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).