Preparing and serving Pretrial Disclosures on the opposing party is required in every trademark opposition or trademark cancellation proceeding that either (1) has not been settled by the parties after the discovery period has closed, or (2) has not been decided by the Trademark Trial and Appeal Board (TTAB) prior to the deadline for serving Pretrial Disclosures. The deadline set by the TTAB for serving them is about two weeks before the opening of a party’s 30-day trial period.
What is the Purpose of Pretrial Disclosures?
The purpose of Pretrial Disclosures in a trademark opposition or cancellation is to prevent either party from calling surprise witnesses during its trial period. They are intended to inform the opposing party of the identity of the individuals from whom you will take testimony and the subject matter on which they will testify. Essentially, they are meant to ensure fairness and to provide the opposing party an opportunity to prepare for cross-examination of your witnesses.
Please note that you’re still required to serve Pretrial Disclosures on the opposing party even if you don’t intend to take the testimony of any witnesses during your trial period. In that case, you would simply inform the opposing party in your Pretrial Disclosures that you don’t intend to call any witnesses.
What is Required?
Although I strongly encourage you to carefully read Section 702.01 of the TBMP, here’s a brief summary of the information the TTAB requires you to provide in your Pretrial Disclosures:
- The name, address, and telephone number of each individual you intend to call as a witness.
- General identifying information about each individual. This includes the relationship of the individual to either party (including job title if employed by either party). If the individual is neither a party nor related to a party, then you must provide that individual’s occupation and job title.
- A general summary or list of subjects on which each individual is expected to testify.
- A general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of each individual.
You’re not required to provide to the opposing party copies of the documents and things you intend to introduce into evidence, nor are you required to disclose any notices of reliance you intend to file during your trial period.
Am I Required to File My Pretrial Disclosures with the TTAB?
Contrary to what many people believe, Pretrial Disclosures are not filed with the TTAB. You’re only required to serve your Pretrial Disclosures on the opposing party via email.
What Am I Permitted to Do After I Serve Them?
After serving your Pretrial Disclosures on the opposing party, you’re permitted to take the oral or written testimony of the witnesses identified in your Pretrial Disclosures during your 30-day trial period. However, Pretrial Disclosures are not a substitute for serving a proper notice of examination on the opposing party if the testimony of your witness will be taken orally or upon written questions. In other words, you must comply with all other notice requirements in addition to timely serving your Pretrial Disclosures.
What Happens if I Fail to Serve Pretrial Disclosures?
If you fail to serve Pretrial Disclosures, any witness testimony you attempt to enter into the evidentiary record can be challenged by the opposing party (generally by filing a motion to strike with the TTAB). If the TTAB grants the motion to strike (which is likely), then the testimony will be thrown out and the TTAB will disregard such testimony when making its final decision on the opposition or cancellation. The same can happen if you actually served your Pretrial Disclosures but they were inadequate or deficient in some manner.
As you can see, serving proper and complete Pretrial Disclosures on the opposing party by the deadline is absolutely critical to proving your case (if you’re the plaintiff) or mounting a defense (if you’re the defendant) in a trademark opposition or cancellation.
Do You Need Some Assistance?
I’m experienced US trademark attorney Morris Turek. If you’re the plaintiff or defendant in either a trademark opposition or trademark cancellation, and you need to prepare your Pretrial Disclosures, please feel free to contact me for prompt and professional help. I can be reached at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or through the contact form located near the bottom of this page (please remember to include the opposition or cancellation number). I look forward to hearing from you soon.