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The Very Long Arm of the Patent and Trademark Office

By E.L. Lipman

Rosenruist-Gestao E Servicos LDA ("Rosenruist") is a Portuguese company that, in 2002, filed a trademark registration with a branch of the United States Patent and Trademark Office in the Virginia suburbs of Washington, D.C. Virgin Enterprises Ltd., a British company that owns numerous United States registrations, opposed the registration of Rosenruist?s mark and commenced an administrative proceeding before the Trademark Trial and Appeal Board to prevent the registration. When Rosenruist refused to appear voluntarily for a deposition, the United States District Court for the Eastern District of Virginia issued a subpoena directing Rosenruist to produce a designee to testify on behalf of the corporation at a deposition in Virginia.

Later, the District Court refused Rosenruist?s request to quash the subpoena and then subsequently imposed sanctions against Rosenruist when it failed to attend the scheduled deposition. Likewise important, seeking to ensure Rosenruist?s cooperation, Virgin Enterprises Ltd. filed a motion to compel Rosenruist, on pain of contempt sanctions, to designate a corporate representative who would appear at a deposition as directed by the subpoena. Notwithstanding its earlier ruling that Rosenruist had been properly served with a valid subpoena, the District Court determined that it could not require Rosenruist to produce a corporate designee for the deposition unless that designee personally resided within the Eastern District of Virginia.

Reversing, a divided panel of the U.S. Court of Appeals for the Fourth Circuit held that the District Court could compel the attendance of a representative of Rosenruist, and that Rosenruist?s failure to appeal the denial of its motion to quash the subpoena foreclosed any complaint it may have had over a lack of personal jurisdiction.

In dissent, Circuit Judge J. Harvie Wilkinson III, remarked "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. 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.'"

The complete analyses of the majority and the dissent are accessible here.

Full post as published by Within the Scope on December 27, 2007 (boomark / email).