524    Motion to Test Sufficiency of Response to Requests for Admission

524.01    In General

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. A shorter or longer time for responding may be stipulated to under Rule 29 or be ordered by the court.

Fed. R. Civ. P. 36(a)(6) Motion Regarding the Sufficiency of an Answer or Objection. The requesting party may move to determine the sufficiency of an answer or objection. Unless the court finds an objection justified, it must order that an answer be served. On finding that an answer does not comply with this rule, the court may order either that the matter is admitted or that an amended answer be served. ...

37 C.F.R. § 2.120(i)  Request for admissions.

  • ...
  • (2) When a party files a motion to determine the sufficiency of an answer or objection to a request for an admission, the case will be suspended by the Board with respect to all matters not germane to the motion. After the motion 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 determine the sufficiency of an answer or objection to a request for admission 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.

If a propounding party is dissatisfied with a responding party’s answer or objection to a request for admission, and wishes to obtain a ruling on the sufficiency thereof, the propounding party may file a motion with the Board to determine the sufficiency of the response. [ Note 1.] Cf. TBMP § 523.01 (Motion to Compel Discovery – In General).

If the Board, upon motion to test the sufficiency of a response to a request for admission, determines that an answer does not comply with the requirements of Fed. R. Civ. P. 36(a), it may order either that the matter is deemed admitted or that an amended answer be served. If the Board determines that an objection is not justified, it will order that an answer be served. [ Note 2.]

Generally, if there is an admission or a denial, the Board will not find the response to be insufficient even if the responding party included an explanation or clarification of the admission or denial, or admitted after first denying. [ Note 3.] If no response is timely served to a request for admission, the matter is automatically deemed admitted, and no motion is necessary. [ Note 4.] See TBMP § 525 and TBMP § 527.01(d) for further discussion.

NOTES:

 1.   See 37 C.F.R. § 2.120(i); Fed. R. Civ. P. 36(a); Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 188 USPQ 690, 691 (TTAB 1975); Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696, 698 n.7 (TTAB 1971). Cf. 37 C.F.R. § 2.120(f).

 2.   Fed. R. Civ. P. 36(a).

 3.   Cf. Fed. R. Civ. P. 36(a)(4 – 6) Committee Notes on Rules - 1970 amendment regarding improper responses which may be considered effective admissions.

 4.   Fed. R. Civ. P. 36(a)(3).

524.02    Special Requirements for Motion

37 C.F.R. § 2.120(i)(1)  Request for admissions.

  • (1) ... The motion shall include a copy of the request for admission and any exhibits thereto and of the answer or objection. The motion must be supported by a written statement from the moving party showing that such party or the attorney therefor has made a good faith effort, by conference or correspondence, to resolve with the other party or the attorney therefor the issues presented in the motion and has been unable to reach agreement. If issues raised in the motion are subsequently resolved by agreement of the parties, the moving party should inform the Board in writing of the issues in the motion which no longer require adjudication.

A motion to determine the sufficiency of a response to a request for admission must include a copy of the request for admission (and any exhibits thereto) and of the answer or objection. [ Note 1.]

In addition, the motion must be supported by a written statement 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 2.] Cf. TBMP § 523.02.

In the event that issues raised in the motion are subsequently resolved by the parties, the moving party should immediately inform the Board in writing, filed through ESTTA, of the issues in the motion that no longer require determination. [ Note 3.]

NOTES:

 1.   37 C.F.R. § 2.120(i). Cf. 37 C.F.R. § 2.120(f).

 2.   37 C.F.R. § 2.120(i). Cf. 37 C.F.R. § 2.120(f); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009).

 3.   37 C.F.R. § 2.120(i). Cf. 37 C.F.R. § 2.120(f).

524.03    Time for Filing Motion

37 C.F.R. § 2.120(i)  Request for admissions.

  • (1) Any motion by a party to determine the sufficiency of an answer or objection, including testing the sufficiency of a general objection on the ground of excessive number, to a request made by that party for an admission must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset. ...
  • (2) When a party files a motion to determine the sufficiency of an answer or objection to a request for an admission, the case will be suspended by the Board with respect to all matters not germane to the motion. After the motion 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 determine the sufficiency of an answer or objection to a request for admission 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.

A motion to test the sufficiency of a response to a request for admission does not necessarily have to be filed during the discovery period, but it should be filed within a reasonable time after service of the response believed to be inadequate and, in any event, must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset. [ Note 1.] As with a motion to compel, a motion to test the sufficiency not filed before the day of the deadline for pretrial disclosures for the first testimony period is untimely, even if the day of the deadline for pretrial disclosures for the first testimony period is subsequently reset. If the day of the deadline for pretrial disclosures for the first testimony period is reset before the day of the deadline for pretrial disclosures for the first testimony period as originally set, a motion to test sufficiency will be timely if it is filed before the day of the rescheduled deadline for the pretrial disclosures for the first testimony period. However, as of the day of the deadline for pretrial disclosures for the first testimony period, a motion to test sufficiency filed thereafter is untimely, even if it is filed prior to the day of the rescheduled or reset deadline for pretrial disclosures for the first testimony period. [ Note 2.] There is no provision in the rule for Board discretion to consider an untimely motion to test the sufficiency of a response to a request for admission. Trial schedules include a forty-five-day period between the close of discovery and day of the deadline for pretrial disclosures for the first testimony period to allow time for the filing of any necessary discovery motions. Cf. TBMP § 523.03.

NOTES:

 1.   37 C.F.R. § 2.120(i)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE 82 Fed. Reg. 33804 (July 21, 2017). Cf. 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.").

 2.   To be clear, if the deadline for pretrial disclosures was reset after the deadline was past, a motion to test the sufficiency of request for admission responses would be untimely.37 C.F.R. § 2.120(h)(1); Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696, 697-98 n.7 (TTAB 1971) (opposer’s motion at final hearing seeking ruling on propriety of applicant’s responses to requests for admission was manifestly untimely; discovery is a pre-trial procedure and all matters pertinent thereto should be resolved prior to trial); 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). Please Note: The deadlines for filing motions to test the sufficiency were changed in the January 14, 2017 revisions to 37 C.F.R. § 2.120. Prior Board decisions may cite to former deadlines no longer applicable in inter partes proceedings.

524.04    Failure to File Motion

If a party that served a request for admission receives a response thereto that it believes to be inadequate, but fails to file a motion to test the sufficiency of the response, it may not thereafter be heard to complain about the sufficiency thereof. [ Note 1.] Cf. TBMP § 523.04.

NOTES:

 1.   37 C.F.R. § 2.120(i)(1); Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696, 697-98 n.7 (TTAB 1971).