404.07 Discovery Depositions on Written Questions
Discovery depositions on written questions are taken in the manner prescribed by 37 C.F.R. § 2.124.
404.07(a) Depositions on Written Questions: Before Whom Taken
37 C.F.R. § 2.124(a) A deposition upon written questions may be taken before any person before whom depositions may be taken as provided by Rule 28 of the Federal Rules of Civil Procedure.
A deposition on written questions, like a deposition on oral examination, may be taken before the persons described in Fed. R. Civ. P. 28. [ Note 1.] TBMP § 404.04.
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404.07(b) Depositions on Written Questions: When Taken
37 C.F.R. § 2.120(a)(3) . . . Discovery depositions must be properly noticed and taken during the discovery period. * * * *
Discovery depositions must be both properly noticed and taken during the discovery period. [ Note 1.] TBMP § 404.01. Thus, it is recommended that a party, that desires to take a discovery deposition on written questions initiate the procedure early in its discovery period. The question whether to suspend discovery activities unrelated to a proposed discovery deposition on written questions, or to allow other discovery activities to proceed, is a matter left to the Board’s exercise of its discretion to schedule matters before it. [ Note 2.]
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2. Cf. 37 C.F.R. § 2.124(d)(2) (Board "shall" suspend for testimonial deposition on written questions).
404.07(c) Depositions on Written Questions: Place of Deposition
For information concerning the place where a discovery deposition on written questions is taken, see TBMP § 404.03.
404.07(d) Depositions on Written Questions: Notice of Deposition
37 C.F.R. § 2.124(b)(2) A party desiring to take a discovery deposition upon written questions 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. The notice shall state the name and address, if known, of the person whose deposition is to be taken. If the name of the person is not known, a general description sufficient to identify the witness or the particular class or group to which he or she belongs shall be stated in the notice, and the party from whom the discovery deposition is to be taken shall designate one or more persons to be deposed in the same manner as is provided by Rule 30(b)(6) of the Federal Rules of Civil Procedure.
37 C.F.R. § 2.124(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.
37 C.F.R. § 2.124(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. * * * *
37 C.F.R. § 2.124(d)(3) Service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).
A party that desires to take a discovery deposition on written questions must serve notice thereof on each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board. [ Note 1.]
The notice must state the name and address, if known, of the person whose deposition is to be taken. If the name of the person is not known, a general description sufficient to identify the person is to be provided so the responding party can designate one or more persons to be deposed. The notice must also be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken. [ Note 2.] Copies of the notice served on adverse parties must be accompanied by the written questions to be propounded on behalf of the deposing party. [ Note 3.]
For further information concerning notices of deposition in general, see TBMP § 404.05.
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404.07(e) Depositions on Written Questions: Examination of Witness
37 C.F.R. § 2.124(d)(1) . . . 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.
37 C.F.R. § 2.124(d)(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. * * * *
37 C.F.R.§ 2.124(d)(3) Service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).
37 C.F.R. § 2.124(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.
Within 20 days from the date of service of the notice in accordance with 37 C.F.R. § 2.119(b), [ Note 1.] any adverse party may serve cross questions on the deposing party. A party that serves cross questions on the deposing party must also serve copies thereof on every other adverse party. Within 10 days from the date of service of the cross questions in accordance with 37 C.F.R. § 2.119(b), the deposing party may serve redirect questions on every adverse party. Within 10 days from the date of service of the redirect questions in accordance with 37 C.F.R. § 2.119(b), any party that served cross questions may serve recross questions on the deposing party. A party which serves recross questions on the deposing party must also serve copies thereof on every other adverse party. [ Note 2.]
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 in accordance with 37 C.F.R. § 2.119(b). The substitute questions must also be served on every other adverse party. [ Note 3.]
As all discovery depositions must be completed within the discovery period, including depositions on written questions, 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 to allow for the orderly completion of the depositions on written questions. [ Note 4.]
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 5.] Please Note: There is no longer an additional five days to act under 37 C.F.R. 2.119(c) when service is made by first-class mail, Priority Mail Express®, or overnight courier. [ Note 6.]
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2. 37 C.F.R. § 2.124(d)(1). See Nahshin v. Product Source International LLC, 107 USPQ2d 1257, 1259 (TTAB 2013) (discussing the procedure for deposition on written questions under 37 C.F.R. § 2.124(d)); Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979).
3. 37 C.F.R. § 2.124(d)(1). See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990).
4. See 37 C.F.R. § 2.124(d)(2) regarding suspension of proceedings for testimonial depositions on written questions.
6. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).
404.07(f) Depositions on Written Questions: Objections
37 C.F.R. § 2.124(d)(1) . . . 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.
37 C.F.R. § 2.124(d)(3) Service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).
37 C.F.R. § 2.124(g) Objections to questions and answers in depositions upon written questions may be considered at final hearing.
Written objections to questions propounded for a deposition on written questions may be served on the party that propounded the questions. Any party that serves written objections on a propounding party must also serve a copy of the objections on every other adverse party. [ Note 1.] For information regarding objections to testimony depositions on written questions, see TBMP § 703.02(k).
Objections to questions and answers in depositions on written questions, as in oral depositions, generally are considered by the Board (unless waived) at final hearing. [ Note 2.] If a party’s objections have been overcome by service of revised questions, the objecting party should file and serve notice of which objections no longer need be considered by the Board. Further, objections not maintained in a brief at final hearing may be considered waived by the Board. See TBMP § 707.03(c) and TBMP § 707.04.
For further information concerning the raising of objections to discovery depositions, see TBMP § 404.08. For information concerning the raising of objections to a notice of reliance on a discovery deposition, see TBMP § 707.02 and TBMP § 532.
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2. 37 C.F.R. § 2.124(g); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990) (objections based on relevancy deferred until final hearing). See also Nahshin v. Product Source International LLC, 107 USPQ2d 1257, 1259 (TTAB 2013) (discussing objections on depositions on written questions under 37 C.F.R. § 2.124(d)(1)).
404.07(g) Depositions on Written Questions: Form of Deposition; Signature
37 C.F.R. § 2.124(e) . . . 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 before whom a deposition on written questions is taken shall record each answer immediately after the corresponding question. [ Note 1.]
For further information concerning the form of a deposition taken in an inter partes proceeding before the Board, see 37 C.F.R. § 2.123(g) and TBMP § 703.01(i). For information concerning signature of a deposition taken in an inter partes proceeding before the Board, see 37 C.F.R. § 2.123(e)(5), and TBMP § 703.01(j).
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404.07(h) Depositions on Written Questions: Certification of Deposition
37 C.F.R. § 2.124(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.
After the officer designated in the notice of deposition has taken a deposition on written questions, the officer must certify the transcript of the deposition. When the transcript has been certified, the officer shall mail the transcript and exhibits to the party that took the deposition. [ Note 1.] For further information concerning certification of a deposition taken in an inter partes proceeding before the Board, see TBMP § 703.01(k).
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404.07(i) Depositions on Written Questions: Service, Correction, and Making the Deposition of Record
37 C.F.R. § 2.124(f) The party who took the deposition shall promptly serve a copy of the transcript, copies of documentary exhibits, and duplicates or photographs of physical exhibits on every adverse party. It is the responsibility of the party who takes the deposition to assure that the transcript is correct (see § 2.125(c)). If the deposition is a discovery deposition, it may be made of record as provided by § 2.120(k). If the deposition is a testimonial deposition, the original, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be filed promptly with the Trademark Trial and Appeal Board.
The party that took the deposition on written questions must promptly serve a copy of the transcript, with exhibits, on every adverse party. [ Note 1.] See also TBMP § 703.01(m) regarding service of a testimony deposition transcript. The party that took the deposition must also assure that the transcript is correct. [ Note 2.] For information concerning correction of errors in a testimony deposition taken in a Board inter partes proceeding, see TBMP § 703.01(n).
If the discovery deposition is to be made of record, the same procedures provided by 37 C.F.R. § 2.120(k) are to be followed. [ Note 3.] With respect to making a discovery deposition of record, see TBMP § 704.09.
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2. 37 C.F.R. § 2.124(f) and 37 C.F.R. § 2.125(b). Cf. Hollywood Casino LLC v. Chateau Celeste, Inc., 116 USPQ2d 1988. 1994-97 (TTAB 2015) (while a party may submit an errata sheet correcting typographical errors to a deposition transcript, such party may not submit or rely upon an errata sheet which substantively changes the deposition testimony).
3. 37 C.F.R. § 2.124(f). See also Fischer GmbH v. Molnar & Co., Inc., 203 USPQ 861, 866 n.6 (TTAB 1979).
404.07(j) Deposition on Written Questions: Utility
A deposition on written questions is a cumbersome, time-consuming procedure. It requires that cross questions, redirect questions, recross questions, and objections all be framed and served before the questions on direct examination have even been answered. Moreover, it deprives an adverse party of face-to-face confrontation and the opportunity to ask follow-up questions based on answers to previous questions. [ Note 1.] For information regarding the utility of taking testimony depositions on written questions, see TBMP § 703.02(m).
Nevertheless, it has some utility. It may be the only means by which a deposition may be taken in a foreign country. Moreover, the deposition on written questions may be less expensive than the deposition on oral examination, and is usually more convenient for the witness.
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1. 37 C.F.R. § 2.124(d)(1); Orion Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923, 1926 (TTAB 1989). See also Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990), corrected at 19 USPQ2d 1479; Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980); Fischer GmbH v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979).