Oblon, Spivak Files Supplemental Comments regarding Expert Witnesses

Download ttabrulessuppcomments_406.pdf

April 20, 2006
Via E-Mail

The Honorable Jon Dudas
Undersecretary of Commerce for Intellectual Property
  and Director of the United States Patent and Trademark Office
Box Comments
P.O. Box 1450
Alexandria, VA  22313-1450

The Honorable Gerard F. Rogers
Administrative Trademark Judge
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451

Re:    Comments on Proposed Rules:  “Miscellaneous Changes
to Trademark Trial and Appeal Board Rules”
71 Federal Register 2498 (January 17, 2006)                        

Dear Undersecretary Dudas and Judge Rogers:

    This is further to our submission dated March 20, 2006.

     We appreciate the USPTO's willingness to extend the time for submitting comments in response to the proposed TTAB Rules changes.  This has enabled us to review many of the submissions made by other firms, which raised additional issues not covered in our prior submission.  Rather than repeat many of the comments, we simply wish to note that the proposed rules clearly raise many issues that will more likely than not create more, not fewer, problems and greater, not lower, costs for the parties.

      Although many of the submissions concentrated on the general disclosure requirements, problems are also anticipated with respect to the proposed Expert Disclosure  requirements.  In particular, the proposed rules require docketing of dates that were not previously required and do not provide sufficient time for the parties to conduct discovery and determine if an expert is appropriate.  Because of the expense of retaining experts, the issues present in the great majority of TTAB proceedings, and a high rate of settlements preceding trial, experts are generally not engaged for Board proceedings.  However, by requiring the parties to identify experts no later than 90 days prior to the close of discovery, parties will have to engage experts and proceed with such disclosures in cases where settlements are not reached in advance of 90 days before the close of discovery but when it would still be uncertain whether expert testimony (e.g., on surveys, brand name recognition, or the meaning of an esoteric term) would be necessary.  Although proposed Trademark Rule 2.120(a)(2) permits expert disclosure at a later date if the expert is retained after the disclosure deadline, this will likely result in more disputes and motion practice.

      We also note that the proposed Rule does not distinguish between experts who are consulted but who are not expected to testify and experts who are expected to testify. Ordinarily, the identity of an expert who is consulted but is not expected to be called as a witness is not disclosed. This should be clarified if the requirement for disclosure of an expert is retained in the Rule.

      However, this could also be a source of motion practice if, for example, a consulting expert becomes a potential witness because of something done or said by the adverse party after the 90-day deadline prior to the close of discovery. If the parties jockey for position by trying to make the adverse party disclose an expert before deciding whether or not to engage an expert, the Board will necessarily become involved if motions are filed to preclude or admit the testimony or proposed testimony of an expert witness. There is much less likelihood of jockeying for position if expert disclosure is deferred until a date much closer to the end of discovery, or if the Board would do what many courts do, which is to set a date for disclosure of expert testimony by the party with the burden of proof and a later date for disclosure of expert testimony by the party in the position of defendant on the issue.

      The present practice of using interrogatories and requests for production of documents to learn about possible expert testimony by the adverse party works well without  imposing any premature deadline.  It is much more flexible than the proposed deadline.

      Based on the above as well as our previous submission, we request that the USPTO investigate and consider the numerous issues raised and conduct a public hearing  before proceeding with the proposed amendments to the TTAB Rules.

                Respectfully submitted,

                OBLON, SPIVAK, McCLELLAND,
                    MAIER & NEUSTADT, P.C.

Jeffrey H. Kaufman                    David J. Kera

Brian D. Anderson                    Roberta S. Bren

Jonathan Hudis                    Kathleen Cooney-Porter

Jordan S. Weinstein                    Brian B. Darville

Carol L.B. Matthews                    Colette Durst-Barkey

Christopher I. Donahue                Kyoko Imai

von Maltitz, Derenberg Firm Comments on Proposed Rules

Download vonmaltitz_ttab_comments.PDF