Getting the Last Word: The TTAB Recently Ruled that Sur-Sur-Rebuttals of Expert Reports Will Not Be Allowed
As lawyers, we almost always want the last word. The Trademark Trial and Appeal Board (TTAB) recently addressed this issue as it concerns expert reports. The TTAB issued a precedential decision involving the admissibility of expert reports in Monster Energy Company v. Coulter Ventures, LLC, 2023 USPQ2d 916 (TTAB 2023). The decision concerned the admissibility of certain expert reports and the circumstances under which sur-rebuttal and sur-sur-rebuttal reports can be introduced in trademark proceedings.
Procedural Background
The case involves consolidated oppositions. In its notice of opposition dated March 21, 2017, Monster Energy Company (MEC) asserted rights in its family of Monster Marks, including in relevant part.
MEC alleged that Coulter Ventures’s application for MONSTER LITE used to identify various weight-lifting equipment was likely to cause confusion with MEC’s Monster Marks.
As for the TTAB decision discussed in this blog post, the case originated from motions filed by MEC and Coulter Ventures. MEC sought leave to serve a sur-rebuttal expert report (which it had served nearly twelve months earlier), while Coulter Ventures sought reconsideration of the Board's order striking its sur-sur-rebuttal expert report.
For reference, MEB relied on the expert opinion of Dr. Sara Parikh and Coulter Ventures relied on the expert opinion of Law Professor David Franklyn.
Board's Rationale on Sur-Sur-Rebuttal Expert Reports
The TTAB clarified that while sur-rebuttal expert reports might be permitted under appropriate circumstances (e.g., addressing a consumer survey performed and discussed in connection with the rebuttal expert report), sur-sur-rebuttal reports would not be allowed under any circumstances. The Board expressed concerns about creating an environment of unlimited expert opinion presentation, which could disrupt proceedings and lack finality.
MEC's Motion for Leave to Serve Parikh Sur-Rebuttal
MEC requested permission to serve the Parikh Sur-Rebuttal, arguing that it believed a previous report by Coulter Ventures was an original report on a new issue. The Board rejected the argument that the Franklyn report was an original report, pointing out that the report was clearly identified as a rebuttal report and was served after the expert disclosure deadline. However, the Board agreed that MEC's need to respond to the new evidence presented in Coulter Ventures' report justified allowing MEC to submit a limited sur-rebuttal critique of that evidence.
Coulter Ventures' Motion for Reconsideration
Coulter Ventures sought reconsideration of the Board's decision to strike its sur-sur-rebuttal expert report. The Board explained that a request for reconsideration should demonstrate the Board's error based on existing facts and authorities. The request for reconsideration was timely filed, but the Board emphasized that sur-sur-rebuttal expert reports would never be allowed.
Conclusion and Implications
The TTAB's decision clarified the circumstances under which sur-rebuttal and sur-sur-rebuttal expert reports can be introduced in trademark proceedings. The Board reinforced that sur-sur-rebuttal reports will not be permitted under any circumstances, ensuring finality in the exchange of expert opinions and preventing an endless cycle of rebuttals. Parties should adhere to the guidelines provided by Fed. R. Civ. P. 26(a) and (e) when preparing expert testimony to avoid issues related to the admissibility of their reports.
Nick’s Take
This case underscores a rule of thumb that I was taught earlier in my career: litigants should not save important arguments/positions for a later date in hopes of getting the last word. The Board was clear that it will not allow sur-sur-rebuttal expert reports under any circumstances, and it will only allow sur-rebuttal expert reports under appropriate circumstances and if the proponent promptly seeks leave to do so.
Additionally, when submitting an expert report or a rebuttal expert report, either party should put its best foot forward. Waiting for a sur-rebuttal in hopes of correcting an earlier expert report may likely be denied.
Perhaps it goes without saying but the Board will likely deny sur-sur-sur-rebuttal expert reports, as well.
This case gives a new meaning to the phrase “battle of the experts.” Who will be left standing?
