401.01 Discovery Conferences
37 C.F.R. § 2.120(a)(1) [Discovery] . . . The provisions of Rule 26 of the Federal Rules of Civil Procedure relating to . . . the conference of the parties to discuss settlement and to develop a disclosure and discovery plan . . . are applicable to Board proceedings in modified form . . . . The Board will specify the deadline for a discovery conference . . . . * * * *
37 C.F.R. § 2.120(a)(2)(i) The discovery conference shall occur no later than the opening of the discovery period, and the parties must discuss the subjects set forth in Rule 26(f) of the Federal Rule of Civil Procedure and any subjects set forth in the Board’s institution order. A Board Interlocutory Attorney or Administrative Trademark Judge will participate in the conference upon request of any party made after answer but no later than ten days prior to the deadline for the conference, or when the Board deems it useful for the parties to have Board involvement. The participating attorney or judge may expand or reduce the number or nature of subjects to be discussed in the conference as may be deemed appropriate.
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(v) The parties are not required to prepare or transmit to the Board a written report outlining their discovery conference discussions, unless the parties have agreed to alter disclosure or discovery obligations set forth by these rules or applicable Federal Rules of Civil Procedure, or unless directed to file such a report by a participating Board Interlocutory Attorney or Administrative Trademark Judge.
Fed. R. Civ. P. 26(f)(2) Conference Content; Parties’ Responsibilities. In conferring, the parties must consider the nature and basis of their claims and defenses and the possibilities for promptly settling or resolving the case; . . . discuss any issues about preserving discoverable information, and develop a proposed discovery plan.
For all inter partes proceedings, the parties are required to hold a discovery conference to discuss the subjects set forth in Fed. R. Civ. P. 26(f) and in the institution order for the case. [ Note 1.] As specified in the Board’s institution order:
"The parties are required to schedule and hold a discovery conference by the deadline in the schedule in this order, or as reset by the Board. In the conference, the parties are required to discuss, at a minimum, 1) the nature and basis of their claims and defenses, 2) the possibility of promptly settling, or at least narrowing the scope of claims or defenses, and 3) arrangements for disclosures, discovery, preserving discoverable information and introduction of evidence at trial. For guidance, see Fed. R. Civ. P. 26(f), Trademark Rule 2.120(a)(2)(i), and TBMP §§ 401.01 and 408.01(a).
The conference is not limited to the subjects listed in Fed. R. Civ. P. 26(f) or in the Board’s institution order, and "the parties are free to discuss any additional topics that could promote settlement or efficient adjudication of the Board proceeding" including alternative means for adjudication such as the Board’s Accelerated Case Resolution (ACR) procedure. [ Note 2.] See TBMP § 528.05(a)(2) and TBMP § 702.04 for further information on ACR. Because the parties may enter into stipulations altering disclosure obligations, they should continue to discuss their reciprocal obligations and progress made in satisfying such obligations even after the discovery conference has been held.
The conference should take place once the pleadings have closed and by the deadline set forth in the Board’s institution order (or by any extended deadline approved by the Board), and must take place no later than the opening of the discovery period. [ Note 3.] In instances, however, where the defendant is in default, or a pleading motion under Fed. R. Civ. P. 12 has been filed, or a counterclaim has been filed, the parties’ obligation to have a discovery conference is tolled or effectively stayed. [ Note 4.] The rationale is that an answer must be filed to all claims and counterclaims, and issues related to the pleadings resolved before the parties can have a meaningful discovery conference. [ Note 5.] In such cases, the Board will reset the deadline for the discovery conference as well as all subsequent dates, upon resolution of the default or Fed. R. Civ. P. 12 motion, or acknowledgement of the counterclaim, which may include setting or resetting the deadline for filing an answer. [ Note 6.] Generally after an answer is filed, the Board is unlikely to find good cause to extend the deadline for the discovery conference for settlement negotiations, even upon stipulation or consent. [ Note 7.] There is no Fed. R. Civ. P. 16(b) scheduling/conference order.
The parties’ discovery conference may be in person or by other means (e.g. telephone). [ Note 8.] If any party wants a Board professional to participate in the required discovery conference, the party must submit such request through ESTTA, the Board’s electronic filing system, or call the Board attorney assigned to the case no later than ten (10) days prior to the deadline for conducting the discovery conference, so as to facilitate completion of the conference by the deadline. [ Note 9.] Submitting a request using ESTTA is preferred; however, parties are encouraged to follow up a few days later with a phone call to the Board attorney assigned to the case if they have not yet been contacted by a Board attorney. Board participation is encouraged where pro se litigants are involved. [ Note 10.] The Board, on its own initiative, may elect to participate in the discovery conference when the Board deems it useful for the parties to have Board involvement. [ Note 11.] The participating attorney or judge has discretion to expand or reduce the number or nature of subjects to be discussed during the conference. [ Note 12.] For instance, the Board professional may ascertain whether the parties have previously engaged in settlement discussions, explain to the parties the Board’s ACR option, and may inquire whether the parties need additional time after the conference to discuss settlement. [ Note 13.] Participation by a Board professional will be by telephone. [ Note 14.] The conference will not be recorded by the Board and shall not be recorded by the parties. [ Note 15.]
If a party desires the appearance of more than one counsel on behalf of a party in a discovery conference with Board participation, that party is to designate a lead counsel to represent the party in the conference. With respect to pro se parties, the person who appears on behalf of the party, must be authorized under 37 C.F.R. § 11.14(e). See TBMP § 114 (Party May Represent Itself). If a pro se litigant desires to have counsel appear on its behalf strictly for purposes of the discovery conference with Board participation, such counsel shall file a notice of appearance prior to the conduct of the discovery conference for this limited purpose. Subsequently, counsel will file a notice of withdrawal, unless counsel has been retained by the party to take further action on behalf of the party in the case. See TBMP § 116.01 regarding termination of representation.
In discovery conferences with Board participation, parties must conduct themselves with appropriate decorum and interruptions are to be avoided. [ Note 16.] The Board professional participating in the conference generally will signal that a party may make a presentation by inviting the party to do so or by inviting a response to a presentation made by another. The Board professional may make other requirements for the orderly conduct of the discovery conference.
If neither party requests Board participation in the discovery conference and the Board does not elect to participate in the conference on its own initiative, the parties still must conference no later than the prescribed deadline, and the Board will operate on the assumption that the conference was held by the deadline. The mere discussion of settlement among the parties does not substitute for a full discovery conference of subjects set forth in Fed. R. Civ. P. 26(f) and the Board’s institution order. [ Note 17.]
The parties do not have to file a disclosure/discovery plan with the Board following their discovery conference, unless they are seeking leave by motion or stipulation to alter standard deadlines or obligations, or unless they were directed to do so by the Board. [ Note 18.]
The Board has the authority to order parties to hold a discovery conference, either sua sponte or upon motion. [ Note 19.]
For a discussion regarding the duty to cooperate in scheduling and conducting a discovery conference, and the imposition of sanctions for the failure to participate in a discovery conference, see TBMP § 408.01(a).
For general information on the conduct of telephone conferences, participation in telephone conferences, and issuance of rulings resulting from telephone conferences, see TBMP § 502.06(a).
NOTES:
1. 37 C.F.R. § 2.120(a)(1); 37 C.F.R. § 2.120(a)(2)(i); Fed. R. Civ. P. 26(f). See, e.g., Promgirl, Inc. v. JPC Co., 94USPQ2d 1759, 1761-62 (TTAB 2009) (mere discussion of settlement does not substitute for full discovery conference of subjects set forth in Fed. R. Civ. P. 26 and Board’s institution order). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 and 42252 (August 1, 2007) for information about the adoption of a discovery conference in Board proceedings.
2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 and 42252 (August 1, 2007). See Weatherford/Lamb Inc. v. C&J Energy Servs., Inc., 96 USPQ2d 1834, 1836 n.4 (TTAB 2010) (parties encouraged to discuss ACR during discovery conference). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959, 69961 (October 7, 2016) (if voluminous productions anticipated, method of service is worthwhile issue to discuss at Board discovery conference; production of ESI is a subject for discussion at discovery).
3. 37 C.F.R. § 2.120(a)(2)(i). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
4. 37 C.F.R. § 2.106(a), 37 C.F.R. § 2.114(a) and 37 C.F.R. § 2.127(d). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957, 69959, 69967 (October 7, 2016). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007) (filing of a counterclaim results in proceeding effectively being stayed).
5. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
6. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
7. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007). See Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767 n.1 (TTAB 2008) ("The Board is unlikely to find good cause when such a request is based on the parties’ desire to engage in settlement discussions.").
8. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
9. See 37 C.F.R. § 2.120(a)(2)(i); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007). But see Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009) (Board professional can participate in discovery conference with less than ten days’ notice in instances where parties are at an impasse; conference may take place after deadline in those circumstances).
10. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42252 (August 1, 2007) ("... Board professionals involved in conferences will fill the educator’s role [that] would have to be filled by experienced counsel.").
11. 37 C.F.R. § 2.120(a)(2)(i). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).
12. 37 C.F.R. § 2.120(a)(2)(i).
13. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42252 (August 1, 2007).
14. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
16. 37 C.F.R. § 2.192; 37 C.F.R. § 11.305(d).
17. Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761-62 (TTAB 2009).
18. 37 C.F.R. § 2.120(a)(2)(v); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
19. See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1763 (TTAB 2009).