703.01    Oral Testimony Depositions

703.01(a)    In General

A testimony deposition is a device used by a party to a Board inter partes proceeding to present evidence in support of its case. Testimony is taken out of the presence of the Board, on oral examination or written questions, and the written transcripts thereof, together with any exhibits thereto, are then submitted to the Board. See TBMP § 702. See also TBMP § 502.01 1. During a party's testimony period, testimony depositions are taken, by or on behalf of the party, of the party himself or herself (if the party is an individual), or of an official or employee of the party, or of some other witness testifying (either willingly or under subpoena) in behalf of the party.

Testimony depositions are the means by which a party may introduce into the record not only the testimony of its witnesses, but also those documents and other exhibits that may not be made of record by notice of reliance. See generally TBMP § 704 describing types of evidence admissible by notice of reliance. However, only evidence admissible under the applicable rules of evidence may properly be adduced during a testimony deposition; inadmissibility is a valid ground for objection. [ Note 1.] See TBMP § 707.03.

For a comparison of testimony depositions and discovery depositions, see TBMP § 404.09.

NOTES:

 1.   See 37 CFR § 2.122(a)  and 37 CFR § 2.123(k).

703.01(b)    Form of Testimony

37 CFR §  2.123 

  • (a)
    • (1) The testimony of witnesses in inter partes cases may be taken by depositions upon oral examination as provided by this section or by depositions upon written questions as provided by § 2.124. If a party serves notice of the taking of a testimonial deposition upon written questions of a witness who is, or will be at the time of the deposition, present within the United States or any territory which is under the control and jurisdiction of the United States, any adverse party may, within fifteen days from the date of service of the notice, file a motion with the Trademark Trial and Appeal Board, for good cause, for an order that the deposition be taken by oral examination.
    • (2) A testimonial deposition taken in a foreign country shall be taken by deposition upon written questions as provided by § 2.124, unless the Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate.
  • (b) Stipulations. If the parties so stipulate in writing, depositions may be taken before any person authorized to administer oaths, at any place, upon any notice, and in any manner, and when so taken may be used like other depositions. By written agreement of the parties, the testimony of any witness or witnesses of any party, may be submitted in the form of an affidavit by such witness or witnesses. The parties may stipulate in writing what a particular witness would testify to if called, or the facts in the case of any party may be stipulated in writing.

Ordinarily, the testimony of a witness may be taken either on oral examination pursuant to 37 CFR § 2.123, or by deposition on written questions pursuant to 37 CFR § 2.124. [ Note 1.] For information concerning testimony depositions on written questions, see TBMP § 703.02.

However, if a party serves notice of the taking of a testimony deposition on written questions of a witness who is, or will be at the time of the deposition, present within the United States (or any territory that is under the control and jurisdiction of the United States), any adverse party may, within 15 days from the date of service of the notice (20 days if service of the notice was by first-class mail, Priority Mail Express®, or overnight courier - see 37 CFR § 2.119(c) ), file a motion with the Board, for good cause, for an order that the deposition be taken by oral examination. [ Note 2.] What constitutes good cause to take an oral deposition is determined on a case-by-case basis. [ Note 3.] See TBMP § 531.

In addition, a testimony deposition taken in a foreign country must be taken by deposition on written questions, unless the Board, on motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate. [ Note 4.] See TBMP § 520 and § 404.03(b).

By written agreement of the parties, the testimony of any witness or witnesses of any party may be submitted in the form of an affidavit or declaration by such witness or witnesses. [ Note 5.] The parties may stipulate that the non-submitting party may cross-examine the affiant or declarant in person. [ Note 6.] The parties may also stipulate in writing the facts in the case of any party, or what a particular witness would testify to if called, or that a party may use a discovery deposition as testimony. [ Note 7.]

NOTES:

 1.   See 37 CFR § 2.123(a)(1).

 2.   37 CFR § 2.123(a)(1). See Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990), corrected at 19 USPQ2d 1479 (TTAB 1990) (good cause shown to take oral deposition of expert witness, during rebuttal testimony period); Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980) (good cause shown where deponents were former employees of respondent and present employees of petitioner and were being deposed for first time during rebuttal period).

 3.   See Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980).

 4.   See 37 CFR § 2.123(a)(2). With respect to discovery depositions, see 37 CFR § 2.120(c)(1); Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998); Orion Group Inc. v. Orion Insurance Co. ., 12 USPQ2d 1923, 1925-26 (TTAB 1989) (good cause shown to take oral deposition of witness in England under the circumstances and since fares to England were not that much greater than fares within the United States and no translation was required).

 5.   37 CFR § 2.123(b). See Joel Gott Wines LLC v. Rehobeth Von Gott, Inc., 107 USPQ2d 1424, 1427 (TTAB 2013) (opposer’s motion to strike declaration of applicant’s corporate secretary and accompanying exhibits granted; parties did not stipulate to the submission of testimony via declaration or affidavit); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1435 n.2 (TTAB 2012) (parties stipulated to testimony by declaration); Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1216-19 (TTAB 2011) (discussion of admissibility of evidence included the several affidavits submitted by plaintiff under notice of reliance; evidence, unless otherwise admissible, could not be considered because the parties did not stipulate that testimony could be submitted by affidavit); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USQP2d 1558, 1563 (TTAB 2011) (parties stipulated to the introduction of testimony in affidavit or declaration form, with certain guidelines); Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007) (declaration cannot be submitted in lieu of testimony deposition absent a stipulation of the parties); Order Sons of Italy in America v. Memphis Mafia Inc., 52 USPQ2d 1364, 1365 n.3 (TTAB 1999) ("statement" with exhibits by defendant's officer stricken where there was no agreement that defendant could file testimony in form of affidavit or declaration); Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1403-04 n.9 (TTAB 1998) (no agreement; officer's affidavit not considered); McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1897 n.3-4 (TTAB 1989) (although parties had stipulated to submission of testimony by affidavit, opposer's objection was well taken because applicant's unsworn statement did not constitute testimony); Chase Manhattan Bank, N.A. v. Life Care Services Corp., 227 USPQ 389, 390 (TTAB 1985) (affidavits submitted by agreement of the parties); Oxy Metal Industries Corp. v. Transene Co., 196 USPQ 845, 847 n.20 (TTAB 1977) (stipulation to presentation of evidence by affidavit evidence reduces cost of litigation); National Distillers and Chemical Corp. v. Industrial Condenser Corp., 184 USPQ 757, 758-59 (TTAB 1974) (both parties submitted stipulated testimony and exhibits).

Cf. Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1425 n.8 (TTAB 1993) (objection waived where although there was no such agreement, plaintiff did not object to declarations with exhibits submitted by defendant and moreover treated the evidence as if properly of record).

 6.   See UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1044 (TTAB 2009) (parties stipulated to the introduction of applicant’s testimony by declaration and live cross-examination of applicant by opposer).

 7.   37 CFR § 2.123(b). See Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009) (discovery deposition may be filed by notice of reliance if parties have stipulated to introduction of the deposition); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990) (stipulation for use of discovery deposition as testimony deposition); Oxy Metal Industries Corp. v. Transene Co., 196 USPQ 845, 847 n.20 (TTAB 1977) (litigation expenses can be saved where parties agree to introduce all uncontroverted facts by affidavit or stipulated facts and provide balance through deposition testimony).

703.01(c)    Time for Taking Testimony

A party may take testimony only during its assigned testimony period, except by stipulation of the parties approved by the Board, or, on motion, by order of the Board. [ Note 1.] See TBMP § 701.

For information concerning the assignment of testimony periods, and the rescheduling, extension, and reopening thereof, see TBMP § 509 and TBMP § 701.

NOTES:

 1.   See 37 CFR § 2.121(a). See also Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1454 n.1 (TTAB 1998) (parties stipulated that testimony deposition of applicant's witness could be taken prior to its testimony period on the same day as opposer's witness to achieve efficiencies in time and cost). Cf. Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer's testimony deposition was taken two days prior to the opening of opposer's testimony period, and applicant first raised a timeliness objection in its brief on the case, objection held waived, since the premature taking of the deposition could have been corrected on seasonable objection).

703.01(d)    Time and Place of Deposition

37 CFR §  2.123 (d) 

  • (a)
    • (1) The testimony of witnesses in inter partes cases may be taken by depositions upon oral examination as provided by this section or by depositions upon written questions as provided by § 2.124. If a party serves notice of the taking of a testimonial deposition upon written questions of a witness who is, or will be at the time of the deposition, present within the United States or any territory which is under the control and jurisdiction of the United States, any adverse party may, within fifteen days from the date of service of the notice, file a motion with the Trademark Trial and Appeal Board, for good cause, for an order that the deposition be taken by oral examination.
    • (2) A testimonial deposition taken in a foreign country shall be taken by deposition upon written questions as provided by § 2.124, unless the Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate.
  • * * * *
  • (c) Notice of examination of witnesses. Before the depositions of witnesses shall be taken by a party, due notice in writing shall be given to the opposing party or parties, as provided in

    § 2.119(b), of the time when and place where the depositions will be taken, of the cause or matter in which they are to be used, and the name and address of each witness to be examined; if the name of a witness is not known, a general description sufficient to identify the witness or the particular class or group to which the witness belongs, together with a satisfactory explanation, may be given instead. Depositions may be noticed for any reasonable time and place in the United States. A deposition may not be noticed for a place in a foreign country except as provided in paragraph (a)(2) of this section. No party shall take depositions in more than one place at the same time, nor so nearly at the same time that reasonable opportunity for travel from one place of examination to the other is not available.

A testimony deposition may be noticed for any reasonable time during the deposing party's testimony period. [ Note 1.] A testimony deposition may not be taken outside the deposing party's testimony period except by stipulation of the parties approved by the Board, or, on motion, by order of the Board. [ Note 2.] See TBMP § 701.

A testimony deposition to be taken in the United States may be noticed for any reasonable place. [ Note 3.] A party may not take depositions in more than one place at the same time, nor so nearly at the same time that reasonable opportunity for travel from one place of examination to the other is not available. [ Note 4.]

A deposition may not be noticed for a place in a foreign country, unless the deposition is to be taken on written questions as provided by 37 CFR § 2.124, or unless the Board, on motion for good cause, orders, or the parties stipulate, that the deposition be taken by oral examination. [ Note 5.] See TBMP § 703.01(b).

If the parties so stipulate in writing, a deposition may be taken before any person authorized to administer oaths, at any place, on any notice, and in any manner, and when so taken may be used like any other deposition. [ Note 6.]

NOTES:

 1.   See 37 CFR § 2.123(c).

 2.   See 37 CFR §  2.121 (a)(1); Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1454 n.1 (TTAB 1998) (stipulation that testimony deposition of applicant's witness could be taken prior to its testimony period on the same day as opposer's witness to achieve efficiencies in time and cost). Cf. Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer's testimony deposition was taken two days prior to the opening of opposer's testimony period, and applicant first raised a timeliness objection in its brief on the case, objection held waived, since the premature taking of the deposition could have been corrected on seasonable objection).

 3.   See 37 CFR § 2.123(c).

 4.   See 37 CFR § 2.123(c).

 5.   See 37 CFR § 2.123(a)(2)  and 37 CFR § 2.123(c).

 6.   37 CFR § 2.123(b).

703.01(e)    Notice of Deposition

37 CFR §  2.123 (c)  Notice of examination of witnesses. Before the depositions of witnesses shall be taken by a party, due notice in writing shall be given to the opposing party or parties, as provided in § 2.119(b), of the time when and place where the depositions will be taken, of the cause or matter in which they are to be used, and the name and address of each witness to be examined; if the name of a witness is not known, a general description sufficient to identify the witness or the particular class or group to which the witness belongs, together with a satisfactory explanation, may be given instead. Depositions may be noticed for any reasonable time and place in the United States. A deposition may not be noticed for a place in a foreign country except as provided in paragraph (a)(2) of this section. No party shall take depositions in more than one place at the same time, nor so nearly at the same time that reasonable opportunity for travel from one place of examination to the other is not available.

Before the oral depositions of witnesses may be taken by a party, the party must give due (i.e., reasonable) notice in writing to every adverse party. [ Note 1.] See TBMP § 533.02. Cf. TBMP § 404.05. In assessing whether a party gave reasonable notice of a deposition, the Board counts calendar days, not business days. [ Note 2.]

The notice must specify the time and place the depositions will be taken, the cause or matter in which they are to be used, and the name and address of each witness to be examined. If the name of a witness is not known, the notice must include a general description sufficient to identify the witness or the particular class or group to which the witness belongs, together with a satisfactory explanation. [ Note 3.] Cf. TBMP § 404.05.

If the parties so stipulate in writing, a deposition may be taken before any person authorized to administer oaths, at any place, on any notice, and in any manner, and when so taken may be used like any other deposition. [ Note 4.]

A notice of oral deposition need not be filed with the Board. [ Note 5.] However, if a certified copy of the notice of deposition is, for some reason, required for use before a federal district court, the notice of deposition must be filed with the Board for purposes of certification. See TBMP § 122 and TBMP § 703.01(f)(2).

For information concerning the raising of an objection to a testimony deposition on the ground of improper or inadequate notice, see 37 CFR § 2.123(e)(3)  and TBMP § 533.02.

NOTES:

 1.   37 CFR § 2.123(c). See Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1653 (TTAB 2007) (six calendar days is reasonable notice); Gaudreau v. American Promotional Events, Inc., 82 USPQ2d 1692, 1696 (TTAB 2007) (two days notice prior to the close of the testimony period was unreasonable); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1444 (TTAB 2000) (one and two-day notices were not reasonable without compelling need for such haste; three-day notice was reasonable); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 (TTAB 1999) (two-day notice was not reasonable); Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1284 (TTAB 1998) (one-day notice for deposition of expert witness was short but not prejudicial where party gave notice "as early as possible" and moreover offered to make witness again available at a future date); Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1074 (TTAB 1990) (24 hours not sufficient time to prepare for deposition); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.6 (TTAB 1982) (two-day notice of deposition, although short, was not unreasonable where deposition was held a short distance from applicant's attorney's office and where no specific prejudice was shown).

 2.   Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1653 (TTAB 2007). Cf. 37 CFR § 2.119(c)  (addition of 5 days when service made in certain manners).

 3.   See 37 CFR § 2.123(c). See also Steiger Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 169 (TTAB 1984) (testimony not considered where notice failed to specify name of party being deposed), different results reached on reh'g, 3 USPQ2d 1708 (TTAB 1984); O. M. Scott & Sons Co. v. Ferry-Morse Seed Co., 190 USPQ 352, 353 (TTAB 1976) (testimony stricken where notice identified one witness and indicated that "possibly others will testify" and where opposer proceeded to take testimony of unidentified witness, applicant objected, did not cross-examine the witness, and moved to strike testimony); Allstate Life Insurance Co. v. Cuna International, Inc., 169 USPQ 313, 314 (TTAB 1971) (objections sustained where identification of possible witnesses as "such other persons as may be called" insufficient to identify witness or group to which witness belongs), aff'd without opinion, 487 F.2d 1407, 180 USPQ 48 (CCPA 1973).

 4.   37 CFR § 2.123(b).

 5.   See 37 CFR § 2.123(f).

703.01(f)    Securing Attendance of Unwilling Adverse Party or Non-party

703.01(f)(1)    In General

Normally, during a party's testimony period, testimony depositions are taken, by or on behalf of the party, of the party himself or herself (if the party is an individual), or of an official or employee of the party, or of some other witness who is willing to appear voluntarily to testify on behalf of the party. These testimony depositions may be taken, at least in the United States, on notice alone.

However, where a party wishes to take the testimony of an adverse party or non-party, or an official or employee of an adverse party or non-party, and the proposed witness is not willing to appear voluntarily to testify, the deposition may not be taken on notice alone. Rather, the party that wishes to take the deposition must take steps, discussed below, to compel the attendance of the witness. [ Note 1.] If the witness resides in a foreign country, the party may not be able to take the deposition. See TBMP § 703.01(f)(2) (securing attendance of unwilling witness residing in United States), TBMP § 703.01(f)(3) (securing attendance of unwilling witness residing in foreign country), and TBMP § 703.02 (testimony depositions on written questions).

NOTES:

 1.   See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990) (after unsuccessfully attempting to take testimony deposition on written questions of adverse party's officer on notice alone, opposer obtained subpoena from U.S. district court ordering appearance); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 (TTAB 1976) (it is incumbent on deposing party to have a subpoena issued from the U.S. district court where witness is located and have same properly served on witness with sufficient time to apprise him that he is under order to appear). See also Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 55 n.7 (TTAB 1983) (no adverse inference can be drawn from adverse party's failure to appear and produce requested documents at testimony deposition where party attempted to secure attendance by notice alone), aff'd, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984).

703.01(f)(2)    Unwilling Witness Residing in United States

If a party wishes to take the trial testimony of an adverse party or non-party (or an official or employee of an adverse party or non-party) residing in the United States, and the proposed witness is not willing to appear voluntarily to testify, the party wishing to take the testimony must secure the attendance of the witness by subpoena pursuant to 35 U.S.C. § 24 and Fed. R. Civ. P. 45. [ Note 1.] Cf. TBMP § 404.03(a)(2) (securing attendance of non-party residing in U.S. at discovery deposition).

The subpoena must be issued, pursuant to 35 U.S.C. § 24 and Fed. R. Civ. P. 45, from the United States district court in the federal judicial district where the witness resides or is regularly employed. [ Note 2.] Occasionally district courts may request a "matter number" for the issuance of a subpoena. If that is the case, the requesting party should obtain one from the court or determine whether the Board’s proceeding number will satisfy the court. If, for any reason, a certified copy of the notice of deposition is required in connection with the subpoena, such as for purposes of a motion to quash the subpoena, or a motion to enforce the subpoena, the interested party should contact the clerk of the court to determine whether the court will require a formal certified copy (i.e., a certified copy bearing a USPTO seal) of the notice. [ Note 3.] A certified copy of a notice of deposition is a copy prepared by the party noticing the deposition, and certified by the USPTO as being a true copy of the notice of deposition filed in the proceeding before the Board. A copy of a notice of deposition cannot be certified by the USPTO unless it has been filed in the Board proceeding. For information relating to USPTO certification of a notice of deposition, see TBMP § 122.

If a person named in a subpoena compelling attendance at a testimony deposition fails to attend the deposition, or refuses to answer a question propounded at the deposition, the deposing party must seek enforcement from the United States district court that issued the subpoena. Similarly, any request to quash a subpoena must be directed to the United States district court that issued the subpoena. The Board has no jurisdiction over depositions by subpoena. [ Note 4.]

NOTES:

 1.   See Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583-84 (TTAB 1976).

 2.   Cf. 37 CFR §  2.120 (b).

Please Note: To the extent that the 2013 amendments to Fed. R. Civ. P. 45(a)(2) and Fed. R. Civ. P. 45(f) conflict with 35 U.S.C. § 24, § 24 is controlling. See 37 CFR §  2.116 (a)  ("Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.").

 3.   Please Note: The Board no longer provides verified copies of filings.

 4.   See, e.g., In re Johnson & Johnson, 59 F.R.D. 174, 178 USPQ 201, 201 (D.Del. 1973) (no power to grant protective order with respect to depositions taken by subpoena); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 n.3 (TTAB 1987) (no authority to quash subpoena); PRD Electronics Inc. v. Pacific Roller Die Co., 169 USPQ 318, 319 n.3 (TTAB 1971) (opposer’s allegation in its brief that applicant defied a subpoena to produce witnesses is a matter opposer should have pursued before the court that issued the subpoena). Cf. Ate My Heart v. GA GA Jeans, 111 USPQ2d 1564, 1565 n.5 (TTAB 2014) (notice of deposition of unwilling non-party witness must include subpoena, and related motions must be filed with district court that issued subpoena, not Board).

703.01(f)(3)    Unwilling Witness Residing in Foreign Country

There is no certain procedure for obtaining, in a Board inter partes proceeding, the trial testimony deposition of a witness who resides in a foreign country, is an adverse party or a non-party (or an official or employee of an adverse party or non-party), and is not willing to appear voluntarily to testify. However, the deposing party may be able to obtain the testimony deposition of such a witness through the letter rogatory procedure or The Hague Convention letter of request procedure. [ Note 1.]

For information concerning these procedures, see TBMP § 404.03(c)(2).

The U.S. Court of Appeals for the Fourth Circuit has held, however, that a district court has the power to issue a subpoena for a trial deposition noticed under Fed. R. Civ. P. 30(b)(6), requiring a foreign corporate applicant to produce an appropriate representative in the United States for testimony on the subjects identified in the subpoena, regardless of the domicile of the representative. [ Note 2.]

NOTES:

 1.   See Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009) (attendance of non-party witness residing outside the United States could not be compelled).

 2.   Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437, 85 USPQ2d 1385 (4th Cir. 2007), cert. denied, 128 S. Ct. 2508 (2008).

703.01(g)    Persons Before Whom Depositions May be Taken

37 CFR §  2.123 (d)  Persons before whom depositions may be taken. Depositions may be taken before persons designated by Rule 28 of the Federal Rules of Civil Procedure.

Fed. R. Civ. P. 28. Persons Before Whom Depositions May Be Taken.

  • (a) Within the United States.
    • (1) In General. Within the United States or a territory or insular possession subject to United States jurisdiction, a deposition must be taken before:
      • (A) an officer authorized to administer oaths either by federal law or by the law in the place of examination; or
      • (B) a person appointed by the court where the action is pending to administer oaths and take testimony.
    • (2) Definition of "Officer." The term "officer" in Rules 30, 31 and 32 includes a person appointed by the court under this rule or designated by the parties under Rule 29(a).
  • (b) In a Foreign Country.
    • (1) In General. A deposition may be taken in a foreign country:
      • (A) under an applicable treaty or convention;
      • (B) under a letter of request, whether or not captioned a "letter rogatory";
      • (C) on notice, before a person authorized to administer oaths either by federal law or by the law in the place of examination; or
      • (D) before a person commissioned by the court to administer any necessary oath and take testimony.
    • (2) Issuing a Letter of Request or a Commission. A letter of request, a commission, or both may be issued:
      • (A) on appropriate terms after an application and notice of it; and
      • (B) without a showing that taking the deposition in another manner is impracticable or inconvenient.
    • (3) Form of a Request, Notice, or Commission. When a letter of request or any other device is used according to a treaty or convention, it must be captioned in the form prescribed by that treaty or convention. A letter of request may be addressed "To the Appropriate Authority in [name of country]." A deposition notice or a commission must designate by name or descriptive title the person before whom the deposition is to be taken.
    • (4) Letter of Request--Admitting Evidence. Evidence obtained in response to a letter of request need not be excluded merely because it is not a verbatim transcript, because the testimony was not taken under oath, or because of any similar departure from the requirements for depositions taken within the United States.
  • (c) Disqualification. A deposition must not be taken before a person who is any party's relative, employee, or attorney; who is related to or employed by any party's attorney; or who is financially interested in the action.

Depositions in Board inter partes proceedings may be taken before the persons described in Fed. R. Civ. P. 28. [ Note 1.]

Thus, in the United States (or in any territory or insular possession subject to the jurisdiction of the United States) a testimony deposition in a Board proceeding "must be taken before an officer authorized to administer oaths either by federal law or by the law in the place of examination; or before a person appointed by the court where the action is pending to administer oaths and take testimony." [ Note 2.] As a practical matter, Board proceeding depositions taken in the United States are usually taken before a court reporter who is authorized to administer oaths in the jurisdiction where the deposition is taken.

In a foreign country, a testimony deposition in a Board proceeding may be taken pursuant to Fed. R. Civ. P. 28(b). This means, for example, that a testimony deposition in a Board proceeding taken of a willing witness in a foreign country usually may be taken on notice before a U.S. consular official, or before anyone authorized by the law of the foreign country to administer oaths therein. Some countries, however, may prohibit the taking of testimony within their boundaries for use in any other country, including the United States, even though the witness is willing; or may permit the taking of testimony only if certain procedures are followed. [ Note 3.] A party which wishes to take a testimony deposition in a foreign country should first consult with local counsel in the foreign country, and/or with the Office of American Citizen Services, Department of State, in order to determine whether the taking of the deposition will be permitted by the foreign country, and, if so, what procedure must be followed. The testimony of an unwilling adverse party or non-party witness may be taken in a foreign country, if at all, only by the letter rogatory procedure, or by the letter of request procedure provided under the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters, or by any other procedure provided for the purpose by any future treaty into which the United States may enter. [ Note 4.] Cf. TBMP § 404.03(c) (concerning discovery deposition of non-party residing in foreign country) and TBMP § 703.01(f)(3) (securing attendance of unwilling witness residing in foreign country). If the parties so stipulate in writing (and if permitted by the laws of the foreign country, in the case of a deposition to be taken in a foreign country), a deposition may be taken before any person authorized to administer oaths, at any place, on any notice, and in any manner, and when so taken may be used like any other deposition. [ Note 5.]

NOTES:

 1.   37 CFR § 2.123(d).

 2.   See Fed. R. Civ. P. 28(a).

 3.   See 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2083 (2014).

 4.   Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 n.5 (TTAB 2009).

 5.   37 CFR § 2.123(b).

703.01(h)    Examination of Witnesses

37 CFR §  2.123 (e)  Examination of witnesses.

  • (1) Each witness before testifying shall be duly sworn according to law by the officer before whom his deposition is to be taken.
  • (2) The deposition shall be taken in answer to questions, with the questions and answers recorded in their regular order by the officer, or by some other person (who shall be subject to the provisions of Rule 28 of the Federal Rules of Civil Procedure) in the presence of the officer except when the officer's presence is waived on the record by agreement of the parties. The testimony shall be taken stenographically and transcribed, unless the parties present agree otherwise. In the absence of all opposing parties and their attorneys or other authorized representatives, depositions may be taken in longhand, typewriting, or stenographically. Exhibits which are marked and identified at the deposition will be deemed to have been offered into evidence, without any formal offer thereof, unless the intention of the party marking the exhibits is clearly to the contrary.
  • (3) Every adverse party shall have full opportunity to cross-examine each witness. If pretrial disclosures or the notice of examination of witnesses served pursuant to paragraph (c) of this section are improper or inadequate with respect to any witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances. A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with 2.121(e). A motion to strike the testimony of a witness for lack of proper or adequate notice of examination must request the exclusion of the entire testimony of that witness and not only a part of that testimony.
  • (4) All objections made at the time of the examination to the qualifications of the officer taking the deposition, or to the manner of taking it, or to the evidence presented, or to the conduct of any party, and any other objection to the proceedings, shall be noted by the officer upon the deposition. Evidence objected to shall be taken subject to the objections.

37 CFR § 2.123(g)  Form of deposition.. (1) The pages of each deposition must be numbered consecutively, and the name of the witness plainly and conspicuously written at the top of each page. The deposition must be in written form. The questions propounded to each witness must be consecutively numbered unless the pages have numbered lines. Each question must be followed by its answer.

Fed. R. Civ. P. 30(b)(4) The parties may stipulate — or the court may on motion order — that a deposition be taken by telephone or other remote means. For the purpose of this rule and Rules 28(a), 37(a)(2), and 37(b)(1), the deposition takes place where the deponent answers the questions.

Before testifying, a witness whose testimony deposition is being taken for use in a Board inter partes proceeding must be duly sworn, according to law, by the officer before whom the deposition is to be taken. [ Note 1.] See TBMP § 703.01(g).

The deposition is taken in answer to questions, and the questions and answers are recorded in order by the officer, or by some other person (who is subject to the provisions of Fed. R. Civ. P. 28) in the presence of the officer, except when the officer's presence is waived on the record by agreement of the parties. The testimony is taken stenographically and transcribed, unless the parties present agree otherwise. If no adverse party, or its attorney or other authorized representative, attends the deposition, the testimony may be taken in longhand, typewriting, or stenographically. [ Note 2.]

The Board does not accept videotape depositions. A deposition must be submitted to the Board in written form. [ Note 3.]

On stipulation of the parties, or on motion granted by the Board, a deposition may be taken or attended by telephone or other remote means. [ Note 4.] A deposition taken by telephone or other remote means is taken in the district and at the place where the witness is to answer the questions propounded to him or her. [ Note 5.]

Exhibits which are marked and identified at the deposition will be deemed to have been offered in evidence, even if no formal offer thereof is made, unless the intention of the party marking the exhibits is clearly to the contrary. [ Note 6.]

Every adverse party must be given a full opportunity to cross-examine the witness. If pretrial disclosures or the notice of deposition served by a party is improper or inadequate with respect to the witness, an adverse party may cross-examine the witness under protest while reserving the right to object to the receipt of the testimony in evidence. [ Note 7.] For information concerning the raising of an objection to a testimony deposition on the ground of improper or inadequate pretrial disclosures or notice, see 37 CFR § 2.123(e)(3), TBMP § 533.02, TBMP § 707.03(b)(2) and TBMP § 707.03(b)(3).

All objections made at the time of the taking of a testimony deposition as to the qualifications of the officer taking the deposition, the manner of taking the deposition, the evidence presented, the conduct of any party, or any other objection to the proceedings, are noted by the officer upon the deposition. Evidence objected to is taken subject to the objections. [ Note 8.] See TBMP § 707.03.

Questions to which an objection is made ordinarily should be answered subject to the objection, but a witness may properly refuse to answer a question asking for information that is, for example, privileged, trade secret or otherwise protected from disclosure by the protective order in place for the case. See TBMP § 404.09. For information concerning the propounding party's recourse if a witness not only objects to, but also refuses to answer, a particular question, see TBMP § 404.09 and TBMP § 707.03(d).

For further information concerning the raising of objections to testimony depositions, see TBMP § 533 and TBMP § 707.03.

If the parties so stipulate in writing, a deposition may be taken before any person authorized to administer oaths, at any place, on any notice, and in any manner, and when so taken may be used like any other deposition. [ Note 9.]

NOTES:

 1.   37 CFR § 2.123(e)(1). See Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1384 (TTAB 2000) (objection to deposition taken in Honduras that officer designated in notice did not take deposition and that the transcript did not show due administration of the oath overruled where the person who conducted the deposition had authority to do so under Honduran law and the oath was administered in standard manner under Honduran law).

 2.   37 CFR § 2.123(e)(2).

 3.   37 CFR § 2.123(g)  and 37 CFR § 2.126.

 4.   See Fed. R. Civ. P. 30(b)(4); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1654 (TTAB 2007) (noting parties may resolve conflict concerning the scheduling of deposition where travel for one party is involved, by conducting deposition by telephone or other electronic means); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1552-53 (TTAB 1991) (Board granted request to attend deposition by telephone, noting that trademark rules do not specifically provide for or prohibit depositions by telephone and that federal court practice favors use of technological benefits).

 5.   Fed. R. Civ. P. 30(b)(4).

 6.   37 CFR § 2.123(e)(2). Cf. Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835, 1838 n.4 (TTAB 1989) (decided prior to the rule change which eliminated "formal" introduction of exhibits, but exhibits still not excluded).

 7.   37 CFR § 2.123(e)(3).

 8.   37 CFR § 2.123(e)(4).

 9.   37 CFR § 2.123(b).

703.01(i)    Form of Deposition and Exhibits

37 CFR §  2.123 (g)  Form of deposition.

  • (1) The pages of each deposition must be numbered consecutively, and the name of the witness plainly and conspicuously written at the top of each page. The deposition must be in written form. The questions propounded to each witness must be consecutively numbered unless the pages have numbered lines. Each question must be followed by its answer.
  • (2) Exhibits must be numbered or lettered consecutively and each must be marked with the number and title of the case and the name of the party offering the exhibit. Entry and consideration may be refused to improperly marked exhibits.
  • (3) Each deposition must contain an index of the names of the witnesses, giving the pages where their examination and cross-examination begin, and an index of the exhibits, briefly describing their nature and giving the pages at which they are introduced and offered in evidence.

37 CFR §  2.125 (d)  Each transcript shall comply with § 2.123(g) with respect to arrangement, indexing and form.

37 CFR § 2.12637 CFR §  2.126  Form of submissions to the Trademark Trial and Appeal Board.

  • (a) Submissions may be made to the Trademark Trial and Appeal Board on paper where Board practice or the rules in this part permit. A paper submission, including exhibits and depositions, must meet the following requirements:
    • (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
    • (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
    • (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
    • (4) A paper submission must not be stapled or bound;
    • (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
    • (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
  • (b) Submissions may be made to the Trademark Trial and Appeal Board electronically via the Internet where the rules in this part or Board practice permit, according to the parameters established by the Board and published on the web site of the Office. Text in an electronic submission must be in at least 11-point type and double-spaced. Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission.

    * * * *

A deposition must be submitted to the Board in written form. The Board does not accept videotape depositions. [ Note 1.]

The general requirements for submissions to the Board, including depositions and exhibits thereto, are specified in 37 CFR § 2.126. See also TBMP § 106.03. The particular requirements for the form of a written deposition are specified in 37 CFR § 2.123(g).

Depositions may be submitted to the Board on paper or electronically over the Internet through ESTTA, the Board's electronic filing system. [ Note 2.] See TBMP § 106.03, TBMP § 106.09 and TBMP § 110.09 for further information about ESTTA. The requirements for each form of submission are set out in 37 CFR § 2.126(a)  and 37 CFR § 2.126(b), respectively. The Board prefers that depositions and exhibits be filed using ESTTA, rather than in paper form.

A paper deposition must be 8 to 8.5 inches wide and 11 to 11.69 inches long, and printed in at least 11-point type and double-spaced, with the text on one side only of each sheet. If a paper submission contains dividers, the dividers may not contain tabs or any devices that extend beyond the edges of the paper, and must be on the same size and weight paper as the submission.

In addition, a paper deposition must not be stapled or bound. All paper submissions are scanned electronically into the Board's electronic information system and removing staples or binding prior to scanning is difficult and time-consuming, especially where papers have been bound by machine. Moreover, disassembling stapled or bound papers can damage pages, resulting in misfeeds to the scanning equipment and increasing the likelihood that pages will become disordered during scanning. [ Note 3.]

The requirements for electronic submissions filed via ESTTA over the Internet can be found in 37 CFR § 2.126(b). [ Note 4.]

Exhibits to a deposition are also subject to the requirements of 37 CFR § 2.126. If a deposition is submitted on paper, any exhibits pertaining to the deposition must be filed on paper and comply with the requirements for a paper submission. [ Note 5.] As with any paper submission, paper exhibits may not contain tabs, dividers or any other devices that extend beyond the edges of the paper, and moreover, may not be stapled or bound. However, it would be acceptable to use binder clips, rubber bands, or other such means for containing the materials that would allow for easy separation of the papers for scanning. Further, when an exhibit is scanned, the image quality may degrade. The original paper documents are usually sent to storage and the Board works from the scanned images rather than the originals.

Exhibits pertaining to a deposition that is filed electronically through ESTTA must also be filed electronically as an attachment to the deposition and conform to the requirements for electronic submissions. [ Note 6.] ESTTA exhibits may be in PDF, TIFF or TXT format. [ Note 7.] PDF is preferred, and should be used, if possible. Files should be formatted in letter size (8.5" x 11"), and should be rendered at 300 dpi resolution. ESTTA will accept either color or black and white PDF documents for uploading. The image quality of ESTTA submissions is often better than images created by scanning paper submissions.

In general, exhibits to depositions should be attached to, or filed with, the transcript submitted. The proper procedure for filing trial deposition exhibits is to submit them with the copy of the transcript being filed. [ Note 8.]

Exhibits that are large, bulky, valuable, or breakable may be photographed or otherwise reproduced so that an appropriate paper or digitized image of the exhibits can be filed with the Board in lieu of the originals. The originals should, of course, be shown to every adverse party. Exhibits consisting of videotapes or audiotapes of commercials, demonstrations, etc., may be transferred to an appropriate electronic format such as a CD-ROM for submission to the Board. [ Note 9.]

Each party which files a document, either electronically or in paper form, is responsible for ensuring that its submission is legible. Problems with image quality sometimes arise when poor quality documents are scanned or when the quality of legible documents is degraded in the scanning process; these problems typically arise in documents (or parts of documents) featuring graphical material, as opposed to text. Quality can sometimes be significantly degraded when color documents are scanned in black and white or when contrast settings used in scanning are not appropriate for graphical material. If legibility of material in color or grayscale is important, the party is urged to scan the file in color or adjust the scanner’s contrast settings to achieve acceptable results prior to filing. Users can check the quality of their submission in TTABVUE after filing. TTABVUE contains the same images that the Board will use in considering the submission. If the TTABVUE image is not of acceptable quality, the user should not assume that the Board will be able to view and consider it appropriately. [ Note 10.]

Confidential portions of the deposition and confidential exhibits must be submitted in accordance with 37 CFR § 2.126(c). The Board strongly recommends that confidential materials be filed through ESTTA using the "CONFIDENTIAL" option. For further information concerning the submission of confidential information, see TBMP § 703.01(p) and TBMP § 703.02(l) .

Exhibits must be marked as specified in 37 CFR § 2.123(g)(2). The Board, in its discretion, may refuse to enter and consider improperly marked exhibits. [ Note 11.]

For information concerning deposition objections based on errors or irregularities in form, see TBMP § 707.03(c).

NOTES:

 1.   37 CFR § 2.123(g)  and 37 CFR § 2.126.

 2.   See 37 CFR § 2.126.

 3.   See Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act, 68 Fed. Reg. 42242, 42245 (September 26, 2003).

 4.   See 37 CFR § 2.2(g).

 5.   See 37 CFR § 2.126(a)(6).

 6.   See 37 CFR § 2.126(b).

 7.   PDF stands for Portable Document Format, a platform-independent, open standard for document exchange. TIFF stands for Tagged Image File Format. TXT is used here to denote a plain-text file format (with .txt extension), with little or no formatting or graphics capability. TIFF and TXT files will be converted to PDF format when they are received by ESTTA. Most word processing programs can directly convert files into one of these formats. Alternatively, papers can usually be scanned in PDF or TIFF format.

 8.   See Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1563 n.7 (TTAB 2011) (opposer filed exhibits separately under a notice of reliance but the proper procedure is to attach exhibits to the copy of the transcript being filed); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 n.9 (TTAB 2011) (same).

 9.   See Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1654-55 (TTAB 2014) (parties may not override Trademark Rule 2.126 provisions for form of submissions by agreement; however, video and audio recordings of evidence such as commercials may be submitted on CD-ROM), on appeal, No. 14-CV-4463 (D. Minn.).

 10.   See Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), citing Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) ("It is reasonable to assume that it is opposer's responsibility to review the documents it submits as evidence to ensure that such submissions meet certain basic requirements, such as that they are legible…."), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1351-52 (TTAB 2014) (duty of the party making submissions to the Board via ESTTA to ensure that they have been entered into the trial record), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014).

 11.   37 CFR § 2.123(g)(2). Cf. Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1384 (TTAB 2000) (these requirements are for the convenience of the Board; improperly marked exhibits considered); Pass & Seymour, Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984) (the Board has discretion to consider improperly marked exhibits).

703.01(j)    Signature of Deposition by Witness

37 CFR §  2.123 (e) (5)  When the deposition has been transcribed, the deposition shall be carefully read over by the witness or by the officer to him, and shall then be signed by the witness in the presence of any officer authorized to administer oaths unless the reading and the signature be waived on the record by agreement of all parties.

The signing of a deposition by the witness is governed by 37 CFR § 2.123(e)(5). The deposition does not have to be signed in the presence of the officer before whom the deposition was taken. It may be signed in the presence of any officer authorized to administer oaths.

Reading and signature cannot be waived by mere agreement of the witness; the agreement of every party is required. [ Note 1.]

NOTES:

 1.   See 37 CFR § 2.123(e)(5). See also Tampa Rico Inc. v. Puros Indios Cigars Inc., 5 USPQ2d 1382, 1383 (TTAB 2000) (where witness did not sign his deposition, the defect was curable and party allowed time to file and serve a signed copy). Cf. Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 (TTAB 2001) (depositions which were not signed and included no waiver were nevertheless considered where no objections were made).

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).

703.01(l)    Testimony Deposition Must be Filed

37 CFR §  2.123 (h)  Depositions must be filed. All depositions which are taken must be duly filed in the Patent and Trademark Office. On refusal to file, the Office at its discretion will not further hear or consider the contestant with whom the refusal lies; and the Office may, at its discretion, receive and consider a copy of the withheld deposition, attested by such evidence as is procurable.

All trial testimony depositions that are taken in a Board inter partes proceeding must be filed with the Board, and, when filed, automatically constitute part of the evidentiary record in the proceeding. [ Note 1.] If a party which took a testimony deposition refuses to file it, the Board, in its discretion, may refuse to further hear or consider the party’s case, or may receive and consider a copy of the withheld deposition, attested by such evidence as is procurable. [ Note 2.]

NOTES:

 1.   See 37 CFR § 2.123(h). See also e.g., Order Sons of Italy in America v. Memphis Mafia, Inc., 52 USPQ2d 1364, 1366 n.4 (TTAB 1999); Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390, 1392 n.6 (TTAB 1991) (opposer was not prejudiced by transcript of testimony deposition filed for first time with applicant's brief on the case because opposer should have assumed it would become part of the record); Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984). Cf. An Evening at the Trotters, Inc. v. A Nite at the Races, Inc., 214 USPQ 737, 738 n.2 (TTAB 1982) (deposition which had not been filed but was not completed and was not referred to by either party was considered terminated and omitted by stipulation).

 2.   37 CFR § 2.123(h). See Motion Picture Association of America Inc. v. Respect Sportswear Inc., 83 USPQ2d 1555, 1558 (TTAB 2007) (because opposer did not argue that testimony and exhibits which applicant failed to file were adverse to applicant, and case was fully briefed and ready for decision, Board decided case without testimony or exhibits).

703.01(m)    Service of Deposition

37 CFR §  2.125 (a)  Filing and service of testimony. 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.

One copy of the transcript of trial testimony, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, 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 1.]

The requirement that a copy of the transcript, with exhibits, be served on every adverse party within the time specified in 37 CFR § 2.125(a)  is intended to ensure that each adverse party will have the testimony before it has to offer its own evidence, or, if the testimony in question is rebuttal testimony, to ensure that each adverse party will have the testimony before it has to prepare its brief on the case. [ Note 2.] If a copy of the transcript, with exhibits, is not served on each adverse party within that time, any adverse party that was not served may have remedy by way of a motion to the Board to reset its testimony and/or briefing periods, as may be appropriate, or to compel service of the transcript, with exhibits. [ Note 3.]

If a party that took a deposition 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 take any of the actions mentioned in 37 CFR § 2.125(a). [ Note 4.]

NOTES:

 1.   37 CFR § 2.125(a). See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009).

 2.   See Techex, Ltd. v. Dvorkovitz, 220 USPQ 81, 82 n.2 (TTAB 1983) (opposer's objection to introduction of deposition overruled where opposer had been given time to request additional time for rebuttal in light of late-served copy of transcript but failed to do so); S. S. Kresge Co. v. J-Mart Industries, Inc., 178 USPQ 124, 125 n.3 (TTAB 1973) (applicant's objection in its brief to opposer's introduction of exhibits which were allegedly missing from service copy of deposition transcript was untimely).

 3.   37 CFR § 2.125(a); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (resetting adverse party’s testimony and/or briefing periods, or compelling service of transcript); Techex, Ltd. v. Dvorkovitz, 220 USPQ 81, 83 (TTAB 1983).

 4.   Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (striking of testimony).

703.01(n)    Correction of Errors in Deposition

37 CFR §  2.125 (b)  The party who takes testimony is responsible for having all typographical errors in the transcript and all errors of arrangement, indexing and form of the transcript corrected, on notice to each adverse party, prior to the filing of one certified transcript with the Trademark Trial and Appeal Board. The party who takes testimony is responsible for serving on each adverse party one copy of the corrected transcript or, if reasonably feasible, corrected pages to be inserted into the transcript previously served.

A party that takes testimony is responsible for having any errors in the transcript corrected, on notice to each adverse party, prior to the filing of the certified transcript with the Board. [ Note 1.]

If the witness, upon reading the transcript, discovers that typographical or transcription errors need to be corrected , or that other corrections are necessary to make the transcript an accurate record of what the witness actually said during the taking of his or her testimony, the witness should make a list of all such corrections and forward the list to the officer before whom the deposition was taken. The officer, in turn, should correct the transcript by redoing the involved pages. Alternatively, if there are not many corrections to be made, the witness may correct the transcript by writing each correction above the original text that it corrects, and initialing the correction. Although parties sometimes attempt to correct errors in transcripts by simply inserting a list of corrections at the end of the transcript, this is not an effective method of correction. The Board does not enter corrections for litigants, and the list of corrections is likely to be overlooked and/or disregarded. While corrections may be made in a transcript, to make the transcript an accurate record of what the witness said during the taking of his or her testimony, material changes in the text are not permitted -- the transcript may not be altered to change the testimony of the witness after the fact. [ Note 2.]

A party that takes testimony is responsible for having any errors in the transcript corrected, on notice to each adverse party, prior to the filing of the certified transcript with the Board. [ Note 1.]

If corrections are necessary, the party that took the deposition must serve on every adverse party a copy of the corrected transcript or, if reasonably feasible, corrected pages to be inserted into the transcript previously served. [ Note 3.]

If errors are discovered after the transcript has been filed with the Board, a list of corrections, signed by the witness, should be submitted to the Board (and served on every adverse party), together with a request for leave to correct the errors. Alternatively, the parties may stipulate that specified corrections may be made. If the request is granted, or if the parties so stipulate, the party that took the deposition should file a substitute, corrected transcript with the Board.

NOTES:

 1.   37 CFR § 2.125(b); Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390, 1392 n.6 (TTAB 1991) (objection to corrections served four days after filing and less than two weeks prior to due date for reply brief overruled since remedy lies in requesting extension of briefing period rather than having Board exclude the evidence).

 2.   See Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1325 (TTAB 1992) (any substantive changes made to testimony deposition on written questions would not be considered); Cadence Industries Corp. v. Kerr, 225 USPQ 331, 333 n.4 (TTAB 1985) (Board gave no consideration to response or corrected response when the correction, which changed the percentage of opposer's business income derived from licensing, was substantive); and Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116, 1117 n.2 (TTAB 1982) (change in testimony from "...designing that type of game..." to "...designing that Simon Says type of game..." was substantive in nature and not permitted).

 3.   See 37 CFR § 2.125(b). See also Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390, 1392 n.6 (TTAB 1991).

703.01(o)    Objections to Testimony Depositions

For information concerning objections to testimony depositions, see TBMP § 707.03 and TBMP § 533.

703.01(p)    Confidential or Trade Secret Material

37 CFR §  2.116 (g)  The Trademark Trial and Appeal Board’s standard protective order is applicable during disclosure, discovery and at trial in all opposition, cancellation, interference and concurrent use registration proceedings, unless the parties, by stipulation approved by the Board, agree to an alternative order, or a motion by a party to use an alternative order is granted by the Board. The standard protective order is available at the Office’s Web site, or upon request, a copy will be provided. No material disclosed or produced by a party, presented at trial, or filed with the Board, including motions or briefs which discuss such material, shall be treated as confidential or shielded from public view unless designated as protected under the Board’s standard protective order, or under an alternative order stipulated to by the parties and approved by the Board, or under an order submitted by motion of a party granted by the Board.

37 CFR § 2.125(e)   Upon motion by any party, for good cause, the Trademark Trial and Appeal Board may order that any part of a deposition transcript or any exhibits that directly disclose any trade secret or other confidential research, development, or commercial information may be filed under seal and kept confidential under the provisions of § 2.27(e). If any party or any attorney or agent of a party fails to comply with an order made under this paragraph, the Board may impose any of the sanctions authorized by § 2.120(g).

37 CFR § 2.126(c)   To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(e) must be submitted under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must be submitted.

The requirements for confidential submissions are specified in 37 CFR § 2.126(c). To be handled as confidential, and kept out of the public record, submissions to the Board that are confidential when submitted by paper must be filed under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must also be submitted. [ Note 1.] In addition, in the confidential submission, parties are encouraged to enclose confidential information in brackets to better mark the specific information to be kept confidential. This facilitates a better comparison between the public and confidential versions of the submissions when the Board is preparing a final decision or an order on a motion. If a party submits a transcript or other such filing containing confidential information under seal, the party must also submit for the public record a redacted version of said papers. [ Note 2.] Cf. TBMP § 120.02 (Confidential Materials), TBMP § 412 (Protective Orders), TBMP § 526 (Motion for a Protective Order), and TBMP § 527.01 (Motion for Discovery Sanctions). A rule of reasonableness dictates what information should be redacted, and only in very rare instances should an entire submission be deemed confidential. [ Note 3.]. In cases where a redacted version has not been provided, the confidentiality of the information may be deemed waived. [ Note 4.]

If a party submits confidential material using ESTTA, the filer should select "CONFIDENTIAL Opposition, Cancellation or Concurrent Use" under "File Documents in a Board Proceeding." Filings made using this option will not be made available for public viewing, although an entry will be made on the publicly-available docket sheet in TTABVUE. Electronic filing using ESTTA is preferred for submissions containing confidential material. See TBMP § 120.02 and TBMP § 412.04.

If a paper submission contains confidential material, it must be submitted under separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. Paper submissions are scanned into TTABVUE and designated "confidential." After scanning and designating as "confidential," the Board retains the confidential paper submissions for a short period of time before disposing of the confidential paper submissions in an appropriate manner. Confidential testimony and exhibits submitted in paper are disposed of shortly after the proceeding is terminated.

37 CFR § 2.116(g)  provides that the Board’s standard protective order, which is available on the Board home page of the USPTO website or upon request made to the Board, is applicable to all inter partes trademark proceedings, unless the parties agree to, and the Board approves, an alternative protective order, or unless a motion by a party to enter a specific protective order is granted by the Board. [ Note 5.]

Except for materials filed under seal pursuant to a protective order or agreement, all Board proceeding files and exhibits thereto are available for public inspection and copying. [ Note 6.] Therefore, only the particular exhibits or deposition transcript pages that disclose confidential information should be filed under seal pursuant to a protective order. If a party over-designates material as confidential, the Board will not be bound by the party’s designation, and will treat only testimony and evidence that is truly confidential and commercially sensitive (such as sales expenditures, revenues and trade secrets) as confidential. [ Note 7.] Similarly, if a party designates portions of its brief as confidential, and the statements in such portions do not appear to be confidential, the Board may order the party to submit a redacted brief in which only information that is truly confidential is deleted; failure to comply with the Board’s order may result in the original brief with the confidential portions becoming part of the public record. [ Note 8.] See TBMP § 801.03

For further information regarding confidential materials, see TBMP § 120.02 and TBMP § 412.

NOTES:

 1.   See 37 CFR § 2.126(c).

 2.   Cf. 37 CFR § 2.120(f).

 3.   . See, e.g., Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495 n.5 (TTAB 2005) (where briefs in their entirety were deemed "confidential," Board requested redacted copies). See also General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.4 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential) (excessive markings of various information as confidential complicates record and often indicates that matter is improperly designated or not useful to case).

 4.   . See, e.g., Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1633 n.6 (TTAB 2007).

 5.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42248 (August 1, 2007).

 6.   See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).

 7.   . Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1635 (TTAB 2011) (in pretrial order, parties reminded to refrain from improperly designating evidence or a show cause order may issue); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010); Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1848 (TTAB 2008). See also Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014); General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1181 (TTAB 2008) (although entire deposition was marked confidential, the Board’s decision referred to selective portions that appeared to not be truly confidential).

 8.   Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1136 n.9 (TTAB 2009).