Spier Wines (PTY) Ltd. v. Ofer Z. Shepher

UNITED STATES PATENT AND TRADEMARK OFFICE

THIS OPINION IS A Trademark Trial and Appeal Board

PRECEDENT OF THE TTAB P.O. Box 1451

Alexandria, VA 22313-1451

Mailed: June 12, 2012

Opposition No. 91182155

Opposition No. 91182825

Spier Wines (PTY) Ltd.

v.

Ofer Z. Shepher

ELIZABETH J. WINTER, INTERLOCUTORY ATTORNEY:

Inter Partes Conference

On May 1, 2012, the parties, Spier Wines (PTY) Ltd.

(represented by Matthew Cuccias of Jacobson Holman PLLC) and

Ofer Z. Shepher (represented by Ralph C. Loeb of Krane &

Smith), and Elizabeth Winter, the assigned Interlocutory

Attorney, all participated in a telephone conference, held at

applicant’s request, regarding opposer’s fully briefed motion

(filed February 15, 2012) to amend its pleading and

applicant’s motion (filed April 23, 2012) to preclude opposer

from taking the testimonial deposition on written questions

of its only noticed witness or allow an oral deposition.1

1

Insofar as these proceedings were suspended on April 27, 2012,

pending the Board’s consideration of the parties’ respective

motions and because the noticed testimonial deposition was to be

taken upon written questions, applicant’s motion to suspend these

Opposition Nos. 91182155 and 91182825

See Trademark Rules 2.120(i)(1) and 2.127(c); and TBMP

§ 502.06 (3d ed. 2011). This order summarizes applicant’s

motion to preclude the testimony of opposer’s witness, the

Board’s phone conference discussion with the parties with

respect to this motion, and the Board’s analysis and order

resolving applicant’s motion.2

Applicant’s Motion to Preclude Use of Witness

• Preliminary Matter

Regarding the nature of applicant’s motion, where a

party believes the adverse party’s pretrial disclosures are

insufficient, untimely, or are otherwise technically

deficient, judicial economy is best accomplished by bringing

such issue to the Board’s attention promptly by a motion to

quash the deposition or to strike the pretrial disclosures as

insufficient before the deposition takes place.3 See Carl

Karcher Enterprises, Inc. v. Carl’s Bar & Delicatessen, Inc.,

proceedings pending resolution of applicant’s alternative motions

is moot.

2

The Board’s order issued on May 15, 2012, explained the basis

for granting opposer’s motion to amend, resumed these

proceedings, and reset the trial schedule based on the Board’s

disposition of both motions during the teleconference.

3

In contrast, Trademark Rule 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. In accordance

therewith, the adverse party may elect to cross-examine the

testimonial witness under protest while reserving the right to

object and, promptly after the testimony is completed, move to

strike the testimony from the record.

2

Opposition Nos. 91182155 and 91182825

98 USPQ2d 1370, 1373 n.4 (TTAB 2011). Here, applicant does

not contend that opposer’s pretrial disclosures or its notice

of testimonial deposition upon written questions were

untimely or otherwise technically deficient. Accordingly,

applicant’s motion to preclude opposer from using its noticed

testimony witness is construed as a combined motion to strike

opposer’s pretrial disclosures and to quash opposer’s notice

of taking the testimony deposition of Eve Jell, based on

opposer’s failure to timely supplement its initial

disclosures. See id. See also Byer California v. Clothing

for Modern Times Ltd., 95 USPQ2d 1175, 1178 (TTAB 2010).

• The Parties’ Arguments

Applicant’s motion is supported by the declaration of

applicant’s counsel (Ralph C. Loeb) and attached exhibits,

and requests that the Board preclude opposer from taking the

testimonial deposition upon written questions of Ms. Jell,

opposer’s International Sales Director and a resident of

South Africa. In the alternative, applicant seeks permission

to take an oral testimonial deposition of Ms. Jell in the

United States or in South Africa. Applicant argues that

opposer, in its initial disclosures served on June 13, 2008,

failed to identify Ms. Jell and the subjects about which she

is knowledgeable, although documents produced by opposer on

March 29, 2012, in connection with discovery, show that

3

Opposition Nos. 91182155 and 91182825

Ms. Jell has been an employee of opposer since at least

October 1, 2007 (Loeb declaration ¶6, Exh. D). Applicant

contends that opposer’s first disclosure regarding Ms. Jell

was in its pretrial disclosures served on March 8, 2012, on

the eve of trial and more than a year after the discovery

period had closed. Applicant also asserts that he is

unfairly prejudiced by the late notice of opposer’s

testimonial witness because applicant did not have the

opportunity to depose Ms. Jell during the discovery period on

the particular issues on which opposer expects Ms. Jell to

testify, such as awards and accolades for opposer’s goods,

pronunciation of the term “SPIER,” and customer perceptions,

behavior and impressions with respect to opposer’s mark.

Applicant contends that had he been informed of Ms. Jell’s

existence and areas of knowledge, his trial preparation

strategy may have differed. Further, applicant contends that

his cross-examination of Ms. Jell will be severely impaired

given that her testimony will be limited to written

questions. Mr. Loeb also states in his declaration that in

attempting to resolve this issue, he proposed to take the

oral testimonial deposition of Ms. Jell either in South

Africa, where she is located, or at a location on the East

Coast of the United States, but that opposer rejected his

offer.

4

Opposition Nos. 91182155 and 91182825

During the teleconference with the Board, the parties

discussed the alternative requests in applicant’s motion.

Opposer argues that there was no unfair surprise because the

person identified in opposer’s initial disclosures

(Ms. Monica Barrows) is no longer employed by opposer; that

applicant did not avail himself of the opportunity to take

the discovery deposition of Ms. Barrows while she was

employed by opposer; and that there is no surprise to

applicant with respect to the particular topics about which

Ms. Jell will testify. On this latter point, opposer notes

that it already submitted evidence on those topics by means

of Ms. Barrows’ 2008 declaration in support of opposer’s

motion for summary judgment and by opposer’s responses to

applicant’s second set of interrogatories, which were served

in January, 2012.4

As to applicant’s alternative motion to allow an oral

testimonial deposition of Ms. Jell in the United States or in

South Africa, opposer argues that applicant has not shown any

prejudice or good cause that would support a finding that

this case should be an exception to Trademark Rule

2.123(a)(2), which requires that a deposition of a

4

In its order dated December 13, 2011, the Board ordered the

parties to serve outstanding responses to certain discovery

requests within thirty days of the mailing date of that order.

5

Opposition Nos. 91182155 and 91182825

representative in a foreign country must be taken upon

written questions, unless the Board, upon motion for good

cause, orders that the deposition be taken by oral

examination, or the parties so stipulate. Further, opposer

contends that it would be prejudiced if applicant were

allowed to take an oral deposition of Ms. Jell because

applicant has already seen opposer’s written questions for

the testimonial deposition. In response to questioning by

the Board, opposer stated that it had informed applicant by

means of a discovery response served on November 10, 2010,

that Ms. Barrows was no longer in opposer’s employ,5 and

admitted that opposer did not provide to applicant the name

of a substitute or replacement for Ms. Barrows prior to its

pretrial disclosures.

In reply, applicant argues, inter alia, that opposer did

not provide any reason why it did not inform applicant of

Ms. Jell’s identity earlier in the proceeding; and that

applicant had chosen not to depose Ms. Barrows because

applicant believed that her declaration submitted in support

of opposer’s summary judgment motion represented the best of

her knowledge regarding issues involved in the case.

5

This assertion was not contradicted by applicant.

6

Opposition Nos. 91182155 and 91182825

• Board’s Analysis

Each party to an inter partes proceeding must serve

initial disclosures that identify “each individual likely to

have discoverable information that the disclosing party may

use to support its claims or defenses, unless the use would

be solely for impeachment.” See Fed. R. Civ. P. 26(a)(1);

Trademark Rules 2.116(a) and 2.120(a)(2) (Board emphasis).

See also TBMP § 533.02(b) (3d ed. 2011). Parties are also

required to supplement their respective initial disclosures

“in a timely manner if the party learns that in some material

respect the disclosure or response 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.” Fed. R. Civ. P.

26(e)(1)(A); Trademark Rules 2.116(a) and 2.120(a)(1). See

also Great Seats, Inc. v. Great Seats, Ltd., 100 USPQ2d 1323,

1326 (TTAB 2011); Galaxy Metal Gear Inc. v. Direct Access

Technology Inc., 91 USPQ2d 1859, 1861 (TTAB 2009).

In identifying individuals through initial disclosures,

a party need not identify all those that may be called at

trial as potential “trial witnesses,” and instead must

identify any trial witnesses through pretrial disclosures.6

6

Parties are required to serve pretrial disclosures to inform

the adverse party of the identity of prospective trial witnesses,

7

Opposition Nos. 91182155 and 91182825

However, because individuals identified through initial

disclosures have knowledge that the disclosing party may use

to support its claims or defenses, the persons identified in

initial disclosures may reasonably be viewed as possible

trial witnesses. Jules Jurgensen/Rhapsody, Inc. v.

Baumberger, 91 USPQ2d 1443, 1443 n.1 (TTAB 2009). Cf. Great

Seats, 100 USPQ2d at 1326 n.5 (“If the identity of the

witness is known when initial disclosures are made, and the

relevant knowledge of the witness is known, then a party may

have to disclose the identity of the witness when making

initial disclosures, even if the party has no plans at that

time to rely on testimony from the witness.”). Additionally,

the Board has stated that, unless seasonably remedied, a

party’s failure to identify a witness in its initial

disclosures deprives the adverse party of the opportunity to

seek discovery of the identified witness, and this fact “must

[be] consider[ed] … as one of the relevant circumstances … in

determining whether to strike [the witness’s] testimony

deposition.” Jules Jurgensen, 91 USPQ2d at 1444-45.

or any witness from whom it might take testimony if needed, thus

avoiding surprise witnesses and facilitating the orderly taking

of testimony. See Fed. R. Civ. P. 26(a)(3); Trademark Rule

2.116(a). See also Notice of Final Rulemaking, Miscellaneous

Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg.

42242, 42257-58 (Aug. 1, 2007).

8

Opposition Nos. 91182155 and 91182825

Under the estoppel sanction, a party that fails to

provide information via disclosure or appropriate response to

a discovery request may, upon motion or objection by its

adversary, be precluded from using that information or

witness at trial, “unless the failure was substantially

justified or is harmless.” Fed. R. Civ. P. 37(c)(1);

Trademark Rule 2.116(a). See Great Seats, 100 USPQ2d at

1326-27. To determine whether opposer’s failure to disclose

Ms. Jell in its initial disclosures, in supplemental initial

disclosures, or in a supplemental response to applicant’s

interrogatories (discussed infra) is substantially justified

or harmless, the Board is guided by the following five-factor

test applied in Great Seats, namely: “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 non-disclosing party’s

explanation for its failure to disclose the evidence.” See

Great Seats, 100 USPQ2d at 1327 (internal citations omitted).

Applying these factors to the present case, the record

shows that opposer served its initial disclosures on June 13,

2008 (Exh. A, Loeb dec.); that opposer identified Ms. Barrows

in its initial disclosures as its “witness”; that no other

person was identified in opposer’s initial disclosures as

9

Opposition Nos. 91182155 and 91182825

having discoverable information; that opposer informed

applicant on November 10, 2010, that Ms. Barrows was no

longer employed by opposer; that opposer served its pretrial

disclosures on March 8, 2012, which listed Ms. Jell as

opposer’s trial witness (Exh. C, Loeb dec.); that Ms. Jell

was a signatory for “Spier Wines South Africa” on a

“Memorandum of Understanding” regarding the “Spier Brand,”

which was executed on October 1, 20077 (Exh. D, Loeb dec.);

and that opposer did not supplement its initial disclosures

or otherwise specifically inform applicant in writing of any

individual other than Ms. Barrows (in the United States or

elsewhere) likely to have discoverable information that

opposer might use to support its claims, as required under

Fed. R. Civ. P. 26(e)(1)(A).

The Board also finds that opposer could have identified

Ms. Jell in supplementary initial disclosures at least as

early as November 10, 2010, when opposer informed applicant

that Ms. Barrows was no longer employed by opposer. The

information and documents referenced in opposer’s initial

disclosures (along with the identification of Ms. Barrows),

7

The Memorandum of Understanding was provided to applicant in

opposer’s production of documents on March 29, 2012, after

opposer’s pretrial disclosures were served. A redacted copy of a

segment of that document was submitted as an attachment to

counsel’s declaration in support of the subject motion.

10

Opposition Nos. 91182155 and 91182825

are virtually identical to the list of topics and documents

about which opposer intends to have Ms. Jell testify during

the course of the noticed testimonial deposition. Further,

Ms. Jell is opposer’s International Sales Director (whereas

Ms. Barrows was only the Northeast U.S. Sales Manager) and

Ms. Jell was a signatory for opposer in an agreement dated

October 1, 2007. Yet, notwithstanding Ms. Jell’s noteworthy

corporate role, Ms. Jell was not identified as a person

having discoverable information in opposer’s initial

disclosures, nor did opposer identify Ms. Jell in

supplementary initial disclosures later in the proceeding,

e.g., when the proceeding resumed after the Board denied

opposer’s motion for summary judgment on August 20, 2010, or

three months later, when opposer informed applicant that

Ms. Barrows was no longer in opposer’s employ.8

Alternatively, opposer could have facilitated the

exchange of information between the parties during the course

8

Although the record shows that opposer informed applicant on

November 10, 2010, of Ms. Barrows’ status as a former employee,

it is unclear at what point during the proceeding Ms. Barrows was

no longer employed by opposer. Subsequent to the date on which

Ms. Barrows executed her declaration in support of opposer’s

motion for summary judgment (i.e., on August 22, 2008), the

proceeding was effectively suspended for settlement from October

15, 2008 until June 30, 2010, by multiple orders extending

applicant’s time to respond to the summary judgment motion in

view of the parties’ settlement negotiations. The proceeding

resumed on August 20, 2010, in accordance with the Board’s order

denying opposer’s motion for summary judgment.

11

Opposition Nos. 91182155 and 91182825

of discovery by supplementing its discovery responses to

identify Ms. Jell. For instance, it is noted that in

opposer’s responses dated September 29, 2010, to Applicant’s

Second Amended First Set of Interrogatories,9 opposer

identified “Mr. Andrew Milne (CEO) and Mr. Gerhard de Kock

(FD)” in response to interrogatory no. 1, which requested

that opposer identify “each officer and managing agent of

Opposer.”10 Various corporate officers, directors and

management level employees are often identified during

discovery, and may be deposed by the adverse party11 or used

to adduce evidence during the testimony periods in Board

proceedings.12 In the case at bar, Ms. Jell was clearly an

9

Opposer’s responses to applicant’s August 25, 2010

interrogatories were submitted as an attachment to applicant’s

response to opposer’s motion to compel filed on March 21, 2011.

10

The record does not indicate whether the title “International

Sales Director,” held by Ms. Jell, represents either an officer

or managing agent position with opposer. Without knowing more,

based on the current record, and given that applicant only

inquired about opposer’s officers and managing agents, opposer

cannot be faulted for not originally identifying Ms. Jell in

response to applicant’s interrogatory no. 1. Cf. Charrette Corp.

v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2041 (TTAB

1989) (“If registrant wished to depose during discovery a witness

having knowledge of petitioner’s sales and advertising of

PROPRINT products[,] a request for the person or persons most

knowledgeable on that subject would have been a proper inquiry

and would have elicited the information it was seeking.”).

11 See generally Fed. R. Civ. P. 30(b)(6) (concerning depositions

of corporate entities); Fed. R. Civ. P. 31(a)(3) (authorizing

broad use of management level employees’ deposition testimony).

12

See, e.g., TBMP §§ 404.03(a)(1), 404.03(b) & 703.01(a) (3d ed.

2011).

12

Opposition Nos. 91182155 and 91182825

individual that might fill such roles.13 Therefore, opposer

should have included Ms. Jell in its response to applicant’s

interrogatory no. 1, assuming that “International Sales

Director” is an officer or managing agent post for opposer.

Even if it would not have been required of opposer to

identify Ms. Jell in its response to interrogatory no. 1,

once Ms. Barrows was no longer in its employ, that is, after

it became clear that it would be unlikely for applicant to

further consider that Ms. Barrows would be a witness for

opposer,14 then opposer should have supplemented its initial

disclosures to identify Ms. Jell. In any event, opposer did

not inform applicant of Ms. Jell’s identity as a person

having discoverable information in its initial disclosures,

in any supplemental initial disclosures, or in a supplemental

response to discovery requests.

Opposer’s contention that any prejudice to applicant

resulting from lack of prior notice was the result of his

13

It is unclear why opposer would identify its Financial

Director, rather than opposer’s International Sales Director,

where the Board’s jurisdiction is limited to registrability and

opposer’s only claim in this case is likelihood of confusion. See

General Mills, Inc. v. Fage Dairy Processing Industry S.A., 100

USPQ2d 1584 (TTAB 2011) (“The Board has no authority to determine

the right to use, or the broader questions of infringement,

unfair competition, damages or injunctive relief.”).

14

See Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045,

2048-49 (TTAB 1988) (deposition of former employee can only be

taken by voluntary appearance or by subpoena).

13

Opposition Nos. 91182155 and 91182825

failure to depose Ms. Barrows is unavailing. As an initial

matter, the parties’ obligations to serve initial, expert and

pretrial disclosures are independent requirements of the

Trademark Rules. Jules Jurgensen/Rhapsody, 91 USPQ2d at

1445.

Here, opposer failed to identify Ms. Jell, its

International Sales Director, as having discoverable

information before serving its pretrial disclosures. As a

result, applicant was unable to conduct appropriate discovery

with respect to Ms. Jell. Clearly, applicant’s inability to

conduct discovery in connection with Ms. Jell was caused by

opposer’s failure to fulfill its written disclosure

obligations as to Ms. Jell, and is not the result of any

inaction on applicant’s part with respect to Ms. Barrows.

Cf. Wallace v. U.S.A.A. Life General Agency, Inc., ---

F.Supp.2d ---, 2012 WL 1068313 (D.Nev. March 29, 2012)

(plaintiff’s argument that it “should be permitted to use its

non-disclosed witness because its disclosed witnesses could

have provided the same information if deposed is a non

sequitur and a thinly-veiled attempt to assign the

responsibility to Plaintiff for its own violations of

Rule 26”).

Further, unlike the facts discussed in the Board’s

recent decision in Byer California v. Clothing for Modern

14

Opposition Nos. 91182155 and 91182825

Times Ltd., 95 USPQ2d 1175, 1178 (TTAB 2010), this is not a

case where applicant had been informed of the potential

witness in discovery responses, yet waited until the

penultimate day of the discovery period to seek information

regarding opposer’s claims. Rather, since Ms. Barrows was

the only identified potential witness and she resided in the

United States, it was reasonable for applicant to expect to

rely on the information set forth in Ms. Barrows’ summary

judgment declaration for trial preparation and for conducting

an oral cross-examination of Ms. Barrows during her

testimonial deposition, if any. Moreover, given that only

sixteen days remained in the discovery period when opposer

informed applicant that Ms. Barrows was no longer employed by

opposer,15 the prejudice to applicant resulting from

opposer’s failure to disclose Ms. Jell’s identity is hardly

the result of applicant’s failure to act. Opposer gave

applicant only minimal notice that opposer’s only

previously-identified witness would likely be unavailable

during trial. In addition, although the parties agreed to

three two-week and one one-month extensions to the discovery

period in order to address issues related to their respective

15

According to the Board’s order dated August 20, 2010, discovery

was set to close on November 26, 2010.

15

Opposition Nos. 91182155 and 91182825

written responses to discovery,16 opposer did not identify

Ms. Jell as a person having discoverable information during

those extensions. Thus, opposer’s contention that any

prejudice to applicant is the result of applicant’s conduct

is entirely unpersuasive.

In view of these particular circumstances, the Board

finds that opposer’s failure to identify Ms. Jell as a person

having discoverable information earlier in these proceedings,

as well as opposer’s failure to supplement its initial

disclosures once Ms. Barrows was no longer employed by

opposer or at any time prior to serving its pretrial

disclosures, resulted in surprise to applicant. Thus, the

first factor applied in Great Seats strongly favors

applicant. Further, the surprise to applicant was

prejudicial, not harmless, because applicant was deprived of

the opportunity to seek discovery of opposer’s only

subsequently-identified testimonial witness. See Jules

Jurgensen, 91 USPQ2d at 1444-45.

Additionally, because opposer provided no explanation

whatsoever as to why it did not identify Ms. Jell as a person

16

The Board granted the parties’ consent motions filed on

November 24, 2010, December 10, 2010, December 29, 2010, and on

January 6, 2011, to extend the discovery period in order to allow

the parties to meet and confer regarding the sufficiency of their

respective discovery responses. The discovery period ultimately

closed on February 5, 2011.

16

Opposition Nos. 91182155 and 91182825

having discoverable information prior to serving its pretrial

disclosures, the fifth factor discussed in Great Seats also

favors applicant.

In determining the importance of the evidence or

testimony to the fair adjudication of the proceedings, the

Board will consider various factors, including whether the

testimony is cumulative or if evidence can be introduced by

other means, and whether the proposed testimony would be

admissible. See Byer, 95 USPQ2d at 1179 (excluding testimony

on subjects within the knowledge of other witness identified

in initial disclosures). Cf. MicroStrategy Inc. v. Business

Objects, S.A., 429 F.3d 1344, 77 USPQ2d 1001, 1009-10 (Fed.

Cir. 2005) (“while this exclusion admittedly left

MicroStrategy without evidence of damages or causation for

most of its business tort claims, this factor is only one of

five that does not tip the scale in favor of MicroStrategy,

particularly were [it] alone is to blame for creating this

situation”).

In this matter, it is noted that opposer previously

submitted status and title evidence of its oldest pleaded

registration and, during its testimony period, opposer

submitted notices of reliance. In view thereof, the Board

finds that the importance of Ms. Jell’s testimony is less

critical to opposer’s case than if opposer had failed to

17

Opposition Nos. 91182155 and 91182825

adduce any other evidence in support of its claims. Further,

to the extent Ms. Jell would be called to testify that

opposer has received industry awards and accolades for its

goods, in the absence of evidence establishing the

significance of the awards and knowledge thereof on the part

of relevant U.S. purchasers (in addition to evidence

regarding opposer’s sales, advertising and market share),

such testimony would not necessarily establish that opposer’s

marks are famous, and might only tend to show that opposer’s

products are perceived to be of high quality or are

recognized only by industry groups. See Bose Corp. v. QSC

Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305-06

and 1309 (Fed. Cir. 2002) (fame indicated by widespread

critical assessments and nationwide exposure to mark in

connection with relevant goods). Cf. Best Cellars Inc. v.

Grape Finds at Dupont, Inc., 90 F.Supp.2d 431, 54 USPQ2d 1594

(S.D.N.Y. 2000) (Court concluded that wine store’s trade

dress was not famous, stating that “while Best Cellars is

certainly famous within retail design circles and within the

retail wine world, such fame does not extend to the general

public”).

In addition, Ms. Jell’s proposed testimony, as that of a

fact witness (and an individual representative of a party to

18

Opposition Nos. 91182155 and 91182825

the proceeding) on the pronunciation of the term “SPIER,”17

is likely to be accorded relatively little weight on the

issue of the pronunciation of the mark by consumers in the

United States, which is critical in the comparison of the

marks.18 Cf. Centraz Industries Inc. v. Spartan Chemical

Co., 77 USPQ2d 1698, 1701 (TTAB 2006) (There “is no correct

pronunciation of a trademark, and it obviously is not

possible for a trademark owner to control how purchasers will

vocalize its mark”), citing Interlego AG v. Abrams/Gentile

Entertainment Inc., 63 USPQ2d 1862 (TTAB 2002).

It is also unclear how Ms. Jell, who apparently lives in

South Africa, would be able to offer admissible testimony on

the perceptions, behaviors and impressions of consumers in

the United States. In short, with regard to whether Ms.

Jell’s testimony would be important to the fair adjudication

17

Opposer’s testimonial deposition questions (attached as Exh. A

to the notice of her deposition) show that Ms. Jell would be

asked to “spell and describe how Opposer’s SPIER mark is

pronounced” (Loeb dec., Exh. J).

18

Presumably, Ms. Jell would testify that the involved marks are

or are likely to be pronounced the same. The Board has long

considered testimony on pronunciation of trademarks – even by

linguistic experts -- to be of little or no use. Edwards

Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB

2010); Anheuser-Busch Inc. v. Holt, 92 USPQ2d 1101, 1106 (TTAB

2009); Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633

(TTAB 1999); Fisons Ltd. v. UAD Labs., Inc., 219 USPQ 661, 663

(TTAB 1983); Mennen Co. v. Yamanouchi Pharm. Co., Ltd., 203 USPQ

302, 305 (TTAB 1979).

19

Opposition Nos. 91182155 and 91182825

of this case,19 it does not appear that Ms. Jell’s testimony

on written questions would be particularly critical or

persuasive in the ultimate determination of the merits of

this case by a panel of Board judges. Cf. Design Strategies,

Inc. v. Davis, 228 F.R.D. 210, 213 (S.D.N.Y. 2005) (finding

importance of testimony factor weighed against preclusion

because proffered testimony would be highly probative of

material facts and would carry substantial weight). In view

of the foregoing, the Board concludes that the fourth factor

set forth in Great Seats favors applicant.

With respect to whether applicant can cure the surprise

resulting from the identification of the witness, applicant’s

ability to mitigate the missed opportunity to depose Ms. Jell

during discovery is significantly diminished by the fact that

the discovery period closed over one year ago and by

limitations of the noticed testimonial deposition upon

written questions. See TBMP § 703.02(m) (3d ed. 2011) (“a

deposition on written questions … deprives an adverse party

of the right to confront the witness and ask follow-up

19

Insofar as the Board will not entertain any motion in limine

challenging or otherwise relating to the probative value or

sufficiency of a party’s trial evidence, the Board’s weighing

here of the importance of Ms. Jell’s testimony should not be

interpreted as a finding with respect to any evidence that

opposer may have submitted during its testimony period or may

submit during its reopened testimony period (discussed infra).

See TBMP § 502.01 (3d ed. 2011) and cases cited therein.

20

Opposition Nos. 91182155 and 91182825

questions on cross-examination”20) and cases cited therein.

In addition, opposer has refused to consent to an oral

deposition of Ms. Jell, notwithstanding applicant’s offer to

conduct the oral deposition in South Africa. Consequently,

the Board finds that applicant has little, if any, ability to

cure opposer’s failure to provide adequate notice of Ms. Jell

as a person who is knowledgeable about the relevant issues to

applicant. Therefore, the second factor discussed in Great

Seats favors applicant.

Regarding the extent to which allowing Ms. Jell’s

testimony would disrupt the trial, reopening the discovery

period to allow applicant to schedule and then conduct a

discovery deposition upon written questions of Ms. Jell would

significantly disrupt these proceedings.21 In view thereof,

20

The Board recognizes that applicant may have been hampered by

similar limitations in conducting a discovery deposition upon

written questions, even if opposer had identified Ms. Jell during

the discovery period. However, because there was no notice

regarding Ms. Jell’s identity earlier in the proceeding, there

was no opportunity for applicant to pursue any alternative

avenues of discovery with respect to Ms. Jell, whether under Fed.

R. Civ. P. 30(b)(1) or (30)(b)(6).

21

In particular, the Board notes that the parties have stipulated

to a great many extensions or suspensions to accommodate

settlement talks, but their talks did not result in settlement of

the case. Further, the proceeding has already been delayed by

the brief reopening of a limited discovery period for applicant

in connection with opposer’s recently issued and pleaded

registration (see Board’s order dated May 15, 2012) and the

parties’ agreed reopening of opposer’s trial period for five days

(discussed infra). Thus, the overall age of these proceedings

demands that the parties, if they are not willing to settle the

case, move without additional delay through trial.

21

Opposition Nos. 91182155 and 91182825

the third factor also favors applicant.

Apart from the five factors discussed in Great Seats,

the Board is concerned that opposer’s failure to identify

Ms. Jell in any manner during the discovery period

effectively misled applicant as to the identity of persons

who might ultimately be identified as prospective trial

witnesses. Specifically, given that Ms. Jell is now

identified as opposer’s sole witness for trial, and thus

evidently is thought by opposer to have not just discoverable

information, but information that would aid opposer in

carrying its burden of proof as plaintiff, the Board finds

that opposer should have identified Ms. Jell as a person

“likely to have discoverable information that the disclosing

party may use to support its claims or defenses,” earlier in

this proceeding, well before the close of the discovery

period. See Byer, 95 USPQ2d at 1178 (“It would be curious

for a trial witness not to have discoverable information”).

Balancing all the foregoing facts and concerns, the

Board concludes that opposer failed to timely identify

Ms. Jell as a person knowledgeable about the issues involved

in these proceedings, and that such failure was neither

harmless nor substantially justified. Essentially, opposer

treated the initial and pretrial disclosure requirements as

unrelated events, rather than recognizing that disclosures

22

Opposition Nos. 91182155 and 91182825

and discovery responses should be viewed as a continuum of

inter partes communication designed to avoid unfair surprise

and to facilitate fair adjudication of the case on the

merits. For all of these reasons, it is appropriate to apply

the estoppel sanction and preclude the testimony of opposer’s

witness.

Accordingly, applicant’s combined motion to strike

opposer’s pretrial disclosure of Ms. Jell as its testimonial

witness and to quash opposer’s notice of testimony deposition

of Ms. Jell upon written questions is GRANTED.22

Agreed Reopening of Opposer’s Trial Period for Five Days

At the conclusion of the telephone conference, the Board

granted applicant’s motion to preclude Ms. Jell’s testimony,

with this order to follow to provide the basis for such

decision. Opposer immediately requested additional time to

submit evidence by means of notice of reliance. The Board

construed opposer’s request as a motion to reopen its

testimony period, and because applicant consented to the

request, granted the motion. See Trademark Rule 2.127(a).

Proceedings are Suspended and Trial Dates Remain as Reset

in May 30, 2012 Orders

During the subject telephone conference, these

22

In view thereof, applicant’s alternative motion to conduct an

oral deposition of Ms. Jell is moot.

23

Opposition Nos. 91182155 and 91182825

proceedings were resumed, and opposer’s testimony period was

set to reopen from June 18 through June 22, 2012, for a

period of FIVE DAYS to allow opposer to submit additional

evidence by notice of reliance. See generally TBMP §§ 704.02

et seq. (3d ed. 2011). However, since the subject

conference, the parties requested that the proceedings be

suspended pending their settlement discussions. In view

thereof, and in accordance with the Board’s related

suspension and scheduling orders dated May 30, 2012, these

proceedings remain SUSPENDED through June 28, 2012, subject

to the right of either party to request resumption at any

time, and shall resume on June 29, 2012. Opposer’s testimony

period shall reopen on July 18, 2012, and close on July 22,

2012. Subsequent disclosure and trial dates have been reset

accordingly. A copy of the reset trial schedule is set forth

below for the parties’ convenience.

Time to File Amended Answer 6/29/2012

Reopened discovery for Applicant Closes 7/14/2012

Plaintiff's Testimony Reopens and

Closes 7/18 - 7/22/2012

Defendant's Pretrial Disclosures Due 8/6/2012

Defendant's 30-day Trial Period Ends 9/20/2012

Plaintiff's Rebuttal Disclosures Due 10/5/2012

Plaintiff's 15-day Rebuttal Period Ends 11/4/2012

In each instance, a copy of the transcript of

testimony, together with copies of documentary exhibits,

24

Opposition Nos. 91182155 and 91182825

must be served on the adverse party within THIRTY DAYS after

completion of the taking of testimony. See 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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