703.01(e) Notice of Oral Deposition and Notice of Election of Oral Cross-Examination of Affiant or Declarant
37 C.F.R. § 2.123(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. The parties may stipulate in writing what a particular witness would testify to if called; or any relevant facts in the fact may be stipulated in writing.
37 C.F.R. § 2.123(c) Notice of examination of witnesses. Before the oral depositions of witnesses shall be taken by a party, due notice in writing shall be given to the adverse party or parties, as provided in § 2.119(b), of the time when and place where the depositions will be taken, of the cause or matter in which they are to be used, and the name and address of each witness to be examined. Depositions may be noticed for any reasonable time and place in the United States. A deposition may not be noticed for a place in a foreign country except as provided in paragraph (a)(2) of this section. No party shall take depositions in more than one place at the same time, nor so nearly at the same time that reasonable opportunity for travel from one place of examination to the other is not available. When a party elects to take oral cross-examination of an affiant or declarant, the notice of such election must be served on the adverse party and a copy filed with the Board within 20 days from the date of service of the affidavit or declaration and completed within 30 days from the date of service of the notice of election. Upon motion for good cause by any party, or upon its own initiative, the Board may extend the periods for electing and taking oral cross-examination. When such election has been made but cannot be completed within that testimony period, the Board, after the close of that testimony period, shall suspend or reschedule other proceedings in the matter to allow for the orderly completion of the oral cross-examination(s).
Before a party may take the oral testimony deposition upon direct examination of a witness, the party must give due (i.e., reasonable) notice in writing to every adverse party. [ Note 1.] See TBMP § 533.02(a). Cf. TBMP § 404.05. In assessing whether a party gave reasonable notice of a deposition, the Board counts calendar days, not business days. [ Note 2.]
The notice must specify the time and place the depositions will be taken, the cause or matter in which they are to be used, and the name and address of each witness to be examined. [ Note 3.] Cf. TBMP § 404.05.
For information concerning the raising of an objection to a testimony deposition on the ground of improper or inadequate notice, see 37 C.F.R. § 2.123(e)(3), TBMP § 533.02, and TBMP § 707.03(b)(2).
If the parties so stipulate in writing, an oral testimony 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.]
Unlike a deposition transcript, a notice of oral deposition need not be filed with the Board. [ Note 5.] However, if a certified copy of the notice of deposition is, for some reason, required for use before a federal district court, the notice of deposition must be filed with the Board via ESTTA for purposes of certification. [ Note 6.] See TBMP § 122 and TBMP § 703.01(f)(2).
A party who elects to take oral cross-examination of an affiant or declarant must serve the notice of such election on the adverse party and file a copy of the notice of election with the Board within 20 days from the date of service of the affidavit or declaration, and the party must complete the oral cross-examination within 30 days from the date of service of the notice of election. On motion for good cause, or on its own initiative, the Board may extend the periods for electing and taking oral cross-examination. When a party has elected to take oral cross-examination of an affiant or declarant, but cannot complete the cross-examination within that testimony period, the Board, after the close of that testimony period, will suspend or reschedule proceedings in the matter to allow for the orderly completion of the oral cross-examination(s). [ Note 7.] The notice of election of oral cross-examination of a declarant or affiant to be taken in the United States must be noticed for a reasonable time and place. [ Note 8.] For information concerning taking depositions in foreign countries, see TBMP § 703.01.
NOTES:
1. 37 C.F.R. § 2.123(c). See Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1653 (TTAB 2007) (six calendar days is reasonable notice); Gaudreau v. American Promotional Events, Inc., 82 USPQ2d 1692, 1696 (TTAB 2007) (two days notice prior to the close of the testimony period was unreasonable); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1444 (TTAB 2000) (one and two-day notices were not reasonable without compelling need for such haste; three-day notice was reasonable); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 (TTAB 1999) (two-day notice was not reasonable); Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1284 (TTAB 1998) (one-day notice for deposition of expert witness was short but not prejudicial where party gave notice "as early as possible" and moreover offered to make witness again available at a future date); Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1074 (TTAB 1990) (24 hours not sufficient time to prepare for deposition); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.6 (TTAB 1982) (two-day notice of deposition, although short, was not unreasonable where deposition was held a short distance from applicant's attorney's office and where no specific prejudice was shown).
2. Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1653 (TTAB 2007).
3. See 37 C.F.R. § 2.123(c). See also Steiger Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 169 (TTAB 1984) (testimony not considered where notice failed to specify name of party being deposed), different results reached on reh'g, 3 USPQ2d 1708 (TTAB 1984); O. M. Scott & Sons Co. v. Ferry-Morse Seed Co., 190 USPQ 352, 353 (TTAB 1976) (testimony stricken where notice identified one witness and indicated that "possibly others will testify" and where opposer proceeded to take testimony of unidentified witness, applicant objected, did not cross-examine the witness, and moved to strike testimony).
4. 37 C.F.R. § 2.123(a)(1) and 37 C.F.R. § 2.123(b).
5. See 37 C.F.R. § 2.123(f).
6. See 37 C.F.R. § 2.126(a) and 37 C.F.R. § 2.126(b).
7. See 37 C.F.R. § 2.123(c) and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is further amending § 2.123(c) to add that, when a party elects to take oral cross-examination of an affiant or declarant, the notice of such election must be served on the adverse party and a copy filed with the Board within 20 days from the date of service of the affidavit or declaration and completed within 30 days from the date of service of the notice of election. The Office is further amending § 2.123(c) to add that the Board may extend the periods for electing and taking oral cross-examination and, when necessary, shall suspend or reschedule proceedings in the matter to allow for the orderly completion of oral cross-examination(s) that cannot be completed within a testimony period.").
8. Cf. USPS v. RPost Communication Ltd., 124 USPQ2d 1045 (TTAB 2017) (notice of election of oral cross-examination requiring declarants who live and work in Washington DC to travel to Santa Monica CA quashed because not noticed for reasonable place).