What are Initial Disclosures in a TTAB proceeding?

Each party in a TTAB opposition or cancellation must serve the following information on the other side without being asked:

  1. the name and, if known, the address and telephone number of each individual likely to have discoverable information – along with the subjects of that information – that the disclosing party may use to support its claims or defenses, unless the use would be solely for impeachment;
  2. a copy – or a description by category and location – of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to supports its claims or defenses, unless the use would be solely for impeachment . . . .

[see TBMP § 401.02]

When are Initial Disclosures Due?

Initial disclosures must be made no later than 30 days after the opening of the discovery period [37 CFR § 2.120(a)(2)(ii)].

Can a party send discovery requests prior to making its Initial Disclosures?

No, a party must make its initial disclosures prior to seeking discovery [37 CFR § 2.120(a)(3)]. Unless a case is settled early, a party should consider serving Initial Disclosures at or near the Discovery Conference to give itself the option of serving discovery requests sooner (i.e., as soon as discovery opens).

Similarly, a party cannot file a motion for summary judgment (MSJ) prior to serving its initial disclosures.

Is there a duty to supplement disclosures and discovery responses?

Yes, each party has an ongoing obligation to supplement its disclosures and discovery responses in a timely manner [TBMP § 408.03].

What if Initial Disclosures are not provided?

If an adverse party fails to provide its initial disclosures, the other side may file a motion to compel which must be filed within 30 days of the initial disclosures deadline. [37 CFR § 2.120(f)(1)]

How to prepare Initial Disclosures

It would help to plan ahead by thinking about the key individuals in your company who would have relevant information about trademarks. You should also ask your attorney about what types of documents will be used to support your claims or defenses.

 

 

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.