703.02    Testimony Depositions on Written Questions

703.02(a)    Depositions on Written Questions: When Available

37 C.F.R. § 2.123 

  • (a)
    • (1) The testimony of witnesses in inter partes cases may be submitted in the form of an affidavit or a declaration pursuant to § 2.20 and in conformance with the Federal Rules of Evidence, filed during the proffering party’s testimony period, subject to the right of any adverse party to elect to take and bear the expense of oral cross-examination of that witness as provided under paragraph (c) of this section if such witness is within the jurisdiction of the United States, or conduct cross-examination by written questions as provided in § 2.124 if such witness is outside the jurisdiction of the United States, and the offering party must make that witness available; or taken by depositions upon oral examination as provided by this section or by depositions upon written questions as provided by § 2.124.
    • (2) Testimony taken in a foreign country shall be taken: by deposition upon written questions as provided by § 2.124, unless the Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate; or by affidavit or declaration, subject to the right of any adverse party to elect to take and bear the expense of cross-examination by written questions of that witness, If a party serves notice of the taking of a testimonial deposition upon written questions of a witness who is, or will be at the time of the deposition, present within the United States or any territory which is under the control and jurisdiction of the United States, any adverse party may, within twenty days from the date of service of the notice, file a motion with the Trademark Trial and Appeal Board, for good cause, for an order that the deposition be taken by oral examination.
  • (b) Stipulations. If the parties so stipulate in writing, depositions may be taken before any person authorized to administer oaths, at any place, upon any notice, and in any manner, and when so taken may be used like other depositions. The parties may stipulate in writing what a particular witness would testify to if called; or any relevant facts in the case may be stipulated in writing.

Ordinarily, the testimony of a witness may be taken by affidavit, declaration or on oral examination pursuant to 37 C.F.R. § 2.123, or by deposition on written questions pursuant to 37 C.F.R. § 2.124. [ Note 1.] For information concerning testimony by affidavit, declaration or oral depositions, see TBMP § 703.01. However, testimony taken in a foreign country must be taken: by deposition on written questions, unless the Board, on motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate; or by affidavit or declaration, subject to the right of any adverse party to elect to take and bear the expense of cross-examination by written questions of that witness. [ Note 2.] See TBMP § 703.01(b).

In addition, if a party serves notice of the taking of a testimony deposition on written questions of a witness who is, or will be at the time of the deposition, present within the United States (or any territory which is under the control and jurisdiction of the United States), any adverse party may, within 20 days from the date of service of the notice, file a motion with the Board, for good cause, for an order that the deposition be taken by oral examination. [ Note 3.] See TBMP § 703.01(b). What constitutes good cause to take an oral deposition is determined on a case-by-case basis. [ Note 4.] See TBMP § 531.

NOTES:

 1.   37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.123(a)(2). See Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *4 n.21 (TTAB 2019) (noting the three manners for taking testimony, affidavit or declaration, oral deposition, or testimony on written questions), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *2 (TTAB 2019) (during its testimony period a party may take the testimony of a witness, by affidavit or declaration, or by deposition upon oral examination, or, if the witness is located in a foreign country, by deposition upon written questions).

 2.   See 37 C.F.R. § 2.123(a)(2). Cf. Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *2 (TTAB 2019) (the method of cross-examination available when direct testimony of a witness outside of the United States is offered by affidavit or declaration is written questions; there is no good cause exception to take oral cross-examination). With respect to discovery depositions, see 37 C.F.R. § 2.120(c)(1); Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998); Orion Group Inc. v. Orion Insurance Co., 12 USPQ2d 1923, 1925-26 (TTAB 1989) (good cause shown to take oral deposition of witness in England under the circumstances and since fares to England were not that much greater than fares within the United States and no translation was required).

 3.   See 37 C.F.R. § 2.123(a)(2)  (formerly 37 C.F.R. § 2.123(a)(1)); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD, 81 Fed. Reg. 69950, 69964 (October 7, 2016) ("The Office is further amending § 2.123(a)(1) to move to § 2.123(a)(2) a provision permitting a motion for deposition on oral examination of a witness in the United States whose testimonial deposition on written questions has been noticed."). See also Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990), corrected at 19 USPQ2d 1479 (TTAB 1990) (good cause shown to take oral deposition of expert witness during rebuttal testimony period); Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980) (good cause shown where deponents were former employees of respondent and present employees of petitioner and were being deposed for first time during rebuttal period).

 4.   See Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980).

703.02(b)    Depositions on Written Questions: Before Whom Taken

37 C.F.R § 2.124(a)  A deposition upon written questions may be taken before any person before whom depositions may be taken as provided by Rule 28 of the Federal Rules of Civil Procedure.

A deposition on written questions, like a deposition on oral examination, may be taken before the persons described in Fed. R. Civ. P. 28. [ Note 1.] For further information, see TBMP § 703.01(g).

NOTES:

 1.   See 37 C.F.R. § 2.124(a). See, e.g., Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 n.8 (TTAB 2019) (both the procedure for oral cross-examination or cross-examination on written questions require a court reporter or other officer to swear in the witness, record the answers and to create a written transcript of the examination).

703.02(c)    Depositions on Written Questions: When Taken

37 C.F.R. § 2.121  Assignment of times for taking testimony and presenting evidence.(a) The Trademark Trial and Appeal Board will issue a trial order setting a deadline for each party’s required pretrial disclosures and assigning to each party the time for taking testimony and presenting evidence ("testimony period"). No testimony shall be taken or evidence presented except during the times assigned, unless by stipulation of the parties approved by the Board, or, upon motion, by order of the Board. The deadlines for pretrial disclosures and the testimony periods may be rescheduled by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. ...

37 C.F.R. §  2.124(b)(1)  A party desiring to take a testimonial deposition upon written questions shall serve notice thereof upon each adverse party within ten days from the opening date of the testimony period of the party who serves the notice. The notice shall state the name and address of the witness. A copy of the notice, but not copies of the questions, shall be filed with the Trademark Trial and Appeal Board.

37 C.F.R. § 2.124(b)(3)  A party desiring to take cross-examination, by written questions, of a witness who has provided testimony by affidavit or declaration shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board.

* * * *

37 C.F.R. § 2.124(d)(1)  … Within twenty days from the date of service of the notice of taking direct examination or service of a testimony affidavit or declaration, any adverse party may serve cross-questions upon the party who proposes to take the deposition. …

37 C.F.R. § 2.124(d)(2)  ... Upon receipt of written notice that one or more testimonial depositions are to be taken upon written questions, the Trademark Trial and Appeal Board shall suspend or reschedule other proceedings in the matter to allow for the orderly completion of the depositions upon written question.

A party may take trial testimony only during its assigned testimony period, except by stipulation of the parties approved by the Board, or, on motion, by order of the Board. [ Note 1.] See TBMP § 701. For information concerning the assignment of testimony periods, and the rescheduling, extension, and reopening thereof, see TBMP § 509 and TBMP § 701.

A party that desires to take a testimony deposition on written questions must serve notice thereof on each adverse party within 10 days from the opening date of the deposing party’s testimony period, as originally set or as reset. [ Note 2.]

A party that desires to take cross-examination, by written questions, of a witness who has provided affidavit or declaration testimony must serve notice thereof on each adverse party, and file a copy of the notice (but not a copy of the questions) with the Board, within twenty days from the date of service of the affidavit or declaration. [ Note 3.]

On receipt of written notice that one or more testimony depositions are to be taken on written questions, the Board will generally suspend or reschedule other proceedings in the case to allow for the orderly completion of the depositions on written questions. [ Note 4.]

For information concerning the time for taking a discovery deposition on written questions of a party, see TBMP § 404.03(b).

NOTES:

 1.   37 C.F.R. § 2.121(a).

 2.   37 C.F.R. § 2.124(b)(1). See Marshall Field & Co. v. Mrs. Field’s Cookies, 17 USPQ2d 1652, 1652 (TTAB 1990) (notice of testimony depositions on written questions, while served eight months after testimony period originally opened, were nonetheless timely, having been served within 10 days of "opening" of testimony period as last reset).

 3.   37 C.F.R. § 2.124(b)(3)  and 37 C.F.R. § 2.124(d)(1). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is adding new § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a witness who has provided testimony by affidavit or declaration shall serve notice on each adverse party and file a copy of the notice with the Board."), and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES: CORRECTION, 81 Fed. Reg. 89382 December 6, 2016) (further clarification necessary to "clearly incorporate the timing for cross-examination upon written questions of testimony by affidavit or declaration.").

 4.   37 C.F.R. § 2.124(d)(2). See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 (TTAB 2019) (proceedings suspended to allow for completion of the cross-examination on written questions of Cuban declarants); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990); Marshall Field & Co. v. Mrs. Field’s Cookies, 17 USPQ2d 1652 (TTAB 1990).

703.02(d)    Depositions on Written Questions: Place of Deposition

A testimony deposition on written questions may be taken at any reasonable place. [ Note 1.] Cf. TBMP § 703.01(d). An adverse party may attend the taking of the deposition and the party who proffered affidavit or declaration testimony may attend the cross-examination on written questions if it so desires, not for the purpose of participating (its participation will have occurred previously, through its service of cross questions, redirect questions, recross questions, and objections, if any, pursuant to 37 C.F.R. § 2.124(d)(1), but rather merely for the purpose of observing.

For information concerning the place where a discovery deposition upon written questions is taken, see TBMP § 404.03(b), TBMP § 404.03(c), and TBMP § 404.04.

NOTES:

 1.   Cf. 37 C.F.R. § 2.123(c). Cf. also 37 C.F.R. § 2.123(b)  regarding stipulations as to place, manner and notice of depositions.

703.02(e)    Depositions on Written Questions: Notice of Deposition

37 C.F.R. § 2.124 

  • (b)
    • (1) A party desiring to take a testimonial deposition upon written questions shall serve notice thereof upon each adverse party within ten days from the opening date of the testimony period of the party who serves the notice. The notice shall state the name and address of the witness. A copy of the notice, but not copies of the questions, shall be filed with the Trademark Trial and Appeal Board.
    • * * * *
    • (3) A party desiring to take cross-examination, by written questions, of a witness who has provided testimony by affidavit or declaration shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board.
  • (c) Every notice given under the provisions of paragraph (b) of this section shall be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken.
  • (d)
    • (1) Every notice served on any adverse party under the provisions of paragraphs (b)(1) and (2) of this section, for the taking of direct examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the deposition. Every notice served on any adverse party under the provisions of paragraph (b)(3) of this section, for the taking of cross-examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the cross-examination. Within twenty days from the date of service of the notice of taking direct examination or service of a testimony affidavit or declaration, any adverse party may serve cross questions upon the party who proposes to take the deposition. ...

To take a testimony deposition on written questions, a party must serve notice thereof on each adverse party within 10 days from the opening date of its testimony period, as originally set or as reset. [ Note 1.] The notice must state the name and address of the witness, and it must be accompanied both by the name or descriptive title of the officer before whom the deposition is to be taken and the written questions to be propounded on behalf of the deposing party. [ Note 2.] A copy of the notice, but not of the questions, must be filed with the Board. [ Note 3.]

A party desiring to take cross-examination, by written questions, of an affiant or declarant must serve on each adverse party notice of the cross-examination within 20 days from date of service of the affidavit or declaration. [ Note 4.] The notice must state the name or descriptive title of the officer before whom the deposition will be taken, and must include a copy of the written questions to be propounded at cross-examination. [ Note 5.] The party must file a copy of the notice, but not the questions, with the Board. [ Note 6.]

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 7.]

For information concerning the notice of deposition in the case of a discovery deposition on written questions, see TBMP § 404.07(d).

NOTES:

 1.   37 C.F.R. § 2.124(b)(1). See Marshall Field & Co. v. Mrs. Field’s Cookies, 17 USPQ2d 1652 (TTAB 1990).

 2.   37 C.F.R. § 2.124(b)(1), 37 C.F.R. § 2.124(c), and 37 C.F.R. § 2.124(d)(1).

 3.   37 C.F.R. § 2.124(b)(1).

 4.   37 C.F.R. § 2.124(b)(3)  and 37 C.F.R. § 2.124(d)(1). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a witness who has provided testimony by affidavit or declaration shall serve notice on each adverse party and file a copy of the notice with the Board."), and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES: CORRECTION, 81 Fed. Reg. 89382 (December 6, 2016) (further clarification necessary to "clearly incorporate the timing for cross-examination upon written questions of testimony by affidavit or declaration.").

 5.   37 C.F.R. § 2.124(c)  and 37 C.F.R. § 2.124(d)(1).

 6.   37 C.F.R. § 2.124(b)(3). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a witness who has provided testimony by affidavit or declaration shall serve notice on each adverse party and file a copy of the notice with the Board.").

 7.   37 C.F.R. § 2.123(b).

703.02(f)    Depositions on Written Questions: Securing Attendance of Unwilling Witness

A party who takes testimony by affidavit or declaration must make the witness available for cross-examination under 37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.123(a)(2). See TBMP § 703.01(b).

For information concerning securing the attendance of an unwilling witness, see TBMP § 703.01(f) (for a testimony deposition) and TBMP § 404.03 (for a discovery deposition).

703.02(g)    Depositions on Written Questions: Examination of Witness

37 C.F.R. § 2.124 

  • (b)
    • (1) A party desiring to take a testimonial deposition upon written questions shall serve notice thereof upon each adverse party within ten days from the opening date of the testimony period of the party who serves the notice. The notice shall state the name and address of the witness. A copy of the notice, but not copies of the questions, shall be filed with the Trademark Trial and Appeal Board.
    • * * * *
    • (3) A party desiring to take cross-examination, by written questions, of a witness who has provided testimony by affidavit or declaration shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board.
  • (c) Every notice given under the provisions of paragraph (b) of this section shall be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken.
  • (d)
    • (1) Every notice served on any adverse party under the provisions of paragraphs (b)(1) and (2) of this section, for the taking of direct examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the deposition. Every notice served on any adverse party under the provisions of paragraph (b)(3) of this section, for the taking of cross-examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the cross-examination. Within twenty days from the date of service of the notice of taking direct examination or service of a testimony affidavit or declaration, any adverse party may serve cross questions upon the party who proposes to take the deposition. Any party who serves cross questions, whether in response to direct examination questions or under paragraph (b)(3) of this section, shall also serve every other adverse party. Within ten days from the date of service of the cross questions, the party who proposes to take the deposition, or who earlier offered testimony of the witness by affidavit or declaration, may serve redirect questions on every adverse party. Within ten days from the date of service of the redirect questions, any party who served cross questions may serve recross questions upon the party who proposes to take the deposition or who earlier offered testimony of the witness by affidavit or declaration; any party who serves recross questions shall also serve every other adverse party. Written objections to questions may be served on a party propounding questions; any party who objects shall serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within ten days of the date of service of the objections; substitute questions shall be served on every other adverse party.
    • (2) Upon motion for good cause by any party, or upon its own initiative, the Trademark Trial and Appeal Board may extend any of the time periods provided by paragraph (d)(1) of this section. Upon receipt of written notice that one or more testimonial depositions are to be taken upon written questions, the Trademark Trial and Appeal Board shall suspend or reschedule other proceedings in the matter to allow for the orderly completion of the depositions upon written questions.
    • (3) Service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).
  • (e) Service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).

A party which desires to take a testimony deposition on written questions must, within 10 days from the opening date of its testimony period, as originally set or as reset, serve notice thereof on each adverse party. [ Note 1.] See TBMP § 703.02(e).

The notice must be accompanied by the written questions to be propounded on behalf of the deposing party. [ Note 2.] A copy of the notice, but not of the questions, must be filed with the Board. [ Note 3.]

Within 20 days from the date of service of the notice of taking direct examination on written questions, any adverse party may serve cross questions on the deposing party. Likewise, a party desiring to take cross-examination, by written questions, of an affiant or declarant must serve on each adverse party notice of the cross-examination within 20 days from the date of service of the testimony affidavit or declaration. [ Note 4.] The notice of cross-examination by written questions must state the name or descriptive title of the officer before whom the deposition will be taken, and must include a copy of the written questions to be propounded at cross-examination. [ Note 5.] The party must file a copy of the notice, but not the questions, with the Board. [ Note 6.]

Any party who serves cross questions, whether in response to direct examination questions, or on cross-examination of a witness who has provided affidavit or declaration testimony, must also serve copies of them on every other adverse party. Within 10 days from the date of service of the cross questions, the deposing party, or the party who had offered affidavit or declaration testimony, may serve redirect questions on every adverse party. Within 10 days from the date of service of the redirect questions, any party that served cross questions may serve recross questions on the deposing party or the party who earlier provided affidavit or declaration testimony. A party that serves recross questions on the deposing party must also serve copies thereof on every other adverse party. [ Note 7.]

Written objections to questions may be served on the party that propounded the questions. A party that serves objections on a propounding party must also serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within 10 days from the date of service of the objections. The substitute questions must also be served on every other adverse party. [ Note 8.]

On motion for good cause filed by any party, or on its own initiative, the Board may extend any of the time periods specified in 37 C.F.R. § 2.124(d)(1), that is, the time periods for serving cross questions, redirect questions, recross questions, objections, and substitute questions. Further, on receipt of written notice that one or more testimony depositions are to be taken on written questions, the Board will suspend or reschedule other proceedings in the matter to allow for the orderly completion of the depositions on written questions. [ Note 9.] See TBMP § 703.02(c).

Within 10 days after the last date when questions, objections, or substitute questions may be served, the deposing party must mail a copy of the notice and copies of all the questions to the officer designated in the notice. A copy of the notice and of all the questions mailed to the officer must also be served on every adverse party. The officer designated in the notice shall read the examination questions to the witness, shall take the testimony of the witness in response to the questions, and shall record each answer immediately after the corresponding question. [ Note 10.]

Service of written questions, responses, and cross-examination questions must be by email unless the parties stipulate to another method, or under certain other limited circumstances. [ Note 11.] For information concerning alternative methods of service under those limited circumstances, see 37 C.F.R. § 2.119(b)  and TBMP § 113.04.

An adverse party may attend the taking of the deposition and the party who proffered affidavit or declaration testimony may attend the cross-examination on written questions if it so desires, not for the purpose of participating (its participation will have occurred previously, through its service of cross questions, redirect questions, recross questions, and objections, if any, pursuant to 37 C.F.R. § 2.124(d)(1) ), but rather merely for the purpose of observing. Any attempt to engage the witness during the deposition or cross-examination may constitute sanctionable conduct.

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. When so taken, the deposition may be used like any other deposition. [ Note 12.]

NOTES:

 1.   37 C.F.R. § 2.124(b)(1).

 2.   37 C.F.R. § 2.124(d)(1).

 3.   37 C.F.R. § 2.124(b)(1).

 4.   37 C.F.R. § 2.124(b)(3)  and 37 C.F.R. § 2.124(d)(1). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a witness who has provided testimony by affidavit or declaration shall serve notice on each adverse party and file a copy of the notice with the Board."), and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE; CORRECTION, 81 Fed. Reg. 89382 (December 6, 2016) (further clarification necessary to "clearly incorporate the timing for cross-examination upon written questions of testimony by affidavit or declaration.").

 5.   37 C.F.R. § 2.124(c)  and 37 C.F.R. § 2.124(d)(1).

 6.   37 C.F.R. § 2.124(b)(3). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a witness who has provided testimony by affidavit or declaration shall serve notice on each adverse party and file a copy of the notice with the Board.").

 7.   37 C.F.R. § 2.124(d)(1). See Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE; CORRECTION, 81 Fed. Reg. 89382 (December 6, 2016) (further clarification necessary to "clearly incorporate the timing for cross-examination upon written questions of testimony by affidavit or declaration.").

 8.   37 C.F.R. § 2.124(d)(1). See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990).

 9.   37 C.F.R. § 2.124(d)(2). See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 (TTAB 2019) (parties’ joint request to extend deadlines to serve notice of cross-examination on written questions, as well as redirect questions granted; proceedings suspended to allow for completion of the cross-examination on written questions of declarants).

 10.   37 C.F.R. § 2.124(e). See Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 n.8 (TTAB 2019) ("the court reporter or other officer designated in the notice of examination will read the cross-examination questions to the witness and record the answers for later creation of a written transcript"); Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1030 (TTAB 2017) (deposing official should state the number of each question before asking it).

 11.   See 37 C.F.R. § 2.119(b)  and 37 C.F.R. § 2.124(d)(3). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is adding new § 2.124(d)(3) to provide that service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).").

 12.   See 37 C.F.R. § 2.123(b).

703.02(h)    Depositions on Written Questions: Form, Signature and Certification of Deposition

37 C.F.R. § 2.124(e)  Within ten days after the last date when questions, objections, or substitute questions may be served, the party who proposes to take the deposition shall mail a copy of the notice and copies of all the questions to the officer designated in the notice; a copy of the notice and of all the questions mailed to the officer shall be served on every adverse party. The officer designated in the notice shall take the testimony of the witness in response to the questions and shall record each answer immediately after the corresponding question. The officer shall then certify the transcript and mail the transcript and exhibits to the party who took the deposition.

The officer before whom a deposition on written questions is taken shall record each answer immediately after the corresponding question. [ Note 1.]

For further information on the form for a deposition taken in an inter partes proceeding before the Board, see 37 C.F.R. § 2.123(g)  and 37 C.F.R. § 2.126, and TBMP § 703.01(i).

For information concerning signature of a deposition taken in an inter partes proceeding before the Board, see 37 C.F.R. § 2.123(e)(5)  and TBMP § 703.01(j).

After the officer designated in the notice of deposition has taken a deposition on written questions, the officer must certify the transcript of the deposition. See 37 C.F.R. § 2.124(e). For information concerning certification of a deposition taken in an inter partes proceeding before the Board, see 37 C.F.R. § 2.123(f), and TBMP § 703.01(k).

When the transcript has been certified, the officer should mail the transcript and exhibits to the party that took the deposition. [ Note 2.]

NOTES:

 1.   See 37 C.F.R. § 2.124(e); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 n.8 (TTAB 2019) ("the court reporter or other officer designated in the notice of examination will read the cross-examination questions to the witness and record the answers for later creation of a written transcript"); Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1030 (TTAB 2017) (deposing official should state the number of each question before asking it).

 2.   See 37 C.F.R. § 2.124(e).

703.02(i)    Depositions on Written Questions: Service, Correction and Filing of Deposition

37 C.F.R. § 2.124(f)  The party who took the deposition shall promptly serve a copy of the transcript, copies of documentary exhibits, and duplicates or photographs of physical exhibits on every adverse party. It is the responsibility of the party who takes the deposition to assure that the transcript is correct (see § 2.125(c)). If the deposition is a discovery deposition, it may be made of record as provided by § 2.120(k). If the deposition is a testimonial deposition, the original, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be filed promptly with the Trademark Trial and Appeal Board.

The party that took the deposition on written questions must promptly serve a copy of the transcript, with exhibits, on every adverse party. [ Note 1.] See TBMP § 703.01(m). The party that took the deposition must also assure that the transcript is correct. [ Note 2.] For information concerning correction of errors in a deposition taken in a Board inter partes proceeding, see TBMP § 703.01(n).

If the deposition is a testimony deposition upon written questions, the original, with exhibits, must be filed promptly with the Board. [ Note 3.] By "promptly" the Board means that the transcript, with exhibits, may be filed at any time prior to submission of the case for final decision. See TBMP § 703.01(k).

NOTES:

 1.   37 C.F.R. § 2.124(f). Cf. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office has not set out in the final rule any specific requirements regarding the form of exhibits. The Board and the parties have experience with such submissions in connection with summary judgment motions and ACR procedures as described in the TBMP at sections 528.05(b) and 702.04, which do not specify requirements for the form of exhibits, and this has not created problems. Notably, documents submitted under an affidavit or declaration but not identified therein cannot be considered as exhibits. The parties are encouraged to be guided by the form requirements set out for exhibits to depositions in § 2.123(g)(2) and the mailing requirements for certain exhibits set out in § 2.123(f)(2).").

 2.   37 C.F.R. § 2.124(f)  and 37 C.F.R. § 2.125(c)  (formerly 37 C.F.R. § 2.125(b)).

 3.   See 37 C.F.R. § 2.124(f).

703.02(j)    Testimony Depositions on Written Questions Must be Filed

37 C.F.R. § 2.123(h) Depositions must be filed. All depositions which are taken must be duly filed in the Office. On refusal to file, the Office at its discretion will not further hear or consider the contestant with whom the refusal lies; and the Office may, at its discretion, receive and consider a copy of the withheld deposition, attested by such evidence as is procurable.

While the offering of a discovery deposition in evidence is voluntary, all trial testimony depositions that are taken in a Board inter partes proceeding must be filed with the Board, and, when filed, automatically constitute part of the evidentiary record in the proceeding. [ Note 1.] See TBMP § 703.01(l).

See, with respect to making a discovery deposition of record, 37 C.F.R. § 2.120(j)  and TBMP § 704.09.

NOTES:

 1.   See 37 C.F.R. § 2.123(h); Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984) (testimony depositions and exhibits introduced in connection with depositions must be filed with the Board and are automatically of record for both parties for all relevant purposes).

703.02(k)    Depositions on Written Questions: Objections to Deposition

37 C.F.R. § 2.124 

  • (d)
    • (1) ... Written objections to questions may be served on a party propounding questions; any party who objects shall serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within ten days of the date of service of the objections; substitute questions shall be served on every other adverse party.
  • * * * *
  • (g) Objections to questions and answers in depositions upon written questions may be considered at final hearing.

Written objections to questions propounded for a deposition on written questions may be served on the party that propounded the questions. Any party that serves written objections on a propounding party must also serve a copy of the objections on every other adverse party. [ Note 1.] See TBMP § 703.02(g).

Unless waived, objections to questions and answers in depositions on written questions, as in oral depositions, generally are considered by the Board at final hearing. [ Note 2.]

For further information concerning the raising of objections to oral trial testimony depositions, see TBMP § 707.03 and TBMP § 533.

For information concerning the raising of objections to discovery depositions, see TBMP § 404.08. For information concerning the raising of objections to a notice of reliance on a discovery deposition, see TBMP § 707.02 and TBMP § 532.

NOTES:

 1.   37 C.F.R. § 2.124(d)(1).

 2.   37 C.F.R. § 2.124(g). See Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1030 (TTAB 2017) (objection to depositions on written questions for failure to timely mail copy of notice and questions to designated officer deemed waived because objectionable testimony addressed on merits in brief and objections were not renewed in brief); Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623, 1628 (TTAB 2014) (objections to written cross-examination questions sustained on ground they exceed scope of direct testimony on written questions), 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); Nahshin v. Product Source International LLC, 107 USPQ2d 1257, 1259 (TTAB 2013) (objections to portions of depositions on written questions deemed waived), aff’d, 112 F. Supp. 3d 383 (E.D. Va. 2015); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990) (objections to questions based on relevancy and materiality will be deferred until final hearing).

703.02(l)    Depositions on Written Questions: Confidential or Trade Secret Material

For information concerning the protection of confidential or trade secret material forming part of a testimony affidavit or declaration or oral deposition transcript or exhibits thereto, see 37 C.F.R. § 2.125(f)  and 37 C.F.R. § 2.126(c); TBMP § 703.01(p). The Board’s standard protective order is automatically applicable throughout all inter partes proceedings, subject to specified exceptions, unless modified by the parties and approved by the Board. [ Note 1.] For further information on protective orders, see TBMP § 412.

NOTES:

 1.   37 C.F.R. § 2.116(g).

703.02(m)    Depositions on Written Questions: Utility

A deposition on written questions is a cumbersome, time-consuming procedure. It requires that cross questions, redirect questions, recross questions, and objections all be framed and served before the questions on direct examination have even been answered. Moreover, it deprives an adverse party of the right to confront the witness and ask follow-up questions on cross-examination. [ Note 1.] See TBMP § 703.02(g).

Nevertheless, depositions on written questions have some utility. They may be the only means by which a deposition may be taken in a foreign country. [ Note 2.] See TBMP § 404.03(c) (discovery deposition of non-party residing in foreign country), TBMP § 703.01(b) (Form of Testimony), TBMP § 703.01(f)(3) (Unwilling Witness Residing in a Foreign Country), and TBMP § 703.02(a) (Depositions on Written Questions – When Available). Moreover, the deposition on written questions is generally less expensive than the deposition on oral examination and is usually more convenient for the witness.

NOTES:

 1.   See 37 C.F.R. § 2.124(d)(1). See also Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990), corrected, 19 USPQ2d 1479 (TTAB 1990); Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980); Fischer GmbH v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979); Orion Group Inc. v. Orion Insurance Co., 12 USPQ2d 1923, 1926 (TTAB 1989) (motion to take discovery deposition in foreign country orally).

 2.   See 37 C.F.R. § 2.120(c)(1), 37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.123(a)(2). Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *1 (TTAB 2019) (quoting TBMP 703.02(m)). Cf. Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437, 85 USPQ2d 1385 (4th Cir. 2007), cert. denied, 128 S. Ct. 2508 (2008) (district court has the power to issue a subpoena for a trial deposition noticed under Fed. R. Civ. P. 30(b)(6), requiring a foreign corporate applicant to produce an appropriate representative in the United States for testimony on the subjects identified in the subpoena, regardless of the domicile of the representative).