What is a TTAB Discovery Conference?

If you get involved in a dispute at the USPTO’s Trademark Trial and Appeal Board (TTAB), one of the steps early on in the process of an opposition or a cancellation proceeding is the Discovery Conference, and is required by the board as part of the procedures of the case. A case at the TTAB is a type of litigation before an administrative agency court, and the details are set forth in the institution order. When the case is begun and the board issues an institution order to the parties, the Discovery Conference generally has to take place within one month after the answer is filed, In this conference, there are several topics that the parties have to address.

• The conference is a phone conference between the parties or their attorneys (if they’re represented)—not before the judges—and they have to cover several topics at a minimum. The nature of the claims and defenses, to make sure that we understand what the plaintiff is claiming and what the defendant has claimed in their answer.
• The possibility of settlement, which does not have to mean a total resolution. Settlement could mean addressing some of the issues in a resolution and proceeding to litigate on some of the issues, but at a minimum, you have to touch on the topic of settlement and whether it’s worth exploring that further.
• Any arrangements that the parties want to make regarding disclosures, discovery, depositions, preserving evidence, any of the sort of procedural rules for the case, which are already established. There’s a framework set by the Board’s manual of rules, but the parties can discuss those rules and see if they want to make any changes or amendments to them because if they consent to any changes, the board will usually allow that.
• The protective order governing confidential or attorney’s eyes only, and whether the standard protective order needs to be modified at all may come up. While judges do not participate in this call, it is possible to request that an interlocutory attorney (similar to a law clerk of the judges at the board), participates to help run the call and make sure it goes smoothly and make sure all the topics are covered. In my experience it’s not necessary when there are attorneys on both sides. But if there are parties who are unrepresented or if the parties have been involved in other disputes, and it’s particularly sour between the parties, it may be helpful to get the interlocutory attorney involved.

A TTAB Discovery Conference is not that complex, but it’s also not that straightforward, and it’s an important part of the process at the beginning of a dispute.