Precedential No. 32: TTAB Strikes Untimely Supplemental Expert Report

In this 23-year old proceeding involving the mark COHIBA for cigars, the Board rejected a supplemental expert report submitted by respondent on the same day as its pretrial disclosures. The Board first found that the Supplemental Report did not make the original expert report complete or accurate, but instead was an improper attempt to bolster the expert's original opinions with new examples and illustrations. Then, applying the Great Seats factors, the Board found that the untimely disclosure of the Supplemental Report was not substantially justified or harmless. Empresa Cubana Del Tabaco d.b.a Cubatabaco v. General Cigar Co., Inc., 2020 USPQ2d 10988 (TTAB 2020) [precedential] (Order by Rebecca Stempien Coyle, Interlocutory Attorney).

FRCP 26(c) permits supplementation of an expert report "if the party learns that in some material respect the disclosure ... is incomplete or incorrect." Any such supplementation must be disclosed "in a timely manner." As to supplementation of an expert report, the additions or changes "must be disclosed by the time the party's pretrial disclosures are due." FRCP 26(e)(1()A) and (e)(2).

“A supplemental report which seeks to clarify an expert’s earlier opinions or provides new examples and illustrations to bolster them is not proper supplementation.” Gemological Inst. of Am., 111 USPQ2d at 1562 (citing Akeva, 212 F.R.D. at 310).

Permissible Supplementation?: Respondent argued that the Supplemental Report was permitted because a determination of likelihood of confusion is based on facts at the time of trial, and the original report was submitted 32 months previously and was now incomplete. The Board disagreed. The 32-month gap does not by itself "permit a deviation from the narrow scope of permissible supplementation under FRCP 26(e)."

While the Board may allow, in appropriate situations, parties to supplement the factual record during trial, Respondent does not demonstrate that the Supplemental Report corrects, clarifies, or fills in a gap in the Original Report that rendered the original disclosure inaccurate or misleading. Respondent’s contention that the new information is necessary for the Board to evaluate Mr. Hacker’s opinion, and to "to show that [his] expert opinion … remains valid in light of current facts" is not a basis for supplementation under the Rule.

Exclusion? An untimely supplementation may still be accepted if the untimely disclosure was substantially justified or harmless. The Board applies the following five factor test:

"1) the surprise to the party against whom the evidence would be offered; 2) the ability of that party to cure the surprise; 3) the extent to which allowing the testimony would disrupt the trial; 4) importance of the evidence; and 5) the nondisclosing party’s [or the late disclosing party’s] explanation for its failure to disclose the evidence.: Gemological Inst. of Am., 111 USPQ2d at 1562 (quoting Great Seats, 100 USPQ2d 1323, 1327 (TTAB 2011) (internal citation omitted)); see also ProMark, 114 USPQ2d at 1240.

The first factor favored petitioner, since it had already presented its case-in-chief based on prior discovery, with no indication that respondent intended to supplement its expert report. The second and third factors also favored petitioner. The discovery period ended two years ago and so the ability to cure the surprise was significantly diminished. "Reopening discovery at this late stage in this twenty-three year old proceeding would cause further disruption and delay."

The Board found that the fourth factor, weighed in favor of General Cigar because, according to General Cigar, it supported the Original Report and its conclusions, and so the Board deemed the Supplemental Report “cumulative” and of “marginal importance.” Finally, as to the fifth factor, the Board noted that this case was suspended or dates extended numerous times after service of respondent's Original Report (on May 31, 2017) , and yet respondent waited until December 2019, just prior to its own pre-trial disclosures, to ask the expert witness if there were any factual developments of relevance to his Original Report.

Respondent should have inquired into the need to “supplement” the Original Report earlier in this proceeding or informed Petitioner that Respondent was going to update the Original Report to reflect new information that arose after May 2017.

The Board concluded that respondent's failure to timely disclose the Supplemental Report was not substantially justified or harmless, and so it granted petitioner's motion to strike the report.

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TTABlogger comment: At page 7 of the opinion, the Board said "the Supplemental Report was timely under Fed. R. Civ. P 26(e)(2)," but in its conclusion the Board called the submission "untimely" Are you confused?

Text Copyright John L. Welch 2020.