409    Filing Discovery Requests, Discovery Responses, and Disclosures With Board

37 C.F.R. § 2.120(k)  Use of discovery deposition, answer to interrogatory, admission, or written disclosure.

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37 C.F.R. § 2.120(k)(6)  Paragraph (k) of this section will not be interpreted to preclude reading or use of written disclosures or documents, a discovery deposition, or answer to an interrogatory, or admission as part of the examination or cross-examination of any witness during the testimony period of any party.

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37 C.F.R. § 2.120(k)(8)  Written disclosures or disclosed documents, requests for discovery, responses thereto, and materials or depositions obtained through the discovery process should not be filed with the Board except when submitted with a motion relating to disclosure or discovery, or in support of or response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party’s testimony period.

Discovery requests, discovery responses, materials or depositions obtained through the discovery process, as well as initial and expert disclosures should not be filed with the Board except when submitted:

  • (1) with a motion relating to discovery (e.g., motion to compel, motion to determine the sufficiency of an answer or objection to a request for admission, motion for leave to serve additional interrogatories, motion to challenge the sufficiency of initial or expert disclosures);
  • (2) in support of or in response to a motion for summary judgment;
  • (3) under a notice of reliance during a party’s testimony period, to the extent that the discovery response or disclosure may properly be submitted by notice of reliance [ Note 1.]; or
  • (4) as exhibits to a testimony deposition.

While a party that has disclosed to an adverse party or parties that it will or may use expert testimony should not file with the Board copies of the documents and information being disclosed to the adverse party or parties, it should file with the Board a notice that it has made such a disclosure. [ Note 2.] "Any party disclosing plans to use an expert must notify the Board that it has made the required disclosure. The Board may then suspend proceedings to allow for discovery limited to experts. The suspension order may anticipate and also provide for discovery regarding any expert that may subsequently be retained for rebuttal purposes." [ Note 3.]

Pretrial disclosures, see 37 C.F.R. § 2.121(e), are not discovery period disclosures, as are initial disclosures and expert disclosures. However, like the latter, neither pretrial disclosures nor notification of service of pretrial disclosures need be filed with the Board, unless a motion to strike evidence or testimony of a witness has been filed. [ Note 4.] For further information on pretrial disclosures, see TBMP § 702.01.

In addition, when a party objects to proffered evidence or files a motion to strike the testimony of a witness on the ground that the name of the witness or the identification of documents or other evidence should have been, but was not, provided in response to a request for discovery or in disclosures (whether initial, expert or pretrial), a copy of the pertinent discovery request(s) and response(s) or disclosures should be submitted in support of the objection or motion to strike.

For more information regarding the filing of discovery material, see the cases cited in the note below. [ Note 5.]

NOTES:

 1.   Hiraga v. Arena, 90 USPQ2d 1102, 1105 (TTAB 2009) (ordinarily, an answer to an interrogatory may be submitted and made part of the record by only the inquiring party, i.e., a party generally may not rely on his own responses to discovery requests under a notice of reliance; the only produced documents that may be submitted by a notice of reliance under 37 C.F.R. § 2.122(e) are printed publications and official records); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008) (the categories of materials which may be submitted under a notice of reliance are limited, consisting only of an adverse party’s discovery deposition, answer to an interrogatory, or admission to a request for admission, 37 C.F.R. § 2.120(j)(3)(i), redesignated by amendment to 37 C.F.R. § 2.120(k)(3)(i); printed publications and official records, 37 C.F.R. § 2.122(e)); Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 n.3 (TTAB 2007) (written response to document requests that no such documents exist can be made of record by notice of reliance); ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1353 n.6 (TTAB 2007) (opposer filed a notice of reliance, pursuant to 37 C.F.R. § 2.120(j)(3)(i), redesignated by amendment to 37 C.F.R. § 2.120(k)(3)(i), on the request for admission, the exhibits thereto, and its adversary’s response by which adversary admitted that documents produced in response to discovery requests were authentic for purposes of admission into evidence during testimony period of opposition proceeding); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103-04 (TTAB 2007) (because respondent availed itself under Fed. R. Civ. P. 33(d) of the option to provide documents in response to petitioner’s interrogatories and admitted via a request for admission that the documents it produced were true and correct copies of authentic documents, the documents could be introduced by way of notice of reliance); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1503 (TTAB 2007)(applicant’s catalog, produced in lieu of an interrogatory response, is therefore permissibly made of record by opposer’s notice of reliance); and Genesco Inc. v. Martz, 66 USPQ2d 1260, 1266 n.15 (TTAB 2003) (if documents are offered in response to an interrogatory, they are admissible under 37 C.F.R. § 2.120(j)(3)(i)), redesignated by amendment to 37 C.F.R. § 2.120(k)(3)(i)). Please Note: Effective January 14, 2017, 37 C.F.R. § 2.120(j) has been redesignated by amendment to 37 C.F.R. § 2.120(k).

 2.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007); 37 C.F.R. § 2.120(a)(2). But see General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (37 C.F.R. § 2.120(a)(2) does not mandate that a disclosing party inform the Board that an expert disclosure has been made).

 3.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See also General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (the purpose of informing the Board of such a disclosure is to facilitate discovery, including a suspension of proceedings, but notification to the Board may not be necessary if expert-related discovery can be concluded by the close of discovery).

 4.   See Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 (TTAB 2011) (no reason to file routinely pretrial disclosures with the Board).

 5.   See 37 C.F.R. § 2.120(k)(6)  and 37 C.F.R. § 2.120(k)(8). See also Turdin v. Trilobite, Ltd., 109 USPQ2d 1473 (TTAB 2014) (rebuttal disclosures are not a means for filing evidence); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1428 (TTAB 2013) (supplemental discovery responses, like all discovery, should not be filed with the Board except under circumstances specified in 37 C.F.R. § 2.120(j)(8), redesignated by amendment to 37 C.F.R. § 2.120(k)(8)); Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1542 n.2 (TTAB 2008) (opposer reminded that initial and expert disclosures are not to be filed with the Board, except under circumstances specified in 37 C.F.R. § 2.120(j)(8), redesignated by amendment to 37 C.F.R. § 2.120(k)(8)); Chicago Corp. v. North American Chicago Corp., 16 USPQ2d 1479, 1480 (TTAB 1990) (regarding combined sets of interrogatories which are subject to a motion relating to discovery); Kellogg Co. v. Pack’Em Enterprises, Inc., 14 USPQ2d 1545, 1549 n.9 (TTAB 1990) (to be considered on summary judgment, responses to discovery requests must be submitted with motion or responsive brief), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 5 USPQ2d 1067, 1070 (TTAB 1987) (respondent again reminded that discovery materials are not to be filed with the Board except under circumstances specified in 37 C.F.R. § 2.120(j)(8), redesignated by amendment to 37 C.F.R. § 2.120(k)(8)); Fischer GmbH v. Molnar & Co., 203 USPQ 861, 865 (TTAB 1979) (filing of a discovery deposition not required or desired in the absence of a notice of reliance). Please Note: Effective January 14, 2017, 37 C.F.R. § 2.120(j) has been redesignated by amendment to 37 C.F.R. § 2.120(k).