Wednesday, June 17, 2020

Precedential No. 23: TTAB Says Rule 30(b)(6) Corporate Deponent Must Travel to Corporation's Principal Place of Business

In this proceeding for cancellation of a registration for a product design mark for guitar pickups, the Board denied Respondent DiMarzio Inc.'s motion for a protective order requiring Petitioner Andrew R. Flanders to take his Rule 30(b)(6) deposition of respondent in Bozeman, Montana, where respondent's designated witness resides. The Board declined to depart from the customary practice in federal court that the deposition of a corporation is ordinarily taken at its principal place of business. Andrew R. Flanders v. DiMarzio, Inc., 2020 U.S.P.Q.2d 10671 (T.T.A.B. 2020) [precedential] (Jill M. McCormack, Interlocutory Attorney).

Petitioner Flanders noticed the deposition of the respondent corporation for the offices of his counsel in New York City. Respondent argued that because its designated Rule 30(b)(6) witness - founder and owner, Larry DeMarzio - lives and works in Bozeman, Montana, the deposition must take place there.

Flanders contended that he was not seeking the deposition of an individual but of a corporate designee under Rule 30(b)(6), and therefore the deposition should take place in New York City, where respondent is registered and has its principal place of business. In fact, in November 2018, Mr. DiMarzio had insisted that the deposition take place there.

Trademark Rule 2.120(g) empowers the Board to issue an order, for good cause, to protect a party from, inter alia, annoyance and undue burden or expense, including the types of orders listed in FRCP 26(c)(1)(A)-(H). The Board may specify the terms for discovery, including time and place. FRCP 26(c)(1)(B).

Trademark Rule 2.120(b) provides that “the deposition of a natural person shall be taken in the Federal judicial district where the person resides or is regularly employed or at any place on which the parties agree in writing.” Section 45 of the Trademark Act distinguished between a "natural person" and a "juristic person." The latter includes a corporation. The Trademark Rules do not state the location in which a juristic person must be deposed under FRCP 30(b)(6). Since both the Trademark Rules and the Federal Rules of Civil Procedure are silent on this issue, the Board looks to the decisions of the CAFC, its own precedential decisions, and decisions from courts interpreting the Federal Rules.

The location of a Rule 30(b)(6) deposition where the corporate designee resides in a state different from that in which the corporation has a principal place of business appears to be an issue of first impression for the Board.

The customary federal treatment is that the deposition of a corporation by its agents and officers should ordinarily be taken at its principal place of business. 8A C. Wright & A. Miller, FED. PRAC. & PROC. CIV. § 2112 (3d ed. 2020). However, courts have broad discretion to determine the appropriate place for a Rule 30(b)(6) deposition, for the convenience of the parties and in the interests of judicial economy.

To determine whether good cause justifies a departure from the general rule, courts will typically look to a nonexhaustive list of factors, including the location of counsel, the burden of travel (including expense), the size of the party to be deposed and regularity of executive travel, the number of corporate representatives designated to testify, and the equities with regard to the nature of the claim and the relationship of the parties.

The Board found these factors appropriate for determining whether to issue a protective order with regard to the discovery deposition of a corporate designee.

There was no dispute that New York City is a convenient location for counsel. Respondent did not identify any undue burden it would face in proceeding in New York City. There was no assertion that Mr. DiMarzio cannot travel to the Big Apple, nor did respondent contend that Mr. DiMarzio is the only witness who can testify under the Rule 30(b)(6) deposition notice. The Board noted that Rule 30(b)(6) allows a corporation wide latitude in choosing a person to testify on its behalf.

Respondent did not dispute that in November 2018, Mr. DiMarzio demanded that the deposition take place in New York City. In 2019, respondent suggested that the deposition proceed in California. Thus, respondent is apparently not unduly burdened by executive travel.

The Board concluded that "[a]ll the equities favor holding Respondent's deposition in New York City." Since respondent did not show good cause to justify a protective order, the Board declined to depart from the general practice that Respondent should be deposed in the location of its principal place of business. Therefore, the Board denied respondent's motion.

Read comments and post your comment here.

TTABlogger comment: Too bad the TTAB can't award attorney's fees on a feeble motion like this one. Could it at least order the petitioner to write 100 times in longhand, "I will not waste the Board's time with frivolous motions"? [Leo Stoller was once hit with just such a sanction].

Text Copyright John L. Welch 2020.


At 11:02 AM, Anonymous Anonymous said...


At 6:56 PM, Anonymous J said...

Seriously. Especially if it was known at the time of the motion that, as put by the Board, "in view of the current circumstances related to the COVID-19 pandemic, within thirty days of the date of this order, the parties are ordered to conduct a teleconference to discuss their options for moving forward with Respondent’s deposition. In particular, the parties should discuss whether, in the interest of moving this proceeding along, Petitioner wishes to take the deposition by video teleconference, telephone or similar acceptable means."


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