Instagoods Pty Ltd v. Instagram, LLC

UNITED STATES PATENT AND TRADEMARK OFFICE

THIS ORDER IS A Trademark Trial and Appeal Board

PRECEDENT OF THE P.O. Box 1451

TTAB Alexandria, VA 22313-1451

General Contact Number: 571-272-8500

General Email: TTABInfo@uspto.gov

mbm/ajl

October 11, 2023

Opposition No. 91266266 (Parent)

Instagram, LLC

v.

Instagoods Pty Ltd

__________________________________________

Opposition No. 91285552

Instagoods Pty Ltd

v.

Instagram, LLC

Ashlyn Lembree, Interlocutory Attorney:

This consolidated proceeding now comes before the Board for consideration of

Instagram, LLC’s (“Instagram”) motion, filed January 13, 2023, in Opposition No.

91266266, to take the discovery depositions of two officers of Instagoods Pty Ltd

(“Instagoods”), both of whom are located in Australia, by oral examination via

videoconference.1 The motion is fully briefed.

1 29 TTABVUE. Citations to the record or briefs in this order include citations to the publicly

available documents on the Board’s online docketing system, TTABVUE. See, e.g., New Era

Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, at *2 n.1 (TTAB 2020) (citing Turdin v.

Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014)). The number preceding

“TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE”

refer to the page number(s) of that particular docket entry, if applicable. The Board expects

Opposition Nos. 91266266 and 91285552

I. Sua Sponte Consolidation

When cases involving common questions of law or fact are pending before the

Board, the Board may order consolidation of the cases. See Fed. R. Civ. P. 42(a); see

also One Jeanswear Grp. Inc. v. YogaGlo, Inc., 127 USPQ2d 1793, 1795 (TTAB 2018).

Consolidation is discretionary with the Board, and may be ordered upon motion

granted by the Board, stipulation of the parties approved by the Board, or the Board’s

own initiative. See Wis. Cheese Grp., LLC v. Comercializadora de Lácteos y Derivados,

S.A. de C.V., 118 USPQ2d 1262, 1264 (TTAB 2016); see also Wise F&I, LLC v. Allstate

Ins. Co., 120 USPQ2d 1103, 1105 (TTAB 2016). In determining whether to consolidate

proceedings, the Board will weigh the savings in time, effort, and expense which may

be gained from consolidation, against any prejudice or inconvenience which may be

caused thereby. Wis. Cheese Grp., 118 USPQ2d at 1264.

The parties to these proceedings are identical; the marks forming the basis of the

disputes are INSTAGOODS and INSTA, respectively; matters in dispute in both

opposition proceedings turn on the strength of the term INSTA; 2 and, the existence

of one proceeding is alleged as the basis of entitlement for another proceeding.3

Accordingly, Opposition Nos. 91266266 and 91285552 are hereby consolidated and

that the parties will cite to the record using TTABVUE throughout this proceeding and

particularly when referring to the evidentiary record in final briefs.

2 See 4 TTABVUE 5, Fourth, Fifth, and Sixth “Affirmative Defenses” (Proc. No. 91266266)

(alleging third party use and descriptiveness of the prefix “INSTA”); see also 1 TTABVUE 6-

7, ¶¶ 5-13 (Proc. No. 91285552) (allegations concerning descriptiveness of the term “INSTA”).

3 1 TTABVUE 3-4, ¶ 2 (Proc. No. 91285552).

2

Opposition Nos. 91266266 and 91285552

may be presented on the same record and briefs. See Wise F&I, LLC, 120 USPQ2d at

1105 (sua sponte consolidation).

The complete record will be maintained in Opposition No. 91266266 as the

“parent” case. From this point on, only a single copy of all motions and submissions

should be filed. Each submission should be filed in the parent case only, but its

caption must list both proceeding numbers, identifying the parent case first.

Despite being consolidated, each proceeding retains its separate character and

requires entry of a separate judgment. The decision on the consolidated cases will

take into account any differences in the issues raised by the respective pleadings; a

copy of the decision will be placed in each proceeding file. One Jeanswear Grp., 127

USPQ2d at 1795.

Because the proceedings have been consolidated, the Board has reset dates as set

forth at the end of this order.4

II. Background in Opposition No. 91266266

Instagoods is an Australian entity located in the State of New South Wales (NSW),

Australia. On December 1, 2020, Instagram filed a notice of opposition asserting the

grounds of likelihood of confusion and dilution by blurring against Instagoods’

involved Application Serial No. 88923261 to register the mark INSTAGOODS on the

Principal Register, filed under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).

4 The parties should promptly inform the Board of any other Board proceedings or related

cases within the meaning of Federal Rule of Civil Procedure Rule 42, so that the Board can

consider whether further consolidation is appropriate.

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Opposition Nos. 91266266 and 91285552

In disclosures and discovery responses, Instagoods identified Shaun Bonett, the

founder and director of Instagoods, who furnished the discovery responses, as having

information regarding the topics of: selection, decision to seek registration, initial

development, design, and marketing of “offerings” in the U.S., as well as adoption,

planned use, potential customers, channels of trade, and marketing plans related to

the INSTAGOODS mark.5 Instagram seeks to depose Mr. Bonett regarding these

topics, as well as regarding his knowledge of two prior applications to register the

identical INSTAGOODS mark filed by Instagoods’ former U.S. Vice President of

Brand Development, Lavetta Willis,6 while she was an officer of Instagoods, which

were subject to a prior opposition proceeding with Instagram, and the scope of Ms.

Willis’ authority with Instagoods.7 Mr. Bonett is a resident of NSW, Australia.

5 29 TTABVUE 24, 30-31, 35, 39-41.

6 Although Ms. Willis’ title as U.S. Vice President of Brand Development is redacted in

Instagram’s publicly filed motion, her title is not redacted in Instagram’s publicly available

reply brief. Compare 29 TTABVUE 6 with 32 TTABVUE 28. Further, the Board determines

that Ms. Willis’ title cannot reasonably be considered confidential and declines to treat it as

such. See Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) (The Board may treat as not

confidential that material which cannot reasonably be considered confidential,

notwithstanding a designation as such by a party.). Except for submissions that contain truly

confidential information, Board proceedings are designed to be open to public view.

Trademark Rule 2.27(c); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF

PROCEDURE (TBMP) § 412.01(c) (2023). Over-designation of material as confidential thwarts

the ability of the public to inspect Board records and documents. See TBMP § 412.01(c).

Moreover, at final decision, the Board needs to be able to discuss the evidence of record,

unless there is an overriding need for confidentiality, so that the parties and a reviewing

court will know the basis of the Board’s decisions. Edwards Lifesciences Corp. v. VigiLanz

Corp., 94 USPQ2d 1399, 1402 (TTAB 2010).

7 29 TTABVUE 4-7; see also 32 TTABVUE 28.

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Opposition Nos. 91266266 and 91285552

In addition, Instagoods identified in its discovery responses Roger Hatem, a

Director of Instagoods,8 as having knowledge concerning Instagoods’ initial

development, design, and marketing plans regarding offerings under the

INSTAGOODS mark.9 Instagram seeks to depose Mr. Hatem regarding these topics

as well as regarding his knowledge of the two prior INSTAGOODS applications filed

by Ms. Willis’ and the scope of Ms. Willis’ authority with Instagoods. Mr. Hatem also

is a resident of NSW, Australia.

On October 28, 2022, Instagram informed Instagoods of its intent to take the

discovery depositions of Messrs. Bonett and Hatem, and requested that Instagoods

consent to taking the discovery depositions orally via videoconference, rather than by

written questions under Trademark Rule 2.124, 37 C.F.R. § 2.124. While Instagoods

did not object to the discovery depositions, Instagoods would not consent to oral

depositions by videoconference. On January 13, 2023, Instagram filed its motion for

leave to take the discovery depositions of Messrs. Bonett and Hatem orally by

videoconference.

III. Instagram’s Motion to Take Oral Discovery Depositions by

Videoconference; Analysis and Discussion

A. Good Cause

Trademark Rule 2.120(c)(1) provides as follows:

8Mr. Hatem’s title is also redacted from Instagram’s publicly filed motion; however, the

Board determines that Mr. Hatem’s title cannot reasonably be considered confidential and

declines to treat it as such. See Trademark Rule 2.116(g).

9 29 TTABVUE 40-41.

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Opposition Nos. 91266266 and 91285552

The discovery deposition of a natural person residing in a foreign country who

is a party or who, at the time set for the taking of the deposition, is an officer,

director, or managing agent of a party, or a person designated under Rule

30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, shall, if taken in

a foreign country, be taken in the manner prescribed by § 2.124 [upon written

questions] unless the Trademark Trial and Appeal Board, upon motion for good

cause, orders that the deposition be taken by oral examination, or the parties

so stipulate.

37 C.F.R. § 2.120(c)(1).

What constitutes good cause for a motion to take a discovery deposition orally in

a foreign country must be determined on a case-by-case basis, upon consideration of

the particular facts and circumstances in each situation. Orion Grp. Inc. v. Orion Ins.

Co., 12 USPQ2d 1923, 1925 (TTAB 1989). In deciding such a motion, the Board

weighs the equities, including the advantages of an oral deposition and any financial

hardship that the party to be deposed might suffer if the deposition were taken orally

in the foreign country. Id.; see also Salutare S.A. de C.V. v. Remedy Drinks Pty Ltd,

2022 USPQ2d 16, at *8-9 (TTAB 2021) (citing Jain v. Ramparts Inc., 49 USPQ2d

1429, 1431 (TTAB 1998)).

The taking of the deposition also must comply with any applicable procedural

requirements of the Convention on the Taking of Evidence Abroad in Civil or

Commercial Matters (“Hague Convention”), and, if a party appropriately seeks to

compel a deposition through Chapter I or Article 18 of the Hague Convention,10 any

10 Chapter I of the Hague Convention pertains to letters of request; Article 18 pertains to the

application by a diplomatic officer, consular agent, or commissioner to take evidence by

compulsion. Hague Conference on Private International Law (HCCH), Hague Evidence

Convention, text available at https://assets.hcch.net/docs/dfed98c0-6749-42d2-a9be-

3d41597734f1.pdf (last accessed Sept. 11, 2023); see also Double J of Broward Inc. v. Skalony

Sportswear GmbH, 21 USPQ2d 1609, 1611-12 (TTAB 1991). The HCCH website may be

consulted regarding whether both countries are signatories to the Hague Convention,

6

Opposition Nos. 91266266 and 91285552

limitations the Board may impose upon consideration of international comity in light

of any local laws given consideration by the Board. See Salutare S.A. de C.V., 2022

USPQ2d 16, at *8; see also Fed. R. Civ. P. 28(b)(3); see also Hague Convention, Art.

9; see also RESTATEMENT (FOURTH) OF FOREIGN RELATIONS LAW § 426(1) (2018)

(Fourth Restatement) (“A court in the United States, when authorized by law, may

order a person subject to its jurisdiction to produce documents or other forms of

evidence and to submit to depositions and other forms of compulsory interviews

relevant to an action or investigation, whether administrative, legislative, or judicial,

even if the evidence, the person who controls access to the evidence, or the person

subject to the compulsory interview is outside the United States.”); see also Fourth

Restatement § 426(3) (tribunal may consider “the likelihood of severe sanctions for

failing to comply with foreign law and the good-faith efforts of the person to comply

with the order in light of obstacles imposed by foreign law” in imposing sanctions for

non-compliance with “an order to produce evidence or to submit to a compulsory

interview”); see also Fourth Restatement § 426, cmt. a (five-factor comity test),

discussed, infra, at pp. 16-18. In granting a motion to take a discovery deposition

orally in a foreign country in accordance with any applicable Hague Convention

requirements and consistent with the application of international comity and the

Board’s own rules of practice, the Board may permit a deposition to be taken by

whether the U.S. has assented to the other country’s accession to the treaty, the nature of

the other country’s declarations as to specific articles of the treaty, and interpretations of the

treaty reported by the HCCH Permanent Bureau.

7

Opposition Nos. 91266266 and 91285552

remote means. See Salutare S.A. de C.V., 2022 USPQ2d 16, at *8; see also Fed. R. Civ.

P. 30(b)(4).

In its motion filed on January 13, 2023, Instagram argues that there is good cause

under Trademark Rule 2.120(c)(1), because Messrs. Bonett and Hatem “appear to be

the only remaining witnesses with relevant information employed by Instagoods,”

and that Instagram has been unsuccessful in obtaining information concerning Ms.

Willis and her prior-filed applications through written discovery.11 Instagram

maintains that it has had difficulty obtaining the discovery deposition of Ms. Willis,

because she is no longer an employee of Instagoods. Instagram argues that oral

depositions will permit immediate follow-up questions, spontaneity, and the ability

to evaluate the witness’ demeanor and credibility, and that oral depositions will avoid

answers to written questions that are carefully tailored by counsel. Instagram also

argues that both witnesses speak English, live testimony will take less time and

resources than taking the discovery depositions on written questions, and Instagoods

will not suffer financial hardship if the depositions are taken orally by remote means.

In response, Instagoods acknowledges that conducting the depositions by oral

examination would not pose a financial hardship for Instagoods, but argues that

scheduling oral depositions would be difficult due to the time difference and the busy

schedules of the two witnesses. Instagoods also argues that even if the Board were to

11 29 TTABVUE 10-13. Instagram states that information concerning Ms. Willis’ filing of two

prior applications for the identical INSTAGOODS mark while she was an officer of

Instagoods may support a further ground of claim preclusion. See 29 TTABVUE 12 (mot.);

see also 32 TTABVUE 28 (reply exhibit with proposed Letter of Request).

8

Opposition Nos. 91266266 and 91285552

find good cause, because Australia is a signatory to the Hague Convention, Instagram

must comply with the Hague Convention and local laws of NSW, and that

“depositions by videoconference for use in a foreign tribunal cannot be compelled in

New South Wales.”12

In its reply brief, Instagram states that it has already offered to cooperate with

Instagoods to coordinate the depositions to accommodate the time differences and

schedules of the witnesses and to break up the depositions into shorter sessions, if

necessary.

Upon consideration of the particular facts and circumstances of this proceeding,

the Board finds that Instagram has demonstrated good cause to take the foreign

depositions orally. Specifically, Messrs. Bonett and Hatem are the sole remaining

party witnesses with knowledge regarding issues pertinent to the claims in this

proceeding. Moreover, the Board finds that oral depositions are likely to aid in the

furtherance of discovery in this proceeding, particularly where Instagram has had

difficulty obtaining information regarding Ms. Willis’ role with Instagoods and her

prior-filed applications through written discovery. The fact that the oral discovery

depositions may be conducted without the need for translations and Instagram’s

willingness to coordinate the depositions according to the schedules of the witnesses

further supports a finding of good cause. See Orion Grp. Inc., 12 USPQ2d at 1926

(considering the lack of need for translations a factor in finding good cause to take

depositions orally).

12 31 TTABVUE 3.

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Opposition Nos. 91266266 and 91285552

B. Taken Remotely by Videoconference

Turning to Instagram’s request that the discovery depositions be taken remotely

via videoconference, the Board finds it appropriate for the oral depositions to be

conducted remotely. Rule 30(b)(4) of the Federal Rules of Civil Procedure provides

that depositions may be taken “by telephone or other remote means,” and “[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 [remote means], and leave to take

depositions [via remote means] should be liberally granted in appropriate cases.”

Salutare S.A. de C.V., 2022 USPQ2d 16, at *15-16 (quoting Hewlett-Packard Co. v.

Healthcare Pers., Inc., 21 USPQ2d 1552, 1553 (TTAB 1991)); see also Fed. R. Civ. P.

30(b)(4). “[F]ederal practice favors the use of technological benefits in order to

promote flexibility, simplification of procedure and reduction of cost to parties.”

Salutare S.A. de C.V., 2022 USPQ2d 16, at *15. The taking of the discovery

depositions remotely by videoconference will promote flexibility and reduce costs to

the parties, particularly where the parties may elect to break up the depositions into

segments to accommodate the witnesses’ schedules.

In its brief in response to Instagram’s motion, Instagoods argues that the laws of

NSW prohibit the taking of depositions by videoconference.13 In support of its

argument, Instagoods submits the declaration of Susan Schlesinger, Instagoods’ U.S.

counsel, who asserts that, under the law of NSW: “A foreign court is not entitled to

directly take evidence from a witness located in NSW by video-link. However, NSW

13 Id. at 5-6.

10

Opposition Nos. 91266266 and 91285552

law does not prevent a witness, who is located in NSW, from voluntarily giving

evidence from NSW by videolink [sic] in proceedings in a foreign court.”14

Based on the information provided and the record currently before the Board,15 it

does not appear that the taking of a discovery deposition by videoconference is

prohibited by NSW local law. Rather, the provisions cited by Instagoods provide only

that a foreign court may not directly take evidence from a witness in NSW.16

Discovery depositions in Board proceedings are taken outside the presence of the

Board and do not result in the Board directly taking evidence from the witness. In

fact, in context, the 2017 NSW Profile cited by Instagoods “provides for evidence on

commission to be recorded in NSW by video, and for that recording to be sent to the

foreign tribunal with a transcript of the witness’ oral evidence.”17

14 Id. (response brief), 14-15 (Schlesinger Decl., attaching Australia Country Profile “updated

on: 08/08/2017” (“2017 NSW Profile”) on taking of evidence by video-link under the Hague

Convention), and 19 (2017 NSW Profile response to “Does YOUR STATE, in the application

of Article 27 (ie internal law or practice), allow for a foreign Court to directly take evidence

by video-link?”) (emphasis as shown in original).

15 Rule 44.1 of the Federal Rules of Civil Procedure (“Determining Foreign Law”) does not

obligate judges to undertake the burden of researching foreign law. CHARLES ALAN WRIGHT

& ARTHUR R. MILLER, 9A FEDERAL PRACTICE & PROCEDURE § 2444, “Proof of Foreign Law”

(3d ed. April 2023 Update) (and cases cited therein).

16 31 TTABVUE 19.

17 Id. at 20. As further contextual support, the Board considers Instagram’s argument that

the Evidence on Commission Act 1995 (NSW), Part 4, § 33(1), provides the NSW Supreme

Court with “broad power to order any type of evidence gathering in NSW that it believes is

necessary to help with a request made in a foreign proceeding.” 32 TTABVUE 4; see also Fed.

R. Civ. P. Rule 44.1 (in determining foreign law, the court may consider any relevant material

or source). The Board prefers that parties submit, if possible, copies of the actual foreign

statutes and rules cited in their briefs and exhibits, in English, along with date of enactment.

11

Opposition Nos. 91266266 and 91285552

In view of the foregoing, and on balance, the Board finds that Instagram has

demonstrated good cause to take the discovery depositions of the witnesses by oral

examination and that it is appropriate for the depositions to be taken via

videoconference. Accordingly, Instagram’s motion to take the witnesses’ discovery

depositions orally by videoconference is granted.

C. Compliance with Foreign Procedures and Available Devices

Notwithstanding this grant, it is Instagram’s responsibility to follow appropriate

procedures for ensuring that its taking of the discovery depositions orally by

videoconference of Messrs. Bonett and Hatem, as compelled by a foreign tribunal,

complies with (1) any applicable procedural treaty requirements and (2) any

limitations the Board may impose upon consideration of international comity in light

of any local laws given consideration by the Board.18 See Salutare, 2022 USPQ2d 16,

at *17; see also discussion, supra, at pp. 6-8.

If the party seeking the oral deposition establishes good cause under Trademark

Rule 2.120(c), as Instagram has done here, the party may use any of the devices

available to it under Federal Rule of Civil Procedure 28(b)(1). These include, noticing

the deposition to all parties in the proceeding;19 seeking issuance by the Board of a

18 Inasmuch as Instagram stated an intention to seek compulsion of the depositions by a

foreign tribunal under the Hague Convention and the Board herein informs Instagram of its

requirements if it were to so proceed, see discussion, supra, at pp. 6-8, and infra at pp. 16-18,

Instagram’s request that the discovery depositions occur within two weeks of the Board’s

order is denied.

19 Depositions on Notice. A deposition may be taken in a foreign country on notice, before a

person authorized to administer oaths either by federal law or by the law in the place of

examination. Fed. R. Civ. P. 28(b)(1)(C). “The United States has conventions on the subject

[of taking depositions] with some countries and the simple procedure of taking the deposition

12

Opposition Nos. 91266266 and 91285552

letter of request for use under the Hague Convention;20 seeking issuance by the Board

or, if applicable, a U.S. District Court;21 of a letter rogatory for application to the U.S.

by notice may be available in many instances.” WRIGHT & MILLER, 8A FED. PRAC. & PROC.

§ 2083 (“Depositions in Foreign Countries”) (3d ed.). The Hague Convention establishes a

framework by which diplomatic officers, consular agents, and commissioners may, without

compulsion, take evidence abroad. Hague Convention, Arts. 15-17. Notarizing officials of the

United States of America at the locality, as defined by 22 C.F.R. § 92.1(d), are competent

officials for taking depositions on notice in foreign countries. 22 C.F.R. §§ 92.52 and 92.55(a).

However, if the laws or authorities of the national government do not permit notarizing

officers to take depositions, the notarizing or commissioned officer may return the notice or

commission and advise that an alternative method may be used. 22 C.F.R. §§ 92.55(c).

If service of a notice of deposition would normally be accomplished by way of a subpoena to

recipients in the U.S., it may not be made in that manner for recipients abroad. Cf. Fed. R.

Civ. P. 4(k) (territorial limits). But see 28 U.S.C. § 1783 (service upon U.S. national residing

abroad). Rather, service may be affected by the Hague Service Convention or the Additional

Protocol to the Inter-American Convention, if applicable given the nature of the document

and the country of service. More information on service is available from the U.S. Dept. of

State, Bureau of Consular Affairs, “Service of Process,” available at https://travel.state.

gov/content/travel/en/legal/travel-legal-considerations/internl-judicial-asst/Service-of-

Process.html (last accessed Sept. 11, 2023).

20 Letter of Request. See Fed. R. Civ. P. Rule 28(b)(1)(A) and (B). Chapter I and Article 18 of

the Hague Convention establish a uniform framework to facilitate and streamline the

compulsory taking of evidence abroad by use of “letters of request.” See Hague Convention,

Preamble. See also Galaxy Metal Gear, Inc. v. Direct Access Tech., Inc., 91 USPQ2d 1859,

1862 n.5 (TTAB 2009) (recognizing the Hague Convention procedure as a means to obtain

the deposition of a nonparty foreign witness); see also Double J of Broward Inc., 21 USPQ2d

at 1611-12. If seeking Board issuance of a letter of request, the party should attach to its

motion the proposed letter. The Board notes that evidence obtained in response to a letter of

request need not be excluded merely because it is not a verbatim transcript, because the

testimony was not taken under oath, or because of any similar departure from the

requirements for depositions taken within the United States. Fed. R. Civ. P. 28(b)(4).

21 Some countries will not accept letters rogatory issued by an Administrative Law Judge.

U.S. Dept. of State – Bureau of Consular Affairs, “Preparation of Letters Rogatory,” available

at https://travel.state.gov/content/travel/en/legal/travel-legal-considerations/internl-judicial-

asst/obtaining-evidence/Preparation-Letters-Rogatory.html (last accessed Sept. 11, 2023). In

view thereof, it is possible that some countries will not accept letters rogatory issued by the

Board. In that event, application to a U.S. District Court for issuance of a letter rogatory may

be possible. Id. (citing 28 U.S.C. § 1651).

13

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Department of State for diplomatic processing;22 or seeking the appointment of an

individual or officer within the foreign territory who is commissioned to take the oath

of the deponent.23

Seeking a deposition upon notice, letter of request, letter rogatory, or commission

are not mutually exclusive options, nor is exhaustion of one method required before

seeking another method. See Advisory Committee Notes on Amendments to Fed. R.

Civ. P. 28(b), 31 F.R.D. 587, 640 (1963) (letter rogatory and commission may be used

for contingency should witness be recalcitrant); Societe Nationale Industrielle

22 Letters Rogatory. See Fed. R. Civ. P. Rule 28(b)(1)(B); see also WRIGHT & MILLER, 8A FED.

PRAC. & PROC. § 2083 (“Letters rogatory are formal communications in writing sent by a court

in which an action is pending to a court or judge of a foreign country requesting that the

testimony of a witness resident within the jurisdiction of the latter court may be formally

taken there under its direction and transmitted to the first court for use in the pending action.

Typically, the letter rogatory will be channeled through the United States State Department

and the ministry of justice of the foreign country. . . Compliance with the letters rogatory

rests entirely upon the comity of the courts of the two countries toward each other.”); see also

Galaxy Metal Gear, 91 USPQ2d at 1862, n.5; see also U.S. Dept. of State, Bureau of Consular

Affairs, “Preparation of Letters Rogatory,” available at https://travel.state.gov/content/

travel/en/legal/travel-legal-considerations/internl-judicial-asst/obtaining-evidence/

Preparation-Letters-Rogatory.html (last accessed Sept. 25, 2023)

23 Deposition on Commission. See Fed. R. Civ. P. Rule 28(b)(1)(D); see also 22 C.F.R. § 92.53

(“’Commission to take depositions’ defined”); see also Victoria E. Brieant, “Techniques and

Potential Conflicts in the Handling of Depositions (Part 2) (with Forms),” 20 No. 1 PRAC.

LITIGATOR 9, 18 (Appendix 3) (Jan. 2009). United States consular officers, and other United

States notarizing officers, as defined in 22 C.F.R. § 92.1(d), may be designated to execute a

commission to take depositions. 22 C.F.R. § 92.55(a). Alternatively, a commission to take

depositions can be issued to a foreign official or to a private person in a foreign country. 22

C.F.R. § 92.66(a); see also Packard v. City of New York, 326 F.R.D. 66, 69 (S.D.N.Y. 2018)

(“Under Rule 28(b)(1)(D), [the deponent, a party plaintiff who sought a protective order to

have his deposition taken by videoconference from his residence in Taiwan rather than in

person in New York] also could seek to identify a suitable person in Taiwan to administer the

oath pursuant to a commission issued by me. . . If [the deponent] chooses this route, [he] shall

submit to the Court . . . an appropriate commission for the Court’s consideration and

approval.”) (footnotes and citation omitted); see also Hague Convention, Arts. 17, 18 (taking

of evidence by a person duly appointed as a commissioner, without and with compulsion).

14

Opposition Nos. 91266266 and 91285552

Aerospatiale v. U.S. Dist. Ct. for S. Dist. of Iowa, 482 U.S. 522, 543-44 (1987)

(Aerospatiale) (no rule of first resort to Hague Convention for evidence-gathering on

foreign soil merely because both countries adopted the Convention);24 see also Fed. R.

Civ. P. 28(b)(2)(B) (issuance of a letter of request or commission does not require a

showing that taking the deposition in another manner is impracticable or

inconvenient).

In its reply brief, Instagram argues for the first time that it will seek its requested

discovery by way of the Hague Convention by asking the Board to issue a letter of

request so that Instagram can seek an order compelling the witnesses’ attendance at

the depositions in NSW. Instagram attaches a copy of the proposed letter of request

to its reply brief. A party’s arguments and evidence should be made in the brief in

support of its motion. See Kellogg Co. v. Pack’Em Enters. Inc., 14 USPQ2d 1545, 1549

n. 9 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). Instagram’s

requested relief of the issuance of a letter of request was raised improperly for the

first time on reply. Instagoods, therefore, was not afforded an opportunity to respond.

Instagram’s request for issuance of a letter of request is therefore denied, without

prejudice.

24 The “optional Convention procedures” are a “permissive supplement, not a pre-emptive

replacement for other means of obtaining evidence located abroad,” and “are available

whenever they will facilitate the gathering of evidence by the means authorized in the

Convention.” Aerospatiale, 482 U.S. at 533-41 (considering, inter alia, the Convention’s

permissive language, history, and lack of discrimination between party and non-party

evidence).

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Opposition Nos. 91266266 and 91285552

Although Instagram’s request for issuance of a letter of request is denied on

procedural grounds, the parties are advised that Instagram, as the party seeking the

application of the Hague Convention procedures for issuance of a letter of request,

bears the burden of persuading the tribunal of the necessity of using those

procedures. Pronova BioPharma Norge AS v. Teva Pharm. USA, Inc., 708 F. Supp.

2d 450, 452 (D. Del. 2010); Rich v. KIS Cal. Inc., 121F.R.D. 254, 257 (M.D.N.C. 1988).

In deciding whether to apply the heavier hand of Hague Convention, Chapter I

procedures concerning letters of request, the court or tribunal must consider the

particular facts of each case, the sovereign interests at issue, and the likelihood that

the procedures will prove effective. Aerospatiale, 482 U.S. at 543-44. The Board has

adopted a five-factor balancing test set forth in the Third Restatement § 442(1)(c) for

the purpose of addressing the demands of comity when seeking evidence abroad:

(1) the importance to the litigation of the documents or other information

requested;

(2) the degree of specificity of the request;

(3) whether the information originated in the United States;

(4) the availability of alternative means of securing the information; and

(5) the extent to which noncompliance with the request would undermine

important interests of the United States, or compliance with the request

would undermine important interest of the state where the information is

located.

Intercont’l Exch. Holdings, Inc. v. N.Y. Mercantile Exch., Inc., 2021 USPQ2d 988, at

*13 (TTAB 2021) (discovery sought under the Federal Rules of Civil Procedure

without resort to the Hague Convention) (citing In re Air Crash at Taipei, 211 F.R.D.

374, 377 (C.D. Cal. 2002) (adopting the RESTATEMENT (THIRD) OF FOREIGN RELATIONS

LAW (Third Restatement) § 442(1)(c) five-part test noted by the U.S. Supreme Court

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Opposition Nos. 91266266 and 91285552

in Aerospatiale, 482 U.S. at 544, n.28, in connection with its tripartite test of “the

particular facts, sovereign interests, and likelihood that resort to those procedures

will prove effective” in ordering the production of unredacted personal information

notwithstanding a foreign secrecy law)).25 The Board applies a test of reasonableness

in any refusal or insistence on use of Hague Convention procedures, such as use of

traditional discovery methods for simple discovery requests and use of Hague

Convention procedures for more intrusive discovery requests. See Aerospatiale, 482

U.S. at 544-546; see also Double J of Broward, 21 USPQ2d at 1612 (citing Rich v. KIS

Cal., 121 F.R.D. at 257).

To facilitate Board review of a motion for leave to take the deposition of a foreign

witness by oral examination, the preferred practice is to include with the motion the

25 The Fourth Restatement restates the same five-factor test of the Third Restatement for

application in issuing and framing an order compelling production of evidence abroad. Fourth

Restatement § 426, cmt. a. This five-factor test or its predecessor discussed in the

RESTATEMENT (2ND) OF FOREIGN RELATIONS LAW, § 40 (1965) (Second Restatement), or a

combination, has also been adopted in, e.g., the Second, Fifth, Seventh, Ninth, and Eleventh

Circuits, and quoted favorably by the Court of Appeals for the Federal Circuit. See In re

Grand Jury Proceedings (United States v. Field), 532 F.2d 404 (5th Cir. 1976) (Second

Restatement test); Reinsurance Co. of Am. v. Administratia Asigurarilor de Stat (Admin. of

State Ins.), 902 F.2d 1275, 1282 (7th Cir. 1990) (relying on Third Restatement § 442(2)(a) for

“good faith” additional optional factor to five-factor test in § 442(1)(c)); Richmark Corp. v.

Timber Falling Consultants, 959 F.2d 1468, 1475 (9th Cir. 1992) (Third Restatement five-

factor test); In re Grand Jury Proc., 691 F.2d 1384, 1389 (11th Cir. 1982) (Second

Restatement test). Courts in the Second Circuit follow the five-factor test along with two

additional factors: “the hardship of compliance on the party or witness from whom discovery

is sought [and] the good faith of the party resisting discovery.” Miller v. Arab Bank, PLC,

2023 WL 2731681, at *10 (E.D.N.Y. Mar. 31, 2023); see also Second Restatement § 40

(considering factor of “extent and nature of hardship that inconsistent enforcement actions

would impose upon the person”); see also Third Restatement § 442, Reporters’ Note No. 8

(“good faith effort to comply will be taken into account”); see also Cochran Consulting, Inc. v.

Uwatec USA, Inc., 102 F.3d 1224, 1227, 41 USPQ2d 1161, 1164 (Fed. Cir. 1996) (quoting with

favor the principles in the Second Restatement along with good faith in considering discovery

sanctions).

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Opposition Nos. 91266266 and 91285552

proposed notice of deposition, letter of request, letter rogatory, or commission, as

appropriate.26 A proposed notice of deposition should clearly identify the deponent’s

name and address, the proposed location and mode of the deposition, whether the

deposition is sought under Rule 30(a) or 30(b)(6), the method of recording, the

notarizing officer or commissioner or person taking the oath, the questions or topics

to be asked of the deponent, and whether documents are requested. See Fed. R. Civ.

P. 30(b) (notices of deposition).

The parties are encouraged to cooperate with one another in good faith to facilitate

the prompt completion of the discovery depositions of Messrs. Bonett and Hatem. In

the event the parties are unable to reach agreement regarding the procedures for

taking the oral discovery depositions of the witnesses, the Board will consider a

renewed motion for discovery under the Hague Convention, if appropriate, according

to the guidelines set forth above.27

26There is no explicit requirement in the Trademark Rules of Practice that a notice of

deposition be served before a party may move to take the deposition of a foreign witness by

oral examination. Salutare S.A. de C.V., 2022 USPQ2d at *17, n.46.

27 Nothing in this order should be construed as a finding as to whether the Hague Convention

procedures will be effective or whether Australia would be likely to honor a request from the

Board. In order to determine whether a foreign country is likely to honor a letter of request

issued by the Board, the Board prefers that the party filing a motion for a letter of request

consult the Office of American Citizen Services, Department of State, prior to filing a motion

for issuance of a letter of request. See generally TBMP § 404.03(c)(2). In the event an

Instagoods’ party witness fails to attend his discovery deposition, after being served with

proper notice or compelled by letter of request or letter rogatory, the Board will entertain a

motion for sanctions. See Trademark Rule 2.120(h); see also HighBeam Mktg., LLC v.

Highbeam Rsch., LLC, 85 USPQ2d 1902, 1906-07 (TTAB 2008); see also Fourth Restatement

§ 426(3).

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Opposition Nos. 91266266 and 91285552

IV. Summary; Schedule

Instagram’s motion in Opposition No. 91266266 to take the discovery depositions

of Messrs. Bonett and Hatem, both of whom reside in NSW, Australia, by oral

examination via videoconference is granted. Instagram’s request for issuance of a

letter of request for the same purpose is denied, without prejudice.

Opposition Proceedings Nos. 91266266 and 91285552 are consolidated, and

dates are reset by adopting the dates as set in Opposition Proceeding No. 91285552.

Proceedings are resumed. Dates are reset as follows:

Expert Disclosures Due 1/20/2024

Discovery Closes 2/19/2024

Pretrial Disclosures Due for Party in Position of Plaintiff in 4/4/2024

Proceeding No. 91266266

30-day Trial Period Ends for Party in Position of Plaintiff in 5/19/2024

Proceeding No. 91266266

Pretrial Disclosures Due for Party in Position of Defendant in 6/3/2024

Proceeding No. 91266266 and in Position of Plaintiff in Proceeding

No. 91285552

30-day Trial Period Ends for Party in Position of Defendant in 7/18/2024

Proceeding No. 91266266, and in Position of Plaintiff in Proceeding

No. 91285552

Pretrial Disclosures Due for Rebuttal of Party in Position of Plaintiff 8/2/2024

in Proceeding No. 91266266 and in Position of Defendant in

Proceeding No. 91285552

30-day Trial Period Ends for Rebuttal of Party in Position of Plaintiff 9/16/2024

in Proceeding No. 91266266, and in Position of Defendant in

Proceeding No. 91285552

Pretrial Disclosures Due for Rebuttal of Party in Position of Plaintiff 10/1/2024

in Proceeding No. 91285552

15-day Trial Period Ends for Rebuttal of Party in Position of Plaintiff 10/31/2024

in Proceeding No. 91285552

Opening Brief for Party in Position of Plaintiff in Proceeding No. 12/30/2024

91266266 Due

Combined Brief for Party in Position of Defendant in Proceeding No. 1/29/2025

91266266 and Opening Brief as Plaintiff in Proceeding No. 91285552

Due

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Opposition Nos. 91266266 and 91285552

Combined Rebuttal Brief for Party in Position of Plaintiff in 2/28/2025

Proceeding No. 91266266 and Brief as Defendant in Proceeding No.

91285552 Due

Rebuttal Brief for Party in Position of Plaintiff in Proceeding No. 3/15/2025

91285552 Due

Request for Oral Hearing (optional) Due 3/25/2025

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is

taken and introduced out of the presence of the Board during the assigned testimony

periods. The parties may stipulate to a wide variety of matters, and many

requirements relevant to the trial phase of Board proceedings are set forth in

Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the

manner and timing of taking testimony, matters in evidence, and the procedures for

submitting and serving testimony and other evidence, including affidavits,

declarations, deposition transcripts and stipulated evidence.

IMPORTANT TRIAL AND BRIEFING INSTRUCTIONS

Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and

(b). Such briefs should utilize citations to the TTABVUE record created during trial

to facilitate the Board’s review of the evidence at final hearing. See TBMP § 801.03.

Oral argument at final hearing will be scheduled only upon the timely submission of

a separate notice as allowed by Trademark Rule 2.129(a).

TIPS FOR FILING EVIDENCE, TESTIMONY, OR LARGE DOCUMENTS

The Board requires each submission to meet the following criteria before it will be

considered: 1) pages must be legible and easily read on a computer screen; 2) page

orientation should be determined by its ease of viewing relevant text or evidence, for

example, there should be no sideways or upside-down pages; 3) pages must appear in

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Opposition Nos. 91266266 and 91285552

their proper order; 4) depositions and exhibits must be clearly labeled and numbered

– use separator pages between exhibits and clearly label each exhibit using sequential

letters or numbers; and 5) the entire submission should be text-searchable.

Additionally, submissions must be compliant with Trademark Rules 2.119 and 2.126.

Submissions failing to meet all of the criteria above may require re-filing. Note:

Parties are strongly encouraged to check the entire document before filing.28 The

Board will not extend or reset proceeding schedule dates or other deadlines to allow

time to re-file documents. For more tips and helpful filing information, please visit

the ESTTA help webpage.

28 To facilitate accuracy, ESTTA provides previews of each page before submitting.

21