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 are current TTAB rules for disclosures and discovery?
Instead of waiting until the discovery closing date to serve discovery requests, all discovery requests must be served early enough such that responses would be due by the close of discovery.
Document requests, including subparts, are capped at 75.
Requests for admissions (RFA) are limited to 75.
Interrogatories remain limited to 75.
Responses to written discovery requests (i.e., interrogatories, RFA’s, requests for production of documents) must be served within 30 days from the date of service of such discovery requests without tacking on the old 5-day extension.
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).
What happens after the Discovery Conference?
If settlement is a realistic option, the parties may consent to suspend the proceedings for one or months to continue discussing settlement. Otherwise, the deadline for the discovery conference is also the date that discovery opens. This means that either side may propound discovery requests starting from the “Discovery Opens” date as long as that party serves its Initial Disclosures, which will not be due until 30 days after the opening discovery date.
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