412.01(b) Challenging the Designation of Confidential Matter

Excerpt from Board’s Standard Protective Order:

14) Challenges to Designations of Information as Protected.

If the parties or their attorneys disagree as to whether certain information should be protected, they are obligated to negotiate in good faith regarding the designation by the disclosing party. If the parties are unable to resolve their differences, the party challenging the designation may make a motion before the Board seeking a determination of the status of the information.

A challenge to the designation of information as protected must be made substantially contemporaneous with the designation, or as soon as practicable after the basis for challenge is known. When a challenge is made long after a designation of information as protected, the challenging party will be expected to show why it could not have made the challenge at an earlier time. The party designating information as protected will, when its designation is timely challenged, bear the ultimate burden of proving that the information should be protected.

37 C.F.R. § 2.116(g) The Trademark Trial and Appeal Board’s standard protective order is automatically imposed in all inter partes proceedings unless the parties, by stipulation approved by the Board, agree to an alternative order, or a motion by a party to use an alternative order is granted by the Board. The standard protective order is available at the Office’s Web site. No material disclosed or produced by a party, presented at trial, or filed with the Board, including motions or briefs which discuss such material, shall be treated as confidential or shielded from public view unless designated as protected under the Board’s standard protective order, or under an alternative order stipulated to by the parties and approved by the Board, or under an order submitted by motion of a party granted by the Board. The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.

Once information is designated as protected, its use and dissemination are circumscribed as provided in the Board’s standard protective order. [ Note 1.] A party who disagrees with another party’s designation of protected information under the Board’s standard protective order may challenge the designation (i.e., "Confidential" or "Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive)". [ Note 2.]

Circumstances by which a party may challenge a designation include a challenge to information as protected versus unprotected [ Note 3.], a challenge to the level of classification as protected [ Note 4.], and challenging the right to use protected information in connection with a dispositive motion or at trial (which could include both redesignation and access to the protected information). [ Note 5.] A challenge to right to access protected information differs from a motion in limine which the Board does not consider. See TBMP § 527.01(f).

Prior to seeking Board intervention via in camera inspection as to the propriety of the designation of protected information, the parties must first attempt to negotiate in good faith to resolve or narrow the disagreement as to the producing party’s designations. [ Note 6.] The party challenging the confidentiality designation should initiate the meet and confer process by providing written notice of each challenged designation, i.e., specifically identify the confidential information or restriction on access in dispute, and describe the basis for each challenge in the written notice. [ Note 7.] If, despite good faith effort and negotiation, the dispute cannot be resolved by the parties as to the challenged designations, the objecting party may seek relief from the Board by motion. [ Note 8.] When a Board determination of the propriety of a designation is sought, the Board expects that any unresolved challenges will be significantly narrowed in scope due to the requirement for good faith negotiations among the parties as set forth in the Board’s standard protective order. [ Note 9.] During such a challenge, the initial designation would remain in place until the Board determines that it was, in fact, improper.

The Board has wide discretion under Rule 26(c) to "decide when a protective order is appropriate and what degree of protection is required." [ Note 10.] Although a party may mark matter as confidential, Fed. R. Civ. P. 26(c)(1) "does not furnish an absolute privilege against disclosure of material that a party might wish to mark confidential." [ Note 11.]

A motion to challenge a designation under the Board’s standard protective order should be substantially contemporaneous with the designation, or made as soon as practicable after the basis for the challenge is known. [ Note 12.] If a challenge is made long after designation, the party will be expected to demonstrate why it could not have made the challenge at an earlier time. [ Note 13.] Thus, a designation may remain as designated if the party fails to timely challenge a designation and cannot show cause as to why the challenge as to the propriety of the designation was not made sooner. [ Note 14.]

When a designation has been challenged, it is the party seeking protection that bears the burden of demonstrating that its confidentiality designations are appropriate. [ Note 15.] To successfully carry the burden of establishing good cause, the producing party must demonstrate a particular need for protection and that a clearly defined and serious injury will result otherwise. [ Note 16.] In this regard, the party must provide particular and specific demonstrations of fact, as distinguished from stereotyped and conclusory statements. [ Note 17.]

To establish that a document or other information is entitled to protection from disclosure under Fed. R. Civ. P. 26(c)(1)(G), the producing party must show that the information is trade secret or other confidential information and that the disclosure would cause identifiable and serious harm. [ Note 18.] Where the producing party seeking protection under Fed. R. Civ. P. 26(c)(1)(G) is a business that seeks to maintain designations related to confidential business information, the producing party must show that disclosure would cause a clearly defined serious injury to its business such as harm to its competitive and financial position. [ Note 19.] Such a showing of harm to a party’s business requires support, where possible, by affidavits or declarations and concrete, specific examples. [ Note 20.]

"At the dispositive motions or trial stage of a proceeding, the showing necessary to justify continued designation of material as confidential increases, as the material at issue transitions from potential evidence produced during discovery to actual evidence to be used in disposition of the case, and a party’s interest in such a designation must be weighed against the traditional public right of access to judicial materials." [ Note 21.] While information designated Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) is protectable during discovery from access by the adverse party, it may be no longer be subject to the same level of protection if the designating party chooses to rely on the information or testimony at trial and such designation has restricted the access of the adverse party to such information. [ Note 22.] Use at trial may require that the adverse party have access to material designated as Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) for trial preparation. [ Note 23.]

An objecting party who seeks to use an adverse party’s designated information, in connection with a dispositive motion or at trial, may seek to challenge the designation on that basis. [ Note 24.] A party seeking to maintain protection of a confidential designation or the level of designation (i.e., "trade secret/commercially sensitive" versus "confidential") of challenged materials sought to be used by the objecting party in connection with a dispositive motion or at trial must establish with specificity that disclosure of the material will result in some kind of substantial harm to its business, and that such harm outweighs the necessity of the material to the dispositive motion or to trial practice. [ Note 25.] In the case where redesignation of challenged material to a non-confidential designation is sought in connection with its use for a dispositive motion or at trial, the party seeking to maintain the designation must establish not only some kind of substantial harm to its business, but also that the harm to the party’s business outweighs both the necessity of the material to the dispositive motion or to trial practice and to the traditional right to public access of judicial documents and records. [ Note 26.] Nonetheless, information appropriately designated as Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) may remain under seal, even if relied on in connection with a dispositive motion or final decision, as the Board’s standard protective order is applicable. [ Note 27.]

Please Note: As part of general restyling, effective December 1, 2007, former Fed. R. Civ. P. 26(c)(1)(7) is now Fed. R. Civ. P. 26(c)(1)(G).

NOTES:

1. 37 C.F.R. § 2.116(g); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007); Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). But see 37 C.F.R. § 2.116(g) ("The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.").

2. Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). Cf. Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (Board ordered redesignation of portions of expert report and deposition transcript as non-confidential based on party’s challenge to designation).

3. See, e.g., THK America Inc. v. NSK Co. Ltd., 157 F.R.D. 637, 33 USPQ2d 1248, 1255-56 (N.D. Ill. 1993) (requiring redesignation of publicly available documents marked confidential as non-confidential); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (Board ordered redesignation of portions of expert report and deposition transcript as non-confidential).

4. See, e.g., THK America Inc. v. NSK Co. Ltd., 157 F.R.D. 637, 33 USPQ2d 1248, 1255-56 (N.D. Ill. 1993) (finding party had used "Attorney Eyes Only" classification four times as often as lower confidentiality designation and ordering party to "de-designate" all of the "Attorney’s Eyes Only" documents and reclassify them "Confidential" or "Non-confidential").

5. Beasley v. John Wiley & Sons, Inc., 111 USPQ2d 1623, 1631 (N.D. Ill. 2014) (party moved to provisionally file exhibits which had confidentiality designations with its summary judgment motion and sought leave to file the exhibits publicly, but once defendant withdrew the confidentiality designations for those exhibits, the court deemed the motion moot, allowing plaintiff to file an unredacted version of its summary judgment motion with a public filing of the exhibits); Waterkeeper Alliance, Inc. v. Alan & Kristin Hudson Farm, 278 F.R.D. 136, 141 (D. Md. 2011) (plaintiff challenged defendants’ designations in advance of the submission of dispositive motions, intending to include some of the challenged documents as exhibits to its summary judgment motion); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (to help prepare counsel for cross-examination of applicant’s expert, Board required applicant to provide advance notice to opposer of plans to use expert report or to take expert testimony at trial, and in such a case, opposer’s in-house technical experts may access portion of expert report and expert deposition transcript, which had been designated by applicant to allow only opposer’s outside counsel access). But see Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1656, 1656 n.11 (TTAB 2014) (party unable to raise by motion the issue regarding "trade secret/commercially sensitive" designation of declaration testimony in ACR proceeding in advance of submission of declaration during adverse party’s testimony period, as the Board does not entertain motions in limine), dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016).

6. Fed. R. Civ. P. 26(c)(1); Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). See also United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *2 (TTAB 2019) (good faith effort satisfied with respect to designation under protective order). Cf. 37 C.F.R. § 2.120(f)(1); Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 (TTAB 2014) (good faith effort 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. Cf. Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) ("In order for the meet and confer process to be meaningful and serve its intended purpose, "the parties must present to each other the merits of their respective positions with the same candor, specificity, and support during informal negotiations as during the briefing of discovery motions;" nonmoving party under equal obligation to participate in good faith efforts to resolve the matter).

8. Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). Cf. Amazon Technologies, Inc. v. Wax, 95 USPQ2d 1865, 1868 n.8 (TTAB 2010) (in connection with motion for sanctions, Board found, based on an in camera inspection, opposer properly designated produced materials as trade secret/commercially sensitive).

9. Cf. Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986) (prior to seeking Board intervention, parties must narrow amount of disputed requests to reasonable number); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (nature and the number of discovery requests subject to motion to compel clearly demonstrated that no good faith effort had been made by the parties).

10. In re Violation of Rule 28(d), 635 F.3d 1352, 98 USPQ2d 1144, 1147 (Fed. Cir. 2011) (Rule 26(c)(1) permits court to "issue limited protective orders to prevent the discovery or disclosure of certain information or to specify the use that may be made of the discovered information."); R.C. Olmstead Inc. v. CU Interface LLC, 606 F.3d 262, 94 USPQ2d 1897, 1902 (6th Cir. 2010) (court had discretion to limit access to trade secrets by adverse party’s employees, allowing access only by adverse party’s experts); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950 (TTAB 2006) (citing Fed. R. Civ. P. 26(c)(7), restyled by amendment, to Fed. R. Civ. P. 26(c)(1)(G)). See also Fed. R. Civ. P. 26(c) Notes of Advisory Committee on Rules – 1970 Amendment ("The courts have not given trade secrets automatic and complete immunity against disclosure, but have in each case weighed their claim to privacy against the need for disclosure. Frequently, they have been afforded a limited protection.").

11. In re Violation of Rule 28(d), 635 F.3d 1352, 98 USPQ2d 1144, 1147 (Fed. Cir. 2011). See also 37 C.F.R. § 2.116(g) ("The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.").

12. Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).

13. Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000) ("As between a receiving party which raises a late objection to a designation of confidentiality and a producing party that is forced to move for protection of material previously designated as confidential without objection by the producing party, the Board will look much more favorably on the producing party.").

14. Compare Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1656 n.12 (TTAB 2014) (because Board does not entertain motions in limine, party could not raise issue regarding confidentiality designation of declaration testimony until defendant filed its declarations during its testimony period in ACR case), dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016), with Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1495 n.6 (TTAB 2005) (overruling applicant’s objections as to confidentiality designations of brand awareness studies raised for the first time in final brief, finding such objections untimely and the delay a "waiver as to the ‘confidential’ designation of this evidence.").

15. Fed. R. Civ. P. 26(c)(1); United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *2–3 (TTAB 2019) (the designating party "bears the burden of demonstrating that its confidentiality designations are appropriate"); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999).

16. Fed. R. Civ. P. 26(c)(1). United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *3 (TTAB 2019) (the designating party "must demonstrate a particular need for protection and that a clearly defined and serious injury will result otherwise."). See also, e.g., Deford v. Schmid Products Co., 120 F.R.D. 648, 653 (D. Md. 1987)) (citing cases); 8 C. WRIGHT, A. MILLER, & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE CIVIL § 2035 (3d ed. April 2021 update).

17. United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *3 (TTAB 2019); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1762 (TTAB 1999).

18. Deford v. Schmid Products Co., 120 F.R.D. 648, 653 (D. Md. 1987)) (citing cases); Waelde v. Merck, Sharpe, & Dohme, 94 F.R.D. 27, 28 (E.D. Mich. 1981) (citing cases); United States v. IBM Corp., 67 F.R.D. 40, 46 (S.D.N.Y. 1975)).

19. Deford v. Schmid Products. Co., 120 F.R.D. 648, 653 (D.Md.1987)) (business will have to show disclosure would cause harm to competitive and financial position); Waelde v. Merck, Sharpe, & Dohme, 94 F.R.D. 27, 28 (E.D. Mich. 1981) (citing cases). See, e.g., Apple, Inc. v. Samsung Electronics Co., 727 F.3d 1214, 107 USPQ2d 2048, 2057, 2058 (Fed. Cir. 2013) (finding district court erred in denying motion to seal portions of documents that contained product-specific financial information, including costs, sales, profits and profit margins, and market research, where the parties established that disclosure would cause competitive harm); Baxter International Inc. v. Abbott Laboratories, 297 F.3d 544, 63 USPQ2d 1859 (7th Cir. 2002) (denying motion to place documents under seal because the parties failed to explain why disclosure would harm their competitive position).

20. Deford v. Schmid Products Co., 120 F.R.D. 648, 653 (D. Md. 1987) (citing cases). See, e.g., Apple, Inc. v. Samsung Electronics Co., 727 F.3d 1214, 107 USPQ2d 2048, 2055, 2057 (Fed. Cir. 2013) (finding district court erred in denying motion to seal portions of documents that contained product-specific financial information, including costs, sales, profits and profit margins, which motions to seal were supported by declarations from the parties).

21. Waterkeeper Alliance, Inc. v. Alan & Kristin Hudson Farm, 278 F.R.D. 136, 141 (D. Md. 2011). See Seattle Times Co. v. Rhinehart, 467 U.S. 20, 33 (1984) (pretrial discovery, unlike the trial itself, is usually conducted in private; "restraints placed on discovered, but not yet admitted information are not a restriction on a traditionally public source of information"); Rushford v. New Yorker Magazine, Inc., 846 F.2d 249, 252-53 (4th Cir. 1988)) (discovery, "which is ordinarily conducted in private, stands on a wholly different footing than does a motion filed by a party seeking action by the court;" when documents that are "the subject of a pretrial discovery protective order ... [are] made part of a dispositive motion, they los[e] their status as being ‘raw fruits of discovery’"); 8A C. WRIGHT, A. MILLER, & R. MARCUS, FEDERAL PRACTICE & PROCEDURE CIVIL § 2042 (3d ed. April 2021 update) ("One of the reasons for authorizing broad trial court latitude in restricting dissemination of material garnered through discovery is that the scope of discovery is very broad, often including topics having little bearing on the lawsuit. But when some of those materials are relied upon in a judicial decision, or form the basis for it, the justifications for public access on both First Amendment and common–law grounds increase."). See, e.g., Apple, Inc. v. Samsung Electronics Co., 727 F.3d 1214, 107 USPQ2d 2048, 2055, 2057 (Fed. Cir. 2013) (in considering appeal denying motion to seal, court considered the parties’ competitive need to keep financial and market research private against right to public access to information regarding judicial process).

22. Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1656 (TTAB 2014) (when identity of individual identified during discovery as "trade secret/commercially sensitive" is named as a witness at trial and party chooses to rely on the testimony of that witness at trial, it has waived the protection provided to "trade secret/commercially sensitive" information, and can no longer shield the witness’ identity from adverse party), dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Central Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1143 n.6 (TTAB 2013) (Board noted that while a study was submitted under seal "it is hard to understand how Central can maintain that this information is confidential, yet at the same time rely on it in an attempt to establish the previous public perception of its mark for priority purposes"); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (applicant will not be able to restrict access by opposer’s in-house technical experts to portions of expert deposition testimony and expert report if using expert as witness at trial); Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1713 (TTAB 1999) (in connection with submission of protective order, parties were required to explain why already filed testimony and exhibits proposed to be considered confidential are confidential in nature).

23. Compare Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655-56 (TTAB 2014) (when a party relies on testimonial evidence at trial its adversary must have meaningful opportunity to confront witness and inquire into his or her credibility and the facts to which the witness testifies; Board struck declaration testimony which over-designated the identifying information of the declarants as "trade secret/commercially sensitive," which restricted access to this information by opposer’s in-house personnel and was critical to considering adverse testimony and should not be kept from a party), dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016), with Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (so as to help counsel prepare for cross-examination of applicant’s expert, applicant required by Board to provide advance notice to opposer of plans to use expert report take expert testimony at trial, and in such a case, opposer’s in-house technical experts may access portion of expert report and expert deposition transcript which had been designated to allow only outside counsel to access).

24. See, e.g., Beasley v. John Wiley & Sons, Inc., 111 USPQ2d 1623, 1631 (N.D. Ill. 2014) (party moved to provisionally file exhibits publicly which had confidentiality designations with its summary judgment motion, once defendant withdrew the confidentiality designations for those exhibits, the court deemed the motion moot, allowing plaintiff to file an unredacted version of its summary judgment motion with a public filing of the exhibits); Waterkeeper Alliance, Inc. v. Alan & Kristin Hudson Farm, 278 F.R.D. 136, 141 (D. Md. 2011) (plaintiff challenged defendants’ designations in advance of the submission of dispositive motions in the case, intending to include some of the challenged documents as exhibits to its summary judgment motion). Cf. Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (seeking redesignation of expert report and expert testimony so that it could determine whether the hiring of a rebuttal expert was necessary for trial).

25. Waterkeeper Alliance, Inc. v. Alan & Kristin Hudson Farm, 278 F.R.D. 136, 142 (D. Md. 2011).

26. Waterkeeper Alliance, Inc. v. Alan & Kristin Hudson Farm, 278 F.R.D. 136, 142 (D. Md. 2011).

27. 37 C.F.R. § 2.116(g); Baxter International Inc. v. Abbott Laboratories, 63 USPQ2d 1859 (7th Cir. 2002) ("But those documents, usually a small subset of all discovery, that influence or underpin the judicial decision are open to public inspection unless they meet the definition of trade secrets or other categories of bona fide long-term confidentiality."); Rushford v. New Yorker Magazine, Inc., 846 F.2d 249, 253 (4th Cir. 1988) ("there may be instances in which discovery materials should be kept under seal even after they are made part of a dispositive motion" and the court makes this determination at the time it grants the dispositive motion "and not merely allow[s] continued effect to a pretrial discovery protective order."); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.12 (TTAB 2012) ("because proceedings before the Board are public, all papers should be available to the public, except for information that is truly confidential."). Cf. Apple, Inc. v. Samsung Electronics Co., 727 F.3d 1214, 107 USPQ2d 2048, 2056, 2058 (Fed. Cir. 2013) (district court erred in denying motion to seal with regard to a small subset of financial documents as none of the documents were introduced into evidence so the financial information at issue was not considered by the jury and was not essential to the public understanding of the jury’s damages award, nor was it essential to district court’s rulings on any of the parties’ pretrial motions; with regard to market research reports, district court erred in denying motion to seal where party agreed to make public all information actually cited by the district court or the parties, but sought to seal other information neither cited nor discussed by the district court).