TBMP Version

Navigation

703.02 Testimony Depositions on Written Questions

703.02(a) Depositions on Written Questions: When Available

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 depositions on oral examination, see TBMP § 703.01.

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 which 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.] See TBMP § 703.01(b).

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 3.] See TBMP § 703.01(b).

NOTES:

1. 37 CFR § 2.123(a)(1).

2. See 37 CFR § 2.123(a)(1).

3. 37 CFR § 2.123(a)(2).

703.02(b) Depositions on Written Questions: Before Whom Taken

37 CFR § 2.142 (a) A deposition upon written questions may be taken before any person before whom depositions may be taken as provided by Rule 28 of the Federal Rules of Civil Procedure.

A deposition on written questions, like a deposition on oral examination, may be taken before the persons described in Fed. R. Civ. P. 28. [ Note 1.] For further information, see TBMP § 703.01(g).

NOTES:

1. See 37 CFR § 2.124(a). See, e.g., Corporacion Habanos S.A. v. Anncas, Inc., 88 USPQ2d 1785, 1789 (TTAB 2008) (testimony deposition of opposer’s vice president taken upon written questions).

703.02(c) Depositions on Written Questions: When Taken

37 CFR § 2.121 Assignment of times for taking testimony. (a) The Trademark Trial and Appeal Board will issue a trial order setting a deadline for each party’s required pretrial disclosures and assigning to each party the time for taking testimony. No testimony shall be taken except during the times assigned, unless by stipulation of the parties approved by the Board, or, upon motion, by order of the Board. The deadlines for pretrial disclosures and the testimony periods may be rescheduled by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. ...

37 CFR § 2.124 (b) (1) A party desiring to take a testimonial deposition upon written questions shall serve notice thereof upon each adverse party within ten days from the opening date of the testimony period of the party who serves the notice. The notice shall state the name and address of the witness. A copy of the notice, but not copies of the questions, shall be filed with the Trademark Trial and Appeal Board.

* * * *

37 C.F.R. § 2.124(d)(2) ... Upon receipt of written notice that one or more testimonial depositions are to be taken upon written questions, the Trademark Trial and Appeal Board shall suspend or reschedule other proceedings in the matter to allow for the orderly completion of the depositions upon written question.

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

A party that desires to take a testimony deposition on written questions must serve notice thereof on each adverse party within 10 days from the opening date of the deposing party's testimony period, as originally set or as reset. [ Note 2.]

On receipt of written notice that one or more testimony depositions are to be taken on written questions, the Board will generally suspend or reschedule other proceedings in the case to allow for the orderly completion of the depositions on written questions. [ Note 3.]

For information concerning the time for taking a discovery deposition, see TBMP § 404.01.

NOTES:

1. 37 CFR § 2.121 (a)(1).

2. 37 CFR § 2.124(b)(1). See Marshall Field & Co. v. Mrs. Field's Cookies, 17 USPQ2d 1652, 1652 (TTAB 1990) (notice of testimony depositions on written questions, while served eight months after testimony period originally opened, were nonetheless timely, having been served within 10 days of "opening" of testimony period as last reset).

3. 37 CFR § 2.124(d)(2). See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990); Marshall Field & Co. v. Mrs. Field's Cookies, 17 USPQ2d 1652 (TTAB 1990).

703.02(d) Depositions on Written Questions: Place of Deposition

A testimony deposition on written questions may be taken at any reasonable place. [ Note 1.] Cf. TBMP § 703.01(d). An adverse party may attend the taking of the deposition if it so desires, not for the purpose of participating (its participation will have occurred previously, through its service of cross questions, recross questions, and objections, if any, pursuant to 37 CFR § 2.124(d)(1), but rather merely for the purpose of observing.

For information concerning the place where a discovery deposition upon written questions is taken, see TBMP § 404.03(b), TBMP § 404.03(c), and TBMP § 404.04.

NOTES:

1. Cf. 37 CFR § 2.123(c). Cf. also 37 CFR § 2.123(b) regarding stipulations as to place, manner and notice of depositions.

703.02(e) Depositions on Written Questions: Notice of Deposition

* * * *
(c) Every notice given under the provisions of paragraph (b) of this section shall be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken.
(d)
- (1) Every notice served on any adverse party under the provisions of paragraph (b) of this section shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the deposition. ...

To take a testimony deposition on written questions a party must serve notice thereof on each adverse party within 10 days from the opening date of its testimony period, as originally set or as reset. [ Note 1.] The notice must state the name and address of the witness; it must be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken, and by the written questions to be propounded on behalf of the deposing party. [ Note 2.] A copy of the notice, but not of the questions, must be filed with the Board. [ Note 3.] 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.]

For information concerning the notice of deposition in the case of a discovery deposition on written questions, see TBMP § 404.07(d).

NOTES:

1. 37 CFR § 2.124(b)(1). See Marshall Field & Co. v. Mrs. Field's Cookies, 17 USPQ2d 1652 (TTAB 1990).

2. 37 CFR § 2.124(b)(1), 37 CFR § 2.124(c), and 37 CFR § 2.124(d)(1).

3. 37 CFR § 2.124(b)(1).

4. 37 CFR § 2.123(b).

703.02(f) Depositions on Written Questions: Securing Attendance of Unwilling Witness

For information concerning securing the attendance of an unwilling witness, see TBMP § 703.01(f) (for a testimony deposition) and TBMP § 404.03 (for a discovery deposition).

703.02(g) Depositions on Written Questions: Examination of Witness

* * * *
(c) Every notice given under the provisions of paragraph (b) of this section shall be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken.
(d)
- (1) Every notice served on any adverse party under the provisions of paragraph (b) of this section shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the deposition. Within twenty days from the date of service of the notice, any adverse party may serve cross questions upon the party who proposes to take the deposition; any party who serves cross questions shall also serve every other adverse party. Within ten days from the date of service of the cross questions, the party who proposes to take the deposition may serve redirect questions on every adverse party. Within ten days from the date of service of the redirect questions, any party who served cross questions may serve recross questions upon the party who proposes to take the deposition; any party who serves recross questions shall also serve every other adverse party. Written objections to questions may be served on a party propounding questions; any party who objects shall serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within ten days of the date of service of the objections; substitute questions shall be served on every other adverse party.
- (2) Upon motion for good cause by any party, or upon its own initiative, the Trademark Trial and Appeal Board may extend any of the time periods provided by paragraph (d)(1) of this section. Upon receipt of written notice that one or more testimonial depositions are to be taken upon written questions, the Trademark Trial and Appeal Board shall suspend or reschedule other proceedings in the matter to allow for the orderly completion of the depositions upon written questions.
(e) Within ten days after the last date when questions, objections, or substitute questions may be served, the party who proposes to take the deposition shall mail a copy of the notice and copies of all the questions to the officer designated in the notice; a copy of the notice and of all the questions mailed to the officer shall be served on every adverse party. The officer designated in the notice shall take the testimony of the witness in response to the questions and shall record each answer immediately after the corresponding question. The officer shall then certify the transcript and mail the transcript and exhibits to the party who took the deposition.

A party which desires to take a testimony deposition on written questions must, within 10 days from the opening date of its testimony period, as originally set or as reset, serve notice thereof on each adverse party. [ Note 1.] See TBMP § 703.02(e).

The notice must be accompanied by the written questions to be propounded on behalf of the deposing party. [ Note 2.] A copy of the notice, but not of the questions, must be filed with the Board. [ Note 3.]

Within 20 days from the date of service of the notice (25 days, if service of the notice and accompanying questions was made by first-class mail, Priority Mail Express®, or overnight courier -- see 37 CFR § 2.119(c) ), any adverse party may serve cross questions on the deposing party. A party that serves cross questions on the deposing party must also serve copies of them on every other adverse party. Within 10 days from the date of service of the cross questions (15 days, if service of the cross questions was made by first-class mail, Priority Mail Express®, or overnight courier), the deposing party may serve redirect questions on every adverse party. Within 10 days from the date of service of the redirect questions (15 days, if service of the redirect questions was made by first-class mail, Priority Mail Express®, or overnight courier), any party that served cross questions may serve recross questions on the deposing party. A party that serves recross questions on the deposing party must also serve copies thereof on every other adverse party. [ Note 4.]

Written objections to questions may be served on the party that propounded the questions. A party that serves objections on a propounding party must also serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within 10 days from the date of service of the objections (15 days, if service of the objections was made by first-class mail, Priority Mail Express®, or overnight courier). The substitute questions must also be served on every other adverse party. [ Note 5.]

On motion for good cause filed by any party, or on its own initiative, the Board may extend any of the time periods specified in 37 CFR § 2.124(d)(1), that is, the time periods for serving cross questions, redirect questions, recross questions, objections, and substitute questions. Further, on receipt of written notice that one or more testimony depositions are to be taken on written questions, the Board will suspend or reschedule other proceedings in the matter to allow for the orderly completion of the depositions on written questions. [ Note 6.] See TBMP § 703.02(c).

Within 10 days after the last date when questions, objections, or substitute questions may be served, the deposing party must mail a copy of the notice and copies of all the questions to the officer designated in the notice. A copy of the notice and of all the questions mailed to the officer must also be served on every adverse party. The officer designated in the notice shall take the testimony of the witness in response to the questions, and shall record each answer immediately after the corresponding question. [ Note 7.]

An adverse party may attend the taking of the deposition if it so desires, not for the purpose of participating (its participation will have occurred previously, through its service of cross questions, recross questions, and objections, if any, pursuant to 37 CFR § 2.124(d)(1) ), but rather merely for the purpose of observing. Any attempt to engage the witness during the deposition may constitute sanctionable conduct.

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. When so taken, the deposition may be used like any other deposition. [ Note 8.]

NOTES:

1. 37 CFR § 2.124(b)(1).

2. 37 CFR § 2.124(b)(1), 37 CFR § 2.124(c), and 37 CFR § 2.124(d)(1).

3. 37 CFR § 2.124(b)(1).

4. 37 CFR § 2.124(d)(1). See Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979).

5. 37 CFR § 2.124(d)(1). See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990).

6. 37 CFR § 2.124(d)(2).

7. 37 CFR § 2.124(e).

8. See 37 CFR § 2.123(b).

703.02(h) Depositions on Written Questions: Form, Signature and Certification of Deposition

37 CFR § 2.124 (e) Within ten days after the last date when questions, objections, or substitute questions may be served, the party who proposes to take the deposition shall mail a copy of the notice and copies of all the questions to the officer designated in the notice; a copy of the notice and of all the questions mailed to the officer shall be served on every adverse party. The officer designated in the notice shall take the testimony of the witness in response to the questions and shall record each answer immediately after the corresponding question. The officer shall then certify the transcript and mail the transcript and exhibits to the party who took the deposition.

The officer before whom a deposition on written questions is taken shall record each answer immediately after the corresponding question. [ Note 1.]

For further information on the form for a deposition taken in an inter partes proceeding before the Board, see 37 CFR § 2.123(g) and 37 CFR § 2.126, and TBMP § 703.01(i).

For information concerning signature of a deposition taken in an inter partes proceeding before the Board, see 37 CFR § 2.123(e)(5) and TBMP § 703.01(j).

After the officer designated in the notice of deposition has taken a deposition on written questions, the officer must certify the transcript of the deposition. See 37 CFR § 2.124(e). For information concerning certification of a deposition taken in an inter partes proceeding before the Board, see 37 CFR § 2.123(f), and TBMP § 703.01(k).

When the transcript has been certified, the officer should mail the transcript and exhibits to the party that took the deposition. [ Note 2.]

NOTES:

1. See 37 CFR § 2.124(e).

2. See 37 CFR § 2.124(e).

703.02(i) Depositions on Written Questions: Service, Correction and Filing of Deposition

37 CFR § 2.124 (f) The party who took the deposition shall promptly serve a copy of the transcript, copies of documentary exhibits, and duplicates or photographs of physical exhibits on every adverse party. It is the responsibility of the party who takes the deposition to assure that the transcript is correct (see § 2.125(b)). If the deposition is a discovery deposition, it may be made of record as provided by § 2.120(j). If the deposition is a testimonial deposition, the original, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be filed promptly with the Trademark Trial and Appeal Board.

The party that took the deposition on written questions must promptly serve a copy of the transcript, with exhibits, on every adverse party. [ Note 1.] See TBMP § 703.01(m). The party that took the deposition must also assure that the transcript is correct. [ Note 2.] For information concerning correction of errors in a deposition taken in a Board inter partes proceeding, see TBMP § 703.01(n).

If the deposition is a testimony deposition upon written questions, the original, with exhibits, must be filed promptly with the Board. [ Note 3.] By "promptly" the Board means that the transcript, with exhibits, may be filed at any time prior to submission of the case for final decision. See TBMP § 703.01(k).

NOTES:

1. 37 CFR § 2.124(f).

2. 37 CFR § 2.124(f) and 37 CFR § 2.125(b).

3. See 37 CFR § 2.124(f).

703.02(j) Testimony Depositions on Written Questions Must be Filed

While the offering of a discovery deposition in evidence is voluntary, 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.] See TBMP § 703.01(l).

See, with respect to making a discovery deposition of record, 37 CFR § 2.120(j) and TBMP § 704.09.

NOTES:

1. See 37 CFR § 2.123(h).

703.02(k) Depositions on Written Questions: Objections to Deposition

37 CFR § 2.124(d)(1) ... Written objections to questions may be served on a party propounding questions; any party who objects shall serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within ten days of the date of service of the objections; substitute questions shall be served on every other adverse party.

* * * *
(g) Objections to questions and answers in depositions upon written questions may be considered at final hearing.

Written objections to questions propounded for a deposition on written questions may be served on the party that propounded the questions. Any party that serves written objections on a propounding party must also serve a copy of the objections on every other adverse party. [ Note 1.] See TBMP § 703.02(g).

Unless waived, objections to questions and answers in depositions on written questions, as in oral depositions, generally are considered by the Board at final hearing. [ Note 2.]

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

For information concerning the raising of objections to discovery depositions, see TBMP § 404.08. For information concerning the raising of objections to a notice of reliance on a discovery deposition, see TBMP § 707.02 and TBMP § 532.

NOTES:

1. 37 CFR § 2.124(d)(1).

2. 37 CFR § 2.124(g). See Nahshin v. Product Source International LLC, 107 USPQ2d 1257, 1259 (TTAB 2013) (objections to portions of depositions on written questions deemed waived); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990) (objections to questions based on relevancy and materiality will be deferred until final hearing).

703.02(l) Depositions on Written Questions: Confidential or Trade Secret Material

For information concerning the protection of confidential or trade secret material forming part of a deposition transcript or exhibits thereto, see 37 CFR § 2.125(e) and 37 CFR § 2.126 (c); TBMP § 703.01(p).

703.02(m) Depositions on Written Questions: Utility

A deposition on written questions is a cumbersome, time-consuming procedure. It requires that cross questions, redirect questions, recross questions, and objections all be framed and served before the questions on direct examination have even been answered. Moreover, it deprives an adverse party of the right to confront the witness and ask follow-up questions on cross examination. [ Note 1.] See TBMP § 703.02(g).

Nevertheless, it has some utility. It may be the only means by which a deposition may be taken in a foreign country. [ Note 2.] See TBMP § 404.03(c) (discovery deposition of non-party residing in foreign country), TBMP § 703.01(b) (Form of Testimony), TBMP § 703.01(f)(3) (Unwilling Witness Residing in a Foreign Country), and TBMP § 703.02(a) (Depositions on Written Questions – When Available). Moreover, the deposition on written questions is generally less expensive than the deposition on oral examination and is usually more convenient for the witness. Thus, even for a deposition to be taken in the United States, a deposing party may prefer to use the deposition on written questions, particularly in those cases where the testimony will be short, simple, straight-forward, and not likely to be disputed, such as to establish for the record examples of third-party usage. [ Note 3.]

NOTES:

1. See 37 CFR § 2.124(d)(1). See also Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990), corrected, 19 USPQ2d 1479 (TTAB 1990); Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980); Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979); Orion Group Inc. v. Orion Insurance Co.., 12 USPQ2d 1923, 1926 (TTAB 1989) (motion to take discovery deposition in foreign country orally).

2. See 37 CFR § 2.120(c)(1) and 37 CFR § 2.123(a)(2). Cf. 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) (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).

3. Cf. Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 590 (TTAB 1980).