RTX Scientific, Incorporated v. Nu-Calgon Wholesaler, Inc.

This Decision is a UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

Precedent of the TTAB P.O. Box 1451

Alexandria, VA 22313-1451

Baxley Mailed: March 22, 2013

Cancellation No. 92055285

RTX Scientific, Incorporated

v.

Nu-Calgon Wholesaler, Inc.

Andrew P. Baxley, Interlocutory Attorney:

In the above-captioned proceeding, RTX Scientific,

Inc. (“petitioner”) seeks to cancel Nu-Calgon Wholesaler,

Inc.’s (“respondent”) registration for the following mark,

, for “cleaning preparation for air conditioning or

refrigeration coils” in International Class 3.1 As grounds

for cancellation, petitioner alleges that: (1) the mark is

merely descriptive under Trademark Act Section 2(e)(1), 15

U.S.C. § 1052(e)(1), and has not acquired distinctiveness;

(2) the mark comprises matter that, as a whole, is

functional under Trademark Act Section 2(e)(5), 15 U.S.C. §

1

Registration No. 3888696, issued December 14, 2010. The

registration includes a claim of distinctiveness under Trademark

Act Section 2(f), 15 U.S.C. § 1052(f), and includes the following

statements: “The color(s) blue is/are claimed as a feature of

the mark. The mark consists of the color blue as applied to the

liquid portion of the goods inside the container. The dotted

outline of the goods is intended to show the position of the mark

on the goods and is not part of the mark.”

Cancellation No. 92055285

1052(e)(5); and (3) the mark is generic.2 Respondent, in

its answer, denied the salient allegations of the petition

to cancel.

On October 26, 2012, petitioner filed an expert

disclosure statement with the Board wherein it identified

Roger Holder as an “unretained expert” and indicated that,

on October 10, 2012, it served on respondent an expert

disclosure statement, in accordance with TBMP Section

401.03 (3d ed. rev. 2012) and Fed. R. Civ. P. 26(a)(2)(C).3

This case now comes up for consideration of

respondent’s motion (filed November 6, 2012) to exclude the

expert testimony of Roger Holder or to compel a written

expert report under Fed. R. Civ. P. 26(a)(2)(B) prepared

and signed by Mr. Holder. The motion has been fully

briefed.

2

Petitioner also alleges fraud, but that claim is legally

insufficient. In particular, (1) such claim is made upon

information and belief without setting forth specific facts upon

which that belief is based, and (2) such claim does not include

an allegation that the false, material representation of fact at

issue was made with the intent to deceive the USPTO into issuing

a registration to which respondent was not entitled. See In re

Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009).

3

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). It is unclear

why petitioner waited sixteen days to notify the Board that it

had made expert disclosures. The better practice is to notify

the Board concurrently with disclosure to the adverse party.

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Cancellation No. 92055285

The Board does not make prospective or hypothetical

evidentiary rulings. See, e.g., Greenhouse Systems Inc. v.

Carson, 37 USPQ2d 1748, 1750 (TTAB 1995) (the Board does

not consider motions in limine). Thus, to the extent that

respondent moves to exclude Mr. Holder’s testimony, the

motion is denied as premature. See Trademark Rules

2.123(c) and (e)(3); TBMP Sections 527.01(f) and 533.02.

Turning to the alternative motion to compel petitioner

to produce an expert report prepared and signed by Mr.

Holder, a motion to compel is among the remedies available

to a party alleging that its adversary has served

inadequate disclosures. See Influance Inc. v. Zuker, 88

USPQ2d 1859, 1860 n.3 (TTAB 2008); TBMP Section 523.01.

The Board finds initially that respondent made a good faith

effort to resolve the parties’ dispute prior to seeking

Board intervention, in compliance with Trademark Rule

2.120(e)(1).

In support of the motion to compel, respondent asserts

that, in petitioner’s expert disclosure and supplemental

expert disclosure, petitioner has improperly provided only

limited information regarding the witness and his expected

testimony, and “appears to be relying on Fed. R. Civ. P.

26(a)(2)(C) to claim that Mr. Holder does not need to

provide a written report.” Specifically, respondent notes

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Cancellation No. 92055285

that petitioner has not provided the more detailed written

report required of a witness “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,” under Fed. R. Civ. P.

26(a)(2)(B). Respondent included copies of petitioner’s

expert disclosure and supplemental expert disclosure as

exhibits to its motion.

Petitioner, in its brief in response, admits that “Mr.

Holder is a third-party witness that is capable of

providing expert testimony.” However, petitioner asserts

that it did not retain Mr. Holder; that he is not specially

employed by petitioner; that he has not been, and will not

be, compensated by petitioner; and that he has not prepared

any report for petitioner. Petitioner further asserts that

district courts distinguish between retained and unretained

expert witnesses; that Rule 26(a)(2)(B) does not require

written reports with regard to unretained expert witnesses;

and respondent can seek information from Mr. Holder by the

subpoena duces tecum procedure under Fed. R. Civ. P. 45.

Accordingly, petitioner contends that it need not comply

with the requirements for a written report of Fed. R. Civ.

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Cancellation No. 92055285

P. 26(a)(2)(B) and therefore asks that the Board deny

respondent’s motion.4

In reply, respondent asserts that it will be unfairly

surprised and prejudiced by allowing unretained expert

witness testimony without a written report; that the Board

does not distinguish between retained and unretained

experts and “routinely requires written reports to be

submitted in those rare cases where expert witnesses are

actually used”; and that expert witnesses may be considered

retained even where they are not compensated.

The Board has noted that “expert testimony is

expensive and typically not utilized in Board proceedings.”

Miscellaneous Changes to Trademark Trial and Appeal Board

Rules, 72 Fed. Reg. 42,242, 42,254 (August 1, 2007). In

addition, the Board previously has distinguished only

between testifying and consulting experts, the latter of

whom were not expected to testify. Miscellaneous Changes

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

42,242, 42,246 (August 1, 2007). However, when a

testifying expert is utilized in a Board proceeding, the

party’s planned use of the expert witness is largely

4

The parties do not dispute that petitioner has complied with

the requirements of Fed. R. Civ. P. 26(a)(2)(A) & (C). The

instant motion focuses solely on whether petitioner need provide

a written report prepared and signed by its expert witness.

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Cancellation No. 92055285

governed by Fed. R. Civ. P. 26(a)(2). Trademark Rule

2.120(a)(2).

The 2010 amendment to Fed. R. Civ. P. 26(a)(2) makes

it clear that there is a distinction between an expert

witness who is required to provide a report and one who is

not. Respondent’s reliance on the discussion in General

Council of the Assemblies of God v. Heritage Music

Foundation, 97 USPQ2d 1890, 1891 (TTAB 2011) concerning the

requirement of a written report from “any” expert witness

is unavailing. The circumstances in that case, as well as

the issues it presented (including whether the written

report was defective), and the fact that the circumstances

at issue arose prior to the effective date of the 2010

amendment, make that case distinguishable from the

circumstances and issue presented herein (i.e., whether a

written report is required). See also TBMP Section 401.03.

The question presented by the instant case is a matter of

first impression for the Board.

The applicable federal rule provides that “a party

must disclose ... the identity of any witness it may use at

trial to present evidence under Federal Rule of Evidence

702, 703, or 705.”5 Fed. R. Civ. P. 26(a)(2)(A). Under

5

Federal Rule of Evidence 702 states as follows:

6

Cancellation No. 92055285

Fed. R. Civ. P. 26(a)(2)(B), an expert “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.”6 Thus, courts distinguish between

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.

Rule 703 states as follows:

An expert may base an opinion on facts or data in the

case that the expert has been made aware of or

personally observed. If experts in the particular

field would reasonably rely on those kinds of facts or

data in forming an opinion on the subject, they need

not be admissible for the opinion to be admitted. But

if the facts or data would otherwise be inadmissible,

the proponent of the opinion may disclose them to the

jury only if their probative value in helping the jury

evaluate the opinion substantially outweighs their

prejudicial effect.

Rule 705 states that “[u]nless the court orders otherwise, an

expert may state an opinion — and give the reasons for it —

without first testifying to the underlying facts or data. But

the expert may be required to disclose those facts or data on

cross-examination.”

6

That 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;

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Cancellation No. 92055285

retained and specially employed experts, who must provide

written reports, and unretained experts, who do not.7 See,

e.g., Aumand v. Dartmouth Hitchcock Med. Ctr., 611 F. Supp.

2d 78, 88 (D.N.H. 2009).

In an effort to “resolve[] a tension that has

sometimes prompted courts to require reports under Rule

26(a)(2)(B) even from witnesses exempted from the report

requirement,” Rule 26(a)(2)(C) was added, effective

December 1, 2010. Fed. R. Civ. P. 26(a)(2)(C) advisory

committee notes (2010). Rule 26(a)(2)(C) expressly

addresses witnesses who do not need to provide a written

report. The purpose of the Rule 26(a)(2)(C) was to

emphasize that a Rule 26(a)(2)(B) “report is required only

from an expert described in (a)(2)(B).” Fed. R. Civ. P.

26(a)(2)(C) advisory committee notes (2010) (emphasis

added).

(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.

Fed. R. Civ. P. 26(a)(2)(B).

7

Under Fed. R. Civ. P. 26(a)(2)(C), a witness who is not

required to provide a Rule 26(a)(2)(B) report need only disclose

“(i) the subject matter on which the witness is expected to

present evidence ... [and] (ii) a summary of the facts and

opinions to which the witness is expected to testify.”

8

Cancellation No. 92055285

The United States Court of Appeals for the First

Circuit, in Downey v. Bob’s Discount Furniture Holdings,

Inc., 633 F.3d 1, 6-7 (1st Cir. 2011), stated as follows

with regard to Rule 26(a)(2)(B):8

[T]o give the phrase ‘retained or specially

employed’ any real meaning, a court must

acknowledge the difference between a percipient

witness who happens to be an expert and an expert

who without prior knowledge of the facts giving

rise to litigation is recruited to provide expert

opinion testimony. ... This point is most aptly

illustrated by the distinction that courts have

drawn between treating physicians and physicians

recruited for the purpose of giving expert

opinion testimony. ... [Where] the expert comes

to the case as a stranger and draws the opinion

from facts supplied by others, in preparation for

trial, he reasonably can be viewed as retained or

specially employed for that purpose, within the

purview of Rule 26(a)(2)(B). ... While we

acknowledge that the difference between an

opinion formulated by an on-the-scene expert

during treatment (e.g., by a treating physician)

and one formulated by an expert hired in

anticipation of testimony does not leap off the

page, a close reading of the text of Rule

26(a)(2)(B) convinces us that this is the precise

distinction that the drafters of the rule had in

mind.

See also Southard v. State Farm Fire and Cas. Co., Case No.

4:11-cv-243, 2013 WL 209224, at *3 (S.D. Ga. January 17,

2013), citing Downey v. Bob’s Discount Furniture Holdings,

Inc., supra at 6.

8

The First Circuit, in Downey, made its decision based on Rule

26(a) as it existed at the time of the trial, but noted that the

2010 amendment to that rule reinforced its interpretation of that

rule. Downey v. Bob’s Discount Furniture Holdings, Inc., supra

at 7 n.4.

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Cancellation No. 92055285

In tort and personal injury cases, the on-the-scene

involvement of an expert not required to provide a written

report typically arises from the expert’s participation, in

some way, in the ongoing sequence of events that gave rise

to the litigation in question.9 Examples include: treating

physicians (see Sprague v. Liberty Mut. Ins. Co., 177

F.R.D. 78, 81 (D.N.H. 1998); Fed. R. Civ. P. 26(a)(2)(C)

advisory committee notes (2010)); treating pesticide

professionals (see Downey v. Bob’s Discount Furniture

Holdings, Inc., supra); and treating water damage

remediation professionals (see Southard v. State Farm Fire

and Cas. Co., supra).

Board inter partes proceedings are based upon a

plaintiff’s stated belief of damage arising from

registration of a mark. See Trademark Act Sections 13(a)

and 14, 15 U.S.C. §§ 1063(a) and 1064. Unlike tort or

personal injury cases, there are usually no specific

incidents –- e.g., automobile accidents, floods, or bedbug

infestations -- that give rise to those proceedings. Thus,

in Board inter partes proceedings, an expert is typically

recruited on the basis of experience in the relevant trade

9

“A witness who is not required to provide a report under Rule

26(a)(2)(B) may both testify as a fact witness and also provide

expert testimony under Evidence Rule 702, 703, or 705.” Fed. R.

Civ. P. 26(a)(2)(C) advisory committee notes (2010).

10

Cancellation No. 92055285

or industry and not on the basis of his personal knowledge

of or on-the-scene involvement in any sequence of events

that gave rise to the Board proceedings. See, e.g.,

Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102

USPQ2d 1085 (TTAB 2012) (tobacconist offered expert

testimony regarding Cuban cigar brands in the United

States); UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d

1868 (TTAB 2011) (a musicologist and a marketing

professional offered expert testimony regarding the

significance of the term MOTOWN); Kistner Concrete

Products, Inc. v. Contech Arch Technologies, Inc., 97

USPQ2d 1912 (TTAB 2011) (patent attorney and civil

engineers specializing in structural engineering).

Where 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,

that expert is “retained” for purposes of Rule 26(a)(2)(B)

and that rule therefore requires a written report.10 See

Downey v. Bob’s Discount Furniture Holdings, Inc., supra at

6.

10

Failure to comply with Rule 26(a)(2) may result in a party

being precluded from “us[ing] that witness or relevant expert

information to supply evidence on a motion, at a hearing, or at

trial, unless the failure was substantially justified or is

harmless.” Esposito v. Home Depot U.S.A., Inc., 590 F.3d 72, 77

(1st Cir. 2009). See Fed. R. Civ. P. 37(c)(1).

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Cancellation No. 92055285

In this case, Mr. Holder is identified in petitioner’s

expert disclosures as an “expert” who is “expected to

testify regarding the HVAC/R industry, training provided by

the Refrigeration Service Engineers Society to HVAC/R

contractors and technicians, methods and practices of

HVAC/R contractors, the functionality of [respondent’s]

claimed trade dress, and the lack of distinctiveness ... of

[respondent’s] claimed trade dress.” In the supplemental

expert disclosure, petitioner states that Mr. Holder “will

testify that the use of ‘blue’ for alkaline coil cleaners

has been common in the industry for over a decade and that

color-codes for liquids are also common in the industry.”

These disclosures indicate that Mr. Holder had no on-

the-scene involvement in or personal knowledge of any

incidents giving rise to this proceeding, but rather will

offer expert testimony regarding the use of the color blue

for alkaline coil cleaners in the HVAC industry. Further,

the disclosures suggest that Mr. Holder has reviewed

evidence supplied by petitioner regarding the alleged

functionality and lack of distinctiveness of respondent’s

trade dress in preparation of such expert testimony. As

such, Mr. Holder is a “retained” expert witness, and

petitioner must provide a written report regarding Mr.

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Cancellation No. 92055285

Holder’s intended expert testimony pursuant to Fed. R. Civ.

P. 26(a)(2)(B).

Contrary to petitioner’s arguments, neither the

language of Rule 26(a)(2) nor the aforementioned case law

indicates that whether or not a witness is “retained or

specially employed to provide expert testimony” is

determined by whether or not a party has control over the

expert’s time and testimony or compensates the expert.

Thus, the facts that Mr. Holder is not an employee of

petitioner and that he is not being compensated are not

controlling. Cf. Innogenetics, N.V. v. Abbott

Laboratories, 512 F.3d 1363, 1375, 85 USPQ2d 1641, 1649-50

(Fed. Cir. 2008) (given witness’s role as inventor, mere

fact that he was not being compensated did not exempt him

from furnishing an expert report as a witness who will be

giving scientific testimony).

In view thereof, respondent’s motion to compel is

granted. Petitioner is allowed until thirty days from the

mailing date set forth in this order either to: (1) serve

a written report in compliance with Rule 26(a)(2)(B)

prepared and signed by Mr. Holder and his proposed

13

Cancellation No. 92055285

testimony, or (2) amend its expert disclosures to delete

Mr. Holder as an expert witness.11

Proceedings herein are resumed. The discovery period

is extended to allow respondent an opportunity to take a

discovery deposition of petitioner’s expert witness and to

obtain a rebuttal expert witness, should it so desire.

Remaining dates are reset as follows.

Expert Disclosures Due 4/21/2013

Discovery Closes 5/21/2013

Plaintiff's Pretrial Disclosures Due 7/5/2013

Plaintiff's 30-day Trial Period Ends 8/19/2013

Defendant's Pretrial Disclosures Due 9/3/2013

Defendant's 30-day Trial Period Ends 10/18/2013

Plaintiff's Rebuttal Disclosures Due 11/2/2013

Plaintiff's 15-day Rebuttal Period Ends 12/2/2013

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 2.128(a) and (b). An oral hearing will be set only

upon request filed as provided by Trademark Rule 2.l29.

11

The foregoing discussion on this question of first impression

should not be interpreted as an indication either that the

Board’s view of what type of nonparty testimony constitutes

expert testimony for Board inter partes proceedings has changed,

or that such testimony is necessary as a routine matter.

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Cancellation No. 92055285

If either of the parties or their attorneys should

have a change of address, the Board should be so informed

promptly.

15