District Court Refuses to Enforce Subpoena for TTAB Case: Must Be Issued by the Court, Contrary to TBMP
Cancellation Petitioner Waterdrop Microdrink GmbH relied on the Trademark Board Manual of Procedure when its attorney signed and served a subpoena on third-party Ecolife Technologies, Inc. in order to take the latter's deposition under FRCP 30(b)(6). Respondent's counsel refused to accept service, and also stated that the subpoena was improperly issued. When Waterdrop moved to compel compliance, the U.S. District Court for the Central District of California sided with Ecolife. Waterdrop Microdrink GmbH v. Qingdao Ecopure Filter Co., Cancellation No. 92079118.
Ecolife contended that, under 35 USC Section 24, a subpoena in connection with a USPTO proceeding must be issued by the court. Waterdrop pointed to TBMP Section 404.03(a)(2), which states that a subpoena may be issued by the clerk of judge of the court in the district where the deponent resides, or by "an attorney authorized to practice in that jurisdiction." [emphasis added]. Waterdrop also pointed to FRCP 45(a)(3), which states that an attorney may authorize and issue a subpoena if authorized to practice in the issuing court.
35 USC Section 24 states that "the clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within the district." [emphasis added]. Section 24 does not say that an attorney may issue a subpoena.
Ecolife argued that the TBMP and the Federal Rules of Civil Procedure cannot supersede the "plain language" of 35 USC Section 24.The district court gave short shrift to the TBMP provision, citing Justice Gorsuch's observation (while sitting on the 10th Circuit) that the TBMP is only a "sort of rough-and-ready handbook," that "not only doesn't demand deference but actually disclaims it." The court found the TBMP statement to be inconsistent with Section 24. "[T]he TBMP is not binding and Plaintiff does not point to any caselaw or administrative history addressing how this language reconciles with that of Section 24."
Waterdrop argued that requiring the clerk of the court to issue the subpoena is "merely form over substance." The court was unmoved: "Regardless of whether the requirement elevates form over substance, however, Section 24 sets for the procedure by which a party can obtain issuance of a subpoena, and Plaintiff did not follow that procedure."
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TTABlogger comment: Time to amend the TBMP. Haven't I been saying repeatedly that "the TBMP is not the law"? Hat tip to Joshua Friedman for this one.
Text Copyright John L. Welch 2024.
posted by John L. Welch @ 1/24/2024
4 comments
4 Comments:
I fully agree that the TBMP is not law. However, the Magistrate appears to have an incomplete analysis.
Under the Magistrate's ruling, a Judge or a Deputy Clerk can NOT issue a subpoena in an administrative proceeding. The Magistrate applied 35 USC 24 -- a 1952 law (amended in 1975) to overrule authority given by the US Supreme Court when it approved the FRCP amendments in 1991. Is it sound legal analysis to suggest that 35 USC 24 has TAKEN AWAY the plenary power of the Court to issue subpoenas in USPTO proceedings -- only clerks can issue the subpoenas? What is the basis for Congress to take away that power from Federal Judges or other officers of the Court?
Why did the Magistrate get bogged down in the TBMP and ignore the next sentence of 35 USC 24 --
The provisions of the Federal Rules of Civil Procedure relating to the attendance of
witnesses and to the production of documents and things shall apply to contested cases
in the Patent and Trademark Office.
Moreover, 35 USC 24 does not say that the issuance of a subpoena by the court is the EXCLUSIVE means for the Court to have jurisdiction to issue subpoenas, nor does it expressly take away the plenary powers of the Court to issue subpoenas.
The FRCP Committee notes to the 1991 Amendment to the FRCP expressly state:
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Paragraph (a)(3) modifies the requirement that a subpoena be issued by the clerk of court. Provision is made for the issuance of subpoenas by attorneys as officers of the court.
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So, according to this Magistrate, under 35 USC 24, the Court has NO plenary authority to issue a subpoena and neither the court nor the US Supreme Court (by virtue of approving the FRCP) can authorize the Deputy Clerk, a Judge or any officer of the court to issue subpoenas in USPTO proceedings.
Did Congress really intend to (and did it have the authority under the separation of powers doctrine) to tell the Courts that only the clerk can issue the subpoena and not a Judge, a Deputy Clerk or any other officer of the Court? The Magistrate by focusing on the TBMP appears to have failed to explain.
Magistrate judges are ignorant of trademark law, basically incompetent of trademark procedure like preliminary injunctions, and should not be relied on for decisions that have sweeping impact.
I respectfully disagree with the comment that "Magistrate Judges are ignorant of trademark law." My practice is almost exclusively in IP matters in Federal Court (with some TTAB matters, and an occasional case in state court). There are some Magistrate Judges who are excellent in IP matters so such a broad statement is, in my view, overboard. The right to have subpoenas issued in TTAB matters is based upon the Patent Code (Title 35) but applies to ALL USPTO proceedings (including TTAB proceedings) so it's not fair to say this is "trademark procedure." This goes to the essence of federal procedural rules.
I don't believe this is a "form over substance" argument as the commentator suggests one of the parties argued, but is a statutory/rule analysis issue. I consider the "form over substance" issue to include some discretion (which I understand some would argue that the discretion may have been abused), but rather here this is a statutory/rule analysis (regardless of substantive area) where the Magistrate has erred.
To the extent that the commentator discusses changing/amending the TBMP, I agree that the TBMP should be updated in the notes, but not changed. The decision is an errant decision which practitioners should be aware of but the general principal set forth in the TBMP is, in my view, accurate.
The CD California Magistrate decision is also at odds with the law of other cases. It is unclear why this decision was not appealed. The CD California decision refused to acknowledge the portions of FRCP 45 that expressly authorize an attorney to issue a subpoena on behalf of the Court. Essentially, the Magistrate was interpreting 35 USC 24 based upon the original FRCP 45 at the time 35 USC 24 was passed by Congress and not as it was found at the time of the dispute.
The 10th circuit, in a decision by (now US Sup Ct Justice) Gorsuch stated:
The fact is that the plain language of § 24 doesn’t suggest that a reader must look to the Federal Rules of Civil Procedure as they were back when the statute was enacted. To the contrary, as written the language suggests that a reader may look to the rules as they are found on any given day, today included. And surely our job when interpreting statutes is to read them as an ordinary citizen might, not to lay spring traps for the unwary and force lay persons to become experts in the vestigial esoterica of every statute and federal rule.
El Encanto, Inc. v. Hatch Chile Company, Inc., 825 F.3d 1161 (2016)
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So, can one really view this Magistrate's decision as having any binding authority. It doesn't bind district Judges, it doesn't have any effect outside the CD California, and fails to comply with statutory interpretation rules.
It is good to know about this decision should one be appearing before this Magistrate, but is informational (and likely pretty much of no value) in any tribunal doing an analysis of the law.
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