Discovery is the engine of every contested trademark proceeding before the Trademark Trial and Appeal Board (the TTAB or the "Board"). It is the phase in which the parties exchange the documents, sworn answers, and admissions that will decide whether a mark gets registered, stays registered, or is struck from the federal register. Yet TTAB discovery is its own creature. It borrows the familiar machinery of federal civil litigation — interrogatories, requests for production, requests for admission, depositions — but bolts that machinery onto an administrative timetable with hard numerical caps, mandatory cooperation requirements, and a trial structure unlike anything in district court. Practitioners who treat a Board proceeding as if it were a federal lawsuit overspend and over-collect; practitioners who treat it as a casual paperwork exercise lose cases they should have won. This guide explains the rules, the strategy, and the practical craft of doing TTAB discovery well.

It is written so that a judge, an experienced trademark lawyer, and an interested business owner representing themselves can all follow it. Every term of art is explained in plain language the first time it appears, and the law is stated as it actually exists today — including the significant 2017 amendments to the Board's rules that many older guides (and a surprising number of form files) still get wrong.

What the TTAB Is and What It Decides

The TTAB is an administrative tribunal housed within the United States Patent and Trademark Office (USPTO) and staffed with administrative trademark judges. It is not an Article III court. Its jurisdiction is narrow but consequential, and understanding that narrowness is the single most important key to doing discovery proportionally. The Board's authority is limited to determining the right to register a trademark. It does not decide the right to use a mark, it does not adjudicate infringement or unfair competition, it does not issue injunctions, and it does not award damages, attorneys' fees, or costs. A party that wants money or an order stopping use in the marketplace must go to a court of competent jurisdiction; the Board can only refuse, grant, or cancel a federal registration. Its decisions do not disturb the common-law or state trademark rights that exist independently of any federal registration.

The Board hears two principal kinds of inter partes (between-parties) disputes:

An opposition is a challenge to a pending application before the mark registers. After the USPTO examines an application and approves it, the mark is published in the Official Gazette — the agency's weekly bulletin of marks headed for registration. Any party who believes it would be damaged by the registration has thirty days (extendable) to file a notice of opposition under Section 13 of the Lanham Act, 15 U.S.C. § 1063.

A cancellation is a challenge to a mark that has already registered. Under Section 14 of the Lanham Act, 15 U.S.C. § 1064, a party who believes it is being or will be damaged by an existing registration may petition to cancel it. Some grounds — mere descriptiveness, for instance — are available only within five years of registration; others — abandonment, fraud, functionality, and genericness among them — are available at any time.

A handful of other proceedings (concurrent-use proceedings and interferences) also generate discovery, but oppositions and cancellations are the workhorses, and they share essentially identical discovery rules. The common thread is that the only relief on the table is the registrability of a mark. That narrow stake is the single most important fact about TTAB discovery: because the prize is a registration rather than damages, the Board polices proportionality aggressively, and smart counsel calibrate the entire discovery effort to that reality.

If you are new to the underlying substantive issues — what makes one mark confusingly similar to another, what "priority" means, and how registrations are obtained in the first place — it helps to read this guide alongside the firm's companion pieces on navigating the maze of trademark confusion, the USPTO trademark application checklists from filing to registration, and how to file a trademark application with the USPTO. Readers who want the substantive backdrop on registration itself will also find the firm's trademark registration guide and the trademark process useful.

Why the Pleadings Drive the Discovery

Discovery does not exist in a vacuum; its lawful scope is fixed by what the parties have pleaded, so a brief orientation to the substantive landscape explains what is discoverable and what is not. A plaintiff before the Board must establish two things: that it has a statutory cause of action (once called "standing," now reframed by the Supreme Court's decision in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), and the Federal Circuit's later cases as a question of entitlement under the Lanham Act), and that at least one valid statutory ground exists to refuse or cancel the registration. Entitlement at the Board generally requires a "real interest" in the outcome and a "reasonable belief in damage" — typically satisfied by the plaintiff's ownership and use of a similar mark for related goods. The grounds, in turn, are the legal theories on which a registration can be defeated: likelihood of confusion under Section 2(d); mere descriptiveness or lack of acquired distinctiveness under Section 2(e)(1); genericness; abandonment through non-use; fraud on the USPTO; lack of bona fide intent to use; functionality of trade dress; dilution by blurring or tarnishment; and false suggestion of a connection, among others.

This matters for discovery because a party may only obtain discovery relevant to a pleaded claim or defense. If the petition pleads abandonment and likelihood of confusion, discovery into the registrant's use history and trade channels is squarely relevant; discovery into, say, the registrant's unrelated product lines is not. Before drafting a single request, identify each pleaded ground, list the elements of each, and treat that list as the master index for every interrogatory, document request, and admission. Conversely, a defendant who wants to expand discovery sometimes must first amend its pleading to add the affirmative defense or counterclaim that makes the discovery relevant — a tactical reason to scrutinize the pleadings early. Equitable defenses such as laches, acquiescence, and estoppel, addressed in the firm's guide to understanding equitable defenses, likewise open their own avenues of discovery once pleaded. The lesson is structural: the pleadings are not a preliminary formality to be cleared on the way to discovery; they are the boundary lines of discovery itself.

The Governing Framework: Federal Rules as Modified by 37 C.F.R. § 2.120 and the TBMP

TTAB discovery rests on three layers of authority, and a competent practitioner keeps all three open on the desk.

The first layer is the Federal Rules of Civil Procedure. By regulation, the Board applies the discovery provisions of the Federal Rules — chiefly Rules 26 through 37 — to its proceedings except where its own rules say otherwise. So the scope of discovery (Rule 26(b)), the duty to supplement (Rule 26(e)), the mechanics of interrogatories (Rule 33), document requests (Rule 34), admissions (Rule 36), and depositions (Rules 30 and 31), and the sanctions regime (Rule 37) all come from the same rulebook used in federal district court. If you already understand civil discovery, you understand most of TTAB discovery. The firm's general civil-discovery guides — mastering interrogatories, mastering document discovery, strategic responses to requests for admission, and the broader [practical discovery refresher](/documents/a-practical-discovery-refresher---mastering-the-tools-rules- and_pitfalls_of_federal_civil_litigation) — describe that baseline machinery in depth and are worth reading in tandem with this one.

The second layer is the Board's own regulation, 37 C.F.R. § 2.120, titled simply "Discovery," part of the broader Rules of Practice in Trademark Cases (the "Trademark Rules," 37 C.F.R. §§ 2.1–2.209). This is where the TTAB departs from district-court practice. Section 2.120 sets the length of the discovery period, requires a discovery conference, imposes initial-disclosure and expert-disclosure obligations, caps the number of written discovery requests, prescribes how and when motions to compel are filed, and governs sanctions and protective orders. When § 2.120 conflicts with the Federal Rules, § 2.120 controls.

The third layer is the Trademark Trial and Appeal Board Manual of Procedure, universally called the TBMP. The TBMP is the Board's own operations manual. It is not law in the binding sense — it does not have the force of a statute or regulation, and it does not substitute for applicable rules or decisions — but it is the single most useful reference in practice because it collects, in one organized place, the Board's reading of its rules and its precedential decisions. Chapter 400 of the TBMP is devoted entirely to disclosures and discovery; sections 401 through 414 walk through the discovery conference, disclosures, each discovery device, and the standard protective order, while motion practice lives in Chapter 500. When a practitioner says "the TBMP says," they are usually citing one of those chapters. Above the TBMP sit the genuinely binding authorities: the Lanham Act, the Trademark Rules, U.S. Supreme Court decisions, and the precedential decisions of the TTAB and the Federal Circuit (and its predecessor, the Court of Customs and Patent Appeals). The Board's much larger body of non-precedential decisions is persuasive but not binding.

The 2017 Amendments: Get the Numbers Right

In January 2017 the USPTO substantially amended the Board's rules, and those amendments changed several things that older treatises and form files still state incorrectly. The most important corrections concern numerical limits, electronic service, and the codification of proportionality. Under the amended rules, requests for production of documents and requests for admission are now subject to the same 75-request cap that has long applied to interrogatories. Before 2017, document requests and admissions were unlimited in number; that is no longer true, and a practitioner who relies on the old rule will draft an over-limit set that draws an objection. The 2017 amendments also expressly adopted the 2015 Federal Rules narrowing of discovery scope — making proportionality a co-equal limit at the Board — and they made service by email the default under 37 C.F.R. § 2.119(b), with electronic filing through the Board's online systems (ESTTA and TTABVUE) the norm. Throughout this guide, the rules are stated as amended.

The Shape of a Proceeding: Conference, Disclosures, Discovery, and Trial

A district-court lawsuit and a TTAB proceeding both have a "discovery period," but the surrounding architecture differs enough that it is worth seeing the whole timeline before drilling into the tools.

Pleadings and the Institution Order

A Board proceeding begins with a complaint — a notice of opposition or a petition for cancellation — and an answer. When the Board institutes the proceeding, it issues an institution order (also called the scheduling order or institution notice) that sets out a complete calendar: the deadline for the discovery conference, the opening and close of discovery, the deadlines for initial and expert disclosures, and the staggered trial periods. Reading that order carefully is the first task in any case, because the Board's default dates control everything that follows, and the dates cascade — slip one and the rest move with it.

The Mandatory Discovery Conference

Before discovery opens, the parties must hold a discovery conference under Federal Rule 26(f) and 37 C.F.R. § 2.120(a)(2). This is a required meeting — most often by telephone, but permissibly in person or by video — in which counsel (or self-represented parties) discuss the nature and bases of their claims and defenses, the possibility of settlement (including mediation or arbitration), and a plan for disclosures and discovery. The deadline is usually thirty days after the answer is due, and it coincides with the opening of the discovery period.

A feature unique to the Board deserves emphasis: a party may request that a Board attorney or judge participate in the discovery conference. An interlocutory attorney or administrative trademark judge will join the conference if any party asks — the request must be made no later than ten days before the conference deadline, by filing through ESTTA or telephoning the assigned interlocutory attorney (whose name appears in the docket on TTABVUE) — and the Board may also elect to participate sua sponte whenever it judges its involvement useful. The Board's own guidance flags three situations where its participation is especially valuable: where the matter is particularly contentious or a claim's basis is genuinely in doubt; where unusual discovery problems are looming, such as an abundance of witnesses or obstacles to obtaining evidence; and where a self-represented (pro se) party is involved. This is a genuinely valuable and underused tool. Putting a neutral decision-maker in the room early tends to discipline everyone's expectations, and there is no analog to it in ordinary federal litigation.

Skipping or shortchanging the discovery conference has real consequences. The Board has held that a party who fails to participate in the conference may be barred from moving to compel and may face other sanctions. The conference is not a formality.

What should counsel actually accomplish in the conference? At a minimum, the parties should reach a working understanding on the topics Rule 26(f) enumerates: the scope and timing of discovery, the preservation and exchange of electronically stored information (likely custodians, date ranges, and search terms), the handling of privileged material and the possibility of a clawback agreement under Federal Rule of Evidence 502(d), and the treatment of confidential information under (or any modification to) the Board's standard protective order. Counsel must also address service logistics, since email service is the default unless the parties stipulate otherwise. Two trademark-specific items deserve a place on every agenda. First, whether the parties will stipulate to expanded numerical limits or, more often, to reduced discovery and an Accelerated Case Resolution (ACR) path that can resolve the proceeding on a stipulated or limited record far faster, and far more cheaply, than the full schedule. Second, whether the real dispute is narrow enough — a pure priority contest, for instance — that the parties can agree to phase discovery and tackle the potentially dispositive issue first. A well-run conference frequently shortens the case and almost always lowers its cost. The parties need not file a written discovery plan unless they have altered the standard deadlines or obligations or the Board requests one. 37 C.F.R. § 2.120(a)(2)(v).

Initial Disclosures

After the conference, and no later than thirty days after the opening of discovery, each party must serve initial disclosures modeled on Rule 26(a)(1). In plain terms, each side must hand over, without being asked, (1) the name and, if known, the address and telephone number of each individual likely to have discoverable information the party may use to support its case, with the subjects of that information, and (2) a copy or a description by category and location of the documents, ESI, and tangible things the party may use to support its case. The two Rule 26(a)(1) subsections on insurance and damages computations do not apply at the Board, for the obvious reason that damages are not on the table. The disclosures are about a party's own supporting evidence; they do not require a party to volunteer everything harmful. And a party cannot beg off: it must disclose based on information reasonably available even if it has not finished investigating, even if it believes its opponent's disclosures are deficient, and even if the opponent has disclosed nothing.

Two practical rules flow from initial disclosures, and both trip up the unwary. First, a party must make its initial disclosures before it may seek discovery from another party. You cannot serve interrogatories or document requests until you have served (or are concurrently serving) your own initial disclosures. Second, the Board enforces a meaningful disclosure-based estoppel: a witness or document that should have been disclosed but was not may be excluded from the trial record. The remedy for a non-disclosure is often preclusion, which makes the disclosure obligation strategically important rather than a box-checking exercise.

The Discovery Period

The standard discovery period is 180 days (the rules describe it as 180 days; practitioners often round to "six months"). It opens on the date set in the institution order — the same date as the conference deadline — and closes 180 days later. Within that window the parties serve and respond to written discovery, take discovery depositions, and exchange expert disclosures.

The timing rules are unforgiving and deserve memorization. All written discovery must be served early enough that responses fall due on or before the close of discovery, and because responses are due in thirty days, the Board has held that requests must be served at least thirty-one days before the close of discovery, counting the date of service. Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 U.S.P.Q.2d 1268 (T.T.A.B. 2017). A request served on the last day of the period is improper, and — a trap that has caught careful lawyers — the rule that normally extends a deadline falling on a weekend or holiday does not apply to push out the service-of-discovery deadline. Id.; 37 C.F.R. § 2.196. The Board routinely extends the period by stipulation or on a showing of good cause, and in complex matters at least one extension is common, but parties should not assume an extension and should calendar backward from the close. Parties may stipulate to extend response deadlines among themselves without Board approval — but only so long as the extension does not push the period itself past the date in the institution order; an extension of the period requires Board approval.

Expert Disclosure — A Board-Specific Wrinkle

Expert testimony is less common at the Board than in district court, but when a party intends to use an expert — most often a survey expert opining on likelihood of confusion or secondary meaning — the disclosure rules have a distinctive feature. Expert disclosures follow Rule 26(a)(2) (the report-and-identification regime), but the expert-disclosure deadline must always fall before the close of discovery. That ordering is mandatory and cannot be stipulated away: even when the parties agree to reset other deadlines, the expert-disclosure date must remain inside the discovery period so that the opposing side has time to take expert discovery before discovery closes. When a party serves an expert disclosure, the Board's rules allow the proceeding to be suspended or the schedule reset so the other side can respond with its own expert and conduct expert depositions. Plan expert work early; a survey alone can take months to design, field, and report, and a survey that is rushed is a survey that gets impeached.

The Trial Phases

Here the Board diverges most sharply from district court. There is no live trial before the Board — the administrative judges never see a witness in person. Instead, after discovery closes, the case moves into sequential testimony periods: first the plaintiff's (the opposer's or petitioner's) testimony period, then the defendant's, then a short rebuttal period for the plaintiff, each preceded by a pretrial disclosure. Evidence is submitted as written testimony — historically by testimony deposition, and now frequently by testimony declaration or affidavit under the post-2017 rules, subject to the opponent's right to take oral cross-examination. Documents are introduced through testimony or through a notice of reliance, a filing that places certain self-authenticating materials (registrations, printed publications, official records, the other side's interrogatory answers and admissions, and similar items) into the record. After the testimony periods, the parties file briefs and may request an oral hearing, and the judges decide the case on the written record.

This structure has a direct effect on discovery strategy. Because there is no live cross-examination of the opposing party in front of the fact-finder, the discovery responses and admissions you obtain are a large part of the evidentiary record. A clean admission obtained during discovery, introduced later by notice of reliance, can be more valuable at the Board than it would be in a courtroom where a witness could be confronted live and a jury could discount the concession. Discovery is not merely preparation for trial; in many TTAB cases it is the trial.

Scope and Proportionality

The scope of discovery comes from Rule 26(b)(1), expressly incorporated by 37 C.F.R. § 2.120(a)(1): a party may obtain discovery of any non-privileged matter that is relevant to any party's claim or defense and proportional to the needs of the case. The 2015 amendments to the Federal Rules — adopted at the Board in 2017 — elevated proportionality to a co-equal limit on scope, and the factors are familiar: the importance of the issues, the parties' relative access to information, the parties' resources, the importance of the discovery to resolving the issues, and whether the burden or expense outweighs the likely benefit.

Proportionality is where TTAB discovery lives or dies. Because the only stake is a registration, the Board reads "importance of the issues" and the surrogate for amount in controversy through that lens, and it will cut back discovery that looks built for a damages case. The classic example is the demand for years of granular sales and profit data: in a district-court infringement case those figures may be essential to compute damages, but at the Board, where damages are unavailable, the relevance of detailed financials is limited to whatever they show about the extent and continuity of use, commercial strength, or fame. A request for "all profit-and-loss statements" will often draw a sustained objection where a request for "annual sales volumes and advertising expenditures by year" will not. Frame every request to the registrability issue it actually serves.

The Board enforces proportionality both ways. It will sustain objections to bloated requests — see Domond v. 37.37, Inc., 113 U.S.P.Q.2d 1264 (T.T.A.B. 2015) (entertaining a protective order against disproportionate discovery) — yet it is not reflexively hostile to volume where the pleadings justify it. In Phillies v. Philadelphia Consolidated Holding Corp., 107 U.S.P.Q.2d 2149 (T.T.A.B. 2013), the Board declined to issue a protective order against more than 500 requests for admission because the moving party had itself asserted more than two dozen marks in a broadly pleaded opposition. The lesson is that proportionality is measured against what you put in issue: a party that pleads expansively cannot then complain that discovery into its sprawling claims is too much.

Relevant subject matter in a typical opposition or cancellation clusters around a few recurring themes:

  • Use and priority. When, where, and how each party first used its mark in commerce, and whether that use has been continuous. Priority is frequently dispositive, and the side claiming earlier rights must be ready to prove them with documents, not just assertions.
  • Likelihood of confusion. Evidence bearing on the DuPont factors (discussed below): the similarity of the marks, the relatedness of the goods and services, overlapping trade channels and classes of purchasers, the conditions of purchase and sophistication of buyers, the strength of the senior mark, the existence of similar third-party marks, and any instances of actual confusion.
  • Distinctiveness and descriptiveness. Whether a mark is inherently distinctive, merely descriptive, or has acquired distinctiveness ("secondary meaning") through use — supported by advertising figures, survey evidence, length and exclusivity of use, and unsolicited media attention.
  • Abandonment. In cancellation proceedings, whether the registrant has stopped using the mark with no intent to resume — often shown by gaps in use, discontinued product lines, and the absence of any concrete plan to resume.
  • Ownership, assignment, and licensing. Chains of title, the validity of assignments, and whether licensing has been accompanied by adequate quality control (the absence of which can amount to a "naked license" that forfeits rights).

A word on where to find the leads that make these requests precise. At the start of discovery counsel rarely knows enough to draft surgically. The richest early sources are the pleadings and answer, the parties' initial disclosures, the USPTO file histories of the applications and registrations at issue, publicly available information about the parties and their corporate families, and the records of any related disputes over the same or similar marks. Mining those sources before drafting turns vague "all documents" requests into the kind of tailored requests that survive objection.

The Discovery Devices and Their Limits

The Board permits the same toolkit as federal court — interrogatories, requests for production, requests for admission, depositions, and subpoenas to non-parties — with the modifications below. The single most important practical change since 2017 is uniform numerical caps.

Device Numerical limit at the TTAB Authority Response time
Interrogatories 75, counting subparts 37 C.F.R. § 2.120(d) 30 days
Requests for production of documents 75, counting subparts 37 C.F.R. § 2.120(e) 30 days
Requests for admission 75, counting subparts, plus one additional request to authenticate any number of produced documents 37 C.F.R. § 2.120(i) 30 days
Discovery depositions 10 per side (party or non-party); more by stipulation or Board leave 37 C.F.R. § 2.120(b); TBMP § 404.02 n/a

Each 75-cap may be enlarged only by motion for good cause or by stipulation, and — a point that surprises many practitioners — even a stipulated increase requires Board approval, while a stipulated decrease does not. 37 C.F.R. § 2.120(d), (e), (i). Counting subparts is the perennial source of disputes. Under TBMP § 405.03(d), a subpart is counted separately unless it is "factually subsumed within" the primary question: an interrogatory asking for the time, place, and parties to an identified communication generally counts as one, but a follow-on asking what actions the party took in response to that communication is a discrete topic and counts separately. The prudent course is to count conservatively and, if you genuinely need more, to seek the opponent's stipulation early rather than risk an objection that the entire set is over the limit. That a proceeding involves multiple marks is, by itself, not good cause to exceed the cap — though it is a factor the Board weighs, along with extensive counterclaims and genuinely complex issues. An over-limit set does not automatically void the requests, but it invites an objection that can delay responses and burn a meet-and-confer cycle.

Interrogatories

Interrogatories are written questions that the responding party must answer in writing and under oath within thirty days (Rule 33). They are best used early and for things a person can answer from knowledge: identifying witnesses and custodians, stating first-use dates, describing channels of trade, listing licensees and related entities, identifying enforcement efforts, and identifying the documents that exist. Interrogatory answers serve as party admissions and may reach any matter within Rule 26(b). They are poor vehicles for extracting nuance, because the answers are drafted by counsel and tend to be cautious.

The TBMP expressly permits contention interrogatories — questions that ask a party to state the facts it relies on to support a claim or defense, or its position on how the law applies to those facts. See TBMP § 405.02; Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 U.S.P.Q.2d 1671 (T.T.A.B. 1988); Gould Inc. v. Sanyo Electric Co., 179 U.S.P.Q. 313 (T.T.A.B. 1973). Contention interrogatories are valuable late in the period, once the documents are in, to pin down exactly what theory the opponent intends to prove. They are not, however, a vehicle for resolving pure legal questions — and that distinction matters at the Board (more below).

In a trademark case, the most productive interrogatories track the substantive issues directly. A model set for an opposition might include:

Interrogatory No. 1. State the date of first use anywhere and the date of first use in commerce of the applied-for mark, and for each, identify the goods or services, the geographic area, and the persons with knowledge of that use.

Interrogatory No. 2. Describe each trademark clearance search, investigation, or legal-availability evaluation conducted before adopting the applied-for mark, identifying who conducted it, when, and the marks it disclosed.

Interrogatory No. 3. Identify all channels of trade through which the goods or services offered under the applied-for mark are or are intended to be sold, the price points, and the classes of purchasers to whom they are marketed.

Interrogatory No. 4. Identify each instance of actual confusion, mistake, or association between the applied-for mark and any other mark of which you are aware, including the persons involved and any documents reflecting it.

Interrogatory No. 5. Identify each parent, subsidiary, affiliate, predecessor, successor, licensee, and franchisee that has used or claimed rights in the applied-for mark, and describe the nature and dates of that use.

A drafting note that matters at the Board: do not ask a party to admit a legal conclusion such as "likelihood of confusion" in an interrogatory. The ultimate likelihood-of-confusion determination is for the Board to decide as a question of law on the underlying facts; asking the opponent to concede it produces an objection, not an answer. Reserve the contested legal characterization for argument and use interrogatories to lock down the underlying facts. A second efficiency worth knowing: where the answer to an interrogatory can be derived from business records (USPTO files, sales ledgers, license agreements) as easily by the requester as by the responder, Rule 33(d) lets the responding party point to and produce the records rather than narrate an answer — a practice the Board endorses. TBMP § 405.04(b). The firm's broader treatment of drafting and answering this device appears in mastering interrogatories.

Requests for Production of Documents

Requests for production (RFPs) ask the other side to produce documents and electronically stored information for inspection and copying (Rule 34). Documents are usually the most reliable evidence in a trademark case because they were created in the ordinary course of business, before anyone was thinking about litigation, and they fix dates and intentions that witnesses later soften or forget. A contemporaneous invoice showing a sale under the mark is worth more than a witness's recollection of "continuous use since the nineties." RFPs reach not only documents but tangible things — representative samples of packaging, labels, and advertising that bear the marks at issue.

The recurring document categories in a Board proceeding are:

  • Mark-adoption and clearance files — search reports, availability opinions, internal emails about choosing the mark, and consideration of alternatives. These bear on intent and, in cancellation or fraud contexts, on knowledge.
  • Specimens and use evidence — packaging, labels, advertising, brochures, website captures, social-media posts, press coverage, trade-show materials, and the specimens filed with the USPTO. These prove the manner, extent, and dates of use.
  • Sales and marketing records — annual sales volumes, advertising expenditures, and marketing plans, used to show commercial strength, fame, or (in the registrant's defense) continuous use, rather than to compute damages.
  • Communications — internal and external correspondence about the mark, competing marks, cease-and-desist exchanges, and any instances of confusion.
  • Title, license, and quality-control documents — assignments, license agreements, and the records showing the licensor actually monitored quality.
  • Surveys and prior proceedings — any consumer surveys or focus-group reports, and the records of other litigation or proceedings connected to the marks.

A model RFP for a cancellation proceeding alleging abandonment might read:

Request No. 12. All documents and communications concerning any cessation, suspension, or reduction in the use of the registered mark, including internal decisions to discontinue a product or service, inventory wind-downs, and any plans, budgets, or timelines for resuming use.

Because RFPs are now capped at 75 including subparts, draft them as efficiently as the cap demands: use a robust definitions-and-instructions section so that broad defined terms ("the Mark," "Use Evidence," "Communications") do the work that would otherwise require many separate requests, describe each category with the "reasonable particularity" Rule 34 demands, and specify the production format (native files with metadata, or searchable PDF) and the treatment of privilege logs up front. A particular caution from the case law: avoid requests for "all" documents on a broad topic. The Board routinely sustains objections to "all documents relating to the asserted trademark" or "all license agreements" as overbroad and disproportionate, while a request for "all documents relating to the creation or selection of the mark" or to "a particular license agreement" — a finite, bounded set — will usually stand. See Domond, 113 U.S.P.Q.2d 1264. The firm's mastering document discovery guide covers objection and response strategy in detail.

One important correction to a common misconception: at the modern Board, there is no longer an "absence of limits" on document requests. Older materials say RFPs are unlimited; that has been false since the 2017 amendments. The duty to produce remains broad — a party must conduct a reasonable search and produce responsive, non-privileged, proportional documents within its possession, custody, or control, either as kept in the ordinary course of business or labeled to correspond to the requests — but the number of requests is now constrained, which rewards careful drafting.

Requests for Admission

Requests for admission (RFAs) ask the opposing party to admit or deny the truth of a specific factual statement, the application of law to fact, or the genuineness of a document (Rule 36). They are the most underused and, in skilled hands, the most efficient device at the Board, precisely because the trial record is built on paper. A fact admitted is conclusively established for the proceeding and need not be proven by testimony or document. Like interrogatories, RFAs may address the application of law to fact, but they may not be used to resolve a purely legal issue. TBMP § 407.

The responding party has thirty days to admit, deny, admit in part (explaining the qualification), or state in detail why it can neither admit nor deny after a reasonable inquiry — or to object. The most dangerous feature of Rule 36 — and the one most worth exploiting and respecting — is that a matter is deemed admitted if no timely response is served. Unlike a missed interrogatory or document response, which the requester must move to compel, a missed RFA is admitted automatically, and the only escape is a showing of excusable neglect or a successful motion to withdraw or amend the deemed admission. See Rule 36(a); 37 C.F.R. § 2.120(i)(1); TBMP § 524. Calendar RFA deadlines with particular care; a missed deadline can hand the other side a string of dispositive admissions without a single Board order.

Effective RFAs do three things. They authenticate documents, sweeping away the foundational burden of proving that an exhibit is what it appears to be — and, helpfully, a party may make one additional request to authenticate any number of produced documents without counting it against the 75 cap. 37 C.F.R. § 2.120(i); TBMP § 407.05(a). They establish background facts that are not really in dispute — corporate form, dates, the existence of a registration — so trial energy is spent on the genuine fights. And they narrow or eliminate issues by getting the opponent to concede an element of priority, use, or a DuPont factor.

A well-constructed RFA seeks one discrete fact, not a compound proposition that invites a partial denial. Compare the model requests below for a priority dispute:

Request No. 1. Admit that the document attached as Exhibit A is a true and correct copy of Applicant's invoice dated March 3, 2019.

Request No. 2. Admit that Applicant did not use the applied-for mark in commerce before January 1, 2020.

Request No. 3. Admit that Applicant was aware of Opposer's mark before Applicant filed the application that is the subject of this proceeding.

Request No. 4. Admit that the goods identified in the application travel in the same channels of trade as Opposer's goods.

A useful companion tactic is to pair contested RFAs with a corresponding interrogatory asking the responding party to state the factual basis for any denial — that way a strategic denial either yields the basis (which you can then refute) or exposes itself as baseless. Rule 36 also carries a cost-shifting backstop that gives RFAs real teeth. Under Rule 37(c)(2), if a party fails to admit something the requesting party later proves true, the Board may order the refusing party to pay the reasonable expenses, including attorney's fees, incurred in making that proof — unless the request was objectionable, the matter was of no substantial importance, the refusing party had a reasonable ground to believe it might prevail, or there was other good reason for the failure. Strategic guidance for the receiving end appears in strategic responses to requests for admission.

Discovery Depositions

Depositions are available but used more sparingly at the Board than in district court, partly because of cost and partly because so much evidence comes in on paper. Each side is presumptively limited to ten discovery depositions, and Board leave is required to take more than ten, to re-depose a witness, or to depose a person in prison; otherwise a party may depose any party or non-party who may have relevant information. TBMP § 404.02. Depositions of natural persons are taken where the witness resides or works (or wherever the parties agree in writing), and they must be both noticed and taken within the discovery period. 37 C.F.R. § 2.120(b). Notice need only be "reasonable" under the circumstances; the rules set no fixed minimum. Gaudreau v. American Promotional Events, Inc., 82 U.S.P.Q.2d 1692 (T.T.A.B. 2007).

A meaningful wrinkle applies to foreign parties and witnesses: the discovery deposition of a person residing outside the United States is generally taken on written questions under Rule 31 unless the parties stipulate to oral examination or the Board orders it for good cause — a rule rooted in the practical difficulty of compelling oral testimony abroad. 37 C.F.R. § 2.120(c)(1). And a deposition of an organization proceeds under Rule 30(b)(6): the notice lists topics, and the entity must designate and prepare one or more witnesses to testify on matters known or reasonably available to it.

A Rule 30(b)(6) deposition of the opposing organization can be especially efficient in a trademark case. The notice lists topics — first use, channels of trade, the clearance process, the meaning and selection of the mark, instances of confusion, enforcement history — and the organization must commit to organizational positions that cannot later be disavowed by claiming the individual witness "didn't know." The flip side is that defending such a deposition demands careful preparation; the firm's guides to the art and science of depositions in federal civil litigation and defending depositions in federal court translate directly to Board practice. One critical distinction to keep front of mind: a discovery deposition is a discovery tool that does not automatically become trial evidence. To make a discovery deposition part of the record, a party must qualify it under the rules — for example, by a notice of reliance where the deponent is an adverse party — and it is wholly distinct from the testimony deposition or declaration taken later in the assigned testimony period to put evidence of record. Confusing the two is a common and costly error.

Discovery from Non-Parties

Much of the most persuasive evidence in a trademark dispute sits in the hands of people who are not parties: advertising agencies that designed campaigns, distributors and retailers who placed goods in channels of trade, market-research firms that ran consumer studies, and former employees who participated in adopting the mark. Discovery from non-parties is available through a subpoena under Rule 45, which the Board's rules incorporate, but the mechanics differ from party discovery in an important way: the Board itself does not issue or enforce Rule 45 subpoenas. A subpoena to compel a non-party's documents or deposition issues from, and is enforced by, the United States district court in the district where the discovery is to occur, not the Board. A party seeking non-party discovery therefore plans for the extra time and the possibility of motion practice in a federal court, and should account for that timeline when calendaring against the close of discovery. Non-party deposition testimony and documents, once obtained, can be made of record at trial under the appropriate procedures.

Electronically Stored Information at the Board

Modern trademark disputes are awash in electronically stored information (ESI): emails about adopting a mark, web-analytics and e-commerce data showing where and to whom goods are sold, social-media advertising, and archived versions of websites. The Trademark Rules expressly include ESI within the scope of an RFP, and the Board expects parties to address ESI at the discovery conference — preservation, sources, search terms, and production format. But the Board applies the same proportionality lens to ESI that it applies to everything else, and more so: because of the Board's limited jurisdiction and the narrow scope of its decisions, expansive e-discovery is usually unnecessary and the Board says so plainly. See Frito-Lay North America, Inc. v. Princeton Vanguard LLC, 100 U.S.P.Q.2d 1904 (T.T.A.B. 2011) (urging counsel to clarify e-discovery logistics at the conference precisely to limit cost). Demands that would be tolerated in a high-value commercial case will be reined in here.

Three practical points recur. First, preservation and litigation holds matter: a party that fails to suspend routine deletion once a proceeding is reasonably anticipated risks spoliation findings and adverse inferences, and the loss of email or website data can be fatal in a use-and-priority fight. Second, website and social-media evidence is ephemeral and must be captured and authenticated deliberately — through archiving services, the Internet Archive's Wayback Machine, and supporting declarations — a subject the firm treats at length in capturing the web: a practitioner's guide to authenticating website screenshots as evidence in federal court. Third, cooperation on search terms and formats early, ideally with Board input at the conference, avoids the most expensive ESI disputes. The watchword is proportionality: collect what the registrability issues require, and resist the instinct to image every device.

Confidentiality and the Board's Standard Protective Order

Trademark discovery routinely surfaces competitively sensitive material — sales figures, customer lists, marketing plans, unpublished product roadmaps. The Board addresses this with a standard protective order (SPO) that is automatically imposed in every inter partes proceeding under 37 C.F.R. § 2.116(g). Parties do not have to negotiate one from scratch; the order applies by default and allows information to be designated "Confidential" (available to the parties and their attorneys) or, for the most sensitive material, "Confidential — For Attorneys' Eyes Only" (trade-secret or commercially sensitive material, available only to outside counsel and to independent experts who agree to be bound — not to the parties themselves or to in-house counsel). Parties may modify the SPO or substitute their own confidentiality agreement, but a modification must be approved by the Board, and the default order governs unless and until it is. The SPO also imposes end-of-case obligations: within thirty days of termination, protected materials must be returned or destroyed on request, and the parties may not thereafter discuss the protected information.

Two practical disciplines follow. First, do not over-designate. The Board will not honor a designation on material that cannot reasonably be considered confidential, and marking everything "Attorneys' Eyes Only" damages credibility and breeds disputes; reserve the highest tier for genuinely sensitive competitive data. Second, mind the public record. Filings at the Board are public, so confidential material submitted as evidence must be filed in redacted form with a separate confidential version under seal. Sloppy handling can inadvertently disclose a client's trade secrets on a public docket.

Privilege and Work Product in Trademark Discovery

The attorney-client privilege and the work-product doctrine apply at the Board as in any litigation, with two recurring trademark-specific pressure points. A party withholding material on privilege grounds must support the claim with the equivalent of a privilege log, identifying for each withheld communication or work product the date, the author or speaker, the recipient, and the nature of the item — enough to let the requester and the Board test the claim.

The first pressure point is clearance and prosecution advice. Communications with trademark counsel about a mark's availability, or about how to respond to a USPTO office action, are frequently sought — especially where intent or knowledge is in issue — and they are frequently privileged. The second is the subject-matter-waiver trap: if a party puts its reliance on counsel's advice at issue — for example, by defending against a fraud or bad-faith claim with "we relied on our lawyer's clearance opinion" — it can waive privilege over the entire subject. Decide early and deliberately whether to invoke an advice-of-counsel theory, because the waiver that follows is broad and difficult to cabin. Over-claiming privilege invites a motion and an order to produce; under-claiming forfeits protection.

Responding to Discovery: Obligations, Objections, and Strategy

Responding well is as consequential as requesting well. The responding party's obligations come from Rules 26, 33, 34, and 36: answers and productions are due in thirty days; responses must be complete and made in good faith after a reasonable inquiry; and there is a continuing duty to supplement if a response was incomplete or becomes incorrect.

Objections must be specific, not boilerplate. A reflexive recital of "vague, overbroad, and unduly burdensome" without explanation is increasingly disfavored and may be treated as waived. When you object on burden or proportionality grounds — often the strongest objection at the Board — say why: explain the volume, the cost, and the marginal relevance to a registrability question. When you object that a request is genuinely ambiguous but its likely meaning is obvious, the better practice is to state how you are construing it and answer accordingly; only where the meaning is truly unclear should you invite a meet-and-confer before responding. When you object that a request reaches confidential material, do not simply refuse; offer to produce under the standard protective order. When you object that a request is partly overbroad, the good-faith course is to answer the proper part and state precisely what you are withholding and why; Rule 34 now requires exactly that. And critically, state whether responsive materials are being withheld on the basis of an objection — an objection that conceals a withholding is itself improper. If you agree to produce in response to an arguably vague request, preserve your objection and make clear the production does not concede the request's premise.

On the affirmative side, give useful answers. In a use-and-priority case, "Applicant has continuously used the mark" is far weaker than a specific answer: "Applicant first used the mark SUNRISE COFFEE in commerce on January 15, 2018, in connection with retail sales of coffee at its store at 123 Main Street, Springfield, Illinois, and has used it continuously since, with annual sales rising from approximately $50,000 in 2018 to $150,000 in 2023." Specificity proves the case; vagueness invites a motion to compel and looks evasive in the eventual record.

A final responding-side discipline: complete answers do not require advocacy. You must disclose the facts a proper request seeks, but you need not narrate your legal theory or telegraph your strategy. Answer the question that was asked, accurately and fully, and stop.

The Continuing Duty to Supplement

Discovery responses are not frozen on the day they are served. Rule 26(e) imposes a continuing duty to supplement or correct a disclosure or response in a timely manner once the party learns the earlier response was incomplete or incorrect and the new information has not otherwise been made known to the other side. TBMP § 408.03. At the Board this duty has sharp teeth because of the disclosure-based estoppel discussed below, and because litigation positions evolve: a party's failure to supplement to reflect a new claim or defense can result in the Board precluding that claim or defense at trial. The practical discipline is to review every interrogatory answer, document production, and disclosure twice — once before the close of fact discovery and again before trial — and to supplement promptly whenever a new custodian is identified, additional sales data is compiled, or a previously unknown instance of confusion surfaces, rather than springing the information for the first time at trial.

Sequencing the Devices

The three written devices work best in a deliberate sequence rather than all at once. Lead with interrogatories and document requests served together early in the period. The interrogatories identify the witnesses, custodians, and categories of documents that exist; the contemporaneous document requests then pull those documents in. Use the responses to interrogatories and the produced documents to identify the precise facts you want conceded, and only then serve requests for admission to nail those facts down for the record. Depositions, where warranted, usually come last, after the documents are in hand, so the examiner can confront the witness with the paper.

Because every device shares the thirty-day clock and a numerical cap, this sequence also conserves resources: you avoid spending admissions on facts that document discovery will reveal you do not need, and you avoid duplicative interrogatories about documents you could simply request. Against the 180-day period, a workable cadence is to serve interrogatories and document requests in the first month, take stock at the midpoint, and reserve the final weeks for admissions and any depositions — always remembering the thirty-one-day rule of Estudi Moline Dissey, so that responses fall due before the close of discovery and any follow-up requests are themselves served at least thirty-one days out. Parties who sit on discovery in the expectation that the case will settle frequently discover, too late, that they have run out of runway to serve follow-up requests or to prepare for depositions.

Motions to Compel, the Meet-and-Confer Duty, and Board Involvement

When a party serves evasive answers, withholds documents, or stonewalls entirely, the remedy is a motion to compel under 37 C.F.R. § 2.120(f) and Rule 37. A motion to compel is available against a party that fails to serve initial disclosures, fails to answer an interrogatory or document request, or fails to appear for or answer questions at a discovery deposition. (Note the asymmetry: there is no motion to compel a response to an RFA, because an unanswered RFA is simply deemed admitted; the requester's remedy for an inadequate RFA answer is a motion to test its sufficiency under § 2.120(i).) Three features of Board practice govern these motions.

First, the meet-and-confer requirement is real and is enforced. Before filing, the moving party must make a good-faith effort to resolve the dispute by conferring with the adversary, and the motion must include a written statement that the parties met and conferred in good faith and could not resolve their differences. 37 C.F.R. § 2.120(f)(1); TBMP § 523.02. The Board regularly denies motions that recite a single perfunctory email; it expects a genuine attempt to narrow the dispute, and most discovery disputes are in fact resolved in these conferences without the Board's involvement. Document every step — letters, emails, call logs — because that record is what persuades the Board the requirement was satisfied.

Second, timing is jurisdictional in practical effect. A motion to compel discovery responses must be filed before the day of the deadline for the moving party's pretrial disclosures for the first testimony period; wait too long and the right to compel is lost. The Board's rules tie the deadline to the trial calendar precisely to force parties to resolve discovery disputes before the proceeding moves into the testimony phase.

Third, filing a motion to compel (or a motion to test the sufficiency of an RFA response, or for a protective order) generally suspends the proceeding as to all matters not germane to the motion. 37 C.F.R. § 2.120(f)(2), (i)(2). Note a subtlety: the suspension halts the filing of unrelated papers and the service of new discovery, but it does not toll outstanding discovery deadlines — a party must still respond to discovery already served. The Board's interlocutory attorneys also hold telephone conferences to resolve discovery disputes more quickly than full briefing would allow — another point at which the option to involve a Board attorney early pays off.

When the Board grants a motion to compel, it orders the responses or production and may award the moving party its reasonable expenses. A particularly important Board doctrine on the receiving end: a party that fails to respond at all to interrogatories or document requests, and then has a motion to compel granted, may forfeit its right to object to those requests on the merits — the objections are waived. The lesson is unforgiving: serve something timely, even if only objections, rather than letting the deadline pass.

Sanctions and Estoppel

The Board's enforcement powers run along a spectrum, and they escalate with the seriousness of the violation.

At the milder end are monetary expense awards — most commonly attorney's fees and costs incurred in bringing a successful motion to compel, and the Rule 37(c)(2) award for unjustified failures to admit. At the Board, expense awards are the most frequently imposed sanction.

More serious is disclosure-and-discovery estoppel. This is the sanction practitioners must internalize. Under Rule 37(c)(1), a party that fails to disclose a witness or document in its initial or pretrial disclosures, or fails to provide information in response to discovery, is precluded from using that witness or evidence at trial unless the failure was substantially justified or harmless. Because the Board's trial record is built from disclosed witnesses, noticed testimony, and documents introduced by notice of reliance, this estoppel can quietly gut a case: the key sales witness who was never disclosed cannot testify, and the dispositive invoice that was never produced cannot come in. The estoppel is automatic in the sense that it does not require a separate motion for sanctions; it operates as an evidentiary bar at trial.

At the severe end are issue, evidentiary, and case-dispositive sanctions for willful or bad-faith violations or for disobeying a Board order — striking pleadings, drawing adverse inferences, precluding entire claims or defenses, and, in extreme cases, entering judgment. The Board reserves judgment as a sanction for genuinely egregious conduct, but it will impose it; a party that flatly defies an order to compel risks losing outright.

The practical takeaways are simple to state and easy to neglect: respond to everything on time, disclose what the rules require, preserve evidence the moment a dispute is reasonably anticipated, and document your good-faith efforts at every turn. Most TTAB sanctions are self-inflicted and entirely avoidable.

Using Discovery to Build the DuPont Likelihood-of-Confusion Record

Likelihood of confusion is the most litigated issue at the Board, and discovery is how the record on it gets built. The governing framework is the set of factors from In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) — the so-called DuPont factors — which the Federal Circuit and the Board apply to determine whether consumers are likely to be confused as to source. Not every factor matters in every case; the Board weighs only those for which there is evidence, and a few factors often dominate. The disciplined approach is to map each DuPont factor you intend to rely on to a specific discovery request, so that by the close of discovery you hold the evidence each factor requires.

The factors most often in play, and the discovery that supports them, are these:

Similarity of the marks in appearance, sound, connotation, and commercial impression. This factor is usually assessed from the marks themselves, but discovery can illuminate how the parties actually display and pronounce their marks in the marketplace, and consumer surveys can speak to commercial impression.

Relatedness of the goods and services. Here the identification of goods in the application or registration controls the legal question, but discovery into how the products are actually marketed, who buys them, and whether the parties compete fleshes out the picture. Interrogatories and RFPs on product lines, catalogs, and marketing materials do the work.

Similarity of trade channels and classes of purchasers. Interrogatories asking where and to whom each party sells, and document requests for distribution agreements, sales records by channel, and marketing plans, establish whether the goods reach the same consumers in the same places.

Conditions of purchase and buyer sophistication. Are these impulse purchases by ordinary consumers or considered purchases by sophisticated professionals? Discovery into pricing, the typical purchaser, and the buying process informs whether confusion is likely.

Strength of the senior mark — both its inherent (conceptual) strength and its commercial strength or fame. The senior user proves commercial strength with discovery into advertising expenditures, sales volumes, length and exclusivity of use, unsolicited media coverage, and, where available, survey evidence of recognition. (Where a dilution claim is pleaded, fame becomes a threshold issue under 15 U.S.C. § 1125(c)(2)(A), and the discovery into fame must be correspondingly robust.)

The number and nature of similar marks in use on similar goods. A defendant weakens the plaintiff's mark by showing a crowded field of similar third-party marks. Discovery and independent investigation into third-party registrations and actual marketplace use support this factor.

Actual confusion. Evidence of real-world confusion is powerful but rarely abundant. Interrogatories and RFPs targeting misdirected communications, customer inquiries, mistaken orders, and internal reports of confusion are essential, and a survey may supply the proof that anecdote cannot.

The Federal Circuit and the Board apply a likelihood-of-confusion analysis specific to registration disputes, and the firm's treatment of the substantive law appears in navigating the maze of trademark confusion. For discovery purposes, the operative principle is forward planning: decide which DuPont factors will win the case, and aim every request at the evidence those factors demand. Discovery that wanders across factors no one will argue is wasted, and at the Board, where proportionality is policed hard, wasted discovery is also vulnerable discovery.

Discovery Tailored to Other Grounds

Likelihood of confusion is the most common ground, but several others recur, and each calls for a distinct discovery focus.

Priority disputes. Where the contest is which party used the mark first, discovery centers on the quality and continuity of use, not merely a calendar date. The senior user must produce contemporaneous proof — dated invoices, purchase orders, shipping records, dated advertising, and dated specimens — establishing use in commerce that is more than token. Interrogatories should pin down the exact first-use-in-commerce date, the goods or services first sold, and the geographic reach; document requests should sweep in every contemporaneous record that fixes those facts; and requests for admission should be used to lock down the opponent's later first-use date. A common and decisive trap in intent-to-use cases is the demand for proof of a bona fide intent to use the mark as of the application's filing date — the absence of any documentary business plan, product development, or marketing preparation can defeat the application, so discovery into the existence (or non-existence) of such documents is often outcome-determinative. The substantive backdrop on unregistered and common-law rights, useful for framing these requests, appears in trademark rights under common law.

Descriptiveness and acquired distinctiveness. When the claim is that a mark merely describes the goods, or conversely that a descriptive mark has acquired distinctiveness ("secondary meaning"), discovery targets consumer perception and the registrant's promotional investment. The challenger seeks dictionary and industry usage, third-party descriptive uses of the same term, and the registrant's own descriptive uses of its mark. The registrant defending acquired distinctiveness produces the proof of secondary meaning: the length, degree, and exclusivity of use; advertising expenditures and "look for" advertising that directs consumers to treat the term as a source indicator; sales volumes; unsolicited media coverage; and any consumer surveys. A model request: "Produce all documents concerning consumer recognition or association of the term [MARK] with a single source, including consumer surveys, focus-group reports, and advertising that instructs consumers to look for the term."

Abandonment. In a cancellation alleging abandonment, the petitioner must show three consecutive years of non-use (which creates a statutory presumption of abandonment under Section 45 of the Lanham Act, 15 U.S.C. § 1127) or non-use coupled with an intent not to resume. Discovery probes whether the registrant actually sold goods under the mark during the relevant years and whether any claimed intent to resume is backed by concrete steps. Interrogatories ask for annual sales year by year; document requests seek invoices, inventory and shipping records, and any business plans or budgets reflecting an intent to resume; and admissions can establish the gap in use directly. The registrant defends by producing whatever evidence of continuing — even if modest — use it can muster.

Fraud on the USPTO. Fraud is the most serious — and hardest to prove — ground. Under In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), a fraud claim requires proof that the applicant knowingly made a material false statement to the USPTO with the intent to deceive; mere negligence or an honest misunderstanding will not do. Because intent is the crux, discovery focuses on what the registrant knew and when — the clearance files, the internal communications about which goods were actually in use when the specimen and declaration were filed, and the decision-making behind the application's contents. The advice-of-counsel waiver discussed above frequently surfaces here, because a registrant accused of fraud is tempted to defend by pointing to its lawyer's involvement.

A Worked Example

A short hypothetical ties it together. (The following is a hypothetical for illustration only.) Suppose Acme Roasters Inc. opposes an application by Bright Bean LLC to register SUNRISE for coffee, claiming prior rights in SUNRISE COFFEE. Acme's discovery plan would: (1) serve interrogatories establishing Bright Bean's first-use dates, trade channels, price points, and clearance search; (2) serve RFPs for Bright Bean's specimens, advertising, sales records by region, and any documents reflecting awareness of Acme's mark; (3) serve RFAs to authenticate Bright Bean's invoices (using the uncapped authentication request) and to pin down that Bright Bean's first use postdates Acme's; (4) if confusion is genuinely contestable, retain a survey expert and serve the expert disclosure before the close of discovery; and (5) if a damaging document or a clean set of admissions emerges, weigh whether the leverage supports a coexistence agreement rather than a full trial. By the close of the period, Acme should hold, in admissible form, the priority evidence and the DuPont evidence it will later submit by notice of reliance and testimony declaration. That is what good TTAB discovery looks like: issue-driven, proportional, and built backward from the record the Board will actually decide on.

Cost Discipline and Settlement

Board proceedings are generally cheaper than district-court trademark litigation, but discovery can still consume a budget quickly, and disproportionate discovery is both expensive and sanctionable. Three habits keep costs in check. Focus on the dispositive issue — most cases turn on priority or on two or three DuPont factors, and discovery should concentrate there. Use informal cooperation and stipulations to take undisputed facts off the table rather than litigating them; the Board encourages stipulations and even offers an Accelerated Case Resolution (ACR) track for parties who want a faster, leaner adjudication on a stipulated or limited record, often resolving the case on cross-motions in lieu of a full trial. And let discovery inform settlement. A clean set of admissions or a damaging document production often reorders the parties' assessment of the case, and many Board proceedings settle — through coexistence agreements, consent agreements, or amended identifications of goods — once the discovery record makes the likely outcome clear. The firm's overview of federal trademark application checklists from preparation to registration and the USPTO trademark application checklists help frame the registration consequences that drive those settlements.

Common Pitfalls

A handful of mistakes recur often enough to warrant a checklist of their own:

  • Treating the Board like district court. Over-collecting, over-requesting, and demanding granular financials in a case with no damages invites proportionality objections and judicial impatience.
  • Missing the conference or disclosure obligations. Failing to hold the discovery conference, or serving discovery before making initial disclosures, can bar a motion to compel and preclude evidence.
  • Blowing the 31-day service window. Discovery served fewer than thirty-one days before the close of discovery is untimely, and the weekend/holiday extension does not save it.
  • Blowing the RFA deadline. Unanswered requests for admission are deemed admitted automatically; a single missed calendar entry can lose the case.
  • Boilerplate objections. Generic objections without specific justification may be waived, and a total non-response after a granted motion to compel forfeits objections entirely.
  • Ignoring the 2017 caps. Drafting unlimited document requests on the assumption that RFPs are uncapped — or forgetting that even a stipulated increase needs Board approval — produces an over-limit set that draws an objection.
  • Neglecting ESI preservation. Failing to issue a litigation hold risks spoliation findings and adverse inferences, and the loss of email or website data can be fatal to a priority claim.
  • Over-designating confidential material. Marking everything attorneys'-eyes-only damages credibility, breeds disputes, and the Board will not honor a designation on material that is not truly confidential.
  • Confusing discovery and testimony depositions. A discovery deposition is not automatically of record; treating it as trial evidence without qualifying it is a costly error.
  • Discovery without a theory. Requests that are not tied to a priority element or a DuPont factor waste money and expose the requesting party to proportionality challenges.

Frequently Asked Questions

How long does TTAB discovery last? The standard discovery period is 180 days, opening on the date set in the Board's institution order (the same day as the discovery-conference deadline) and closing 180 days later. The period is routinely extended by stipulation or for good cause, but written discovery must be served at least thirty-one days before the close so responses come due on or before that date, and the usual weekend/holiday extension does not apply to that service deadline.

How many interrogatories, document requests, and admissions can I serve? Each device is capped at 75, counting subparts, under 37 C.F.R. § 2.120 as amended in 2017. A party may also make one additional request to authenticate any number of produced documents without counting it against the RFA limit. The caps can be raised by motion for good cause or by stipulation, but even a stipulated increase requires Board approval (a stipulated decrease does not). Older sources stating that document requests are unlimited are out of date.

How many depositions can I take, and what about a witness overseas? Each side may take up to ten discovery depositions; more requires a stipulation or Board leave. A discovery deposition of a person residing outside the United States is generally taken on written questions under Rule 31 unless the parties stipulate to an oral examination or the Board orders one for good cause.

Do I have to make initial disclosures, and what happens if I skip them? Yes. No later than thirty days after the opening of discovery you must serve initial disclosures of the witnesses and documents you may use to support your case, and you must make those disclosures before (or while) seeking discovery from the other side. A witness or document you should have disclosed but did not may be excluded from the trial record.

Can I get a Board judge involved in a discovery dispute? Yes, in two ways. Any party may request — no later than ten days before the conference deadline — that a Board interlocutory attorney or administrative judge participate in the discovery conference, which is especially useful in contentious cases, where unusual discovery problems loom, or where a party is self-represented. Separately, the Board's interlocutory attorneys hold telephone conferences to resolve discovery disputes efficiently. Before filing a motion to compel, you must first make a documented good-faith effort to confer with your adversary.

What is the difference between a discovery deposition and a testimony deposition? A discovery deposition is taken during the discovery period to gather information and does not automatically become evidence; to use an adverse party's discovery deposition at trial you generally introduce it by notice of reliance. A testimony deposition (or, increasingly, a testimony declaration subject to cross-examination) is taken during the assigned testimony period to make evidence part of the trial record. Confusing the two is a common and costly error.

What sanctions can the Board impose for discovery abuse? The Board can award the expenses of a successful motion to compel, shift the cost of proving facts that were unreasonably not admitted, preclude undisclosed witnesses and evidence, draw adverse inferences, strike pleadings, and in egregious cases enter judgment. Most sanctions are avoidable through timely, good-faith compliance.

Key Takeaways

Discovery before the TTAB is civil discovery adapted to an administrative tribunal whose only currency is the federal register. The Federal Rules supply the machinery; 37 C.F.R. § 2.120 and Chapter 400 of the TBMP supply the modifications that make Board practice distinctive — a mandatory discovery conference with optional Board participation, front-loaded initial disclosures that must precede any discovery, a 180-day period with a hard thirty-one-day service window, uniform 75-request caps on interrogatories, document requests, and admissions since 2017, a ten-deposition limit, and an expert-disclosure deadline that must fall before discovery closes. Because the case will be decided on a written record, discovery is not a warm-up for trial; the admissions, answers, and documents you gather largely are the trial. The winning approach is issue-driven and proportional: identify whether the case turns on priority, abandonment, descriptiveness, or particular DuPont factors, aim every request at the evidence that issue requires, respond completely and specifically, confer in good faith before running to the Board, and preserve and disclose scrupulously so that estoppel never quietly strips you of your best evidence.

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This article is provided by mclaw.io for general informational purposes only. It is not legal advice, does not create an attorney-client relationship, and may not reflect the most recent developments in trademark law or the Board's rules and the TBMP. Discovery practice before the Trademark Trial and Appeal Board turns on the specific facts, deadlines, and orders in each proceeding. Readers should consult qualified trademark counsel before acting on any matter discussed here.