Jan
Effect of Arguing Discovery Answers Already Part of the Record
In trademark disputes, discovery is often an important part. Discovery comes to us from Civil Rules 26-36, and it allows one party to request information from the other about the lawsuit. The requesting party can ask for documents (Rule 34), admissions on certain issues (Rule 36), depositions (Rule 26), and even responses under oath to written questions called interrogatories (Rule 33). Courts have adopted these rules in order that cases might be decided upon their merits rather than upon surprise evidence.
In discovery disputes, one party often objects to the discovery requests of the other, arguing that the discovery sought is already a matter of record. In the case of Wiener King, Inc. v. Wiener King Corporation, 615 F.2d 512, 204 U.S.P.Q. 820, the United States Court of Customs and Patent Appeals held as follows: “Where a party seeks to discover facts which it expects the other party to introduce into evidence and the other party represents that all of those facts are already of record, the first party has a right to expect reliance by the other party on those facts of record alone.”
The Court reasoned that: “Any attempt, in such circumstances, to introduce further testimony about those or other facts bearing on the same issues amounts to the type of surprise that the Federal Rules of Civil Procedure were designed to avoid.”
