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.
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).