Opposition Brief — Rosenruist-Gestao E Servicos, LDA v. Virgin Enterprises, Ltd. (No. 07-1214)

FILED

APR 23 2008

NO-07-1214

GPCL OF theo

' SUPREME COURT US .

IN THE

Supreme Court of the United States

ROSENRUIST-GESTAO E SERVICOS LDA,

Petitioner,

—against—

VIRGIN ENTERPRISES LIMITED,

Respondent.

ON PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

BRIEF IN OPPOSITION

JAMES W. DABNEY

Counsel of Record

1 New York Plaza

New York, New York 10004

(212) 859-8000

JOHN F: DUFFY MITCHELL E.. EPNER

FRIED, FRANK, HARRIS, VICTORIA J.B. DOYLE

SHRIVER & JACOBSON LLP FRIED, FRANK, HARRIS,

1001 Pennsylvania Ave., NW SHRIVER & JACOBSON LLP

Washington, DC 20004 New York, New York 10004

Of Counsel

Attorneys for Respondent

April 2, 2008

215334 g

COUNSEL PRESS

(800) 274-3321 + (800) 359-6859

QUESTION PRESENTED

Petitioner is the applicant party in a trademark

opposition case entitled Virgin Enterprises Ltd. v.

Rosenruist-Gestao E Servicos Sociedade Unipessoal

LDA, No. 91161535, which is currently pending be-

fore the United States Trademark Trial and Appeal

Board of the United States Patent and Trademark

Office (the “Opposition Case”). In the proceedings

below, the Petitioner was served with a subpoena in

Arlington, Virginia and commanded to appear for a

trial testimony deposition in the Opposition Case,

but Petitioner refused to appear for deposition even

though (i) Petitioner is making the claim whose va-

lidity is the subject of the Opposition Case, and (ii)

Petitioner has appeared in, taken discovery in, filed

motions in, opposed summary judgment in, and ex-

tensively cross-examined Respondent’s witnesses at

the trial of the Opposition Case.

The question presented is: whether the Fourth

Circuit correctly held, in the particular and unusual

circumstances of this case, that the district court

“should have granted VEL’s motion to compel” (Pet.

App. 14a) and ordered this Petitioner to appear for a

trial testimony deposition in the Opposition Case.

ii

CORPORATE DISCLOSURE STATEMENT

Respondent (“VEL”) is an indirect wholly-owned

subsidiary of Virgin Group Holdings Limited, a cor-

poration existing under the laws of The British Vir-

gin Islands.

ili

TABLE OF CONTENTS

QUESTION PRESENTED sivceicssicssssvectecssccssssvesesessuceseonsvs

CORPORATE DISCLOSURE STATEMENT................. li

FR PRREEOME (IE: GATE EMITEE LID grvitvencncnevscocaseetassosiienteoyosansee

STATEMENT OF THE CASE. .......cccccccsosssscoscssecesesonacens

The Petitioners Application ..............cescssscccssscsoseseees

Petitioner Appoints Representatives and

Submits to Jurisdiction in the United

Petitioner Prosecutes the Application

Through United States Representatives..................

Petitioner Refuses to Appear Voluntarily

for Deposition in Its Home Country of

Poncho tisk vacac cies eels Rew AAR wid tics ined abscedneunne

Petitioner Is Subpoenaed to Appear for

Deposition in the United States ............... cece

Petitioner’s Motion to Quash ...................ccccecceeeee eee

Petitioner Is Sanctioned for Failing to

Attend Its Own Deposition ............... cc eceeeeeereseneeeeees

Respondent’s Motion to Compel ...................0ccceeeees

Respondent’s Appeal to the Fourth Circuit

iv

TABLE OF CONTENTS

(Cont'd)

The Fourth Circuit’s Decision. ...............cccccsccceesseees 14

REASONS FOR DENYING THE PETITION ............. 16

I. PETITIONER’S FAILURE TO CROSS-

APPEAL BARS CONSIDERATION OF

THE QUESTIONS “PRESENTED.”.............0:0:0008 17

II. THE QUESTIONS “PRESENTED” ARE

NOT, IN FACT, PRESENTED BY THIS

III. THE QUESTIONS “PRESENTED” ARE

PECULIAR TO THIS HIGHLY UNUSUAL

IV.THE DECISION BELOW DOES NOT

CONFLICT WITH THAT OF ANY

REI SEED ES Svnsvr casi nscn sna shtnsevosssvneescsencsosse ces svi 23

V. THE DECISION BELOW IS CLEARLY

Re adr cacetins sau usetis edie ovamasvaoush Vad exo en iabireckewsaudas 24

EN kia scrncccannccicnesuntsdesevovgsieaicsiedeinnienanicneeiin 28

TABLE OF AUTHORITIES

FEDERAL CASES

Doster v. Carl Schenk A.G.,

141 F.R.D. 50 (M.D.N.C. 1991)...............

El Paso Natural Gas Co. v. Neztsosie,

EE SES CRI) visicensvesceceetescesionsoesesice

Medinol Ltd. v. Neuro Vasx Inc.,

67 U.S.P.Q. 2d 1205 (T.T.A.B. 2003)......

Mississippi Publishing Corp. v. Murphree,

326 U.S. 438 (194G)........ceresesesesnees gpeseceoeces

Morley Construction Co. v. Maryland

Casualty Co.,

DPS SFG, BO AGG) cscctvcicniveccesecdsorssavevenes

Neirbo v. Bethlehem Shipbuilding Corp.,

IS Shad BIRO EWE) cccnccnessenanecessssrsconcnensisn

Northwest Airlines, Inc. v. County of Kent,

Michigan,

Te RN CAIUS vbr nicinsainiantsnsnaisapreenents

Societe Nationale Industrielle Aerospa-

tiale v. United States District Court for

the S. District of Iowa,

BED FI BA GRE D ovesecyniscsaratessenivensntnnenis

Page(s)

vi

TABLE OF AUTHORITIES

(Cont'd)

Page(s)

Triple Crown America Inc. v. Biosynth AG,

1998 U.S. Dist. LEXIS 6117 (E.D. Pa.

FE A, Iii cep ovvabancnssdipnsbedbicnrdavbvineceqensteviawen 9

United States v. American Ry. Express

Cs re Fe i celesadeecaberdodeiu dastcbewsasccvevesecennes 18

Virgin Enterprises Ltd. v. Rosenruist-

Gestao E Servicos Sociedade Unipes-

soal LDA, No. 91161535 (T.T.A.B.,

FEN ES SE EE once ise ciincdsccwnnstaisicnasneceuds 1, 5, 21

vii

TABLE OF AUTHORITIES

(Cont’d)

age(s

FEDERAL STATUTES

15 U.S.C. § 1051(b)(3)(B).........cereesreeererceeserees passim

Fe hase PO shivisincs theoccclecascenansseseiesnvevones passim

BE FE RED esas iesesshcevccinssssgoaivictiadedeanstouns 2, 27

RE Te IE ida bvsdnen es dtenssicsedscoayaecesjenavuevactenttens 2,5

TS TRA NTI stivccedeavecipes cetdcuivisasteniajcctotaccmpvasuneh 25

See RE ay TIE Winans dats hapa nielsenncuiecibreocees tevees passim

RULES

SF Ct BB, ivi cs itncasspecssessecsssvevesinneonsiays 6, 24

BF a BND iste sos chvekscssnrevicdssennvenssonioycase’ 6, 24

Be ie iC As Be ihn ade tesa ses neinienapsainadonssobods 6, 24, 25

BE ee Ne so NE pe ckaavancidsrersesnccessanceiietieh passim

FO. Fe SAM BGG) vocccescsivecresncssenssensets 9, 16, 26

POG, Fs Be FI sis Sap ovcctansesnenncigartacoraensn 10, 13

STATEMENT OF THE CASE

This case relates to a trademark opposition case

entitled Virgin Enterprises Ltd. v. Rosenruist-Gestao

E Servicos Sociedade Unipessoal LDA, No. 91161535

(the “Opposition Case”), which is currently pending

before the United States Trademark Trial and Ap-

peal Board (“TTAB”) of the United States Patent: and

Trademark Office (the “PTO”). The events that gave

rise to the Opposition Case are accurately described

in the Fourth Circuit opinion below (Pet. App. 2a-5a)

and are summarized briefly here.

The Petitioner’s Application

On or about December 30, 2002, the Petitioner,

acting through representatives located in Arlington,

Virginia, transmitted to the PTO in Alexandria, Vir-

ginia, a written application for issuance of a United

States registration of VIRGIN GORDA as a trade-

mark purportedly owned by Petitioner (the “Applica-

tion”; see C.A. App. 46-48). The Application was

subsequently assigned Serial No. 76/479620 by the

PTO. 7d.

In its Application, the Petitioner claimed that it

was entitled to exclude Respondent and all others

from using VIRGIN GORDA, or any mark that was

confusingly similar to VIRGIN GORDA, on or in

connection with numerous and diverse categories of

goods ranging from “umbrellas” to “trunks” to

“bomber jackets” to “shoes” (C.A. App. 46-48). The

basis of the Petitioner’s claim was a sworn (and

highly implausible) statement that Petitioner pur-

portedly had a “bona fide intention to use the mark

in commerce” (15 U.S.C. § 1051(b)(3)(B)) on or in

connection with each and every one of the numerous

and diverse categories of goods that were listed in

the Application. Id.’

By filing the Application and furnishing the PTO

with a sworn declaration of “bona fide intention to

use the mark in commerce,” 15 U.S.C.

§ 1051(b)(3)(B), the Petitioner purposefully availed

itself of various benefits of United States federal

trademark law, including the provisional “right of

priority, nationwide in effect,” that flows from the

filing of a properly supported application for trade-

mark registration, 15 U.S.C. § 1057(c), and the vari-

ous procedural and substantive rights that United

States federal trademark law confers on applicants

for registration in adversarial proceedings that test

the merits of claimed rights to registration, including

opposition proceedings commenced under 15 U.S.C.

§ 1063.

Petitioner Appoints Representatives and

Submits to Jurisdiction in the United States

As part of its Application, the Petitioner granted

broad powers of attorney to various individuals with

addresses in Arlington, Virginia, who were author-

* The implausibility that Petitioner could have had the claimed

“bona fide intention to use the mark in commerce” (15 U.S.C.

§ 1051(b)(3)(B)) on each and every one of the numerous and

diverse categories of goods that were listed in the Application,

cf. Medinol Ltd. v. Neuro Vasx Inc., 67 U.S.P.Q.2d 1205

(T.T.A.B. 2003) (canceling registration where applicant falsely

claimed use of mark to identify all goods listed in application),

would appear to explain the Petitioner’s relentless and costly

efforts to seek to evade giving any deposition upon oral exami-

nation in the Opposition Case.

ized by Petitioner “to prosecute this application for

registration, with full power of substitution and

revocation, to transact all business in the United

States Patent and Trademark Office in connection

therewith, and to receive the Certificate of Registra-

tion” (C.A. App. 47). Those same individuals were

expressly “designated Applicant’s representative(s]

upon whom notices or process in proceedings affect-

ing this mark may be served.” Id.

The Petitioner’s designation of persons resident

in the United States “upon whom notices and process

in proceedings affecting this mark may be served”

(C.A. App. 47, 52) was made in fulfillment of a legal

requirement that 15 U.S.C. § 105l(e) has long im-

posed on alien applicants for registration of United

States trademarks and service marks. The statute

ensures that in the event that an alien’s claim of

right to registration is contested, there is at least one

court of the United States where the alien applicant

is subject to jurisdiction and can be compelled to

make discovery and otherwise justify its claim.’

Had Petitioner failed to designate a person resi-

dent in the United States upon whom process could.

be served in proceedings affecting the applied-for

mark, the Petitioner would have been automatically

* Cf. Mississippi Pub. Corp. v. Murphree, 326 U.S. 438, 442

(1946) (“By consenting to service of process upon its agent re-

siding in the southern district, petitioner rendered itself ‘pre-

sent’ there for purposes of service”); Neirbo v. Bethlehem Ship-

building Corp., 308 U.S. 165, 175 (1939) (by designating an

agent for service of process in a state, the respondent gave “ac-

tual consent” to being sued in the courts of the state, federal as

well as state).

deemed, by statute, to have appointed the Director of

the PTO as Petitioner’s agent for service of process

in proceedings affecting the applied-for mark. See 15

U.S.C. § 1051(e).

Petitioner Prosecutes the Application

Through United States Representatives

In a communication dated July 23, 2003, and ad-

dressed to one of Petitioner’s Virginia-based repre-

sentatives, the PTO initially rejected the Petitioner’s

claim of right to registration of VIRGIN GORDA on

the basis that the proposed mark appeared to be

primarily geographically misdescriptive of the origin

of the goods that Petitioner had listed in the Applica-

tion, and further, that the Petitioner’s claim of intent

to use VIRGIN GORDA on “bags” was impermissibly

indefinite (C.A. App. 56-59). Petitioner responded to

the PTO’s rejection through its Virginia-based repre-

sentatives (C.A. App. 61-69).

On the issue of what particular types of “bags”

Petitioner allegedly intended to distribute in United

States commerce under the mark VIRGIN GORDA,

Petitioner’s Virginia-based representatives amended

the Application so that it recited, as the “goods” on

which Petitioner purportedly had a “bona fide inten-

tion to use the mark in commerce,” the following:

“all-purpose athletic bags, beach bags, book bags,

carry-on bags, gym bags, leather shopping bags,

overnight bags, shoulder bags, tote bags and cos-

metic bags sold empty; purses, coin-purses, pocket

wallets, traveling bags, trunks, make-up bags, empty

vanity cases, briefcases, umbrellas, handbags” (C.A.

App. 62). “This amendment,” Petitioner told the

PTO through its Virginia-based representatives,

purportedly “clarifie[d] the identification of goods to

reflect the true nature and character of the goods

provided in connection with the VIRGIN GORDA

mark.” Id.

On the issue of whether VIRGIN GORDA was

primarily geographically misdescriptive of the origi-

nally named and newly added goods recited in the

Application, Petitioner’s Virginia-based representa-

tives asserted to the PTO that “most Americans”

would not be “aware” of a “remote island” named

“Virgin Gorda” (C.A. App. 64). Petitioner’s Virginia-

based representatives further asserted to the PTO:

“The island of Virgin Gorda is not known for produc-

ing the goods identified in this application” (C.A.

App. 63). Finally, Petitioner’s Virginia-based repre-

sentatives asserted that some unspecified number of

United States consumers of the listed goods were

Spanish-speaking and so would understand that the

word “gorda” meant “fat” in Spanish (C.A. App. 64).

Based on Petitioner’s various factual assertions

as described above, the PTO was persuaded to with-

draw its rejection of the Application (C.A. App. 67-

68) and to publish the Application for opposition in

the Official Gazette of the PTO, which publication

occurred June 1, 2004 (C.A. App. 70). On July 29,

2004, Respondent timely filed a Notice of Opposition

under 15 U.S.C. § 1063 (C.A. App. 72-78). The PTO

then instituted the Opposition Case entitled Virgin

Enterprises Ltd. v. Rosenruist-Gestao E Servicos So-

ciedade Unipessoal LDA, No. 91161535 (T.T.A.B.,

filed Jul. 29, 2004). See C.A. App. 86-87.

In the thirteen (13) months between July 2004

and August 2005, the Petitioner (i) served an An-

swer in the Opposition Case, (ii) took discovery in

. the Opposition Case, (iii) moved to compel further

discovery in the Opposition Case, and (iv) success-

fully opposed a motion for summary judgment in the

Opposition Case (C.A. App. 833-34). By Order dated

January 9, 2006, the TTAB set the Opposition Case

for trial® to begin February 14, 2006. Id.

Petitioner Refuses to Appear Voluntarily

for Deposition in Its Home Country of Portugal

In anticipation of the commencement of trial in

the Opposition Case, Respondent requested that Pe-

titioner voluntarily appear for a trial testimony

deposition on oral examination in its home country

of Portugal (C.A. App. 43). Petitioner refused (id.).

Petitioner took the position that if Respondent

wanted to cross-examine Petitioner by oral deposi-

tion, Respondent would have to (i) seek issuance of

letters rogatory addressed to some Portuguese legal

authority, and then (ii) hope that the Portuguese le-

gal authority, applying Portuguese law, might be

* Under TTAB rules, “(t]he assignment of testimony periods

corresponds to the setting a case for trial in court proceedings,”

and “(t]he taking of depositions during the assigned testimony

periods corresponds to the trial in court proceedings.” 37

C.F.R. § 2.116(d)-(e). The “trial testimony” of witnesses in oppo-

sition proceedings is taken by depositions under 37 C.F.R.

§ 2.123. Respondent’s original “trial testimony period” in the

Opposition Case ran from February 14 through March 15,

2006. The TTAB has since suspended proceedings in the Oppo-

sition Case so as to afford Respondent an opportunity to seek

compelled deposition testimony from the Petitioner. See TTAB

Order dated August 7, 2006, and reproduced in the Appendix to

this Brief in Opposition.

persuaded to order Petiticner to appear for deposi-

tion upon oral examination in Portugal.

On December 12, 2005, Respondent moved the

TTAB for an Order compelling Petitioner to appear

for a testimonial deposition by oral examination in

its home country (C.A. App. 99-134). On January 9,

2006, the TTAB issued an Order (C.A. App. 136-138)

explaining that it lacked authority to compel recalci-

trant parties to appear for deposition in any jurisdic-

tion, foreign or domestic; however, the TTAB noted

that a recalcitrant party to an opposition proceeding

could be compelled to attend a deposition in the

United States “by subpoena issued by a United

States district court” (C.A. App. 137). That was the

course that Respondent then took.

Petitioner Is Subpoenaed to

Appear for Deposition in the United States

On January 31, 2006, Respondent served one of

Petitioner’s designated domestic representatives in

Arlington, Virginia with a deposition subpoena is-

sued under 35 U.S.C. § 24 (C.A. App. 140-142). The

subpoena was addressed to Petitioner, the corpora-

tion, as authorized by Federal Rule of Civil Proce-

dure 30(b)(6), which provides in pertinent part:

A party may in the party’s notice and in a sub-

poena name as the deponent a public or pri-

vate corporation or a partnership or associa-

tion or governmental agency and describe

with a reasonable particularity the matters on

which examination is requested. In that

event, the organization so named shall desig-

nate one or more officers, directors, or manag-

ing 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. A subpoena shall advise a

non-party organization of its duty to make

such a designation. The person so designated

shall testify as to matters known or reasona-

bly available to the organization.

The subpoena commanded Petitioner to appear at

a location in McClean, Virginia, “to testify at the tak-

ing of a deposition in the above case by a person hav-

ing most knowledge of the matters set forth in

Schedule A” to the subpoena (C.A. App. 140).

Schedule A of the subpoena identified the following

matters on which examination of Petitioner was re-

quested (C.A. App. 142):

1. The factual representations made in

United States Application No.

76/479620 filed December 30, 2002 (the

“Application”).

2. The extent to which United States pur-

chasers of the goods identified in the

Application are aware of an island

named “Virgin Gorda.”

3. The extent to which United States pur-

chasers of the goods identified in the

Application are aware of the Spanish

language meaning of the word “gorda.”

Petitioner’s Motion to Quash

On February 8, 2006, Petitioner filed a paper in

the district court styled “MOTION OF ROSENRD-

IST-GESTAO E SERVICOS LDA TO QUASH SUB-

POENA” (C.A. App. 8-27). Petitioner argued that

the district court should issue an Order quashing the

subpoena on the basis that (i) service of the sub-

poena on Petitioner’s domestic representative under

15 U.S.C. § 1051(e) purportedly was not valid service

on Petitioner; (ii) the subpoena was accompanied by

only the statutory witness attendance fee of $75.00;

and (iii) enforcement of the subpoena purportedly

would “violate the sovereignty of another nation”

(C.A. App. 9-10). Petitioner additionally sought

monetary sanctions against Respondent (C.A. App.

11). ‘

Importantly, the Petitioner did not advance or

support any ground for quashing the subpoena that

was available to Petitioner under Federal Rule of

Civil Procedure 45(c)(3)(A). See C.A. App. 183 (“nor

does it appear to be contesting the validity of the

Subpoena upon any of the grounds listed in Rule

45(c)(3)(A) for which a Court shall modify or quash a

subpoena”). The Petitioner also did not offer to ap-

pear voluntarily for deposition in any location, at

any time, or under any proposed terms or condi-

tions.*

* It is difficult to overstate just how unusual Petitioner’s pos-

ture in this case is. Ordinarily, when a party or deponent ob-

jects to the location of a deposition and proposes that it be

taken in a foreign country, the objecting party bears the burden

of demonstrating that the foreign location is both available and

more convenient than the noticed location. E.g., Triple Crown

Am. Inc. v. Biosvnth AG, 1998 U.S. Dist. LEXIS 6117, at *10

(E.D. Pa. Apr. 36, 1923); Doster v. Carl Schenk A.G., 141 F.R.D.

50, 51-52 (M.D.N.C. 1991). Here, the Petitioner did not even

attempt to demonstrate that Portugal was a more convenient or

appropriate locate for its devosition, for as noted above, the Pe-

10

On March 2, 2006, a Magistrate Judge issued an

Order denying Petitioner’s motion to quash in its en-

tirety (C.A. App. 178-186.) The Magistrate Judge’s

Order stated in part: “VEL followed the appropriate

procedures outlined in the relevant statutes, thus

the subpoena was properly issued by this Court. The

Court also finds that the service of the subpoena on

Rosenruist’s 15 U.S.C. 1051(e) designee was valid. . .

. For the reasons set forth in this memorandum, it is

ORDERED that Rosenruist’s Motion to Quash Sub-

poena (Dkt. No.1) is hereby DENIED.” C.A. App.

181-83. 3

On March 9, 2006, Petitioner filed objections to

the above-quoted Order of the Magistrate Judge pur-

suant to Federal Rule of Civil Procedure 72(a) (C.A.

App. 187-189). On April 10, 2006, the district court

denied Petitioner’s Rule 72(a) objections in all re-

spects (C.A. App. 412). Petitioner took no appeal

from the district court’s denial of its motion to quash

the subpoena at issue in this case.

Petitioner Is Sanctioned for

Failing to Attend Its Own Deposition

Following the Magistrate Judge’s denial of Peti-

tioner’s motion to quash the subpoena, Respondent

re-noticed Petitioner’s deposition for March 10, 2006

(see C.A. App. 250-252). Approximately five minutes

titioner had previously refused Respondent’s suggestion that

Petitioner appear voluntarily for deposition in its home country

(C.A. App. 43). The Petitioner’s manifest objective below was to

attempt to evade giving an oral deposition anywhere, under

any circumstances, even while pressing ‘ts claimed right to reg-

istration of VIRGIN GORDA in the Unitea States.

11

before the deposition was to begin, one of Petitioner’s

United States representatives appeared at the depo-

sition location and announced for the first time that

Rosenruist was once again refusing to appear or to

produce any person to testify on its behalf (C.A. App.

236).

Respondent then moved for monetary sanctions

against Petitioner under Federal Rules of Civil Pro-

cedure 37(b) and (d) and 45(e), which motion was

granted by Order issued April 6, 2006 (C.A. App.

379). The Magistrate Judge ruled at that time (id.):

Virgin Enterprises Limited’s Motion for

Sanctions (Dkt. no. 18) is _ hereby

GRANT#D. The Court finds that the award

of attorney's fees and costs are appropriate

for Rosenruist-Gestao E Servicos LDA’s fail-

ure to appear for a properly noticed deposi-

tion and failure to inform Virgin Enterprises

Limited that it would not appear at the

deposition prior to the deposition date.

The district court subsequently denied Peti-

tioner’s objections to the order awarding sanctions

(C.A. App. 844). Petitioner took no appeal from the

district court’s order awarding sanctions.

Respondent’s Motion to Compel

On March 31, 2006, Respondent moved the dis-

trict court for an Order compelling Petitioner to ap-

pear for deposition under pain of contempt sanctions

(C.A. App. 344-352). It is this motion whose disposi-

tion gave rise to the Fourth Circuit decision below,

and whose merits the Petitioner now asks this Court

to review.

a

ae

“WEES

aes

12

Following an oral hearing held April 7, 2006, a

Magistrate Judge issued an Order that Respondent’s

motion to compel was “GRANTED IN PART AND

DENIED IN PART” based on “the specific rulings

stated from the bench” (C.A. App. 381). The Magis-

trate Judge adhered to his prior ruling (C.A. App.

178-186) that Petitioner had been properly been

served in Arlington, Virginia with a subpoena issued

under 35 U.S.C. § 24 and was properly commanded

to appear for a trial testimony deposition in the Op-

position Case.

Respondent’s motion was granted only “in part,”

however, because the Magistrate Judge ruled that

the word “witness,” as used in the first sentence of

35 U.S.C. § 24, did not refer to the person named in

a subpoena invoking Federal Rule of Civil Procedure

30(b)(6), but rather supposedly referred to an indi-

vidual that a subpoenaed corporation might desig-

nate to testify on its behalf under Rule 30(b)(6). The

Magistrate Judge stated, “I think the witness has to

live or reside in this district. I don’t think the corpo-

ration is the witness. . . The witness, the witness, not

the corporation, must reside or live in this district”

(C.A. App. 393; emphasis added).

Based on this extremely narrow and erroneous

interpretation of the statutory term “witness” (which

all three members of the Fourth Circuit panel below

rejected, see Pet. App. 17a-18a, 27a), the Magistrate

Judge ruled that Petitioner was required to appear

for deposition only if, and to the extent that, its pre-

ferred or chosen designees personally “reside[d]” or

“live[d]” in the district where Petitioner was served

with the subpoena in question. The Magistrate

13

Judge accordingly directed Petitioner either to ap-

pear for deposition or else file a declaration to the

effect that Petitioner could not locate any individual

who both personally “resided or lived” in the Eastern

District of Virginia and who “consented” to testify on

Petitioner’s behalf in the Opposition Case (C.A. App.

393).

Petitioner quickly took advantage of the Magis-

trate Judge’s error. On April 14, 2006, Petitioner

filed a paper with the district court in which Peti-

tioner stated that none of its knowledgeable agents

“consent[ed]” to testify on Petitioner’s behalf in the

Eastern District of Virginia (C.A. App. 414). The Pe-

titioner filed this paper even though just one month

previously, the Petitioner through counsel had “at-

tended and participated fully in the testimonial

depositions of various VEL officers” (Pet. App. 9a

n.3), and had filed multiple motions with the TTAB

seeking orders (i) reopening discovery, (ii) imposing

sanctions on Respondent, and (iii) striking certain

trial testimony proffered by Respondent (C.A. App.

833-34). See the Appendix to this Brief.

Respondent timely objected (C.A. App. 428-834)

to the Magistrate Judge’s April 7 ruling under Fed.

R. Civ. P. 72(a). On May 2, 2006, the district court

entered a one-page Order stating that the Magis-

trate Judge’s order was not “clearly erroneous or

contrary to law” (C.A. App. 840).

Respondent’s Appeal to the Fourth Circuit

On May 10, 2006, Respondent timely appealed to

the Fourth Circuit (C.A. App. 841) from the district

court’s order entered May 2, 2006, which had

14

granted-in-part and denied-in-part Respondent’s mo-

tion to compel filed March 31, 2006. In its appeal to

the Fourth Circuit, Respondent raised the questions

(i) whether the term “witness,” as used in 35 U.S.C.

§ 24, includes a private corporation that is named in

a subpoena as authorized by Federal Rule of Civil

Procedure 30(b)(6); (ii) whether a deposition sub-

poena issued to a corporation under 35 U.S.C.§ 24

and Federal Rule of Civil Procedure 30(b)(6) may

properly command the corporation to appear and

give testimony by individuals who do not personally

“reside or live” in the district where the corporation

has been served and commanded to appear; and

(iii) whether the district court committed legal error

in holding that it lacked statutory authority to en-

force the terms of the deposition subpoena at issue in

this case. Resp. C.A. Br. at 6.

Lacking any basis for defending the district

court’s order entered May 2, 2006, the Petitioner’s

brief to the Fourth Circuit attempted to renew its

original, and manifestly frivolous, arguments (e.g.,

“It is a recognized principal of international law that

non-resident aliens may not be compelled to appear

in a foreign district to give deposition testimony’;

Resp. C.A. Br. at 21) for why service of a subpoena

on Petitioner’s statutory agent for service of process

in the United States was purportedly ineffective to

require Petitioner to do anything at all. Petitioner

did not, however, file any notice of cross-appeal that

would have permitted it to raise these arguments.

The Fourth Circuit’s Decision

On December 27, 2007, the Fourth Circuit re-

versed the District Court’s judgment and remanded

15

for further proceedings. All three members of the

panel rejected the district court’s ruling that corpo-:

rations were excluded from the meaning of the term

“witness” as used in 35 U.S.C. § 24. The Fourth Cir-

cuit panel unanimously concluded that 35 U.S.C.

§ 24 authorized issuance of subpoenas to corporate

deponents under Rule 30(b)(6) of the Federal Rules

of Civil Procedure, and that the personal residence of

a subpoenaed corporation’s chosen or preferred des-

ignees was extraneous and irrelevant to the scope of

a district court’s subpoena power over the subpoe-

naed corporation itself. See Pet. App. 17a-18a, 27a.

Having resolved the issues raised by Respon-

dent’s appeal, the Fourth Circuit declined to consider

the Petitioner’s various arguments for why service of

the subpoena on Petitioner’s domestic representative

under 15 U.S.C. § 1051(e) purportedly was ineffec-

tive tc require the Petitioner to do anything at all.

The Fourth Circuit held that by failing to file a cross-

appeal, the Petitioner waived any right it might

have had to argue that it was wholly outside the dis-

trict court’s subpoena power on jurisdictional or

other grounds (Pet. App. 19a-21a).

The Fourth Circuit further noted that, had Peti-

tioner preserved the issue, the court would have con-

cluded that the Petitioner was a person “being

within” the Eastern District of Virginia for purposes

of 35 U.S.C. § 24 (Pet. App. 20a n.5) and thus was

subject to being subpoenaed “in proceedings affecting

the mark” as expressly authorized and contemplated

by 15 U.S.C. § 1051(e). In view of the various protec-

tions afforded to subpoenaed persons by Federal

Rule of Civil Procedure 45(c)(3)(A), the Fourth Cir-

16

cuit majority found it unnecessary and inappropriate

to manipulate the statutory term “being” (35 U.S.C.

§ 24) as a basis for regulating the exercise of district

courts’ undoubted authority over corporate litigants

like this Petitioner.

REASONS FOR DENYING THE PETITION

‘In the more than 100 years of trademark opposi-

tion practice in the United States, during which time

literally millions of applications for registration have

been published for opposition, this appears to be the

first case, ever, in which an applicant for registration

has attempted to take the position that it can refuse

to submit to cross-examination with respect to the

purported factual basis of its own claim. If the

Fourth Circuit here did something “[flor the first

time” (Pet. at 7) or considered an “issue of apparent

first impression” (Pet. at 17), that is merely a sign of

just how unusual this Petitioner’s litigation conduct

has been.

The Petition for Writ of Certiorari should be de-

nied, because (i) the questions purportedly presented

by the Petition are procedurally defaulted; (ii) the

questions purportedly presented by the Petition are,

in fact, hypothetical questions whose resolution

would be irrelevant to the outcome of this case;

(iii) the questions purportedly presented by the Peti-

tion involve, at. most, the correctness of the Fourth

Circuit’s application of well-settled law to Peti-

tioner’s wishiul mischaracterization of the facts of

this case; (iv) the decision below does not conflict

with that of any other circuit; and (v) the decision

below is clearly correct.

17

I. PETITIONER’S FAILURE TO CROSS-

APPEAL BARS CONSIDERATION

OF THE QUESTIONS “PRESENTED.”

In orders dated March 2, 2006 (C.A. App. 178-86),

April 6, 2006 (C.A. App. 379), and April 12, 2006

(C.A. App. 412), the district court denied Petitioner’s

motion to quash the subpoena and awarded mone-

tary sanctions in favor of Respondent and against

Petitioner. The district court’s subsequent order en-

tered May 2, 2006 (C.A. App. 840), from which Re-

spondent alone appealed, presupposed the validity of

the subpoena and addressed only the narrow ques-

tion of whether a subpoenaed corporation’s obliga-

tions under 35 U.S.C. § 24 and Federal Rules of Civil

Procedure 30(b)(6) were limited to producing one or

more “natural” persons who personally “live[d)]” or

“reside[d]” in the district where the corporation was

served with process and commanded to appear.

In these circumstances, the Fourth Circuit was

clearly correct in holding (Pet. App. 19a-21la) that

Petitioner’s failure to file a cross-appeal bars consid-

eration of Petitioner’s attack on the district court’s

underlying authority and jurisdiction to command

Petitioner to do anything at all. Although an appel-

lee may “urge in support of a decree any matter ap-

pearing in the record,” El Paso Natural Gas Co. v.

Neztsosie, 526 U.S. 473, 479 (1999), an appellee may

not, absent a cross-appeal, challenge a lower court’s

authority to render a judgment that is partially ad-

verse to the appellee. See Northwest Airlines, Inc. v.

County of Kent, Michigan, 510 U.S. 355, 365-66

(1994). Stated otherwise, absent a cross-appeal, an

appellee may not seek an appellate judgment

18

“enlarging” the appellee’s rights beyond what a Dis-

trict Court awarded, El Paso, 526 U.S. at 479 (quot-

ing United States v. American Ry. Express Co., 265

U.S. 425, 435 (1924)), or granting “a new measure of

relief.” Morley Constr. Co. v. Maryland Cas. Co.,

300 U.S. 185, 193 (1937).

The Fourth Circuit properly applied these princi-

ples here. This Court’s decision in Northwest is par-

ticularly instructive. In that case, a group of airlines

had sued an airport for relief from alleged violations

of the federal Anti-Head Tax Act (AHTA). The dis-

trict court held that there was a private right of ac-

tion for alleged violations of AHTA, but that the de-

fendant airport had not, in fact, violated the AHTA.

The Sixth Circuit similarly held that there was a

private right of action for alleged violations of the

AHTA, but vacated the district court’s judgment in-

sofar as it had upheld the defendant airport’s alloca-

tion of the costs of providing “crash, fire, and rescue

(CFR) services.” 510 U.S. at 362. The plaintiffs

then petitioned this Court for review of the Sixth

Circuit’s judgment. The respondent airport did not

file any cross-petition, but nevertheless attempted to

argue that the petitioning airlines’ claims should be

rejected altogether on the basis that there was no

private right of action for alleged violations of the

AHTA and the district court, thus, assertedly lacked

authority to grant any relief to the Northwest peti-

tioners at all. This Court declined to consider the

respondent airport’s argument, saying:

A prevailing party need not cross-petition to

defend a judgment on any ground properly

raised below, so long as that party seeks to

hag

ee

ba

19

preserve, and not to change, the judgment. ...

A cross-petition is required, however, when

the respondent seeks to alter the judgment be-

low. . . . Alteration would be in order if the

private right of action question were resolved

in favor of the Airport. For then, the entire

judgment would be undone, including the por-

tion remanding for reallocation of CFR costs

between the Airlines and general aviation.

The Airport’s failure to file a cross-petition on

the CFR issue—the issue on which it was a

judgment loser—thus leads us to resist the

plea to declare the AHTA claim unfit for Dis-

trict Court adjudication.

Northwest, 510 U.S. at 364-65.

Both the reasoning and the holding of this

Court’s Northwest decision are directly applicable

here. Similarly to how the district court in North-

west held that there was a private right of action for

alleged violations of the AHTA, the district court

here held that this Petitioner was subject to its ju-

risdiction and was properly served with a subpoena.

issued under 35 U.S.C. § 24. Similarly to how the

airport in Northwest attempted to question the dis-

trict court’s authority to grant any relief whatsoever

to the complainant airlines, the Petitioner here seeks

to challenge the authority of the district court to

have commanded the Petitioner to do anything at all

in this case.

Having failed to file a cross-appeal to the Fourth

Circuit, the Petitioner was barred from arguing to

that court (Pet. App. 19a-21la), and is similarly

barred from attempting to argue in this Court, that

»

20

the district court supposedly lacked jurisdiction over

the person of Petitioner or was otherwise without

authority to award sanctions or any other relief

against Petitioner. This Court in Northwest declined

to consider, absent a cross-appeal, a challenge to the

authority of a court to award relief to a partial

judgment loser. It should do the same here and deny

the Petition.

Il. THE QUESTIONS “PRESENTED” ARE

NOT, IN FACT, PRESENTED BY THIS

CASE.

Even assuming, for purposes of argument, that

the Petitioner could properly ask this Court to re-

view the questions that the Petition purports to pre-

sent, those questions would not warrant this Court’s

review because they are hypothetical questions

whose resolution would be irrelevant to the outcome

of this case. 3

Contrary to Petitioner’s suggestion, this case is

not one in which a corporation served with a sub-

poena had “no contact with the United States other

than the filing of a trademark application” (Pet. at i)

or was ordered to appear for deposition in the United

States “solely because it filed a trademark applica-

tion with the United States Patent and Trademark

Office” (Pet. at ii).

The record shows, to the contrary, that this Peti-

tioner’s “contact” with the United States went far,

far beyond a mere act of “filing” a “trademark appli-

cation.” In addition to the “filing of a trademark ap-

plication” by Petitioner (Pet. at i), the record shows

that (i) Petitioner granted broad powers of attorney

21

to representatives located in Arlington, Virginia;

(ii) Petitioner affirmatively prosecuted the subject

Application in the United States through Virginia-

based representatives; (ili) Petitioner appeared in

and served an Answer and other pleadings in the

Opposition Case in the United States; (iv) Petitioner

sought and received pre-trial discovery from Re-

spondent in the Opposition Case; (v) Petitioner filed

multiple motions seeking substantive relief in the

Opposition Case; and (vi) Petitioner extensively

cross-examined Respondent’s witnesses during the

trial of the Opposition Case which opened February

14, 2006, and was suspended when Petitioner re-

fused to appear for deposition.

Petitioner’s aggressive litigation tactics are re-

flected in a ten-page Order of the TTAB issued Au-

gust 7, 2006, disposing of various groundless motions

that Petitioner filed in March 2006. See Virgin En-

ters. Ltd. v. Rosenruist-Gestao E Servicos Sociedade

Unipessoal LDA, No. 91161535 (T.T.A.B. Aug. 7,

2006) (the “August 2006 Order”). A copy of the Au-

gust 2006 Order is attached as an Appendix to this

Brief in Opposition. It is very teiling that the Peti-

tion makes no reference to the August 2006 Order.

In its August 2006 Order, the TTAB (i) denied

Petitioner’s renewed motion to re-open discovery in

the Opposition Case and to compel further discovery

from Respondent (Resp. App. at 2a); (ii) denied Peti-

tioner’s motion to strike the testimonial deposition of

Respondent’s witness Neil Hobbs (id. at 3a-5a);

(iii) denied Petitioner’s motion for sanctions with re-

spect to the tstimonial deposition of VEL witness

Kathryn Mollica (id. at 5a-7a); and (iv) over Peti-

22

tioner’s opposition, granted Respondent’s motion for

suspension of proceedings in the Opposition Case so

as to afford Respondent an opportunity to seek com-

pelled trial testimony from Petitioner under 35

U.S.C. § 24 (id. at 7a-10a).

In sum, the “questions” identified in the Petition

are not, in fact, “presented” by this case, because

they are addressed to a factual scenario that is not

presented by this case and is exceedingly unlikely to

be presented by any future case. As a litigant and

party to the Opposition Case, this Petitioner has es-

tablished numerous, purposeful, and extensive con-

tacts with the United States, spanning a period of

years, over and above the mere “filing of a trade-

mark application” (Pet. at i) back in December 2002.

Ill. THE QUESTIONS “PRESENTED”

ARE PECULIAR TO THIS

HIGHLY UNUSUAL CASE.

Passing over the false premises of the questions

identified in the Petition and the Petitioner’s lack of

standing to raise them, those questions at most con-

cern the correctness of the Fourth Circuit’s applica-

tion of well-settled legal principles to the particular,

and highly unusual, circumstances of this particular

Petitioner in this particular case. The Court does

not sit to review such alleged errors. See Sup. Ct.

R. 10 (“A petition for a writ of certiorari is rarely

granted when the asserted error consists of errone-

ous factual findings or the misapplication of a prop-

erly stated rule of law.”).

The language of current 35 U.S.C. § 24 dates

back to at least Section 44 of the Act of July 8, 1870,

23

ch. 230, 16 Stat. 98, 204 (repealed 1952). Yet the

Petitioner concedus that questions purportedly “pre-

sented” by the Petition are ones “of apparent first

impression.” Pet. at 17. The Court can reasonably

wonder why, between 1870 and 2006, no court was

ever asked to hold that a party to a contested opposi-

tion case could properly refuse to appear and be

cross-examined with respect to the purported factual

basis of its own claim in the case.

If the questions purportedly “presented” in the

Petition are ones “of apparent first impression” (Pet.

at 17) despite the applicable statute’s 130 years of

existence, there is a ready erzlanation: the Peti-

tioner’s statutory and constitutional arguments are

so unusual and meritless that no prior litigant has

ever thought to raise them.

IV. THE DECISION BELOW DOES

NOT CONFLICT WITH

THAT OF ANY OTHER CIRCUIT.

Petitioner’s assertion that the decision below pur-

portedly conflicts with decisions of other circuits

(Pet. at 9-10) is unsupported and erroneous. The

cases cited by Petitioner all involved whether 35

U.S.C. § 24 authorized discovery in a patent “inter-

ference” proceeding that then-applicable PTO rules

disallowed to the “junior party” seeking the discov-

ery. Those decisions have no bearing on the Fourth

Circuit’s decision here.

In contrast with the cited cases, the Respondent

here sought trial testimony from the Petitioner that

applicable PTO rules expressly permitted. See

37 C.F.R. §§ 2.116 and 2.123(a). Respondent argued

24

in the district court, not that PTO rules disallowed

the trial testimony that Respondent sought from Pe-

titioner, but rather that Respondent should be forced

to seek permitted tria! testimony from Petitioner by

means of the costly, cumbersome, and uncertain

mechanism of international letters rogatory ad-

dressed to some unnamed Portuguese legal author-

ity. The Fourth Circuit was right to reject this ar-

gument. See Societe Nationale Industrielle Aerospa-

tiale v. United States Dist. Court for the S. Dist. of

Iowa, 482 U.S. 522, 539-40 (1987) (holding that the

Hague Convention on the Taking of Evidence Abroad

in Civil or Commercial Matters “did not deprive the

District Court of the jurisdiction it otherwise pos-

sessed to order a foreign national party before it to

produce evidence physically located within a signa-

ture nation”).

35 U.S.C. § 24 exists precisely to facilitate the

taking of testimony that PTO ruies permit, as here.

In this very case, the TTAB was made aware of Re-

spondent’s subpoena of Petitioner; yet far from stat-

ing or suggesting that Respondent’s invocation of 35

U.S.C. § 24 was improper or inconsistent with PTO

rules, the TTAB stayed proceedings in the Opposi-

tion Case so as to permit Respondent to seck com-

pelled trial testimony from Petitioner. See August

2006 Order attached as an Appendix to this Brief in

Opposition, at 7a-10a.

V. THE DECISION BELOW

IS CLEARLY CORRECT.

As it did below, the Petitioner urges a series of

wholly frivolous arguments for why, as an alien cor-

poration, this Petitioner supposedly was privileged

et

25

to ignore the subpoena at issue in this case. Even

assuming that the Court were inclined to involve it-

self in a trial subpoena enforc2ment dispute having

no significance beyond the particular parties and cir-

cumstances of this case, the decision below is clearly

correct and would not justify this Court’s review

even on that basis.

Petitioner’s assertion that 28 U.S.C. § 1783 has

something to do with this case (Pet. at 3-4, 15-16)

remains a total mystery. 28 U.S.C. § 1783 author-

izes United States courts to issue subpoenas requir-

ing the appearance of “a national or resident of the

United States who is in a foreign country.” Here, the

Petitioner is an alien, not a United States national,

and the subpoena in question was served on Peti-

tioner in the United States, not “in a foreign coun-

try.” The subpoena at issue in this case was not is-

sued on the basis of 28 U.S.C. § 1783. The Peti-

tioner’s reliance on 28 U.S.C. § 1783 is so frivolous

that the Fourth Circuit did not even mention it in

the decision below.

Equally frivolous is Petitioner’s assertion that the

Fourth Circuit decision in this case somehow “in-

trudes upon the interest of other nations” (Pet. at

12-14). Contrary to Petitioner’s suggestion, any per-

son or party served with a subpoena under 35 U.S.C.

§ 24 is entitled to seek relief from the subpoena on

the grounds that it imposes an “undue burden” on

the subpoenaed person or party. Fed. R. Civ.

P. 45(c)(3)(A)(iv). Petitioner was free at all times to

seek relief from the literal command of the subpoena

under Rule 45(c)(3)(A), and yet it did not do so. The

reason for this is apparent: a person objecting to the

26

location of a deposition must generally identify an

alternative or less burdensome location (see p 9 &

note 4 supra). Here, the Petitioner’s manifest objec-

tive was to suppress evidence, not to provide it in a

more convenient location.

Petitioner’s assertion (Pet. at 16-17) that Respon-

dent was required to proceed under the Hague Con-

vention on the Taking of Evidence Abroad in Civil or

Commercial Matters (the “Hague Convention”) has

absolutely no basis in the applicable rules of the

PTO (see 37 C.F.R. § 1.123) and is directly contrary

to this Court’s precedents. See Societe Nationale In-

dustrielle, 482U.S. at 539-40 (holding that the

Hague Convention “did not deprive the District

Court of the jurisdiction it otherwise possessed to

order a foreign national party before it to produce

evidence physically located within a signature na-

tion”). As the Fourth Circuit correctly observed in

this case, “[floreign corporations that are subject to

the personal jurisdiction of a district court can be

* As it did below, Petitioner falsely characterizes as “rules” of

the PTO (Pet. at 9) the contents of a practice manual (the

“TBMP”) that are expressly not “rules” and do not even purport

to provide any authoritative interpretative guidance with re-

gard to 35 U.S.C. § 24 or any other statute, as the Fourth Cir-

cuit correctly held (see Pet. App. at 22a-23a). The cited manual

furthermore says nothing about the scope of a district court’s

authority to compel an alien trademark applicant to appear for

deposition pursuant to Federal Rule of Civil Procedure 30(bX6).

The actual “rules” of the PTO relating to the taking of trial tes-

timony, found in 37 C.F.R. § 2.123, nowhere state or even sug-

gest that a recalcitrant party cannot be subpoenaed to appear

and give trial testimony under Federal Rule of Civil Procedure

30(bX6). The Fourth Circuit correctly so held in this case. See

Pet. App. at 23a-24a.

27

and often are required to produce officers, directors,

or managing agents — regardless of where such wit-

nesses personally reside — in the United States for a

Rule 30(b)(6) deposition.” Pet. App. 17a-18a.

When this Petitioner chose to file and prosecute

an application for issuance of a United States

trademark registration, Petitioner clearly knew and

understood that it was claiming important substan-

tive rights under United States law, to which certain

corresponding legal obligations were attached. As a

condition of being granted provisional rights under

15 U.S.C. § 1057(c), Petitioner was required to sub-

mit to the jurisdiction of United States courts and, if

called upon, to comply with process served in “pro-

ceedings affecting the mark.” 15 U.S.C. § 1051(e).

If Petitioner does not wish to appear for deposi-

tion upon oral examination in the Opposition Case,

Petitioner need merely withdraw the Application.

But it cannot have it both ways. Petitioner cannot

affirmatively press a claimed right to issuance of a

United States trademark registration and at the

same time refuse to comply with “process in proceed-

ings affecting the mark.” 15 U.S.C. § 1051(e).

28 4

CONCLUSION q

The Petition for Writ of Certiorari should be de- 3

nied. 4

Respectfully submitted, q

James W. Dabney 4

Counsel of Record 3

1 New York Plaza :

New York, New York 10004

(212) 859-8000

Mitchell E. Epner

John F. Duffy Victoria J.B. Doyle

FRIED, FRANK, FRIED, FRANK,

HARRIS, SHRIVER & HARRIS, SHRIVER &

JACOBSON LLP JACOBSON LLP

1001 Pennyslvania Ave, NW One New York Plaza

Washington, D.C. 20004 New York, New York 10004

April 23, 2008 Attorneys for Petitioner

Pe ae eT sade Os Ee, Te, Caer) Oe TE Sy Oe Ne geet ee SS PIRES Men eal Fos 2 gt Te en” BG ne EOLA MDS ME trata | Coty Pw

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APPENDIX

UNITED STATES PATENT AND

TRADE MARK OFFICE

Trademark Trial and Appeal Board

PO. Box 1451

Alexandria, VA 22313-1451

Mailed: August 7, 2006

Opposition No. 91161535

Virgin Enterprises Limited

Vv.

Rosenruist - Gestao E Servicios Sociedade

Unipessoal Lda

Cheryl Butler, Attorney, Trademark Trial and Appeal

Board:

In accordance with the Board’s order dated January

9, 2006, testimony dates were reset with rebuttal testimony

to close on June 28, 2006. According to the prosecution

record, both parties have taken and submitted evidence

during their main testimony periods as assigned.

Several motions are now pending. The Board

presumes the parties’ familiarity with the matters to be

considered and does not repeat all arguments made by

each party.

2a

Appendix

Applicant’s motion for reconsideration

Applicant’s fully-briefed motion, filed March 15,

2006, for reconsideration of the Board’s order dated

March 2, 2006, denying as untimely applicant’s motion

to compel (filed February 10, 2006), is denied. Applicant

has not pointed out any error the Board may have made

in considering the matter, based on the evidence of

record and the prevailing legal authorities before the

Board at the time the motion was originally considered.

See TBMP §§518 and 523.08 (2d ed. rev. 2004). See also

Trademark Rules 2.120(e) and 2.127(b). Cf TBMP

§528.02 (2d ed. rev. 2004); and Trademark Rule 2.127(e)

(1). See also Trademark Rule 2.196; and 63 Fed. Reg.

48088 (1998). The Board fully explained the difference

between Trademark Rule 2.120 and Trademark Rule

2.127(e) (1), including that the Board exercised its

discretion, as permitted under Rule 2.127(e) (1), in

considering opposer’s April 18, 2005 motion for summary

judgment, which was untimely. Any perceived agreement

between the parties of the timeliness of either opposer’s

April 18, 2005 summary judgment motion or applicant’s

February 10, 2006 motion to compel is immaterial to the

Board’s determinations that both motions were, in fact,

untimely. The Board notes again that it informed the

parties in its August 18, 2005 summary judgment

decision that first testimony period had opened and any

prospective motions to compel would be considered

untimely. Thus, the Board’s March 2, 2006 determination

that applicant’s motion for summary judgment is

untimely was hardly a surprise to applicant.

peas >

3a

Appendix

Applicant’s objections to opposer’s amended notice

of deposition and motion to strike the testimonial

deposition of Neil Hobbs (taken March 15, 2006)

Opposer served a notice of deposition on March 3,

2006, such deposition to take place March 15, 2006 at

2:00 p.m. On March 14, 2006, opposer served an

amended notice of opposition to correct its oversight in

not indicating the matters on which the witness was to

be deposed. Applicant notes that the amended notice of

opposition was sent to its counsel’s Virginia address

despite the fact that its counsel was in New York

attending a different testimonial deposition noticed by

opposer. Applicant objects to the amended notice of

deposition as untimely, arguing that the notice was not

reasonable. Applicant also moves to strike the

deposition arguing that the original notice was not

facially adequate because it did not identify the name

and address of the witness or provide a general

description sufficient to identify the witness or provide

a description with reasonable particularity of the matters

upon which examination is requested. Applicant

contends that it was under no obligation to notify

opposer of the deficiency of the original notice of

deposition but did so with its first set of objections.

In response, opposer contends that applicant had

the original notice of deposition for twelve days; that

applicant did not raise any concern about the notice until

late in the afternoon (4:00 p.m.) of March 14th when

applicant’s counsel served written objections; that

applicant made no timely objection to the sufficiency of

Aa

Appendix

the notice; that opposer immediately served an amended

notice to cure the defect in the notice pointed out by

applicant in it written objections; that applicant’s

counsel attended the deposition, where he declined to

cross examine the witness and repeated applicant’s

objections to the deposition; and that applicant has

rejected opposer’s offers to permit further cross-

examination during an extended testimony period.

Opposer notes that direct examination of the witness

lasted approximately ten minutes and was limited to two

points.

All errors and irregularities in the notice for taking

a deposition are waived unless written objection is

promptly served upon the party giving the notice.

Fed. R. Civ. P 32(d) (1). In this case, the parties do not

disagree that the face of the original notice of deposition,

served March 3, 2006, was deficient. The Board finds,

however, that applicant’s objections, served eleven days

later, on the late afternoon of the day before the

deposition, were not made promptly. Applicant has

provided no reasonable explanation why the objections

were not made earlier, except that it was “under no

obligation” to do so. However, by not doing so earlier,

applicant waived its right to object. After all, insofar as

the notice was defective on its face, had applicant served

prompt objections, opposer could have cured the defect

1. Inthis regard, opposer points out that applicant’s counsel

was in New York for several days to attend five testimonial

depositions noticed by opposer to take place between March 8-

15, 2006.

Sa

Appendix

sooner. As it is, opposer took action to cure the defect

immediately upon being notified. Moreover, applicant’s

counsel was already in New York for testimonial

deposition in this case; and the matters upon which the

witness testified do not appear to have been

complicated.

Accordingly, applicant’s motion to strike the

deposition based on the adequacy of the original notice

is denied; and, considering the circumstances presented,

applicant’s objections to the amended notice on the

ground of timeliness are overruled.

Applicant’s motion for sanctions

On March 22, 2006, applicant moved for sanctions

with respect to the March 13th deposition of Kathryn

Mollica. According to applicant, the deposition ended

after cross examination and opposer’s attorney left the

room to escort Ms. Mollica out of the office; and about

ten minutes later, while applicant’s attorney was packing

up, one of opposer’s attorneys returned to advise

applicanit’s attorney that the witness was being called

back for additional questioning. Applicant argues that,

prior to resumption of testimony, it objected to any off-

the-record, private consultation between the witness and

opposer’s counsel; that in response to an inquiry from

applicant’s counsel about what she had discussed with

opposer’s counsel, the witness responded, “I said

something to him that I wanted to get on the record”;

and that the re-direct examination was improper insofar

as it resulted from consultation between the witness and

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her attorney after conclusion of the deposition. Applicant

brings to the Board’s attention several cases that

applicant believes stand for the proposition that a

witness and his or her attorney may not confer during

the course of a deposition. As a sanction, applicant seeks

to strike the entire deposition of Ms. Mollica.

According to opposer, after cross examination, a

break was taken in the deposition during which

opposer’s counsel escorted the witness to the bathroom

and briefly conferred to determine w..»ther re-direct

examination was appropriate because the witness forgot

to mention “media impressions” (media advertising) in

her direct testimony. Opposer indicates that applicant’s

counsel was permitted to inquire into the purported

“conference” between Ms. Mollica and opposer’s

counsel; that no conduct occurred that is improper; and

that, certainly, no conduct occurred so as to warrant

striking the entire testimonial deposition. Opposer

argues that the cases referenced by applicant stand for

the proposition that a witness may not confer with his

or her attorney during (emphasis added) cross

examination, but do not disapprove of such conferring

after an adversary has completed its cross examination

and prior to re-direct examination.

While the witness states that she spoke briefly to

her attorney about a matter she “. .. wanted to get on

the record, which was about our media impression,” she

also indicates that she then went to the bathroom before

re-direct examination began. It does not appear that

there was any coaching or change of testimony, or that

gs

&

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the deponent’s credibility is impaired as a result of the

re-direct examination. Nor does there appear to be

measurable prejudice to applicant inasmuch as

applicant’s attorney was able to question the witness as

to the content of any conversation she had with her

attorney during the “break,” which both parties indicate

was short. Applicant further was able to conduct re-

cross-examination. The mere fact that the witness was

recalled does not demonstrate improper or sanctionable

conduct.

Accordingly, applicant’s motion for sanctions is

denied.

Opposer’s motions to extend testimony and to

suspend proceedings

Opposer’s first testimony period closed on March

15, 2006. On March 14th, opposer moved to extend

testimony on the basis that an unresolved district court

matter was pending with respect to a subpoena for a

testimonial deposition of applicant’s corporate witness.

According to opposer, the subpoena was issued on

January 31, 2006; applicant moved to quash, which

the district court, on March 2, 2006, denied; as a

consequence, a second trial deposition subpoena was

issued on February 27, 2006; and applicant, filing

objections to the subpoena, otherwise failed to comply

therewith.

In respons, applicant contends that the denial of

the motion to quash was nominal insofar as the court

ordered, and clarified in a hearing conducted March 24,

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2006, a witness for “somebody who is a resident or living

in this district” and did not make a ruling that “...

compels somebody . . . who lives in a foreign country to

come.” Applicant, a foreign entity, argues that it has no

witness residing or living in the relevant judicial district,

and that it so informed both opposer and the court prior

to the date on which opposer sought the deposition in

question.

The Board notes in passing that its January 9, 2006

order addressed the Board’s written policy concerning

an adverse party whose trial deposition is sought and

who resides in a foreign country.

On May 12, 2006, opposer again sought an extension

of testimony, informing the Board that the matter

concerning the sought trial deposition remains pending.

This is so because opposer has appealed the April 6,

2006 determination of the magistrate judge that the

district court lacked the authority (under 35 U.S.C. §24)

to compel applicant to appear for a deposition except

by individuals who live or reside in the judicial district

(Eastern District of Virginia) and who consent to testify

on applicant’s behalf. Opposer indicates that the appeal

now is pending before the Fourth Circuit.

In response, applicant contends that there is no

reason to extend dates because it is unlikely that the

Fourth Circuit will overrule long-standing precedent and

force applicant’s corporate witness to involuntarily

appear in the Eastern District of Virginia when the

witness lives and resides in Portugal.

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Appendix

On August 3, 2006, opposer moved to suspend

proceedings pending the decision of the Fourth Circuit

on this matter.

Whenever it comes to the attention of the Board

that a party or parties to a case pending before it are

involved in a civil action which may have a bearing on

the Board case, proceeding before the Board may be

suspended until final determination of the civil matter

(which includes exhaustion of appeals taken). To the

extent that a case in Federal court involves issues in

common with those in the proceeding before the Board,

the decision of the court is often binding on the Board,

while the decision of the Board is not binding upon the

court. TBMP Section 510.02 (2d ed. June 2003). It is

only necessary that the determination of issues

presented to the court may have a bearing on the issues

presented to the Board, and judicial economy lies in the

suspension of the Board proceeding.

In this case, the determination by the Fourth Circuit

of whether opposer can take the trial deposition of

applicant’s witness may have an affect on the

administration of this opposition. Accordingly, opposer’s

motion to suspend proceedings is granted, and

proceedings are suspended pending final disposition of

the civil matter between the parties concerning the

enforcement of opposer’s subpoena.

Within twenty days after the final determination of

this matter, the parties should notify the Board so that

this case may be resumed. If opposer does not prevail,

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there does appear to be any reason to extend opposer’s

main testimony period because it has submitted other

evidence and because the sole reason it seeks to extend

the dates is to accommodate the trial deposition of

applicant’s corporate witness. In regard to the schedule,

applicant also submitted evidence during its scheduled

testimony period and has not asked for an extension

thereof. Thus, upon resumption, depending on the final

determination of the civil matter, it may be that only

rebuttal testimony is reset in this opposition.

Consequently, full consideration of opposer’s motions

to extend testimony is deferred.

During the suspension period the Board should be

notified of any address changes for the parties or their

attorneys.