Why Nonparty Discovery Can Become Critical in a TTAB Case

Trademark disputes do not always fit neatly within the documents and testimony controlled by the two parties fighting before the Trademark Trial and Appeal Board. Sometimes, some of the most useful evidence belongs to someone who is not involved in the case at all.

A distributor may have records showing when products entered the marketplace. A former employee may know how a mark was selected or used. A retailer may possess sales information relevant to the commercial strength of a trademark. An advertising agency could have historical marketing materials that one of the parties no longer maintains.

This is where nonparty discovery can become important in TTAB proceedings.

Although TTAB discovery shares characteristics with discovery in federal litigation, obtaining information from a third party involves additional procedural considerations. The Board itself does not function like a federal district court with direct subpoena enforcement power in every circumstance. As a result, parties need to understand both TTAB procedure and the mechanisms available for obtaining evidence from individuals or businesses outside the proceeding.

What Is Nonparty Discovery in a TTAB Proceeding?

Nonparty discovery refers to efforts to obtain testimony, documents, electronically stored information, or other evidence from a person or entity that is not a plaintiff or defendant in the TTAB case.

In an ordinary trademark opposition or trademark cancellation proceeding, the parties can serve discovery directly upon one another under the applicable Trademark Rules and TTAB procedures. A nonparty stands in a different position because that individual or company has not voluntarily become part of the proceeding.

That distinction matters.

A litigant generally cannot treat an unrelated retailer, former employee, competitor, or other third party as though it were an opposing party and simply send ordinary TTAB document requests expecting a mandatory response. Compulsory discovery from nonparties generally requires the subpoena process available under federal law.

Understanding that difference at the beginning can prevent wasted time, particularly because TTAB discovery periods are controlled by scheduling deadlines.

Why Would a Party Seek Evidence From a Nonparty?

Third-party evidence can become relevant for many reasons.

Consider a trademark opposition involving a dispute over the strength of a particular term. Evidence from unrelated businesses using similar terminology could potentially shed light on conditions in the marketplace. In another proceeding, a distributor might have records relevant to when and how particular goods were sold.

Nonparty evidence may also become important when a party cannot independently establish a historical fact through its own business records.

The strategic question is not simply whether outside information exists. It is whether that evidence is relevant to a claim or defense and whether the value of obtaining it justifies the procedural effort involved.

This is particularly important in TTAB litigation because the Board ultimately decides cases based on the evidentiary record. Something that appears persuasive in conversation or correspondence does not automatically become admissible evidence simply because a party knows it exists.

TTAB Subpoenas and Federal District Court Involvement

One of the more unusual features of TTAB nonparty discovery is the relationship between Board proceedings and federal district courts.

The Trademark Trial and Appeal Board is an administrative tribunal within the United States Patent and Trademark Office. Its authority and procedures differ from those of a federal trial court. When compulsory process is required against a nonparty, federal law provides mechanisms through which subpoenas may be issued for testimony or documents.

This can add another layer to a trademark opposition or cancellation.

If a nonparty objects to a subpoena, refuses to comply, or challenges its scope, enforcement issues may require involvement outside the TTAB itself. Depending on the circumstances, a federal district court may become relevant to resolving subpoena-related disputes.

For trademark litigants, this means nonparty discovery should not be treated as a last-minute exercise. Waiting until the end of discovery to pursue a reluctant third party can create significant timing problems.

Depositions of Nonparty Witnesses

Documents are only one category of evidence that may be sought from a nonparty. Testimony can also matter.

A third-party witness may possess firsthand knowledge concerning marketplace practices, trademark use, distribution, purchasing conditions, or other facts relevant to the proceeding. Depending on the procedural posture and purpose of the deposition, obtaining that testimony can require careful compliance with the rules governing discovery and trial testimony.

This distinction is important because discovery testimony and trial evidence do not automatically serve identical purposes.

A party preparing a TTAB case should therefore think beyond the immediate goal of learning what a witness knows. Counsel also needs to consider how useful testimony will ultimately become part of the record that the Board may evaluate.

The Scope of Nonparty Discovery Is Not Unlimited

The fact that a third party may possess potentially useful information does not mean every requested document or category of information is fair game.

Discovery must still satisfy applicable standards concerning relevance, proportionality, burden, privilege, and procedural propriety. A subpoena that demands years of expansive business records from an unrelated company may attract objections, particularly when the requested material has only a marginal relationship to the trademark dispute.

Confidentiality can create another complication.

A third party may possess sensitive sales information, customer records, licensing terms, marketing strategies, or internal communications. Even when such information is relevant, legitimate confidentiality concerns may need to be addressed.

For this reason, narrowly tailored nonparty discovery can often be more effective than attempting to collect everything remotely connected to the dispute.

Timing Can Determine Whether Nonparty Discovery Is Useful

TTAB proceedings operate according to scheduling orders, and discovery deadlines matter.

Locating a witness, determining what information that witness possesses, preparing a subpoena, arranging service, responding to objections, and potentially seeking enforcement can consume considerable time. A party that begins this process shortly before discovery closes may discover that there is not enough time to resolve a dispute.

This makes early case assessment especially important.

At the beginning of a TTAB opposition or cancellation, counsel should consider not only what information the opposing party possesses, but also whether important evidence may be held by distributors, licensees, retailers, former employees, vendors, customers, or other outside sources.

Identifying those sources early can help prevent evidentiary problems later.

Nonparty Discovery Should Serve the Case, Not Distract From It

There is a temptation in contentious trademark litigation to pursue every conceivable source of evidence. That approach can quickly become expensive and counterproductive.

Effective TTAB discovery is usually connected to the elements that actually need to be proven.

If third-party evidence helps establish priority, marketplace conditions, commercial strength, consumer perception, or another material issue, pursuing it may be worthwhile. If the evidence merely duplicates information already available from the parties, the added complexity may accomplish very little.

The goal is not to create the largest record possible. The goal is to create a record that answers the legal questions the Board must decide.

Building the TTAB Record With the End in Mind

Nonparty discovery illustrates a larger truth about TTAB litigation: evidence needs to be planned before the trial periods begin.

Finding a useful document during discovery is only the beginning. Parties must consider authentication, admissibility, evidentiary objections, confidentiality, and the proper method for placing evidence into the record.

That is why discovery strategy should be connected to trial strategy from the outset.

Trademark owners sometimes view a TTAB opposition or cancellation primarily as an argument about whose brand is stronger. Procedurally, however, the Board must decide the dispute based on what the parties properly establish in the record.

A compelling fact that never becomes proper evidence may ultimately do little for the case.

Conclusion: Third Parties Can Hold Important Pieces of a Trademark Dispute

TTAB discovery directed at nonparties can provide evidence that neither side possesses independently. Distributors, former employees, retailers, vendors, industry participants, and other third parties may hold documents or knowledge capable of filling important gaps in a trademark opposition or cancellation record.

Obtaining that information, however, requires more than simply asking for it.

Subpoena procedures, discovery deadlines, potential objections, confidentiality concerns, and possible federal court involvement can make nonparty discovery one of the more procedurally complex aspects of TTAB litigation.

For businesses involved in a Trademark Trial and Appeal Board proceeding, identifying potential third-party evidence early can make the process considerably more manageable. Experienced trademark attorney can evaluate whether nonparty discovery is worth pursuing and how it fits within the broader litigation strategy.

Your brand is worth everything. When a trademark dispute reaches the TTAB, protecting it means knowing not only what must be proven, but also where the evidence needed to prove it may be found.