Motion to Compel Discovery Deposition Appearance
(TTAB)

Summary

This is a template motion to compel an adverse party to appear for a discovery deposition that a party may use in a proceeding before the Trademark Trial and Appeal Board (TTAB). This template includes practical guidance, drafting notes, and an alternate clause. During a TTAB proceeding, a party can notice and take an adverse party's deposition during the proceeding's discovery period. Trademark Board Manual of Procedure (TBMP) § 404. If the witness does not appear, you can file a motion to compel. TBMP § 523. If you want to depose a non-party witness, you will need to issue a subpoena under Fed. R. Civ. P. 45. If the witness fails to appear, you will need to seek enforcement from the court that issued the subpoena because the TTAB has no jurisdiction over the matter. TBMP § 404.03(a)(2); Vans, Inc. v. Branded, LLC, 2022 USPQ2d 742 (TTAB 2022). 1. Procedural Overview Once you file your motion to compel, the TTAB will issue an order suspending the proceeding. No party should file anything unrelated to the motion to compel, unless the TTAB provides exceptions in its suspension order. However, if either party filed discovery requests or noticed any depositions prior to the filing of the motion to compel, the opposing party must still timely respond and/or appear. TBMP § 523.01. 2. Deadline You must file your motion to compel before the day of the deadline for pretrial disclosures for the first testimony period. TBMP § 523.01. For example, if the first testimony period opens on Tuesday, August 21, you must file your motion to compel on or before Monday, August 20. Filing it on Tuesday, August 21 is too late, and the TTAB will dismiss it as untimely. The TTAB does not charge a fee for filing a motion to compel. 3. Filing a Motion to Compel 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 to Compel Discovery or Disclosure" • Attach the PDF version of your motion to compel • Sign and submit your motion to compel 4. Other Considerations Prior to filing a motion to compel, you must make a good faith effort to resolve the issues presented in the motion. TBMP § 523.02; 524.02. You can do this by telephone or written correspondence, but you will need to provide a detailed description of your efforts in the motion. Note that both parties have a duty to cooperate to resolve conflicts in scheduling depositions. Sunrider Corp. v. Raats, 83 USPQ2d 1648 (TTAB 2007). Also, consider whether you want to ask for an extension of time to the discovery period/scheduling order in your motion to compel. You must take your discovery deposition during the proceeding's discovery period unless the parties stipulate otherwise, or the TTAB so orders. TBMP § 404.01. If your discovery period is about to close, you may want to request an extension of time to allow time for the deposition to take place. Note that an extension of the discovery period does not automatically extend the entire scheduling order. Unless you specify that you want an extension of the entire scheduling order, the other dates remain as set. A party must make its initial disclosures prior to serving discovery. TBMP § 401.2. See also Initial Disclosures (TTAB). If you have not yet served your initial disclosures, do so before you file a motion to compel. If the adverse party believes that your notice of deposition is improper for any reason, they should file a motion to quash or motion for protective order setting forth their basis for objecting. TBMP § 521; 526. However, if they did not, make sure you did not run afoul of these situations: • Did you need to seek leave from the TTAB to notice the deposition for which you are now seeking to compel. Specifically, you need to seek leave from the TTAB in these circumstances: o the deposition would result in more than 10 depositions being taken o you have already deposed the witness in this case o you want to depose the witness outside the discovery period. You can certify, however, in your notice that the witness is expected to leave the United States and be unavailable after that time, and that would be acceptable if the witness is imprisoned TBMP § 404.02 citing Fed. R. Civ. P. 30(a). • Did you provide "reasonable" notice? "The notice must state the time and place of the deposition and, if known, the deponent's name and address. If the name is unknown, the notice must provide a general description sufficient to identify the person or the particular class or group to which the person belongs." TBMP § 404.05 quoting Fed. R. Civ. P. 30(b)(1). o But your discovery period closing soon does not justify a non-reasonable notice. Gaudreau v. American Promotional Events Inc., 82 USPQ2d 1692 (TTAB 2007) • If you requested documents in your notice of deposition, you must provide at least 30 days between the date of the request and the deposition to allow the adverse party to gather the documents. TBMP § 404.05 citing Fed. R. Civ. P. 34(b)(2)(A). • Unless the parties agree, or the Board so orders, a deposition is limited to one day of seven hours; TBMP §404.06(c) citing Fed. R. Civil. P. 30(d)(1). This template motion to compel contemplates two types of situations depending on the type of information you seek from the deposition. Specifically, if you want an individual to testify about their personal knowledge, you would notice and take a 30(a) deposition. Whereas, if you want a corporation or organization to provide representative(s) who can address specific topics related to the corporation/organization, you would notice and take a 30(b)(6) deposition. For more on TTAB proceedings in general, including resources related to conducting discovery, see TTAB Proceedings Resource Kit and TTAB Litigation: Procedural Considerations.