403.05 Need for Early Initiation of Discovery
403.05(a) To Allow Time for "Follow-up" Discovery
Pursuant to 37 C.F.R. § 2.120(a)(3), interrogatories, requests for production of documents and things, and requests for admission must be served early enough in the discovery period, as originally set or as may have been reset by the Board, so that responses will be due no later than the close of discovery. If a party wishes to have an opportunity to take "follow-up" discovery after it receives responses to its initial requests for discovery, it must serve its initial requests early in the discovery period, so that when it receives responses thereto, it will have time to prepare and serve additional discovery requests, the responses to which also must be due no later than the close of the discovery period. See TBMP § 403.04.
403.05(b) To Facilitate Introduction of Produced Documents
37 C.F.R. § 2.120(i) Requests for admission. The total number of requests for admission which a party may serve . . . shall not exceed seventy-five. . . . [I]ndependent of this limit, a party may make one comprehensive request for admission of any adverse party that has produced documents for an admission authenticating specific documents, or specifying which of those documents cannot be authenticated.
37 C.F.R. § 2.120(k)(3)(ii) [Use of discovery deposition, answer to interrogatory, admission or written disclosure.] A party that has obtained documents from another party through disclosure or under Rule 34 of the Federal Rules of Civil Procedure may not make the documents of record by notice of reliance alone, except to the extent that they are admissible by notice of reliance under the provisions of § 2.122(e), or the party has obtained an admission or stipulation from the producing party that authenticates the documents.
37 C.F.R. § 2.122(e) Printed publications and official records.
- (1) Printed publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant in a particular proceeding, and official records, if the publication or official record is competent evidence and relevant to an issue, may be introduced in evidence by filing a notice of reliance on the material being offered in accordance with paragraph (g) of this section. The notice of reliance shall specify the printed publication (including information sufficient to identify the source and the date of the publication) or the official record and the pages to be read; and be accompanied by the official record or a copy thereof whose authenticity is established under the Federal Rules of Evidence, or by the printed publication or a copy of the relevant portion thereof. A copy of an official record of the Office need not be certified to be offered in evidence.
- (2) Internet materials may be admitted into evidence under a notice of reliance in accordance with paragraph (g) of this section, in the same manner as a printed publication in general circulation, so long as the date the internet materials were accessed and their source (e.g., URL) are provided.
37 C.F.R. § 2.122(g) Notices of Reliance. . . . A notice of reliance shall be filed during the testimony period of the party that files the notice. For all evidence offered by notice of reliance, the notice must indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding. Failure to identify the relevance of the evidence, or associate it with issues in the proceeding, with sufficient specificity is a procedural defect that can be cured by the offering party within the time set by Board order.
Documents produced in response to a request for production of documents or through disclosures may not be made of record by notice of reliance alone, except to the extent that the documents are otherwise admissible by notice of reliance, for example, as printed publications or official records under 37 C.F.R. § 2.122(e). However, there are a number of different methods by which documents produced in response to a request for production of documents that do not qualify for submission under 37 C.F.R. § 2.122(e) may be made of record. See TBMP § 704.09 and TBMP § 704.11. The most straightforward way is for the parties to stipulate that any party may introduce by notice of reliance documents produced by any other party, subject only to objections as to relevance and competence, materiality, or weight. [ Note 1.] Three other methods are available for use only if the request for production of documents is served relatively early in the discovery period.
First, if there remains sufficient time in the discovery period for requests for admission to be served and answered, a party that has obtained documents from another party through a request for production of documents or through disclosures may serve on its opponent a request for admission of the genuineness of the subject documents, which should be attached as exhibits to the request for admission. [ Note 2.] Independent of the numerical limit on the number of requests for admission that may be served during a proceeding, a party is allowed one comprehensive request for admission of any adverse party that has produced documents for authenticating specific documents, or specifying which of those documents cannot be authenticated. [ Note 3.] Then, during its testimony period, the propounding party may file a notice of reliance, pursuant to 37 C.F.R. § 2.120(k)(3)(ii), on the request for admission, the exhibits thereto, and its adversary’s response.
Second, if the discovery period has not yet expired, the party which obtained the documents may make them of record by taking a discovery deposition of its adversary, marking the documents as exhibits thereto, and having the witness identify the documents during the deposition. The propounding party may then submit the deposition and identified exhibits during its testimony period under a notice of reliance. Alternatively, the documents may be introduced during the taking of a testimonial deposition of an adversary who can identify the documents. [ Note 4.]
Third, the request for production of documents may be combined with a notice of the taking of the adversary’s discovery deposition; that is, the combined request and notice may ask that the deponent bring the requested documents to his or her deposition. However, a party served with a request for production of documents has thirty days from the date of service of the request in which to respond thereto. See TBMP § 403.03. Moreover, in proceedings before the Board, a discovery deposition must be both properly noticed and taken before the end of the discovery period. [ Note 5.] See TBMP § 403.02. Thus, a combined notice of deposition and request for production of documents normally must be served at least thirty days prior to the close of the discovery period. [ Note 6.]
For a full discussion of making evidence of record in a Board proceeding, see TBMP Chapter 700.
NOTES:
1. 37 C.F.R. § 2.120(k)(3)(ii); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69962 (October 7, 2016) ("…a party may make documents produced by another party of record by notice of reliance alone if the party has obtained an admission or stipulation from the producing party that authenticates the documents."). See, e.g., ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1353 n.6 (TTAB 2007) (opposer filed notice of reliance on applicant’s response to request for admission and exhibits thereto that all documents it produced in response to opposer’s discovery requests were authentic for purposes of admission into evidence during the testimony period in this opposition proceeding); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103-04 (TTAB 2007) (because respondent availed itself of Fed. R. Civ. P. 33(d) to provide documents in response to petitioner’s interrogatories and admitted via a request for admission that the documents it produced were true and correct copies of authentic documents, the documents could be introduced by way of notice of reliance).
2. Fed. R. Civ. P. 36(a)(2).
3. 37 C.F.R. § 2.120(i); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69962 (October 7, 2016).
4. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1427 n.6 (TTAB 2013).
6. See 37 C.F.R. § 2.120(a)(3) ("[R]equests for production of documents and things . . . must be served early enough in the discovery period . . . so that responses will be due no later than the close of discovery. Responses to . . . requests for production of documents and things . . . must be served within thirty days from the date of service of such discovery requests.").