United States: Trademark Trial and Appeal Board Accepts Misfiled Expert Disclosures as Timely Filed

(Originally published in the International Trademark Association)

By Mark A. Romance

On February 26, 2018, the Trademark Trial and Appeal Board (TTAB or Board) issued a precedential decision in Monster Energy Co. v. William J. Martin (Cancellation No. 92064649), holding that a misfiled expert disclosure was timely filed in the correct case and allowing the expert to testify. The decision highlights the Board’s authority to correct its docket and adjust deadlines to permit experts to testify when mistakes occur in filing.

Petitioner Monster Energy Company filed its expert disclosure on July 5, the deadline to file expert disclosures in the proceeding. Although the notice was served on Respondent William J. Martin, Petitioner’s counsel accidentally filed the notice in an unrelated proceeding. The next day, Petitioner’s counsel realized its mistake and called the TTAB to advise it of the incorrect filing. The following day, July 7, the Board entered the notice in the correct file and assigned it a filing date of July 5, the date it was originally submitted in the wrong file.

Weeks later, on the eve of the close of discovery, Respondent moved to strike the expert disclosure and to preclude the expert from testifying at trial. Respondent argued that the disclosure was untimely because it was not placed into the correct case file until July 7, two days after the deadline. He contended that because of the late disclosure he was precluded from timely completing discovery on the expert witness.

The TTAB held that the notice was timely even though it was filed in the wrong proceeding, reasoning that    the Trademark Rules provide it with the authority to “address and resolve an obvious clerical or typographical error in a filing that conflicts with the clear intent of the filing party at the time the party submitted the filing.” It also noted that “an obvious typographical error” should not derail the discovery process. Citing precedent, the Board also held that an untimely expert witness disclosure is not a ground to exclude the noticed testimony of the witness. It further held that Respondent was not precluded from initiating discovery concerning the late-disclosed expert witness because Trademark Rule 2.120(a)(2)(iii) affords the Board wide latitude to manage a proceeding following disclosure of an expert. The TTAB concluded that it may grant additional time under this wide latitude to complete discovery of the disclosed expert.

This decision shows that the Trademark Rules provide the Board with the flexibility to correct administrative errors and to adjust schedules in order to allow parties a full and fair opportunity to introduce expert testimony and to conduct discovery on those witnesses.

Mr. Romance is a member of the INTA Bulletin Law & Practice – North America Subcommittee. 

Contributing Attorneys

Romance, Mark A. – Shareholder