The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
THIS ORDER IS Trademark Trial and Appeal Board
A PRECEDENT P.O. Box 1451
OF THE TTAB Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
wbc Mailed: December 12, 2017
Opposition No. 91222695
Azalea Health Innovations, Inc.
v.
Rural Health Care, Inc.
Wendy Boldt Cohen, Interlocutory Attorney:
This case now comes before the Board on Azalea Health Innovations, Inc.’s
(“Opposer”) motion to strike certain exhibits in Rural Health Care, Inc.’s
(“Applicant”) first notice of reliance. 37 TTABVUE.1 The motion is fully briefed.
The documents at issue, Exhibits A-M, found in Applicant’s first notice of
reliance are transcripts of Applicant’s discovery depositions of some of
Opposer’s employees.2 See 31 TTABVUE.
1 TTABVUE is the Board’s electronic case file system and citations in the decision are
to the corresponding TTABVUE entries followed by the corresponding page number
in the prosecution history for the file for this case. The Board prefers that parties cite
to material or testimony in the case by using the TTABVUE docket entry and page
numbers. See Bond v. Taylor, 119 USPQ2d 1049, 1050 n.4 (TTAB 2016); Hollywood
Casino LLC v. Chateau Celeste, Inc., 116 USPQ2d 1988, 1991 n.5 (TTAB 2015);
UVeritech, Inc. v. Amax Lighting, Inc., 115 USPQ2d 1242, 1244 n.2 (TTAB 2015);
Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
2
1. Exhibit A – discovery deposition transcript of Lance Bennett;
2. Exhibit B – discovery deposition transcript of Victoria Burke;
3. Exhibit C – discovery deposition transcript of Patricia Denman;
4. Exhibit D – discovery deposition transcript of Jason Faulk;
5. Exhibit E – discovery deposition transcript of Kelly Hagin;
6. Exhibit F – discovery deposition transcript of Julie Harper;
7. Exhibit G – discovery deposition transcript of Heather Ivey;
Opposition No. 91222695
Preliminary Issue - Redacted Submissions Required for Public Record
The entirety of Applicant’s first and second notices of reliance found at 31
and 32 TTABVUE, and testimony found at 36 TTABVUE, were designated as
“confidential” when filed via the Electronic System for Trademark Trials and
Appeals (ESTTA), yet, in some instances, only portions of the submissions were
labelled or marked as “confidential” (e.g., Exhibits L and N to the first notice
of reliance). Applicant did not submit a redacted copy of the notices of reliance
or testimony for the public record. Opposer has also submitted the entirety of
its notices of reliance and testimony as confidential, without submitting
redacted copies for public viewing. See 15-16 TTABVUE; 19 TTABVUE; 27
TTABVUE.
Discovery responses, exhibits, discovery and testimony deposition
transcript pages, testimony declarations or affidavits or those portions of a
brief, pleading, or motion that disclose confidential information should be
electronically designated as “confidential” when filed through ESTTA or,
where permitted, filed by paper under seal pursuant to the Board’s standing
protective order or a modification of it. See Trademark Rules 2.126(c), 37 C.F.R.
§ 2.126(c); 2.127(e), 37 C.F.R. § 2.127(e); Trademark Trial and Appeal Board
8. Exhibit H – discovery deposition transcript of Julee Lincoln;
9. Exhibit I – discovery deposition transcript of Maya Loizeaux;
10. Exhibit J – discovery deposition transcript of Marty Nall;
11. Exhibit K – discovery deposition transcript of Danielle Rocha;
12. Exhibit L – discovery deposition transcript of Theresa Siroky; and
13. Exhibit M – discovery deposition transcript of Amy Taylor.
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Opposition No. 91222695
Manual of Procedure (“TBMP”) §§ 120.02; 412.04; 703.01(p) (June 2017). If a
party submits any such material, the party must also submit for the public
record a redacted version of each submission. Trademark Rule 2.126(c). A rule
of reasonableness dictates what information should be redacted, and only in
very rare instances should an entire submission be deemed confidential. See,
e.g., Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458,
1460-61 (TTAB 2014); Swiss Watch Int’l Inc. v. Fed. of the Swiss Watch Indus.,
101 USPQ2d 1731, 1736 (TTAB 2012). In addition, “[t]he Board may treat as
not confidential that material which cannot reasonably be considered
confidential, notwithstanding a designation as such by a party.” Trademark
Rule 2.116(g), 37 C.F.R. § 2.116(g).
Each party is ordered to resubmit copies of their notices of reliance and
testimony in which only truly confidential material is redacted within twenty
(20) days of the mailing date of this order. See Swiss Watch Int’l Inc., 101
USPQ2d at 1736; Morgan Creek Prod. Inc. v. Foria Int’l Inc., 91 USPQ2d 1134,
1136 n.9 (TTAB 2009); TBMP § 120.02. If the parties fail to redesignate their
notices of reliance or testimony or continue to over designate them as
confidential, the materials will be treated as part of the public record,
consistent with the Board’s general policy that all papers in a proceeding be
public. See Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d 1392, 1398
n.39 (TTAB 2016).
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Opposition No. 91222695
Opposer’s Motion to Strike
Opposer argues that Exhibits A-M comprise discovery deposition
transcripts of non-party individuals, which neither party disputes, who are
employees of Opposer but none of whom at any time was a party to this
opposition, or an officer, director or managing agent of a party to this
opposition; that Board rules do not permit the introduction of these exhibits
into evidence under a notice of reliance; and that Applicant should have elected
oral cross-examination of the individuals for whom Opposer has submitted
testimony declarations pursuant to Trademark Rule 2.123, 37 C.F.R. § 2.123.
37 TTABVUE 3.
Applicant argues that the exhibits are admissible because they are “being
offered ‘for impeachment purposes and in support of objections to hearsay
testimony of [each] deponent as provided in Opposer’s Trial Declaration of
deponent’”; that impeachment is a permissible use of discovery depositions;
and that some of Opposer’s trial declarations “expand on information provided
by a deponent when the deponent indicated in deposition that he or she had no
such information.” 38 TTABVUE 3-4.
A. Discovery Deposition Transcripts for which no Testimony from the
Deponents was Introduced – Exhs. C, I, K and L
The discovery depositions of Patricia Denman (Exh. C), Maya Loizeaux
(Exh. I), Danielle Rocha (Exh. K) and Terry Siroky (Exh. L) present a different
issue than do the others because Opposer did not submit trial declarations for
these witnesses, and Opposer asserts that it “has not and will not call
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Opposition No. 91222695
[Denman, Loizeaux, or Siroky]3 . . . as witnesses in the present Opposition.” 37
TTABVUE 3. Inasmuch as Applicant asserts that it submitted the disputed
discovery deposition transcripts of these individuals for purposes of
impeaching their trial testimony and no such testimony from these individuals
has yet been offered by Opposer, the motion to strike Exhs. C, I, K and L is
granted. The referenced exhibits are hereby stricken from the record.
B. Discovery Deposition Transcripts of Non-party Witnesses – Applicant’s
Exhibits A, B, D-H, J and M.
“Objections to a notice of reliance on substantive grounds, such as objections
on the grounds that evidence offered under a notice of reliance constitutes
hearsay or improper rebuttal, or is incompetent, irrelevant, or immaterial,
normally need not and should not be raised by motion to strike.” TBMP § 532.
Such objections should be raised in the objecting party’s brief on the case,
unless the ground for objection is one that could have been cured if raised
promptly by motion to strike. See Trademark Rule 2.123(j), 37 C.F.R. § 2.123(j);
Fed. R. Civ. P. 32(d)(3)(A). As explained below, given the circumstances of this
proceeding and inasmuch as the Board finds the ground for Opposer’s
objections to Applicant’s exhibits is procedural in nature, the Board declines to
defer the motion to final hearing.
Upon adoption of the amended Rules of Practice in Trademark Cases,
effective January 14, 2017, Trademark Rule 2.123(a) permits the unilateral
3 Opposer does not reference in its motion whether it will or will not call Rocha as a
witness; however, it did not submit a trial declaration during its case-in-chief.
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Opposition No. 91222695
option for trial testimony by affidavit or declaration pursuant to Trademark
Rule 2.20, 37 C.F.R. § 2.20, subject to the right of oral cross-examination by
the adverse party if the witness is in the United States. See Miscellaneous
Changes to Trademark Trial and Appeal Board Rules, 81 Fed. Reg. 69950,
69951 (October 7, 2016) (Notice of Final Rulemaking). In this case, Opposer
opted to submit the trial testimony of its employees, all non-party witnesses,
by declaration. See 19-26 TTABVUE; 29 TTABVUE. There is no evidence in
the record, and neither party asserts, that Applicant sought to cross-examine
those witnesses. Instead of availing itself of the opportunity to impeach
Opposer’s witnesses by electing to take oral cross-examination as permitted by
the rules, Applicant instead submitted the discovery deposition transcripts of
these individuals during Applicant’s testimony period.
To determine whether a discovery deposition of a non-party witness has
been properly introduced into evidence for impeachment purposes or
otherwise, the Board looks to Fed. R. Civ. P. 32(a), Fed. R. Evid. 613 and
Trademark Rule 2.120(k), 37 C.F.R. § 2.120(k).
Federal Rule of Civil Procedure 32 provides, in pertinent part:
(a) Using Depositions.
(1) In General. At a hearing or trial, all or part of a deposition
may be used against a party on these conditions:
(A) the party was present or represented at the taking
of the deposition or had reasonable notice of it;
(B) it is used to the extent it would be admissible under
the Federal Rules of Evidence if the deponent were
present and testifying; and
(C) the use is allowed by Rule 32(a)(2) through (8).
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Opposition No. 91222695
(2) Impeachment and Other Uses. Any party may use a
deposition to contradict or impeach the testimony given by
the deponent as a witness, or for any other purpose allowed
by the Federal Rules of Evidence.
Federal Rule of Evidence 613 provides:
…
(b) Extrinsic Evidence of a Prior Inconsistent Statement. Extrinsic
evidence of a witness’s prior inconsistent statement is admissible
only if the witness is given an opportunity to explain or deny the
statement and an adverse party is given an opportunity to
examine the witness about it, or if justice so requires. This
subdivision (b) does not apply to an opposing party’s statement
under Rule 801(d)(2).
Trademark Rule 2.120(k) provides, in pertinent part:
(k) Use of discovery deposition, answer to interrogatory, admission or
written disclosure.
(1) The discovery deposition of a party or of anyone who at the time
of taking the deposition was an officer, director or managing
agent of a party, or a person designated by a party pursuant to
Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil
Procedure, may be offered in evidence by an adverse party.
(2) Except as provided in paragraph (k)(1) of this section, the
discovery deposition of a witness, whether or not a party, shall
not be offered in evidence unless the person whose deposition
was taken is, during the testimony period of the party offering
the deposition, dead; or out of the United States (unless it
appears that the absence of the witness was procured by the
party offering the deposition); or unable to testify because of
age, illness, infirmity, or imprisonment; or cannot be served
with a subpoena to compel attendance at a testimonial
deposition; or there is a stipulation by the parties; or upon a
showing that such exceptional circumstances exist as to make
it desirable, in the interest of justice, to allow the deposition to
be used. The use of a discovery deposition by any party under
this paragraph will be allowed only by stipulation of the parties
approved by the Trademark Trial and Appeal Board, or by
order of the Board on motion, which shall be filed when the
party makes its pretrial disclosures, unless the motion is based
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Opposition No. 91222695
upon a claim that such exceptional circumstances exist as to
make it desirable, in the interest of justice, to allow the
deposition to be used, even though such deadline has passed,
in which case the motion shall be filed promptly after the
circumstances claimed to justify use of the deposition became
known.4
(3)
(i) A discovery deposition, … which may be offered in
evidence under the provisions of paragraph (k) of this
section, may be made of record in the case by filing the
deposition or any part thereof with any exhibit to the
part that is filed, … together with a notice of reliance in
accordance with § 2.122(g). The notice of reliance and
the material submitted thereunder should be filed
during the testimony period of the party which files the
notice of reliance. An objection made at a discovery
deposition by a party answering a question subject to the
objection will be considered at final hearing.
...
(6) Paragraph (k) of this section will not be interpreted to preclude
reading or use of …, a discovery deposition, … as part of the
examination or cross-examination of any witness during the
testimony period of any party.
In short, Fed. R. Civ. P. 32, Fed. R. Evid. 613, and Trademark Rule
2.120(k)(6) permit the use of discovery depositions during the examination or
cross-examination of a witness, which would necessarily include impeachment.
Additionally, Trademark Rule 2.120(k)(1) permits the use of a discovery
4 Rule 801(d)(1)(A) of the Federal Rules of Evidence authorizes substantive use of a
testifying witness’s prior inconsistent statement if: (1) the statement is inconsistent
with his later trial testimony, (2) the statement was made in a proceeding or
deposition where he was subject to penalty of perjury, and (3) the witness is subject
to cross-examination on his prior statement. Whether proffered as substantive
evidence or not, the prior discovery deposition testimony of a testifying witness in a
Board proceeding may only be introduced in conformity with Trademark Rule 2.120
(k).
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Opposition No. 91222695
deposition of a party in Board proceedings. Trademark Rule 2.120(k)(2),
however, explains how to introduce a discovery deposition of a non-party
witness if outside the examination or cross-examination period for that
witness, such as the case here: by stipulation of the parties approved by the
Board or by order of the Board upon a motion.
A discovery deposition that may be offered into evidence by stipulation or
order of the Board under Trademark Rule 2.120(k) may be made of record by
filing, during the testimony period of the offering party, the deposition or any
part thereof with any exhibit to the part that is filed, together with a notice of
reliance. Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i); see also
Galaxy Metal Gear Inc. v. Direct Access Tech. Inc., 91 USPQ2d 1859, 1862
(TTAB 2009); Marion Labs. Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d
1215, 1217 n.9 (TTAB 1988); Fischer GmbH. v. Molnar & Co., 203 USPQ 861,
864-65 (TTAB 1979); Chemetron Corp. v. Self-Organizing Sys., Inc., 166 USPQ
495, 496 n.2 (TTAB 1970); Am. Skein & Foundry Co. v. Stein, 165 USPQ 85,
85 (TTAB 1970). Here, neither party alleges there was a stipulation to allow
the non-party witnesses’ discovery depositions. Had Applicant elected to cross-
examine the witnesses on their testimonial declarations, it could have
confronted each witness with his or her allegedly inconsistent statements
made during the discovery deposition. But having failed to elect oral cross-
examination of the witnesses, Applicant had two options available to introduce
the discovery depositions into evidence: (1) file a motion at the time of its
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Opposition No. 91222695
pretrial disclosures seeking Board approval of its use of the discovery
depositions; or (2) file a motion claiming exceptional circumstances exist
promptly after circumstances claimed to justify the use of the depositions
became known, even if after its pretrial disclosures were made. See Trademark
Rule 2.120(k)(2); see also, e.g., Galaxy Metal Gear, 91 USPQ2d at 1862; Hilson
Res. Inc. v. Soc’y for Human Resource Mgmt., 27 USPQ2d 1423, 1426 (TTAB
1993); Fischer GmbH, 203 USPQ at 864-65; Nat’l Fidelity Life Ins. v. Nat’l Ins.
Trust, 199 USPQ 691, 692 n.3 (TTAB 1978); Insta-Foam Prods., Inc. v.
Instapak Corp., 189 USPQ 793, 795 n.4 (TTAB 1976).
Applicant did not file either motion.5
In view thereof, Opposer’s motion to strike Applicant’s Exhibits A, B, D-H,
J and M is granted. See Trademark Rule 2.123(j), 37 C.F.R. § 2.123(j); Fed. R.
Civ. P. 32(d)(3)(A). Accordingly, Applicant’s Exhibits A, B, D-H, J and M are
also stricken from the record.
Time to Elect Oral Cross-Examination Allowed
Notwithstanding the foregoing, as explained in the Notice of Final
Rulemaking, renumbered Trademark Rule 2.120(k) was amended, effective
January 14, 2017, “to change the time for a motion to use a discovery deposition
to when the offering party makes its pretrial disclosures and to clarify that the
5 Indeed, Applicant does not assert, in its response to the motion to strike, any
allegations regarding exceptional circumstances. It is unlikely that the Board would
find that the desire to use the depositions as impeachment itself qualifies as an
exceptional circumstance; however, the question of what does constitute an
exceptional circumstance remains open.
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exceptional circumstances standard applies when this deadline has passed.”
Notice of Final Rulemaking, 81 Fed. Reg. at 69962. Additionally, when rules
changes were first proposed in April 2016, the Board stated, “any issues that
may arise concerning the transition to the revised rules for cases pending as of
the effective date of the rules would be addressed by the Board and the parties
on a case-by-case basis, allowing for flexibility to respond to the unique needs
in each case.” Miscellaneous Changes to Trademark Trial and Appeal Board
Rules of Practice, 81 Fed. Reg. 19296, 19296 (April 4, 2016) (Notice of Proposed
Rulemaking).
Therefore, under the particular circumstances of this case, it is appropriate
to construe Applicant’s response to the motion to strike as a motion to re-open
the period for electing and taking oral cross-examination of the witnesses listed
in Applicant’s Exhibits A, B, D-H, J and M. See Trademark Rule 2.123(c), 37
C.F.R. § 2.123(c); Notice of Final Rulemaking, 81 Fed. Reg. at 69965 (“The
Office is further amending § 2.123(c) to add that the Board may extend the
periods for electing and taking oral cross-examination and, when necessary,
shall suspend or reschedule proceedings in the matter to allow for the orderly
completion of oral cross-examination(s) that cannot be completed within a
testimony period.”). In view thereof, the period for Applicant to elect and take
oral cross-examination of the witnesses identified in Applicant’s Exhibits A, B,
D-H, J and M is reset. Applicant shall have until January 5, 2018 to serve
notice on Opposer of Applicant’s election to take oral cross-examination; to
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Opposition No. 91222695
identify which witnesses listed in Applicant’s Exhibits A, B, D-H, J and M it
seeks to cross-examine; and to file a copy with the Board. See TBMP §§ 701;
703.01(e). Applicant will then have thirty (30) days from the date of service
of the notice of election to complete the oral cross-examination(s).6 TBMP §
703.01(e).
The parties are advised that while the Board has exercised its flexibility in
the resolution of this dispute, the parties should not expect additional
flexibility in the future. Continued failure to adhere to the Board’s rules and
deadlines will be looked upon with disfavor. Estudi Moline Dissey, S.L. v.
BioUrn Inc., 123 USPQ2d 1268, 1271 (TTAB 2017).
Proceedings otherwise remain suspended and will automatically resume on
March 10, 2018 with the following dates:
Plaintiff's Rebuttal Disclosures Due March 26, 2018
Plaintiff's 15-day Rebuttal Period Ends April 25, 2018
BRIEFS SHALL BE DUE AS FOLLOWS:
Plaintiff's Main Brief Due June 24, 2018
Defendant's Main Brief Due July 24, 2018
Plaintiff's Reply Brief Due August 8, 2018
In each instance, a copy of the transcript of any oral testimony, together
with copies of documentary exhibits, must be served on the adverse party
within thirty days after completion of the taking of testimony. Trademark Rule
6 Should Applicant be unable to complete the oral cross-examination of the witnesses
as permitted herein, Applicant should file a motion with the Board seeking an
extension of the period for taking oral cross-examination; such motion should be filed
prior to the expiration of the time granted to take oral cross-examination. See TBMP
§ 703.01(e) (“On motion for good cause, or on its own initiative, the Board may extend
the periods for electing and taking oral cross-examination.”).
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2.125, 37 C.F.R. § 2.125. An oral hearing will be set only upon request filed as
provided by Trademark Rule 2.129, 37 C.F.R. § 2.125.
13