Preparing and serving Initial Disclosures on the opposing party is one of the first things you must do in a trademark opposition or trademark cancellation proceeding. The deadline set by the Trademark Trial and Appeal Board (TTAB) for serving Initial Disclosures is generally about a month after the deadline for participating in the discovery conference. However, the Initial Disclosures deadline can quite easily be extended through mutual agreement between the parties and approval by the TTAB. In fact, the deadline is often extended multiple times because the parties might be engaged in ongoing negotiations to amicably resolve or settle the opposition/cancellation.
What is the Purpose of Initial Disclosures?
The purpose of Initial Disclosures in a trademark opposition or cancellation is to voluntarily provide the opposing party with some very basic information regarding (1) the individuals you may use as witnesses to support your claims or defenses in the proceeding, and (2) the documents and things you may have in your possession, custody, or control that you may use to support your claims or defenses in the proceeding. You can think of Initial Disclosures as being the first step in the discovery process.
What is Required?
Witnesses
First, you must provide the name, address, and telephone number of each person likely to have discoverable information that you may call as a witness to support your case (unless that person would solely be used for impeachment purposes). You must also indicate the subject matter of the information that each person possesses. Of course, the people you choose to disclose will obviously depend on the nature of the trademark opposition or cancellation. For example, if you’re the defendant in a trademark cancellation where the issue is whether or not your trademark has been abandoned, you would likely want to disclose people who have knowledge that the trademark is currently in use in commerce. Similarly, if you’re the opposer in a trademark opposition where the issue is priority and likelihood of confusion, you would want to disclose people who have knowledge of when the opposer’s trademark was first used and the products/services with which the trademark is currently used.
Documents
Second, you must either (1) provide to the opposing party copies of all documents and things you have in your possession, custody, or control that you may use to support your case (unless such documents and things would solely be used for impeachment purposes), or (2) disclose information regarding the existence and location of all such documents. As a practical matter, there really is no reason to provide actual copies of the documents and things as part of your Initial Disclosures because the opposing party is probably just going to request those same documents and things once the formal discovery period opens. So save yourself some time and simply disclose information regarding the types of documents you have and where they can be found. For instance, you may have invoices, receipts, and order confirmation emails at your office showing that you have actually sold your products/services over the past year. Or, you may have copies of old advertisements and marketing materials stored off-site that prove you were promoting your products/services on a certain date. Again, the types of documents you disclose will depend on the legal issues raised in the trademark opposition or cancellation.
Do I Have to File My Initial Disclosures?
Contrary to popular belief, Initial Disclosures are not filed with the TTAB. You’re only required to serve your Initial Disclosures on the opposing party via email.
What Can I Do After I Serve Them?
After serving your Initial Disclosures, you’re permitted to take formal discovery from the opposing party for the purpose of seeking and acquiring non-privileged information and documents relevant to the trademark opposition or cancellation. This includes serving the opposing party with Requests for Admissions, Requests for Production of Documents and Things, and Interrogatories (which are essentially written questions). You may also take the deposition of one or more individuals associated with the opposing party by serving a notice of deposition. To be clear, you may not take discovery from the opposing party until you’ve served your Initial Disclosures.
What if the Opposing Party Didn’t Serve its Initial Disclosures?
If you didn’t receive the opposing party’s Initial Disclosures by the deadline, you should send an email to the opposing party indicating that you haven’t received its Initial Disclosures and giving the opposing party a reasonable deadline to comply with its obligation to provide them. If that deadline passes and you still haven’t received them, then you should file a motion to compel requesting that the TTAB order the opposing party to serve its Initial Disclosures. Please note that a motion to compel must be filed within 30 days after the deadline for serving Initial Disclosures (as originally set or reset by the TTAB).
Do You Require Any Assistance?
I’m experienced US trademark attorney Morris Turek. If you need to prepare your Initial Disclosures, or you want to file a motion to compel because the opposing party has failed to serve its Initial Disclosures, please don’t hesitate to contact me for prompt and professional assistance. I can be reached by phone at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or through the contact form located at the bottom of this page (please remember to include the trademark opposition or cancellation number). I look forward to hearing from you soon.