STIPULATIONS AND 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, and stipulations to end a proceeding in a specified way, must be filed with the Board. (Emphasis added) [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).

Examples of Stipulations Available In A TTAB Proceeding

(not an exhaustive list)

• The parties may stipulate to use of email for service;
• The parties can stipulate to various facts;
• The parties can stipulate to telephone depositions;
• The parties can stipulate to resolve a proceeding via ACR (Accelerated Case Resolution);
• In an ACR, the parties may stipulate that a case will be resolved based on the parties' cross-motions for summary judgment, responses and reply briefs filed in support thereof;
• The parties can stipulate to allow testimony to be taken by affidavit or declaration (Trademark Rule 2.123(b));
• The parties can stipulate to extensions or suspensions to accommodate settlement talks;
• The parties can stipulate to the authenticity of evidence submitted;
• The parties can stipulate to dismissal of an opposition proceeding in favor of a concurrent use proceeding;
• The parties may stipulate that any or all of the summary judgment evidence be treated as properly of record for purposes of final decision. Eveready Battery Co., Inc. v. Green Planet, Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial pursuant to Accelerated Case Resolution (ACR)); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n. 2 (TTAB 1998) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial);
• The parties may stipulate to consolidation of proceedings that are related;
• The parties may stipulate that documents produced in discovery from their respective files should be deemed authentic business records;
•  The parties may stipulate that the parties could submit direct trial testimony by declaration, subject to the opposing party's right to take oral cross-examination;
• The parties may stipulate to the admissibility of documents printed from the Internet through a notice of reliance. See Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031 (TTAB 2010) (documents obtained from the Internet may be admitted into evidence through a notice of reliance in the same manner as a printed publication in general circulation provided the documents identify the date of publication or date accessed and printed, as well as their source);
• The parties may stipulate to take testimony outside of its assigned testimony period if approved by the Board, (or upon motion granted by the Board, or by order of the Board);
• If a proceeding is to be dismissed by consent of both parties, the stipulation should specify whether the dismissal is to be with prejudice or without prejudice;
• The parties, by stipulation approved by the Board, may agree to an alternative protective order (otherwise the Trademark Trial and Appeal Board’s standard protective order is applicable during disclosure, discovery and at trial in all opposition, cancellation, interference and concurrent use registration proceedings).  

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)

Third Edition 1st Rev. June 2012

Chapter 400 DISCOVERY

(See all of Chapter 400 at NoticeOfOpposition.com)

TBMP 401 Introduction to Disclosures and 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.

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 Corporation v. Perfecta

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

USPQ 250 (TTAB 1978). For a discussion of ACR, see e.g., 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).

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

42244-7 (August 1, 2007); 37 CFR § 2.120; Fed. R. Civ. P. 26(a)(1)(A); Fed. R. Civ. P.

26(a)(1)(B); 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).

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 1767-68 (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

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 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 or 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, motion or counterclaim. [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 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 (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 (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 (TTAB 2009).

TBMP 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. Jeffrey S. Max, 93 USPQ2d 1702

(TTAB 2009).

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 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, but 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 (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(i)(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).

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).

TBMP 401.03 Expert Disclosures

37 CFR § 2.120(a)(2) ... Disclosure of expert testimony must occur in the manner and sequence provided in Federal Rule of Civil Procedure 26(a)(2), unless alternate directions have been provided by the Board in an institution order or any subsequent order resetting disclosure, discovery or trial dates. If the expert is retained after the deadline for disclosure of expert testimony, the party must promptly file a motion for leave to use expert testimony. Upon disclosure by any party of plans to use expert testimony, whether before or after the deadline for disclosing expert testimony, the Board may issue an order regarding expert discovery and /or set a deadline for any other party to disclose plans to use a rebuttal expert …

Fed. R. Civ. P. 26(a)(2) Disclosure of Expert Testimony.

(A) In General. In addition to the disclosures required by Rule 26(a)(1), a party must disclose to the other parties the identity of any witness it may use at trial to present evidence under Federal Rule of Evidence 702, 703, or 705.

(B) Witnesses Who Must Provide a Written Report. Unless otherwise stipulated or ordered by the court, this disclosure must be accompanied by a written report — prepared and signed by the witness — if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party's employee regularly involve giving expert testimony. The report must contain:

(i) a complete statement of all opinions the witness will express and the basis and reasons for them;

(ii) the facts or data considered by the witness in forming them;

(iii) any exhibits that will be used to summarize or support them;

(iv) the witness's qualifications, including a list of all publications authored in the previous 10 years;

(v) a list of all other cases in which, during the previous 4 years, the witness testified as an expert at trial or by deposition; and

(vi) a statement of the compensation to be paid for the study and testimony in the case.

(C) Witnesses Who Do Not Provide a Written Report. Unless otherwise stipulated or ordered by the court, if the witness is not required to provide a written report, this disclosure must state:

(i) the subject matter on which the witness is expected to present evidence under Federal Rule of Evidence 702, 703, or 705; and

(ii) a summary of the facts and opinions to which the witness is expected to testify.

(D) Time to Disclose Expert Testimony. A party must make these disclosures at the times and in the sequence that the court orders. Absent a stipulation or a court order, the disclosures must be made:

(i) at least 90 days before the date set for trial or for the case to be ready for trial; or

(ii) if the evidence is intended solely to contradict or rebut evidence on the same subject matter identified by another party under Rule 26(a)(2)(B) or (C), within 30 days after the other party's disclosure.

(E) Supplementing the Disclosure. The parties must supplement these disclosures when required under Rule 26(e).

A party generally must decide within the discovery period whether it plans to use an expert to testify at trial since expert disclosure is due 30 days prior to the close of discovery, or by any deadline that may be reset by any order of the Board issued after the initial institution order. [Note 1.] Parties are not required to disclose consulting experts. [Note 2.] The extent of the expert disclosure obligation is governed by Fed. R. Civ. P. 26, specifically, Fed. R. Civ. P. 26(a)(2). [Note 3]. The disclosure of planned or possible expert testimony by any party must be made by the expert disclosure deadline, regardless of whether any other party has made such disclosure. Thus, for example, if a defendant has plans to present, or may present, expert testimony to support an affirmative defense, regardless of whether a plaintiff may use expert testimony in support of a main claim, then the defendant must disclose the planned or possible presentation of such testimony by the deadline set by the Board. [Note 4.] If a party decides after the deadline for expert disclosure that it would like to, or may need to, rely on expert testimony at trial, the party must file a motion for leave to use the expert at trial. [Note 5.] The provisions regarding the timing of expert disclosure are intended to facilitate the taking of any necessary discovery by any party or parties adverse to the disclosing party, in regard to the proposed expert witness, and to allow the adverse party or parties to determine whether it will be necessary to rely on a rebutting expert. Parties are expected to cooperate in the process of exchanging information about any testifying experts, and should at least discuss, during the discovery conference, the possibility of entering into stipulations that will facilitate the exchange of such information and/or the presentation of expert testimony. The parties should revisit these discussions whenever it appears that a testifying expert witness may become involved in the case. [Note 6.]

Any party disclosing plans to use an expert must notify the Board that it has made the required disclosure (but should not file with the Board copies of the materials provided to adverse parties) to comply with Fed. R. Civ. P. 26(a)(2). [Note 7.] The Board may then suspend proceedings to allow for discovery limited to experts. [Note 8.] The suspension order may leave unchanged the deadline specified in the Federal Rule for disclosure of plans to use a rebuttal expert, or may reset the deadline, depending upon the circumstances at the time the Board issues the suspension order. Suspension is as to activities unrelated to the exchange of information about, and reports by, expected expert witnesses, and the parties should continue with the expert disclosure procedures specified in the Federal Rule pending issuance of any suspension order by the Board that will specify any actions of the parties required by the Board. If a party discloses plans to use an expert witness early in the discovery period, the Board may choose not to suspend discovery activities unrelated to the expected expert witnesses and may direct that all discovery activities continue concurrently with the disclosures and discovery relative to the experts. [Note 9.] The Board recognizes that there may be cases in which a party may not decide that it needs to present an expert witness at trial until after the deadline for expert disclosure. In such cases, disclosure must be made promptly when the expert is retained and a motion for leave to present testimony by the expert must be filed. [Note 10.] Prompt disclosure after the deadline, however, does not necessarily ensure that the expert’s testimony or evidence will be allowed into the record at trial. [Note 11] The Board will decide on a case-by-case basis how to handle a party’s late identification of experts. [Note 12.]

For further information regarding the duty to cooperate with regard to expert disclosures, see TBMP § 408.01(b).

NOTES:

1. See 37 CFR § 2.120(a). See also Miscellaneous Changes to Trademark Trial and Appeal

Board Rules, 72 Fed. Reg. 42242, 42246 (August 1, 2007) (in the absence of an order from the

Board setting a deadline, expert disclosures are governed by Fed. R. Civ. P. 26(a)(2), per

37 CFR § 2.120(a)(2)).

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

42254 (August 1, 2007).

3. See Jules Jurgensen/Rhapsody, Inc. v. Baumberger, 91 USPQ2d 1443 (TTAB 2009).

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

42246 (August 1, 2007).

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

42246 (August 1, 2007).

6. See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 n. 3 (TTAB 2011) (parties expected to cooperate to resolve problems arising from timely but incomplete expert disclosures).

7. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42246 (August 1, 2007). But see General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (37 CFR § 2.120(a)(2) does not mandate that a disclosing party inform the Board that an expert disclosure has been made; disclosing party's failure to notify the Board is not a ground to exclude the testimony).

8. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42246 (August 1, 2007); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) ("The purpose of informing the Board of such a disclosure is to facilitate discovery," but notification to the Board may not be necessary if expert-related discovery can be concluded by the close of discovery).

9. See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (in any given case, suspension of proceedings for expert-related discovery may not be necessary).

10. See 37 CFR § 2.120(a)(2).

11. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

12. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

TBMP 401.04 Modification of Disclosure Obligations

37 CFR § 2.120(a)(2) ... 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. If a stipulation or motion for modification is denied, disclosure deadlines

and obligations may remain as originally set or reset and obligations may remain unaltered. ...

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. [Note

1.] Written initial disclosures or disclosed documents, and materials obtained through the

disclosure process should not be filed with the Board, except when submitted with a motion

relating to disclosure or discovery, or in support of or in response to a motion for summary

judgment, or under a notice of reliance, when permitted, during a party’s testimony period.

[Note 2.] The parties may agree to waive or otherwise modify their obligation to make initial

disclosures, but must inform the Board by written stipulation or by motion. [Note 3.] A party

who fails to make the required or adequate disclosures may be subject to a motion to compel, and

ultimately a motion for sanctions, including possible judgment. [Note 4.] See TBMP § 411.01

for further information on motions to compel initial or expert disclosures.

In instances where the defendant is in default, or a pleading motion under Fed. R. Civ. P. 12 or

counterclaim has been filed, the parties’ obligation to make initial disclosures is effectively

stayed. [Note 5.] In such cases, the Board will reset the deadline for making initial disclosures

as well as the deadline for the discovery conference and all subsequent dates, after resolving or

accounting for the default, motion or counterclaim. [Note 6.] For further information regarding

the rescheduling of the discovery conference in these circumstances, see TBMP § 401.01.

Pretrial disclosures are not part of the disclosure and discovery process and, therefore, a motion

to compel is not the remedy when a party fails to make, or makes inadequate, pretrial

disclosures. See TBMP § 702.01 for further information on pretrial disclosures.

For a discussion regarding extensions of time to make disclosures and the impact of extensions

of time regarding the close of discovery on disclosure obligations, see TBMP § 403.04.

NOTES:

1. 37 CFR § 2.120(a)(2).

2. 37 CFR § 2.120(j)(8).

3. 37 CFR § 2.120(a)(2) and 37 CFR § 2.120(a)(3). See e.g., Boston Red Sox Baseball Club LP

v. Chaveriat, 87 USPQ2d 1767-8 (TTAB 2008).

4. 37 CFR § 2.120(e)(1); 37 CFR § 2.120(g)(1) and 37 CFR § 2.120(2); Promgirl, Inc. v. JPC

Co., 94 USPQ2d 1759, 1760 n.2 (TTAB 2009) (motion to compel is remedy when adversary has

failed to make or has made inadequate initial disclosures); Influance Inc. v. Zuker, 88 USPQ2d

1859 (TTAB 2008) (petitioner’s motion to compel amended initial disclosures granted where

respondent failed to identify the address or telephone number of listed witnesses, the subject

matter(s) about which each has information, and the location or production of identified

documents).

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).

TBMP 401.05 Form of Disclosures

Fed. R. Civ. P. 26(a)(4) Form of Disclosures. Unless the court orders otherwise, all disclosures

under Rule 26(a) must be in writing, signed, and served.

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

Fed. R. Civ. P. 26(g)(1) Signature Required; Effect of Signature. Every disclosure under Rule

26(a)(1) or (a)(3) and every discovery request, response, or objection must be signed by at least

one attorney of record in the attorney's own name — or by the party personally, if unrepresented

— and must state the signer's address, e-mail address, and telephone number. By signing, an

attorney or party certifies that to the best of the person's knowledge, information, and belief

formed after a reasonable inquiry:

(A) with respect to a disclosure, it is complete and correct as of the time it is made ...

(2) Failure to Sign. Other parties have no duty to act on an unsigned disclosure, request,

response, or objection until it is signed, and the court must strike it unless a signature is

promptly supplied after the omission is called to the attorney's or party's attention.

Disclosures must be in writing, signed by either the party or its attorney, and bear the caption and

proceeding number for the case. [Note 1.] The signer’s address, e-mail address and telephone

number must also be provided. [Note 2.] Signature of a disclosure constitutes certification that

the disclosure is complete and correct at the time it was made. [Note 3.] Disclosures also must

be served. [Note 4.]

Fed. R. Civ. P. 26 specifically exempts privileged information and work product from disclosure. For a discussion of the duty to supplement initial disclosures, see TBMP § 408.03.

For a discussion of violations of Fed. R. Civ. P. 26(g), see TBMP § 408.01(c).

NOTES:

1. Fed. R. Civ. P. 26(a)(4); Fed. R. Civ. P. 26(g). See Influance Inc. v. Zuker, 88 USPQ2d 1859,

1861 (TTAB 2008).

2. Fed. R. Civ. P. 26(g)(1).

3. Fed. R. Civ. P. 26(g)(1)(A).

4. Fed. R. Civ. P. 26(a)(4); Fed. R. Civ. P. 26(g).

TBMP 401.06 Other Requirements Under the Board’s Disclosure Regime

As noted above, parties are also required to hold a discovery conference discussing the subjects

set forth in Fed. R. Civ. P. 26(f) as well as the “nature and basis of the involved claims and

defenses, the possibility of settlement of the case or modification of the pleadings, and plans for

disclosures and discovery and any other subjects that the Board may, in an institution order,

require to be discussed. [Note 1.] The parties are free to discuss additional topics besides those

outlined in the institution order that could promote settlement or efficient adjudication of the

Board proceeding. [Note 2.] 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.

A party that has not made initial disclosures may not serve discovery requests or file a motion for

summary judgment, except for a motion addressing the Board’s jurisdiction or claim or issue

preclusion. [Note 3.] Under these circumstances, the requirement of service of initial

disclosures cannot be waived. [Note 4.] For a further discussion regarding the timing of filing a

motion for summary judgment, see TBMP § 528.02. A party that has not made initial

disclosures is also precluded from filing a motion to compel. [Note 5.]

Parties are also required to make pretrial disclosures prior to the opening of each testimony

period. For further information on pretrial disclosures, see TBMP § 702.01.

The Board expects parties (and their attorneys or other authorized representatives) to cooperate

with one another in the disclosure and discovery process, and looks with extreme disfavor on

those who do not. For further guidance regarding the parties’ duty to cooperate, see

TBMP § 408.01.

For a discussion of the duty to supplement written discovery responses and disclosures, see

TBMP § 408.03.

NOTES:

1. See 37 CFR § 2.120(a)(2); Fed. R. Civ. P. 26(f); Miscellaneous Changes to Trademark Trial

and Appeal Board Rules, 72 Fed. Reg. 42242, 42245 (August 1, 2007); Promgirl, Inc. v. JPC

Co., 94 USPQ2d 1759 (TTAB 2009).

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

3. 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 not yet

made and served initial disclosures). See also Compagnie Gervais Danone v. Precision

Formulations LLC, 89 USPQ2d 1251, 1255-56 (TTAB 2009) (“Because the Board does not

allow a party to file a motion for summary judgment prior to the moving party's service of initial

disclosures on the adverse party, the Board generally will no longer exercise its discretion to

convert motions to dismiss that refer to matters outside the pleadings into motions for summary

judgment, if such motions are filed before the moving party serves its initial disclosures.”).

4. Qualcomm, Inc. v. FLO Corp., 93 USPQ2d 1768, 1769-70 (TTAB 2010). But see Boston Red

Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767-8 (TTAB 2008) (Board approved parties’

stipulation to waive their reciprocal obligation to make initial disclosures).

5. 37 CFR § 2.120(a)(3) (“a party must make its initial disclosures prior to seeking discovery

...”). See Dating DNA, LLC v. Imagini Holdings, LLC, 94 USPQ2d 1889 (TTAB 2010) (motion to compel denied where moving party failed to make initial disclosures).

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