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[hauteshots]

I am current representing myself in trademark opposition case in front of the TTAB. I need to serve a subpoena on third parties in (3) different states for production of documents.

I searched the TTAB procedural manual up and down and there is nothing listing in there regarding this procedure. I also called the TTAB and they told me that I need to contact the Federal court in the district of the person I want to serve and ask them to issue the subpoena. I called one of the district courts and they told me that only an officer of the court, such as an attorney, can issue a subpoena to a third party. That is unless I have an open case in their court then a judge can issue it if I'm representing myself. Obviously I don't have an open case in any of three district courts.

I have already exhausted some $20k in legal fees fighting this case and and I'm told by 3 different IP attorney's that have thoroughly reviewed all of my case files that I can and will win this case once my evidence is presented to the TTAB. However, the applicant I'm opposing is a very wealthy attorney who hired a huge IP firm to represent him and they are basically trying to make me quit by bankrupting me. They are doing everything possible to keep this case going hoping that I will give up. I can no longer afford to hire an attorney to represent me on this case and thus I cant get an attorney to issue the subpoena for me.

I have a right to represent myself and thus I should be afforded the same rights that the opposing council is granted in order to defend myself properly. Does anyone know what I can do to get these subpoenas issued?

Thank you for your time.

[JSonnabend]

My understanding is the same as what you've been told, namely, that you will need to either file a case or hire an attorney.  I have not confirmed this conclusion, of course, having never had the issue arise.

- Jeff

[khazzah]

I can no longer afford to hire an attorney to represent me on this case and thus I cant get an attorney to issue the subpoena for me.

I don't litigate, but my two cents is that you should look for very limited local representation, ie, hire an attorney to serve the subpoena for you but not to represent you on any other part of the case. Reducing the scope of the representation should reduce the cost significantly. Now, I have no idea how common this is, or how likely you are to find an attorney willing to take on this limited scope. But seems like it's worth exploring.

[Kaitlin]

If the OP's question actually relates to the serving of the subpoena, then he can certainly have that done by ANY person over age 18 who is not a party.  It does not have to be an attorney.  He just can't do it himself.  FRCP sec. 45. 

Rule 45. Subpoena
[....]

(b) Service.

   (1) By Whom; Tendering Fees; Serving a Copy of Certain Subpoenas.

   Any person who is at least 18 years old and not a party may serve a subpoena. Serving a subpoena requires delivering a copy to the named person and, if the subpoena requires that person's attendance, tendering the fees for 1 day's attendance and the mileage allowed by law. Fees and mileage need not be tendered when the subpoena issues on behalf of the United States or any of its officers or agencies. If the subpoena commands the production of documents, electronically stored information, or tangible things or the inspection of premises before trial, then before it is served, a notice must be served on each party.

FRCP sec. 45 [Emphasis added].

If, on the other hand, the problem isn't with service but with getting the subpoena issued in the first place, that's another matter. 

I'm a bit rusty in my litigation skills, but this road block doesn't sound right to me.  I do not see why he would not be entitled to put his request in with the clerk of the court.  If the clerk's office says otherwise, it may just be that they aren't familiar with the District Court's role in issuing subpoenas for actions before the TTAB.  I wonder if bringing the relevant TTAB rules and US Code -- showing that the TTAB not only follows the Federal Rules of Civil Procedure, but uses the District Courts' subpoena power -- might help open that door.  Or possibly he could see if one of the judges' law clerks could spare him some time to help him explain what he's asking to the clerk's office? 

The rule on issuing subpoenas says nothing about needing to be an officer of the court, its just that we attorneys get to send them out on our own while parties need to go through the clerk's office.

Rule 45. Subpoena
(a) In General.
[....]
   (3) Issued by Whom.

   The clerk must issue a subpoena, signed but otherwise in blank, to a party who requests it. That party must complete it before service. An attorney also may issue and sign a subpoena as an officer of:

   (A) a court in which the attorney is authorized to practice; or

   (B) a court for a district where a deposition is to be taken or production is to be made, if the attorney is authorized to practice in the court where the action is pending.

FRCP sec. 45 [Emphasis added].


(The only thing I can think of which an attorney can do that a pro se litigant legally can't is to review sensitive competitors' information submitted under protective order.) 

[khazzah]

If the OP's question actually relates to the serving of the subpoena, then he can certainly have that done by ANY person over age 18 who is not a party.  It does not have to be an attorney.  He just can't do it himself.  FRCP sec. 45. 

Ah ... so if OP wants to draft the subpoena himself, he can get any adult-not-a-party to serve the subpoena. Gotcha.

Just out of curiousity, and clearly not afraid to show my ignorance -- is this what process servers do?

[Kaitlin]

Yes, that's what process servers do, but you could also send your 18- or 19-year-old kid.  (Not that that's necessarily a wise choice. )

NOTE, however, that he cannot just draft it himself and then get it served.  That's what attorneys get to do.  Since, as officers of the court, we are subject to its ethical rules and can get disbarred for shenanigans, they trust us to be issuing the subpoena appropriately.

He does need to go through the clerk's office, I expect.

[Kaitlin]

@the OP
I just noticed you've put your name on your post.  Please go in and delete that ASAP.  Your opponents can find you here and anything you post can and probably will be used against you in litigation.  You don't want the real names of any people or businesses or trademarks to appear in a public forum discussing an active or potential case.  (And if there's any way to connect your screen name to you or your business or your trademark, you should change that as well.)  Remember, we're broadcasting this to the world.

[Kaitlin]

More on procedure....

I checked in Gilson on Trademarks, and in discussing using the subpoena power on 3d parties, there's a footnote which seems relevant.  If the subpoena relates to a deposition, and probably in other cases as well, it seems you need to get the TTAB to certify the deposition notice, as a preliminary step to getting the district court to issue the subpoena.  (This also rings a bell in my memory.)  Here's the footnote:

fn. 389  Fed. R. Civ. P. 30(a); TBMP § 404.03(a)(2). See Electro-Coatings, Inc. v. Precision National Corp., 204 U.S.P.Q. 410 (T.T.A.B. 1979) . Once the nonparty deposition notice is served, the T.T.A.B. will certify it so that it may then be filed in the District Court in the district where the nonparty resides. The District Court then issues a subpoena, which is enforceable in the District Court and not before the T.T.A.B. A motion to quash is the appropriate means to challenge the subpoena in the District Court.

3-9 Gilson on Trademarks § 9.02 fn. 389.

IMPORTANT PRACTICE TIP: in that footnote Gilson also advises that

   A party seeking a subpoena in District Court should file a motion with the Board to suspend proceedings so that discovery does not close before the court issues the subpoena.

Id.

[hauteshots]

Yes, I'm sorry the problem is not serving the subpoena it's issuing it. I need to issue in (3) states - NY, Georgia, and Texas. I reside in Nevada. I started with calls to the Clerk of Court for Atlanta's district and that is when I was told that it could not be done without and attorney. When i tried, kindly arguing about TTAB procedure, and told her that it was actually the TTAB that directed me to call the District Court in the first place she got very angry, listed off a bunch of procedural statues for issuing subpoenas and told me to call an attorney not Clerk of Court. Since I reside no where near Georgia, Texas, or NY it's not like I can go down their and argue in person.  I would love to call her back and be able to tell her she is wrong but not sure what to tell her.

My next option is to contact some friends who are attorneys in NY, Texas, and Georgia and see if I can get them to issue them for me.

[Kaitlin]

Depending on their circumstances, your attorney friends may be reluctant to do this because it would mean officially representing you. 

I'd suggest checking again with the TTAB and explaining the reaction you got from the district court and asking whether you need to get what you want served "certified" by the TTAB first. 

Then, I suggest starting with the clerk of court at the NY district court.  NY sees a LOT of trademark cases and a district court there may be more familiar with issuing subpoenas for an action before the TTAB.  If they help walk you through it, make sure you note down all the procedural steps (and relevant rule numbers) so that you can use that to inform your dealings with the Atlanta court's clerk.  Note, however, that while all district courts are subject to the same over-all rules of procedure (the Fed. Rules of Civil Procedure), they also each have their own peculiar rules as well for certain matters. 

I don't know if any attorneys would do this, but you might see if someone experienced in TTAB litigation would be willing to serve as a pro se advisor to you, to help explain procedure to you.  Trying to wend your way through the legal system without an understanding of procedure is like trying to win a board game without having ever learned the rules on the lid.

[hauteshots]

I was also wondering if they could issue the subpoena without representing me, and I spoke to one of them and they are under belief that they can do so. The reasoning was because only an attorney who is licensed in the state that the subpoena needs to to be issued can do it. Thus, since there are three different states, I would need (3) different attorneys, in three different states listed as representing me? I dont think the TTAB would like it if I started filing   to add (3) new attorneys just to issues subpoenas and then file again to remove them....

[hauteshots]

LOL, Kaitlin, I read the TTAB procedural manual from cover to cover and I know it inside and out. I also consulted with 2 IP attorneys and all of them had never ran into this situations. One did reference:

Part of TBMP 404 which outlines details for the attendance of a deponent - and specifies the United States district court in the federal judicial district where the deponent resides or is regularly employed must issue the subpoena. 

404.03(a)(2) Person Residing in the United States - Nonparty
37 CFR § 2.120(b) Discovery deposition within the United States.

... The responsibility rests wholly with the party taking discovery to secure the attendance of a
proposed deponent other than a party or anyone who, at the time set for the taking of the
deposition, is an officer, director, or managing agent of a party, or a person designated under
Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure.

If a proposed deponent residing in the United States is not a party, or a person who, at the time
set for the taking of the deposition, is an officer, director, or managing agent of a party, or a
person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(3) to testify on behalf of a party, the
responsibility rests wholly with the deposing party to secure the attendance of the proposed
deponent. [Note 1.] If the proposed deponent is not willing to appear voluntarily, the deposing
party must secure the deponent's attendance by subpoena, pursuant to 35 U.S.C. § 24 and Fed. R.
Civ. P. 45. [Note 2.]

The subpoena must be issued from the United States district court in the federal judicial district
where the deponent resides or is regularly employed. [Note 3.]

If a person named in a subpoena compelling attendance at a discovery deposition fails to attend
the deposition, or refuses to answer a question propounded at the deposition, the deposing party
must seek enforcement from the United States District Court that issued the subpoena; the Board
has no jurisdiction to enforce the subpoena. [Note 4.]

[Kaitlin]

I was also wondering if they could issue the subpoena without representing me, and I spoke to one of them and they are under belief that they can do so. The reasoning was because only an attorney who is licensed in the state that the subpoena needs to to be issued can do it. Thus, since there are three different states, I would need (3) different attorneys, in three different states listed as representing me? I dont think the TTAB would like it if I started filing   to add (3) new attorneys just to issues subpoenas and then file again to remove them....

While it's conceivable they may not need to represent you before the TTAB, under the ethical rules you would need to be considered a client. 
If they're already working for a large firm, representing you for this wouldn't make much difference for their malpractice rates.  But if they're solo or in a small firm and they weren't already covered by malpractice for litigation, they'd want to make sure this wouldn't mean their malpractice carrier would require them to list it as a new area of practice--which could mean a hike in their rates.  Maybe not a problem for them, but something to consider.

[Kaitlin]

Part of TBMP 404 which outlines details for the attendance of a deponent - and specifies the United States district court in the federal judicial district where the deponent resides or is regularly employed must issue the subpoena. 

404.03(a)(2) Person Residing in the United States - Nonparty
37 CFR § 2.120(b) Discovery deposition within the United States.

... The responsibility rests wholly with the party taking discovery to secure the attendance of a
proposed deponent other than a party or anyone who, at the time set for the taking of the
deposition, is an officer, director, or managing agent of a party, or a person designated under
Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure.

Sounds to me like you should take a look at that note in Gilson.  The fact that the responsibility for getting the deponent is yours doesn't mean that you automatically have the authority to subpoena him on your own.  You're the driver of the car, but you still need the gas station. 
I'd check into that bit in the Gilson footnote about getting your notice of deposition certified.

[hauteshots]

I will look into the Gilson note first thing on Monday. I thank all of you for your helpful insight into this extremely mentally, physically, and financially draining matter!

Have good weekend!