Thursday, March 25, 2010

Will the TTAB Follow the 4th Circuit's Rosenruist Ruling?

In a controversial decision issued in December 2007, the U.S. Court of Appeals for the Fourth Circuit in Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 85 USPQ2d 1385 (4th Cir. 2007), cert. denied, ___ U.S. ___ (May 27, 2008), ruled that a foreign corporation must obey a subpoena issued by the U.S. District Court for the Eastern District of Virginia, pursuant to a Rule 30(b)(6) notice in a TTAB proceeding, and must appear in Virginia to give trial testimony. [TTABlogged here]. At the time, we wondered whether the TTAB would follow Rosenruist. A recent ruling (here) on a Motion to Quash a discovery deposition suggests that the answer is no. Oxford Tutoring Inc. v. Oxford Learning Centres,Inc., Cancellation No. 92048444.

On March 22, 2010, Interlocutory Attorney Robert H. Coggins granted a motion to quash a Rule 30(b)(6) deposition notice served by Petitioner Oxford Tutoring on Respondent Oxford Learning, a Canadian corporation. Respondent successfully moved to quash the deposition notice of deposition and sought to proceed with any discovery deposition of respondent by the manner prescribed by Trademark Rule 2.124 (depositions on written questions).

Ordinarily, the discovery deposition of a natural person who resides in a foreign country, and who is a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(3) to testify on behalf of a party, must, if taken in a foreign country, be taken upon written questions in the manner described in Trademark Rule 2.124. Moreover, the Board will not order a natural person, including a person designated under Fed. R. Civ. P. 30(b)(6), residing in a foreign country to come to the United States for the taking of his or her discovery deposition. TBMP §520 (2d ed. rev. 2004). See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998), and Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 374 (TTAB 1978). See also TBMP §§ 404.03(b) and 521.

Inasmuch as respondent is a Canadian corporation with no corporate presence in the United States, and no officer, director, managing agent, or other person who consents to testify on its behalf residing in the United States, respondent's motion was granted. Accordingly, petitioner's notice of an oral deposition of respondent was quashed.

The parties fully briefed the issue of the applicability of Rosenruist, with Respondent pointing out in its reply that a decision by the 4th Circuit is not binding upon the TTAB. Perhaps that argument carried the day, because in granting the motion, the Interlocutory Attorney made no mention of Rosenruist.

I suspect that the Board will essentially continue to ignore Rosenruist and will not change its position on this issue until directed to do so by the CAFC.

TTABlog note: In a subsequent order in the Rosenruist opposition,stating that the Board was bound by the district court's order that the deposition proceed, the Board made this comment in a footnote:

The Board has read the opinion of the Fourth Circuit and comments that it is somewhat puzzled by the Court’s characterization of the deposition sought as a “30(b)(6) deposition.” The Board presumes the Court’s reference to 30(b)(6) to be comparative because a 30(b)(6) deposition is a discovery deposition. The Board was always cognizant that opposer was seeking a testimonial deposition of a non-willing, adverse party residing in a foreign country. The Board never referred to the deposition sought as “30(b)(6),” which is not available for trial depositions.

Text Copyright John L. Welch 2010.


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