Motion for Judgment or Other Discovery Sanctions
(TTAB)

Summary

This motion for discovery sanctions, including judgment, is for use in a proceeding before the Trademark Trial and Appeal Board (TTAB or Board). This template includes practical guidance, drafting notes, and an optional clause. There are several types of discovery sanctions the TTAB can impose on a party, but this template focuses on the first type, namely, when the opposing party fails to comply with a TTAB discovery order. • Failure to comply with a TTAB discovery order. If a party fails to comply with a TTAB discovery order, the TTAB may enter appropriate sanctions, as defined in 37 C.F.R. § 2.120(h)(1). Those sanctions include ''striking all or part of the pleadings of the opposing party; refusing to allow the opposing party to support or oppose designated claims or defenses; prohibiting the opposing party from introducing designated matters in evidence; and entering judgment against the opposing party.'' Trademark Board Manual of Procedure (TBMP) § 527.01(a) citing, inter alia, Benedict v. Super Bakery, Inc., 665 F.3d 1263, 101 USPQ2d 1089, 1093 (Fed. Cir. 2011) (affirming Board's entry of judgment as a discovery sanction for repeated failures to comply with Board's reasonable orders), aff'g 96 USPQ2d 1134 (TTAB 2010). • Failure to respond to discovery (except admissions) and statement of refusal to respond. If a party fails to respond to discovery (except admissions) and states that it will not respond to discovery, including making required disclosures, you do not need to file a motion to compel. You can immediately file a motion for discovery sanctions. TBMP § 523; 37 C.F.R. § 2.120(h)(2); Kairos Institute of Sound Healing LLC v. Doolittle Gardens, LLC, 88 USPQ2d 1541 (TTAB 2008). Those sanctions include striking all or part of the pleadings of the opposing party; refusing to allow the opposing party to support or oppose designated claims or defenses; prohibiting the opposing party from introducing designated matters in evidence; and entering judgment against the opposing party. TBMP § 527.01(b). This rarely occurs in practice, but if these circumstances apply to your client's situation, you can modify this motion and use it. • Failure to timely respond to discovery requests. If a party simply fails to timely respond to discovery requests (except admissions), you would file a motion to compel. Assuming the Board finds in your favor and does not find that the other party's failure was a result of ''excusable neglect,'' the Board will rule that the opposing party has forfeited its right to object to the discovery requests on the merits. TBMP § 527.01(c) (citing No Fear, Inc. v. Rule, 2000 TTAB LEXIS 217, 54 USPQ2d 1551, 1554 (TTAB 2000) (stating that the Board has great discretion in determining whether such forfeiture should be found)). Generally, you cannot file a motion for sanctions for failure to comply with a TTAB order unless the Board issues an order relating to discovery and the other party violates that order. See, e.g., Nobelle.com LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1303 (TTAB 2003) (request to preclude party from submitting trial evidence as a sanction for its alleged failure to comply with discovery obligations was procedurally baseless where no discovery order was violated or even issued); MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953–54 (TTAB 1979) (Board did not issue order compelling discovery but had only resumed proceedings after apparent failure of settlement negotiations and reset time to respond to discovery). For a motion to compel discovery responses that may be used by a party to a TTAB proceeding to compel incomplete or nonexistent discovery responses, see Motion to Compel Discovery Responses (TTAB). For further discussion, see TTAB Litigation: Procedural Considerations. • Failure to timely respond to admissions requests. For requests for admission, the TTAB's sanctions are automatic. Specifically, if the opposing party does not timely respond to your admission requests, you do not need to file a motion to compel and/or seek sanctions. The TTAB considers those requests admitted, and you can rely on those unanswered admissions as if the opposing party admitted them. TBMP § 524.01; Fed. R. Civ. P. 36(a)(3). If the opposing party responded to your admission requests, but you believe those responses are insufficient, you can file a motion to compel with the TTAB. The TTAB can either order the opposing party to amend its response, or deem the request(s) admitted. Id. However, if the opposing party admitted or denied a request, the TTAB will generally determine that response to be sufficient, even if proven wrong later in the proceeding. TBMP § 524.01. Note that the Board cannot ''hold any person in contempt, or award any expenses, including attorneys' fees, to any party.'' See 37 C.F.R. § 2.120(h)(1) and 37 C.F.R. § 2.127(f). 1. Procedural Overview The proceeding should still be suspended from the motion to compel you filed to allow the parties time to resolve the discovery disputes. The Board will further suspend the proceedings pending resolution of this motion for sanctions. 2. Deadline You must file your motion for sanctions as soon as possible after the opposing party fails to comply with the Board's order, but no later than the date the Board sets for restarting the proceeding because the TTAB wants to resolve all discovery disputes prior to the testimony period opening. See 37 C.F.R. § 2.120(f)(1). The TTAB does not charge a fee for filing a motion for sanctions. 3. Filing a Motion for Sanctions File your motion to compel in the USPTO TTAB ESTTA filing system: • Under ''File Documents in a Board Proceeding,'' choose ''Opposition, Cancellation or Concurrent Use (general filings)'' • Enter your proceeding number • Select whether you are the Plaintiff or Defendant • Under ''Discovery/Trial Motions,'' choose ''Motion for Discovery Sanctions'' • Attach the PDF version of your motion for sanctions • Sign and submit your motion for sanctions 4. Other Considerations You do not need to make a good faith effort to resolve the dispute before filing a motion for discovery sanctions. Highbeam Mktg., LLC v. Highbeam Research, LLC, 2008 TTAB LEXIS 2, 85 USPQ2d 1902, 1904 (TTAB 2008). For more on TTAB proceedings in general, including resources related to conducting discovery, see TTAB Proceedings Resource Kit and TTAB Litigation: Procedural Considerations.