The discovery conference is the first thing the parties must do in a trademark cancellation after the answer is filed. The Trademark Trial and Appeal Board (TTAB) requires that the parties talk about particular matters concerning the cancellation before the discovery period opens. The parties are permitted to conduct the discovery conference in-person, but it’s typically done over the telephone for the sake of convenience. Although the TTAB doesn’t usually participate in the discovery conference, either party may ask that a TTAB interlocutory attorney assist in scheduling and guiding the conference. This could be especially helpful if at least one of the parties has not retained an attorney.
What is the Deadline for the Discovery Conference?
The deadline for having the discovery conference is listed on the Notice of Institution that’s sent by the TTAB to both parties shortly after the cancellation is filed. The deadline is generally 30 days from the date on which the registrant must file its answer to the petition for cancellation. Should the parties stipulate to extend the deadline for filing the answer, then the deadline for holding the discovery conference is also extended. If the registrant doesn’t file an answer by the original or extended deadline, the obligation to have the discovery conference is suspended (put on hold). If the registrant still fails to file an answer after the TTAB issues the Notice of Default, the TTAB will grant the cancellation in favor of the petitioner and the registrant’s trademark registration will be canceled.
Moreover, if the registrant files a motion to dismiss the petition for cancellation, or files a counterclaim as part of its answer, then the obligation of the parties to have the discovery conference is suspended until the TTAB issues a new scheduling order resetting the discovery conference deadline.
What Does the Conference Require?
During the discovery conference, the parties are required to talk about the following topics:
- The nature and basis of their claims and defenses
- The possibility of narrowing the scope of their claims and defenses
- The possibility of settling the cancellation in its entirety
- Preserving discoverable information and materials
- Arrangements for disclosures and discovery
- Arrangements for introducing evidence at trial
- The potential for utilizing the TTAB’s Accelerated Case Resolution (ACR) procedure
- Anything else that could promote efficient adjudication of the cancellation
In any given trademark cancellation, it’s to be expected that some of these topics will be more important or relevant than others. Therefore, the parties are permitted to concentrate on those particular topics while paying less attention to the other ones.
What Should I Expect After the Discovery Conference?
After the discovery conference, one of two things generally occurs. In the event both parties desire to explore settlement of the cancellation, they will typically agree to suspend the cancellation for at least 30-60 days so that they can enter into settlement discussions without the pressure of having to meet upcoming cancellation deadlines. Conversely, if it’s evident that an amicable resolution to the cancellation isn’t going to be achieved any time soon, then the cancellation will simply move forward and both parties will need to serve their initial disclosures within approximately 30 days after the discovery conference deadline.
Can I Help You with the Discovery Conference?
I’m experienced US trademark attorney Morris Turek. If you’re a party to a trademark cancellation and the deadline for the discovery conference is quickly approaching, I would be glad to talk with the other party on your behalf about the possibility of resolving and/or abbreviating the cancellation. Please feel free to call me at (314) 749-4059, send an email to morris@yourtrademarkattorney.com, or submit the contact form found near the bottom of this page. I look forward to speaking with you soon.