Introduction

When your trademark faces a challenge before the Trademark Trial and Appeal Board (TTAB), preparation and strategy are everything. Discovery is one of the most critical phases in a TTAB case because it determines the evidence each party can use at trial. For business owners and entrepreneurs, understanding this stage is essential to protecting your brand, avoiding costly mistakes, and positioning yourself for success.

At Cohn Legal, PLLC, we help clients navigate TTAB proceedings with confidence. In this article, we’ll break down what discovery is, how it works in the TTAB context, and what you need to know as a business owner to safeguard your intellectual property.

What Is Discovery in a TTAB Case?

Discovery is the formal process by which each party gathers information and evidence from the other side. Unlike trademark registration, which is largely administrative, TTAB proceedings are adversarial. That means both sides have the opportunity to ask questions, request documents, and collect testimony to build their case.

The purpose of discovery is to avoid surprises at trial. Each side is entitled to know what evidence the other intends to rely upon, which allows for a fair and efficient resolution. The TTAB’s discovery rules mirror those of the Federal Rules of Civil Procedure, with certain modifications tailored to trademark disputes.

Initial Disclosures: The Starting Point

Discovery begins with initial disclosures. Within 30 days of the opening of discovery, both parties must exchange basic information, including:

1. The names and contact details of individuals who may have knowledge about the case.

2. Categories of documents or evidence the party may use to support its claims or defenses.

These disclosures set the stage for deeper requests, but they also carry an important warning: if information is not disclosed, it may be excluded from evidence later in the case.

Types of Discovery in TTAB Proceedings

Once disclosures are exchanged, parties can engage in several forms of discovery:

Interrogatories

Written questions that must be answered under oath. For example, one party may ask the other to explain the history of their trademark’s use, identify marketing channels, or clarify sales figures.

The TTAB limits interrogatories to 75, including subparts, unless the parties agree otherwise or the Board grants additional requests for good cause.

Requests for Production of Documents

A party may request that the other side produce specific documents, such as advertising materials, product packaging, or sales records. These documents help prove issues like priority of use, geographic reach, or consumer perception.

Requests for Admissions

These are statements that one party asks the other to admit or deny. They are particularly useful for narrowing the issues in dispute. For example, one side might request that the other admit that their mark was not in use prior to a certain date.

Depositions

Perhaps the most familiar discovery tool, depositions involve questioning witnesses under oath. Discovery depositions are intended to gather information, while testimony depositions (which happen later) are used to present evidence at trial. Depositions may be taken in person, by phone, or by video conference, but they must always be transcribed for the record.

Protective Orders and Confidential Information

Trademark disputes often involve sensitive business information, such as financial data, marketing strategies, or customer lists. To protect this information, the TTAB automatically applies a Standard Protective Order to every case.

This order allows parties to designate documents or testimony as “Confidential” or “Highly Confidential – Attorneys’ Eyes Only,” restricting who can access the material. This ensures that while discovery obligations are met, valuable business secrets remain secure.

Discovery Disputes and Motions

Unfortunately, discovery is also where disputes often arise. A party may object to requests as irrelevant, overly burdensome, or outside the TTAB’s jurisdiction. If the parties cannot resolve the disagreement themselves, the requesting party may file a motion to compel with the Board.

The TTAB strongly encourages cooperation and professionalism during discovery. Judges often frown upon unnecessary disputes, and repeated bad-faith objections can hurt a party’s credibility.

Timelines and Deadlines Matter

The TTAB enforces strict deadlines. Discovery typically lasts six months, but extensions may be granted if both parties agree or if good cause is shown. Missing a discovery deadline can be fatal to your case. For example, if you fail to respond to requests for admissions, the Board may treat those statements as admitted, effectively handing your opponent an advantage.

The bottom line: always track deadlines carefully and respond promptly.

Practical Tips for Business Owners

1. Be Organized From the Start
   Keep detailed records of your trademark’s first use, sales figures, advertising expenditures, and examples of how your mark appears in commerce. These records often become the backbone of your defense.

2. Anticipate Your Opponent’s Requests
   Ask yourself what information your opponent will likely request, and be prepared to provide it. At the same time, be ready to push back on requests that are irrelevant or too broad.

3. Use Discovery Strategically
   Discovery is not just about compliance. It is your chance to uncover weaknesses in your opponent’s case. Well-crafted interrogatories and document requests can expose inconsistencies in their story.

4. Respect Confidentiality
   If your business information is sensitive, ensure it is properly marked under the protective order. This protects you if the case file becomes public.

5. Consult With Trademark Counsel
   Discovery is highly technical, and mistakes can have lasting consequences. Having experienced trademark counsel ensures that requests are handled properly and objections are made strategically.

Why Discovery Can Make or Break Your Case

At its core, discovery is about evidence and evidence wins cases. Even if you believe your mark is strong, failing to properly gather or protect evidence during discovery can undermine your position. Likewise, if your opponent has a weak claim, discovery may give you the tools to expose it.

For business owners, this means that discovery is not just a formality. It is the stage where your case is truly built. With careful planning and the right legal guidance, discovery can shift the momentum of a case in your favor.

Conclusion

Discovery in TTAB cases can feel overwhelming, but it is also one of the most powerful opportunities to defend your brand. By understanding the process, staying organized, and working with experienced trademark counsel, you can protect your intellectual property and keep your business moving forward.

At Cohn Legal, PLLC, we believe your brand is everything and protecting it starts with mastering every stage of the trademark process, including TTAB discovery. If your business is facing a trademark dispute, don’t go it alone. Let’s simplify the process together and safeguard your most valuable asset.

Your brand is worth protecting forever and always.