529 Motion to Offer Discovery Deposition of Self or Nonparty
37 C.F.R. § 2.120(k) Use of discovery deposition, answer to interrogatory, admission or written disclosure.
- (1) The discovery deposition of a party or of anyone who at the time of taking the deposition was an officer, director or managing agent of a party, or a person designated by a party pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, may be offered in evidence by an adverse party.
- (2) Except as provided in paragraph (k)(1) of this section, the discovery deposition of a witness, whether or not a party, shall not be offered in evidence unless the person whose deposition was taken is, during the testimony period of the party offering the deposition, dead; or out of the United States (unless it appears that the absence of the witness was procured by the party offering the deposition); or unable to testify because of age, illness, infirmity, or imprisonment; or cannot be served with a subpoena to compel attendance at a testimonial deposition; or there is a stipulation by the parties; or upon a showing that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used. The use of a discovery deposition by any party under this paragraph will be allowed only by stipulation of the parties approved by the Trademark Trial and Appeal Board, or by order of the Board on motion, which shall be filed when the party makes its pretrial disclosures, unless the motion is based upon a claim that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used, even though such deadline has passed, in which case the motion shall be filed promptly after the circumstances claimed to justify use of the deposition became known.
Ordinarily, the discovery deposition of a party or of anyone who, at the time of taking the deposition, was an officer, director, or managing agent of a party, or a person designated by a party pursuant to Fed. R. Civ. P. 30(b)(6) or Fed. R. Civ. P. 31(a)(4), may be offered in evidence only by an adverse party; a party may not, in the first instance, offer in evidence a discovery deposition taken of itself or of its officer, director, managing agent, etc. by an adverse party, except by stipulation of the parties approved by the Board, or by order of the Board on motion. Similarly, no party may offer into evidence the discovery deposition of a nonparty witness, except by stipulation of the parties approved by the Board, or by order of the Board on motion. [ Note 1.] See TBMP § 704.09.
A motion for leave to offer in evidence a discovery deposition taken by an adverse party of the moving party itself (or of an officer, director, managing agent, etc., of the moving party), or the discovery deposition of a nonparty witness, must show that:
- (1) The person whose deposition was taken is, during the testimony period of the party offering the deposition, dead; or out of the United States (unless it appears that the absence of the witness was procured by the party offering the deposition) [ Note 2.]; or unable to testify because of age, illness, infirmity, or imprisonment; or cannot be served with a subpoena to compel attendance at a testimonial deposition; or
- (2) Such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used. [ Note 3.]
A motion based on one of the first grounds listed above must be filed when a party makes its pretrial disclosures. A motion based on the second ground must be filed promptly after the circumstances claimed to justify use of the deposition become known. [ Note 4.]
NOTES:
1. 37 C.F.R. § 2.120(k)(2). See Azalea Health Innovations, Inc. v. Rural Health Care, Inc., 125 USPQ2d 1236, 1240 (TTAB 2017) (granting motion to strike discovery deposition transcript of nonparties submitted under notice of reliance because discovery depositions may only be offered into evidence by stipulation or by order of the Board granting an appropriate motion seeking approval of use of the discovery depositions); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1425 n.21 (TTAB 2014) (discovery depositions of opposers’ own officers submitted by parties’ stipulation); McDonald's Corp. v. McSweet, LLC, 112 USPQ2d 1268, 1274 n.5 (TTAB 2014) (parties stipulated to discovery depositions of nonparty witnesses as testimony. Cf. 37 C.F.R. § 2.120(k)(4) (fairness exception provides that if only part of a discovery deposition is made of record by a party, an adverse party may introduce any other part of the deposition which should be considered so as to make not misleading what was offered by the submitting party).
2. See Galaxy Metal Gear Inc. v. Direct Access Technology, Inc., 91 USPQ2d 1859, 1862 (TTAB 2009) (discovery deposition of foreign nonparty witness admissible at trial given that witness lives outside United States and does not plan to be present during trial); Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1426 (TTAB 1993) (opposer established that one third-party witness was out of the country during its testimony period).
3. See Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1426 (TTAB 1993) (opposer established that one third-party witness was out of the country during its testimony period but failed to establish that another witness was a "party" as contemplated by 37 C.F.R. § 2.120(j)(1) [now 2.120(k)(1)], at the time of deposition or the existence of exceptional circumstances). Cf. Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1302 n.11 (TTAB 2000) (deposition of nonparty witness properly entered given the stipulation of the parties approved by the Board); Maytag Co. v. Luskin’s, Inc., 228 USPQ 747, 747 n.4 (TTAB 1986) (deposition of opposer’s nonparty witness taken by opposer during discovery treated as testimony deposition taken by stipulation of the parties prior to trial); Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., 221 USPQ 354, 356 n.5 (TTAB 1984) (discovery deposition of nonparty treated as stipulated in the record where applicant had not objected to opposer’s notice of reliance upon the deposition).