May 4, 2011

TTAB: Prompt Filing of Supplemental Response Cures Procedural Deficiency in Expert Disclosures

TTAB: Prompt Filing of Supplemental Response Cures Procedural Deficiency in Expert Disclosures

The Trademark Trial and Appeal Board (“Board”) held that Respondent’s timely-filed expert testimony should not be excluded for procedural deficiencies when those deficiencies were promptly corrected before the close of discovery. Gen. Council of the Assemblies of God dba Gospel Publishing House v. Heritage Music Foundation, Cancellation No. 92051525 (TTAB February 3, 2011) (precedential).

In inter partes proceedings before the Board, a party planning to use an expert witness must disclose to the other party information about the witness and his or her testimony. The disclosure of expert testimony is due 120 days after initial disclosures are due (30 days before the close of the discovery period). Trademark Rule 2.120(a)(2). 

Under Trademark Rule 2.120(a)(2), “[d]isclosure of expert testimony must occur in the manner and sequence provided in Federal Rule of Civil Procedure 26(a)(2).” That is, a party must disclose the identity of the witness providing expert testimony, and a written report prepared and signed by the witness that includes:

–         the witness’s written report and the basis for same;

–         the facts or data considered by the witness in preparing the opinion;

–         any exhibits;

–         the witness’s qualifications, including a list of publications for the past 10 years;

–         a list of all cases from the past 4 years for which the witness testified; and

–         the witness’s compensation for the report and testimony.

Fed. R. Civ. P. 26(a)(2).

In the instant action to cancel Respondent’s registration, Respondent timely disclosed its expert to Petitioner on the date expert disclosures were due. The disclosure included the expert report, the facts considered by the witness, and the witness’s curriculum vitae.

Petitioner moved to strike (exclude) the testimony to be offered by the expert because the disclosure did not include the witness’s signature on the report, a list of her publications, a list of cases in which she testified as a witness, or her compensation. Respondent argued against the motion and supplemented its expert disclosures to correct the noted deficiencies.

The Board held that prompt supplementation of the technically deficient but timely-served expert disclosure cured the procedural deficiencies. In a footnote, the Board noted that “it is also expected that, in instances where timely expert disclosures are incomplete, the parties will cooperate between themselves to resolve the matter.”

Accordingly, if any deficiencies are noted in timely-served disclosures, parties should act quickly to supplement before the close of the discovery period.

Contributor: Elizabeth K. Brock, Harness, Dickey & Pierce, PLC, Troy, MI

Reprinted with permission from INTA Bulletin, Vol. 66, No. 9 – May 1, 2011, Copyright © 2011 the International Trademark Association.