527.01 Motion for Discovery Sanctions
527.01(a) For Failure to Comply With Board Discovery Order
37 C.F.R. § 2.120(h) Sanctions.
- (1) If a party fails to participate in the required discovery conference, or if a party fails to comply with an order of the Trademark Trial and Appeal Board relating to disclosure or discovery, including a protective order, the Board may make any appropriate order, including those provided in Rule 37(b)(2) of the Federal Rules of Civil Procedure, except that the Board will not hold any person in contempt or award expenses to any party. The Board may impose against a party any of the sanctions provided in Rule 37(b)(2) in the event that said party or any attorney, agent, or designated witness of that party fails to comply with a protective order made pursuant to Rule 26(c) of the Federal Rules of Civil Procedure. A motion for sanctions against a party for its failure to participate in the required discovery conference must be filed prior to the deadline for any party to make initial disclosures.
If a party fails to comply with an order of the Board relating to discovery, including a protective order or an order compelling discovery, the Board may enter appropriate sanctions, as defined in 37 C.F.R. § 2.120(h)(1). [ Note 1.] In the case of a protective order, the Board may enter these sanctions against a party if the party or any attorney, agent, or designated witness of the party fails to comply with the protective order. [ Note 2.]
Sanctions may also be appropriate when a party refuses to participate in a discovery conference under 37 C.F.R. § 2.120, without the need for the moving party to first file a motion to compel its adversary’s attendance at a discovery conference. [ Note 3.]. See TBMP § 401.01 and TBMP § 408.01(a) for further information on discovery conferences and the duty to cooperate. If the deadline for the required discovery conference passes and a party informs the Board of the opposing party’s failure to participate in a discovery conference, the non-cooperating party may be warned that it may be subject to a motion for sanctions under 37 C.F.R. § 2.120(h)(1). The Board may impose any of the sanctions provided in Fed. R. Civ. P. 37(b)(2) for failure to participate in a discovery conference, including judgment. [ Note 4.] See TBMP § 408.01(a). While a motion to compel a party to participate in a discovery conference is not a prerequisite to filing a motion for sanctions under 37 C.F.R. § 2.120(h)(1), the moving party must provide evidence of a good faith effort to schedule the conference in order to prevail on a motion for sanctions. [ Note 5.]
The sanctions that may be entered by the Board include, inter alia, striking all or part of the pleadings of the disobedient party; refusing to allow the disobedient party to support or oppose designated claims or defenses; prohibiting the disobedient party from introducing designated matters in evidence; and entering judgment against the disobedient party. [ Note 6.] Default judgment is a harsh remedy, but may be justified where no less drastic remedy would be effective and there is a strong showing of willful evasion. [ Note 7.] However, the Board will not hold any person in contempt, or award any expenses, including attorneys’ fees, to any party. [ Note 8.] See TBMP § 502.05.
The motion for sanctions for failure to comply with an order of the Board lies only when the Board has entered an order relating to discovery (i.e., an order compelling discovery or a protective order) and the order has been violated. [ Note 9.] Unlike a motion to compel discovery, there is no requirement to make a good faith effort to resolve the parties’ dispute prior to filing a motion for discovery sanctions. [ Note 10.] Sanctions are not available under 37 C.F.R. § 2.120(h)(1) with respect to initial disclosures unless a Board order granting a prior motion to compel initial disclosures has been violated, or a party has expressly stated to its adversary that it does not intend to meet its obligation. [ Note 11.] See also TBMP § 403.03. The notice of institution of the proceeding does not constitute an order of the Board relating to disclosures within the contemplation of 37 C.F.R. § 2.120(h)(1). [ Note 12.]
The motion for sanctions for failure to comply with an order of the Board relating to discovery does not apply in situations involving requests for admission. Sanctions in those situations are governed by Fed. R. Civ. P. 36, except that the Board will not award any expenses, including attorneys’ fees, to any party. [ Note 13.] See TBMP § 502.05. For information concerning sanctions for failure to respond, or respond properly, to requests for admission, see TBMP § 527.01(d).
NOTES:
1. 37 C.F.R. § 2.120(h)(1). See Fifth Generation Inc. v. Titomirov Vodka LLC, 2019 USPQ2d 418666, at *5-6 (TTAB 2019) (judgment as a sanction granted under Trademark Rule 2.120(h) for failure to comply with Board orders); SFM, LLC v. Corcamore, LLC, 129 USPQ2d 1072, 1075-79 (TTAB 2018) (motion for judgment under Trademark Rule 2.120(h)(1) granted as sanction for discovery abuses and egregious conduct), aff’d, 978 F.3d 1298, 2020 USPQ2d 11277 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021). Cf. Ingalls Shipbuilding, Inc. v. United States, 857 F.2d 1448, 1450-51 (Fed. Cir. 1988) (question of proper sanction committed to sound discretion of the court); Busy Beauty, Inc. v. JPB Group, LLC, 2019 USPQ2d 338392, at *3-7 (TTAB 2019) (motion for sanctions in the form of judgment based on spoliation of electronically stored information ("ESI") denied, but granted to the extent that nonmoving party is precluded from relying upon any information subject to the spoliated ESI at trial); Optimal Chemical Inc. v. Srills LLC, 2019 USPQ2d 338409, at *3-19 (TTAB 2019) (construed motion for sanctions for spoliation of evidence under Fed. R. Civ. P. 37(e)(1) granted to the extent that spoliated evidence given no consideration in likelihood of confusion analysis); Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008) (sanction of dismissal denied as premature when no Board order compelling discovery present); Nobelle.com LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1303 (TTAB 2003) (trial evidence not stricken as discovery sanctions when no order to compel discovery had been violated).
3. Cf. Promgirl, Inc., v. JPC Co., Ltd., 94 USPQ2d 1759, 1762 (TTAB 2009).
4. 37 C.F.R. § 2.120(h)(1). See Promgirl Inc. v. JPC Co., Ltd., 94 USPQ2d 1759, 1762 n.8 (TTAB 2009) (sanction for failure to comply with discovery conference rules should relate to that failure); Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 n.4 (TTAB 2008) ("when a party fails to participate in the required discovery conference, an adverse party may move for entry of sanctions under Trademark Rule 2.120(g)(1) even in the absence of a Board order compelling participation"). Please Note: effective January 14, 2017, former 37 C.F.R. § 2.120(g)(1) was redesignated 37 C.F.R. § 2.120(h)(1).
5. See, e.g., Promgirl, Inc. v. JPC Co., Ltd., 94 USPQ2d 1759, 1762 (TTAB 2009) (opposer’s motion for sanctions in the form of judgment denied where parties were engaged in settlement discussions and opposer did not broach the subject of scheduling the discovery conference until the deadline date, and only after opposer’s settlement offer was rejected); Guthy-Renker Corp. v. Boyd, 88 USPQ2d 1701, 1704 (TTAB 2008) (motion for sanctions denied; moving party could have made additional efforts with adverse party to schedule conference, including requesting Board participation in the discovery conference, but failed to do so).
6. See Benedict v. Superbakery Inc., 665 F.3d 1263, 101 USPQ2d 1089, 1093 (Fed. Cir. 2011) (affirming Board’s entry of judgment as a discovery sanction for repeated failures to comply with Board’s reasonable orders), aff’g 96 USPQ2d 1134 (TTAB 2010); M.C.I. Foods Inc. v. Bunte, 86 USPQ2d 1044, 1047-48 (TTAB 2008) (documents produced following sanctions will be accepted as admissible and authentic at trial if offered by non-sanctioned party; sanctioned party prohibited from relying on documents it produced only after sanctions entered); HighBeam Marketing LLC v. HighBeam Research LLC, 85 USPQ2d 1902, 1905 (TTAB 2008) (opposer may not rely at trial on discovery materials disclosed only after entry of sanctions against it); MHW Ltd. v. Simex, Aussenhandelsgesellschaft Savelsberg KG, 59 USPQ2d 1477, 1478-79 (TTAB 2000) (repeated failure to comply with orders and unpersuasive reasons for delay resulted in entry of judgment); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Manufacturing Co., 55 USPQ2d 1848, 1854 (TTAB 2000) (pattern of dilatory conduct indicated willful disregard of Board order and resulted in entry of judgment); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1556 (TTAB 2000) (applicant ordered to copy and forward documents to opposer at applicant’s expense); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1778 (TTAB 1999) (where applicant, in violation of order, served objections to discovery requests, judgment was denied as too harsh but applicant was ordered to provide new and complete responses without objection, to copy documents and forward to opposer, and to study sections of TBMP and certify completion to the Board).
See also Unicut Corp. v. Unicut, Inc., 222 USPQ 341, 344 (TTAB 1984) (respondent’s continued refusal to obey Board orders sanctioned by entry of judgment) and Unicut Corp. v. Unicut, Inc., 220 USPQ 1013, 1014-15 (TTAB 1983) (respondent sanctioned by order to produce documents by mailing them to petitioner’s attorney at petitioner’s expense); Caterpillar Tractor Co. v. Catfish Anglers Together, Inc., 194 USPQ 99, 100 (TTAB 1976) (judgment entered where applicant provided no reason for not complying with Board order compelling discovery). Cf. Ingalls Shipbuilding, Inc. v. United States, 857 F.2d 1448, 1451-52 (Fed. Cir. 1988) (failure to comply based on confusion or sincere misunderstanding of court’s order does not warrant dismissal); Nobelle.com LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1303 (TTAB 2003) (petitioner failed to file motion to compel discovery; thus, there is no procedural basis for petitioner’s motion for sanctions); Seligman & Latz, Inc. v. Merit Mercantile Corp., 222 USPQ 720, 723 (TTAB 1984) (sanction of presuming substantial actual confusion best left to situations where witness fails or refuses to answer during testimonial as opposed to discovery deposition).
7. See Benedict v. Superbakery Inc., 665 F.3d 1263, 101 USPQ2d 1089, 1093 (Fed. Cir. 2011) (entry of judgment warranted in view of repeated failures to comply with reasonable orders of the Board and no lesser sanction would be effective), aff’g 96 USPQ2d 1134 (TTAB 2010); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Manufacturing Co., 55 USPQ2d 1848, 1854 (TTAB 2000); and other cases cited in previous note.
8. See 37 C.F.R. § 2.120(h)(1) and 37 C.F.R. § 2.127(f).
9. See, e.g., Nobelle.com LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1303 (TTAB 2003) (request to preclude party from submitting trial evidence as a sanction for its alleged failure to comply with discovery obligations was procedurally baseless where no discovery order was violated or even issued); MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953-54 (TTAB 1979) (Board did not issue order compelling discovery but had only resumed proceedings after apparent failure of settlement negotiations and reset time to respond to discovery); General Sealer Corp. v. H. H. Robertson Co., 193 USPQ 384, 384 (TTAB 1976) (motion for summary judgment on basis of petitioner’s failure to answer interrogatories denied); Johnson & Johnson v. Diamond Medical, Inc., 183 USPQ 615, 616 (TTAB 1974) (motion for judgment denied).
10. See HighBeam Marketing LLC v. HighBeam Research LLC, 85 USPQ2d 1902, 1904 (TTAB 2008).
11. 37 C.F.R. § 2.120(h)(2); Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008).
12. Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008).
13. See 37 C.F.R. § 2.120(i).
527.01(b) If Party Says It Will Not Respond to Discovery Request or Make Required Disclosures
37 C.F.R. § 2.120(h)(2) If a party fails to make required initial disclosures or expert testimony disclosure, and such party or the party’s attorney or other authorized representative informs the party or parties entitled to receive disclosures that required disclosures will not be made, the Board may make any appropriate order, as specified in paragraph (h)(1) of this section. If a party, or an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or 31(a) of the Federal Rules of Civil Procedure to testify on behalf of a party, fails to attend the party’s or person’s discovery deposition, after being served with proper notice, or fails to provide any response to a set of interrogatories or to a set of requests for production of documents and things, and such party or the party’s attorney or other authorized representative informs the party seeking discovery that no response will be made thereto, the Board may make any appropriate order, as specified in paragraph (h)(1) of this section.
The motion for sanctions under 37 C.F.R. § 2.120(h)(2) is available for discovery depositions, interrogatories, and requests for production of documents and things, and lies where the responding party (1) has failed to respond, and (2) has informed the party seeking discovery that no response will be made. A motion for sanctions for failure to provide initial disclosures may be made when a party has expressly stated to its adversary that it does not intend to meet its obligation. [ Note 1.] Similarly, a motion for sanctions for failure to provide expert disclosures may be made when a party has expressly stated to its adversary that required disclosures will not be made. Parties should not file a motion for sanctions under 37 C.F.R. § 2.120(h)(2) where the Board has previously entered an order compelling discovery or disclosures. The appropriate remedy is rather a motion for sanctions pursuant to 37 C.F.R. § 2.120(h)(1), discussed in TBMP § 527.01(a).
The sanctions that may be entered by the Board include, inter alia, striking all or part of the pleadings of the disobedient party; refusing to allow the disobedient party to support or oppose designated claims or defenses; prohibiting the disobedient party from introducing designated matters in evidence; and entering judgment against the disobedient party. However, the Board will not hold any person in contempt, or award any expenses, including attorneys’ fees, to any party. [ Note 2.] See TBMP § 502.05.
The motion for sanctions under 37 C.F.R. § 2.120(h)(2) does not apply in situations involving requests for admission. For information concerning sanctions for failure to respond, or respond properly, to requests for admission, see TBMP § 527.01(d).
NOTES:
1. Kairos Institute of Sound Healing LLC v. Doolittle Gardens, LLC, 88 USPQ2d 1541, 1542-43 (TTAB 2008).
2. See 37 C.F.R. § 2.120(h)(1); 37 C.F.R. § 2.120(h)(2); and 37 C.F.R. § 2.127(f).
527.01(c) Untimely Response to Discovery Requests
A party that fails to respond to a request for discovery (except for a request for admission) during the time allowed therefor, and that is unable to show that its failure was the result of excusable neglect, may be found, upon motion to compel filed by the propounding party, to have forfeited its right to object to the discovery request on its merits. [ Note 1.] See TBMP § 403.03. Objections going to the merits of a discovery request include claims that the information sought by the request is irrelevant, overly broad, unduly vague and ambiguous, burdensome and oppressive, or not likely to lead to the discovery of admissible evidence. [ Note 2.] Objections based on claims of privilege or confidentiality or attorney work product do not go to the merits of the request, but instead to a characteristic of the information sought. [ Note 3.]
NOTES:
1. See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000) (stating that the Board has great discretion in determining whether such forfeiture should be found); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 (TTAB 1987) (circumstances do not justify waiver of right to object in view of confusion regarding time to respond); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448, 449-50 (TTAB 1979) (excusable neglect not shown where opposer was out of the country and, upon return, failed to ascertain that responses were due); MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 954 (TTAB 1979) (even where there is complete failure to respond to discovery, party seeking such discovery is required to make good faith effort to determine why no response has been made before filing motion to compel); Crane Co. v. Shimano Industrial Co., 184 USPQ 691, 691-92 (TTAB 1975) (waived right to object by refusing to respond to interrogatories, claiming that they served "no useful purpose").
2. See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000).
3. See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000) (party will generally not be found to have waived the right to make objections on the basis of privilege, confidentiality, or attorney work product).
527.01(d) In the Case of Requests for Admission
The entry of sanctions for failure to respond, or respond properly, to requests for admission is governed by 37 C.F.R. §2.120(i) and Fed. R. Civ. P. 36, except that the Board will not award expenses to any party. [ Note 1.] See TBMP § 502.05.
If a party upon which requests for admission have been served fails to serve a timely response thereto, the requests will stand admitted (automatically), and may be relied upon by the propounding party pursuant to 37 C.F.R. § 2.120(k)(3)(1), unless the party upon which the requests were served is able to show that its failure to timely respond was the result of excusable neglect; or unless a motion to withdraw or amend the admissions is filed pursuant to Fed. R. Civ. P. 36(b), and granted by the Board. See Fed. R. Civ. P. 6(b) and 36(a) and TBMP § 407.03(a). When no response has been served, it is not necessary or appropriate for the propounding party to file a motion to deem the requests admitted. For information concerning motions to withdraw or amend admissions, see TBMP § 525.
If a party upon which requests for admission have been served responds by serving answers and/or objections thereto, and the propounding party believes that one or more of the answers and/or objections is insufficient, the propounding party may file a motion with the Board to determine the sufficiency of the answers and/or objections believed to be insufficient. [ Note 2.] If the Board determines that an answer does not comply with the requirements of Fed. R. Civ. P. 36(a), it may order either that the matter is deemed admitted or that an amended answer be served. If the Board determines that an objection is not justified, it will order that an answer be served. [ Note 3.] For information concerning motions to determine the sufficiency of answers or objections to requests for admission, see TBMP § 524.
NOTES:
1. See 37 C.F.R. § 2.120(i).
2. See 37 C.F.R. § 2.120(i); Fed. R. Civ. P. 36(a); Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 188 USPQ 690, 691 (TTAB 1975); Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696, 697 n.7 (TTAB 1971).
3. See Fed. R. Civ. P. 36(a).
527.01(e) Estoppel Sanction
A party that responds to a request for discovery by indicating that it does not have the information sought, or by stating objections thereto, may be barred by its own action from later introducing the information sought in the request as part of its evidence on the case, [ Note 1.] provided that the propounding party raises the matter by objecting to the evidence in question on that ground, and preserves the objection in its brief on the case (it is not necessary that the objecting party file a motion asking for application of this sanction). [ Note 2.] A party that fails to provide information, or provides an untimely supplement, may be precluded from using that information or witness at trial unless the failure to disclose was substantially justified or is harmless. [ Note 3.] In instances where a party does not "unequivocally refuse" to provide information in response to discovery requests, the preclusion sanction under Fed. R. Civ. P. 37(c)(1) may not apply. [ Note 4.] See TBMP § 523.04 (Failure to File a Motion to Compel).
Supervision of discovery, and in particular the application of the preclusion sanction, lies within the Board’s discretion. [ Note 5.]
NOTES:
1. See Panda Travel, Inc. v. Resort Option Enterprises, Inc., 94 USPQ2d 1789, 1792-93 (TTAB 2009) (documents not produced until after the start of trial stricken).
2. See, e.g., General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1593-94 (TTAB 2011) (trial testimony and exhibits stricken where applicant waited over two years to supplement responses and opposer lodged objection and cross-examined under protest, but no waiver of privilege), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Ingalls Shipbuilding, Inc. v. United States, 857 F.2d 1448, 1455 (Fed. Cir. 1988); Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820, 828-29 (CCPA 1980) (applicant’s representations in objecting to interrogatories that facts other than those already litigated in prior proceedings were irrelevant and not discoverable gave rise to equitable estoppel preventing applicant from introducing testimony about those other facts); Super Valu Stores Inc. v. Exxon Corp., 11 USPQ2d 1539, 1543 (TTAB 1989) (party may not refuse to answer interrogatories by claiming confidentiality and then introduce responsive information during its trial period); Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1896 n.5 (TTAB 1988) (trademark search report not produced under attorney-client privilege, albeit rightfully withheld, still cannot be relied upon to support motion for summary judgment); ConAgra Inc. v. Saavedra, 4 USPQ2d 1245, 1247 n.6 (TTAB 1987) (exhibits demonstrating pronunciation not produced during discovery, though encompassed by discovery requests, excluded from consideration); National Aeronautics and Space Administration v. Bully Hill Vineyards Inc., 3 USPQ2d 1671, 1672 n.3 (TTAB 1987) (opposer’s exhibits identified in applicant’s brief as within the scope of documents requested by applicant but not produced by opposer during discovery, excluded from consideration).
Cf. Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1071-72 (TTAB 2011) (objected-to documents were obtained or created by applicant in anticipation of trial and were not responsive documents that were already in its possession or control when it responded to document requests); Linville v. Rivard, 41 USPQ2d 1731, 1733 (TTAB 1996) (no estoppel; party should have filed motion to compel where objections that discovery requests are, for example, ambiguous or burdensome, or are otherwise not of a nature which would lead propounding party to believe that the requested information does not exist), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (no estoppel; where applicant gave partial answers and otherwise objected to requests as cumulative or burdensome but opposer did not file motion to compel, modify discovery requests, or otherwise pursue material, evidence introduced by applicant at trial was considered), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), overruled on other grounds, The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626 (Fed. Cir. 2009); Seligman & Latz, Inc. v. Merit Mercantile Corp., 222 USPQ 720, 723 (TTAB 1984) (Board will not impose sanction of drawing adverse inferences against party based on inconsistent responses to questions asked during discovery deposition without motion to compel complete responses and violation of an order compelling answers); Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2041 (TTAB 1989) (in that party need not specify evidence it intends to present, failure to identify witness in response to interrogatory seeking identification of all witnesses who would testify at trial, did not preclude testimony of such witness).
3. See Empresa Cubana Del Tabaco d.b.a Cubatabaco v. General Cigar Co., Inc., 2020 USPQ2d 10988, at *5-7 (TTAB 2020) (applying the "Great Seats" factors, the Board found respondent’s failure to timely disclose supplemental expert witness report was not substantially justified or harmless); Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1346 (TTAB 2013) (applying "Great Seats factors," opposer’s failure to supplement its discovery responses or initial disclosures with respect to third-party use found harmless); Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1757 (TTAB 2013) (where party did not supplement its discovery responses prior to taking trial testimony of non-parties, Board declined to apply estoppel sanction with regard to trial exhibits), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1242, 1246 (TTAB 2012) (party that fails to provide information via disclosure or discovery or supplements may be precluded from using that information or witness at trial unless failure was substantially justified or harmless; opposer’s failure to identify witness prior to pretrial disclosure was neither harmless nor substantially justified); Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327-28 (TTAB 2011) (opposer’s identification of 26 additional witnesses for the first time in its amended and supplemental pretrial disclosures was neither harmless nor substantially justified).
4. Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir. 2012) (Board did not abuse its discretion by refusing to strike plaintiff’s evidence where plaintiff objected to production, did not represent that responsive documents did not exist but defendant failed to follow up on plaintiff’s offer to produce the evidence at a mutually agreeable time and place and in view of defendant’s failure to file a motion to compel); Vignette Corp. v. Marino, 77 USPQ2d 1408, 1411 (TTAB 2005) (opposer’s request for reconsideration of Board order denying its motion for summary judgment denied; Board properly considered applicant’s declaration provided on summary judgment, reasoning that it would be "unfair to foreclose applicant from the opportunity to amplify the assertions made in his previous discovery responses in order to defend against opposer’s motion for summary judgment"). Cf. General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (motion to exclude expert testimony denied where timely-served but deficient expert disclosures were promptly supplemented; failure to notify the Board of service of expert disclosure is not a ground to exclude the testimony of the expert witness).
5. Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir. 2012).
527.01(f) Motions in Limine
It is not the Board’s practice to make prospective or hypothetical evidentiary rulings. Further, the Board will not screen all of a party’s proffered evidence before trial. Thus, the Board will deny a motion to prospectively exclude evidence that might be introduced at trial and that might be inconsistent with discovery responses or other material not provided during discovery. [ Note 1.] Rather than requesting a discovery sanction prospectively, the better practice is to file a motion to strike or otherwise object to such evidence after it is introduced, identifying the specific evidence objected to and the asserted basis for exclusion thereof. If the objection is one that cannot be cured promptly, the adverse party may wait and raise the objection in or with its main brief on the case. [ Note 2.] See TBMP § 707.
NOTES:
1. See Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750 (TTAB 1995).
2. See, e.g., Hunter Industries Inc. v. Toro Co., 110 USPQ2d 1651, 1656 n.11 (TTAB 2014), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016) (as Board does not entertain motions in limine, opposer was unable to raise the matter by motion until applicant submitted declarations during its testimony period); RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1493 (TTAB 2013) ("Board does not make prospective or hypothetical evidentiary rulings."); Dan Foam ApS v. Sleep Innovations Inc., 106 USPQ2d 1939, 1942 (TTAB 2013) (Board does not entertain motions in limine or otherwise exclude evidence prospectively); Carl Karcher Enters. Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372 n.3 (TTAB 2011) ("While the pretrial disclosures in court may be important to the resolution of motions in limine handled prior to trial, the Board does not hear and resolve such motions in its practice."); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893-94 (TTAB 2011) (Board does not hear motions in limine; whether expert is qualified cannot be imputed from technical deficiencies in originally served expert disclosure but may be raised later at the appropriate time); Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1178 (TTAB 2010) ("Turning next to applicant’s motion to exclude, the motion is not construed as a motion in limine, which the Board does not hear. Rather, under the circumstances of this case, applicant’s motion is more akin to a motion to quash a notice of testimonial deposition based on insufficient or unreasonable notice.") (citing Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750 (TTAB 1995)).