403.01    In General

37 C.F.R. § 2.120(a)  [Discovery]

  • (1) . . . The Board will specify the deadline for a discovery conference, the opening and closing dates for the taking of discovery, and the deadlines within the discovery period for making initial disclosures and expert disclosure. The trial order setting these deadlines and dates will be included with the notice of institution of the proceeding.
  • (2)
    • (i) . . . The discovery period will be set for a period of 180 days.
    • * * * *
    • (iv) The parties may stipulate to a shortening of the discovery period . . . . Limited extensions of the discovery period may be granted upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. If a motion for an extension is denied, the discovery period may remain as originally set or as reset. * * * *
  • (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 been reset by the Board, so that responses will be due no later than the close of discovery. * * * *

When a timely opposition or petition to cancel in proper form has been filed, and the required fee has been submitted (or at the time described in 37 C.F.R. § 2.92  for an interference and 37 C.F.R. § 2.99(c)  for a concurrent use proceeding), the Board sends out a notice advising the parties of the institution of the proceeding and provides a web link or web address to access the electronic proceeding record which constitutes service of the proceeding. [ Note 1.] See TBMP § 310, TBMP § 1003 and TBMP § 1106. The notice includes a trial order setting the opening and closing dates for the discovery period, assigning each party’s time for taking testimony, and the deadlines for the discovery conference and disclosures. [ Note 2.] The opening of discovery coincides with the deadline for the discovery conference. The date set for the close of discovery is 180 days after the opening of discovery.

Parties may modify the discovery and trial schedule, including the deadline for making disclosures, if the parties file, and the Board approves, a stipulation or motion to that effect. [ Note 3.] Parties must inform the Board, by stipulation or motion, any time they agree to modify their obligations under the rules governing disclosures and discovery, as well as when they agree to modify deadlines or schedules that involve disclosures, discovery, trial or briefing. [ Note 4.] In addition to stipulating to extend the discovery period, parties may stipulate to shorten the discovery period. [ Note 5.] The expert disclosure deadline, however, must always be scheduled prior to the close of discovery. [ Note 6.]

The traditional discovery devices, namely, discovery depositions, interrogatories, requests for production of documents and things, and requests for admission, are available for use only during the discovery period. [ Note 7.] For further information regarding the timing of discovery requests and discovery depositions, see TBMP § 403.02. A party has no obligation to respond to the merits of an untimely request for discovery, nor is a party obliged to respond to the merits of discovery when initial disclosures have not been served, although a party should object on those bases. [ Note 8.]

For further information regarding the timing of initial, expert, and pretrial disclosures for inter partes proceedings, see TBMP § 401.02, TBMP § 401.03, and TBMP § 702.01.

NOTES:

 1.   37 C.F.R. § 2.105(a)  and 37 C.F.R. § 2.113(a).

 2.   37 C.F.R. § 2.120(a)(1)  and 37 C.F.R. § 2.121(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007).

 3.   37 C.F.R. § 2.120(a)(2)(iv); 37 C.F.R. § 2.120(a)(3); 37 C.F.R. § 2.121(a); 37 C.F.R. § 2.121(c); and 37 C.F.R. § 2.121(d). See, e.g., Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 (TTAB 2013) (parties stipulated to waive pretrial disclosures); Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767-68 (TTAB 2008) (Board approved parties’ stipulation to waive their reciprocal obligation to make initial disclosures).

 4.   37 C.F.R. § 2.120(a)(2)(iv); 37 C.F.R. § 2.120(a)(3); 37 C.F.R. § 2.121(a); 37 C.F.R. § 2.122(c); and 37 C.F.R. § 2.121(d). See Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767-68 (TTAB 2008) (parties must inform Board by stipulation or motion when they agree to modify their disclosure and discovery obligations; the parties’ filing should include a description of alternate plans for discovery).

 5.   37 C.F.R. § 2.120(a)(2)(iv). See H.D. Lee Co. v. Maidenform, Inc., 87 USPQ2d 1715, 1720 n.55 (TTAB 2008) (parties may stipulate to shortening of discovery period).

 6.   37 C.F.R. § 2.120(a)(2)(iv).

 7.   37 C.F.R. § 2.120(a)(3). See also Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978) (although a specific time period is not provided in Fed. R. Civ. P. 34, it is implicit that utilization thereof is limited to the discovery period); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978) (depositions are to be taken during discovery period).

 8.   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"); Dating DNA, LLC v. Imagini Holdings, LLC, 94 USPQ2d 1889, 1893 (TTAB 2010) (service of initial disclosures is a prerequisite to taking discovery); Amazon Technologies v. Wax, 93 USPQ2d 1702, 1704-06 (TTAB 2009) (opposer’s mistaken belief that applicant failed to serve initial disclosures does not excuse opposer’s failure to respond to or properly object to applicant’s interrogatories and document requests on the basis of failure to serve initial disclosures).