520 Motion to Take Foreign Deposition Orally
37 C.F.R. § 2.120(c)(1) The discovery deposition of a natural person residing in a foreign country who is a party or who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, shall, if taken in a foreign country, be taken in the manner prescribed by §2.124 unless the Trademark Trial and Appeal Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate.
37 C.F.R. § 2.123(a)(2) Testimony taken in a foreign country shall be taken: by deposition upon written questions as provided by § 2.124, unless the Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate; or by affidavit or declaration, subject to the right of any adverse party to elect to take and bear the expense of cross-examination by written questions of that witness. …
Ordinarily, the discovery deposition of a natural person who resides in a foreign country, and who is a party or who, at the time set for the taking of the deposition, is 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, must, if taken in a foreign country, be taken upon written questions in the manner described in 37 C.F.R. § 2.124. [ Note 1.] See also TBMP § 404.03(b). Moreover, the Board will not order a natural person residing in a foreign country to come to the United States for the taking of a discovery deposition. [ Note 2.] See TBMP § 404.03(b).
However, the parties may stipulate, or the Board, upon motion for good cause, may order, that the discovery deposition, when taken in a foreign country, may be taken by oral examination provided that the taking of said deposition complies with Convention on the Taking of Evidence Abroad in Civil or Commercial Matters ("Hague Convention") if the foreign country is a signatory thereto. See TBMP § 404.03(b). The Board will also, upon a showing of good cause, permit the deposition to be taken by telephone or other remote means pursuant to Fed. R. Civ. P. 30(b)(4) [ Note 3.], so long as the deposition complies with the procedures set forth in the Hague Convention and local laws.
The Hague Convention provides two procedures through which parties to a proceeding in one country may obtain evidence from a witness in another: (1) by letter of request (or a letter rogatory) sent to the contracting state’s Central Authority (Chapter I of the Hague Convention), or (2) by taking evidence through diplomatic officers and consular agents of the requesting country or through a commissioner appointed by a court of the foreign state where the parties seek the evidence (Chapter II). [ Note 4.]
A discovery deposition taken in a foreign country must be taken upon written questions in the manner described in 37 C.F.R. § 2.124, unless the Board, upon motion for good cause, orders, or the parties stipulate, that the deposition be taken by oral examination, which is to be in compliance with local laws. Trial testimony in a foreign country may be taken either (1) upon written questions in the manner described in 37 C.F.R. § 2.124, unless the Board, upon motion for good cause, orders, or the parties stipulate, that the deposition be taken by oral examination (which is to be in compliance with local laws), or (2) by affidavit or declaration, subject to the right of any adverse party to elect to take and bear the expense of cross-examination upon written questions of that witness. [ Note 5.]
In determining whether good cause exists for a motion to take a foreign deposition orally, the Board weighs the equities, including the advantages of an oral deposition and any financial hardship that the nonmoving party might suffer if the deposition were taken orally in the foreign country. [ Note 6.] See TBMP § 521 (Motion to Quash) and TBMP § 531 (Motion that Deposition Upon Written Questions Be Taken Orally).
NOTES:
1. 37 C.F.R. § 2.120(c)(1). Cf. Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *2-3 (TTAB 2019) (witness located in the United States whose testimony was submitted by affidavit or declaration under Trademark Rule 2.123(a)(1) may only be cross-examined orally and not by written questions).
2. See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998). See also Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437, 85 USPQ2d 1385, 1391 (4th Cir. 2007) (a district court could issue a subpoena for the deposition of a foreign party in the United States in connection with a Board case), cert. denied, 128 S. Ct. 2508 (2008).
3. Hewlett-Packard Co. v. Healthcare Personnel, Inc., 21 USPQ2d 1552, 1552-53 (TTAB 1991).
4. See 37 C.F.R. § 2.120(c)(1); Orion Group Inc. v. Orion Ins. Co. P.L.C., 12 USPQ2d 1923, 1925-26 (TTAB 1989) (good cause to take oral deposition of witness in England); Jonergin Co. v. Jonergin Vermont Inc., 222 USPQ 337, 340 (Comm’r 1983) (stipulation to take oral deposition in Canada).
5. 37 C.F.R. § 2.123(a)(2). See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *1-2 (TTAB 2019) (motion to allow oral cross-examination of foreign witness who provided direct testimony by declaration denied); Jain v. Ramparts, 49 USPQ2d 1429, 1431 (TTAB 1998).
6. See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998) (discovery depositions of foreign-resident witnesses may be taken only by way of written questions, unless the parties stipulate otherwise or unless the Board, upon motion for good cause shown, orders that the deposition be taken orally in the foreign country); Orion Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923, 1925-26 (TTAB 1989) (good cause found in view of circumstances and since fares to England were not that much greater than fares within the U.S. and no translation was required). Cf. Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990) (applicant would be prejudiced by rebuttal testimonial deposition on written questions of opposer’s survey expert who was present in U.S.), corrected, 19 USPQ2d 1479 (TTAB 1990).