In this consolidated cancellation proceeding involving registrations for the marks MONSTER SEAL A FLATMONSTER UP, and UNLEASH THE BEAST for “tire sealing compound,” Respondent Martin moved to strike Petitioner Monster Energy Company’s notice of expert disclosure and to preclude the testimony of the named expert. The Board denied both motions, finding the notice to be timely and pointing out that Respondent may request additional time to take discovery of the expert. Monster Energy Company v. William J. Martin, Cancellations Nos. 92064649, 92064681, and 92064687 (February 26, 2018) [precedentail] (Order by Interlocutory Attorney Jennifer Krisp).

The Notice: The deadline for Monster’s notice of expert disclosure was July 4, 2017 (ninety days before the close of commencement of the first testimony period on October 2, 2017). See Rule 2.120(a)(2)(iii) and FRCP 26(a)(2). Because July 4th is a holiday, in the District of Columbia, the due date was extended to the next day. See Trademark Rule 2.120(a)(2)(iii)). On July 5, 2017, Monster Energy filed with the TTAB its notice of expert disclosure (and it served its expert report on the same day). The notice stated the correct proceeding number, but Monster’s law firm entered the wrong proceeding number at the time of electronic filing. [NB – the Rules require service of the disclosure, not filing – ed.]. On July 6th, The firm informed the Board of the error and on July 7th the Board entered the notice in the correct case and assigned it a date of July 5. [NB – the notice was properly and correctly served on Respondent on July 5th, so this seems like a wholly unnecessary exercise to this writer – ed].

Respondent Martin claimed that the notice was untimely filed. [If filing wasn’t required, how could it be untimely? – ed.]. Martin did not state that he did not receive the notice (correctly captioned) on July 5th.

In the context of discovery, the Board has made clear that an “obvious typographical error” should not operate to derail the discovery process, and that it expects parties who become aware of such an error to cooperate so as to avoid unnecessary delay and increased costs. Cadbury UK Ltd. v. Meenaxi Enter., Inc., 115 USPQ2d 1404, 1407 (TTAB 2015) (parties are expected to demonstrate good faith and cooperation during discovery; a party cannot avoid discovery obligations due to an obvious typographical error in discovery requests).

The Board therefore considered the (unnecessary) filing as timely, and it denied Martin’s quixotic motion to strike the notice.

Respondent’s Discovery: Pointing to a seeming clash of the applicable Rules, Respondent Martin asserted that because the amended Rules require written discovery request be served at least thirty-days prior to the close of discovery (set to close on August 3rd) – see Rule 2.120(a)(3) and Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1270 (TTAB 2017) – he would be denied the right to written discovery of Monster’s expert if the Board found the July 5th expert disclosure (and the expert report) acceptable. Moreover, Rule 2.120(a)(3) provides “the time to respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery.” Not to worry!

The requirement in Trademark Rule 2.120(a)(3) that discovery requests be served early enough in the discovery period so that responses are due no later than the close of discovery does not, and is not intended to, preclude or encumber the opportunity to take discovery of an expert, regardless of whether the party makes an expert disclosure on or after the deadline therefor, provided that the Board is informed of the disclosure and finds it appropriate under the circumstances, so that it can issue an order that allows time for the discovery to occur.

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Trademark Rule 2.120(a)(2)(iii) provides the Board wide latitude in managing a proceeding following any party’s disclosure of plans to use expert testimony, including but not limited to, suspending proceedings to allow for discovery of the expert and for any other party to disclose plans to use a rebuttal expert.

The Board therefore found no reason to preclude the expert’s testimony on the basis of Rule 2.120(a)(3), since Respondent Martin may request additional time for discovery.

The Board then suspended the proceeding under Trademark Rule 2.117(a) in light of a pending civil action between the parties.