703.01(k)    Certification and Filing of Deposition

37 CFR §  2.123 (f)  Certification and filing of deposition.

  • (1) The officer shall annex to the deposition his certificate showing:
    • (i) Due administration of the oath by the officer to the witness before the commencement of his deposition;
    • (ii) The name of the person by whom the deposition was taken down, and whether, if not taken down by the officer, it was taken down in his presence;
    • (iii) The presence or absence of the adverse party;
    • (iv) The place, day, and hour of commencing and taking the deposition;
    • (v) The fact that the officer was not disqualified as specified in Rule 28 of the Federal Rules of Civil Procedure.
  • (2) If any of the foregoing requirements in paragraph (f)(1) are waived, the certificate shall so state. The officer shall sign the certificate and affix thereto his seal of office, if he has such a seal. Unless waived on the record by an agreement, he shall then securely seal in an envelope all the evidence, notices, and paper exhibits, inscribe upon the envelope a certificate giving the number and title of the case, the name of each witness, and the date of sealing. The officer or the party taking the deposition, or its attorney or other authorized representative, shall then promptly forward the package to the address set out in § 1.1(a)(2)(i). If the weight or bulk of an exhibit shall exclude it from the envelope, it shall, unless waived on the record by agreement of all parties, be authenticated by the officer and transmitted by the officer or the party taking the deposition, or its attorney or other authorized representative, in a separate package marked and addressed as provided in this section.

37 CFR §  2.125  Filing and service of testimony.

  • (a) One copy of the transcript of testimony taken in accordance with § 2.123, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse party within thirty days after completion of the taking of that testimony. If the transcript with exhibits is not served on each adverse party within thirty days or within an extension of time for the purpose, any adverse party which was not served may have remedy by way of a motion to the Trademark Trial and Appeal Board to reset such adverse party's testimony and/or briefing periods, as may be appropriate. If the deposing party fails to serve a copy of the transcript with exhibits on an adverse party after having been ordered to do so by the Board, the Board, in its discretion, may strike the deposition, or enter judgment as by default against the deposing party, or take any such other action as may be deemed appropriate.
  • * * * *
  • (c) One certified transcript and exhibits shall be filed with the Trademark Trial and Appeal Board. Notice of such filing shall be served on each adverse party and a copy of each notice shall be filed with the Board.

The certification and filing of a deposition are governed by 37 CFR § 2.123(f). The certified transcript, with exhibits, may be filed electronically using the Board’s ESTTA filing system. See TBMP § 106 and TBMP § 110.09 for more information about using ESTTA. Alternatively, a paper submission of the certified transcript, with exhibits, should be sent to the Board at its mailing address, i.e., Trademark Trial and Appeal Board, U.S. Patent and Trademark Office, P.O. Box 1451, Alexandria, Virginia 22313-1451.

The certified transcript and exhibits must be filed with the Board. [ Note 1.] The Board interprets "promptly forward," in 37 CFR § 2.123(f)(2)  which concerns the filing of transcripts and exhibits, as meaning forwarded at any time prior to the submission of the case for final decision. [ Note 2.] Therefore, the Board will accept transcripts of testimony depositions at any time prior to the submission of the case for final decision. [ Note 3.] In addition, a notice of reliance on the deposition transcript need not (and should not) be filed. [ Note 4.] However, notice of the filing of the certified transcript, and accompanying exhibits, with the Board must be served on each adverse party. A copy of each such notice must also be filed with the Board. [ Note 5.] In addition, one copy of the deposition transcript, together with copies, duplicates, or photographs of the exhibits thereto, must be served on each adverse party within 30 days after completion of the taking of the testimony, or within an extension of time for the purpose. [ Note 6.] For information concerning the remedy that an adverse party may have if it is not timely served with a copy of the deposition and exhibits, see TBMP § 703.01(m).

NOTES:

 1.   See 37 CFR § 2.125(c).

 2.   See Notice of Final Rulemaking, 63 Fed. Reg. 48081 (September 9, 1998), and comments and responses published in the Notice in regard to amendment of 37 CFR §  2.123 (f)  and 37 CFR § 2.125(c).

 3.   See Notice of Final Rulemaking, 63 Fed. Reg. 48081 (September 9, 1998), and comments and responses published in the notice in regard to amendment of 37 CFR § 2.123(f)  and 37 CFR § 2.125(c). See also Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (testimony must be taken during the offering party’s testimony period, but need not be submitted during the party’s testimony period; transcript must be served within thirty days after completion of the taking of that testimony); Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390, 1392 n.6 (TTAB 1991) (the wording "promptly filed" in an earlier version of 37 CFR § 2.125(c) was construed as meaning filed at any time prior to final hearing).

 4.   See, e.g., Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (not appropriate to submit testimony under a notice of reliance); Paramount Pictures Corp. v. Romulan Invasions, 7 USPQ2d 1897, 1898 n.2 (TTAB 1988); Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116, 1117 n.1 (TTAB 1982) (notice of reliance on exhibits introduced in connection with testimony superfluous).

 5.   See 37 CFR § 2.125(c). See also Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2001) (testimony depositions are not filed by notice of reliance but instead are filed under cover of notice of filing which must also be served on each adverse party).

 6.   See 37 CFR § 2.125(a).