Petition for Certiorari Filed by Portuguese Company Rosenruist re 4th Circuit Subpoena Ruling

Rosenruist-Gestao E Servicos LDA has filed a Petition for Writ of Certiorari (here), seeking Supreme Court review of the 4th Circuit's decision in Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 85 USPQ2d 1385 (4th Cir. 2007). (TTABlogged here). Set forth below are the Questions Presented in the Petition.

Virgin Gorda

QUESTIONS PRESENTED
35 U.S.C. § 24 permits a district court to assist the United States Patent and Trademark Office (“PTO”) in a contested case by issuing testimonial subpoenas to a witness “residing or being within such district.” The First, Third, and Fifth Circuit Courts have held that the authority granted in Section 24 is ancillary and limited and is to be used to compel discovery allowed by the rules and procedures of the PTO. The Tenth Circuit has disagreed, holding that Section 24 authorizes broad discovery independent of any limitation in the PTO’s procedures.

In the instant appeal a divided Fourth Circuit held, for the first time, that a foreign applicant for a trademark which lacks any nexus to the district other than the filing of a trademark application based upon a future intent to use the mark is a “witness residing or being within” the Eastern District of Virginia and can be compelled by subpoena issued pursuant to Section 24 to transport witnesses from abroad to be deposed in the district. The rules and procedures of the PTO do not permit in-person testimonial depositions of foreign witnesses, but do provide alternate methods for obtaining such testimony.

The questions presented are:

1. Does 35 U.S.C. § 24 authorize a district court to subpoena foreign witnesses with no contact with the United States other than the filing of a trademark application to appear personally for deposition in Virginia when the rules and procedures of the United States Patent and Trademark Office do not authorize such depositions but, instead, permit alternate means for obtaining testimony?

2. Is a foreign company with no employees, locations or other business in the United States a “witness residing or being” within the Eastern District of Virginia under 35 U.S.C. § 24 solely because it filed a trademark application with the United States Patent and Trademark Office?

Text Copyright John L. Welch 2008.