Discovery Requests in Trademark Cases Under U.S. Law Michael Grow Arent Fox LLP, Washington D.C., United States Summary and Outline Parties to civil actions or inter partes proceedings before the United States Patent and Trademark Office s Trademark Trial and Appeal Board (TTAB) have the right to conduct discovery on any topic relevant to the issues in dispute. The following are the discovery tools that may be used in such proceedings: Interrogatories; Requests for production of documents; Requests for admissions; Oral Depositions; Depositions on written questions; Subpoenas. Collection of information through discovery is sometimes delayed by objections or motions for protective orders. These delays can often be avoided by drafting discovery requests that are properly worded and directed at information that is relevant to the issues in dispute. Rules relating to electronic discovery pose special challenges and obligations. Overcoming such challenges is often dependant on understanding the rules that apply in each forum and in taking steps necessary to preserve electronically stored information (ESI).
The following is an outline of topics for use in creating a discovery checklist. I. Rules Pertaining to Specific Types of Discovery A. Initial Disclosures Within 14 days after the parties Fed. R. Civ. P. 26(f) conference, unless a different time is set: 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; a copy, or a description by category and location, of all documents, ESI, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment; a computation of each category of damages claimed by the disclosing party, who must also make available for inspection and copying as under Fed. R. Civ. P. 34 the documents or other evidentiary material, unless privileged or protected from disclosure, on which each computation is based, including materials bearing on the nature and extent of injuries suffered; and any insurance agreement under which an insurance business may be liable to satisfy all or part of a possible judgment in the action or to indemnify or reimburse for payments made to satisfy. B. Interrogatories 1. Timing of Service In civil actions, serve after the date of service of initial disclosures and sufficiently prior to the close of discovery so that answers fall due within the discovery period. In TTAB proceedings, during discovery period: after service of initial disclosures until the last day of discovery period. 2. Limitation on Number In civil actions, serve no more than 25 including subparts. In TTAB proceedings, serve no more than 75 including subparts. 2
3. Time for Responding In civil actions, 30 days after service plus three days if served by mail. In TTAB proceedings, 30 days after service plus five days if served by mail. 4. Failure to Respond May result, upon a successful motion to compel filed by the propounding party, in forfeiture of right to object and/or other sanctions. 5. Alternative Response Option to produce business records. 6. Signatures The party answering must sign under oath. The attorney who objects must sign (not under oath). C. Requests for Production of Documents 1. Timing of Service In civil actions, during discovery period with or after service of initial disclosures. In TTAB proceedings, during discovery period after service of initial disclosures until the last day of discovery period. 2. Content of Requests Describe with reasonable particularity each item or category of items to be inspected. Describe reasonable time, place, and manner for the inspection. Specify the form or forms in which ESI is to be produced. 3
3. Limitation on Number No limitation but responding party may object. 4. Failure to Respond May result, upon a successful motion to compel filed by the propounding party, in forfeiture of right to object and/or sanctions. 5. Time for Responding In civil actions, 30 days after service plus three days if served by mail. In TTAB proceedings, 30 days after service plus five days if served by mail. 6. Signature Responses must be signed by a party or a party s attorney. D. Requests for Admissions 1. Timing of Service In civil actions, during discovery period with or after service of initial disclosures. In TTAB proceedings, during discovery period with or after service of initial disclosures until the last day of discovery period. 2. Scope of Requests Request to admit, for purposes of the pending action only, the truth of any matters within the scope of Fed. R. Civ. P. 26(b)(1) relating to: facts, the application of law to fact, or opinions about either; and the genuineness of any described documents. 3. Limitation on Number No limitation but responding party may object. 4
4. Failure to Respond May result in forfeiture of right to object and in the requests being deemed admitted in certain circumstances under Fed. R. Civ. P. 36(a). 5. Time for Responding In civil actions, 30 days after service plus three days if served by mail. In TTAB proceedings, 30 days after service plus five days if served by mail. 6. Signature Responses must be signed by a party or a party s attorney. E. Oral Depositions 1. Content of Deposition Notice Include the time and place of the deposition, and, if known, the deponent s name and address. The notice may include a request, under Fed. R. Civ. P. 34, to produce documents and tangible things at the deposition. If the notice names an entity rather than an individual deponent, it must describe, with reasonable particularity, the matters for examination. 2. Timing of Deposition Notice of Deposition must be served and deposition must be completed prior to the close of discovery. 3. Time Limit on Depositions One seven-hour day, unless otherwise stipulated by the parties. 4. Securing Attendance of Party in the U.S. The party serving the notice of deposition must give reasonable notice in writing to every adverse party. Serve notice of deposition if deponent is either: 5
a party; or a person who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4). 5. Securing Attendance of Non-Party in the U.S. Serve subpoena, pursuant to Fed. R. Civ. P. 45, if the deponent is not a party and will not attend voluntarily. In civil actions, the subpoena issues from the court where the civil action is pending. In TTAB proceedings, the subpoena issues from the court where deponent resides. 6. Securing Attendance of Party or Non Party Residing in a Non-U.S. Country Obtain consent to voluntary deposition; or Serve Letter of Request or Letter Rogatory pursuant to the Hague Convention. Verify that the non-u.s. country permits taking of depositions. 7. TTAB Party or Nonparty Residing in a Non-U.S. Country Serve notice of deposition on written questions unless party or nonparty agrees to attend voluntarily. F. Depositions on Written Questions 1. Content of Deposition Notice The time and place of the deposition; The deponent s name and address (if known); and The name and address of the officer or person before whom the deposition is to be taken. 6
2. Service and Filing of Notice of Deposition on Written Questions: Serve notice and questions on all parties. In TTAB proceedings only, file a copy of the notice, but not copies of the questions. 3. Timing of Service of Questions Serve cross-questions within 14 days after being served with the notice and direct questions. Serve redirect questions, within seven days after being served with crossquestions. Serve recross-questions, within seven days after being served with redirect questions (the court may, for good cause, extend or shorten these times). 4. Leave of Court Seek leave of court for a deposition on written questions, if: the deposition would result in more than 10 depositions being taken under Fed. R. Civ. P. 30 by the plaintiffs, or by the defendants, or by the thirdparty defendants; the deponent has already been deposed in the case; a party seeks to take a deposition before the time specified in Fed. R. Civ. P. Rule 26(d); or the deponent is confined in prison. 5. Delivery to the Officer/Officer s Duties The party who serves the deposition must deliver to the officer a copy of all the questions served and of the notice. The officer must promptly proceed in the manner provided in Fed. R. Civ. P. 30(c), (e), and (f) to: take the deponent's testimony in response to the questions; prepare and certify the deposition; and 7
send it to the party, attaching a copy of the questions and the notice. 6. Notice of Completion and Filing The party who serves the notice of deposition must notify all other parties when it is completed and filed. 7. Persons Before Whom Depositions May Be Taken An officer authorized to administer oaths either by federal law or by the law in the place of examination; A person appointed by the court where the action is pending to administer oaths and take testimony (Fed. R. Civ. P. 28(a)(2)); or A person designated by the parties under Fed. R. Civ. P. 29(a). G. Subpoenas 1. Content Name of the court from which the subpoena issued. Title of the action and the action/proceeding number. Command each person to whom the subpoena is directed to do the following at a specified time and place: attend and testify; produce designated documents, ESI, or tangible things in that person's possession, custody, or control; or permit the inspection of premises. The text of Fed. R. Civ. P. 45(d) and (e). 2. Service Service made by any person who is at least 18 years old and not a party. Copy delivered to the named person. Proof of service obtained. If subpoena requires a person's attendance, the person serving the subpoena must tender the fees for one day's attendance and the mileage allowed by law pursuant to Fed. R. Civ. P. 45(b). 8
II. Grounds for Objection A. Objections Relating to Written Discovery Requests The information sought is: irrelevant; overly broad, unduly burdensome and oppressive; vague and ambiguous; not likely to lead to the discovery of admissible evidence; subject to the attorney-client privilege or work product doctrine; trade secret or confidential business information. B. Objections Relating to Depositions Errors and irregularities to the notice of deposition; The manner of taking the deposition; The form of a question or answer; The form of or lack of oath or affirmation; A party s conduct; Disqualification of an officer; Competency of a witness; Competency, relevance, or materiality of deposition testimony; Objections and instructions not to answer if necessary to preserve a privilege, to enforce a limitation ordered by the court, or to present a motion under Fed. R. Civ. P. 30(d)(3). 9
III. Motions to Compel A. Pre-filing Negotiations Confer or attempt to confer in good faith with person/party failing to make disclosure or discovery or provide adequate responses, in an effort to obtain them without court or TTAB action. B. Rules Governing Content of Motions A motion to compel discovery must include a copy of the discovery subject in dispute (e.g., relevant portion of the discovery deposition at issue, copy of the interrogatory request or request for production with any answer or objection made, etc.) C. Timing of Service In civil actions, file and serve motion to compel during the discovery period or within a reasonable time after a party s failure to respond to a discovery request or after service of the response believed to be inadequate. In TTAB proceedings, file before the opening of plaintiff s trial testimony period. IV. Motions for Protective Orders A. Who May File Any person from whom discovery is sought. B. Where May Motion Be Filed In the court or tribunal where the action or proceeding is pending or, alternatively, in the case of depositions, in the court for the district in which the deposition is to be taken. C. Certification Movant must certify good faith attempt to resolve dispute. 10
V. Appropriate Topics for Discovery The parties, The parties marks, First use dates/priority dates, Goods and services, Geographical scope of use, Registrations and applications for registration, Chain of title and assignments and licenses, Sales information, Advertising and promotional expenses, Trade channels, Advertising methods, Websites and domain names, Motive/intent for adoption of mark, Actual confusion or misdirected communications, Past enforcement actions or acquiescence as to third-party marks, Consumer perception and awareness of the parties marks, Market research and surveys, Consumer or regulatory complaints, News articles or information relating to damages or loss of goodwill, Information regarding dilution, loss of distinctiveness and tarnishment, Discontinuation of use of the mark/abandonment, Any other facts relevant to likelihood of confusion, genericness, descriptiveness, etc. 11
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