Page 8 - Grapevine Jan-Feb 2020

In The Winery

can take anywhere from several months to several requested documents, you might file a motion
years in more complicated cases. In addition to to compel, asking the court to require the party
drafting and responding to each other’s requests, to produce the documents. There may also be
the attorneys will often have protracted discovery motions to dismiss the case, motions for sanctions
disputes, arguing about the scope of the requests, for abusing the discovery process, motions to
the disclosure of confidential business information, exclude evidence or disqualify an expert, and many
or the application of attorney-client privilege. Most more. After discovery is completed, the parties will
clients dramatically underestimate the amount of often file a motion for summary judgment, in which
time it will take to complete discovery, the amount the party claims that there are no material facts in
of time and effort they will have to spend in collect- dispute between the parties and therefore they are
ing documents and responding to requests, and the entitled to win the case as a matter of law.
costs involved.
With all motions, the other party will have an
Experts opportunity to file a written opposition to the
motion. In some cases, the motion will be decid-
All of the discovery issues mentioned above relate ed by the court just on the basis of these written
to what are called “fact witnesses.” This can be briefs, but for more complex issues, the parties or
anyone who has factual information relevant to the court may request an oral hearing to present
the case. In most instances, the requests will be the issues to the court in-person.
directed to the company and/or individual owners
or employees of the company. In some cases, the Trial
litigants may also seek discovery from third parties
who have no direct involvement in the matter, but Up to this point, the processes at the TTAB and in
nevertheless have information relevant to the case. federal court are very similar. This is where they
There is another category of discovery, however, diverge significantly.
relating to expert witnesses.
At the TTAB, the plaintiff will have a period of
In trademark cases, experts will sometimes be time in which they may present evidence to the
called by one or both sides to provide opinions board in support of their case. They first have to
as to whether there is a likelihood that the rele- make “pre-trial disclosures,” telling the board and
vant public will be confused as to the source of the other party what witnesses they will present,
goods due to the similarity of the two trademarks. for example. Then there will be a “trial” period
Sometimes these experts will conduct surveys of during which they present their case: they will
the public. The experts will then draft a written submit various documents and affidavits, and may
report of their findings and stating their opinions. take testimonial depositions of the witnesses either
The other side will usually then take a deposition through live testimony or written questions. At the
of the expert to try to expose weaknesses in their conclusion of this period, the defendant will have
opinions. While experts can be extremely useful, an opportunity to do the same. The plaintiff will
they also dramatically add to the cost of the litiga- then have an additional period for rebuttal. Once
tion due to their fees as well as the cost of associat- these “trial” periods are complete, each side will
ed discovery. have an opportunity to file a brief, arguing the facts
to the board. This entire process from the begin-
Motions ning of the plaintiff’s trial phase, to the filing of the
last brief, may take as long as 9-10 months. Upon
Throughout the case, but particularly after dis- completion of the briefs, one or both parties may
covery, each party may file a variety of motions ask the board for an oral hearing. After all of the
with the TTAB or court. A motion is a document briefs are completed and, if requested, the hearing
requesting the court to decide an issue. For exam- has taken place, the Board will then take all of the
ple, if the other party refuses to provide certain evidence under consideration and render its deci-

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