The opinion of the court was delivered by: Baylson, J.
MEMORANDUM RE: MOTIONS TO QUASH SUBPOENAS
Respondent Roller Bearing Company of America, Inc. ("RBC" or "Respondent") seeks discovery in support of its petition to disqualify Peer Bearing Co.'s ("Peer") counsel (the "Petition to Disqualify") from Peer's opposition (the "Peer Opposition") to RBC's trademark application that is currently pending before the United States Patent and Trademark Office (the "USPTO") through two sets of subpoenas served on third parties pursuant to 35 U.S.C. § 24:
1. The first set of subpoenas seeks discovery from Movants Pepper Hamilton LLP and two Pepper Hamilton LLP attorneys, David Richman and Matthew D. Janssen; and
2. The second set of subpoenas seeks discovery from SKF USA Inc. and SKF's President and Chief Operation Officer, Poul Jeppesen (collectively "Movants").
Movants filed Motions to Quash the Subpoenas (ECF Nos. 1 and 10) (the "Motions").
The initial and threshold question presented by the Motions is whether 35 U.S.C. § 24 provides courts with the power to issue subpoenas in support of petitions to disqualify attorneys from proceedings before the USPTO Trade Mark Trial and Appeals Board (the "TTAB"). This is apparently a case of first impression. For the reasons below, the Court finds that § 24 does not provide a federal district court with authority to issue RBC's subpoenas, and, therefore, Movants' Motions to Quash are GRANTED.
The Court provides only a short summary of the events leading up to RBC serving the subpoenas on Movants, because detailed facts are not germane to the question of whether 35 U.S.C. § 24 authorizes this Court to issue subpoenas in support of petitions to qualify.
RBC, SKF and Peer, a wholly owned subsidiary of SKF, are ball bearing manufacturers embroiled in a lengthy dispute regarding RBC's application to trademark certain names for ball bearings (the "Ball Bearing Names"). A number of ball bearing manufacturers, including SKF and Peer, opposed RBC's trademark application, claiming that the Ball Bearing Names cannot be trademarked because they are standard industry names.
RBC challenged SKF's and Peer's rights to oppose its trademark application based on a prior deal between RBC and SKF in which SKF sold part of its business to RBC. The dispute went to arbitration, and the panel rendered an interim award and a final award that:
1. Enjoined SKF from opposing RBC's trademark application because SKF had sold its interest in using the Ball Bearing Names to RBC, but
2. Declined to enjoin Peer from opposing RBC's trademark application, because SKF had acquired Peer after its deal with RBC, and Peer has an independent interest in using the Ball Bearing Names.
SKF subsequently withdrew its opposition; Peer continues to pursue its opposition.
RBC subsequently filed its Petition to Disqualify in the Peer Opposition, and served two sets of subpoenas requesting discovery (both documents and depositions) from Movants in support of its petition. Movants request that the Court quash RBC's subpoenas.
Movants*fn1 initially believed that RBC's subpoenas were for discovery in the Peer Opposition and argued that RBC's subpoenas should be quashed pursuant to the USPTO's rules for discovery in opposition proceedings, as set forth in the TTAB Manual of Procedure (the "TBMP"), (3d ed., Rev. 1, June 2012), http://www.uspto.gov/ trademarks /process/appeal/tbmp_3rd_ed_rev_1.pdf. *fn2
RBC responded (ECF 5) that it was not seeking discovery in the Peer
Opposition, but in support of its Petition to Disqualify.*fn3