Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd.

PUBLISHED

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

ROSENRUIST-GESTAO E SERVICOS 

LDA, formerly known as

Rosenruist-Gestao E Servicos

Sociedade Unipessoal LDA,

Plaintiff-Appellee,  No. 06-1588

v.

VIRGIN ENTERPRISES LIMITED,

Defendant-Appellant.



Appeal from the United States District Court

for the Eastern District of Virginia, at Alexandria.

Claude M. Hilton, Senior District Judge.

(1:06-mc-00007-CMH)

Argued: March 16, 2007

Decided: December 27, 2007

Before WILKINSON and TRAXLER, Circuit Judges, and

WILKINS, Senior Circuit Judge.

Reversed and remanded by published opinion. Judge Traxler wrote

the majority opinion, in which Senior Judge Wilkins joined. Judge

Wilkinson wrote a dissenting opinion.

COUNSEL

ARGUED: James Wilson Dabney, FRIED, FRANK, HARRIS,

SHRIVER & JACOBSON, L.L.P., New York, New York, for Appel-

2 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

lant. Douglas Vernon Rigler, YOUNG & THOMPSON, Arlington,

Virginia, for Appellee. ON BRIEF: Darcy M. Goddard, FRIED,

FRANK, HARRIS, SHRIVER & JACOBSON, L.L.P., New York,

New York, for Appellant. Andrew J. Patch, Jeff Goehring, YOUNG

& THOMPSON, Arlington, Virginia, for Appellee.

OPINION

TRAXLER, Circuit Judge:

Rosenruist-Gestao E Servicos LDA ("Rosenruist") is a Portuguese

company that seeks to obtain a United States trademark registration

and enjoy the benefits that accompany ownership of a registered mark

under the Lanham Act. Virgin Enterprises Ltd. ("VEL"), a British

conglomerate that owns numerous United States registrations,

opposes the registration of Rosenruist’s mark and commenced an

administrative proceeding before the Trademark Trial and Appeal

Board ("TTAB") against Rosenruist to prevent the registration. When

Rosenruist refused to appear voluntarily for a Rule 30(b)(6) deposi-

tion under the procedural rules promulgated by the Patent and Trade-

mark Office ("PTO"), see 37 C.F.R. § 2.123 (2006), the district court

issued a subpoena under 35 U.S.C.A. § 24 directing Rosenruist to

produce a designee to testify on behalf of the corporation at a deposi-

tion in Virginia. The district court refused Rosenruist’s request to

quash the subpoena and then subsequently imposed sanctions against

Rosenruist when it failed to attend the deposition.

Seeking to ensure Rosenruist’s cooperation, VEL filed a motion to

compel Rosenruist, on pain of contempt sanctions, to designate its

Rule 30(b)(6) representative and appear for the corporate deposition

as directed by the subpoena. Notwithstanding its earlier ruling that

Rosenruist had been properly served with a valid subpoena for a Rule

30(b)(6) deposition, the court determined that it could not require

Rosenruist to produce a corporate designee for the deposition unless

that designee personally resided within the district of the issuing

court. Because there are no individuals residing within the Eastern

District of Virginia who Rosenruist could designate as its witness

under Rule 30(b)(6), the court denied VEL’s request to compel an

appearance.

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 3

VEL appeals this ruling. For the reasons that follow, we reverse.

I.

Rosenruist filed an application in December 2002 with the PTO to

register the mark VIRGIN GORDA under section 1(b) of the Lanham

Act. See 15 U.S.C.A. § 1051(b) (West Supp. 2007). At the time,

Rosenruist had not sold any products in the United States or estab-

lished a business presence here. Section 1(b) of the Act permits an

applicant to seek trademark registration based on the applicant’s

intent to use the trademark in commerce rather than the actual use of

the mark, provided that the applicant later files "a verified statement

that the mark is in use in commerce." See 15 U.S.C.A. § 1051(d)(1)

(West Supp. 2007).1

Rosenruist applied to register based on its intent to use the mark

VIRGIN GORDA in connection with forty-one categories of goods,

including "[b]ags, purses, . . . traveling bags, trunks, make-up bags

and empty vanity cases, document holders, umbrellas, [and] hand-

bags," as well as various kinds of clothing and footwear. J.A. 46. In

its application with the PTO, Rosenruist appointed various members

of the Virginia-based law firm prosecuting the application as "domes-

tic representatives" under 15 U.S.C.A. § 1051(e) to act as Rosenru-

ist’s designees "upon whom notices or process in proceedings

affecting this mark may be served." J.A. 52.

Initially, the PTO’s examining attorney refused registration on the

basis that the VIRGIN GORDA mark is "primarily geographically

deceptively misdescriptive," 15 U.S.C.A. § 1052(e)(3) (West Supp.

2007), explaining that Virgin Gorda is an island located within the

British Virgin Islands and that its proposed use would cause the pub-

1

Although the owner of a mark may apply for registration based on his

intent to use the mark in the future, the mark is not registrable until it has

actually been used in commerce and the applicant has filed a statement

verifying such use. See 15 U.S.C.A. §§ 1051(b), (d). This requirement

reflects the fundamental principle in American trademark law that own-

ership rights flow from actual use of the mark in commerce. See Emer-

gency One, Inc. v. American Fire Eagle Engine Co., 332 F.3d 264, 267

(4th Cir. 2003).

4 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

lic to mistakenly believe that Rosenruist’s goods bearing this mark

came from the Virgin Islands. Ultimately, however, the examining

attorney agreed with Rosenruist that there was insufficient basis for

believing that the misdescription would be a material factor in the

consuming public’s purchasing decisions, withdrew the refusal to reg-

ister, and caused the PTO to publish the mark in its Official Gazette.

See 15 U.S.C.A. § 1062(a) (West Supp. 2007).

In July 2004, VEL filed a Notice of Opposition with the PTO. See

15 U.S.C.A. § 1063(a) (West Supp. 2007). VEL has a substantial

presence in the United States through a vast array of businesses such

as Virgin Atlantic Airways, Virgin Records, Virgin Mobile, Virgin

Wines, and Virgin Digital. The VEL conglomerate and its related

companies sell and distribute a wide variety of goods and services

under the registered VIRGIN mark, including clothing, cosmetics,

luggage, bags, wallets, umbrellas, records and CDs, telecommunica-

tions products, airline and travel-related services, and restaurant and

hotel services. VEL asserted that it would be damaged by the pro-

posed VIRGIN GORDA registration because it is confusingly similar

to VEL’s VIRGIN mark. Under the trademark practice rules adopted

by the PTO, VEL conducted limited discovery through written ques-

tions, but it did not seek to conduct a discovery deposition prior to the

expiration of the discovery period. See 37 C.F.R. § 2.120(a).

In December 2005, VEL, pursuant to Rule 30(b)(6) of the Federal

Rules of Civil Procedure, sought to conduct a testimonial deposition

of Rosenruist to present in evidence at trial before the TTAB.2 When

2

We note that the discovery period had expired by the time VEL

requested Rosenruist appear for a Rule 30(b)(6) deposition. In opposition

proceedings before the TTAB, discovery depositions and testimonial

depositions for presentation at trial are treated very differently. Compare

37 C.F.R. § 1.120 (2006) with 37 C.F.R. § 1.123 (2006); see generally

Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 U.S.P.Q. 861

(T.T.A.B. 1979). A deposition taken pursuant to Rule 30(b)(6) strikes us

as a discovery tool, given its general purpose of permitting the examining

party to discover the corporation’s position via a witness designated by

the corporation to testify on its behalf. Nevertheless, we are not faced

today with the issue of whether the PTO’s rules allow a Rule 30(b)(6)

deposition to be taken during the testimony periods set by the TTAB.

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 5

Rosenruist refused to appear voluntarily in the United States for an

oral deposition, VEL moved pursuant to the PTO’s rules of procedure

to compel Rosenruist to identify a Rule 30(b)(6) representative and

produce that person to testify for the corporation at an oral deposition

in Portugal. See 37 C.F.R. § 2.123(a)(2) (2006). The TTAB denied

VEL’s motion to compel, noting that, according to its manual of pro-

cedure, a party residing in a foreign country may be compelled to

appear for an oral testimonial deposition only through the procedures

provided in The Hague Convention or the issuance of letters rogatory

to the appropriate Portuguese legal authority. See Trademark Trial

and Appeal Board Manual of Procedure ("TBMP") §§ 703.01(a),

(f)(3) (2d ed. 2003).

In January 2006, VEL served Thomas Perkins — one of the law-

yers designated by Rosenruist as its representative under § 1051(e) —

with a Rule 30(b)(6) deposition subpoena directing the Rosenruist

corporation to appear in McLean, Virginia, and produce the "person

having [the] most knowledge" regarding, among other topics, "[t]he

factual representations made in [Rosenruist’s trademark] Applica-

tion." J.A. 140, 142.

The subpoena was issued by the district court for the Eastern Dis-

trict of Virginia pursuant to 35 U.S.C.A. § 24, which provides in per-

tinent part:

The clerk of any United States court for the district wherein

testimony is to be taken for use in any contested case in the

[PTO], 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

The magistrate judge below concluded that Rosenruist did not contest

VEL’s right to seek the Rule 30(b)(6) testimony, and Rosenruist has not

challenged that conclusion on appeal. Thus, we assume for purposes of

this appeal that the Rule 30(b)(6) deposition sought by VEL is a testimo-

nial deposition like any other under the PTO’s procedures.

6 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

to the attendance of witnesses . . . shall apply to contested

cases in the [PTO].

35 U.S.C.A. § 24 (West 2001).

Rosenruist moved pursuant to Rule 45(c)(3)(A) to quash the sub-

poena, see Fed. R. Civ. P. 45(c)(3)(A), arguing that the district court

lacked the authority to subpoena a foreign resident to appear in the

United States for a deposition, that VEL was attempting to circum-

vent the proper procedure for compelling Rosenruist’s testimonial

deposition as outlined by the TTAB in its order denying VEL’s initial

motion to compel, and that service of the subpoena on counsel for

Rosenruist was ineffective even if the subpoena was valid.

The magistrate judge concluded that the subpoena was properly

issued and valid under 35 U.S.C.A. § 24 and rejected Rosenruist’s

argument that § 24 did not give the district court subpoena power over

non-resident foreign corporations. The magistrate judge also con-

cluded that service of the subpoena on counsel for Rosenruist was

effective because Rosenruist, in conjunction with its registration

application, had designated counsel to accept service of "notices or

process in proceedings affecting the mark." 15 U.S.C.A. § 1051(e)

(West Supp. 2007). Accordingly, on March 2, 2006, the magistrate

judge entered an order denying Rosenruist’s motion to quash and

directing Rosenruist "to designate a Rule 30(b)(6) witness residing or

being within this judicial district to appear for deposition by March

15, 2006." J.A. 185. Rosenruist filed objections to the order of the

magistrate judge, see Fed. R. Civ. P. 72(a), arguing primarily that the

district court lacked the authority to issue a subpoena to non-resident

aliens. The district court denied Rosenruist’s objections, finding that

the decision of the magistrate judge was not contrary to law and did

not rest on clearly erroneous factual findings. Rosenruist did not

appeal the order denying its motion to quash.

Following the court’s denial of Rosenruist’s motion to quash, VEL

re-served the subpoena and rescheduled the deposition. Rosenruist,

however, refused to produce a Rule 30(b)(6) designee at the deposi-

tion. Instead, counsel for Rosenruist appeared and announced that

Rosenruist did not intend to designate a representative to testify on

behalf of the corporation as there was no such person "residing or

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 7

3

being" within the Eastern District of Virginia. J.A. 259. VEL then

sought and obtained sanctions against Rosenruist for its failure to

appear at the deposition. The magistrate judge ordered that Rosenruist

pay the legal fees and costs incurred by VEL in connection with coun-

sel’s preparation for and appearance at the deposition.

On March 31, 2006, in view of Rosenruist’s continued belief that

it was neither required nor able to comply with the subpoena, VEL

moved the district court for an order compelling Rosenruist to obey

the subpoena, which the court had already deemed valid, and to pro-

duce an appropriate representative under Rule 30(b)(6) to be deposed

on the subjects identified in the subpoena. VEL argued that, because

a corporation can only testify through its individual representatives,

Rosenruist was technically the witness in a Rule 30(b)(6) deposition.

And, because Rosenruist had designated a Virginia resident as domes-

tic representative under 15 U.S.C.A. § 1051(e), it was within the judi-

cial district wherein the deposition testimony would be taken. See 35

U.S.C.A. § 24. VEL asserted that "Rosenruist can no more refuse to

attend its own deposition than can any other alien corporate litigant

that is subject to the Court’s in personam jurisdiction." J.A. 345-46.

In response, Rosenruist argued that all of its potential Rule 30(b)(6)

designees were foreign citizens residing outside the United States and

beyond the reach of the court’s subpoena power under 35 U.S.C.A.

§ 24; that the court did not even have personal jurisdiction over

Rosenruist, which had not conducted any business in the country; and

that Rosenruist, as a corporation, did not qualify as a witness under

35 U.S.C.A. § 24 because the statute pertains only to subpoenas

directed to natural person witnesses.

After hearing VEL’s motion to compel, the magistrate judge con-

cluded that, even though Rosenruist had been properly served with a

valid subpoena, Rosenruist was not required to produce a Rule

30(b)(6) designee unless that designee resided within the district. The

decision of the magistrate judge rested on his conclusion that the term

"witness" as used in the statute applied only to natural persons. The

court instructed Rosenruist to file a declaration indicating that there

3

Meanwhile, Rosenruist, through counsel, attended and participated

fully in the testimonial depositions of various VEL officers.

8 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

was no officer, director, or managing agent of Rosenruist residing in

the district who could address the topics listed in the subpoena. Like-

wise, the court instructed Rosenruist to include in its declaration a

statement regarding whether there resided within the district "other

persons" who "consent[ed] to testify on its behalf." J.A. 409. Because

the magistrate judge did not compel Rosenruist to produce a Rule

30(b)(6) designee but did require Rosenruist to respond with the

aforementioned declaration, the magistrate judge issued an order

"grant[ing] in part and deny[ing] in part" VEL’s motion to compel.

J.A. 381. Following the hearing, Rosenruist filed a declaration stating

that there was "no officer, director, or managing agent or other person

who consents to testify on Rosenruist’s behalf in this District," J.A.

414.

VEL filed objections to the magistrate judge’s order, arguing that

35 U.S.C.A. § 24 did not limit "witness" to natural persons and that,

therefore, a corporation could be compelled to appear at a deposition

regardless of where the Rule 30(b)(6) designee might personally

reside. The district court again concluded that the ruling of the magis-

trate judge was not clearly erroneous or contrary to law. VEL then

filed this appeal.

II.

Before turning to the particular arguments of the parties, we

believe it is helpful to consider very briefly the role of the district

court in the context of an opposition proceeding before the TTAB, as

well as the interplay between the Federal Rules of Civil Procedure

and the PTO’s rules of procedure.

The TTAB is an administrative tribunal of the PTO with jurisdic-

tion over inter partes challenges to the registration of trademarks. See

15 U.S.C.A. § 1067(a) (West Supp. 2007).4 Procedure in inter partes

4

An inter partes proceeding before the TTAB is an adversarial action

between parties regarding the registrability of a proposed trademark. An

inter partes proceeding can take the form of an opposition proceeding,

see 15 U.S.C.A. § 1063 (West 1997 & Supp. 2007); a cancellation pro-

ceeding, see 15 U.S.C.A. § 1064 (West 1997 & Supp. 2007); an interfer-

ence proceeding, see 15 U.S.C.A. § 1066 (West Supp. 2007); or a

concurrent use proceeding, see 37 C.F.R. § 2.42 (2006).

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 9

matters diverges from that in district court at the trial stage, in that the

taking of testimony does not occur in the presence of the TTAB.

Instead, testimony is taken by deposition during set testimony peri-

ods, and the TTAB resolves all factual issues based on the written

record submitted by the parties. See 37 C.F.R. §§ 2.121, 2.123, 2.125

(2006).

Inter partes proceedings before the TTAB are governed by the

Rules of Practice in Trademark Cases adopted by the PTO and set

forth in Part 2 of Title 37 of the Code of Federal Regulations. See 35

U.S.C.A. § 23 (West 2001) (granting the Director of the PTO the

authority to "establish rules for taking affidavits and depositions

required in cases in the [PTO]"). The PTO’s rules were "adapted from

the Federal Rules [of Civil Procedure], with modifications appropriate

to the administrative process." Yamaha Int’l Corp. v. Hoshino Gakki

Co., 840 F.2d 1572, 1575 (Fed. Cir. 1988). Under the PTO’s rules,

the Federal Rules of Civil Procedure generally apply to all phases of

inter partes proceedings, see 37 C.F.R. § 2.116(a), including discov-

ery and the taking of depositions, see 37 C.F.R. § 2.120(a).

As an administrative tribunal of limited jurisdiction, the TTAB is

empowered only to decide whether a given trademark is registrable.

See 15 U.S.C.A. §§ 1067, 1068 (West Supp. 2007); 15 U.S.C.A.

§ 1070 (West 1997); Person’s Co. v. Christman, 900 F.2d 1565, 1571

(Fed. Cir. 1990). Although the TTAB has the authority to impose lim-

ited sanctions upon parties that fail to cooperate during discovery, see

37 C.F.R. §§ 2.120(e), (g), the TTAB lacks the authority to compel

witnesses through the subpoena power to appear for testimony in inter

partes proceedings. See 37 C.F.R. § 2.120(b); Consolidated Foods

Corp. v. Ferro Corp., 189 U.S.P.Q. 582, 583 (T.T.A.B. 1976).

Accordingly, Congress granted district courts subpoena authority

under 35 U.S.C.A. § 24 to command the appearance of witnesses in

administrative proceedings before the PTO. See Frilette v. Kimberlin,

508 F.2d 205, 207 (3d Cir. 1975) (en banc); Vogel v. Jones, 443 F.2d

257, 259 (3d Cir. 1971). Under this statute, district courts have "juris-

diction to . . . issu[e] . . . subpoenas" in PTO proceedings. Frilette,

508 F.2d at 207. This narrow jurisdictional grant assigns district

courts the limited function in contested PTO matters of "issu[ing] and

enforc[ing] subpoenas in connection with the preparation of evidence

10 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

for submission" to the administrative tribunal. Id. at 209. Thus, § 24

assigns a supportive role to the district courts to ensure the smooth

functioning of the procedures adopted by the PTO. See id. at 210

(describing the function of the district court as "co-operatively com-

plementing" the PTO) (internal quotation marks omitted).

A.

With this context in mind, we turn to VEL’s challenge to the con-

clusion of the magistrate judge that "witness" in 35 U.S.C.A § 24

refers only to natural persons and not to corporations or other juristic

persons. The effect of the magistrate judge’s conclusion was that,

despite the fact that Rosenruist itself was properly served a valid sub-

poena directing it to designate a corporate representative for a Rule

30(b)(6) deposition of the corporation, the court could not require

Rosenruist to produce its designee unless the designee was "residing

or being within" the Eastern District of Virginia.

For the reasons set forth below, we agree with VEL that the term

"witness," as used in the statute, is not limited to natural persons and

allows the court to reach corporations and other juristic persons.

Because the unappealed order of March 2, 2006, established for pur-

poses of this case that the subpoena was valid and that Rosenruist, as

the subject of the subpoena, was required to obey it, it follows that

the district court should have granted VEL’s motion to compel.

1.

As we noted above, the PTO’s rules of practice generally incorpo-

rate the deposition procedures prescribed by the Federal Rules of

Civil Procedure, specifically including Rule 30(b)(6). See 37 C.F.R.

§ 2.120(b) (2006). Pursuant to Rule 30(b)(6), a party may name a cor-

poration as a deponent, in either a notice of deposition or a subpoena:

A party may in the party’s notice and in a subpoena name

as the deponent a public or private corporation or a partner-

ship or association or governmental agency and describe

with reasonable particularity the matters on which examina-

tion is requested. In that event, the organization so named

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 11

shall designate one or more officers, directors, or managing

agents, or other persons who consent to testify on its behalf,

and may set forth, for each person designated, the matters

on which the person will testify.

Fed. R. Civ. P. 30(b)(6).

Prior to the adoption of this rule in 1970, a party wishing to estab-

lish the knowledge of a corporate entity was forced to identify and

subpoena a specific officer or representative of the corporation who

qualified as a director, officer, or managing agent. See Founding

Church of Scientology of Washington, D.C., Inc. v. Webster, 802 F.2d

1448, 1451 (D.C. Cir. 1986). That practice was supplemented with

the addition of Rule 30(b)(6), which allows the examining party to

seek the corporation’s testimony without regard to who actually pro-

vides the testimony on behalf of the organization. If "[t]he party seek-

ing discovery . . . simply name[s] the corporation . . . as the

deponent," it becomes "the duty of the corporation to name one or

more persons who consent to testify on its behalf . . . as to matters

known or reasonably available to the corporation." 8A Charles Alan

Wright & Arthur R. Miller, Federal Practice and Procedure § 2102,

at 30-31 (2d ed. 1994). Essentially, "[i]n a Rule 30(b)(6) deposition,

there is no distinction between the corporate representative and the

corporation." Sprint Commc’ns. Co. v. Theglobe.com, Inc., 236

F.R.D. 524, 527 (D. Kan. 2006).

Thus, like any person named in a subpoena to appear as a deponent

or witness, a corporation may be named in a subpoena issued under

Rule 45, which "command[s] each person to whom it is directed to

attend and give testimony" at a trial or deposition. Fed. R. Civ. P.

45(a)(1)(C) (emphasis added); see Fed. R. Civ. P. 30(a)(1) ("A party

may take the testimony of any person, including a party, by deposi-

tion upon oral examination . . . .") (emphasis added). Thus, the word

"person" in Rule 45 is not limited merely to "natural persons" but

includes juristic persons like corporations and governments as well.

Cf. Yousuf v. Samantar, 451 F.3d 248, 257 (D.C. Cir. 2006) (explain-

ing that "[t]he term ‘person’ as used in the Federal Rules of Civil Pro-

cedure consistently means . . . natural persons and business

associations . . . [as well as] governments" and holding that "the Gov-

ernment is a ‘person’ subject to subpoena under Rule 45").

12 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

If a party to an inter partes proceeding wishes to take the trial testi-

mony of an adverse party or an official of an adverse party who is

unwilling to appear voluntarily, then the examining party must secure

attendance of the deponent by subpoena. See Health-Tex, Inc. v. Oka-

bashi (U.S.) Corp., 18 U.S.P.Q.2d 1409, 1410 (T.T.A.B. 1990). As

mentioned previously, the TTAB is not vested with the power to sub-

poena witnesses in inter partes PTO cases. Under 35 U.S.C.A. § 24,

Congress instead granted to district courts the power to enforce the

rights of litigants to secure the presence of witnesses in contested pro-

ceedings in the PTO: "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 . . ." 35 U.S.C.A. § 24 (emphasis added).

We agree with VEL that the "witness" is not limited only to natural

persons. The PTO regulations expressly contemplate the use of Rule

30(b)(6) depositions in which the corporation is the "person" named

in the subpoena as the deponent. See 37 C.F.R. §§ 2.120(b),

2.124(b)(2). Nothing in the text of 35 U.S.C.A. § 24 suggests to us

that, in the context of a contested PTO action, the interplay between

Federal Rules 30(b)(6) and 45 operates differently. Indeed, the statute

expressly provides that, in contested PTO cases, "[t]he provisions of

the Federal Rules of Civil Procedure relating to the attendance of wit-

nesses . . . shall apply." 35 U.S.C.A. § 24. Nor do we see anything

in the statute indicating that Congress wished to tie the court’s power

to subpoena corporate testimony under Rule 30(b)(6) to the personal

residence of the individuals ultimately designated by the corporation

to testify on its behalf. Foreign corporations that are subject to the

personal jurisdiction of a district court can be and often are required

to produce officers, directors, or managing agents — regardless of

where such witnesses personally reside — in the United States for a

Rule 30(b)(6) deposition. See Custom Form Mfg., Inc. v. Omron

Corp., 196 F.R.D. 333, 336 (N.D. Ind. 2000); In re Honda Am. Motor

Co. Dealership Relations Litig., 168 F.R.D. 535, 540-42 (D. Md.

1996).

Accordingly, we do not agree with the magistrate judge’s narrow

interpretation of "witness," and we hold that corporations, as well as

natural persons, are subject to the issuance of Rule 30(b)(6) subpoe-

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 13

nas pursuant to 35 U.S.C.A. § 24. And, as a result, we believe the

magistrate judge incorrectly concluded that Rosenruist could avoid

designating and producing a Rule 30(b)(6) deponent because none of

its potential designees were personally "residing or being within" the

Eastern District of Virginia.

2.

Rosenruist contends that even if the corporation itself can be con-

sidered a "witness" under 35 U.S.C.A. § 24, rendering the individual

designee’s residence or location irrelevant for purposes of a corporate

subpoena, the subpoena was invalid because Rosenruist itself was not

"residing or being within" the district. Rosenruist has not developed

this argument except to assert that it lacks the required presence

because it "has no business activities, no managing agents, and no

agents consenting to testify within the district or anywhere in the

U.S." Brief of Appellee at 25. Additionally, Rosenruist points out, the

designation of a statutory agent for service under 15 U.S.C.A.

§ 1051(e) is not sufficient to subject a corporation to the court’s sub-

poena power under § 24.

Rosenruist also contends that the subpoena was not valid because

the Rosenruist corporation lacked the "continuous and systematic

contacts" with the Eastern District of Virginia necessary to support

the district court’s exercise of in personam jurisdiction. Helicopteros

Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 416 (1984); see

Ratliff v. Cooper Labs., Inc., 444 F.2d 745, 748 (4th Cir. 1971) (con-

cluding that the designation of a statutory agent for service was insuf-

ficient to confer general jurisdiction over an out-of-state corporation).

Although Rosenruist advances these arguments as separate chal-

lenges to the validity of the subpoena, they are essentially one and the

same argument — that Rosenruist is not subject to the court’s sub-

poena power under § 24 because Rosenruist lacks sufficient contacts

in the Eastern District of Virginia. We infer that Rosenruist views the

"residing or being" requirement of § 24 as commensurate with the

requirements for a court’s exercise of general jurisdiction over a

party.

14 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

We conclude these arguments are not properly before the panel

because the validity of the subpoena has already been determined.

Thus, we need not determine precisely what is required for a witness

to satisfy the statute’s "residing or being" component, although we

find no support for the notion that the statute requires the "systematic

and continuous" presence needed for the exercise of general jurisdic-

tion.5

The March 2, 2006, order rejected Rosenruist’s motion to quash in

which Rosenruist asserted in part that it was not subject to the court’s

subpoena power. The order established that the subpoena was valid

and that the requirements of 35 U.S.C.A. § 24 had been satisfied.

Rosenruist did not appeal this ruling.

Subsequently, in its opposition to VEL’s motion to compel a Rule

30(b)(6) designation and appearance, Rosenruist argued that the court

lacked in personam jurisdiction over it and therefore could not

enforce the subpoena against it. The court effectively rejected Rosen-

ruist’s jurisdictional argument and reiterated that Rosenruist was sub-

ject to the subpoena when it granted VEL’s motion in part and

ordered Rosenruist to designate a Rule 30(b)(6) witness or submit a

declaration that no qualifying witness resided or was present within

the district. The court, however, refused to require an appearance.

VEL, of course, appealed the latter portion of the order, and that

appeal is before us now. Rosenruist did not file a cross-appeal.

A prevailing party may urge an appellate court "to affirm a judg-

ment on any ground appearing in the record," Toll Bros., Inc. v. Dry-

vit Sys., Inc., 432 F.3d 564, 572 (4th Cir. 2005), and may do so

without having to file a cross-appeal, see Blum v. Bacon, 457 U.S.

132, 137 n.5 (1982). If the prevailing party raises arguments that seek

to alter or modify the judgment below, then a cross-appeal is required.

See El Paso Nat. Gas Co. v. Neztsosie, 526 U.S. 473, 479 (1999)

("Absent a cross-appeal, an appellee may urge in support of a decree

any matter appearing in the record, although his argument may

involve an attack upon the reasoning of the lower court, but may not

5

Were the issue before us, however, we would conclude that Rosenru-

ist’s activities in this case were sufficient to qualify it as "being within

[the] district."

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 15

attack the decree with a view either to enlarging his own rights there-

under or of lessening the rights of his adversary." (internal quotation

marks omitted)); see also JH ex rel. JD v. Henrico County Schl. Bd.,

326 F.3d 560, 567 n.5 (4th Cir. 2003) ("The general rule is that with-

out taking a cross-appeal, the prevailing party may present any argu-

ment that supports the judgment in its favor as long as the acceptance

of the argument would not lead to a reversal or modification of the

judgment . . . ." (internal quotation marks and alteration omitted)).

Here, Rosenruist asks us to affirm the court’s refusal to require it

to produce a Rule 30(b)(6) witness as commanded by the subpoena

based on Rosenruist’s lack of presence and the issuing court’s lack of

personal jurisdiction. As explained previously, the court below clearly

concluded that the subpoena was valid and that Rosenruist as a cor-

poration was subject to the subpoena. Thus, these particular argu-

ments, were the panel to accept them, would require us to modify the

court’s judgment below and enlarge Rosenruist’s rights thereunder.

Because Rosenruist did not assert a cross-appeal, we decline to con-

sider these issues.

B.

Rosenruist next contends that § 24 was enacted only to enforce the

rules and procedures developed by the PTO, and VEL’s reading of the

statute will permit it to exercise procedural rights beyond those estab-

lished by the PTO. See Frilette, 508 F.2d at 209-11 (rejecting the

notion that 35 U.S.C.A. § 24 allows a party to bootstrap itself into

additional means of discovery not provided by the PTO).

Relying on the TBMP (the TTAB’s Manual of Procedure) Rosen-

ruist suggests that the PTO’s rules do not permit the attendance of a

foreign witness to be secured by a subpoena. According to the TBMP,

a "party [who] wishes to take the trial testimony of an adverse party

or nonparty (or an official or employee of an adverse party or non-

party) residing in the United States . . . [who] is not willing to appear

voluntarily to testify . . . must secure the attendance of the witnesses

by subpoena." TBMP § 703.01(f)(2). The TBMP provides that for an

unwilling witness who resides in a foreign country, however, "[t]here

is no certain procedure for obtaining . . . the trial testimony deposition

of [such] a witness" and that the deposing party may obtain such testi-

16 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

mony through "the letter rogatory procedure or the Hague Convention

letter of request procedure." TBMP § 703.01(f)(3).

It is important to recognize that the TBMP is simply a manual

issued by the TTAB "to practitioners with basic information generally

useful for litigating cases before the [TTAB]," which expressly

acknowledges that it "does not modify, amend, or serve as a substitute

for any statutes, rules or decisional law and is not binding upon the

[TTAB]." TBMP, Intro. The TBMP does not provide, or even purport

to provide, authoritative interpretive guidance with regard to the

scope of 35 U.S.C.A. § 24 or any other statute. Rather, it merely sets

forth the TTAB’s informal opinion that the statute does not provide

authority for a district court to issue a subpoena to an unwilling for-

eign deponent. We are neither bound by the TBMP nor obligated to

consider its statutory interpretation particularly persuasive.

We conclude that reading the statute to permit the issuance of a

Rule 30(b)(6) subpoena to Rosenruist does not expand or add to the

procedures established by the PTO. As noted above, the PTO’s rules

of procedure allow for the use of Rule 30(b)(6) depositions in inter

partes cases and permit the taking of trial testimony "by depositions

upon oral examination." 37 C.F.R. § 2.123(a); see id. § 2.123(c)

("Depositions may be noticed for any reasonable time and place in the

United States.").6 The issue here simply involves the extent of the dis-

trict court’s subpoena power under § 24 to ensure that parties are able

to use the existing PTO inter partes procedures. VEL is not seeking

to exercise a right or use a procedure that the PTO has not provided.

C.

Finally, Rosenruist argues that the service of the subpoena was

6

The regulations relied upon in the dissenting opinion pertain to dis-

covery depositions, see 37 C.F.R. §§ 2.120(b), (c), as opposed to the tes-

timonial depositions at issue here. As such, these regulations do not

support the premise that our decision permits VEL to use § 24 as a means

of circumventing the PTO’s procedures. Likewise, 37 C.F.R.

§ 2.123(a)(2) is of no use in this case because it applies only when a

party seeks to take a testimonial deposition in a foreign country; VEL,

of course, does not desire to do so.

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 17

ineffective because it failed to comply with Rule 45(b)(1), which

requires the witness fee and reasonably estimated mileage to be ten-

dered at the time of service. See Fed. R. Civ. P. 45(b)(1); In re Den-

nis, 330 F.3d 696, 705 (5th Cir. 2003). We reject this argument. In

the March 2, 2006, order denying Rosenruist’s motion to quash, the

magistrate judge determined that service was effective. Rosenruist did

not appeal that order. The magistrate judge also reiterated that conclu-

sion in the May 2, 2006, order which is the subject of this appeal.

Because Rosenruist did not cross-appeal this portion of the court’s

decision, we decline to address it. See Pritchett v. Alford, 973 F.2d

307, 315 (4th Cir. 1992).

III.

For the foregoing reasons, we reverse the order of the district court

denying VEL’s motion to compel Rosenruist to obey the subpoena,

and we remand for further proceedings consistent with this opinion.

REVERSED AND REMANDED

WILKINSON, Circuit Judge, dissenting:

In a first for any federal court, my colleagues hold that a foreign

company that has no United States employees, locations, or business

activities must produce a designee to testify at a deposition in the

Eastern District of Virginia so long as it has applied for trademark

registration with a government office located there. 35 U.S.C. § 24

(2000). As a result, foreign witnesses can be compelled to travel to

the United States and give in-person deposition testimony at the

behest of any litigant in a trademark dispute, "for use in any contested

case in the Patent and Trademark Office" ("PTO") — though the

PTO’s own procedures call for obtaining testimony from foreign

companies through other means. Id.

The majority’s holding that this subpoena is enforceable is prob-

lematic for many reasons. It fails to properly apply the statute, 35

U.S.C. § 24, that is directly relevant to its decision, and it reaches a

result that is bound to embroil foreign trademark applicants in

lengthy, procedurally complex proceedings. It inverts longstanding

18 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

canons of construction that seek to protect against international dis-

cord, and it disregards the views of the PTO whose proceedings 35

U.S.C. § 24 is designed to aid. In view of the statutory text (see Sec-

tion I), interpretive canons, international relationships, and separation

of powers concerns (II), and the PTO’s own framework (III), I firmly

believe this subpoena must be quashed.

I recognize this is an extensive dissent. However, the brevity of the

majority’s conclusion belies its significance. No matter how one cuts

the cookie, the bottom line is that the majority enforces the subpoena.

In so doing, the majority creates a standard that is in fact a national

one: the PTO is located in the Eastern District of Virginia; applica-

tions for trademark registration are filed there; and subpoena enforce-

ment will frequently be sought in that district. Indeed, for any foreign

corporation without a pre-existing United States presence, the majori-

ty’s decision will be controlling. For this reason, among others, I

think this decision is unfortunate. The decision to extend the sub-

poena power under 35 U.S.C. § 24 to foreign companies situated sim-

ilarly to Rosenruist is one that is plainly before this court, and its

importance warrants full discussion.

I.

The first obstacle to the majority’s view is the language of the stat-

ute itself. The statute provides,

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.

35 U.S.C. § 24 (emphasis added). The majority argues correctly that

Rosenruist is a "witness" under this provision. My colleagues hold

properly that the term "‘witness’ is not limited only to natural per-

sons." Ante at 12. "[C]orporations, as well as natural persons, are sub-

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 19

ject to the issuance of Rule 30(b)(6) subpoenas pursuant to 35 U.S.C.

§ 24." Ante at 12-13. This is correct, and I agree with it fully.

The majority then gives short shrift, however, to the statute’s very

next words, which state that a party in patent proceedings may seek

to subpoena only a "witness residing or being within such district."

Id. (emphasis added). Through a strained interpretation of this case’s

procedural posture, the majority first claims that the issue of whether

Rosenruist is "residing or being" within the Eastern District of Vir-

ginia is "not properly before the panel because the validity of the sub-

poena has already been determined." Ante at 14. Thus, the majority

seems content to interpret only half of the relevant statutory phrase.

However, the majority then issues a conclusory statement, albeit in

dicta, that "Rosenruist’s activities in this case were sufficient to qual-

ify it as ‘being within [the] district.’" Ante at 14 n.5. It is not a good

idea to have a single sentence of dicta pass upon matters of such for-

eign and domestic import. As a result, the majority expresses its view

on the merits in a manner that avoids any need for explication, but is

simultaneously bound to influence how district courts interpret this

enactment.

The upshot of this ruling is painfully clear. The majority first

entangles foreign trademark applicants in a procedural web by misap-

plying basic principles of appellate process. It then flatly and wrongly

concludes that the statute affords no protection to the prospective

trademark registrants.

A more effective one-two punch could not have been landed upon

foreign trademark applicants. Because I think that the question of the

statute’s application is clearly before us and that Rosenruist cannot be

described, under any reasonable interpretation of 35 U.S.C. § 24, as

"residing or being" within the Eastern District of Virginia, I respect-

fully dissent from both the majority’s procedural and substantive con-

clusions.

A.

Because, through any lens, 35 U.S.C. § 24 is integral to the resolu-

20 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

tion of this case, I begin with a discussion of the statute itself. In plain

language, the statute limits the geographic scope of a PTO litigant’s

subpoena powers to those "residing or being" within a U.S. judicial

district. In ordinary use, limiting compulsory depositions to witnesses

"residing or being" within a district requires a physical presence or at

least sustained contacts in a district. The Random House Dictionary

of the English Language, for example, defines to "reside" as "to dwell

permanently or for a considerable time," and defines "to be" as "to

exist or live" or "to occupy a place or position." Random House Dic-

tionary of the English Language (2d. ed. 1987).1

The PTO itself has embraced a geographically constrained view of

the subpoena powers that § 24 confers with respect to its proceedings.

Its clearest guidance on this matter comes from its Trademark Trial

and Appeal Board Manual of Procedure. The manual states that a dis-

trict in which a domestic witness is "residing or being" is a district

"where the witness resides or is regularly employed." Trademark Trial

and Appeal Board Manual of Procedure ("TTAB Manual")

§ 703.01(f)(2) (2d ed. revision 1, 2004). If a PTO litigant wishes to

obtain testimony of an unwilling adverse party, the litigant "must

secure the attendance of the witness by subpoena . . . pursuant to 35

U.S.C. § 24 and Fed. R. Civ. P. 45, from the United States district

court in the Federal judicial district where the witness resides or is

regularly employed." Id. (emphasis added). As the majority notes, the

manual does not substitute for the statute itself or for the PTO’s regu-

lations, ante at 16, but the manual is entitled to respect as the PTO’s

own description of its "current practice and procedure under the appli-

cable authority." See TTAB Manual, Introduction.

1

Section 24’s limitation to witnesses "residing or being" in a district is

virtually unique and has not been the subject of prior judicial construc-

tion. Only three provisions of the U.S. Code, including this one, contain

the "residing or being" phrase. See 7 U.S.C. § 2354(a) (2000) (subpoena

power for contested cases in Plant Variety Protection Office); 50 U.S.C.

§ 207 (2000) (Civil War-era statute concerning "commercial intercourse

by and between persons residing or being within districts within the lines

of national military occupation in the States . . .").

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 21

B.

Rosenruist, a Portuguese company, cannot be described as "resid-

ing or being" in the Eastern District of Virginia within the meaning

given to these terms by the PTO or indeed with any meaning consis-

tent with ordinary use. Rosenruist has no physical or commercial

presence in the district, and no officers or employees either there or

anywhere in the United States. It has no facilities, buildings, or opera-

tions in the Eastern District and has not carried out commercial activi-

ties there or elsewhere in the country.

Virgin Enterprises Ltd. ("VEL"), which seeks in-person depositions

in the United States with Rosenruist officials, argues that Rosenruist

can nevertheless be compelled to testify because it has filed an appli-

cation for trademark registration with a government office located

within the Eastern District of Virginia, and is "affirmatively press-

[ing] a claimed right to issuance of a United States trademark registra-

tion." Brief of Appellant at 37. But a person or company is no more

"residing or being" within a district by virtue of seeking trademark

protection with an office located there than a person would be "resid-

ing or being" within a district because he or she applied for a license

without so much as setting foot in the territory. Filing an application

with a government office is a contact within a jurisdiction, but it does

not establish a physical presence or sustained contact akin to a pres-

ence within a district.

This trademark application and the attendant proceedings are

Rosenruist’s sole contacts with the district — as evidenced by the

way in which VEL subdivides paperwork and proceedings surround-

ing the single trademark application in an effort to portray multiple,

incidental contacts. Rosenruist designated attorneys as its representa-

tives for service of process in proceedings affecting its proposed

trademark, under a statute providing that if a company does not name

a representative, the Director of the Patent and Trademark Office will

be designated to fill the role. 15 U.S.C. § 1051(e) (2000). Appoint-

ment of an agent for service of process is a contact so minimal that

our circuit has held it cannot render a company subject to judicial

compulsion under any statute consistent with Due Process principles

limiting personal jurisdiction, much less under a statute whose lan-

guage requires more than the constitutional minimum. Ratliff v. Coo-

22 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

per Labs., 444 F.2d 745, 748 (4th Cir. 1971). Moreover, under

§ 1051, a trademark applicant always has a representative for service

of process as a result of registering a mark, whether by designation

or default — making this so-called contact no more than an aspect of

filing a trademark application with the PTO.

Nor can the existence of a case before the PTO mean that Rosenru-

ist is "residing or being" within the Eastern District of Virginia. VEL

contested Rosenruist’s trademark application by filing an opposition,

see 15 U.S.C. § 1063 (2000), generating a "contested case in the

Patent and Trademark Office," in which Rosenruist is the defendant.

But this is also a consequence that may obtain whenever a company

files an application for a trademark, because other companies or per-

sons are free to contest trademark registrations. Moreover, the exis-

tence of a "contested case in the Patent and Trademark Office" is

itself a precondition for a subpoena under § 24, separate from the stat-

ute’s second requirement that witnesses can only be subpoenaed in a

United States judicial district in which they are "residing or being."

It is highly implausible that Congress meant this separate "residing or

being" limitation to allow any witness, domestic or foreign, to be sub-

poenaed in the Eastern District whenever the statute’s apparently dis-

tinct first requirement is satisfied and there is a "contested case" in the

PTO.

In sum, the only contacts Rosenruist has had with the Eastern Dis-

trict of Virginia are the de minimis contacts from the act of filing for

trademark registration itself. This does not entitle VEL to enforce-

ment of the subpoena. Whatever consequences may ensue from

Rosenruist’s failure to appear is something Rosenruist might wish to

ponder, but the only question before us is whether the subpoena must

be quashed. I believe it must be. No matter how many times the act

of filing for a trademark application is repackaged and restated by

VEL, this act does not make up for the lack of any physical facilities,

business activities, or company employees within a district sufficient

to render a Portuguese company "residing or being" within the dis-

trict. This is true under the PTO’s own definition or under any defini-

tion consistent with the ordinary meaning of the limiting language

enacted by Congress.

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 23

C.

There is thus no question that 35 U.S.C. § 24 does not permit this

subpoena to be enforced. The majority — in enforcing the subpoena

and in concluding flatly that "Rosenruist’s activities in this case were

sufficient to qualify it as ‘being within [the] district’" — manages

astonishingly to say that the issue of the subpoena’s enforcement pur-

suant to 35 U.S.C. § 24 is somehow not before the court. Ante at 14.

This is too clever by half. The district court’s ultimate judgment was

that Rosenruist could not be compelled to give an in-person deposi-

tion because the conditions of 35 U.S.C. § 24 had not been met. See

ante at 8. The majority, however, discusses who may be a "witness"

under 35 U.S.C. § 24 and then re-labels the "residing or being"

requirement of § 24 as a question bearing upon the "validity" of the

subpoena, as though that will somehow make the statute go away. See

ante at 10-14. But courts cannot interpret one word in a prepositional

phrase and ignore another. By picking only selective portions of § 24

to interpret, the majority manages to enforce the subpoena, in viola-

tion of the explicit standard Congress has given us to apply.

With its actions, the majority ignores the fact that, as an appellate

court, we sit to review judgments, not the reasons underlying such

judgments. The district court rejected VEL’s objections to the magis-

trate’s denial of VEL’s motion to compel Rosenruist’s appearance at

a deposition in this country. This is the judgment order VEL appeals.

But the majority has elevated reasons into judgments. In focusing on

the district court’s construction of the term "witness," the majority

fails to consider an alternate and valid reason for affirming the district

court’s judgment — namely, that Rosenruist cannot be deemed to

"be" or "reside" within the district as § 24 requires. The majority

cleaves § 24 in two, and finds that the district court rested its judg-

ment on only part of the statute in question. But this is not the case:

the enforceability of the subpoena rests on both the "witness" and the

"residing or being" requirements, and we review the district court’s

judgment that the subpoena is not enforceable as to Rosenruist’s

deposition as a whole.

This is precisely how the parties understood the issue on appeal.

See Brief of Appellant at 3 ("This case concerns the scope of the Dis-

trict Court’s subpoena power under 35 U.S.C. § 24."); Brief of Appel-

24 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

lee at 4 (at issue is "whether the district court correctly denied VEL’s

motion to compel, subsequent to the Court’s satisfying itself that

Rosenruist had no ‘witness’ under 35 U.S.C. § 24 residing or being

in the district"). Rosenruist is seeking to affirm the judgment declin-

ing to enforce the subpoena, not to modify any part of it, and a party

seeking affirmance of a judgment need not lodge a cross-appeal to

have that affirmance rest on an alternate ground. In view of the fact

that this is a single judgment, and Rosenruist prevailed on that judg-

ment, one cannot possibly saddle Rosenruist — as the majority has

— with the obligation to file a cross-appeal. This at best creates busy

work and at worst compounds the procedural snares the majority has

devised for foreign companies at the outset of their trademark applica-

tions.

Furthermore, despite what I respectfully suggest is an incorrect ren-

dering of the case’s procedural posture, the majority cannot hide the

true import of its opinion: that this subpoena is in its view perfectly

enforceable. The majority reaches this conclusion by eschewing any

interpretation of the "residing or being" language of 35 U.S.C. § 24,

while at the same time expressing unequivocally its view on the mer-

its of this question in a conclusory footnote. Ante at 14 n.5. This unex-

plained declaration is also error. It is inescapable that Rosenruist is

not "residing or being" within the Eastern District of Virginia. There-

fore, the subpoena may not be enforced.

II.

A.

My problems with the majority’s decision do not end with what I

respectfully suggest is its erroneous and conclusory view of 35 U.S.C.

§ 24. I also disagree with the disregard of cautionary canons of inter-

pretation that apply to statutes bearing upon other nations’ interests

and international norms. The reach of American law in "situations

involving one or more foreign contacts," Romero v. Int’l Terminal

Operating Co., 358 U.S. 354, 382 (1959), is constrained by maxims

that "protect against unintended clashes between our laws and those

of other nations which could result in international discord," EEOC

v. Arabian American Oil Co., 499 U.S. 244, 248 (1991) (citing

McCulloch v. Sociedad Nacional de Marineros de Honduras, 372

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 25

U.S. 10, 20-22 (1963)). The majority decision risks such disruption

by enabling litigants to compel in-person depositions from foreign

companies with the most minimal U.S. contacts, as a condition of

those companies obtaining a legal protection that is critical to interna-

tional commerce.

A sense of comity, not needless friction, should govern this whole

area. The contours of the "rule of construction . . . derived from the

principle of ‘prescriptive comity,’" Hoffman-La Roche Ltd. v. Empa-

gran S.A., 542 U.S. 155, 164 (2004) (internal citations omitted), are

fatal to the majority’s view of § 24. The rule requires that judges "or-

dinarily construe[ ] ambiguous statutes to avoid unreasonable interfer-

ence with the sovereign authority of other nations" and assumes "that

legislators take account of the legitimate sovereign interests of other

nations when they write American laws." Id. While the majority of

course is not trying to tell Portuguese authorities how to enforce Por-

tuguese law, it is wading into international waters, not only without

congressional authority but in the face of contrary congressional

intent. All canons of statutory construction mandate caution in this

context. By brushing aside 35 U.S.C. § 24 as well as the canons that

should inform its construction, the majority instead mandates maxi-

mum levels of foreign corporate exposure to American judicial pro-

cess. This approach does anything but help "the potentially

conflicting laws of different nations work together in harmony . . .

particularly needed in today’s highly interdependent commercial

world." Hoffman-La Roche, 542 U.S. at 164-65.

This presumption of comity, so helpful to good will and active

commerce among nations, exists even with respect to statutes that

specify no geographic limit. It emphatically exists with respect to stat-

utes such as § 24 whose terms indicate that Congress wanted a limited

territorial reach. Courts work from the "commonsense notion that

Congress generally legislates with domestic concerns in mind." Small

v. United States, 544 U.S. 385, 388 (2005) (quoting Smith v. United

States, 507 U.S. 197, 204 n.5 (1993)). Indeed, courts do so even when

"the more natural reading of the statutory language" would be to

include foreign companies or conduct. Hoffman-La Roche, 542 U.S.

at 174. For instance, Small held that a statute referring to a person

"convicted in any court" did not apply to persons convicted in foreign

courts, in part by invoking canons counseling limited construction of

26 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

general statutes in international contexts. 544 U.S. at 388 (emphasis

added). It cannot be contended that these canons somehow do not

apply to § 24, which is not even written in universal terms, but con-

tains terms of geographic limitation.

These interpretive principles are too important for my good col-

leagues simply to ignore. It hardly respects the legitimate interests of

other nations, see Hoffman-La Roche, 542 U.S. at 164, to allow liti-

gants to compel in-person testimony in the Eastern District from rep-

resentatives of foreign companies whose only act within our borders

has been the filing of a trademark application. In giving regard to

other nations’ interests, the Supreme Court has held that judges "must

assume" Congress ordinarily seeks to follow the Restatement of For-

eign Relations Law in determining whether a U.S. statute applies. Id.

at 164. The Restatement provides that a nation will not exercise its

jurisdiction "when the exercise of such jurisdiction is unreasonable,"

Rest. (Third) Foreign Rels. Law § 403(1) (2006), and that a foreign

person or company’s "connections, such as nationality, residence, or

economic activity" to the state are one relevant consideration, id.

§ 403(2)(b). To make the price of a simple trademark application an

overseas trip by a company officer or officers to answer a deposition

is to impose a substantial burden from a minimal connection.

I realize that when a subpoena is served upon a corporation, the

corporation can designate whom it wishes to produce for the sub-

poena. See Fed R. Civ. P. 30. But this provides no meaningful relief,

because an organization’s Rule 30 designee must be fully prepared to

"testify as to matters known or reasonably available to the organiza-

tion." Fed. R. Civ. P. 30(b)(6). The heart of Rosenruist’s predicament

is that it has no U.S. employees or U.S. operations, and consequently

that no person within this country is equipped to testify "as to matters

known or reasonably available" to the company. Id. VEL is surely

correct that Rosenruist could change this, but only at considerable

expense and over time. Rosenruist could hire a lawyer or other U.S.

resident to serve as its representative for Rule 30 purposes, and pro-

vide the newly minted designee with a crash course in the matters of

corporate strategy and intellectual property on which the company’s

testimony was sought. But a company’s right to pay for a capable

U.S.-based representative and then divert its officers to fully prepare

the representative is hardly a compliance option that renders the

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 27

extension of § 24 to foreign companies such as Rosenruist a minimal

imposition.

It may or may not be burdensome for the designee of a company

large or small to fly from Portugal or India or Japan for a deposition

in the Eastern District of Virginia. It may be that technology in time

may provide less burdensome alternatives. District courts always have

the power to quash subpoenas as posing an "undue burden," but litiga-

tion over burdensomeness is not inconsequential and imposes a bur-

den in its own right upon trademark applicants. See Fed. R. Civ. P.

45. If Congress had struck a balance that imposed these costs upon

foreign companies with de minimis United States contacts, that would

be one thing, but for courts to impose these burdens based upon a for-

eign company’s minimal contacts here reads a statute that is at best

ambiguous in a manner that impinges on other nations’ interests and

risks at least a measure of international discord.

B.

The majority’s disregard for these cautionary canons of construc-

tion invites retaliatory actions of all sorts. The Supreme Court has

sought to avoid applications of U.S. statutes to foreign companies or

conduct that could generate "retaliatory action from other nations,"

McCulloch, 372 U.S. at 21, and "disrupti[on] of international com-

merce," Romero, 358 U.S. at 384. Yet the new burden that the major-

ity places upon foreign companies to give in-person depositions in our

country simply because they filed for registration of their trademark

— a burden that so far as I can tell has never before been imposed

by any court under § 24 — risks just such retributive measures. It is

simply unrealistic to suppose that other nations will sit quietly while

their own companies and citizens are subjected to depositions in this

country. It is thoroughly realistic to anticipate their imposing corre-

sponding burdens and inconveniences upon Americans who seek

trademark protection for their own activities abroad.

Congress has indicated that trademark protection is vital to com-

merce since it first made actionable "the deceptive and misleading use

of marks" based upon the harms that such abuses cause to interstate

commerce. 15 U.S.C. § 1127 (2000). It declared that the trademark

system sought "to protect persons engaged in such commerce against

28 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

unfair competition" that would ensue if one company could use

another’s name, logo, or other mark to benefit from the other’s good

will and sow confusion among consumers. Id. Foreign companies are

no less dependent upon the protection of their products and properties

for their commercial activities. The imposition of new burdens upon

foreign companies, when they take no more than the first perfunctory

step to register their trademark here, undermines a predicate of inter-

national commerce that a more modest conception of the judicial

function would avoid.

The majority also fails to inquire as to "the degree to which the

desirability of such regulation [subpoena authority] is generally

accepted" and "the extent to which the regulation is consistent with

the traditions of the international system," as well as "the character of

the activity to be regulated." Rest. (Third) Foreign Rels. Law

§ 403(2)(c), § 403(2)(f). The majority does not ask whether, in autho-

rizing subpoenas of foreign witnesses to the Eastern District of Vir-

ginia for in-person depositions, it is rebuking a consensus surrounding

reciprocal reductions in barriers to the protection of intellectual prop-

erty. Under the Madrid Protocol Relating to the Madrid Agreement

Concerning International Registration of Marks, which the United

States joined in 2003, an increasing number of nations permit the citi-

zens of signatory states to seek trademark protection through a single

transnational application, without filing new papers from country to

country.2 This agreement does not by any means decide the issue, but

the reciprocal actions of these signatory nations suggest no basis in

trademark law for the procedural hurdle that the majority today erects.

And insofar as the Protocol indicates that a norm of reciprocity carries

weight in this arena, other states could well consider my colleagues’

imposition of this novel procedural hurdle upon their companies to be

an invitation to impose corresponding retaliatory hurdles of their own.

Nor can the majority claim a basis for its decision by asserting that

there is a need for in-person testimony in cases where a trademark

2

Signatory nations retain the right to refuse applications filed through

this mechanism, and United States law provides for the filing of opposi-

tions such as VEL’s to applications submitted in this manner. See 15

U.S.C. § 1141h(a)(2); see also J. Thomas McCarthy, 3 McCarthy on

Trademarks and Unfair Competition § 19:31.50 (4th ed. 2007).

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 29

holder claims that a foreign company has made or sold goods here

that infringe an existing mark. Section 24, which applies only to PTO

proceedings, does not in any way diminish the ability of trademark

holders to bring infringement actions in federal court against compa-

nies that — unlike Rosenruist — distribute potentially infringing

goods or conduct operations here. See Steele v. Bulova Watch Co.,

344 U.S. 280, 286-27 (1952). Section 24 does not bear upon the avail-

ability of in-person testimony in such infringement cases, because

§ 24 governs only PTO proceedings. See 35 U.S.C. § 24. A proper

view of § 24 would do no more than protect companies such as

Rosenruist that have taken only the first step to register their marks

from the burdens of in-person depositions in cases before the PTO —

burdens that can be adjusted by Congress as the exigencies of com-

merce and international trade require.

C.

Separation of powers considerations are present also. I recognize

that the statute at issue here is one that regulates judicial process, an

issue on which courts rightly claim an expertise. That does not change

the equation, however. Congress regulates judicial process through

rules and statutes too numerous to mention. None of this regulation

affords courts the authority to displace congressional enactments on

judicial process with their own. Notwithstanding the fact that 35

U.S.C. § 24 bears upon judicial process, the impact of in-person depo-

sitions of foreign companies in the Eastern District of Virginia is

quite beyond the ken of judges. Courts have recognized consistently

that we should act cautiously where foreign relations are in play,

because other branches of government are best suited to make judg-

ments in these areas. For instance, extraterritorial application of fed-

eral law has long been disfavored in part because "such a construction

would have had foreign policy implications." Weinberger v. Rossi,

456 U.S. 25, 32 (1982). And a narrow construction of the National

Labor Relations Act has been justified where "international implica-

tions" would ensue from a broad one. NLRB v. Catholic Bishop of

Chicago, 440 U.S. 490, 500 (1979). It is essential to recognize the

international ramifications that may ensue from far-reaching holdings

such as this one, and to defer to the political branches, as the Supreme

Court has long done, in a matter of some international delicacy.

30 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

Other statutes in fact suggest the judgment of my fine colleagues

is not in line with the judgment of Congress. As noted earlier, the

majority’s decision seems in some tension with the Madrid Protocol’s

scheme of reciprocal reduction in barriers to intellectual property pro-

tections abroad. In addition, 28 U.S.C. § 1783 authorizes subpoenas

of an American citizen or resident "who is in a foreign country" only

upon a showing "that particular testimony or the production of the

document or other thing by him is necessary in the interest of justice"

and, in civil cases, "that it is not possible to obtain his testimony in

admissible form without his personal appearance or to obtain the pro-

duction of the document or thing in any other manner." 28 U.S.C.

§ 1783(a) (2000). The high standard Congress has imposed upon liti-

gants seeking to put even our own citizens to the expense and incon-

venience of international travel to give a deposition here suggests that

this court’s unwarranted extension of subpoena powers is not just a

judgment that should be left to Congress but a judgment that is out-

of-step with Congress’ approach.

III.

My friends in the majority not only make a policy decision that

should be left to Congress, but also disregard the views of the most

relevant expert agency in doing so. My colleagues disregard the lim-

ited view of the Patent and Trademark Office for whose sole benefit

testimony under § 24 is intended, and authorize litigants to circum-

vent the framework that the PTO has established for obtaining testi-

mony from foreign witnesses. This is unsound, both because of the

PTO’s expertise in trademark matters and because the text of § 24

indicates that it should be invoked only in aid of PTO proceedings —

"for use in any contested case in the Patent and Trademark Office."

35 U.S.C. § 24.

A.

The Trademark Trial and Appeal Board’s view that § 24 excludes

foreign companies with minimal American contacts is evident from

the record. The TTAB attorney overseeing the instant dispute denied

VEL’s motion to compel Rosenruist to appear for an oral testimony

deposition in its home country of Portugal, in a letter that indicated

there was no ready mechanism for obtaining in-person depositions

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 31

from foreign adverse parties. In particular, the attorney wrote, "where

the adverse party or unwilling witness resides in a foreign country,

the party seeking to take the testimony deposition of such witness

may not be able to do so absent the letter rogatory procedure or The

Hague Convention letter of request procedure." (emphasis added).

The TTAB attorney relied upon the TTAB Manual, which likewise

indicates that foreign companies like Rosenruist are not generally

subject to compulsion under § 24 because they are not "residing or

being" in any district of the United States. The manual’s provisions

on domestic and foreign witnesses present a striking contrast. The

manual first indicates that parties to a PTO proceeding may use § 24

to subpoena domestic witnesses in the judicial districts where they

reside or are employed. It provides,

If a party wishes to take the trial testimony of an adverse

party or nonparty (or an official or employee of an adverse

party or nonparty) residing in the United States, and the pro-

posed witness is not willing to appear voluntarily to testify,

the party wishing to take the testimony must secure the

attendance of the witness by subpoena.

TTAB Manual § 703.01(f)(2). The subpoena "must be issued, pursu-

ant to 35 U.S.C. § 24 and Fed. R. Civ. P. 45, from the United States

district court in the Federal judicial district where the witness resides

or is regularly employed." Id. (emphasis added).

The immediately subsequent provision entitled "Unwilling witness

residing in a foreign country," describes no role for § 24 with respect

to such witnesses. It states, to the contrary,

There is no certain procedure for obtaining, in a Board inter

partes proceeding, the trial testimony deposition of a witness

who resides in a foreign country, is an adverse party or a

nonparty (or an official or employee of an adverse party or

nonparty), and is not willing to appear voluntarily to testify.

TTAB Manual § 703.01(f)(3) (emphasis added); see also TTAB Man-

ual § 703.01(f)(1) ("[W]here a party wishes to take the testimony of

32 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

an adverse party or nonparty, or an official or employee of an adverse

party or nonparty, and the proposed witness is not willing to appear

voluntarily to testify . . . the party that wishes to obtain the deposition

must take steps, discussed below, to compel the attendance of a wit-

ness. If the witness resides in a foreign country, the party may not be

able to take the deposition.") (emphasis added).

The regulations governing PTO proceedings, while less explicit,

fully support the TTAB Manual and the TTAB hearing officer in con-

cluding that a party cannot demand in-person oral testimony from a

foreign party such as Rosenruist simply because the foreign party

filed a trademark application. The regulations make no mention of

subpoenaing foreign witnesses under § 24 for testimony or discovery

depositions,3 but they do describe § 24 as available to compel discov-

ery depositions from persons who "live or reside" in the United States

— indicating again that the agency construed § 24 as applicable only

to witnesses that "live or reside" in the country. Compare 37 C.F.R.

§ 2.120(b) (2006) (stating that the discovery "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") (emphasis added) with 37 C.F.R. § 2.120(c)

(providing for discovery depositions of representatives of foreign wit-

nesses abroad on written questions unless the TTAB orders oral depo-

sition on motion for good cause).4 These provisions are simply

3

PTO proceedings have a discovery phase, in which discovery deposi-

tions are permitted, and a trial phase, in which testimony depositions are

permitted, subject to somewhat more restrictive evidentiary and other

limitations. See TTAB Manual § 404.09 (setting forth the "most signifi-

cant" differences between discovery and testimony depositions, includ-

ing, for example, that the content of testimony depositions is limited to

evidence admissible under applicable rules of evidence; that every testi-

mony deposition must be filed and when filed, becomes part of the

record; and that testimony depositions, if not obtained voluntarily, may

be taken only pursuant to a subpoena issued by a United States district

court); Gary D. Krugman, Tips From the TTAB: Testimony Depositions,

70 Trademark Rep. 353 (1980).

4

Although my colleagues in the majority are correct that the provisions

contained in 37 C.F.R. § 2.120 pertain to discovery depositions, see ante

at 16 n.6, they are incorrect that such provisions are unrelated to the

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 33

incompatible with VEL’s view that foreign trademark applicants can

always be compelled to give in-person depositions in contested PTO

cases, so long as they are subpoenaed in the Eastern District of Vir-

ginia. They indicate, to the contrary, that because § 24 authorizes the

compulsion of witnesses only in judicial districts where they are "re-

siding or being," foreign companies with de minimis ties to our coun-

try are outside the statute’s scope because they are not "residing or

being" in the United States.

In addition, the TTAB has elaborate provisions that allow litigants

to take the testimony of foreign adverse parties or other witnesses

through mechanisms other than in-person deposition testimony, which

would make little sense if such parties could simply be called to give

oral deposition testimony in the United States. Litigants may take for-

eign witnesses’ depositions through the letter rogatory procedure and

Hague Convention letter of request procedure, see TTAB Manual

§ 703.01(f)(3); id. § 404.03(c)(2), and may take depositions upon

written questions without regard to a witness’s or party’s country of

origin, see 37 C.F.R. § 2.124; id. § 2.123. Perhaps most critically, the

regulations establish a presumption in favor of written depositions by

foreign witnesses in foreign countries over oral depositions abroad.

They provide, "A testimonial deposition taken in a foreign country

shall be taken by deposition upon written questions . . . unless the

PTO’s procedures for conducting testimony depositions. While differ-

ences between testimony and discovery depositions in fact exist, none of

the differences pertain to the question of whether a foreign party may be

compelled to provide in-person oral testimony in the United States. See

supra at 32 n.3 (citing TTAB § 404.09 "Discovery Depositions Com-

pared to Testimony Depositions"). In fact, the TTAB manual — in set-

ting forth the requirement that testimony depositions, unless "obtained

voluntarily," can only be taken pursuant to a subpoena issued by a United

States district court — directly references 37 C.F.R. § 2.120(b), which is

instructive on the issue of securing the attendance of a natural person for

a deposition in the United States. See TTAB Manual § 404.09 & n.114.

Moreover, the explicit references in 37 C.F.R. § 2.120 to discovery depo-

sitions do not dilute the fact that the PTO took seriously Congress’s limi-

tation in 35 U.S.C. § 24 that oral depositions can be taken only from

witnesses that "live or reside" in the United States.

34 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

Board, upon motion for good cause, orders that the deposition be

taken by oral examination, or the parties so stipulate." Id. § 2.123(2).

It is hard to imagine that the TTAB would have made it so difficult

to subpoena foreign parties for oral depositions in their home coun-

tries, if it viewed § 24 as permitting parties to require such witnesses

to travel to the United States to give such depositions. In sum, like the

TTAB Manual and the TTAB ruling in this case, the PTO’s frame-

work of regulations suggests that the agency whose expertise in trade-

mark disputes is entitled to respect viewed foreign companies with

very limited American contacts as beyond the reach of adverse parties

under § 24.

B.

Congress has provided that the PTO "shall be responsible for the

granting and issuing of patents and the registration of trademarks" and

"may establish regulations, not inconsistent with law" that "shall gov-

ern the conduct of proceedings in the Office." 35 U.S.C. § 2 (2000).

We have therefore noted that TTAB decisions interpreting the extent

of intellectual property protections under the Lanham Act are entitled

to "great weight." Int’l Bancorp, LLC v. Societe des Bains de Mer et

du Cercle des Etrangers a Monaco, 329 F.3d 359, 378 (4th Cir.

2003); see also In re Dr. Pepper Co., 836 F.2d 508, 510 (Fed. Cir.

1987) ("While the interpretations of the statute by the board are not

binding on this court, under general principles of administrative law,

deference should be given by a court to the interpretation by the

agency charged with its administration.").

A number of our sister circuits have noted the perils of simply dis-

regarding the PTO’s view in construing other aspects of § 24’s scope.

Those circuits have placed especial emphasis upon § 24’s authoriza-

tion of in-person depositions only when the "testimony is to be taken

for use in any contested case in the Patent and Trademark Office."

35 U.S.C. § 24 (emphasis added). The First, Third, and Fifth Circuits

have thus held that § 24 authorizes district courts to issue subpoenas

for discovery materials only when the PTO’s rules also authorized the

parties to obtain the materials in question. See Brown v. Braddick, 595

F.2d 961, 966 (5th Cir. 1979); Sheehan v. Doyle, 529 F.2d 38, 39 (1st

Cir. 1976) ("Doyle II"); Sheehan v. Doyle, 513 F.2d 895 (1st Cir.

ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES 35

1975) ("Doyle I"); Frilette v. Kimberlin, 508 F.2d 205 (3d Cir. 1974)

(en banc). But see Natta v. Hogan, 392 F.2d 686, 690 (10th Cir. 1968)

(suggesting § 24 authorizes district courts to issue subpoenas without

regard to limitations in PTO’s rules).

The First Circuit explained based upon § 24’s text and structure

that the statute "is simply a provision giving teeth, through the courts’

subpoena powers, to authority conferred upon the Commissioner of

Patents." Doyle I, 513 F.2d at 898. It "provided for judicial subpoenas

to be used in aid of contested Patent Office cases (including for pur-

poses of broad-based Federal Rules of discovery) but only to the

extent permitted by the Commissioner of Patents," who heads the

PTO. Doyle II, 529 F.2d at 39. "What we rejected," the First Circuit

concluded, "was the use of the federal district courts ‘as alternative

forums of first resort rather than as forums acting strictly in aid of a

primary proceeding.’" Id. (quoting Doyle I, 513 F.2d at 899).

VEL’s view suffers the problems identified by the First, Third, and

Fifth Circuits. While § 24’s authorization of subpoenas only for testi-

mony "to be taken for use in any contested case in the Patent and

Trademark Office" led those circuits to reject use of § 24 to obtain

evidence the PTO does not authorize, VEL glosses over this limita-

tion entirely. This enables disruptions of PTO proceedings that our

sister circuits explained would be incompatible with the statute’s

design as an aid to PTO proceedings. In particular, because of the

majority’s decision, PTO litigants can now routinely seek to stay the

agency’s proceedings, as VEL has done here, and then go before a

district court and get evidence not provided for under the PTO’s own

rules. See Frillette, 508 F.2d at 210. This divorces the subpoena

authority from "the rudder that the court or agency which should have

control over the case can provide," id. at 211, and permits evasion of

the PTO’s framework for obtaining evidence in its own cases. The

majority’s disregard for the PTO’s ruling in this case, the TTAB Man-

ual, and the structure set forth in PTO regulations not only ignores the

expertise of the agency most familiar with the statute before us, but

also does violence to the statute’s role — established by its text —

as an aid to PTO proceedings.

IV.

In concluding without explanation that foreign companies with the

most minimal U.S. contacts ought to be subject to compulsory in-

36 ROSENRUIST-GESTAO v. VIRGIN ENTERPRISES

person depositions in PTO cases, the majority overlooks the guide-

posts — including the very statute governing this situation — that

should control its decision. It disregards the statutory text limiting

such compulsion to entities "residing or being" within a United States

judicial district. It ignores numerous canons of construction relevant

to the statute’s foreign reach. It disregards the evident expert view of

the PTO whose proceedings § 24 is intended to aid.

I fear the result is not simply one that Congress did not intend, but

one that could in time negatively impact not only the operations of the

PTO, but also international trade and foreign relations. Since a statute

that authorizes compulsory depositions only of entities "residing or

being" within a judicial district does not clearly reach foreign compa-

nies that have done nothing more than file an application for trade-

mark registration, I would heed the Supreme Court’s cautionary

words: "[f]or us to run interference in such a delicate field of interna-

tional relations there must be present the affirmative intention of the

Congress clearly expressed." Benz v. Compania Naviera Hidalgo,

S.A., 353 U.S. 138, 147 (1957). The "affirmative intention" of the

Congress is affirmatively at odds with the result reached here. I

respectfully dissent.