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).