530 Motion to Use Testimony From Another Proceeding
37 C.F.R. § 2.122(f) Testimony from other proceedings. By order of the Trademark Trial and Appeal Board, on motion, testimony taken in another proceeding, or testimony taken in a suit or action in a court, between the same parties or those in privity may be used in a proceeding, so far as relevant and material, subject, however, to the right of any adverse party to recall or demand the recall for examination or cross-examination of any witness whose prior testimony has been offered and to rebut the testimony.
The use, in an inter partes proceeding before the Board, of testimony taken or filed in another Board proceeding, or testimony taken in a suit or action in a court, is governed by 37 C.F.R. § 2.122(f). Cf. TBMP § 704.13.
A party may seek, by motion, to use testimony from another proceeding, either as evidence on its behalf upon summary judgment or as part of its evidence on trial of the case. See TBMP § 528.05(f) and TBMP § 704.13 [ Note 1.] A motion for leave to use testimony from another proceeding as evidence on the case may be filed during discovery, the time between the close of discovery and the beginning of testimony, or the testimony period of the moving party. [ Note 2.] The better practice is to file the motion as early as possible, in order to minimize the resulting delay in the proceeding. Such a motion would not usually result in suspension of the proceeding; if the motion is made without the consent of every adverse party and filed during the testimony period, and if the moving party believes that it will need additional time to present evidence if the motion is denied, the moving party should file a motion to extend its testimony period with its motion under 37 C.F.R. § 2.122(f).
However, 37 C.F.R. § 2.122(f) does not require that a motion for leave to use testimony from another proceeding be filed during the testimony period of the moving party, and it is not unreasonable for a party to want to ascertain, prior to the opening of its testimony period, whether it will be allowed to rely on such testimony. Thus, a motion under 37 C.F.R. § 2.122(f) filed prior to the opening of the moving party’s testimony period will not be denied as untimely. [ Note 3.]
A motion for leave to use testimony from another proceeding should be accompanied by a copy of the testimony, and accompanying exhibits, sought to be introduced. A copy of the motion, testimony, and accompanying exhibits should be served on every other party to the proceeding. [ Note 4.]
The Board has construed the term "testimony," as used in 37 C.F.R. § 2.122(f), as meaning only trial testimony (i.e. an oral testimony deposition or testimony affidavit or declaration) [ Note 5.] or a discovery deposition that was used, by agreement of the parties, as trial testimony in the other proceeding.
NOTES:
1. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1467 n.4 (TTAB 2016) (granting motions for leave to use testimony and evidence from civil action and considering as part of evidence on trial).
2. Cf. 37 C.F.R. § 2.120(k)(2).
3. See Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1317 (TTAB 1992) (motion to admit testimony from prior opposition filed during discovery period).
4. See 37 C.F.R. § 2.119(a); Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1317 (TTAB 1992).
5. See Threshold.TV Inc. v. Metronome Enterprises Inc., 96 USPQ2d 1031, 1035 n.8 (TTAB 2010); Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1316-17 (TTAB 1992).