Tuesday, October 11, 2011

Precedential No. 26: TTAB Grants Motion to Exclude 26 Belatedly-Identified Trial Witnesses

Better late than never didn't work for this Opposer, when the Board granted Applicant's motion to quash and to exclude the testimony of 26 [count 'em, 26!] potential witnesses first identified in amended and supplemental disclosures served six-months after the last date for Opposer's pre-trial disclosures. As to the underlying facts, you, dear reader, are invited to slog through them yourself. Great Seats, Inc. v. Great Seats, Ltd., 100 USPQ2d 1323 (TTAB 2011) [precedential].

Opposer contended that any failure to disclose the witnesses was harmless, and was justified because Opposer was concentrating its efforts on settlement. It further argued that these witnesses were crucial to its case.

The Board applied the five-factor test of Southern States Rack & Fixture in finding that the belated identification of these witnesses resulted in "unfair surprise to applicant and deprived applicant of any opportunity to take discovery from them." Applicant could not "cure the surprise" without moving to quash or seeking to re-open discovery, or preparing for unplanned cross-examination of the witnesses during their trial testimony. And the late identification disrupted the trial schedule.

The testimony of the witnesses may be important since Opposer has the burden of proof on the issue of priority, and so this factor may favor Opposer. However, it has two other witnesses who can address the issue of prior rights in the GREAT SEATS mark.

Opposer's explanation suggests that it "only fully considered how it would establish its claims after settlement discussions ended."

To allow all of the new potential witnesses to testify under these circumstances would overlook and essentially excuse opposer's failure to supplement discovery and reward its correspondingly late disclosure of these witnesses. Therefore, this factor strongly favors applicant.

On balance, the Board found Opposer's actions "neither harmless nor substantially justified," and it found the "estoppel sanction" appropriate.

As to a 27th belatedly-named witness, one Mr. Kelly, his identify was disclosed in opposer's initial pre-trial disclosures (but not during discovery), and therefore he was allowed to testify, but only after Applicant has had the opportunity to take his discovery deposition.

And so the Board re-sent the trial periods.

TTABlog note: The same parties were involved in a cancellation proceeding in which a registration owned by the Opposer here was cancelled as void ab initio on the ground that the underlying application was not filed by the owner of the mark. [TTABlogged here].

Text Copyright John L. Welch 2011.


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