411 Remedy for Failure to Provide Disclosures or Discovery
411.01 Initial and Expert Testimony Disclosures
If a party fails to provide any adverse party with required initial disclosures or expert testimony disclosures, the adverse party may file a motion to compel. [ Note 1.] A motion to compel initial disclosures must be filed thirty days after the deadline for initial disclosures; a motion to compel expert testimony disclosures must be filed prior to the close of the discovery period. [ Note 2.] For further information concerning motions to compel, see TBMP § 523. A party may not seek entry of sanctions against an adverse party that has failed to make required initial or expert disclosures without first pursuing the disclosures by motion to compel, unless the disclosing party has expressly stated that initial disclosures will not be made. [ Note 3.] For further information concerning discovery sanctions and when they are available, see TBMP § 527.01. For information regarding a party’s failure to make pretrial disclosures, see TBMP § 702.01.
NOTES:
1. 37 C.F.R. § 2.120(f); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42256 (August 1, 2007) ("A motion to compel is the available remedy when an adversary has failed to make, or has made inadequate, initial disclosures or disclosures of expert testimony. Both of these types of disclosures are made during discovery, and a motion to compel must precede a motion for sanctions."). See also Luster Products Inc. v. Van Zandt, 104 USPQ2d 1877, 1879 (TTAB 2012) (motion to compel is available remedy for failure to serve, or insufficient, initial disclosures); RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1493 (TTAB 2013) (motion to compel available for inadequate expert disclosures); Influance 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).
2. 37 C.F.R. § 2.120(f)(1). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951, 69977 (October 7, 2016).
3. 37 C.F.R. § 2.120(h)(1) and 37 C.F.R. § 2.120(h)(2); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42256 (August 1, 2007) ("A motion for sanctions is only appropriate if a motion to compel these respective disclosures has already been granted."); Amazon Technologies v. Wax, 93 USPQ2d 1702, 1706 (TTAB 2009) (motion for sanctions under 37 C.F.R. § 2.120(g)(1), redesignated by amendment to 37 C.F.R. § 2.120(h)(1), denied as premature where no Board order in place compelling discovery). But see 37 C.F.R. § 2.120(h)(2); Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008) (discussing both 37 C.F.R. §§ 2.120(g)(1) and (g)(2)). Please Note: Effective January 14, 2017, 37 C.F.R. § 2.120(g) has been redesignated by amendment to 37 C.F.R. § 2.120(h).
411.02 Interrogatories or Requests for Production
If any party fails to answer any interrogatory, the party seeking discovery may file a motion with the Board for an order to compel an answer. [ Note 1.] Similarly, if any party fails to produce and permit the inspection and copying of any document or thing, the party seeking discovery may file a motion for an order to compel production and an opportunity to inspect and copy. [ Note 2.] A motion to compel responses to interrogatories or requests for production must be filed before the day of the deadline for pretrial disclosures for the first testimony period as originally set or as reset. [ Note 3.] The party seeking interrogatory responses or production of documents may not seek immediate entry of sanctions for no response unless the responding party has expressly informed the inquiring party that no response will be made to the discovery requests. [ Note 4.]
For information concerning motions to compel, see TBMP § 523.
NOTES:
2. 37 C.F.R. § 2.120(f). Cf. Fed. R. Civ. P. 37(a)(3)(B).
37 C.F.R §2.120(f)(1). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE; CLARIFICATION, 82 Fed. Reg. 33804 (July 21, 2017).
4. 37 C.F.R. § 2.120(h)(2). Cf. Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008) (regarding disclosures); HighBeam Marketing LLC v. Highbeam Research LLC, 85 USPQ2d 1902, 1906 (TTAB 2008) ("Under Trademark Rule 2.120(g)(2), if a party witness fails to attend a discovery deposition after receiving proper notice, and such party or the party’s attorney or other authorized representative informs the party seeking discovery that no such attendance will take place, the Board may enter sanctions against that party."). Please Note: Effective January 14, 2017, 37 C.F.R. § 2.120(g) has been redesignated by amendment to 37 C.F.R. § 2.120(h).
411.03 Requests for Admission
If a party on which requests for admission have been served fails to file a timely response thereto, the requests are deemed admitted by operation of Fed. R. Civ. P. 36(a) unless the party is able to show that its failure to timely respond was the result of excusable neglect; 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 1.] 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). See TBMP § 407.03(a) (Time for Service of Responses). For information on motions to withdraw or amend admissions, see TBMP § 525.
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 or objection. [ Note 2.] If the Board determines that a response does not comply with the requirements of Fed. R. Civ. P. 36(a), it may order either that the matter is admitted or that an amended answer be served. If the Board determines that an objection is not justified, it will order that a response be served. [ Note 3.] In instances, however, where a request for admission is either admitted or denied, such admissions or denials constitute a proper response even if the response also includes objections. [ Note 4.] The requesting party therefore should refrain from challenging the sufficiency of the response.
For information on motions to determine the sufficiency of answers or objections to requests for admission, see TBMP § 524.
NOTES:
1. See Giersch v. Scripps Networks Inc., 85 USPQ2d 1306, 1307 (TTAB 2007) (contrasting standard of review for motion to reopen time to respond to requests for admission and for motion to withdraw requests that stand admitted); Hobie Designs, Inc. v. Fred Hayman Beverly Hills, Inc., 14 USPQ2d 2064, 2065 (TTAB 1990).
2. Fed. R. Civ. P. 36(a); 37 C.F.R. § 2.120(i).
3. Fed. R. Civ. P. 36(a).
4. Fed. R. Civ. P.36(a).
411.04 Discovery Depositions
If a party fails to designate a person pursuant to Fed. R. Civ. P. 30(b)(6) or Fed. R. Civ. P. 31(a)(4), or if a party or such designated person, or an officer, director, or managing agent of a party, fails to attend a discovery deposition, or fails to answer any question propounded in a discovery deposition, the party seeking discovery may file a motion with the Board for an order to compel a designation, or attendance at a deposition, or an answer. [ Note 1.] 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 2.] For information concerning motions to compel, see TBMP § 523. Because the Board does not have jurisdiction over a non-party witness, a motion to compel is not available as a remedy when such a witness refuses a request for deposition. However, if the deposing party has secured the non-party’s attendance by obtaining a subpoena from an appropriate United States district court, see 35 U.S.C. § 24, the subpoena may be enforced by returning to the issuing court. See TBMP § 404.03(a)(2). Similarly, if a non-party witness has appeared voluntarily for a deposition, but refuses to answer particular questions propounded during the deposition, the deposing party must seek relief from an appropriate United States district court and may not file a motion to compel with the Board.
A discovery deposition is taken out of the presence of the Board. Therefore, if the 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. However, if a witness being deposed objects to, and refuses to answer, or is instructed by counsel not 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. [ Note 3.] See TBMP § 404.08(c). In the absence of a court order the propounding party’s only alternative, if it wishes to compel a response, is to complete the deposition and then file a motion to compel with the Board. [ Note 4.]
NOTES:
1. 37 C.F.R. § 2.120(f)(1). Cf. Fed. R. Civ. P. 37(a).
37 C.F.R §2.120(f)(1). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE; CLARIFICATION, 82 Fed. Reg. 33804 (July 21, 2017).
3. See Ferro Corp. v. SCM Corp., 219 USPQ 346, 351 (TTAB 1983); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974).
4. 37 C.F.R. § 2.120(f)(1). See Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974) (if a party fails or refuses to answer any proper question during the taking of a discovery deposition, the party may file a motion to compel with the Board).
411.05 Sanctions Related to Disclosures and Discovery
In inter partes proceedings before the Board, a variety of sanctions may be imposed, in appropriate cases, for failure to provide disclosures or discovery pursuant to 37 C.F.R. § 2.120(h). [ Note 1.] The Board also may impose sanctions against the non-cooperating party for failure to participate in the discovery conference. [ Note 2.] See TBMP § 408.01(a).The Board’s authority to enter sanctions for conduct or misconduct related to disclosures or discovery is rooted in Fed. R. Civ. P. 37, most portions of which are made applicable to Board proceedings by 37 C.F.R. § 2.116(a) (but certain portions of Fed. R. Civ. P. 37 are, on their face, irrelevant to Board proceedings). The range of sanctions listed in Fed. R. Civ. P. 37(b)(2), and which may be entered by the Board include, inter alia, striking all or part of the pleadings of the disobedient party, refusing to allow the disobedient party to support or oppose designated claims or defenses, drawing adverse inferences against uncooperative party, prohibiting the disobedient party from introducing designated matters in evidence, and entering judgment against the disobedient party. A sanction also "can consist of requiring a party to take an action which it would not otherwise be required to take by applicable rules, or to refrain from taking an action it would otherwise take." [ Note 3.] However, the Board will not hold any person in contempt, or award any expenses, including attorneys’ fees, to any party. [ Note 4.]
For further information concerning discovery sanctions and when they are available, see TBMP § 527.01.
For further information concerning attorneys’ fees and other expenses in Board proceedings, see TBMP § 502.05 and cases cited therein.
NOTES:
1. See, e.g., Amazon Technologies, Inc. v. Wax, 95 USPQ2d 1865, 1868-69 (TTAB 2010) (Board imposed sanctions pursuant to 37 C.F.R. § 2.120(g)(1), redesignated effective January 14, 2017 by amendment to 37 C.F.R. § 2.120(h)(1)); opposer ordered to serve index of produced documents, supplemental answers to certain interrogatories; discovery reopened for applicant only); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1778 (TTAB 1999) (as a sanction, party required to study certain TBMP sections and to file a statement with the Board certifying completion of the task, to prepare complete set of responses to discovery requests, to consult with opposing counsel to ensure responses are appropriate, and to forward copies to counsel).
2. Patagonia, Inc. v. Azzolini, 109 USPQ2d 1859, 1861-63 (TTAB 2014); Promgirl, Inc., v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009); Guthy-Renker Corp. v. Boyd, 88 USPQ2d 1701, 1704 (TTAB 2008).
3. Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1778 n.11 (TTAB 1999).
4. 37 C.F.R. § 2.120(h)(1), 37 C.F.R. § 2.120(h)(2), and 37 C.F.R. § 2.127(f).