When an inter partes case is filed before the Trademark Trial and Appeal Board (TTAB), one of the earliest and most important procedural requirements is the discovery planning conference. This meeting, mandated by Trademark Rule 2.120(a)(1) and modeled on the Federal Rule of Civil Procedure 26(f) conference, sets the tone for the rest of the proceeding. Far from being a formality, it is an opportunity to clarify the issues, establish realistic schedules, and explore early settlement possibilities.
Handled well, this conference can streamline litigation and reduce unnecessary motion practice. Handled poorly, it can lead to misunderstandings, procedural missteps, and even sanctions. Below are practical TTAB tips for making the most of this crucial step.
Understanding the Purpose of the Conference
The discovery planning conference is designed to ensure that both parties are on the same page before formal discovery begins. The Board’s rules require that the parties discuss the nature and basis of their claims and defenses, the possibility of settlement, and a plan for initial disclosures and discovery.
Unlike informal settlement talks, this conference is an official procedural requirement. Even if the parties are engaged in negotiations, the Board generally will not suspend proceedings between the close of pleadings and the deadline for the conference, since settlement is one of the required discussion topics during the meeting itself.
Timing and Logistics
The conference must occur within 30 days after the close of pleadings. Parties can conduct it by phone, video conference, or in person. While in-person meetings can foster better communication, remote formats are perfectly acceptable and often more practical.
If you anticipate contentious issues, consider using the ESTTA request form to ask for participation from a TTAB interlocutory attorney. Board involvement can help clarify procedural requirements and prevent disputes from escalating. However, if you request Board participation, follow up promptly if you have not heard back within a few days. Later filings, such as amended pleadings or consented extensions, can sometimes overtake your request.
Preparing for the Conference
Preparation is key. Both parties should review the pleadings carefully, identify contested issues, and be ready to discuss the scope of discovery. The TTAB Manual of Procedure (TBMP) outlines the subjects that must be addressed, including:
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The nature and basis of claims and defenses.
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Possibilities for settlement.
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Initial disclosures and the form they will take.
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Any issues regarding electronically stored information (ESI).
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Potential modifications to discovery limits.
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The handling of confidential information under the Board’s standard protective order.
While you can address these topics in an open-ended conversation, having a loose agenda helps ensure you cover all required points without missing something critical.
Building Cooperation Early
One of the most valuable TTAB tips is to treat the conference as a chance to establish a cooperative working relationship with opposing counsel. Discovery disputes can be costly and time-consuming, and the Board has little patience for attorneys who fail to communicate in good faith. Demonstrating professionalism and openness during this first meeting can go a long way toward avoiding unnecessary motion practice down the road.
This does not mean compromising your client’s position but it does mean being pragmatic. For example, you might agree on preferred methods for serving discovery responses, such as exchanging courtesy email copies in addition to formal service, or coordinating on deposition scheduling to minimize conflicts.
Addressing Settlement Early
Settlement is more than just a procedural box to check. The discovery planning conference provides a rare opportunity to discuss resolution before significant costs accrue. In some cases, even partial settlements such as agreeing to narrow the scope of goods or services can streamline the dispute.
If settlement discussions are promising, the parties can stipulate to suspend proceedings. The TTAB is generally liberal in granting suspensions for active settlement talks, though it may require evidence of progress if numerous suspensions are requested over a long period.
Discussing Discovery Parameters
This is the time to agree on practical matters such as:
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Whether to seek modifications to the presumptive limits on interrogatories, requests for admission, or depositions.
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The scope of ESI discovery, including formats for production.
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Procedures for handling confidential information under the Board’s standard protective order or an alternative agreement.
While the TTAB rarely grants requests to exceed the 75-interrogatory limit without good cause, discussing these possibilities early can prevent mid-discovery disputes. Likewise, addressing ESI issues now can avoid technical delays later.
The Role of Initial Disclosures
By rule, parties cannot serve discovery requests until they have made their initial disclosures. These disclosures identify potential witnesses and categories of documents relevant to the claims and defenses.
An efficient practice is to exchange initial disclosures at the same time as the conference or shortly thereafter. This allows discovery to begin immediately once the period opens, maximizing the time available for follow-up.
Documenting the Meeting
While the TTAB does not require the parties to file a joint discovery plan, it is good practice to memorialize what was discussed in writing, either in a formal plan or at least in an email exchange. This record can be invaluable if disputes arise later, as it provides evidence of the parties’ agreements and the scope of what was discussed.
When One Party Refuses to Participate
If an opposing party refuses to take part in the discovery planning conference, you are not required to file a motion to compel attendance before seeking sanctions. However, any motion for sanctions must be filed before the deadline for initial disclosures. The Board takes the obligation to participate seriously, and failure to comply can have significant consequences.
Final Thoughts
The discovery planning conference is more than a procedural checkpoint, it is your opportunity to shape the trajectory of your case before the Trademark Trial and Appeal Board. By preparing thoroughly, approaching the meeting with a cooperative mindset, and following these TTAB tips, you can reduce disputes, clarify expectations, and set a productive tone for the rest of the proceeding.
In TTAB practice, efficiency and professionalism are not just courtesies, they are strategic advantages.