Motion to Compel Discovery Responses
(TTAB)

Summary

This is a template motion to compel discovery responses that may be used by a party to a TTAB proceeding before the Trademark Trial and Appeal Board (TTAB) to compel incomplete or nonexistent discovery responses. This template includes practical guidance and drafting notes. During a TTAB proceeding, a party can serve discovery requests on the other party such as interrogatory requests, document requests and requests for admission. Trademark Board Manual of Procedure (TBMP) § 405, 406, 407. The responding party has 30 days to respond unless you or the TTAB grants them an extension of time. Id. If the responding party fails to timely respond, or respond completely, you can file a motion to compel to force their compliance. If you are filing a motion to compel regarding the opposing party's admission responses, the legal citations and the basis are different. The Board sets forth the basis for filing a motion to compel interrogatory responses or production of documents in TBMP § 523. For admission requests, see TBMP § 524. By their nature, admission requests are different than interrogatory responses and production of documents. You are asking the opposing party to admit or deny certain facts. If the opposing party does not timely respond to your admission requests, you do not need to file a motion to compel. 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. For more on TTAB proceedings in general, including resources related to conducting discovery, see TTAB Proceedings Resource Kit and TTAB Litigation: Procedural Considerations. 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. For more on the procedural aspects of a TTAB proceeding, including regarding conducting discovery, see TTAB Litigation: Procedural Considerations. 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 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. 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. Also, consider whether you want to ask for an extension of time to the discovery period/scheduling order in your motion to compel. If your discovery period is about to close, you may want an extension of time to seek follow up discovery. 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.