Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 HEWLETT-PACKARD COMPANY
HEALTHCARE PERSONNEL, INC.
Opposition No. 76,902
November 8, 1991
Beth A. Chapman
On November 7, 1991, a conference telephone call was held with Mr. Merrill Johnson, attorney for applicant/respondent (applicant); Mr. Don Finkelstein, an attorney for opposer/petitioner (opposer); and Ms. Beth Chapman, Attorney-Advisor with the Trademark Trial and Appeal Board. As a follow up to that conversation, this letter is to confirm the order of the Board.
Applicant filed on November 6, 1991 a motion to allow applicant's attorney to attend via telephone the trial deposition of opposer's witness Cynthia Lake (scheduled for November 12, 1991 in Los Angeles, California).
Applicant contended that the expense for applicant's counsel located in Naples, Florida to travel to Los Angeles, California and conduct cross-examination in person is prohibitive; that applicant's counsel is a sole practitioner whose previously scheduled matters would be seriously disrupted if he were required to go to California; that pursuant to Fed.R.Civ.P. 30(b)(7) the courts have become more liberal in permitting parties to appear at depositions by telephone; and that although applicant will be at a procedural disadvantage by not being physically present at the deposition, applicant's will "accept such disadvantage."
Opposer argued that Trademark Rule 2.123 covers trial testimony in Board proceedings and therefore Fed.R.Civ.P. 30(b)(7) does not apply; that Trademark Rule 2.123 does not provide for attendance at a trial deposition by telephone; that even if Fed.R.Civ.P. 30(b)(7) were applicable it refers only to the party taking the deposition; that federal courts are allowing non-dispositive matters such as scheduling conferences to be attended by telephone but not trial matters; and that there could be a garbled record if there are telephone problems.
While it is true that Trademark Rule 2.123 applies to trial testimony at Board proceedings and it does not specifically provide for depositions via telephone, it is also true that Rule 2.123 does not in any way prohibit depositions via telephone. In applying and interpreting our rules the Board must look to federal court practice, and currently federal practice favors the use of technological benefits in order to promote flexibility, simplification of procedure and reduction of cost to parties. See Julia M. Bywaters v. Lloyd K. Bywaters, 123 FRD 175 (EDPA 1988). As the courts have pointed out, when Fed.R.Civ.P. 30(b)(7) was amended in 1980 to permit the taking of telephone depositions, the purpose was to encourage courts to be more amenable to employing non-traditional methods for conducting depositions. Nothing in the language of Rule 30 requires a showing of necessity, financial inability or other hardship to obtain an order to proceed via telephone, and leave to take telephonic depositions should be liberally granted in appropriate cases. See Jahr v. IU International Corp., 4 FR Serv3d 943 (MDNC 1986).
*2 In Board proceedings trial depositions are taken in the same manner as discovery depositions, whereas in federal court, discovery depositions are taken as depositions, but the trial takes place in open court before the judge (and jury if applicable). This is a significant difference between court and Board proceedings. See La Maur, Inc. v. The Bagwells Enterprises, Inc., 193 USPQ 234 (Comm.1976).
Opposer pointed to no harm or prejudice which would result other than possible inconvenience and possible technical problems. These are not sufficient reasons to deny provision for telephone depositions.
As indicated during the conference telephone call, applicant's motion is granted and applicant will be allowed to attend opposer's deposition of Cynthia Lake via a speaker telephone system.
Applicant's attorney noted, during the conference call, that he had just received notice of a second deposition of another witness scheduled in Palo Alto, California for November 14, 1991. Applicant requested that this order also cover the second deposition in Palo Alto. The Board ruled that with regard to all depositions scheduled by opposer which are not to be located at or near Naples, Florida, i.e., the city in which the offices of applicant's attorney are located, applicant may attend via telephone provided that a speaker phone system is available.
Opposer requested that applicant pay for the cost of the telephone calls via which applicant will attend the opposer's scheduled depositions. Applicant quite properly agreed.
Trial dates remain as set in the Board order dated August 19, 1991. [FN1]
FN1 Finally, during the conference call, the Board noted that opposer had filed on September 20, 1991 a request for clarification of parts of the August 19, 1991 Board order denying opposer's motion for summary judgment. The parties were advised that opposer's request will be acted on in due course.