In this Section 2(d) opposition, the Board granted Opposer Newegg’s motion for leave to prepare and serve a sur-rebuttal expert report. The Board refused to read FRCP 26(a)(2)(D) as prohibiting sur-rebuttal reports, concluding that, in light of the two conflicting expert surveys, allowing a sur-rebuttal report to analyze and critique applicant’s rebuttal survey would “benefit the Board in its ability to make a just determination of the merits of the case." Newegg Inc. v. Schoolhouse Outfitters, LLC, Opposition No. 91214178 (March 30, 2016) [precedential].

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Opposer’s expert, Dr. Kaplan, conducted a survey on the issue of likelihood of confusion between opposer’s NEWEGG marks and applicant’s EGGHEAD marks. Applicant’s expert, Dr. Erickson, conducted a likelihood of confusion survey employing a different method. Opposer then filed its motion seeking permission to prepare and serve a sur-rebuttal report to be prepared by Dr. Kaplan.

FRCP 26(a)(2)(D) provides, in pertinent part, that, absent a stipulation or court order, expert disclosures must be made “(ii) if the evidence is intended solely to contradict or rebut evidence on the same subject matter identified [in another party’s expert report], within 30 days after the other party’s disclosure.” Many courts “have ruled that this rule does not contemplate or permit sur-rebuttal expert disclosures. The Board, however, does not so read the Rule. “Instead, the Board finds that under appropriate circumstances, a sur-rebuttal expert would be proper,” as long as the request for same is made promptly, as opposer did here.

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Although Dr. Erickson's rebuttal expert report included new evidence in the form of a different survey conducted via a different methodology than opposer's survey, the rebuttal report was nonetheless proper rebuttal. ProMark Brands, Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1230 (TTAB 2015).

Under the particular circumstances of this case, i.e., the existence of two conflicting expert surveys, and based upon the Board’s interpretation of the Federal Rules of Civil Procedure, it would not only serve the interest of fairness but would benefit the Board in its ability to make a just determination of the merits of this case to allow Opposer to provide a sur-rebuttal by Dr. Kaplan ....

The Board ruled, however, that Dr. Kaplan's sur-rebuttal report must be limited to rebuttal and/or critique of "the methodology of the survey conducted by Dr. Erickson, as well as the analysis of the data resulting from the survey." Applicant was allowed to depose Dr. Kaplan again, but limited to the subject matter of the sur-rebuttal report.

The Board order the proceeding resumed and set new trial dates.

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TTABlog comment: Will expert testimony be employed more frequently in TTAB proceedings after the B&B v Hargis?