In a trademark opposition, pursuant to TTAB Rule 2.120(c)(1), the deposition of a natural person residing in a foreign country, if taken in that foreign country, must be taken upon written questions “unless the Trademark Trial and Appeal Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate.”

Unlike answers to written questions, oral depositions would permit immediate follow-up questions, spontaneity, and the ability to evaluate the witness' demeanor and credibility.

In deciding whether to oral deposition, the TTAB will weigh the equities, including the advantages of an oral deposition and any financial hardship that the party to be deposed might suffer if the deposition were taken orally in the foreign country. Salutare S.A. de C.V. v. Remedy Drinks Pty Ltd, 2022 USPQ2d 16, at *8 (TTAB 2021); Orion Grp. Inc. v. Orion Ins. Co., 12 USPQ2d 1923, 1925 (TTAB 1989).

Two Witnesses in Australia

In Instagram, LLC v. Instagoods Pty Ltd, Opposition No. 91266266, 2023 USPQ2d — (TTAB Oct. 11, 2023), the TTAB found good cause for taking the deposition orally of two witnesses in Australia.

The two Australian witnesses were the sole remaining party witnesses with knowledge regarding issues pertinent to the claims in this proceeding. Moreover, oral depositions “are likely to aid in the furtherance of discovery in this proceeding, particularly where Instagram has had difficulty obtaining information regarding (former Instagoods employee) Ms. Willis' role with Instagoods and her prior-filed applications through written discovery.”

Furthermore, both witnesses speak English, so no translators would be needed, which supports finding good cause. See Orion Grp. Inc., 12 USPQ2d at 1926 (considering the lack of need for translations a factor in finding good cause to take depositions orally).

Also, a “willingness to coordinate the depositions according to the schedules of the witnesses further supports a finding of good cause.”

And the oral depositions could be conducted remotely by videoconference.

Rule 30(b)(4) of the Federal Rules of Civil Procedure provides that depositions may be taken “by telephone or other remote means,” and “[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 [remote means], and leave to take depositions [via remote means] should be liberally granted in appropriate cases.” Salutare S.A. de C.V., 2022 USPQ2d 16, at *15-16 (quoting Hewlett-Packard Co. v. Healthcare Pers., Inc., 21 USPQ2d 1552, 1553 (TTAB 1991)); see also Fed. R. Civ. P. 30(b)(4). “[F]ederal practice favors the use of technological benefits in order to promote flexibility, simplification of procedure and reduction of cost to parties.” Salutare S.A. de C.V., 2022 USPQ2d 16, at *15. The taking of the discovery depositions remotely by videoconference will promote flexibility and reduce costs to the parties, particularly where the parties may elect to break up the depositions into segments to accommodate the witnesses' schedules.

The TTAB pointed out, however, that Instagram is responsible for following appropriate procedures to ensure that the taking of the discovery depositions “complies with (1) any applicable procedural treaty requirements and (2) any limitations the Board may impose upon consideration of international comity in light of any local laws given consideration by the Board.”

The Board noted that Instagram may resort to any of the devices available under Federal Rule of Civil Procedure 28(b)(1), including noticing the deposition, seeking issuance by the Board of a letter of request for use under the Hague Convention, seeking issuance by the Board or, if applicable, a U.S. District Court of a letter rogatory for application to the U.S. Department of State for diplomatic processing, or seeking the appointment of an individual or officer within the foreign territory who is commissioned to take the oath of the deponent.

Furthermore, seeking a deposition upon notice, letter of request, letter rogatory, or commission are not mutually exclusive options; nor is exhaustion of one method required before seeking another method. See Societe Nationale Industrielle Aerospatiale v. U.S. Dist. Ct. for S. Dist. of Iowa, 482 U.S. 522, 543-44 (1987) (“Aerospatiale”) (no rule of first resort to Hague Convention for evidence-gathering on foreign soil merely because both countries adopted the Convention); see also Fed. R. Civ. P. 28(b)(2)(B).

A motion for leave to take the oral deposition of a foreign witness preferably should include the proposed notice of deposition, letter of request, letter rogatory, or commission, as appropriate. But see Salutare S.A. de C.V. v. Remedy Drinks Pty Ltd, 2022 USPQ2d 16, at *17, n.46 (TTAB 2021) (no explicit requirement in the Trademark Rules of Practice that a notice of deposition be served before a party may move to take the deposition of a foreign witness by oral examination).

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.