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 discovery depositions, see TBMP §404.01; for 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 discovery depositions such that the number of depositions sought is proportional to the needs of the case and truly necessary [ Note 6.], and also with respect to interrogatory requests, document requests, and requests for admission such that the requests are not rendered harassing and oppressive. [ Note 7.] 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)").Cf. Spliethoff's Bevrachtingskantoor B.V. v. United Yacht Transport LLC, 2020 USPQ2d 10605, at *9 (TTAB 2020) (after considering whether movant made "particularized showing" of why the requested discovery is necessary, motion for leave to exceed deposition limit denied).

 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.   Spliethoff's Bevrachtingskantoor B.V. v. United Yacht Transport LLC, 2020 USPQ2d 10605, at *3 (TTAB 2020) ("Before noticing any deposition, a party should assess whether it would be proportional to the needs of the case and truly necessary, taking into account the time and expense involved for even one deposition.").

 7.   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).