Monday, July 26, 2021

Precedential No. 19: Does Eastern Standard Time Control the Timeliness of Discovery Requests? TTAB Says No

The Board faced head on the scintillating issue of the timing of service of discovery requests, and more particularly whether Eastern Standard Time (EST) controls the timeliness thereof, regardless of the location of the serving party. Defendant JBX contended that Plaintiff Island's discovery requests were served too late because they were after midnight EST of the last day for written discovery. Island (located in California) disagreed because it served the requests before midnight Pacific Standard Time (PST). That pesky three-hour difference between EST and PST was the cause of the problem. Island, LLC v. JBX Pty Ltd, 2021 U.S.P.Q.2d 779 (T.T.A.B. 2021) [precedential].

Discovery requests must be served in time to require responses prior to the close of discovery. See Rule 2.120(a)(3). Here, discovery was set to close on January 2, 2021, and since a receiving party must respond in thirty days, the deadline for Plaintiff Island to serve written discovery requests was December 3, 2020. Island served its requests by email from California at 11:43 PM PST on December 3rd, which translated to 2:43 AM EST on December 4th. Defendant JBX responded to the discovery requests by objecting to their timeliness. Island than filed the subject motion to compel.

Although Eastern Time governs documents that are filed with and received by the USPTO (Rule 2.195(a)), nothing in the Trademark Rules of Practice or in the TBMP discusses the applicability of Eastern Time in the context of documents served between parties. For discovery requests, timeliness is based on when a document is served, not received. See Rule 2.120(a)(3). 

The Board noted that, under Rule 2.119(b), a party who, because of technical problems or extraordinary circumstances, cannot serve discovery by email may serve in a manner described in Rule 2.119(b)(1) - (b)(4) [(b)(5)? - ed.], including first-class mail, Priority Mail Express®, or overnight courier. "When service is made 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." Rule. 2.119(c). [When service is made by first-class mail, does the receiving party get any extra days for responding?  Apparently not. - ed.].

Accordingly, 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. 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. In such a situation the responding party’s responses are still due based on the date of service, even though it does not have the benefit of additional time to respond due to the manner of service. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016); see also TBMP § 403.03.

The Board brushed aside Defendant JBX's argument that if PST applied, it (JBX) would not be afforded a full thirty-day period to respond. "The Board's rules are clear that the time to respond to discovery requests is measured in days, not hours."

And so, the Board granted Island's motion to compel discovery responses and allowed JBX thirty days to respond to Island's discovery requests.

Read comments and post your comment here.

TTABlogger comment: Does this ruling disadvantage parties located on the east coast? If so, how? Would a foreign party be wise to hire an attorney in Hawaii, where Hawaii–Aleutian Standard Time (HST) applies, three hours behind PST? 

Text Copyright John L. Welch 2021.


At 8:29 PM, Anonymous Anonymous said...

Does anyone believe counsel would have started working on the requests had they received them at 12am rather than 2am?


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