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Anatomy of initial disclosures at TTAB

Posted by ipelton on: June 29th, 2012

In a trademark opposition or cancellation at the Trademark Trial and Appeal Board (TTAB), one of the elements of the first stages of the proceeding is “initial disclosures” from the parties. 

What are initial disclosures?They are sort of a road map for the discovery each party intends to take. The name potential witnesses and types of documents that could be relevant in the case. According to the TTAB rules: 

Pursuant to Fed. R. Civ. P. 26(a)(1), a party is not obligated to disclose the name of every
witness, document or thing that may have or contain discoverable information about its claim or
defense, but merely the witnesses, documents and things having or containing discoverable
“information that the disclosing party may use to support its claims or defenses.”

When are initial disclosures required? The timing of the disclosures is set in the Board’s scheduling order. They are after the discovery conference between the parties. And they must be served by a party prior to serving discovery. Note that a party may be obliged to supplement and update its initial disclosures if its scope of information, documents and witnesses changes. [See TTABlog®” Precedential No. 21: TTAB Excludes Opposer’s Sole Trial Witness Due To Failure to Previously Identify Her.]

What do initial disclosures look like? Disclosures are not supposed to be filed with the Board, only served on the other parties. The address or telephone number of possible witnesses should be provided. The location of documents should be listed.

What if a party fails to make initial disclosures? The party may be subject to a motion to compel and, eventually, sanctions.

For more details about initial disclosures, see the TTAB Manual of Procedure (TBMP) Sect. 401.02.

I have provided a sample Initial Disclosures below [click images to enlarge].

Here are some relevant Board decisions posted over at TTABulator.com:

91196325

05/14/2012 TRIAL DATES RESET N Applicant moved to extend time to serve initial disclosures for a 2nd time after its first such motion was granted. Applicant showed good cause and motion granted, though Applicant cautioned regarding additional extensions.

91203404

05/17/2012 TRIAL DATES RESET N Applicant moved to extend time to serve initial disclosures. Applicant’s recent change of counsel found to constitute good cause and motion granted.

91203404

05/17/2012 TRIAL DATES RESET N Applicant moved to extend time to serve initial disclosures. Applicant’s recent change of counsel found to constitute good cause and motion granted.
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