707.03(b)(3)    On Ground of Failure to Disclose

37 C.F.R. § 2.121(e)  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. … 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. A party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. When testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike …

37 C.F.R. § 2.123(e)  Examination of witnesses.

  • * * * *
  • (3) 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.
    • (i) 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 party may object to improper or inadequate pretrial or rebuttal disclosures and may move to strike the testimony of a witness for lack of proper pretrial or rebuttal disclosure. [ Note 1.]

If pretrial disclosures or the notice of examination of witnesses served pursuant to 37 C.F.R. § 2.123(c)  are improper or inadequate with respect to any witness, an adverse party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. [ Note 2.] The adverse party may also 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, must move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances. [ Note 3.] 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 37 C.F.R. § 2.121(e). [ Note 4.]

When testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial or rebuttal disclosure, the remedy for any adverse party is the prompt filing of a motion to strike. [ Note 5.]

Failure to assert an objection in a timely manner may result in the objection being waived. [ Note 6.]

NOTES:

 1.   37 C.F.R. § 2.121(e)  and 37 C.F.R. § 2.123(e)(3). See also 37 C.F.R. § 2.118; Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623, 1628 (TTAB 2014) (expert witness testimony stricken after party failed to timely identify and disclose the witness), rev’d on other grounds, 84 F. Supp. 3d 490 (E.D. Va. 2015), vacated and remanded, 819 F.3d 697 (4th Cir. 2016), cert denied, 137 S. Ct. 1202 (2017), aff’d on remand, 338 F. Supp. 3d 1477 (E.D. Va. 2018), district court decision vacated and remanded, 2021 USPQ2d 126 (4th Cir. 2021) (Board decision upheld by 4th Circuit), petition for rehearing en banc filed, No. 18-2183, 18-2232 (4th Cir. March 2 , 2021); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009) (testimony stricken because identity of witness not disclosed prior to trial). Cf. Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *2-3 (TTAB 2020) (respondent’s motion to strike rebuttal witness for failure to disclose denied where petitioner substituted its legal assistant for its previously disclosed attorney for same authentication purpose); Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *7 (TTAB 2020) (objection that evidence was not adequately disclosed in pretrial disclosures overruled as untimely and waived when first raised in trial brief; objection is curable and should have been made via motion to strike promptly after testimony declaration and exhibits were filed); WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (opposer’s objection to applicant’s testimony declarations submitted as exhibits to notice of reliance overruled where applicant provided notice to opposer via pretrial disclosures about witnesses and the subject matter of their anticipated testimony, testimony declarations were timely served, and opposer had opportunity but chose not to cross-examine the witnesses); Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (denying opposer’s motion to strike pretrial disclosure of the identity of three witnesses where one witness had been identified in initial and supplemental initial disclosures and failure to disclose earlier the identities of the other two found substantially justified and harmless).

 2.   37 C.F.R. § 2.121(e). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(e) to add that a party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. The amendment codifies current Office practice.").

 3.   37 C.F.R. § 2.123(e)(3).

 4.   37 C.F.R. § 2.121(e)  and 37 C.F.R. § 2.123(e)(3)(i). See Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1299 (TTAB 2015) (motion to strike the entirety of respondent’s testimony deposition on the basis that pretrial disclosures were untimely because sent to an incorrect address and attention of attorney no longer employed at the law firm granted in part and denied in part); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009) (failure to disclose testimony witness in initial disclosures considered as a relevant circumstance in determining whether to strike testimony deposition.). Cf. Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *2-3 (TTAB 2020) (respondent’s motion to strike rebuttal witness for failure to disclose denied where petitioner substituted its legal assistant for its previously disclosed attorney for same authentication purpose); Entravision Communications Corp. v. Liberman Television LLC, 113 USPQ2d 1526 (TTAB 2015) (motion to substitute expert witness and report granted, where prior disclosed witness unavailable).

 5.   37 C.F.R. § 2.121(e). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(e) to add that when testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike…"). See Philanthropist.com, Inc. v. The General Conference Corp. of Seventh-Day Adventists, 2021 USPQ2d 643, at *5 Appendix B (TTAB 2021) (objection to testimony declaration and attached email exchange on the ground that the witness was not identified in rebuttal pretrial disclosures overruled; proper remedy is the prompt filing of a motion to strike); WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (opposer’s objection to applicant’s testimony declarations overruled where applicant provided notice to opposer via pretrial disclosures about witnesses and the subject matter of their anticipated testimony, testimony declarations were timely served, and opposer had opportunity but chose not to cross-examine the witnesses); Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (opposer’s motion to strike pretrial disclosure of the identity of three witnesses denied--no surprise where one witness had been identified in initial and supplemental initial disclosures, and failure to disclose in supplemental initial disclosures the identities of the other two found substantially justified and harmless when applicant ascertained the identities shortly before serving pretrial disclosures, but applicant had listed the subject matter of their testimony in initial disclosures, and the record showed that opposer was aware of the witnesses and the pertinent information covered in their testimony declarations).

 6.   See Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *7 (TTAB 2020) (objection that evidence was not adequately disclosed in pretrial disclosures overruled as untimely and waived when first raised in trial brief; objection is curable and should have been made via motion to strike promptly after testimony declaration and exhibits were filed); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927 (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), aff’d, 188 F. Supp. 3d 222 (D.D.C. 2016), aff’d, 743 F. App’x 457, 128 USPQ2d 1172 (D.C. Cir. 2018).