                   CHAPTER 400  DISCOVERY


401  In General

402  Scope of Discovery

403  Timing of Discovery

404  Discovery Depositions

405  Discovery Deposition Objections

406  Interrogatories

407  Responses to Interrogatories

408  Requests for Production of Documents and Things

409  Responses to Requests for Production

410  Requests for Admission

411  Responses to Requests for Admission

412  Duties to Cooperate, Search Records, Supplement

413  Filing Discovery Requests and Responses With Board

414  Motions Attacking Requests for Discovery

415  Remedy for Failure to Provide Discovery

416  Protective Orders

417  Telephone and Pre-trial Conferences

418  Discovery Sanctions

419  Discovery Guidelines



401  In General

Through the use of the various discovery devices (i.e.,
discovery depositions, interrogatories, requests for
production of documents and things, and requests for
admission) available to litigants in inter partes
proceedings before the Board, a party may ascertain the
facts underlying its adversary's case.  Discovery of these
facts may lead to a settlement of the case; simplify the
issues; or reveal a basis for a motion for summary judgment,
an additional claim (in the case of a plaintiff), or an
additional defense or counterclaim (in the case of a
defendant).  At the very least, discovery enables the
discovering party to better prepare for trial.  For a
discussion of the purposes served by discovery, see Fischer
Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861 (TTAB
1979).  See also Smith International, Inc. v. Olin Corp.,
201 USPQ 250 (TTAB 1978).

The conduct of discovery in Board inter partes proceedings
is governed by 37 CFR 2.120.  Discovery before the Board
under 37 CFR 2.120 is similar in many respects to discovery
before the Federal district courts under the Federal Rules
of Civil Procedure.  In fact, the discovery provisions of
the Federal Rules of Civil Procedure are applicable in Board
inter partes proceedings, except as otherwise provided in 37
CFR 2.120 and "Effect of December 1, 1993 Amendments to the
Federal Rules of Civil Procedure on Trademark Trial and
Appeal Board Inter Partes Proceedings," 1159 TMOG 14
(February 1, 1994).  The differences that do exist between
the two discovery systems are due primarily to the
administrative nature of Board proceedings.  See Yamaha
International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6
USPQ2d 1001, 1004 (Fed. Cir. 1988).

The Board expects parties (and their attorneys or other
authorized representatives) to cooperate with one another in
the discovery process, and looks with extreme disfavor upon
those which do not.  See:  TBMP section 412.01.



402  Scope of Discovery

402.01  In General

The general scope of the discovery which may be obtained in
inter partes proceedings before the Board is governed by
FRCP 26(b)(1), which provides, in part, as follows:

     Parties may obtain discovery regarding any matter,
     not privileged, which is relevant to the subject
     matter involved in the pending action, whether it
     relates to the claim or defense of the party seek-
     ing discovery or to the claim or defense of any
     other party, including the existence, description,
     nature, custody, condition and location of any
     books, documents, or other tangible things and the
     identity and location of persons having knowledge
     of any discoverable matter.  The information
     sought need not be admissible at the trial if the
     information sought appears reasonably calculated
     to lead to the discovery of admissible evidence.

See also Johnston Pump/General Valve Inc. v. Chromalloy
American Corp., 10 USPQ2d 1671 (TTAB 1988); Fischer
Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861 (TTAB
1979); and Varian Associates v. Fairfield-Noble Corp., 188
USPQ 581 (TTAB 1975).

A request for discovery is not necessarily objectionable
merely because it requires a party or a witness to give an
opinion or contention that relates to fact or the
application of law to fact.  See FRCP 33(c) and 36(a);
Johnston Pump/General Valve Inc. v. Chromalloy American
Corp., 10 USPQ2d 1671 (TTAB 1988); and Gould Inc. v. Sanyo
Electric Co., 179 USPQ 313 (TTAB 1973).

A party may take discovery not only as to matters
specifically raised in the pleadings (see Varian Associates
v. Fairfield-Noble Corp., 188 USPQ 581 (TTAB 1975), and Mack
Trucks, Inc. v. Monroe Auto Equipment Co., 181 USPQ 286
(TTAB 1974)), but also as to any matter which might serve as
the basis for an additional claim, defense, or counterclaim.
See J. B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577
(TTAB 1975); Johnson & Johnson v. Rexall Drug Co., 186 USPQ
167 (TTAB 1975); and Neville Chemical Co. v. Lubrizol Corp.,
183 USPQ 184 (TTAB 1974).  The taking of discovery cannot,
under any circumstances, be construed as an attack upon any
registration.  See Johnson & Johnson v. Rexall Drug Co.,
supra, and Neville Chemical Co. v. Lubrizol Corp., supra.

A party may not, by limiting its own discovery and/or
presentation of evidence on the case, thereby restrict
another party's discovery in any way.  See Crane Co. v.
Shimano Industrial Co., 184 USPQ 691 (TTAB 1975).



402.02  Limitations on Right to Discovery

The right to discovery is not unlimited.  Even if the
discovery sought by a party is relevant, it will be limited,
or not permitted, where, inter alia, it is unreasonably
cumulative or duplicative; or is obtainable from some other
source that is more convenient, less burdensome, or less
expensive; or "where no need is shown, or compliance would
be unduly burdensome, or where harm to the person from whom
discovery is sought outweighs the need of the person seeking
discovery of the information."  Micro Motion Inc. v. Kane
Steel Co., 894 F.2d 1318, 894 F.2d 1318, 13 USPQ2d 1696
(Fed. Cir. 1990), and FRCP 26(b)(2).  See also Haworth Inc.
v. Herman Miller Inc., 998 F.2d 975, 27 USPQ2d 1469 (Fed.
Cir. 1993), and Katz v. Batavia Marine & Sporting Supplies
Inc., 984 F.2d 422, 25 USPQ2d 1547 (Fed. Cir. 1993).

For example, in those cases where complete compliance with a
particular request for discovery would be unduly burdensome,
the Board may permit the responding party to comply by
providing a representative sampling of the information
sought, or some other reduced amount of information which is
nevertheless sufficient to meet the propounding party's
discovery needs.  See British Seagull Ltd. v. Brunswick
Corp., 28 USPQ2d 1197 (TTAB 1993), aff'd, Brunswick Corp. v.
British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed.
Cir. 1994); Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d
1718 (TTAB 1987); Sunkist Growers, Inc. v. Benjamin Ansehl
Co., 229 USPQ 147 (TTAB 1985); J. B. Williams Co. v.
Pepsodent G.m.b.H., 188 USPQ 577 (TTAB 1975); Neville
Chemical Co. v. Lubrizol Corp., 184 USPQ 689 (TTAB 1975);
Van Dyk Research Corp. v. Xerox Corp., 181 USPQ 346 (TTAB
1974); and Mack Trucks, Inc. v. Monroe Auto Equipment Co.,
181 USPQ 286 (TTAB 1974).

Nor will a party be permitted to obtain, through a motion to
compel, discovery broader in scope than that actually sought
in the discovery request(s) to which the motion pertains.
See Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167 (TTAB
1980).

The Board may refuse to permit the discovery of confidential
commercial information, or may allow discovery thereof only
under an appropriate protective order.  See, for example
FRCP 26(c); Johnston Pump/General Valve Inc. v. Chromalloy
American Corp., 10 USPQ2d 1671 (TTAB 1988); Sunkist Growers,
Inc. v. Benjamin Ansehl Co., 229 USPQ 147 (TTAB 1985);
Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167 (TTAB
1980); Varian Associates v. Fairfield-Noble Corp., 188 USPQ
581 (TTAB 1975); J. B. Williams Co. v. Pepsodent G.m.b.H.,
188 USPQ 577 (TTAB 1975); Neville Chemical Co. v. Lubrizol
Corp., 184 USPQ 689 (TTAB 1975); Ortho Pharmaceutical Corp.
v. Schattner, 184 USPQ 556 (TTAB 1975); Miller & Fink Corp.
v. Servicemaster Hospital Corp., 184 USPQ 495 (TTAB 1975);
and Cool-Ray, Inc. v. Eye Care, Inc., 183 USPQ 618 (TTAB
1974).

Similarly, information protected by the attorney-client
privilege is not discoverable unless the privilege has been
waived; and documents and things prepared in anticipation of
litigation or for trial by or for another party, or by or
for that other party's representative, are discoverable only
upon a showing that the party seeking discovery has
substantial need of the materials in the preparation of its
case and that it is unable, without undue hardship, to
obtain the substantial equivalent of the materials by other
means.  See, for example FRCP 26(b)(3); Goodyear Tire &
Rubber Co. v. Tyrco Industries, 186 USPQ 207 (TTAB 1975);
Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167 (TTAB
1975); Miles Laboratories, Inc. v. Instrumentation
Laboratory, Inc., 185 USPQ 432 (TTAB 1975); Amerace Corp. v.
USM Corp., 183 USPQ 506 (TTAB 1974); and Goodyear Tire &
Rubber Co. v. Uniroyal, Inc., 183 USPQ 372 (TTAB 1974).

In addition, because the signature of a party or its
attorney to a request for discovery constitutes, under the
provisions of FRCP 26(g), a certification by the party or
its attorney that, inter alia, the request is warranted,
consistent with the Federal Rules of Civil Procedure, and
not unreasonable or unduly burdensome, a party ordinarily
will not be heard to contend that a request for discovery is
proper when propounded by the party itself but improper when
propounded by its adversary.  See Miss America Pageant v.
Petite Productions, Inc., 17 USPQ2d 1067 (TTAB 1990);
Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666 (TTAB
1986); Medtronic, Inc. v. Pacesetter Systems, Inc., 222USPQ
80 (TTAB 1984); Tektronix, Inc. v. Tek Associates, Inc., 183
USPQ 623 (TTAB 1974); and Gastown Inc. of Delaware v. Gas
City, Ltd., 180 USPQ 477 (TTAB 1974).  See also TBMP
412.01.  A contention of this nature will be entertained
only if it is supported by a persuasive showing of reasons
why the discovery request is proper when propounded by one
party but improper when propounded by another.  See Miss
America Pageant v. Petite Productions, Inc., supra.



403  Timing of Discovery

403.01  In General

The discovery devices, namely, discovery depositions,
interrogatories, requests for production of documents and
things, and requests for admission, are available for use
only during the discovery period.  See Smith International,
Inc. v. Olin Corp., 201 USPQ 250 (TTAB 1978), and Rhone-
Poulenc Industries v. Gulf Oil Corp., 198 UPSQ 372 (TTAB
1978).  A party has no obligation to respond to an untimely
request for discovery.

When a defendant's answer to a complaint is received by the
Board, the Board prepares and sends out to the parties a
trial order, wherein the Board acknowledges receipt of the
answer; specifies the closing date for the taking of
discovery; and assigns each party's time for taking
testimony.  See 37 CFR 2.120(a) and 2.121(a)(1).  The date
set for the close of discovery normally is 90 days after the
mailing date of the trial order.

The opening of the discovery period hinges upon the
commencement of the proceeding, and service of the complaint
upon the defendant by the Board; it is not contingent upon
joinder of issues.  See Strang Corp. v. Stouffer Corp., 16
USPQ2d 1309 (TTAB 1990); Crown Wallcovering Corp. v. Wall
Paper Manufacturers Ltd., 188 USPQ 141 (TTAB 1975); "Effect
of December 1, 1993 Amendments to the Federal Rules of Civil
Procedure on Trademark Trial and Appeal Board Inter Partes
Proceedings," 1159 TMOG 14 (February 1, 1994); and Notice of
Final Rulemaking published in the Federal Register on August
22, 1989 at 54 FR 34886, 34892, and in the Official Gazette
of September 12, 1989 at 1106 TMOG 26, 31.



403.02  Time for Service of Discovery Requests

Interrogatories, requests for production of documents and
things, and requests for admission may be served upon the
plaintiff after the proceeding commences, and upon the
defendant with or after service of the complaint by the
Board.  See "Effect of December 1, 1993 Amendments to the
Federal Rules of Civil Procedure on Trademark Trial and
Appeal Board Inter Partes Proceedings," 1159 TMOG 14
(February 1, 1994); Notice of Final Rulemaking published in
the Federal Register on August 22, 1989 at 54 FR 34886,
34892, and in the Official Gazette of September 12, 1989 at
1106 TMOG 26, 31; and Nabisco Brands Inc. v. Keebler Co., 28
USPQ2d 1237 (TTAB 1993).

Discovery depositions generally may be taken by any party
after commencement of the proceeding.  However, the Board's
permission must be obtained under the following
circumstances:
     (1) If a plaintiff seeks to take a deposition prior to
the expiration of 30 days after service of the complaint by
the Board upon any defendant, except that permission is not
required if the defendant has itself served a notice of
taking deposition or otherwise sought discovery, or if the
plaintiff's notice (i) states that the proposed deponent is
about to go out of the United States, or is bound on a
voyage to sea, and will be unavailable for examination
unless his or her deposition is taken before expiration of
the 30-day period, and (ii) sets forth facts to support the
statement; or
     (2) If the person to be examined is confined in prison;
or
     (3) If, without written stipulation of the parties, (i)
a proposed deposition would result in more than ten
depositions being taken by the plaintiffs, or by the
defendants, or (ii) the person to be examined already has
been deposed in the case.

See FRCP 30(a); "Effect of December 1, 1993 Amendments to
the Federal Rules of Civil Procedure on Trademark Trial and
Appeal Board Inter Partes Proceedings," 1159 TMOG 14
(February 1, 1994); Nabisco Brands Inc. v. Keebler Co., 28
USPQ2d 1237 (TTAB 1993); and Crown Wallcovering Corp. v.
Wall Paper Manufacturers Ltd., 188 USPQ 141 (TTAB 1975).

An opposition or cancellation proceeding commences when the
complaint, i.e., the notice of opposition or petition to
cancel, is filed.  See 37 CFR 2.101(a) and 2.111(a).  In
an interference or concurrent use proceeding, there is no
"complaint," as such; rather, the notice of institution and
accompanying materials take the place of a complaint, and
the proceeding commences when the Board mails the notice to
each party.  See 37 CFR 2.93, 2.99(c), and 2.99(d)(1), and
TBMP 1003 and 1105.

Interrogatories, requests for production of documents and
things, and requests for admission may be served upon an
adversary through the last day of discovery, even though the
answers thereto will not be served until after the discovery
period has closed.  See Rhone-Poulenc Industries v. Gulf Oil
Corp., 198 USPQ 372 (TTAB 1978); Atwood Vacuum Machine Co.
v. Automation Industries, Inc., 181 USPQ 606 (TTAB 1974);
AMP Inc. v. Raychem Corp., 179 USPQ 857 (TTAB 1973); and
Deere & Co. v. Deerfield Products Corp., 176 USPQ 422 (TTAB
1973).  However, discovery depositions must be not only
noticed but also taken prior to the expiration of the
discovery period (unless the parties stipulate that the
deposition may be taken outside of the period).  See Smith
International, Inc. v. Olin Corp., 201 USPQ 250 (TTAB 1978),
and Rhone-Poulenc Industries v. Gulf Oil Corp., supra.



403.03  Time for Service of Discovery Responses

Responses to interrogatories, requests for production of
documents and things, and requests for admission must be
served within 30 days after the date of service of the
request for discovery; except that a defendant may serve
responses either within 30 days after service of a discovery
request, or within 45 days after service of the complaint
upon it by the Board, whichever is later.  See FRCP
33(b)(3), 34(b), and 36(a), and "Effect of December 1, 1993
Amendments to the Federal Rules of Civil Procedure on
Trademark Trial and Appeal Board Inter Partes Proceedings,"
1159 TMOG 14 (February 1, 1994).  If service of the request
for discovery is made by first-class mail, "Express Mail,"
or overnight courier, the date of mailing or of delivery to
the overnight courier is considered to be the date of
service, and five extra days are allowed for responding to
the request.  See 37 CFR 2.119(c), and TBMP 113.05.  See
also Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d
1552 (TTAB 1987).

Discovery in proceedings before the Board is not governed by
any concept of priority of discovery or deposition.  That
is, a party which is the first to serve a request for
discovery does not thereby gain a right to receive a
response to its request before it must respond to its
adversary's subsequently served request for discovery, and
this is so even if its adversary fails to respond, or
respond completely, to the first party's request for
discovery.  Rather, a party is under an obligation to
respond to an adversary's request for discovery during the
time allowed therefor under the applicable rules,
irrespective of the sequence of requests for discovery, or
of an adversary's failure to respond to a pending request
for discovery.  See FRCP 26(d); Miss America Pageant v.
Petite Productions, Inc., 17 USPQ2d 1067 (TTAB 1990); and
Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626
(TTAB 1986).

A party which fails to respond to a request for discovery
during the time allowed therefor, and which is unable to
show that its failure was the result of excusable neglect,
may be found, upon motion to compel filed by the propounding
party, to have forfeited its right to object to the
discovery request on its merits.  See Bison Corp. v.
Perfecta Chemie B.V., 4 USPQ2d 1718 (TTAB 1987); Luehrmann
v. Kwik Kopy Corp., 2 USPQ2d 1303 (TTAB 1987); Envirotech
Corp. v. Compagnie Des Lampes, 219 USPQ 448 (TTAB 1979);
MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952 (TTAB
1979); and Crane Co. v. Shimano Industrial Co., 184 USPQ 691
(TTAB 1975).



403.04  Extensions

37 CFR 2.121(a)(1) ... Testimony periods may be rescheduled
by stipulation of the parties approved by the Board, or upon
motion granted by the Board, or by order of the Board.  The
resetting of the closing date for discovery will result in
the rescheduling of the testimony periods without action by
any party.  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.

The closing date of the discovery period may be extended by
stipulation of the parties approved by the Board, or upon
motion (pursuant to FRCP 6(b)) granted by the Board, or by
order of the Board.  An extension of the closing date for
discovery will result in a corresponding extension of the
testimony periods without action by any party.  See 37 CFR
2.121(a)(1).  For information concerning stipulations to
extend, see TBMP 501.03.  For information concerning
motions to extend, see TBMP 509.

Mere delay in initiating discovery does not constitute good
cause for an extension of the discovery period.  See
Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303 (TTAB 1987), and
Janet E. Rice, TIPS FROM THE TTAB:  The Timing of Discovery,
68 Trademark Rep. 581 (1978).  See also American Vitamin
Products Inc. v. DowBrands Inc., 22 USPQ2d 1313 (TTAB 1992).
Thus, a party which waits until the waning days of the
discovery period to serve interrogatories, requests for
production of documents and things, and/or requests for
admission will not be heard to complain, when it receives
responses thereto after the close of the discovery period,
that it needs an extension of the discovery period in order
to take "follow-up" discovery.

At the same time, a party which receives discovery requests
early in the discovery period may not, by delaying its
response thereto, or by responding improperly so that its
adversary is forced to file a motion to compel discovery,
rob its adversary of the opportunity to take "follow-up"
discovery.  Such a delay or improper response constitutes
good cause for an extension of the discovery period.
Therefore, the Board will, at the request of the propounding
party, extend the discovery period (at least for the
propounding party) so as to restore that amount of time
which would have remained in the discovery period had the
discovery responses been made in a timely and proper
fashion.  See Miss America Pageant v. Petite Productions,
Inc., 17 USPQ2d 1067 (TTAB 1990), and Neville Chemical Co.
v. Lubrizol Corp., 184 USPQ 689 (TTAB 1975).

The time for responding to a request for discovery may be
extended or reopened by stipulation of the parties, or upon
motion (pursuant to FRCP 6(b)) granted by the Board, or by
order of the Board.  However, an extension of a party's time
to respond to an outstanding request for discovery will not
result in an automatic corresponding extension of the
discovery and/or testimony periods; such periods 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.  See 37 CFR 2.121(a).

A stipulation to extend or reopen only the time for
responding to a request for discovery (that is, not to
extend or reopen also the closing date for the discovery
period and/or testimony periods) does not have to be filed
with the Board.  However, to avoid any misunderstanding
between the parties as to the existence and terms of such a
stipulation, it is recommended that the stipulation be
reduced to writing, even if it is not filed with the Board.



403.05  Need for Early Initiation of Discovery

403.05(a)  To Allow Time for "Follow-up" Discovery

If a party wishes to have an opportunity to take "follow-up"
discovery after it receives responses to its initial
requests for discovery, it must serve its initial requests
early in the discovery period, so that when it receives
responses thereto, it will have time to prepare and serve
additional discovery requests prior to the expiration of the
discovery period.  See TBMP 403.04.



403.05(b)  To Allow Time for Summary Judgment Motion

37 CFR 2.127(e)(1) A motion for summary judgment should be
filed prior to the commencement of the first testimony
period, as originally set or as reset, and the Trademark
Trial and Appeal Board, in its discretion, may deny as
untimely any motion for summary judgment filed thereafter.

A party which has been served with interrogatories, requests
for production of documents and things, and/or requests for
admission is allowed 30 days from the date of service in
which to respond thereto (or, in the case of a defendant, 30
days from service of the request or 45 days after service of
the complaint upon it by the Board, whichever is later),
plus an extra 5 days if service of the requests for
discovery was made by first-class mail, "Express Mail," or
overnight courier.  See TBMP 403.03.  If requests for
discovery are served at the end of the discovery period,
responses thereto may not be received until well after the
beginning of the plaintiff's main testimony period, which
opens 30 days after the closing date of the discovery
period.

A summary judgment motion, however, should be filed prior to
the commencement of the plaintiff's main testimony period,
and may be denied as untimely if it is filed thereafter.
See 37 CFR 2.127(e)(1).

Therefore, if a party wishes to have an opportunity to file
a motion for summary judgment based upon discovery responses
received from its adversary, it must serve its discovery
requests early in the discovery period, so that when it
receives responses thereto, it will have time to prepare and
file the summary judgment motion prior to the commencement
of the plaintiff's main testimony period.



403.05(c)  To Facilitate Introduction of Produced Documents

37 CFR 2.120(j)(3)(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
2.122(e).

There are a number of different methods by which documents
produced in response to a request for production of
documents may be made of record.  See, in this regard, TBMP
711.  Three of the easiest methods are available for use
only if the request for production of documents is served
relatively early in the discovery period.

First, if the discovery period has not yet expired, a party
which has obtained documents from another party through a
request for production of documents may serve upon its
opponent a request for admission of the genuineness of the
subject documents, which should be attached as exhibits to
the request.  See FRCP 36(a).  Then, during its testimony
period, the propounding party may file a notice of reliance,
pursuant to 37 CFR 2.120(j)(3)(i), upon the request for
admission, the exhibits thereto, and its adversary's
response.

Second, if the discovery period has not yet expired, the
party which obtained the documents may make them of record
by taking a discovery deposition of its adversary, marking
the documents as exhibits thereto, and having the witness
identify the documents during the deposition.

Third, the request for production of documents may be
combined with a notice of the taking of the adversary's
discovery deposition; that is, the combined request and
notice may ask that the deponent bring the requested
documents to his or her deposition.  However, a party served
with a request for production of documents has 30 days from
the date of service of the request in which to respond
thereto (or, in the case of a defendant, 30 days from
service of the request or 45 days after service of the
complaint upon it by the Board, whichever is later), plus an
extra 5 days if service of the request was made by first-
class mail, "Express Mail," or overnight courier.  See TBMP
403.03.  Moreover, in proceedings before the Board, a
discovery deposition must be both noticed and taken before
the end of the discovery period.  See TBMP 403.02.  Thus, a
combined notice of deposition and request for production of
documents normally must be served at least 35 days prior to
the close of the discovery period.



404  Discovery Depositions

404.01  When and By Whom Taken

After commencement of an inter partes proceeding before the
Board, discovery depositions generally may be taken by any
party.  However, the Board's permission must be obtained
under the following circumstances:
     (1) If a plaintiff seeks to take a deposition prior to
the expiration of 30 days after service of the complaint by
the Board upon any defendant, except that permission is not
required if the defendant has itself served a notice of
taking deposition or otherwise sought discovery, or if the
plaintiff's notice (i) states that the proposed deponent is
about to go out of the United States, or is bound on a
voyage to sea, and will be unavailable for examination
unless his or her deposition is taken before expiration of
the 30-day period, and (ii) sets forth facts to support the
statement; or
     (2) If the person to be examined is confined in prison;
or
     (3) If, without written stipulation of the parties, (i)
a proposed deposition would result in more than ten
depositions being taken by the plaintiffs, or by the
defendants, or (ii) the person to be examined already has
been deposed in the case.

See FRCP 30(a); "Effect of December 1, 1993 Amendments to
the Federal Rules of Civil Procedure on Trademark Trial and
Appeal Board Inter Partes Proceedings," 1159 TMOG 14
(February 1, 1994); Nabisco Brands Inc. v. Keebler Co., 28
USPQ2d 1237 (TTAB 1993); and Crown Wallcovering Corp. v.
Wall Paper Manufacturers Ltd., 188 USPQ 141 (TTAB 1975).

An opposition or cancellation proceeding commences when the
complaint, i.e., the notice of opposition or petition to
cancel, is filed.  See 37 CFR 2.101(a) and 2.111(a).  In
an interference or concurrent use proceeding, there is no
"complaint," as such; rather, the notice of institution and
accompanying materials take the place of a complaint, and
the proceeding commences when the Board mails the notice to
each party.  See 37 CFR 2.93, 2.99(c), and 2.99(d)(1), and
TBMP 1003 and 1105.

Discovery depositions must be both noticed and taken prior
to the expiration of the discovery period (unless the
parties stipulate that the deposition may be taken outside
of the period).  See Smith International, Inc. v. Olin
Corp., 201 USPQ 250 (TTAB 1978); Rhone-Poulenc Industries v.
Gulf Oil Corp., 198 USPQ 372 (TTAB 1978); and TBMP 403.02.



404.02  Compared to Testimony Depositions

A discovery deposition, like a testimony deposition, may be
taken either upon oral examination or upon written
questions.  See FRCP 26(a).  In fact, the actual taking of a
discovery deposition is very similar to the taking of a
testimony deposition.  Nevertheless, there are substantial
differences between the two, stemming from the differences
between the discovery and trial stages of a proceeding.
Some of the most significant differences are discussed
below.

A discovery deposition is a device used by a party to obtain
from an adversary information about the adversary's case, or
to obtain from a nonparty information which may be helpful
to the deposing party's case.  The discovery deposition is
taken of the adversary or a nonparty, or an official or
employee of the adversary or a nonparty.  A testimony
deposition, on the other hand, is a device used by a party
to present evidence in support of its own case.  During a
party's testimony period, testimony depositions are taken,
by or on behalf of the party, of the party himself or
herself (if the party is an individual), or of an official
or employee of the party, or of some other witness
testifying (either willingly or under subpoena) on behalf of
the party.  See Fischer Gesellschaft m.b.H. v. Molnar & Co.,
203 USPQ 861 (TTAB 1979); Smith International, Inc. v. Olin
Corp., 201 USPQ 250 (TTAB 1978); and Gary Krugman, TIPS FROM
THE TTAB:  Testimony Depositions, 70 Trademark Rep. 353
(1980).

The discovery deposition may only be taken during the
discovery period, which is ongoing for all parties at the
same time.  See Smith International, Inc. v. Olin Corp., 201
USPQ 250 (TTAB 1978); Rhone-Poulenc Industries v. Gulf Oil
Corp., 198 USPQ 372 (TTAB 1978); TBMP 403.02.  A testimony
deposition may only be taken by a party during the party's
assigned testimony period; each party has an assigned
testimony period, and only the party to which a particular
testimony period is assigned may take testimony therein.
See 37 CFR 2.121(a)(1).

In a discovery deposition, a party may seek information that
would be inadmissible at trial, provided that the
information sought appears reasonably calculated to lead to
the discovery of admissible evidence.  See FRCP 26(b)(1).
In a testimony deposition, a party may properly adduce only
evidence admissible under the applicable rules of evidence;
inadmissibility is a valid ground for objection.  See 37 CFR
2.122(a) and 2.123(k), and TBMP 534.

In both types of depositions, questions objected to
ordinarily should be answered subject to the objection, but
a witness may properly refuse to answer a question asking
for information which is, for example, privileged or
confidential.  See 37 CFR 2.123(e)(4); FRCP 26(b)(5),
30(c), and 37(a)(2)(B); FRE 501; 4A Moore's Federal
Practice,  30.59 (2d ed. 1984); and Wright & Miller,
Federal Practice and Procedure:  Civil 2113 (1970).   Both
types of depositions are taken out of the presence of the
Board, and if a witness not only objects to, but also
refuses to answer, a particular question, the propounding
party may obtain an immediate ruling on the propriety of the
objection only by adjourning the deposition and applying,
under 35 U.S.C. 24, to the Federal district court, in the
jurisdiction where the deposition is being taken, for an
order compelling the witness to answer.  See Ferro Corp. v.
SCM Corp., 219 USPQ 346 (TTAB 1983); Neville Chemical Co. v.
Lubrizol Corp., 183 USPQ 184 (TTAB 1974); S. Rudofker's
Sons, Inc. v. "42" Products, Ltd., 161 USPQ 499 (TTAB 1969);
and Bordenkircher v. Solis Entrialgo y Cia., S. A., 100 USPQ
268, 276-278 (Comm'r 1953).  In the case of a discovery
deposition, there is also available to the propounding party
the simpler and more convenient alternative of completing
the deposition and then filing a motion with the Board to
compel the witness to answer the unanswered question.  See
37 CFR 2.120(e) and Neville Chemical Co. v. Lubrizol Corp.,
supra.  A motion to compel is not available, however, in the
case of a testimony deposition taken in a proceeding before
the Board, nor is there any other mechanism for obtaining
from the Board, prior to final hearing, a ruling on the
propriety of an objection to a question propounded during a
testimony deposition.  See Ferro Corp. v. SCM Corp., supra;
S. Rudofker's Sons, Inc. v. "42" Products, Ltd., supra; and
Bordenkircher v. Solis Entrialgo y Cia., S. A., supra.
Accordingly, in those cases where the witness in a testimony
deposition refuses to answer a particular question; no court
action is sought; and the Board finds at final hearing that
the objection was not well taken, the Board may presume that
the answer would have been unfavorable to the position of
the party whose witness refused to answer, or may find that
the refusal to answer reduces the probative value of the
witness's testimony.  See TBMP 718.03(d), and authorities
cited therein.

A discovery deposition does not form part of the evidentiary
record in a case unless a party entitled to offer it into
evidence files, during the party's testimony period, the
deposition together with a notice of reliance thereon.  That
is, the offering of a discovery deposition in evidence is
voluntary, not mandatory.  See, for example, 37 CFR
2.120(j)(1), (j)(2), and (j)(3)(i); TMBP 709; Fischer
Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 867 (TTAB
1979); and Gary Krugman, TIPS FROM THE TTAB:  Testimony
Depositions, 70 Trademark Reporter 353 (1980).  Every
testimony deposition taken must be filed, and, when filed,
becomes part of the record; a notice of reliance thereon is
not necessary.  See generally 37 CFR 2.123, and TBMP
713.12.

For further information concerning differences between
discovery and testimony depositions, see Fischer
Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861 (TTAB
1979); Smith International, Inc. v. Olin Corp., 201 USPQ 250
(TTAB 1978); and Gary Krugman, TIPS FROM THE TTAB:
Testimony Depositions, 70 Trademark Rep. 353 (1980).



404.03  Securing Attendance of Deponent

404.03(a)  In General

A discovery deposition may be taken of any person, whether
or not the person is a party, and whether or not the person
resides in the United States.



404.03(b)  Person Residing in the United States

37 CFR 2.120(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 deposition may be taken either orally, or upon written
questions in the manner described in 37 CFR 2.124.  See
FRCP 26(a)(5), 30, and 31.  For information on the taking of
a deposition upon written questions, see TBMP 714.



404.03(b)(1)  Person Residing in United States--Party

If a proposed deponent residing in the United States is a
party, or, 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 FRCP 30(b)(6) or 31(a)(3) to testify
on behalf of a party, the deposition may be taken upon
notice alone.  See 37 CFR 2.120(b); FRCP 30(b);
Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582 (TTAB
1976); and Rany L. Simms, TIPS FROM THE TTAB:  Compelling
the Attendance of a Witness in Proceedings Before the Board,
75 Trademark Rep. 296 (1985).  For information concerning
notices of deposition, see TBMP 404.04.



404.03(b)(2)  Person Residing in United States--Nonparty

37 CFR 2.120(b) Discovery deposition within the United
States.
... 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)

If a proposed deponent residing in the United States is not
a party, or a person 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 FRCP 30(b)(6) or
31(a)(3) to testify on behalf of a party, the responsibility
rests wholly with the deposing party to secure the
attendance of the proposed deponent.  See 37 CFR 2.120(b).
If the proposed deponent is not willing to appear
voluntarily, the deposing party must secure the deponent's
attendance by subpoena, pursuant to 35 U.S.C. 24 and FRCP
45.  The subpoena must be issued from the United States
District Court in the Federal judicial district where the
deponent resides or is regularly employed.  See Kellogg Co.
v. New Generation Foods Inc., 6 USPQ2d 2045 (TTAB 1988);
Saul Lefkowitz and Janet E. Rice, Adversary Proceedings
Before the Trademark Trial and Appeal Board, 75 Trademark
Rep. 323, 383-384 (1985); Rany L. Simms, TIPS FROM THE TTAB:
Compelling the Attendance of a Witness in Proceedings Before
the Board, 75 Trademark Rep. 296 (1985); and FRCP 30(a)(1)
and 45.  Cf. Health-Tex Inc. v. Okabashi (U.S.) Corp., 18
USPQ2d 1409 (TTAB 1990); Consolidated Foods Corp. v. Ferro
Corp., 189 USPQ 582 (TTAB 1976); and TBMP 713.06(b).

If a person named in a subpoena compelling attendance at a
discovery deposition fails to attend the deposition, or
refuses to answer a question propounded at the deposition,
the deposing party must seek enforcement from the United
States District Court which issued the subpoena; the Board
has no jurisdiction over such depositions.  See, for
example, Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303 (TTAB
1987); In re Johnson & Johnson, 59 F.R.D. 174, 178 USPQ 201
(D.Del. 1973); PRD Electronics Inc. v. Pacific Roller Die
Co., 169 USPQ 318 (TTAB 1971); Saul Lefkowitz and Janet E.
Rice, Adversary Proceedings Before the Trademark Trial and
Appeal Board, 75 Trademark Rep. 323, 383-384 (1985); and
Rany L. Simms, TIPS FROM THE TTAB:  Compelling the
Attendance of a Witness in Proceedings Before the Board, 75
Trademark Rep. 296 (1985).



404.03(c)(1)  Person Residing in a Foreign Country--Party

37 CFR 2.120(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 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 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.

The discovery deposition of a natural person who resides in
a foreign country, and who is a party, or 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 FRCP 30(b)(6) or 31(a)(3) to testify on
behalf of a party, may be taken upon notice alone.  See 37
CFR 2.120(c) and 2.124.

However, if the discovery deposition of such a person is
taken in a foreign country, it must be taken upon written
questions, in the manner described in 37 CFR 2.124, unless
the Board, upon motion for good cause, orders, or the
parties stipulate, that the deposition be taken by oral
examination.  See 37 CFR 2.120(c)(1).  See also Orion Group
Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923 (TTAB
1989); Jonergin Co. v. Jonergin Vermont Inc., 222 USPQ 337
(Comm'r 1983); Saul Lefkowitz and Janet E. Rice, Adversary
Proceedings Before the Trademark Trial and Appeal Board, 75
Trademark Rep. 323, 384 (1985); Rany L. Simms, TIPS FROM THE
TTAB:  Compelling the Attendance of a Witness in Proceedings
Before the Board, 75 Trademark Rep. 296 (1985); and Janet E.
Rice, TIPS FROM THE TTAB:  Recent Changes in the TTAB
Discovery Rules, 74 Trademark Rep. 449 (1984).  Cf. TBMP
713.02.  For information on the taking of a deposition upon
written questions, see TBMP 714.

The Board will not order a natural person residing in a
foreign country to come to the United States for the taking
of his or her discovery deposition.  See Rhone-Poulenc
Industries v. Gulf Oil Corp., 198 USPQ 372 (TTAB 1978);
Miller v. N. V. Cacao-En Chocoladefabrieken Boon, 142 USPQ
364 (E.D. N.Y. 1964); and Louise E. Fruge, TIPS FROM THE
TTAB:  Depositions Upon Written Questions, 70 Trademark Rep.
253 (1980).  See also Jonergin Co. v. Jonergin Vermont Inc.,
222 USPQ 337 (Comm'r 1983).

However, whenever a natural person who is a foreign party,
or an officer, director, or managing agent, of a foreign
party, or some other person who consents to testify on a
foreign party's behalf, 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, officer, director, managing agent, or
other person may be deposed, while in the United States, by
oral examination upon notice pursuant to 37 CFR
2.120(c)(2).  See also Saul Lefkowitz and Janet E. Rice,
Adversary Proceedings Before the Trademark Trial and Appeal
Board, 75 Trademark Rep. 323 (1985); Rany L. Simms, TIPS
FROM THE TTAB:  Compelling the Attendance of a Witness in
Proceedings Before the Board, 75 Trademark Rep. 296 (1985);
and Janet E. Rice, TIPS FROM THE TTAB:  Recent Changes in
the TTAB Discovery Rules, 74 Trademark Rep. 449 (1984).
Indeed, this option was available even before the adoption
of 37 CFR 2.120(c)(2).  See Jonergin Co. v. Jonergin
Vermont Inc., 222 USPQ 337 (Comm'r 1983), and Rhone-Poulenc
Industries v. Gulf Oil Corp., 198 USPQ 372 (TTAB 1978).  The
place, within the United States, where the deposition is to
be taken is specified in 37 CFR 2.120(c)(2).



404.03(c)(2)  Person Residing in Foreign Country--Nonparty

The discovery deposition of a natural person who resides in
a foreign country, and is not a party, or an officer,
director, or managing agent of a party, or a person
designated under FRCP 30(b)(6) or 31(a)(3) to testify on
behalf of a party, but is willing to appear voluntarily to
be deposed, may be taken in the same manner as the discovery
deposition of a natural person who resides in a foreign
country and who is a party, i.e., in the manner described in
TBMP 404.03(c)(1).  Cf. 37 CFR 2.120(c) and 2.123(a).

There is no certain procedure for obtaining, in an inter
partes proceeding before the Board, the discovery deposition
of a natural person who resides in a foreign country, is not
a party, or an officer, director, or managing agent of a
party, or a person designated under FRCP 30(b)(6) or
31(a)(3) to testify on behalf of a party, and does not agree
to appear voluntarily to be deposed.  However, a party may
be able to obtain the discovery deposition of such a person
through the letter rogatory procedure, whereby an unwilling
nonparty witness in a foreign country sometimes may be
compelled to respond to questions routed through diplomatic
channels to an appropriate judicial authority in the foreign
country.  See, in general, Rany L. Simms, TIPS FROM THE
TTAB:  Compelling the Attendance of a Witness in Proceedings
Before the Board, 75 Trademark Rep. 296 (1985).  Cf. DBMS
Consultants Ltd. v. Computer Associates International, Inc.,
18 FR Serv3d 33, 131 FRD 367 (D. Mass. 1990).

The term "Letters rogatory" is defined in Black's Law
Dictionary (Fifth Edition 1979) as follows (emphasis in last
paragraph added):

     A request by one court of another court in an
     independent jurisdiction, that a witness be
     examined upon interrogatories sent with the
     request.  The medium whereby one country,
     speaking through one of its courts, requests
     another country, acting through its own courts
     and by methods of court procedure peculiar
     thereto and entirely within the latter's con-
     trol, to assist the administration of justice
     in the former country.  The Signe, D.C.La.,
     37 F. Supp. 819, 820.

     A formal communication in writing, sent by a
     court in which an action is pending to a court
     or judge of a foreign country, requesting that
     the testimony of a witness resident within the
     jurisdiction of the latter court may be there
     formally taken under its direction and trans-
     mitted to the first court for use in the pend-
     ing action.  Fed.R.Civil P. 28.

     This process was also in use, at an early pe-
     riod, between the several states of the Union.
     The request rests entirely upon the comity of
     courts towards each other.

A party which wishes to have the Board issue a letter
rogatory should file a written request therefor with the
Board.  See FRCP 28(b).  The party must also submit an
original and two copies of the proposed letter rogatory, and
an original and two copies of the questions to be propounded
to the nonparty witness.  If the official language of the
foreign country is not English, the propounding party must
submit an original and two copies of the letter rogatory and
questions in English, and an original and two copies thereof
translated into the official language.  In addition, the
propounding party must serve upon each adverse party a copy
of every paper submitted to the Board.  See 37 CFR
2.119(a).  Cf. 37 CFR 2.124(b)(2).

If the request is granted, each adverse party will be given
an opportunity to submit cross questions, a copy of which
must also be served upon the propounding party.  If an
adverse party does submit cross questions, the propounding
party, in turn, will be given an opportunity to submit
redirect questions, a copy of which must be served upon each
adverse party.  Cf. 37 CFR 2.124(d)(1).  As in the case of
the initial questions, an original and two copies of any
cross questions and redirect questions must be submitted to
the Board; if the official language of the foreign country
is not English, an original and two copies of the questions
in English, and an original and two copies thereof
translated into the official language, must be submitted.

After the original and copies of the letter rogatory, and of
all of the questions, have been submitted to the Board, and
the letter rogatory has been approved as to form, the letter
rogatory will be issued by the Board.  The letter rogatory
will be signed by the Chairman of the Board; the signature
will be authenticated in such a manner at to meet the
requirements of the foreign country; and the original and
one copy of the letter rogatory and accompanying questions
will be forwarded to the United States Department of State
with a transmittal letter from the Board (the remaining copy
of these papers will be retained in the Board proceeding
file).  In its transmittal letter, the Board will request,
pursuant to 28 U.S.C. 1781 (which authorizes the Department
of State to, inter alia, "receive a letter rogatory issued,
or request made, by a tribunal in the United States, to
transmit it to the foreign or international tribunal,
officer, or agency to whom it is addressed, and to receive
and return it after execution"), that the Department of
State transmit the letter rogatory to the appropriate
judicial authority in the foreign country, and, after
execution, receive it back and return it to the Board.
Thereafter, the Department of State will transmit the letter
rogatory, through diplomatic channels, to the appropriate
judicial authority in the foreign country.

The party seeking discovery must pay all fees, including
authentication, consular, and foreign government fees,
charged in connection with the letter rogatory procedure.
The Department of State will require the propounding party
to make a deposit to cover the consular and foreign
government fees.  Payment may be made by certified check or
money order made payable to the American Embassy/Consulate
[insert the name of the appropriate city, i.e., Paris, Bonn,
Tokyo, etc.].  Any unused portion of the deposit will be
returned to the depositor after completion of the letter
rogatory process.

Further information concerning the letter rogatory process
may be obtained from the Office of Citizens Consular
Services, Department of State, 2201 C Street N.W.,
Washington, D.C. 20520.

Once the letter rogatory has been received by the
appropriate foreign judicial authority, it may or may not be
executed.  As indicated above, the letter rogatory "rests
entirely upon the comity of courts towards each other."
Some countries refuse or are reluctant to lend assistance in
the taking of a discovery deposition in their country
through the letter rogatory procedure, and compliance with
the procedural requirements for a letter rogatory does not
ensure that the requested deposition will be completed.  See
NOTES OF ADVISORY COMMITTEE ON RULES, Advisory Committee
Note of 1963 to FRCP 28(b), and Wright & Miller, Federal
Practice and Procedure:  Civil 2d 2083 (1970).  Before a
request for issuance of a letter rogatory is filed with the
Board, the requesting party should examine the law and
policy of the involved foreign country, and consult with the
Office of Citizens Consular Services, Department of State,
in order to determine whether the country in question is
likely to honor a letter rogatory, particularly a letter
rogatory issued by the Board.

Even in those foreign countries which are not reluctant to
execute a letter rogatory, the foreign judicial authority
may refuse to honor a letter rogatory issued by the Board
(an administrative tribunal) rather than by a United States
district court.  Further, if the foreign country has a
"blocking statute" prohibiting its residents from disclosing
certain types of information in judicial or administrative
proceedings outside of the foreign country, a letter
rogatory may not be honored if the foreign judicial
authority believes that disclosure of the information
requested therein would violate the blocking statute.  See
Rany L. Simms, TIPS FROM THE TTAB:  Compelling the
Attendance of a Witness in Proceedings Before the Board, 75
Trademark Rep. 296 (1985).

If a letter rogatory is honored, its probative value may be
limited.  In executing the letter rogatory, the foreign
judicial tribunal will follow its customary procedures for
taking testimony.  The fact that these procedures may differ
from those normally followed in proceedings before the Board
does not mean that the deposition must necessarily be
excluded.  Rather, any such differences are matters to be
considered by the Board in determining the probative value
of the deposition.  See FRCP 28; NOTES OF ADVISORY COMMITTEE
ON RULES, Advisory Committee Note of 1963 to FRCP 28(b); 4
Moore's Federal Practice, 28.05 (2d ed. 1984); and Wright &
Miller, Federal Practice and Procedure:  Civil 2d 2083
(1970).

A party considering the filing of a request for issuance of
a letter rogatory should bear in mind not only the
complexity and uncertain outcome of the procedure, but also
its time-consuming nature.  The entire process, from the
filing of the initial request for issuance of a letter
rogatory, to receipt by the Board either of the completed
deposition, or of notification that the letter rogatory will
not be honored, will consume months, if not years.  During
the interim, proceedings in the case before the Board most
likely will be suspended pending the execution and return to
the Board of the letter rogatory.  Cf. 37 CFR 2.124(d)(2).

The Hague Convention on the Taking of Evidence Abroad in
Civil or Commercial Matters (commonly known as the "Hague
Convention"), opened for signature March 18, 1970, 23 U.S.T.
2555, T.I.A.S. No. 7444, prescribes procedures under which a
judicial authority in one member country may request
evidence located in another.  The Convention offers another
possible method by which a party to an inter partes
proceeding before the Board may attempt to obtain the
discovery deposition of an unwilling nonparty witness
residing in a foreign country, if the foreign country is a
member of the Convention.  See, for example, Societe
Nationale Industrielle Aerospatiale v. U.S. District Court
for the Southern District of Iowa, 482 U.S. 522 (1987); In
re Anschuetz & Co., GmbH, 838 F.2d 1362 (5th Cir. 1988);
Wright & Miller, Federal Practice and Procedure:  Civil 2d
2005 (1970); and Rany L. Simms, TIPS FROM THE TTAB:
Compelling the Attendance of a Witness in Proceedings Before
the Board, 75 Trademark Rep. 296 (1985).  For general
information concerning the Hague Convention, see Double J of
Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609
(TTAB 1991) [NOTE:  this case involved the taking of
discovery by interrogatories, requests for production of
documents, and requests for admissions, rather than by
deposition].

The Hague Convention provides for the compulsion of evidence
(including the deposition of an unwilling witness) in a
member country pursuant to a "letter of request," which is
very similar in nature to a letter rogatory.  For
information concerning the letter of request procedure under
the Hague Convention, see Chapter 1 of the Convention.  See
also Double J of Broward Inc. v. Skalony Sportswear GmbH, 21
USPQ2d 1609 (TTAB 1991).  However, the Board has been
advised by the Department of State that foreign countries
are more likely to lend assistance in the taking of a
discovery deposition if the request therefor is made under
the more formal letter rogatory procedure.  Before filing a
motion for issuance of a letter of request, the moving party
should consult with the Office of Citizens Consular
Services, Department of State, in order to determine whether
the foreign country in question is likely to honor a letter
of request, particularly a letter of request issued by the
Board.



404.04  Notice of Deposition

FRCP 30(b) Notice of Examination:  General Requirements; ...
(1) A party desiring to take the deposition of any person
upon oral examination shall give reasonable notice in
writing to every other party to the action.  The notice
shall state the time and place for taking the deposition and
the name and address of each person to be examined, if
known, and, if the name is not known, a general description
sufficient to identify the person or the particular class or
group to which the person belongs. ...

37 CFR 2.124(b)(2) A party desiring to take a discovery
deposition upon written questions shall serve notice thereof
upon each adverse party and shall file a copy of the notice,
but not copies of the questions, with the Board.  The notice
shall state the name and address, if known, of the person
whose deposition is to be taken.  If the name of the person
is not known, a general description sufficient to identify
him or the particular class or group to which he belongs
shall be stated in the notice, and the party from whom the
discovery deposition is to be taken shall designate one or
more persons to be deposed in the same manner as is provided
by Rule 30(b)(6) of the Federal Rules of Civil Procedure.

(c) Every notice given under the provisions of paragraph (b)
of this section shall be accompanied by the name or
descriptive title of the officer before whom the deposition
is to be taken.

In an inter partes proceeding before the Board, the
discovery deposition of a natural person who is a party, or
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 FRCP 30(b)(6) or 31(a)(3) to testify on
behalf of a party, may be taken upon notice alone.

Prior to the taking of a discovery deposition upon notice
alone, the party seeking to take the deposition ("the
deposing party") must give reasonable notice in writing to
every adverse party.  See FRCP 30(b)(1), and 37 CFR
2.120(c), 2.124(b)(2), and 2.124(c).  Cf. 37 CFR
2.123(c); FRCP 31(a)(3); and TBMP 713.05.  The elements to
be included in the notice are specified in FRCP 30(b)(1),
for a deposition upon oral examination, and in 37 CFR
2.124(b)(2) and 2.124(c), for a deposition upon written
questions.  It is strongly recommended that the deposing
party contact the party sought to be deposed (or whose
officer, director, etc., is sought to be deposed) well in
advance of the proposed deposition in order to arrange a
mutually convenient time for the deposition.  The deposition
must be taken prior to the expiration of the discovery
period (unless the parties stipulate that the deposition may
be taken outside of the period).  See TBMP 403.02.

In noticing the deposition of a corporation, partnership,
association, governmental agency, or other juristic person,
the deposing party may, in lieu of naming a person to be
deposed, simply name as the deponent the corporation,
partnership, association, governmental agency, or other
juristic person, and describe with reasonable particularity
the matters on which examination is requested.  The named
organization must, in turn, designate one or more officers,
directors, or managing agents, or other persons who consent
to testify on its behalf, and may state, for each person
designated, the matters on which he or she will testify.
Each designated person must testify not only as to those
matters within his or her knowledge, but also as to matters
known or reasonably available to the organization.  See FRCP
30(b)(6) and 31(a)(3), and Saul Lefkowitz and Janet E. Rice,
Adversary Proceedings Before the Trademark Trial and Appeal
Board, 75 Trademark Rep. 323, 383 (1985).

The discovery deposition of a person who resides in the
United States must be taken in the Federal judicial district
where the deponent resides or is regularly employed or at
any place on which the parties agree by stipulation.  See 37
CFR 2.120(b).

When the discovery deposition of a foreign party, or an
officer, director, managing agent, or other person who
consents to testify on behalf of a foreign party, is taken
in the United States by oral examination pursuant to 37 CFR
2.120(c)(2), the deposition must 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.  See 37 CFR
52.120(c)(2).



404.05  Taking a Discovery Deposition

The procedure for taking a discovery deposition in an inter
partes proceeding before the Board is very similar to that
for taking a testimony deposition.  See Hewlett-Packard Co.
v. Healthcare Personnel Inc., 21 USPQ2d 1552 (TTAB 1991).
For information concerning the procedure for taking a
testimony deposition, see TBMP 713 and 714.  For a
discussion of significant differences between the two types
of depositions, see TBMP 404.02.

Upon stipulation of the parties, or upon motion granted by
the Board, a deposition may be taken or attended by
telephone.  See FRCP 30(b)(7), and Hewlett-Packard Co. v.
Healthcare Personnel Inc., 21 USPQ2d 1552 (TTAB 1991).  A
deposition taken by telephone is taken in the Federal
judicial district and at the place where the witness is to
answer the questions propounded to him or her.



405  Discovery Deposition Objections

405.01  Objections to Notice

Objections to errors and irregularities in a notice of the
taking of a discovery deposition must be promptly served, in
writing, on the party giving the notice; any such objections
which are not promptly served are waived.  See FRCP
32(d)(1).  Cf. 37 CFR 2.123(j).  Cf. also Of Counsel Inc.
v. Strictly of Counsel Chartered, 21 USPQ2d 1555 (TTAB
1991); Steiger Tractor, Inc. v. Steiner Corp., 221 USPQ 165
(TTAB 1984), different results reached on reh'g, 3 USPQ2d
1708 (TTAB 1984); Hamilton Burr Publishing Co. v. E. W.
Communications, Inc., 216 USPQ 802, 804 (TTAB 1982); Miss
Nude Florida, Inc. v. Drost, 193 USPQ 729 (TTAB 1976),
petition to Commissioner denied, 198 USPQ 485 (Comm'r 1977);
O.M. Scott & Sons Co. v. Ferry-Morse Seed Co., 190 USPQ 352
(TTAB 1976); and Allstate Life Insurance Co. v. Cuna
International, Inc., 169 USPQ 313 (TTAB 1971), aff'd without
opinion, 487 F.2d 1407, 180 USPQ 48 (CCPA 1973).



405.02  Objections as to Disqualification of Officer

An objection to the taking of a discovery deposition because
of a disqualification of the officer before whom the
deposition is to be taken, is waived unless it is made
before the deposition begins, or as soon thereafter as the
disqualification becomes known or could be discovered with
reasonable diligence.  See FRCP 32(d)(2).  Cf. 37 CFR
2.123(j).



405.03  Objections During Deposition

FRCP 32(d)(3)(A) Objections to the competency of a witness
or to the competency, relevancy, or materiality of testimony
are not waived by failure to make them before or during the
taking of the deposition, unless the ground of the objection
is one which might have been obviated or removed if
presented at that time.

(B) Errors and irregularities occurring at the oral
examination in the manner of taking the deposition, in the
form of the questions or answers, in the oath or
affirmation, or in the conduct of parties, and errors of any
kind which might be obviated, removed, or cured if promptly
presented, are waived unless seasonable objection thereto is
made at the taking of the deposition.

Objections to the competency of a witness or to the
competency, relevancy, or materiality of discovery
deposition testimony "are not waived by failure to make them
before or during the taking of the deposition, unless the
ground of the objection is one which might have been
obviated or removed if presented at that time."  See FRCP
32(d)(3)(A).  Cf. 37 CFR 2.123(k).

In the case of a discovery deposition taken upon oral
examination, objections to errors and irregularities
occurring at the deposition in the manner of taking the
deposition, in the form of the questions or answers, in the
oath or affirmation, or in the conduct of the parties, and
objections to errors of any kind which might be obviated,
removed, or cured if promptly presented, are waived unless
seasonably made at the deposition.  See FRCP 32(d)(3)(B).
Cf. 37 CFR 2.123(j).

If a party believes that a question propounded at a
discovery deposition is improper, it may state its objection
thereto.  Questions objected to ordinarily should be
answered subject to the objection, but a witness may
properly refuse to answer a question asking for information
which is, for example, privileged or confidential.  See 37
CFR 2.123(e)(4); FRCP 26(b), 30(c), and 37(a); FRE 501; 4A
Moore's Federal Practice, 30.59 (2d ed. 1984); and Wright &
Miller, Federal Practice and Procedure:  Civil 2113 (1970).
See also Johnston Pump/General Valve Inc. v. Chromalloy
American Corp., 10 USPQ2d 1671 (TTAB 1988); Fischer
Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 866 (TTAB
1979); and Neville Chemical Co. v. Lubrizol Corp., 183 USPQ
184 (TTAB 1974).

If a witness, having stated an objection to a discovery
deposition question, answers the question subject to the
objection, and the deposition is subsequently made of record
in the proceeding pursuant to the provisions of 37 CFR
2.120(j)(1), (2), (3)(i), and (4), the propriety of the
objection will be considered by the Board at final hearing;
that is, the Board will evaluate the testimony in light of
the stated objection.  See 37 CFR 2.120(j)(3)(i), and
Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184 (TTAB
1974).

For information concerning the propounding party's options
if a witness not only objects to, but also refuses to
answer, a particular question, see TBMP 415.03.


406  Interrogatories

406.01  When and By Whom Served

During the discovery period in an inter partes proceeding
before the Board, any party may serve written
interrogatories upon any other party.  See TBMP 403.01.
Interrogatories may be served upon the plaintiff after the
proceeding commences (i.e., after the notice of opposition
or petition to cancel is filed, in an opposition or
cancellation, or after the notice of institution is mailed,
in an interference or concurrent use proceeding), and upon
the defendant with or after service by the Board of the
"complaint" (i.e., the notice of opposition or petition for
cancellation, in an opposition or cancellation proceeding;
and the notice of institution, in an interference or
concurrent use proceeding).  See TBMP 403.02.

Interrogatories may be served upon an adversary through the
last day of discovery, even though the answers thereto will
not be served until after the discovery period has closed.
See TBMP 403.02.



406.02  Scope

Interrogatories may seek any information which is
discoverable under FRCP 26(b)(1).  See FRCP 33(c).  An
interrogatory which is otherwise proper is not necessarily
objectionable merely because it requires a party to give an
opinion or contention that relates to fact or the
application of law to fact.  See FRCP 33(b); Johnston
Pump/General Valve Inc. v. Chromalloy American Corp., 10
USPQ2d 1671 (TTAB 1988); and Gould Inc. v. Sanyo Electric
Co., 179 USPQ 313 (TTAB 1973).



406.03  Limit on Number

406.03(a)  Description of Limit

37 CFR 2.120(d)(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. ...

For information concerning motions for leave to serve
additional interrogatories, see TBMP 519.



406.03(b)  Application of Limit:  Sets of Interrogatories

The numerical limit of 37 CFR 2.120(d)(1) pertains to the
total number of interrogatories that one party may serve
upon another party over the course of an entire proceeding,
not just per set of interrogatories.  Thus, if a party to a
proceeding before the Board serves, over the course of the
proceeding, two or more separate sets of interrogatories
directed to the same party, the interrogatories in the
separate sets will be added together for purposes of
determining whether the numerical limit specified in the
rule has been exceeded.  See Baron Phillippe De Rothschild
S.A. v. S. Rothschild & Co., 16 UPSQ2d 1466 (TTAB 1990);
Notice of Final Rulemaking published in the Federal Register
on August 22, 1989 at 54 FR 34886 and in the Official
Gazette of September 12, 1989 at 1106 TMOG 26; and Carla
Calcagno, TIPS FROM THE TTAB:  Discovery Practice Under
Trademark Rule 2.120(d)(1), 80 Trademark Rep. 285 (1990).

Accordingly, a party which is preparing a first set of
interrogatories should reserve a portion of its allotted 75
interrogatories (counting subparts) to use for follow-up
discovery, unless it is sure that it will not be serving
follow-up interrogatories.



406.03(c)  Application of Limit:  Multiple Marks, Etc.

Rule 2.120(d)(1) does not provide for extra interrogatories
in cases where more than one mark is pleaded and/or attacked
by the plaintiff (whether in a single proceeding, or in
consolidated proceedings), because in such cases, the
propounding party may simply request that each interrogatory
be answered with respect to each involved mark of the
responding party, and the interrogatories will be counted
the same as if they pertained to only one mark.  Similarly,
the rule does not provide for extra interrogatories in cases
where there is a counterclaim, because in a proceeding
before the Board, the discovery information needed by a
party for purposes of litigating the plaintiff's claim
usually encompasses the information needed by that party for
purposes of litigating a counterclaim.  That is, the mere
fact that a proceeding involves multiple marks (whether in a
single proceeding, or in consolidated proceedings) and/or a
counterclaim does not mean that a party is entitled to serve
75 interrogatories, counting subparts, for each mark, or for
each proceeding that has been consolidated, or for both the
main claim and the counterclaim.  Nor does such fact, in and
of itself, constitute good cause for a motion for leave to
serve additional interrogatories.  However, a proceeding
with multiple marks and/or a counterclaim may involve
unusually numerous or complex issues, and these are factors
which will be considered in determining a motion for leave
to serve additional interrogatories.  See Notice of Final
Rulemaking, published in the Federal Register on August 22,
1989 at 54 FR 34886 and in the Official Gazette of September
12, 1989 at 1106 TMOG 26, and Carla Calcagno, TIPS FROM THE
TTAB:  Discovery Practice Under Trademark Rule 2.120(d)(1),
80 Trademark Rep. 285 (1990).



406.03(d)  Application of Limit:  Counting Interrogatories

In determining whether the number of interrogatories served
by one party upon another exceeds the limit of 37 CFR
2.120(d)(1), the Board will count each subpart within an
interrogatory as a separate interrogatory, regardless of
whether the subpart is separately designated (i.e.,
separately numbered or lettered).  See Jan Bell Marketing,
Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636 (TTAB
1990); Pyttronic Industries, Inc. v. Terk Technologies
Corp., 16 USPQ2d 2055 (TTAB 1990); Kellogg Co. v. Nugget
Distributors' Cooperative of America, Inc., 16 USPQ2d 1468
(TTAB 1990); Brawn of California Inc. v. Bonnie Sportswear
Ltd., 15 USPQ2d 1572 (TTAB 1990); and Carla Calcagno, TIPS
FROM THE TTAB:  Discovery Practice Under Trademark Rule
2.120(d)(1), 80 Trademark Rep. 285 (1990).

If an interrogatory includes questions set forth as numbered
or lettered subparts, each separately designated subpart
will be counted by the Board as a separate interrogatory.
The propounding party will, to that extent, be bound by its
own numbering system, and will not be heard to complain that
an interrogatory, although propounded with separately
designated subparts, should nevertheless be counted as a
single interrogatory because the interrogatory concerns a
single transaction, state of facts, etc., or because the
division was made for clarification or convenience.  See Jan
Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d
1636 (TTAB 1990); Pyttronic Industries, Inc. v. Terk
Technologies Corp., 16 USPQ2d 2055 (TTAB 1990); and Carla
Calcagno, TIPS FROM THE TTAB:  Discovery Practice Under
Trademark Rule 2.120(d)(1), 80 Trademark Rep. 285 (1990).

On the other hand, if a propounding party sets forth its
interrogatories as 75 or fewer separately designated
questions (counting both separately designated
interrogatories and separately designated subparts), but the
interrogatories actually contain more than 75 questions, the
Board will not be bound by the propounding party's numbering
or designating system.  Rather, the Board will look to the
substance of the interrogatories, and count each question as
a separate interrogatory.  See Jan Bell Marketing, Inc. v.
Centennial Jewelers, Inc., 19 USPQ2d 1636 (TTAB 1990), and
Carla Calcagno, TIPS FROM THE TTAB:  Discovery Practice
Under Trademark Rule 2.120(d)(1), 80 Trademark Rep. 285
(1990).

For example, if two or more questions are combined in a
single compound interrogatory, and are not set out as
separate subparts, the Board will look to the substance of
the interrogatory, and count each question as a separate
interrogatory.  See Jan Bell Marketing, Inc. v. Centennial
Jewelers, Inc., 19 USPQ2d 1636 (TTAB 1990); Kellogg Co. v.
Nugget Distributors' Cooperative of America, Inc., 16 USPQ2d
1468 (TTAB 1990); and Carla Calcagno, TIPS FROM THE TTAB:
Discovery Practice Under Trademark Rule 2.120(d)(1), 80
Trademark Rep. 285 (1990).

If an interrogatory contains both an initial question, and
follow-up questions to be answered if the first is answered
in the affirmative, the initial question and each follow-up
question will be counted as separate interrogatories.  See
Kellogg Co. v. Nugget Distributors' Cooperative of America,
Inc., 16 USPQ2d 1468 (TTAB 1990), and Carla Calcagno, TIPS
FROM THE TTAB:  Discovery Practice Under Trademark Rule
2.120(d)(1), 80 Trademark Rep. 285 (1990).

Similarly, if an interrogatory begins with a broad
introductory clause ("Describe fully the facts and
circumstances surrounding applicant's first use of the mark
XYZ, including:") followed by several subparts ("Applicant's
date of first use of the mark on the goods listed in the
application," "Applicant's date of first use of the mark on
such goods in commerce," etc.), the Board will count the
broad introductory clause and each subpart as a separate
interrogatory, whether or not the subparts are separately
designated.  Cf. Kellogg Co. v. Nugget Distributors'
Cooperative of America, Inc., 16 USPQ2d 1468 (TTAB 1990),
and Carla Calcagno, TIPS FROM THE TTAB:  Discovery Practice
Under Trademark Rule 2.120(d)(1), 80 Trademark Rep. 285
(1990).

If an interrogatory requests information concerning more
than one issue, such as information concerning both "sales
and advertising figures," or both "adoption and use," the
Board will count each issue on which information is sought
as a separate interrogatory.  In contrast, if an
interrogatory requests "all relevant facts and
circumstances" concerning a single issue, event, or matter;
or asks that a particular piece of information, such as, for
example, annual sales figures under a mark, be given for
multiple years, and/or for each of the responding party's
involved marks, it will be counted as a single
interrogatory.  See Carla Calcagno, TIPS FROM THE TTAB:
Discovery Practice Under Trademark Rule 2.120(d)(1), 80
Trademark Rep. 285 (1990), and Notice of Final Rulemaking,
published in the Federal Register on August 22, 1989 at 54
FR 34886 and in the Official Gazette of September 12, 1989
at 1106 TMOG 26.

The introductory instructions or preamble to a set of
interrogatories will not be counted by the Board as
interrogatories or subparts for purposes of determining
whether the limit specified in 37 CFR 2.120(d)(1) has been
exceeded.  On the other hand, the Board's determination, on
a motion to compel, of the adequacy of an interrogatory
answer will not be governed by the introductory instructions
or preamble; the Board is not bound by the instructions or
preamble, and will make its own independent determination of
the adequacy of the answer, without regard to the
instructions or preamble.  See Avia Group International Inc.
v. Faraut, 25 USPQ2d 1625 (TTAB 1992), and Carla Calcagno,
TIPS FROM THE TTAB:  Discovery Practice Under Trademark Rule
2.120(d)(1), 80 Trademark Rep. 285 (1990).



406.03(e)  Remedy for Excessive Interrogatories

37 CFR 2.120(d)(1) ... If a party upon which
interrogatories have been served believes that the number of
interrogatories served exceed 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.

If a party upon which interrogatories have been served, in a
proceeding before the Board, believes that the number of
interrogatories served exceeds the limit specified in 37 CFR
2.120(d)(1), and wishes to object to the interrogatories on
this basis, the party must, 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.  See 37 CFR 2.120(d)(1); Notice of
Final Rulemaking, published in the Federal Register on
September 12, 1991 at 56 FR 46376 and in the Official
Gazette of October 22, 1991 at 1131 TMOG 54, as corrected in
the Federal Register of October 23, 1991 at 56 FR 54917; and
Helen R. Wendel, TIPS FROM THE UNITED STATES PATENT AND
TRADEMARK OFFICE TTAB:  The Burden Shifts:  Revised
Discovery Practice Under Trademark Rule 2.120(d)(1), 82
Trademark Rep. 89 (1992).

If a general objection on the ground of excessive number is
asserted, and the propounding party, in turn, believes that
the objection is not well taken, and wishes to obtain an
adjudication from the Board as to the sufficiency thereof,
the propounding party must file 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 Rule 2.120(e), including the requirement
that a motion to compel be supported by a written statement
from the moving party that such party or its attorney has
made a good faith effort, by conference or correspondence,
to resolve with the other party or its attorney the issues
presented in the motion and has been unable to reach
agreement. See 37 CFR 2.120(d)(1) and 2.120(e); Notice of
Final Rulemaking, published in the Federal Register on
September 12, 1991 at 56 FR 46376 and in the Official
Gazette of October 22, 1991 at 1131 TMOG 54, as corrected in
the Federal Register of October 23, 1991 at 56 FR 54917; and
Helen R. Wendel, TIPS FROM THE UNITED STATES PATENT AND
TRADEMARK OFFICE TTAB:  The Burden Shifts:  Revised
Discovery Practice Under Trademark Rule 2.120(d)(1), 82
Trademark Rep. 89 (1992).  For further information
concerning motions to compel discovery, see TBMP 523.

If, upon determining a motion to compel filed in response to
a general objection to interrogatories on the ground of
excessive number, the Board finds that the interrogatories
are excessive in number, and that the propounding party has
not previously used up its allotted 75 interrogatories, the
Board normally will allow the propounding party an
opportunity to serve a revised set of interrogatories not
exceeding the numerical limit.  The revised set of
interrogatories serves as a substitute for the excessive
set, and thus is deemed timely if the excessive set was
timely.  See Jan Bell Marketing, Inc. v. Centennial
Jewelers, Inc., 19 USPQ2d 1636 (TTAB 1990); Pyttronic
Industries, Inc. v. Terk Technologies Corp., 16 USPQ2d 2055
(TTAB 1990); Kellogg Co. v. Nugget Distributors' Cooperative
of America, Inc., 16 USPQ2d 1468 (TTAB 1990); Towers,
Perrin, Forster & Crosby Inc. v. Circle Consulting Group
Inc., 16 USPQ2d 1398 (TTAB 1990); Brawn of California Inc.
v. Bonnie Sportswear Ltd., 15 USPQ2d 1572 (TTAB 1990); See
Rule 2.120(d)(1); Notice of Final Rulemaking, published in
the Federal Register on September 12, 1991 at 56 FR 46376
and in the Official Gazette of October 22, 1991 at 1131 TMOG
54, as corrected in the Federal Register of October 23, 1991
at 56 FR 54917; and Helen R. Wendel, TIPS FROM THE UNITED
STATES PATENT AND TRADEMARK OFFICE TTAB:  The Burden Shifts:
Revised Discovery Practice Under Trademark Rule 2.120(d)(1),
82 Trademark Rep. 89 (1992).  Cf. Baron Phillippe De
Rothschild S.A. v. S. Rothschild & Co., 16 UPSQ2d 1466 (TTAB
1990).  However, if the revised set is not served until
after the close of the discovery period, the scope of the
revised set may not exceed the scope of the excessive set,
that is, the revised set may not seek information not sought
in the excessive set.   See Jan Bell Marketing, Inc. v.
Centennial Jewelers, Inc., 19 USPQ2d 1636 (TTAB 1990);
Kellogg Co. v. Nugget Distributors' Cooperative of America,
Inc., 16 USPQ2d 1468 (TTAB 1990); Notice of Final
Rulemaking, supra; and Helen R. Wendel, TIPS FROM THE UNITED
STATES PATENT AND TRADEMARK OFFICE TTAB:  The Burden Shifts:
Revised Discovery Practice Under Trademark Rule 2.120(d)(1),
supra.  In those cases where a party which has propounded
interrogatories realizes, upon receipt of a general
objection thereto on the ground of excessive number, that
the interrogatories are, in fact, excessive in number, it is
strongly recommended that the parties voluntarily agree to
the service of a revised set of interrogatories, in the
manner normally allowed by the Board, instead of bringing
their dispute to the Board by motion to compel.  See Notice
of Final Rulemaking, supra, and Helen R. Wendel, TIPS FROM
THE UNITED STATES PATENT AND TRADEMARK OFFICE TTAB:  The
Burden Shifts:  Revised Discovery Practice Under Trademark
Rule 2.120(d)(1), supra.



407  Responses to Interrogatories

407.01  Time for Service of Responses

Responses to interrogatories must be served within 30 days
after the date of service of the interrogatories, except
that a defendant may serve responses either within 30 days
after service of the interrogatories, or within 45 days
after service of the complaint upon it by the Board,
whichever is later.  See TBMP 403.03.  If service of the
interrogatories is made by first-class mail, "Express Mail,"
or overnight courier, the date of mailing or of delivery to
the overnight courier is considered to be the date of
service, and five extra days are allowed for responding to
the interrogatories.  See 37 CFR 2.119(c), and TBMP
113.05 and 403.03.

A party which fails to respond to interrogatories during the
time allowed therefor, and which is unable to show that its
failure was the result of excusable neglect, may be found,
upon motion to compel filed by the propounding party, to
have forfeited its right to object to the interrogatories on
their merits.  See Bison Corp. v. Perfecta Chemie B.V., 4
USPQ2d 1718 (TTAB 1987); Luehrmann v. Kwik Kopy Corp., 2
USPQ2d 1303 (TTAB 1987); Envirotech Corp. v. Compagnie Des
Lampes, 219 USPQ 448 (TTAB 1979); MacMillan Bloedel Ltd. v.
Arrow-M Corp., 203 USPQ 952 (TTAB 1979); and Crane Co. v.
Shimano Industrial Co., 184 USPQ 691 (TTAB 1975).



407.02  Nature of Responses

Ordinarily, a party upon which interrogatories have been
served should respond to them by stating, with respect to
each interrogatory, either an answer or an objection.  If an
interrogatory is answered, the answer must be made
separately and fully, in writing under oath.  If an
interrogatory is objected to, the reasons for objection must
be stated in lieu of an answer.  See FRCP 33(b).  If a
responding party believes that the number of interrogatories
served exceeds the limit specified in 37 CFR 2.120(d)(1),
and wishes to object to the interrogatories on this basis,
the party must, 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.  See 37 CFR 2.120(d)(1), and TBMP 406.03(e).

The Board prefers that the responding party reproduce each
interrogatory immediately preceding the answer or objection
thereto.  See G. Douglas Hohein, TIPS FROM THE TTAB:
Potpourri, 71 Trademark Rep. 163 (1981).

In some cases, the information sought in an interrogatory
may be derived or ascertained from the business records of
the responding party, or from an examination, audit, or
inspection of those business records (including a
compilation, abstract, or summary thereof), and the burden
of deriving or ascertaining the information is substantially
the same for the propounding party as for the responding
party.  In those cases, the responding party may answer the
interrogatory by itself providing, in its written answer to
the interrogatory, the information sought.  Alternatively,
the responding party may answer the interrogatory by
specifying the records from which the information may be
derived or ascertained, and affording to the propounding
party reasonable opportunity to examine, audit, or inspect
the records and to make copies, compilations, abstracts, or
summaries.  If the responding party elects to answer an
interrogatory by specifying and producing business records,
the specification must be in sufficient detail to permit the
propounding party to locate and identify, as readily as can
the responding party, the records from which the answer may
be ascertained.  See FRCP 33(c).

It is generally inappropriate for a party to respond to
interrogatories by filing a motion attacking them, such as a
motion to strike, a motion to suppress, a motion for a
protective order, etc.  Rather, the party ordinarily should
respond by answering those interrogatories which it believes
to be proper and stating its objections to those which it
believes to be improper.  See TBMP 414.



407.03  Signature of Responses

Interrogatories must be answered by the party served.  If
the party served is a corporation, partnership, association,
or governmental agency, the interrogatories must be answered
by an officer or agent, who must furnish whatever
information is available to the party served.  See FRCP
33(a) and (b).

The term "agent" includes an attorney, who may answer even
though he has no personal knowledge of the facts stated in
the answers; the attorney's answers, like an officer's
answers, must contain the information available to the party
served.  See Allstate Insurance Co. v. Healthy America Inc.,
9 USPQ2d 1663 (TTAB 1988).  However, an attorney who answers
interrogatories on behalf of a corporation, partnership,
association, or governmental agency may thereafter be
exposed to additional discovery and possibly even
disqualification.  See 37 CFR 10.63, and Allstate Insurance
Co. v. Healthy America Inc., supra.

Answers to interrogatories must be signed by the person
making them, and objections to interrogatories must be
signed by the attorney making them.  See FRCP 33(b)(2).



408  Requests for Production of Documents and Things

408.01  When and By Whom Served

During the discovery period in an inter partes proceeding
before the Board, any party may serve requests for
production of documents and things upon any other party.
See FRCP 34(a); Smith International, Inc. v. Olin Corp., 201
USPQ 250 (TTAB 1978); and TBMP 403.01.  Requests for
production may be served upon the plaintiff after the
proceeding commences (i.e., after the notice of opposition
or petition to cancel is filed, in an opposition or
cancellation, or after the notice of institution is mailed,
in an interference or concurrent use proceeding), and upon
the defendant with or after service by the Board of the
"complaint" (i.e., the notice of opposition or petition for
cancellation, in an opposition or cancellation proceeding;
and the notice of institution, in an interference or
concurrent use proceeding).  See TBMP 403.02.

Requests for production may be served upon an adversary
through the last day of discovery, even though the answers
thereto will not be served until after the discovery period
has closed.  See TBMP 403.02.

If requests for production are combined with a notice of
taking a discovery deposition (i.e., if it is requested that
the deponent bring designated documents to the deposition),
the requests for production must be served at least 35 days
prior the the scheduled date of the deposition if service of
the requests for production is made by first-class mail,
"Express Mail," or overnight courier, and at least 30 days
prior to the deposition if service of the requests for
production is made by one of the other methods specified in
37 CFR 2.119(b).  See FRCP 34(b); 37 CFR 2.119(c); and
TBMP 113.04, 113.05, and 403.03.  Further, since a
defendant may respond to requests for production either
within 30 days after service of the requests (35 days if
service of the requests is made by first-class mail,
"Express Mail," or overnight courier), or within 45 days
after service of the complaint upon it by the Board,
whichever is later, a defendant cannot be required to
produce documents at a deposition any earlier than 45 days
after service of the complaint upon it by the Board.

If a discovery deposition deponent is a nonparty witness
residing in the United States (see TBMP 404.03(b)(2)),
production of designated documents by the witness at the
deposition may be obtained by subpoena.  See FRCP 45 and 35
U.S.C. 24.  A subpoena in unnecessary, however, if the
nonparty witness is willing to produce the documents
voluntarily.



408.02  Scope

FRCP 34(a) Scope.  Any party may serve on any other party a
request (1) to produce and permit the party making the
request, or someone acting on the requestor's behalf, to
inspect and copy, any designated documents (including
writings, drawings, graphs, charts, photographs,
phonorecords, and other data compilations from which
information can be obtained, translated, if necessary, by
the respondent through detection devices into reasonably
usable form), or to inspect and copy, test, or sample any
tangible things which constitute or contain matters within
the scope of Rule 26(b) and which are in the possession,
custody or control of the party upon whom the request is
served; or (2) to permit entry upon designated land or other
property in the possession or control of the party upon whom
the request is served for the purpose of inspection and
measuring, surveying, photographing, testing, or sampling
the property or any designated object or operation thereon,
within the scope of Rule 26(b).

The scope of a request for production, in an inter partes
proceeding before the Board, is governed by FRCP 34(a),
which in turn refers to FRCP 26(b).  For a discussion of the
scope of discovery permitted under FRCP 26(b), see TBMP
402.01 and 402.02.

Because proceedings before the Board involve only the right
to register trademarks, the request for entry upon land for
inspection and other purposes is rarely, if ever, used in
Board proceedings.



408.03  Elements of Request for Production; Place of
Production

FRCP 34(b) Procedure.  The request shall set forth, either
by individual item or by category, the items to be
inspected, and describe each with reasonable particularity.
The request shall specify a reasonable time, place, and
manner of making the inspection and performing the related
acts. ...

37 CFR 2.120(d)(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.

A request for production must include the elements specified
in FRCP 34(b), as set forth above.

The place of production is governed by 37 CFR 2.120(d)(2).
See also Unicut Corp. v. Unicut, Inc., 220 USPQ 1013 (TTAB
1983);  Georgia-Pacific Corp. v. Great Plains Bag Co., 190
USPQ 193 (TTAB 1976); and Janet E. Rice, TIPS FROM THE TTAB:
Recent Changes in the TTAB Discovery Rules, 74 Trademark
Rep. 449, 451 (1984).  Upon motion pursuant to 37 CFR
2.120(d)(2), the Board may, for example, order that the
responding party photocopy the documents designated in a
request and mail the photocopies to the requesting party,
all at the requesting party's expense.  See Unicut Corp. v.
Unicut, Inc., supra; Saul Lefkowitz and Janet E. Rice,
Adversary Proceedings Before the Trademark Trial and Appeal
Board, 75 Trademark Rep. 323, 385 (1985); and Janet E. Rice,
TIPS FROM THE TTAB:  Recent Changes in the TTAB Discovery
Rules, supra.



409  Responses to Requests for Production

409.01  Time for Service of Responses

Responses to requests for production must be served within
30 days after the date of service of the requests, except
that a defendant may serve responses either within 30 days
after service of the requests, or within 45 days after
service of the complaint upon it by the Board, whichever is
later.  See TBMP 403.03.  If service of the requests is made
by first-class mail, "Express Mail," or overnight courier,
the date of mailing or of delivery to the overnight courier
is considered to be the date of service, and five extra days
are allowed for responding to the requests.  See  37 CFR
2.119(c) and TBMP 113.05 and 403.03.

A party which fails to respond to requests for production
during the time allowed therefor, and which is unable to
show that its failure was the result of excusable neglect,
may be found, upon motion to compel filed by the propounding
party, to have forfeited its right to object to the requests
on their merits.  See Bison Corp. v. Perfecta Chemie B.V., 4
USPQ2d 1718 (TTAB 1987); Luehrmann v. Kwik Kopy Corp., 2
USPQ2d 1303 (TTAB 1987); Envirotech Corp. v. Compagnie Des
Lampes, 219 USPQ 448 (TTAB 1979); MacMillan Bloedel Ltd. v.
Arrow-M Corp., 203 USPQ 952 (TTAB 1979); and Crane Co. v.
Shimano Industrial Co., 184 USPQ 691 (TTAB 1975).


409.02  Nature of Responses

A response to a request for production of documents and
things must state, with respect to each item or category of
documents or things requested to be produced, that
inspection and related activities will be permitted as
requested, unless the request is objected to, in which case
the reasons for objection must be stated.  If objection is
made to only part of an item or category, the part must be
specified.  See FRCP 34(b).

A party which produces documents for inspection must produce
them as they are kept in the usual course of business, or
must organize and label them to correspond with the
categories in the request.  See FRCP 34(b).

It is generally inappropriate for a party to respond to
requests for production by filing a motion attacking them,
such as a motion to strike, a motion to suppress, a motion
for a protective order, etc.  Rather, the party ordinarily
should respond by indicating, with respect to those requests
which it believes to be proper, that inspection and related
activities will be permitted, and by stating reasons for
objection with respect to those requests which it believes
to be improper.  See TBMP 414.



410  Requests for Admission

410.01  When and By Whom Served

During the discovery period in an inter partes proceeding
before the Board, any party may serve written requests for
admission upon any other party.  See FRCP 36(a), and TBMP
403.01.  Requests for admission may be served upon the
plaintiff after the proceeding commences (i.e., after the
notice of opposition or petition to cancel is filed, in an
opposition or cancellation, or after the notice of
institution is mailed, in an interference or concurrent use
proceeding), and upon the defendant with or after service by
the Board of the "complaint" (i.e., the notice of opposition
or petition for cancellation, in an opposition or
cancellation proceeding; and the notice of institution, in
an interference or concurrent use proceeding).  See TBMP
403.02.

Requests for admission may be served upon an adversary
through the last day of discovery, even though the responses
thereto will not be served until after the discovery period
has closed.  See TBMP 403.02.



410.02  Scope and Nature of Requests for Admission

FRCP 36(a) Request for Admission.  A party may serve upon
any other party a written request for the admission, for
purposes of the pending action only, of the truth of any
matters within the scope of Rule 26(b)(1) set forth in the
request that relate to statements or opinions of fact or of
the application of law to fact, including the genuineness of
any documents described in the request.  Copies of documents
shall be served with the request unless they have been or
are otherwise furnished or made available for inspection and
copying. ...

Each matter of which an admission is requested shall be
separately set forth. ...

The scope and nature of requests for admission, in inter
partes proceedings before the Board, are governed by FRCP
36(a), which in turn refers to FRCP 26(b)(1).  For a
discussion of the scope of discovery permitted under FRCP
26(b)(1), see TBMP 402.01.  See also TBMP 402.02.

Requests for admission are particularly useful for
determining, prior to trial, which facts are not in dispute,
thereby narrowing the matters which must be tried.  Saul
Lefkowitz and Janet E. Rice, Adversary Proceedings Before
the Trademark Trial and Appeal Board, 75 Trademark Rep. 323,
385 (1985).  These requests are also useful as a means of
facilitating the introduction into evidence of documents
produced by an adversary in response to a request for
production of documents.  See TBMP 403.05(c).



411  Responses to Requests for Admission

411.01  Time for Service of Responses

Responses to requests for admission must be served within 30
days after the date of service of the requests, except that
a defendant may serve responses either within 30 days after
service of the requests, or within 45 days after service of
the complaint upon it, whichever is later.  See TBMP
403.03.  If service of the requests is made by first-class
mail, "Express Mail," or overnight courier, the date of
mailing or of delivery to the overnight courier is
considered to be the date of service, and five extra days
are allowed for responding to the requests.  See 37 CFR
2.119(c), and TBMP 113.05 and 403.03.

If a party upon which requests for admission have been
served fails to timely respond thereto, the requests will
stand admitted unless the party is able to show that its
failure to timely respond was the result of excusable
neglect; or unless a motion to withdraw or amend the
admissions is filed pursuant to FRCP 36(b), and granted by
the Board.  See FRCP 6(b) and 36(a); Hobie Designs Inc. v.
Fred Hayman Beverly Hills Inc., 14 USPQ2d 2064 (TTAB 1990);
Johnston Pump/General Valve Inc. v. Chromalloy American
Corp., 13 USPQ2d 1719 (TTAB 1989); BankAmerica Corp. v.
International Travelers Cheque Co., 205 USPQ 1233 (TTAB
1979); and Questor Corp. v. Dan Robbins & Associates, Inc.,
199 USPQ 358 (TTAB 1978), aff'd, Dan Robbins & Associates,
Inc. v. Questor Corp.,  599 F.2d 1009, 202 USPQ 100 (CCPA
1979).  Cf. Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d
1718 (TTAB 1987); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d
1303 (TTAB 1987); Envirotech Corp. v. Compagnie Des Lampes,
219 USPQ 448 (TTAB 1979); MacMillan Bloedel Ltd. v. Arrow-M
Corp., 203 USPQ 952 (TTAB 1979); and Crane Co. v. Shimano
Industrial Co., 184 USPQ 691 (TTAB 1975).  For information
concerning motions pursuant to FRCP 36(b) to withdraw or
amend admissions, see TBMP 525.



411.02  Nature of Responses

Responses to requests for admission must be made in writing,
and should include an answer or objection to each matter of
which an admission is requested.  See FRCP 36(a).

The Board prefers that the responding party reproduce each
request immediately preceding the answer or objection
thereto.  See G. Douglas Hohein, TIPS FROM THE TTAB:
Potpourri, 71 Trademark Rep. 163 (1981).

An answer must admit the matter of which an admission is
requested; deny the matter; or state in detail the reasons
why the responding party cannot truthfully admit or deny the
matter.  "A denial shall fairly meet the substance of the
requested admission, and when good faith requires that a
party qualify an answer or deny only a part of the matter of
which an admission is requested, the party shall specify so
much of it as is true and qualify or deny the remainder.  An
answering party may not give lack of information or
knowledge as a reason for failure to admit or deny unless
the party states that the party has made reasonable inquiry
and that the information known or readily obtainable by the
party is insufficient to enable the party to admit or deny."
See FRCP 36(a).

If the responding party objects to a request for admission,
the reasons for objection must be stated.  If a responding
party believes that a matter of which an admission has been
requested presents a genuine issue for trial, the party may
not object to the request on that ground alone.  Rather, the
party may deny the matter; alternatively, the party may set
forth reasons why it cannot admit or deny the matter.  See
FRCP 36(a).

It is generally inappropriate for a party to respond to
requests for admission by filing a motion attacking them,
such as a motion to strike, a motion to suppress, a motion
for a protective order, etc.  Rather, the party ordinarily
should respond by answering those requests which it believes
to be proper and stating its reasons for objection to those
which it believes to be improper.  See TBMP 414.



411.03  Signature of Responses

Answers and objections to requests for admission may be
signed either by the responding party, or by its attorney.
See FRCP 36(a).



411.04  Effect of Admission

Any matter admitted (either expressly, or for failure to
timely respond) under FRCP 36 is conclusively established
unless the Board, upon motion, permits withdrawal or
amendment of the admission.  See FRCP 36(b).  See also
American Automobile Ass'n v. AAA Legal Clinic of Jefferson
Crooke, P.C., 930 F.2d 1117, 19 USPQ2d 1142 (5th Cir. 1991).
For further information concerning motions to withdraw or
amend an admission, see TBMP 525.

An admission made by a party under FRCP 36 is only for the
purpose of the pending proceeding.  It is not an admission
for any other purpose, nor may it be used against that party
in any other proceeding.  See FRCP 36(b).



412  Duties to Cooperate, Search Records, Supplement

412.01  Duty to Cooperate

The Board expects parties (and their attorneys or other
authorized representatives) to cooperate with one another in
the discovery process, and looks with extreme disfavor upon
those who do not.  Each party and its attorney or other
authorized representative has a duty not only to make a good
faith effort to satisfy the discovery needs of its
adversary, but also to make a good faith effort to seek only
such discovery as is proper and relevant to the issues in
the case.  See, for example FRCP 26(g); Johnston
Pump/General Valve Inc. v. Chromalloy American Corp., 13
USPQ2d 1719 (TTAB 1989); Johnston Pump/General Valve Inc. v.
Chromalloy American Corp., 10 USPQ2d 1671 (TTAB 1988);
Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303 (TTAB 1987);
Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666 (TTAB
1986); Unicut Corp. v. Unicut, Inc., 222 USPQ 341 (TTAB
1984); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ
80 (TTAB 1984); C. H. Stuart Inc. v. Carolina Closet, Inc.,
213 USPQ 506 (TTAB 1980); C. H. Stuart Inc. v. S. S. Sarna,
Inc., 212 USPQ 386 (TTAB 1980); Varian Associates v.
Fairfield-Noble Corp., 188 USPQ 581 (TTAB 1975); Tektronix,
Inc. v. Tek Associates, Inc., 183 USPQ 623 (TTAB 1974); and
Gastown Inc. of Delaware v. Gas City, Ltd., 180 USPQ 477
(TTAB 1974).  Cf. Micro Motion Inc. v. Kane Steel Co., 894
F.2d 1318, 13 USPQ2d 1696 (Fed. Cir. 1990).

It should be noted, in this regard, that under the
provisions of FRCP 26(g), the signature of an attorney or
party to a discovery request, response, or objection:

     constitutes a certification that to the best of the
signer's knowledge,      information, and belief, formed
after a reasonable inquiry, the
     request, response, or objection is:
          (A) consistent with [the Federal Rules of Civil
          Procedure] and warranted by existing law or
          a good faith argument for the extension,
          modification or reversal of existing law;
          (B) not interposed for any improper purpose,
          such as to harass or to cause unnecessary
          delay or needless increase in the cost of
          litigation; and
          (C) not unreasonable or unduly burdensome
          or expensive, given the needs of the case,
          the discovery already had in the case, the
          amount in controversy, and the importance
          of the issues at stake in the litigation.

See also Miss America Pageant v. Petite Productions, Inc.,
17 USPQ2d 1067 (TTAB 1990).  Cf. 37 CFR 10.18(a); FRCP 11;
and TBMP 106.02.  Provision is made, in FRCP 26(g), for the
imposition of appropriate sanctions if a certification is
made in violation of the rule.

Because the signature of a party or its attorney to a
request for discovery constitutes a certification by the
party or its attorney that, inter alia, the request is
warranted, consistent with the Federal Rules of Civil
Procedure, and not unreasonable or unduly burdensome, a
party ordinarily will not be heard to contend that a request
for discovery is proper when propounded by the party itself
but improper when propounded by its adversary.  See Miss
America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067
(TTAB 1990); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ
666 (TTAB 1986); Medtronic, Inc. v. Pacesetter Systems,
Inc., 222 USPQ 80 (TTAB 1984); Tektronix, Inc. v. Tek
Associates, Inc., 183 USPQ 623 (TTAB 1974); and Gastown Inc.
of Delaware v. Gas City, Ltd., 180 USPQ 477 (TTAB 1974).  A
contention of this nature will be entertained only if it is
supported by a persuasive showing of reasons why the
discovery request is proper when propounded by one party but
improper when propounded by another.  Miss America Pageant
v. Petite Productions, Inc., supra.



412.02  Duty to Search Records

A party served with a request for discovery has a duty to
thoroughly search its records for all information properly
sought in the request, and to provide such information to
the requesting party within the time allowed for responding
to the request.  A responding party which, due to an
incomplete search of its records, provides an incomplete
response to a discovery request, may not thereafter rely at
trial on information from its records which was properly
sought in the discovery request but was not included in the
response thereto (provided that the requesting party raises
the matter by objecting to the evidence in question).  See
Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718 (TTAB
1987).



412.03  Duty to Supplement Discovery Response

FRCP 26(e) Supplementation of ... Responses.  A party who
has ... responded to a request for discovery with a ...
response is under a duty to supplement or correct the ...
response to include information thereafter acquired if
ordered by the court or in the following circumstances:
                        *     *     *
(2) A party is under a duty seasonably to amend a prior
response to an interrogatory, request for production, or
request for admission if the party learns that the response
is in some material respect incomplete or incorrect and if
the additional or corrective information has not otherwise
been made known to the other parties during the discovery
process or in writing.

The duty to supplement discovery responses in proceedings
before the Board is governed by FRCP 26(e)(2).  See 37 CFR
2.116(a), and "Effect of December 1, 1993 Amendments to the
Federal Rules of Civil Procedure on Trademark Trial and
Appeal Board Inter Partes Proceedings," 1159 TMOG 14
(February 1, 1994).  Under that rule, a party which has
responded to a request for discovery with a response is
under a duty to supplement or correct the response to
include information thereafter acquired under the particular
circumstances specified in paragraph (e)(2).  In addition, a
duty to supplement responses may be imposed by order of the
Board.  Cf. P.A.B. Produits et Appareils de Beaute v.
Satinine Societa In Nome Collettivo di S.A. e.M. Usellini,
570 F.2d 328, 196 USPQ 801 (CCPA 1978); Bison Corp. v.
Perfecta Chemie B.V., 4 USPQ2d 1718 (TTAB 1987); Andersen
Corp. v. Therm-O-Shield Int'l, Inc., 226 USPQ 431 (TTAB
1985); and JSB International, Inc. v. Auto Sound North,
Inc., 215 USPQ 60 (TTAB 1982).



413  Filing Discovery Requests and Responses With Board

Discovery requests, discovery responses, and materials or
depositions obtained through the discovery process, should
not be filed with the Board except when submitted:

     (1) With a motion relating to discovery [i.e., motion
to compel, motion to determine the sufficiency of an answer
or objection to a request for admission, motion for leave to
serve additional interrogatories, etc.];

     (2) In support of or in response to a motion for
summary judgment;

     (3) Under a notice of reliance during a party's
testimony period; or

     (4) As exhibits to a testimony deposition.

See 37 CFR 2.120(j)(6) and (j)(8), and Notice of Final
Rulemaking published in the Federal Register on August 22,
1989 at 54 FR 34886, 34888, and in the Official Gazette of
September 12, 1989 at 1106 TMOG 26, 28.  See also Chicago
Corp. v. North American Chicago Corp., 16 USPQ2d 1479 (TTAB
1990); Kellogg Co. v. Pack'Em Enterprises, Inc., 14 USPQ2d
1545 (TTAB 1990), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed.
Cir. 1991); Midwest Plastic Fabricators, Inc. v.
Underwriters Laboratories, Inc., 5 USPQ2d 1067 (TTAB 1987);
Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861
(TTAB 1979); and G. Douglas Hohein, TIPS FROM THE TTAB:
Potpourri, 71 Trademark Rep. 163, 166-167 (1981) (but note
that this article was written prior to the rule changes
adopted in the Notice of Final Rulemaking cited above, as
well as those adopted in the Notice of Final Rulemaking
published in the Federal Register on May 23, 1983 at 48 FR
23122, and in the Official Gazette of June 21, 1983 at 1031
TMOG 13).

In addition, a plaintiff may file discovery requests with
its complaint, for later service upon the defendant, by the
Board, with defendant's copies of the complaint and
notification letter (cf. TBMP 315.01 and 403.02).

Finally, when a party objects to proffered evidence on the
ground that it should have been, but was not, provided in
response to a request for discovery, a copy of the pertinent
discovery request(s) and response(s) should be submitted in
support of the objection.

Discovery papers or materials filed with the Board under
circumstances other than those specified above may be
returned to the party which filed them.  See 37 CFR
2.120(j)(8).



414  Motions Attacking Requests for Discovery

The rules governing discovery in proceedings before the
Board provide both for the assertion of objections to
discovery requests believed to be improper, and a means
(namely, the motion to compel, in the case of discovery
depositions, interrogatories, and requests for production;
and the motion to test the sufficiency of answers or
objections, in the case of requests for admission) for
testing the sufficiency of those objections.  It is
generally inappropriate for a party to respond to a request
for discovery by filing a motion attacking it, such as a
motion to strike, a motion to suppress, a motion for a
protective order, etc.  Rather, the party ordinarily should
respond by providing the information sought in those
portions of the request which it believes to be proper, and
stating its objections to those which it believes to be
improper.  See Medtronic, Inc. v. Pacesetter Systems, Inc.,
222 USPQ 80 (TTAB 1984); Fidelity Prescriptions, Inc. v.
Medicine Chest Discount Centers, Inc., 191 USPQ 127 (TTAB
1976); Volkswagenwerk Aktiengesellschaft v. Ridewell Corp.,
188 USPQ 690 (TTAB 1975); Neville Chemical Co. v. Lubrizol
Corp., 183 USPQ 184 (TTAB 1974); Dow Corning Corp. v. Doric
Corp., 183 USPQ 126 (TTAB 1974); and Atwood Vacuum Machine
Co. v. Automation Industries, Inc., 181 USPQ 606 (TTAB
1974).

Further, if a party upon which interrogatories have been
served, in a proceeding before the Board, believes that the
number of interrogatories served exceeds the limit specified
in 37 CFR 2.120(d)(1), and wishes to object to the
interrogatories on this basis, the responding party must,
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; a motion
for a protective order is not the proper method for raising
the objection of excessive number.  See 37 CFR 2.120(d)(1);
Notice of Final Rulemaking, published in the Federal
Register on September 12, 1991 at 56 FR 46376 and in the
Official Gazette of October 22, 1991 at 1131 TMOG 54, as
corrected in the Federal Register of October 23, 1991 at 56
FR 54917; TBMP section 406.03(e); and Helen R. Wendel, TIPS
FROM THE UNITED STATES PATENT AND TRADEMARK OFFICE TTAB:
The Burden Shifts:  Revised Discovery Practice Under
Trademark Rule 2.120(d)(1), 82 Trademark Rep. 89 (1992).

Nevertheless, there are some situations in which a party may
properly respond to a request for discovery by filing a
motion attacking it.

In cases where a request for discovery constitutes clear
harassment, or where a defendant upon which a request for
discovery has been served is not and was not, at the time of
the commencement of the proceeding, the real party in
interest, the party upon which the request was served may
properly respond to it by filing a motion for a protective
order that the discovery not be had, or be had only on
specified terms and conditions.  See, for example 37 CFR
2.120(f); FRCP 26(c); and Gold Eagle Products Co. v.
National Dynamics Corp., 193 USPQ 109 (TTAB 1976).
Alternatively, if the discovery sought is a discovery
deposition, and the request therefor constitutes harassment,
there is insufficient notice, etc., the party upon which the
request was served may file a motion to quash the notice of
deposition.  See Kellogg Co. v. New Generation Foods Inc., 6
USPQ2d 2045 (TTAB 1988).  For information concerning motions
to quash a notice of deposition, see TBMP 521.



415  Remedy for Failure to Provide Discovery

415.01  Interrogatories or Requests for Production

If any party fails to answer any interrogatory, the party
seeking discovery may file a motion with the Board for an
order to compel an answer.  Similarly, if any party fails to
produce and permit the inspection and copying of any
document or thing, the party seeking discovery may file a
motion for an order to compel production and an opportunity
to inspect and copy.  See 37 CFR 2.120(e).  Cf. FRCP
37(a)(2)(B).  For information concerning motions to compel,
see TBMP 523.



415.02  Requests for Admission

If a party upon which requests for admission have been
served fails to file a timely response thereto, the requests
will stand admitted unless the party is able to show that
its failure to timely respond was the result of excusable
neglect; or unless a motion to withdraw or amend the
admissions is filed pursuant to FRCP 36(b), and granted by
the Board.  See TBMP 411.01.  For information concerning
motions to withdraw or amend admissions, see TBMP 525.

If a propounding party is dissatisfied with a responding
party's answer or objection to a request for admission, and
wishes to obtain a ruling on the sufficiency thereof, the
propounding party may file a motion with the Board to
determine the sufficiency of the answer or objection.  See
37 CFR 2.120(h), and FRCP 36(a).  If the Board determines
that an answer does not comply with the requirements of FRCP
36(a), it may order either that the matter is admitted or
that an amended answer be served.  If the Board determines
that an objection is not justified, it will order that an
answer be served.  See FRCP 36(a).  For information
concerning motions to determine the sufficiency of answers
or objections to requests for admission, see TBMP 524.



415.03  Discovery Depositions

If a party fails to designate a person pursuant to FRCP
30(b)(6) or FRCP 31(a)(3), or if a party or such designated
person, or an officer, director or managing agent of a
party, fails to attend a discovery deposition, or fails to
answer any question propounded in a discovery deposition,
the party seeking discovery may file a motion with the Board
for an order to compel a designation, or attendance at a
deposition, or an answer.  See 37 CFR 2.120(e).  Cf. FRCP
37(a).  For information concerning motions to compel, see
TBMP 523.

A discovery deposition is taken out of the presence of the
Board, and if a witness objects to, and refuses to answer, a
particular question, and the propounding party wishes to
obtain an immediate ruling on the propriety of the
objection, it may do so only by adjourning the deposition
and applying, under 35 U.S.C. 24, to the Federal district
court, in the jurisdiction where the deposition is being
taken, for an order compelling the witness to answer.  See
Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184 (TTAB
1974).  Cf. Ferro Corp. v. SCM Corp., 219 USPQ 346 (TTAB
1983); S. Rudofker's Sons, Inc. v. "42" Products, Ltd., 161
USPQ 499 (TTAB 1969); and Bordenkircher v. Solis Entrialgo y
Cia., S. A., 100 USPQ 268, 276-278 (Comm'r 1953).  In the
absence of a court order compelling an answer, the
propounding party's only alternative, if it wishes to compel
an answer, is to complete the deposition and then file a
motion to compel with the Board.  See 37 CFR 2.120(e), and
Neville Chemical Co. v. Lubrizol Corp., supra.



416  Protective Orders

416.01  Upon Motion

Upon motion, showing good cause, by a party from which
discovery is sought, the 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 described in
clauses (1) through (8) of FRCP 26(c).  See 37 CFR
2.120(f).

For information concerning motions for a protective order,
see TBMP 526.  See also TBMP 120.03, 527.01, and 713.16.



416.02  Upon Stipulation

Subject to the approval of the Board, parties to proceedings
before the Board may, and often do, enter into stipulated
protective orders, that is, agreements as to specified
procedures and restrictions that shall govern the disclosure
of any confidential or trade secret information.  See Rany
L. Simms, TIPS FROM THE TTAB:  Stipulated Protective
Agreements, 71 Trademark Rep. 653 (1981).

Only confidential or trade secret information should be
filed pursuant to a stipulated protective order.  Such an
order may not be used as a means of circumventing paragraphs
(d) and (e) of 37 CFR 2.27, which provide, in essence, that
except for matter filed under seal pursuant to a protective
order issued by a court or by the Board, the file of a
published application or issued registration, and all
proceedings relating thereto, are available for public
inspection.  See Rany L. Simms, TIPS FROM THE TTAB:
Stipulated Protective Agreements, supra.



416.03  In Camera Inspection

In situations where there is a dispute between the parties
to a proceeding as to the relevance and/or confidentiality
of a document, or portions thereof, sought to be discovered,
and the Board cannot determine from the arguments of the
parties, upon motion to compel production, whether the
document is relevant and/or confidential, the Board may
request that a copy of the document be submitted to the
Board for an in camera inspection, after which the document
will be returned to the party which submitted it.  See Rany
L. Simms, TIPS FROM THE TTAB:  Stipulated Protective
Agreements, 71 Trademark Rep. 653 (1981).



416.04  Contents of Protective Order

Typically, a protective order contains provisions such as
the following:

     (1)  A definition of the type of material to be
considered confidential or trade secret information.

     (2)  A description of the manner in which confidential
or trade secret information is to be handled.

     (3)  A requirement that a party claiming
confidentiality or trade secret designate the information
covered by the claim prior to disclosure of the information
to the discovering party.

     (4)  A provision that a party may not designate
information as confidential or trade secret unless the party
has a reasonable basis for believing that the information
is, in fact, confidential or trade secret in nature.

     (5)  A provision that information designated by the
disclosing party as confidential or trade secret may not
include information which, at or prior to disclosure thereof
to the discovering party, is known to or independently
developed by the discovering party; or is public knowledge
or becomes available to the public without violation of the
agreement.

     (6)  A provision that information designated by the
disclosing party as confidential or trade secret may not
include information which, after the disclosure thereof, is
revealed to the public by a person having the unrestricted
right to do so.

     (7)  A provision that information designated by the
disclosing party as confidential or trade secret may not
include information which is acquired by the discovering
party from a third party which lawfully possesses the
information and/or owes no duty of nondisclosure to the
party providing discovery.

     (8)  A specification of the persons to whom
confidential or trade secret information may be disclosed
(i.e., outside counsel; house counsel; counsel's necessary
legal and clerical personnel; etc.).

     (9)  A provision that all persons to whom confidential
or trade secret information is disclosed shall be advised of
the existence and terms of the protective order.

     (10)  A provision that the discovering party will not
disclose or make use of confidential or trade secret
information provided to it under the order except for
purposes of the proceeding in which the information is
provided.

     (11)  A means for resolving disputes over whether
particular matter constitutes confidential or trade secret
information.

     (12)  A provision that if material designated as
confidential or trade secret is made of record in the
proceeding, it shall be submitted to the Board in a separate
sealed envelope or other sealed container bearing the
proceeding number and name, an indication of the general
nature of the contents of the container, and, in large
letters, the designation "CONFIDENTIAL."

     (13)  A statement that at the end of the proceeding,
each party shall return to the disclosing party all
confidential information and materials, including all
copies, summaries, and abstracts thereof.

See Rany L. Simms, TIPS FROM THE TTAB:  Stipulated
Protective Agreements, 71 Trademark Rep. 653 (1981);
Johnston Pump/General Valve Inc. v. Chromalloy American
Corp., 10 USPQ2d 1671 (TTAB 1988); and Neville Chemical Co.
v. Lubrizol Corp., 184 USPQ 689 (TTAB 1975).



416.05  Signature of Protective Order

Stipulated protective orders may be signed either by the
parties thereto, or by their attorneys, or by both.
However, once a proceeding before the Board has been finally
determined, the Board has no further jurisdiction over the
parties thereto.  Thus, it may be advisable for both the
parties and their attorneys to sign a stipulated protective
order, so that it is clear that they are all bound thereby;
that they have created a contract which will survive the
proceeding; and that there may be a remedy at court for any
breach of that contract which occurs after the conclusion of
the Board proceeding.  See Fort Howard Paper Co. v. C.V.
Gambina Inc., 4 USPQ2d 1552, 1555 (TTAB 1987).  See also,
with respect to violation of a Board protective order after
the conclusion of the Board proceeding Alltrade Inc. v.
Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d 1698 (9th
Cir. 1991).



416.06  Filing Confidential Materials With Board

In the event that material designated as confidential
(including trade secret material) is made of record in the
proceeding, it should be submitted to the Board in a
separate sealed envelope or other sealed container
prominently marked with the word "CONFIDENTIAL."  Many
attorneys also like to attach to the sealed envelope or
other sealed container a statement such as the following:

     FILED UNDER SEAL SUBJECT TO PROTECTIVE ORDER.
     The materials contained in this envelope have
     been designated confidential, pursuant to a
     protective order, and are not to be disclosed
     or revealed except to the Trademark Trial and
     Appeal Board and counsel for the parties, or
     by order of a court.

The envelope or other container should also bear information
identifying the proceeding in connection with which it is
filed (i.e., the proceeding number and name), and an
indication of the nature of the contents of the container
(i.e., "Applicant's Answers to Opposer's Interrogatories 8
and 19," "Pages 22-26 From the Discovery Deposition of John
Doe," "Opposer's Exhibits 3-5 to the Discovery Deposition of
John Smith," etc.).

Only the particular discovery responses, exhibits,
deposition transcript pages, or pages of a brief which have
been designated confidential should be filed under seal
pursuant to a protective order.  Discovery responses,
exhibits, deposition transcript pages, or pages of a brief
which are not confidential should not be filed under seal
along with the confidential ones.

See Rany L. Simms, TIPS FROM THE TTAB:  Stipulated
Protective Agreements, 71 Trademark Rep. 653 (1981).



416.07  Handling of Confidential Materials By Board

Confidential materials (including trade secret information)
filed under seal subject to a protective order are stored by
the Board in a locked file cabinet, and are disclosed only
to the Board and to those people specified in the protective
order as having the right to access.  See Rany L. Simms,
TIPS FROM THE TTAB:  Stipulated Protective Agreements, 71
Trademark Rep. 653 (1981), and TBMP sections 120.03 and
121.02.  For information concerning access to protective
order materials during an appeal from the decision of the
Board, see TBMP 904.  After the proceeding before the Board
has been finally determined, all confidential materials are
returned to the party which submitted them.



417  Telephone and Pre-Trial Conferences

When appropriate and necessary, a motion relating to
discovery may be resolved by telephone conference, or by pre-
trial conference at the offices of the Board.  In either
case, the conference will involve the parties or their
attorneys and an Attorney-Advisor, or a Member, or the
Board.  See 37 CFR 2.120(i).  For further information
concerning the resolution of motions by telephone and pre-
trial conference, see TBMP 502.07.



418  Discovery Sanctions

In inter partes proceedings before the Board, a variety of
sanctions may be imposed, in appropriate cases, for failure
to provide discovery.  For information concerning the nature
of these sanctions, and when they are available, see TBMP
527.



419  Discovery Guidelines

Listed below are guidelines, with case citations, relating
to the discoverability of a variety of matters:

     (1)  The identification of discovery documents (as
opposed to their substance) is not privileged or
confidential.  See Goodyear Tire & Rubber Co. v. Tyrco
Industries, 186 USPQ 207 (TTAB 1975), and Johnson & Johnson
v. Rexall Drug Co., 186 USPQ 167 (TTAB 1975).

     (2)  In those cases where complete compliance with a
particular request for discovery would be unduly burdensome,
the Board may permit the responding party to comply by
providing a representative sampling of the information
sought, or some other reduced amount of information which is
nevertheless sufficient to meet the propounding party's
discovery needs.  See, for example British Seagull Ltd. v.
Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), aff'd,
Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32
USPQ2d 1120 (Fed. Cir. 1994); Bison Corp. v. Perfecta Chemie
B.V., 4 USPQ2d 1718 (TTAB 1987); Sunkist Growers, Inc. v.
Benjamin Ansehl Co., 229 USPQ 147 (TTAB 1985); J. B.
Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577 (TTAB
1975); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689
(TTAB 1975); Van Dyk Research Corp. v. Xerox Corp., 181 USPQ
346 (TTAB 1974); and Mack Trucks, Inc. v. Monroe Auto
Equipment Co., 181 USPQ 286 (TTAB 1974).

     (3)  The classes of customers for a party's involved
goods or services are discoverable.  In contrast, the names
of customers constitute confidential information, and
generally are not discoverable, even under protective order.
However, the name of the first customer for a party's
involved goods or services sold under its involved mark,
and, if there is a question of abandonment, the names of a
minimal number of customers for the period in question, may
be discoverable under protective order.  See Johnston
Pump/General Valve Inc. v. Chromalloy American Corp., 10
USPQ2d 1671 (TTAB 1988); Sunkist Growers, Inc. v. Benjamin
Ansehl Co., 229 USPQ 147 (TTAB 1985); Fisons Ltd. v.
Capability Brown Ltd., 209 USPQ 167 (TTAB 1980); Varian
Associates v. Fairfield-Noble Corp., 188 USPQ 581 (TTAB
1975); J. B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ
577 (TTAB 1975); Ortho Pharmaceutical Corp. v. Schattner,
184 USPQ 556 (TTAB 1975); Miller & Fink Corp. v.
Servicemaster Hospital Corp., 184 USPQ 495 (TTAB 1975); Cool-
Ray, Inc. v. Eye Care, Inc., 183 USPQ 618 (TTAB 1974); and
American Optical Corp. v. Exomet, Inc., 181 USPQ 120 (TTAB
1974).

     (4)  Information concerning a party's selection and
adoption of its involved mark is generally discoverable
(particularly of a defendant).  See Varian Associates v.
Fairfield-Noble Corp., 188 USPQ 581 (TTAB 1975); Goodyear
Tire & Rubber Co. v. Tyrco Industries, 186 USPQ 207 (TTAB
1975); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184
(TTAB 1974); and Volkswagenwerk Aktiengesellschaft v. MTD
Products Inc., 181 USPQ 471 (TTAB 1974).

     (5)  Information concerning a party's first use of its
involved mark is discoverable.  See, for example Georgia-
Pacific Corp. v. Great Plains Bag Co., 190 USPQ 193 (TTAB
1976), and Miller & Fink Corp. v. Servicemaster Hospital
Corp., 184 USPQ 495 (TTAB 1975).  See also Double J of
Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609
(TTAB 1991).

     (6)  Search reports are discoverable, but the comments
or opinions of attorneys relating thereto are privileged and
not discoverable (unless the privilege is waived).  See
Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167 (TTAB
1980); Goodyear Tire & Rubber Co. v. Tyrco Industries, 186
USPQ 207 (TTAB 1975); Miles Laboratories, Inc. v.
Instrumentation Laboratory, Inc., 185 USPQ 432 (TTAB 1975);
and Amerace Corp. v. USM Corp., 183 USPQ 506 (TTAB 1974).

     (7)  A party need not, in advance of trial, specify in
detail the evidence it intends to present, or identify the
witnesses it intends to call, except that the names of
expert witnesses intended to be called are discoverable.
See British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197
(TTAB 1993), aff'd, Brunswick Corp. v. British Seagull Ltd.,
35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994); Charrette
Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040
(TTAB 1989); Polaroid Corp. v. Opto Specs, Ltd., 181 USPQ
542 (TTAB 1974); and American Optical Corp. v. Exomet, Inc.,
181 USPQ 120 (TTAB 1974).

     (8)  A party's plans for expansion may be discoverable
under protective order.  See Johnston Pump/General Valve
Inc. v. Chromalloy American Corp., 10 USPQ2d 1671 (TTAB
1988).

     (9)  Information concerning the use and/or registration
by third parties of the same or similar marks for the same
or closely related goods or services as an involved mark and
goods or services is discoverable, but only to the extent
that the responding party has actual knowledge thereof
(without performing an investigation), and that the
information appears to be reasonably calculated to lead to
the discovery of admissible evidence.  See Johnston
Pump/General Valve Inc. v. Chromalloy American Corp., 10
USPQ2d 1671 (TTAB 1988); and American Society of Oral
Surgeons v. American College of Oral & Maxillofacial
Surgeons, 201 USPQ 531 (TTAB 1979).

     (10)  Information concerning litigation and
controversies between a responding party and third parties
based on the responding party's involved mark is
discoverable.  However, the only information which must be
provided with respect to a legal proceeding is the names of
the parties thereto, the jurisdiction, the proceeding
number, the outcome of the proceeding, and the citation of
the decision (if published).  See American Society of Oral
Surgeons v. American College of Oral & Maxillofacial
Surgeons, 201 USPQ 531 (TTAB 1979); Interbank Card Ass'n v.
United States National Bank of Oregon, 197 USPQ 127 (TTAB
1975); Georgia-Pacific Corp. v. Great Plains Bag Co., 190
USPQ 193 (TTAB 1976); J. B. Williams Co. v. Pepsodent
G.m.b.H., 188 USPQ 577 (TTAB 1975); and Johnson & Johnson v.
Rexall Drug Co., 186 USPQ 167 (TTAB 1975).

     (11)  A party need not provide discovery with respect
to those of its marks and goods and/or services which are
not involved in the proceeding and have no relevance
thereto.  However, the information that a party sells the
same goods or services as the propounding party, even if
under a different mark, is relevant to the issue of
likelihood of confusion.  See TBC Corp. v. Grand Prix Ltd.,
16 USPQ2d 1399 (TTAB 1990); Johnston Pump/General Valve Inc.
v. Chromalloy American Corp., 10 USPQ2d 1671 (TTAB 1988);
Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147
(TTAB 1985); Varian Associates v. Fairfield-Noble Corp., 188
USPQ 581 (TTAB 1975); American Optical Corp. v. Exomet,
Inc., 181 USPQ 120 (TTAB 1974); Volkswagenwerk
Aktiengesellschaft v. Thermo-Chem Corp., 176 USPQ 493 (TTAB
1973).  See also Wella Corp. v. California Concept Corp.,
558 F.2d 1019, 194 USPQ 419 (CCPA 1977), and Sterling Drug
Inc. v. Sebring, 515 F.2d 1128, 185 USPQ 649 (CCPA 1975).

     (12)  The names and addresses of a party's officers are
discoverable.  However, if a party has a large number of
officers, it need only provide the names and addresses of
those officers most knowledgeable of its involved
activities.  See J. B. Williams Co. v. Pepsodent G.m.b.H.,
188 USPQ 577 (TTAB 1975); Volkswagenwerk Aktiengesellschaft
v. MTD Products Inc., 181 USPQ 471 (TTAB 1974); and American
Optical Corp. v. Exomet, Inc., 181 USPQ 120 (TTAB 1974).

     (13)  Although information concerning a party's foreign
use of its involved mark is usually irrelevant to the issues
in a Board proceeding, and thus not discoverable, exceptions
may arise where, for example, there is an issue as to
whether a party's adoption and use of the mark in the United
States was made in bad faith for the purpose of forestalling
a foreign user's expansion into the United States, or where
the foreign mark is "famous," albeit not used, in the United
States.  See, for general rule Double J of Broward Inc. v.
Skalony Sportswear GmbH, 21 USPQ2d 1609 (TTAB 1991), and
Johnson & Johnson v. Salve S.A., 183 USPQ 375 (TTAB 1974).
See also Oland's Breweries [1971] Ltd. v. Miller Brewing
Co., 189 USPQ 481 (TTAB 1975), aff'd, Miller Brewing Co. v.
Oland's Breweries, 548 F.2d 349, 192 USPQ 266 (CCPA 1976).
See, re possible exceptions, Article 6 bis of the Paris
Convention; Person's Co. v. Christman, 900 F.2d 1565, 14
USPQ2d 1477 (Fed.Cir. 1990); Double J of Broward Inc. v.
Skalony Sportswear GmbH, supra; Mastic Inc. v. Mastic Corp.,
230 USPQ 699 (TTAB 1986); Adolphe Lafont, S.A. v. S.A.C.S.E.
Societa Azioni Confezioni Sportive Ellera, S.p.A., 228 USPQ
589 (TTAB 1985); Davidoff Extension S.A. v. Davidoff
International, Inc., 221 USPQ 465 (S.D. Fla. 1983); Colt
Industries Operating Corp. v. Olivetti Controllo Numerico
S.p.A., 221 USPQ 73 (TTAB 1983); All England Lawn Tennis
Club, Ltd. v. Creations Aromatiques, Inc., 220 USPQ 1069
(TTAB 1983); Canovas v. Venezia 80 S.R.L., 220 USPQ 660
(TTAB 1983); Mother's Restaurants, Inc. v. Mother's Other
Kitchen, Inc., 218 USPQ 1046 (TTAB 1983); and Johnson &
Johnson v. Diaz, 339 F. Supp. 60, 172 USPQ 35 (C.D. Cal.
1971).

     (14)  Generally, the names and addresses of the
stockholders of a corporate party are irrelevant, and not
discoverable, unless there is a question as to whether that
party and another entity are "related companies" within the
meaning of Section 5 of the Act, 15 U.S.C. 1055.  See Varian
Associates v. Fairfield-Noble Corp., 188 USPQ 581 (TTAB
1975); Volkswagenwerk Aktiengesellschaft v. MTD Products
Inc., 181 USPQ 471 (TTAB 1974); and American Optical Corp.
v. Exomet, Inc., 181 USPQ 120 (TTAB 1974).

     (15)  The locations of those places of business where a
party manufactures its involved goods, or conducts its
involved services, under its involved mark, are
discoverable.  See Varian Associates v. Fairfield-Noble
Corp., 188 USPQ 581 (TTAB 1975), and American Optical Corp.
v. Exomet, Inc., 181 USPQ 120 (TTAB 1974).

     (16)  Information relating to the areas of distribution
for a party's involved goods or services sold under its
involved mark is discoverable.  See Johnston Pump/General
Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671
(TTAB 1988); Georgia-Pacific Corp. v. Great Plains Bag Co.,
190 USPQ 193 (TTAB 1976); J. B. Williams Co. v. Pepsodent
G.m.b.H., 188 USPQ 577 (TTAB 1975); Miller & Fink Corp. v.
Servicemaster Hospital Corp., 184 USPQ 495 (TTAB 1975); and
Volkswagenwerk Aktiengesellschaft v. MTD Products Inc., 181
USPQ 471 (TTAB 1974).

     (17)  The identity of any advertising agency engaged by
a party to advertise and promote the party's involved goods
or services under its involved mark is discoverable, as is
the identity of the advertising agency employees having the
most knowledge of such advertising and promotion.  See J. B.
Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577 (TTAB
1975).

     (18)  Annual sales and advertising figures, stated in
round numbers, for a party's involved goods or services sold
under its involved mark are proper matters for discovery; if
a responding party considers such information to be
confidential, disclosure may be made under protective order.
See Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ
147 (TTAB 1985); Varian Associates v. Fairfield-Noble Corp.,
188 USPQ 581 (TTAB 1975); J. B. Williams Co. v. Pepsodent
G.m.b.H., 188 USPQ 577 (TTAB 1975); Neville Chemical Co. v.
Lubrizol Corp., 184 USPQ 689 (TTAB 1975); Volkswagenwerk
Aktiengesellschaft v. MTD Products Inc., 181 USPQ 471 (TTAB
1974); and American Optical Corp. v. Exomet, Inc., 181 USPQ
120 (TTAB 1974).

     (19)  Information concerning a defendant's actual
knowledge of plaintiff's use of the plaintiff's involved
mark, including whether defendant has actual knowledge
thereof, and, if so, when and under what circumstances it
acquired such knowledge, is discoverable.  See
Volkswagenwerk Aktiengesellschaft v. MTD Products Inc., 181
USPQ 471 (TTAB 1974); and American Optical Corp. v. Exomet,
Inc., 181 USPQ 120 (TTAB 1974).

