703.01(m)    Service of Trial Testimony

37 C.F.R. § 2.125  Filing and service of testimony.

  • (a) One copy of the declaration or affidavit prepared 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 at the time the declaration or affidavit is submitted to the Trademark Trial and Appeal Board during the assigned testimony period.
  • (b) One copy of the transcript of each testimony deposition taken in accordance with § 2.123 or § 2.124, 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.

A party who takes testimony by affidavit or declaration must serve a copy of the declaration or affidavit along with copies of exhibits on each adverse party at the same time the party submits the declaration or affidavit to the Board during the party’s assigned testimony period. [ Note 1.]

One copy of the transcript of a testimony deposition, 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 2.]

The requirement that a copy of the testimony affidavit, declaration or deposition transcript, with exhibits, be served on every adverse party within the time specified in 37 C.F.R. § 2.125(a)  and 37 C.F.R. § 2.125(b) 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 3.] If a copy of the testimony affidavit, declaration or deposition 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 testimony affidavit, declaration or deposition transcript, with exhibits. [ Note 4.]

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 C.F.R. § 2.125(b). [ Note 5.]

NOTES:

 1.   See 37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.125(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.125 to renumber paragraphs (a) through (e) as (b) through (f) and to add new § 2.125(a) to require that one copy of a declaration or affidavit prepared in accordance with § 2.123, with exhibits, shall be served on each adverse party at the time the declaration or affidavit is submitted to the Board during the assigned testimony period.").

 2.   37 C.F.R. § 2.125(b) (formerly 37 C.F.R. § 2.125(a)). See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009).

 3.   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). Cf. Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., 123 USPQ2d 1844, 1847-48 (TTAB 2017) (rebuttal testimony not submitted with opposer’s case-in-chief admissible because directed to evidence submitted during applicant’s testimony period), on appeal, 3:17-CV-02150 (S.D. Cal. October 19, 2017).

 4.   37 C.F.R. § 2.125(b)  (formerly 37 C.F.R. § 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).

 5.   Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (striking of testimony). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending renumbered § 2.125(b) to add a cross-reference to § 2.124 and to clarify that the paragraph applies to testimony depositions, including depositions on written questions.").