405.03 Limit on Number
405.03(a) Description of Limit
37 C.F.R. § 2.120(d) Interrogatories. The total number of written interrogatories which a party may serve upon another party pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed seventy-five, counting subparts, except that the Trademark Trial and Appeal Board, in its discretion, may allow additional interrogatories upon motion therefor showing good cause, or upon stipulation of the parties, approved by the Board. A motion for leave to serve additional interrogatories must be filed and granted prior to the service of the proposed additional interrogatories and must be accompanied by a copy of the interrogatories, if any, which have already been served by the moving party, and by a copy of the interrogatories proposed to be served. * * * *
The total number of interrogatories which a party may serve on another party, in a proceeding, may not exceed 75, counting subparts, except that the Board may allow additional interrogatories on motion therefor showing good cause, or on stipulation of the parties. [ Note 1.] See TBMP § 519. Parties may also stipulate that the limit on interrogatories shall be fewer than 75. [ Note 2.]
NOTES:
1. See Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467 n.5 (TTAB 1990) ("good cause will generally be found only where a legitimate need for further discovery by means of interrogatories is shown . . . the fact that the additional interrogatories served by opposer may be relevant and narrowly drawn to a single issue is insufficient, in and of itself, to demonstrate good cause.").
405.03(b) Application of Limit: Sets of Interrogatories
The numerical limit specified in 37 C.F.R. § 2.120(d) pertains to the total number of interrogatories that one party may serve on another party over the course of an entire proceeding, not just per set of interrogatories. Thus, if a party to a proceeding before the Board serves, over the course of the proceeding, two or more separate sets of interrogatories directed to the same party, the interrogatories in the separate sets would be added together for purposes of determining whether the numerical limit specified in the rule has been exceeded. [ Note 1.]
Accordingly, a party which is preparing a first set of interrogatories should reserve a portion of its allotted 75 interrogatories (counting subparts) to use for follow-up discovery, unless it is sure that it will not be serving follow-up interrogatories.
NOTES:
1. See Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467 (TTAB 1990).
405.03(c) Application of Limit: Multiple Marks, Etc.
37 C.F.R. § 2.120(d) does not provide for extra interrogatories in cases where more than one mark is pleaded and/or attacked by the plaintiff (whether in a single proceeding, or in consolidated proceedings), because in such cases, the propounding party may simply request that each interrogatory be answered with respect to each involved mark of the responding party, and the interrogatories will be counted the same as if they pertained to only one mark. Similarly, the rule does not provide for extra interrogatories in cases where there is a counterclaim, because in a proceeding before the Board, the discovery information needed by a party for purposes of litigating the plaintiff’s claim usually encompasses the information needed by that party for purposes of litigating a counterclaim. That is, the mere fact that a proceeding involves multiple marks (whether in a single proceeding, or in consolidated proceedings) and/or a counterclaim does not mean that a party is entitled to serve 75 interrogatories, counting subparts, for each mark, or for each proceeding that has been consolidated, or for both the main claim and the counterclaim. Nor does such fact, in and of itself, constitute good cause for a motion for leave to serve additional interrogatories. However, if a proceeding with multiple marks and/or a counterclaim involves unusually numerous or complex issues, these are factors that will be considered in determining a motion for leave to serve additional interrogatories.
405.03(d) Application of Limit: Counting Interrogatories
In determining whether the number of interrogatories served by one party on another exceeds the limit specified in 37 C.F.R. § 2.120(d), the Board will count each subpart within an interrogatory as a separate interrogatory, regardless of whether the subpart is separately designated (i.e., separately numbered or lettered). [ Note 1.]
If an interrogatory includes questions set forth as numbered or lettered subparts, each separately designated subpart will be counted by the Board as a separate interrogatory. The propounding party will, to that extent, be bound by its own numbering system, and will not be heard to complain that an interrogatory, although propounded with separately designated subparts, should nevertheless be counted as a single interrogatory because the interrogatory concerns a single transaction, set of facts, etc., or because the division was made for clarification or convenience. [ Note 2.]
On the other hand, if a propounding party sets forth its interrogatories as 75 or fewer separately designated questions (counting both separately designated interrogatories and separately designated subparts), but the interrogatories actually contain more than 75 questions, the Board will not be bound by the propounding party’s numbering or designating system. Rather, the Board will look to the substance of the interrogatories, and count each question as a separate interrogatory. [ Note 3.] For example, if two or more questions are combined in a single compound interrogatory, and are not set out as separate subparts, the Board will look to the substance of the interrogatory, and count each of the combined questions as a separate interrogatory. [ Note 4.]
If an interrogatory contains both an initial question, and follow-up questions to be answered if the first is answered in the affirmative, the initial question and each follow-up question will be counted as separate interrogatories. [ Note 5.]
Similarly, if an interrogatory begins with a broad introductory clause ("Describe fully the facts and circumstances surrounding applicant’s first use of the mark XYZ, including:") followed by several subparts ("Applicant’s date of first use of the mark on the goods listed in the application," "Applicant’s date of first use of the mark on such goods in commerce," etc.), the Board will count the broad introductory clause and each subpart as a separate interrogatory, whether or not the subparts are separately designated. [ Note 6.]
If an interrogatory requests information concerning more than one issue, such as information concerning both "sales and advertising figures," or both "adoption and use," the Board will count each issue on which information is sought as a separate interrogatory. In contrast, if an interrogatory requests "all relevant facts and circumstances" concerning a single issue, event, or matter; or asks that a particular piece of information, such as, for example, annual sales figures under a mark, be given for multiple years, and/or for each of the responding party’s involved marks, it will be counted as a single interrogatory. [ Note 7.]
The introductory instructions or preamble to a set of interrogatories will not be counted by the Board as interrogatories or subparts for purposes of determining whether the limit specified in 37 C.F.R. § 2.120(d) has been exceeded. On the other hand, the Board’s determination, on a motion to compel, of the adequacy of an interrogatory answer will not be governed by the introductory instructions or preamble; the Board is not bound by the instructions or preamble, and will make its own independent determination of the adequacy of the answer, without regard to the instructions or preamble. [ Note 8.]
NOTES:
1. Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990); Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990). Cf. Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385, 1387 (TTAB 2016) (parties should discuss their respective counting methods in attempt to resolve dispute over number; under no counting method did the interrogatories at issue exceed 75).
2. Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 (TTAB 1990).
3. Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990). Cf. Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016) (parties should nonetheless discuss their respective counting methods in attempt to resolve dispute over number).
4. See Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990).
5. Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990).
6. See Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990).
7. See NOTICE OF FINAL RULEMAKING, 54 Fed. Reg. 34886 (August 22, 1989).
8. See Avia Group International Inc. v. Faraut, 25 USPQ2d 1625, 1626 (TTAB 1992).
405.03(e) Remedy for Excessive Interrogatories
37 C.F.R. § 2.120(d) . . . If a party upon which interrogatories have been served believes that the number of interrogatories served exceeds the limitation specified in this paragraph (d), and is not willing to waive this basis for objection, the party shall, within the time for (and instead of) serving answers and specific objections to the interrogatories, serve a general objection on the ground of their excessive number. If the inquiring party, in turn, files a motion to compel discovery, the motion must be accompanied by a copy of the set(s) of interrogatories which together are said to exceed the limitation, and must otherwise comply with the requirements of paragraph (f) of this section.
If a party on which interrogatories have been served, in a proceeding before the Board, believes that the number of interrogatories exceeds the limit specified in 37 C.F.R. § 2.120(d), and wishes to object to the interrogatories on that basis, the party must, within the time for, and instead of, serving answers and specific objections to the interrogatories, serve a general objection on the ground of their excessive number. [ Note 1.] A party should not answer what it considers to be the first 75 interrogatories and object to the rest as excessive. [ Note 2.]
If a general objection on the ground of excessive number is asserted, and the propounding party, in turn, believes that the objection is not well taken, and wishes to obtain an adjudication from the Board as to the sufficiency thereof, the propounding party must file a motion to compel discovery. The motion must be accompanied by a copy of the set(s) of interrogatories which together are said to exceed the limitation, and must otherwise comply with the requirements of 37 C.F.R. § 2.120(f), including the requirement that a motion to compel be supported by a showing from the moving party that such party or its attorney has made a good faith effort, by conference or correspondence, to resolve with the other party or its attorney the issues presented in the motion and has been unable to reach agreement. [ Note 3.] The moving party should also set out its counting method showing that the number of interrogatories does not exceed 75. [ Note 4.] For further information concerning motions to compel discovery, see TBMP § 523.
If, on determining a motion to compel filed in response to a general objection to interrogatories on the ground of excessive number, the Board finds that the interrogatories are excessive in number, and that the propounding party has not previously used up its allotted 75 interrogatories, the Board normally will allow the propounding party an opportunity to serve a revised set of interrogatories not exceeding the limit specified in 37 C.F.R. § 2.120(d). The revised set of interrogatories serves as a substitute for the excessive set, and thus is deemed timely if the excessive set was timely. [ Note 5.] For information regarding the timing of interrogatories, see TBMP § 405.01.
However, if an order providing for a revised set is issued late in the discovery period or after the close of the discovery period, the discovery period will be extended or reopened, as appropriate, to permit service of and responses to the revised set. Where discovery is reopened, the scope of the revised set may not exceed the scope of the excessive set, that is, the revised set may not seek information beyond the scope of the excessive set. [ Note 6.]
A party may properly refuse to respond to a document request seeking all documents identified or referred to in response to interrogatories if the number of interrogatories is believed to be excessive. [ Note 7.]
In those cases where a party which has propounded interrogatories realizes, on receipt of a general objection thereto on the ground of excessive number, that the interrogatories are, in fact, excessive in number, it is strongly recommended that the parties voluntarily agree to the service of a revised set of interrogatories, in the manner normally allowed by the Board, instead of bringing their dispute to the Board by motion to compel.
NOTES:
1. 37 C.F.R. § 2.120(d); Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016). Cf. Amazon Technologies v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (where party believes that it need not respond to discovery requests because the propounding party did not serve initial disclosures, it has a duty to specifically object on that basis).
2. Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990).
3. 37 C.F.R. § 2.120(d) and 37 C.F.R. § 2.120(f).
4. See, e.g., Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016) (parties should specifically discuss their respective counting methods in attempt to resolve dispute over number of interrogatories).
5. See Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990). See also Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398, 1398-99 (TTAB 1990) (excusing obligation to answer excessive set); Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990). Cf. Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1468 n.6 (TTAB 1990) (opposer may seek answers by taking discovery deposition of applicant).
6. 37 C.F.R. § 2.120(a)(3). See, e.g., Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990).
7. See Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398, 1399 (TTAB 1990) (refusal to respond to document requests was proper; petitioner could not respond to document requests without first having to answer excessive interrogatories).