Articles

Client Alert - A Non-U.S. Trademark Applicant May Be Required to Produce a Representative to Testify in the United States

By Albert Robin

Mar. 11, 2008

Domestic Representative Background

Until very recently it was generally understood that non-U.S. trademark applicants could not be compelled to produce a representative to testify in the United States if they did not have a commercial presence in the United States, the only procedure available for the taking of their deposition being by written questions.

Non-U.S. applicants are required to have a domestic representative upon whom notices of process in Trademark Office proceedings involving the mark can be served. This requirement exists whether the applicant is filing on the basis of a foreign application or registration or on the basis of a bona fide intention to use the mark in U.S. Commerce or has filed under the Madrid protocol and has suffered a U.S. refusal. If the applicant chooses not to appoint such a representative, the Director (formerly known as the Commissioner) of Patents and Trademarks automatically fills this role. However, since the domestic representative heretofore played no role in the opposition or cancellation proceeding, its identity and location was of no practical significance.

Change Under the Rosenruist Case

In Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 85 USPQ2d 1385 (4^th Cir. 2007), decided in December, 2007, the Court of Appeals for the Fourth Circuit held that because Rosenruist, a trademark applicant from Portugal, had appointed a domestic representative, that representative could be served with a subpoena which would compel the Rosenruist company to produce a witness to testify at a deposition in the United States and to produce documents, even though Rosenruist had no business activity or personnel in the United States.

There was a vigorous dissent and the decision failed to give effect to the Trademark Office rules governing depositions of non-U.S. applicants. Furthermore, the issue of the propriety of the type of deposition involved was not before the appellate court for review.   However, there is a real risk that this decision will be followed at least by courts sitting within the area covered by the Fourth Circuit (the states of Maryland, North Carolina, South Carolina, Virginia, and West Virginia), which includes Alexandria, Virginia where the Director of Patents and Trademarks is located.

In Rosenruist, the opposer, Virgin Enterprises Ltd. (“Virgin”) served on Rosenruist, during Virgin’s testimony period, a notice under Section 30(b)(6) of the Federal Rules of Civil Procedure requiring Rosenruist to produce in the United States a representative having knowledge of a list of facts and to bring with him documents relating thereto. When Rosenruist did not comply with the notice, Virgin obtained a subpoena from the District Court for the Eastern District of Virginia compelling the attendance of such a person which it served upon applicant’s appointed domestic representative, trademark lawyers whose office was located in Virginia.   

When Rosenruist did not comply with the subpoena, Virgin sought to punish Rosenruist for contempt of court, and the Court of Appeals held that Rosenruist was in contempt for failure to comply with the subpoena. While Rule 30(b)(6) relates to the taking of a discovery deposition and Virgin was seeking a testimonial deposition from Rosenruist, the Fourth Circuit felt itself unable to consider the propriety of the use of Rule 30(b)(6) for testimonial purposes since that issue had not been preserved for appeal. Rule 30(b)(6) only relates to discovery depositions, so it seems possible that other courts in Fourth Circuit, and likely that courts in other Circuits will reach a different result if this issue is not waived.

Suggested Future Action

Because courts within the jurisdiction of the Fourth Circuit may feel constrained to follow the Rosenruist decision, non-U.S. trademark applicants may be able to avoid being  compelled to produce witnesses to testify in the United States by appointing  a domestic representative in every case (to avoid having the Director  of Patents and Trademarks automatically designated as such), and to select that representative from a state, such as New York, which is not within the jurisdiction of the Fourth Circuit.   

Moreover, even though the Rosenruist case involved taking testimony from a non-U.S. applicant, its rationale would also be applicable to non-U.S. registrants in cancellation proceedings and to non-U.S. opposers and cancellation petitioners, since they are also required to have domestic representatives.

For further information, please contact Albert Robin.

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