Galaxy Metal Gear, Inc.v.Direct Access Technology, Inc.

Trademark Trial and Appeal Board

Aug 24, 2009

No. 91184213 (T.T.A.B. Aug. 24, 2009)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed: August 24, 2009

Opposition No. 91184213

GALAXY METAL GEAR, INC.

v.

DIRECT ACCESS TECHNOLOGY, INC.

Cheryl Butler, Attorney, Trademark Trial and Appeal Board:
In accordance with the Board’s order dated May 15, 2009,
opposer’s first testimony period closed on July 20, 2009. This
case now comes up on opposer’s fully-briefed motion, filed July
14, 2009, to offer into evidence the discovery deposition of Momo
Chen.1
In support of its motion, opposer indicates that Ms. Chen is
a nonparty witness who is a citizen of Taiwan and resides outside
the United States. Opposer further indicates that Ms. Chen

1 Also pending is opposer’s July 20, 2009 request that the Board take
judicial notice of dictionary definitions for the terms “equipment,”
“metal” and “gear.” Opposer’s uncontested motion is accompanied by
definitions of such terms from the online dictionary merriam-
webster.com. Inasmuch as the Board may take judicial notice of
dictionary definitions, including online reference works which exist
in print format or have regular fixed editions, opposer’s request is
granted. See, for example, Boston Red Sox Baseball Club LP v.
Sherman, 88 USPQ2d 1581, 1590 (TTAB 2008) (judicial notice taken of
definition from the Merriam-Webster Online Dictionary). See also
Syngenta Crop Protection, Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117
(TTAB 2009); and University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983). See also Trademark Rule 2.127(a).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91184213
2
voluntarily agreed to make herself available in the United States
for a discovery deposition that took place on November 13, 2008.
Opposer states that it agreed to pay Ms. Chen’s travel expenses
from Taiwan to the United States; that, at the deposition, Ms.
Chen confirmed her citizenship of and residency in Taiwan; and
that Ms. Chen further stated she had no plans to return to the
United States and only agreed to appear for a discovery
deposition, not for a trial deposition. Opposer notes that
applicant’s counsel was present at and participated in the
deposition. In view of these circumstances, opposer argues that
Ms. Chen’s discovery deposition may be offered into evidence in
accordance with Trademark Rule 2.120(j). Opposer’s motion is
accompanied by a declaration from Ms. Chen, dated June 30, 2009,
stating again, in part, that she is a resident of Taiwan with no
current plans to travel to the United States for any purpose.
Opposer’s motion is also accompanied by a notice of reliance
proposing to introduce the discovery deposition and a copy of the
transcript of such deposition.
In response, applicant argues that opposer did not name Ms.
Chen when it served its initial disclosures and did not
supplement the initial disclosures to name her at a later time.2
Applicant contends that minimal notice of Ms. Chen’s discovery
deposition was given, approximately fourteen days, resulting in

2 The record reflects that Ms. Chen is named in opposer’s pretrial
disclosures.

Opposition No. 91184213
3
applicant having no opportunity to conduct discovery regarding
Ms. Chen prior to her deposition. Applicant states that the
circumstances do not cause a problem insofar as the discovery
aspect of the deposition. However, applicant argues that it is
prejudiced by the attempted introduction of the discovery
deposition at trial. Applicant points out that, as reflected in
the deposition, opposer is Ms. Chen’s customer and arranged for
Ms. Chen to travel to the United States, including compensation
of one week’s salary. Applicant notes, too, that the arrangement
appears to have been for a discovery deposition only and not to
give testimony during trial. Thus, applicant contends, opposer
should be deemed to control the witness in view of the business
relationship and, further, Ms. Chen’s apparent unwillingness to
come to the United States for trial should be interpreted as a
deliberate request by opposer for her not to travel to the United
States. Applicant surmises that, because it has discovered
documentary evidence to impeach Ms. Chen, opposer does not wish
to subject Ms. Chen to further cross-examination. Applicant
argues that, while opposer has shown Ms. Chen does not want to
travel to the United States for trial, opposer has not shown that
Ms. Chen refuses to submit to a deposition upon written
questions, an available procedure that would provide an
opportunity for the taking of Ms. Chen’s trial deposition.
Opposition No. 91184213
4
Applicant’s response is supported by the declaration of its
attorney introducing, among other things, a copy of opposer’s
initial disclosures.
In reply, opposer argues that applicant is not prejudiced by
the introduction of the discovery deposition of Ms. Chen because,
as the deposition transcript shows, applicant was well-prepared
to question Ms. Chen. For example, opposer points out that
applicant’s attorney brought an e-mail from Ms. Chen’s former co-
worker, Gary Chen, and asked questions about Mr. Chen, the e-
mail, and the subject matter discussed in the e-mail.3 Opposer
also argues that Ms. Chen is not “an unknown person” but a sales
representative who formerly worked at a company named Datastor
and who has had direct contact in such capacity with applicant’s
principal, Patrick Wang, as well as with Mr. Wang’s wife, both of
whom attended the deposition. Opposer contends that, contrary to
applicant’s assertions, it has little control over Ms. Chen, who
specifically stated at her discovery deposition that she did not
want to return to the United States for trial. Opposer contends
that this was not its idea because it, too, would benefit by
being able to take a trial deposition. Opposer argues further
that it has no power to compel Ms. Chen to appear, or to secure
her attendance, for any trial deposition.
Opposer’s motion poses two related questions for
determination: 1) whether Ms. Chen’s discovery deposition is

3 The record indicates that Gary Chen is not related to Momo Chen.
Opposition No. 91184213
5
admissible at trial in view of opposer’s failure to supplement
its initial disclosures to identify her as a potential witness
and 2) whether Ms. Chen’s discovery deposition is admissible at
trial under Trademark Rule 2.120(j)(2) in view of her status as a
nonparty residing in a foreign country.
The effect of the failure of opposer to supplement its initial
disclosures on the admissibility of Ms. Chen’s discovery
deposition.

Inter partes proceedings before the Board are governed, in
part, by the Federal Rules of Civil Procedure, except as
otherwise provided in the Trademark Rules of Practice, and
"wherever applicable and appropriate." Trademark Rules 2.116(a)
and 2.120(a)(1). A party must make its initial disclosures prior
to seeking discovery. Trademark Rule 2.120(a)(3). Fed. R. Civ.
P. 26(a)(1)(A)(i) requires parties to provide an initial
disclosure identifying “each individual likely to have
discoverable information - along with the subjects of that
information – that the disclosing party may use to support its
claims or defenses, unless the use would be solely for
impeachment.” Fed. R. Civ. P. 26(e)(1)(A) requires parties to
supplement their 26(a) disclosures “in a timely manner if the
party learns that in some material respect the disclosure or
response is incomplete or incorrect, and if the additional or
corrective information has not otherwise been made known to the
other parties during the discovery process or in writing.” The
Advisory Committee Notes to Rule 26(e) provide that there is “no
Opposition No. 91184213
6
obligation to provide supplemental or corrective information that
has been otherwise made known to the parties in writing or during
the discovery process, as when a witness not previously disclosed
is identified during the taking of a deposition….” This is not
an invitation to hold back material items and disclose them at
the last minute. Wright, Miller & Marcus, 8 Fed. Prac. & Pro.
Civ. 2d § 2049.1 (2009). However, there is no need, as a matter
of course, to submit a supplemental disclosure to include
information already revealed by a witness in a deposition or
otherwise through formal discovery, including the identity of the
witness. Id. See also Harding v. Cianbro Corp., 436 F.Supp.2d
153, 162-163 (D. Me. 2006) (an employer was not required to
supplement its initial answers in order to indicate that a senior
project manager had discoverable information, since the identity
of, and material information relating to, the senior project
manager had been made known to the employee's counsel during the
course of discovery, including during the taking of depositions).
In this case, the better practice would have been for
opposer to have supplemented its initial disclosures to include
the identification of Ms. Chen prior to noticing the discovery
deposition. Nonetheless, the discovery deposition took place and
was adequately noticed.4 Thus, the identity of Ms. Chen and the

4 See Sunrider Corp. v. Raats, 83 USPQ2d 1648 (TTAB 2007) and Gaudreau
v. American Promotional Events, Inc., 82 USPQ2d 1692 (TTAB 2007) for a
discussion of what constitutes adequate and reasonable notice for a
deposition in Board proceedings.

Opposition No. 91184213
7
information she was testifying to was made known to applicant
during the discovery phase of the proceeding, which is the phase
in which initial disclosures are first made and may be
supplemented. Moreover, applicant’s attorney, and at least one
of its principals, attended the deposition and cross examined Ms.
Chen. The deposition occurred with more than two months
remaining in the discovery period. Thus, had applicant needed to
obtain additional discovery about Ms. Chen, it had an opportunity
to do so, albeit after the discovery deposition occurred.
Under the circumstances of this case, opposer’s failure to
supplement its initial disclosures to include Ms. Chen does not
preclude the introduction of her discovery deposition at trial.
The admissibility of Ms. Chen’s deposition under Trademark Rule
2.120(j).

Trademark Rule 2.120(j)(2) provides in relevant part as
follows:
… the discovery deposition of a witness, whether or not a
party, shall not be offered in evidence unless the person
whose deposition was taken is, during the testimony period
of the party offering the deposition … out of the United
States (unless it appears that the absence of the witness
was procured by the party offering the deposition); … or
cannot be served with a subpoena to compel attendance at a
testimonial deposition.

Trademark Rule 2.120(j)(3)(i) allows for the introduction of
such a deposition by way of a notice of reliance. However,
before filing the notice of reliance, the parties must have
stipulated to introduction of the deposition, or the offering
party must make a motion for leave to file the deposition at the
Opposition No. 91184213
8
time the deposition is offered into evidence, and such motion
must be granted by the Board. Trademark Rule 2.120(j)(2).
Ms. Chen is out of the United States. Although applicant
suggests her absence for trial was procured by opposer, in view
of Ms. Chen’s status as a Taiwanese citizen who resides in
Taiwan, there is no clear evidence that her unavailability for a
trial deposition is the result of pre-arranged circumstances to
avoid her appearance for trial. Moreover, Ms. Chen’s statements
during the discovery deposition ought to have made it clear to
applicant that Ms. Chen did not plan to be in the United States
during the trial phase of this proceeding. Had applicant chosen
to do so, it could have inquired into Ms. Chen’s motivation in
consenting to appear for a discovery deposition but refusing to
return for a testimony deposition. In short, while applicant
apparently has concluded that opposer has procured an agreement
by Ms. Chen to stay out of the country during trial, it appears
just as likely that opposer merely procured an agreement by Ms.
Chen to travel to the United States for a discovery deposition
when she otherwise would not have been in the country for either
discovery or trial. Applicant has pointed to no evidence that
Ms. Chen would have been willing to return to the United States
for trial but for intervention by opposer. Trademark Rule
2.120(j)(2) only bars a party from introducing a discovery
deposition at trial when the party has caused the witness to be
Opposition No. 91184213
9
absent during trial, not when the party was able to secure the
witness for discovery but not for trial.
Where a party seeks to take the deposition of a nonparty,
and such witness is not willing to appear voluntarily, and where
the witness is present in the United States, the party seeking
the deposition must secure the attendance of the witness by
subpoena. See TBMP §703.01(f)(2) (2d ed. rev. 2004). However,
where the nonparty witness resides in a foreign country, the
party seeking to take the deposition may not be able to do so.
See TBMP §703.01(f)(1) (2d ed. rev. 2004). This is because there
is no certain procedure for obtaining the trial testimony
deposition of a nonparty who resides in a foreign country and is
not willing to appear voluntarily, whether the deposition sought
is intended to be taken orally or upon written questions.5 See
TBMP §703.01(f)(3) (2d ed. rev. 2004).
In this case, Ms. Chen, a nonparty residing in a foreign
country, clearly is not willing to appear voluntarily for a trial
deposition and her attendance cannot be compelled. Accordingly,
opposer’s motion for leave to enter her discovery deposition as
trial testimony is granted and opposer’s notice of reliance

5 The letters rogatory procedure or The Hague Convention letter of
request procedure may provide an opportunity to obtain the deposition.
See TBMP §703.01(f)(3) (2d ed. rev. 2004). The procedures are
cumbersome and not necessarily effective. See Double J of Broward,
Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612 (TTAB 1991).
The letters rogatory procedure has been characterized as “relatively
uncertain and onerous.” See Jain v. Ramparts, Inc., 49 USPQ2d 1429,
1431 (TTAB 1998).

Opposition No. 91184213
10
offering such deposition is accepted. Trademark Rules
2.120(j)(2) and (3)(i).
Applicant indicates it has documentary evidence it believes
will impeach Ms. Chen’s testimony. In order to minimize any
prejudice to applicant, applicant should consider whether such
documentary evidence may be introduced during applicant’s
testimony period either by a notice of reliance if the documents
are of a type that can be introduced by such a notice, or through
the testimony of an individual able to testify competently as to
the nature and source of the documents. Such evidence should be
clearly introduced as being offered for the purpose of
impeachment.
Proceedings are now resumed. Opposer’s testimony period for
its case in chief has closed. Remaining, operative dates are
reset as follows:
Defendant's Pretrial Disclosures are
due 9/23/2009
Defendant's 30-day Testimony Period
Ends 11/7/2009
Plaintiff's Rebuttal Disclosures are
due 11/22/2009
Plaintiff's 15-day Rebuttal Testimony
Period Ends 12/22/2009

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. Trademark Rule 2.l25.
Opposition No. 91184213
11
Briefs shall be filed in accordance with Trademark Rules
2.l28(a) and (b). An oral hearing will be set only upon request
filed as provided by Trademark Rule 2.l29.
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