TTAB Limits Extent Of E-Discovery In Board Proceedings

The Trademark Trial and Appeal Board (TTAB) recently held that expansive discovery of electronically stored information (ESI) will normally not be necessary in registration proceedings. Although the scope of discovery in TTAB cases is defined by Rule 26, Fed. R. Civ. P and is technically identical to the scope of discovery in civil actions, the TTAB held that, due to the narrower scope of issues to be determined, "the burden and expense of e-discovery will weigh heavily against requiring production in most [trademark opposition and cancelation proceedings]," Frito-Lay North America, Inc. v. Princeton Vanguard LLC, 100 U.S.P.Q.2d 1904 (TTAB 2011). The TTAB did, however, note that ESI must be produced "where appropriate." The decision also highlights the importance of parties agreeing in advance on ESI-related issues rather than engaging in motion practice after the fact.