406    Requests for Production of Documents and Things and Electronically Stored Information

406.01    When Permitted and By Whom

A party may serve discovery written requests for the production of documents and things on any other party only during the discovery period, provided that the serving party has either previously served or concurrently serves therewith its initial disclosures, absent a stipulation by the parties or a granted motion or upon order of the Board to the contrary. [ Note 1.] TBMP § 403.02. Requests for production of documents and things must be served early enough in the discovery period, as originally set or as may have been reset by the Board, so that the written responses will be due and production of documents will be provided no later than the close of discovery. [ Note 2.] TBMP § 403.02. If requests for production are combined with a notice of taking a discovery deposition (i.e., if it is requested that the deponent bring designated documents to the deposition), the requests for production must be served at least 30 days prior to the scheduled date of the deposition. [ Note 3.] TBMP § 113.04 (Manner of Service), and TBMP § 403.03 (Time for Service of Discovery Responses).

Requests for production may not be served on a non-party. [ Note 4.] However, if a discovery deposition deponent is a non-party witness residing in the United States, production of designated documents by the witness at the deposition may be obtained by means of a subpoena duces tecum. [ Note 5.] See TBMP § 404.03(a)(2). A subpoena is unnecessary, however, if the non-party witness is willing to produce the documents voluntarily.

Parties seeking to serve document production requests on a natural person residing in a foreign country should be aware that the laws of some foreign countries may preclude such discovery. [ Note 6.] In determining when it is appropriate to impose sanctions for non-compliance with discovery due to a conflict with foreign laws, the following factors are considered: (1) the good faith of the non-complying party, (2) whether the non-complying party would incur foreign criminal liability, and (3) whether alternative sources of information are available. [ Note 7.]

NOTES:

 1.   37 C.F.R. § 2.120(a)(3).

 2.   37 C.F.R. § 2.120(a)(3). See also Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1270 (TTAB 2017) (discovery must be served "early enough … so that responses will be due no later than the close of discovery"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016).

 3.   See Fed. R. Civ. P. 34(a); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978).

 4.   See Fed. R. Civ. P. 34(a).

 5.   35 U.S.C. § 24; Fed. R. Civ. P. 45. But see El Encanto, Inc. v. Hatch Chile Co., Inc., 825 F.3d 1161, 119 USPQ2d 1139, 1144 (10th Cir. 2016) (party to Board proceeding can obtain nonparty documents by subpoena duces tecum under Fed. R. Civ. P. 45 without deposition); Dan Foam ApS v. Sleep Innovations Inc., 106 USPQ2d 1939, 1942-43 (TTAB 2013) (discussing notice requirement to adverse party under Fed. R. Civ. P. 45(b)(1) for a subpoena duces tecum (without deposition) issued to non-party and noting that respondent could have sought its own subpoena of the non-party to obtain additional documents and/or a discovery deposition).

 6.   Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197, 200-01 (1958) (Swiss government ordered Swiss plaintiff in U.S. court proceeding not to produce certain documents).

 7.   Cochran Consulting Inc. v. Uwatec USA Inc., 102 F.3d 1224, 41 USPQ2d 1161, 1163 (Fed. Cir. 1996) (citing Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197 (1958)).

406.02    Scope

Fed. R. Civ. P. 34(a) In General. A party may serve on any other party a request within the scope of Rule 26(b):

  • (1) to produce and permit the requesting party or its representative to inspect, copy, test, or sample the following items in the responding party’s possession, custody, or control:
    • (A) any designated documents or electronically stored information — including writings, drawings, graphs, charts, photographs, sound recordings, images, and other data or data compilations — stored in any medium from which information can be obtained either directly or, if necessary, after translation by the responding party into a reasonably usable form; or
    • (B) any designated tangible things; or
  • (2) to permit entry onto designated land or other property possessed or controlled by the responding party, so that the requesting party may inspect, measure, survey, photograph, test, or sample the property or any designated object or operation on it.

The scope of a request for production, in an inter partes proceeding before the Board, is governed by Fed. R. Civ. P. 34(a), which in turn refers to Fed. R. Civ. P. 26(b). See TBMP § 402 (discussion of scope of discovery permitted under Fed. R. Civ. P. 26(b)).

Generally, a party does not have an obligation to locate documents that are not in its possession, custody, or control and produce them during discovery. [ Note 1.] However, a party may not mislead its adversary by stating that it will produce documents and then fail to do so and claim the documents are not in its possession or control. [ Note 2.] A party also is not under an obligation in response to a discovery request to create or prepare documents that do not already exist. [ Note 3.]

Because proceedings before the Board involve only the right to register trademarks, the request for entry upon land for inspection and other purposes is rarely, if ever, used in Board proceedings.

NOTES:

 1.   Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1715 (TTAB 1999), rev’d on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009).

 2.   Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1679 (TTAB 2005).

 3.   8B C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE CIVIL § 2210 (3d ed. April 2021 Update) ("A document or thing is not in the possession, custody, or control of a party if it does not exist. Production cannot be required of a document no longer in existence nor of one yet to be prepared.").

406.03    Elements of Request for Production

Fed. R. Civ. P. 34(b)(1) Contents of the Request. The request:

  • (A) must describe with reasonable particularity each item or category of items to be inspected;
  • (B) must specify a reasonable time, place, and manner for the inspection and for performing the related acts; and
  • (C) may specify the form or forms in which electronically stored information is to be produced.

A request for production must include the elements specified in Fed. R. Civ. P. 34(b)(1)(A)-(B), as set forth above. Fed. R. Civ. P. 34(b)(1)(C) allows but does not require a requesting party to specify in its requests the preferred data format(s) for production of electronically stored information. Parties are expected to discuss the format for production during their mandatory discovery conference. [ Note 1.] For more information regarding discovery conferences, see TBMP § 401.01 and TBMP § 408.01(a).

NOTES:

 1.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69961 (October 7, 2016); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 and 42252 (August 1, 2007); 37 C.F.R. § 2.120(a)(2)(i); Fed. R. Civ. P. 26(f).

See also Chix Gear, LLC v. Princess Race Wear Corp., 2019 USPQ2d 455321, at *3 (TTAB 2019) (unless otherwise specified by the parties, responding party must produce ESI in the form in which it is ‘ordinarily maintained’ or in a ‘reasonably usable form); Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908 (TTAB 2011) (parties agreed only to the form of their ESI production).

406.04    Responses to Requests for Production

Fed. R. Civ. P. 34(b)(2)(A) Time to Respond. The party to whom the request is directed must respond in writing within 30 days after being served or — if the request was delivered under Rule 26(d)(2) — within 30 days after the parties’ first Rule 26(f) conference. A shorter or longer time may be stipulated to under Rule 29 or be ordered by the court.

  • (B) Responding to Each Item. For each item or category, the response must either state that inspection and related activities will be permitted as requested or state with specificity the grounds for objecting to the request, including the reasons. The responding party may state that it will produce copies of documents or of electronically stored information instead of permitting inspection. The production must then be completed no later than the time for inspection specified in the request or another reasonable time specified in the response.
  • (C) Objections. An objection must state whether any responsive materials are being withheld on the basis of that objection. An objection to part of a request must specify the part and permit inspection of the rest.
  • (D) Responding to a Request for Production of Electronically Stored Information. The response may state an objection to a requested form for producing electronically stored information. If the responding party objects to a requested form — or if no form was specified in the request — the party must state the form or forms it intends to use.
  • (E) Producing the Documents or Electronically Stored Information. Unless otherwise stipulated or ordered by the court, these procedures apply to producing documents or electronically stored information:
    • (i) A party must produce documents as they are kept in the usual course of business or must organize and label them to correspond to the categories in the request;
    • (ii) If a request does not specify a form for producing electronically stored information, a party must produce it in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms; and
    • (iii) A party need not produce the same electronically stored information in more than one form.

Responses to requests for production should comply with the provisions of Fed. R. Civ. P. 34(b). Documents produced in electronically stored form not kept in the ordinary course of business must be organized and labeled to correspond to the categories in each request, and if the form of production is not specified, produced in a form or forms in which it is ordinarily maintained, or in a form or forms that are reasonably usable. [ Note 1.] The Board encourages electronic production whenever possible, and if email is not practical due to the volume of documents, the Board encourages the parties to agree on an effective alternative method of service (e.g., a file hosting service that provides cloud storage, or delivery of a USB drive). [ Note 2.]

NOTES:

 1.   Fed. R. Civ. P. 34(b)(2)(E). Chix Gear, LLC v. Princess Race Wear Corp., 2019 USPQ2d 455321, at *3 (TTAB 2019) (unless otherwise specified by the parties, responding party must produce ESI in the form in which it is "ordinarily maintained" or in a "reasonably usable form").See e.g., Amazon Technologies, Inc. v. Wax, 95 USPQ2d 1865, 1869 (TTAB 2010) (for documents produced on DVD, opposer ordered to serve a complete index to all 31,144 pages of produced documents, cross-referencing the categories of documents and the discovery requests to which they are responsive, with no category in the index to exceed 300 pages).

 2.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959, 69961 (October 7, 2016).

406.04(a)    Time for Service of Responses

Fed. R. Civ. P. 34(b)(2)(A) Time to Respond. The party to whom the request is directed must respond in writing within 30 days after being served.

37 C.F.R. § 2.120(a)(3)  . . . Responses to . . . requests for production of documents and things . . . must be served within thirty days from the date of service of such discovery requests. * * * *

Responses to requests for production must be served within 30 days after the date of service of the requests. [ Note 1.] TBMP § 403.03. The time to respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery. [ Note 2.] The resetting of a party’s time to respond to an outstanding request for discovery will not result in the automatic rescheduling of the discovery and/or testimony periods; such dates will be rescheduled only upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. [ Note 3.]TBMP § 403.03.

Service of responses to requests for production must be made by email, unless otherwise stipulated, or if the serving party attempted service by email but service could not be made due to technical problems or extraordinary circumstances, by the manner described in 37 C.F.R. § 2.119(b). United States postal mail may not be available for U.S. counsel located outside the United States. [ Note 4.] TBMP § 113.04. Additionally, even if requests for production are served on a party by postal service or overnight courier (either by agreement or because email service was attempted but could not be made), 37 C.F.R. § 2.119(c)  has been amended to remove the previous provision adding five days to the proscribed period for action after the date of service so that no additional time for service of discovery responses is allowed for responding to the requests for any manner of service. [ Note 5.] TBMP § 403.03.

A party which fails to respond to requests for production during the time allowed therefor, and which is unable to show that its failure was the result of excusable neglect, may be found, on motion to compel filed by the propounding party, to have forfeited its right to object to the requests on their merits. [ Note 6.] TBMP § 403.03 and TBMP § 405.04(a).

NOTES:

 1.   Fed. R. Civ. P. 34(b)(2)(A); 37 C.F.R. § 2.120(a)(3).

 2.   37 C.F.R. § 2.120(a)(3).

 3.   37 C.F.R. § 2.120(a)(3).

 4.   37 C.F.R. § 2.119(b); 37 C.F.R. § 2.119(d). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959 (October 7, 2016).

 5.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).

 6.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) (applicant, having waived its right to object to discovery requests on their merits was not entitled to raise objection regarding place of production of documents).

406.04(b)    Place and Form of Production

37 C.F.R. § 2.120(e)  . . . The time, place, and manner for production of documents, electronically stored information, and tangible things shall comport with the provisions of Rule 34 of the Federal Rules of Civil Procedure, or be made pursuant to agreement of the parties, or where and in the manner which the Trademark Trial and Appeal Board, upon motion, orders.

Fed. R. Civ. P. 34(b)(2)(E) Producing the Documents or Electronically Stored Information. Unless otherwise stipulated or ordered by the court, these procedures apply to producing documents or electronically stored information:

  • (i) A party must produce documents as they are kept in the usual course of business or must organize and label them to correspond to the categories in the request;
  • (ii) If a request does not specify a form for producing electronically stored information, a party must produce it in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms; and
  • (iii) A party need not produce the same electronically stored information in more than one form.

The place of production is governed by 37 C.F.R. § 2.120(e)  which states that production shall comport with the Fed. R. Civ. P. 34, or be made pursuant to the agreement of the parties, or where the Board, upon motion, orders. [ Note 1.] A party is only obliged to make documents and materials available for inspection and copying, as they are kept in the ordinary course of business, [ Note 2.] or as organized and labeled to correspond to the requests, or a party may produce copies of the documents or of the electronically stored information instead of permitting inspection. [ Note 3.] In Board cases, parties often extend each other the courtesy of providing copies of responsive documents electronically or producing requested documents by photocopying the documents and forwarding them to the requesting party at the requesting party’s expense. [ Note 4.] Indeed, the Board believes serving documents electronically is more efficient and thus encourages this method of producing documents. [ Note 5.] Electronic production should be used whenever possible, and parties are expected to discuss such arrangements, as well as the arrangements for production of electronically stored information, and alternative methods of service if email is not practical, in their mandatory discovery conference. [ Note 6.] For more information regarding discovery conferences, see TBMP § 401.01 and TBMP § 408.01(a).

Electronically stored information may be produced in the form specified by the request. If no specification is made, the party must produce the electronically stored information in the form in which it is ordinarily maintained, or in a reasonably usable form. [ Note 7.] Fed. R. Civ. P. 34(a) "requires that, if necessary, a responding party ‘translate’ information it produces into a ‘reasonably usable’ form." [ Note 8.] However, the option to produce in a reasonably usable form does not mean that a responding party is free to convert electronically stored information from the form in which it is maintained to a different form that makes it more difficult or burdensome for the requesting party to use the information efficiently in the litigation. [ Note 9.] A party does not have to produce electronically stored information in more than one format. [ Note 10.] Electronically stored information produced during discovery can be used during depositions to question witnesses and may come in as exhibits thereto.

On motion pursuant to 37 C.F.R. § 2.120(e), the Board may by order specify the place and the manner in which the documents are to be produced, and in situations involving electronically stored information, the form of production. The Board may, for example, order that the responding party photocopy the documents designated in a request and mail the photocopies to the requesting party when the responding party has unreasonably refused to produce documents. [ Note 11.]

NOTES:

 1.   37 C.F.R. § 2.120(e).

 2.   Fed. R. Civ. P. 34(b)(2)(E)(i); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) (responding party within its rights to choose to make documents available for inspection and copying by the inquiring party).

 3.   Fed. R. Civ. P. 34(b)(2)(E)(i); Fed. R. Civ. P. 34(b)(2)(B); Fed. R. Civ. P. 34(a)(1). Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment ("Rule 34(b)(2)(B) is further amended to reflect the common practice of producing copies of documents or electronically stored information rather than simply permitting inspection").

 4.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1777 (TTAB 1998).

 5.   Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008) (most efficient means of making initial disclosures of documents and the option the Board encourages parties to use is to actually exchange copies of disclosed documents rather than merely identifying location). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69961 (October 7, 2016) ("The Board encourages electronic production wherever possible . . . .").

 6.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959, 69961 (October 7, 2016); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 19296, 19297 (to be codified at 37 C.F.R. pt. 2 (proposed April 4, 2016)) (methods of service of discovery requests and responses and document production are to be discussed during discovery conference; "the proposed rules nonetheless allow for parties to stipulate otherwise [than email service for discovery], to accommodate other methods of communication that may promote convenience and expediency (for example, a file hosting service that provides cloud storage, delivery of a USB drive, etc.")); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42245 and 42252 (August 1, 2007); 37 C.F.R. § 2.120(a)(2); Fed. R. Civ. P. 26(f).

 7.   Fed. R. Civ. P. 34(b)(2)(E)(ii). Chix Gear, LLC v. Princess Race Wear Corp., 2019 USPQ2d 455321, at *3 (TTAB 2019) (unless otherwise specified by the parties, the responding party must produce ESI in the form in which it is "ordinarily maintained" or in a "reasonably usable form"). See Fed. R. Civ. P. 34 Committee Notes on Rules – 2006 Amendment. Cf. Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908 (TTAB 2011) (where the parties only agreed as to form of production, not as to other aspects such as a protocol for identifying and segregating potentially responsive ESI, applicant cannot insist that opposer start its ESI search and production over).

 8.   Fed. R. Civ. P. 34 Committee Notes on Rules – 2006 Amendment.

 9.   Fed. R. Civ. P. 34 Committee Notes on Rules – 2006 Amendment. Cf. Chix Gear, LLC v. Princess Race Wear Corp., 2019 USPQ2d 455321, at *3 (TTAB 2019) (nothing inherent in Rule 34 requires production of metadata where neither party has specified the form in which discovery will be provided, or where metadata has not been requested).

 10.   Fed. R. Civ. P. 34(b)(2)(E)(iii). See also Chix Gear, LLC v. Princess Race Wear Corp., 2019 USPQ2d 455321, at *2 (TTAB 2019).

 11.   See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) (at the responding party’s expense as a discovery sanction); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1778 (TTAB 1998) (at responding party’s expense, as a discovery sanction); Unicut Corp. v. Unicut, Inc., 220 USPQ 1013 (TTAB 1983) (at the requesting party’s expense).

406.04(c)    Nature of Responses

Fed. R. Civ. P. 34(b)(2)(B) Responding to Each Item. For each item or category, the response must either state that inspection and related activities will be permitted as requested or state with specificity the grounds for objecting to the request, including the reasons. The responding party may state that it will produce copies of documents or of electronically stored information instead of permitting inspection. The production must then be completed no later than the time for inspection specified in the request or another reasonable time specified in the response.

Fed. R. Civ. P. 34(b)(2)(C) Objections. An objection must state whether any responsive materials are being withheld on the basis of that objection. An objection to part of a request must specify the part and permit inspection of the rest.

Fed. R. Civ. P. 34(b)(2)(D) Responding to a Request for Production of Electronically Stored Information. The response may state an objection to a requested form for producing electronically stored information. If the responding party objects to a requested form — or if no form was specified in the request — the party must state the form or forms it intends to use.

Fed. R. Civ. P. 37(e) Failure to Preserve Electronically Stored Information. If electronically stored information that should have been preserved in the anticipation or conduct of litigation is lost because a party failed to take reasonable steps to preserve it, and it cannot be restored or replaced through additional discovery, the court:

  • (1) upon finding prejudice to another party from loss of the information, may order measures no greater than necessary to cure the prejudice; or
  • (2) only upon finding that the party acted with the intent to deprive another party of the information’s use in the litigation may:
    • (A) presume that the lost information was unfavorable to the party;
    • (B) instruct the jury that it may or must presume the information was unfavorable to the party; or
    • (C) dismiss the action or enter a default judgment.

A response to a request for production of documents and things must state, with respect to each item or category of documents or things requested to be produced, that inspection and related activities will be permitted as requested, or state with specificity the grounds for objecting to the request, including the reasons. [ Note 1.] The responding party may state that it will produce copies of documents or electronically stored information instead of permitting inspection. [ Note 2.]

It is incumbent upon a responding party to respond to each request by stating whether or not responsive documents exist and, if so, whether they will be produced at a specified reasonable time for inspection or are being withheld based on a claim of privilege or a specified objection. [ Note 3.] If copies are to be produced in lieu of inspection, the response must so state. [ Note 4.] If accurate, a party may respond that the requested documents are not in existence (e.g., lost or destroyed or that the documents are not within its possession, custody, or control). [ Note 5.] If an objection is made to only part of an item or category, the part must be specified, and inspection must be permitted of the rest of the responsive documents or things. [ Note 6.] A party may not redact portions of responsive documents on the ground that the non-disclosed information is not relevant or responsive where the information appears in a document that contains otherwise relevant or responsive information. [ Note 7.] A party may object to a requested form of data production for electronically stored information ("ESI"). [ Note 8.] If no form for the ESI is specified in the request, the party must state the form it intends to use, and must produce the ESI in the form in which it is ordinarily maintained or in a reasonably usable form.

A party that produces documents for inspection must produce them as they are kept in the usual course of business, or must organize and label them to correspond with the categories in the request. [ Note 9.] A party that produces ESI must produce the information in the form specified by the request, if no objection is made. It is contemplated that the parties will attempt to resolve such issues, i.e., the manner in which ESI will be produced, during their discovery conference. [ Note 10.] Aspects of ESI production other than form that should be discussed during the discovery conference, or when it becomes apparent that ESI will be produced, include a protocol for identifying and segregating potentially responsive ESI, who should review the ESI to determine whether the production of particular documents or information would be appropriate, and methods of searching the ESI, such as the use of "keywords," to identify documents and information responsive to the discovery requests. [ Note 11.]

A party has an obligation to take reasonable steps to preserve ESI in the anticipation or conduct of litigation. [ Note 12.] A duty to preserve electronically stored information arises not only during litigation but also extends to that period before litigation when a party reasonably should know that the evidence may be relevant to the litigation. [ Note 13.]

As amended on December 1, 2015, Fed. R. Civ. P. 37(e) provides that if electronically stored information that should have been preserved in the anticipation or conduct of litigation is lost because a party failed to take reasonable steps to preserve it, and it cannot be restored or replaced through additional discovery, the court: (1) upon finding prejudice to another party from loss of the information, may order measures no greater than necessary to cure the prejudice; or (2) only upon finding that the party acted with the intent to deprive another party of the information's use in the litigation may, among other things: presume that the lost information was unfavorable to the party or dismiss the action or enter a default judgment. [ Note 14.] For more guidelines regarding the application of remedies in the event of lost ESI, see Fed. R. Civ. P. 37(e) Committee Notes on Rules – 2015 Amendment.

A party withholding responsive documents on the basis of a claim of privilege must "(i) expressly make the claim; and (ii) describe the nature of the documents, communications, or tangible things not produced or disclosed – and do so in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the claim." [ Note 15.]

Fed. R. Civ. P. 26(b)(5) does not specify exactly how the party asserting privilege/protection must particularize its claim. The most common way is by using a privilege log, which identifies each document withheld, information regarding the nature of the privilege/protection claimed, the name of the person making/receiving the communication, the date and place of the communication, and the document’s general subject matter. [ Note 16.]

It is generally inappropriate for a party to respond to requests for production by filing a motion attacking them, such as a motion to strike, a motion to suppress, or a motion for a protective order. [ Note 17.] Rather, the party ordinarily should respond by indicating, with respect to those requests that it believes to be proper, that inspection and related activities will be permitted, and by stating reasons for objection with respect to those requests that it believes to be improper. See TBMP § 410.

For information regarding a party’s duty to supplement responses to requests for production, see TBMP § 408.03.

NOTES:

 1.   Fed. R. Civ. P. 34(b)(2)(B) and 34(b)(2)(C).

 2.   Fed. R. Civ. P. 34(b)(2)(B).

 3.   Fed. R. Civ. P. 34(b)(2)(B) and 34(b)(2)(C); Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment ("an objection to a Rule 34 request must state whether anything is being withheld on the basis of the objection"); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).

 4.   Fed. R. Civ. P. 34(b)(2)(B); Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment; No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).

 5.   Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1679 (TTAB 2005).

 6.   Fed. R. Civ. P. 34(b)(2)(C); Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment ("if the objection recognizes that some part of the request is appropriate the objection should state the scope that is not [objectionable and] ... the statement of what has been withheld can properly identify as matters ‘withheld’ anything beyond the scope of the search specified in the objection").

 7.   Intex Recreation Corp. v. The Coleman Co., 117 USPQ2d 1799 (TTAB 2016).

 8.   Fed. R. Civ. P. 34(b)(2)(D).

 9.   Fed. R. Civ. P. 34(b)(2)(E)(i); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1556 (TTAB 2000) (party may not simply dump large quantities of documents containing responsive as well as unresponsive documents).

 10.   Fed. R. Civ. P. 26(f)(3)(C). See also Fed. R. Civ. P. 34 Committee Notes on Rules – 2006 Amendment.

 11.   Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1905 (TTAB 2011).

 12.   See generally Zubulake v. UBS Warburg LLC, 220 F.R.D. 212, 216-18 (S.D.N.Y. 2003) (discussing the obligation to preserve electronically stored information); Busy Beauty, Inc. v. JPB Group, LLC, 2019 USPQ2d 338392, at *4 (TTAB 2019) (same).

 13.   Leon v. IDX Systems Corp., 464 F.3d 951, 956 (9th Cir. 2006); Silvestri v. General Motors Corp., 271 F.3d 583, 591 (4th Cir. 2001); Busy Beauty, Inc. v. JPB Group, LLC, 2019 USPQ2d 338392, at *4 (TTAB 2019) ("Once a party reasonably anticipates litigation, it must preserve information that falls within the scope of discovery as articulated in Rule 26(b)(1), namely ‘any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case.’").

 14.   Busy Beauty, Inc. v. JPB Group, LLC, 2019 USPQ2d 338392, at *5-6 (TTAB 2019); Optimal Chemical Inc. v. Srills LLC, 2019 USPQ2d 338409, at *5 (TTAB 2019).

 15.   Fed. R. Civ. P. 26(b)(5)(A)(i)-(ii).

 16.   Fed. R. Civ. P. 26(b)(5) Notes of Advisory Committee on Rules – 1993 Amendment; see Victor Stanley, Inc. v. Creative Pipe, Inc., 250 F.R.D. 251, 264-65 (D. Md. 2008) (discussing form of privilege logs under Fed. R. Civ. P. 26(b)(5)).

17. Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016).

406.05    Limit on Number

406.05(a)    Description of Limit

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. * * * *

The total number of requests for production of documents and things which a party may serve on another party, in a proceeding, may not exceed 75, counting subparts, except that the Board may allow additional requests for production on motion therefor showing good cause or on stipulation of the parties. [ Note 1.] See TBMP § 519. Parties may also stipulate that the limit on requests for production shall be fewer than 75. [ Note 2.]

NOTES:

 1.   37 C.F.R. § 2.120(e); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951, 69961 (October 7, 2016). Cf. Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467 n.5 (TTAB 1990) (the Board stating in the context of interrogatories in excess of the limit that "good cause will generally be found only where a legitimate need for further discovery by means of interrogatories is shown . . . the fact that the additional interrogatories served by opposer may be relevant and narrowly drawn to a single issue is insufficient, in and of itself, to demonstrate good cause.").

 2.   37 C.F.R. § 2.120(a)(2)(iv).

406.05(b)    Application of Limit: Sets of Requests for Production

The numerical limit specified in37 C.F.R. § 2.120(e)  pertains to the total number of requests for production of documents and things that one party may serve on another party over the course of an entire proceeding, not just per set of production requests. Thus, if a party to a proceeding before the Board serves, over the course of the proceeding, two or more separate sets of requests for production directed to the same party, the requests in the separate sets would be added together for purposes of determining whether the numerical limit specified in the rule has been exceeded. [ Note 1.]

Accordingly, a party which is preparing a first set of requests for production should consider reserving a portion of its allotted 75 requests for production (counting subparts) to use for follow-up discovery, unless it is sure that it will not be serving follow-up requests.

NOTES:

 1.   Cf. Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467 (TTAB 1990) (interrogatories).

406.05(c)    Application of Limit: Multiple Marks, Etc.

37 C.F.R. § 2.120(e)  does not provide for extra requests for production of documents and things in cases where more than one mark is pleaded and/or attacked by the plaintiff (whether in a single proceeding, or in consolidated proceedings), because in such cases the propounding party may simply request that each request for production be answered with respect to each involved mark of the responding party, and the requests for production will be counted the same as if they pertained to only one mark. Similarly, the rule does not provide for extra requests for production in cases where there is a counterclaim, because in a proceeding before the Board, the discovery information needed by a party for purposes of litigating the plaintiff’s claim usually encompasses the information needed by that party for purposes of litigating a counterclaim. That is, the mere fact that a proceeding involves multiple marks (whether in a single proceeding, or in consolidated proceedings) and/or a counterclaim does not mean that a party is entitled to serve 75 requests for production, counting subparts, for each mark, or for each proceeding that has been consolidated, or for both the main claim and the counterclaim. Nor does such fact, in and of itself, constitute good cause for a motion for leave to serve additional requests for production. However, a proceeding with multiple marks and/or a counterclaim may involve unusually numerous or complex issues, and these are factors that will be considered in determining a motion for leave to serve additional requests for production.

406.05(d)    Application of Limit: Counting Requests for Production

In determining whether the number of requests for production served by one party on another exceeds the limit specified in 37 C.F.R. § 2.120(e), requests will be counted in the same manner as interrogatories. [ Note 1.] See TBMP § 405.03(d).

NOTES:

 1.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69962 (October 7, 2016).

406.05(e)    Remedy for Excessive Requests for Production

37 C.F.R. § 2.120(e)  . . . If a party upon which requests have been served believes that the number of requests served exceeds the limitation specified in this paragraph, and is not willing to waive this basis for objection, the party shall, within the time for (and instead of) serving responses and specific objections to the requests, serve a general objection on the ground of their excessive number. If the inquiring party, in turn, files a motion to compel discovery, the motion must be accompanied by a copy of the set(s) of the requests which together are said to exceed the limitation, and must otherwise comply with the requirements of paragraph (f) of this section. * * * *

If a party on which requests for production of documents and things have been served, in a proceeding before the Board, believes that the number of requests exceeds the limit specified in 37 C.F.R. § 2.120(e), and wishes to object to the requests on this basis, the party must, within the time for (and instead of) serving responses and specific objections to the requests, serve a general objection on the ground of their excessive number. [ Note 1.] A party should not answer what it considers to be the first 75 requests and object to the rest as excessive. [ Note 2.] Failure to comply with the procedure set forth in 37 C.F.R. § 2.120(e) and to serve a general objection instead of responding to the requests may result in waiver of the right to object to the requests on the ground that they exceed the number permissible under the Board’s rules. [ Note 3.]

If a general objection on the ground of excessive number is asserted, and the propounding party, in turn, believes that the objection is not well taken, and wishes to obtain an adjudication from the Board as to the sufficiency thereof, the propounding party must file a motion to compel discovery. The motion must be accompanied by a copy of the set(s) of requests for production which together are said to exceed the limitation, and must otherwise comply with the requirements of 37 C.F.R. § 2.120(f), including the requirement that a motion to compel be supported by a showing from the moving party that such party or its attorney has made a good faith effort, by conference or correspondence, to resolve with the other party or its attorney the issues presented in the motion and has been unable to reach agreement. [ Note 4.] It is further recommended that the moving party set out its counting method showing that the number of requests for production does not exceed 75. [ Note 5.] For further information concerning motions to compel discovery, see TBMP § 523.

If, on determining a motion to compel filed in response to a general objection to requests for production on the ground of excessive number, the Board finds that the requests for production are excessive in number, and that the propounding party has not previously used up its allotted 75 requests for production, the Board normally will allow the propounding party an opportunity to serve a revised set of requests for production not exceeding the numerical limit. The revised set of requests for production serves as a substitute for the excessive set, and thus is deemed timely if the excessive set was timely. [ Note 6.]

However, if an order providing for a revised set of requests for production is not issued until late in the discovery period or after the close of the discovery period, the discovery period will be extended or reopened, as appropriate, to permit service of and responses to the revised set. Where discovery is reopened, the scope of the revised set may not exceed the scope of the excessive set, that is, the revised set may not seek information beyond the scope of the excessive set. [ Note 7.]

A party may properly refuse to respond to a document request seeking all documents identified or referred to in response to interrogatories if the number of interrogatories is believed to be excessive. [ Note 8.]

In those cases where a party which has propounded requests for production realizes, on receipt of a general objection thereto on the ground of excessive number, that the requests for production are, in fact, excessive in number, it is strongly recommended that the parties voluntarily agree to the service of a revised set of requests for production, in the manner normally allowed by the Board, instead of bringing their dispute to the Board by motion to compel.

NOTES:

 1.   37 C.F.R. § 2.120(e). Cf. Amazon Technologies v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009).

 2.   Cf. Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990).

 3.   Hewlett Packard Enterprise Development LP v. Arroware Industries, Inc., 2019 USPQ2d 158663, at *3 (TTAB 2019) ("Allowing Respondent to limit its responses to only those answers it chose to give prior to asserting the discovery requests are excessive in number, and thereby precluding Petitioner an opportunity to reformulate its requests, would defeat the purpose of Trademark Rules 2.120(d) and 2.120(e) and disregard the parties' affirmative duty to cooperate in the discovery process.").

 4.   37 C.F.R. § 2.120(e)  and 37 C.F.R. § 2.120(f).

5. Cf. Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016) (parties should specifically discuss their respective counting methods in attempt to resolve dispute over number of interrogatories).

6. Cf. Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Pyttronic Industries, Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990). See also Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398, 1398-99 (TTAB 1990) (excusing obligation to answer excessive set); Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990). Cf. Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1468 n.6 (TTAB 1990) (opposer may seek answers by taking discovery deposition of applicant).

7. 37 C.F.R. § 2.120(a)(3). Cf. Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Kellogg Co. v. Nugget Distributors’ Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990).

8. Cf. Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398, 1399 (TTAB 1990) (refusal to respond to document requests was proper; petitioner could not respond to document requests without first having to answer excessive interrogatories).