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.

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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 (with a .pdf extension). 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).