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Royal Palm Properties, LLC v. Pink Palm Properties, LLC

United States District Court, S.D. Florida

May 9, 2018




         This matter is before the Court on Plaintiffs Amended Motion to Disqualify and/or Exclude Expert [106]. The Motion has been fully briefed. Upon review, the Motion is granted in part and denied in part for the reasons set forth below.

         Defendant 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. §§ 1052(e)(2).
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) Claim.
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 separately.

         A. Whether Plaintiff was Improperly Granted a Mark or Whether Plaintiffs Mark Should be Cancelled

         A court 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.

         Here, 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.[1] 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.

         In 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.[2] 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.

         Defendant 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.

         B. Whether Plaintiff Failed to Disclose Certain Information to the ...

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