402    Scope of Discovery

402.01    In General

Fed. R. Civ. P. 26(b)(1) Scope in General. Unless otherwise limited by court order, the scope of discovery is as follows: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable.

Fed. R. Civ. P. 26(g) Signing Disclosures and Discovery Requests, Responses, and Objections.

  • (1) Signature Required; Effect of Signature. Every disclosure under Rule 26(a)(1) or (a)(3) and every discovery request, response, or objection must be signed by at least one attorney of record in the attorney’s own name — or by the party personally, if unrepresented — and must state the signer’s address, e-mail address, and telephone number. By signing, an attorney or party certifies that to the best of the person’s knowledge, information, and belief formed after a reasonable inquiry:
    • (A) with respect to a disclosure, it is complete and correct as of the time it is made; and
    • (B) with respect to a discovery request, response, or objection, it is:
      • (i) consistent with these rules and warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law, or for establishing new law;
      • (ii) not interposed for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation; and
      • (iii) neither unreasonable nor unduly burdensome or expensive, considering the needs of the case, prior discovery in the case, the amount in controversy, and the importance of the issues at stake in the action.
  • (2) Failure to Sign. Other parties have no duty to act on an unsigned disclosure, request, response, or objection until it is signed, and the court must strike it unless a signature is promptly supplied after the omission is called to the attorney’s or party’s attention.

37 C.F.R. § 2.120(a)(1)  . . . The provisions of Rule 26 of the Federal Rules of Civil Procedure relating to . . . the scope, proportionality, timing and sequence of discovery, protective orders, signing of disclosures and discovery responses, and supplementation of disclosures and discovery responses, are applicable to Board proceedings in modified form . . . .

The general scope of discovery that may be obtained in inter partes proceedings before the Board is governed by Fed. R. Civ. P. 26(b)(1). [ Note 1.]

A party may take discovery as to matters that are relevant to its claims and defenses (i.e., those specifically raised in the pleadings), [ Note 2.] and such discovery may serve as the basis for an additional claim, defense, or counterclaim. [ Note 3.] Parties may not engage in "fishing expeditions" and must act reasonably in framing discovery requests. [ Note 4.] The parties are expected to take into account the principles of proportionality with regard to discovery. [ Note 5.] The scope of discovery in Board proceedings is generally narrower than in court proceedings, especially those involving infringement and/or where both parties have made extensive use of the marks. [ Note 6.] The guidelines set forth in Fed. R. Civ. P. 26(b)(1) also apply to the discovery of information stored in digital or electronic form. [ Note 7.] A party may not, by limiting its own discovery and/or presentation of evidence on the case, thereby restrict another party’s discovery in any way. [ Note 8.] However, parties are free to discuss agreed limits on discovery as a means of reducing the time and cost associated with discovery. [ Note 9.]

Each party has a duty to make a good faith effort to satisfy the discovery needs of its adversary and to seek only such discovery as is proper and relevant to the specific issues involved in the proceeding. [ Note 10.]

In addition, because the signature of a party or its attorney to a request for discovery constitutes, under the provisions of Fed. R. Civ. P. 26(g), a certification by the party or its attorney that, inter alia, the request is warranted, consistent with the Federal Rules of Civil Procedure, and not unreasonable or unduly burdensome, a party ordinarily will not be heard to contend that a request for discovery is proper when propounded by the party itself but improper when propounded by its adversary. [ Note 11.] A contention of this nature will be entertained only if it is supported by a persuasive showing of reasons why the discovery request is proper when propounded by one party but improper when propounded by another. [ Note 12.] For a further discussion regarding discovery guidelines, see TBMP § 408.01 and TBMP § 414.

For a discussion of the scope of required disclosures intended to obviate the need for some basic discovery, see TBMP § 401.

NOTES:

 1.   37 C.F.R. § 2.120(a)(1) See FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999) ("scope of discovery in a Board proceeding is governed by Fed. R. Civ. P. 26(b)(1)").

 2.   See Mack Trucks, Inc. v. Monroe Auto Equipment Co., 181 USPQ 286, 287 (TTAB 1974) (opposer must answer interrogatories concerning allegations in notice of opposition). See also The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2153, (TTAB 2013) (scope of permissible discovery would have been proportionately narrower if opposer had pleaded only the most relevant marks and clearly and specifically identified the goods and services relevant to this proceeding); Fed. R. Civ. P. 26(b)(1) Committee Notes on Rules – 2015 Amendment ("Proportional discovery relevant to any party’s claim or defense suffices, given a proper understanding of what is relevant to a claim or defense. The distinction between matter relevant to a claim or defense and matter relevant to the subject matter was introduced in 2000. The 2000 Note offered three examples of information that, suitably focused, would be relevant to the parties’ claims or defenses.").

 3.   See J. B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (information sought had a bearing on issues involved in proceeding but could also be a basis for providing information concerning possible abandonment, that, if revealed, may provide basis for counterclaim); Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171 (TTAB 1975) (the mere taking of discovery on matters concerning the validity of a pleaded registration, under any circumstances, cannot be construed as a collateral attack on the registration); Fed. R. Civ. P. 26(b)(1) Committee Notes on Rules – 2015 Amendment ("Discovery that is relevant to the parties’ claims or defenses may also support amendment of the pleadings to add a new claim or defense that affects the scope of discovery."). See also The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154, 2154 n.5 (TTAB 2013) (opposer’s unpleaded registrations are beyond the scope of discovery; party is free to conduct own investigation to determine whether a permissive counterclaim is warranted but should avoid further complicating the case by conducting the investigation through discovery).

 4.   Fed. R. Civ. P. 26(b). See Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987) (parties should seek only discovery which is proper and relevant to the specific issues involved in the case); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999) (". . . the right to discovery is not unlimited. Both the Trademark Rules and the Federal Rules of Civil Procedure grant the Board discretion to manage the discovery process."); Dow Corning Corp. v. The Doric Corp., 183 USPQ 377, 378 (TTAB 1974) ("tremendous and prolonged discovery" which lacked specificity and was "too comprehensive in scope" not warranted).

 5.   37 C.F.R. § 2.120(a)(1). See, e.g., Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1386 (TTAB 2016) (Board expects parties to take into account the principles of proportionality with regard to discovery); Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (Board applied proportionality principle to interrogatories, document requests and requests for admission); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2153 (TTAB 2013) (discussing principles of proportionality with respect to requests for admissions); Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908-10 (TTAB 2011) (Board applied proportionality principles to electronically-stored information). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951, 69960 (October 7, 2016).

 6.   Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1907 (TTAB 2011).

 7.   See 37 C.F.R. § 2.120(e); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016) ("To further reflect the Federal Rules of Civil Procedure, the [trademark] rules explicitly include references to electronically stored information . . . as subject matter for discovery.").

 8.   See Crane Co. v. Shimano Industrial Co., 184 USPQ 691, 691 (TTAB 1975) (scope of discovery limited only by restrictions in Fed. R. Civ. P. 26).

 9.   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."); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016).

 10.   Fed. R. Civ. P. 26(g). See Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1387 (TTAB 2016) (taking into account the grounds for opposition and proportionality, the Board found discovery requests tailored to the claims and framed to seek information that is clearly relevant); Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267-68 (TTAB 2015) (plaintiff’s discovery requests were irrelevant and improper because they went beyond what was necessary to prove the claims before the Board and were not appropriately tailored to elicit discoverable information); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013) (parties are entitled to seek discovery as they may deem necessary to help them prepare for trial, but it is not the practice of the Board to permit unlimited discovery to the point of harassment and oppressiveness); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987) ("each party and its attorney has a duty not only to make a good faith effort to satisfy the discovery needs of its opponent but also to make a good faith effort to seek only such discovery as is proper and relevant to the specific issues involved in the case."); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986) (same); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (same). Cf. Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908 (TTAB 2011) (opposer’s failure "to conduct an attorney-supervised ESI retrieval, research and review" does not necessarily mean the discovery efforts were inadequate under the circumstances).

 11.   See Fed. R. Civ. P. 26(g). See also Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) (petitioner estopped to challenge respondent’s interrogatories as excessive in number having served virtually identical set on respondent); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986) (parties who served identical discovery requests on each other in effect waived their right to object and must answer each request completely). See also Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (applicant, having served 114 interrogatories, is estopped from challenging opposer’s 122 interrogatories as excessive); Tektronix, Inc. v. Tek Associates, Inc., 183 USPQ 623, 623 (TTAB 1974) (each party was estopped from objecting to interrogatory requests served upon them by the opposing party which were essentially the same requests); Gastown Inc. of Delaware v. Gas City, Ltd., 180 USPQ 477, 477 (TTAB 1974) (opposer must answer applicant’s interrogatories which are similar to those which were served by opposer upon applicant). Cf. Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) (no estoppel where opposer served a different, albeit also excessive, set of interrogatories on applicant); Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990) (opposer not estopped from arguing that applicant’s interrogatories are excessive even though opposer also exceeded the limit because applicant waived its rights to complain because it did not file a motion for a protective order).

 12.   See Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) (Board was persuaded that certain interrogatories would be burdensome).

402.02    Limitations on Right to Discovery and on Electronically Stored Information

Fed. R. Civ. P. 26(b)(2)(A) When Permitted. By order, the court may alter the limits in these rules on the number of depositions and interrogatories or on the length of depositions under Rule 30. By order or local rule, the court may also limit the number of requests under Rule 36.

Fed. R. Civ. P. 26(b)(2)(B) Specific Limitations on Electronically Stored Information. A party need not provide discovery of electronically stored information from sources that the party identifies as not reasonably accessible because of undue burden or cost. On motion to compel discovery or for a protective order, the party from whom discovery is sought must show that the information is not reasonably accessible because of undue burden or cost. If that showing is made, the court may nonetheless order discovery from such sources if the requesting party shows good cause, considering the limitations of Rule 26(b)(2)(C). The court may specify conditions for the discovery.

The right to discovery is not unlimited. Even if the discovery sought by a party is relevant, it will be limited, or not permitted, where, inter alia, it is unreasonably cumulative or duplicative; or is unduly burdensome or obtainable from some other source that is more convenient, less burdensome, or less expensive; or "where harm to the person from whom discovery is sought outweighs the need of the person seeking discovery of the information." [ Note 1.]

For example, in those cases where complete compliance with a particular request for discovery would be unduly burdensome, the Board may permit the responding party to comply by providing a representative sampling of the information sought, or some other reduced amount of information which is nevertheless sufficient to meet the propounding party’s discovery needs. [ Note 2.]

In addition, a party will not be permitted to obtain, through a motion to compel, discovery broader in scope than that actually sought in the discovery request(s) to which the motion pertains. [ Note 3.]

Discovery of confidential commercial information is subject to the terms of the Board’s standard protective order, or an appropriate alternative protective agreement or order. [ Note 4.] For a further discussion of protective orders, see TBMP § 412.

Similarly, information protected by the attorney-client privilege is not discoverable unless the privilege has been waived [ Note 5.]; and documents and things prepared in anticipation of litigation or for trial by or for another party, or by or for that other party’s representative, are discoverable only upon a showing that the party seeking discovery has substantial need of the materials in the preparation of its case and that it is unable, without undue hardship, to obtain the substantial equivalent of the materials by other means. [ Note 6.]

Fed. R. Civ. P. 26(b)(2)(B) also provides for limitations regarding the discovery of electronically stored information (ESI). Specifically, a "party need not provide discovery of [ESI] from sources that the party identifies as not reasonably accessible because of undue burden or cost." [ Note 7.] Pursuant to the rule, when an adverse party seeks to compel the production of such material, the party resisting discovery must show that the material sought is "not reasonably accessible because of undue burden or cost." [ Note 8.] If that showing is made, the burden shifts to the requesting party to show good cause for the production of the not-reasonably-accessible electronically stored information. [ Note 9.] In deciding whether the requisite showing has been made, the Board will consider, as it would in any discovery dispute, whether (i) "the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive;" (ii) "the party seeking discovery has had ample opportunity to obtain the information by discovery in the action;" or (iii) "proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit." [ Note 10.]

With respect to the adequacy of ESI production, there is an increasing focus on the question of proportionality and whether extensive ESI discovery is necessary and justified. [ Note 11.] In view of the Board’s limited jurisdiction, the narrowness of the issues to be decided by the Board, and the concerns existing with respect to excessive e-discovery, the burden and expense of e-discovery will weigh heavily against requiring production in most cases. Parties are to be precise in their requests and should have as their first consideration how to significantly limit the expense of such production. [ Note 12.]

NOTES:

 1.   See Micro Motion Inc. v. Kane Steel Co., 894 F.2d 1318, 13 USPQ2d 1696, 1699 (Fed. Cir. 1990); Fed. R. Civ. P. 26(b)(2). See also Haworth Inc. v. Herman Miller Inc., 998 F.2d 975, 27 USPQ2d 1469, 1472 (Fed. Cir. 1993) (must first seek discovery from party before burdening non-party); Katz v. Batavia Marine & Sporting Supplies Inc., 984 F.2d 422, 25 USPQ2d 1547, 1549 (Fed. Cir. 1993) (in response to non-party’s prima facie showing that discovery was burdensome, party did not meet burden of showing need for information sought); Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (large number of discovery requests was unduly burdensome, harassing, and oppressive); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999) (motion for protective order to prohibit deposition of "very high-level official of a large corporation" granted).

 2.   See, e.g., Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir. 2012) (Board did not abuse its discretion by refusing to strike plaintiff’s evidence where defendant failed to follow up on plaintiff’s offer to produce the evidence at a mutually agreeable time and place and in view of defendant’s failure to file a motion to compel); Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1910 (TTAB 2011) (representative samples of documents, including ESI, required for certain requests); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (where applicant gave partial answers and otherwise objected to requests as cumulative or burdensome but opposer did not file motion to compel, modify discovery requests, or otherwise pursue material, objection to evidence introduced by applicant at trial was overruled), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994);Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720 (TTAB 1987) (production of representative sample was not appropriate where full production, that is, a total of eleven documents, was clearly not burdensome); Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147, 148 (TTAB 1985) (representative sample of invoices from identified calendar quarters is sufficient where there are so many items as to make respondent’s task unduly burdensome); J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (permitted to identify reasonable number of corporate officers most knowledgeable); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (burden of calculating sales and advertising figures in round numbers for six categories of goods for each year since 1936 mitigated by limiting sales figures to five most recent years); Van Dyk Research Corp. v. Xerox Corp., 181 USPQ 346, 348 (TTAB 1974) (applicant allowed to produce ten representative samples of documents pertaining to the marketing of each copy machine or as alternative, may allow opposer’s representative to visit sites where relevant documents are kept); Mack Trucks, Inc. v. Monroe Auto Equipment Co., 181 USPQ 286, 288 (TTAB 1974) (allowed to furnish representative samples of advertisements).

 3.   Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167, 170 (TTAB 1980).

 4.   37 C.F.R. § 2.116(g)  (Board’s standard protective order automatically applies to all cases absent Board approval of a substitute); Fed. R. Civ. P. 26(c)(1)(G); Intex Recreation Corp. v. Coleman Co., 117 USPQ2d 1799, 1801 (TTAB 2016) (Board standard protective order is automatically in place, and party should have designated confidential documents under the appropriate tier of confidentiality or sought modification of the order); Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1862 (TTAB 2001) (protective agreement would adequately protect against disclosure of trade secret manufacturing and technical information); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (unless issue is abandonment or first use, party need not reveal names of its customers, including dealers, it being sufficient to identify classes of customers and types of businesses); Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167, 170 (TTAB 1980) (need for names of customers, as in case where issue is abandonment, outweighs justification for protecting customer confidentiality); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (protective order must contain provision that customer names will be revealed only to applicant’s attorneys). See also Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147, 148 (TTAB 1985) (protective orders available for confidential material); Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583 (TTAB 1975) ("While it is the Board’s policy not to require the disclosure of customer and mailing lists, a party may be asked to reveal the particular classes of customers or the types of businesses in which they are engaged."); J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (as a general rule, party need not furnish names of actual customers); Ortho Pharmaceutical Corp. v. Schattner, 184 USPQ 556, 557-58 (TTAB 1975) (discussing whether certain interrogatories seek proprietary or confidential matter); Miller & Fink Corp. v. Servicemaster Hospital Corp., 184 USPQ 495, 495-96 (TTAB 1975) (opposer need only reveal the classes of people to whom such goods sold under the mark are distributed and not the actual customer names); Cool-Ray, Inc. v. Eye Care, Inc., 183 USPQ 618, 621 (TTAB 1974) (names of applicant’s customers are confidential information and the need to protect customers from harm such as harassment outweighs disclosure).

 5.   Fed. R. Civ. P. 26(b)(5). See, e.g., In re Seagate Technology LLC, 497 F.3d 1360, 83 USPQ2d 1865, 1873 (Fed. Cir. 2007) (attorney-client privilege provides absolute protection from disclosure unless waived), abrogated on the other grounds by Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923, 195 L.Ed.2d 278 (2016; Genentech Inc. v. U.S. International Trade Commission, 122 F.3d 1409, 43 USPQ2d 1722, 1728 (Fed. Cir. 1997) ("Generally disclosure of confidential communications or attorney work product to a third party, such as an adversary in litigation, constitutes a waiver of privilege as to those items."); Red Wing Co. v. J. M. Smucker Co., 59 USPQ2d 1861, 1864 n.5 (TTAB 2001) (party making claim of privilege must do so expressly and otherwise describe the nature of the withheld information as provided in Fed. R. Civ. P. 26(b)(5)). See also Fed. R. Evid. 502 and Explanatory Note on Evidence Rule 502 (revised November 28, 2007) regarding attorney-client privilege and limitations on waiver.

 6.   Fed. R. Civ. P. 26(b)(3) and 26(b)(5). See, e.g., In re Seagate Technology LLC, 497 F.3d 1360, 83 USPQ2d 1865, 1874 (Fed. Cir. 2007) (work product protection is qualified and absent waiver may be overcome by a showing of need and undue hardship but a higher burden must be met to obtain that pertaining to mental processes), abrogated on other grounds by Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923, 195 L.Ed.2d 278 (2016); Goodyear Tire & Rubber Co. v. Tyrco Industries, 186 USPQ 207, 208 (TTAB 1975) (the fact that an attorney may have given an opinion to a client is not in and of itself privileged information; only the substance of the communication is considered privileged); Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171 (TTAB 1975) (opposer must provide discovery of matters, not privileged, relevant to the subject matter of the Board proceeding). See also Miles Laboratories, Inc. v. Instrumentation Laboratory, Inc., 185 USPQ 432, 434 (TTAB 1975) ("search reports, per se do not fall within the attorney-client privilege . . . [h]owever any comments or opinions provided by opposer’s attorney in relation thereto are privileged"); Amerace Corp. v. USM Corp., 183 USPQ 506, 507 (TTAB 1974) (trademark search report not privileged; comments or opinions of attorney relating thereto fall within attorney-client privilege); Goodyear Tire & Rubber Co. v. Uniroyal, Inc., 183 USPQ 372, 374-75 (TTAB 1974) (discussing attorney-client privilege and work product rule). See also Fed. R. Evid. 502 and Explanatory Note on Evidence Rule 502 (revised November 28, 2007) regarding work product and limitations on waiver.

 7.   Fed. R. Civ. P. 26(b)(2)(B).

 8.   Fed. R. Civ. P. 26(b)(2)(B). See, e.g., Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1910 (TTAB 2011) (opposer established that all of the specific materials applicant sought in response to specified requests were not reasonably accessible because of undue burden or costs).

 9.   Fed. R. Civ. P. 26(b)(2)(B). See, e.g., Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1910 (TTAB 2011) (applicant established that some of the requested documents should be produced before taking depositions).

 10.   Fed. R. Civ. P. 26(b)(1) and 26(b)(2)(C).

 11.   Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908 (TTAB 2011). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016) ("The Board continues to view the universe of ESI within the context of its narrower scope of jurisdiction, as compared to that of the federal district courts. The burden and expense of e-discovery will weigh heavily in any consideration.").

 12.   Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1909 (TTAB 2011) (opposer not required to start its document production over where parties did not agree on ESI discovery protocol, applicant failed to show opposer’s methods were insufficient, and given the nature of the requests and issues involved).