TTAB discovery borrows the machinery of federal civil litigation—interrogatories, requests for production, requests for admission, depositions—and bolts it onto an administrative timetable with hard caps, mandatory cooperation, and a trial structure unlike district court. Because the Board's only stake is registrability (not use, infringement, or damages), it polices proportionality hard. This checklist gives you the workflow; the full treatment is in Discovery Practice in TTAB Trademark Proceedings. It applies in both oppositions and cancellations.

Phase 1 — Read the framework and the institution order

  • Keep all three layers of authority on the desk: the Federal Rules (Rules 26–37), 37 C.F.R. § 2.120, and the TBMP (Chapter 400 disclosures/discovery; Chapter 500 motions).
  • Read the institution order carefully—it sets the discovery-conference deadline, the opening/close of discovery, disclosure deadlines, and the staggered testimony periods.
  • Note that where § 2.120 conflicts with the Federal Rules, § 2.120 controls.
  • Confirm you are using post-2017 limits (document requests and admissions are now capped at 75; email service is the default).
  • Re-read the pleadings—they fix the lawful scope of discovery; map each pleaded ground and its elements.

WHY / traps. The dates cascade—slip one and the rest move with it, so calendar from the order on day one. Older treatises and form files still wrongly state that RFPs and RFAs are unlimited; relying on the old rule produces an over-limit set that draws an objection. Discovery is bounded by the pleadings: you may only obtain discovery relevant to a pleaded claim or defense, so amend the pleading first if you need to expand scope.

Phase 2 — Discovery conference and initial disclosures

  • Hold the mandatory discovery conference (Rule 26(f); 37 C.F.R. § 2.120(a)(2)), usually ~30 days after the answer is due.
  • Consider requesting Board participation (interlocutory attorney or judge), no later than 10 days before the conference deadline.
  • Cover the Rule 26(f) agenda: scope and timing, ESI (custodians, date ranges, search terms, format), privilege handling and a possible FRE 502(d) clawback, and the standard protective order.
  • Discuss two trademark-specific items: stipulating to expanded or reduced limits / ACR, and phasing discovery if a single issue (e.g., priority) may be dispositive.
  • Serve initial disclosures no later than 30 days after discovery opens (witnesses and documents you may use; no insurance/damages disclosures).

WHY / traps. Skipping or shortchanging the conference is dangerous—a party that fails to participate may be barred from moving to compel. Two disclosure traps: you must serve your own initial disclosures before you may seek discovery from another party, and a witness or document that should have been disclosed but was not may be precluded at trial under Rule 37(c)(1).

Phase 3 — Plan scope, proportionality, and sequencing

  • Apply Rule 26(b)(1) scope: relevant to a pleaded claim/defense and proportional to the needs of the case.
  • Calibrate to registrability, not damages—frame financial requests as "annual sales volumes and advertising expenditures by year" (extent/strength of use), not "all profit-and-loss statements."
  • Mine early leads: pleadings/answer, initial disclosures, USPTO file histories, public corporate info, and records of related disputes.
  • Sequence the devices: serve interrogatories + RFPs together early; use the responses to target RFAs; reserve any depositions for last.
  • Calendar backward from the close: requests must be served at least 31 days before the close of discovery so responses fall due in time (Estudi Moline Dissey), and that deadline is not extended for weekends/holidays.

WHY / traps. Proportionality is measured against what you put in issue—a broadly pleaded case invites broad discovery, but a narrow registrability question will see expansive ESI reined in. The 31-day rule has caught careful lawyers; do not serve discovery on the last day of the period.

Phase 4 — Use the written devices within the caps

  • Interrogatories (75 incl. subparts; 30-day responses): identify witnesses/custodians, first-use dates, trade channels, licensees, enforcement efforts, and existing documents; use contention interrogatories late to pin down theories.
  • Requests for production (75 incl. subparts): target mark-adoption/clearance files, specimens and use evidence, sales/marketing records, communications, title/license/quality-control documents, and surveys/prior proceedings.
  • Requests for admission (75 incl. subparts, plus one extra request to authenticate any number of produced documents): authenticate documents, establish background facts, and concede priority/use/DuPont elements.
  • Avoid requests for "all" documents on a broad topic; use a robust definitions-and-instructions section so defined terms do the work.
  • Do not ask a party to admit a pure legal conclusion (e.g., "likelihood of confusion"); ask for the underlying facts.
  • Count subparts conservatively; seek a stipulation early if you genuinely need more (a stipulated increase still needs Board approval; a decrease does not).

WHY / traps. The most dangerous Rule 36 feature: a matter is deemed admitted if no timely response is served—automatically, with no motion to compel. Calendar RFA deadlines with particular care. The one bonus authentication request does not count against the cap; use it.

Phase 5 — Depositions, non-parties, and confidentiality

  • Take discovery depositions (limit 10 per side; Board leave for more), noticed and taken within the discovery period.
  • Use a Rule 30(b)(6) notice to bind the organization on first use, channels, clearance, mark selection, confusion, and enforcement.
  • For foreign witnesses, expect deposition on written questions (Rule 31) absent stipulation or good cause.
  • For non-parties, obtain a Rule 45 subpoena from the U.S. district court where the discovery occurs (the Board does not issue or enforce them)—budget extra time.
  • Rely on the standard protective order (automatic under 37 C.F.R. § 2.116(g)); designate "Confidential" or "AEO" sparingly and file confidential evidence redacted/under seal.

WHY / traps. Do not over-designate—marking everything "Attorneys' Eyes Only" damages credibility. Keep the discovery deposition distinct from the later testimony deposition/declaration: a discovery deposition is not automatically trial evidence and must be qualified (e.g., by notice of reliance for an adverse party).

Phase 6 — Compel, supplement, and build the trial record

  • Meet and confer in good faith and document every step before any motion to compel (37 C.F.R. § 2.120(f); the requirement is enforced).
  • File any motion to compel before the moving party's first-testimony-period pretrial-disclosure deadline.
  • Note that filing a motion to compel/test sufficiency/for a protective order generally suspends the proceeding as to unrelated matters (but does not toll outstanding response deadlines).
  • Serve something timely (even objections) to avoid waiving objections if a motion to compel is later granted.
  • Honor the continuing duty to supplement (Rule 26(e)); review responses before the close of fact discovery and again before trial.
  • Map each intended DuPont factor to specific evidence, and introduce it at trial by testimony and notice of reliance.
  • Handle expert disclosure so the deadline falls before the close of discovery (it cannot be stipulated past it); plan survey work early.

WHY / traps. A party that fails to respond at all, then loses a motion to compel, may forfeit its objections on the merits. Because there is no live cross-examination of the opposing party before the fact-finder, the admissions and documents you obtain in discovery are a large part of the evidentiary record—discovery is, in many TTAB cases, the trial.

Common mistakes

  • Treating the conference and disclosures as formalities (barring a later motion to compel or precluding evidence).
  • Drafting an over-limit set on the obsolete "unlimited RFPs/RFAs" assumption.
  • Missing the 31-day-before-close service rule.
  • Drafting "all documents relating to…" requests that draw overbreadth objections.
  • Missing an RFA deadline and suffering automatic deemed admissions.
  • Confusing the discovery deposition with the testimony deposition.
  • Filing a motion to compel without a documented meet-and-confer.
  • Building expansive ESI demands a registrability case cannot justify.

Primary authority

  • Rules: 37 C.F.R. § 2.120 (discovery); § 2.116(g) (standard protective order); § 2.119 (service); § 2.196 (computing time); Fed. R. Civ. P. 26–37, 45.
  • TBMP: Chapters 400 (disclosures/discovery) and 500 (motions); §§ 401–414, 523–524, 405.03(d) (subparts), 407.05 (authentication).
  • Cases: Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 U.S.P.Q.2d 1268 (T.T.A.B. 2017) (31-day rule); Domond v. 37.37, Inc., 113 U.S.P.Q.2d 1264 (T.T.A.B. 2015); Frito-Lay N. Am., Inc. v. Princeton Vanguard LLC, 100 U.S.P.Q.2d 1904 (T.T.A.B. 2011).
  • Framework: In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (DuPont factors).
  • Systems: ESTTA and TTABVUE at uspto.gov.

Stated as amended through the 2017 rules; verify current 37 C.F.R. Part 2 and TBMP guidance before relying on any limit or deadline.

Related resources

This checklist is general information, not legal advice. TTAB discovery is governed by the Trademark Rules and the TBMP and turns on specific facts; consult qualified trademark counsel.