408.01    Duty to Cooperate

The Board expects parties (and their attorneys or other authorized representatives) to cooperate with one another in the discovery process, [ Note 1.] and looks with extreme disfavor on those who do not. Each party and its attorney or other authorized representative has a duty not only to make a good faith effort to satisfy the discovery needs of its adversary, but also to make a good faith effort to seek only such discovery as is proper and relevant to the issues in the case. [ Note 2.] Discovery before the Board is not governed by the concept of priority of discovery – that is, a party is not relieved of its discovery obligations, including its duty to cooperate, in spite of the fact that an adverse party wrongfully may have failed to fulfill its own obligations. [ Note 3.]

NOTES:

 1.   SeeAnand K. Chavakula v. Praise Broadcasting aka Praise FM, 2020 USPQ2d 10855, at *4 (TTAB 2020) (Board found "troubling" petitioner’s actions deliberately misleading respondent with "promised future service of its discovery responses while in fact it was preparing to file a summary judgment motion…"); Andrew R. Flanders v. DiMarzio, Inc., 2020 USPQ2d 10671, at *2 (TTAB 2020) (Board found that moving party made good faith effort prior to filing motion for protective order where the parties had previously conferenced with the assigned interlocutory attorney to attempt to resolve dispute regarding deposition location of respondent’s designated Fed. R. Civ. P. 30(b)(6) witness); Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016) (parties have affirmative duty to cooperate in the discovery process; improper to file motion for protective order instead of responding to discovery requests in a timely manner); Cadbury UK Ltd. v. Meenaxi Enter., Inc., 115 USPQ2d 1404, 1408 (TTAB 2015) (parties expected to demonstrate good faith and cooperation during discovery; party cannot avoid discovery obligations due to an obvious typographical error in discovery requests); Panda Travel Inc. v Resort Option Enterprises, Inc., 94 USPQ2d 1789, 1791 (TTAB 2009) ("Each party has a duty to make a good faith effort to satisfy the reasonable and appropriate discovery needs of its adversary."); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (quoting Nevada Power Co. v. Monsanto Co., 151 F.R.D. 118, 120 (D. Nev. 1993)) ("In order for the meet and confer process to be meaningful and serve its intended purpose, ‘the parties must present to each other the merits of their respective positions with the same candor, specificity, and support during informal negotiations as during the briefing of discovery motions.’"). See also Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 n.1 (TTAB 2014) (simply ignoring deadlines to serve discovery responses or seek an extension of time to do so is inconsistent with the Board’s expectation that the parties and their attorneys cooperate in the discovery process); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1654 (TTAB 2007) (parties have a duty to cooperate in resolving conflicts in the scheduling and taking of depositions).

 2.   Fed. R. Civ. P. 26(g). See, e.g., SFM, LLC v. Corcamore, LLC, 129 USPQ2d 1072, 1078 (TTAB 2018) (defendant refused to cooperate in the discovery process for over sixteen months), aff’d, 978 F.3d 1298, 2020 USPQ2d 11277 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (parties expected to cooperate in the meet and confer process by presenting to each other the merits of their respective positions with candor, specificity and support); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719, 1721 n.4 (TTAB 1989) (Board warned counsel for opposer that its conduct of discovery in the case was "uncooperative" and "improper" and that any further misconduct may result in the imposition of the estoppel sanction); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (in view of parties’ impasse, Board was burdened with resolving numerous requests for discovery); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304-05 (TTAB 1987) (both parties failed to cooperate, thus saddling Board with needless motions); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986) (prior to seeking Board intervention, parties must narrow amount of disputed requests to reasonable number); Unicut Corp. v. Unicut, Inc., 222 USPQ 341, 344 (TTAB 1984) (failure to cooperate in discovery and comply with Board order resulted in the entry of sanctions in the form of judgment); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (it was clear from number and nature of opposer’s discovery requests and applicant’s blanket objections thereto that neither party was cooperating). See also C. H. Stuart Inc. v. Carolina Closet, Inc., 213 USPQ 506, 507 (TTAB 1980) (opposer’s "voluminous" discovery requests were "oppressive and nothing short of harassment" to applicant); C. H. Stuart Inc. v. S. S. Sarna, Inc., 212 USPQ 386, 387 (TTAB 1980) (Board granted applicant’s motion for protective order; opposer’s "boiler-plate" discovery requests designed for an infringement action deemed harassment); Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 584 (TTAB 1975) (applicant’s motion to compel denied due to lack of good faith effort to resolve dispute); Tektronix, Inc. v. Tek Associates, Inc., 183 USPQ 623, 624 (TTAB 1974) (lack of good faith effort); Gastown Inc. of Delaware v. Gas City, Ltd., 180 USPQ 477, 477-78 (TTAB 1974) (opposer precluded from objecting to applicant’s interrogatories in view of its having served essentially the same interrogatories).

 3.   Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1070 (TTAB 1990) (citing Fed. R. Civ. P. 26(d)) and Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626 (TTAB 1986)).

408.01(a)    Obligation to Conduct Discovery Conference

In the interest of promoting, among other things, cooperation in the discovery process, parties are required to hold a conference to discuss settlement and plans for discovery. [ Note 1.] The purpose of the conference for the parties is to discuss the "nature and basis of the involved claims and defenses, the possibility of settlement of the case or modification of the pleadings, and plans for disclosures and discovery," as well as the subjects set forth in Fed. R. Civ. P. 26(f) and any other subjects that the Board requires to be discussed in the institution order for the case, including alternative means for case resolution such as Accelerated Case Resolution (ACR). [ Note 2.] See TBMP § 528.05(a)(2) and TBMP § 702.04 for further information on ACR. The parties are free to discuss additional topics besides those outlined in Fed. R. Civ. P 26(f) and the institution order that could promote settlement or efficient adjudication of the Board proceeding. [ Note 3.] Mere discussion of settlement does not substitute for a full discovery conference addressing the issues outlined in Fed. R. Civ. P. 26 and the Board’s institution order. [ Note 4.] Thus, the parties are required to discuss their plans relating to disclosures, discovery and trial evidence unless they are successful in settling the case.

All parties to a proceeding have a duty to cooperate and conduct the discovery conference in a timely fashion. [ Note 5.] If a party refuses to cooperate in scheduling the discovery conference, it is recommended that the party seeking to schedule the conference contact the assigned Board attorney via telephone to facilitate the matter prior to the deadline for the conference. [ Note 6.] In such instances, the Board professional will contact the non-cooperating party to schedule the conference, and may participate in the conference. If the uncooperative party fails to respond to Board communications within a reasonable time frame, the Board will issue an order setting a date for the conference, and warning the uncooperative party that the conference will be held as scheduled, and that any party that has not participated may be subject to a motion for sanctions under 37 C.F.R. § 2.120(h). In certain instances, the Board may also order the uncooperative party to show cause why judgment should not be entered against it for failure to participate in the discovery conference. Alternatively, in instances where the party seeking to schedule the conference did not engage the Board, the party may file a motion for sanctions pursuant to 37 C.F.R. § 2.120(h). The Board may, upon grant of a motion for sanctions for failure of a party to participate in a discovery conference, impose any of the sanctions provided in Fed. R. Civ. P. 37(b)(2), including judgment. [ Note 7.]

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)  because of an adverse party’s unwillingness to participate in the required conference; however, the moving party must provide evidence of a good faith effort to schedule the conference in order to be able to prevail on a motion for such sanctions. [ Note 8.] A motion for sanctions against a party for its failure to participate in the required discovery conference must be filed prior to the deadline for any party to make initial disclosures. [ Note 9.]

For a more detailed discussion of discovery conferences, see TBMP § 401.01.

For general information on the conduct of telephone conferences, participation in telephone conferences, and issuance of rulings resulting from telephone conferences, see TBMP § 502.06(a).

NOTES:

 1.   See 37 C.F.R. § 2.120(a)(2); Fed. R. Civ. P. 26(f). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 (August 1, 2007). See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (TTAB 2009).

 2.   See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (TTAB 2009). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959, 69961 (October 7, 2016) (if voluminous productions anticipated, method of service is worthwhile issue to discuss at Board discovery conference; production of ESI is a subject for discussion at discovery conference); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244-45, 42252 (August 1, 2007) (possible modification or supplementation of standard protective order a subject for discovery conference; settlement a subject for discovery conference as well as modification of standard deadlines/obligations, specificity of initial disclosures, and expert disclosures sequence, timing and extent of information or material that must be disclosed to satisfy the expert disclosure obligation; whether to seek mediation, arbitration, mediation, or to proceed under Accelerated Case Resolution, manner in which evidence may be presented at trial, stipulations of facts for trial subject of discovery conference).

 3.   See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (TTAB 2009).

 4.   See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (TTAB 2009) (mere discussion of settlement does not substitute for full discovery conference of subjects set forth in Fed. R. Civ. P. 26 and Board’s institution order).

 5.   See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009) (responsibility to schedule a conference and to confer on each of the topics outlined in Fed. R. Civ. P. 26 and the institution order is a shared responsibility); Guthy-Renker Corp. v. Boyd, 88 USPQ2d 1701, 1703 (TTAB 2008) ("it is the equal responsibility of both parties to ensure that the discovery conference takes place by the assigned deadline"); Influance Inc. v. Zuker, 88 USPQ2d 1859, 1860 n.2 (TTAB 2008) (holding discovery conference is a mutual obligation).

 6.   See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009).

 7.   37 C.F.R. § 2.120(h); Patagonia, Inc. v. Azzolini, 109 USPQ2d 1859, 1861-63 (TTAB 2014).

 8.   See, e.g., Promgirl, Inc., v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009) (opposer’s motion for sanctions in the form of judgment denied where parties were engaged in settlement discussions and opposer did not broach the subject of scheduling the discovery conference until the deadline date, and only after opposer’s settlement offer was rejected); Guthy-Renker Corp. v. Boyd, 88 USPQ2d 1701, 1703-04 (TTAB 2008) (motion for sanctions denied; moving party could have made additional efforts with adverse party to schedule discovery conference, including requesting Board participation in the discovery conference, but failed to do so).

 9.   37 C.F.R. § 2.120(h)(1).

408.01(b)    Obligation to Make Initial and Expert Testimony Disclosures

Fed. R. Civ. P. 26. Duty to Disclose; General Provisions Governing Discovery

  • (a) Required Disclosures.
    • (1) Initial Disclosure.
      • (A) In General. Except as exempted by Rule 26(a)(1)(B) or as otherwise stipulated or ordered by the court, a party must, without awaiting a discovery request, provide to the other parties:
        • (i) the name and, if known, the address and telephone number of each individual likely to have discoverable information—along with the subjects of that information—that the disclosing party may use to support its claims or defenses, unless the use would be solely for impeachment;
        • (ii) a copy—or a description by category and location—of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment;
        • * * * *
    • (2) Disclosure of Expert Testimony.
      • (A) In General. In addition to the disclosures required by Rule 26(a)(1), a party must disclose to the other parties the identity of any witness it may use at trial to present evidence under Federal Rule of Evidence 702, 703, or 705.
      • (B) Witnesses Who Must Provide a Written Report. Unless otherwise stipulated or ordered by the court, this disclosure must be accompanied by a written report—prepared and signed by the witness—if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party’s employee regularly involve giving expert testimony. The report must contain:
        • (i) a complete statement of all opinions the witness will express and the basis and reasons for them;
        • (ii) the facts or data considered by the witness in forming them;
        • (iii) any exhibits that will be used to summarize or support them;
        • (iv) the witness’s qualifications, including a list of all publications authored in the previous 10 years;
        • (v) a list of all other cases in which, during the previous 4 years, the witness testified as an expert at trial or by deposition; and
        • (vi) a statement of the compensation to be paid for the study and testimony in the case.
      • (C) Witnesses Who Do Not Provide a Written Report. Unless otherwise stipulated or ordered by the court, if the witness is not required to provide a written report, this disclosure must state:
        • (i) the subject matter on which the witness is expected to present evidence under Federal Rule of Evidence 702, 703, or 705; and
        • (ii) a summary of the facts and opinions to which the witness is expected to testify.

37 C.F.R. § 2.120(a)(2) 

  • (ii) Initial disclosures must be made no later than thirty days after the opening of the discovery period.
  • (iii) Disclosure of expert testimony must occur in the manner and sequence provided in Rule 26(a)(2) of the Federal Rules of Civil Procedure, unless alternate directions have been provided by the Board in an institution order or any subsequent order resetting disclosure, discovery or trial dates. If the expert is retained after the deadline for disclosure of expert testimony, the party must promptly file a motion for leave to use expert testimony. Upon disclosure by any party of plans to use expert testimony, whether before or after the deadline for disclosing expert testimony, the Board, either on its own initiative or on notice from either party of the disclosure of expert testimony, may issue an order regarding expert discovery and/or set a deadline for any other party to disclose plans to use a rebuttal expert.

As part of the discovery phase parties are obliged to make initial disclosures and, when necessary, expert testimony disclosures. The Board adopted a disclosure regime to promote the early exchange of information and settlement and, for cases that do not settle, "more efficient discovery and trial, reduction of incidents of unfair surprise, and increase the likelihood of fair disposition of the parties’ claims and defenses." [ Note 1.] In addition, the use of routine disclosures of the types provided for in the Federal Rules of Civil Procedure is intended to "obviate the need to use traditional discovery to obtain ‘basic information’ about a party’s claims or defenses." [ Note 2.]

Each party involved in an inter partes proceeding is obligated to make initial disclosures to every other party, by the deadline set in the Board’s institution order, or as may be reset by stipulation of the parties approved by the Board, or by motion granted by the Board, or by order of the Board. [ Note 3.] The initial disclosure requirement is intended to provide for the disclosure of names of potential witnesses and basic information about documents and things that a party may use to support a claim or defense. [ Note 4.] Parties are encouraged in the spirit of cooperation to stipulate to rely on more expansive use of reciprocal disclosures in lieu of formal discovery, as a more efficient and less costly manner of litigating a Board proceeding, subject to Board approval. [ Note 5.]

For a further discussion of initial disclosures, see TBMP § 401.02.

If a party decides to use expert testimony in a Board proceeding, pursuant to Fed. R. Civ. P. 26(a)(2), the party must serve expert disclosures 30 days prior to the close of discovery, and any reset expert disclosure deadline must always be scheduled prior to the close of discovery. [ Note 6.] The expert disclosure requirement is intended to avoid any unfair surprise during the testimony period. [ Note 7.] While the expert disclosure provided for in Fed. R. Civ. P. 26 may be extensive and should not, therefore be filed with the Board, the parties should inform the Board when an expert disclosure is made, so the Board can issue any appropriate order. [ Note 8.] The Board may, for example, suspend proceedings to provide for the taking of any necessary discovery of the proposed expert witness, and to allow the adverse party or parties to determine whether it will be necessary to rely on a rebutting expert. [ Note 9.] Parties are expected to cooperate in the process of exchanging information about any testifying experts, and should discuss during the discovery conference, the possibility of the presentation of expert testimony. [ Note 10.] The parties should revisit these discussions whenever it appears that a testifying expert witness may become involved in the case. [ Note 11.]

Where a party in its disclosures identifies an expert as a possible testifying witness under Rule 26(b)(4)(A), but subsequently re-designates the expert as a non-testifying or consulting expert under Fed. R. Civ. P. 26(b)(4)(D), the opposing party may depose that expert only upon a showing of "exceptional circumstances" under Fed. R. Civ. P. 26(b)(4)(D)(ii). [ Note 12.]

For further information regarding expert disclosures, see TBMP § 401.03.

For a discussion regarding the modification of disclosure obligations, see TBMP § 401.04.

NOTES:

 1.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007). See Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (disclosures, from initial through pretrial, and discovery responses should be viewed as a continuum of communication designed to avoid unfair surprise and to facilitate a fair adjudication of the case on the merits).

 2.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 3.   37 C.F.R. § 2.120(a)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 4.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 5.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 6.   37 C.F.R. § 2.120(a)(2)(iii); 37 C.F.R. § 2.120(a)(2)(iv); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007) (under 37 C.F.R. § 2.120(a)(2), expert disclosures are governed by Fed. R. Civ. P. 26(a)(2) in the absence of an order from the Board setting a deadline). See, e.g., Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1564 n.2 (TTAB 2014) (parties stipulated to deadlines for expert and rebuttal expert reports); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (because Rule 2.120(a)(2) does not require that a disclosing party inform the Board that an expert disclosure has been made; failure to inform the Board of timely disclosure of an expert witness is not a basis for excluding the testimony of such expert witness); Jules Jurgensen/Rhapsody, Inc. v. Baumberger, 91 USPQ2d 1443, 1445 (TTAB 2009) (motion to strike witness testimony granted in view of noncompliance with 37 C.F.R. § 2.121(e)).

 7.   Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (disclosures, from initial through pretrial, and discovery responses should be viewed as a continuum of communication designed to avoid unfair surprise).

 8.   See 37 C.F.R. § 2.120(a)(2)(iii); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See also RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1493 n.3 (TTAB 2013); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011).

 9.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See e.g., Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564-65 (TTAB 2014); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011).

 10.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 11.   See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 n.3 (TTAB 2011) (parties expected to cooperate to resolve problems arising from timely but incomplete expert disclosures).

 12.   Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1568 (TTAB 2014).

408.01(c)    Duty to Cooperate with Regard to Written Discovery and Disclosures

Fed. R. Civ. P. 26(g)(1) Signature Required; Effect of Signature. Every disclosure under Rule 26(a)(1) or (a)(3) and every discovery request, response, or objection must be signed by at least one attorney of record in the attorney’s own name—or by the party personally, if unrepresented—and must state the signer’s address, e-mail address, and telephone number. By signing, an attorney or party certifies that to the best of the person’s knowledge, information, and belief formed after a reasonable inquiry:

  • (A) with respect to a disclosure, it is complete and correct as of the time it is made; and
  • (B) with respect to a discovery request, response, or objection, it is:
    • (i) consistent with these rules and warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law, or for establishing new law;
    • (ii) not interposed for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation; and
    • (iii) neither unreasonable nor unduly burdensome or expensive, considering the needs of the case, prior discovery in the case, the amount in controversy, and the importance of the issues at stake in the action.

37 C.F.R. § 2.120(f)(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. 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, 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.

The signature of a party or attorney constitutes a certification as to a discovery request, response, or objection and disclosure as set forth in Fed. R. Civ. P. 26(g)(1). [ Note 1.] Provision is made, in Fed. R. Civ. P. 26(g), for the imposition of appropriate sanctions if a certification is made in violation of the rule. See also TBMP § 106.02 (Signature of Submissions). "The certification duty requires the party or attorney to make a reasonable inquiry into the factual basis of his response, request or objection." [ Note 2.]

Because the signature of a party or its attorney to a request for discovery constitutes a certification by the party or its attorney that, inter alia, the request is warranted, consistent with the Federal Rules of Civil Procedure, and not unreasonable or unduly burdensome, a party ordinarily will not be heard to contend that a request for discovery is proper when propounded by the party itself but improper when propounded by its adversary. A contention of this nature will be entertained only if it is supported by a persuasive showing of reasons why the discovery request is proper when propounded by one party but improper when propounded by another. [ Note 3.] Similarly, the signature of a party or its attorney to a discovery response (i.e., response to interrogatory, request to admit, or request for production) or objection is a certification by the party or its attorney that, inter alia, the response or objection is warranted, consistent with the Federal Rules of Civil Procedure, and not interposed for any improper purpose such as to cause unnecessary delay or needlessly increase the cost of litigation. The certification requirement is distinguishable from the signature requirements in rules such as Fed. R. Civ. P. 33 and certifies that the party or attorney has made a reasonable effort to assure that all available information and documents responsive to the discovery demand have been provided. [ Note 4.]

Under Fed. R. Civ. P. 26(g)(1)(A), a signature with respect to a disclosure constitutes certification that the disclosure is complete and correct at the time it was made. For further information regarding the form and signatures of disclosures, see TBMP § 401.06.

In addition, the duty to cooperate is embodied in the prerequisite that prior to filing a motion to compel disclosure or discovery, the moving party must make a good faith effort, by conference or correspondence, to resolve the discovery dispute prior to seeking Board intervention. [ Note 5.] See also TBMP § 523.02. The motion must be supported by a showing that such a good faith effort was made by conference or correspondence. [ Note 6.] The Board may, as necessary in any particular case, ensure that the parties have engaged in a sufficient effort to resolve their differences regarding discovery by requiring the parties to conference with the Board attorney assigned to the case prior to filing a motion to compel disclosures or discovery. See TBMP § 413.01.

NOTES:

 1.   See Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990). Cf. 37 C.F.R. § 11.18(b); Fed. R. Civ. P. 11.

 2.   Fed. R. Civ. P. 26 Notes of Advisory Committee on Rules – 1983 Amendment.

 3.   See, e.g.,Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) (Board was persuaded that certain interrogatories would be unduly burdensome).

 4.   Fed. R. Civ. P. 26 Notes of Advisory Committee on Rules – 1983 Amendment.

 5.   37 C.F.R. § 2.120(f)(1). See, e.g., Hot Tamale Mama…and More, LLC v. SF Investments., Inc., 110 USPQ2d 1080, 1082 (TTAB 2014) (Board found that single email exchange alone was insufficient to satisfy the good faith effort obligation to resolve discovery dispute prior to filing motion to compel); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (parties expected to cooperate in the meet and confer process by presenting to each other the merits of their respective positions with candor, specificity and support).

 6.   37 C.F.R. § 2.120(f)(1). See Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 (TTAB 2014) (statement of good faith effort to be supported by recitation of communications conducted including dates, summary of telephone conversations and copies of correspondence exchanged, where applicable). Cf. International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1605 (TTAB 2002) (permission to file motion to compel denied where motion was devoid of good faith effort to resolve dispute prior to seeking Board intervention).