Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 JEAN PATOU, INC.
v.
THEON, INC.
Opposition No. 80,345
December 14, 1990
Before Rice, Rooney and Simms
Members
By the Board:
J.E. Rice, T.E. Rooney and R.L. Simms
Members, Trademark Trial and Appeal Board
This case now comes up on the following motions:
(1) Applicant's motion, filed March 7, 1990, to strike the testimonial deposition of James R. De Lalla
(2) Opposer's motion, in essence, filed March 2, 1990 for an extension of its testimony period so as to reschedule the deposition of opposer's witness
(3) Applicant's motion, filed March 16, 1990, to strike opposer's "'introduction of Registration No. 529,337 from the record"D'.
We turn first to applicant's motion, filed pursuant to Trademark Rule 2.123(e)(3), to strike the testimonial deposition of James R. De Lalla, taken on March 2, 1990, on the basis that the notice of such deposition, served February 28, 1990 and changed March 1, 1990, was unreasonable, and to opposer's cross-motion for an extension of its period to take that deposition. A brief review of the relevant history is believed in order.
On January 1, 1990, opposer's attorney joined a new firm. On January 22, 1990, the Board approved an order extending opposer's testimony period two months in order to accommodate the logistical problems associated with opposer's attorney's move. By that order, opposer's testimony period was extended to close on March 2, 1990.
On the last day of February, that is, February 28, 1990, opposer's attorney sent, by Federal Express, a notice of deposition to applicant's attorney. Applicant's attorney, who is located in Fairfield, Connecticut, received the notice of deposition at 10:30 a.m. the following business day, that is, March 1, 1990. The notice of deposition stated that opposer's attorney would take the testimonial deposition of James R. De Lalla, who is an officer of opposer, at 10:00 a.m. on March 2, 1990 in New York City. At 11:00 a.m. opposer's attorney sent, by telephone facsimile, another notice changing the time, but not the date, of the De Lalla deposition to 9:00 a.m., together with a cover letter which offered the logistical problems associated with opposer's attorney's move two months prior thereto as the reason for the "short notice"D' and which offered to reschedule the testimonial deposition. The cover letter read as follows:
We realize that this may be short notice for you. However, as you are aware, I recently joined this firm and am in the process of organizing files that were transferred here, securing a new staff, and entering all cases on the internal computer docket and records of this office. As I am sure you can appreciate, this can often take longer than expected.
Therefore, if you plan to cross-examine our witness and March 2 is inconvenient for you, please let me know by tomorrow so that an appropriate application can be timely made to the Board to extend the testimonial term for the convenience of all concerned. We will be willing to accommodate your schedule and change the deposition date.
*2 At 3:00 p.m., on March 1, 1990, opposer's attorney contacted applicant's attorney and repeated his offer to applicant's attorney to take the deposition on another day. According to applicant's attorney, opposer's attorney stated that it would be more convenient for the witness also to have the deposition taken on another day. Applicant's attorney also alleges that he responded that he was awaiting instructions from his client and would "try"D' [FN1] to get back to opposer by 5:00 p.m. that day. On March 2, 1990, at 8:30 a.m., applicant's attorney served, by telephone facsimile, and filed, a notice of objection to the notice of deposition as unreasonable. Opposer nevertheless proceeded with the deposition.
On that same day, that is March 2, 1990, opposer also filed by certificate of express mailing, a "reply to applicant's notice of objection"D' which argues that applicant's notice of objection was incorrect, that the notice was not unreasonable, and that even if the notice was unreasonable, the Board should treat opposer's reply "as a timely application to reschedule the deposition of opposer's witness in order to afford applicant every opportunity to cross-examine."D' In support of this request, opposer relies on the "unusual"D' circumstances set forth in opposer's cover letter, which accompanied opposer's notice of deposition set forth above. [FN2]
Applicant's motion to strike opposer's testimonial deposition and opposer's responses thereto followed these submissions.
We construe opposer's reply to the notice of objection as a request for an extension of opposer's testimony period for the limited purpose of rescheduling the examination of opposer's witness.
There are two issues with respect to these motions. First, whether the notice of the deposition was "reasonable"D'. Second, if the notice was not reasonable, whether good cause has been shown for an extension of opposer's testimony period for the limited purpose of permitting applicant to cross-examine opposer's witness or for an examination of the witness de novo.
The answer to the first of these questions is a resounding negative. While opposer has cited contrary precedent, [FN3] we agree with applicant that twenty-four hours is not sufficient time to have expected applicant's attorney to rearrange his schedule and prepare for a deposition, even under the circumstances of this case. In this regard, we reject opposer's proposition that applicant's attorney had reasonable notice because he should have been able to prepare for the deposition on the train en route to the deposition. Given the more than adequate thirty-day period allowed for trial for each party in inter partes proceedings before the Board, there must be a compelling need to require adverse counsel to prepare with such haste. Opposer's attorney's failure to schedule the testimonial deposition of his client until less than two days prior to the close of his client's testimony period because of his attention to the logistical problems associated with his own move falls far short of the type of showing that would be needed to justify such haste.
*3 This brings us now to opposer's request for an extension of opposer's testimony period for the limited purpose of offering applicant an opportunity to cross-examine the witness or to reschedule the De Lalla deposition in its entirety. In this regard, the Board notes that inasmuch as applicant's copy of opposer's motion apparently did not contain a copy of opposer's certificate of express mailing, applicant was not apprised that opposer's request for an extension was timely filed and therefore opposed the motion on the grounds only that excusable neglect had not been shown for a reopening of opposer's testimony period to retake the De Lalla deposition in its entirety. Applicant also objected to a rescheduling of the cross-examination portion of the De Lalla deposition as a remedy for the unreasonable notice on the grounds, in essence, that such a remedy would deprive applicant of the right to have confronted the witness on direct examination and to have had the opportunity to object to leading questions, etc.,
Inasmuch as applicant did not have reasonable notice of the taking of the deposition, ordinarily the Board would hold that no part of that deposition could be introduced in evidence, without applicant's consent. However, in this case, opposer filed a motion for an extension of its testimony period prior to the close of that period and we believe that good cause existed for an extension of opposer's testimony period. Opposer has not abused the privilege of requesting an extension, and prior to this incident, this case proceeded expeditiously.
In view thereof, we believe the more equitable course in this situation is to permit the introduction of the deposition into evidence provided that opposer, during its extended testimony period, recalls the witness, at opposer's expense, for the purpose of cross-examination and redirect. In the event that applicant believes that any questions put to the witness during direct examination were objectionable, applicant may assert those objections on the record at the commencement of the deposition. [FN4]
As a final point, the result we reach here is consistent with analogous federal practice and in this regard, Fed.R.Civ.P. 32(a) provides as follows: "'At the trial or upon the hearing of a motion or an interlocutory proceeding, any part or all or a deposition...may be used against any party who was present or represented at the taking of a deposition or who had reasonable notice thereof."D' (Emphasis added). In this context it has been held that lack of reasonable notice is no bar to the admissibility of a deposition where the objecting party has an opportunity to cure by scheduling cross-examination. Duttle v. Bendler & Kass, 127 F.R.D. 46 (S.D.N.Y.1987) and Shanker v. Helsby, 515 F.Supp. 871, 873 n. 4 (S.D.N.Y.1981).
This brings us now to applicant's motion to strike the "introduction of Registration No. 529,337 from the record."D' A brief review of the relevant history again is in order. Opposer, on the last day of its testimony period, in addition to taking the deposition that led to the prior dispute, filed a notice of reliance on Registration No. 529,337. However, attached to the notice of reliance was a photocopy of a status and title copy that had been prepared by the Patent and Trademark Office on August 23, 1985, that is to say, four years earlier. Moreover, the photocopy is so poor that the registration number and the issuance date of the registration had to be inserted by hand by an unknown individual. After the close of opposer's testimony period, opposer filed a "'supplemental notice of reliance"D' together with a status and title copy of Registration No. 529,337 that had been prepared and issued by the Office on March 7, 1990. Applicant, in support of its motion, argues that the first notice of reliance is defective inasmuch as the copy of the registration submitted therewith was not current and that the second notice is untimely inasmuch as it was filed after the expiration of opposer's testimony period. Opposer argues, in response, that the first copy of Registration No. 529,337 was sufficiently current to satisfy Trademark Rule 2.122(d)(2) and that therefore the Board should not strike such evidence. With respect to the supplemental notice of reliance, filed March 9, 1990, opposer argues that the supplemental notice may be rendered timely by opposer's motion for an extension of March 2, 1990.
*4 Applicant has filed a brief in reply thereto.
Turning first to the notice of reliance filed March 2, 1990, we agree with opposer that the question of whether a photocopy of a pleaded registration has been prepared and issued by the Patent and Trademark Office or has been prepared by the Office sufficiently recently to show current status and title goes to the issue of the competency of the copies of the registration, per se, as evidence of the plaintiff's ownership and prior rights in the mark shown therein, and not to the issue of the admissibility of the copies, per se, under the Trademark Rules of Practice. Thus, while submission of no evidence except a status and title copy of plaintiff's pleaded registration may lead to a motion for judgment under Trademark Rule 2.132(b), [FN5] the Board will not strike such evidence. The photocopy of the registration submitted by opposer in this case will be considered for whatever probative value, if any, it may have.
On the other hand, the notice of reliance, filed March 9, 1990, clearly is untimely. Opposer's motion for an extension requested an extension of opposer's testimony period for the sole purpose of rescheduling the deposition of opposer's witness. The motion did not request a general extension of opposer's testimony period for any and all purposes. In view thereof, and since opposer has set forth no circumstances constituting excusable neglect for its failure to file its supplemental notice of reliance in a timely fashion, that notice, filed March 9, 1990, is considered untimely and will be given no consideration.
In conclusion, applicant's motion to strike and opposer's motion for an extension are granted to the extent that opposer's testimony period will be extended for the limited purpose of permitting opposer an opportunity to recall the witness, at opposer's expense, for cross-examination and redirect only, if it is applicant's continued desire to cross-examine opposer's witness. If applicant decides that it does not wish to cross-examine the witness, the transcript of the testimonial deposition of James R. De Lalla, taken on March 2, 1990, will be accepted as is. If applicant elects to cross-examine, but opposer fails to recall the witness for cross-examination during its extended testimony period, the transcript will be given no consideration. Applicant is allowed twenty days from the mailing date of this order to make its election known to the Board following which, trial dates will be rescheduled appropriately.
Applicant's motion to strike opposer's first notice of reliance and the supplemental notice of reliance is granted in part and is otherwise denied. The notice of reliance filed by opposer on March 2, 1990 will remain as part of the record.
J. D. Sams
L. E. Rooney
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Opposer's attorney alleges that a different conversation took place. According to opposer's attorney, applicant's attorney gave opposer no indication that there was a problem with the deposition and promised opposer that applicant would get back to opposer's attorney by 5:00 p.m. that day if applicant's attorney could not attend the deposition. Opposer argues that it, in reliance on that representation, did not cancel the court reporter scheduled for the next day's deposition.
FN2. Although opposer's "reply"D' articulates no specific circumstances in support of its request for an extension, the circumstances set forth in opposer's cover letter to applicant, which is referred to in opposer's reply to the notice of objection, obviously form the basis for the requested extension.
FN3. In this regard, we cannot help but comment on opposer's reliance on Radio Corporation of America v. Rauland Corporation, 24 Fed.R.Serv. 465, 21 FRD 113 (N.D.Ill.1957), for the proposition that other courts have found one day to be reasonable notice. In that case, counsel for each side were all in Oslo, Norway for the taking of the depositions and it was understood that the party serving the notice was to take its depositions at that time. Even a cursory review of that case would have revealed facts so highly distinguishable from the instant case as to render reliance on that case almost meaningless.
FN4. We presume that applicant has had an opportunity to review the transcript of the deposition taken on March 2, 1990, inasmuch as a copy of that transcript was filed on March 30, 1990. If opposer has not yet sent a copy of the transcript of that deposition to applicant, it must do so within ten days from the mailing date of this order. Trademark Rule 2.125(a).
FN5. See, in this regard, Sea & Ski Corporation v. Averil, Inc., 178 USPQ 379 (TTAB 1979).