401.04 Modification of Disclosure Obligations
37 C.F.R. § 2.120(a)(2)(iv) The parties may stipulate to a shortening of the discovery period, that there will be no discovery, that the number of discovery requests or depositions be limited, or that reciprocal disclosures be used in place of discovery. Limited extensions of the discovery period may be granted upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. If a motion for an extension is denied, the discovery period may remain as originally set or as reset. Disclosure deadlines and obligations may be modified upon written stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board, but the expert disclosure deadline must always be scheduled prior to the close of discovery. If a stipulation or motion for modification is denied, discovery disclosure deadlines may remain as originally set or reset and obligations may remain unaltered.
Disclosure deadlines and obligations may be modified upon written stipulation of the parties approved by the Board, upon motion granted by the Board, or by order of the Board. [ Note 1.] However, the expert disclosure deadline must always be scheduled prior to the close of discovery. [ Note 2.] Written initial disclosures or disclosed documents, and materials obtained through the disclosure process should not be filed with the Board, except when submitted with a motion relating to disclosure or discovery, or in support of or in response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party’s testimony period. [ Note 3.] The parties may agree to waive or otherwise modify their obligation to make disclosures, but must inform the Board by written stipulation or by motion. [ Note 4.] A party who fails to make the required or adequate disclosures may be subject to a motion to compel, and ultimately a motion for sanctions, including possible judgment. [ Note 5.] See TBMP § 411.01 and TBMP § 523 for further information on motions to compel initial or expert disclosures.
In instances where the defendant is in default, or a pleading motion under Fed. R. Civ. P. 12 or counterclaim has been filed, the parties’ obligation to make initial disclosures is tolled or effectively stayed. [ Note 6.] In such cases, the Board will reset the deadline for making initial disclosures, as well as the deadline for the discovery conference and all subsequent dates, after resolving or accounting for the default, motion, or counterclaim. [ Note 7.] For further information regarding the rescheduling of the discovery conference in these circumstances, see TBMP § 401.01.
Pretrial disclosures are not part of the discovery process and, therefore, a motion to compel is not the remedy when a party fails to make, or makes inadequate, pretrial disclosures. See TBMP § 702.01 for further information on pretrial disclosures.
For a discussion regarding extensions of time to make disclosures and the impact of extensions of time regarding the close of discovery on disclosure obligations, see TBMP § 403.04.
NOTES:
1. 37 C.F.R. § 2.120(a)(2)(iv).
2. 37 C.F.R. § 2.120(a)(2)(iv). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).
3. 37 C.F.R. § 2.120(k)(8). See also Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1427 n.6 (TTAB 2013) (documents obtained through disclosure may be offered as exhibits in connection with the taking of an adversary’s discovery deposition, and may be introduced as exhibits during the taking of an adversary’s testimony).
4. 37 C.F.R. § 2.120(a)(2)(iv); 37 C.F.R. § 2.120(a)(2)(v); and 37 C.F.R. § 2.120(a)(3). See, e.g., Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 (TTAB 2013) (parties stipulated to waive pretrial disclosures); Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767-68 (TTAB 2008) (waiver of initial disclosures).
5. 37 C.F.R. § 2.120(f)(1); 37 C.F.R. § 2.120(h)(1); and 37 C.F.R. § 2.120(h)(2); RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1493 (TTAB 2013) (motion to compel is an available remedy for inadequate expert disclosures); Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1760 n.2 (TTAB 2009) (motion to compel is remedy when adversary has failed to make or has made inadequate initial disclosures); Influance Inc. 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).
6. 37 C.F.R. § 2.106(a); 37 C.F.R. § 2.114(a); and 37 C.F.R. § 2.127(d). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957, 69959 (October 7, 2016); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
7. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).