United States District Court, S.D. Florida
ORDER GRANTING IN PART AND DENYING IN PART
PLAINTIFF'S AMENDED MOTION TO DISQUALIFY AND/OR EXCLUDE
L. ROSENBERG UNITED STATES DISTRICT JUDGE
matter is before the Court on Plaintiffs Amended Motion to
Disqualify and/or Exclude Expert . The Motion has been
fully briefed. Upon review, the Motion is granted in part and
denied in part for the reasons set forth below.
has retained an attorney-expert for trial, Mr. Mark Stein.
Plaintiff characterizes this expert as somewhat akin to a
co-counsel for Defendant insofar as Mr. Stein, according to
Plaintiff, will argue Defendant's legal theories to the
jury. As a result, Plaintiff has moved to strike or
disqualify Mr. Stein. Mr. Stein's conclusions in this
case are as follows:
a. RPP failed to disclose to the Examiner that the
"Royal Palm" portion of its mark
ROYAL PALM PROPERTIES identifies a
geographic location and had RPP made this disclosure, a
reasonable and diligent Examiner would have rejected the
trademark application on the basis that the mark is primarily
geographically descriptive undeliS U.S.C. §§
b. RPP failed to provide an evidence of a prior registration
and failed to provide any evidence of acquired
distinctiveness of the mark ROYAL PALM
PROPERTIES and for these reasons, a reasonable and
diligent Examiner should have rejected RPP's Section 2(f)
c. RPP failed to provide the Examiner with relevant and
material information to RPP's Section 2(f) Claim, which
omission misled the Examiner and had RPP disclosed this
information, a reasonable and diligent Examiner would have
rejected RPP's Section 2(0 Claim.
d. If a reasonable and diligent Examiner of the trademark
application for ROYAL PALM PROPERTIES
located either ROYALE PALMS, U.S.
Registration No.: 3341336 and ROYALE PALMS AT
KINGSTON SHORES, U.S. Registration No.: 3363326 in
conducting a search for conflicting marks, the reasonable and
diligent Examiner would have refused registration of this
application on the basis that that one or both of the above
marks is likely to cause confusion with the applied for mark.
DE 106-1 at 19-29. Mr. Stein's conclusions may be
adequately summarized as follows: (i) Plaintiff failed to
disclose certain information to the United States Patent and
Trademark Office, (ii) as a result of this failure to
disclose, Plaintiff was improperly granted a trademark and
(iii) a trademark should not have been granted to Plaintiff.
Mr. Stein's conclusions must be juxtaposed to
Defendant's counterclaim to cancel Plaintiffs trademark
registration. The Court addresses Mr. Stein's conclusions
Whether Plaintiff was Improperly Granted a Mark or Whether
Plaintiffs Mark Should be Cancelled
may cancel a trademark registration within five years from
the initial date of registration for any reason that would
have been sufficient to deny the initial registration.
Int 'IMobile Mack Corp. v. Int'l Tele.
Corp., 800 F.2d 1118, 1119 (Fed. Cir. 1986). Here,
Plaintiffs trademark was registered on November 27, 2012. DE
60-1. This case was initiated on April 17, 2017, and is
therefore within the five-year limit cited above. A
sufficient basis to deny a trademark's registration is a
finding that the trademark is likely to cause confusion with
another mark, CFE Racing Products, Inc. v. BMF
Wheels, Inc., 793 F.3d 571, 595 (6th Cir. 2015), and
other grounds for cancellation exist as well.
the jury will have to decide whether Plaintiffs trademark
should be cancelled. In making that determination, the
grounds for such a cancellation will be any ground that the
Trademark Office could have used to deny Plaintiffs
application. That is precisely the thrust of Mr. Stein's
expert report. If Mr. Stein were to explain to the jury why
the Trademark Office should have rejected Plaintiffs
trademark application, Mr. Stein would be testifying to the
legal conclusion that the jury must make, an opinion that is
even further problematic since Mr. Stein is a practicing
lawyer. Montgomery v. Aetna Cas. & Sur. Co., 898
F.2d 1537, 1541 (11th Cir. 1990) ("An expert may not,
however, merely tell the jury what result to reach. ... A
witness also may not testify to the legal implications of
conduct; the court must be the jury's only source of
law."). Similarly problematic, if Mr. Stein were to
testify, in the abstract, as to various grounds upon which an
application could be denied, Mr. Stein would be
instructing the jury on the law since the jury will be
permitted to premise its legal determination on "any
reason that would have been sufficient to deny the initial
registration." Int7Mobile Mach. Corp.,
800 F.2d at 1119. Additionally, Mr. Stein's opinions
about whether the Patent Office was "misled" are no
longer relevant in this case because the Court, at docket
entry 102, dismissed Defendant's counterclaims premised
on fraud and deceit with prejudice. Finally, in his deposition,
Mr. Stein even conceded, to an extent, that some of his
conclusions are equivalent to his own legal opinion. DE
106-at at 45. For these reasons, Mr. Stein's conclusions
discussed above would be improper expert testimony.
response, Defendant concedes that it has been unable to
locate a single case in which an expert testified on
trademark applications or the propriety of the Trademark
Office's granting of a trademark. DE 113 at 6.
Nonetheless, Defendant cites to two patent cases for the
proposition that such testimony would be appropriate in this
case. First, Defendant cites to a footnote in
General Battery Corp. v. Gould, Inc., 545 F.Supp.
731, 758 n.30 (D. Del. 1982). That footnote, which appears in
the trial court's findings of fact and conclusions of
law, actually undercuts Defendant's argument. The
General Battery court merely noted that expert
testimony was considered as to Patent Office practice and
procedures generally. The General Battery
court expressly rejected the notion that the
expert's testimony was considerable on more substantive
matters, such as whether there had been patent infringement
in the case. Id. The trial court refused to consider
the expert's opinions outside of general procedure
because those opinions would have been targeted towards
conclusions of law, not issues of fact. Id.
also cites to Kingsdown Medical Consultants Ltd. v.
Hollister, Inc., 863 F.2d 867, 872 (Fed. Cir. 1988), but
that case is similarly unhelpful to Defendant. In
Kingsdown, the trial court had before it a claim
that the Patent Office had been deceived-that there had been
fraud committed on the Patent Office. Id. The
Kingsdown court had to consider evidence in the
context of whether an attorney had engaged in a deception.
Id. Thus, expert testimony was permitted that was
germane to the question of whether there had been deceptive
intent. Id. at 872. No such claim exists in the
instant case because those claims have been dismissed with
prejudice. Defendant has provided no legal basis on which
this Court should permit Mr. Stein's testimony on the
ultimate legal issue before the jury-whether Plaintiff s
trademark application should have been denied-and Mr.
Stein's testimony is EXCLUDED as to this
issue. Mr. Stein's testimony on any issue pertaining to
deception or fraud is also EXCLUDED
consistent with the Court's prior dismissal of
Defendant's counterclaims premised on fraud with
prejudice. The Court does not exclude, however, any testimony
Mr. Stein may offer on Trademark Office procedures generally.
Whether Plaintiff Failed to Disclose Certain Information to