526 Motion for a Protective Order
37 C.F.R. § 2.120(g) Motion for a protective order. Upon motion by a party obligated to make initial disclosures or expert testimony disclosure or from whom discovery is sought, and for good cause, the Trademark Trial and Appeal Board may make any order which justice requires to protect a party from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the types of orders provided by clauses (A) through (H), inclusive, of Rule 26(c)(1) of the Federal Rules of Civil Procedure. If the motion for a protective order is denied in whole or in part, the Board may, on such conditions (other than an award of expenses to the party prevailing on the motion) as are just, order that any party comply with disclosure obligations or provide or permit discovery.
In inter partes proceedings before the Board, motions for a protective order are governed by 37 C.F.R. § 2.120(g).
It is generally inappropriate for a party to respond to a request for discovery by filing a motion attacking it, such as a motion to strike, or a motion for a protective order. Rather, the party ordinarily should respond by providing the information sought in those portions of the request that it believes to be proper, and stating its objections to those which it believes to be improper. [ Note 1.] See TBMP § 410 (Asserting Objections to Requests for Discovery; Motions Attacking Requests for Discovery) and TBMP § 412.06 (Protective Orders Limiting Discovery).
Moreover, if a party upon which interrogatories, requests for production, or request for admission have been served believes that the number of interrogatories, requests for production, or requests for admission served exceeds the limitation specified in 37 C.F.R. § 2.120(d),37 C.F.R. § 2.120(e), or 37 C.F.R. § 2.120(i), and is not willing to waive this basis for objection, the party must, within the time for (and instead of) serving answers and specific objections to the interrogatories, requests for production, or requests for admission, or a motion for a protective order, serve a general objection on the ground of their excessive number, leaving the inquiring party with the burden of filing a motion to compel if it believes that the objection is not well taken. For a discussion regarding excessive discovery requests, see TBMP § 405.03(e), TBMP § 406.05(e) and TBMP § 407.05(e). Cf. TBMP § 523.02. [ Note 2.]
Nevertheless, there are certain situations (such as, for example, when a request for discovery constitutes clear harassment, or when a party has not provided its initial disclosures, or when a defendant upon which a request for discovery has been served is not and was not, at the time of the commencement of the proceeding, the real party in interest) in which a party may properly respond to a request for discovery by filing a motion for a protective order that the discovery not be had, or be had only on specified terms and conditions. [ Note 3.]
Except in situations such as those described above, a motion for a protective order ordinarily should be filed in a Board proceeding only in response to a motion to compel where, for example, matter sought to be discovered assertedly constitutes trade secret or confidential information, or cannot be provided without undue burden or expense. [ Note 4.]
Under appropriate circumstances, the Board has the discretion to order a deposition not be had or to limit a deposition. [ Note 5.] Please Note: The Board does not have jurisdiction to grant protective relief for depositions noticed under subpoena.
Please Note: There is a distinction between a motion for a protective order to address over-reaching discovery, and a motion for a protective order relating to facilitating the exchange of discovery in connection with the Board’s standard protective order, which provides tiers of protection to confidential information.
For a detailed discussion concerning motions for protective orders and the Board’s standard protective order, see TBMP § 412.
NOTES:
1. See Luemme Inc. v. D. B. Plus Inc., 53 USPQ2d 1758, 1761 (TTAB 1999).
2. See 37 C.F.R. § 2.120(e).
3. See, e.g., 37 C.F.R. § 2.120(g); Fed. R. Civ. P. 26(c); Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (protective order granted against 707 requests for admission, 247 document requests, and 26 enumerated interrogatories); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013) (protective order granted as to 94 requests for admissions which were either duplicative or sought admissions regarding unpleaded registrations); Weatherford/Lamb Inc. v. C&J Energy Services, Inc., 96 USPQ2d 1834, 1836 n.3 (TTAB 2010) (protective order granted that petitioner need only produce limited or representative samples of responsive documents); Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1613 (TTAB 1991) (protective order granted as to discovery relating to foreign activities); C.H. Stuart Inc. v. S.S. Sarna, Inc., 212 USPQ 386, 387 (TTAB 1980) (protective order granted as to discovery not tailored to issues in Board proceeding, including those seeking information regarding whether officers of applicant had been convicted of a crime or subject to a proceeding before the U.S. government); Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976) (protective order granted where obligation to respond to discovery requests rested with assignee).
4. See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1674-77 (TTAB 1988).
For other examples of cases involving a motion for a protective order relating to discovery, see generally Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1611-12 (TTAB 1991) (request for protective order that discovery be governed by the Hague Convention) and Crown Wallcovering Corp. v. Wall Paper Manufacturers Ltd., 188 USPQ 141, 144 (TTAB 1975) (motion for protective order that discovery not be taken pending Board’s determination of motion to dismiss).
5. See, e.g., Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1568 (TTAB 2014) (protective order granted with regard to taking noticed deposition of expert after redesignation by party as non-testifying expert); Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1673-77 (TTAB 2004) (protective order granted to prevent the taking of additional depositions as to three of six employees); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1764 (TTAB 1999) (protective order against taking deposition of high level executive granted); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990) (granting protective relief in connection with a deposition on written questions in that party is free to object and refuse to answer those questions that it believes are not relevant; denying protective relief to the extent that the Board will review questions at issue to determine if they are relevant to the proceeding).