General Council of the Assemblies of God dba Gospel Publishing Housev.Heritage Music Foundation

Trademark Trial and Appeal Board

Feb 3, 2011

No. 92051525 (T.T.A.B. Feb. 3, 2011)

THIS OPINION IS A PRECEDENT OF
THE TTAB

Mailed: February 3, 2011

Cancellation No. 92051525

General Council of the Assemblies
of God dba Gospel Publishing House

v.

HERITAGE MUSIC FOUNDATION

Cheryl Butler, Attorney, Trademark Trial and Appeal Board:
In accordance with the last scheduling order, expert
disclosures were due by July 7, 2010, the discovery period was set
to close on August 6, 2010 and petitioner's trial period was set to
open on October 5, 2010. On July 7, 2010, respondent disclosed to
petitioner that it would rely on the expert testimony of Dawn
Johnson. This case now comes up on petitioner's motion, filed July
14, 2010, "to strike" respondent's expert witness testimony due to
improper disclosure. That is, petitioner seeks to exclude the
testimony to be proffered by the identified expert witness.
Respondent filed a response and a supplemental response, both on
July 29, 2010.
In support of its motion, petitioner argues that respondent's
expert disclosure fails to comply with Fed. R. Civ. P. 26(a)(2) for
the following reasons: 1) it is not signed by Ms. Johnson; 2) it
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92051525
2
does not include a list of all publications authored by Ms. Johnson;
3) it does not include a list of all other cases over the past four
years in which Ms. Johnson testified as an expert at trial or by
deposition; 4) and it does not include a statement of the
compensation paid to Ms. Johnson. Petitioner, relying on Trademark
Rule 2.120(a), 37 C.F.R. § 2.120(a), further argues that respondent
did not inform the Board of its designation of an expert; and that
Ms. Johnson does not appear to have the qualifications of an expert.
Accompanying petitioner's motion is a copy of the report, a copy of
the information considered by Ms. Johnson in preparing her report,
and Ms. Johnson's curriculum vitae, all of which were part of
respondent's timely disclosure.
In response, respondent argues that consideration of the effect
of the omission of the items is under the standard of Fed. R. Civ.
P. 37(c)(1) of "substantial justification or harmless." More
particularly, respondent contends that the surprise to petitioner is
small; that, due to the timing of the pretrial and trial schedules
in this administrative proceeding, petitioner has adequate time to
hire an expert should it choose to do so, and thus is able cure any
surprise arising from the incomplete disclosure; and that, again due
to the schedule, allowing the evidence would not disrupt the trial.
Respondent also argues that it may readily cure the deficiencies to
its disclosure. To that end, respondent provides information
concerning the fee paid to Ms. Johnson, the identity of another
proceeding in which Ms. Johnson provided expert testimony, and a
Cancellation No. 92051525
3
statement that Ms. Johnson has no publications in the last ten
years. Respondent's supplemental response consists of Ms. Johnson's
signed statement of her qualifications, including a statement that
she provided the expert report at issue. Respondent contends that
the evidence it seeks to offer by way of its expert is important to
the case because it highlights specific characteristics of the
parties' consumers, the parties' products, and the nature and focus
of the parties' advertising.
Trademark Rule 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) …."
In accordance with Fed. R. Civ. P. 26(a)(2), any expert disclosed
who may be used at trial to present evidence must provide a written
report (unless otherwise stipulated or ordered by the court),
prepared and signed by the witness, which 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;

(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.

Cancellation No. 92051525
4
A party which 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 parties during the discovery process or in writing). Fed. R.
Civ. P. 26(e)(1)(A). Any information not disclosed 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). In determining whether the failure was substantially
justified or is harmless, the following factors may be considered:
(1) the surprise to the party against whom the witness was to
have testified;

(2) the ability of the party to cure that surprise;

(3) the extent to which allowing the testimony would disrupt
the trial;

(4) the explanation for the party's failure to name the witness
before trial; and

(5) the importance of the testimony.

See MicroStrategy, Inc. v. Business Objects, S.A., 429 F.3d 1344,
1357, 77 USPQ2d 1001 (Fed. Cir. 2005), a case arising out of the
Fourth Circuit, applying the factors articulated in Southern States
Rack and Fixture, Inc. v. Sherwin-Williams, Co., 318 F.3d 592, 596-
97 (4th Cir. 2003).
In this case, respondent timely served its expert disclosure,
including a copy of the expert report, a copy of the facts or data
considered by the expert witness, and a copy of the witness's
curriculum vitae (which provides at least some information going to
Cancellation No. 92051525
5
the witness's qualifications). Respondent's position is that the
deficiencies were harmless. Thus, the question now before the Board
is whether the technical deficiencies in the timely-served expert
disclosure, which has now been supplemented to remedy such
deficiencies, require either the exclusion of the expert's
testimony, as requested by petitioner, or the exclusion of the
information omitted, or whether the disclosure was supplemented in a
sufficiently timely manner to allow discovery by the adverse party.
Although evidence that was not provided, either initially or by
supplementation, generally and automatically is excluded under Fed.
R. Civ. P. 37(c), exclusion usually is not warranted where there has
been prompt supplementation. Wright, Miller, Kane, & Marcus, 8A
Fed. Prac. & Pro. Civ. § 2049.1 (3d ed. 2010). "Supplementation of
an expert report permits a party to correct inadvertent errors or
omissions …." Id. quoting Gallagher v. Southern Source Packaging,
LLC, 568 F.Supp.2d 624 (E.D.N.C. 2008).
In this case, respondent supplemented its expert disclosure as
soon as the deficiencies were brought to its attention. There are
no last-minute changes, the discovery period is still open, and
there is no disruption to trial. While petitioner asks for
exclusion of the witness's entire, anticipated testimony, it is
usually the information omitted by the disclosure that is
automatically excluded.1 Fed. R. Civ. P. 37(c)(1). Here, prompt

1 The Board notes that the nature of the information not provided with
the original service of the expert disclosure is relevant to the
qualifications of the proposed expert, not to the substance of the
Cancellation No. 92051525
6
supplementation of the disclosure resolves the problem so that the
Board need not consider the question under the Fed. R. Civ. P.
37(c)(1) standard, whether the omissions were substantially
justified or harmless.2
The facts of this case are analogous to those situations in
which one party moves to strike the notice of reliance of its
adversary on procedural grounds, and the notice of reliance is
defective but such defect is curable. The Board has allowed the
party which filed the timely, but defective, notice of reliance to
cure such defect. See Boyds Collection Ltd. v. Herrington & Co., 65
USPQ2d 2017, 2019 n.6 (TTAB 2003) ("… if this rather insignificant
problem were the only deficiency in petitioner's notice of reliance,

testimony or expert opinion. As such, the type of information at
issue could only provide a foundation for the expert's qualifications,
may be probative of the value of the testimony, and may include
information upon which the credibility of the witness could be
questioned.

2 However, even if analyzed under the Fed. R. Civ. P. 37(c)(1)
standard, the omissions in this case are harmless. There is no
surprise to the petitioner as to the identity of the witness, or the
subject matter for which respondent seeks the expert testimony,
because respondent timely served the expert disclosure. The signed
statement from Ms. Johnson and the additional items required to be
disclosed by Fed. R. Civ. P. 26(a)(2) concerning the expert's
qualifications were easily obtainable upon reminder to respondent that
the information was not provided. Indeed, in response to petitioner's
motion to exclude the testimony of Ms. Johnson, respondent provided
Ms. Johnson's signed statement and the additional information required
by the Rule. The trial is not disrupted by the deficiencies in the
timely expert disclosure insofar as one month remained in the
discovery period after the deficient disclosure was served; respondent
acted to cure the deficiencies quickly after they were brought to its
attention; and the Board is able to adjust the remaining schedule if
necessary. As to the importance of the testimony, the Board does not
review evidence prior to final decision. However, respondent has
presented plausible arguments as to why the evidence may be important
in this case.

Cancellation No. 92051525
7
we would allow petitioner an opportunity to cure the defect.");
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1233 (TTAB 1992) (opposer
allowed time to submit a substitute notice of reliance to remedy the
procedural defects); and M-Tek, Inc. v. CVP Systems, Inc., 17 USPQ2d
1070, 1073 (TTAB 1990) (petitioner allowed an opportunity to correct
the defect in its notice of reliance).
In a situation such as this, where supplementation of the
disclosure takes place, either upon the initiative of the disclosing
party, or after notification by the adverse party that the
disclosure was incomplete, and while the discovery period remains
open, the Board's policy is that neither the testimony to be
proffered by the expert witness nor the information originally
omitted will be excluded.3 Cf. Griffith v. General Motors Corp.,
303 F.3d 1276 (11th Cir. 2002), cert. denied, 538 U.S. 1023, 123 S.
Ct. 1953, 155 L. Ed. 2d 868 (2003) (although plaintiff contended
that defendant failed to adequately disclose the prior cases in
which its expert had testified, the district court did not abuse its
discretion in permitting the expert to testify); Outley v. City of
New York, 837 F.2d 587, 590 (2d Cir. 1988) (holding preclusion is
too drastic a remedy where a party identified a witness but failed
to subsequently supplement the disclosure with additional
information).

3 Moreover, given the nature and timing of expert disclosure in Board
proceedings, specifically, the scheduling of such disclosure within
the discovery period, it is also expected that, in instances where
timely expert disclosures are incomplete, the parties will cooperate
between themselves to resolve the matter.
Cancellation No. 92051525
8
Accordingly, the technical deficiencies in respondent's timely-
served expert disclosure now having been cured promptly,
petitioner's motion to exclude the anticipated testimony of
respondent's expert witness is denied, and respondent's expert
evidence will not be excluded on the basis of inadequate disclosure.
Although the Board has found the deficiencies in respondent's
expert disclosure to be remedied by prompt supplementation, the
Board reiterates that a disclosing party is expected to comply with
all the requirements of Fed. R. Civ. P. 26(a)(2).
Petitioner also argues that respondent failed to notify the
Board that it served an expert disclosure. However, Trademark Rule
2.120(a)(2), 37 C.F.R. § 2.120(a)(2), does not mandate that a
disclosing party inform the Board that an expert disclosure has been
made. The purpose of informing the Board of such a disclosure is to
facilitate discovery. In Board proceedings, a party is to disclose
its plan to use an expert thirty (30) days prior to the close of the
discovery period. Miscellaneous Changes to Trademark Trial and
Appeal Board Rules, 72 Fed. Reg. 42242, 42246 (August 1, 2007).
This due date is set to allow time for discovery with respect to the
disclosed expert witness; for the non-disclosing party to ascertain
whether it will or may need to retain an expert to contradict or
rebut its adversary's expert witness and, if so, to provide its
expert disclosure; and for the parties to seek an extension or
suspension of the remaining discovery period to undertake activities
and assessments with respect to the disclosed expert witness,
Cancellation No. 92051525
9
including the need to retain an expert witness for rebuttal and any
discovery with respect to the rebuttal expert witness. In any
particular case, given that approximately 30 days will remain in the
discovery period after a timely expert disclosure is made, it may be
that all expert-related discovery matters could be resolved by the
close of discovery making notification to the Board of the expert
disclosure unnecessary. However, if additional time is needed,
either party may inform the Board of the timely expert disclosure
and demonstrate good cause for an extension or suspension of the
discovery period.
The Board's 2007 adoption of a disclosure model was not meant
to provide opportunities for one party to find procedural
deficiencies or technical failures upon which to obtain an advantage
over its adversary. Instead, the adoption of a disclosure model was
intended to provide an orderly administration of the proceeding as
it moves toward trial. More particularly, for cases that do not
settle, disclosure practices have been found to promote a greater
exchange of information, leading to increased fairness and a greater
likelihood that cases eventually decided on their merits are
determined on a fairly created record. Miscellaneous Changes to
Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August
1, 2007). Thus, a disclosing party's failure to inform the Board of
timely disclosure of an expert witness is not a ground to exclude
the testimony of such witness.
Cancellation No. 92051525
10
Accordingly, petitioner's motion to exclude the testimony of
respondent's expert witness on the basis that respondent did not
inform the Board of the disclosure is denied.
Petitioner's position that Ms. Johnson is not qualified as an
expert cannot be imputed based on the technical deficiencies in the
originally served expert disclosure and no further consideration is
given thereto. The Board does not hear motions in limine and the
qualifications of respondent’s witness is a subject that can be
raised later, at an appropriate time.
Proceedings are resumed and dates are reset as follows:
Proceedings to resume: 3/3/2011
Discovery Closes 4/1/2011
Plaintiff's Pretrial
Disclosures 5/16/2011
Plaintiff's 30-day Trial Period
Ends 6/30/2011
Defendant's Pretrial
Disclosures 7/15/2011
Defendant's 30-day Trial Period
Ends 8/29/2011
Plaintiff's Rebuttal
Disclosures 9/13/2011
Plaintiff's 15-day Rebuttal
Period Ends 10/13/2011

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.l28(a) and (b). An oral hearing will be set only upon request
filed as provided by Trademark Rule 2.l29.