403.02 Time for Service of Discovery Requests and Taking of Depositions
37 C.F.R. § 2.120(a)(3) . . . Discovery depositions must be properly noticed and taken during the discovery period. Interrogatories, requests for production of documents and things, and requests for admission must be served early enough in the discovery period, as originally set or as may have been reset by the Board, so that responses will be due no later than the close of discovery. * * * *
A party may serve written interrogatories, requests for production and things, and requests for admissions on an adversary during the discovery period in an inter partes proceeding before the Board; however, the serving party must have already made its initial disclosures, absent a granted stipulation, granted motion, or order of the Board to the contrary. [ Note 1.] Written discovery may be served concurrently with initial disclosures. [ Note 2.] Additionally, a party cannot notice depositions until it has served its initial disclosures, absent a granted stipulation, granted motion, or order of the Board to the contrary. [ Note 3.] Discovery depositions must be not only properly noticed but also taken during the discovery period (unless the parties stipulate, approved by the Board, to an extension of the period or the Board orders an extension of the period for purposes of taking the deposition). [ Note 4.] Interrogatories, requests for production of documents and things, and requests for admission must be served early enough in the discovery period, as originally set or as may have been reset by the Board, so that responses, including production or inspection of documents, will be due no later than the close of discovery. [ Note 5.] Service of discovery must be made by email, unless otherwise stipulated, or if the serving party shows by written explanation that it attempted service by email but such service could not be made due to technical problems or extraordinary circumstances, by the manner described in 37 C.F.R. § 2.119(b)(1) - 37 C.F.R. § 2.119(b)(4). A party not domiciled in the United States and not yet represented by an attorney licensed to practice law in the United States, is not eligible to use United States postal mail. United States postal mail may not be available for U.S. counsel located outside the United States. [ Note 6.]
NOTES:
1. 37 C.F.R. § 2.120(a)(3) ("A party must make its initial disclosures prior to seeking discovery . . . ."); Dating DNA, LLC v. Imagini Holdings, LLC, 94 USPQ2d 1889 (TTAB 2010) (motion to compel denied where moving party failed to make initial disclosures; service of initial disclosures is a prerequisite to taking discovery).
2. 37 C.F.R. § 2.120(a)(3). See also Luster Products Inc. v. Van Zandt, 104 USPQ2d 1877, 1879 n.2 (TTAB 2012) (initial disclosures may be served concurrently with discovery requests).
3. 37 C.F.R. § 2.120(a)(2)(iv) and 37 C.F.R. § 2.120(a)(3).
4. 37 C.F.R. § 2.120(a)(2)(iv); 37 C.F.R. § 2.120(a)(3). See National Football League v. DNH Management LLC, 85 USPQ2d 1852 (TTAB 2008) (motion to quash granted where deposition noticed during discovery but scheduled after close of discovery); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978) (discovery may not be taken outside the discovery period); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978) (motion to quash granted where party noticed deposition for a date subsequent to the expiration of the discovery period).
5. 37 C.F.R. § 2.120(a)(3). See Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1270 (TTAB 2017) (discovery must be served "early enough … so that responses will be due no later than the close of discovery"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951, 69960 (October 7, 2016). See also Island, LLC v. JBX Pty Ltd., 2021 USPQ2d 779, at *5 (TTAB 2021) (the date of service of discovery requests is determined by the time zone in which the document is transmitted for service),