Precedential No. 18: Identity of One Party's Trial Witnesses Cannot Be Kept Secret from Other Party

Finding that Opposer Hunter Industries had established prior common-law rights in the mark PRECISION DISTRIBUTION CONTROL for irrigation sprinklers, the Board sustained its opposition to registration of the mark PRECISION for landscape irrigation nozzles and sensors on the ground of likelihood of confusion under Section 2(d). Perhaps more interesting than the Section 2(d) analysis were the Board's rulings on several evidentiary issues. Hunter Industries, Inc. v. The Toro Company, 110 USPQ2d 1651 (TTAB 2014) [precedential].

Evidentiary rulings: Hunter successfully moved to strike certain testimony and exhibits proffered by Applicant Toro. First, the Board excluded Toro's exhibits that were submitted on a flash drive because Rule 2.126 does not permit such submissions. The documents should have been submitted on paper or electronically via ESTTA. A CD-ROM containing two video files submitted by Toro was in acceptable form, since ESTTA is currently unable to accept video files. See, generally, TBMP Section 106.03.

However, the Board rejected the two video files because they had not been produced to Opposer Hunter during discovery. Toro did not dispute that the two videos fell within at least one of Hunter's production requests. Toro claimed that it produced the documents as soon as it discovered them, but it offered no reason why the videos were not found sooner.

Toro submitted seven declarations from distributors of irrigation equipment [the parties' ACR agreement permitted submission of testimony by way of affidavits or declarations]. Portions of the declarations were designated "Trade Secret/Business Confidential" under the Board's Standard Protective Order, as modified by the ACR agreement. Hunter moved to strike these declarations on the ground that Toro had over-designated as confidential the identifying information for the declarants. The Board agreed with Hunter.

A party’s right to confront an adverse witness is significantly impaired when it is prevented from knowing the name, employer and location of the witness. Although opposer’s counsel was privy to the redacted information, opposer itself practices in the relevant industry and likely is familiar with some or all of the witnesses or their employers. That kind of information may be critical when considering adverse testimony, and it generally should not be kept from a party.

Such identifying information may be protectable during discovery, but not when the individual is to be named as a witness. In short, when a party chooses to rely on the testimony of a witness at trial, that party has waived the protection provided by the Protective Order to trade secret/commercially sensitive information. The Board therefore struck the seven declarations from the record.

Priority: Applicant Toro relied on the filing date of its application, June 21, 2010, as its (constructive) first use date. Toro argued that its own mark PRECISION is suggestive, but that Hunter's mark is merely descriptive. However, the record did not sufficiently support a finding that Hunter's mark, in its entirety, is merely descriptive. In any case, Hunter presented ample evidence to show that the mark had acquired distinctiveness prior to June 21, 2010. It submitted proof of continuous use of the mark for its goods since 1992, and its sales figures and marketing expenditures were "appreciable."

Likelihood of Confusion: The Board found the word "PRECISION" to be the dominant and most significant feature of Hunter's mark, since "DISTRIBUTION CONTROL" clearly describes a precise feature of the sprinklers. Toro's mark PRECISION, the Board opined, would appear to prospective customers as a shortened version of Hunter's mark. Therefore the Board found the marks to be similar in sound, appearance, connotation, and commercial impression.

The Board found the goods to be identical in part, since the parties use their respective marks on rotating nozzles for irrigating lawns. The opposed application did not contain any limitation as to channels of trade or classes of customers, and so the Board assumed that Toro's goods moved in all the normal channels, and to all classes of purchasers, for those goods. Toro's channels necessarily overlapped with those of Hunter for its nozzles.

Hunter's mark PRECISION DISTRIBUTION CONTROL may be conceptually weak, but in light of Hunter's long use, sales, and promotion of the mark, the Board found that it is entitled to protection against registration of PRECISION for overlapping and closely related goods.

The Board recognized that purchasers for the involved goods are landscape contractors who will exercise a degree of care and deliberation in deciding to make a purchase. However, even sophisticated buyers are likely to view the subjects marks as indicating a single source when they are used on identical or closely related goods.

Balancing the relevant duPont factors, the Board found confusion likely, and so it sustained the opposition.

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TTABlog comment:  I'm guessing that this opinion was deemed precedential because of the evidentiary rulings, rather than the rather straightforward Section 2(d) analysis. What do you think?

Text Copyright John L. Welch 2014.