TTAB Requires Cross-Examination By Oral Deposition in CAPTAIN CANNABIS Battle

In a precedential decision in a cancellation proceeding, the Trademark Trial and Appeal Board has ruled that Petitioner Laverne J. Andrusiek must cross-examine, by oral deposition, Respondent Cosmic Crusaders LLC’s witnesses who provided direct testimony via written declaration.  Laverne Andrusiek v. Cosmic Crusaders LLC
Andrusiek contends that he created a comic book character named “Captain Cannabis” in the 1970s, and operates a website identifying various books and other works related to that character since that time. Cosmic Crusaders appears to be associated with a cannabis activist under the moniker of “Captain Cannabis,” and related media, including a “Cosmic Crusaders” comic featuring a “Captain Cannabis” character. Cosmic Crusaders obtained the registration at issue for CAPTAIN CANNABIS , for comic books in Class 16, in 2015.
Andrusiek sought leave to cross-examine Cosmic Crusader’s witnesses by written questions, citing, as factual background, to the inconvenience and expense of conducting oral cross-examinations. Andrusiek was identified as being in Washington state, while Cosmic Crusader’s witnesses were identified as being in Tampa, Florida. Andrusiek cited 37 CFR 2.124(b)(3) as basis for the request:
A party desiring to take cross-examination, by written questions, of a witness who has provided testimony by affidavit or declaration shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board.
The TTAB denied Andrusiek leave to cross-examine by written questions, explaining that
“(w)hile Trademark Rule 2.124 sets forth the procedures governing depositions upon written questions, it does not set forth the circumstances under which depositions upon written questions may occur.”
The matter is one of timing and order. As the TTAB explained, “…a party may, during its testimony period, take the testimony of a witness: (1) by affidavit or declaration under Trademark Rule 2.20; (2) by deposition upon oral examination as provided under Trademark Rule 2.123; or (3) by deposition upon written questions as provided under Trademark Rule 2.124” (emphasis added). As the discovery at issue here related to that which Cosmic Crusaders presented in their testimony period, the option for Andrusiek to choose deposition by written questions was not available. Rather, as the declarants were in the United States, 37 CFR 2.123(a)(1) provided that Andrusiek’s opportunity to cross-examine was limited only to oral examination.
The TTAB dd, however, note that deposition, including the cross-examinations at issue here, could be conducted telephonically, as such an option should generally be available upon a reasonable request.
Lessons for Practice
It is crucial to be on the front foot in a TTAB proceeding, especially in building an evidentiary record in a cancellation proceeding involving years of prior use between the parties. This extends to anticipating and preparing for cross-examination of an opposing party’s witnesses. No material part of a long history of use of a mark should be left only for the opposing party to address on its own terms, especially for non-strategic reasons.