1801 Office Personnel Not to Express A certificate of registration of a trademark on the Principal Register is prima facie evidence of the validity of the registration. 15 U.S.C. §1057(b). Public policy demands that every employee of the Patent and Trademark Office refuse to express to any person any opinion as to the validity of any registered trademark, except to the extent necessary to carry out inter partes proceedings at the Trademark Trial and Appeal Board in cancellation and similar proceedings authorized by law. The question of validity of a registered trademark is otherwise exclusively a matter to be determined by a court. Members of the trademark examining groups are cautioned to be especially wary of any inquiry from any person outside the Patent and Trademark Office, including an employee of another Government agency, the answer to which might indicate that a particular registration should not have been published or issued. Employees of the Patent and Trademark Office, particularly trademark examining attorneys who examined an application, should not discuss or answer inquiries from any person outside the Patent and Trademark Office as to whether or not a certain registration or other particular evidence was considered during the examination of the application or whether a trademark would have been published or registered if the registration or other evidence had been considered during the examination. Likewise, employees are cautioned against answering any inquiry concerning any entry in the trademark registration file, including the extent of the field of search and any entry relating thereto. The record of the file of a trademark registration or inter partes proceedings before the Trademark Trial and Appeal Board must speak for itself. (a) This part supplements 15 CFR Part 15a and prescribes the policies and procedures of the Office with respect to the testimony of Office employees as witnesses in legal proceedings and the production of documents of the Office for use in legal proceedings pursuant to a request, order, or subpoena. This part is issued pursuant to 15 CFR 15a1(e) and is to be construed consistent with 15 CFR Part 15a. (b) This part does not apply to any legal proceeding in which an Office employee is to testify, while on leave status, as to facts or events that are in no way related to the official business of the Office. (c) This part is intended to ensure the orderly execution of the affairs of the Office and not to impede any legal proceeding and in no way affects the rights and procedures governing public access to records pursuant to the Freedom of Information Act or the Privacy Act. See 15 CFR 15a.4 and 37 CFR 1.15. 37 CFR $15a.2. Definitions. For the purpose of this part: (a) "Commissioner" means Assistant Secretary and Commissioner of Patents and Trademarks. (b) "Demand" means a request, order, or subpoena for testimony or documents for use in a legal proceeding. (c) "Document" means any record, paper, and other property held by the Office, including without limitation official patent and trademark files, official letters, telegrams, memoranda, reports, studies, calendar and diary entries, maps, graphs, pamphlets, notes, charts, tabulations, analyses, statistical or informational accumulations, any kind of summaries of meetings and conversations, film impressions, magnetic tapes, and sound or mechanical reproductions. (d) "Legal proceeding" means a proceeding before a tribunal constituted by law, including a court, an administrative body or commission, an administrative law judge or hearing officer or any discovery proceeding in support thereof. (e) "Office" means Patent and Trademark Office. ("Office employee" means any officer or employee of the Office. (g) "Official business" means the authorized business of the Office. (h) "Solicitor" means the chief legal officer of the Office or other Office employee to whom the Solicitor has delegated authority to act under this part. (i) "Testimony" means a statement given in person before a tribunal or by deposition for use before the tribunal or any other statement given for use before a tribunal in a legal proceeding, including an affidavit, declaration under 35 U.S.C. 25, or declaration under 28 U.S.C. 1746. (j) "United States" means the Federal Government, its departments and agencies, and individuals acting on behalf of the Federal Government. 37 CFR §15a.3. Office policy. The Office policy is that its documents will not be voluntarily produced and Office employees will not voluntarily appear as witnesses or give testimony in a legal proceeding. The reasons for this policy include: (a) To conserve the time of Office employees for conducting official business. (b) To minimize the possibility of involving the Office in controversial or other issues which are not related to the mission of the Office. (c) To prevent the possibility that the public will misconstrue variances between personal opinions of Office employees and Office policy. (d) To avoid spending the time and money of the United States for private purposes. (e) To preserve the integrity of the administrative process, minimize disruption of the decision-making process, and prevent interference with the Office's administrative functions. 37 CFR §15a.4. Testimony or production of documents; general rule. (a) No Office employee shall give testimony concerning the official business of the Office or produce any document in any legal proceeding without the prior authorization of the Solicitor. Where appropriate, an Office employee may be instructed in writing by the Commissioner, Solicitor, or other appropriate Office employee not to give testimony or produce a document. Without prior approval, no Office employee shall answer inquiries from a person not employed by the Department of Commerce regarding testimony or documents subject to a demand or a potential demand under the provisions of this Part. All inquiries involving a demand or potential demand on an Office employee shall be referred to the Solicitor. (b) A certified copy of a document, not otherwise available under Chapter I of this Title, will be provided for use in a legal proceeding upon written request and payment of applicable fees required by law. (c)(1) Request for testimony or document. A request for testimony of an Office employee or document shall be mailed or hand-delivered to the Office of the Solicitor. The mailing address of the Office of the Solicitor is Box 8, Patent and Trademark Office, Washington, D.C. 20231. (2) Subpoenas. A subpoena for testimony by an Office employee or a document shall be served in accordance with the Federal Rules of Civil or Criminal Procedure as appropriate, or applicable state procedure, and a copy of the subpoena shall be sent to the Solicitor. (3) Affidavit. Every request and subpoena shall be accompanied by an affidavit or declaration under 28 U.S.C. 1746 or, if an affidavit or declaration is not feasible, a written statement setting forth the title of the legal proceeding, the forum, the requesting party's interest in the legal proceeding, the reasons for the request or subpoena, a showing that the desired testimony or document is not reasonably available from any other source, and if testimony is requested, the intended use of the testimony, a general summary of the testimony desired, and a showing that no document could be provided and used in lieu of testimony. The purpose of this requirement is to permit the Solicitor to make an informed decision as to whether testimony or production of a document should be authorized. (d) Any Office employee who is served with a demand shall immediately notify the Office of the Solicitor. (e) The Solicitor may consult or negotiate with an attorney for a party or the party, if not represented by an attorney, to refine or limit a demand so that compliance is less burdensome or obtain information necessary to make the determination required by paragraph (c) of this section. Failure of the attorney or party to cooperate in good faith to enable an informed determination to be made under this part may serve as the basis for a determination not to comply with the demand. (f) A determination under this part to comply or not to comply with a demand is not an assertion or waiver of privilege, lack of relevance, technical deficiencies or any other ground for noncompliance. The Commissioner reserves the right to oppose any demand on any legal ground independent of any determination under this part. 37 CFR §15a.5. Testimony of Office employees in proceedings involving the United States. (a) An Office employee may not testify as an expert or opinion witness for any party other than the United States. (b) When appropriate, the Solicitor may authorize an Office employee to give testimony as an expert or opinion witness on behalf of the United States. Expert or opinion testimony on behalf of the United States will not be authorized in any legal proceeding involving the validity or enforceability of a patent or registered trademark. (c) Whenever, in any legal proceeding involving the United States, a request is made by an attorney representing or acting under the authority of the United States, the Solicitor will make all necessary arrangements for the Office employee to give testimony on behalf of the United States. Where appropriate, the Solicitor may require reimbursement to the Office of the expenses associated with an Office employee giving testimony on behalf of the United States. 37 CFR $15a.6. Legal proceedings between private litigants. (a) Testimony by an Office employee and production of documents in a legal proceeding not involving the United States shall be governed by § 15a.4. (b) If an Office employee is authorized to give testimony in a legal proceeding, the testimony, if otherwise proper, shall be limited to facts within the personal knowledge of the Office employee. An Office employee is prohibited from giving expert or opinion testimony, answering hypothetical or speculative questions, or giving testimony with respect to subject matter which is privileged. If an Office employee is authorized to testify in connection with the employee's involvement or assistance in a quasi-judicial proceeding which took place before the Office, that employee is further prohibited from giving testimony in response to questions which seek: (1) Information about that employee's: (i) Background. (ii) Expertise. (iii) Qualifications to examine or otherwise consider a particular patent or trademark application. (iv) Usual practice or whether the employee followed a procedure set out in any Office manual of practice in a particular case. (v) Consultation with another Office employee. (vi) Understanding of: (A) A patented invention, an invention sought to be patented, or patent application, patent, reexamination or interference file. (B) Prior art. (C) Registered subject matter, subject matter sought to be registered, or a trademark application, registration, opposition, cancellation, interference or concurrent use file. (D) Any Office manual of practice. (F) Patent, trademark, or other law. (G) The responsibilities of another Office employee. (vii) Reliance on particular facts or arguments. (2) To inquire into the manner in and extent to which the employee considered or studied material in performing the quasi-judicial function. (3) To inquire into the bases, reasons, mental processes, analyses, or conclusions of that Office employee in performing the quasi-judicial function. 37 CFR $15a.7. Procedures when an Office employee receives a subpoena. (a) Any Office employee who receives a subpoena shall immediately forward the subpoena to the Office of the Solicitor. The Solicitor will determine the extent to which an Office employee will comply with the subpoena. (b) If the Office employee is not authorized to comply with the subpoena, the Office employee shall appear at the time and place stated in the subpoena, produce a copy of Part 15a of Title 15 and a copy of this part, and respectfully refuse to provide any testimony or produce any document. United States ex rel. Touhy v. Ragen, 340 U.S. 462 (1951). (c) When necessary or appropriate, the Solicitor will request assistance from the Department of Justice or a U.S. Attorney or otherwise assure the presence of an attorney to represent the interests of the Office or an Office employee. It is the policy of the Patent and Trademark Office that its employees, including trademark examining attorneys, will not appear as witnesses or give testimony in legal proceedings, except under the conditions specified in 37 C.F.R. Part 15a. Any employee who testifies contrary to this policy will be dismissed or removed. The reasons for this policy are set out in 37 C.F.R. §15a.3. Whenever an employee of the Patent and Trademark Office, including a trademark examining attorney, is asked to testify or receives a subpoena, the employee shall immediately notify the Office of the Solicitor. Inquiries requesting testimony shall also be referred immediately to the Office of the Solicitor. Trademark examining attorneys and other Patent and Trademark Office employees performing or assisting in the performance of quasi-judicial functions, are forbidden to testify as experts or to express opinions as to the validity of any registration. Any individual desiring the testimony of an employee of the Patent and Trademark Office, including the testimony of a trademark examining attorney or other quasi-judicial employee, must comply with the provisions of 37 C.F.R. Part 15a. A request for testimony of an employee of the Patent and Trademark Office should be made to the Office of the Solicitor at least ten working days prior to the date of the expected testimony. If an employee is authorized to testify, the employee will be limited to testifying about facts within the employee's personal knowledge. Employees are prohibited from giving expert or opinion testimony. Fischer & Porter Co. v. Corning Glass Works, 61 F.R.D. 321, 181 USPQ 329 (E.D. Pa. 1974). Likewise, employees are prohibited from answering hypothetical or speculative questions. In re Mayewsky, 162 USPQ 86, 89 (E.D. Va. 1969) (deposition of an examiner must be restricted to relevant matters of fact and must avoid any hypothetical or speculative questions or conclusions based thereon); Shaffer Tool Works v. Joy Mfg. Co., 167 USPQ 170 (S.D. Tex. 1970) (deposition of examiner should be limited to matters of fact and must not go into hypothetical or speculative areas or the bases, reasons, mental processes, analyses, or conclusions of the examiner in acting upon an application). Employees will not be permitted to give testimony with respect to subject matter which is privileged. Several court decisions limit testimony with respect to quasi-judicial functions performed by employees. Those decisions include United States v. Morgan, 313 U.S. 409, 422 (1941) (improper to inquire into mental processes of quasi-judicial officer or to examine the manner and extent to which the officer considered an administrative record); Western Electric Co., Inc. v. Piezo Technology, Inc. v. Quigg, 860 F.2d 428, 8 USPQ2d 1853 (Fed. Cir. 1988) (patent examiner may not be compelled to answer questions which probe the examiner's technical knowledge of the subject matter of a patent); McCulloch Gas Processing Co. v. Department of Energy, 650 F.2d 1216, 1229 (Temp. Emer. Ct. App. 1981) (discovery of degree of expertise of individuals performing governmental functions not permitted); In re Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988) (technical or scientific qualifications of examiners-in-chief are not legally relevant in appeal under 35 U.S.C. §134 since board members need not be skilled in the art to render obviousness decision); Lance v. Commissioner, 352 F. Supp. 166, 176 USPQ 162 (D.D.C. 1972) (technical qualifications of examiners-in-chief not relevant in Sec. 145 action). In view of the discussion above, if an employee is authorized to testify in connection with the employee's involvement or assistance in a quasi-judicial proceeding which took place before the Patent and Trademark Office, the employee will not be permitted to give testimony in response to questions which seek: (1) Information about that employee's: (B) Expertise. (C) Qualifications to examine or otherwise consider a particular patent or trademark application. (D) Usual practice or whether the employee followed a procedure set out in any Office manual of practice (including the MPEP or TMEP) in a particular case. (E) Consultation with another Office employee. (F) Understanding of: (iii) Registered subject matter, subject matter (vi) Patent, trademark, or other law. (G) Reliance on particular facts or arguments. (3) To inquire into the bases, reasons, mental processes, analyses, or conclusions of that Office employee in performing the quasi-judicial function. Any request for testimony addressed or delivered to the Office of the Solicitor shall comply with 37 C.F.R. $15a.4(c). All requests must be in writing. The need for a subpoena may be obviated where the request complies with 37 C.F.R. §15a.4(c) only if the party requesting the testimony further meets the following conditions: (1) The party requesting the testimony identifies the (a) the style of the case, (c) the district in which the civil action is pending, (2) The party agrees not to ask questions seeking (3) The party shall comply with applicable provisions of the Federal Rules of Civil Procedure, including Rule 30, and give ten working days notice to the Office of the Solicitor prior to the date a deposition is desired. Fifteen working days notice is required for any deposition which is desired to be taken between November 15 and January 15. (4) The party agrees to notice the deposition at a place convenient to the Patent and Trademark Office. The Conference Room in the Office of the Solicitor is deemed to be a place convenient to the Office. (5) The party agrees to supply a copy of the transcript of the deposition to the Patent and Trademark Office for its records. Absent a written agreement meeting the conditions specified in paragraphs (1) through (5), a party must comply with the precise terms of 37 C.F.R. §15a.4(c) and the Patent and Trademark Office will not permit a deposition without issuance of a subpoena. See notice at 1099 TMOG 44 (February 28, 1989). 1802 The Official Gazette The Official Gazette is a publication of the Patent and Trademark Office and is issued once a week on Tuesdays. On February 2, 1971, the Official Gazette was separated into two parts, one designated the Patent Official Gazette and the other the Trademark Official Gazette. The Trademark Official Gazette contains an illustration of those trademarks which are published for opposition on the Principal Register, those trademarks which are registered on the Principal Register under 15 U.S.C. §1051(d) and those trademarks which are registered on the Supplemental Register, as of the date of the particular Gazette in which the marks appear. For each category, the marks are presented in four sections as follows: Section 1. International classification - Application in more than one class; Section 2. International classification - Application in one class; Section 3. Prior United States classification - Application in more than one class; Section 4. Prior United States classification - Application in one class. The Trademark Official Gazette also includes indexes of trademark registrations issued, renewed, cancelled, amended, disclaimed or corrected; an index of registrants; and general information such as Commissioner's orders, notices, changes in rules or Office procedure, condition of work in the Office, disbarment of attorneys, notices to parties not reached by mail, and the like. Orders for annual subscriptions or single copies of the Trademark Official Gazette must be addressed, and remittances made payable, to the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402. See notices at 807 O.G. TM 51 (October 13, 1964); 882 O.G. TM 33 (January 12, 1971); 921 O.G. TM 122 (April 16, 1974). The pages in the Trademark Official Gazette are numbered as follows: The "notices" section is numbered consecutively through all the volumes which cover the period of a month preceded by the volume number for that month using the symbol TMOG, for example, 957 TMOG 3; the "marks" section is so numbered consecutively with its own sequence of numbers using the symbol TM, for example, 957 TM 89; and the "Index of Registrants" section is likewise numbered consecutively with its own sequence of numbers using the symbol TMI, for example, 957 TMI 9. See notice at 957 TMOG 2 (April 5, 1977). 1802.01 Notification of Errors in Trademark In view of the establishment of in-house photocomposition of the Trademark Official Gazette, it is important that errors noted by the public be directed to a single office for verification and correction. Written notification of errors in the publication of marks in the Trademark Official Gazette should include the correspondent's telephone number and should be addressed to the Paralegal Specialist, Office of Trademark Services, United States Department of Commerce, Patent and Trademark Office, Washington, D.C. 20231. Error notification may also be done by telephone to the Paralegal Specialist at (703) 308-9000. Applicants may use this procedure to notify the Office of errors in relation to marks published in the Official Gazette if the error is purely clerical (e.g., typographical error or omission, drawing printed upside down, or incorrectly stated data). This procedure should not be used to dispute information that is actually of record in the application file. The Paralegal Specialist will review the notification of error and verify the existence of the clerical error, determine whether the error can be corrected without jurisdiction being restored to the examining attorney or republication being required, and coordinate the appropriate correction procedure. Notification must be received by the Office within one week after the Official Gazette publication date to permit processing by the Office. See notice at 1054 TMOG 4 (May 28, 1985). 1803 Fraud Upon the Office When an examining attorney suspects the possibility of fraud upon the Office in the ex parte examination of a trademark application, the following procedure must be followed. (1) The examining attorney must bring the matter to the attention of the managing attorney in his or her law office. (2) If the managing attorney concurs with the examining attorney as to the possibility of fraud upon the Office, the managing attorney will bring the matter to the attention of the Director of the Trademark Examining Groups. |