404.03 Place of Deposition; Oral or Written Deposition; Securing Attendance of Deponent
404.03(a) Person Residing in the United States – In General
37 C.F.R. § 2.120(b) Discovery deposition within the United States.
The deposition of a natural person shall be taken in the Federal judicial district where the person resides or is regularly employed or at any place on which the parties agree in writing* * * *
The deposition of a natural person shall be taken in the Federal judicial district where the person resides or is regularly employed or at any place on which the parties agree by stipulation. [ Note 1.] The deposition may be taken either orally, or on written questions in the manner described in 37 C.F.R. § 2.124. [ Note 2.]
For information on the taking of a discovery deposition on written questions, see TBMP § 404.07.
NOTES:
1. 37 C.F.R. § 2.120(b). See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998) (general rule in federal district court that a plaintiff is required to make itself available for examination in district where suit is brought does not apply in Board proceedings).
2. See Fed. R. Civ. P. 30 and 31.
404.03(a)(1) Person Residing in the United States – Party
If a proposed deponent residing in the United States is a party, or, 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, the deposition may be taken on notice alone. [ Note 1.] When such a proposed deponent fails to appear for a noticed deposition, the deposing party may seek to compel attendance by a motion to compel. See TBMP § 523.
For information concerning notices of deposition, see TBMP § 404.05.
For information concerning testimonial depositions of adverse party witnesses residing in the United States, seeTBMP § 703.01(f)(2).
NOTES:
1. 37 C.F.R. § 2.120(b); Fed. R. Civ. P. 30(b); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 (TTAB 1976).
404.03(a)(2) Person Residing in the United States – Non-party
35 U.S.C. § 24 Subpoenas, witnesses.
The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent and Trademark Office.
Every witness subpoenaed and in attendance shall be allowed the fees and traveling expenses allowed to witnesses attending the United States district courts.
A judge of a court whose clerk issued a subpoena may enforce obedience to the process or punish disobedience as in other like cases, on proof that a witness, served with such subpoena, neglected or refused to appear or to testify. No witness shall be deemed guilty of contempt for disobeying such subpoena unless his fees and traveling expenses in going to, and returning from, and one day’s attendance at the place of examination, are paid or tendered him at the time of the service of the subpoena; nor for refusing to disclose any secret matter except upon appropriate order of the court which issued the subpoena.
37 C.F.R. § 2.120(b) Discovery deposition within the United States.
. . . The responsibility rests wholly with the party taking discovery to secure the attendance of a proposed deponent other than a party or anyone 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.
The responsibility rests with the deposing party to secure the attendance of a proposed deponent residing within the United States unless the proposed deponent is a party, or a person 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. [ Note 1.] If the proposed non-party deponent is not willing to appear voluntarily, the deposing party must secure the non-party deponent’s attendance by subpoena, pursuant to 35 U.S.C. § 24 and Fed. R. Civ. P. 45. [ Note 2.]
The subpoena must be issued from the United States district court in the federal judicial district where the deponent resides or is regularly employed. [ Note 3.] A subpoena may be issued (signed) only by the clerk or a judge of such court or an attorney authorized to practice in that jurisdiction, and must be accompanied by the fees for one day’s attendance and mileage allowed by law, pursuant to Fed. R. Civ. P. 45 and 28 U.S.C. § 1821. The party issuing the subpoena also may have to reimburse the witness for costs incurred during travel to and from the designated place of attendance, such as airfare, tolls, and lodging, pursuant to 28 U.S.C. § 1821(c)-(d).
If a person named in a subpoena compelling attendance at a discovery deposition fails to attend the deposition, or refuses to answer a question propounded at the deposition, the deposing party must seek enforcement from the United States district court that issued the subpoena; the Board has no jurisdiction to enforce the subpoena. [ Note 4.]
For information regarding the taking of a testimonial deposition of a non-party witness residing in the United States, see TBMP § 703.01(f)(2).
NOTES:
2. Fed. R. Civ. P. 30(a)(1) and Fed. R. Civ. P. 45; Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2048-49 (TTAB 1988) (deposition of former employee can only be taken by voluntary appearance or by subpoena). Cf. regarding testimony depositions, Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990) (testimony deposition on written questions of adverse party); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 (TTAB 1976) (testimony deposition of adverse witness).
Please Note: To the extent that Fed. R. Civ. P. 45(a)(2) and 45(f), as amended in 2013, conflict with the provisions of 35 U.S.C. § 24, the statute is controlling. See 37 C.F.R. § 2.116(a) ("Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.").
3. 37 C.F.R. § 2.120(b). See generally the cases cited in preceding Note 2.
4. See, e.g., Ate My Heart v. GA GA Jeans, 111 USPQ2d 1564, 1565 n.5 (TTAB 2014) (notice of deposition of unwilling non-party witness must include subpoena, and related motions must be filed with district court that issued subpoena, not Board); Dan Foam ApS v. Sleep Innovations Inc., 106 USPQ2d 1939, 1942 n.4 (TTAB 2013) (Board cannot modify or quash a subpoena issued by a district court); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 n.3 (TTAB 1987) (motion to quash subpoenaed third-party depositions due to scheduling problems denied). See also In re Johnson & Johnson, 59 F.R.D. 174, 178 USPQ 201 (D. Del. 1973) (asserting jurisdiction to enforce subpoenas for TTAB proceeding); PRD Electronics Inc. v. Pacific Roller Die Co., 169 USPQ 318, 319 n.3 (TTAB 1971).
404.03(b) Person Residing in a Foreign Country – Party
37 C.F.R. § 2.120(c) Discovery deposition in foreign countries; or of foreign party within jurisdiction of the United States.
- (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.
- (2) Whenever a foreign party is or will be, during a time set for discovery, present within the United States or any territory which is under the control and jurisdiction of the United States, such party may be deposed by oral examination upon notice by the party seeking discovery. Whenever a foreign party has or will have, during a time set for discovery, an officer, director, managing agent, or other person who consents to testify on its behalf, present within the United States or any territory which is under the control and jurisdiction of the United States, such officer, director, managing agent, or other person who consents to testify in its behalf may be deposed by oral examination upon notice by the party seeking discovery. The party seeking discovery may have one or more officers, directors, managing agents, or other persons who consent to testify on behalf of the adverse party, designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure. The deposition of a person under this paragraph shall be taken in the Federal judicial district where the witness resides or is regularly employed, or, if the witness neither resides nor is regularly employed in a Federal judicial district, where the witness is at the time of the deposition. This paragraph (c)(2) does not preclude the taking of a discovery deposition of a foreign party by any other procedure provided by paragraph (c)(1) of this section.
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 may be taken on notice alone. [ Note 1.]
However, if the discovery deposition of such a person is taken in a foreign country, it must be taken on written questions, in the manner described in 37 C.F.R. § 2.124, unless the Board, on motion for good cause, orders, or the parties stipulate, that the deposition be taken by oral examination. [ Note 2.]
Similarly, if a testimonial deposition is taken in a foreign country, it must be taken by deposition on written questions, as described in 37 C.F.R. § 2.123(a)(2) unless the Board, on motion for good cause orders the deposition taken by oral examination, or the parties so stipulate; or by affidavit or declaration subject to the right of cross examination. [ Note 3.] See TBMP § 703.01(b) for further information about the form of trial testimony. It should be noted, however that some countries prohibit the taking of testimony within their boundaries for use in any other country, including the United States, even though the witness is willing; or may permit the taking of testimony only if certain procedures are followed. A party that wishes to take a deposition in a foreign country should first consult with local counsel in the foreign country, and/or with the Office of the Legal Adviser, U.S. Department of State, in order to determine whether the taking of the deposition will be permitted by the foreign country, and, if so, what procedure must be followed.
For information concerning the procedure for taking discovery depositions on written questions, see TBMP § 404.07.
For information on a motion to take a foreign deposition orally, see TBMP § 520. For information on taking the testimony deposition of a willing or unwilling adverse party or non-party witness in a foreign country through the letter rogatory procedure or by procedures provided under the Hague Convention or other applicable treaties, see TBMP § 703.01(g).
The Board will not order a natural person residing in a foreign country to come to the United States for the taking of his or her discovery deposition. [ Note 4.]
Parties seeking to take the discovery deposition of a natural person residing in a foreign country should be aware that the laws of some foreign countries may serve to preclude the taking of such depositions. [ Note 5.] In determining when it is appropriate to impose sanctions for non-compliance with discovery due to a conflict with foreign laws, the following factors are considered: (1) the good faith of the non-complying party; (2) whether the non-complying party would incur foreign criminal liability; and (3) whether alternative sources of information are available. [ Note 6.]
NOTES:
1. See 37 C.F.R. § 2.120(c) and 37 C.F.R. § 2.124.
2. 37 C.F.R. § 2.120(c)(1). See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998). See also Orion Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923, 1925 (TTAB 1989) (by motion); Jonergin Co. v. Jonergin Vermont Inc., 222 USPQ 337, 340 (Comm’r 1983) (by stipulation).
3. 37 C.F.R. § 2.123(a)(2). See TBMP § 703.02(a).
4. See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 374 (TTAB 1978) (deposition may only be taken by written questions unless otherwise stipulated, or unless the party is present in the U.S.). See also Miller v. N. V. Cacao-En Chocoladefabrieken Boon, 142 USPQ 364, 365-66 (E.D.N.Y. 1964); Cf. Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises, Ltd, 511 F.3d 437, 85 USPQ2d 1385, 1391 (4th Cir. 2007) (foreign corporation party required to obey a subpoena issued by the district court, pursuant to Rule 30(b)(6) notice, to appear in the United States to give trial testimony).
5. Cf. Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197, 200-01 (1958) (Swiss government ordered Swiss plaintiff in U.S. court proceeding not to produce certain documents).
6. Cf. Cochran Consulting Inc. v. Uwatec USA Inc., 102 F.3d 1224, 41 USPQ2d 1161, 1163-67 (Fed. Cir. 1996) (citing Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197 (1958)).
404.03(c) Person Residing in a Foreign Country – Non-party
404.03(c)(1) Willing Non-party
The discovery deposition of a natural person who resides in a foreign country, and is not a party, or 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, but is willing to appear voluntarily to be deposed, may be taken in the same manner as the discovery deposition of a natural person who resides in a foreign country and who is a party, i.e., in the manner described in TBMP § 404.03(b). [ Note 1.] It should be noted, however that some countries prohibit the taking of testimony within their boundaries for use in any other country, including the United States, even though the witness is willing; or may permit the taking of testimony only if certain procedures are followed. A party which wishes to take a deposition in a foreign country should first consult with local counsel in the foreign country, and/or with the Office of the Legal Adviser, U.S. Department of State, in order to determine whether the taking of the deposition will be permitted by the foreign country, and, if so, what procedure must be followed.
NOTES:
1. Cf. 37 C.F.R. § 2.120(c) and 37 C.F.R. § 2.123(a).
404.03(c)(2) Unwilling Non-party – The Hague Convention and Letter Rogatory Procedure
28 U.S.C. § 1781 Transmittal of letter rogatory or request.
- (a) The Department of State has power, directly, or through suitable channels—
- (1) to receive a letter rogatory issued, or request made, by a foreign or international tribunal, to transmit it to the tribunal, officer, or agency in the United States to whom it is addressed, and to receive and return it after execution; and
- (2) to receive a letter rogatory issued, or request made, by a tribunal in the United States, to transmit it to the foreign or international tribunal, officer, or agency to whom it is addressed, and to receive and return it after execution.
- (b) This section does not preclude—
- (1) the transmittal of a letter rogatory or request directly from a foreign or international tribunal to the tribunal, officer, or agency in the United States to whom it is addressed and its return in the same manner; or
- (2) the transmittal of a letter rogatory or request directly from a tribunal in the United States to the foreign or international tribunal, officer, or agency to whom it is addressed and its return in the same manner.
There is no certain procedure for obtaining, in an inter partes proceeding before the Board, the discovery deposition of a natural person who resides in a foreign country, is not a party, or 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, and does not agree to appear voluntarily to be deposed. However, a party may be able to obtain the discovery deposition of such a person through the letter rogatory procedure, whereby an unwilling non-party witness in a foreign country sometimes may be compelled to respond to questions routed through diplomatic channels to an appropriate judicial authority in the foreign country. [ Note 1.]
The term "letter rogatory" or "letter of request" is defined in Black’s Law Dictionary (11th edition 2019) as follows:
letter of request. 1. A document issued by one court to a foreign court, requesting that the foreign court (1) take evidence from a specific person within the foreign jurisdiction or serve process on an individual or corporation within the foreign jurisdiction and (2) return the testimony or proof of service for use in a pending case. See Fed. R. Civ. P. 28. — Also termed letter rogatory; rogatory letter; requisitory letter. * * * *
While the letter rogatory procedure is usually conducted through the judicial system, because the Board proceeding is before an administrative body, the Board would function as the initiating "court" contemplated by the preceding definition.
A party that wishes to have the Board issue a letter rogatory should file a written request therefor with the Board. [ Note 2.] The party must also submit an original and two copies of the proposed letter rogatory, and an original and two copies of the questions to be propounded to the non-party witness. If the official language of the foreign country is not English, the propounding party must submit an original and two copies of the letter rogatory and questions in English, and an original and two copies thereof translated into the official language of the country in which the witness will be deposed. In addition, the propounding party must serve on each adverse party a copy of every submission filed with the Board. [ Note 3.]
If the request by the Board is granted (i.e. it is willing to issue the letter once all questions are exchanged and translations are provided), each adverse party will be given an opportunity to submit cross questions, a copy of which must also be served on the propounding party. If an adverse party submits cross questions, the propounding party, in turn, will be given an opportunity to submit redirect questions, a copy of which must be served on each adverse party. [ Note 4.] As in the case of the initial questions, an original and two copies of any cross questions and redirect questions must be submitted to the Board; if the official language of the foreign country is not English, an original and two copies of the questions in English, and an original and two copies thereof translated into the official language, must be submitted.
After the original and copies of the letter rogatory, and of all of the questions, have been submitted to the Board, and the letter rogatory has been approved as to form, the letter rogatory will be issued by the Board. The letter rogatory will be signed by the Chief Administrative Trademark Judge; however, the propounding party will be responsible for having the signature authenticated in such a manner as to meet the requirements of the foreign country. After the signature is appropriately authenticated, the Board will forward the original and one copy of the letter rogatory and accompanying questions to the United States Department of State with a transmittal letter from the Board (the remaining copy of these papers will be retained in the Board proceeding file). In its transmittal letter, the Board will request, pursuant to 28 U.S.C. § 1781 (which authorizes the Department of State to, inter alia, "receive a letter rogatory issued, or request made, by a tribunal in the United States, to transmit it to the foreign or international tribunal, officer, or agency to whom it is addressed, and to receive and return it after execution"), that the Department of State transmit the letter rogatory to the appropriate judicial authority in the foreign country, and, after execution, receive it back and return it to the Board. Thereafter, the Department of State will transmit the letter rogatory, through diplomatic channels, to the appropriate judicial authority in the foreign country.
The party seeking discovery must pay all fees, including authentication, consular, and foreign government fees, charged in connection with the letter rogatory procedure. The Department of State will require the propounding party to make a deposit to cover the consular and foreign government fees. Payment must include a certified check payable to the U.S. Embassy [insert the name of the appropriate city, e.g., Paris, Bonn, Tokyo, etc.]. Any unused portion of the deposit will be returned to the depositor after completion of the letter rogatory process.
Further information concerning the letters rogatory process may be obtained from the Judicial Assistance Officer, U.S. Department of State, Office of Legal Affairs (L/CA/POG/GC), SA-17, 10th Floor, 2201 C Street NW, Washington, D.C. 20522-1710 or at the U.S. Department of State’s website at https://travel.state.gov/content/travel/en/legal/travel-legal-considerations/internl-judicial-asst/obtaining-evidence/Preparation-Letters-Rogatory.html.
Once the appropriate foreign judicial authority has received the letter rogatory, it may or may not be executed. The letter rogatory "rest[s] entirely upon the comity of courts towards each other . . . ." [ Note 5.] Some countries refuse or are reluctant to lend assistance in the taking of a discovery deposition in their country through the letter rogatory procedure, and compliance with the procedural requirements for a letter rogatory does not ensure that the requested deposition will be completed. [ Note 6.] Before a request for issuance of a letter rogatory is filed with the Board, the requesting party should examine the law and policy of the involved foreign country, and consult with the Office of Legal Affairs, Department of State, in order to determine whether the country in question is likely to honor a letter rogatory, particularly a letter rogatory issued by the Board. The likelihood that the Board will agree to issue the letter rogatory may be influenced by any information the requesting party is able to provide about the likelihood that the foreign country will execute the letter.
Even in those foreign countries that may be willing to execute a letter rogatory, the foreign judicial authority may refuse to honor a letter rogatory issued by the Board (an administrative tribunal) rather than by a United States district court. Further, if the foreign country has a "blocking statute" prohibiting its residents from disclosing certain types of information in judicial or administrative proceedings outside of the foreign country, a letter rogatory may not be honored if the foreign judicial authority believes that disclosure of the information requested therein would violate the blocking statute.
If a letter rogatory is honored, its probative value may be limited. In executing the letter rogatory, the foreign judicial tribunal will follow its customary procedures for taking discovery or testimony. The fact that these procedures may differ from those normally followed in proceedings before the Board does not mean that the deposition must necessarily be excluded. Rather, any such differences are matters to be considered by the Board in determining the probative value of the deposition. [ Note 7.]
A party considering the filing of a request for issuance of a letter rogatory should bear in mind not only the complexity and uncertain outcome of the procedure, but also its time-consuming nature. The entire process, from the filing of the initial request for issuance of a letter rogatory, to receipt by the Board either of the completed deposition, or of notification that the letter rogatory will not be honored, will consume months, if not years. During the interim, proceedings in the case before the Board most likely will be suspended pending the execution and return to the Board of the letter rogatory. [ Note 8.]
The Convention on the Taking of Evidence Abroad in Civil or Commercial Matters (commonly known as the "Hague Convention"), opened for signature March 18, 1970, 23 U.S.T. 2555, T.I.A.S. No. 7444, prescribes procedures under which a judicial authority in one member country may request evidence located in another. The Hague Convention offers another possible method by which a party to an inter partes proceeding before the Board may attempt to obtain the discovery deposition of an unwilling non-party witness residing in a foreign country, if the foreign country is a member of the Hague Convention. [ Note 9.]
The Hague Convention provides for the compulsion of evidence (including the deposition of an unwilling witness) in a member country pursuant to a "letter of request," which is very similar in nature to a letter rogatory. [ Note 10.] However, the Board has been advised by the Department of State that foreign countries are more likely to lend assistance in the taking of a discovery deposition if the request therefor is made under the more formal letter rogatory procedure. Before filing a motion for issuance of a letter of request under the Hague Convention, the moving party should consult with the Office of the Legal Adviser, U.S. Department of State, in order to determine whether the foreign country in question is likely to honor a letter of request, particularly a letter of request issued by the Board.
NOTES:
1. Cf. DBMS Consultants Ltd. v. Computer Associates International, Inc., 18 Fed. R. Serv. 3d 33, 131 F.R.D. 367 (D. Mass. 1990) (court granted application for issuance of a letter rogatory finding that it would be unjust and inappropriate to require oral examination and that opposing party has shown no good reason to deny the application).
2. See Fed. R. Civ. P. 28(b).
3. 37 C.F.R. § 2.119(a). Cf. 37 C.F.R. § 2.124(b)(2).
4. Cf. 37 C.F.R. § 2.124(d)(1).
5. 22 C.F.R. § 92.54 ("Letters rogatory" defined).
6. See Fed. R. Civ. P. 28(b) Notes of Advisory Committee on Rules –1963 Amendment; 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE CIVIL § 2083 (3d ed. 2020).
7. See Fed. R. Civ. P. 28(b) Notes of Advisory Committee on Rules –1963 Amendment); 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE CIVIL § 2083 (3d ed. April 2021 update).
8. Cf. 37 C.F.R. § 2.124(d)(2).
9. See, e.g., Societe Nationale Industrielle Aerospatiale v. U.S. District Court for the Southern District of Iowa, 482 U.S. 522, 533-40 (1987) (although Hague Convention not exclusive discovery procedure, it may apply even if Federal Rules of Civil Procedure are available); In re Anschuetz & Co., 838 F.2d 1362, 1364 (5th Cir. 1988) (U.S. district courts have discretion to resolve discovery conflicts between Federal Rules of Civil Procedure and Hague Convention); 8 C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE CIVIL § 2005.1 (3d ed. April 2021 update). For general information concerning the Hague Convention, see Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612-13 (TTAB 1991) (applicant failed to establish necessity of using Hague procedures). [Please Note: This case involved the taking of discovery by interrogatories, requests for production of documents, and requests for admissions, rather than by deposition.]
10. For information concerning the letter of request procedure under the Hague Convention, see Chapter 1 of the Convention. See also Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612-13 (TTAB 1991).
404.03(d) Foreign Person Present Within the United States – Party
37 C.F.R. § 2.120(c)(2) Whenever a foreign party is or will be, during a time set for discovery, present within the United States or any territory which is under the control and jurisdiction of the United States, such party may be deposed by oral examination upon notice by the party seeking discovery. Whenever a foreign party has or will have, during a time set for discovery, an officer, director, managing agent, or other person who consents to testify on its behalf, present within the United States or any territory which is under the control and jurisdiction of the United States, such officer, director, managing agent, or other person who consents to testify in its behalf may be deposed by oral examination upon notice by the party seeking discovery. The party seeking discovery may have one or more officers, directors, managing agents, or other persons who consent to testify on behalf of the adverse party, designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure. The deposition of a person under this paragraph shall be taken in the Federal judicial district where the witness resides or is regularly employed, or, if the witness neither resides nor is regularly employed in a Federal judicial district, where the witness is at the time of the deposition. This paragraph (c)(2) does not preclude the taking of a discovery deposition of a foreign party by any other procedure provided by paragraph (c)(1) of this section.
Whenever a natural person who is a foreign party, or an officer, director, or managing agent, of a foreign party, or some other person who consents to testify on a foreign party’s behalf, is or will be, during a time set for discovery, present within the United States or any territory which is under the control and jurisdiction of the United States, such party, officer, director, managing agent, or other person may be deposed, while in the United States, by oral examination on notice pursuant to 37 C.F.R. § 2.120(c)(2). Indeed, this option was available even before the adoption of 37 C.F.R. § 2.120(c)(2). [ Note 1.]
When the discovery deposition of a foreign party, or an officer, director, managing agent, or other person who consents to testify on behalf of a foreign party, is taken in the United States by oral examination pursuant to 37 C.F.R. § 2.120(c)(2), the deposition must be taken in the federal judicial district where the witness resides or is regularly employed, or, if the witness neither resides nor is regularly employed in a federal judicial district, where the witness is at the time of the deposition. [ Note 2.] Parties may obtain information regarding a potential foreign witness’s presence in the United States during the discovery period in the form of an interrogatory request, which is subject to the duty to supplement. [ Note 3.]
NOTES:
1. See Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373-74 (TTAB 1978). Cf. Jonergin Co. v. Jonergin Vermont Inc., 222 USPQ 337, 340 (Comm’r 1983) (parties may agree to take oral deposition of foreign domiciliary in U.S.).
3. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69961 (October 7, 2016).
404.03(e) Foreign Person Present Within the United States – Non-party
If the proposed deponent is a foreign person who is present within the United States but the person is not a party to the proceeding and is not willing to appear voluntarily, it may be necessary to secure the deponent’s attendance, if at all, by the procedures set forth in TBMP § 404.03(c).