704.13    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.

On motion granted by the Board, testimony taken in another proceeding, or testimony taken in a suit or action in a court, between the same parties or their privies, may be used in a pending Board inter partes proceeding, to the extent that the testimony is relevant and material, subject "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." [ Note 1.]

The Board has construed the term "testimony," as used in 37 C.F.R. § 2.122(f), as meaning only trial testimony [ Note 2.], or a discovery deposition which was used, by agreement of the parties, as trial testimony in the other proceeding. The purpose of the rule is to offer a party a means for introducing testimony from a prior proceeding without having to call a witness to authenticate the testimony, thereby allowing a party a relatively quick and simple means by which to introduce testimony from another proceeding into evidence. It is not intended as specifying the only means by which oral or written statements from another proceeding can be introduced at trial in a Board proceeding. [ Note 3.]

Testimony from another proceeding between the parties or their privies may be used, on motion granted by the Board, as evidence in connection with a motion for summary judgment, or as evidence at trial. [ Note 4.] However, when the Board allows testimony of this nature to be used in connection with a motion for summary judgment, the testimony (and any testimony taken on recall of the same witness for examination or cross-examination, or in rebuttal thereof) is of record only for purposes of the motion; it will not be considered at final hearing if the case goes to trial, unless it is reintroduced, on motion granted by the Board, during the appropriate trial period. See TBMP § 528.05(a) and TBMP § 528.05(f).

For information on filing a motion for leave to use testimony from another proceeding, see TBMP § 530.

Testimony from another proceeding may also be made of record in a Board proceeding by stipulation of the parties approved by the Board. The same is true of a discovery deposition.

NOTES:

 1.   37 C.F.R. § 2.122(f). See Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1317 (TTAB 1992) (stating that there is no prerequisite that the Board must have considered the testimony or determined the relevancy in the prior opposition, or that the adverse party actually attended the deposition when originally taken); Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 9 USPQ2d 1061, 1063 n.2 (TTAB 1988) (motion to use testimony from prior district court proceeding granted as uncontested and right to recall the witness waived since no request to do so was made), rev’d on other grounds, 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989); Oxy Metal Industries Corp. v. Technic, Inc., 189 USPQ 57, 58 (TTAB 1975) (motion to rely on testimony from prior cancellation proceeding between the parties granted, subject to applicant’s right to recall witnesses), summary judgment granted, 191 USPQ 50 (TTAB 1976); Izod, Ltd. v. La Chemise Lacoste, 178 USPQ 440 (TTAB 1973).

 2.   See Threshold.TV Inc. v. Metronome Enterprises Inc., 96 USPQ2d 1031, 1035 n.8 (TTAB 2010) (the term "testimony," as used in Trademark Rule 2.122(f), has been construed to mean only trial testimony, or a discovery deposition which was used, by agreement of the parties, as trial testimony in the other proceeding); Marcon Ltd. v. Avon Products Inc., 4 USPQ2d 1474, 1475 n.3 (TTAB 1987) (discovery deposition from previous proceeding to which applicant was not a party would not be admissible under this rule, but in this case, it was made of record by another means); Philip Morris Inc. v. Brown & Williamson Tobacco Corp., 230 USPQ 172, 182 (TTAB 1986) (cf. dissent at 182 n.13 contending that discovery deposition should have been admitted as admission against interest).

 3.   Threshold.TV Inc. v. Metronome Enterprises Inc., 96 USPQ2d 1031, 1035 (TTAB 2010).

 4.   See, e.g., Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1467 n.4 (TTAB 2016) (motions for leave to use testimony and evidence introduced in a civil action granted as uncontested); Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 9 USPQ2d 1061, 1063 n.2 (TTAB 1988) (evidence on the case); Oxy Metal Industries Corp. v. Technic, Inc., 189 USPQ 57, 58 (TTAB 1975) (summary judgment evidence).