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What is Discoverable in a TTAB Proceeding?

(From TBMP January 2017)


TBMP 414    Selected Discovery Guidelines

Fed. R. Civ. P. 26(b) Discovery Scope and Limits.

(1) Scope in General. Unless otherwise limited by court order, the scope of discovery is as follows: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable.


37 CFR §2.120  Discovery.

(a) In general. (1) Except as otherwise provided in this section, and wherever appropriate, the provisions of the Federal Rules of Civil Procedure relating to disclosure and discovery shall apply in opposition, cancellation, interference and concurrent use registration proceedings. The provisions of Rule 26 of the Federal Rules of Civil Procedure relating to required disclosures, the conference of the parties to discuss settlement and to develop a disclosure and discovery plan, the scope, proportionality, timing and sequence of discovery, protective orders, signing of disclosures and discovery responses, and supplementation of disclosures and discovery responses, are applicable to Board proceedings in modified form, as noted in these rules and as may be detailed in any order instituting an inter partes proceeding or subsequent scheduling order.


Listed below are a variety of discovery determinations, with case citations, relating to the discoverability of various matters in Board inter partes proceedings. This list is illustrative, not exhaustive.


[Note that the chart below is extracted from TBMP 414 and not contained in it.]


(1) The identification of discovery documents (as opposed to their substance) is not privileged or confidential. [Note 1.]

 1.   See Goodyear Tire & Rubber Co. v. Tyrco Industries, 186 USPQ 207, 208 (TTAB 1975) (fact that client received legal opinions and identity of documents related thereto, not privileged); Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171 (TTAB 1975) (objection to interrogatories on ground of privilege or under Fed. R. Civ. P. 26(b)(3), i.e., material prepared in anticipation of trial, not well taken).


(2) In those cases where complete compliance with a particular request for discovery would be unduly burdensome, the Board, upon motion, 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. [Note 2.]

 2.   See, e.g.,Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015) (for purposes of that cancellation proceeding, any representative sampling ought to correspond to dates necessary to prove Petitioner’s claims); Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1910 (TTAB 2011) (where hundreds of thousands of dollars spent, and tens of thousands of documents produced, opposer required to produce only a representative sample with respect to the specific requests at issue); Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720-21 (TTAB 1987) (production of representative sample not appropriate where full production, that is, a total of eleven documents, was clearly not burdensome); Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147, 149 (TTAB 1985) (allowed to provide representative samples of invoices from each calendar quarter); J.B. Williams Co. v. Pepsodent GmbH, 188 USPQ 577, 579-80 (TTAB 1975) (opposer need not identify dollar value and number of units of product held in inventory but may indicate only whether it does in fact carry such products in stock); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 689-90 (TTAB 1975) (sales and advertising figures for six different categories of goods since 1936 limited to five-year period and a statement that there have been sales for the other years); Van Dyk Research Corp. v. Xerox Corp., 181 USPQ 346, 348 (TTAB 1974) (production limited to ten representative samples of documents pertaining to selection of each type of copy machine); Mack Trucks, Inc. v. Monroe Auto Equipment Co., 181 USPQ 286, 288 (TTAB 1974) (representative samples of advertisements permitted). Compare British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (if opposers believed the limited information provided by applicant in response to interrogatories was insufficient and that applicant’s objections on grounds that the interrogatories were unduly broad, burdensome, etc., were unfounded, opposers could have moved to compel more complete responses), aff’d, Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994); The Procter & Gamble Co. v. Keystone Automotive Warehouse, Inc., 191 USPQ 468, 471 (TTAB 1976) (if applicant believed documents produced by opposer were not truly representative, applicant could have filed motion to compel).


(3) The classes of customers for a party’s involved goods or services are discoverable. In contrast, the names of customers (including dealers) constitute confidential information, and generally are not discoverable, even under protective order. [Note 3.] 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. [Note 4.]

 3.   See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (need not reveal names of customers including dealers).


 4.   See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988); Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147, 149 (TTAB 1985) (need for customer names does not outweigh possible harm, such as harassment of customers); Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167, 169 (TTAB 1980) (possible harm outweighed where issue is abandonment); Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583 (TTAB 1975) (name and address of first customer may be revealed to verify date of first use); J.B. Williams Co. v. Pepsodent GmbH, 188 USPQ 577, 580 (TTAB 1975) (must identify class of customers who purchase products under mark, but not names of customers). See also Ortho Pharmaceutical Corp. v. Schattner, 184 USPQ 556, 557 (TTAB 1975); Miller & Fink Corp. v. Servicemaster Hospital Corp., 184 USPQ 495 (TTAB 1975); Cool-Ray, Inc. v. Eye Care, Inc., 183 USPQ 618, 621 (TTAB 1974); and American Optical Corp. v. Exomet, Inc., 181 USPQ 120, 123-24 (TTAB 1974).


(4) Information concerning a party’s selection and adoption of its involved mark is generally discoverable (particularly of a defendant). [Note 5.]

 5.   See Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583 (TTAB 1975) (must identify knowledgeable employees); Goodyear Tire & Rubber Co. v. Tyrco Industries, 186 USPQ 207, 208 (TTAB 1975) (whether applicant received opinions concerning adoption of mark is not privileged and applicant must identify person, date and documents relating thereto); Volkswagenwerk AG v. MTD Products Inc., 181 USPQ 471, 473 (TTAB 1974) (identification of persons who suggested use of involved mark on involved goods is not improper). Cf. Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 190 (TTAB 1974) (applicant’s request for writings relating to selection of mark to show what third parties’ marks may have been considered and extent to which opposer believed its mark conflicted therewith not permitted).


(5) Information concerning a party’s first use of its involved mark is discoverable. [Note 6.]

 6.   See, e.g., Georgia-Pacific Corp. v. Great Plains Bag Co., 190 USPQ 193, 195-96 (TTAB 1976) (dates petitioner’s plants first began production of goods bearing mark are pertinent to claim of priority); Miller & Fink Corp. v. Servicemaster Hospital Corp., 184 USPQ 495, 496 (TTAB 1975) (must provide name, address and affiliation of persons to whom service was first rendered). See also Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1613 (TTAB 1991) (use or intended use of applicant’s mark in commerce with U.S. is relevant).


(6) Search reports are discoverable, but the comments or opinions of attorneys relating thereto are privileged and not discoverable (unless the privilege is waived). [Note 7.]

 7.   See Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167, 170 (TTAB 1980); Goodyear Tire & Rubber Co. v. Tyrco Industries, 186 USPQ 207, 208 (TTAB 1975) (fact that an opinion concerning trademark validity or possible conflicts regarding applicant’s adoption and use of mark was given to applicant is not privileged); Miles Laboratories, Inc. v. Instrumentation Laboratory, Inc., 185 USPQ 432, 434 (TTAB 1975); Amerace Corp. v. USM Corp., 183 USPQ 506, 507 (TTAB 1974) (attorney comments on search report or prosecution of application are privileged).


(7) For proceedings commenced on or after November 1, 2007, a party is required, in its pretrial disclosures, to name the witnesses it expects will testify, or may testify if the need arises, by oral testimony or affidavit and must provide general identifying information about the witness(es), as well as the witness(es)’ telephone number and address. [Note 8.] In addition, a party must provide a general summary or list of subjects about which the witness(es)are expected to testify and a general summary or list of documents and things that may be introduced during the testimony of the witness(es). [Note 9.] If a party expects to call no witnesses during its assigned testimony period, it must so state in its pretrial disclosures. [Note 10.] Consequently, the identity of such witnesses is discoverable. [Note 11.] Such witnesses may have been named in a party’s initial or supplemental initial disclosures,but a party is not required to supplement or correct its initial disclosures to provide identifying information about a witness listed in pretrial disclosures if that information previously has been made known to the other party in writing or during the discovery process. [Note 12.] See TBMP § 408.03. For proceedings commenced prior to November 1, 2007, a party need not, in advance of trial, identify the witnesses it intends to call, except that the names of expert witnesses intended to be called are discoverable. [Note 13.] Regardless of when proceedings commenced (i.e., before or after November 1, 2007), a party is not required, in advance of trial, to disclose each document or other exhibit it plans to introduce. [Note 14].


 8.   37 CFR § 2.121(e).


 9.   37 CFR § 2.121(e).


 10.   37 CFR § 2.121(e).


 11.   Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1179 (TTAB 2010) (if opposer serves revised pretrial disclosures naming witness, discovery reopened for applicant only for the limited purpose of allowing applicant to take named witness’ discovery deposition).


 12.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245-46 (August 1, 2007). See Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1861 (TTAB 2009) (opposer’s failure to supplement its initial disclosures to identify foreign non-party witness as a potential witness does not preclude introduction of witness’ discovery deposition at trial, even though opposer should have supplemented initial disclosures, because applicant was aware of witness’ identity and subject matter of her testimony and was able to cross-examine the witness during the discovery phase).


 13.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69954 (October 7, 2016) (Final Rule) and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 19296 (April 4, 2016) (Proposed Rule).


 14.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015) (a responding party need not provide information regarding its legal research and legal strategies); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002) (interrogatory requesting that opposer "identify each and every fact, document [] in support of its pleaded allegations" was equivalent to a request for identification of [] trial evidence prior to trial, and therefore improper); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (need not disclose entirety of proposed evidence), aff’d, Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994).


(8) A party’s plans for expansion may be discoverable under protective order. [Note 15.]

 15.   See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (opposer’s intent to expand business to include manufactured products similar to applicant’s is relevant).


(9) Information concerning a party’s awareness of third-party use and/or registration of the same or similar marks for the same or closely related goods or services as an involved mark, is discoverable 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. [Note 16.]

 16.   See Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1348 (TTAB 2013) (a party need not investigate third-party use to respond to discovery requests); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1071-72 (TTAB 2011) (a party has no duty to conduct an investigation of third-party uses in response to discovery requests); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1788 (TTAB 2001) (no obligation to search for third-party uses); Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1864 (TTAB 2001) (investigation not necessary); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (need not investigate); American Society of Oral Surgeons v. American College of Oral & Maxillofacial Surgeons, 201 USPQ 531, 533 (TTAB 1979) (relevant to show mark is weak). See also Domino’s Pizza Inc. v. Little Caesar Enterprises Inc., 7 USPQ2d 1359, 1363 n.9 (TTAB 1988) (relevant to show purchaser perception of the marks).


(10) Information concerning litigation and controversies including settlement and other contractual agreements between a responding party and third parties based on the responding party’s involved mark is discoverable. [Note 17.] 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). [Note 18.]

 17.   See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (licensing agreements and arrangements between opposer and third parties and amount of sales thereto are relevant); American Society of Oral Surgeons v. American College of Oral & Maxillofacial Surgeons, 201 USPQ 531, 533 (TTAB 1979) (relevant to show admissions against interest, limitations on rights in mark, course of conduct leading to abandonment, that the mark has been carefully policed, etc.); Georgia-Pacific Corp. v. Great Plains Bag Co., 190 USPQ 193, 197 (TTAB 1976) (settlement agreements that have avoided litigation may show limitations on party’s rights in mark or reveal inconsistent statements); J.B. Williams Co. v. Pepsodent GmbH, 188 USPQ 577, 580-81 (TTAB 1975) (identity of all civil and USPTO proceedings involving mark is not objectionable); Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 172 (TTAB 1975) (contacts with third parties, such as through litigation or agreements, based on pleaded mark for involved goods, are relevant).


 18.   See Interbank Card Association v. United States National Bank of Oregon, 197 USPQ 127, 128 (TTAB 1975) (need not reveal reasons for dismissal of prior opposition against third party) and Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 172 (TTAB 1975) (need not identify all documents pertaining to such litigation).


(11) A party need not provide discovery with respect to those of its marks and goods and/or services that 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 for purposes of establishing the relationship between the goods or services of the parties. [Note 19.]

 19.   See TBC Corp. v. Grand Prix Ltd., 16 USPQ2d 1399, 1400 (TTAB 1990) (where goods of parties differ, determining whether parties market goods of same type is relevant to establishing relationship between goods); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (questions concerning specific goods on which opposer uses mark are proper to extent scope of inquiry is limited to those goods identified in application, or involve goods of type marketed by applicant, or mentioned by opposer during discovery); Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147, 149 n.2 (TTAB 1985) (information regarding goods other than those in involved application and registration is irrelevant ); Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 584 (TTAB 1975); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 190 (TTAB 1979) (applicant’s use of mark on goods other than those in application irrelevant); American Optical Corp. v. Exomet, Inc., 181 USPQ 120, 122 (TTAB 1974) (interrogatory too broad, requiring identity of products having no relevance to opposition ); Volkswagenwerk AAG v. Thermo-Chem Corp., 176 USPQ 493, 493 (TTAB 1973) (applicant need not provide information as to its other marks or its other products, or as to whether involved mark is used on other products). See also Wella Corp. v. California Concept Corp., 192 USPQ 158, 163 (TTAB 1976) (although the goods are not the same, they are of the type often made by the same manufacturer), rev’d on other grounds, 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977); Sterling Drug Inc. v. Sebring, 515 F.2d 1128, 185 USPQ 649, 652 (CCPA 1975) (in the absence of any showing that manufacturers never use same mark on the two involved classes of goods, the fact that the goods are often made by the same manufacturer, even if under different marks, may be relevant).


(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. [Note 20.]

 20.   See J.B. Williams Co. v. Pepsodent GmbH, 188 USPQ 577, 580 (TTAB 1975) (may identify reasonable number of those most knowledgeable of adoption, selection or day-to-day uses of mark); Volkswagenwerk AG v. MTD Products Inc., 181 USPQ 471, 473 (TTAB 1974); American Optical Corp. v. Exomet, Inc., 181 USPQ 120, 122 (TTAB 1974) (identification of vice-president as most familiar with use held sufficient).Cf. Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1243 n.10 (TTAB 2012) (plaintiff not faulted for not originally identifying witness in response to an interrogatory because it is unclear from witness’ title whether she was an "officer or managing agent," which was the information sought by discovery request).


(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. [Note 21.]

 21.   For general rule, see Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612-13 (TTAB 1991); Johnson & Johnson v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974) (foreign use of mark creates no rights in mark in U.S.). See also Oland’s Breweries [1971] Ltd. v. Miller Brewing Co., 189 USPQ 481, 489 n.7 (TTAB 1975) (use or promotion of a mark confined to a foreign country, including Canada, is immaterial to ownership and registration in U.S.), aff’d, Miller Brewing Co. v. Oland’s Breweries, 548 F.2d 349, 192 USPQ 266 (CCPA 1976). Concerning possible exceptions,see Article 6bis of the Paris Convention; Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1480 (Fed. Cir. 1990) (knowledge of foreign use, in itself, does not preclude good faith adoption and use in U.S.); Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612-13 (TTAB 1991); Mastic Inc. v. Mastic Corp., 230 USPQ 699, 702 (TTAB 1986) (in view of applicant’s knowledge of opposer’s claim to mark in foreign countries and of opposer’s intention to enter U.S. market, it appears that applicant intended to preclude opposer from entering U.S. market); Adolphe Lafont, S.A. v. S.A.C.S.E. Societa Azioni Confezioni Sportive Ellera, S.p.A., 228 USPQ 589, 595 (TTAB 1985) (presale publicity including providing clothing with mark to competitive skiers insufficient to popularize mark as identifying source to U.S. purchasers and to create priority rights in the U.S.); Davidoff Extension S.A. v. Davidoff International, Inc., 221 USPQ 465, 468 (S.D. Fla. 1983) (foreign corporation with U.S. registration based on foreign registration had rights in mark superior to individual who attempted to use the name in the U.S.); Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 77-78 (TTAB 1983) (prior use and advertising in connection with goods marketed in foreign country, whether advertising occurs inside or outside U.S., creates no prior rights in U.S. against one who adopts similar mark prior to foreigner’s first use on goods sold in U.S., unless foreign party’s mark was famous); All England Lawn Tennis Club, Ltd. v. Creations Aromatiques, Inc., 220 USPQ 1069, 1072 (TTAB 1983) (opposer acquired rights to famous mark in U.S. for competitions held in England prior to adoption of mark by applicant for any goods/services); Canovas v. Venezia 80 S.R.L., 220 USPQ 660, 662 (TTAB 1983) (claim of fame in France and existence of pending U.S. application based on foreign registration insufficient to establish that fame extended to U.S.). See also Mother’s Restaurants, Inc. v. Mother’s Other Kitchen, Inc., 218 USPQ 1046, 1048 (TTAB 1983); Johnson & Johnson v. Diaz, 339 F. Supp. 60, 172 USPQ 35, 37 (C.D. Cal. 1971).


(14) Generally, the names and addresses of the stockholders of a corporate party or other entities owned or controlled by the 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 Trademark Act § 5, 15 U.S.C. § 1055. [Note 22.]


 22.   See Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583 (TTAB 1975) (irrelevant unless the other company has used the mark); Volkswagenwerk AG v. MTD Products Inc., 181 USPQ 471, 472 (TTAB 1974) (no bearing on right to register); American Optical Corp. v. Exomet, Inc., 181 USPQ 120, 122 (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. [Note 23.]

 23.   See Varian Associates v. Fairfield-Noble Corp., Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583 (TTAB 1975) (locations of "all places of business" overly broad); American Optical Corp. v. Exomet, Inc., 181 USPQ 120, 122 (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. [Note 24.]

 24.   See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (relevant areas of inquiry include number of salesmen, locations of sales representatives who market goods bearing the mark, and geographic location of dealers who market and distribute the products under the mark); Georgia-Pacific Corp. v. Great Plains Bag Co., 190 USPQ 193, 196 (TTAB 1976) (petitioner was required to list all states to which its goods were shipped prior to respondent’s claimed first use date and to identify persons who would be knowledgeable about such matters); J.B. Williams Co. v. Pepsodent GmbH, 188 USPQ 577, 580 (TTAB 1975) (information regarding geographic areas of distribution of goods is relevant to questions of likelihood of confusion and abandonment); Miller & Fink Corp. v. Servicemaster Hospital Corp., 184 USPQ 495, 495 (TTAB 1975) (year by year, state by state break down of numbers of magazines distributed is proper); Volkswagenwerk AG v. MTD Products Inc., 181 USPQ 471, 473 (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. [Note 25.]


 25.   See J.B. Williams Co. v. Pepsodent GmbH, 188 USPQ 577, 580 (TTAB 1975) (may lead to relevant information concerning circumstances surrounding selection of mark, distinctiveness of mark).


(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. [Note 26.]

 26.   See Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147, 149 (TTAB 1985) (relevant to issues of likelihood of confusion and abandonment; response that these figures have been "substantial" is insufficient); Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583 (TTAB 1975) (sales and advertising expenditures have bearing on registrability); J. B. Williams Co. v. Pepsodent GmbH, 188 USPQ 577, 579 (TTAB 1975) (relevant to issue of abandonment); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (allowed to provide figures for each of last five years and a statement that there have been sales for the other years); Volkswagenwerk AG v. MTD Products Inc., 181 USPQ 471, 473 (TTAB 1974) (money expended in advertising to be confined to goods in application); American Optical Corp. v. Exomet, Inc., 181 USPQ 120, 123 (TTAB 1974) (required to furnish round figures concerning sales under mark for period of five years as well as advertising expenditures relating thereto). See also Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015) (while annual sales and advertising figures, stated in round numbers, for a party’s involved goods are proper matters for discovery, indiscriminate requests for financial data, information and documents that offer nothing to further the claims before the Board (e.g., current stock price, projected income for next five years) are not appropriately tailored to the claims in that opposition proceeding and are thus undiscoverable).


(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. [Note 27.]


 27.   See Volkswagenwerk AG v. MTD Products Inc., 181 USPQ 471, 473 (TTAB 1974) (applicant’s knowledge of use by opposer or by the public or the trade, is relevant); American Optical Corp. v. Exomet, Inc., 181 USPQ 120, 123 (TTAB 1974) (applicant required to go through its files to determine when it acquired actual knowledge of opposer’s marks).

(20) Information concerning the technical expertise of the purchasers of a party’s products is relevant to the issue of likelihood of confusion, and is discoverable. [Note 28.]


 28.   Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (the sophistication of purchasers a factor in assessing the likelihood of confusion).

(21) 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. [Note 29.]

 29.   See Fed. R. Civ. P. 33(a)(2); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671,1676 (TTAB 1988); Gould Inc. v. Sanyo Electric Co., 179 USPQ 313, 314 (TTAB 1973) (question of whether opposer believes marks to be confusingly similar is relevant).


(22) The mere taking of discovery on matters concerning the validity of a pleaded registration, under any circumstances, is not objectionable on the basis that it constitutes a collateral attack on the registration. [Note 30.]


 30.   See Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171 (TTAB 1975) (party is entitled to take discovery to determine whether grounds exist for any affirmative defenses or counterclaims); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 187 (TTAB 1974).

(23) Where it is asserted that the mark or term is generic, or merely descriptive and without acquired distinctiveness, the following categories of information and documents are discoverable: 1) those assessing, evaluating, or considering any methods of describing the "product category"; 2) those relating to the decision to offer the product at issue to the extent such information and documents refer to the “product category” or any marks used or considered for use containing the purportedly generic term; 3) those assessing, evaluating, or considering how to categorize, describe or define the product; 4) those reflecting any consumer views or comments about the product offered. [Note 31.]


 31.   See Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1910 (TTAB 2011).

(24) Where it is asserted that the mark or term is generic, or merely descriptive and without acquired distinctiveness, information and documents relating to the choice of a particular product name need not be provided unless that name includes the term at issue. [Note 32.]


 32.   See Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1911 (TTAB 2011).

(25) A party may take discovery as to matters relevant to the claims or defenses raised in the pleadings. [ Note 33.] However, parties are expected to take into account the principles of proportionality with regard to discovery. [ Note 34.] In addition, a party need not provide its legal research and information regarding its legal strategies. [ Note 35.]

 33.   Mack Trucks, Inc. v. Monroe Auto Equip. Co., 181 USPQ 286, 287 (TTAB 1974) (opposer must answer interrogatories concerning allegations in notice of opposition).


 34.   See 37 CFR §2.120(a)(1); Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1386 (TTAB 2016) (Board expects parties to take into account the principles of proportionality with regard to discovery); Wisconsin Cheese Group, LLC v. Comercializadora de Lacteos y Derivados S.A. de C.V., 118 USPQ2d 1262, 1267 n.10 (TTAB 2016) ("The Board has applied the principle of proportionality to define the proper subjects of and expanse of inquiry in inter partes proceedings under various circumstances."); Domond v.37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (Board applied proportionality principle to interrogatories, document requests and requests for admission); The Phillies v. Philadelphia Consolidated Holding Corp.,107 USPQ2d 2149, 2153 (TTAB 2013) (discussing principles of proportionality with respect to requests for admissions); Frito-Lay N. Am. Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908-10 (TTAB 2011) (Board applied proportionality principles to electronically-stored information).


 35.   See Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015).