Pretrial Disclosures, Plaintiff
(TTAB)

Summary

These are template pretrial disclosures that an opposer/petitioner (plaintiff) may serve on an applicant/registrant (defendant) in an opposition or cancellation proceeding before the Trademark Trial and Appeal Board (TTAB). The template includes practical guidance, drafting notes, and an alternate clause. Unlike in federal litigation, TTAB proceedings do not involve in person testimony or live presentation of evidence. Instead, during each party's respective testimony period, the party takes testimony outside the presence of the TTAB (usually through a testimony deposition or declaration), and then files the written transcript (or declaration) with exhibits. See Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 702.03. A party can also file other types of evidence during its testimony period. The TTAB then decides the case based on the filed testimony and evidence. A party serves pretrial disclosures prior to the opening of its testimony period. The purpose of pretrial disclosures is to advise the adverse party of the identity of your potential trial witnesses to avoid surprise witnesses and facilitate the orderly taking of testimony. See Spier Wines (PTY) Ltd. v. Shepher, 2012 TTAB LEXIS 218, *9 n. 6, 105 U.S.P.Q.2d 1239, 1242 n. 6 (TTAB 2012). Note that parties who agree to use a form of TTAB Accelerated Case Resolution (ACR) may stipulate to waive the requirement for pretrial disclosures. TBMP § 702.03. Timing The TTAB includes deadlines for pretrial disclosures for each party in the notice of institution issued at the beginning of an opposition or cancellation proceeding. The deadline will be fifteen days prior to the opening of each party's testimony period. See 37 C.F.R. § 2.121(e). Plaintiffs have two disclosure deadlines during the trial phase of a TTAB proceeding: • Pretrial disclosures due 15 days before its testimony period to present its case in chief • Rebuttal disclosures due 15 days before its rebuttal testimony period (to respond to defendant's presentation of testimony and evidence) 37 C.F.R. §§ 2.121(b)(1), 2.121(e). Both deadlines are set in the TTAB notice of institution. You may request an extension of the pretrial disclosure deadline if the deadline has not yet passed: • Where the other party(ies) consent by: o Using the "consent motions" option in the TTAB ESTTA filing system: ▪ Which will prompt the filer to enter information for the new date for the next deadline –and– ▪ Then ESTTA automatically generates a new schedule of the remaining deadlines –or– o Using the "general filings option in the TTAB ESTTA filing system: ▪ Where the consent motion option does not reflect all of the parties' agreed on deadlines ▪ Prepare and file a consent motion that includes the schedule of new deadlines for all remaining deadlines in the form of a trial order See 37 C.F.R. § 2.121(d); TBMP § 509.02. • Where the other party(ies) do not consent: o By filing a motion using the general filings option in the TTAB ESTTA filing system: ▪ Include a schedule of new deadlines for all remaining deadlines in the form of a trial order ▪ State with particularity the facts demonstrating good cause for the extension (mere conclusory allegations are insufficient) ▪ Show the requested extension is not necessitated by your own lack of diligence or unreasonable delay o TTAB usually will defer action on the motion until after the deadline for the nonmoving party's response: ▪ If the nonmoving party does not file a response within the required 20 days the TTAB generally grants the motion as conceded ▪ If the nonmoving party does not file a response within the required 20 days the TTAB generally grants the motion as conceded See 37 C.F.R. §§ 2.121(c), 2.127(a); TBMP § 509.01(a). Note, where the TTAB resets the deadline for the close of discovery, it will automatically reschedule the pretrial disclosure deadlines and testimony periods. Additionally, where the TTAB resets a party's testimony period it will automatically reschedule the remaining pretrial disclosure deadlines. See 37 C.F.R. § 2.121(a). However, if you have already served your pretrial disclosures and the TTAB subsequently extends the deadline you do not need to re-serve pretrial disclosures each time the deadline is reset. You should review the previously served disclosures to determine if you need to serve any supplement or amendment based on any new information you may have learned. See Carl Karcher Enters. v. Carl's Bar & Delicatessen, Inc., 2011 TTAB LEXIS 261, *7, 98 U.S.P.Q.2d 1370, 1372 (TTAB 2011). Required Contents Your pretrial disclosures should include the following information about each witness you intend to or may take testimony from during your testimony period: • Name and, if not previously provided, the telephone number and address • General identifying information about the witness such as: o Relationship to any party, including job title if employed by a party –or– o If neither a party nor related to a party, then list occupation and job title • Summary or list of subjects on which the witness is expected to testify • Summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness 37. C.F.R. § 2.121(e); TBMP § 702.01. This template is for pretrial disclosures, but rebuttal disclosures must contain the same information regarding any witness that you intend to or may take testimony from during your rebuttal testimony period. See 37 C.F.R. § 2.121(e). Missing or Inadequate Pretrial Disclosures If you do not serve your pretrial disclosures by the deadline then the applicant/registrant may file a motion with the TTAB requesting: • To delay its pretrial disclosure deadline and testimony period –or– • To reset its pretrial disclosure deadline and testimony period 37 C.F.R. § 2.121(e). Where you seek to take a testimony deposition and the applicant/registrant asserts that you either did not serve pretrial disclosures or you served insufficient pretrial disclosures then it may: • File a motion to quash the noticed testimony deposition before the deposition occurs –or– • Attend and cross-examine the witness under protest while reserving the right to object to the submission of the testimony as evidence 37 C.F.R. §§ 2.121(e), 2.123(e)(3). See Great Seats, Inc. v. Great Seats, Ltd., 2011 TTAB LEXIS 365, *16–17, 100 U.S.P.Q.2d 1323, 1328 (TTAB 2011) (granting motion to quash noticed testimony depositions and exclude the testimony of 26 late identified witnesses). If it chooses the second option then it must promptly file a motion to strike the testimony from the record to preserve its objection. 37 C.F.R, § 2.123(e)(3). Applicant/registrant may seek to exclude all the testimony from your witness if it claims you never properly disclosed the witness, or it can seek to exclude a portion of the testimony where it claims you inadequately disclosed a witness. See Wonderbread 5 v. Gilles, 2015 TTAB LEXIS 261, *12, 115 U.S.P.Q.2d 1296, 1300 (TTAB 2015) (striking all 46 exhibits attached to witness's testimony deposition and all portions of testimony referring to the exhibits where the pretrial disclosures "fail[ed] to summarize the types of documents and things [r]espondent intended to introduce as exhibits to [the witness's] testimony"). The applicant/registrant can similarly file a motion to strike where you file a testimony declaration or affidavit from a witness that was not properly disclosed in your pretrial disclosures. 37 C.F.R. § 2.121(e). See also Naked Brand Grp., Inc. v. Khamis, 2018 TTAB Lexis 406, *3 (TTAB October 23, 2018) (granting motion to strike "where testimony has been presented by affidavit, but was not covered by an earlier pretrial disclosure"). In deciding whether to strike your pretrial disclosures or subsequent testimony depositions or affidavits/declarations, the TTAB considers the following factors: • Surprise to the party against whom the evidence would be offered • Ability of that party to cure the surprise • Extent to which allowing the testimony would disrupt the trial • Importance of the evidence • Nondisclosing party's explanation for its failure to disclose the evidence See Kate Spade LLC v. Thatch, 2018 TTAB LEXIS 82, *7–8, 126 U.S.P.Q.2d 1098, 1101 (TTAB 2018); Great Seats, Inc. v. Great Seats, Ltd., 2011 TTAB LEXIS 365, *10–12, 100 U.S.P.Q.2d 1323, 1326–27 (TTAB 2011). The applicant/registrant needs to file its motion to strike promptly after it becomes aware of the circumstances supporting the motion (i.e., the previously unidentified or inadequately identified witness). If it waits until its trial brief to assert an objection to the testimony deposition or declaration/affidavit then you may assert that the objection is untimely and waived. See Societe Des Produits Nestle S.A. v. Taboada, 2020 TTAB Lexis 267, *23 (TTAB August 5, 2020) (holding opposer's request in its trial brief to exclude materials not adequately disclosed in applicant's pretrial disclosures was waived because it "could have been cured if timely called to the Board's attention" by filing a motion to strike). Supplementing Pretrial Disclosures You have an ongoing duty to supplement your pretrial disclosures: • In a timely manner if you learn that: o Information in the disclosure is incomplete or incorrect in some material respect –and– o The additional or corrective information has not otherwise been made known to the parties during discovery or in writing –or– • As ordered by the TTAB Fed. R. Civ. P. 26(e)(1); Great Seats, Inc. v. Great Seats, Ltd., 2011 TTAB LEXIS 365, *10, 100 U.S.P.Q.2d 1323, 1326 (TTAB 2011) (supplement served "five days after the last deadline for opposer's pretrial disclosures, w[as] in compliance with opposer's ongoing duty to supplement"). In supplementing keep in mind the shorter time period for pretrial disclosures and the subsequent testimony period, such the amount of time that will be considered a "timely" supplement is likely shorter than what would be sufficient for a supplement during discovery. For more information on presenting testimony in opposition and cancellation proceedings see, TTAB Litigation: Procedural Considerations — Testimony Period. For an overall guide to TTAB proceedings, see TTAB Proceedings Resource Kit.