412 Protective Orders

37 C.F.R. § 2.116(g) The Trademark Trial and Appeal Board’s standard protective order is automatically imposed in all inter partes proceedings unless the parties, by stipulation approved by the Board, agree to an alternative order, or a motion by a party to use an alternative order is granted by the Board. The standard protective order is available at the Office’s Web site. No material disclosed or produced by a party, presented at trial, or filed with the Board, including motions or briefs which discuss such material, shall be treated as confidential or shielded from public view unless designated as protected under the Board’s standard protective order, or under an alternative order stipulated to by the parties and approved by the Board, or under an order submitted by motion of a party granted by the Board. The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.

Excerpts from Board’s Standard Protective Order:

1) Classes of Protected Information.

The Rules of Practice in Trademark Cases provide that all inter partes proceeding files, as well as the involved registration and application files, are open to public inspection. The terms of this Order are not to be used to undermine public access to such files. When appropriate, however, a party or witness, on its own or through its attorney, may seek to protect the confidentiality of information by employing one of the following designations.

Confidential - Material to be shielded by the Board from public access.

Confidential – Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) - Material to be shielded by the Board from public access, restricted from any access by the parties, and available for review by outside counsel for the parties and, subject to the provisions of paragraphs 4 and 5, by independent experts or consultants for the parties.

Material designated as Confidential – Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive may include the following types of information: (1) sensitive technical information, including current research, development and manufacturing information; (2) sensitive business information, including highly sensitive financial or marketing information; (3) competitive technical information, including technical analyses or comparisons of competitor’s products or services; (4) competitive business information, including non-public financial and marketing analyses, media scheduling, comparisons of competitor’s products or services, and strategic product/service expansion plans; (5) personal health or medical information; (6) an individual’s personal credit, banking or other financial information; or (7) any other commercially sensitive information the disclosure of which to non-qualified persons subject to this Order the producing party reasonably and in good faith believes would likely cause harm.

2) Information Not to Be Designated as Protected.

Information may not be designated as subject to any form of protection if it (a) is, or becomes, public knowledge, as shown by publicly available writings, other than through violation of the terms of this Order; (b) is acquired by a non-designating party or non-party witness from a third party lawfully possessing such information and having no obligation to the owner of the information; (c) was lawfully possessed by a non-designating party or non-party witness prior to the opening of discovery in this proceeding, and for which there is written evidence of the lawful possession; (d) is disclosed by a non-designating party or non-party witness legally compelled to disclose the information; or (e) is disclosed by a non-designating party with the approval of the designating party.

3) Access to Protected Information.

The provisions of this Order regarding access to protected information are subject to modification by written agreement of the parties or their attorneys and approval by the Board.

Administrative Trademark Judges, Board attorneys, and other employees of the Board are bound to honor the parties’ designations of information as protected, except as otherwise required by law, but are not required to sign forms acknowledging the terms and existence of this Order. Court reporters, stenographers, video technicians or others who may be employed by the parties or their attorneys to perform services incidental to this proceeding will be bound only to the extent that the parties or their attorneys make it a condition of employment or obtain agreements from such individuals, in accordance with the provisions of paragraph 4.

Parties are defined as including individuals, officers of corporations, partners of partnerships, members of limited liability companies/corporations, and management employees of any type of business organization.
Attorneys for parties are defined as including in-house counsel and outside counsel, including support staff operating under counsel’s direction, such as paralegals or legal assistants, secretaries, and any other employees or independent contractors operating under counsel’s instruction.
Independent experts or consultants include individuals retained by a party for purposes related to prosecution or defense of the proceeding but who are not current or former employees, officers, members, directors, or partners of any party, affiliates of any party, or the attorneys of any party or its affiliates, or competitors to any party, or employees or consultants of such competitors with respect to the subject matter of the proceeding.
Non-party witnesses include any individuals to be deposed during discovery or trial, whether willingly or under subpoena issued by a court of competent jurisdiction over the witness.

Parties and their attorneys shall have access to information designated as confidential, subject to any agreed exceptions.

Outside counsel, but not in-house counsel, shall have access to information designated as Confidential – Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive).

Independent experts or consultants, non-party witnesses, and any other individual not otherwise specifically covered by the terms of this order may be afforded access to confidential information in accordance with the terms that follow in paragraph 4. Further, independent experts or consultants may have access to Confidential – Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) information if such access is agreed to by the parties or ordered by the Board, in accordance with the terms that follow in paragraphs 4 and 5.

37 C.F.R. § 2.120(g) Motion for a protective order. Upon motion by a party obligated to make initial disclosures or expert testimony disclosure or from whom discovery is sought, and for good cause, the Trademark Trial and Appeal Board may make any order which justice requires to protect a party from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the types of orders provided by clauses (A) through (H), inclusive, of Rule 26(c)(1) of the Federal Rules of Civil Procedure. If the motion for a protective order is denied in whole or in part, the Board may, on such conditions (other than an award of expenses to the party prevailing on the motion) as are just, order that any party comply with disclosure obligations or provide or permit discovery.

Fed. R. Civ. P. 26(c)(1) In General. A party or any person from whom discovery is sought may move for a protective order in the court where the action is pending—or as an alternative on matters relating to a deposition, in the court for the district where the deposition will be taken. The motion must include a certification that the movant has in good faith conferred or attempted to confer with other affected parties in an effort to resolve the dispute without court action. The court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the following:

(A) forbidding the disclosure or discovery;
(B) specifying terms, including time and place or the allocation of expenses, for the disclosure or discovery;
(C) prescribing a discovery method other than the one selected by the party seeking discovery;
(D) forbidding inquiry into certain matters, or limiting the scope of disclosure or discovery to certain matters;
(E) designating the persons who may be present while the discovery is conducted;
(F) requiring that a deposition be sealed and opened only on court order;
(G) requiring that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a specified way; and
(H) requiring that the parties simultaneously file specified documents or information in sealed envelopes, to be opened as the court directs.

Fed. R. Civ. P. 26(c)(2) Ordering Discovery. If a motion for a protective order is wholly or partly denied, the court may, on just terms, order that any party or person provide or permit discovery.

Protective orders in the context of Board inter partes proceedings refer to (1) the Board’s standard protective order governing the exchange of information and materials and modifications thereto, and (2) motions for protective orders pursuant to 37 C.F.R. § 2.120(g), "to protect a party from annoyance, embarrassment, oppression, or undue burden or expense, . . . ." Both types of protective orders are discussed below.

412.01 In General – Board Standard Protective Order

For inter partes proceedings pending or commenced on or after August 31, 2007, the Board’s standard protective order is automatically in place to govern the exchange of information unless the parties, by stipulation approved by the Board, agree to an alternative order, or a motion by a party to use an alternative order is granted by the Board. [ Note 1.] The Board’s notice of institution will advise parties that the standard protective order applies, and that parties may view the Board’s standard protective order at the USPTO website at www.uspto.gov/ttab. [ Note 2.] It is not necessary for the parties to sign copies of the Board’s protective order for it to take effect, although it may be desirable to sign for other reasons.See TBMP § 412.03.

The Board’s standard protective order provides for two tiers of protected information (1) Confidential and (2) Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive). Parties and their attorneys shall have access to information designated as confidential, subject to any agreed exceptions. Outside counsel, but not in-house counsel, shall have access to information designated as trade secret/commercially sensitive. [ Note 3.] Parties and those parties or individuals appearing pro se will not have access to information designated as "Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive)". In cases involving independent experts or consultants, non-party witnesses, or any individual not falling within the definition of a party or attorney, such individuals must sign an acknowledgement form agreeing to be bound by the standard protective order during and after the proceedings, as a condition for obtaining access to protected information. [ Note 4.] The Board has the authority to sanction attorneys and individuals determined to be in breach during a proceeding. [ Note 5.] See also TBMP § 527.

In Board proceedings, access to a party’s "Confidential" or "Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive)" is not provided as a matter of course, but rather must only be provided in response to a proper and relevant discovery request or when the party chooses to use such information in support of its case at trial. [ Note 6.] The Board’s standard protective order does not automatically protect all information. [ Note 7.] Parties must actively utilize the provisions when seeking to designate protected information. [ Note 8.] Thus, the burden falls on the party seeking to designate information as protected. If a party fails to designate a discovery response or submission as confidential under the terms of the protective order and/or redact confidential portions thereof, the confidentiality of the information is deemed waived. [ Note 9.] Nonetheless, when responding to discovery or filing submissions before the Board, the party seeking to designate information as "Confidential" or "Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive)" has a duty to make a meaningful effort to designate only that information that warrants the designated level of protection. [ Note 10.] For information regarding the designation of material as confidential and procedures regarding redaction at trial, see TBMP § 412.01(a) and TBMP § 703.01(p).

Parties cannot withhold properly discoverable information on the basis of confidentiality since the terms of the Board’s standard protective order automatically apply. [ Note 11.] In instances where a party has refused to provide discoverable information on such grounds, the Board, where appropriate, may order the party to provide such information consistent with the terms of the protective order. [ Note 12.]

Parties are free to modify the terms of the Board’s standard protective order, and are encouraged to discuss any proposed modifications during their discovery conference. [ Note 13.] For further information regarding modifications to the Board’s standard protective order upon stipulation, see TBMP § 412.02(a).

Apart from protective orders protecting a party’s information, the Board may issue protective orders addressing other issues. On motion pursuant to 37 C.F.R. § 2.120(g), showing good cause, by a party from which discovery is sought, the Board may make any order which justice requires to protect a party from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the types of orders described in clauses (A) through (H) of Fed. R. Civ. P. 26(c). [ Note 14.] See also TBMP § 527 and TBMP § 703.01(p). To establish good cause, the movant must submit "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." [ Note 15.] The moving party seeking a protective order bears the burden of showing good cause. The movant must demonstrate that its ability to litigate will be prejudiced, not merely increase the difficulty of managing the litigation. [ Note 16.] Among the types of discovery orders that may be entered, the Board has the discretion to enter a protective order that a discovery deposition not be had or that requests for admissions need not be answered. [ Note 17.] The applicability of the Board’s standard protective order does not preclude a party, when appropriate, from moving for a protective order under applicable Trademark or Federal Rules, when the Board’s standard order does not cover the extant circumstances or is viewed by the moving party as providing insufficient protection. [ Note 18.] For further information on motions for protective orders, see TBMP § 410, TBMP § 412.02 and TBMP § 526.

NOTES:

1. 37 C.F.R. § 2.116(g); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007). See, e.g., Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988, at *2 (TTAB 2021) ("The Board’s SPO is automatically imposed in all inter partes proceedings.") (citing Trademark Rule 2.116(g)); Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1544 (TTAB 2009).

2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007). A link to the standard protective order may be found on the Board’s home page of the USPTO website at www.uspto.gov/ttab.

3. United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *2 (TTAB 2019) ("Parties, including in-house counsel, do not have access to information designated ‘AEO’.").

4. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42251 (August 1, 2007).

5. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42251 (August 1, 2007).

6. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42251 (August 1, 2007). See e.g., Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1656 (TTAB 2014) (while trade secret/commercially sensitive information as to witness identity was protectable during discovery, once party relied on testimony of so designated witness at trial, identity of witness designated as trade secret/commercially sensitive waived), dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016).

7. 37 C.F.R. § 2.116(g). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007).

8. See 37 C.F.R. § 2.116(g); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007).

9. See, e.g., Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988, at *19 (TTAB 2021) (European Union’s General Data Protection Regulation (GDPR) does not per se require redaction of business records because the Board’s standard protective order provides a means for protecting sensitive personal information); Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1633 n.6 (TTAB 2007).

10. See, e.g., Azalea Health Innovations, Inc. v. Rural Health Care, Inc., 125 USPQ2d 1236, 1238 (TTAB 2017) ("A rule of reasonableness dictates what information should be [designated confidential and] redacted, and only in very rare instances should an entire submission be deemed confidential."); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014) (Board proceedings are designed to be transparent to the public and the contents of proceeding files publicly available; improper designation of materials as confidential thwarts that intention); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.4 (TTAB 2011) (excessive markings of various information as confidential complicates record and often indicates that matter is improperly designated or not useful to case), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1635 (TTAB 2011) (parties to refrain from improperly designating evidence or a show cause order may issue); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (finding that information concerning expert’s credentials and background were overdesignated as confidential or highly confidential in expert report and granting motion to redesignate that portion of the expert report as non-confidential); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495, n.5 (TTAB 2005) (where entirety of the briefs were deemed "confidential," Board subsequently requested and received redacted copies). See also 37 C.F.R. § 2.116(g) ("The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.")

11. See, e.g., Intex Recreation Corp. v The Coleman Co., 117 USPQ2d 1799, 1801 (TTAB 2016) (party may not redact confidential information from documents responsive to document requests); Amazon Technologies, Inc. v. Wax, 93 USPQ2d 1702, 1706 n.6 (TTAB 2009).

12. 37 C.F.R. § 2.120(f)(1) and 37 C.F.R. § 2.120(h)(1).

13. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007); Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988, at *2 (TTAB 2021) (Board’s protective order may be modified by stipulation of the parties, approved by the Board, or upon motion granted by the Board). But see United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *3 (TTAB 2019) ("[T]he parties may not agree to redefine the Board’s definition of what information constitutes ‘Confidential’ and ‘AEO’ information. The parties may agree to change who has access to information and materials, but the designations retain the meaning the Board dictated in the Standard Protective Order.").

14.See See Fed. R. Civ. P. 26(c)(1); 37 C.F.R. § 2.120(g). See, e.g.,Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1674 (TTAB 2005).

15. FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999). See also The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013) (finding opposer’s allegations of undue burden and expense "merely conclusory.").

16. A. Hirsh, Inc. v. United States, 657 F. Supp. 1297, 1305 (C.I.T. 1987). See also The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2153 (TTAB 2013) (citing A. Hirsh Inc. v. United States, 657 F.Supp. 1297, 1305 (C.I.T. 1987)).

17. See, e.g., The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013) (granting protective order with regard to duplicative requests for admissions and those that sought admissions as to unpleaded registrations); Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1675 (TTAB 2005) (applicant’s motion for protective order to prevent taking of additional discovery depositions is granted as to three out of six employees of applicant who were to be deposed).

18. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007).

412.01(a) Proper Designation of Confidential Matter

Excerpts from Board’s Standard Protective Order:

1) Classes of Protected Information.

Confidential - Material to be shielded by the Board from public access.

Confidential – Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) - Material to be shielded by the Board from public access, restricted from any access by the parties, and available for review by outside counsel for the parties and, subject to the provisions of paragraphs 4 and 5, by independent experts or consultants for the parties.

Material designated as Confidential – Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) may include the following types of information: (1) sensitive technical information, including current research, development and manufacturing information; (2) sensitive business information, including highly sensitive financial or marketing information; (3) competitive technical information, including technical analyses or comparisons of competitor’s products or services; (4) competitive business information, including non-public financial and marketing analyses, media scheduling, comparisons of competitor’s products or services, and strategic product/service expansion plans; (5) personal health or medical information; (6) an individual’s personal credit, banking or other financial information; or (7) any other commercially sensitive information the disclosure of which to non-qualified persons subject to this Order the producing party reasonably and in good faith believes would likely cause harm.

2) Information Not to Be Designated as Protected.

14) Challenges to Designations of Information as Protected.

If the parties or their attorneys disagree as to whether certain information should be protected, they are obligated to negotiate in good faith regarding the designation by the disclosing party. If the parties are unable to resolve their differences, the party challenging the designation may make a motion before the Board seeking a determination of the status of the information.

A challenge to the designation of information as protected must be made substantially contemporaneous with the designation, or as soon as practicable after the basis for challenge is known. When a challenge is made long after a designation of information as protected, the challenging party will be expected to show why it could not have made the challenge at an earlier time. The party designating information as protected will, when its designation is timely challenged, bear the ultimate burden of proving that the information should be protected.

37 C.F.R. § 2.27(c) [Pending trademark application index; access to applications.] Decisions of the Director and the Trademark Trial and Appeal Board in applications and proceedings relating thereto are published or available for inspection or publication.

37 C.F.R. § 2.120(g) Motion for a protective order. Upon motion by a party obligated to make initial disclosures or expert testimony disclosure or from whom discovery is sought, and for good cause, the Trademark Trial and Appeal Board may make any order which justice requires to protect a party from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the types of orders provided by clauses (A) through (H), inclusive, of Rule 26(c)(1) of the Federal Rules of Civil Procedure. If the motion for a protective order is denied in whole or in part, the Board may, on such conditions (other than an award of expenses to the party prevailing on the motion) as are just, order that any party comply with disclosure obligations or provide or permit discovery.

37 C.F.R. § 2.125(f) Upon motion by any party, for good cause, the Trademark Trial and Appeal Board may order that any part of a deposition transcript or any exhibits that directly disclose any trade secret or other confidential research, development, or commercial information may be filed under seal and kept confidential under the provisions of § 2.27(e). If any party or any attorney or agent of a party fails to comply with an order made under this paragraph, the Board may impose any of the sanctions authorized by § 2.120(h).

Fed. R. Civ. P. 26(c) Protective Orders.

(1) In General. A party or any person from whom discovery is sought may move for a protective order in the court where the action is pending—or as an alternative on matters relating to a deposition, in the court for the district where the deposition will be taken. The motion must include a certification that the movant has in good faith conferred or attempted to confer with other affected parties in an effort to resolve the dispute without court action. The court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the following:
- (A) forbidding the disclosure or discovery;
- (B) specifying terms, including time and place or the allocation of expenses, for the disclosure or discovery;
- (C) prescribing a discovery method other than the one selected by the party seeking discovery;
- (D) forbidding inquiry into certain matters, or limiting the scope of disclosure or discovery to certain matters;
- (E) designating the persons who may be present while the discovery is conducted;
- (F) requiring that a deposition be sealed and opened only on court order;
- (G) requiring that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a specified way; and
- (H) requiring that the parties simultaneously file specified documents or information in sealed envelopes, to be opened as the court directs.
(2) Ordering Discovery. If a motion for a protective order is wholly or partly denied, the court may, on just terms, order that any party or person provide or permit discovery.

Fed. R. Civ. P. 26(g) Signing Disclosures and Discovery Requests, Responses, and Objections.

(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.

The automatic imposition of the Board’s standard protective order upon commencement of the Board proceeding [ Note 1.] is designed to facilitate the exchange of information in connection with disclosures and during pretrial discovery by allowing parties to designate materials as "Confidential" or "Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive)" without a preliminary showing of good cause under 37 C.F.R. § 2.120(g) and Fed. R. Civ. P. 26(c). The Board’s standard protective order is a blanket protective order [ Note 2.] which does not automatically protect all information [ Note 3.] but allows parties to designate in good faith only those items a party and/or its counsel believes are subject to protection. [ Note 4.]

Parties must actively utilize the provisions in the Board’s standard protective order to designate information as "Confidential" or "Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive)". [ Note 5.] Thus, the burden falls on the party seeking to designate information as protected, and if a party fails to designate the information as protected under the terms of the Board’s standard protective order and/or redact "Confidential" or "Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive)" portions thereof, the confidentiality of the information is deemed waived. [ Note 6.]

Because a confidential designation of discovery or deposition testimony or other information limits what an opposing party can do with the materials and is one step removed from filing documents under seal, producing parties or their counsel are expected to act in good faith in designating information as "Confidential" or "Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive)" under the terms of the Board’s standard protective order. [ Note 7.] The fact that the Board’s standard protective order is automatically entered upon commencement in a Board proceeding does not give a party unbridled authority to designate its discovery responses and production as protected. [ Note 8.] When responding to discovery, the party seeking to designate information as "Confidential" or "Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive)" has a duty to make a meaningful good faith effort to designate only that information that warrants the designated level of protection, if any. [ Note 9.] It is improper for a party to designate all produced discovery as confidential under the Board’s standard protective order. Producing parties should designate only those particular discovery responses, documents, deposition exhibits, and depositions transcript pages as confidential within the scope of and consistent with the protective order entered in the proceeding. See TBMP § 408.01 for information regarding a party’s duty to cooperate with regard to discovery.

The designations "Confidential" or "Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive)" should be limited to information that the producing party or their counsel has determined, in good faith, contains, reflects, or reveals non-public, confidential, proprietary or commercial information that is not readily ascertainable through proper means by the public or the receiving party, to the extent that information either is the type of information that the party normally attempts to protect from disclosure or is subject to privacy protection under federal, state or local law. [ Note 10.]

The designation "trade secret" should be limited to any information that the producing party or their counsel has determined in good faith "can be used in the operation of a business or other enterprise and that is sufficiently valuable and secret to afford an actual or potential economic advantage over others." [ Note 11.] Information that is confidential or that imparts private information may require a different level of protection than information that may be considered a trade secret or commercially sensitive. [ Note 12.] Information which may not be designated as subject to any form of protection includes information that is or becomes publicly available or information that has been disclosed to the public or a third party, under the circumstances specifically set forth in the Board’s standard protective order. [ Note 13.]

While there is no preliminary showing of good cause required for designations under the Board’s standard protective order, such a showing can be triggered by the receiving party raising an issue with respect to a party’s designation as to any documents, information or testimony. Thus, the party designating information as protected will, when its designation is timely challenged, bear the ultimate burden of proving that the information should be protected. [ Note 14.]

The parties are expected to make a good faith effort to resolve disputes with regard to the propriety of challenged designations before bringing such matters to the Board. [ Note 15.] The Board expects that disputes as to designations that are brought to the Board will be significantly narrow, resulting from the parties’ mutual obligation to negotiate the propriety of the challenged designations and come to a resolution under the Board’s standard protective order. [ Note 16.]

See TBMP § 412.06 for information regarding the good faith effort required for motions for protective orders. Cf. TBMP § 523.02 and TBMP § 524.02 in regard to good faith efforts required for motions to compel and to test the sufficiency of responses to requests for admissions.

The Board’s standard protective order is applicable during disclosures, discovery, and at trial. [ Note 17.] When filing submissions electronically as confidential in connection with motions, briefs or evidence via ESTTA, or where appropriate, filing on paper, under seal, parties should designate only those particular discovery responses, exhibits, depositions transcript pages, or portions of a motion or brief as confidential consistent with and within the scope of the protective order entered in the proceeding. [ Note 18.] A party may not improperly mark its filings as confidential so as to shield them from public view [ Note 19.] nor may the Board’s standard protective order, or any modified protective agreement stipulated to by the parties, be used as a means of circumventing relevant provisions of 37 C.F.R. § 2.27, which provides that trademark application and registration files, and related TTAB proceeding files, generally should be available for public inspection. [ Note 20.]

Any confidential filing must include redacted versions for the public record. See 37 C.F.R. § 2.126(c). For any confidential unredacted version of a submission for which a redacted version must be filed, the parties are strongly encouraged to enclose the confidential information in brackets so as to facilitate a better comparison between the public and confidential versions of the filing when the Board is issuing an order or preparing a final decision.

Please Note: as part of general restyling, effective December 1, 2007, former Fed. R. Civ. P. 26(c)(1)(7) is now Fed. R. Civ. P. 26(c)(1)(G).

The Board’s standard protective order is available for viewing at http://www.uspto.gov.

NOTES:

1. 37 C.F.R. § 2.116(g). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007); Standard Form Agreement or Order for Protecting Confidentiality of Information and Documents Disclosed During Proceedings Before the Trademark Trial and Appeal Board, O.G. Notice (June 20, 2000); Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). See also Layne Christensen Co. v. Purolite Co., 271 F.R.D. 240, 246-47 (D. Kan. 2010) (tiered protective orders are commonly entered in cases involving intellectual property, trade secrets, and unique technological information, affording fuller protection to particularly sensitive information than is extended to ordinary business information).

2. See Gillard v. Boulder Valley School District Re.-2, 196 F.R.D. 382, 385-86 (D. Colo. 2000) (explaining the difference between "particular protective orders," "umbrella protective orders," and "blanket protective orders").

3. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007).

4. Fed. R. Civ. P. 26(g)(1)(B)(ii) (requiring discovery responses to be "not interposed for any improper purpose"). See Gillard v. Boulder Valley School District Re.-2, 196 F.R.D. 382, 386 (D. Colo 2000) ("Normally, a blanket protective order requires that counsel for a producing party review the information to be disclosed and designate the information it believes, in good faith, is confidential or otherwise entitled to protection.").

5. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007).

6. 37 C.F.R. § 2.116(g). See, e.g., Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1633 n.6 (TTAB 2007) (waiver of confidential designation of settlement agreement as the agreement was not redacted nor made confidential, was introduced as an exhibit during a deposition without mention of its confidential nature, and the parties openly discussed provisions of the agreement in their briefs). But see 37 C.F.R. § 2.120(f); Ayoub, Inc. v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1398 n.39 (TTAB 2016) (parties electronically filed documents marked as confidential without identifying them in ESTTA as confidential and without filing a redacted public version; parties allowed 30 days from the date of the decision to file redacted copies, failing which the documents would be treated as part of public record); Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1189 n.1 (TTAB 2011) (granting opposer’s motion to designate as confidential portions of testimony previously submitted without designation and setting aside original opinion in the case on that basis; opinion reissued), judgment vacated based on action of defendant on appeal, 107 USPQ2d 1626 (TTAB 2013); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 n.6 (TTAB 2001) (noting parties failed to submit under seal deposition testimony that had been marked as confidential and affording the parties 30 days from date of decision to file, for the record, redacted and confidential versions of those portions of testimony which were confidential).

7. Fed. R. Civ. P. 26(g)(1) (requiring discovery responses to be "not interposed for any improper purpose"). See Blackhorse v. Pro Football Inc., 98 USPQ2d 1633, 1635 (TTAB 2011) (party to be circumspect and to limit the "confidential" designation only to information that is truly confidential or commercially sensitive); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1848 (TTAB 2008) (urging counsel to exercise discretion and designate as confidential only such information that is truly confidential when appearing before the Board in future proceedings); THK America Inc. v. NSK Co. Ltd., 157 F.R.D. 637, 33 USPQ2d 1248, 1255, 1253 (N.D. Ill. 1993) (it is counsel’s "place and responsibility" to ensure that the proper confidential designations are assigned to documents produced"); Parkway Gallery Furniture, Inc. v. Kittinger/Pennsylvania House Group, Inc., 121 F.R.D. 264, 268 (M.D.N.C. 1988) (party to blanket protective order must invoke confidential designation in good faith). See also Mancia v. Mayflower Textile Services Co., 253 F.R.D. 354, 358 (D. Md. 2008) (discussing Fed. R. Civ. P. 26(g) generally).

8. Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1656 n.12 (TTAB 2014) ("the mere assertion that information is confidential does not make such designation proper."), dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.4 (TTAB 2011) (excessive markings of various information as confidential often indicates that matter is improperly designated or not useful to case), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential). See, e.g., THK America Inc. v. NSK Co. Ltd., 157 F.R.D. 637, 33 USPQ2d 1248, 1255-56 (N.D. Ill. 1993) (with regard to its document production, party improperly used "Attorney Eyes Only" designation four times as often as lower confidentiality designation as well as improperly designated non-confidential matter as confidential; court ordered party to de-designate all of the Attorney’s Eyes Only documents and reclassify them "Confidential" or "Non-confidential").

9. Fed. R. Civ. P. 26(g)(1); Blackhorse v. Pro Football Inc., 98 USPQ2d 1633, 1635 (TTAB 2011) (party to be circumspect and to limit the "confidential" designation only to information that is truly confidential or commercially sensitive); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1848 (TTAB 2008) (urging counsel to exercise discretion and designate as confidential only such information that is truly confidential when appearing before the Board in future proceedings). See also THK America Inc. v. NSK Co. Ltd., 157 F.R.D. 637, 33 USPQ2d 1248, 1255-56 (N.D. Ill. 1993) (nothing prevented the defendants from designating the trade secret pages of a document as "confidential" and the admittedly public pages included therewith or attached thereto as "non-confidential"; some form of redaction along these lines would have indicated a bona fide approach to the court-ordered discovery); Parkway Gallery Furniture, Inc. v. Kittinger/Pennsylvania House Group, Inc., 121 F.R.D. 264, 268 (M.D.N.C. 1988) (party to blanket protective order must invoke confidential designation in good faith). See also Mancia v. Mayflower Textile Services Co., 253 F.R.D. 354, 358 (D. Md. 2008) (discussing Fed. R. Civ. P. 26(g) generally); 37 C.F.R. § 2.116(g) ("The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.).

10. See, e.g., Layne Christensen Co. v. Purolite Co., 271 F.R.D. 240, 246 (D. Kan. 2010) (information that is designated as confidential prohibits the disclosure or dissemination of the information to third parties while "attorneys-eyes only" information is usually reserved for more sensitive information such as trade secret information, future product plans, competitive pricing, customer lists or competitive business financial information). See also 37 C.F.R. § 2.125(f); Trademark Trial and Appeal Board Standard Protective Order (effective Feb. 5, 2020), Section 1, for a listing of the type of information that may be trade secret/commercially sensitive.

11. Restatement (Third) Unfair Competition § 39 (1995); see also Restatement of Torts (First) § 757, cmt. b (1939) (discussing six factors courts have considered in determining whether information is trade secret under the common law). Black’s Law Dictionary (11th ed. 2019) (A "trade secret" is defined as "[a] formula, process, device, or other business information that is kept confidential to maintain an advantage over competitors; information — including a formula, pattern, compilation, program, device, method, technique, or process — that (1) derives independent economic value, actual or potential, from not being generally known or readily ascertainable by others who can obtain economic value from its disclosure or use, and (2) is the subject of reasonable efforts, under the circumstances, to maintain its secrecy."). See also 37 C.F.R. § 2.125(f); Trademark Trial and Appeal Board Standard Protective Order (effective Feb. 5, 2020), Section 1, for a listing of the type of information that may be trade secret/commercially sensitive.

12. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010).

13. Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). See e.g., THK America Inc. v. NSK Co. Ltd., 157 F.R.D. 637, 33 USPQ2d 1248, 1255-56 (N.D. Ill. 1993) (publicly available documents including catalogs, patents, books, magazines, technical journals and newspaper articles were non-confidential; confirmation letters regarding employee seminars, responses to business invitations, requests for permission to attend business trips and internal memos regarding public seminars were found non-confidential; memoranda or similar documents predicated upon or relating to public information which may be confidential, were not entitled to "attorneys eyes only" designation; customer documents that were innocuous and far from current were not entitled to "attorneys eyes only" designation but may be confidential); Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 n.21, 1418 n.28, 1419 n.31 (TTAB 2016) (title of witness as "Operations Officer," respondent’s status as limited liability company organized under the Commonwealth of Kentucky, and Respondent’s status as a wholly-owned subsidiary are not confidential; cover page of marketing proposal sent to third party without any indication there was a nondisclosure agreement and the recipient was identified in the publicly available discovery deposition of witness not confidential; advertising or marketing proposal send to third party, not confidential); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1460 (TTAB 2014) (improper designation of marketing materials that were distributed to respondent’s purchasers and potential purchasers not confidential; presentation used to describe program directed to interested employer groups, associations, hospitals, schools that had no warning or legend that the information was trade secret and should be kept confidential, were not confidential); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014) (printout of shopping cart webpage available to the public is not confidential); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010) (user manuals for opposer’s heart monitors distributed to opposer’s purchasers and which contained no warning or legend advising they contained trade secrets and should be kept in a secure location were not confidential).

Cf. Blackhorse v. Pro Football Inc., 98 USPQ2d 1633, 1635 (TTAB 2011) (If party designates more than a minimal amount of evidence as confidential or commercially sensitive and the information is more than 20 years old, party should anticipate an order to show cause why such information should warrant a designation as confidential and be shielded from public view); United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *7 (TTAB 2019) ("Where commercially sensitive information is stale, this can undermine a party’s claim that disclosure will create a competitive disadvantage.").

14. 37 C.F.R. § 2.120(g); Fed. R. Civ. P. 26(c)(1); United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *2–3 (TTAB 2019) (the designating party "bears the burden of demonstrating that its confidentiality designations are appropriate" and "must demonstrate a particular need for protection and that a clearly defined and serious injury will result otherwise.").

15. Fed. R. Civ. P. 26(c)(1); Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). See also United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *2 (TTAB 2019) (good faith effort satisfied with respect to designation under protective order); Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1386 (TTAB 2016) (good faith effort required for motion for protective order in connection with discovery requests); Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 (TTAB 2014) (good faith effort should be directed to understanding differences and investigating ways in which to resolve dispute). 37 C.F.R. §2.120(f); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (quoting Dondi Properties Corp. v. Commerce Savings and Loan Ass’n, 121 F.R.D. 284, 289 (N.D. Tex. 1988) ("[t]he purpose of the conference requirement is to promote a frank exchange between counsel to resolve issues by agreement or to at least narrow and focus the matters in controversy before judicial resolution is sought.")).

16. Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). Cf. 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); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (nature and the number of discovery requests subject to motion to compel clearly demonstrated that no good faith effort had been made by the parties).

17. 37 C.F.R. § 2.116(g).

18. Blackhorse v. Pro Football Inc., 98 USPQ2d 1633, 1635 (TTAB 2011) (parties must make an attempt to delineate the truly confidential portions by redaction when filing submissions with the Board). See also Baxter International Inc. v. Abbott Laboratories, 297 F.3d 544, 63 USPQ2d 1859, 1859 (7th Cir. 2002) ("Secrecy is fine at the discovery stage, before the material enters the judicial record. . . . But those documents, usually a small subset of all discovery, that influence or underpin the judicial decision are open to public inspection unless they meet the definition of trade secrets or other categories of bona fide long-term confidentiality.").

19. In re Violation of Rule 28(d), 635 F.3d 1352, 98 USPQ2d 1144, 1149 (Fed. Cir. 2011) (public version of brief contained extensive markings as confidential which ignores the requirements of public access); Baxter International Inc. v. Abbott Laboratories, 297 F.3d 544, 63 USPQ2d 1859, 1859 (7th Cir. 2002) ("But those documents, usually a small subset of all discovery, that influence or underpin the judicial decision are open to public inspection unless they meet the definition of trade secrets or other categories of bona fide long-term confidentiality."); United States v. Corbitt, 879 F.2d 224, 228 (7th Cir. 1989) (citations omitted) (" . . . the common law right of access creates a ‘strong presumption’ in favor of public access to material submitted as evidence in open court . . . the public’s right to inspect judicial documents may not be evaded by the wholesale sealing of court papers"). See also 37 C.F.R. § 2.116(g) ("The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.").

20. Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 (TTAB 2001); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).

412.01(b) Challenging the Designation of Confidential Matter

Excerpt from Board’s Standard Protective Order:

14) Challenges to Designations of Information as Protected.

Once information is designated as protected, its use and dissemination are circumscribed as provided in the Board’s standard protective order. [ Note 1.] A party who disagrees with another party’s designation of protected information under the Board’s standard protective order may challenge the designation (i.e., "Confidential" or "Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive)". [ Note 2.]

Circumstances by which a party may challenge a designation include a challenge to information as protected versus unprotected [ Note 3.], a challenge to the level of classification as protected [ Note 4.], and challenging the right to use protected information in connection with a dispositive motion or at trial (which could include both redesignation and access to the protected information). [ Note 5.] A challenge to right to access protected information differs from a motion in limine which the Board does not consider. See TBMP § 527.01(f).

Prior to seeking Board intervention via in camera inspection as to the propriety of the designation of protected information, the parties must first attempt to negotiate in good faith to resolve or narrow the disagreement as to the producing party’s designations. [ Note 6.] The party challenging the confidentiality designation should initiate the meet and confer process by providing written notice of each challenged designation, i.e., specifically identify the confidential information or restriction on access in dispute, and describe the basis for each challenge in the written notice. [ Note 7.] If, despite good faith effort and negotiation, the dispute cannot be resolved by the parties as to the challenged designations, the objecting party may seek relief from the Board by motion. [ Note 8.] When a Board determination of the propriety of a designation is sought, the Board expects that any unresolved challenges will be significantly narrowed in scope due to the requirement for good faith negotiations among the parties as set forth in the Board’s standard protective order. [ Note 9.] During such a challenge, the initial designation would remain in place until the Board determines that it was, in fact, improper.

The Board has wide discretion under Rule 26(c) to "decide when a protective order is appropriate and what degree of protection is required." [ Note 10.] Although a party may mark matter as confidential, Fed. R. Civ. P. 26(c)(1) "does not furnish an absolute privilege against disclosure of material that a party might wish to mark confidential." [ Note 11.]

A motion to challenge a designation under the Board’s standard protective order should be substantially contemporaneous with the designation, or made as soon as practicable after the basis for the challenge is known. [ Note 12.] If a challenge is made long after designation, the party will be expected to demonstrate why it could not have made the challenge at an earlier time. [ Note 13.] Thus, a designation may remain as designated if the party fails to timely challenge a designation and cannot show cause as to why the challenge as to the propriety of the designation was not made sooner. [ Note 14.]

When a designation has been challenged, it is the party seeking protection that bears the burden of demonstrating that its confidentiality designations are appropriate. [ Note 15.] To successfully carry the burden of establishing good cause, the producing party must demonstrate a particular need for protection and that a clearly defined and serious injury will result otherwise. [ Note 16.] In this regard, the party must provide particular and specific demonstrations of fact, as distinguished from stereotyped and conclusory statements. [ Note 17.]

To establish that a document or other information is entitled to protection from disclosure under Fed. R. Civ. P. 26(c)(1)(G), the producing party must show that the information is trade secret or other confidential information and that the disclosure would cause identifiable and serious harm. [ Note 18.] Where the producing party seeking protection under Fed. R. Civ. P. 26(c)(1)(G) is a business that seeks to maintain designations related to confidential business information, the producing party must show that disclosure would cause a clearly defined serious injury to its business such as harm to its competitive and financial position. [ Note 19.] Such a showing of harm to a party’s business requires support, where possible, by affidavits or declarations and concrete, specific examples. [ Note 20.]

"At the dispositive motions or trial stage of a proceeding, the showing necessary to justify continued designation of material as confidential increases, as the material at issue transitions from potential evidence produced during discovery to actual evidence to be used in disposition of the case, and a party’s interest in such a designation must be weighed against the traditional public right of access to judicial materials." [ Note 21.] While information designated Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) is protectable during discovery from access by the adverse party, it may be no longer be subject to the same level of protection if the designating party chooses to rely on the information or testimony at trial and such designation has restricted the access of the adverse party to such information. [ Note 22.] Use at trial may require that the adverse party have access to material designated as Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) for trial preparation. [ Note 23.]

An objecting party who seeks to use an adverse party’s designated information, in connection with a dispositive motion or at trial, may seek to challenge the designation on that basis. [ Note 24.] A party seeking to maintain protection of a confidential designation or the level of designation (i.e., "trade secret/commercially sensitive" versus "confidential") of challenged materials sought to be used by the objecting party in connection with a dispositive motion or at trial must establish with specificity that disclosure of the material will result in some kind of substantial harm to its business, and that such harm outweighs the necessity of the material to the dispositive motion or to trial practice. [ Note 25.] In the case where redesignation of challenged material to a non-confidential designation is sought in connection with its use for a dispositive motion or at trial, the party seeking to maintain the designation must establish not only some kind of substantial harm to its business, but also that the harm to the party’s business outweighs both the necessity of the material to the dispositive motion or to trial practice and to the traditional right to public access of judicial documents and records. [ Note 26.] Nonetheless, information appropriately designated as Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) may remain under seal, even if relied on in connection with a dispositive motion or final decision, as the Board’s standard protective order is applicable. [ Note 27.]

Please Note: As part of general restyling, effective December 1, 2007, former Fed. R. Civ. P. 26(c)(1)(7) is now Fed. R. Civ. P. 26(c)(1)(G).

NOTES:

1. 37 C.F.R. § 2.116(g); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007); Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). But see 37 C.F.R. § 2.116(g) ("The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.").

2. Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). Cf. Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (Board ordered redesignation of portions of expert report and deposition transcript as non-confidential based on party’s challenge to designation).

3. See, e.g., THK America Inc. v. NSK Co. Ltd., 157 F.R.D. 637, 33 USPQ2d 1248, 1255-56 (N.D. Ill. 1993) (requiring redesignation of publicly available documents marked confidential as non-confidential); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (Board ordered redesignation of portions of expert report and deposition transcript as non-confidential).

4. See, e.g., THK America Inc. v. NSK Co. Ltd., 157 F.R.D. 637, 33 USPQ2d 1248, 1255-56 (N.D. Ill. 1993) (finding party had used "Attorney Eyes Only" classification four times as often as lower confidentiality designation and ordering party to "de-designate" all of the "Attorney’s Eyes Only" documents and reclassify them "Confidential" or "Non-confidential").

5. Beasley v. John Wiley & Sons, Inc., 111 USPQ2d 1623, 1631 (N.D. Ill. 2014) (party moved to provisionally file exhibits which had confidentiality designations with its summary judgment motion and sought leave to file the exhibits publicly, but once defendant withdrew the confidentiality designations for those exhibits, the court deemed the motion moot, allowing plaintiff to file an unredacted version of its summary judgment motion with a public filing of the exhibits); Waterkeeper Alliance, Inc. v. Alan & Kristin Hudson Farm, 278 F.R.D. 136, 141 (D. Md. 2011) (plaintiff challenged defendants’ designations in advance of the submission of dispositive motions, intending to include some of the challenged documents as exhibits to its summary judgment motion); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (to help prepare counsel for cross-examination of applicant’s expert, Board required applicant to provide advance notice to opposer of plans to use expert report or to take expert testimony at trial, and in such a case, opposer’s in-house technical experts may access portion of expert report and expert deposition transcript, which had been designated by applicant to allow only opposer’s outside counsel access). But see Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1656, 1656 n.11 (TTAB 2014) (party unable to raise by motion the issue regarding "trade secret/commercially sensitive" designation of declaration testimony in ACR proceeding in advance of submission of declaration during adverse party’s testimony period, as the Board does not entertain motions in limine), dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016).

6. Fed. R. Civ. P. 26(c)(1); Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). See also United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *2 (TTAB 2019) (good faith effort satisfied with respect to designation under protective order). Cf. 37 C.F.R. § 2.120(f)(1); Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 (TTAB 2014) (good faith effort should be directed to understanding differences and investigating ways in which to resolve dispute) Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (quoting Dondi Properties Corp. v. Commerce Savings and Loan Ass’n, 121 F.R.D. 284, 289 (N.D. Tex. 1988) ("[t]he purpose of the conference requirement is to promote a frank exchange between counsel to resolve issues by agreement or to at least narrow and focus the matters in controversy before judicial resolution is sought.")).

7. Cf. Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) ("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;" nonmoving party under equal obligation to participate in good faith efforts to resolve the matter).

8. Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). Cf. Amazon Technologies, Inc. v. Wax, 95 USPQ2d 1865, 1868 n.8 (TTAB 2010) (in connection with motion for sanctions, Board found, based on an in camera inspection, opposer properly designated produced materials as trade secret/commercially sensitive).

9. Cf. 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); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (nature and the number of discovery requests subject to motion to compel clearly demonstrated that no good faith effort had been made by the parties).

10. In re Violation of Rule 28(d), 635 F.3d 1352, 98 USPQ2d 1144, 1147 (Fed. Cir. 2011) (Rule 26(c)(1) permits court to "issue limited protective orders to prevent the discovery or disclosure of certain information or to specify the use that may be made of the discovered information."); R.C. Olmstead Inc. v. CU Interface LLC, 606 F.3d 262, 94 USPQ2d 1897, 1902 (6th Cir. 2010) (court had discretion to limit access to trade secrets by adverse party’s employees, allowing access only by adverse party’s experts); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950 (TTAB 2006) (citing Fed. R. Civ. P. 26(c)(7), restyled by amendment, to Fed. R. Civ. P. 26(c)(1)(G)). See also Fed. R. Civ. P. 26(c) Notes of Advisory Committee on Rules – 1970 Amendment ("The courts have not given trade secrets automatic and complete immunity against disclosure, but have in each case weighed their claim to privacy against the need for disclosure. Frequently, they have been afforded a limited protection.").

11. In re Violation of Rule 28(d), 635 F.3d 1352, 98 USPQ2d 1144, 1147 (Fed. Cir. 2011). See also 37 C.F.R. § 2.116(g) ("The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.").

12. Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).

13. Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000) ("As between a receiving party which raises a late objection to a designation of confidentiality and a producing party that is forced to move for protection of material previously designated as confidential without objection by the producing party, the Board will look much more favorably on the producing party.").

14. Compare Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1656 n.12 (TTAB 2014) (because Board does not entertain motions in limine, party could not raise issue regarding confidentiality designation of declaration testimony until defendant filed its declarations during its testimony period in ACR case), dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016), with Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1495 n.6 (TTAB 2005) (overruling applicant’s objections as to confidentiality designations of brand awareness studies raised for the first time in final brief, finding such objections untimely and the delay a "waiver as to the ‘confidential’ designation of this evidence.").

15. Fed. R. Civ. P. 26(c)(1); United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *2–3 (TTAB 2019) (the designating party "bears the burden of demonstrating that its confidentiality designations are appropriate"); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999).

16. Fed. R. Civ. P. 26(c)(1). United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *3 (TTAB 2019) (the designating party "must demonstrate a particular need for protection and that a clearly defined and serious injury will result otherwise."). See also, e.g., Deford v. Schmid Products Co., 120 F.R.D. 648, 653 (D. Md. 1987)) (citing cases); 8 C. WRIGHT, A. MILLER, & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE CIVIL § 2035 (3d ed. April 2021 update).

17. United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *3 (TTAB 2019); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1762 (TTAB 1999).

18. Deford v. Schmid Products Co., 120 F.R.D. 648, 653 (D. Md. 1987)) (citing cases); Waelde v. Merck, Sharpe, & Dohme, 94 F.R.D. 27, 28 (E.D. Mich. 1981) (citing cases); United States v. IBM Corp., 67 F.R.D. 40, 46 (S.D.N.Y. 1975)).

19. Deford v. Schmid Products. Co., 120 F.R.D. 648, 653 (D.Md.1987)) (business will have to show disclosure would cause harm to competitive and financial position); Waelde v. Merck, Sharpe, & Dohme, 94 F.R.D. 27, 28 (E.D. Mich. 1981) (citing cases). See, e.g., Apple, Inc. v. Samsung Electronics Co., 727 F.3d 1214, 107 USPQ2d 2048, 2057, 2058 (Fed. Cir. 2013) (finding district court erred in denying motion to seal portions of documents that contained product-specific financial information, including costs, sales, profits and profit margins, and market research, where the parties established that disclosure would cause competitive harm); Baxter International Inc. v. Abbott Laboratories, 297 F.3d 544, 63 USPQ2d 1859 (7th Cir. 2002) (denying motion to place documents under seal because the parties failed to explain why disclosure would harm their competitive position).

20. Deford v. Schmid Products Co., 120 F.R.D. 648, 653 (D. Md. 1987) (citing cases). See, e.g., Apple, Inc. v. Samsung Electronics Co., 727 F.3d 1214, 107 USPQ2d 2048, 2055, 2057 (Fed. Cir. 2013) (finding district court erred in denying motion to seal portions of documents that contained product-specific financial information, including costs, sales, profits and profit margins, which motions to seal were supported by declarations from the parties).

21. Waterkeeper Alliance, Inc. v. Alan & Kristin Hudson Farm, 278 F.R.D. 136, 141 (D. Md. 2011). See Seattle Times Co. v. Rhinehart, 467 U.S. 20, 33 (1984) (pretrial discovery, unlike the trial itself, is usually conducted in private; "restraints placed on discovered, but not yet admitted information are not a restriction on a traditionally public source of information"); Rushford v. New Yorker Magazine, Inc., 846 F.2d 249, 252-53 (4th Cir. 1988)) (discovery, "which is ordinarily conducted in private, stands on a wholly different footing than does a motion filed by a party seeking action by the court;" when documents that are "the subject of a pretrial discovery protective order ... [are] made part of a dispositive motion, they los[e] their status as being ‘raw fruits of discovery’"); 8A C. WRIGHT, A. MILLER, & R. MARCUS, FEDERAL PRACTICE & PROCEDURE CIVIL § 2042 (3d ed. April 2021 update) ("One of the reasons for authorizing broad trial court latitude in restricting dissemination of material garnered through discovery is that the scope of discovery is very broad, often including topics having little bearing on the lawsuit. But when some of those materials are relied upon in a judicial decision, or form the basis for it, the justifications for public access on both First Amendment and common–law grounds increase."). See, e.g., Apple, Inc. v. Samsung Electronics Co., 727 F.3d 1214, 107 USPQ2d 2048, 2055, 2057 (Fed. Cir. 2013) (in considering appeal denying motion to seal, court considered the parties’ competitive need to keep financial and market research private against right to public access to information regarding judicial process).

22. Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1656 (TTAB 2014) (when identity of individual identified during discovery as "trade secret/commercially sensitive" is named as a witness at trial and party chooses to rely on the testimony of that witness at trial, it has waived the protection provided to "trade secret/commercially sensitive" information, and can no longer shield the witness’ identity from adverse party), dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Central Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1143 n.6 (TTAB 2013) (Board noted that while a study was submitted under seal "it is hard to understand how Central can maintain that this information is confidential, yet at the same time rely on it in an attempt to establish the previous public perception of its mark for priority purposes"); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (applicant will not be able to restrict access by opposer’s in-house technical experts to portions of expert deposition testimony and expert report if using expert as witness at trial); Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1713 (TTAB 1999) (in connection with submission of protective order, parties were required to explain why already filed testimony and exhibits proposed to be considered confidential are confidential in nature).

23. Compare Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655-56 (TTAB 2014) (when a party relies on testimonial evidence at trial its adversary must have meaningful opportunity to confront witness and inquire into his or her credibility and the facts to which the witness testifies; Board struck declaration testimony which over-designated the identifying information of the declarants as "trade secret/commercially sensitive," which restricted access to this information by opposer’s in-house personnel and was critical to considering adverse testimony and should not be kept from a party), dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016), with Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (so as to help counsel prepare for cross-examination of applicant’s expert, applicant required by Board to provide advance notice to opposer of plans to use expert report take expert testimony at trial, and in such a case, opposer’s in-house technical experts may access portion of expert report and expert deposition transcript which had been designated to allow only outside counsel to access).

24. See, e.g., Beasley v. John Wiley & Sons, Inc., 111 USPQ2d 1623, 1631 (N.D. Ill. 2014) (party moved to provisionally file exhibits publicly which had confidentiality designations with its summary judgment motion, once defendant withdrew the confidentiality designations for those exhibits, the court deemed the motion moot, allowing plaintiff to file an unredacted version of its summary judgment motion with a public filing of the exhibits); Waterkeeper Alliance, Inc. v. Alan & Kristin Hudson Farm, 278 F.R.D. 136, 141 (D. Md. 2011) (plaintiff challenged defendants’ designations in advance of the submission of dispositive motions in the case, intending to include some of the challenged documents as exhibits to its summary judgment motion). Cf. Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (seeking redesignation of expert report and expert testimony so that it could determine whether the hiring of a rebuttal expert was necessary for trial).

25. Waterkeeper Alliance, Inc. v. Alan & Kristin Hudson Farm, 278 F.R.D. 136, 142 (D. Md. 2011).

26. Waterkeeper Alliance, Inc. v. Alan & Kristin Hudson Farm, 278 F.R.D. 136, 142 (D. Md. 2011).

27. 37 C.F.R. § 2.116(g); Baxter International Inc. v. Abbott Laboratories, 63 USPQ2d 1859 (7th Cir. 2002) ("But those documents, usually a small subset of all discovery, that influence or underpin the judicial decision are open to public inspection unless they meet the definition of trade secrets or other categories of bona fide long-term confidentiality."); Rushford v. New Yorker Magazine, Inc., 846 F.2d 249, 253 (4th Cir. 1988) ("there may be instances in which discovery materials should be kept under seal even after they are made part of a dispositive motion" and the court makes this determination at the time it grants the dispositive motion "and not merely allow[s] continued effect to a pretrial discovery protective order."); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.12 (TTAB 2012) ("because proceedings before the Board are public, all papers should be available to the public, except for information that is truly confidential."). Cf. Apple, Inc. v. Samsung Electronics Co., 727 F.3d 1214, 107 USPQ2d 2048, 2056, 2058 (Fed. Cir. 2013) (district court erred in denying motion to seal with regard to a small subset of financial documents as none of the documents were introduced into evidence so the financial information at issue was not considered by the jury and was not essential to the public understanding of the jury’s damages award, nor was it essential to district court’s rulings on any of the parties’ pretrial motions; with regard to market research reports, district court erred in denying motion to seal where party agreed to make public all information actually cited by the district court or the parties, but sought to seal other information neither cited nor discussed by the district court).

412.01(c) Over-designation: Improper designation of confidential filings with the Board

Excerpt from Board’s Standard Protective Order:

12) Redaction; Filing Material with the Board.

When a party or attorney must file protected information with the Board, or a motion or final brief that discusses such information, the protected information or portion of the motion/brief discussing the same should be redacted from the remainder. Redactions are subject to a rule of reasonableness.

Redaction can entail merely covering or omitting a portion of a page of material when it is copied or printed in anticipation of filing but can also entail the more extreme measure of simply filing the entire page under seal as one that contains primarily confidential material. If only a sentence or short paragraph of a page of material is confidential, covering that material when the page is copied, or omitting the material, would be appropriate.

In contrast, if most of the material on the page is confidential, then filing the entire page under seal would be more reasonable, even if some small quantity of non-confidential material is then withheld from the public record. Likewise, when a multi-page document is in issue, reasonableness would dictate that redaction of the portions or pages containing confidential material be effected when only some small number of pages contain such material. In contrast, if almost every page of the document contains some confidential material, it may be more reasonable to simply submit the entire document under seal. Occasions when a whole document or motion/brief must be submitted under seal should be very rare.

37 C.F.R. § 2.27(c) [Pending trademark application index; access to applications.] Decisions of the Director and the Trademark Trial and Appeal Board in applications and proceedings relating thereto are published or available for inspection or publication.

37 C.F.R. § 2.116(g) The Trademark Trial and Appeal Board’s standard protective order is automatically imposed in all inter partes proceedings unless the parties, by stipulation approved by the Board, agree to an alternative order, or a motion by a party to use an alternative order is granted by the Board. The standard protective order is available at the Office’s web site. No material disclosed or produced by a party, presented at trial, or filed with the Board, including motions or briefs which discuss such material, shall be treated as confidential or shielded from public view unless designated as protected under the Board’s standard protective order, or under an alternative order stipulated to by the parties and approved by the Board, or under an order submitted by motion of a party granted by the Board. The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.

Board proceedings are designed to be conducted in public and transparent to the public. [ Note 1.] Records of Board proceedings are open to public view and available for access by the public [ Note 2.], subject only to the exception of limited submissions (exhibits, testimony portions of a brief, or other documents) which contain information which is truly confidential in nature. [ Note 3.] Improper designation of materials filed in Board proceedings as confidential thwarts the intention of allowing the public the right to inspect judicial records and documents [ Note 4.] and is "an improper casual approach" to a party’s good faith requirement to designate only material that is truly confidential as "confidential." [ Note 5.] At final decision, improper designation makes it more difficult to make findings of fact, apply the facts to the law, discuss evidence, and write decisions that make sense when the facts may not be discussed. [ Note 6.] In granting a dispositive motion or at final decision, the Board needs to be able to discuss the evidence of record, unless there is an overriding need for confidentiality, so that the parties and a reviewing court will know the basis of the Board’s decisions. [ Note 7.]

The fact that the Board’s standard protective order is automatically entered upon commencement in the proceeding does not give a party unbridled authority to designate its filed submissions to the Board as protected. [ Note 8.] A party may not improperly mark its filings as confidential so as to shield them from public view nor may the Board’s standard protective order, or any modified protective agreement stipulated to by the parties, be used as a means of circumventing relevant provisions of 37 C.F.R. § 2.27, which provides, that trademark application and registration files, and related TTAB proceeding files, generally should be available for public inspection. [ Note 9.] Improper designation has been found where parties have filed entire briefs or motions or portions thereof as confidential, [note 10] filed entire depositions or portions thereof as confidential [ Note 11.], filed publicly disclosed [ Note 12.] or publicly available [ Note 13.] documents as confidential, or shielded a testifying witnesses’ identity from the adverse party. [ Note 14.]

The Board addresses improper designation of filed submissions in a number of ways. The Board may disregard the designation as "confidential" for those matters which are improperly designated [ Note 15.], it may issue an order to show cause why the submission should not be made open to public view [ Note 16.], it may require the party to reduce redactions by redesignating as non-confidential the overdesignated information and resubmit a properly designated redacted copy for public view [ Note 17.], or the Board may not consider the improperly designated matter in rendering its decision. [ Note 18.] In the case of an order to show cause, or request for resubmission of a filing with proper redaction (i.e., proper designation of confidential matter for public access), if no response is received, the Board will redesignate the confidentially filed material as non-confidential and make it available for public view. [ Note 19.]

When filing submissions with the Board, parties should avoid excessive marking of various information as confidential and limit such designations to only those particular discovery responses, exhibits, and deposition transcript pages that are truly confidential, within the scope of and consistent with the protective order entered in the proceeding. [ Note 20.] Any confidential filing must include redacted versions for the public record. See 37 C.F.R. § 2.126. For any confidential unredacted version of a submission for which a redacted version must be filed, the parties are encouraged to enclose the confidential information in brackets so as to facilitate a better comparison between the public and confidential versions of the filing when the Board is issuing an order or preparing a final decision. Occasions when a document or brief or testimony are submitted in their entirety under seal should be rare. [ Note 21.] In decisions, the Board refers to properly designated confidential matter in general terms. [ Note 22.]

For further information regarding the filing of confidential materials and redaction, see TBMP § 120.02, TBMP § 412.01, TBMP § 412.02(d), TBMP § 412.04 and TBMP § 412.05. For further information regarding the designation of material as confidential and procedures regarding redaction at trial, see TBMP § 412.01(a) and TBMP § 703.01(p).

NOTES:

1. 37 C.F.R. § 2.27(c); Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016) (it is intended that filings in Board proceedings be publicly available); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014) (contents of Board proceedings publicly available; proceedings are meant to be transparent to the public); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1656 n.12 (TTAB 2014) ("except in unusual circumstances, Board proceedings are open to the public"), dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.12 (TTAB 2012) ("because proceedings before the Board are public, all papers should be available to the public, except for information that is truly confidential."); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.4 (TTAB 2011) ("record created [in Board] proceeding is entirely or almost entirely public"), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential). See also Nixon v. Warner Communications, Inc., 435 U.S. 589, 598 (1978) (courts recognize "a general right to inspect and copy public records and documents, including judicial records and documents"); Cox Broadcasting Corp. v. Cohn, 420 U.S. 469, 492 (1975) ("official records and documents open to the public are the basic data of governmental operations").

2. 37 C.F.R. § 2.27(c); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458 (TTAB 2014) (contents of proceeding files publicly available); Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080, 1084 n.8 (TTAB 2014) (TTABVUE is the Board’s public online database that contains the electronic case file for the proceeding, available at the USPTO website), aff’d, 112 F.Supp.3d 439, 115 USPQ2d 1524 (E.D. Va. 2015), vacated and remanded onother grounds, 709 F. App'x 182 (mem.) (4th Cir. Jan. 18, 2018); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014) (documents which are designated confidential do not appear in the electronic docket, TTABVUE); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.4 (TTAB 2011) ("record created [in Board proceeding] is entirely or almost entirely public"), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1136 n.9 (TTAB 2009) (Board proceedings must be open to the public). See also Cox Broadcasting Corp. v. Cohn, 420 U.S. 469, 492 (1975) ("The common law presumes a right to inspect and copy judicial records and documents.").

3. 37 C.F.R. § 2.116(g); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.12 (TTAB 2012) ("because proceedings before the Board are public, all papers should be available to the public, except for information that is truly confidential."); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.4 (TTAB 2011) ("record created [in Board proceeding] is entirely or almost entirely public"), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential). See also Baxter International Inc. v. Abbott Laboratories, 63 USPQ2d 1859 (7th Cir. 2002) ("But those documents, usually a small subset of all discovery, that influence or underpin the judicial decision are open to public inspection unless they meet the definition of trade secrets or other categories of bona fide long-term confidentiality."); Rushford v. New Yorker Magazine, Inc., 846 F.2d 249, 253 (4th Cir. 1988) ("there may be instances in which discovery materials should be kept under seal even after they are made part of a dispositive motion" and the court makes this determination at the time it grants the dispositive motion "and not merely allow[s] continued effect to a pretrial discovery protective order").

4. Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010). See also Nixon v. Warner Communications, Inc., 435 U.S. 589, 598 (1978) (courts recognize "a general right to inspect and copy public records and documents, including judicial records and documents"); In re Violation of Rule 28(d), 98 USPQ2d 1144, 1149 (Fed. Cir. 2011) (confidentiality markings in this case were so extensive that the non-confidential version of the brief ignored the requirements of public access).

5. In re Violation of Rule 28(d), 635 F.3d 1352 98 USPQ2d 1144, 1149 (Fed. Cir. 2011) (counsel took an "improper casual approach" to marking the non-confidential version of the brief making it virtually incomprehensible).

6. In re Violation of Rule 28(d), 635 F.3d 1352, 98 USPQ2d 1144, 1149 (Fed. Cir. 2011) (confidentiality markings in non-confidential version of brief were so extensive that it hampered the court’s consideration and opinion writing); Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016 ("It is more difficult to make findings of fact, apply the facts to the law, and write decisions that make sense when the facts shown by the evidence may not be discussed."); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014) (same); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.12 (TTAB 2012) ("In order to adequately explain our analysis and the facts on which it is based we must refer to some of the testimony and exhibits, although we have tried to be sensitive about revealing anything that may be truly confidential."); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010) (improper confidential designations make it "more difficult to make findings of fact, apply the facts to the law, and write decisions that make sense when the facts may not be discussed."). See also 37 C.F.R. § 2.116(g) ("The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.").

7. Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016) ("The Board needs to be able to discuss the evidence of record, unless there is an overriding need for confidentiality, so that the parties and a reviewing court will know the basis of the Board’s decision."); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014) (same); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010) (same). See also Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.12 (TTAB 2012) ("In order to adequately explain our analysis and the facts on which it is based we must refer to some of the testimony and exhibits, although we have tried to be sensitive about revealing anything that may be truly confidential."). Cf. In re Violation of Rule 28(d), 635 F.3d 1352, 98 USPQ2d 1144, 1149 (Fed. Cir. 2011) (confidentiality markings in non-confidential version of brief were so extensive that it hampered the court's consideration and opinion writing).

8. See THK America Inc. v. NSK Co. Ltd., 157 F.R.D. 637, 33 USPQ2d 1248, 1255, 1253 (N.D. Ill. 1993) (it is counsel’s "place and responsibility" to ensure that the proper confidential designations are assigned); Azalea Health Innovations, Inc. v. Rural Health Care, Inc., 125 USPQ2d 1236, 1238 (TTAB 2017) ("A rule of reasonableness dictates what information should be [designated confidential and] redacted, and only in very rare instances should an entire submission be deemed confidential."); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1656 n.12 (TTAB 2014) ("the mere assertion that information is confidential does not make such designation proper"), dismissed per stipulation, No. 14-CV-4463 (D. Minn.); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.4 (TTAB 2011) (in cases where parties have excessively marked information as confidential the Board may require parties to resubmit those documents so that only truly confidential material is redacted, urging parties to limit confidential designations), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1848 (TTAB 2008) (urging counsel to exercise discretion and designate as confidential only such information that is truly confidential when appearing before the Board in future proceedings). Cf. Fed. R. Civ. P. 26(g)(1)(B)(ii) (requiring discovery responses to be "not interposed for any improper purpose").

9. Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 (TTAB 2001); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000). Cf. In re Violation of Rule 28(d), 635 F.3d 1352, 98 USPQ2d 1144, 1149 (Fed. Cir. 2011) (improper redaction of non-confidential version of brief ignores the requirements of public access).

10. Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1136 n.9 (TTAB 2009) (opposer ordered to file redacted brief in which only information which is truly confidential is redacted); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495, n.5 (TTAB 2005) (where entirety of the briefs were deemed "confidential," Board subsequently requested and received redacted copies). See also In re Violation of Rule 28(d), 635 F.3d 1352, 98 USPQ2d 1144, 1149 (Fed. Cir. 2011) (improper designations of large portions of appeal brief as confidential, including legal argument and case citations and quotations from case; marking of legal argument as confidential under Rule 26(c)(1)(G) cannot be justified unless argument discloses facts or figures of genuine competitive or commercial significance).

11. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1460-61 (TTAB 2014) (discussing improper designation as confidential of testimony and exhibits submitted in Board proceeding); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.12, 1739 (TTAB 2012) (party submitted entire deposition testimony of witness under seal, and was ordered to resubmit copies of evidence in which only truly confidential material was redacted, failing which deposition testimony would be unsealed); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402-03 (TTAB 2010) (discussing improper designation as confidential testimony and exhibits submitted in Board proceeding including discovery deposition testimony regarding how applicant’s mark was selected, products on which applicant intended to use its mark, and to whom applicant makes its initial sales contacts); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 (TTAB 2001) (parties were not "precise in the handling and submission of apparently confidential testimony and documents," noting that "whole transcripts of testimony depositions have been labeled as confidential when it is clear from reading the transcripts that only portions thereof were intended to be shielded from public view.").

12. THK America Inc. v. NSK Co. Ltd., 157 F.R.D. 637, 33 USPQ2d 1248, 1255-56 (N.D. Ill. 1993) (improper designation as confidential confirmation letters regarding employee seminars, responses to business invitations, requests for permission to attend business trips and internal memos regarding public seminars); Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 n.21, 1418 n.28, 1419 n.31 (TTAB 2016) (cover page of marketing proposal sent to third party without any indication there was a nondisclosure agreement, not confidential; advertising or marketing proposal sent to third party, not confidential); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1460 (TTAB 2014) (improper designation of marketing materials that were distributed to respondent’s purchasers and potential purchasers not confidential; presentation found not confidential where presentation directed to interested employer groups, associations, hospitals, schools and the presentation had no warning or legend that the information in the presentation was trade secret and should be kept confidential); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010) (where sales figures, advertising expenditures and similar information appeared in publicly available documents or submissions, Board did not treat the information as confidential); Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1874 (TTAB 2011) (improper designations of whole documents and large amount of non-confidential information improperly designated as confidential).

13. THK America Inc. v. NSK Co. Ltd., 33 USPQ2d 1248 (N.D. Ill. 1993) (improper designation of published, publicly available documents, among which are catalogs, patents, books, magazines, technical journals and newspaper articles); Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 n.21, 1418 n.28 (TTAB 2016) (title of witness as "Operations Officer," respondent’s status as limited liability company organized under the Commonwealth of Kentucky, and Respondent’s status as a wholly-owned subsidiary are not confidential; cover page of marketing proposal sent to third party without any indication there was a nondisclosure agreement and the recipient was identified in the publicly available discovery deposition of witness, not confidential); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014) (printout of shopping cart webpage available to the public is not confidential); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010) (user manuals for opposer’s heart monitors distributed to opposer’s purchasers and which contained no warning or legend advising they contain trade secrets and should be kept in a secure location were not confidential); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1954 (TTAB 2006) (overdesignation of non-confidential matter with respect to portions of expert report as related to expert’s credentials and background, his involvement as an expert or witness in other matters, how he came to be a witness in this proceeding, the role his assistant played, whether other documents beside the report were reviewed or prepared, information about other tests done outside the context of this proceeding, and knowledge of other persons and tests done outside the context of this proceeding).

14. Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1656 (TTAB 2014) (improper designation of testifying witnesses’ identity as "trade secret/commercially sensitive" under Board’s standard protective order, as modified by the parties’ ACR agreement, opposer’s counsel should have been able to share with opposer the names of witnesses testifying against opposer; applicant had identified these witness’ names in pretrial disclosures), dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016).

15. 37 C.F.R. § 2.116(g); Micro Motion Inc. v. Kane Steel Co., 894 F.2d 1318, 13 USPQ2d 1696, 1702 (Fed. Cir. 1990) (designation of material as confidential not controlling; court retains authority to decide what materials are deemed confidential and what part of trial shall be in camera); McGowen Precision Barrels, LLC v. Proof Research, Inc., 2021 USPQ2d 559 (TTAB 2021) (Board not bound by inappropriate and inconsistent confidentiality designations); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1476 (TTAB 2017) (Board not bound by inappropriate designations of material as confidential); Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016) ("we will treat only evidence and testimony that is truly confidential or commercially sensitive as such"); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014) (Board would not be bound by parties’ confidential designations at final decision, treating only evidence and testimony that is clearly of private nature or commercially sensitive as confidential); Miller v. Miller, 105 USPQ2d 1615, 1617 n.4 (TTAB 2013) (discussing those portions of testimony and evidence "that truly contain confidential information only in general terms."); General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1181 (TTAB 2008) ("Depositions have been marked confidential, which limit our reference to them. However, in order to render a decision that relates to the relevant facts of this case, we have referred to selective portions of the record that appear to us to be not truly confidential."); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010) (Board not bound by parties’ designation of confidential matter); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951, 69959 (October 7, 2016) ("This final rule also codifies practice and precedent that the Board may treat as not confidential material that cannot reasonably be considered confidential, notwithstanding party designations."; "The purpose of the rule is to codify existing practice to treat improperly designated material that is public information as public. This is narrowly applied and only done when necessary to articulate the Board decision.").

16. Blackhorse v. Pro Football Inc., 98 USPQ2d 1633, 1635 (TTAB 2011) (If party designates more than a minimal amount of evidence as confidential or commercially sensitive and the information is more than 20 years old, party should anticipate an order to show cause why such information should warrant a designation as confidential and be shielded from public view). Cf. Therrien v. Target Corp., 617 F.3d 1242, 1259 (10th Cir. 2010) (sealed portions of the appendices will be unsealed 20 days from the filing of the opinion unless one of the parties files a motion, under seal if necessary, "setting forth precisely what information should be kept confidential and why lesser measures (such as submission of a redacted [appendix]) would not provide effective protection"); Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1714 (TTAB 1999) (Board agreed to hold exhibits marked confidential for thirty days pending receipt of a motion for a protective order but cautioned that in the absence of such motion, the exhibits would be placed in the proceeding file).

17. Azalea Health Innovations, Inc. v. Rural Health Care, Inc., 125 USPQ2d 1236, 1237–38 (TTAB 2017) (where the parties designated as confidential the entirety of certain notices of reliance and testimony without submitting redacted copies for public viewing the Board ordered them to resubmit copies in which only truly confidential material was redacted, failing which the materials would be treated as part of the public record); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 (TTAB 2012) (party submitted certain deposition testimony under seal, and was ordered to resubmit copies of testimony in which only truly confidential testimony was redacted); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.4 (TTAB 2011) (in cases where parties have excessively marked information as confidential the Board may require parties to resubmit those documents so that only truly confidential material is redacted), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1136 n.9 (TTAB 2009) (opposer ordered to file redacted brief in which only information which is truly confidential is deleted); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495, n.5 (TTAB 2005) (where entirety of the briefs were deemed "confidential," Board subsequently requested and received redacted copies).

18. Hunter Industries., Inc. v. Toro Co., 110 USPQ2d 1651, 1656 (TTAB 2014) (improperly designated declaration testimony not considered and stricken from record), dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016).

19. Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.12 (TTAB 2012).

20. In re Violation of Rule 28(d), 635 F.3d 1352 98 USPQ2d 1144, 1149 (Fed. Cir. 2011) (parties must confine their confidentiality markings to information covered by a protective order; confidentiality markings in appellant’s brief went beyond the scope of the protective order). See Blackhorse v. Pro Football Inc., 98 USPQ2d 1633, 1635 (TTAB 2011) ("confidential" designation should be limited to information that is truly confidential or commercially sensitive); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.4 (TTAB 2011) (urging parties to limit confidential designations), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1136 n.9 (TTAB 2009) (because Board proceeding is open to the public, only truly confidential information should be marked as such); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1848 (TTAB 2008) (urging counsel to exercise discretion and designate as confidential only such information that is truly confidential when appearing before the Board in future proceedings); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 (TTAB 2001) ("Material should be designated as confidential, and as requiring handling as such, only when absolutely necessary.").

21. Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). Cf. Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.12 (TTAB 2012) (Board required a testimonial deposition designated entirely as confidential to be resubmitted with portions truly confidential redacted, otherwise, would be redesignated as non-confidential); UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868 (TTAB 2011) (improper designations of whole documents); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495, n.5 (TTAB 2005) (where entirety of the briefs were deemed "confidential," Board subsequently requested and received redacted copies).

22. See e.g., Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1739 (TTAB 2012) (for information in testimony that is truly confidential, Board will refer to it generally); UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1878 (TTAB 2011) (information regarding sales and promotion by parties designated as confidential and the Board referred to this information generally); Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1078 n.29 (TTAB 2011) (portions of testimony designated confidential referred to only in general terms); Holmes Oil Co. v. Myers Cruizers of Mena Inc., 101 USPQ2d 1148, 1150 n.4 (TTAB 2011) (referring to parties’ consent agreement generally, due to confidential designation); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402, 1408 (TTAB 2010) (sales and advertising matter designated as confidential and "truly appropriate matter for a confidential designation" so the Board referred to that information in general terms); Safer Inc. v. OMS Invests. Inc., 94 USPQ2d 1031, 1042 (TTAB 2010) (information as to sales figures designated as confidential so Board referred to those figures in general terms); Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009) (advertising and revenue figures designated confidential, so referred to only generally in Board’s decision); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1514 (TTAB 2009) (discussing only sales and advertising expenditures set forth in the parties’ briefs but otherwise referring to the evidence designated "confidential" generally); Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1396 n.3 (TTAB 2009) (Board is mindful of the portions of documents and testimony designated as "confidential" and has referred to such matters in general terms).

412.02 Modification of Board’s Standard Protective Order Governing the Exchange of Confidential and Trade Secret/Commercially Sensitive Information

The terms of the Board’s standard protective order may be modified, upon motion or upon stipulation approved by the Board, to govern the exchange of "Confidential" or "Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive)" information. [ Note 1.] The standard protective order may be modified upon motion granted by the Board for good cause based on a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements. [ Note 2.]

The most common kind of order allowing discovery on conditions is an order limiting the persons who are to have access to the information disclosed. [ Note 3.] However, the parties may not agree to redefine the Board’s definition of what information constitutes "Confidential" and "Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive)" information. The parties may agree to change who has access to information and materials, but the designations retain the meaning the Board dictated in the Standard Protective Order. [ Note 4.]

NOTES:

1. 37 C.F.R. § 2.116(g). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007) ("parties are free to agree to modify the standard protective order").

2. Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988, at *4-5 (TTAB 2021).

3. 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE CIVIL § 2043 (3d ed. April 2021 update) (most common order limits person who have access and how such access may be used).

4. Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988, at *6 (TTAB 2021) (explaining three-part balancing test for modification of protective order to permit access to confidential information); United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *3 (TTAB 2019).

412.02(a) Modification of Board’s Standard Protective Order upon Stipulation

If the parties choose to modify the terms of the Board’s standard protective order and enter into their own stipulated protective order, a copy of the executed agreement should be filed with the Board. The Board will acknowledge receipt of the agreement, but the parties should not wait for the Board’s acknowledgement to conduct themselves in accordance with the terms of their agreement. [ Note 1.] The terms of the agreement are binding as of the date the agreement is signed. Such an order may not be used as a means of circumventing paragraphs (d) and (e) of 37 C.F.R. § 2.27, which provide, in essence, that except for matter filed under seal pursuant to a protective order issued by a court or by the Board, the file of a published application or issued registration, and all proceedings relating thereto, are available for public inspection. [ Note 2.]

NOTES:

1. Intercontinental Exchange Holdings, Inc. v. N.w Y.rk Mercantile Exchange, Inc., 2021 USPQ2d 988, at *2 (TTAB 2021) (Board’s standard protective order may be modified by stipulation of the parties, approved by the Board, or upon motion granted by the Board).

2. See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).

412.02(b) Pro Se Litigants and In-House Legal Counsel

While the Board’s standard protective order sets forth guidelines for the disclosure of confidential information to pro se litigants and in-house counsel, in some cases, a modification of the Board’s standard protective order upon motion or by stipulation of the parties, approved by the Board, may be desirable. Special issues regarding the exchange and disclosure of information during discovery may arise in cases involving pro se litigants and in-house legal counsel. For example, under the terms of the Board’s standard protective order, such individuals do not have access to Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) information. [ Note 1.] The financial burden of retaining either legal counsel in the case of a pro se litigant or outside legal counsel in the case of in-house counsel does not constitute good cause to amend the Board’s protective order to remove the restriction with respect to Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive) information. [ Note 2.] In instances where in-house counsel moves to amend the Board’s protective order to permit access to Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) information, the determining factor is whether in-house counsel is involved in its employer-litigant’s "competitive decision making." [ Note 3.]

NOTES:

1. Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). See Amazon Technologies Inc. v. Wax, 95 USPQ2d 1865, 1867 n.6 (TTAB 2010) (pro se applicant hired outside attorney solely for purpose of reviewing opposer’s "trade secret/commercially sensitive" information and documents pursuant to the protective order).

2. See A. Hirsh, Inc. v. United States, 657 F. Supp. 1297, 1305 (C.I.T. 1987).

3. See U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468, 1 USPQ2d 1241, 1249 (Fed. Cir. 1984) (three-part balancing test includes consideration of (1) a party’s need for the confidential information in order to adequately prepare its case, (2) the harm that disclosure would cause the party producing the confidential information, and (3) the forum’s interest in maintaining the confidentiality of the information sought); Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988, at *2 (TTAB 2021) (applying three-part balancing test of U.S. Steel and denying motion to modify protective order to permit in-house counsel to access competitive information); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1953 (TTAB 2006) (Board applied test to deny opposer’s motion to modify protective order to permit in-house counsel access to trade secret or commercially sensitive information where opposers made only minimal showing that their in-house legal counsel was not involved in "competitive decision-making" activities).

412.02(c) In Camera Inspection

In situations where there is a dispute between the parties to a proceeding as to the relevance and/or confidentiality of a document, or portions thereof, sought to be discovered, and the Board cannot determine from the arguments of the parties, on motion to compel production, whether the document is relevant and/or confidential, the Board may request that a copy of the document be submitted to the Board for an in camera inspection. [ Note 1.]

See TBMP § 412.05 with regard to the handling of confidential materials that are filed electronically or, where appropriate, on paper with the Board.

NOTES:

1. Amazon Technologies, Inc. v. Wax, 95 USPQ2d 1865, 1869 n.8 (TTAB 2010) (based on an in camera inspection, opposer properly designated produced materials as trade secret/commercially sensitive).

412.02(d) Contents of Protective Order

In some cases, parties may agree to modify the Board’s standard protective order, or the standard protective order is modified upon motion approved by the Board. The revised protective order typically may include provisions further clarifying the following:

(1) The description of the manner in which confidential or trade secret information is to be handled.
(2) The requirement that a party claiming confidentiality or trade secret protection designate the information covered by the claim prior to disclosure of the information to the discovering party.
(3) The provision that a party may not designate information as confidential or trade secret unless the party has a reasonable basis for believing that the information is, in fact, confidential or trade secret in nature.
(4) The provision that information designated by the disclosing party as confidential or trade secret may not include information which, at or prior to disclosure thereof to the discovering party, is known to or independently developed by the discovering party; or is public knowledge or becomes available to the public without violation of the agreement.
(5) The provision that information designated by the disclosing party as confidential or trade secret may not include information that, after the disclosure thereof, is revealed to the public by a person having the unrestricted right to do so.
(6) The provision that information designated by the disclosing party as confidential or trade secret may not include information which is acquired by the discovering party from a third party, which lawfully possesses the information and/or owes no duty of nondisclosure to the party providing discovery.
(7) The specification of the persons to whom confidential or trade secret information may be disclosed (e.g., outside counsel; in-house counsel; counsel’s necessary legal and clerical personnel).
(8) The provision that all persons to whom confidential or trade secret information is disclosed shall be advised of the existence and terms of the protective order.
(9) The provision that the discovering party will not disclose or make use of confidential or trade secret information provided to it under the order except for purposes of the proceeding in which the information is provided.
(10) The means for resolving disputes over whether particular matter constitutes confidential or trade secret information.
(11) The statement that at the end of the proceeding, each party shall return to the disclosing party all confidential information and materials, including all copies, summaries, and abstracts thereof.
(12) For material designated as confidential or trade secret to be made of record in the proceeding, it shall be submitted to the Board electronically designated as "CONFIDENTIAL" via ESTTA, or, where appropriate, by paper in a separate sealed envelope or other sealed container bearing the proceeding number and name, an indication of the general nature of the contents of the container, e.g. opposer’s brief, or applicant’s motion with specification of the subject of the brief or motion, and, in large letters, the designation "CONFIDENTIAL." For Confidential or Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) submissions filed either via ESTTA or, where appropriate, by paper, two versions are required – a confidential version as well as a redacted version available for public viewing. The redacted copy of the submission must be submitted concurrently with the confidential filing, see 37 C.F.R. § 2.126(c). The parties must file Confidential or Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) materials via ESTTA. For confidential submissions, it is preferable for the parties to enclose the confidential information in brackets so as to facilitate a better comparison between the public and confidential versions of the filing when the Board is issuing an order or preparing a final decision. In addition, when referring to material or testimony that has been designated confidential and which cannot be viewed on TTABVUE, the TTABVUE docket and entry number where such material or testimony is located should be included in any citation.
For further information regarding the filing of confidential materials, see TBMP § 120.02, TBMP § 412.04 and TBMP § 412.05.

The Board’s standard protective order can be found on the USPTO website at: www.uspto.gov/ttab.

For additional information concerning the contents of a protective order, see the cases and authorities cited in the note below. [ Note 1.]

NOTES:

1. See Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988 (TTAB 2021) (motion seeking modification of standard protective order may be granted on a showing of good cause). See also Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1676 (TTAB 1988) (in addition to provisions mandated by Board, protective order may contain other provisions as are agreeable to parties); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (Board required provision that information furnished by opposer would be confined to applicant’s attorneys). Please Note: These earlier cases were decided prior to automatic imposition of the Board’s standard protective order under 37 C.F.R. § 2.116(g).

412.03 Duration of Protective Order

Excerpt from Board’s Standard Protective Order:

16) Board’s Jurisdiction; Handling of Materials after Termination.

The Board’s jurisdiction over the parties and their attorneys ends when this proceeding is terminated. A proceeding is terminated only after a final order is entered and either all appellate proceedings have been resolved or the time for filing an appeal has passed without filing of any appeal.

The parties may agree that archival copies of evidence, memoranda, discovery deposition transcripts, testimony deposition transcripts, affidavits, declarations, and briefs may be retained solely by outside counsel, subject to compliance with agreed safeguards. Otherwise, within 30 days after the final termination of this proceeding, each party and their attorneys, as well as any other persons subject to the terms of this agreement, shall return to each disclosing party (1) all materials and documents, including ESI, containing protected information, (2) all copies, summaries, and abstracts thereof, and (3) all other materials, memoranda or documents embodying data concerning said material, including all copies provided pursuant to paragraphs 4 and 5 of this Order. In the alternative, the disclosing party or its attorney may make a written request that such materials be destroyed rather than returned. Additionally, parties to this agreement are precluded from disclosing orally or in writing any protected information provided during the course of a Board proceeding once this Board proceeding is terminated.

Under the Board’s protective order, once a proceeding before the Board has been finally determined, the Board has no further jurisdiction over the parties thereto. [ Note 1.] According to the terms of the Board’s protective order, within thirty days following termination of a proceeding, the parties and their attorneys must return to each disclosing party the protected information disclosed during the proceeding, including any briefs, memoranda, summaries, and the like, which discuss or in any way refer to such information. Alternatively, the disclosing party or its attorney may make a written request that such materials be destroyed rather than returned.

It is unclear whether the Board can order parties to enter into a contract that will govern the protection of information after the Board proceeding is concluded. [ Note 2.] Thus, it may be advisable for both the parties and their attorneys to sign a stipulated protective order, so that it is clear that they are all bound thereby; that they have created a contract which will survive the proceeding; and that there may be a remedy at court for any breach of that contract which occurs after the conclusion of the Board proceeding. [ Note 3.] Nonetheless, any determination of whether the agreement establishes contractual rights or is enforceable outside of the Board proceeding is for a court to decide should such matter come before it. [ Note 4.]

NOTES:

1. Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 n.5 (TTAB 2001) ("the Board’s jurisdiction over the parties ends when this proceeding does and the Board will not be involved in enforcing provisions of the [protective] agreement after conclusion of the opposition.").

2. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42251 (August 1, 2007).

3. See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 n.3 (TTAB 2000) (Board’s jurisdiction would not extend to third-party signatory); Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552, 1555 n.3 (TTAB 1987) (Board approves stipulated protective orders signed by parties’ counsel but both counsel "may wish to have the parties sign themselves . . . so that the parties will clearly realize that they have created a contract that will survive the proceeding"); S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1226 n.10 (TTAB 1987) (suggesting that "for the protection of both parties, the parties, as well as their counsel should sign the stipulated protective order so as to create a contract that will survive the proceeding"). See also with respect to violation of a Board protective order after the conclusion of the Board proceeding, Alltrade Inc. v. Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d 1698, 1702 n.11 (9th Cir. 1991) (bringing confidential business documents into the public record in violation of the Board’s protective order established a cause of action in district court).

4. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42251 (August 1, 2007).

412.04 Filing Confidential Materials with Board

37 C.F.R. § 2.27(d) [Pending trademark application index; access to applications.] Except as provided in paragraph (e) of this section, the official records of applications and proceedings relating thereto are available for public inspection and copies of the documents may be furnished upon payment of the fee required by § 2.6.

37 C.F.R. § 2.27(e) Anything ordered to be filed under seal pursuant to a protective order issued or made by any court or by the Trademark Trial and Appeal Board in any proceeding involving an application or registration shall be kept confidential and shall not be made available for public inspection or copying unless otherwise ordered by the court or the Board, or unless the party protected by the order voluntarily discloses the matter subject thereto. When possible, only confidential portions of filings with the Board shall be filed under seal.

37 C.F.R. § 2.126(c) [Form of submissions to the Trademark Trial and Appeal Board.] To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the ‘‘Confidential’’ selection available in ESTTA or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.

Excerpt from Board’s Standard Protective Order:

12) Redaction; Filing Material with Board

Protected information, and pleadings, briefs or memoranda that reproduce, discuss or paraphrase such information, shall be filed with the Board under seal. If filed by mail, the envelopes or containers shall be prominently stamped or marked with a legend in substantially the following form:

CONFIDENTIAL

This envelope contains documents or information that are subject to a protective order or agreement. The confidentiality of the material is to be maintained and the envelope is not to be opened, or the contents revealed to any individual, except by order of the Board.

If filed electronically by employing the Board’s Electronic System for Trademark Trial and Appeals ("ESTTA"), the filing party should comply with the redaction guidelines set forth above and click the "confidential filing" option prior to transmitting the documents electronically. In all situations, a redacted copy must also be filed for public view.

Except for materials filed under seal pursuant to a protective order or designated as confidential in ESTTA, the files of applications and registrations which are the subject matter of pending proceedings before the Board and all pending proceeding files and exhibits thereto, are available for public inspection and copying on TTABVUE. [ Note 1.] To be handled as confidential pursuant to the Board’s standard protective order or the parties’ individualized protective order, and kept out of the public record, confidential materials must be so designated at the time of filing. [ Note 2.] Electronic submissions in Board proceedings, and paper submissions, where appropriate, which are not properly designated as confidential will be placed in the Board’s public records, available on the Internet. Only the particular discovery responses, exhibits, deposition transcript pages, or those portions of a brief, pleading, or motion that disclose confidential information should be electronically designated as "CONFIDENTIAL" in ESTTA or, where permitted, filed by paper under seal pursuant to a protective order.

If a party submits any brief, pleading, motion, or other such filing containing confidential information, either electronically via ESTTA or, where permitted, by paper under seal, the party must also submit for the public record a redacted version of said submission. [ Note 3.] Thus, for confidential submissions filed either via ESTTA or, where permitted, by paper, two versions are required – a confidential version as well as a redacted version available for public view.

For any confidential unredacted version of a submission, the parties are strongly encouraged to enclose the confidential information in brackets so as to facilitate a better comparison between the public and confidential versions of the filing when the Board is issuing an order or preparing a final decision. A rule of reasonableness dictates what information should be redacted, and only in very rare instances should an entire submission be deemed confidential. [ Note 4.] In cases where a redacted version has not been provided, the confidentiality of the information may be deemed waived. [ Note 5.]

Electronic filing using ESTTA is required for all submissions, including those containing confidential material. [ Note 6.] When using ESTTA, the filer should select "CONFIDENTIAL Opposition, Cancellation or Concurrent Use" under "File Documents in a Board Proceeding." Filings made using this option will not be made available for public viewing, although entries will be made on the publicly available docket sheet in TTABVUE indicating the Board’s receipt of such filings. These materials may be inspected only by those individuals who are entitled, under the terms of the protective order, to have access to the protected information. However, the redacted copy of the submission which must be submitted separately and concurrently with the confidential filing will be made available for public viewing.

For further information regarding the use of ESTTA for confidential filings, see TBMP § 110 and TBMP § 120.02.

Where appropriate, paper submissions of material designated as confidential should be filed in a separate sealed envelope or other sealed container prominently marked with the word "CONFIDENTIAL." [ Note 7.] Many attorneys also like to attach to the sealed envelope or other sealed container a statement, such as the following:

FILED UNDER SEAL SUBJECT TO PROTECTIVE ORDER.

The materials contained in this envelope have been designated
confidential, pursuant to a protective order, and are not to be
disclosed or revealed except to the Trademark Trial and Appeal
Board and counsel for the parties, or by order of a court.

The envelope or other container must also bear information identifying the proceeding in connection with which it is filed (i.e., the proceeding number and name) [ Note 8.], and an indication of the nature of the contents of the container (i.e., "Applicant’s Answers to Opposer’s Interrogatories 8 and 19," "Pages 22-26 From the Discovery Deposition of John Doe," "Opposer’s Exhibits 3-5 to the Discovery Deposition of John Smith," etc.).

NOTES:

1. 37 C.F.R. § 2.27(d). Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014) (documents which are designated confidential do not appear in the electronic docket, TTABVUE); Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080, 1084 n.8 (TTAB 2014) (TTABVUE is the Board’s public online database that contains the electronic case file for the proceeding, available at the USPTO website), aff’d 112 F.Supp. 3d 439, 115 USPQ2d 1524 (E.D. Va. 2015), vacated and remanded on other grounds, 709 F. App’x 182 (mem.) (4th Cir. Jan. 18, 2018).

2. See 37 C.F.R. § 2.116(g).

3. See 37 C.F.R. § 2.27(d); 37 C.F.R. § 2.27(e); 37 C.F.R. § 2.126(c); Duke University v. Haggar Clothing Inc., 54 USPQ2d 1443, 1445 (TTAB 2000).

4. See, e.g., Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1460-61 (TTAB 2014) (discussing improper designation as confidential of testimony and exhibits submitted in Board proceeding); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 (TTAB 2012) (party submitted all evidence under seal, and was ordered to resubmit copies of evidence in which only truly confidential material was redacted); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402-03 (TTAB 2010) (discussing improper designation as confidential testimony and exhibits submitted in Board proceeding); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1136 n.9 (TTAB 2009) (opposer ordered to file redacted brief in which only information which is truly confidential is deleted); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495, n.5 (TTAB 2005) (where entirety of the briefs were deemed "confidential," Board subsequently requested and received redacted copies).

5. See, e.g., Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1633 n.6 (TTAB 2007). See also Ayoub, Inc. v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1398 n.39 (TTAB 2016) (parties electronically filed documents marked as confidential on their face but did not select the "confidential" designation in ESTTA and did not file redacted public versions; parties allowed time from the date of the decision to file redacted copies, failing which the documents would be treated as part of public record).

6. 37 C.F.R. § 2.126(c).

7. See 37 C.F.R. § 2.126(c). See also 37 C.F.R. § 2.126(b) (paper filing available only in limited circumstances).

8. See 37 C.F.R. § 2.126(c).

412.05 Handling of Confidential Materials by the Board

A confidential filing submitted via ESTTA, and properly designated as confidential, will not be made available for public viewing, although an entry will be made on the publicly-available docket sheet in TTABVUE, indicating the Board’s receipt of such filing. If a confidential filing is not properly designated as confidential when submitted via ESTTA, the submission will be placed in the Board’s public records, available on the Internet. The Board will retain electronic versions of all submissions, including confidential filings, pursuant to USPTO document retention policies. Thus, confidential matter submitted via ESTTA is retained in the Board’s electronic records and will not be deleted from the electronic records after the proceeding is finally determined.

Confidential materials submitted, where appropriate, in non-electronic, i.e, paper or physical form (including trade secret information), and filed under seal subject to a protective order are stored by the Board in a secure location, and are disclosed only to the Board and to those people specified in the protective order as having the right to access. Confidential paper submissions, made only when appropriate, are scanned into TTABVUE and designated "confidential." After scanning and designation as "confidential," the Board retains the confidential paper submissions for a short period of time before disposing of the confidential paper submissions in an appropriate manner. Following the conclusion of a proceeding, including any appeal period, any physical confidential materials submitted will be disposed of by the Board in an appropriate manner. See TBMP § 806.

For further information regarding the handling of paper, physical materials, and confidential materials by the Board, see TBMP § 119.03 and TBMP § 120.02. For information concerning access to protective order materials during an appeal from the decision of the Board, see TBMP § 904.

412.06 Protective Orders Limiting Discovery

Fed. R. Civ. P. 26(c)(1) In General. A party or any person from whom discovery is sought may move for a protective order in the court where the action is pending — or as an alternative on matters relating to a deposition, in the court for the district where the deposition will be taken. The motion must include a certification that the movant has in good faith conferred or attempted to confer with other affected parties in an effort to resolve the dispute without court action. The court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the following:

(A) forbidding the disclosure or discovery;
(B) specifying terms, including time and place or the allocation of expenses, for the disclosure or discovery;
(C) prescribing a discovery method other than the one selected by the party seeking discovery;
(D) forbidding inquiry into certain matters, or limiting the scope of disclosure or discovery to certain matters;
(E) designating the persons who may be present while the discovery is conducted;
(F) requiring that a deposition be sealed and opened only on court order;
(G) requiring that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a specified way; and
(H) requiring that the parties simultaneously file specified documents or information in sealed envelopes, to be opened as the court directs.

(2) Ordering Discovery. If a motion for a protective order is wholly or partly denied, the court may, on just terms, order that any party or person provide or permit discovery.

Although it is generally inappropriate to respond to a request for discovery by filing a motion for a protective order, in certain situations, on motion pursuant to 37 C.F.R. § 2.120(g), a party may properly move for a protective order that the disclosure or discovery not be had, or be had only on specified terms and conditions. [ Note 1.]

A party must establish good cause to obtain a protective order. [ Note 2.] To establish good cause, a movant must provide "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." [ Note 3.] The existence of good cause for a protective order is a factual matter to be determined from the nature and character of the information sought by deposition or interrogatory request or request for production or request for admission weighed in the balance of the factual issues involved in the Board proceeding. The moving party seeking a protective order bears the burden of showing good cause. The movant must demonstrate that its ability to litigate will be prejudiced, not merely that the difficulty of managing the litigation will increase. [ Note 4.]

When the Board grants a motion for a protective order it may direct either the disclosing party, or the parties together, to prepare an order with terms that are mutually agreeable to them, [ Note 5.] may approve the protective order proffered by a party, may order the parties to adhere to the Board’s standard protective order, or may provide whatever relief the Board deems appropriate.

The parties should confer in good faith before seeking Board intervention for a protective order. [ Note 6.] A motion for protective order may be denied on the basis of a lack of good faith effort to resolve the issues regarding the discovery requests. [ Note 7.]

For additional information regarding motions for protective order, see TBMP § 412 and TBMP § 526.

NOTES:

1. See, e.g., Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (granting protective order, in part because many of requests not appropriately tailored to elicit discoverable information); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013) (protective order granted with regard to duplicative requests for admissions and admissions directed to opposer’s unpleaded registrations); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1764 (TTAB 1999) (protective order against taking deposition of high level executive granted); Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976) (protective order granted where party who was served with discovery (assignor) is not and was not at the time of commencement of proceeding the real party in interest).

2. 37 C.F.R. § 2.120(g); Fed. R. Civ. P. 26(c)(1). See Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988, at *10 (TTAB 2021) (Board found no good cause to modify standard protective order to allow access to confidential business records by in-house counsel); Andrew R. Flanders v. DiMarzio, Inc., 2020 USPQ2d 10671, at *5 (TTAB 2020) (Board found no good cause for a protective order requiring that respondent’s Fed. R. Civ. P. 30(b)(6) witness be deposed in Bozeman, Montana where he resides instead of respondent’s principal place of business in New York City).

3. The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152-53 (TTAB 2013); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999).

4. A. Hirsh, Inc. v. United States, 657 F. Supp. 1297, 1305 (C.I.T. 1987); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2153 (TTAB 2013).

5. See, e.g., Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719 (TTAB 1989); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974).

6. Fed. R. Civ. P. 26(c)(1). See e.g.,Andrew R. Flanders v. DiMarzio, Inc., 2020 USPQ2d 10671, at *2 (TTAB 2020) (parties 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 location for taking deposition of respondent’s designated Fed. R. Civ. P. 30(b)(6) witness); Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1386 (TTAB 2016) (lack of good faith effort); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013) (finding good faith effort to resolve the discovery dispute prior to filing the motion for protective order). Cf. Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 (TTAB 2014) (good faith effort in connection with motion to compel should be directed to understanding differences and investigating ways in which to resolve dispute); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (quoting Dondi Properties Corp. v. Commerce Savings and Loan Ass’n, 121 F.R.D. 284, 289 (N.D. Tex. 1988) ("[t]he purpose of the conference requirement is to promote a frank exchange between counsel to resolve issues by agreement or to at least narrow and focus the matters in controversy before judicial resolution is sought.")).

7. Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1386 (TTAB 2016) ("the Board’s finding of a lack of good faith effort, alone, is sufficient to deny the motion for a protective order.").

412.06(a) Depositions

Although issuance of a protective order totally prohibiting a deposition occurs only in extraordinary circumstances, the Board has the discretion to limit a deposition or order a deposition not to be had if it determines that the discovery sought is obtainable from other sources that are more convenient and less burdensome or duplicative. [ Note 1.] The party seeking a protective order to limit a deposition or for a deposition not to be had bears the burden to show good cause therefor. [ Note 2.] To establish good cause, the movant must submit "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." [ Note 3.]

As a general rule, a lack of personal knowledge is an insufficient basis for obtaining a protective order that a discovery deposition not be had, as a party seeking discovery may test a witness’ asserted lack of knowledge. [ Note 4.] On the other hand, a motion for protective order may be granted if it is shown that the party has no unique or superior personal knowledge of the facts and that discovery may be obtained from other individuals with equivalent or greater knowledge. [ Note 5.] A party may file a motion for a protective order (or alternatively, a motion to quash) if, for example, absent a stipulation of the parties or leave of the Board, the notice of deposition would result in the inquiring party exceeding the permitted number of ten discovery depositions or if it would result in a second deposition of an individual or if the notice would result in a deposition being taken outside the discovery period. An assertion that the deponent is too busy, or that the examination would cause undue labor, expense or delay is generally an insufficient basis for obtaining a protective order. [ Note 6.] For information on how and when the limit on the number of discovery depositions may be exceeded, see TBMP § 404.10. For information on filing a motion for leave to serve additional depositions over the ten deposition limit, see TBMP § 519.

If a party moves for a protective order to prohibit the deposition of a very high-level official or executive of a large corporation, the movant must demonstrate through an affidavit or other evidence that the high-level official has no direct knowledge of the relevant facts or that there are other persons with equal or greater knowledge of the relevant facts.

If the movant meets this initial burden, then the burden shifts to the party seeking the deposition to show that the official has unique or superior personal knowledge of relevant facts. If the party seeking the deposition does not satisfy this showing, then the Board will grant the motion for protective order and require the party seeking the deposition to attempt to obtain discovery through less intrusive methods. [ Note 7.] Depending upon the circumstances of the case, these methods should include the depositions of lower-level employees, Fed. R. Civ. P. 30(b)(6) depositions, requests for admissions, or interrogatories and requests for production of documents directed to the corporation. [ Note 8.]

If, after making a good faith effort to utilize less intrusive methods of discovery, the party is unable to obtain the information it seeks, a party may file a motion to vacate or modify the protective order. Such a motion should include a showing (1) that there is a reasonable indication that the high-level official’s deposition may or will lead to the discovery of admissible evidence, and (2) that the less intrusive methods of discovery are unsatisfactory, insufficient or inadequate. [ Note 9.] In granting the motion to vacate or modify the protective order, the Board may limit the topics and duration of the deposition. [ Note 10.]

A party moving for a protective order to delay, limit or prevent a deposition on the basis of medical grounds or health concerns has the burden of making a specific and documented factual showing. [ Note 11.]

A party opposing a motion for protective order with respect to taking the deposition of a non-testifying or consulting expert on notice alone has the burden of establishing exceptional circumstances. [ Note 12.]

Please Note: The Board has no jurisdiction over depositions by subpoena, and in such a case, a motion for protective relief would be filed in the district court for which the subpoena issued and not with the Board.

NOTES:

1. Fed. R. Civ. P. 26(c)(1); 37 C.F.R. § 2.120(g); Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1674 (TTAB 2005); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761-62 (TTAB 1999).

2. Fed. R. Civ. P. 26(c)(1); 37 C.F.R. § 2.120(g).

3. The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013) (citing FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999)).

4. 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE CIVIL § 2037 (3d ed. 2020).

5. Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1675 (TTAB 2005).

6. FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1762 (TTAB 1999).

7. FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).

8. FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).

9. FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).

10. Cf. Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1677 (TTAB 2005) (denying a motion for protective order that depositions not be had with regard to certain individuals but limiting the depositions to three hours in duration and to one particular topic).

11. 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE CIVIL § 2037 (3d ed. April 2021 update) and cases cited therein.

12. Fed. R. Civ. P. 26(b)(4)(D)(ii); Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1568 (TTAB 2014) (motion to take deposition of consulting expert denied because opposer did not establish exceptional circumstances).

412.06(b) Other Discovery

Except in those cases where it is readily apparent that propounded discovery requests are so oppressive as to constitute clear harassment, it is generally improper to respond to a request for discovery by filing a motion for protective order. [ Note 1.] See TBMP § 405 and TBMP § 406, for proper responses to discovery and TBMP § 412 and TBMP § 526 regarding motions for protective orders. It is also improper to move for a protective order for the purpose of delaying responses to discovery or for purposes of harassment of one’s adversary. [ Note 2.] The remedy for excessive interrogatories, requests for production, or requests for admissions is service of a general objection, rather than a motion for protective order. [ Note 3.] For more information regarding excessive discovery depositions, see TBMP §404.01; for excessive interrogatories, see TBMP § 405.03; for excessive requests for production, see TBMP § 406.05; for excessive requests for admissions, see TBMP § 407.05.

Where appropriate, the Board may under Fed. R. Civ. P. Rule 26(c)(1) order that the discovery requested not be had with regard to interrogatories, requests for production, or requests for admission. [ Note 4.] The Board must determine whether there is a need for protection against a particular interrogatory or request for admission or production of a particular document or category of documents due to their nature that renders them harassing and oppressive. [ Note 5.] The parties are expected to take into account the principles of proportionality with regard to discovery depositions such that the number of depositions sought is proportional to the needs of the case and truly necessary [ Note 6.], and also with respect to interrogatory requests, document requests, and requests for admission such that the requests are not rendered harassing and oppressive. [ Note 7.] The parties are expected to consider the scope of the requests as well as confer in good faith about the proper scope of discovery pursuant to 37 C.F.R. § 2.120(a) and Fed. R. Civ. P. 26(f) so as to minimize the need for these motions. See TBMP § 402 and TBMP § 408 regarding the scope of discovery, the parties’ discovery conference obligations and the duty to cooperate.

NOTES:

1. Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385, 1387 (TTAB 2016); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984).

2. Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016); Fort Howard Paper Co. v. G.V. Gambina Inc., 4 USPQ2d 1552, 1553 (TTAB 1987).

3. 37 C.F.R. § 2.120(d); 37 C.F.R. § 2.120(e); 37 C.F.R. § 2.120(i).

4. See, e.g., Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (granting protective order, based in part on many of the requests not appropriately tailored to elicit discoverable information); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013) (granting protective order with regard to 94 duplicative requests for admissions and those that sought admissions as to unpleaded registrations); Fed. R. Civ. P. 36 Notes of Advisory Committee on Rules – 1970 Amendment ("requests to admit may be ... framed that the answering party finds the task of identifying what is in dispute and what is not unduly burdensome. If so, the responding party may obtain a protective order under Rule 26(c)").Cf. Spliethoff's Bevrachtingskantoor B.V. v. United Yacht Transport LLC, 2020 USPQ2d 10605, at *9 (TTAB 2020) (after considering whether movant made "particularized showing" of why the requested discovery is necessary, motion for leave to exceed deposition limit denied).

5. Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (when only one registration was at issue in cancellation, granting protective order, based in part on requests not being properly tailored to claims before the Board); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 (TTAB 2013) (granting protective order with regard to duplicative requests for admissions and those that sought admissions as to unpleaded registrations but denying protective order with regard to requests for admissions that were relevant to allegations and claims as pleaded, where opposer made broad claims of ownership of twenty-six registered and common law marks in its notice of opposition, and applicant’s admission requests related only to fourteen of opposer’s pleaded marks); Weatherford/Lamb Inc. v. C&J Energy Services, Inc., 96 USPQ2d 1834, 1836 n.3 (TTAB 2010) (noting that during discovery and prior to service of petitioner’s discovery responses, the Board granted motion for protective order that petitioner need only produce limited or representative samples of responsive documents); Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1613 (TTAB 1991) (granting motion for protective order with respect to discovery relating to foreign activities; denying motion for protective order with respect to applicant’s use in commerce in U.S.); Fort Howard Paper Co. v. G.V. Gambina Inc., 4 USPQ2d 1552, 1554 (TTAB 1987) (denying motion for protective order with respect to nineteen discovery requests which were suitably tailored to the issues in the opposition); C. H. Stuart Inc. v. S.S. Sarna, Inc., 212 USPQ 386, 387 (TTAB 1980) (granting protective order due to oppressive and harassing discovery requests where the requests served were "boiler-plate" requests designed for use in an infringement action, discovery was not tailored to issues in Board proceeding, and requests sought included those seeking information regarding whether officers of applicant had been convicted of a crime or subject to a proceeding before the U.S. government). See also Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976) (protective order granted where obligation to respond to discovery requests rested with assignee nor assignor).

6. Spliethoff's Bevrachtingskantoor B.V. v. United Yacht Transport LLC, 2020 USPQ2d 10605, at *3 (TTAB 2020) ("Before noticing any deposition, a party should assess whether it would be proportional to the needs of the case and truly necessary, taking into account the time and expense involved for even one deposition.").

7. 37 C.F.R. § 2.120(a)(1); Wisconsin Cheese Group, LLC v. Comercializadora de Lacteos y Derivados S.A. de C.V., 118 USPQ2d 1262, 1267 n.10 (TTAB 2016) ("The Board has applied the principle of proportionality to define the proper subjects of and expanse of inquiry in inter partes proceedings under various circumstances."); Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1386 (TTAB 2016) (the Board expects parties to take into account the principles of proportionality); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951, 69970 (October 7, 2016).

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412 Protective Orders

412.01 In General – Board Standard Protective Order

412.01(a) Proper Designation of Confidential Matter

412.01(b) Challenging the Designation of Confidential Matter

412.01(c) Over-designation: Improper designation of confidential filings with the Board

412.02 Modification of Board’s Standard Protective Order Governing the Exchange of Confidential and Trade Secret/Commercially Sensitive Information

412.02(a) Modification of Board’s Standard Protective Order upon Stipulation

412.02(b) Pro Se Litigants and In-House Legal Counsel

412.02(c) In Camera Inspection

412.02(d) Contents of Protective Order

412.03 Duration of Protective Order

412.04 Filing Confidential Materials with Board

412.05 Handling of Confidential Materials by the Board

412.06 Protective Orders Limiting Discovery

412.06(a) Depositions

412.06(b) Other Discovery