[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2002]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR2.120]

[Page 296-300]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
                         DEPARTMENT OF COMMERCE
 
PART 2--RULES OF PRACTICE IN TRADEMARK CASES--Table of Contents
 
Sec. 2.120  Discovery.

    (a) In general. Wherever appropriate, the provisions of the Federal 
Rules of Civil Procedure relating to discovery shall apply in 
opposition, cancellation, interference and concurrent use registration 
proceedings except as otherwise provided in this section. The provisions 
of the Federal Rules of Civil Procedure relating to automatic 
disclosure, scheduling conferences, conferences to discuss settlement 
and to develop a discovery plan, and transmission to the court of a 
written report outlining the discovery plan, are not applicable to Board 
proceedings. The Trademark Trial and Appeal Board will specify the 
opening and closing dates for the taking of discovery. The trial order 
setting these dates will be mailed with the notice of institution of the 
proceeding. The discovery period will be set for a period of 180 days. 
The parties may stipulate to a shortening of the discovery period. The 
discovery period may be extended upon stipulation of the parties 
approved by the Board, or upon motion granted by the Board, or by order 
of the Board. If a motion for an extension is denied, the discovery 
period may remain as originally set or as reset. Discovery depositions 
must be taken, and interrogatories, requests for production of documents 
and things, and requests for admission must be served, on or before the 
closing date of the discovery period as originally set or as reset. 
Responses to interrogatories, requests for production of documents and 
things, and requests for admission must be served within 30 days from 
the date of service of such discovery requests. The time to respond may 
be extended upon stipulation of the parties, or upon motion granted by 
the Board, or by order of the Board. The resetting of a party's time to 
respond to an outstanding request for discovery will not result in the 
automatic rescheduling of the discovery and/or testimony periods; such 
dates will be rescheduled only upon stipulation of the parties approved 
by the Board, or upon motion granted by the Board, or by order of the 
Board.
    (b) Discovery deposition within the United States. The deposition of 
a natural person shall be taken in the Federal judicial district where 
the person resides or is regularly employed or at any place on which the 
parties agree by stipulation. The responsibility rests wholly with the 
party taking discovery to secure the attendance of a proposed deponent 
other than a party or anyone who, at the time set for the taking of the 
deposition, is an officer, director, or managing agent of a party, or a 
person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules 
of Civil Procedure. See 35 U.S.C. 24.
    (c) Discovery deposition in foreign countries. (1) The discovery 
deposition of a natural person residing in a foreign country who is a 
party or who, at

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the time set for the taking of the deposition, is an officer, director, 
or managing agent of a party, or a person designated under Rule 30(b)(6) 
or Rule 31(a) of the Federal Rules of Civil Procedure, shall, if taken 
in a foreign country, be taken in the manner prescribed by Sec. 2.124 
unless the Trademark Trial and Appeal Board, upon motion for good cause, 
orders or the parties stipulate, that the deposition be taken by oral 
examination.
    (2) Whenever a foreign party is or will be, during a time set for 
discovery, present within the United States or any territory which is 
under the control and jurisdiction of the United States, such party may 
be deposed by oral examination upon notice by the party seeking 
discovery. Whenever a foreign party has or will have, during a time set 
for discovery, an officer, director, managing agent, or other person who 
consents to testify on its behalf, present within the United States or 
any territory which is under the control and jurisdiction of the United 
States, such officer, director, managing agent, or other person who 
consents to testify in its behalf may be deposed by oral examination 
upon notice by the party seeking discovery. The party seeking discovery 
may have one or more officers, directors, managing agents, or other 
persons who consent to testify on behalf of the adverse party, 
designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure. 
The deposition of a person under this paragraph shall be taken in the 
Federal judicial district where the witness resides or is regularly 
employed, or, if the witness neither resides nor is regularly employed 
in a Federal judicial district, where the witness is at the time of the 
deposition. This paragraph does not preclude the taking of a discovery 
deposition of a foreign party by any other procedure provided by 
paragraph (c)(1) of this section.
    (d) Interrogatories; request for production. (1) The total number of 
written interrogatories which a party may serve upon another party 
pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a 
proceeding, shall not exceed seventy-five, counting subparts, except 
that the Trademark Trial and Appeal Board, in its discretion, may allow 
additional interrogatories upon motion therefor showing good cause, or 
upon stipulation of the parties. A motion for leave to serve additional 
interrogatories must be filed and granted prior to the service of the 
proposed additional interrogatories; and must be accompanied by a copy 
of the interrogatories, if any, which have already been served by the 
moving party, and by a copy of the interrogatories proposed to be 
served. If a party upon which interrogatories have been served believes 
that the number of interrogatories served exceeds the limitation 
specified in this paragraph, and is not willing to waive this basis for 
objection, the party shall, within the time for (and instead of) serving 
answers and specific objections to the interrogatories, serve a general 
objection on the ground of their excessive number. If the inquiring 
party, in turn, files a motion to compel discovery, the motion must be 
accompanied by a copy of the set(s) of interrogatories which together 
are said to exceed the limitation, and must otherwise comply with the 
requirements of paragraph (e) of this section.
    (2) The production of documents and things under the provisions of 
Rule 34 of the Federal Rules of Civil Procedure will be made at the 
place where the documents and things are usually kept, or where the 
parties agree, or where and in the manner which the Trademark Trial and 
Appeal Board, upon motion, orders.
    (e) Motion for an order to compel discovery. (1) If a party fails to 
designate a person pursuant to Rule 30(b)(6) or Rule 31(a) of the 
Federal Rules of Civil Procedure, or if a party, or such designated 
person, or an officer, director or managing agent of a party fails to 
attend a deposition or fails to answer any question propounded in a 
discovery deposition, or any interrogatory, or fails to produce and 
permit the inspection and copying of any document or thing, the party 
seeking discovery may file a motion before the Trademark Trial and 
Appeal Board for an order to compel a designation, or attendance at a 
deposition, or an answer, or production and an opportunity to inspect 
and copy. The motion must be filed prior to

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the commencement of the first testimony period as originally set or as 
reset. The motion shall include a copy of the request for designation or 
of the relevant portion of the discovery deposition; or a copy of the 
interrogatory with any answer or objection that was made; or a copy of 
the request for production, any proffer of production or objection to 
production in response to the request, and a list and brief description 
of the documents or things that were not produced for inspection and 
copying. The motion must be supported by a written statement from the 
moving party that such party or the attorney therefor has made a good 
faith effort, by conference or correspondence, to resolve with the other 
party or the attorney therefor the issues presented in the motion and 
has been unable to reach agreement. If issues raised in the motion are 
subsequently resolved by agreement of the parties, the moving party 
should inform the Board in writing of the issues in the motion which no 
longer require adjudication.
    (2) When a party files a motion for an order to compel discovery, 
the case will be suspended by the Trademark Trial and Appeal Board with 
respect to all matters not germane to the motion, and no party should 
file any paper which is not germane to the motion, except as otherwise 
specified in the Board's suspension order. The filing of a motion to 
compel shall not toll the time for a party to respond to any outstanding 
discovery requests or to appear for any noticed discovery deposition.
    (f) Motion for a protective order. Upon motion by a party from whom 
discovery is sought, and for good cause, the Trademark Trial and Appeal 
Board may make any order which justice requires to protect a party from 
annoyance, embarrassment, oppression, or undue burden or expense, 
including one or more of the types of orders provided by clauses (1) 
through (8), inclusive, of Rule 26(c) of the Federal Rules of Civil 
Procedure. If the motion for a protective order is denied in whole or in 
part, the Board may, on such conditions (other than an award of expenses 
to the party prevailing on the motion) as are just, order that any party 
provide or permit discovery.
    (g) Sanctions. (1) If a party fails to comply with an order of the 
Trademark Trial and Appeal Board relating to discovery, including a 
protective order, the Board may make any appropriate order, including 
any of the orders provided in Rule 37(b)(2) of the Federal Rules of 
Civil Procedure, except that the Board will not hold any person in 
contempt or award any expenses to any party. The Board may impose 
against a party any of the sanctions provided by this subsection in the 
event that said party or any attorney, agent, or designated witness of 
that party fails to comply with a protective order made pursuant to Rule 
26(c) of the Federal Rules of Civil Procedure.
    (2) If a party, or an officer, director, or managing agent of a 
party, or a person designated under Rule 30(b)(6) or 31(a) of the 
Federal Rules of Civil Procedure to testify on behalf of a party, fails 
to attend the party's or person's discovery deposition, after being 
served with proper notice, or fails to provide any response to a set of 
interrogatories or to a set of requests for production of documents and 
things, and such party or the party's attorney or other authorized 
representative informs the party seeking discovery that no response will 
be made thereto, the Board may make any appropriate order, as specified 
in paragraph (g)(1) of this section.
    (h)(1) Any motion by a party to determine the sufficiency of an 
answer or objection to a request made by that party for an admission 
must be filed prior to the commencement of the first testimony period, 
as originally set or as reset. The motion shall include a copy of the 
request for admission and any exhibits thereto and of the answer or 
objection. The motion must be supported by a written statement from the 
moving party that such party or the attorney therefor has made a good 
faith effort, by conference or correspondence, to resolve with the other 
party or the attorney therefor the issues presented in the motion and 
has been unable to reach agreement. If issues raised in the motion are 
subsequently resolved by agreement of the

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parties, the moving party should inform the Board in writing of the 
issues in the motion which no longer require adjudication.
    (2) When a party files a motion to determine the sufficiency of an 
answer or objection to a request made by that party for an admission, 
the case will be suspended by the Trademark Trial and Appeal Board with 
respect to all matters not germane to the motion, and no party should 
file any paper which is not germane to the motion, except as otherwise 
specified in the Board's suspension order. The filing of a motion to 
determine the sufficiency of an answer or objection to a request for 
admission shall not toll the time for a party to respond to any 
outstanding discovery requests or to appear for any noticed discovery 
deposition.
    (i) Telephone and pre-trial conferences. (1) Whenever it appears to 
the Trademark Trial and Appeal Board that a motion filed in an inter 
partes proceeding is of such nature that its resolution by 
correspondence is not practical, the Board may, upon its own initiative 
or upon request made by one or both of the parties, resolve the motion 
by telephone conference.
    (2) Whenever it appears to the Trademark Trial and Appeal Board that 
questions or issues arising during the interlocutory phase of an inter 
partes proceeding have become so complex that their resolution by 
correspondence or telephone conference is not practical and that 
resolution would be likely to be facilitated by a conference in person 
of the parties or their attorneys with a Member or Attorney-Examiner of 
the Board, the Board may, upon its own initiative or upon motion made by 
one or both of the parties, request that the parties or their attorneys, 
under circumstances which will not result in undue hardship for any 
party, meet with the Board at its offices for a pre-trial conference.
    (j) Use of discovery deposition, answer to interrogatory, or 
admission. (1) The discovery deposition of a party or of anyone who at 
the time of taking the deposition was on officer, director or managing 
agent of a party, or a person designated by a party pursuant to Rule 
30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, may be 
offered in evidence by an adverse party.
    (2) Except as provided in paragraph (j)(1) of this section, the 
discovery deposition of a witness, whether or not a party, shall not be 
offered in evidence unless the person whose deposition was taken is, 
during the testimony period of the party offering the deposition, dead; 
or out of the United States (unless it appears that the absence of the 
witness was procured by the party offering the deposition); or unable to 
testify because of age, illness, infirmity, or imprisonment; or cannot 
be served with a subpoena to compel attendance at a testimonial 
deposition; or there is a stipulation by the parties; or upon a showing 
that such exceptional circumstances exist as to make it desirable, in 
the interest of justice, to allow the deposition to be used. The use of 
a discovery deposition by any party under this paragraph will be allowed 
only by stipulation of the parties approved by the Trademark Trial and 
Appeal Board, or by order of the Board on motion, which shall be filed 
at the time of the purported offer of the deposition in evidence, unless 
the motion is based upon a claim that such exceptional circumstances 
exist as to make it desirable, in the interest of justice, to allow the 
deposition to be used, in which case the motion shall be filed promptly 
after the circumstances claimed to justify use of the deposition became 
known.
    (3)(i) A discovery deposition, an answer to an interrogatory, or an 
admission to a request for admission, which may be offered in evidence 
under the provisions of paragraph (j) of this section may be made of 
record in the case by filing the deposition or any part thereof with any 
exhibit to the part that is filed, or a copy of the interrogatory and 
answer thereto with any exhibit made part of the answer, or a copy of 
the request for admission and any exhibit thereto and the admission (or 
a statement that the party from which an admission was requested failed 
to respond thereto), together with a notice of reliance. The notice of 
reliance and the material submitted thereunder should be filed during 
the testimony period of the party which

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files the notice of reliance. An objection made at a discovery 
deposition by a party answering a question subject to the objection will 
be considered at final hearing.
    (ii) A party which has obtained documents from another party under 
Rule 34 of the Federal Rules of Civil Procedure may not make the 
documents of record by notice of reliance alone, except to the extent 
that they are admissible by notice of reliance under the provisions of 
Sec. 2.122(e).
    (4) If only part of a discovery deposition is submitted and made 
part of the record by a party, an adverse party may introduce under a 
notice of reliance any other part of the deposition which should in 
fairness be considered so as to make not misleading what was offered by 
the submitting party. A notice of reliance filed by an adverse party 
must be supported by a written statement explaining why the adverse 
party needs to rely upon each additional part listed in the adverse 
party's notice, failing which the Board, in its discretion, may refuse 
to consider the additional parts.
    (5) An answer to an interrogatory, or an admission to a request for 
admission, may be submitted and made part of the record by only the 
inquiring party except that, if fewer than all of the answers to 
interrogatories, or fewer than all of the admissions, are offered in 
evidence by the inquiring party, the responding party may introduce 
under a notice of reliance any other answers to interrogatories, or any 
other admissions, which should in fairness be considered so as to make 
not misleading what was offered by the inquiring party. The notice of 
reliance filed by the responding party must be supported by a written 
statement explaining why the responding party needs to rely upon each of 
the additional discovery responses listed in the responding party's 
notice, failing which the Board, in its discretion, may refuse to 
consider the additional responses.
    (6) Paragraph (j) of this section will not be interpreted to 
preclude the reading or the use of a discovery deposition, or answer to 
an interrogatory, or admission as part of the examination or cross-
examination of any witness during the testimony period of any party.
    (7) When a discovery deposition, or a part thereof, or an answer to 
an interrogatory, or an admission, has been made of record by one party 
in accordance with the provisions of paragraph (j)(3) of this section, 
it may be referred to by any party for any purpose permitted by the 
Federal Rules of Evidence.
    (8) Requests for discovery, responses thereto, and materials or 
depositions obtained through the discovery process should not be filed 
with the Board except when submitted with a motion relating to 
discovery, or in support of or response to a motion for summary 
judgment, or under a notice of reliance during a party's testimony 
period. Papers or materials filed in violation of this paragraph may be 
returned by the Board.

[48 FR 23136, May 23, 1983, as amended at 54 FR 34898, Aug. 22, 1989; 54 
FR 38041, Sept. 14, 1989; 56 FR 46379, Sept. 12, 1991; 56 FR 54917, Oct. 
23, 1991; 63 FR 48098, Sept. 9, 1998; 63 FR 52159, Sept. 30, 1998]