In proceedings before the Trademark Trial and Appeal Board (TTAB), discovery is one of the most crucial phases. Parties rely on each other’s disclosures and responses to build their respective cases. But when a party fails to respond adequately—or at all—to discovery requests, filing a motion to compel may be necessary. Knowing how and when to file such a motion, and how to avoid facing one, is essential for any practitioner working in trademark litigation.

This guide explores the strategic and procedural aspects of handling motions to compel in TTAB inter partes proceedings, offering real-world TTAB tips that practitioners can apply throughout the discovery process.

Understanding the Function of a Motion to Compel

A motion to compel is a formal request asking the TTAB to order the opposing party to provide discovery that has been wrongfully withheld or inadequately answered. It can pertain to interrogatories, requests for production, requests for admissions, or even initial disclosures. These motions can arise when a party receives evasive responses, blanket objections, or simply no responses at all.

Motions to compel are often viewed as a last resort. The TTAB expects parties to cooperate in discovery and resolve disputes without involving the Board whenever possible. Therefore, the party filing the motion must demonstrate that they made a good faith effort to resolve the dispute before seeking intervention.

Timing Is Critical

One of the first things to remember is that timing matters greatly when it comes to motions to compel. Under TTAB rules, a motion to compel discovery (interrogatories, document requests, or admissions) must be filed before the opening of the first testimony period. Meanwhile, a motion to compel initial disclosures must be filed before the close of the discovery period. Failing to observe these deadlines can result in a complete waiver of the right to compel discovery.

This is why it’s important to be proactive. If responses are due but not received—or if the responses are inadequate—don’t wait until the last minute. Reach out promptly, document all correspondence, and if necessary, move swiftly to prepare a motion.

Demonstrating Good Faith Efforts

Perhaps the most overlooked but critical component of a motion to compel is the requirement to demonstrate a good faith effort to resolve the dispute. This means more than simply stating you tried to contact the other party. The Board expects specific detail: when the parties spoke or corresponded, what was discussed, what compromises were offered, and why agreement could not be reached.

Attaching email threads, call summaries, or written follow-ups to your motion is not just helpful—it’s expected. Without this, the motion is likely to be denied on procedural grounds alone, regardless of the merits.

The Trademark Trial and Appeal Board has repeatedly emphasized that many discovery disputes could be avoided if parties exercised more professionalism and courtesy. Thus, attorneys who can demonstrate reasonable conduct and practical compromise often find the Board more receptive to their arguments.

Be Precise and Strategic

A strong motion to compel should do more than complain. It should clearly identify the specific requests or disclosures at issue, describe the deficiencies, and explain why the requested information is relevant and within the scope of discovery.

Avoid vague language or a laundry list of grievances. Instead, make your case in a focused, persuasive manner. If a request was objected to as overly broad, explain why the request is tailored and proportional. If a party said they would produce documents but haven’t, highlight the delay and why the documents matter.

The more targeted and reasonable your motion appears, the more likely it is to succeed. And if the TTAB agrees with your position, it can compel full responses, limit the other party’s ability to object further, or even impose sanctions in more egregious cases.

Common Pitfalls to Avoid

Many parties make the mistake of filing motions prematurely or without fully developing the record. Submitting a motion after a single email exchange, for instance, may be seen as lacking the required good faith effort. Others fail to clearly separate the factual narrative from the legal argument, which reduces the clarity of the filing.

Another frequent error is misunderstanding the Board’s jurisdiction. The TTAB is not a forum for trademark infringement claims. Therefore, discovery requests that venture into areas like damages, customer confusion, or market surveys that are better suited for federal court may be denied. Tailor your requests—and your motion—to the scope of TTAB’s authority, which focuses on registrability and likelihood of confusion, not marketplace conduct.

Responding to a Motion to Compel

If you are on the receiving end of a motion to compel, don’t panic—but don’t ignore it either. The TTAB expects a timely and complete response. Failing to respond can result in the motion being granted by default.

Your response should explain any legitimate reasons for delay or noncompliance and, where appropriate, agree to supplement the responses. If you believe the motion is unfounded, be prepared to justify your objections with legal authority and cite the Trademark Board Manual of Procedure (TBMP) where applicable.

It’s worth noting that being seen as cooperative and solution-oriented often works in your favor. Even if the Board grants the motion in part, your responsiveness may prevent harsher consequences.

Practical TTAB Tips for Avoiding Discovery Disputes

One of the best ways to handle a motion to compel is to never need one in the first place. Here are a few practical habits that can reduce the risk of discovery disputes escalating:

Stay organized from the beginning of the case. Use tracking systems to monitor deadlines, response times, and correspondence.

Don’t overreach in discovery requests. Be specific and relevant.

When receiving discovery requests, object where necessary, but provide substantive responses where possible. Overuse of boilerplate objections will only invite scrutiny.

Maintain professionalism in all communications. Your emails and letters may end up as exhibits in front of the TTAB.

Final Thoughts

Motions to compel are a powerful tool in the Trademark Trial and Appeal Board proceedings, but they should be used judiciously and strategically. Whether you’re seeking discovery from an uncooperative party or defending against an overzealous request, your ability to navigate this area depends on preparation, professionalism, and a firm grasp of TTAB procedures.

By following these TTAB tips and focusing on effective communication, clear strategy, and respect for deadlines, you can avoid unnecessary conflict and keep your case on track toward resolution.