*1 HEALTH-TEX INC.
OKABASHI (U.S.) CORPORATION
Opposition No. 77,350
June 13, 1990
Charles H. Bayar of Whitman & Ranson for Health-Tex Inc.
Robert G. McMorrow of Sughrue, Mion, Zinn, Macpeak & Seas for Okabashi (U.S.) Corporation
Before Sams, Rice and Rooney
By the Board:
This case now comes up on the following matters: (1) opposer's motion, filed January 22, 1990, for an extension of its testimony period; (2) opposer's motion, filed February 27, 1990, for an order approving a stipulation for use of the discovery deposition of Mr. Fred Lurie as testimony herein; (3) opposer's motion, filed March 13, 1990 for an order to keep certain pages and exhibits of the testimony depositions of William Filerio and Peter Ryan confidential and under seal; and (4) applicant's emergency motion, filed April 3, 1990, for a protective order.
Inasmuch as applicant has consented to opposer's motions Nos. (2) and (3) above, these motions are granted. Accordingly, the discovery deposition of Mr. Lurie may be utilized by either party as a testimonial deposition herein and the designated pages and exhibits of the testimony depositions of Mr. Filerio and Mr. Ryan will be kept confidential and under seal.
Before proceeding to opposer's motion for an extension of its testimony period and applicant's emergency motion for a protective order, we believe that a brief review of the pertinent background for these two motions is appropriate.
The Board, in a trial order mailed August 30, 1989, set opposer's testimony period as plaintiff in the opposition to close on January 29, 1990. On January 22, 1990 opposer filed a motion for an extension of its testimony period to February 28, 1990. This motion is uncontested. On February 13, 1990 opposer filed a notice of the deposition upon written questions of Mr. Bahman Irvani, applicant's treasurer, or other knowledgeable officer or employee of applicant. Applicant, in a letter to opposer, dated February 16, 1990 advised opposer that the notice was untimely since the Board had not yet ruled on opposer's motion for an extension of its testimony period. Applicant further noted that the testimonial deposition of an adverse party could not be taken on notice alone and that no response would be made to the questions propounded. On February 22, 1990 opposer obtained a subpoena from the U.S. District Court for the Northern District of Georgia ordering applicant's treasurer, Mr. Bahman Irvani, or another knowledgeable officer or employee of applicant to appear at a deposition upon written questions. Opposer thereafter served its written questions to which applicant objected. On March 9, 1990 opposer served substitute written questions. Applicant, on March 15, 1990 objected to all of the questions as being untimely and alternatively, objected to certain of the questions as being irrelevant to the issues in this proceeding. In a letter dated March 29, 1990, opposer's counsel served on applicant's counsel a notice that Mr. Irvani's deposition upon written questions would be taken on April 10, 1990 at 10:00 a.m. Applicant then filed on April 3, 1990 its emergency motion for a protective order. On April 9, 1990, the Board conducted a telephone conference with the parties' counsel in connection with opposer's motion for an extension of its testimony period and applicant's emergency motion for a protective order. This action will serve to confirm and explain the ruling of the Board during that conference.
*2 We will consider first opposer's motion for an extension of its testimony period. The Board notes that applicant has not objected to the motion and that during the requested extension, opposer noticed and took testimony depositions which applicant's counsel attended. We also note that on February 13, 1990 and during the requested extension, opposer filed notice with the Board of the taking of the deposition upon written questions. When it comes to the Board's attention that a deposition upon written questions is to be taken, it is our usual practice to suspend proceedings pursuant to Trademark Rule 2.124(d)(2). Under the circumstances, the Board believes it proper to grant opposer's motion for an extension of time and further to suspend proceedings as of February 13, 1990, the date of filing the notice of deposition upon written questions.
We turn next to applicant's motion for a protective order. Applicant's objection to the deposition on written questions on the ground of untimeliness is not well taken in view of our above action suspending proceedings herein. Alternatively, applicant objects to certain of the questions on the ground that they are irrelevant to the issues in this proceeding and requests a ruling that it not be required to answer those questions. [FN1]
Because of the context in which it arises, namely in connection with a deposition upon written questions, and the nature of the relief requested, applicant's motion for a protective order presents us with a novel situation. However, we believe that the better practice in this case, as in oral depositions under Trademark Rule 2.133, is to defer consideration of applicant's objections to the questions on relevancy grounds until final hearing.
In connection with oral depositions under Rule 2.123, questions are generally answered subject to any objection which has been made. A refusal to answer may, if the objection is not well taken, be construed against the non-answering party. That is, in the event the Board finds that refusal to answer a question was not justified, the Board will presume that the answer to the question would have been adverse to the position of the party whose witness refused to answer. See Entex Industries, Inc. v. Milton Bradley Company, 213 USPQ 1116 (TTAB 1982). The Board does not review questions during the course of the proceeding to determine if they are relevant. Rather, objections to relevancy and materiality are not considered until final hearing.
In this case, the Board will not, as applicant has requested, review the questions at issue to determine if they are relevant to the proceeding. However, applicant is free to object and refuse to answer those questions which it believes are not relevant and its motion for a protective order is granted to this limited extent. Applicant is reminded that its refusal to answer may, if the objection is not well taken, be construed against it.
Inasmuch as the Board has been advised that opposer has now completed its testimony, including the deposition upon written questions, proceedings herein are resumed and trial dates, beginning with applicant's testimony period, are rescheduled in the accompanying trial order.
J. D. Sams
J. E. Rice
L. E. Rooney
Members, Trademark Trial and Appeal Board
FN1. While there initially appeared to be some question as to whether Mr. Irvani was going to appear at the deposition, counsel for applicant has now clearly indicated that Mr. Irvani will be present.