412.06    Protective Orders Limiting Discovery

37 C.F.R. § 2.120(g)  Motion for a protective order. Upon motion by a party obligated to make initial disclosures or expert testimony disclosure or from whom discovery is sought, and for good cause, the Trademark Trial and Appeal Board may make any order which justice requires to protect a party from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the types of orders provided by clauses (A) through (H), inclusive, of Rule 26(c)(1) of the Federal Rules of Civil Procedure. If the motion for a protective order is denied in whole or in part, the Board may, on such conditions (other than an award of expenses to the party prevailing on the motion) as are just, order that any party comply with disclosure obligations or provide or permit discovery.

Fed. R. Civ. P. 26(c)(1) In General. A party or any person from whom discovery is sought may move for a protective order in the court where the action is pending — or as an alternative on matters relating to a deposition, in the court for the district where the deposition will be taken. The motion must include a certification that the movant has in good faith conferred or attempted to confer with other affected parties in an effort to resolve the dispute without court action. The court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the following:

  • (A) forbidding the disclosure or discovery;
  • (B) specifying terms, including time and place or the allocation of expenses, for the disclosure or discovery;
  • (C) prescribing a discovery method other than the one selected by the party seeking discovery;
  • (D) forbidding inquiry into certain matters, or limiting the scope of disclosure or discovery to certain matters;
  • (E) designating the persons who may be present while the discovery is conducted;
  • (F) requiring that a deposition be sealed and opened only on court order;
  • (G) requiring that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a specified way; and
  • (H) requiring that the parties simultaneously file specified documents or information in sealed envelopes, to be opened as the court directs.

(2) Ordering Discovery. If a motion for a protective order is wholly or partly denied, the court may, on just terms, order that any party or person provide or permit discovery.

Although it is generally inappropriate to respond to a request for discovery by filing a motion for a protective order, in certain situations, on motion pursuant to 37 C.F.R. § 2.120(g), a party may properly move for a protective order that the disclosure or discovery not be had, or be had only on specified terms and conditions. [ Note 1.]

A party must establish good cause to obtain a protective order. [ Note 2.] To establish good cause, a movant must provide "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." [ Note 3.] The existence of good cause for a protective order is a factual matter to be determined from the nature and character of the information sought by deposition or interrogatory request or request for production or request for admission weighed in the balance of the factual issues involved in the Board proceeding. The moving party seeking a protective order bears the burden of showing good cause. The movant must demonstrate that its ability to litigate will be prejudiced, not merely that the difficulty of managing the litigation will increase. [ Note 4.]

When the Board grants a motion for a protective order it may direct either the disclosing party, or the parties together, to prepare an order with terms that are mutually agreeable to them, [ Note 5.] may approve the protective order proffered by a party, may order the parties to adhere to the Board’s standard protective order, or may provide whatever relief the Board deems appropriate.

The parties should confer in good faith before seeking Board intervention for a protective order. [ Note 6.] A motion for protective order may be denied on the basis of a lack of good faith effort to resolve the issues regarding the discovery requests. [ Note 7.]

For additional information regarding motions for protective order, see TBMP § 412 and TBMP § 526.

NOTES:

 1.   See, e.g., Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (granting protective order, in part because many of requests not appropriately tailored to elicit discoverable information); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013) (protective order granted with regard to duplicative requests for admissions and admissions directed to opposer’s unpleaded registrations); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1764 (TTAB 1999) (protective order against taking deposition of high level executive granted); Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976) (protective order granted where party who was served with discovery (assignor) is not and was not at the time of commencement of proceeding the real party in interest).

 2.   37 C.F.R. § 2.120(g); Fed. R. Civ. P. 26(c)(1).

 3.   The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152-53 (TTAB 2013); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999).

 4.   A. Hirsh, Inc. v. United States, 657 F. Supp. 1297, 1305 (C.I.T. 1987); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2153 (TTAB 2013).

 5.   See, e.g., Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719 (TTAB 1989); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974).

 6.   Fed. R. Civ. P. 26(c)(1). See also Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1386 (TTAB 2016) (lack of good faith effort); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013) (finding good faith effort to resolve the discovery dispute prior to filing the motion for protective order). Cf. Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 (TTAB 2014) (good faith effort in connection with motion to compel should be directed to understanding differences and investigating ways in which to resolve dispute); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (quoting Dondi Properties Corp. v. Commerce Savings and Loan Ass’n, 121 F.R.D. 284, 289 (N.D. Tex. 1988) ("[t]he purpose of the conference requirement is to promote a frank exchange between counsel to resolve issues by agreement or to at least narrow and focus the matters in controversy before judicial resolution is sought.")).

 7.   Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1386 (TTAB 2016) ("the Board’s finding of a lack of good faith effort, alone, is sufficient to deny the motion for a protective order.").

412.06(a)    Depositions

Although issuance of a protective order totally prohibiting a deposition occurs only in extraordinary circumstances, the Board has the discretion to limit a deposition or order a deposition not to be had if it determines that the discovery sought is obtainable from other sources that are more convenient and less burdensome or duplicative. [ Note 1.] The party seeking a protective order to limit a deposition or for a deposition not to be had bears the burden to show good cause therefor. [ Note 2.] To establish good cause, the movant must submit "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." [ Note 3.]

As a general rule, a lack of personal knowledge is an insufficient basis for obtaining a protective order that a discovery deposition not be had, as a party seeking discovery may test a witness’ asserted lack of knowledge. [ Note 4.] On the other hand, a motion for protective order may be granted if it is shown that the party has no unique or superior personal knowledge of the facts and that discovery may be obtained from other individuals with equivalent or greater knowledge. [ Note 5.] A party may file a motion for a protective order (or alternatively, a motion to quash) if, for example, absent a stipulation of the parties or leave of the Board, the notice of deposition would result in the inquiring party exceeding the permitted number of ten discovery depositions or if it would result in a second deposition of an individual or if the notice would result in a deposition being taken outside the discovery period. An assertion that the deponent is too busy, or that the examination would cause undue labor, expense or delay is generally an insufficient basis for obtaining a protective order. [ Note 6.]

If a party moves for a protective order to prohibit the deposition of a very high-level official or executive of a large corporation, the movant must demonstrate through an affidavit or other evidence that the high-level official has no direct knowledge of the relevant facts or that there are other persons with equal or greater knowledge of the relevant facts. [ Note 7.]

If the movant meets this initial burden, then the burden shifts to the party seeking the deposition to show that the official has unique or superior personal knowledge of relevant facts. [ Note 8.] If the party seeking the deposition does not satisfy this showing, then the Board will grant the motion for protective order and require the party seeking the deposition to attempt to obtain discovery through less intrusive methods. [ Note 9.] Depending upon the circumstances of the case, these methods should include the depositions of lower-level employees, Fed. R. Civ. P. 30(b)(6) depositions, requests for admissions, or interrogatories and requests for production of documents directed to the corporation. [ Note 10.]

If, after making a good faith effort to utilize less intrusive methods of discovery, the party is unable to obtain the information it seeks, a party may file a motion to vacate or modify the protective order. Such a motion should include a showing (1) that there is a reasonable indication that the high-level official’s deposition may or will lead to the discovery of admissible evidence, and (2) that the less intrusive methods of discovery are unsatisfactory, insufficient or inadequate. [ Note 11.] In granting the motion to vacate or modify the protective order, the Board may limit the topics and duration of the deposition. [ Note 12.]

A party moving for a protective order to delay, limit or prevent a deposition on the basis of medical grounds or health concerns has the burden of making a specific and documented factual showing. [ Note 13.]

A party opposing a motion for protective order with respect to taking the deposition of a non-testifying or consulting expert on notice alone has the burden of establishing exceptional circumstances. [ Note 14.]

Please Note: The Board has no jurisdiction over depositions by subpoena, and in such a case, a motion for protective relief would be filed in the district court for which the subpoena issued and not with the Board.

NOTES:

 1.   Fed. R. Civ. P. 26(c)(1); 37 C.F.R. § 2.120(g); Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1674 (TTAB 2005); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761-62 (TTAB 1999).

 2.   Fed. R. Civ. P. 26(c)(1); 37 C.F.R. § 2.120(g).

 3.   The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013) (citing FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999)).

 4.   8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2037 (3d ed. 2016).

 5.   Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1675 (TTAB 2005).

 6.   FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1762 (TTAB 1999).

 7.   FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).

 8.   FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).

 9.   FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).

 10.   FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).

 11.   FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).

 12.   Cf. Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1677 (TTAB 2005) (denying a motion for protective order that depositions not be had with regard to certain individuals but limiting the depositions to three hours in duration and to one particular topic).

 13.   8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2037 (3d ed. 2016) and cases cited therein.

 14.   Fed. R. Civ. P. 26(b)(4)(D)(ii); Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1568 (TTAB 2014) (motion to take deposition of consulting expert denied because opposer did not establish exceptional circumstances).

412.06(b)    Other Discovery

Except in those cases where it is readily apparent that propounded discovery requests are so oppressive as to constitute clear harassment, it is generally improper to respond to a request for discovery by filing a motion for protective order. [ Note 1.] See TBMP § 405 and TBMP § 406, for proper responses to discovery and TBMP § 412 and TBMP § 526 regarding motions for protective orders. It is also improper to move for a protective order for the purpose of delaying responses to discovery or for purposes of harassment of one’s adversary. [ Note 2.] The remedy for excessive interrogatories, requests for production, or requests for admissions is service of a general objection, rather than a motion for protective order. [ Note 3.] For more information regarding excessive interrogatories, see TBMP § 405.03; for excessive requests for production, see TBMP § 406.05; for excessive requests for admissions, see TBMP § 407.05.

Where appropriate, the Board may under Fed. R. Civ. P. Rule 26(c)(1) order that the discovery requested not be had with regard to interrogatories, requests for production, or requests for admission. [ Note 4.] The Board must determine whether there is a need for protection against a particular interrogatory or request for admission or production of a particular document or category of documents due to their nature that renders them harassing and oppressive. [ Note 5.] The parties are expected to take into account the principles of proportionality with regard to interrogatory requests, document requests, and requests for admission such that the requests are not rendered harassing and oppressive. [ Note 6.] The parties are expected to consider the scope of the requests as well as confer in good faith about the proper scope of discovery pursuant to 37 C.F.R. § 2.120(a)  and Fed. R. Civ. P. 26(f) so as to minimize the need for these motions. See TBMP § 402 and TBMP § 408 regarding the scope of discovery, the parties’ discovery conference obligations and the duty to cooperate.

NOTES:

 1.   Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385, 1387 (TTAB 2016); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984).

 2.   Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016); Fort Howard Paper Co. v. G.V. Gambina Inc., 4 USPQ2d 1552, 1553 (TTAB 1987).

 3.   37 C.F.R. § 2.120(d); 37 C.F.R. § 2.120(e); 37 C.F.R. § 2.120(i).

 4.   See, e.g., Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (granting protective order, based in part on many of the requests not appropriately tailored to elicit discoverable information); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013) (granting protective order with regard to 94 duplicative requests for admissions and those that sought admissions as to unpleaded registrations); Fed. R. Civ. P. 36 Notes of Advisory Committee on Rules – 1970 Amendment ("requests to admit may be ... framed that the answering party finds the task of identifying what is in dispute and what is not unduly burdensome. If so, the responding party may obtain a protective order under Rule 26(c)").

 5.   Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (when only one registration was at issue in cancellation, granting protective order, based in part on requests not being properly tailored to claims before the Board); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013) (granting protective order with regard to duplicative requests for admissions and those that sought admissions as to unpleaded registrations but denying protective order with regard to requests for admissions that were relevant to allegations and claims as pleaded, where opposer made broad claims of ownership of twenty-six registered and common law marks in its notice of opposition, and applicant’s admission requests related only to fourteen of opposer’s pleaded marks); Weatherford/Lamb Inc. v. C&J Energy Services, Inc., 96 USPQ2d 1834, 1836 n.3 (TTAB 2010) (noting that during discovery and prior to service of petitioner’s discovery responses, the Board granted motion for protective order that petitioner need only produce limited or representative samples of responsive documents); Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1613 (TTAB 1991) (granting motion for protective order with respect to discovery relating to foreign activities; denying motion for protective order with respect to applicant’s use in commerce in U.S.); Fort Howard Paper Co. v. G.V. Gambina Inc., 4 USPQ2d 1552, 1554 (TTAB 1987) (denying motion for protective order with respect to nineteen discovery requests which were suitably tailored to the issues in the opposition); C. H. Stuart Inc. v. S.S. Sarna, Inc., 212 USPQ 386, 387 (TTAB 1980) (granting protective order due to oppressive and harassing discovery requests where the requests served were "boiler-plate" requests designed for use in an infringement action, discovery was not tailored to issues in Board proceeding, and requests sought included those seeking information regarding whether officers of applicant had been convicted of a crime or subject to a proceeding before the U.S. government). See also Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976) (protective order granted where obligation to respond to discovery requests rested with assignee nor assignor).

 6.   37 C.F.R. § 2.120(a)(1); Wisconsin Cheese Group, LLC v. Comercializadora de Lacteos y Derivados S.A. de C.V., 118 USPQ2d 1262, 1267 n.10 (TTAB 2016) ("The Board has applied the principle of proportionality to define the proper subjects of and expanse of inquiry in inter partes proceedings under various circumstances."); Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1386 (TTAB 2016) (the Board expects parties to take into account the principles of proportionality); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951, 69970 (October 7, 2016).