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February 1, 2016 Vol. 71 No. 2 Back to Bulletin Main Page

UNITED STATES: Depositions May Not Be Take-Home Examinations, but Opposing Parties Must Carry Their Evidentiary Burdens

In a precedential decision, the Trademark Trial and Appeal Board (TTAB) denied an opposition motion for summary judgment, determining that a genuine dispute of material fact existed regarding ownership of the opposed trademark. Hollywood Casino LLC v. Chateau Celeste, Inc., 116 USPX2d 1988 (TTAB Dec. 14, 2015) [precedential].

Chateau Celeste, Inc. (applicant) sought registration of the mark HOLLYWOOD HOTEL for “hotel, restaurant and catering services;” etc. in Class 43. Hollywood Casino LLC (opposer) owns registrations for HOLLYWOOD CASINO in Class 41 (“casino services”) and Class 42 (“hotel services”). The opposer submitted an amendment to its original notice of opposition to add a claim of non-ownership of the mark, which was allowed by the TTAB.

The opposer also concurrently filed a motion for summary judgment that the applicant was not the owner of the mark as a matter of law. In support, the opposer relied on specimens of use, excerpts from the deposition transcript of the Federal Rules of Civil Procedure 30(b)(6) witness, Mr. Zarrinnam, the applicant’s president and CEO, and the applicant’s errata sheet making substantive changes, clarifications and other corrections to the transcript of the deposition. The pertinent questions before the TTAB were whether it could consider the errata sheet as part of the record and whether there was a material issue of fact as to the opposer’s newly asserted non-ownership claim.

In the deposition, the applicant’s president testified that a different entity owned the property upon which the hotel sat, while the applicant was the management company for the entity that owned the property. In the subsequent errata sheet submitted, the applicant’s president sought “to clarify” that while the property was owned by the other entity, the applicant “manage[d] and control[ed] the nature and quality of the services at the property.” In addition, the applicant’s president changed his testimony in the errata sheet that the hotel owner had a license from the applicant to use the trademarks. The proffered reason for the change was to provide clarification for a more complete answer and avoid confusion of the entities’ roles.

The TTAB denied the inclusion of the errata sheet, holding that “a party should not be allowed to make an unexplained ‘about-face’ with respect to damaging deposition testimony.” Likewise, continued the TTAB, “[a] deposition is not a take home examination,” and to “follow such an interpretation of Rule 30(e) would eviscerate the purpose of sworn depositions.” The TTAB also refused to consider the applicant’s president’s accompanying declaration, which reiterated the points on the errata sheet.

Despite rejection of the errata sheet and declaration, there was a genuine dispute of material fact as to the question of whether the applicant had been the owner of the trademark on the date the application was filed. This case highlights the importance of proper witness preparation before depositions.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2016 International Trademark Association