Motion to Compel Initial Disclosures
(TTAB)

Summary

This is a template motion to compel incomplete or nonexistent initial disclosures that may be used by the compelling party to a TTAB proceeding before the Trademark Trial and Appeal Board (TTAB). The template includes practical guidance, drafting notes, and an alternate sentence. During a TTAB proceeding, each party must make initial disclosures to the other party no later than thirty days after the discovery period opens. Trademark Board Manual of Procedure (TBMP) § 401.02. If the other party fails to make its disclosures timely, you can file a motion to compel to force their compliance. However, if the other party affirmatively states that they will not make these initial disclosures, you do not need to file a motion to compel. You can immediately file a Motion for Discovery Sanctions. TBMP § 523; Kairos Institute of Sound Healing LLC v. Doolittle Gardens, LLC, 88 USPQ2d 1541 (TTAB 2008). 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 § 401.02; 523.01. 2. Deadline You must file your motion to compel within 30 days after the disclosure due date. TBMP § 401.02. 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 If you have not made your own initial disclosures, you cannot: • file a motion to compel the other party's initial disclosures; TBMP § 401.06; See Dating DNA, LLC v. Imagini Holdings, LLC, 94 USPQ2d 1889 (TTAB 2010) (motion to compel denied where moving party failed to make initial disclosures) • serve discovery requests; TBMP § 401.02 • file a motion for summary judgment unless that motion relates to the TTAB's jurisdiction or claim or issue preclusion; TBMP § 401.06 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. For more on initial disclosures at the TTAB, see Initial Disclosures (TTAB). For more on TTAB proceedings in general, including resources related to conducting discovery, see TTAB Proceedings Resource Kit and TTAB Litigation: Procedural Considerations.