[E-trademarks] TBMP Section 523.01

[reidl at sbcglobal.net]

Diane,

The general rule is that each party has an independent obligation to comply
with the discovery rules.  The fact that one party does not comply does not
excuse non-compliance by the other.

That said, if the proceeding is suspended, I take that literally:  no
discovery unless noticed prior to the filing of the motion to compel.  So, I
think it is appropriate not to supplement until the motion is decided and
the schedule is reset.

Paul

Paul W. Reidl

Dickenson, Peatman & Fogarty

1455 1st St #301

Napa, CA 94559

707-261-7010 x 7210

preidl at dpf-law.com <mailto:preidl at dpf-law.com> 

@TMGuy

 

 

 

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of
dbmelnick--- via E-trademarks
Sent: Thursday, February 8, 2024 4:14 PM
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Subject: [E-trademarks] TBMP Section 523.01

 

Good evening:  I am wondering if anyone would like to opine (informally)
about the language of TBMP 523.01 regarding motions to compel.  The scenario
is that both parties have served discovery.  Opposer has responded, but
Applicant has not.

The pertinent portion of the section reads as follows:  

In accordance with
<https://tbmp.uspto.gov/RDMS/TFSR/current#/current/r-80607ff4-32db-4110-9ea3
-b0566a6418da.html> 37 C.F.R. § 2.120(f), when a party files a motion to
compel disclosures or discovery, the Board will issue an order suspending
the proceeding with respect to all matters not germane to the motion, and no
party should file any paper that is not germane to the discovery dispute,
except as otherwise specified in the Board’s suspension order. However,
neither the filing of a motion to compel nor the Board’s resulting
suspension order tolls the time for parties to make required disclosures or
respond to any outstanding discovery requests which had been served prior to
the filing of the motion to compel, nor does it excuse a party’s appearance
at any discovery deposition which had been duly noticed prior to the filing
of the motion to compel. When the motion to compel is filed after discovery
has closed, but before the day of the deadline for pretrial disclosures for
the first testimony period, the time period for making pretrial disclosures
will be suspended and dates will be reset after the motion to compel is
decided. [
<https://tbmp.uspto.gov/RDMS/TBMP/current#endnote-p-9d8d2fc7-f2b3-462e-8989-
b0ce93590518> Note 8.]

Does Opposer have to continue to supplement its discovery responses pending
the resolution of the Motion to Compel?   At that point, it does feel like
the discovery will be flowing in solely one direction.  

Thanks in advance for any thoughts that you can provide.

Diane B. Melnick

Practus LLP

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