When litigating before the Trademark Trial and Appeal Board (TTAB), practitioners and brand owners alike must navigate a procedural landscape that differs from traditional federal court litigation. A common point of confusion lies in distinguishing discovery depositions from testimony depositions. Both serve unique functions within TTAB inter partes proceedings, and misunderstanding their purpose or timing can jeopardize a case. This article provides an in-depth look at each type of deposition and offers practical TTAB tips for handling them effectively.

The Purpose of Depositions in TTAB Proceedings

Depositions are sworn statements taken from witnesses under oath, typically outside of court. In TTAB proceedings—oppositions and cancellations—they help build the evidentiary record. However, unlike in district court where depositions can often be entered as evidence, the TTAB treats discovery and testimony depositions differently in terms of admissibility, purpose, and procedure.

Before diving into the distinctions, it’s important to remember that the TTAB is an administrative body focused solely on registrability of marks, not infringement. Every procedural step should align with that objective.

Discovery Depositions: Fact-Finding Tools

Discovery depositions take place during the discovery period, which begins after the parties conduct their initial disclosures and settle or narrow the issues during a required conference. The goal of this phase is information gathering.

Discovery depositions allow a party to question the opposing party, their employees, or even third parties about topics relevant to the claims or defenses at issue. These depositions are not automatically part of the trial record. If a party wants to introduce a discovery deposition or portions of it, they must submit it during their testimony period through a notice of reliance, subject to strict admissibility rules.

A discovery deposition is an opportunity to lock in a witness’s testimony, explore weaknesses in the opposing party’s case, and test the credibility or knowledge of a witness. However, because these depositions occur early in the proceeding, they’re often exploratory and less structured than testimony depositions.

One critical TTAB tip: plan your discovery depositions early. Waiting until the end of the discovery period reduces the chance to follow up with additional written discovery or further questioning, especially if a motion to compel is needed. Moreover, deposing a witness too late may limit your ability to authenticate key documents before trial.

Testimony Depositions: Creating the Evidentiary Record

In contrast, testimony depositions occur during the designated trial periods and are the TTAB equivalent of presenting your case in court. They are used to submit actual evidence into the record. Each party gets a specific time frame to take and submit these depositions, and the schedule follows a strict order: plaintiff’s testimony period, defendant’s, and finally plaintiff’s rebuttal.

Unlike discovery depositions, which are largely optional, testimony depositions are crucial. Failure to present necessary evidence during this period may result in dismissal of the case for failure to prove a claim or defense. The transcript of a testimony deposition, once filed, becomes part of the official record.

Witnesses in testimony depositions usually include key fact witnesses or experts, and their statements must comply with evidentiary standards. Objections to inadmissible testimony must be raised properly to preserve the issue. Unlike a discovery deposition, irrelevant or speculative questions should be excluded.

Another essential TTAB tip: the TTAB will not consider new arguments or materials submitted after the close of the testimony period. Make sure your case-in-chief is fully developed during this stage. Surprises aren’t just unwelcome—they’re procedurally barred.

Procedural Distinctions and Strategic Considerations

The TTAB’s Trademark Trial and Appeal Board Manual of Procedure (TBMP) outlines specific differences in how these depositions function. One major distinction is the treatment of objections. In discovery, objections are generally noted on the record, and answers are given subject to the objection. In testimony, objections must be preserved properly or risk being waived, especially for hearsay, foundation, or relevance.

Discovery depositions may be taken by telephone or written questions, although the standard remains oral, in-person questioning. For testimony depositions, parties often seek to take them via written questions or stipulate to written declarations, particularly under Accelerated Case Resolution (ACR) procedures. Still, the default method remains an oral, transcribed deposition.

It’s also worth noting that discovery depositions are only filed with the TTAB if a party wishes to introduce them into evidence. Conversely, testimony depositions must be filed in their entirety during the trial period, and a notice of reliance is not used to submit them.

The Risk of Misusing a Deposition

One common misstep is attempting to use a discovery deposition as though it were trial evidence without following the correct procedures. For instance, introducing an unauthenticated transcript of a discovery deposition without proper notice of reliance is insufficient. Likewise, trying to use testimony from a discovery phase to substitute for live testimony at trial is generally not permitted unless under exceptional circumstances or by stipulation.

Here’s a key TTAB tip: always keep the TTAB’s jurisdiction and evidentiary framework in mind. The Board is not concerned with hearsay-laden narratives or evidentiary shortcuts. It deals in hard evidence that supports or defeats the registrability of a mark.

Deposition Costs and Logistics

Another consideration is cost and logistics. Discovery depositions can be less formal and more cost-effective, especially if both parties agree to conduct them via telephone or video conference. Testimony depositions, on the other hand, often involve more preparation, exhibit organization, and transcript certification, resulting in higher costs.

Given that all testimony depositions must be submitted in writing (audio or video recordings are not accepted as evidence), it’s vital to coordinate with a certified court reporter and ensure the transcript adheres to TTAB formatting requirements.

Final Thoughts: Stay Strategic, Stay Organized

Understanding the difference between discovery and testimony depositions isn’t just a procedural technicality—it’s a strategic necessity. Filing incorrect documents or introducing evidence at the wrong stage can have a disastrous impact on a case before the Trademark Trial and Appeal Board.

The most successful practitioners treat each deposition as a milestone rather than a checklist item. They prepare early, communicate clearly, and remain vigilant about deadlines. Mastering the rules governing depositions helps streamline the process and avoids costly mistakes.

When in doubt, consult the TBMP and use available TTAB tips to guide your actions. And remember, unlike federal court, where a judge may forgive procedural fumbles, the TTAB expects strict compliance with its timelines and evidentiary rules.