The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
This Decision is a Trademark Trial and Appeal Board
Precedent of the TTAB P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
EJW Mailed: January 26, 2015
Opposition No. 91188847
Entravision Communications
Corporation
v.
Liberman Television LLC
ELIZABETH J. WINTER, INTERLOCUTORY ATTORNEY:
This case now comes up for consideration of Applicant’s fully briefed
motion to substitute a new expert witness for a previously disclosed expert
witness and to supplement its expert disclosures. For the reasons set forth
below, we grant the motion.
By way of background, in accordance with the Board’s scheduling order
issued on July 29, 2011, expert disclosures were due by October 2, 2011.
Applicant timely filed its original notice of expert disclosures with the Board
on September 30, 2011, and its amended notice of expert disclosures on
October 3, 2011.1 One of the expert witnesses Applicant designated was
1 The submission and service of Applicant’s amended notice were timely inasmuch as
October 2, 2011 was a Sunday; thus, the effective due date for the expert disclosures
was Monday, October 3, 2011. See Trademark Rule 2.196, 37 C.F.R. §2.196.
Opposition No. 91188847
Edith Rondon, an asserted “media buyer and media planner expert” (motion
at 2). Applicant expected Ms. Rondon to testify regarding numerous subjects,
including the sophistication of purchasers of the parties’ goods and services,
the manner in which such purchases are made, and the distinctions between
“the type of media, formats and ratings” for radio stations and television
networks. She was also expected to rebut the testimony of Opposer’s experts.
Opposer took Ms. Rondon’s discovery deposition on November 15, 2013.2 In
April 2014, Ms. Rondon informed Applicant’s counsel that she had resigned
her position with her previous employer, that her new employer prohibits its
employees from testifying as experts in legal actions, and that she previously
was unaware that her new employer would curtail her services as an expert
witness. By its motion, Applicant now requests that the Board allow it to use
a substitute for Ms. Rondon, specifically, Ms. Marsha Torres James, as one of
its expert witnesses and to use Ms. James’ expert report in lieu of Ms.
Rondon’s report. Opposer has contested the motion.
• Decision
Trademark Rule 2.120(a)(2), 37 C.F.R. §2.120(a)(2), provides in relevant
part that “[d]isclosure of expert testimony must occur in the manner and
sequence provided in Federal Rule of Civil Procedure 26(a)(2).” “The goal of
Rule 26(a) is to promote full disclosure of the facts and prevent ‘trial by
2 Although Applicant served its expert disclosures in late 2011, the discovery
deposition of Ms. Rondon was delayed by the parties’ three intervening contested
motions and stipulated motions for extensions of time.
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Opposition No. 91188847
ambush’.” Baumann v. American Family Mutual Ins. Co., 278 F.R.D. 614, 615
(D.Colo. 2012) (citing Morel v. Daimler–Chrysler Corp., 259 F.R.D. 17, 20
(D.P.R. 2009)). See also Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d
1239, 1246 (TTAB 2012) (disclosures, from initial through pretrial, and
discovery responses should be viewed as a continuum of communication
designed to avoid unfair surprise and to facilitate a fair adjudication of the
case on the merits). Additionally, the provisions regarding the timing of
expert disclosures are intended to facilitate the taking of any necessary
discovery of any proposed expert witness by any party or parties adverse to
the disclosing party, and to allow the adverse party or parties to determine
whether it will be necessary to rely on a rebutting expert. See General
Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d
1890, 1893 (TTAB 2011); and Trademark Trial and Appeal Board Manual of
Procedure (“TBMP”) § 401.03 (2014). A party that has made a disclosure
must supplement or correct its disclosure in a timely manner if the party
learns that in some material respect the disclosure is incomplete or incorrect
(provided the corrective information has not otherwise been made known to
the other party or parties during the discovery process or in writing). Fed. R.
Civ. P. 26(e)(1)(A). See also Fed. R. Civ. P. 26(e)(2) (“Any additions or changes
to this information [included in the expert report and information given
during the expert’s deposition] must be disclosed by the time the party’s
pretrial disclosures under Rule 26(a)(3) are due.”). Any information not
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Opposition No. 91188847
disclosed in a timely manner pursuant to Fed. R. Civ. P. 26 may not be used
as evidence at trial “unless the failure was substantially justified or is
harmless.” Fed. R. Civ. P. 37(c)(1).
The facts in this matter present a case of first impression for the Board
insofar as Applicant did not belatedly decide after the deadline for expert
disclosures that it needs to present an expert witness at trial. Rather,
Applicant had already timely notified Opposer of its experts and their
opinions, but following the expert disclosure deadline and during Opposer’s
testimony period,3 Applicant was informed that one of its previously
designated experts was no longer available. In view thereof, Applicant was
obliged to promptly (i) inform Opposer of Ms. Rondon’s withdrawal and (ii)
move for leave to present testimony by its substitute expert. Cf. Trademark
Rule 2.120(a)(2), 37 C.F.R. §2.120(a)(2). The record indicates that once
Applicant’s counsel was informed of Ms. Rondon’s unavailability, he
immediately sought to find a substitute expert and notified Opposer about a
week before filing this motion, that Ms. Rondon had resigned and that a
replacement expert had been identified (declaration of Douglas W.
Abendroth, Applicant’s counsel, Exh. A). Further, the Board finds that
Applicant promptly filed the subject motion insofar as it was filed during
Opposer’s extended testimony period and within a few weeks of learning that
3 As a result of the Board’s January 2, 2014, April 2, 2014, and May 9, 2014
scheduling orders, the close of Opposer’s testimony period was extended from April
11, 2014 until May 24, 2014. Therefore, under any of the trial schedules, Applicant
was informed of Ms. Rondon’s withdrawal during Opposer’s testimony period.
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Opposition No. 91188847
the originally-designated expert witness was no longer available.4 However,
because Applicant’s disclosure of its substitute witness did not occur prior to
the deadline for serving expert disclosures, in order to determine whether
Applicant may substitute both its previously designated witness and her
report, the Board must consider whether the failure was substantially
justified or is harmless.5 Fed. R. Civ. P. 37(c)(1).
In determining whether the failure to make a timely disclosure was
substantially justified or is harmless, the Board is guided by the following
five-factor test: “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 nondisclosing party’s explanation for its failure to
disclose the evidence.” Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d
1323, 1327 (TTAB 2011) (citing Southern States Rack & Fixture, Inc. v.
Sherwin-Williams Co., 318 F.3d 592, 597 (4th Cir. 2003)). See also
MicroStrategy, Inc. v. Business Objects, S.A., 429 F.3d 1344, 77 USPQ2d
1001, 1009-10 (Fed. Cir. 2005) (applying Southern States factors).
4 The record also shows that, subsequent to receiving notice from Ms. Rondon,
Applicant’s counsel was sick for a period of two weeks, as was associate counsel (see
Abendroth dec., ¶ 4).
5 Under Fed. R. Civ. P. 26(e)(2) a party may supplement both information included
in the expert report and information given during the expert's deposition before the
time the party’s pretrial disclosures under Rule 26(a)(3) are due. Here, Applicant’s
pretrial disclosures were not yet due, but the question presented involves
substituting a witness and new expert report after the expert disclosure due date,
rather than mere supplementation prior to the pretrial disclosure deadline. Thus, it
is necessary to analyze the issue under Fed. R. Civ. P. 37(c)(1).
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Opposition No. 91188847
Turning first to Applicant’s explanation for its failure to previously
disclose Ms. James, the Board finds that Applicant’s motion is supported by
substantial justification. Prohibition by an employer where such a bar was
not previously known, like the death of an expert witness, falls squarely
within the category of circumstances that may justify what would otherwise
be a late disclosure. Further, the record shows that, prior to April 2014, Ms.
Rondon neither informed Applicant or its counsel of her intent to take new
employment, nor did she advise them of the possibility that she would no
longer be able to serve as an expert in this proceeding (dec. of Edith Rondon,
¶4). Therefore, Applicant was left no choice but to find a substitute expert
and to file the subject motion to substitute. Accordingly, this factor strongly
favors Applicant.
Regarding whether there is prejudice or surprise to Opposer and the
ability to cure any surprise, “prejudice may arise when a party is surprised
with … new subject matter after the deadlines for discovery have passed.”
Morel v. Daimler–Chrysler Corp., 259 F.R.D. at 21. However, if there is no
“meaningful change in testimony,” the non-moving party will suffer little
prejudice. Id. See also Baumann v. American Family Mutual Ins. Co., 278
F.R.D. at 616. Here, Applicant states that Ms. James, who like Ms. Rondon is
a “media buyer/media planner expert” (Abendroth dec., ¶8), “will testify to
the same topics as those [on which] Ms. Rondon was designated to testify,
and no others, and it is anticipated that the replacement witness’s testimony
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Opposition No. 91188847
and opinions will be substantially the same as those of Ms. Rondon in her
discovery deposition” (Abendroth dec., ¶5). In particular, the testimony that
Ms. James will give is of points which are virtually identical to the list of
topics Ms. Rondon discussed in her report (motion at 2-3; Rondon dec., ¶2;
Abendroth dec., ¶7). Therefore, because Applicant timely disclosed that Ms.
Rondon would testify as an expert on the identical matters, Opposer had time
to ascertain whether it would need to retain an expert to contradict or rebut
that expert witness on these issues and, if so, to provide its own expert
disclosure. See General Council of the Assemblies of God, 97 USPQ2d at 1893
(explaining the purpose of expert disclosures). Further, should Ms. James’
testimony address a topic that was not addressed in Ms. Rondon’s discovery
deposition or report, Opposer may file a motion to exclude any particular
testimony about which Opposer did not have timely notice.6 Morel, 259 F.R.D.
at 21; Baumann, 278 F.R.D. at 616. Moreover, in view of these particular
circumstances, to avoid any prejudice to Opposer, Opposer will be allowed
time to take the discovery deposition of Ms. James, should it wish to do so,
and the trial schedule will be reset. In view of the foregoing, the factors of
6 Opposer appears to seek to exclude Ms. James’ testimony on the basis that it, like
Ms. Rondon’s testimony, will assertedly be cumulative, contain inadmissible matter,
and improperly collaterally attack Opposer’s marks. To the extent that Opposer’s
response could be construed as a motion to exclude, said motion is denied as
premature. The Board will not consider substantive objections to testimony prior to
trial. See, e.g., Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98
USPQ2d 1370, 1371-72 n.2 (TTAB 2011) (it is not the Board’s policy to read trial
testimony or other trial evidence prior to final decision).
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Opposition No. 91188847
prejudice to the non-disclosing party and the ability of Opposer to cure the
surprise also weigh in favor of Applicant.
As to whether the evidence to be provided by Ms. James is important, the
Board finds, notwithstanding Opposer’s arguments to the contrary, that Ms.
James’ testimony focuses on unique topics and is not entirely duplicative of
the other expert witnesses’ testimony. Thus, this factor weighs in favor of
Applicant.
Finally, as to the extent to which allowing the testimony would disrupt
the trial, clearly, allowing Opposer the opportunity to take a discovery
deposition of Ms. James, will interrupt the existing trial schedule. However,
the parties agreed to a two-month trial schedule, and Opposer’s trial schedule
was extended once. Thus, while this factor weighs in favor of Opposer, the
disruption to the trial schedule is de minimis.
On balance, the Board finds that Applicant’s late notice identifying Ms.
James as the substitute expert witness is both substantially justified and
harmless. Accordingly, Applicant’s motion to substitute Ms. James for Ms.
Rondon and to substitute Ms. James’s report for that of Ms. Rondon is
granted. Applicant is ordered to serve Ms. James’s expert report on Opposer
within FIFTEEN DAYS of the mailing date of this order. It is further ordered
that Opposer is allowed until THIRTY DAYS from the date on which it
receives the expert report to conduct a discovery deposition of Ms. James,
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Opposition No. 91188847
should it wish to do so. Trial dates shall be reset to accommodate the taking
of this discovery deposition.
Proceeding Resumed; Trial Dates Reset
This proceeding is resumed. Trial dates are reset in accordance with the
foregoing orders as follows:
Applicant's Deadline for Serving New
Expert Report February 10, 2015
Opposer's Deadline for Conducting
Discovery Deposition of Applicant's New
Expert March 12, 2015
Testimony period for Defendant and
Plaintiff in the counterclaim to close7 April 23, 2015
Counterclaim Defendant's and Plaintiff's
Rebuttal Disclosures Due May 8, 2015
30-day testimony period for defendant in
the counterclaim and rebuttal testimony
for plaintiff to close June 22, 2015
Counterclaim Plaintiff's Rebuttal
Disclosures Due July 7, 2015
15-day rebuttal period for plaintiff in the
counterclaim to close August 6, 2015
Brief for plaintiff due October 5, 2015
Brief for defendant and plaintiff in the
counterclaim due November 4, 2015
Brief for defendant in the counterclaim and
reply brief, if any, for plaintiff due December 4, 2015
Reply brief, if any, for plaintiff in the
counterclaim due December 19, 2015
7 Forty-two days remained in the testimony period for Defendant/Counterclaim
Plaintiff when the proceeding was suspended on July 7, 2014; therefore, that period
has been reset for a period of 42 days.
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Opposition No. 91188847
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. See
Trademark Rule 2.125, 37 C.F.R. § 2.125.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b),
37 C.F.R. §§ 2.128(a) and (b). An oral hearing will be set only upon request
filed as provided by Trademark Rule 2.129, 37 C.F.R. § 2.129.
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