Discovery is a pivotal phase in inter partes proceedings before the Trademark Trial and Appeal Board (TTAB). Whether a party is filing an opposition or responding to a cancellation, the ability to conduct discovery strategically can make a significant difference in a case’s trajectory. This article reinterprets established TTAB guidance to help legal professionals better understand discovery procedures, their constraints, and ways to avoid common traps during proceedings.
What Discovery Means in the Context of the TTAB
Unlike federal courts, the TTAB handles only registration matters and not broader trademark infringement disputes. As such, its discovery rules are designed to stay focused on information directly tied to the registrability of a mark. According to the Board’s regulations, parties can request discovery regarding any non-privileged matter that is relevant to a party’s claims or defenses and is proportional to the case.
Tools available in the discovery toolbox include written interrogatories, document production requests, admissions, and depositions. But even though these tools mirror federal litigation norms, their use is more narrowly tailored under TTAB jurisdiction.
Initiating Discovery with Proper Disclosures
The starting point for any discovery activity is the exchange of initial disclosures. These disclosures must be served within the first 30 days after the discovery period begins and should outline the individuals likely to have relevant knowledge, as well as any key documents the disclosing party may use.
Failure to provide timely or complete disclosures can hinder a party’s ability to later submit evidence at trial. The TTAB also promotes early disclosure of documents during this stage to encourage settlement and reduce discovery disputes.
Adhering to Time and Quantity Restrictions
Discovery requests must be sent early enough so that responses are due before the end of the discovery period. This generally means serving them at least 31 days prior to the close of discovery. Delays in serving these requests can result in them being considered invalid.
To maintain efficiency, the TTAB imposes numerical caps on discovery requests: no more than 75 interrogatories, 75 document requests, and 75 requests for admission. This count includes subparts, and the Board does not hesitate to enforce these limits. Requests that go beyond these boundaries must be justified through a motion showing good cause.
For document authentication, one additional request for admission is allowed outside of the cap, provided it is clearly identified as such.
Drafting and Responding to Objections Thoughtfully
In TTAB proceedings, objections to discovery must be clear and specific. Vague or boilerplate responses such as claiming a request is “overly broad” without explanation are likely to be rejected. When only part of a request is objectionable, the non-objectionable portion must still be answered.
If privileged material is involved, a log describing the basis for the privilege must be included. Additionally, parties are now expected to indicate when material is being withheld due to an objection, which enhances transparency in the process.
Addressing Digital Evidence and Metadata
Discovery often involves digital files, and the TTAB allows parties to request electronically stored information (ESI). However, if a party wants to obtain metadata or other specific digital elements, they must make those intentions clear in the discovery requests. Otherwise, they may forfeit the right to access that data.
It’s best to discuss expectations around digital evidence during the discovery conference. Agreeing in advance on formats, custodians, and preservation duties can significantly reduce friction later on.
Handling Confidential Information
The TTAB’s Standard Protective Order automatically applies to all inter partes matters, setting the ground rules for handling sensitive material. Parties can also customize the order if they agree to modifications approved by the Board.
If documents contain confidential information, the producing party should not withhold them. Instead, they must be disclosed under the applicable confidentiality tier. Excessive redaction or misuse of confidentiality designations may lead to orders requiring resubmission.
Depositions: Procedures and Geographic Limits
Each party can take up to 10 discovery depositions without needing permission. The default rule is that depositions occur where the deponent lives or works, unless otherwise agreed. For foreign parties, written depositions are typically required due to jurisdictional limits.
Non-party depositions must be carried out via subpoena. However, enforcement of those subpoenas lies with federal courts, not the TTAB. If issues arise, such as non-compliance, the proper recourse is through a district court motion.
Managing Disputes Through Good Faith Efforts
Before seeking Board intervention through a motion to compel, parties are expected to make real efforts to resolve their differences. This includes multiple attempts to communicate and negotiate—not just a single email or phone call.
If a party fails to serve initial disclosures on time, a motion to compel must be filed within 30 days of the missed deadline. Discovery-related motions need to be filed before the pretrial disclosure period begins. In many cases, the Board will suspend the proceedings while resolving such motions.
Delays in responding to discovery may result in waiving objections. Unanswered requests for admission will automatically be considered admitted, which can severely limit a party’s defenses.
Best Practices for Discovery Success
Serving discovery early in the window is key to ensuring time for follow-up. Practitioners must also be careful when calculating subparts and preparing objections. The rules surrounding disclosure are strict, and violations can have consequences—such as the exclusion of evidence or testimony.
Even after discovery closes, the obligation to update or correct disclosures remains. Introducing new evidence during trial that wasn’t previously disclosed can be barred if it causes prejudice to the opposing party.
Additionally, practitioners must be diligent in preserving relevant digital evidence. If a party fails to safeguard key files or communications, the Board can impose sanctions. These range from excluding evidence to, in severe cases, terminating the proceeding.
Final Thoughts on Discovery Before the TTAB
Discovery in TTAB proceedings plays a foundational role in developing and supporting a party’s claims and defenses. While many aspects mirror federal litigation, TTAB discovery is distinctly shaped by its narrower jurisdiction and specialized focus.
By applying these refined TTAB tips, practitioners can avoid unnecessary delays, protect their clients’ interests, and ensure that their cases proceed efficiently. Mastery of the TTAB’s discovery process is more than procedural compliance—it’s a competitive advantage in trademark litigation.