703.02(g) Depositions on Written Questions: Examination of Witness
37 C.F.R. § 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.
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- (b)(3) A party desiring to take cross-examination, by written questions, of a witness who has provided testimony by affidavit or declaration shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board.
- (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 paragraphs (b)(1) and (2) of this section, for the taking of direct examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the deposition. Every notice served on any adverse party under the provisions of paragraph (b)(3) of this section, for the taking of cross-examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the cross-examination. Within twenty days from the date of service of the notice of taking direct examination or service of a testimony affidavit or declaration, any adverse party may serve cross questions upon the party who proposes to take the deposition.; Any party who serves cross questions, whether in response to direct examination questions or under paragraph (b)(3) of this section, 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, or who earlier offered testimony of the witness by affidavit or declaration 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 or who earlier offered testimony of the witness by affidavit or declaration ; 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.
- (3) Service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).
- (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 of taking direct examination on written questions, any adverse party may serve cross questions on the deposing party. Likewise, a party desiring to take cross-examination, by written questions, of an affiant or declarant must serve on each adverse party notice of the cross-examination within 20 days from the date of service of the testimony affidavit or declaration. [ Note 4.] The notice of cross-examination by written questions must state the name or descriptive title of the officer before whom the deposition will be taken, and must include a copy of the written questions to be propounded at cross-examination. [ Note 5.] The party must file a copy of the notice, but not the questions, with the Board. [ Note 6.]
Any party who serves cross questions, whether in response to direct examination questions, or on cross-examination of a witness who has provided affidavit or declaration testimony, must also serve copies of them on every other adverse party. Within 10 days from the date of service of the cross questions, the deposing party, or the party who had offered affidavit or declaration testimony, may serve redirect questions on every adverse party. Within 10 days from the date of service of the redirect questions, any party that served cross questions may serve recross questions on the deposing party or the party who earlier provided affidavit or declaration testimony. A party that serves recross questions on the deposing party must also serve copies thereof on every other adverse party. [ Note 7.]
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. The substitute questions must also be served on every other adverse party. [ Note 8.]
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 C.F.R. § 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 9.] 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 10.]
Service of written questions, responses, and cross-examination questions must be by email unless the parties stipulate to another method, or under certain other limited circumstances. [ Note 11.] For information concerning alternative methods of service under those limited circumstances, see 37 C.F.R. § 2.119(b) and TBMP § 113.04.
An adverse party may attend the taking of the deposition and the party who proffered affidavit or declaration testimony may attend the cross-examination on written questions if it so desires, not for the purpose of participating (its participation will have occurred previously, through its service of cross questions, redirect questions, recross questions, and objections, if any, pursuant to 37 C.F.R. § 2.124(d)(1) ), but rather merely for the purpose of observing. Any attempt to engage the witness during the deposition or cross-examination 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 12.]
NOTES:
4. 37 C.F.R. § 2.124(b)(3) and 37 C.F.R. § 2.124(d)(1). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a witness who has provided testimony by affidavit or declaration shall serve notice on each adverse party and file a copy of the notice with the Board."), and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE; CORRECTION, 81 Fed. Reg. 89382 (December 6, 2016) (further clarification necessary to "clearly incorporate the timing for cross-examination upon written questions of testimony by affidavit or declaration.").
5. 37 C.F.R. § 2.124(c) and 37 C.F.R. § 2.124(d)(1).
6. 37 C.F.R. § 2.124(b)(3). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a witness who has provided testimony by affidavit or declaration shall serve notice on each adverse party and file a copy of the notice with the Board.").
7. 37 C.F.R. § 2.124(d)(1). See Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE; CORRECTION, 81 Fed. Reg. 89382 (December 6, 2016) (further clarification necessary to "clearly incorporate the timing for cross-examination upon written questions of testimony by affidavit or declaration.").
8. 37 C.F.R. § 2.124(d)(1). See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990).
10. 37 C.F.R. § 2.124(e). See Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1030 (TTAB 2017) (deposing official should state the number of each question before asking it).
11. See 37 C.F.R. § 2.119(b) and 37 C.F.R. § 2.124(d)(3). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is adding new § 2.124(d)(3) to provide that service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).").
12. See 37 C.F.R. § 2.123(b).