Precedential No. 14: Cross-Examination of US-Based Testimony Declarant Must be by Oral Deposition, Not Written Questions, Says TTAB

In this cancellation proceeding involving a registration for the mark CAPTAIN CANNABIS for comic books, the Board faced the question of whether a witness located in the United States, whose testimony was submitted by affidavit or declaration under Rule 2.123(a)(1), may be cross-examined by written questions. No, said the Board, only by oral cross-examination. Laverne J. Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984 (TTAB 2019) [precedential] (Order by Interlocutory Attorney Yong Oh (Richard) Kim)).

Petitioner Andrusiek moved for leave to take the cross-examination of two witnesses, both located in the United States, on written questions. He pointed to the expense and inconvenience of oral depositions because the witnesses were in Tampa, Florida, while petitioner is located in the State of Washington.

In opposition to the motion, Respondent Cosmic Crusaders relied on Rules 2.123, and 2.124, which do not provide for cross-examination by written questions. The Trademark Rules allow a party to “take” direct testimony by submitting an affidavit or declaration or by oral examination under Rule 2.123, or by written questions under Rule 2.124. As for cross-examination, the proper procedure differs depending on the location of the witness.

Where, as here, testimony is presented by affidavit or declaration, Trademark Rules 2.123(a)(1) and (a)(2) make clear that the methods of cross-examination permitted depend on where the witness is located. “[I]f such witness is within the jurisdiction of the United States,” any adverse party may “take ... oral cross-examination of that witness ....” Trademark Rule 2.123(a)(1). “[I]f such witness is outside the jurisdiction of the United States,” any adverse party may “conduct cross-examination by written questions as provided in § 2.124 ....” Id.

Addressing Andrusiek’s concern about expense, the Board noted that the Rules do not require that oral cross-examination be conducted in person. It may be conducted by telephone or other remote means either through stipulation or on motion for good cause. See Fed. R. Civ. P. 30(b)(4). "[N]othing in the language of Rule 30 requires a showing of necessity, financial inability or other hardship to obtain an order to proceed via telephone, ... leave to take telephonic depositions [is] liberally granted in appropriate cases." Hewlett-Packard Co. v. Healthcare Pers. Inc., 21 USPQ2d 1552, 1553 (TTAB 1991). The Board construed Petitioner Andrusiek's motion as, alternatively, seeking leave to take oral cross-examination by telephone or other remote means.

Since it is Respondent who has insisted on oral cross-examination, the Board sees neither harm nor prejudice to Respondent in permitting Petitioner to conduct such cross-examination by remote means should Petitioner elect to do so.

Finally, the Board pointed out that respondent will bear the expense of producing the witness, but petitioner must schedule and bear the expense of the court reporter. See Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 24 USPQ2d 1160, 1166-67 (TTAB 2017). Redirect or recross must be taken at the same time as the cross-examination.

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TTABlog comment: Depositions by written questions are pretty useless anyway

Text Copyright John L. Welch 2019.