523 Motion to Compel Disclosure or Discovery
523.01 In General
37 C.F.R. § 2.120(f) Motion for an order to compel disclosure or discovery.
- (1) If a party fails to make required initial disclosures or expert testimony disclosure, or fails to designate a person pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, or if a party, or such designated person, or an officer, director or managing agent of a party fails to attend a deposition or fails to answer any question propounded in a discovery deposition, or any interrogatory, or fails to produce and permit the inspection and copying of any document, electronically stored information, or tangible thing, the party entitled to disclosure or seeking discovery may file a motion to compel disclosure, a designation, or attendance at a deposition, or an answer, or production and an opportunity to inspect and copy…
- (2) When a party files a motion for an order to compel initial disclosures, expert testimony disclosure, or discovery, the case will be suspended by the Board with respect to all matters not germane to the motion. After the motion to compel is filed and served, no party should file any paper that is not germane to the motion, except as otherwise specified in the Board’s suspension order. Nor may any party serve any additional discovery until the period of suspension is lifted or expires by or under order of the Board. The filing of a motion to compel any disclosure or discovery shall not toll the time for a party to comply with any disclosure requirement or to respond to any outstanding discovery requests or to appear for any noticed discovery deposition. If discovery has closed, however, the parties need not make pretrial disclosures until directed to do so by the Board.
In inter partes proceedings before the Board, a motion to compel is available in the event of a failure to provide required disclosures or discovery requested by means of discovery depositions, interrogatories, and requests for production of documents and things. [ Note 1.] A motion to compel is also available to compel attendance at a discovery conference [ Note 2.], or to compel a party to supplement inadequate disclosures [ Note 3.], or to compel initial disclosures, see 37 C.F.R § 2.120(f). With regard to initial disclosures, however, a party may file a motion for sanctions when the adverse party has expressly stated that it does not intend to meet its obligation to provide initial disclosures. [ Note 4.] A motion to compel discovery that has not been propounded through discovery requests, however, should not be filed. [ Note 5.] For further information regarding the duty to hold a discovery conference, see TBMP § 408.01(a).
Motions to compel are also available to compel an answer to a deposition question. Because discovery depositions are taken out of the presence of the Board, if a witness being deposed, or the attorney for the witness, believes a question is improper, an objection may be stated, but the question normally should be answered subject to the stated objection. See TBMP § 404.08(c). However, if a witness being deposed objects to, and refuses to answer, a particular question, and if the deposition is being taken pursuant to a subpoena, the propounding party may attempt to obtain an immediate ruling on the propriety of the objection, by adjourning the deposition and applying, under 35 U.S.C. § 24, to the federal district court, in the jurisdiction where the deposition is being taken, for an order compelling the witness to answer. See TBMP § 404.09 and TBMP § 411.04. In the absence of a court order compelling an answer, the propounding party’s only alternative, if it wishes to compel an answer, is to complete the deposition and then file a motion to compel with the Board. [ Note 6.]
Further, a party who fails to provide its initial disclosures will be barred from propounding discovery requests, whether interrogatories, requests for production or requests for admission, and may not file a motion to compel to obtain responses to improperly propounded discovery requests. [ Note 7.]
In accordance with 37 C.F.R. § 2.120(f), when a party files a motion to compel disclosures or discovery, the Board will issue an order suspending the proceeding with respect to all matters not germane to the motion, and no party should file any paper that is not germane to the discovery dispute, except as otherwise specified in the Board’s suspension order. However, neither the filing of a motion to compel nor the Board’s resulting suspension order tolls the time for parties to make required disclosures or respond to any outstanding discovery requests which had been served prior to the filing of the motion to compel, nor does it excuse a party’s appearance at any discovery deposition which had been duly noticed prior to the filing of the motion to compel. When the motion to compel is filed after discovery has closed, but before the day of the deadline for pretrial disclosures for the first testimony period, the time period for making pretrial disclosures will be suspended and dates will be reset after the motion to compel is decided. [ Note 8.]
37 C.F.R. § 2.120(f) provides that a motion to compel initial disclosures must be filed within thirty days after the deadline therefor, a motion to compel expert testimony disclosure must be filed prior to the close of the discovery period, and a motion to compel discovery must be filed before the day of the deadline for pretrial disclosures for the first testimony period as originally set or as reset. [ Note 9.] 37 C.F.R. § 2.120(i)(1) provides that a motion to determine the sufficiency of an answer or objection to a request for admission must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset. [ Note 10.] These rules are designed to ensure that all discovery disputes are resolved prior to the commencement of trial. A motion to compel discovery or to test the sufficiency of an answer or objection to a request for admission is untimely if filed on or after the day of the deadline for pretrial disclosures for the first testimony period, even if the day of the deadline for pretrial disclosures is subsequently reset. [ Note 11.] See TBMP § 523.03.
The motion to compel procedure is not applicable to requests for admission. The procedure to be followed in the case of requests for admission is as set forth in 37 C.F.R. § 2.120(i)(1) and Fed. R. Civ. P. 36(a). See also TBMP § 411.03 (Requests for Admission) and TBMP § 524 (Motion to Test Sufficiency of Response to Admission Request).
For information concerning the effect of a party’s failure to timely respond to interrogatories and document requests, see TBMP § 403.03 (Time for Service of Discovery Responses), TBMP § 405.04(a) (Time for Service of Responses), TBMP § 406.04(a) (Time for Service of Responses), and TBMP § 411 (Remedy for Failure to Provide Disclosures or Discovery); and see TBMP § 523 (Motion to Compel Discovery Responses) and TBMP § 524 (regarding motion to test sufficiency of responses to admission requests).
NOTES:
1. See 37 C.F.R. § 2.120(f). See also, e.g., Johnson and Johnson and Roc International S.A.R.L. v. Obschestvo s Oranitchennoy; Otvetstvenn Ostiu "Wds," 95 USPQ2d 1567, 1570 (TTAB 2010) (TTAB 2010) (motion to compel applicant to supplement interrogatory responses granted); Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008) (motion to compel available remedy when adverse party fails to provide initial or expert disclosures); Jain v. Ramparts Inc., 49 USPQ2d 1429, 1436 (TTAB 1998) (interrogatories and document requests); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1298 (TTAB 1997) (discovery deposition); MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953 (TTAB 1979) (interrogatories); General Sealer Corp. v. H. H. Robertson Co., 193 USPQ 384, 384 (TTAB 1976) (motion for sanctions treated as motion to compel); Fidelity Prescriptions, Inc. v. Medicine Chest Discount Centers, Inc., 191 USPQ 127, 128 (TTAB 1976) (party may file motion to compel if it believes objections to discovery requests to be improper). See also Spa International, Inc. v. European Health Spa, Inc., 184 USPQ 747, 747 (TTAB 1975) (discussing when it is appropriate to file a motion to compel or a motion for discovery sanctions); Johnson & Johnson v. Diamond Medical, Inc., 183 USPQ 615, 616 (TTAB 1974) (motion to compel is not untimely simply because it is made after discovery period has expired, merely because it relates back to earlier timely request; motion for discovery sanctions denied because no discovery order has issued); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974) (motion to compel production of documents), overruled on other grounds by Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171-72 (TTAB 1975); Dow Corning Corp. v. Doric Corp., 183 USPQ 126, 127 (TTAB 1974) (Board can rule on objections to request for production in connection with the filing of a motion to compel). Cf. Fed. R. Civ. P. 37(a)(3)(B).
2. Promgirl Inc. v. JPC Co., 94 USPQ2d 1759, 1762-63 (TTAB 2009) (plaintiff’s motion for sanctions in the form of judgment for defendant’s failure to participate in discovery conference denied, but alternative motion to compel attendance at a discovery conference granted). Note, however, that a motion to compel a party to participate in a discovery conference is not a prerequisite to filing a motion for sanctions under 37 C.F.R. § 2.120(h).
3. RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1493 (TTAB 2013) (motion to compel available for inadequate expert disclosures); Influance Inc. v. Zuker, 88 USPQ2d 1859, 1860 n.3 (TTAB 2008) (motion to compel available for inadequate initial disclosures).
4. Kairos Institute of Sound Healing LLC v. Doolittle Gardens, LLC, 88 USPQ2d 1541, 1542-43 (TTAB 2008).
5. Chix Gear, LLC v. Princess Race Wear Corp., 2019 USPQ2d 455321, at *2-3 (TTAB 2019) (motion to compel production of metadata denied because propounding party never sought the production of such information/documentation by way of its discovery requests).
6. See 37 C.F.R. § 2.120(f)(1); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974) overruled on other grounds by Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171-72 (TTAB 1975).
7. 37 C.F.R. § 2.120(a)(3); Dating DNA LLC v. Imagini Holdings Ltd., 94 USPQ2d 1889, 1893 (TTAB 2010); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705-06 (TTAB 2009) (a party that wishes to object to discovery on the ground that its opponent failed to make its required initial disclosures prior to serving the discovery must assert that basis for objection to the discovery clearly and specifically); MySpace, Inc. v. Donnell Mitchell, 91 USPQ2d 1060, 1060 (TTAB 2009) (defendant’s motion to compel denied because defendant had not made the required initial disclosures).
8. See 37 C.F.R. § 2.120(f)(2) ("If discovery has closed, however, the parties need not make pretrial disclosures until directed to do so by the Board."). See also HighBeam Marketing LLC v. Highbeam Research LLC, 85 USPQ2d 1902, 1907 (TTAB 2008) (motion to compel attendance of employees for depositions granted where moving party made good faith effort to schedule depositions but opposer failed to cooperate).
9. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 82 Fed. Reg. 33804 (July 21, 2017). Cf. KID-Systeme GmbH v. Turk Hava Yollari Teknik Anonim, 125 USPQ2d 1415, 1416-17 (TTAB 2018) (motion for summary judgment must be filed the day before the deadline for pretrial disclosures); Shared, LLC v. SharedSpaceofAtlanta, LLC, 125 USPQ2d 1143, 1144 (TTAB 2017) ("[A] motion for judgment on the pleadings must also be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset.").
10. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 82 Fed. Reg. 33804 (July 21, 2017). Cf. KID-Systeme GmbH v. Turk Hava Yollari Teknik Anonim, 125 USPQ2d 1415, 1416-17 (TTAB 2018) (motion for summary judgment must be filed the day before the deadline for pretrial disclosures); Shared, LLC v. SharedSpaceofAtlanta, LLC, 125 USPQ2d 1143, 1144 (TTAB 2017) ("[A] motion for judgment on the pleadings must also be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset.").
11. Cf. La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm’r 1976) (motion for summary judgment filed during the period for taking testimony untimely).
523.02 Special Requirements for Motion
37 C.F.R. § 2.120(f) Motion for an order to compel disclosure or discovery.
- (1) ... A motion to compel discovery shall include a copy of the request for designation of a witness or of the relevant portion of the discovery deposition; or a copy of the interrogatory with any answer or objection that was made; or a copy of the request for production, any proffer of production or objection to production in response to the request, and a list and brief description of the documents, electronically stored information, or tangible things that were not produced for inspection and copying. A motion to compel initial disclosures, expert testimony disclosure, or discovery must be supported by a showing from the moving party that such party or the attorney therefor has made a good faith effort, by conference or correspondence, to resolve with the other party or the attorney therefor the issues presented in the motion but the parties were unable to resolve their differences. If issues raised in the motion are subsequently resolved by agreement of the parties, the moving party should inform the Board in writing of the issues in the motion which no longer require adjudication.
A motion to compel must include a copy of the request for discovery and the response thereto, as specified in 37 C.F.R. § 2.120(f). [ Note 1.]
In addition, the motion to compel disclosures or discovery must be supported by a written statement from the moving party that such party or its attorney has made a good faith effort, by conference or correspondence, to resolve with the other party or its attorney the issues presented in the motion, and has been unable to reach agreement. [ Note 2.] The statement should contain a recitation of the communications conducted including dates, a summary of telephone conversations, and where applicable, copies of any correspondence exchanged such as email and letters, or notes to the file. [ Note 3.]
In determining whether a good faith effort to resolve the discovery dispute has been made, the Board may consider, among other things, whether the moving party has investigated the possibility of resolving the dispute, whether, depending on the circumstances, sufficient effort was made towards resolution, and whether attempts at resolution were incomplete. [ Note 4.]
In the event that issues raised in the motion are subsequently resolved by the parties, the moving party should inform the Board in writing, filed through ESTTA, of the issues in the motion that no longer require determination. [ Note 5.]
For information concerning the special requirements for a motion to compel answers to interrogatories, or to produce documents, ESI or tangible things that are the subject of a general objection on the ground of excessive number, see TBMP § 405.03(e) and TBMP § 406.05(e). Cf. TBMP § 526.
NOTES:
1. See Fidelity Prescriptions, Inc. v. Medicine Chest Discount Centers, Inc., 191 USPQ 127, 128 (TTAB 1976) (Board must be able to render a meaningful decision on a motion to compel); Amerace Corp. v. USM Corp., 183 USPQ 506, 506-07 (TTAB 1974); Helene Curtis Industries, Inc. v. John H. Breck, Inc., 183 USPQ 126, 126 (TTAB 1974) (party must submit a copy of actual written objections to interrogatories along with motion to compel).
2. 37 C.F.R. § 2.120(f). See Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081-82 (TTAB 2014) (discussing generally good faith effort requirement; finding single email exchange between the parties insufficient to establish good faith effort as it was incumbent upon applicant to make at least one additional inquiry); Amazon Technologies, Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (good faith effort requirement); Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1679 n.11 (TTAB 2005) (motion to compel demonstrated good faith effort and included copies of relevant document requests and responses); Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626, 632 (TTAB 1986) (failed to submit documentary evidence of good faith effort); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986) (parties must narrow disputed requests for discovery to a reasonable number); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (nature and the number of discovery requests clearly demonstrated that no good faith effort had been made); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448, 450 (TTAB 1979) (good faith effort is required where there has been a complete failure to respond to discovery; telephone call to counsel sufficient); MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 954 (TTAB 1979) (same; a statement that discovery has not been responded to is insufficient).
3. Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 (TTAB 2014).
4. Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 (TTAB 2014).
5. 37 C.F.R. § 2.120(f). See, e.g., Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 (TTAB 1987) (late responses rendered motion to compel, based on complete non-responsiveness, moot).
523.03 Time for Filing Motion
37 C.F.R. § 2.120(f) Motion for an order to compel disclosure or discovery.
- (1) ... A motion to compel initial disclosures must be filed within thirty days after the deadline therefor and include a copy of the disclosure(s), if any, and a motion to compel an expert testimony disclosure must be filed prior to the close of the discovery period. A motion to compel discovery must be filed before the day of the deadline for pretrial disclosures for the first testimony period as originally set or as reset. …
A motion to compel initial disclosures must be filed within thirty days after the deadline therefor to allow time for the non-compliant party to conduct discovery after making its disclosures. [ Note 1.] A motion to compel expert testimony disclosures must be filed prior to the close of the discovery period. [ Note 2.]
A motion to compel discovery does not necessarily have to be filed during the discovery period. [ Note 3.] However, the motion should be filed within a reasonable time after the failure to respond to a request for discovery or after service of the response believed to be inadequate and must, in any event, be filed before the day of the deadline for pretrial disclosures for the first testimony period. [ Note 4.] A moving party should also wait a reasonable time after the responses are due to file a motion to compel, to allow time for receipt of responses. [ Note 5.] If the day before the deadline for pretrial disclosures for the first testimony period is reset before the day of the deadline for pretrial disclosures for the first testimony period passes, a motion to compel filed before the rescheduled or reset day of the deadline for pretrial disclosures for the first testimony period is timely. However, as of the day of the deadline for pretrial disclosures for the first testimony period, a motion to compel filed is untimely, even if it is filed prior to the opening of the day of a rescheduled or reset deadline for pretrial disclosures for the first testimony period. [ Note 6.] There is no provision in the rule for Board discretion to consider an untimely motion to compel. Trial schedules include a forty-five day period between the close of discovery and the day of the deadline for pretrial disclosures for the first testimony period to allow time for the filing of any necessary discovery motions.
NOTES:
3. See H.D. Lee Co. v. Maidenform, Inc., 87 USPQ2d 1715, 1719 n.10 (TTAB 2008); Johnson & Johnson v. Diamond Medical, Inc., 183 USPQ 615, 617 (TTAB 1974).
4. 37 C.F.R. § 2.120(f); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 82 Fed. Reg. 33804 (July 21, 2017). See, e.g., Asustek Computer Inc. v. Chengdu Westhouse Interactive Entertainment Co., 128 USPQ2d 1470, 1470-71 (TTAB 2018) (reconsideration of Board order denying untimely motion to compel filed on deadline for pretrial disclosures denied); Cf. Shared, LLC v. SharedSpaceofAtlanta, LLC, 125 USPQ2d 1143, 1144 (TTAB 2017) ("[A] motion for judgment on the pleadings must also be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset.")..
5. See37 C.F.R. § 2.120(f); MySpace, Inc. v. Donnell Mitchell, 91 USPQ2d 1060, 1061 n.2 (TTAB 2009) (because timely-served discovery responses might not arrive until after deadline, receiving party should wait a reasonable time beyond service date before making a motion alleging failure to serve). See, e.g., Societa Per Azioni Chianti Ruffino Esportazione Vinicola Toscana v. Colli Spolentini Spoletoducale SCRL, 59 USPQ2d 1383, 1383 (TTAB 2001) (deficiencies in applicant’s discovery responses should have been addressed by timely filing of properly-supported motion to compel discovery). Please Note: The deadlines for filing motions to compel were changed in the January 14, 2017 revisions to 37 C.F.R. § 2.120(e) renumbered as § 2.120(f). Prior Board decisions may cite to former deadlines no longer applicable in inter partes proceedings.
6. To be clear, if the day of the deadline for pretrial disclosures was reset after the deadline was past, a motion to compel would be untimely. Cf. La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 234-36 (Comm’r 1976) (motion for summary judgment filed during the period for taking testimony untimely).
523.04 Failure to File Motion to Compel
If a party that served a request for discovery receives a response thereto that it believes to be inadequate, but fails to file a motion to challenge the sufficiency of the response, it may not thereafter be heard to complain about the sufficiency thereof. [ Note 1.] Accord TBMP § 524.04 (regarding failure to file motion regarding sufficiency of admission responses). Cf. TBMP § 527.01(e) (Estoppel Sanction).
NOTES:
1. Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir. 2012) (Board did not abuse its discretion by refusing to strike plaintiff’s evidence where defendant failed to follow up on plaintiff’s offer to produce the evidence at a mutually agreeable time and place and in view of defendant’s failure to file a motion to compel); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1719-20 (TTAB 2008) (party that receives response it believes inadequate but fails to file a motion to test sufficiency of response, may not thereafter complain about its insufficiency); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1656 (TTAB 2002) (having failed to file motion to compel, defendant will not later be heard to complain that interrogatory responses were inadequate); Linville v. Rivard, 41 USPQ2d 1731, 1733 (TTAB 1996) (objections that discovery requests are, for example, ambiguous or burdensome, are not of a nature which would lead propounding party to believe that the requested information does not exist and party should have filed motion to compel), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (where applicant gave partial answers and otherwise objected to requests as cumulative or burdensome but opposer did not file motion to compel, modify discovery requests, or otherwise pursue material, evidence introduced by applicant at trial was considered), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994); overruled on other grounds, The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626 (Fed. Cir. 2009); Seligman & Latz, Inc. v. Merit Mercantile Corp., 222 USPQ 720, 723 (TTAB 1984) (Board will not impose sanction of drawing adverse inferences against party based on inconsistent responses to questions asked during discovery deposition without motion to compel complete responses and violation of an order compelling answers). See also Societa Per Azioni Chianti Ruffino Esportazione Vinicola Toscana v. Colli Spolentini Spoletoducale SCRL, 59 USPQ2d 1383, 1383 (TTAB 2001) (motion to compel time-barred).