Monday, June 08, 2020

Precedential No. 22: TTAB Denies Motion for Leave to Take More Than Ten Discovery Depositions

The Board denied opposer's motion for leave to take additional discovery depositions beyond the ten-deposition limit of Fed. R. Civ. P. 30(a)(2), ruling that opposer had failed to make the required "particularized showing" as to the need for additional depositions. "That Opposer chose to take unnecessary depositions while foregoing important ones was an unfortunate strategic decision, but not a basis for granting the relief sought." The Board did, however, allow opposer to take the deposition of applicant's expert. Spliethoff’s Bevrachtingskantoor B.V. v. United Yacht Transport LLC dba United Yacht Transport, 2020 USPQ2d 10605 (TTAB 2020) [precedential] (Larry T. Stanley, Jr., Interlocutory Attorney).

Trademark Rule 2.116(a) states that “[e]xcept as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.” The Trademark Rules do not specify a limit on the number of discovery depositions, and so the Board applied the deposition limit of the Federal Rules of Civil Procedure. The Federal Rules impose a limit of ten oral depositions, but a party may seek leave to take additional depositions.

The Board follows settled federal practice when applying the Federal Rules, which dictates that a party seeking such leave must make a “particularized showing” of why the additional discovery is necessary. Archer Daniels Midland Co. v. Aon Risk Servs., Inc. of Minn., 187 F.R.D. 578, 586 (D. Minn. 1999). The Board must limit the extent or frequency of discovery if it finds that:

(i) the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive;
(ii) the party seeking discovery has had ample opportunity to obtain the information by discovery in the action; or
(iii) the proposed discovery is outside the scope permitted by Rule 26(b)(1).

The Board may also consider whether the depositions already taken were necessary, to make sure that the party is not attempting to "circumvent the cap." by taking unjustifiable depositions first and then seeking leave for the more justifiable depositions. The Board looks to "whether additional depositions are proportional to the needs of the case, the importance of the issues, the parties’ relative access to relevant information, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit."

Applicant UYT sought to register UNITED YACHT TRANSPORT, in standard character form, for “transport of yachts by boat." Spliethoff's opposed on grounds of fraud, likelihood of confusion, and nonuse. Five of the ten witnesses that opposer deposed were its own witnesses Apparently it did not recognize that a discovery depositions of one's own witnesses are not admissible as trial testimony, except in certain circumstances. As Professor McCarthy observes, "one rarely takes the discovery deposition of one’s own client or favorable witnesses." The Board noted that here there was no indication that these five witnesses were unavailable for trial; in fact, they were represented at the depositions by opposer's counsel. Thus the Board found that these depositions were unjustified.

Similarly as to two third-party witnesses who were custodians of certain records, opposer should have planned to take their testimony at trial or by obtaining authenticating testimony by declaration or affidavit. Opposer also took testimony of two attorneys who provided relevant information, but there was no showing that these attorneys were subpoenaed and there was nothing indicating that they would not be willing to provide affidavit or declaration testimony.

Only as to one witness did opposer make a sufficient showing of justification for the discovery deposition.

The Board then considered whether opposer made a “particularized showing” that the additional discovery is necessary.

Opposer Spliethoff's sought to depose applicant's president, Mr. Haber, and its Rule 30(b)(6) witness. The Board acknowledged that these witness would have relevant information, However, the Board denied the request "in view of Opposer’s having wasted so many previously-taken discovery depositions, and Opposer’s having had ample opportunity to take these depositions but instead electing to pursue other depositions first."

Opposer also sought to depose applicant's former trademark attorney, Mr. Zimmer, claiming that because he submitted declarations in support of the application filing, his investigation and search results would be relevant to the fraud claim. The Board, however, pointed out that "[t]he mere signing of the declaration and Response to Office Action, however, does not create a circumstance where Mr. Zimmer alone would need to testify to the contents of those documents." The Board denied the request.

Opposer named a Mr. Uhr as a desired witness, but failed to show whether Mr. Uhr has discoverable information, and if so, how that information would be noncumulative of other witnesses." The Board also rejected opposer's request to take the deposition of an unnamed witness who may have relevant information.

Opposer has not demonstrated that it used its allotted ten depositions in a judicious manner. Opposer should have used one or more of its allotted ten depositions for a Rule 30(b)(6) deposition of Applicant or depositions of its officers. In view of Opposer wasting several of its ten discovery depositions, Opposer’s motion to take the deposition of Mr. Haber and a Rule 30(b)(6) deposition of Applicant is denied. As discussed above, Opposer’s motion to take the depositions of Mr. Uhr, Mr. Zimmer, and an unnamed witness is denied for failure to make a particularized showing.

Finally, Spliethoff's requested leave to depose applicant's expert witness, who produced a report on whether UYT was operating in violation of the Shipping Act of 1984 when it filed the opposed application. The Board granted that request, since "parties typically do not learn of the need to depose an expert until late in the discovery period." It noted that the expert's testimony "would be neither duplicative nor cumulative of testimony already obtained."

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TTABlogger comment: TTABlog tip: read the rules and plan ahead! BTW, I note that opposer refers to a "claim" of "void ab initio."  There is no such claim. "Void ab initio" is a result not a claim: e.g., an application may be void ab initio on the ground of lack of bona fide intent or nonuse.

Text Copyright John L. Welch 2020.


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