Discovery before the Trademark Trial and Appeal Board (TTAB) isn’t just a procedural formality—it’s where strategic missteps can derail your case before trial even begins. Whether you’re defending a federal registration or pursuing cancellation, how you handle discovery often determines whether your position holds or collapses. And unlike traditional litigation, TTAB discovery is governed by a tighter set of rules, deadlines, and expectations. This article unpacks critical TTAB tips for staying compliant, avoiding costly sanctions, and getting the evidence you need—without triggering delays or disputes.
Discovery with a Purpose: TTAB’s Streamlined Standards
The TTAB does not handle infringement claims, damages, or injunctions. Its focus is narrow: the right to federal registration. That distinction shapes everything about discovery. Unlike federal court litigation, where discovery can be sprawling and burdensome, the TTAB keeps it lean and proportional to the scope of the issues. Discovery must relate directly to claims or defenses tied to registration—use in commerce, priority, abandonment, distinctiveness, and related matters.
Under recent TTAB rules, discovery is also more structured. Each party is limited to 75 interrogatories, 75 document requests, and 75 requests for admission, making it vital to draft precise and targeted questions. While TTAB discovery may be more contained, it’s also strictly enforced. Failure to comply or to meet obligations—like making timely disclosures—can lead to serious consequences, from preclusion of evidence to default judgment.
Initial Disclosures: The Trigger Point for Discovery
No party can begin formal discovery until it has served initial disclosures, which are due 30 days after the discovery period opens. These disclosures must identify potential witnesses and provide either a description or the actual production of relevant documents. Missing this deadline is more than a technicality. If a party delays disclosures, it not only forfeits the right to initiate discovery but risks a motion to compel and potential sanctions.
One of the best TTAB tips for early-stage compliance is to serve disclosures on the same day as the discovery conference. This ensures no delay in beginning discovery and demonstrates diligence to the Board, should any issues arise later.
The Reality of Written Discovery at the TTAB
The bulk of discovery battles play out in writing—through interrogatories, document requests, and admissions. Parties are expected to follow Rule 2.120 and serve discovery early enough that responses are due before the discovery deadline. This means leaving at least 31 days before the close of the period. Waiting until the last minute can result in waived rights to follow up.
Another common problem arises with vague or boilerplate objections. The TTAB has made it clear that objections must be stated with specificity. General objections are not sufficient. If a party withholds documents based on an objection, it must explicitly state that in its response. Failing to do so can result in waiving the objection altogether. And if a party asserts privilege, it must provide a corresponding privilege log—another area where lapses can prove costly.
Silence Isn’t Strategy: The Cost of Non-Responses
Failing to respond to discovery requests carries severe consequences before the Trademark Trial and Appeal Board. If a party fails to serve timely responses, it risks waiving any objections to the requests and being precluded from submitting the requested information later during trial. Requests for admission are even more precarious—if unanswered, they are deemed admitted as a matter of law.
The Board has consistently held that parties cannot ignore discovery obligations and then attempt to revive their rights by filing late responses or attempting to cure omissions in trial. Once a party has failed to comply with a discovery order or ignored its obligations entirely, its credibility before the Board suffers—and so does its case.
Motions to Compel and the “Good Faith” Standard
When discovery disputes arise, the Board requires a showing of good faith efforts to resolve the issue before it will entertain a motion to compel. This isn’t satisfied by a single email or brief phone call. The Board wants to see multiple communications, meaningful engagement, and a clear record that both sides tried to reach a resolution.
A common TTAB mistake is rushing into motion practice without first documenting an adequate attempt to resolve the issue informally. This not only wastes time but often results in the motion being denied outright. Board decisions consistently reinforce that attorneys should communicate directly, clarify positions, and aim to avoid unnecessary delay—especially since the TTAB’s goal is efficient, streamlined adjudication.
Discovery Sanctions Are Real—And Increasingly Enforced
While the TTAB historically avoided harsh sanctions, recent decisions show the Board’s growing willingness to impose consequences for bad faith conduct, refusal to comply with orders, or failure to participate in discovery. This can include exclusion of evidence, preclusion of testimony, or in extreme cases, entering default judgment.
One of the strongest TTAB tips is to avoid brinkmanship during discovery. Withholding evidence, producing late documents without explanation, or submitting evasive responses is more likely to backfire than intimidate. The TTAB has repeatedly emphasized its expectation that parties cooperate and operate in good faith.
Be Smart About Depositions and Subpoenas
Discovery depositions are capped at 10 per party under Federal Rule 30. The Board is reluctant to grant leave for more, so parties must plan strategically. Depositions of foreign witnesses must be conducted on written questions unless the party voluntarily agrees to appear. If a party tries to force a foreign witness to testify live in the U.S., it will likely be denied.
Depositions of third parties require subpoenas, and while the TTAB does not enforce them directly, parties can seek enforcement in federal district court. One TTAB tip that practitioners often overlook is confirming witness willingness early and securing stipulations when possible to avoid the time and expense of subpoenas.
Avoiding Delays with Discovery Stipulations
Experienced TTAB practitioners know that stipulations are a powerful way to reduce friction and keep cases moving. Whether it’s stipulating to extend a deadline, narrow the scope of discovery, or streamline document production, early agreements save time and money. In some cases, parties even stipulate to using discovery materials as trial evidence—saving both sides the burden of duplicative work.
When disputes arise, the Board prefers that parties attempt to resolve them informally and memorialize agreements in writing through ESTTA. Waiting until the eleventh hour to raise objections, challenge deadlines, or introduce new evidence is rarely effective.
Final Thought: TTAB Discovery Is About Discipline
Discovery before the Trademark Trial and Appeal Board isn’t the Wild West. It’s a tightly governed process, designed to balance fairness and efficiency. Parties that approach it with discipline, precision, and cooperation will not only avoid sanctions—they’ll gain a strategic edge. Whether you’re a first-time litigant or a seasoned Trademark Attorney, the best TTAB tip is to treat discovery not as a formality, but as a cornerstone of your case.