Spier Wines (PTY) Ltd.v.Ofer Z. Shepher

Trademark Trial and Appeal Board

Jun 12, 2012

No. 91182825 (T.T.A.B. Jun. 12, 2012)

Mailed: June 12, 2012

Opposition No. 91182155
Opposition No. 91182825

Spier Wines (PTY) Ltd.

v.

Ofer Z. Shepher

ELIZABETH J. WINTER, INTERLOCUTORY ATTORNEY:

Inter Partes Conference

On May 1, 2012, the parties, Spier Wines (PTY) Ltd.
(represented by Matthew Cuccias of Jacobson Holman PLLC) and
Ofer Z. Shepher (represented by Ralph C. Loeb of Krane &
Smith), and Elizabeth Winter, the assigned Interlocutory
Attorney, all participated in a telephone conference, held at
applicant’s request, regarding opposer’s fully briefed motion
(filed February 15, 2012) to amend its pleading and
applicant’s motion (filed April 23, 2012) to preclude opposer
from taking the testimonial deposition on written questions
of its only noticed witness or allow an oral deposition.1

1 Insofar as these proceedings were suspended on April 27, 2012,
pending the Board’s consideration of the parties’ respective
motions and because the noticed testimonial deposition was to be
taken upon written questions, applicant’s motion to suspend these
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition Nos. 91182155 and 91182825
2
See Trademark Rules 2.120(i)(1) and 2.127(c); and TBMP
§ 502.06 (3d ed. 2011). This order summarizes applicant’s
motion to preclude the testimony of opposer’s witness, the
Board’s phone conference discussion with the parties with
respect to this motion, and the Board’s analysis and order
resolving applicant’s motion.2
Applicant’s Motion to Preclude Use of Witness
• Preliminary Matter
Regarding the nature of applicant’s motion, where a
party believes the adverse party’s pretrial disclosures are
insufficient, untimely, or are otherwise technically
deficient, judicial economy is best accomplished by bringing
such issue to the Board’s attention promptly by a motion to
quash the deposition or to strike the pretrial disclosures as
insufficient before the deposition takes place.3 See Carl
Karcher Enterprises, Inc. v. Carl’s Bar & Delicatessen, Inc.,

proceedings pending resolution of applicant’s alternative motions
is moot.

2 The Board’s order issued on May 15, 2012, explained the basis
for granting opposer’s motion to amend, resumed these
proceedings, and reset the trial schedule based on the Board’s
disposition of both motions during the teleconference.

3 In contrast, Trademark Rule 2.123(e)(3) explicitly allows for a
motion to strike the entire deposition after the fact if the
pretrial disclosures are improper or inadequate. In accordance
therewith, the adverse party may elect to cross-examine the
testimonial witness under protest while reserving the right to
object and, promptly after the testimony is completed, move to
strike the testimony from the record.
Opposition Nos. 91182155 and 91182825
3
98 USPQ2d 1370, 1373 n.4 (TTAB 2011). Here, applicant does
not contend that opposer’s pretrial disclosures or its notice
of testimonial deposition upon written questions were
untimely or otherwise technically deficient. Accordingly,
applicant’s motion to preclude opposer from using its noticed
testimony witness is construed as a combined motion to strike
opposer’s pretrial disclosures and to quash opposer’s notice
of taking the testimony deposition of Eve Jell, based on
opposer’s failure to timely supplement its initial
disclosures. See id. See also Byer California v. Clothing
for Modern Times Ltd., 95 USPQ2d 1175, 1178 (TTAB 2010).
• The Parties’ Arguments
Applicant’s motion is supported by the declaration of
applicant’s counsel (Ralph C. Loeb) and attached exhibits,
and requests that the Board preclude opposer from taking the
testimonial deposition upon written questions of Ms. Jell,
opposer’s International Sales Director and a resident of
South Africa. In the alternative, applicant seeks permission
to take an oral testimonial deposition of Ms. Jell in the
United States or in South Africa. Applicant argues that
opposer, in its initial disclosures served on June 13, 2008,
failed to identify Ms. Jell and the subjects about which she
is knowledgeable, although documents produced by opposer on
March 29, 2012, in connection with discovery, show that
Opposition Nos. 91182155 and 91182825
4
Ms. Jell has been an employee of opposer since at least
October 1, 2007 (Loeb declaration ¶6, Exh. D). Applicant
contends that opposer’s first disclosure regarding Ms. Jell
was in its pretrial disclosures served on March 8, 2012, on
the eve of trial and more than a year after the discovery
period had closed. Applicant also asserts that he is
unfairly prejudiced by the late notice of opposer’s
testimonial witness because applicant did not have the
opportunity to depose Ms. Jell during the discovery period on
the particular issues on which opposer expects Ms. Jell to
testify, such as awards and accolades for opposer’s goods,
pronunciation of the term “SPIER,” and customer perceptions,
behavior and impressions with respect to opposer’s mark.
Applicant contends that had he been informed of Ms. Jell’s
existence and areas of knowledge, his trial preparation
strategy may have differed. Further, applicant contends that
his cross-examination of Ms. Jell will be severely impaired
given that her testimony will be limited to written
questions. Mr. Loeb also states in his declaration that in
attempting to resolve this issue, he proposed to take the
oral testimonial deposition of Ms. Jell either in South
Africa, where she is located, or at a location on the East
Coast of the United States, but that opposer rejected his
offer.
Opposition Nos. 91182155 and 91182825
5
During the teleconference with the Board, the parties
discussed the alternative requests in applicant’s motion.
Opposer argues that there was no unfair surprise because the
person identified in opposer’s initial disclosures
(Ms. Monica Barrows) is no longer employed by opposer; that
applicant did not avail himself of the opportunity to take
the discovery deposition of Ms. Barrows while she was
employed by opposer; and that there is no surprise to
applicant with respect to the particular topics about which
Ms. Jell will testify. On this latter point, opposer notes
that it already submitted evidence on those topics by means
of Ms. Barrows’ 2008 declaration in support of opposer’s
motion for summary judgment and by opposer’s responses to
applicant’s second set of interrogatories, which were served
in January, 2012.4
As to applicant’s alternative motion to allow an oral
testimonial deposition of Ms. Jell in the United States or in
South Africa, opposer argues that applicant has not shown any
prejudice or good cause that would support a finding that
this case should be an exception to Trademark Rule
2.123(a)(2), which requires that a deposition of a

4 In its order dated December 13, 2011, the Board ordered the
parties to serve outstanding responses to certain discovery
requests within thirty days of the mailing date of that order.

Opposition Nos. 91182155 and 91182825
6
representative in a foreign country must be taken upon
written questions, unless the Board, upon motion for good
cause, orders that the deposition be taken by oral
examination, or the parties so stipulate. Further, opposer
contends that it would be prejudiced if applicant were
allowed to take an oral deposition of Ms. Jell because
applicant has already seen opposer’s written questions for
the testimonial deposition. In response to questioning by
the Board, opposer stated that it had informed applicant by
means of a discovery response served on November 10, 2010,
that Ms. Barrows was no longer in opposer’s employ,5 and
admitted that opposer did not provide to applicant the name
of a substitute or replacement for Ms. Barrows prior to its
pretrial disclosures.
In reply, applicant argues, inter alia, that opposer did
not provide any reason why it did not inform applicant of
Ms. Jell’s identity earlier in the proceeding; and that
applicant had chosen not to depose Ms. Barrows because
applicant believed that her declaration submitted in support
of opposer’s summary judgment motion represented the best of
her knowledge regarding issues involved in the case.

5 This assertion was not contradicted by applicant.

Opposition Nos. 91182155 and 91182825
7
• Board’s Analysis
Each party to an inter partes proceeding must serve
initial disclosures that identify “each individual likely to
have discoverable information that the disclosing party may
use to support its claims or defenses, unless the use would
be solely for impeachment.” See Fed. R. Civ. P. 26(a)(1);
Trademark Rules 2.116(a) and 2.120(a)(2) (Board emphasis).
See also TBMP § 533.02(b) (3d ed. 2011). Parties are also
required to supplement their respective initial disclosures
“in a timely manner 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.” Fed. R. Civ. P.
26(e)(1)(A); Trademark Rules 2.116(a) and 2.120(a)(1). See
also Great Seats, Inc. v. Great Seats, Ltd., 100 USPQ2d 1323,
1326 (TTAB 2011); Galaxy Metal Gear Inc. v. Direct Access
Technology Inc., 91 USPQ2d 1859, 1861 (TTAB 2009).
In identifying individuals through initial disclosures,
a party need not identify all those that may be called at
trial as potential “trial witnesses,” and instead must
identify any trial witnesses through pretrial disclosures.6

6 Parties are required to serve pretrial disclosures to inform
the adverse party of the identity of prospective trial witnesses,
Opposition Nos. 91182155 and 91182825
8
However, because individuals identified through initial
disclosures have knowledge that the disclosing party may use
to support its claims or defenses, the persons identified in
initial disclosures may reasonably be viewed as possible
trial witnesses. Jules Jurgensen/Rhapsody, Inc. v.
Baumberger, 91 USPQ2d 1443, 1443 n.1 (TTAB 2009). Cf. Great
Seats, 100 USPQ2d at 1326 n.5 (“If the identity of the
witness is known when initial disclosures are made, and the
relevant knowledge of the witness is known, then a party may
have to disclose the identity of the witness when making
initial disclosures, even if the party has no plans at that
time to rely on testimony from the witness.”). Additionally,
the Board has stated that, unless seasonably remedied, a
party’s failure to identify a witness in its initial
disclosures deprives the adverse party of the opportunity to
seek discovery of the identified witness, and this fact “must
[be] consider[ed] … as one of the relevant circumstances … in
determining whether to strike [the witness’s] testimony
deposition.” Jules Jurgensen, 91 USPQ2d at 1444-45.

or any witness from whom it might take testimony if needed, thus
avoiding surprise witnesses and facilitating the orderly taking
of testimony. See Fed. R. Civ. P. 26(a)(3); Trademark Rule
2.116(a). See also Notice of Final Rulemaking, Miscellaneous
Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg.
42242, 42257-58 (Aug. 1, 2007).

Opposition Nos. 91182155 and 91182825
9
Under the estoppel sanction, a party that fails to
provide information via disclosure or appropriate response to
a discovery request may, upon motion or objection by its
adversary, be precluded from using that information or
witness at trial, “unless the failure was substantially
justified or is harmless.” Fed. R. Civ. P. 37(c)(1);
Trademark Rule 2.116(a). See Great Seats, 100 USPQ2d at
1326-27. To determine whether opposer’s failure to disclose
Ms. Jell in its initial disclosures, in supplemental initial
disclosures, or in a supplemental response to applicant’s
interrogatories (discussed infra) is substantially justified
or harmless, the Board is guided by the following five-factor
test applied in Great Seats, namely: “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 non-disclosing party’s
explanation for its failure to disclose the evidence.” See
Great Seats, 100 USPQ2d at 1327 (internal citations omitted).
Applying these factors to the present case, the record
shows that opposer served its initial disclosures on June 13,
2008 (Exh. A, Loeb dec.); that opposer identified Ms. Barrows
in its initial disclosures as its “witness”; that no other
person was identified in opposer’s initial disclosures as
Opposition Nos. 91182155 and 91182825
10
having discoverable information; that opposer informed
applicant on November 10, 2010, that Ms. Barrows was no
longer employed by opposer; that opposer served its pretrial
disclosures on March 8, 2012, which listed Ms. Jell as
opposer’s trial witness (Exh. C, Loeb dec.); that Ms. Jell
was a signatory for “Spier Wines South Africa” on a
“Memorandum of Understanding” regarding the “Spier Brand,”
which was executed on October 1, 20077 (Exh. D, Loeb dec.);
and that opposer did not supplement its initial disclosures
or otherwise specifically inform applicant in writing of any
individual other than Ms. Barrows (in the United States or
elsewhere) likely to have discoverable information that
opposer might use to support its claims, as required under
Fed. R. Civ. P. 26(e)(1)(A).
The Board also finds that opposer could have identified
Ms. Jell in supplementary initial disclosures at least as
early as November 10, 2010, when opposer informed applicant
that Ms. Barrows was no longer employed by opposer. The
information and documents referenced in opposer’s initial
disclosures (along with the identification of Ms. Barrows),

7 The Memorandum of Understanding was provided to applicant in
opposer’s production of documents on March 29, 2012, after
opposer’s pretrial disclosures were served. A redacted copy of a
segment of that document was submitted as an attachment to
counsel’s declaration in support of the subject motion.

Opposition Nos. 91182155 and 91182825
11
are virtually identical to the list of topics and documents
about which opposer intends to have Ms. Jell testify during
the course of the noticed testimonial deposition. Further,
Ms. Jell is opposer’s International Sales Director (whereas
Ms. Barrows was only the Northeast U.S. Sales Manager) and
Ms. Jell was a signatory for opposer in an agreement dated
October 1, 2007. Yet, notwithstanding Ms. Jell’s noteworthy
corporate role, Ms. Jell was not identified as a person
having discoverable information in opposer’s initial
disclosures, nor did opposer identify Ms. Jell in
supplementary initial disclosures later in the proceeding,
e.g., when the proceeding resumed after the Board denied
opposer’s motion for summary judgment on August 20, 2010, or
three months later, when opposer informed applicant that
Ms. Barrows was no longer in opposer’s employ.8
Alternatively, opposer could have facilitated the
exchange of information between the parties during the course

8 Although the record shows that opposer informed applicant on
November 10, 2010, of Ms. Barrows’ status as a former employee,
it is unclear at what point during the proceeding Ms. Barrows was
no longer employed by opposer. Subsequent to the date on which
Ms. Barrows executed her declaration in support of opposer’s
motion for summary judgment (i.e., on August 22, 2008), the
proceeding was effectively suspended for settlement from October
15, 2008 until June 30, 2010, by multiple orders extending
applicant’s time to respond to the summary judgment motion in
view of the parties’ settlement negotiations. The proceeding
resumed on August 20, 2010, in accordance with the Board’s order
denying opposer’s motion for summary judgment.

Opposition Nos. 91182155 and 91182825
12
of discovery by supplementing its discovery responses to
identify Ms. Jell. For instance, it is noted that in
opposer’s responses dated September 29, 2010, to Applicant’s
Second Amended First Set of Interrogatories,9 opposer
identified “Mr. Andrew Milne (CEO) and Mr. Gerhard de Kock
(FD)” in response to interrogatory no. 1, which requested
that opposer identify “each officer and managing agent of
Opposer.”10 Various corporate officers, directors and
management level employees are often identified during
discovery, and may be deposed by the adverse party11 or used
to adduce evidence during the testimony periods in Board
proceedings.12 In the case at bar, Ms. Jell was clearly an

9 Opposer’s responses to applicant’s August 25, 2010
interrogatories were submitted as an attachment to applicant’s
response to opposer’s motion to compel filed on March 21, 2011.

10 The record does not indicate whether the title “International
Sales Director,” held by Ms. Jell, represents either an officer
or managing agent position with opposer. Without knowing more,
based on the current record, and given that applicant only
inquired about opposer’s officers and managing agents, opposer
cannot be faulted for not originally identifying Ms. Jell in
response to applicant’s interrogatory no. 1. Cf. Charrette Corp.
v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2041 (TTAB
1989) (“If registrant wished to depose during discovery a witness
having knowledge of petitioner’s sales and advertising of
PROPRINT products[,] a request for the person or persons most
knowledgeable on that subject would have been a proper inquiry
and would have elicited the information it was seeking.”).

11 See generally Fed. R. Civ. P. 30(b)(6) (concerning depositions
of corporate entities); Fed. R. Civ. P. 31(a)(3) (authorizing
broad use of management level employees’ deposition testimony).

12 See, e.g., TBMP §§ 404.03(a)(1), 404.03(b) & 703.01(a) (3d ed.
2011).
Opposition Nos. 91182155 and 91182825
13
individual that might fill such roles.13 Therefore, opposer
should have included Ms. Jell in its response to applicant’s
interrogatory no. 1, assuming that “International Sales
Director” is an officer or managing agent post for opposer.
Even if it would not have been required of opposer to
identify Ms. Jell in its response to interrogatory no. 1,
once Ms. Barrows was no longer in its employ, that is, after
it became clear that it would be unlikely for applicant to
further consider that Ms. Barrows would be a witness for
opposer,14 then opposer should have supplemented its initial
disclosures to identify Ms. Jell. In any event, opposer did
not inform applicant of Ms. Jell’s identity as a person
having discoverable information in its initial disclosures,
in any supplemental initial disclosures, or in a supplemental
response to discovery requests.
Opposer’s contention that any prejudice to applicant
resulting from lack of prior notice was the result of his

13 It is unclear why opposer would identify its Financial
Director, rather than opposer’s International Sales Director,
where the Board’s jurisdiction is limited to registrability and
opposer’s only claim in this case is likelihood of confusion. See
General Mills, Inc. v. Fage Dairy Processing Industry S.A., 100
USPQ2d 1584 (TTAB 2011) (“The Board has no authority to determine
the right to use, or the broader questions of infringement,
unfair competition, damages or injunctive relief.”).

14 See Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045,
2048-49 (TTAB 1988) (deposition of former employee can only be
taken by voluntary appearance or by subpoena).

Opposition Nos. 91182155 and 91182825
14
failure to depose Ms. Barrows is unavailing. As an initial
matter, the parties’ obligations to serve initial, expert and
pretrial disclosures are independent requirements of the
Trademark Rules. Jules Jurgensen/Rhapsody, 91 USPQ2d at
1445.
Here, opposer failed to identify Ms. Jell, its
International Sales Director, as having discoverable
information before serving its pretrial disclosures. As a
result, applicant was unable to conduct appropriate discovery
with respect to Ms. Jell. Clearly, applicant’s inability to
conduct discovery in connection with Ms. Jell was caused by
opposer’s failure to fulfill its written disclosure
obligations as to Ms. Jell, and is not the result of any
inaction on applicant’s part with respect to Ms. Barrows.
Cf. Wallace v. U.S.A.A. Life General Agency, Inc., ---
F.Supp.2d ---, 2012 WL 1068313 (D.Nev. March 29, 2012)
(plaintiff’s argument that it “should be permitted to use its
non-disclosed witness because its disclosed witnesses could
have provided the same information if deposed is a non
sequitur and a thinly-veiled attempt to assign the
responsibility to Plaintiff for its own violations of
Rule 26”).
Further, unlike the facts discussed in the Board’s
recent decision in Byer California v. Clothing for Modern
Opposition Nos. 91182155 and 91182825
15
Times Ltd., 95 USPQ2d 1175, 1178 (TTAB 2010), this is not a
case where applicant had been informed of the potential
witness in discovery responses, yet waited until the
penultimate day of the discovery period to seek information
regarding opposer’s claims. Rather, since Ms. Barrows was
the only identified potential witness and she resided in the
United States, it was reasonable for applicant to expect to
rely on the information set forth in Ms. Barrows’ summary
judgment declaration for trial preparation and for conducting
an oral cross-examination of Ms. Barrows during her
testimonial deposition, if any. Moreover, given that only
sixteen days remained in the discovery period when opposer
informed applicant that Ms. Barrows was no longer employed by
opposer,15 the prejudice to applicant resulting from
opposer’s failure to disclose Ms. Jell’s identity is hardly
the result of applicant’s failure to act. Opposer gave
applicant only minimal notice that opposer’s only
previously-identified witness would likely be unavailable
during trial. In addition, although the parties agreed to
three two-week and one one-month extensions to the discovery
period in order to address issues related to their respective

15 According to the Board’s order dated August 20, 2010, discovery
was set to close on November 26, 2010.
Opposition Nos. 91182155 and 91182825
16
written responses to discovery,16 opposer did not identify
Ms. Jell as a person having discoverable information during
those extensions. Thus, opposer’s contention that any
prejudice to applicant is the result of applicant’s conduct
is entirely unpersuasive.
In view of these particular circumstances, the Board
finds that opposer’s failure to identify Ms. Jell as a person
having discoverable information earlier in these proceedings,
as well as opposer’s failure to supplement its initial
disclosures once Ms. Barrows was no longer employed by
opposer or at any time prior to serving its pretrial
disclosures, resulted in surprise to applicant. Thus, the
first factor applied in Great Seats strongly favors
applicant. Further, the surprise to applicant was
prejudicial, not harmless, because applicant was deprived of
the opportunity to seek discovery of opposer’s only
subsequently-identified testimonial witness. See Jules
Jurgensen, 91 USPQ2d at 1444-45.
Additionally, because opposer provided no explanation
whatsoever as to why it did not identify Ms. Jell as a person

16 The Board granted the parties’ consent motions filed on
November 24, 2010, December 10, 2010, December 29, 2010, and on
January 6, 2011, to extend the discovery period in order to allow
the parties to meet and confer regarding the sufficiency of their
respective discovery responses. The discovery period ultimately
closed on February 5, 2011.

Opposition Nos. 91182155 and 91182825
17
having discoverable information prior to serving its pretrial
disclosures, the fifth factor discussed in Great Seats also
favors applicant.
In 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. See Byer, 95 USPQ2d at 1179 (excluding testimony
on subjects within the knowledge of other witness identified
in initial disclosures). Cf. MicroStrategy Inc. v. Business
Objects, S.A., 429 F.3d 1344, 77 USPQ2d 1001, 1009-10 (Fed.
Cir. 2005) (“while this exclusion admittedly left
MicroStrategy without evidence of damages or causation for
most of its business tort claims, this factor is only one of
five that does not tip the scale in favor of MicroStrategy,
particularly were [it] alone is to blame for creating this
situation”).
In this matter, it is noted that opposer previously
submitted status and title evidence of its oldest pleaded
registration and, during its testimony period, opposer
submitted notices of reliance. In view thereof, the Board
finds that the importance of Ms. Jell’s testimony is less
critical to opposer’s case than if opposer had failed to
Opposition Nos. 91182155 and 91182825
18
adduce any other evidence in support of its claims. Further,
to the extent Ms. Jell would be called to testify that
opposer has received industry awards and accolades for its
goods, in the absence of evidence establishing the
significance of the awards and knowledge thereof on the part
of relevant U.S. purchasers (in addition to evidence
regarding opposer’s sales, advertising and market share),
such testimony would not necessarily establish that opposer’s
marks are famous, and might only tend to show that opposer’s
products are perceived to be of high quality or are
recognized only by industry groups. See Bose Corp. v. QSC
Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305-06
and 1309 (Fed. Cir. 2002) (fame indicated by widespread
critical assessments and nationwide exposure to mark in
connection with relevant goods). Cf. Best Cellars Inc. v.
Grape Finds at Dupont, Inc., 90 F.Supp.2d 431, 54 USPQ2d 1594
(S.D.N.Y. 2000) (Court concluded that wine store’s trade
dress was not famous, stating that “while Best Cellars is
certainly famous within retail design circles and within the
retail wine world, such fame does not extend to the general
public”).
In addition, Ms. Jell’s proposed testimony, as that of a
fact witness (and an individual representative of a party to
Opposition Nos. 91182155 and 91182825
19
the proceeding) on the pronunciation of the term “SPIER,”17
is likely to be accorded relatively little weight on the
issue of the pronunciation of the mark by consumers in the
United States, which is critical in the comparison of the
marks.18 Cf. Centraz Industries Inc. v. Spartan Chemical
Co., 77 USPQ2d 1698, 1701 (TTAB 2006) (There “is no correct
pronunciation of a trademark, and it obviously is not
possible for a trademark owner to control how purchasers will
vocalize its mark”), citing Interlego AG v. Abrams/Gentile
Entertainment Inc., 63 USPQ2d 1862 (TTAB 2002).
It is also unclear how Ms. Jell, who apparently lives in
South Africa, would be able to offer admissible testimony on
the perceptions, behaviors and impressions of consumers in
the United States. In short, with regard to whether Ms.
Jell’s testimony would be important to the fair adjudication

17 Opposer’s testimonial deposition questions (attached as Exh. A
to the notice of her deposition) show that Ms. Jell would be
asked to “spell and describe how Opposer’s SPIER mark is
pronounced” (Loeb dec., Exh. J).

18 Presumably, Ms. Jell would testify that the involved marks are
or are likely to be pronounced the same. The Board has long
considered testimony on pronunciation of trademarks – even by
linguistic experts -- to be of little or no use. Edwards
Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB
2010); Anheuser-Busch Inc. v. Holt, 92 USPQ2d 1101, 1106 (TTAB
2009); Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633
(TTAB 1999); Fisons Ltd. v. UAD Labs., Inc., 219 USPQ 661, 663
(TTAB 1983); Mennen Co. v. Yamanouchi Pharm. Co., Ltd., 203 USPQ
302, 305 (TTAB 1979).

Opposition Nos. 91182155 and 91182825
20
of this case,19 it does not appear that Ms. Jell’s testimony
on written questions would be particularly critical or
persuasive in the ultimate determination of the merits of
this case by a panel of Board judges. Cf. Design Strategies,
Inc. v. Davis, 228 F.R.D. 210, 213 (S.D.N.Y. 2005) (finding
importance of testimony factor weighed against preclusion
because proffered testimony would be highly probative of
material facts and would carry substantial weight). In view
of the foregoing, the Board concludes that the fourth factor
set forth in Great Seats favors applicant.
With respect to whether applicant can cure the surprise
resulting from the identification of the witness, applicant’s
ability to mitigate the missed opportunity to depose Ms. Jell
during discovery is significantly diminished by the fact that
the discovery period closed over one year ago and by
limitations of the noticed testimonial deposition upon
written questions. See TBMP § 703.02(m) (3d ed. 2011) (“a
deposition on written questions … deprives an adverse party
of the right to confront the witness and ask follow-up

19 Insofar as the Board will not entertain any motion in limine
challenging or otherwise relating to the probative value or
sufficiency of a party’s trial evidence, the Board’s weighing
here of the importance of Ms. Jell’s testimony should not be
interpreted as a finding with respect to any evidence that
opposer may have submitted during its testimony period or may
submit during its reopened testimony period (discussed infra).
See TBMP § 502.01 (3d ed. 2011) and cases cited therein.

Opposition Nos. 91182155 and 91182825
21
questions on cross-examination”20) and cases cited therein.
In addition, opposer has refused to consent to an oral
deposition of Ms. Jell, notwithstanding applicant’s offer to
conduct the oral deposition in South Africa. Consequently,
the Board finds that applicant has little, if any, ability to
cure opposer’s failure to provide adequate notice of Ms. Jell
as a person who is knowledgeable about the relevant issues to
applicant. Therefore, the second factor discussed in Great
Seats favors applicant.
Regarding the extent to which allowing Ms. Jell’s
testimony would disrupt the trial, reopening the discovery
period to allow applicant to schedule and then conduct a
discovery deposition upon written questions of Ms. Jell would
significantly disrupt these proceedings.21 In view thereof,

20 The Board recognizes that applicant may have been hampered by
similar limitations in conducting a discovery deposition upon
written questions, even if opposer had identified Ms. Jell during
the discovery period. However, because there was no notice
regarding Ms. Jell’s identity earlier in the proceeding, there
was no opportunity for applicant to pursue any alternative
avenues of discovery with respect to Ms. Jell, whether under Fed.
R. Civ. P. 30(b)(1) or (30)(b)(6).

21 In particular, the Board notes that the parties have stipulated
to a great many extensions or suspensions to accommodate
settlement talks, but their talks did not result in settlement of
the case. Further, the proceeding has already been delayed by
the brief reopening of a limited discovery period for applicant
in connection with opposer’s recently issued and pleaded
registration (see Board’s order dated May 15, 2012) and the
parties’ agreed reopening of opposer’s trial period for five days
(discussed infra). Thus, the overall age of these proceedings
demands that the parties, if they are not willing to settle the
case, move without additional delay through trial.
Opposition Nos. 91182155 and 91182825
22
the third factor also favors applicant.
Apart from the five factors discussed in Great Seats,
the Board is concerned that opposer’s failure to identify
Ms. Jell in any manner during the discovery period
effectively misled applicant as to the identity of persons
who might ultimately be identified as prospective trial
witnesses. Specifically, given that Ms. Jell is now
identified as opposer’s sole witness for trial, and thus
evidently is thought by opposer to have not just discoverable
information, but information that would aid opposer in
carrying its burden of proof as plaintiff, the Board finds
that opposer should have identified Ms. Jell as a person
“likely to have discoverable information that the disclosing
party may use to support its claims or defenses,” earlier in
this proceeding, well before the close of the discovery
period. See Byer, 95 USPQ2d at 1178 (“It would be curious
for a trial witness not to have discoverable information”).
Balancing all the foregoing facts and concerns, the
Board concludes that opposer failed to timely identify
Ms. Jell as a person knowledgeable about the issues involved
in these proceedings, and that such failure was neither
harmless nor substantially justified. Essentially, opposer
treated the initial and pretrial disclosure requirements as
unrelated events, rather than recognizing that disclosures
Opposition Nos. 91182155 and 91182825
23
and discovery responses should be viewed as a continuum of
inter partes communication designed to avoid unfair surprise
and to facilitate fair adjudication of the case on the
merits. For all of these reasons, it is appropriate to apply
the estoppel sanction and preclude the testimony of opposer’s
witness.
Accordingly, applicant’s combined motion to strike
opposer’s pretrial disclosure of Ms. Jell as its testimonial
witness and to quash opposer’s notice of testimony deposition
of Ms. Jell upon written questions is GRANTED.22
Agreed Reopening of Opposer’s Trial Period for Five Days
At the conclusion of the telephone conference, the Board
granted applicant’s motion to preclude Ms. Jell’s testimony,
with this order to follow to provide the basis for such
decision. Opposer immediately requested additional time to
submit evidence by means of notice of reliance. The Board
construed opposer’s request as a motion to reopen its
testimony period, and because applicant consented to the
request, granted the motion. See Trademark Rule 2.127(a).
Proceedings are Suspended and Trial Dates Remain as Reset
in May 30, 2012 Orders

During the subject telephone conference, these

22 In view thereof, applicant’s alternative motion to conduct an
oral deposition of Ms. Jell is moot.

Opposition Nos. 91182155 and 91182825
24
proceedings were resumed, and opposer’s testimony period was
set to reopen from June 18 through June 22, 2012, for a
period of FIVE DAYS to allow opposer to submit additional
evidence by notice of reliance. See generally TBMP §§ 704.02
et seq. (3d ed. 2011). However, since the subject
conference, the parties requested that the proceedings be
suspended pending their settlement discussions. In view
thereof, and in accordance with the Board’s related
suspension and scheduling orders dated May 30, 2012, these
proceedings remain SUSPENDED through June 28, 2012, subject
to the right of either party to request resumption at any
time, and shall resume on June 29, 2012. Opposer’s testimony
period shall reopen on July 18, 2012, and close on July 22,
2012. Subsequent disclosure and trial dates have been reset
accordingly. A copy of the reset trial schedule is set forth
below for the parties’ convenience.
Time to File Amended Answer 6/29/2012
Reopened discovery for Applicant Closes 7/14/2012
Plaintiff's Testimony Reopens and
Closes 7/18 - 7/22/2012

Defendant's Pretrial Disclosures Due 8/6/2012
Defendant's 30-day Trial Period Ends 9/20/2012
Plaintiff's Rebuttal Disclosures Due 10/5/2012
Plaintiff's 15-day Rebuttal Period Ends 11/4/2012

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
Opposition Nos. 91182155 and 91182825
25
must be served on the adverse party within THIRTY DAYS after
completion of the taking of testimony. See 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.
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