A Strategic Manual for Trademark Practitioners and Pro Se Parties in Trademark Trial and Appeal Board Proceedings
This comprehensive guide provides trademark practitioners with strategic frameworks and practical tools for conducting effective discovery in Trademark Trial and Appeal Board (TTAB) proceedings, covering the specialized use of interrogatories, requests for production, and requests for admissions in trademark disputes. The guide emphasizes TTAB-specific considerations including compressed timelines, proportionality requirements, and trademark law issues such as likelihood of confusion, priority of use, and descriptiveness that drive discovery strategy. It offers detailed sample discovery requests tailored to opposition and cancellation proceedings, along with strategic guidance for issue-driven discovery planning that maximizes efficiency while minimizing costs. The manual addresses common pitfalls in TTAB discovery practice and provides best practices for drafting, responding to, and enforcing discovery obligations in the administrative trademark context. Practitioners will gain practical skills for managing electronic discovery, handling confidential information, and coordinating discovery tools to build compelling cases for trademark registration disputes.
TTAB discovery, trademark litigation, interrogatories, requests for production, requests for admissions, opposition proceedings, cancellation proceedings, likelihood of confusion, priority of use, trademark registration, Federal Rules of Civil Procedure, electronic discovery, trademark law, USPTO, proportionality, discovery strategy, mark adoption, use in commerce, descriptiveness, abandonment, DuPont factors, trademark enforcement, administrative proceedings, discovery planning, document authentication, privilege protection, confidentiality agreements, settlement strategy, cost management, timeline management, trademark practitioners
The Trademark Trial and Appeal Board (TTAB) is an administrative tribunal within the United States Patent and Trademark Office that decides disputes involving trademark registrations and applications. While the TTAB is not a federal court, it conducts trial-like proceedings that include discovery phases governed by the Federal Rules of Civil Procedure, as modified by the TTAB's own rules found in 37 C.F.R. § 2.120.
Discovery in TTAB proceedings serves the same fundamental purposes as in federal court litigation: to enable parties to gather facts, identify evidence, and prepare their cases effectively. However, TTAB discovery has unique characteristics that distinguish it from typical federal court discovery. These proceedings are generally more streamlined, cost-effective, and focused specifically on trademark issues such as likelihood of confusion, priority of use, descriptiveness, and abandonment.
Understanding TTAB discovery is crucial for trademark practitioners because these proceedings often determine valuable trademark rights that can significantly impact business operations. Unlike federal court trademark litigation, which may involve damages and injunctive relief, TTAB proceedings focus solely on the registrability of marks and rights to registration. This narrow focus allows for more targeted and efficient discovery practices.
The stakes in TTAB proceedings can be substantial. A successful opposition or cancellation can prevent a competitor from obtaining trademark registration, while a successful defense can secure valuable federal trademark rights. These outcomes directly affect businesses' ability to protect their brands, expand into new markets, and enforce their intellectual property rights.
TTAB discovery differs from federal court discovery in several important ways. First, the scope is generally narrower, focusing on issues relevant to trademark registrability rather than broader commercial disputes. Second, the timeline is typically shorter, with standard discovery periods of six months (though extensions are common). Third, the costs are generally lower, as TTAB proceedings don't involve jury trials or extensive motion practice. Finally, the TTAB encourages efficiency and proportionality, making strategic discovery planning even more critical.
The TTAB follows the Federal Rules of Civil Procedure for discovery, but with important modifications outlined in 37 C.F.R. § 2.120. Understanding this framework is essential for effective discovery practice in trademark disputes.
TTAB proceedings follow a structured timeline with specific periods for different phases. The standard discovery period is six months, beginning 30 days after the answer is filed (in opposition proceedings) or after the petition is filed (in cancellation proceedings). This period can be extended by stipulation of the parties or by Board order, and extensions are routinely granted when parties demonstrate good cause.
The discovery period is divided into several phases. Initial disclosures, while not required under TTAB rules, are often beneficial for setting the foundation of each party's case. The main discovery period allows for interrogatories, document requests, and requests for admissions. Expert discovery, if needed, typically occurs during the latter part of the discovery period. Finally, discovery must be completed before the testimony period begins.
The scope of discovery in TTAB proceedings is governed by Federal Rule 26(b)(1), which permits discovery of any matter that is relevant to any party's claim or defense and proportional to the case. In trademark disputes, this typically encompasses:
Use-based evidence: Documentation of when, where, and how parties have used their marks in commerce. This includes sales records, advertising materials, promotional campaigns, and evidence of consumer recognition.
Priority evidence: Materials establishing the dates and extent of first use in commerce, including prototype development, internal communications about mark adoption, and early commercial activities.
Likelihood of confusion factors: Evidence relevant to the DuPont factors used to analyze likelihood of confusion, including mark similarity, goods/services relatedness, trade channel overlap, and consumer sophistication.
Descriptiveness and distinctiveness: Evidence regarding whether marks are merely descriptive of goods/services or have acquired distinctiveness through use, including consumer surveys, advertising expenditures, and recognition studies.
Abandonment claims: Documentation of continuous use, intent to resume use, and circumstances surrounding any periods of non-use.
The TTAB permits the same discovery tools available in federal court, with some practical limitations. Interrogatories are limited to 75 in number, including subparts, though this limit can be modified by stipulation or Board order. Document requests have no numerical limit but must be proportional and relevant. Requests for admissions are unlimited in number but must be used strategically to avoid overwhelming the opposing party.
Depositions are available but less commonly used in TTAB proceedings due to cost considerations and the availability of testimony depositions during the testimony period. When depositions are taken during discovery, they are typically limited to key witnesses or expert witnesses.
The TTAB also permits some unique discovery practices. For example, parties can serve notice to produce documents or things for inspection during testimony depositions. Additionally, the TTAB's streamlined procedures often make informal discovery cooperation more feasible and cost-effective than in federal court.
Electronic discovery (e-discovery) in TTAB proceedings follows the same general principles as federal court litigation but tends to be more proportionate to the stakes involved. The TTAB expects parties to meet and confer about e-discovery issues early in the case and to use reasonable methods for preservation, collection, and production of electronically stored information.
Given that many trademark disputes involve modern businesses with substantial digital footprints, e-discovery planning is crucial. This includes identifying relevant data sources (email systems, social media accounts, website analytics, sales databases), implementing litigation holds, and agreeing on search terms and production formats.
The proportionality requirement is particularly important in TTAB e-discovery. Because TTAB proceedings typically involve lower stakes than federal court litigation, parties must balance the value of potential evidence against the costs of obtaining it. The Board will not hesitate to limit discovery that appears disproportionate to the case's importance.
Interrogatories are written questions that must be answered under oath within 30 days of service. In TTAB proceedings, interrogatories serve several critical functions: establishing basic facts about mark use, identifying key witnesses and documents, understanding the opposing party's theories, and creating a foundation for further discovery.
Establishing Priority and Use: In trademark disputes, priority of use is often decisive. Interrogatories can establish when and how a party first used its mark, the geographic scope of that use, and the continuity of use. These questions form the backbone of many trademark cases.
Understanding Market Conditions: Trademark law considers market realities, including how consumers perceive marks and whether confusion is likely in actual market conditions. Interrogatories can explore trade channels, customer bases, marketing strategies, and competitive landscapes.
Identifying Evidence Sources: Effective interrogatories identify witnesses, documents, and other evidence that will be crucial to the case. This includes current and former employees, customers, distributors, advertising agencies, and third-party vendors.
Narrowing Issues: Well-crafted interrogatories can eliminate disputed facts or narrow the scope of disagreement, making the case more manageable and potentially facilitating settlement.
Mark Adoption and Use History
Understanding how and when parties adopted their marks is fundamental to most trademark disputes. Effective interrogatories explore the decision-making process behind mark selection, including consideration of alternatives, clearance searches, and awareness of competing marks.
Sample interrogatory: "Describe in detail all circumstances surrounding your adoption of the mark [MARK], including: (a) the date you first conceived of using the mark; (b) all persons involved in selecting the mark; (c) all alternative marks considered; (d) all trademark searches conducted; (e) all legal advice received regarding the mark's availability; and (f) all reasons for selecting this particular mark."
Commercial Use Details
The scope and nature of commercial use directly impacts trademark rights. Interrogatories should explore not just dates of use, but the quality, extent, and continuity of that use.
Sample interrogatory: "For each year from [DATE] to present, state: (a) your gross sales of goods/services under the mark [MARK]; (b) the number of customers who purchased such goods/services; (c) the geographic areas where such goods/services were sold; (d) the marketing channels used; and (e) the advertising expenditures for the mark."
Likelihood of Confusion Evidence
Since likelihood of confusion is central to many TTAB proceedings, interrogatories should explore factors that courts consider in confusion analysis, including actual confusion instances, customer sophistication, and market overlap.
Sample interrogatory: "Identify all instances of actual confusion between your mark [MARK] and any other mark, including: (a) the date and circumstances of each instance; (b) the identity of confused persons; (c) all documents relating to such confusion; and (d) any measures taken to address the confusion."
Corporate and Business Structure
Understanding corporate relationships can reveal priority issues, licensing arrangements, and ownership questions that affect trademark rights.
Sample interrogatory: "Identify all entities that have used, licensed, or claimed rights in the mark [MARK], including: (a) parent companies, subsidiaries, and affiliates; (b) licensees and franchisees; (c) the nature and duration of any licensing arrangements; and (d) all assignment or transfer documents."
Precision and Clarity: Interrogatories must be clear enough that any reasonable person could understand what information is being sought. Ambiguous questions lead to evasive answers and potential disputes.
Logical Organization: Group related interrogatories together and present them in a logical sequence. This makes it easier for the responding party to provide complete answers and helps you analyze the responses.
Time Periods: Specify relevant time periods clearly. In trademark cases, this often includes periods from first conception of the mark through the present, but may focus on specific relevant periods.
Definitions: Include a definitions section that clarifies key terms used throughout the interrogatories. This prevents disputes about meaning and ensures consistent responses.
Subpart Structure: Use subparts effectively to break complex questions into manageable components. This makes it harder for parties to provide incomplete answers while staying within numerical limits.
Overly Broad Questions: Questions that seek "all information" about a topic are likely to generate objections and incomplete responses. Be specific about what you need to know.
Premature Legal Conclusions: Don't ask parties to admit legal conclusions (like likelihood of confusion) in interrogatories. Save legal conclusions for requests for admissions or argument.
Failure to Consider Timing: Some information may not exist at certain times. Frame questions to account for the evolution of businesses and market conditions.
Ignoring Proportionality: In TTAB proceedings, discovery must be proportional to the stakes involved. Excessive interrogatories may lead to protective orders or sanctions.
Document discovery often provides the most compelling evidence in trademark disputes. Unlike witness testimony, which can be selective or self-serving, contemporaneous documents typically provide reliable evidence of parties' actual conduct, knowledge, and intentions.
Objective Evidence: Documents created in the ordinary course of business provide objective evidence of facts that witnesses might forget, misremember, or characterize differently.
Timeline Establishment: Documents often contain dates and sequences that are crucial for establishing priority and use timelines in trademark disputes.
Intent Evidence: Internal communications can reveal parties' knowledge of competing marks, intent behind mark selection, and awareness of potential confusion issues.
Market Evidence: Documents such as sales records, customer communications, and competitive analyses provide evidence of market conditions and consumer perceptions.
Corporate and Formation Documents
These documents establish entity structure, ownership, and relationships that may affect trademark rights.
Sample request: "All corporate formation documents, including articles of incorporation, bylaws, operating agreements, partnership agreements, and amendments thereto."
Trademark-Related Documents
This category encompasses all documents directly related to the marks in dispute, including applications, registrations, searches, and legal advice.
Sample request: "All trademark applications, registrations, search reports, and legal opinions relating to the mark [MARK] or any confusingly similar mark."
Use and Commercial Activity Evidence
Documents proving use in commerce are central to most trademark disputes. This includes sales records, invoices, advertising materials, and promotional campaigns.
Sample request: "All documents evidencing use of the mark [MARK] in commerce from [DATE] to present, including but not limited to: (a) sales records and invoices; (b) advertising and promotional materials; (c) packaging and labeling; (d) website screenshots; (e) social media posts; and (f) press releases."
Communications About Marks
Internal and external communications often provide crucial evidence about mark adoption, use strategies, and awareness of competing marks.
Sample request: "All communications (including emails, letters, memoranda, and text messages) relating to: (a) adoption of the mark [MARK]; (b) clearance or availability of the mark; (c) competing or similar marks; and (d) likelihood of confusion with any other mark."
Financial and Business Records
Financial documents support claims about extent of use, investment in marks, and commercial success.
Sample request: "All financial documents relating to goods/services sold under the mark [MARK], including profit and loss statements, sales reports, marketing budgets, and advertising expenditures."
Customer and Market Research
Documents showing consumer perception and market research are particularly valuable in likelihood of confusion and distinctiveness analyses.
Sample request: "All market research, consumer surveys, focus group reports, and studies relating to the mark [MARK] or consumer perception of goods/services sold under the mark."
Specificity vs. Breadth: Balance specificity with comprehensiveness. Requests should be specific enough to avoid objections for vagueness but broad enough to capture all relevant documents.
Time Limitations: Specify relevant time periods, but consider that relevant events may span many years in trademark disputes. Priority claims may require documents going back to the earliest claimed use dates.
Format Specifications: In the digital age, specify desired production formats. Request production in native format when appropriate, and consider whether metadata is necessary.
Definitions and Instructions: Include clear definitions of key terms and specific instructions about document retention, privilege logs, and redaction protocols.
Organization Requirements: Request that documents be produced as they are kept in the ordinary course of business, or organized by category to facilitate review.
Proportionality Considerations: E-discovery in TTAB proceedings must be proportional to the stakes involved. Consider whether extensive electronic discovery is justified by the potential value of the trademark rights at issue.
Common ESI Sources: Focus on likely sources of relevant ESI, including email systems, shared drives, customer relationship management systems, accounting software, and social media accounts.
Search Term Negotiations: Develop reasonable search terms collaboratively with opposing counsel. Focus on terms likely to identify relevant communications and documents without excessive over-inclusive results.
Cost Allocation: Consider whether requesting parties should bear some costs of extensive electronic discovery, particularly when requesting detailed searches of large databases.
Attorney-Client Privilege: Be prepared for privilege claims, particularly regarding communications with trademark counsel about clearance, prosecution, and enforcement.
Work Product Protection: Litigation-related documents prepared in anticipation of the TTAB proceeding may be protected work product.
Confidentiality Designations: Many trademark-related documents contain competitively sensitive information. Establish appropriate confidentiality protocols early in the case.
Third-Party Documents: Consider whether relevant documents are held by third parties, such as advertising agencies, distributors, or licensees, and whether third-party discovery is necessary.
Requests for admissions are perhaps the most underutilized discovery tool in trademark disputes, yet they can be among the most powerful. Unlike interrogatories (which seek information) and document requests (which seek evidence), requests for admissions seek to establish facts that will not need to be proven at trial.
Narrowing Trial Issues: By obtaining admissions of basic facts, parties can focus trial testimony on genuinely disputed issues rather than spending time proving undisputed background facts.
Establishing Foundation: Admissions can establish foundational facts necessary for other evidence, such as authenticating documents or establishing corporate relationships.
Cost Reduction: Facts that are admitted don't need to be proven through witness testimony or documentary evidence, reducing the time and cost of trial preparation.
Settlement Leverage: Strategic admissions can strengthen settlement positions by eliminating defenses or establishing key facts that favor your client's case.
Authenticity of Documents
Document authentication is often routine but time-consuming. Requests for admissions can streamline this process.
Sample request: "Admit that the document attached as Exhibit A is a true and correct copy of your trademark application Serial No. [NUMBER] filed with the USPTO on [DATE]."
Corporate and Entity Facts
Basic corporate facts are rarely disputed but must be established for the record.
Sample request: "Admit that you are a [STATE] corporation with its principal place of business in [CITY, STATE]."
Timeline and Date Facts
Specific dates are often critical in trademark disputes but may not be genuinely disputed.
Sample request: "Admit that you first used the mark [MARK] in commerce on or after [DATE]."
Use and Commercial Activity Facts
While the extent of use may be disputed, basic facts about use are often undeniable.
Sample request: "Admit that you have used the mark [MARK] in connection with [GOODS/SERVICES]."
Market and Industry Facts
General market conditions and industry practices may be undisputed but relevant to likelihood of confusion analysis.
Sample request: "Admit that [GOODS/SERVICES] are sold primarily through [DISTRIBUTION CHANNELS]."
Ownership and Rights Facts
Basic ownership facts can be established through admissions, simplifying more complex priority disputes.
Sample request: "Admit that you claim trademark rights in the mark [MARK] based on use in commerce beginning [DATE]."
Clarity and Precision: Each request should seek admission of one specific, clearly stated fact. Avoid compound requests that can be partially denied.
Factual Focus: Requests should seek admission of facts, not legal conclusions. Instead of asking a party to admit "likelihood of confusion," ask them to admit specific facts that support or undermine confusion.
Strategic Timing: Consider the timing of requests for admissions. They may be most effective after interrogatories and document discovery have revealed the facts you want to establish.
Reasonable Scope: Focus on facts that are genuinely not in dispute or that the opposing party will have difficulty denying. Unreasonable requests undermine the effectiveness of the entire set.
Cost-Shifting Potential: Remember that if a party unreasonably denies a request for admission, you may be entitled to recover the costs of proving that fact at trial under Federal Rule 37(c).
Building Likelihood of Confusion Elements
Structure requests to establish elements of the DuPont likelihood of confusion test systematically.
Sample requests: - "Admit that your mark [MARK] and [OPPOSING MARK] are similar in appearance." - "Admit that your goods/services and those sold under [OPPOSING MARK] are related." - "Admit that your goods/services and those sold under [OPPOSING MARK] are sold in the same trade channels."
Establishing Priority Elements
Use admissions to establish elements of priority claims without revealing your full strategy.
Sample requests: - "Admit that your first use of [MARK] in commerce occurred after [DATE]." - "Admit that you were aware of [OPPOSING MARK] prior to adopting your mark." - "Admit that you conducted a trademark search before adopting [MARK]."
Undermining Defenses
Strategic admissions can eliminate potential defenses before they are fully developed.
Sample requests: - "Admit that you have never licensed the mark [MARK] to any third party." - "Admit that you have not used the mark [MARK] in connection with [SPECIFIC GOODS/SERVICES]." - "Admit that your mark [MARK] was not in use during the period from [DATE] to [DATE]."
Good Faith Requirements: Parties must respond to requests for admissions in good faith. They cannot deny requests simply to make the requesting party prove obvious facts.
Specific Denials: When denying requests, parties should be specific about what portions they deny and why, rather than providing blanket denials.
Lack of Knowledge: Parties can respond that they lack sufficient knowledge to admit or deny a request, but only after making reasonable inquiry.
Objections: Parties can object to requests that are vague, ambiguous, compound, or seek privileged information, but objections should be specific and well-founded.
TTAB proceedings have unique characteristics that affect discovery strategy and execution. Understanding these TTAB-specific considerations is crucial for effective discovery practice in trademark disputes.
The standard discovery period in TTAB proceedings is six months, but this timeline often requires adjustment based on case complexity and practical considerations. The TTAB routinely grants extensions when parties demonstrate good cause, and most complex cases involve at least one extension of the discovery period.
Extensions may be necessary for several reasons. Complex trademark disputes often involve voluminous document productions that require time to review and analyze. International parties may need additional time to collect documents from foreign offices. Expert discovery, when required, may necessitate additional time for report preparation and deposition scheduling.
When requesting extensions, parties should provide specific reasons and demonstrate that they are making good faith efforts to complete discovery efficiently. The TTAB generally accommodates reasonable extension requests, particularly when parties stipulate to extensions jointly.
Many TTAB proceedings run parallel to USPTO prosecution activities, creating unique timing considerations. For example, an opposition may be filed while the underlying application is still being prosecuted, or a cancellation proceeding may be instituted while the registrant is filing renewal documents.
Discovery must account for these parallel proceedings. Documents and communications relating to prosecution may be highly relevant to TTAB proceedings, particularly regarding claim scope, use evidence, and intent. However, some prosecution-related communications may be privileged or protected work product.
The TTAB has adopted standard protective orders that govern the handling of confidential information in discovery. These protective orders typically allow parties to designate documents and information as "Confidential" or "Attorneys' Eyes Only" when disclosure could harm competitive interests.
Understanding and properly implementing protective order procedures is crucial in trademark disputes, which often involve competitively sensitive information such as sales figures, marketing strategies, customer lists, and business plans. Parties should establish clear protocols for confidentiality designations early in the discovery process.
TTAB proceedings are generally more cost-effective than federal court trademark litigation, but discovery costs can still be substantial. Effective cost management requires strategic focus on the most important evidence and issues.
Consider whether the potential value of the trademark rights justifies extensive discovery. Focus discovery on the elements most likely to be decisive in the case. Use informal discovery cooperation where possible to reduce formal discovery costs. Consider whether some issues can be resolved through stipulations rather than extensive discovery.
Expert testimony is less common in TTAB proceedings than in federal court, but it may be necessary in certain cases involving survey evidence, market analysis, or technical issues. When expert discovery is required, it typically occurs during the latter part of the discovery period.
Expert discovery in trademark cases often involves consumer confusion surveys, market research analysis, or industry custom and practice evidence. Plan expert discovery early, as experts often require substantial time to complete their analysis and prepare reports.
Effective discovery in trademark disputes requires strategic planning that accounts for the specific legal issues, factual disputes, and practical considerations unique to each case. Unlike general commercial litigation, trademark disputes involve specialized legal concepts that should guide discovery strategy.
Likelihood of Confusion Cases
When likelihood of confusion is the central issue, discovery should systematically address each DuPont factor. The similarity of marks may be apparent from the marks themselves, but evidence about the other factors requires careful discovery planning.
Focus on evidence regarding: the similarity of goods/services and their marketing channels; the conditions under which purchases are made; the sophistication of purchasers; actual confusion evidence; the length of time and conditions under which the marks have coexisted without confusion; the variety and nature of similar marks in use for similar goods/services.
Priority Disputes
Priority-based cases require meticulous attention to use evidence and timing. Discovery should establish not just dates of use, but the quality and scope of that use.
Focus on: the exact nature of first use in commerce; the continuity of use since first use; the geographic scope of use; evidence supporting claimed use dates; any gaps or interruptions in use; the bona fides of claimed use dates.
Descriptiveness and Distinctiveness
Cases involving descriptiveness challenges or acquired distinctiveness claims require evidence about consumer perception and market recognition.
Focus on: evidence of the mark's descriptive or non-descriptive nature; proof of acquired distinctiveness through use; consumer recognition and association; advertising expenditures and marketing efforts; third-party use of similar terms; industry practices regarding terminology.
Abandonment Claims
Abandonment cases require evidence about intent and actual use patterns over time.
Focus on: periods of non-use; intent to resume use; steps taken to maintain or resume use; circumstances causing any interruption in use; assignments or licensing that might affect continuity.
Effective trademark discovery requires coordinated use of interrogatories, document requests, and admissions. Each tool serves different purposes, and they work best when used in combination.
Start with interrogatories to understand basic facts, identify key witnesses, and locate important documents. Use document requests to obtain the specific evidence identified through interrogatories. Follow up with requests for admissions to establish undisputed facts and narrow trial issues.
Consider the timing and sequence of discovery carefully. Initial interrogatories should be broad enough to identify all relevant evidence but specific enough to provide useful information. Document requests should be tailored based on interrogatory responses. Requests for admissions are often most effective after document discovery reveals the facts you want to establish.
Many trademark disputes involve parties or evidence from multiple jurisdictions, creating special discovery challenges and opportunities.
Foreign entities may have documents in non-English languages that require translation. Consider whether key documents need professional translation or whether rough translations are sufficient for discovery purposes. Factor translation time and costs into discovery planning.
Different countries have different document retention practices and privacy laws that may affect evidence availability. Plan early for potential complications in obtaining evidence from foreign sources.
Consider whether foreign use or registration evidence is relevant to your case. Even if foreign use doesn't establish priority in the United States, it may be relevant to likelihood of confusion or other issues.
Modern trademark disputes increasingly involve digital evidence that requires specialized e-discovery planning.
Website evidence is often crucial but can be ephemeral. Plan for capturing and authenticating website content, including archived versions that may no longer be available online. Consider using professional website archiving services for important evidence.
Social media evidence is increasingly important in trademark disputes. Plan for collecting and authenticating social media posts, profiles, and advertising. Consider privacy settings and access issues that may complicate social media discovery.
Digital marketing evidence, including search engine advertising, online analytics, and e-commerce data, may provide crucial evidence about use patterns, consumer behavior, and market overlap.
Effective discovery planning requires realistic budgeting and resource allocation. TTAB proceedings are generally more cost-effective than federal court litigation, but discovery costs can still be substantial in complex cases.
Prioritize discovery based on the likelihood that evidence will be decisive to the outcome. Focus resources on the most important issues and evidence sources. Consider whether some evidence can be obtained through informal cooperation rather than formal discovery.
Plan for the most expensive aspects of discovery, such as electronic discovery processing, expert witness fees, and deposition costs. Consider whether these expenses are justified by the potential value of the trademark rights at stake.
Understanding common mistakes in TTAB discovery can help practitioners avoid costly errors and develop more effective discovery strategies. These pitfalls are particularly common for attorneys new to trademark practice or TTAB proceedings.
Over-Discovery: One of the most common mistakes is treating TTAB discovery like complex federal court litigation. The stakes in TTAB proceedings are generally lower than in federal court damage actions, and discovery should be proportional to those stakes.
Avoid requesting every conceivable document or asking interrogatories about every possible issue. Focus on evidence that is likely to be decisive to the outcome. Consider whether the cost of obtaining marginal evidence is justified by its potential value.
Under-Discovery: Conversely, some practitioners fail to conduct adequate discovery, missing crucial evidence that could determine the outcome. This is particularly dangerous in priority disputes where comprehensive use evidence is essential.
Ensure that discovery is comprehensive enough to support your claims and defenses. Don't assume that your client has provided you with all relevant information. Use discovery to verify and supplement your client's initial disclosures.
Late Discovery Planning: Waiting until the discovery period begins to plan discovery strategy is a common mistake that can be costly and ineffective.
Begin discovery planning as soon as the case is filed. Identify key issues, potential evidence sources, and discovery priorities early. Prepare discovery requests in advance so they can be served promptly when the discovery period begins.
Failure to Meet and Confer: The TTAB expects parties to cooperate in discovery and resolve disputes informally when possible. Failure to meet and confer before filing discovery motions can result in sanctions.
Establish communication protocols with opposing counsel early in the case. Address discovery disputes promptly and document your meet-and-confer efforts. Consider using informal discovery cooperation to reduce costs and streamline the process.
Irrelevant Discovery: Focusing discovery on issues that aren't relevant to trademark law is a waste of time and resources.
Understand the elements of your claims and defenses before planning discovery. Focus on evidence that relates to likelihood of confusion, priority, descriptiveness, or other relevant trademark law concepts. Avoid discovery that would be relevant in other types of commercial disputes but isn't pertinent to trademark issues.
Missing Key Evidence Categories: Failing to discover crucial evidence categories can be fatal to trademark claims.
Ensure that discovery addresses all relevant aspects of mark use, including first use dates, continuity of use, geographic scope, and commercial success. Don't overlook evidence about industry practices, third-party marks, or consumer perception that may be relevant to your case.
Inadequate Document Requests: Vague or overly narrow document requests may miss crucial evidence.
Draft document requests that are specific enough to avoid objections but comprehensive enough to capture all relevant evidence. Consider the various forms that relevant evidence might take, including digital communications, marketing materials, and business records.
Poor ESI Handling: Inadequate electronic discovery procedures can result in lost evidence or excessive costs.
Implement appropriate litigation holds early in the case. Work with opposing counsel to establish reasonable ESI protocols. Consider the proportionality of electronic discovery to the stakes involved in the TTAB proceeding.
Inadequate Objections: Failing to object properly to improper discovery requests can waive important rights.
Review discovery requests carefully and object to any that are vague, overly broad, seek privileged information, or are otherwise improper. Make specific objections rather than boilerplate responses.
Incomplete Responses: Providing incomplete responses to proper discovery requests can result in sanctions and undermine your case.
Ensure that discovery responses are complete and accurate. Don't assume that partial responses are adequate. If you cannot provide complete information, explain why and provide what information you can.
Revealing Case Strategy: Discovery responses that reveal too much about your case strategy can give opponents unfair advantages.
While discovery responses must be complete and accurate, they don't need to provide advocacy or reveal your legal theories. Focus on providing factual information without telegraphing your strategic approach.
Failing to Use Discovery Offensively: Some practitioners focus only on responding to discovery without using discovery requests to advance their own case.
Use discovery strategically to gather evidence supporting your claims and undermining your opponent's case. Don't just respond to discovery; actively use discovery tools to build your case.
Responding to discovery requests requires careful attention to both procedural requirements and strategic considerations. Poor discovery responses can damage your case, while strategic responses can advance your position and limit your opponent's options.
Under Federal Rule 26, parties have a duty to respond to discovery requests completely and in good faith. This obligation extends beyond simply answering questions to ensuring that responses are accurate, complete, and provided in good faith.
Completeness Requirement: Responses must address all parts of discovery requests. If a request has multiple subparts, each subpart must be addressed separately. Partial responses are generally inadequate unless the requesting party agrees otherwise.
Accuracy Obligation: All responses must be accurate to the best of the responding party's knowledge. This requires reasonable investigation, not just relying on immediately available information.
Good Faith Standard: Parties cannot provide evasive or misleading responses, even if they are technically accurate. The goal should be to provide the information the requesting party legitimately needs.
Ongoing Duty: Discovery responses create an ongoing duty to supplement if the responding party later discovers that a response was incomplete or incorrect when made.
Specific Objections: Objections must be specific rather than boilerplate. Generic objections like "overly broad" or "unduly burdensome" are generally insufficient unless they explain why the specific request is problematic.
Privilege Objections: Claims of privilege must be specific and supported by a privilege log that identifies the document, the privilege claimed, and the basis for the privilege claim.
Proportionality Objections: In TTAB proceedings, proportionality objections can be particularly effective given the generally lower stakes compared to federal court litigation. When making proportionality objections, specifically explain why the burden of responding exceeds the potential value of the information sought.
Protective Objections: Object to requests seeking confidential or competitively sensitive information while offering to produce the information under an appropriate protective order.
Timing and Sequencing: Consider the timing of your responses in relation to your own discovery requests. Sometimes delaying responses (within permissible limits) can provide strategic advantages if you expect to receive helpful information from your own discovery.
Partial Production Strategy: When objecting to overly broad requests, consider offering to produce responsive documents for a more limited time period or scope. This demonstrates good faith while limiting the burden of production.
Privilege Considerations: Develop a consistent approach to privilege claims, particularly regarding communications with trademark counsel. Over-claiming privilege can damage credibility, while under-claiming can waive important protections.
Use Evidence Responses: When responding to questions about mark use, provide specific, detailed information that supports your claims. Vague responses about "continuous use" are less helpful than specific information about sales volumes, geographic scope, and marketing activities.
Example response: "Applicant first used the mark SUNRISE COFFEE in commerce on January 15, 2018, in connection with the sale of coffee beans to retail customers at Applicant's store located at 123 Main Street, Springfield, Illinois. Since that date, Applicant has continuously used the mark in connection with the retail sale of coffee beans and related beverages, with annual sales ranging from $50,000 in 2018 to $150,000 in 2023."
Priority Evidence Responses: Priority responses should be precise about dates and circumstances. Avoid hedging language that might undermine your priority claims, but ensure accuracy in all statements.
Confusion Evidence Responses: When asked about actual confusion, provide complete information about any confusion incidents while maintaining appropriate confidentiality for customer information.
Financial Information Responses: Trademark cases often require disclosure of financial information related to mark use. Consider seeking protective order treatment for sensitive financial data while providing the information necessary to support your claims.
Organization and Indexing: Produce documents in a logical organization that facilitates review. Consider providing an index or summary of major document categories to assist opposing counsel and demonstrate cooperation.
Metadata Considerations: Understand what metadata you're producing and whether it might contain privileged or sensitive information. Consider whether native format production is necessary or whether PDF production is adequate.
Confidentiality Designations: Apply confidentiality designations consistently and reasonably. Over-designating documents as confidential can damage credibility and create unnecessary disputes.
Authentication Facilitation: Consider providing authentication information with document productions to facilitate their use at trial. This can include affidavits from custodians or stipulations about document authenticity.
While the TTAB encourages cooperation and informal resolution of discovery disputes, enforcement mechanisms are available when parties fail to comply with discovery obligations. Understanding these enforcement tools is crucial for both compelling adequate discovery responses and avoiding sanctions for discovery violations.
The TTAB has broad authority to enforce discovery obligations and impose sanctions for discovery violations. This authority derives from Federal Rule 37, which the TTAB applies in trademark proceedings with appropriate modifications for the administrative context.
Meet and Confer Requirements: Before seeking Board intervention in discovery disputes, parties must make good faith efforts to resolve disputes informally. The TTAB expects detailed documentation of meet-and-confer efforts and may deny motions that don't demonstrate adequate attempts at informal resolution.
Motion Practice: Discovery enforcement typically requires motion practice, with specific procedures for different types of discovery violations. The TTAB's motion practice is generally more streamlined than federal court practice, but proper procedure must be followed.
Proportionality Considerations: The TTAB applies proportionality analysis more strictly than many federal courts, given the generally lower stakes in trademark registration disputes compared to damage actions.
Failure to Respond: When parties fail to respond to discovery requests entirely, the TTAB can compel responses and award expenses incurred in bringing the motion to compel.
Inadequate Responses: Evasive or incomplete responses can be treated as failures to respond, justifying motions to compel and potential sanctions.
Document Production Failures: Failures to produce requested documents can result in orders compelling production, sanctions for spoliation, and adverse inferences about the content of missing documents.
Privilege Abuse: Overbroad privilege claims can result in orders requiring production and fee awards to the requesting party.
Monetary Sanctions: The TTAB can award reasonable expenses, including attorney fees, incurred as a result of discovery violations. This is often the most common sanction in TTAB proceedings.
Discovery Sanctions: The Board can order additional discovery, extend discovery periods, or limit the scope of discovery as appropriate to remedy violations.
Evidentiary Sanctions: In serious cases, the TTAB can exclude evidence, limit testimony, or draw adverse inferences from discovery violations.
Case-Dispositive Sanctions: In extreme cases involving willful violations or bad faith conduct, the TTAB can enter default judgment or dismiss proceedings entirely.
Proactive Communication: Maintain open communication with opposing counsel about discovery issues and potential problems. Early identification of issues often allows for resolution without Board intervention.
Good Faith Compliance: Make genuine efforts to comply with discovery obligations, even when facing practical difficulties. The TTAB is generally understanding of good faith efforts that fall short of complete compliance.
Timely Problem Identification: If compliance problems arise, notify opposing counsel promptly and propose reasonable solutions. Don't wait until deadlines pass to identify problems.
Documentation: Maintain careful records of discovery efforts, communications with opposing counsel, and any obstacles to compliance. This documentation may be crucial if disputes arise.
ESI Preservation Failures: Given the importance of electronic evidence in modern trademark disputes, failures to implement adequate litigation holds can result in serious sanctions.
Survey Evidence Issues: When consumer surveys are involved, discovery violations regarding survey methodology or underlying data can be particularly damaging.
Financial Information Disputes: Disagreements about the scope of required financial disclosure are common in trademark cases and require careful handling to avoid sanctions.
International Evidence Complications: When evidence is located in foreign jurisdictions, practical complications may arise that require careful explanation to avoid sanctions for non-compliance.
The following sample discovery requests illustrate effective techniques for different types of trademark disputes. These samples should be adapted based on the specific facts and legal issues in each case.
Background and Corporate Information
Interrogatory No. 1: "State the full legal name under which you conduct business, your form of organization (corporation, partnership, LLC, etc.), the state or country of organization, your principal place of business, and all other names under which you have conducted business at any time."
Interrogatory No. 2: "Identify all parent companies, subsidiaries, affiliates, predecessors, successors, licensees, and franchisees that have used or claimed rights in the mark [OPPOSED MARK] or any confusingly similar mark."
Mark Adoption and Use History
Interrogatory No. 3: "Describe in complete detail all circumstances surrounding your first conception, adoption, and use of the mark [OPPOSED MARK], including: (a) the date you first conceived of the mark; (b) all persons involved in creating or selecting the mark; (c) all reasons for selecting this particular mark; (d) all alternative marks considered; (e) all trademark searches conducted; (f) all legal advice received regarding the mark's availability; and (g) all knowledge of third-party rights in similar marks."
Interrogatory No. 4: "For each year from your first use of [OPPOSED MARK] to the present, state: (a) your total sales revenue from goods/services sold under the mark; (b) the total number of units sold; (c) the total number of customers; (d) all geographic areas where sales occurred; (e) all distribution channels used; (f) total advertising expenditures; and (g) all marketing channels utilized."
Likelihood of Confusion Evidence
Interrogatory No. 5: "Identify all instances of actual confusion between [OPPOSED MARK] and any other mark, including: (a) the date and circumstances of each instance; (b) the identity of all confused persons; (c) all documents relating to such confusion; (d) all actions taken in response to such confusion; and (e) all communications regarding such confusion."
Interrogatory No. 6: "Identify all trademarks, trade names, or commercial designations that you believe are similar to [OPPOSED MARK], including: (a) the mark or designation; (b) the owner; (c) the goods/services; (d) your knowledge of such marks; and (e) any steps taken to investigate potential conflicts."
Category 1: Trademark Documentation
Request No. 1: "All documents relating to the trademark registration that is the subject of this cancellation proceeding, including but not limited to: (a) the original application and all amendments; (b) all correspondence with the USPTO; (c) all attorney files and work papers; (d) all search reports and clearance opinions; (e) all renewal documents; and (f) all assignment or licensing documents."
Category 2: Use Evidence
Request No. 2: "All documents evidencing use of the mark [REGISTERED MARK] in commerce from first use to present, including but not limited to: (a) specimens of use submitted to the USPTO; (b) advertising and promotional materials; (c) packaging, labeling, and product literature; (d) invoices and sales records; (e) website materials and screenshots; (f) press releases and media coverage; and (g) trade show materials and presentations."
Category 3: Abandonment Evidence
Request No. 3: "All documents relating to any cessation, interruption, or discontinuation of use of [REGISTERED MARK], including but not limited to: (a) internal communications about discontinuing use; (b) decisions to stop marketing particular products/services; (c) business closures or restructuring; (d) inventory liquidation; (e) plans to resume use; and (f) communications with customers about product/service availability."
Category 4: Licensing and Assignment
Request No. 4: "All documents relating to any assignment, license, franchise, or other transfer of rights in [REGISTERED MARK], including but not limited to: (a) license agreements and amendments; (b) franchise agreements; (c) assignment documents; (d) quality control procedures and monitoring; (e) royalty payments and reports; and (f) termination or breach notices."
Basic Factual Admissions
Request No. 1: "Admit that you first used the mark [APPLICANT'S MARK] in commerce on [DATE]."
Request No. 2: "Admit that your first use of [APPLICANT'S MARK] in commerce occurred after [OPPOSER'S CLAIMED FIRST USE DATE]."
Request No. 3: "Admit that you were aware of [OPPOSER'S MARK] prior to your first use of [APPLICANT'S MARK]."
Document Authentication
Request No. 4: "Admit that the document attached as Exhibit A is a true and correct copy of your invoice dated [DATE] showing sale of [GOODS] under the mark [APPLICANT'S MARK]."
Request No. 5: "Admit that the document attached as Exhibit B is a true and correct copy of the advertising material you used to promote [GOODS/SERVICES] under [APPLICANT'S MARK] in [YEAR]."
Use and Commercial Activity
Request No. 6: "Admit that your use of [APPLICANT'S MARK] has been limited to [SPECIFIC GEOGRAPHIC AREA]."
Request No. 7: "Admit that you have never used [APPLICANT'S MARK] in connection with [SPECIFIC GOODS/SERVICES]."
Request No. 8: "Admit that your total sales under [APPLICANT'S MARK] from [DATE] to [DATE] were less than $[AMOUNT]."
Knowledge and Intent
Request No. 9: "Admit that you conducted a trademark search before adopting [APPLICANT'S MARK]."
Request No. 10: "Admit that your trademark search revealed the existence of [OPPOSER'S MARK]."
Request No. 11: "Admit that you received legal advice regarding potential conflicts with [OPPOSER'S MARK]."
These sample discovery requests should be adapted based on the specific facts, legal theories, and strategic considerations in each case. Consider the following when adapting samples:
Case-Specific Facts: Modify requests to address the particular facts and circumstances of your case, including specific dates, geographic areas, and industry practices relevant to your dispute.
Legal Theories: Focus discovery on evidence relevant to your specific legal theories, whether based on likelihood of confusion, priority, descriptiveness, abandonment, or other trademark law concepts.
Opponent's Likely Responses: Anticipate potential objections and evasive responses, and craft requests that minimize opportunities for non-responsive answers.
Strategic Priorities: Prioritize discovery that advances your case strategy while being mindful of proportionality and cost considerations in TTAB proceedings.
Effective discovery practice in TTAB trademark proceedings requires a combination of technical knowledge, strategic thinking, and practical experience. The following best practices synthesize the key principles discussed throughout this guide.
Early Case Assessment: Conduct thorough case assessment early in the proceeding to identify key legal issues, factual disputes, and evidence needs. This assessment should drive all subsequent discovery planning.
Issue-Focused Discovery: Organize discovery around the specific legal issues that will determine the outcome of your case. Don't conduct generic discovery that might be appropriate in other types of commercial disputes.
Proportionality Analysis: Continuously evaluate whether discovery efforts are proportional to the stakes involved in the TTAB proceeding. The value of trademark rights at issue should guide the scope and intensity of discovery.
Timeline Management: Develop realistic timelines that account for the compressed schedule typical in TTAB proceedings while ensuring adequate time for thorough discovery.
Clarity and Precision: Draft discovery requests that are clear, specific, and focused on obtaining information that advances your case. Avoid ambiguous language that invites objections or evasive responses.
Logical Organization: Organize discovery requests logically, grouping related topics together and presenting them in a sequence that facilitates complete responses.
Definitions and Instructions: Include comprehensive definitions and clear instructions that eliminate ambiguity and provide guidance for complete responses.
Strategic Sequencing: Sequence different discovery tools to build on each other, using interrogatories to identify evidence sources, document requests to obtain specific evidence, and admissions to establish undisputed facts.
Good Faith Compliance: Respond to discovery requests in good faith, providing complete and accurate information while making appropriate objections to improper requests.
Informal Cooperation: Work cooperatively with opposing counsel to resolve discovery disputes informally when possible, reducing costs and preserving relationships for potential settlement discussions.
Protective Measures: Implement appropriate protective measures for confidential information while ensuring that legitimate discovery needs are met.
Documentation: Maintain careful records of all discovery activities, including requests served, responses received, meet-and-confer efforts, and compliance issues.
Early Planning: Address e-discovery issues early in the case, including preservation obligations, search protocols, and production formats.
Proportionality Focus: Apply proportionality analysis rigorously to e-discovery, ensuring that electronic discovery efforts are justified by the potential value of the information sought.
Cooperation Protocols: Establish cooperative protocols with opposing counsel for handling electronic discovery, including search terms, data formats, and privilege review procedures.
Cost Management: Manage e-discovery costs through strategic planning, reasonable scope limitations, and cooperative approaches with opposing parties.
Multi-Level Review: Implement quality control procedures that include multiple levels of review for discovery requests and responses, ensuring accuracy and completeness.
Client Coordination: Maintain regular communication with clients throughout the discovery process, ensuring that they understand their obligations and provide necessary support.
Privilege Review: Conduct careful privilege review of all document productions, maintaining privilege logs and ensuring that privileged materials are not inadvertently disclosed.
Accuracy Verification: Verify the accuracy of all discovery responses through appropriate investigation and client consultation.
Proactive Communication: Communicate proactively with opposing counsel about potential discovery issues, working to resolve problems before they require Board intervention.
Compliance Monitoring: Monitor compliance with discovery obligations carefully, addressing any problems promptly and thoroughly.
Documentation of Efforts: Document all discovery efforts, meet-and-confer communications, and compliance activities to demonstrate good faith in case disputes arise.
Strategic Enforcement: Use enforcement mechanisms strategically, focusing on discovery violations that significantly impact your ability to prepare your case.
TTAB proceedings are generally more cost-effective than federal court trademark litigation, but discovery costs can still be substantial. Effective cost management requires:
Focused Discovery: Focus discovery on evidence that is likely to be decisive rather than conducting comprehensive discovery on all possible issues.
Informal Cooperation: Use informal discovery cooperation to reduce formal discovery costs while obtaining necessary information.
Technology Efficiency: Use technology efficiently to manage document review, organization, and production while avoiding unnecessary e-discovery expenses.
Strategic Priorities: Prioritize discovery efforts based on their likely impact on case outcome and settlement potential.
Discovery in TTAB trademark proceedings requires specialized knowledge and strategic thinking that combines understanding of trademark law, federal civil procedure, and practical litigation skills. The unique characteristics of TTAB proceedings—including compressed timelines, specialized issues, and proportionality concerns—require adapted approaches that differ from general federal court practice.
Effective TTAB discovery serves multiple purposes: gathering evidence to support claims and defenses, understanding opposing parties' positions and evidence, facilitating informed settlement discussions, and preparing for effective trial presentation. Success requires careful planning, strategic execution, and ongoing adaptation based on developing case circumstances.
The key to effective TTAB discovery lies in understanding that these proceedings are specialized trademark disputes with unique legal standards, practical considerations, and strategic opportunities. Practitioners who master these specialized discovery skills will be better positioned to achieve successful outcomes for their clients in trademark registration disputes.
As trademark law continues to evolve in response to changing business practices and technological developments, discovery practices in TTAB proceedings must also adapt. The principles and practices outlined in this guide provide a foundation for effective discovery practice, but practitioners must remain current with developing law and procedure to serve their clients effectively.
The investment in effective discovery practice pays dividends not only in individual case outcomes but also in developing the expertise and reputation that support successful trademark practices. TTAB proceedings, while specialized, provide valuable opportunities to develop discovery skills that translate to all areas of trademark and intellectual property litigation.
Whether representing major corporations in high-stakes trademark disputes or small businesses protecting their brand identities, effective discovery practice is essential for achieving successful outcomes in TTAB proceedings. The principles, strategies, and techniques outlined in this guide provide the foundation for that success, but effective practice requires ongoing attention to developing law, changing technology, and evolving business practices that shape modern trademark disputes.
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