The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
THIS ORDER IS A
P.O. Box 1451
PRECEDENT OF THE TTAB Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
RK
June 14, 2019
Cancellation No. 92064830
Laverne J. Andrusiek
v.
Cosmic Crusaders LLC
Yong Oh (Richard) Kim, Interlocutory Attorney:
The Board addresses whether a witness located in the United States whose
testimony is presented by affidavit or declaration under Trademark Rule 2.123(a)(1),
37 C.F.R. § 2.123(a)(1), may be cross-examined by written questions. The Board holds
that Rule 2.123(a)(1) permits only oral cross-examination of such a witness.
Background
On October 9, 2018, the Board held a telephone conference with the parties
concerning Petitioner’s renewed motion to strike the written testimony of
Respondent’s witness Alex Wadsworth. Upon the Board’s denial of the motion,
Petitioner stated his intention, pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R.
§ 2.123(a)(1), to cross-examine Mr. Wadsworth, who is located in the United States,
upon written questions. Respondent objected to this means of cross-examination.
Cancellation No. 92064830
On October 24, 2018, Petitioner moved for leave to take the cross-examination of
Mr. Wadsworth and Lewis Davidson1, both located in the United States, on written
questions.2 As the primary reason for his request, Petitioner points to the expense
and inconvenience of conducting oral cross-examinations of Respondent’s witnesses,
considering that Messrs. Wadsworth and Davidson “have Tampa Florida addresses”
while “Petitioner’s address is across the nation in the Pacific Northwest’s Washington
state.”3
1 Mr. Davidson is a second fact witness whose testimony Respondent introduced by way of
declaration.
2 As part of his motion, Petitioner maintains that Respondent’s testimonial declarations
served on March 30, 2018, should be stricken for failing to comply with the service
requirements of Trademark Rule 2.119, 37 C.F.R. § 2.119. This issue was previously
addressed by the Board in its order of September 18, 2018, see 26 TTABVUE 2 n.2, through
which Petitioner was provided with additional notice of, as well as electronic links to, the
testimonial declarations, notwithstanding that Petitioner was already aware of and had the
opportunity to review the declarations. This was sufficient to address the defect in service
and any prejudice resulting therefrom. Accordingly, Petitioner has no basis to continue to
object to the declarations based on a failure to comply with Trademark Rule 2.119(a).
Petitioner’s request to strike the testimonial declarations for improper service is, therefore,
DENIED with prejudice.
Petitioner has also objected to Respondent’s second amended pretrial disclosures served
on October 3, 2018, see 29 TTABVUE, Appendix B. Petitioner objects that the disclosures
refer to Fed. R. Evid. 702, which relates to expert testimony, despite Respondent’s earlier
clarification as to its first amended pretrial disclosures that the reference to the rule was in
error and none of its disclosed witnesses were experts. 20 TTABVUE, Appendix F. While
Respondent should have removed the erroneous reference to Rule 702 in its second amended
pretrial disclosures, the reference is harmless and will not void the disclosures or any of the
testimony referenced therein. Cf. Cadbury UK Ltd. v. Meenaxi Enter., Inc., 115 USPQ2d
1404, 1407-08 (TTAB 2015) (“The Board expects each party to every case to use common sense
and reason when faced with what the circumstances clearly show to be a typographical error
[and] will not require the Board’s intervention to correct the mistake.”).
3 29 TTABVUE 4-5. Pursuant to Trademark Rule 2.123(c), oral depositions of domestic
witnesses may be noticed for any reasonable time and place in the United States. Where a
party seeks to take the oral cross-examination of an affiant or declarant witness, the Board
ordinarily finds the vicinity of the witness’s place of business or domicile to be a reasonable
2
Cancellation No. 92064830
Respondent opposed the motion on grounds that Trademark Rules 2.123 and
2.124, 37 C.F.R. §§ 2.123 and 2.124, do not provide for cross-examination on written
questions of testimonial declarants located in the United States, instead requiring
Petitioner to conduct any potential cross-examination of Respondent’s witnesses
orally.4
Analysis
Trademark Rules 2.123(a)(1) and (a)(2) provide as follows:
(a)(1) The testimony of witnesses in inter partes cases may be
submitted in the form of an affidavit or a declaration pursuant to § 2.20
and in conformance with the Federal Rules of Evidence, filed during the
proffering party’s testimony period, subject to the right of any adverse
party to elect to take and bear the expense of oral cross-examination of
that witness as provided under paragraph (c) of this section if such
witness is within the jurisdiction of the United States, or conduct cross-
examination by written questions as provided in § 2.124 if such witness
is outside the jurisdiction of the United States, and the offering party
must make that witness available; or taken by deposition upon oral
examination as provided by this section; or by deposition upon written
questions as provided by § 2.124.
(2) Testimony taken in a foreign country shall be taken: by deposition
upon written questions as provided by § 2.124, unless the Board, upon
motion for good cause, orders that the deposition be taken by oral
examination, or the parties so stipulate; or by affidavit or declaration,
subject to the right of any adverse party to elect to take and bear the
expense of cross-examination by written questions of that witness. If a
party serves notice of the taking of a testimonial deposition upon written
questions of a witness who is, or will be at the time of the deposition,
present within the United States or any territory which is under the
control and jurisdiction of the United States, any adverse party may,
within twenty days from the date of service of the notice, file a motion
place for cross-examination. See U.S. Postal Serv. v. RPost Commc’n Ltd., 124 USPQ2d 1045,
1047 n.2 (TTAB 2017).
4 31 TTABVUE.
3
Cancellation No. 92064830
with the Trademark Trial and Appeal Board, for good cause, for an order
that the deposition be taken by oral examination.
Thus, a party may, during its testimony period, take the testimony of a witness: (1) by
affidavit or declaration under Trademark Rule 2.20; (2) by deposition upon oral
examination as provided under Trademark Rule 2.123; or (3) by deposition upon
written questions as provided under Trademark Rule 2.124. See Trademark Rule
2.123(a)(1). Should the witness be located in a foreign country, the taking of testimony
is limited to either a testimonial affidavit/declaration or a deposition upon written
questions (unless the parties stipulate to or there is good cause for oral examination).
See Trademark Rule 2.123(a)(2).
Where, as here, testimony is presented by affidavit or declaration, Trademark
Rules 2.123(a)(1) and (a)(2) make clear that the methods of cross-examination
permitted depend on where the witness is located. “[I]f such witness is within the
jurisdiction of the United States,” any adverse party may “take … oral cross-
examination of that witness ....” Trademark Rule 2.123(a)(1). “[I]f such witness is
outside the jurisdiction of the United States,” any adverse party may “conduct cross-
examination by written questions as provided in § 2.124 ....” Id.
Subsection (a)(2) confirms this dichotomy. It provides that “[t]estimony taken in a
foreign country shall be taken: by deposition upon written questions as provided by
§ 2.124, unless the Board, upon motion for good cause, orders that the deposition be
taken by oral examination, or the parties so stipulate; or by affidavit or declaration,
subject to the right of any adverse party to elect to take and bear the expense of cross-
examination by written questions of that witness.” Trademark Rule 2.123(a)(2)
4
Cancellation No. 92064830
(emphasis added). In addition, subsection (e)(1) provides that “[w]hen testimony is
proffered by affidavit or declaration, every adverse party will have the right to elect
oral cross-examination of any witness within the jurisdiction of the United States”
and that “examination of witnesses outside the jurisdiction of the United States” will
be conducted in accordance with Trademark Rule 2.124, which concerns depositions
upon written questions.
Contrary to Petitioner’s argument, Trademark Rule 2.124(b)(3)5 is not a provision
that generally allows cross-examination upon written questions to be conducted of
any witness, including those located in the United States. While Trademark Rule
2.124 sets forth the procedures governing depositions upon written questions, it does
not set forth the circumstances under which depositions upon written questions may
occur. That is left to Trademark Rule 2.123(a). The Board reads Trademark Rule
2.124 in a manner that does not conflict with Trademark Rule 2.123.
Decision
Trademark Rule 2.123(a)(1) permits an affiant or declarant witness located in the
United States to be cross-examined only by oral examination. Petitioner’s motion to
take the cross-examination of Respondent’s witnesses located within the United
States upon written questions is DENIED.
5 Trademark Rule 2.124(b)(3), 37 C.F.R. § 2.124(b)(3), provides that “[a] party desiring to
take cross-examination, by written questions, of a witness who has provided testimony by
affidavit or declaration shall serve notice thereof upon each adverse party and shall file a
copy of the notice, but not copies of the questions, with the Board.”
5
Cancellation No. 92064830
Although Petitioner must take the cross-examinations he seeks by oral
examination, the Board’s rules do not mandate that such examination be in person.
Oral cross-examination may be conducted by telephone or other remote means should
the parties so stipulate or upon motion for good cause. See Fed. R. Civ. P. 30(b)(4).6
Since “[n]othing in the language of Rule 30 requires a showing of necessity, financial
inability or other hardship to obtain an order to proceed via telephone, … leave to
take telephonic depositions [is] liberally granted in appropriate cases.” Hewlett-
Packard Co. v. Healthcare Pers. Inc., 21 USPQ2d 1552, 1553 (TTAB 1991); see also
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 703.01(h)
(2018). Petitioner has identified the travel and accommodation costs associated with
an in-person cross-examination as one of the primary reasons for his seeking to take
cross-examination upon written questions.7 Rather than further delay this matter,
the Board has construed Petitioner’s motion as, alternatively, seeking leave to take
oral cross-examination by telephone or other remote means. Since it is Respondent
who has insisted on oral cross-examination, the Board sees neither harm nor
prejudice to Respondent in permitting Petitioner to conduct such cross-examination
by remote means should Petitioner elect to do so.
Petitioner should note, however, that while Respondent bears the expense of
producing its witnesses, Petitioner must schedule and bear the expense of the court
6 Trademark Rule 2.116(a), 37 CFR § 2.116(a), provides that “[e]xcept as otherwise
provided, and wherever applicable and appropriate, procedure and practice in inter partes
proceedings shall be governed by the Federal Rules of Civil Procedure.
7 29 TTABVUE 4-5.
6
Cancellation No. 92064830
reporter.8 See Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160,
1166-67 (TTAB 2017); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL
BOARD RULES, 81 Fed. Reg. 69950, 69964 (Oct. 7, 2016) (Notice of Final Rulemaking).
Any redirect or recross examination will be taken at the same time as the oral cross-
examination. Id.
Petitioner is allowed until TWENTY DAYS from the mailing date of this order to
serve and file notice of his election to take oral cross-examination of Respondent’s
witnesses. Should he elect to do so, the cross-examinations must be completed within
thirty days of service of the notice of election. See Trademark Rule 2.123(c).
Proceedings remain otherwise SUSPENDED. The remaining schedule, beginning
with the deadline for Petitioner’s rebuttal disclosures, will be reset in accordance with
whether Petitioner elects to proceed with cross-examination.
***
8 Domestic depositions in a Board proceeding are generally taken before a court reporter
authorized to administer oaths in the jurisdiction where the deposition is taken. See
Trademark Rule 2.123(d) and Fed. R. Civ. P. 28(a). It is worth noting that Petitioner would
bear these same expenses with a cross-examination on written questions. Whether the cross-
examination is conducted orally or upon written questions, both procedures require a court
reporter or other officer to swear in the witness, record the answers and to create a written
transcript of the examination. See Trademark Rules 2.123(e) and 2.124(e); Fed. R. Civ. P. 28.
In the case of written questions, the court reporter or other officer designated in the notice of
examination will read the cross-examination questions to the witness and record the answers
for later creation of a written transcript. See Trademark Rule 2.124(e); TBMP § 703.02(g).
It should be further noted that there is more than one way to challenge testimony by
declaration. Failure to seek cross-examination of Respondent’s declarant does not preclude
Petitioner from submitting a rebuttal declaration during his rebuttal testimony period, or
arguing in his brief that Respondent’s declarations are inconsistent, lack corroborative detail,
or otherwise merit little evidentiary weight.
7