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TTAB Personal Subpeona Power Extends to Foreign Trademark Applicant Corporations

By William F. Heinze

In Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Limited (December 27, 2007), the U.S. Court of Appeals for the Fourth Circuit ruled that service of a subpoena ad testificandum on the domestic representative of the foreign trademark applicant in a U.S. opposition proceeding was sufficient to require the foreign applicant to appear and testify in the district where the domestic representative was located. If the foreign applicant fails to name a domestic representative in its trademark application, the Director of Patents and Trademarks in Alexandria, Virginia (the Eastern District of Virginia), is deemed to be the foreign domestic representative of the applicant.

According to the opinion by Circuit Judge Traxler,

[W]e agree with VEL that the term "witness," as used in the statute, is not limited to natural persons and allows the court to reach corporations and other juristic persons. Because the unappealed order of March 2, 2006, established for purposes of this case that the subpoena was valid and that Rosenruist, as the subject of the subpoena, was required to obey it, it follows that the district court should have granted VEL?s motion to compel.

As noted by dissenting Circuit Judge Wilkinson,

In a first for any federal court, my colleagues hold that a foreign company that has no United States employees, locations, or business activities must produce a designee to testify at a deposition in the Eastern District of Virginia so long as it has applied for trademark registration with a government office located there. 35 U.S.C. § 24
(2000). As a result, foreign witnesses can be compelled to travel to the United States and give in-person deposition testimony at the behest of any litigant in a trademark dispute, "for use in any contested case in the Patent and Trademark Office" ("PTO") ? though the PTO?s own procedures call for obtaining testimony from foreign
companies through other means.

. . . [This decision] is bound to embroil foreign trademark applicants in lengthy, procedurally complex proceedings. It inverts longstanding canons of construction that seek to protect against international discord, and it disregards the views of the PTO whose proceedings 35 U.S.C. § 24 is designed to aid. . . . No matter how one cuts
the cookie, the bottom line is that the majority enforces the subpoena. In so doing, the majority creates a standard that is in fact a national one: the PTO is located in the Eastern District of Virginia; applications for trademark registration are filed there; and subpoena enforcement will frequently be sought in that district. Indeed, for any foreign corporation without a pre-existing United States presence, the majority?s decision will be controlling. For this reason, among others, I think this decision is unfortunate. The decision to extend the subpoena power under 35 U.S.C. § 24 to foreign companies situated similarly to Rosenruist is one that is plainly before this court, and its importance warrants full discussion.

Full post as published by I/P Updates on February 15, 2008 (boomark / email).