The discovery period in a trademark opposition or trademark cancellation is the time during which each party may request information and documents from the other party. The primary purpose of discovery is to (1) seek relevant information and facts that may be helpful or harmful to each party’s case, (2) obtain most (if not all) of the documents and things that each party may use to support its case during its trial period, and (3) determine which facts are not in dispute so that the matters that must be resolved by the Trademark Trial and Appeal Board (TTAB) at trial are narrowed down.
Oftentimes, the parties in a trademark opposition or cancellation are able to reach a settlement after the discovery period has closed. This is because each party has had the opportunity to review the other party’s evidence and is now in a better position to understand the strengths and weaknesses of their respective cases. In other words, the parties may not want to risk an adverse judgment by the TTAB if the information and documents disclosed during discovery indicate that the TTAB is likely to rule in one way or the other.
What May Each Party Do During the Discovery Period?
During the discovery period, each party is allowed to serve on the other party the following:
- Requests for Admissions (written statements that the party must admit or deny to the best of its knowledge)
- Interrogatories (written requests seeking relevant information that the party may have in its possession, custody, or control)
- Requests for Production of Documents and Things (written requests seeking relevant documents and things that the party may have in its possession, custody, or control)
These are collectively referred to as “discovery requests” and serving them on the other party is typically the first thing each party will do during the discovery period. A party served with discovery requests must serve its responses on the other party within 30 days.
In addition, each party may do the following:
- Take oral depositions of individuals associated with the other party (such as corporate officers and agents)
- Take depositions on written questions of individuals associated with the other party (this is a cumbersome procedure that I don’t recommend unless absolutely necessary)
Lastly, each party is permitted to take depositions of individuals not associated with the other party. However, this is pretty rare in trademark oppositions and cancellations because most of the relevant information, facts, and documents are in the possession, custody, and/or control of the parties themselves. Plus, securing the attendance of a non-party for a deposition can be difficult, time-consuming, and expensive.
Can a Party Object to Discovery Requests or Depositions?
A party served with discovery requests during the discovery period is permitted to serve written objections on the other party within 30 days if there are legitimate grounds for objection. If objections are served, or the responses to the discovery requests are deficient in some manner, the parties are obligated to make a good-faith attempt to resolve the dispute between themselves. If the parties cannot resolve the dispute, then either party may file a motion with the TTAB seeking a ruling on the issue.
Similarly, a party served with a notice of deposition may promptly file a motion with the TTAB to quash the notice of deposition if there’s a legal basis for doing so.
What are the Rules for Conducting Discovery?
Not surprisingly, there are literally hundreds of laws, rules, and regulations governing the discovery period and the entire discovery process. Everything from the number of discovery requests a party is permitted to serve, the places an oral deposition may be held, the types of information and documents that may be requested, and the specific format objections to discovery requests must take. Frankly, it can be quite confusing for even the most experienced attorneys.
If you’re representing yourself in a trademark opposition or cancellation, I strongly urge you to carefully read Section 400 of the Trademark Trial and Appeal Board Manual of Procedure (TBMP). Failing to strictly comply with all pertinent laws, rules, and regulations can lead to extremely dire consequences, including:
- Being prohibited from serving discovery requests or taking depositions during the discovery period
- Being prohibited from objecting to discovery requests or depositions
- Exclusion of evidence at trial
- Unfavorable factual inferences the TTAB may make at trial
In the most egregious of cases, the TTAB can even enter judgment against a party that has failed to meet its discovery obligations. So, if you want to avoid the wrath of the TTAB, I recommend taking your discovery obligations very seriously.
How Long is the Discovery Period?
The discovery period is approximately six months long (although the parties frequently agree to extend it for various reasons). The discovery period opens on the last day the parties have to conduct the discovery conference. However, a party is not allowed to serve written discovery requests or take any depositions until it has served its Initial Disclosures on the other party.
What Happens After the Discovery Period Closes?
After the discovery period closes, the parties usually start to prepare for trial if they have been unable to amicably settle the opposition or cancellation up to this point. The next step is for the plaintiff to serve its Pretrial Disclosures on the defendant (which are due about six weeks after the close of the discovery period).
Sometimes, the information and documents exchanged during the discovery period leads one of the parties to believe it has a strong enough legal position to win the trademark opposition or cancellation without the need for a trial. In that event, the party will file a motion for summary judgment with the TTAB seeking a decision in its favor. If such a motion is filed, all further deadlines in the opposition or cancellation are suspended until the motion is decided.
Do You Need Any Help?
I’m experienced US trademark attorney Morris Turek. If you’re the plaintiff or defendant in a trademark opposition or cancellation and the discovery period is currently open, I would be happy to assist you with preparing, serving, responding to, and/or objecting to discovery requests. I can be reached by phone at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or through the contact form located below (please don’t forget to include the opposition or cancellation number). I look forward to hearing from you soon.