The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
THIS OPINION IS A PRECEDENT OF Trademark Trial and Appeal Board
THE TTAB P.O. Box 1451
Alexandria, VA 22313-1451
Mailed: March 31, 2011
Opposition No. 91188150
CARL KARCHER ENTERPRISES, INC.
v.
CARL'S BAR & DELICATESSEN, INC.
Cheryl Butler, Attorney, Trademark Trial and Appeal Board:
In accordance with the Board's order of September 15, 2010,
the discovery period was noted to be closed; the deadline for
plaintiff's pretrial disclosures was reset as September 27, 2010;
and plaintiff's 30-day main testimony period was reset so that it
closed on November 11, 2010. This case now comes up on
applicant's motion, filed November 12, 2010, to strike the
testimony (taken November 11, 2010) and evidence of opposer's
witness, Hilary Burkemper, and to dismiss the proceeding for
opposer's failure to present testimony. Opposer filed a response
to applicant's motion.
In support of its motion, applicant argues that the
"deadline for filing the Opposer's Pretrial Statement herein was
September 27, 2010"; that opposer did not "file or submit" a
pretrial statement, or request an extension of time with respect
to the "unfiled" pretrial statement; and that opposer's trial
Opposition No. 91188150
period has passed without opposer "filing any Pretrial
Statement." The Board construes this argument as an assertion by
applicant that opposer was not only required to serve its
pretrial disclosures on applicant by the deadline, but was also
required to file the disclosures with the Board.
Applicant contends, as well, that the documents and things
introduced as exhibits to the testimony of opposer's witness did
not "fall within the ambit of any Pretrial Statement's general
summary or list of types of document and things," and should be
stricken from evidence; and that, because the November 11, 2010
trial testimony of Ms. Burkemper, and proffered documents and
things, should be stricken, opposer has no evidence upon which to
rely to prove its case and the opposition should be dismissed.
In response, opposer notes that it served its pretrial
disclosures on October 13, 2009, the day before they were due (on
October 14, 2009) in accordance with the Board's institution
order of December 23, 2008. Opposer has submitted a copy of such
disclosure in conjunction with the briefing of applicant’s
current motion. According to opposer, its pretrial disclosures
contained witness information, a summary of witness testimony
subjects, and a summary of documents and things to be identified
during witness testimony. In addition, opposer states it
identified Ms. Burkemper in both its initial and its pretrial
disclosures. Opposer indicates that applicant did not respond to
the notice of deposition of Ms. Burkemper and did not attend the
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Opposition No. 91188150
deposition. Opposer states that applicant appears to believe,
mistakenly, that opposer was required to file its pretrial
disclosures with the Board. Opposer argues that, in view of its
adherence to the procedural requirements with respect to its
timely-served pretrial disclosures, the trial testimony of Ms.
Burkemper, and all exhibits and evidence offered during such
testimony, should not be stricken and the opposition should not
be dismissed for opposer's failure to introduce testimony or
evidence in support of its claims.
The Board notes that the parties do not dispute the
timeliness of opposer's October 13, 2009 pretrial disclosures.
Such disclosures were served in accordance with the schedule set
in the institution order, which was the operative schedule at the
time of service of the disclosures. Subsequent to such service,
however, opposer filed a motion for summary judgment, which was
denied by order of the Board dated August 11, 2010. In resuming
proceedings and resetting the schedule, the Board reset the
deadline for opposer's pretrial disclosures. Such deadline was
again reset in the Board's September 15, 2010 order addressing
another issue presented at that time. The resetting of this
deadline in each of these two orders was simply a scheduling
matter to keep the case on course to trial, and took into account
the possibility that opposer had not served pretrial disclosures
prior to filing its motion for summary judgment, or that
circumstances had changed since the filing of any earlier
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disclosure, such that a new or amended disclosure would be
appropriate.
The questions now presented to the Board are: (1) whether
opposer's October 13, 2009 pretrial disclosures, evidencing a
certificate of service on applicant of the same date, are
sufficient with respect to the information disclosed therein, (2)
whether a party that has served pretrial disclosures is required
to re-serve them when the pretrial disclosure date is reset, and
(3) whether opposer was required to file its pretrial disclosures
with the Board.
Trademark Rule 2.121(e), 37 C.F.R. § 2.121(e), provides, in
relevant part, as follows:
[t]he 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.
A review of opposer's October 13, 2009 pretrial disclosure
shows that opposer named its potential witnesses, including Ms.
Burkemper,1 and provided the address, telephone number and
1
A party is to disclose all witnesses it expects to call as well as
those that it may call if the need arises. Thus, the pretrial
disclosure rule anticipates that there may be witnesses disclosed who
are not called to testify. Trademark Rule 2.121(e). See also
Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72
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Opposition No. 91188150
relationship to opposer (in the nature of a job title) for each
potential witness. In addition, opposer provided a general
summary of the topics upon which each potential witness was
expected to testify and a general summary of the types of
documents and things to be introduced during the testimony of
each potential witness. The topics and documents and things
identified for the potential witnesses are of the type usually
found in Board proceedings (e.g., selection and adoption of the
marks that are the subject of the pleaded registrations, fame of
such marks, and likelihood of confusion). Applicant has not
specified how the evidence submitted by opposer falls outside
such topics and documents identified in the pretrial disclosure.2
On its face, opposer's pretrial disclosure is adequate and
sufficient.
As to the second question, the mere passage of time between
the original pretrial disclosure deadline and later deadlines
that were reset in conjunction with scheduling orders does not
dictate that opposer needed to re-serve its pretrial disclosures
each time the deadline was reset. The only obligation a party
Fed. Reg. 42242, 42246 (August 1, 2007). In this case, opposer
disclosed the names of more than one potential witness but appears to
have called only one witness, Ms. Burkemper.
2
It is noted that applicant did not make specific, substantive
objections to specific documents or exhibits introduced by the
testimony of opposer's witness as being beyond the scope of the
disclosure. Had applicant done so, consideration of such objections
would necessarily be deferred to disposition in a final decision on
the merits of the case. This is so because it is not the policy of
the Board to read trial testimony or examine other trial evidence
prior to final decision. See TBMP § 532 (2d ed. rev. 2004).
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Opposition No. 91188150
has in such circumstances would be to supplement or amend its
disclosures, if necessary. Fed. R. Civ. P. 26(e)(1). Ms.
Burkemper was identified as a potential witness in opposer’s
initial pretrial disclosure, served prior to the original
pretrial disclosure deadline. Thus, the circumstances of this
case do not involve presentation of a witness or exhibits not
revealed by the original disclosure and thus there is no issue
regarding a failure to timely amend or supplement the disclosure.
Turning to the third question, Trademark Rule 2.121(e) does
not require a party making a pretrial disclosure to file such
disclosure with the Board. Moreover, Trademark Rule 2.120(j)(8),
37 C.F.R. § 2.120(j)(8), states as follows:
Written disclosures or disclosed documents, requests
for discovery, responses thereto, and materials or
depositions obtained through the disclosure or
discovery process should not be filed with the Board,
except when submitted with a motion relating to
disclosure or discovery, or in support of or in
response to a motion for summary judgment, or under a
notice of reliance, when permitted, during a party’s
testimony period.
While this latter rule relates to disclosures served during the
discovery period, and discovery period disclosures (initial and
expert) are different in purpose than pretrial disclosures, there
is no significant reason why a party should be required to file
its pretrial disclosures with the Board. A brief at final
hearing typically includes a description of the record, see
Trademark Rule 2.128(b), and the Board is therefore put on notice
by the parties’ briefs of the testimony and exhibits in evidence.
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Opposition No. 91188150
Thus, under the Board's rules and practice, a party is not to
file its discovery period disclosures with the Board, except
under specific circumstances not present in this case, and need
not file, indeed should not file as a routine matter, its
pretrial disclosures with the Board.3
The Board notes that its 2007 adoption of a disclosure model
was intended to foster orderly administration of the proceeding
as it moves toward trial. To that end, timely service of
pretrial disclosures avoids incidents of unfair surprise to the
adverse party and increases the likelihood of a fair disposition
of the parties' claims and defenses.4 See Miscellaneous Changes
3
In this regard, Board practice varies slightly from that set forth at
Fed. R. Civ. P. 26(a)(3)(A)(2) with respect to pretrial disclosures.
The federal rule requires the disclosing party to "provide to the
other parties and promptly file …" the information necessary to be in
compliance with the disclosure requirement. While the pretrial
disclosures in court may be important to the resolution of motions in
limine handled prior to trial, the Board does not hear and resolve
such motions in its practice.
4
Trademark Rule 2.123(e)(3), 37 C.F.R. § 2.123(e)(3), explicitly
allows for a motion to strike the entire deposition after the fact if
the pretrial disclosures are improper or inadequate. The adverse
party may elect to cross-examine that witness under protest while
reserving the right to object and, promptly after the testimony is
completed, move to strike the testimony from the record. As a
practical matter, however, where a party believes its adversary's
pretrial disclosures are technically deficient in some manner,
judicial economy is best achieved by bringing such issue up promptly
by a motion before the deposition takes place. Examples of
appropriate motions include: motions to strike the pretrial
disclosure as insufficient, untimely, or otherwise suffering from a
particular technical deficiency, or a motion to quash the deposition
of a witness not named.
If promptly filed, the issue raised concerning the purported
technical deficiency may be resolved before the parties incur any
expense associated with taking a testimonial deposition, and any risk
to a non-disclosing party who chooses not to attend the deposition
under the mistaken belief that the testimony will be stricken is
reduced. The Board often allows parties to cure timely, but
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Opposition No. 91188150
to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242,
42242 (August 1, 2007). Alerting the Board to the existence of a
party's witness list is not a purpose of the pretrial disclosure
requirement. This is so because the Board does not preside at
the taking of testimony, or at a pretrial conference. See TBMP §
702 (2d ed. rev. 2004). Instead, all testimony is taken out of
the presence of the Board, and the written transcripts thereof,
together with any exhibits thereto, are then submitted to the
Board. TBMP § 702 (2d ed. rev. 2004). Consequently, there is no
reason to file routinely pretrial disclosures with the Board.
Accordingly, applicant's motion to strike the testimony of
Ms. Burkemper, and any and all documents and things introduced by
such testimony, on the bases that the disclosure is substantively
deficient, that opposer did not re-serve its pretrial disclosures
each time the deadline was reset and that opposer did not file
the disclosure with the Board, is denied. Insofar as opposer has
made of record evidence upon which to prove its case, applicant's
request for involuntary dismissal is premature and will not be
technically defective matters. See, for example, General Council of
the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890
(TTAB 2011) (respondent timely served expert disclosures and cured
deficiencies when brought to its attention); and Weyerhaeuser Co. v.
Katz, 24 USPQ2d 1230 (TTAB 1992) (opposer allowed time to remedy the
procedural defects in its notice of reliance).
In contrast with a motion raising a purported technical deficiency,
an objection to exhibits or testimony based upon the substance being
beyond the scope of the pretrial disclosure can be made during the
taking of testimony and preserved by a motion to strike the testimony
or evidence on that basis. Such objection or motion will be decided
in connection with a final decision.
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considered. Trademark Rule 2.132(a). See also TBMP § 534 (2d
ed. rev. 2004).
Proceedings are resumed and remaining dates, starting with
the deadline for applicant's pretrial disclosures, are reset as
follows:
Defendant's Pretrial
Disclosures Due 4/15/2011
Defendant's 30-day Trial Period
Ends 5/30/2011
Plaintiff's Rebuttal
Disclosures Due 6/14/2011
Plaintiff's 15-day Rebuttal
Period Ends 7/14/2011
In each instance, a copy of the transcript of testimony,
together with copies of documentary exhibits, must be served on
the adverse party within thirty days after completion of the
taking of testimony. Trademark Rule 2.l25.
Briefs shall be filed in accordance with Trademark Rules
2.l28(a) and (b). An oral hearing will be set only upon request
filed as provided by Trademark Rule 2.l29.
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