Precedential No. 16: Options for Cross-Exam of Foreign Trial Witness Are Limited, Says TTAB

In this long-running cancellation proceeding aimed at a registration for the mark COHIBA for cigars, the Board considered "the means available to cross-examine a declarant or affiant testimonial witness outside the jurisdiction of the United States." Respondent General Cigar filed a motion seeking to (1) take the oral cross-examination testimony of petitioner's two foreign (Cuban) trial witnesses or, alternatively, (2) to take their testimony during its (General Cigar's) testimony period. The Board denied both motions. Empresa Cubana Del Tabaco d.b.a. Cubatabaco v. General Cigar Co., Inc., 2019 USPQ2d 227680 (June 14, 2019) [precedential] (Interlocutory Attorney Katie W. McKnight).

Oral Cross-Examination of Foreign Witness: General Cigar acknowledged that under Rule 2.124, cross-examination of a witness outside the jurisdiction of the United States is to be taken by deposition on written questions. That rule does not expressly provide for oral cross-examination by Board order. However, General Cigar pointed to Rule 2.123(a)(2), which provides that testimony may be taken orally upon Board order based on good cause, and it argued that the Board can also order oral cross-examination of a foreign witness if good cause is shown.

The Board pointed out that Rule 2.123(a)(2) allows the offering party to choose the means of taking testimony in a foreign country: (1) by deposition upon written questions as provided by Trademark Rule 2.124; or (2) by affidavit or declaration, subject to the right of any adverse party to elect to take and bear the expense of cross-examination by written questions of that witness. Rule 2.123(a)(1) is to the same effect. Moreover, the "plain wording" of Rules 2.123 (a)(1) and (a)(2) is reflected in Rule 2.123(e)(1), which provides for cross-examination of testimony by affidavit or declaration made outside the jurisdiction of the United States.

These provisions are clear and unambiguous in their meaning and intent and there is no basis or cause to read into the rules a method for taking cross-examination of an affiant or declarant in a foreign country beyond that explicitly provided for in the Board’s rules. Cf. BBA Nonwovens Simpsonville, Inc. v. Superior Nonwovens, LLC, 303 F.3d 1332, 64 USPQ2d 1257, 1262 (Fed. Cir. 2002) (“If a statute’s language is plain and unambiguous, and conveys a clear and definite meaning, there is no occasion for employing rules of statutory interpretation ….”) quoting Ray Bell Constr. Co. v. Sch. Dist. of Greenville Cnty., 331 S.C. 19, 501 S.E.2d 725, 729 (1998).

And so the Board refused to order oral cross-examination of the Cuban witnesses.

Direct Oral Testimony of Petitioner's Witnesses: As an alternative, General Cigar requested leave to take the oral direct testimony of the two Cuban witnesses during its own trial period, "with the direct examination to encompass cross-examination of the facts set forth in the Cuban Witness Declarations." However, because General Cigar's trial period had not yet begun, the Board denied the motion as premature. See Rule. 2.121.

In addition, the Board pointed out that, although the rules allow oral direct testimony of a foreign trial witness, upon motion for good cause, "'there is no certain procedure for obtaining the trial testimony deposition of a nonparty who resides in a foreign country and is not willing to appear voluntarily, whether the deposition sought is intended to be taken orally or upon written questions.' Galaxy Metal Gear, Inc. v. Direct Access Tech., Inc. 91 USPQ2d 1859, 1862 (TTAB 2009)."

Finally, the Board noted two hurdles that General Cigar may face even if it did obtain leave to take oral testimony in a foreign jurisdiction: it should determine whether the foreign country permits such a deposition,and under what procedure (Cf. TBMP § 404.04). Moreover, the deposition may not be taken on notice alone, and if the Cuban declarants are not willing to appear voluntarily, General Cigar must take steps to compel their attendance. TBMP § 703.01(f).

Read comments and post your comment here.

TTABlog comment: Do foreign parties have a procedural advantage in TTAB proceedings due to these and other procedural complications?

Text Copyright John L. Welch 2019.