533.02(b) On Ground of Failure to Disclose Witness in Expert or Pretrial Disclosures
37 CFR § 2.120(a)(1) In general ...The Board will specify the deadline … for making … expert disclosure.
37 CFR § 2.121(e) Assignment of times for taking testimony. A party need not disclose, prior to its testimony period, any notices of reliance it intends to file during its testimony period. However, no later than fifteen days prior to the opening of each testimony period, or on such alternate schedule as may be provided by order of the Board, the party scheduled to present evidence must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises, general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness. Pretrial disclosure of a witness under this subsection does not substitute for issuance of a proper notice of examination under § 2.123(c) or § 2.124(b). If a party does not plan to take testimony from any witnesses, it must so state in its pretrial disclosure. When a party fails to make required pretrial disclosures, any adverse party or parties may have remedy by way of a motion to the Board to delay or reset any subsequent pretrial disclosure deadlines and/or testimony periods.
37 CFR § 2.123(e)(3) Examination of Witnesses. Every adverse party shall have full opportunity to cross-examine each witness. If pretrial disclosures or the notice of examination of witnesses served pursuant to paragraph (c) of this section are improper or inadequate with respect to any witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances. A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with § 2.121(e). A motion to strike the testimony of a witness for lack of proper or adequate notice of examination must request the exclusion of the entire testimony of that witness and not only a part of that testimony.
Although a party need not identify particular individuals as prospective trial witnesses through its mandatory initial disclosures, it must identify "each individual likely to have discoverable information along with the subjects of that information that the disclosing party may use to support its claims or defenses." [ Note 1.] In the event either party intends to use an expert, the deadline for expert disclosure is thirty days prior to the close of the discovery period. [ Note 2.] If the expert is retained after the deadline for the disclosure of expert testimony, the party must promptly file a motion for leave to use expert testimony. [ Note 3.] Pretrial disclosures require that a party, in advance of the presentation of its testimony, inform its adversary of the names of, and certain minimal identifying information about, the individuals who are expected to, or may, if the need arises, testify at trial. [ Note 4.]
If timely-served expert disclosures are deficient, the Board expects the parties to cooperate to resolve the matter. It is not the Board’s policy to exclude either the testimony to be proffered by the expert witness or the information originally excluded when there has been supplementation of the deficient expert disclosure, either upon the initiative of the disclosing party or after notification by the adverse party that the disclosure was incomplete. [ Note. 5.]
A disclosing party’s failure to inform the Board of timely disclosure of an expert witness is not a ground to exclude the testimony of such witness. [ Note 6.]
If pretrial disclosures are improper or inadequate with respect to a particular witness, the adverse party may cross-examine that witness under protest while reserving its right to object to receipt of the testimony into evidence. However, promptly after the deposition is completed, the adverse party, if it wishes to preserve the objection, must move to strike the testimony from the record. [ Note 7.]
Parties should note that, in accordance with the above discussion, objections to a testimony deposition based upon improper or inadequate notice may also be raised by a motion to quash. It is best to raise the matter promptly to avoid expending resources associated with taking a deposition should a motion to quash or strike pretrial disclosures be granted. [ Note 8.] See TBMP § 521 and TBMP § 533.02(a).
If the matter is raised by a motion to quash, parties are encouraged to contact the assigned Board attorney by telephone, and ask that the matter be resolved by telephone conference, as time is of the essence with such a motion. For information on telephone conferences with Board attorneys concerning motions, see TBMP § 413.01and TBMP § 502.06(a).
The Board, depending on the circumstances presented,may be guided by the following five-factor test: "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) importance of the evidence; and 5) the nondisclosing party’s explanation for its failure to disclose the evidence." [ Note 9.]
The Board often allows parties to cure technical deficiencies in connection with otherwise timely matters. If technical deficiencies with pretrial disclosures are raised promptly, the matter may be resolved, either between the parties or with Board intervention, before the parties incur the expense associated with taking a testimonial deposition. [ Note 10.]
NOTES:
1. Fed. R. Civ. P. 26(a)(1). See 37 CFR § 2.116(a); Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1178 (TTAB 2010); Jules Jurgensen/Rhapsody, Inc. v. Baumberger, 91 USPQ2d 1443, 1443 n.1 (TTAB 2009).
2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007). See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011).
3. See 37 CFR § 2.120(a)(2).
4. See 37 CFR § 2.121(e); Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371-72 n.1 (TTAB 2011); Jules Jurgensen/Rhapsody, Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009).
5. See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011).
6. See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011).
7. See 37 CFR § 2.123(e)(3); Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1298-1300 (TTAB 2015) (exhibits attached to respondent’s testimony deposition, as well as portions of testimony that refer to the exhibits, stricken since respondent failed to identify properly, in his pretrial disclosures, the types of documents he intended to introduce as exhibits); Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1373-74 n.4 (TTAB 2011); Jules Jurgensen/Rhapsody, Inc. v. Baumberger, 91 USPQ2d 1443, 1445 (TTAB 2009) (testimony deposition of witness stricken where witness was not identified in pretrial or initial disclosures). Cf. Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1928 (TTAB 2011) (objection on the basis that the witness had not been previously disclosed waived where not renewed in main brief and raised for first time in rebuttal brief), on appeal, No. 1:11-cv-01623-RC (D.D.C.).
8. Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1240 (TTAB 2012) (judicial economy served by promptly filing a motion to quash or to strike the pretrial disclosures as insufficient before the deposition takes place).
9. See Southern States Rack & Fixture, Inc. v. Sherwin-Williams Co., 318 F.3d 592, 597 (4th Cir. 2003). See also MicroStrategy, Inc. v. Business Objects, S.A., 429 F.3d 1344, 1357, 77 USPQ2d 1001, 1009-10 (Fed. Cir. 2005) (applying Southern States factors in excluding non-expert damages evidence as a sanction for late disclosure); Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (after conducting analysis, the Board concluded that opposer’s failure to identify witness prior to pretrial disclosure was neither harmless nor substantially justified; combined motion to strike pretrial disclosure and to quash notice of testimony granted);Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327-28 (TTAB 2011) (after conducting the analysis, the Board found that opposer’s failure to name one witness until original pretrial closures and twenty-six witnesses until supplement to amended pretrial disclosures was neither harmless nor substantially justified and motion to quash granted as to twenty-six witnesses but testimony of one witness, identified months before in original pretrial disclosure, not excluded provided adverse party be given an opportunity to take a discovery deposition).
10. See Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1373-74 n.4 (TTAB 2011).