707.03(b) On Procedural Grounds
707.03(b)(1) On Ground of Untimeliness
A party may not take a testimony deposition, or execute or submit a testimony affidavit or declaration, outside of its assigned testimony period, except by stipulation of the parties approved by the Board, or on motion granted by the Board, or by order of the Board. [ Note 1.] See TBMP § 701.
When there is no such approved stipulation, granted motion or Board order, and a testimony deposition is taken or a testimony declaration or affidavit is executed or submitted after the close of the deposing or offering party’s testimony period, an adverse party may file a motion to strike the testimony, in its entirety, as untimely. See TBMP § 533.01. Alternatively, an adverse party may raise this ground for objection in its brief on the case or in an appendix or separate statement of objections attached to the brief. [ Note 2.] See TBMP § 801.03. Cf. TBMP § 707.02(b)(1).
On the other hand, when a testimony deposition is noticed for a date prior to the opening of the deposing party’s testimony period, or affidavit or declaration testimony is executed or submitted prior to the opening of the submitting party’s testimony period, an adverse party that fails to promptly object to the testimony on the ground of untimeliness may be found to have waived this ground for objection, because the premature scheduling or submission of testimony is an error which can be corrected on seasonable objection. [ Note 3.]
NOTES:
1. 37 C.F.R. § 2.121(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.121(a) to clarify that evidence must be presented during a party’s testimony period. … These amendments codify current Office practice."); Spotify AB v. U.S. Software Inc., 2022 USPQ2d 37, at *5 (TTAB 2022) (objection sustained to testimony declaration executed more than one year prior to trial); Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 71345, at *2 (TTAB 2020) ("a party may introduce testimony and evidence only during its assigned testimony period"); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *2 n.3 (TTAB 2020) (parties stipulated that any declaration or affidavit shall be admissible even though executed before and not during the testimony period of a party). See also M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd., 2019 USPQ2d 149090, at *2 n.11 (TTAB 2019) (substitute testimony declaration was untimely filed outside of opposer’s testimony period); Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *4 (TTAB 2019) (three year old declaration from application file was not of record as trial testimony as it was not executed (taken) during petitioner’s testimony period), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019). Cf. International Dairy Foods Association v. Interprofession du Gruyère, 2020 USPQ2d 10892, at *3 n.12 (TTAB 2020) (declarations signed prior to testimony period considered because applicants did not object to them as untimely and treated them as part of the record), aff’d, ___ F. Supp. 3d ___, 2021 WL 6286234 (E.D. Va. Dec. 15, 2021), appeal docketed, No. 22-1041 (4th Cir. Jan. 11, 2022).
2. 37 C.F.R. § 2.128(b). Effective January 14, 2017, 37 C.F.R. § 2.128(b) was amended to clarify and codify current practice that evidentiary objections may be set out in a separate appendix that does not count against the page limit for a brief. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69967 (October 7, 2016).
3. See International Dairy Foods Association v. Interprofession du Gruyère, 2020 USPQ2d 10892, at *3 n.12 (TTAB 2020) (declarations signed prior to testimony period and submitted by opposers as trial testimony considered because applicants did not object to them as untimely and treated them as part of the record by raising substantive objections against them) aff’d, ___ F. Supp. 3d ___, 2021 WL 6286234 (E.D. Va. Dec. 15, 2021), appeal docketed, No. 22-1041 (4th Cir. Jan. 11, 2022); Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (objection to timeliness of testimony deposition taken two days before period opened, but raised for the first time in brief, waived).
707.03(b)(2) On Ground of Improper or Inadequate Notice
37 C.F.R. § 2.123(c) Notice of examination of witnesses. Before the oral depositions of witnesses shall be taken by a party, due notice in writing shall be given to the adverse party or parties, as provided in § 2.119(b), of the time when and place where the depositions will be taken, of the cause or matter in which they are to be used, and the name and address of each witness to be examined. Depositions may be noticed for any reasonable time and place in the United States. A deposition may not be noticed for a place in a foreign country except as provided in paragraph (a)(2) of this section. No party shall take depositions in more than one place at the same time, nor so nearly at the same time that reasonable opportunity for travel from one place of examination to the other is not available. When a party elects to take oral cross-examination of an affiant or declarant, the notice of such election must be served on the adverse party and a copy filed with the Board within 20 days from the date of service of the affidavit or declaration and completed within 30 days from the date of service of the notice of election. Upon motion for good cause by any party, or upon its own initiative, the Board may extend the periods for electing and taking oral cross-examination. When such election has been made but cannot be completed within that testimony period, the Board, after the close of that testimony period, shall suspend or reschedule other proceedings in the matter to allow for the orderly completion of the oral cross-examination(s).
37 C.F.R. § 2.123(e) Examination of witnesses.
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- (3) If pretrial disclosures or the notice of examination of witnesses served pursuant to paragraph (c) of this section are improper or inadequate with respect to any witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances.
- (i) A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with § 2.121(e).
- (ii) A motion to strike the testimony of a witness for lack of proper or adequate notice of examination must request the exclusion of the entire testimony of that witness and not only a part of that testimony.
Before testimony depositions on oral examination may be taken by a party, the party must give every adverse party due notice in writing of the time when and place where the depositions will be taken, the cause or matter in which they are to be used, and the name and address of each witness to be deposed. [ Note 1.] See TBMP § 703.01(e).
When a party elects to take oral cross-examination of an affiant or declarant, the notice of such election must be served on the adverse party and a copy filed with the Board within 20 days from the date of service of the affidavit or declaration and completed within 30 days from the date of service of the notice of election. [ Note 2.] The Board may extend the periods for electing and taking oral cross-examination and, when necessary, will suspend or reschedule the proceeding to allow the parties to orderly complete oral cross-examination(s) that cannot be completed within a testimony period. [ Note 3.] See TBMP § 703.01(e).
If the notice of examination of witnesses served by a party is improper or inadequate with respect to any witness, such as it does not give due (i.e., reasonable) notice, or does not identify a witness whose deposition is taken, an adverse party may cross-examine the witness under protest while reserving the right to object to the receipt of the testimony in evidence. However, promptly after the deposition is completed, the adverse party, if it wishes to preserve the objection, must move to strike the testimony from the record. [ Note 4.] See TBMP § 533.02.
A motion to strike testimony for improper or inadequate notice must request the exclusion of the entire deposition, not just a part thereof. The motion will be decided on the basis of all the relevant circumstances. [ Note 5.]
For further information concerning motions to strike testimony for improper or inadequate notice, see TBMP § 533.02.
NOTES:
1. 37 C.F.R. § 2.123(c). Cf. Fed. R. Civ. P. 30(b)(1).
2. 37 C.F.R. § 2.123(c). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is further amending § 2.123(c) to add that, when a party elects to take oral cross-examination of an affiant or declarant, the notice of such election must be served on the adverse party and a copy filed with the Board within 20 days from the date of service of the affidavit or declaration and completed within 30 days from the date of service of the notice of election.")
3. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is further amending § 2.123(c) to add that the Board may extend the periods for electing and taking oral cross-examination and, when necessary, shall suspend or reschedule proceedings in the matter to allow for the orderly completion of oral cross-examination(s) that cannot be completed within a testimony period.").
4. 37 C.F.R. § 2.123(e)(3). See Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1291 (TTAB 1986) (while respondent’s objection to notice was raised at the deposition, respondent failed to preserve the objection by moving to strike testimony promptly thereafter). Cf. Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *2 n.9 (TTAB 2019) (in view of denial of motion to take oral cross-examination of foreign declarants, notice of election of oral cross-examination of no effect).
707.03(b)(3) On Ground of Failure to Disclose
37 C.F.R. § 2.121(e) A party need not disclose, prior to its testimony period, any notices of reliance it intends to file during its testimony period. However, no later than fifteen days prior to the opening of each testimony period, or on such alternate schedule as may be provided by order of the Board, the party scheduled to present evidence must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises, general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness. … If a party does not plan to take testimony from any witnesses, it must so state in its pretrial disclosure. … When a party fails to make required pretrial disclosures, any adverse party or parties may have remedy by way of a motion to the Board to delay or reset any subsequent pretrial disclosure deadlines and/or testimony periods. A party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. When testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike …
37 C.F.R. § 2.123(e) Examination of witnesses.
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- (3) If pretrial disclosures or the notice of examination of witnesses served pursuant to paragraph (c) of this section are improper or inadequate with respect to any witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances.
- (i) A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with § 2.121(e). …
A party may object to improper or inadequate pretrial or rebuttal disclosures and may move to strike the testimony of a witness for lack of proper pretrial or rebuttal disclosure. [ Note 1.]
If pretrial disclosures or the notice of examination of witnesses served pursuant to 37 C.F.R. § 2.123(c) are improper or inadequate with respect to any witness, an adverse party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. [ Note 2.] The adverse party may also cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, must move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances. [ Note 3.] A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with 37 C.F.R. § 2.121(e). [ Note 4.]
When testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial or rebuttal disclosure, the remedy for any adverse party is the prompt filing of a motion to strike. [ Note 5.]
Failure to assert an objection in a timely manner may result in the objection being waived. [ Note 6.]
NOTES:
1. 37 C.F.R. § 2.121(e) and 37 C.F.R. § 2.123(e)(3). See also 37 C.F.R. § 2.118; Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623, 1628 (TTAB 2014) (expert witness testimony stricken after party failed to timely identify and disclose the witness), rev’d on other grounds, 84 F. Supp. 3d 490 (E.D. Va. 2015), vacated and remanded, 819 F.3d 697 (4th Cir. 2016), cert denied, 137 S. Ct. 1202 (2017), aff’d on remand, 338 F. Supp. 3d 1477 (E.D. Va. 2018), district court decision vacated and remanded, 2021 USPQ2d 126 (4th Cir. 2021) (Board decision upheld by 4th Circuit), petition for rehearing en banc filed, No. 18-2183, 18-2232 (4th Cir. March 2 , 2021); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009) (testimony stricken because identity of witness not disclosed prior to trial). Cf. Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *2-3 (TTAB 2020) (respondent’s motion to strike rebuttal witness for failure to disclose denied where petitioner substituted its legal assistant for its previously disclosed attorney for same authentication purpose); Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *7 (TTAB 2020) (objection that evidence was not adequately disclosed in pretrial disclosures overruled as untimely and waived when first raised in trial brief; objection is curable and should have been made via motion to strike promptly after testimony declaration and exhibits were filed); WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (opposer’s objection to applicant’s testimony declarations submitted as exhibits to notice of reliance overruled where applicant provided notice to opposer via pretrial disclosures about witnesses and the subject matter of their anticipated testimony, testimony declarations were timely served, and opposer had opportunity but chose not to cross-examine the witnesses); Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (denying opposer’s motion to strike pretrial disclosure of the identity of three witnesses where one witness had been identified in initial and supplemental initial disclosures and failure to disclose earlier the identities of the other two found substantially justified and harmless).
2. 37 C.F.R. § 2.121(e). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(e) to add that a party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. The amendment codifies current Office practice.").
4. 37 C.F.R. § 2.121(e) and 37 C.F.R. § 2.123(e)(3)(i). See Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1299 (TTAB 2015) (motion to strike the entirety of respondent’s testimony deposition on the basis that pretrial disclosures were untimely because sent to an incorrect address and attention of attorney no longer employed at the law firm granted in part and denied in part); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009) (failure to disclose testimony witness in initial disclosures considered as a relevant circumstance in determining whether to strike testimony deposition.). Cf. Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *2-3 (TTAB 2020) (respondent’s motion to strike rebuttal witness for failure to disclose denied where petitioner substituted its legal assistant for its previously disclosed attorney for same authentication purpose); Entravision Communications Corp. v. Liberman Television LLC, 113 USPQ2d 1526 (TTAB 2015) (motion to substitute expert witness and report granted, where prior disclosed witness unavailable).
5. 37 C.F.R. § 2.121(e). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(e) to add that when testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike…"). See Philanthropist.com, Inc. v. The General Conference Corp. of Seventh-Day Adventists, 2021 USPQ2d 643, at *5 Appendix B (TTAB 2021) (objection to testimony declaration and attached email exchange on the ground that the witness was not identified in rebuttal pretrial disclosures overruled; proper remedy is the prompt filing of a motion to strike); WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (opposer’s objection to applicant’s testimony declarations overruled where applicant provided notice to opposer via pretrial disclosures about witnesses and the subject matter of their anticipated testimony, testimony declarations were timely served, and opposer had opportunity but chose not to cross-examine the witnesses); Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (opposer’s motion to strike pretrial disclosure of the identity of three witnesses denied--no surprise where one witness had been identified in initial and supplemental initial disclosures, and failure to disclose in supplemental initial disclosures the identities of the other two found substantially justified and harmless when applicant ascertained the identities shortly before serving pretrial disclosures, but applicant had listed the subject matter of their testimony in initial disclosures, and the record showed that opposer was aware of the witnesses and the pertinent information covered in their testimony declarations).
6. See Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *7 (TTAB 2020) (objection that evidence was not adequately disclosed in pretrial disclosures overruled as untimely and waived when first raised in trial brief; objection is curable and should have been made via motion to strike promptly after testimony declaration and exhibits were filed); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927 (TTAB 2011) (objection on the basis that the witness had not been previously disclosed waived where not renewed in main brief and raised for first time in rebuttal brief), aff’d, 188 F. Supp. 3d 222 (D.D.C. 2016), aff’d, 743 F. App’x 457, 128 USPQ2d 1172 (D.C. Cir. 2018).