United States District Court, N.D. California
ORDER RE: MOTION FOR LEAVE TO SERVE SUBPOENAS Re: Dkt. No. 1
MARIA-ELENA JAMES, Magistrate Judge.
On March 23, 2015, Movant Toni Brattin & Co., Inc. filed a motion in this Court seeking an order allowing it to serve Federal Rule of Civil Procedure 45 subpoenas by means other than personal service on Respondents Mosaic International LLC, the Tonytail Company, and Ms. Mia Minnelli-Kaminski, the alleged principal and owner of co-respondents. Dkt. No. 1. Brattin also seeks an award of costs. Id. The Court has received no response from any of the Respondents. Having considered Brattin's papers and the relevant legal authority, the Court issues the following order.
Brattin has petitioned to cancel U.S. Trademark Registration No. 4, 194, 741 for the mark TONY PONY on the grounds of likelihood of confusion and the registrant's fraud on the U.S. Patent and Trademark Office in Toni Brattin & Co., Inc. v. Mosaic International, LLC, Cancellation No. 92056844 (the "Proceeding"), pending before the U.S. Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. Kepchar Decl. ¶ 3, Dkt. No. 1-1. The TONY PONY mark is owned by Mosaic, a company Brattin believes to be formed and solely owned by Ms. Mia Minnelli-Kaminski. Id. Ms. Minnelli-Kaminski is also the principal and CEO of The Tonytail Company, Inc., a hair accessory company that she operates with her husband, Scott. Id. While Mosaic is a party to the Proceeding, Ms. Minnelli-Kaminski and Tonytail are not. Id. Brattin asserts that Tonytail has sold and continues to sell products under the TONY TAIL mark that is the subject of the Proceeding.
As petitioner in the Proceeding, Brattin is to submit trial testimony and other evidence to the Board. Id. ¶ 4. In a footnote, Brattin states that trial testimony in Board proceedings is generally submitted by sworn deposition. Mem. at 2 n.2. Brattin has noticed the taking of trial testimony in the Proceeding from Mosaic and Tonytail, through Ms. Minnelli-Kaminski. Kepchar Decl. ¶ 4. According to Brattin, Respondents have been "completely uncooperative" and through their counsel, Andrea Hence Evans, have expressly refused to appear voluntarily. Id.
In order to obtain Respondents' testimony in the Proceeding, Brattin's counsel has now taken steps to serve Respondents with subpoenas under Federal Rule of Civil Procedure 45. Id. ¶ 5. Copies of the subpoenas were served on Mosaic's counsel, Ms. Evans, in the Proceeding. Id. But Ms. Evans has repeatedly declined requests to accept service of the subpoenas on behalf of Respondents, and Brattin asserts that Respondents instructed Ms. Evans not to accept service. Id. Brattin also engaged Capitol Process Services, Inc., Washington, D.C., to serve such subpoenas to Mosaic and Tonytail through Ms. Minnelli-Kaminski. Id. Capitol Process Services made attempts to serve Ms. Minnelli-Kaminski on several occasions between November 13, 2014 and January 11, 2015. Id. ; see also Affidavits of Attempted Service, attached to Kepchar Decl. These attempts were unsuccessful. Among other things, Brattin contends that Ms. Minnelli-Kaminski's husband forcefully removed a process server from Mosaic's and Tonytail's offices in Pleasant Hill, California, and that Ms. Minnelli-Kaminski feigned absence from the Pleasant Hill facility when a process server requested her presence. Mem. at 2.
As a result of the difficulty in obtaining Respondents' trial testimony, Brattin has moved the Board for an extension of the trial schedule and later to suspend the proceeding. Kepchar Decl. ¶ 6. Both motions were granted. Id.
Brattin now seeks an order from this Court permitting it to serve Respondents with the subpoenas by a means other than personal service. Mot. at 1. Specifically, Brattin seeks an order (1) allowing it to effect service of trial testimony subpoenas on the date Brattin sends a copy of the subpoenas by overnight courier addressed to Mosaic and Tonytail's place of business and serving copies of the subpoenas on opposing counsel, Ms. Evans, in the Proceeding; and (2) awarding Brattin costs it incurred as result of Respondents' evasion of personal service and in bringing this Motion. Id. Brattin served this motion on Respondents by overnight delivery. Proof of Service, Mem. at 6.
Brattin did not provide the Court with copies of the subpoenas it seeks to serve.
A. Service by Alternative Means
The issue before the Court is whether Respondents may be served with subpoenas for their trial testimony in the Proceeding before the Patent and Trademark Office ("PTO") by means other than personal service. As an initial matter, the Court has subpoena authority under 35 U.S.C. § 24, which provides in pertinent part:
The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of ...