703.01(f)(1) In General
Normally, during a party’s testimony period, testimony depositions are taken, by or on behalf of the party, of the party himself or herself (if the party is an individual), or of an official or employee of the party, or of some other witness who is willing to appear voluntarily to testify on behalf of the party. These testimony depositions may be taken, at least in the United States, on notice alone.
However, where a party wishes to take the testimony of an adverse party or non-party, or an official or employee of an adverse party or non-party, and the proposed witness is not willing to appear voluntarily to testify, the deposition may not be taken on notice alone. Rather, the party that wishes to take the deposition must take steps, discussed below, to compel the attendance of the witness. [ Note 1.] If the witness resides in a foreign country, the party may not be able to take the deposition. See TBMP § 703.01(f)(2) (securing attendance of unwilling witness residing in United States), TBMP § 703.01(f)(3) (securing attendance of unwilling witness residing in foreign country), and TBMP § 703.02 (testimony depositions on written questions).
NOTES:
1. See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 n.12 (TTAB 2019) (to the extent the nonparty employee witnesses located outside the United States are not willing to appear voluntarily to testify during respondent’s testimony period, the deposition may not be taken on notice alone, but respondent must take steps to compel their attendance); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990) (after unsuccessfully attempting to take testimony deposition on written questions of adverse party’s officer on notice alone, opposer obtained subpoena from U.S. district court ordering appearance); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 (TTAB 1976) (it is incumbent on deposing party to have a subpoena issued from the U.S. district court where witness is located and have same properly served on witness with sufficient time to apprise him that he is under order to appear). See also Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 55 n.7 (TTAB 1983) (no adverse inference can be drawn from adverse party’s failure to appear and produce requested documents at testimony deposition where party attempted to secure attendance by notice alone), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984).