Precedential No. 21: TTAB Rules That Sur-Sur-Rebuttal Expert Reports Are Never Permitted

In this consolidated opposition proceeding involving, inter alia, Applicant Coulter Venture's mark MONSTER LITE for weight lifting equipment, the parties served four expert reports: an initial report by Monster ("MEC"), a rebuttal report by Coulter, a sur-rebuttal report by MEC, and then a sur-sur-rebuttal report by Coulter. The Board granted MEC leave to serve its sur-rebuttal report, but limited it to a critique of Coulter's report. The Board then nixed Coulter's sur-sur-rebuttal report, ruling that sur-sur-rebuttal reports are never permitted. Monster Energy Company v. Coulter Ventures, LLC, 2023 USPQ2d 916 (TTAB 2023) (Order by Katie Bukrinsky, Interlocutory Attorney).

MEC's initial expert report included the results of a survey purportedly showing an overlap of consumers for the respective goods of the parties. Coulter countered with an expert report critiquing the survey and offered its own survey results.

MEC then served its sur-rebuttal report, without seeking leave of the Board. However, MEC then sought leave to serve the sur-rebuttal report, which the Board granted, relying on NewEgg Inc. v. Schoolhouse Outfitters, LLC, 118 USPQ2d 1242, 1244 (TTAB 2016).

In NewEgg, the Board held that “under appropriate circumstances, a sur-rebuttal expert report would be proper as long as a party that wishes to provide a sur-rebuttal expert report promptly seeks leave to do so” and if consideration of the sur-rebuttal report would “serve the interest of fairness [and] benefit the Board in its ability to make a just determination of the merits of this case.” 118 USPQ2d at 1244.

As to MEC's sur-rebuttal report, the Board observed that, as in NewEgg, the report includes "new evidence in the form of a different survey performed according to a different methodology on the issue of likelihood of confusion." NewEgg, 118 USPQ2d at 1244. The Board found that "it would serve the interest of fairness, and allow the Board to make a just determination of the merits of the case, to allow MEC to submit expert testimony opining on the survey in the [Coulter] Rebuttal."

Specifically, the only portion of [MEC's] Sur-Rebuttal that the Board allows is a critique of [Coulter's] Rebuttal, with no presentation of new evidence. Any portion that constitutes bolstering of the [original MEC] Report will not be considered.

As to Coulter's sur-sur-rebuttal expert report, neither the Federal Rules of Civil Procedure nor the Trademark Rules of Practice expressly prohibits such reports. Whether to allow any expert reports other than those expressly provided for in Fed. R. Civ. P. 26(a) and (e) is left to the discretion of the tribunal. And, or course, the Board has the inherent authority to manage its docket. Coffee Studio LLC v. Reign LLC, 129 USPQ2d 1480, 1482 n.7 (TTAB 2019); Carrini, Inc. v. Carla Carini, S.R.L., 57 USPQ2d 1067, 1071 (TTAB 2000).

The Board drew a line in the sand, holding that "sur-sur-rebuttal expert reports will not be permitted under any circumstances."

Continuously allowing expert rebuttal would create a situation “where there would be no finality to expert reports.... Such a system would eviscerate the expert report requirements of Rule 26, would wreak havoc in docket control, and would amount to unlimited expert opinion presentation.”  *** A bright-line rule that sur-sur-rebuttal expert reports will not be permitted under any circumstances provides clarity for parties preparing expert testimony that there will be finality to the exchange of expert opinions. Any further challenges to the opposing party’s expert testimony may be addressed through deposition and cross-examination of that expert.

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TTABlogger comment: So, sir, sur-rebuttal expert reports may be allowed. But as to sur-sur-rebuttal reports, no sir.

Text Copyright John L. Welch 2023.