Motion to Compel Discovery Deposition Question Responses
(TTAB)

Summary

This is a template motion to compel an adverse party to provide discovery deposition question responses that a party may use in a proceeding before the Trademark Trial and Appeal Board (TTAB). This template includes practical guidance and drafting notes. 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 appears but fails to answer specific questions, you can file a motion to compel. TBMP § 523. The parties take TTAB discovery depositions without the TTAB present. Therefore, a process exists to resolve any objections lodged during the deposition. Specifically, if you ask a question during a deposition, and the adverse party believes its objectionable, typically, the lawyer states their objection, and the witness responds. TBMP § 404.08(c). However, if the witness refuses to answer, you need to complete the deposition, and then file a motion to compel with the TTAB. TBMP § 523.01. Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184 (TTAB 1974), overruled on other grounds by Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167 (TTAB 1975). As a practical matter, you will need to wait to receive the deposition transcript from the court reporter before you file your motion to compel. You will need to attach the relevant section(s) to your motion. 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 you to take a second deposition, assuming the TTAB grants your motion to compel. 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. Generally, an adverse party can refuse to answer a deposition question for three reasons: (1) To preserve privilege or information protected by the subject protective order; Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671 (TTAB 1988) (TTAB, upon motion to compel, allowed parties time to work out protective order under which confidential information would be provided) (2) To enforce a limitation ordered by the TTAB; or (3) To present a Motion to Terminate or Limit under Rule 30(d)(3) TBMP § 404.08(c); Fed. R. Civ. P. 26(b), 30(c)(2), and 37(a); Fed. R. Evid. 501; 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE CIVIL § 2113 (3d ed. April 2023 update). For more on TTAB proceedings in general, including resources related to conducting discovery, see TTAB Proceedings Resource Kit and TTAB Litigation: Procedural Considerations.