Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA261795
`ESTTA Tracking number:
`01/21/2009
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91179290
`Defendant
`Patchell Holdings Inc.
`Jennifer L. Elgin
`Wiley Rein LLP
`1776 K Street, NW
`Washington, DC 20006
`UNITED STATES
`Opposition/Response to Motion
`Jennifer L. Elgin
`jelgin@wileyrein.com
`/Jennifer L. Elgin/
`01/21/2009
`OPPOSITION TO MOTION MCFIT.pdf ( 9 pages )(327264 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`McDonald’s Corporation,
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`Opposer,
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`v.
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`Patchell Holdings Inc.,
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`Applicant.
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`Opposition Nos. 91179290 (MCFIT)
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`91179352 (MCGYM)
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`(as consolidated)
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`OPPOSITION TO MOTION TO TAKE ORAL DEPOSITION OF APPLICANT
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`I.
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`INTRODUCTION
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`The Board has established a favored procedure for the taking of written discovery
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`depositions of foreign parties, which is only to be disturbed upon a showing of “good
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`cause” by the putative deposer. 37 C.F.R. 2.120(c) (1). Nonetheless, Opposer
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`audaciously contends that good cause exists to order the oral deposition of a foreign
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`applicant that has no United States employees, locations, or ongoing business activities
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`because: (1) the Board’s time-honored and well-thought out procedure is deficient; and
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`(2) the Opposer really, really wants it. At base, however, Opposer has failed to present
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`sufficient reasons to upset the Board’s clear presumption in favor of written depositions
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`of foreign witnesses in foreign countries over oral depositions abroad. Opposer’s
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`argument to create an ersatz “Canada exception” to the Board’s regulations also has no
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`merit.
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`II.
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`ARGUMENT
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`A.
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`The Issue of Bona Fide Intent to Use the Marks is Irrelevant Because
`Opposer Has Not Plead Fraud.
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`Aside from predictable rhetoric,1 Opposer premises its motion on one primary
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`position: it wishes to ask Applicant about its bona fide intention to use its marks in the
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`United States, and argues vaguely that such questions somehow are better suited to oral
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`testimony. Opposer fails to mention, however, that the issue of bona fide intention to use
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`the marks has not been raised by Opposer in its Notices of Opposition, such as a claim for
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`fraud. Accordingly, the issue of bona fide intent has no relevance to the issues of
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`likelihood of confusion and dilution actually plead by Opposer, cannot be the basis for
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`sustaining Opposer’s Oppositions and is not a proper subject for discovery. As stated by
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`the Board numerous times, discovery is not an opportunity to conduct fishing expeditions
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`into its opponent’s business in the hope of uncovering some helpful evidence, or perhaps
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`causing undue expense. Cashflow Technologies v. NetDecide, 2002 WL 192410
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`(Trademark Tr. & App. Bd. 2002) (“A party cannot engage in a ‘fishing expedition’ in
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`hopes of gathering some evidence to help its case”).
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`Issues as to use of the marks, albeit not asserted here by Opposer as a basis for its
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`motion, also are not of moment here and do not support the “good cause” standard.
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`Applicant’s applications are intent-to-use, and as of present there has been no use of the
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`marks in the United States. There has been no actual confusion in the United States;
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`United States consumers have not seen Applicant’s marks. Opposer can present no
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`1 Opposer boldly suggests that Applicant is attempting to hide behind “purely scripted” answers. There is
`no support for any argument that Applicant is seeking to evade its discovery obligations in any way.
`Applicant, which was hailed into this forum unwillingly, merely claims the rights afforded to all foreign
`parties by the Board. There simply is no benefit to Applicant to agree voluntarily to an oral deposition.
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`rationale as to why it would need to confront Applicant’s representatives in person as
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`issues of intended use or likely confusion.
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`B.
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`Good Cause Does Not Exist to Take Oral Testimony of Applicant on
`the Issue of Bona Fide Intent To Use the Marks.
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`Even assuming, arguendo, that the issue of bona fide intent to use is a proper
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`subject of discovery in this case, the Board’s regulations establish a clear presumption in
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`favor of depositions on written questions for foreign parties. As stated in 37 C.F.R.
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`2.120(c) (1):
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`The discovery deposition of a natural person residing in a foreign country
`who is a party or who, at the time set for the taking of the deposition, is an
`officer, director, or managing agent of a party, or a person designated
`under Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure,
`shall, if taken in a foreign country, be taken in the manner prescribed by
`§2.124 unless the Trademark Trial and Appeal Board, upon motion for
`good cause, orders or the parties stipulate, that the deposition be taken by
`oral examination.
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`Unless Opposer establishes good cause, therefore, the Board’s regulations specify a
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`preference in favor of the well-thought out scheme for written depositions established for
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`this purpose. The Board certainly has not determined that its own regulations are unfair.
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`The Board determines what constitutes good cause to take an oral deposition of a
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`foreign party “on a case-by-case basis, upon consideration of the particular facts and
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`circumstances in each situation.” Orion Group Inc. v. The Orion Ins. Co., P.L.C., 12
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`USPQ2d 1923, *7 (TTAB 1989). The Board weighs the equities, including the
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`advantages of an oral deposition and financial hardships of a foreign deposition.
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`Except for the predictable argument (likely made in every case) that oral cross-
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`examination is superior to written questions, Opposer fails to explain why this case is
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`better suited to oral testimony. But there has been no showing that this case or issue is
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`different from any other case involving a foreign applicant or issue. The Board has
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`established elaborate provisions that allow litigants to take the discovery of foreign
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`adverse parties or other witnesses through mechanisms other than in-person deposition
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`testimony. This system which would make little sense if arguing – as is likely true in
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`every case – that oral deposition testimony is superior would be sufficient to establish
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`good cause.
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`In this case, there is little advantage of an oral deposition (or, indeed, any
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`deposition) on the issue of bona fide intention to use the marks. In fact, Applicant’s
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`testimony regarding its bona fide intention to use the marks is not likely to be very
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`helpful to the Board, because bona fide intention to use typically must be shown through
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`objective evidence such as documents. The applicant’s subjective state of mind is not the
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`deciding factor. As stated by McCarthy:
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`These legislative history excerpts reveal that Congress intended the test of
`“bona fide” to be evidenced by “objective” evidence of “circumstances”
`showing “good faith.” The evidence is “objective” in the sense that it is
`evidence in the form of real life facts and by the actions of the applicant,
`not by the applicant's testimony as to its subjective state of mind. That is,
`Congress did not intend the issue to be resolved simply by an officer of the
`applicant later testifying, “Yes, indeed, at the time we filed that
`application, I did truly intend to use the mark at some time in the future.”
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`Thomas McCarthy, McCarthy on Trademarks §19:14 (citing Lane Ltd. v. Jackson Int'l
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`Trading Co., 33 U.S.P.Q.2d 1351 (T.T.A.B. 1994) (“[A]pplicant's mere statement of
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`subjective intention, without more, would be insufficient to establish applicant's bona fide
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`intention to use the mark in commerce.”).
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`For example, in Lane, the Board held that a foreign company proved that it had a
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`bona fide intention to use a mark in the United States by evidence that it offered to
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`license a U.S. company to use the mark on goods listed in the application, even though
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`the offer was not accepted. Id. (“Applicant's evidence pertaining to the formulation and
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`implementation of its business plan and licensing program constitutes credible, objective
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`corroboration of its statement in the application that it had a bona fide intention to use the
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`mark in commerce on tobacco.”).
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`The caselaw cited by Opposer is easily distinguishable. In fact, the only case
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`cited by Opposer in which the Board granted a motion for oral depositions is Orion
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`Group Inc. v. The Orion Ins. Co., P.L.C., 12 USPQ2d 1923 (TTAB 1989). In Orion,
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`however, the Board was faced with a motion for summary judgment by the applicant in
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`which the only evidence submitted in support of the motion was an affidavit of the
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`applicant’s corporate secretary in London regarding use of the mark. The opposer sought
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`discovery pursuant to Rule 56(f) because it claimed that, without a deposition of the
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`affiant – who had the sole knowledge of the facts – it could not mount an effective
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`defense to the motion.
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`The Board found that an oral deposition was justified in this rare circumstance
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`where the applicant was requesting judgment in its favor without a trial and without
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`allowing the opposer the opportunity to cross-examine the one person which knowledge
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`of the salient facts. This holding clearly is not applicable here, where Opposer’s only
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`stated rationale is that an oral discovery deposition of a corporation pursuant to Rule
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`30(b)(6) is more effective to delve into an issue: (1) that has not even been raised in the
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`pleadings; and (2) for which the credibility of witnesses is not given much weight by the
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`Board.
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`C.
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`There is No “Canada Exception” to the Board’s Regulations.
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`Finally, Opposer seeks to establish a “Canada exception” to the Board’s
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`regulations. Opposer offers to travel to London, Ontario, Canada (located about 2 hours
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`west of Toronto) to take the deposition, claims that no translator is needed (presumably
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`because Opposer assumes that Applicant’s Canadian employees speak fluent English),
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`and claim – without support – that “numerous” court reporters throughout the province of
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`Ontario (which covers over a million square kilometers) are familiar with the Federal
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`Rules of Civil Procedure to ably cover the deposition proceedings.
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`However, although many Americans naively consider Canada to be just “U.S.
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`North”, traveling to Canada in our current security and economic climate is just as
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`burdensome in time and expense as traveling to any other country outside of the United
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`States: Security requirements are strict; immigration procedures are cumbersome and
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`time consuming; passports are required; currency must be exchanged. Simply stated,
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`unlike when Ms. Rice penned her article in 1984, see Motion at 6, traveling outside this
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`country – and being able to return – is no longer something to be taken for granted.
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`Traveling to London, Ontario is not as easy as Applicant’s counsel makes out.
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`Indeed, it is far more burdensome and time consuming (and thus expensive to Applicant,
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`which pays its counsel on an hourly basis) to travel to London, Ontario than to Buffalo,
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`New York. Applicant’s counsel, who is located in Washington, D.C., either could fly to
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`Toronto and rent a car to drive approximately 2 hours to London, or change planes once
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`or twice to fly into the local London airport. There are no non-stop flights from
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`Washington, D.C. to London, Ontario.2
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`2 Opposer also offered to travel to Applicant’s counsel’s place of business in the United States for the
`deposition. This would be very burdensome on Applicant’s employees who would appear on behalf of the
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`Opposer cites Belmont Textile Mach. Co. v. Superba, S.A., 48 F. Supp. 2d 521,
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`523 (W.D.N.C. 1999), a patent infringement case in which a district court disregarded the
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`procedures of the Hague Convention and ordered additional depositions in France of
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`witnesses who had been identified by French witnesses previously deposed and in
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`documents as key decision-makers. The court found that “patent litigation is heavily
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`predicated on extensive discovery, and it is clear from the exhibits . . . that [these
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`witnesses] are sources of relevant information.” There has been no concomitant showing
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`made by Opposer here, which seeks an oral Rule 30(b)(6) deposition of Applicant for
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`general discovery purposes in the face of a well-established Board procedure for
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`obtaining the same evidence.
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`Moreover, there is no Board precedent – or, indeed, logical grounds – to establish
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`a blanket exception to the Board’s general rule for foreign countries or territories (such as
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`most provinces in Canada) in which its inhabitants speak English: (1) as their primary
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`language (for example, Anguilla, Antigua and Barbuda, Australia, the Bahamas,
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`Barbados, Bermuda, Belize, the British Indian Ocean Territory, the British Virgin
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`Islands, Canada, the Cayman Islands, the Falkland Islands, Gibraltar, Grenada, Guam,
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`Guernsey, Guyana, Ireland, Isle of Man, Jamaica, Jersey, Montserrat, Nauru, New
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`Zealand, Pitcairn Islands, Saint Helena, Saint Kitts and Nevis, Saint Vincent and the
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`Grenadines, Singapore, South Georgia and the South Sandwich Islands, Trinidad and
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`corporation, and perhaps why “the Board will not order a natural person residing in a foreign country to
`come to the United States for the taking of his or her discovery deposition.” Jain v. Ramparts, Inc., 49
`U.S.P.Q.2d 1429, 1998 WL 962200 (Trademark Tr. & App. Bd. 1998) (citing TBMP §404.03(c) (1)).
`Opposer makes much of the fact that Applicant has U.S. counsel; however, U.S. counsel was retained only
`for the purpose of defending Applicant in this proceeding; Applicant’s Canadian counsel prosecuted the
`applications at issue.
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`Tobago, the Turks and Caicos Islands and the United Kingdom and the U.S. Virgin
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`Islands); or (2) as an official language (including Botswana, Cameroon, Dominica, Fiji,
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`the Federated States of Micronesia, Ghana, Gambia, India, Kenya, Kiribati, Lesotho,
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`Liberia, Madagascar, Malta, the Marshall Islands, Mauritius, Namibia, Nigeria, Pakistan,
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`Palau, Papua New Guinea, the Philippines, Puerto Rico, Rwanda, the Solomon Islands,
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`Saint Lucia, Samoa, Seychelles, Sierra Leone, Sri Lanka, Swaziland, Tanzania, Uganda,
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`Zambia and Zimbabwe). See http://en.wikipedia.org/wiki/English_language. Such an
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`exception obviously would swallow the rule and should not be condoned by the Board.
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`III. CONCLUSION
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`In sum, Opposer has failed to carry its burden to prove that an oral deposition of
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`Applicant meets the standard of “good cause” established by the Board to upset its
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`preference for depositions on written questions for foreign parties. Opposer’s Motion
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`should be denied.
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`Respectfully submitted,
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`PATCHELL HOLDINGS, INC.
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`By: Christopher Kelly
`Jennifer L. Elgin
`Wiley Rein LLP
`1776 K Street, N.W.
`Washington, D.C. 20006
`(202) 719-7000
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`Attorneys for Applicant
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`Dated: January 21, 2009
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`CERTIFICATE OF SERVICE
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`I, Jennifer L. Elgin, hereby certify that on this 21st day of January 2009, I caused
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`a copy of the foregoing OPPOSITION TO MOTION TO TAKE ORAL DEPOSITION
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`OF APPLICANT to be to be mailed via U.S. Mail to the following:
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`John A. Cullis, Esq.
`Neal, Gerber & Eisenberg LLP
`2 North LaSalle Street, Suite 2200
`Chicago, IL 60602
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`12946715.1