523.01    In General

37 C.F.R. § 2.120(f)  Motion for an order to compel disclosure or discovery.

  • (1) If a party fails to make required initial disclosures or expert testimony disclosure, or fails to designate a person pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, or if a party, or such designated person, or an officer, director or managing agent of a party fails to attend a deposition or fails to answer any question propounded in a discovery deposition, or any interrogatory, or fails to produce and permit the inspection and copying of any document, electronically stored information, or tangible thing, the party entitled to disclosure or seeking discovery may file a motion to compel disclosure, a designation, or attendance at a deposition, or an answer, or production and an opportunity to inspect and copy…
  • (2) When a party files a motion for an order to compel initial disclosures, expert testimony disclosure, or discovery, the case will be suspended by the Board with respect to all matters not germane to the motion. After the motion to compel is filed and served, no party should file any paper that is not germane to the motion, except as otherwise specified in the Board’s suspension order. Nor may any party serve any additional discovery until the period of suspension is lifted or expires by or under order of the Board. The filing of a motion to compel any disclosure or discovery shall not toll the time for a party to comply with any disclosure requirement or to respond to any outstanding discovery requests or to appear for any noticed discovery deposition. If discovery has closed, however, the parties need not make pretrial disclosures until directed to do so by the Board.

In inter partes proceedings before the Board, a motion to compel is available in the event of a failure to provide required disclosures or discovery requested by means of discovery depositions, interrogatories, and requests for production of documents and things. [ Note 1.] A motion to compel is also available to compel attendance at a discovery conference [ Note 2.] or to compel a party to supplement inadequate disclosures or sanction a party for failing to make initial disclosures after being ordered to do so. [ Note 3.] For further information regarding the duty to hold a discovery conference, see TBMP § 408.01(a).

Motions to compel are also available to compel an answer to a deposition question. Because discovery depositions are taken out of the presence of the Board, if a witness being deposed, or the attorney for the witness, believes a question is improper, an objection may be stated, but the question normally should be answered subject to the stated objection. See TBMP § 404.08(c). However, if a witness being deposed objects to, and refuses to answer, a particular question, and if the deposition is being taken pursuant to a subpoena, the propounding party may attempt to obtain an immediate ruling on the propriety of the objection, 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. See TBMP § 404.09 and TBMP § 411.03. In the absence of a court order compelling an answer, the propounding party’s only alternative, if it wishes to compel an answer, is to complete the deposition and then file a motion to compel with the Board. [ Note 4.]

Further, a party who fails to provide its initial disclosures will be barred from propounding discovery requests, whether interrogatories, requests for production or requests for admission, and may not file a motion to compel to obtain responses to improperly propounded discovery requests. [ Note 5.]

In accordance with 37 C.F.R. § 2.120(f), when a party files a motion to compel disclosures or discovery, the Board will issue an order suspending the proceeding with respect to all matters not germane to the motion, and no party should file any paper that is not germane to the discovery dispute, except as otherwise specified in the Board’s suspension order. However, neither the filing of a motion to compel nor the Board’s resulting suspension order tolls the time for parties to make required disclosures or respond to any outstanding discovery requests which had been served prior to the filing of the motion to compel, nor does it excuse a party’s appearance at any discovery deposition which had been duly noticed prior to the filing of the motion to compel. When the motion to compel is filed after discovery has closed, but before the day of the deadline for pretrial disclosures for the first testimony period, the time period for making pretrial disclosures will be suspended and dates will be reset after the motion to compel is decided. [ Note 6.]

37 C.F.R. § 2.120(f)  provides that a motion to compel initial disclosures must be filed within thirty days after the deadline therefor, a motion to compel expert testimony disclosure must be filed prior to the close of the discovery period, and a motion to compel discovery must be filed before the day of the deadline for pretrial disclosures for the first testimony period as originally set or as reset. [ Note 7.] 37 C.F.R. § 2.120(i)(1)  provides that a motion to determine the sufficiency of an answer or objection to a request for admission must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset. [ Note 8.] These rules are designed to ensure that all discovery disputes are resolved prior to the commencement of trial. A motion to compel discovery or to test the sufficiency of an answer or objection to a request for admission is untimely if filed on or after the day of the deadline for pretrial disclosures for the first testimony period, even if the day of the deadline for pretrial disclosures is subsequently reset. [ Note 9.] See TBMP § 523.03.

The motion to compel procedure is not applicable to requests for admission. The procedure to be followed in the case of requests for admission is as set forth in 37 C.F.R. § 2.120(i)(1)  and Fed. R. Civ. P. 36(a). See also TBMP § 411.03 (Requests for Admission) and TBMP § 524 (Motion to Test Sufficiency of Response to Admission Request).

For information concerning the effect of a party’s failure to timely respond to interrogatories and document requests, see TBMP § 403.03 (Time for Service of Discovery Responses), TBMP § 405.04(a) (Time for Service of Responses), TBMP § 406.04(a) (Time for Service of Responses), and TBMP § 411 (Remedy for Failure to Provide Disclosures or Discovery); and see TBMP § 523 (Motion to Compel Discovery Responses) and TBMP § 524 (regarding motion to test sufficiency of responses to admission requests).

NOTES:

 1.   See 37 C.F.R. § 2.120(f). See also, e.g., Johnson and Johnson and Roc International S.A.R.L. v. Obschestvo s Oranitchennoy; Otvetstvenn Ostiu "Wds," 95 USPQ2d 1567, 1570 (TTAB 2010) (TTAB 2010) (motion to compel applicant to supplement interrogatory responses granted); Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008) (motion to compel available remedy when adverse party fails to provide initial or expert disclosures); Jain v. Ramparts Inc., 49 USPQ2d 1429, 1436 (TTAB 1998) (interrogatories and document requests); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1298 (TTAB 1997) (discovery deposition); MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953 (TTAB 1979) (interrogatories); General Sealer Corp. v. H. H. Robertson Co., 193 USPQ 384, 384 (TTAB 1976) (motion for sanctions treated as motion to compel); Fidelity Prescriptions, Inc. v. Medicine Chest Discount Centers, Inc., 191 USPQ 127, 128 (TTAB 1976) (party may file motion to compel if it believes objections to discovery requests to be improper). See also Spa International, Inc. v. European Health Spa, Inc., 184 USPQ 747, 747 (TTAB 1975) (discussing when it is appropriate to file a motion to compel or a motion for discovery sanctions); Johnson & Johnson v. Diamond Medical, Inc., 183 USPQ 615, 616 (TTAB 1974) (motion to compel is not untimely simply because it is made after discovery period has expired, merely because it relates back to earlier timely request; motion for discovery sanctions denied because no discovery order has issued); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974) (motion to compel production of documents), overruled on other grounds by Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171-72 (TTAB 1975); Dow Corning Corp. v. Doric Corp., 183 USPQ 126, 127 (TTAB 1974) (Board can rule on objections to request for production in connection with the filing of a motion to compel). Cf. Fed. R. Civ. P. 37(a)(3)(B).

 2.   Promgirl Inc. v. JPC Co., 94 USPQ2d 1759, 1762-63 (TTAB 2009) (plaintiff’s motion for sanctions in the form of judgment for defendant’s failure to participate in discovery conference denied, but alternative motion to compel attendance at a discovery conference granted). Note, however, that 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).

 3.   RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1493 (TTAB 2013) (motion to compel available for inadequate expert disclosures); Influance Inc. v. Zuker, 88 USPQ2d 1859, 1860 n.3 (TTAB 2008) (motion to compel available for inadequate initial disclosures).

 4.   See 37 C.F.R. § 2.120(f); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974) overruled on other grounds by Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171-72 (TTAB 1975.

 5.   37 C.F.R. § 2.120(a)(3); Dating DNA LLC v. Imagini Holdings Ltd., 94 USPQ2d 1889, 1893 (TTAB 2010); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705-06 (TTAB 2009) (a party that wishes to object to discovery on the ground that its opponent failed to make its required initial disclosures prior to serving the discovery must assert that basis for objection to the discovery clearly and specifically); MySpace, Inc. v. Donnell Mitchell, 91 USPQ2d 1060, 1060 (TTAB 2009) (defendant’s motion to compel denied because defendant had not made the required initial disclosures).

 6.   See 37 C.F.R. § 2.120(f). ("If discovery has closed, however, the parties need not make pretrial disclosures until directed to do so by the Board."). See also HighBeam Marketing LLC v. Highbeam Research LLC, 85 USPQ2d 1902, 1907 (TTAB 2008) (motion to compel attendance of employees for depositions granted where moving party made good faith effort to schedule depositions but opposer failed to cooperate).

 7.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE 82 Fed. Reg. 33804 (July 21, 2017). Cf. KID-Systeme GmbH v. Turk Hava Yollari Teknik Anonim, 125 USPQ2d 1415, 1416-17 (TTAB 2018) (motion for summary judgment must be filed the day before the deadline for pretrial disclosures); Shared, LLC v. SharedSpaceofAtlanta, LLC, 125 USPQ2d 1143, 1144 (TTAB 2017) ("[A] motion for judgment on the pleadings must also be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset.").

 8.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE 82 Fed. Reg. 33804 (July 21, 2017). Cf. KID-Systeme GmbH v. Turk Hava Yollari Teknik Anonim, 125 USPQ2d 1415, 1416-17 (TTAB 2018) (motion for summary judgment must be filed the day before the deadline for pretrial disclosures); Shared, LLC v. SharedSpaceofAtlanta, LLC, 125 USPQ2d 1143, 1144 (TTAB 2017) ("[A] motion for judgment on the pleadings must also be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset.").

 9.   Cf. La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm’r 1976) (motion for summary judgment filed during the period for taking testimony untimely).