Cancellation Petitioner Waterdrop Microdrink GmbH relied on the Trademark Board Manual of Procedure when its attorney signed and served a subpoena on third-party Ecolife Technologies, Inc. in order to take the latter’s deposition under FRCP 30(b)(6). Respondent’s counsel refused to accept service, and also stated that the subpoena was improperly issued. When Waterdrop moved to compel compliance, the U.S. District Court for the Central District of California sided with Ecolife. Waterdrop Microdrink GmbH v. Qingdao Ecopure Filter Co., Cancellation No. 92079118.
Ecolife contended that, under 35 USC Section 24, a subpoena in connection with a USPTO proceeding must be issued by the court. Waterdrop pointed to TBMP Section 404.03(a)(2), which states that a subpoena may be issued by the clerk of judge of the court in the district where the deponent resides, or by “an attorney authorized to practice in that jurisdiction.” [emphasis added]. Waterdrop also pointed to FRCP 45(a)(3), which states that an attorney may authorize and issue a subpoena if authorized to practice in the issuing court.
35 USC Section 24 states that “the clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within the district.” [emphasis added]. Section 24 does not say that an attorney may issue a subpoena.
Ecolife argued that the TBMP and the Federal Rules of Civil Procedure cannot supersede the “plain language” of 35 USC Section 24.The district court gave short shrift to the TBMP provision, citing Justice Gorsuch’s observation (while sitting on the 10th Circuit) that the TBMP is only a “sort of rough-and-ready handbook,” that “not only doesn’t demand deference but actually disclaims it.” The court found the TBMP statement to be inconsistent with Section 24. “[T]he TBMP is not binding and Plaintiff does not point to any caselaw or administrative history addressing how this language reconciles with that of Section 24.”
Waterdrop argued that requiring the clerk of the court to issue the subpoena is “merely form over substance.” The court was unmoved: “Regardless of whether the requirement elevates form over substance, however, Section 24 sets for the procedure by which a party can obtain issuance of a subpoena, and Plaintiff did not follow that procedure.”
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TTABlogger comment: Time to amend the TBMP. Haven’t I been saying repeatedly that “the TBMP is not the law”? Hat tip to Joshua Friedman for this one.
Text Copyright John L. Welch 2024.