403.04 Extensions of Discovery Period, Time to Respond to Discovery Requests and Disclosures
37 C.F.R. § 2.120(a)(2)(iv) [Discovery] . . . Limited extensions of the discovery period may be granted upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. If a motion for an extension is denied, the discovery period may remain as originally set or as reset. * * * *
37 C.F.R. § 2.120(a)(3) . . . The time to respond [to interrogatories, requests for production of documents and things, and requests for admission] 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. 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.
37 C.F.R. § 2.121(a) [Assignment of times for taking testimony and presenting evidence] . . . The resetting of the closing date for discovery will result in the rescheduling of pretrial disclosure deadlines and testimony periods without action by any party.
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37 C.F.R. § 2.121(d) When parties stipulate to the rescheduling of a deadline for pretrial disclosures and subsequent testimony periods or to the rescheduling of the closing date for discovery and the rescheduling of subsequent deadlines for pretrial disclosures and testimony periods, a stipulation presented in the form used in a trial order, signed by the parties, or a motion in said form signed by one party and including a statement that every other party has agreed thereto, shall be submitted to the Board through ESTTA, with the relevant dates set forth and an express statement that all parties agree to the new dates.
Limited extensions of the discovery period may be granted upon stipulation of the parties approved by the Board, or on motion (pursuant to Fed. R. Civ. P. 6(b)) granted by the Board, or by order of the Board. [ Note 1.] An extension of the closing date for discovery will result in a corresponding resetting of the pretrial disclosure deadlines and testimony periods without action by any party. [ Note 2.] Also, the expert disclosure deadline must always be scheduled prior to the close of discovery. [ Note 3.] Therefore, when the parties stipulate to an extension of the closing date for discovery, or a motion for such an extension is granted, or the Board orders such an extension, the Board ordinarily will reset the deadline for expert disclosure. However, if the time for serving expert disclosures has passed and it is clear from the record that such expert disclosures have been served or the parties have made it clear that they do not intend to use experts, the Board may not reset the time for expert disclosures. A stipulation or consented motion to extend discovery, pretrial disclosure, and trial dates must be filed with the Board through ESTTA, and should be presented in the form used in a trial order with the relevant dates set forth. [ Note 4.] For information concerning stipulations to extend, see TBMP § 501.03. For information concerning motions to extend, see TBMP § 509.
Mere delay in initiating discovery does not constitute good cause for an extension of the discovery period. [ Note 5.] Thus, a party which waits until late in the discovery period to serve interrogatories, requests for production of documents and things, and/or requests for admission will not be heard to complain, when it receives responses thereto near the end of the discovery period, that it needs an extension or reopening of the discovery period in order to take "follow-up" discovery. [ Note 6.]
At the same time, a party which receives discovery requests early in the discovery period may not, by delaying its response thereto, or by responding improperly so that its adversary is forced to file a motion to compel discovery, deprive its adversary of the opportunity to take "follow-up" discovery. Such a delay or improper response constitutes good cause for an extension of the discovery period. Therefore, the Board will, at the request of the propounding party, extend the discovery period (at least for the propounding party) so as to restore that amount of time which would have remained in the discovery period had the discovery responses been made in a timely and proper fashion. [ Note 7.]
The time for responding to a request for discovery may be extended or reopened by stipulation of the parties, or on motion (pursuant to Fed. R. Civ. P. 6(b)) granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery. [ Note 8.] An extension of a party’s time to respond to an outstanding request for discovery will not automatically result in a corresponding extension of the deadline for expert disclosures, close of discovery, or any subsequent deadlines (including pretrial disclosures and the close of the parties’ testimony periods). [ Note 9.] Such periods will be rescheduled only on stipulation of the parties approved by the Board, or on motion granted by the Board, or by order of the Board.
A stipulation to extend or reopen only the time for responding to written discovery (that is, a request that does not also seek to extend or reopen the closing date for the discovery period and/or other subsequent deadlines) does not always have to be filed with the Board, but may be required in certain circumstances. If the stipulation to extend or reopen the time for responding to a discovery request interferes with the orderly completion of discovery or the opening of trial, the parties must first obtain Board approval. [ Note 10.] Further, to avoid any misunderstanding between the parties as to the existence and terms of such a stipulation, it is recommended that the stipulation be reduced to writing, even if it is not one which need be filed with the Board.
A party’s time to make initial or expert disclosures may be reset upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board, but the expert disclosure deadline must always be scheduled prior to the close of discovery. [ Note 11.] The resetting of a party’s time to make initial disclosures (that is, a request that does not also seek to extend or reopen subsequent deadlines) will not result in an automatic rescheduling of the deadline for expert disclosure or of the close of discovery or any subsequent deadlines. Such dates will be rescheduled upon approval of an appropriate stipulation of the parties, or motion of a party, or by order of the Board. However, when the parties stipulate to an extension of the deadline for expert disclosure, or a motion seeking such an extension is granted, or the Board orders such an extension, the Board will extend the closing date of discovery to the extent necessary to schedule the expert disclosure deadline prior to the close of the discovery period.
For a discussion regarding modification of disclosure obligations, see TBMP § 401.04.
NOTES:
1. 37 C.F.R. § 2.120(a)(2)(iv). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016) ("The Office is further amending § 2.120(a)(2)(iv) to clarify that extensions of the discovery period granted by the Board will be limited.").
3. 37 C.F.R. § 2.120(a)(2)(iv). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).
5. See National Football League v. DNH Management LLC, 85 USPQ2d 1852, 1854-55 (TTAB 2008) (opposers’ motion to extend discovery period denied where opposers did not serve written discovery requests until final day of discovery, and did not attempt to depose applicant during prescribed discovery period, and evidence does not support opposers’ claim that they delayed discovery because parties were engaged in settlement discussions); Dating DNA, LLC v. Imagini Holdings, Ltd., 94 USPQ2d 1889, 1892 n.3 (TTAB 2010) ("a party that delays in initiating discovery . . . generally is not entitled to an extension to allow for follow-up discovery"); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987) (no reason given why discovery was not taken during the time allowed).
6. See Dating DNA, LLC v. Imagini Holdings, Ltd., 94 USPQ2d 1889, 1892 n.3 (TTAB 2010); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987); American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1316 n.4 (TTAB 1992).
7. See Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1070 (TTAB 1990) (Board will, upon motion, reopen or extend discovery solely for benefit of party who was unfairly deprived of follow-up discovery by opponent who wrongfully refused to answer or delayed responses to discovery); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (granting motion to extend time to restore amount of time remaining in discovery to the day when applicant’s interrogatories were served).
8. 37 C.F.R. § 2.120(a)(3). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016) (". . . when the time to respond [to discovery] is extended, discovery responses may not be due later than the close of discovery.").
9. 37 C.F.R. § 2.120(a)(3) and 37 C.F.R. § 2.121(a). See PolyJohn Enterprises Corp. v. 1-800-TOILETS, Inc., 61 USPQ2d 1860, 1861 (TTAB 2002) (mistaken belief that resetting time to respond to discovery also extended discovery and testimony periods did not constitute excusable neglect to reopen).
10. Fed. R. Civ. P. 29(b). See Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1768 n.2 (TTAB 2008) (written stipulations to extend period to respond to discovery requests need only be filed with the Board when the extension may interfere with the orderly completion of discovery or the opening of trial).