703.01(i)    Form of Deposition and Exhibits

37 C.F.R. § 2.123  Trial testimony in inter partes cases.

(f)(2) Certification and filing of deposition. If any of the foregoing requirements of paragraph (f)(1) of this section are waived, the certificate shall so state. The officer shall sign the certificate and affix thereto his or her seal of office, if he or she has such a seal. The party taking the deposition, or its attorney or other authorized representative, shall then promptly file the transcript and exhibits in electronic form using ESTTA. If the nature of an exhibit precludes electronic transmission via ESTTA, it shall be submitted by mail by the party taking the deposition, or its attorney or other authorized representative.

(g) Form of deposition.

  • (1) The pages of each deposition must be numbered consecutively, and the name of the witness plainly and conspicuously written at the top of each page. The deposition must be in written form. The questions propounded to each witness must be consecutively numbered unless the pages have numbered lines. Each question must be followed by its answer. The deposition transcript must be submitted in full-sized format (one page per sheet), not condensed (multiple pages per sheet).
  • (2) Exhibits must be numbered or lettered consecutively and each must be marked with the number and title of the case and the name of the party offering the exhibit. Entry and consideration may be refused to improperly marked exhibits.
  • (3) Each deposition must contain a word index and an index of the names of the witnesses, giving the pages where the words appear in the deposition and where witness examination and cross-examination begin, and an index of the exhibits, briefly describing their nature and giving the pages at which they are introduced and offered in evidence.

37 C.F.R. § 2.125(e)  Each transcript shall comply with § 2.123(g) with respect to arrangement, indexing and form.

37 C.F.R. § 2.126  Form of submissions to the Trademark Trial and Appeal Board.

  • (a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.
    • (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
    • (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.
  • (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. A paper submission, including exhibits and depositions, must meet the following requirements:
    • (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
    • (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
    • (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
    • (4) A paper submission must not be stapled or bound;
    • (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
    • (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.

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Please Note: As with all submissions to the Board, all forms of testimony and exhibits thereto must be filed via ESTTA except if ESTTA is unavailable due to technical problems, or under extraordinary circumstances. [ Note 1.] Although the USPTO has not specified requirements for the form of exhibits attached to affidavit or declaration testimony, parties are encouraged to use as a guide the form requirements set out for exhibits to depositions in 37 C.F.R. § 2.123(g)(2)  and the mailing requirements for certain exhibits set out in 37 C.F.R. § 2.123(f)(2). In addition, parties are reminded that documents submitted under affidavit or declaration but not identified therein cannot be considered as exhibits. [ Note 2.]

A deposition must be submitted to the Board in written form. [ Note 3.] The Board does not accept videotape depositions. [ Note 4.]

Parties must file depositions and exhibits thereto electronically through ESTTA unless ESTTA is unavailable due to technical problems, or under extraordinary circumstances. [ Note 5.] See TBMP § 106.03, TBMP § 106.09 and TBMP § 110 for further information about ESTTA. Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible. [ Note 6.] Exhibits pertaining to a paper submission must be filed on paper and must comply with the requirements for a paper submission. [ Note 7.]

The pages of a deposition must be numbered consecutively and the name of the witness must be written plainly and conspicuously at the top of each page. Unless the pages have numbered lines, the questions asked of each witness must be numbered consecutively. Each question must be followed by its answer. Deposition transcripts must be submitted through ESTTA in an electronic format (e.g., PDF) that displays the document in full-size with one page per sheet, rather than in condensed format with multiple pages per sheet [ Note 8.], and in at least 11-point type and double-spaced. [ Note 9.]

Deposition exhibits must be numbered or lettered consecutively, and each exhibit must be marked with the number and title of the case, and the name of the party who is offering the exhibit. The Board may not consider exhibits that are not properly marked. [ Note 10.]

Deposition transcripts also must contain a word index listing the pages where the words appear in the deposition, an index of the names of the witnesses listing the pages where witness examination and cross-examination begin, and an index of exhibits with a brief description of the exhibit and the pages where they are introduced and offered in evidence. [ Note 11.]

ESTTA exhibits may be in PDF, TIFF or TXT format. PDF is preferred, and should be used, if possible. Files should be formatted in letter size (8.5" x 11"), and should be rendered at 300 dpi resolution. ESTTA will accept either color or black and white PDF documents for uploading. A best practice for electronic exhibits submitted in PDF form is to use a separator page for each exhibit and to assign a bookmark to that page with an alpha-numeric designation (such as A, B,C or 1, 2, 3) for easy navigation and location of the exhibit.

Exhibits that are large, bulky, valuable, or breakable may be photographed or otherwise reproduced so that an appropriate paper or digitized image of the exhibits can be filed with the Board in lieu of the originals. The originals should, of course, be shown to every adverse party. Exhibits consisting of video or audio recordings of commercials, demonstrations, etc., may be transferred to an appropriate electronic format such as a DVD or CD for submission to the Board. [ Note 12.] USB drives cannot be accepted. When making a submission of an exhibit on CD or DVD, parties are advised to include in the accompanying ESTTA filing, a ‘‘placeholder’’ exhibit page to indicate the CD or DVD exhibit, and to mail the CD or DVD to the Board.

CD or DVD ("physical media") submissions should not be used for exhibits that can be submitted via ESTTA as image or text files. Physical media should only be used when filing via ESTTA is not possible.

Each party is responsible for ensuring that its submissions are clear and legible, with each page displayed so it can be read from top to bottom. [ Note 13.] Problems with image quality sometimes arise when poor quality documents are scanned or when the quality of legible documents is degraded in the scanning process; these problems typically arise in documents (or parts of documents) featuring graphical material, as opposed to text. Quality can sometimes be significantly degraded when color documents are scanned in black and white or when contrast settings used in scanning are not appropriate for graphical material. If legibility of material in color or grayscale is important, the party is urged to scan the file in color or adjust the scanner’s contrast settings to achieve acceptable results prior to filing. Users can check the quality of their submission in TTABVUE after filing. TTABVUE contains the same images that the Board will use in considering the submission. If the TTABVUE image is not of acceptable quality, the user should not assume that the Board will be able to view and consider it appropriately.

Confidential portions of the deposition and confidential exhibits must be submitted in accordance with 37 C.F.R. § 2.126(c). Confidential materials must be filed through ESTTA using the "CONFIDENTIAL" option or, where appropriate, under separate paper cover. For further information concerning the submission of confidential information, see TBMP § 703.01(p) and TBMP § 703.02(l).

In the unlikely event that a party must file a testimony deposition or exhibits on paper, the party is to follow the requirements set out in 37 C.F.R. § 2.126(b), reproduced at the beginning of this subsection.

For information concerning deposition objections based on errors or irregularities in form, see TBMP § 707.03(c).

NOTES:

 1.   See 37 C.F.R. § 2.126(a)  and 37 C.F.R. § 2.126(b).

 2.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office has not set out in the final rule any specific requirements regarding the form of exhibits. The Board and the parties have experience with such submissions in connection with summary judgment motions and ACR procedures as described in the TBMP at sections 528.05(b) and 702.04, which do not specify requirements for the form of exhibits, and this has not created problems. Notably, documents submitted under an affidavit or declaration but not identified therein cannot be considered as exhibits. The parties are encouraged to be guided by the form requirements set out for exhibits to depositions in § 2.123(g)(2) and the mailing requirements for certain exhibits set out in § 2.123(f)(2).").

 3.   37 C.F.R. § 2.123(g)(1). See USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047 n.3 (TTAB 2017) ("No matter how the cross-examination is conducted, transcripts must be submitted pursuant to Trademark Rules 2.123(f)(2) and (g).").

 4.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (Board considered but rejected suggestion of allowing videotape depositions: "The Board has never accepted video testimony …. The current online filing system is not able to accept video testimony however, this possibility may be considered in subsequent rulemakings as TTAB’s online systems are enhanced."); USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047 n.3 (TTAB 2017) (Board does not accept video testimony; transcripts must be submitted).

 5.   See 37 C.F.R. § 2.126(a), 37 C.F.R. § 2.126(a)(1), and 37 C.F.R. § 2.126(b).

 6.   37 C.F.R. § 2.126(a)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) ("The Office is adding new § 2.126(a)(2) to require that exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible. The amendment codifies the use of electronic filing."). See Moke America LLC v. Moke USA, LLC, 2020 USPQ2d 10400, at *1 n.6 (TTAB 2020) (the Board noted multiple blank pages of an exhibit attached to a testimony affidavit; party who introduces documents must ensure they are complete and legible), civil action filed, No. 3:20-cv-00400-MHL (E.D. Va. June 5, 2020); Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013) (citing Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) ("It is reasonable to assume that it is opposer’s responsibility to review the documents it submits as evidence to ensure that such submissions meet certain basic requirements, such as that they are legible….")), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1351-52 (TTAB 2014) (duty of the party making submissions to the Board via ESTTA to ensure that they have been entered into the trial record), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014). See also Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1563 n.7 (TTAB 2011) (opposer filed exhibits separately under a notice of reliance but the proper procedure is to attach exhibits to the copy of the transcript being filed), rev’d on other grounds, slip op. No. 11-3684 (D.N.J. August 29, 2017); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 n.9 (TTAB 2011) (same).

 7.   37 C.F.R. § 2.123(g)(2). See Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1563 n.7 (TTAB 2011) (opposer filed exhibits separately under a notice of reliance but the proper procedure is to attach exhibits to the copy of the transcript being filed), rev’d on other grounds, slip op. No. 11-3684 (D.N.J. August 29, 2017); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 n.9 (TTAB 2011) (same).

 8.   37 C.F.R. § 2.123(g)(1). See, e.g., Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 129 USPQ2d 1027, 1030 n.33 (TTAB 2018) (condensed version of transcript submitted), rev’d and remanded on other grounds, 965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir.), reh’g en banc denied, 981 F.3d 1083 (2020), cert. denied, 142 S. Ct. 82 (2021).

 9.   37 C.F.R. § 2.126(a)(1).

 10.   37 C.F.R. § 2.123(g)(2). See AT&T Mobility LLC v. Thomann, 2020 USPQ2d 53785, at *12 (TTAB 2020) (due to anticipated voluminous record, parties directed to bookmark any exhibits intended to be submitted in PDF form and to identify the exhibits consecutively in the bookmarks "by an alpha-numeric designation …such as A,B,C, etc. or 1,2,3, etc."). Cf. Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1384 (TTAB 2000) (these requirements are for the convenience of the Board; improperly marked exhibits considered); Pass & Seymour, Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984) (the Board has discretion to consider improperly marked exhibits).

 11.   37 C.F.R. § 2.123(g)(3).

 12.   See Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *3 n.4 (TTAB 2020) (a party that wishes to submit audio or video files must record the files on an appropriate medium such as CD-ROM or DVD and physically file it with the Board); Pierce-Arrow Society v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *1 n.8 (TTAB 2019) (Board considered video documentary submitted on CD-ROM); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1654-55 (TTAB 2014) (parties may not override Trademark Rule 2.126 provisions for form of submissions by agreement; however, video and audio recordings of evidence such as commercials may be submitted on CD-ROM), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016).

 13.   See 37 C.F.R. § 2.126(a)(2)  and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) ("The Office is adding new § 2.126(a)(2) to require that exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible. The amendment codifies the use of electronic filing."). See also Moke America LLC v. Moke USA, LLC, 2020 USPQ2d 10400, at *1 n.6 (TTAB 2020) (the Board noted multiple blank pages of an exhibit attached to a testimony affidavit; party who introduces documents must ensure they are complete and legible), appeal filed, No. 3:20-cv-00400-MHL (E.D. Va. June 5, 2020); Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013) (citing Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) ("It is reasonable to assume that it is opposer’s responsibility to review the documents it submits as evidence to ensure that such submissions meet certain basic requirements, such as that they are legible….")), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1351-52 (TTAB 2014) (duty of the party making submissions to the Board via ESTTA to ensure that they have been entered into the trial record), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014).