703.01(k)    Certification and Filing of Trial Testimony

37 C.F.R. § 2.123(f)  Certification and filing of deposition.

  • (1) The officer shall annex to the deposition his or her certificate showing:
    • (i) Due administration of the oath by the officer to the witness before the commencement of his or her deposition;
    • (ii) The name of the person by whom the deposition was taken down, and whether, if not taken down by the officer, it was taken down in his or her presence;
    • (iii) The presence or absence of the adverse party;
    • (iv) The place, day, and hour of commencing and taking the deposition;
    • (v) The fact that the officer was not disqualified as specified in Rule 28 of the Federal Rules of Civil Procedure.
  • (2) If any of the foregoing requirements in paragraph (f)(1) are waived, the certificate shall so state. The officer shall sign the certificate and affix thereto his or her seal of office, if he 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.

37 C.F.R. § 2.125  Filing and service of testimony.

  • (a) One copy of the declaration or affidavit prepared in accordance with § 2.123, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse party at the time the declaration or affidavit is submitted to the Trademark Trial and Appeal Board during the assigned testimony period.
  • (b) One copy of the transcript of each testimony deposition taken in accordance with § 2.123, or § 2.124 together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse party within thirty days after completion of the taking of that testimony. If the transcript with exhibits is not served on each adverse party within thirty days or within an extension of time for the purpose, any adverse party which was not served may have remedy by way of a motion to the Trademark Trial and Appeal Board to reset such adverse party’s testimony and/or briefing periods, as may be appropriate. If the deposing party fails to serve a copy of the transcript with exhibits on an adverse party after having been ordered to do so by the Board, the Board, in its discretion, may strike the deposition, or enter judgment as by default against the deposing party, or take any such other action as may be deemed appropriate.
  • * * * *
  • (d) One certified transcript and exhibits shall be filed with the Trademark Trial and Appeal Board. Notice of such filing shall be served on each adverse party and a copy of each notice shall be filed with the Board.

The certification and filing of a deposition are governed by 37 C.F.R. § 2.123(f). The certified transcript, with exhibits, must be filed promptly with the Board via ESTTA. [ Note 1.] See TBMP § 106 and TBMP § 110 for more information about using ESTTA. However, if the nature of the exhibit, such as CDs or DVDs, precludes electronic transmission via ESTTA, the party (or its attorney or other authorized representative) shall mail the exhibit to the Board at its mailing address, i.e., Trademark Trial and Appeal Board, U.S. Patent and Trademark Office, P.O. Box 1451, Alexandria, Virginia 22313-1451. [ Note 2.]

The Board interprets "promptly file," in 37 C.F.R. § 2.123(f)(2)  which concerns the filing of transcripts and exhibits, as meaning filed at any time prior to the submission of the case for final decision. Therefore, the Board will accept transcripts of testimony depositions filed at any time prior to the submission of the case for final decision. [ Note 3.] The submitting party should file the testimony deposition transcript with the Board under separate cover, under a notice of filing, rather than under notice of reliance. [ Note 4.] However, notice of the filing of the certified transcript, and accompanying exhibits, with the Board must be served on each adverse party. A copy of each such notice must also be filed with the Board. [ Note 5.] In addition, one copy of the deposition transcript, together with copies, duplicates, or photographs of the exhibits thereto, must be served on each adverse party within 30 days after completion of the taking of the testimony, or within an extension of time for the purpose. [ Note 6.]

The filing of an affidavit or declaration prepared in accordance with 37 C.F.R. § 2.123  is governed by 37 C.F.R. § 2.125(a). A party who takes testimony by affidavit or declaration must serve a copy of the declaration or affidavit along with copies of exhibits on each adverse party at the same time the party submits the declaration or affidavit to the Board during the party’s assigned testimony period. [ Note 7.] The submitting party should file the testimony affidavit or declaration with the Board under separate cover, rather than under notice of reliance. [ Note 8.]

For information concerning the service of trial testimony and the remedy that an adverse party may have if it is not timely served with a copy of the affidavit, declaration or deposition and exhibits, see TBMP § 703.01(m).

For information concerning submission of evidence by notice of reliance, see TBMP § 704.

NOTES:

 1.   See 37 C.F.R. § 2.123(f)(2)  and 37 C.F.R. § 2.125(d)  (formerly 37 C.F.R. § 2.125(c)).

Please Note: 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. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016).

 2.   See 37 C.F.R. § 2.123(f)(2). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("If the nature of an exhibit, such as CDs or DVDs, precludes electronic transmission via ESTTA, it shall be submitted by mail.").

 3.   See NOTICE OF FINAL RULEMAKING, 63 Fed. Reg. 48081 (September 9, 1998), and comments and responses published in the notice in regard to amendment of 37 C.F.R. § 2.123(f) and 37 C.F.R. § 2.125(c) (now 37 C.F.R. § 2.125(d)). See also Grote Industries, Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1201 (TTAB 2018) (copies of oral testimony transcripts may be filed with the Board at any time before the case is submitted for final decision), judgment rev’d and vacated by consent decree, No. 1:18-cv-00599 (W.D.N.Y. June 8, 2022); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (testimony must be taken during the offering party’s testimony period, but need not be submitted during the party’s testimony period; transcript must be served within thirty days after completion of the taking of that testimony); Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390, 1392 n.6 (TTAB 1991) (the wording "promptly filed" in an earlier version of 37 C.F.R. § 2.125(d)  (formerly 37 C.F.R. § 2.125(c)) was construed as meaning filed at any time prior to final hearing).

 4.   Compare 37 C.F.R. § 2.125(b)  with 37 C.F.R. § 2.122(e). See, e.g., Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (not appropriate to submit testimony under a notice of reliance); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2002) (testimony depositions are not filed by notice of reliance but instead are filed under cover of notice of filing which must also be served on each adverse party); Paramount Pictures Corp. v. Romulan Invasions, 7 USPQ2d 1897, 1898 n.2 (TTAB 1988); Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984) (notices of reliance on testimony depositions and exhibits introduced in connection with testimony depositions are unnecessary and superfluous); Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116, 1117 n.1 (TTAB 1982) (notice of reliance on exhibits introduced in connection with testimony superfluous). Cf. WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037, 1037-38 n.12 (TTAB 2018) (Board denied opposer’s motion to strike testimony declarations that had been filed and served as exhibits to applicant’s notice of reliance; materials listed normally filed under notice of reliance).

 5.   See 37 C.F.R. § 2.125(d)  (formerly 37 C.F.R. § 2.125(c)). See also Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2002) (testimony depositions are not filed by notice of reliance but instead are filed under cover of notice of filing which must also be served on each adverse party).

 6.   See 37 C.F.R. § 2.125(b)  (formerly 37 C.F.R. § 2.125(a)).

 7.   See 37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.125(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.125 to renumber paragraphs (a) through (e) as (b) through (f) and to add new § 2.125(a) to require that one copy of a declaration or affidavit prepared in accordance with § 2.123, with exhibits, shall be served on each adverse party at the time the declaration or affidavit is submitted to the Board during the assigned testimony period."). Cf. Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *1 n.2 (TTAB 2019) (motion to strike testimonial declarations for improper service denied because defect in service and any prejudice was remedied by additional notice of, as well as electronic links to, the testimonial declarations, and petitioner was already aware of and had the opportunity to review the declarations); WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (Board denied opposer’s motion to strike testimony declarations that had been filed and served as exhibits to applicant’s notice of reliance, as doing otherwise would elevate form over substance. "Although the better practice would have been for Applicant to file and serve separately copies of the [witnesses’] testimony declarations, instead of attaching them as exhibits to its notice of reliance, Applicant’s failure to do so is of no consequence.").

 8.   Compare 37 C.F.R. § 2.125(a)  with 37 C.F.R. § 2.122(e). See Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *2-3 (TTAB 2019) (opposer’s submission of testimonial declaration under a notice of reliance was unnecessary, and not the preferred approach, but harmless). Cf. WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (Board denied opposer’s motion to strike testimony declarations that had been filed and served as exhibits to applicant’s notice of reliance, as doing otherwise would elevate form over substance. "Although the better practice would have been for Applicant to file and serve separately copies of the [witnesses’] testimony declarations, instead of attaching them as exhibits to its notice of reliance, Applicant’s failure to do so is of no consequence.").