408.01(b)    Obligation to Make Initial and Expert Testimony Disclosures

Fed. R. Civ. P. 26. Duty to Disclose; General Provisions Governing Discovery

  • (a) Required Disclosures.
    • (1) Initial Disclosure.
      • (A) In General. Except as exempted by Rule 26(a)(1)(B) or as otherwise stipulated or ordered by the court, a party must, without awaiting a discovery request, provide to the other parties:
        • (i) the name and, if known, the address and telephone number of each individual likely to have discoverable information—along with the subjects of that information—that the disclosing party may use to support its claims or defenses, unless the use would be solely for impeachment;
        • (ii) a copy—or a description by category and location—of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment;
        • * * * *
    • (2) Disclosure of Expert Testimony.
      • (A) In General. In addition to the disclosures required by Rule 26(a)(1), a party must disclose to the other parties the identity of any witness it may use at trial to present evidence under Federal Rule of Evidence 702, 703, or 705.
      • (B) Witnesses Who Must Provide a Written Report. Unless otherwise stipulated or ordered by the court, this disclosure must be accompanied by a written report—prepared and signed by the witness—if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party’s employee regularly involve giving expert testimony. The report must contain:
        • (i) a complete statement of all opinions the witness will express and the basis and reasons for them;
        • (ii) the facts or data considered by the witness in forming them;
        • (iii) any exhibits that will be used to summarize or support them;
        • (iv) the witness’s qualifications, including a list of all publications authored in the previous 10 years;
        • (v) a list of all other cases in which, during the previous 4 years, the witness testified as an expert at trial or by deposition; and
        • (vi) a statement of the compensation to be paid for the study and testimony in the case.
      • (C) Witnesses Who Do Not Provide a Written Report. Unless otherwise stipulated or ordered by the court, if the witness is not required to provide a written report, this disclosure must state:
        • (i) the subject matter on which the witness is expected to present evidence under Federal Rule of Evidence 702, 703, or 705; and
        • (ii) a summary of the facts and opinions to which the witness is expected to testify.

37 C.F.R. § 2.120(a)(2) 

  • (ii) Initial disclosures must be made no later than thirty days after the opening of the discovery period.
  • (ii) Disclosure of expert testimony must occur in the manner and sequence provided in Rule 26(a)(2) of the Federal Rules of Civil Procedure, unless alternate directions have been provided by the Board in an institution order or any subsequent order resetting disclosure, discovery or trial dates. If the expert is retained after the deadline for disclosure of expert testimony, the party must promptly file a motion for leave to use expert testimony. Upon disclosure by any party of plans to use expert testimony, whether before or after the deadline for disclosing expert testimony, the Board, either on its own initiative or on notice from either party of the disclosure of expert testimony, may issue an order regarding expert discovery and/or set a deadline for any other party to disclose plans to use a rebuttal expert.

As part of the discovery phase parties are obliged to make initial disclosures and, when necessary, expert testimony disclosures. The Board adopted a disclosure regime to promote the early exchange of information and settlement and, for cases that do not settle, "more efficient discovery and trial, reduction of incidents of unfair surprise, and increase the likelihood of fair disposition of the parties’ claims and defenses." [ Note 1.] In addition, the use of routine disclosures of the types provided for in the Federal Rules of Civil Procedure is intended to "obviate the need to use traditional discovery to obtain ‘basic information’ about a party’s claims or defenses." [ Note 2.]

Each party involved in an inter partes proceeding is obligated to make initial disclosures to every other party, by the deadline set in the Board’s institution order, or as may be reset by stipulation of the parties approved by the Board, or by motion granted by the Board, or by order of the Board. [ Note 3.] The initial disclosure requirement is intended to provide for the disclosure of names of potential witnesses and basic information about documents and things that a party may use to support a claim or defense. [ Note 4.] Parties are encouraged in the spirit of cooperation to stipulate to rely on more expansive use of reciprocal disclosures in lieu of formal discovery, as a more efficient and less costly manner of litigating a Board proceeding, subject to Board approval. [ Note 5.]

For a further discussion of initial disclosures, see TBMP § 401.02.

If a party decides to use expert testimony in a Board proceeding, pursuant to Fed. R. Civ. P. 26(a)(2), the party must serve expert disclosures 30 days prior to the close of discovery, and any reset expert disclosure deadline must always be scheduled prior to the close of discovery. [ Note 6.] The expert disclosure requirement is intended to avoid any unfair surprise during the testimony period. [ Note 7.] While the expert disclosure provided for in Fed. R. Civ. P. 26 may be extensive and should not, therefore be filed with the Board, the parties should inform the Board when an expert disclosure is made, so the Board can issue any appropriate order. [ Note 8.] The Board may, for example, suspend proceedings to provide for the taking of any necessary discovery of the proposed expert witness, and to allow the adverse party or parties to determine whether it will be necessary to rely on a rebutting expert. [ Note 9.] Parties are expected to cooperate in the process of exchanging information about any testifying experts, and should discuss during the discovery conference, the possibility of the presentation of expert testimony. [ Note 10.] The parties should revisit these discussions whenever it appears that a testifying expert witness may become involved in the case. [ Note 11.]

Where a party in its disclosures identifies an expert as a possible testifying witness under Rule 26(b)(4)(A), but subsequently re-designates the expert as a non-testifying or consulting expert under Fed. R. Civ. P. 26(b)(4)(D), the opposing party may depose that expert only upon a showing of "exceptional circumstances" under Fed. R. Civ. P. 26(b)(4)(D)(ii). [ Note 12.]

For further information regarding expert disclosures, see TBMP § 401.03.

For a discussion regarding the modification of disclosure obligations, see TBMP § 401.04.

NOTES:

 1.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007). See Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (disclosures, from initial through pretrial, and discovery responses should be viewed as a continuum of communication designed to avoid unfair surprise and to facilitate a fair adjudication of the case on the merits).

 2.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 3.   37 C.F.R. § 2.120(a)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 4.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 5.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 6.   37 C.F.R. § 2.120(a)(2)(iii); 37 C.F.R. § 2.120(a)(2)(iv); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007) (under 37 C.F.R. § 2.120(a)(2), expert disclosures are governed by Fed. R. Civ. P. 26(a)(2) in the absence of an order from the Board setting a deadline). See, e.g., Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1564 n.2 (TTAB 2014) (parties stipulated to deadlines for expert and rebuttal expert reports); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (because Rule 2.120(a)(2) does not require that a disclosing party inform the Board that an expert disclosure has been made; failure to inform the Board of timely disclosure of an expert witness is not a basis for excluding the testimony of such expert witness); Jules Jurgensen/Rhapsody, Inc. v. Baumberger, 91 USPQ2d 1443, 1445 (TTAB 2009) (motion to strike witness testimony granted in view of noncompliance with 37 C.F.R. § 2.121(e)).

 7.   Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (disclosures, from initial through pretrial, and discovery responses should be viewed as a continuum of communication designed to avoid unfair surprise).

 8.   See 37 C.F.R. § 2.120(a)(2)(iii); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See also RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1493 n.3 (TTAB 2013); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011).

 9.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See e.g., Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564-65 (TTAB 2014); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011).

 10.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 11.   See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 n.3 (TTAB 2011) (parties expected to cooperate to resolve problems arising from timely but incomplete expert disclosures).

 12.   Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1568 (TTAB 2014).