Can a discovery request submitted within the deadline in one time zone be received past the deadline in another?  It certainly can.  In Island, LLC v. JBX PTY LTD, (Trademark Tr. & App. Bd July 21, 2021), a trademark Trial and Appeal Board Patent and Trademark Office (PTO) case ruling written by Rebecca Stempien Coyle, the Board, stating that it “considers the date of service to be based on when the document in question is submitted for transmission of service”, granted Opposer/Petitioner Island LLC’s motion to compel full responses to its first set of interrogatories and first set of document requests, while denying a request for an order that Applicant/Respondent JBX Pty. Ltd. waived its other objections on the merits, instead reopening the discovery period for thirty days to allow Applicant time to respond to Opposer’s first set of interrogatories, first set of document requests, and first set of requests for admission.

Case Background

In this patent and trademark dispute, discovery was set to close on January 2, 2021.  By operation of Trademark Rule 2.120(a)(3), 37 C.F.R. § 2.120(a)(3), the deadline to serve written discovery requests was 30 days before that, on December 3, 2020. The Opposer served its discovery requests by email, from California, at 11:43 p.m. Pacific Time on December 3, 2020, which was 2:43 a.m. Eastern Time on December 4, 2020, to Applicant’s counsel, who is located in Iowa. On December 31, 2020, the Applicant served responses to each of Opposer’s written discovery requests objecting to them on the basis that they were untimely.

Contending there is no rule that discovery requests are controlled by the Eastern time zone, the Opposer stated that references to Eastern Time in the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)) are limited to filing dates for electronic submissions with the Board, and this did not include matters served between the parties that are not submitted to the Board, such as discovery requests. The Opposer also argued that Applicant never objected to Opposer’s service of other discovery documents in this proceeding where the date in the Certificate of Service statement was based on Pacific Time. The Opposer also contended that Opposer’s initial disclosures and responses to the Applicant’s written discovery requests were each served by Opposer after 9:00 p.m. Pacific Time with a Certificate of Service based on Pacific Time, which the Applicant did not dispute.

In response, the Applicant asserted that the Eastern time zone controls the service of discovery requests; therefore, Opposer’s requests, served with less than thirty days remaining in the discovery period, were untimely per Trademark Rule 2.120(a)(3), 37 C.F.R. § 2.120(a)(3), which required that discovery requests be served such that responses are due no later than the close of discovery.  Relying on Fed. R. Civ. P. 6(a)(4),[8] as well as Trademark Rule 2.195, 37 C.F.R. § 2.195, the Applicant contended that Opposer, who was located in California, needed to have served its discovery requests by midnight Eastern Time (9:00 pm Pacific Time) on December 3, 2020, in order to afford the Applicant a full thirty days to serve its responses and further argued that Opposer’s address of record was in Wyoming, and thus it was already past midnight on December 3, 2020 – 12:43 a.m. Mountain Time — when Opposer served its discovery requests.

Board’s Ruling

In ruling on the dispute, the Board stated: “Pursuant to Trademark Rule 2.195(a), 37 C.F.R. § 2.195(a), ‘[t]he filing date of an electronic submission is the date the Office receives the submission, based on Eastern Time.’ See also TBMP § 109. By its terms Trademark Rule 2.195(a) applies only to submissions filed with the Board. Neither the rule, nor TBMP § 109, discuss an Eastern Time deadline, or any other time zone issue, in the context of documents, such as discovery requests, served between or among the parties but not filed with the Board.”  It also stated: “In inter partes proceedings before the Board, the timeliness of discovery requests is based on when the requests are served, not when they are received. Trademark Rule 2.120(a)(3), 37 C.F.R. § 2.120(a)(3) (written discovery requests ‘must be served early enough in the discovery period, as originally set or as may have been reset by the Board, so that responses will be due no later than the close of discovery,’ and responses to such written discovery requests are due within thirty days of service of the requests)”.

As a result, the Board stated: “In view of the foregoing, Applicant’s argument that it would not be afforded the full thirty days to respond to Opposer’s discovery requests is not persuasive. The Board’s rules are clear that the time to respond to discovery requests runs from the date of service and the time to respond is measured in days, not hours. Moreover, the Board considers the date of service to be based on when the document in question is submitted for transmission of service. Consequently, because Opposer served its discovery requests by email from California, and upon applying the time zone in California it was December 3, 2020 at the time of service of the requests, Opposer’s discovery requests were timely served. Accordingly, Applicant’s objections on the basis that Opposer’s requests were untimely, are overruled.”

Overruling the objections, the Board granted the Opposer’s motion to compel full responses to its first set of interrogatories and first set of document requests, while denying a request for an order that Applicant waived its other objections on the merits, instead reopening the discovery period for thirty days to allow Applicant time to respond to Opposer’s first set of interrogatories, first set of document requests, and first set of requests for admission.

So, what do you think?  Should the time submitted or the time received control the date of submission?  Or should attorneys avoid this by not waiting until the last minute to serve discovery requests?  😉  Please share any comments you might have or if you’d like to know more about a particular topic.

Case opinion link courtesy of eDiscovery Assistant, an Affinity partner of eDiscovery Today. Hat tip to David Horrigan of Relativity for the initial discussion of this case at ILTACON two weeks ago!

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