406.04(b) Place and Form of Production
37 C.F.R. § 2.120(e) . . . The time, place, and manner for production of documents, electronically stored information, and tangible things shall comport with the provisions of Rule 34 of the Federal Rules of Civil Procedure, or be made pursuant to agreement of the parties, or where and in the manner which the Trademark Trial and Appeal Board, upon motion, orders.
Fed. R. Civ. P. 34(b)(2)(E) Producing the Documents or Electronically Stored Information. Unless otherwise stipulated or ordered by the court, these procedures apply to producing documents or electronically stored information:
- (i) A party must produce documents as they are kept in the usual course of business or must organize and label them to correspond to the categories in the request;
- (ii) If a request does not specify a form for producing electronically stored information, a party must produce it in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms; and
- (iii) A party need not produce the same electronically stored information in more than one form.
The place of production is governed by 37 C.F.R. § 2.120(e) which states that production shall comport with the Fed. R. Civ. P. 34, or be made pursuant to the agreement of the parties, or where the Board, upon motion, orders. [ Note 1.] A party is only obliged to make documents and materials available for inspection and copying, as they are kept in the ordinary course of business, [ Note 2.] or as organized and labeled to correspond to the requests, or a party may produce copies of the documents or of the electronically stored information instead of permitting inspection. [ Note 3.] In Board cases, parties often extend each other the courtesy of producing requested documents by photocopying the documents and forwarding them to the requesting party at the requesting party’s expense or by providing copies electronically. [ Note 4.] Indeed, the Board believes this is more efficient and thus encourages this method of producing documents. [ Note 5.] Electronic production should be used whenever possible and parties are expected to discuss such arrangements, as well as the arrangements for production of electronically stored information, and alternative methods of service if email is not practical, in their mandatory discovery conference. [ Note 6.] For more information regarding discovery conferences, see TBMP § 401.01 and TBMP § 408.01(a).
Electronically stored information may be produced in the form specified by the request. If no specification is made, the party must produce the electronically stored information in the form in which it is ordinarily maintained, or in a reasonably usable form. [ Note 7.] Fed. R. Civ. P. 34(a) "requires that, if necessary, a responding party ‘translate’ information it produces into a ‘reasonably usable’ form."[ Note 8.] However, the option to produce in a reasonably usable form does not mean that a responding party is free to convert electronically stored information from the form in which it is maintained to a different form that makes it more difficult or burdensome for the requesting party to use the information efficiently in the litigation. [ Note 9.] A party does not have to produce electronically stored information in more than one format. [ Note 10.] Electronically stored information produced during discovery can be used during depositions to question witnesses and may come in as exhibits thereto.
On motion pursuant to 37 C.F.R. § 2.120(e), the Board may by order specify the place and the manner in which the documents are to be produced, and in situations involving electronically stored information, the form of production. The Board may, for example, order that the responding party photocopy the documents designated in a request and mail the photocopies to the requesting party when the responding party has unreasonably refused to produce documents. [ Note 11.]
NOTES:
2. Fed. R. Civ. P. 34(b)(2)(E)(i); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) (responding party within its rights to choose to make documents available for inspection and copying by the inquiring party).
3. Fed. R. Civ. P. 34(b)(2)(E)(i); Fed. R. Civ. P. 34(b)(2)(B); Fed. R. Civ. P. 34(a)(1). Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment ("Rule 34(b)(2)(B) is further amended to reflect the common practice of producing copies of documents or electronically stored information rather than simply permitting inspection").
4. See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1777 (TTAB 1998).
5. Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008) (most efficient means of making initial disclosures of documents and the option the Board encourages parties to use is to actually exchange copies of disclosed documents rather than merely identifying location). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69961 (October 7, 2016) ("The Board encourages electronic production wherever possible . . . .").
6. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959, 69961 (October 7, 2016); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 19296, 19297 (to be codified at 37 C.F.R. pt. 2 (proposed April 4, 2016)) (methods of service of discovery requests and responses and document production are to be discussed during discovery conference; "the proposed rules nonetheless allow for parties to stipulate otherwise [than email service for discovery], to accommodate other methods of communication that may promote convenience and expediency (for example, a file hosting service that provides cloud storage, delivery of a USB drive, etc.")); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 and 42252 (August 1, 2007); 37 C.F.R. § 2.120(a)(2); Fed. R. Civ. P. 26(f).
7. Fed. R. Civ. P. 34(b)(2)(E)(ii). See Fed. R. Civ. P. 34 Committee Notes on Rules – 2006 Amendment. Cf. Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908 (TTAB 2011) (where the parties only agreed as to form of production, not as to other aspects such as a protocol for identifying and segregating potentially responsive ESI, applicant cannot insist that opposer start its ESI search and production over).
8. Fed. R. Civ. P. 34 Committee Notes on Rules – 2006 Amendment.
9. Fed. R. Civ. P. 34 Committee Notes on Rules – 2006 Amendment.
10. Fed. R. Civ. P. 34(b)(2)(E)(iii).
11. See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) (at the responding party’s expense as a discovery sanction); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1778 (TTAB 1998) (at responding party’s expense, as a discovery sanction); Unicut Corp. v. Unicut, Inc., 220 USPQ 1013 (TTAB 1983) (at the requesting party’s expense).