Wednesday, March 26, 2008

Portugal-based Rosenruist-Gestao files U.S. Supreme Court Cert. Petition on Fourth Circuit’s Decision to Enforce 35 U.S.C. §24 Subpoena

The TTABlog® posted a copy (link here) of the U.S. Supreme Court Petition for a Writ of Certiorari filed March 20, 2008, by Portuguese Company Rosenruist-Gestao E Servicos LDA (“Rosenruist-Gestao”). See Rosenruist-Gestao E Servicos LDA, fka Rosenruist-Gestao E Servicos Sociedade Unipessoal LDA v. Virgin Enterprises Limited, No. 07-1214 (U.S. March 20, 2008). The Petition seeks review of the 2-1 decision by the U.S. Court of Appeals for the Fourth Circuit holding that a foreign corporation (Rosenruist-Gestao) can be compelled to answer a Rule 30(b)(6) deposition subpoena issued pursuant to 35 U.S.C. §24 arising out of a TTAB opposition filed by Virgin Enterprises Limited opposing Rosenruist-Gestao’s intent-to-use trademark application for the mark VIRGIN GORDA. See Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437 (4th Cir. 2007); see also Rosenruist-Gestao E Servicos Sociedade Unipessoal LDA v. Virgin Enterprises Limited, Opposition No. 91161535 (TTAB Filed July 29, 2004). Summaries of the Fourth Circuit’s decision can be found on and The TTABlog®.

The legal questions presented in Rosenruist-Gestao’s Petition are:

1. Does 35 U.S.C. § 24 authorize a district court to subpoena foreign witnesses with no contact with the United States other than the filing of a trademark application to appear personally for deposition in Virginia when the rules and procedures of the United States Patent and Trademark Office do not authorize such depositions but, instead, permit alternate means for obtaining testimony?

2. Is a foreign company with no employees, locations or other business in the United States a “witness residing or being” within the Eastern District of Virginia under 35 U.S.C. § 24 solely because it filed a trademark application with the United States Patent and Trademark Office?

The Petition first focuses on the split among the U.S. Circuit Courts of Appeals with respect to the interpretation of 35 U.S.C. §24 and requests the U.S. Supreme Court resolve the split. The First, Third, and Fifth Circuits have held that §24 authorizes district courts to issue subpoenas for evidence when the PTO’s rules and procedures authorize the parties to obtain such evidence. As such, PTO litigants cannot obtain discovery under §24 which exceeds the scope of discovery contemplated by the PTO’s own rules and procedures – and the PTO’s rules do not authorize depositions of non-resident foreign applicants, but instead propose alternative methods for taking testimony of foreign witnesses, such as taking the testimony of a non-resident alien by deposition on written questions (see 37 CFR §§ 2.123(a)(2) and 2.124) or either through letters rogatory or through letters of request under The Hague Convention (see TBMP §703.01(f)(3)).

The Tenth Circuit and now the Fourth Circuit, however, have held that the full scope of discovery available under the Federal Rules of Civil Procedure is available under §24 to a party involved in a contested proceeding before the PTO.

In addition to noting the Circuit split over the scope of §24, the Petition also argues that the Fourth Circuit’s decision misconstrues the plain language of §24, which applies to witnesses “residing or being within” the court’s district and is not meant to apply to a foreign company with no ties to the U.S. other than the filing of a trademark application (as evidenced by the PTO’s own interpretation of the statute – see TBMP §703.01(f)(2)). The Petition argues that the Fourth Circuit’s interpretation of the meaning of witnesses “residing or being within” the court’s district is one of important first impression given that, if left to stand, the decision would establish an unreasonable precedent whereby all foreign applicants of U.S. trademarks will be subject to the subpoena power of the U.S. District Court for the Eastern District of Virginia in any trademark disputes – a precedent that goes against long-standing principles of comity and international law.

Vegas™Esq. comments:
Rosenruist-Gestao has a good chance of having its Petition granted given the circuit split and the far-reaching consequences of the Fourth Circuit’s decision. One wonders why Rosenruist-Gestao opted to go straight to the U.S. Supreme Court without first seeking an en banc rehearing at the Fourth Circuit. Given the 2-1 split and the passionate reason of the dissenting opinion, there was a good chance that the full court would have at least heard the case and possibly even reached a different decision.

The bigger question I have is – what’s really driving these two companies to spend so much time and resources over this issue? Why is Virgin so intent on taking a deposition of a person rather than using written interrogatories? Why is Rosenruist-Gestao so intent on fighting for this intent-to-use mark?

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