Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 M-TEK, INCORPORATED
CVP SYSTEMS, INC.
Cancellation No. 17,044
August 9, 1990
By the Board:
J.D. Sams, J.E. Rice and T.J. Quinn
This case now comes up on respondent's motion to strike: (1) the deposition of Alan Hebegger; (2) certain documents attached to a notice of reliance filed by petitioner on April 24, 1989; (3) the documentary exhibits numbers 2, 3, 4, and 6 attached to the deposition of Richard Maskell.
As a preliminary matter, the Board notes that petitioner moves to strike a reply filed by respondent seventy-eight days after petitioner's brief in opposition to the motion to strike was filed, as untimely. Petitioner's motion is well taken. The Board will not accept a reply brief filed seventy-eight days after the initial brief in opposition to a motion has been filed. Accordingly, the facts set forth in respondent's reply brief have been given no consideration in our disposition of this motion. [FN1]
We turn first to the motion to strike as it respects the deposition of Alan Hebegger. A brief review of the relevant procedural history is believed to be in order.
During petitioner's initial testimony period, petitioner sought to take the testimonial depositions, by written questions, of five persons. These were Messrs. Guerrieri, Herrel, Martin, Frank and Bruno. Respondent timely filed a motion for an order under Trademark Rule 2.123(a)(1) that the depositions be taken orally. The Board, on June 20, 1989 granted respondent's motion for an order under Trademark Rule 2.123(a)(1) and consequently reopened petitioner's testimony period for the limited purpose of taking the depositions of the third-party witnesses whose depositions had previously been noticed upon written questions. Plaintiff's testimony period was rescheduled to close on August 16, 1989.
During its reopened testimony period, petitioner took the testimonial deposition, by oral examination, of two of the five persons whose depositions previously had been noticed for written examination. However, in violation of the Board's order, petitioner also took the deposition of an Alan Hebegger, whose deposition had not previously been noticed.
Respondent, in its motion to strike, argues that the deposition of Alan Hebegger is untimely, inasmuch as he is not one of the named persons for whose deposition the Board had reopened petitioner's testimony period. Petitioner, in response thereto, argues, inter alia, that petitioner waived its right to object to the deposition on the ground of timeliness inasmuch as respondent "attended the deposition, cross-examined the witness, but did not object ... or take the deposition under protest." In support of its argument, petitioner relies on Trademark Rule 2.123(e)(3), which provides as follows:
Every adverse party shall have full opportunity to cross-examine each witness. If the notice of examination of witnesses which is served pursuant to paragraph (c) of this section is improper or inadequate with respect to any witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed the adverse party, if he wishes to preserve the objection, shall move the strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances. A motion to strike the testimony of a witness for lack proper or adequate notice of examination must request the exclusion of the entire testimony of that witness and not only a part of that testimony.
*2 Petitioner also relies on general arguments of fairness, inasmuch as petitioner points out that it is extremely difficult to obtain the testimony of third-party witnesses orally rather than by written questions and that therefore the deposition of this third party witness should be accepted.
Therefore, the initial issue that is raised by this motion is whether, where the Board reopens a party's testimony period for a limited purpose but the party nevertheless notices a deposition of a person not named in the Board's order, and the adverse party fails to formally protest on the record of the deposition to its timeliness, should that party be deemed to have waived its right to object to the deposition on the basis of timeliness.
We think this question must be answered in the negative. Trademark Rule 2.123(e)(3) governs motions to strike testimony for lack of proper or adequate notice of examination of witnesses. Respondent's motion to strike, however, is based not on insufficient notice but rather on the ground that the deposition in question was taken untimely. This motion is governed by Trademark Rule 2.121(a)(1), which provides as follows:
No testimony shall be taken except during the times assigned, unless by stipulation of the parties approved by the Board, or, upon motion, by order of the Board.
This rule provides, in essence, that no testimony shall be taken outside of a party's trial period except by stipulation of the parties or by order, previously sought, of the Board. In this case, whatever did transpire between the parties prior to the taking of the deposition, it is clear that respondent did not stipulate to the deposition of Alan Hebegger. Nor did petitioner seek prior leave of the Board. Therefore, the deposition was untimely and shall not be considered by the Board. Nor has petitioner set forth any circumstances constituting excusable neglect for its failure to seek further leave of Board at the proper time. Accordingly, the deposition of Alan Hebegger is stricken and shall be given no consideration.
This brings us now to that portion of the motion to strike that respects the documents proffered by petitioner for introduction into evidence by notice of reliance filed April 24, 1989. These documents include an unidentified type of advertisement from a third party (# 0001), an excerpt of the advertisements of a third party which purport to have appeared in "Packaging" magazine, dated July 1987 (# 0002), respondent's advertising brochures (# 0003-00016) and other unidentified types of advertisements filed by respondent (# 00026-00028, 00037- 00040, 00122) and copies of a cease and desist letter sent by respondent to third parties and their responses thereto (# 00124-00125, 00146, 00130-00131, 00143, 00132-00133, 00144, 00136-138). According to the notice of reliance, these documents were produced by respondent in response to petitioner's request for production of documents.
Respondent, in support of its motion to strike, argues that the documents in question are inadmissible under the Trademark Rules of Practice on two separate and independent grounds. First, respondent argues that the documents in question do not comprise "printed publications" within the meaning of Trademark Rule 2.122(e). Second, respondent argues that the documents have not been properly identified inasmuch as they do not specify the printed publication from which the excerpts are taken, and do not indicate generally the relevance of the material being offered rule. Respondent also argues that the documents in question are inadmissible under the Federal Rules of Evidence inasmuch as they have not been properly authenticated under Fed.R.Evid. 901, 902 and that the documents are hearsay under Federal Rule of Evidence 801, 802.
*3 As correctly pointed out by petitioner, it is not the practice of the Board to rule on objections pertaining to the admissibility of documents under the Federal Rules of Evidence prior to final briefing. Accordingly, the question of whether these documents are admissible under Federal Rules of Evidence 901, and 902 and whether these documents are improper hearsay is deferred until final briefing.
We turn then to a question that should be capable of being resolved simply by reviewing the face of the notice of reliance, that is, whether the documents attached thereto may be introduced by way of notice of reliance.
In this respect, petitioner argues that the documents attached to the notice of reliance were actually produced by respondent in response to petitioner's interrogatories and that therefore the documents were admissible under Trademark Rule 2.120(j).
In this respect petitioner's arguments are well taken. That is to say, while it has been held, and Rule 2.120(j)(3)(ii) now provides, that a party may not introduce into evidence by notice of reliance alone documents produced in response to a request for production of documents and things, except those falling under the purview of Trademark Rule 37 CFR 2.122(e) (1985), the Board has also held that documents are admissible pursuant to Trademark Rule 37 CFR 2.120(j)(3)(i), if they are produced for inspection by a party in accordance with Fed.R.Civ.P. 33(c) in lieu of answering interrogatories. See, Miles Laboratories, Inc. v. Naturally Vitamin Supplements, Inc., 1 USPQ2d 1445 (TTAB 1986).
However, there is a caveat to this practice. That is, the party seeking to take advantage of this practice must specify in the notice of reliance that the documents are being introduced pursuant to Trademark Rule 2.120(j)(3)(i), must specify and make of record a copy of the particular interrogatory or interrogatories to which each document was provided in lieu of an interrgatory answer, indicate generally the relevance of the material being offered, and must identify, with some degree of specificity, the nature of each of these documents. Cf. Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949, 950 (TTAB 1981). It is not sufficient to state in the notice of reliance, as petitioner has done here, that the documents being introduced were produced in response to petitioner's request for production and then, as what appears to be a convenient afterthought, to argue that the documents are being introduced pursuant to Trademark Rule 2.120(j)(3)(i).
Nevertheless, and while we cannot condone petitioner's failure to comply with the rule, it does appear from the material submitted that certain of the documents may have been produced in response to petitioner's interrogatories. Accordingly, we will allow petitioner an opportunity to correct the deficiencies in its notice of reliance. See, Heaton Enterprises of Nevada, Inc. v. Lang, 7 USPQ2d 1842, 1844 n. 6 (TTAB 1988). Provided that the documents in question were in fact, produced in answer to interrogatories, rather than in response to a request for production of documents, petitioner is allowed twenty days from the mailing date of this order to correct the deficiencies in its notice of reliance as set forth above. Any further arguments as to the admissibility of these documents under Trademark Rule 2.120(j)(3)(i) may be submitted by the parties in their final briefs on the case. Moreover, since the question as to whether these documents are admissible under the Federal Rules of Evidence will not be determined until final hearing, ruling on the question of whether these documents are admissible in the first instance, under Trademark Rule 2.120(j)(3)(i), also is deferred until final hearing. [FN2]
*4 This brings us now to respondent's motion to strike documentary exhibits numbered 2, 3, 4, and 6 to the deposition of Richard Maskell. Respondent brings this motion on the ground that such exhibits were not authenticated properly under the Federal Rules of Evidence and, with respect to Exhibit No. 4, argues that such exhibit constitutes improper hearsay. Because it is not the practice of the Board to rule on objections of this type prior to final hearing, a ruling on the admissibility of these exhibits under the Federal Rules of Evidence is deferred until that time.
In conclusion, respondent's motion to strike is granted to the extent that the deposition of Alan Hebegger is stricken and shall be given no consideration. With respect to the motion to strike as it pertains to the documents attached to the notice of reliance filed by petitioner on April 24, 1989, petitioner is allowed twenty days from the mailing date of this order to correct the deficiencies in its notice of reliance, if appropriate. A ruling on the issue of whether those documents are admissible under the Federal Rules of Evidence is deferred until final hearing. A determination of whether the documents introduced as exhibits to the deposition of Richard Maskell are admissible under the Federal Rules of Evidence also is deferred until final hearing.
J. D. Sams
J. E. Rice
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. In any event, the arguments set forth in respondent's reply brief are dependent to a large extent on an affidavit of respondent's counsel that was allegedly attached thereto. The reply brief originally filed with the Board did not contain a copy of this affidavit. Accordingly, the Board telephoned respondent's attorney and asked her to re-file the reply brief, together with a copy of the affidavit, with the Board and to re-serve that copy on petitioner's counsel. This respondent's counsel did. However, the copy of the affidavit that was filed with the Board was unsigned. Accordingly, even if the reply brief were to be considered on this motion, the allegations set forth therein respecting the events preceding the deposition would be given little consideration.
FN2. It appears that one of petitioner's documents may be independently admissible under Trademark Rule 2.122(e). Nevertheless, inasmuch as petitioner does not argue, even in its brief in opposition to the motion to strike, that such document falls within the limits of the rule, this question will be deferred also until final hearing.
In accordance with the Trademark Rules of Practice, trial dates are set as indicated below. IN EACH INSTANCE, a copy of the transcript of testimony together with copies of documentary exhibits, must be served on the adverse party WITHIN THIRTY DAYS after completion of the taking of testimony. Rule 2.125.
THE PERIOD FOR DISCOVERY TO CLOSE: Closed
Testimony period for party in position of plaintiff to close Closed
(opening thirty days prior thereto)
Testimony period for party in position of defendant to close October 9,
(opening thirty days prior thereto) 1990
Rebuttal testimony period to close (opening fifteen days prior November
thereto) 23, 1990
*5 Briefs shall be filed in accordance with Rule 2.128(a) and (b).
An oral hearing will be set only upon request filed as provided by Rule 2.129.