Thursday, April 14, 2011

Precedential No. 10: TTAB Okays Opposer's Pre-Trial Disclosures, Denies Motion to Strike Trial Testimony

Applicant Carl's Bar moved to strike Opposer's trial testimony and exhibits, asserting that Opposer did not timely serve its pre-trial disclosures nor file them with the Board, and further that the information Opposer did provide prior to trial was insufficient. The Board, however, found that Opposer did serve its disclosures in timely fashion, ruled (not surprisingly) that pre-trial disclosures need not be filed with the Board, and concluded that Opposer's disclosures were adequate. Carl Karcher Enterprises, Inc. v. Carl's Bar & Delicatessen, Inc., 98 USPQ2d 1370 (TTAB 2011) [precedential].

Opposer served its pre-trial disclosures on October 13, 2009, one day before the due date. Subsequently Opposer filed for summary judgment, and when that motion was denied on August 11, 2010, the Board reset the deadline for opposer's pretrial disclosures. The deadline was again reset in a September 15, 2010 order. This rescheduling was merely routine, and took into account "the possibility that opposer had not served pretrial disclosures prior to filing its motion for summary judgment, or that circumstances had changed since the filing of any earlier disclosure, such that a new or amended disclosure would be appropriate."

The Board ruled that there was no need for Opposer to re-serve the disclosures each time the date was re-set. [Doh!] The only obligation would be to supplement or the disclosures as necessary.

Filing?: Trademark Rule 2.121(e) does not require a party making a pretrial disclosure to file same with the Board. Moreover, "there is no significant reason why a party should be required to file its pretrial disclosures with the Board."

Alerting the Board to the existence of a party's witness list is not a purpose of the pretrial disclosure requirement. This is so because the Board does not preside at the taking of testimony, or at a pretrial conference. See TBMP §702 (2d ed. rev. 2004). Instead, all testimony is taken out of the presence of the Board, and the written transcripts thereof, together with any exhibits thereto, are then submitted to the Board. TBMP § 702 (2d ed. rev. 2004).

Adequacy of the Disclosures: Opposer named its potential witness and provided a general summary of the topics upon which the witness was expected to testify and a general summary of the types of documents and things to be introduced during the testimony of the witness. '[T]he circumstances of this case do not involve presentation of a witness or exhibits not revealed by the original disclosure and thus there is no issue regarding a failure to timely amend or supplement the disclosure."

And so the Board denied the motion and issued a new scheduling order for the remainder of the case.

TTABlog comment: WYHDTP? Would you have deemed this precedential?

Text Copyright John L. Welch.


At 11:19 AM, Anonymous Alex Butterman said...

I often think that one of the main motiviations for the Board to make a case precedential, especially in procedural decisions, is to highlight a particular practice of the bar to offer the bar its feedback on that practice. Usually, the practice is a negative one that the Board wants to negatively reinforce. In this case, I'm not sure if the Board is commending the Opposer for properly serving its pretrial disclosures and emphasizing that the disclosures do not need to be filed with the TTAB, or if it is critizing/scapgoating the applicant's attorney for serving a useless motion.

At 10:02 AM, Anonymous Paul Reidl said...

Footnote 4 is very confusing. The rules say that the adverse party should attend the deposition under protest and then "promptly" file a motion to strike. This footnote says something very different. It says that you should file a motion prior to the taking of the testimony, and if problems come up during the testimony wait until the trial briefing to move to strike. Very curious -- especially in a precedential decision.


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