Initial Disclosures (TTAB)

Summary

These template initial disclosures under TBMP § 401.02 and Fed. R. 26(a) are for use in inter partes TTAB proceedings (opposition, cancellation). This template contains practical guidance and drafting notes.In a TTAB inter partes proceeding, you will be required to make initial disclosures to every other party, by the deadline set in the Trademark Trial and Appeal Board's institution order, no later than thirty days after the opening of the discovery period. The deadline may be reset by stipulation of the parties approved by the Board, by motion granted by the Board, or by order of the Board. See TBMP § 401.02.The provisions of the Federal Rules of Civil Procedure relating to disclosure and discovery apply generally in TTAB proceedings. See 37 C.F.R. § 2.120(a)(1). However, the specific provisions of Fed. R. Civ. P 26(a) relating to initial disclosures apply only in modified form -- Rule 26(a)1(A)(i) (individuals with knowledge) and (A)(ii) (documents that a party may use to support their claims or defenses) apply. Rule26(a)(1)(A)(iii) (damages calculations) and (A)(iv) (insurance) do not. You must make your initial disclosures prior to serving discovery requests on the adverse party. See 37 C.F.R. § 2.120(a)(3). As with the 30-day deadline mentioned above, this prerequisite can be modified by approved stipulation, granted motion, or by Board order. See id. When you serve your initial disclosures, remember to include a Certificate of Service. See TBMP § 113.03; 37 C.F. R § 2.119(a). For details on initial disclosures under Fed. R. Civ. P. 26(a), see Moore's Federal Practice - Civil § 26.22 and Rule 26(a) Initial Disclosure Requirements (Federal). If a party fails to serve timely and sufficient initial disclosures, the adverse party can move to compel initial disclosures, no more than 30 days after the original deadline for the exchange of the disclosures. See TBMP § 523.03; 37 C.F.R. § 2.120(f); see also Luster Products Inc. v. Van Zandt, 2012 TTAB LEXIS 449, 104 U.S.P.Q.2D (BNA) 1877, 1878-79 (Trademark Trial & App. Bd. November 28, 2012) (motion to compel is the available remedy for initial disclosures not served or insufficient). The adverse party may move for sanctions (such as evidence preclusion or dismissal) resulting from the failure to comply with the initial disclosure requirement, but only if the adverse party has first made a timely motion to compel the disclosures. See TBMP § 523; 37 C.F.R. § 2.120(f)(1); see also Kairos Inst. of Sound Healing, LLC v. Doolittle Gardens, LLC , 2008 TTAB LEXIS 61, *4-6 (Trademark Trial & App. Bd. October 17, 2008) (where Opposer had failed to serve initial disclosures until long after the deadline, Board denied Applicant's motion for sanctions, noting that there had been no preceding order from the Board (such as one made after a motion to compel) affirming or reiterating Opposer's obligation to serve its initial disclosures). For more on Rule 26(a) initial disclosures generally, see Rule 26(a) Initial Disclosure Requirements (Federal). For more information on discovery in trademark cases, including relevant practice notes, templates, and checklists, see Trademark Litigation Discovery Resource Kit. For an overview of opposition and cancellation proceedings before the TTAB, see TTAB Proceedings Resource Kit.