411.01    Initial and Expert Testimony Disclosures

If a party fails to provide any adverse party with required initial disclosures or expert testimony disclosures, the adverse party may file a motion to compel. [ Note 1.] A motion to compel initial disclosures must be filed thirty days after the deadline for initial disclosures; a motion to compel expert testimony disclosures must be filed prior to the close of the discovery period. [ Note 2.] For further information concerning motions to compel, see TBMP § 523. A party may not seek entry of sanctions against an adverse party that has failed to make required initial or expert disclosures without first pursuing the disclosures by motion to compel, unless the disclosing party has expressly stated that initial disclosures will not be made. [ Note 3.] For further information concerning discovery sanctions and when they are available, see TBMP § 527.01. For information regarding a party’s failure to make pretrial disclosures, see TBMP § 702.01.

NOTES:

 1.   37 C.F.R. § 2.120(f); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42256 (August 1, 2007) ("A motion to compel is the available remedy when an adversary has failed to make, or has made inadequate, initial disclosures or disclosures of expert testimony. Both of these types of disclosures are made during discovery, and a motion to compel must precede a motion for sanctions."). See also Luster Products Inc. v. Van Zandt, 104 USPQ2d 1877, 1879 (TTAB 2012) (motion to compel is available remedy for failure to serve, or insufficient, initial disclosures); RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1493 (TTAB 2013) (motion to compel available for inadequate expert disclosures); Influance v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008) (petitioner’s motion to compel amended initial disclosures granted where respondent failed to identify the address or telephone number of listed witnesses, the subject matter(s) about which each has information, and the location or production of identified documents).

 2.   37 C.F.R. § 2.120(f)(1). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951, 69977 (October 7, 2016).

 3.   37 C.F.R. § 2.120(h)(1)  and 37 C.F.R. § 2.120(h)(2); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42256 (August 1, 2007) ("A motion for sanctions is only appropriate if a motion to compel these respective disclosures has already been granted."); Amazon Technologies v. Wax, 93 USPQ2d 1702, 1706 (TTAB 2009) (motion for sanctions under 37 C.F.R. § 2.120(g)(1), redesignated by amendment to 37 C.F.R. § 2.120(h)(1), denied as premature where no Board order in place compelling discovery). But see 37 C.F.R. § 2.120(h)(2); Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008) (discussing both 37 C.F.R. §§ 2.120(g)(1) and (g)(2)). Please Note: Effective January 14, 2017, 37 C.F.R. § 2.120(g) has been redesignated by amendment to 37 C.F.R. § 2.120(h).