February 2011 Issue
TTAB Cases
Gen. Council of the Assemblies of God d/b/a Gospel Publ’g House v.
Heritage Music Found.,
Cancellation No. 92051525 (TTAB Feb. 3, 2011)
ABSTRACT
General Council of the Assemblies of God d/b/a Gospel Publishing House (“Petitioner”) filed a motion to exclude any testimony offered by Heritage Music Foundation’s (“Respondent”) expert witness under Fed. R. Civ. P. 37(c)(1) based on Respondent’s alleged failure to comply with Fed. R. Civ. P. 26(a)(2). Specifically, the expert had not signed her expert disclosure, included a list of her publications or the cases in which she had testified, or stated her compensation. In response to Petitioner’s motion, Respondent provided the missing information and argued that the original omission was substantially justified or harmless. The TTAB held that Respondent’s prompt supplementation of the disclosure resolved the problem, so it did not need to consider whether the technical deficiencies were substantially justified or harmless under Fed. R. Civ. P. 37(c)(1). Further, the TTAB found that there was no requirement that a party notify the TTAB that it has served expert disclosures, and also that Petitioner’s arguments that the expert was not qualified as an expert were premature and should be raised later in the proceeding.
CASE SUMMARY
FACTS
Although Respondent timely made its expert disclosure pursuant to Fed. R. Civ. P. 26(a)(2), the disclosure was not signed by the expert, did not include a list of all of her authored publications, did not include a list of all other cases over the past four years in which she had testified as an expert at trial or by deposition, and did not include a statement of the compensation paid to her for her testimony. A week later, Petitioner moved to strike Respondent’s expert-witness testimony due to improper disclosure. Respondent filed a response and supplemental response to the motion to strike in which Respondent provided the information that had been omitted from its original expert disclosure.
In its motion to strike, Petitioner argued that Respondent’s expert disclosure did not comply with Fed. R. Civ. P. 26(a)(2) because of the omitted information. Petitioner also argued that Respondent failed to inform the TTAB of its designation of an expert and that Respondent’s designated expert did not appear to be a qualified expert. In response, Respondent argued that the effect of the omission of the above items was substantially justified or harmless and, thus, sanctions under Fed. R. Civ. P. 37(c)(1) were improper. Specifically, Respondent contended that the surprise to Petitioner was small and curable because Petitioner still had adequate time to hire an expert if it chose to do so and Respondent had subsequently provided the missing information.
ANALYSIS
Trademark Rule 2.120(a)(2) provides that disclosure of expert testimony must occur in the manner and sequence provided in Fed. R. Civ. P. 26(a)(2). Pursuant to Rule 26(a)(2), any expert disclosed who may be used at trial to present evidence must provide a written report (unless otherwise stipulated or ordered by the court), prepared and signed by the witness, which must contain (1) a complete statement of all opinions the witness will express and the basis and reasons for them; (2) the facts or data considered by the witness in forming them; (3) any exhibits that will be used to summarize or support them; (4) the witness’s qualifications, including a list of all publications authored in the previous ten years; (5) a list of all other cases in which, during the previous four years, the witness testified as an expert at trial or by deposition; and (6) a statement of the compensation to be paid for the study and testimony in the case. A party that has made a disclosure must supplement or correct its disclosure in a timely manner if the party learns that in some material respect the disclosure is incomplete or incorrect. Under Fed. R. Civ. P. 37(c), any information not disclosed pursuant to Rule 26 may not be used as evidence at trial “unless the failure was substantially justified or harmless.” In determining whether the failure was substantially justified or harmless, the following factors may be considered: (1) the surprise to the party against whom the witness was to have testified; (2) the ability of the party to cure that surprise; (3) the extent to which allowing the testimony would disrupt the trial; (4) the explanation for the party’s failure to name the witness before trial; and (5) the importance of the testimony.
In this case, the TTAB found that Respondent had timely served its expert disclosure, including a copy of the expert report, a copy of the facts or data considered by the expert witness, and a copy of the witness’s curriculum vitae (which provided at least some information regarding the witness’s qualifications). Further, the TTAB found that Respondent had supplemented its expert disclosure as soon as the deficiencies were brought to its attention, the discovery period was still open, and there was no disruption to trial. The TTAB noted that Petitioner had requested exclusion of all of the witness’s anticipated expert testimony, but explained that it is usually the information omitted by the disclosure that is excluded. The TTAB then found that here Respondent’s prompt supplementation of the disclosures resolved the problem, eliminating the need for the TTAB to even consider whether the omissions were substantially justified or harmless. Further, it found that the omissions were harmless because there was no surprise to Petitioner as to the identity of the witness or the subject matter of the expert disclosure because the disclosure was timely served; the signed statement and additional items required to be disclosed concerning the expert’s qualifications were easily obtainable, as Respondent provided this information in response to the motion to strike; the trial was not disrupted by the deficiencies because one month remained in the discovery period after the disclosure was served; Respondent acted to cure the deficiencies quickly after they were brought to its attention; the TTAB was able to adjust the remaining discovery period as necessary; and Respondent presented plausible arguments as to why the evidence may be important to the case.
The TTAB further reasoned that where, as here, supplementation of the disclosure takes place, either upon the initiative of the disclosing party or after notification by the adverse party that the disclosure was incomplete, while the discovery period remains open, the TTAB’s policy is that neither the testimony to be proffered by the expert witness nor the information originally omitted will be excluded.
Petitioner also argued that Respondent failed to notify the TTAB that it served an expert disclosure. The TTAB found, however, that Trademark Rule 2.120(a)(2) did not require that a disclosing party inform the TTAB that an expert disclosure had been made. The purpose of informing the TTAB of such a disclosure was merely to facilitate discovery.
Finally, the TTAB concluded by noting that the TTAB’s 2007 adoption of a disclosure model was not meant to provide opportunities for one party to find procedural deficiencies or technical failures upon which to obtain an advantage over its adversary. Instead, the adoption of a disclosure model was to provide an orderly administration of the proceeding as it moves toward trial. Further, for cases that do not settle, disclosure practices have been found to promote a greater exchange of information, leading to increased fairness and a greater likelihood that cases eventually decided on their merits are determined on a fairly created record. Thus, a disclosing party’s failure to inform the TTAB of timely disclosure of an expert witness is not a ground to exclude the testimony of such witness.
Regarding the challenge to the expert’s qualifications, the TTAB advised the parties that “[t]he Board does not hear motions in limine and the qualifications of respondent’s witness is a subject that can be raised later, at an appropriate time.” Thus, Petitioner’s motion to strike was denied in its entirety.
CONCLUSION
Where supplementation of an expert disclosure takes place, either upon the initiative of the disclosing party, or after notification by the adverse party that the disclosure was incomplete, while the discovery period remains open, the Board’s policy is that neither the testimony to be offered by the expert witness nor the information originally omitted will be excluded. Further, there is no requirement that a party notify the Board that an expert disclosure has been made.
