In a recent precedential decision, the TTAB confronted the issue of timeliness of discovery requests served in opposition and cancellation proceedings—namely, whether Eastern Standard Time (EST) controls the timeliness of service of such discovery requests, regardless of the geographic location of the serving party.  While not a particularly exciting legal issue, it is no doubt one having ramifications for all TTAB practitioners.

In Island, LLC v. JBX Pty. Ltd., Defendant JBX argued Plaintiff Island’s discovery requests were untimely because Island served the requests after midnight EST on the last day for written discovery.  Island disputed JBX’s claim, arguing it timely served the discovery requests from California before midnight Pacific Standard Time (PST).

Under applicable Board Rules, parties must serve discovery requests in sufficient time to require responses before the close of discovery.  37 CFR § 2.120(a)(3).  In this case, discovery closed on January 2, 2021.  Because the answering party receives 30 days to respond to discovery requests, Island needed to serve its discovery requests on or before December 3, 2020.

Island served its discovery requests from California via email on December 3rd, at 11:43 PM PST, or 2:43 AM EST on December 4th JBX’s time.  JBX objected to the timeliness of the discovery requests and Island filed a motion to compel.

Eastern Time governs documents filed with the USPTO.  See 37 CFR § 2.195(a).  See also TBMP § 109.  The TTAB, however, noted that neither Rule § 2.195(a) nor TBMP § 109 reference an Eastern Time deadline, or any other time zone issue in the context of documents that are served between or among the parties, but that are not filed with the TTAB.  [Opinion, at p. 4].  For discovery, timeliness is determined on when a document is served, not when it is received.  37 CFR § 2.120(a)(3).

Trademark Rule 2.119, which governs the requirements for service, does not state whether a specific time zone controls the timeliness of service or whether timeliness is based on the serving party or the receiving party.  37 CFR § 2.119.  The TTAB, however, concluded that a review of its practice demonstrates that the date of service is determined in terms of when the document is transmitted for service.  [Opinion, at p. 5].  “In particular, ‘[w]henever a party to an inter partes proceeding before the [TTAB] is required to take some action within a prescribed period of time after the service of a submission upon that party by another party to the proceeding, and the submission is served by first-class mail, Priority Mail Express®, or overnight courier, the date of mailing or of delivery to the overnight courier will be considered the date of service.’”  TBMP § 113.05.

The TTAB further noted that it also permits a party who, because of a technical problem or extraordinary circumstances cannot serve discovery by email, to serve its discovery by a manner described in Trademark Rules 2.119(b)(1)-(b)(4).  37 CFR § 2.119(b)(1)-(b)(4).  See also TBMP § 403.02.  Thus, a party who meets the requirements to serve discovery requests by, for example, overnight courier will have timely served its discovery requests if it delivers them to the overnight courier thirty-one days before the close of discovery. [Opinion, at p. 6]. “And this is so even though the responding party would receive the discovery requests thirty (rather than thirty-one) days before the close of discovery.”  [Id.].  The answering party’s responses are still due based on the date of service, even though it does not receive the benefit of additional time to respond due to the manner of service.

Based on this analysis, the TTAB concluded that the date of service is to be based on when the document in question is submitted for transmission of service.  [Id.].  Island served its discovery requests by email from California.  Thus, the time zone in California applied to determine the timeliness of service of the discovery requests.  Because Island served the requests on December 3rd before midnight PST, the TTAB concluded Island timely served the discovery requests.  [Id.].

The case is Island, LLC v. JBX Pty. Ltd., 2021 USPQ2d 779 (TTAB 2021) (precedential).