401.03    Expert Disclosures

37 C.F.R. § 2.120(a)(2)(iii)  . . . Disclosure of expert testimony must occur in the manner and sequence provided in Rule 26(a)(2) of the Federal Rule of Civil Procedure, unless alternate directions have been provided by the Board in an institution order or any subsequent order resetting disclosure, discovery or trial dates. If the expert is retained after the deadline for disclosure of expert testimony, the party must promptly file a motion for leave to use expert testimony. Upon disclosure by any party of plans to use expert testimony, whether before or after the deadline for disclosing expert testimony, the Board, either on its own initiative or on notice from either party of the disclosure of expert testimony, may issue an order regarding expert discovery and/or set a deadline for any other party to disclose plans to use a rebuttal expert.

Fed. R. Civ. P. 26(a)(2) Disclosure of Expert Testimony.

  • (A) In General. In addition to the disclosures required by Rule 26(a)(1), a party must disclose to the other parties the identity of any witness it may use at trial to present evidence under Federal Rule of Evidence 702, 703, or 705.
  • (B) Witnesses Who Must Provide a Written Report. Unless otherwise stipulated or ordered by the court, this disclosure must be accompanied by a written report — prepared and signed by the witness — if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party’s employee regularly involve giving expert testimony. The report must contain:
    • (i) a complete statement of all opinions the witness will express and the basis and reasons for them;
    • (ii) the facts or data considered by the witness in forming them;
    • (iii) any exhibits that will be used to summarize or support them;
    • (iv) the witness’s qualifications, including a list of all publications authored in the previous 10 years;
    • (v) a list of all other cases in which, during the previous 4 years, the witness testified as an expert at trial or by deposition; and
    • (vi) a statement of the compensation to be paid for the study and testimony in the case.
  • (C) Witnesses Who Do Not Provide a Written Report. Unless otherwise stipulated or ordered by the court, if the witness is not required to provide a written report, this disclosure must state:
    • (i) the subject matter on which the witness is expected to present evidence under Federal Rule of Evidence 702, 703, or 705; and
    • (ii) a summary of the facts and opinions to which the witness is expected to testify.
  • (D) Time to Disclose Expert Testimony. A party must make these disclosures at the times and in the sequence that the court orders. Absent a stipulation or a court order, the disclosures must be made:
    • (i) at least 90 days before the date set for trial or for the case to be ready for trial; or
    • (ii) if the evidence is intended solely to contradict or rebut evidence on the same subject matter identified by another party under Rule 26(a)(2)(B) or (C), within 30 days after the other party’s disclosure.
  • (E) Supplementing the Disclosure. The parties must supplement these disclosures when required under Rule 26(e).

Although not frequently utilized in Board proceedings, experts in Board inter partes proceedings are typically recruited on the basis of experience in the relevant trade or industry and not on the basis of personal knowledge of or on-the-scene involvement in any sequence of events that gave rise to the Board proceedings. [ Note 1.] As set forth in Federal Rule of Evidence 702, made applicable to Board proceedings by 37 C.F.R. § 2.122(a), "[a] witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case." [ Note 2.] A party generally must decide within the discovery period whether it plans to use an expert to testify at trial since expert disclosure is due 30 days prior to the close of discovery, or by any deadline that may be reset by any order of the Board issued after the initial institution order, but the expert disclosure deadline must always be scheduled prior to the close of discovery whenever disclosure and discovery deadlines are modified. [ Note 3.]

The extent of the expert disclosure obligation is governed by Fed. R. Civ. P. 26(a)(2). [ Note 4.] Parties are not required to disclose consulting experts. [ Note 5.] On the other hand, both retained, specially employed experts, and unretained experts must be disclosed. [ Note 6.] Only retained experts are required to provide a report, unless otherwise stipulated. [ Note 7.] For unretained experts, a party must provide the subject matter on which the witness is expected to present evidence under Fed. R. Evid. 702, 703, or 705; and a summary of the facts and opinions to which the witness is expected to testify. [ Note 8.]

The disclosure of planned or possible expert testimony by any party must be made by the expert disclosure deadline, regardless of whether any other party has made such disclosure. Thus, for example, if a defendant has plans to present, or may present, expert testimony to support an affirmative defense, regardless of whether a plaintiff may use expert testimony in support of a main claim, then the defendant must disclose the planned or possible presentation of such testimony by the deadline set by the Board. [ Note 9.] If a party decides after the deadline for expert disclosure that it would like to, or may need to, rely on expert testimony at trial, the party must file a motion for leave to use the expert at trial. [ Note 10.] The provisions regarding the timing of expert disclosure are intended to facilitate the taking of any necessary discovery by any party or parties adverse to the disclosing party, in regard to the proposed expert witness, and to allow the adverse party or parties to determine whether it will be necessary to rely on a rebutting expert. Parties are expected to cooperate in the process of exchanging information about any testifying experts, and should at least discuss, during the discovery conference, the possibility of entering into stipulations that will facilitate the exchange of such information and/or the presentation of expert testimony. The parties should revisit these discussions whenever it appears that a testifying expert witness may become involved in the case. [ Note 11.]

Any party disclosing plans to use an expert must notify the Board that it has made the required disclosure (but should not file with the Board copies of the materials provided to adverse parties) to comply with Fed. R. Civ. P. 26(a)(2). [ Note 12.] The Board may then suspend proceedings to allow for discovery limited to experts. [ Note 13.] The suspension order may leave unchanged the deadline specified in the Federal Rule for disclosure of plans to use a rebuttal expert, or may reset the deadline, depending upon the circumstances at the time the Board issues the suspension order. Suspension is as to activities unrelated to the exchange of information about, and reports by, expected expert witnesses, and the parties should continue with the expert disclosure procedures specified in the Federal Rule pending issuance of any suspension order by the Board that will specify any actions of the parties required by the Board. If a party discloses plans to use an expert witness early in the discovery period, the Board may choose not to suspend discovery activities unrelated to the expected expert witnesses and may direct that all discovery activities continue concurrently with the disclosures and discovery relative to the experts. [ Note 14.] There may be cases in which a party may not decide until after the deadline for expert disclosure that it needs to present an expert witness at trial. In such cases, disclosure must be made promptly when the expert is retained and a motion for leave to present testimony by the expert must be filed. [ Note 15.] Prompt disclosure after the deadline, however, does not necessarily ensure that the expert’s testimony or evidence will be allowed into the record at trial. [ Note 16.] The Board will decide on a case-by-case basis how to handle a party’s late identification of experts. [ Note 17.]

Upon disclosure by any party of plans to use expert testimony, whether before or after the deadline for disclosing expert testimony, the Board, either on its own initiative or on notice from either party of the disclosure of expert testimony, may issue an order regarding expert discovery and/or set a deadline for any other party to disclose plans to use a rebuttal expert. [ Note 18.]

A party has the prerogative of deciding not to use a designated expert for testimony. [ Note 19.] In addition, a party may be permitted to withdraw a previously disclosed expert and expert report and substitute a new expert witness and expert report. [ Note 20.] However, if the substitution occurs after the expert disclosure deadline, the Board will consider whether the substitution is substantially justified or harmless. [ Note 21.] A party may redesignate a testifying expert witness as a non-testifying or consulting expert. [ Note 22.] If a party redesignates the designated testifying expert witness as a non-testifying or consulting expert after an expert report has been disclosed, the expert will be subject to deposition only under exceptional circumstances. [ Note 23.] If a party discloses an expert report after the expert disclosure deadline, the Board will consider whether the late disclosure is substantially justified or harmless. [ Note 24.]

A motion to compel an expert testimony disclosure must be filed prior to the close of the discovery period. [ Note 25.] For further information regarding motions to compel, see TBMP § 523.

A party may supplement or correct its expert disclosures "if the party learns that in some material respect the disclosure . . . is incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing." [ Note 26.] A party may supplement or correct information included in an expert report and information given in the expert’s deposition testimony up to and including the due date for a party’s pretrial disclosures. [ Note 27.] Fed. R. Civ. P. 26(e), however, does not allow an expert to bolster previously disclosed opinions or to add new opinions. [ Note 28.]

Rebuttal expert reports should be limited to a rebuttal or critique of the methods proposed by the expert report and the analysis of the data that resulted. [ Note 29.] Under appropriate circumstances, sur-rebuttal expert testimony may be allowed so long as a party that wishes to provide a sur-rebuttal expert report promptly seeks leave of the Board. [ Note 30.]

For further information regarding the duty to cooperate and to the duty to supplement with regard to expert disclosures, see TBMP § 408.01(b) and TBMP § 408.03. For information regarding remedies for failure to disclose or inadequate expert disclosures, see TBMP § 411.01.

NOTES:

 1.   RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1494-95 (TTAB 2013).

 2.   Fed. R. Evid. 702. See also Fed. R. Evid. 702, Notes of Advisory Committee on Proposed Rules. See, e.g., McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268, 1298 n.58 (TTAB 2014) ("While a party is not required to employ an expert to be able to direct criticisms to an opposing party’s survey, having a qualified expert confirm that the criticisms reflect the relevant standards employed in the survey field would lend additional weight to such criticisms."); Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1757 (TTAB 2013) (witness qualified as an expert in the field of travel writing and journalism based on professional experience as a travel writer and editor), aff’d mem, 565 F. App’x 900 (Fed. Cir. 2014).

 3.   See 37 C.F.R. § 2.120(a)(2)(iii)  and 37 C.F.R. § 2.120(a)(2)(iv). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016) ("an expert disclosure deadline must always be scheduled prior to the close of discovery"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007) (in the absence of an order from the Board setting a deadline, expert disclosures are governed by Fed. R. Civ. P. 26(a)(2), per 37 C.F.R. § 2.120(a)(2)); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (party is to disclose its plan to use an expert 30 days before the close of discovery).

 4.   37 C.F.R. § 2.120(a)(2)(iii). See RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1494 (TTAB 2013) (use of testifying expert); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1891-92 (TTAB 2011).

 5.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42254 (August 1, 2007). See also Fed. R. Civ. P 26(b)(4)(D); Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1567 (TTAB 2014) (discussing the differences between testifying and consulting experts in connection with redesignation of a testifying expert as a consulting expert).

 6.   Fed. R. Civ. P. 26(a)(2)(A).

 7.   Fed. R. Civ. P. 26(a)(2)(B); Fed. R. Civ. P. 26(a)(2)(C). See RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1495 (TTAB 2013) (an expert is retained for purposes of Rule 26(a)(2)(B) and required to provide a written report "[w]here an expert’s opinion testimony arises from his enlistment as an expert and not from an on-the-scene involvement in any incidents giving rise to the litigation").

 8.   Fed. R. Civ. P. 26(a)(2)(C). A witness under Fed. R. Civ. P. 26(a)(2)(C) may testify as both a fact witness and also provide expert testimony under Fed. R. Evid. 702, 703 or 705. See Fed. R. Civ. P. 26(a)(2)(C) Committee Notes on Rules – 2010 Amendment.

 9.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 10.   37 C.F.R. § 2.120(a)(2)(iii). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 11.   See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 n.3 (TTAB 2011) (parties expected to cooperate to resolve problems arising from timely but incomplete expert disclosures).

 12.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007). RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1493 n.3 (TTAB 2013) (a party must notify the Board of its plan to use an expert (without including copies of expert disclosures), and that it has made required expert disclosures to adversary; the best practice is to notify the Board concurrently with the expert disclosures to adverse party). But see Monster Energy Co. v. Martin, 125 USPQ2d 1774, 1776 (TTAB 2018) ("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"); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (37 C.F.R. § 2.120(a)(2) does not mandate that a disclosing party inform the Board that an expert disclosure has been made; disclosing party’s failure to notify the Board is not a ground to exclude the testimony).

 13.   See 37 C.F.R. § 2.120(a)(2)(iii); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007); Monster Energy Co. v. Martin, 125 USPQ2d 1774, 1777-78 (TTAB 2018) ("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."). But see, General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) ("The purpose of informing the Board of such a disclosure is to facilitate discovery," but notification to the Board may not be necessary if expert-related discovery can be concluded by the close of discovery).

 14.   See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (in any given case, suspension of proceedings for expert-related discovery may not be necessary).

 15.   See 37 C.F.R. § 2.120(a)(2)(iii).

 16.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 17.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See, e.g., Entravision Communications Corp. v. Liberman Television LLC, 113 USPQ2d 1526, 1528-29 (TTAB 2015) (after balancing relevant factors, substitution of witness and expert report after expert disclosure deadline due to witness unavailability found to be substantially justified and harmless under circumstances of the case); Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d 1559, 1563-64 (TTAB 2014) (after balancing relevant factors, untimely disclosure of expert opinion found neither substantially justified nor harmless under circumstances of case).

 18.   37 C.F.R. § 2.120(a)(2)(iii); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016).

 19.   Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1567 (TTAB 2014).

 20.   Entravision Communications Corp. v. Liberman Television LLC, 113 USPQ2d 1526, 1528-29 (TTAB 2015).

 21.   Fed. R. Civ. P. 37(c)(1). See, e.g., Entravision Communications Corp. v. Liberman Television LLC, 113 USPQ2d 1526, 1528 (TTAB 2015) (substitution of expert and expert report after expert disclosure deadline).

 22.   Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1567, 1567 n.9 (TTAB 2014) (noting that a designated expert witness can be redesignated as a non-testifying or consulting expert and shielded from discovery).

 23.   Fed. R. Civ. P. 26(b)(4)(D)(ii); Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1568 (TTAB 2014) (showing of exceptional circumstances required in case of noticed deposition (without subpoena) of party’s redesignated consulting expert). Please Note: The Board has no jurisdiction over depositions of non-parties by subpoena.

 24.   See Fed. R. Civ. P. 37(c)(1). See, e.g., Entravision Communications Corp. v. Liberman Television LLC, 113 USPQ2d 1526, 1528 (TTAB 2015) (substitution of expert and expert report); Gemological Institute of America, Inc. v. Gemology Headquarters Int’l, LLC, 111 USPQ2d 1559, 1562 (TTAB 2014) (untimely expert report).

 25.   37 C.F.R. § 2.120(f); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69961 (October 7, 2016).

 26.   See Empresa Cubana Del Tabaco v. General Cigar Co., 2020 USPQ2d 10988, at *2 (TTAB 2020) (discussing what is proper supplementation of an expert report); Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d 1559, 1561-62 (TTAB 2014) (same).

 27.   Fed. R. Civ. P. 26(e)(2).Empresa Cubana Del Tabaco v. General Cigar Co., 2020 USPQ2d 10988, at *3 (TTAB 2020) (supplemental expert reports filed on the due date of pretrial disclosures are timely); Entravision Communications Corp. v. Liberman Television LLC, 113 USPQ2d 1526, 1528 n.5 (TTAB 2015) (motion to substitute an expert witness and new expert report analyzed under Fed. R. Civ. P. 37(c)(1)).

 28.   See Empresa Cubana Del Tabaco v. General Cigar Co., 2020 USPQ2d 10988, at *4 (TTAB 2020) (respondent failed to demonstrate that "the [expert] Supplemental Report corrects, clarifies, or fills in a gap in the Original Report that rendered the original disclosure inaccurate or misleading;" seeking to add new examples and illustrations does not constitute proper supplementation under Fed. R. Civ. P. 26(e)(2)); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1241 (TTAB 2015) (expert witness not allowed to bolster previously disclosed opinions or to add new opinions). See also Newegg Inc. v. Schoolhouse Outfitters, LLC, 118 USPQ2d 1242, 1244 (TTAB 2016) (in connection with leave to file sur-rebuttal expert report, party’s expert precluded from offering corrections or amplifications to original expert report, introducing new evidence or consumer surveys).

 29.   See Newegg Inc. v. Schoolhouse Outfitters, LLC, 118 USPQ2d 1242, 1244 (TTAB 2016) (discussing what constitutes proper rebuttal expert report); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1238-39 (TTAB 2015) (considering whether rebuttal expert report was proper rebuttal).

 30.   Newegg Inc. v. Schoolhouse Outfitters, LLC, 118 USPQ2d 1242, 1244 (TTAB 2016).