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April 15, 2016 Vol. 71 No. 7 Back to Bulletin Main Page

UNITED STATES: Trademark Trial and Appeal Board Clarifies Discovery Obligations

On February 24, 2016, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office released a precedential order requiring parties to produce unredacted documents in response to document requests under its rules. The order, in Intex Recreation Corp. v. The Coleman Company, Inc., Opp. No. 91220432, weighed the policy concerns underlying the parties’ arguments regarding whether the producing party could redact information which it viewed as “irrelevant” or “confidential” and found that the policy concerns underlying a rule requiring production of unredacted documents to outweigh the alternative. This order resolves a split in non-TTAB federal authority which applicants and opposers have used to support their differing views regarding redaction in practicing before the TTAB.

This opinion explicitly disapproves of a common practice in both the federal courts and before the TTAB. Companies would be well advised to segregate their documents so as to have information which is relevant only to single topics within each document to prevent any perceived need to redact. As this opinion represents an interpretation of now-existing practice rules, it is effective immediately.

The decision is available online here.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2016 International Trademark Association