Welcome Back to TTAB Trial Tactics

In the first two installments, we covered the first 30 days (filing an opposition or extension) and the Answer (responding as the defendant). Now the case enters the longest and most resource‑intensive phase: discovery.

Discovery is the formal process of exchanging information with the opposing party. It includes written questions (interrogatories), requests for documents, requests for admission, and depositions (oral examinations under oath). Discovery can be as short as a few months or stretch over a year, depending on the complexity of the case and the cooperation (or lack thereof) of the parties.

The tactical truth: Discovery is where TTAB cases are won or lost – but it’s also where legal bills can explode. This post teaches you how to use discovery as a weapon while controlling costs.

TTAB Discovery Is Not Federal Court Discovery

First, understand the scope. TTAB discovery is governed by the Federal Rules of Civil Procedure (FRCP) but is generally more limited than in federal district court. The TTAB encourages proportionality. You cannot engage in the same “scorched earth” discovery that might be permissible in a patent or antitrust case.

Key limitations:

• No automatic initial disclosures (unlike federal court, no mandatory exchange of core documents without requests).
• Interrogatories limited to 75 (including subparts) unless the parties stipulate to more or the Board orders otherwise. Subpart counting is strict – each discrete subquestion counts toward the 75.
• Document requests are not numerically capped but are subject to proportionality and protective orders.
• Depositions are permitted but require leave of the Board or stipulation. Depositions are less common in TTAB practice than in district court due to cost and the Board’s preference for written discovery.

Even so, discovery can be expensive. A single set of interrogatories might cost $2,000\text{–}$5,000 to draft and respond to. Document review can run tens of thousands of dollars. Depositions can exceed $10,000 each.

That’s why you need a tactical discovery plan – not a kitchen‑sink approach.

The Four Discovery Tools – And How to Use Each

1. Interrogatories (Written Questions)

Interrogatories are written questions that the opposing party must answer under oath. They are useful for obtaining:

• The factual basis for the other side’s claims (e.g., “Describe all evidence that you used the mark in commerce before [date].”)
• Identification of witnesses (“Identify all persons with knowledge of the facts alleged in the Notice of Opposition.”)
• The basis for legal contentions (e.g., “State all facts supporting your claim of likelihood of confusion.”)

Tactical rule: Use interrogatories early to pin down the other side’s case. Force them to commit to specific dates, events, and theories. Later, if they change their story, you can impeach them.

Cost‑saving tip: Limit interrogatories to 25–30 well‑crafted questions. The remaining allowance can be used for follow‑ups. Avoid “contention interrogatories” that ask for legal conclusions – they are often objected to and lead to motion practice.

2. Requests for Production (Documents)

You may request any document (or electronically stored information) that is relevant to the claims or defenses and proportional to the needs of the case. Common requests in TTAB oppositions:

• Specimens of use (e.g., product labels, packaging, website screenshots, advertising)
• Sales and marketing materials showing dates of first use
• Communications between the applicant and its counsel regarding adoption of the mark
• Agreements (licenses, assignments, coexistence agreements)
• Financial records (if damages or profits are at issue – rare in TTAB, but possible for certain counterclaims)

Tactical rule: Be specific. “Produce all documents relating to your use of the mark” is overly broad and will be objected to. Instead: “Produce all specimens of use for the mark [MARK] showing the mark affixed to goods or packaging bearing a date of use on or before [DATE].”

Cost‑saving tip: Negotiate a narrow scope of production before serving requests. Ask for key documents (e.g., three years of sales records, specimen examples) rather than every single email.

3. Requests for Admission (RFAs)

RFAs ask the other side to admit or deny specific factual statements. Admitted facts are deemed established and need not be proved at trial. RFAs are powerful for narrowing the dispute.

Example RFAs in a likelihood of confusion case:

• “Admit that Opposer’s mark was first used in commerce on or before January 1, 2020.”
• “Admit that Opposer’s mark is registered on the Principal Register.”
• “Admit that Applicant’s goods and Opposer’s goods are sold through online retail channels.”

Tactical rule: Serve RFAs early – within the first 30 days of discovery. Admissions can eliminate the need for extensive discovery on uncontested facts.

Cost‑saving tip: If the other side denies a clear fact, you can later move for summary judgment or ask for sanctions. That pressure often encourages reasonable admissions.

4. Depositions (Oral Examinations Under Oath)

Depositions are the most expensive discovery tool. They require a court reporter, a transcript, and often videography. In TTAB practice, depositions are typically limited to key witnesses – e.g., the applicant’s owner, the opposer’s trademark counsel, or a third‑party expert.

Tactical rule: Only depose witnesses who have unique, non‑cumulative information that cannot be obtained through written discovery. Depose the other party’s corporate representative (under Rule 30(b)(6)) to lock in official positions.

Cost‑saving tip: Consider written depositions (questions submitted in writing, answered under oath) as a cheaper alternative. The TTAB permits them by stipulation. They are not as effective for credibility assessments, but they can capture admissions without the expense of a live court reporter.

Responding to Discovery – Avoiding Traps and Waivers

When you receive discovery requests, you have 30 days to respond (unless extended by stipulation or Board order). Failure to respond can lead to motions to compel, sanctions, or even judgment.

How to Respond Properly:

1. Objections – State specific, good‑faith objections (e.g., “overly broad,” “unduly burdensome,” “privileged”). General objections (“subject to and without waiving”) are disfavored.

2. Privilege log – If you withhold documents based on attorney‑client privilege or work product, you must provide a log identifying each document (date, author, recipient, privilege claimed).

3. Produce responsive documents – For requests you do not object to, produce all responsive, non‑privileged documents in your possession, custody, or control. “Control” includes documents held by your employees, agents, and sometimes even related companies.

4. Sign responses – Interrogatory answers and RFA responses must be verified under oath by the party (not just counsel).

Common Mistakes to Avoid:

• Boilerplate objections – “Subject to and without waiving” followed by an unqualified production may waive objections. The TTAB follows the principle that if you produce documents without asserting an objection, you may lose the right to object later.
• Over‑claiming privilege – Work product protection applies only to documents prepared in anticipation of litigation. Routine business records are not privileged.
• Missing deadlines – Extensions are available if you ask before the deadline. But missed deadlines without extension can be fatal.

Using Discovery as a Settlement Tool

The best discovery strategy is the one that leads to a favorable settlement before trial. Discovery can be a lever:

• When you are the opposer: Serve focused discovery that exposes weakness in the applicant’s case. If the applicant has no sales, no specimens, or a weak claim to priority, they will likely settle rather than fight.
• When you are the applicant (defendant): Use discovery to challenge the opposer’s standing, priority, or distinctiveness. If you can show the opposer’s mark is weak or abandoned, they may drop the opposition.

Tactical tip: After each round of discovery responses, assess the case. Send a settlement offer. Most TTAB cases settle during discovery, not after trial.

Discovery Costs and Flat‑Fee Options

Discovery is inherently unpredictable. The number of documents, the cooperation of the other side, and the need for depositions vary wildly. That’s why most firms bill discovery by the hour – and why clients often receive shocking invoices.

We take a different approach. We offer flat‑fee discovery packages that cap your exposure while preserving strategic flexibility:

No hourly billing. No surprise charges for “document review” that takes 100 hours. You know your discovery budget before you serve a single request.

Practical Discovery Timeline in a TTAB Opposition

The TTAB’s scheduling order will specify exact dates. Stick to them.

Next in the Series

TTAB Trial Tactics #4: Summary Judgment – When to Move, When to Oppose, and How to Win Without a Trial

We will cover the legal standards for summary judgment, how to draft a winning motion, and why most cases settle before the judge rules.

Ready to tackle discovery in your TTAB case?
Whether you are the opposer or the respondent, discovery can be managed efficiently with a clear plan and predictable pricing. Contact us today for a flat‑fee discovery evaluation. We will help you decide what to ask for, what to produce, and when to push for settlement.

TTAB Trial Tactics #1: The First 30 Days

TTAB Trial Tactics #2: The Answer

TTAB Trial Tactics #4: Summary Judgment

TTAB Trial Tactics #5: Preparing for Trial

TTAB Trial Tactics #6: The Final Decision