In another precedential interlocutory ruling from 2017 that eluded this blogger, the Board refused to allow Applicant Rural Health to submit certain non-party discovery depositions by way of notice of reliance, but because the 2017 amendments to the TTAB Rule changed the time for making a motion to allow use of a non-party discovery deposition, the Board looked kindly on applicant and allowed it time to take oral cross-examination of nine of the thirteen witnesses. Azalea Health Innovations, Inc. v. Rural Health Care, Inc.., 125 USPQ2d 1236 (TTAB 2017) [precedential].

Applicant Rural Health submitted via Notice of Reliance thirteen (13) discovery deposition transcripts of witnesses who were employees of Opposer Azalea, but who were not officers, directors, or managing agents of Opposer. Applicant contended that the depositions were being used for impeachment purposes. Opposer moved to strike, arguing that the Rules do not permit the introduction of non-party discovery depositions via notice of reliance, and that Applicant should have elected oral cross-examination of the nine witnesses for whom Opposer submitted testimony declarations.

The Board divided the discovery depositions into two groups. Four of these depositions concerned individuals for whom Opposer did not submit trial declarations. Therefore there was no trial testimony to impeach. The Board granted Opposer’s motion to strike these transcripts from the record.

The second group included nine discovery depositions of individuals whose testimony declarations were submitted by Opposer Azalea. Applicant Rural Health did not avail itself of the opportunity to cross-examine these witnesses. Instead it submitted the discovery deposition transcripts of these individuals during its testimony period.

The Board observed that under FRCP 32, FRE 613, and Trademark Rule 2.120(k)(6), a discovery deposition may be used during the examination or cross-examination of a party or a non-party witnesses. In addition, Rule 2.120(k)(1) permits the use, for all purposes, of a discovery deposition of a party in Board proceedings. For a non-party, however, the discovery deposition may be introduced only pursuant to a stipulation between the parties or by order of the Board upon motion. Here there was no stipulation and no Board order.

Having failed to cross-examine Opposer’s witnesses, Applicant Rural Health had two options: (1) file a motion at the time of its pre-trial disclosures seeking Board approval of its use of the discovery depositions, or (2) file a motion claiming exceptional circumstances. See Rule 2.120(k)(2). Applicant did neither.

The Board therefore granted the motion to strike these nine discovery depositions.

However, the Board noted that Rule 2.120(k)(2) was amended on January 24, 2017, “to change the time for a motion to use a discovery deposition to when the offering party makes its pretrial disclosures and to clarify that the exceptional circumstance standard applies when this deadline has passed.” [Emphasis added]. Prior to the Rule change, the motion could be made at the time of the offer of the deposition into evidence (i.e., during the testimony period).

The Board, noting its April 2016 statement regarding flexible application of the revised rules in cases pending as of the effective date of the rules, decided to construe Applicant’s response to the motion to strike as a motion to re-open the period for electing and taking cross-examination of these nine witnesses. The Board then reset the period for cross-examining these witnesses.