WHAT TO DISCUSS IN THE DISCOVERY CONFERENCE

TBMP 408.01(b) [ ] The Board adopted a disclosure regime in order to promote the early exchange of information and settlement and, for cases that do not settle, “more efficient discovery and trial, [reduction of] incidents of unfair surprise, and [to] increase the likelihood of fair disposition of the parties’ claims and defenses.” In addition, the utilization of routine disclosures of the types provided for in the Federal Rules of Civil Procedure is intended to “obviate the need to use traditional discovery to obtain ‘basic information’ about a party’s claims or defenses.” ( Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42244 and 42246 (August 1, 2007)).


Each party in an opposition or cancellation proceeding before the TTAB (Trademark Trial and Appeal Board) is equally obligated to ensure that a discovery conference takes place by the assigned deadline. See Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759 (TTAB 2009) (responsibility to schedule a conference and to confer on each of the topics outlined in Fed.R.Civ.P. 26 and the institution order is a shared responsibility); Guthy-Renker Corp. v. Boyd, 88 USPQ2d 1701, 1703 (TTAB 2008) ("it is the equal responsibility of both parties to ensure that the discovery conference takes place by the assigned deadline"); and Influance, Inc. v. Zuker, 88 USPQ2d 1859, 1860 n. 2 (TTAB 2008) (holding discovery conference is a mutual obligation).

Prakash Melwani v. Allegiance Corp. (TTAB 2010).


SOME EXCEPTIONS TO THE RULES: One of the parties may file a consented "Notice of Waiver of Initial Disclosures," wherein the parties agreed to "waive any requirement to make initial disclosures in this proceeding." Trademark Rules 2.120(a)(2) and 2.120(a)(3), as amended, allow parties to modify the discovery and trial schedule, including the deadline for making initial disclosures, if the parties file, and the Board approves, a stipulation or motion to that effect. Parties must inform the Board, by stipulation or motion, any time they agree to modify their obligations under the rules governing disclosures and discovery, as well as when they agree to modify deadlines or schedules that involve disclosures, discovery, trial or briefing. Such modifications are subject to Board approval. See Fed.R.Civ.P. 29, and Trademark Rule 2.116.

In the August 1, 2007 Notice of Final Rulemaking, 72 Fed. Reg. 42242, 42246, the Board specifically contemplated that parties might agree to "forego disclosures and agree to utilize only traditional discovery devices." When the parties file a stipulation, motion, or notice regarding waiver of initial disclosures, the Board strongly prefers the parties to include a description of the parties' alternate plans for discovery, even if such plans merely provide for use of traditional discovery devices such as depositions, interrogatories, requests for production or inspection, and requests for admission. As discussed in the Notice of Final Rulemaking, this description need not be extensive, although it should report any agreements to limit use of these discovery devices, allow for participation in depositions by telephone, and the like.

BOSTON v. HARRY F. CHAVERIAT III, 87 U.S.P.Q.2d 1767 (TTAB 2008).


THINGS TO DISCUSS IN THE DISCOVERY CONFERENCE:

(1) the nature of and basis for their respective claims and defenses,

(2) the possibility of settling the case or at least narrowing the scope of claims or defenses, and

(3) arrangements relating to disclosures, discovery and introduction of evidence at trial, should the parties not agree to settle the case.

Example: Nature of Responses: Parties are expected to discuss the format for production of documents during their mandatory discovery conference. However, in Board cases, parties often extend each other the courtesy of producing requested documents by copying the documents and forwarding them to the requesting party at the requesting party’s expense. Indeed, the Board believes this is more efficient and thus encourages this method of producing documents.


TBMP 501.02 Filing Stipulations

37 CFR § 2.120(a)(2) [Discovery] …The parties may stipulate to a shortening of the discovery

period. The discovery period may be extended upon stipulation of the parties approved by the

Board, or upon motion granted by the Board, or by order of the Board. . . Disclosure deadlines

and obligations may be modified upon written stipulation of the parties approved by the Board,

or upon motion granted by the Board, or by order of the Board. . . . The parties are not required

to prepare or transmit to the Board a written report outlining their discovery conference

discussions, unless the parties have agreed to alter disclosure or discovery obligations set forth

by these rules or applicable Federal Rules of Civil Procedure, or unless directed to file such a

report by a participating Board Interlocutory Attorney or Administrative Trademark Judge.


37 CFR § 2.120(a)(3) [Discovery] …A party must make its initial disclosures prior to seeking

discovery, absent modification of this requirement by a stipulation of the parties approved by the

Board, or a motion granted by the Board, or by order of the Board.


37 CFR § 2.121(d) [Assignment of times for taking testimony] When parties stipulate to the

rescheduling of a deadline for pretrial disclosures and subsequent testimony periods or to the

rescheduling of the closing date for discovery and the rescheduling of deadlines for pretrial

disclosures and testimony periods, a stipulation presented in the form used in a trial order,

signed by the parties, or a motion in said form signed by one party and including a statement

that every other party has agreed thereto, shall be submitted to the Board.


Stipulations which require action or consideration by the Board, such as stipulations to extend a

defendant's time to file an answer to the complaint, stipulations to alter the length of the

discovery period or disclosure obligations occurring during the discovery period, stipulations to

waive required initial disclosures, stipulations to reschedule pretrial disclosures and subsequent

trial dates, stipulations to extend trial dates, stipulations relating to the form of testimony,

stipulations to end a proceeding in a specified way, and stipulations to pretrial disposition on the

merits or abbreviated trial on the merits by means of Accelerated Case Resolution (ACR), must

be filed with the Board. [Note 1.] Some other types of stipulations, such as stipulations to

extend a party's time for responding to a request for discovery, do not necessarily have to be filed

with the Board. However, even in the case of a stipulation that does not have to be filed, the

better practice is to reduce the stipulation to writing, in order to avoid any misunderstanding

between the parties as to the existence and terms thereof.


NOTES:

1. 37 CFR § 2.120(a)(2); 37 CFR § 2.120(a)(3); 37 CFR § 2.121(d). See, e.g., Chanel Inc. v.

Makarczyk, 106 USPQ2d 1774, 1775-76 (TTAB 2013) (approving parties’ stipulation to proceed

Via ACR).



Examples of Stipulations Available In A TTAB Proceeding

(not an exhaustive list)


 

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)

Third Edition June 2014

Chapter 400 DISCOVERY


37 CFR § 2.120(a)(1) Wherever appropriate, the provisions of the Federal Rules of Civil

Procedure relating to disclosure and discovery shall apply in opposition, cancellation,

interference and concurrent use registration proceedings except as otherwise provided in this

section. The provisions of Federal Rule of Civil Procedure 26 relating to required disclosures,

the conference of the parties to discuss settlement and develop a disclosure and discovery plan,

the scope, timing and sequence of discovery, protective orders, signing of disclosures and

discovery responses, and supplementation of disclosures and discovery responses, are applicable

to Board proceedings in modified form . . . . The Board will specify the deadline for a discovery

conference, the opening and closing dates for the taking of discovery, and the deadlines within

the discovery period for making initial disclosures and expert disclosure. The trial order setting

these deadlines and dates will be included with the notice of institution of the proceeding.

Through the use of the various disclosures (i.e., initial and expert) and discovery devices (i.e.,

discovery depositions, interrogatories, requests for production of documents and things, and

requests for admission) available to litigants in inter partes proceedings before the Board, a party

may ascertain the facts underlying its adversary's case. Discovery of these facts may lead to a

settlement of the case, may simplify the issues, or may reveal a basis for a motion for summary

judgment, an additional claim (in the case of a plaintiff), or an additional defense or counterclaim

(in the case of a defendant). At the very least, taking discovery enables the propounding party to

propose to the responding party stipulations of fact, stipulations as to procedures for introducing

into the record evidence produced in response to discovery requests, and to otherwise prepare for

trial. Propounding and responding to discovery may further lead parties to stipulate to narrowing

the issues for trial, or to stipulate to expedited determination of their case under the Board’s

Accelerated Case Resolution (ACR) process. [Note 1.] See TBMP § 528.05(a)(2), TBMP

§ 702.04 and TBMP § 705 for information regarding ACR and stipulations.


The conduct of discovery in Board inter partes proceedings is governed by 37 CFR § 2.120.

Discovery before the Board under 37 CFR § 2.120 is similar in many respects to discovery

before the federal district courts under the Federal Rules of Civil Procedure. Ordinarily, the

discovery provisions of the Federal Rules of Civil Procedure are applicable in Board inter partes

proceedings, except as otherwise provided in 37 CFR § 2.120. The provisions of the Federal

Rules relating to automatic disclosure and discovery conferences are not applicable in inter

partes proceedings commenced prior to November 1, 2007. [Note 2.] However, for inter partes

proceedings commenced on or after November 1, 2007, the Board has adopted a modified

disclosure and conferencing regime. [Note 3.] For cases commenced on or after November 1,

2007, all involved parties are obliged to (1) conduct a discovery conference to discuss disclosure

and discovery plans, and (2) make initial, expert, and pretrial disclosures. The Board adopted the

disclosure regime of the Federal Rules in order to promote the early exchange of information and

earlier settlement of cases and, for cases that do not settle, “more efficient discovery and trial,

[reduction of] incidents of unfair surprise, and [to] increase the likelihood of fair disposition of

the parties’ claims and defenses.” [Note 4.] In addition, the utilization of initial and expert

disclosures is intended to “obviate the need to use traditional discovery to obtain ‘basic

information’ about a party’s claims or defenses.” [Note 5.] In the absence of any express

written statement from the parties filed with the Board that they waive their reciprocal rights to

obtain disclosures, or agree to restrictions on the use of particular discovery devices, the Board

will presume the parties will comply with their obligation to make all required disclosures and

will utilize traditional discovery devices, as permitted by the Trademark Rules and Federal Rules

of Civil Procedure. [Note 6.]


For more information regarding discovery conferences, see TBMP § 401.01 and TBMP

§ 408.01(a).


For a discussion of when discovery requests, discovery responses, and disclosures should be

filed with the Board, see TBMP § 409.


For information regarding pretrial disclosures, see TBMP § 702.01.


For information regarding Accelerated Case Resolution (ACR), see TBMP § 528.05(a)(2) and

TBMP § 702.04.


NOTES:

1. For a discussion of the purposes served by discovery, see Fischer Gesellschaft m.b.H. v.

Molnar & Co., 203 USPQ 861, 865 (TTAB 1979). See also Bison Corp. v. Perfecta Chemie

B.V., 4 USPQ2d 1718, 1720 (TTAB 1987); Smith International, Inc. v. Olin Corp., 201 USPQ

250, 250 (TTAB 1978). For a discussion of ACR, see, for example, Eveready Battery Co., Inc.

v. Green Planet, Inc., 91 USPQ2d 1511, 1513 (TTAB 2009).

2. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed.

Reg. 42242 (August 1, 2007). See also Midwestern Pet Foods Inc. v. Societe des Produits Nestle

S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1437-38 (Fed. Cir. 2012) (pre-2007 procedures did not

call for disclosures).

3. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42244-47 (August 1, 2007); 37 CFR § 2.120; Fed. R. Civ. P. 26(a)(1)(A); Fed. R. Civ. P.

26(a)(2); Fed. R. Civ. P. 26(a)(3); Fed. R. Civ. P. 26(f).

4. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42244 and 42246 (August 1, 2007). See also Luster Products Inc. v. Van Zandt 104

USPQ2d 1877, 1879-80 n.5 (TTAB 2012) (citing August 1, 2007 final rule); Spier Wines (PTY)

Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (disclosures, from initial through

pretrial, and discovery responses should be viewed as a continuum of communication designed

to avoid unfair surprise and to facilitate a fair adjudication of the case on the merits); General

Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB

2011) (adoption of disclosure model intended to provide an orderly administration of the

proceeding as it moves to trial).

5. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244 and 42246 (August 1, 2007).

6. See Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767-68 (TTAB

2008).


TBMP 401.01 Discovery Conferences

37 CFR § 2.120(a)(1) ... The provisions of Federal Rule of Civil Procedure relating to ... the

conference of the parties to discuss settlement and develop a disclosure and discovery plan, ...

are applicable to Board proceedings in modified form . . . The Board will specify the deadline for

a discovery conference ...


37 CFR § 2.120(a)(2) The discovery conference shall occur no later than the opening of the

discovery period, and the parties must discuss the subjects set forth in Federal Rule of Civil

Procedure 26(f) and any subjects set forth in the Board’s institution order. A Board

Interlocutory Attorney or Administrative Trademark Judge will participate in the conference

upon request of any party made after answer but no later than ten days prior to the deadline for

the conference. The participating attorney or judge may expand or reduce the number or nature

of subjects to be discussed in the conference as may be deemed appropriate. ... The parties are

not required to prepare or transmit to the Board a written report outlining their discovery

conference discussions, unless the parties have agreed to alter disclosure or discovery

obligations set forth by these rules or applicable Federal Rules of Civil Procedure, or unless

directed to file such a report by a participating Board Interlocutory Attorney or Administrative

Trademark Judge.


Fed. R. Civ. P. 26(f)(2) ... In conferring, the parties must consider the nature and basis of their

claims and defenses and the possibilities for promptly settling or resolving the case; ... discuss

any issues about preserving discoverable information. ...

For inter partes proceedings commenced on or after November 1, 2007, the parties are required

to hold a discovery conference to discuss the subjects set forth in Fed. R. Civ. P. 26(f) and in the

institution order for the case. [Note 1.] As specified in the Board’s institution order:

[T]he parties are required to have a conference to discuss: (1) the nature of and

basis for their respective claims and defenses, (2) the possibility of settling the

case or at least narrowing the scope of claims or defenses, and (3) arrangements

relating to disclosures, discovery and introduction of evidence at trial, should the

parties not agree to settle the case. See Trademark Rule 2.120(a)(2). Discussion

of the first two of these three subjects should include a discussion of whether the

parties wish to seek mediation, arbitration or some other means for resolving

their dispute. Discussion of the third subject should include a discussion of

whether the Board's Accelerated Case Resolution (ACR) process may be a more

efficient and economical means of trying the involved claims and defenses.

Information on the ACR process is available at the Board's main webpage.

Finally, if the parties choose to proceed with the disclosure, discovery and trial

procedures that govern this case and which are set out in the Trademark Rules

and Federal Rules of Civil Procedure, then they must discuss whether to alter or

amend any such procedures, and whether to alter or amend the Standard


Protective Order (further discussed below). Discussion of alterations or

amendments of otherwise prescribed procedures can include discussion of

limitations on disclosures or discovery, willingness to enter into stipulations of

fact, and willingness to enter into stipulations regarding more efficient options for

introducing at trial information or material obtained through disclosures or

Discovery.


The conference is not limited to the subjects listed in Fed. R. Civ. P. 26(f) or in the Board’s

institution order and “the parties are free to discuss any additional topics that could promote

settlement or efficient adjudication of the Board proceeding,” including alternative means for

adjudication such as the Board’s Accelerated Case Resolution (ACR) procedure. [Note 2.] See

TBMP § 528.05(a)(2) and TBMP § 702.04 for further information on ACR. Because the parties

may enter into stipulations altering disclosure obligations, they should continue to discuss their

reciprocal obligations, and progress made in satisfying such obligations, even after the discovery

conference has been held.


The conference should take place once the pleadings have closed by the deadline set forth in the

Board’s institution order (or by any extended deadline approved by the Board), and must take

place no later than the opening of the discovery period. [Note 3.] In instances, however, where

the defendant is in default, or a pleading motion under Fed. R. Civ. P. 12 has been filed, or a

counterclaim has been filed, the parties’ obligation to have a discovery conference is effectively

stayed. [Note 4.] The rationale is that an answer must be filed to all claims and counterclaims,

and issues related to the pleadings resolved before the parties can have a meaningful discovery

conference. [Note 5.] In such cases, the Board will reset the deadline for the discovery

conference as well as all subsequent dates, upon resolution of the default, or Fed. R. Civ. P. 12

motion, or acknowledgement of the counterclaim, which may include setting or resetting the

deadline for filing an answer. [Note 6.] Generally after an answer is filed, the Board is unlikely

to find good cause to extend the deadline for the discovery conference for settlement

negotiations, even upon stipulation or consent. [Note 7.] There is no Fed. R. Civ. P. 16(b)

scheduling/conference order.


The parties’ discovery conference may be in person or by other means (e.g. telephone). [Note 8.]

If any party wants a Board professional to participate in the required discovery conference, the

party must call the Board attorney assigned to the case or file such request through ESTTA

(Electronic System for Trademark Trials and Appeals), the Board’s electronic filing system, no

later than ten (10) days prior to the deadline for conducting the discovery conference, so as to

facilitate completion of the conference by the deadline. [Note 9.] Board participation is

encouraged where pro se litigants are involved. [Note 10.] The participating attorney or judge

has discretion to expand or reduce the number or nature of subjects to be discussed during the

conference. [Note 11.] For instance, the Board professional may ascertain whether the parties

have previously engaged in settlement discussions, explain to the parties the Board’s ACR

option, and may inquire whether the parties need additional time after the conference to discuss

settlement. [Note 12.] Participation by a Board professional will be by telephone. [Note 13.]

If neither party requests Board participation in the discovery conference, the parties still must

conference no later than the prescribed deadline, and the Board will operate on the assumption

that the conference was held by the deadline. The mere discussion of settlement amongst the

parties does not substitute for a full discovery conference of subjects set forth in Fed. R. Civ. P.

26(f) and the Board’s institution order. [Note 14.]


Unlike the Federal Rules, the parties do not have to file a disclosure/discovery plan with the

Board following their discovery conference, unless they are seeking leave by motion or

stipulation to alter standard deadlines or obligations, or unless they were directed to do so by the

Board. [Note 15.]


The Board has the authority to order parties to hold a discovery conference, either sua sponte or

upon motion. [Note 16.]


For a discussion regarding the duty to cooperate in scheduling and conducting a discovery

conference, and the imposition of sanctions for the failure to participate in a discovery

conference, see TBMP § 408.01(a).

NOTES:

1. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42245 and 42252 (August 1, 2007); 37 CFR § 2.120(a)(2); Fed. R. Civ. P. 26(f). See,

e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761-62 (TTAB 2009) (mere discussion of

settlement does not substitute for full discovery conference of subjects set forth in Fed. R. Civ. P.

26 and Board’s institution order).

2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42245 and 42252 (August 1, 2007). See Weatherford/Lamb Inc. v. C&J Energy Services,

Inc., 96 USPQ2d 1834, 1836 n.4 (TTAB 2010) (parties encouraged to discuss ACR during

discovery conference).

3. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42245 (August 1, 2007).

4. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42245 (August 1, 2007).

5. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42245 (August 1, 2007).

6. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42245 (August 1, 2007).

7. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42245 (August 1, 2007). See Boston Red Sox Baseball Club LP v. Chaveriat, 87

USPQ2d 1767, n.1 (TTAB 2008) (“The Board is unlikely to find good cause when such a request

is based on the parties’ desire to engage in settlement discussions.”).


8. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42245 (August 1, 2007).

9. See 37 CFR § 2.120(a)(2); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007). But see Promgirl, Inc. v. JPC Co.,

94 USPQ2d 1759 (TTAB 2009) (Board professional can participate in discovery conference with

less than ten days notice in instances where parties are at an impasse; conference may take place

after deadline in those circumstances).

10. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42252 (August 1, 2007) (“. . . Board professionals involved in conferences will fill the

educator’s role [that] would have to be filled by experienced counsel.”).

11. 37 CFR § 2.120(a)(2).

12. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42252 (August 1, 2007).

13. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42245 (August 1, 2007).

14. Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761-62 (TTAB 2009).

15. 37 CFR § 2.120(a)(2); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).

16. See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1763 (TTAB 2009).

401.02 Initial Disclosures

37 CFR § 2.120(a)(2) . . . Initial disclosures must be made no later than thirty days after the

opening of the discovery period. ...

37 CFR § 2.120(a)(3) A party must make its initial disclosures prior to seeking discovery, absent

modification of this requirement by a stipulation of the parties approved by the Board, or a

motion granted by the Board, or by order of the Board. ...

Fed. R. Civ. P. 26(a) (1) Initial Disclosures.

(A) In General. Except as exempted by Rule 26(a)(1)(B) or as otherwise stipulated or

ordered by the court, a party must, without awaiting a discovery request, provide to the

other parties:

(i) the name and, if known, the address and telephone number of each individual likely to

have discoverable information — along with the subjects of that information — that the

disclosing party may use to support its claims or defenses, unless the use would be solely

for impeachment;

(ii) a copy — or a description by category and location — of all documents,

electronically stored information, and tangible things that the disclosing party has in its

possession, custody, or control and may use to support its claims or defenses, unless the

use would be solely for impeachment ...

Each party involved in an inter partes proceeding is obligated to make initial disclosures to every

other party, by the deadline set in the Board’s institution order, or as may be reset by stipulation

of the parties approved by the Board, or by motion granted by the Board, or by order of the

Board. [Note 1.] A party may not seek discovery through traditional devices until after it has

made its initial disclosures, absent modification of this requirement by a stipulation or motion of

the parties approved by the Board, or upon Board order. [Note 2.] Generally, each party will

meet this obligation by complying with the disclosure requirements set forth in Fed. R. Civ. P.

26(a)(1)(A)(i) and (ii); subsections (iii) and (iv) of Rule 26(a)(1)(A) do not apply to Board

proceedings. [Note 3.] “Initial disclosures are not intended to substitute for all discovery but,

rather, to prompt routine disclosure of names of potential witnesses and basic information about

documents and things that a party may use to support a claim or defense.” [Note 4.]


Pursuant to Fed. R. Civ. P. 26(a)(1), a party is not obligated to disclose the name of every

witness, document or thing that may have or contain discoverable information about its claim or

defense, but merely the witnesses, documents and things having or containing discoverable

“information that the disclosing party may use to support its claims or defenses.” [Note 5.] If,

however, a party does identify a trial witness in its initial disclosures, the party must provide the

subject matter(s) about which each identified witness is likely to have discoverable information,

as well as any known addresses and/or phone numbers for the identified witness. [Note 6.] In

addition, a party must either provide the location of all identified documents in its initial

disclosures, or, in the alternative, produce them. [Note 7.]


Initial disclosures are not a substitute for taking comprehensive discovery. [Note 8.]

Nonetheless, discovery in Board proceedings should be more limited in scope than in district

court cases since Board jurisdiction is limited to determining a party’s right to obtain or retain a

registration. [Note 9.] However, in the spirit of cooperation, parties can, subject to Board

approval, stipulate to rely on more expansive use of reciprocal disclosures in lieu of formal

discovery, as a more efficient and less costly means of litigating a Board proceeding. [Note 10.]

There is no concept of priority in regard to initial disclosures, and a party is not relieved of its

obligation to make or supplement initial disclosures merely because it may not have received

such disclosures or supplementation from an adverse party or parties. [Note 11.] For

information regarding the duty to supplement initial disclosures, see TBMP § 408.03.


A party making initial disclosures has the option of disclosing information about the existence

and location of documents instead of producing copies of documents. [Note 12.] However, the

Board encourages parties to actually exchange copies of disclosed documents rather than to

merely identify their location. [Note 13.]


Initial written disclosures and initial disclosures of documents are treated like responses to

discovery requests insofar as they may be used in support of or in opposition to a motion for

summary judgment and may, at trial, be introduced by notice of reliance. [Note 14.] For more

information on motions for summary judgment and introduction of disclosures at trial by notice

of reliance, see TBMP § 528 and TBMP § 704.14.


Pertinent information under Fed. R. Civ. P. 26(a)(1) stored in digital or electronic form must also

be identified in initial disclosures. For further information regarding the discovery of

electronically stored information, see TBMP § 402.02.


A party failing to make initial disclosures may be subject to a motion to compel, and ultimately,

a motion for discovery sanctions. [Note 15.]


In addition, a party may not file a motion for summary judgment until the party has made its

initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction

by the Board. [Note 16.]


For further information regarding the duty to cooperate and remedies for failure to make initial

disclosures, see TBMP § 408.01(b) and TBMP § 411.01.


NOTES:

1. 37 CFR §§ 2.120(a)(1)-(3).

2. 37 CFR § 2.120(a)(3). See Amazon Technologies, Inc. v. Wax, 93 USPQ2d 1702, 1704-06

(TTAB 2009) (party objecting to discovery due to proponent’s alleged failure to make initial

disclosures must specifically articulate that objection); Boston Red Sox Baseball Club LP v.

Chaveriat, 87 USPQ2d 1767, 1768 (TTAB 2008) (parties' notice of waiver of initial disclosures

approved).

3. See 37 CFR § 2.120(a)(1). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND

APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007); Influance Inc. v. Zuker, 88

USPQ2d 1859, 1861 (TTAB 2008) (initial disclosures must be signed by party or party’s

attorney to comply with Fed. R. Civ. P. 26(g)).

4. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42246 (August 1, 2007).

5. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42246 (August 1, 2007). See Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323,

1326 (TTAB 2011) (because an exhaustive search for all information or potential witnesses is

not required, Board did not exclude the testimony of certain witnesses named for the first time in

pretrial disclosures based on the failure to name them in initial disclosures, though the testimony

for most witnesses was excluded for other reasons); Jules Jurgensen/Rhapsody Inc. v.

Baumberger, 91 USPQ2d 1443, 1444 n.1 (TTAB 2009) (“A party need not, through its

mandatory initial disclosures, identify particular individuals as prospective trial witnesses, per se,

Chapter 400 - 12but must identify ‘each individual likely to have discoverable information that the disclosing

party may use to support its claims or defenses.’ . . . Individuals identified through initial

disclosures therefore could reasonably be viewed as possible witnesses.”). But see Byer

California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1179 (TTAB 2010) (where

opposer identifies trial witness in pretrial disclosures who was not identified in initial

disclosures, opposer ordered to serve revised pretrial disclosure limiting testimony witness to

subjects on which second trial witness that was identified in initial disclosures is expected to

testify).

6. Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008).

7. Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008).

8. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242,

42246 (August 1, 2007).

9. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42245-6 (August 1, 2007).

10. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42246 (August 1, 2007).

11. Fed. R. Civ. P. 26(a)(1)(E).

12. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg.

42242, 42254 (August 1, 2007).

13. Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 n.4 (TTAB 2008).

14. 37 CFR § 2.127(e)(2) and 37 CFR § 2.120(j)(3)(i). See MISCELLANEOUS CHANGES TO

TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

15. 37 CFR § 2.120(e); 37 CFR § 2.120(g)(1); MISCELLANEOUS CHANGES TO TRADEMARK

TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42256 (August 1, 2007). See also Luster

Products Inc. v. Van Zandt, 104 USPQ2d 1877, 1878-79 (TTAB 2012) (motion to compel is

available remedy for failure to serve, or insufficient, initial disclosures).

16. 37 CFR § 2.127(e)(1). See, e.g., Qualcomm, Inc. v. FLO Corp., 93 USPQ2d 1768, 1769-70

(TTAB 2010) (motion for summary judgment denied as premature where movant had yet to

serve initial disclosures).


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