Precedential No. 21: TTAB Excludes Opposer's Sole Trial Witness Due To Failure to Previously Identify Her

Opposer Spier Wines noticed the testimony deposition of one witness, Ms. Eve Jell, but she was first identified as a potential witness in Spier's pre-trial disclosures. In its initial disclosures, Spier had identified another person who had subsequently left the company. Applicant Shepher moved to strike the pre-trial disclosures and to quash the notice of taking testimony due to Spier's failure to timely identify Ms. Jell in a supplement to its initial disclosures or otherwise. The Board, through Interlocutory Attorney Elizabeth J. Winter, granted the motion. Spier Wines (PTY) Ltd. v. Ofer Z. Shepher, 105 U.S.P.Q.2d 1239 (TTAB 2012) [precedential].


To determine whether Spier's failure to identify Ms. Jell in its initial disclosures, in supplemental initial disclosures, or in response to interrogatories, was substantially justified or harmless, the Board weighed the five factors set forth in Great Seats, Inc. v. Great Seats, Ltd., 100 USPQ2d 1323 (TTAB 2011) [precedential]:

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) the importance of the evidence; and
5) the non-disclosing party’s explanation for its failure to disclose the evidence.

The Board found that Spier could have identified Ms. Jell, its international sales director, at least as early as November 2010, when it informed Applicant that the previously-identified employee had left the company. The failure to disclose Jell's identity sooner than pre-trial disclosures resulted in surprise to applicant (factor 1), and was prejudicial, not harmless, because Applicant was deprived of the opportunity to seek discovery of her. Spier provided no satisfactory explanation for the failure to disclose her identity (factor 5).

As to the importance of the evidence (factor 4), the Board noted that Jell's testimony was not the only evidence that Spier had to offer: Spier submitted the pleaded registrations and several notices of reliance. It did not appear that her testimony (on industry awards, pronunciation of the term SPIER, and perceptions of US customers), would be "particularly critical or persuasive in the ultimate determination of the merits of the case by a panel of Board judges."

As to whether Applicant could cure the surprise (factor 2), the Board pointed out that discovery had closed more than one year previously, and further that the proposed deposition on written questions (Ms. Jell resides in South Africa) would deprive Applicant of the opportunity to confront the witness and cross-examine her. The Board therefore concluded that Applicant Shepher had little, if any, ability to cure the surprise.

Finally, re-opening the discovery period to allow a discovery deposition on written questions would significantly disrupt the proceeding (factor 3).

Even aside from the Great Seats analysis, Spier's failure to disclose the identity of Ms. Jell effectively misled Applicant as to the identity of potential trial witnesses. Ms. Jell should have been identified in initial disclosures as a person likely to have discoverable information that Spier might use to support its claims.

[T]he Board concludes that opposer failed to timely identify Ms. Jell as a person knowledgeable about the issues involved in these proceedings, and that such failure was neither harmless nor substantially justified. Essentially, opposer treated the initial and pretrial disclosure requirements as unrelated events, rather than recognizing that disclosures and discovery responses should be viewed as a continuum of inter partes communication designed to avoid unfair surprise and to facilitate fair adjudication of the case on the merits.

Consequently, the Board applied the "estoppel sanction" and precluded the testimony of Ms. Jell.

TTABlog comment: It might be a good idea to add an additional date to your docketing calendar for TTAB proceedings: say midway through the discovery period, docket a date for "confirming accuracy, currency, and completeness of initial disclosures."

Text Copyright John L. Welch 2012.