Empresa Cubana Del Tabaco d.b.a Cubatabaco v. General Cigar Co., Inc.

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

THIS ORDER IS A

P.O. Box 1451

PRECEDENT OF THE Alexandria, VA 22313-1451

TTAB General Contact Number: 571-272-8500

General Email: TTABInfo@uspto.gov

August 26, 2020

Cancellation No. 92025859

Empresa Cubana Del Tabaco d.b.a

Cubatabaco

v.

General Cigar Co., Inc.

Rebecca Stempien Coyle, Interlocutory Attorney:

This case comes up on Petitioner’s February 7, 2020, motion to strike the

December 30, 2019, supplemental expert report of Richard Carleton Hacker (the

“Supplemental Report”) and any trial testimony related thereto or, in the alternative,

to reopen discovery.1 The motion is fully briefed.

I. Background

This proceeding commenced more than twenty-three years ago. After nearly

fifteen years of various suspensions for civil litigation, Board proceedings were

resumed on June 23, 2011.2 Shortly after pleadings were closed on July 7, 2011,

Respondent filed a motion for summary judgment, and proceedings remained

suspended pending disposition of that motion, including Petitioner’s appeal of the

1 244 TTABVUE.

2 60 TTABVUE.

Cancellation No. 92025859

summary judgment motion to the United States Court of Appeals for the Federal

Circuit.3 Proceedings were again resumed on October 28, 2015, and the Board reset

discovery and trial dates.4 Discovery and trial dates were subsequently reset several

times prior to the parties’ deadline for expert disclosures. 5 Under the resulting

schedule set in accordance with the parties’ agreement for operative dates, expert

disclosures were due on March 15, 2017, rebuttal expert disclosures were due May

31, 2017, and discovery was set to close on September 15, 2017.6

On May 31, 2017, Respondent served the rebuttal expert disclosure of Mr. Hacker

(the “Original Report”), and Petitioner deposed Mr. Hacker on June 15, 2017. 7

Proceedings were again suspended on October 23, 2017, pending disposition of

Petitioner’s motion for leave to use an undisclosed expert report. Petitioner’s motion

was denied on December 29, 2017, proceedings were resumed and trial dates reset

once more with discovery scheduled to close on February 28, 2018, and Petitioner’s

trial period to end on May 29, 2018.8 After numerous other suspensions and resetting

of dates, Petitioner’s trial period ended on September 16, 2019. 9 On October 22, 2019,

3 See 64 TTABVUE, 75 TTABVUE, 82 TTABVUE.

4 88 TTABVUE.

5 91 TTABVUE, 99 TTABVUE, 100 TTABVUE, 103 TTABVUE, 106 TTABVUE, 108

TTABVUE.

6 101 TTABVUE, 107 TTABVUE, 108 TTABVUE.

7 244 TTABVUE, see also 122 TTABVUE 3.

8 122 TTABVUE.

9 168 TTABVUE. On September 20, 2019, Petitioner timely filed its table summarizing the

testimony and materials submitted during its testimony period. 237 TTABVUE, see also 207

TTABVUE.

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the Board granted Respondent’s consented motion for an extension of time to

complete the cross-examination of one of Petitioner’s trial witnesses.10

In accordance with the Board’s October 22, 2019, order, Respondent’s pretrial

disclosures were due by December 30, 2019.11 On December 30, 2019, Respondent

served the Supplemental Report, followed that same day by Respondent’s pretrial

disclosures.12

Petitioner contends that the Supplemental Report consists of new and previously

undisclosed opinions, namely, the role of cigar podcasts in consumer confusion (when

the Original Report never mentioned cigar podcasts) and the use of cigar publications

to confirm the sophistication of premium cigar consumers (despite the lack of citation

to, or reliance on, cigar publications as such evidence in the Original Report). 13

Respondent contends the Supplemental Report does not contain new opinions, rather

it only contains the following “four new facts”: the existence of cigar podcasts as an

additional source of information for U.S. cigar consumers, Mr. Hacker’s participation

in cigar podcasts in 2019, regulatory restrictions on U.S. citizens travelling to Cuba

which were imposed after the Original Report, and three articles published after the

Original Report “in the cigar press” which support the Original Report ’s conclusion

of no confusion.14

10 241 TTABVUE.

11 Id.

12 244 TTABVUE 9, 245 TTABVUE 32, 34.

13 244 TTABVUE 3.

14 245 TTABVUE 4-5.

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Cancellation No. 92025859

Petitioner’s motion to strike raises two issues: whether, under the Federal Rules

of Civil Procedure, (1) Respondent’s attempt to add the Supplemental Report as trial

evidence is untimely, and (2) the Supplemental Report constitutes permissible

supplementation.

II. Applicable Law

The supplementation of expert disclosures in inter partes proceedings before the

Board is governed by the Federal Rules of Civil Procedure. 37 C.F.R. § 2.116(a),

Trademark Rule 2.116(a); see also Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d

1323, 1326 (TTAB 2011). A written expert report must accompany the disclosure of

any expert witness and contain “a complete statement of all opinions the witness will

express and the basis and reasons for them …”. Fed. R. Civ. P. 26(a)(2)(B)(i); see also

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 401.03

(June 2020). The purpose of this rule “is to prevent unfair surprise at trial and to

permit the opposing party to prepare rebuttal reports, to depose the expert in advance

of trial, and to prepare for deposition and cross-examinations at trial.” Gemological

Inst. of Am., Inc. v. Gemology Headquarters Int’l, LLC, 111 USPQ2d 1559, 1561-62

(TTAB 2014) (quoting Minebea Co. v. Papst, 231 F.R.D. 3, 5-6 (D.D.C. 2005)); see also

Coles v. Perry, 217 F.R.D. 1, 4 (D.D.C. 2003) (“By ‘locking’ the expert witness into …

‘a complete statement of all opinions to be expressed and the basis and reasons

therefor,’ the opposing party knows exactly what she is facing and can decide whether

to take the deposition of the expert and how to prepare for cross examination and

rebuttal.”).

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Cancellation No. 92025859

“A party may supplement or correct its Fed. R. Civ. P. 26(a)(2)(B) expert

disclosures ‘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.’” Gemological Inst. of Am., 111 USPQ2d at 1562 (quoting Fed. R. Civ. P.

26(e)(1)(A) (emphasis added)). In general, any such supplementation must be done

“in a timely manner,” however any additions or changes to an expert’s report or

information given during the expert’s deposition, “must be disclosed by the time the

party’s pretrial disclosures are due.” Fed. R. Civ. P. 26(e)(1)(A) and (e)(2); see also

Gemological Inst. of Am., 111 USPQ2d at 1562.

The supplementation permissible under Fed. R. Civ. P. 26(e) is narrow in scope

and allowed only to “correct[] inaccuracies, or fill[] the interstices of an incomplete

report based on information that was not available at the time of the initial

disclosure.” Keener v. United States, 181 F.R.D. 639, 640 (D. Mont. 1998), quoted in

Gemological Inst. of Am., 111 USPQ2d at 1562. If a party is relying on new

information to support its supplemental expert disclosure, then the new information

relied on must have been “previously unknown or unavailable, [and] render[]

information previously provided in an initial report inaccurate or misleading because

it was incomplete.” MF Glob. Holdings Ltd. v. PricewaterhouseCoopers LLP, 232 F.

Supp. 3d 558, 572 (S.D.N.Y. 2017) (quotation omitted); see also Akeva LLC v. Mizuno

Corp., 212 F.R.D. 306, 310 (M.D.N.C. 2002) (“Rule 26(e) envisions supplementation

when a party’s discovery disclosures happen to be defective in some way so that the

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Cancellation No. 92025859

disclosure was incorrect or incomplete and, therefore, misleading.” (citing Keener, 181

F.R.D. 639)).

A “party may not utilize Rule 26(e)(1)(A) ‘to sandbag one’s opponent’ or to ‘deepen’

or ‘strengthen’ the party’s case where the information should have been included in

the expert report.” Gemological Inst. of Am., 111 USPQ2d at 1562 (quoting Beller v.

United States, 221 F.R.D. 696, 701 (D.N.M. 2003)). Construing the duty to

supplement to allow parties to bolster an expert’s prior opinions “would wreak havoc

on docket control and amount to unlimited expert preparation.” Akeva, 212 F.R.D. at

310, see also Beller, 221 F.R.D. at 701.

“A supplemental report which seeks to clarify an expert’s earlier opinions or

provides new examples and illustrations to bolster them is not proper

supplementation.” Gemological Inst. of Am., 111 USPQ2d at 1562 (citing Akeva, 212

F.R.D. at 310). Supplementation under Rule 26(e) “does not cover failure of omission

because the expert did an inadequate or incomplete preparation.” Akeva, 212 F.R.D.

at 310 (citations omitted); see also SD3, LLC v. Rea, 71 F. Supp. 3d 189, 195 (D.D.C.

2014) (Expert’s declaration was impermissible “bolstering” under Rule 26(e) because

the expert “did not merely correct inaccuracies in his deposition testimony [but] found

additional evidence that further substantiated his previously stated expert

opinions.”); Cedar Petrochemicals, Inc. v. Dongbu Hannong Chem. Co., Ltd., 769 F.

Supp. 2d 269, 278 (S.D.N.Y. 2011) (“[E]xperts are not free to continually bolster,

strengthen, or improve their reports by endlessly researching the issue they already

opined upon, or to continually supplement their opinions.”).

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Cancellation No. 92025859

As to timing, Fed. R. Civ. P. 26(e)(2) provides that “[a]ny additions or changes to

[an expert’s report] must be disclosed by the time the party’s pretrial disclosures”

are due. (Emphasis added). See Coene v. 3M Co., 303 F.R.D. 32, 42 (W.D.N.Y. 2014)

(“Supplemental reports must be provided at the same time that a party’s pretrial

disclosures are due.” (citing Fed. R. Civ. P. 26(e)(2)); see also Rivera-Marrero v.

Presbyterian Cmty. Hosp., 255 F. Supp. 3d 290, 296 (D.P.R. 2017) (“The disclosing

party had a duty to supplement the written report by November 14, 2016, which was

effectively ‘at least 30 days before trial’” or the time for the party’s pretrial disclosures

under Fed. R. Civ. P. 26(a)(3)); Marathon Petroleum Co. LP v. Midwest Marine, Inc.,

906 F. Supp. 2d 673, 693 (E.D. Mich. 2012).

III. Decision

A. Whether the Supplemental Report is a Proper Supplementation

Respondent served the Supplemental Report the same day as its deadline for, but

before serving, its pretrial disclosures. 15 Accordingly, the Supplemental Report was

timely under Fed. R. Civ. P. 26(e)(2).

Petitioner contends that supplemental expert reports must be served the day

before that party’s pretrial disclosures are due, relying on a footnote in Entravision

Commc’n Corp. v. Liberman Television LLC, 113 USPQ2d 1526, 1528 n.5 (TTAB

2015). However, the footnote in Entravision addressed the relevant timeline of that

proceeding, namely a motion filed before the party’s pretrial disclosures to substitute

an expert. Entravision did not address the same question of timeliness under Fed. R.

15 244 TTABVUE 9, 245 TTABVUE 32, 34.

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Cancellation No. 92025859

Civ. P. 26(e)(2) as is presented in this proceeding. Respondent’s disclosure of the

Supplemental Report on the day its pretrial disclosures were due is not untimely.

The Board next turns to whether the report is a permissible supplementation. As

stated above, the Supplemental Report is permissible if the Original Report was

materially incomplete or incorrect, and the supplement adds or corrects information

previously unavailable, or unknown, to Mr. Hacker that renders information in the

Original Report inaccurate or misleading. While “[t]he Board does not read testimony

and consider substantive objections to evidence, or determine the probative value of

evidence, prior to final hearing,” Weyerhauser Co. v. Katz, 24 USPQ2d 1230, 1233

(TTAB 1992), the arguments presented here are sufficient upon which to make a

determination. By Respondent’s own admission, the Supplemental Report contains

“facts occurring or discovered by the expert after the date of the Original Report that

support the expert’s original opinions”.16 Respondent states that in the Original

Report, Mr. Hacker opined that Petitioner’s expert reports “no longer ‘describe the

American cigar scene today’” as shown by “examples of sources of information

available to cigar smokers not existing in 2002”. 17 However, as Respondent concedes,

“cigar podcasts” existed at the time the Original Report was prepared.18 Respondent

fails to explain how Mr. Hacker’s preparation of his Original Report failed to include

the existence of cigar podcasts, which suggests an inadequate or incomplete

preparation of the original report as it pertains to podcasts.

16 245 TTABVUE 3.

17 Id. at 14.

18 Id. at 15.

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Cancellation No. 92025859

Moreover, for purposes of supplementation under Fed. R. Civ. P. 26(e)(2) any new

information must cause the original disclosure to be either inaccurate or misleading

because it was incomplete. Respondent asserts that the Supplemental Report is

permissible because a determination of likelihood of confusion is based on the facts

as of the time of trial, and due to the thirty-two month gap between the Original

Report and Respondent’s trial period, the Original Report is now incomplete.

Respondent’s broad construction of “incomplete” is not well-taken. While

likelihood of confusion is determined based on the factual situation at the time of

trial, and the length of time between the Original Report and Respondent’s trial

period has been considerable, this alone does not permit a deviation from the narrow

scope of permissible supplementation under Fed. R. Civ. P. 26(e). While the Board

may allow, in appropriate situations, parties to supplement the factual record during

trial, Respondent does not demonstrate that the Supplemental Report corrects,

clarifies, or fills in a gap in the Original Report that rendered the original disclosure

inaccurate or misleading. Respondent’s contention that the new information is

necessary for the Board to evaluate Mr. Hacker’s opinion, and to “to show that [his]

expert opinion … remains valid in light of current facts” is not a basis for

supplementation under the Rule.19 Respondent does not explain why the validity of

the Original Report would be in question under current facts, nor how the new

information in the Supplemental Report is necessary to make the Original Report

complete or accurate. Respondent concedes that the Supplemental Report merely

19 Id. at 11.

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Cancellation No. 92025859

seeks to “support the expert’s original opinions” with new examples and

illustrations.20 This is bolstering, not a proper supplementation under Fed. R. Civ. P.

26(e).

B. Whether the Supplemental Report Should Be Excluded

An “improper Rule 26(e) supplementation results in an untimely disclosure of an

expert opinion, triggering Fed. R. Civ. P. 37(c)(1) sanctions, including” its preclusion,

unless the untimely disclosure was substantially justified or harmless. Gemological

Inst. of Am., 111 USPQ2d at 1562. See also Fed. R. Civ. P. 37(c)(1); Keener, 181 F.R.D.

at 641; SD3, LLC, 71 F. Supp. 3d at 194-195; Cook v. Rockwell Int’l Corp., 580 F.

Supp. 2d 1071, 1171 (D. Colo. 2006). Accordingly, having determined that the

Supplemental Report is not a proper supplementation, the Board applies “the

following five-factor test to determine whether the untimely disclosure is

substantially justified or harmless: ‘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 [or the late disclosing party’s] explanation

for its failure to disclose the evidence.’” Gemological Inst. of Am., 111 USPQ2d at 1562

(quoting Great Seats, 100 USPQ2d 1323, 1327 (TTAB 2011) (internal citation

omitted)); see also ProMark, 114 USPQ2d at 1240.

Petitioner contends the Supplemental Report is highly prejudicial because it

asserts previously undisclosed facts and opinions regarding information that was not

20 Id. at 3.

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Cancellation No. 92025859

within the scope of the Original Report. Petitioner also asserts discovery closed more

than a year ago and any effort to cure the surprise would require a reopening of

discovery on the new facts and opinions, thus resulting in a significant delay and

disruption to trial. Petitioner further contends that Respondent has no reasonable

explanation for why it did not disclose the facts that existed in 2018 (the existence of

podcasts) or that Mr. Hacker would rely on cigar publications in support of his

opinion, by the close of discovery or the start of trial.

In response, Respondent contends that the facts in the Supplemental Report are

important to the Board’s determination of Petitioner’s Trademark Act Section 2(d)

claim because the supplemental facts cited therein show that Mr. Hacker’s opinion in

the Original Report is supported by current facts and remains valid. Respondent

further contends that the Supplemental Report does not create an unfair surprise

because it only sets forth four additional “groups of facts,” and Petitioner can prepare

to cross-examine Mr. Hacker on those facts without the need for material additional

research or expense. Respondent maintains that the majority of the facts in the

Supplemental Report did not exist at the time of the Original Report. Specifically, the

change in United States policy toward Cuba was not public record until June 2019,

the three articles were published in 2018, July 2019, and sometime in 2019, and Mr.

Hacker’s appearance on several podcasts began in July 2019.21 While cigar podcasts

existed at the time of the Original Report, Mr. Hacker attested that he did not learn

about them until July 2019.22

21 245 TTABVUE 18, 245 TTABVUE 25, ¶¶ 9, 12.

22 245 TTABVUE 25, ¶ 9.

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Cancellation No. 92025859

In its reply, Petitioner contends that “even if likelihood of confusion is assessed at

the time of trial, the trial started on October 8, 2018, when Petitioner ’s testimonial

period opened” and “Respondent could have produced the [supplemental report] at

that time”.23 Petitioner also maintains that it made litigation decisions based on

Hacker’s 2017 report and deposition, and it prepared and presented its case-in-chief

on the basis of the discovery taken in this proceeding, including in relation to Mr.

Hacker.

With respect to the first Great Seats factor, the parties do not agree on the scope

of the newly disclosed information in the Supplemental Report. However, this factor

weighs in favor of Petitioner even under Respondent’s arguments that the

Supplemental Report only includes new facts. Petitioner’s testimony period has

passed, and Petitioner presented its case-in-chief based on the discovery, including in

relation to Mr. Hacker, conducted in this proceeding. Nor does either party suggest

that Respondent indicated to Petitioner its intent to supplement the Original Report.

Addressing factors two and three, Petitioner’s ability to cure the surprise of the

Supplemental Report is significantly diminished because the discovery period closed

nearly two years ago. See Spier Wines Ltd. v. Shepher, 105 USPQ2d 1239, 1245 (TTAB

2012). Reopening discovery at this late stage in this twenty-three year old proceeding

would cause further disruption and delay. Furthermore, allowing Mr. Hacker to

testify as to the additional facts without reopening discovery would require Petitioner

to continue with trial and conduct cross-examination of Mr. Hacker from a

23 247 TTABVUE 7.

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disadvantageous standpoint, despite Petitioner’s prior deposition of Mr. Hacker

regarding the Original Report. Accordingly, these factors also weigh in favor of

Petitioner.

Regarding the fourth factor, “[i]n 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.” Spier Wines, 105 USPQ2d at 1244. As noted above, Respondent states

the Supplemental Report supports the Original Report and conclusions.

Subsequently, the Supplemental Report is cumulative of what is in the Original

Report. In view of its cumulative nature, the Board finds that the marginal

importance of the Supplemental Report weighs in favor of Petitioner.

Finally, as to the fifth factor, Respondent seeks to excuse its failure to disclose the

evidence in question by contending many of the additional facts did not exist until

2019, or its expert was not aware of the information until July 2019. Respondent also

asserts that it is necessary for Mr. Hacker to testify as to the additional facts so the

Board can determine whether his opinion is based on the factual circumstances

existing at the time of trial. As both parties have noted, this case is quite old.

Proceedings were suspended, or dates extended, numerous times since the service of

the Original Report.24 Yet, Respondent waited until December 2019, months after the

close of Petitioner’s testimony period and just prior to its own pretrial disclosures, to

24121 TTABVUE, 125 TTABVUE, 143 TTABVUE, 148 TTABVUE, 156 TTABVUE, 168

TTABVUE, 241 TTABVUE.

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ask Mr. Hacker if there were any factual developments that may have affected the

opinions expressed in the Original Report.25 It is true that parties cannot predict if or

when truly new facts or information will arise. Nonetheless, if Respondent was

concerned with presenting current factual information to the Board for its likelihood

of confusion analysis, then Respondent should have inquired into the need to

“supplement” the Original Report earlier in this proceeding or informed Petitioner

that Respondent was going to update the Original Report to reflect new information

that arose after May 2017.

On balance, after considering the Great Seats factors as they are applicable to this

proceeding, Respondent’s failure to timely disclose the Supplemental Report was not

substantially justified or harmless.

In view of the foregoing, the motion to strike Respondent’s supplemental expert

report is granted. The Supplemental Report is hereby stricken.

IV. Schedule

Proceedings are resumed. Dates are reset as follows:

Defendant’s 30-day Trial Period Ends 9/15/2020

Plaintiff’s Rebuttal Disclosures Due 9/30/2020

Plaintiff’s 15-day Rebuttal Period Ends 10/30/2020

Plaintiff’s Opening Brief Due 12/29/2020

Defendant’s Brief Due 1/28/2021

Plaintiff’s Reply Brief Due 2/12/2021

Request for Oral Hearing (optional) Due 2/22/2021

25 245 TTABVUE 24, ¶ 7.

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Cancellation No. 92025859

The Federal Rules of Evidence generally apply to Board trials. Trial testimony is

taken and introduced out of the presence of the Board during the assigned testimony

periods. The parties may stipulate to a wide variety of matters, and many

requirements relevant to the trial phase of Board proceedings are set forth in

Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the

manner and timing of taking testimony, matters in evidence, and the procedures for

submitting and serving testimony and other evidence, including affidavits,

declarations, deposition transcripts and stipulated evidence. Trial briefs shall be

submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at

final hearing will be scheduled only upon the timely submission of a separate notice

as allowed by Trademark Rule 2.129(a).

15