The discovery conference is the first thing the parties must do in a trademark opposition after the answer is filed. The Trademark Trial and Appeal Board (TTAB) requires that the parties discuss specific matters related to the opposition prior to the opening of the discovery period. The discovery conference may be conducted between the parties in-person, but it’s almost always done over the phone. Generally speaking, the TTAB doesn’t participate in the discovery conference. However, one or both of the parties may request that a TTAB representative help facilitate the conference, which could be especially useful if at least one of the parties isn’t represented by an attorney.
When Must the Discovery Conference Be Held?
The deadline for holding the discovery conference is listed on the Notice of Institution that’s sent by the TTAB to each of the parties shortly after the opposition is filed. The deadline is typically 30 days from the date on which the defendant must file its answer to the notice of opposition. If the parties mutually agree to extend the deadline for filing the answer, then the deadline for having the discovery conference is also extended. If the defendant fails to file an answer by the original or extended deadline, the obligation to hold the discovery conference is effectively stayed (put on hold). In the event the defendant still doesn’t file an answer after the TTAB issues the notice of default, the TTAB will sustain the opposition in favor of the opposer and the defendant’s trademark application will go abandoned.
Furthermore, if the defendant files a motion to dismiss the notice of opposition, or files a counterclaim, then the obligation of the parties to hold the discovery conference is stayed until the TTAB issues an order resetting the deadline for the discovery conference.
What are the Requirements?
At a minimum, the parties are required to discuss the following topics during the discovery conference:
- 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 opposition 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 opposition
Of course, some of these topics may be more relevant or important than others in any given trademark opposition. As such, the parties are free to focus more intently on those particular topics, while simply touching on the other ones.
What Happens After the Discovery Conference?
Usually one of two things happens after the discovery conference. If both parties are interested in exploring settlement of the opposition, they will frequently agree to suspend the opposition for a period of time so that they can engage in settlement negotiations without worrying about other upcoming opposition deadlines. On the other hand, if it’s clear that an amicable resolution to the opposition is unlikely to be reached at this early stage of the proceeding, then the opposition will simply continue and the parties will need to exchange initial disclosures within about 30 days after the deadline for holding the discovery conference.
Do You Need Assistance with the Discovery Conference?
I’m experienced US trademark attorney Morris Turek. If you’re involved in a trademark opposition and it’s time to hold the discovery conference, you may want to seek professional legal counsel to speak on your behalf and to discuss with the other party the potential for settling and/or abbreviating the opposition. You can reach me at (314) 749-4059, via email at firstname.lastname@example.org, or by completing the contact form located below. I look forward to speaking with you soon.