Newegg Inc. v. Schoolhouse Outfitters, LLC

U NITED STATES PATENT AND TRADEMARK O FFICE

Trademark Trial and Appeal Board

THIS ORDER IS A

P.O. Box 1451

PRECEDENT OF Alexandria, VA 22313-1451

THE TTAB General Contact Number: 571-272-8500

Mailed: March 30, 2016

Opposition No. 91214178

Newegg Inc.

v.

Schoolhouse Outfitters, LLC

George C. Pologeorgis,

Administrative Trademark Judge:

This proceeding now comes before the Board for consideration of Opposer’s motion

(filed October 15, 2015) for leave to prepare and disclose an expert report in sur-

rebuttal to Applicant’s rebuttal expert’s report and to reset all trial dates to allow for

the same. The motion is fully briefed.

Background

On January 26, 2015, Applicant filed a motion for summary judgment on

Opposer’s claims of likelihood of confusion and dilution. On March 2, 2015, Opposer

moved for leave to use the expert report of Dr. Leon Kaplan of Princeton Research

and Consulting Center, Inc., a purported trademark survey expert. The record

demonstrates that Dr. Kaplan conducted a consumer survey on the issue of likelihood

of confusion and opined that confusion was likely between Opposer’s pleaded

NEWEGG marks and Applicant’s involved EGGHEAD marks. By order dated July

16, 2015, the Board, inter alia, denied Opposer’s motion for leave to use the expert

Opposition No. 91214178

report as it pertained to Applicant’s motion for summary judgment, but granted

Opposer’s motion for leave to allow Opposer to use the testimony of Dr. Kaplan at

trial. By the same order, the Board allowed Applicant (1) until August 25, 2015 to

depose Dr. Kaplan, and (2) until August 15, 2015 to serve on Opposer its rebuttal

expert report. On July 23, 2015, Applicant filed a consented motion to extend its

deadline to serve its rebuttal expert report until September 24, 2015 and to extend

the close of discovery until October 24, 2015 for the sole purpose of allowing the

parties to conduct expert witness discovery, which the Board granted.

On September 24, 2015, Applicant served Opposer with a rebuttal expert report

of Dr. Eugene Ericksen. On October 1, 2015, Applicant took Dr. Kaplan’s discovery

deposition. Opposer took the discovery deposition of Dr. Ericksen on October 21, 2015.

Opposer’s Motion for Leave to Serve Sur-Rebuttal Expert Report

In support of its motion, Opposer argues that Dr. Ericksen’s expert report not only

provided a critique of Dr. Kaplan’s survey, but that it revealed, for the first time, that

Dr. Ericksen conducted his own likelihood of confusion survey which employs a

different methodology than the one performed by Dr. Kaplan. In view thereof,

Opposer argues that the Board should permit Dr. Kaplan to critique Dr. Ericksen’s

opinion and survey so that the Board can understand all perspectives on the dueling

survey formats and opinions of the parties and that denying Opposer the opportunity

to provide this expert testimony and critique will prejudice Opposer and diminish the

quality of the survey evidence in this case and the Board’s ability to determine the

ultimate issue of likelihood of confusion.

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In response, Applicant argues that Opposer’s request to allow another expert

report is merely a delay tactic. Applicant contends that Opposer is not entitled to

introduce sur-rebuttal expert testimony at this late stage of the proceeding since

Opposer has had ample time to decide what evidence it needs to make its case,

including expert testimony. Applicant further maintains that Opposer’s claim that it

was surprised by Applicant’s decision to retain a rebuttal expert to dispute the

consumer survey results of Opposer’s own designated expert witness is disingenuous.

Applicant contends that allowing such additional expert testimony will not only

prejudice Applicant by creating additional costly delay, but will reward Opposer’s

failure to plan diligently and prosecute this opposition. Applicant requests that the

Board deny Opposer’s motion for leave and retain the existing trial schedule because

Opposer failed to demonstrate good cause for introducing more expert opinion

evidence in this proceeding.

In reply, Opposer contends that it could not have anticipated whether Applicant

would conduct its own survey or just provide a critique of Dr. Kaplan’s expert report.

Opposer maintains that it could not anticipate what survey methodology and

potential flaws would exist in Dr. Ericksen’s survey. In view thereof, Opposer argues

that it should be permitted to critique Dr. Ericksen’s opinion and survey so the Board

can better understand all perspectives of the two expert survey results.

Analysis

Fed. R. Civ. P. 26(a)(2)(D), made applicable to Board proceedings by Trademark

Rule 2.116(a), provides in relevant part:

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Opposition No. 91214178

Absent a stipulation or court order, [expert] disclosures must be made:

***

(ii) if the evidence is intended solely to contradict or rebut evidence on the

same subject matter identified [in another party’s expert report], within 30

days after the other party’s disclosure.

Initially, the Board notes that Opposer moved for leave to prepare and serve a sur-

rebuttal expert report within 30 days after Applicant disclosed Dr. Ericksen as a

rebuttal expert witness. That being said, many courts do not read the plain language

of Fed. R. Civ. P. 26(a)(2)(D)(ii) to confer a right to continue filing rebuttal (or sur-

rebuttal) reports. See Carroll v. Allstate Fire & Cas. Ins. Co., No. 12–7, 2013 WL

3810864, at *6 (D. Colo. July 22, 2013) (“Sur-reply expert disclosures are not

anticipated by the Federal Rules of Civil Procedure....”); Rothenberg v. Standard Ins.

Co., No. 11–1906, 2012 WL 2126846, at *2 (D. Colo. June 12, 2012) (“The court finds

that Federal Rule 26(a)(2) permits affirmative expert disclosures and rebuttal expert

disclosures; it does not permit parties to further rebut rebuttal expert disclosures.”);

D.G. ex rel. G. v. Henry, No. 08–74, 2011 WL 2881461, at *1–2 (N.D. Okla. July 15,

2011) (Rule 26(a)(2) “does not provide authority” for sur-rebuttal reports.

Continuously allowing expert rebuttal would create a situation “where there would

be no finality to expert reports.... Such a system would eviscerate the expert report

requirements of Rule 26, would wreak havoc in docket control, and would amount to

unlimited expert opinion presentation.”); Houle v. Jubilee Fisheries, Inc., 2006 WL

27204, at *2 n.4 (W.D. Wash. Jan. 5, 2006) (providing that “the federal rules do not

contemplate ‘sur-rebuttal’ experts”).

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However, the Board does not read Fed. R. Civ. P. 26(a)(2)(D)(ii) to prohibit the

filing of sur-rebuttal reports. Instead, the Board finds that, under appropriate

circumstances, a sur-rebuttal expert report would be proper as long as a party that

wishes to provide a sur-rebuttal expert report promptly seeks leave to do so, which

Opposer has done in this instance. City of Gary v. Shafer, No. 07–56, 2009 WL

1370997, at *6 (N.D. Ind. May 13, 2009) (“Although courts in other circuits appear to

be split on [this issue,] ... [t]he Court finds that Rule 26 does not preclude Defendants

from having 30 days in which to file a sur-rebuttal report”); In re Fleming Companies,

Inc., Contract Litig., No. 98–6042, 2000 WL 35612913, at *1 (W.D. Mo. Nov. 30, 2000)

(agreeing that Rule 26(a)(2) does not preclude the filing of sur-rebuttal export

reports).

Although Dr. Ericksen’s expert witness report includes new evidence in the form

of a different survey performed according to a different methodology on the issue of

likelihood of confusion, the report nevertheless constitutes a proper rebuttal expert

report under the Federal Rules of Civil Procedure. ProMark Brands Inc. v. GFA

Brands, Inc., 114 USPQ2d 1232, 1239 (TTAB 2015). See also Deseret Mgmt. Corp. v.

United States, 97 Fed. Cl. 272, 274 (Fed. Cl. 2011) (quoting T.C. Sys. Inc. v. Town of

Colonie, N.Y., 213 F. Supp.2d 171, 179-80 (N.D.N.Y. 2002) (limiting analysis only to

those methods proposed by the first expert “would impose an additional restriction

on parties that is not included in the Rules.”)); In re REMEC Inc. Sec. Litig., 702 F.

Supp.2d 1202, 1220 (S.D. Cal. 2010) (if an expert rebuttal report is offered to

contradict or rebut the other party’s report, an expert may introduce new methods of

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analysis in the rebuttal report); Kirola v. City & County of S.F., 2010 WL 373817, at

*2 (N.D. Cal. 2010) (rebuttal reports can use additional data not found in the expert

report, so long as it relates to the same subject matter). Under the particular

circumstances of this case, i.e., the existence of two conflicting expert surveys, and

based upon the Board’s interpretation of the Federal Rules of Civil Procedure, it

would not only serve the interest of fairness but would benefit the Board in its ability

to make a just determination of the merits of this case to allow Opposer to provide a

sur-rebuttal by Dr. Kaplan, but only to the limited extent provided below.

In view of the foregoing, Opposer’s motion for leave to allow a sur-rebuttal expert

report is GRANTED to the extent that Opposer is allowed until April 29, 2016 in

which to serve on Applicant a sur-rebuttal expert report authored by Dr. Kaplan

which solely rebuts and/or critiques the methodology of the survey conducted by Dr.

Ericksen, as well as the analysis of the data resulting from the survey. Dr. Kaplan,

however, is precluded from offering any corrections and/or amplifications to his

original expert report or introducing any new evidence or consumer surveys. See

ProMark Brands, 114 USPQ2d at 1241 (Fed. R. Civ. P. 26(e) does not permit expert

to bolster previously disclosed opinions or add new opinions). In turn, Applicant is

permitted, if it so chooses, to depose Dr. Kaplan again once it receives Dr. Kaplan’s

sur-rebuttal expert report. This deposition, however, must be limited to the subject

matter of Dr. Kaplan’s sur-rebuttal expert report, as restricted by this order.

Furthermore, the parties are precluded from seeking any future rebuttal reports from

experts.

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Opposition No. 91214178

Trial Schedule

Proceedings are resumed. Discovery is reopened until May 29, 2016 for the sole

purpose of allowing Applicant to notice and take the deposition of Dr. Kaplan limited

to the issues raised in his sur-rebuttal expert report, as permitted by this order.

Discovery otherwise remains closed. Remaining trial dates are reset as follows:

Plaintiff's Pretrial Disclosures Due 7/13/2016

Plaintiff's 30-day Trial Period Ends 8/27/2016

Defendant's Pretrial Disclosures Due 9/11/2016

Defendant's 30-day Trial Period Ends 10/26/2016

Plaintiff's Rebuttal Disclosures Due 11/10/2016

Plaintiff's 15-day Rebuttal Period Ends 12/10/2016

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 2.125.

Briefs shall be filed in accordance with Trademarks Rules 2.128(a) and (b). An

oral hearing will be set only upon request filed as provided by Trademark Rule 2.129.

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