What subjects should be covered during Discovery Conference?

Before discovery can occur in a TTAB trademark opposition or cancellation proceeding, attorneys for both sides must conduct a mandatory discovery conference to discuss the subjects identified in Rule 26(f) of the Federal Rules of Civil Procedure, including [see TBMP Section 401.01]:

  • claims and defenses of the TTAB case;
  • possibility of settlement;
  • plans for disclosures and discovery; and
  • any changes to the TTAB’s standard protective order.

The conference must occur within 30 days after the answer is due. The parties do not file any discovery plans with the TTAB.

What if a party fails to attend the Discovery Conference?

If a party fails to attend the discovery conference, the other (complying) party may file a motion to compel which will lead to the Board issuing an order to compel the non-complying party to attend the conference. Subsequent failure to comply with the order and attend the conference could lead to sanctions, judgment against the non-complying party (see Shanghai QianQu Stationery Co. Lrd. v. Each Bit Trade LLC).

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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.