702.01 Pretrial Disclosures
Pretrial disclosures are governed by 37 C.F.R. § 2.121(e) and Fed. R. Civ. P. 26(a)(3) with one exception: the Board does not require pretrial disclosure of each document or other exhibit that a party plans to introduce at trial as provided by Fed. R. Civ. P. 26(a)(3)(A)(iii). [ Note 1.] Disclosures allow parties to know prior to trial the identity of trial witnesses, thus avoiding surprise witnesses. [ Note 2.]
Because the trial schedule in a Board proceeding employs alternating testimony periods with gaps between them, the due dates for pretrial disclosures will be different for each party and will be specified in the Board’s notice instituting the proceeding. [ Note 3.] Under 37 C.F.R. § 2.121(e), the party scheduled to present evidence must make pretrial disclosures no later than fifteen days prior to the opening of each testimony period, or on such alternate schedule as may be provided by order of the Board. Witnesses who are expected to or may testify must be disclosed under Fed. R. Civ. P. 26(a)(3)(A). [ Note 4.]
In making its pretrial disclosures, the party must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises. [ Note 5.] The party must disclose general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness. [ Note 6.]
Pretrial disclosure of a witness under 37 C.F.R. § 2.121(e) does not substitute for issuance of a proper notice of examination under 37 C.F.R. § 2.123(c) or 37 C.F.R. § 2.124(b). [ Note 7.]
If a party does not plan to take testimony from any witnesses in any form, it must so state in its pretrial disclosure. [ Note 8.]
When a party fails to make required pretrial disclosures, any adverse party or parties may have remedy by way of a motion to the Board to delay or reset any subsequent pretrial disclosure deadlines and/or testimony periods. [ Note 9.]
A party may object to improper or inadequate pretrial disclosures. [ Note 10.] See TBMP § 533.02(b).
The pretrial disclosure requirement cannot simply be ignored because some information about a testifying individual may be known by the adverse party or parties. [ Note 11.]
A party need not disclose, prior to its testimony period, any notices of reliance it intends to file during its testimony period. [ Note 12.] Thus, each document or other exhibit that a party plans to introduce at trial does not need to be disclosed to the other party. [ Note 13.] A party planning to introduce an adverse party’s discovery deposition, or part thereof, need not disclose such plans. [ Note 14.] For further information regarding the submission of discovery depositions under notice of reliance, see TBMP § 704.09.
If pretrial disclosures or the notice of examination of witnesses served pursuant to 37 C.F.R. § 2.123(c) are improper or inadequate with respect to any witness, an adverse party may move to quash a noticed testimony deposition of that witness before the deposition occurs. [ Note 15.] The adverse party may also cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all relevant circumstances. [ Note 16.] When testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike. [ Note 17.] A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with 37 C.F.R. § 2.121(e). [ Note 18.] On the other hand, a motion to strike the testimony of a witness for lack of proper or adequate notice of examination must request the exclusion of the entire testimony of that witness and not only a part of that testimony. [ Note 19.]
If the deficiencies in the pretrial disclosure are technical in nature, the parties are encouraged to resolve the matter between themselves, or to bring the matter to the Board’s attention promptly for resolution for judicial economy and before the parties incur the expense associated with taking a testimonial deposition. The Board allows parties to cure timely, but technically deficient matters. [ Note 20.]
A party making a pretrial disclosure is not required to file routinely a copy of such disclosure with the Board. In this regard, the Board’s practice varies slightly from that set forth in Fed. R. Civ. P. 26(a)(3)(A). Alerting the Board to a party’s witness list is not a purpose of the pretrial disclosure requirement, as the Board does not preside at the taking of testimony or at a pretrial conference. [ Note 21.]
Parties may stipulate to waive the requirement for pretrial disclosures in ACR cases. [ Note 22.]
The resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party. [ Note 23.]
For information on pretrial disclosure of expert witnesses, see TBMP § 401.03 or for motions to strike the testimony of an expert witness, see TBMP § 533.02(b).
NOTES:
1. See 37 C.F.R. § 2.121(e). Accord Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1103 (TTAB 2018).
2. Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372 (TTAB 2011) and Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009) (citing MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42257-58 (August 1, 2007)). See, e.g., Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (opposer’s motion to strike pretrial disclosure of the identity of three witnesses denied--no surprise where one witness had been identified in initial and supplemental initial disclosures, and failure to disclose in supplemental initial disclosures the identities of the other two found substantially justified and harmless when applicant ascertained the identities shortly before serving pretrial disclosures, but applicant had listed the subject matter of their testimony in initial disclosures, and the record showed that opposer was aware of the witnesses and the pertinent information covered in their testimony declarations); Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015) (both parties are required to serve initial disclosures identifying witnesses having discoverable information and to serve pretrial disclosures naming the witnesses expected to testify at trial); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as confidential) ,appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (witness first identified in pretrial disclosure and not previously identified in initial disclosures, discovery responses or supplements resulted in unfair surprise and was neither harmless nor substantially justified); Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011) (failure to identify witnesses during discovery but named in pretrial disclosures resulted in unfair surprise to adversary).
3. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).
4. 37 C.F.R. § 2.121(e). Accord Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1100-01 (TTAB 2018). See Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015); Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371-72 n.1 (TTAB 2011) ("A party is expected to disclose all witnesses it expects to call as well as those that it may call if the need arises").
5. 37 C.F.R. § 2.121(e). See Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (pretrial disclosures identifying three witnesses sufficient under the circumstances); Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371 (TTAB 2011) (pretrial disclosure adequate and sufficient); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444-45 (TTAB 2009) (under Trademark Rules, petitioner is required to name any witnesses from whom it intended to take testimony, or even might take testimony, if needed; 37 C.F.R. § 2.121(e) contemplates that contact information of a witness may previously have been provided to the party receiving a disclosure and need not be repeated). Cf. Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *2-3 (TTAB 2020) (respondent’s motion to strike rebuttal witness for failure to disclose denied where petitioner substituted its legal assistant for its previously disclosed attorney for same authentication purpose).
6. 37 C.F.R. § 2.121(e). See Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (applicant’s pretrial disclosures identifying three witnesses sufficient under the circumstances); Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 (TTAB 2015) (respondent’s pretrial disclosures defective to the extent that they fail to summarize the types of documents and things respondent intended to introduce as exhibits to his testimony; all forty-six exhibits attached thereto and all portions of respondent’s testimony referring to the attached exhibits not considered); Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371 (TTAB 2011) (pretrial disclosure adequate and sufficient).
10. See 37 C.F.R. § 2.121(e) and 37 C.F.R. § 2.123(e)(3). See also Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as confidential), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 n.4 (TTAB 2011). Cf. Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *7 (TTAB 2020) (objection that evidence was not adequately disclosed in pretrial disclosures overruled as untimely when first raised in trial brief; objection is curable and should have been made via motion to strike promptly after testimony declaration and exhibits were filed); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *1 n.2 (TTAB 2019) (petitioner’s objection to respondent’s erroneous reference to Fed. R. Evid. 702 in its second amended pretrial disclosures overruled as harmless; error did not void the disclosures or any of the referenced testimony because of clarification in an earlier disclosure of the error and none of its disclosed witnesses were experts).
11. See Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009).
12. 37 C.F.R. § 2.121(e). Accord Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 n.4 (TTAB 2015).
14. See 37 C.F.R. § 2.120(k)(1) ("The discovery deposition of a party or of anyone who at the time of taking the deposition was an officer, director or managing agent of a party, or a person designated by a party pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, may be offered in evidence by an adverse party.").
15. 37 C.F.R. § 2.121(e). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(e) to add that a party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. The amendment codifies current Office practice.").
17. 37 C.F.R. § 2.121(e). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(e) to add that when testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike…"). See also Azalea Health Innovations, Inc. v. Rural Health Care, Inc., 125 USPQ2d 1236, 1240-41 (TTAB 2017) (granting opposer’s motion to strike discovery deposition transcripts of non-party witnesses submitted by applicant under notice of reliance to impeach the witnesses’ declaration trial testimony, where there was no stipulation to allow the non-party witnesses’ discovery depositions, applicant did not elect oral cross-examination of the witnesses on their testimonial declarations, and applicant did not file a motion seeking Board approval to use the discovery depositions, or a motion claiming exceptional circumstances). Cf. Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *2-3 (TTAB 2020) (respondent’s motion to strike declaration of rebuttal witness denied where petitioner substituted its legal assistant for its previously disclosed attorney for same authentication purpose); Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (denying opposer’s motion to strike pretrial disclosure of the identity of three witnesses where one witness had been identified in initial and supplemental initial disclosures and failure to disclose earlier the identities of the other two found substantially justified and harmless).
18. 37 C.F.R. § 2.123(e)(3)(i). See Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (denying opposer’s motion to strike pretrial disclosure of the identity of three witnesses where one witness had been identified in initial and supplemental initial disclosures and failure to disclose earlier the identities of the other two found substantially justified and harmless); Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 (TTAB 2015) (respondent’s improper service of pretrial disclosures at counsel for petitioner’s former address held harmless to the extent the disclosure identified a single witness, respondent himself); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as confidential), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327-28 (TTAB 2011) (Opposer’s failure to name one witness until original pretrial closures and twenty-six witnesses until supplement to amended pretrial disclosures was neither harmless nor substantially justified and motion to quash granted as to twenty-six witnesses but testimony of one witness, identified months before in original pretrial disclosure, not excluded provided adverse party be given an opportunity to take a discovery deposition); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009) (failure to disclose testimony witness in initial disclosures considered as a relevant circumstance in determining whether to strike testimony deposition). Cf. Empresa Cubana Del Tabaco d.b.a Cubatabaco v. General Cigar Co., Inc., 2020 USPQ2d 10988, at *3 (TTAB 2020) (supplemental expert report stricken as untimely and improper supplementation under Fed. R. Civ. P. 26(e) because failure to disclose supplemental report not substantially justified or harmless).
19. 37 C.F.R. § 2.123(e)(3)(ii).
20. See Carl Karcher Enterprise, Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 n.4 (TTAB 2011). Cf. Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011) (applicant could not cure surprise without moving to quash, or seeking to reopen discovery, or engaging in unplanned preparation to cross-examine witnesses identified for the first time in pretrial disclosures).
21. See Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 (TTAB 2011).
22. Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 n.5 (TTAB 2015) (where neither party served pretrial disclosures and the parties’ ACR stipulation did not provide for the exchange of pretrial disclosures, motion to strike witness declaration denied).
23. 37 C.F.R. § 2.121(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(a) to add that the resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party. These amendments codify current Office practice.").