In determining the extent of a district court’s subpoena power under 35 U.S.C. § 24, the U.S. Court of Appeals for the Fourth Circuit suggested that simply filing an intent to use trademark application (ITU) may subject foreign companies to a deposition in the Eastern District of Virginia in connection with an opposition proceeding. Rosenruist Gestao E Servicos LDA v. Virgin Enterprises Ltd., Case No. 06-1588 (4th Cir., Dec. 27, 2007) (Traxler, J.; Wilkinson, J. dissenting).
Rosenruist, a Portuguese company, filed an ITU with the U.S. Patent and Trademark Office (USPTO). Rosenruist had no presence and conducted no business in the United States. Virgin opposed Rosenruist’s application and attempted to take a testimonial deposition of Rosenruist under Fed. R. Civ. Pro. 30(b)(6). When Rosenruist refused to voluntarily appear in the United States for a deposition, Virgin moved to compel. The Trademark Trial and Appeal Board (TTAB) denied the motion, noting that under its rules of procedure, a party residing in a foreign country may be compelled to appear only by using The Hague Convention procedure or through issuance of letters rogatory to the appropriate Portuguese legal authority. Virgin then served a lawyer designated in Rosenruist’s application as its domestic representative with a subpoena requiring Rosenruist to appear in Virginia and produce a Rule 30(b)(6) witness. The subpoena was issued by the district court for the Eastern District of Virginia pursuant to § 24, which requires “the clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the [PTO] … to issue a subpoena for any witness residing or being with such district.” The district court denied Rosenruist’s motion to quash, rejecting the argument that § 24 did not give the court subpoena power over nonresident foreign corporations. Rosenruist refused to designate a representative, stating that there was no such person “residing or being” in the district. Virgin obtained sanctions against Rosenruist and moved to compel. The district court held concluded that “witness” as used in § 24, referred only to natural persons and that Rosenruist was not required to produce a Rule 30(b)(6) designee unless that designee was in the district. The decision was based on a holding. Virgin appealed.
The Fourth Circuit, after noting that Rosenruist was properly served with a valid subpoena and never appealed that order, found that Rosenruist could no longer question the validity of the subpoena and that the only question before the Court was whether Rosenruist itself was subject to the district court’s subpoena power or whether § 24 only extends to natural persons. The Fourth Circuit concluded that a “witness” subject to § 24 includes juridical entities such as Rosenruist. Therefore, because Rosenruist itself was the “witness,” Rosenruist could not avoid designating a Rule 30(b)(6) witness by stating that no appropriate individual was “residing or being” in the district.
Rosenruist argued that even if it did qualify as a “witness,” it still was not subject to § 24 because it was not “residing or being” in the district. Rosenruist pointed out that the designation of a domestic representative as party of a trademark application was not sufficient to subject it to the statute and argued that it did not have the “continuous and systematic contacts” in the district necessary to give the court personal jurisdiction. The Court concluded that, because the validity of the subpoena had already been determined by the district court in a ruling that was never appealed, the personal jurisdiction argument was not properly before it. Nevertheless, the Court suggested in dicta that “residing or being” in the district was less than the type of “continuous and systematic” contacts required for general jurisdiction: “were the issue before us … we would conclude that Rosenruist’s activities in this case were sufficient.”
Judge Wilkinson offered a spirited dissent, arguing that the Court’s decision improperly interpreted § 24, failed to apply canons of construction appropriate for decisions that potentially impact foreign relations and did not give appropriate deference to USPTO rules. While agreeing with the Court’s interpretation of the term “witness,” Judge Wilkinson took exception to the Court’s treatment of the statute’s “residing or being” language in dicta. He stated that by enforcing the subpoena issued by the district in which the USPTO sits, the Court created a standard under which foreign corporations that file ITUs that are opposed will be subject to subpoena, even if they have no other contact with the United States.