• United States Patent and Trademark Office Rules on Deposing Non-U.S. Resident Executives in Trademark Proceedings
  • April 12, 2010 | Authors: David A. Bell; Lisa Garono; Jennifer M. Lantz; Purvi J. Patel
  • Law Firms: Haynes and Boone, LLP - Dallas Office ; Haynes and Boone, LLP - San Jose Office ; Haynes and Boone, LLP - Dallas Office
  • A recent ruling should provide some comfort for non-U.S. companies involved in U.S. trademark oppositions or cancellations. The United States Patent and Trademark Office (USPTO) has clarified that companies with no U.S. operations cannot easily be forced to travel to the U.S. for oral depositions.

    In 2007, an appeals court ruled that a foreign corporation party to a proceeding before the Trademark Trial and Appeal Board (TTAB) of the USPTO can be subjected to oral deposition in the U.S. whenever a subpoena is properly issued by a court having jurisdiction over the party. Merely because a Portuguese corporation prosecuted a U.S. trademark application through U.S. counsel, the court compelled it to attend oral deposition in the U.S. This seemed to fly in the face of guidance issued by the TTAB itself.

    Just last week, in a still-pending cancellation proceeding in which Haynes and Boone is involved, the adverse party served a Notice of Deposition against our client, a corporation with a principal office in Canada. The petitioner demanded to orally depose our client's corporate representative in the U.S. Our firm persuaded the TTAB that the 2007 decision is not binding on the TTAB, and that it would unfairly penalize companies with no real U.S. operations or presence. The TTAB agreed to grant our motion to quash the deposition.

    What does this mean for your clients? They should not be dissuaded from filing U.S. trademark applications—nor filing or defending U.S. trademark oppositions or cancellations—due to an expectation that they will necessarily be physically dragged to U.S. soil.

    We should note, however, that the recent TTAB decision could be subject to further review. Moreover, there are other means by which to compel oral depositions from foreign parties in such proceedings, including through proper subpoena; these steps simply require additional effort and fees and thus are somewhat less likely to be pursued.