406.04 Responses to Requests for Production
Fed. R. Civ. P. 34(b)(2)(A) Time to Respond. The party to whom the request is directed must respond in writing within 30 days after being served or — if the request was delivered under Rule 26(d)(2) — within 30 days after the parties’ first Rule 26(f) conference. A shorter or longer time may be stipulated to under Rule 29 or be ordered by the court.
- (B) Responding to Each Item. For each item or category, the response must either state that inspection and related activities will be permitted as requested or state with specificity the grounds for objecting to the request, including the reasons. The responding party may state that it will produce copies of documents or of electronically stored information instead of permitting inspection. The production must then be completed no later than the time for inspection specified in the request or another reasonable time specified in the response.
- (C) Objections. An objection must state whether any responsive materials are being withheld on the basis of that objection. An objection to part of a request must specify the part and permit inspection of the rest.
- (D) Responding to a Request for Production of Electronically Stored Information. The response may state an objection to a requested form for producing electronically stored information. If the responding party objects to a requested form — or if no form was specified in the request — the party must state the form or forms it intends to use.
- (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.
Responses to requests for production should comply with the provisions of Fed. R. Civ. P. 34(b). Documents produced in electronically stored form not kept in the ordinary course of business must be organized and labeled to correspond to the categories in each request, and if the form of production is not specified, produced in a form or form in which it is ordinarily maintained, or in a form or forms that are reasonably usable. [ Note 1.] The Board encourages electronic production whenever possible, and if email is not practical due to the volume of documents, the Board encourages the parties to agree on an effective alternative method of service (e.g., a file hosting service that provides cloud storage, or delivery of a USB drive). [ Note 2.]
NOTES:
1. Fed. R. Civ. P. 34(b)(2)(E). See, e.g., Amazon Technologies, Inc. v. Wax, 95 USPQ2d 1865, 1869 (TTAB 2010) (for documents produced on DVD, opposer ordered to serve a complete index to all 31,144 pages of produced documents, cross-referencing the categories of documents and the discovery requests to which they are responsive, with no category in the index to exceed 300 pages).
2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959, 69961 (October 7, 2016).
406.04(a) Time for Service of Responses
Fed. R. Civ. P. 34(b)(2)(A) Time to Respond. The party to whom the request is directed must respond in writing within 30 days after being served.
37 C.F.R. § 2.120(a)(3) . . . Responses to . . . requests for production of documents and things . . . must be served within thirty days from the date of service of such discovery requests. * * * *
Responses to requests for production must be served within 30 days after the date of service of the requests. [ Note 1.] TBMP § 403.03. The time to respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery. [ Note 2.] The resetting of a party’s time to respond to an outstanding request for discovery will not result in the automatic rescheduling of the discovery and/or testimony periods; such dates will be rescheduled only upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. [ Note 3.]TBMP § 403.03.
Service of responses to requests for production must be made by email, unless otherwise stipulated, or if the serving party attempted service by email but service could not be made due to technical problems or extraordinary circumstances, by the manner described in 37 C.F.R. § 2.119(b)(1) - 37 C.F.R. § 2.119(b)(4); however, if a party is not domiciled in the United States or represented by an attorney or authorized representative in the United States, then no party to the proceeding is eligible to use postal mail as a manner of service. [ Note 4.] TBMP § 113.04. Additionally, even if requests for production are served on a party by postal service or overnight courier (either by agreement or because email service was attempted but could not be made), 37 C.F.R. § 2.119(c) has been amended to remove the previous provision adding five days to the proscribed period for action after the date of service so that no additional time for service of discovery responses is allowed for responding to the requests for any manner of service. [ Note 5.] TBMP § 403.03.
A party which fails to respond to requests for production during the time allowed therefor, and which is unable to show that its failure was the result of excusable neglect, may be found, on motion to compel filed by the propounding party, to have forfeited its right to object to the requests on their merits. [ Note 6.] TBMP § 403.03 and TBMP § 405.04(a).
NOTES:
1. Fed. R. Civ. P. 34(b)(2)(A); 37 C.F.R. § 2.120(a)(3).
4. 37 C.F.R. § 2.119(b); 37 C.F.R. § 2.119(d). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959 (October 7, 2016).
5. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).
6. See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) (applicant, having waived its right to object to discovery requests on their merits was not entitled to raise objection regarding place of production of documents).
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).
406.04(c) Nature of Responses
Fed. R. Civ. P. 34(b)(2)(B) Responding to Each Item. For each item or category, the response must either state that inspection and related activities will be permitted as requested or state with specificity the grounds for objecting to the request, including the reasons. The responding party may state that it will produce copies of documents or of electronically stored information instead of permitting inspection. The production must then be completed no later than the time for inspection specified in the request or another reasonable time specified in the response.
Fed. R. Civ. P. 34(b)(2)(C) Objections. An objection must state whether any responsive materials are being withheld on the basis of that objection. An objection to part of a request must specify the part and permit inspection of the rest.
Fed. R. Civ. P. 34(b)(2)(D) Responding to a Request for Production of Electronically Stored Information. The response may state an objection to a requested form for producing electronically stored information. If the responding party objects to a requested form — or if no form was specified in the request — the party must state the form or forms it intends to use.
Fed. R. Civ. P. 37(e) Failure to Preserve Electronically Stored Information. If electronically stored information that should have been preserved in the anticipation or conduct of litigation is lost because a party failed to take reasonable steps to preserve it, and it cannot be restored or replaced through additional discovery, the court:
- (1) upon finding prejudice to another party from loss of the information, may order measures no greater than necessary to cure the prejudice; or
- (2) only upon finding that the party acted with the intent to deprive another party of the information’s use in the litigation may:
- (A) presume that the lost information was unfavorable to the party;
- (B) instruct the jury that it may or must presume the information was unfavorable to the party; or
- (C) dismiss the action or enter a default judgment.
A response to a request for production of documents and things must state, with respect to each item or category of documents or things requested to be produced, that inspection and related activities will be permitted as requested, or state with specificity the grounds for objecting to the request, including the reasons. [ Note 1.] The responding party may state that it will produce copies of documents or electronically stored information instead of permitting inspection. [ Note 2.] It is incumbent upon a responding party to respond to each request by stating whether or not responsive documents exist and, if so, whether they will be produced at a specified reasonable time for inspection or are being withheld based on a claim of privilege or a specified objection [ Note 3.] If copies are to be produced in lieu of inspection, the response must so state. [ Note 4.] If accurate, a party may respond that the requested documents are not in existence (e.g., lost or destroyed or that the documents are not within its possession, custody, or control). [ Note 5.] If objection is made to only part of an item or category, the part must be specified, and inspection must be permitted of the rest of the responsive documents or things. [ Note 6.] A party may not redact portions of responsive documents on the ground that the non-disclosed information is not relevant or responsive where the information appears in a document that contains otherwise relevant or responsive information. [ Note 7.] A party may object to a requested form of data production for electronically stored information ("ESI"). [ Note 8.] If no form for the ESI is specified in the request, the party must state the form it intends to use, and must produce the ESI in the form in which it is ordinarily maintained or in a reasonably usable form. A party that produces documents for inspection must produce them as they are kept in the usual course of business, or must organize and label them to correspond with the categories in the request. [ Note 9.] A party that produces ESI must produce the information in the form specified by the request, if no objection is made. It is contemplated that the parties will attempt to resolve such issues, i.e., the manner in which ESI will be produced, during their discovery conference. [ Note 10.] Aspects of ESI production other than form that should be discussed during the discovery conference, or when it becomes apparent that ESI will be produced, include a protocol for identifying and segregating potentially responsive ESI, who should review the ESI to determine whether the production of particular documents or information would be appropriate, and methods of searching the ESI, such as the use of "keywords," to identify documents and information responsive to the discovery requests. [ Note 11.]
A party has an obligation to take reasonable steps to preserve ESI in the anticipation or conduct of litigation. [ Note 12.] A duty to preserve electronically stored information arises not only during litigation but also extends to that period before litigation when a party reasonably should know that the evidence may be relevant to the litigation. [ Note 13.] As amended on December 1, 2015, Fed. R. Civ. P. 37(e) provides that if electronically stored information that should have been preserved in the anticipation or conduct of litigation is lost because a party failed to take reasonable steps to preserve it, and it cannot be restored or replaced through additional discovery, the court: (1) upon finding prejudice to another party from loss of the information, may order measures no greater than necessary to cure the prejudice; or (2) only upon finding that the party acted with the intent to deprive another party of the information’s use in the litigation may, among other things: presume that the lost information was unfavorable to the party or dismiss the action or enter a default judgment. For more guidelines regarding the application of remedies in the event of lost ESI, see Fed. R. Civ. P. 37(e) Committee Notes on Rules – 2015 Amendment.
A party withholding responsive documents on the basis of a claim of privilege must "(i) expressly make the claim; and (ii) describe the nature of the documents, communications, or tangible things not produced or disclosed – and do so in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the claim." [ Note 14.]
Fed. R. Civ. P. 26(b)(5) does not specify exactly how the party asserting privilege/protection must particularize its claim. The most common way is by using a privilege log, which identifies each document withheld, information regarding the nature of the privilege/protection claimed, the name of the person making/receiving the communication, the date and place of the communication, and the document’s general subject matter. [ Note 15.]
It is generally inappropriate for a party to respond to requests for production by filing a motion attacking them, such as a motion to strike, a motion to suppress, or a motion for a protective order. [ Note 16.] Rather, the party ordinarily should respond by indicating, with respect to those requests that it believes to be proper, that inspection and related activities will be permitted, and by stating reasons for objection with respect to those requests that it believes to be improper. See TBMP § 410.
For information regarding a party’s duty to supplement responses to requests for production, see TBMP § 408.03.
NOTES:
1. Fed. R. Civ. P. 34(b)(2)(B) and 34(b)(2)(C).
2. Fed. R. Civ. P. 34(b)(2)(B).
3. Fed. R. Civ. P. 34(b)(2)(B) and 34(b)(2)(C); Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment ("an objection to a Rule 34 request must state whether anything is being withheld on the basis of the objection"); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).
4. Fed. R. Civ. P. 34(b)(2)(B); Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment; No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).
5. Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1679 (TTAB 2005).
6. Fed. R. Civ. P. 34(b)(2)(C); Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment ("if the objection recognizes that some part of the request is appropriate the objection should state the scope that is not [objectionable and] ... the statement of what has been withheld can properly identify as matters ‘withheld’ anything beyond the scope of the search specified in the objection").
7. Intex Recreation Corp. v. The Coleman Co., 117 USPQ2d 1799 (TTAB 2016).
8. Fed. R. Civ. P. 34(b)(2)(D).
9. Fed. R. Civ. P. 34(b)(2)(E)(i); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1556 (TTAB 2000) (party may not simply dump large quantities of documents containing responsive as well as unresponsive documents).
10. Fed. R. Civ. P. 26(f)(3)(c). See also Fed. R. Civ. P. 34 Committee Notes on Rules – 2006 Amendment.
11. Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1905 (TTAB 2011).
12. See generally Zubulake v. UBS Warburg LLC, 220 F.R.D. 212, 216-18 (S.D.N.Y. 2003) (discussing the obligation to preserve electronically stored information).
13. Leon v. IDX Systems Corp., 464 F.3d 951, 956 (9th Cir. 2006); Silvestri v. General Motors Corp., 271 F.3d 583, 591 (4th Cir. 2001).
14. Fed. R. Civ. P. 26(b)(5)(A)(i)-(ii).
15. Fed. R. Civ. P. 26(b)(5) Notes of Advisory Committee on Rules – 1993 Amendment; see Victor Stanley, Inc. v. Creative Pipe, Inc., 250 F.R.D. 251, 264-65 (D. Md. 2008) (discussing form of privilege logs under Fed. R. Civ. P. 26(b)(5)).
16. Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016).