404.03(b)    Person Residing in a Foreign Country – Party

37 C.F.R. § 2.120(c)  Discovery deposition in foreign countries; or of foreign party within jurisdiction of the United States.

  • (1) The discovery deposition of a natural person residing in a foreign country who is a party or who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, shall, if taken in a foreign country, be taken in the manner prescribed by § 2.124 unless the Trademark Trial and Appeal Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate.
  • (2) Whenever a foreign party is or will be, during a time set for discovery, present within the United States or any territory which is under the control and jurisdiction of the United States, such party may be deposed by oral examination upon notice by the party seeking discovery. Whenever a foreign party has or will have, during a time set for discovery, an officer, director, managing agent, or other person who consents to testify on its behalf, present within the United States or any territory which is under the control and jurisdiction of the United States, such officer, director, managing agent, or other person who consents to testify in its behalf may be deposed by oral examination upon notice by the party seeking discovery. The party seeking discovery may have one or more officers, directors, managing agents, or other persons who consent to testify on behalf of the adverse party, designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure. The deposition of a person under this paragraph shall be taken in the Federal judicial district where the witness resides or is regularly employed, or, if the witness neither resides nor is regularly employed in a Federal judicial district, where the witness is at the time of the deposition. This paragraph (c)(2) does not preclude the taking of a discovery deposition of a foreign party by any other procedure provided by paragraph (c)(1) of this section.

The discovery deposition of a natural person who resides in a foreign country, and who is a party, or who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party may be taken on notice alone. [ Note 1.]

However, if the discovery deposition of such a person is taken in a foreign country, it must be taken on written questions, in the manner described in 37 C.F.R. § 2.124, unless the Board, on motion for good cause, orders, or the parties stipulate, that the deposition be taken by oral examination. [ Note 2.]

Similarly, if a testimonial deposition is taken in a foreign country, it must be taken by deposition on written questions, as described in 37 C.F.R. § 2.123(a)(2)  unless the Board, on motion for good cause orders the deposition taken by oral examination, or the parties so stipulate; or by affidavit or declaration subject to the right of cross examination. [ Note 3.] See TBMP § 703.01(b) for further information about the form of trial testimony. It should be noted, however that some countries 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. A party which wishes to take a deposition in a foreign country should first consult with local counsel in the foreign country, and/or with the Office of Legal Affairs, 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.

For information concerning the procedure for taking discovery depositions on written questions, see TBMP § 404.07.

For information on a motion to take a foreign deposition orally, see TBMP § 520. For information on taking the testimony deposition of a willing or unwilling adverse party or non-party witness in a foreign country through the letter rogatory procedure or by procedures provided under the Hague convention or other applicable treaties, see TBMP § 703.01(g).

The Board will not order a natural person residing in a foreign country to come to the United States for the taking of his or her discovery deposition. [ Note 4.]

Parties seeking to take the discovery deposition of a natural person residing in a foreign country should be aware that the laws of some foreign countries may serve to preclude the taking of such depositions. [ Note 5.] In determining when it is appropriate to impose sanctions for non-compliance with discovery due to a conflict with foreign laws, the following factors are considered: (1) the good faith of the non-complying party; (2) whether the non-complying party would incur foreign criminal liability; and (3) whether alternative sources of information are available. [ Note 6.]

NOTES:

 1.   See 37 C.F.R. § 2.120(c)  and 37 C.F.R. § 2.124.

 2.   37 C.F.R. § 2.120(c)(1). See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998). See also Orion Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923, 1925 (TTAB 1989) (by motion); Jonergin Co. v. Jonergin Vermont Inc., 222 USPQ 337, 340 (Comm’r 1983) (by stipulation).

 3.   37 C.F.R. § 2.123(a)(2). See TBMP § 703.02(a).

 4.   See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 374 (TTAB 1978) (deposition may only be taken by written questions unless otherwise stipulated, or unless the party is present in the U.S.). See also Miller v. N. V. Cacao-En Chocoladefabrieken Boon, 142 USPQ 364, 365-66 (E.D.N.Y. 1964); Cf. Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises, Ltd, 511 F.3d 437, 85 USPQ2d 1385, 1391 (4th Cir. 2007) (foreign corporation party required to obey a subpoena issued by the district court, pursuant to Rule 30(b)(6) notice, to appear in the United States to give trial testimony).

 5.   Cf. Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197, 200-01 (1958) (Swiss government ordered Swiss plaintiff in U.S. court proceeding not to produce certain documents).

 6.   Cf. Cochran Consulting Inc. v. Uwatec USA Inc., 102 F.3d 1224, 41 USPQ2d 1161, 1163-67 (Fed. Cir. 1996) (citing Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197 (1958)).