703.01(h) Examination of Witnesses
37 C.F.R. § 2.123(e) Examination of witnesses.
- (1) Each witness before providing oral testimony shall be duly sworn according to law by the officer before whom the deposition is to be taken. Where oral depositions are taken, every adverse party shall have a full opportunity to cross-examine each witness. When testimony is proffered by affidavit or declaration, every adverse party will have the right to elect oral cross-examination of any witness within the jurisdiction of the United States. For examination of witnesses outside the jurisdiction of the United States, see § 2.124.
- (2) The deposition shall be taken in answer to questions, with the questions and answers recorded in their regular order by the officer, or by some other person (who shall be subject to the provisions of Rule 28 of the Federal Rules of Civil Procedure) in the presence of the officer except when the officer’s presence is waived on the record by agreement of the parties. The testimony shall be recorded and transcribed, unless the parties present agree otherwise. Exhibits which are marked and identified at the deposition will be deemed to have been offered into evidence, without any formal offer thereof, unless the intention of the party marking the exhibits is clearly to the contrary.
- (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 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.
- (4) All objections made at the time of an oral examination to the qualifications of the officer taking the deposition, or to the manner of taking it, or to the evidence presented, or to the conduct of any party, and any other objection to the proceedings, shall be noted by the officer upon the deposition. Evidence objected to shall be taken subject to the objections.
37 C.F.R. § 2.123(g) Form of deposition. (1) The pages of each deposition must be numbered consecutively, and the name of the witness plainly and conspicuously written at the top of each page. The deposition must be in written form. The questions propounded to each witness must be consecutively numbered unless the pages have numbered lines. Each question must be followed by its answer. The deposition transcript must be submitted in full-sized format (one page per sheet), not condensed (multiple pages per sheet).
Fed. R. Civ. P. 30(b)(4) By Remote Means. The parties may stipulate — or the court may on motion order — that a deposition be taken by telephone or other remote means. For the purpose of this rule and Rules 28(a), 37(a)(2), and 37(b)(1), the deposition takes place where the deponent answers the questions.
Before providing oral testimony, a witness whose testimony deposition is being taken for use in a Board inter partes proceeding must be duly sworn, according to law, by the officer before whom the deposition is to be taken. [ Note 1.] See TBMP § 703.01(g).
Testimony by affidavit or declaration pursuant to 37 C.F.R. § 2.20 must be made in conformance with the Federal Rules of Evidence. The testimony affidavit is a sworn statement, signed and dated, while the declaration permits a comparable alternative unsworn statement, signed and dated. Both options are under penalty of perjury, and statements in Board proceedings are subject to 18 U.S.C. § 1001. [ Note 2.]
The deposition is taken in answer to questions, and the questions and answers are recorded in order by the officer, or by some other person (who is subject to the provisions of Fed. R. Civ. P. 28) in the presence of the officer, except when the officer’s presence is waived on the record by agreement of the parties. The deposition testimony is recorded and transcribed, unless the parties present agree otherwise. [ Note 3.]
The Board does not accept videotape testimony. [ Note 4.] An affidavit, declaration or testimony deposition must be submitted to the Board in written form via ESTTA, unless ESTTA is unavailable due to technical problems, or under extraordinary circumstances. [ Note 5.]
On stipulation of the parties, or on motion granted by the Board, a deposition may be taken or attended by telephone or other remote means. [ Note 6.] A deposition taken by telephone or other remote means is taken in the district and at the place where the witness is to answer the questions propounded to him or her. [ Note 7.]
Exhibits which are marked and identified at the deposition will be deemed to have been offered in evidence, even if no formal offer thereof is made, unless the intention of the party marking the exhibits is clearly to the contrary. [ Note 8.]
Regardless of the form of the direct testimony, every adverse party must be given an opportunity to cross-examine the witness, and the proffering party may conduct redirect examination of a witness following cross-examination. [ Note 9.] For information concerning cross-examination of witnesses on written questions, see TBMP § 703.02. If pretrial disclosures or the notice of deposition served by a party is improper or inadequate with respect to the witness, an adverse party may file a motion to quash before the deposition is scheduled to take place, or alternatively, cross-examine the witness under protest while reserving the right to object to the receipt of the testimony in evidence. [ Note 10.] 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 11.] For information concerning the raising of an objection to a testimony deposition on the ground of improper or inadequate pretrial disclosures or notice, see 37 C.F.R. § 2.121(e), 37 C.F.R. § 2.123(e)(3), TBMP § 533.02, TBMP § 707.03(b)(2) and TBMP § 707.03(b)(3).
All objections made at the time of the taking of a testimony deposition as to the qualifications of the officer taking the deposition, the manner of taking the deposition, the evidence presented, the conduct of any party, or any other objection to the proceedings, are noted by the officer upon the deposition. Evidence objected to is taken subject to the objections. [ Note 12.] See TBMP § 707.03.
Questions to which an objection is made ordinarily should be answered subject to the objection, but a witness may properly refuse to answer a question asking for information that is, for example, privileged, trade secret or otherwise protected from disclosure by the protective order in place for the case. See TBMP § 404.09. For information concerning the propounding party’s recourse if a witness not only objects to, but also refuses to answer, a particular question, see TBMP § 404.09 and TBMP § 707.03(d).
For further information concerning the raising of objections to testimony depositions, affidavits and declarations, see TBMP § 533 and TBMP § 707.03.
If the parties so stipulate in writing, a deposition may be taken before any person authorized to administer oaths, at any place, on any notice, and in any manner, and when so taken may be used like any other deposition. [ Note 13.]
For information concerning depositions of witnesses in foreign countries, see TBMP § 703.01(g).
NOTES:
1. 37 C.F.R. § 2.123(e)(1). See Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1384 (TTAB 2000) (objection to deposition taken in Honduras that officer designated in notice did not take deposition and that the transcript did not show due administration of the oath overruled where the person who conducted the deposition had authority to do so under Honduran law and the oath was administered in standard manner under Honduran law). Cf. TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790 (TTAB 2018) (statements made in defendant’s initial disclosures about attached documents are not properly sworn or otherwise verified under Trademark Rule 2.20 and thus are not testimony); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790 n.18 (TTAB 2018) (unsworn statement, submitted with duplicate copies of initial disclosures, "declaring" use of the mark during the relevant period not considered although parties agreed to present testimony by affidavit, because defendant’s "declaration," at the end of the statement, that "the foregoing is true and correct," is not in affidavit form).
2. See 28 U.S.C. § 1746. See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (in response to a comment, "the Office has adopted language in the final rule directed to the concerns expressed regarding affidavit testimony by explicitly requiring that the affidavit or declaration pursuant to § 2.20 be made in conformance with the Federal Rules of Evidence. Regarding the concern raised about affidavit or declaration testimony being ‘duly sworn’ and under penalty of perjury, the testimony affidavit is a sworn statement, while the declaration permits a comparable alternative unsworn statement. See 28 U.S.C. § 1746. Either option is under penalty of perjury, and statements in Board proceedings are subject to 18 U.S.C. § 1001."); M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd., 2019 USPQ2d 149090, at *2-3 (TTAB 2019) (motion to strike testimony declaration of foreign witness made under 28 U.S.C. § 1746 granted because the original declaration and substitute declaration by foreign witness did not refer to the laws of the United States as to penalty of perjury); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790 (TTAB 2018) (statements made in defendant’s initial disclosures about attached documents are not properly sworn or otherwise verified under Trademark Rule 2.20 and thus are not testimony); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790 n.18 (TTAB 2018) (unsworn statement, submitted with duplicate copies of initial disclosures, "declaring" use of the mark during the relevant period not considered although parties agreed to present testimony by affidavit, because defendant’s "declaration," at the end of the statement, that "the foregoing is true and correct," is not in affidavit form). See also Optimal Chemical Inc. v. Srills LLC, 2019 USPQ2d 338409, at *3 n.37 (TTAB 2019) (declaration that lacked signature and date not considered).
4. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (Board considered but rejected suggestion of allowing videotape depositions: "The Board has never accepted video testimony …. The current online filing system is not able to accept video testimony however, this possibility may be considered in subsequent rulemakings as TTAB’s online systems are enhanced."); USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047 n.3 (TTAB 2017) (Board does not accept video testimony; transcripts must be submitted).
5. 37 C.F.R. § 2.123(g) and 37 C.F.R. § 2.126.
6. See Fed. R. Civ. P. 30(b)(4); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 (TTAB 2019) (granting petitioner’s alternate motion to take oral cross- examination by telephone or other remote means due to travel and accommodation expense); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1654 (TTAB 2007) (noting parties may resolve conflict concerning the scheduling of deposition where travel for one party is involved, by conducting deposition by telephone or other electronic means); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1552-53 (TTAB 1991) (Board granted request to attend deposition by telephone, noting that trademark rules do not specifically provide for or prohibit depositions by telephone and that federal court practice favors use of technological benefits). Cf. USPS v. RPost Communication Ltd., 124 USPQ2d 1045 (TTAB 2017) (notice of election of oral cross-examination of declarants quashed because not noticed for reasonable place, but applicant may accept opposer’s offer to make witnesses available for oral cross-examination by videoconference or telephone, thus alleviating some concern about travel and attorney expenses).
7. Fed. R. Civ. P. 30(b)(4).
8. 37 C.F.R. § 2.123(e)(2). Cf. Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835, 1838 n.4 (TTAB 1989) (decided prior to the rule change which eliminated "formal" introduction of exhibits, but exhibits still not excluded).
9. See 37 C.F.R. § 2.123(a)(1). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (concerning the unilateral option to submit testimony by affidavit or declaration, "The new procedure retains what the Supreme Court focused on in B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, 113 USPQ2d 2045 (2015): That testimony be under oath and subject to cross examination. The ability to elect cross-examination of the witness in the new unilateral procedure maintains the fairness and weightiness of Board proceedings."); Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *4-5 (TTAB 2020) (overruling objection to redirect examination of a testimony declarant after oral cross-examination); Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1102 (TTAB 2018) ("[T]he right to seek cross examination is integral to the right to offer testimony by declaration."). Cf. TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790, 1790 n.16 (TTAB 2018) (defendant could have introduced additional documents through the testimony of an individual who had been identified in initial disclosures as a potential witness, subject to cross-examination, but defendant chose not to do so); 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).
10. 37 C.F.R. § 2.121(e) and 37 C.F.R. § 2.123(e)(3). See 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.").
11. 37 C.F.R. § 2.121(e). Cf. Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *4-5 (TTAB 2020) (overruling objection to redirect examination of a testimony declarant after oral cross-examination); 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).