Discovery Rules in Trademark Trial and Appeal Board Proceedings

If you are a party in a Trademark Trial and Appeal Board ("Board") Proceeding, you will participate in the discovery process. This process serves the same purpose as it would in federal or state court. Discovery permits parties to obtain facts, ascertain the identity of relevant witnesses, and obtain documents. The principal methods of discovery are (1) requests for admission; (2) request for documents; (3) interrogatories; (4) oral depositions; and (5) depositions upon written questions. The Federal Rules of Civil Procedure apply to Board Proceedings. However, if the Board has its own rule concerning a particular discovery matter, then that rule will govern. The Trademark Rules of Practice ("Trademark Rules") are set forth in Title 37 of the Code of Federal Regulations.

As part of the discovery process, the parties will participate in a discovery conference. This is typically scheduled via telephone conference. the parties must consider the claims and defenses and whether there is a possibility for settlement. In addition, assuming settlement is not practicable the parties must discuss the following topics: (1) if either party has a timing issue pertaining to discovery; (2) the subjects on which discovery is needed; (3) preservation of electronically stored information; (4) claims of privilege or protection of certain material; and any issues pertaining to witness availability or scheduling. The discovery phase is restricted to six months. Written requests for discovery can be served up to the last day of the 180 day period even though the response will be due after the close of the six month period. Initial disclosures must be made no later than thirty days after the opening of the discovery period.

There are strategic benefits to serving your written demands early in the discovery phase. This will allow you plenty of time to review your adversary's responses, prior to taking discovery depositions. In addition, if your opponent fails to provide you with full and adequate responses initially, you will have ample time to further request an amplified response or additional information before discovery depositions. Under most circumstances, you will need a second round of discovery demands to ensure you have all the information necessary to prepare for depositions. Responses to interrogatories, production of document requests, and requests for admission must be served within thirty days of the date of service of the request. Evidence requested, but not produced may be excluded from evidence.

If the demanding party requests an excessive amount of items, the Board has held that the responding party may submit a representative sample of responses. This holding discourages a party from serving demands that will be overly burdensome to their opposition. There is an inclination in the discovery phase to request broad information since discovery is governed by the liberal rules of Federal Rules of Civil Procedure. Essentially, under FRCP 26(b)(1) a party may obtain discovery regarding any matter, not privileged that is relevant to the claim or to the defense. The Board has underscored this general prinicple by holding that "[I]t is generally been held that the requirement of relevancy must be construed liberally and that discovery should, therefore, be generally allowed unless it is clear, beyond any doubt, that the information sought can have no possible bearing upon the issues involved in the particular proceeding. Varion Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583 (TTAB 1975).

Discovery regularly calls for production of confidential documents. The information to be produced may include sales figures, advertising expenditures, marketing plans etc. The responding party may protect the confidentiality of the documents through a protective order. The responding party has the onus of designating such information or material as confidential in accordance with the terms of the protective order; otherwise it will not be treated as confidential. If discovery is not produced the demanding party may file a motion to compel discovery prior to the commencement of the first testimony period. Another type of motion that can be filed is a motion to determine the sufficiency of an answer or objection to a request for an admission. A party may also schedule a telephone conference as an option for resolving discovery disputes. If you have questions about Board proceedings, or other trademark related questions, please feel free to contact our office.