411.04    Discovery Depositions

If a party fails to designate a person pursuant to Fed. R. Civ. P. 30(b)(6) or Fed. R. Civ. P. 31(a)(4), or if a party or such designated person, or an officer, director, or managing agent of a party, fails to attend a discovery deposition, or fails to answer any question propounded in a discovery deposition, the party seeking discovery may file a motion with the Board for an order to compel a designation, or attendance at a deposition, or an answer. [ Note 1.] A motion to compel discovery must be filed before the day of the deadline for pretrial disclosures for the first testimony period as originally set or as reset. [ Note 2.] For information concerning motions to compel, see TBMP § 523. Because the Board does not have jurisdiction over a non-party witness, a motion to compel is not available as a remedy when such a witness refuses a request for deposition. However, if the deposing party has secured the non-party’s attendance by obtaining a subpoena from an appropriate United States district court, see 35 U.S.C. § 24, the subpoena may be enforced by returning to the issuing court. See TBMP § 404.03(a)(2). Similarly, if a non-party witness has appeared voluntarily for a deposition, but refuses to answer particular questions propounded during the deposition, the deposing party must seek relief from an appropriate United States district court and may not file a motion to compel with the Board.

A discovery deposition is taken out of the presence of the Board. Therefore, if the witness being deposed, or the attorney for the witness, believes a question is improper, an objection may be stated, but the question normally should be answered subject to the stated objection. However, if a witness being deposed objects to, and refuses to answer, or is instructed by counsel not to answer, a particular question, and if the deposition is being taken pursuant to a subpoena, the propounding party may attempt to obtain an immediate ruling on the propriety of the objection by adjourning the deposition and applying, under 35 U.S.C. § 24, to the federal district court in the jurisdiction where the deposition is being taken, for an order compelling the witness to answer. [ Note 3.] See TBMP § 404.08(c). In the absence of a court order the propounding party’s only alternative, if it wishes to compel a response, is to complete the deposition and then file a motion to compel with the Board. [ Note 4.]

NOTES:

 1.   37 C.F.R. § 2.120(f)(1). Cf. Fed. R. Civ. P. 37(a).

37 C.F.R §2.120(f)(1). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE; CLARIFICATION, 82 Fed. Reg. 33804 (July 21, 2017).

3. See Ferro Corp. v. SCM Corp., 219 USPQ 346, 351 (TTAB 1983); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974).

4. 37 C.F.R. § 2.120(f)(1). See Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974) (if a party fails or refuses to answer any proper question during the taking of a discovery deposition, the party may file a motion to compel with the Board).