The TTAB has issued a precedential decision holding that the Federal Rules of Civil Procedure may allow a party to file a sur-rebuttal expert report in a trademark opposition under certain circumstances.

Newegg Inc. opposed Schoolhouse Outfitters, LLC’s applications for two EGGHEAD marks in late 2013, claiming that Schoolhouse’s marks were likely to dilute, and cause confusion with, Newegg’s NEWEGG family of marks. During the course of the opposition, Newegg submitted an expert report on likelihood of confusion, and Schoolhouse submitted a rebuttal likelihood-of-confusion survey. Shortly after receiving Schoolhouse’s rebuttal survey, Newegg moved for leave to have its initial expert submit a sur-rebuttal report, arguing that it should be permitted to critique Schoolhouse’s rebuttal survey so the Board could understand all perspectives on the dueling survey formats. The Board agreed, but limited its decision to the particular facts of the case.

The Board first noted that a circuit split exists regarding the meaning of Fed. R. Civ. P. 26(a)(2)(D)(ii), which provides: “Absent a stipulation or court order, [expert] disclosures must be made: …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.” Some courts do not read this plain language to confer a right to continue filing rebuttal or sur-rebuttal reports; others do not read it to prohibit sur-rebuttal reports. The Board sided with the latter position, finding that “under appropriate circumstances, a sur-rebuttal expert report would be proper as long as a party that wishes to provide a sur-rebuttal expert report promptly seeks leave to do so, which [Newegg] has done in this instance.” Here, given the existence of two conflicting expert surveys, the Board found that “it would not only serve the interests of fairness but would benefit the Board in its ability to make a just determination of the merits of this case to allow [Newegg] to provide a sur-rebuttal by [its expert].”

The Board, however, limited the scope of Newegg’s sur-rebuttal report to critiquing the methodology of Schoohouse’s rebuttal survey and the resulting data. The Board precluded the sur-rebuttal report from offering any corrections and/or amplifications to the expert’s original report, or introducing any new evidence or consumer surveys. Both parties were precluded from seeking any future expert rebuttal reports.

The case is Newegg Inc. v. Schoohouse Outfitters, LLC, Opp. No. 91214178 (TTAB Mar. 30, 2016).