An Overview of Discovery in Board Proceedings

The provisions of Rule 26 of the Federal Rules of Civil Procedure relating to required disclosures are applicable to Board proceedings. The parties in a Board proceeding are required to make initial disclosures which include identifying individuals with knowledge who may be used to support a claim or a defense, identifying the category and location of documents which may be used to support a claim or defense. In addition, parties are required to disclose information pertaining to expert witnesses who will be used during the trial phase of the case with a written report prepared and signed by the witness. Lastly, during the pre-trial phase, the identity of each witness from whom it intends to take testimony must be disclosed along with a list of subjects on which the witness is expected to testify, and a general list of the types of documents which may be introduced as exhibits during the testimony of the witness. The length of the discovery period is 180 days. If a party fails to disclose required information, the Board may exclude such information from the record of evidence.

Parties may also pursue traditional discovery, in addition to obtaining written disclosures. These methods may include: (1) depositions upon oral examination or written questions; (2) written interrogatories; (3) requests for production of documents; or (4) requests for admissions. However, traditional discovery requests must wait until after initial disclosures have occurred. A discovery conference must be held no later than the opening date of the discovery period. The conference may occur via telephone and an in-person meeting is not required.

As part of the discovery conference the following topics are typically discussed: (1) the basis for the claims and defenses; (2) possible settlement of the matter or at least narrowing the number or scope of the claims and defenses (see our webpage entitled, Settlement Options For Trademark Disputes for several typical alternatives for resolving disputes); (3) possibility of seeking mediation, arbitration or the Board's Accelerated Case Resolution Procedure. The parties are not required to submit to the Board a written report summarizing the issues discussed. Disclosure deadlines may be modified upon written stipulation by the parties and there must be Board approval. There may also be a motion filed to extend the time or an Order of the Board for extension of discovery deadlines.

The Accelerated Case Resolution is recommended if the parties can stipulate to many facts or if the parties do not intend to rely on extensive discovery. In order to take advantage of this method of resolution, the parties must stipulate that in lieu of a trial, the Board can resolve issues of material fact. After the briefs are filed, the Board issues a decision on the merits within fifty days.

Once the initial disclosures are served, the parties have a continuing obligation to update its disclosures if new information becomes available (Federal Rule of Civil Procedure 26(e)). The following information must be disclosed: the name, address and telephone number of each individual who may have discoverable information to aid in support of a claim or defense, and the subject of the information. Also, a party must disclose by category and location all documents in list form, whether it is electronically stored or it is in hard copy format. However, the documents themselves are not required to be produced at the time of initial disclosure. Then at a later point, the request for production is made pursuant to Rule 34 of Federal Rules of Civil Procedure. It is important to note that Rules 26(a)(1)(C) & 26(a)(1)(D) do not apply in Board proceedings.

The purpose of pretrial disclosures is to provide advance notice to your adversary, allowing preparation for trial and preventing unfair surprise. One must disclose each witness at the pretrial phase even if such witness was already disclosed during intial disclosure. Each party must make its pretrial disclosures at least fifteen days prior to its testimony period. Written disclosures or disclosed documents need not be filed with the Board except under limited circumstances. Also, if a party plans on not taking testimony from a designated witness, it must state so in pretrial disclosure.

Under Trademark Rule 2.123(b), 37 CFR § 2.123(b) there must be a written stipulation of the parties, if there is a witness or witnesses who are expected to testify by affidavit and there must also be information pertaining to those providing oral testimony. However, parties need not disclose notices of reliance it intends to file during the testimony period during pretrial disclosure. It is important to follow the rules closely during the discovery phase of Board proceedings because the penalty for violations is exclusion of evidence into the record which can severely prejudice a party's case. If you have questions, regarding a Board proceeding, please contact our office for a courtesy consultation.