704.09    Discovery Depositions

37 C.F.R. § 2.120(k)  Use of discovery deposition, answer to interrogatory, or admission.

  • (1) The discovery deposition of a party or of anyone who at the time of taking the deposition was an officer, director or managing agent of a party, or a person designated by a party pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, may be offered in evidence by an adverse party.
  • (2) Except as provided in paragraph (k)(1) of this section, the discovery deposition of a witness, whether or not a party, shall not be offered in evidence unless the person whose deposition was taken is, during the testimony period of the party offering the deposition, dead; or out of the United States (unless it appears that the absence of the witness was procured by the party offering the deposition); or unable to testify because of age, illness, infirmity, or imprisonment; or cannot be served with a subpoena to compel attendance at a testimonial deposition; or there is a stipulation by the parties; or upon a showing that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used. The use of a discovery deposition by any party under this paragraph will be allowed only by stipulation of the parties approved by the Trademark Trial and Appeal Board, or by order of the Board on motion, which shall be filed when the party makes its pretrial disclosures, unless the motion is based upon a claim that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used, even though such deadline has passed, in which case the motion shall be filed promptly after the circumstances claimed to justify use of the deposition became known.
  • (3)
    • (i) A discovery deposition, an answer to an interrogatory, or an admission to a request for admission, or a written initial disclosure, which may be offered in evidence under the provisions of paragraph (k) of this section, may be made of record in the case by filing the deposition or any part thereof with any exhibit to the part that is filed, or a copy of the interrogatory and answer thereto with any exhibit made part of the answer, or a copy of the request for admission and any exhibit thereto and the admission (or a statement that the party from which an admission was requested failed to respond thereto), or a copy of the written initial disclosure, together with a notice of reliance in accordance with § 2.122(g). The notice of reliance and the material submitted thereunder should be filed during the testimony period of the party which files the notice of reliance. An objection made at a discovery deposition by a party answering a question subject to the objection will be considered at final hearing.
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  • (4) If only part of a discovery deposition is submitted and made part of the record by a party, an adverse party may introduce under a notice of reliance any other part of the deposition which should in fairness be considered so as to make not misleading what was offered by the submitting party. A notice of reliance filed by an adverse party must be supported by a written statement explaining why the adverse party needs to rely upon each additional part listed in the adverse party's notice, failing which the Board, in its discretion, may refuse to consider the additional parts.
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  • (6) Paragraph (k) of this section will not be interpreted to preclude reading or use of written disclosures or documents, a discovery deposition, or answer to an interrogatory, or admission as part of the examination or cross-examination of any witness during the testimony period of any party.
  • (7) When a written disclosure, a discovery deposition, or a part thereof, or an answer to an interrogatory, or an admission, or an authenticated produced document has been made of record by one party in accordance with the provisions of paragraph (k)(3) of this section, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.
  • (8) Written disclosures or disclosed documents, requests for discovery, responses thereto, and materials or depositions obtained through the disclosure or discovery process should not be filed with the Board, except when submitted with a motion relating to disclosure or discovery, or in support of or in response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party's testimony period.

The discovery deposition of a party (or of anyone who, at the time of taking the deposition, was 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 offered in evidence by any adverse party. [ Note 1.]

Otherwise, the discovery deposition of a witness, whether or not a party, may not be offered in evidence except in the following situations:

  • (1) By stipulation of the parties, approved by the Board. [ Note 2.]
  • (2) By order of the Board, on motion showing that the person whose deposition was taken is, during the testimony period of the party offering the deposition, dead; or out of the United States (unless it appears that the absence of the witness was procured by the party offering the deposition); or unable to testify because of age, illness, infirmity, or imprisonment; or cannot be served with a subpoena to compel attendance at a testimonial deposition; or that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used. The motion must be filed when the party makes its pretrial disclosures, unless the motion is based on a claim that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used, in which case the motion must be filed promptly after the circumstances claimed to justify use of the deposition became known. [ Note 3.]
  • (3) If only part of a discovery deposition is submitted and made part of the record by a party entitled to offer the deposition in evidence, an adverse party may introduce under a notice of reliance any other part of the deposition which should in fairness be considered so as to make not misleading what was offered by the submitting party. In such a case, the notice of reliance filed by the adverse party must be supported by a written statement explaining why the adverse party needs to rely on each additional part listed in the adverse party's notice, failing which the Board, in its discretion, may refuse to consider the additional parts. [ Note 4.]

A discovery deposition that may be offered in evidence under 37 C.F.R. § 2.120(k)  may be made of record by filing, during the testimony period of the offering party, the deposition or any part thereof with any exhibit to the part that is filed, together with a notice of reliance. [ Note 5.] The notice of reliance must indicate the general relevance of the discovery deposition or any part thereof and associate it with one or more issues in the case. [ Note 6.] When only part of a deposition is relied on, the notice of reliance must specify the part or parts relied on. [ Note 7.] In order to avoid creating an overly large record of irrelevant evidence, parties should, where appropriate, file only those portions of a discovery deposition transcript that are relevant to the pleaded claims, counterclaims, or affirmative defenses. [ Note 8.] See TBMP § 702.05 (Overly Large Records).

When a discovery deposition has been made of record by one party in accordance with 37 C.F.R. § 2.120(k), it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. [ Note 9.] If only part of a discovery deposition has been made of record pursuant to 37 C.F.R. § 2.120(k), that part only may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. If one party has filed a notice of reliance on a discovery deposition or part thereof and an adverse party has based its presentation of evidence on the belief that the deposition or the part thereof is of record, the notice of reliance may not later be withdrawn. [ Note 10.]

A discovery deposition not properly offered in evidence under 37 C.F.R. § 2.120(k)  may nevertheless be considered by the Board if the nonoffering party (parties) does not object thereto, or treats the deposition as being of record, or improperly offers a discovery deposition in the same manner. [ Note 11.] The failure to disclose or supplement an initial disclosure to identify a witness does not necessarily preclude the introduction of a discovery deposition of that witness at trial. [ Note 12.] See TBMP § 408.03.

Written disclosures, disclosed documents, requests for discovery, responses thereto, and materials or depositions obtained through the disclosure or discovery process should not be filed with the Board except when submitted (1) with a motion relating to disclosure or discovery; or (2) in support of or response to a motion for summary judgment; or (3) under a notice of reliance during a party's testimony period; or (4) as exhibits to a testimony deposition; or (5) in support of an objection to proffered evidence on the ground that the evidence should have been, but was not, provided in response to a request for discovery. [ Note 13.] See TBMP § 409.

Nothing in 37 C.F.R. § 2.120(k)  will be interpreted to preclude the reading or the use of a discovery deposition as part of the examination or cross-examination of any witness during the testimony period of any party. [ Note 14.]

For information concerning the taking of a discovery deposition, and the raising of objections thereto, see TBMP § 404, TBMP § 532, and TBMP § 707.02.

Please Note: Some of the cases cited in this section established principles later codified in former 37 C.F.R. § 2.120(j) which was amended and redesignated as 37 C.F.R. § 2.120(k)  effective January 14, 2017, or were decided under rules that were the predecessors to such provisions.

NOTES:

 1.   37 C.F.R. § 2.120(k)(1). See Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1427 (TTAB 1993) (deponent was no longer an officer or director at time his deposition was taken); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1325 (TTAB 1992) (same); First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1630 n.5 (TTAB 1988) (only by adverse party); Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552, 1555 (TTAB 1987) (same); Dynamark Corp. v. Weed Eaters, Inc., 207 USPQ 1026, 1028 n.2 (TTAB 1980) (same); Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 867 n.7 (TTAB 1979) (discovery deposition of non-party taken on written questions inadmissible); Johnson Publishing Co. v. Cavin & Tubiana OHG, 196 USPQ 383, 384 n.5 (TTAB 1977) (party who takes discovery deposition may place it into evidence).

 2.   37 C.F.R. § 2.120(k)(2). See, e.g., Southwestern Management, Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1013 n.6 (TTAB 2015) (parties stipulated to allow excerpts of discovery deposition of a non-party to be entered into evidence), aff’d 652 F. App’x 971 (Fed. Cir. 2016) (mem.); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1425 n.21 (TTAB 2014) (discovery depositions of opposers’ own officers submitted by parties’ stipulation); Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons Inc., 55 USPQ2d 1298, 1302 n.11 (TTAB 2000) (deposition of non-party properly in evidence by stipulation of parties). Cf. Azalea Health Innovations, Inc. v. Rural Health Care, Inc., 125 USPQ2d 1236, 1240-41 (TTAB 2017) (granting opposer’s motion to strike discovery deposition transcripts of non-party witnesses submitted by applicant under notice of reliance to impeach the witnesses’ declaration trial testimony, where there was no stipulation to allow the non-party witnesses’ discovery depositions, applicant did not elect oral cross-examination of the witnesses on their testimonial declarations, and applicant did not file a motion seeking Board approval to use the discovery depositions, or a motion claiming exceptional circumstances).

 3.   37 C.F.R. § 2.120(k)(2). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69962 (October 7, 2016) ("The Office is amending renumbered § 2.120(k)(2) to change the time for a motion to use a discovery deposition to when the offering party makes its pretrial disclosures and to clarify that the exceptional circumstances standard applies when this deadline has passed."). See also Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009) (motion granted to use discovery deposition of foreign resident not willing to appear voluntarily and whose attendance could not be compelled); Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1426–27 (TTAB 1993); Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552, 1555 (TTAB 1987) (no special circumstances shown by applicant to admit discovery deposition of applicant’s president); Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 867 (TTAB 1979) (mere speculation that non-party witness would be unavailable is insufficient); National Fidelity Life Insurance v. National Insurance Trust, 199 USPQ 691, 692 n.4 (TTAB 1978) (no special circumstances shown to admit discovery deposition of non-party). Cf. Azalea Health Innovations, Inc. v. Rural Health Care, Inc., 125 USPQ2d 1236, 1240-41 (TTAB 2017) (granting opposer’s motion to strike discovery deposition transcripts of non-party witnesses submitted by applicant under notice of reliance to impeach the witnesses’ declaration trial testimony, where there was no stipulation to allow the non-party witnesses’ discovery depositions, applicant did not elect oral cross-examination of the witnesses on their testimonial declarations, and applicant did not file a motion seeking Board approval to use the discovery depositions, or a motion claiming exceptional circumstances).

 4.   37 C.F.R. § 2.120(k)(4). See Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1352 n.13 (TTAB 2014) ("in the interests of fairness," Board considers additional excerpts of discovery deposition submitted by adverse party under notice of reliance), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014); Swatch AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1466 (TTAB 2013) (opposer’s objections to applicant's offer in evidence of portions of the Fed. R. Civ. P. 30(b)(6) discovery depositions of applicant's own witnesses sustained as to those portions that constitute new testimony, overruled as to those portions that clarify witness’ statements), aff’d, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015); City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1671 (TTAB 2013) (petitioner’s objection to respondent’s "counter-designations" of portions of respondent’s Fed. R. Civ. P. 30(b)(6) discovery deposition overruled); Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1190 (TTAB 2011) (adverse party provided the requisite written statement explaining why it needs to rely upon the additional excerpts), judgment vacated based on action of defendant on appeal, 107 USPQ2d 1626 (TTAB 2013); Wear-Guard Corp. v. Van Dyne-Crotty Inc., 18 USPQ2d 1804, 1806 n.2 (TTAB 1990) (adverse party failed to show how portions submitted were misleading), aff’d, 17 USPQ2d 1866 (Fed. Cir. 1991); Marion Laboratories Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215 (TTAB 1988) (Board refused to consider pages of a deposition relied on by applicant in its brief since they were not relied on by opposer and not properly made of record by applicant and since opposer objected thereto); First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1631, n.5 (TTAB 1988) (where applicant submitted entire deposition of its president in response to opposer’s partial submission, without identifying specific relevant testimony, Board refused to consider additional portions); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1447 n.6 (TTAB 1986) (pages of additional portions should be clearly marked); Chesebrough-Pond's Inc. v. Soulful Days, Inc., 228 USPQ 954, 955 n.4 (TTAB 1985) (Board refused to consider additional exhibits since they did not serve to correct misimpression engendered by those of record); Dynamark Corp. v. Weed Eaters, Inc., 207 USPQ 1026, 1028 n.2 (TTAB 1980) (distinguishing mandatory filing of trial deposition in its entirety from discovery deposition where only the portion or portions which are properly introduced are of record); Johnson Publishing Co. v. Cavin & Tubiana OHG, 196 USPQ 383, 384 n.5 (TTAB 1977).

 5.   37 C.F.R. § 2.120(k)(3)(i). See BASF Wyandotte Corp. v. Polychrome Corp., 586 F.2d 238, 200 USPQ 20, 21 (CCPA 1978) (mere presence of discovery responses in the file does not make them of record without a notice of reliance); Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009); Marion Laboratories Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215 (TTAB 1988); Fischer GmbH. v. Molnar & Co., 203 USPQ 861 (TTAB 1979); Ethicon, Inc. v. American Cyanamid Co., 192 USPQ 647 (TTAB 1976); Chemetron Corp. v. Self-Organizing Systems, Inc., 166 USPQ 495, 496 n.2 (TTAB 1970) (discovery depositions not in evidence since notice of reliance not filed); American Skein & Foundry Co. v. Stein, 165 USPQ 85, 85 (TTAB 1970) (discovery deposition inadmissible where it was timely filed but not accompanied by notice of reliance).

 6.   See 37 C.F.R § 2.122(g). Effective January 14, 2017, the Board added new subsection (g) to 37 C.F.R. § 2.122 detailing the requirements for admission of evidence by notice of reliance. This amendment effectively overruled any prior case law stating that an offering party is not required to specify the general relevance of certain types of evidence submitted under notice of reliance such as discovery deposition excerpts and answers to interrogatories. See also 37 C.F.R. § 2.120(k)(3)(i).

 7.   See Exxon Corp. v. Motorgas Oil & Refining Corp., 219 USPQ 440, 441 n.4 (TTAB 1983) (vague reference to reliance on "only those portions of the deposition pertaining to the descriptive nature of the opposed mark" insufficient).

 8.   See Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 (TTAB 2001) ("[E]ach party has submitted discovery deposition transcripts in toto, i.e., has made no apparent effort to identify and introduce only those portions that are relevant to our determination of the pleaded claims. While not improper, it is more effective to file only those portions that are relevant and explain their relevancy in the notice of reliance") (citing Wear-Guard Corp. v. Van Dyne-Crotty Inc., 18 USPQ2d 1804, 1805 n.1 (TTAB 1990) and Marion Laboratories Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215, 1217 n.9 (TTAB 1988).

 9.   37 C.F.R. § 2.120(k)(7). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.122(a), consistent with § 2.120(k)(7), to add that when evidence has been made of record by one party in accordance with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. The amendments codify current Office practice."). See also American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1025 (TTAB 2011) (objection based on failure to indicate relevance to applicant's notice of reliance introducing opposer's archival websites sustained, but applicant may rely on copy of opposer's website made of record by opposer's deposition); Chesebrough-Pond's Inc. v. Soulful Days, Inc., 228 USPQ 954, 955 n.4 (TTAB 1985) (notice of reliance on deposition already made of record by the other party is superfluous); Andersen Corp. v. Therm-O-Shield International, Inc., 226 USPQ 431, 432 n.6 (TTAB 1985) (stipulation that deposition relied on by opposer may also be considered as part of applicant's case was unnecessary); Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984); Miles Laboratories, Inc. v. SmithKline Corp., 189 USPQ 290, 291 n.4 (TTAB 1975).

 10.   See Exxon Corp. v. Motorgas Oil & Refining Corp., 219 USPQ 440, 441 n.4 (TTAB 1983) (opposer’s notice of reliance as to deposition designation indefinite and opposer given time to clarify; response severely narrowed original designation to applicant’s prejudice and not permitted).

 11.   See, e.g., Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1848 n.6 (TTAB 2008) (because the parties stipulated to the use of discovery depositions as evidence, because petitioner did not object to respondent's reliance on respondent's answers to petitioner's written discovery, and because the discovery responses were used as exhibits during depositions, Board considered the responses as having been properly made of record); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1737 n.11 (TTAB 1990) (no objection to applicant's introduction of discovery deposition of officer of opposer's parent corporation); Maytag Co. v. Luskin's, Inc., 228 USPQ 747, 747 n.4 (TTAB 1986) (deposition taken during discovery but treated by both parties as a testimonial deposition introduced by deposed party treated as trial deposition taken prior to testimony period pursuant to stipulation); Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., 221 USPQ 354, 356 n.5 (TTAB 1984) (deposition of non-party treated as stipulated into the record since adverse party did not object and referred to it as being of record in its brief); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.7 (TTAB 1982) (discovery deposition of non-party treated by both parties as properly of record); Pamex Foods, Inc. v. Clover Club Foods Co., 201 USPQ 308, 310 n.3 (TTAB 1978) (considered of record where although opposer did not file a notice of reliance on discovery depositions, both parties referred to the depositions in their briefs); Plus Products v. Don Hall Laboratories, 191 USPQ 584, 585 n.2 (TTAB 1976) (plaintiff's notice of reliance filed during rebuttal testimony period improper where defendant introduced no evidence; but since defendant filed improper notice of reliance in response thereto and because neither party objected to the untimely evidence of the other and moreover addressed each other's evidence, all material was considered); Insta-Foam Products, Inc. v. Instapak Corp., 189 USPQ 793, 795 n.4 (TTAB 1976) (discovery deposition of non-party deemed stipulated into the record where there was no objection and both parties relied on the deposition).

 12.   See Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1861 (TTAB 2009) (failure to disclose non-party witness in initial disclosures or to supplement initial disclosures did not preclude introduction of discovery deposition at trial when deposition was adequately noticed, at least one of party’s principals attended deposition and attorney cross-examined witness).

 13.   37 C.F.R. § 2.120(k)(8). See Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 n.3 (TTAB 1999).

 14.   37 C.F.R. § 2.120(k)(6). Cf. West End Brewing Co. of Utica, N.Y. v. South Australian Brewing Co., 2 USPQ2d 1306, 1308 n.3 (TTAB 1987) (party may testify as to veracity of information contained in interrogatory answers or use such answers to refresh memory of witness during testimony deposition).