406.01 When Permitted and By Whom
A party may serve discovery written requests for the production of documents and things on any other party only during the discovery period, provided that the serving party has either previously served or concurrently serves therewith its initial disclosures, absent a stipulation by the parties or a granted motion or upon order of the Board to the contrary. [ Note 1.] TBMP § 403.02. Requests for production of documents and things must be served early enough in the discovery period, as originally set or as may have been reset by the Board, so that the written responses will be due and production of documents will be provided no later than the close of discovery. [ Note 2.] TBMP § 403.02. If requests for production are combined with a notice of taking a discovery deposition (i.e., if it is requested that the deponent bring designated documents to the deposition), the requests for production must be served at least 30 days prior to the scheduled date of the deposition. [ Note 3.] TBMP § 113.04 (Manner of Service), and TBMP § 403.03 (Time for Service of Discovery Responses).
Requests for production may not be served on a non-party. [ Note 4.] However, if a discovery deposition deponent is a non-party witness residing in the United States, production of designated documents by the witness at the deposition may be obtained by means of a subpoena duces tecum. [ Note 5.] See TBMP § 404.03(a)(2). A subpoena is unnecessary, however, if the non-party witness is willing to produce the documents voluntarily.
Parties seeking to serve document production requests on a natural person residing in a foreign country should be aware that the laws of some foreign countries may preclude such discovery. [ Note 6.] In determining when it is appropriate to impose sanctions for non-compliance with discovery due to a conflict with foreign laws, the following factors are considered: (1) the good faith of the non-complying party, (2) whether the non-complying party would incur foreign criminal liability, and (3) whether alternative sources of information are available. [ Note 7.]
NOTES:
2. 37 C.F.R. § 2.120(a)(3). See also 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 (October 7, 2016).
3. See Fed. R. Civ. P. 34(a); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978).
4. See Fed. R. Civ. P. 34(a).
5. 35 U.S.C. § 24; Fed. R. Civ. P. 45. But see El Encanto, Inc. v. Hatch Chile Co., Inc., 825 F.3d 1161, 119 USPQ2d 1139, 1144 (10th Cir. 2016) (party to Board proceeding can obtain nonparty documents by subpoena duces tecum under Fed. R. Civ. P. 45 without deposition); Dan Foam ApS v. Sleep Innovations Inc., 106 USPQ2d 1939, 1942-43 (TTAB 2013) (discussing notice requirement to adverse party under Fed. R. Civ. P. 45(b)(1) for a subpoena duces tecum (without deposition) issued to non-party and noting that respondent could have sought its own subpoena of the non-party to obtain additional documents and/or a discovery deposition).
6. Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197, 200-01 (1958) (Swiss government ordered Swiss plaintiff in U.S. court proceeding not to produce certain documents).
7. Cochran Consulting Inc. v. Uwatec USA Inc., 102 F.3d 1224, 41 USPQ2d 1161, 1163 (Fed. Cir. 1996) (citing Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197 (1958)).