2)  and 37 C.F.R. § 2.124(c)  for a deposition on written questions. [ Note 3.] It is strongly recommended that the deposing party contact the party sought to be deposed (or whose officer, director, etc., is sought to be deposed) well in advance of the proposed deposition in order to arrange a mutually convenient time for the deposition. The closing of a party’s discovery period does not constitute a compelling need for failing to provide reasonable notice of deposition. [ Note 4.]

A party may request from a party deponent the production of documents at a deposition under Fed. R. Civ. P. 34. [ Note 5.] Proceeding under this rule facilitates discovery when the documents are few and simple and closely related to the oral examination. [ Note 6.] In requesting documents, the deposing party must allow at least 30 days between the date of the request and the deposition to comply with Fed. R. Civ. P. 34. [ Note 7.] For information concerning the procedure for combining a notice of taking a discovery deposition with a request for production of documents, see TBMP § 406.01. A deposition must be properly noticed and taken during the discovery period. The parties may stipulate to extend or reopen the discovery period to accommodate the taking of the deposition. [ Note 8.]

In noticing the deposition of a corporation, partnership, association, governmental agency, or other juristic person, the deposing party may, in lieu of naming a person to be deposed, simply name as the deponent the corporation, partnership, association, governmental agency, or other juristic person, and describe with reasonable particularity the matters on which examination is requested. The named organization must, in turn, designate one or more officers, directors, or managing agents, or other persons who consent to testify on its behalf, and may state, for each person designated, the matters on which he or she will testify. Each designated person must testify not only as to those matters within his or her knowledge, but also as to matters known or reasonably available to the organization. [ Note 9.]

For information regarding notice of testimonial deposition, see TBMP § 703.01(e).

For information regarding the time for service of discovery requests, see TBMP § 403.02.

For information regarding a motion to quash a notice of deposition or for protective order, see TBMP § 521 and TBMP § 410.

NOTES:

 1.   Fed. R. Civ. P. 30(b)(1); 37 C.F.R. § 2.124(b)(2); 37 C.F.R. § 2.124(c). See Fed. R. Civ. P. 31(a)(3) and 37 C.F.R. § 2.120(c). Cf. 37 C.F.R. § 2.123(c).

 2.   Gaudreau v. American Promotional Events Inc., 82 USPQ2d 1692, 1696 (TTAB 2007).

 3.   See, e.g., Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1864 (TTAB 2001) (subject matter of deposition to be described with reasonable particularity in the notice).

 4.   Cf. Gaudreau v. American Promotional Events Inc., 82 USPQ2d 1692, 1696 (TTAB 2007).

 5.   Fed. R. Civ. P. 30(b)(2).

 6.   Fed. R. Civ. P. 30(b), Notes of Advisory Committee on Rules –1970 Amendment.

 7.   Fed. R. Civ. P. 34(b)(2)(A).

 8.   37 C.F.R. § 2.120(a)(3). See National Football League v. DNH Management LLC, 85 USPQ2d 1852, 1855 (TTAB 2008) (granting motion to quash opposer’s notice of Fed. R. Civ. P. 30(b)(6) deposition noticed on the last day of discovery but setting date of deposition to take place after close of discovery).

 9.   Fed. R. Civ. P. 30(b)(6); Fed. R. Civ. P. 31(a)(4).

404.06    Taking a Discovery Deposition

Fed. R. Civ. P. 30(b)(4) By Remote Means. The parties may stipulate — or the court may on motion order — that a deposition be taken by telephone or other remote means. For the purpose of this rule and Rules 28(a), 37(a)(2), and 37(b)(1), the deposition takes place where the deponent answers the questions.

The manner of taking a discovery deposition in an inter partes proceeding before the Board is similar to taking a testimony deposition. [ Note 1.]

For information concerning the procedure for taking a testimony deposition (including the examination of witnesses, the form of a deposition, and the protection of confidential information or trade secret material forming part of a deposition transcript or exhibits thereto), see TBMP § 703.01 and TBMP § 703.02. For a discussion of significant differences between discovery depositions and testimony depositions, see TBMP § 404.09. For information concerning the procedure for taking a discovery deposition on written questions, see TBMP § 404.07.

On stipulation of the parties, or on motion granted by the Board, a deposition may be taken or attended by telephone or other remote means, such as video conferencing. [ Note 2.] A deposition taken by telephone or other remote means is regarded as taken in the federal judicial district and at the place where the witness is to answer the questions propounded to him or her. A discovery deposition taken by remote means (such as by video conference) must be transcribed if submitted as evidence at trial. See TBMP § 703.01(i).

NOTES:

 1.   Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1553 (TTAB 1991).

 2.   See Fed. R. Civ. P. 30(b)(4); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1654 (TTAB 2007) (to resolve conflict in scheduling a deposition where travel is involved, parties may stipulate or the Board may order upon motion that deposition be taken by telephone or other remote means); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1553 (TTAB 1991) (leave to take telephonic depositions should be liberally granted in appropriate cases as current federal practice favors use of technological benefits).

404.06(a)    Fed. R. Civ. P. 30(b)(1) Depositions by Oral Examination of a Natural Person

Fed. R. Civ. P. 30(b)(1) Notice in General. A party who wants to depose a person by oral questions must give reasonable written notice to every other party. The notice must state the time and place of the deposition and, if known, the deponent’s name and address. If the name is unknown, the notice must provide a general description sufficient to identify the person or the particular class or group to which the person belongs.

Fed. R. Civ. P. 30(b)(1) provides for the taking of a discovery deposition of a natural person. An individual witness deposition under Fed. R. Civ. P. 30(b)(1) seeks information regarding an individual’s personal knowledge of facts. If the party is a corporation, organization, partnership association or other juristic person, Fed. R. Civ. P. 30(b)(1) allows an adverse party to notice the deposition of a particular officer, director, or managing agent of a party organization. [ Note 1.] Taking a deposition of a party’s officer, director, or managing agent in his or her individual capacity under Fed. R. Civ. P. 30(b)(1) is different from taking a deposition of a party’s officer, director, or managing agent in his or her organizational capacity under Fed. R. Civ. P. 30(b)(1) or as an organization’s representative under Fed. R. Civ. P. 30(b)(6). The deposition of a party’s officer, director, or managing agent in his or her individual capacity probes that individual deponent’s personal knowledge of the facts and not that of the party organization. [ Note 2.] On the other hand, a Fed. R. Civ. P. 30(b)(1) deposition of a named officer, director, or managing agent of the party organization in his or her organizational capacity, just like a Fed. R. Civ. P. 30(b)(6) deposition taken of a representative of an organization, is testimony of the organization. Assuming that the organization is a party, the testimony elicited from a Fed. R. Civ. P. 30(b)(1) deposition of a named officer, director, or managing agent of the organization in his or her organizational capacity may be used at trial by the adverse party for any purpose. [ Note 3.] See TBMP § 412.06(a) regarding the taking of a deposition of a high-level official or executive of a corporation. See TBMP § 404.06(b) regarding the taking of a deposition of a corporation, organization, partnership, association, or other juristic person under Fed. R. Civ. P. 30(b)(6).

An employee or agent of an organization who does not qualify as an officer, director, or managing agent is not subject to deposition by notice under Fed. R. Civ. P. 30(b)(1). [ Note 4.] If a person does not qualify as an officer, director, or managing agent, he or she must be treated as a non-party witness. [ Note 5.]

It is possible for a witness to be deposed in his or her individual capacity under a Fed. R. Civ. P. 30(b)(1) notice of deposition and in his or her representative capacity as a Fed. R. Civ. P. 30(b)(6) designee under a Fed. R. Civ. P. 30(b)(6) notice of deposition. [ Note 6.]

For more information regarding depositions of natural persons, both parties and non-parties, see TBMP § 404.03.

NOTES:

 1.   United States v. One Parcel of Real Estate at 5860 North Bay Road, Miami Beach, Fla., 121 F.R.D. 439, 440 (S.D. Fla. 1988).

 2.   See 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2103 (3d ed. 2016) (discussing differences between a Fed. R. Civ. P. 30(b)(6) deposition and a "normal deposition").

 3.   United States v. One Parcel of Real Estate at 5860 North Bay Road, Miami Beach, Fla., 121 F.R.D. 439, 440 (S.D. Fla. 1988).

 4.   JSC Foreign Economic Association Technostroyexport v. International Development and Trade Services, Inc., 220 F.R.D. 235, 238 (S.D.N.Y 2004).

 5.   JSC Foreign Economic Association Technostroyexport v. International Development and Trade Services, Inc., 220 F.R.D. 235, 238 (S.D.N.Y 2004). See, e.g., HighBeam Marketing LLC v. Highbeam Research LLC, 85 USPQ2d 1902, 1906 (TTAB 2008) (expert witness in employ of opposer for Board opposition proceeding was not an officer, director, or managing agent of opposer and was "technically a non-party witness" subject to deposition by subpoena).

 6.   See Fed. R. Civ. P. 30(b)(6) ("This paragraph (6) does not preclude a deposition by any other procedure authorized under these rules."); Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1673 (TTAB 2005) (noting that Board granted motion to continue deposition of an officer in his capacity as Fed. R. Civ. P. 30(b)(6) witness and in his individual capacity).

404.06(b)    Fed. R. Civ. P. 30(b)(6) Deposition of a Corporation, Organization, Partnership, Association, or Other Juristic Person

Fed. R. Civ. P. 30(b)(6) Notice or Subpoena Directed to an Organization.In its notice or subpoena, a party may name as the deponent a public or private corporation, a partnership, an association, a governmental agency, or other entity and must describe with reasonable particularity the matters for examination. The named organization must then designate one or more officers, directors, or managing agents, or designate other persons who consent to testify on its behalf; and it may set out the matters on which each person designated will testify. A subpoena must advise a nonparty organization of its duty to make this designation. The persons designated must testify about information known or reasonably available to the organization. This paragraph (6) does not preclude a deposition by any other procedure allowed by these rules.

The preferred method for deposing a corporation, organization, partnership, association, or other juristic person is through a deposition under Fed. R. Civ. P. 30(b)(6). [ Note 1.] A Fed. R. Civ. P. 30(b)(6) deposition provides a party an efficient way to find out details about the organization as well as learn information that might warrant further exploration through individual depositions of natural persons.

The deponent at a Fed. R. Civ. P. 30(b)(6) deposition is the organization, and the organization speaks through the representative appearing at the deposition. [ Note 2.] A Fed. R. Civ. P. 30(b)(6) witness is responsible for providing all the relevant information known or reasonably available to the organization and his or her answers bind the organization. [ Note 3.] A party may notice a Fed. R. Civ. P. 30(b)(6) deposition of an organization without naming a specific person to be deposed, instead describing the information sought. The organization then must designate one or more individuals to testify on the organization’s behalf. [ Note 4.] A party seeking to depose the adverse party organization through a particular officer, director, or managing agent may notice the deposition of that officer, director, or managing agent, in their organizational capacity, under Fed. R. Civ. P. 30(b)(1). [ Note 5.] See TBMP § 404.03 and TBMP § 404.06(a) regarding depositions of natural persons, both parties and non-parties.

When an organization is named as a deponent by a party seeking discovery, the subject matter of the deposition is to be described with reasonable particularity in the notice. [ Note 6.] An organization served with a Fed. R. Civ. P. 30(b)(6) notice of deposition has an obligation not only to pick and produce persons who have knowledge of the subject matter identified in the notice [ Note 7.] but also to prepare those persons so that they can give complete, knowledgeable, and binding answers as to matters known or reasonably available to the organization. [ Note 8.] The organization may either produce as many deponents as are necessary to respond to the areas of inquiry in the notice if there is no witness with personal knowledge of all areas of inquiry, or alternatively, may produce a witness who reviews the organization’s records to become familiar with the topics for the deposition so that he or she may give knowledgeable and binding answers for the organization. [ Note 9.] If more than one Fed. R. Civ. P. 30(b)(6) witness will be designated, those individuals should be identified and the areas on which each person will testify be described. [ Note 10.] Even if no current employees have knowledge of matters identified in the notice, an organization is not relieved of preparing a Fed. R. Civ. P. 30(b)(6) designee for deposition to the extent that such matters are reasonably available to the organization from past documents, past employees, or other sources. [ Note 11.]

If it becomes obvious during the course of a Fed. R. Civ. P. 30(b)(6) deposition that the organization’s designee is deficient regarding his or her knowledge of matters reasonably known to the organization, the organization is obliged to provide a substitute and to prepare a designee to provide testimony in areas as to which its other representative was uninformed. [ Note 12.]

A party may be subject to a motion to compel for failure to designate a person pursuant to Fed. R. Civ. P. 30(b)(6) or if such designated person fails to appear for deposition or fails to answer any question propounded in a discovery deposition. [ Note 13.] A party may be subject to sanctions for failure of a designated person to attend the Fed. R. Civ. P. 30(b)(6) discovery deposition if after being served with proper notice, the party informs the party seeking the deposition that no response will be made. [ Note 14.] The production of an unprepared witness is tantamount to a failure to appear. [ Note 15.]

For more information regarding motions to compel and motions for sanctions, see TBMP § 523 and TBMP § 527.

Even though more than one person may be designated to testify under Fed. R. Civ. P. 30(b)(6) on various topics identified in the deposition notice, for purposes of the ten deposition limit under Fed. R. Civ. P. 30(a)(2)(A)(i), the Fed. R. Civ. P. 30(b)(6) deposition is treated as a single deposition. [ Note 16.] For purposes of the time limitation under Fed. R. Civ. P. 30(d)(1) limiting a deposition to "1 day of 7 hours," the deposition of each designated person under a Fed. R. Civ. P. 30(b)(6) notice of deposition is considered a separate deposition. [ Note 17.]

Prior deposition testimony from an individual witness on a particular topic, does not relieve a party organization of its responsibility to designate a witness in response to a Fed. R. Civ. P. 30(b)(6) notice of deposition on that topic as individual witness testimony under Fed. R. Civ. P. 30(b)(1) is not binding on the organization. [ Note 18.]

NOTES:

 1.   Folwell v. Hernandez, 210 F.R.D. 169, 173 (M.D.N.C. 2002). See also City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1672 n.4 (TTAB 2013) (citing Fed. R. Civ. P. 30(b)(6) Advisory Committee Notes) ("one purpose of this rule is that it ‘will curb the "bandying" by which officers or managing agents of a corporation are deposed in turn but each disclaims knowledge of facts that are clearly known to persons in the organization and thereby to it.").

 2.   Fed. R. Civ. P. 30(b)(6). See Pioneer Drive, LLC v. Nissan Diesel America, Inc., 262 F.R.D. 552, 558 (D. Mont., 2009) (Fed. R. Civ. P. 30(b)(6) designee speaks for the organization as a whole and must make efforts to be able to do so). 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2103 (3d ed. 2016).

 3.   Fed. R. Civ. P. 30(b)(6); 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2103 (3d ed. 2016).

 4.   Folwell v. Hernandez, 210 F.R.D. 169, 172 (M.D.N.C. 2002). ("One of the important consequences of Rule 30(b)(6) is that under it, only the [organization] selects the persons who will testify.")

 5.   See JSC Foreign Economic Association Technostroyexport v. International Development and Trade Services, Inc., 220 F.R.D. 235, 238 (S.D.N.Y. 2004) (Although a corporate officer, director, or managing agent may be subject to deposition by notice under Fed. R. Civ. P. 30(b)(1), a corporate employee or agent who does not qualify as an officer, director, or managing agent of the corporation is not subject to deposition by notice under Fed. R. Civ. P. 30(b)(1)). Cf. HighBeam Marketing LLC v. Highbeam Research LLC, 85 USPQ2d 1902, 1906 (TTAB 2008) (expert witness in employ of opposer for Board opposition proceeding was not an officer, director or managing agent of opposer and was "technically a non-party witness" subject to deposition by subpoena).

 6.   Fed. R. Civ. P. 30(b)(6).

 7.   City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1672 n.4 (TTAB 2013) ("Rule 30(b)(6) anticipates that a party’s designated witness will not necessarily have personal knowledge of all matters but will nonetheless offer testimony regarding information that the ‘party’ should be able to provide."); Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2049 n.5 (TTAB 1988). See also Mattel Inc. v. Walking Mountain Productions, 353 F3d 792, 69 USPQ2d 1257, 1260 n.4 (9th Cir. 2003) ("Rule 30(b)(6) depositions . . . are often referred to as ‘persons most knowledgeable’ or ‘persons most qualified’ depositions because ‘the notice of deposition or subpoena is directed at the entity itself’ and ‘[t]he entity will then be obligated to produce the "most qualified" person [or persons] to testify on its behalf . . . .’").

 8.   A&E Products Group L.P. v. Mainetti USA Inc., 70 USPQ2d 1080, 1086 (S.D.N.Y. 2004) (and cases cited therein).

 9.   International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1605 (TTAB 2002).

 10.   Fed. R. Civ. P. 30(b)(6).

 11.   United Technologies Motor Systems Inc. v. Borg-Warner Automotive Inc., 50 USPQ2d 1060, 1062 (E.D. Mich. 1998).

 12.   United Technologies Motor Systems Inc. v. Borg-Warner Automotive Inc., 50 USPQ2d 1060, 1062 (E.D. Mich. 1998). See Tulip Computers International B.V. v. Dell Computer Corp., 63 USPQ2d 1527, 1533 (D. Del. 2002) (purported failure to produce an adequately prepared Fed. R. Civ. P. 30(b)(6) witness may require a second deposition of that or another Fed. R. Civ. P. 30(b)(6) witness and payment of costs for second deposition).

 13.   37 C.F.R. § 2.120(f). See United Technologies Motor Systems Inc. v. Borg-Warner Automotive Inc., 50 USPQ2d 1060, 1063 (E.D. Mich. 1998) (motion to compel due to unprepared 30(b)(6) witness); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1297-98 (TTAB 1997) (motion to compel appearance at Fed. R. Civ. P. 30(b)(6) deposition due to refusal to appear).

 14.   37 C.F.R. § 2.120(h)(2).

 15.   United Technologies Motor Systems Inc. v. Borg-Warner Automotive Inc., 50 USPQ2d 1060, 1061 (E.D. Mich. 1998).

 16.   Fed. R. Civ. P. 30(b)(6) Notes of Advisory Committee on Rules –1993 Amendment.

 17.   Fed. R. Civ. P. 30(d) Committee Notes on Rules – 2000 Amendment.

 18.   Cf. Foster-Miller Inc. v. Babcock & Wilcox Canada, 210 F.3d 1, 54 USPQ2d 1193, 1205 (1st Cir. 2000) (fact that examining party had previously taken individual depositions of employees who were regarded as most knowledgeable on certain topics identified in a Fed. R. Civ. P. 30(b)(6) notice of deposition does not obviate responsibility of responding party to designate and produce those individuals as witnesses competent to testify on those topics on behalf of corporation).

404.06(c)    Time for Deposition

Fed. R. Civ. P. 30(d)(1) Duration. Unless otherwise stipulated or ordered by the court, a deposition is limited to 1 day of 7 hours. The court must allow additional time consistent with Rule 26(b)(1) and (2) if needed to fairly examine the deponent or if the deponent, another person, or any other circumstance impedes or delays the examination.

A deposition is limited to one day of seven hours unless stipulated by the parties or otherwise authorized by Board order. [ Note 1.] Only actual deposition time counts against the presumptive limit; reasonable lunch and other breaks do not count against the seven hours. [ Note 2.] For Fed. R. Civ. P. 30(b)(6) depositions, the deposition of each designated person is considered a separate deposition for purposes of the durational limit. [ Note 3.]

The party seeking an order extending the examination or otherwise altering the time limitation is expected to show good cause. [ Note 4.] Fed. R. Civ. P. 30(d)(1) allows for additional time consistent with Fed. R. Civ. P. 26(b)(2) if needed for fair examination of the deponent. [ Note 5.] If the deponent or other person impedes or delays examination, additional time must be allowed. [ Note 6.] Additional time for deposition should be allowed if examination is delayed by "other circumstance" which might include "a power outage, health emergency, or other event." [ Note 7.] Orders directing shorter depositions or limited periods on several days are permitted. [ Note 8.]

The parties are expected to make reasonable accommodations to obviate the need for motion practice before the Board regarding deposition time limits. However, a party who requires Board intervention may wish to contact the Board attorney by telephone for assistance. See TBMP § 413.01.

NOTES:

 1.   Fed. R. Civ. P. 30(d)(1).

 2.   Fed. R. Civ. P. 30(d) Committee Notes on Rules – 2000 Amendment.

 3.   Fed. R. Civ. P. 30(d) Committee Notes on Rules – 2000 Amendment.

 4.   Fed. R. Civ. P. 30(d) Committee Notes on Rules – 2000 Amendment.

 5.   Fed. R. Civ. P. 30(d) Committee Notes on Rules – 2000 Amendment.

 6.   Fed. R. Civ. P. 30(d) Committee Notes on Rules – 2000 Amendment.

 7.   Fed. R. Civ. P. 30(d) Committee Notes on Rules – 2000 Amendment.

 8.   Fed. R. Civ. P. 30(d) Committee Notes on Rules – 2000 Amendment; Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1677 (TTAB 2005) (limiting depositions of three deponents to three hours per deponent and conducted consecutively over one and one half days).

404.06(d)    Re-Deposing a Witness

Fed. R. Civ. P. 30(a). When A Deposition May Be Taken.

* * * *

• (2) With Leave. A party must obtain leave of court, and the court must grant leave to the extent consistent with Rule 26(b)(1) and (2):

  * * * *

  • (A) if the parties have not stipulated to the deposition and:

    * * * *

    • (ii) the deponent has already been deposed in the case;

      * * * *

  

When a person has already been deposed in the case, a party must seek leave of the Board to take a second deposition if the parties have not stipulated thereto. [ Note 1.]

The decision to grant or deny leave to re-depose a witness is at the discretion of the Board and is guided by Fed. R. Civ. P. 26(b)(1) and (2). [ Note 2.]

In deciding the motion, the Board will consider whether the discovery sought is unreasonably cumulative or duplicative, or is obtainable from some other source that is more convenient, less burdensome, or less expensive; the party seeking discovery has had ample opportunity by discovery in the action to obtain the information sought; and the burden or expense of the proposed discovery outweighs its likely benefit. [ Note 3.]

The requirement to seek leave does not apply if the deposition is temporarily recessed for the convenience of counsel or the deponent, or to enable additional materials to be gathered for review or discussion during the deposition. [ Note 4.] If significant travel costs would be incurred to resume the deposition, the parties should consider the possibility of conducting the remaining examination by telephonic or other remote means, if feasible. [ Note 5.]

NOTES:

 1.   Fed. R. Civ. P. 30(a)(2)(A)(ii).

 2.   Fed. R. Civ. P. 30(a)(2).

 3.   Fed. R. Civ. P. 26(b)(2)(C)(i)-(iii); International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1605 (TTAB 2002) (denying motion to take a second Fed. R. Civ. P. 30(b)(6) witness deposition when a designated Fed. R. Civ. P. 30(b)(6) witness had already testified at length on the same noticed topics).

 4.   Fed. R. Civ. P. 30(a)(2)(A)(ii) Notes of Advisory Committee on Rules – 1993 Amendment. Cf. Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1673 (TTAB 2005) (noting that Board had previously granted motion to compel continued deposition of officer in individual and corporate capacity because original deposition had been adjourned to enable completion of document production).

 5.   Fed. R. Civ. P. 30(a)(2)(A)(ii) Notes of Advisory Committee on Rules – 1993 Amendment.

404.07    Discovery Depositions on Written Questions

Discovery depositions on written questions are taken in the manner prescribed by 37 C.F.R. § 2.124.

404.07(a)    Depositions on Written Questions: Before Whom Taken

37 C.F.R. § 2.124(a)  A deposition upon written questions may be taken before any person before whom depositions may be taken as provided by Rule 28 of the Federal Rules of Civil Procedure.

A deposition on written questions, like a deposition on oral examination, may be taken before the persons described in Fed. R. Civ. P. 28. [ Note 1.] TBMP § 404.04.

NOTES:

 1.   37 C.F.R. § 2.124(a).

404.07(b)    Depositions on Written Questions: When Taken

37 C.F.R. § 2.120(a)(3)  . . . Discovery depositions must be properly noticed and taken during the discovery period. * * * *

Discovery depositions must be both properly noticed and taken during the discovery period. [ Note 1.] TBMP § 404.01. Thus, it is recommended that a party, that desires to take a discovery deposition on written questions initiate the procedure early in its discovery period. The question whether to suspend discovery activities unrelated to a proposed discovery deposition on written questions, or to allow other discovery activities to proceed, is a matter left to the Board’s exercise of its discretion to schedule matters before it. [ Note 2.]

NOTES:

 1.   37 C.F.R. § 2.120(a)(3).

 2.   Cf. 37 C.F.R. § 2.124(d)(2)  (Board "shall" suspend for testimonial deposition on written questions).

404.07(c)    Depositions on Written Questions: Place of Deposition

For information concerning the place where a discovery deposition on written questions is taken, see TBMP § 404.03.

404.07(d)    Depositions on Written Questions: Notice of Deposition

37 C.F.R. § 2.124(b)(2)  A party desiring to take a discovery deposition upon written questions shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board. The notice shall state the name and address, if known, of the person whose deposition is to be taken. If the name of the person is not known, a general description sufficient to identify the witness or the particular class or group to which he or she belongs shall be stated in the notice, and the party from whom the discovery deposition is to be taken shall designate one or more persons to be deposed in the same manner as is provided by Rule 30(b)(6) of the Federal Rules of Civil Procedure.

37 C.F.R. § 2.124(c)  Every notice given under the provisions of paragraph (b) of this section shall be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken.

37 C.F.R. § 2.124(d)(1)  Every notice served on any adverse party under the provisions of paragraphs (b)(1) and (2) of this section, for the taking of direct examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the deposition. * * * *

37 C.F.R. § 2.124(d)(3)  Service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).

A party that desires to take a discovery deposition on written questions must serve notice thereof on each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board. [ Note 1.]

The notice must state the name and address, if known, of the person whose deposition is to be taken. If the name of the person is not known, a general description sufficient to identify the person is to be provided so the responding party can designate one or more persons to be deposed. The notice must also be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken. [ Note 2.] Copies of the notice served on adverse parties must be accompanied by the written questions to be propounded on behalf of the deposing party. [ Note 3.]

For further information concerning notices of deposition in general, see TBMP § 404.05.

NOTES:

 1.   37 C.F.R. § 2.124(b)(2).

 2.   37 C.F.R. § 2.124(b)(2)  and 37 C.F.R. § 2.124(c).

 3.   37 C.F.R. § 2.124(d)(1).

404.07(e)    Depositions on Written Questions: Examination of Witness

37 C.F.R. § 2.124(d)(1)  . . . Every notice served on any adverse party under the provisions of paragraph (b)(3) of this section, for the taking of cross-examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the cross-examination. Within twenty days from the date of service of the notice of taking direct examination or service of a testimony affidavit or declaration, any adverse party may serve cross questions upon the party who proposes to take the deposition. Any party who serves cross questions, whether in response to direct examination questions or under paragraph (b)(3) of this section, shall also serve every other adverse party. Within ten days from the date of service of the cross questions, the party who proposes to take the deposition, or who earlier offered testimony of the witness by affidavit or declaration, may serve redirect questions on every adverse party. Within ten days from the date of service of the redirect questions, any party who served cross questions may serve recross questions upon the party who proposes to take the deposition or who earlier offered testimony of the witness by affidavit or declaration; any party who serves recross questions shall also serve every other adverse party. Written objections to questions may be served on a party propounding questions; any party who objects shall serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within ten days of the date of service of the objections; substitute questions shall be served on every other adverse party.

37 C.F.R. § 2.124(d)(2)  Upon motion for good cause by any party, or upon its own initiative, the Trademark Trial and Appeal Board may extend any of the time periods provided by paragraph (d)(1) of this section. * * * *

37 C.F.R.§ 2.124(d)(3)  Service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).

37 C.F.R. § 2.124(e)  Within ten days after the last date when questions, objections, or substitute questions may be served, the party who proposes to take the deposition shall mail a copy of the notice and copies of all the questions to the officer designated in the notice; a copy of the notice and of all the questions mailed to the officer shall be served on every adverse party. The officer designated in the notice shall take the testimony of the witness in response to the questions and shall record each answer immediately after the corresponding question. The officer shall then certify the transcript and mail the transcript and exhibits to the party who took the deposition.

Within 20 days from the date of service of the notice in accordance with 37 C.F.R. § 2.119(b), [ Note 1.] any adverse party may serve cross questions on the deposing party. A party that serves cross questions on the deposing party must also serve copies thereof on every other adverse party. Within 10 days from the date of service of the cross questions in accordance with 37 C.F.R. § 2.119(b), the deposing party may serve redirect questions on every adverse party. Within 10 days from the date of service of the redirect questions in accordance with 37 C.F.R. § 2.119(b), any party that served cross questions may serve recross questions on the deposing party. A party which serves recross questions on the deposing party must also serve copies thereof on every other adverse party. [ Note 2.]

Written objections to questions may be served on the party that propounded the questions. A party that serves objections on a propounding party must also serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within 10 days from the date of service of the objections in accordance with 37 C.F.R. § 2.119(b). The substitute questions must also be served on every other adverse party. [ Note 3.]

As all discovery depositions must be completed within the discovery period, including depositions on written questions, on motion for good cause filed by any party, or on its own initiative, the Board may extend any of the time periods specified in 37 C.F.R. § 2.124(d)(1), that is, the time periods for serving cross questions, redirect questions, recross questions, objections, and substitute questions to allow for the orderly completion of the depositions on written questions. [ Note 4.]

Within 10 days after the last date when questions, objections, or substitute questions may be served, the deposing party must mail a copy of the notice and copies of all the questions to the officer designated in the notice. A copy of the notice and of all the questions mailed to the officer must also be served on every adverse party. The officer designated in the notice shall take the testimony of the witness in response to the questions, and shall record each answer immediately after the corresponding question. [ Note 5.] Please Note: There is no longer an additional five days to act under 37 C.F.R. 2.119(c) when service is made by first-class mail, Priority Mail Express®, or overnight courier. [ Note 6.]

NOTES:

 1.   37 C.F.R. § 2.119(c).

 2.   37 C.F.R. § 2.124(d)(1). See Nahshin v. Product Source International LLC, 107 USPQ2d 1257, 1259 (TTAB 2013) (discussing the procedure for deposition on written questions under 37 C.F.R. § 2.124(d)); Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979).

 3.   37 C.F.R. § 2.124(d)(1). See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990).

 4.   See 37 C.F.R. § 2.124(d)(2)  regarding suspension of proceedings for testimonial depositions on written questions.

 5.   37 C.F.R. § 2.124(e).

 6.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).

404.07(f)    Depositions on Written Questions: Objections

37 C.F.R. § 2.124(d)(1)  . . . Written objections to questions may be served on a party propounding questions; any party who objects shall serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within ten days of the date of service of the objections; substitute questions shall be served on every other adverse party.

37 C.F.R. § 2.124(d)(3) Service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).

37 C.F.R. § 2.124(g)  Objections to questions and answers in depositions upon written questions may be considered at final hearing.

Written objections to questions propounded for a deposition on written questions may be served on the party that propounded the questions. Any party that serves written objections on a propounding party must also serve a copy of the objections on every other adverse party. [ Note 1.] For information regarding objections to testimony depositions on written questions, see TBMP § 703.02(k).

Objections to questions and answers in depositions on written questions, as in oral depositions, generally are considered by the Board (unless waived) at final hearing. [ Note 2.] If a party’s objections have been overcome by service of revised questions, the objecting party should file and serve notice of which objections no longer need be considered by the Board. Further, objections not maintained in a brief at final hearing may be considered waived by the Board. See TBMP § 707.03(c) and TBMP § 707.04.

For further information concerning the raising of objections to discovery depositions, see TBMP § 404.08. For information concerning the raising of objections to a notice of reliance on a discovery deposition, see TBMP § 707.02 and TBMP § 532.

NOTES:

 1.   37 C.F.R. § 2.124(d)(1).

 2.   37 C.F.R. § 2.124(g); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990) (objections based on relevancy deferred until final hearing). See also Nahshin v. Product Source International LLC, 107 USPQ2d 1257, 1259 (TTAB 2013) (discussing objections on depositions on written questions under 37 C.F.R. § 2.124(d)(1)).

404.07(g)    Depositions on Written Questions: Form of Deposition; Signature

37 C.F.R. § 2.124(e)  . . . The officer designated in the notice shall take the testimony of the witness in response to the questions and shall record each answer immediately after the corresponding question. * * * *

The officer before whom a deposition on written questions is taken shall record each answer immediately after the corresponding question. [ Note 1.]

For further information concerning the form of a deposition taken in an inter partes proceeding before the Board, see 37 C.F.R. § 2.123(g)  and TBMP § 703.01(i). For information concerning signature of a deposition taken in an inter partes proceeding before the Board, see 37 C.F.R. § 2.123(e)(5), and TBMP § 703.01(j).

NOTES:

 1.   37 C.F.R. § 2.124(e).

404.07(h)    Depositions on Written Questions: Certification of Deposition

37 C.F.R. § 2.124(e)  Within ten days after the last date when questions, objections, or substitute questions may be served, the party who proposes to take the deposition shall mail a copy of the notice and copies of all the questions to the officer designated in the notice; a copy of the notice and of all the questions mailed to the officer shall be served on every adverse party. The officer designated in the notice shall take the testimony of the witness in response to the questions and shall record each answer immediately after the corresponding question. The officer shall then certify the transcript and mail the transcript and exhibits to the party who took the deposition.

After the officer designated in the notice of deposition has taken a deposition on written questions, the officer must certify the transcript of the deposition. When the transcript has been certified, the officer shall mail the transcript and exhibits to the party that took the deposition. [ Note 1.] For further information concerning certification of a deposition taken in an inter partes proceeding before the Board, see TBMP § 703.01(k).

NOTES:

 1.   37 C.F.R. § 2.124(e). See 37 C.F.R. § 2.123(f).

404.07(i)    Depositions on Written Questions: Service, Correction, and Making the Deposition of Record

37 C.F.R. § 2.124(f)  The party who took the deposition shall promptly serve a copy of the transcript, copies of documentary exhibits, and duplicates or photographs of physical exhibits on every adverse party. It is the responsibility of the party who takes the deposition to assure that the transcript is correct (see § 2.125(c)). If the deposition is a discovery deposition, it may be made of record as provided by § 2.120(k). If the deposition is a testimonial deposition, the original, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be filed promptly with the Trademark Trial and Appeal Board.

The party that took the deposition on written questions must promptly serve a copy of the transcript, with exhibits, on every adverse party. [ Note 1.] See also TBMP § 703.01(m) regarding service of a testimony deposition transcript. The party that took the deposition must also assure that the transcript is correct. [ Note 2.] For information concerning correction of errors in a testimony deposition taken in a Board inter partes proceeding, see TBMP § 703.01(n).

If the discovery deposition is to be made of record, the same procedures provided by 37 C.F.R. § 2.120(k)  are to be followed. [ Note 3.] With respect to making a discovery deposition of record, see TBMP § 704.09.

NOTES:

 1.   37 C.F.R. § 2.124(f).

 2.   37 C.F.R. § 2.124(f)  and 37 C.F.R. § 2.125(b). Cf. Hollywood Casino LLC v. Chateau Celeste, Inc., 116 USPQ2d 1988. 1994-97 (TTAB 2015) (while a party may submit an errata sheet correcting typographical errors to a deposition transcript, such party may not submit or rely upon an errata sheet which substantively changes the deposition testimony).

 3.   37 C.F.R. § 2.124(f). See also Fischer GmbH v. Molnar & Co., Inc., 203 USPQ 861, 866 n.6 (TTAB 1979).

404.07(j)    Deposition on Written Questions: Utility

A deposition on written questions is a cumbersome, time-consuming procedure. It requires that cross questions, redirect questions, recross questions, and objections all be framed and served before the questions on direct examination have even been answered. Moreover, it deprives an adverse party of face-to-face confrontation and the opportunity to ask follow-up questions based on answers to previous questions. [ Note 1.] For information regarding the utility of taking testimony depositions on written questions, see TBMP § 703.02(m).

Nevertheless, it has some utility. It may be the only means by which a deposition may be taken in a foreign country. Moreover, the deposition on written questions may be less expensive than the deposition on oral examination, and is usually more convenient for the witness.

NOTES:

 1.   37 C.F.R. § 2.124(d)(1); Orion Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923, 1926 (TTAB 1989). See also Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990), corrected at 19 USPQ2d 1479; Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980); Fischer GmbH v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979).

404.08    Discovery Deposition Objections

Objections made to the taking of a discovery deposition include errors and irregularities to the notice of deposition, the manner of taking the deposition, the form of a question or answer, the oath or affirmation or a party’s conduct, and the disqualification of an officer. [ Note 1.] Objections may also be made as to the competency of a witness or to the competency, relevancy, or materiality of discovery deposition testimony. [ Note 2.]

NOTES:

 1.   Fed. R. Civ. P. 30(c)(2); Fed. R. Civ. P. 32(d)(1)-(2); Fed. R. Civ. P. 32(d)(3)(B).

 2.   Fed. R. Civ. P. 30(c)(2); Fed. R. Civ. P. 32(d)(3)(A).

404.08(a)    Objections to Notice

Objections to errors and irregularities in a notice of the taking of a discovery deposition must be promptly served, in writing, on the party giving the notice; any such objections that are not promptly served are waived. [ Note 1.] For information concerning the raising of objections to a notice of reliance on a discovery deposition, see TBMP § 707.02 and TBMP § 532. For information regarding a motion to quash a notice of deposition or for a protective order, see TBMP § 521 and TBMP § 410.

NOTES:

 1.   Fed. R. Civ. P. 32(d)(1). Compare S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1298 (TTAB 1997) (Board will not rule in advance of deposition as to whether information sought is confidential or otherwise objectionable); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB1974) (objections to subject matter of deposition may only be raised during, not prior to, the deposition), with Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1864 (TTAB 2001) (objections to subject matter of Fed. R. Civ. P. 30(b)(6) deposition raised prior to deposition). Cf. with regard to notice of testimony depositions, 37 C.F.R. § 2.123(j); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1652 and 1655 (TTAB 2007) (overruling objections that notice of deposition was facially deficient and noting that a ruling on sufficiency of notice could have been made prior to the deposition by seeking a telephone conference with a Board attorney); Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (premature taking of testimony deposition could have been corrected upon seasonable objection); Steiger Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 169 (TTAB 1984) (testimony deposition excluded where notice did not name witness and objection was timely made and consistently maintained), reconsideration granted on other grounds, 3 USPQ2d 1708 (TTAB 1984); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.6 (TTAB 1982).

404.08(b)    Objections as to Disqualification of Officer

An objection to the taking of a discovery deposition because of a disqualification of the officer before whom the deposition is to be taken is waived unless it is made before the deposition begins, or as soon thereafter as the disqualification becomes known or could be discovered with reasonable diligence. [ Note 1.]

NOTES:

 1.   Fed. R. Civ. P. 32(d)(2). Cf. 37 C.F.R. § 2.123(j).

404.08(c)    Objections During Deposition

Fed. R. Civ. P. 30(c)(2) Objections. An objection at the time of the examination—whether to evidence, to a party’s conduct, to the officer’s qualifications, to the manner of taking the deposition, or to any other aspect of the deposition—must be noted on the record, but the examination still proceeds; the testimony is taken subject to any objection. An objection must be stated concisely in a nonargumentative and nonsuggestive manner. A person may instruct a deponent not to answer only when necessary to preserve a privilege, to enforce a limitation ordered by the court, or to present a motion under Rule 30(d)(3).

Fed. R. Civ. P. 32(d) Waiver of Objections.

• (3) To the Taking of the Deposition.
  • (A) Objection to Competence, Relevance, or Materiality. An objection to a deponent’s competence—or to the competence, relevance, or materiality of testimony—is not waived by a failure to make the objection before or during the deposition, unless the ground for it might have been corrected at that time.
  • (B) Objection to an Error or Irregularity. An objection to an error or irregularity at an oral examination is waived if:
    • (i) it relates to the manner of taking the deposition, the form of a question or answer, the oath or affirmation, a party’s conduct, or other matters that might have been corrected at that time; and
    • (ii) it is not timely made during the deposition.
  

Objections to the competency of a witness or to the competency, relevancy, or materiality of discovery deposition testimony are not waived by failure to make them before or during the taking of the deposition, unless the ground of the objection is one which might have been obviated or removed if presented at that time. [ Note 1.]

In the case of a discovery deposition taken on oral examination, objections to errors and irregularities occurring at the deposition in the manner of taking the deposition, in the form of the questions or answers, in the oath or affirmation, or in the conduct of the parties, and objections to errors of any kind which might be obviated, removed, or cured if promptly presented, are waived unless seasonably made at the deposition. [ Note 2.]

For information concerning objections to the form of questions in the case of a discovery deposition on written questions, see TBMP § 404.07(f).

If a party believes that a question propounded at a discovery deposition is improper, it may state its objection thereto. Objections should be made concisely and in a nonargumentative manner. [ Note 3.] Objections should ordinarily be limited to those that under Fed. R. Civ. P. 32(d)(3) might be waived if not made at that time. [ Note 4.] Questions objected to ordinarily should be answered subject to the objection, but a witness may properly refuse to answer a question asking for information which is, for example, privileged or not otherwise subject to disclosure under the terms of either the Board’s standard protective order or, if the parties have made modifications thereto, the parties’ agreed and approved protective order. [ Note 5.] If a witness, having stated an objection to a discovery deposition question, answers the question subject to the objection, and the deposition is subsequently made of record in the proceeding pursuant to the provisions of 37 C.F.R. § 2.120(k)(1), 37 C.F.R. § 2.120(k)(2), 37 C.F.R. § 2.120(k)(3)(i), or 37 C.F.R. § 2.120(k)(4), the propriety of the objection will be considered by the Board at final hearing when the objection is preserved in the final brief; that is, the Board will evaluate the testimony in light of the stated objection. [ Note 6.]

For information concerning the propounding party’s options if a witness not only objects to, but also refuses to answer, a particular question during a discovery deposition, see TBMP § 411.04. [ Note 7.]

NOTES:

 1.   Fed. R. Civ. P. 32(d)(3)(A). Cf. 37 C.F.R. § 2.123(k); Nahshin v. Product Source International LLC, 107 USPQ2d 1257, 1259 (TTAB 2013) (in unusual circumstance involving testimonial deposition on written questions where adverse party had opportunity to review deponent’s answers before drafting its cross-questions, procedure was akin to an oral deposition and adverse party’s failure to object at the time of service of cross-questions when defect could have been cured resulted in waiver).

 2.   Fed. R. Civ. P. 32(d)(3)(B). Cf. 37 C.F.R. § 2.123(j).

 3.   Fed. R. Civ. P. 30(c)(2).

 4.   Fed. R. Civ. P. 30(d); Fed. R. Civ. P. 30(d) Notes of Advisory Committee on Rules – 1993 Amendment.

 5.   See 37 C.F.R. § 2.116(g)  and 37 C.F.R. § 2.123(e)(4); Fed. R. Civ. P. 26(b), 30(c)(2), and 37(a); Fed. R. Evid. 501; 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2113 (3d ed. 2016). See also Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1676 (TTAB 1988) (Board, upon motion to compel, allowed parties time to work out protective order under which confidential information would be provided).

 6.   37 C.F.R. § 2.120(k)(3)(i); Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979) (objections to discovery deposition questions should be preserved and argued in the briefs at final hearing); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974). Cf. Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1632 (TTAB 2007) (objections made during testimonial deposition waived due to failure to preserve the objections by renewing them in brief); Starbucks U.S. Brands LLC v. Ruben, 78 USPQ2d 1741, 1746-47 (TTAB 2006) (while objections made at time of testimonial deposition were renewed in brief on case, Board deemed objections insufficiently preserved because brief failed to identify the objections with specificity).

 7.   See also Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974) (if party objects to and refuses to answer certain deposition questions, party deposing may seek subpoena from court to compel responses or file motion with Board to compel answers).

404.09    Discovery Depositions Compared to Testimony Depositions

A discovery deposition, like a testimony deposition, may be taken either on oral examination or on written questions. [ Note 1.] In fact, the actual taking of a discovery deposition is similar to the taking of a testimony deposition. Nevertheless, there are substantial differences between the two, stemming from the differences between the discovery and trial stages of a proceeding. Some of the most significant differences are discussed below. A discovery deposition is a broad discovery device used by a party to obtain from an adversary information about the adversary’s case, or to obtain from a non-party information that may be helpful to the deposing party’s case. The discovery deposition is taken of the adversary or a non-party, or an official or employee of the adversary or a non-party. A testimony deposition, on the other hand, is a narrower device used by a party to present evidence in support of its own case. During a party’s testimony period, testimony depositions are taken, by or on behalf of the party, of the party himself or herself (if the party is an individual), or of an official or employee of the party, or of some other witness testifying (either willingly or under subpoena) on behalf of the party. [ Note 2.]

The discovery deposition may only be taken during the discovery period, which is ongoing for all parties at the same time. See TBMP § 403.02. [ Note 3.] A party may only take a testimony deposition during the party’s assigned testimony period; each party has an assigned testimony period, and only the party to which a particular testimony period is assigned may take testimony therein. [ Note 4.]

In a discovery deposition, a party may seek information that would be inadmissible at trial, provided that the information sought appears relevant to any party’s claim or defense and proportional to the needs of the case. [ Note 5.] In a testimony deposition, a party may properly adduce only evidence admissible under the applicable rules of evidence; inadmissibility is a valid ground for objection. [ Note 6.]

In both types of depositions, questions objected to ordinarily should be answered subject to the objection, but a witness may properly refuse to answer a question asking for information that is, for example, privileged or not otherwise subject to disclosure under the terms of either the Board’s standard protective order or, if the parties have made modifications thereto, the parties’ agreed and approved protective order. [ Note 7.] Both types of depositions are taken out of the presence of the Board, and if a witness not only objects to, but also refuses to answer a particular question, and if the deposition is being taken pursuant to a subpoena, issued pursuant to 35 U.S.C. § 24  and Fed. R. Civ. P. 45, the propounding party may attempt to obtain an immediate ruling on the propriety of the objection only by adjourning the deposition and applying, under 35 U.S.C. § 24, to the federal district court, in the jurisdiction where the deposition is being taken, for an order compelling the witness to answer. [ Note 8.]

In the case of a discovery deposition, there is also available to the propounding party the simpler and more convenient alternative of completing the deposition and then filing a motion with the Board to compel the witness to answer the unanswered question. [ Note 9.] A motion to compel is not available, however, in the case of a testimony deposition taken in a proceeding before the Board, nor is there any other mechanism for obtaining from the Board, prior to final hearing, a ruling on the propriety of an objection to a question propounded during a testimony deposition. [ Note 10.]

Accordingly, in those cases where the witness in a testimony deposition refuses to answer a particular question, no court action is sought, and the Board finds at final hearing that the objection was not well taken, the Board may presume that the answer would have been unfavorable to the position of the party whose witness refused to answer, or may find that the refusal to answer reduces the probative value of the witness testimony. [ Note 11.]

A discovery deposition does not form part of the evidentiary record in a case unless a party entitled to offer it into evidence files, during the party’s testimony period, the deposition together with a notice of reliance thereon. [ Note 12.] TBMP § 704.09. That is, the offering of a discovery deposition in evidence is voluntary, not mandatory. [ Note 13.] See TBMP § 704.09 regarding introducing discovery depositions into evidence.

Every testimony deposition taken must be filed, and, when filed, becomes part of the record; a notice of reliance thereon is not necessary. [ Note 14.] TBMP § 703.01(l).

The discovery deposition of an adverse party may be taken on notice alone. TBMP § 404.03. However, the testimony deposition of an adverse party, unless obtained voluntarily (or as cross-examination under 37 C.F.R. § 2.123(a)  after the adverse party takes testimony by affidavit or declaration), may only be taken pursuant to a subpoena issued by a United States district court. [ Note 15.] See TBMP § 703.01(f) regarding securing attendance of an adverse party or non-party and TBMP § 707.03(d) regarding the refusal of a party to answer testimony deposition question.

NOTES:

 1.   See 37 C.F.R. § 2.120(b); 37 C.F.R. § 2.120(c); 37 C.F.R. § 2.123(a); 37 C.F.R. § 2.124; see also Fed. R. Civ. P. 30 & 31.

 2.   See Fischer GmbH v. Molnar & Co., 203 USPQ 861, 865-66 (TTAB 1979); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978). Cf. Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720 (TTAB 1987) ("The purpose of discovery is to provide information which may aid a party in the preparation of its own case or in the cross-examination of its adversary’s witnesses.").

 3.   See Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978) (deposition notices served before discovery period ended for depositions scheduled after discovery period ended are untimely).

 4.   37 C.F.R. § 2.121(a).

 5.   See Fed. R. Civ. P. 26(b)(1).

 6.   See 37 C.F.R. § 2.122(a)  and 37 C.F.R. § 2.123(k).

 7.   See 37 C.F.R. § 2.116(g); 37 C.F.R. § 2.123(e)(4); Fed. R. Civ. P. 26(b)(5), 30(c)(2), and 37(a)(3)(B); Fed. R. Evid. 501; 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2113 (3d ed. 2016).

 8.   See Ferro Corp. v. SCM Corp., 219 USPQ 346, 351 (TTAB 1983); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974).

 9.   37 C.F.R. § 2.120(f); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974).

 10.   See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431-32 (TTAB 1998) (motion to compel not available for testimonial depositions);Ferro Corp. v. SCM Corp., 219 USPQ 346, 351 (TTAB 1983) (should have applied to district court for order compelling answers).

 11.   See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990) (a refusal to answer, if found to be unjustified, may be construed against the objecting party).

 12.   See 37 C.F.R. § 2.120(k). See also, e.g., Azalea Health Innovations, Inc. v. Rural Health Care, Inc., 125 USPQ2d 1236 (TTAB 2017) (absent stipulation of the parties or motion claiming exceptional circumstances granted by the Board, the discovery deposition of a non-party witness may not be introduced into evidence via notice of reliance); Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009) (motion granted allowing opposer to offer into evidence discovery deposition of non-party witness residing in a foreign country via notice of reliance because witness unavailable during trial phase and not willing to appear voluntarily); AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1831 (TTAB 2013) (parties stipulated that either party "may use any and all discovery depositions" as testimonial depositions); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1847 n.5 (TTAB 2008) (parties stipulated in notice of reliance to use of discovery depositions as trial testimony); Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012, 1014 (TTAB 2007) (applicant’s discovery deposition submitted by applicant by way of notice of reliance with consent of opposer). But see Maids to Order of Ohio Inc. v. Maid-to-Order Inc., 78 USPQ2d 1899, 1901 (TTAB 2006) (discovery deposition of adverse party’s president, although not submitted properly via notice of reliance was treated as being of record by the parties and therefore considered to have been stipulated into the record).

 13.   See, e.g., Fischer GmbH v. Molnar & Co., 203 USPQ 861, 867 (TTAB 1979); 37 C.F.R. § 2.120(k)(1), 37 C.F.R. § 2.120(k)(2), and 37 C.F.R. § 2.120(k)(3).

 14.   See generally 37 C.F.R. § 2.123.

 15.   See 35 U.S.C. § 24; 37 C.F.R. § 2.120(b); 37 C.F.R. § 2.123(a); Fed. R. Civ. P. 30(b) and Fed. R. Civ. P. 45; Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 (TTAB 1976). For further information concerning differences between discovery and testimony depositions, see Fischer GmbH v. Molnar & Co., 203 USPQ 861, 865-67 (TTAB 1979) (discovery deposition of non-party is not admissible as evidence under a notice of reliance absent compelling circumstances or consent of the adverse party given the functional and historical differences between discovery and trial); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 250 (TTAB 1978) (discovery and testimony depositions are "quite distinguishable"); see also Azalea Health Innovations, Inc. v. Rural Health Care, Inc., 125 USPQ2d 1236 (TTAB 2017) (absent stipulation of the parties or motion claiming exceptional circumstances granted by the Board, the discovery deposition of a non-party witness may not be introduced into evidence via notice of reliance).

Please Note: Fed. R. Civ. P. 45(a)(2) and 45(f), as amended in 2013, are not applicable as 35 U.S.C. § 24  is controlling. See 37 C.F.R. § 2.116(a)  ("Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.").

405    Interrogatories

405.01    When Permitted and By Whom

A party may only serve written interrogatories on any other party during the discovery period if the serving party previously served or concurrently serves therewith its initial disclosures, absent a stipulation or a granted motion, or upon order of the Board to the contrary. [ Note 1.] See TBMP § 403.02. Interrogatories must be served early enough in the discovery period, as originally set or as may have been reset by the Board, so that responses will be due no later than the close of discovery. [ Note 2.] TBMP § 403.02. Interrogatories may not be served on a non-party. [ Note 3.]

NOTES:

 1.   37 C.F.R. § 2.120(a)(3).

 2.   37 C.F.R. § 2.120(a)(3). See also Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1270 (TTAB 2017) (discovery must be served "early enough … so that responses will be due no later than the close of discovery"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69962 (October 7, 2016).

2. See Fed. R. Civ. P. 33; 37 C.F.R. § 2.120(d).

405.02    Scope

Interrogatories may seek any information that is discoverable under Fed. R. Civ. P. 26(b). [ Note 1.] An interrogatory that is otherwise proper is not necessarily objectionable merely because it requires a party to give an opinion or contention that relates to fact or the application of law to fact. [ Note 2.]

NOTES:

 1.   Fed. R. Civ. P. 33(a)(2).

 2.   Fed. R. Civ. P. 33(a)(2). See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1676 (TTAB 1988) (query whether opposer believes marks in question to be confusingly similar must be answered even though it requires opposer to draw legal conclusion). See also Gould Inc. v. Sanyo Electric Co., 179 USPQ 313, 314 (TTAB 1973) ("interrogatories may relate to any matters which can be inquired into under FRCP 26(b)").

405.03    Limit on Number

405.03(a)    Description of Limit

37 C.F.R. § 2.120(d)  Interrogatories. The total number of written interrogatories which a party may serve upon another party pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed seventy-five, counting subparts, except that the Trademark Trial and Appeal Board, in its discretion, may allow additional interrogatories upon motion therefor showing good cause, or upon stipulation of the parties, approved by the Board. A motion for leave to serve additional interrogatories must be filed and granted prior to the service of the proposed additional interrogatories and must be accompanied by a copy of the interrogatories, if any, which have already been served by the moving party, and by a copy of the interrogatories proposed to be served. * * * *

The total number of interrogatories which a party may serve on another party, in a proceeding, may not exceed 75, counting subparts, except that the Board may allow additional interrogatories on motion therefor showing good cause, or on stipulation of the parties. [ Note 1.] See TBMP § 519. Parties may also stipulate that the limit on interrogatories shall be fewer than 75. [ Note 2.]

NOTES:

 1.   See Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467 n.5 (TTAB 1990) ("good cause will generally be found only where a legitimate need for further discovery by means of interrogatories is shown . . . the fact that the additional interrogatories served by opposer may be relevant and narrowly drawn to a single issue is insufficient, in and of itself, to demonstrate good cause.").

 2.   37 C.F.R. § 2.120(a)(2)(iv).

405.03(b)    Application of Limit: Sets of Interrogatories

The numerical limit specified in 37 C.F.R. § 2.120(d)  pertains to the total number of interrogatories that one party may serve on another party over the course of an entire proceeding, not just per set of interrogatories. Thus, if a party to a proceeding before the Board serves, over the course of the proceeding, two or more separate sets of interrogatories directed to the same party, the interrogatories in the separate sets would be added together for purposes of determining whether the numerical limit specified in the rule has been exceeded. [ Note 1.]

Accordingly, a party which is preparing a first set of interrogatories should reserve a portion of its allotted 75 interrogatories (counting subparts) to use for follow-up discovery, unless it is sure that it will not be serving follow-up interrogatories.

NOTES:

 1.   See Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467 (TTAB 1990).

405.03(c)    Application of Limit: Multiple Marks, Etc.

37 C.F.R. § 2.120(d)  does not provide for extra interrogatories in cases where more than one mark is pleaded and/or attacked by the plaintiff (whether in a single proceeding, or in consolidated proceedings), because in such cases, the propounding party may simply request that each interrogatory be answered with respect to each involved mark of the responding party, and the interrogatories will be counted the same as if they pertained to only one mark. Similarly, the rule does not provide for extra interrogatories in cases where there is a counterclaim, because in a proceeding before the Board, the discovery information needed by a party for purposes of litigating the plaintiff’s claim usually encompasses the information needed by that party for purposes of litigating a counterclaim. That is, the mere fact that a proceeding involves multiple marks (whether in a single proceeding, or in consolidated proceedings) and/or a counterclaim does not mean that a party is entitled to serve 75 interrogatories, counting subparts, for each mark, or for each proceeding that has been consolidated, or for both the main claim and the counterclaim. Nor does such fact, in and of itself, constitute good cause for a motion for leave to serve additional interrogatories. However, if a proceeding with multiple marks and/or a counterclaim involves unusually numerous or complex issues, these are factors that will be considered in determining a motion for leave to serve additional interrogatories.

405.03(d)    Application of Limit: Counting Interrogatories

In determining whether the number of interrogatories served by one party on another exceeds the limit specified in 37 C.F.R. § 2.120(d), the Board will count each subpart within an interrogatory as a separate interrogatory, regardless of whether the subpart is separately designated (i.e., separately numbered or lettered). [ Note 1.]

If an interrogatory includes questions set forth as numbered or lettered subparts, each separately designated subpart will be counted by the Board as a separate interrogatory. The propounding party will, to that extent, be bound by its own numbering system, and will not be heard to complain that an interrogatory, although propounded with separately designated subparts, should nevertheless be counted as a single interrogatory because the interrogatory concerns a single transaction, set of facts, etc., or because the division was made for clarification or convenience. [ Note 2.]

On the other hand, if a propounding party sets forth its interrogatories as 75 or fewer separately designated questions (counting both separately designated interrogatories and separately designated subparts), but the interrogatories actually contain more than 75 questions, the Board will not be bound by the propounding party’s numbering or designating system. Rather, the Board will look to the substance of the interrogatories, and count each question as a separate interrogatory. [ Note 3.] For example, if two or more questions are combined in a single compound interrogatory, and are not set out as separate subparts, the Board will look to the substance of the interrogatory, and count each of the combined questions as a separate interrogatory. [ Note 4.]

If an interrogatory contains both an initial question, and follow-up questions to be answered if the first is answered in the affirmative, the initial question and each follow-up question will be counted as separate interrogatories. [ Note 5.]

Similarly, if an interrogatory begins with a broad introductory clause ("Describe fully the facts and circumstances surrounding applicant’s first use of the mark XYZ, including:") followed by several subparts ("Applicant’s date of first use of the mark on the goods listed in the application," "Applicant’s date of first use of the mark on such goods in commerce," etc.), the Board will count the broad introductory clause and each subpart as a separate interrogatory, whether or not the subparts are separately designated. [ Note 6.]

If an interrogatory requests information concerning more than one issue, such as information concerning both "sales and advertising figures," or both "adoption and use," the Board will count each issue on which information is sought as a separate interrogatory. In contrast, if an interrogatory requests "all relevant facts and circumstances" concerning a single issue, event, or matter; or asks that a particular piece of information, such as, for example, annual sales figures under a mark, be given for multiple years, and/or for each of the responding party’s involved marks, it will be counted as a single interrogatory. [ Note 7.]

The introductory instructions or preamble to a set of interrogatories will not be counted by the Board as interrogatories or subparts for purposes of determining whether the limit specified in 37 C.F.R. § 2.120(d)  has been exceeded. On the other hand, the Board’s determination, on a motion to compel, of the adequacy of an interrogatory answer will not be governed by the introductory instructions or preamble; the Board is not bound by the instructions or preamble, and will make its own independent determination of the adequacy of the answer, without regard to the instructions or preamble. [ Note 8.]

NOTES:

 1.   Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990); Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990). Cf. Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385, 1387 (TTAB 2016) (parties should discuss their respective counting methods in attempt to resolve dispute over number; under no counting method did the interrogatories at issue exceed 75).

 2.   Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 (TTAB 1990).

 3.   Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990). Cf. Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016) (parties should nonetheless discuss their respective counting methods in attempt to resolve dispute over number).

 4.   See Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990).

 5.   Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990).

 6.   See Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990).

 7.   See NOTICE OF FINAL RULEMAKING, 54 Fed. Reg. 34886 (August 22, 1989).

 8.   See Avia Group International Inc. v. Faraut, 25 USPQ2d 1625, 1626 (TTAB 1992).

405.03(e)    Remedy for Excessive Interrogatories

37 C.F.R. § 2.120(d)  . . . If a party upon which interrogatories have been served believes that the number of interrogatories served exceeds the limitation specified in this paragraph (d), and is not willing to waive this basis for objection, the party shall, within the time for (and instead of) serving answers and specific objections to the interrogatories, serve a general objection on the ground of their excessive number. If the inquiring party, in turn, files a motion to compel discovery, the motion must be accompanied by a copy of the set(s) of interrogatories which together are said to exceed the limitation, and must otherwise comply with the requirements of paragraph (f) of this section.

If a party on which interrogatories have been served, in a proceeding before the Board, believes that the number of interrogatories exceeds the limit specified in 37 C.F.R. § 2.120(d), and wishes to object to the interrogatories on that basis, the party must, within the time for, and instead of, serving answers and specific objections to the interrogatories, serve a general objection on the ground of their excessive number. [ Note 1.] A party should not answer what it considers to be the first 75 interrogatories and object to the rest as excessive. [ Note 2.]

If a general objection on the ground of excessive number is asserted, and the propounding party, in turn, believes that the objection is not well taken, and wishes to obtain an adjudication from the Board as to the sufficiency thereof, the propounding party must file a motion to compel discovery. The motion must be accompanied by a copy of the set(s) of interrogatories which together are said to exceed the limitation, and must otherwise comply with the requirements of 37 C.F.R. § 2.120(f), including the requirement that a motion to compel be supported by a showing from the moving party that such party or its attorney has made a good faith effort, by conference or correspondence, to resolve with the other party or its attorney the issues presented in the motion and has been unable to reach agreement. [ Note 3.] The moving party should also set out its counting method showing that the number of interrogatories does not exceed 75. [ Note 4.] For further information concerning motions to compel discovery, see TBMP § 523.

If, on determining a motion to compel filed in response to a general objection to interrogatories on the ground of excessive number, the Board finds that the interrogatories are excessive in number, and that the propounding party has not previously used up its allotted 75 interrogatories, the Board normally will allow the propounding party an opportunity to serve a revised set of interrogatories not exceeding the limit specified in 37 C.F.R. § 2.120(d). The revised set of interrogatories serves as a substitute for the excessive set, and thus is deemed timely if the excessive set was timely. [ Note 5.] For information regarding the timing of interrogatories, see TBMP § 405.01.

However, if an order providing for a revised set is issued late in the discovery period or after the close of the discovery period, the discovery period will be extended or reopened, as appropriate, to permit service of and responses to the revised set. Where discovery is reopened, the scope of the revised set may not exceed the scope of the excessive set, that is, the revised set may not seek information beyond the scope of the excessive set. [ Note 6.]

A party may properly refuse to respond to a document request seeking all documents identified or referred to in response to interrogatories if the number of interrogatories is believed to be excessive. [ Note 7.]

In those cases where a party which has propounded interrogatories realizes, on receipt of a general objection thereto on the ground of excessive number, that the interrogatories are, in fact, excessive in number, it is strongly recommended that the parties voluntarily agree to the service of a revised set of interrogatories, in the manner normally allowed by the Board, instead of bringing their dispute to the Board by motion to compel.

NOTES:

 1.   37 C.F.R. § 2.120(d); Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016). Cf. Amazon Technologies v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (where party believes that it need not respond to discovery requests because the propounding party did not serve initial disclosures, it has a duty to specifically object on that basis).

 2.   Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990).

 3.   37 C.F.R. § 2.120(d)  and 37 C.F.R. § 2.120(f).

 4.   See, e.g., Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016) (parties should specifically discuss their respective counting methods in attempt to resolve dispute over number of interrogatories).

 5.   See Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990). See also Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398, 1398-99 (TTAB 1990) (excusing obligation to answer excessive set); Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990). Cf. Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1468 n.6 (TTAB 1990) (opposer may seek answers by taking discovery deposition of applicant).

 6.   37 C.F.R. § 2.120(a)(3). See, e.g., Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990).

 7.   See Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398, 1399 (TTAB 1990) (refusal to respond to document requests was proper; petitioner could not respond to document requests without first having to answer excessive interrogatories).

405.04    Responses to Interrogatories

405.04(a)    Time for Service of Responses

37 C.F.R. § 2.120(a)(3)  . . . Responses to interrogatories . . . must be served within thirty days from the date of service of such discovery requests. * * * *

Fed. R. Civ. P. 33(b)(2) Time to Respond. The responding party must serve its answers and any objections within 30 days after being served with the interrogatories. * * * *

Responses to interrogatories must be served within 30 days after the date of service of the interrogatories. TBMP § 403.03. The time to respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery. [ Note 1.] The resetting of a party’s time to respond to an outstanding request for discovery will not result in the automatic rescheduling of the discovery and/or testimony periods; such dates will be rescheduled only upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. [ Note 2.]

Service of responses to interrogatories must be made by email, unless otherwise stipulated, or if the serving party attempted service by email but service could not be made due to technical problems or extraordinary circumstances, by the manner described in 37 C.F.R. § 2.119(b)(1)  - 37 C.F.R. § 2.119(b)(4); however, if a party is not domiciled in the United States or not represented by an attorney or authorized representative in the United States, then no party to the proceeding is eligible to use postal mail as a manner of service. [ Note 3.] See TBMP § 113.04. Additionally, even if interrogatories are served by postal service or overnight courier (either by agreement or when email service was attempted but could not be made), 37 C.F.R. § 2.119(c) has been amended to remove the previous provision that added five days to the prescribed period for action after the date of service so that no additional time for service of discovery responses is allowed for responding to the requests by any manner of service. [ Note 4.] TBMP § 113.05 and TBMP § 403.03

A party which fails to respond to interrogatories during the time allowed therefor, and which is unable to show that its failure was the result of excusable neglect, may be found, on motion to compel filed by the propounding party, to have forfeited its right to object to the interrogatories on their merits. [ Note 5.] Objections going to the merits of an interrogatory or other discovery request include claims that the information sought by the request is irrelevant, overly broad, unduly vague and ambiguous, burdensome and oppressive, or not likely to lead to the discovery of admissible evidence. [ Note 6.] In contrast, objections based on claims of privilege or confidentiality or attorney work product do not go to the merits of the request, but instead to a characteristic of the information sought. [ Note 7.] Objections based on confidentiality are expected to be extremely limited because the Board’s standard protective order is in place for all Board inter partes proceedings. [ Note 8.]

NOTES:

 1.   37 C.F.R. § 2.120(a)(3).

 2.   37 C.F.R. § 2.120(a)(3).

 3.   37 C.F.R. § 2.119(b)  and 37 C.F.R. § 2.119(d). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959 (October 7, 2016).

 4.   37 C.F.R. § 2.119(c). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).

 5.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000) (stating that the Board has great discretion in determining whether such forfeiture should be found); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448, 449 (TTAB 1979) (excusable neglect not shown where opposer was out of the country and, upon return, failed to ascertain that responses were due); Crane Co. v. Shimano Industrial Co., 184 USPQ 691, 691 (TTAB 1975) (waived right to object by refusing to respond to interrogatories, claiming that they served "no useful purpose"). See also Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1303 (TTAB 1987) (right to object not waived where although discovery responses were late, there was some confusion regarding time to respond); MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953 (TTAB 1979) (although party failed to timely respond to discovery, party seeking such discovery is required to make good faith effort to determine why no response has been made before filing motion to compel).

 6.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000).

 7.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000) (party will generally not be found to have waived the right to make these objections).

 8.   37 C.F.R. § 2.116(g).

405.04(b)    Nature of Responses

Fed. R. Civ. P. 33(b)(3) Answering Each Interrogatory. Each interrogatory must, to the extent it is not objected to, be answered separately and fully in writing under oath.

Fed. R. Civ. P. 33(b)(4) Objections. The grounds for objecting to an interrogatory must be stated with specificity. Any ground not stated in a timely objection is waived unless the court, for good cause, excuses the failure.

Fed. R. Civ. P. 33(d) Option to Produce Business Records. If the answer to an interrogatory may be determined by examining, auditing, compiling, abstracting, or summarizing a party’s business records (including electronically stored information), and if the burden of deriving or ascertaining the answer will be substantially the same for either party, the responding party may answer by:

• (1) specifying the records that must be reviewed, in sufficient detail to enable the interrogating party to locate and identify them as readily as the responding party could; and
• (2) giving the interrogating party a reasonable opportunity to examine and audit the records and to make copies, compilations, abstracts, or summaries.

Ordinarily, a party on which interrogatories have been served should respond to them by stating, with respect to each interrogatory, either an answer or an objection. If an interrogatory is answered, the answer must be made separately and fully, in writing under oath. If an interrogatory is objected to, the reasons for objection must be specifically stated in lieu of an answer. [ Note 1.] In responding to interrogatories, "general objections" or boilerplate "specific objections" are not proper. Objections, if any, must be specifically asserted in response to each interrogatory against which they are interposed, and the ground or basis for each objection must be stated with specificity. [ Note 2.] The Board generally looks with disfavor on the practice of responding to written discovery by inserting repeated or "boilerplate" lists of objections which fail to set forth the ground or basis for the objection with respect to the interrogatory at issue. It is incumbent upon a party who has been served with interrogatories to respond by articulating its objections with particularity to those interrogatories (or parts of interrogatories) which it believes to be objectionable, and by providing the information sought in those interrogatories (or parts of interrogatories) which it believes to be proper. [ Note 3.] The burden of persuasion is on the objecting party to show that an interrogatory or part thereof should not be answered. [ Note 4.] If a responding party believes that the number of interrogatories served exceeds the limit specified in 37 C.F.R. § 2.120(d), and wishes to object to the interrogatories on this basis, the party must, within the time for, and instead of, serving answers and specific objections to the interrogatories, serve a general objection on the ground of their excessive number. [ Note 5.] TBMP § 405.03(e).

The Board prefers that the responding party reproduce each interrogatory immediately preceding the answer or objection thereto.

In some cases, pursuant to Fed. R. Civ. P. 33(d), the information sought in an interrogatory may be derived or ascertained from the business records of the responding party, or from an examination, audit, or inspection of those business records (including a compilation, abstract, or summary thereof) when the burden of deriving or ascertaining the information is substantially the same for the propounding party as for the responding party. In those cases, the responding party may answer the interrogatory by itself providing, in its written answer to the interrogatory, the information sought. Alternatively, the responding party may answer the interrogatory by specifying the records from which the information may be derived or ascertained, and affording to the propounding party reasonable opportunity to examine, audit, or inspect the records and to make copies, compilations, abstracts, or summaries. If the responding party elects to answer an interrogatory by specifying and producing business records, the specification must be in sufficient detail to permit the propounding party to locate and identify, as readily as can the responding party, the records from which the answer may be ascertained. [ Note 6.] A party seeking to invoke Fed. R. Civ. P. 33(d) with regard to electronic information may be required to provide some combination of technical support, information on application software, or other assistance to the requesting party. [ Note 7.] If direct access to its electronic information system is necessary to afford the requesting party an adequate opportunity to derive or ascertain the answer to an interrogatory, the answering party may determine that its need for privacy or confidentiality requires it to derive or ascertain the answer itself rather than invoke Fed. R. Civ. P. 33(d). [ Note 8.]

A responding party cannot simultaneously invoke the option to produce business records and claim the protection of a privilege as to the documents. [ Note 9.]

It is generally inappropriate for a party to respond to interrogatories by filing a motion attacking them, such as a motion to strike, a motion to suppress, a motion for a protective order, etc. [ Note 10.] Rather, the party ordinarily should respond by answering those interrogatories that it believes to be proper and stating its objections to those that it believes to be improper. TBMP § 410.

For information regarding a party’s duty to supplement responses to interrogatories, see TBMP § 408.03.

NOTES:

 1.   Fed. R. Civ. P. 33(b)(2), 33(b)(4).

 2.   Fed. R. Civ. P. 33(b)(4); Amazon Technologies, Inc. v. Wax, 93 USPQ2d 1702, 1704 (TTAB 2009); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984); see also 8B C. WRIGHT, A. MILLER & M. KANE, FEDERAL PRACTICE AND PROCEDURE Civil § 21732 (3d ed. 2017).

 3.   Fed. R. Civ. P. 33(b)(4); Amazon Technologies, Inc. v. Wax, 93 USPQ2d 1702, 1704 (TTAB 2009); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984); see also 8B C. WRIGHT, A. MILLER & M. KANE, FEDERAL PRACTICE AND PROCEDURE Civil § 21732 (3d ed. 2017).

 4.   Medtronic, Inc. v. Pacesetter Sys., Inc., 222 USPQ 80, 83 (TTAB 1984); Volkswagenwerk Aktiengesellschaft v. MTD Products Inc., 181 USPQ 471, 472 (TTAB 1974); see also 8B C. WRIGHT, A. MILLER & M. KANE, FEDERAL PRACTICE AND PROCEDURE Civil § 21732 (3d ed. 2017).

 5.   37 C.F.R. § 2.120(d). Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016).

 6.   Fed. R. Civ. P. 33(d); Johnson & Johnson v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS," 95 USPQ2d 1567, 1570 (TTAB 2010) (responding party not entitled to invoke Fed. R. Civ. P. 33(d) by producing business records in Russian language with no English translation); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) (responding party may not merely agree to provide access to voluminous records which may contain responsive information); Jain v. Ramparts, Inc., 49 USPQ2d 1429, 1435 (TTAB 1998) (identifying prerequisites for exercising the option to produce business records in lieu of answering interrogatories).

 7.   Fed. R. Civ. P. 33 Committee Notes on Rules – 2006 Amendment.

 8.   Fed. R. Civ. P. 33 Committee Notes on Rules – 2006 Amendment.

 9.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000); 8B C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2178 (3d ed. 2016).

 10.   Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016).

405.04(c)    Signature of Responses and Authority of Signer

Fed. R. Civ. P. 33(b)(1) Responding Party. The interrogatories must be answered:

• (A) by the party to whom they are directed; or
• (B) if that party is a public or private corporation, a partnership, an association, or a governmental agency, by any officer or agent, who must furnish the information available to the party.

Fed. R. Civ. P. 33(b)(5) Signature. The person who makes the answers must sign them, and the attorney who objects must sign any objections.

Interrogatories must be answered by the party served. If the party served is a corporation, partnership, association, or governmental agency, the interrogatories must be answered by an officer, partner, or agent, who must furnish whatever information is available to the party served. [ Note 1.]

The term "agent" includes an attorney, who may answer even though he has no personal knowledge of the facts stated in the answers; the attorney’s answers, like an officer’s or partner’s answers, must contain the information available to the party served. [ Note 2.] However, an attorney who answers interrogatories on behalf of a corporation, partnership, association, or governmental agency may thereafter be exposed to additional discovery and possibly even disqualification. [ Note 3.]

Responses to interrogatories must be signed by the person making them, and objections to interrogatories must be signed by the attorney making them. [ Note 4.]

NOTES:

 1.   Fed. R. Civ. P. 33(b)(1)(B).

 2.   See Allstate Insurance Co. v. Healthy America Inc., 9 USPQ2d 1663, 1665 (TTAB 1988).

 3.   See 37 C.F.R. § 11.307; Allstate Insurance Co. v. Healthy America Inc., 9 USPQ2d 1663 n.4 (TTAB 1988).

 4.   Fed. R. Civ. P. 33(b)(5).

406    Requests for Production of Documents and Things and Electronically Stored Information

406.01    When Permitted and By Whom

A party may serve discovery written requests for the production of documents and things on any other party only during the discovery period, provided that the serving party has either previously served or concurrently serves therewith its initial disclosures, absent a stipulation by the parties or a granted motion or upon order of the Board to the contrary. [ Note 1.] TBMP § 403.02. Requests for production of documents and things must be served early enough in the discovery period, as originally set or as may have been reset by the Board, so that the written responses will be due and production of documents will be provided no later than the close of discovery. [ Note 2.] TBMP § 403.02 If requests for production are combined with a notice of taking a discovery deposition (i.e., if it is requested that the deponent bring designated documents to the deposition), the requests for production must be served at least 30 days prior to the scheduled date of the deposition. [ Note 3.] TBMP § 113.04 (Manner of Service), and TBMP § 403.03 (Time for Service of Discovery Responses).

Requests for production may not be served on a non-party. [ Note 4.] However, if a discovery deposition deponent is a non-party witness residing in the United States, production of designated documents by the witness at the deposition may be obtained by means of a subpoena duces tecum. [ Note 5.] See TBMP § 404.03(a)(2). A subpoena is unnecessary, however, if the non-party witness is willing to produce the documents voluntarily.

Parties seeking to serve document production requests on a natural person residing in a foreign country should be aware that the laws of some foreign countries may preclude such discovery. [ Note 6.] In determining when it is appropriate to impose sanctions for non-compliance with discovery due to a conflict with foreign laws, the following factors are considered: (1) the good faith of the non-complying party, (2) whether the non-complying party would incur foreign criminal liability, and (3) whether alternative sources of information are available. [ Note 7.]

NOTES:

 1.   37 C.F.R. § 2.120(a)(3).

 2.   37 C.F.R. § 2.120(a)(3). See also Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1270 (TTAB 2017) (discovery must be served "early enough … so that responses will be due no later than the close of discovery"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016).

 3.   See Fed. R. Civ. P. 34(a); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978).

 4.   See Fed. R. Civ. P. 34(a).

 5.   35 U.S.C. § 24; Fed. R. Civ. P. 45. But see El Encanto, Inc. v. Hatch Chile Co., Inc., 825 F.3d 1161, 119 USPQ2d 1139, 1144 (10th Cir. 2016) (party to Board proceeding can obtain nonparty documents by subpoena duces tecum under Fed. R. Civ. P. 45 without deposition); Dan Foam ApS v. Sleep Innovations Inc., 106 USPQ2d 1939, 1942-43 (TTAB 2013) (discussing notice requirement to adverse party under Fed. R. Civ. P. 45(b)(1) for a subpoena duces tecum (without deposition) issued to non-party and noting that respondent could have sought its own subpoena of the non-party to obtain additional documents and/or a discovery deposition).

 6.   Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197, 200-01 (1958) (Swiss government ordered Swiss plaintiff in U.S. court proceeding not to produce certain documents).

 7.   Cochran Consulting Inc. v. Uwatec USA Inc., 102 F.3d 1224, 41 USPQ2d 1161, 1163 (Fed. Cir. 1996) (citing Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197 (1958)).

406.02    Scope

Fed. R. Civ. P. 34(a) In General. A party may serve on any other party a request within the scope of Rule 26(b):

• (1) to produce and permit the requesting party or its representative to inspect, copy, test, or sample the following items in the responding party’s possession, custody, or control:
  • (A) any designated documents or electronically stored information — including writings, drawings, graphs, charts, photographs, sound recordings, images, and other data or data compilations — stored in any medium from which information can be obtained either directly or, if necessary, after translation by the responding party into a reasonably usable form; or
  • (B) any designated tangible things; or
  
• (2) to permit entry onto designated land or other property possessed or controlled by the responding party, so that the requesting party may inspect, measure, survey, photograph, test, or sample the property or any designated object or operation on it.

The scope of a request for production, in an inter partes proceeding before the Board, is governed by Fed. R. Civ. P. 34(a), which in turn refers to Fed. R. Civ. P. 26(b). See TBMP § 402 (discussion of scope of discovery permitted under Fed. R. Civ. P. 26(b)).

Generally, a party does not have an obligation to locate documents that are not in its possession, custody, or control and produce them during discovery. [ Note 1.] However, a party may not mislead its adversary by stating that it will produce documents and then fail to do so and claim the documents are not in its possession or control. [ Note 2.] A party also is not under an obligation in response to a discovery request to create or prepare documents that do not already exist. [ Note 3.]

Because proceedings before the Board involve only the right to register trademarks, the request for entry upon land for inspection and other purposes is rarely, if ever, used in Board proceedings.

NOTES:

 1.   Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1715 (TTAB 1999), rev’d on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009).

 2.   Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1679 (TTAB 2005).

 3.   8B C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2210 (3d ed. 2016) ("A document or thing is not in the possession, custody, or control of a party if it does not exist. Production cannot be required of a document no longer in existence nor of one yet to be prepared.").

406.03    Elements of Request for Production

Fed. R. Civ. P. 34(b)(1) Contents of the Request. The request:

• (A) must describe with reasonable particularity each item or category of items to be inspected;
• (B) must specify a reasonable time, place, and manner for the inspection and for performing the related acts; and
• (C) may specify the form or forms in which electronically stored information is to be produced.

A request for production must include the elements specified in Fed. R. Civ. P. 34(b)(1)(A)-(B), as set forth above. Fed. R. Civ. P. 34(b)(1)(C) allows but does not require a requesting party to specify in its requests the preferred data format(s) for production of electronically stored information. Parties are expected to discuss the format for production during their mandatory discovery conference. [ Note 1.] For more information regarding discovery conferences, see TBMP § 401.01 and TBMP § 408.01(a).

NOTES:

 1.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69961 (October 7, 2016); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 and 42252 (August 1, 2007); 37 C.F.R. § 2.120(a)(2)(i); Fed. R. Civ. P. 26(f). See also Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908 (TTAB 2011) (parties agreed only to the form of their ESI production).

406.04    Responses to Requests for Production

Fed. R. Civ. P. 34(b)(2)(A) Time to Respond. The party to whom the request is directed must respond in writing within 30 days after being served or — if the request was delivered under Rule 26(d)(2) — within 30 days after the parties’ first Rule 26(f) conference. A shorter or longer time may be stipulated to under Rule 29 or be ordered by the court.

• (B) Responding to Each Item. For each item or category, the response must either state that inspection and related activities will be permitted as requested or state with specificity the grounds for objecting to the request, including the reasons. The responding party may state that it will produce copies of documents or of electronically stored information instead of permitting inspection. The production must then be completed no later than the time for inspection specified in the request or another reasonable time specified in the response.
• (C) Objections. An objection must state whether any responsive materials are being withheld on the basis of that objection. An objection to part of a request must specify the part and permit inspection of the rest.
• (D) Responding to a Request for Production of Electronically Stored Information. The response may state an objection to a requested form for producing electronically stored information. If the responding party objects to a requested form — or if no form was specified in the request — the party must state the form or forms it intends to use.
• (E) Producing the Documents or Electronically Stored Information. Unless otherwise stipulated or ordered by the court, these procedures apply to producing documents or electronically stored information:
  • (i) A party must produce documents as they are kept in the usual course of business or must organize and label them to correspond to the categories in the request;
  • (ii) If a request does not specify a form for producing electronically stored information, a party must produce it in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms; and
  • (iii) A party need not produce the same electronically stored information in more than one form.
  

Responses to requests for production should comply with the provisions of Fed. R. Civ. P. 34(b). Documents produced in electronically stored form not kept in the ordinary course of business must be organized and labeled to correspond to the categories in each request, and if the form of production is not specified, produced in a form or form in which it is ordinarily maintained, or in a form or forms that are reasonably usable. [ Note 1.] The Board encourages electronic production whenever possible, and if email is not practical due to the volume of documents, the Board encourages the parties to agree on an effective alternative method of service (e.g., a file hosting service that provides cloud storage, or delivery of a USB drive). [ Note 2.]

NOTES:

 1.   Fed. R. Civ. P. 34(b)(2)(E). See, e.g., Amazon Technologies, Inc. v. Wax, 95 USPQ2d 1865, 1869 (TTAB 2010) (for documents produced on DVD, opposer ordered to serve a complete index to all 31,144 pages of produced documents, cross-referencing the categories of documents and the discovery requests to which they are responsive, with no category in the index to exceed 300 pages).

 2.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959, 69961 (October 7, 2016).

406.04(a)    Time for Service of Responses

Fed. R. Civ. P. 34(b)(2)(A) Time to Respond. The party to whom the request is directed must respond in writing within 30 days after being served.

37 C.F.R. § 2.120(a)(3)  . . . Responses to . . . requests for production of documents and things . . . must be served within thirty days from the date of service of such discovery requests. * * * *

Responses to requests for production must be served within 30 days after the date of service of the requests. [ Note 1.] TBMP § 403.03. The time to respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery. [ Note 2.] The resetting of a party’s time to respond to an outstanding request for discovery will not result in the automatic rescheduling of the discovery and/or testimony periods; such dates will be rescheduled only upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. [ Note 3.]TBMP § 403.03.

Service of responses to requests for production must be made by email, unless otherwise stipulated, or if the serving party attempted service by email but service could not be made due to technical problems or extraordinary circumstances, by the manner described in 37 C.F.R. § 2.119(b)(1)  - 37 C.F.R. § 2.119(b)(4); however, if a party is not domiciled in the United States or represented by an attorney or authorized representative in the United States, then no party to the proceeding is eligible to use postal mail as a manner of service. [ Note 4.] TBMP § 113.04. Additionally, even if requests for production are served on a party by postal service or overnight courier (either by agreement or because email service was attempted but could not be made), 37 C.F.R. § 2.119(c)  has been amended to remove the previous provision adding five days to the proscribed period for action after the date of service so that no additional time for service of discovery responses is allowed for responding to the requests for any manner of service. [ Note 5.] TBMP § 403.03.

A party which fails to respond to requests for production during the time allowed therefor, and which is unable to show that its failure was the result of excusable neglect, may be found, on motion to compel filed by the propounding party, to have forfeited its right to object to the requests on their merits. [ Note 6.] TBMP § 403.03 and TBMP § 405.04(a).

NOTES:

 1.   Fed. R. Civ. P. 34(b)(2)(A); 37 C.F.R. § 2.120(a)(3).

 2.   37 C.F.R. § 2.120(a)(3).

 3.   37 C.F.R. § 2.120(a)(3).

 4.   37 C.F.R. § 2.119(b); 37 C.F.R. § 2.119(d). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959 (October 7, 2016).

 5.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).

 6.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) (applicant, having waived its right to object to discovery requests on their merits was not entitled to raise objection regarding place of production of documents).

406.04(b)    Place and Form of Production

37 C.F.R. § 2.120(e)  . . . The time, place, and manner for production of documents, electronically stored information, and tangible things shall comport with the provisions of Rule 34 of the Federal Rules of Civil Procedure, or be made pursuant to agreement of the parties, or where and in the manner which the Trademark Trial and Appeal Board, upon motion, orders.

Fed. R. Civ. P. 34(b)(2)(E) Producing the Documents or Electronically Stored Information. Unless otherwise stipulated or ordered by the court, these procedures apply to producing documents or electronically stored information:

• (i) A party must produce documents as they are kept in the usual course of business or must organize and label them to correspond to the categories in the request;
• (ii) If a request does not specify a form for producing electronically stored information, a party must produce it in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms; and
• (iii) A party need not produce the same electronically stored information in more than one form.

The place of production is governed by 37 C.F.R. § 2.120(e)  which states that production shall comport with the Fed. R. Civ. P. 34, or be made pursuant to the agreement of the parties, or where the Board, upon motion, orders. [ Note 1.] A party is only obliged to make documents and materials available for inspection and copying, as they are kept in the ordinary course of business, [ Note 2.] or as organized and labeled to correspond to the requests, or a party may produce copies of the documents or of the electronically stored information instead of permitting inspection. [ Note 3.] In Board cases, parties often extend each other the courtesy of producing requested documents by photocopying the documents and forwarding them to the requesting party at the requesting party’s expense or by providing copies electronically. [ Note 4.] Indeed, the Board believes this is more efficient and thus encourages this method of producing documents. [ Note 5.] Electronic production should be used whenever possible and parties are expected to discuss such arrangements, as well as the arrangements for production of electronically stored information, and alternative methods of service if email is not practical, in their mandatory discovery conference. [ Note 6.] For more information regarding discovery conferences, see TBMP § 401.01 and TBMP § 408.01(a).

Electronically stored information may be produced in the form specified by the request. If no specification is made, the party must produce the electronically stored information in the form in which it is ordinarily maintained, or in a reasonably usable form. [ Note 7.] Fed. R. Civ. P. 34(a) "requires that, if necessary, a responding party ‘translate’ information it produces into a ‘reasonably usable’ form."[ Note 8.] However, the option to produce in a reasonably usable form does not mean that a responding party is free to convert electronically stored information from the form in which it is maintained to a different form that makes it more difficult or burdensome for the requesting party to use the information efficiently in the litigation. [ Note 9.] A party does not have to produce electronically stored information in more than one format. [ Note 10.] Electronically stored information produced during discovery can be used during depositions to question witnesses and may come in as exhibits thereto.

On motion pursuant to 37 C.F.R. § 2.120(e), the Board may by order specify the place and the manner in which the documents are to be produced, and in situations involving electronically stored information, the form of production. The Board may, for example, order that the responding party photocopy the documents designated in a request and mail the photocopies to the requesting party when the responding party has unreasonably refused to produce documents. [ Note 11.]

NOTES:

 1.   37 C.F.R. § 2.120(e).

 2.   Fed. R. Civ. P. 34(b)(2)(E)(i); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) (responding party within its rights to choose to make documents available for inspection and copying by the inquiring party).

 3.   Fed. R. Civ. P. 34(b)(2)(E)(i); Fed. R. Civ. P. 34(b)(2)(B); Fed. R. Civ. P. 34(a)(1). Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment ("Rule 34(b)(2)(B) is further amended to reflect the common practice of producing copies of documents or electronically stored information rather than simply permitting inspection").

 4.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1777 (TTAB 1998).

 5.   Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008) (most efficient means of making initial disclosures of documents and the option the Board encourages parties to use is to actually exchange copies of disclosed documents rather than merely identifying location). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69961 (October 7, 2016) ("The Board encourages electronic production wherever possible . . . .").

 6.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959, 69961 (October 7, 2016); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 19296, 19297 (to be codified at 37 C.F.R. pt. 2 (proposed April 4, 2016)) (methods of service of discovery requests and responses and document production are to be discussed during discovery conference; "the proposed rules nonetheless allow for parties to stipulate otherwise [than email service for discovery], to accommodate other methods of communication that may promote convenience and expediency (for example, a file hosting service that provides cloud storage, delivery of a USB drive, etc.")); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 and 42252 (August 1, 2007); 37 C.F.R. § 2.120(a)(2); Fed. R. Civ. P. 26(f).

 7.   Fed. R. Civ. P. 34(b)(2)(E)(ii). See Fed. R. Civ. P. 34 Committee Notes on Rules – 2006 Amendment. Cf. Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908 (TTAB 2011) (where the parties only agreed as to form of production, not as to other aspects such as a protocol for identifying and segregating potentially responsive ESI, applicant cannot insist that opposer start its ESI search and production over).

 8.   Fed. R. Civ. P. 34 Committee Notes on Rules – 2006 Amendment.

 9.   Fed. R. Civ. P. 34 Committee Notes on Rules – 2006 Amendment.

 10.   Fed. R. Civ. P. 34(b)(2)(E)(iii).

 11.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) (at the responding party’s expense as a discovery sanction); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1778 (TTAB 1998) (at responding party’s expense, as a discovery sanction); Unicut Corp. v. Unicut, Inc., 220 USPQ 1013 (TTAB 1983) (at the requesting party’s expense).

406.04(c)    Nature of Responses

Fed. R. Civ. P. 34(b)(2)(B) Responding to Each Item. For each item or category, the response must either state that inspection and related activities will be permitted as requested or state with specificity the grounds for objecting to the request, including the reasons. The responding party may state that it will produce copies of documents or of electronically stored information instead of permitting inspection. The production must then be completed no later than the time for inspection specified in the request or another reasonable time specified in the response.

Fed. R. Civ. P. 34(b)(2)(C) Objections. An objection must state whether any responsive materials are being withheld on the basis of that objection. An objection to part of a request must specify the part and permit inspection of the rest.

Fed. R. Civ. P. 34(b)(2)(D) Responding to a Request for Production of Electronically Stored Information. The response may state an objection to a requested form for producing electronically stored information. If the responding party objects to a requested form — or if no form was specified in the request — the party must state the form or forms it intends to use.

Fed. R. Civ. P. 37(e) Failure to Preserve Electronically Stored Information. If electronically stored information that should have been preserved in the anticipation or conduct of litigation is lost because a party failed to take reasonable steps to preserve it, and it cannot be restored or replaced through additional discovery, the court:

• (1) upon finding prejudice to another party from loss of the information, may order measures no greater than necessary to cure the prejudice; or
• (2) only upon finding that the party acted with the intent to deprive another party of the information’s use in the litigation may:
  • (A) presume that the lost information was unfavorable to the party;
  • (B) instruct the jury that it may or must presume the information was unfavorable to the party; or
  • (C) dismiss the action or enter a default judgment.
  

A response to a request for production of documents and things must state, with respect to each item or category of documents or things requested to be produced, that inspection and related activities will be permitted as requested, or state with specificity the grounds for objecting to the request, including the reasons. [ Note 1.] The responding party may state that it will produce copies of documents or electronically stored information instead of permitting inspection. [ Note 2.] It is incumbent upon a responding party to respond to each request by stating whether or not responsive documents exist and, if so, whether they will be produced at a specified reasonable time for inspection or are being withheld based on a claim of privilege or a specified objection [ Note 3.] If copies are to be produced in lieu of inspection, the response must so state. [ Note 4.] If accurate, a party may respond that the requested documents are not in existence (e.g., lost or destroyed or that the documents are not within its possession, custody, or control). [ Note 5.] If objection is made to only part of an item or category, the part must be specified, and inspection must be permitted of the rest of the responsive documents or things. [ Note 6.] A party may not redact portions of responsive documents on the ground that the non-disclosed information is not relevant or responsive where the information appears in a document that contains otherwise relevant or responsive information. [ Note 7.] A party may object to a requested form of data production for electronically stored information ("ESI"). [ Note 8.] If no form for the ESI is specified in the request, the party must state the form it intends to use, and must produce the ESI in the form in which it is ordinarily maintained or in a reasonably usable form. A party that produces documents for inspection must produce them as they are kept in the usual course of business, or must organize and label them to correspond with the categories in the request. [ Note 9.] A party that produces ESI must produce the information in the form specified by the request, if no objection is made. It is contemplated that the parties will attempt to resolve such issues, i.e., the manner in which ESI will be produced, during their discovery conference. [ Note 10.] Aspects of ESI production other than form that should be discussed during the discovery conference, or when it becomes apparent that ESI will be produced, include a protocol for identifying and segregating potentially responsive ESI, who should review the ESI to determine whether the production of particular documents or information would be appropriate, and methods of searching the ESI, such as the use of "keywords," to identify documents and information responsive to the discovery requests. [ Note 11.]

A party has an obligation to take reasonable steps to preserve ESI in the anticipation or conduct of litigation. [ Note 12.] A duty to preserve electronically stored information arises not only during litigation but also extends to that period before litigation when a party reasonably should know that the evidence may be relevant to the litigation. [ Note 13.] As amended on December 1, 2015, Fed. R. Civ. P. 37(e) provides that if electronically stored information that should have been preserved in the anticipation or conduct of litigation is lost because a party failed to take reasonable steps to preserve it, and it cannot be restored or replaced through additional discovery, the court: (1) upon finding prejudice to another party from loss of the information, may order measures no greater than necessary to cure the prejudice; or (2) only upon finding that the party acted with the intent to deprive another party of the information’s use in the litigation may, among other things: presume that the lost information was unfavorable to the party or dismiss the action or enter a default judgment. For more guidelines regarding the application of remedies in the event of lost ESI, see Fed. R. Civ. P. 37(e) Committee Notes on Rules – 2015 Amendment.

A party withholding responsive documents on the basis of a claim of privilege must "(i) expressly make the claim; and (ii) describe the nature of the documents, communications, or tangible things not produced or disclosed – and do so in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the claim." [ Note 14.]

Fed. R. Civ. P. 26(b)(5) does not specify exactly how the party asserting privilege/protection must particularize its claim. The most common way is by using a privilege log, which identifies each document withheld, information regarding the nature of the privilege/protection claimed, the name of the person making/receiving the communication, the date and place of the communication, and the document’s general subject matter. [ Note 15.]

It is generally inappropriate for a party to respond to requests for production by filing a motion attacking them, such as a motion to strike, a motion to suppress, or a motion for a protective order. [ Note 16.] Rather, the party ordinarily should respond by indicating, with respect to those requests that it believes to be proper, that inspection and related activities will be permitted, and by stating reasons for objection with respect to those requests that it believes to be improper. See TBMP § 410.

For information regarding a party’s duty to supplement responses to requests for production, see TBMP § 408.03.

NOTES:

 1.   Fed. R. Civ. P. 34(b)(2)(B) and 34(b)(2)(C).

 2.   Fed. R. Civ. P. 34(b)(2)(B).

 3.   Fed. R. Civ. P. 34(b)(2)(B) and 34(b)(2)(C); Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment ("an objection to a Rule 34 request must state whether anything is being withheld on the basis of the objection"); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).

 4.   Fed. R. Civ. P. 34(b)(2)(B); Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment; No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).

 5.   Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1679 (TTAB 2005).

 6.   Fed. R. Civ. P. 34(b)(2)(C); Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment ("if the objection recognizes that some part of the request is appropriate the objection should state the scope that is not [objectionable and] ... the statement of what has been withheld can properly identify as matters ‘withheld’ anything beyond the scope of the search specified in the objection").

 7.   Intex Recreation Corp. v. The Coleman Co., 117 USPQ2d 1799 (TTAB 2016).

 8.   Fed. R. Civ. P. 34(b)(2)(D).

 9.   Fed. R. Civ. P. 34(b)(2)(E)(i); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1556 (TTAB 2000) (party may not simply dump large quantities of documents containing responsive as well as unresponsive documents).

 10.   Fed. R. Civ. P. 26(f)(3)(c). See also Fed. R. Civ. P. 34 Committee Notes on Rules – 2006 Amendment.

 11.   Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1905 (TTAB 2011).

 12.   See generally Zubulake v. UBS Warburg LLC, 220 F.R.D. 212, 216-18 (S.D.N.Y. 2003) (discussing the obligation to preserve electronically stored information).

 13.   Leon v. IDX Systems Corp., 464 F.3d 951, 956 (9th Cir. 2006); Silvestri v. General Motors Corp., 271 F.3d 583, 591 (4th Cir. 2001).

 14.   Fed. R. Civ. P. 26(b)(5)(A)(i)-(ii).

 15.   Fed. R. Civ. P. 26(b)(5) Notes of Advisory Committee on Rules – 1993 Amendment; see Victor Stanley, Inc. v. Creative Pipe, Inc., 250 F.R.D. 251, 264-65 (D. Md. 2008) (discussing form of privilege logs under Fed. R. Civ. P. 26(b)(5)).

16. Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016).

406.05    Limit on Number

406.05(a)    Description of Limit

37 C.F.R. § 2.120(e)  Requests for production. The total number of requests for production which a party may serve upon another party pursuant to Rule 34 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed seventy-five, counting subparts, except that the Trademark Trial and Appeal Board, in its discretion, may allow additional requests upon motion therefor showing good cause, or upon stipulation of the parties, approved by the Board. A motion for leave to serve additional requests must be filed and granted prior to the service of the proposed additional requests and must be accompanied by a copy of the requests, if any, which have already been served by the moving party, and by a copy of the requests proposed to be served. * * * *

The total number of requests for production of documents and things which a party may serve on another party, in a proceeding, may not exceed 75, counting subparts, except that the Board may allow additional requests for production on motion therefor showing good cause or on stipulation of the parties. [ Note 1.] See TBMP § 519. Parties may also stipulate that the limit on requests for production shall be fewer than 75. [ Note 2.]

NOTES:

 1.   37 C.F.R. § 2.120(e); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951, 69961 (October 7, 2016). Cf. Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467 n.5 (TTAB 1990) (the Board stating in the context of interrogatories in excess of the limit that "good cause will generally be found only where a legitimate need for further discovery by means of interrogatories is shown . . . the fact that the additional interrogatories served by opposer may be relevant and narrowly drawn to a single issue is insufficient, in and of itself, to demonstrate good cause.").

 2.   37 C.F.R. § 2.120(a)(2)(iv).

406.05(b)    Application of Limit: Sets of Requests for Production

The numerical limit specified in37 C.F.R. § 2.120(e)  pertains to the total number of requests for production of documents and things that one party may serve on another party over the course of an entire proceeding, not just per set of production requests. Thus, if a party to a proceeding before the Board serves, over the course of the proceeding, two or more separate sets of requests for production directed to the same party, the requests in the separate sets would be added together for purposes of determining whether the numerical limit specified in the rule has been exceeded. [ Note 1.]

Accordingly, a party which is preparing a first set of requests for production should consider reserving a portion of its allotted 75 requests for production (counting subparts) to use for follow-up discovery, unless it is sure that it will not be serving follow-up requests.

NOTES:

 1.   Cf. Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467 (TTAB 1990) (interrogatories).

406.05(c)    Application of Limit: Multiple Marks, Etc.

37 C.F.R. § 2.120(e)  does not provide for extra requests for production of documents and things in cases where more than one mark is pleaded and/or attacked by the plaintiff (whether in a single proceeding, or in consolidated proceedings), because in such cases the propounding party may simply request that each request for production be answered with respect to each involved mark of the responding party, and the requests for production will be counted the same as if they pertained to only one mark. Similarly, the rule does not provide for extra requests for production in cases where there is a counterclaim, because in a proceeding before the Board, the discovery information needed by a party for purposes of litigating the plaintiff’s claim usually encompasses the information needed by that party for purposes of litigating a counterclaim. That is, the mere fact that a proceeding involves multiple marks (whether in a single proceeding, or in consolidated proceedings) and/or a counterclaim does not mean that a party is entitled to serve 75 requests for production, counting subparts, for each mark, or for each proceeding that has been consolidated, or for both the main claim and the counterclaim. Nor does such fact, in and of itself, constitute good cause for a motion for leave to serve additional requests for production. However, a proceeding with multiple marks and/or a counterclaim may involve unusually numerous or complex issues, and these are factors that will be considered in determining a motion for leave to serve additional requests for production.

406.05(d)    Application of Limit: Counting Requests for Production

In determining whether the number of requests for production served by one party on another exceeds the limit specified in 37 C.F.R. § 2.120(e), requests will be counted in the same manner as interrogatories. [ Note 1.] See TBMP § 405.03(d) (Application of Limit: Counting Interrogatories).

NOTES:

 1.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69962 (October 7, 2016).

406.05(e)    Remedy for Excessive Requests for Production

37 C.F.R. § 2.120(e)  . . . If a party upon which requests have been served believes that the number of requests served exceeds the limitation specified in this paragraph, and is not willing to waive this basis for objection, the party shall, within the time for (and instead of) serving responses and specific objections to the requests, serve a general objection on the ground of their excessive number. If the inquiring party, in turn, files a motion to compel discovery, the motion must be accompanied by a copy of the set(s) of the requests which together are said to exceed the limitation, and must otherwise comply with the requirements of paragraph (f) of this section. * * * *

If a party on which requests for production of documents and things have been served, in a proceeding before the Board, believes that the number of requests exceeds the limit specified in 37 C.F.R. § 2.120(e), and wishes to object to the requests on this basis, the party must, within the time for (and instead of) serving responses and specific objections to the requests, serve a general objection on the ground of their excessive number. [ Note 1.] A party should not answer what it considers to be the first 75 requests and object to the rest as excessive. [ Note 2.]

If a general objection on the ground of excessive number is asserted, and the propounding party, in turn, believes that the objection is not well taken, and wishes to obtain an adjudication from the Board as to the sufficiency thereof, the propounding party must file a motion to compel discovery. The motion must be accompanied by a copy of the set(s) of requests for production which together are said to exceed the limitation, and must otherwise comply with the requirements of 37 C.F.R. § 2.120(f), including the requirement that a motion to compel be supported by a showing from the moving party that such party or its attorney has made a good faith effort, by conference or correspondence, to resolve with the other party or its attorney the issues presented in the motion and has been unable to reach agreement. [ Note 3.] It is further recommended that the moving party set out its counting method showing that the number of requests for production does not exceed 75. [ Note 4.] For further information concerning motions to compel discovery, see TBMP § 523.

If, on determining a motion to compel filed in response to a general objection to requests for production on the ground of excessive number, the Board finds that the requests for production are excessive in number, and that the propounding party has not previously used up its allotted 75 requests for production, the Board normally will allow the propounding party an opportunity to serve a revised set of requests for production not exceeding the numerical limit. The revised set of requests for production serves as a substitute for the excessive set, and thus is deemed timely if the excessive set was timely. [ Note 5.]

However, if an order providing for a revised set of requests for production is not issued until late in the discovery period or after the close of the discovery period, the discovery period will be extended or reopened, as appropriate, to permit service of and responses to the revised set. Where discovery is reopened, the scope of the revised set may not exceed the scope of the excessive set, that is, the revised set may not seek information beyond the scope of the excessive set. [ Note 6.]

A party may properly refuse to respond to a document request seeking all documents identified or referred to in response to interrogatories if the number of interrogatories is believed to be excessive. [ Note 7.]

In those cases where a party which has propounded requests for production realizes, on receipt of a general objection thereto on the ground of excessive number, that the requests for production are, in fact, excessive in number, it is strongly recommended that the parties voluntarily agree to the service of a revised set of requests for production, in the manner normally allowed by the Board, instead of bringing their dispute to the Board by motion to compel.

NOTES:

 1.   37 C.F.R. § 2.120(e). Cf. Amazon Technologies v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009).

 2.   Cf. Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990).

 3.   37 C.F.R. § 2.120(e)  and 37 C.F.R. § 2.120(f).

4. Cf. Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016) (parties should specifically discuss their respective counting methods in attempt to resolve dispute over number of interrogatories).

5. Cf. Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990). See also Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398, 1398-99 (TTAB 1990) (excusing obligation to answer excessive set); Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990). Cf. Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1468 n.6 (TTAB 1990) (opposer may seek answers by taking discovery deposition of applicant).

6. 37 C.F.R. § 2.120(a)(3). Cf. Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990).

7. Cf. Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398, 1399 (TTAB 1990) (refusal to respond to document requests was proper; petitioner could not respond to document requests without first having to answer excessive interrogatories).

407    Requests for Admissions

407.01    When Permitted and By Whom

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.] Like interrogatories and requests for production of documents, requests for admission may be served on an adversary after service of or contemporaneously with initial disclosures, absent a stipulation or granted motion or order of the Board to the contrary. [ Note 2.] TBMP § 403.01 and TBMP § 403.02. Requests for admissions, like interrogatories and requests for production of documents, must be served early enough in the discovery period, as originally set or as may have been reset by the Board, so that responses will be due no later than the close of discovery. [ Note 3.] TBMP § 403.02

NOTES:

 1.   Fed. R. Civ. P. 36(a); 37 C.F.R. § 2.120(i).

 2.   37 C.F.R. § 2.120(a)(3).

 3.   37 C.F.R. § 2.120(a)(3). See also Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1270 (TTAB 2017) (discovery must be served "early enough … so that responses will be due no later than the close of discovery"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016).

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.

By definition, requests for admissions are designed to confirm the accuracy of information already available and are not designed to seek discovery of unknown information. 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).

Unlike an interrogatory, through which a party asks its adversary to provide certain substantive information, a request for admission is a means through which a party asks its adversary to stipulate to a certain matter so as to reduce issues for trial. [ Note 2.] A party responding to a request for admission 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. [ Note 3.] See TBMP § 407.03(b) (Nature of Responses). An admission in response to a request for admission "conclusively establishe[s]" the matter that is the subject of that request. [ Note 4.] However, a denial in response to a request for admission is merely a refusal to stipulate to a certain matter, thus leaving that matter to be resolved on the merits. [ Note 5.] Accordingly, requests for admission are not properly used as additional means of obtaining substantive information to circumvent the numerical limit on interrogatories. Further, a motion to test the sufficiency of a response to a request for admission is not properly based on a denial of a request for admissions that a propounding party/movant believes should have been admitted. [ Note 6.]

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).

 2.   See The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013).

 3.   Fed. R. Civ. P. 36(a)(4).

 4.   Fed. R. Civ. P. 36(b).

 5.   See The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d, 2149, 2152 (TTAB 2013); Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1036 n.8 (TTAB 2007).

 6.   See National Semiconductor Corp. v. Ramtron International Corp., 265 F.Supp.2d 71 (D.D.C. 2003).

407.03    Responses to Requests for Admission

407.03(a)    Time for Service of Responses

37 C.F.R. § 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)(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)(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. The time to respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery. [ Note 2.] The resetting of a party’s time to respond to any outstanding requests for admission will not result in the automatic rescheduling of the discovery and/or testimony periods; such dates will be rescheduled only upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. [ Note 3.]

Service of responses to requests for production must be made by email, unless otherwise stipulated, or if the serving party attempted service by email but service could not be made due to technical problems or extraordinary circumstances, by the manner described in 37 C.F.R. § 2.119(b)(1)  - 37 C.F.R. § 2.119(b)(4); however, if a party is not domiciled in the United States or represented by an attorney or authorized representative in the United States, then no party to the proceeding is eligible to use postal mail as a manner of service. [ Note 4.] TBMP § 113.05. Additionally, even if service of requests for admission is made by postal service or overnight courier, 37 C.F.R. § 2.119(c)  has been amended to remove the past provision that allowed an additional five days to the proscribed response period after the date of service so that no additional time for service of discovery responses is allowed for responding to the requests under any manner of service. [ Note 5.] 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 6.]

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 7.] unless the party is able to show that its failure to timely respond was the result of excusable neglect [ Note 8.] 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 9.] 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 C.F.R. § 2.120(a)(3).

 2.   37 C.F.R. § 2.120(a)(3).

 3.   37 C.F.R. § 2.120(a)(3).

 4.   37 C.F.R. § 2.119(b); 37 C.F.R. § 2.119(d). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959 (October 7, 2016).

 5.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).

 6.   Fed. R. Civ. P. 36(a)(3).

 7.   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).

 8.   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).

 9.   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)(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 as 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. [ Note 4.] See TBMP § 410. For information regarding a party’s duty to supplement requests for admissions, see TBMP § 408.03

NOTES:

 1.   Fed. R. Civ. P. 36(a).

 2.   Fed. R. Civ. P. 36(a).

 3.   Fed. R. Civ. P. 36(a).

 4.   Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016).

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 C.F.R. § 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).

407.05    Limit on Number

407.05(a)    Description of Limit

37 C.F.R. § 2.120(i) Requests for admission. The total number of requests for admission which a party may serve upon another party pursuant to Rule 36 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed seventy-five, counting subparts . . . . However, independent of this limit, a party may make one comprehensive request for admission of any adverse party that has produced documents for an admission authenticating specific documents, or specifying which of those documents cannot be authenticated.

The total number of requests for admission which a party may serve on another party in a proceeding may not exceed 75, counting subparts, except that the Board, may allow additional requests for admission upon motion therefor showing good cause, or upon stipulation of the parties, approved by the Board. [ Note 1.] See TBMP § 519. Independent of this numerical limit, a party may make one additional comprehensive request for admission of any adverse party that has produced documents, for authenticating specific documents, or specifying which of those documents cannot be authenticated. [ Note 2.]

NOTES:

 1.   37 C.F.R. § 2.120(i); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951, 69961 (October 7, 2016). Cf. Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467 n.5 (TTAB 1990) (the Board stating in the context of interrogatories in excess of the limit that "good cause will generally be found only where a legitimate need for further discovery by means of interrogatories is shown . . . the fact that the additional interrogatories served by opposer may be relevant and narrowly drawn to a single issue is insufficient, in and of itself, to demonstrate good cause.").

 2.   37 C.F.R. § 2.120(j); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951, 69961 (October 7, 2016).

407.05(b)    Application of Limit: Sets of Requests for Admission

The numerical limit specified in 37 C.F.R. § 2.120(i)  pertains to the total number of requests for admission that one party may serve on another party over the course of an entire proceeding, not just per set of requests for admission. Thus, if a party to a proceeding before the Board serves, over the course of the proceeding, two or more separate sets of requests for admission directed to the same party, the requests in the separate sets would be added together for purposes of determining whether the numerical limit specified in the rule has been exceeded. [ Note 1.]

Accordingly, a party which is preparing a first set of requests for admission should consider reserving a portion of its allotted 75 requests (counting subparts) to use for follow-up discovery, unless it is sure that it will not be serving follow-up requests for admission.

NOTES:

 1.   Cf. Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467 (TTAB 1990) (interrogatories).

407.05(c)    Application of Limit: Multiple Marks, Etc.

37 C.F.R. § 2.120(i)  does not provide for extra requests for admission in cases where more than one mark is pleaded and/or attacked by the plaintiff (whether in a single proceeding, or in consolidated proceedings). Similarly, the rule does not provide for extra requests for admission in cases where there is a counterclaim. That is, the mere fact that a proceeding involves multiple marks (whether in a single proceeding, or in consolidated proceedings) and/or a counterclaim does not mean that a party is entitled to serve 75 requests for admission, counting subparts, for each mark, or for each proceeding that has been consolidated, or for both the main claim and the counterclaim. Nor does such fact, in and of itself, constitute good cause for a motion for leave to serve additional requests for admission. However, a proceeding with multiple marks and/or a counterclaim may involve unusually numerous or complex issues, and these are factors that will be considered in determining a motion for leave to serve additional requests for admission. [ Note 1.]

NOTES:

 1.   37 C.F.R. § 2.120(i). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69961 (October 7, 2016) (providing examples that may support a showing of good cause for leave to serve additional requests for admission).

407.05(d)    Application of Limit: Counting Requests for Admission

In determining whether the number of requests for admission served by one party on another exceeds the limit specified in 37 C.F.R. § 2.120(i), requests for admission will be counted reflecting the form articulated in Fed. R. Civ. P. 36(a)(2), which states: "Each matter must be separately stated." [ Note 1.] The method for counting requests for admission therefore differs from the method for counting interrogatories and requests for production of document and things.

NOTES:

 1.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69962 (October 7, 2016).

407.05(e)    Remedy for Excessive Requests for Admission

37 C.F.R. § 2.120(j)  . . . If a party upon which requests for admission have been served believes that the number of requests for admission exceeds the limitation specified in this paragraph, and is not willing to waive this basis for objection, the party shall, within the time for (and instead of) serving answers and specific objections to the requests for admission, serve a general objection on the ground of their excessive number.

If a party on which requests for admissions have been served, in a proceeding before the Board, believes that the number of requests exceeds the limit specified in 37 C.F.R. § 2.120(i), and wishes to object to the requests on this basis, the party must, within the time for (and instead of) serving responses and specific objections to the requests, serve a general objection on the ground of their excessive number. [ Note 1.] A party should not answer what it considers to be the first 75 requests for admissions and object to the rest as excessive. [ Note 2.]

If a general objection on the ground of excessive number is asserted, and the propounding party, in turn, believes that the objection is not well taken, and wishes to obtain an adjudication from the Board as to the sufficiency thereof, the propounding party must file a motion to determine the sufficiency of the general objection. [ Note 3.] The motion must be accompanied by copies of the set(s) of requests for admission which together are said to exceed the limitation, any exhibits to the requests, and the general objection to the requests, and must be supported by a showing from the moving party that such party or its attorney has made a good faith effort, by conference or correspondence, to resolve with the other party or its attorney the issues presented in the motion and has been unable to reach agreement. [ Note 4.] It is further recommended that the moving party set out its counting method showing that the number of requests for admission does not exceed 75. [ Note 5.] For further information concerning motions to test the sufficiency of objections to requests for admission, see TBMP § 524.

If, on a motion to determine the sufficiency of a general objection to requests for admission on the ground of excessive number, the Board finds that the requests for admission are excessive in number, and that the propounding party has not previously used up its allotted 75 requests, the Board normally will allow the propounding party an opportunity to serve a revised set of requests for admission not exceeding the numerical limit. The revised set of requests for admission serves as a substitute for the excessive set, and thus is deemed timely if the excessive set was timely. [ Note 6.]

However, if an order providing for a revised set of requests for admission is issued late in the discovery period or after the close of the discovery period, the discovery period will be extended or reopened, as appropriate, to permit service of and responses to the revised set. Where discovery is reopened, the scope of the revised set may not exceed the scope of the excessive set, that is, the revised set may not seek information beyond the scope of the excessive set. [ Note 7.]

In those cases where a party which has propounded requests for admission realizes, on receipt of a general objection thereto on the ground of excessive number, that the requests for admission are, in fact, excessive in number, it is strongly recommended that the parties voluntarily agree to the service of a revised set of requests, in the manner normally allowed by the Board, instead of bringing their dispute to the Board by a motion to test the sufficiency of the general objection.

NOTES:

 1.   37 C.F.R. § 2.120(i). Cf. Amazon Technologies v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009).

 2.   Cf. Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990) (stating that a party responding to interrogatories should not answer what it considers to be the first seventy-five interrogatories and file a motion for a protective order as to the remainder).

 3.   See Fed. R. Civ. P. 36(a)(3); 37 C.F.R. § 2.120(i)(1); TBMP § 524.01.

 4.   37 C.F.R. § 2.120(i)(1).

5. Cf. Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016) (parties should specifically discuss their respective counting methods in attempt to resolve dispute over number of interrogatories).

6. Cf. Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990). See also Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398, 1398-99 (TTAB 1990) (excusing obligation to answer excessive set); Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990). Cf. Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1468 n.6 (TTAB 1990) (opposer may seek answers by taking discovery deposition of applicant).

7. 37 C.F.R. § 2.120(a)(3). Cf. Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990).

408    Duties to Cooperate, Search Records, Supplement

408.01    Duty to Cooperate

The Board expects parties (and their attorneys or other authorized representatives) to cooperate with one another in the discovery process, [ Note 1.] and looks with extreme disfavor on those who do not. Each party and its attorney or other authorized representative has a duty not only to make a good faith effort to satisfy the discovery needs of its adversary, but also to make a good faith effort to seek only such discovery as is proper and relevant to the issues in the case. [ Note 2.] Discovery before the Board is not governed by the concept of priority of discovery – that is, a party is not relieved of its discovery obligations, including its duty to cooperate, in spite of the fact that an adverse party wrongfully may have failed to fulfill its own obligations. [ Note 3.]

NOTES:

 1.   See Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016) (parties have affirmative duty to cooperate in the discovery process; improper to file motion for protective order instead of responding to discovery requests in a timely manner); Cadbury UK Ltd. v. Meenaxi Enter., Inc., 115 USPQ2d 1404, 1408 (TTAB 2015) (parties expected to demonstrate good faith and cooperation during discovery; party cannot avoid discovery obligations due to an obvious typographical error in discovery requests); Panda Travel Inc. v Resort Option Enterprises, Inc., 94 USPQ2d 1789, 1791 (TTAB 2009) ("Each party has a duty to make a good faith effort to satisfy the reasonable and appropriate discovery needs of its adversary."); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (quoting Nevada Power Co. v. Monsanto Co., 151 F.R.D. 118, 120 (D. Nev. 1993)) ("In order for the meet and confer process to be meaningful and serve its intended purpose, ‘the parties must present to each other the merits of their respective positions with the same candor, specificity, and support during informal negotiations as during the briefing of discovery motions.’"). See also Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 n.1 (TTAB 2014) (simply ignoring deadlines to serve discovery responses or seek an extension of time to do so is inconsistent with the Board’s expectation that the parties and their attorneys cooperate in the discovery process); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1654 (TTAB 2007) (parties have a duty to cooperate in resolving conflicts in the scheduling and taking of depositions).

 2.   Fed. R. Civ. P. 26(g). See, e.g., Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (parties expected to cooperate in the meet and confer process by presenting to each other the merits of their respective positions with candor, specificity and support); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719, 1721 n.4 (TTAB 1989) (Board warned counsel for opposer that its conduct of discovery in the case was "uncooperative" and "improper" and that any further misconduct may result in the imposition of the estoppel sanction); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (in view of parties’ impasse, Board was burdened with resolving numerous requests for discovery); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304-05 (TTAB 1987) (both parties failed to cooperate, thus saddling Board with needless motions); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986) (prior to seeking Board intervention, parties must narrow amount of disputed requests to reasonable number); Unicut Corp. v. Unicut, Inc., 222 USPQ 341, 344 (TTAB 1984) (failure to cooperate in discovery and comply with Board order resulted in the entry of sanctions in the form of judgment); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (it was clear from number and nature of opposer’s discovery requests and applicant’s blanket objections thereto that neither party was cooperating). See also C. H. Stuart Inc. v. Carolina Closet, Inc., 213 USPQ 506, 507 (TTAB 1980) (opposer’s "voluminous" discovery requests were "oppressive and nothing short of harassment" to applicant); C. H. Stuart Inc. v. S. S. Sarna, Inc., 212 USPQ 386, 387 (TTAB 1980) (Board granted applicant’s motion for protective order; opposer’s "boiler-plate" discovery requests designed for an infringement action deemed harassment); Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 584 (TTAB 1975) (applicant’s motion to compel denied due to lack of good faith effort to resolve dispute); Tektronix, Inc. v. Tek Associates, Inc., 183 USPQ 623, 624 (TTAB 1974) (lack of good faith effort); Gastown Inc. of Delaware v. Gas City, Ltd., 180 USPQ 477, 477-78 (TTAB 1974) (opposer precluded from objecting to applicant’s interrogatories in view of its having served essentially the same interrogatories).

 3.   Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1070 (TTAB 1990) (citing Fed. R. Civ. P. 26(d)) and Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626 (TTAB 1986)).

408.01(a)    Obligation to Conduct Discovery Conference

In the interest of promoting, among other things, cooperation in the discovery process, parties are required to hold a conference to discuss settlement and plans for discovery. [ Note 1.] The purpose of the conference for the parties is to discuss 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," as well as the subjects set forth in Fed. R. Civ. P. 26(f) and any other subjects that the Board requires to be discussed in the institution order for the case, including alternative means for case resolution such as Accelerated Case Resolution (ACR). [ Note 2.] See TBMP § 528.05(a)(2) and TBMP § 702.04 for further information on ACR. The parties are free to discuss additional topics besides those outlined in Fed. R. Civ. P 26(f) and the institution order that could promote settlement or efficient adjudication of the Board proceeding. [ Note 3.] Mere discussion of settlement does not substitute for a full discovery conference addressing the issues outlined in Fed. R. Civ. P. 26 and the Board’s institution order. [ Note 4.] Thus, the parties are required to discuss their plans relating to disclosures, discovery and trial evidence unless they are successful in settling the case.

All parties to a proceeding have a duty to cooperate and conduct the discovery conference in a timely fashion. [ Note 5.] If a party refuses to cooperate in scheduling the discovery conference, it is recommended that the party seeking to schedule the conference contact the assigned Board attorney via telephone to facilitate the matter prior to the deadline for the conference. [ Note 6.] In such instances, the Board professional will contact the non-cooperating party directly to schedule the conference. If the uncooperative party fails to respond to Board communications within a reasonable time frame, the Board will issue an order setting a date for the conference, and warning the uncooperative party that the conference will be held as scheduled, and that any party that has not participated may be subject to a motion for sanctions under 37 C.F.R. § 2.120(h). In certain instances, the Board may also order the uncooperative party to show cause why judgment should not be entered against it for failure to participate in the discovery conference. Alternatively, in instances where the party seeking to schedule the conference did not engage the Board, the party may file a motion for sanctions pursuant to 37 C.F.R. § 2.120(h). The Board may, upon grant of a motion for sanctions for failure of a party to participate in a discovery conference, impose any of the sanctions provided in Fed. R. Civ. P. 37(b)(2), including judgment. [ Note 7.] A motion to compel a party to participate in a discovery conference is not a prerequisite to filing a motion for sanctions under 37 C.F.R. § 2.120(h)  because of an adverse party’s unwillingness to participate in the required conference; however, the moving party must provide evidence of a good faith effort to schedule the conference in order to be able to prevail on a motion for such sanctions. [ Note 8.] A motion for sanctions against a party for its failure to participate in the required discovery conference must be filed prior to the deadline for any party to make initial disclosures. [ Note 9.]

For a more detailed discussion of discovery conferences, see TBMP § 401.01.

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.   See 37 C.F.R. § 2.120(a)(2); Fed. R. Civ. P. 26(f). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007). See, e.g., 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). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959, 69961 (October 7, 2016) (if voluminous productions anticipated, method of service is worthwhile issue to discuss at Board discovery conference; production of ESI is a subject for discussion at discovery conference); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244-45, 42252 (August 1, 2007) (possible modification or supplementation of standard protective order a subject for discovery conference; settlement a subject for discovery conference as well as modification of standard deadlines/obligations, specificity of initial disclosures, and expert disclosures sequence, timing and extent of information or material that must be disclosed to satisfy the expert disclosure obligation; whether to seek mediation, arbitration, mediation, or to proceed under Accelerated Case Resolution, manner in which evidence may be presented at trial, stipulations of facts for trial subject of discovery conference).

 3.   See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (TTAB 2009).

 4.   See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (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).

 5.   See, e.g., Promgirl, Inc. v. JPC Co.,94 USPQ2d 1759, 1762 (TTAB 2009) (responsibility to schedule a conference and to confer on each of the topics outlined in Fed. R. Civ. P. 26 and the institution order is a shared responsibility); Guthy-Renker Corp. v. Boyd, 88 USPQ2d 1701, 1703 (TTAB 2008) ("it is the equal responsibility of both parties to ensure that the discovery conference takes place by the assigned deadline"); Influance Inc. v. Zuker, 88 USPQ2d 1859, 1860 n.2 (TTAB 2008) (holding discovery conference is a mutual obligation).

 6.   See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009).

 7.   37 C.F.R. § 2.120(h); Patagonia, Inc. v. Azzolini, 109 USPQ2d 1859, 1861-63 (TTAB 2014).

 8.   See, e.g., Promgirl, Inc., v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009) (opposer’s motion for sanctions in the form of judgment denied where parties were engaged in settlement discussions and opposer did not broach the subject of scheduling the discovery conference until the deadline date, and only after opposer’s settlement offer was rejected); Guthy-Renker Corp. v. Boyd, 88 USPQ2d 1701, 1703-04 (TTAB 2008) (motion for sanctions denied; moving party could have made additional efforts with adverse party to schedule discovery conference, including requesting Board participation in the discovery conference, but failed to do so).

 9.   37 C.F.R. § 2.120(h)(1).

408.01(b)    Obligation to Make Initial and Expert Testimony Disclosures

Fed. R. Civ. P. 26. Duty to Disclose; General Provisions Governing Discovery

• (a) Required Disclosures.
  • (1) Initial Disclosure.
    • (A) In General. Except as exempted by Rule 26(a)(1)(B) or as otherwise stipulated or ordered by the court, a party must, without awaiting a discovery request, provide to the other parties:
      • (i) the name and, if known, the address and telephone number of each individual likely to have discoverable information—along with the subjects of that information—that the disclosing party may use to support its claims or defenses, unless the use would be solely for impeachment;
      • (ii) a copy—or a description by category and location—of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment;
      • * * * *
  • (2) Disclosure of Expert Testimony.
    • (A) In General. In addition to the disclosures required by Rule 26(a)(1), a party must disclose to the other parties the identity of any witness it may use at trial to present evidence under Federal Rule of Evidence 702, 703, or 705.
    • (B) Witnesses Who Must Provide a Written Report. Unless otherwise stipulated or ordered by the court, this disclosure must be accompanied by a written report—prepared and signed by the witness—if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party’s employee regularly involve giving expert testimony. The report must contain:
      • (i) a complete statement of all opinions the witness will express and the basis and reasons for them;
      • (ii) the facts or data considered by the witness in forming them;
      • (iii) any exhibits that will be used to summarize or support them;
      • (iv) the witness’s qualifications, including a list of all publications authored in the previous 10 years;
      • (v) a list of all other cases in which, during the previous 4 years, the witness testified as an expert at trial or by deposition; and
      • (vi) a statement of the compensation to be paid for the study and testimony in the case.
    • (C) Witnesses Who Do Not Provide a Written Report. Unless otherwise stipulated or ordered by the court, if the witness is not required to provide a written report, this disclosure must state:
      • (i) the subject matter on which the witness is expected to present evidence under Federal Rule of Evidence 702, 703, or 705; and
      • (ii) a summary of the facts and opinions to which the witness is expected to testify.
  

37 C.F.R. § 2.120(a)(2) 

• (ii) Initial disclosures must be made no later than thirty days after the opening of the discovery period.
• (ii) Disclosure of expert testimony must occur in the manner and sequence provided in Rule 26(a)(2) of the Federal Rules of Civil Procedure, unless alternate directions have been provided by the Board in an institution order or any subsequent order resetting disclosure, discovery or trial dates. If the expert is retained after the deadline for disclosure of expert testimony, the party must promptly file a motion for leave to use expert testimony. Upon disclosure by any party of plans to use expert testimony, whether before or after the deadline for disclosing expert testimony, the Board, either on its own initiative or on notice from either party of the disclosure of expert testimony, may issue an order regarding expert discovery and/or set a deadline for any other party to disclose plans to use a rebuttal expert.

As part of the discovery phase parties are obliged to make initial disclosures and, when necessary, expert testimony disclosures. The Board adopted a disclosure regime to promote the early exchange of information and settlement and, for cases that do not settle, "more efficient discovery and trial, reduction of incidents of unfair surprise, and increase the likelihood of fair disposition of the parties’ claims and defenses." [ Note 1.] In addition, the use of routine disclosures of the types provided for in the Federal Rules of Civil Procedure is intended to "obviate the need to use traditional discovery to obtain ‘basic information’ about a party’s claims or defenses." [ Note 2.]

Each party involved in an inter partes proceeding is obligated to make initial disclosures to every other party, by the deadline set in the Board’s institution order, or as may be reset by stipulation of the parties approved by the Board, or by motion granted by the Board, or by order of the Board. [ Note 3.] The initial disclosure requirement is intended to provide for the disclosure of names of potential witnesses and basic information about documents and things that a party may use to support a claim or defense. [ Note 4.] Parties are encouraged in the spirit of cooperation to stipulate to rely on more expansive use of reciprocal disclosures in lieu of formal discovery, as a more efficient and less costly manner of litigating a Board proceeding, subject to Board approval. [ Note 5.]

For a further discussion of initial disclosures, see TBMP § 401.02.

If a party decides to use expert testimony in a Board proceeding, pursuant to Fed. R. Civ. P. 26(a)(2), the party must serve expert disclosures 30 days prior to the close of discovery, and any reset expert disclosure deadline must always be scheduled prior to the close of discovery. [ Note 6.] The expert disclosure requirement is intended to avoid any unfair surprise during the testimony period. [ Note 7.] While the expert disclosure provided for in Fed. R. Civ. P. 26 may be extensive and should not, therefore be filed with the Board, the parties should inform the Board when an expert disclosure is made, so the Board can issue any appropriate order. [ Note 8.] The Board may, for example, suspend proceedings to provide for the taking of any necessary discovery of the proposed expert witness, and to allow the adverse party or parties to determine whether it will be necessary to rely on a rebutting expert. [ Note 9.] Parties are expected to cooperate in the process of exchanging information about any testifying experts, and should discuss during the discovery conference, the possibility of the presentation of expert testimony. [ Note 10.] The parties should revisit these discussions whenever it appears that a testifying expert witness may become involved in the case. [ Note 11.]

Where a party in its disclosures identifies an expert as a possible testifying witness under Rule 26(b)(4)(A), but subsequently re-designates the expert as a non-testifying or consulting expert under Fed. R. Civ. P. 26(b)(4)(D), the opposing party may depose that expert only upon a showing of "exceptional circumstances" under Fed. R. Civ. P. 26(b)(4)(D)(ii). [ Note 12.]

For further information regarding expert disclosures, see TBMP § 401.03.

For a discussion regarding the modification of disclosure obligations, see TBMP § 401.04.

NOTES:

 1.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007). See Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (disclosures, from initial through pretrial, and discovery responses should be viewed as a continuum of communication designed to avoid unfair surprise and to facilitate a fair adjudication of the case on the merits).

 2.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 3.   37 C.F.R. § 2.120(a)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 4.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 5.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 6.   37 C.F.R. § 2.120(a)(2)(iii); 37 C.F.R. § 2.120(a)(2)(iv); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007) (under 37 C.F.R. § 2.120(a)(2), expert disclosures are governed by Fed. R. Civ. P. 26(a)(2) in the absence of an order from the Board setting a deadline). See, e.g., Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1564 n.2 (TTAB 2014) (parties stipulated to deadlines for expert and rebuttal expert reports); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (because Rule 2.120(a)(2) does not require that a disclosing party inform the Board that an expert disclosure has been made; failure to inform the Board of timely disclosure of an expert witness is not a basis for excluding the testimony of such expert witness); Jules Jurgensen/Rhapsody, Inc. v. Baumberger, 91 USPQ2d 1443, 1445 (TTAB 2009) (motion to strike witness testimony granted in view of noncompliance with 37 C.F.R. § 2.121(e)).