519 Motion for Leave to Serve Additional Interrogatories, Requests for Production of Documents, or Requests for Admission, or to Exceed Discovery Deposition Limits
37 C.F.R. § 2.120(d) Interrogatories. The total number of written interrogatories which a party may serve upon another party pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed seventy-five, counting subparts, except that the Trademark Trial and Appeal Board, in its discretion, may allow additional interrogatories upon motion therefor showing good cause, or upon stipulation of the parties, approved by the Board. A motion for leave to serve additional interrogatories must be filed and granted prior to the service of the proposed additional interrogatories and must be accompanied by a copy of the interrogatories, if any, which have already been served by the moving party, and by a copy of the interrogatories proposed to be served. ...
37 C.F.R. § 2.120(e) Requests for production. The total number of requests for production which a party may serve upon another party pursuant to Rule 34 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed seventy-five, counting subparts, except that the Trademark Trial and Appeal Board, in its discretion, may allow additional requests upon motion therefor showing good cause, or upon stipulation of the parties, approved by the Board. A motion for leave to serve additional requests must be filed and granted prior to the service of the proposed additional requests and must be accompanied by a copy of the requests, if any, which have already been served by the moving party, and by a copy of the requests proposed to be served. ...
37 C.F.R. § 2.120(i) Requests for admission. The total number of requests for admission which a party may serve upon another party pursuant to Rule 36 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed seventy-five, counting subparts, except that the Trademark Trial and Appeal Board, in its discretion, may allow additional requests upon motion therefor showing good cause, or upon stipulation of the parties, approved by the Board. A motion for leave to serve additional requests must be filed and granted prior to the service of the proposed additional requests and must be accompanied by a copy of the requests, if any, which have already been served by the moving party, and by a copy of the requests proposed to be served. ...
519(a) Interrogatories, Requests for Production and Admissions
A motion under 37 C.F.R. § 2.120(d) for leave to serve additional interrogatories, 37 C.F.R. § 2.120(e) for leave to serve additional requests for production, or 37 C.F.R. § 2.120(i) for leave to serve additional requests for admission must be filed and granted prior to service of the proposed additional interrogatories, requests for production, or requests for admission; and must be accompanied both by a copy of any interrogatories, requests for production, or requests for admission which have already been served by the moving party, and by a copy of the interrogatories, requests for production, or requests for admission proposed to be served. [ Note 1.]
Good cause for the service of additional interrogatories, requests for production, or requests for admission will generally be found only where it is shown that there is a legitimate need for further written discovery. [ Note 2.] The mere fact that the additional interrogatories, requests for production, or requests for admission may be relevant and narrowly drawn to a single issue, or that they may be easy to answer is insufficient, in and of itself, to show good cause for the service of the additional written discovery. [ Note 3.]
For further information concerning good cause for a motion to serve additional interrogatories, requests for production, and requests for admission, see TBMP § 405.03(c), TBMP § 406.05(c) and TBMP § 407.05(c), respectively. For information concerning the interrogatory, document request, and request for admission limit, specified in 37 C.F.R. § 2.120(d), 37 C.F.R. § 2.120(e), and 37 C.F.R. § 2.120(i), see TBMP § 405.03, TBMP § 406.05, and TBMP § 407.05.
NOTES:
1. 37 C.F.R. § 2.120(d); 37 C.F.R. § 2.120(f); and 37 C.F.R. § 2.120(i). See Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467 (TTAB 1990); Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398, 1398 (TTAB 1990); Chicago Corp. v. North American Chicago Corp., 16 USPQ2d 1479, 1480 (TTAB 1990); Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990); NOTICE OF FINAL RULEMAKING, 56 Fed. Reg. 46376 (September 12, 1991), as corrected at 56 Fed. Reg. 54917 (October 23, 1991).
2. See Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467-68 n.5 (TTAB 1990). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69962 (Oct. 7, 2016) ("[E]xamples that may support a showing of good cause [for additional requests for admission] include cases involving foreign parties from whom oral discovery may be unavailable, or requests intended to narrow the issues in dispute in proceedings involving multiple marks and applications or registrations with lengthy identifications of goods and services.").
3. See Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467-68 n.5 (TTAB 1990) (fact that interrogatories are relevant and narrowly drawn to a single issue does not in and of itself demonstrate good cause for additional interrogatories); Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398, 1399 (TTAB 1990) (fact that interrogatories are easy to answer does not in and of itself constitute good cause for additional interrogatories); Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990) (fact that the interrogatories are relevant to the proceeding does not in and of itself constitute good cause for additional interrogatories).
519(b) Discovery Depositions
The Trademark Rules do not specify a limit on the number of discovery depositions. Therefore, the deposition limit of the Federal Rules of Civil Procedure applies in Board proceedings which limit parties to ten oral depositions each, but a party may seek leave to conduct additional depositions. [ Note 1.] See TBMP § 404.02. If a party seeks leave, without the consent of the adverse party, to take additional discovery depositions beyond the ten-deposition limit, such party must make a particularized showing of why the discovery is necessary. [ Note 2.] In determining whether to allow a party to take additional discovery depositions beyond the ten-deposition limit, the Board may consider the necessity of each deposition previously taken without leave of the Board. [ Note 3.] 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. In considering whether additional depositions are proportional to the needs of the case, the following may be taken into consideration: the importance of the issues, the parties’ relative access to relevant information, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. See TBMP § 404.09. These considerations should be balanced against the factors set forth in Fed. R. Civ. P. 26(b)(2)(C)(i)-(iii), i.e., (1) whether the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive; (2) whether the party seeking discovery has had ample opportunity to obtain the information by discovery in the action; or (3) whether the proposed discovery is outside the scope permitted by Fed. R. Civ. P. 26(b)(1). [ Note 4.]. See TBMP § 404.02 and TBMP § 404.09.
Given the Board’s limited jurisdiction and the generous number of interrogatories, requests for production, requests for admission, or discovery depositions provided under the Rules or under the Federal Rules of Civil Procedure made applicable to Board proceedings, such motions for leave to serve additional written discovery or to take discovery depositions that exceed the ten-deposition limit are disfavored.
For information concerning discovery deposition limits specified in Fed. R. Civ. P. 30(a)(2), see TBMP § 404.
NOTES:
1. Fed. R. Civ. P. 30(a)(2)(A)(i); 37 C.F.R. § 2.116(a). See Spliethoff's Bevrachtingskantoor B.V. v. United Yacht Transport LLC , 2020 USPQ2d 10605, at *2-3 (TTAB 2020).
2. Spliethoff's Bevrachtingskantoor B.V. v. United Yacht Transport LLC , 2020 USPQ2d 10605, at *2-3 (TTAB 2020) and cases cited therein.
3. Spliethoff's Bevrachtingskantoor B.V. v. United Yacht Transport LLC , 2020 USPQ2d 10605, at *3 (TTAB 2020).
4. Spliethoff's Bevrachtingskantoor B.V. v. United Yacht Transport LLC , 2020 USPQ2d 10605, at *3-4 (TTAB 2020); see also Fed. R. Civ. P. 26(b)(1) and 26(b)(2).