Thursday, March 15, 2018

Precedential No. 7: TTAB Denies Motion to Strike Disclosure Notice and Preclude Expert Testimony

In this consolidated cancellation proceeding involving registrations for the marks MONSTER SEAL A FLAT, MONSTER UP, and UNLEASH THE BEAST for "tire sealing compound," Respondent Martin moved to strike Petitioner Monster Energy Company’s notice of expert disclosure and to preclude the testimony of the named expert. The Board denied both motions, finding the notice to be timely and pointing out that Respondent may request additional time to take discovery of the expert. Monster Energy Company v. William J. Martin, 125 USPQ2d 1774 (TTAB 2018) [precedential] (Order by Interlocutory Attorney Jennifer Krisp).


The Notice: The deadline for Monster's notice of expert disclosure was July 4, 2017 (ninety days before the close of commencement of the first testimony period on October 2, 2017). See Rule 2.120(a)(2)(iii) and FRCP 26(a)(2). Because July 4th is a holiday in the District of Columbia, the due date was extended to the next day. See Trademark Rule 2.120(a)(2)(iii)). On July 5, 2017, Monster Energy filed with the TTAB its notice of expert disclosure (and it served its expert report on the same day). The notice stated the correct proceeding number, but Monster's law firm entered the wrong proceeding number at the time of electronic filing. [NB - the Rules require service of the disclosure, not filing - ed.]. On July 6th, The firm informed the Board of the error and on July 7th the Board entered the notice in the correct case and assigned it a date of July 5. [NB - the notice was properly and correctly served on Respondent on July 5th, so this seems like a wholly unnecessary exercise to this writer - ed].

Respondent Martin claimed that the notice was untimely filed. [If filing wasn't required, how could it be untimely? - ed.]. Martin did not state that he did not receive the notice (correctly captioned) on July 5th.

In the context of discovery, the Board has made clear that an “obvious typographical error” should not operate to derail the discovery process, and that it expects parties who become aware of such an error to cooperate so as to avoid unnecessary delay and increased costs. Cadbury UK Ltd. v. Meenaxi Enter., Inc., 115 USPQ2d 1404, 1407 (TTAB 2015) (parties are expected to demonstrate good faith and cooperation during discovery; a party cannot avoid discovery obligations due to an obvious typographical error in discovery requests).

The Board therefore considered the (unnecessary) filing as timely, and it denied Martin's quixotic motion to strike the notice.

Respondent's Discovery: Pointing to a seeming clash of the applicable Rules, Respondent Martin asserted that because the amended Rules require written discovery request be served at least thirty-days prior to the close of discovery (set to close on August 3rd) - see Rule 2.120(a)(3) and Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1270 (TTAB 2017) - he would be denied the right to written discovery of Monster's expert if the Board found the July 5th expert disclosure (and the expert report) acceptable. Moreover, Rule 2.120(a)(3) provides "the time to respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery." Not to worry!

The requirement in Trademark Rule 2.120(a)(3) that discovery requests be served early enough in the discovery period so that responses are due no later than the close of discovery does not, and is not intended to, preclude or encumber the opportunity to take discovery of an expert, regardless of whether the party makes an expert disclosure on or after the deadline therefor, provided that the Board is informed of the disclosure and finds it appropriate under the circumstances, so that it can issue an order that allows time for the discovery to occur.

* * *

Trademark Rule 2.120(a)(2)(iii) provides the Board wide latitude in managing a proceeding following any party’s disclosure of plans to use expert testimony, including but not limited to, suspending proceedings to allow for discovery of the expert and for any other party to disclose plans to use a rebuttal expert.

The Board therefore found no reason to preclude the expert’s testimony on the basis of Rule 2.120(a)(3), since Respondent Martin may request additional time for discovery.

The Board then suspended the proceeding under Trademark Rule 2.117(a) in light of a pending civil action between the parties.

Read comments and post your comment here.

TTABlog comment: A reader once asked whether an order issued by an interlocutory attorney can be precedential.

Text Copyright John L. Welch 2018.

4 Comments:

At 2:30 PM, Anonymous John Egbert said...

I wonder why this would be considered precedential? It seems to be rather trivial and only applicable to a specific circumstance.

 
At 2:50 PM, Anonymous Joseph K Dreitler said...

This is definitely precedential and should be. Regrettably, too many members of this bar have become game-players and engaging in such nasty practices like this. Like refusing to consent to simple requests for 30 days extensions of time. Opposing requests for extensions of time. It has gotten out of hand and the Board must stop it - and thank you Board for issuing this as precedential. I fear you may need to issue a few more on similar topics involving Discovery, dates and evidence. My only suggestion is to do what federal courts do with these cases. Put the name in lights of the lawyers who are engaging in this activity if for no other reason than as a warning to anyone else who has to deal with them to know the kind of tricks and gamesmanship they play

 
At 4:09 PM, Anonymous Joseph K Dreitler said...

John, maybe I was not clear, I see no reason why the expert report was challenged at all. My view is that trying to exclude an expert report when there was a electronic hiccup is not worthy of having to file motions and brief it and make the Board write an opinion. Especially when the report WAS served on the party who filed the motion to exclude it. As the board notes in its opinion, "However, Petitioner is correct that even the failure to inform the Board of
the timely disclosure of an expert witness is not a ground to exclude the noticed
testimony of such witness."

Seems to me that once it became clear what had happened, the parties could have agreed on the procedure and file a consent motion for extending the dates and it would have been the end of it. So why was the motion to strike and exclude filed? I won't repeat myself. "Gotcha"

 
At 4:58 PM, Blogger John L. Welch said...

Just for clarification, Joe is referring to the filing of the motion as mere gamesmanship.

 

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